[T]he Rogers test prohibits application of the Lanham Act to titles of artistic works unless the title "has no artistic relevance to the underlying work whatsoever or . . . the title explicitly misleads as to the source or the content of the work."
Mattel Inc. v. Walking Mountain Productions
Defendant made a series of photographs featuring nude Barbie dolls with various kitchen appliances in somewhat morbid situations, some using "Barbie" in the title. Plaintiff sued for trademark, trade dress, and copyright infringement as well as trademark and trade dress dilution.
District court granted summary judgment to defendant on the infringement claims because defendant's use caused no likelihood of confusion as to plaintiff's sponsorship thereof and on the dilution claims because defendant's use was non-commercial.
Did defendant infringe or dilute plaintiff's trademark or trade dress by using its famous mark in art?
When marks "enter public discourse and become an integral part of our vocabulary," the First Amendment begins to protect public discourse when imbued with a meaning beyond identifying a source.
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Because the Barbie mark is clearly related to defendant's art, the public interest in free expression outweighs plaintiff's interest in preventing consumer confusion.
The use of the trade dress of the Barbie doll qualifies as nominative fair use. His use is nominative because he used his works to conjure associations of plaintiff, while also identifying his own work. Using another's product as a point of reference for one's own is a nominative use.
Applying the test from New Kids on the Block shows that it is nominative fair use. Barbie is hard to identify in a photograph without using her likeness and figure. He only used as much as necessary to make her readily identifiable. It is highly unlikely that any reasonable consumer would have believed that plaintiff sponsored or was affiliated with his work. Therefore, it is nominative fair use and summary judgment was proper on this issue.
Dilution only applies to purely commercial speech, while this is parody and a form of noncommercial expression. Therefore, it is not subject to a trademark dilution claim.
No, defendant did not infringe or dilute plaintiff's trademark or trade dress. Affirmed.