Petition for Writ of Certiorari — Mattel, Inc. v. MCA Records, Inc.
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No. 02-633
IN THE |
OFFICE OF THE CLERK
Supreme Court, U.S.
FILED
OCT 2 2 2002. |
Supreme Court of the United States
MATTEL, INC.,
Petitioner,
MCA RECORDS, INC., UNIVERSAL MUSIC INTERNATIONAL
LTD., UNIVERSAL Music A/S, MCA Music SCANDINAVIA
AB, AND UNIVERSAL MUSIC & VIDEO DISTRIBUTION, INC.,
Respondents.
On Petition for a W it of Certiorari
to the United States Court of Appeals
for the Ninth Circuit
PETITION FOR A WRIT OF CERTIORARI
(213) 624-7707
Counsel for Petitioner
ADRIAN M. PRUETZ SETH P. WAXMAN
CHRISTOPHER TAYBACK Counsel of Record
MICHAEL T. ZELLER EDWARD C. DUMONT
STEVEN VAUGHAN TODD ZUBLER
QUINN EMANUEL URQUHART MAYA ALEXANDRI
OLIVER & HEDGES, LLP WILMER, CUTLER & PICKERING
865 South Figueroa Street 2445 M Street, N.W.
10th Floor Washington, DC 20037
Los Angeles, CA 90017 (202) 663-6000
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QUESTIONS PRESENTED
1. Whether the court of appeals erred in abandoning the
traditional likelihood-of-confusion test for trademark infringe-
ment under the Lanham Act, 15 U.S.C. §§ 1114 and 1125, be-
cause the trademark was used as part of the title of an expres-
sive work.
2. Whether the unauthorized, diluting use of a famous
trademark to market a product is always a “noncommercial
use,” categorically exempt from liability under the Federal
Trademark Dilution Act, 15 U.S.C. § 1125(c), so long as that
use “does [anything] more than propose a commercial transac-
tion.”
(1)
ii
STATEMENT PURSUANT TO RULE 29.6
Petitioner Mattel, Inc., has no corporate parent, and no pub-
licly traded company owns 10% or more of its stock.
TABLE OF CONTENTS
Page
QUESTIONS PRESENTED .....sssccccecceseeececeeeeeeeeeeeeeeeececcecce i
STATEMENT PURSUANT TO RULE 29.6 eee. i
TABLE OF AUTHORITIES .....c.ccccccccsccccccccccccsscssssseseeseccccce v
Re I ana scccsvvcvvsovecsorovecenseecessesseseseee...
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CONSTITUTIONAL AND STATUTORY PROVI.
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IIE co scincsecissessccccecsascososesece: ee 2
REASONS FOR GRANTING THE PETITION.................... 7
I. The Ninth Circuit’s Decision Ignores The Lan-
guage Of The Lanham Act, Unjustifiably Ex-
empts An Entire Category Of Potentially In-
fringing Conduct From Liability, And Conflicts
With Decisions Of Other Courts Of Appeals. ............... 7
I]. The Ninth Circuit’s Limitation Of Liability Un-
der The Federal Trademark Dilution Act To
Unautherized Uses That Do No More Than
Propose A Commercial Transaction Cannot Be
Squared With Congressional Intent Or The De-
RRO PU CNN CCUG oasis sassscssecosscosesecsseseceseseceses 13
esis uhcin vvssonessonuiskndenavesanndnes 19
APPENDIX A: Opinion of the United States Court
of Appeals for the Ninth Circuit, dated J uly 24,
GN aiid cults sie Sesicnaelasiastelsncidiiacdecsapernsnannesesresn la
APPENDIX B: Order of the United States District
Court for the Central District of California de-
nying motion for preliminary injunction, dated
I WI oss sosstcssnsssschnsninseedanddoeussieseonessce, 21a
1V
APPENDIX C: Order of the United States District
Court for the Central District of California
granting motion for summary judgment, dated
TNE Dy Ti a cicichersnitinntnntvinnitiniicisiiniiaiiaaeimmiensuiann Sla
APPENDIX D: Constitutional and statutory provi-
I iin censtnscrsnsninniescecint th lainsinacuianianesniinidamnaionions 133a
Vv
TABLE OF AUTHORITIES
CASES
Page(s)
AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.
PUFFS Povvevicestlcinsnebehsuttcnbibsauiiiodibumisintaiemseidinacs aati 7
Anderson v. Treadwell, 294 F.3d 453 (2d Cir. 2002)........... 15
Anheuser-Busch, Inc. v. Balducci Publications, 28
Fe FOP I CW, BOD nessa irctcetieecende ce ta, ¥7
Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d
SP TC FI wiistisetineeteceiin eee ats 10, 12
Board of Trustees v. Fox, 492 U.S. 469 i iiistetaidenticad 14
Central Hudson Gas & Electric Corp. v. Public Ser-
vice Commission, 447 U.S. 557 PR di sritdicttiiecateieinits 10
Chemical Corp. of America v. Anheuser-Busch, Inc.,
306 F.2d 433 (Sth Cir. 1962) .0......ccccccccccccsccsoscecoseeeeee... 18
City of Cincinnati v. Discovery Network, Inc., 507
hs SE CTINO TS osarinssanen amide eee 14
Cliffs Notes, Inc. v. Bantam Doubleday Dell Publish-
ing Group, Inc., 886 F.2d 490 (2d Cir. i 10
Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d
Se CPC, DUO icine ke ed 8
Federal Express Corp. v. Federal Espresso, Inc., 201
F.3d 168, 175 (2d Cir. 2000) .0...c.cccccccccccsceseccocececccceceen. 16
Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806
MM TL Per ANE ES 18
Hormel Foods Corp. v. Jim Henson Prods., Inc., 73
Pe TT COR, CO enced deionchcs ee: 16
L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26
CRE SS POO iii Sisnctcncoeesthictebinacs tae eee 16, 17
Mutual of Omaha Insurance Co. v. Novak, 836 F.2d
Pre GRO WUD hinciicticciaetig! Bice 12,18
Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d
Se We niinticniinanaieidcesadiicaian tan ree eet 18
Nike, Inc. v. “Just Did It” Enterprises, 6 F.3d 1225
CAR SR aiivmstednantatceie te ao ore 12
vi
TABLE OF AUTHORITIES—Continued
Page(s)
Polaroid Corp. v. Polaroid Electronics Corp., 287
F.2d 492 (2d Cir. 1961) .....corccccsrsroccressoscerccocessvsersseoesesoes 8
Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) .......... 5, 6,9
Sports Authority, Inc. v. Prime Hospitality Corp., 89
F.3d 955 (2d Cir. 1996) .......ccrrccccrscccrreccceeccccvvescrsessooees 16
Sugar Busters LLC v. Brennan, 177 F.3d 258 (Sth
Che. BD BD) vvcccasierscssercscsvsncssoncosstncepessettensnareusesinntencsbnchideds |
Twin Peaks Productions, Inc. v. Publications Inter-
national, Ltd., 996 F.2d 1366 (2d Cir. 1993) ............ 9,11
Westchester Media v. PRL USA Holdings, Inc., 214
F.3d 658 (Sth Cir. 2000) .....ccrcccccorssscrsscsccccscsevevesevseneees 12
STATUTES
0S UGC. © PIG seccecssvcrceceesnnesescssonsinensevesepeensetssunnnnennnaiia 2
1S UBC. & PD EOCE) cccccccesccscccscsescecscoesonsosasscnnvemeoneanautons 5
1S UF.GC. © TADS. .ecerccesorssersrsssesetsessessesnnesnennesnenneseneuenaaaans 2
BS UGC. & EUG IaD ccccccecsessqseversesescenentaresecesnenesnsnengstinns 5,7,9
BS U.B.C. © PRT BCC) ..ccccccerorcercertncesevsensantnesensnnnstonsenanceniets 5,13
EBtt ted & | > » ROE 13
2B U.S.C. § BZSELT) ccceccsscscesseseccescesoncccessnscsossnnsstessunbasnpenvanssnns 2
LEGISLATIVE MATERIALS
H.R. Rep. No. 104-374 (1995) .......cccccseeseeeeseeees 13, 14, 15, 19
141 Cong. Rec. 38,559 (1995)...........cccsercresssreersessesssseeees 15
BOOKS, ARTICLES & TREATISES
Sandra Edelman & Bruce R. Ewing, The Federal
Trademark Dilution Act of 1995: A Litigation
Pe» spective, 86 Trademark Rep. 485 (July-Aug.
IN THE
Supreme Court of the United States
No. 02-633
MATTEL, INC.,
Petitioner,
Vv.
MCA RECcorDs, INC., UNIVERSAL MUSIC INTERNATIONAL
LTD., UNIVE;SAL Music A/S, MCA Music SCANDINAVIA
AB, AND UNIVERSAL Music & VIDEO DISTRIBUTION, INC.,
Respondents.
On Petition for a Writ of Certiorari
to the United States Court of Appeals
for the Ninth Circuit
PETITION FOR A WRIT OF CERTIORARI
Mattel, Inc. (“Mattel”) respectfully petitions for a writ of
certiorari to review the judgment of the United States Court of
Appeals for the Ninth Circuit in this case.
OPINIONS BELOW
The opinion of the court of appeals (App. 1a-20a) is re-
ported at 296 F.3d 894. The opinion of the district court grant-
ing summary judgment (App. 51a-132a) to respondents is re-
ported at 28 F. Supp. 2d 1120. The district court’s earlier opin-
ion denying Mattel a preliminary injunction (App. 21a-50a) is
reported at 46 U.S.P.Q.2d 1407.
2
JURISDICTION
The judgment of the court of appeals was entered on
July 24, 2002. This Court’s jurisdiction is invoked under
28 U.S.C. § 1254(1).
CONSTITUTIONAL AND STATUTORY
PROVISIONS INVOLVED
The First Amendment to the United States Constitution and
relevant portions of Sections 32 and 43 of the Lanham Act, 15
U.S.C. §§ 1114 and 1125, are reprinted in the Appendix at
pages 133a-137a.
STATEMENT
1. Petitioner Mattel manufactures and licenses a wide
range of consumer products. Its most famous and valus.-ie
trademark is the BARBIE brand, which Mattel spends well over
$100 million each year to market and promote in the United
States alone. The BARBIE product line has expanded from a
single female fashion doll, first released in 1959, into a vast ar-
ray of products sold under the BARBIE mark, including every-
thing from purses to computer hardware. Although different
BARBIE products are marketed to different groups of consum-
ers of all ages, the primary target market for BARBIE products
is three- to eleven-year-old girls. Pet. App. 104a.
Most pertinent here, and beginning as early as 1961, Mattel
has cultivated a substantial market for BARBIE music and mu-
sic-related products. For more than 15 years Mattel has regu-
larly released such products, including BARBIE country music,
music cassettes, musical instruments, juke boxes, and music-
themed playsets and dolls. ER 95, 156-64, 176, 186, 191."
These BARBIE music products almost always contain the
trademark BARBIE in the title. ER 95-97. In 1990, for exam-
ple, Mattel licensed a recording of dance music sung by
“BARBIE,” called “Barbie: The Look,” which it sold under the
Y “ER” refers to the Excerpts of Record filed in the court of appeals.
3
BARBIE mark and packaged in “BARBIE pink.” ER 149-55.
“Barbie: The Look” was advertised on the Nickelodeon cable
television channel (the “Kid’s Network”) and featured in hun-
dreds of publications. In addition, at the same time that respon-
dents were conducting the marketing campaign at issue in this
case, Mattel concluded an agreement with Sony Music’s chil-
dren’s division to release a BARBIE CD and music video. ER
1757-65. The principal consumer base for Mattel’s BARBIE
music products has been girls aged five through the teens. ER
1239, 1281.
2. Respondents MCA Records, Inc. and affiliates (collec-
tively, “MCA”) are part of the largest music company in the
world. In 1997, MCA began promoting a pop music recording
called “Barbie Girl,” by the Danish group “Aqua.” MCA’s
marketing of the “Barbie Girl” recording intentionally and suc-
cessfully targeted a core group of Mattel’s BARBIE consumers.
Specifically, MCA focused its promotional efforts on girls aged
9 to 14—a group that, the district court found (Pet. App. 10a),
overlapped significantly with the principal target market for
Mattel’s BARBIE products, including musical products.”
MCA achieved this success among Mattel’s actual or po-
tential customers by, among other things:
* marketing the “Barbie Girl” recording in packaging and on
many CDs and CD-ROMs that featured the title “Barbie
Girl” in bright pink lettering—similar to Mattel’s
“BARBIE pink” (ER 1499-1506);
advertising the “Barbie Girl” recording during children’s
television programming on Saturday morning and in the af-
ter-school hours of 3:00 p.m. to 6:00 p.m. (ER 1820, 1830-
31);
va substantial portion of the actual purchasers of MCA’s recording
were even younger than 9-14, and therefore closer to Mattel’s own consumer
base. As MCA’s market research revealed, 40 percent of those who pur-
chased the “Barbie Girl” recording were under 13. Id. at 104a. Two-thirds
of the purchasers were female. ER 1165, 1170.
4
e creating a promotional music video that began with the
“Barbie Girl” title in the color pink and that used pink
scenery and props similar to well-known BARBIE products
such as the BARBIE DREAM HOUSE—another Mattel
trademark (ER 1513-20); and
e referring to Mattel’s BARBIE DREAM HOUSE in press
releases about the “Barbie Girl” recording (ER 1693-94).
Lest there be any doubt about the self-consciousness of
these marketing efforts, MCA also attempted to sell “Barbie
Girl” recordings through Toys ‘R’ Us, a primary retail outlet for
Mattel’s BARBIE products (ER 1175-79), considered advertis-
ing its “Barbie Girl” products on Nickelodeon (the ‘Kids’ Net-
work”) (ER 1828), and produced a run of pink, heart-shaped
purses labeled “Barbie Girl”—a promotional item that MCA
abandoned only after Mattel filed suit (ER 1 199-1203).
MCA’s marketing efforts paid off handsomely: In the
United States alone, MCA sold more than 1.4 million copies of
recordings of or including the “Barbie Girl” song. Pet. App.
21a. That same marketing, however, alSo caused considerable
confusion as to whether Mattel had released the “Barbie Girl”
recording as a BARBIE brand product. Mattel received e-mails
from young girls who believed that “BARBIE” had written or
performed the song, and asked for copies of it. ER 1620-50.
Mattel employees were asked if Mattel had released the re-
cording. ER 1286-88. A survey conducted by Mattel con-
firmed that there was substantial actual confusion among con-
sumers. ER 904. Indeed, many survey participants who
thought that the “Barbie Girl” recording was about the BARBIE
doll believed that the song was an advertisement for the doll.
ER 862-903. Sophisticated third parties also recognized the
high likelihood of consumer confusion: NBC refused to air one
of MCA’s television advertisements for the Aqua album unless
the advertisement was modified to include a readily apparent
and readable disclaimer on it. ER 1737, 1740.
ee ee ee ee
5
3. Mattel sued MCA to remedy the effects of MCA’s con-
fusing marketing campaign using Mattel’s trademark and tar-
geting Mattel’s consumers. Its complaint alleged, among other
things, trademark infringement under Sections 32(1 ) and 43(a)
of the Lanham Act, 15 U.S.C. 8§ 1114(1) and 1125(a), and
trademark dilution under the Federal Trademark Dilution Act
(“FTDA”), 15 U.S.C. § 1125(c).
The district court refused Mattel’s request for a preliminary
injunction (Pet. App. 21a-50a), and later granted summary
judgment in favor of MCA on Mattel’s infringement and dilu-
tion claims. The court concluded principally that MCA’s ac-
tivities did not amount to infringement because MCA had made
only “nominative fair use” of the BARBIE trademark. Id. at
84a-89a. Alternatively, the court considered Mattel’s infringe-
ment claim under the traditional likelihood-of-confusion analy-
sis, and concluded that MCA was entitled to judgment “as a
matter of law.” Jd. at 91a, 90a-108a. The district court also
rejected Mattel’s dilution claim, holding that MCA’s use of tiie
BARBIE trademark was “for purposes of parody,” and was
therefore protected by the statutory exemption for “noncom-
mercial use” of a mark. Jd. at 11 1a-116a.
4. The court of appeals affirmed. /d. at 1a-20a. With re-
spect to infringement, the court did not address Mattel’s central
submission that it had adduced sufficient evidence of likely
consumer confusion resulting from MCA’s marketing use of the
BARBIE trademark to raise genuine issues of fact that should
be resolved by a jury. See id. at 4a-8a. Rather, concluding that
the standard likelihood-of-confusion analysis “fails to account
for the full weight of the public’s interest in free expression,”
id. at 4a-5Sa, the court adopted a new approach that, it said, ren-
dered the traditional inquiry irrelevant.
Purporting to adopt a test articulated by the Second Circuit
in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the court
held that, as a categorical matter, “literary titles do not violate
the Lanham Act ‘unless the title has no artistic relevance to the
6 :
underlying work whatsoever, or, if it has some artistic rele-
vance, unless the title explicitly misleads as to the source or the
content of the work.’” Pet. App. 8a (quoting Rogers, 875 F.2d
at 999). The court found MCA’s marketing activities immune
from Lanham Act liability because the title “Barbie Girl” was
relevant to the content of Aqua’s song, and because the title it-
self did not, in the court’s view, “explicitly mislead as to the
source of the work.” Jd. The court’s analysis gave no weight at
all to how the “Barbie Girl” recording and related products were
marketed to or perceived by the consuming public.
The court of appeals also concluded that MCA’s use of the
BARBIE mark was exempt from liability under the FTDA. Id.
at 8a-i6a. The court recognized that all the basic statutory
predicates for liability were satisfied, because MCA had made
“commercial use in commerce” of Mattel’s famous mark, in a
way that diluted the distinctive quality of the mark. /d. at 10a-
1 1a. The court nonetheless concluded that MCA’s conduct was
shielded as a “noncommercial use” of the mark. Jd. at 1 1a-16a.
Reasoning that Congress, in enacting the noncommercial use
exception, intended to incorporate the First Amendment con-
cept of “commercial speech,” the court concluded that any use
of a trademark should fall within the exception so long as it is
not “‘purely commercial’ [speech]—that is, if it does more than
promote a commercial transaction.” Id. at 14a-15a. In the
court’s view, use of the BARBIE trademark in the title “Barbie
Girl” was not “purely commercial speech,” and all of MCA’s
marketing activities—admittedly, “us[ing] Barbie’s name to sell
copies of the song’—were shielded from dilution liability by
the “noncommercial use” exemption. /d. at 15a-16a.
