n California, a Federal Court Judge denied the defendent’s — Madonna’s — Motion for Summary Judgment that she is the “senior trademark user” of the “Material Girl” mark. This now clears the path for a lawsuit by the plaintiff, clothing company L.A. Triumph, which has sold a “Material Girl clothing line since 1997.
Madonna and her company MG ICON, LLC claim that she was the first to create, use, and popularize the mark through her 1985 song, “Material Girl,” its accompanying video, and sales of clothing through her worldwide tours over the years since.
At the heart of the case is the issue of what defines seniority in legal use of a mark. Madonna claims that based on her music and the accompanying clothing sales beginning in 1985, that she was the first to hold the rights to use the mark. However, the plaintiff contends that Madonna’s use was merely merchandising to promote her music, not use in an established clothing line in retail locations across the country as L.A. Triumph’s brand is. The judge agreed. Performing a song does not in itself earn rights to use a related trademark without establishing the trademark’s use in commerce. Since Madonna could only evidence clothing sales baring the mark from 2001 to 2005, that use did not precede L.A. Triumph’s use of the mark since they launched their line in 1997.
Additionally, the court addressed the issue of the likelihood of confusion of the two brands. Defendants suggested that there would be no confusion between the two brands because Madonna’s brand was distributed through a higher-end retailer, Macy’s, while Plaintiff’s brand is generally found in discount retailers. However, Plaintiff showed evidence that Macy’s clothes are also sold in discount retailers, therefore their appearance could create confusion for consumers. The judge felt there are several issues of material fact that should be decided before a jury rather than by summary judgment.
This case could also present an interesting challenge to what constitutes use of a trademark in commerce. Is printing and selling merchandise baring the mark to promote its use and brand different than starting a fashion label baring the mark that also seeks to promote brand identity? If artists create the recognition of a particular word or phrase and it becomes synonymous with their persona in the media, does that recognition deserve ip rights and protections? Did the plaintiff’s line garner more sales as a result of Madonna’s popularity and use of the mark a decade prior and throughout her 25-year career? Expect similar questions to be answered in the trial scheduled for October of this year. It could have an interesting impact on trademark case law.
(Click here for Civil Minutes, L.A. Triumph v. Madonna, MG Icon, LLC).