Byron Belin v. Starz Entertainment, LLC

• Court: Court of Appeals for the Ninth Circuit
• Decided: May 8, 2024
• Docket: 23-55372
• Status: Unpublished

Opinion

NOT FOR PUBLICATION FILED UNITED STATES COURT OF APPEALS MAY 8 2024 MOLLY C. DWYER, CLERK U.S. COURT OF APPEALS FOR THE NINTH CIRCUIT

BYRON BELIN, No. 23-55372

Plaintiff-Appellant, D.C. No. 2:21-cv-09586-FWS-PLA v.

STARZ ENTERTAINMENT, LLC, a MEMORANDUM* Colorado limited liability company; et al.,

Defendants-Appellees.

Appeal from the United States District Court for the Central District of California Fred W. Slaughter, District Judge, Presiding

Argued and Submitted March 28, 2024 Pasadena, California

Before: RAWLINSON, LEE, and BRESS, Circuit Judges.

Byron Belin sued Starz Entertainment, Lions Gate Entertainment, Curtis

Jackson, G-Unit Brands, Inc., and G-Unit Film and Television, Inc for trademark

infringement. The district court dismissed Belin’s lawsuit with prejudice, ruling that

the defendants’ alleged use of Belin’s mark—“BMF”—was protected by the First

Amendment and therefore outside the scope of the trademark laws. We have

* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. jurisdiction under 28 U.S.C. § 1291, and we vacate and remand.

Belin registered and uses the trademark “BMF” (which stands for “Building

Money First”) in connection with a variety of entertainment products, including a

show available on YouTube. After he learned that the defendants were planning to

use the BMF mark for a new Starz network show called Black Mafia Family, Belin

sent multiple cease-and-desist letters and eventually sued.

The district court, applying the test from Rogers v. Grimaldi, 875 F.2d 994,

999 (2d Cir. 1989), held that the defendants’ use of the BMF mark was protected by

the First Amendment. The district court declined Belin’s request to stay the case

pending the Supreme Court’s decision in Jack Daniel’s Props., Inc. v. VIP Prods.

LLC, 599 U.S. 140 (2023). Several months after the district court dismissed Belin’s

lawsuit, the Supreme Court decided Jack Daniel’s, limiting the scope of Rogers’

protection. See Jack Daniel’s, 599 U.S. at 145. After the Jack Daniel’s decision,

application of the Rogers test “is not appropriate when the accused infringer has used

a trademark to designate the source of its own goods—in other words, has used a

trademark as a trademark.” Id.

The district court did not determine whether the defendants use the BMF mark

as a trademark. And the briefing before us on that question is limited. “As a federal

court of appeals, we must always be mindful that we are a court of review, not first

view.” Roth v. Foris Ventures, LLC, 86 F.4th 832, 838 (9th Cir. 2023) (quotations

2 and citations omitted). We thus remand for the district court to consider in the first

instance whether the defendants use the BMF mark as a trademark. If the district

court determines that they use the BMF mark to designate the source of their own

goods, then Rogers no longer applies, and the court should proceed to the traditional

likelihood of confusion analysis. See Punchbowl, Inc. v. AJ Press, Inc., 90 F.4th

1022, 1024 (9th Cir. 2024).

In light of our decision to vacate and remand, we do not reach Belin’s

argument that the district court erred in denying Belin’s request to convert the motion

to dismiss to a motion for summary judgment.

VACATED and REMANDED.