Fox Wins Appellate Battle Over The Title Of ‘Empire’

With references to Aqua’s “Barbie Girl” and OutKast’s “Rosa Parks,” the 9th Circuit discusses how artistic relevance factors in trademark claims over expressive works.

Fox Television has scored a big win at the 9th U.S. Circuit Court of Appeals that will give entertainment companies room to pick titles of artistic relevance even if those titles tread upon registered trademarks.

The dispute pertains to Empire, Fox’s hit drama about a feuding music-industry family. In 2015, upon threats from a record label and publishing company that has worked with such hip-hop artists as T.I., Snoop Dogg and Kendrick Lamar, Fox sought declaratory relief that its use of “Empire” wasn’t a trademark violation.

Empire Distribution, Inc., the defendant, then brought counterclaims and demanded an injunction.

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.

Explains 9th Circuit Judge Milan Smith Jr., “Under the Rogers test, the title of an expressive work does not violate the Lanham Act ‘unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.’”

Applying the test, Smith says Fox has satisfied the first prong by using “Empire” for artistically relevant reasons including “the show’s setting is New York, the Empire State, and its subject matter is a music and entertainment conglomerate, ‘Empire Enterprises,’ which is itself a figurative empire.”

That’s not the end of the story, as the 9th Circuit back in 2002 did something similar when evaluating a case brought by Mattel over the Aqua hit song “Barbie Girl.”

Here, Empire Distribution didn’t really dispute artistic relevance, but argued the Rogers test includes a requirement that the junior work refer to the senior work. (For example, Fellini’s film was about dancers who once impersonated Fred Astaire and Rogers.)

Smith rejects this standard and says it would be inconsistent with the purpose of the test.

Furthermore, in referencing another famous legal dispute over the OutKast song “Rosa Parks,” the 9th Circuit judge discusses how some uses of a mark are arbitrary and some have artistic relation.

When the choice is arbitrary, Smith says the “First Amendment interest is diminished,” as was the case when OutKast wrote a song that wasn’t about the civil rights icon, merely referenced her in a possible move to enhance its song’s commercial potential.

“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,” states the decision.

“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.”

Then, in addressing the second prong of the Rogers test, the 9th Circuit agrees with Fox that the relevant inquiry isn’t merely consumer confusion, but rather whether the creator explicitly misled consumers.

Smith adds, “Fox’s Empire show, which contains no overt claims or explicit references to Empire Distribution, is not explicitly misleading, and it satisfies the second Rogers prong.”

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