28 F. Supp. 2d 1120 (1998)

MATTEL, INC., a Delaware corporation, Plaintiff,

v.

MCA RECORDS, INC., a California corporation, et al., Defendants.

No. CV 97-6791-WMB (RNBx).

United States District Court, C.D. California.

August 3, 1998.

*1121 *1122 *1123 *1124 *1125 Adrian M. Pruetz, Christopher Tayback, Adam D. Samuels, Quinn, Emanuel, Urquhart & Oliver, Los Angeles, CA, for Plaintiff.

Russell J. Frackman, George M. Borkowski, Jeffrey D. Goldman, Brent Rabowsky, Mitchell, Silberberg & Knupp, LLP, Los Angeles, CA, for Defendants.

ORDER GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT AS TO ALL CLAIMS, GRANTING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT AS TO DEFENDANTS' COUNTERCLAIM, AND DENYING DEFENDANTS' MOTION TO DISMISS

WM. MATTHEW BYRNE, Jr., District Judge.

In March, 1997, a Danish musical group known as "Aqua" released in Europe an eleven-song album, Aquarium. This album included a song entitled Barbie Girl, in which a woman and man assume the identities of two popular Mattel dolls known as Barbie and Ken. Defendants claim this song parodies the popular toys, with the singers referring to Barbie as a "blond bimbo girl" who loves to party and whose "life is plastic." Barbie Girl quickly became a hit in Europe and later was released in the United States, *1126 where the Aquarium album sold over 1.4 million compact discs (CDs) and cassettes.

On September 11, 1997, Mattel filed suit in this Court, bringing eleven claims[1] against MCA and other defendants.[2] Defendants, in turn, filed a counterclaim for defamation. On February 19, 1998, this Court denied plaintiff's motion for a preliminary injunction, on the grounds that it was not likely to succeed on the merits.[3]

Defendants now move for summary judgment; they also seek to dismiss the foreign defendants for lack of subject matter jurisdiction, personal jurisdiction, and forum non conveniens.

Plaintiff moves for summary judgment as to defendants' counterclaim for defamation and request reconsideration of the Court's earlier Order denying a preliminary injunction. Although plaintiff did not file a formal cross-motion for summary judgment on its own claims, during the hearing on April 30, 1998, plaintiff's counsel orally requested that the Court grant summary judgment for Mattel rather than defendants.

At the hearing, the Court advised the parties that, because the pre-trial and trial dates were approaching, it would issue a brief order on the motions, followed by this more detailed order.

MCA Records is a California corporation that sells Aqua's album in the United States. Universal Music & Video Distribution Inc. is a New York corporation that distributes the album in the United States. This Court's jurisdiction over those two defendants is not contested. Three foreign defendants have also been sued by Mattel, and those three defendants have filed a motion to dismiss the case against them for lack of personal jurisdiction. All three foreign defendants are affiliated members of the Universal Music Group. (Pl.'s Ex. H.) All three have an active and on-going relationship with each other. (Cacciatore Dep.; Bowen Dep.)

Universal Music A/S is a Danish corporation ("Universal Denmark"). Aqua recorded the album in Denmark and is party to a recording agreement with Universal Denmark that gives Universal Denmark the worldwide rights to the Aqua album. Universal Denmark has a preexisting agreement with MCA Records that gives MCA the rights to Aqua and other bands for distribution in all countries except Denmark. Universal Denmark collects a license fee for all sales of the album in the United States. MCA Music Scandinavia A/B ("MCA Scandinavia") is a Swedish corporation. Through an agreement with Universal Denmark, it owns the music publishing rights to the words and the music of the Barbie Girl song. It receives money from the sale of Aqua's album anywhere in the world, including those sold in the United States. (Ingestrom Dep. at 40-42.)

Universal Music International, Ltd. ("UMI") is a British holding company that has no rights to the song or to the album. It acts to coordinate information among various international, affiliated companies. However, it does coordinate the release of various musical products by its affiliates all over the world, including in the United States. (Bowen Dep. at 18-23.) Universal Music International then helps "coordinate touring activities and promotional activities" of the released records, including Aqua in the United States and elsewhere around the world. (Id. at 31.) It also sent the Barbie *1127 Girl video to MCA in the United States. (Id. at 35.) UMI worked with Universal Denmark to market the Aqua album in the United States and rest of the world. (Id. at 42-71.)

The Ninth Circuit has adopted "the following three-pronged approach to analyzing limited jurisdiction: (1) The nonresident defendant must do some transaction with the forum or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws. (2) The claim must be one which arises out of or results from the defendant's forum-related activities. (3) Exercise of jurisdiction must be reasonable." Pacific Atlantic Trading Co. v. M/V Main Express, 758 F.2d 1325, 1327 (9th Cir. 1985).

The Ninth Circuit utilizes seven factors under the third prong of the limited jurisdiction test to determine whether the exercise of jurisdiction is reasonable. See Insurance Co. of North America v. Marina Salina Cruz, 649 F.2d 1266, 1270 (9th Cir. 1981). The following seven factors are relevant: "(A) the extent of the purposeful interjection into the forum state; (B) the burden on the defendant of defending in the forum; (C) the extent of conflict with the sovereignty of defendant's state; (D) the forum state's interest in adjudicating the dispute; (E) the most efficient judicial resolution of the controversy; (F) the importance of the forum to plaintiff's interest in convenient and effective relief; and (G) the existence of an alternative forum." Id.

Defendants argue that the foreign defendants have no offices, employees, property, or agents in the forum, and they have not conducted any business in the forum. Defendants rely on Asahi Metal Indus. Co. v. Superior Court, for the proposition that "the placement of a product into the stream of commerce, without more, is not an act of the defendant purposely directed toward the forum state." 480 U.S. 102, 112, 107 S. Ct. 1026, 94 L. Ed. 2d 92 (1987).

Defendants also rely on Rano v. Sipa Press, Inc., 987 F.2d 580 (9th Cir.1993). In Rano, the plaintiff-copyright licensor of photographs sued a French licensee, asserting jurisdiction on the basis that the licensee knew that plaintiff's photographs ultimately would be distributed in California due to the licensee's sub-licensing of the photographs to various magazines. Id. at 583-84. The Ninth Circuit rejected an argument that would render all "foreign owners of art who sell their products to publications amenable to personal jurisdiction in every state in which their art is eventually displayed." Id. However, this case is distinguishable. The three foreign defendants did more than merely have their music product end up in California by happenstance. There were cross-licensing agreements between all of the members of the Universal Group. A coordinated plan existed among of all of the defendants to distribute the Barbie Girl song around the world, including the United States.

For example, the artwork for the Barbie Girl recording was delivered to MCA in Los Angles by Universal Denmark in conjunction with the single's release in the United States. (Wheeler Dep. at 45.) Universal Denmark also has exported single versions of the song to the United States. (Id. at 63-64; Cacciatore Dep. at 105.)

UMI coordinated the release of Aqua's album with all of the Universal affiliates around the world, including the United States. (Bowen Dep. at 16.) UMI helps determine which Universal record label, if any, should release a specific album into the United States. (Id. at 23.) As part of that process, UMI sent promotional copies of the Barbie Girl video to MCA in the United States. (Id. at 35.)

Universal Scandinavia operates under a sub-licensing agreement in the United States. (Ingestrom Dep. at 39.) Thus, under *1128 this sub-publishing agreement, Universal Scandinavia would receive royalties for each Aqua album sold in the United States. (Id. at 41.) There would also be royalty payments for each time a song was played on the radio. (Id. at 41-42.) MCA Scandinavia sent albums to the United States to their affiliates in the United States for publicity in the hopes of getting the Aqua album used in commercials or other commercial ventures. (Id. at 46-49.)

All of the above contacts show sufficient purposeful availment of the United States by the foreign defendants. The district court cases upon which defendants rely are also distinguishable. In none of them do the defendants actually intend for their activities to have any effect in the forum. Here, the foreign defendants had an intent to affect the forum. Their licensing agreements, and coordination of the release strategies for the Aqua album, coupled with their sending of promotional products to the forum, suggest purposeful availment of the forum.

Defendants argue that the foreign defendants have no meaningful forum-related activities with respect to the claims in this lawsuit. Defendants contend that the foreign defendants do not manufacture, sell or distribute the album in the United States. However, the foreign defendants' conduct facilitates the activities that occurred in the United States. If plaintiff's claims are true, then the foreign defendants participated actively in the scheme that brought the Barbie Girl song to the United States.

Defendants rely on FDIC v. British-American Ins. Co. for the proposition that a contract is an insufficient basis to establish purposeful interjection into the forum. 828 F.2d 1439, 1443 (9th Cir.1987). However, in FDIC, the governing law of the contract was expressly not the law of the forum, and there were no activities in the forum other than using a forum bank to handle the one-time transaction. Id. In this case, there was far more activity directed at the forum than mere temporary physical presence, as in FDIC. The contacts with the forum included the sending of promotional singles of Barbie Girl into the U.S., and the coordinating of the release of the album in the U.S., as well as receiving royalties from sales of the album in the U.S. Such contacts constitute far more contact than the "random" or "fortuitous" contact envisioned in FDIC.

Defendants rely on the Ninth Circuit's claim that "we have held that litigation against an alien defendant requires a higher jurisdictional barrier than litigation against a citizen from a sister state." Rano, 987 F.2d at 588. Defendants further argue that witnesses and documents are in Europe, which means that the California forum is burdensome. However, the Ninth Circuit has also noted that "the burden of litigating in a foreign forum has become less significant as a result of advances in communication and transportation." FDIC, 828 F.2d at 1444. Thus, while it may be somewhat of a burden for the foreign defendants to defend in California, it does not appear to be unreasonably so.

Defendants argue that Danish and Swedish trademark remedies are more limited than those available under U.S. law, and judgements in the U.S. are unlikely to be enforced in either country. "Although not a dispositive consideration, a foreign nation presents a higher sovereignty barrier than another state within the United States." Id. at 1444. Plaintiff notes that there is no parallel foreign action so there is no risk of inconsistent verdicts. In addition, such a conflict is not dispositive, or else legal action against foreigners in U.S. courts would almost always be prohibited. "Sovereignty concerns weigh more heavily when the defendants have no United States based relationships." Core-Vent v. Nobel Indus., 11 F.3d 1482, 1489 (9th Cir.1993). In this case, the fact that all of the foreign defendants are wholly-owned subsidiaries of Universal, and the fact that they have all directed actions at *1129 the forum state, make the exercise of jurisdiction reasonable.

