Girls Gone Wild: Trademark Infringement or Publicity Stunt?

By: Donna Ray Berkelhammer. This was posted Monday, February 6th, 2012

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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.), 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 strong suspicion is that the purpose behind the cease and desist letter is more GGW owner Joe Francis “goes wild” for free publicity than a legitimate trademark dispute.

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Comments:

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    Posted by: Man Keltz | March 20th, 2012 at 10:41 pm
     
  • I’m with you on this one.

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  • Everything you say is wrong. It doesn’t matter whether the accused’s use is of a trademark, only whether the plaintiff has a trademark and whether there is confusion. If I have a nationwide program teaching an exercise program with the trademark “Exerspecial,” I could most certainly state a claim against a book about exercising entitled “Exerspecial.” You have latched onto what already is an oddity of trademark law, the non-registrability of single titles, and somehow extended that into a theory of complete non-liability that is utterly wrong.

    “Co-existence” isn’t an independent question. If one is creating confusion, the fact that the goods are wildly different doesn’t mean that there can’t be confusion per se. See above example with exercise classes and a book. Or STAR WARS for movies and toys. Or MOBIL for gas station and credit cards.

    You have no idea whether the Madonna song is entitled to the same defenses as Barbie Girl. Is the Madonna song a parody? The court in the Barbie Girl case never said, nor is it the law, that there is a blanket entitlement to use a trademark in a song title. Look at Rogers v. Grimaldi for one standard; there are others. There is no categorical rule that song titles are protected under the First Amendment.

    And the Ludacris song is hardly a silver bullet. A trademark owner does not have to go after every infringement. Perhaps the Ludacris song had a better parody defense, or less likely to be confused than the Madonna song, so the trademark owner elected not to pursue it. You have no idea what the facts are other than they had the same title.

    I have no relationship to the case and could care less, but you do a disservice to your clients when you claim you know trademark law.

    Posted by: Anonymous | February 9th, 2012 at 11:18 pm
     
  • [...] latest song title prompted a good article on trademark law by one of my colleagues in North Carolina, Donna Berkelhammer.  As you will see, [...]

    Posted by: Girls Gone Wild: Trademark Style! | Jeff Geiger Counters | February 6th, 2012 at 11:44 am
     

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