Twentieth Century Fox Television, a division of Twentieth Century Fox Film Corporation; Fox Broadcasting Company, Plaintiffs-Appellees,
Empire Distribution, Inc., Defendant-Appellant.
and Submitted October 3, 2017 Pasadena, California
from the United States District Court No.
2:15-cv-02158-PA-FFM for the Central District of California
Percy Anderson, District Judge, Presiding
M. Bowler (argued), Michael D. Hobbs, and Lindsay Mitchell
Henner, Troutman Sanders LLP, Atlanta, Georgia; Paul L. Gale
and Peter N. Villar, Troutman Sanders LLP, Irvine,
California; for Defendant-Appellant.
M. Petrocelli (argued), Molly M. Lens, and J. Hardy Ehlers,
O'Melveny & Myers LLP, Los Angeles, California; James
W. Crooks, O'Melveny & Meyers LLP, Washington, D.C.;
Before: DIANA GRIBBON MOTZ, [*] MILAN D. SMITH, JR., and JACQUELINE
H. NGUYEN, Circuit Judges.
Act / First Amendment
the district court's summary judgment in favor of
Twentieth Century Fox Television and Fox Broadcasting
Company, the panel held that Fox's use of the name
"Empire" was protected by the First Amendment, and
was therefore outside the reach of the Lanham Act.
sought a declaratory judgment that its television show titled
Empire and associated music releases did not violate
the trademark rights of record label Empire Distribution,
Inc. Empire counterclaimed for trademark infringement and
other causes of action.
panel explained that when an allegedly infringing use is in
the title or within the body of an expressive work, the
Rogers test is used to determine whether the Lanham
Act applies. The panel held that the Rogers test
applied to Fox's use of the mark "Empire." The
panel concluded that the first prong of the test was
satisfied because it could not say that Fox's use of the
mark had no artistic relevance to the underlying work;
rather, the title Empire supported the themes and
geographic setting of the work. The second prong of the test
also was satisfied because the use of the mark
"Empire" did not explicitly mislead consumers.
SMITH, CIRCUIT JUDGE.
Distribution, Inc. appeals the district court's grant of
summary judgment in favor of Twentieth Century Fox Television
and Fox Broadcasting Company (collectively, Fox). Empire
Distribution argues that the district court erred
substantively and procedurally in holding that Fox's use
of the name "Empire" was protected by the First
Amendment, and was therefore outside the reach of the Lanham
Act, ch. 540, 60 Stat. 441 (1946) (codified as amended at 15
U.S.C. § 1125). We disagree, and affirm.
AND PROCEDURAL BACKGROUND
Distribution, founded in 2010, is a well-known and respected
record label that records and releases albums in the urban
music genre, which includes hip hop, rap, and R&B. Empire
Distribution has released many albums by established and
lesser-known artists as well as music compilations with
titles such as EMPIRE Presents: Ratchet
Music, EMPIRE Presents: Yike 4 Life, and
EMPIRE Presents: Triple X-Mas.
2015, Fox premiered a television show titled Empire,
which portrays a fictional hip hop music label named
"Empire Enterprises" that is based in New York. The
show features songs in every episode, including some original
music. Under an agreement with Fox, Columbia Records releases
music from the show after each episode airs, as well as
soundtrack albums at the end of each season. Fox has also
promoted the Empire show and its associated music
through live musical ...