l.a. triumph v. madonna (c.d. cal. 2011) (madonna's memo of law in support of motion for summary...

8/4/2019 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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1 GREENBERG TRAURIG, LLP2 George M. Belfield (SBN 100272)Email: [email protected] Nina D. Boyajian (SBN 246415)Email: [email protected] Alana C. Srour (SBN 271905)Email: [email protected] 2450 Colorado Avenue, Suite 400 East6 Santa Monica, California 90404Telephone: (310) 586-77007 Facsimile: (310) 586-7800

8 Attorneys for Defendants9 MADONNA LOUISE VERONICA CICCONE,MG ICON, LLC AND MACY'S RETAIL10 HOLDINGS, INC.UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA

WESTERN DIVISION

11121314151617

L.A. TRIUMPH, INC., a Californiacorporation,Plaintiff,

1819 MADONNA LOUISE VERONICA20 CICCONE, an individual; MATERIALGIRL BRAND, LLC, A Delawarelimited liability company, MG ICON, a22 Delaware limited liability company;MACY'S RETAIL HOLDINGS, INC., aDelaware corporation; and DOES 1through 10, inclusive,

vs.

21

2324 Defendants.25262728

CASE NO. CV 10-6195 SJO (JCx)NOTICE OF MOTION ANDMOTION FOR SUMMARYJUDGMENT OR SUMMARYADJUDICATION OF ISSUES;MEMORANDUM OF POINTS ANDAUTHORITIESDate: July 25, 2011Time: 10:00 a.m.Courtroom: ITrial Date: October 11, 2011Honorable S. James Otero[Filed Concurrently With: (1) Statementof Uncontroverted Facts and Conclusionsof Law; (2) Declarations of Dell Furano,Andrew Tarshis, Samantha Copeman,and George M. Belfield]

NOTICE OF MOTION AND MOTION FOR SUMMARY JUDGMENT OR SUMMARYADJUDICATION OF ISSUES; MEMORANDUM OF POINTS AND AUTHORITIES

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1 PLEASE TAKE NOTICE that defendants MG Icon, LLC and Macy's Retail2 Holdings, Inc. will on July 25, 2011 at 10:00 a.m. in Courtroom I of the above-entitled3 court, the Honorable S. James Otero, judge presiding, move for summary judgment, or4 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 relief6 regarding ownership of the "Material Girl" trademark, and (2) violation of the Lanham7 Act 43(a).8 Said motion will be made under Federal Rules of Civil Procedure, Rule 56, on the9 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. First Claim For Relief: Declaratory Relief Against MG Icon Only12 In plaintiffs first claim for relief, plaintiff seeks a declaration that (a) it is the13 rightful owner of the "Material Girl" trademark with respect to clothing, (b) that14 defendants have no right to sell clothes under the "Material Girl" brand, and (c) for an15 order by this Court to deny registration of defendants' United States Trademark16 Application 77/886,045. See First Amended Complaint, ~ 25 ..17 1. MG Icon is entitled to summary judgment, or summary adjudication of18 issues, on plaintiffs first claim for declaratory relief because plaintiff cannot establish19 the fundamental prerequisite for any trademark infringement claim, i.e., first use or20 ownership of the Material Girl mark. To the contrary, Madonna, i.e. the now dismissed21 defendant Madonna Louise Veronica Ciccone, was indisputably the first user.22 B. Second Claim For Relief: Violation of Lanham Act 43(a) Against MG Icon23 And Macy's24 In plaintiff s second claim for relief, plaintiff seeks monetary damages and25 injunctive relief on the grounds that both MG Icon and Macy's have violated the Lanham26 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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23 Dated: June 27, 20112425262728

GREENBERG TRAURIG, LLP

1 plaintiffs market and crowd out the alleged senior user.2 2. MG Icon and/or Macy's is entitled to summary judgment, or summary3 adjudication of issues, on plaintiff s second claim for relief for violation of the Lanham4 Act 43(a), i.e., 15 U.S.C. Il25(a), because plaintiff cannot establish the fundamental5 prerequisite for any trademark infringement claim, i.e., first use or ownership of the6 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 summary8 adjudication of issues, that their Material Girl uses beginning in 2010 have not, and are9 not likely to, result in (a) any actual or direct confusion, and/or (b) any reverse confusion.10 C. Second Affirmative Defense: First Or Prior Use11 4. MG Icon and/or Macy's are both entitled to summary judgment, or summary12 adjudication of issues, on their second affirmative defense of first or prior use because13 plaintiff cannot establish the fundamental prerequisite for any trademark infringement14 claim, i.e., first use or ownership of the Material Girl mark. To the contrary, Madonna15 was the first user.16 This motion will be based on the accompanying (a) Memorandum of Points and17 Authorities, (b) Defendants' Statement of Uncontroverted Facts and Conclusions of Law,18 and (c) the Declarations of Dell Furano, Andrew Tarshis, Samantha Copeman, and19 George M. Belfield filed with this motion.20 This motion is made after the conference of Counsel required under Local Rule 7.221 which occurred on April 18, 2011, and a number of other conferences since that time.22

By: __ ~/s.:!.;'.::=G ~e=or:.....::g~e~M .:.;:;.:..,;. ::::..e~l',l....!fi::::..el==d~ _George M. BelfieldAttorneys for DefendantsMADONNA LOUISE VERONICA CICCONE,MG ICON, LLC AND MACY'S RETAILHOLDINGS, INC.2

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PageMEMORANDUM OF POINTS AND AUTHORITIES INTRODUCTION 14 I. SUMMARY OF PLEADINGS 1

