By: Richard Patterson

Writing for the IP Brief is no easy task.  Everyday I’m hustlin’ to find an interesting topic to blog about.  Thankfully for me (and you), “Freeway” Rick Ross (“Freeway”) recently filed a new lawsuit against rapper William Leonard Roberts II (aka Rick Ross “The Boss” – not to be mistaken with a certain dude who plays with The E Street Band) in California state court after losing his federal court battle for trademark infringement against the MC last year (anyone confused?).  Freeway is notorious for his role in the Iran-contra affair, and for being one of the largest drug kingpins in United States history.  After spending nearly twenty years behind bars for drug trafficking, Freeway was released from prison in 2009 and took immediate action against unauthorized use of his name and likeness.  The Boss’s rise to power began in 2002 when he adopted the “Rick Ross” persona in songs and videos – most of which illustrate life as a drug dealer.

Freeway filed a lawsuit last year in the U.S. District Court for the Central District of California where he alleged trademark infringement, unfair competition and misappropriation of name and likeness.  Freeway argued that his name had secondary meaning and should be protected because he “established his Rick Ross trademark and trade name by engaging in unlawful drug commerce in California from 1980 to 1995.”  The judge correctly dismissed the first two claims, explaining that the Lanham Act does not recognize unlawful use in commerce as a basis for secondary meaning.  The court, however, declined to assert supplemental jurisdiction over the state claim of misappropriation.  This is why Freeway is bringing his new claim now.

Writing for the IP Brief is no easy task.  Everyday I’m hustlin’ to find an interesting topic to blog about.  Thankfully for me (and you), “Freeway” Rick Ross (“Freeway”) recently filed a new lawsuit against rapper William Leonard Roberts II (aka Rick Ross “The Boss” – not to be mistaken with a certain dude who plays with The E Street Band) in California state court after losing his federal court battle for trademark infringement against the MC last year (anyone confused?).  Freeway is notorious for his role in the Iran-contra affair, and for being one of the largest drug kingpins in United States history.  After spending nearly twenty years behind bars for drug trafficking, Freeway was released from prison in 2009 and took immediate action against unauthorized use of his name and likeness.  The Boss’s rise to power began in 2002 when he adopted the “Rick Ross” persona in songs and videos – most of which illustrate life as a drug dealer.

Freeway filed a lawsuit last year in the U.S. District Court for the Central District of California where he alleged trademark infringement, unfair competition and misappropriation of name and likeness.  Freeway argued that his name had secondary meaning and should be protected because he “established his Rick Ross trademark and trade name by engaging in unlawful drug commerce in California from 1980 to 1995.”  The judge correctly dismissed the first two claims, explaining that the Lanham Act does not recognize unlawful use in commerce as a basis for secondary meaning.  The court, however, declined to assert supplemental jurisdiction over the state claim of misappropriation.  This is why Freeway is bringing his new claim now.

Freeway’s legal team will likely base their lawsuit on California Civil Code § 3344, affectionately coined the “Astaire Celebrity Image Protection Act.”  This statute grants extensive rights to celebrities to control their image – something that Freeway hopes will sway the court to rule in his favor when the two sides meet next month.  In an exclusive interview with BET, Freeway said, “we always knew our case was stronger in the state than it was in the feds. California state law really protects people with their names and their likenesses.  So we knew that was stronger inside California than it was in the feds, but we wanted to go the big route first then work our way down.”

Even with a favorable statute, Freeway’s attorneys need to push their arguments to the limit.  California statute and common law dictate that to show a cause of action for commercial misappropriation, a plaintiff must prove (1) defendant’s use of the plaintiff’s identity, (2) appropriation of plaintiff’s name or likeness to defendant’s advantage, commercially or otherwise, (3) lack of consent and (4) resulting injury.  The first three factors are easily demonstrated, but how does one show an injury to the name and likeness of a convicted felon?  Is the rapper really causing harm to Freeway’s established name as a drug lord?

The Boss will argue that his use of the “Rick Ross” name has not caused any substantial harm to Freeway because it is already closely associated with crime and drug use.  Freeway will argue that he has reformed since his time as an American gangster and now promotes peace and community involvement through attention gained from the use of his infamous moniker.  From his BET interview – “We’re both teaching two different messages.  He’s teaching my old life: sell drugs, disrespect women, all the things that really have our country in shambles.  I’m teaching uplifting education, literacy.  He’s teaching illiteracy.”

Personally, I think it will be a stretch to say that Freeway was injured through the appropriation of his likeness.  Most people under 25 have never heard of him, and if anything, the rapper’s use of his name has kept Freeway relevant.  If, however, the court finds that Freeway was prevented from utilizing his identity as the real Rick Ross, the rapper will be forced to drop the character that made him famous.  But hey, that’s just another day in the life of a boss.