L.A. Triumph v. Madonna (C.D. Cal. 2011) (Madonna's Memo of Law in Support of Motion For Summary Judgment)

Case 2:10-cv-06195-SJO -JC Document 87
Filed 06/27/11 Page 1 of 27 Page ID #:2383
2 George M. Belfield (SBN 100272) Email: belfieldg@gtlaw.com 3 Nina D. Boyajian (SBN 246415) Email: boyajiann@gtlaw.com 4 Alana C. Srour (SBN 271905) Email: sroura@gtlaw.com 5 2450 Colorado Avenue, Suite 400 East 6 Santa Monica, California 90404 Telephone: (310) 586-7700 7 Facsimile: (310) 586-7800
1 GREENBERG TRAURIG, LLP
MG ICON, LLC AND MACY'S RETAIL 10 HOLDINGS, INC. 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 vs. L.A. TRIUMPH, INC., a California corporation, Plaintiff,
9 MADONNA LOUISE VERONICA CICCONE,
8 Attorneys for Defendants
UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION

CASE NO. CV 10-6195 SJO (JCx)
MADONNA LOUISE VERONICA CICCONE, an individual; MATERIAL GIRL BRAND, LLC, A Delaware limited liability company, MG ICON, a Delaware limited liability company; MACY'S RETAIL HOLDINGS, INC., a Delaware corporation; and DOES 1 through 10, inclusive, Defendants.
NOTICE OF MOTION AND MOTION FOR SUMMARY JUDGMENT OR SUMMARY ADJUDICATION OF ISSUES; MEMORANDUM OF POINTS AND AUTHORITIES
Date: Time: Courtroom: Trial Date: July 25, 2011 10:00 a.m. I October 11, 2011
Honorable S. James Otero [Filed Concurrently With: (1) Statement of Uncontroverted Facts and Conclusions of Law; (2) Declarations of Dell Furano, Andrew Tarshis, Samantha Copeman, and George M. Belfield]
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PLEASE TAKE NOTICE that defendants MG Icon, LLC and Macy's Retail
2 Holdings, Inc. will on July 25, 2011 at 10:00 a.m. in Courtroom I of the above-entitled
3 court, the Honorable S. James Otero, judge presiding, move for summary judgment, or
4 summary adjudication of issues, with respect to the only two claims in plaintiff L.A. 5 Triumph, Inc.' s First Amended Complaint in this action, i.e., (1) declaratory relief 6 regarding ownership of the "Material Girl" trademark, and (2) violation of the Lanham 7 Act 43(a). 8 Said motion will be made under Federal Rules of Civil Procedure, Rule 56, on the 9 grounds that there are no material triable issues of fact, and that MG Icon and/or Macy's lOll is entitled to judgment as a matter of law as follows: 11 A. 12 First Claim For Relief: Declaratory Relief Against MG Icon Only In plaintiffs first claim for relief, plaintiff seeks a declaration that (a) it is the
13 rightful owner of the "Material Girl" trademark with respect to clothing, (b) that 14 defendants have no right to sell clothes under the "Material Girl" brand, and (c) for an 15 order by this Court to deny registration of defendants' United States Trademark 16 Application 77/886,045. See First Amended Complaint, ~ 25 .. 17 1. MG Icon is entitled to summary judgment, or summary adjudication of 18 issues, on plaintiffs first claim for declaratory relief because plaintiff cannot establish 19 the fundamental prerequisite for any trademark infringement claim, i.e., first use or 20 ownership of the Material Girl mark. To the contrary, Madonna, i.e. the now dismissed 21 defendant Madonna Louise Veronica Ciccone, was indisputably the first user. 22 B. 23 24 Second Claim For Relief: Violation of Lanham Act 43(a) Against MG Icon And Macy's In plaintiff s second claim for relief, plaintiff seeks monetary damages and
25 injunctive relief on the grounds that both MG Icon and Macy's have violated the Lanham 26 Act 43(a) by (a) infringing on plaintiffs alleged "Material Girl" trademark, or (b) 27 under the "reverse confusion" doctrine by advertising and promoting defendants' 28 allegedly junior use of the Material Girl mark in a manner that threatens to overwhelm
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1 plaintiffs market and crowd out the alleged senior user. 2 2. MG Icon and/or Macy's is entitled to summary judgment, or summary
3 adjudication of issues, on plaintiff s second claim for relief for violation of the Lanham 4 Act 43(a), i.e., 15 U.S.C. Il25(a), because plaintiff cannot establish the fundamental 5 prerequisite for any trademark infringement claim, i.e., first use or ownership of the 6 Material Girl mark. To the contrary, Madonna was the first user. 7 3. MG Icon and/or Macy's are entitled to summary judgment, or summary
8 adjudication of issues, that their Material Girl uses beginning in 2010 have not, and are
9 not likely to, result in (a) any actual or direct confusion, and/or (b) any reverse confusion. 10 C. 11 Second Affirmative Defense: First Or Prior Use 4. MG Icon and/or Macy's are both entitled to summary judgment, or summary
12 adjudication of issues, on their second affirmative defense of first or prior use because 13 plaintiff cannot establish the fundamental prerequisite for any trademark infringement 14 claim, i.e., first use or ownership of the Material Girl mark. To the contrary, Madonna 15 was the first user. 16 This motion will be based on the accompanying (a) Memorandum of Points and 17 Authorities, (b) Defendants' Statement of Uncontroverted Facts and Conclusions of Law, 18 and (c) the Declarations of Dell Furano, Andrew Tarshis, Samantha Copeman, and 19 George M. Belfield filed with this motion. 20 This motion is made after the conference of Counsel required under Local Rule 7.2 21 which occurred on April 18, 2011, and a number of other conferences since that time. 22 23 Dated: June 27, 2011 24 25 26 27 28 By: __ ~/s.:!.;'.::=G~e=or:.....::g~e~M.:.;:;.:..,;. B::::..e~l',l....!fi::::..el==d~ _ George M. Belfield Attorneys for Defendants MADONNA LOUISE VERONICA CICCONE, MG ICON, LLC AND MACY'S RETAIL HOLDINGS, INC.
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TABLE OF CONTENTS Page MEMORANDUM OF POINTS AND AUTHORITIES INTRODUCTION I. SUMMARY OF PLEADINGS A. B. The Declaratory Relief Claim The Trademark Infringement Claim: Actual And/Or Reverse Confusion ...... 1 1 I 2 2 4
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8 II. SUMMARY OF ARGUMENT 9 III. STATEMENT OF FACTS lOA. 11 12 13 14 15 16 17 18 19 20 21