A. The Declaratory Relief Claim IB. The Trademark Infringement Claim: Actual And/Or Reverse7 Confusion 2

8 II. SUMMARY OF ARGUMENT 29 III. STATEMENT OF FACTS ...... 4lOA. Madonna Created The "Material Girl" Trademark And Good Will

With The Release In 1985 Of The Famous Hit Song And MTV11 Video, And By Using The Trademark For The Sale of Clothing12 Since 1985 413 B. L.A. Triumph Did Not File A Federal Registration For The MaterialGirl Trademark, And Its 1997 California State Registration Expired14 As A Matter of Law on August 5, 2007 5

C. Plaintiff s Predecessor OC Mercantile Co-Opted The Material GirlTrademark In The First Place And Registered And Began Using ItIn California Only In 1997 6

D. In Its California Material Girl Registration In 1997, OC MercantileMisrepresented Its Knowledge Of Madonna's Prior Uses 6E. L.A. Triumph's Material Girl Sales Were Directed Primarily To

Medical Scrubs Suppliers And The Discount Retail Market, NotDepartment Stores Like Macy's 7F. L.A. Triumph Has Done Little Or No Advertising Of Its WholesaleLine Of Material Girl Scrubs And Other Clothing 8G. In 2010, MG Icon And Macy's Launched A Major Advertising

Campaign For Its New "Material Girl" Clothing Line, WithMadonna's Endorsements, And Its Market Penetration Has BeenSignificant. 9

H. The Two Sides Are Targeting Different Markets 9I. Macy's And L.A. Triumph's Material Girl Clothing Is Sold In

Significantly Different Price Ranges 10

123

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TABLE OF CONTENTS


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3456 IV. LEGAL ARGUMENT 117 A. The Standards Governing Summary Judgment And L.A. Triumph'sBurden Of Proof. 118910

26 CONCLUSION 202728

12

111213141516171819202122232425

J.

K.

In 2009 And 2010, L.A. Triumph Sold Little Or None Of ItsMaterial Girl Product Although It Had Substantial Old And Out OfStyle Inventory 10There Has Not Been Any Actual Confusion And There Is NoEvidence Of Any Likelihood Of Confusion Due to Defendants'New And Exclusive Material Girl Line 10

B. L.A. Triumph Was Never The Senior User Of The "Material Girl"Trademark And Therefore Does Not Own The Trademark. 12L.A. Triumph Cannot Establish Common Law Rights To TheMaterial Girl Mark Because It Cannot Demonstrate SufficientMarket Penetration 13

C.

D. Even If L.A. Triumph Owns Its Material Girl Mark, MG Icon AndMacy's Uses Do Not Create Reverse Confusion 13E. The Three Pivotal Sleekcraft Factors For A Reverse Confusion CaseWeigh In Favor Of Granting Summary Judgment. 15

1. The Strength Of The Material Girl Mark 152. The Proximity Or Relatedness Of The Parties' Goods 173. Similarity Of The Marks 18(a) Macy's Material Girl Goods Are Also EasilyDistinguishable From L.A. Triumph's Goods BecauseThey All Also Carry The Macy's Name Or House Mark. 194. Lack Of Actual Confusion 195. The Parties Also Utilize Different Marketing Channels 196. Types Of Goods And Purchaser Care 207. MG Icon And Macy's Had No Intent To Adopt L.A 208. Neither Party Is Likely To Expand Into The Other Party'sMarket. 20

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1234 Federal Cases

Page(s)

5 AMF Inc. v. Sleekcraft Boats,599 F.2d 341 (9th Cir. 1979) . passim

TABLE OF AUTHORITIES

6 Celotex Corp. v. Catrett,7 477 U.S. 317 (1986) .. 11891011121314151617181920

Dreamwerks Production Group v. SKG Studio142 F.3d 1127 (9th Cir. 1998) .. 14, 15, 16Echo Drain v. Newsted,307 F.Supp.2d 1116 (C.D. Cal. 2003) 13, 17Glow Industries, Inc. v. Lopez,252 F.Supp.2d 962 (C.D. Cal. 2002) 11, 15GoTo.com Inc. v. Walt Disney Company,202 F.3d 1199 (9th Cir. 2000) .. .. 16Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc.,952 F.Supp. 1084 (D.N.I. 1997) 17i.B. Williams Co. v. Le Conte Operations, Inc.523 F.2d 187 (9th Cir. 1995) .. 17M2 Software, Inc. v. M2 Communications, L.L. C.281 F.Supp.2d 1166 (2003 C.D. Cal.) 14, 16Matrix Motor Co. v. Toyota,290 F.Supp.2d 1083 (C.D. Cal. 2003) passim

21 Moose Creek, Inc. vs. Abercrombie & Fitch Co.331 F.Supp.2d 1214 (C.D. Cal. 2004) 14, 15, 1922 Nissan Motor Co. v. Nissan Computer Corp.,23 204 F.R.D. 460 (C.D.Cal. 2001) 1124 Optimal Pets, Inc. v. Nutri- Vet, LLC25 2010 WL 2305843 (C.D. Cal. 2010) 12, 1326 Sony Pictures Entm 't, Inc. v. Fireworks Entm 't Group, Inc.,156 F.Supp.2d 1148 (C.D. Cal. 2001) 1127 Trovan Ltd vs. Pfizer28 2000 WL 709149 (C.D. Cal. 2000) 17

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IV

1 Federal Statutes234

Fed.R.Civ.P. 56(e) .. 11

5678910111213141516171819202122232425262728


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I. SUMMARY OF PLEADINGS

123 Plaintiff L.A. Triumph, Inc. ("L.A. Triumph") cannot establish the fundamental4"first use" required for any trademark infringement action. Madonna is the "Material5 Girl," and she was the first user starting in 1985, including in Class 025 clothing.

