Raul Caiz v. William Leonard Roberts, II et al

Filing 58

ORDER Re: DEFENDANTS' MOTION FOR SUMMARY JUDGMENT 44 by Judge Ronald S.W. Lew: The Court GRANTS Defendants' Requestfor Judicial Notice and the Court GRANTS Defendants' Motion for Summary Judgment. SEE ORDER FOR COMPLETE DETAILS. (jre)

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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12 RAUL CAIZ,
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Plaintiff,
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v.
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WILLIAM LEONARD ROBERTS II, )
)
aka MASTERMIND aka RICK
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ROSS, UNIVERSAL MUSIC
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GROUP, INC., DEF JAM
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RECORDS, INC., MAYBACH
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MUSIC GROUP, LLC,
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Defendants.
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CV No. 15-09044-RSWLAGRx
ORDER Re: DEFENDANTS’
MOTION FOR SUMMARY
JUDGMENT [44]

I. INTRODUCTION
Currently before the Court is Defendants William

23 Leonard Roberts II aka Mastermind aka Rick Ross
24 (“Roberts”), Universal Music Group, Inc. (“Universal”),
25 Def Jam Records, Inc., (“Def Jam”), and Maybach Music
26 Group, LLC’s (“Maybach”) (collectively, “Defendants”)
27 Motion for Summary Judgment [44].

The Court, having

28 reviewed all papers and arguments submitted pertaining
1

1 to this Motion, NOW FINDS AND RULES AS FOLLOWS:
2 Defendants’ Motion for Summary Judgment [44] is
3 GRANTED.
4

II. BACKGROUND

5 A. Factual Background
6

Plaintiff’s claims against Defendants include

7 Federal Trademark Infringement pursuant to 15 U.S.C. §
8 1114, a violation of the Lanham Act, 15 U.S.C. §
9 1125(a), Federal Trademark Dilution, Unfair Enrichment,
10 Unfair Competition, and Misappropriation.
11 39-65.
12 2.

Compl. ¶¶

Plaintiff is a hip-hop music artist.

Id. at ¶

Plaintiff owns the trademark rights to

13 “Mastermind.”
14 Id. at ¶ 3.

Id.

Roberts is also a hip-hop artist.

Plaintiff alleges Defendants have wilfully

15 infringed on Plaintiff’s trademark rights by releasing
16 an album entitled “Mastermind,” titling Roberts’ tour
17 “Mastermind,” and Roberts taking on the persona of
18 “Mastermind,” causing confusion in the marketplace.
19 Id.

Defendants filed a Counterclaim of cancellation of

20 the federal trademark registration under 28 U.S.C. §
21 2201(a) and 15 U.S.C. §§ 1119, 1064.

Counterclaim ¶ 5.

22 Defendants allege the “Mastermind” mark is invalid
23 because it is a generic and/or merely descriptive term
24 that has not acquired a secondary meaning and Plaintiff
25 has abandoned the mark.

Id. at ¶ 12.

26 B.

Procedural Background

27

On November 20, 2015, Plaintiff filed a Complaint

28 in this Court [1].

On February 16, 2016, Defendants
2

1 filed an Answer [18].

On February 18, 2016, Defendants

2 filed a Counterclaim against Plaintiff [22].

On March

3 8, 2016, Plaintiff filed an Answer to the Counterclaim
4 [23].

On October 7, 2016, Defendants filed the instant

5 Motion for Summary Judgment along with a Statement of
6 Undisputed Facts and Conclusions of Law [44][45].

On

7 October 7, 2016, Defendants also filed a Request for
8 Judicial Notice [46].

On October 18, 2016, Plaintiff

9 filed an Opposition to the Motion for Summary Judgment
10 along with a Statement of Disputed Facts and an
11 Opposition to Defendants’ Statement of Undisputed Facts
12 [52].

On October 25, 2016, Defendants filed a Reply

13 [53].
14

III. DISCUSSION

15 A.

Legal Standard

16

1.

17

Federal Rule of Civil Procedure 56 states that a

Motion for Summary Judgment

18 “court shall grant summary judgment” when the movant
19 “shows that there is no genuine dispute as to any
20 material fact and the movant is entitled to judgment as
21 a matter of law.”

Fed. R. Civ. P. 56(a).

A fact is

22 “material” for purposes of summary judgment if it might
23 affect the outcome of the suit, and a “genuine issue”
24 exists if the evidence is such that a reasonable fact25 finder could return a verdict for the non-moving party.
26 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
27 (1986).

The evidence, and any inferences based on

28 underlying facts, must be viewed in the light most
3

1 favorable to the opposing party.

Twentieth Century-Fox

2 Film Corp. v. MCA, Inc., 715 F.2d 1327, 1329 (9th Cir.
3 1983).

In ruling on a motion for summary judgment, the

4 court’s function is not to weigh the evidence, but only
5 to determine if a genuine issue of material fact
6 exists.
7

Anderson, 477 U.S. at 255.

Under Rule 56, the party moving for summary

8 judgment has the initial burden to show “no genuine
9 dispute as to any material fact.”

Fed. R. Civ. P.

