l.a. triumph v. madonna (c.d. cal. 2011) (l.a. triumph's memo of law in opposition to defendants'...

8/4/2019 L.A. Triumph v. Madonna (C.D. Cal. 2011) (L.A. Triumph's Memo of Law in Opposition to Defendants' Motion for Su

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19139.1 iOPPOSITION TO MOTION FOR SUMMARY JUDGMENT

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Peter R. Afrasiabi (Bar No. 193336)Email: [email protected] W. Arledge (Bar No. 200767)Email: [email protected] F. Vakil (Bar No. 248859)

Email: [email protected] LLP4000 MacArthur BoulevardWest Tower, Suite 1100

Newport Beach, California 92660Telephone: (949) 502-2870Facsimile: (949) 258-5081

Attorneys for Plaintiff LA TRIUMPH, Inc.

UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA

L.A. TRIUMPH, INC, a Californiacorporation,

Plaintiff,

v.

MADONNA LOUISE VERONICACICCONE, an individual; MATERIALGIRL BRAND, LLC, a Delaware limitedliability company; MG ICON, a Delawarelimited liability company; MACYSRETAIL HOLDINGS, INC, a Delawarecorporation; and DOES 1 through 10,inclusive,

Defendants.

Case No. CV-10-06195 SJO (JC)Hon. S. James Otero

PLAINTIFF LA TRIUMPH, INC.SOPPOSITION TO DEFENDANTSMOTION FOR SUMMARYJUDGMENT OR SUMMARYADJUDICATION OF ISSUES ANDSUPPORTING DOCUMENTS

Date: July 25, 2011Time: 10:00 amCourtroom: 1Trial Date: October 11, 2011

[Exhibits D, H, and I Filed Under Seal

Pursuant to Defendants Insistence]

[Statement of Genuine Issues,Declarations of Hafiz, Amin and Arledge,Evidentiary Objections, and NoticeRegarding Under Seal Filing/Rule 56(d)Supplement filed concurrently]

Case 2:10-cv-06195-SJO -JC Document 90 Filed 07/02/11 Page 1 of 23 Page ID #:2628


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19139.1 iiOPPOSITION TO MOTION FOR SUMMARY JUDGMENT

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TABLE OF CONTENTS

I. SUMMARY OF ARGUMENT.................................................................................

II. STATEMENT OF FACTS .......................................................................................

A. Defendants have been playing games with the evidence ............................

B. LA Triumph And Its Predecessors Have Continuously Used The Materi

Girl Mark In Association With Junior Womens Clothing Since 1997. ....

C. Defendants Allegations of Use of The Material Girl Mark.......................

1. Madonna's only alleged use of Material Girl on clothing issales of items through her concert merchandiser ....................................

2. Madonnas new company, Material Girl Brand, LLC, files anintent to use the brand Material Girl trademark application...........

3. MG Icon Pretends to Have Rights From Purim or Madonna .................4. Defendants Subsequent Sales Of Material Girl Products

After August 2010. ..................................................................................III. DEFENDANTS MOTION MUST BE DENIED ..................................................

A. Even if Madonna did have trademark rights in Material Girl, MG Ico

has not acquired those rights.........................................................................

B. Defendants Arguments That Madonna Is A Senior User Is An After-Th

Fact Construct, And A Flawed One at That................................................

1. Madonnas 1985 Song Material Girl In And Of Itself DoesNot Give Rise To Trademark Rights......................................................

2. Madonna acquired no trademark interest in Material Girl onclothing merely because some in the media call her the MaterialGirl..........................................................................................................

3. Live Nations alleged prior use of the phrase Material Girl onconcert t-shirts was not a trademark use ................................................

4. Madonnas use of Material Girl is unproven and apparentlyabandoned...............................................................................................

C. Defendants Cannot Prove at Summary Judgment that They Must Preva

underSleekcraft. .............................................................................................

IV. CONCLUSION...........................................................................................................2



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TABLE OF AUTHORITIES

Cases

1-800 Contacts, Inc. v. Whenu.com, Inc. et al., 414 F.3d 400, 407-14 (2d Cir. 2005) ........

Allard Enterprises, Inc. v. Advanced Programming Resources, Inc., 249 F.3d 564 (6th Cir

2001) .................................................................................................................................

Avakoff v. Southern Pacific Co., 765 F.2d 1097, 1098 (Fed. Cir. 1985)..............................

Bourjois & Co. v. Katzel, 260 U.S. 689 (1923) .....................................................................

Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998) ............17,

E&J Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1289 (9th Cir. 1992).................9,

Federated Dept Stores, Inc., 730 F. Supp. 289, 290-91 (D. Minn 1989)............................

Oliveria v. Frito-Lay Inc., 251 F.3d 56 (2nd Cir. 2001).......................................................

Russell v. Rolfs, 893 F.2d 1033 (9th Cir. 1990)....................................................................

Tana v. Dantannas, 611 F.3d 767 (11th Cir. 2010) ............................................................

Western Stove Co., Inc. v. Geo D. Roper Corp., 82 F. Supp. 206, 213 (S.D. Cal. 1949) ....

Statutes

15 U.S.C. 1060....................................................................................................................

15 U.S.C. 1127...................................................................................................................



