<-- 1 CHI.-KENT J. INTELL. PROP. 61, 61 -->

PLAYING AROUND WITH BARBIE®
Expanding Fair Use for Cultural Icons
Alyson Lewis⁽¹⁾

I.  Introduction

Freedom to speak and write about public questions is as important to the life of our government as is the heart to the human body. In fact, this privilege is the heart of our government. If that heart be weakened, the result is debilitation; if it be stilled, the result is death.
-- Hugo Black⁽²⁾

    At the hands of postmodernity, oursociety has suffered dramatic changes in how it creates anddisseminates cultural meaning.⁽³⁾  Themedia decides what we hear and how we see.  Thispostmodern condition has caused a restructuring of capitalism,consolidating mass communications in corporate conglomerates andpenetrating society with electronic media and informationtechnologies.⁽⁴⁾  Thiscondition fuels consumption, while consumption is managed byfewer and fewer mass media voices.⁽⁵⁾  "[O]urmodern media images, if they fascinate us so much it is notbecause they are <-- 1 J. INTELL. PROP. 61, 62 --> sites of theproduction of meaning and representation . . . it is on thecontrary because they are sites of the disappearance of meaningand representation . . . ."⁽⁶⁾

    This consolidation of power has reekedhavoc on how our culture creates and disseminates meaning.⁽⁷⁾  The mass media'spervasiveness spreads this imagery and information into everyhome and highway to ensure production and demand.⁽⁸⁾  "Goodsare increasingly sold by harnessing symbols, and theproliferation of mass media imagery means that we increasinglyoccupy the 'cultural' world of signs and signifiers that have notraditional meanings within social communities or organictraditions."⁽⁹⁾  Weassociate a swooshed check mark with a product by Nike®, apurple dinosaur with Barney®, and a pink bunny with Energizer®.

    In recent decades, several scholarshave noted that the present state of trademark and copyright lawineffectively deals with this cultural condition.⁽¹⁰⁾  "[T]helaw has moved more and more of our culture's basic semiotic andsymbolic resources out of the public domain and into privatehands."⁽¹¹⁾  JudgeKozinski for the Ninth Circuit Court of Appeals echoed theseconcerns:

<-- 1 J. INTELL. PROP. 61, 63 -->

Something very dangerous is going on here.  Private property, including intellectual property, is essential to our way of life.  It provides an incentive for investment and innovation; it stimulates the flourishing of our culture; it protects the moral entitlements of people to the fruits of their labors . . . reducing too much to private property can be bad medicine.⁽¹²⁾

    Instead of expanding protections forprivate property,⁽¹³⁾intellectual property law should retreat, leaving the culturalessence of symbolic speech in the publicdomain.  "The law can strengthen the alreadypotent grip of the culture industries over the production andcirculation of meaning, or it can facilitate popularparticipation . . . in the processes by which meaning is made andcommunicated."⁽¹⁴⁾  Thesocial critiques of pop culture should be encouraged, even incommercial speech. To achieve this goal, the law should pulltighter reigns on the doctrine of dilution oftrademark.  At the same time, under copyright law,courts should expand their interpretations of the doctrine offair use to allow commercial uses when the use acts as a socialcritique.⁽¹⁵⁾

    This Note will argue that thecommercial use of social icons, or symbols, should be allowed asa means by which our culture necessarilycommunicates.  First, I will discuss the underlyingpolicies behind copyright⁽¹⁶⁾ andtrademark⁽¹⁷⁾ protection, therecent trends in their development, and proposedsolutions.  Second, I will apply this new framework totoy maker Mattel's most famous product, Barbie.⁽¹⁸⁾  Finally,this <-- 1 J. INTELL. PROP. 61, 64 --> Note will conclude with adiscussion of how the law should change to accommodate thechanging nature of intellectual property while fulfilling theoriginal policy objectives of trademark and copyright protection.⁽¹⁹⁾

II.  Copyright

Copyright is the Cinderella of the law.  Her rich older sisters, Franchises and Patents, long crowded her into the chimney-corner.  Suddenly the fairy godmother, Invention, endowed her with mechanical and electrical devices as magical as the pumpkin coach and the mice footmen.  Now she whirls through mad mazes of a glamorous ball.
-- Zechariah Chafee⁽²⁰⁾

A.  The Origins of Copyright Law

    Copyright law stems from Congress'express power under Article I, section 8 of the Constitution,which authorizes Congress to "promote the Progress ofScience and useful Arts, by securing for limited Times to Authorsand Inventors the exclusive Right to their respective Writingsand Discoveries."⁽²¹⁾  TheSupreme Court has allowed Congress broad power to grant anddecline copyrights noting that the "primary objective ofcopyright is not to reward the labor of authors,"but to fulfill this constitutional aim of promoting "theProgress of Science and useful Arts."⁽²²⁾  Thus,the policy driving copyright legislation is to "fostergrowth of learning and culture for the public welfare, and thegrant of exclusive rights to authors for a limited time as ameans to that end."⁽²³⁾  Thegoal is to spur creative genius so the public can prosper"after the <-- 1 J. INTELL. PROP. 61, 65 --> limited period ofexclusive control has expired."⁽²⁴⁾  TheSupreme Court has also reminded us that we should always keep thegoals of copyright law in mind when applying a particular factpattern to the law.⁽²⁵⁾

    There are always two competinginterests at stake in copyright law:  the interest ofthe author of the creative work and the interest of the public inbenefiting from the work.⁽²⁶⁾  Becauseof the strong public interest, a copyright holder's rights arenot unlimited.⁽²⁷⁾  Forexample, the Copyright Act protects the expression of an idea,but not the idea itself.⁽²⁸⁾  Factsare also excluded from copyright protection.⁽²⁹⁾  Bothfacts and ideas remain in the public domain.

