aqua MATTEL, INC., a Delaware corporation, Plaintiff, v. MCA RECORDS, INC., a California corporation, et al., Defendants. CV 97-6791-WMB UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF CALIFORNIA 1998 U.S. Dist. LEXIS 7310; 46 U.S.P.Q.2D (BNA) 1407 February 18, 1998, Filed; February 19, 1998, Entered JUDGES: Wm. Matthew Byrne, Jr., United States District Judge. OPINIONBY: Wm. Matthew Byrne, Jr. OPINION: ORDER DENYING PRELIMINARY INJUNCTION I. BACKGROUND In March, 1997, a Danish musical group known as "Aqua" released in [*2] 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 "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, where the Aquarium album sold over 1.4 million compact discs (CDs) and cassettes. (Defs.' Opp'n at 1). On September 11, 1997, Mattel ("plaintiff") filed suit in this Court, bringing the following eleven causes of action against MCA and other defendants: n1 (1) trademark and trade dress dilution, (2) trademark infringement, (3) false designation of origin and false description, (4) statutory and common law unfair competition, (5) unfair competition under the Paris Convention, (6) wrongful use of a registered mark; (7) common law misappropriation; (8) common law passing-off and disparagement; and (9) common law unjust enrichment, (10) contributory trademark and trade dress dilution, and (11) contributory trademark and trade [*3] dress infringement. Defendants, in turn, filed a counterclaim for defamation. n1 Mattel did not, however, sue the musical group Aqua. In its reply, Mattel claims that it is not attempting to "censor" the song, as it is only suing the companies that actually manufactured and distributed the CD. (Pl.'s Reply at 1). It also claims that any alleged harm to a nonparty is "irrelevant." (Id. at 34). Plaintiff's proposed preliminary injunction, however, calls for the destruction of all CDs with the "Barbie" mark on it. (Pl.'s Proposed Order at 3). Destroying all of Aqua's albums will undoubtedly have a disastrous effect on the new band itself, even if it is not named specifically as a defendant. (See Rasted Decl. P 18 (noting that an injunction stopping the production of Aqua's first album released in the United States could harm the prospects for its next album)). In addition, this case raises important First Amendment issues, and an injunction could have a direct effect on Aqua's free speech interests in parodying or commenting on Barbie. [*4] Mattel has now brought a motion for a preliminary injunction based on its claims for trade mark infringement, unfair competition, and trademark dilution. Mattel's proposed preliminary injunction asks this court to enjoin defendants from manufacturing, producing, or distributing the Barbie Girl song. It also requests that the Court require defendants to "dispose of or destroy[ ] any product or its packaging, which uses Mattel's BARBIE trade name." (Pl.'s Proposed Order at 3). In response, MCA has filed an opposition and motions to strike two of the three declarations filed in support of plaintiff's motion (those of Jean McKenzie and Weston Anson). In reply, Mattel filed its own evidentiary objections to many of defendants' declarations. II. THE PARTIES' EVIDENTIARY OBJECTIONS Defendants filed motions to strike the declarations of Jean McKenzie, executive vice-president of Mattel, and of Weston Anson, an intellectual property consultant. In response, plaintiff objected to defendants' declarations by Valerie Folkes, Richard Lanham, and Astrid Hansen, in their entirety, and to portions of the declarations of Bruce Wheeler, Soren Rasted, [*5] and Jeffrey Goldman. "The strict evidentiary rules governing a trial on the merits" do not apply to hearings for preliminary injunctions. Orantes-Hernandez v. Smith, 541 F. Supp. 351, 356 n.4 (C.D. Cal. 1982). In Orantes-Hernandez, the Court recognized that, although "many of plaintiffs' exhibits contain hearsay and other impermissible matter which could not be admitted to trial," plaintiffs often face "the need to act promptly hen bringing a preliminary injunction motion." Id. Indeed, courts "may give even inadmissible evidence some weight when to do so serves the purpose of preventing irreparable harm before trial." Flynt Distrib. Co., Inc. v. Harvey, 734 F.2d 1389, 1394 (9th Cir. 1984). This Court therefore denies each side's motions to strike. III. PRELIMINARY INJUNCTION STANDARD OF REVIEW The Ninth Circuit has identified two alternative tests for obtaining a preliminary injunction: "the moving party must show either (1) a combination of probable success on the merits and the possibility of irreparable injury, or (2) that serious questions are raised and the balance of hardships tips sharply in its favor." Big Country Foods, Inc. v. Board of [*6] Educ., 868 F.2d 1085, 1088 (9th Cir. 1989). "These formulations are not different tests but represent two points on a sliding scale in which the degree of irreparable harm increases as the probability of success on the merits decreases. Under either formulation, the moving party must demonstrate significant threat of irreparable injury, irrespective of the magnitude of the injury." Id.; see also Dr. Seuss Enterprises, L.P., v. Penguin Books USA, Inc., 109 F.3d 1394, 1397 n.1 (9th Cir.), cert. dismissed, 118 S. Ct. 27 (1997). IV. DISCUSSION A. The Song and Video as Parody The crux of plaintiff's 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 use 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. Indeed, parody has played an important role in social discourse. See Dr. Seuss, 109 F.3d at 1400; L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir.) ("Parody [*7] is a humorous form of social commentary and literary criticism that dates back as far as Greek antiquity."), cert. denied, 483 U.S. 1013, 97 L. Ed. 2d 753, 107 S. Ct. 3254 (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."). Mattel complains of Aqua's portrayal of its product, which generated $1.6 billion in sales in 1996, because Aqua's song associates its doll with "antisocial themes such as promiscuity, lewdness, and the stereotyping and ridiculing of young women." (Pl.'s Mot. at 2). Plaintiff asserts that "these adult-orientated lyrics convey a message that is inconsistent with the wholesome image Mattel has conscientiously developed." (Id. at 7). Plaintiff objects specifically to the following phrases sung by the pretend "Barbie" during the course of the song: "you can brush my hair, undress n2 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 walk, make me talk, do whatever you please, I can act [*8] 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 us go do it again, hit the town, fool around, let's go party." n2 Plaintiff claims that this lyric includes the word "undress me everywhere." A transcript of the lyrics provided by defendants describes the phrase as "and dress me everywhere." (Rasted Decl. at 26). However, a declaration by Richard Lanham, provided by defendants, also identifies the lyrics as "undress me everywhere." (Lanham Decl. P 37). Mattel's distaste for the song's alleged message, of course, cannot alone justify granting it a preliminary injunction. 