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The subject of a 50 Cent "BMF" television show in an ongoing trademark proceeding

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Contributor: Heather Antoine

At first glance, this story is pretty simple. Plaintiff Byron Bellin has filed primarily trademark infringement claims against Curtis “50 Cent” Jackson, Stars Entertainment, Lionsgate Entertainment, and G-Unit Brands and Film & Television (“Defendants”). And filed a lawsuit. Verin claims that he owns the rights to the trademark “BMF” and infringes those rights when the defendant releases the criminal television show “BMF” (or the Black Mafia Family). BMF is one of Stars’ most watched shows, quickly securing a green light for the second season, just four days after its premiere in September 2021. But the money laundering and drug shows need a more interesting story, right? of course.

In a proceeding filed in December 2021, the title of the show and various related forms of merchandise infringe Verin’s trademark registration for “BMF”, a number of entertainment-related services, including the production of television shows. Claims. The proceedings also include unfair competition, misdesignation of origin, trademark forgery, and false advertising allegations, among other additional allegations.

In response to the complaint, the defendant filed a motion of dismissal for failing to make a claim. Defendant then alleges the use of BMF because the title of the show is protected by the First Amendment under the first clarified test. Rogers vs. Grimaldi, 875 F.2d 994 (2d Cir. 1989), therefore, Verin’s claim should be banned. They explain that the show is based on the true story of the famous Detroit-based criminal organization “Black Family Mafia” in the late 1980s.

A brief note – As I explained in my last article on Hailey Beaver’s trademark infringement proceedings, courts generally apply a “potential confusion test” to trademark infringement cases.However, if the suspected infringement use is in the title of an expressive work, the 9th Circuit Court of Appeals Rogers vs. Grimaldi..

To call Rogers vs. Grimaldi The “seminal” case of the Trademark Law and the First Amendment is understated. The second circuit test was adopted in the third, fifth, sixth, ninth, and eleventh circuits, allowing the television program “Empire” to maintain the use of the name despite the empire. It is the basis of many well-known cases, including similar proceedings. Ownership of the distribution of registered trademarks of entertainment services. The proceedings provide testing when using a trademark in the title of an expressive work violates or does not violate the Lanham (Trademark) Law. Generally speaking, use is not prohibited unless there is such use. (1) “There is no artistic connection with the underlying work.” Or (2) “explicitly misleading about the source or content of the work” if it is artistic.

BMF is an expressive work, and the defendant said that the use of “BMF” as a shortened title in the series was directly related to the theme of the show, that is, to adapt the history of the Black Mafia and tell a life story. Insisted that there was. Family … The abbreviated title “BMF” was used as a self-identification and promotion by actual members of the Black Mafia family. “

The court granted the defendant’s petition permission to amend and gave Verin the opportunity to prove that: 1) He owns a “valid and protectable trademark”. 2) The use of a trademark is not “artistically related to the underlying work or explicitly misleading with respect to the source or content of the work.” Verin filed the first amended complaint last week, including new wording alleging that defendants’ use of BMF was “apparently misunderstanding.”

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

Entertainment media production service for movies, TV and the Internet. An entertainment service of the nature of a non-fiction television series on topics related to family stories that families have told to preserve their heritage. An entertainment service of the nature of holding social entertainment events. An entertainment service that presents live musical performances. An entertainment service of the nature of musical performances featuring live musical performances and pre-recorded vocal and instrumental performances displayed on a large screen. Entertainment services of the nature of family stories, drug empires, gangsters, social entertainment organizations, multimedia content, and fiction and non-fiction television show series on topics related to the day-to-day activities of self, friends, and family. Entertainment services, that is, an exhibition of a series of movies. Entertainment services, that is, multimedia production services. Entertainment, a live performance by a music band. A multimedia entertainment service with the nature of recording, production and post-production services in the fields of music, video and cinema. Provide entertainment information via the website.Providing a website with information on the fields of music and entertainment

As you can see, this is a very long list of services, and it was not immediately apparent that all the services listed were actually offered by Belin using the “BMF” mark.

A brief note on US trademark law (which depends on the jurisdiction): In the United States, an application must prove “use” of a trademark in order to mature into registration. When proving “use,” you need to provide an example of how the trademark is used. You do not have to prove the use of all the listed goods or services, but you do need to prove that all the services are offered (or sold). According to my research, most of the services that Verin claims are not or do not seem to be offered. In that case, the trademark registration may be cancelled.

This checked the Trademark Trial and Appeal Board (“TTAB”) docket to see if 50 Cent, Starz, and Lion’s Gate had filed a cancellation request. But like other good dramas, this is where the plot gets thicker. After all, they didn’t have it, but another company, Zuffa, LLC. Zuffa’s “BMF” trademark application was rejected last year because it could be confused with the Verin trademark. So, a year ago, in July 2021, they filed a petition to revoke the Verin trademark on the basis of fraud, lack of good faith intent to use, and waiver. The petition is still pending before the TTAB. The consequences will undoubtedly affect the proceedings in proceedings with the defendants in civil lawsuits.

Legal Entertainment will contact the agent for comment and update this story as needed.

Heather Antoine Partner and Chair of Stubbs Alderton & Markiles LLP Trademark and Brand Protection and Privacy and Data Security Practices, we protect our clients’ intellectual property, including brand selection, management and protection. Heather also helps businesses design and implement policies and practices that comply with national and international privacy laws.