50 Cent’s TV show ‘BMF’ is the subject of an ongoing trademark lawsuit


Contributing author: Heather Antoine

At first glance, this story is quite simple. Plaintiff, Byron Belin, brought an action against Curtis “50 Cent” Jackson, Starz Entertainment, Lion’s Gate Entertainment, Inc., and G-Unit Brands and Film & Television (the “Defendants”), primarily alleging infringement of Mark. Belin claims that he owns the rights to the “BMF” trademark and that the defendants infringed those rights when they aired the crime television program “BMF” (or Black Mafia Family). BMF is one of Starz’s most-watched shows, and it was quickly given the green light for a second season just four days after its premiere in September 2021. But a show about money laundering and drugs must have a more interesting scenario, isn’t it? Sure.

The lawsuit filed in December 2021 alleges that the show’s title, along with various forms of merchandise affiliated with it, infringe Belin’s trademark registration for “BMF” for a host of entertainment-related services, including the production of television programs. The lawsuit also includes allegations of unfair competition, misrepresentation of origin, trademark infringement and false advertising, among other additional allegations.

In response to the complaint, the defendants filed a motion to dismiss for failure to report. Defendants then claim they are using BMF because their show’s title is protected by the First Amendment under the test originally set out in Rogers vs. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and therefore Belin’s claims must be dismissed. 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 post on Hailey Bieber’s trademark infringement lawsuit, courts typically apply a “likelihood of confusion test” in trademark infringement cases. However, where the allegedly infringing use is in the title of an expressive work, the Ninth Circuit applies the test by Rogers vs. Grimaldi.

To call Rogers vs. Grimaldi a “founding” 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 of many famous cases, including a similar lawsuit that allowed the television show “Empire” to retain the title. use of the name despite Empire. Ownership of the distribution of a 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, use is not prohibited unless such use: (1) “has no artistic relevance to the underlying work”; or (2) if it has artistic relevance, “explicitly misleads as to the source or content of the work”.

BMF is an expressive work, and the defendants argued that their “use of ‘BMF’ as the short title of the series is directly related to the show’s subject matter, namely to dramatize history and tell the life stories of the Black Mafia Family… the abbreviated title “BMF” was used by actual 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) it has a “valid and protectable mark”; and 2) that the use of the mark is either not “artistically relevant to the underlying work or explicitly misleading as to the source or content of the work”. Belin filed an amended First Complaint last week, including new language alleging that the defendant’s use of BMF was “explicitly misleading.”

However, the first hurdle for Belin is proving he has a valid mark. In its complaint, Belin claims that the mark is used to provide the following services:

entertainment media production services for motion pictures, television and the internet; entertainment services in the nature of a series of non-fiction television programs on topics related 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 form of the presentation of live musical performances; entertainment services in the nature of live musical performances and musical performances featuring pre-recorded vocal and instrumental performances viewed on a large screen; entertainment services in the nature of series of fiction and non-fiction television programs on topics relating to family history, drug empires, gangs, social entertainment organization, multimedia content and the daily activities of self, friends and family; entertainment services, namely, presentation of a series of films; entertainment services, namely, multimedia production services; entertainment, namely, live performances by musical groups; multimedia entertainment services in the nature of recording, production and post-production services in the fields of music, video and films; provision of entertainment information via a website; providing a website featuring information in the fields 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 indeed provided by Belin using the “BMF” brand.

A quick note on US trademark law (varies by jurisdiction): In the US, you must prove “use” of your trademark for an application to result in registration. When proving “use”, you must provide examples of how the mark is used. You are not required to prove use of every good or service listed, but you must certify that all services are provided (or goods are sold). From my research, it appears that most of the services claimed by Belin were not or were not provided. If this is the case, the registration of the mark would be subject to cancellation.

This led me to look at the Trademark Trial and Appeal Board (“TTAB”) filing to see if 50 Cent, Starz, and Lion’s Gate had filed an annulment request. But, like any good drama, this is where the plot thickens. Turns out they didn’t, but another company, Zuffa, LLC did. Zuffa’s trademark application for “BMF” was rejected last year due to potential confusion with Belin’s trademark. As such, a year ago, in July 2021, they filed a motion to void Belin’s trademark based on fraud, lack of good faith intention to use, and abandonment. This request is still pending before the TTAB; the results of which will no doubt affect the ongoing litigation with the defendants in the civil lawsuit.

Legal Entertainment has contacted the representation for comment and will update this story as needed.

Heather Anthony is Partner and Chair of Trademark and Trademark Protection and Data Privacy and Security Practices at Stubbs Alderton & Markiles LLP, where she protects the intellectual property of her clients, including the selection, management and trademark protection. Heather also helps companies design and implement policies and practices that comply with national and international privacy laws.


Comments are closed.