7
REASONS FOR GRANTING THE PETITION
The Ninth Circuit’s Decision Ignores The Language Of
The Lanham Act, Unjustifiably Exempts An Entire
Category Of Potentially Infringing Conduct From Li-
ability, And Conflicts With Decisions Of Other Courts
Of Appeals. a ee
Until the decision below, all courts of appeals analyzed
trademark infringement claims using the traditional likelihood-
of-confusion test derived directly from basic trademark princi-
ples and the language of the Lanham Act. In this case, how-
ever, the Ninth Circuit pushed that test aside and held that
where a trademark is used in the title of an expressive work, all
related uses of the mark—including usage in marketing the
work—are effectively immune from liability for infringement.
That holding is inconsistent with the text of the Lanham Act,
and conflicts with the decisions of other courts of appeals.
1. Sections 32(1)(a) and 43(a)(1) of the Lanham Act pro-
hibit any person from using another party’s trademark in con-
nection with the sale of goods or services if that use is “likely to
cause confusion” regarding the source or sponsorship of, or
connection, affiliation, or association with, the goods or ser-
vices. 15 U.S.C. §§ 1114(1)(a), 1125(a)(1). For decades,
courts in each circuit have analyzed Lanham Act infringement
Cases using some version of a multi-factor “likelihood of confu-
sion” test. In the Ninth Circuit, for example, courts consider
eight non-exclusive factors, including (1) the strength of the
plaintiff’s mark; (2) the proximity or relatedness of the parties’
goods; (3) the similarity of the marks; (4) evidence of actual
confusion; (5) the marketing channels used; (6) the type of
goods and degree of care likely to be used by the purchaser; (7)
the defendant’s intent in selecting the mark; and (8) the likeli-
hood of expansion of the relevant product lines. See Pet. App.
90a-91a; AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49
(9th Cir. 1979). Other circuits use substantially similar versions
of the likelihood-of-confusion test. See, e.g., Elvis Presley En-
8
ters., Inc. v. Capece, 141 F.3d 188, 194-96 (Sth Cir. 1998); Po-
laroid Corp. v. Polaroid Elecs. Corp., 287 F.2d 492, 495 (2d
Cir. 1961).
In this case, the district court granted summary judgment
for MCA on the basis (in part) of its analysis of the Sleekcraft
factors, and Mattel argued on appeal that that decision should
be reversed because its evidence was sufficient to require sub-
mission of the case to a jury. The Ninth Circuit, however, sim-
ply jettisoned the traditional likelihood-of-confusion test in ana-
lyzing MCA’s marketing of sound recordings of or including
“Barbie Girl.” The court acknowledged that MCA had used
Mattel’s BARBIE mark. But it held that because the lyrics of
the song “Barbie Girl” were parodic speech protected by the
First Amendment, and because the title featuring Mattel’s mark
was relevant to the song’s expressive message and did not (in
the court’s view) “explicitly mislead” consumers as to the
source of the song, Mattel had no trademark infringement claim
of any sort—regardless of the manner in which MCA had used
Mattel’s trademark in marketing its “Barbie Girl” products.
The court, in other words, created a legal standard focused so
narrowly on the song and its title, taken in isolation, that it
missed the real issue—MCA’s calculated, commercial use of
the BARBIE mark in promoting its sale of recordings of or in-
cluding the song.
The court below never considered, for example, whether
MCA’s marketing of “Barbie Girl” recordings in packaging that
featured that title in bright pink lettering, similar to Mattel’s
distinctive “BARBIE pink,” or its use of Mattel’s trademark
BARBIE DREAM HOUSE in press releases promoting “Barbie
Girl,” or its targeted promotion of “Barbie Girl” to Mattel’s
core consumers on Saturday-morning television shows, created
a likelihood that purchasers of MCA’s recordings—many of
whom were pre-teen girls—would be confused about whether
those recordings were associated with Mattel’s extensive line
of BARBIE products or otherwise sponsored by Mattel. The
Ninth Circuit simply ignored those uses of the BARBIE mark,
9
once it had concluded that MCA’s use of the mark in the lyrics
and title of the song, viewed in isolation, were protected First
Amendment speech.
That approach to the analysis of a trademark claim departs
dramatically from Congress’s statutory directive that challenged
uses of trademarks be evaluated to determine whether they are
“likely to cause confusion.” 15 U.S.C. §§ 1114(1)(a),
1125(a)(1). Not surprisingly, therefore, before the decision be-
low, 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 likel y
to cause consumer confusion.
The court below purported to adopt its analysis from
Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). In Rogers,
the Second Circuit considered whether a film title, “Ginger and
Fred,” by itself violated the Lanham Act by falsely indicating an
association with actress Ginger Rogers. The court held that title
did not violate the Act because it was relevant to the artistic
content of the film and did not, in the court’s view, explicitly
mislead consumers as to the source or content of the film. See
id. at 999-1001. The Ninth Circuit held that the title “Barbie
Girl” satisfied those same criteria, and on that basis held that
MCA’s uses of the BARBIE mark in the title and in related
marketing efforts were categorically immune from Lanham Act
liability. Pet. App. 8a.
Rogers itself suggested, however, that its test would not
apply to certain confusing uses of trademarks in titles. See 875
F.2d at 999 n.5. And since Rogers, the Second Circuit has
made clear that the determination whether use of a trademark in
a title is misleading “must be made, in the first instance, by ap-
plication of the venerable Polaroid [likelihood-of-confusion]
factors”—not by a simple judicial reading of a defendant’s
work. Twin Peaks Prods., Inc. v. Publications Int’l, Ltd., 996
F.2d 1366, 1379 (2d Cir. 1993) (emphasis added); see also
Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ ’g Group,
10
Inc., 886 F.2d 490, 495-97 (2d Cir. 1989) (applying likelihood-
of-confusion test to parody of Cliffs Notes called Spy Notes).
In Twin Peaks, the court noted that whereas the question in
Rogers was a narrow one—whether the words of a title, in and
of themselves, violated the rights of a celebrity—the question in
other cases will be whether “the wording and appearance of the
title” (for example, in the presentation and marketing of the
work) amounts to trademark infringement. Twin Peaks, 996
F.2d at 1379. In such a case, when a title is “displayed in a
manner that conjures up a visual image prominently associated
with the work bearing the mark that was copied,” the title,
though it “otherwise [might] be permissible under Rogers,”
must be scrutinized under the likelihood-of-confusion test. Id.
at 1380 (emphasis added). In its purported application of
Rogers, the Ninth Circuit ignored these later Second Circuit de-
cisions, which support precisely the sort of claim that Mattel
made in this case: that it was the manner in which MCA used
the title “Barbie Girl” in marketing its sound recording prod-
ucts—not the lyrics or title of the song in isolation—that in-
fringed Mattel’s trademark under the Lanham Act.
The Ninth Circuit’s abandonment of the likelihood-of-
confusion analysis in this case was not warranted by First
Amendment concerns. Indeed, as the court recognized else-
where in its opinion (Pet. App. 12a), the likelihood-of-
confusion standard is fully compatible with the First Amend-
ment, because the Constitution does not prevent the government
from regulating misleading or confusing commercial speech.
See, e.g., Central Hudson Gas & Elec. Corp. v. Public Serv.
Comm’n, 447 U.S. 557, 566 (1980). Parodic speech is sheltered
under the likelihood-of confusion standard because parody,
though it necessarily must evoke an original work, also depends
on evident differences from the original to produce the desired
humorous or critical effect. See Anheuser-Busch, Inc. v. L & L
Wings, Inc., 962 F.2d 316, 321 (4th Cir. 1992) (“[E]}ffective
parody . . . diminishes any risk of consumer confusion.”). Some
courts have sought to ensure full protection of First Amendment
1]
values in trademark cases by demanding a “particularly compel-
ling” showing of likely confusion where expressive speech is
involved. See, e.g., Sugar Busters LLC v. Brennan, 177 F.3d
258, 269 n.7 (Sth Cir. 1999); Twin Peaks, 996 F.2d at 1379.
But no other court has discarded the likelihood-of-confusion
test altogether.
In short, the Ninth Circuit’s decision unnecessarily casts
aside Congress’s statutory command in the Lanham Act to pro-
tect consumers against the unauthorized use of trademarks in
ways that are “likely to cause confusion,” and leaves both con-
sumers and trademark owners categorically unprotected against
the confusing marketing of expressive products. That funda-
mental error in the application of an important federal statute
warrants review and correction by this Court.
2. Not surprisingly, the court of appeals’ abandonment of
the likelihood-of-confusion analysis conflicts with the decisions
of other courts. As discussed above, for example, the Second
Circuit held in Twin Peaks that the Rogers test for analyzing
allegedly infringing titles—the precise test that the Ninth Cir-
cuit applied below—is not, by itself, adequate where the display
of a title “conjures up a visual image prominently associated
with the work bearing the mark that was copied.” 996 F.2d at
1380. The court concluded that although the use of the mark
“Twin Peaks” in a book title might, by itself, be permissible for
a book about the television show of the same name, the defen-
dant’s particular presentation of the title on the cover of the
book, in a manner intended to evoke an element of the show,
required a remand to the district court for application of the
likelihood-of-confusion factors. Jd. That result cannot be rec-
onciled with the decision below, which rejected liability as a
matter of law, without applying the likelihood-of-confusion
standard to MCA’s marketing of its “Barbie Girl” products—
even though Mattel introduced substantial evidence to support
its contention that MCA had intentionally traded on Mattel’s
BARBIE trademark in marketing its products to Mattel’s con-
sumer base.
12
The decision below also conflicts with the Fifth Circuit’s
decision in Westchester Media v. PRL USA Holdings, Inc., 214
F.3d 658 (5th Cir. 2000). In that case, the defendant produced a
magazine entitled “POLO,” featuring articles about, among
other things, the game of polo. /d. at 661-63. Although the
magazine’s title passed the narrow Rogers test (because it was
relevant to the magazine’s content and not explicitly mislead-
ing, cf. id. at 665 n.3), the Fifth Circuit followed the Second
Circuit’s approach in Twin Peaks and assessed the case under
the likelihood-of-confusion standard. Indeed, applying that
standard, the court held that the defendant had infringed the
“Polo” trademarks of the Ralph Lauren clothing line, in part
because the defendant’s marketing of the magazine had “tar-
get[ed] the same consumers and on occasion use[d] the same
retail outlets.” Jd. at 667-68.
The decision below similarly conflicts with decisions of the
Fourth, Seventh, Eighth, and Tenth Circuits, each of which has
held that even where an infringement claim involves an expres-
sive work, the particular manner in which the defendant mar-
kets or presents that work requires analysis under the statutory
likelihood-of-confusion test. See Anheuser-Busch, Inc. v.
Balducci Publ’ns, 28 F.3d 769, 773-77 (8th Cir. 1994) (presen-
tation of parody using plaintiff’s trademarks on the back cover
of defendant’s magazine created unnecessary confusion and
failed likelihood-of-confusion test); Nike, Inc. v. “Just Did It”
Enters., 6 F.3d 1225, 1227-33 (7th Cir. 1993) (analyzing alleg-
edly infringing parodic products under likelihood-of-confusion
test and expressly noting that “how the parties market the prod-
uct is... relevant”); L & L Wings, 962 F.2d at 320-22 (permit-
ting jury to apply likelihood-of-confusion factors to parodic
product); Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397,
402 (8th Cir. 1987) (applying likelihood-of-confusion test to
parodic work and sustaining injunction insofar as defendant
used marks “‘to market, advertise, or identify [his] services or
products.”” (alteration in original)).
13
In short, the decision below not oniy departs from the statu-
tory likelihood-of-confusion standard and threatens harm to
both trademark owners and consumers, but also conflicts with
the legal standards applied by other circuits. Both the error and
the conflict warrant review.
II. The Ninth Circuit’s Limitation Of Liability Under The
Federal Trademark Dilution Act To Unauthorized Uses
That Do No More Than Propose A Commercial Trans-
action Cannot Be Squared With Congressional Intent
Or The Decisions Of Other Circuits.
The Federal Trademark Dilution Act prohibits commercial
use of a famous mark that causes “dilution of the distinctive
quality of the mark.” 15 U.S.C. § 1125(c)(1). “Dilution”
means “the lessening of the capacity of a famous mark to iden-
tify and distinguish goods or services, regardless of the presence
or absence of (1) competition between the owner of the famous
mark and other parties, or (2) likelihood of confusion, mistake,
or deception.” Jd. § 1127. Unlike the law of trademark in-
fringement, which is fundamentally concerned with protecting
consumers from confusion, the FTDA, like dilution law gener-
ally, protects trademark owners against misappropriation of the
brand equity accumulated in the trademark. See H.R. Rep. No.
104-374, at 3 (1995) (dilution protects “the substantial invest-
ment the owner has made”). The Act exempts from liability
three specific uses: (1) “news reporting and news commen-
tary,” (2) “[flair use . . . in comparative commercial advertising
... to identify the competing goods” of the trademark owner,
and (3) “{njoncommercial use of a mark.” 15 U.S.C.
§ 1125(c)(4).
In construing the FTDA in this case, the court of appeals
invented a test for what constitutes a “noncommercial use” that
cannot fairly represent Congress’s intent and cannot be recon-
ciled with the dilution decisions of other courts of appeals.
That error independently warrants this Court’s review.
14
1. The court of appeals correctly recognized that when
MCA “created and sold to consumers in the marketplace com-
mercial products (the Barbie Girl single and the Aquarium al-
bum) that bear the Barbie mark,” it satisfied the threshold re-
quirements for liability under the FTDA: commercial, dilutive
use of a famous mark. Pet. App. 10a. The court held, how-
ever, that MCA’s conduct was categorically exempt from liabil-
ity under the Act’s “noncommercial use” exemption. /d. 14a-
16a. As the court construed that exemption, any use of the
BARBIE mark by MCA was protected so long as it was not
“purely commercial’—that is, if it d[id] more than propose a
commercial transaction.” Jd. at 15a (citation omitted).
That construction of the FTDA is incorrect. As the court
recognized (see Pet. App. 13a-15a), Congress did not intend the
Act to “prohibit or threaten ‘noncommercial’ expression, as that
term has been defined by the courts.” H.R. Rep. No. 104-374,
at 4. Nor, however, did it intend, in adopting the “noncommer-
cial use” exemption, “to alter existing case law on the subject of
what constitutes ‘commercial’ speech.” Jd. Yet the Ninth Cir-
cuit, in construing the exemption, adopted a definition that rec-
ognizes as “commercial,” and therefore subject to potential li-
ability under the Act, only the very narrowest category of trade-
mark uses that could possibly be defined as “commercial
speech.” That is simply not consistent with the “existing case
law” to which the House Report refers—which, as the court of
appeals itself admitted, has never “clearly delineated” the
boundary between “commercial” and “noncommercial” speech.
Pet. App. 15a. See, e.g., City of Cincinnati v. Discovery Net-
work, Inc., 507 U.S. 410, 422 (1993) (discussing various possi-
ble definitions of “commercial speech’’). In particular, there is
no question that admixtures of “pure” and “commercial” speech
need not be characterized as wholly “noncommercial,” as the
court of appeals has construed the FTDA to do. See Board of
Trustees v. Fox, 492 U.S. 469, 475 (1989); see also id. at 474
(“[R]espondents contend that here pure speech and commercial
speech are ‘inextricably intertwined,’ and that the entirety must
15
therefore be classified as noncommercial. We disagree.”’);
Anderson v. Treadwell, 294 F.3d 453, 460 (2d Cir. 2002).
Moreover, there is no reason to believe that Congress in-
tended the exceptionally broad construction of the “noncom-
mercial use” exemption—and thus the exceptionally narrow
scope for application of the FTDA—that the Ninth Circuit has
now adopted. The court of appeals’ analysis renders the “non-
commercial use” exemption essentially all-encompassing as
applied to unauthorized use of trademarks in connection with
expressive works. Such use, either as part of the works them-
selves or in marketing them, will almost always do more than
just “propose a commercial transaction.” Congress, however,
intended the exemption to protect “forms of expression that are
not a part of acommercial transaction.” 141 Cong. Rec. 38,559
(1995) (statement of Senator Hatch) (emphasis added). And
when it decided, as discussed below, to grant federal protection
for “all forms of dilution [previously] recognized by the courts”
under state law, H.R. Rep. No. 104-374, at 8, it could not have
contemplated that through the “noncommercial use” exemption
it was simultaneously writing out of the Act an entire class of
potential cases clearly recognized by existing dilution law.
The F£DA was meant to enhance the federal protection af-
forded to trademark owners. Substantively, the Act expanded
federal law to protect trademark owners’ investments in their
marks. See id. at 3 (“[D]ilution recognizes the substantial in-
vestment the owner has made in the mark and the commercial
value and aura of the mark itself, protecting both from those
who would appropriate the mark for their own gain.”). Geo-
graphically, the Act extended to famous marks uniform, na-
tional protection against dilution. See id. Of course, Congress
intended to proceed only with due regard for the First Amend-
ment interests implicated by truly noncommercial uses of oth-
erwise protected marks. But the Ninth Circuit’s holding that
the only dilutive use prohibited by the Act is one that “does [no]
more than propose a commercial transaction” (Pet. App. 15a) is
. 16
simply not a plausible implementation of what was meant to be
significant federal protection for trademark owners.
2. Although the FTDA is a relatively new statute, in fram-
ing it Congress intended to grant protection against “all forms
of dilution [previously] recognized by the courts” under state
law. H.R. Rep. No. 104-374, at 8. Accordingly, courts constru-
ing the FTDA routinely look to pre-FTDA decisions, particu-
larly those of federal appellate courts.” The Ninth Circuit's
novel construction of the “noncommercial use” exemption is
inconsistent with the analysis employed in at least two such de-
cisions considering claims under state anti-dilution statutes.
In L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26,
32 (1st Cir. 1987), defendant Drake included a two-page parody
in a 100-page magazine. The item was not referenced on the
front or back cover of the magazine, but it was listed in the ta-
ble of contents, “labeled as ‘humor’ and ‘parody.’” Jd. The
First Circuit emphasized that “dilution injury stems from an un-
authorized effort to market incompatible products or services by
trading on another’s trademark.” Jd. at 31 (emphasis added).
