Caiz v. Roberts
| Decision Date | 15 December 2016 |
| Docket Number | CV No. 15–09044–RSWL–AGRx |
| Citation | 224 F.Supp.3d 944 |
| 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. |
| Court | U.S. District Court — Central District of California |
Heleni E. Suydam, Kris Demirjian, Leonard S. Sands, Sands and Associates PLC, Beverly Hills, CA, Sevag Demirjian, Demirjian Law Offices, Woodland Hills, CA, for Plaintiff.
Craig E. Holden, Joshua S. Hodas, Lewis Brisbois Bisgaard and Smith LLP, Los Angeles, CA, Leron E. Rogers, Lewis Brisbois Bisgaard and Smith LLP, Atlanta, GA, for 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 Summary Judgment [44]. The Court, having reviewed all papers and arguments submitted pertaining to this Motion, NOW FINDS AND RULES AS FOLLOWS: Defendants' Motion for Summary Judgment [44] is GRANTED .
Plaintiff's claims against Defendants include 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. Compl. ¶¶ 39–65. Plaintiff is a hip-hop music artist. Id. at ¶ 2. Plaintiff owns the trademark rights to "Mastermind." Id. Roberts is also a hip-hop artist. Id. at ¶ 3. Plaintiff alleges Defendants have wilfully infringed on Plaintiff's trademark rights by releasing an album entitled "Mastermind," titling Roberts' tour "Mastermind," and Roberts taking on the persona of "Mastermind," causing confusion in the marketplace. Id. 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.
Counterclaim ¶ 5. Defendants allege the "Mastermind" mark is invalid because it is a generic and/or merely descriptive term that has not acquired a secondary meaning and Plaintiff has abandoned the mark. Id. at ¶ 12.
On November 20, 2015, Plaintiff filed a Complaint in 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 the instant Motion for Summary Judgment along with a Statement of Undisputed Facts and Conclusions of Law [44][45]. On October 7, 2016, Defendants also filed a Request for Judicial Notice [46]. On October 18, 2016, Plaintiff filed an Opposition to the Motion for Summary Judgment along with a Statement of Disputed Facts and an Opposition to Defendants' Statement of Undisputed Facts [52]. On October 25, 2016, Defendants filed a Reply [53].
1. Motion for Summary Judgment
Federal Rule of Civil Procedure 56 states that a "court shall grant summary judgment" when the movant "shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). A fact is "material" for purposes of summary judgment if it might affect the outcome of the suit, and a "genuine issue" exists if the evidence is such that a reasonable fact-finder could return a verdict for the non-moving party. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The evidence, and any inferences based on underlying facts, must be viewed in the light most favorable to the opposing party. Twentieth Century–Fox Film Corp. v. MCA, Inc. , 715 F.2d 1327, 1329 (9th Cir. 1983). In ruling on a motion for summary judgment, the court's function is not to weigh the evidence, but only to determine if a genuine issue of material fact exists. Anderson , 477 U.S. at 255, 106 S.Ct. 2505.
Under Rule 56, the party moving for summary judgment has the initial burden to show "no genuine dispute as to any material fact." Fed. R. Civ. P. 56(a) ; see Nissan Fire & Marine Ins. Co. v. Fritz Cos. , 210 F.3d 1099, 1102–03 (9th Cir. 2000). The burden then shifts to the non-moving party to produce admissible evidence showing a triable issue of fact. Nissan Fire & Marine Ins. , 210 F.3d at 1102–03 ; see Fed. R. Civ. P. 56(a). When a defendant moves for summary judgment, summary judgment "is appropriate when the plaintiff fails to make a showing sufficient to establish the existence of an element essential to [their] case, and on which [they] will bear the burden of proof at trial." Cleveland v. Policy Mgmt. Sys. Corp. , 526 U.S. 795, 805–06, 119 S.Ct. 1597, 143 L.Ed.2d 966 (1999) ; Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
The standard for a motion for summary judgment "provides that the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgement; the requirement is that there be no genuine issues of material fact." Anderson , 477 U.S. at 247–48, 106 S.Ct. 2505.