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MEMORANDUM OF POINTS AND AUTHORITIES

I. SUMMARY OF ARGUMENTIn order to secure summary judgment, Defendant MG Icon must show one of two

things, either: (1) that there is no genuine issue of material fact that it has senior rights to

Material Girl in fashion -- a high hurdle since Plaintiff has been selling Material Girl

clothing since 1997, whereas MG Icon did not exist until 2009 and only started selling

Material Girl clothing in 2010; or (2) no likely confusion underSleekcraft.

As to the former, MG Icon asserts it acquired senior rights from Madonna. But the

evidence demonstrates that Madonna never had trademark rights in Material Girl in

clothing, and that even if she did, MG Icon never acquired those rights for itself:

In the Agreement between MG Icon and Madonnas company, Madonna and MGIcon declare that Madonna has no trademark rights in fashion for the phrase

Material Girl;

The agreement does not purport to assign the Material Girl trademark to MG Icon MG Icon's corporate designee -- a sophisticated trademark lawyer -- cannot identify

the document or documents in which MG Icon acquired its alleged trademark rights

Madonna and her companies never filed a trademark application for Material Girlon clothing, and MG Icon's recent trademark application was an intent to use

trademark application that did not claim past use; and

Even if Madonna had trademark rights in the mark -- she doesn't -- and even if shehad tried to assign them to MG Icon -- she didn't -- that assignment would be an

invalid assignment in gross because Madonna never transferred any underlying

goodwill associated with the mark to MG Icon.

In order to circumvent all of these inconvenient -- indeed, fatal -- facts, Defendants

want to claim rights arising from the alleged sale of concert merchandise containing the

name of Madonna's popular song. But:



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Defendants attempt to prove this alleged past use with the bald, unsupportedassertion of a third party, not evidence sufficient to show actual sales in any actual

geographic market;

Indeed, it appears any past use of Material Girl on concert t-shirts was abandoned The alleged past use would not constitute a trademark use of the phrase Material

Girl for womens junior fashion, as it is merely an advertisement for Madonna's

music, not a mark identifying the source of a fashion brand; and

Defendants and their witnesses concede that fashion and concert merchandise aredistinct markets and undertakings, such that the alleged past use on concert

merchandise is irrelevant to fashion.

Recognizing that their claim to senior trademark rights is weak, Defendants also

assert that there is no likelihood of confusion. But Defendants cannot prove as a matter o

law that there is no genuine issue of material fact underSleekcraft. Indeed, there are three

critical factors in a reverse confusion case, and all weigh heavily in Plaintiff's favor:

Defendants do not -- and practically speaking, cannot -- assert that the MaterialGirl mark is weak;

The marks are identical; and Defendants sales are of the same types of clothes in the same market at the sam

price points.

Defendants give this Court no basis to conclude that there is no genuine issue of

material fact as to their claim of senior trademark rights or the absence of confusion.

II.STATEMENT OF FACTSA.Defendants have been playing games with the evidence

Defendants have asserted from the beginning of this case that MG Icon acquired

trademark rights from Madonna and that they acquired those rights in the Purim-MG Icon

agreement. See Defendants Motion to Dismiss at Docket No. 12, pp. 1:10-15, 3:19-4:19,

and 12:5-9. Yet for months, Defendants refused to produce a complete copy of that

agreement. They attached to Madonna's motion to dismiss a heavily redacted copy, the



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only version they would produce until an imminent motion to compel convinced them to

produce it after they filed their first summary judgment motion.

Now we know why. Below are two excerpts of the contract between Purim and MG

Icon. The first is the version Defendants have previously provided to this Court:

Here is the real version of the contract language, provided after Plaintiffs counsel

threatened a motion to compel where the previously-hidden language is now highlighted:

Declaration of Christopher Arledge (Arledge Decl) 10-11, Exhs. C & D.

Why did Defendants redact the highlighted language? Sensitive business

information, perhaps? Maybe a trade secret or two? No. MG Icon's corporate designee

could not think of any reason why that sentence is confidential and needed to be redacted.

Tarshis Depo. at 13:19 to 16:4. It is clear now that Defendants redacted the language only

because it contradicts their litigation position. The sentence, with defined terms identified

in brackets, says: The Covered Licensor Parties [Purim and Madonna] have not

commercialized any trademark or other proprietary rights in the Approved Terms [Materi



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Girl] in the Licensed Categories [womens apparel, etc.]. Arledge Decl 11, Ex. C. Th

language from the prior versions of the contract is even clearer: Licensor, Artist, and the

Affiliates acknowledge that Licensor, Artist, and their Affiliates currently have, and have

had in the past, no trademark or other proprietary rights in the Approved Terms

[Material Girl]. Arledge Decl 38, Ex. T (emphasis added). The previously hidden

sentence from the final agreement contradicts everything Defendants have been telling thi

Court and Plaintiff since this litigation began. This language confirms that as a matter of

fact Madonna had no trademark rights to even assign, and Defendants knew it.

B.LA Triumph And Its Predecessors Have Continuously Used The Material GirlMark In Association With Junior Womens Clothing Since 1997.