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 [*9] 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"). A review of the song and its video reveals that, in general, the singers spoof what many children apparently do with their dolls, including dressing and undressing them. (See, e.g., Lanham Decl. P 38). 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. n3 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. at 3). 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." n4 (Id. at 4). n3 For example, a constant refrain throughout the song is the phrase, "Come on Barbie, let's go party." n4 After defendants filed their opposition, Mattel's reply brief and attached declarations offered an interview by Rasted that purportedly shows the song is not a parody of Barbie. In a news story about this lawsuit, a reporter quotes Rasted as saying, "We don't mean to harm the doll. The song isn't about the doll, it's about the plastic world we live in. We're making fun of that." (Samuels Supp. Decl., Ex. B, at 8). The news story does not provide the context in which Rasted made these remarks, or whether he made any additional comments about the meaning of the song. In any event, this statement is not inconsistent with parody, as Rasted had said earlier that he wanted to make fun of "Barbie's fantasy world." The song's lyrics clearly refer to Barbie's party-girl image (for example, Barbie sings, "I'm a blond bimbo girl in a fantasy world"). Also, it is not incompatible with parody for song-writers to have a "larger" point beyond the immediate object of the song. In addition, Rasted need not wish to "harm" the doll in order to parody it. About the time the song was released, Rasted commented in an interview that It [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 P 14). Rasted said that he was inspired to write the song after seeing a newspaper article about a "kitsch exhibition" in Copenhagen that included plastic Barbie dolls from the 1970s. (Id. at PP 9-10). Given the important First Amendment interests at stake, this Court will assume for the present motion that the song's lyrics--which refer throughout to Barbie and her party-girl life--are intended as a parody of both the doll itself and the values she has come to represent. [*10] In addition, the band members do not adopt the likeness of the Mattel dolls themselves. Both the album cover and the video display the band's four members. The lead singer, Lene Grawford Nystrom, who adopts the persona of Barbie in the song, has dark hair and a tattoo on her arm. Rene Dif, who sings as Ken, has a clean-shaven 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. Mattel describes the video's set as "predominantly colored in the BARBIE pink colors, n5 including a pink house, which is reminiscent of the BARBIE 'DREAM HOUSE'. . . and a story line which features the KEN doll dismembering the BARBIE doll by pulling off her arm." (Pl.'s Mot. at 9). Although the set may invoke images of Barbie accessories, it is consistent with the group's attempts to parody the "Barbie fantasy world." See Dr. Seuss, 109 F.3d at 1400 (describing parody as "mimicking an original to make its point"); Fisher, 794 F.2d at 435 n.2 (noting that parodies sometimes "must appropriate a substantial portion of [its target] to evoke recognition"). In addition, Mattel's attempt to portray Ken's removal of Barbie's [*11] arm as dismemberment is exaggerated: the singers, playing with a fake-looking plastic arm, appear to be poking fun at the fact that Barbie, like all dolls, can be taken apart by her more adventuresome owners. (See Lanham Decl. P 45). n5 Mattel admits it does not have a trademark for its so-called "BARBIE pink" color. (Pl. Mot. at 5). For further discussion on the use of the color pink in this case, see below. Although plaintiff clearly wishes that its doll only be associated with "wholesomeness," (Pl.'s Mot. at 5), defendants point out that the Barbie doll has become an icon that means different things to different people: "the doll has been seen as feminist and anti-feminist; 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.' Opp'n at 5). Nor is Barbie Girl the only song to tweak the image Mattel wants for its doll: defendants identify nine other songs that have invoked Barbie's name, some [*12] of which contain language far more vulgar than Barbie Girl's references to "hanky panky." n6 (Id. at 6-7, 28). n6 For example, David Wilcox's song "Barbie," on his East Asheville Hardware album, sings that Barbie Made a career leading cheers for the L.A. Lakers Then became the main mistress of the Reverend Jim Bakker Helped him hear his messages from the Lord With a vibrator and a ouija board. (Folkes Decl., Ex. 6, at 73). Likewise, a song by Lunachicks, entitled "Bitterness Barbie," critiques Barbie's "perfect" body by using vulgar terms to describe various parts of her anatomy. (Id.). In comparison, Aqua's criticism of Barbie is much more light-hearted. Plaintiff asserts that evidence of third-party infringers is irrelevant to whether defendants are infringers. (Pl.'s Reply at 8). However, these songs are just examples of social criticism of Barbie. Defendants are simply trying to link their song to other musical parodies and critiques of Mattel's product. The fact [*13] plaintiff views the song as "attacking" the wholesome image of its product bolsters defendants' arguments that this song involves a parody, therefore raising First Amendment concerns. See Dr. Seuss, 109 F.3d 1394 at 1400 (observing that parody is a "form of social and literary criticism" implicating free speech interests under the First Amendment). B. Mattel's Trademark Claim n7 n7 Defendants assume for purposes of this argument that Mattel has a valid trademark but reserve the right to argue later that "the term 'Barbie doll' has . . . become generic and is outside the purview of the trademark laws.'" (Defs.' Opp'n at 8 n.5). Plaintiff argues that the song Barbie Girl infringes upon its federal trademark, trade name, and trade dress and that it will likely confuse consumers