Justices Refuse to Hear Mattel's 'Barbie Girl' Lament

Justices Refuse to Hear Mattel’s ‘Barbie Girl’ Lament

By David G. Savage

Jan. 28, 2003 12 AM PT

Times Staff Writer

WASHINGTON — Will the next addition to the Mattel Inc. doll family be “Thick-Skinned Barbie?”

The Supreme Court on Monday declined to protect Mattel’s iconic toy from the insulting lyrics of the 1997 song “Barbie Girl.”

The tune, by Danish group Aqua, derides the anatomically impossible doll -- who has a Fabulous Fountain Pool, a Grand Hotel and a Ferrari 355 Spyder -- as a “blond bimbo” whose “life in plastic” is “fantastic.”

Mattel said the song tarnished and diluted the value of its famous brand-name doll. The El Segundo-based toy maker sued MCA Records Inc., a unit of Vivendi Universal, and other record labels that produced and distributed the Aqua album that included “Barbie Girl.”

The Supreme Court’s no-comment dismissal brings Mattel’s lawsuit to a close. But the name-calling persisted outside the courthouse.

In a war of angry news releases, Mattel and MCA executives hurled insults such as “bank robber” and “theft” to describe each other’s actions.

The animosity prompted U.S. 9th Circuit Court of Appeals Judge Alex Kozinski to close his opinion in the case with the following admonition: “The parties are advised to chill.”

Mattel executives said they were prompted to bring the lawsuit because the “Barbie Girl” song was marketed to young girls using bright pink lettering similar to the pink lettering used to sell the doll. That, they said, could fool consumers into thinking the products were related.

But a federal judge in Los Angeles threw out the suit before trial, and the 9th Circuit did the same in July.

“Obviously we are very disappointed,” Jules Andres, a Mattel spokeswoman, said Monday. “We think the standard set by the 9th Circuit will make it very difficult for companies to protect their trademarks.”

MCA said it was happy to see the case end.

“We always contended that the suit involved creative expression and free speech,” spokeswoman Lillian Matulic said.

Standard trademark law forbids companies from using another’s brand name or symbol to sell their products. Famous brands received extra protection in 1996, when Congress passed the Federal Trademark Dilution Act. That made it illegal to use a famous brand in a way that tarnishes or blurs its value.

The Supreme Court has yet to interpret the Trademark Dilution Act, although a ruling is pending. Limited Brands Inc.’s Victoria’s Secret unit, the lingerie retailer, used the law to sue the owner of a Kentucky store that sells adult sex toys and calls itself Victor’s Little Secret.

The justices will decide whether a firm with a famous brand must show it has been harmed before it can win a court order against an upstart rival.

In the Barbie case, Kozinski said the battle boiled down to a showdown between Mattel’s desire to protect its trademark and the record maker’s free-speech right to parody a cult figure.

“If this were a sci-fi melodrama, it might be called Speech Zilla meets Trademark Kong,” Kozinski wrote last year. “With Barbie, Mattel created not just a toy, but a cultural icon. With fame often comes unwanted attention.”

“Barbie Girl” has sold 1.4 million copies in the U.S., according to Mattel’s lawyers. The song derides the doll as a “blond bimbo girl, in a fantasy world.”

Writing for the three-judge panel of the 9th Circuit, Kozinski concluded that the Trademark Dilution Act could not be extended to punish a parody. “The song lampoons the Barbie image and comments humorously on the cultural values Aqua claims she represents,” he said.

In October, Mattel’s lawyers appealed to the Supreme Court. They argued that the 9th Circuit’s approach cut a large loophole in the trademark laws that would allow upstarts to piggyback on famous brands, so long as they made fun of them.

MCA defended the song as “social commentary.”

Times staff writer Karen Kaplan in Los Angeles contributing to this report.

*(BEGIN TEXT OF INFOBOX)

Is it social commentary?

Here are some of the lyrics of the song “Barbie Girl” released by Danish group Aqua in 1997:

Hi Barbie

Hi Ken

Do you wanna go for a ride?

Sure Ken

Jump in . . .

I’m a barbie girl, in a barbie world

Life in plastic, it’s fantastic.