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Mattel, Inc. v. MCA Records

Mattel, Inc. v. MCA Records

United States Court of Appeals for the Ninth Circuit

December 5, 2000, Argued and Submitted, Pasadena, California ; July 24, 2002, Filed

No. 98-56453, No. 98-56577

Opinion

 [***1717]   [*898]  KOZINSKI, Circuit Judge:

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,  [**2]  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.

 [*899]  With fame often comes unwanted attention. Aqua is a Danish band that has, as yet, only dreamed of attaining Barbie-like 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 [**3]  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.

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296 F.3d 894 *; 2002 U.S. App. LEXIS 14821 **; 63 U.S.P.Q.2D (BNA) 1715 ***; 2002 Cal. Daily Op. Service 6617; 2002 Daily Journal DAR 8297

MATTEL, INC., a Delaware corporation, Plaintiff-counter-defendant-Appellant, v. MCA RECORDS, INC., a California corporation, Defendant-counter-claimant-Appellee, and UNIVERSAL MUSIC INTERNATIONAL LTD., a British company; UNIVERSAL MUSIC A/S, a Danish business entity; MCA MUSIC SCANDINAVIA AB, a Swedish business entity; UNIVERSAL MUSIC & VIDEO DISTRIBUTION, INC., a New York corporation; DOES 1 through. through 20, Defendants-Appellees. MATTEL, INC., a Delaware corporation, Plaintiff-counter-defendant-Appellee, v. UNIVERSAL MUSIC INTERNATIONAL LTD., a British company; UNIVERSAL MUSIC A/S, a Danish business entity; MCA MUSIC SCANDINAVIA AB, a Swedish business entity; UNIVERSAL MUSIC & VIDEO DISTRIBUTION, INC., a New York corporation; DOES 1 through 20, Defendants-Appellants, and MCA RECORDS, INC., a California corporation, Defendant-counter-claimant-Appellant.

Subsequent History:  [**1]  Writ of certiorari denied: Mattel, Inc. v. MCA Records, Inc., 2003 U.S. LEXIS 920 (U.S. Jan. 27, 2003).

Prior History: Appeal from the United States District Court for the Central District of California. D.C. No. CV-97-06791-WMB-Mcx. D.C. No. CV-97-06791-WMB. William Matthew Byrne, Jr., Senior District Judge, Presiding.

 Mattel, Inc. v. MCA Records, Inc., 28 F. Supp. 2d 1120; 1998 U.S. Dist. LEXIS 20943.

Disposition: District court's grant of summary judgment in favor of defendants affirmed.

CORE TERMS

trademark, dilution, song, Girl, unfair competition, consumers, exemption, Convention, noncommercial, treaty, Lanham Act, Music, ooh, famous, injunction, marks, foreign national, district court, infringement, provisions, artistic, summary judgment, diminishes, products, sponsors, rights, doll, commercial speech, commerce, protects

Trademark Law, Consumer Confusion, Circuit Court Factors, 9th Circuit Court, Likelihood of Confusion, General Overview, Subject Matter of Trademarks, Labels, Packaging & Trade Dress, Business & Corporate Compliance, Causes of Action Involving Trademarks, Infringement Actions, Determinations, Similarity of Marks, Appearance, Meaning & Sound, Factors for Determining Confusion, Commercial Impressions, Antitrust & Trade Law, Intellectual Property, Ownership & Transfer of Rights, US Trademark Trial & Appeal Board Proceedings, Oppositions, Regulated Practices, Constitutional Law, Freedom of Speech, Commercial Speech, Confusion Among Noncompeting Products, Parodies & Satires, Fundamental Freedoms, Scope, Defenses, Artistic Relevance, Terms Requiring Secondary Meaning, Titles of Artistic Works, Dilution of Famous Marks, Unfair Competition, Federal Unfair Competition Law, Trade Dress Protection, Causes of Action, Special Marks, Trade Names, Federal Trademark Dilution Act, Eligibility for Trademark Protection, Distinctiveness, Remedies, Equitable Relief, Damages, Governments, Legislation, Interpretation, International Trade Law, Trade Agreements, Intellectual Property Provisions, Lanham Act, Foreign & International Protection, International Treaties, Dispute Resolution, International Commercial Arbitration, Arbitration, International Law