Byron Belin v. Starz Entertainment, LLC

Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 1 of 19 Page ID #:384 1 O [7] 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA [10] Case No.: CV 21-09586-FWS-PLA 11 BYRON BELIN, an individual, 12 ORDER GRANTING DEFENDANTS’ Plaintiff, MOTION TO DISMISS PLAINTIFF’S [13] COMPLAINT [30] v. [14] 15 STARZ ENTERTAINMENT, LLC, a Colorado limited liability company; 16 LIONS GATE ENTERTAINMENT INC., a Delaware corporation; CURTIS [17] J. JACKSON III a/k/a 50 CENT, an 18 individual; G-UNIT BRANDS, INC., a New York corporation; and G-UNIT 19 FILM & TELEVISION, INC., a New York corporation, [20] 21 Defendants. [28] Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 2 of 19 Page ID #:385 1 Before the court is Defendants Starz Entertainment, LLC (“Starz”), Lions Gate 2 Entertainment, Inc. (“Lions Gate”), Curtis J. Jackson III, a/k/a 50 Cent (“Mr. 3 Jackson”), G-Unit Brands, Inc. (“G-Unit Brands”), and G-Unit Film & Television, 4 Inc.’s (“G-Unit Film”) (collectively, “Defendants”) Motion to Dismiss Plaintiff Byron 5 Belin’s (“Plaintiff” or “Mr. Belin”) Complaint (Dkt. 30) (“Motion” or “Mot.”). 6 Plaintiff’s Complaint (Dkt. 1) (“Complaint” or “Compl.”) asserts common state and 7 federal law trademark claims, in addition to claims under the Lanham Act, against 8 Defendants based on allegations that Defendants are using Plaintiff’s registered 9 trademark “BMF” (“BMF Mark”) in the title of Defendants’ television series, “BMF: 10 Black Mafia Family” (“Series”) without Plaintiff’s authorization or consent. 11 The court finds this matter appropriate for resolution without oral argument. 12 See Fed. R. Civ. P. 78(b) (“By rule or order, the court may provide for submitting and 13 determining motions on briefs, without oral hearings.”); L.R. 7-15 (authorizing courts 14 to “dispense with oral argument on any motion except where an oral hearing is 15 required by statute”). Based on the state of the record, as applied to the applicable 16 law, the court GRANTS the Motion and DISMISSES WITHOUT PREJUDICE 17 AND WITH LEAVE TO AMEND the Complaint. 18 I. Background 19 A. Summary of Allegations 20 Plaintiff and his business partner are “engaged in a variety of entertainment 21 media services including, but not limited to, the production of fiction and non-fiction 22 television programming.” (Compl. ¶ 9.) Plaintiff is the registered owner of the BMF 23 Mark and “has marketed and sold services using” the BMF Mark “continuously since 24 at least 2017, using platforms such as Facebook and YouTube, as well as other forms [28] -2Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 3 of 19 Page ID #:386 1 of media.” 1 (Id. ¶¶ 10, 12 & Exh. A.) Plaintiff alleges he “has expended considerable 2 effort promoting and establishing name recognition” for the BMF Mark. (Id. ¶ 11.) 3 Plaintiff first “became aware” that Defendants intended to produce the Series, a 4 television show “based on the story of [the] drug-trafficking organization, Black 5 Mafia Family,” in or around April 2020. (Id. ¶ 14; Mot. at 1 & Exh. A.) After 6 Plaintiff sent Defendant Starz a letter in April 2020 offering to negotiate a license for 7 the use of the BMF Mark, (id. ¶¶ 14-15,) Plaintiff alleges Defendant Starz “ceased 8 using” the BMF Mark “when promoting the Series on social media,” (id. ¶ 17). 9 However, Plaintiff alleges he “became aware” around in or around April 2021 that 10 Defendant Starz had “resumed” promoting the Series using the BMF Mark “on social 11 media.” (Id.) 12 The Series premiered on September 9, 2021, on Defendants Starz’s and Lion 13 Gate’s media platforms. (Id. ¶ 19.) Plaintiff alleges that Defendants Lions Gate, 14 Starz, G-Unit Films, and Mr. Jackson use the BMF Mark “in connection with the 15 marketing and distribution of the Series,” (id. ¶ 19,) and Defendant G-Unit Brands 16 “has sold and is selling merchandise featuring” the BMF Mark, (id. ¶ 20). Plaintiff 17 has not “authoriz[ed] or consent[ed]” to Defendants’ use of the BMF Mark, (id. ¶ 14,) 18 and alleges that Defendants’ actions were “intentional” and “willful,” (id. ¶¶ 30, 42, 19 49, 57, 66). [23] 1 The BMF Mark covers, among other categories of use, “[e]ntertainment media 24 production services for motion pictures, television and Internet . . . ; entertainment 25 services in the nature of organizing social entertainment events . . . ; entertainment services in the nature of presenting live musical performances . . . ; [and] 26 entertainment services in the nature of fiction and non-fiction television programming 27 series on topics relating to family stories, drug empires, gangs, organizing social entertainment, multimedia content, and day to day activities of self, friends, and 28 family . . . .” (Compl., Exh. A.) -3Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 4 of 19 Page ID #:387 1 B. Procedural History 2 Plaintiff filed the Complaint on December 10, 2021, bringing claims against 3 Defendants under the Lanham Act for (1) trademark infringement; and (2) unfair 4 competition and false designation of origin. (See generally Compl. ¶¶ 24-45.) The 5 Complaint also includes claims against