10 56(a); see Nissan Fire & Marine Ins. Co. v. Fritz Cos.,
11 210 F.3d 1099, 1102-03 (9th Cir. 2000).

The burden

12 then shifts to the non-moving party to produce
13 admissible evidence showing a triable issue of fact.
14 Nissan Fire & Marine Ins., 210 F.3d at 1102-03; see
15 Fed. R. Civ. P. 56(a).

When a defendant moves for

16 summary judgment, summary judgment “is appropriate when
17 the plaintiff fails to make a showing sufficient to
18 establish the existence of an element essential to
19 [their] case, and on which [they] will bear the burden
20 of proof at trial.”

Cleveland v. Policy Mgmt. Sys.

21 Corp., 526 U.S. 795, 805–06 (1999); Celotex Corp. v.
22 Catrett, 477 U.S. 317, 322 (1986).
23

The standard for a motion for summary judgment

24 “provides that the mere existence of some alleged
25 factual dispute between the parties will not defeat an
26 otherwise properly supported motion for summary
27 judgement; the requirement is that there be no genuine
28 issues of material fact.”

Anderson, 477 U.S. at 2474

1 48.
2 B. Findings of Fact
3 1.

Plaintiff owns a federal registration in the

4

trademark “Mastermind.”

5

registration on December 24, 2005 and the

6

registration was approved on July 16, 2013 in

7

Classes 009 and 41, Registration No. 4,366,332.

8

Defs.’ Statement of Undisputed Facts ¶ 1; Compl. ¶

9

25.

Plaintiff applied for

10 2.

Class 009 consists of: audio recordings featuring

11

music; downloadable musical sound recordings;

12

downloadable video recordings featuring music;

13

musical sound recordings; musical video recordings;

14

pre-recorded CD’s, video tapes, laser disks and

15

DVD’s featuring music; video recordings featuring

16

music; visual recordings and audio visual

17

recordings featuring music and animation, excluding

18

content consisting of general knowledge questions,

19

quizzes and games.

20

consists of: Entertainment in the nature of live

21

performances by a performer or group;

22

[entertainment in the nature of visual and audio

23

performances, and musical, variety, news and comedy

24

shows; entertainment in the nature of visual and

25

audio performances, namely, musical band, rock

26

group, gymnastics, dance and ballet performances;

27

entertainment, namely, live performances by a

28

musical band;] entertainment services, namely,

Defs.’ Ex. 1.

5

Class 41

1

providing a web site featuring musical

2

performances, musical performances, musical videos,

3

related film clips, photographs, and other

4

multimedia materials; entertainment services,

5

namely, providing prerecorded music, information in

6

the field of music, and commentary and articles

7

about music, all on-line via a global computer

8

network, entertainment, namely, live music

9

concerts; entertainment, namely, live performances

10

by musical bands, excluding general knowledge

11

questions, quizzes, and games.

12 3.

On February 24, 2012, Plaintiff amended the

13

Statement of Use and deleted “video tapes, laser

14

disks and DVD’s featuring music.”

15

of Undisputed Facts ¶ 3.

Id.

Defs.’ Statement

16 C. Analysis
17

1.

18
19

Defendants’ Request for Judicial Notice is
Granted

As an initial matter, Defendants request the Court

20 take judicial notice of the United States Patent and
21 Trademark Office (“USPTO”) “File History” for
22 Registration No. 4,366,332 for the “Mastermind” mark
23 which was downloaded from the USPTO web site on
24 September 14, 2016.

Defs.’ Req. for Judicial Notice

25 1:2-12.
26

A court may take judicial notice of a fact that is

27 not subject to reasonable dispute because it “can be
28 accurately and readily determined from sources whose
6

1 accuracy cannot reasonably be questioned.”
2 Evid. 201(b)(2).

Fed. R.

Plaintiff did not object to the Court

3 taking judicial notice of the “File History.”

VMR

4 Products, LLC v. V2H ApS, No. 2:13-CV-7719-CBM-JEMX,
5 2016 WL 1177834, at *1 (C.D. Cal. Mar. 18, 2016).
6 Courts may also take judicial notice of “‘records and
7 reports of administrative bodies,’ file histories, and
8 application materials.”

Balance Studio, Inc. v.

9 Cybernet Entm’t, LLC, No. 15-CV-04038-DMR, 2016 WL
10 1559745, at *1 (N.D. Cal. Apr. 18, 2016)(quoting Mack
11 v. South Bay Beer Distributors, Inc., 798 F.2d 1279,
12 1282 (9th Cir. 1986)); see Oroamerica Inc. v. D&W
13 Jewelry Co., Inc., 10 F. App’x 516, 517 n.4 (9th Cir.
14 2001).
15

Because the document is not subject to reasonable

16 dispute, is capable of accurate and ready determination
17 by resort to sources whose accuracy cannot reasonably
18 be questioned, and is a matter of public record, see
19 Lee v. City of L.A., 250 F.3d 668, 689 (9th Cir. 2001),
20 the Court GRANTS Defendants’ Request for Judicial
21 Notice of the “File History” for Registration No.
22 4,366,332 for the “Mastermind” mark.
23

2.

