concert.jpgSan Diego – Iconic pop star Madonna has successfully made a name for herself as the ‘Material Girl.’  If we take a trip down memory lane, we fondly recall how the Queen of Pop coined the phrase in her classic 1985 song and video of herself emulating Marilyn Monroe.  The ‘Material Girl’ nickname managed to stick through years of image transformations.  However, it is now the subject of a trademark infringement lawsuit.

When Madonna launched her clothing line in 2010, it was inevitable that she would name the label ‘Material Girl.’  The problem arose when a California apparel company called L.A. Triumph claimed that it owned the rights to the trademarked phrase.  Reportedly, its predecessor company had registered the trademark in California and sold clothing under the ‘Material Girl’ label from 1997-2003.  In August 2010, a lawyer for the Los Angeles clothier filed a trademark infringement complaint against Madonna and her company, asking for a declaratory judgment that it has exclusive rights to the ‘Material Girl’ name.

Lawyers representing Madonna were able to get the pop diva dismissed from the case in November 2010, however, Los Angeles federal judge S. James Otero ruled that claims against her clothing company could proceed.  Madonna lawyers then asked for a summary judgment on the grounds that Madonna had created the ‘Material Girl’ trademark when she released the song in 1985 and performed it for audiences all over the world.  In addition to creating the phrase, her lawyers insisted that she had also used it on merchandise for more than twenty years, long before L.A. Triumph had ever used the trademark.

Just last week, Judge Otero denied the motion for summary judgment and wrote in a seven-page decision, “The singing of a song does not create a trademark.  Defendants cannot establish, as a matter of law, that Madonna was the senior trademark user because of her ‘Material Girl’ performances.”  Additionally, the judge also ruled that her use of the phrase on concert merchandise did not give her exclusive rights, because Madonna witnesses gave contradictory statements regarding the timeline of when she began using the phrase on clothing labels.

Regardless of the fact that L.A. Triumph’s predecessor allowed the trademark registration to lapse, Jude Otero indicated that the question of trademark rights for ‘Material Girl’ would be decided by the jury.  In the meantime, Madonna may want to consider using one of her other clever phrases on her clothing label.