Defendants under federal and California state 6 common law for: (1) contributory trademark infringement; (2) vicarious trademark 7 infringement; and (3) trademark counterfeiting and false advertising. (See generally 8 id. ¶¶ 46-68.) Defendants filed the Motion pursuant to Federal Rule of Civil 9 Procedure 12(b)(6) (“Rule 12(b)(6)”) on February 17, 2022, arguing that each of 10 Plaintiff’s claims is barred by the First Amendment under the test first articulated by 11 the Second Circuit in Rogers v. Grimaldi, 875 F2.d 994 (2d. Cir. 1989) and adopted 12 by the Ninth Circuit in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 13 2002) (“Rogers test”). (Dkt. 30.) Defendants also request the court consider several 14 exhibits attached to the Motion under the incorporation by reference doctrine and/or 15 judicial notice. (Id.). Plaintiff filed an Opposition to the Motion (Dkt. 34) 16 (“Opposition” or “Opp.”) and attached Objections to Defendants’ requests for judicial 17 notice (Dkt. 34-1) on March 12, 2022.2 Defendants filed a Reply (Dkt. 35) on March [19] 2 Plaintiff objected to Defendants’ requests for judicial notice in a filing attached to 20 the Opposition (Dkt. 34-1.) Plaintiff also filed a similar set of “Objections” after 21 briefing in this matter had concluded and the Motion was first taken under submission, asserting that Defendants incorrectly submitted evidence attached to their 22 Reply. (See Dkt. 37.) Though Plaintiff is theoretically correct that the court need not 23 consider arguments raised for the first time in a Reply, Zamani v. Carnes, 491 F.3d 990, 997 (9th Cir. 2007), Defendants did not submit new evidence or raise novel 24 arguments as to judicial notice or incorporation by reference in the Reply, see 25 Markson v. CRST Int’l, Inc., 2022 WL 790960 , at *1 n.1 (C.D. Cal. Feb. 24, 2022) (noting evidence “submitted with a reply brief is not new evidence when it is 26 submitted to rebut arguments raised in the opposition brief”) (citation and internal 27 quotation marks omitted). Additionally, the court need not consider arguments raised in sur-replies filed without first seeking leave of court. See Baxter Bailey & Assocs. v. [28] -4Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 5 of 19 Page ID #:388 1 18, 2022. Plaintiff has not previously filed an amended complaint in this action nor 2 sought leave from the court to do so. 3 II. Legal Standard 4 A. Motion to Dismiss Pursuant to Rule 12(b)(6) 5 Rule 12(b)(6) permits a defendant to move to dismiss a complaint for “failure to 6 state a claim upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). To 7 withstand a motion to dismiss brought under Rule 12(b)(6), a complaint must allege 8 “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. 9 Twombly, 550 U.S. 544, 570 (2007). While “a complaint attacked by a Rule 12(b)(6) 10 motion to dismiss does not need detailed factual allegations,” a plaintiff must provide 11 “more than labels and conclusions” and “a formulaic recitation of the elements of a 12 cause of action” such that the factual allegations “raise a right to relief above the 13 speculative level.” Id. at 555 (citations and internal quotation marks omitted); see 14 also Aschroft v. Iqbal, 556 U.S. 662, 679 (2009) (reiterating that “recitals of the 15 elements of a cause of action, supported by mere conclusory statements, do not 16 suffice”). 17 “Establishing the plausibility of a complaint’s allegations is a two-step process 18 that is ‘context-specific’ and ‘requires the reviewing court to draw on its judicial 19 experience and common sense.’” Eclectic Props. E., LLC v. Marcus & Millichap Co., [20] 751 F.3d 990, 995-96 (9th Cir. 2014) (quoting Iqbal, 556 U.S. at 679 ). “First, to be 21 entitled to the presumption of truth, allegations in a complaint . . . must contain 22 sufficient allegations of underlying facts to give fair notice and to enable the opposing 23 party to defend itself effectively.” Id. at 996 (quoting Starr v. Baca, 652 F.3d 1202 , [25] Ready Pac Foods, Inc., 2020 WL 3107889 , at *1 (C.D. Cal. Feb. 14, 2020) (“When a 26 reply does not present new arguments nor new evidence, a surreply is improper and a 27 court should not grant leave to file one.”) (citation and internal quotation marks omitted); see also L.R. 7-10 (“Absent prior written order of the Court, the opposing 28 party shall not file a response to the reply.”). -5Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 6 of 19 Page ID #:389 1 1216 (9th Cir. 2011)). “Second, the factual allegations that are taken as true must 2 plausibly suggest an entitlement to relief, such that it is not unfair to require the 3 opposing party to be subjected to the expense of discovery and continued litigation.” [4] Id. (quoting Baca, 652 F.3d at 1216 ); see also Iqbal, 556 U.S. at 681 . But “‘[w]here a 5 complaint pleads facts that are merely consistent with a defendant’s liability, it stops 6 short of the line between possibility and plausibility of entitlement to relief.’” Id. 7 (quoting Iqbal, 556 at U.S. 678). 