382 F. Supp. 3d 942
C.D. Cal.2019Background
- Plaintiff owns a registered trademark for the mark "Mastermind" used on musical recordings and previously released music under that name.
- Defendants (Rick Ross/Roberts) released an album titled "Mastermind," used the term repeatedly in lyrics, and marketed a tour and persona using the same name while prominently linking the album to the "Rick Ross" artist identity.
- Defendants moved for summary judgment under the Rogers test for expressive uses of trademarks in artistic works; Plaintiff opposed, arguing the identical use on musical recordings is explicitly misleading and creates reverse confusion.
- The court considered Rogers' two prongs: (1) minimal artistic relevance of the mark to the work, and (2) whether the use explicitly misleads as to source or sponsorship.
- The court found the term "Mastermind" has artistic relevance (appears across tracks and ties to album theme) and that Defendants added expressive content and clearly associated the work with Rick Ross, not Plaintiff.
- Because Plaintiff failed to raise a triable factual dispute on either Rogers prong, the court granted summary judgment to Defendants on the infringement claim and consequently on related unfair competition, unjust enrichment, and misappropriation claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Rogers Prong One: Artistic relevance of the mark | Mastermind is used in same goods (musical recordings); relevance is insufficient | The album uses "Mastermind" within lyrics, theme, and album content; minimal relevance satisfied | Court: Prong One satisfied — artistic relevance is above zero |
| Rogers Prong Two: Explicitly misleading as to source | Titling an album for the same goods as Plaintiff is explicitly misleading; reverse confusion likely | Defendants attached extensive expressive content and Rick Ross branding; no evidence of affirmative sponsorship/endorsement by Plaintiff | Court: Prong Two not met for Plaintiff — no triable issue that use explicitly misleads |
| Use beyond album (tour, persona, marketing) | Rogers protection should not cover separate commercial uses like tours and live persona | These uses are logical extensions of marketing an expressive work and are protected under Rogers when the title is protected | Court: Extensions are protected; Plaintiff failed to show misleading use |
| Remaining state-law claims (unfair competition, unjust enrichment, misappropriation) | These claims survive because Ninth Circuit reinstated trademark registration earlier | These claims depend on infringement; summary judgment should be granted if infringement fails | Court: Summary judgment for Defendants on all remaining claims because infringement failed |
Key Cases Cited
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (establishes two-prong test for expressive works using trademarks)
- E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (artistic relevance prong is low; relevance need only be above zero)
- Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018) (clarifies that identical usage and minimal additional expression can create triable issue under Rogers' second prong)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (summary judgment standard: scintilla of evidence insufficient to defeat motion)
- Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135 (9th Cir. 2002) (California unfair competition claims are substantially congruent to Lanham Act claims)
- Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1981) (California misappropriation doctrine does not extend beyond trademark infringement)