[00:00:01] Speaker 00: May I please the court? [00:00:03] Speaker 00: My name is George Hampton and I represent the appellant Byron Balen. [00:00:07] Speaker 00: I would like to reserve three minutes for rebuttal. [00:00:10] Speaker 04: Council, please be reminded that the time shown on the clock is your total time remaining. [00:00:15] Speaker 00: Thank you. [00:00:16] Speaker 00: All right. [00:00:19] Speaker 00: The district court decided the motion to dismiss while the case of Jack Daniels was pending before the United States Supreme Court. [00:00:27] Speaker 00: As a result, the district court's analysis focused solely on the application of the Rogers test and whether the defendant's use of the mark was explicitly misleading. [00:00:40] Speaker 00: As such, and based upon arguments of counsel, the court also refused to exercise its inherent authority to stay the decision on the motion to dismiss pending the outcome of the Jack Daniels case because the court incorrectly believed that the Jack Daniels case only dealt with the issue of parity. [00:01:01] Speaker 00: As we now know, the Jack Daniels case [00:01:05] Speaker 00: clarified the Rogers test and applies more broadly in terms of cases other than So what are you asking us to do? [00:01:13] Speaker 05: Do you want is your position that this should be remanded for the district court to consider Rogers? [00:01:18] Speaker 05: Or do you think that the court here should consider whether Rogers applies in light of Jack Daniels? [00:01:24] Speaker 00: What I'm asking for is for the for the case to be reversed and remanded in [00:01:29] Speaker 00: and for the court to consider this case in light of the holding of Jack Daniels and to consider whether the likelihood of confusion test would apply because the court in this case was solely focused on the explicit misleading test of Rogers. [00:01:47] Speaker 05: So should the likelihood of confusion test apply here post Jack Daniels? [00:01:51] Speaker 00: Yes, it should. [00:01:53] Speaker 00: It's our contention that just as in Punchbowl, where you had an entity called Punchbowl suing an entity called Punchbowl Express and Punchbowl News for their use, that our use of the mark BMF, you know, we should be entitled to sue the defendants for their misuse of a mark as a mark and apply the likelihood of confusion test. [00:02:15] Speaker 00: And that is the sole focus of my entire argument, is that the district court applied the wrong test. [00:02:24] Speaker 00: And when I say that, the court should decide whether to apply the likelihood of confusion test or the explicitly misleading. [00:02:35] Speaker 03: Haven't we held that titles are generally not source identifiers in the Empire case? [00:02:42] Speaker 00: You know, in the Empire case, but there are other cases, for example, in Punchbowl, where the title of the work, even though it was in the title of the work, it was used as a mark, and so the likelihood of confusion test would apply, as opposed to the explicitly misleading. [00:02:55] Speaker 04: Counsel, what is the evidence in the record that the BNF, Black Mafia family, BNF, was used as a mark? [00:03:05] Speaker 00: We've alleged that. [00:03:05] Speaker 00: It's in the experts of record, I believe, beginning at 110. [00:03:09] Speaker 00: just using it on, for example, t-shirts as BMF, on promotional materials, BMF. [00:03:17] Speaker 00: That is our assertion that they're using the mark as more than just a title. [00:03:22] Speaker 00: It's being used as a mark to, and by, if you look also at the complaint, by using that mark, it's creating the improper inference [00:03:32] Speaker 00: that somehow they're affiliated or connected with our company. [00:03:38] Speaker 03: If you just set aside the merchandise, set that aside. [00:03:43] Speaker 03: The show itself, when you see promotion material, says premium stars channel, BMF. [00:03:49] Speaker 03: Isn't that just really referring to the title? [00:03:52] Speaker 00: Well, in that advertising, it would be just a title, but the issue is whether the, in this case, they've adopted our mark as the title, right? [00:04:02] Speaker 00: There's no way, and they didn't put anything else in addition to the title into the connection with the mark. [00:04:09] Speaker 04: They haven't tried to trademark that. [00:04:12] Speaker 00: I don't. [00:04:13] Speaker 00: Thank you, Your Honor. [00:04:15] Speaker 00: I don't know that, so I can't represent