In trademark suit by owner of BMF mark against Starz, Lions Gate and rapper 50 Cent based on their production of television show titled BMF: Black Mafia Family, district court grants motion of dismiss under Rogers test, finding that use of BMF in show’s title was not explicitly misleading.
Plaintiff Byron Belin sued media companies Starz and Lions Gate, as well as rapper 50 Cent and his G-Unit businesses, in December 2021, claiming that defendants’ television series BMF: Black Mafia Family infringed his trademark BMF. Belin alleged that he and his business partner provide media services, including the production of television programming, and that he has used the BMF mark to market and sell those services since 2017. Defendants’ television series, which premiered in September 2021, tells the story of the Detroit-based drug-trafficking organization known as the Black Mafia Family. Defendants also used the BMF mark on advertising and merchandise related to the show. Belin asserted claims for trademark infringement and unfair competition and false designation of origin under the Lanham Act, as well as other trademark claims under federal law and California common law. The defendants moved to dismiss Belin’s complaint, arguing that their use of the BMF mark was protected by the First Amendment under the test set forth by the Second Circuit in Rogers v. Grimaldi and adopted by the Ninth Circuit.
The Rogers test is employed when the allegedly infringing use involves an expressive work. The test is intended to balance the public’s interest in avoiding consumer confusion with the First Amendment rights of the alleged infringer. Under the Rogers test, the defendant must make a threshold showing that its allegedly-infringing use is part of an expressive work. Once that showing is made, the burden shifts to the plaintiff to show “(1) that it has a valid, protectable trademark, and (2) that the mark is either not artistically relevant to the underlying work or explicitly misleading as to the source or content of the work.” If the plaintiff is able to meet that burden, he must still prove that the defendants’ use of a trademark is likely to cause consumer confusion in order to establish a claim for trademark infringement.
The parties did not dispute that BMF: Black Mafia Family is an expressive work for purposes of applying the Rogers test. Belin did, however, argue that defendants’ merchandise bearing the BMF mark is a separate category of infringement not entitled to protection under the First Amendment. The district court disagreed, citing authority that the Rogers test applies equally to the underlying expressive work as well as promotional and marketing materials for that expressive work.
The court’s analysis then turned to the two elements Belin had the burden of establishing: that he has a valid, protectable trademark rights in BMF, and that the mark is either not artistically relevant to BMF: Black Mafia Family or is explicitly misleading as to the source or content of the work. For purposes of the motion to dismiss, the parties did not dispute that Belin had a valid trademark in BMF. As to whether the BMF mark has any artistic relevance to BMF: Black Mafia Family, the district court determined that it did. The court noted that defendants used the BMF mark to abbreviate “Black Mafia Family” in the title of the series, which is about the drug-trafficking organization. The court cited another decision by the Ninth Circuit in which it was found that the use of the word “Empire” in the title of a television show about the conglomerate “Empire Enterprises” was artistically relevant.
The district court then turned to whether defendants’ use of the BMF mark was explicitly misleading as to the source or the content of the show. In determining whether an allegedly-infringing expressive work would confuse consumers into thinking that plaintiff was involved in the expressive work, the court noted that it is a “high bar that requires the use to be an explicit indication, overt claim, or explicit misstatement about the source of the work.” In reviewing Belin’s complaint, the district court concluded that there were no allegations of any explicit indications, overt claims or explicit misstatements suggesting that Belin was somehow involved in BMF: Black Mafia Family. Nevertheless, the court continued its analysis by looking to two additional factors to be examined where “consumers would expect the use of a mark alone to identify the source.” In this situation, to determine if the use of a mark is explicitly misleading, courts look to (1) the degree to which the alleged infringer uses the mark in the same way as the plaintiff, and (2) the extent to which the alleged infringer has added its own expressive content beyond the use of the mark itself.
On the first factor, Belin argued that the defendants’ use of BMF as an acronym for the title of their television series was identical to Belin’s BMF mark, and that the defendants used the BMF mark for purposes similar to those for which Belin registered the trademark. The court disagreed, finding that Belin’s complaint failed to plausibly allege that the defendants were using the mark in an explicitly misleading manner, citing authority that, even where a mark is used for the same goods and services as it was registered, the uses are not explicitly misleading when used in conjunction with the defendant’s own artistic expression. As to the second factor, the court held that defendants’ use of the BMF mark as a component of the title for their television show about the Black Mafia Family was only one element of the expressive work, to which defendants have added their own artistic expression. Accordingly, the court found that Belin’s complaint did not plausibly allege that the defendants’ use of the BMF mark was explicitly misleading to consumers as to the source or content of BMF: Black Mafia Family.
Holding that Belin’s plausibly pleaded allegations failed the Rogers test, the district court granted the defendants’ motion to dismiss. The court dismissed Belin’s complaint with leave to amend.