Adult fun, childish threats: Wild allegations of trade mark infringement

As some readers will know, this Kat is a fan of Madonna's music and is looking forward to hearing her new album MDNA. She was rather surprised then to read about a tale involving Madonna, her unreleased single called 'Girls Gone Wild', an adult film company called 'Girls Gone Wild' and this year's Super Bowl.

Mr Joe Francis founded Girls Gone Wild Brands LLC, a company which produces the Girls Gone Wild series. The description of the company website in a Google search reads 'Girls Gone Wild is home to some of the hottest girls in Aamerica. Get a sneak peek at our free videos that feature naked girls gone wild'. Francis, through his company GGW Marketing LLC, owns the registered trade mark GIRLS GONE WILD in the US in for services in Class 41. The specification for this mark reads:

'Entertainment services, namely, providing a web site featuring adult entertainment, adult content videos, related film clips, photographs, and other multimedia materials, featuring adult entertainment, webcasts in the field of adult entertainment, events, namely, promotional parties for various venues and vendors'.

Madonna needs very little introduction. She is due to release her 12th studio album MDNA in March 2012 before embarking on a world tour. One of the songs on MDNA is called 'Girls Gone Wild'. To promote her album, Madonna agreed to perform at the halftime show at Super Bowl XLVI on 5 February 2012. There were rumours that she would perform 'Girls Gone Wild' (these rumours were later squashed, before the show, by one of Madonna's representatives who said that the song was not part of her set).

On 3 February 2012, Francis sent a cease and desist letter to Madonna and 'her co-conspirators' (ie NBC and the National Football League), threatening to take action if Madonna sang 'Girls Gone Wild' at the Super Bowl or included it as a song title in MDNA. Here is an excerpt from the letter:

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 ...

Given that such violations are willful, Madonna and her co-conspirators may well be liable for profits derived from her unlawful use of the Girls Gone Wild trademark, for actual damages, enhanced damages, and attorney’s fees.

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. Nonetheless, costly and extensive litigation may be avoided if Madonna and each of her co-conspirators immediately agree to the following: (1) cease and desist all use of Girls Gone Wild trade identity and trademark; (2) account for the number of times Madonna and her co-conspirators have utilized the phrase Girls Gone Wild representing a violation of my clients’ trade identity and trademark; (3) negotiate an immediate licensing agreement for use of the Trademark; (4) agree to pay Mr Francis’ attorney’s fees associated with this matter; and (5) agree that Madonna shall not perform or market the song at the Super Bowl this Sunday. We look forward to receiving your response no later than 5:00pm February 3, 2012.

The IPKat thinks that this is all starting to sound a little familiar. First, he thought that the purpose of a trade mark was to differentiate the origin of goods and services in the marketplace: having a registration in Class 41 for GIRLS GONE WILD did not grant GWW Marketing LLC or Francis the exclusive right to GIRLS GONE WILD in every context. Secondly, he remembers that there was a US case between Mattel, the manufacturer of Barbie toys, and MCA Records concerning the song 'Barbie Girl' by Danish group Aqua: Mattel, Inc v MCA Records, Inc, 296 F.3d 894 (9th Cir. 2002). In that case, he recalls that the Ninth Circuit held that the song title 'Barbie Girl' did not infringe or dilute Mattel's trade mark.

Merpel suspects that the situation is actually the reverse: Francis is attempting to have a 'free ride' and 'go wild' on Madonna's popularity with this publicity stunt before one of the most popular sporting events and tours in the US. She further notes that Francis did not seem to object to Ludacris' 2006 song also called 'Girls Gone Wild' from his album Release Therapy.

Cats Gone Wild here, here and -- if you can bear it -- here
Super Bowl here and -- if you can stomach it -- here