on the record. [00:04:17] Speaker 00: Unlike the record in Punchbowl, I believe they did attempt to. [00:04:21] Speaker 00: That's the difference. [00:04:21] Speaker 00: Right. [00:04:22] Speaker 00: But I don't know that, because the court below was so fixated on allegations of explicitly misleading, it wouldn't even have made a difference to that judge. [00:04:33] Speaker 05: Does it even matter if they register the trademark? [00:04:35] Speaker 05: I mean, your contention would still be there using your mark as a mark. [00:04:38] Speaker 00: That's correct. [00:04:40] Speaker 00: But Judge Rawlinson. [00:04:41] Speaker 04: That's indicative of whether or not they're actually using it as a mark. [00:04:45] Speaker 00: Correct. [00:04:45] Speaker 00: And that's what I was going to say. [00:04:46] Speaker 00: Judge Rawlinson's question goes to a larger question. [00:04:47] Speaker 00: What evidence is there? [00:04:49] Speaker 00: But we didn't have a chance to do any of the discovery. [00:04:52] Speaker 00: And again, the court was so focused on the explicitly misleading prong under the Rogers test. [00:04:58] Speaker 00: That's what the court was focused on. [00:05:00] Speaker 00: So we didn't even have a chance to develop any of the other records of use of a mark as a mark. [00:05:07] Speaker 00: And it wouldn't have mattered in front of [00:05:09] Speaker 00: the district court because it was his opinion that the Rogers test applied and there was no other test that was applicable. [00:05:18] Speaker 04: Council, when BMF is used on merchandise, is it followed by the full title of the show? [00:05:24] Speaker 00: And in the cases I've seen, the answer is most of them know it might be, but I don't want to represent to that to the court. [00:05:33] Speaker 00: But I have seen some examples of where it just says BMF without the full title of the show. [00:05:39] Speaker 00: If it was just black mafia family, we wouldn't be here. [00:05:42] Speaker 00: But again, it's using [00:05:44] Speaker 00: that mark, and our contention is they're using it as a mark, and so that under Jack Daniels, we would be applying a likelihood of confusion test. [00:05:55] Speaker 04: But you would agree that the BMF for the two marks stand for different things? [00:06:01] Speaker 00: That's correct. [00:06:02] Speaker 04: That's correct. [00:06:03] Speaker 04: So it's not like punchbowl, where the identical meaning was there. [00:06:07] Speaker 00: Well, I will say this. [00:06:10] Speaker 04: Punchbowl and punchbowl are identical. [00:06:12] Speaker 04: Those words are identical. [00:06:14] Speaker 04: BMF stands for one thing for your client and stands for a different thing for the TV show. [00:06:20] Speaker 04: Would you agree with that? [00:06:21] Speaker 00: Yes, I would agree with that. [00:06:22] Speaker 00: However, I would also say that BMF equals BMF, right? [00:06:26] Speaker 00: And so that's where this likelihood of confusion comes in when they're identical, which our contention is. [00:06:33] Speaker 04: But you don't look at them alone. [00:06:35] Speaker 04: You look at them in the context, correct, for trademarking. [00:06:38] Speaker 00: Well, I would look at how they're being used as if they're being used [00:06:43] Speaker 00: as a source identifier, whether there's likelihood of confusion. [00:06:46] Speaker 00: I believe in the Punchbowl case, they were being used in totally different fields, totally different everything. [00:06:52] Speaker 00: And so, but it's still that, you know, as the court pointed out in Punchbowl, [00:06:57] Speaker 00: I'm not asking for ultimate determination whether we win or lose. [00:07:03] Speaker 00: What I'm asking for is to get past the pleading stage to do the likelihood of confusion test under the sleek craft factors as opposed to the heightened scrutiny of the Rogers test and the protections of the First Amendment. [00:07:15] Speaker 00: where you have to be explicitly misleading. [00:07:18] Speaker 00: And so that's what I'm asking this court to do, is to send it back down to the district court level so that the district court can, in light of the guidance now provided by the Jack Daniels decision, look at anew. [00:07:31] Speaker 00: And for example, I don't know, but if, for example, STARS had attempted to trademark BMF, that would be a fun fact that we could allege in the complaint to allege the use of a more [00:07:45] Speaker 00: more indicative use of the