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Madonna Created The "Material Girl" Trademark And Good Will With The Release In 1985 Of The Famous Hit Song And MTV Video, And By Using The Trademark For The Sale of Clothing Since 1985 B. L.A. Triumph Did Not File A Federal Registration For The Material Girl Trademark, And Its 1997 California State Registration Expired As A Matter of Law on August 5, 2007 Plaintiff s Predecessor OC Mercantile Co-Opted The Material Girl Trademark In The First Place And Registered And Began Using It In California Only In 1997 In Its California Material Girl Registration In 1997, OC Mercantile Misrepresented Its Knowledge Of Madonna's Prior Uses L.A. Triumph's Material Girl Sales Were Directed Primarily To Medical Scrubs Suppliers And The Discount Retail Market, Not Department Stores Like Macy's L.A. Triumph Has Done Little Or No Advertising Of Its Wholesale Line Of Material Girl Scrubs And Other Clothing In 2010, MG Icon And Macy's Launched A Major Advertising Campaign For Its New "Material Girl" Clothing Line, With Madonna's Endorsements, And Its Market Penetration Has Been Significant. The Two Sides Are Targeting Different Markets Macy's And L.A. Triumph's Material Girl Clothing Is Sold In Significantly Different Price Ranges
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H. I.
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In 2009 And 2010, L.A. Triumph Sold Little Or None Of Its Material Girl Product Although It Had Substantial Old And Out Of Style Inventory There Has Not Been Any Actual Confusion And There Is No Evidence Of Any Likelihood Of Confusion Due to Defendants' New And Exclusive Material Girl Line The Standards Governing Summary Judgment And L.A. Triumph's Burden Of Proof. L.A. Triumph Was Never The Senior User Of The "Material Girl" Trademark And Therefore Does Not Own The Trademark. L.A. Triumph Cannot Establish Common Law Rights To The Material Girl Mark Because It Cannot Demonstrate Sufficient Market Penetration Even If L.A. Triumph Owns Its Material Girl Mark, MG Icon And Macy's Uses Do Not Create Reverse Confusion The Three Pivotal Sleekcraft Factors For A Reverse Confusion Case Weigh In Favor Of Granting Summary Judgment. 1. 2. 3. The Strength Of The Material Girl Mark The Proximity Or Relatedness Of The Parties' Goods Similarity Of The Marks (a) Macy's Material Girl Goods Are Also Easily Distinguishable From L.A. Triumph's Goods Because They All Also Carry The Macy's Name Or House Mark.
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5 6 IV. LEGAL ARGUMENT 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 4. 5. 6. 7. 8. E. D. C. A. B.
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Lack Of Actual Confusion The Parties Also Utilize Different Marketing Channels Types Of Goods And Purchaser Care MG Icon And Macy's Had No Intent To Adopt L.A Neither Party Is Likely To Expand Into The Other Party's Market.
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1 2 3 4 Federal Cases
TABLE OF AUTHORITIES Page(s)
5 AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) 6 Celotex Corp. v. Catrett, 7 477 U.S. 317 (1986) 8 Dreamwerks Production Group v. SKG Studio 142 F.3d 1127 (9th Cir. 1998) 9 Echo Drain v. Newsted, 10 307 F.Supp.2d 1116 (C.D. Cal. 2003) 11 Glow Industries, Inc. v. Lopez, 252 F.Supp.2d 962 (C.D. Cal. 2002) 12
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passim 11
.. 14, 15, 16 13, 17 11, 15 .. .. 16 17
13 GoTo.com Inc. v. Walt Disney Company, 202 F.3d 1199 (9th Cir. 2000) 14 Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc., 15 952 F.Supp. 1084 (D.N.I. 1997) 16 i.B. Williams Co. v. Le Conte Operations, Inc. 523 F.2d 187 (9th Cir. 1995) 17 M2 Software, Inc. v. M2 Communications, L.L. C. 18 281 F.Supp.2d 1166 (2003 C.D. Cal.) 19 Matrix Motor Co. v. Toyota, 290 F.Supp.2d 1083 (C.D. Cal. 2003) 20 21 Moose Creek, Inc. vs. Abercrombie & Fitch Co. 331 F.Supp.2d 1214 (C.D. Cal. 2004) 22 Nissan Motor Co. v. Nissan Computer Corp., 23 204 F.R.D. 460 (C.D.Cal. 2001) 24 Optimal Pets, Inc. v. Nutri- Vet, LLC 25 2010 WL 2305843 (C.D. Cal. 2010) 26 Sony Pictures Entm 't, Inc. v. Fireworks Entm 't Group, Inc., 156 F.Supp.2d 1148 (C.D. Cal. 2001)
.. 17 14, 16 passim 14, 15, 19 11 12, 13 11 17
27 Trovan Ltd vs. Pfizer 28 2000 WL 709149 (C.D. Cal. 2000)

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MEMORANDUM OF POINTS AND AUTHORITIES INTRODUCTION Plaintiff L.A. Triumph, Inc. ("L.A. Triumph") cannot establish the fundamental "first use" required for any trademark infringement action. Madonna is the "Material Girl," and she was the first user starting in 1985, including in Class 025 clothing. Therefore, L.A. Triumph does not, and never did, own the Material Girl trademark, and the Court should grant defendants MG Icon, LLC, formerly known as Material Girl Brand, LLC ("MG Icon"), and Macy's Retail Holdings, Inc. ("Macy's") motion for summary judgment. If there is a material issue of fact as to L.A. Triumph's first use or ownership of the mark, the Court should still grant summary judgment because under the three "pivotal" reverse confusion factors, or even considering all eight Sleekcraft factors, there are no real disputes as to any material facts. As a matter of law, no reasonable jury could find for L.A. Triumph because there is no evidence of actual or likely confusion to the public due to the parties' separate and diverse uses of the Material Girl mark. The Court should grant this motion in its entirety and enter judgment for MG Icon and Macy's. I. SUMMARY OF PLEADINGS L.A. Triumph has plead two claims for relief in its First Amended Complaint in this action arising out of defendants' use of the trademark "Material Girl" in 2010 for a new line of women's juniors' clothing endorsed by Madonna and sold exclusively at Macy's,
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The Declaratory Relief Claim.

In its first claim for relief, L.A. Triumph seeks a declaratory judgment that (a) L.A.
24 Triumph is the rightful owner of the trademark "Material Girl" with respect to
25 International Class 025 clothing, (b) that defendants have no right to use, advertise or sell
26 clothing under the "Material Girl" brand, and (c) for an order to deny defendant MG
27 Icon, LLC's ("MG Icon") application to register the "Material Girl" trademark with the
28 United States Patent and Trademark Office. First Amended Complaint ("FAC"), ~ 25;
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Prayer For Relief j l , 2, 3. I
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The Trademark Infringement Claim: Actual And/Or Reverse Confusion. In the Lanham Act 43(a) claim, L.A. Triumph claims that MG Icon and Macy's
use of the Material Girl mark constitutes trademark infringement on both actual and reverse confusion grounds: (1) defendants' conduct "has actually confused and is likely to confuse the public and cause deception," or (2) MG Icon and Macy's conduct constitutes reverse confusion because their "commercial advertising and promotion misrepresents an ongoing association with [L.A. Triumph] and owing to the Infringing Defendants' size and resources threatens to overwhelm the market and crowd out the senior user." FAC,-r 30.
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II. SUMMARY OF ARGUMENT

L.A. Triumph cannot established the first fundamental requirement for any trademark infringement action -- "first use," i.e., that L.A. Triumph is in fact the senior user and owner of the Material Girl mark. For this simple reason alone, this motion for summary judgment should be granted in its entirety. Second, even if there is somehow a material question of fact as to first use, and there is not, the Court should still grant summary judgment. There is no evidence of actual confusion. This is instead primarily a "reverse confusion" case, where the allegedly senior user L.A. Triumph is claiming that the junior users MG Icon and Macy' s' 2010 advertising campaign and sales efforts threaten to "overwhelm" and damage the senior user's rights and market position. This case is, however, in another way factually unique -- it is, if you will, a
23 "reverse" reverse confusion case because the alleged senior user L.A. Triumph is in fact 24 not the senior user, but a junior user itself, i.e., L.A. Triumph in 1997 adopted and took 25
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I Defendants' trademark application was first published by the USPTO on July 20,2010. L.A. Triumph on August 19,2010 (the same day L.A. Triumph filed this lawsuit) filed its Notice of Opposition with the USPTO. On September 28,2010, MG Icon filed a Motion to Suspend Civil Action. L.A. Triumph did not file an opposition. On November 17, 2010, the Trademark Trial and Appeal Board suspended the proceeding pending final disposition of this civil action between the
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advantage of the prior twelve years of Material Girl notoriety and uses cultivated by Madonna or her related merchandising entities. The relevant chronology is as follows: 1. Madonna, the "Material Girl" herself, was indisputably the first and senior
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user: in 1985, she released both the hit song and famous MTV video portraying her indelible "Material Girl" image. Defendants' Separate Statement of Uncontroverted Facts ("UF") 31- 33. 2. Between 1985 and L.A. Triumph's first use on January 15,1997, Madonna featured her Material Girl image and song on three world tours, in six videos, and two movies, and her costumes, clothing and staging were always a major part of the films and shows. The anthem-like Material Girl song was also included by Madonna on the wildly successful 1990 greatest hits compilation The Immaculate Collection. UF 34-38. 3. Between 1985 and L.A. Triumph's first use on January 15, 1997, Madonna's
merchandising companies each year also sold significant amounts of Material Girl clothing, not just at concerts, but in department stores, record stores, specialty clothing stores, and gift shops. UF 39-43. 4. Twelve years after Madonna created the Material Girl image and persona, OC Mercantile on August 5, 1997 registered the Material Girl mark in California only, wrongfully ignoring Madonna's prior uses, and began selling its branded clothing wholesale to medical scrub suppliers and discount retailers. UF 1-17. 5. Madonna, of course, as she did from 1985 to 1997, steadily kept using the
Material Girl name and trademark from 1997 to date, including by continuing to sell millions of dollars of Material Girl clothing and other goods. UF 39-47. 6. On March 9,2010, defendant MG Icon acquired Madonna's trademark
rights to the Material Girl mark, and entered into an agreement to release a Madonnaendorsed Material Girl clothing line exclusively through Macy's. UF 18-26. Macy's first sales occurred in early August 2010. UF 27. 7. On August 19,2010, L.A. Triumph filed this action for trademark infringement against Madonna personally, ~G Icon, and later added Macy's, based on
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alleged common law trademark rights because plaintiff never filed a federal registration, and its 1997 California state registration for Material Girl had expired three years earlier on August 5,2007, In these circumstances, L.A. Triumph cannot meet its fundamental burden of proof to show first use or ownership of a valid trademark. Madonna was indisputably the first user of Material Girl. No reasonable jury could find otherwise, This trademark infringement action is meritless, and this motion for summary judgment should be granted in its entirety and the case dismissed with prejudice, III. STATEMENT OF FACTS Madonna Created The "Material Girl" Trademark And Good Will With The Release In 1985 Of The Famous Hit Song And MTV Video, And By Using The Trademark For The Sale of Clothing Since 1985.
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In the mid-1980s, Madonna released the hit single "Material Girl" from her second 13 14 and break-out album "Like A Virgin," UF 31. Madonna also performed in and released 15 the ground breaking MTV video, also entitled "Material Girl," in which she evoked 16 Marilyn Monroe's "Diamonds are a Girl's Best Friend" image from the 1958 movie 17 "Gentlemen Prefer Blondes," UF 32-33. Madonna has over the last 25 years made 18 herself not just a music star, but a world-wide fashion icon, UF 42-43, 19 As the Court itself noted in granting Madonna's motion to dismiss: "Anyone born
20 before the mid-1980s likely knows of Defendant and the song.,,2 Order Granting 21 Defendant's Motion To Dismiss, p, 9, fn, 5 (Doc, 27), Indeed, Madonna has worked hard 22 over the years to cultivate her image on the cutting edge of fashion - stylish, hip, avant 23 garde, controversial, sometimes exotic, sometimes erotic, but always in the public eye, 24 UF 34-38. Ask most anyone: Who is the Material Girl? The answer is most certainly 25 Madonna. As a result of the Material Girl success and notoriety, Madonna and her 26 merchandising companies have sold about $85 million of merchandise, including 27 28
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On October 11, 2010, L.A. Triumph voluntarily filed its operative First Amended Complaint For: (1) Declaratory Relief, and (2) Violation of Lanham Act 43(a) (the "FAC"). On October 29,2010, Madonna filed a motion to dismiss (Doc. 12). On February 16,2011, the Court granted Madonna's motion, and issued its Order Granting Defendant's Motion To Dismiss And Setting Status Conference (Doc. 27). 4 NOTICE OF MOTION AND MOTION FOR SUMMARY JUDGMENT OR SUMMARY ADJUDICATION OF ISSUES; MEMORANDUM OF POINTS AND AUTHORITIES
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women's shirts, camisoles, pants, etc., in the United States and overseas, of which 10% to 20% bears the "Material Girl" trademark. OF 39-41. In 2007, Madonna entered into a landmark, reportedly $120 million deal, for Live Nation Entertainment, Inc. to take over and manage her music career. UF 45. Yet, Madonna was careful to carve out of the Live Nation deal any rights to use the Material Girl name, including, with respect to clothing and fashion. UF 46. Having kept those rights, Madonna, with her 13-year-old daughter, Lourdes, decided in late 2009 and 2010 to participate in designing and developing a new line of juniors' women clothing called Material Girl. UF 23-26. To do so, MG Icon, a company owned by Purim, LLC, which is partially owned by Madonna, entered into an agreement with Macy's for Macy's to be the exclusive retailer for the new Material Girl line of clothing. UF 18-25. B. L.A. Triumph Did Not File A Federal Registration For The Material Girl Trademark, And Its 1997 California State Registration Expired As A Matter of Law on August 5, 2007. MG Icon, of course, did its own trademark due diligence before launching the new
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16 Material Girl line of clothing. A federal search disclosed two Material Girl federal 17 registrations: (1) on February 6, 1994, Les Ventes Universelles had registered Material
18 Girl (UF 5,6), and (2) on November 3,2005, Rwachsberg Holdings Inc. Company 19 Canada had registered the name Material Girls (UF 14). There was no federal 20 registration by O.C. Mercantile or L.A. Triumph. OF 11, 12. 21 MG Icon also did a state trademark search which disclosed (1) the August 5, 1997
22 Material Girl registration by OC Mercantile (OF 7), and (2) the October 28, 2003 23 assignment by OC Mercantile to Hasina Lakhani (UF 13). That 1997 California 24 25 26 27 28 registration, however, had expired as a matter of law on August 5, 2007, i.e., ten years after the original registration, and had not been renewed and was apparently abandoned. No one in the MG Icon or Macy's camps had ever head ofOC Mercantile, or its 2003 assignee Hasina Lakhani, and no one had any actual knowledge of any of their uses of the Material Girl mark. UF 28. Moreover, the name L.A. Triumph did not appear in
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either the state or federal Material Girl trademark searches. On March 9,2010, Purim, MG Icon, Iconix, and Macy's finalized and signed their respective agreements, and on March 10,2010 a press release was issued announcing the deal, and the plans to launch later that summer the new Material Girl clothing line exclusively at Macy's. UF 23-26. Macy's first sales actually occurred in August 2010. UF 27. On August 19, 2010, without a cease and desist letter or any other communication or warning, L.A. Triumph to the defendants' surprise filed its original complaint in this action, even naming Madonna in her individual capacity.
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Plaintiff's Predecessor OC Mercantile Co-Opted The Material Girl Trademark In The First Place And Registered And Began Using It In California Only In 1997.
Plaintiff L.A. Triumph, through its alleged predecessor DC Mercantile, registered
the Material Girl trademark for Class 025 clothing uses on August 9, 1997 with the California Secretary of State only. UF 7. DC Mercantile claimed a first use date for Material Girl of January 15, 1997. UF 8. DC Mercantile's 1997 California registration as a matter of law lasted 10 years, but its assignee Hasina Lakhani andlor L.A. Triumph failed to renew the state law "Material Girl" registration, and it thus expired on August 9,
2007. UF 15-17. L.A. Triumph filed this action over three years later on August 19, 18 19 2010. 20 D. In Its California Material Girl Registration In 1997, OC Mercantile
Misrepresented Its Knowledge Of Madonna's Prior Uses.

