MATTEL INC., a Delaware Corporation, Plaintiff-Appellant, v. WALKING MOUNTAIN PRODUCTIONS, a California Business Entity; Tom Forsythe, an individual d/b/a Walking Mountain Productions, Defendants-Appellees. Mattel Inc., a Delaware Corporation, Plaintiff-Appellee, v. Walking Mountain Productions, a California Business Entity; Tom Forsythe, an individual d/b/a Walking Mountain Productions, Defendants-Appellants.
No. 01-56695. No. 01-57193.
United States Court of Appeals, Ninth Circuit.
Argued and Submitted March 6, 2003 — Pasadena, California. Filed December 29, 2003.
353 F.3d 792
Before: Harry PREGERSON and Sidney R. THOMAS, Circuit Judges, and Louis F. OBERDORFER, Senior District Judge.
Annette L. Hurst (argued), Douglas A. Winthrop and Simon J. Frankel, Howard, Rice, Nemerovski, Canady, Falk & Rabkin, APC, San Francisco, California, and Peter J. Eliasberg, ACLU, Los Angeles, California, for the defendants-appellees-cross-appellants.
Annette L. Hurst, Douglas A. Winthrop and Simon J. Frankel, Howard, Rice, Nemerovski, Canady, Falk & Rabkin, APC, San Francisco, California, for non-party San Francisco Museum of Modern Art.
Appeal from the United States District Court for the Central District of California; Ronald S.W. Lew, District Judge, Presiding and United States District Court for the Northern District of California; William H. Alsup, District Judge, Presiding. C.D. Cal. Nos. CV-99-08543-RSWL, N.D. Cal. No. CV-01-0091 Misc. WHA, C.D. Cal. No. CV-99-08543-RSWL, N.D. Cal. No. CV-01-0091 Misc. WHA.
PREGERSON, Circuit Judge.
1 In the action before us, Plaintiff Mattel Corporation asks us to prohibit Defendant artist Thomas Forsythe from producing and selling photographs containing Mattel‘s “Barbie” doll. Most of Forsythe‘s photos portray a nude Barbie in danger of being attacked by vintage household appliances. Mattel argues that his photos infringe on their copyrights, trademarks, and trade dress. We have jurisdiction pursuant to
BACKGROUND
2 Thomas Forsythe, aka “Walking Mountain Productions,” is a self-taught photographer who resides in Kanab, Utah. He produces photographs with social and political overtones. In 1997, Forsythe developed a series of 78 photographs entitled “Food Chain Barbie,” in which he depicted Barbie in various absurd and often sexualized positions.1 Forsythe uses the word “Barbie” in some of the titles of his works. While his works vary, Forsythe generally depicts one or more nude Barbie dolls juxtaposed with vintage kitchen appliances. For example, “Malted Barbie” features a nude Barbie placed on a vintage Hamilton Beach malt machine. “Fondue a la Barbie” depicts Barbie heads in a fondue pot. “Barbie Enchiladas” depicts four Barbie dolls wrapped in tortillas and covered with salsa in a casserole dish in a lit oven.
3 In his declaration in support of his motion for summary judgment, Forsythe describes the message behind his photographic series as an attempt to “critique[] the objectification of women associated with [Barbie], and [][to] lambast[] the conventional beauty myth and the societal acceptance of women as objects because this is what Barbie embodies.” He explains that he chose to parody Barbie in his photographs because he believes that “Barbie is the most enduring of those products that feed on the insecurities of our beauty and perfection-obsessed consumer culture.” Forsythe claims that, throughout his series of photographs, he attempts to communicate, through artistic expression, his serious message with an element of humor.
4 Forsythe‘s market success was limited. He displayed his works at two art festivals — the Park City Art Festival in Park City, Utah, and the Plaza Art Fair in Kansas City, Missouri.2 He promoted his works through a postcard, a business card, and a website. Forsythe printed 2000 promotional postcards depicting his work, “Barbie Enchiladas,” only 500 of which were ever circulated. Of those that were circulated, some were distributed throughout his hometown of Kanab and some to a feminist scholar who used slides of Forsythe‘s works in her academic presentations. He also sold 180 of his postcards to a friend who owned a book store in Kanab so she could resell them in her bookstore and sold an additional 22 postcards to two other friends. Prior to this lawsuit, Forsythe received only four or five unsolicited calls inquiring about his work. The “Food Chain Barbie” series earned Forsythe total gross income of $3,659.3
5 Forsythe also produced 1,000 business cards which depicted “Champagne Barbie.” His name and self-given title “Artsurdist” were written on the card. He used these cards at fairs and as introductions to gallery owners.