B.  The Fair Use Doctrine

    An additional limitation of copyrightis the judicially created fair use doctrine.⁽³⁰⁾  Congresscodified the fair use doctrine in section 107 of the CopyrightAct stating that "the fair use of a copyrighted work . . .for purposes such as criticism [and] comment . . . is not aninfringement of copyright."⁽³¹⁾  Thefair use doctrine seeks to strike a balance between the competinginterests of the author(s) and the public during <-- 1 J. INTELL. PROP. 61,66 --> the limited period in which the copyright holderhas exclusive control over her work.⁽³²⁾

    However, this permissive use is not asbroad as the literal reading would suggest.  Congressset out four factors to help determine whether the use of aparticular work qualifies as a fair use:  (1) thepurpose and character of the use, including whether such use isof a commercial nature or is for nonprofit educational purposes,(2) the nature of the copyrighted work, (3) the amount andsubstantiality of the portion used in relation to the copyrightedwork as a whole, and (4) the effect of the use upon the potentialmarket for or value of the copyrighted work.⁽³³⁾  Thefirst two factors focus on the alleged infringement and thecopyrighted material respectfully, while the second two factorsadd degree of use and its effect respectively.

    In applying these four factors courtshave repeatedly found that parody is a fair use, but have haddifficulty defining a parody.⁽³⁴⁾  InAcuff-Rose, the Supreme Court attempted to define aparody but because the inquiry is necessarily a case-by-caseanalysis, the courts are still split on how to apply the fair usedefense.⁽³⁵⁾  TheCourt's definition of a parody leaves much room for courts tointerpret a particular work either way.⁽³⁶⁾

For the purposes of copyright law, the nub of the definitions, and the heart of any parodist's claim to quote from existing material, is the use of some elements of a prior author's composition to create a new one that, at least in part, comments on that author's works . . . . If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another's work diminishes accordingly (if it does not vanish), and other factors, like <-- 1 J. INTELL. PROP. 61, 67 --> the extent of its commerciality, loom larger.⁽³⁷⁾

    The Ninth Circuit Court of Appeals,using this definition of parody, held that a commercial use ofDr. Seuss' infamous "Cat in the Hat" children's bookpoking fun at the OJ Simpson double murder trial, was not aparody and hence not a fair use.⁽³⁸⁾  Thecourt, reasoned that the "copied work must be, at least inpart, an object of the parody, otherwise there would be no needto conjure up the original work."⁽³⁹⁾  Thestated policy behind this requirement is that the audience needsto be aware "that underlying the parody there is an originaland separate expression, attributable to a differentartist."⁽⁴⁰⁾  Thecourt concluded that "[b]ecause there is no effort to createa transformative work with 'new expression, meaning, or message,'the infringing work's commercial use further cuts against thefair use defense."⁽⁴¹⁾

    The courts are also divided on howmuch weight to give the first factor in determining whether afor-profit commercial use of a copyrighted work can be a fairuse.  This confusion has been blamed on the Court'sdecision in Sony.⁽⁴²⁾ Sonyhas been interpreted as creating a "presumption of'unfairness' where a use is commercial."⁽⁴³⁾  Eventhough the Court attempted to clarify this standard, courts arestill giving a disproportionate amount of weight to this factor.⁽⁴⁴⁾

C.  A Proposed Solution

    It is this author's contention thatthis basic interpretation of parody robs the public domain of theessentials needed to achieve the objectives of protecting the <--1 J. INTELL. PROP. 61, 68 --> copyright owner.  The first reason aperson chooses to use a particular copyrighted work for parody isbecause it is so well known to the public as another's work thatthe public could only see the objective if they already hadknowledge of the prior work.⁽⁴⁵⁾  Ifit is not obvious what the underlying work is, then it isprobably not a parody.

    Professor Koenig argues that"[c]riticism which does not use a protected icon is weak andineffectual when compared to the use of the icon itself forcritical purposes."⁽⁴⁶⁾  Borrowingfrom the postmodernist, I would go even one stepfarther.  The reason criticism of protected icons isnecessary in our culture is because mass media has createdsymbols that have bled into our popularculture.  Society cannot discuss the meaning of itspopular culture images without infringing on some copyrightedwork.

    Admittedly, people could discuss thesesymbolic images coffee-house style or in academia instead of inthe media.  However, most of our cultural dialogues areportrayed in the commercial culture that drives these meanings.⁽⁴⁷⁾  In order for thecriticism to get as much air time as the symbols themselves, theyshould be allowed to flourish from the source without courtsquestioning whether the parody is of the symbol itself orcompletely unrelated to the symbol.

