Twentieth Century Fox Television v. Empire Distribution, Inc.
875 F.3d 1192
9th Cir.2017Background
- Empire Distribution, a record label founded in 2010, owned and used the mark EMPIRE for urban music releases and compilations.
- Fox premiered the TV series Empire (2015), about a fictional New York–based music label "Empire Enterprises," and commercially released songs and soundtracks tied to the show.
- Empire Distribution sent a claim letter; Fox sought declaratory judgment that its use of EMPIRE did not infringe; Empire counterclaimed under the Lanham Act and California law.
- The district court granted summary judgment for Fox, applying the Rogers test and concluding Fox’s use was protected by the First Amendment; it denied Empire’s Rule 56(d) discovery request as irrelevant.
- Empire appealed; the Ninth Circuit affirmed, holding Rogers governs and both prongs were satisfied for Fox’s use of “Empire.”
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does the Rogers test apply to Fox’s use of the mark “Empire,” including promotional uses outside the work’s title/body? | Rogers doesn't cover marketing/promotional uses; those fall under ordinary Lanham Act analysis. | Rogers extends to titles and related advertising/promotional uses of expressive works; otherwise First Amendment protection would be hollow. | Rogers applies to the show and its promotional activities; promotional uses auxiliary to an expressive work are covered. |
| First prong of Rogers: Is Fox’s use artistically relevant to the work? | "Empire" is chosen for commercial advantage and does not refer to or meaningfully relate to Empire Distribution. | "Empire" relates to the show’s themes, setting (Empire State), and fictional music conglomerate; relevance threshold is low. | Satisfied: the word "Empire" has artistic relevance to the show (relevance need only be >0; no referential requirement). |
| Second prong of Rogers: Does the use explicitly mislead as to source/content? | Fox’s branding, music releases, and merchandising could confuse consumers into believing affiliation/sponsorship. | No overt or explicit statements claim affiliation; mere potential for confusion is insufficient under Rogers. | Satisfied: no explicit indication, overt claim, or misstatement that would explicitly mislead consumers; Lanham Act does not apply. |
| Procedural: Was denial of Rule 56(d) discovery and summary judgment proper? | Additional discovery on Fox’s intent, selection of the name, and marketing strategy was necessary and potentially dispositive. | Those facts are immaterial to the Rogers inquiry (artistic relevance and explicit misleading). | Affirmed: requested discovery was not germane to Rogers issues; no material factual dispute undermined summary judgment. |
Key Cases Cited
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.) (establishing test limiting Lanham Act application to titles of expressive works)
- Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir.) (adopting/ applying Rogers in Ninth Circuit; describing balancing of First Amendment and Lanham Act)
- E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir.) (extending Rogers beyond titles into body of expressive works)
- Brown v. Elec. Arts, Inc., 724 F.3d 1235 (9th Cir.) (clarifying requirement of explicit misleading under Rogers' second prong)
- Dr. Seuss Ents., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir.) (example of title lacking artistic relevance and failing Rogers)
- Parks v. LaFace Records, 329 F.3d 437 (6th Cir.) (discussing artistic relevance when title references a real person)
- Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490 (2d Cir.) (Rogers-related discussion regarding titles and promotional material)