Sands Anderson PC: Girls Gone Wild: Trademark Infringement or Publicity Stunt?

Sands Anderson PC: Girls Gone Wild: Trademark Infringement or Publicity Stunt?

By: Donna Ray Berkelhammer

Did Madonna infringe the Girls Gone Wild video series trademark by recording a song with the same name?  Probably not, but (with the typical lawyer disclaimer) it depends.

Girls Gone Wild is a video series where young women (usually at Spring Break or Mardi Gras parties) agree to be filmed stripping or flashing.  Madonna, halftime entertainment at last night's Super Bowl XLVI, has a song on her latest (unreleased) album entitled "Girls Gone Wild." The owner of the Girls Gone Wild trademark for adult videos and related products sent a cease and desist letter this week warning Madonna not to sing this song at the Super Bowl.

Is this trademark infringement?

First , song titles are not trademarks and cannot be registered as such.  To act as a trademark, a term must be used to identify the source of goods or services (i.e., FORD for trucks or CHILI'S for restaurant services).  A song title doesn't typically do this.  Sometimes, the song title can be the subject of copyright protection, but generally a title is considered too short and unoriginal to be an "original work of art" that is subject to copyright protection.

Second, even if the title did function as a trademark, identical trademarks can co-exist in different classes of goods.  A classic example is DOMINO'S pizza and DOMINO'S sugar.  Even though these are both foods, they are different enough in target markets, retail outlets, use by the end-user, method of purchase, etc., that these identical trademarks are allowed to co-exist.  A song title (that probably has a corresponding music video) and a video may be so closely connected that these would not be allowed to co-exist, because they might create a likelihood of confusion in the relevant customer  (This is where the "it depends" comes into play).

Likelihood of confusion with a pre-existing mark is the standard for trademark infringement.  Courts will consider a variety of factors in determining whether the reasonable customer would become confused.  The factors come from a 1961 New York case, Polaroid Corp. v. Polaroid Elects.Corp., 287 F.2d 492 (2nd  Cir.) [enhanced version available to lexis.com subscribers], cert. denied, 368 U.S. 820 (1961).

  1. The strength of the plaintiff's [complaining party, usually the owner of the pre-existing mark] mark;
  2. The degree of similarity between the plaintiff's and the defendant's marks;
  3. The proximity of the products or services covered by marks;
  4. The likelihood that the plaintiff will bridge the gap;
  5. Evidence of actual confusion of consumers;
  6. The defendant's good faith in adopting the mark;
  7. The quality of the defendant's product or service; and
  8. Consumer sophistication.

In this specific case, Madonna also has a first amendment right to use the phrase "Girls Gone Wild" in a song.  Mattel once sued MCA Records for trademark infringement of its famous "Barbie" mark in the song "Barbie Girl" recorded by Aqua.  The Court dismissed the case on summary judgement, ruling, (1) MCA's use of Mattel's Barbie trademark in a song title did not constitute trademark infringement; and (2) MCA's use of "Barbie" was "non-commercial," constitutionally protected speech and, therefore, exempt from the Federal Trademark Dilution Act (FTDA).

And finally, since Girls Gone Wild did not object to the 2007 Ludacris single, Girls Gone Wild, my prediction is: this more owner Joe Francis "goes wild" for free publicity than a legitimate trademark dispute.

 

Disclaimer. © Copyright 2012 Sands Anderson PC 

 

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