IP Law Daily, TRADEMARK—C.D. Cal.: Complaint for misuse of BMF mark in ‘Black Mafia Family’ television series dismissed, (Jun 21, 2022)

By Deirdre Kennedy, J.D.

Defendants’ use of the mark in an expressive work was protected by the First Amendment.

The registered owner of the “BMF mark” who has marketed and sold services using the mark failed to show that the producers of the “Black Family Mafia” television series wrongly used the BMF mark as a shorted title to refer to the series, the federal district court in Los Angeles has held. The court, in granting the defendants’ motion to dismiss, found that the complaint did not provide sufficient basis for the court to conclude that the defendants’ use was “explicitly misleading” (Belin v. Starz Entertainment, LLC, June 17, 2022, Slaughter, F.).

Plaintiff Byron Belin is the registered owner of the BMF mark and “has marketed and sold services using” the BMF Mark continuously since at least 2017, using platforms such as Facebook and YouTube, as well as other forms of media. Plaintiff alleged he had expended considerable effort promoting and establishing name recognition for the BMF Mark.

Plaintiff first “became aware” that Defendants intended to produce a television series based on the story of the drug-trafficking organization, Black Mafia Family, in or around April 2020. After Plaintiff sent Defendant Starz Entertainment LLC a letter in April 2020 offering to negotiate a license for the use of the BMF mark, Plaintiff alleged Defendant Starz ceased using the BMF mark when promoting the Series on social media. However, Plaintiff later became aware around in or around April 2021 that Defendant Starz had resumed promoting the Series using the BMF mark on social media.

The series premiered on September 9, 2021, on Defendants Starz’s and Lion Gate’s media platforms. Plaintiff alleges that Defendants used the BMF mark in connection with the marketing and distribution of the series, and had sold and is selling merchandise featuring the BMF mark, and that Plaintiff had not authorized or consented to Defendants’ use of the mark. Plaintiff also alleged that Defendants’ actions were intentional and willful.

Plaintiff filed his complaint on December 10, 2021, bringing claims against Defendants under the Lanham Act for (1) trademark infringement; and (2) unfair competition and false designation of origin. The complaint also included claims against Defendants under federal and California state common law for: (1) contributory trademark infringement; (2) vicarious trademark infringement; and (3) trademark counterfeiting and false advertising. Defendants filed a Motion to Dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), arguing that each of Plaintiff’s claims was barred by the First Amendment. Defendants also requested that the court consider several exhibits attached to the Motion under the incorporation by reference doctrine and/or judicial notice. Plaintiff filed an Opposition to the Motion and attached Objections to Defendants’ requests for judicial notice on March 12, 2022. Defendants filed a Reply on March 18, 2022.

Motion to dismiss. In order to withstand a motion to dismiss brought under Rule 12(b)(6), a complaint must allege “enough facts to state a claim to relief that is plausible on its face.” To be entitled to the presumption of truth, allegations in a complaint must first contain sufficient allegations of underlying facts to give fair notice and to enable the opposing party to defend itself effectively. Second, the factual allegations that are taken as true must plausibly suggest an entitlement to relief, such that it is not unfair to require the opposing party to be subjected to the expense of discovery and continued litigation.

Judicial notice, incorporation by reference. The court may take judicial notice of facts that are either “generally known within the trial court’s territorial jurisdiction” or “can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.” courts “may consider material which is properly submitted as part of the complaint on a motion to dismiss without converting the motion to dismiss into a motion for summary judgment,” if the material is “physically attached to the complaint.” Courts cannot take judicial notice of facts subject to reasonable dispute.

Defendants requested that the court incorporate by reference and/or take judicial notice of several exhibits attached to the Motion, including (1) two promotional photographs from the Series; (2) a photograph from the Wikipedia article, “Black Mafia Family” and an article from The Detroit News, “Black Mafia Family leader ‘Big Meech’ gets prison break in Detroit drug case;” (3) a Petition for Cancellation of the BMF mark filed before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board by a nonparty to this litigation; and (4) five pieces of correspondence between Plaintiff and Defendants. Plaintiff objected to the court considering each of these materials.

Defendants contended that the photographs should be incorporated by reference because the complaint omitted Defendants’ actual alleged use, and the context for the series, as well as evidence of Defendants’ actual promotion of the series and the context for the logo depicted. The court noted that the crux of Plaintiff’s claims concerned Defendants’ allegedly infringing use of the BMF mark. Because Exhibit A was promotional artwork for the series and offered as an example of Defendants’ use of the BMF mark, the court considered Exhibit A under the incorporation by reference doctrine because Plaintiff’s claims depended on Defendants’ use of the BMF mark.

