Late last Thursday, apparel manufacturer L.A. Triumph Inc., filed suit against Madonna, claiming that her “Material Girl” line for Macy’s threatens their own “Material Girl” clothing line that they have been selling since 1997.
L.A. Triumph is hoping a judge will rule that Madonna’s new tween line creates confusion among consumers (“deception in the marketplace” in legalese) and that Madonna should fork over all her “Material Girl” profits to L.A. Triumph.
So how is it that Madonna, the original “Material Girl,” she who sang the song, could be infringing on L.A. Triumph’s trademark?
We checked in with our resident fashion trademark expert, attorney Anne Sterba, of leading intellectual property firm Rothwell, Figg, Ernst & Manbeck, to find out if L.A. Triumph has a leg to stand on.
“The bottom line is that Madonna had a song and has been known as the ‘Material Girl’ but if she hasn’t sold any products under the name ‘Material Girl,’ she has no trademark in the name,” says Sterba. “Madonna has a copyright in the song, but a copyright and a trademark are completely different. L.A. triumph my have priority over her in respect to selling clothes under the “Material Girl” trademark and they could win.”
Sterba thinks Madge will likely file a counterclaim, and could argue that malicious intent on the part of L.A. Triumph, to market their clothes under the “Material Girl” name when the public knows Madonna as the Material Girl.
It should be interesting, to say the least, to watch this all play out.