In January 1997, LA Triumphs predecessor in interest, OC Mercantile, began

marketing and selling a line of juniors clothing under the brand name Material Girl. Se

Hafiz Lakhani Declaration (Hafiz Decl.) 4-6. In August 1997, OC Mercantile

registered the trademark Material Girl for use on clothing (international class 025) with

the California Secretary of State. Id. 7. From 1997 to 2003, OC Mercantile sold a varie

of womens juniors clothes under the Material Girl girl mark, including dresses, blouse

tank tops, skirts, jeans, and other garments (collectively Fashion Apparel). Id. 6.

Between January 1997 and about the fall of 2003, OC Mercantile continuously used

the Material Girl mark on its junior womens clothing collection, which was sold to

various retail outlets including Wet Seal, Bealls, Nordstrom, and other retail stores

throughout the country. Hafiz Decl., 6. Then, in or about the fall of 2003, OC Mercanti

sold all of its assets to Hasina Lakhani, the mother of the owner of OC Mercantile.Id. 1

With the assets, OC Mercantile assigned its interest in the Material Girl trademark. Id.

Hasina Lakhani subsequently licensed the Material Girl name to her companies,

LA Triumph (2003 - Present) and The Reason, Inc. (approx. 2003-2004). See

Declaration of Amin Lakhani (Amin Decl.) 7-8; Hafiz Decl. 15-16. Between 2003

and 2006, Ms. Lakhani also approved sales of the Material Girl label for womens

clothes through her husbands company Absolute Apparel, Inc. (approx. 2003-2005). A



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three entities were ultimately merged into LA Triumph, with LA Triumph acquiring the

Material Girl trademark. Hafiz Decl. 15-16. LA Triumph has continued marketing

and selling Fashion Apparel under the Material Girl mark to various retailers including

Bealls stores, Ross stores, various national and regional retail chains, and independent

stores. Hafiz Decl. 20.

LA Triumph sells both its Fashion Apparel (and professional apparel) to various

regular-priced clothing retail chains (i.e. Walgreens, etc.), regular-priced independent reta

stores (i.e Red Eye, etc.), off-priced stores (Ross Stores, Bealls Outlets, etc.), and discoun

retail outlets (Big Lots). Hafiz Decl. 20-22. Sales of Material Girl clothing has been

substantial. Amin Decl. 20-21. L.A. Triumph typically sells its Material Girl line of

products to retailers at $3.25 to $10.00, who then turn around and retail the same products

to end users from $6.99 to $20.00. Hafiz Decl. 25.

C.Defendants Allegations of Use of The Material Girl Mark1. Madonna's only alleged use of Material Girl on clothing is sales of items

through her concert merchandiser

According to Dell Furano, Madonna has for 25 years used Mr. Furano's companies

(Live Nation at this point) to sell her concert merchandise. See Furano Decl. 5-9;

Arledge Decl., Exh. M, Furano Depo 8:26-8:15, 16:3 - 17:14. Furano, however, is carefu

to distinguish between concert merchandise, which he has sold and continues to sell for

Madonna, and fashion items. He testified that Live Nation has an exclusive agreement

through a period of time for Madonnas concerts, and I believe that we have the exclusive

concert merchandising rights to sell concerts and to sell at retail concert-style products an

to sell e-commerce. Id. He believes that the product being sold by MG Icon and Macy's

falls outside the scope of that agreement. Id. at 6:11 - 8:1, 9:10 - 10:19.

According to Furano, at the time Madonna signed-on with Live Nation in 2007,

Madonna took special care to carve out from her concert promotion and merchandising

contracts, rights to market clothing (other than concert styles shirts and tops) and other

fashion items. Furano Decl. 28. Live Nations CEO further testified that any product



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designs that Live Nation had received approval for in the past would remain the Live

Nations exclusive right to sell through the duration of its contract. See Arledge Decl.,

Exh. M, Furano Depo 80:8-80:20. In other words, Madonna would be unable to sell any t

shirt or other concert merchandise that was previously sold by Madonnas Concert

Merchandise Assignees, as those would remain Live Nations exclusive right of to sell.

2. Madonnas new company, Material Girl Brand, LLC, files an intent to use thebrand Material Girl trademark application

On November 12, 2009, Material Girl Brand, LLC is formed in Delaware. (A few

months later, Material Girl Brand, LLC would change its name to MG Icon, LLC.) On

December 4, 2009, the company applies for multiple federal trademark registrations on th

mark Material Girl in various classes, including class 25, which is the class for women

clothing. Although Madonna is a part owner of the company, the company does not claim

to have any extant rights in Material Girl in clothing. Instead, the company files an

intent to use trademark application. (Arledge Decl. 8 & Exh. A.)

3. MG Icon Pretends to Have Rights From Purim or MadonnaOn March 9, 2010, MG Icon enters into a contract with Purim, LLC, a company

owned by Madonna and her manager. MG Icons claim here hinges on the assertion that

acquired rights from Purim or Madonna in this transaction. However, even assuming

Madonna had trademark rights, there is no evidence that Madonna assigned any trademar

rights to Purim such that Purim could in turn assign them to MG Icon.

Indeed, the evidence is to the contrary. Guy Oseary, Madonnas long-term busines

manager, partner in Purim, co-partner in MG Icon, testified that he has no idea if Purim

ever had acquired any trademarks that it could in turn give to MG Icon, admitting Purim

havent used anything (Arledge Decl. 35, Ex. Q: Oseary at 30:6-10) and that one woul

have to ask the lawyers. (Oseary at 31:19-32:21.) (We have asked the lawyers. They

have never produced any written agreement purporting to transfer rights from Madonna to

Purim.) Mr. Oseary went further, however, and confirmed that it was impossible that



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Madonna made any oral transfers of trademarks rights from herself to Purim because

Madonna never, ever has oral business conversations. (Oseary at 32:2-21; 98-100.)