6 Finally, Forsythe had a website on which he depicted low resolution pictures of his photographs. The website was not configured for online purchasing. “Tom Forsythe‘s Artsurdist Statement,” in which he described his intent to critique and ridicule Barbie, was featured on his website. His website also contained a prominent link to his biography.
7 On August 23, 1999, Mattel filed this action in the United States District Court for the Central District of California (the “Los Angeles federal district court“) against Forsythe, alleging that Forsythe‘s “Food Chain Barbie” series infringed Mattel‘s copyrights, trademarks, and trade dress. Forsythe filed a motion to dismiss Mattel‘s First Amended Complaint, which was granted with leave to amend. Mattel filed a Second Amended Complaint, and Forsythe again moved for dismissal. The motion was granted in part; the court dismissed with prejudice Mattel‘s Eleventh Claim for federal trade libel.
9 During discovery, Forsythe served on Mattel the
10 On April 30, 2001, after receiving that report, Mattel subpoenaed Dr. Nickel to appear for a deposition and to produce certain documents. On or about May 15, 2001, Mattel served a
11 On May 30, 2001, Mattel filed an ex parte application in the United States District Court for the Northern District of California (the “San Francisco federal district court“) to enforce the Subpoena and to compel the SFMOMA to produce documents and its representative(s) for a deposition. Mattel claimed that the Subpoena would aid discovery in Mattel‘s action against Forsythe. The SFMOMA opposed the ex parte application.
12 On June 4, 2001, the San Francisco federal district court denied the application, quashed the Subpoena, and held that it would award the SFMOMA‘s counsel fees and expenses incurred in opposing the application. The parties were unable to agree on fees, and the SFMOMA‘s counsel submitted an itemized statement of fees and costs. The court subsequently issued a written “Order Determining Amount of Attorney‘s Fees,” denying the Application, quashing the Subpoena, and sanctioning Mattel.
13 On July 16, 2001, Forsythe moved for summary judgment in the Los Angeles federal district court. He also moved to exclude all or portions of the reports and testimony of Mattel‘s experts (Boles, Kinrich, Lynde, Marylander, and Schwartz) and a videotape of him destroying his Barbie collection.5 Mattel filed a cross-motion for summary judgment on some of Forsythe‘s affirmative defenses.
14 On August 22, 2001, the Los Angeles federal district court granted Forsythe‘s motion for summary judgment. The district court held that Forsythe‘s use of Mattel‘s copyrighted work was fair use. The court found that Forsythe‘s use of Mattel‘s trademark and trade dress caused no likelihood of confusion as to Mattel‘s sponsorship of Forsythe‘s works. The court dismissed Mattel‘s trademark dilution claim because it found that Forsythe‘s use had been “noncommercial.” The court further found that Mattel‘s remaining state claims failed as a matter of law.
16 Mattel appeals the Los Angeles federal district court‘s grant of summary judgment in favor of Forsythe on the trademark, copyright, and state law claims. Mattel also appeals the Los Angeles federal district court‘s dismissal of its false advertising claim. Finally, Mattel appeals the San Francisco federal district court‘s order quashing the discovery subpoena that Mattel served on the SFMOMA and the court‘s order requiring Mattel to pay attorney‘s fees to the SFMOMA‘s counsel.
17 Forsythe cross-appeals the Los Angeles federal district court‘s order denying him attorney‘s fees and costs under the Copyright and Lanham Acts.
DISCUSSION
I.
18 We first address the question whether the Los Angeles federal district court erred in granting Forsythe‘s motion for summary judgment on Mattel‘s claim of copyright infringement. We review de novo a grant of summary judgment. See Oliver v. Keller, 289 F.3d 623, 626 (9th Cir. 2002). Viewing the evidence in light most favorable to the non-moving party, we must determine whether there are any genuine issues of material fact that remain for trial and whether the district court correctly applied the relevant substantive law. Id. We also review the district court‘s finding of fair use under the Copyright Act, a mixed question of law and fact, by the same de novo standard. Kelly v. Arriba Soft Corp., 336 F.3d 811, 817 (9th Cir. 2003).
19 The Copyright Act,
20 Consistent with its policy goals, however, the Copyright Act recognizes certain statutory exceptions to protections on copyrights. At its core, the Act seeks to promote the progress of science and art by protecting artistic and scientific works while encouraging the development and evolution of new works. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575-76 (1994). Recognizing that science and art generally rely on works that came before them and rarely spring forth in a vacuum, the Act limits the rights of a copyright owner regarding works that build upon, reinterpret, and reconceive existing works. See id. at 575-77 (“[F]ew, if any, things ... are strictly new and original throughout. Every book in literature, science and art, borrows, and must necessarily borrow....“) (quoting Emerson v. Davies, 8 F. Cas. 615, 619 (C.C.D. Mass. 1845) (No. 4,436)). The fair use exception excludes from copyright restrictions certain works, such as those that criticize and comment on another work.