8 III. DISCUSSION 9 A. Judicial Notice and Incorporation by Reference 10 1. Legal Standards 11 The court may take judicial notice of facts that are either “generally known 12 within the trial court’s territorial jurisdiction” or “can be accurately and readily 13 determined from sources whose accuracy cannot reasonably be questioned.” Fed. R. 14 Civ. P. 201(b). Courts cannot take judicial notice of facts subject to reasonable 15 dispute. Lee v. City of Los Angeles, 250 F.3d 668, 689 (9th Cir. 2001), overruled on 16 other grounds by Galbraith v. Cty. of Santa Clara, 307 F.3d 1119 (9th Cir. 2002); see 17 also Twombly, 550 U.S. at 555 n.11 (“Under Federal Rule of Evidence 201(b), a 18 judicially noticed fact must be one not subject to reasonable dispute in that it is either 19 (1) generally known within the territorial jurisdiction of the trial court or (2) capable 20 of accurate and ready determination by resort to sources whose accuracy cannot 21 reasonably be questioned.”) (internal quotation marks omitted). 22 For example, “courts routinely take judicial notice of letters published by the 23 government . . . as well as records and reports of administrative bodies.” Smith v. Los 24 Angeles Unified Sch. Dist., 830 F.3d 843 , 851 n.10 (9th Cir. 2016) (citations and 25 internal quotation marks omitted). Additionally, courts “may consider material which 26 is properly submitted as part of the complaint on a motion to dismiss without 27 converting the motion to dismiss into a motion for summary judgment,” if the material [28] -6Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 7 of 19 Page ID #:390 1 is “physically attached to the complaint.” Lee, 250 F.3d at 688 (citations and internal 2 quotation marks omitted). 3 The “incorporation by reference” doctrine permits courts to “take into account 4 documents ‘whose contents are alleged in a complaint and whose authenticity no party 5 questions, but which are not physically attached to the [plaintiff’s] pleading.’” 6 Knievel v. ESPN, 393 F.3d 1068, 1076 (9th Cir. 2005) (citation omitted) (alteration in 7 original); see also Lee, 250 F.3d at 688 . Application of the incorporation by reference 8 doctrine may be appropriate in “situations in which the plaintiff’s claim depends on 9 the contents of a document, the defendant attaches the document to its motion to 10 dismiss, and the parties do not dispute the authenticity of the document, even though 11 the plaintiff does not explicitly allege the contents of that document in the complaint.” 12 Knievel, 393 F.3d at 1076 . 13 2. Application 14 Defendants request the court incorporate by reference and/or take judicial 15 notice of several exhibits attached to the Motion: (1) two promotional photographs 16 from the Series (Dkt. 30-1, Declaration of Kevin M. Bell (“Bell Decl.”), Exh. A); (2) a 17 photograph from the Wikipedia article, “Black Mafia Family” and an article from The 18 Detroit News, “Black Mafia Family leader ‘Big Meech’ gets prison break in Detroit 19 drug case” (Bell Decl., Exh. B); (3) a Petition for Cancellation of the BMF Mark filed 20 before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board by 21 a nonparty to this litigation (Bell Decl., Exh. C.); and (4) five pieces of 22 correspondence between Plaintiff and Defendants (Bell Decl., Exhs. D-H). Plaintiff 23 objects to the court considering each of these materials. (Opp. 19-21; Dkt. 34-1.)3 24 Defendants contend Exhibit A should be incorporated by reference because the 25 Complaint omits “Defendants’ actual alleged use, and the context for” the Series, as [27] 3 Page numbers for the Opposition correspond to the pagination of the PDF document 28 as filed with the court. -7Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 8 of 19 Page ID #:391 1 well as “evidence of Defendants’ actual promotion of the [S]eries and the context for 2 the logo depicted.” (Mot. at 8.) The crux of Plaintiff’s claims concern Defendants’ 3 allegedly infringing use of the BMF Mark; Exhibit A is promotional artwork for the 4 Series and offered as an example of Defendants’ use of the BMF Mark. Accordingly, 5 the court will consider Exhibit A under the incorporation by reference doctrine 6 because Plaintiff’s claims depend on Defendants’ use of the BMF Mark. See Knievel, 7 1076-77 (9th Cir. 2005) (incorporating by reference the web pages “surrounding” the 8 “photograph and caption that [plaintiffs] argue[d] was defamatory”); accord Khoja v. 9 Orexigen Therapeutics, Inc., 899 F.3d 988, 1002 (9th Cir. 2018). 10 Defendants request the court consider Exhibit B, an “article discussing the 11 history of the Black Mafia Family and the Wikipedia photo for the real-life family 12 showing historical use of ‘BMF’ as a logo,” (Mot. at 8,) for “the same reason,” e.g., 13 incorporation by reference, (Reply at 12). Though the subject matter of the Series 14 may potentially be related to Exhibit B, the arguments presented by the parties are 15 limited to Defendants’ use of the BMF Mark and whether that use is misleading as to 16 Plaintiff under the Rogers test. The Complaint only briefly mentions the Series is 17 “based on the story of drug-trafficking organization,” which is not enough for the 18 court to consider Exhibit B under the incorporation by reference doctrine. See Khoja, [19] 899 F.3d at 1002 (noting incorporation by reference is appropriate where “‘the 20 plaintiff refers extensively to the document or the document forms the basis of the 21 plaintiff’s claim.’”) (quoting U.S. v. Ritchie, 342 F.3d 903, 907 (9th Cir. 2003)); Coto 22 Settlement v. Eisenberg, 593 F.3d 1031, 1038 (9th Cir. 2010) (citation omitted) 23 (“[T]he mere mention of the existence of a document is insufficient to incorporate the 24 contents of a document.”). 