“If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong.”
-Kozinski, Circuit Judge (Mattel, Inc. v. MCA Records, 296 F.3d 894 (9th Cir. 2002) a.k.a. Barbie v. “Barbie Girl”
Mattel owned the trademark of Barbie and the band Aqua made a song named Barbie Girl. The song makes fun of Barbie and the values that Aqua believes that Barbie represents. Mattel sued MCA (Aqua’s record label) for trademark infringement (confusion) and dilution. The court held Aqua’s song about Barbie was protected under the fair use doctrine. Aqua clearly used Mattel’s trademark. However, it was a parody which is unlikely to confuse the consumer as to the source of a particular good. The name of the song “Barbie Girl” was relevant to the artistic work and not explicitly misleading. As to the dilution claim, there was a statutory exemption from dilution for noncommercial speech. MCA did use Barbie’s name to sell copies of the song, BUT the song also lampooned the Barbie image and commented humorously on the cultural values Aqua claimed it represented.
This case was heard before parody was specifically enumerated as an exception in the statute. Now, parody is an exception under the statute for both infringements by confusion and infringement by dilution.
Law in Style. 