Celebrity and the Law: The Rick Ross Case Study
Common Law confers particular protection to celebrities. Such protections are premised on the uniqueness of celebrity life, which entails rights and perils others are not privy to enjoy.
The bolstering of protection arises from two principal facts. First, celebrities are particularly prone to encroachments on privacy. Most humans go about their life anonymously, bereft of external curiosity. By contrast, the enjoyment of privacy is directly proportionate to one’s level of celebrity. In other words, the more famous a person is the less privacy he will be seen to enjoy.
The second aspect of celebrity status relates to marketability. Celebrities often use their image or likeness for capital gain. Products bearing celebrities’ names and faces can be found in any North American supermarket. Others appear in commercials, pitching everything from jewellery to barbecue grills. The value of celebrity status takes on a life of its own. The power of mass influence will often confer legitimacy to products they endorse. American rap artist Jay-Z once captured this reality, stating, “I’m not a businessman; I’m abusiness, man!”
One of the prime instruments at celebrities’ disposal is trade marking. Much like the trade marking of a brand name and logo, celebrities may trademark their name, image, and likeness. The impetus again arises from their relations with the outside world. Without trademarks, celebrities could see their image used for commercial gain without compensation. Products could be advertised with endorsements from celebrities who never consented to the use of their image. This does not comport with the postulates of our socioeconomic order.
The protection of celebrities’ corporate personality is thus construed as a property right. Separate from the individual’s legal personality, this property right can be owned, sold, jointly held or licensed to external actors. Infringement can be sued in civil court, and will often result in windfall damages. This was precisely the objective of one Rick Ross, who sued a famous rap artist for trademark infringement.
The Rick Ross Case Study
The case of Ross v. Roberts is a textbook example of celebrity justice. The story begins with a gentleman by the name of Rick Ross. Better known as “Freeway Rick,” Ross was a California-based drug kingpin, and is often credited with introducing crack cocaine to African-American neighbourhoods in the 1980s.
Freeway Rick’s notoriety surpassed the boundaries of the Californian state. Authorities confirm Ross had been selling over $3 million in cocaine per day, while purchasing over 400 kilos per week. His drug empire functioned like a corporation. Operations stretched across several states, including Texas, Maryland, and Ohio. Rumours also connected Ross with the Iran Contra scandal, as he was able to secure cocaine purchases from Nicaragua. In all, Ross secured a reputation as a ruthless drug don; a criminal mastermind with legendary street credibility.
As with any criminal enterprise, the law eventually caught up with Freeway Rick. Ross had for years evaded the authorities, who clamoured to put him behind bars. A sting operation was eventually set up. Ross was then sentenced to life imprisonment in 1996, for purchasing 100 kilograms of cocaine from a federal agent. After a successful appeal, Ross saw his sentence reduced to twenty years. A further reduction was then granted for good behaviour, and Ross was freed in September 2009.
Immediately following his release, Ross vowed to build a positive reputation. Eager to put his past behind him, he embarked on a series of speaking tours, educating youth on the perils of the drug trade. It seems his prison experience had changed him. No longer convinced of his infallibility, Ross recognized the havoc he had wreaked. His aim was now to lead by experience, and to prevent others from embarking on this destructive path.
In the interim of Ross’ release came a gentleman by the name of William Roberts III. Hailing from Carol City, Florida, Roberts rose to prominence in the hip-hop genre in the late 2000s. To Ross’ chagrin, Roberts adopted ‘Rick Ross’ as his artist name. The moniker was chosen as a tribute to Freeway Rick, as Roberts cultivated the persona of larger-than-life drug don.
The main point of contention relates to Ross’ name. Ross was never consulted by Roberts prior to his adoption of the contested moniker. Roberts has refused to change it and continues to enjoy a successful career. He has released four gold albums since 2006, in addition to collaborations with hip-hop’s elite artists. By contrast, Ross is toiling in relative obscurity. Roberts’ drug-laden music has tarnished Ross’ name, and he is unable to secure a living as a result. Ross also alleges he owns the trademark to his name for any commercial purpose. Therein lays the basis of Ross’ lawsuit against Roberts.