25 It is not clear to the court the permissible purpose for which Defendants seek 26 judicial notice of Exhibit C, the Petition for Cancellation. A court may take judicial 27 notice of administrative records, including petitions filed in the U.S. Patent and 28 Trademark Office. See Caiz v. Roberts, 382 F. Supp. 3d 942, 947 (C.D. Cal. 2019) -8Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 9 of 19 Page ID #:392 1 (taking judicial notice of “file history” filed in the U.S. Patent and Trademark Office). 2 However, Exhibit C is not sufficiently relevant to the arguments at issue in the 3 Motion, which focus only on the application of the Rogers test. Accordingly, the 4 court declines to take judicial notice of Exhibit C. See Gerritsen v. Warner Bros. Ent. 5 Inc., 112 F. Supp. 3d 1011, 1026, 1029-30 (C.D. Cal. 2015) (declining to take judicial 6 notice of documents irrelevant to motion to dismiss). 7 Exhibits D-H are printouts of pre-suit correspondence, which Defendants argue 8 should be considered by the court because “the Complaint includes specific reference 9 to the parties’ pre-suit correspondence.” (Mot. at 8.) The correspondence does not 10 relate to the basis of Plaintiff’s claims—that Defendants’ use of the BMF Mark 11 violates Plaintiff’s trademark rights—and thus the Complaint does not “depend” on 12 the correspondence sufficiently to warrant their incorporation by reference. See 13 Khoja, 899 F.3d at 1002 ; Coto Settlement, 593 F.3d at 1038 . 14 B. First Amendment (Rogers Test) 15 Defendants argue that each of Plaintiff’s claims are barred by the First 16 Amendment, under the Rogers test set forth in Rogers, 875 F.2d 994 and first 17 employed by the Ninth Circuit in MCA Records, 296 F.3d 894 . While claims of 18 trademark infringement under the Lanham Act are generally governed by a likelihood19 of-confusion test, courts in the Ninth Circuit apply the Rogers test when the alleged 20 infringement concerns an expressive work to accommodate First Amendment 21 interests. See MCA Records, 296 F.3d at 900, 902 . To balance the public’s interest in 22 avoiding consumer confusion with First Amendment protections of free expression, 23 courts “apply the [Lanham] Act to an expressive work only if the defendant’s use of 24 the mark (1) is not artistically relevant to the work or (2) explicitly misleads 25 consumers as to the source or the content of the work.” Gordon v. Drape Creative, 26 Inc., 909 F.3d 257, 264 (9th Cir. 2018) (citing MCA Records, 296 F.3d at 902 ). 27 “The Rogers test requires the defendant to make a threshold legal showing that 28 its allegedly infringing use is part of an expressive work protected by the First -9Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 10 of 19 Page ID #:393 1 Amendment.” Id. The burden then shifts to the plaintiff to show “(1) that it has a 2 valid, protectable trademark, and (2) that the mark is either not artistically relevant to 3 the underlying work or explicitly misleading as to the source or content of the work.” 4 Id. at 265. “If the plaintiff satisfies both elements,” the plaintiff “must still prove that 5 [their] trademark has been infringed by showing that the defendant’s use of the mark 6 is likely to cause confusion.” Id. at 265. The Ninth Circuit has affirmed the 7 application of the Rogers test’s burden-shifting framework at the motion to dismiss 8 stage. See Betty’s Found. for Elimination of Alzheimers Disease v. Trinity Christian 9 Ctr. of Santa Ana, Inc., 2022 WL 807391 , at *1 (9th Cir. Mar. 16, 2022). 10 For the purposes of this motion, the parties do not meaningfully dispute the 11 validity of Plaintiff’s BMF Mark.4 Plaintiff has also attached a copy of the 12 registration for the BMF Mark to the Complaint, (Compl., Exh. A,) which 13 “‘constitutes “prima facie evidence”’” of the BMF Mark’s validity. Lodestar Anstalt 14 v. Bacardi & Co. Ltd., 31 F.4th 1228, 1236 (9th Cir. 2022) (first quoting Iancu v. 15 Brunetti, 139 S.Ct. 2294, 2297 (2019) (quoting 15 U.S.C. § 1115 (a))). Plaintiff also 16 brings several common federal and state law claims, which Defendants argue are 17 subject to the Rogers test; Plaintiff does not dispute this.5 [18] 19 4 Defendants note they “dispute the legitimacy of any alleged rights that Plaintiff 20 claims in ‘BMF’ as a trademark,” (Mot. at 1,) but do not set forth substantive legal argument in the Motion to support this contention. [21] 5 As was the case in Twentieth Century Fox Television v. Empire Distribution, Inc., 22 the court “ha[s] no occasion to address whether the Rogers test applies to any state 23 laws.” 875 F.3d 1192 , 1196 n.1 (9th Cir. 2017). As Defendants note, the Ninth Circuit in MCA Records held the district court properly granted summary judgment 24 where the “likelihood-of-confusion test also govern[ed] [defendant’s] state law claims 25 of unfair competition.” 