'Empire' TV series doesn't infringe trademark of Empire Distribution music label

|The Volokh Conspiracy |


Taraji P. Henson reacts after winning Best Actress - TV Series, Drama for her performance in "Empire" at the 73rd Golden Globe Awards in Beverly Hills, California January 10, 2016. REUTERS/Paul Drinkwater/NBC Universal/Handout For editorial use only. Additional clearance required for commercial or promotional use. Contact your local office for assistance. Any commercial or promotional use of NBCUniversal content requires NBCUniversal's prior written consent. No book publishing without prior approval. TPX IMAGES OF THE DAY
Taraji P. Henson reacts after winning Best Actress—TV Series, Drama for her performance in "Empire" at the 73rd Golden Globe Awards in Beverly Hills, Calif., on Jan. 10. (Paul Drinkwater/NBC Universal/Reuters)

Empire Distribution, a prominent music label, threatened to sue Fox television, claiming that the series title "Empire" and the use of "Empire" on soundtracks from the series infringed Empire Distribution's trademarks. No, said a federal district court last week, in Twentieth Century Fox Television v. Empire Distribution Inc.; I thought the analysis, which I found both interesting and correct, was worth quoting:

[A.] On January 7, 2015, Fox debuted "Empire," a television series which tells the fictional story of a feuding entertainment industry family. … The Empire Series chronicles the struggle of rapper and drug-dealer turned music mogul Lucious Lyon, who is diagnosed with a fatal disease in the show's premiere. The Empire Series centers around Lucious's ex-wife, Cookie, and their three sons, who fight for future control over Lucious' music and entertainment company "Empire Enterprises." The Empire Series has been a breakout hit, and Fox has spent millions to advertise the show….

One of the unique features of the Empire Series is that music is heavily featured on the show, including songs which were originally produced for the Empire Series. … Fox partners with Columbia Records to release songs following the broadcast of each episode of the Empire Series, which are then collected to create a compilation soundtrack featuring all of the songs from the season … Fox offers the Empire Soundtracks for sale in both physical record stores and online stores such as iTunes. …

Empire Distribution is a record label, music distributor, and publishing company which was founded in 2010. Empire Distribution is a large producer and distributor of urban, hip hop, rap, and R&B music, and has released over 11,000 albums/singles, 6,000 music videos, and 85,000 songs. Empire Distribution has released multiple platinum and gold records, and has worked with famous artists such as "T.I., Snoop Dogg, Kendrick Lamar, Trinidad James, Too $hort, The Game, Mally Mall, Rich Homie Quan, Tyga, Shaggy, Busta Rhymes, Fat Joe, Sage the Gemini, Cam'ron, Jim Jones, Rocko, Gladys Knight, Rae Sremmurd, and many more."

Empire Distribution uses the trademarks "Empire," "Empire Distribution," "Empire Publishing," and "Empire Recordings." …

[Empire Distribution] contends that the debut of the Empire Series caused confusion over the affiliation between Empire Distribution and Fox's Empire Series. Unhappy with Fox's use of "Empire," Empire Distribution sent Fox a letter requesting that Fox cease and desist its use of the mark. After receiving the cease and desist demand, Fox initiated this lawsuit, asserting claims for declaratory relief against Empire Distribution for … [trademark infringement, trademark dilution, and unfair competition] …

The Lanham Act [the main federal trademark statute] protects the public's right not to be misled as to the source of a product. Rogers v. Grimaldi (2d Cir. 1989). However, trademark rights do not allow "the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view." Mattel, Inc. v. MCA Records, Inc. (9th Cir. 2002). …

In MCA Records, the Ninth Circuit adopted the Rogers test to determine when trademark protection must give way to expressive speech protected by the First Amendment. Under the Rogers test, "[a]n artistic work's use of a trademark that otherwise would violate the Lanham Act is not actionable 'unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.'" E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc. (9th Cir. 2008). The Rogers test applies to uses of a trademarked term in both the title and the body of a work. …

Empire Distribution contends that before applying the two-prong Rogers test, the Court must find that the "Empire" mark is "of such cultural significance that it has become an integral part of the public's vocabulary." Rebelution, LLC v. Perez (N.D. Cal. 2010). Under this interpretation of the Rogers test, no First Amendment rights are implicated until a word or mark takes on "expressive meaning apart from [its] source-identifying function." See also Dita, Inc. v. Mendez (C.D. Cal. 2010); Warner Bros. Entm't v. Global Asylum, Inc (C.D. Cal. 2012), aff'd on other grounds, 544 F. App'x 683 (9th Cir. 2013).