The court refused to impose liability because “Drake did not
use Bean’s mark to identify or promote goods or services to
consumers; it never intended to market the ‘products’ displayed
in the parody.” Jd. at 32. The clear import of the court’s analy-
sis, however, is that use of the plaintiff's mark would have in-
flicted cognizable injury if it had been clearly linked to the
Y See, e.g., Federal Express Corp. v. Federal Espresso, Inc., 201 F.3d
168, 175 (2d Cir. 2000) (relying on Hormel Foods Corp. v. Jim Henson
Prods., Inc., 73 F.3d 497 (2d Cir. 1996), and Sports Authority, Inc. v. Prime
Hospitality Corp., 89 F.3d 955 (2d Cir. 1996), both decided under state
law); see also Sandra Edelman & Bruce R. Ewing, The Federal Trademark
Dilution Act of 1995: A Litigation Perspective, 86 Trademark Rep. 485, 494
(July-Aug. 1996) (“By referring to ‘all forms of dilution recognized by the
courts,’ the House Report confirms that a party may rely on reported prece-
dents interpreting state statutes . . . .”); Siegrun D. Kane, Trademark Law
§ 8:1 (3d ed. 2000) (“{C]ourts interpreting the federal statutes will look to
cases decided under the state statutes . . . .”).
17
marketing of the defendant’s product—precisely Mattel’s com-
plaint in this case, and precisely the sort of unauthorized use
that is categorically protected by the decision below, so long as
it is combined with any sort of “noncommercial” content. See
id. (“We think the Constitution tolerates an incidental impact on
rights of expression of commercial actors in order to prevent a
defertdant from unauthorizedly merchandising his products with
another’s trademark.”).
In Anheuser Busch, Inc. v. Balducci Publications, 28 F.3d
769 (8th Cir. 1994), defendant Balducci had also created an ad
parody that made unauthorized use of the plaintiff's marks. In
this instance, however, the challenged ad was placed on the
back cover of the defendant’s humor magazine. See id. at 772.
Reversing the district court, the Eighth Circuit rejected
Balducci’s claim that its use of the marks was shielded by the
First Amendment, because it determined that use of the fake
advertisement to gain attention for the defendant's own product
exceeded permissible bounds. /d. at 778. The court expressly
contrasted use of the marks on the back cover of the magazine,
a location “frequently used for advertisements” that “[could
not] be expected to command the thoughtful deliberation of all
or even most of the viewing public,” id. at 775, with the use at
issue in L.L. Bean, where “neither the [parody] nor the [plain-
tiffs] trademark was featured on the front or back cover of the
magazine,” id. at 778 (first alteration in original) (internal quo-
tation marks omitted). Yet there is no question that the parodic
ad at issue in Anheuser Busch did “more than propose a com-
mercial transaction” (Pet. App. 15a), and would therefore have
been completely protected under the Ninth Circuit’s construc-
tion of the FTDA.
L.L. Bean and Balducci stand for the proposition that use of
expressive works containing another’s trademarks to market
the user’s own products exceeds the scope of permissible unau-
18
thorized, dilutive use.” That proposition is consistent with de-
cisions in the infringement context. See Harley-Davidson, Inc.
v. Grottanelli, 164 F.3d 806, 813 (2d Cir. 1999) (“Grotanelli’s
[use of Harley-Davidson’s] mark . .. simply uses [the mark]
somewhat humorously to promote his own products and ser-
vices, which is not a permitted trademark parody use.”),; Mutual
of Omaha Ins. Co. v. Novak, 836 F.2d 397, 402 (8th Cir. 1987)
(injunction on use of trademark parody consistent with the First
Amendment where it applies only to “use[ of] Mutual’s marks
as logos or to market, advertise, or identify [Novak’s] services
or products.” (internal quotation omitted)). It is, however,
plainly inconsistent with the Ninth Circuit’s holding that
“MCAI|‘s] use[ of] Barbie’s name to sell copies of” its sound-
recording products “falls within the noncommercial use exemp-
tion to the FTDA.” Pet. App. 15a-16a.”
3. Ensuring consistent, nationwide protection for famous
trademarks was the single most important policy justification
underlying the passage of the FTDA:
[F]amous marks ordinarily are used on a nationwide
basis and dilution protection is currently only available
... [in] approximately 25 states .... Further, court
4 See also Chemical Corp. of America v. Anheuser-Busch, Inc., 306
F.2d 433, 438 (Sth Cir. 1962) (upholding application of Florida anti-dilution
law to use of slogan “Where there’s life . . . there’s bugs,” parodying An-
heuser-Busch’s slogan “Where there’s life . . . there’s Bud,” in advertising an
insecticidal floor wax: “(T]his is a brazen and cheap effort by the defendant
below to capitalize on the good will created by the tremendous expenditure
in advertising by the plaintiff.”’).
~ At least one case has also recognized, under the FTDA but not in the
context of an expressive use, that marketing and promotional uses of a
trademark are commercial or “trademark” uses—that is, uses “for the desig-
nation of a sponsor or identification of a product.” Nabisco, Inc. v. PF
Brands, Inc., 191 F.3d 208, 223 (2d Cir. 1999) (“Nickelodeon has chosen to
publicize its show by causing dissemination of its trademarks on crackers,
while Nabisco seeks to boost its sales of crackers by associating them with
Nickelodeon’s popular trademark characters. . . . [This use] is a trademark
use.”’).
19
decisions have been inconsistent and some courts are
reluctant to grant nationwide injunctions for violation
of state law where half of the states have no dilution
law. Protection for famous marks should not depend
on whether the forum where suit is filed has a dilution
Statute. This simply encourages forum-shopping and
increases the amount of litigation.
H.R. Rep. No. 104-374, at 3-4. The court of appeals’ decision
in this case departs both from sensible principles of statutory
construction and from the persuasive reasoning other courts
have used in determining where protected expression ends and
commercial dilution begins. That departure jeopardizes both
the protection and the legal consistency promised by the FTDA.
Particularly because the Ninth Circuit’s rulings are of consider-
able importance in intellectual property litigation, this Court
should review the court of appeals’ erroneous construction of
the scope of federal anti-dilution protection.
CONCLUSION
For the foregoing reasons, the petition for writ of certiorari
should be granted.
Respectfully submitted,
ADRIAN M. PRUETZ SETH P. WAXMAN
CHRISTOPHER TAYBACK Counsel of Record
MICHAEL T. ZELLER EDWARD C. DUMONT
STEVEN VAUGHAN TODD ZUBLER
QUINN EMANUEL URQUHART MAYA ALEXANDRI
OLIVER & HEDGES, LLP WILMER, CUTLER & PICKERING
865 South Figueroa Street 2445 M Street, N.W.
10th Floor Washington, DC 20037
Los Angeles, CA 90017 (202) 663-6000
(213) 624-7707
Counsel for Petitioner
OCTOBER 2002
APPENDICES
la
APPENDIX A
United States Court of Appeals,
Ninth Circuit
MATTEL, INC., a Delaware corporation,
Plaintiff-counter-defendant-A ppellant,
v.
MCA RECORDS, INC., a California corporation,
Defendant-counter-claimant-Appellee,
* * * *
No. 98-56577
Argued and Submitted Dec. 5, 2000
[296 F.3d 894]
Filed July 24, 2002
Appeal from the United States District Court for the Cen-
tral District of California William Matthew Byrne, Jr., Senior
District Judge, Presiding. D.C. No. CV-97-06791-WMB-Mcx.
Before D.W. NELSON, BRUNETTI and KOZINSKI, Cir-
cuit Judges.
OPINION
KOZINSKi, Circuit Judge:
If this were a sci-fi melodrama, it might be called Speech-
Zilla meets Trademark Kong.
I
Barbie was born in Germany in the 1950s as an adult col-
lector’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
2a
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 beyorid. With Barbie, Mattel created not just a toy
but a cultural icon.
#§99 With fame often comes unwanted attention. Aqua is
a Danish band that has, as yet, only dreamed of attaining Bar-
bie-like status. In 1997, Aqua produced the song Barbie Girl on
the album Aquarium. In the song, one bandmember imperson-
ates Barbie, singing in a high-pitched, doll-like voice; another
bandmember, calling himself Ken, entices Barbie to “go party.”
(The lyrics are in the Appendix.) Barbie Girl singles sold well
and, to Mattel’s dismay, the song made it onto Top 40 music
charts.
Mattel brought this lawsuit against the music companies
who produced, marketed and sold Barbie Girl: MCA Records,
Inc., Universal Music International Ltd., Universal Music A/S,
Universal Music & Video Distribution, Inc. and MCA Music
Scandinavia AB (collectively, “MCA”). MCA in turn chal-
lenged the district court’s jurisdiction under the Lanham Act
and its personal jurisdiction over the foreign defendants, Uni-
versal Music International Ltd., Universal Music A/S and MCA
Music Scandinavia AB (hereinafter “foreign defendants”),
MCA also brought a defamation claim against Mattel for state-
ments Mattel made about MCA while this lawsuit was pending.
The district court concluded it had jurisdiction over the foreign
defendants and under the Lanham Act, and granted MCA’s mo-
tion for summary judgment on Mattel’s federal and state-law
claims for trademark infringement and dilution. The district
court also granted Mattel’s motion for summary judgment on
MCA’s defamation claim.
Mattel appeals the district court’s ruling that Barbie Girl is
a parody of Barbie and a nominative fair use; that MCA’s use
of the term Barbie is not likely to confuse consumers as to Mat-
tel’s affiliation with Barbie Girl or dilute the Barbie mark; and
3a
that Mattel cannot assert an unfair competition claim under the
Paris Convention for the Protection of Industrial Property.
MCA cross-appeals the grant of summary judgment on its
defamation claim as well as the district court’s jurisdictional
holdings.
II
A. All three foreign defendants are affiliated members of
Universal Music Group and have an active relationship with
each other and with domestic members of the Group. Defen-
dants entered into cross-licensing agreements and developed a
coordinated plan to distribute the Barbie Girl song in the United
States (including California), and sent promotional copies of the
Barbie Girl single and the Aquarium album to the United States
(including California). This conduct was expressly aimed at,
and allegedly caused harm in, California, Mattel’s principal
place of business. See Panavision Int'l, L.P. v. Toeppen, 141
F.3d 1316, 1321 (9th Cir.1998). Mattel’s trademark claims
would not have arisen “but for” the conduct foreign defendants
purposefully directed toward California, and jurisdiction over
the foreign defendants, who are represented by the same coun-
. Sel and closely associated with the domestic defendants, is rea-
sonable. See id. at 1321-22. The district court did not err in
asserting specific personal jurisdiction over the foreign defen-
dants.
B. Sales of the Aquarium album worldwide had a sufficient
effect on American foreign commerce, and Mattel suffered
monetary injury in the United States from those sales. See
Ocean Garden, Inc. v. Marktrade Co., 953 F.2d 500, 503 (9th
Cir.1991). Moreover, Mattel’s claim is more closely tied to in-
terests of American foreign commerce than it is to the commer-
cial interests of other nations: Mattel’s principal place of busi-
ness is in California, the foreign defendants are closely related
to the domestic defendants, and Mattel *900 sought relief only
for defendants’ sales in the United States. See Star-Kist Foods,
Inc. v. P.J. Rhodes & Co., 769 F.2d 1393, 1395-96 (9th
4a
Cir.1985). The district court properly exercised extraterritorial
jurisdiction under the Lanham Act.
iil
A. A trademark is a word, phrase or symbol that is used to
identify a manufacturer or sponsor of a good or the provider of
a service. See New Kids on the Block v. News Am. Publ’g, Inc.,
971 F.2d 302, 305 (9th Cir.1992). It’s the owner’s way of pre-
venting others from duping consumers into buying a product
they mistakenly believe is sponsored by the trademark owner.
A trademark “inform[s] people that trademarked products come
from the same source.” Jd. at 305 n. 2. Limited to this core
purpose—avoiding confusion in the marketplace—a trademark
owner’s property rights play well with the First Amendment.
“Whatever first amendment rights you may have in calling the
brew you make in your bathtub ‘Pepsi’ are easily outweighed by
the buyer’s interest in not being fooled into buying it.”
Trademarks Unplugged, 68 N.Y.U. L. Rev. 960, 973 (1993).
The problem arises when trademarks transcend their identi-
fying purpose. Some trademarks enter our public discourse and
become an integral part of our vocabulary. How else do you
say that something’s “the Rolls Royce of its class”? What else
is a quick fix, but a Band-Aid? Does the average consumer
know to ask for aspirin as “acetyl salicylic acid”? See Bayer
Co. v. United Drug Co., 272 F. 505, 510 (S.D.N.Y.1921).
Trademarks often fill in gaps in our- vocabulary and add a con-
temporary flavor to our expressions. Once imbued with such
expressive value, the trademark becomes a word in our lan-
guage and assumes a role outside the bounds of trademark law.
Our likelihood-of-confusion test, see AMF Inc. v. Sleek-
craft Boats, 599 F.2d 341, 348-49 (9th Cir.1979), generally
strikes a comfortable balance between the trademark owner’s
property rights and the public’s expressive interests. 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
Sa
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 ex-
pression.
The First Amendment may offer little protection for a com-
petitor who labels its commercial good with a confusingly simi-
lar mark, but “[t}]rademark rights do not entitle the owner to
quash an unauthorized use of the mark by another who is com-
municating ideas or expressing points of view.” L.L. Bean, Inc.
v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir. 1 987). Were
we to ignore the expressive value that some marks assume,
trademark rights would grow to encroach upon the zone pro-
tected by the First Amendment. See Yankee Publ’g, Inc. v.
News Am. Publ’g, Inc., 809 F. Supp. 267, 276 (S.D.N.Y.1992)
(“[W]hen unauthorized use of another’s mark is part of a com-
municative message and not a source identifier, the First
Amendment is implicated in opposition to the trademark
right.”). Simply put, the trademark owner does not have the
right to control public discourse whenever the public imbues his
mark with a meaning beyond its source—identifying function.
See Anti-Monopoly, Inc. v. Gen. Mills Fun Group, 611 F.2d
296, 301 (9th Cir.1979) (“It is the source-denoting function
*901 which trademark laws protect, and nothing more.”).
B. There is no doubt that MCA uses Mattel’s mark: Barbie
is one half of Barbie Girl. But Barbie Girl is the title of a song
about Barbie and Ken, a reference that—at least today—can
only be to Mattel’s famous couple. We expect a title to de-
scribe the underlying work, not to identify the producer, and
Barbie Girl does just that.
The Barbie Girl title presages a song about Barbie, or at
least a girl like Barbie. The title conveys a message to consum-
ers about what they can expect to discover in the song itself;
it’s a quick glimpse of Aqua’s take on their own song. The lyr-
ics confirm this: The female singer, who calls herself Barbie, is
“a Barbie girl, in [her] Barbie world.” She tells her male coun-
6a
terpart (named Ken), “Life in plastic, it’s fantastic. You can
brush my hair, undress me everywhere/Imagination, life is your
creation.” And off they go to “party.” The song pokes fun at
Barbie and the values that Aqua contends she represents. See
Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Group, 886
F.2d 490, 495-96 (2d Cir.1989). The female singer explains,
“I’m a-blond bimbo girl, in a fantasy world/Dress me up, make
it tight, I’m your dolly.”
The song does not rely on the Barbie mark to poke fun at
another subject but targets Barbie herself. See Campbell v.
Acuff-Rose Music, Inc., 510 U.S. 569, 580, 114 S. Ct. 1164, 127
L. Ed. 2d 500 (1994); see also Dr. Seuss Ents., L.P. v. Penguin
Books USA, Inc., 109 F.3d 1394, 1400 (9th Cir.1997). This
case is therefore distinguishable from Dr. Seuss, where we held
that the book The Cat NOT in the Hat! borrowed Dr. Seuss’s
trademarks and lyrics to get attention rather than to mock The
Cat in the Hat! The defendant’s use of the Dr. Seuss trademarks
and copyrighted works had “no critical bearing on the substance
or style of’ The Cat in the Hat!, and therefore could not claim
First Amendment protection. /d. at 1401. Dr. Seuss recognized
that, where an artistic work targets the original and does not
merely borrow another’s property to get attention, First
Amendment interests weigh more heavily in the balance. See
id. at 1400-02; see also Harley-Davidson, Inc. v. Grottanelli,
164 F.3d 806, 812-13 (2d Cir. 1999) (a parodist whose expres-
sive work aims its parodic commentary at a trademark is given
considerable leeway, but a claimed parodic use that makes no
comment on the mark is not a permitted trademark parody use).
The Second Circuit has held that “in general the [Lanham]
Act should be construed to apply to artistic works only where
the public interest in avoiding consumer confusion outweighs
the public interest in free expression.” Rogers v. Grimaldi, 875
F.2d 994, 999 (2d Cir.1989); see also Cliffs Notes, 886 F.2d at
494 (quoting Rogers, 875 F.2d at 999). Rogers considered a
challenge by the actress Ginger Rogers to the film Ginger and
Fred. The movie told the story of two Italian cabaret performers
7a
who made a living by imitating Ginger Rogers and Fred
Astaire. Rogers argued that the film’s title created the false im-
pression that she was associated with it.
At first glance, Rogers certainly had a point. Ginger was
her name, and Fred was her dancing partner. If a pair of danc-
ing shoes had been labeled Ginger and Fred, a dancer might
have suspected that Rogers was associated with the shoes (or at
least one of them), just as Michael Jordan has endorsed Nike
sneakers that claim to make you fly through the air. But Ginger
and Fred was not a brand of shoe; it was the title of a movie
and, for *902 the reasons explained by the Second Circuit, de-
served to be treated differently.
A title is designed to catch the eye and to promote the value
of the underlying work. Consumers expect a title to communi-
cate a message about the book or movie, but they do not expect
it to identify the publisher or producer. See Application of
Cooper, 45 C.C.P.A. 923, 254 F.2d 611, 615- 16
(C.C.P.A.1958) (A “title ... identifies a specific literary work, ...
and is not associated in the public mind with the ... manufac-
turer.” (internal quotation marks omitted)). 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 car-
maker had entered into a joint venture. A title tells us some-
thing about the underlying work but seldom speaks to its origin:
Though consumers frequently look to the title of a
work to determine what it is about, they do not regard
titles of artistic works in the same way as the names of
ordinary commercial products. Since consumers ex-
pect an ordinary product to be what the name says it
is, we apply the Lanham Act with some rigor to pro-
hibit names that misdescribe such goods. But most
consumers are well aware that they cannot judge a
book solely by its title any more than by its cover.
8a
Rogers, 875 F.2d at 1000 (citations omitted).
Rogers concluded that literary titles do not violate the
Lanham Act “unless the title has no artistic relevance to the
underlying work whatsoever, or, if it has some artistic rele-
vance, unless the title explicitly misleads as to the source or the
content of the work.” Id. at 999 (footnote omitted). We agree
with the Second Circuit’s analysis and adopt the Rogers stan-
dard as our own.
