Twentieth Century Fox has defeated trademark infringement claims arising out of its popular television show, “Empire.” “Empire” chronicles the life of fictional music mogul Lucious Lyon, whose wife and three sons struggle for control over his hip hop label, “Empire Enterprises.” The show also features original music produced for the series, released by Columbia Records following the broadcast of each episode.
In response to a cease and desist letter from Empire Distribution, Fox brought suit for a declaratory judgment that the “Empire” series title did not infringe Empire Distribution’s trademark rights. Empire Distribution is a record label, music distributor, and publishing company specializing in hip hop, rap, and R&B music, featuring famous artists such as T.I., Snoop Dogg, Kendrick Lamar, Too $hort, Tyga, and Busta Rhymes.
Empire Distribution argued that the Court should evaluate its trademark claims by determining whether the two trademarks caused confusion among consumers. However, the Court did not reach this issue, because it determined that Fox’s use of “Empire” was protected by the First Amendment. Since the “Empire” show is an expressive work, Empire Distribution's trademark claims would only be actionable if the term “Empire” had no artistic relevance to the work; and/or if the show was explicitly misleading as to the source or content of the show. Rogers v. Grimaldi, 875 F.2d 994, 997 (2nd Cir 1989).
The Court reasoned that the term “Empire” had artistic relevance because the series told the story of characters struggling for literal control over a company called “Empire Enterprises,” as well as figurative control over the “empire” that Lucious had built. Additionally, the series was set in New York, which is known as the “Empire State.”
In analyzing whether the “Empire” series title was misleading as to source, the Court focused solely on the intent and actions of Fox, rather than examining any evidence of actual confusion among consumers. Although Empire Distribution had introduced significant evidence of actual consumer confusion, the Court held that this evidence was entirely irrelevant. Since Fox had not made any explicit claim or misstatement as to the source of the show, the Court held that Fox had not misled consumers, and Empire Distribution’s trademark infringement claims were barred. Accordingly, the Court granted Fox’s motion for summary judgment.