The Trademark for “Mastermind” Should be

24

Cancelled because it is a Descriptive Term and

25

has not Acquired Secondary Meaning

26

Courts have the power to order the cancellation of

27 registrations in whole or in part.

15 U.S.C. § 1119.

28 Defendants contend the registration for “Mastermind”
7

1 should be cancelled because it is a descriptive term
2 that has failed to acquire secondary meaning.
3 5:4-10.

Mot.

Plaintiff argues that the mark is not

4 descriptive but suggestive entitling the mark to
5 trademark protection.

Opp’n 8:20.

Even if it is

6 descriptive, it has acquired secondary meaning.

Id. at

7 12:10-12.
8

“When a plaintiff pursues a trademark action

9 involving a properly registered mark, that mark is
10 presumed valid, and the burden of proving that the mark
11 is generic rests upon the defendant.”

Solid 21, Inc.

12 v. Hublot of America, 109 F. Supp. 3d 1313, 1322 (C.D.
13 Cal. 2015)(citing Yellow Cab Co. of Sacramento v.
14 Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 927 (9th
15 Cir. 2005)).

While 15 U.S.C. § 1115(a) does state that

16 a registration is admissible and is “prima facie
17 evidence of the validity of the registered mark and of
18 the registration of the mark,” the section goes on to
19 say that it “shall not preclude another person from
20 proving any legal or equitable defense or defect.”
21 Therefore, while there is a presumption of validity,
22 Defendants can attack that presumption on a motion for
23 summary judgment.
24

Courts have classified trademarks in one of five

25 categories of increasing distinctiveness: (1) generic,
26 (2) descriptive, (3) suggestive, (4) arbitrary, or (5)
27 fanciful.

Solid 21, 109 F. Supp. 3d at 1323 (citing

28 Zobmondo Entm't, LLC, v. Falls Media, LLC, 602 F.3d
8

1 1108, 1113 (9th Cir. 2010)).

The last three

2 classifications are automatically protected “because
3 they identify a product’s source.”

Id. (citing Yellow

4 Cab, 419 F.3d at 927). “‘[D]escriptive marks, which
5 describe the qualities or characteristics of a product,
6 may be registered only if the holder of the mark shows
7 that the mark has acquired distinctiveness through
8 secondary meaning.’”

Id. (quoting KP Permanent

9 Make–Up, Inc. v. Lasting Impression I, Inc., 408 F.3d
10 596, 602 (9th Cir. 2005)); see also Zobmondo Entm’t,
11 602 F.3d at 1113 (finding descriptive marks must have
12 secondary meaning to be protected).
13

Courts look to the thought process from the mark to

14 the actual product finding that “[i]f the mental leap
15 between the word and the product's attribute is not
16 almost instantaneous, this strongly indicates
17 suggestiveness, not direct descriptiveness.”
18 Self-Realization Fellowship Church v. Ananda Church of
19 Self-Realization, 59 F.3d 902, 911 (9th Cir.
20 1995)(citations omitted).

“A trademark is descriptive

21 if it describes the product to which it refers or its
22 purpose.”

Self-Realization Fellowship, 59 F.3d at 910

23 (citations omitted).

A trademark is suggestive “if

24 ‘imagination’ or a ‘mental leap’ is required in order
25 to reach a conclusion as to the nature of the product
26 being referenced.”

Lahoti v. VeriCheck, Inc., 586 F.3d

27 1190, 1198 (9th Cir. 2009)(quoting Filipino Yellow
28 Pages, Inc. v. Asian Journal Publ'ns, Inc., 198 F.3d
9

1 1143, 1147 n.3 (9th Cir. 1999)).
2

A court’s determination of whether a mark is

3 suggestive or descriptive is not as clear as one would
4 hope and is not as objective as one would think.
5 Zobmondo Entm’t, 602 F.3d at 1114; Lahoti, 586 F.3d at
6 1197.

The dictionary definition may be relevant in the

7 analysis of whether a mark is descriptive because it
8 shows how the public may view the mark and what, if
9 any, mental step is needed.

Zobmondo Entm’t, 602 F.3d

10 at 1116; see Surgicenters of Am., Inc. v. Med. Dental
11 Surgeries, Co., 601 F.2d 1011, 1015 n.11 (9th Cir.
12 1979)(“While not determinative, dictionary definitions
13 are relevant and often persuasive in determining how a
14 term is understood by the consuming public . . .”); cf.
15 Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1142
16 (9th Cir. 2002)(holding that “Entrepreneur” is merely
17 descriptive as the name of a magazine because an
18 “entirely unimaginative, literal-minded person” would
19 understand its meaning).
20

The issue for the Court to determine is whether

21 “Mastermind” is descriptive with respect to Plaintiff’s
22 audio and visual recordings, live performances, and the
23 other goods and services in Classes 009 and 41.

It is

24 difficult for the Court to conclude, as Plaintiff
25 suggests, that a consumer would need to make a mental
26 leap to conclude that “Mastermind” is attributed to
27 Plaintiff’s goods and services.

“Descriptive terms

28 ‘describe[ ] a person, a place or an attribute of a
10

1 product.’”