into believing that the song is affiliated with the Barbie product line. Defendants respond that plaintiff exaggerates the reach of its trademark and cannot silence song parodies that poke fun at its product simply because they use the [*14] 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). Protection under this Act requires that "a particular design must be both non-functional and have a secondary meaning." Academy of Motion Picture Arts and Sciences v. Creative House Promotions, Inc., 944 F.2d 1446, 1454 (9th Cir. 1991). The appearance of the Barbie doll is rather distinctive, in that many consumers are likely to be able to identify the doll as a Barbie product. n8 (See, e.g., Pl.'s Am. Compl., Ex. 29). In addition, Mattel's Barbie line clearly does have a "secondary meaning," in that people around the world associate the name Barbie with Mattel's line of dolls and doll-related accessories. n9 (See, e.g., Defs.' [*15] Opp'n at 4 (identifying Barbie as a "cultural icon"); Pl.'s Mot. at 3 (claiming that "the Barbie brand name has achieved nothing short of celebrity status")). See also Rasted Decl., at 20 (quoting 1997 newspaper accounts describing Barbie as a cultural icon or symbol). n8 Whether the colors "pink and white" are distinctive as to Barbie is another matter, particularly as pink is often associated with femininity and toys for young girls. See discussion below. n9 Plaintiff also contends that its Barbie products have become associated with wholesomeness. (Pl.'s Mot. at 5). However, as defendants point out, the Barbie doll has also been associated in the public mind with less savory images, such as eating disorders and poor self-esteem in young girls. (Def.'s Opp'n at 5). See also Lanham Decl. P 27, Ex. 14 (listing "serious cultural commentary . . . [that] has criticized Mattel . . . for marketing [to children] an air-headed sexpot who parodied real human bodies and gender roles"). The Ninth Circuit [*16] 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 on the Block, 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. Indeed, New Kids observed that "much 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 trademark." 971 F.2d at 307. In addition, the Ninth Circuit has recognized that "parody 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 noted that songs are "indisputably works of artistic expression" deserving of First Amendment protections. Rogers v. Grimaldi, 875 F.2d 994, 997 (2nd Cir. 1989). Although the First Amendment does not prevent trademark law from applying to artistic [*17] works, courts must be careful not to trammel on free speech values in protecting trademarks. See, e.g., id. at 998 (noting that "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"); Girl Scouts of the United States of America v. Bantam Doubleday Dell Publishing Group, 808 F. Supp. 1112, 1118 (S.D.N.Y. 1992) ("The owner of a trademark does not possess a property right that is superior to the First Amendment right accorded to artistic expression."), aff'd, 996 F.2d 1477 (2d Cir. 1993). 1. Defendants' Fair Use Under the New Kids Standard In general, the Ninth Circuit applies an eight-factor "likelihood of confusion" standard to both common law and federal statutory trademark infringement. n10 See Dr. Seuss, 109 F.3d at 1403-04; AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). Defendants contend, however, that their limited use of the term "Barbie" places their song outside the trademark context. See New Kids, 971 F.2d at 308 (observing that the "nominative use of a mark . . . lies outside the strictures [*18] of trademark law); Rogers, 875 F.2d at 999 (2d Cir. 1989) (holding that the Lanham Act does not apply in the case of "allegedly misleading titles using a celebrity's name" unless the title lacks artistic relevance or is explicitly misleading). n11 n10 Plaintiff argues that its state claims for trademark infringement, unfair competition, misappropriation, and passing-off are governed by the likelihood of confusion test. See Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988) (observing that "the ultimate test for unfair competition is exactly the same as for trademark infringement"); Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788, 794 (9th Cir. 1981) (noting that passing off and misappropriation are different "branches" of unfair competition). n11 In No Fear, Inc., v. Imagine Films, Inc., the Court observed that subsequent Second Circuit precedent to Rogers had "effectively supplemented the Rogers test by applying the standard likelihood of confusion factors." 930 F. Supp. 1381, 1382 (C.D. Cal. 1995). [*19] In New Kids, the Ninth Circuit did not apply the eight factors for likelihood of confusion. Instead, the Court held that in some cases involving "a non-trademark use of a mark, . . . [trademark] infringement laws simply do not apply." 971 F.2d at 307. 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. The Ninth Circuit held that, 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[,] such minimal 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." Id. at 308. 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 [*20] reader polls). n12 Id. at 308. The Court reached this result even though New Kids had their own phone lines set up 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 has used the plaintiff's mark to describe the defendant's own product." Id. at 308. Here, defendants have a colorable argument that their use of the term "Barbie" is about the product Barbie itself, rather than its own song. By describing the doll's "life in plastic" and the various ways consumers play with the doll ("you can brush my hair, undress me everywhere"), Aqua is arguably not speaking specifically about its own product, but rather about Mattel's. On the other hand, the title of Aqua's song, Barbie Girl, does incorporate the term "Barbie" as part of its name. The word's use in the title of the song may refer to both Mattel's product as well as MCA's. n12 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). [*21] The New Kids Court set out a three-part test to be "a commercial user . . . 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. 