21 Hafiz Lakhani, 19 years old in 1997, knew about Madonna: "Yeah, 1 mean, 1 22 wasn't living under a rock. Of course I did." UF 50. He was also familiar with the term 23 Material Girl, as well as Madonna's song. UF 51-54. He even knew the chorus: "A 24 material girl in a material world." UF 53. And he knew the term Material Girl referred 25 to teens and young girls. UF 55. He chose Material Girl for his label because it had a 26 double meaning: girls that were materialistic, and the word "material" was a fabric. UF 27 56. Yet, Hafiz Lakhani claims that he did not make the connection between Madonna's 28 Material Girl image and his choice of Material Girl for his clothing line: "1 guess 1 didn't
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think about that, you know." UF 9. In registering the Material Girl name, however, OC Mercantile made materially false representations to the California Secretary of State. First, OC Mercantile represented that the date the Material Girl trademark was first used in California or "anywhere" was January 15, 1997. UF 8-10. Second, OC Mercantile's president, Hafiz Lakhani, who is also the current Vice-President of L.A. Triumph, also signed the required "Declaration of Ownership" on the California application stating as follows: "Declaration of Ownership Applicant herewith declares that he/she has read the above and foregoing application and knows the contents thereof and that the facts set out herein are true and correct and that the three specimens of the mark submitted are true and correct, and to his/her best knowledge and belief no other person, firm, corporation, union or association has the right to use said mark in this state either in identical form or in such near resemblance thereto as might be calculated to deceive or confuse." UF 10. This representation, as well as the January 15, 1997 "first use anywhere"
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15 representation, were obviously not true. Madonna or her related entities had already been 16 using the Material Girl name for 12 years in California and elsewhere, and OC 17 Mercantile was obviously trying to take advantage of that notoriety, and trying to confuse 18 or deceive the public into believing that its Material Girl discount clothing line was 19 related to, or endorsed by, Madonna. 20 E. 21 L.A. Triumph's Material Girl Sales Were Directed Primarily To Medical Scrubs Suppliers And The Discount Retail Market, Not Department Stores Like Macy's. Starting in 1997, L.A. Triumph's predecessor OC Mercantile used the Material Girl mark to sell medical scrub tops and drawstring pants to doctors and nurses in connection with the Lakhani family's already established wholesale medical scrub and clothing business called Med Gear. UF 59-61. OC Mercantile also designed and sold "fashion" juniors' clothing under the Material Girl label mostly to discount retailers like Ross "Dress For Less" Stores, Big Lots, and Beall's Outlets. UF 62. Plaintiff also sporadically sold its Material Girl clothing t<7"Mom and Pop" beachwear stores in
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California. L.A. Triumph is a wholesaler; it does not sell its Material Girl clothing in retail stores. UF 67. L.A. Triumph has never successfully sold its Material Girl clothing to department stores like Macy's. UF 98, 99. Moreover, L.A. Triumph does not intend to sell to department stores. UF 100. L.A. Triumph's business plan has always been to offer low prices for high volume sales. UF 101-103, 107, 108. In the last five years, L.A. Triumph also sold through four retail stores, all called "Scrubs and More," owned by another related company, Professional Apparel Corporation (HP AC"). UF 63. Three of those PAC stores are now closed or sold. UF 64, 65. The only remaining PAC retail store, now called "Med Gear and More," is in the same Cerritos industrial center where L.A. Triumph's operations are currently located. UF 66, 67. In other words, L.A. Triumph has established a "niche" market, and its sales are almost exclusively wholesale to medical scrub suppliers or discount retail chains in California like Ross "Dress for Less" Stores. UF 92, 94. L.A. Triumph's business model -- and it is proven and very successful according to its president Amin Lakhani -- is to provide quality products at the lowest prices, i.e., as much as half or three-quarters less than others. UF 96, 101-104. L.A. Triumph does not believe it has any real competitors who can match its prices or quality. UF 95 -97, 101. It only worries about selling, not competing. UF 97. F. L.A. Triumph Has Done Little Or No Advertising Of Its Wholesale Line Of Material Girl Scrubs And Other Clothing. OC Mercantile and L.A. Triumph have done little or no advertising over the years.
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23 UF 68. Its promotions in the last five years have been limited to occasionally sending out 24 "line sheets" for Material Girl scrubs or other apparel which were inserted into the Med 25 Gear scrubs catalog or e-mailed to existing customers. UF 69, 70. 26 Consistent with L.A. Triumph letting its California trademark registration expire in 27 2007, L.A. Triumph's last purchase of Material Girl goods or inventory was in 2008. It 28 has since stopped buying Material Girl product. UF 83. On March 10,2011, when
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Macy's and MG Icon announced their Material Girl project, L.A. Triumph was in the process of selling off its year or more old Material Girl inventory at a substantial loss. UF 84-88.
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In 2010,MG Icon And Macy's Launched A Major Advertising Campaign For Its New "Material Girl" Clothing Line, With Madonna's Endorsements, And Its Market Penetration Has Been Significant.
Since the March 10,2010 announcement, Macy's has spent a significant amount of
8 money on advertising for the "Material Girl" line, including print advertising, in-store 9 promotions, digital advertising, and cinema advertising promoting the new line which is 10 available only at Macy's. UF 90. From March 10,2010 through the first week in April, 11 2011, Macy's has sold well over $10 million of Material Girl merchandise at up to $68 12 per item. UF 90, 91. 13 In all of Macy' s Material Girl advertising, Macy's is specifically identified as the 14 "only" or "exclusive" retailer, and Macy's is mentioned prominently in the 15 advertisements, expressly coupled with Madonna's endorsement and the Material Girl 16 name, e.g., "Material Girl -- Exclusively At Macy's." UF 30. On the other hand, L.A.
17 Triumph does not advertised its Material Girl product at all. 18 H. 19
The Two SidesAre Targeting Different Markets.