Defendants argue that the forum state's interest can be secured merely by proceeding against the two U.S. defendants. Plaintiff claims that Mattel and Universal Studios are both domiciled in California. Plaintiff also points to the fact that most documents and witnesses are located in the forum. Defendants claim that the foreign defendants' allegedly infringing conduct occurred outside the forum. However, as discussed previously, the foreign defendants engaged in conduct directed at the forum, and were a part of the allegedly infringing conduct that took part in the forum. "California maintains a strong interest in providing an effective means of redress for its residents who are tortuously injured." Id., 11 F.3d at 1489. Since Mattel is a California resident, California has an interest in resolving this dispute.

"In evaluating this factor [the Ninth Circuit] has looked primarily at where the witnesses and the evidence are likely to be located." Id. Defendants claim that all of its employees are located in Europe, so it would be difficult to bring them to the forum for trial. Plaintiff claims that the majority of witnesses and documents are located in the forum. Both sides provide only conclusory statements here, so it is difficult to evaluate their respective positions.

While plaintiff would prefer to litigate in California because it is domiciled there, that is not dispositive. Wherever this case is litigated, some parties will have less convenience than others. Plaintiff argues that since its case raises U.S. trademark law, it is more convenient to have a U.S. court, who is familiar with U.S. law, hear the case. This factor does not tilt the balance either way.

Defendants claim that Mattel has the burden to prove that there is not an alternative forum. See Amoco Egypt Oil Co. v. Leonis Navigation Co., 1 F.3d 848, 853 (9th Cir. 1993). Defendants argue that plaintiff could bring this suit in Denmark or Sweden. However, as plaintiff points out, defendants go to great pains to argue that there would be no cause of action in this case in either Sweden or Denmark under their law. Thus, there does not appear to be an alternative forum for this type of trademark suit.

This Court has personal jurisdiction over the foreign defendants. The foreign defendants are wholly-owned subsidiaries of Universal, and they have participated in numerous actions directed at the forum state in this case.

In order to apply the Lanham Act to foreign commerce "first, there must be some effect on American foreign commerce; second, the effect must be sufficiently great to present a cognizable injury to plaintiffs under the federal statute; and third, the interests of and links to American foreign commerce must be sufficiently strong in relation to those of other nations to justify an assertion of extraterritorial authority." Star-Kist Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393, 1395 (9th Cir.1985). The third element involves seven factors: "the degree of conflict with foreign law or policy, the nationality or allegiance of the parties and the locations or principal places of business of corporations, the extent to which enforcement by either state can be expected to achieve compliance, the relative significance of effects on the United States as compared with those elsewhere, the extent to which there is explicit purpose to harm or affect American commerce, the foreseeability of such effect, and the relative importance to the violations charged if conduct within the United States as compared with conduct abroad." Id.

Defendants rely on Zenger-Miller, Inc. v. Training Team, GmbH, 757 F. Supp. 1062 (N.D.Cal.1991). In Zenger-Miller, the defendant was a German corporation that conducted no business in the United States, *1130 such that the Court found that the effect on U.S. commerce was minimal, as plaintiff felt most of the effects in its European business. Id. at 1071. Defendants claim that the foreign defendants in this case made money from activities in foreign counties targeted at foreign consumers, and not from targeting consumers in the U.S.

Zenger-Miller is distinguishable because in this case, the foreign defendants have directed activity at the United States and have derived profits from their activities in the United States. Plaintiff notes that the Ninth Circuit does recognize that "the Lanham Act provides a broad jurisdictional grant that extends to all commerce which may lawfully be regulated by Congress." Ocean Garden, Inc. v. Marktrade Co., Inc., 953 F.2d 500, 503 (9th Cir.1991). The court also noted that "the sale of infringing goods in a foreign country may have a sufficient effect on commerce to invoke Lanham Act jurisdiction." Id. In this case, the foreign defendants participated in activities resulting in sales of Barbie Girl in the United States, as well as abroad. Jurisdiction therefore exists.

Defendants argue that any injury suffered by plaintiff would be suffered abroad. However, plaintiff argues that defendants' conduct has caused plaintiff injury in the United States. As long as there is "monetary injury in the United States" to plaintiff, then there is a "cognizable [claim] under the Lanham Act." Id. at 503. In this case, the foreign defendants' actions have caused an injury in the United States, sufficient to establish jurisdiction by allegedly infringing plaintiff's trademark.

Defendants argue that under Danish law, plaintiff would have a more difficult time making its claim for trademark infringement or unfair competition. (Madsen Dec.) In addition, a U.S. judgement would not be enforceable in Danish courts. (Id.) Defendants argue that the same would be true in a Swedish court. See Blimpie Int'l, Inc. v. ICA Menyforetagen AB, 1997 WL 143907 (S.D.N.Y.1997). Plaintiff claims that this fact is irrelevant because it is not proceeding under foreign trademark law, but rather is seeking to enforce U.S. trademark law.

Plaintiff argues that since there is no current foreign proceeding, there can be no conflict with foreign law. The Ninth Circuit has noted that if "there are no pending proceedings" abroad, then it would not "be an affront to the foreign country's sovereignty or law." Ocean Garden, 953 F.2d at 503. Since there are no proceedings currently in Sweden or Denmark, and because the conduct complained of impacts the U.S. market, there is no real sovereign conflict.

In this case plaintiff is a California corporation and the foreign defendants are not. However, the foreign defendants are very closely related to the U.S. defendants because they are all owned by the same corporate entity and act as each others' agents.

Defendants argue that this Court's ruling would not be enforceable abroad. However, plaintiff is seeking damages and injunctive relief relating to activities within the U.S., which would be enforceable. Plaintiff is not seeking relief for defendants' sales of the Barbie Girl song in Europe; it is only seeking relief for United States sales. This Court could enforce its order against the foreign defendants' activities that target the U.S.

Plaintiff claims that there has been a significant harm in the U.S. because of the high number of albums sold. There is certainly enough harm alleged to show significance of harm in the U.S.

Defendants claim that they have caused no effect in the United States. However, the *1131 evidence suggests that defendants have engaged in activities targeting the United States.

Since the other factors come out in plaintiff's favor, defendants' actions were thus foreseeable. See id. at 504.

Plaintiff is a U.S. corporation, and has been harmed in the United States. That is sufficient for this factor. See id.

There have been sufficient activities geared toward the United States, and sufficient impact in the United States for there to be a cause of action under the Lanham Act.[5]

"A party moving to dismiss on grounds of forum non conveniens must show two things: (1) the existence of an adequate alternative forum, and (2) that the balance of private and public interest factors favors dismissal. This showing must overcome the great deference due plaintiffs because a showing of convenience by a party who has sued in his home forum will usually outweigh the inconvenience the defendant may have shown." Lockman Foundation v. Evangelical Alliance Mission, 930 F.2d 764, 767 (9th Cir.1991). Ordinarily the requirement of an alternative forum is satisfied if "the defendant is amenable to process in the other jurisdiction." Id. at 768. However, the requirement may not be satisfied "in rare circumstances where the remedy offered by the other forum is clearly unsatisfactory." Id. "Private interest factors include: ease of access to sources of proof; compulsory process to obtain the attendance of hostile witnesses, and the costs of transporting friendly witnesses; and other problems that interfere with an expeditious trial." Id. at 769. "Public interest factors encompass court congestion, the local interest in resolving the controversy, and the preference for having a forum apply a law with which it is familiar." Id. at 771.

Defendants contend that plaintiff could litigate its claims in Denmark, Sweden or Great Britain where it claims to have trademark registration. Plaintiff contends that this case involves conduct that occurred in the United States. Therefore, those claims should be litigated in the U.S.

Plaintiff points out that the Ninth Circuit has cautioned that "unless the balance is strongly in favor of the defendant, the plaintiff's choice of forum should rarely be disturbed." Gates Learjet Co. v. Jensen, 743 F.2d 1325, 1334-35 (9th Cir.1984).

Defendants argue that since Barbie Girl was created and initially packaged in Denmark, and since the foreign defendants activities were limited to Europe, that the balance of private factors tilts toward requiring that the case be prosecuted in Europe. In addition, all witnesses and documents relating to the foreign defendants are located in Europe. There will be a high cost to bringing witnesses from Europe, and this Court cannot compel witnesses from Europe to appear in Court. Finally, defendants contend that any judgement in this Court would not be enforceable in Sweden or Denmark.

The Ninth Circuit has also recognized that while a U.S. citizen has no absolute right to sue in a U.S. forum, "a plaintiff's choice of forum is entitled to greater deference when the plaintiff has chosen the home forum." Jensen, 743 F.2d at 1335. Here, Mattel, a citizen of California, is suing in its home forum.

Additionally, the Ninth Circuit requires district courts to consider "that trial preparation had progressed nearly to the point of trial" when attempting to determine whether trial in the U.S. is "more easy, expeditious and inexpensive" than trial abroad. Id. at 1335. Here, most discovery has been completed, *1132 and the foreign defendants have been actively participating in the case in this Court. Thus, it does not make sense to dismiss them on the eve of trial.

Finally, in looking at where witnesses are located, the court must "keep in mind that the increased speed and ease of travel and communication makes ... no forum as inconvenient today as it was in 1947." Id. at 1336. Additionally, the Court should consider not merely the number of witnesses and their locations, but the "materiality and importance of the anticipated witnesses' testimony." Id. at 1335.

Defendants contend that plaintiff has unnecessarily complicated this case with the addition of the foreign defendants, which contributes to a congested court system. California has little interest in resolving any claims against the foreign defendants. Finally, defendants argue that the issue of whether they infringed any trademarks should be determined under the law of the country where the conduct took place, in Europe.

The Ninth Circuit has recognized that U.S. courts have an interest in "protecting its companies from trademark infringement abroad to preserve the state's economic vitality." Id. at 1336. In examining the court's docket "the real issue is not whether a dismissal will reduce a court's congestion but whether a trial may be speedier in another court because of its less crowded docket." Id. at 1337.

In short, there has not been a sufficient showing to overcome the presumption that plaintiff's choice of forum is the appropriate one.

Rule 56(c) of the Federal Rules of Civil Procedure provides that a court shall grant a motion for summary judgment if "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). Facts are deemed "material" if a dispute over them "might affect the outcome of the suit under the governing law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986).

