296 F.3d 894 (9th Cir. 2002), 98-56577, Mattel, Inc. v. MCA Records, Inc.

Docket Nº:98-56577
Citation:296 F.3d 894
Party Name:Mattel, Inc. v. MCA Records, Inc.
Case Date:July 24, 2002
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

Page 894

296 F.3d 894 (9th Cir. 2002)

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 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.

No. 98-56577.

United States Court of Appeals, Ninth Circuit

July 24, 2002

Argued and Submitted Dec 5, 2000.

Page 895

[Copyrighted Material Omitted]

Page 896

[Copyrighted Material Omitted]

Page 897

[Copyrighted Material Omitted]

Page 898

Adrian Mary Pruetz, Quinn Emanuel Urquhart Oliver & Hedges, LLP, Los Angeles, CA, argued for the plaintiff-appellant.

Russell J. Frackman, George M. Borkowski, Jeffrey D. Goldman, Brent Rabowsky, Mitchell Silberberg & Knupp LLP, Los Angeles, CA, argued for the defendants-appellees.

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

Before D.W. NELSON, BRUNETTI and KOZINSKI, Circuit Judges.

OPINION

KOZINSKI, Circuit Judge:

If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong.

I

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.

Page 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 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.

II

A. 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 into 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 Aquarium 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. See Panavision Int'l., L.P. v. Toeppen, 141 F.3d 1316, 1321 (9th Cir. 1998). Mattel's trademark claims would not have arisen "but for" the conduct foreign defendants purposefully directed toward California, and jurisdiction over the foreign defendants, who are represented by the same counsel and closely associated with the domestic defendants, is reasonable. See id. at 1321-22. The district court did not err in asserting specific personal jurisdiction over the foreign defendants.

B. Sales of the Aquarium album worldwide had a sufficient effect on American foreign commerce, and Mattel suffered monetary injury in the United States from those sales. See Ocean Garden, Inc. v. Marktrade Co., 953 F.2d 500, 503 (9th Cir. 1991). Moreover, Mattel's claim is more closely tied to interests of American foreign commerce than it is to the commercial interests of other nations: Mattel's principal place of business is in California, the foreign defendants are closely related to the domestic defendants, and Mattel

Page 900

sought relief only for defendants' sales in the United States. See Star-Kist Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393, 1395-96 (9th Cir. 1985). The district court properly exercised extraterritorial jurisdiction under the Lanham Act.

III

A. 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. See New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 305 (9th Cir. 1992). 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." Id. at 305 n. 2. 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." Trademarks Unplugged, 68 N.Y.U. L.Rev. 960, 973 (1993).

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"? See Bayer Co. v. United Drug Co., 272 F. 505, 510 (S.D.N.Y. 1921). 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, see AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), 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." L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir. 1987). 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. See Yankee Publ'g, Inc. v. News Am. Publ'g, Inc., 809 F.Supp. 267, 276 (S.D.N.Y.1992) ("[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 source—identifying function. See Anti-Monopoly, Inc. v. Gen. Mills Fun Group, 611 F.2d 296, 301 (9th Cir. 1979) ("It is the source-denoting function

Page 901

which trademark laws protect, and nothing more.").

B. 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...

To continue reading

FREE SIGN UP