Is It a Barbie World?

Posted by | April 20, 2010 | General | 4 Comments

We all can agree that Barbie is a famous brand, regardless of what we may think of her or the thin values she espouses.  Barbie dolls have been around since May 9, 1958.  The first Barbie trademark registration (Reg. No. 0,689,055) for a “doll” was issued on December 1, 1959.

This is interesting because “doll” in the singular form is no longer allowed to be used in the listing of goods and services in trademark applications.  Rather, applicants must state “dolls” in the plural because using a mark in only one transaction is not enough for trademark rights to attach.  In other words, you must sell multiple items (even if the items are identical dolls) for trademark rights to attach.

OK, back to Barbie.

In 1997, Aqua produced the song Barbie Girl on its album Aquarium.  The song, somewhat surprisingly, made it into the Top 40. The Chorus goes like this –

“Barbie Girl”

I’m a barbie girl, in the barbie world
Life in plastic, it’s fantastic!
you can brush my hair, undress me everywhere
Imagination, life is your creation
Come on Barbie, let’s go party!

* * *
Come on Barbie, let’s go party!
(Ah-ah-ah-yeah)
Come on Barbie, let’s go party!
(uu-oooh-u)
Come on Barbie, let’s go party!
(Ah-ah-ah-yeah)
Come on Barbie, let’s go party!
(uu-oooh-u)

* * *

(Full lyrics found here)

In September, 1997, Mattel brought a trademark infringement lawsuit against the music companies who produced, marketed and sold the Barbie Girl song, including the band Aqua and its record label, MCA Records.  In July, 2002, the 9th Circuit upheld the District Court’s ruling in favor of Defendants, finding use of the Barbie mark in the Barbie Girl song to be a nominative fair use and a parody.  The court found that “the song pokes fun at Barbie and the values that Aqua contends she represents.”  The case was publicly contentious, which led Judge Kozinzki to end with the best final sentence ever written in a judicial opinion, “The parties are advised to chill.”

In an ironic twist, Mattel apparently recently licensed Aqua’s song.  It re-wrote the lyrics and released the song this year as its The Barbie® Official Music Video 2009.  The video is part of a promotion to celebrate Mattel’s October 2009 release of new poseable Barbie dolls.  The video is intended to teach you how to “Do The Barbie” dance.  Look out country fans — the Barbie is soon to take over line dances everywhere!  I wonder who owns the copyright on that choreography?  The next line of Barbie lawsuits awaits.

How did I find myself Blogging about Barbie on a Friday night?  It started this morning with the e-mail digest from the VERB LinkedIn Group asking for guesses on which song has the most brand mentions.  Not knowing that the question really meant how many different brands were mentioned in a single song, I guessed Barbie Girl, which repeats Barbie over and over and over and over and over . . .

After posting to LinkedIn, I read the linked article and learned that the question originated with one of my favorite blogs, DuetsBlog, as the culmination to an entertaining blog about brands in songs.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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