The moving party has the burden of demonstrating the absence of a genuine issue of fact for trial. Id. at 256, 106 S. Ct. 2505. If the moving party satisfies this burden, Rule 56(e) provides:

When a motion for summary judgment is made and supported as provided for in this rule, an adverse party may not rest upon the mere allegations or denial of the adverse party's pleading, but the adverse party's response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If the adverse party does not so respond, summary judgment, if appropriate, shall be entered against the adverse party.

Fed.R.Civ.P. 56(e).

In addition, summary judgment is appropriate, "after adequate time for discovery and upon motion, against the party who fails to make a showing sufficient to establish the existence of an element essential to the party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). "The mere existence of a scintilla of evidence in support of the [opposing party's] position will be insufficient." Anderson, 477 U.S. at 252, 106 S. Ct. 2505.

Plaintiff submitted with its opposition a survey, prepared by Dr. Sandra Cogan, which includes the responses of 556 individuals interviewed in person at ten shopping malls in six states and purports to show actual confusion among consumers.[6] Defendants *1133 object that the survey is inherently biased with leading questions and that it is excludible as improper opinion testimony under Federal Rule of Evidence 703.

The Ninth Circuit has held that "surveys are to be admitted as long as they are conducted according to accepted principles." E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1292 (9th Cir.1992). "Technical unreliability goes to the weight accorded a survey, not its admissibility." Id. (quoting Prudential Ins. Co. v. Gibraltar Fin. Corp., 694 F.2d 1150, 1156 (9th Cir.1982)). The mere presentation of a survey purporting to show confusion, however, does not itself create a triable issue of fact. See Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 118 (2d Cir.1984) (finding a survey "so badly flawed that it cannot be used to demonstrate the existence of a question of fact on the likelihood of consumer confusion.").

In Gallo, the district court admitted a survey in which participants were shown photographs of defendant's cheese label and asked a series of questions, the first being what company "puts out this cheese." The other two questions asked participants to identify what other products they thought were made by the company they identified in their first answer. Id. The survey found forty percent of participants were confused nationally, with 47% confused in California. Id. at 1292-93. See also Henri's Food Products Co. v. Kraft, Inc., 717 F.2d 352, 357-58 (7th Cir.1983) (finding that the survey question, "who do you think puts out [the product] shown here," to be valid, "[a]lthough the phraseology may not be the best way to ask the question").

The Cogan survey includes a number of questions that circuits courts have found to be inherently leading or biased and therefore should be given little if any weight as evidence of actual confusion. In addition, the few neutral questions presented by the survey show only a minimal amount of consumer confusion. Cf. Universal City, 746 F.2d at 118 ("[T]he fact that there may be a few confused consumers does not create a sufficiently disputed issue of fact regarding likelihood of confusion so as to make summary judgment improper.").

Survey participants either watched a video or listened to an audio recording of the song. They were then asked what the music video or music "is about." Cogan did not tally the answers of the participants, although an independent review of the participants' answers reveals that about 421, or 76%, of the individuals explicitly identified the song as about Barbie.[7]

The survey conductors then showed either the CD album or the CD single to the participants and asked to "look at this music CD as though you were in a store and thinking about buying a music CD today." (Cogan Decl., Ex. C, at 11). The survey takers then asked the following question:

"3. Who or what company, if any, do you think is connected with or gave permission for the music video and CD (the music CD) you just saw?"[8]

If a name was given, participants were then asked why they thought that and what other products were put out by that named company. By Cogan's count, 20% answered Universal/MCA/Aqua/ or Barbie Girl, 17% answered Barbie/Mattel, 6% answered Music/Entertainment Co., and 47% answered that they did not know.

It is unclear from the results of this question how many individuals who answered Mattel thought the company was "connected" with the song and how many thought the company gave its permission. The use of the term "connected with" is not relevant in the context of parody, as parodies evoke the object that they are poking fun of and therefore *1134 are often linked or connected to that object in the public's mind.[9]See Prudential Ins., 694 F.2d at 1156 (holding that the exclusion of a survey, which showed 14-31 percent of the public identified plaintiff's logo with defendant's, was not prejudicial error "because the survey showed only that the Prudential rock [logo] and the Gibraltar rock [logo] are linked in the public eye"); see also Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (1994) (observing that parody in the copyright context "can claim legitimacy for some appropriation" of the original work on which it comments).

The next question (# 5) was "who or what company or companies do you think put out the music video and CD (music video) you just saw." Twenty-one (21)% said Universal/MCA/Aqua or Barbie Girl; 4% said Mattel or Barbie; 11% said a Music/Entertainment Co.; and 60% said that they did not know. These results indicate substantially less confusion than seen in the Gallo survey.[10]See 967 F.2d at 1292-93.

In calculating her results, Cogan inexplicably combines the responses from question three (17.4%) and question five (2.3%)[11] to find that 20% of the respondents "though Mattel or `Barbie' was the source, connected with, or gave permission for the `Barbie Girl' music video and/or music CD." (Id. at 17). It is unclear why Cogan combines the answers to questions three and five, as both questions were asked to all 556 participants. Cogan points to no evidence that the individuals in question three who thought Mattel was connected with the song were a different group of people than the smaller number in question five who thought Mattel put out the music video and CD.

The Cogan survey conductors then asked the following series of questions:

7a. Do you associate the Barbie Girl name with any other products?

7b. What products do you associate the Barbie Girl name with?

7c. Do you associate the Barbie Girl name on the CD package with the Barbie doll?

7d. Do you think the company which owns the Barbie doll brand gave its permission to use the Barbie name on the music CD package?

(Cogan, Ex. C, at 19). To the last question, 39% of respondents answered yes to the last question, 51% answered no, and 10% were not sure. The validity of the results from this leading question is undermined, however, by the fact that, when asked a relatively more neutral question (who is connected with or gave permission for this music), only 17% identified Mattel or Barbie.

Universal City is instructive on this point. In that case, plaintiff asked survey participants whether "the Donkey Kong game [was] made with the approval or under the authority of the people who produce the King Kong movies?" 746 F.2d at 118. The Court criticized the question, among other reasons, because "the above-mentioned inquiry was an obvious leading question in that it suggested *1135 its own answer. The participants were presented with the Donkey Kong-King Kong connection rather than permitted to make their own associations.... A survey question which begs its answer cannot be a true indicator of the likelihood of consumer confusion." Id. For the same reasons, this Court will not give weight to question "7d" as evidence of actual confusion.[12]

Defendants object that the survey is fatally flawed. They claim that the very first question, asking what the song was about, polluted the survey because the song is clearly about Barbie and therefore the survey takers "implanted" the Barbie response in the respondent's minds. (Defs.' Obj. at 4). Defendants note that most of the survey respondents indicated that the song was about Barbie a result that is not surprising as the song is a parody of the doll. (See discussion below).

Defendants also object that plaintiff did not use a control group to take account of those respondents who are confused "regardless of the stimuli present."[13]See Winning Ways, Inc. v. Holloway Sportswear, Inc., 913 F. Supp. 1454, 1475-76 (D.Kan.1996) (discounting survey showing 48-58 percent confusion where the survey contained only "numbers that had not been adjusted to account for noise in the market"). Defendants further argue that the single presented to the participants was the Danish version of the song (which lacks the disclaimer) rather than the American version, which has the disclaimer.[14] (See Defs.' Obj. at 10 (citing Cogan Decl., Ex. C, at 272)).

Although the survey contains flaws, "technical unreliability" goes to the weight the Court is to afford the survey, rather than its admissibility. Gallo, 967 F.2d at 1292. In evaluating plaintiff's case, the Court can consider these flaws when considering the multiple factors of the likelihood of confusion test.

Plaintiff also seeks to introduce a survey designed by one of its employees, Sujata Luther, the head of Mattel's Worldwide Consumer and Sales Research department. This survey of 1009 girls ages 5 to 18 years old purports to show that 77% of girls ages 8 to 10 and 49% of girls ages 5 to 7 had heard the song. It also claims that 52% of 5 to 10 years olds like the song "a lot," while only 20% of 11 to 18 year olds liked it "a lot." (Pl.'s Opp'n at 11; Pruetz Decl., Ex. I). However, the survey's relevance is unclear: whether young girls like the song does not demonstrate that they are confused over the trademark. As to showing the age of MCA's consumers, the survey does not indicate whether these listeners are likely to be the actual purchasers of this music.[15] Presumably, many parents buy toys and music products for their younger children, and plaintiff presents no evidence that more easily impressionable children, rather than adults, are the individuals who are buying the products at issue here.

Plaintiff objects to the declarations of Valerie Folkes, Richard Lanham, Soren Rasted, and Astrid Hansen in their entirety and to portions of the declarations of Bruce Wheeler and Jeffrey Goldman. Plaintiff argues that *1136 Lanham's credentials as a literary consultant are irrelevant "because Mattel did not bring suit against Aqua for the lyrics of its song." (Pl.'s Obj. at 2). This objection is without merit. Lanham's testimony relates to the meaning of the song's lyrics and its place among other parodies of plaintiff's doll.

Plaintiff objects to the Folkes Declaration because Folkes has "no experience in evaluating the merits of trademark infringement or dilution claims" and she apparently made certain factual errors in her declaration. (Id. at 3). Folkes, a marketing professor, provides some helpful testimony, however, regarding the widespread use of pink among products targeting young girls.

As to Hansen's declaration, plaintiff objects because he translates a Danish-language radio interview that plaintiff asserts is irrelevant and that includes comments made by a European Mattel official who stated publicly that the company was "all for" the song because it was "funny and good." (Id. at 4; see also Rasted Decl. at ¶ 14). However, the interview also contains comments by the songwriter about the meaning of the song, which relates to parody.

As to Rasted, the individual who wrote Barbie Girl, plaintiff claims that he has been unavailable for a deposition because he has been traveling overseas, "under contract to defendants."[16] (Id. at 5). Despite this, however, plaintiff has managed to produce in its opposition evidence that it claims contradicts Rasted's testimony regarding the meaning of the song. In addition, to exclude his testimony might potentially limit defendants' ability to explain the meaning of their own songs, although the lyrics themselves indicate that the song is a light-hearted comment on the dolls Barbie and Ken. (See discussion below).

The Court will not exclude the objected-to declarations.

The crux of plaintiffs argument is that defendants have misappropriated the Barbie trademark by using the word "Barbie" in the song Barbie Girl and its video. Plaintiff claims that this song will lead to confusion among consumers and harm to the Barbie product line itself. Defendants respond, however that Barbie is an icon in American culture and that their alleged parody of her is protected by the First Amendment.

