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Mattel, Inc. v. MCA Records - 296 F.3d 894 (9th Cir. 2002)


Under trademark law, literary titles do not violate the Lanham Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.


The toy company owned the trademark to and was the maker of "Barbie," a doll that had become a cultural icon. A Danish rock and roll band had a song, "Barbie Girl," that parodied the doll. The toy company brought the instant action against the music companies who produced, marketed, and sold the song. The music companies consisted of foreign members of the same parent music corporation as well as domestic members of the music corporation. The United States District Court for the Central District of California granted summary judgment in favor of the music companies regarding the trademark infringement and dilution claims and granted summary judgment in favor of the toy company on the defamation claim. Both sides appealed.


Was the music companies’ use of the doll an infringement of the toy company’s trademark?




The court of appeals held that the music companies' use of the doll was not an infringement of the toy company's trademark; although the song's title was relevant to the underlying work, the song did not suggest that it was created by the toy company. According to the appellate court, the song was not purely commercial speech and was fully protected by the First Amendment. The use of the toy company's doll mark in the song fell within the noncommercial use exemption to the Federal Trademark Dilution Act. The Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, as revised at Stockholm, July 14, 1967, art.10bis, 21 U.S.T. 1583, 1648, 828 U.N.T.S. 305, 337, only provided for national treatment and did not define the substantive law of unfair competition.

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