Mattel finally learns how to “chill”

by Jason Fischer

One of the chores inherent in the practice of law is that one has to read a lot of really REALLY dry court opinions. It’s always nice when you find judges out there who recognize this, and make some effort to keep it interesting. One of my favorites from law school has always been Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002). Well, this week saw an interesting footnote added to that opinion.

The Back Story

Most will probably remember that there was an annoying pop song, which was recorded back in the 90’s, called “Barbie Girl.” The group Aqua‘s single claim to fame was a huge success, despite being about as appealing to listen to as nails on a chalkboard — don’t let the number of stars assigned to this YouTube clip fool you.

If anything, I have to admit that I find the song amusing, and unlike 2 Live Crew’s “Pretty Woman,” I can believe that Aqua actually created the song to poke fun at the materialistic nature of Mattel’s Barbie franchise, instead of coming up with that justification after a lawsuit has been filed. True to form in those days, Mattel was not amused with Aqua’s parody, and decided to do what it always did back then… file an infringement lawsuit. While the case was pending, a Mattel spokesperson went on record, criticizing the defendants for not respecting their intellectual property rights, which of course spurred a defamation counterclaim.

The trial court made short work of both sides’ allegations, dismissing all with a summary judgment. The court determined that the Aqua song incorporated Mattel’s trademark as a means of identifying Mattel, not to unfairly compete with the toy company. That’s fair use.

Everyone appeals, hilarity ensues

Hon. Alex Kozinski (who is probably better known for more recent events) sets the tone for his now-famous opinion in the first line: “If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong.” From there, he explores a brief history of the Barbie doll’s origins as an adult toy, modeled after a German hooker — something I’m sure that Mattel would rather not have reported on. Moving on to an expert legal analysis of the balance between the First Amendment and intellectual property rights, Kozinski concludes by boiling down the defamation claim as unsustainable:

MCA filed a counterclaim for defamation based on the Mattel representative’s use of the words “bank robber,” “heist,” “crime” and “theft.” But all of these are variants of the invective most often hurled at accused infringers, namely “piracy.” No one hearing this accusation understands intellectual property owners to be saying that infringers are nautical cutthroats with eyepatches and peg legs who board galleons to plunder cargo. In context, all these terms are nonactionable “rhetorical hyperbole,” Gilbrook v. City of Westminster, 177 F.3d 839, 863 (9th Cir. 1999). The parties are advised to chill.

Mattel slunk away, licking the wounds of its latest intellectual property litigation defeat. For the next several years, it appeared as if they had not learned their lesson (see, e.g., here, here, here, and here). However, yesterday morning, the doll maker launched an ad campaign that demonstrates that they may have finally hired a decent attorney who gives better advice grown up. (source)

New commercial with altered lyrics

This story was originally published on

16 Responses to Mattel finally learns how to “chill”

  1. faemom says:

    I’m trying to figure out if they ruined the song for me or made it more funny because really it was all about tongue-in-cheek comedy.

  2. ZZMike says:

    There’s an old British pop song from the 60s or thereabouts going through my head – it’s from a movie: “Hey, there, Georgie Girl, …”

    This has got to be the origin for the song title.

    Ask YouTube and you shall receive:

    From the movie of the same name:

    Maybe the Seekers should be suing

  3. radha says:

    all the barbie dolls i hav received during childhood were used like chicken legs in the kitchen-toy, never used them as real dolls and now that i ended up working for Mattel i understand why~

  4. […] a Comment Toy companies have to find their way and their magnetism from inside. A very famous one got some good advices. I also left a comment to that post where i explained what was the end of all my Barbie dolls […]

  5. If you can’t beat them, join them.

    There’s an interesting article on barbie’s origin here:

    Perhaps an example of polysystem theory at work.

  6. windyote says:

    I had noticed they started using the song in their new commercials. I thought it was a little odd…and maybe a bit tasteless, considering the original lyrics.

    The dance moves in that video made me lose my appetite for breakfast. Ugh.

  7. Ryan says:

    Wow. Amazing.

    Mattel must have run out of ideas. They just ripped-off someone they were trying to sue. Like, what the heck?!?!


  8. bakingmaniac says:

    Goooosh~~~~~~ Sigh~~~That’s commercial tricks. The song was sooooo hit once release but when put it in commercial, it is indeed BAD taste. I’d treat is as a kind of “committing suicide”……

  9. Jaamin says:

    haha it’s hilarious

  10. Ugh. I’m so tired of hearing that song that I’m bummed out I read this post. Ha! Just kidding. Great post!

  11. Asad says:

    Looks like the video was taken off this blog, but it’s easy enough to find on YouTube.

  12. softballgirl78 says:

    I like Aqua’s song just because it is poking fun in a pretty non threatening way. It is amusing to listen to.

  13. mwgriffith says:

    Horrible. Just when I thought the aqua nightmare was over, it seems to have resurfaced. This is worse than a nightmare on elm street.

  14. […] Mattel finally learns how to chill (Jason […]

  15. Mike says:

    strange days

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