Ninth Circuit reverses district court’s grant of summary judgment to rapper Rick Ross on trademark infringement claim brought by rival rapper related to use of mark “Mastermind,” and reverses cancellation of plaintiff’s trademark registration, holding Ross’ evidence was insufficient to overcome registered mark’s presumption of validity.
Plaintiff, Rapper Raul Caiz, owner of the registered trademark MASTERMIND for music recordings and services, sued defendant William Leonard Roberts II (also known as Rick Ross and rapper “Mastermind”), Universal Music Group and several related entities for trademark infringement, dilution, unfair enrichment, unfair competition and misappropriation, based on Ross’s use of the “Mastermind” name as the title of his album and concert tour. Ross asserted a counterclaim for cancellation of the MASTERMIND mark, alleging that it is a descriptive term that had not acquired secondary meaning.
The district court granted Ross’s motion for summary judgment, and ordered that Caiz’s registration be cancelled. The district court found that Caiz’ mark was descriptive with no secondary meaning, because no mental leap was required for a consumer to connect the mark with Caiz’s goods and services. The court relied on a dictionary entry for “Mastermind” as relating to “creative artists,” as well as evidence that many others in the hip-hop industry had used the term in album titles, web sites and song lyrics. The district court noted that Caiz had not provided any evidence of actual confusion in the marketplace.
On appeal, Caiz challenged only the district court’s grant of summary judgment with regard to his trademark infringement claim and Ross’s counterclaim for cancellation of the MASTERMIND mark registration. The Ninth Circuit agreed that the lower court had erred in resolving these claims at the summary judgment stage on the record before it. While noting that the plaintiff bears the ultimate burden of proving that a trademark is valid and protectable, the court emphasized a strong presumption that a registered mark is valid and protectable, and that a defendant bears a heavy burden in overcoming that presumption at the summary judgment stage.
The Ninth Circuit concluded that Ross’s evidence not sufficient to overcome the presumption of validity, at least on summary judgment. Despite the dictionary evidence and the widespread use of the term “Mastermind,” the appellate court reasoned Ross’s evidence was not conclusive, and that a ration jury could find Caiz’s favor. The court remanded the case to the district court to consider in the first instance additional arguments raised by the parties, such as Ross’s fair use defense, which the lower court had declined to address in light of its rulings on the descriptiveness and invalidity of the mark.