By Cheryl Beise, J.D.
The federal district court in Los Angeles erred in finding on summary judgment that the registered mark MASTERMIND owned by a hip-hop musician named Raul Caiz was merely descriptive and without secondary meaning, the U.S. Court of Appeals in San Francisco has held. The evidence presented by the defendants accused of infringing the mark fell short of meeting the heavy burden required to show that no reasonable jury could find that the mark was suggestive. The district court’s finding of invalidity and its order of cancellation was reversed and the case remanded (Caiz v. Roberts, June 15, 2018, per curiam).
Hip-hop musician Raul Caiz owns a federal registration for the mark MASTERMIND for videos and sound recordings in International Class 9 and entertainment services in Class 41. Caiz filed suit against well-known hip-hop artist William Leonard Roberts II (aka Rick Ross aka Mastermind) and music recording and publishing companies for infringing and diluting Caiz’s registered MASTERMIND trademark. In December 2016, the district court granted the defendants’ motion for summary judgment, finding that Caiz’s mark was merely descriptive and has not acquired secondary meaning. In March 2017, the court denied the defendants’ request for attorney fees. Caiz appealed.
On appeal, Caiz argued that the district court erred when it determined that he could not prevail on his trademark infringement claim because his registered mark was not a "valid, protectable trademark," and when it directed cancellation of the registration. The Ninth Circuit agreed.
Because a registered mark is presumed valid, the defendant bears the burden to overcome the presumption of validity. The burden of proving invalidity is particularly heavy on summary judgment, the court said.
In this case, the defendants presented some evidence that Caiz’s MASTERMIND mark was descriptive rather than suggestive, but the evidence "was not weighty enough to overcome presumption of validity at summary judgment," in the court’s view. In particular, the evidence did not demonstrate that there was no factual dispute that no mental leap or imagination would be needed to connect the mark to the products covered.
One dictionary definition that used the word "mastermind" with reference to a musician, did not establish that musicians (or hip hop musicians in particular) necessarily come to mind when the word is used. Evidence that other musicians have called themselves masterminds also fell short. While the widespread use of the word itself by others might weaken the strength of the MASTERMIND mark, it did not conclusively demonstrate that competitors needed to use the word to fairly describe their products, the court said.
Overall, the evidence presented in the motion for summary judgment did not demonstrate that no rational juror could find in favor of Caiz. The court’s summary judgment ruling of invalidity was reversed as was its order of cancellation.
This case is No. 17-55051.
Attorneys: Sevag Demirjian (Demirjian Law Offices) for Raul Caiz. Joshua S. Hodas (Lewis Brisbois Bisgaard & Smith LLP) for William Leonard Roberts II a/k/a Mastermind a/k/a Rick Ross.
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