mark as a mark as opposed to just using it. [00:07:49] Speaker 03: Just hypothetically here, suppose the sci-fi network developed a show, and they call it Friends, and it's actually a show about friends who are Star Trek fans. [00:08:02] Speaker 03: It's not a parody, it's just a reality show of just Trekkies. [00:08:06] Speaker 03: They don't look like Jennifer Aniston or Matt LeBlanc. [00:08:09] Speaker 03: They call it Friends. [00:08:10] Speaker 03: Would they be using, again, it's not a parody, would the use of the title Friend, Sci-Fi Network Presents Friends, a Sci-Fi Trekkie Adventure, would that be being used as a mark or is that just a title? [00:08:23] Speaker 00: Okay, I think that you have to focus on the use of the mark in addition to, it's not just as a [00:08:29] Speaker 00: You have to look at other indicia of the use of the mark as if it's just as a time. [00:08:33] Speaker 00: I just said that in context, and you said no. [00:08:35] Speaker 00: Well, I agree with you then. [00:08:36] Speaker 00: I agree with you then. [00:08:37] Speaker 00: I agree with you. [00:08:38] Speaker 00: It's the use of the mark. [00:08:39] Speaker 00: And if they use the mark, as Jack Daniel teaches us, they use it as a mark as opposed to a title of the work. [00:08:49] Speaker 00: It's used as a source identifier of the goods, then the likelihood of confusion tests would apply. [00:08:55] Speaker 00: And it's our contention that on remand, we could [00:08:58] Speaker 00: uh, uh, at least amend the complaint to allege that, um, given the op- you know, depending upon this- what judge, uh, would do with it, whether it converts into a motion for summary judgment, uh, we could do discovery and find out, you know, more details, like, for example, if they attempted to register the mark. [00:09:16] Speaker 04: Counsel, may I ask you if we agree, um, if we disagree that Jack Daniels applies and we say that the district court properly applied the explicitly misleading test, do you lose? [00:09:28] Speaker 00: Yes. [00:09:31] Speaker 04: All right, thank you. [00:09:32] Speaker 04: Thank you. [00:09:33] Speaker 04: We'll give you a couple of minutes for rebuttal. [00:09:35] Speaker 04: Thank you. [00:09:44] Speaker 01: May it please the court, Kevin Bell on behalf of the Appellees. [00:09:47] Speaker 01: Jack Daniels does not apply in this manner. [00:09:50] Speaker 01: On this record, Your Honor, the [00:09:53] Speaker 01: Facts are clear that Apple E's have always used BMF in conjunction with its television show and the promotion of that television show that is being aired on Starz, produced by Starz and Lionsgate and G-Unit with the executive producer of Curtis Jackson, aka 50 Cent. [00:10:13] Speaker 01: The source of the show is unmistakable in the record, including all of the references that were in the Second Amendment complaint, [00:10:21] Speaker 01: that appellant was able to identify over cost three different complaints each time he identified BMF it was in connection with stars it was connection with 50 cent it was in connection I mean that may go to whether there's a likelihood of confusion I don't know what that says about whether the mark is being used as a mark under Jack Daniels [00:10:44] Speaker 01: Well, it's, as the court found in, just recently found in the Punchbowl case, when it's solely there to perform an expressive function, that is where Jack Daniels ends, and that's what was cabined off by the court. [00:10:59] Speaker 01: This is an expressive function. [00:11:00] Speaker 01: This is, BMF is referencing the title of the show. [00:11:04] Speaker 01: It's also referencing [00:11:05] Speaker 01: the content of the show. [00:11:07] Speaker 01: This is a show dramatizing the life of the black mafia family who went by BMF. [00:11:14] Speaker 01: They would wear giant necklaces that said BMF on them. [00:11:17] Speaker 05: It definitely is expressive and the same was true in Jack Daniels. [00:11:21] Speaker 05: The issue is, is it also being used to identify the product and distinguish it from others? [00:11:28] Speaker 05: I have a hard time seeing how it couldn't be when it's all being labeled BMF. [00:11:32] Speaker 01: Well, the show is being labeled BMF, but the entire, the place to go to watch BMF is Stars. [00:11:40] Speaker 01: The source of it is Stars. [00:11:42] Speaker 05: That's true, but in Jack Daniels, the source of it was a company called VIP Products that I don't think people