In the United States, the first amendment and the laws that follow provides robust protections to parodies. This was something Mattel, the toymakers behind Barbie, learned firsthand in Mattel, Inc. v. MCA Records,296 F.3d 894 (9th Cir. 2002).
In 1997, the Danish-Norwegian Group Aqua released their hit single “Barbie Girl,” an extremely catchy song that rose to become one of the best-selling singles of all time. The song, however, had not been approved by Mattel and would be met with strong disapproval post-release.
Mattel had worked hard to cultivate Barbie’s brand, trademark, and image. To quote the 9th Circuit, Mattel “transformed [Barbie] from a doll into. … a symbol of American girlhood … not just a toy but a cultural icon.” But the song “Barbie Girl” was undoing some of that work. The song’s lyrics evoked sexual themes in association with Barbie which Mattel found distasteful and off-brand. Mattel took Barbie to court against “Barbie Girl,” suing MCA records, Aqua’s American record label, for infringement and tarnishment of the Barbie trademark. Following hostile litigation, Mattel ultimately lost the suit. On appeal, the 9th Circuit ruled in favor of MCA Records and “Barbie Girl,” after setting down the laws for parody, use of trademarks in expressive works, and trademark dilution.
Mattel lost the battle in the courtroom and in the public eye after the Barbie doll and “Barbie Girl” song became intertwined, but eventually Mattel embraced the parody by getting back in the dreamhouse driver seat. In 2009 Mattel used “Barbie Girl” in a commercial with modified lyrics that better aligned with the Barbie brand. Now, the new 2023 Barbie movie again uses the newest iteration of the popular song, “Barbie World” by Nicki Minaj and Ice Spice which samples “Barbie Girl.”
In the age of social media, parodies and unapproved derivative works can be common, and it is critical to protect your intellectual property from infringement, dilution, or tarnishment. While parodies are generally protected under the first amendment, certain parodies and derivative works may fall outside of that protection. If you are faced with a potential parody problem, consider these questions when deciding whether to legally engage or embrace the imitative work:
- How is the intellectual property being used?
- What is the nature of the intellectual property? For example, is it factual or fictional?
- How much is the intellectual property being transformed?
- How much of the intellectual property is being used?
- Is there an impact on the market value of the intellectual property?
A good parody, especially one with critique and commentary, can be particularly difficult to defeat both in court and among the masses. The “Barbie Girl” song was ultimately categorized as ‘fair use,’ and Mattel made a strategic decision to embrace the catchy song as part of Barbie’s brand. You can use the above questions to evaluate the strength of the parody you may be up against and decide whether it could help you in the same way. And of course as with any legal question, you should reach out to an attorney if you have more detailed questions about your specific situation.