22 The district court concluded that Forsythe‘s reproduction of Mattel‘s copyrighted Barbie was fair use. The district court reasoned that a trier of fact could only conclude that Forsythe‘s works were fair use because: (1) his use was parody meant to criticize Barbie, (2) he only copied what was necessary for his purpose, and (3) his photographs could not affect the market demand for Mattel‘s products or those of its licensees.
23 Where material facts are not in dispute, fair use is appropriately decided on summary judgment. Harper & Row, Inc. v. Nation Enters., 471 U.S. 539, 560 (1985). We recently noted “[a]s fair use is a mixed question of fact and law, so long as the record is ‘sufficient to evaluate each of the statutory factors,’ we may reweigh on appeal the inferences to be drawn from that record.” L.A. News Serv. v. CBS Broad., Inc., 305 F.3d 924, 942 (quoting Harper & Row, 471 U.S. at 560), as amended, 313 F.3d 1093 (9th Cir. 2002).
24 Because we agree with the district court that no triable issues of fact exist on whether Forsythe‘s use of Mattel‘s Barbie constitutes fair use, we weigh the four
A. Purpose and Character of Use
25 The “purpose and character of use” factor in the fair use inquiry asks “to what extent the new work is transformative” and does not simply “supplant[]” the original work and whether the work‘s purpose was for- or not-for-profit. Campbell, 510 U.S. at 579, 584.
26 A work must add “something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” id. at 579. The Supreme Court has recognized that parodic works, like other works that comment and criticize, are by their nature often sufficiently transformative to fit clearly under the fair use exception. Id. (recognizing that parody “has an obvious claim to transformative value“). In our circuit, a “parodist is permitted a fair use of a copyrighted work if it takes no more than is necessary to ‘recall’ or ‘conjure up’ the object of his parody.” Dr. Seuss, 109 F.3d at 1400. A parodic work, however, like other potential fair uses, has to “work its way through the relevant factors, and be judged case by case, in light of the ends of copyright law.” Campbell, 510 U.S. at 581.
27 “[T]he threshold question [in the analysis of this first factor] ... is whether a parodic character may reasonably be perceived.” id. at 582. See also Dr. Seuss, 109 F.3d at 1400. Mattel argues that the district court erred in finding parody because a reasonable jury could conclude that Forsythe‘s works do not parody Mattel‘s Barbie. In support of this argument, Mattel offered into evidence a survey in which they presented individuals from the general public in a shopping mall with color photocopies of Forsythe‘s photographs and asked them what meaning they perceived. Relying on this survey, Mattel asserts that only some individuals may perceive parodic character.
29 We decline to consider Mattel‘s survey in assessing whether Forsythe‘s work can be reasonably perceived as a parody. Parody is an objectively defined rhetorical device. Further, because parody is “a form of social and literary criticism,” it has “socially significant value as free speech under the First Amendment.” Dr. Seuss, 109 F.3d at 1400. While individuals may disagree on the success or extent of a parody, parodic elements in a work will often justify fair use protection. See, e.g., Yankee Publ‘g, Inc. v. News Am. Publ‘g, Inc., 809 F. Supp. 267, 280 (S.D.N.Y. 1992) (“First Amendment protections do not apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed.“). Use of surveys in assessing parody would allow majorities to determine the parodic nature of a work and possibly silence artistic creativity. Allowing majorities to determine whether a work is a parody would be greatly at odds with the purpose of the fair use exception and the Copyright Act. See generally Campbell, 510 U.S. at 583.
30 A parody is a “literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule.” id. at 580 (quoting AMERICAN HERITAGE DICTIONARY 1317 (3d. 1992)). For the purposes of copyright law, a parodist may claim fair use where he or she uses some of the “elements of a prior author‘s composition to create a new one that, at least in part, comments on that author‘s works.” Id. The original work need not be the sole subject of the parody; the parody “may loosely target an original” as long as the parody “reasonably could be perceived as commenting on the original or criticizing it, to some degree.” id. at 580-81, 583. That a parody is in bad taste is not relevant to whether it constitutes fair use; “it would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work].” id. at 582-83 (quoting Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903)).
31 In assessing whether Forsythe‘s photographs parody Barbie, Mattel urges us to ignore context — both the social context of Forsythe‘s work and the actual context in which Mattel‘s copyrighted works are placed in Forsythe‘s photographs. However, “[i]n parody, as in news reporting, context is everything.” id. at 588 (citations omitted). We conclude that Forsythe‘s work may reasonably be perceived as a parody of Barbie.