Japan Telecom, Inc. v. Japan Telecom

2 America Inc., 287 F.3d 866, 872 (9th Cir. 2002)
3 (quoting New Kids on the Block v. New Am. Publ'g, Inc.,
4 971 F.2d 302, 306 (9th Cir. 1992)).

Defendants assert

5 that “Mastermind” is descriptive as it applies to
6 “creative artists,” based on Oxford Dictionary’s
7 definition of “Mastermind” as “a person with an
8 outstanding intellect” and the first usage example
9 references “an eminent musical mastermind.”
10 15.

Reply 6:5-

Plaintiff utilizes Merriam-Webster’s definition of

11 “Mastermind” which means “to plan and organize
12 something” as a noun and as a verb “a person who plans
13 and organized something.”

Opp’n 7:16-20.

Of interest,

14 Merriam-Webster also includes a definition of
15 “Mastermind” as “a person who supplies the directing or
16 creative intelligence for a project.”
17 https://www.merriam-webster.com/dictionary/mastermind.
18

Moreover, the overwhelming evidence provided by

19 Defendants—that so many others in the rap industry have
20 utilized the mark “Mastermind” in album titles, web
21 sites, and song lyrics—refutes Plaintiff’s assertion
22 that such a mental leap or imagination is required to
23 attribute “Mastermind” to audio and visual recordings,
24 audio recordings featuring music, musical video
25 recordings, live performances, and other goods and
26 services noted in Classes 009 and 41.

Therefore, the

27 Court finds that the “Mastermind” mark is descriptive.
28

The question of whether a trademark has acquired
11

1 secondary meaning is one of fact.

Levi Strauss & Co.

2 v. Blue Bell, Inc., 778 F.2d 1352, 1355 (9th Cir. 1985)
3 (en banc).

However, that does not preclude the Court,

4 on a motion for summary judgment, from determining
5 whether Plaintiff has provided a genuine issue of
6 material fact as to whether a mark has obtained
7 secondary meaning.

Yellow Cab, 419 F.3d at 930.

8 Plaintiff needs to provide enough evidence showing
9 secondary meaning to establish a genuine dispute of
10 fact.

Japan Telecom, 287 F.3d at 873; see Fed. R. Civ.

11 P. 56(e).
12

If a trademark that is descriptive lacks secondary

13 meaning, it is invalid.

Bada Co. v. Montgomery Ward &

14 Co., 426 F.2d 8, 11 (9th Cir. 1970).

To acquire

15 secondary meaning, section 1052(f) requires that the
16 mark must have become “distinctive of the applicant's
17 goods.”

15 U.S.C. § 1052(f); Filipino Yellow Pages,

18 198 F.3d at 1147.

“The basic element of secondary

19 meaning is a mental recognition in buyers' and
20 potential buyers' minds that products connected with
21 the [mark] are associated with the same source.”

Levi

22 Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 820
23 (9th Cir. 1980).

A mark has acquired secondary meaning

24 if buyers and potential buyers automatically associate
25 the mark with Plaintiff.

Self-Realization Fellowship,

26 59 F.3d at 911–12 (holding Plaintiff failed to
27 establish “Self-Realization” acquired secondary meaning
28 because members of the American Hindu–Yoga community
12

1 believed the mark was a spiritual state of mind and did
2 not automatically associate a “Self-Realization”
3 product with Plaintiff).
4

There are many ways to establish if a trademark has

5 acquired secondary meaning.

These include: direct

6 consumer testimony; survey evidence; amount of sales
7 and number of customers; established place in the
8 market; and proof of intentional copying by the
9 defendant.

Filipino Yellow Pages, 198 F.3d at 1151.

A

10 plaintiff “‘must show that the primary significance of
11 the term in the minds of the consuming public is not
12 the product but the producer.’”

Transgo, Inc. v. Ajac

13 Transmission Parts Corp., 768 F.2d 1001, 1015 (9th Cir.
14 1985)(quoting Kellogg Co. v. National Biscuit Co., 305
15 U.S. 111, 118 (1938)).

Other factors to consider

16 include: “(1) whether actual purchases of the product
17 bearing the claimed trademark associate the trademark
18 with the producer, (2) the degree and manner of
19 advertising under the claimed trademark, (3) the length
20 and manner of use of the claimed trademark, and (4)
21 whether use of the claimed trademark has been
22 exclusive.”

Id. (citing 1 Gilson, Trademark Protection

23 & Practice, § 2.09[1]).

Expert surveys can be

24 extremely persuasive as evidence of secondary meaning.
25 Levi Strauss, 778 F.2d at 1358.
26

Plaintiff argues that there is confusion in the

27 marketplace between Plaintiff and Roberts.
28 26.

Opp’n 6:23-

However, Plaintiff has not provided any evidence
13

1 to show this actual confusion.

His personal and

2 conclusory statements and assertions are not enough.
3 Japan Telecom, 287 F.3d at 873–75 (finding that two
4 incorrectly addressed pieces of mail was not sufficient
5 to show actual confusion that buyers had come to
6 associate “Japan Telecom” with just one company).