Applying Rogers to our case, we conclude that MCA’s use
of Barbie is not an infringement of Mattel’s trademark. Under
the first prong of Rogers, the use of Barbie in the song title
clearly is relevant to the underlying work, namely, the song it-
self. As noted, the song is about Barbie and the values Aqua
claims she represents. The song title does noi explicitly mis-
lead as to the source of the work; it does not, explicitly or oth-
erwise, suggest that it was produced by Mattel. The only indi-
cation that Mattel might be associated with the song is the use
of Barbie in the title; if this were enough to satisfy this prong of
the Rogers test, it would render Rogers.a nullity. We therefore
agree with the district court that MCA was entitled to summary
judgment on this ground. We need not consider whether the
district court was correct in holding that MCA was also entitled
to summary judgment because its use of Barbie was a nomina-
tive fair use.’
IV
Mattel separately argues that, under the Federal Trademark
Dilution Act (“FTDA”), MCA’s song dilutes the Barbie mark in
two ways: It diminishes the mark’s capacity to identify and dis-
tinguish Mattel products, and tarnishes the mark because the
\ The likelinood-of-confusion test also governs Mattel’s state law
claims of unfair competition. Cleary v. News Corporation, 30 F.3d 1255,
1262-63 (9th Cir.1994) (citing Academy of Motion Picture Arts & Sciences
vy. Creative House Promotions, Inc., 944 F.2d 1446, 1457 (9th Cir.1991)).
Therefore, the district court properly granted summary judgment on these
claims as well.
9a
song is inappropriate for *903 young girls. See 15 U.S.C.
§ 1125(c); see also Panavision, 141 F.3d at 1324.
“Dilution” refers to the “whittling away of the value of a
trademark” when it’s used to identify different products. 4 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair Com-
petition § 24.67, at 24-120; § 24.70, at 24-122 (2001). For ex-
ample, Tylenol snowboards, Netscape sex shops and Harry Pot-
ter dry cleaners would all weaken the “commercial magnetism”
of these marks and diminish their ability to evoke their original
associations. Ralph S. Brown, Jr., Advertising and the Public
Interest: Legal Protection of Trade Symbols, 57 Yale L.J.
1165, 1187 (1948), reprinted in 108 Yale L.J. 1619 (1999).
These uses dilute the selling power of these trademarks by blur-
ring their “uniqueness and singularity,” Frank I. Schechter, The
Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813,
831 (1927), and/or by tarnishing them with negative associa-
tions.
By contrast to trademark infringement, the injury from di-
lution usually occurs when consumers aren’t confused about the
source of a product: Even if no one suspects that the maker of
analgesics has entered into the snowboard business, the Tylenol
mark will now bring to mind two products, not one. Whereas
trademark law targets “interference with the source signaling
function” of trademarks, dilution protects owners “from an ap-
propriation of or free riding on” the substantial investment that
they have made in their marks. /.P. Lund Trading ApS v. Koh-
ler Co., 163 F.3d 27, 50 (1st Cir.1998).
Originally a creature of state law, dilution received nation-
wide recognition in 1996 when Congress amended the Lanham
Act by enacting the FTDA.” The statute protects “[t]he owner
~ Even at the state level, dilution is of relatively recent vintage. The
first anti-dilution statute was enacted in Massachusetts in 1947, see Mass.
Gen. Laws Ann. Ch. 110B, § 12 (West 1992). By the time the FTDA was
enacted in 1996, only twenty-six states had anti-dilution statutes on the
10a
of a famous mark ... against another person’s commercial use in
commerce of a mark or trade name, if such use begins after the
mark has become famous and causes dilution of the distinctive
quality of the mark.” 15 U.S.C. § 1125(c). Dilutive uses are
prohibited unless they fall within one of the three statutory ex-
emptions discussed below. See pp. 10494-99 infra. Fora lucid
and scholarly discussion of the statutory terms, as well as the
purposes of the federal dilution statute, we refer the reader to
Judge Leval’s opinion in Nabisco, Inc. v. PF Brands, Inc., 191
F.3d 208, 214-17 (2d Cir.1999). Barbie easily qualifies under
the FTDA as a famous and distinctive mark, and reached this
status long before MCA began to market the Barbie Girl song.
The commercial success of Barbie Girl establishes beyond dis-
pute that the Barbie mark satisfies each of these elements.
We are also satisfied that the song amounts to a “commer-
cial use in commerce.” Although this statutory language is un-
gainly, its meaning seems clear: It refers to a use of a famous
and distinctive mark to sell goods other than those produced or
authorized by the mark’s owner. Panavision, 141 F.3d at 1324-
25. That is precisely what MCA did with the Barbie mark: It
created and sold to consumers in the marketplace commercial
products (the Barbie Girl single and the Aquarium album) that
bear the Barbie mark.
MCA’s use of the mark is dilutive. MCA does not dispute
that, while a reference *904 to Barbie would previously have
brought to mind only Mattel’s doll, after the song’s popular suc-
cess, some consumers hearing Barbie’s name will think of both
the doll and the song, or perhaps of the song only.” This is a
books. See 4 McCarthy § 24:80, at 24-136.2 n. 2; H.R. Rep. No. 104-374,
at 3-4 (1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1030-31.
» The Supreme Court will soon decide whether the owner of a famous
mark must show economic injury to show dilution or whether potential in-
jury is sufficient. Moseley v. V Secret Catalogue, Inc., --- U.S. ----, 122 S.
Ct. 1536, 152 L. Ed. 2d 463 (2002). Because MCA did not challenge Mat-
tel’s showing as insufficient on this ground, we do not address it.
lla
a classic blurring injury and is in no way diminished by the fact
that the song itself refers back to Barbie the doll. To be dilut-
ive, use of the mark need not bring to mind the junior user
alone. The distinctiveness of the mark is diminished if the
mark no longer brings to mind the senior user alone.”
We consider next the applicability of the FTDA’s three
statutory exemptions. These are uses that, though potentially
dilutive, are nevertheless permitted: comparative advertising;
news reporting and commentary; and noncommercial use. 15
U.S.C. § 1125(c)(4)(B). The first two exemptions clearly do
not apply; only the exemption for noncommercial use need de-
tain us.
A “noncommercial use” exemption, on its face, presents a
bit of a conundrum because it seems at odds with the earlier re-
quirement that the junior use be a “commercial use in com-
merce.” If a use has to be commercial in order to be dilutive,
how then can it also be noncommercial so as to Satisfy the ex-
ception of section 1125(c)(4)(B)? If the term “commercial use”
had the same meaning in both provisions, this would eliminate
one of the three statutory exemptions defined by this subsec-
tion, because any use found to be dilutive would, of necessity,
not be noncommercial.
Such a reading of the statute would also create a constitu-
tional problem, because it would leave the FTDA with no First
Amendment protection for dilutive speech other than compara-
tive advertising and news reporting. This would be a serious
problem because the primary (usually exclusive) remedy for
dilution is an injunction.” As noted above, tension with the
First Amendment also exists in the trademark context, espe-
cially where the mark has assumed an expressive function be-
4 Because we find blurring, we need not consider whether the song also
tarnished the Barbie mark.
» The FT DA provides for both injunctive relief and damages, but the
latter is only available if plaintiff can prove a willful intent to dilute. 15
U.S.C. § 1125(c)(2).
12a
yond mere identification of a product or service. See pp. 900-
901 supra; New Kids on the Block, 971 F.2d at 306-08. These
concerns apply with greater force in the dilution context be-
cause dilution lacks two very significant limitations that reduce
the tension between trademark law and the First Amendment.
First, depending on the strength and distinctiveness of the
mark, trademark law grants relief only against uses that are
likely to confuse. See 5 McCarthy § 30:3, at 30-8 to 30-11; Re-
statement § 35 cmt. c at 370. A trademark injunction is usually
limited to uses within one industry or several related industries.
Dilution law is the antithesis of trademark law in this respect,
because it seeks to protect the mark from association in the pub-
lic’s mind with wholly unrelated goods and services. The more
remote the good or service associated with the junior use, the
more likely it is to cause dilution rather than trademark in-
fringement. A dilution injunction, by contrast to a trademark
#905 injunction, will generally sweep across broad vistas of the
economy.
Second, a trademark injunction, even a very broad one, is
premised on the need to prevent consumer confusion. This con-
sumer protection rationale—averting what is essentially a fraud
on the consuming public—is wholly consistent with the theory
of the First Amendment, which does not protect commercial
fraud. Cent. Hudson Gas & Elec. v. Pub. Serv. Comm'n, 447
U.S. 557, 566, 100 S. Ct. 2343, 65 L. Ed. 2d 341 (1980); see
Thompson v. W. States Med. Ctr., --- U.S. ----, 122 S. Ct. 1497,
152 L. Ed. 2d 563 (2002) (applying Central Hudson). More-
over, avoiding harm to consumers is an important interest that
is independent of the senior user’s interest in protecting its busi-
ness.
Dilution, by contrast, does not require a showing of con-
sumer confusion, 15 U.S.C. § 1127, and dilution injunctions
therefore lack the built-in First Amendment compass of trade-
mark injunctions. In addition, dilution law protects only the
distinctiveness of the mark, which is inherently less weighty
13a
than the dual interest of protecting trademark owners and avoid-
ing harm to consumers that is at the heart of every trademark
claim.
Fortunately, the legislative history of the FTDA suggests an
interpretation of the “noncommercial use” exemption that both
solves our interpretive dilemma and diminishes some First
Amendment concerns: “Noncommercial use” refers to a use
that consists entirely of noncommercial, or fully constitutionally
protected, speech. See 2 Jerome Gilson et al., Trademark Pro-
tection and Practice § 5.12[1}[{c][{vi], at 5-240 (this exemption
“is intended to prevent the courts from enjoining speech that
has been recognized to be [fully] constitutionally protected,”
“such as parodies”). Where, as here, a statute’s plain meaning
“produces an absurd, and perhaps unconstitutional, result], it is]
entirely appropriate to consult all public materials, including the
background of [the statute] and the legislative history of its
adoption.” Green v. Bock Laundry Mach. Co., 490 U.S. 504,
527, 109 S. Ct. 1981, 104 L. Ed. 2d 557 (1989) (Scalia, J., con-
curring).
The legislative history bearing on this issue is particularly
persuasive. First, the FTDA’s sponsors in both the House and
the Senate were aware of the potential collision with the First
Amendment if the statute authorized injunctions against pro-
tected speech. Upon introducing the counterpart bills, sponsors
in each house explained that the proposed law “will not prohibit
or threaten noncommercial expression, such as parody, satire,
editorial and other forms of expression that are not a part of a
commercial transaction.” 141 Cong. Rec. $1930610, $19310
(daily ed. Dec. 29, 1995) (statement of Sen. Hatch); 141 Cong.
Rec. H14317-01, H14318 (daily ed. Dec. 12, 1995) (statement
of Rep. Moorhead). The House Judiciary Committee agreed in
its report on the FTDA. H.R. Rep. No. 104-374, at 4 (1995),
reprinted in 1995 U.S.C.C.A.N. 1029, 1031 (“The bill will not
14a
prohibit or threaten, noncommercial’ expression, as that term
has been defined by the courts.”).”
*906 The FTDA’s section-by-section analysis presented in
the House and Senate suggests that the bill’s sponsors relied on
the “noncommercial use” exemption to allay First Amendment
concerns. H.R. Rep. No. 104-374, at 8, reprinted in 1995
U.S.C.C.A.N. 1029, 1035 (the exemption “expressly incorpo-
rates the concept of ‘commercial’ speech from the ‘commercial
speech’ doctrine, and proscribes dilution actions that seek to
enjoin use of famous marks in ‘non-commercial’ uses (such as
consumer product reviews)”); 141 Cong. Rec. $19306-10,
$19311 (daily ed. Dec. 29, 1995) (the exemption “‘is consistent
with existing case law[, which ] recognize[s] that the use of
marks in certain forms of artistic and expressive speech is pro-
tected by the First Amendment”). At the request of one of the
bill’s sponsors, the section-by- section analysis was printed in
the Congressional Record. 141 Cong. Rec. $19306-10,$19311
(daily ed. Dec. 29, 1995). Thus, we know that this interpreta-
tion of the exemption was before the Senate when the FTDA
was passed, and that no senator rose to dispute it.
To determine whether Barbie Girl falls within this exemp-
tion, we look to our definition of commercial speech under our
First Amendment caselaw. See H.R. Rep. No. 104-374, at 8,
reprinted in 1995 U.S.C.C.A.N. 1029, 1035 (the exemption
“expressly incorporates the concept of ‘commercial’ speech
from the ‘commercial speech’ doctrine”); 141 Cong. Rec.
© Our interpretation of the noncommercial use exemption does not
eliminate all tension between the FTDA and the First Amendment because
the exemption does not apply to commercial speech, which enjoys “qualified
but nonetheiess substantial protection.” Bolger, 463 U.S. 60, 68, 103 S. Ct.
2875 (applying Central Hudson Gas & Electric Corp. v. Pub. Serv.
Comm’n, 447 U.S. 557, 100 S. Ct. 2343, 65 L. Ed. 2d 341 (1980)). See also
Thompson, --- U.S. at ----, 122 S. Ct. at 1503-04 (same). It is entirely possi-
ble that a dilution injunction against purely commercial speech would run
afoul of the First Amendment. Because that question is not presented here,
we do not address it.
15a
$19306-10, $19311 (daily ed. Dec. 29, 1995) (the exemption
“is consistent with existing [First Amendment ] case law”).
“Although the boundary between commercial and noncommer-
cial speech has yet to be clearly delineated, the ‘core notion of
commercial speech’ is that it ‘does no more than propose a
commercial transaction.’” Hoffman v. Capital Cities/ABC, Inc.,
255 F.3d 1180, 1184 (9th Cir.2001) (quoting Bolger v. Youngs
Drug Prod’s Corp., 463 U.S. 60, 66, 103 S. Ct. 2875, 77 L. Ed.
2d 469 (1983)). If speech is not “purely commercial”—that is,
if it does more than propose a commercial transaction— then it
is entitled to full First Amendment protection. Jd. at 1185-86
(internal quotation marks omitted).
In Hoffman, a magazine published an article featuring digi-
tally altered images from famous films. Computer artists modi-
fied shots of Dustin Hoffman, Cary Grant, Marilyn Monroe and
others to put the actors in famous designers’ spring fashions; a
still of Hoffman from the movie “Tootsie” was altered so that
he appeared to be wearing a Richard Tyler evening gown and
Ralph Lauren heels. Hoffman, who had not given permission,
sued under the Lanham Act and for violation of his right to pub-
licity. Id. at 1183.
The article featuring the altered image clearly served a
commercial purpose: “to draw attention to the for-profit maga-
zine in which it appear[ed]” and to sell more copies. /d. at
1186. Nevertheless, we held that the article was fully protected
under the First Amendment because it included protected ex-
pression: “humor” and “visual and verbal editorial comment on
classic films and famous actors.” Id. at 1185 (internal quotation
marks omitted). Because its commercial purpose was “inextri-
cably entwined with [these] expressive elements,” the article
and accompanying photographs enjoyed full First Amendment
protection. Id.
Hoffman controls: Barbie Girl is not purely commercial
speech, and is therefore *907 fully protected. To be sure, MCA
used Barbie’s name to sell copies of the song. However, as
16a
we’ ve already observed, see pp. 10489-90 supra, 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 non-
commercial use exemption to the FTDA. For precisely the same
reasons, use of the mark in the song’s title is also exempted.
Vv
Mattel next argues that the district court erred in granting
summary judgment for the foreign defendants on its unfair
competition claim under the Paris Convention for the Protection
of Industrial Property, Mar. 20, 1883, as revised at Stockholm,
July 14, 1967, art. 10bis, 21 U.S.T. 1583, 1648, 828 U.N.T.S.
305, 337 (hereinafter Paris Convention). Mattel grounds its
claim on Article 10bis, which provides that “[t]he countries of
the Union are bound to assure to nationals of such countries ef-
fective protection against unfair competition.” Paris
Convention, art. 10bis, 21 U.S.T. at 1648, 828 U.N.T.S. at 337.
Mattel asserts that Article 10bis creates a federal cause of ac-
tion for unfair competition in international disputes, and that
section 44 of the Lanham Act, 15 U.S.C. § 1126, makes the
substantive provisions of the Paris Convention available to
United States nationals.
In Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788, 790-
92 (9th Cir.1981), the Japanese producer and distributor of
“Godzilla” asserted a claim against the manufacturer of “Bag-
zilla” garbage bags based on a “federal law of unfair competi-
tion.” Subsection 44(b) gives to “persons whose country of ori-
gin is a party to any [trademark] convention or treaty ... to
which the United States is also a party” the benefits of section
44 to the extent necessary to give effect to the provisions of
those treaties. 15 U.S.C. § 1126(b). These benefits include “ef-
fective protection against unfair competition.” 15 U.S.C.
§ 1126(h). Thus, a foreign national is granted protection
against unfair competition consistent with the protections of
applicable trademark treaties.
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17a
However, we made clear in Toho that subsection 44(h)
does not create a general federal law of unfair competition. See
645 F.2d at 792; see also Int’l Order of Job’s Daughters v. Lin-
deburg & Co., 633 F.2d 912, 915-16, 916 n. 5 (9th Cir.1980).
Rather, “[t]he grant in subsection (h) of effective protection
against unfair competition is tailored to the provisions of the
unfair competition treaties by subsection (b), which extends the
benefits of section 44 only to the extent necessary to give effect
to the treaties.” Toho, 645 F.2d at 792. Subsection 44(h) cre-
ates a federal right that is coextensive with the substantive pro-
visions of the treaty involved. See id. Because the treaty in-
volved in Toho required that Japanese corporations be treated
as favorably as domestic companies with respect to unfair com-
petition claims, we held that subsection 44(h) provided Toho
with a federal forum in which to bring its state unfair competi-
tion claims. See id.
