Twentieth Century Fox Television has prevailed in a lawsuit over its hit show “Empire.”
The series, created by Lee Daniels and starring Terrence Howard and Taraji P. Henson, tells the fictional story of a feuding entertainment industry family and prominently features original R&B, hip hop, and rap music.[1] Partnering with Columbia Records, Fox releases original songs for sale following the broadcast of each episode.[2] The series premiered on January 7, 2015.
Empire Distribution is a record label, music distributor, and publishing company based in San Francisco, California. The record label was founded in 2010. Empire Distribution is a large producer and distributor of urban, hip-hop, rap, R&B, rock, latin, gospel and pop music.[3] Some notably artist Empire Distribution has worked with includes Snoop Dogg, Kendrick Lamar, Tyga, Busta Rhymes, Gladys Knight, and T.I.[4]
According to court papers filed, Empire Distribution uses the trademarks Empire, Empire Distribution, Empire Publishing and Empire Records.[5] However, the application for the Empire mark was suspended in July, while the application for Empire Distribution was suspended in October. [6]
Empire Distribution sent Fox a cease and desist letter, claiming that its trademark was being infringed upon and created confusion over the affiliation between Empire Distribution and Fox’s Empire series. In response, Fox filed a lawsuit against Empire Distribution, asserting claims for declaratory relief against Empire Distribution for federal trademark infringement, federal trademark dilution, and state unfair competition. Empire Distribution counterclaimed against Fox 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.[7]
U.S. District Judge Percy Anderson for the Central District of California found that Fox has a First Amendment right to use the title “Empire” and that Empire Distribution was unable to make a case for consumer confusion between its company and the series.[8]
The court focused on First Amendment protection rather than consumer confusion. The court applied the Rogers test adopted in Rogers v. Grimaldi, 875 F.2d 994, 997 (2d Cir. 1989). Under the Rogers test, “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 of the content of the work.”[9] The Rogers test applies to uses of a trademarked term in both the title and the body of a work. [10]
The first prong of the Rogers test examines whether use of the mark has artistic relevance to the underlying work.[11] The word ‘Empire’ was found to be relevant to Fox’s work because of the central theme of the series – a struggle for power and control over the entertainment company called ‘Empire Enterprises.’[12]
The second prong examines whether a work is explicitly misleading, focusing on the behavior of a user rather than the impact of the use.[13] Empire Distribution’s argument focused solely on consumer confusion.[14] Applying the standard held in Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1242 (9th Cir. 2013), consumer confusion is irrelevant and the court concluded that Fox had not explicitly misled consumers about its affiliation with Empire Distribution.[15]
The Seventh Circuit addressed a similar situation in Sullivan v. CBS Corporations.[16] The plaintiff was a member of the rock band “Survivor” and owned the federally registered trademark “SURVIVOR” for entertainment services covering musical services but not merchandise.[17] CBS produced the famous reality TV show “Survivor” and offered merchandise tied to the show including two compilation music CDs.[18] The music CDs featured original music from the TV show and music inspired by the show.[19] Both CDs were marketed primarily for the viewers of the reality show and were classified as soundtracks. The plaintiff sued for infringement and dilution regarding defendant’s use of “SURVIVOR” on its CDs and other merchandise.[20] The district court and court of appeals granted summary judgment for CBS on both claims.[21] Although the court classified the plaintiff’s mark as arbitrary and thus inherently strong, the inherent strength of the plaintiff’s mark did not automatically mean that the mark is entitled to strong protection.[22] The court noted “[a] mark can be arbitrary for one purpose but it may still be used extensively in other areas.”[23] Therefore, the court noted that the plaintiff “might enjoy strong protection for his mark as against other aspiring rock bands or musical groups, but that he would have only weak or nonexistent protection outside the particular niche.” [24]
The Seventh Circuit approached the issue through scrutinizing consumer confusion, whereas the Central District of California examined First Amendment rights and the genuine relevance to the work. Both approaches ultimately highlight how a mark may be inherently strong in one niche mark but not in other somewhat similar markets.