Media & Entertainment News

50 Cent’s ‘BMF’ Television Show Subject Of Ongoing Trademark Suit

Contributing Author: Heather Antoine

On its face, this story is fairly straightforward. The Plaintiff, Byron Belin, filed suit against Curtis “50 Cent” Jackson, Starz Entertainment, Lion’s Gate Entertainment, Inc., and G-Unit Brands and Film & Television (the “Defendants”), primarily setting forth claims of trademark infringement. Belin claims that he owns the rights to the trademark ‘BMF,’ and that Defendants infringed on those rights when they released the crime television show ‘BMF’ (or Black Mafia Family). BMF is one of Starz’s highest-watched shows, and it quickly secured the green light for a second season only four days after its September 2021 premiere. But a show about money laundering and drugs has to have a more interesting storyline, right? Of course.

The lawsuit filed in December 2021 alleges that the title of the show, as well as various forms of merchandise affiliated with it, infringe on Belin’s trademark registration for ‘BMF’ for a host of entertainment-related services, including the production of television programming. The suit also includes allegations of unfair competition, false designation of origin, trademark counterfeiting, and false advertising, among other additional claims.

In response to the complaint, Defendants filed a Motion to Dismiss for failure to state a claim. Defendants then claim their use of BMF as the title of their show is protected by the First Amendment under the test originally articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and therefore, Belin’s claims should be barred. They explain that the show is based on a true story of the “Black Family Mafia,” a well-known criminal organization based in Detroit in the late 1980s.

A quick note–as discussed in my last piece about Hailey Bieber’s trademark infringement lawsuit, generally, courts apply a “likelihood-of-confusion test” in trademark infringement cases. However, when the allegedly infringing use is in the title of an expressive work, the Ninth Circuit applies the test in Rogers v. Grimaldi.

To call Rogers v. Grimaldi a “seminal” case in trademark and first amendment law would be an understatement. The Second Circuit test has been adopted by the Third, Fifth, Sixth, Ninth, and Eleventh Circuits, and is the basis for many famous cases, including a similar suit that allowed the TV Show ‘Empire’ to retain use of the name despite Empire Distribution’s ownership of a registered trademark for entertainment services. The case provides a test for when the use of a trademark in the title of an expressive work would and would not violate the Lanham (Trademark) Act. Generally speaking, use is not barred unless such use: (1) “has no artistic relevance to the underlying work whatsoever”; or (2) if it has artistic relevance, “explicitly misleads as to the source or content of the work.”

BMF is an expressive work, and Defendants argued that their “use of ‘BMF’ as the shortened title for the series is directly tied to the subject matter of the show, namely dramatizing the history, and telling the life stories, of the Black Mafia Family…the shortened title ‘BMF’ was used by the real-life members of the Black Mafia Family as self-identification and promotion.”

The court granted Defendants’ Motion with leave to amend, giving Belin a chance to prove that: 1) he owns a “valid, protectable trademark”; and 2) that use of the trademark is either not “artistically relevant to the underlying work or explicitly misleading as to the source or content of the work.” Belin filed a First Amended Complaint last week, including new language alleging Defendant’s use of BMF as “explicitly misleading.”

However, the first hurdle for Belin is to prove that he owns a valid trademark. In his complaint, Belin claims that the trademark is being used to provide the following services:

Entertainment media production services for motion pictures, television and Internet; entertainment services in the nature of a non-fiction television programming series on topics relating to family stories told by family members to preserve their heritage; entertainment services in the nature of organizing social entertainment events; entertainment services in the nature of presenting live musical performances; entertainment services in the nature of live musical performances and musical performances featuring prerecorded vocal and instrumental performances viewed on a big screen; entertainment services in the nature of fiction and non-fiction television programming series on topics relating to family stories, drug empires, gangs, organizing social entertainment, multimedia content, and day to day activities of self, friends, and family; entertainment services, namely, displaying a series of films; entertainment services, namely, multimedia production services; entertainment, namely, live performances by musical bands; multimedia entertainment services in the nature of recording, production and post-production services in the fields of music, video, and films; providing entertainment information via a website; providing a website featuring information in the field of music and entertainment

As you can see, this is an excessively long list of services, and it was not immediately clear to me that all of the services listed are actually being provided by Belin using the ‘BMF’ mark.

A quick note about trademark law in the United States (this varies between jurisdictions): in the U.S., you must prove “use” of your trademark for an application to mature into a registration. When proving “use,” you have to provide examples of how the trademark is being used. You are not required to prove use of every listed good or service, but you are required to attest that all services are being provided (or goods are being sold). Based on my research, it appears as though most of the services claimed by Belin were not or have not been provided. If that is the case, the trademark registration would be susceptible to cancellation.

This led me to check the Trademark Trial and Appeal Board (“TTAB”) docket to see whether 50 Cent, Starz, and Lion’s Gate filed a petition for cancellation. But, like any good drama, this is where the plot thickens. It turns out, they had not, but another company, Zuffa, LLC has. Zuffa’s trademark application for ‘BMF’ was rejected last year based on the likelihood of confusion with Belin’s trademark. As such, a year ago, in July of 2021, they filed a petition to cancel Belin’s trademark based on fraud, no bona fide intent to use, and abandonment. That Petition is still pending before the TTAB; the results of which will undoubtedly affect the ongoing litigation with Defendants in the civil claim.

Legal Entertainment has reached out to representation for comment, and will update this story as necessary.

Heather Antoine is a Partner and Chair of Stubbs Alderton & Markiles LLP’s Trademark & Brand Protection and Privacy & Data Security practices, where she protects her client’s intellectual property – including brand selection, management, and protection. Heather also helps businesses design and implement policies and practices that are compliant with domestic and international privacy laws.

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