William Leonard Roberts II has kept lawyers and judges busy with his apparent identity crisis, manifest large in his reach for noms de guerre. He was just back in the U.S. Ninth Circuit Court of Appeals, where three judges slapped down his latest claim with a reminder that a powerful fellow takes even more seriously than Roberts may this whole business of naming: And when Uncle Sam decides to issue a trademark on a handle, rappers cannot mess lightly with his protections.
The latest legal kerfuffle for Roberts, a Grammy-nominated rapper aka Rick Ross, involved another pseudonym he uses, the Mastermind, which the appellate judges found may infringe on mark rights of Raul Caiz, a California hip-hop artist. Caiz rapped to the federal court in his 2015 suit that he held the Mastermind mark, and asserted that a crew wrongfully used it. He named Roberts II, Def Jam Recordings Inc., Mayback Music Group LLC, and Universal Music Group Inc. in his infringement action, claiming his musical career was built on his legally protected name, which he properly had secured the rights to. He asserted his career was destroyed after Ross released his album Mastermind.
A federal district court in Los Angeles in 2016 doubted his assertions, granting Ross and the record companies a summary judgment and cancelling Caiz’s mark registration, finding it descriptive and lacking an acquired, secondary meaning.
But judges of the higher court rapped the legal knuckles of Senior U.S. District Judge Ronald SW Lew for dismissing Caiz’s case. The unanimous appellate panel overturned and remanded the case to Lew, siding with Caiz. They said “mastermind” is not merely a descriptive term, it had been accorded mark protection by the U.S. Patent and Trademark Office and courts were not to trifle with that designation. While Ross and the record companies had presented some evidence the mark could not be protected, that presentation was insufficient to overcome the presumption of the TM validity at summary judgment.
“A dictionary definition that uses the word ‘mastermind’ with reference to a musician, is far from establishing that musicians necessarily come to mind when the word is used,” Mark W. Bennett, a federal judge from Iowa sitting by designation, wrote for the appellate panel. “Evidence that other musicians have called themselves masterminds does not establish that the word is necessarily descriptive in this instance.”
The panel also reversed Lew’s cancellation of the Caiz’s registration. The judges asked Lew to reconsider Caiz’s arguments, including a fair use defense. LAW360’s legal analyst Dorothy Atkins reported that Caiz’s attorney, Sevag Demirjian, had stated in an email “This is a big win for all artist who follow the rules and properly protect their work, as the court did not allow a major star backed by a big label to come in and destroy an independent artist’s efforts.”
As for Roberts, rap fans might wish to take due notice that this is his second sojourn up to the appellate courts over a nom de guerre. He struggled to win an earlier, First Amendment tussle with a Los Angeles drug trafficker for the notorious right to call himself Rick Ross to start. With all his naming-focused hustlin’, how soon, though, before this talent and his legal team catch on to the reality that substantial musical might and not self-titling can carry a day, as this now 25-year-old scrap of memorable evidence might underscore: