Fox TV Wins “Empire” Trademark Dispute

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Jeffrey Johnson is a legal writer with a focus on personal injury. He has worked on personal injury and sovereign immunity litigation in addition to experience in family, estate, and criminal law. He earned a J.D. from the University of Baltimore and has worked in legal offices and non-profits in Maryland, Texas, and North Carolina. He has also earned an MFA in screenwriting from Chapman Univer...

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UPDATED: Jan 18, 2018

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TrademarkThe 9th Circuit Court of Appeals has ruled in favor of Fox Television in the dispute involving the Fox TV series “Empire.”

The dispute involved both a fictional and a real record company.

Empire Distribution is a record label founded in 2010. It releases “urban” music including rap, hip hop, and R&B.

In 2015, Fox introduced its “Empire” TV drama, portraying a fictional hip hop music label called “Empire Enterprises.”

Columbia Records releases music used in the show.

After Empire Distribution wrote to complain about the use of the “Empire” name, Fox filed for declaratory judgement, seeking a court ruling that the show and its music didn’t violate Empire Distribution’s trademarks.

Empire Distribution counterclaimed for trademark infringement, unfair competition, and false advertising, among other causes of action.

As the Hollywood Reporter reported, Empire Distribution demanded $8 million in damages, or, alternatively, guest spots for its artists and $5 million, according to Deadline.

Murdering His Friends

Empire Distribution claimed that its brand was damaged by the Fox show’s “portrayal of a label run by a homophobic drug dealer prone to murdering his friends.”

In February of 2016, a district court ruled in favor of Fox and Empire Distribution appealed.

As the court noted, “In general, claims of trademark infringement under the Lanham Act are governed by a likelihood-of-confusion test.” In other words, would consumers be confused about the source of the thing using the trademark?

However, when the title is that of an “expressive” work (like a movie or TV show, rather than a product like a toaster), some different rules apply.

This is because:

  • expressive works involve the First Amendment right of free speech and
  • consumers are less likely to mistake the use of someone else’s trademark in an expressive work as a sign of authorship, association, or endorsement by the owner of the mark.

The court found that the Lanham Act (which deals with trademark infringement)

should not be applied to expressive works ‘unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [trademark or other identifying material] explicitly misleads as to the source or the content of the work.’

This test goes back to a 1989 case in which Ginger Rogers sued over Federico Fellini’s 1986 film Ginger and Fred, which is about dancers who once impersonated Ginger Rogers and Fred Astaire.

Artistic Relevance

The court found that the name “Empire” did have artistic relevance:

In this case, Fox used the common English word “Empire” for artistically relevant reasons: the show’s setting is New York, the Empire State, and its subject matter is a music and entertainment conglomerate, “Empire Enterprises,” which is itself a figurative empire.

To fail the second part of the test, the court found that a creator “must explicitly mislead consumers.”

The court found that the “Empire” TV show didn’t make any explicit references to Empire Distribution or mislead consumers, so it passed this part of the test as well.

The court thus found that Fox’s use of the name “Empire” was protected by the First Amendment.

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