The Ross v. Roberts lawsuit arose as a direct consequence of Roberts’ artistic alias. Incensed with Roberts’ refusal to change it, Ross instituted proceedings against the artist and a distinguished cast of characters. These include Jay-Z (who signed Roberts to Def Jam Records), Roberts’ Maybach Music Group, the Island Def Jam Music Group, and its distributor, Universal Music and Video Distribution. The suit seeks 10 million in damages for trademark infringement, as well as trademark dilution. Ross alleges that Roberts usurped his name, image and identity to build himself a successful music career. The co-defendants allegedly took part in the conspiracy, profiting immensely as a result.
Unfortunately for Ross, the lawsuit was dismissed in November 2010. The application of trademark law prevented Ross from staking claim to his name. The United States District Court for the Central District of California also concluded that no infringement had taken place. To many, it seems that the decision is patently erroneous. For how can an individual not own the trademark to his own name? How can a corporation wilfully use the name of an individual without adequate compensation? The answers to these questions lie in the following analysis.
The Lanham Act
The US’ foremost trademark protection law is known as the Lanham Act. Enacted in 1946, the act is a federal statute applicable in all fifty states, with minor variations at the state level. The Lanham Act begins by defining what is meant by “trademark.” Plainly stated, a trademark is a word, symbol, or phrase used to identify a particular manufacturer or seller’s products and to distinguish them from the products of another.
The securing of a trademark can then proceed in one of two ways. First, a trademark will be conferred to the first person or corporation to use the mark in commercial transactions. However, the trademark owner can only exercise ownership within the geographic area in which the products are sold, along with any areas that can reasonably be expected to be exploited for commercial gain. Areas where the mark’s reputation has been established are also covered.
The second method of securing a trademark is by registration with the U.S. Patent and Trademark Office. This method of proceeding is usually recommended. It confers institutional legitimacy to a given trademark, and renders ownership virtually unchallengeable. For those reasons, most trademark owners will seek to secure them through first commercial use andregistration. These are sure-fire bets against trademark infringement.
Further requirements must be met for the conferral of trademark status. The first of those is the necessity of distinctiveness. In other words, the mark must be capable of identifying the source of a particular good. For example, the Nike swoosh is instantly recognizable in identifying the manufacturer. It is also distinguishes it from its competitors, permitting consumers to make an informed choice. There can be no confusion upon seeing this logo on a product.
Of the four categories of trademarks under the Lanham Act, the name “Rick Ross” falls under the “descriptive” category. A descriptive mark goes beyond distinction, as it describes a characteristic or quality of the underlying product. The descriptive mark is not conferred with automatic protection. Rather, protection will only be conferred where such marks have acquired “secondary meaning.” This is determined by an analysis of four factors, namely: the amount and manner of advertising; the volume of sales; the length and manner of the term’s use; and the results of consumer surveys.
The concept of trademark infringement arises from an unauthorized use of a registered trade-mark. Proof of an infringement is of vital necessity, and will exceed evidence of ownership. The required standard is the likelihood of confusion caused by the infringement. In reference to the perception of an average consumer, the likelihood of confusion assesses whether the defendant has significantly encroached on the trademark so as to create the impression that they are one and the same. In other words, would a reasonable consumer believe that the infringer’s product is sourced to the trademark owner due to the infringer’s use of the trademark?
There are several factors the Courts will rely upon to establish this standard. The likelihood of confusion will be seen to arise in accordance with: (1) the strength of the trademark; (2) the proximity of the goods, in terms of the category of goods sold by the owner and the accused infringer; (3) the similarity of the marks; (4) evidence of the actual confusion; (5) the similarity of the marketing channels used; (6) the degree of caution exercised by a typical purchaser; and, finally, (7) the accused infringer’s intent. A plaintiff will thus have an onerous burden to satisfy.
The requirements having been stated, we must now assess the merits of Freeway Rick’s claim. It is unquestionable that William Roberts named himself after him. Roberts has never disputed this. The questions that surface are thus limited to determining whether Ross established secondary meaning to his name, as well as trademark ownership. Additional queries relate to whether Roberts created a likelihood of confusion by using the name “Rick Ross.” Only then can one assess whether Freeway Rick is entitled to any compensation.
Assessing Freeway Rick’s Trademark Infringement Claim
The premise of Freeway Rick’s claim relates to his assertion of trademark ownership. It is his position that he has long satisfied the Lanham requirements. This assertion rests on the purported distinctiveness of the “Rick Ross” moniker. Ross claims he has cultivated significant notoriety over the years, to the extent that the moniker is automatically associated with him. The name “Rick Ross” would fall under the descriptive category, as it indicates the nature of the goods proffered.
