On February 1, 2016, U.S. District Judge Percy Anderson ruled that Twentieth Century Fox Television’s (“Fox’s”) use of the term “Empire” in the network’s hit TV series was protected by the First Amendment. Judge Anderson found that use of the name “Empire” deserved protection as artistic expression and that the name passed the two-part Rogers test which is applied when weighing Lanham Act claims against First Amendment rights. Under the Rogers test, a trademark in an expressive work is protected under the First Amendment if the use of the mark has artistic relevance to the underlying work and does not explicitly mislead as to the source or content of the work.
The record label Empire Distribution claimed that Fox’s Empire TV series caused confusion over the affiliation between Empire Distribution and Fox’s TV series. Nearly a month after the show premiered, Empire Distribution sent Fox a cease and desist letter requesting Fox stop using the “Empire” mark. After receiving the letter, Fox initiated the current suit, asserting claims for declaratory relief against Empire Distribution under the Lanham Act for trademark infringement, trademark dilution, and unfair competition in the State of California.
The claims arose from Fox’s “Empire” TV show which chronicles the lives of music mogul Lucious Lyon and his feuding entertainment industry family. The show focuses on Lyon’s wife, Cookie, and their three sons as the family fights for control of “Empire Enterprises,” Lucious Lyon’s music and entertainment company. Music not only plays an integral part in the show’s plot, but Fox also partners with Columbia Records to feature the label’s artists on the show. Songs that are featured on the show are also available for sale in record stores and online.
Empire Distribution, which is also a music distributor and publishing company, has released multiple platinum and gold records, and has worked with famous urban, hip hop, rap and R&B music artists such as T.I., Snoop Dogg, Kendrick Lamar, and Gladys Knight. Empire Distribution typically uses the terms “Empire,” “Empire Distribution,” “Empire Publishing” and “Empire Recordings” in the course of its business. In the current action, Empire Distribution claimed that Fox’s use of the term “Empire” throughout its series caused confusion, allegedly leading viewers to associate the Empire TV show with the record label, Empire Distribution.
In evaluating the motion for summary judgment, Empire Distribution requested that the Court apply the “cultural significance” test from Rebelution, LLC v. Perez as a threshold test, to determine whether the Rogers should even be applied. The “cultural significance” test from Rebelution requires the Court to find that the “Empire” mark is “of such cultural significance that it has become an integral part of the public’s vocabulary.” Judge Anderson declined to apply this test, instead finding that the only threshold for applying the Rogers test was whether the allegedly infringing use is contained in an expressive work.
Rogers v. Grimaldi was the first case where the Court addressed the intersection between the First Amendment and the Lanham Act. The test arose out of the 1986 film entitled Ginger and Fred, which was a story about two fictional Italian dancers who imitated Ginger Rogers and Fred Astaire and became known as “Ginger and Fred.” Ginger Rogers brought a claim for, among other things, false designation of origin under the Lanham Act, alleging that the use of her name in the film’s title suggested that she sponsored, endorsed or was otherwise affiliated with the film. The Second Circuit upheld the defendant’s use of Rogers’ name in the film’s title on the ground that such use was artistic expression that was protected by the First Amendment.
In reaching this conclusion, the court devised a two-prong test, under which a defendant will be liable under the Lanham Act for the unauthorized use of a plaintiff’s trademark in an expressive work only where:
(1) the use of the plaintiff’s trademark has no artistic relevance to the work, or
(2) the use of the plaintiff’s trademark has some artistic relevance to the work, but it explicitly misleads as to the source or content of the work.
The first prong, “artistic relevance,” asks whether the use of the mark is related to the content of the defendant’s own work, e.g., whether it is related to the story of the defendant’s work. This very low threshold seeks to protect the public interest in free expression. Judge Anderson found that the word “Empire” is “clearly relevant” to Fox’s work because the characters are fighting for literal control of “Empire Enterprises” as well as figurative control over Lucious Lyon’s expansive “empire.” Further, the series is set in the “Empire” state, New York. Accordingly, Judge Anderson found that Fox’s use of the term “Empire,” has sufficient artistic relevance to satisfy the first prong of the Roger’s test.
In the simplest of terms, the second prong of the Rogers test asks whether the defendant explicitly misled or expressly misstated that the plaintiff produced, sponsored or endorsed the defendant’s work. Under this prong, the Court dismissed Empire Distribution’s claim that the Court must consider a “likelihood of confusion” analysis. Citing Brown v. Electronic Arts, Judge Anderson stated that evidence of consumer confusion is irrelevant to the Rogers analysis and cannot satisfy the second prong of the test. Because there was no evidence that Fox made an “explicit indication, overt claim, or explicit misstatement” as to the source of the work, Judge Anderson concluded that “Fox has not explicitly misled consumers about its affiliation with Empire Distribution.”
The Court granted Fox’s motion for summary judgment on all claims asserted in Fox’s complaint and Empire Distribution’s counter claim, finding that Fox’s use of the term “Empire” is protected by the First Amendment.
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