296 F.3d 894 , 902 n.2. In E.S.S. Ent. 2000, Inc. v. Rock Star Videos, Inc., the Ninth Circuit similarly held that “the First Amendment defense 26 applies equally to ESS’s [California] state law claims [of unfair competition and 27 trademark infringement] as to its Lanham Act claim.” 547 F.3d 1095, 1100 (9th Cir. 2008). Finally, the Ninth Circuit in Dr. Seuss Enters., L.P. v. ComicMix LLC held [28] -10Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 11 of 19 Page ID #:394 1 1. Expressive Work 2 The parties do not dispute the Series is an expressive work, and the court 3 agrees. See Twentieth Century Fox Television v. Empire Distribution, Inc., 875 F.3d 4 1192, 1196 (9th Cir. 2017) (determining a “television show itself is clearly an 5 expressive work”). Plaintiff argues, however, “the sale of consumer products bearing” 6 the BMF Mark is a “separate category of infringement” that Defendants have not 7 adequately shown “should be afforded free speech protection.” (Opp. at 14.) This 8 argument was rejected by the Ninth Circuit in Twentieth Century Fox.6 See 875 F.3d 9 1196-97 (“Although it is true that these promotional efforts technically fall outside the 10 title or body of an expressive work, it requires only a minor logical extension of the 11 reasoning of Rogers to hold that works protected under its test may be advertised and 12 marketed by name.”). As the Ninth Circuit noted, “the Rogers case itself concerned 13 both a movie with an allegedly infringing title and its advertising and promotion” and 14 “[t]he balance of First Amendment interests struck in Rogers and Mattel [v. MCA 15 Records] could be destabilized if the titles of expressive works were protected but 16 could not be used to promote those works.” Id. at 1197. Accordingly, the court finds 17 Defendants have shown the Series and the promotional and marketing materials 18 related to it, including consumer merchandise, are “expressive works” under the 19 Rogers test. The court now considers whether Defendants’ use of the BMF Mark “is 20 either not artistically relevant to the underlying work or explicitly misleading as to the 21 source or content of the work.” Gordon, 909 F.3d at 265 . [23] 24 plaintiff’s common law trademark infringement claims failed as a matter of law under the Rogers test. 983 F.3d 443, 461 (9th Cir. 2020), cert. denied, 141 S. Ct. 2803 [25] (2021). Considering this authority and because the parties do not separately address 26 Plaintiff’s common law claims, the court considers all of Plaintiff’s claims together in its analysis. [27] 6 Both parties cite Twentieth Century Fox as binding precedent on the court’s 28 determination of what constitutes an expressive work. (Mot. at 10-11; Opp. at 14.) -11Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 12 of 19 Page ID #:395 1 2. Artistic Relevance 2 “As to the first prong, any artistic relevance ‘above zero’ means the Lanham 3 Act does not apply unless the use of the trademark is explicitly misleading.” Dr. 4 Seuss Enters., L.P. v. ComicMix LLC, 983 F.3d 443, 462 (9th Cir. 2020), cert. denied, [5] 141 S. Ct. 2803 (2021). “Trademarks that ‘transcend their identifying purpose,’ are 6 more likely to be used in artistically relevant ways.” Twentieth Century Fox, 875 F.3d 7 at 1198 (quoting MCA Records, 296 F.3d at 900 ). Conversely, “[a] mark that has no 8 meaning beyond its source-identifying function is more likely to be used in a way that 9 has ‘no artistic relevance to the underlying work whatsoever’ because the work may 10 be ‘merely borrow[ing] another’s property to get attention.’” Id. (first quoting MCA 11 Records, 296 F.3d at 901 -02 (quoting Rogers, 875 F.2d at 999 )). 12 The Complaint alleges Defendants use the BMF Mark to abbreviate the term 13 “Black Mafia Family” in the title of the Series, which concerns a drug-trafficking 14 organization. Although the court refrains from determining the artistic relevance of 15 the BMF Mark in the Series at this stage, nothing “in [P]laintiff’s allegations [] 16 suggest that the mark, itself, is the centerpiece of the [Series] or that, like the 17 unadorned use of the ‘Honey Badger’ marks in Gordon, [D]efendants used the mark 18 without adding any artistic expression of their own.” See Deus ex Machina 19 Motorcycles Pty. Ltd. v. Metro-Goldwyn-Mayer Inc., 2020 WL 6875178 , at *7 (C.D. 20 Cal. Oct. 23, 2020) (citing Gordon, 909 F.3d at 270-71 ). And the Ninth Circuit has 21 held use similar to the Complaint’s allegations of Defendants’ use is artistically 22 relevant. Twentieth Century Fox, 875 F.3d at 1198 (using word “Empire” in 23 television show’s title where its “subject matter” was a “conglomerate, ‘Empire 24 Enterprises’” was “artistically relevant”). Therefore, Defendants’ use of the BMF 25 Mark must “explicitly mislead[] consumers as to the source or the content” of the 26 Series for Plaintiff’s claims to remain viable at this stage. See Gordon, 