Distinctiveness being insufficient to establish a trademark, secondary meaning must necessarily be shown. According to Ross, this is the strongest part of his claim. To begin, the amount and manner of advertising are measured in terms of how Ross’ name became famous. In this context, the amount of advertising arose from the voluminous coverage of Ross’ criminal activities. Another argument is the “street credibility” arising from Ross’ infamy. The manner of advertising also follows on similar lines. Any advertising would have come from third-party coverage of his activities. Drug dealers do not usually advertise their illegal services.
The volume of sales is another area meriting scrutiny. Here, it is unquestionable that Ross generated numerous sales. Ross commandeered a multimillion dollar enterprise across state lines. The length and manner of the term’s use relate to the notoriety Ross obtained as a result of his activities. The time period can be measured from the beginning of Ross’ enterprise to the present day. This precedes and exceeds the time since Roberts adopted the moniker.
The manner of the term’s use is furthermore instructive. Ross was intimately connected to the drugs he sold, and consumers were aware of the products’ source. He relied upon his name to ensure the quality of his product, similar to a legitimate brand name found in supermarkets.
The result of consumer surveys will relate to the persons who would have known about Rick Ross at the time of his prime. These refer to the law enforcement authorities who spent years tracking him down, as well as the consumers and middlemen who accessed the drugs. The urban rap community is another consumer cohort where Ross has notoriety. But since Ross has never sold music to this community, it is doubtful he had any brand name recognition for artistry.
Unfortunately for Freeway Rick, the Court dismissed his claim for secondary meaning. The reason for this was simple: There could be no secondary meaning established for a name whose sole claim to notoriety was based on criminal activity.
Moreover, it was unconceivable for the Court to recognize Ross’ claim to first commercial use of the name. First commercial use can only be understood in terms of legal commercial activity. Lastly, Rick Ross has never registered his name with the US Patent and Trademark Office. Thus, as Ross could not establish secondary meaning, first commercial use or registration, any claim for trademark infringement was automatically voided. The same goes for unjust enrichment and trademark dilution.
William Roberts’ Rightful Claim to the “Rick Ross” Trademark
By contrast, Roberts has amply satisfied ownership of the “Rick Ross” trademark. The aspect of distinctiveness is immediately fulfilled. Roberts is the sole hip-hop artist to utilize the moniker as a performer name. The trademark has been registered with the U.S. Patent and Trademark Office. He is the first person to use the moniker for legal commercial purposes.
Roberts has also established secondary meaning to the use of the Rick Ross trademark. The four required factors have been filled. To be sure, the amount and manner of advertising have been voluminous. Roberts has been promoted under the name Rick Ross since at least 2005. Being signed to Def Jam Records, Ross has benefitted from copious advertising in every imaginable media outlet. This includes mainstream publications with international distribution, inter-continental concert tours, and a sustained Internet presence. Roberts has also served as a spokesman for various other corporations, peddling everything from luxury watches to alcohol. In short, he has amply satisfied the test for the amount and manner of advertising.
The same can be said for the test’s volume of sales requirement. Roberts has released four albums under the moniker since 2006. Each of these albums has received Gold certification, for the sales of at least 500,000 units in the United States. Roberts has also released two platinum singles, each generating more than one million sales. This excludes the sales he has accrued as part of his affiliation with the Triple C music group, or as CEO of the Maybach Music Group label.
The length and manner of the Rick Ross trademark’s use is equally relevant. As Roberts has established first commercial use, he has used the trademark longer than any person claiming ownership. The trademark has also been used to further commercial interests. These include product endorsements, and other promotional endeavours. Consumers are equally clear as to the trademark’s owner. While most of Rick Ross’ fans are aware of the moniker’s origins, there is no confusion as to who has authored, performed, and produced the Rick Ross albums. In no way, shape, or form is anyone led to believe that Freeway Rick is Rick Ross the rapper.
This brings us to a hypothetical consideration. Let us assume Freeway Rick had established ownership of the Rick Ross trademark. Let us assume the Court had agreed to enshrine criminal activity as grounds for first commercial use. This would of course be insufficient to ground a finding of trademark infringement. The latter would necessitate evidence of a likelihood of confusion between brands. It is unlikely that Ross would be able to satisfy this requirement.