971 F.2d at 308. Defendants arguably can meet each of these three elements. First, defendants cannot effectively parody or comment on the Barbie doll without mentioning her by name. n13 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 such purpose without using the mark"); see also Defs.' Opp'n at 16 ("A principle 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 nearly as effectively without evoking the Barbie doll iconography specifically. . . ."). [*22] n13 Plaintiff contends that "defendants could have easily avoided the instant litigation" by calling their song "Bimbo Girl" or "Party Girl." (Pl.'s Reply at 1). This argument ignores that Aqua was attempting to parody Barbie, not just party girls in general. Second, the song's use of the term "Barbie" is for purposes of parody. (Rasted Decl. at PP 10-14). Referring to Barbie as a "bimbo" living in plastic world, the song critiques the vacuous, party-girl image Barbie has acquired in some quarters. (See Lanham Decl., P 35). The repeated use of the words "Barbie" and "Ken," therefore, seem reasonably necessary for purposes of parody. New Kids dealt specifically with the use of a celebrity's name; in this case, however, plaintiff also complains that the use of "Mattel's distinctive trade dress colors of white and BARBIE pink" on some versions of Barbie Girl CD and the video comes too close to the lettering used on Barbie doll packaging. (Pl.'s Am. Compl., Ex. 29); see also New Kids, 971 F.2d at [*23] 308 n. 7 (noting that a competitor could use a distinctive name such as "Coca-Cola" when comparing products but could not use Coca-Cola's "distinctive lettering"). Mattel admits that it is still in the process of applying "for federal trademark registration of the BARBIE name on a field of pink." n14 (Pl.'s Mot. at 5). But see 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, 131 L. Ed. 2d 309, 115 S. Ct. 1426 (1995). Although plaintiff fails to explain how the so-called "BARBIE pink" is different from the "pink" used on many products associated with young girls, the Court will consider briefly whether the use of such coloring in the lettering on the Barbie Girl CD was 'reasonably necessary' under the New Kids test. n15 n14 Even if Mattel's interest is in multiple colors, such as white lettering on a dark pink background (see Pl.'s Am. Compl., Ex. 29), defendants packaging still differs significantly from Mattel's. See below. [*24] n15 A comparison of packaging may be more relevant in evaluating the likelihood of consumer confusion under traditional trademark analysis, see discussion below. In general, the relatively thin lettering appearing on Barbie's packaging is solid white, slanted, and stylized; the background surrounding the lettering is pink, with images of flowers. (Pl.'s Am. Compl., Ex. 29). In contrast, Aqua's album has a blue, watery background and contains yellow lettering of all eleven songs. None of the songs' 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. Mattel's main complaint about lettering appears to be with Aqua's CD-single versions of the song, (see Pl.'s Am. Compl. at Ex. 31, 33, 35), which defendants claim are "no longer being made or sold by defendants." (Defs.' Opp'n at 21). Plaintiff, however, asserts that these versions are still being sold. (Pl.'s Reply at 1). Several versions use white or light pink block lettering for the title of the song; these letters have irregular borders and are outlined [*25] and shadowed in pink. At the top of every package of the CD are large, rounded blue letters spelling the word "Aqua"; these letters have a white and black outline, with an eye appearing within the letter "Q". (See Pl.'s Am. Compl. at Ex. 31, 33, 35). Whether use of pink and white was "reasonably necessary" in the context of lettering is a closer question, although pink is traditionally associated with femininity. Indeed, Mattel does not hold claim to the entire color pink. (See also Folkes Decl. P 15 ("Pink is a color associated with young girls generally and young girls' toys.")). To the extent feminine colors are associated with Barbie, defendants have a colorable argument that the use of pink was reasonably necessary, as Aqua may have difficulty evoking the images of the dolls it parodies because the band members do not resemble Barbie or Ken. Third, defendants' album identifies on its CD case that the song "is a social comment and was not created or approved by the makers of the doll," although this 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 [*26] included it on all the CDs. Defendants have attempted to show that their song is not endorsed by Mattel. As plaintiff points out, this warning is not displayed before radio and television performances of the song. However, the same is likely true of other songs invoking famous "celebrities," including the early 1980s hit song "Bette Davis Eyes." See Rogers, 875 F.2d 994 at 999 (citing "Bette Davis Eyes" as an example of a title that includes "a well-known name without any overt indication of authorship or endorsement"). Although some people will believe that "these titles implicitly suggest that the named celebrity has endorsed the work or had a role in producing it, . . . the slight risk that such use of a celebrity's name might implicitly suggest endorsement or sponsorship to some people is outweighed by the danger of restricting artistic expression, and the Lanham Act is not applicable." Id. at 999-1000. Defendants may have a viable defense under the New Kids standard, suggesting that plaintiff will be unlikely to succeed on the merits of its trademark infringement claims. 2. Likelihood of Confusion Although the New Kids test may apply to this case, courts have traditionally [*27] used the likelihood of confusion test in the trademark context. Even if the likelihood of confusion test is the more appropriate one for evaluating plaintiff's claims, plaintiff cannot show that it is likely to succeed on the merits. a. First Amendment Interests The Second Circuit has observed that the possibility of confusion over two products must be "particularly compelling" to outweigh First Amendment interests raised when titles invoke popular figures to communicate a particular message. n16 Twin Peaks Productions v. Publications Intern., 996 F.2d 1366, 1379 (2d Cir. 1993). Indeed, Mattel is mistaken when it claims "there is no First-Amendment Defense under the Lanham Act" by citing Dr. Seuss. (Pl.'s Mot. at 21). The passage cited in Dr. Seuss only rejects a defendant's argument that a preliminary injunction in these type of cases constitutes a "prior restraint." See Dr. Seuss, 109 F.3d at 1403 n.11 (citing Dallas Cowboys Cheerleaders, Inc., v. Pussycat Cinema, Ltd., 604 F.2d 200, 206 (2d Cir. 1979) ("The prohibition of the Lanham Act is content neutral, and therefore does not arouse the fears that trigger the application of constitutional 'prior restraint' [*28] principles."). To the extent plaintiff relies on the language of Dallas Cowboys, that case has later been criticized because