909 F.3d at 27 264. [28] -12Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 13 of 19 Page ID #:396 1 3. Explicitly Misleading 2 Even where the use of a trademark is artistically relevant to an expressive work, 3 the creator of the expressive work can be still be liable for infringement under the 4 Lanham Act if the creator uses the mark or material to ‘explicitly mislead[] 5 [consumers] as to the source or the content of the work.’” Brown v. Elec. Arts, Inc., [6] 724 F.3d 1235, 1245 (9th Cir. 2013) (quoting Rogers, 875 F.2d at 999 ) (alteration in 7 original). “The relevant question, therefore, is whether the [Series] would confuse its 8 [viewers] into thinking that [Plaintiff] is somehow behind the [Series] or that 9 [Plaintiff] sponsors [the Series].” See E.S.S. Ent. 2000, Inc. v. Rock Star Videos, Inc., [10] 547 F.3d 1095, 1100 (9th Cir. 2008). This prong “is a high bar that requires the use to 11 be an explicit indication, overt claim, or explicit misstatement about the source of the 12 work.” Dr. Seuss Enters., 983 F.3d at 462 (citation and internal quotation marks 13 omitted). And “the mere use of a trademark alone cannot suffice to make such use 14 explicitly misleading.” Id. (citing MCA Records, 296 F.3d at 302 ). 15 Defendants argue that the Series includes no explicit statements or claims 16 suggesting Plaintiff’s involvement, but notes Defendants use “BMF” as the Series’ 17 “shortened-title.” (See Mot. at 1, 8, 13.) Plaintiff’s allegations are limited to 18 Defendants’ use of the BMF Mark in the Series and in connection with related 19 marketing and promotional merchandise. (Compl. ¶¶ 14, 19, 20.) As such, the 20 Complaint insufficiently alleges an “explicit indication, overt claim, or explicit 21 misstatement” linking Plaintiff to the Series. See Davis v. Amazon.com, Inc., 2022 22 WL 2062373 , at *5 (C.D. Cal. Jan. 3, 2022) (finding allegations that defendants’ film 23 (1) “had the ‘same title’” and “‘thematic elements’” as plaintiff’s book; (2) used font 24 “‘very similar’” to plaintiff’s book; and (3) was available to watch on the same 25 website selling plaintiff’s book insufficient to “amount to an ‘explicit indication, overt 26 claim, or explicit misstatement’ that the source of [defendant’s] [f]ilm was [p]laintiffs’ 27 book”). [28] -13Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 14 of 19 Page ID #:397 1 Where “consumers would expect the use of a mark alone to identify the 2 source,” Gordon, 909 F.3d at 270 (emphasis removed), courts weigh “two ‘more 3 relevant consideration[s]’ . . . in evaluating whether the mark is explicitly misleading: 4 (1) ‘the degree to which the junior user uses the mark in the same way as the senior 5 user’ and (2) ‘the extent to which the junior user has added his or her own expressive 6 content to the work beyond the mark itself.’” Dr. Seuss Enters., 983 F.3d at 462 7 (quoting Gordon, 909 F.3d at 270-71 ) (first alteration in original). Even assuming the 8 factors set forth in Gordon apply to this case as Plaintiff argues, (see Opp. at 14-18,) 9 the Complaint’s allegations do not sufficiently demonstrate that the factors weigh in 10 favor of Plaintiff. See Gordon 909 F.3d at 268 (noting Gordon “demonstrate[ed] 11 Roger’s outer limits.”). 12 i. Degree to Which Defendants Use the BMF Mark in the 13 Same Way as Plaintiff 14 Where “the senior user and junior user use[] the mark in different ways,” this 15 “disparate use of the mark [i]s at most ‘only suggestive’ of the product’s source and 16 therefore d[oes] not outweigh the junior user’s First Amendment interests.” Gordon, [17] 909 F.3d at 270 . But “identical usage could reflect the type of ‘explicitly misleading 18 description’ of source that Rogers condemns.” Id. (quoting Rogers, 875 F.2d at 999 - 19 1000). 20 Plaintiff argues that “Plaintiff’s protectible BMF [M]ark is not only similar, but 21 identical, to the ‘BMF’ acronym used by Defendants as the shortened title of their [] 22 Series” and “the Complaint plainly alleges a highly similar use of ‘BMF’ to that 23 claimed by Defendants.” (Opp. at 16.) The allegations in the Complaint that concern 24 Plaintiff’s use of the BMF Mark in commerce are that Plaintiff has “marketed and sold 25 services using the trademark ‘BMF’” and “expended considerable effort promoting 26 and establishing name recognition for his ‘BMF’ trademark.” (See Compl. ¶¶ 10-11.) 27 Even if Defendants’ use of the BMF Mark is similar to the uses for which Plaintiff’s 28 trademark is registered, as alleged in the Complaint, Plaintiff does not plausibly allege -14Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 15 of 19 Page ID #:398 1 that Defendants are using the BMF Mark in an explicitly misleading manner. See Dr. 2 Seuss Enters., 983 F.3d at 463 (holding “alleged use of Seuss’s trademarks [wa]s not 3 explicitly misleading” even though defendant “ha[d] used the marks in an illustrated 4 book just as Seuss did” where there was no indication of Seuss’s association with 5 defendant’s work and defendant added its own expressive content to the work beyond 6 the mark itself); see also Caiz, 382 F. Supp. 3d at 950-51 (rejecting the “legal 7 argument” that defendants’ use of plaintiff’s mark registered for “the exact same 8 goods and services for which [d]efendants use the mark” was explicitly misleading 9 because “even where the mark [wa]s used, it [wa]s through [defendant’s] own artistic 10 expression” and the associated “marketing” of the product using plaintiff’s mark 11 “attache[d]” to defendant’s “persona and history”). 