have heard of. [00:11:50] Speaker 05: And in Punchbowl, the source of it was AJ Press. [00:11:53] Speaker 05: Everyone else had a source, but in all these cases, [00:11:56] Speaker 05: the mark is being used to identify the product, so that if you see BMF, you see, oh, that's the show that I like, or that's the apparel that I like, and you identify it as something. [00:12:06] Speaker 05: That's what they mean by source identifying. [00:12:08] Speaker 01: Well, this is where I would analogize this to the Mattel case, that when they used the Barbie name in the song, they weren't speaking as to the source identifier within Barbie. [00:12:21] Speaker 01: They were speaking, and it wasn't to the song's origin, [00:12:24] Speaker 01: which was the band Aqua. [00:12:26] Speaker 01: Here, same thing. [00:12:27] Speaker 01: BMF is the show. [00:12:28] Speaker 01: This is the series. [00:12:30] Speaker 01: Where do you see it? [00:12:30] Speaker 01: It's on Starz. [00:12:31] Speaker 01: Who made it? [00:12:32] Speaker 01: Curtis Jackson, G-Unit, Starz, Lionsgate. [00:12:36] Speaker 05: Those are all... I guess the response to that, I think, someone would say, well, you know, the Barbie song was a one-off song. [00:12:41] Speaker 05: It wasn't being used [00:12:43] Speaker 05: as a brand, whereas here, it seems by the allegations of the complaint, your clients are using BMF as a brand for a show and related promotional things like t-shirts and other things. [00:12:58] Speaker 01: directing people to come to the show, and this is where the Empire case... That's exactly right. [00:13:03] Speaker 05: That's exactly right. [00:13:04] Speaker 05: So that when people associate the BMF, they associate it with the show. [00:13:10] Speaker 05: That's what it means to be source identifying. [00:13:12] Speaker 01: It's associated with the show, but they still need to know where to go to the show. [00:13:16] Speaker 01: And this is where the Empire case comes in, Your Honor, where the court [00:13:19] Speaker 01: said that you couldn't separate the expressive aspect of the use of the Empire as the title of the show with the promotional. [00:13:30] Speaker 01: And it said it would disturb the fundamental First Amendment. [00:13:32] Speaker 05: No, I think you're right about this, that this is where this case starts to run into Empire. [00:13:36] Speaker 05: And then the question is then raised, is Empire no longer a good law in light of Jack Daniels? [00:13:41] Speaker 05: Because that's what Punchbowl had to say about some aspects of Ninth Circuit precedent too, because of course Jack Daniels reversed Ninth Circuit case law. [00:13:49] Speaker 01: If it relates solely to the merchandising aspect, I understand where you're coming from, Your Honor, but with respect to the use, the fundamental use of the program, sorry, the name, it's with the title of the program, which is what the [00:14:07] Speaker 01: Supreme Court did not disturb in Jack Daniels and what this court in Punchbowl explicitly identified as a area that is still capped off. [00:14:16] Speaker 05: If your client had put out a TV show called Building Money First and that was the name of the series and that's what you called it, would that not be using the mark as a mark or would you say that's purely expressive and is governed by Rogers? [00:14:33] Speaker 01: If in the same circumstances, if it was building money first and was being used as our client is using it as a television series, I do think it is protected by the Rogers test still to this day because of the use of it with an expressive function, not as a source identifying function, which is where the Jack Daniels case stopped and cabined off Rogers back into good law, which this court has then acknowledged. [00:14:57] Speaker 05: I mean, it's a somewhat difficult argument to accept because you'd basically be saying you can copy the identical [00:15:02] Speaker 05: the identical mark and so long as you're using it for a partially expressive purpose, it would be insulated from really effectively any Lanham Act liability because the Rogers Act is such a difficult test. [00:15:14] Speaker 05: The Rogers test is such a difficult one to pass, but I think the Supreme Court is taking us in a different direction. [00:15:21] Speaker 01: They're taking us in a different direction when there is a clear source identifying trademark use. [00:15:26] Speaker 01: And this is not, this is again, Black Mafia Family