Eleven claims, no award: Mattel v. "Barbie Girl"

July 24, 2002. The Ninth Circuit hands down Mattel, Inc. v. MCA Records, Inc., and Judge Alex Kozinski's opening line made the opinion famous: "If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong."

I am reading this because of a doll: Barbie, born in Germany in the 1950s as an adult collector's item, survivor of more than 500 professional makeovers, "not just a toy but a cultural icon." In 1997, Aqua released "Barbie Girl," and Mattel decided it was a trademark violation.

Mattel brought eleven claims. It got no award, and a judge was advising both sides to chill.

What the papers say

September 11, 1997: Mattel filed eleven claims against MCA Records and its affiliates over "Barbie Girl": trademark infringement and dilution under the Lanham Act, plus state-law claims. The theory: Aqua's use of the Barbie name confused consumers about Mattel's sponsorship and cheapened the mark.

MCA answered with a defamation counterclaim, and this is where the record gets fun: a Mattel representative had called the song "akin to a bank robber handing a note of apology to a teller during a heist" and a "theft" of "another company's property." MCA sued over "bank robber," "heist," "crime," and "theft."

On February 19, 1998, the court denied Mattel's preliminary injunction motion. On August 3, 1998, Judge Wm. Matthew Byrne Jr. granted MCA summary judgment on all of Mattel's claims and Mattel summary judgment on MCA's defamation counterclaim. Both sides appealed.

The money

Here is where I give you the number, and the papers refuse.

Neither opinion states what Mattel demanded, what anyone spent, or what any lawyer billed. The case died on summary judgment: no trial, no verdict, no fee award in the reporter. (The brief for this article assumed the Ninth Circuit awarded MCA attorney's fees; it did not.) Mattel collected nothing. MCA collected nothing. The opinions say nothing about the cost of the fight, so I will not invent one.

What the docket does show: an injunction fight, a summary judgment battle with dueling surveys, argument on December 5, 2000, a published opinion on July 24, 2002. Across two federal courts, with nothing changing hands.

The ruling

The court's words, not mine: "The parties are advised to chill."

The Ninth Circuit adopted the Rogers test: a trademark used in the title of an artistic work does not violate the Lanham Act unless it has no artistic relevance to the work at all, or it explicitly misleads people about who made it. "Barbie Girl" is about Barbie and the values Aqua claims she represents, and the title does not suggest Mattel produced it. On dilution, the song was "not purely commercial speech," so it fell inside the statute's noncommercial-use exemption. MCA's defamation counterclaim failed too: "bank robber" and "theft" were, in context, nonactionable "rhetorical hyperbole."

The risk ledger

Mattel won nothing. MCA won everything except its defamation counterclaim. The case still ran from September 1997 to July 2002.

Two federal courts. An injunction hearing, a summary judgment record, an appeal. The opinions publish nobody's legal bills, so I will not invent a number. But the docket shows years of Quinn Emanuel and Mitchell Silberberg time over a song that moved 1.4 million albums in the U.S. while the lawyers billed. The meter runs whether you win or lose. Sit with that.

The coverage lens

This is the class of allegation media liability coverage is built for: someone says your creative work infringes their rights, and you need defense counsel long before anyone decides who is right. Trademark and dilution claims over a song title, a parody defense, a survey battle, an appeal: the defense bill is the certain bill in every version of this story. It arrived for MCA the winner, and it would have arrived for Mattel if the roles were reversed.

No promises here. Whether any particular claim would be covered depends on the policy as issued, its terms, conditions, limitations, and exclusions, and the facts of the claim. But the category exists because of cases like this.

The docket

• U.S. Court of Appeals for the Ninth Circuit, Mattel, Inc. v. MCA Records, Inc., Nos. 98-56453, 98-56577, opinion filed July 24, 2002, 296 F.3d 894 (full opinion text, reporter scan): static.case.law
• U.S. District Court for the Central District of California, Mattel, Inc. v. MCA Records, Inc., No. CV 97-6791-WMB (RNBx), order granting summary judgment, August 3, 1998, 28 F. Supp. 2d 1120: law.justia.com

Sources

• U.S. Court of Appeals for the Ninth Circuit, Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (2002), opinion text: law.justia.com
• U.S. District Court for the Central District of California, Mattel, Inc. v. MCA Records, Inc., 28 F. Supp. 2d 1120 (1998), opinion text: law.justia.com

Legal disclosure

SongSure LLC is an insurance agency. This article is for general information and education only. It is not legal advice, not insurance advice, and not an offer, quote, or promise of coverage. Case summaries are based on publicly available court records and are simplified; they may omit details. Any coverage would be subject to underwriting review, carrier approval, and the terms, conditions, limitations, and exclusions of the policy as issued. Past case outcomes do not predict future results or coverage decisions. SongSure is in pre-launch and is not currently writing coverage. Consult a licensed attorney for legal questions and a licensed insurance producer for coverage questions.