In turn, Mr. Tarshis, a lawyer and the corporate designee for MG Icon, testified that

does not know whether that Purim-MG Icon agreement assigned the Material Girl

trademark to MG Icon. Arledge Decl. 37, Ex. S: Tarshis Depo. at 72:3-15. Indeed, Mr.

Tarshis can't answer how MG Icon came to acquire these trademark rights. Id. at 69:13 to

70:11. He refused to testify that MG Icon had received the mark by assignment. Id. at

43:24 to 46:8. He believed MG Icon had acquired some existing trademark rights, but he

did not even know whether those rights had belonged to Madonna or Purim. Id. at 74:3 to

76:11.

What is clear is that the Purim-MG Icon agreement purports to license Madonna

rights of publicity. But it says nothing about assigning any trademarks. Indeed, the

agreement is clear that any such assignment would be impossible, because Madonna and

Purim do not own any trademark rights in Material Girl in clothing: The Covered

Licensor Parties [Purim and Madonna] have not commercialized any trademark or other

proprietary rights in the Approved Terms [Material Girl] in the Licensed Categories

[womens apparel, etc.]. Arledge Decl. 11, Ex. D. Multiple drafts of the contract said

the same thing, just with less legalese: Licensor, Artist, and their Affiliates acknowledge

that Licensor, Artist, and their Affiliates currently have, and have had in the past, no

trademark or other proprietary rights in the Approved Terms.

And even if the agreement did purport to assign the mark, nowhere in the agreemen

does Purim sell to MG Icon any assets, trade secrets, or any other form of goodwill

associated with Madonnas alleged prior use of Material Girl. Arledge Decl., 11, Exh

D. Moreover, to the extent that Madonna had any goodwill associated with Material Gir

in any form, she took special care in paragraph 1.4 to carve out such rights in class 025 (i.

clothing) for the continued use in tours, tour endorsements, movies, television, music, and

theatrical productions. In other words, the only uses she had ever potentially engaged in.

Case 2:10-cv-06195-SJO -JC Document 90 Filed 07/02/11 Page 10 of 23 Page ID#:2637


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In sum, Defendants' own contracts show that Madonna had not previously used the

Material Girl mark on clothing, they do not purport to assign any trademark rights, and

they do not assign any goodwill associated with the mark.

4. Defendants Subsequent Sales Of Material Girl Products After August 2010.In August 2010, Macys began selling a line of Material Girl juniors wear, which

included fashion tops, pants, skirts, sweaters, shoes, and fashion accessories. Macys

designs are strikingly similar in form to LA Triumphs Fashion line. Arledge Decl., 28

Ex. J, 34; See also Hafiz Lakhani Decl. 19 Ex. B.

Macys representative, Samantha Copeland, declares that Macys line of Material

Girl garments range between $15.00 and $68.00 per piece. But a review of Macys websi

indicates that their items retail ibetween $6.99 and $39.00,see Arledge Decl. 28, Exh. J

which prices overlap substantially with LA Triumphs prices,see Hafiz Decl. 25, 28.

III. DEFENDANTS MOTION MUST BE DENIEDThe issue this reverse confusion case turns on is who is the senior user. The factua

evidence shown above, in the light most favorable to Plaintiff as the Court must construe

establishes that Plaintiff has been continually selling juniors women fashion under the

brand Material Girl since 1997. MG Icon wants a summary judgment that it is the senio

user of the Material Girl trademark on clothing. This position has no merit.

A.Even if Madonna did have trademark rights in Material Girl, MG Icon hasnot acquired those rights

1. Where is the assignment?

It is clear -- and at summary judgment, impossible for Defendants to dispute -- that

Plaintiff has been using the Material Girl mark on womens clothing since 1997 and has

sold the product nationwide. see Hafiz Decl. 5-23. Thus, Plaintiff has acquired

significant common law rights in the trademark. For Defendants to prevail, they must sho

that MG Icon itself has senior trademark rights to Plaintiff. Defendants cannot rest on any

alleged senior use by Madonna -- or any other third party -- because third party rights are

irrelevant. A plaintiff in a trademark-infringement case must only prove that its rights are



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senior to the defendant's. See Committee for Idaho's High Desert, Inc. v. Yost, 92 F.3d 81

820-21 (9th Cir. 1996).

Defendants say they acquired senior trademark rights from Madonna. This argume

obviously requires proof of a chain-of-title from Madonna to MG Icon, yet the agreement

and testimony that would be necessary to substantiate such a chain-of-title are not provide

Defendants do not include any with their moving papers, and the only one they have

provided in discovery is the Purim-MG Icon agreement that expressly undercuts their clai

that Madonna has trademark rights. MG Icon's corporate designee says, I'm not sure if th

documents do or don't transfer the Material Girl mark to MG Icon. Tarshis Depo. at

72:3-15. Everybody else can be sure. The agreement says nothing of the sort.

