Empire, Twentieth Century Fox’s series, has made headlines since its January, 2015, debut for helping to revitalize television. With more viewers cord-cutting (with its legal risks), TV networks have scrambled with varied results to win audiences back, resorting to live musical productions, special events, and exclusive concerts. For TV networks, Fox’s success with Empire was a refreshing ratings boost.
Created by Lee Daniels of Precious fame, Empire offers its twist on King Lear: Instead of three daughters vying for a kingdom, three sons struggle to take on their dad’s hip-hop legacy and his fictitious record company, Empire Entertainment.
That has displeased Empire Distribution, a real-life record label, music distributor, and publisher. It has worked with hip hop artists like Tyga, T.I., Ab-Soul, Busta Rhymes, Gladys Knight, Rae Sreummurd, and Kendrick Lamar (fresh off his win at the Grammy’s for “To Pimp a Butterfly”).
Empire Distribution, arguing art imitated life too closely, demanded that Fox pay $5 million for using its trademark; the real Empire also sought a cease-and-desist order against the show. Fox filed a counter-lawsuit, seeking a declaratory judgment that neither Empire as a show title nor the fictitious record company violated trademarks. Empire Distribution brought counterclaims. That was the status quo until a federal judge in Los Angeles granted summary judgment, ruling in Fox’s favor.
Empire Distribution’s Claim
Empire Distribution has trademarked Empire, Empire Distribution, Empire Publishing, and Empire Recordings. Several applications for its marks, including Empire are pending or suspended. It mark for Empire was suspended last July, months after the Fox series debuted on Jan. 7, 2015. Although it lacked active marks, Empire Distribution attributed market confusion to the name association of the record company and the TV show.
The company argued that Fox’s cross-promotion of its show and original music had confused audiences and industry insiders about Empire Distribution’s association with the broadcast series. The company said further confusion arose because Fox promotes its original music that it produces on the show. For each song on the show, Fox contracts with artists to produce, release, and promote the songs over the radio.
The record company provided evidence of this public confusion: For example, the artist Shaggy, known for the 90’s hit “It Wasn’t Me,” Tweeted the record company’s logo; fans immediately retweeted that logo with #teamcookie, a reference to a key character in the television series.
Despite the record company’s arguments , U.S. District Judge Percy Anderson looked beyond the public confusion claim. Anderson, instead, analyzed if the show’s mark use were First Amendment protected, employing the Rogers Test as found in Rogers v. Grimaldi, 875 F.2d 994, 997 (2d Cir. 1989). He found that “[b]oth 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.”
Under the Rogers Test, an artistic work’s trademark use, which ordinarily might violate the Lanham Act, cannot be a cause of action, if the mark has artistic relevance to the underlying work. The first prong of the test looks at whether the “junior” work has artistic relevance; the second prong requires a junior user to show the work does not explicitly mislead as to the source or content of the work.
While The Lanham Act protects the public’s right against being misled by a project via unauthorized mark use, having mark rights also do not allow owners to “quash an unauthorized use of the market by another who is communicating ideas or expressing points of view.” The judge ruled that the act must be balanced, applying to artistic works only where the public interest in avoiding consumer confusion significantly outweighs the public interest in free expression.
For Fox, the Empire win has to take away some of the sting of the network’s loss, in Britain, over trademarks and the hit show Glee. The American entertainment industry giant lost a court battle in 2012 to a small firm that ran local comedy and entertainment shows.