12 Plaintiff argues a footnote from Rogers,7 which stated the test’s “limiting 13 construction would not apply to ‘misleading titles that are confusingly similar to other 14 titles’” supports finding Defendants’ use is explicitly misleading. (Opp. at 15-18 15 (citing Gordon, 909 F.3d at 270 (quoting Rogers, 875 F.2d at 999 n.5)).) But the 16 Complaint does not allege Plaintiff uses the BMF Mark as a title in any of his works, 17 and the court cannot infer the Series uses the mark in an “explicitly misleading” 18 manner based on the Complaint’s conclusory allegations that Plaintiff is “engaged in a [21] 7 Though this footnote is referenced in Gordon, the Ninth Circuit has questioned its 22 application. See Twentieth Century Fox, 875 F.3d at 1197 (“The exception the 23 footnote suggests may be ill-advised or unnecessary: identifying ‘misleading titles that are confusingly similar to other titles’ has the potential to duplicate either the 24 likelihood-of-confusion test or the second prong of Rogers, which asks whether a title 25 ‘explicitly misleads as to the source or the content of the work.’”) (citation omitted). Indeed, the Ninth Circuit in Gordon described this footnote as “noting that 26 ‘misleading titles that are confusingly similar to other titles’ can be explicitly 27 misleading, regardless of artistic relevance,” not that such instances will be by default. Gordon, 909 F.3d at 270 (quoting Rogers, 875 F.2d at 999 n.5) (second emphasis 28 added). -15Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 16 of 19 Page ID #:399 1 variety of entertainment media services” and has “marketed” and “sold services 2 using” the BMF Mark. 3 For the same reason, Rebelution, LLC v. Perez, in which the court held the title 4 of singer Pitbull’s record, “Pitbull Starring in Rebelution” was misleading as to the 5 band Rebelution’s trademarked name, is inapposite. 732 F. Supp. 2d 883, 888 (N.D. 6 Cal. 2010 ). In Perez, the court held the Rogers test was “inapplicable” where “neither 7 the word [‘rebelution’] nor the mark” had “taken on an expressive meaning apart from 8 its source-identifying function,” id. (citing MCA Records, 296 F.3d at 900 ), and 9 alternatively held defendants failed to show “they used plaintiff’s mark to refer to the 10 meaning associated with plaintiff’s mark,” id. at 889.8 By contrast, the BMF Mark in 11 the Series is used in the title of the Series as an acronym for the “Black Mafia 12 Family,” its subject. Regardless of the similarities between Defendants’ use of the 13 BMF Mark and Plaintiff’s registration of it, the court finds the Complaint does not 14 sufficiently and plausibly allege the ways in which Plaintiff uses the BMF Mark to 15 demonstrate Defendants’ use is explicitly misleading. 16 ii. Extent to Which Defendants have Added Their own 17 Expressive Content to the Series Beyond the BMF Mark 18 Itself 19 In considering whether a junior user has added their own expressive content 20 beyond a trademark itself, “the concern that consumers will not be ‘misled as to the 21 source of [a] product’ is generally allayed when the mark is used as only one [23] 8 Even if Perez were applicable here, courts in the Ninth Circuit have expressed doubt 24 as to its soundness. See, e.g., VIRAG, S.R.L. v. Sony Computer Ent. Am. LLC, 2015 25 WL 5000102 , at *9 (N.D. Cal. Aug. 21, 2015) (“[T]he Rogers test applies to cultural icons—such as the Barbie doll at issue in MCA Records—but is not limited to 26 them.”), aff’d, 699 F. App’x 667 (9th Cir. 2017); Twentieth Century Fox Television v. 27 Empire Dist. Inc., 161 F. Supp. 3d 902, 907 (C.D. Cal. 2016) (“[T]he [Perez] court has been criticized for misapplying the Rogers test.”), aff’d sub nom. Twentieth 28 Century Fox Television v. Empire Dist., Inc., 875 F.3d 1192 (9th Cir. 2017). -16Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 17 of 19 Page ID #:400 1 component of a junior user’s larger expressive creation, such that the use of the mark 2 at most ‘implicitly suggest[s]’ that the product is associated with the mark’s owner.” 3 Gordon, 909 F.3d at 270-71 (alteration in original). “But using a mark as the 4 centerpiece of an expressive work itself, unadorned with any artistic contribution by 5 the junior user, may reflect nothing more than an effort to ‘induce the sale of goods or 6 services’ by confusion or ‘lessen[] the distinctiveness and thus the commercial value 7 of’ a competitor’s mark.” Id. at 271 (quoting S.F. Arts & Athletics, Inc. v. U.S. 8 Olympic Comm., 483 U.S. 522, 539 (1987)) (alteration in original). 