"The inquiry into the protected status of speech is one of law, not fact." Connick v. Myers, 461 U.S. 138, 148 n. 7, 103 S. Ct. 1684, 75 L. Ed. 2d 708 (1983); see also Rendish v. City of Tacoma, 123 F.3d 1216, 1223 (9th Cir.1997), reh'g en banc denied, 134 F.3d 1389 (9th Cir.1998). In this case, this Court must determine whether the song at issue constitutes a parody, thereby raising important First Amendment interests. See Dr. Seuss Enterprises, L.P. v. Penguin Books, 109 F.3d 1394, 1400 (9th Cir.) (observing that parody has "socially significant value as free speech under the First Amendment"), cert. denied, ___ U.S. ___, 118 S. Ct. 27, 138 L. Ed. 2d 1057 (1997); L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir.) ("Parody is a humorous form of social commentary and literary criticism that dates back as far as Greek antiquity."), cert. denied, 483 U.S. 1013, 107 S. Ct. 3254, 97 L. Ed. 2d 753 (1987); Fisher v. Dees, 794 F.2d 432, 437-38 (9th Cir.1986) ("`Destructive' parodies play an important role in social and literary criticisms and thus merit protection even though they may discourage or discredit an original author.").

As a threshold matter, the fact a parody makes a profit does not strip it of protection under the First Amendment. The Supreme Court has held that speech "is protected [by the First Amendment] even though it is carried in a form that is `sold' for profit, and even though it may involve a solicitation to purchase or otherwise pay or contribute money." Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer Council, 425 U.S. 748, 761, 96 S. Ct. 1817, 48 L. Ed. 2d 346 (1976) (citations omitted). As the Tenth Circuit observed in analyzing the *1137 First Amendment rights of trading cards that parodied famous sports players,

[W]e see no principled distinction between speech and merchandise that informs our First Amendment analysis. The fact that expressive materials are sold neither renders the speech unprotected, nor alters the level of protection under the First Amendment. [Plaintiff] need not give away its trading cards in order to bring them within the ambit of the First Amendment.[17]

Cardtoons L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959, 970 (10th Cir. 1996). Nor does a for-profit parody have to identify itself clearly as a parody. As the Supreme Court observed, "[p]arody serves its goals whether labeled or not, and there is no reason to require parody to state the obvious (or even the reasonably perceived)." Acuff-Rose, 510 U.S. at 583 n. 17, 114 S. Ct. 1164.

In the song Barbie Girl, two singers (one female, one male) adopt the names of "Barbie" and "Ken" and sing about their "life in plastic." The names "Barbie" and "Ken" also apply to two popular plastic dolls owned by the plaintiff. A portion of the lyrics sung by Lene Grawford Nystrom, who adopts Barbie's persona, includes the following:

I'm a Barbie girl, in a Barbie world; life is plastic; it's fantastic

You can brush my hair, undress me everywhere.

Imagination; Life is your Creation....

I'm a blond bimbo girl, in a fantasy world.

Dress me up, make it tight. I'm your dolly....

René Dif, who plays Ken, sings the refrain, "Come on Barbie; Let's go party," throughout the song, which lasts just over three minutes.

Although the singers adopt the names of the dolls, they do not adopt their likeness, either on the album cover or in the related video. The lead singer impersonating Barbie, Nystrom, has dark hair and a tattoo on her arm. The male singer, Dif, has a cleanshaven head. Neither of these singers match the usual images of Barbie as a blond young woman or Ken as a young man with a full head of hair.

Plaintiff describes the song as containing "adult-oriented lyrics" that are inconsistent with Mattel's "wholesome image." Plaintiff specifically objects to phrases sung by the pretend Barbie such as "undress me everywhere," "I'm a blond bimbo girl, in a fantasy world"; "you can touch, you can play, if you say `I'm always yours,'" and "make me talk, do whatever you please, I can act like a star, I can beg on my knees." Plaintiff also objects to Ken's lyrics, which include "kiss me here, touch me there, hanky panky" and "come jump in, bimbo friend, let use do it again, hit the town, fool around, let's go party."

Mattel's distaste for the song's alleged message, of course, cannot alone justify silencing speech critical of its product. Cf. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 307 (9th Cir. 1992) (noting the potential for injury to public discourse if individuals cannot refer to specific trademarks in their social commentaries). Indeed, parody "inevitably offends others" because it so often "ridicule[s] sacred verities and prevailing mores." L.L. Bean, 811 F.2d at 28; see also Dr. Seuss, 109 F.3d at 1400 n. 8 (noting that courts should "not take into account whether [an alleged parody] is in good or bad taste").

Plaintiff asserts that this song is not about the doll at all and that therefore cannot be a parody.[18] A review of the song and video, *1138 however, demonstrates that the singers are poking fun at Barbie, whom they repeatedly refer to throughout the song.[19] The lyrics spoof the unrealness of Barbie, referring to what many children apparently do with their dolls, including dressing and undressing them, brushing their hair, and making them walk and talk.[20] (See, e.g., Lanham Decl., ¶ 38). In the video, the pretend Ken pulls the pretend Barbie's arm off; the singers, playing with a fake-looking arm, appear to be poking fun at the fact that Barbie, like all dolls, can be taken apart by her more adventuresome owners. (See id. at ¶ 45). In addition, the song's lyrics appear to target for parody a woman who is like Barbie i.e. a Barbie Girl one who is plastic, unreal, and easily manipulable by others.

The song's fast tempo and the singers' exaggerated performances of their respective characters suggest that the lyrics are not to be taken too seriously. As to the meaning of the lyrics, Soren Rasted a member of Aqua and the song's "primary writer" states that he wanted "to compose a humorous song about the `Barbie fantasy world.'" (Rasted Decl., ¶ 11) (emphasis in original). Rasted has explained in interviews that the song was about more than just the Barbie doll itself but also its "status[,] like the royal family, which is not to be tampered with." (Id. at ¶ 14). The fact that the criticism is light-hearted, rather than heavy-handed, does not lessen the speech's First Amendment protections. See Cardtoons, 95 F.3d at 969 (observing that parody trading cards "are no less protected [as speech] because they provide humorous rather than serious commentary"); see also Winters v. New York, 333 U.S. 507, 510, 68 S. Ct. 665, 92 L. Ed. 840 (1948) (observing that speech that is entertainment is also protected by the First Amendment because "[t]he line between the informing and the entertaining is too elusive for the protection of that basic right").

Plaintiff cites several interviews with band members, in which they make statements such as "[t]he song isn't about the doll. We're making fun of the glamourous life," and "[w]e don't mean to harm the doll."[21] (See Pruetz Decl., Ex. F4-F5, at 231, 234). Mattel asserts that the song is not about parodying Barbie and therefore plaintiff cannot claim the protection of the First Amendment.[22]

Mattel, however, ignores other comments made by the band members in interviews, in which they state that they wanted "to make Barbie the kind of girl you think of, very high, very childish," (Pruetz Decl. at F3) and the comments of the song's writer that the song "is about a Barbie doll, but like most of our songs there is a deeper significance to it. Not that we have to be taken dead seriously, but the Barbie doll has a certain status like the royal family, which is not to be tampered with." (Rasted Decl., ¶ 14; id., Ex. 8 at 49 *1139 (quoting Dif as saying that Barbie Girl is a "happy song with humor and irony")). Indeed, the song's writer has stated repeatedly that he was inspired to write the song after riding his bike past a kitsch exhibit of Barbie dolls in his native Denmark. (Pruetz Decl, Ex. F5, at 234; Rasted Decl., ¶¶ 9-10). In addition, he noted the song is "not the normal duets we do on our albums, it's more like role playing."[23] (Id.).

From the lyrics of the song and the various comments by the Aqua band members, it appears that song was intended to parody both the doll itself and the shallow, plastic values she has come to represent in some circles.[24] Indeed, this song is not the first time that Mattel's product has been talked about because of its cultural significance: the doll "has been seen as feminist and antifeminist; as seductive and as wholesome; as intelligent and as a `dumb blond.' Barbie has been hailed as a role model and condemned as the cause of eating disorders." (Defs.' Mot. at 3).

Nor is this the first song to tweak the wholesome image that Mattel wants for its doll.[25] Plaintiff dismisses such criticism of its product as simply the view of a "few extremists," but this argument only emphasizes the fact that individuals disagree about the meaning and values associated with the doll (Pl.'s Opp'n at 7 n. 17) a fact recognized in a book put out under Mattel's copyright just a few years ago.[26] Indeed, the Ninth Circuit recently observed that the Barbie trademark was an example of a fanciful mark that has "add[ed] to the splendor of our language by giving us new ways to express ourselves." Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1132 (9th Cir.1998). The Court noted that, just as a "[l]ousy, mindless work is a McJob," and "[a] quick fix is a Band-Aid[,] Glitz and ditz make for a Barbie World." Id.

*1140 Plaintiff makes the mistaken assumption however, that to warrant First Amendment protection, the song can only be about the doll and that if it has meaning beyond the doll, defendants are stripped of their First Amendment interests. Plaintiff purportedly bases this argument on the Ninth Circuit's decision in Dr. Seuss, in which the Court observed a distinction between "parody (in which the copyrighted work is the target) and satire (in which the copyrighted work is merely a vehicle to poke fun at another target)." 109 F.3d at 1400. The Court made this distinction in the context of copyright infringement, in which the defendants' book copied the distinctive "stove-pipe hat" worn by a feline character from The Cat in the Hat, a children's book written by Dr. Seuss (née Theodor S. Geisel). Defendants used this image numerous times throughout the book and also copied Dr. Seuss' "whimsical poetic style." Id. at 1397-98. The Court rejected defendants' fair use defense on the grounds that they had appropriated Dr. Seuss' work, not to parody it, but rather to use it to satirize something entirely different the O.J. Simpson trial. Id. at 1399-1401. The book did not hold Dr. Seuss' "style up to ridicule"; instead, it only copied elements of his Cat in the Hat books "`to get attention' or maybe even `to avoid the drudgery in working up something fresh.'" Id. at 1401.