32 Mattel, through impressive marketing, has established Barbie as “the ideal American woman” and a “symbol of American girlhood” for many. Mattel, Inc. v. MCA Records, Inc. (”MCA“), 296 F.3d 894, 898 (9th Cir. 2002), cert. denied, 537 U.S. 1171 (2003). As abundantly evidenced in the record, Mattel‘s advertisements show these plastic dolls dressed in various outfits, leading glamorous lifestyles and engaged in exciting activities. To sell its product, Mattel uses associations of beauty, wealth, and glamour.
34 However one may feel about his message — whether he is wrong or right, whether his methods are powerful or banal — his photographs parody Barbie and everything Mattel‘s doll has come to signify. Undoubtedly, one could make similar statements through other means about society, gender roles, sexuality, and perhaps even social class. But Barbie, and all the associations she has acquired through Mattel‘s impressive marketing success, conveys these messages in a particular way that is ripe for social comment.7
35 Parody emerges from this “joinder of reference and ridicule.” Campbell, 510 U.S. at 583; cf. Dr. Seuss, 109 F.3d at 1401 (holding that defendants who wrote a poem titled “Cat NOT in the HAT” about the O.J. Simpson trial were not parodying Dr. Suess’ original work because the stanzas had “no critical bearing on the substance or style of” the original). By developing and transforming associations with Mattel‘s Barbie doll, Forsythe has created the sort of social criticism and parodic speech protected by the First Amendment and promoted by the Copyright Act. We find that this factor weighs heavily in favor of Forsythe.
36 Another element of the first factor analysis is whether the work‘s “purpose” was commercial or had a non-profit aim. Campbell, 510 U.S. at 584. Clearly, Forsythe had a commercial expectation and presumably hoped to find a market for his art. However, as the Supreme Court noted in Campbell, even works involving comment and criticism “are generally conducted for profit in this country.” Id. (quoting Harper & Row, 471 U.S. at 592.) On balance, Forsythe‘s commercial expectation does not weigh much against him. Given the extremely transformative nature and parodic quality of Forsythe‘s work, its commercial qualities become less important. id. at 579 (recognizing that the more “transformative the new work, the less will be the significance of the other factors“).
B. Nature of the copyrighted work
37 The second factor in the fair use analysis “recognizes that creative works are ‘closer to the core of intended copyright protection’ than informational and functional works.” Dr. Seuss, 109 F.3d at 1402 (quoting Campbell, 510 U.S. at 586). Mattel‘s copyrighted Barbie figure and face can fairly be said to be a creative work. However, the creativity of Mattel‘s copyrighted Barbie is typical of cases where there are infringing parodies. Campbell, 510 U.S. at 586 (“[P]arodies almost invariably copy publicly known, expressive works.“). As we have recognized in the past, “this [nature of the copyrighted work] factor typically has not been terribly significant in the overall fair use balancing.” Dr. Seuss, 109 F.3d at 1402. In any event, it may weigh slightly against Forsythe.
39 The third factor in the fair use analysis asks whether “‘the amount and substantiality of the portion used in relation to the copyrighted work as a whole,’ are reasonable in relation to the purpose of copying.” Id. (quoting
40 Mattel argues that Forsythe used the entirety of its copyrighted work and that this factor weighs against him. Mattel contends that Forsythe could have used less of the Barbie figure by, for example, limiting his photos to the Barbie heads.
41 First, Forsythe did not simply copy the work “verbatim” with “little added or changed.” id. at 587-88.8 A verbatim copy of Barbie would be an exact three dimensional reproduction of the doll. Forsythe did not display the entire Barbie head and body in his photographs. Parts of the Barbie figure are obscured or omitted depending on the angle at which the photos were taken and whether other objects obstructed a view of the Barbie figure.
42 Second, Mattel‘s argument that Forsythe could have taken a lesser portion of its work attempts to benefit from the somewhat unique nature of the copyrighted work in this case. Copyright infringement actions generally involve songs, video, or written works. See, e.g., Elvis Presley Enters., Inc. v. Passport Video, 349 F.3d 622 (9th Cir. 2003) (use of copyrighted Elvis Presley-related video clips, photographs, and music); L.A. News Serv., 305 F.3d 924 (use of a few seconds of a copyrighted video footage by a news service); Worldwide Church of God v. Phila. Church of God, Inc., 227 F.3d 1110 (9th Cir. 2000) (reproduction and distribution by nonprofit organization of an entire copyrighted work), cert. denied, 532 U.S. 958 (2001); Dr. Seuss, 109 F.3d at 1394 (use of Dr. Suess‘s “Cat in the Hat” format in written work about the O.J. Simpson trial). Because parts of these works are naturally severable, the new work can easily choose portions of the original work and add to it. Here because the copyrighted material is a doll design and the infringing work is a photograph containing that doll, Forsythe, short of severing the doll, must add to it by creating a context around it and capturing that context in a photograph. For our purposes, Forsythe‘s use is no different from that of a parodist taking a basic melody and adding elements that transform the work. See Campbell, 510 U.S. at 589 (noting that 2 Live Crew‘s rendition of “Pretty Woman” did not approach verbatim copying because, even though 2 Live Crew may have taken the most recognizable portion of the work, it had added “scraper” noises and overlays to the music). In both Forsythe‘s use of the entire doll and his use of dismembered parts of the doll, portions of the old work are incorporated into the new work but emerge imbued with a different character.
