United States: Fox Argues That "Empire" Is Protected Under The First Amendment In Trademark Dispute

On December 15, 2015, Twentieth Century Fox moved for summary judgment in its trademark dispute with Empire Distribution, Inc. ("Empire"), arguing that Fox's use of the term "Empire" for the title of its television show and accompanying musical soundtracks are protected by the First Amendment.

According to Fox, Empire is a musical dramatic television series about a feuding entertainment-industry family and the company, "Empire Enterprises," owned by its patriarch. As a musical drama, original songs are written and produced specifically for the series. Columbia Records, with permission from Fox, releases and distributes songs following the broadcast of each new episode and releases soundtrack albums.

Empire is a music distribution company and record label that has released albums and singles in partnership with hip hop artists such as Snoop Dogg, Sage the Gemini, and others. Empire uses the following logo to identify its music distribution company:

In February 2015, Empire sent Fox a demand letter alleging trademark infringement based on Fox's use of "Empire" for its television show, including Fox's use of the logo shown below:

Fox sued for declaratory judgment in March 2015, and Empire filed counterclaims in June, calling Fox's suit a "preemptive ploy to deprive Empire of its natural position as plaintiff."

Fox's summary judgment motion asserts that the First Amendment bars Empire's infringement claims.  Citing Rogers v. Grimaldi, Fox argues that the Lanham Act does not apply to titles of artistic works unless the title has no artistic relevance to the underlying work, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or content of the work. Fox claims its use of "Empire" for the title of its show and soundtracks meets this standard.

According to Fox, the first prong of Rogers requires only that the title have "minimal" artistic relevance to the underlying work, i.e., "above zero." Fox asserts that the title "is an on-the-nose reminder of the show's central themes and inspirations: New York, the 'Empire State' setting for the show; 'Empire Enterprises,' the powerhouse entertainment company over which the show's characters struggle for control; and the figurative 'empire' that control over this [entertainment] conglomerate represents."

Regarding the second prong, Fox argues that Empire and the soundtracks do not say anything about Empire, let alone overtly claim its involvement in the works. Nor did Empire plead that Fox's use of "Empire" explicitly misleads consumers as to the source of its television show and soundtracks.  According to Fox, "[t]his begins and ends the analysis."

Fox's motion is scheduled for a hearing on February 1, 2016.  The case is Twentieth Century Fox Television v. Empire Distribution, Inc., Case No. 2:15-cv-02158-PA(FFMx).

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