“Empire” is Fox’s prime time television show which debuted in 2015, and tells the story of a fictional family feuding for literal and figurative control over the record label “Empire Industries.”  In real life, Empire Distribution is a record label, music distributor, and publishing company founded in 2010.  Empire filed trademark applications for EMPIRE, EMPIRE DISTRIBUTION, EMPIRE PUBLISHING, and EMPIRE RECORDINGS, although none of these had issued yet.    Empire Distribution primarily produces hip hop, rap, and R&B music for artists such as T.I., Snoop Dogg, The Game, and Grammy-Award winner Kendrick Lamar, among others.

Upon learning of Fox’s use of “Empire,” Empire Distribution sent a letter demanding Fox cease use of the mark.  Not to be outfoxed, Fox commenced a declaratory judgment action asserting claims for relief against Empire Distribution for federal trademark infringement, federal trademark dilution, and state unfair competition.  Naturally, Empire Distribution asserted counterclaims against Fox for federal and state common law trademark infringement, federal and state trademark dilution, federal unfair competition, and state statutory unfair competition and false advertising.

On Fox’s motion for summary judgment, the district court agreed with Fox that its use of “Empire” was protected by the First Amendment under Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).  Under the Rogers test, an artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable unless: (1) the use of the mark has no “artistic relevance” to the underlying work whatsoever; or, (2) if it has some artistic relevance, its use must “explicitly mislead” as to the source or the content of the work. E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008).

In applying the first prong Rogers test, the court determined the term “Empire” had genuine relevance to Fox’s underlying work because Empire as a series tells the story of characters struggling for literal control over an entertainment company called Empire Enterprises and figurative control over the vast “empire” built by Lucious Lyon, the main antagonist in the series.

In applying the second prong of the test, the court determined that the show does not explicitly mislead as to the source or content of the work.  Importantly, the court rejected Empire Distribution’s argument that “actual confusion” meets the “explicitly misleading” standard.    As the court explained, “no amount of evidence showing only consumer confusion can satisfy the ‘explicitly misleading’ prong of the Rogers test because such evidence goes only to impact of use on a consumer.  Even in situations where there is widespread consumer confusion, the Ninth Circuit has struck the balance in favor of protecting First Amendment expression.”  Because Empire Distribution provided no evidence of an “explicit indication, overt claim, or explicit misstatement” as to the source of its show, the court held that Fox had not explicitly misled consumers about its affiliation with Empire Distribution.  The Lanham Act claims failed.

This case is a good reminder that when a trademark owner is confronted with the unauthorized use of its trademarks in an artistic work, careful consideration should be given to whether that unauthorized use is nonetheless protected by the First Amendment.  If the use of the mark has artistic relevance, then the trademark owner cannot just rely on “actual confusion”  to prove infringement or dilution.  Instead, the trademark owner needs to show that the creative work contains “an explicit indication, overt claim, or explicit misstatement” as to the source of the work.