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Fox Wins Trademark Fight Over “Empire” TV Show

Fox will only have to worry about fictionalized drama when its hit show Empire returns to TV in several weeks, now that its real-life one is over.

March 09, 2016

Home » Blog » Fox Wins Trademark Fight Over “Empire” TV Show

Fox will only have to worry about fictionalized drama when its hit show Empire returns to TV in several weeks, now that its real-life one is over. A district court judge in California recently granted a motion for summary judgment in favor of the broadcast network in a declaratory suit Fox filed a year ago, when Empire Distribution began claiming that the show was infringing on its trademarks.

Fox’s Empire, inspired by Shakespeare’s King Lear, follows the intriguing lives of the Lyon family, as they fight over a successful record company. Because it’s also a musical, Fox partnered with Columbia Records to release singles and albums of the music from the show. Empire Distribution, an independent hip-hop record company, sent Fox cease-and-desist letters, asserting trademark rights to “Empire,” “Empire Distribution,” “Empire Publishing,” and “Empire Recordings” in early 2015.

At the time, Empire Distribution had some trademarks pending, but they were suspended a few months after Fox filed the suit. Empire Distribution also seemed to have more than just the protection of trademarks in mind, though, because it gave Fox the option of paying $5 million and featuring its artists on the show as regular guest stars. It was after two cease-and-desist letters that Fox went to court seeking a declaratory judgment. In this type of case, a plaintiff is asking the court to clarify what the rights and responsibilities of each party are. So, Fox was seeking answers on whether it was prohibited from using the word “Empire” as the name of its show because of Empire Distribution’s rights. Obviously, having to change the name of the show as well as all the marketing and merchandise would’ve been a huge financial burden, not to mention the success of the series meant that fans had already begun to associate the word with the show. Empire counterclaimed, stating that because both parties distributed music, there would be confusion between them, and because the main character was pretty mean-spirited, the company also made a trademark dilution by tarnishment claim.

Fox said it had a right to use “Empire” under the First Amendment. This should make sense. As a matter of public policy, while we want to protect the goodwill of creators by allowing them to control marks associated with their works, we don’t want to take words out of public use by allowing a complete monopoly over them. This is something the court discusses. Citing Mattel, Inc. v. Walking Mountain Products, the court said, trademark protections “apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” The court then used the two-prong Rogers test “to determine when trademark protection must give way to expressive speech protected by the First Amendment.” Under the first prong, it must be shown that use of the mark has artistic relevance to the underlying work.” The court reasoned that the word “Empire” was relevant to Fox’s show because characters are fighting over control of a music empire, and it also happens to be the name of the record company, Empire Enterprises; it wasn’t arbitrarily chosen as a way to capitalize on Empire Distribution. Under the second prong, the junior user of the mark has to show that the use isn’t explicitly misleading. This is an interesting issue because consumer confusion—very significant in trademark cases—can be a result here and was in this case, but it didn’t prove explicit acts on the part of Fox to mislead.

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The court sided with the network, granting summary judgment on all claims.

For more information on how the law balances trademark protections and freedom of speech, stay tuned to our blog.