he U.S. Court of Appeals for the Ninth Circuit recently affirmed a lower court’s holding that Fox’s use of the name “Empire” for its hit television series is protected by the First Amendment, leaving record label Empire Distribution without any recourse on its trademark infringement claims. A copy of the full decision is available here. Of most significance is the court’s arguable expansion of the Rogers v. Grimaldi test for expressive use of trademarks into the realm of promotion and merchandise.
Empire Distribution, founded in 2010, records and releases albums in the genres of hip hop, rap, reggae, and R&B under the name “Empire.” Its portfolio of artists includes Snoop Dog, T.I., and Kendrick Lamar. In 2015, Fox premiered its Empire television show, a drama that centers on a fictional New York-based hip hop music and entertainment company called “Empire Entertainment.” The Empire show features songs and original music, which Fox releases through Columbia Records after the episode airs, and packages as soundtrack albums at the end of each season – of which there have been four and counting.
The dispute over the name “Empire” arose soon after the show’s release. Following receipt of a claim letter from Empire Distribution, Fox preemptively filed suit in the U.S. District Court for the Central District of California in March of 2015, seeking a ruling that the Empire show and its associated music did not violate Empire Distribution’s trademark rights. Empire Distribution counterclaimed, alleging that it has suffered various trademark-related injuries as a result of Fox’s use of its “Empire” mark, entitling it to both injunctive and monetary relief under the Lanham Act, the federal trademark statute. When the District Court sided with Fox, granting summary judgment in Fox’s favor and dismissing all of Empire Distribution’s claims (including its claims for trademark infringement, trademark dilution, unfair competition, and false advertising), Empire Distribution appealed to the U.S. Court of Appeals for the Ninth Circuit.
The Ninth Circuit, too, sided with Fox, agreeing with the District Court that Empire Distribution’s Lanham Act claims are barred by the First Amendment. The Ninth Circuit’s decision was guided by Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the seminal decision on balancing trademark owners’ Lanham Act claims with the First Amendment protections afforded to creators of expressive works. Under the Rogers test, the use of a trademark in the title of an expressive work does not violate the Lanham Act unless such use (1) “has no artistic relevance to the underlying work whatsoever,” or (2) if it has artistic relevance, “explicitly misleads as to the source or content of the work.” The Rogers test traditionally applies to the use of a mark in the title of an expressive work, but some courts, including the Ninth Circuit, have expanded its application to use of a mark within the body of an expressive work as well.
The Ninth Circuit determined, as a threshold matter, that the Rogers test is applicable to Fox’s use of the “Empire” mark. This determination is straightforward for the Empire show itself and its associated music releases, which are archetypal examples of First Amendment-protected expressive works. However, application of the Rogers test to other of Fox’s uses – namely, Fox’s promotional uses of the “Empire” mark for live musical performances, radio plays, cast appearances, and on consumer goods such as t-shirts and champagne glasses – is a closer call, and the court’s decision in Fox’s favor signifies an expansion in the Rogers doctrine. Empire Distribution asserted that, because Fox’s promotional uses go beyond the titles and bodies of Fox’s expressive works, the Rogers test does not apply. The Ninth Circuit, however, disagreed, and regarded Empire Distribution’s challenge as something of a technicality. The court held that “only a minor logical extension” of the reasoning of Rogers is required to find that the test also applies to Fox’s promotional uses of the “Empire” mark, including revenue-generating uses, because such uses are “auxiliary” to Fox’s clearly expressive television show and music releases, which “lie at the heart” of its Empire brand.
The Ninth Circuit went on to conclude that Fox’s use of the “Empire” mark satisfied both prongs of Rogers, even as to promotional uses: First, it found that Fox’s use of the “Empire” mark is artistically relevant to the Empire show, given the show’s setting in New York, the Empire State, and its focus on “Empire Entertainment,” a figurative corporate empire. Second, it found that Fox’s use does not explicitly mislead consumers, given that the show contains no overt claims or explicit references to Empire Distribution. The court also rejected Empire Distribution’s argument that, before reaching the Rogers test, a brand owner must show that its mark had attained “cultural significance” beyond its source-identifying function.
The Ninth Circuit’s decision marks a significant victory for some, but a potential setback for others. It is a victory not only for Fox and the future of its critically-acclaimed Empire show, but also more broadly for creators of expressive works. The decision reinforces the notion that the law must strike a careful balance between brand protection and artistic expression, providing leeway to creators in the context of their expressive works, and in their ability to promote them. However, brand owners will likely see the case as a blow to trademark enforcement and a significant expansion of the already liberal Rogers test which would unfairly position content creators to profit not only from creative works containing trademarks, but promotional materials and merchandise as well. As creators embark on utilization of this reimagining of the Rogers test, it will be worth watching out for future cases in other circuits to see if this is an issue that brand owners try to force to the Supreme Court.