Trademarks

• Author: International Law Group

In 1997, the Danish music group "Aqua" produced a song about the Barbie doll. The lyrics of the song "Barbie Girl" include, for example, "I'm a Barbie girl, in my Barbie world, Life in plastic, it's fantastic ... Come on Barbie, let's go party! ... I'm a blonde bimbo girl, in a fantasy world, Dress me up, make it tight, I'm your dolly ..."

Mattel, Inc., owns the trademark to "Barbie" and sued the foreign and U.S. music companies behind the group Aqua for trademark infringement and dilution in a California district court. The music companies counter-claimed for defamation. The district court granted summary judgment in favor of the music companies as to the trademark and dilution claims, and summary judgment in favor of Mattel on the defamation claim. Both sides appealed.

The U.S. Court of Appeals for the Ninth Circuit affirms both grants of summary judgment. The Court concludes that Aqua's use of "Barbie" was not a trademark infringement. The song title was relevant to the underlying work, and did not imply that Mattel had created it. Because the song is not purely "commercial" speech, the First Amendment protects it. The use of the "Barbie" trademark fell within the non-commercial use exemption of the Federal Trademark Dilution Act. The Paris Convention for the Protection of Industrial Property (March 20, 1883, as revised at Stockholm, July 14, 1967, art. 10 bis, 21 U.S.T. 1583, 1648, 828 U.N.T.S. 305, 337), only provides for "national treatment" of foreign parties and does not create a substantive law of unfair competition.

The Court first confirms that there is jurisdiction over the foreign music companies in this case. "All three foreign defendants are affiliated members of Universal Music Group and have an active relationship with each other and with domestic members of the Group. Defendants entered cross-licensing agreements and developed a coordinated plan to distribute the Barbie Girl song in the United States (including California), and sent promotional copies of the Barbie Girl single and the [music] album to the United States (including California)."

"This conduct was expressly aimed at, and allegedly caused harm in, California, Mattel's principal place of business. [Cite] Mattel's trademark claims would not have arisen 'but for' the conduct foreign defendants purposefully directed towards California, and jurisdiction over the foreign defendants, who are represented by the same counsel and closely associated with the domestic...