    Drawing a line between whether theparody is of the original work or a social comment unnecessarilyrestricts the creative works. While the copyright owner has aninterest in preserving this distinction, once a mark has becomeso famous as to make it's way into society's symbolic culture,the public interest outweighs the copyright owner's interest.

    Second, as a practical matter,copyright owners would never license a parody if they did notlike the way it portrayed their prior work.⁽⁴⁸⁾  Ineffect, intellectual <-- 1 J. INTELL. PROP. 61, 69 --> property law"discourages, even forbids, criticism that uses protectedicons."⁽⁴⁹⁾  Thisraises fundamental First Amendment issues.⁽⁵⁰⁾

    While there may be valid policyreasons for protecting another's commercial use of a copyrightedwork, in the case of commercial parodies, the balancing scalesshould tilt towards the public.  In an enlighteneddissent for a petition for rehearing en banc, Judge Kozinski ofthe Ninth Circuit Court of Appeals summarized theproblem:  "Intellectual property rights aren'tfree:  They're imposed at the expense of futurecreators and of the public at large."⁽⁵¹⁾

III.  Trademark Law

A.  Historical analysis

    Trademark law stems from the commonlaw doctrine of unfair competition and has since been codified byCongress.⁽⁵²⁾  Trademarkdilution was a state cause of action, but with the addition adilution cause of action to the Lanham Act, now it is also afederal cause of action.⁽⁵³⁾  Thebasic test for both common law, state and federal statutorytrademark infringement is whether the use causes a"likelihood of confusion."⁽⁵⁴⁾  Factorsconsidered by the courts include:

(1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; defendant's intent in selecting the mark; (8) likelihood <-- 1 J. INTELL. PROP. 61, 70 --> of expansion of the product lines.⁽⁵⁵⁾

    In trademark law, there is no separateparody defense.⁽⁵⁶⁾  However,courts can apply the same reasoning in analyzing whetherconsumers are "likely to be confused as to the source,sponsorship, or approval," of the parodied use.⁽⁵⁷⁾

B.  The Problem

    Again Judge Kozinski recognizedsocieties need to use, criticize, and comment on the commercialsymbols that we all recognize:

Trademarks are often reflected in the mirror of our popular culture.  See Truman Capote, Breakfast at Tiffany's (1958); Kurt Vonnegut, Jr., Breakfast of Champions (1973); Tom Wolfe, The Electric Kool-Aid Acid Test (1968); . . . Looking for Mr. Goodbar (1977); The Coca-Cola Kid (1985)(using Coca-Cola as a metaphor for American commercialism); . . . .  Hear Janis Joplin, Mercedes Benz, on Pearl (CBS 1971); . . . Prince, Little Red Corvette, on 1999 (Warner 1982).  Dance to Talking Heads, Popular Favorites 1976-92:  Sand in the Vaseline (Sire 1992); Talking Heads, Popsicle, on [(Sire 1992)].  Admire Andy Warhol, Campbell's Soup Can . . . .  The creators of some of these works might have gotten permission from trademark owners, though it is unlikely Kool-Aid relished being connected with LSD, Hershey with homicidal maniacs, Disney with armed robbers, or Coca-Cola with cultural imperialism.  Certainly no free society can demand that artists get such permission.⁽⁵⁸⁾

    Under the interpretation of themajority of courts, all of these examples would dilute theowner's respective trademarks or cause consumerconfusion.  In several <-- 1 J. INTELL. PROP. 61, 71 -->cases, "the courts have held, in effect, that poking fun ata trademark is no joke."⁽⁵⁹⁾

    However, a more reasonable conclusionis that these symbols are so intrinsic to the way we understandculture and meaning that there is no better way to communicatethan using the common language given to consumers by mass media.

IV.  The problem with Barbie

This is about the sacred cows of western culture.  The golden idols.  Not symbols of religious power, they are symbols of buying power, profit and revenue streams.  These are secular idols known in the corporate world simply as "cash cows."

One such cow is called "Barbie." ***

Pick any icon.  Barbie is a perfect subject for an inquiry into symbols.  She is nearly ubiquitous, crosses international and religious borders.  She is available to children and so is a part of their education and growth, and she is a product of the contemporary commercial image making industry . . . .⁽⁶⁰⁾

A. Background

    In 1952, a cartoonist in Germanycreated a comic character by the name of <-- 1 J. INTELL. PROP. 61, 72 -->Lilli.⁽⁶¹⁾  A few yearslater, Lilli was transformed into an eleven and a half-inchpornographic doll designed for men and a symbol for illicit sex.⁽⁶²⁾  In 1957, afterpurchasing this doll in Europe, Ruth Handler came up with the"idea" to make a doll that represented purity andinnocence named after her daughter.⁽⁶³⁾  Barbiewas introduced in the United States in 1959.⁽⁶⁴⁾

    Shortly after Barbie's introduction,women started to critique what Barbie, as a product, was sayingabout how women should be.⁽⁶⁵⁾  NaomiWolff, a prominent feminist noted:

It used to be that girls watched their mothers and learned how to be women that way.  But by 1968, it seemed that our mothers were suddenly watching someone else--- the media equivalent of Barbie . . . and learning to be women all over again in a new way.  We too were watching Barbie's and learning what womanhood meant.  This upended the natural progression of the generations and, at a critical moment in our development, would give us--- those who would look more like Barbie's than our mothers could-- more power than they had.