The cultural significance inquiry required under Rebelution, Dita, and Global Asylum, has been disapproved of by numerous courts. [Citation omitted.]

The dispositive case on this issue is … [E.S.S.]. In E.S.S., the Ninth Circuit was presented with the argument that the mark at issue could not be protected under Rogers because it was not a cultural icon. … [T]he court concluded that the use at issue was protected by the First Amendment even though the mark had "little cultural significance." Thus, it is clear that the E.S.S. court did not interpret the Rogers test as including a threshold cultural significance inquiry.

The only threshold for applying the Rogers test is whether the allegedly infringing use is contained in an expressive work. … Both the Empire Series and the Empire Soundtracks are clearly expressive works, and are therefore entitled to First Amendment protection if they satisfy the Rogers test. …

[C.] The first prong of the Rogers test requires a showing that the use of a mark has artistic relevance to the underlying work. The Ninth Circuit has explained that the required "level of relevance merely must be above zero." 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. Indeed, Empire Distribution concedes that the word "Empire" has artistic relevance to Fox's work.

However, Empire Distribution contends that the proper inquiry under the first prong of the Rogers test asks whether the junior use of the mark [i.e., the more recent use, here Fox's use] is a reference to the senior use [i.e., the older use, here Empire Distribution's]. Under this interpretation of the Rogers test, it is not enough for a junior user to show a relevant use of a word which is part of the senior user's mark. Because Fox is clear that its use of "Empire" is not a reference to Empire Distribution, Empire Distribution contends that Fox fails to meet the first prong of the Rogers test.

In Rebelution, … the first prong of the Rogers test was interpreted as including this referential requirement. … see also Dita, Inc. v. Mendez (C.D. Cal. 2010); Warner Bros. Entm't v. Glob. Asylum, Inc. (C.D. Cal. 2012). … However, the Rebelution court has been criticized for misapplying the Rogers test. [Citations omitted.] Additionally, several courts have found that the Rogers test protects a junior user even where the use of the mark made no reference to the senior user. [Citations omitted.]

While it is certainly true that in every Ninth Circuit case interpreting Rogers, the allegedly infringing use was a reference to the senior user, the Ninth Circuit has never stated that the Rogers test includes a "referential requirement." At most, the Ninth Circuit has suggested that this is a fact which a court may consider. See MCA Records ("[W]here an artistic work targets the original and does not merely borrow another's property to get attention, First Amendment interests weigh more heavily in the balance.")

The common thread in opinions interpreting the Rogers test is that a junior user "must not have arbitrarily chosen to use the trademarks just to exploit the[ir] publicity value, but rather the use of the trademarks must have genuine relevance to the work. This, however, does not require the [junior user's] work to be 'about' the trademark or what the trademark signifies." This case illustrates the principle: "Empire" has genuine relevance to the Empire Series and it was not arbitrarily chosen to exploit Empire Distribution's fame.

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. Such a distinction serves neither the interests of the First Amendment nor the Lanham Act. …

[D.] The second prong of the Rogers test requires a junior user to show that their work does not explicitly mislead as to the source or content of the work. The Ninth Circuit has been clear that the use of a mark in the title of a work, divorced from other explicitly misleading actions, is not enough to bar First Amendment protection. …

[N]o amount of evidence showing only consumer confusion can satisfy the "explicitly misleading" prong of the Rogers test because such evidence goes only to the "impact of the use" on a consumer. Even in situations where there is widespread consumer confusion, the Ninth Circuit has struck the balance in favor of protecting First Amendment expression: "'The risk of misunderstanding, not engendered by any explicit indication on the face of the [work], is so outweighed by the interest in artistic expression as to preclude application of the [Lanham] Act.'" …

Here, Empire Distribution's argument under the second prong of the Rogers test focuses solely on consumer confusion. Because [Ninth Circuit precedent] 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.

[E.] Because the Court concludes that Fox's use of "Empire" is protected by the First Amendment and falls outside the proscriptions of the Lanham Act, Fox is entitled to summary judgment on all claims asserted in Fox's Complaint and Empire Distribution's Counterclaim. …