The United States Supreme Court recently let stand a Ninth Circuit decision holding that the First Amendment trumps trademark law when an artistic work uses a trademark to poke fun at the product it identifies. Mattel, Inc. v. MCA Records, Inc. 2003 U.S. LEXIS 920 (Jan. 27, 2003).
The decision [ Mattel, Inc. v. MCA Records, Inc. 2002 U.S. App. LEXIS 14821 (9th Cir. July 24, 2002) ] concerned the song "Barbie Girl" by Aqua, a Danish Band. In the song, vocalists impersonating BARBIE and KEN dolls sing lyrics lampooning Mattel's BARBIE doll and the questionable values the band believes the doll symbolizes.
Mattel, Inc., the owner of the BARBIE trademark, sued MCA Records and others involved in the production and promotion of the song for trademark infringement and dilution, among other causes of action. The trial court granted summary judgement to MCA on the trademark infringement count, holding that use of the BARBIE trademark did not constitute infringement, and the Ninth Circuit affirmed, holding that titles of artistic work violate the Lanham Act only if "the title has no artistic relevance to the underlying work whatsoever, of if it has some artistic relevance, the title explicitly misleads as to the source or the content of the work." In this case, use of the BARBIE trademark in the song title had clear relevance to the underlying work and it did not mislead the listener as to Mattel's involvement in the work.
The Ninth Circuit also affirmed the district court's grant of summary judgment of no dilution, finding that use of the BARBIE trademark fell into the Lanham Act's exclusion of "non commercial uses" from liability for dilution. Although use of the BARBIE trademark in the song title constituted commercial use of the trademark in commerce, thereby bringing it within scope of the Lanham Act, such use was noncommercial in that it was constitutionally protected speech.