1. Plaintiff owns a federal registration in the trademark "Mastermind." Plaintiff applied for registration on December 24, 2005 and the registration was approved on July 16, 2013 in Classes 009 and 41, Registration No. 4,366,332. Defs.' Statement of Undisputed Facts ¶ 1; Compl. ¶ 25.
2. Class 009 consists of: audio recordings featuring music; downloadable musical sound recordings; downloadable video recordings featuring music; musical sound recordings; musical video recordings; pre-recorded CD's, video tapes, laser disks and DVD's featuring music; video recordings featuring music; visual recordings and audio visual recordings featuring music and animation, excluding content consisting of general knowledge questions, quizzes and games. Defs.' Ex. 1. Class 41 consists of: Entertainment in the nature of live performances by a performer or group; [entertainment in the nature of visual and audio performances, and musical, variety, news and comedy shows; entertainment in the nature of visual and audio performances, namely, musical band, rock group, gymnastics, dance and ballet performances; entertainment, namely, live performances by a musical band;] entertainment services, namely, providing a web site featuring musical performances, musical performances, musical videos, related film clips, photographs, and other multimedia materials; entertainment services, namely, providing prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network, entertainment, namely, live music concerts; entertainment, namely, live performances by musical bands, excluding general knowledge questions, quizzes, and games. Id.
3. On February 24, 2012, Plaintiff amended the Statement of Use and deleted "video tapes, laser disks and DVD's featuring music." Defs.' Statement of Undisputed Facts ¶ 3.
As an initial matter, Defendants request the Court take judicial notice of the United States Patent and Trademark Office ("USPTO") "File History" for Registration No. 4,366,332 for the "Mastermind" mark which was downloaded from the USPTO web site on September 14, 2016. Defs.' Req. for Judicial Notice 1:2–12.
A court may take judicial notice of a fact that is not subject to reasonable dispute because it "can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned." Fed. R. Evid. 201(b)(2). Plaintiff did not object to the Court taking judicial notice of the "File History." VMR Products, LLC v. V2H ApS , No. 2:13–CV–7719–CBM–JEMX, 2016 WL 1177834, at *1 (C.D. Cal. Mar. 18, 2016). Courts may also take judicial notice of " ‘records and reports of administrative bodies,’ file histories, and application materials." Balance Studio, Inc. v. Cybernet Entm't, LLC , No. 15–CV–04038–DMR, 2016 WL 1559745, at *1 (N.D. Cal. Apr. 18, 2016) (quoting Mack v. South Bay Beer Distributors, Inc. , 798 F.2d 1279, 1282 (9th Cir. 1986) ); see Oroamerica Inc. v. D & W Jewelry Co., Inc. , 10 Fed.Appx. 516, 517 n.4 (9th Cir. 2001).
Because the document is not subject to reasonable dispute, is capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned, and is a matter of public record, see Lee v. City of L.A. , 250 F.3d 668, 689 (9th Cir. 2001), the Court GRANTS Defendants' Request for Judicial Notice of the "File History" for Registration No. 4,366,332 for the "Mastermind" mark.
Courts have the power to order the cancellation of registrations in whole or in part. 15 U.S.C. § 1119. Defendants contend the registration for "Mastermind" should be cancelled because it is a descriptive term that has failed to acquire secondary meaning. Mot. 5:4–10. Plaintiff argues that the mark is not descriptive but suggestive entitling the mark to trademark protection. Opp'n 8:20. Even if it is descriptive, it has acquired secondary meaning. Id. at 12:10–12.
"When a plaintiff pursues a trademark action involving a properly registered mark, that mark is presumed valid, and the burden of proving that the mark is generic rests upon the defendant." Solid 21, Inc. v. Hublot of America , 109 F.Supp.3d 1313, 1322 (C.D. Cal. 2015) (citing Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc. , 419 F.3d 925, 927 (9th Cir. 2005) ). While 15 U.S.C. § 1115(a) does state that a registration is admissible and is "prima facie evidence of the validity of the registered mark and of the registration of the mark," the...
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Caiz v. Roberts
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