Subsection 44(i) goes no farther. It does not create a fed-
eral cause of action where subsection 44(h) would not, because
it provides only that United States citizens “shall have the same
benefits as are granted by this section to persons described in
subsection (b) of this section.” 15 U.S.C. § 1126(i). And, “so
far as concerns ‘unfair competition,’ those ‘benefits’ are limited
to such as may be found in some ‘convention or treaty relating
to ... the repression of unfair competition.’ The purpose of
[subsection *908 44(i)], quite Clearly, is no more than to extend
to citizens and residents those ‘benefits’ that any “convention or
treaty’ gives to aliens, including the same remedies for ‘protec-
tion against unfair competition’ that subsection (h) gives to
aliens.” Am. Auto. Ass’n v. Spiegel, 205 F.2d 771, 775 (2d
Cir.1953). The only protection against unfair competition that
subsection 44(h) grants to foreign nationals, and that subsection
44(i) therefore grants to American citizens, is that “necessary to
give effect to any provisions of [trademark treaties].” 15 U.S.C.
§ 1126(b). Therefore, Mattel’s federal unfair competition claim
depends on the extent to which the substantive provisions of the
Paris Convention create one.
18a
However, we’ve also held that “the Paris Convention was
not intended to define the substantive law in the area of ‘unfair
competition’ of the signatory countries.” Kemart Corp. Vv.
Printing Arts Research Labs., Inc., 269 F.2d 375, 389 (9th
Cir.1959). The Paris Convention does not provide substantive
rights but ensures “national treatment.” 4 McCarthy § 29:25.
That is, it requires that “foreign nationals ... be given the same
treatment in each of the member countries as that country
makes available to its own citizens.” Vanity Fair Mills v. T.
Eaton, 234 F.2d 633, 640 (2d Cir.1956).
Section 44 and the Paris Convention therefore interact as
follows: A foreign national is entitled to the same “effective
protection against unfair competition” to which an American is
entitled, Paris Convention, art. 10bis, and in turn, the American
gets the same right that the foreign national gets. We treat Mat-
tel like a foreign national, who is treated like an American un-
der the Paris Convention. Accordingly, Mattel is entitled to as-
sert a cause of action under the Lanham Act for trademark in-
fringement, 15 U.S.C. § 1114, or for false designation of origin,
15 U.S.C. § 1125, or it may assert state law claims for unfair
competition, as it did. See n.1 supra. But Mattel has no claim
to a nonexistent federal cause of action for unfair competition.
As said, the Paris Convention provides for national treatment,
and does not define the substantive law of unfair competition.
We therefore reject Mattel’s argument that a treaty provision
providing for “national treatment” gives it more protections
against foreign nationals than it has against U.S. nationals.
VI
After Mattel filed suit, Mattel and MCA employees traded
barbs in the press. When an MCA spokeswoman noted that
each album included a disclaimer saying that Barbie Girl was a
“social commentary [that was] not created or approved by the
makers of the doll,” a Mattel representative responded by say-
ing, “That’s unacceptable .... It’s akin to a bank robber handing
a note of apology to a teller during a heist. [It nJeither dimin-
19a
ishes the severity of the crime, nor does it make it legal.” He
later characterized the song as a” theft” of “another company’s
property.”
MCA filed a counterclaim for defamation based on the
Mattel representative’s use of the words “bank robber,” “heist,”
“crime” and “theft.” But all of these are variants of the invec-
tive most often hurled at accused infringers, namely “piracy.”
No one hearing this accusation understands intellectual property
owners to be saying that infringers are nautical cutthroats with
eyepatches and peg legs who board galleons to plunder cargo.
In context, all these terms are non-actionable “rhetorical hyper-
bole,” Gilbrook v. City of Westminster, 177 F.3d 839, 863 _
Cir.1999). The parties are advised to chill.
AFFIRMED.
*909 APPENDIX
“Barbie Girl” by Aqua
-Hiya Barbie!
-Hi Ken!
You wanna go for a ride?
-Sure, Ken!
-Jump in!
-Ha ha ha ha!
(CHORUS:)
I’m a Barbie girl, in my Barbie world
Life in plastic, it’s fantastic
You can brush my hair, undress me everywhere
Imagination, life is your creation
Come on Barbie, let’s go party!
(CHORUS)
I’m a blonde bimbo girl, in a fantasy world
Dress me up, make it tight, I’m your dolly
20a
You’re my doll, rock and roll, feel the glamour in pink
Kiss me here, touch me there, hanky-panky
You can touch, you can play
If you say “I’m always yours,” ooh ooh
(CHORUS)
(BRIDGE:)
Come on, Barbie, let’s go party, ah ah ah yeah
Come on, Barbie, let’s go party, ooh ooh, ooh ooh
Come on, Barbie, let’s go party, ah ah ah yeah
Come on, Barbie, let’s go party, ooh ooh, ooh ooh
Make me walk, make me talk, do whatever you please
I can act like a star, I can beg on my knees
Come jump in, be my friend, let us do it again
Hit the town, fool around, let’s go party
You can touch, you can play
You can say “I’m always yours”
You can touch, you can play
You can say “I’m always yours”
(BRIDGE)
(CHORUS x2)
(BRIDGE)
-Oh, I’m having so much fun!
-Well, Barbie, we’re just getting started!
-Oh, I love you Ken!
2la
APPENDIX B
United States District Court
Central District of California
Mattel Inc.
v.
MCA Records Inc.
No. CV 97-6791-WMB
[46 U.S.P.Q.2d 1407]
Decided February 18, 1998
Byrne, J.
I. BACKGROUND
In March, 1997, a Danish musical group known as “Aqua”
released in Europe an eleven-song album, Aquarium. This al-
bum included a song entitled Barbie Girl, in which a woman
and man assume the identities of two popular Mattel dolls
known as Barbie and Ken. Defendants claim this song parodies
the popular toys, with the singers referring to Barbie as a “blond
bimbo girl,” who loves to party and whose “life is plastic.” Bar-
bie Girl quickly became a hit in Europe and later was released
in the United States, where the Aquarium album sold over 1.4
million compact discs (CDs) and cassettes. (Defs.’ Opp’n at 1).
On September 11, 1997, Mattel (“plaintiff”) filed suit in
this Court, bringing the following eleven causes of action
against MCA and other defendants:/ (1) trademark and trade
Y Mattel did not, however, sue the musical group Aqua. In its reply,
Mattel claims that it is not attempting to “censor” the song, as it is only suing
the companies that actually manufactured and distributed the CD. (Pl.’s Re-
ply at 1). It also claims that any alleged harm to a nonparty is “irrelevant”
(Id. at 34).
Plaintiff's proposed preliminary injunction, however, calls for the de-
struction of all CD’s with the “Barbie” mark on it. (Pl.’s Proposed Order at
22a
dress dilution, (2) trademark infringement, (3) false designation
of origin and false description, (4) statutory and common law
unfair competition, (5) unfair competition under the Paris Con-
vention, (6) wrongful use of a registered mark; (7) common law
misappropriation; (8) common law passing-off and disparage-
ment; and (9) common law unjust enrichment, (10) contributory
trademark and trade dress dilution, and (11) contributory trade-
mark and trade dress infringement. Defendants, in turn, filed a
counterclaim for defamation.
Mattel has now brought a motion for a preliminary injunc-
tion based on its claims for trade mark infringement, unfair
competition, and trademark dilution. Mattel’s proposed pre-
liminary injunction asks this Court to enjoin defendants from
manufacturing, producing, or distributing the Barbie Girl song.
It also requests that the Court require defendants to “dispos[e]
of or destroy[ ] any product or its packaging, which uses Mat-
tel’s BARBIE trade name.” (P1.’s Proposed Order at 3). In re-
sponse, MCA has filed an opposition and motions to strike two
of the three declarations filed in support of plaintiff's motion
(those of Jean McKenzie and Weston Anson). In reply, Mattel
filed its own evidentiary objections to many of defendants’ dec-
larations.
Il. THE PARTIES’ EVIDENTIARY OBJECTIONS
Defendants filed motions to strike the declarations of Jean
McKenzie, executive vice- president of Mattel, and of Weston
Anson, *1409 an intellectual property consultant. In response,
plaintiff objected to defendants’ declarations by Valerie Folkes,
Richard Lanham, and Astrid Hansen, in their entirety, and to
3). Destroying all of Aqua’s albums will undoubted have a disastrous effect
on the new band itself, even if it is not named specifically as a defendant.
(See Rasted Decl. Para. 18 (noting that an injunction stopping the production
of Aqua’s first album released in the United States could harm the prospects
for its next album)). In addition, this case raises important First Amendment
issues, and an injunction could have a direct effect on Aqua’s free speech
interests in parodying or commenting on Barbie.
ane aaa ee eae
23a
portions of the declarations of Bruce Wheeler, Soren Rasted,
and Jeffrey Goldman.
“The strict evidentiary rules governing atrial on the merits”
do not apply to hearings for preliminary injunctions. Orantes-
Hernandez v. Smith, 541 F. Supp. 351, 356 n.4 (C.D. Cal.
1982). In Orantes-Hernandez, the Court recognized that, al-
though “many of plaintiffs’ exhibits contain hearsay and other
impermissible matter which could not be admitted to trial,”
plaintiffs often face “the need to act promptly when bri nging a
preliminary injunction motion.” Id. Indeed, courts “may give
even inadmissible evidence some weight when to do so serves
the purpose of preventing irreparable harm before trial.” Flynt
Distrib. Co., Inc. v. Harvey, 734 F.2d 1389, 1394 (9th Cir.
1984). This Court therefore denies each side’s motions to strike.
Il. PRELIMINARY INJUNCTION STANDARD OF
REVIEW
The Ninth Circuit has identified two alternative tests for
obtaining a preliminary injunction: “the moving party must
show either (1) a combination of probable success on the merits
and the possibility of irreparable injury, or (2) that serious ques-
tions are raised and the balance of hardships tips sharply in its
favor.” Big Country Foods, Inc. v. Board of Educ., 868 F.2d
1085, 1088 (9th Cir. 1989). “These formulations are not differ-
ent tests but represent two points on a sliding scale in which the
degree of irreparable harm increases as the probability of suc-
cess on the merits decreases. Under either formulation, the
moving party must demonstrate significant threat of irreparable
injury, irrespective of the magnitude of the injury.” Id.; see also
Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109
F.3d 1394, 1397 n.1 [42 U.S.P.Q.2d 1184 ] (9th Cir.), cert. dis-
missed, 118 S. Ct. 27 (1997).
IV. DISCUSSION
A. The Song and Video as Parody
The crux of plaintiff's argument is that defendants have
misappropriated the Barbie trademark by using the word “Bar-
24a
bie” in the song Barbie Girl and its video. Plaintiff claims that
this use will lead to confusion among consumers and harm to
the Barbie product line itself. Defendants respond, however,
that Barbie is an icon in American culture and that their alleged
parody of her is protected by the First Amendment. Indeed, par-
ody has played an important role in social discourse. See Dr.
Seuss, 109 F.3d at 1400; L.L. Bean, Inc. v. Drake Publishers,
Inc., 811 F.2d 26, 28 [ 1 U.S.P.Q.2d 1753 ] (1st Cir.) (“Parody
is a humorous form of social commentary and literary criticism
that dates back as far as Greek antiquity.”), cert. denied, 483
U.S. 1013 (1987); Fisher v. Dees, 794 F.2d 432, 437-38 [ 230
U.S.P.Q. 421 ] (9th Cir. 1986) (“ ‘Destructive’ parodies play an
important role in social and literary criticisms and thus merit
protection even though they may discourage or discredit an
original author.”).
Sea oor “7 ame prem
Mattel complains of Aqua’s portrayal of its product, which
generated $1.6 billion in sales in 1996, because Aqua’s song
associates its doll with “antisocial themes such as promiscuity,
lewdness, and the stereotyping and ridiculing of young
women.” (PI.’s Mot. at 2). Plaintiff asserts that “[t]hese adult-
orientated lyrics convey a message that is inconsistent with the
wholesome image Mattel has conscientiously developed.” (Id.
at 7).
Plaintiff objects specifically to the following phrases sung
by the pretend “Barbie” during the course of the song: “you can
brush my hair, undress” me everywhere”; “I’m a blond bimbo
girl, in a fantasy world”; “you can touch, you can play, if you
say: ‘I’m always yours’”; and “make me walk, make me talk, do
whatever you please, I can act like a star, I can beg on my
knees.” Plaintiff also objects to Ken’s lyrics, which include
~ Plaintiff claims that this lyric includes the word “undress me every-
where.” A transcript of the lyrics provided by defendants describers the
phase as “and dress me everywhere.” (Rasted Decl. at 26). However, a decla-
ration by Richard Lanham, provided by defendants, also identifies the lyrics
as “undress me everywhere.” (Lanham Decl. Para. 37).
25a
“kiss me here, touch me there, hanky panky” and “come jump
in, bimbo friend, let us go do it again, hit the town, fool around,
let’s go party.”
Mattel’s distaste for the song’s alleged message, of course,
cannot alone justify granting it a preliminary injunction. Cf.
New Kids on the Block v. News American Publishing, Inc., 971
F.2d 302, 307 [ 23 U.S.P.Q.2d 1534 ] (9th Cir. 1992) (noting
the potential for injury to public discourse if individuals cannot
refer to specific trademarks in their social commentaries). In-
deed, parody “inevitably offends others” because it so often
“ridicule[s] sacred verities and prevailing mores.” L.L. Bean,
811 F.2d at 28; see also Dr. Seuss, 109 F.3d at 1400 n. 8 (noting
that courts should “not take into account whether [an alleged
parody] is in good or bad taste’”’).
*1410 A review of the song and its video reveals that, in
general, the singers spoof what many children apparently do
with their doll, including dressing and undressing them. (See,
e.g. Lanham Decl. Para. 38). The song’s fast tempo and the
singers’ exaggerated performances of their respective characters
suggest that the lyrics are not to be taken too seriously.” As to
the meaning of the lyrics, Soren Rasted—a member of Aqua
and the song’s “primary writer”’—states that he wanted “to
compose a humorous song about the ‘Barbie fantasy world.’”
(Rasted Decl. at 3). Rasted has explained in interviews that the
song was about more than just the Barbie doll itself but also its
“status [,] like the royal family, which is not to be tampered
with.” (Id. at 4).
¥ For example, a constant.refrain throughout the song is the phrase,
“Come on Barbie, let’s go party.”
4 After defendants filed their opposition, Mattel’s reply brief and at-
tached declarations offered an interview by Rasted that purportedly shows
the song is not a parody of Barbie. In a news story about this lawsuit, a re-
porter quotes Rasted as saying, “We don’t mean to harm the doll. The song
isn’t about the doll, it’s about the plastic world we live in. We’re making fun
of that.” (Samuels Supp. Decl., Ex. B, at 8). The news story does not provide
26a
In addition, the band members do not adopt the likeness of
the Mattel dolls themselves. Both the album cover and the
video display the band’s four members. The lead singer, Lene
Grawford Nystrom, who adopts the persona of Barbie in the
song, has dark hair and a tattoo on her arm. Rene Dif, who sings
as Ken, has aclean-shaven head. Neither of these singers match
the usual images of Barbie as a blond young woman or Ken as a
young man with a full head of hair.
Mattel describes the video’s set as “predominantly colored
in the BARBIE pink colors,” including a pink house, which is
reminiscent of the BARBIE ‘DREAM HOUSE’ ... and a story
line which features the KEN doll dismembering the BARBIE
the context in which Rasted made these remarks, or whether he made any
additional comments about the meaning of the song.
In any event, this statement is not inconsistent with parody, as Rasted
had said earlier that he wanted to make fun of “Barbie’s fantasy world.” The
song’s lyrics clearly refer to Barbie’s party-girl image (for example, Barbie
sings, “I’m a blond bimbo girl in a fantasy world”). Also, it is not incompati-
ble with parody for song-writers to have a “larger” point beyond the immedi-
ate object of the song. In addition, Rasted need not wish to “harm” the doll
in order to parody it.
About the time the song was released, Rasted commented in an inter-
view that
It [the song] is about a Barbie doll, but like most of our songs
there is a deeper significance to it. Not that we have to be taken
dead seriously, but the Barbie doll has a certain status like the
royal family, which is not to be tampered with.
(Rasted Para. 14). Rasted said that he was inspired to write the song after
seeing a newspaper article about a “kitsch exhibition” in Copenhagen that
included plastic Barbie dolls from the 1970s. (Id. at Paragraphs 9- 10).
Given the important First Amendment interests at stake, this Court will
assume for the present motion that the song’s lyrics—which refer throughout
to Barbie and her party-girl life—are intended as a parody of both the doll
itself and the values she has come to represent.
Mattel admits it does not have a trademark for its so-called “BARBIE
pink” color. (Pl. Mot. at 5). For further discussion on the use of the color
pink in this case, see below.
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27a
doll by pulling off her arm.” (P1.’s Mot. at 9). Although the set
may invoke images of Barbie accessories, it is consistent with
the group’s attempt to parody the “Barbie fantasy world.” See
Dr. Seuss, 109 F.3d at 1400 (describing parody as “mimic
[king] an original to make its point”); Fisher, 794 F.2d at 435
n.2 (noting that parodies sometimes “must appropriate a sub-
stantial portion of [its target] to evoke recognition”). In addi-
tion, Mattel’s attempt to portray Ken’s removal of Barbie’s arm
as dismemberment is exaggerated: the singers, playing with a
fake-looking plastic arm, appear to be poking fun at the fact that
Barbie, like all dolls, can be taken apart by her more adventure-
some owners. (See Lanham Decl. Para. 45). _
Although plaintiff clearly wishes that its doll only be asso-
ciated with “wholesomeness,” (PI.’s Mot. at 5), defendants
point out that the Barbie doll has become an icon that means
different things to different people: “the doll has been seen as
feminist and anti-feminist; as seductive and as wholesome; as
intelligent and as a ‘dumb blond.’ Barbie has been hailed as a
role model and condemned as the cause of eating disorders.”
(Defs.’ Opp’n at 5). Nor is Barbie Girl the only song to tweak
the image Mattel wants for its doll: defendants identify nine
other songs that have invoked Barbie’s name, some of which
contain language far more vulgar than Barbie Girl’s references
to “hanky panky.® (Id. at 6-7, 28).
© For example, David Wilcox’s song “Barbie,” on his East Asheville
Hardware album, sings that Barbie
Made a career leading cheers for the L.A. Lakers
Then became the main mistress of the Reverend Jim Bakker
Helped him hear his messages from the Lord
With a vibrator and ouija board.
(Folkes Decl., Ex. 6, at 73). Likewise, a song by Lunachicks, entitled “Bit-
terness Barbie,” critiques Barbie’s “perfect” body by using vulgar terms to
describe various parts of her anatomy. (Id.). In comparison, Aqua’s criticism
of Barbie is much more light-hearted.