    Barbie was the first toy that taught us what was expected of us sexually.  The fact that some of the moms were trying to become hip young Barbie's made it that much more important for us to understand.  The twelve - inch dolls held the key to it all.  That is why girls, now as well as then, are obsessed with them.⁽⁶⁶⁾

<-- 1 J. INTELL. PROP. 61, 73 -->

    Just how pervasive isBarbie?  If one were to spell-check this document onewould find that her name is in the computer'sdictionary.  "Barbie is a $ 1.2-billion-per-yearbusiness.  Every second, somewhere in the world, twoBarbies are sold."⁽⁶⁷⁾  Inthe United States, girls from 3 to 11 years old own an average of10 Barbie dolls, compared to seven in Italy and five in Franceand Germany.⁽⁶⁸⁾  Barbie'sworldwide market constitutes more than 140 countries.⁽⁶⁹⁾  It is no wondereveryone knows who she is.

B.  The Problem

    In September of 1997, this authorreceived an e-mail as a member of an alumni list-serve, informingmembers of the list that Mattel had filed two lawsuits within oneweek claiming trademark and copyright infringement.⁽⁷⁰⁾  The response fromthe list-serve was unanimous:  doesn't Mattel haveanything better to do?  The gut reaction of thecommunity, comprised of predominately non-lawyers, was anoverwhelming sense that this just wasn't right.  No onecould articulate precisely what was wrong with this picture, butthose who commented on the issue felt like Mattel was takingsomething away from us, something we dearly wanted to hold on to.

    The first suit was against MCA recordsfor distributing the top of the charts hit "I'm a Barbiegirl" by Dutch band Aqua.⁽⁷¹⁾  Mattelclaimed that the song infringed on <-- 1 J. INTELL. PROP. 61, 74 -->its copyright and its "most valuable trademark."⁽⁷²⁾  Mattel stated thatthey were "unhappy with the lyrics because they aredamaging" to Barbie's pure image.⁽⁷³⁾  Theback of the album contains a disclaimer saying that the song"is a social comment and was not created or approved by themakers of the doll."⁽⁷⁴⁾

    The second suit, filed seven dayslater, was against Nissan for a commercial that was produced withplastic figures resembling Mattel products, includingBarbie.  In the commercial a "Nick" doll,which allegedly resembles Mattel's G.I. Joe doll, escapes"from the mouth of a dinosaur, which bears a strikingresemblance to Mattel's 'Jurassic Park' line ofdinosaurs.  Nick then gets into a toy Nissan sports carand drives to a dollhouse, which borrows elements from variousMattel Barbie dollhouses."⁽⁷⁵⁾  Later,the Nick doll "picks up a Roxanne doll that looks likeBarbie."⁽⁷⁶⁾  Inthis suit, Mattel claimed injury to Mattel's name, businessreputation and goodwill.⁽⁷⁷⁾

    A month later this author was walkingthrough the mall and saw a fifteen-foot poster hanging from adisplay window in The Body Shop, a national chain that sells skinand hair care products.⁽⁷⁸⁾  Theposter is significant because it was a flesh-tone nude plasticdoll posed on a classic Victorian green couch.  Thestriking part of this picture was that the doll was visiblyoverweight.  She had plump thighs, a double chin, and aroll around her mid-section.  Admittedly, in the eyes,she resembled Barbie.  However, she also hadopen-jointed knees, arms, and legs (which the modern Barbie doesnot have), and strawberry blond hair.

    In a large font, the caption above thedoll read "There are 3 billion women who don't look likesupermodels and only 8 who do."  A banner ranacross the bottom of the ad identifying The Body Shop with anadditional slogan, "love your body."  A weeklater, the advertisement disappeared from thewindow.  Mattel successfully convinced <-- 1 J. INTELL. PROP. 61,75 --> The Body Shop to stop its new campaign with thethreat of a lawsuit.⁽⁷⁹⁾

    The suits filed by Mattel have beencriticized as trying to "stifle social commentary, satireand critical review."⁽⁸⁰⁾  Onereporter noted, "Barbie is many things to manypeople.  But above all, she's a $2 billion-a-yeartrademarked product of Mattel, which wants to keep it thatway."⁽⁸¹⁾  Theproblem is that all three of these alleged infringements involvedsome larger message.  However, because of the currentstate of trademark and copyright law, these commercial uses arenot clearly protected.⁽⁸²⁾

    There is no question, Mattel isvigorously attempting to protect what it perceives as its"intellectual property."⁽⁸³⁾  However,it is my position that while Mattel may own the direct for-profituse of Barbie, the rest belongs in the public domain.

