Fox Gets To Keep Its “Empire”
March 14, 2016
by Jerry Glover
By now, most people are aware of (if not an actual fan of) the Fox television series “Empire,” which concerns a family’s ownership and feud over a record company empire. The series has even spawned several soundtrack albums composed of music featured on the show. But viewers aren’t the only ones aware of this series. Empire Distribution is a record label, music distributor and publishing company founded in 2010. It focuses on urban, hip hop, rap and R&B music. It has produced multiple platinum and gold records and has worked with artists including Snoop Dogg, Kendrick Lamar and Gladys Knight.
Empire Distribution was not happy that the television series was using its trademark as the title. It sent Fox a cease and desist letter demanding a name change. Fox answered with a lawsuit seeking a declaratory judgment that its use of “Empire” as the series title was not a trademark infringement. Empire countersued alleging infringement, trademark dilution and several other trademark related causes of action. Recently, a federal district court in California ruled squarely for Fox noting that the First Amendment free speech protection provided a very safe harbor for the network. Twentieth Century Fox Television v. Empire Distribution, 15 CV 2158 (C.D. Cal. February 1, 2016).
The Ninth Circuit Court of Appeals has adopted a test from the Court of Appeals for the Second Circuit first announced in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) to be used in cases of this type. In that case the film actor Ginger Rogers sued a film producer/production company over a film entitled “Fred and Ginger” which concerned the reunion of an Italian cabaret act that copied the dance routines of Fred Astaire and Ginger Rogers. The Second Circuit held that Rogers’ claims for right of publicity violation and unfair competition were pre-empted by the First Amendment. The court stated that
“an artistic work’s use of a trademark [in this case Rogers’ name] that otherwise would violate the [federal trademark 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.”
Later cases have held that this so-called Rogers test applies in cases where the trademark is part of the expressive work’s title or is a part of the body of that work.
Empire Distribution claimed that the Rogers test could be applied only if the court found that the “Empire” trademark is “of such cultural significance that it has become an integral part of the public’s vocabulary.” The court disagreed noting that First Amendment protections do not require such a pre-requisite nor would the First Amendment make distinctions between expressive works that refer to cultural icons and those that don’t. The only threshold question is whether the allegedly infringing use of the mark is contained in an expressive work. Here, the television series and soundtrack albums were clearly expressive works.
The court next looked to whether the use of the trademark had artistic relevance to the expressive work. The court noted that the required level of relevance “merely must be above zero”, a very low threshold. The use of the trademark as part of the expressive work need not reference the trademark owner—Empire Distribution—even though in Rogers the “mark” used in the film title did reference the plaintiff, Ginger Rogers. The court easily found a level of relevance between the mark “Empire” and the subject of the series—a family’s struggle to control a record empire.
The second part of the Rogers test required Fox to demonstrate that its series did not explicitly mislead viewers to believe that Empire Distribution was the source of that series. Empire contented that a traditional trademark infringement analysis was required to determine whether consumers were likely to be confused as to the source of the source and that evidence could include consumer surveys. The court stated, however, even consumer confusion was not sufficient to avoid First Amendment protection unless Fox itself had made some type of explicit, overt claim or explicit misstatement as to the source of the work that led to the consumer confusion. The court concluded that federal trademark law analysis is not appropriate where a trademark is simply used as part of an expressive work.
So Cookie can rest easy. No one is messin’ with her Empire.