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The U.S. Court of Appeals for the Ninth Circuit had to consider the title of the song and its content, as well as comments made to the press by Mattel and MCA Records, Aqua's record company, during the litigation. When weighing up Mattel's claim of infringement of its Barbie trademark, Judge Alex Kozinski compared the case with Andy Warhol's "Campbell's Soup" works as well as the content of a well-known Janis Joplin song:
If we see a painting titled "Campbell's Chicken Noodle Soup," we're unlikely to believe that Campbell's has branched into the art business. Nor, upon hearing Janis Joplin croon, "Oh Lord, won't you buy me a Mercedes-Benz?" would we suspect that she and the carmaker had entered into a joint venture.
Judge Kozinski referred to the case of Rogers v. Grimald in which actress Ginger Rogers filed a lawsuit against a film entitled Ginger and Fred about two Italian cabaret performers who made a living by imitating Ginger Rogers and Fred Astaire. Rogers argued that the title created the false impression that she was associated with the film. In the Rogers case it was said: Though consumers frequently look to the title of a work to determine what it is about, they do not regard titles of artistic works in the same way as the names of ordinary commercial products … most consumers are well aware that they cannot judge solely by its title anymore than by its cover.
Following the Rogers decision, Kozinski concluded that Aqua's use of Mattel's Barbie trademark was not an infringement because neither the song title nor the content of the song explicitly mislead as to the source of the work. Certainly neither suggests that Mattel produced the song.
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Mattel separately argued that Aqua's song diluted the Barbie trademark. In his judgment, Kozinski explained that the concept of dilution refers to the "whittling away of the value of a trademark" when it is used to identify different products, quoting Thomas McCarthy, author of McCarthy on Trademarks and Unfair Competition. Kozinski elaborated, saying that Netscape sex shops or Harry Potter dry cleaners would all weaken the commercial magnetism of these marks and diminish their ability to evoke the original associations.
Having considered Mattel's claim, Kozinski agreed that the use of the Barbie trademark in Aqua's song is dilutive. However, when considering whether there was a defense, Kozinski referred to the case of Hoffman v. Capital Cities/ABC, Inc. in which a magazine published an article featuring digitally altered images from famous films. Dustin Hoffman, Carrie Grant, Marilyn Monroe and others had been modified, placing the actors in famous designers' clothes. For example, a still of Hoffman from the film Tootsie was altered so that he appeared to be wearing a Richard Tyler evening gown and Ralph Lauren shoes. Hoffman, who had not given his permission for this use, sued for violation of his right to publicity.
The article featuring the altered Hoffman image had served a commercial purpose and that was to draw attention to a magazine in which it appeared and to sell more copies. However, in that case, the court decided that the article was protected under the First Amendment because it included protected expression: "humor" and "visual and verbal editorial comment on classic films and famous actors." Because its commercial purpose was "inextricably entwined with [these] expressive elements," the article and accompanying photographs were protected by the First Amendment.
Following the Hoffman decision, Kozinski concluded that "Barbie Girl" is not purely commercial speech and is therefore fully protected, adding that the song "lampoons the Barbie image and comments humorously on the cultural values Aqua claims she represents."
Shortly after Mattel filed its claim, employees from MCA and Mattel traded insults in the media. An MCA spokeswoman pointed out that each copy of Aqua's "Aquarium" album included a disclaimer stating that the song "Barbie Girl" was "social commentary [that was] not created or approved by the makers of the doll." A Mattel representative responded, "That’s unacceptable... It's akin to a bank robber handing a note of apology to a teller during a heist. [It] neither diminishes the severity of the crime, nor does it make it legal." Mattel later described the song as a "theft" of "another company's property."
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MCA made a defamation claim against Mattel based on Mattel's use of the words "bank robber," "heist," "crime" and "theft." Concluding the "Barbie Girl" case, Judge Alex Kozinski considered MCA's claims:
All of these [words] are variants of the invective most often hurled at accused infringers, namely "piracy." No one hearing this accusation understands intellectual property owners to be saying that infringers are nautical cut throats with eye patches and peg legs who board galleons to plunder cargo. In context, all these terms are non-actionable "rhetorical hyperbole." The parties are advised to chill.
Mattel was no doubt advised that it could lose the case on the basis of non-infringement and First Amendment protection. In addition, with its zero tolerance stance, Mattel may also have been advised that it risked looking like it had no sense of humor.
At the same time, Mattel knew that if it commenced proceedings, Aqua's parody would not quickly fade from the memory but rather would re-surface with each new legal development. However, it was also aware that not taking action might weaken its brand since in order to claim trademark rights, brand owners need to actively police and enforce them. Perhaps more importantly, they need to be seen to be doing so. Such considerations and the obviously difficult choices make brand protection a challenge when faced with parody and other unauthorized uses of trademarks. [21-Oct-2002]
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Ed Meikle is an intellectual property solicitor at Dickinson Dees, a UK law firm based in Newcastle upon Tyne. He specializes in contentious and non-contentious intellectual property law, relating principally to trade marks, copyright, designs and patents. He advises extensively on the commercialization, protection and enforcement of all such rights.
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Aug 26, 2002
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Commodities: Branding the Basics -- Eric Mirabel
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How do we go about turning a commodity product or production capability into a new brand? We look at the Middle East, a transitioning market where manufacturers are branding commodities.
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Aug 19, 2002
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Brands in Toyland -- Ron Irwin
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Is branding in the toy world just child’s play? We look at how traditional brands like LEGO and Brio stand up to the dazzlingly high-tech competition.
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Aug 12, 2002
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Long Live the King -- John Karolefski
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Young and svelte, bloated and strung out, Elvis had universal appeal throughout his short lifespan. The king may be dead but apparently the brand lives on.
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Aug 5, 2002
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IBM Navigates the Biotech Maze -- Edwin Colyer
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IBM Global Services is expanding to a variety of areas like its recent acquisition of PwC Consulting. We look at how a brand like this penetrates the life sciences market.
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Jul 29, 2002
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Do Nonprofits Have Value? -- Robin Rusch
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As we unveil Interbrand's league tables of the world's most valuable brands for for-profit brands in 2002, we ask, Is there value in a nonprofit brand?
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