The court did not consider the other exhibits.

First Amendment test. Defendants argued that each of Plaintiff’s claims were barred by the First Amendment under the Rogers test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d. Cir. 1989) and first employed by the Ninth Circuit in Mattel, Inc. v.MCA Records, 296 F.3d 894 (9th Cir. 2002). To balance the public’s interest in avoiding consumer confusion with First Amendment protections of free expression, courts apply the Lanham Act to an expressive work only if the defendant’s use of the mark (1) is not artistically relevant to the work or (2) explicitly misleads consumers as to the source or the content of the work.

The parties did not meaningfully dispute the validity of Plaintiff’s BMF mark. The parties also did not dispute that the series was an expressive work. Plaintiff argued, however, that the sale of consumer products bearing the BMF mark was a separate category of infringement that Defendants did not adequately show should be afforded free speech protection. Here the court noted that the balance of First Amendment interests could be destabilized if the titles of expressive works were protected but could not be used to promote those works. Accordingly, the court found that Defendants adequately showed that the series and the promotional and marketing materials related to it, including consumer merchandise, were “expressive works” under the Rogers test.

The court next considered whether Defendants’ use of the BMF mark was “either not artistically relevant to the underlying work or explicitly misleading as to the source or content of the work.” Trademarks that “transcend their identifying purpose” are more likely to be used in artistically relevant ways. Conversely, a mark that has no meaning beyond its source-identifying function is more likely to be used in a way that has “no artistic relevance to the underlying work whatsoever.”

The complaint alleged that Defendants used the BMF mark to abbreviate the term “Black Mafia Family” in the title of the series, which concerns a drug-trafficking organization. Although the court refrained from determining the artistic relevance of the BMF mark in the series at this stage, nothing in Plaintiff’s allegations suggested that the mark, itself, was the centerpiece of the series or that Defendants used the mark without adding any artistic expression of their own. Defendants’ use of the BMF mark must “explicitly mislead consumers as to the source or the content” of the series for Plaintiff’s claims to remain viable at this stage.

Explicitly misleading. Even where the use of a trademark is artistically relevant to an expressive work, the creator of the expressive work can be still be liable for infringement under the Lanham Act if the creator uses the mark or material to explicitly mislead consumers as to the source or the content of the work. The relevant question, therefore, is whether the series would confuse its viewers into thinking that Plaintiff was somehow behind the series or that Plaintiff sponsored the series. Defendants argued that the Series included no explicit statements or claims suggesting Plaintiff’s involvement, but noted that Defendants used “BMF” as the series’ “shortened-title.” Plaintiff’s allegations were limited to Defendants’ use of the BMF mark in the series and in connection with related marketing and promotional merchandise. As such, the complaint insufficiently alleged an explicit indication, overt claim, or explicit misstatement linking Plaintiff to the series, the court noted. Regardless of the similarities between Defendants’ use of the BMF mark and Plaintiff’s registration of it, the court found that the complaint did not sufficiently and plausibly allege the ways in which Plaintiff used the BMF mark to demonstrate Defendants’ use was explicitly misleading.

Added expressive content. Plaintiff argued that Defendants failed to articulate how their glossy production of the series using the BMF mark as the title had added expressive content beyond the BMF mark itself. The court disagreed, finding that Defendants added their own expressive content to the series beyond using the BMF mark in its title.

Because Plaintiff’s complaint did not provide a sufficient basis for the court to conclude that Defendants’ use was “explicitly misleading” within the meaning of the Rogers test, the court granted Defendants’ Motion, dismissing the complaint without prejudice and with leave to amend the complaint.

The Case is No 2:21-cv-09586-FWS-PLA.

Attorneys: George L. Hampton, IV (Hall Griffin LLP) for Byron Belin. Kevin M. Bell. (Kilpatrick Townsend and Stockton LLP) for Starz Entertainment, LLC, Lions Gate Entertainment, G-Unit Brands, Inc., Curtis James Jackson, III a/k/a 50 Cent and G-Unit Film and Television, Inc.

Companies: Starz Entertainment, LLC; Lions Gate Entertainment; G-Unit Brands, Inc.; G-Unit Film and Television, Inc.

Cases: Trademark CaliforniaNews