What's in a Name: Rights for Madonna's Material Girl Potentially Worth Millions
Madonna's getting slapped with a law suit by LA Triumph, an apparel company, over the right to use "Material Girl." Though the collection's bustiers, leggings, and tutus appear to be straight from the 80s, all the clothing and accessories produced in a joint venture with Iconix (ICON), hit the Macy's (M) racks this month.
Could Madonna really have failed to lay legal claim to a Material Girl brand for lo these many years? Apparently so. Does the California-based clothier have a leg to stand on in court? Very possibly. So quell the urge to chuckle. A case of such David vs. Goliath proportions may turn out to be an extraordinary object lesson in protecting all aspects of intellectual property.
Whether Madonna likes being called Material Girl or not (and there's plenty of evidence to suggest it makes her cringe), the moniker's been inexorably tied to the megawatt star since the hit single of that name came out in 1984. Yet now Madge is being called to defend her rights to the name against the company that claims it's been selling (uncontested) under that very label since 1997.
In its court papers LA Triumph contends that it's been selling "millions of dollars" worth of Material Girl goods in stores from Nordstrom (JWN) to Ross (ROST) since 2003. Before that, the company was called OC Mercantile Corporation and also sold clothes using the brand.
Because LA Triumph's threads are for juniors -- just like the Macy's collection -- the company's lawyer issued a statement saying "Madonna and her newfound company do not have the right to trade in the same space under this brand," alleging that their client faces, "a risk of being subsumed by Madonna's profile, obvious worldwide notoriety."
LA Triumph is also concerned that the "risqué" nature of the Macy's Material Girl ads (think smoky-eyed bad girl Taylor Momsen flaunting a hint of cleavage and expanses of skinny lace-clad legs) will steal the spotlight away from its own brand. Incidentally, that's already happened. A Google search for LA Triumph's Material Girl produces 135,000 image results, most of which are Madonna's or unrelated. (I stopped looking after page 8).
But LA Triumph is arguing that Madonna doesn't have the right to secure a trademark, either. And that's where it gets interesting.
Liz Corradino, a partner in the Entertainment & Intellectual Property Group at the New York law firm of Moses & Singer LLP told me,
A trademark is a word, design, phrase or symbol that identifies a specific source of goods. In the United States, a federal registration is not required to establish rights in a trademark. Rather, it is actual use in commerce that creates trademark rights.
Madonna's legal eagles did apply for a federal registration back in December of 2009 and there are filings on record with the U.S. Patent and Trademark Office for both Material Girl Brand fragrance and cosmetics as well as all manner of clothing and accessories.
But even though team Madonna minded their Ps, they might not be able to do anything about the Qs. Corradino says,
Although a federal registration, if it can be obtained, gives a trademark owner legal rights not available under common law and is generally recommended, an owner of an unregistered, or common law, trademark does have rights that can be protected and enforced.
In other words, like a common law marriage, now that LA Triumph's been using Material Girl for 13 years, the company does indeed have some rights.
However, Madonna's association with the name goes back twice that far. Once upon a time, she may have been reluctant to grab the legal rights because selling branded merchandise was considered selling out. Now plenty of respected artists are using their music as a platform to peddle everything from panties to perfume (think Mary J. Blige's phenomenally successful fragrance on HSN) partly due to the lack of profits in performing. And if they've been smart about protecting their intellectual property, pay day will come that much sooner.
Image via Macys.com
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