This case differs significantly from Dr. Seuss. First, unlike the copyright dispute in Dr. Seuss, Mattel's trademark infringement case is based on defendant's use of the word "Barbie." See also Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir.1989) ("Because overextension of Lanham Act restrictions in the area of titles [of artistic works] might intrude on First Amendment values, we must construe the Act narrowly to avoid such a conflict."). Defendants do not use the image of the Barbie doll anywhere on their album, nor do the singers make themselves appear to look like the dolls Barbie and Ken, unlike the Dr. Seuss defendants' use of Geisel's images and writing style. Instead, they invoke the name of "Barbie," poking fun at both her and the plastic values she represents. Plaintiff's broad reading of Dr. Seuss would eviscerate the use of brand names as metaphors for the values they have come to symbolize; only songs and books that poke fun at the product and nothing else would receive First Amendment protection under plaintiff's interpretation. This approach would conflict with binding precedent on the protection afforded to expressive works such as parodies. See Acuff-Rose, 510 U.S. at 581, 114 S. Ct. 1164 (observing that "parody often shades into satire when society is lampooned through its creative artifacts" and that individual parodies need to be assessed on a case-by-case basis); Fisher, 794 F.2d at 437-38. As the New Kids Court observed, "[m]uch useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademarks." 971 F.2d at 307; see also Girl Scouts of U.S. v. Bantam Doubleday Dell Publishing Group, 808 F. Supp. 1112, 1119 (S.D.N.Y.1992) ("To prevent filmmakers, novelists, painters, and political satirists from including trademarks in their works is to cordon off an important part of modern culture from public discourse."), aff'd, 996 F.2d 1477, 1478 (2d Cir.1993) (affirming "substantially for the reasons" given in the lower court's "careful opinion").

As the Dr. Seuss Court itself observed, "[p]arody is regarded as a form of social and literary criticism, having a socially significant value as free speech under the First Amendment." Dr. Seuss, 109 F.3d at 1400. Courts have observed that songs are also "indisputably works of artistic expression" deserving of First Amendment protections. Rogers, 875 F.2d at 997; see also Fisher, 794 F.2d 432. Because this Court finds that the song Barbie Girl is a parody, it will also consider defendants' First Amendment interests in commenting on a popular brand name when evaluating plaintiff's trademark infringement claims.

Plaintiff argues that the song Barbie Girl infringes upon its federal trademark in the name "Barbie" and that the song title will likely confuse consumers into believing that the song is part of the Barbie product line. Defendants respond that plaintiff exaggerates *1141 the reach of its trademark and cannot silence song parodies that poke fun at its product simply because they use the word "Barbie" in their title or lyrics.

The Lanham Act provides that

Any person who shall, without the consent of the registrant

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering in sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive ... shall be liable in a civil action by the registrant....

15 U.S.C. § 1114(1) (a) (West 1997).

The Ninth Circuit has observed that the purpose of trademark has "remained constant and limited: Identification of the manufacturer or sponsor of a good or the provider of a service." New Kids, 971 F.2d at 305. Trademarks represent "a limited property right in a particular word, phrase, or symbol." Id. at 306. It does not allow trademark holders to censor or silence all discussion of their products that they find annoying or offensive. Cf. id. at 307 (discussing loss to social discourse if speakers cannot make reference to a product by using its trademark). Before applying trademark law to this case, however, the Court will consider whether the song's references to Mattel's doll fall outside the trademark context as a fair use of the term "Barbie."

Generally, the Ninth Circuit applies an eight-factor "likelihood of confusion standard" to both common law and federal statutory trademark infringement. See Dr. Seuss, 109 F.3d at 1403-04; AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979); but see Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490, 495 n. 3 (2d Cir.1989) (noting that this multifactor test is "at best awkward in the context of parody, which must invoke the original and constitutes artistic expression"). However, in New Kids on the Block, the Ninth Circuit recognized that the "nominative use of a mark where the only word reasonably available to describe a particular thing is pressed into service lies outside the strictures of trademark law." 971 F.2d at 308; see also In re Dual-Deck Video Cassette Recorder Antitrust Lit., 11 F.3d 1460, 1467 (9th Cir.1993) (holding that VCR manufacturer's descriptive use of the term "VCR 2" was a fair use as a matter of law). The Ninth Circuit applies a fair use test, rather than the likelihood of confusion test, in cases "where the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one[,][s]uch minimal use of a mark where the only word reasonably available to describe a particular thing is pressed in service lies outside the strictures of trademark law." 971 F.2d at 308.

The New Kids case involved two newspapers that conducted polls by phone about readers' reactions to the musical group New Kids on the Block. The papers set up "900" numbers and charged their readers anywhere from 50 to 95 cents per minute to respond to the questions in the poll. The band brought a trademark infringement suit against the newspapers. Id. at 304-05.

New Kids recognized that the newspaper's use of the name constituted a "fair use" because it was used to describe the plaintiff's product (i.e. the band) rather than its own (i.e. its reader polls). Id. at 308. The Court reached this result even though the band had their own phone lines for their fans to call. Id. at 309. The Court specifically noted that the case differed from "the classic fair use case where the defendant had used the plaintiff's mark to describe the defendant's own product." Id. at 308.

Here, defendants' use of the term "Barbie" refers to the doll and the values it has come to represent. By describing the doll's "life in plastic" and the various ways young consumers play with the doll ("you can brush my hair, undress me everywhere"), the band Aqua is not speaking specifically about its own product, but rather is commenting on and parodying Mattel's. Although the title of the song, Barbie Girl, also refers to the product sold by defendants, the use of the term "Barbie" in this context describes a type of girl one who is vacuous, unreal, and *1142 plastic. As noted earlier, the term "Barbie" has acquired a variety of cultural associations, not all of which are positive. The use of the term plays directly upon these associations. Cf. Acuff-Rose, 510 U.S. at 580, 114 S. Ct. 1164 ("[T]he heart of any parodists 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 work").

The New Kids Court set out a three-part test for a "commercial user ... [to be] entitled to a nominative fair use defense":

First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

Id. at 308. Defendants meet each of these three elements.

First, defendants cannot effectively parody or comment on the Barbie doll without mentioning her by name.[27]See id. at 306 (observing that "it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, ... or any other purpose without using the mark"); see also Rasted Decl. at ¶ 11 (noting that the songwriter's intent was "to compose a humorous song about the `Barbie fantasy world.'"); Defs.' Mot. at 24 ("A principal underlying message of Barbie Girl having to do with the vacuous, `plastic,' and frivolous lifestyle suggested by the doll and all of her possessions simply could not be made without evoking the Barbie doll iconography.").

Second, the song's use of the term "Barbie" is for purposes of parody. (See Rasted Decl. at ¶¶ 10-14); see also Fisher, 794 F.2d at 435 (noting that Congress has recognized parody as a potential "fair use" activity in the context of copyright law). Referring to Barbie as a "bimbo" living in a plastic world, the song critiques the party-girl image that Barbie has acquired in some quarters. (See Lanham Decl., ¶ 35). The singers do not adopt the image or likeness of the dolls, either on any of the CDs or in the video. Indeed, the singers (the dark-haired female lead, with a tattoo on her arm, and the bald male singer with blue markings on the sides of his head, see Pruetz Decl., Ex. E1), do not resemble the traditional images of Barbie with blond hair or Ken with a full head of hair. Nor does MCA adopt the Barbie logo used by Mattel.

Further, the repeated use of the words "Barbie" and "Ken" are reasonably necessary for the purposes of parody. In the song, the singers adopt the identity of the dolls and sing to each other about their lives. Barbie refers to herself as a "blond bimbo girl in a fantasy word," who can be undressed, played with, and easily manipulated ("Make me walk, make me talk, do whatever you please"). Ken, in turn, urges Barbie to join him in partying. The lyrics poke fun at the dolls and their images through role-playing by the singers. (See also Pruetz Decl., Ex. F5, at 234). Because the singers adopt the identities of the dolls, singing lyrics that poke fun at them, the repeated use of the terms "Barbie" and "Ken" is consistent with the purposes of parody or social commentary.

Third, defendants' album identifies on the CD case that the song "is a social comment and was not created or approved by the makers of the doll," although the warning does not appear on all versions of the CD single. This warning suggests that defendants attempted to disassociate themselves from Mattel, although they should have included it on all of their CDs. Defendants at least attempted to show that their song is not *1143 endorsed by Mattel. Consumers Union of United States, Inc. v. General Signal Corp., 724 F.2d 1044, 1053 (2d. Cir.1983) ("Disclaimers are a favored way of alleviating consumer confusion as to source or sponsorship.").

Plaintiff claims that defendants cannot meet the third prong of the test because they allegedly suggested that the song was endorsed by Mattel. To support this point, plaintiff cites its own survey in which it asked participants the following question: "Do you think the company which owns the Barbie doll brand gave its permission to use the Barbie name on the music CD package?" (Cogan Decl, Ex. C, at 21). According to plaintiff's calculations, 39% of participants answered yes, 51% answered no, and 10% were uncertain.[28] (Id.). Plaintiff asserts that these numbers show actual confusion among consumers, although its own calculations show that only 4% of respondents thought that Mattel or Barbie was the company that "puts out the music video and CD," when asked an earlier, more neutral question (Id. at 20).

Despite plaintiff's assertions regarding actual confusion, however, the New Kids fair use test is not a likelihood of confusion standard. The focus lies, instead, on whether defendants took actions to "capitalize on consumer confusion or to appropriate the cachet of one product for a different one." New Kids, 971 F.2d at 308. In addition to the warning on the CD, defendants took other actions to avoid confusion. For example, in a marketing plan for the album dated July 31, 1997, defendants noted that "obvious promo items that will give the project an added novelty feel (Barbie dolls, etc.) won't be utilized to keep the campaign focused to a broad demo, as well as avoid any direct connection or conflict to Mattel or the Barbie doll." (Pruetz Decl., Ex. X, at 402) (emphasis added). Further, in a June 26, 1997, memo by Universal regarding the plan to promote Aqua, defendants wrote that

[a] decision was taken that there should be no (or if essential, very limited) tie-ins with Mattel (manufacturers of the barbie doll). The feeling was that we did not need this tool to market our brand, "Aqua." The band has a strong image and we did not want the consumer to get confused thinking our track "Barbie Girl" was about the doll or associated products which could label this track and the band as a one off novelty record.... This is not a quirky, one off single, Aqua is a real band, and "Aquarium" is a great pop album, full of follow up singles, with a huge sales potential.

(Id., Ex. V, at 397). It appears that defendants wished to avoid creating consumer confusion and took steps to decrease the chance that consumers would mistakenly assume that Mattel endorsed or was connected with this single. Defendants did not "suggest sponsorship or endorsement by the trademark holder."[29]New Kids, 971 F.2d at 308.

