On Thursday, the U.S. Court of Appeals for the 9th Circuit affirmed a ruling that the name of the 20th Century Fox television show titled ‘Empire’ did not infringe on the trademarks owned by Empire Distribution Inc., a record label based in San Francisco, California that has worked with hip-hop artists such as Kendrick Lamar and Snoop Dogg.
A panel of 9th Circuit judges stated that the First Amendment did in fact protect Fox’s use of the name “Empire,” and therefore placed the use of the name ‘Empire’ outside of the reach of trademark law.
Fox debuted the show “Empire” in January 2015. It is a show about the fictional Lyon family fighting for control of a music and entertainment company called Empire Entertainment that’s located in New York. The show, which is now in its fourth season, has been a major hit for 20th Century Fox, winning awards at the Golden Globes, the BET Awards, the Critics Choice Television Awards, and the Teen Choice Awards, and garnering several other award nominations.
A month after the show debuted, Empire Distribution sent a cease and desist letter to Fox, claiming that the name ‘Empire’ infringed on its pending trademarks. 20th Century Fox claims that Empire Distribution demanded a payment of $8 million in order to resolve the dispute. Fox instead took to the courts, suing Empire Distribution in the U.S. District Court in Los Angeles and seeking a declaratory judgment that the ‘Empire’ name and TV franchise did not violate the record label’s trademark rights.
U.S. District Judge Percy Anderson granted 20th Century Fox summary judgment (summary judgment is procedural request used during civil litigation to quickly and expeditiously resolve a case without the need for a full trial; it is used when neither party to the case is disputing the material facts of the case) in a February 2016 ruling, ruling that Fox’s use of the name Empire was protected by the First Amendment. The judge explained that because the show is set in New York and describes a battle for control of a business empire, the name has actual, genuine artistic relevance.
Empire Distribution appealed, arguing that the court’s First Amendment analysis should not apply in cases where an expressive work’s title is confusingly similar to the title of another work. However, the 9th Circuit rejected Empire’s argument in Thursday’s decision, which was written by Judge Milan Smith Jr. and joined by judges Jacqueline Nguyen and Diana Gribbon Motz from the U.S. Court of Appeals for the 4th Circuit. The court declared that “[T]he title of an expressive work does not violate the Lanham Act ‘unless the title has no artistic relevance to the underlying work,” which quoted the Second Circuit’s 1989 ruling in Rogers v. Grimaldi.
The case is 20th Century Fox Television v. Empire Distribution Inc., U.S. Court of Appeals for the 9th Circuit, No. 16-55577.