Plaintiff asserts that evidence of third-party infringers is irrelevant to
whether defendants are infringers. (PI.’s Reply at 8). However, these songs
28a
#1411 The fact plaintiff views the song as “attacking” the
wholesome of its image product bolsters defendants’ arguments
that this song involves a parody, therefore raising First
Amendment concerns. See Dr. Seuss, 109 F.3d at 1400 (observ-
ing that parody is a “form of social and literary criticism” im-
plicating free speech interests under the First Amendment).
B. Mattel’s Trademark Claim”
Plaintiff argues that the song Barbie Girl infringes upon its
federal trademark, trade name, and trade dress and that it will
likely confuse consumers into believing that the song is affili-
ated with the Barbie product line. Defendants respond that
plaintiff exaggerates the reach of its trademark and cannot Si-
lence song parodies that poke fun at its product simply because
they use the word “Barbie” in their title or lyrics.
The Lanham Act provides that
Any person who shall, without the consent of the reg-
istrant—(a) use in commerce any reproduction, coun-
terfeit, copy, or colorable imitation of a registered
mark in connection with the sale, offering for sale, dis-
tribution, or advertising of any goods or services on or
in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive . . . shall
be liable in a civil action by the registrant. . . .
15 U.S.C. Section 1114(1)(a) (West 1997). Protection under
this Act requires that a “particular design must be both non-
functional and have a secondary meaning.” Academy of Motion
Picture Arts and Sciences v. Creative House Promotions, Inc.,
944 F.2d 1446, 1454 [ 19 U.S.P.Q.2d 1491 ] (9th Cir. 1991).
are just examples of social criticism of Barbie. Defendants are simply trying
to link their song to other musical parodies and critiques of Mattel’s product.
1 Defendants assume for purposes of this argument that Mattel has a
valid trademark but reserve the right to argue later that “the term ‘Barbie
doll’ has . . . become generic and is outside the purview of the trademark
laws.’” (Defs.’ Opp’n at 8 n.5).
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The appearance of the Barbie doll is rather distinctive, in that
many consumers are likely to be able to identify the doll as a
Barbie product.” (See, e.g., Pl.’s Am. Compl., Ex. 29). In addi-
tion, Mattel’s Barbie line clearly does have a “secondary mean-
ing,” in that people around the world associate the name Barbie
with Mattel’s line of dolls and doll-related accessories. (See,
e.g., Defs.’ Opp’n at 4 (identifying Barbie as a “cultural icon”);
Pl.’s Mot. at 3 (claiming that “the Barbie brand name has
achieved nothing short of celebrity status”)). See also Rasted
Decl., at 20 (quoting 1997 newspaper accounts describing Bar-
bie as a cultural icon or symbol).
The Ninth Circuit has observed that the purpose of trade-
mark has “remained constant and limited: Identification of the
manufacturer or sponsor of a good or the provider of a service.”
New Kids on the Block, 971 F.2d at 305. Trademarks represent
“a limited property right in a particular word, phrase or sym-
bol.” Id. at 306. It does not allow trademark holders to censor or
silence all discussion of their products that they find annoying
or offensive. Indeed, New Kids observed that “‘ [m]uch useful
social and commercial discourse would be all but impossible if
speakers were under threat of an infringement lawsuit every
time they made reference to a person, company or product by
using its trademark.” 971 F.2d at 307.
In addition, the Ninth Circuit has recognized that “
[p]arody is regarded as a form of social and literary criticism,
& Whether the colors “pink and white” are distinctive as to Barbie is
another matter, particularly as pink is often associated with femininity and
toys for young girls. See discussion below.
4 Plaintiff also contends that its Barbie products have become associ-
ated with wholesomeness. (PI.’s Mot. at 5). However, as defendants point
out, the Barbie doll has also been associated in the public mind with less
savory images, such as eating disorders and poor self-esteem in young girls.
(Def.’s Opp’n at 5). See also Lanham Decl. Para. 27, Ex. 14 (listing “serious
cultural commentary . . . [that] has criticized Mattel . . . for marketing [to
children] an air-headed sexpot who parodied real human bodies and gender
roles”).
30a
having a socially significant value as free speech under the First
Amendment.” Dr. Seuss, 109 F.3d at 1400. Courts have noted
that songs are “indisputably works of artistic expression” de-
serving of First Amendment protections. Rogers v. Grimaldi,
875 F.2d 994, 997 [ 10 U.S.P.Q.2d 1825 ] (2d Cir. 1989). Al-
though the First Amendment does not prevent trademark law
from applying to artistic works, courts must be careful not to
trammel on free *1412 speech values in protecting trademarks.
See, e.g., id. at 998 (noting that “‘ [bJecause overextension of
Lanham Act restrictions in the area of titles [of artistic works]
might intrude on First Amendment values, we must construe the
Act narrowly to avoid such a conflict”); Girl Scouts of the
United States of America v. Bantam Doubleday Dell Publishing
Group, 808 F. Supp. 1112, 1118 [ 25 U.S.P.Q.2d 1737 ]
(S.D.N.Y. 1992) (“The owner of a trademark does not possess a
property right that is superior to the First Amendment right ac-
corded to artistic expression.”), aff'd, 996 F.2d 1477 [ 27
U.S.P.Q.2d 1316 ] (2d Cir. 1993).
1. Defendants’ Fair Use Under the New Kids Standard
In general, the Ninth Circuit applies an eight-factor “likeli-
hood of confusion” standard to both common law and federal
statutory trademark infringement. See Dr. Seuss, 109 F.3d at
1403-04; AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 [
204 U.S.P.Q. 808 ] (9th Cir. 1979). Defendants contend, how-
ever, that their limited use of the term “Barbie” places their
song outside the trademark context. See New Kids, 971 F.2d at
308 (observing that the “nominative use of a mark... lies out-
side the strictures of trademark law); Rogers, 875 F.2d at 999
19 plaintiff argues that its state claims for trademark infringement, un-
fair competition, misappropriation, and passing-off are governed by the like-
lihood of confusion test. See Century 21 Real Estate Corp. v. Sandlin, 846
F.2d 1175, 1178 [ 6 U.S.P.Q.2d 2034 ] (9th Cir. 1988) (observing that “
[t]he ultimate test for unfair competition is exactly the same as for trademark
infringement”); Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788, 794 [ 210
U.S.P.Q. 547 ] (9th Cir. 1981) (noting that passing off and misappropriation
are different “branches” of unfair competition).
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(2d Cir. 1989) (holding that the Lanham Act does not apply in
the case of “allegedly misleading titles using a celebrity’s
name” unless the title lacks artistic relevance or is explicitly
misleading).
In New Kids, the Ninth Circuit did not apply the eight fac-
tors for likelihood of confusion. Instead, the Court held that in
some cases involving “a non-trademark use of a mark, ...
[trademark] infringement laws simply do not apply.” 971 F.2d
at 307. The New Kids case involved two newspapers that con-
ducted polls by phone about readers’ reactions to the musical
group New Kids on the Block. The papers set up “900” num-
bers and charged their readers anywhere from 50 to 95 cents per
minute to respond to the questions in the poll. The band brought
a trademark infringement suit against the newspapers. Id. at
304-05. The Ninth Circuit held that, in cases “where the use of
the trademark does not attempt to capitalize on consumer con-
fusion or to appropriate the cachet of one product for a different
one[,] [s]uch minimal use of a mark—where the only word rea-
sonably available to describe a particular thing is pressed into
service—lies outside the strictures of trademark law.” Id. at
308.
New Kids recognized that the newspaper’s use of the name
constituted a “fair use” because it was used to describe the
plaintiff's product (i.e. the band), rather than its own (i.e. its
reader polls). Id. at 308. The Court reached this result even
though New Kids had their own phone lines set up for their fans
to call. Id. at 309. The Court specifically noted that the case dif-
fered from “the classic fair use case where the defendant has
inno F ear, Inc. v. Imagine Films, Inc., the Court observed that sub-
sequent Second Circuit precedent to Rogers had “effectively supplemented
the Rogers test by applying the standard likelihood of confusion factors.”
930 F. Supp. 1381, 1382 [ 38 U.S.P.Q.2d 1374 ] (C.D. Cal. 1995).
12) See also Fisher, 794 F.2d at 435 (noting that Congress has recog-
nized parody as a potential “fair use” activity in the context of copyright
law).
32a
used the plaintiff’s mark to describe the defendant’s own prod-
uct.” Id. at 308. Here, defendants have a colorable argument
that their use of the term “Barbie” is about the product Barbie
itself, rather than its own song. By describing the doll’s “life in
plastic” and the various ways consumers play with the doll
(“you can brush my hair, undress me everywhere”), Aqua is ar-
guably not speaking specifically about its own product, but
rather about Mattel’s. On the other hand, the title of Aqua’s
song, Barbie Girl, does incorporate the term “Barbie” as part of
its name. The word’s use in the title of the song may refer to
both Mattel’s product as well as MCA’s.
The New Kids Court set out a three-part test to be “a com-
mercial user . . . entitled to a nominative fair use defense”:
First, the product or service in question must be one
not readily identifiable without use of the trademark,
second, only so much of the mark or marks may be
used as is reasonably necessary to identify the product
or service; and third, the use must do nothing that
would, in conjunction with the mark, suggest sponsor-
ship or endorsement by the trademark holder.
*1413 Id. at 308. Defendants arguably can meet each of these
three elements.
First, defendants cannot effectively parody or comment on
the Barbie doll without mentioning her by name.” See id. at
306 (observing that “it is often virtually impossible to refer to a
particular product for purposes of comparison, criticism, . . . Or
any other such purpose without using the mark”); see also
Defs.’ Opp’n at 16 (“A principle underlying message of Barbie
Girl—having to do with the vacuous, ‘plastic,’ and frivolous
lifestyle suggested by the doll and all of her possessions—
Ly Plaintiff contends that “ (dJefendants could have easily avoided the
instant litigation” by calling their song “Bimbo Girl” or “Party Girl.” (PI.’s
Reply at 1). This argument ignores that Aqua was attempting to parody Bar-
bie, not just party girls in general.
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simply could not be made nearly as effectively without evoking
the Barbie doll iconography specifically. . . .”).
Second, the song’s use of the term “Barbie” is for purposes
of parody. (Rasted Decl. at Paragraphs 10-14). Referring to
Barbie as a “bimbo” living in plastic world, the song critiques
the vacuous, party-girl image Barbie has acquired in some quar-
ters. (See Lanham Decl., Para. 35). The repeated use of the
words “Barbie” and “Ken,” therefore, seem reasonably neces-
sary for purposes of parody.
New Kids dealt specifically with the use of a celebrity’s
name; in this case, however, plaintiff also complains that the
use of “Mattel’s distinctive trade dress colors of white and
BARBIE pink” on some versions of Barbie Girl CD and the
video comes too close to the lettering used on Barbie doll pack-
aging. (PI.’s Am. Compl., Ex. 29); see also New Kids, 971 F.2d
at 308 n. 7 (noting that a competitor could use a distinctive
name such as “Coca-Cola” when comparing products but could
not use Coca-Cola’s “distinctive lettering”). Mattel admits that
it is still in the process of applying “for federal trademark regis-
tration of the BARBIE name on a field of pink.” (PI.’s Mot.
at 5). But see Brunswick Corp. v. British Seagull Ltd., 35 F.3d
1527 [32 U.S.P.Q.2d 1120 ] (Fed. Cir. 1994) (holding that out-
board motor company could not register the color black as its
distinctive mark, partly on the grounds that other companies
used black on their engines and that such use reflected a “com-
petitive need”), cert. denied, 514 U.S. 1050 (1995). Although
plaintiff fails to explain how the so-called “BARBIE pink” is
different from the “pink” used on many products associated
with young girls, the Court will consider briefly whether the use
14 Even if Mattel’s interest is in multiple colors, such as white lettering
on a dark pink background (see PI.’s Am. Compl., Ex. 29), defendant's
packaging still differs significantly from Mattel’s. See below.
34a
of such coloring in the lettering on the Barbie Girl CD was ‘rea-
sonably necessary’ under the New Kids test.”
In general, the relatively thin lettering appearing on Bar-
bie’s packaging is solid white, slanted, and stylized; the back-
ground surrounding the lettering is pink, with images of flow-
ers. (PI.’s Am. Compl., Ex. 29). In contrast, Aqua’s album has a
blue, watery background and contains yellow lettering of all
eleven songs. None of the songs’ lettering is larger than the
other, and in fact, pink-BARBIE pink or otherwise—does not
appear anywhere on the front or back of the CD case.
Mattel’s main complaint about lettering appears to be with
Aqua’s CD-single versions of the song, (see PI.’s Am. Compl.
at Ex. 31, 33, 35), which defendants claim are “no longer being
made or sold by defendants.” (Defs.’ Opp’n at 21). Plaintiff,
however, asserts that these versions are still being sold. (Pl.’s
Reply at 1). Several versions use white or light pink block let-
tering for the title of the song; these letters have irregular bor-
ders and are outlined and shadowed in pink. At the top of every
package of the CD are large, rounded blue letters spelling the
word “Aqua”; these letters have a white and black outline, with
an eye appearing within the letter “Q.” (See PI.’s Am. Compl. at
Ex. 31, 33, 35). Whether use of pink and white was “reasonably
necessary” in the context of lettering is a closer question, al-
though pink is traditionally associated with femininity. Indeed,
Mattel does not hold claim to the entire color pink. (See also
Folkes Decl. Para. 15 (“Pink is a color associated with young
girls generally and young girls’ toys.”)). To the extent feminine
colors are associated with Barbie, defendants have a colorable
argument that the use of pink was reasonably necessary, as
Aqua may have difficulty evoking the images of the dolls it
parodies because the band members do not resemble Barbie or
Ken.
yp comparison of packaging may be more relevant in evaluating the
likelihood of consumer confusion under traditional trademark analysis, see
discussion below.
0 (ie a INS Pe eh se Hime — =
35a
Third, defendants’ album identifies on its CD case that the
song “is a social comment and was not created or approved by
the maker of the doll,” although this warning does not appear
on all versions of the CD *1414 single. This warning suggests
that defendants attempted to disassociate themselves from Mat-
tel, although they should have included it on all the CDs. De-
fendants have attempted to show that their song is not endorsed
by Mattel.
As plaintiff points out, this warning is not displayed before
radio and television performances of the song. However, the
same is likely true of other songs invoking famous “celebrities,”
including the early 1980s hit song “Bette Davis Eyes.” See
Rogers, 875 F.2d at 999 (citing “Bette Davis Eyes” as an exam-
ple of a title that includes “a well-known name without any
Overt indication of authorship or endorsement”). Although some
people will believe that “these titles implicitly suggest that the
named celebrity has endorsed the work or had a role in produc-
ing it, . . . the slight risk that such use of a celebrity’s name
might implicitly suggest endorsement or sponsorship to some
people is outweighed by the danger of restricting artistic ex-
pression, and the Lanham Act is not applicable.” Id. at 999-
1000.
Defendants may have a viable defense under the New Kids
standard, suggesting that plaintiff will be unlikely to succeed on
the merits of its trademark infringement claims.
2. Likelihood of Confusion
Although the New Kids test may apply to this case, courts
have traditionally used the likelihood of confusion test in the
trademark context. Even if the likelihood of confusion test is
the more appropriate one for evaluating plaintiff’ s claims, plain-
tiff cannot show that it is likely to succeed on the merits.
a. First Amendment Interests
The Second Circuit has observed that the possibility of
confusion over two products must be “particularly compelling”
to outweigh First Amendment interests raised when titles in-
36a
voke popular figures to communicate a particular message.”
Twin Peaks Productions v. Publications Intern. , 966 F.2d 1366,
1379 [ 27 U.S.P.Q.2d 1001 ] (2d Cir. 1993). Indeed, Mattel is
mistaken when it claims “ [t]here is no First-Amendment De-
fense under the Lanham Act” by citing Dr. Seuss. (P1.’s Mot. at
21). The passage cited in Dr. Seuss only rejects a defendant’s
argument that a preliminary injunction in these type of cases
constitutes a “prior restraint.” See Dr. Seuss, 109 F.3d at 1403
n.11 (citing Dallas Cowboys Cheerleaders, Inc. v. Pussycat
Cinema, Ltd., 604 F.2d 200, 206 [ 203 U.S.P.Q. 161 ] (2d Cir.
1979) (“The prohibition of the Lanham Act is content neutral,
and therefore does not arouse the fears that trigger the applica-
tion of constitutional ‘prior restraint’ principles.”). To the ex-
tent plaintiff relies on the language of Dallas Cowboys, that
case has later been criticized because First Amendment rights
“cannot be dispensed with by simply asserting that [plaintiff's]
property right need not yield to the exercise of the first amend-
ment rights.” L.L. Bean, 811 F.2d at 29.
Dr. Seuss did hold, however, that “the cry of ‘parody!’ does
not magically fend off otherwise legitimate claims of trademark
infringement or dilution” and that the claim of parody can pro-
vide “no defense ‘where the purpose of the similarity is to capi-
16’ 4 \though the Ninth Circuit has not specifically adopted the “particu-
larly compelling” language used by the Second Circuit, a California district
court has adopted this test. See No Fear, Inc., 930 F. Supp. at 1384.
As No Fear observed in 1995, “the Ninth Circuit has not yet addressed
the confluence of First Amendment concerns and the Lanham Act.” Id. at
1382 n.1. Although the 1997 Dr. Seuss opinion discusses the importance of
parody under the First Amendment, the Ninth Circuit has not dealt directly
with whether the likelihood of confusion factors must be particularly com-
pelling to outweigh First Amendment interests.
Dr. Seuss involved a defendant attempting to claim it was parodying
Dr. Seuss, when in fact it was simply copying his style, images, and even
title for its own book about the O.J. Simpson trial. In contrast, defendants
here only use the word “Barbie” and, in some lettering on some CDs, the
colors pink and white. It never uses Barbie’s likeness or image. Further, the
song specifically targets Barbie for commentary.
OT a rt Tae,
APR HOA ADRS Lo, ete mange
radars
ee Bho ee Cee oe oe er ie
Pts WED. Hesnipe equa mgr Rt SP edges
37a
talize on a famous mark’s popularity for the defendants’ own
commercial use.’” Id, at 1405-06 (internal citations omitted).
