Opinion by Judge Kozinski
MATTEL, INC. v. MCA RECORDS, INC.
If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong.
Barbie was born in Germany in the 1950s as an adult collector’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 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 beyond.
With Barbie, Mattel created not just a toy but a cultural icon.
With fame often comes unwanted attention. Aqua is a Danish band that has, as yet, only dreamed
of attaining Barbielike status. In 1997, Aqua produced the song Barbie Girl on the album
Aquarium. In the song, one bandmember impersonates 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 challenged the district court’s jurisdiction under the Lanham Act and its
personal jurisdiction over the foreign defendants, Universal Music International Ltd., Universal
Music A/S and MCA Music Scandinavia AB (hereinafter “foreign defendants”); MCA also
brought a defamation claim against Mattel for statements 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 motion 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 Mattel’s
affiliation with Barbie Girl or dilute the Barbie mark; and 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.
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. It’s the owner’s way of preventing 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.” 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.” The problem arises when trademarks transcend their identifying 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?” Trademarks often fill in
gaps in our vocabulary and add a contemporary flavor to our expressions. Once imbued with
such expressive value, the trademark becomes a word in our language and assumes a role outside
the bounds of trademark law.
Our likelihood-of-confusion test 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 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 expression.
The First Amendment may offer little protection for a competitor who labels its commercial
good with a confusingly similar mark, but “[t]rademark rights do not entitle the owner to quash
an unauthorized use of the mark by another who is communicating ideas or expressing points of
view.” Were we to ignore the expressive value that some marks assume, trademark rights would
grow to encroach upon the zone protected by the First Amendment. (“[W]hen unauthorized use
of another’s mark is part of a communicative 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 sourceidentifying function. (“It is the source-denoting function which
trademark laws protect, and nothing more.”).
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 describe 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 consumers 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 lyrics
confirm this: The female singer, who calls herself Barbie, is “a Barbie girl, in [her] Barbie
world.” She tells her male counterpart (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. The female
singer explains, “I’m a blond bimbo girl, in a fantasy world / Dress me up, make it tight, I’m
The song does not rely on the Barbie mark to poke fun at another subject but targets Barbie
herself. 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. Id. 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 (a parodist whose expressive 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).
A title is designed to catch the eye and to promote the value of the underlying work. Consumers
expect a title to communicate a message about the book or movie, but they do not expect it to
identify the publisher or producer. (A “title . . . identifies a specific literary work, . . . and is not
associated in the public mind with the . . . manufacturer.”). 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