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.
Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.
Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.
While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.
–The Techdirt Team
Filed Under: empire, rogers test, titles, trademark
Companies: empire distribution, fox
Reader Comments
Subscribe: RSS
View by: Time | Thread
First paragraph condescending as if member of the bar,
you believe that you're a member of "the bar" and competent to discuss legal technicalities because frequent a place where alcohol beverages are served on a counter which is called "the bar".
I'm glad I cleared that up for me. It's been confusing.
[ link to this | view in chronology ]
Re: First paragraph condescending as if member of the bar,
[ link to this | view in chronology ]
Re: First paragraph condescending as if member of the bar,
It doesn't read that way.
[ link to this | view in chronology ]
Re: Re: First paragraph condescending as if member of the bar,
[ link to this | view in chronology ]
This one was quite close in reality. That Fox won by the "nuances" of Trademark law makes it even more reasonable for them to have tried their case in court and gone for an appeal.
It's cases like this that help to make caselaw. Rather than talking down to them you should thank them for having the nuts to take it to the next level and make it way more solid.
[ link to this | view in chronology ]
So I'm not a trademark lawyer, but...
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.
[ link to this | view in chronology ]
Making life a little bit more complicated...
though in that case a record store rather than a distribution company.
[ link to this | view in chronology ]
A third meaning of the title
1) It's based around a recording label with the word Empire.
2) It takes place in New York, the Empire State.
3) Ir's about people building an empire in the recording industry.
So, sure, the writers could have chosen a thousand other names for the fictitious record label, but I'm sure only "Empire" had the right feel.
[ link to this | view in chronology ]
Re: A third meaning of the title
[ link to this | view in chronology ]
The empire strikes back...
[ link to this | view in chronology ]