California District Court Determines Fox’s Use of “Empire” is Protected by First Amendment and Does Not Constitute Trademark Infringement

Judge Percy Anderson of the United States District Court for the Central District of California recently granted summary judgment in the case Twentieth Century Fox v. Empire Distribution, Inc., Case No. CV-15-2158 PA (C.D. Cal. Feb. 1, 2016) in favor of Twentieth Century Fox Television (“Fox”) and against Empire Distribution, Inc. (“Empire Distribution”). The case, a trademark infringement and unfair competition suit, concerned Fox’s hit television series “Empire.” The series details the lives of fictitious hip-hop mogul Lucious, his wife Cookie, and their three sons as they grapple for control of the music and entertainment company Empire Enterprises. One of the unique features of the “Empire” series is its use of original music. Original songs are created for the show, performed on the show, then Fox partners with Columbia Records to release the soundtracks of the original music.

A quick background on the litigation: Empire Distribution, a hip-hip record label, music distributor, and publishing company, uses the marks “Empire,” “Empire Distribution,” “Empire Publishing,” and “Empire Recordings,” and has several pending federal trademark applications. Empire Distribution contends that Fox’s “Empire” series causes confusion over a perceived affiliation between Empire Distribution and the TV series.

Following receipt of a cease-and-desist letter from Empire Distribution, Fox filed suit on March 23, 2015, seeking declaratory judgments that its use of the word “Empire” does not infringe any of Empire Distribution’s trademark rights and does not constitute unfair competition. Empire Distribution countersued for federal trademark infringement, trademark dilution, and unfair competition, as well as state unfair competition, false advertising, common law trademark infringement, and trademark dilution.

On December 15, 2015, Fox moved for summary judgment on all of its claims and all of Empire Distribution’s counterclaims. The basis for Fox’s motion is that its use of “Empire” is protected by the First Amendment because the use constitutes expressive speech. In determining whether Fox’s use of “Empire” should be protected by the First Amendment, the Court adopted the two-pronged test from Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which has been stated by the Ninth Circuit to require: “an artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.” E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008).

Before analyzing the two prongs of the Rogers test and Fox’s use of “Empire,” the Court first determined that it did not require a threshold “cultural significance” inquiry, as Empire Distribution contended. Empire Distribution asked the Court to add the inquiry to the Rogers test that, in order to deserve First Amendment protection, the mark must be of such cultural significance that it has become an integral part of the public’s vocabulary. The Court rejected this request, citing Ninth Circuit precedent that the only threshold for applying the Rogers test is whether the allegedly infringing use is contained in the expressive work. The Court found that the “Empire” series and soundtracks are expressive works. Thus, it moved on to the Rogers test.

Applying the Rogers test, the Court found that its first prong – that the use of the mark has artistic relevance to the underlying work – was easily met. The Court pointed out that the word “Empire” is relevant to Fox’s work because the series is about the struggle for a company called “Empire Enterprises” and control over the vast “empire” the main character built. Empire Distribution all but conceded that Fox’s use of “Empire” is relevant to the underlying work but asked the Court to impose the additional requirement that the junior use of the mark, i.e. Fox’s use, is a reference to the senior use of the mark, i.e. Empire Distribution’s use. The Court again refused to accept Empire Distribution’s additional requirement, instead stating that: “[I]t would be a perverse result if Fox’s use of “Empire” would be protected [by the First Amendment] if Fox has claimed that the Empire series was in some minimal way a commentary on Empire Distribution, but the use would not be protected if, as is the case here, Fox had disclaimed any such use.”

The second prong of the Rogers test required Fox to show that the “Empire” series does not explicitly mislead as to the source or content of the work. In evaluating this prong, the Court employed a “straightforward application” of the test, requiring an “explicit indication, overt claim, or explicit misstatement” as to the source of the work. The Court rejected Empire Distribution’s argument that the second prong of the Rogers test should be evaluated using a likelihood of confusion analysis. The Court dismissed Empire Distribution’s position because it placed too much emphasis on the impact of use on the consumers because consumer confusion is irrelevant to the second prong of Rogers. The proper test focuses on whether there has been an “explicit indication, overt claim, or explicit misstatement” as to the source of the work. The Court found that Fox has not explicitly misled consumers about its affiliation with Empire Distribution, and therefore, the second prong of Rogers was met.

Because Fox’s use of “Empire” in relation to its television series and related music satisfied the Rogers test, the Court found such use to be protected by the First Amendment and outside the scope of the Lanham Act. Thus, Fox was entitled to summary judgment on all of its claims and Empire Distribution’s Counterclaims. Empire Distribution has not yet filed a Notice of Appeal.

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