Metropolitan News-Enterprise


Thursday, July 25, 2002


Page 1


Ninth Circuit Rules:

‘Barbie Girl’ Song Parodied Doll, Did Not Infringe on Mattel’s Rights


By KENNETH OFGANG, Staff Writer/Appellate Courts


A Scandinavian rock band and its producers did not infringe on the “Barbie” trademark or otherwise violate the intellectual property rights of the doll’s manufacturer by releasing a recording of a song that mocked the “cultural icon,” the Ninth U.S. Circuit Courts of Appeals ruled yesterday.

The panel affirmed an order rejecting Mattel, Inc.’s suit against MCA Records, Inc. and others over “Barbie Girl,” a 1997 song by the Danish band Aqua. Mattel claimed its property interests were being harmed by the association of the doll with the song’s “unsavory” lyrics.

The song features “Barbie” describing herself as “a blond bimbo girl, in a fantasy world” and telling “Ken” he “can brush my hair, undress me everywhere,” while “Ken” responds “Come on, Barbie, let’s go party.”

Mattel’s arguments were rejected by Senior U.S. District Judge Wm. Matthew Byrne Sr., who granted summary judgment in favor of the defendants. Judge Alex Kozinski, writing for the Ninth Circuit, agreed.

Kozinski said the case was one of “Speech-Zilla Meets Trademark Kong.” The song is a parody and is protected from trademark claims under the doctrine of “nominative fair use,” he said.

The judge rejected the contention that the use of “Barbie” in the title was likely to confuse the public into thinking that the maker of the doll was responsible for the song.

Expectations of Title

“Consumers expect a title to communicate a message about the book or movie, but they do not expect it to identify the publisher or producer,” he wrote. “…If we see a painting titled ‘Campbell’s Chicken Noodle Soup,’ we’re unlikely to believe that Campbell’s has branched into the art business. Nor, upon hearing Janis Joplin croon ‘Oh Lord, won’t you  buy me a Mercedes-Benz?,’ would we suspect that she and the carmaker had entered into a joint venture.”

Kozinski also rejected Mattel’s claim of trademark dilution.

MCA, the appellate jurist acknowledged, made dilutive use of the mark, that is, it used the distinctive name “Barbie” to bring attention to the song, so that in the future, persons hearing the name will think of the song, or of both the doll and the song, whereas in the past they would have thought only of the doll.

But Mattel cannot recover damages under the Federal Trademark Dilution Act, Kozinski explained, because the song “is not purely commercial speech” and thus falls under the “noncommercial speech” exemption from the act.

Legislative History

Kozinski cited legislative history suggesting that the exemption incorporates court decisions protecting “parody, satire, editorial and other forms of expression that are not a part of a commercial transaction.”

The song, he said, is similar in that regard to the Los Angeles magazine article that led to actor Dustin Hoffman’s suit over the use of a computer-altered photo of the actor in his cross-dressing role as “Tootsie,” as part of an article entitled “Grand Illusions.”

The appellate panel overturned a $3 million judgment in favor of Hoffman, ruling that the use of the photograph to illustrate the story was constitutionally protected.

Kozinski wrote:

Hoffman [v. Capital Cities/ABC, Incorporated]  controls: Barbie Girl is not purely commercial speech, and is therefore fully protected. To be sure, MCA used Barbie’s name to sell copies of the song. However…the song also lampoons the Barbie image and comments humorously on the cultural values Aqua claims she represents. Use of the Barbie mark in the song Barbie Girl therefore falls within the noncommercial use exemption to the FTDA. For precisely the same reasons, use of the mark in the song’s title is also exempted.”

The case is Mattel, Inc. v. MCA Records, Inc., 98-56453.


Copyright 2002, Metropolitan News Company