In Mattel Inc. v. MCA Records, the United States Court of Appeals for the Ninth Circuit upheld the district court’s decision granting MCA Records Inc.’s (“MCA”) Motions for Summary Judgment on the grounds that: (1) MCA’s use of Mattel’s Barbie trademark in a song title did not constitute trademark infringement; and (2) MCA’s use of “Barbie” was “non-commercial,” constitutionally protected speech and, therefore, exempt from the Federal Trademark Dilution Act (FTDA).

At issue was a Top-40 song entitled “Barbie Girl,” recorded by the band Aqua and produced and marketed by MCA. The song features singers impersonating Mattel’s famous fashion dolls, Barbie and Ken, and pokes fun at Barbie and the values that Aqua claims she represents. The lyrics are on-line.

With respect to Mattel’s trademark infringement claim, the court distinguished the unauthorized use of a mark as a source identifier from expressive use protected by the First Amendment. Specifically, the court noted that a trademark owner does not have the right to control public discourse when the public imbues the mark with a meaning which goes beyond its source-identifying function.

The court characterized MCA’s use of Mattel's Barbie trademark as a parody poking fun at Barbie, distinguishable from use of the mark merely to get attention. The court then adopted the Second Circuit’s two-pronged test, namely, that use of a mark in a title does not violate the Lanham Act unless that title has no artistic relevance to the underlying work whatsoever, or, if it has some relevance, unless the title explicitly misleads as to the source or content of the work. This test is based on the idea that consumers expect a title to communicate a message about the underlying work, rather than identify the source of the work. Here, the court concluded that while MCA clearly used Mattel’s “Barbie” trademark, such use did not constitute an infringement of that mark, since use of “Barbie”: (1) is clearly relevant to the work itself, namely, a song about Barbie and the values she represents; and (2) does not explicitly or otherwise mislead consumers by suggesting that the song was produced by Mattel.

Mattel also claimed that MCA’s song diluted its Barbie mark by diminishing the mark’s capacity to distinguish Mattel products and tarnishing the mark because the song was inappropriate for young girls. Under the FTDA, potentially dilutive use of a mark is permitted (1) in comparative advertising; (2) in news reporting and commentary; and (3) when use of the mark is “noncommercial.” “Noncommercial use” refers to uses constitutionally protected under the First Amendment, such as parody, satire, and editorial expression that are not part of a commercial transaction.

The court found that, while MCA's use of “Barbie” was dilutive in that consumers hearing the mark may now think of both the doll and Aqua's song, such use, nevertheless, falls within the noncommercial use exemption of the FDTA. Since “Barbie Girl” is a parody, which lampoons the Barbie image and the cultural values Barbie is thought to represent, the song is not “purely commercial” speech and is, therefore, entitled to full First Amendment protection.