Good Ruling: Court Affirms Fox's Victory In Trademark Suit From Empire Distribution Over Its Hit Show 'Empire'

from the like-a-fox dept

In far too many trademark disputes, including those that actually reach the courthouse, there is far too little in the way of nuance when it comes to ruling. While I've long complained about a lack of focus on some of the higher-level concepts within trademark law, such as how the overall focus should be on public confusion and the simple fact that the category designations within the USPTO are far too broad, there is typically not enough recognition in the real minutia within the law as well.

But that simply isn't the case in a ruling from the 9th Circuit Court of Appeals on a lawsuit filed by Fox Television for declaratory relief from threats issued by Empire Distribution, Inc., a record label, over trademark concerns and Fox's hit show Empire.

Some background is in order. Empire, for those of you who don't know, is a show about a family-run record label in New York City called Empire Enterprises. Empire Distribution is a real-life label that has worked with names as big as T.I. and Snoop Dogg. At some point, Empire Distribution sent trademark threat notices to Fox, claiming that the name of the show was a trademark violation. In response, Fox filed for declaratory relief, which the district court granted. Empire Distribution appealed, resulting in the 9th Circuit Court of Appeals reviewing the decision and affirming it.

But it's why the ruling was affirmed that is the star of this legal show, with the detailed court opinion laying out the nuance of the law.

On Thursday, the 9th Circuit reviewed the district court's summary judgment decision, and in affirming Fox's victory, decided to apply the Rogers test, which was first developed by a sister appellate circuit in 1989 in response to Federico Fellini's 1986 film Ginger and Fred, which triggered a lawsuit by Ginger Rogers.

The Rogers test, as it's called, resulted from that case and says that the title of a work is not infringing on trademark except if the title has no artistic relevance to the overall work or if it explicitly misleads the public as to the source of the work. For example, if someone were to create a television show called Michael Jordan's Cooking Hour, the public would think that the former Bulls star was involved with it. If he wasn't, the title of the show would infringe on any trademarks he might have for television shows (along with a host of other infringements, likely). But Empire, the Fox show, gets its name from the fictitious company it portrays, along with its setting in New York City, giving the title artistic relevance. It also does nothing to attempt to mislead the public into thinking that there is any involvement or reference to Empire Distribution. Therefore, Empire passes the Rogers test.

Empire Distribution argued that part of the artistic relevance portion of the Rogers test includes a requirement for the new work to reference the older entity to be considered artistically relevant and protected. The court basically slaps that idea down and suggests that Empire Distribution's legal team doesn't understand the Rogers test at all.

This is how a work fails the first prong of the Rogers test: by bearing a title which has no artistic relevance to the work. 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.

The court goes on to say that Empire passes the Rogers test on the second prong as neither the show nor its title makes any claims or references to Empire Distribution, and is therefore doing nothing that is "explicitly misleading."

For us trademark nerds, it's a great ruling with a wonderful explanation of some nuance in trademark law and precedent. For Empire Distribution, who never should have made such silly threats, it's simply a judicial beatdown.


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  1. icon
    amoshias (profile), 18 Nov 2017 @ 5:39am

    So I'm not a trademark lawyer, but...

    I *am* a lawyer, who has in the past focused on IP issues. My thought process - on reading the paragraph with the history of the show and the label - is that the label would be foolish not to sue. I'm not so sure the court gets the Rogers test right here. Sure, the title has artistic relevance to the work - the record company in the show is Empire - but that's an arbitrary determination made by the show's writers. They could choose any of a hundred thousand other arbitrary words.

    Not only that, but they named their show - about a hip-hop label - the same name as a storied hip-hop label. Never having heard anything about the show itself, when I read the second sentence of your third paragraph - describing it - I literally thought "Oh, is this a fictionalization of the story of the record label or something?"

    I dunno... I'm not as familiar with the caselaw as I'd like - but my quick read suggests that Rogers could (could!) be narrowly read to refer only to celebrity's names. And considering that I did experience actual confusion, I don't feel like this case is the slam-dunk you describe it as.

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