Barbie loses last chance to fight parody song

The US Supreme Court has denied Mattel Inc a petition for writ of certiorari, thus rejecting the last chance for Mattel to appeal the decision of the Ninth Circuit in Mattel Inc v MCA Records Inc. The Ninth Circuit ruled that use of 'Barbie Girl' as the title and subject of a pop song did not infringe or dilute the registered trademark BARBIE for fashion dolls.

In 1997 record company MCA released in the United States the song by Danish pop group Aqua. The song lampoons the Barbie image and comments humorously on the cultural values Aqua claims the doll represents. Dismayed by the success of the song, Mattel sued MCA for trademark infringement and dilution under the Lanham Act and Federal Trademark Dilution Act (FTDA).

The US District Court for the Central District of California ruled that the title and song do not explicitly mislead anyone about the source or sponsorship of the song. Even though Mattel produced survey evidence that substantial confusion existed among consumers, the district court found that the 'likelihood of confusion' test sometimes does not give adequate protection to free expression. In the case at hand, the use of 'Barbie' is clearly relevant to the song and the values Aqua claims the doll represents.

On the issue of dilution, the district court ruled that MCA's use is fully protected by the FTDA exemption for the non-commercial use of a parody. The court found that even though BARBIE is both a distinctive trademark and famous under the FTDA in view of the doll's 50 years of commercial success, MCA's use does not tarnish Barbie's image since the lyrics are not obscene. Therefore, the use does not dilute the BARBIE mark.

The Court of Appeal for the Ninth Circuit upheld the decision.

By denying the petition for writ of certiorari, the Supreme Court tacitly appears to agree with the Ninth Circuit, whose ruling ended with the following sentence: "The parties are advised to chill."

Brian E Banner, Banner & Witcoff Ltd, Washington DC

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