1. Given the rule adopted by the court, can you think of an example in which a literary title would violate the Lanham Act?

2. Why did the court distinguish between use of a mark on a product and use of a mark in a song title?

3. Note the court’s admonition of the attorneys in the case. Why did the court feel it was necessary to comment on the trial tactics used by the attorneys? Is it appropriate?

Barbie is the famous doll manufactured by Mattel with roots beginning in the 1950s. Mattel has invested significant resources in the worldwide marketing and development of the doll, and it has used the Barbie trademark on a variety of accessories for decades. This included development of a Ken doll, and the toy couple went on to become a common reference in pop culture. In 1997, the Danish band Aqua produced a song called “Barbie Girl” in which one band member impersonated Barbie by singing in a high-pitched, doll-like voice in a musical conversation with another band member called Ken. The chorus included:

I’m a Barbie girl, in my Barbie world 

Life in plastic, it’s fantastic 

You can brush my hair, undress me everywhere 

Imagination, life is your creation 

Come on Barbie, let’s go party!

Mattel brought an action against Aqua’s record label, MCA, for trademark infringement (among other claims) for use of the Barbie mark. The trial court granted summary judgment to MCA, ruling that no infringement had occurred.

The Court of Appeals for the Ninth Circuit ruled in favor of MCA. The court distinguished between use of a mark on a product and use of a mark in a song title and explained that although 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 they do the names of ordinary commercial products. The court adopted a rule that 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.

Applying [the literary title rule] to our case, we con-clude that MCA’s use of Barbie is not an infringe-ment of Mattel’s trademark. Under the first prong of [the rule], the use of Barbie in the song title clearly is relevant to the underlying work, namely, the song itself. As noted, the song is about Barbie and the val-ues Aqua claims she represents. The song title does not explicitly mislead as to the source of the work; it does not, explicitly or otherwise, suggest that it was produced by Mattel. The only indication that Mattel might be associated with the song is the use of Barbie in the title[.]

Counterclaim Dismissed: “After Mattel filed suit, Mattel and MCA employees traded barbs in the press . . . MCA filed a counterclaim for defamation based on the Mattel representative’s use of the words ‘bank robber,’ ‘heist,’ ‘crime’ and ‘theft.’ . . .  In context, all these terms are nonactionable rhetorical hyperbole. The parties are advised to chill.”