6 Therefore, L.A. Triumph does not, and never did, own the Material Girl trademark, and7 the Court should grant defendants MG Icon, LLC, formerly known as Material Girl8 Brand, LLC ("MG Icon"), and Macy's Retail Holdings, Inc. ("Macy's") motion for9 summary judgment.10 If there is a material issue of fact as to L.A. Triumph's first use or ownership of the11 mark, the Court should still grant summary judgment because under the three "pivotal"12 reverse confusion factors, or even considering all eight Sleekcraft factors, there are no13 real disputes as to any material facts. As a matter of law, no reasonable jury could find14 for L.A. Triumph because there is no evidence of actual or likely confusion to the public15 due to the parties' separate and diverse uses of the Material Girl mark. The Court should16 grant this motion in its entirety and enter judgment for MG Icon and Macy's.171819202122232425262728

MEMORANDUM OF POINTS AND AUTHORITIESINTRODUCTION

L.A. Triumph has plead two claims for relief in its First Amended Complaint inthis action arising out of defendants' use of the trademark "Material Girl" in 2010 for anew line of women's juniors' clothing endorsed by Madonna and sold exclusively atMacy's,A. The Declaratory Relief Claim.

In its first claim for relief, L.A. Triumph seeks a declaratory judgment that (a) L.A.Triumph is the rightful owner of the trademark "Material Girl" with respect toInternational Class 025 clothing, (b) that defendants have no right to use, advertise or sellclothing under the "Material Girl" brand, and (c) for an order to deny defendant MGIcon, LLC's ("MG Icon") application to register the "Material Girl" trademark with theUnited States Patent and Trademark Office. First Amended Complaint ("FAC"), ~ 25;1


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1 Prayer For Relief j l , 2, 3. I2B. The Trademark Infringement Claim: Actual And/Or Reverse Confusion.3

4In 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 and5 reverse confusion grounds: (1) defendants' conduct "has actually confused and is likely6 to confuse the public and cause deception," or (2) MG Icon and Macy's conduct789

constitutes reverse confusion because their "commercial advertising and promotionmisrepresents an ongoing association with [L.A. Triumph] and owing to the InfringingDefendants' size and resources threatens to overwhelm the market and crowd out the

10 senior user." FAC,-r 30.11 II. SUMMARY OF ARGUMENT1213 trademark infringement action -- "first use," i.e., that L.A. Triumph is in fact the senior14

L.A. Triumph cannot established the first fundamental requirement for any

user and owner of the Material Girl mark. For this simple reason alone, this motion for15 summary judgment should be granted in its entirety.16 Second, even if there is somehow a material question of fact as to first use, and17 there is not, the Court should still grant summary judgment. There is no evidence of1819202122232425262728

actual confusion. This is instead primarily a "reverse confusion" case, where theallegedly senior user L.A. Triumph is claiming that the junior users MG Icon andMacy' s' 2010 advertising campaign and sales efforts threaten to "overwhelm" anddamage the senior user's rights and market position.

This case is, however, in another way factually unique -- it is, if you will, a"reverse" reverse confusion case because the alleged senior user L.A. Triumph is in factnot the senior user, but a junior user itself, i.e., L.A. Triumph in 1997 adopted and took

IDefendants' 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, MGIcon filed a Motion to Suspend Civil Action. L.A. Triumph did not file an opposition. On November 17, 2010, theTrademark Trial and Appeal Board suspended the proceeding pending final disposition of this civil action between the~~. 2


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1 advantage of the prior twelve years of Material Girl notoriety and uses cultivated by2 Madonna or her related merchandising entities. The relevant chronology is as follows:3 1. Madonna, the "Material Girl" herself, was indisputably the first and senior4user: in 1985, she released both the hit song and famous MTV video portraying her5 indelible "Material Girl" image. Defendants' Separate Statement of Uncontroverted6 Facts ("UF") 31-33.7 2. Between 1985 and L.A. Triumph's first use on January 15,1997, Madonna8 featured her Material Girl image and song on three world tours, in six videos, and two9 movies, and her costumes, clothing and staging were always a major part of the films and10 shows. The anthem-like Material Girl song was also included by Madonna on the wildly

11 successful 1990 greatest hits compilation The Immaculate Collection. UF 34-38.12 3. Between 1985 and L.A. Triumph's first use on January 15, 1997, Madonna's13 merchandising companies each year also sold significant amounts of Material Girl14 clothing, not just at concerts, but in department stores, record stores, specialty clothing15 stores, and gift shops. UF 39-43.16 4. Twelve years after Madonna created the Material Girl image and persona,17 OC Mercantile on August 5, 1997 registered the Material Girl mark in California only,18 wrongfully ignoring Madonna's prior uses, and began selling its branded clothing19 wholesale to medical scrub suppliers and discount retailers. UF 1-17.20 5. Madonna, of course, as she did from 1985 to 1997, steadily kept using the21 Material Girl name and trademark from 1997 to date, including by continuing to sell22 millions of dollars of Material Girl clothing and other goods. UF 39-47.23 6. On March 9,2010, defendant MG Icon acquired Madonna's trademark24 rights to the Material Girl mark, and entered into an agreement to release a Madonna-25 endorsed Material Girl clothing line exclusively through Macy's. UF 18-26. Macy's26 first sales occurred in early August 2010. UF 27.27 7. On August 19,2010, L.A. Triumph filed this action for trademark28 infringement against Madonna personally, ~G Icon, and later added Macy's, based onNOTICE OF MOTION AND MOTION FOR SUMMARY JUDGMENT OR SUMMARYADJUDICATION OF ISSUES; MEMORANDUM OF POINTS AND AUTHORITIES

