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, www.rickrossmastermind.com, 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.