The

7 court in Japan Telecom held that Plaintiff’s
8 advertising from 1984 was not sufficient to establish
9 secondary meaning because when looking to the amount,
10 nature, and geographical scope of the advertisement,
11 there was not sufficient evidence that the mark was
12 used in a way “that any more than a small set of buyers
13 had gained any familiarity with it” since the
14 advertisement was geared to the Japanese community in
15 Southern California.
16

Id. at 873–75.

Plaintiff has failed to show a genuine issue of

17 material fact that disproves Defendants assertion that
18 there are numerous artists, web sites, album titles,
19 and song lyrics that all utilize “Mastermind” in one
20 form or another.

Mot. 3:16-27; 4; Defs.’ Statement of

21 Undisputed Facts ¶¶ 22-24.

Plaintiff’s argument that

22 the fact the social media platform Myspace currently
23 has dozens of musicians utilizing “Mastermind” is
24 irrelevant because the website is not a relevant,
25 active, or popular website is unavailing.
26 to Disputed Facts 11:20-13:12.

Pl.’s Opp’n

The fact that a website

27 is not as popular as it once was does not change the
28 fact that it does exist and there are other artists
14

1 utilizing “Mastermind” in one form or another.
2

Additionally, Plaintiff fails to create a genuine

3 dispute of fact that “Mastermind” is widely used as a
4 descriptive term by other rappers, in album titles, and
5 song lyrics by his statement that he is the only hip6 hop artist who owns the trademark for “Mastermind.”
7 The fact that he is the only registered trademark owner
8 of “Mastermind” does not change the very fact that it
9 is being used by others.

And Plaintiff’s conclusory

10 statement that he is the only person in the hip-hop
11 industry on the West Coast to use it does not create an
12 issue of fact.

Without actual evidence, Plaintiff

13 fails to show that buyers or potential buyers would
14 only connect “Mastermind” to Plaintiff.

Defendants

15 have shown the numerous other uses of “Mastermind” by
16 other individuals making it clear that use of the
17 trademark has not been exclusive.
18 I.

Defs.’ Exs. F, G, H,

These include: a Myspace search of “Mastermind”

19 with numerous results of other individuals using
20 “Mastermind” (not only Plaintiff) and several articles
21 and web sites depicting artists using “Mastermind” in
22 song titles, album names, as an artist name, or in
23 reference to a characteristic of an artist.
24

Id.

While Plaintiff did provide flyers purportedly

25 showing him using “Mastermind” for performances at
26 various venues, the advertisements did not include the
27 years of the performances.

Pl.’s Ex. D.

However,

28 assuming they are for performances throughout numerous
15

1 years, this alone is not sufficient to conclude the
2 mark has acquired a secondary meaning.

Morever, while

3 Plaintiff provides a screenshot of some of his songs
4 for sale on the website iTunes as “Mastermind,”
5 Plaintiff has failed to create a genuine issue of
6 material fact that the mark has become “distinctive of
7 the applicant's goods” and that buyers automatically
8 associate the “Mastermind” mark with Plaintiff’s goods
9 or services, in light of Defendants’ overwhelming
10 evidence of the mark’s use by other individuals and
11 entities.

Pl.’s Ex. L; Defs.’ Exs. F, G, H, I;

12 Filipino Yellow Pages, 198 F.3d at 1147;
13 Self-Realization Fellowship, 59 F.3d at 911–12.
14

For the reasons set forth above, Plaintiff does not

15 have a protectable trademark in the “Mastermind” mark
16 because it is descriptive and has not acquired
17 secondary meaning.

Summary judgment is granted in

18 favor of Defendants as to its counterclaim.
19

The Court notes that Defendants also argued the

20 trademark should be cancelled for several other reasons
21 including: 1) Plaintiff used the mark as a signature
22 and not a source identifier, Mot. 5:11-16, 2) Plaintiff
23 failed to use the mark in commerce in connection with
24 all of the goods listed in Class 009, id. at 9:15-17,
25 3) Plaintiff committed fraud upon the USPTO in
26 obtaining the trademark, id. at 11:4-6, and 4)
27 Plaintiff abandoned the mark.

Mot. 12:6-9.

As the

28 Court has determined the mark should be cancelled
16

1 because it is a descriptive term and it has not
2 acquired secondary meaning, the Court declines to go
3 through the unnecessary analysis of the additional
4 arguments Defendants assert to support cancellation of
5 the trademark.
6

3.

There is no Genuine Issue of Material Fact

7

as to Plaintiff’s Federal Dilution Claim

8

and Summary Judgment Should be Granted in Favor

9

of Defendants as to this Claim

10

Defendants also request summary judgment as to

11 Plaintiff’s federal dilution claim because Plaintiff’s
12 use of “Mastermind” is not famous.

Mot. 14:1-4.

To be

13 successful on a claim for dilution, a party must show
14 “that (1) the mark is famous and distinctive; (2) the
15 defendant is making use of the mark in commerce; (3)
16 the defendant’s use began after the mark became famous;
17 and (4) the defendant’s use of the mark is likely to
18 cause dilution by blurring or dilution by tarnishment.”1
19
20
21
22
23
24
25
26
27
28

1

A mark is famous “if it is widely recognized by the
general consuming public of the United States as a designation of
source of the goods or services of the mark’s owner.” 15 U.S.C.
§ 1125(c)(2)(A). Courts may consider the following factors in
determining if a mark is sufficiently recognizable including:
“(i) the duration, extent, and geographic reach of advertising
and publicity of the mark, whether advertised or publicized by
the owner or third parties; (ii) the amount, volume, and
geographic extent of sales of goods or services offered under the
mark; (iii) the extent of actual recognition of the mark; (iv)
whether the mark was registered under the Act of March 3, 1881,
or the Act of February 20, 1905, or the principal register.” Id.
at § 1125(c)(2)(A). Dilution by blurring is an “association
arising from the similarity between a mark or trade name and a
famous mark that impairs the distinctiveness of the famous mark.”
Id. at § 1125(c)(2)(B). Courts may consider the following
17

1 Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th
2 Cir. 2007); 15 U.S.C. § 1125(c)(1).

The finding of a

3 mark as famous is “a rigorous standard, as it extends
4 protection only to highly distinctive marks that are
5 well-known throughout the country.”

Green v. Fornario,

6 486 F.3d 100, 105 (3d Cir. 2007).
7

Plaintiff’s “Mastermind” mark is not famous because

8 as the Court discussed above, it is merely descriptive
9 without secondary meaning.

Plaintiff has failed to

10 show that “Mastermind” is “widely recognized by the
11 general consuming public of the United States as a
12 designation of source of the goods or services” of the
13 mark Plaintiff owns.

15 U.S.C. § 1125(c)(1).

While

14 Plaintiff alleges he has used the mark for nearly
15 eighteen years, Plaintiff fails to show the extent and
16 geographic reach of advertising and publicity of the
17 mark.

See Jada Toys, Inc., 518 F.3d at 635 (holding

18 that 350 million dollars expended in advertising the
19 mark, three billion units bearing the mark having been
20
21 factors to determine if a mark is likely to cause dilution by
22 blurring: (i) the degree of similarity between the mark or trade
23
24
25
26
27
28

name and the famous mark; (ii) the degree of inherent or acquired
distinctiveness of the famous mark; (iii) the extent to which the
owner of the famous mark is engaging in substantially exclusive
use of the mark; (iv) the degree of recognition of the famous
mark; (v) whether the user of the mark or trade name intended to
create an association with the famous mark; (vi) any actual
association between the mark or trade name and the famous mark.”
Id. Dilution by tarnishment is an “association arising from the
similarity between a mark or trade name and a famous mark that
harms the reputation of the famous mark.” Id. at §
1125(c)(2)(C).
18

1 sold, and the units bearing the mark having been sold
2 in all fifty states and throughout the work supported a
3 finding that HOT WHEELS was famous).

Additionally,

4 Plaintiff provided the Court with no evidence of the
5 amount, volume, and geographic extent of the total
6 sales of his goods under the “Mastermind” mark.

In his

7 declaration and disputed material facts, Plaintiff
8 states that as early as 1999, he sold pre-recorded CD’s
9 and his audio recordings were available for purchase as
10 early as 2006 via SNOCAP download, which is a digital
11 rights company and downloading software.
12 16.

Opp’n 5:10-

However, Plaintiff provides absolutely no

13 documentation to support those contentions that creates
14 a genuine issue of fact that the mark is famous.
15

Moreover, there is no evidence of actual

16 recognition of the mark, as Plaintiff failed to even
17 address Defendants’ request for summary judgment as to
18 Plaintiff’s dilution claim.2

Such things as surveys or

19
2

Defendants request sanctions against Plaintiff for
20 Plaintiff’s failure to meet and confer in good faith pursuant to
21 Local Rule 7-3 as to Plaintiff’s federal dilution claim because

22
23
24
25
26
27
28

Plaintiff did not reconsider its position in dismissing this
claim after Defendants advised Plaintiff of the lack of merit of
the claim and Plaintiff did not even mention the claim in its
Opposition. Reply 2:5-22. While the Court encourages parties to
attempt resolution of disputes during the meet and confer
process, the fact that Plaintiff did not dismiss this claim after
what Defendants believe was compelling evidence of a lack of
merit of the claim or Plaintiff’s failure to address the claim in
its Opposition is not grounds for sanctions. The Court will not
assume why Plaintiff failed to dismiss the claim after conferring
with Defendants or why Plaintiff failed to specifically address
the federal dilution claim in its Opposition. The Court denies
Defendants request for sanctions against Plaintiff.
19

1 expert opinion, or the lack thereof, weigh heavily in
2 finding whether there is actual recognition of a mark
3 and that it is famous.

Network Automation, Inc. v.

4 Hewlett-Packard Co., No. CV 08-4675-JFW-RZX, 2009 WL
5 5908719 at *10-11 (C.D. Cal. Sept. 14, 2009); see Visa
6 International Service Association v. JSL Corp., 590 F.
7 Supp. 2d 1306, 1315 (D. Nev. 2008) (holding “that a
8 survey by plaintiff's expert demonstrating that 99
9 percent of respondents were aware of the VISA brand
10 weighed heavily in favor of a finding of fame.”)
11

The Ninth Circuit has held that “[d]ilution is a

12 cause of action invented and reserved for a select
13 class of marks-those marks with such powerful consumer
14 association that even non-competing uses can impinge on
15 their value.”

