Posted On: February 6, 2012 by Melvin N.A. Avanzado

ENTERTAINMENT LITIGATION: MADONNA'S BATTLE OVER "MATERIAL GIRL" TRADEMARK

STAR OF SUPER BOWL XLVI HALFTIME SHOW FOUGHT FOR "MATERIAL GIRL" TRADEMARK RIGHTS IN CLOTHING

Material GirlBefore her appearance at the Super Bowl festivities this weekend, singer/songwriter Madonna was locked in a battle over the trademark "Material Girl" with a clothing manufacturer who has been manufacturing clothing under that name for almost 15 years. In 2010, Madonna's company and retailer Macy's began to sell a line of clothing under the "Material Girl" name. The clothing manufacturer sued Madonna and others.

In a motion for summary judgment last summer, the company defendants claimed that Madonna obtained a trademark over the phrase "Material Girl" as a result of her hit song of the same name and related sales of goods and merchandise with that name

After the jump, I'll summarize the court's analysis and describe why I believe that Madonna should be afforded trademark rights to "Material Girl" as a result of the popularity of her song and her public persona as the quintessential "Material Girl."

MADONNA LOUISE VERONICA CICCONE'S "MATERIAL GIRL"

Madonna Louise Veronica Ciccone began her singing career as "Madonna" in the early 1980s. Madonna produced a number of hit (and iconic) songs such as Like A Virgin (her first US #1 hit song), Papa Don't Preach, Who's That Girl, Like A Prayer and Vogue (one of the featured songs in Madonna's Super Bowl XLVI show). One of Madonna's iconic hit songs is Material Girl published in 1985. Madonna's appearances in various motion pictures in the mid to late 1980s like Who's That Girl as well as her concert tours furthered her image as the prototypical "Material Girl." The music video for Material Girlblended the lyrics with images derived from the Marilyn Monroe performance of Diamonds Are A Girl's Best Friend. The song Material Girl together with Like A Virgin are widely credited for making Madonna into an entertainment icon.

Madonna, her company and Macy's were sued by a clothing manufacturer in 2010 alleging that Madonna's new clothing line bearing the name "Material Girl" and sold at Macy's infringed on the plaintiff's trademark. Plaintiff and its predecessor filed for California trademark protection for "Material Girl" line of clothes in 1997 -- but did not file for protection under federal law -- and the California trademark registration expired in 2007. Madonna's company registered for federal trademark protection for "Material Girl" in 2009 and began selling a line of clothing through Macy's stores.

Madonna's case was pending before the Honorable S. James Otero, United States District Court Judge for the Central District of California. Early in the case, Judge Otero dismissed Madonna personally from the case on jurisdictional grounds. Last summer, however, Judge Otero denied the company defendants' motion for summary judgment on the trademark claims -- finding that there were disputed facts concerning the trademark rights to "Material Girl." You can read and download a copy of Judge Otero's order here.

THE ASSOCIATION BETWEEN "MATERIAL GIRL" AND MADONNA SHOULD CONTROL THE TRADEMARK ANALYSIS

In denying summary judgment, Judge Otero's analysis focused upon whether Madonna used "Material Girl" in commerce -- particularly with respect to clothing. Macy's and Madonna's company argued that the t-shirts and other clothing sold at Madonna's concerts in the 1980s constituted valid uses of the "Material Girl" mark -- and therefore vested their interests in that trademark for later use in their clothing line. While this analysis is the traditional (and proper) method of analyzing trademarks, particularly on a motion for summary judgment, the association between Madonna -- her song and persona -- and the "material girl" is too strong to ignore.

The phrase "material girl" may be well established in our lexicon today. However, Madonna and her song certainly brought the phrase "material girl" into our consciousness. The song helped propel Madonna to be the star she was -- and remains today.

Accordingly, the strong association between "Material Girl" and Madonna's song -- and therefore Madonna -- is undeniable. Any product with the "Material Girl" mark will bring Madonna to mind and could likely cause confusion.

Of course, Judge Otero's order was in the context of a motion for summary judgment -- focusing not on whether the mark is so closely associated with Madonna as to cause confusion but instead on the ownership (and senior use) of the "Material Girl" mark was indisputable. The disputed issue of confusion concerning the source of the product at issue -- the core one under the Lanham Act -- would be resolved at trial.

CONCLUSIONS

Sadly, this case settled on the eve of trial late last year. While that settlement is likely to have been the correct economic decision for the parties, it does deprive fans and onlookers a decision on whether "Material Girl" is so closely associated with Madonna that it causes confusion as to the source of any "Material Girl" products. As someone who grew up in Madonna's hey day, perhaps my conclusions are clouded by watching Madonna rise to stardom on the heels of Material Girl and her other 1980s hits. However, since Madonna's song was likely the first widespread use of the phrase "material girl," the close association between Madonna and any "Material Girl" mark is easily established -- and confusion as to Madonna's association with any products with that mark would likely follow.

The Entertainment Litigation Blog is published by Melvin N.A. Avanzado, an entertainment litigator and civil trial lawyer in Los Angeles. Mel is an accomplished trial lawyer with over 20 years experience. Mel's practice includes extensive experience representing plaintiffs and defendants in complex disputes, including the representation of motion picture studios, television networks, media companies, and significant individuals in the entertainment and sports industries.

View Mel's complete biography