L.A. Triumph has purposely and strategically established a "niche" market selling
20 to medical supply companies as well as discount retailers. UF 92. Macy's and MG Icon 21 are certainly not targeting or selling to the medical apparel market, and have no intention 22 to expand into that niche marketing segment. L.A. Triumph similarly has not, and is not 23 intending to, target department stores like Macy's. UF 99-100. Indeed, L.A. Triumph's 24 target retail market for the last 13 years has been discount stores such as Ross "Dress for 25 Less" Stores and Beall's Outlets where its Material Girl products are sold at low prices to 26 more price-conscious customers. 27 28
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3
Macy's And L.A. Triumph's Material Girl Clothing Is Sold In Significantly Different Price Ranges.
L.A. Triumph and MG Icon/Macy's also do not compete in the same price ranges.
4 UF 96. Macy's upscale retail sales are in the $15 to $68 price range. UF 91. 5 L.A. Triumph's wholesale prices to its customers are in the $2.99 to $6.99 price range, 6 i.e. substantially less than Macy's prices. UF 106. L.A. Triumph has purposely and 7 successfully branded its Material Girl product in the discount retail market. UF 107.
8 J.
9 10 11 12 13 14 15 16 17 18 19
In 2009 And 2010, L.A. Triumph Sold Little Or None Dflts Material Girl Product Although It Had Substantial Old And Out Df Style Inventory.
L.A. Triumph had essentially stopped buying Material Girl clothing from its
manufacturers in the two years before the Macy's announcement on March 10,2010. UF 80-83, 88, 89. On March 15,2010, less than a week after the MG Icon and Macy's launch, L.A. Triumph even "cleared out" some of its existing Material Girl inventory by selling $19,665 of velour pants to its ex-customer Ross Stores. UF 84-87. That product had been in L.A. Triumph's inventory for well over a year. Moreover, L.A. Triumph made the sale to Ross Stores at $2.50 per unit which is $1.90 below its $4.40 cost. UF 84, 85. In other words, it was an inventory dump -- a "clear-out," a "special deal" -apparently hastily orchestrated in response to defendants' March 10, 2010 press release regarding its Material Girl launch, and made to try to reestablish whatever rights L.A. Triumph might have had to the Material Girl trademark. UF 87.
20 K. 21
22
There Has Not Been Any Actual Confusion And There Is No Evidence Of Any Likelihood Of Confusion Due to Defendants' New And Exclusive Material Girl Line.
There is no evidence of actual confusion. Since MG Icon and Macy's released 23 24 their Material Girl line, no actual or potential L.A. Triumph customer has expressed any 25 confusion, or even mentioned or asked any questions about, the relationship, if any, 26 between L.A. Triumph's medical scrubs and discount clothing and Macy's Madonna27 endorsed clothing line. UF 71-73. Similarly, no Macy's customer has mentioned or 28 asked questions about L.A. Triumph's discount line of Material Girl clothing. UF 74-76.
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There is simply no evidence of actual or likely confusion between the new Macy's and mostly defunct L.A. Triumph clothing lines. To the contrary, the only evidence of confusion works against L.A. Triumph -- L.A. Triumph's customers have in the past, not surprisingly, asked about a connection between L.A. Triumph's use of the Material Girl name and Madonna. UF 71. IV. LEGAL ARGUMENT
5
6 7
A.
8
9
The Standards Governing Summary Judgment And L.A. Triumph's Burden Of Proof.
Under Rule 56(c) of the Federal Rules of Civil Procedure, summary judgment is
10 appropriate where there is "no genuine issue of material fact and that the moving party is 11 entitled to judgment as a matter of law," Celotex Corp. v. Catrett, 477 U.S. 317 (1986). 12 Here, L.A. Triumph has the burden of proof at trial because it is alleging trademark
13 infringement and unfair competition. Nissan Motor Co. v. Nissan Computer Corp., 204 14 F.R.D. 460,466 (C.D. Cal. 2001). In addition, since L.A. Triumph never applied for a 15 federal registration, and its ten year California registration expired in 2007, L.A. Triumph 16 is not entitled to any presumption of ownership, and it is L.A. Triumph's burden to prove 17 that it is the first user and owns the Material Girl trademark. Glow Industries, Inc. v. 18 Lopez, 252 F.Supp.2d 962, 976 (C.D. Cal. 2002). 19 When the moving party does not have the ultimate burden of proof at trial, it need 20 not produce evidence showing the absence of a genuine issue of material fact. Celotex, 21 477 U.S. at 323-325. "Instead, ... the burden on the moving party may be discharged by 22 'showing' - that is, pointing out to the district court - that there is an absence of evidence 23 to support the nonmoving party's case." Sony Pictures Entm 't, Inc. v. Fireworks 24 Entm 't Group, Inc., 156 F.Supp.2d 1148, 1152 (C.D. Cal. 2001) (emphasis added) 25 (quoting Celotex, 477 U.S. at 325). Furthermore, under Fed.R.Civ.P. 56(e), a party 26 opposing such a motion "must set forth specific facts showing that there is a genuine 27 issue for trial.:" Sony Pictures, 156 F.Supp.2d at 1152. 28
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Here, it is L.A. Triumph's burden of proof to establish (a) that it was the first or senior user of the Material Girl trademark, and (b) that defendants have infringed on L.A. Triumph's mark. L.A. Triumph obviously cannot do so because Madonna and her merchandising companies were using the Material Girl trademark, including for Class 025 clothing, since 1985, and L.A. Triumph, just as obviously, latched on and took advantage of Madonna's prior uses and notoriety when it started its Material Girl medical scrubs and discount clothing line in 1997.
6 7
8 9 10
B.
L.A. Triumph Was Never The Senior User Of The "Material Trademark And Therefore Does Not Own The Trademark.
Girl"
In Matrix Motor Co. v. Toyota, 290 F.Supp.2d 1083, 1088 (C.D. Cal. 2003), the
11 Court granted defendant Toyota's motion for summary judgment in a reverse confusion 12 case because plaintiff could not show first use, and because the plaintiffs race cars and 13 Toyota's economy passenger cars were not intended for the same market and there was 14 no likelihood of confusion. 15 16 17 18 19 20 21 22 23 To prevail on a claim for trademark infringement, a plaintiff must first establish that it owns a valid trademark. Trademark ownership is not acquired by federal or state registration. Ownership rights flow only from prior use in the market. ... The use of the mark must be "sufficiently public" that the marked goods are "identified or distinguish[ ed] ... in an appropriate segment of the public mind as those of [the adopter of the mark]. Id. at 1088 (citations omitted). Here, L.A. Triumph cannot do so. It cannot meet its fundamental burden of proof to establish first use or ownership of the Material Girl trademark. It is undisputed that Madonna was the first user, and her uses included the continuous sales of millions of dollars of Material Girl clothing over the years at retail stores and concert venues. Therefore, the court should grant summary judgment without even reaching the actual or reverse confusion issues discussed below.
24
25
26
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L.A. Triumph Cannot Establish Common Law Rights To The Material Girl Mark Because It Cannot Demonstrate Sufficient Market Penetration. L.A. Triumph does not have sufficient market penetration to claim common law
4 trademark rights senior to MG Icon and Macy's. In Optimal Pets, Inc. v. Nutri-Vet, LLC
5 2010 WL 2305843 (C.D. Cal. 2010), the Court considered the necessary market