The Court added that “ [i]n a traditional trademark infringement
suit founded on the likelihood of confusion rationale, the claim
of parody is not really a separate ‘defense’ as such, but merely a
way of phrasing the traditional response that customers are not
likely to be confused as to the source, sponsorship, or ap-
proval.” Id. at 1405. Indeed, as the Second Circuit has noted, a
successful parody “depends on lack of confusion to make its
point.” Hormel Foods Corp. v. Jim Henson Productions, Inc.,
73 F.3d 497, 503 [ 37 U.S.P.Q.2d 1516 ] (2d Cir. 1996).
Unlike the present case, the defendants in Dr. Seuss used
the claim of “parody” in an attempt to avoid the fact that they
were copying images and writing style from a famous children’s
book in order to satirize something completely different: the
O.J. *1415 Simpson trial. Defendants specifically copied the
distinctive “stove-pipe hat” worn by a feline character from The
Cat in the Hat, a book written by Dr. Seuss (nee Theodor S.
Geisel). Defendants used the image numerous times throughout
the book and also copied Dr. Seuss’ “whimsical poetic style.”
Id. at 1397-98. After determining that the book was not a “fair
use” under the copyright statute, id. at 1399-1403, the Court
applied the eight-factor Sleekcraft test to determine “likelihood
of confusion” for purposes of trademark infringement. Id. at
1403.
Drawing from Supreme Court precedent, the Dr. Seuss
Court observed a distinction between “parody (in which the
copyrighted work is the target) and satire (in which the copy-
righted work is merely a vehicle to poke fun at another target).”
Id. at 1400. The Court rejected defendants’ fair use defense in
the context of copyright infringement because the defendants
appropriated Dr. Seuss’ work, not to parody it, but rather to use
it to satirize something entirely different. Id. at 1399-1401. The
defendants’ book did not hold Dr. Seuss’ “style up to ridicule;”
instead, it only copied elements of his Cat in the Hat books ““‘to
38a
get attention’ or maybe even ‘to avoid the drudgery in working
up something fresh.’” Id. at 1401.
Although plaintiff contends that Aqua used Barbie solely to
gain attention, the object of its song is clearly the doll itself and
the values it represents, rather than some other topic. Also, Dr.
Seuss did not hold that all claims of “parody” as a defense were
frivolous, just those that “solely capitalize{d]” on another’s
fame to satirize something completely different. Even if Aqua
knew that parodying a popular product would attract favorable
attention, this knowledge alone cannot erase their First Amend-
ment interests in commenting on Barbie: if it did, then no
relatively unknown group could criticize popular products
because the accusation of trying to gain attention would always
exist. The First Amendment’s protections must apply even to
those whose parodies target the strong, popular, or well-
established. Defendants parody Barbie specifically and do not,
like the Dr. Seuss defendants, merely use Barbie as a vehicle to
satirize something else.
As the Ninth Circuit observed in Dr. Seuss, parody has
“socially significant value as free speech under the First
Amendment.” Id. at 1400. Therefore, this Court will consider
the effect on defendants’ First Amendment interests when
weighing the eight Sleekcraft factors. See Twin Peaks Produc-
tions, 996 F.2d at 1379; see also No Fear, Inc. v. Imagine
Films, Inc., 930 F. Supp. 1381, 1384 [ 38 U.S.P.Q.2d 1374 ]
(C.D. Cal. 1995).
b. The Likelihood of Confusion Standard
The Sleekcraft factors include the following:
(1) the strength of the mark; (2) proximity of the
goods; (3) similarity of the marks; (4) evidence of ac-
tual confusion; (5) marketing channels used; (65) type
of goods and the degree of care likely to be exercised
by the purchaser; (7) defendant’s intent in selecting
the mark; (8) likelihood of expansion of the product
lines.
39a
Dr. Seuss, 109 F.3d at 1404 (citing Sleekcraft, 599 F.2d at 348-
49). These factors are not exhaustive, and the court may take
into account “other variables . . . depending on the particular
facts presented.’” Id. As mentioned above, this Court will take
into consideration the First Amendment interests at stake in this
case.
Strength of the Mark. Defendants concede that the Barbie
mark is strong, at least as to dolls and doll-related products.”
Although “an undeniably strong mark” usually favor plaintiffs,
it can also favor some defendants who poke fun at the mark be-
cause “a parody depends on a lack of confusion to make its
point.” Hormel Foods, 73 F.3d at 503. Here, the lyrics to the
song reter to Barbie as a “blond bimbo.” If Mattel is correct that
its product has a “wholesome image,” (see PI.’s Mot. at 6), then
consumers are even more likely to recognize Barbie Girl as a
parody.
Proximity of Goods. Defendants contend that the Barbie
line of products is primarily associated with dolls and doll-
related products sold in stores selling toys, while Aqua’s music
is sold primarily at stores selling music. Plaintiff contends,
however, that it sells *1416 many different kinds of products
associated with Barbie, including music-related goods. For ex-
ample, in 1990 Mattel licensed the production of a compact disc
of music entitled “Barbie: The Look,” in which a singer adopts
1Y See Cliff Notes, Inc. v. Bantam Doubleday Dell Publishing Group,
Inc., 886 F.2d 490, 494 [ 12 U.S.P.Q.2d 1289 ] (2d Cir. 1989) (“ [I]n decid-
ing the reach of the Lanham Act in any case where an expressive work is
alleged to infringe a trademark, it is appropriate to weigh the public interest
in free expression against the public interest in avoiding consumer confu-
sion.”); see also Dr. Seuss Enterprises, 109 F.3d at, 1400; Twin Peaks Pro-
ductions, 996 F.2d at 1379; New Kids on the Block, 971 F.2d at 307; Rogers,
875 F.2d at 998; L.L. Bean, 811 F.2d at 34; Fisher, 794 F.2d at 437-38.
18 Plaintiff also contends that its white lettering on a pink background
is a trade dress associated with Barbie products. (PI.’s Reply at 8). Such col-
ors, however, can be associated with many toy products aimed at young girls.
(See, e. g., Rasted Decl., Ex. 10).
40a
Barbie’s persona. (McKenzie Decl. Para. 1 1(a), Ex. D). Mattel
points to several unnamed compact discs, a tape called “Barbie
Country Music Dancing with Me,” a dance workout video, and
an ice show involving a Barbie character. (Id. at Para. 11). In
addition, Mattel refers to music-related toys, such as a miniature
concert stage and music stores designed for the doll itself. (Id.
at Para. 12). Plaintiff did not initially indicate whether these
products were sold in music stores or departments, or whether
they were still sold in 1997, when Aqua’s album debuted.
In its reply brief, plaintiff argues that the Barbie Girl CD
and the Mattel’s Barbie music products “are currently being
sold in the same departments of the same stores, including
popular retail outlets such as the Virgin Megastore, Borders
Books & Music, Costco Wholesale, Wal-Mart, and K Mart.”
(Pl.’s Reply at 9-10 (citing Grant Decl. Paragraphs 5-19)). To
support this claim, plaintiff sent a paralegal to these stores to
purchase the Aqua CD and to take photographs of the store de-
partments displaying plaintiff's and defendants’ respective
products.
Although it appears that, in some cases, plaintiff's products
are sold in the same stores as the Barbie Girl CD, this evidence
does not show that any of plaintiff's products are sold in the
music section of these stores, where defendants’ CD is sold. For
example, at a Wal-Mart store, plaintiff found Barbie computer
software, a Barbie “CD player,” and a “Workin’ Out Barbie”
doll with cassette.” The Barbie Girl CD was also sold at the
store. However, none of these Barbie products were sold in the
music section; at best, the music and computer software was
sold in different areas of an “electronics” department. (Grant
Decl. at Paragraphs 5-8, Ex. K & L). Indeed, in all of the stores
visited by the paralegal, plaintiff does not show one example
where any of its Barbie-related products are sold in music de-
partments, nor does it show that Barbie Girl is sold anywhere in
2 The CD player, which includes four “CDs” and sells for $14.99, ap-
pears to be a toy. (See Grant Decl. at Ex. F & H).
SEAN RSNA IND REESE Oh RRR BD ; etn ae REG
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EO ae ale PIAS IR, PN
4la
these stores except with other music. (See, e.g., id. at Para-
graphs 2-10, 14-19; Ex. B-E, K-L, and M-R)).
Similarity of the Marks. The marks on defendants’ product
are not similar to Mattel’s. Under Ninth Circuit precedent,
courts are to analyze “the similarity of the marks . . . [by] view
[ing] the marks as a whole, as they appear in the marketplace.”
E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291
[ 21 U.S.P.Q.2d 1824 ] (9th Cir. 1992). Every Mattel product
offered as an exhibit has an image of the Barbie or Ken doll on
its packaging. In some cases, the packaging is transparent,
revealing the actual doll. (First Am. Compl. Ex. 29; McKenzie
Decl. Ex. C-I, K-M, O; Grant Decl. Ex. D-G,L, P-R, V, W, BB,
FF-II). None of Aqua’s packaging has an image of any doll,
whether resembling Barbie or not. All of Aqua’s music CDs
have a picture on their covers of the four band members, none
of whom resemble Barbie or Ken.*” (First. Am. Compl. Ex. 31,
33, 35, 37; Rasted Decl. Ex. 1-2; Grant Decl. Ex. B, C, K, N, O,
T, U, V, Y, Z, AA, DD, EE; Rasted Decl. Ex. 1-2; Samuels
Decl. Ex. B, E, G, I). Given the context in which these products
20 At Costco, Barbie computer software, in a heap of boxes ona table,
are apparently displayed in the same long row as the Barbie Girl CD. (Ex.
V). It is unclear from this exhibit, however, whether Costco is organized into
departments in the same manner as other stores.
ab After defendants filed their opposition, plaintiff provided this Court
with aCD-ROM from Aqua that apparently includes a full-length video for
Barbie Girl. This product does not have a picture of the band on its cover.
However, it is unclear from where this computer software was pur-
chased (it has a “Made in England” sticker on it) or what its original
packaging looked like. The cover of the CD-ROM case has big blue lettering
of the words “Aqua” and pink lettering (not pink and white) of the words
“Barbie Girl.” It does not have an image of a doll on its front or back.
Plaintiff also provided a vinyl record of the song, with large lettering
indicating the band AQUA. This record has a warning, in small lettering, that
the song is a “social comment.” Plaintiff does not indicate where this record
was purchased.
42a
are sold, it seems doubtful that many consumers would confuse
the products based on packaging.
As to the other aspects of the packaging, each party refers
to different versions of the Barbie Girl CD. Defendants refer
to ari album, containing an eleven-song CD. The album cover is _
mostly blue with a picture of the band members on the front; it
also has in large, rounded-block letters, ““Aqua,” and in smaller
print, “Aquarium.” On the back of the album, eleven song titles
are listed, all in small-size yellow lettering. Barbie Girl is *1417
listed as track number three and has an asterisk next it. This
symbol refers to another asterisk below, which is next to a sen-
tence in yellow warning that “‘ [t]he song ‘Barbie Girl’ is a so-
cial comment and was not created or approved by the makers of
the doll.” The back of the album also identifies MCA as the
copyright holder. This album is quite dissimilar from the style
of packaging used on any of plaintiff's products.
Plaintiff refers to CD single versions of the song “Barbie
Girl” that it contends have “Mattel’s distinctive trade dress col-
ors of white and BARBIE pink. (Pl.’s Mot. at 17; see also
Pl.’s Am. Compl. Ex. 29). Plaintiff has used these colors with
its packaging for Barbie since at least 1992. (PI.’s Mot. at 16).
In its amended complaint, plaintiff provides three examples
of these CD singles, which include multiple versions or “re-
mixes” of the song Barbie Girl. The packaging on all three ver-
sions has large blue lettering of the word “Aqua” on their front
covers, as well as a picture of the four band members. (PI.’s
Am. Compl., Ex. 31, 33, and 35). None of the packaging in-
cludes an image of a doll of any kind. The CDs also include the
22/ Mattel claims that Barbie Girl has “at least eight different infringing
BARBIE GIRL musical products.” (Pl.’s Reply at 10). Plaintiff does not list
what these products are, however.
2 As noted earlier, defendants submit that its single version of the
song is no longer being made or sold by defendants. (Defs.’ Mot. at 21). In
its reply brief, plaintiff alleges seven versions of this single are still being
marketed. (PI.’s Reply at 11).
1
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43a
words “Barbie Girl” in smaller lettering at the bottom of the
CD. “Barbie Girl” is in block letters, with irregular sides and
shapes, and a dark pink outline. The center of the lettering is a
light pink.
In contrast, the word “Barbie” on Mattel’s products slants
up and has slender, white lettering. (Id., Ex. 29). Defendants’
lettering is bulkier and on a straight line. Further, defendant’s
packaging identifies MCA as the publisher of the music and
does not use the word “Mattel” anywhere.
The fact the words “Barbie Girl” always appear next to the
words “Aqua” on the packaging is significant in that it de-
creases the likelihood of consumer error and confusion. The
context in which marks appear is important. See Hormel Foods,
73 F.3d at 503, 504 (noting that a character named “Spa’am”
was always associated with the words “Muppet Treasure Is-
land,” decreasing the likelihood that consumers would confuse
the Muppets’ wild boar puppet with Hormel’s meat product
known as Spam).
The differences in packaging between Mattel and MCA’s
products set this case apart from the books at issue in Dr. Seuss.
In that case, the offending book expropriated the image of a hat
used in Dr. Seuss’ books and placed it on the front and back
cover of the product. Dr. Seuss, 109 F.3d at 1402. Here, how-
ever, the band does not use any images of the Barbie doll itself,
and the name “Aqua” is always the largest lettering on the pack-
aging. Plaintiff is unlikely to show that lettering of the marks
are SO similar as to cause consumer confusion.
As to the video, plaintiff claims that the set used mimics
Barbie’s accessories. As the band members look nothing like
the dolls they spoof, however, using a set to evoke the subject
matter of the parody seems appropriate under the circum-
stances. A parody, by definition, “needs to mimic an original to
make its point.” Campbell v. Accuff-Rose Music, Inc.,510 U.S.
569, 80 [ 29 U.S.P.Q.2d 1961 ] (1994); see also Fisher, 794 -
F.2d at 435 n.2 (“To ‘conjure up’ the original work in the audi-
44a
ence’s mind, the parodist must appropriate a substantial enough
portion of it to evoke récognition.”). Given that the pretend
Barbie has a tattoo and dark hair, and the pretend Ken has a
clean-shaven head, viewers are unlikely to mistake these singers
for Mattel’s product.
Acutal Evidence of Confusion. Plaintiff points to several
dozen e-mails that it received at its website in which individuals
make reference to the “new Barbie song;” plaintiff also cites to
a fax from an individual in the United Arab Emirates.
(McKenzie Decl., Ex. R). However, several of the e-mails sim-
ply contain lyrics from the songs. Although a few ask if they
can acquire the CD through the web site, others simply write to
say that they enjoy the song, which may or may not mean that
they believe Mattel is responsible for it. (Id.). These ambiguous
e-mails are insufficient or at best very weak evidence of actual
confusion.“
#1418 Marketing Channels Used. Plaintiff asserts that Bar-
bie Girl and Barbie dolls “directly compete in the same, virtu-
ally global marketplace” and are advertised through the “same
media and commercial venues, including music and video
24 Weston Anson, chairman of Trademark and Licensing Associates,
relies on his Valmatrix method of calculation to show that confusion between
the two products is “substantial.” The validity of the outcome of those results
depends on the accuracy of the data entered and the soundness of the meth-
ods used to calculate these factors’ importance.
Mr. Anson apparently assumes “same or similar packaging trade
dress,” “similar channels of distribution,” and “same consumer audience.”
(Anson Decl. Para. 11). However, there is clearly a dispute as to the validity
of these assumptions. In addition, the objectivity of Mr. Anson’s analysis
becomes questionable when he refers to “additional factors” to support find-
ing a likelihood of confusion, by stating that “the defendants clearly did not
act in good faith... [because] [t]hey never contacted Mattel . . . before de-
ciding to use the BARBIE trademark.” (Id. Para. 38). It is unclear why this is
relevant to showing confusion and why any parodist would first seek permis-
sion before parodying someone.
a a al a a
So PAIRS vk LR ER
Soe te et orn ne ie ee
ete Heb
Yat AS ORR HN ES
45a
stores, the Internet, television and the radio.“ (PI.’s Mot. at
18). No widely marketed product lampooning Barbie could
avoid such a broad reaching interpretation of this factor.*”
Parodists should not be exiled to less conspicuous venues sim-
ply to avoid using the same marketing channels as the objects
they parody.
Degree of care of purchasers. The Court must also consider
the type of goods and the degree of care likely to be exercised
by the purchaser. Under this analysis, adults would presumably
be less prone to confusion than young children.
Defendants assert that the consumers of their product are
teenagers and adults, while Mattel’s Barbie products are tar-
geted toward three to ten-year-olds. (Folkes Decl. Para. 6).
Plaintiff counters that the “typical buyer” of both products “‘is a
young, unsophisticated person” who does not read the “tiny leg-
end on the back of an inexpensive CD.” (PI.’s Mot. at 19, 11;
see also Anson Decl. at 2 (“More than one billion BARBIE line
dolls have been sold worldwide, principally to girls aged 3 to
11.”’)), At another point, plaintiff identifies its primary purchas-
ers as adults who buy toys for their children or collectibles for
themselves. (PI.’s Reply at 16). It is unclear who the typical
buyers of plaintiff's products are, making a comparison with
defendant’s purchasers difficult. Even if Mattel’s customers
made purchases as haphazardly as it claims, they likely would
understand that the large letters “AQUA” on the CDs they are
buying represented a musical pop group and not a toy manufac-
turer.
2» Plaintiff also contends that defendants “advertised and promoted
their [song] . . . in a magazine with a subscription base consisting solely of
collectors of and investors in Mattel’s BARBIE brand products.” (PI.’s Mot.
at 19).
2& tn its reply brief, plaintiff repeats its earlier claim that Barbie Girl is
sold in the same departments of certain stores as plaintiff's products. Plain-
tiff does not explain how this claim relates to marketing channels.
46a
As to the type of goods, although plaintiff has sold many
different kinds of Barbie-related products over the years, it has
not shown that is currently selling music, except for a few
products that are sold as toys in toy departments and are often
accompanied by one of plaintiff's dolls.
Defendants’ Intent. Defendants claim that they choose the
name “Barbie” not to confuse the public but rather to parody the
doll and make a comment on the values it represents. (Defs.’
Opp’n at 25; Rasted Decl. Para. 11 (“As I wrote the song, I
knew that Barbie was a popular doll. . . . My intention was to
use that imagery to evoke and comment on a Barbie world.’”’)).
As to this element, plaintiff need not show that defendants “in-
tended to deceive consumers.” Gallo Winery, 967 F.2d at 1293.
