Appeals Court Favors Empire TV over Empire Records
by Jerry Glover
November 21, 2017
The Fox television series, “Empire,” is a melodrama about a hip hop music label located in New York City and the family that founded and runs it. Each season, many episodes of the series feature song performances from various music genres. And each season Columbia Records releases music from the show after each episode airs and at the end of each season.
Empire Distribution, is a well-known record label founded in 2010. It records and releases albums in the urban music genre including hip hop, rap and R&B. Many of those albums use “Empire Presents” on the cover of the album followed by the name of the recording artist.
Empire Distribution sent Fox a letter claiming its TV series title violated Empire’s trademark in “Empire.” Fox went to court seeking a declaratory judgment that it was not violating Empire’s trademark rights. The lower court granted summary judgment to Fox. We discussed that lower court decision here: http://lsglegal.com/fox-gets-to-keep-its-empire. The record label appealed but the appeals court confirmed the judgment for Fox. Twentieth Century Fox Television v. Empire Distribution, Inc., 2017 WL 5490820 (9th Cir. November 16, 2017).
To prove trademark infringement, a trademark owner must prove that it owns a valid trademark and that the defendant’s use of that trademark is likely to cause confusion among the relevant consuming public as to the source of the defendant’s product or service. That is, will the consumer think plaintiff, the trademark owner, is the source of defendant’s product which uses the same or similar trademark? But if the plaintiff’s mark is used in what the courts call an “expressive work”, the First Amendment guarantee of free speech may trump the plaintiff’s trademark rights. That’s what happened here.
Why is the use of a trademark in an expressive works different from the use of that mark elsewhere? In addition to the free speech requirement noted above which is balanced against the public interest in avoiding consumer confusion, it is also assumed that consumers are less likely to mistake the use of someone else’s mark in an expressive work as a sign of association, authorship or endorsement with that other party’s mark. The appeals court in this case noted that it used a test developed by the federal appeals court located in New York called the Rogers test. Under this test, the title of an expressive work (i) does not violate a plaintiff’s trademark rights unless the title has absolutely no artistic relevance to the underlying work (that is, the level of relevance merely must be above zero) or (ii) if it has some artistic relevance, the title explicitly misleads as to the source or content of the expressive work. This test also applies to the use of a trademark within the body of an expressive work not just in the title.
In this case the court noted that the television series was obviously an expressive work. It added that the word “empire” was very relevant to the TV series in question. It was set in New York, which is known as the Empire State. The series is about a music conglomerate, an empire of sorts. So, the court believed that there was artistic relevance in connection with the use of “Empire” for the series. As to the second prong of the Rogers test, the court found that Fox did not explicitly mislead consumers as to the source or content of the work. The series made no references, explicit or otherwise, to the plaintiff and the mere use of the mark in the series is not enough to conclude that Fox intentionally mislead viewers.
Empire Distribution also alleged that some of Fox’s use of the mark fell outside the title or body of the Fox series and therefore outside the scope of Rogers because Fox used the mark as a so-called umbrella brand to promote and sell music and other commercial products. The appellate court agreed that these types of uses fall outside the title or body of an expressive work—technically. But if an expressive work’s use of a trademark is protected under Rogers, the court stated, that work may use that mark as part of the advertising and marketing of the show. The court asked what if an expressive work could use a trademark in its title or within the body of the work but not be able to advertise the work using that same mark?