For the foregoing reasons, the Court finds that the New Kids on the Block factors apply and that defendants' use of the term "Barbie" is outside the trademark context.

As an alternative holding, the Court will also consider whether summary judgment is appropriate under the more traditional *1144 likelihood of confusion test.[30] These factors, known as the Sleekcraft test, including the following:

(1) the 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; (7) defendant's intent in selecting the mark; (8) likelihood of expansion of the product lines

Dr. Seuss, 109 F.3d at 1404 (citing Sleekcraft, 599 F.2d at 348-49). These factors are not exhaustive, and the court may take into account "[o]ther variables ... depending on the particular facts presented.'" Id.; see also Eclipse Assoc. v. Data General Corp., 894 F.2d 1114, 1118 (9th Cir.1990) (observing that the various formulations of the likelihood of confusion test "were not meant to be requirements or hoops that a district court need jump through to make the determination."). In addition, the Ninth Circuit has recognized that a court can determine as a matter of law that a plaintiff cannot demonstrate a "likelihood of confusion." Murray v. Cable National Broadcasting Co., 86 F.3d 858, 860 (9th Cir.1996), cert. denied, ___ U.S. ___, 117 S. Ct. 689, 136 L. Ed. 2d 613 (1997); Newton v. Thomason, 22 F.3d 1455, 1462 (9th Cir.1994); Chesebrough-Pond's, Inc. v. Faberge, Inc., 666 F.2d 393, 399 (9th Cir.), cert. denied, 459 U.S. 967, 103 S. Ct. 294, 74 L. Ed. 2d 277 (1982); Toho Co. v. Sears Roebuck & Co., 645 F.2d 788, 790-91 (9th Cir. 1981).

An additional factor that this Court will consider is the First Amendment interests at stake in this case. See Cliffs Notes, 886 F.2d at 494 ("[I]n deciding the reach of the Lanham Act in any case where an expressive work is alleged to infringe a trademark, it is appropriate to weigh the public interest in free expression against the public interest in avoiding consumer confusion.").[31] Although the First Amendment does not prevent trademark law from applying to artistic works, courts must be careful not to trammel on free speech values in protecting trademarks. Indeed, the Ninth Circuit has explicitly warned that plaintiffs *1145 cannot "use the trademark laws ... to censor all parodies or satires which use their name." New Kids, 971 F.2d at 309; see also Rogers, 875 F.2d at 998 (noting that "[b]ecause overextension of Lanham Act restrictions in the area of titles [of artistic works] might intrude on First Amendment values, we must construe the Act narrowly to avoid such a conflict"); see also Girl Scouts, 808 F. Supp. at 1118 ("The owner of a trademark does not possess a property right that is superior to the First Amendment right accorded to artistic expression.").

Plaintiff asserts, however, that defendants have no First Amendment defense against the Lanham Act by citing the Ninth Circuit's opinion in Dr. Seuss. In that case, the Court observed that "the cry of `parody!' does not magically fend off otherwise legitimate claims of trademark infringement or dilution" and that the claim of parody can provide "no defense `where the purpose of the similarity is to capitalize on a famous mark's popularity for the defendants' own commercial use." 109 F.3d at 1405-06 (internal citations omitted). The Court added that "[i]n a traditional trademark infringement suit founded on likelihood of confusion rationale, the claim of parody is not really a separate `defense' as such, but merely a way of phrasing the traditional response that customers are not likely to be confused as to the source, sponsorship, or approval." Id. at 1405. Indeed, as the Second Circuit has noted, a successful parody "depends on lack of confusion to make its point." Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497, 504 (2d Cir. 1996).

As noted earlier, however, Dr. Seuss involved an entirely different set of facts, in which defendant copied the images and writing style of another book to tell the story of the O.J. Simpson trial. Id. at 1397-98. Here, defendants have used the name "Barbie" to poke fun at a popular product. Dr. Seuss itself recognized the protection the First Amendment provides to works of parody, and it did not hold that all claims of "parody" as a defense are frivolous, just those that "solely capitalize[d]" on another's fame to satirize something completely different. 109 F.3d at 1400.

Even if Aqua knew that parodying a popular product would attract favorable attention, this knowledge alone cannot erase their First Amendment interests in commenting on Barbie: if it did, then no unknown group could criticize popular products because the accusation of trying to gain attention would always exist. The First Amendment's protections must apply even to those whose parodies target the strong, popular, or well-established. Defendants parody Barbie specifically and do not, like the Dr. Seuss defendants, merely use Barbie as a vehicle to satirize something completely different.[32] For these reasons, the Court will consider defendants' First Amendment interests after considering the eight more traditional factors of the likelihood of confusion test.

Defendants concede that the Barbie mark is strong, at least at to dolls and doll-related products. Although "an undeniably strong mark" usually favors plaintiffs, it can also favor some defendants who poke fun at the mark because "a parody depends on a lack of confusion to make its point." Hormel Foods, 73 F.3d at 503. Here, the lyrics of the song refer to Barbie as a "blond bimbo." If Mattel is correct that its product has a "wholesome image [that] Mattel has conscientiously developed for its BARBIE products," (see Pl.'s Opp'n at 7), then consumers would be more likely to recognize Barbie Girl as a parody.

In Toho v. Sears, Roebuck, the Ninth Circuit held that two product lines *1146 were "unrelated as a matter or law." 645 F.2d at 790. In that case, defendant sold under the name "Bagzilla" garbage bags that included a cartoon reptile on their packaging and carried the legend "Monstrously Strong Bags." Toho, a Japanese company that owned the name and image of the movie monster Godzilla, sued for false designation of origin. The Court applied the Sleekcraft factors and observed that the products were unrelated as a matter of law: it noted that "Sears sells garbage bags. Toho produces or sponsors only literary works and toys." Id.; see also Sleekcraft, 599 F.2d at 348 ("If the goods are totally unrelated, there can be no infringement because confusion is unlikely"); Mejia & Assoc. v. IBM Corp., 920 F. Supp. 540, 547-48 (S.D.N.Y.1996) (noting that "[r]elevant considerations [for the proximity of goods factor] include the extent to which the goods or services fall within the same class or are used together, as well as any differences in content, purpose, geographic distribution, market position, and audience appeal").

In this case, defendants assert that Mattel's products (i.e. toys) and its own products (i.e. music) are unrelated as a matter of law. Defendant note that "[t]hey sell musical albums, cassettes, CDs, and other types of `stand alone' forms of pre-recorded music that are played on the radio, telecast on MTV, sold in record stores, and tracked on the Billboard charts. Mattel simply does not do this...." (Defs.' Reply at 8). Mattel, however, claims that it "licenses the same types of music products under the BARBIE mark as the defendants' BARBIE GIRL products: compact discs, audio cassettes, video cassettes and CD-ROMs."[34] (Pl.'s Opp'n at 16).

Several high-level employees at Mattel admitted in their depositions that they were unaware of any stand-alone CD, audio cassette or vinyl record of prerecorded music that was currently being sold by Mattel (other than music sold with a toy or as part of computer software or videos). (See McKenzie Dep. at 292-294 (executive vice president and general manager of Barbie worldwide); Haddad Dep. at 116-17 (general manager of Mattel Media); Fontinella at 44-45 (Senior Vice President of worldwide licensing and new ventures)). None of plaintiff's trademark registrations listed in its complaint (which includes dolls, books, purses, watches, bubble bath, and clothing) applies to records, CDs, or cassettes.[35] (See Second Am.Compl., Ex. 1-27).

Plaintiff alleges, however, that "Mattel has produced and licensed numerous music products," including two vinyl records ("Barbie Sings" and "Barbie and the Beat"), music videocassettes sold with "Dance! Workout with Barbie" and "35th Birthday Barbie," an audiocassette and CD version of "Barbie: The Look," a musical cassette tape, "Barbie Country Music Dancing With Me," and "at least eight music CD-ROMs."[36] Several of *1147 these products, however, are simply toys with accompanying music. (McKenzie Dep. at 190; McKenzie Decl. ¶¶ 11-12, Ex. D). In addition, Mattel provides no indication that these products are still being marketed: for example, the vinyl records are copyrighted in 1961. (Id. at Ex. F). In an earlier declaration, plaintiff attempted to describe such toy products as a miniature concert stage and music stores as examples of its music products. (Id. at ¶ 12). Mattel's products (including its purported music products) are unrelated to defendants' Barbie Girl CDs as a matter of law, with the exception of one Barbie Girl CD-ROM.

Defendants' CD-ROM, which contains a version of the video for Barbie Girl, is the only example of defendants' products that is the same type of product as that sold by Mattel. Even here, however, significant differences exist between the products. Plaintiffs so-called "musical" CD-ROM products include "Barbie Magic Hair Styles" and "Barbie Ocean Discovery." A consumer purchasing plaintiff's CD-ROM products, however, would not believe that they were buying music or a music video instead of a computer program. See Haddad Dep. at 50-51 (discussing Barbie Magic Hair Styler as allowing a child to do "virtual hair styling on the computer").[37] In contrast, the Barbie Girl CD-ROM only contains the video of the song and remixes of the single.[38]

In assessing similarity, courts are to look at "the marks and names in their entirety and as they appear in the marketplace." Nutri/System, Inc. v. Con-Stan Industries, Inc., 809 F.2d 601, 605-06 (9th Cir.1987) (quoting Alpha Industries, Inc. v. Alpha Steel Tube & Shapes, Inc., 616 F.2d 440, 444 (9th Cir.1980)); see also Gallo, 967 F.2d at 1291. "[M]arks are not `similar' for purposes of assessing likelihood of confusion simply because they contain an identical or nearly identical word."[39]Mejia, 920 F. Supp. at 547.

*1148 The marks on defendants' product are not similar to Mattel's, as they use different lettering, styles, and even colors. (See discussion of trade dress, below). Further, the packaging of Mattel's products generally includes either an image of the Barbie or Ken doll or in other cases is transparent, revealing the actual doll.[40] None of Aqua's packaging has an image of any doll on it, whether resembling Barbie or not. All of Aqua's music CDs have a picture on their covers of the four band members, none of whom resemble Barbie or Ken.[41]

In addition, defendant's eleven-song CD album is mostly blue and has in large, rounded-block letter, the word "Aqua" and in smaller print, "Aquarium." On the back of the album, eleven song titles are listed, all in small-size yellow lettering. Barbie Girl is listed as track number three and has an asterisk next to it. This symbol refers to another asterisk below, which is next to a sentence in yellow warning that "[t]he song `Barbie Girl' is a social comment and was not created or approved by the makers of the doll." The back of the album also identifies MCA as the copyright holder. This album is quite dissimilar from the style of packaging used on any of plaintiff's products.