First Amendment rights "cannot be dispensed with by simply asserting that [plaintiff's] property right need not yield to the exercise of the first amendment rights." L.L. Bean, 811 F.2d at 29. n16 Although the Ninth Circuit has not specifically adopted the "particularly compelling" language used by the Second circuit, a California district court has adopted this test. See No Fear, Inc., 930 F. Supp. 1381 at 1384. As No Fear observed in 1995, "the Ninth Circuit has not yet addressed the confluence of First Amendment concerns and the Lanham Act." Id. at 1382 n.1. Although the 1997 Dr. Seuss opinion discusses the importance of parody under the First Amendment, the Ninth Circuit has not dealt directly with whether the likelihood of confusion factors must be particularly compelling to outweigh First Amendment interests. Dr. Seuss involved a defendant attempting to claim it was parodying Dr. Seuss, when in fact it was simply copying his style, images, and even title for its own book about the O. J. Simpson trial. In contrast, defendants here only use the word "Barbie" and, in some lettering on some CDs, the colors pink and white. It never uses Barbie's likeness or image. Further, the song specifically targets Barbie for commentary. [*29] Dr. Seuss did hold, however, 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 "in a traditional trademark infringement suit founded on the 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, 503 (2d Cir. 1996). Unlike the present case, the defendants in Dr. Seuss used the claim of "parody" in an attempt to avoid the fact that they were copying images and writing style from a famous children's book in order to satirize something completely different: the O.J. Simpson trial. Defendants [*30] specifically copied the distinctive "stove-pipe hat" worn by a feline character from The Cat in the Hat, a book written by Dr. Seuss (nee Theodor S. Geisel). Defendants used the image numerous times throughout the book and also copied Dr. Seuss' "whimsical poetic style." 109 F.3d at 1397-98. After determining that the book was not a "fair use" under the copyright statute, id. at 1399-1403, the Court applied the eight-factor Sleekcraft test to determine "likelihood of confusion" for purposes of trademark infringement. Id. at 1403. Drawing from Supreme Court precedent, the Dr. Seuss 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)." Id. at 1400. The Court rejected defendants' fair use defense in the context of copyright infringement because the defendants appropriated Dr. Seuss' work, not to parody it, but rather to use it to satirize something entirely different. Id. at 1399-1401. The defendants' 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' [*31] or maybe even 'to avoid the drudgery in working up something fresh.'" Id. at 1401. Although plaintiff contends that Aqua used Barbie solely to gain attention, the object of its song is clearly the doll itself and the values it represents, rather than some other topic. Also, Dr. Seuss did not hold that all claims of "parody" as a defense were frivolous, just those that "solely capitalized" on another's fame to satirize something completely different. 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 relatively 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 else. As the Ninth Circuit observed in Dr. Seuss, parody has "socially significant value as free speech under the First Amendment." Id. at 1400. [*32] Therefore, this Court will consider the effect on defendants' First Amendment interests when weighing the eight Sleekcraft factors. See Twin Peaks Productions, 996 F.2d 1366 at 1379; see also No Fear, Inc., v. Imagine Films, Inc., 930 F. Supp. 1381, 1384 (C.D. Cal. 1995). b. The Likelihood of Confusion Standard The Sleekcraft factors include 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 341 at 348-49). These factors are not exhaustive, and the court may take into account "other variables . . . depending on the particular facts presented.'" Id. As mentioned above, this Court will take into consideration the First Amendment interests at stake in this case. n17 n17 See Cliff Notes, Inc., v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490, 494 (2d Cir. 1989) ("In 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."); see also Dr. Seuss Enterprises, 109 F.3d at, 1400; Twin Peaks Productions, 996 F.2d at 1379; New Kids on the Block, 971 F.2d at 307; Rogers, 875 F.2d at 998; L.L. Bean, 811 F.2d at 34; Fisher, 794 F.2d at 437-38. [*33] Strength of the Mark. Defendants concede that the Barbie mark is strong, at least as to dolls and doll-related products. n18 Although "an undeniably strong mark" usually favor 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 to the song refer to Barbie as a "blond bimbo." If Mattel is correct that its product has a "wholesome image," (see Pl.'s Mot. at 6), then consumers are even more likely to recognize Barbie Girl as a parody. n18 Plaintiff also contends that its white lettering on a pink background is a trade dress associated with Barbie products. (Pl.'s Reply at 8). Such colors, however, can be associated with many toy products aimed at young girls. (See, e.g., Rasted Decl., Ex. 10). Proximity of Goods. Defendants contend that the Barbie line of products is primarily associated with dolls and doll-related products sold in stores selling toys, while [*34] Aqua's music is sold primarily at stores selling music. Plaintiff contends, however, that it sells many different kinds of products associated with Barbie, including music-related goods. For example, in 1990 Mattel licensed the production of a compact disc of music entitled "Barbie: The Look," in which a singer adopts Barbie's persona. (McKenzie Decl. P 11(a), Ex. D). Mattel points to several unnamed compact discs, a tape called "Barbie Country Music Dancing with Me," a dance workout video, and an ice show involving a Barbie character. (Id. at P 11). In addition, Mattel refers to music-related toys, such as a miniature concert stage and music stores designed for the doll itself. (Id. at P 12). Plaintiff did not initially indicate whether these products were sold in music stores or departments, or whether they were still sold in 1997, when Aqua's album debuted. In its reply brief, plaintiff argues that the Barbie Girl CD and the Mattel's Barbie music products "are currently being sold in the same departments of the same stores, including popular retail outlets such as the Virgin Megastore, Borders Books & Music, Costco Wholesale, Wal-Mart, and K Mart." (Pl.'s Reply at 9-10 [*35] (citing Grant Decl. PP 5-19)). To