By John W. Scanlan, J.D.
The use by Twentieth Century Fox Television and Fox Broadcasting Company ("Fox") of the name "Empire" for a television series and associated music releases did not violate the Lanham Act because First Amendment protects the title of an expressive work that has some artistic relevance and is not explicitly misleading, the U.S. Court of Appeals for the Ninth Circuit ruled in affirming a district court decision granting declaratory judgment to Fox and dismissing counterclaims brought by Empire Distribution, Inc. The First Amendment also protected Fox’s various marketing and promotion activities related to its "Empire" series, the appeals court held (Twentieth Century Fox Television v. Empire Distribution, Inc., November 16, 2017, Smith, D.).
In 2015, Fox began broadcasting the television show "Empire," which focuses on a fictional New York-based hip-hop label called "Empire Enterprises." As part of a deal with Fox, Columbia Records releases music from the show after each episode, including original music. Fox also promotes the show through live musical performances and merchandise sales. Empire Distribution is a record label that releases hip-hop, rap, and R&B music. After Empire Distribution sent Fox a claim letter, Fox brought suit in the federal district court in Los Angeles, seeking a declaration that its show and the related music releases do not violate Empire Distribution’s trademark rights. Empire Distribution responded by filing counterclaims for trademark infringement, trademark dilution, unfair competition, and false advertising under the Lanham Act and California law. The district court granted summary judgment to Fox on all claims and counterclaims and denied reconsideration to Empire Distribution. Empire Distribution appealed.
Rogers test. Although the likelihood of confusion test is generally applied to claims under the Lanham Act pursuant to Mattel, Inc. v. MCA Records, Inc., the Ninth Circuit explained that the proper test in this case was enunciated in Rogers v. Grimaldi because the allegedly infringing use was the title of an expressive work, which implicates First Amendment rights. Under the Rogers test, this use does not violate the Act "unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work." While conceding that the Empire show itself and the associated music recordings were expressive works, Empire Distribution argued that Fox used the "Empire" mark for various promotional activities that fell outside the scope of the Rogers test. However, the Ninth Circuit determined that expressive works protected under this test could be advertised and marketed by name, using "only a minor logical extension of the reasoning of Rogers," and that the Rogers court’s balancing of First Amendment interests would be undermined by protecting the titles of expressive works but not allowing those works to be marketed using those titles. It was clear that the Empire show was not a "pretextual expressive work" meant to disguise profiting from another company’s trademark, and that Fox’s promotional activities were ancillary to the show and related music releases.
Application of test. Fox’s use of the common English word "Empire" satisfied both prongs of the Rogers test because it was used for artistically-relevant reasons and was not explicitly misleading to consumers. The show is set in New York, which is referred to as the Empire State, and its subject matter is the fictional music and entertainment conglomerate "Empire Enterprises," a figurative empire. Empire Distribution argued that this use failed the Rogers test because the junior work was required to refer to the senior work, but such a requirement did not appear in the test and would be inconsistent with its artistic relevance prong. As a result, the Ninth Circuit could not say that Fox’s use of "Empire" had "no artistic relevance to the underlying work whatsoever."
Further, the "Empire" show was not explicitly misleading because it contained no overt claims or expressive references to Empire Distribution. Empire Distribution’s argument that the relevant issue was consumer confusion mistakenly conflated the second prong of the Rogers test with the general likelihood of confusion test. In addition to consumer confusion, the Rogers test also requires an "explicit "indication," "overt claim," or "explicit misstatement" that caused the confusion, and none of these were present here, the court said.
The case is No. 16-55577.
Attorneys: Molly Manning Lens (O'Melveny & Myers LLP) for Twentieth Century Fox Television and Fox Broadcasting Co. Paul L. Gale (Troutman Sanders LLP) for Empire Distribution, Inc.
Companies: Twentieth Century Fox Television; Fox Broadcasting Co.; Empire Distribution, Inc.
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