Twentieth Century Fox Television won a significant legal victory on Tuesday when a California federal judge ruled in its favor in a legal war over Empire, its hit drama about a feuding music-industry family led by Lucious Lyon.
Facing an $8 million demand from Empire Distribution — a record label and publishing company that has worked with such hip-hop artists as T.I., Snoop Dogg and Kendrick Lamar — Fox filed suit in March 2015, seeking declaratory relief that its use of “Empire” wasn’t a trademark violation. Empire Distribution brought counterclaims and demanded an injunction.
In his summary judgment opinion (read here in full), U.S. District Judge Percy Anderson decides that he doesn’t need to address whether consumers are confused by the source of Fox’s hip-hop drama and associated soundtracks in the marketplace. Instead, the decision comes down to First Amendment protections and an important test that’s been around since actress Ginger Rogers unsuccessfully sued over Federico Fellini’s 1986 film Ginger and Fred.
The first prong of the Rogers test that courts apply in this situation is to examine whether use of the mark has artistic relevance to the underlying work.
Here, Anderson writes, “The 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. Additionally, the Empire Series is set in New York, the Empire State.”
The real-life hip-hop label tried to inject some complication by asking the judge to address whether the Fox series — the “junior use” of “Empire” — referenced the senior use. Anderson notes there’s usually a reference in play in trademark disputes over expressive works. (For example, Fellini’s film was about dancers who once impersonated Fred Astaire and Rogers.) However, the judge adds that a common thread in these cases is that a junior user “must not have arbitrarily chosen to use the trademarks just to exploit … publicity value,” and also points to what happened in 2013, when Warner Bros. was sued over fictional technology in The Dark Knight Rises by a software company that marketed a product by the same name. There, a court rejected the argument that protection only came upon a critique of the trademark.
“Moreover, it would be a perverse result if Fox’s use of ‘Empire’ would be protected if Fox had claimed that the Empire Series was in some minimal way a commentary on Empire Distribution, but the use would not be protected if, as is the case here, Fox had disclaimed any such use,” the judge writes.
The second prong of the Rogers test examines whether a work is explicitly misleading. For guidance here, Anderson turns to NFL Hall of Famer Jim Brown’s lawsuit against Electronic Arts over Madden NFL to focus on the behavior of a user, not the impact of the use. This is important — and a relief for Fox — because Empire Distribution had a good amount of evidence that the Empire series was causing confusion upon series stars and the label’s own artists showing up at the same radio stations, live performances, events and record stores. Even reggae star Shaggy mistakenly took the logo of Empire Distribution for a social media post about the Fox series.
But, crucially, Fox wasn’t intending this effect. The judge writes, “Because Brown holds that such consumer confusion is irrelevant and there is no evidence that of an ‘explicit indication, overt claim or explicit misstatement’ as to the source of the work, the Court concludes that Fox has not explicitly misled consumers about its affiliation with Empire Distribution.”
And so, Fox wins on all claims in the complaint and cross-complaint. The case also serves as good example of the sanctity of the First Amendment in this country. Fox prevails on free speech arguments for Empire where they couldn’t over Glee. Recall that in February 2014, a high court judge in the U.K. ruled that Fox was infringing upon the trademark rights of an Oxford comedy club named the “The Glee Club” and later ordered Fox to change the name of the series.
Credit for this not happening to Empire goes to Daniel Petrocelli and Molly Lens at O’Melveny & Myers.