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1 alleged common law trademark rights because plaintiff never filed a federal registration,2 and its 1997 California state registration for Material Girl had expired three years earlier3 on August 5,2007,4

In these circumstances, L.A. Triumph cannot meet its fundamental burden of proof5 to show first use or ownership of a valid trademark. Madonna was indisputably the first6 user of Material Girl. No reasonable jury could find otherwise, This trademark7 infringement action is meritless, and this motion for summary judgment should be8 granted in its entirety and the case dismissed with prejudice,910 III. STATEMENT OF FACTSMadonna Created The "Material Girl" Trademark And Good Will With The

Release In 1985 Of The Famous Hit Song And MTV Video, And By Using TheTrademark For The Sale of Clothing Since 1985.In the mid-1980s, Madonna released the hit single "Material Girl" from her second

14 and break-out album "Like A Virgin," UF 31. Madonna also performed in and released15 the ground breaking MTV video, also entitled "Material Girl," in which she evoked16 Marilyn Monroe's "Diamonds are a Girl's Best Friend" image from the 1958 movie17 "Gentlemen Prefer Blondes," UF 32-33. Madonna has over the last 25 years made18 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 born20 before the mid-1980s likely knows of Defendant and the song.,,2 Order Granting21 Defendant's Motion To Dismiss, p, 9, fn, 5 (Doc, 27), Indeed, Madonna has worked hard22 over the years to cultivate her image on the cutting edge of fashion - stylish, hip, avant23 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 certainly25 Madonna. As a result of the Material Girl success and notoriety, Madonna and her26 merchandising companies have sold about $85 million of merchandise, including2728

A.111213

2 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 DismissAnd Setting Status Conference (Doc. 27). 4


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5

In 2007, Madonna entered into a landmark, reportedly $120 million deal, for LiveNation Entertainment, Inc. to take over and manage her music career. UF 45. Yet,5 Madonna was careful to carve out of the Live Nation deal any rights to use the Material

6 Girl name, including, with respect to clothing and fashion. UF 46. Having kept those7 rights, Madonna, with her 13-year-old daughter, Lourdes, decided in late 2009 and 20108 to participate in designing and developing a new line of juniors' women clothing called9 Material Girl. UF 23-26. To do so, MG Icon, a company owned by Purim, LLC, which10 is partially owned by Madonna, entered into an agreement with Macy's for Macy's to be11 the exclusive retailer for the new Material Girl line of clothing. UF 18-25.12 B. L.A. Triumph Did Not File A Federal Registration For The Material Girl13 Trademark, And Its 1997 California State Registration Expired As A Matter14 of Law on August 5, 2007.15 MG Icon, of course, did its own trademark due diligence before launching the new16 Material Girl line of clothing. A federal search disclosed two Material Girl federal17 registrations: (1) on February 6, 1994, Les Ventes Universelles had registered Material18 Girl (UF 5,6), and (2) on November 3,2005, Rwachsberg Holdings Inc. Company19 Canada had registered the name Material Girls (UF 14). There was no federal20 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, 199722 Material Girl registration by OC Mercantile (OF 7), and (2) the October 28, 200323 assignment by OC Mercantile to Hasina Lakhani (UF 13). That 1997 California2425262728

1 women's shirts, camisoles, pants, etc., in the United States and overseas, of which 10% to2 20% bears the "Material Girl" trademark. OF 39-41.34

registration, however, had expired as a matter of law on August 5, 2007, i.e., ten yearsafter 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 2003assignee Hasina Lakhani, and no one had any actual knowledge of any of their uses ofthe Material Girl mark. UF 28. Moreover, the name L.A. Triumph did not appear in


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On March 9,2010, Purim, MG Icon, Iconix, and Macy's finalized and signed their

678910111213141516171819 2010.20 D. In Its California Material Girl Registration In 1997,OC Mercantile

Misrepresented Its KnowledgeOfMadonna's Prior Uses.21 Hafiz Lakhani, 19 years old in 1997, knew about Madonna: "Yeah, 1mean, 122 wasn't living under a rock. Of course I did." UF 50. He was also familiar with the term23 Material Girl, as well as Madonna's song. UF 51-54. He even knew the chorus: "A24 material girl in a material world." UF 53. And he knew the term Material Girl referred25 to teens and young girls. UF 55. He chose Material Girl for his label because it had a26

123 respective agreements, and on March 10,2010 a press release was issued announcing the4deal, and the plans to launch later that summer the new Material Girl clothing line5 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

either the state or federal Material Girl trademark searches.

communication or warning, L.A. Triumph to the defendants' surprise filed its originalcomplaint in this action, even naming Madonna in her individual capacity.C. Plaintiff's Predecessor OCMercantile Co-Opted The Material GirlTrademark 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, registeredthe Material Girl trademark for Class 025 clothing uses on August 9, 1997 with theCalifornia Secretary of State only. UF 7. DC Mercantile claimed a first use date forMaterial Girl of January 15, 1997. UF 8. DC Mercantile's 1997 California registrationas a matter of law lasted 10 years, but its assignee Hasina Lakhani andlor L.A. Triumphfailed 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,

double meaning: girls that were materialistic, and the word "material" was a fabric. UF27 56. Yet, Hafiz Lakhani claims that he did not make the connection between Madonna's28 Material Girl image and his choice of Material Girl for his clothing line: "1 guess 1didn't6