is the television show. [00:15:30] Speaker 01: BMF is the shortened title. [00:15:33] Speaker 01: BMF is part and parcel but the expressive aspect of the show. [00:15:37] Speaker 01: It's not source identifying. [00:15:39] Speaker 01: Stars is the source. [00:15:40] Speaker 01: Lions gets the source. [00:15:42] Speaker 01: Curtis Jackson is the source. [00:15:43] Speaker 03: Is whether a mark being used as a mark, is that a purely legal question? [00:15:48] Speaker 03: Like you stated differently, I mean, is this something that's always decided on a motion to dismiss or is this something that could be decided on a summary judgment? [00:15:55] Speaker 01: I believe it can be decided on a motion to dismiss on the record. [00:15:59] Speaker 03: Do we sometimes need additional facts to decide where the mark is being used as a mark? [00:16:04] Speaker 01: I could see the circumstances in which you could need additional facts, but here you don't. [00:16:08] Speaker 01: The use by STARS is in the public. [00:16:14] Speaker 01: everything the plaintiff would need to identify whether or not it's being used in a source identifying function is in the public because that's the idea. [00:16:22] Speaker 01: It's trademark. [00:16:22] Speaker 01: It's identifying to customers how it's being used. [00:16:26] Speaker 03: What's the line here? [00:16:27] Speaker 03: I understand your point that BMF here is [00:16:29] Speaker 03: identify stars as a source. [00:16:33] Speaker 03: That in some way also bleeds someone to the merits, saying, well, you're not going to be confused because this is a star show versus something on YouTube or some other element of it. [00:16:43] Speaker 03: I mean, how do we divide the line between this is Mark, whether it's being used as a mark or there's no real confusion here? [00:16:51] Speaker 01: I don't think the confusion needs to come in. [00:16:53] Speaker 01: It needs to start with, is the words being challenged being used in a source identifying function? [00:17:01] Speaker 01: And the record in a pleading can reflect that, which it does here. [00:17:06] Speaker 01: How is stars being used? [00:17:08] Speaker 01: It's not being used in a source identifying function. [00:17:11] Speaker 01: And at that point, there's no further analysis that needs to be done on the merits. [00:17:16] Speaker 01: There is no source identifying use. [00:17:19] Speaker 01: If it's not being used as a trademark, you go to the Rogers test. [00:17:23] Speaker 03: How about for the merchandise? [00:17:24] Speaker 03: Because the merchandise doesn't mention stars, at least what's in the complaint. [00:17:28] Speaker 03: There's no picture of the actors. [00:17:31] Speaker 03: It's just, from what I've seen, a hat or t-shirt that just says BMF. [00:17:34] Speaker 01: But that then comes into where we were saying that there's still good law in empire that you can't divide off. [00:17:43] Speaker 01: If the underlying, sorry, if the overall use is an expressive function, is the title of a show, the promotional aspects need to flow with that. [00:17:53] Speaker 01: Otherwise, you defeat the First Amendment protections afforded to it under Rogers, which is still good law. [00:17:58] Speaker 03: You could promote it, but I guess this is where context matters. [00:18:01] Speaker 03: If the t-shirt said BMF and it pictures some of the actors in it, then okay. [00:18:05] Speaker 03: But this one, or it says BMF, black mafia family would be one thing, but at least what's shown in the complaints just says BMF. [00:18:13] Speaker 01: It still flows back from the, if a consumer is interested in buying a BMF t-shirt because they watched the show, they already know the source. [00:18:25] Speaker 02: Is it sold just solely online merchandise materials or are they sold in retail stores? [00:18:31] Speaker 02: Online merchandise. [00:18:32] Speaker 02: Solely online? [00:18:33] Speaker 02: Yes. [00:18:35] Speaker 02: To my understanding, it's yes. [00:18:37] Speaker 04: Council, does it matter that the letters stand for different things? [00:18:41] Speaker 01: I believe it does, Your Honor, because I think it goes back to the expressive nature of the use. [00:18:48] Speaker 01: As I explained earlier, Black Mafia Family is the subject of the show. [00:18:52] Speaker 01: BMF is the natural initialization of that, but it was also part and parcel with the real-life families [00:19:00] Speaker 01: brand, essentially, their individual