Ever since Madonna launched her clothing line, , 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 against Madonna’s company, MG Icon LLC, claiming the rights to the Material Girl trademark. In the latest development, the US District Court made by MG Icon to dispose of the suit and ordered that the suit should proceed to trial.

Under rule “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 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 (). 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 with the (USPTO) on December 4, 2009.  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.

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On August 10, 2011, the US District Court Christian Louboutin S.A.’s motion for an preliminary injunction against Yves Saint Laurent (YSL) to stop marketing the shoes that allegedly infringe Louboutin’s trademarked red lacquered heel pending the outcome of the trademark infringement lawsuit that was filed in April 2011 (For more see Canada Fashion Law blogger and Osgoode alum Ashlee Froese’s ).

In order to get the injunction, the onus was on Louboutin, the plaintiff, to establish “(1) irreparable harm and (2) either (a) a likelihood of success on the merits, or (b) sufficiently serious questions going to the merits of its claims to make them fair ground for litigation”.

Although the plaintiff’s registered trademark, which was granted in January 2008, gave rise to a rebuttable statutory presumption that the mark is valid pursuant to , Judge Victor Marreo was clearly unconvinced; he rejected Louboutin’s motion on the basis that Louboutin did not demonstrate a sufficient likelihood that the red sole mark merits protection under the Act. Judge Marreo reasoned that the red sole mark was simply too broad in that it could encompass all styles of shoes and include several shades of red.  In addition, he added that individual monopolies on colour do not serve well in fashion design:  “the law should not countenance restraints that would interfere with creativity and stifle competition by one designer, while granting another a monopoly invested with the right to exclude use of an ornamental or functional medium necessary for freest and most productive artistic expression by all engaged in the same enterprise”. However, Judge Marreo did note that an exception to this rule is the use of colour in distinct patterns or combinations of shades that are an identifiable mark in goods (examples include the Louis Vuitton monogram and the Burberry check pattern).

In to the decision, Louboutin’s US attorney Harvey Lewin said “We’re going to fight like hell”. They have already the decision.

The decision puts a damper on Louboutin’s case against YSL. Moreover, it takes away from Louboutin’s greater crusade against all counterfeit Louboutin shoes. In the last several years, Louboutin has intensified its campaign against copycats; in May 2010, the company established , a website that includes a search engine that distinguishes legitimate online Louboutin retailers from contraband websites. More recently, in April 2011, Louboutin Carmen Steffans, a Brazilian footwear company, in France for selling shoes that also infringe on the signature red sole shoes.

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The Advertising Standards Authority (ASA), the independent advertising watchdog of the UK, On July 13, 2011, complaints against , a SMS mobile phone content provider, over their ad for a that was originally televised in April 2011.

The complainants alleged that the ad was misleading, contrary to rules and of the (BCAP Code), as it implied that the app would allow the buyer to read another person's private text messages. The ad was also challenged on the basis of as being irresponsible for encouraging and condoning criminal behaviour (i.e. phone hacking).  The complete voice-over of the ad can be read .

, owner the Jamster brand, maintained that the ad never intended to imply that the app was a real SMS reader; they thought that the words “Fun App” appearing on the screen was sufficient to convey to the audience that the app was a joke product allowing consumers to pretend that they had acquired a real SMS reader. , the agency that executed the joke ad, argued that the voice-over that included phrases such as “Fool your friends” and “This fun app” made clear that the app could not be used for unscrupulous purposes.

The ASA agreed with the advertisers that the ad was not irresponsible, as the ad did not encourage viewers to use the app for pernicious purposes. However, the ASA rejected the claim that the ad made clear that the app was a joke product as the ad was ambiguous as to the exact nature of the app. For example, the voice-over of the ad stated, “Fool your friends and pretend to read other people’s text messages”, but continued to say, “This fun app can hack into your friend’s mobile and give you all their incoming and very private SMS messages”. As such the ASA found that the ad breached rules 3.1 and 3.10 of the BCAP Code and held that the ad should not appear again in its current form.

The ASA decision is not surprising as the organization has historically fiercely defended the notion that advertising should be . In addition, the decision was made in the midst of the public outcry against the News of the World and News Corporation for it phone hacking activities and just Rupert Murdoch announced that the News of the World would be shut down (For IPilogue’s coverage on Murdochgate see and ).

In an unrelated interesting coincidence, News Corporation used to in Jamster until Jesta Digital in December 2010.

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