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1 think about that, you know." UF 9.23 In registering the Material Girl name, however, OC Mercantile made materiallyfalse representations to the California Secretary of State. First, OC Mercantile4represented that the date the Material Girl trademark was first used in California or5 "anywhere" was January 15, 1997. UF 8-10. Second, OC Mercantile's president, Hafiz

6 Lakhani, who is also the current Vice-President of L.A. Triumph, also signed the7 required "Declaration of Ownership" on the California application stating as follows:8 "Declaration of Ownership9 Applicant herewith declares that he/she has read the above and10 foregoing application and knows the contents thereof and that the facts setout herein are true and correct and that the three specimens of the mark11 submitted are true and correct, and to his/her best knowledge and belief noother 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 theretoas might be calculated to deceive or confuse." UF 10.This representation, as well as the January 15, 1997 "first use anywhere"

15 representation, were obviously not true. Madonna or her related entities had already been16 using the Material Girl name for 12 years in California and elsewhere, and OC17 Mercantile was obviously trying to take advantage of that notoriety, and trying to confuse18 or deceive the public into believing that its Material Girl discount clothing line was19 related to, or endorsed by, Madonna.20 E. L.A. Triumph's Material Girl Sales Were Directed Primarily To Medical21 Scrubs Suppliers And The Discount Retail Market, Not Department Stores

Like Macy's.222324

121314

Starting in 1997, L.A. Triumph's predecessor OC Mercantile used the MaterialGirl mark to sell medical scrub tops and drawstring pants to doctors and nurses inconnection with the Lakhani family's already established wholesale medical scrub and

25 clothing business called Med Gear. UF 59-61. OC Mercantile also designed and sold26 "fashion" juniors' clothing under the Material Girl label mostly to discount retailers like27 Ross "Dress For Less" Stores, Big Lots, and Beall's Outlets. UF 62. Plaintiff also28 sporadically sold its Material Girl clothing t


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12 L.A. Triumph is a wholesaler; it does not sell its Material Girl clothing in retail3 stores. UF 67. L.A. Triumph has never successfully sold its Material Girl clothing to4

department stores like Macy's. UF 98, 99. Moreover, L.A. Triumph does not intend to5 sell to department stores. UF 100.6 L.A. Triumph's business plan has always been to offer low prices for high volume7 sales. UF 101-103, 107, 108. In the last five years, L.A. Triumph also sold through four8 retail stores, all called "Scrubs and More," owned by another related company,9 Professional Apparel Corporation (HPAC"). UF 63. Three of those PAC stores are now10 closed or sold. UF 64, 65. The only remaining PAC retail store, now called "Med Gear11 and More," is in the same Cerritos industrial center where L.A. Triumph's operations are12 currently located. UF 66, 67. In other words, L.A. Triumph has established a "niche"13 market, and its sales are almost exclusively wholesale to medical scrub suppliers or14 discount retail chains in California like Ross "Dress for Less" Stores. UF 92, 94.15 L.A. Triumph's business model -- and it is proven and very successful according to16 its president Amin Lakhani -- is to provide quality products at the lowest prices, i.e., as17 much as half or three-quarters less than others. UF 96, 101-104. L.A. Triumph does not18 believe it has any real competitors who can match its prices or quality. UF 95-97, 101. It19 only worries about selling, not competing. UF 97.20 F. L.A. Triumph Has Done Little Or No Advertising Of Its Wholesale Line Of21 Material Girl Scrubs And Other Clothing.22 OC Mercantile and L.A. Triumph have done little or no advertising over the years.23 UF 68. Its promotions in the last five years have been limited to occasionally sending out24 "line sheets" for Material Girl scrubs or other apparel which were inserted into the Med25 Gear scrubs catalog or e-mailed to existing customers. UF 69, 70.26 Consistent with L.A. Triumph letting its California trademark registration expire in27 2007, L.A. Triumph's last purchase of Material Girl goods or inventory was in 2008. It28 has since stopped buying Material Girl product. UF 83. On March 10,2011, when

8

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9

1 Macy's and MG Icon announced their Material Girl project, L.A. Triumph was in the2 process of selling off its year or more old Material Girl inventory at a substantial loss.34 UF 84-88.

G. In 2010,MG Icon And Macy's Launched AMajor Advertising Campaign For5 Its New "Material Girl" ClothingLine, With Madonna's Endorsements, And6 Its Market Penetration Has Been Significant.7 Since the March 10,2010 announcement, Macy's has spent a significant amount of8 money on advertising for the "Material Girl" line, including print advertising, in-store9 promotions, digital advertising, and cinema advertising promoting the new line which is10 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 $6812 per item. UF 90, 91.13 In all of Macy' s Material Girl advertising, Macy's is specifically identified as the14 "only" or "exclusive" retailer, and Macy's is mentioned prominently in the15 advertisements, expressly coupled with Madonna's endorsement and the Material Girl16 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. The Two SidesAre Targeting DifferentMarkets.19 L.A. Triumph has purposely and strategically established a "niche" market selling20 to medical supply companies as well as discount retailers. UF 92. Macy's and MG Icon21 are certainly not targeting or selling to the medical apparel market, and have no intention22 to expand into that niche marketing segment. L.A. Triumph similarly has not, and is not23 intending to, target department stores like Macy's. UF 99-100. Indeed, L.A. Triumph's24 target retail market for the last 13 years has been discount stores such as Ross "Dress for25 Less" Stores and Beall's Outlets where its Material Girl products are sold at low prices to26 more price-conscious customers.2728