brand. [00:19:03] Speaker 01: They called themselves the BMF, and they've used that there. [00:19:07] Speaker 01: The show is depicting that. [00:19:08] Speaker 01: The show is using BMF to depict that as part of the black mafia family. [00:19:13] Speaker 01: And that, again, is part of the show. [00:19:16] Speaker 01: It's very important to the underlying aspects of the show. [00:19:20] Speaker 04: When the materials are sold online and one goes to the online, what does one put in to access the online merchandise? [00:19:30] Speaker 01: I don't know the full answer to that, Your Honor, if Black Mafia family and BMF would both return the merchandise. [00:19:40] Speaker 01: I do know that there are shirts that were sold or are sold that have Black Mafia family on the sleeves. [00:19:48] Speaker 01: If BMF is on the shirt, it's also on the, Black Mafia family is on the sleeves as part of that. [00:19:53] Speaker 01: And if you go to the website, it's G-Unit. [00:19:55] Speaker 01: You're at the G-Unit website. [00:19:57] Speaker 01: The source of it is G-Unit, which is 50 cents company. [00:20:00] Speaker 03: Don't you maybe even have a stronger case even at the pleadings just going to the merits rather than Rogers? [00:20:05] Speaker 03: I mean, you know, trying to determine whether Mark is being used as a mark seems a little bit more difficult rather than just looking at the merits. [00:20:11] Speaker 03: I don't know how large the YouTube channel is for the other side's BMF. [00:20:17] Speaker 03: I don't know how strong that mark is, you know, likelihood of confusion even at the pleading stage. [00:20:22] Speaker 03: I don't know how strong that is. [00:20:23] Speaker 01: We were confident on the merits if it got past the first member protections, but we still believe we are entitled to that initial first member protection afforded to content creators when they're using a title as expressive work. [00:20:39] Speaker 05: How do you distinguish this from Punchbowl, though, which had a title that was expressive? [00:20:43] Speaker 01: Well, Punchbowl was the website. [00:20:46] Speaker 01: Everything about the website was Punchbowl. [00:20:49] Speaker 01: If you go to Punchbowl to read Punchbowl news, to learn about Punchbowl, all of that was under the umbrella Punchbowl. [00:20:57] Speaker 01: You go to, if you want to watch the show, BMF, you go to Stars. [00:21:01] Speaker 01: And that's a different animal in our view. [00:21:04] Speaker 05: Well, I mean, that's really not different than saying if you want to read Punchbowl, go to AJ Press, which has other publications, including Punchbowl. [00:21:12] Speaker 05: Your clients have stars and you have various shows, including BMF and other media things. [00:21:19] Speaker 05: So I don't really see how it's that different. [00:21:20] Speaker 01: We weren't expanding beyond. [00:21:23] Speaker 01: We have the small promotional aspects of it. [00:21:26] Speaker 01: Yes, we acknowledge that with the merchandise. [00:21:28] Speaker 01: But otherwise, this is a television show on a network. [00:21:31] Speaker 01: This is one of many, many, many shows on stars. [00:21:34] Speaker 01: The source of it is still stars. [00:21:35] Speaker 01: It's still not being used as a source identifier. [00:21:38] Speaker 01: Just BMF on its own is not being used as the source identifier. [00:21:42] Speaker 05: Yeah, I mean, if somebody, a lot of the times in the complaint, even the show is listed only as BMF, I mean, sometimes with stars associated with it, and you would argue that dispels any likelihood of confusion, but that analysis hasn't been conducted here in the district court, which applied to Roger's test. [00:21:57] Speaker 01: I understand that, Your Honor, but it still needs, the threshold question, as I understand from Jack Daniels, is the BMF being used in a source-identifying way? [00:22:08] Speaker 01: And I think this record does support a finding that it's not being used as source identifying. [00:22:14] Speaker 01: And if it's not being used as source identifying on this record, then the Rogers test still applies. [00:22:20] Speaker 01: What does source identifying mean then? [00:22:22] Speaker 01: Source identifying means that stars is the source identifier. [00:22:31] Speaker 01: identifies that we are a maker of television programs or the era of television programs, that is source identifying. [00:22:39] Speaker 01: The content comes from