Following an indication that Madonna would perform a track called “Girls Gone Wild” from her new CD at half time at the 2012 Superbowl, threats of proceedings were received from one Joe Francis, founder of the adult entertainment series “Girls Gone Wild.” Dr Catherine Lee reports.
Topic: Brands
Who: Madonna (the Queen of Pop) and Joe Francis (the founder of the adult entertainment company which produces the Girls Gone Wild series)
Where: United States
When: February 2012
Law stated as at: 1 March 2012
What happened:
On 3 February 2012, Mr Francis sent a cease and desist letter to Madonna alleging that she would infringe the trade mark rights in his brand Girls Gone Wild if: (a) she had a song called 'Girls Gone Wild' on her new album MDNA (due to be released on 26 March 2012); and (b) she performed the song called 'Girls Gone Wild' during her halftime show at SuperBowl XLVI (on 5 February 2012). This letter was also sent to Madonna's alleged 'co-conspirators', namely SuperBowl XLVI broadcaster NBC and SuperBowl XLVI organiser the National Football League.
An excerpt from the letter reads:
'Your attempt to “free ride” on the valuable consumer goodwill and brand recognition of my clients’ trademark constitutes, inter alia, unfair competition, and false designation of origin, trademark infringement, and trademark dilution …
My client is ready and willing to pursue legal action against Madonna and her co-conspirators for her flagrant attempt to syphon value from Girls Gone Wild trade identity'.
The letter did not specifically identify the trade marks which Mr Francis relied upon to support his allegation of trade mark infringement. However, a search of the US Patent and Trademark Office register revealed the following:
- A registered trade mark for GIRLS GONE WILD in class 41 for entertainment services in the name of Girls Gone Wild Marketing LLC;
- An abandoned trade mark for GIRLS GONE WILD in class 3 for toiletries, cosmetics and fragrances in the name of Girls Gone Wild Marketing LLC; and
- A cancelled registration for GIRLS GONE WILD in class 18 for articles made from leather and imitations of leather in the name of Girls Gone Wild Marketing LLC.
As it turned out, Madonna did not perform her song 'Girls Gone Wild' at the SuperBowl XLVI halftime show. This appears to be because song was never part of her set list rather than as a result of Mr Francis' claims. At the time of writing, 'Girls Gone Wild' is still scheduled to be the first song on MDNA and the music video was due to be filmed in mid-February 2012.
Why this matters:
This situation is very similar to the US case between Mattel, the manufacturer of Barbie toys, and MCA Records concerning the song 'Barbie Girl' by Danish pop group Aqua: Mattel, Inc v MCA Records, Inc, 296 F.3d 894 (9th Cir. 2002). Mattel alleged that the song both infringed and diluted its BARBIE trade marks.
The Ninth Circuit refused Mattel's claim of trade mark infringement on the basis that (at [17]) 'a title is designed to catch the eye and to promote the value of the underlying work. Consumers expect a title to communicate a message about the book or movie, but they do not expect it to identify the publisher or producer'. Further, the Court stated that (at [18]) 'though consumers frequently look to the title of a work to determine what it is about, they do not regard titles of artistic works in the same way as the names of ordinary commercial products'.
The Ninth Circuit also refused Mattel's claim of trade mark dilution as the song fell under the non-commercial exemption. Although the song was commercially released, the song was not purely commercial as it contained fully constitutionally protected free speech. The Court stated (at [40]) that 'MCA used Barbie's name to sell copies of the song. However … the song also lampoons the Barbie image and comments humorously on the cultural values Aqua claims she represents'.
Back to Madonna and Mr Francis … On the allegation of trade mark infringement, it is unlikely that a consumer would be confused into thinking that Mr Francis had produced a song called 'Girls Gone Wild' on Madonna's new album. On the allegation of trade mark dilution, the song has not been released yet for one to know its contents. However, Madonna would have a strong argument that her song did not dilute Mr Francis' trade mark if her lyrics provided a social commentary along the lines of 'Barbie Girl'.
Mr Francis has come under severe criticism for his actions as nothing more than a publicity stunt, namely a 'free ride' and 'go[ing] wild' on Madonna's popularity before one of the most popular sporting events and tours in the US. Indeed, Patrick Moxey, head of Ultra Records, who brought together the two Italian producers and one Canadian songwriter for Madonna's 'Girls Gone Wild' commented that 'When I looked at ASCAP [American Society of Composers, Authors and Publishers], I noticed there were approximately 50 records called 'Girls Gone Wild'. This guy just thinks too much of himself'.