So Defendants here seem to rely on the Purim-MG Icon agreement to establish thei

rights (and even that reliance seems confused and half-hearted), even though Madonna

apparently never assigned any rights to Purim, even though the Purim-MG Icon agreemen

says expressly that Madonna did not develop trademark rights in the mark, even though

that agreement says absolutely nothing about a trademark assignment, and even though

Defendants did not bother to provide that agreement to the Court in their moving papers.

And thatfactual record is supposed to support a summary judgment motion?

2. Any assignment would be an invalid assignment in gross anyway

Even if Defendants could identify an assignment lurking in shadows of the Purim-

MG Icon agreement, that purported assignment would be invalid. A trademark assignmen

is invalid apart from the underlying business that gave rise to its creation in the first place

Such an assignment without goodwill, known as an assignment in gross, does not transf

any legal rights to the assignee and is invalid. Bourjois & Co. v. Katzel, 260 U.S. 689, 69

(1923);E&J Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1289 (9th Cir. 1992); 15

U.S.C. 1060. It is not enough to recite the transfer of goodwill in an assignment

document, because the purpose of this requirement is to maintain the continuity of the

product or service that is symbolized by the mark. E&J Gallo Winery, 967 F.2d at 1289.



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It is clear from the Purim-MG Icon agreement that Purim assigned no goodwill to

MG Icon in connection with the trademark assignment. Purim had none to assign as

evidenced by the Agreement and Mr. Osearys firm testimony that Purim has never used

anything. (Oseary at 30:6-10.) There is no allegation, much less proof, that Purim was

using the Material Girl mark on clothing. Because Purim had no pre-existing use of the

mark on product, it could not give to an assignee the right to affix the same mark to the

same kind of products, as was the case inFederated Dept Stores, Inc., 730 F. Supp. 289,

290-91 (D. Minn 1989). Mr. Tarshis, the MG Icon's 30(b)(6) designee, does not argue:

Q. I'm curious what underlying business, what parts of the business went with the

trademark from Madonna and her company to MG Icon. Was there anything?

A. I don't know.

Tarshis Depo. at 132:23 to 133:3;see also id. at 88:14 to 89:3.

Indeed, the only underlying business that Defendants point to anywhere in their

papers in connection with the use of Material Girl on clothing is the one run by Dell

Furano, and Dell Furanos company still retains those rights and secured those rights

before Purim and MG Icon even existed. See Arledge Decl., Exh. M, Furano Depo 80:8-

80:20. Mr. Furanos business, the source of the alleged trademark rights, were not

transferred with the trademark. Thus, MG Icon has nothing from this transaction.

Thus, the problem with the alleged trademark assignment is insurmountable. Even

Madonna had developed rights in the Material Girl mark on clothing (she did not as

discussed below), the only evidence anybody can point to of such development is the wor

performed by Dell Furano through Live Nation and its predecessor companies. But Dell

Furano continues to do that work and Live Nation owns those rights. Live Nation has not

assigned anything to MG Icon, and therefore the goodwill associated with the Material

Girl mark on concert T-shirts has not changed hands.

///

///

///



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B.Defendants Arguments That Madonna Is A Senior User Is An After-The FactConstruct, And A Flawed One at That

Defendants' new position -- that Madonna developed trademark rights in Material

Girl on clothing -- must be viewed with suspicion in light of the fact that Defendants (1)

filed an intent to use trademark application, (2) wrote in the Purim-MG Icon agreement

that Madonna and Purim had never commercialized the Material Girl mark in womens

clothing, and (3) chose to cover up their fabrications to the contrary by redacting that key

language from the agreement before attaching it to Madonnas motion to dismiss or

producing it to Plaintiff. So where is the evidence so compelling that it proves as a matter

of law without factual dispute that she didhave senior trademark rights? There is none, a

explained below.

1. Madonnas 1985 Song Material Girl In And Of Itself Does Not Give Rise ToTrademark Rights.

It is well-established that Madonnas singing of the hit song Material Girl does n

give her trademark rights in the term Material Girl, and certainly does not give her

trademark rights in industries in which she has never used the trademark. An artist does

not acquire trademark rights in his or her signature recording. In Oliveria v. Frito-Lay Inc

251 F.3d 56, 61-63) (2nd Cir. 2001), a recording artist famous for the song The Girl From

Ipanema -- indeed so famous for the song that Girl From Ipanema became her nicknam

-- sought to enforce her alleged trademark rights when the defendant used the song in an

advertisement. The Second Circuit held that she had no trademark rights. Id. at 63.

Here, by that same logic, Madonna has acquired no trademark interest in the song

title Material Girl as applied to fashion (colas, airlines or whatever potential commerce)

simply by virtue of her having performed the song and having become identified with the

song in the public mind. This means that trademark law would allow a third party

Plaintiff here or anybody else to use the actual song in advertising its products. And if

Plaintiff would be permitted under trademark law to use the song, it is certainly permitted

simply to use the same title.



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2. Madonna acquired no trademark interest in Material Girl on clothing merelybecause some in the media call her the Material Girl

Trademark rights are acquired by use of a mark in commerce connected with

particular goods or services. If Madonna had been using Material Girl as a mark to

identify the source of goods or services, then she obviously could have developed

trademark rights. Indeed, if Madonna had been using Material Girl as a fictitious

business name to identify the source of goods or services that she was putting into the

stream of commerce, such use could have resulted in trademark rights.

