Twentieth Century Fox Television v. Empire Distribution, Inc.
D.C. No. 2:15-cv-02158-PA-FFM (2017)
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Rule of Law:
The use of a trademark in the title of an expressive work, and in promotional materials auxiliary to that work, is protected by the First Amendment and does not violate the Lanham Act unless the use either has no artistic relevance to the underlying work or explicitly misleads consumers as to the work's source or content.
Facts:
- In 2010, Empire Distribution, Inc. was founded as a record label specializing in the urban music genre, including hip hop, rap, and R&B.
- Empire Distribution released numerous albums and music compilations under its 'EMPIRE' brand name.
- In 2015, Fox Broadcasting Company premiered a television show titled 'Empire'.
- The show portrays a fictional New York-based hip hop music label named 'Empire Enterprises'.
- As part of the show, Fox and Columbia Records released original music and soundtrack albums from the series.
- Fox also promoted the show and its music through live performances, radio play, and consumer merchandise bearing the show's 'Empire' brand.
Procedural Posture:
- Fox filed a suit in federal district court against Empire Distribution seeking a declaratory judgment that its show did not violate Empire Distribution's trademark rights.
- Empire Distribution filed counterclaims for trademark infringement, trademark dilution, unfair competition, and false advertising.
- Fox moved for summary judgment on all claims and counterclaims.
- The district court denied Empire Distribution's motion to defer the ruling for additional discovery.
- The district court granted summary judgment in favor of Fox.
- Empire Distribution's motion for reconsideration was denied by the district court.
- Empire Distribution, as appellant, appealed the grant of summary judgment to the U.S. Court of Appeals for the Ninth Circuit, with Fox as the appellee.
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Issue:
Does a television studio's use of the name 'Empire' for its television show and related products violate the Lanham Act when the name is artistically relevant to the work and does not explicitly mislead consumers as to its source?
Opinions:
Majority - M. Smith, Circuit Judge
No. The use of the 'Empire' mark does not violate the Lanham Act because it is protected by the First Amendment under the Rogers test. Trademark claims involving expressive works are governed by the two-prong Rogers test, not the standard likelihood-of-confusion test. The court held that this protection extends not only to the expressive work itself, but also to auxiliary promotional activities like advertising and merchandising, as these are necessary to promote the work. First, the use of 'Empire' has artistic relevance to the show because the show is set in New York (the 'Empire State') and depicts a powerful entertainment conglomerate, which is a figurative 'empire.' The court clarified that the artistic relevance need only be 'above zero' and does not require the work to refer to the senior trademark holder. Second, Fox’s use of the name was not explicitly misleading, as the show contained no overt claims or explicit references suggesting an association with Empire Distribution. The mere use of a mark is insufficient to satisfy this prong.
Analysis:
This decision reinforces and expands the application of the Rogers test for expressive works in the Ninth Circuit, solidifying First Amendment protections for creators. By extending the test's protection to auxiliary promotional activities and merchandise, the court provided creators with broader latitude to market their works without fear of trademark litigation. The ruling also clarifies that the 'artistic relevance' prong is a low bar that does not require the new work to make a direct reference to the existing trademark holder, focusing instead on the title's relevance to the themes of the new work itself. This strengthens the position of artists, filmmakers, and authors against trademark holders who might otherwise try to control the use of their marks in public discourse and artistic expression.
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