Caiz v. Roberts

• Decision Date: 17 April 2019
• Docket Number: CV 15-9044-RSWL-AGRx
• Citation: 382 F.Supp.3d 942
• 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.

382 F.Supp.3d 942

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.

CV 15-9044-RSWL-AGRx

United States District Court, C.D. California.

Signed April 17, 2019

Heleni E. Suydam, Kris Demirjian, Leonard S. Sands, Sands and Associates PLC, Beverly Hills, CA, Sevag Demirjian, Demirjian Law Offices, North Hollywood, CA, for Plaintiff.

Craig E. Holden, Joshua S. Hodas, Lewis Brisbois Bisgaard and Smith LLP, Los Angeles, CA, Leron E. Rogers, Pro Hac Vice, Lewis Brisbois Bisgaard and Smith LLP, Atlanta, GA, for Defendants.

ORDER re: Defendants' Second Motion for Summary Judgment [72]

RONALD S.W. LEW, Senior U.S. District Judge Currently before the Court is Defendants William Leonard Roberts II aka Mastermind aka Rick Ross; Universal Music Group, Inc.; Def Jam Records, Inc.; and Maybach Music Group, LLC's ("Defendants") Second Motion for Summary Judgment ("Motion") [72]. Having reviewed all papers submitted pertaining to this Motion, the Court NOW FINDS AND RULES AS FOLLOWS: the Court GRANTS Defendants' Motion.

I. BACKGROUND

A. Factual Background

Plaintiff Raul Caiz ("Plaintiff") is a hip-hop music artist who owns the trademark rights to the term "Mastermind." Compl. ¶ 2, ECF No. 1. Defendant William Leonard Roberts, II ("Roberts") is also a hip-hop artist commonly known as "Rick Ross." Id. ¶ 3. Defendant Maybach Music Group, Inc. ("Maybach") is a Florida limited liability company, with its principal place of business in Mississippi. Id. ¶ 4. Defendant Universal Music Group, Inc. ("UMG") is a Delaware corporation, headquartered in California. Id. ¶ 5. Defendant Def Jam Records, Inc. ("Def Jam") is a subsidiary of UMG headquartered in New York. Id. ¶ 6. Plaintiff alleges that each Defendant was, at all relevant times, either an agent, supervisor, manager, joint venturer, employer, and/or employee and/or co-conspirator of each or one or more of the remaining Defendants, and was acting in the scope of such role with the permission and consent of their codefendants. Id. ¶ 20.

On December 24, 2005, Plaintiff applied for registration of the mark "Mastermind" with the United States Patent and Trademark Office ("USPTO"), and the registration was approved on July 16, 2013 in class 009 for audio and video recordings.¹ Id. ¶ 25. Plaintiff alleges he has used the name "Mastermind" in the music industry since 1999. Id. ¶ 32. Plaintiff alleges that Defendants have willfully infringed on Plaintiff's trademark rights by releasing an album entitled "Mastermind," titling Roberts' tour "Mastermind," and by Roberts taking on the persona of "Mastermind." Id. ¶¶ 3, 7.

B. Procedural Background

On November 20, 2015, Plaintiff filed his Complaint [1] alleging against all Defendants: (1) federal trademark infringement; (2) violation of the Lanham Act section 43(a); (3) federal trademark dilution; (4) unfair competition; (5) unjust enrichment; and (6) misappropriation. On February 18, 2016, Defendants filed a Counterclaim against Plaintiff [22] for cancellation of the federal trademark registration under 28 U.S.C. § 2201(a) and 15 U.S.C. §§ 1119, 1064. Defs.' Counterclaim ¶ 5, ECF No. 22. Defendants alleged that the "Mastermind" mark is invalid because it is a generic and/or merely descriptive term that has not acquired a secondary meaning, and also because Plaintiff has abandoned the mark. Id. ¶ 12.