But she hasnt been. First, it is apparent that Madonna has not been using Materia

Girl as a brand on products or services, either as the name of a company or as a fictitious

business name for her. There is no evidence of her use of the mark apart from whatever

concert merchandise Dell Furanos companies have produced with the song title Materia

Girl stuck on it. And, most importantly, there is no evidence Madonna was using the

mark to identify the source of clothing items. This is undoubtedly why there is no eviden

that Madonna or any of her companies ever sought to secure a trademark application on th

phrase Material Girl until 2009.

Second, not only has Madonna failed to use Material Girl as a fictitious business

name or as a brand to identify the source of goods or services, she has publicly and

consistently tried to distance herself from the name for many years. Her public statement

have been consistent and clear: I am not the Material Girl, and I do not want to be known

the Material Girl. Arledge Decl. 14, Ex. E. This may be the first case in the history of

American jurisprudence when the party claiming senior trademark rights spent decades

telling the world that she did not want to be associated with the now-alleged trademark.

3. Live Nations alleged prior use of the phrase Material Girl on concert t-shirtswas not a trademark use

MG Icon asserts that Madonna has a trademark interest in Material Girl because

she has allegedly used those words on concert T-shirts in the past by way of Live Nation

concert merchandising for her. There are two problems with this: (1) first, not anything p



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on a T-shirt or other product is a trademark; and (2) second, even if was a trademark use,

was on concert t-shirts, not as womens fashion brand.

First, a trademark is a mark or slogan used to identify the source of goods or

services. So the question is, even if Madonna put the words Material Girl on clothing,

did she do so in order to identify the source of the clothing? She did not. Note that it

would have been impossible for the words Material Girl to identify the source of

clothing, because there was no person or entity named Material Girl that manufactured

distributed the clothing. Putting Nike on shoes makes sense and is a valid trademark us

Nike makes shoes. Putting the name Material Girl on clothing to identify the source of

the goods does not make sense if there is no Material Girl clothing company. And until a

year or so ago, there was no such company (other than Plaintiff's).

It did, however, make sense for Madonna to put Material Girl on clothing to

promote her popular song. Such a use would not be a trademarkuse as applied to clothin

-- for it does not identify the source of the clothing -- and the maker of such shirts would

not develop any trademark rights in the name in clothing. Instead, Madonna uses the T-

shirts as a medium of advertising, a tool to promote her music. This non-trademark use is

the sense in which Madonna has used Material Girl -- and other song titles -- on clothin

Arledge Decl. 29. There are, of course, an unlimited number of advertising methods. A

single casino might put its mark on TV commercials, newspaper print ads, billboards, or

these days, on the back of a boxer during a fight. But that does not mean Harrah's has

trademark rights in TV, newspapers, billboards, and fighters. It means they have used

those advertising mediums to promote their mark. Thus, if Madonna put Material Girl

a billboard, she would not have acquired trademark rights in billboards. The billboard is

just the medium for advertising the music, and the trademark rights being developed on th

billboard and elsewhere are for the music only. Putting Material Girl on a concert T-sh

is no different. The mark is not being used to identify the source of T-shirts, and thus doe

not result in trademark rights in T-shirts. The T-shirt is simply the medium to advertise h

music, essentially a portable billboard plastered on a person's chest. Madonnas business



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manager admitted this much, testifying that the purpose of putting song titles on her conce

t-shirts was, obviously, to show a connection to Madonnas song or album titles. (Osea

at 90:17-91:4.) Such a use does not result in trademark rights in juniors women fashion.

See 1-800 Contacts, Inc. v. Whenu.com, Inc. et al., 414 F.3d 400, 407-14 (2d Cir. 2005)

(use of trademarked phrase in advertising medium in a directory was not a trademark use

for purposes of Lanham Act);Avakoff v. Southern Pacific Co., 765 F.2d 1097, 1098 (Fed.

Cir. 1985) (affirming Trademark Boards finding that [m]ere advertising of a product and

documentary use of a symbol apart from the goods does not constitute trademark use for

those goods.); Western Stove Co., Inc. v. Geo D. Roper Corp., 82 F. Supp. 206, 213 (S.D

Cal. 1949) (Use in advertising and the like Is not trade-mark use.).

Second, even if Madonna sold concert t-shirt sales that have Material Girl (as we

as other song titles) on them, this has nothing to do with women's fashion. They are

completely different markets. Madonnas own business partner and MG Icon co-partner

Guy Oseary admitted in deposition that when he and Madonna wanted to develop a fashio

line they never approached Live Nation, the entity selling concert t-shirts, because concer

t-shirts and juniors fashion are distinct and dont compete with each other. (Oseary at

51:25-54:16.) In his words, concert t-shirts and fashion are two separate companies that

do two separate things (id. at 54:14-16) and one doesnt beget the other. (Id. at 53:15-

19.) Live Nation agrees. Its CEO admitted that it lacked rights to fashion, recognizing th

concert t-shirts are not even a fashion brand. See Furano Decl. 28; Arledge Decl., Exh.

1.4 (any assignment of rights to MG Icon does not include concert t-shirts).

