Trademark Dilution – All Dolled Up
Now, who hasn’t heard of “I’m a Barbie Girl” by the Danish band Aqua? For those of you who have (quite fortunately?) not heard the song here’s a link to the video.
If you, like me, were a kid of the 90s, you would instantly recall the hit song from being played to death on the radio and at every other birthday party! Funnily enough, this song was also quite the number amongst intellectual property pundits.
Confused? Let me explain.
Getting Down to the Facts
This song, gained quite some notoriety in the world of trademark law in the case of Mattel Inc. v MCA Records. This case ended with an interesting judgement delivered by Judge Alex Kozinski and it all began with him delivering these famous opening lines: “If this were a sci-fi melodrama, it might be called SpeechZilla meets Trademark Kong.”
Mattel is the toy company that produces and sells Barbie dolls all over the world. It sued all the music companies, who are collectively referred to as MCA, for distributing and marketing the hit song Barbie Girl. Mattel has sued these companies on two counts.
Mattel owned the trademark on the brand “Barbie”. So the music record label company sued for infringing Barbie’s trademark or the “Barbie Mark”. Secondly, Mattel has also sued the companies for likening Barbie to a “Blonde Bimbo” which thereby led to deterioration of the brand they were trying to build.
Now the primary issue in this case was whether there has been any trademark infringement and whether there was something known as trademark dilution. These two questions have been answered in a very interesting manner in the course of the case.
Claim #1: The Trademark Infringement
What exactly is a trademark?
A trademark is a word, symbol, or phrase, used to identify a particular brand of products or services that can be availed in the market. This concept came into being with the concept of open markets where several traders sell the same goods. Some were of superior quality and some were inferior. But how does the buyer know any better? Hence the concept of a “brand” was introduced quickly followed by trademark laws helping these traders protect their brands from imitators.
Now, imagine walking down to your local grocery for a soft drink. There are people who prefer a Coke and there are those who prefer Pepsi. Now, without their respective labels, which are basically pictures of their logos or brand names, could you make out one bottle of fizzy brownish-black soda from the other? I don’t think so. This is where the world of brands, trademarks and logos come into play.
Another famous example of the modern day trademarks would be that of the Nike “swoosh”. The brand Nike, symbolized by the “swoosh”, helps buyers like you and me differentiate it from other brands like Reebok and Adidas. And by owning the trademark on the “swoosh” Nike can sue anyone who tries to imitate them and make money through the reputation they have created.
However, (there is always a “however”), there is another side to trademarks apart from solving the whole identity crisis. What happens when sometimes these brands become part and parcel of our everyday vocabulary?
Every human being alive today has used the phrase “I need a Xerox” at some point of their lives. Some people don’t even know that this is actually called photocopying and Xerox is merely a brand of photocopy machines. And we all know that in today’s date, the answer to every unknown question, in all probability, is just “Google it”
Let’s take another example. Now say that you’ve gotten a really bad headache and you could do with an aspirin. You aren’t going to go up to your local drug store and ask them for an “acetyl salicylic acid” are you? In all probability, the druggist would probably shoo you away for giving him one big headache!
Thus, as was observed in the case of Bayer Co v United Drug Co. , where the following aspirin issue was raised, that words like Xerox, Google and aspirin aren’t just trademarks; they are words that have become intrinsically entwined into our everyday vocabulary. Once these words have entered our day to day lexicon, they assume a role outside the ambit of traditional trademark law. Thus, at least under the US Constitution such words and expressions have been given protection under the First Amendment that deals with Free Speech.
It was thus concluded that the record company was entitled to its use of Barbie as it came under the ambit of nominative fair use. Thus, trademark rights do not entitle the owner to prevent unauthorised use of the mark by someone who is merely communicating ideas or expressing their point of view.
Claim #2: Trademark Dilution
So, case over? The music company won? Hold your horses. Remember the bit about the second claim? The bit about trademark dilution?
What is trademark dilution?
Dilution refers to the “whittling away of the value of a trademark”. Trademark dilution happens when someone tries to “free ride” on your brand’s success. Trademark dilution refers to the use of a famous and distinctive mark to sell goods other than those produced or authorized by the mark’s owner.
A famous example that is often given to describe trademark dilution is naming a brand of dry cleaners after the famous boy wizard Harry Potter. Now no one in their right mind would think that JK Rowling would give up her successful stint at writing novels to set up a dry cleaning shop. So, unlike trademark infringement, there would be no question of consumers being confused about the product. Now, what happens if these launderers really flourish, and you find a “Harry Potter laundr-o-mat” in every neighborhood? Give it a few years and you will start associating “The boy who lived” with the “The boy who does my laundry”!