us. [00:22:42] Speaker 01: BMF is content. [00:22:44] Speaker 01: that is created by stars. [00:22:45] Speaker 01: That's not source identifying. [00:22:47] Speaker 01: You still need to know who made the show, who is the producer of the show, who is airing the show. [00:22:51] Speaker 05: Yeah, I think that is one way to think about what source identifying means, but I don't think it's the one the Supreme Court could have had in mind because the silly squeaker toy in Jack Daniels did not in any way refer to a VIP Products LLC company that was making these things, right? [00:23:07] Speaker 05: There was no sense in which that was the ultimate source. [00:23:11] Speaker 05: What it means to be source identifying is to be distinguishing oneself from other products or goods. [00:23:18] Speaker 01: Well, I think as the chew toy in Jack Daniel's was being used with the bad spaniels on there, they were wanting people to go look for the bad spaniels product, the bad spaniels bottle that looked like the Jack Daniel's bottle. [00:23:33] Speaker 01: That was being used in a much more source identifying [00:23:35] Speaker 05: Don't you want people to go watch the BMF show? [00:23:38] Speaker 01: But they still have to go to Stars to watch the show. [00:23:41] Speaker 01: That's the difference. [00:23:44] Speaker 01: You could go to the store and get the bad spaniels product. [00:23:47] Speaker 01: You still have to go to Stars to find the BMF product. [00:23:51] Speaker 01: And that is the source of the program. [00:23:55] Speaker 01: So it's not being used as a source identifier. [00:23:57] Speaker 01: I would distinguish it from how bad spaniels was used in the Jack Daniels case. [00:24:02] Speaker 04: So counsel, the Supreme Court talked in terms of, [00:24:05] Speaker 04: when the accused infringer, the holding was, when the accused infringer has used a trademark to designate the source of its own goods. [00:24:15] Speaker 04: In other words, has used a trademark as a trademark. [00:24:20] Speaker 04: Yes. [00:24:20] Speaker 04: So how do you think that language applies? [00:24:23] Speaker 04: What is the goods, what are the goods in this case for your client? [00:24:30] Speaker 01: the good here is that it is a TV show television show yes but it is the but we are talking about the the title of the show that that that's fully within the expressive if if the court says that [00:24:47] Speaker 01: the title of a television show aired on the network is source-identifying, then the Rogers test is aggregated. [00:24:53] Speaker 01: I don't believe that the Rogers test has any more applicability in this court, which this court has already found unpunchable is not the case. [00:25:04] Speaker 01: This court has found that when it is not being used in a source-identifying manner, Rogers test is still good. [00:25:08] Speaker 01: The underlying cases applying Rogers is still good law and still [00:25:15] Speaker 01: Applies to to panels who are considering this thing. [00:25:19] Speaker 01: So if stars program of BMF is No longer falls within the Jack Daniels test and the Rogers test doesn't exist anymore And I don't believe that that's what the Supreme Court intended Supreme Court intended to cabin off Expressive uses of marks for protection under the First Amendment under Rogers and that's where we believe we stand Thank You Your Honor [00:25:47] Speaker 00: Thank you very much, and I'll just be brief. [00:25:51] Speaker 00: A lot of the questions that you all had for counsel, for example, where do you buy the goods, whether the stars had attempted to trademark BMF, [00:26:07] Speaker 00: stuff like that. [00:26:08] Speaker 00: Those are all factual questions. [00:26:10] Speaker 00: They're not questions normally that are addressed at the pleading stage. [00:26:13] Speaker 00: They all go to how the mark is being used. [00:26:17] Speaker 00: And when I was up here during my opening remarks, you asked me what I wanted the court to do, and I wanted this court to simply reverse and remand it back down to the district court to apply. [00:26:28] Speaker 00: the holding in Jack Daniels or the guidance of Jack Daniels, look and see whether it's whether the Rogers test applies or whether the likelihood of confusion test applies. [00:26:39] Speaker 00: And I think that just listening to the questions, we've all realized that it may be a legal question, but it's also highly factually dependent. [00:26:48] Speaker 04: Well, one