6 penetration for an unregistered "niche market" common law trademark infringement 7 claim: 8 9 10 11 12 13 14 A plaintiff asserting common law ownership rights in a trademark must establish (1) that it is the senior use of the mark and (2) legally sufficient market penetration in a certain geographic area to establish ownership rights. Credit One Corp. v. Credit One Financial, Inc., 661 F.Supp.2d 1134, 1138 (C.D. Cal. 2009) (citing Glow Industries, 252 F.Supp.2d at 983). The Ninth Circuit has identified the following factors to determine the extent of market penetration: (1) volume of sales; (2) growth trends; (3) the number of people who purchased the party's goods in relation to the number of potential customers; and (4) the amount of advertising. Adray v. AdryMart, Inc., 76 FJd 984,989 (9th Cir. 1995) (citing Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 1398-99 (3rd Cir. 1985)).
Id. at *2.
UF 68, 69,90. For this separate reason, defendants are entitled to summary judgment. 25 D. 26 27 Even If L.A. Triumph Owns Its Material Girl Mark, MG Icon And Macy's Uses Do Not Create Reverse Confusion. "The key question in reverse confusion cases is whether consumers who encounter
13
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28 the senior user's products will believe that they are associated with the junior user. Echo
2
3 4 5 6 7
Drain v. Newsted, 307 F.Supp.2d 1116 (C.D. Cal. 2003) (granting summary judgment for defendants in reverse confusion case). "In order to succeed on a trademark infringement claim involving reverse confusion, the plaintiff must prove that: (1) he is the senior user; (2) of a valid trademark; (3) which the defendant is using in a way that is likely to confuse the plaintiffs customers into believing that they are dealing with the defendant." Moose Creek, Inc. vs. Abercrombie & Fitch Co. 331 F.Supp.2d 1214,1221 (C.D. Cal. 2004). To defeat a summary judgment motion, "Plaintiff must 'create a genuine issue that confusion is probable, not simply a possibility.
m
8
9 10 11 12 13 14 15 16 17 18 19 20 21
M2 Software, Inc. v. M2
Communications, L.L.c. 281 F.Supp.2d 1166, 1169 (C.D. Cal. 2003). In one of the leading Ninth Circuit reverse confusion cases, Dreamwerks Production Group v. SKG Studio 142 F.3d 1127, 1129-1130 (9th Cir. 1998), Justice Kozinski summarized the likelihood of confusion factors, and differentiated the usual direct or "palming off' trademark infringement action from a "reverse confusion" case as follows: The test for likelihood of confusion is whether a "reasonably prudent consumer" in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks. [Footnote omitted.] In AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,348-49 (9th Cir. 1979), we listed eight factors to facilitate the inquiry: (1) strength of the mark; (2) proximity or relatedness of the goods; (3) similarity of sight, sound and meaning; (4) evidence of actual confusion; (5) marketing channels; (6) type of goods and purchaser care; (7) intent; and (8) likelihood of expansion. The factors should not be rigidly weighed; we do not count beans. "Rather, the factors are intended to guide the court in assessing the basic question of likelihood of confusion." Gallo Winery, 967 F .2d at 1290. In the usual infringement case, these factors are applied to determine whether 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 bamboozled into thinking that it was manufactured by Nike? In a reverse infringement case, like ours, there is no question of palming off, since neither junior nor senior user wishes to siphon off the other's goodwill. The question in such cases is whether consumers doing business with the senior user might mistakenly believe that they are dealing with the junior user.
14
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22
23 24 25 26 27 28
2
3
Id. at 1129 - 1130. In reverse confusion cases, the first three of the now familiar eight Sleekcraft
The Three Pivotal Sleekcraft Factors For A Reverse Confusion Case Weigh In Favor Of Granting Summary Judgment. Here, the Material Girl mark is most likely arbitrary and fanciful, and entitled to strong protection -- except the protection is for the first user Madonna and not L.A. Triumph. The parties' goods are related only in the broadest sense that both are clothing; 12 however, the goods are actually significantly different, sold to different classes of 13 purchasers, and at different price points. The trademarks themselves are similar in the 14 sense that the words Material Girl are obviously identical, but the sound (Madonna 15 evokes the lyrics, music and her Material Girl image), and certainly the meanings, are not 16 similar. The three main reverse confusion factors indicate little or no confusion to the 17 public, and summary judgment should be granted for defendants. 18 1. The Strength Of The Material Girl Mark. 19 20 21 The strength ofa trademark is a legal issue. Matrix, 290 F.Supp.2d at 1091. "The more likely a mark is to be remembered and associated in the public mind with the mark's owner, the greater protection the mark is accorded by trademark law." [Citation omitted.] In reverse confusion cases, courts evaluate the conceptual strength of the senior user's mark and compare it to the commercial strength of the junior user's mark." Glow Industries, Inc. v. Lopez, 252 F.Supp.2d 962, 987 n. 112 (C.D.Ca12002). "To determine a mark's strength, it is classified in one of the following four groups, listed in ascending order of strength: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The stronger the mark, the more protection it is afforded.
15
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22
23 24
25 Moose Creek, 331 F.Supp.2d at 1224. 26 27 28
1 2 3 4 5 6
The weaker the mark, the less protection it is afforded." Matrix, 290 F.Supp.2d at 1090. Material Girl is most likely a fanciful or arbitrary mark, but it is associated in the public's mind with Madonna, not L.A. Triumph, and is entitled to strong trademark protection for Madonna, not L.A. Triumph. If the trademark is fanciful or arbitrary, "the trademark holder must work hard to make consumers associate the trademark with the product. This suggests that any association is the result of goodwill and deserves broad protection from potential infringers." Dreamwerks, 142, F.3d at 1130, fn. 7. Here, Madonna has long been the one and only Material Girl, and has certainly worked hard over the last 25 years to make and keep consumers aware of her fashion sensibility and image. There is no doubt that the public associates the Material Girl mark with Madonna, and today with her 2010 endorsed MG Icon and Macy's Material Girl products. InM2 Software, Inc. v. M2 Communications, LLC, 281 F.Supp.2d 1166 (C.D. Cal. 2003), the court granted defendant summary judgment in a reverse confusion case involving two companies in the music business. Since M2 was an arbitrary or fanciful term, the plaintiff senior user argued that the M2 mark was as a matter of law inherently strong so the strength inquiry should end there. However, the court disagreed because the strength of a mark is evaluated not just in terms of its conceptual strength but also its commercial strength. M2 Software, 281 F.Supp.2d at 1170, citing GoTo.com Inc. v. Walt Disney Company, 202 F.3d 1199, 1207 (9th Cir. 2000). While the M2 mark was indeed arbitrary or fanciful, plaintiff s marketing efforts, advertising and sales of its specialized computer products was extremely limited, so the commercial strength of the otherwise strong arbitrary and fanciful mark was actually very weak and "flabby." Id. at 1171. Since, due to plaintiffs limited use of the mark, there was little or no likelihood of confusion to the general public, the strength of mark weighed against the senior user. Id. at 1176. Here, too, L.A. Triumph's uses of the Material Girl mark were largely limited to its specialized medical gear and supply cust9lPers, a few discount retail stores, and a
LA 129,431,986 v.3 117558-010200
7
