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First came Victoria’s Secret. Next up on the Supreme Court’s trademark agenda: Barbie dolls. At its private conference on Jan. 24, the Supreme Court will consider whether to grant review in dozens of cases including Mattel Inc. v. MCA Records Inc., No. 02-633. The Court will also meet in conference Jan. 17. Mattel, which has manufactured and sold Barbie dolls since 1959, is asking the Supreme Court to reverse a ruling by the U.S. Court of Appeals for the 9th Circuit that said MCA did not infringe the Barbie trademark when it marketed a Danish rock group’s song “Barbie Girl.” Mattel enlisted former Solicitor General Seth Waxman, now a partner at Wilmer, Cutler & Pickering, to take the case to the Supreme Court in the latest chapter in a five-year battle between the two entertainment giants. The dispute has gotten nasty, with Mattel at one point comparing MCA to a bank robber, and MCA in turn suing Mattel for defamation. But the briefs filed with the Supreme Court are less heated, perhaps because 9th Circuit Judge Alex Kozinski ended his July 2002 ruling in the case with this admonition: “The parties are advised to chill.” The first sentence of the ruling was also eye-catching: “If this was a sci-fi melodrama, it might be called SpeechZilla meets Trademark Kong.” Mattel sued MCA soon after release of the “Barbie Girl” recording by the Danish group Aqua. The song mocks and parodies Barbie, with lyrics such as these: “I’m a blonde bimbo girl, in a fantasy world/Dress me up, make it tight, I’m your dolly.” The recording sold 1.4 million copies in part, Mattel alleges, because it was marketed to the same audience of preteen girls who buy the dolls. It was advertised on Saturday morning television with bright pink lettering, and a music video depicted Barbie items including a Barbie “dream house.” Said Waxman in the brief: “MCA’s marketing efforts paid off handsomely.” Surveys conducted by Mattel confirmed “substantial actual confusion” among consumers about whether Mattel itself had released the song, according to the brief. Mattel claimed in its suit that the song violated the Lanham Act’s ban on uses of trademarks that are “likely to cause confusion,” and also violated the Federal Trademark Dilution Act. But a district judge ruled that because the song amounted to a parody, which is a “non-commercial use,” it could not be found to dilute the trademark. The 9th Circuit agreed, also finding that the test normally used to determine whether a use is likely to confuse consumers sometimes does not give adequate protection to free expression. “Our likelihood-of-confusion test . . . generally strikes a comfortable balance between the trademark owner’s property rights and the public’s expressive interests,” Kozinski wrote. “But when a trademark owner asserts a right to control how we express ourselves — when we’d find it difficult to describe the product any other way (as in the case of aspirin), or when the mark (like Rolls-Royce) has taken on an expressive meaning apart from its source-identifying function — applying the traditional test fails to account for the full weight of the public’s interest in free expression.” Kozinski also stressed that though the word Barbie is in the title of the song, it does not mislead consumers about its source, and is relevant to the content of the song. “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,” Kozinski noted. Joining Kozinski in the ruling were Senior Judges Dorothy Nelson and Melvin Brunetti. In its brief before the Court, Mattel claimed the 9th Circuit’s ruling conflicts with several other circuits in its consideration of the likelihood-of-confusion test: “Before the decision below, no court of appeals had held that marketing efforts were immune from liability simply because they sought to promote an expressive work, regardless of whether they were also likely to cause consumer confusion. . . . The 9th Circuit’s abandonment of the likelihood-of-confusion analysis in this case was not warranted by First Amendment concerns.” MCA Records, in it brief to the court, said the 9th Circuit used the traditional analysis and did not break new ground but rather gave proper weight to First Amendment considerations. MCA lawyer Russell Frackman, a partner at Los Angeles’ Mitchell Silberberg & Knupp, asserted in the brief that the “Barbie Girl” song and its title are “entitled to the full protection of the First Amendment” as parodies and as such are exempted from the dilution law. “In such cases, the courts of appeals recognize that the First Amendment adds an overriding constitutional dimension to an otherwise purely statutory determination,” Frachman wrote. The Barbie petition comes to the Supreme Court as it deliberates Moseley v. V Secret Catalogue Inc., No. 01-1015, in which lingerie retailer Victoria’s Secret invoked the dilution law to challenge a Kentucky store named Victor’s Little Secret. OTHER CASES UP FOR REVIEW Jan. 17 Conference:Limon v. Kansas, No. 02-583. Constitutionality of Kansas’ “Romeo and Juliet” law, which imposes heavier penalties for oral sex between two teenagers of the same gender than between teens of the opposite sex. • Valdivieso v. Atlas Air, No. 02-728. Removability of wage-and-hours lawsuits from state to federal court. • Universal Guaranty Life Insurance Co. v. Morlan, No. 02-764. Standing of bankruptcy debtor to bring class action over employee benefits. • Akron, Ohio v. Kirby, No. 02-784. Whether low limits, from $25 to $300, on campaign contributions in municipal elections violate First Amendment. • Bonta v. Children’s Hospital and Medical Center, No. 02-840. State Medicaid reimbursements to out-of-state hospitals. Jan. 24 Conference:Beneficial National Bank v. Anderson, No. 02-306. Whether the National Bank Act pre-empts state usury laws. • Brotherhood of Maintenance of Way Employees v. Burlington Northern & Santa Fe Railway, No. 02-830. Whether the Railway Labor Act permits federal court injunction requiring unions to give 10 days’ notice before striking. “Conference Call” seeks to identify cases on the Supreme Court’s conference agenda that are leading candidates for Supreme Court review. Thomas Goldstein of Washington, D.C.’s Goldstein & Howe selects these cases from the many petitions filed based on several factors, including whether lower courts have split on the issues presented. Goldstein does not otherwise participate in the preparation of this column.

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