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1 I. Macy's And L.A. Triumph's Material Girl Clothing Is Sold In Significantly2 Different Price Ranges.3 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 and7 successfully branded its Material Girl product in the discount retail market. UF 107.8 J. 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.9 L.A. Triumph had essentially stopped buying Material Girl clothing from its10 manufacturers in the two years before the Macy's announcement on March 10,2010. UF11 80-83, 88, 89. On March 15,2010, less than a week after the MG Icon and Macy's12 launch, L.A. Triumph even "cleared out" some of its existing Material Girl inventory by13141516 84, 85. In other words, it was an inventory dump -- a "clear-out," a "special deal" --17181920212223

selling $19,665 of velour pants to its ex-customer Ross Stores. UF 84-87. That producthad been in L.A. Triumph's inventory for well over a year. Moreover, L.A. Triumphmade the sale to Ross Stores at $2.50 per unit which is $1.90 below its $4.40 cost. UF

apparently hastily orchestrated in response to defendants' March 10, 2010 press releaseregarding its Material Girl launch, and made to try to reestablish whatever rightsL.A. Triumph might have had to the Material Girl trademark. UF 87.K. There Has Not Been Any Actual Confusion And There Is No Evidence Of Any

Likelihood Of Confusion Due to Defendants' New And Exclusive MaterialGirl Line.There is no evidence of actual confusion. Since MG Icon and Macy's released

24 their Material Girl line, no actual or potential L.A. Triumph customer has expressed any25 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 Madonna-27 endorsed clothing line. UF 71-73. Similarly, no Macy's customer has mentioned or28 asked questions about L.A. Triumph's discount line of Material Girl clothing. UF 74-76.


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1 There is simply no evidence of actual or likely confusion between the new Macy's and2 mostly defunct L.A. Triumph clothing lines. To the contrary, the only evidence of3 confusion works against L.A. Triumph -- L.A. Triumph's customers have in the past, not4surprisingly, asked about a connection between L.A. Triumph's use of the Material Girl5 name and Madonna. UF 71.6

7IV. LEGAL ARGUMENT

A. The Standards Governing Summary Judgment And L.A. Triumph's Burden8 Of Proof.9 Under Rule 56(c) of the Federal Rules of Civil Procedure, summary judgment is10 appropriate where there is "no genuine issue of material fact and that the moving party is11 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 trademark13 infringement and unfair competition. Nissan Motor Co. v. Nissan Computer Corp., 20414 F.R.D. 460,466 (C.D. Cal. 2001). In addition, since L.A. Triumph never applied for a15 federal registration, and its ten year California registration expired in 2007, L.A. Triumph16 is not entitled to any presumption of ownership, and it is L.A. Triumph's burden to prove17 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 need20 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 by22 'showing' - that is, pointing out to the district court - that there is an absence of evidence23 to support the nonmoving party's case." Sony Pictures Entm 't, Inc. v. Fireworks24 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 party26 opposing such a motion "must set forth specific facts showing that there is a genuine27 issue for trial.:" Sony Pictures, 156 F.Supp.2d at 1152.28


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12 Here, it is L.A. Triumph's burden of proof to establish (a) that it was the first orsenior user of the Material Girl trademark, and (b) that defendants have infringed on L.A.3 Triumph's mark. L.A. Triumph obviously cannot do so because Madonna and her4

merchandising companies were using the Material Girl trademark, including for Class56789101112

025 clothing, since 1985, and L.A. Triumph, just as obviously, latched on and tookadvantage of Madonna's prior uses and notoriety when it started its Material Girl medicalscrubs and discount clothing line in 1997.B. L.A. Triumph Was Never The Senior User Of The "Material Girl"Trademark And Therefore Does Not Own The Trademark.

In Matrix Motor Co. v. Toyota, 290 F.Supp.2d 1083, 1088 (C.D. Cal. 2003), theCourt granted defendant Toyota's motion for summary judgment in a reverse confusioncase 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 was14 no likelihood of confusion.151617181920

To prevail on a claim for trademark infringement, a plaintiff must firstestablish that it owns a valid trademark. Trademark ownership is notacquired by federal or state registration. Ownership rights flow only fromprior use in the market. ...

The use of the mark must be "sufficiently public" that the markedgoods are "identified or distinguish[ ed] ... in an appropriate segment of thepublic mind as those of [the adopter of the mark].

Id. at 1088 (citations omitted).21 Here, L.A. Triumph cannot do so. It cannot meet its fundamental burden of proof22 to establish first use or ownership of the Material Girl trademark. It is undisputed that232425262728

Madonna was the first user, and her uses included the continuous sales of millions ofdollars 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 orreverse confusion issues discussed below.


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1 C. L.A. Triumph Cannot Establish Common Law Rights To The Material Girl2 Mark Because It Cannot Demonstrate Sufficient Market Penetration.3 L.A. Triumph does not have sufficient market penetration to claim common law4 trademark rights senior to MG Icon and Macy's. In Optimal Pets, Inc. v. Nutri-Vet, LLC567891011121314

2010 WL 2305843 (C.D. Cal. 2010), the Court considered the necessary marketpenetration for an unregistered "niche market" common law trademark infringementclaim:

A plaintiff asserting common law ownership rights in a trademarkmust establish (1) that it is the senior use of the mark and (2) legallysufficient market penetration in a certain geographic area to establishownership rights. Credit One Corp. v. Credit One Financial, Inc., 661F.Supp.2d 1134, 1138 (C.D. Cal. 2009) (citing Glow Industries, 252F.Supp.2d at 983).

