Madonna’s new album, MDNA, is set to be released at the end of March. Along with the attendant publicity, Madonna has also received a cease-and-desist letter from none other than Joe Francis, creator of the adult video franchise Girls Gone Wild. Francis threatened to pursue legal action in court against Madonna for the singer’s use of his trademark, “Girls Gone Wild,” as the title of a song on the upcoming album. Francis sent the letter just before Madonna’s Super Bowl halftime show performance, ordering her not to perform the song “Girls Gone Wild.” Madonna did not perform the song (although it’s not clear if Francis’ letter had anything to do with that decision), and ultimately decided to change the name of the song to “Girl Gone Wild.” She claimed not to have received the letter and denied changing the name of the song as a result of Francis’ actions, but it certainly seems like an interesting coincidence. Nonetheless, Francis has not backed off, claiming that the modified title is still violative of his trademark rights.
A song title trademark case from about ten years ago concerning another pop song provides some guidelines for the legal issues here.Barbie Girl
This potential lawsuit brings to mind a 2002 case between toy manufacturer Mattel and MCA Records over MCA’s release of the song “Barbie Girl” by the dance-pop band Aqua. (Click here for the court’s opinion; click here to see the song’s video – hmm, I wonder which link will get more clicks.) That case focused on two types of trademark issues: trademark infringement and trademark dilution.
Trademark Infringement
Trademark infringement may occur when consumers are likely to be confused about the source of a good or service. The court in the “Barbie Girl” case stated that consumers expect a title to communicate a message about the book, movie, or song, but they do not expect it to identify the publisher or producer. The court held that literary titles do not violate the Lanham Act (the U.S. Federal law governing trademark infringement) unless the title has no artistic connection to the underlying work. In that case, the song title was clearly relevant to the underlying song. The song is about BARBIE or a girl like BARBIE. It doesn’t take a great leap of imagination to arrive at “Barbie Girl.” While trademarks serve to identify the source of a good or service, the ultimate conclusion was that the song title did not suggest that Mattel was the source of the song. This ruling displayed a fairly sophisticated understanding of popular culture. It’s been common through the history of recorded popular music for artists to make references to brands. Often those brands are cited in the song titles themselves. There are countless examples of this – Paul Simon’s “Kodachrome” comes to mind.
Trademark Dilution
The court also rejected the argument that the song title diluted the BARBIE trademark under the Federal Trademark Dilution Act (FTDA). Trademark dilution occurs when the “junior” use of a trademark diminishes the value of the mark itself. Protection against trademark dilution is granted to famous trademarks, and BARBIE certainly applies. The theory of trademark dilution explains why you can’t open up a “Disney Auto Repair” or a “Harry Potter Drycleaners.” While the owners of those famous brands may not be directly competing in those areas, the law regards them as so famous that any commercial use would call to mind the recognizable trademark and its source. Essentially, by opening a business under one of those names, you would be free riding off of the goodwill of the established brand. The FTDA is intended to close this loophole and protect both the owners of famous brands and (in theory) consumers from this type of activity.
The “Barbie Girl” court found that MCA’s use of the mark was dilutive because the distinctiveness of the BARBIE mark was diminished as a result of its use in the song title. However, the use of BARBIE in the “Barbie Girl” title fell within one of the three exemptions permitted by the FTDA – the exemption for noncommercial use. This seems like a very strange application of the exemption, given that the production of a pop song is an entirely commercial enterprise. However, in this case, Congress, in its infinite wisdom, included in commentary about the FTDA information to the effect that “noncommercial use” was intended to apply to all Constitutionally protected speech, including parody. So, in reading the lyrics, the court found that “Barbie Girl” was not purely commercial speech because the song is a parody – it lampoons Barbie’s image and comments humorously on the cultural values she represents (see the lyrics here). Thus, it fell under the noncommercial use exemption to the FTDA, and MCA was not responsible for any resulting dilution of Mattel’s trademark.
The court filing included the following broad summary of the issues, which I feel is well-stated:
The First Amendment may offer little protection for a competitor who labels its commercial good with a confusingly similar mark, but “[t]rademark rights do not entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view.” L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir.1987). Were we to ignore the expressive value that some marks assume, trademark rights would grow to encroach upon the zone protected by the First Amendment. See Yankee Publ’g, Inc. v. News Am. Publ’g, Inc., 809 F.Supp. 267, 276 (S.D.N.Y.1992) (“[W]hen unauthorized use of another’s mark is part of a communicative message and not a source identifier, the First Amendment is implicated in opposition to the trademark right.”). Simply put, the trademark owner does not have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source-identifying function. See Anti-Monopoly, Inc. v. Gen. Mills Fun Group, 611 F.2d 296, 301 (9th Cir.1979) (“It is the source-denoting function 901*901 which trademark laws protect, and nothing more.”).
Back to Madonna and “Girl Gone Wild”
A peek into the lyrics to “Girl Gone Wild” make it appear that the title is artistically relevant to the work. The song seems to be about girls going out, having fun, partying, and “going wild.” So it is likely the use of the trademark was not an infringement of Francis’ mark. However, the dilution claim may be harder to resolve. It is difficult to tell whether the song will fall into the noncommercial exemption under the FTDA. The song does not appear to be a parody, satire, or editorial concerning the “Girls Gone Wild” movies, and therefore it may not be held to be a noncommercial use of the mark. Generally speaking, minor changes along the lines of making a plural word singular (“Girls” having been changed to “Girl”) do not create enough of a distinction to erase potential trademark claims. It’s possible that Francis may have a claim under the FTDA after all.
