The U.S. Court of Appeals for the Ninth Circuit decided that the Fox TV show Empire didn’t violate federal Lanham Act or California trademark rights of the urban music record label Empire Distribution. Twentieth Century Fox TV v. Empire Distribution Inc., 16-55577.
The TV show is about a fictional New York-based record company named “Empire Enterprises.” Fox also sells Empire soundtrack albums and merchandise and promotes its TV program through live events.
The Ninth Circuit affirmed a Central District of California declaratory summary-judgment ruling in favor of Fox under the bell-weather decision in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under Rogers, expressive works in which the title is artistically relevant to the underlying work, and doesn’t explicitly mislead consumers regarding its source, can escape Lanham Act liability.
Empire Distribution argued Fox’s use of “Empire” beyond the expressive content of the show and related music was no more than “an umbrella brand to promote and sell music and other commercial products.” But the appeals court observed: “Although it is true that these promotional efforts technically fall outside the title or body of an expressive work, it requires only a minor logical extension of the reasoning of Rogers to hold that works protected under its test may be advertised and marketed by name, and we so hold.”
However, Empire Distribution further contended that a limiting footnote in Rogers should apply. In the footnote, the Second Circuit said its test for determining whether a work like Fox’s violated the Lanham Act “would not apply to misleading titles that are confusingly similar to other titles.” But the Ninth Circuit struck down Empire Distribution’s reliance on this, by noting: “This footnote has been cited only once by an appellate court since Rogers, in a case in which the Second Circuit itself rejected its applicability and applied the Rogers test.” See, Cliff Notes Inc. v. Bantam Doubleday Dell Publ’g Grp. Inc., 886 F.2d 490 (2d Cir. 1989).
As for artistic relevance, the appeals court reasoned: “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.”
The appeals court went on to conclude: “Fox’s Empire show, which contains no overt claims or explicit references to Empire Distribution, is not explicitly misleading, and it satisfies the second Rogers prong.”
***** Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Studies at the University of Colorado’s Denver Campus. He is author of the book Baby You’re a Rich Man: Suing the Beatles for Fun & Profit (ForeEdge/University Press of New England). For more, visit www.stansoocher.com.
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