Caiz v. Roberts
| Decision Date | 01 March 2017 |
| Docket Number | CV No. 15-09044-RSWL-AGRx |
| Court | U.S. District Court — Central District of California |
| Parties | RAUL CAIZ, Plaintiff, v. WILLIAM LEONARD ROBERTS II, aka MASTERMIND aka RICK ROSS, UNIVERSAL MUSIC GROUP, INC., DEF JAM RECORDS, INC., MAYBACH MUSIC GROUP, LLC, Defendants. |
Currently before the Court is Defendants William Leonard Roberts II aka Mastermind aka Rick Ross ("Roberts"), Universal Music Group, Inc. ("Universal"), Def Jam Records, Inc., ("Def Jam"), and Maybach Music Group, LLC's ("Maybach") (collectively, "Defendants") Motion for Attorneys' Fees ("Motion") [60]. The Court, having reviewed all papers and arguments submitted pertaining to this Motion, NOW FINDS AND RULES AS FOLLOWS: Defendants' Motion for Attorneys' Fees [60] is DENIED.
Plaintiff Raul Caiz ("Plaintiff") is a hip-hop music artist. Compl. ¶ 2, ECF No. 1. On December 24, 2005, Plaintiff applied for registration of the trademark "Mastermind" for use in Classes 009 and 41. Id. at ¶ 25. It was registered on July 16, 2013. Id. Roberts is also a hip-hop artist. Id. at ¶ 3. On January 7, 2013, Roberts announced the title of his sixth album would be "Mastermind." Id. at ¶ 28. Roberts went on to refer to himself as "Mastermind," claiming it as his own and creating confusion in the marketplace. Id. at ¶ 29. Universal, Def Jam, and Maybach reviewed, approved, and assisted in the creation and distribution of infringing materials which had the "Mastermind" mark. Id. at ¶ 31.
Plaintiff alleged Defendants wilfully infringed his trademark rights by releasing an album entitled "Mastermind," titling Roberts' tour "Mastermind," and by Roberts taking on the persona of "Mastermind," causing confusion in the marketplace. Id. Plaintiff claimed that the value of his trademark diminished because people mistakenly believed Plaintiff released the "Mastermind" album that Defendants had already released. Id. at ¶ 7. Plaintiff alleged he used thename "Mastermind" since 1999 in various ways, including: purchasing recording equipment, recording music, performing at venues, obtaining synchronization deals for multiple songs, making a music video, and receiving a licensing deal to use a song as a mall jingle. Id. at ¶ 32.
Plaintiff's claims against Defendants included Federal Trademark Infringement pursuant to 15 U.S.C. § 1114, a violation of the Lanham Act, 15 U.S.C. § 1125(a), Federal Trademark Dilution, Unfair Enrichment, Unfair Competition, and Misappropriation. Id. at ¶¶ 39-65. Defendants filed a Counterclaim of cancellation of the federal trademark registration under 28 U.S.C. § 2201(a) and 15 U.S.C. §§ 1119, 1064. Countercl. ¶ 5. Defendants alleged the "Mastermind" mark is invalid because it is a generic and/or merely descriptive term that lacks secondary meaning. Id. at ¶ 12. Defendants requested the Court cancel Plaintiff's registration of the "Mastermind" mark pursuant to 15 U.S.C. § 1119. Id. at ¶ 18.
On November 20, 2015, Plaintiff filed a Complaint with this Court [1]. On February 16, 2016, Defendants filed an Answer [18]. On February 18, 2016, Defendants filed a Counterclaim against Plaintiff [22]. On March 8, 2016, Plaintiff filed an Answer to the Counterclaim [23]. On October 7, 2016, Defendants filed a Motion for Summary Judgment [44]. On December 15, 2016, thisCourt granted Defendants' Motion for Summary Judgment [58]. On December 16, 2016, Judgment was entered in favor of Defendants [59]. On December 30, 2016, Defendants filed the instant Motion [60]. On January 10, 2017, Plaintiff filed its Opposition [61]. On January 17, 2017, Defendants filed their Reply [64].
A. Legal Standard
"The court in exceptional [trademark] cases may award reasonable attorney fees to the prevailing party." 15 U.S.C. § 1117(a). The interpretation of what constitutes an "exceptional case" is a question of law. Earthquake Sound Corp. v. Bumper Indus., 352 F.3d 1210, 1216 (9th Cir. 2003).
Courts may consider several factors to determine whether "exceptional circumstances" exist. E & J Gallo v. Proximo Spirits, Inc., No. CV-F-10-411 LJO JLT, 2012 WL 3639110, at *5 (E.D. Cal. Aug. 23, 2012). An action may be exceptional where plaintiff's case is "groundless, unreasonable, vexatious, or pursued in bad faith." Stephen W. Boney, Inc. v. Boney Servs., 127 F.3d 821, 827 (9th Cir. 1997)(quoting Scott Fetzer Co. v. Williamson, 101 F.3d 549 (8th Cir. 1996)). The Supreme Court has noted several "nonexclusive" factors to consider including "frivousness, motivation, objective unreasonableness (both in the factual and legal components of the case) and the need inparticular circumstances to advance considerations of compensation and deterrence." Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 n.6 (2014)(quoting Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994)).