9 Plaintiff argues that “Defendants fail to articulate how their glossy production 10 of the [] Series using” the BMF Mark “as the title has added expressive content 11 beyond the BMF [M]ark itself.” (Opp. at 17 (emphasis removed).) The court 12 disagrees. Plaintiff does not contest that Defendants’ use of the BMF Mark as part of 13 the title of the Series, which is more broadly about “the dramatiz[ation] and 14 recount[ing] [of] the story of the Black Mafia Family and those involved.” (Mot. at 15 15; See Opp. at 17.) Based on this and considering the court’s analysis above, 16 Defendants have added their own expressive content to the Series beyond using the 17 BMF Mark in its title. See Betty’s Found. for Elimination of Alzheimer’s Disease v. 18 Trinity Christian Ctr. of Santa Ana, Inc., 2021 WL 3046889 , at *4 (C.D. Cal. Apr. 7, 19 2021), aff’d, 2022 WL 807391 (9th Cir. Mar. 16, 2022) (“The Ninth Circuit stated in 20 Gordon that when a mark is used as “the title of an expressive work—such as the title 21 of a movie, a song, a photograph, or a television show—the mark obviously serve[s] 22 as only one element of the [work] and the [junior user’s] artistic expressions.”) 23 (quoting Gordon, 909 F.3d at 271 ) (alterations in original); Deus ex Machina, 2020 24 WL 6875178 , at *6 (finding “defendants have added their own expressive content to 25 the [movie] beyond the mark itself” where the “mark play[ed] only a part in [the] 26 movie”). 27 Based on the plausibly pleaded allegations in the Complaint, Plaintiff 28 essentially asks the court to find Defendants use the BMF Mark in the Series’ title -17Case 2:21-cv-09586-FWS-PLA Document 50 Filed 06/17/22 Page 18 of 19 Page ID #:401 1 defeats the application of the Rogers test. That conception seems to defeat the 2 purpose of the Rogers test itself. See Dickinson v. Ryan Seacrest Enters. Inc., 839 F. 3 App’x 110, 111 (9th Cir. 2020), cert. denied sub nom. Dickinson v. Ryan Seacrest 4 Prods., Inc., 141 S. Ct. 2861 (2021) (“To succeed under the Rogers test, the ‘creator’s 5 use of the mark [must be] explicitly misleading as to source or content.’”) (quoting 6 Gordon, 909 F.3d at 269 ) (alteration in original). 7 C. Leave to Amend 8 “A party may amend its pleading once as a matter of course within: [(1)] 21 9 days after serving it, or [(2)] if the pleading is one to which a responsive pleading is 10 required, 21 days after service of a responsive pleading or 21 days after service of a 11 motion under Rule 12(b), (e), or (f), whichever is earlier.” Fed. R. Civ. P. 15(a)(1). 12 “In all other cases,” pleadings may only be amended with the opposing party’s written 13 consent or the court’s leave, the latter of which is “freely give[n] when justice so 14 requires.” Fed. R. Civ. P. 15(a)(2). “In assessing whether leave to amend is proper, 15 courts consider the presence or absence of undue delay, bad faith, dilatory motive, 16 repeated failure to cure deficiencies by previous amendments, undue prejudice to the 17 opposing party and futility of the proposed amendment.” Kroessler v. CVS Health 18 Corp., 977 F.3d 803, 814-15 (9th Cir. 2020) (citation and internal quotation marks 19 omitted). Courts may find amendment futile where “no amendment would allow the 20 complaint to withstand dismissal as a matter of law,” and “[f]utility of amendment 21 can, by itself, justify the denial of a motion for leave to amend.” Id. at 815 (citation 22 and internal quotation marks omitted). But “[i]f a complaint does not state a plausible 23 claim for relief, a district court should grant leave to amend even if no request to 24 amend the pleading was made, unless it determines that the pleading could not 25 possibly be cured by the allegation of other facts.” Perez v. Mortg. Elec. Registration 26 Sys., Inc., 959 F.3d 334 , 340 (9th Cir. 2020) (citation and internal quotation marks 27 omitted). [28] -18Case 2:21-cv-09586-FWS-PLA Document Filed 06/17/22 Page190f19 Page ID #:402 I The court finds the record does not support a finding of any instances of “undue 2 | delay, bad faith, dilatory motive, repeated failure to cure deficiencies by previous 3 || amendments, [or] undue prejudice to the opposing party.” See Kroessler, 977 F.3d at 4 | 814-15 (9th Cir. 2020) (citation and internal quotation marks omitted). Plaintiff has 5 | not previously amended the Complaint, and the court freely gives leave to amend 6 | consistent with Rule 15. Thus, the court does not find the Compliant allegations 7 | dismissed by this Order are futile. Accordingly, the court affords Plaintiff leave to 8 | amend Plaintiffs claims dismissed without prejudice by this Order. 9 | IV. DISPOSITION 10 The Complaint’s plausibly pleaded allegations do not provide a sufficient basis 11 | for the court to conclude that Defendants’ use is “explicitly misleading” within the 12 | meaning of the Rogers test. For that reason, the court GRANTS Defendants’ Motion 13 | and DISMISSES WITHOUT PREJUDICE AND WITH LEAVE TO AMEND the 14 | Complaint. Should Plaintiff desire to file an amended complaint that addresses the 15 | issues in this ruling, Plaintiff must file and serve it within thirty (30) days of service of 16 | notice of this ruling. [18] 19 IT IS SO ORDERED. [21] 22 | DATED: June 17, 2022 Lo LJ /— 23 HONORABLE FRED W. SLAUGHTER 54 UNITED STATES DISTRICT JUDGE [28] -19-