Still, the weight of this factor is diminished somewhat in the
context of parody, as all parodists of consumer products “intend
to select” the products’ mark to make their comments. See also
Cliff Notes, Inc. v. Bantam Doubleday Dell Publishing Group,
Inc., 886 F.2d 490, 494 [ 12 U.S.P.Q.2d 1289 ] (2d Cir. 1989)
(recognizing the need to balance First Amendment interests
against likelihood of confusion, in part because it “allows
greater latitude for works such as parodies, in which expression,
and not commercial exploitation of another’s trademark, is the
primary intent”).
Expansion of product lines. In its briefs, plaintiff refers to
“Barbie Girl” products. However, the only product here is one
song, Barbie Girl, which is sold in different forms and is per-
formed by a new group that will be using totally different songs
in its future productions. (See Rasted Decl. at Para. 17).
Conclusion. Under an analysis of the Sleekcraft factors,
plaintiff is not likely to succeed in showing that consumers are
confused between the Barbie doll-line of products and the Bar-
bie Girl song, CDs, and video. In addition, the First Amend-
ment concerns raised by prohibiting a parody of a popular con-
sumer product weigh against granting a preliminary injunction.
Presumably, some consumer confusion is inevitable when a few
ht a ae nes ae ag ce el
aanauenenennes
NERS Hg py Mataiat
BDA EASE IS ROE AE BTL ELLIS ERIS FOLGE ‘4
Da ra a rat
EP RERE ASA ALOE IRIE AE BOLLS ALLELE LALS LEP TE
47a
people fail to realize that one product is parodying another. This
fact should not be used to censor criticism of or social com-
ments on icons in our popular culture, especially when the
parodying product identifies itself with its own brand name, in
this case “Aqua.” See, e.g., L.L. Bean, 811 F.2d at 34 (“Denying
parodists the opportunity to poke fun at symbols and names
which have become woven into the fabric of our daily life
would constitute a serious curtailment of a protected form of
expression.”).
C. Mattel’s Trademark Dilution Claims
Plaintiff also bases its motion on both federal and state
trademark dilution claims. *1419 The Federal Trademark Dilu-
tion Act provides that
The owner of a famous mark shall be entitled, subject
to the principles of equity and upon such terms as the
court deems reasonable, to an injunction against an-
other person’s commercial use in commerce of a mark
or trade name, if such use begins after the mark has
become famous and causes dilution of the distinctive
quality of the mark.
15 U.S.C. Section 1123(c)(1) (West 1997). The Act also pro-
vides that the person accused of violating subsection (c) must
have “willfully intended to trade on the owner's reputation or to
cause dilution of the famous mark.” Id. at Section 1125(c)(2). In
addition, the Act exempts from its reach the “[flair use of a fa-
mous mark by another person in comparative advertising or
promotion to identify the competing goods or services of the
owner of the famous mark[;] [n]oncommercial use of a
mark[; and] [a]ll forms of news reporting and news commen-
tary.” Id. at Section 1125(c)(4). To prove dilution, a party need
not show “the presence or absence of (1) competition between
the owner of the famous mark and other parties, or (2) likeli-
hood of confusion, mistake, or deception.” Id. at Section 1127.
California’s trademark dilution statute provides that
“(likelihood of injury to business reputation or of dilution of
48a
the distinctive quality of a mark registered under this chapter
_.. Shall be ground for injunctive relief, notwithstanding the
absence of competition between the parties or the absence of
confusion as to the source of goods or services.” Cal. Bus. and
Prof. Code Section 14330 (West 1997). The Ninth Circuit has
held that California’s anti-dilution law “is designed to protect
against the gradual ‘whittling away’ of a trademark’s value.”
Academy of Motion Picture, 944 F.2d at 1457.
Plaintiff claims that its famous mark is associated with
wholesomeness and that defendants’ “antisocial” song tarnishes
that mark. More specifically, plaintiff argues that Barbie Girl
supports “promiscuity, lewdness, and the stereotyping and
denigration of young women.” (PI.’s Mot. at 25). Defendants
contend that their speech falls within the “noncommercial use
of a mark” exception to the federal statute and that First
Amendment principles protect their use of the mark. See L.L.
Bean, 811 F.2d 26 (applying First Amendment principles to
state anti-dilution claim).
The fact Barbie Girl is sold for money is not dispositive as
to whether the use of the mark is commercial. Id., cf. New Kids,
971 F.2d at 309 (holding that “[wJhere . . . the use {of a mark]
does not imply sponsorship or endorsement, the fact that it is
carried on for profit and in competition with the trademark
holder’s business is beside the point” for purposes of trademark
infringement). In L.L. Bean, the Court, in considering a state
anti-dilution claim, found that the use of L.L. Bean’s trademark
in a monthly adult entertainment magazine was a noncommer-
cial use because it was parodying an actual catalog produced by
the plaintiff. 811 F.2d at 32. As the Court observed, the defen-
dant had “not used Bean’s mark to identify or market goods or
services; it .. . used the mark solely to identify Bean as the ob-
ject of its parody.” Id. at 33. Likewise, in this case, defendants’
use of the term “Barbie” appears to be for purposes of parody,
rather than to sell knock-off Barbie products.
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49a
The L.L. Bean Court also rejected the argument that mere
association of a trademark with “unwholesome or negative con-
text” is enough to make a trademark dilution claim. Id. at 31;
see also New Kids, 971 F.2d at 307 n.5 (observing that “ [a]
trademark may even be used lawfully in a way that many peo-
ple, including the trademark owner, may find offensive”). Mat-
tel attempts to compare Barbie Girl’s relatively innocuous lyrics
to more sexually explicit parodies, including the use of a plain-
tiff's cheerleading uniform in a pornographic move, Dallas
Cowboys, 604 F.2d 200 [ 203 U.S.P.Q. 161 ], and graphic de-
pictions of two Pillsbury trade characters engaged in sexual in-
tercourse, Pillsbury Co. v. Milky Way Productions, Inc., 215
U.S.P.Q. 124 (N.D. Ga. 1981). However, the works in these
cases were pornographic, and plaintiff does not characterize
Barbie Girl as being sexually explicit. Further, the L.L. Bean
court distinguished the Pillsbury case, noting that the Georgia
district court failed to consider whether parody might be a de-
fense to a dilution claim, even though it was pornographic. 73
F.3d at 33 n.5. A First Amendment defense should also apply in
contexts such as this case where the parody is less sexually ex-
plicit than that in Pillsbury. Indeed, nonobscene, sexual speech
is “entitled to no less protection than other forms of expres-
sion,” no matter how course, vulgar, or distasteful it may be to
some. Id. at 34 (quoting Fantasy Book Shop, Inc. v. City of Bos-
ton, 652 F.2d 1115, 1126 (1st Cir. 1981)); see also Fisher, 794
F.2d at 437 (noting that a comic song about sniffing glue was
“innocuous-silly perhaps, but surely not obscene or immoral,”
even though it parodied another, more famous tune).
Even if the use of the term “Barbie” is not exempted as a
noncommercial use for purposes *1420 of trademark dilution,
the L.L. Bean Court warned that courts should still take into ac-
count First Amendment principles when evaluating such
claims: Cases of “unauthorized uses of trademarks on products
whose principal purpose is to convey a message . . . require a
balancing of the harm suffered by the trademark owner against
the benefit derived by the parodist and the public from the
unauthorized use of a trademark on a product designed to
50a
authorized use of a trademark on a product designed to convey
a message.” Id. at 32 n.4.
In this case, plaintiffs description of Barbie Girl as “lewd
and lascivious” arguably stretches those terms. Even if the song
were considered as vulgar as Mattel purports, it is a parody of
the “party-girl” image Barbie may already have among some
members of the general public. (See, e.g., Folkes Decl., Ex. 22).
Absent stronger evidence that the song actually tarnishes Bar-
bie’s image, plaintiff is unlikely to succeed on its trademark di-
lution claims.
V. Irreparable Injury and the Balance of Hardships
Plaintiff has failed to show that it is likely to succeed on its
trademark infringement and dilution claims. Nor does it appear
that the balance of hardships “tips sharply” in its favor. Big
Country Foods, 868 F.2d at 1088.
CONCLUSION
For the foregoing reasons, this Court DENIES plaintiff's
motion for a preliminary injunction. The Court also DENIES
plaintiff's and defendants’ motions to strike each other’s sup-
porting declarations.
IT IS SO ORDERED.
22 Plaintiff cites the Ninth Circuit's Academy of Motion Picture case to
support its state law dilution claim. 944 F.2d 1446 [ 19 U.S.P.Q.2d 1491 J.
In that case, a company produced a gold- colored award statute almost iden-
tical to the famous Oscar awards given each year. Id. at 1449-50. The “only
significant differences between the two [were that] the Star Award is two
inches shorter than the Oscar, and holds a star rather than a sword.” Id.
Unlike that case, defendants have not copied Barbie’s design as a doll or
even any of the music Mattel puts out under her name. Defendants are paro-
dying Barbie, not “whittling away” at consumers’ ability to distinguish be-
tween competing brands.
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APPENDIX C
United States District Court
Central District of California
MATTEL, INC., a Delaware corporation,
Plaintiff,
v.
MCA RECORDS, INC., a California corporation, et al.,
Defendants.
No. CV 97-6791-WMB (RNBx)
[28 F. Supp. 2d 1120]
Aug. 3, 1998
ORDER GRANTING DEFENDANTS’ MOTION FOR
SUMMARY JUDGMENT AS TO ALL CLAIMS,
GRANTING PLAINTIFF’S MOTION FOR SUMMARY
JUDGMENT AS TO DEFENDANTS’ COUNTERCLAIM,
AND DENYING DEFENDANTS’ MOTION TO DISMISS
WM. MATTHEW BYRNE, Jr., District Judge.
In March, 1997, a Danish musical group known as “Aqua”
released in Europe an eleven-song album, Aquarium. This al-
bum included a song entitled Barbie Girl, in which a woman
and man assume the identities of two popular Mattel dolls
known as Barbie and Ken. Defendants claim this song parodies
the popular toys, with the singers referring to Barbie as a “blond
bimbo girl” who loves to party and whose “life is plastic.”
Barbie Girl quickly became a hit in Europe and later was re-
leased in the United States, *1126 where the Aquarium album
sold over 1.4 million compact discs (CDs) and cassettes.
A At AEN SBOE REN TG BP EET EERE SEIS BREET EO Dt RENTERS ECE
SSI AP IEE PADI LIA ML sie
52a
On September 11, 1997, Mattel filed suit in this Court,
bringing eleven claims” against MCA and other defendants.”
Defendants, in turn, filed a counterclaim for defamation. On
February 19, 1998, this Court denied plaintiff's motion for a
preliminary injunction, on the grounds that it was not likely to
succeed on the merits.
Defendants now move for summary judgment; they also
seek to dismiss the foreign defendants for lack of subject matter
jurisdiction, personal jurisdiction, and forum non conveniens.
Plaintiff moves for summary judgment as to defendants’
counterclaim for defamation and request reconsideration of the
Court’s earlier Order denying a preliminary injunction. Al-
though plaintiff did not file a formal cross-motion for summary
judgment on its own claims, during the hearing on April 30,
1998, plaintiffs counsel orally requested that the Court grant
summary judgment for Mattel rather than defendants.
At the hearing, the Court advised the parties that, because
the pre-trial and trial dates ‘vere approaching, it would issue a
brief order on the motions, followed by this more detailed or-
der.
Y The claims are (1 ) trademark and trade dress dilution (under state and
federal law), (2) trademark infringement, (3) false designation of origin and
false description, (4) statutory and common law unfair competition, (5) un-
fair competition under the Paris Convention, (6) wrongful use of a registered
mark; (7) common law misappropriation; (8) common law passing-off and
disparagement; (9) common law unjust enrichment, (10) contributory
trademark and trade dress dilution (under state and federal law), and (11)
contributory trademark and trade dress infringement.
~ Mattel did not sue the musical group Aqua.
» Mattel’s proposed preliminary injunction asked that this Court enjoin
defendants from manufacturing, producing, or distributing the Barbie Girl
song. It also requested that this Court require defendants to “dispos{e] or
destroy[ ] any product or its packaging, which uses Mattel’s BARBIE trade
name.” (PI.’s Proposed Order at 3).
12 ERTS RR ER ARO Kap
DENY ak Tt ART ARN RAO TAT PPS
53a
I. MCA’S MOTION TO_ DISMISS FOREIGN
DEFENDANTS
MCA Records is a California corporation that sells Aqua’s
album in the United States. Universal Music & Video Distribu-
tion Inc. is a New York corporation that distributes the album in
the United States. This Court’s jurisdiction over those two de-
fendants is not contested. Three foreign defendants have also
been sued by Mattel, and those three defendants have filed a
motion to dismiss the case against them for lack of personal ju-
risdiction. All three foreign defendants are affiliated members
of the Universal Music Group. (PI.’s Ex. H.) All three have an
active and on-going relationship with each other. (Cacciatore
Dep.; Bowen Dep.)
Universal Music A/S is a Danish corporation (“Universal
Denmark”). Aqua recorded the album in Denmark and is party
to a recording agreement with Universal Denmark that gives
Universal Denmark the worldwide rights to the Aqua album.
Universal Denmark has a preexisting agreement with MCA Re-
cords that gives MCA the rights to Aqua and other bands for
distribution in all countries except Denmark. Universal Den-
mark collects a license fee for all sales of the album in the
United States. MCA Music Scandinavia A/B (“MCA Scandi-
navia”) is a Swedish corporation. Through an agreement with
Universal Denmark, it owns the music publishing rights to the
words and the music of the Barbie Girl song. It receives money
from the sale of Aqua’s album anywhere in the world, including
those sold in the United States. (Ingestrom Dep. at 40-42.)
Universal Music International, Ltd. (“UMI’) is a British
holding company that has no rights to the song or to the album.
It acts to coordinate information among vaiious international,
affiliated companies. However, it does coordinate the release of
various musical products by its affiliates all over the world, in-
cluding in the United States. (Bowen Dep. at 18-23.) Universal
Music International then helps “coordinate touring activities
and promotional activities” of the released records, including
54a
Aqua in the United States and elsewhere around the world. (Jd.
at 31.) It also sent the Barbie *1127 Girl video to MCA in the
United States. (Jd. at 35.) UMI worked with Universal Den-
mark to market the Aqua album in the United States and rest of
the world. (/d. at 42-71.)
A. LIMITED JURISDICTION”
The Ninth Circuit has adopted “the following three-
pronged approach to analyzing limited jurisdiction: (1) The
nonresident defendant must do some transaction with the forum
or perform some act by which he purposefully avails himself of
the privilege of conducting activities in the forum, thereby in-
voking the benefits and protections of its laws. (2) The claim
must be one which arises out of or results from the defendant’s
forum-related activities. (3) Exercise of jurisdiction must be
reasonable.” Pacific Atlantic Trading Co. v. M/V Main Ex-
press, 758 F.2d 1325, 1327 (9th Cir. 1985).
The Ninth Circuit utilizes seven factors under the third
prong of the limited jurisdiction test to determine whether the
exercise of jurisdiction is reasonable. See Insurance Co. of
North America v. Marina Salina Cruz, 649 F.2d 1266, 1270
(9th Cir.1981). The following seven factors are relevant: “(A)
the extent of the purposeful interjection into the forum state;
(B) the burden on the defendant of defending in the forum; (C)
the extent of conflict with the sovereignty of defendant’s state;
(D) the forum state’s interest in adjudicating the dispute; (E)
the most efficient judicial resolution of the controversy; (F) the
importance of the forum to plaintiff's interest in convenient and
effective relief; and (G) the existence of an alternative forum.”
Id.
¥ Plaintiff also contends that the foreign defendants are subject to gen-
eral jurisdiction in the United States. Plaintiff has not shown that the foreign
defendants have had sufficiently continuous or systematic contacts to warrant
general jurisdiction.
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55a
1. Purposeful Availment
Defendants argue that the foreign defendants have no of-
fices, employees, property, or agents in the forum, and they
have not conducted any business in the forum. Defendants rely
on Asahi Metal Indus. Co. v. Superior Court, for the proposi-
tion that “the placement of a product into tie stream of com-
merce, without more, is not an act of the defendant purposely
directed toward the forum state.” 480 U.S. 102, 112, 107S. Ct.
1026, 94 L. Ed. 2d 92 (1987).
Defendants also rely on Rano v. Sipa Press, Inc., 987 F.2d
580 (9th Cir.1993). In Rano, the plaintiff-copyright licensor of
photographs sued a French licensee, asserting jurisdiction on
the basis that the licensee knew that plaintiff's photographs ul-
timately would be distributed in California due to the licensee’s
sub-licensing of the photographs to various magazines. Id. at
583-84. The Ninth Circuit rejected an argument that would
render all “foreign owners of art who sell their products to pub-
lications amenable to personal jurisdictign in every state in
which their art is eventually displayed.” Jd. However, this case
is distinguishable. The three foreign defendants did more than
merely have their music product end up in California by hap-
penstance. There were cross-licensing agreements between all
of the members of the Universal Group. A coordinated plan
existed among of all of the defendants to distribute the Barbie
Girl song around the world, including the United States.
For example, the artwork for the Barbie Girl recording was
delivered to MCA in Los Angles by Universal Denmark in con-
junction with the single’s release in the United States.
(Wheeler Dep. at 45.) Universal Denmark also has exported
single versions of the song to the United States. (/d. at 63-64;
Cacciatore Dep. at 105.)
UMI coordinated the release of Aqua’s album with all of
the Universal affiliates around the world, including the United
States. (Bowen Dep. at 16.) UMI helps determine which Uni-
versal record label, if any, should release a specific album into
56a
the United States. (/d. at 23.) As part of that process, UMI sent
promotional copies of the Barbie Girl video to MCA in the
United States. (/d. at 35.)
Universal Scandinavia operates under a sub-licensing
agreement in the United States. (Ingestrom Dep. at 39.) Thus,
under *1128 this sub-publishing agreement, Universal Scandi-
navia would receive royalties for each Aqua album sold in the
United States. (/d. at 41.) There would also be royalty pay-
ments for each time a song was played on the radio. (/d. at 41-
42.) MCA Scandinavia sent albums to the United States to
their affiliates in the United States for publicity in the hopes of
getting the Aqua album used in commercials or other commer-
cial ventures. (Jd. at 46-49.)
All of the above contacts show sufficient purposeful avail-
ment of the United States by the foreign defendants. The dis-
trict court cases upon which defendants rely are also distin-
guishable. In none of them do the
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