The Ninth Circuit has identified the following factors to determine theextent of market penetration: (1) volume of sales; (2) growth trends; (3) thenumber of people who purchased the party's goods in relation to the numberof potential customers; and (4) the amount of advertising. Adray v. Adry-Mart, 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. Even If L.A. Triumph Owns Its Material Girl Mark, MG Icon And Macy's26 Uses Do Not Create Reverse Confusion.2728

"The key question in reverse confusion cases is whether consumers who encounterthe senior user's products will believe that they are associated with the junior user. Echo


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1 Drain v. Newsted, 307 F.Supp.2d 1116 (C.D. Cal. 2003) (granting summary judgment for2 defendants in reverse confusion case). "In order to succeed on a trademark infringement3 claim involving reverse confusion, the plaintiff must prove that: (1) he is the senior user;4(2) of a valid trademark; (3) which the defendant is using in a way that is likely to5 confuse the plaintiffs customers into believing that they are dealing with the defendant."6 Moose Creek, Inc. vs. Abercrombie & Fitch Co. 331 F.Supp.2d 1214,1221 (C.D. Cal.7 2004). To defeat a summary judgment motion, "Plaintiff must 'create a genuine issue

8 that confusion is probable, not simply a possibility. m M2 Software, Inc. v. M291011 Production Group v. SKG Studio 142 F.3d 1127, 1129-1130 (9th Cir. 1998), Justice1213141516171819202122232425262728

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

Kozinski summarized the likelihood of confusion factors, and differentiated the usualdirect or "palming off' trademark infringement action from a "reverse confusion" case asfollows:

The test for likelihood of confusion is whether a "reasonably prudentconsumer" in the marketplace is likely to be confused as to the origin of thegood 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 eightfactors to facilitate the inquiry: (1) strength of the mark; (2) proximity orrelatedness of the goods; (3) similarity of sight, sound and meaning;(4) evidence of actual confusion; (5) marketing channels; (6) type of goodsand purchaser care; (7) intent; and (8) likelihood of expansion. The factorsshould not be rigidly weighed; we do not count beans. "Rather, the factorsare intended to guide the court in assessing the basic question of likelihoodof confusion." Gallo Winery, 967 F.2d at 1290.

In the usual infringement case, these factors are applied to determinewhether the junior user is palming off its products as those of the senioruser. Would a consumer who finds a running shoe marked Mike bebamboozled into thinking that it was manufactured by Nike? In a reverseinfringement case, like ours, there is no question of palming off, sinceneither junior nor senior user wishes to siphon off the other's goodwill. Thequestion in such cases is whether consumers doing business with the senioruser might mistakenly believe that they are dealing with the junior user.


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123Id. 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 InFavor 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 of13 purchasers, and at different price points. The trademarks themselves are similar in the14 sense that the words Material Girl are obviously identical, but the sound (Madonna15 evokes the lyrics, music and her Material Girl image), and certainly the meanings, are not16 similar. The three main reverse confusion factors indicate little or no confusion to the

1819

17 public, and summary judgment should be granted for defendants.1. The Strength Of The Material Girl Mark.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 thepublic mind with the mark's owner, the greater protection the mark isaccorded by trademark law." [Citation omitted.] In reverse confusion cases,courts evaluate the conceptual strength of the senior user's mark and23 compare it to the commercial strength of the junior user's mark." Glow

24 Industries, Inc. v. Lopez, 252 F.Supp.2d 962, 987 n. 112 (C.D.Ca12002).25 Moose Creek, 331 F.Supp.2d at 1224.262728

202122

"To determine a mark's strength, it is classified in one of the following fourgroups, 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.


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12345678910111213141516171819202122232425262728

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 trademarkprotection for Madonna, not L.A. Triumph. If the trademark is fanciful or arbitrary, "thetrademark holder must work hard to make consumers associate the trademark with theproduct. This suggests that any association is the result of goodwill and deserves broadprotection 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 hardover the last 25 years to make and keep consumers aware of her fashion sensibility andimage. There is no doubt that the public associates the Material Girl mark withMadonna, and today with her 2010 endorsed MG Icon and Macy's Material Girlproducts.

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 caseinvolving two companies in the music business. Since M2 was an arbitrary or fancifulterm, the plaintiff senior user argued that the M2 mark was as a matter of law inherentlystrong so the strength inquiry should end there. However, the court disagreed becausethe strength of a mark is evaluated not just in terms of its conceptual strength but also itscommercial strength. M2 Software, 281 F.Supp.2d at 1170, citing GoTo.com Inc. v. WaltDisney Company, 202 F.3d 1199, 1207 (9th Cir. 2000). While the M2 mark was indeedarbitrary or fanciful, plaintiff s marketing efforts, advertising and sales of its specializedcomputer products was extremely limited, so the commercial strength of the otherwisestrong 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 ofconfusion 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 toits specialized medical gear and supply cust9lPers, a few discount retail stores, and a


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1 handful of "Mom and Pop" beachwear stores. L.A. Triumph is also not entitled to any2 credit for selecting the fanciful Material Girl mark because it was already established inthe public's mind, and L.A. Triumph has done little or nothing to make it moremeaningful or valuable in any commercial sense. Therefore, the strength of the markfactor does not help L.A. Triumph, and in fact weighs heavily in favor of defendants.

2. The Proximity Or Relatedness Of The Parties' Goods.

345678910 WL 709149 at * 18, (C.D. Cal. 2000), citing J.B. Williams Co. v. Le Conte Operations,11 Inc. 523 F.2d 187, 190-193 (9th Cir. 1995).12 "When two products or services fall within the same general field, it does not mean13 that the two products or services are sufficiently similar to create a likelihood of14 confusion." Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc., 95215 F.Supp. 1084, 1095 (D.N.J. 1997); Echo Drain, 307 F.Supp.2d at 1125. As explained in16 Matrix, 290 F.Supp.2d at 1092:17

Proximity of the parties' goods exists where they are(1) complementary, (2) sold to the same class of purchasers, or (3) aresimilar 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 norpromoted together, they are not complementary. Walter v. Mattel, Inc., 31F.Supp.2d 751,759 (C.D.Cal.1998), aff'd, 210 F.3d 1108 (9th Cir. 2000).

