District court rules Fox’s hit television show “Empire” did not infringe or dilute trademark of record label Empire Distribution because Fox’s use of “Empire” was protected by First Amendment.

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In 2015, plaintiff Twentieth Century Fox Television debuted “Empire,” a hit television series that tells a fictional story about a feuding family in the hip-hop music business. Music is heavily featured, including songs that were originally produced for use in the show. Defendant Empire Distribution Inc. is a record label, music distributor and publishing company that produces and distributes urban, hip-hop, rap and R&B music. Empire Distribution uses the trademarks “Empire,” “Empire Distribution,” “Empire Publishing” and “Empire Recordings.” After receiving a cease-and-desist letter from Empire Distribution demanding that Fox stop using “Empire,” Fox filed a declaratory judgment action against Empire Distribution, seeking a declaration that its use of the term “Empire” did not infringe or dilute Empire Distribution’s trademarks or violate state unfair competition law. Empire Distribution asserted counterclaims for federal trademark infringement, federal trademark dilution, federal unfair competition, California statutory unfair competition and false advertising, California common law trademark infringement, and California trademark dilution.

On Fox’s motion for summary judgment, the district court concluded that Fox’s use of “Empire” was protected by the First Amendment under the two-prong test for balancing Lanham Act claims with First Amendment rights laid out in the Second Circuit’s Rogers v. Grimaldi decision in 1989. Under the Rogers test, use of a mark as an artistic expression are not actionable under the Lanham Act unless the use of the mark has no artistic relevance to the underlying work or, if there is some relevance, it explicitly misleads consumers as to the source or content of the work.   

First, the court rejected Empire Distribution’s argument that in order for the Rogers test to apply, the “Empire” mark must be “of such cultural significance that it has become an integral part of the public’s vocabulary.” Rather, the court held that under prevailing Ninth Circuit authority, the only threshold use for applying the Rogers test is whether the allegedly infringing use is contained in an expressive work.

Second, applying the first prong of the Rogers test, the court found that the use of the term “Empire” had genuine relevance to the underlying work, recognizing that “[t]he word ‘Empire’ is clearly relevant to Fox’s work because the Empire series tells the story of characters struggling for literal control over an entertainment company called ‘Empire Enterprises’ and figurative control over the vast ‘empire’ that Lucious Lyon has built.” The district court rejected Empire Distribution’s argument that in order to pass the first prong of the Rogers test, the “junior” use of the mark must make a reference to the “senior” use, noting that while some district courts had interpreted the Rogers test as including this “referential” requirement, the Ninth Circuit had never done so. Rather, the “common thread” in opinions interpreting the Rogers test is that a junior user must not have arbitrarily chosen to use the trademarks simply to exploit its publicity value, but rather the use of the trademarks must have genuine relevance to the work. Fox easily passed this test. 

Third, with respect to the second prong of the Rogers test — which requires a junior user to show that its work does not explicitly mislead as to the source or content of the work — the court rejected Empire Distribution’s argument that this prong could be satisfied by a mere showing of likelihood of confusion. While lower courts have split on the proper standard, the district court found that any ambiguity about the proper standard was resolved by the Ninth Circuit’s 2013 decision in Brown v. Elec. Arts Inc., which held that the second prong of the Rogerstest “requires that the use be explicitly misleading to consumers,” and that “[t]o be relevant, evidence must relate to the nature of the behavior of the identifying material’s user, not the impact of the use.” Because Empire Distribution’s argument under the second prong of Rogersfocused solely on customer confusion, which the district court found to be irrelevant, the court concluded that Fox had not explicitly misled consumers about its affiliation with Empire Distribution. 

Accordingly, the court concluded that Fox’s use of “Empire” was protected by the First Amendment and fell outside the proscriptions of the Lanham Act, and it found that Fox was entitled to summary judgment on all claims in its complaint and Empire Distribution’s counterclaims.