Who has the right to use “Material Girl” for clothing line: Madonna or LA Triumph?

Madonna has entered into a variety of licensing and branding deals recently including with her daughter, Lourdes.  One of those deals is for an exclusive line with Macy’s to be called “Material Girl” after the nickname she has been known by since her hit song of the same name in the 1980s.

L.A. Triumph has filed a lawsuit to stop use of the Material Girl name by Madonna and Macy’s, on the basis that it has been using a line also called “Material Girl” since 1997.

This situation raises a variety of interesting questions concerning right of publicity and trademark.  It can hardly be debated that “Material Girl” is a well-known, long-standing, and unequivocal reference to Madonna.  Madonna has stated that she in fact does not like that nickname, as detailed in the article located at the link below.  However, there is little question that commercial use of a nickname can be just as much a right of publicity violation as use of the person’s actual name.  In my Right of Publicity classes, I use the idea of something that is “unequivocally identifiable.”  In this instance, I believe Madonna is unequivocally identifiable by the nickname “Material Girl,” whether she likes it or not.

However, there is the possibility of an entity acquiring trademark interests in a name that it has been using for a long time.  L.A. Triumph has reportedly been using the name “Material Girl” for over a decade.  One question I have is whether L.A. Triumph’s line makes any other association to Madonna, whether overt or tacit.  Perhaps that will be investigated as the lawsuit evolves.

Here is a link to the story:

http://www.nypost.com/p/blogs/popwrap/madonna_material_girl_woes_TvYY9NjKfDkzY0tVPJKakJ