Thus, this weakens the commercial magnetism of the trademark and diminishes its ability to invoke the original associations. This dilutes the selling power of these trademarks by blurring their uniqueness and singularity.
In this context, Mattel had also claimed that the song diluted Brand Barbie as it diminished the mark’s ability to identify and distinguish Mattel products apart from tarnishing Barbie’s image. They believed that the lyrics of the song portrayed Barbie in a manner that would seem inappropriate in the minds of their target demographic: parents with young impressionable daughters.
The question here is whether this is a case of trademark dilution or not?
Now, pretty much every girl on this planet has owned a Barbie doll at some point of her life. If she hasn’t had one, she has at least heard of it! Barbie dolls had attained worldwide fame long before Aqua’s song had started hitting the airwaves.
So on the question whether Aqua’s song was “free-riding” on Barbie’s cult status, the Court established that this was clearly a case of trademark dilution.
But wait! Wait! That’s not it! There is another twist!
In the US there are three exceptions to trademark dilution. One is advertising your own brand by comparing it to your competitor and hence making them look bad. Two, is reporting news and facts in a context that might dilute their brand. And three, would be “free riding” but not for the sake of money.
The first exception is not applicable because the music company is not competing with the toy company.
Two is not applicable because it’s a blonde girl and a bald guy singing in a really annoying voice. Nobody can confuse that as “reporting news and facts”.
And three is not applicable because the record company sold about 8 million copies worldwide. Even if each copy cost just one buck (And trust me! It didn’t), that’s 8 million bucks more than what they should have made to be “free riding but not for profit”. Or is it?
So how would it invoke the exception of “non-commercial use”?
When this law was first introduced in the legislation, many people were worried that such a law would hamper freedom of speech and expression. In the US, the First Amendment that deals with freedom of speech and expression is given a lot of importance. So, supporters of the law stated that such a proposed law would not interfere with something they called a non-commercial expression.
This referred to a parody, satire, editorial and other forms of expression. Basically, something that expresses an opinion.
But what is meant by non commercial expression?
In order to understand what is meant by this term, we will refer to the records of the Congress. Non commercial expression was interpreted to mean parody, satire, editorial and other forms of expression.
Now, when Aqua released its album it had issued a disclaimer on every cover that stated that the song was merely a social commentary that was not endorsed by the makers of the doll. The song aimed to poke fun at Barbie and the cultural values that it claimed to endorse. Thus, the song was clearly meant to be a parody. Thus, as the song falls under the category of a non-commercial transaction it can clearly avail of the exception to trade dilution.
So what’s the verdict?
So, finally the Court decided that:
One: There was no trademark infringement as Barbie has now become part and parcel of our everyday language. The term Barbie has stopped being just a trademark and now is used as slang to denote someone who is “fake and plastic”
Two: That even though this is clearly a case of trademark dilution, since the song was clearly intended to be a parody before it was intended to be commercial, it falls under the exception to trademark dilution.
Thus, Mattel, the toy company lost on both counts.
Now, what if this case had happened in India? Would Mattel still have won?
Hypothetically, let’s say Yo Yo Honey Singh after his exceedingly successful song “Brown Rang Girl” decides to parody Barbie in his new hit single “Firang Girl”. The question that lies before us is, would such legal protection extend to Honey Singh as well?
In India, as of now, there are no exceptions to trademark dilution. The law itself is relatively new, and the concept of trademark dilution was introduced only as late as 2003. The provision relating to trademark dilution, can be found in s 29(4) of the Trademark Act, 1999. However, as of now, unlike the US, there are no exceptions to trademark dilution. Added to this problem is the fact that there have been very little case laws about trademark dilution over the past decade. Furthermore, as the case deals with free speech one can also refer to Article 19 of the Indian Constitution as it deals with Freedom of Speech and Expression. However, even this right is subject to reasonable restrictions.
However, ultimately, as the Indian position on the law is still uncertain, it all boils down to the nature and the disposition of the judge in the present case. If you happen to get a judge like Alex Kozinski, you might get a favourable disposition in your case. Well, in any case, as Judge Kozinski famously concluded the case of the Barbie-mark:
“The parties are advised to chill.”
This article has been authored by Deepthi B who is pursuing law at West Bengal National University of Juridical Sciences