Lazy Boy Meets Barbie Girl

by Natalya Rose on June 1st, 2009

It was a beautiful spring in Iowa City and they didn’t see it coming; couldn’t see it coming. They’ve been performing as “Lazy Boy & The Recliners” for over thirteen years. Then, that cease-and-desist letter came. From: La-Z-Boy Incorporated; “there are some serious concerns that the band’s name amounts to trademark infringement and dilution, in violation of the Trademark (Lanham) Act.”

The Recliners, as they are now known, should have considered writing a song about “La-Z-Boy,” instead. This is what that Dutch band with a hit song “Barbie Girl” did, and prevailed in a ferocious lawsuit by Mattel, Inc.—maker of Barbie dolls and the owner of the “Barbie” trademark—against allegations of, among other, trademark infringement and trademark dilution of its famous mark. And the fight was for more than the song’s title: Barbie also graced the band’s lyrics, a parody of the perceived Barbie dolls values. But it was still a long and difficult battle, moving from a federal district court to a U.S. Court of Appeals, and forcing the courts to reach out to the legislative history behind the Trademark Act in order to reconcile this statute with the First Amendment.

The courts have rather consistently agreed that certain use of another’s trademark must be allowed, as “fair” under the Trademark Act or under the First Amendment guarantees. For example, such use in a title of a song, a book or a film is acceptable and will not be considered trademark “infringement” as long as it bears a relationship to the underlying work (and it is critical that it bear such relationship, as OutKast found out with respect to the title of its song “Rosa Parks,” which was found to be unrelated to this song’s content). In addition, if the trademark in question is famous, as it often is in such cases, the claims of trademark “dilution,” under the Federal Trademark Dilution Act (which is part of the Trademark Act), are also very likely to be raised. The FTDA prohibits unauthorized use of a famous and distinctive mark that is likely to cause dilution of that mark by “blurring” (“whittling away” of distinctiveness caused by the unauthorized use of a mark on dissimilar products) or by “tarnishment” (associating the mark with products that are of poor quality or using it in an unwholesome or unsavory context that is likely to reflect adversely upon the mark owner’s products). However, the FTDA provides an exception for, among other, “noncommercial use.” The courts have interpreted this exception to include the expression that is protected by the First Amendment, such as humor, parody, satire and editorial comment, even if this expression is accompanied by a commercial purpose-for example, selling copies of a song or a magazine.

While these decisions may be a victory for the freedom of expression, they are also a tool for those acting not necessarily in good faith to take advantage of another’s trademark simply by accompanying the commercial activities by some degree of protected speech. The only refuge from this possibility has been provided by the arbitrators of domain name disputes. The arbitration panels hearing complaints of wrongful domain name registrations have held that, to the extent that a fan website employs a domain name that includes an artist’s trademark (provided that such trademark rights can be established to the satisfaction of the arbitration panel), and the site also tries to make money, the trademark owner can seek-and will, most likely, succeed on the claim for-the transfer of the infringing domain name. Of course, these decisions do not address the issues of content linked to the domain names, and other legal remedies, such as the Copyright Act or the Personal Rights Protection Act may prove to be helpful in this respect. Ultimately, the burden remains on the trademark owner to protect its names and marks, and to be certain that their unofficial and unauthorized use does not exceed the limited exceptions established by the Trademark Act and the First Amendment. Similarly, anyone considering use of another’s trademark must be mindful of these limitations, to ensure that the proposed use falls squarely within the established exceptions and defenses. You can’t pretend to be a Lazy Boy, but you may pay your tributes to Barbie.

First published in Music Row Magazine, www.musicrow.com.