43 Moreover, Forsythe was justified in the amount of Mattel‘s copyrighted work that he used in his photographs. Mattel‘s argument that Forsythe could have used a lesser portion of the Barbie doll is completely without merit and would lead to absurd results. We do not require parodic works to take the absolute minimum amount of the copyrighted work possible. As the Supreme Court stated in Campbell, “[o]nce enough has been taken to assure identification, how much more is reasonable will depend, say, on the extent to which the [work‘s] overriding purpose and character is to parody the original or, in contrast, the likelihood that the parody may serve as a market substitute for the original.” id. at 587. We conclude that the extent of Forsythe‘s copying of the Barbie figure and head was justifiable in light of his parodic purpose and medium used. This factor also weighs in his favor.
44 The fourth factor asks whether actual market harm resulted from the defendant‘s use of plaintiff‘s protected material and whether “unrestricted and widespread conduct of the sort engaged in by the defendant ... would result in a substantially adverse impact on the potential market” for the original or its derivatives. id. at 590 (quoting 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.05[A](4), at 13-102.61 (1993)). This inquiry attempts to strike a balance between the benefit the public will derive if the use is permitted and the personal gain the copyright owner will receive if the use is denied. The less adverse effect that an alleged infringing use has on the copyright owner‘s expectation of gain, the less public benefit need be shown to justify the use.
45 Dr. Seuss, 109 F.3d at 1403 (quoting MCA, Inc. v. Wilson, 677 F.2d 180, 183 (2d Cir. 1981)).
46 Mattel argues that Forsythe‘s work could lead to market harm by impairing the value of Barbie itself, Barbie derivatives,9 and licenses for use of the Barbie name and/or likeness to non-Mattel entities.10 Because of the parodic nature of Forsythe‘s work, however, it is highly unlikely that it will substitute for products in Mattel‘s markets or the markets of Mattel‘s licensees. In Campbell, the Court clearly stated, “as to parody pure and simple, it is more likely that the new work will not affect the market for the original in a way cognizable under this factor.” Campbell, 510 U.S. at 591. Nor is it likely that Mattel would license an artist to create a work that is so critical of Barbie. “[T]he unlikelihood that creators of imaginative works will license critical reviews or lampoons of their own productions removes such uses from the very notion of a potential licensing market.” id. at 592.
47 As to Mattel‘s claim that Forsythe has impaired Barbie‘s value, this fourth factor does not recognize a decrease in value of a copyrighted work that may result from a particularly powerful critical work. id. at 593 (“The fact that a parody may impair the market for derivative uses by the very effectiveness of its critical commentary is no more relevant under copyright than the like threat to the original market....“). We recognize, however, that critical works may have another dimension beyond their critical aspects that may have effects on potential markets for the copyrighted work. id. at 592 (recognizing that the new work “may have a more complex character, with effects not only in the arena of criticism but also in protectable markets for derivative works“). Thus, we look more generally, not only to the critical aspects of a work, but to the type of work itself in determining market harm. id. at 593 (looking beyond the critical aspect of 2 Live Crew‘s rap rendition of “Pretty Woman” to the derivative market for rap music). Given the nature of Forsythe‘s photographs, we decline Mattel‘s invitation to look to the licensing market for art in general. Forsythe‘s photographs depict nude and often sexualized figures, a category of artistic photography that Mattel is highly unlikely to license. “The existence of this potential market cannot be presumed.” Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965, 972 (9th Cir. 1992), cert. denied, 507 U.S. 985 (1993).
48 In a case almost identical to this one, Mattel, Inc. v. Pitt (”Pitt“), 229 F. Supp. 2d 315, 321-22 (S.D.N.Y. 2002), the Southern District Court of New York found no danger of potential market harm to derivative uses. In Pitt, Mattel brought a copyright infringement suit against Susanne Pitt, an artist who sold and designed a line of figures called “Dungeon Dolls.” These dolls were essentially Barbie dolls, physically altered, clothed in sadomasochistic attire, and placed in contexts with like themes. Id. Having found the works sufficiently transformative, the Pitt court concluded that potential market harm was improbable because Mattel was unlikely to develop or license others to develop a product in the “adult” doll market. id. at 324.