The Ninth Circuit has recently held that courts should look to the "totality of the circumstances" in determining if a case is exceptional and "exercis[e] equitable discretion in light of nonexclusive factors identified in Octane Fitness and Fogerty, and us[e] a preponderance of the evidence standard." SunEarth, Inc. v. Sun Earth Solar Power Co., Ltd., 839 F.3d 1179, 1181 (9th Cir. 2016). Additionally, "[t]he Court is not compelled to award attorney's fees even if the case is exceptional." Starbuzz Tobacco, Inc. v. Addison Specialty Services, Inc., No. 13-CV-1539-MMA (KSC), 2015 WL 11251805, at *5 (S.D. Cal. July 29, 2015) (citing Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 915 F. Supp. 2d 1179, 1186 (D. Nev. 2013) aff'd, 778 F.3d 1059 (9th Cir. 2015)).
When attorneys' fees are awarded under § 1117(a) of the Lanham Act, the amount of the fee award is subject to the court's discretion. Sealy, Inc. v. Easy Living, Inc., 743 F.2d 1378, 1384 (9th Cir. 1984). "When it sets a fee, the district court must first determine the presumptive lodestar figure by multiplying the number of hours reasonably expended on the litigation by thereasonable hourly rate." Intel Corp. v. Terabyte Int'l, Inc., 6 F.3d 614, 622 (9th Cir. 1993)(internal citation omitted). In appropriate cases, courts may then adjust the "presumptively reasonable" lodestar figure based upon factors set forth by the Ninth Circuit in Kerr v. Screen Extras Guild, Inc., 526 F.2d 67, 69-70 (9th Cir. 1975) abrogated on other grounds by City of Burlington v. Dague, 505 U.S. 557 (1992).1
C. Analysis
Local Rule 7-3 requires that "counsel contemplating the filing of any motion shall first contact opposing counsel to discuss thoroughly, preferably in person, the substance of the contemplated motion and any potential resolution." L.R. 7-3. The Local Rule further requires that this conference shall take place at least seven (7) days prior to the filing of the motion. Id. The Court may, in its discretion, refuse to consider Defendants' Motion for failure to comply with Local Rule 7-3. See, e.g., Reed v. SandstoneProperties, L.P., No. CV 12-05021 MMM (VBKx), 2013 WL 1344912, at *6 (C.D. Cal. Apr. 2, 2013). Defendants assert when the parties met and conferred regarding Defendants' intention to file a Motion for Summary Judgment on September 9, 2016, Defendants' counsel advised Plaintiff's counsel that Defendants would seek attorneys' fees if the motion was granted. Decl. of Craig Holden ("Holden Decl.") ¶ 2, ECF No. 60-1. Plaintiff claims that the meet and confer was only about the Motion for Summary Judgment and there was no substantive discussion at that time regarding the instant Motion; thus, Defendants' Motion should be denied. Pl.'s Opposition ("Opp'n") 4:1-15.
While Plaintiff may have been put on notice that Defendants would seek attorneys' fees if the Motion for Summary Judgment was granted, the purpose of Local Rule 7-3 is to facilitate possible resolution without the need for an unnecessary motion. Defendants failed to properly meet and confer with Plaintiff regarding the instant Motion. There was no substantive discussion about attorneys' fees during the meet and confer on September 9, 2016, because at that time only the Motion for Summary Judgment was contemplated.
In his Opposition, Plaintiff neither demonstrates that Defendants' Motion is "unnecessary," nor does Plaintiff show that he has suffered prejudice as a result of the absence of a conference. Rather, Plaintiff conclusory states Defendants did not properlymeet and confer and the Motion should therefore be denied. Opp'n 4:8-16. Because there appears to be no prejudice to Plaintiff in considering Defendants' Motion on the merits, the Court exercises its discretion to do so. Reed, 2013 WL 1344912 at *6; see Thomas v. U.S. Foods, Inc., No. 8:12-cv-1221-JST (JEMx), 2012 WL 5634847, at *1 n.1 (C.D. Cal. Nov. 14, 2012)(considering the plaintiff's motion despite failure to comply with Local Rule 7-3).
Defendants ask the Court to award them $150,100 in attorneys' fees incurred in defending Plaintiff's "objectively unreasonable claims" because this case is "exceptional" within the meaning of 15 U.S.C. § 1117. Defs.' Mot. for Atty's Fees ("Mot.") 1:3-7. Defendants argue they are entitled to attorneys' fees because this Court cancelled Plaintiff's "Mastermind" trademark by finding the mark was descriptive, did not acquire secondary meaning, and because Plaintiff failed to support his federal dilution claim.
Plaintiff argues that because he believed his mark was suggestive, the case is not exceptional. Opp'n 2:11-13. Determining whether a mark is descriptive or suggestive is a high evidentiary bar and a close question; therefore, Plaintiff was justified in his reasonable belief that the mark was suggestive and didnot require showing the mark acquired...
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