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In a battle of the titans, Mattel recently lost in its trademark case against MCA Records and others with respect to the song “Barbie Girl” by the musical group Aqua. In a decision dated July 24, the 9th U.S. Circuit Court of Appeals ruled squarely in favor of MCA. The decision, authored by Circuit Judge Alex Kozinksi, refers to the case as a brawl between “Speech-Zilla” (MCA) and “Trademark Kong” (Mattel). Most legal decisions are fairly torturous to read and do not contain quotable quotes. Whether one agrees with Kozinski’s decision or not, it nevertheless is lively, humorous, informative and definitely worth quoting at some length. COLORFUL BARBIE BACKGROUND Kozinski’s decision begins with this interesting history behind the dispute: “Barbie was born in Germany in the 1950s as an adult collector’s item. Over the years, Mattel transformed her from a doll that resembled a ‘German street walker,’ as she originally appeared, into a glamorous, long-legged blonde. Barbie has been labeled both the ideal American woman and a bimbo. She has survived attacks both psychic (from feminists critical of her fictitious figure) and physical (more than 500 professional makeovers). She remains a symbol of American girlhood, a public figure who graces the aisles of toy stores throughout the country and beyond. With Barbie, Mattel created not just a toy but a cultural icon.” “With fame often comes unwanted attention. Aqua is a Danish band that has, as yet, only dreamed of attaining Barbie-like status. In 1997, Aqua produced the song ‘Barbie Girl’ on the album Aquarium. In the song, one bandmember impersonates Barbie, singing in a high-pitched, doll-like voice; another bandmember, calling himself Ken, entices Barbie to ‘go party.’ ‘Barbie Girl’ singles sold well and, to Mattel’s dismay, the song made it onto Top 40 music charts.” Mattel ultimately filed suit against MCA and the other music companies that produced, marketed and sold “Barbie Girl.” Mattel’s principal attack was that the defendants were liable for trademark infringement and trademark dilution with respect to Barbie. A federal trial court ruled against Mattel, finding that “Barbie Girl” is a parody of Barbie, that use of the term Barbie in the song is not likely to confuse consumers into believing that Mattel is affiliated with “Barbie Girl,” and that the Barbie mark was not diluted by “Barbie Girl.” ‘BARBIE GIRL’ BEATS BARBIE ON APPEAL The 9th Circuit, in the decision authored by Kozinski, affirmed the trial court victory in favor of MCA and the other defendants. At the outset, the decision notes that a trademark is a word, phrase or symbol that is used to identify a maker of a good or the provider of a service. A trademark thus is the owner’s way of preventing others from “duping” consumers into purchasing a product or service they mistakenly believe is made or provided by the trademark owner. The decision recognizes the dilemma that arises when trademarks “transcend their identifying purpose. For example, “some trademarks enter our public discourse and become an integral part of our vocabulary.” Such trademarks that come to mind include Band-Aid, Kleenex, Xerox and Rolls-Royce. “Once imbued with such expressive value, the trademark becomes a word in our language and assumes a role outside the bounds of trademark law.” When that happens, trademark law must take into account “the full weight of the public’s interest in free expression.” Turning to the matter at hand, the decision finds it plain that MCA uses Mattel’s mark, as “Barbie is one half of Barbie Girl.” However, the song in parody doe not point to another subject, but instead “targets Barbie herself.” Indeed, the song “lampoons the Barbie image and comments humorously on the cultural values Aqua claims she represents.” According to the decision, “the song title does not explicitly mislead as to the source of the work,” and the song falls within the so-called noncommercial use exemption to the Federal Trademark Dilution Act. Therefore, Mattel did not prove trademark infringement or trademark dilution. PARTING WORDS Judge Kozinski, in a final flourish addressing accusations made by the parties against each other in the press, stated: “the parties are advised to chill.” This is sound advice for parties in many heated legal proceedings. Eric J. Sinrod is a partner in the San Francisco office of Duane Morris, where he focuses on technology and litigation matters. His Web site is sinrodlaw.com and his firm’s site is Duane Morris.Mr. Sinrod may be reached by e-mail at [email protected]

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