support this claim, plaintiff sent a paralegal to these stores to purchase the Aqua CD and to take photographs of the store departments displaying plaintiff's and defendants' respective products. Although it appears that, in some cases, plaintiff's products are sold in the same stores as the Barbie Girl CD, this evidence does not show that any of plaintiff's products are sold in the music section of these stores, where defendants' CD is sold. For example, at a Wal-Mart store, plaintiff found Barbie computer software, a Barbie "CD player," and a "Workin' Out Barbie" doll with cassette. n19 The Barbie Girl CD was also sold at the store. However, none of these Barbie products were sold in the music section; at best, the music and computer software was sold in different areas of an "electronics" department. (Grant Decl. at PP 5-8, Ex. K & L). Indeed, in all of the stores visited by the paralegal, plaintiff does not show one example where any of its Barbie-related products are sold in music departments, nor does it show that Barbie Girl is sold anywhere in these stores except with other music. n20 (See, e.g., id. at PP 2-10, 14-19; [*36] Ex. B-E, K-L, and M-R)). n19 The CD player, which includes four "CDs" and sells for $14.99, appears to be a toy. (See Grant Decl. at Ex. F & H). n20 At Costco, Barbie computer software, in a heap of boxes on a table, are apparently displayed in the same long row as the Barbie Girl CD. (Ex. V). It is unclear from this exhibit, however, whether Costco is organized into departments in the same manner as other stores. Similarity of the Marks. The marks on defendants' product are not similar to Mattel's. Under Ninth Circuit precedent, courts are to analyze "the similarity of the marks . . . [by] viewing the marks as a whole, as they appear in the marketplace." E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992). Every Mattel product offered as an exhibit has an image of the Barbie or Ken doll on its packaging. In some cases, the packaging is transparent, revealing the actual doll. (First Am. Compl. Ex. 29; McKenzie Decl. Ex. C-I, K-M, O; Grant Decl. Ex. D-G, L, P-R, [*37] V, W, BB, FF-II). None of Aqua's packaging has an image of any doll, 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. n21 (First. Am. Compl. Ex. 31, 33, 35, 37; Rasted Decl. Ex. 1-2; Grant Decl. Ex. B, C, K, N, O, T, U, V, Y, Z, AA, DD, EE; Rasted Decl. Ex. 1-2; Samuels Decl. Ex. B, E, G, I). Given the context in which these products are sold, it seems doubtful that many consumers would confuse the products based on packaging. n21 After defendants filed their opposition, plaintiff provided this Court with a CD-ROM from Aqua that apparently includes a full-length video for Barbie Girl. This product does not have a picture of the band on its cover. However, it is unclear from where this computer software was purchased (it has a "Made in England" sticker on it) or what its original packaging looked like. The cover of the CD-ROM case has big blue lettering of the words "Aqua" and pink lettering (not pink and white) of the words "Barbie Girl." It does not have an image of a doll on its front or back. Plaintiff also provided a vinyl record of the song, with large lettering indicating the band AQUA. This record has a warning, in small lettering, that the song is a "social comment." Plaintiff does not indicate where this record was purchased. [*38] As to the other aspects of the packaging, each party refers to different versions of the Barbie Girl CD. n22 Defendants refer to an album, containing an eleven-song CD. The album cover is mostly blue with a picture of the band members on the front; it also has in large, rounded-block letters, "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 it. This symbol refers to another asterisk below, which is next to a sentence in yellow warning that "the 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. n22 Mattel claims that Barbie Girl has "at least eight different infringing BARBIE GIRL musical products." (Pl.'s Reply at 10). Plaintiff does not list what these products are, however. [*39] Plaintiff refers to CD single versions of the song "Barbie Girl" that it contends have "Mattel's distinctive trade dress colors of white and BARBIE pink." n23 (Pl.'s Mot. at 17; see also Pl.'s Am. Compl. Ex. 29). Plaintiff has used these colors with its packaging for Barbie since at least 1992. (Pl.'s Mot. at 16). n23 As noted earlier, defendants submit that its single version of the song is "no longer being made or sold by defendants." (Defs.' Mot. at 21). In its reply brief, plaintiff alleges seven versions of this single are still being marketed. (Pl.'s Reply at 11). In its amended complaint, plaintiff provides three examples of these CD singles, which include multiple versions or "remixes" of the song Barbie Girl. The packaging on all three versions has large blue lettering of the word "Aqua" on their front covers, as well as a picture of the four band members. (Pl.'s Am. Compl., Ex. 31, 33, and 35). None of the packaging includes an image of a doll of any kind. The CDs also include the words "Barbie [*40] Girl" in smaller lettering at the bottom of the CD. "Barbie Girl" is in block letters, with irregular sides and shapes, and a dark pink outline. The center of the lettering is a light pink. In contrast, the word "Barbie" on Mattel's products slants up and has slender, white lettering. (Id., Ex. 29). Defendants' lettering is bulkier and on a straight line. Further, defendant's packaging identifies MCA as the publisher of the music and does not use the word "Mattel" anywhere. The fact 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 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 boar 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 [*41] it 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. Plaintiff is unlikely to show that lettering of the marks are so similar as to cause consumer confusion. As to the video, plaintiff claims that the set used mimics Barbie's accessories. As the band members look nothing like the dolls they spoof, however, using a set to evoke the subject matter of the parody seems appropriate under the circumstances. A parody, by definition, "needs to mimic an original to make its point." Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 580, 127 L. Ed. 2d 500, 114 S. Ct. 1164 (1994); see also Fisher, 794 F.2d at 435 n.2 ("To 'conjure up' the original work in the audience's mind, the parodist must appropriate a substantial enough portion of it to evoke recognition."). Given that the pretend Barbie has a tattoo and dark hair, and the pretend Ken has a clean-shaven head, viewers are unlikely to mistake these singers for Mattel's product. Actual Evidence of Confusion. Plaintiff points to several dozen e-mails that it [*42] received at its website in which individuals make reference to the "new Barbie song;" plaintiff also cites to a fax from an individual in the United Arab Emirates. (McKenzie Decl., Ex. R). However, several of the e-mails simply contain lyrics from the songs. Although a few ask if they can acquire the CD through the web site, others simply write to say that they enjoy the song, which may or may not mean that they believe Mattel is responsible for it. (Id.). These ambiguous e-mails are insufficient or at best very weak evidence of actual confusion. n24 n24 Weston Anson, chairman of Trademark and Licensing Associates, relies on his Valmatrix method of calculation to show that confusion between the two products is "substantial." The validity of the outcome of those results depends on the accuracy of the data entered and the soundness of the methods used to calculate these factors' importance. Mr. Anson apparently assumes "same or similar packaging trade dress," "similar channels of distribution," and "same consumer audience." (Anson Decl. P 11). However, there is clearly a dispute as to the validity of these assumptions. In addition, the objectivity of Mr. Anson's analysis becomes questionable when he refers to "additional factors" to support finding a likelihood of confusion, by stating that "the defendants clearly did not act in good faith . . . [because] they never contacted Mattel . . . before deciding to use the BARBIE trademark." (Id. P 38). It is unclear why this is relevant to showing confusion and why any parodist would first seek permission before parodying someone. [*43] Marketing Channels Used. Plaintiff asserts that Barbie Girl and Barbie dolls "directly compete in the same, virtually global marketplace" and are advertised through the "same media and commercial venues, including music and video stores, the Internet, television and the radio." n25 (Pl.'s Mot. at 18). No widely marketed product lampooning Barbie could avoid such a broad reaching interpretation of this factor. n26 Parodists should not be exiled to less conspicuous venues simply to avoid using the same marketing channels as the objects they parody. n25 Plaintiff also contends that defendants "advertised and promoted their [song] . . . in a magazine with a subscription base consisting solely of collectors of and investors in Mattel's BARBIE brand products." (Pl.'s Mot. at 19). n26 In its reply brief, plaintiff repeats its earlier claim that Barbie Girl is sold in the same departments of certain stores as plaintiff's products. Plaintiff do not explain how this claim relates to marketing channels. [*44] Degree of care of purchasers. The Court must also consider the type of goods and the degree of care likely to be exercised by the purchaser. Under this analysis, adults would presumably be less prone to confusion than young children. Defendants assert that the consumers of their product are teenagers and adults, while Mattel's Barbie products are targeted toward three to ten-year-olds. (Folkes Decl. P 6). Plaintiff counters that the "typical buyer" of both products "is a young, unsophisticated person" who does not read the "tiny legend on the back of an inexpensive CD." (Pl.'s Mot. at 19, 11; see also Anson Decl. at 2 ("More than one billion BARBIE line dolls have been sold worldwide, principally to girls aged 3 to 11.")). At another point, plaintiff identifies its primary purchases as adults who buy toys for their children or collectibles for themselves. (Pl.'s Reply at 16). It is unclear who the typical buyers of plaintiff's products are, making a comparison with defendant's purchasers difficult. Even if Mattel's customers made purchases as haphazardly as it claims, they likely would understand that the large letters "AQUA" on the CDs they are buying represented a musical [*45] pop group and not a toy manufacturer. As to the type of goods, although plaintiff has sold many different kinds of Barbie-related products over the years, it has not shown that is currently selling music, except for a few products that are sold as toys in toy departments and are often accompanied by one of plaintiff's dolls. Defendants' Intent. Defendants claim that they choose the name "Barbie" not to confuse the public but rather to parody the doll and make a comment on the values it represents. (Defs.' Opp'n at 25; Rasted Decl. P 11 ("As I wrote the song, I knew that Barbie was a popular doll . . . . My intention was to use that imagery to evoke and comment on a 'Barbie world.'")). As to this element, plaintiff need not show that defendants "intended to deceive consumers." Gallo Winery, 967 F.2d at 1293. Still, the weight of this factor is diminished somewhat in the context of parody, as all parodists of consumer products "intend to select" the products' mark to make their comments. See also Cliff Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490, 494 (2nd Cir. 1989) (recognizing the need to balance First Amendment interests against likelihood [*46] 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"). Expansion of product lines. In its briefs, 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 its future productions. (See Rasted Decl. at P 17). Conclusion. Under an analysis of the Sleekcraft factors, plaintiff is not likely to succeed in showing that consumers are confused between the Barbie doll-line of products and the Barbie Girl song, CDs, and video. In addition, the First Amendment concerns raised by prohibiting a parody of a popular consumer product weigh against granting a preliminary injunction. Presumably, some consumer confusion is inevitable when a few people fail to realize that one product is parodying another. This fact should not be used to censor criticism of or social comments on icons in our popular culture, especially when the parodying product identifies itself with its own brand name, in this [*47] case "Aqua." See, e.g., L.L. Bean, 811 F.2d 26 at 34 ("Denying parodists the opportunity to poke fun at symbols and names which have become woven into the fabric of our daily life would constitute a serious curtailment of a protected form of expression."). C. Mattel's Trademark Dilution Claims Plaintiff also bases its motion on both federal and state trademark dilution claims. 