C. Working Towards a Solution

    In this postmodern era,⁽⁸⁴⁾ the social significance ofBarbie cannot be underestimated.  Just saying that oneword "Barbie" conjures up an instant image that cannotbe adequately described by words.  Once a trademark hasbecome famous (every marketer's dream) it is "oftenreflected in the mirror of our popular culture."⁽⁸⁵⁾

<-- 1 J. INTELL. PROP. 61, 76 -->

Barbie taught us a lot -- sometimes more than we wanted to know . . . .  If there is any doubt that Barbie is designed to appeal to girl's fascination with what the culture considers to be appropriate female sexuality, think of the doll that came out when we were children that actually grew breasts when you twisted her arm.⁽⁸⁶⁾

    Brand names are frequently the subjectof trademark protection because a company spends so much time andmoney investing in making their products a householdname.  In the legal world, we generally ask who ownsthe right to profit from the image of Barbie?  If theissue is framed this way, the answer has to beMattel.  However, this author believes the issue is whogets to decide what Barbie means to society?⁽⁸⁷⁾

    The law's premise is that otherproducers should not be able to reap the benefits they did notsow.  However, the problem is that Barbie is not just aproduct of Mattel's labor.  While Mattel's marketing ofits product probably did play a part in the product'ssuccessfulness, a larger part is more likely attributable to themeaning society attached to Barbie.

    This is not about money.  Itis about who owns the inferences that people draw from productassociation.  When people⁽⁸⁸⁾see Barbie, some see an economic powerhouse marketed by Mattel,others see a social icon that programs young girl's into thinkingthat Barbie is the perfect woman.⁽⁸⁹⁾  Feministand cultural scholars alike have critiqued Barbie forpromulgating an impossible feminine mystique.⁽⁹⁰⁾  True,she is plastic.  However, even Mattel admits that sheis marketed more as a person than as a doll.⁽⁹¹⁾

    The Body Shop is not trying to makemoney off of mocking Barbie so much as <-- 1 J. INTELL. PROP. 61, 77 -->they are trying to respond to a societal problem.⁽⁹²⁾  WhetherMattel likes it or not, people see this 12" plastic doll asa reflection of society's problem with body image.  Theheadline on the advertisement lends further support to itstarget, the societal myth that the perfect woman is a plasticlooking supermodel.⁽⁹³⁾

    Similarly, the band Aqua was nottrying to steal market share from Mattel when they wrote,"I'm a Barbie girl."  Rather, the band wasmaking a social critique of a life in plastic.⁽⁹⁴⁾  Thiskind of criticism says far more about pop culture than it doesabout Mattel.

    Today, the entertainment andcommercial media control much of what is considered popularculture.⁽⁹⁵⁾  There isroom for reasonable people to disagree about which one causes theother.  Does media dictate pop culture or does popculture define the media?  In some respects, publiccritiques have helped to make Barbie a householdname.  Even people who have never before purchased aBarbie not only know what she looks like, but also what shesupposedly stands for.  Whichever side you agree with,one thing is clear:  the two are so closely linked thatthe law cannot effectively say who owns pop culture.

    Barbie has semioticpower.  There is meaning beyond theproduct.  The popular sitcom Ally McBeal has evenlatched onto the idea that there is more in the word Barbie thanjust denoting a particular product or brand name.⁽⁹⁶⁾  Inone episode, the show clearly was trying to show that the biggestinsult to a professional woman is being called a Barbie.⁽⁹⁷⁾  Not only does itdenote a plastic looking woman, but its connotative meaningsrange from fluffy airhead to co-dependant woman.  Noone would argue that the producers of Ally McBeal should beliable for using Barbie's name in vain. <-- 1 J. INTELL. PROP. 61, 78 -->However, that's exactly what is happening in the commercialcontexts.  No matter how important the societalmessage, the law is allowing Mattel to quash the disparagingmessage solely because the message appeared in a commercialforum.

V.  Conclusion

Overprotection stifles the very creative forces it's suppose to nurture.⁽⁹⁸⁾

-- Judge Kozinski

    If we allow this type of socialcriticism to occur in the public forum of commercial media,products will respond.  Mattel announced in December of1997 that it would be releasing a new and improved Barbie withmore lifelike features.⁽⁹⁹⁾  Shewill have more realistic proportions, less make-up, and lightbrown hair.⁽¹⁰⁰⁾  Allof these changes seem to suggest that when the social critiquesare spoken loud enough, manufacturers will hear andrespond.  Whether the impetus for this type ofmarketing is another product or other social forces isirrelevant.  The overall benefit derived from thiscommercial speech outweighs the interest in preventing it.

    The law should foster this dialogue bygiving clear protection to commercial speech.  The lawmust change to accommodate the changing nature of how our culturecommunicates while fulfilling the original policy objectives oftrademark and copyright protection.

    When Congress codified the fair usedefense it viewed the four criteria as guidelines for"balancing the equities," not as "definitive ordeterminative" tests.⁽¹⁰¹⁾  SinceCongress only intended to codify the existing fair use doctrine,Congress also granted courts the power to interpret thesefactors.⁽¹⁰²⁾  Therefore,the courts are free to weigh these factors in a way that promotesthe progression of science and the useful arts.⁽¹⁰³⁾  Courtsshould emphasize the high value of social critiques of popculture, even <-- 1 J. INTELL. PROP. 61, 79 --> in commercialspeech.  To achieve this goal, the law should pulltighter reigns on the doctrine of dilution oftrademark.  At the same time, under copyright law,courts should expand their interpretations of the doctrine offair use, downplaying the commercial nature of the use.