50 Finally, the public benefit in allowing artistic creativity and social criticism to flourish is great. The fair use exception recognizes this important limitation on the rights of the owners of copyrights. No doubt, Mattel would be less likely to grant a license to an artist that intends to create art that criticizes and reflects negatively on Barbie‘s image. It is not in the public‘s interest to allow Mattel complete control over the kinds of artistic works that use Barbie as a reference for criticism and comment.
51 Having balanced the four
II.
52 We now address whether the district court erred in granting summary judgment in favor of Forsythe on Mattel‘s claims of trademark and trade dress infringement and dilution.11 As above, we review de novo a grant of summary judgment. See Oliver, 289 F.3d at 626.
A. Trademark12
53 The limited purpose of trademark protections set forth in the Lanham Trade-Mark Act,
54 As we recently recognized in MCA, however, when marks “transcend their identifying purpose” and “enter public discourse and become an integral part of our vocabulary,” they “assume[] a role outside the bounds of trademark law.” MCA, 296 F.3d at 900. Where a mark assumes such cultural significance, First Amendment concerns come into play. Id. In these situations, “the trademark owner does not have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source-identifying function.” Id. See also New Kids on the Block v. News Am. Publ‘g Inc., 971 F.2d 302, 307 (9th Cir. 1992).
56 The Rogers balancing test requires courts to construe the Lanham Act “to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” Rogers, 875 F.2d at 999 (emphasis added). Accordingly, the Rogers test prohibits application of the Lanham Act to titles of artistic works unless the title “has no artistic relevance to the underlying work whatsoever or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” Id.
57 Application of the Rogers test here leads to the same result as it did in MCA. Forsythe‘s use of the Barbie mark is clearly relevant to his work. See MCA, 296 F.3d at 902 (“[T]he use of Barbie in the song title clearly is relevant to the underlying work, namely, the song itself.“). The Barbie mark in the titles of Forsythe‘s works and on his website accurately describe the subject of the photographs, which in turn, depict Barbie and target the doll with Forsythe‘s parodic message. See id. (“[T]he song is about Barbie and the values [the defendants] claim[] she represents.“) The photograph titles do not explicitly mislead as to Mattel‘s sponsorship of the works. See id.
58 (“The song title does not explicitly mislead as to the source of the work; it does not, explicitly or otherwise, suggest that it was produced by Mattel. The only indication that Mattel might be associated with the song is the use of Barbie in the title; if this were enough to satisfy this prong of the Rogers test, it would render Rogers a nullity.” (emphasis in original)).
59 Accordingly, the public interest in free and artistic expression greatly outweighs its interest in potential consumer confusion about Mattel‘s sponsorship of Forsythe‘s works.
B. Trade dress13
60 Mattel also claims that Forsythe misappropriated its trade dress in Barbie‘s appearance, in violation of the Lanham Act,
61 Arguably, the Barbie trade dress also plays a role in our culture similar to the role played by the Barbie trademark — namely, symbolization of an unattainable ideal of femininity for some women. Forsythe‘s use of the Barbie trade dress, therefore, presumably would present First Amendment concerns similar to those that made us reluctant to apply the Lanham Act as a bar to the artistic uses of Mattel‘s Barbie trademark in both MCA and this case. But we need not decide how the MCA/Rogers First Amendment balancing might apply to Forsythe‘s use of the Barbie trade dress because we find, on a narrower ground, that it qualifies as nominative fair use.14
63 Applying these fair use standards to the trade dress context, we hold that a defendant‘s use is classic fair use where the defendant has used the plaintiff‘s dress to describe or identify the defendant‘s own product and not at all to describe or identify the plaintiff‘s product.18 Likewise, a defendant‘s use is nominative where he or she used the plaintiff‘s dress to describe or identify the plaintiff‘s product, even if the defendant‘s ultimate goal is to describe or identify his or her own product.
64 Forsythe‘s use of the Barbie trade dress is nominative. Forsythe used Mattel‘s Barbie figure and head in his works to conjure up associations of Mattel, while at the same time to identify his own work, which is a criticism and parody of Barbie. See Cairns, 292 F.3d at 1151. Where use of the trade dress or mark is grounded in the defendant‘s desire to refer to the plaintiff‘s product as a point of reference for defendant‘s own work, a use is nominative.
65 Fair use may be either nominative or classic. id. at 1150. We recognize a fair use defense in claims brought under
66 First, the plaintiff‘s 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 plaintiff‘s product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
67 Cairns, 292 F.3d at 1151 (quoting New Kids on the Block, 971 F.2d at 308).
68 Forsythe‘s use easily satisfies the first element; his use of the Barbie figure and head are reasonably necessary in order to conjure up the Barbie product in a photographic medium. See id. at 1153 (“[T]here is no substitute for Franklin Mint‘s use of Princess Diana‘s likeness on its Diana-related products....“). It would have been extremely difficult for Forsythe to create a photographic parody of Barbie without actually using the doll.
