Are you a Barbie girl? In a Barbie world?
If you have inhabited planet earth in the last month, the upcoming Barbie movie has found you. It is one of the most pervasive marketing campaigns for a movie in recent history, and girls and dolls alike are over the plastic moon to see how Greta Gerwig approaches womanhood through a particularly Barbie- pink lens.
But did you know that the iconic song, Barbie Girl, by the Danish band Aqua, got the group in hot water with the creators of Barbie, Mattel? Mattel sued the Danish group for disparagement over their Barbie- themed tune. The brand claimed that "Barbie Girl" had damaged the reputation of the Barbie brand. Mattel claimed in the suit that the song violated the Barbie trademark, as well as their copyrights associated with Barbie and that the song tarnished Barbie’s reputation and “impinged on their marketing plan.” Mattel further argued that, under the Federal Trademark Dilution Act, the song dilutes the Barbie mark in two ways: “It diminishes the mark's capacity to identify and distinguish Mattel products, and tarnishes the mark because the song is inappropriate for young girls.” Mattel also went so far as to claim the Barbie pink used on the album cover was a violation of their registered trademark of the color.
In response, the group, and their record label MCA, argued that Aqua’s use was fair use since it was a parody with social commentary on Barbie as an entity. MCA stated that each album included a disclaimer saying that Barbie Girl was a "social commentary that was not created or approved by the makers of the doll" However, acknowledging the source of copyrighted material and Trademarks and/or acknowledging that it was not approved does not substitute for obtaining permission, so the suit proceeded. In response to MCA’s suit response statements, a Mattel representative said "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 doubled down and called the song a "theft" of "another company's property."
MCA filed a countersuit for defamation, based on Mattel’s use of the words "bank robber," "heist," "crime" and "theft." We’re getting spicy now!!! MCA moved to dismiss the Mattel-brought suit on the grounds of Mattel’s “failure to state a claim.” Failure to state a claim is a “defense asserting that even if all the factual allegations in a complaint are true, they are insufficient to establish a cause of action and the case should therefore be dismissed.”
The Central District of California agreed and granted MCA’s move to dismiss the claims, which then Mattel appealed in the Ninth Circuit Court. In this appeal, The Ninth Circuit ruled that the use was a protected parody under the trademark doctrine of Nominative Fair Use, as well as under the first amendment’s protections of free speech. The court additionally found that the use fell within the non-commercial use exemption to the Federal Trademark Dilution Act. The court used the Rogers Test to determine this final ruling, which protects the use of trademarks in “expressive works.” As far as the defamation suit? The court dismissed the defamation suit, famously stating “The parties are advised to chill.”
In recent years, Mattel seems to have taken an “if you can’t beat, ‘em, join ‘em” approach and has used the song in Barbie products as well as in a 2009 marketing campaign, which featured a modified version of the song. It is also remixed on the forthcoming Barbie soundtrack by the Queen of Pink herself, Nicki Minaj. Seems forgiveness is, in fact, pink & divine!