161 F. Supp. 3d 902
C.D. Cal.2016Background
- Fox premiered the TV series "Empire" (and released accompanying soundtracks); Empire Distribution, a record label using the mark EMPIRE, sent a cease-and-desist claiming trademark rights and consumer confusion.
- Fox sued for declaratory relief alleging no trademark infringement, dilution, or unfair competition; Empire Distribution counterclaimed for trademark infringement, dilution, and related state claims.
- Fox moved for summary judgment and to strike an expert report; Empire sought a continuance under Fed. R. Civ. P. 56(d).
- Central legal question: whether Fox’s use of the word "Empire" in an expressive work is protected by the First Amendment under the Rogers test, or whether Lanham Act likelihood-of-confusion analysis (Sleekcraft) applies.
- Court limited analysis to Rogers (expressive works) and resolved disputes over Rogers’ scope (no cultural-significance threshold; no referential requirement) and the meaning of "explicitly misleading."
- Court granted summary judgment to Fox on First Amendment grounds, denying as moot the motion to strike and the continuance request.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Applicability of Rogers v. Grimaldi (Rogers test) vs. Sleekcraft likelihood-of-confusion | Rogers governs because Fox’s use occurs in an expressive work | Sleekcraft should apply; Fox’s use extends beyond typical Rogers scenarios | Rogers is the proper framework for expressive works; Sleekcraft is inapplicable |
| Whether a threshold "cultural significance" inquiry is required before Rogers applies | Rogers applies whenever use is in an expressive work; no cultural-significance threshold | A mark must have cultural significance to implicate First Amendment protection | No cultural-significance threshold; Ninth Circuit precedent forecloses it |
| Rogers prong 1: artistic relevance and whether use must reference senior user | "Empire" has artistic relevance to the show; no need to reference Empire Distribution | Use must be referential to the senior user to get Rogers protection | Only "above zero" relevance required; no referential requirement |
| Rogers prong 2: what constitutes "explicitly misleading" (role of consumer confusion) | No explicit indication of source; consumer confusion evidence irrelevant to "explicitly misleading" | Evidence of consumer confusion should defeat Rogers protection (import Sleekcraft) | "Explicitly misleading" requires an overt claim or explicit misstatement; consumer confusion alone is insufficient |
Key Cases Cited
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (establishes test balancing Lanham Act and First Amendment for expressive uses of marks)
- MCA Records, Inc. v. Carroll, 296 F.3d 894 (9th Cir. 2002) (Ninth Circuit adoption of Rogers framework for artistic works)
- E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (clarifies that only de minimis artistic relevance is required under Rogers)
- Brown v. Electronic Arts, Inc., 724 F.3d 1235 (9th Cir. 2013) (holds that consumer-survey evidence of confusion does not satisfy Rogers’ "explicitly misleading" prong)
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (establishes multi-factor likelihood-of-confusion test for traditional trademark conflicts)