69 Forsythe also satisfies the second element, which requires that a defendant only use so much of a trademark or trade dress as is reasonably necessary.
As we recognized in Cairns, “[w]hat is `reasonably necessary to identify the plaintiff‘s product’ differs from case to case.” Id. at 1154. Where identification “of the defendant‘s product depends on the description [or identification] of the plaintiff‘s product, more use of the plaintiff‘s trademark” or trade dress is reasonably necessary. Id. Given the photographic medium and Forsythe‘s goal of representing the social implications of Barbie, including issues of sexuality and body image, Forsythe‘s use of the Barbie torso and head is both reasonable and necessary. It would be very difficult for him to represent and describe his photographic parodies of Barbie without using the Barbie likeness. Though a “closer call than the first two elements” of the nominative fair use analysis, id. at 1155, the final element — that the user do nothing that would, in conjunction with use of the mark or dress, suggest sponsorship or endorsement by the trademark or trade dress holder — is satisfied here and weighs in Forsythe‘s favor. This element does not require that the defendant make an affirmative statement that their product is not sponsored by the plaintiff. Id. Mattel attempts to argue that Forsythe suggested sponsorship by asserting to potential consumers that one of his photographs “hangs on the wall of the office of Mattel‘s President of Production,” to whom Forsythe referred as “Joe Mattel.”20 One of the purchasers of Forsythe‘s work apparently told Forsythe that he had given the work to this Mattel senior executive as a gift. Forsythe repeated this fact in certain letters to galleries and friends. Forsythe claims that he had no intention of suggesting sponsorship and that he meant the statement humorously. In virtually every promotional packet in which Forsythe mentioned “Joe Mattel,” he also included a copy of his biography in which he identified himself as “someone criticizing Mattel‘s Barbie and the values for which it stands.” The letters in the packets asserted that Forsythe was attempting to “deglamourize[ ] Barbie,” “skewer[ ] the Barbie myth,” and expose an “undercurrent of dissatisfaction with consumer culture.” A similar mission statement was prominently featured on his website. The rest of the materials in these promotional packets sent to galleries reduce the likelihood of any consumer confusion as to Mattel‘s endorsement of Forsythe‘s work. Any reasonable consumer would realize the critical nature of this work and its lack of affiliation with Mattel. Critical works are much less likely to have a perceived affiliation with the original work. New Kids on the Block, 971 F.2d at 309 (finding no suggested sponsorship in part because a poll in a magazine regarding the popularity of the New Kids asked if the New Kids had become a “turn off“).21 Moreover, even if “Joe Mattel” existed, we question whether possession by a third-party passive recipient of an allegedly infringing work can suggest sponsorship. We hold that Forsythe‘s use of Mattel‘s Barbie qualifies as nominative fair use. All three elements weigh in favor of Forsythe. Barbie would not be readily identifiable in a photographic work without use of the Barbie likeness and figure. Forsythe used only so much as was necessary to make his parodic use of Barbie readily identifiable, and it is highly unlikely that any reasonable consumer would have believed that Mattel sponsored or was affiliated with his work. The district court‘s grant of summary judgment to Forsythe on Mattel‘s trade dress infringement claim was, therefore, proper.C. Dilution
Mattel also appeals the district court‘s grant of summary judgment on its trademark and dress dilution claims. The district court found that Forsythe was entitled to summary judgment because his use of the Barbie mark and trade dress was parody and thus “his expression is a non-commercial use.” Dilution may occur where use of a trademark “whittle[s] away ... the value of a trademark” by “blurring their uniqueness and singularity” or by “tarnishing them with negative associations.” MCA, 296 F.3d at 903 (internal citations omitted). However, “[t]arnishment caused merely by an editorial or artistic parody which satirizes plaintiff‘s product or its image is not actionable under an anti-dilution statute because of the free speech protections of the First Amendment....” 4 McCarthy, supra, § 24:105, at 24-225. A dilution action only applies to purely commercial speech. MCA, 296 F.3d at 904. Parody is a form of noncommercial expression if it does more than propose a commercial transaction. See id. at 906. Under MCA, Forsythe‘s artistic and parodic work is considered noncommercial speech and, therefore, not subject to a trademark dilution claim. We reject Mattel‘s Lanham Act claims and affirm the district court‘s grant of summary judgment in favor of Forsythe. Mattel cannot use “trademark laws to ... censor all parodies or satires which use [its] name” or dress. New Kids on the Block, 971 F.2d at 309.III.
