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From Intellectual Property Law Daily, April 23, 2019

Artistic use of MASTERMIND mark was protected free speech

By George Basharis, J.D.

A hip-hop musician’s use of the registered mark MASTERMIND in album name was protected by the First Amendment. The trademark owner’s suit against the musician for infringement was therefore dismissed.

A hip-hop musician’s use of the registered mark MASTERMIND in the name of an album and related tour and in song lyrics was artistic, fair use of the mark, the federal district court in Los Angeles has determined. In granting summary judgment in favor of the musician, the court determined that use of the trademark had artistic relevance to the album and that the owner failed to demonstrate that use of the MASTERMIND mark would confuse the public into thinking the musician was affiliated with the mark’s owner (Caiz v. Roberts, April 17, 2019, Lew, R.).

Hip-hop artist Raul Caiz owned a federal registration for the mark MASTERMIND for videos and sound recordings. Caiz filed suit against well-known hip-hop artist William Leonard Roberts II (aka Rick Ross aka Mastermind) and music recording and publishing companies for infringing and diluting Caiz’s registered MASTERMIND trademark. In December 2016, the district court granted the defendants’ motion for summary judgment, finding that Caiz’s mark was merely descriptive and had not acquired secondary meaning. The court also directed cancellation of the registration. Caiz appealed, and the Ninth Circuit reversed the district court’s order to cancel the registration and its finding that the mark was not distinctive.

After the case was remanded, Ross and the other defendants again moved for summary judgment, this time on the basis that their use of Caiz’s trademark was protected free speech under the First Amendment. As a preliminary matter, the court determined that the defendants had not waived their free speech argument by not asserting it as an affirmative defense in their answer to Caiz’s complaint. Ross and the other defendants pleaded fair use in their answer, and a free speech defense is considered a type of fair use defense, the court observed. In addition, Caiz was not prejudiced by the defendants’ free speech defense because the defense, if successful, would be a complete bar to Caiz’s infringement complaint, resulting in no further litigation costs to Caiz.

The court applied the Rogers test from Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) to determine if Ross’s use of the MASTERMIND mark was protected free speech. It rejected Caiz’s argument that Rogers did not apply to "reverse confusion" cases. The only threshold question, the court noted, was whether the trademark was being used in connection with an artistic or expressive work. Musical recordings, like Ross’s album, are considered expressive works. The first prong of the two-part Rogerstest requires that the use of the trademark have at least "minimal" artistic relevance to the underlying work. The first prong was satisfied because six of the 19 songs on the album used "mastermind" in the lyrics. Moreover, the term was widely used by hip-hop musicians claiming to be "masterminds of music."

The second prong of the Rogers test asked whether use of the mark misleads as to the source of the work. Although registration of the Caiz mark and its use by Ross were both for the same purpose—musical recordings—Ross’s "Mastermind" album did not confuse the public into thinking that Caiz was affiliated with or sponsored by Ross, the court determined. Moreover, Ross was a renowned artist and added his own artistic expression to the mark. The court found that in every instance in which the MASTERMIND mark was used there was a clear indication that it was associated with Ross.

This case is No. 2:15-cv-09044-RSWL-AGR.

Attorneys: Heleni E. Suydam (Sands & Associates, PLC) for Raul Caiz. Craig E. Holden (Lewis Brisbois Bisgaard and Smith LLP) for William Leonard Roberts, II.

MainStory: TopStory Trademark CaliforniaNews

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