Indeed, highlighting the fact that even Madonna did not believe that she already had

a fashion brand called Material Girl by way of the concert t-shirts sales of Live Nation,

when she and her business manager discussed starting a fashion label they did not even

know what to call it. They went to Iconix, a clothing company, which made various

presentations of possible label names, including Material Girl, which they preferred to

the others. (Oseary at 12:22-16:2, 20:13-21, 26:8-27:24, 60:2-9.) Thus, the facts

demonstrate that at this juncture in 2009 even Madonna and her business manager did not



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themselves believe they had a Material Girl brand then in existence. Which, again,

explains why the contract says Madonna had no trademark rights and why Defendants file

an intent to use trademark application.

4. Madonnas use of Material Girl is unproven and apparently abandonedEven apart from these other problems, Defendants have utterly failed to provide

evidence to prove (as a matter of law) that they are senior, common-law users of the mark

As Defendants do not have a federal trademark registration, they must rely completely on

common law rights developed through prior use. But they do not prove prior use.

Specifically, while Dell Furano asserts they have been selling clothes containing the word

Material Girl, they do not show how much, where, and when. This is a critical omissio

At common law, ownership of trademark or service mark rights is obtained by

actual use. The first to use a mark in the sale of goods or services is the senior user of th

mark and gains common law rights to the mark in the geographic area in which the mark i

used. Allard Enterprises, Inc. v. Advanced Programming Resources, Inc., 249 F.3d 564,

571-72 (6th Cir. 2001); Tana v. Dantannas, 611 F.3d 767, 780 (11th Cir. 2010) ([I]t is

well-established that the scope of protection accorded [a plaintiffs common-law

trademark] is coextensive only with the territory throughout which it is known and from

which it has drawn its trade.). Thus, to prove that Madonna developed senior common-

law rights, Defendants must provide evidence showing that she used the mark in commerc

in a particular geographic area. See, e.g., Allard Enterprises, 249 F.3d 564 at 571-72;

Tana, 611 F.3d at 780. In other words, Defendants must prove prior use in each geograph

area in which they now claim senior rights. If they claim senior common-law rights

nationally, they must prove sales nationally.

Where is the evidence that would establish MG Icon (through Madonna) as a senior

user of the Material Girl mark in any relevant geographical area? In Los Angeles? New

York? Miami? Anywhere else? Defendants do not produce evidence showing their use i

these geographical areas. So how could this Court possibly determine, on this record, tha

MG Icon is the senior user in any geographic market? Moreover, in what market? The



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evidence they have given shows only concert related paraphernalia like a T-shirt, not

womens fashion in retail outlets of the kind being sold by Plaintiff and by Defendants.

Put simply, Defendants' bald assertion -- from a third party, no less, and not

Madonna -- that Madonna has developed senior trademark rights does not come close to

meeting Defendants burden to claim no genuine issue of material fact as to their alleged

senior user status. It is their job to prove that their prior use establishes trademark rights,

and they must prove the geographic reach of those rights. Ultimately, because she penned

a well-known song called Material Girl, Defendants want to contend that for any scope

of potential future commerce Madonna reserved all rights to name a business Material

Girl despite the absence of any commercial undertakings. No law supports this claim.

In addition, even assuming that some scintilla of trademark rights attached due to

Live Nations concert t-shirt sales, whatever trademark rights Madonna might have

acquired in various markets over the years through those sales have been abandoned.

Based on Defendants own records, Madonna has not made a single retail sale of a clothin

item featuring the words Material Girl since January 2005, and she made only a handfu

of sales online between 2006 and 2008. Oseary 90:17-91:4; Arledge Decl. 20-23 and 3

Exhs. H I, and R. Under 15 U.S.C. 1127, the failure to use a mark for three years is

prima facie evidence of abandonment. To this day, she sells myriad concert merchandisin

t-shirts on her website, but those do not include Material Girl t-shirts. Arledge Decl. 3

Ex. R. Thus, even if Madonna had at one point developed trademark rights in Material

Girl on clothing, it is undisputed that it is abandoned now.

C.Defendants Cannot Prove at Summary Judgment that They Must PrevailunderSleekcraft.

Defendants cannot prove as a matter of law that they are the senior users of the

Material Girl trademark on clothing. Therefore, they can only avoid summary judgmen

if they can prove that they are not liable under the Lanham Act because there is no

likelihood of confusion. They cannot carry that burden at summary judgment.



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This is a reverse confusion case. The seminal Ninth Circuit case on reverse

confusion isDreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998)

Reverse confusion cases put a slight twist on the usual trademark dispute. Judge Kozinsk

explains:

In the usual infringement case, the[ Sleekcraft] factors are applied to determinewhether the junior user is palming off its products as those of the senior user.Would a consumer who finds a running shoe marked Mike be bamboozledinto thinking that it was manufactured by Nike? In a reverse infringementcase, like ours, there is no question of palming off, since neither junior norsenior user wishes to siphon off the others goodwill. The question in suchcases is whether consumers doing business with the senior user mightmistakenly believe that they are dealing with the junior user. Morespecifically, the question here is whether a reasonable consumer attending aDreamwerks-sponsored convention might do so believing that it is aconvention sponsored by DreamWorks.

Dreamwerks, 142 F.3d at 1130.

