Empire — say the word aloud and it conjures multiple pop-culture references, many from the movies. Just think Star Wars Episode IV: The Empire Strikes Back, Atlantis the Lost Empire, and Empire Records.

Empire also is the name of a Fox prime-time television hit. And its creators also now are part of an empire that has struck back.

That’s because the U.S. Court of Appeals for the Ninth Circuit has affirmed a lower court’s finding that the racy TV drama did not infringe on trademarks owned by Empire Distribution Inc. That’s a San Francisco-based record label, which has worked with urban artists like Kendrick Lamar, T.I., and Snoop Dogg.

The recording company and 20th Century Fox Television have tangled with suits and counter-suits over the name of the show that stars Taraji P. Henson, and Terrance Howard. A key issue in trademark disputes like theirs, of course, often turns on the possible confusion ordinary consumers may experience when considering two similarly titled offerings.

This might be a further point of contention in this case, because, as anyone who has watched the TV show knows, music and the music industry are not only central themes of Empire, they are the life blood of this knockout series. Further, the show has released hip-hop and R&B soundtracks called, Empire, edging into the music world and allowing for possible mark confusion over its name.

But, in 20th Century Fox Television v. Empire Distribution Inc, U.S. Court of Appeals for the Ninth Circuit, No. 16-55577,  the appellate judges have affirmed a federal judge’s finding that the name Empire is First Amendment-protected, and, thus, outside the reach of trademark law.

A dispute arises

The show Empire first aired January, 2015,  and by Feb. 16, 2015, Fox had received a demand letter from Empire Distribution. The recording company asserted that the new show’s name infringed on its pending mark and demanded $8 million to resolve a possible suit. Fox then sought a declaratory judgment in a federal court in Los Angeles that Fox’s Empire franchise did not violate Empire Distribution’s trademark.

In 2016, U.S. District Judge Percy Anderson ruled in Fox’s favor. He said the Fox show’s name was protected by the First Amendment because it had “genuine artistic relevance” to the depiction in the drama of a power struggle over a family business empire. But Empire Distribution appealed, arguing that analysis was incorrect and the First Amendment could not apply to cases where an expressive work’s title is “confusingly similar to the title of another work.”

The appellate judges, however, applied the Roger’s test, which the Ninth Circuit adopted to try to navigate disputes between free speech and mark protections. Under this test, established by the U.S. Court of Appeals for the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), “the title of an expressive work does not violate the Lanham Act unless the title has no artistic relevance to the underlying work whatsoever, or if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”

The Ninth Circuit appellate judges said in this instance:

Fox used the common English word ‘Empire’ for artistically relevant reasons, [so] Fox’s use of the name ‘Empire’ was protected by the First Amendment and was therefore outside the reach of the Lanham Act. Fox’s show is named ‘Empire’ for several reasons including: the show being set in New York, also know as the Empire State, the plot and story line focus on a family run record label that dominates the market, called Empire Enterprises.

Because of all these elements, the court decided, “the first prong of the Rogers Test is satisfied,” and Fox was safe with the Empire name.

The appellate judges also turned aside Empire Distribution’s contention that the “artistic relevance” in the Rogers test depended mostly on a disputed title referring back to anther mark. The judges replied: “A title may have artistic relevance by linking the work to another mark, as with ‘Barbie Girl,’ or it may have artistic relevance by supporting the themes and geographic setting of the work, as with Empire. Reference to another work may be a component of artistic relevance, but it is not a prerequisite. Accordingly, the relevance of the word ’empire’ to Fox’s expressive work is sufficient to satisfy the first prong of the Rogers test.”