Ninth Circuit Shields Tarnishment of Barbie

A Danish Band, Aqua, released a song named “Barbie Girl,” the lyrics of which would likely have been forgotten, but now, thanks to this lawsuit, will be reprinted in F.3d.  The characters in the song are named Barbie and Ken and the chorus is:

I’m a Barbie Girl, in my Barbie world, Life in plastic, it’s fanstastic, you can brush my hair, undress me everywhere, imagination, life is your creation.

Anyway, Mattel sued lots of different companies associated with the record, lost at trial and appealed to the Ninth Circuit.  Mattel alleged trademark infringement, dilution and a brand new cause of action Mattel created under Section 44 of the Lanham Act.  That last cause was dismissed under the doctrine that you can’t plead non-existent causes of actions (See the decision at 10502.  Unlike law.com, I provide links to the actual decision so that you can see that I don’t make this stuff up).

First, the trademark infringement cause was dismissed.  The Ninth Circuit adopted the reasoning in the Second Circuit Fred and Ginger case, in that use in a title tends not to be perceived as designating origin.  The public doesn’t understand a movie named “Fred and Ginger” to be endorsed by Ginger Rogers, and it doesn’t perceive a pop song named “Barbie Girl” to be endorsed by Mattel.

More importantly. the dilution cause under Lanham Act 43(c) was dismissed.  There is a tension in the dilution statute because there is unlawful tarnishment (a strip club named ACME’S) and lawful tarnishment (ACME is evil because . . . ).  That’s why the defenses to dilution in Section 43(c)(4) are fair use (as in comparative advertising), noncommercial use and news reporting. 

Here, the only prong available to MCA as a defense would be non-commercial use.  However a song is clearly a commercial use (as would be any type of potentially dilutive use which required a 43(c)(4) defense).  So the Ninth Circuit turns to the First Amendment caselaw, and points out that the core notion of commercial speech is that it ‘does no more than propose a commercial tansaction.”  But this speech (use of the name in the title and song) is ‘expressly intertwined with expressive elements.’  That which is not purely commercial speech is noncommercial speech, and thuis protected under the First Amendment. Dilution claim dismissed.

See additional blurbs about the case below.




My Friends All Drive Porsches, I Must Make Amends

The Ninth Circuit in Mattel, noting that song titles tend not to be perceived as designating origin, finds that “. . . upon hearing Janis Joplin croon ‘Oh Lord, won’t you buy me a Mercedes-Benz?’ would we suspect that she and the carmaker had entered into a joint venture.”  Sure, baby boomers aware of her psychedelic Porsche would not, but those who knew that the posthumous copyright owner licensed the song to Mercedes might suspect it, as would those who purchased the song as a ringtone for their Nokia phone.


Ninth Circuit Issues Unconstitutional Advisory Opinion To Mattel and MCA

Until today I have never laughed out loud  while reading a Ninth Circuit Opinion.  This is the last paragraph of Mattel v. MCA (discussed above):

“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 invective most often hurled at accused infringers, namely “piracy.”  No one hearing this accusation understands intellectual proeprty 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 nonactionable “rhetorical hyperbole,” (cite omitted).  The parties are advised to chill.  (Emphasis mine.)


One More Way Blogs Attempt to Make (not Keep) the Media Honest

By pointing out that articles like this basically favorable Washington Post column about bloggers (and the underlying US News piece the Post basically blogged) should have had links to the blogs discussed(ok, the US News piece had one blink – that’s a link to a blog).


Kiner's Corner on Metsonline.net

I became aware of a dispute regarding metsonline.net through Dave via Ernie.  Apparently, Major League Baseball has apparently sent a demand letter to a guy who is running a Mets fan site.  Ernie asked me for my two cents.

Just to qualify myself as an expert, I should point out that I grew up in Flushing, NY and was 8 years old when Ron Swoboda made The Catch. 😉

First, as a general rule, while I enjoy a brawl as much as the next guy,  I hate to say who’s right and who’s wrong in an ongoing dispute because I know I don’t know everything I need to know in order to know who’s right and who’s wrong.

OK – in the portion of the demand letter posted on the site, MLB refers to the cyber-squatting clause of the Lanham Act.   When scoring this from home you have to remember that trademark infringement and cyber-squatting are two different causes of action under the Lanham Act with their own provisions, elements, penalities, etc.  The most important distinction (to me) is that cyber-squatting is an intentional tort and infringment is that scary animal – a strict liability tort.  A lot of media reporting of domain name disputes confuse the equities and arguments of one analysis with the other.

In the cyber-squatting analysis here, at least two points seem relevant to me.  The first is that there is a well-developed fan site at this URL.  If the registrant can document that he had intended a fan site from the beginning, then that will be a very relevant fact.  A bona fide fan site will likely be deemed to be a good faith reason for registering the name.  It is also relevant that this is 2002, not 1994.  Registering metsoline.net will not keep the Mets off the web.  But again, I don’t know enough to draw conclusions.

