In January 2015, the Fox television show EMPIRE debuted. It’s a fictional story of a feuding entertainment industry family that chronicles the struggles of a rapper and drug dealer turned music industry mogul. In the first episode we learn the mogul is dying and the family battle begins to control the “empire.”
Like most television shows about the music business, music is heavily featured in the show. So much so, Fox partners with Columbia Records to release songs following the broadcast of each episode. Fox also promotes artists and their music that has been featured on an episode at radio stations and live performances.
Empire Distribution is a record label, music distributor, and publishing company formed in 2010. Empire Distribution has distributed music by Kendric Lamar, Snoopdog, Gladys Knight, and many others. In fact, Empire Distribution is recognized as a major player in the rap and hip hop genres. Empire Distribution claims common law rights in various Empire trademarks and has multiple pending federal trademark applications.
After the television show began airing in 2015, Empire Distribution sent a cease and desist letter to Fox alleging trademark infringement. Fox responded by filing a declaratory judgement action in the U.S. District Court for Central California, Los Angeles.
Fox claims their ability to name the show EMPIRE is protected by the First Amendment, ie, freedom of expression. Empire Distribution alleges Fox’s actions amount to trademark infringement and that actual consumers are confused that there is a connection between the TV show and Empire Distribution.
In the United States, creative works are protected as free speech by the First Amendment. Because of that protection for the whole work, even the title of the work, a balancing act must occur between the rights of the trademark owner and the First Amendment rights that arise in the creative work. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). To read an overview of how the Rogers Test has been applied in other cases, click here.
On Summary Judgment the court reviewed and applied the Rogers Test: 1) whether the use of the third-party trademark has artistic relevance; and 2) if so, is it deliberately misleading as to the source or content of the work.
- Is there artistic relevance: The district court found that using the word empire was appropriate since the show is about a struggle for control over the vast music business empire. The TV show is also set in New York – the Empire State.
- Does the Empire TV series explicitly mislead as to the source of the content of the work?
The parties disagree on the appropriate test to apply. Empire Distribution argues that a traditional trademark likelihood of consumer confusion analysis must be considered in this prong. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). Fox argues the plain language of Rogers is the test and that using a third-party trademark must be an “explicit indication, overt claim, or explicit misstatement” as to the source of the work or prong two is met.
The court held on summary judgment that even with a showing of consumer confusion, First Amendment rights still trump if there was no intent on the part of the junior user to explicitly mislead. Fox wins on the second prong of the Rogers Test.
As expected, Empire Distribution appealed the Summary Judgment decision. In addition to procedural issues, Empire Distribution argues that Fox used EMPIRE beyond the title of an expressive work. Fox’s marketing plans from the beginning was to launch a record label, sign recording artist, and create EMPIRE branded merchandise. Empire Distribution argues on appeal, “Ultimately, under the district court’s very narrow application of the ‘explicitly misleading’ prong, the prong could virtually never be satisfied (or even reach a determination at trial), absent an admission or other smoking gun evidence that the defendant was deliberately attempting to mislead consumers. Under the district court’s holding, one could start a competing record label today called Motown, Sony, Universal or Def Jam, and so long as they could provide any artistic reason for the name, they would be protected under the First Amendment, regardless of the amount of consumer confusion.”
Fox argues that its merchandise and promotional efforts using EMPIRE were not properly before the court, and did not relate to Fox’s actual claim, which is premised on the title and content of Fox’s show and soundtracks. Fox goes on to state, “Rogers makes clear that, so long as an artist does not explicitly mislead the public about his work, the First Amendment protects his efforts to promote it. If Rogers worked otherwise, it would be an empty promise.” In effect Fox is claiming they can distribute directly competitive merchandise that “promotes” their creative work without repercussion of trademark infringement.
As a trademark lawyer, I’m very concerned for the path Fox is taking. While I support and understand the value of freedom of expression and the ability to use a third-party trademark in creative works, the district court took this a step too far. I believe the courts should first make the decision on likelihood of consumer confusion when faced with a third-party trademark in a creative work. If there’s no consumer confusion, then there’s no reason to make a first amendment analysis. If there is consumer confusion, than apply the Rogers Test. You can see this application in the following cases – both out of the seventh circuit: Fortres Grand Corp. v. Warner Bros. Entertainment, Inc., No. 13-2337 (7th Cir. Aug. 14, 2014); Eastland Music v. Lionsgate Entertainment, 707 F.3d 869 (7th Cir. 2013). I argue that consumer confusion has to be considered in the second prong of the Rogers Test.
See Twentieth Century Fox Tel., et al v. Empire Distribution, Inc., (9th Circuit - 16-55577). As of April 24, 2017, briefs have been filed in the appellate court.