In light of our holding above that Forsythe‘s work was transformative, Mattel‘s remaining state law claims are barred by the First Amendment. Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387, 106 Cal. Rptr. 2d 126, 21 P.3d 797, 802-11 (Cal. 2001) (holding that state law right of publicity claims are “especially worthy of First Amendment protection” when the challenged work “contains significant transformative elements“), cert. denied, 534 U.S. 1078, 122 S. Ct. 806, 151 L. Ed. 2d 692 (2002). Mattel also asserts a false advertising claim for the first time on appeal. Mattel did not make this argument to the district court and has, therefore, waived it. Broad v. Sealaska Corp., 85 F.3d 422, 430 (9th Cir. 1996), cert. denied, 519 U.S. 1092, 117 S. Ct. 768, 136 L. Ed. 2d 714 (1997). Because we affirm the district court‘s grant of summary judgment in favor of Forsythe and against Mattel on Mattel‘s copyright and trademark claims, there is no need for us to address the district court‘s evidentiary rulings appealed by the parties. This aspect of the parties’ appeals is moot.IV.
Mattel appeals the San Francisco federal district court‘s decision to quash itsV.
On cross-appeal, Forsythe appeals the Los Angeles federal district court‘s decision to deny attorney‘s fees under the Lanham and Copyright Acts. We review the district court‘s refusal to award fees for abuse of discretion. See Yount v. Acuff Rose-Opryland, 103 F.3d 830, 836 (9th Cir. 1996). See also Rolex Watch, U.S.A., Inc. v. Michel Co., 179 F.3d 704, 711 (9th Cir. 1999). Any legal analysis or statutory interpretation, however, is reviewed de novo. See Entm‘t Research Grp., Inc. v. Genesis Creative Grp., Inc., 122 F.3d 1211, 1216 (9th Cir. 1997), cert. denied, 523 U.S. 1021, 118 S. Ct. 1302, 140 L. Ed. 2d 468 (1998). In assessing whether attorney‘s fees under the Copyright Act were appropriate, the district court held thatthe Defendants have not demonstrated that the award of $1.6 million dollars in fees and expenses would further the purposes of the Copyright Act, that plaintiff‘s case was frivolous or objectively unreasonable, or that the need to advance considerations of compensation and deterrence supports an award.Assessing whether attorney‘s fees were appropriate under the Lanham Act, the district court held that “[d]efendants have not demonstrated that this is an exceptional case, such that the Court can in its discretion award attorneys’ fees under the Lanham Act.” Forsythe argues that the district court failed to provide sufficient justification for its denial of attorney‘s fees to satisfy the Requirements of
Statements conclusory in nature are to be eschewed in favor of statements of the preliminary and basic facts on which the district court relied. Otherwise, their findings are useless for appellate purposes. The findings must be explicit enough to give the appellate court a clear understanding of the basis of the trial court‘s decision, and to enable it to determine the ground on which the trial court reached its decision.Unt v. Aerospace Corp., 765 F.2d 1440, 1444 (9th Cir. 1985) (citations omitted). Generally, a district court‘s order on attorney‘s fees may be set aside if the court fails to state reasons for its decision or applies the incorrect legal standard. See Smith v. CMTA-IAM Pension Tr., 746 F.2d 587, 589 (9th Cir. 1984) (“If the district court fails to state the reasons for its decision a remand for a statement of reasons may be necessary.“). See also EEOC v. Bruno‘s Rest., 13 F.3d 285, 288 (9th Cir. 1993) (“The court‘s conclusory finding is not the detailed explanation that circuit courts require for effective review.“); Stewart v. Gates, 987 F.2d 1450, 1454 (9th Cir. 1993) (“[A]bsent some indication of how the district court‘s discretion was exercised [with respect to the attorney‘s fee motion], [the appellate] court has no way of knowing whether that discretion was abused.” (internal cite omitted)). We have reversed a district court‘s grant of attorney‘s fees in a copyright case where the court:
did not make a finding concerning the basis for the award of attorney‘s fees. Thus we do not know what motivated the district court to award fees. For that reason we reverse and remand this issue to the district court to make an express finding as to the basis for the award of attorney‘s fees.McCulloch v. Albert E. Price, Inc., 823 F.2d 316, 323 (9th Cir. 1987), disagreed with on other grounds by Fogerty v. Fantasy, Inc., 510 U.S. 517, 525-26, 114 S. Ct. 1023, 127 L. Ed. 2d 455 (1994). Where the district court fails to provide reasoning for its conclusions, however, we will only remand if the record does not support the district court‘s decision. See Bruno‘s Rest, 13 F.3d at 288 (“However, when a court does not enter a specific finding of fact or conclusion of law, we will uphold the result if there is a reasonable view of the record to support it.“). The court here failed to provide any reasoning for its conclusions and, as explained below, we conclude that the record did not support the court‘s conclusions. Accordingly, we vacate and remand to the district court to reconsider its denial of attorney‘s fees under both Acts.