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The makers of Barbie dolls have lost a high-profile trademark battle against the record company that produced the hit 1997 song “Barbie Girl.” On July 24, the 9th U.S. Circuit Court of Appeals held that the song neither infringed nor diluted the Barbie trademark. It based its decision, in part, on First Amendment grounds. The case was closely watched and clarifies First Amendment applications of the Federal Trademark Dilution Act. Writing for a unanimous panel and commenting on the contentious nature of litigation that included barbed press statements by both sides, Judge Alex Kozinski closed with the admonition, “The parties are advised to chill.” The 9th Circuit affirmed a district court’s granting of summary judgment in favor of MCA Records, which released “Barbie Girl.” The court held that it had not infringed on Mattel Inc.’s Barbie trademark under the federal Lanham Act. Nor did the company dilute the Barbie trademark in violation of the trademark dilution act. However, the court ruled in favor of Mattel on a defamation claim brought by MCA, which claimed a Mattel spokeswoman used the terms “bank robber,” “heist,” “crime” and “theft” to describe MCA’s actions in producing the song. Mattel Inc. v. MCA Records Inc., No. 98-56453. DANISH SINGERS The controversy began with MCA’s 1997 distribution of the song by the Danish pop group Aqua. The song featured Barbie and her playmate, Ken, and included lyrics such as “I’m a blonde bimbo girl” and “Kiss me here, touch me there, hanky-panky.” As the court noted, “to Mattel’s dismay, the song made it into the Top 40 music charts.” The toy company sued MCA and the other companies involved in the song in the U.S. District Court for the Central District of California. Mattel claimed that the song would create a likelihood of confusion in consumers, the standard for determining trademark infringement under the Lanham Act, 15 U.S.C. 1125 et seq. In addition, Mattel argued that the song violated the Federal Trademark Dilution Act, 15 U.S.C. 1125(c) because it diluted the Barbie trademark in two ways: By diminishing the trademark’s capacity to identify the Mattel doll. By tarnishing the doll’s good name, and thus the trademark, with risqu� lyrics that were inappropriate for young girls, the target market. In rejecting Mattel’s infringement argument, the 9th Circuit relied on a 2nd Circuit opinion in a suit involving Federico Fellini’s movie “Ginger and Fred.” The dancer and actress Ginger Rogers sued the makers of the film claiming that its title created the false impression that she was associated with it. The 2nd Circuit ruled against her, holding that a title doesn’t violate the Lanham Act unless it has “no artistic relevance to the underlying work whatsoever” or is explicitly misleading as to the source. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). In following Rogers, the 9th Circuit held that “the use of Barbie in the song title clearly is related to the underlying work.” The court held also that the song title was not explicitly misleading. ‘NONCOMMERCIAL’ USE As for Mattel’s dilution argument, the court conceded that MCA’s use of the mark was dilutive. However, it noted that there are three exceptions to the dilution act’s prohibition against trademark dilution: comparative advertising, news reporting and commentary and noncommercial use. The court held that “Barbie Girl” fell under the noncommercial-use exception. Although the court noted that “MCA used Barbie’s name to sell copies of the song,” it held the use was noncommercial because the song was social commentary on Barbie’s image and the cultural values she represents. Thus, the court held, “Barbie Girl” fell under a constitutionally protected exception to the act. MCA’s attorney, Russell Frackman of Los Angeles’ Mitchell, Silberberg & Knupp, noted that there was a “First Amendment thread throughout the opinion,” adding that the court used the legislative history to show that, in passing the dilution act, Congress didn’t intend to stifle parodies such as “Barbie Girl.” Mattel’s attorney, Adrian Pruetz of Los Angeles’ Quinn Emanuel Urquhart Oliver & Hedges, did not return a call seeking comment. Trademark litigator Mark Stein of Miami’s Lott & Friedland agrees. “Parody and satire have to be excluded,” Stein said, adding that if they weren’t, the Federal Trademark Dilution Act would be invalid on First Amendment grounds.

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