¹ J.D. 1999, University ofCalifornia, Hastings College of the Law.  The authorwould like to thank Professors Margreth Barrett and AshutoshBhagwat for their instruction and guidance.

² Drivers v. Meadowmore Dairies,312 U.S. 287, 301-02 (1942)(Black, J. dissenting).

³ See Rosemary Coombe,Objects of Property and Subjects ofPolitics:  Intellectual Property Laws and DemocraticDialogue, 69 Tex. L. Rev. 1853, 1853-61 (1991); see generallyDavid Harvey, The Condition of Postmodernism:  AnEnquiry into the Origins of Cultural Change (1990); PierreSchlag, Normative and Nowhere to Go, 43 Stan. L. Rev. 167 (1990).

⁴ See Coombe, supra,n.2 at 1862.

⁵ See Keith Aoki, Howthe World Dreams Itself to be American:  Reflections onthe Relationship Between the Expanding Scope of TrademarkProtection and Free Speech, 17 Loy. L.A. Ent. L.J. 523, 523 n.3(1997); see also Ben Bagdikian, The Media Monopoly 4 (2ded. 1987).

⁶ See Aoki, supra,n.5 at 523.

⁷ Id.

⁸ See Coombe, supra,n.3 at 1862.

⁹ See Coombe, supra,n.3 at 1863.

¹⁰ See Michael Madow,Private Ownership of Public Image:  Popular Culture andPublicity Rights, 81 Cal. L. Rev. 125, 142 (1993) (citing DavidLange, Recognizing the Public Domain, 44 Law & Contemp.Probs. 147, 171 (1981) (expressing concern that contemporaryintellectual property law is choking off access to the"public domain"); Jane M. Gaines, ContestedCulture:  The Image, The Voice, and the Law 232-39(1991) (arguing that current intellectual property law may becurtailing popular cultural production); Coombe, supra,n.3 at 1855 (arguing that in the current climate"intellectual property laws stifle dialogic practices --preventing us from using the most powerful, prevalent, andaccessible cultural forms to express identity, community, anddifference"); Wendy J. Gordon, On OwningInformation:  Intellectual Property and theRestitutionary Impulse, 78 Va. L. Rev. 149, 156-57 (1992)(observing that the recent judicial trend toward recognizing newintellectual property rights "sometimes may interfereimpermissibly with the autonomy of others and with efforts byindividuals to achieve cultural self-determination")).

¹¹ Madow, supra, n.10at 142.

¹² White v. Samsung, 989 F.2d1512, 1513 (9th Cir. 1993) (Kozinski, J.dissenting).  While Judge Kozinski was speaking of themajority's grant of publicity right to Vanna White without aparody exception, his reasoning applies equally as well in thecontexts of copyright and trademark protection.

¹³ See Jessica Litman,Mickey Mouse Emeritus:  Character Protection and thePublic Domain, 11 U. Miami Ent. & Sports L. Rev. 429, 429(1994)(arguing that the "intellectual property epidemic ofthe current era is the call to give increased legal protection tosomething because it is valuable").

¹⁴ Madow, supra, n.10at 141-42.

¹⁵ The term "socialcritique", refers to criticism in the broadest sense,broader than the word parody implies.

¹⁶ See discussion infraPart II.

¹⁷ See discussion infraPart III.

¹⁸ See discussion infraPart V.  For a description of the intellectual propertybattles of G.I. Joe, See Jack Guggenheim, The LegalBattles of G.I. Joe:  The Jurisprudence of DistinctiveFingernails, Action Figures, Ninja's, and Distinguished Marines,80 J Pat. & Trademark Off. Soc'y 831 (1998).

¹⁹ See discussion infraPart VI.

²⁰ Zechariah Chafee, Jr.,Reflections on the Law of Copyright, 45 Colum. L. Rev. 503, 503(1945).

²¹ U.S. Const. art. I, § 8.

²² Feist Publications, Inc. v.Rural Tel. Co., Inc., 499 U.S. 340, 349 (1991)(emphasisadded)(citing U.S. Const. art. I, § 8).

²³ Margreth Barrett, IntellectualProperty, 352 (West 1995); see also, Feist,499 U.S. at 350.

²⁴ Sony Corp. of Am. v.Universal Studios, Inc., 464 U.S. 417, 429 (1984).

²⁵ See Campbell v.Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1994).

²⁶ See Barrett, supra,n.23 at 350-54.

²⁷ Harper & Row,Publishers, Inc. v. Nation Enters., 471 U.S. 539, 547(1985)(copyright owner's rights exclude facts, ideas, and fairuse); see also Acuff-Rose, 510 U.S. at 575 n.5.

²⁸ See Copyright Actof 1976, 17 U.S.C.A. §§ 101-1010 (West 1997)(asamended)[hereinafter "Copyright Act"].

²⁹ Feist, 499 U.S. at359 ("Facts contained in existing works may by freelycopied").

³⁰ See Acuff-Rose,510 U.S. at 575; see also W. Patry, The Fair UsePrivilege in Copyright Law 6-17 (1985); Leval, Toward a Fair UseStandard, 103 Harv. L. Rev. 1105 (1990); 17 U.S.C.A. § 107.

