Rogers still mostly works in 9th Circuit, despite Honey Badger’s best efforts

Caiz v. Roberts, — F.Supp.3d —-, 2019 WL 1755421 (C.D.
Cal. Apr. 17, 2019)
In Gordon v. Drape Creative, 909 F.3d 257 (9th Cir.
2018), the Honey Badger case, the Ninth Circuit began a process that could make
Rogers v. Grimaldi as reticulated and difficult as nominative fair use
has often become.  Fortunately, the court
here sees past the FUD enabled by Gordon and finds that the use of
“Mastermind” in connection with rap music is protected by Rogers.
Caiz has a registration for MASTERMIND for for audio and
video recordings featuring music (applied 2005, issued 2013).  Roberts is a hip-hop artist known as Rick
Ross (who also, incidentally (?), won a First Amendment defense over his use of
that name). Rick Ross released an album entitled “Mastermind,” went on a
“Mastermind” tour, and allegedly adopted the persona of “Mastermind.” After the
court of appeals reversed the district court’s initial finding that the
registration was invalid for descriptiveness, the case returned for further
proceedings on the infringement and related claims.
Once a defendant shows that its challenged use is part of “an
expressive [nonadvertising] work protected by the First Amendment,” the burden
then shifts to the plaintiff claiming infringement, who must show “that the
mark is either not artistically relevant to the underlying work or explicitly
misleading as to the source or content of the work.”  “If the plaintiff satisfies both elements, it
still must prove that its trademark has been infringed by showing that the
defendant’s use of the mark is likely to cause confusion.” 
Caiz argued that Rogers doesn’t apply to reverse confusion
claims, relying on Masters Software, Inc. v. Discovery Communs., Inc., 725 F.
Supp. 2d 1294 (W.D. Wash. 2010), which so held because it reasoned that Rogers
required a referential use.  Since the Empire
case rejected that underlying rationale, Rogers applied. Twentieth
Century Fox TV v. Empire Distrib., Inc., 875 F.3d 1192 (9th Cir. 2017).
The uses here were in connection with artistic works, so Rogers
applied. “Minimal” artistic relevance is enough.  Six of the nineteen songs on the album make
direct use of “mastermind” in the lyrics, and one song referenced the overall
album itself by its title (“Mastermind, my 6th LP. Can’t believe we did it.
Man, I thank everybody that played a part of this.”), all of which linked the
title to its contents.  Plus, there was
[completely unnecessary] evidence that other people use “mastermind” as “part
of a larger, abstract theme used by artists in hip-hop claiming to be
masterminds of music.”  That was enough.
But was the use “explicitly” misleading? Here, courtesy of Gordon,
we descend into a theoretical wasteland in which the implicit can in theory be
explicit.  Caiz argued that the title of
the album was explicitly misleading as to source because Caiz had a
registration for musical recordings.  The
use of “Mastermind,” Caiz argued, was an explicit reference to him and thus
misleading.  As the court noted, the
usual rule is that “mere use of a trademark alone cannot suffice to make such
use explicitly misleading,” but “each time it made that observation, the junior
user had employed the mark in a different context than the senior user.”  [Gordon says this, but of course Rogers
derives from a case in which Ginger Rogers, movie star, sued over use of her
name in a movie; the Ninth Circuit rejected the Second Circuit’s exclusion of
title-v-title disputes from Rogers, but Gordon allows the same
argument to be resurrected in much broader, and worse, form.] Under Gordon,
“identical usage” could be [but is not always as a matter of law] explicitly
misleading.
Gordon added a mini-transformativeness inquiry
into explicit misleadingness.  For
“identical usage,” it’s now relevant how much creativity the junior user has
added.  Worries over confusion are
limited “when the mark is used as only one component of a junior user’s larger
expressive creation, such that the use of the mark at most ‘implicitly
suggest[s]’ that the product is associated with the mark’s owner.”  By contrast, the use of a mark “as the
centerpiece of an expressive work itself, unadorned with any artistic
contribution by the junior user,” may qualify as explicitly misleading. 
In contrast to the use in Gordon, where the allegedly
source-indicating catchphrase was being used as the “centerpiece” of greeting
cards [and thus not as a mark, sigh], Roberts used “Mastermind” as one album
title out of six albums throughout his career, where he was established as Rick
Ross.  “Mastermind” appeared nine times
in the lyrics across nineteen tracks, and it was used “through” Roberts’ own
artistic expression.  [This discussion
really highlights the ©/TM mashup Gordon achieved.  Of course, neither party created the word
“mastermind.”  The only way to use the
word creatively is to use it.  Gordon
was worried about the creativity behind “Honey Badger Don’t Care” and used TM
to give the plaintiff a quasi-copyright in a short phrase; that concern is
obviously irrelevant here, as it should have been in Gordon.]  The marketing of “Mastermind” the album
attached Rick Ross’s persona and history to it. For example, https://ift.tt/1hMjmEn,
is titled “Rick Ross The Boss” and introduces him as “Rick Ross AKA Ricky Rozay
AKA the Boss AKA The Mastermind.” “In short, Plaintiff’s music lists the artist
as ‘Mastermind,’ while Defendants titled one of Roberts’ albums and tours ‘Mastermind,’
while retaining some sort of reference to “Rick Ross” as the artist and
incorporating Roberts’ own artistic expression.”  [There are two argumentative threads here:
the first one, forced by Gordon, is weird and about the fact that the
album has songs in it and is thus more than Roberts just repeating the word
“mastermind,” though that would also be a creative, albeit more boring, work
protected by copyright.  The second,
which goes more to the original Rogers title-v-title exception, is that
the uses aren’t in fact the same. Thus the premise of Gordon isn’t even
satisfied here and we don’t need all this handwaving about creativity.]
Caiz had no evidence that the use was “explicitly” or even
“implicitly” misleading, only a declaration stating that his fans and fans of
Rick Ross started asking him if a new album was coming out, “misleadingly
thinking Defendant’s album was [his].” That wasn’t enough to avoid summary
judgment.  There was no evidence of any
explicit statements of association etc. by defendants (citing Novalogic, Inc.
v. Activision Blizzard, 41 F. Supp. 3d 885, 901 (C.D. Cal. 2013) (“To be
‘explicitly misleading,’ a defendant’s work must make some affirmative
statement of the plaintiff’s sponsorship or endorsement, beyond the mere use of
the plaintiff’s name or other characteristic.”)).
It was not enough to argue that the use was explicitly
misleading because reverse confusion was likely. Likelihood of confusion
analysis isn’t part of Rogers prong two; indeed, avoiding a fullscale
likely confusion analysis is the point of Rogers and the only thing that
makes it protective of First Amendment interests rather than an additional
overlay on a complex and fact-intensive balancing test.  Under Gordon, only after lack of
artistic relevance or explicit misleadingess has been shown is a likely
confusion analysis appropriate.
Finally, Caiz argued that even if Rogers protected
the album name, it didn’t protect use of the term for the tour name or for Roberts’
persona in interviews and other live performances. But these were protected “extensions
of the use of the mark in an effort to advertise and market the ‘Mastermind’
album,” just as in Empire appearances by cast members, radio play,
online advertising, and live events were protected advertising for the
expressive work.
The sensible reasoning of this opinion does a lot to
indicate that, though Gordon was badly reasoned, it has limited
application outside of the scenario in which the defendant basically just
reproduces the plaintiff’s mark on the goods for which the plaintiff claims a
mark.

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