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. § 1123(c)(1) (West 1997). The Act also provides that the person accused of violating subsection (c) must have "willfully intended to trade on the owner's reputation or to cause dilution of the famous mark." Id. at § 1125(c)(2). In addition, the Act exempts from its reach the "fair use of a famous mark by another person in comparative advertising or promotion to identify the competing goods or services [*48] of the owner of the famous mark[;] noncommerical use of a mark[; and] all forms of news reporting and news commentary." 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." Id. at § 1127. California's trademark dilution statute provides that "likelihood of injury to business reputation or of dilution of the distinctive quality of a mark registered under this chapter . . . shall be ground for injunctive relief, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services." Cal. Bus. and Prof. Code § 14330 (West 1997). The Ninth Circuit has held that California's anti-dilution law "is designed to protect against the gradual 'whittling away' of a trademark's value." Academy of Motion Picture, 944 F.2d at 1457. Plaintiff claims that its famous mark is associated with wholesomeness and that defendants' "antisocial" song tarnishes that mark. More specifically, plaintiff argues that Barbie Girl supports "promiscuity, lewdness, and the [*49] stereotyping and denigration of young women." (Pl.'s Mot. at 25). Defendants contend that their speech falls within the "noncommercial use of a mark" exception to the federal statute and that First Amendment principles protect their use of the mark. See L.L. Bean, 811 F.2d 26 (applying First Amendment principles to state anti-dilution claim). The fact Barbie Girl is sold for money is not dispositive as to whether the use of the mark is commercial. Id.; cf. New Kids, 971 F.2d at 309 (holding that "where . . . the use [of a mark] does not imply sponsorship or endorsement, the fact that it is carried on for profit and in competition with the trademark holder's business is beside the point" for purposes of trademark infringement). In L.L. Bean, the Court, in considering a state anti-dilution claim, found that the use of L.L. Bean's trademark in a monthly adult entertainment magazine was a noncommercial use because it was parodying an actual catalog produced by the plaintiff. 811 F.2d at 32. As the Court observed, the defendant had "not used Bean's mark to identify or market goods or services; it . . . used the mark solely to identify Bean as the object of its parody." [*50] Id. at 33. Likewise, in this case, defendants' use of the term "Barbie" appears to be for purposes of parody, rather than to sell knock-off Barbie products. The L.L. Bean Court also rejected the argument that mere association of a trademark with "unwholesome or negative context" is enough to make a trademark dilution claim. Id. at 31; see also New Kids, 971 F.2d at 307 n.5 (observing that "[a] trademark may even be used lawfully in a way that many people, including the trademark owner, may find offensive"). Mattel attempts to compare Barbie Girl's relatively innocuous lyrics to more sexually explicit parodies, including the use of a plaintiff's cheerleading uniform in a pornographic movie, Dallas Cowboys, 604 F.2d 200, and graphic depictions of two Pillsbury trade characters engaged in sexual intercourse, Pillsbury Co. v. Milky Way Productions, Inc., 1981 U.S. Dist. LEXIS 17722, 215 U.S.P.Q. 124 (N.D. Ga. 1981). However, the works in these cases were pornographic, and plaintiff does not characterize Barbie Girl as being sexually explicit. Further, the L.L. Bean court distinguished the Pillsbury case, noting that the Georgia district court [*51] failed to consider whether parody might be a defense to a dilution claim, even though it was pornographic. 73 F.3d 30 at 34 n.5. A First Amendment defense should also apply in contexts such as this case where the parody is less sexually explicit than that in Pillsbury. Indeed, nonobscene, sexual speech is "entitled to no less protection than other forms of expression," no matter how course, vulgar, or distasteful it may be to some. Id. at 34 (quoting Fantasy Book Shop, Inc. v. City of Boston, 652 F.2d 1115, 1126 (1st Cir. 1981)); see also Fisher, 794 F.2d at 437 (noting that a comic song about sniffing glue was "innocuous--silly perhaps, but surely not obscene or immoral," even though it parodied another, more famous tune). Even if the use of the term "Barbie" is not exempted as a noncommercial use for purposes of trademark dilution, the L.L. Bean Court warned that courts should still take into account First Amendment principles when evaluating such claims: Cases of "unauthorized uses of trademarks on products whose principal purpose is to convey a message . . . . require a balancing of the harm suffered by the trademark owner against the benefit derived by the parodist [*52] and the public from the unauthorized use of a trademark on a product designed to convey a message." Id. at 32 n.4. In this case, plaintiff's description of Barbie Girl as "lewd and lascivious" arguably stretches those terms. Even if the song were considered as vulgar as Mattel purports, it is a parody of the "party-girl" image Barbie may already have among some members of the general public. (See, e.g., Folkes Decl., Ex. 22). Absent stronger evidence that the song actually tarnishes Barbie's image, plaintiff is unlikely to succeed on its trademark dilution claims. n27 n27 Plaintiff cites the Ninth Circuit's Academy of Motion Picture case to support its state law dilution claim. 944 F.2d 1446. In that case, a company produced a gold-colored award statutes almost identical to the famous Oscar awards given each year. Id. at 1449-50. The "only significant differences between the two [were that] the Star Award is two inches shorter than the Oscar, and holds a star rather than a sword." Id. Unlike that case, defendants have not copied Barbie's design as a doll or even any of the music Mattel puts out under her name. Defendants are parodying Barbie, not "whittling away" at consumers' ability to distinguish between competing brands. [*53] V. Irreparable Injury and the Balance of Hardships Plaintiff has failed to show that it is likely to succeed on its trademark infringement and dilution claims. Nor does it appear that the balance of hardships "tips sharply" in its favor. Big Country Foods, 868 F.2d at 1088. CONCLUSION For the foregoing reasons, this Court DENIES plaintiff's motion for a preliminary injunction. The Court also DENIES plaintiff's and defendants' motions to strike each other's supporting declarations. IT IS SO ORDERED. Date: Feb 17, 1998 Wm. Matthew Byrne, Jr. United States District Judge