Twentieth Century Fox Television Wins Trademark Dispute Over “Empire”

Twentieth Century Fox Television, a division of Disney Television Studios, successfully defended its use of the name “Empire” for its hit television show in a trademark infringement lawsuit brought by Empire Distribution, a record label. The Ninth Circuit Court of Appeals affirmed a lower court’s ruling, finding that Fox’s use of “Empire” was protected under the First Amendment and did not violate Empire Distribution’s trademark rights.

This landmark case highlights the intersection of intellectual property law and creative expression, specifically concerning how the First Amendment safeguards artistic works from trademark infringement claims. The court’s decision reinforces the principle that artistic expression, including the titles and promotional materials associated with creative works, deserves broad protection under the First Amendment.

Key Legal Arguments in the Twentieth Century Fox Television Case

The core of the dispute centered on the Rogers v. Grimaldi test, a legal precedent used to balance Lanham Act (trademark) claims with First Amendment rights. This test establishes two key criteria:

• Artistic Relevance: The use of a mark must have some artistic relevance to the underlying work.
• Explicit Misleading: Even with artistic relevance, the use of the mark must not explicitly mislead consumers about the source or content of the work.

The Ninth Circuit meticulously applied this test to Twentieth Century Fox Television’s use of “Empire.” The court found strong artistic relevance in Fox’s choice of the name, citing the show’s setting in New York (the Empire State) and its thematic focus on a powerful music and entertainment conglomerate, figuratively representing an empire itself. Furthermore, the court dismissed Empire Distribution’s argument that the show needed to directly reference the record label for artistic relevance to be established.

Crucially, the court emphasized that a mere likelihood of confusion among consumers was insufficient to establish infringement. Instead, the Rogers test requires explicit misleading of consumers. The court found no evidence of such explicit misleading in the “Empire” television series, noting the absence of overt claims or references to Empire Distribution.

Expanding First Amendment Protection to Promotional Activities

Significantly, the Ninth Circuit extended the Rogers test protection to encompass promotional activities related to artistic works. Empire Distribution argued that Fox’s marketing efforts using the “Empire” brand fell outside the scope of First Amendment protection because they were not part of the show itself. However, the court rejected this argument, stating that promotional activities directly related to an expressive work are also protected under the First Amendment. This ruling clarified that the right to freely express oneself artistically extends beyond the core work to include necessary marketing and advertising. This aspect of the decision has significant implications for the entertainment industry, affording greater protection for studios and creators in promoting their works.

Implications for the Entertainment Industry

The Ninth Circuit’s decision in favor of Twentieth Century Fox Television has important ramifications for the entertainment industry:

• Creative Freedom: The ruling reinforces the importance of creative freedom in choosing titles and developing promotional campaigns for artistic works. It provides greater assurance that studios and creators will not be unduly hampered by trademark concerns.
• Promotional Activities: The extension of First Amendment protection to promotional materials offers crucial legal support for marketing and advertising efforts in the entertainment industry.

The “Empire” case serves as a valuable precedent for future disputes involving trademark law and creative expression, underscoring the broad scope of First Amendment protection in the context of artistic works and their associated promotional activities.