could allege in a complaint that a mark is being used as a mark. [00:26:54] Speaker 00: Right. [00:26:54] Speaker 04: That could be alleged in a complaint. [00:26:55] Speaker 04: That's not necessarily. [00:26:57] Speaker 04: a factual issue if it's undisputed. [00:27:01] Speaker 00: Well, in this case, it is disputed, highly disputed by a stars council. [00:27:08] Speaker 00: And it really depends. [00:27:09] Speaker 04: But did you allege that it was being? [00:27:11] Speaker 00: We've alleged, I believe it was various iterations we had, I believe, complained. [00:27:16] Speaker 00: And then they focused on the Rogers test. [00:27:18] Speaker 00: It is alleged in the complaint in the paragraphs about their use of the mark. [00:27:22] Speaker 00: Does it say it's used as a mark, those words? [00:27:26] Speaker 00: No, but that's a simple amendment, and we could amend to use that to get past the pleading stage. [00:27:32] Speaker 00: What I'm asking for is a reasoned determination in light of the guidance provided by Jack Daniels on whether the mark is being used as a mark, which in case of likelihood of confusion, or whether it's being [00:27:44] Speaker 00: used solely as an expressive content. [00:27:46] Speaker 00: And I think that if you just look at this court's precedence in Punchbowl, you'll see that it's not a bright line test, and it is a factual determination. [00:27:55] Speaker 00: Now, that doesn't mean, ultimately, that a jury's gonna find in my favor at the end of the day, but we should be able to get past the pleading stage and go into these factors and to discover the uses. [00:28:06] Speaker 04: Do you make a distinction between the title of the TV show and the words that are on the merchandise? [00:28:15] Speaker 00: A title vis-a-vis a title versus the words. [00:28:18] Speaker 00: For example, if it said Black Mafia Family on a t-shirt. [00:28:21] Speaker 04: On the title. [00:28:22] Speaker 04: I'm just saying, are you saying that the title also infringes upon that? [00:28:26] Speaker 00: Well, I'm saying that, for example, they said they stand for Black Mafia Family. [00:28:33] Speaker 00: To someone who knows that, you know, when they see the initials BMF, it may mean that to them, but nobody, for my kids who've never been exposed anywhere, they see BMF on a t-shirt, they see it in the title, and they see it in the story. [00:28:46] Speaker 00: They go all together. [00:28:47] Speaker 04: Are you making a distinction between what's shown on the title for the TV show, BMF, which is usually followed by Black Mafia Family, [00:28:55] Speaker 04: and what you say is on the merchandise B.M.F. [00:28:58] Speaker 00: without any reference to Black Lives Matter family. [00:29:06] Speaker 04: Even if it's followed by the explication [00:29:09] Speaker 04: black mafia family, you still say that it's a mark that infringes your mark? [00:29:14] Speaker 00: No, I wouldn't say it in that case. [00:29:17] Speaker 03: Do you allege that the BMF merchandise are sold at retail stores, or do you agree with your opposing counsel that it's sold solely online? [00:29:24] Speaker 00: I don't know that. [00:29:25] Speaker 00: I also don't know, for example, whether if I typed in BMF in Google, it would take me to a website where I could watch the BMF television series. [00:29:33] Speaker 00: But a counsel represented to the court, they have to go to a STARS website. [00:29:37] Speaker 00: These are all factual inquiries that were precluded by the rules that don't allow discovery. [00:29:47] Speaker 00: in google black mouth your family comes up okay what i'm saying is what i'm saying is if i type in bmf can i go watch the television series i don't know that these are all these are all factual questions as opposed to i have to go to a star's website i have to go to this website or that website these are all things that go into a case that's why we have [00:30:07] Speaker 00: We have pleadings. [00:30:08] Speaker 00: We have discovery. [00:30:09] Speaker 00: We have juries that decide this, as opposed to, in this case, again, the district court decided the motion to dismiss without the benefit of the guidance of Jack Daniels. [00:30:18] Speaker 04: Understood. [00:30:19] Speaker 04: Any questions? [00:30:20] Speaker 04: Thank you. [00:30:21] Speaker 04: Thank you to both counsels for your helpful arguments in this case. [00:30:24] Speaker 04: The case just argued is submitted for decision by the court.