³¹ Limitation on ExclusiveRights: Fair Use, 17 U.S.C.A. § 107.

³² See Brian R. Landy,Comment: The Two Strands of the Fair Use Web: A Theory forResolving the Dilemma of Music Parody, 54 Ohio St. L.J. 227, 230(1993).

³³ See 17 U.S.C. §107.

³⁴ Acuff-Rose, 510U.S. at 569.

³⁵ Id; see alsoDr. Seuss Enters. v. Penguin Books USA, Inc., 109 F.3d 1394,1400-01 (9th Cir. 1997).

³⁶ The Courts definition ofparody resonates of Potter Stewart's famous definition ofpornography:  "I know it when I seeit."  Jacobellis v. Ohio, 378 U.S. 184, 197(1964).

³⁷ Acuff-Rose, 510U.S. at 580 (citations omitted).

³⁸ See Dr. Seuss,109 F.3d at 1400-01.

³⁹ Id. at 1401 (citingRogers v. Koons, 960 F.2d 301, 310 (2d Cir. 1992)).

⁴⁰ Id.

⁴¹ Id. at 1401 (citingAcuff-Rose, 509 U.S. at 578).

⁴² 464 U.S. 417 (1984).

⁴³ See Manal Z.Khalil, Note, The Applicability of the Fair Use Defense toCommercial Advertising: Eliminating Unfounded Limitations, 61Fordham L. Rev. 661, 663 (1992); see also Sony,464 U.S. at 451.

⁴⁴ See Acuff-Rose,509 U.S. at 579.

⁴⁵ Cf. supran.12 and accompanying text.

⁴⁶ Dorean M. Koenig, Joe Cameland the First Amendment: The Dark Side of Copyrighted andTrademark Protected Icons, 11 T.M. Cooley L. Rev. 803, 803-04(1994)(arguing that the idea/expression distinction allows themarketer to be the gatekeeper of what society can and cannot sayabout its icons).  For an example of how one defendanttried to conjure up images of the Velvet Elvis, see Elvis PresleyEnterprises v. Capece, 141 F.3d 188 (5th Cir. 1998).

⁴⁷ See suprann.3-11 and accompanying text.

⁴⁸ This is precisely whathappened in Acuff-Rose.  2 Live Crew informedAcuff-Rose, Rick Dees and Roy Orbison that they had written aparody of "Oh, Pretty Woman."  They statedthat they would afford all credit for ownership and authorship ofthe original to the copyright owner, and that they were willingto pay a fee for their use.  Nonetheless, the copyrightowner, Acuff-Rose refused permission.  Acuff-Rose,509 U.S. at 572-73.

⁴⁹ Koenig, supra, n.46at 803.

⁵⁰ See generallyKhalil, supra n.43; Koenig, supra, n.46.

⁵¹ White, 989 F.2d at1516 (Kozinski, J., dissenting).

⁵² See Trademark Actof 1946, The Lanham Act, 15 U.S.C.A. §§ 1051-1127 (West 1997).

⁵³ See id.

⁵⁴ See ThomasMcCarthy, McCarthy on Trademark and Unfair Competition, §23.01[1] (rev. ed., Clark Boardman Callaghan 1994).

⁵⁵ Dr. Seuss, 109 F.3dat 1404.

⁵⁶ See id. at1405.

⁵⁷ Id.

⁵⁸ White, 989 F.2d at1512-13 (Kozinski, J. dissenting)(emphasis added).

⁵⁹ Dr. Seuss, 109 F.3dat 1405. The court cites examples of Gucci (Gucci Shops, Inc. v.R.H. Macy & Co., 446 F. Supp 838 (S.D.N.Y. 1977)), A.1 Steaksauce (Nabisco Brands, Inc. v. Kaye, 760 F. Supp. 25 (D.Conn.1991)), and the Hard Rock Café (Hard Rock Café Licensing Corp.v. Pacific Graphics, Inc., 776 F. Supp 1454, 1462 (W.D.Wash.1991)); see generally Jonathon Roy Celniker,Trademark Parody Unplugged, 14 SPG Ent. & Sports Law. 1(1996).

⁶⁰ Mark Napier, TheDistorted Barbiehttp://www.users.interport.net/~napier/barbie/barbie.html(visited February 27, 1998). Copy on file with author.

⁶¹ Barbie: Maureen TurnerVisits a Real Life Dreamhouse, http://metalab.unc.edu/stayfree/11/barbie.html(visited February 28, 1999).

⁶² See id.

⁶³ See id.

⁶⁴ See Hacker Barbe DreamBasement Apartment [sic],http://www.catalog/mrm/barbe/barbe.html (visited on February 27,1997). On file with the author.

⁶⁵ See ElizabethBettendorf, If Barbie Were Real . . . Book Takes Light-HeartedLook at Our Obsession, The State Journal-Register (Springfield,IL), p. 29, Dec. 21, 1997) (available on LEXIS) (ellipses inoriginal) (author describes how her feminist mother would not lether play with Barbie's as early as the 1960's); see generallySarah Strohmeyer, Barbie Unbound:  A Parody on theBarbie Obsession (1997).