On October 7, 2016, Defendants filed their first Motion for Summary Judgment [44]. On December 15, 2016, the Court granted Defendants' Motion [58] as to Defendants' counterclaim to cancel Plaintiff's mark on the basis that the mark was a descriptive, laudatory term and had obtained no secondary meaning. Order re Summ. J. ("MSJ Order") 15-16, ECF No. 58. The Court did not address Defendants' other asserted bases for cancellation,² or their asserted affirmative defense of fair use. The Court also granted Defendants' Motion as to Plaintiff's Federal Dilution Claim because Plaintiff did not provide the Court with any genuine issue of material fact as to whether the mark is famous. Id. at 21:1-11. Because the Court cancelled the mark, the Court also granted summary judgment as to Plaintiff's remaining claims of unfair competition, unjust enrichment, and misappropriation. Id. at 24:9-18. The Court issued a Judgment [59] in favor of Defendants consistent with this ruling on December 16, 2016.

Plaintiff timely appealed, and on June 15, 2018, the Ninth Circuit reversed and remanded the Court's grant of summary judgment [67]. The Ninth Circuit reversed the Court's order to cancel the registration and its finding that the mark was not distinctive, and thus invalid.³ The Ninth Circuit also declined to consider Defendants' fair use defense and remaining arguments for cancellation, and left them to the Court to consider. See Ninth Cir. Mem. 5, ECF No. 67. Accordingly, Defendants filed the instant Motion [72] on February 12, 2019, asserting a First Amendment defense as well as re-asserting the alternative bases for relief from their first Motion for Summary Judgment, which neither the Court nor the Ninth Circuit addressed. Plaintiff timely opposed [78], and Defendants timely replied [79].

II. DISCUSSION

A. Legal Standard

Federal Rule of Civil Procedure 56(a) 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." 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 nonmovant. 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 nonmovant. Twentieth Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327, 1328-29 (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.

Where the nonmovant bears the burden of proof at trial, the movant need only prove that there is no evidence to support the nonmovant's case. In re Oracle Corp. Secs. Litig., 627 F.3d 376, 387 (9th Cir. 2010). If the movant satisfies this burden, the burden then shifts to the nonmovant to produce admissible evidence showing a triable issue of fact. Id.; Nissan Fire & Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1102-03 (9th Cir. 2000) ; see also Cleveland v. Policy Mgmt. Sys. Corp., 526 U.S. 795, 805–06, 119 S.Ct. 1597, 143 L.Ed.2d 966 (1999) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ).

B. Discussion

1. Defendants' Request for Judicial Notice

Defendants request that the Court take judicial notice of the USPTO's "File History" for the mark "Mastermind" (Registration No. 4,366,332 ), downloaded from the USPTO website on September 14, 2016. Defs.' Req. for Judicial Notice ("RJN"), ECF No. 74.

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." 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 F. App'x 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.

2. First Amendment Defense

a. Waiver

As a preliminary matter, Plaintiff argues that Defendants have waived their defense that their use of the mark "Mastermind" is protected free speech under the First Amendment because they did not include this defense in their Answer, their counterclaims, or in their first Motion for Summary Judgment. Pl.'s Opp'n 9:9-11, ECF No. 78. Defendants argue that Plaintiff cites no case law stating that this is an affirmative defense, and even if it is, it functions as a category of fair use, which Defendants pleaded in their Answer. Defs.' Reply 3:1-3, ECF No.79; Answer at 9, ECF No. 18. Indeed, even where this defense has been considered an affirmative defense, it has been described as a "First Amendment Fair Use" affirmative defense. See VIP Prod. LLC, v. Jack Daniels Props., Inc., No. CV-14-2057-PHX-SMM, 2016 WL 5408313, at *5 (D. Ariz. Sept. 27, 2016) (citing Brown v. Elec. Arts. Inc., 724 F.3d 1235 (9th Cir. 2013) ) (analyzing the Rogers Test discussion as "First Amendment Fair Use" protection for expressive works).

Moreover, even if Defendants did not adequately assert this defense in their Answer, Plaintiff has not established any prejudice as a result of the Court considering this defense. Camarillo v. McCarthy, 998 F.2d 638, 639 (9th Cir. 1993) (finding failure to assert a defense in the answer does not waive the defense as long as its assertion at the summary judgment stage does not prejudice the plaintiff). Plaintiff only points to a "financial burden" to Plaintiff and a "re-working of Plaintiff's trial preparation," however, as discussed below, this defense serves as a complete bar to Plaintiff's...