Ninth Circuit affirms grant of summary judgment in favor of Twentieth Century Fox and its affiliates, holding that Fox’s “Empire” television show and related promotional activity is protected by First Amendment and does not infringe trademark rights of record label Empire Distribution.

In 2015, Fox debuted the television series “Empire,” which tells a fictional story about a feuding family in the hip-hop business. The show features music in every episode, including songs that were originally produced for use in the show. Fox authorizes the release of that music after each episode and on a soundtrack after each season. Empire Distribution, which uses the trademarks Empire, Empire Distribution and Empire Recordings, sent a cease-and-desist letter to Fox demanding that Fox stop using the Empire mark in connection with its television series. Fox then filed a declaratory judgment action against Empire Distribution, seeking a declaration that its use of Empire did not infringe or dilute Empire Distribution’s trademarks or violate state unfair competition law.

The district court granted Fox’s motion for summary judgment, concluding 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. Under the Rogers test, the use of a mark as an artistic expression is not actionable under the Lanham Act unless it has no artistic relevance to the underlying work or, if there is some artistic relevance, the use explicitly misleads consumers as to the source or content of the work. The district court granted summary judgment to Fox on all claims, and denied Empire Distribution’s motion for reconsideration.

On appeal, the Ninth Circuit affirmed, holding that Fox’s use of Empire was protected by the First Amendment and was therefore outside the reach of the Lanham Act.

The court first considered whether the Rogers test applied to Fox’s use of the mark Empire. Empire Distribution argued that Rogers did not apply because at least some of Fox’s uses of the mark Empire fell outside the title or body of the expressive work, and therefore outside the scope of Rogers. Specifically, Empire Distribution pointed to Fox’s promotional activities under the “Empire” brand. The court disagreed: “Although it is true that these promotional efforts technically fall outside the title or body of an expressive work, it requires only a minor logical extension of the reasoning of Rogers to hold that works protected under its test may be advertised and marketed by name, and we so hold.” The court noted that Fox’s promotional activities were merely “auxiliary” to the television show and music releases — the expressive activity comprising the “heart” of the “Empire” brand.

The court then applied the Rogers test. At the outset, the court rejected Empire Distribution’s argument that the Rogers test includes a threshold requirement that a mark have attained a meaning beyond its source-identifying function. The court explained that “the only threshold requirement for the Rogers test is an attempt to apply the Lanham Act to First Amendment expression.” The court added that the cultural significance of a mark was merely a consideration under the first prong of the Rogers test.

The court found that Fox had met the first prong of Rogers because it used the word Empire for artistically relevant reasons, which included the show’s setting of New York (the Empire State) and its subject matter of a music and entertainment conglomerate, Empire Enterprises, itself a figurative empire. The court further rejected Empire Distribution’s argument that the first prong of the Rogers test includes a requirement that the junior work refer to the senior work. Rather, the court explained, “Reference to another work may be a component of artistic relevance, but it is not a prerequisite.”

Turning to the second prong of the Rogers test, the court emphasized that a mere likelihood of consumer confusion was insufficient. The work must explicitly mislead consumers in order for an expressive work to be exposed to liability under the Lanham Act. Because the Empire show contained no overt claims or explicit references related to Empire Distribution, Fox satisfied the second prong of Rogers.

The court also rejected Empire Distribution’s argument that the district court abused its discretion in denying its Rule 56(d) motion to defer consideration of Fox’s summary judgment motion in order to allow more time for discovery. The court agreed with the district court that the additional discovery sought by Empire Distribution was not relevant to the Rogers test, and thus Empire Distribution’s motion was correctly denied as moot.

Finally, the court addressed Empire Distribution’s argument that the district court improperly relied on disputed facts in granting summary judgment. The court again affirmed the district court, explaining that Empire Distribution had identified no disputed fact that the district court relied on that was material to its grant of summary judgment.