8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
1 2 3 4 5
handful of "Mom and Pop" beachwear stores. L.A. Triumph is also not entitled to any credit for selecting the fanciful Material Girl mark because it was already established in the public's mind, and L.A. Triumph has done little or nothing to make it more meaningful or valuable in any commercial sense. Therefore, the strength of the mark factor does not help L.A. Triumph, and in fact weighs heavily in favor of defendants. 2. The Proximity Or Relatedness Of The Parties' Goods.
6 7
8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25
The second of the three Sleekcraft factors to consider in a reverse confusion case is the relatedness or proximity of the goods. "[W]here the nature of the goods is undisputed, the relatedness of the goods is a matter of law," Trovan Ltd vs. Pfizer 2000 WL 709149 at * 18, (C.D. Cal. 2000), citing J.B. Williams Co. v. Le Conte Operations, Inc. 523 F.2d 187, 190-193 (9th Cir. 1995). "When two products or services fall within the same general field, it does not mean that the two products or services are sufficiently similar to create a likelihood of confusion." Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc., 952 F.Supp. 1084, 1095 (D.N.J. 1997); Echo Drain, 307 F.Supp.2d at 1125. As explained in Matrix, 290 F.Supp.2d at 1092: Proximity of the parties' goods exists where they are (1) complementary, (2) sold to the same class of purchasers, or (3) are similar in use or function. Sleekcraft, 599 F.2d at 350 (citations omitted). Because MMC's race cars and Toyota's passenger cars are neither used nor promoted together, they are not complementary. Walter v. Mattel, Inc., 31 F.Supp.2d 751,759 (C.D.Cal.1998), aff'd, 210 F.3d 1108 (9th Cir. 2000). "Meaningful differences between the products and services are often cited as a factor tending to negate reverse confusion, even when the products are superficially within the same category." Harlem Wizards Entm 't Basketball, 952 F.Supp. at 1095. [Emphasis added.] As stated in Sleekcraft, 599 F.2d at 348, fn.10: "Related goods are those 'products
* * *
26 which would be reasonably thought by the buying public to come from the same source i
27 28 sold under the same mark. '" Here, while the L.A. Triumph and MG IconiMacy's Material Girl goods may generally be in the same broad "clothing" field, they are
17
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actually not very related at all. The goods are sold to different customers: Macy's higher end retail customers vs. L.A. Triumph's wholesales to discount retailers. They are sold at different price points: Macy's $15 to $68 vs. L.A. Triumph's $2.99 to $6.99 - a 200% to 900% price difference. They are directed to different target markets: Macy's is targeting the higher end fashion conscious teen market, and L.A. Triumph is targeting nurses and young women primarily interested in its successful Med Gear scrubs or bargain discount store shoppers. No one is likely to confuse the Madonna mother and daughter endorsed Material Girl fashions with L.A. Triumph's medical scrubs, or Ross "Dress For Less" Stores or other discounters' goods.
3
4 5 6
7
8
9 10
11
12 13 14 15 16 18
3.
Similarity Of The Marks: Sight, Sound And Meaning.
As the Ninth Circuit explained in Sleekcraft, 599 F.2d at 351: "Similarity of the marks is tested on three levels: sight, sound, and meaning." In judging similarity, trademarks should be considered as they are encountered in the marketplace, taking into account the normal circumstances surrounding purchases of the type of goods the represent" Glow Indus., 252 F.Supp.2d at 994. In addition, marks may not be dissected, but must be compared in their entirety. Id. Here, Material Girl is a word mark, and the words in the parties' marks are literally
17 Matrix 290 F.Supp.2d at 1093. 19 the same. The spoken word or sound of the Material Girl mark is also arguably the same 20 except for one major difference: the name Material Girl triggers in many people's minds 21 Madonna singing the catchy and time-tested lyrics, e.g., "And I am a Material Girl." 22 In any event, the meaning of the mark is certainly not similar. MG Icon's and
23 Macy's uses of the Material Girl mark -- complete with Madonna's personal endorsement 24 -- are obviously easily distinguishable by the public, including the target women's 25 juniors' market, as opposed to L.A. Triumph's primarily professional oriented medical 26 scrub uses and its wholesale discount store customers. 27 28
18
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(a) "[Tjhe use of a house mark (i.e., the famous TOYOTA mark) also may reduce or
4 eliminate likelihood of confusion. Cohn, 281 F .3d at 842 (9th Cir. 2002); see also 5 Walter, 31 F.Supp.2d at 760 (stating that "[o]therwise similar marks are not likely to be 6 confused where used in conjunction with the clearly displayed name and/or logo of the 7 manufacturer")." 8 Matrix, 290 F.Supp.2d at 1093.
In Moose Creek, while the "Moose" marks were similar, Abercrombie & Fitch,
9 like Macy's here, sold its trademarked Moose apparel with its "Abercrombie & Fitch" 10 house mark attached which also mitigated any likelihood of confusion. Moose Creek at 11 1227. Here, there is a double distinction that negates any superficial similarity: (I) 12 defendants' goods are endorsed by Madonna herself, and (2) Macy's is the exclusive 13 distributor ofMG Icon's Material Girl products, and the Macy's mark and name appears 14 in all advertisements. 15 16 4. Lack Of Actual Confusion. The remaining Sleekcraft factors also favor defendants and summary judgment.
17 L.A. Triumph has not and cannot produce any evidence of actual confusion. In reverse 18 confusion cases, "[tjhe Ninth Circuit has held that 'lack of evidence about actual 19 confusion after an ample opportunity for confusion can be a powerful indication that the 20 junior trademark does not cause a meaningful likelihood of confusion." Matrix, 290 21 F.Supp. at 2d at 1093 (citation omitted). 22 23 5. The Parties Also Utilize Different Marketing Channels. As explained in Matrix, 290 F.Supp.2d at 1095: "Advertising, the existence of
24 direct competition, and retail distribution are considered when addressing whether the 25 parties use similar marketing channels. [Citation omitted]. A finding that the parties 26 advertise or distribute their products differently indicates a lesser likelihood of 27 confusion." As set forth above, MG Icon and Macy's advertise while L.A. Triumph does 28
19
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not. The parties also do not directly compete, and the retail distribution and marketing channels are entirely different. 6. Types Of Goods And Purchaser Care. Here, L.A. Triumph's wholesale buyers have the expertise to easily differentiate L.A. Triumph's Material Girl scrubs and discount clothing from MG Icon and Macy's higher end, Madonna-endorsed, Material Girl products aimed at the fashion conscious youth market. 7. MG Icon And Macy's Had No Intent To Adopt L.A. Triumph's Mark. MG Icon and Macy's had no knowledge of, or intent to, adopt L.A. Triumph's mark. On the other hand, L.A. Triumph just as obviously had knowledge of Madonna's prior Material Girl uses, and intended to adopt and take advantage of Madonna's prior uses and did so.
8 9
10 11 12
CONCLUSION The Court should grant defendants' motion for summary judgment. Alternatively, the Court should grant summary adjudication on the Lanham Act claim and/or rule that there has been no actual andlor reverse confusion. Dated: June 27, 2011 By: GREENBERG TRAURIG, LLP
-:----!..!/s~/-==G::...::e::;:::o:::_.:rg:..::e::._:::M~. B===-e!::.!l;J.:.fi:!::!el~d:...._
George M. Belfield Attorneys for Defendants MADONNA LOUISE VERONICA CICCONE, MG ICON, LLC AND MACY'S RETAIL HOLDINGS, INC. 20
LA 129,431,986 v.3 117558-010200

