## Facts

- Mattel owned the “Barbie” trademarks and marketed Barbie as a wholesome brand.
- In 1997, the band Aqua released the song “Barbie Girl,” produced and distributed by MCA and related entities.
- The song used “Barbie” and “Ken” personas with sexually suggestive lyrics that Mattel claimed tarnished Barbie’s image and harmed its brand.
- Mattel sued MCA asserting multiple federal and state claims, including trademark infringement, dilution, and unfair competition.
- MCA defended the song as a First Amendment-protected parody and asserted a counterclaim for defamation based on Mattel’s public “bank robber” remark about MCA.
- The district court granted summary judgment to MCA on Mattel’s Lanham Act and related claims, and granted summary judgment to Mattel on MCA’s defamation counterclaim.
- Mattel appealed; MCA cross-appealed and also challenged Lanham Act and personal jurisdiction.

## Issues

1. Whether “Barbie Girl” infringed or diluted Mattel’s “Barbie” marks under the Lanham Act, given First Amendment protection for expressive works.
2. What standard governs trademark claims against expressive works, including whether to apply the *Rogers v. Grimaldi* test.
3. Whether use of “Barbie” in the song qualified as parody and nominative fair use such that consumer confusion was unlikely.
4. Whether Mattel’s “bank robber” statement was actionable defamation or protected rhetorical hyperbole.
5. Whether the district court had Lanham Act jurisdiction and personal jurisdiction over foreign music-company defendants.

## Decision

- The Ninth Circuit affirmed summary judgment for MCA on Mattel’s trademark and related state-law claims.
- The court adopted the *Rogers v. Grimaldi* test for Lanham Act claims targeting expressive works.
- Applying *Rogers*, the court held “Barbie” had artistic relevance to the song and the use was not explicitly misleading about Mattel’s sponsorship or endorsement.
- The court agreed the song functioned as parody and that use of “Barbie” was permissible nominative reference; the record did not support likely consumer confusion.
- The court affirmed rejection of Mattel’s dilution theory, treating the song as protected noncommercial expression rather than use proposing a commercial transaction.
- The court affirmed summary judgment for Mattel on defamation, holding the “bank robber” remark was nonactionable rhetorical hyperbole.
- The court affirmed that Lanham Act jurisdiction and personal jurisdiction over the foreign defendants were properly exercised.

## Legal Principles

- Lanham Act claims challenging an expressive work are constrained by the First Amendment.
- Under *Rogers*, use of a trademark in an expressive work is actionable only if (1) it has no artistic relevance to the work, or (2) it is explicitly misleading as to source or content.
- Parody and commentary may require use of the criticized mark; such use can support nominative fair use and weigh against likely confusion.
- Trademark dilution law does not permit suppression of noncommercial speech that conveys ideas, criticism, or humor about a mark.
- Defamation requires an actionable statement of fact; exaggerated metaphor and rhetorical hyperbole, understood in context, are not actionable.
- Purposeful distribution and exploitation of the U.S. market can support personal jurisdiction over foreign entities in trademark disputes with domestic effects.

## Conclusion

The Ninth Circuit held that “Barbie Girl” was a protected expressive parody that satisfied the *Rogers* standard because the “Barbie” reference was artistically relevant and not explicitly misleading, defeating infringement and dilution claims; it also held Mattel’s “bank robber” remark was nonactionable hyperbole and affirmed jurisdiction over the foreign defendants.


Mattel, Inc. v. MCA Recs., Inc., 296 F.3d 894 (9th Cir. 2002)