Rebecca Tushnet

Ricky Ross, aka Rick Ross and “Freeway” Ricky Ross, “is a former criminal who achieved some sort of celebrity status due, in part, to the enormous scale of his cocaine-dealing operations” during the 1980s. He ran a multimillion-dollar empire; was arrested; helped uncover a ring of dirty cops and helped free 120 wrongly convicted people; had his sentence reduced as a result; was rearrested shortly after his release in 1994; received widespread media coverage after that as a result of his peripheral role in Iran-Contra; and was released from prison in 2009.

William Leonard Roberts II “is a famous rap musician who goes by the name ‘Rick Ross,’” whose lyrics frequently include “fictional stories about running large-scale cocaine operations” (and occasionally celebrate rape, until walked back). In fact, Roberts is a former correctional officer, though he attempted to hide this and instead present himself as a drug-dealing rapper, as in his first commercial single, Hustlin’. Early in his career, he spoke about how Ross’s life story “grabbed him,” but later denied that his stage name was based on Ross and claimed it was instead a play on “big boss,” an old high school nickname.

In 2006 (the same year Roberts’ first commercial CD was released), Ross discovered that Roberts was using the Rick Ross name when he saw an article about up-and-coming rappers. Though he was still in prison, he contacted a lawyer to write a C&D, but that never got a meaningful response. Ross sued Roberts and other defendants for misappropriating his identity.

The court found that Roberts’ use of the “Rick Ross” name and persona was protected by the First Amendment because it incorporated significant creative elements. I challenge readers to distinguish this case from the Electronic Arts cases; I can’t.

Roberts initially sued in federal court, but the district court dismissed the federal claims and declined to exercise supplemental jurisdiction over the state claims, so he refiled in state court. He asserted various misappropriation/publicity-related claims. The state trial court found that his claims were barred by the statute of limitations, because the single publication rule meant that the period began to run upon Roberts’ first commercial use of the name. (The California rule: “No person shall have more than one cause of action for damages for libel or slander or invasion of privacy or any other tort founded upon any single publication or exhibition or utterance, such as one issue of a newspaper or book or magazine or any one presentation to an audience or any one broadcast over radio or television or any one exhibition of a motion picture.”) Ross argued that, at a minimum, each new album constituted a new and separate publication, but the trial court disagreed and also found that Roberts’ claims were barred by laches.

The court of appeals wasn’t convinced that these rulings were correct, but the First Amendment meant that it didn’t matter. To resolve the tension between the right of publicity (on which all of Ross’s claims were based) and the First Amendment, California uses the transformativeness test, examining “whether the new work merely supersede[s] the objects of the original creation … or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message….” (internal quotations omitted). When there’s a literal depiction or imitation of a celebrity for commercial gain without adding significant expression beyond the “trespass” on the right of publicity, the state’s interest in “protecting the fruits of artistic labor” outweighs the imitative artist’s expressive interests. But when a work contains significant transformative elements, it’s both especially worthy of First Amendment protection and less likely to interfere with the celebrity’s protected interest in “markets for celebrity memorabilia.” (If we were to take this emphasis on “work” seriously, then the Electronic Arts cases would be wrongly decided even under the transformativeness test, but oh well.) So the question is whether the celebrity’s likeness is one of the raw materials from which an original work is cooked, or “whether the depiction or imitation of the celebrity is the very sum and substance of the work in question” instead of “primarily the defendant’s own expression rather than the celebrity’s likeness.” Comedy III. In close cases, courts may ask whether the marketability and economic value of the challenged work derive primarily from the celebrity’s fame.

Many cases involve visual representations, but that’s not the only expression to which the First Amendment applies. (RT: Indeed, on the record, visual depictions are far less protected than other kinds.) Here, transformativeness provided a complete defense. Roberts’s work, which the court defined here as “his music and persona as a rap musician,” relied “ to some extent” on Ross’s name and persona—rapping about trafficking in cocaine and bragging about his wealth. However, these were raw materials from which his career was synthesized, not the sum and substance of his work. Instead, Roberts created a celebrity identity (implicitly: one of his own, as opposed to an Elvis impersonator; cf. the discussion of Andy Warhol’s fame as making his portraits transformative in Comedy III). “He was not simply an imposter seeking to profit solely off the name and reputation of Rick Ross. Rather, he made music out of fictional tales of dealing drugs and other exploits—some of which related to plaintiff. Using the name and certain details of an infamous criminal’s life as basic elements, he created original artistic works.” A work is transformative if it adds new expression, which he clearly did.

The value test also supported Roberts. “Although it is possible that Roberts initially gained some exposure through use of the name Rick Ross and the reputation it carried, the value of Roberts’s work does not derive primarily from plaintiff’s fame.” The court assumed that people buy music because they enjoy that music, and thus it would be incredible to claim that Roberts’ success came primarily from appropriating Ross’s name and identity, instead of from his music and professional persona.

Ross argued that the First Amendment defense only applied to “likenesses,” not names. Estate of Fuller v. Maxfield & Oberton Holdings, LLC, 906 F. Supp. 2d 997 (N.D.Cal. 2012), rejected a First Amendment defense by the manufacturer of toys called “Buckyballs,” named for Buckminster Fuller because the toys could be manipulated to resemble a molecule commonly known as a “buckyball,” named for Fuller. The Fullercourt held that transformativeness depended on the visual nature of the transformation, and that use of a name isn’t an act of expression the way creation or alteration of an image is; a name, it reasoned, can’t be transformed while remaining recognizable, as an image can. (Benedict Cumberbatch fans might disagree.) Also, Fuller’s name and identity wasn’t part of the actual toy product: the toys didn’t depict or reference Fuller, only the molecule with which he was associated. (Two terrible rationales for the price of one!) There was no First Amendment protection “for the use of a celebrity’s name, transformed or otherwise, to sell an unrelated product.”

Thankfully, the court here wasn’t impressed either, though it distinguished Fuller rather than rejecting it. The First Amendment protects all forms of expression, including words and music; books are mentioned in Comedy III, and the subsequent Winter case emphasized that the defendants’ Autumn brothers were characters “in a larger story, which is itself quite expressive.” Also, Fuller involved an unrelated product, while Roberts “created music by adding significant transformative elements to the base components of plaintiff’s name and identity.” The product in Fuller “was in no way a transformed portrayal of the famous engineer and inventor,” while the rapper “Rick Ross” was “a highly altered, essentially fantasized version of plaintiff.” “Roberts’s music may be analogized to a work of fiction in which the protagonist bears some resemblance to the original Rick Ross.” This is a “raw material” situation; the resemblance “is merely a minor detail when viewed in the context of the larger story—Roberts’s music and persona are much more than literal depictions of the real Rick Ross.”