L.A. Triumph v. Madonna (C.D. Cal. 2011) (Madonna's Memo of Law in Support of Motion For Summary Judgment)

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L.A. Triumph v. Madonna (C.D. Cal. 2011) (Madonna's Memo of Law in Support of Motion For Summary Judgment)

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Case 2:10-cv-06195-SJO -JC Document 87

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1 GREENBERG TRAURIG, LLP

9 MADONNA LOUISE VERONICA CICCONE,

8 Attorneys for Defendants

UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION

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GREENBERG TRAURIG, LLP

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8 II. SUMMARY OF ARGUMENT 9 III. STATEMENT OF FACTS lOA. 11 12 13 14 15 16 17 18 19 20 21

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5 6 IV. LEGAL ARGUMENT 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 4. 5. 6. 7. 8. E. D. C. A. B.

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TABLE OF AUTHORITIES Page(s)

.. 14, 15, 16 13, 17 11, 15 .. .. 16 17

.. 17 14, 16 passim 14, 15, 19 11 12, 13 11 17

27 Trovan Ltd vs. Pfizer 28 2000 WL 709149 (C.D. Cal. 2000)

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The Declaratory Relief Claim.

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Prayer For Relief j l , 2, 3. I

II. SUMMARY OF ARGUMENT

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Misrepresented Its Knowledge Of Madonna's Prior Uses.

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17 Triumph does not advertised its Material Girl product at all. 18 H. 19

The Two SidesAre Targeting Different Markets.

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25 Moose Creek, 331 F.Supp.2d at 1224. 26 27 28

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Similarity Of The Marks: Sight, Sound And Meaning.

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