The second of the three Sleekcraft factors to consider in a reverse confusion case isthe relatedness or proximity of the goods. "[W]here the nature of the goods isundisputed, the relatedness of the goods is a matter of law," Trovan Ltd vs. Pfizer 2000

18192021222324

* * *"Meaningful differences between the products and services areoften cited as a factor tending to negate reverse confusion, even whenthe products are superficially within the same category." HarlemWizards Entm 't Basketball, 952 F.Supp. at 1095. [Emphasis added.]25 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 i27 sold under the same mark. '" Here, while the L.A. Triumph and MG IconiMacy's28 Material Girl goods may generally be in the same broad "clothing" field, they are17


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18

2728

actually not very related at all. The goods are sold to different customers: Macy's higherend retail customers vs. L.A. Triumph's wholesales to discount retailers. They are sold atdifferent price points: Macy's $15 to $68 vs. L.A. Triumph's $2.99 to $6.99 - a 200% to900% price difference. They are directed to different target markets: Macy's is targetingthe higher end fashion conscious teen market, and L.A. Triumph is targeting nurses andyoung women primarily interested in its successful Med Gear scrubs or bargain discountstore shoppers. No one is likely to confuse the Madonna mother and daughter endorsedMaterial Girl fashions with L.A. Triumph's medical scrubs, or Ross "Dress For Less"Stores or other discounters' goods.

123456789101112 marks is tested on three levels: sight, sound, and meaning."13 In judging similarity, trademarks should be considered as they are14 encountered in the marketplace, taking into account the normal15 circumstances surrounding purchases of the type of goods the represent"

Glow Indus., 252 F.Supp.2d at 994. In addition, marks may not be16 dissected, but must be compared in their entirety. Id.17 Matrix 290 F.Supp.2d at 1093.18 Here, Material Girl is a word mark, and the words in the parties' marks are literally19 the same. The spoken word or sound of the Material Girl mark is also arguably the same20 except for one major difference: the name Material Girl triggers in many people's minds21 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 and23 Macy's uses of the Material Girl mark -- complete with Madonna's personal endorsement24 -- are obviously easily distinguishable by the public, including the target women's25 juniors' market, as opposed to L.A. Triumph's primarily professional oriented medical26 scrub uses and its wholesale discount store customers.

3. SimilarityOf The Marks: Sight,SoundAndMeaning.As the Ninth Circuit explained in Sleekcraft, 599 F.2d at 351: "Similarity of the


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1 (a)23 "[Tjhe use of a house mark (i.e., the famous TOYOTA mark) also may reduce or4 eliminate likelihood of confusion. Cohn, 281 F.3d at 842 (9th Cir. 2002); see also5 Walter, 31 F.Supp.2d at 760 (stating that "[o]therwise similar marks are not likely to be6 confused where used in conjunction with the clearly displayed name and/or logo of the7 manufacturer")." Matrix, 290 F.Supp.2d at 1093.8 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 at11 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 exclusive13 distributor ofMG Icon's Material Girl products, and the Macy's mark and name appears14 in all advertisements.15 4. Lack Of Actual Confusion.16 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 reverse18 confusion cases, "[tjhe Ninth Circuit has held that 'lack of evidence about actual19 confusion after an ample opportunity for confusion can be a powerful indication that the20 junior trademark does not cause a meaningful likelihood of confusion." Matrix, 29021 F.Supp. at 2d at 1093 (citation omitted).22 5. The Parties Also Utilize Different Marketing Channels.23 As explained inMatrix, 290 F.Supp.2d at 1095: "Advertising, the existence of24 direct competition, and retail distribution are considered when addressing whether the25 parties use similar marketing channels. [Citation omitted]. A finding that the parties26 advertise or distribute their products differently indicates a lesser likelihood of27 confusion." As set forth above, MG Icon and Macy's advertise while L.A. Triumph does28


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1 not. The parties also do not directly compete, and the retail distribution and marketing2 channels are entirely different.3 6. Types Of Goods And Purchaser Care.456

Here, L.A. Triumph's wholesale buyers have the expertise to easily differentiateL.A. Triumph's Material Girl scrubs and discount clothing from MG Icon and Macy'shigher end, Madonna-endorsed, Material Girl products aimed at the fashion conscious7 youth market.

8 7. MG Icon And Macy's Had No Intent To Adopt L.A. Triumph's Mark.9 MG Icon and Macy's had no knowledge of, or intent to, adopt L.A. Triumph's10 mark. On the other hand, L.A. Triumph just as obviously had knowledge of Madonna's11 prior Material Girl uses, and intended to adopt and take advantage of Madonna's prior12 uses and did so.

CONCLUSIONThe Court should grant defendants' motion for summary judgment. Alternatively,

the Court should grant summary adjudication on the Lanham Act claim and/or rule thatthere has been no actual andlor reverse confusion.Dated: June 27, 2011 GREENBERG TRAURIG, LLP

By: -:----!..!/s~/-==G::...::e::;:::o:::_.:rg:..::e::._:::M~. B===-e!::.!l;J.:.fi:!::!el~d:....- _George M. BelfieldAttorneys for DefendantsMADONNA LOUISE VERONICA CICCONE,MG ICON, LLC AND MACY'S RETAILHOLDINGS, INC.


l.a. triumph v. madonna (c.d. cal. 2011) (madonna's memo of law in support of motion for summary...

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