Though the harm sought to be alleviated is different in a reverse confusion case, the

potential harm is just as legally cognizable. The Ninth Circuit notes that in many reverse

confusion cases, the trademark matter would be relatively simple if the parties roles were

reversed -- that is, if the more-famous user were also the senior user. [W]e note that if th

were an ordinary trademark case rather than a reverse infringement case--in other words i

DreamWorks had been there first and Dreamwerks later opened up a business running

entertainment-related conventions--there would be little doubt that DreamWorks would

have stated a case for infringement.... [A] famous mark like DreamWorks SKG casts a

long shadow. Id. But the purpose of the Lanham Act is not any less important merely

because the senior user is also the less-famous user. Does the result change in a reverse

infringement case because the long shadow is cast by the junior mark? We think not. Id.

In determining whether a reverse confusion case should proceed past the summary

judgment stage, the trial court does not ask whether the harms sought to be alleviated by

the senior (and less-famous) user are likely, and it does not ask how significant the alleged

harms are likely to be. As the Ninth Circuit put it, [Dreamwerks stated concerns]are not

fanciful or unreasonable ... though they may be somewhat exaggerated by the hope of

winning an award or settlement against an apparently very solvent DreamWorks. We are



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not, however, in a position to judge the extent to which these harms are likely, nor whethe

they are somehow offset by any extra goodwill plaintiff may inadvertently reap as a result

of the confusion between its mark and that of the defendant. These are matters for the trie

of fact. The narrow question presented here is whether Dreamwerks has stated a claim fo

trademark infringement sufficient to survive summary judgment. Id. at 1129.

In resolving that narrow question, courts focus on the three Sleekcraftfactors that

are pivotal in a reverse confusion case: (1) arbitrariness of the mark; (2) similarity of

sight, sound and meaning; and (3) relatedness of the goods. Id. at 1130. Here, all three

factors weigh heavily in Plaintiffs favor.

First, Defendants wisely do not challenge the strength of the mark in question. The

mark is clearly not generic, nor is it descriptive, and it is entitled to significant protection.

Defendants do not argue otherwise, and as the Ninth Circuit has warned, they are wise to

hold their fire. See id. at 1130 n.4(The unusual posture of the case has caused

DreamWorks SKG, the holder of the famous mark, to make an argument that is quite

uncharacteristic for someone in its position. Namely, it argues that the plaintiffs mark (an

therefore its own) deserves relatively narrow protection. DreamWorks may someday find

itself in a case where its position is reversed, and discover that the arguments it made in o

case come back to haunt it. See, e.g., Russell v. Rolfs, 893 F.2d 1033, 1037 (9th Cir. 1990

(applying judicial estoppel).). Thus, the first factor weighs in Plaintiffs favor.

So does the second factor. Little analysis is needed to find that Material Girl and

Material Girl are similar marks in their sight, sound and meaning since the marks are

identical in phrasing, spelling and industry space usage. See Hafiz Decl. 19, 22-23, 27

29. Therefore, the second factor also weighs heavily in Plaintiffs favor.

As does the third. The goods here are very closely related. Both Plaintiff and MG

Icon sell womens clothing, primary young womens clothing aimed at women ages 15-30

including T-shirts, skirts, and other fashionable yet informal attire. Many of Defendants

designs looks similar, use similar fabrics, and have similar cuts. Id. 27. Defendants, of

course, argue otherwise, but their contrary assertions are questions for the trier-of-fact; it i



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impossible to rule as a matter of law that Defendants assertions are sound and Plaintiffs

are baseless.

Thus, all of the pivotal factors identified by the Ninth Circuit in reverse confusion

cases weigh in Plaintiffs favor. So do most of the less-important factors, for what its

worth: (1) Marketing Channels - Both parties are selling through brick-and-mortar retail

establishments, and as Defendants own annual report admits there is a high degree of

competition by and between retailers even in different pricing segments, thus the marketin

channels are highly similar if not identical,see Hafiz Decl. 28; (2) Consumer care - bo

parties goods are sold within the $6.99 - $20.00 range (with a few of Defendants product

sold as high as $39.00) meaning that these products are basically commodities with

consumers using far less care than if the products were expensive,see id. 25, 28; (3)

Defendants intent difficult to say since Defendants insisted on having this motion

decided before their depositions could be taken, but it is worthwhile to mention that (a)

Defendants knew another entity Plaintiffs predecessor had been using the Material

Girl mark at clothing at one point (Tarshis Decl., 15), (b) there was ample room in the

market to know exactly what Plaintiff was doing, Hafiz Decl. 24, and (c) have continued

using the mark even after this lawsuit was filed; (4) Likelihood of expansion It is not

uncommon for garment manufacturers to expand into related markets such as handbags an

shoes. Here Defendant is already making both, while LA Triumph made sample bags in

2009; and (5) Actual confusion Defendants advertising all redirects LA Triumphs

customer that they may only buy future products exclusively or only at Macys. See

Copeman Decl. filed by Defendants.

Under the Sleekcraftfactors, there is a material issue of fact as to whether

Defendants use of Plaintiffs mark creates a likelihood of confusion. Thus, summary

judgment must be denied, and this case must be resolved by the jury.

///

///

///



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IV. CONCLUSIONFor the foregoing reasons, Defendants motion for summary judgment must be

denied.

By: /s/ Christopher W. ArledgeChristopher W. ArledgeAttorneys for Plaintiff, LA Triumph, Inc.


l.a. triumph v. madonna (c.d. cal. 2011) (l.a. triumph's memo of law in opposition to defendants'...

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