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.