Satomi Aki is a JD candidate at Osgoode Hall Law School.

Ever since Madonna launched her clothing line, Material Girl, in August 2010, it has been plagued by a trademark infringement suit. Two weeks after the line went on sale exclusively at Macy’s Department Stores in the United States, LA Triumph Inc filed a lawsuit against Madonna’s company, MG Icon LLC, claiming the rights to the Material Girl trademark. In the latest development, the US District Court denied a motion for summary judgment made by MG Icon to dispose of the suit and ordered that the suit should proceed to trial.

Under rule 56(a) of the Federal Rules of Civil Procedure “the court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law”. However, Judge James Otero’s judgment dated August 31, 2011, revealed that the case is fraught with factual disputes.

MG Icon argued that summary judgment should be granted as Madonna is the senior user of the Material Girl trademark. They reasoned that Madonna is the senior trademark user because Madonna created and first used the Material Girl trademark by releasing the song “Material Girl” in 1985, releasing a corresponding music video, and selling “Material Girl” merchandise since 1985.  Judge Otero disagreed with MG Icon stating that the singing of a song does not create a trademark and pointed out multiple factual disputes related to the validity of the trademark that the 80s “Material Girl” merchandise may create.

MG Icon also argued that summary judgment should be granted as there is no evidence of confusion between the two Material Girl brands. To determine whether confusion exists, the Court examines a list of eight factors, which are: (1) strength of the mark, (2) proximity of the goods, (3) similarity of the marks, (4) evidence of actual confusion, (5) marketing channels used, (6) type of goods and degree of purchaser case,  (7) intent in selecting mark, and (8) likelihood of expansion of the products lines (AMF, Inc. v Sleekcraft Boats). Judge Otero found that the case had material factual disputes that could affect a majority of the eight factors. The factual disputes he cited included LA Triumph’s and MG Icon’s respective target markets and the price range of both Material Girl lines.

Lastly, Judge Otero also found that there was controversy as to whether LA Triumph abandoned the trademark. LA Triumph’s predecessor company registered the Material Girl trademark in the State of California in January 1997 and subsequently advertised and sold material girl merchandise across the US from 1997 to 2003. However, the California trademark was not renewed after it expired in 2007. LA Triumph argued that they “simply forgot to renew its application” but also provided contradicting evidence. Such disputes need to be resolved at trial. MG Icon filed a trademark application with the United States Patent and Trademark Office (USPTO) on December 4, 2009.  Neither LA Triumph nor its predecessor company, OC Mercantile Corporation, have made an application to the USPTO.

The trial is expected to begin in October 2011, but Madonna will not be vogue-ing her way into the courtroom as the Court dismissed her as an individual defendant in the action in November 2010.