Avery Dennison Corp. v. Sumpton, 189

16 F.3d 868, 875 (9th Cir. 1999).

Courts have held that

17 for a mark to be famous, it must be “truly prominent
18 and renowned.”

Id. at 875; (quoting I.P. Lund Trading

19 ApS v. Kohler Co., 163 F.3d 27, 46 (1st Cir. 1998)).
20

While Plaintiff has had a lengthy professional

21 career in the hip-hop industry, there is no evidence
22 that the “Mastermind” mark is so “widely recognized by
23 the general consuming public of the United States” as
24 it relates to identifying Plaintiff and his goods and
25 services.

15 U.S.C. § 1125(c)(2)(A).

At the very

26 least, Plaintiff has failed to provide any supported
27 factual disputes that would call this conclusion into
28 question.
20

1

As the mark is not famous, there is no issue of

2 fact as to whether Defendants’ use began after the mark
3 became famous.

Since Plaintiff failed to provide the

4 Court with any genuine issue of material fact as to
5 whether the “Mastermind” mark is famous, the Court need
6 not analyze whether Defendants are making use of the
7 mark in commerce or whether Defendants’ use of the mark
8 is likely to cause dilution by blurring or dilution by
9 tarnishment.

As such, summary judgment is granted in

10 favor of Defendants on Plaintiff’s federal dilution
11 claim.
12
13
14

4.

There May be a Genuine Issue of Material Fact
as to Defendants’ Fair Use Defense

Defendants also request summary judgment as to

15 Plaintiff’s claims because its use of “Mastermind” is
16 subject to the fair use defense.

Mot. 17:13.

17 Plaintiff counters this argument in citing a Third
18 Circuit case and states that fair use is not a defense
19 for a registered trademark, only for copyright
20 infringement.

Opp’n 18:24-19:4.

Defendants are

21 correct that Plaintiff has misread the holding of
22 Century 21 Real Estate Corp. v. Lendingtree, Inc., 425
23 F.3d 211, 233 (3d Cir. 2005).

It was in the dissent

24 that Judge Fisher articulated his opinion that
25 nominative fair use is not a valid affirmative defense
26 to trademark infringement.
27

Fair use is a valid affirmative defense to

28 trademark infringement.

Bauer Bros., LLC v. Nike,
21

1 Inc., 159 F. Supp. 3d 1202, 1212–13 (S.D. Cal. 2016).
2 There are two types of fair use that can be asserted as
3 an affirmative defense, classic and nominative.

15

4 U.S.C. § 1115(b); Cairns v. Franklin Mint Co., 292 F.3d
5 1139, 1150 (9th Cir. 2002).

Classic fair use is

6 employed when a defendant has used a plaintiff’s mark
7 to describe his own product while nominative fair use
8 is employed when a defendant has used a plaintiff’s
9 mark to describe the plaintiff’s product.
10 F.3d at 1150.

Cairns, 292

Classic fair use involves a defendant’s

11 use of a descriptive term in its “primary, descriptive
12 sense.”

Id. at 1151; Fortune Dynamic, Inc. v.

13 Victoria's Secret Stores Brand Management, Inc., 618
14 F.3d 1025, 1031 (9th Cir. 2010).

The purpose of the

15 fair use defense is to prevent any one individual from
16 obtaining a monopoly of a descriptive term simply by
17 trademarking it first.
18 1039.

Fortune Dynamic, 618 F.3d at

Here, Defendants are asserting a classic fair

19 use defense to trademark infringement.
20

Reply 4:12-14.

To successfully assert a classic fair use defense a

21 defendant must show: “1) [d]efendant's use of the term
22 is not as a trademark or service mark; 2) [d]efendant
23 uses the term ‘fairly and in good faith;’ and 3)
24 [d]efendant uses the term ‘only to describe its goods
25 or services.’”
26 1115(b)).

Cairns, 292 F.3d at 1151; 15 U.S.C. §

Classic fair use is not available as a

27 defense if there is a likelihood of confusion as to the
28 ///

22

1

origin of the product.3

Bauer Bros., 159 F. Supp. 3d

2 at 1212–13.
3

Defendants fail to go through each factor relevant

4 in determining whether its use of “Mastermind” is
5 entitled to the fair use defense.

The only argument

6 Defendants raise to assert this defense is that
7 “Mastermind” has been so widely used as a descriptive
8 term and Defendants did not intend that consumers
9 recognize its works by that identifier.

Mot. 17:21-28.

10 Plaintiff fares no better in showing there is a genuine
11 issue of material fact as to this defense because its
12 contention is that fair use is not even a valid defense
13 to trademark infringement (which it is) and that
14 “Mastermind” is not merely a descriptive term.
15 18:24-19:12.

Opp’n

As summary judgment is granted as to the

16 cancellation of the trademark and Plaintiff’s federal
17 dilution claim, the Court declines to parse through the
18 parties’ lackluster arguments to go through an
19 unnecessary analysis.

