Happy Birthday Barbie! Things I Learned From Barbie . . .

By Dave Rein

Barbie, the iconic doll who lines the shelves of big box and mom-and-pop toy stores everywhere, celebrates her 50th birthday today.  I was more of a G.I. Joe kid growing up, but I'll be the first to admit that Barbie has done more for teaching us the ins and outs of trademark and copyright law than tough Joe ever did.

While others have used her birthday to look back at her last 50 years to ponder whether she has been a good or bad influence on generations of kids, her power in the fashion world, or the enormous amount of money collectors will pay for her, I was curious as to how she has shaped our view of intellectual property.  Frankly, it is somewhat surreal that when I stand before a judge or jury to argue a point, some of my arguments have been shaped by an unusually shapely plastic doll.

There are a staggering number of cases involving Barbie or cases that refer to Barbie in courts' opinions, but the most obvious area in which Barbie's charms have had the strongest influence is on our notion of parody for both trademark and copyright law. 

Perhaps the most well-known of these cases involved the song "Barbie Girl" and probably the only song by the group, Aqua, to hit the charts in the U.S.  YouTube, probably at MCA Records' request, no longer allows users to embed video of "Barbie Girl", but you can still watch it here.

The maker of Barbie, Mattel, was not terribly happy with a song that makes fun of Barbie and sued for trademark infringement.  The Court of Appeals noted that Aqua would likely lose if it used Barbie to mock others, but because the song makes fun of Barbie herself and the values that the group claims she represents, the First Amendment compels a different result. 

The same result occurred when Mattel challenged a photographer, Tom Forsythe, who displayed nude Barbies in not so flattering poses and situations.  His defense to a lawsuit for copyright and trademark infringement was successful because he was able to show that the use of Barbie in the photographs was fair use to parody and comment on his perception of Barbie's influence.  

Don't get the impression that Barbie has not done well in court.  Her $100 million win against Bratz  last year and a long string of other victories show that she is a formidable opponent in the courtroom. 

But, let's not dwell on the number of notches Barbie has on her stylish belt.  Instead, let's wish her a hearty "Happy Birthday!" and look forward to her future exploits in the courtroom over the next 50 years.

 

Carol Burnett and Fox TV: Who's Fair and Balanced Now?

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The rulings contained within District Judge Dean Pregerson's opinion dismissing Carol Burnett's lawsuit against Twentieth Century Fox could have been predicted the moment we heard about the case. If ever there were a textbook example of the "fair use" doctrine in copyright law and the "parody" exception in trademark and dilution law, this was it.

Burnett had sued over a short clip from Fox's animated television show, Family Guy. In the scene, Griffin family patriarch Peter Griffin and his pals visit a porn shop. Upon entering the store, Peter remarks that it is cleaner than he expected. One of his friends explains that "Carol Burnett works part time as a janitor."  The scene shifts to an animated figure resembling the Charwoman character from the Carol Burnett Show mopping the floor next to bin of life-size blow-up dolls and  a rack of XXX movies.  Judge Pregerson explains:

"As the 'Charwoman' mops, a slightly altered version of Carol's Theme from The Carol Burnett Show is playing.  The scene switches back to Peter and his friends.  One of the friends remarks, 'You know, when she tugged her ear at the end of that show, she was really saying goodnight to her mom.'  Another friend responds, 'I wonder what she tugged to say goodnight to her dad,' finishing with a comic's explanation, 'Oh!'"

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Porn Names, Part II

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Geoff's musings over porn star names aroused, er, got me thinking about a related  "fair use" issue, namely, the porn industry's unauthorized use of slightly altered titles of famous motion pictures.  Such as On Golden Blonde.  Breakfast on Tiffany. Inspect Her Gadget.  And any on the Top Ten list compiled by BBspot, which begins, at #10, with Forrest Hump.

Each use is an obvious commercial attempt to cash in on the widespread awareness and recognition of the original title.  Each use is also an obvious commercial attempt to capture the prospective buyer's attention, to stand out in a crowd of titles.

But are these uses "fair uses"?

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We Are All Dilutional: Fair Use and the Dilution Act

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One way to distinguish trademark infringement from trademark dilution is to realize that we are all dilutional. Virtually every day. At home, at work, and at play. Indeed, the life would be sucked out of our popular culture -- and our daily discourse -- without our First Amendment right to dilute like crazy.

The bedrock of trademark law is protection of the public. We give trademark owners enforcement powers to help protect consumers from being misled by infringers.  But the bedrock of trademark dilution law is private property. Under dilution laws, we give trademark owners enforcement powers to help them protect the distinctiveness of their property from being eroded by others. Consumer confusion is not a concern in dilution cases.

This significant move from protecting consumers to protecting property rights, especially when famous marks are involved, creates significant First Amendment concerns—so much so that Congress created a safe harbor for “non-commercial use” of a famous mark, which courts have interpreted to include parody, satire and editorial commentary. Mattel, Inc. v. MCA Records, Inc. 296 F. 3d 894 (9th Cir. 2002).

But that safe harbor merely allows companies to engage in what the rest of do all the time, which is use famous trademarks in noncommercial ways that may blur or tarnish those marks. Who hasn’t used the Walt Disney Company’s most precious trademark derisively to label an incompetent organization “a Mickey Mouse operation”? A Type A boss and his lackey get labeled, behind their backs, as “Batman and Robin.” That too perfect couple are, of course, “Ken and Barbie.”

Indeed, as Judge Kozinski explained in Mattel, supra, 296 F.3d at 900, "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? . . . 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 work in our language and assumes a role outside the bounds of trademark law."

From “Wonder Bread” to “Wonder Woman,” we use famous marks in quintessentially dilutional ways, i.e., to describe goods and services unrelated to the marks. Whether it’s Irving Berlin originally, or Gene Wilder and Peter Boyle later in Young Frankenstein, the hotel's famous mark is used in the song “Putting on the Ritz.” More recently, two famous DC Comics marks served the rock group 3 Doors Down, whose hit song "Kryptonite" asks “will you still call me Superman?”

So feel free to look for Mr. Goodbar® or point out the Stealth® political candidate or get misty over  that Hallmark Cards® moment or mock the McMansion (with the Lawyer Foyer) going up in the next suburb. And rest assured that the Federal Trademark Dilution Act allows you snuggle up with that special someone known to you as Miss America® or Mr. Universe®.  But please, please avoid my high school basketball coach's favorite joke, which was to tell us that he was wearing his Burger King pants.  Why Burger King? Because, he explained, they were The Home of the Big Whopper®.

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