# Petition for Writ of Certiorari — Mattel, Inc. v. MCA Records, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386015_0622%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 2003 - **Citation:** 537 U.S. 1171 ## Text ) 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 ane — eee OO ener “ 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... HN 5. csssoccosvonsinsvevseecoanoucsancoceococcecceeeeeccc 2 CONSTITUTIONAL AND STATUTORY PROVI. IOV OLIV ED cscs csensesasscssnsnsvsnsssssccsscscosoecccoece 2 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. 4 « . 4 ? & ¢ Se ESPORTS PURGE SE KOOP TU ha ARTO ERI ARN EINE Sa a Tb 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. ARR PTT WRN ATA OR ONE — LRN LN Ry ERI RRG BS YN Te ie ti oodles ieee a ine Pete eanet oan Cities enmtnniine eeehindee ee 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). Ke € =: £ Pa 2 = F = x € 3 % E: = 3 os Rae ARS TP RM MS AERIS ID NES eS AAS ESERIES 3 on al aoe tae eh ara a Sa ae ea ak dae ee TREES BINDER Mn ES aT talent 29a 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). ‘ SS AEROS I BOLLE PE SRE ALPE LOE TIAA St INH EI MENS <3 LPR ELIOT LOPE PRG Regt YO G! ps ip EGS ORE pe eae um ; + ps acre’ EI SL, LALA GL ROLL LOLI LEE, EOP LIES AA sd dete Laat deetin LE LOUN ALE AEE LOND Yet ie ACERT MOL A OI SEE TR ELIOT SEE SOLES NRTA L A LIEN A I EASE OBE ONE, RIE, 3la (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. IEP IA! Nect INMEI TTTOIS L IPL POI RLT AOI z 5 j i %- 2 § $ ‘ : s z ; yy i $ ¥ F r 33a 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 be [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386015_0622%3A1. Public record. Not legal advice.