Summary judgment as to

20
21

3

Courts have used the factors utilized in determining

22 whether there is a likelihood of confusion in determining
trademark infringement from AMF Inc. v. Sleekcraft Boats, 599

23 F.2d 341, 348-49 (9th Cir. 1979) abrogated on other grounds by
Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th

24 Cir. 2003) in determining if there is a likelihood of confusion
a fair
asserted.
25 whenstrengthuse defense is2) proximityThose factors include: 1)
the
of the mark;
of the goods; 3)
26 similarity of the marks; 4) evidence of actual confusion; 5)
27
28

marketing channels used; 6) type of goods and the degree of care
likely to be exercised by the purchaser; 7) defendant’s intent in
selecting the mark; and 8) the likelihood of expansion of the
product lines.
23

1 Defendants’ fair use defense is denied.
2

Defendants also raise an argument as to the

3 limitations on Plaintiff’s damages for any alleged
4 infringement because of Plaintiff’s failure to provide
5 actual notice by failing to use the ® symbol pursuant
6 to 15 U.S.C. § 1111.

Mot. 18:5-22.

For the same

7 reasons stated above, this analysis is moot and the
8 Court declines to address this argument.
9

Each of Plaintiff’s claims is dependent on its

10 ownership of a protectable trademark and Defendants’
11 alleged infringement of the trademark “Mastermind.”4
12 Because the Court concludes that “Mastermind” is
13 descriptive and has not acquired secondary meaning
14 thereby not entitling the mark to trademark protection
15 and the Court’s granting of summary judgment as to
16 Plaintiff’s Federal Dilution Claim, summary judgment as
17 to Plaintiff’s remaining claims of unfair competition,
18 unjust enrichment, and misappropriation is also
19
20
21
22
23
24
25
26
27
28

4

Solid 21, 109 F. Supp. 3d at 1322; see 15 U.S.C. §
1114(1); Lahoti, 586 F.3d at 1197 (“to state a claim under 15
U.S.C. § 1114(1), plaintiff must prove ownership of a valid
mark”); 15 U.S.C. § 1125(a); Int'l Order of Job's Daughters v.
Lindeburg & Co., 633 F.2d 912, 917 (9th Cir. 1980) (“test for
claims under 15 U.S.C. §§ 1114 and 1125(a) are the same”);
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1153 (9th
Cir.2002)(“dismissing claims under California's [Unfair
Competition Law] as ‘substantially congruent’ to claims under the
Lanham Act”)(internal quotation marks and citations omitted);
Glow Indus., Inc. v. Lopez, 252 F. Supp. 2d 962, 975 n.90 (C.D.
Cal. 2002)(“standard under Lanham Act for trademark infringement
and unfair competition is the same, and actions under
California's [Unfair Competition Law] for state claims . . . for
unfair competition are ‘substantially similar to’ comparable
federal claims.”)
24

1 granted.5
2
3

IV. CONCLUSION
Accordingly, the Court GRANTS Defendants’ Request

4 for Judicial Notice and the Court GRANTS Defendants’
5 Motion for Summary Judgment.
6 IT IS SO ORDERED.
7 DATED: December 15, 2016

s/

8

HONORABLE RONALD S.W. LEW
Senior U.S. District Judge

9
10
11
12

5

In Toho Co., Ltd. v. Sears, Roebuck & Co., 645 F.2d 788,

13 794 (9th Cir. 1981), the Ninth Circuit stated that Plaintiff
failed to cite to any cases extending a misappropriation theory

14 to trademark infringement and that California courts would also
not extend such theory to a claim for trademark infringement.

15 Bell v. Harley Davidson Motor Co., 539 F. Supp. 2d 1249, 1256
(S.D. Cal. 2008) (“Black-letter law holds that California's
16 common-law doctrine of misappropriation does not extend to
17 trademark infringement claims.”)
18
19
20
21
22
23
24
25
26

Courts have also held that
unjust enrichment is not a separate cause of action but a form of
relief. Klein Electronics, Inc. v. Boxwave Corp., No. 10-CV2197- WQH-(POR), 2011 WL 2560238, at *5 (S.D. Cal. June 27,
2011)(citing Johns v. Bayer Corp., No. 09-cv-1935–DMS, 2010 WL
476688, at *6 n.3 (S.D. Cal. Feb. 9, 2010) (“While a split of
authority appears to exist on this issue, this Court agrees with
those courts that conclude unjust enrichment is not a separate
claim.”); McBride v. Boughton, 123 Cal. App. 4th 379, 387 (2004)
(“Unjust enrichment is not a cause of action . . . or even a
remedy, but rather a general principle, underlying various legal
doctrines and remedies. It is synonymous with restitution.”)
(internal citations omitted); see also McKell v. Wash. Mut.,
Inc., 142 Cal. App. 4th 1457, 1490 (2006) (“There is no cause of
action for unjust enrichment. Rather, unjust enrichment is a
basis for obtaining restitution based on quasi-contract or
imposition of a constructive trust.”) (citation omitted)

27
28
25