As for trademark infringement – remember, intent is not an element.  It is a mixed question of fact and law as to whether naming the site METSONLINE.NET is a confusing use.  It is or it isn’t. The fair use doctrine is too complex to get into but I will over-simplify it here to state: The site operator can reproduce the METS trademarks to truthfully describe the nature of his service, but not to suggest that the site is endorsed by the Mets, nor may he reproduce the METS trademarks more than what is needed to truthfully describe his service.   

As an aside, I am not much of a believer in the efficacy of disclaimers.  A better disclaimer would be re-naming the site “Bryan Hoch’s Mets Online Website.”

Finally, as a practice pointer for folk with clients in the sports and entertainment field, you have to be really careful how you deal with fans, because you never want to see your demand letters posted on a website. It would seem that getting the fan sites into a web ring (among other proactive behavior for encouraging fan input) could circumvent a lot of this agita.



Can't you just make up a new name, Mr. Disney?

If owners of the world’s 10 most valuable brands approached trademark lawyers today to clear those marks, doctrinaire lawyers might advise them to avoid over half of them.

Interbrand and Businessweek have come out with their annual discussion of the world’s most valuable brands.  One canon of trademark law is that there is a scale of registrability.  Arbitrary, coined and suggestive terms  are inherently registrable.  Descriptive terms, including geographically descriptive terms are registrable only upon proof of acquired distinctiveness, as are comon surnames.  Trademark lawyers (and brand consultants) advise clients to choose coined or arbitrary terms (while marketing folk advise co-opting the generic term ;-)), and give EXXON, KODAK and XEROX as exemplars of the form.  I thought it would be a worthwhile exercise to look at the ten most valuable brands in the world and analyze them on the registrability scale.  At least half of the marks are not “inherently registrable” and likely would require evidence of acquired distinctiveness.

1.  COCA-COLA – When derived, this was a suggestive term, alluding to the cocaine.  COCA-COLA and COKE have functioned as arbitrary marks for the last century.

2. MICROSOFT – Suggestive, referring to software for microcomputers.  WINDOWS was intiially descriptive (and those involved in the LINDOWS case would argue, still is).

3.  IBM – Acronyms for descriptive terms tend to be viewed as descriptive as well.  International Business Machines describes, er . .

4. GE – Same as above, for general electric products.

5.  INTEL – Intel is not a dictionary word, although those of us employed by spy agencies use it as a noun.  Strictly speaking, this is a suggestive mark for intelligent products.

6.  NOKIA – I cannot find a source for the meaning of NOKIA, although the founder (not named Nokia) did name the company that when it started as a logging company in 1865.  It is rumored that Nokia received favorable treatment in the U.S. market at first because people assumed that NOKIA was Japanese and therefore the product must be good.  It certainly functioned as an arbitrary mark in the U.S. at least.

UPDATE: Alexander Svennson of Icannchannel.de confirms that Nokia was the name of the logging town where the domaony was founded.  When applying today, Nokia would have to represent that the town was not primarily known for logging.

7.  DISNEY – Founder’s surname.  The Examiner would do a phone book test to determine if it were a common surname and reject it if it were.

8.  McDONALDS – Founders’ surname (not really – founder sold these guys equipment, then bought them out).   Definitely a common surname.

9.  MARLBORO – I am assuming that this is a geographically descriptive mark (as there is a Marlboro County in tobacco country back East).  Philip Morris would have o show that it was the only tobacco producer in that county.  Marlboro country, out west, was invented to re-position the brand.  You can read more about that in “The Handbook of Brand Management” by David Arnold.

10.  MERCEDES – Mercedes is the name of the daughter of an early Daimler Benz enthusiast, and thus was an arbitrary mark.  It would still run into common surname problem.

I don’t know what conclusions to draw from this, other than to note that 5 and possibly 6 of the world’s most valuable brands would probably receive preliminary refusals to register from the US trademark office. So trademark lawyers are needed, after all.



Coke Is It

CoreBrand is a branding consultancy.  This is its list of the best-known corporate brands.  Coca-Cola was number one.  I was not able to correctly guess the runner-up.


Text of Peer to Peer Spoofing Bill Here

The text of the bill authorizing spoofing and other activities designed to prevent the distribution of unauthorized works on a peer to peer network is available on the Politech site here.  Interesting – the copyright owner has to notify the Department of Justice 7 days in advance of taking action.


More on Spoofing P2P Networks

Further to my July 11 blurb on spoofing,  the practice of intentionally uploading defective files onto peer to peer networks, with the purpose of discouraging use of those networks, this siliconvalley.internet.com article reports that a bill was ‘sent’ to Congress today legalizing that and other practices.


Bad Faith Not Established Against Evil Lord of Destruction

SKELETOR, evil lord of destruction, battles He-Man to be a Master of the Universe.  Mattel likely coined the name twenty years ago.  It’s a fair inference that when a third party registered skeletor.com, he was aware of Mattel’s rights in the name.  This UDRP decision for registrant shows however, that complainant’s lawyer has to do more than rely on inference.