AI: Legal Déjà Vu or Revolution?
June 7, 2023
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As a child of the 90s, I cannot wait to experience the cultural phenomenon, the Barbie film.
I frequently practice law at the intersection of art and commerce, and while I cannot possibly write an article that captures every interesting intellectual property topic this movie provokes, I am quite fascinated by one in particular: The way Barbie found a workaround in a way that only Barbie could pull off.
Earlier this month, I wrote an article on the U.S. Supreme Court's ruling in favor of Jack Daniel's, which filed a lawsuit against a company that made a humorous squeaky dog toy called "Bad Spaniels." At the core of the Court's decision was the Second Circuit's test in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The Court in Rogers set forth a "parody fair use" defense: Were the Bad Spaniels dog toys non-infringing because of parody? Unlikely. In summary, the U.S. Supreme Court decided that because the maker of the dog toys used "a trademark as a trademark," Rogers did not apply. The Court decided this was commercial use that Jack Daniel's had a right to benefit from by virtue of its trademark.
So what does the decision in Jack Daniel's have to do with the Barbie film?
Two decades ago, at a time when I had retired my own Barbie® dolls, the Court applied that same Rogers test in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), cert. denied, 537 U.S. 1171 (2003).
In 1997, the record label for Danish pop band Aqua released the song "Barbie Girl." Not only did the song title reference the iconic blonde doll by name but the lyrics centralized on a parodic view of "Barbie's world." The lead Aqua singer serenades with, "I'm a Barbie girl in the Barbie world; Life in plastic, it's fantastic." Mattel (the makers of the Barbie® toys) filed a lawsuit for trademark infringement and dilution, which found its way up to the Ninth Circuit on appeal. The Court applied the Rogers test, dismissing the case, finding against Mattel and in favor of the creators of the "Barbie Girl" song. The song was non-infringing because of parody and therefore protected speech under the First Amendment. The Court, in part, reasoned that no consumer was going to mistakenly believe that Mattel wrote or sponsored the song. Further, the use of the "Barbie" mark in the lyrics and title of the song fell within the "noncommercial use" exception for the dilution claim.
Fast-forward from 2002 to the Court's decision in Jack Daniel's this year, 2023, where one of the issues presented during the parties' oral arguments was whether the law should protect the trademark owner's exclusive right to poke fun at itself.
Today, the Barbie film may do exactly that – poke fun at Barbie and her "life in plastic". More than that, the film has a soundtrack of pop songs licensed to promote the Barbie movie (Barbie The Album), which includes a song titled "Barbie World (With Aqua)" by Nicki Minaj and Ice Spice. Nicki Minaj sings, "And I'm bad like the Barbie (Barbie); I'm a doll, but I still wanna party." This is arguably a commercial use of the Barbie® trademark to promote the Barbie film.
In two decades, we go from Mattel attempting to enforce its intellectual property rights against the "Barbie Girl" song to Mattel sponsoring a remixed version of that same song. (Mattel, Inc. is listed as one of the owners in the copyright notice for the Barbie The Album album). Is Mattel engaging in parody of its own brand? Or has the line between protecting the trademark owner's rights and the public's freedom of expression always been blurred?
When trademark owners find unauthorized uses of their trademarks in artistic works, perhaps an approach following in Barbie's footsteps is worth more consideration: Is there a way for brands to take advantage of the collaboration for their own benefit? Today, brand owners experience increased social pressure from consumers with the prevalence of social media in the brand experience. As such, consumers have far more power to affect brands' reputations. As Mattel learned when the Court ruled against it in 2002, if you can't beat them, jump in your Barbie pink convertible, and join them.
Personally, I am enthralled by the potential for brand owners today, and while I continue to think about the Barbie film with my "legal cap" on, I will also be listening to Aqua's original hit, "Barbie Girl" while planning my own retro hot-pink outfit to wear to the premiere.
In the meantime, if you need legal counsel for protecting, growing, or leveraging your brand, our Trademark Team can help!
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This article is not intended to give, and should not be relied upon for, legal advice in any particular circumstance or fact situation. No action should be taken in reliance upon the information contained in this article without obtaining the advice of an attorney.
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