The reasons for this are simple. First, the strength of Freeway Rick’s trademark would be dubious. Having been acquired through the drug trade, Ross’ trademark would have been restricted to that particular “industry.” Further, as Ross had been incarcerated for 13 years, the trademark would not have been in use. It would have fallen into obscurity, without evidence to the contrary. Moreover, Roberts’ claim to the mark would be stronger. He had first commercial use in the music industry, as well as a registration with the US Patent and Trademark Office.
The proximity of the goods being proffered would also weigh against Ross. Unlike the tort of passing off – which prevents two persons in the same industry from using the same trademark – the parties are not part of the same industry. William Roberts is a gangster rapper. He sells music recordings distributed by legitimate enterprises. Rick Ross is a convicted drug dealer. His trade mark would have arisen from the sale of illegal drugs.
Ross may allege that Roberts promotes the sale of drugs in his music. However, this is little more than a red herring. Roberts may indeed promote drug trafficking, but the fact remains that Roberts sells music CDs, not kilograms of cocaine. These are two entirely different industries. They cannot be confused by virtue of the subject matter of Roberts’ recordings.
The counterargument is that Roberts is essentially “rapping” Ross’ life. This is also patently false. Roberts has been a gangster rapper before adopting the Rick Ross moniker. His subject matter has not changed. Further, even if Ross can prove beyond a reasonable doubt that his life story parallels that of Roberts’ content, Ross cannot claim hegemony over drug-related musical content. There are many other artists who feature the same type of material in their songs. Are they all “rapping” pages from Rick Ross’ life story?
The similarity of the marks is somewhat more difficult to disprove. In fact, as the monikers are identical, no rebuttal of similarity can be grounded. But this will do little to bolster Ross’ claims. Similarity is only one of many factors under consideration. Evidence of confusion would also weigh in the equation. But, again, this would weigh against Ross. There is no likelihood of confusion whatsoever. First, consumers are aware that the two individuals are distinct. This is further corroborated by Roberts’ use of other aliases, as well as by his age, physical appearance, and career as a rap artist. There would be no confusion between Roberts’ rap songs and whatever business Ross is currently involved in.
Roberts has achieved considerable fame. As a vocal performer, his voice instantly destroys any potential confusion between the parties. The fact that he is pictured on his CD covers also dispels the possibility. The same can be said for his music videos. It would be another story if any likeness of Freeway Rick’s image were used to promote the sale of Roberts’ music. In that case, Roberts would have grounds to sue. However, as he failed to satisfy the requirements for trademark ownership, his only suit could be for an infringement on the right to privacy.
The distinction in marketing channels is furthermore instructive. Roberts’ marketing channels are legitimate record distributors and public relations agencies. In no way, shape or form, do Ross and Roberts ever figure in the same marketing channel. Ross has little ground to show otherwise. Lastly, the degree of caution exercised by a typical purchaser dispels any potential confusion.
The average consumers of hip-hop CDs are teenagers. The vast majority were born after Rick Ross’ incarceration and have no clue who he is. In fact, consumers of Roberts’ CDs only know who Ross is by virtue of Roberts naming himself after him. It is doubtful he would otherwise become known to them, especially in the industry for which he claims first commercial use of the trademark. Ross’ claim must thus be dismissed, and the California District Court was correct in its dismissal.
The case of Ross v. Roberts is instructive to understand American trademark law. It is particularly instructive as to the trademarking of a person’s name for commercial use. As we have seen, it is insufficient for a person to sue a corporation by virtue of an identical name. Without legal ownership of the commercial use of one’s name, trademark infringement cannot be upheld. Otherwise, every single person named Ronald McDonald could sue the McDonald’s fast-food chain on similar grounds.
The balancing of social interests played a crucial part in the Court’s decision. On the one hand, there is the social interest in the control of one’s name for commercial purposes. Individuals must be secured against third-party use of their name for capital gain. On the other hand lies the interest in the security of commercial transactions.
Placed on the scales of justice, the latter has triumphed in this particular case. Commercial relations would be undermined if trademark infringement could be alleged on the mere grounds of utilizing a common name. By contrast, the social interest in the control of one’s name for commercial purposes would be undermined if corporations could use a trademarked name without compensation. Had Ross been able to satisfy the requirements for trademark ownership, it is doubtful the Court would have ruled against him.
In this case, the Court’s assessment was entirely correct. For if the Court had found in Ross’ favour, it would have enshrined illegal drug trafficking as grounds to establish first commercial use of a trademark, as well as secondary meaning. Drug dealers may possess criminal infamy, but criminal infamy was never meant to be protected under trademark law. How’s that for “hustlin’?”