⁶⁶ Naomi Wolf, Promiscuities:The Secret Struggle for Womanhood 13 (Random House 1997).

⁶⁷ Leslie Earnest, Good OldBarbie; Collectibles: Entrepreneur Moves Thriving Vintage-DollBusiness to Laguna Beach. She's Already Making a Pretty Penny,Los Angeles Times (Orange County Edition), May 1, 1997 (availableon LEXIS)(quoting Barbie collector Kitty Stuart).

⁶⁸ Id.

⁶⁹ Id.

⁷⁰ Since this article wasdrafted, the opinion of the California district court has beenpublished.  See Mattel v. MCA, 28 F.Supp. 2d 1120.  Publication deadlines prevented are-write of this section, however, it is worth noting that thedistrict court concluded that the song "Barbie Girl"was a protected parody.  See id. at1136-59.  At the same time, an unpublished decision ofa New York district court concluded that a Web site which usedthe Barbie name in connection with adult entertainment was not afair use.  See Mealey's Litigation Reports,"Use of 'Barbie' Mark Violates Anti-Dilution Act," 7NO. 3 Mealey's Litig. Rep.: Intell. Prop. 9 (Nov. 2, 1998).

⁷¹ Lisa Bannon, Mattel is SuingMCA Records, Saying Hit Tune Infringes On Its Doll's Trademark,The Wall Street Journal, Sept. 12, 1997 (1997 WL-WSJ 14165991).

⁷² Id. (quotingMichele McShane, Mattel's senior attorney).

⁷³ Id. (quoting JeanMcKenzie, general manager and executive vice president of thecompany's Barbie Worldwide division).

⁷⁴ Id.

⁷⁵ Id. (quoting thecourt filings).

⁷⁶ Id.

⁷⁷ Reuters, Mattel SuesNissan Over TV Ad, Los Angeles Times, Sept. 19, 1997, at D2(1997 WL 13981733).

⁷⁸ A magazine size sample ofthis ad is on file with the author.

⁷⁹ Lisa Bannon, staff reporterof The Wall Street Journal, WSJ Interactive Edition, January 6,1998.  Downloaded from Pointcast^TM onJanuary 6, 1998.  On file with the author.

⁸⁰ Aline McKenzie, MattelPresents Barbie In Trademark-Battle Dress; Company's LawsuitsRaise Rights Issues, The Arizona Republic, Nov. 12, 1997, pg C2.

⁸¹ See id.

⁸² See Acuff-Rose,509 U.S. at 580; see also discussion supra PartII.B.

⁸³ Lisa Bannon, staff reporterof The Wall Street Journal, WSJ Interactive Edition, January 6,1998. Downloaded from Pointcast^TM on January 6, 1998.On file with the author. In this article, Michele McShane, thecompany's Senior Counsel is quoted claiming that Mattel has"an intellectual property, not a doll. We vigorously lookfor and pursue any and all infringements."

⁸⁴ See discussion supraPart I, n.3-11 and accompanying text.

⁸⁵ White, 989 F.2d at1513 n.6 (Kozinski, J. dissenting).

⁸⁶ Wolf, supra, n.66(emphasis added).

⁸⁷ For an in-depth discussionon this issue in the contexts of celebrity publicity rights seeMadow, supra n.10 at 134. (For example, Madow asks thequestion, "'Who owns Madonna?'" He argues that bygiving all the legal rights to Madonna, the law stifles thecultural process of deciding what meanings Madonna will have tosociety at large.) Id. at 134.

⁸⁸ "People" refers toadults capable of inferences and larger cultural understanding(not Mattel's target audience of little girls from ages 7-12).

⁸⁹ See Wolf, supran.66 at 13 (1997).

⁹⁰ See id.

⁹¹ See Napier, supra,n.60.

⁹² The problem of course beingsociety's, as well as Mattel's, promulgation of the ideal womanbeing built like a supermodel, a body the average person is notlikely to achieve.

⁹³ The advertisement reads:"There are 3 billion women who don't look like supermodelsand only 8 who do." In the bottom right hand corner of thead, under the plastic image is an additional slogan, "loveyour body."

⁹⁴ The songs includes lyricslike "Life in plastic, it's fantastic." Aqua, "I'ma Barbie girl" (MCA 1997).

⁹⁵ See discussion supraPart I, nn.6-9 and accompanying text.

⁹⁶ Ally McBeal is produced byFOX Broadcasting Co.

⁹⁷ See the episodewhere the support staff sues the firm for hostile workenvironment. The comment is directed at the character played byCourtney Thorne-Smith, who looks somewhat like a Barbie doll.

⁹⁸ Samsung, 989 F.2dat 1513 (Kozinski, J. dissenting).

⁹⁹ Lisa Bannon, Top-HeavyBarbie Is Getting Body Work At Hands of Mattel, The WallStreet Journal, Nov. 17, 1997.

¹⁰⁰ See id.

¹⁰¹ H.R. Rep. No. 94-1476,94th Congress, 2d Sess. at 65 (1976), reprinted in 1976U.S.C.C.A.N. 5659, 5679.

¹⁰² See Acuff-Rose,509 U.S. at 577.

¹⁰³ Id.