The trade dress on plaintiffs' CD single versions of the song also differ significantly from plaintiff's product.[42] All contain the word "Aqua" in big, blue letters on their front covers, as well as a picture of the band. The fact that the words "Barbie Girl" always appear next to the words "Aqua" on the packaging is significant in that it decreases the likelihood of consumer error and confusion. The context in which the marks appear is important. See Hormel Foods, 73 F.3d at 503, 504 (noting that a character named "Spa'am" was always associated with the words "Muppet Treasure Island," decreasing the likelihood that consumers would confuse the Muppets' wild board puppet with Hormel's meat product known as Spam).

The differences in packaging between Mattel and MCA's products set this case apart from the books at issue in Dr. Seuss. In that case, the offending book expropriated the image of a hat used in Dr. Seuss' books and placed in on the front and back cover of the product. Dr. Seuss, 109 F.3d at 1402. Here, however, the band does not use any images of the Barbie doll itself, and the name "Aqua" is always the largest lettering on the packaging.

Some consumer confusion is inevitable when a few people fail to realize that one product is parodying another. Indeed, "[b]efuddlement is part of the human condition. No matter how clear the markings, no matter how different the names, no matter how distinctive the bottles, some confusion is inevitable." Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909, 912 (7th Cir.1996). The fact that a plaintiff can point to some evidence of confusion in the abstract does not automatically mean that such confusion affects actual purchasing decisions. See Lang v. Retirement Living Pub. Co., Inc., 949 F.2d 576, 583 (2d Cir.1991) ("[N]o evidence links the confusion evinced by the [400 misdirected] calls [received by plaintiff] to any potential or actual effect on consumers' purchasing decisions."). Nor does a showing of some actual confusion automatically create a triable issue of fact. Universal Money Centers, Inc. v. AT&T, 22 F.3d 1527, 1535 (10th Cir.), cert. denied, 513 U.S. 1052, 115 S. Ct. 655, 130 L. Ed. 2d 558 (1994); Universal City, 746 F.2d at 118.

*1149 As noted earlier, only four percent of survey participants in the Cogan survey indicated that they believed that Mattel or Barbie was the company that "puts out the music video and CD (music CD)" that the participants had just seen. (Cogan Decl., Ex. C, at 19). Even when asked the compound and vague question of what company is "connected with or gave permission" for defendants' CD and video, only 17 percent answered Mattel or Barbie. (Id.). Compare with Gallo, 967 F.2d at 1292 (finding that 40% of nationwide participants believed plaintiff "put[ ] out" defendants' similarly named cheese product). The fact that participants associate or connect plaintiffs' product with defendants is not itself evidence of confusion. Prudential Ins., 694 F.2d at 1156.

Plaintiff furthers points to "29 unsolicited e-mail [at the Barbie website] and at least 10 oral inquiries" as evidence of actual confusion. (Pruetz Decl., Ex. M). Although some of these e-mails inquire about obtaining the song, others simply repeat lyrics of the song, state that they "love" the song, or even explicitly recognize that the song was not approved by Mattel. (Id.). These responses are ambiguous, at best, as to whether the writers believe Mattel is responsible for the song. Universal Money Centers, 22 F.3d at 1535 ("De minimis evidence of actual confusion does not establish the existence of a genuine issue of material fact regarding likelihood of confusion....").

Plaintiff argues that its products are sold in the same stores as defendants' product and advertised through similar venues. Defendants, in turn, claim that their song is sold in record stores and in record departments and that their advertising channels differ.

Reviewing the evidence favoring the plaintiff, it does appear that plaintiffs' products are sold in some cases in the same stores as the Barbie Girl CD, although plaintiff has not shown that any of its products are sold in the music sections of these stores, where defendants' CDs are sold. See Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 967 (2d Cir.1981) (considering as a factor against finding likelihood of confusion the fact that BRAVO's crackers were shelved in a store's "cookies and crackers" section, while BRAVOS chips were shelved with "salty, crunchy snacks"); Sunenblick v. Harrell, 895 F. Supp. 616, 629 (S.D.N.Y.1995) (finding no likelihood of confusion between jazz music and rap music both labeled "Uptown Records" and observing that "[a]lthough the products are sold in the same channels of trade, they are not sold side-by-side; rather, they are featured in different sections of the stores in which they are sold, according to genre and not by label name"), aff'd, 101 F.3d 684 (2d Cir.1996). Cf. Levi Strauss Co. v. Blue Bell, Inc., 778 F.2d 1352, 1359 (9th Cir.1985) ("A buyer cannot ... be confused unless he is looking for a label in his recognizes and picks up another in his confusion").

As evidence that the goods are sold in the same sections of stores, plaintiff provides the declaration of a paralegal employed by the law firm of plaintiff's counsel. In his declaration, Vincent Grant states that in his trips to various stores in Southern California, he sometimes encountered Mattel products being sold within five to ten feet of the Barbie Girl CD.[43] The products he compares, however, are unrelated. See Toho, 645 F.2d at 790. For example, he claims that at a Borders Book Music & Cafe store, he found defendants' product "approximately five feet away" from plaintiff's. (Grant Decl. ¶ 8). However, defendants' product is a musical CD located among other CDs; plaintiff's product is a book on collecting Barbie dolls. (Grant Decl., Ex. J-K). At the other stores, the only Barbie products Grant finds are computer CD-ROMs, toy products, and videos. Plaintiff does not show a single instance in which its products are sold among the other music CDs and cassettes at these mega-stores.[44]See Vitarroz Corp., 644 F.2d *1150 at 967 (observing that "modern marketing methods tend to unify widely different types of products in the same retail outlets or distribution networks").

As to advertising, Mattel asserts that both parties "use the same media and target the same class of consumers. Defendants and Mattel both advertise their products through print, radio, television and the Internet." (Pl.'s Opp'n at 22). For example, plaintiff claims that both parties advertise on Top 40 radio. However, plaintiff recognizes that its product is promoted through advertisements while defendants' product is promoted through "air play." (Id.). The distinction only highlights how the products are unrelated: defendants' Barbie Girl is a song played on the radio and television with other songs. Plaintiff's products, however, are not music or songs but primarily dolls, clothing, and assorted other products. Indeed, defendants' product is apparently marketed as a musical product, and plaintiff shows no evidence that its products are marketed in a similar manner.[45] (See, e.g., Pruetz Decl., Ex. R (displaying Target mega-store advertisement listing Barbie Girl product among other advertisements for other music CDs)). Even assuming that plaintiff's evidence supports its assertion that the parties' products are marketed in the same venues (television programs, etc.), the evidence shows that defendants market their product as a standalone musical CD product. Plaintiff presents no evidence that it markets its products as music.

As to the consumers each side targets, plaintiff claims that both parties target young girls. (Pl.'s Opp'n at 23). However, its earlier papers provide contradictory information about whom its primary purchasers are. See Pl.'s Mot. for Prel.Inj. at 19 (identifying "typical buyer" as "young, unsophisticated person[s]"); Anson Decl. at 2 ("More than one billion BARBIE line dolls have sold worldwide, principally to girls aged 3 to 11."); Pl.'s Reply, Prel.Inj., at 16 (identifying primary purchasers as adults who buy toys for their children or collectibles for themselves); see also McKenzie Dep. at 79 ("The Barbie brand of products is targeted to people aged zero to 100 plus" and that its "music-related products" are targeted to all ages).

Defendants claim that they target teenagers and adults, while Mattel's products are targeted at young girls ranging from 2 or 3 to 10 or 11 years old. See Defs.' Mot. at 20; Luther Dep. at 116 (Mattel senior vice president for marketing research worldwide) (agreeing that its target market was girls 5 to 10); Pl's Opp'n at 23 (referring to "Mattel's young female market").[46]

According to market research based on approximately 20,000 bounce back cards filled out by consumers who purchased Aqua products, 66% of "Aqua fans" are female and 65% of the fans were under the age of 18. *1151 (Healy Decl., Ex. B1, at 18). The data also is broken down along more specific age groups: 2% (under age 8), 38% (ages 8-13), 25% (ages 14-17), 15% (ages 18-21), 8% (ages 22-25) and 12% (ages 26 or higher). (Id. at 23). The average age was 16.9. (Id.). See also Pruetz Decl., Ex. H, at 240 (indicating that MCA contacted Hasbro "regarding male versus female voice-overs in commercials [regarding Barbie Girl] targeting female `tweens,' defined at ages 9 to 14").

This data suggests some overlap in the demographic groups targeted by the two parties, although plaintiff does not provide clear data about the age of its purchasers, as opposed to consumers: for example, although a product may be targeted at young people, their parents may be the ones who actually purchase the dolls. Assuming that the bounce back cards were filled out by the purchasers of the CDs, it would appear that the average age of MCA's purchasers is 16.7. The relevance of the purchaser's identity is that they are they ones who may or may not be confused when confronting products with similar marks in the marketplace. The age of the average purchaser, whether a young child or an adult, can also affect the degree of care with which they purchase products.

The Court notes that, assuming the bounce back cards reflect purchasers of MCA's products, the average buyer of Barbie Girl is a teenager. In its papers, plaintiff has variously claimed that its primary purchasers are young children and adults two groups distinct from teenagers.[47]

Defendants claim that they chose the name "Barbie" not to confuse the public but rather to parody the doll and make a comment on the values it represents. (Rasted Decl. ¶ 11) ("As I wrote the song, I knew that Barbie was a popular doll.... My intention was to use that imagery and evoke and comment on a `Barbie World.'"). As to this element, plaintiff need not show that defendants "intended to deceive consumers." Gallo, 967 F.2d at 1293. The weight of this factor is somewhat diminished in the context of parody, however, as all parodists of consumer products "intend to select" the products' mark to make their comments. See also Cliffs Notes, 886 F.2d at 494 (recognizing the need to balance First Amendment interests against likelihood of confusion, in part because it "allows greater latitude for works such as parodies, in which expression, and not commercial exploitation of another's trademark, is the primary intent"); Hormel Foods Corp. v. Jim Henson Productions, Inc., 36 U.S.P.Q.2d 1812, 1818 (S.D.N.Y.1995) ("Henson acknowledges that it meant to invoke Hormel's trademark as a joke. This does not mean that Henson intended to cause confusion in the minds of consumers."), aff'd, 73 F.3d 497 (2d Cir.1996).

As noted earlier, plaintiff's "evidence" of intent include marketing documents by defendants that indicate a desire to avoid unnecessary connections to Mattel, specifically to "avoid any direct connection or conflict to Mattel." See Pruetz Decl., Ex. X, at 402. Plaintiff further alleges that the fact that the "bounce back" cards accompanying some of defendants' product are evidence of intent because the cards asked consumers if their hobbies included "collecting Barbies." See Healy Decl., Ex. B1, at 22. However, this answer was one of nine options presented to consumers.[48] Even if plaintiff's assertion that questions such as these show defendants were going after the same target audience (i.e. young girls), it does not directly show that defendants intended to confuse consumers regarding the parties' respective products. See Newton, 22 F.3d at 1463 (observing that plaintiff failed to show that defendants "intended to profit by confusing consumers") (emphasis in original).

*1152

Throughout this litigation, plaintiff refers to "Barbie Girl" products. However, the only product here is one song, Barbie Girl, which is sold in different forms and is performed by a new group that will be using totally different songs in future productions. (See Rasted Decl. at ¶ 17).

Mattel claims that it is intending to expand its own line of products to include singles, albums, and CDs bearing the Barbie trademark. (Pl.'s Opp'n at 27 (citing McKenzie Decl., 276-277)). However, "the intent of the prior user [of a mark] to expand or its activities in preparation to do so, unless known by prospective purchasers, does not affect the likelihood of confusion." Lang, 949 F.2d at 582. Plaintiff provides no evidence that consumers were aware of these expansion plans at the time the Aqua CD was first released in the United States in 1997.

Likewise, plaintiff's assertions that defendants intended to market "a pink heart-shaped purse with BARBIE GIRL emblazoned on it" is irrelevant to the issue of expansion of products if consumers are unaware that the product was to be released. Plaintiff offers no evidence that consumers were aware of this potential product.

As stated above, the Court finds that the Barbie Girl song is a parody. The Supreme Court has observed that

parody has an obvious transformative value.... Like less ostensibly humorous forms of criticism, it can provide social benefit, by shedding light on an earlier work, and, in the process, creating a new one....

Acuff-Rose, 510 U.S. at 579, 114 S. Ct. 1164. The Court recognized the importance of these works in social discourse, even when some individuals fall to realize that they are parodies: "First Amendment protections do not apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed." Id. at 583, 114 S. Ct. 1164 (quoting Yankee Publishing, Inc. v. News America Publishing, Inc., 809 F. Supp. 267, 280 (S.D.N.Y.1992)). Nor does the fact that defendants targeted a popular trademark for parody leave their speech unprotected. See New Kids, 971 F.2d at 309.

As the Ninth Circuit has held, "the trademark laws do not give [plaintiffs] the right to channel their fans' enthusiasm (and dollars) only into items licensed or authorized by them." New Kids, 971 F.2d at 309. Defendants have produced a song that parodies plaintiffs' successful and well-known product. Censoring such parodies even ones that become profitable themselves raises serious dangers to the First Amendment.

In this case, the central issue is whether defendants can use the word "Barbie" in the title and lyrics of their song. Although some individuals inevitably will believe that titles and lyrics containing a celebrity or icon's name constitutes an endorsement, this risk "is outweighed by the danger of restricting artistic expression." Rogers, 875 F.2d at 1000. The First Amendment interests at stake outweigh the possibility that some people might not interpret the song's lighthearted lyrics as a comment or spoof of the popular Mattel product and might be confused as to whether Mattel put out or authorized the song Barbie Girl.

Besides its claims regarding the use of the name "Barbie," plaintiff also asserts that defendants have misappropriated plaintiffs trade dress, specifically the use of so-called Barbie "pink" in the Barbie Girl packaging and video.[49] (See Pl's Opp'n at 8; Pl.'s Mot. for Prelim.Inj. at 9). Trade dress is "the appearance of the product" and includes such features as "size, shape, color, color combinations, texture, or graphics." Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1506 (9th Cir.1987). Indeed, "[t]rade dress is the totality of elements in which a product or service is packaged or presented. These elements combine to create the whole visual image presented to customers....." *1153 Stephen W. Boney, Inc. v. Boney Services, Inc., 127 F.3d 821, 828 (9th Cir.1997).

To recover for trade dress infringement under 15 U.S.C. § 1125, plaintiff has the burden of showing that "its trade dress is protectable and that defendant's use of the same or similar trade dress is likely to confuse consumers." Rachel, 831 F.2d at 1506 (quoting Fuddruckers, Inc. v. Doc's B.R. Others, 826 F.2d 837, 841 (9th Cir.1987)). "Under this analysis, trade dress may be protected if it is nonfunctional and has acquired secondary meaning and if its imitation creates a likelihood of consumer confusion." Id. (quoting Fuddruckers, 826 F.2d at 842).

Plaintiff cannot show that its use of the color pink has acquired secondary meaning. The color pink is used on many products associated with young girls, (see Folkes Decl. ¶ 15), and plaintiff provides no evidence as to how its pink differs from that used on these other products. See Mana Products, Inc. v. Columbia Cosmetics, Mfg., Inc., 65 F.3d 1063, 1071 (2d Cir.1995) ("[T]here are countless numbers of cosmetic companies that sell black compacts"); Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527 (Fed. Cir.1994) (holding that outboard motor company could not register the color black as its distinctive mark, partly on the grounds that other companies used black on their engines and that such use reflected a "competitive need"), cert. denied, 514 U.S. 1050, 115 S. Ct. 1426, 131 L. Ed. 2d 309 (1995). Nor does plaintiff point to any evidence that its use of white lettering on a pink background is unique.

Plaintiff argues, however, that it is seeking registration for the word "Barbie" on a field of pink. (See Second Am.Compl., Ex. 28). In its application for trademark registration with the United States Patent and Trademark Office, plaintiff attaches an image of the word "Barbie" that has "stylized," slanted white lettering, apparently on a pink background.[50] (Id. at 67, 70). This application, however, specified that plaintiff has used this mark in connection with "dolls, doll clothing and doll accessories." (Id. at 66). No mention is made of records, music, or CD products.

Plaintiff offers no evidence that pink and white lettering has acquired a "secondary meaning" with consumers. Boney, 127 F.3d at 828. Indeed, "a product feature whose only impact is decorative and aesthetic, with no source identifying role, cannot be given exclusive rights under trade dress law." Id. (quoting 1 McCarthy on Trademarks and Unfair Competition § 8.1). Although the word "Barbie" does denote the doll sold by Mattel, plaintiff has not demonstrated that the combination of pink and white are anything more than decorative colors used by Mattel and many other companies.

Even if plaintiff were correct that its pink and white trade dress were unique, significant differences exist between its packaging and that of the Barbie Girl song to prevent likelihood of confusion, at least as to trade dress. In comparing the packaging of the two products, this Court must consider the "totality of elements" involved in the packaging. Boney, 127 F.3d at 828.

Aqua's album, Aquarium, has a blue, watery background and contains yellow lettering for the eleven songs listed on the back. In big, rounded blue letters the word "Aqua" appears at the top of the CD. None of the song's lettering is larger than the other, and in fact, pink BARBIE pink or otherwise does not appear anywhere on the front or back of the CD case. (Pruetz Decl, Ex. E6). Likewise, the cassette version of the album does not contain any pink lettering. (Id. at Ex. E7).

Plaintiff's main complaint appears to be with the CD-single versions of the song. (Id. at E1-E3, E5, E9). However, a review of these packages reveals several significant differences. The cases for these CDs are mostly blue, with a picture of the band on all versions accept the CD-ROM. (See id.). The words "Barbie Girl" appear in pink block lettering. These letters have irregular borders and are shadowed in dark pink and outlined in both white and dark pink. At the top of every package of the CD are large, rounded blue letters spelling the word *1154 "Aqua"; these letters have a white and black outline, with an eye appearing within the letter "Q." The use of pink on these albums differs significantly from the white on pink lettering that Mattel is attempting to claim as its trade dress. The curved, relatively thin lettering used by Mattel is quite distinct from pink block lettering used by Barbie Girl. As mentioned earlier, Mattel offers no evidence that its use of pink or even pink and white is distinct to its products alone.

Because Mattel cannot establish "the existence of an element essential" of claim (i.e. that the use of pink or even pink and white lettering has acquired a secondary meaning) and because it bears the burden of proving that element, summary judgment as to Mattel's trade dress claims is appropriate.[51]See Celotex, 477 U.S. at 322, 106 S. Ct. 2548.

The Federal Trademark Dilution Act provides that

The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark.

15 U.S.C. § 1125(c) (1) (West 1997). The Act exempts from its reach the "[f]air use of a famous mark by another person in comparative advertising or promotion to identify the competing goods or services of the owner of the famous mark[;][n]oncommercial use of a mark[; and] [a]ll forms of news reporting and news commentary."[52]Id. at § 1125(c) (4). To prove dilution, a party need not show "the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception."[53]Id. at § 1127.

The Supreme Court has defined commercial speech in the First Amendment context as "speech which does no more than propose a commercial transaction."[54]Virginia *1155 State Bd., 425 U.S. at 762, 96 S. Ct. 1817; see also Cardtoons, 95 F.3d at 959 (noting that parody trading cards "are not transformed into commercial speech merely because they are sold for profit"). An accompanying House Report to the Federal Trademark Dilution Act provides that "[t]he bill will not prohibit or threaten `noncommercial' expression, as the term has been defined by the courts. Nothing in this bill is intended to alter existing case law on the subject of what constitutes `commercial' speech." H.R.Rep. 104-374. As parody is a form of noncommercial, protected speech, the Act does not affect the First Amendment protection accorded to it, a proposition recognized by several supporters of the legislation.[55]See also L.L. Bean, 811 F.2d 26 (applying First Amendment principles to protect parody against state anti-dilution claim).

Plaintiff contends that its famous mark is associated with wholesomeness and that defendants' song tarnishes that mark through its "sexual and denigrating lyrics." (Pl.'s Opp'n at 7). In its prior papers, plaintiff has characterized Barbie Girl as supporting "promiscuity, lewdness, and the stereotyping and denigration of young women." (Pl.'s Prel.Inj.Mot. at 25). However, plaintiff 