Twentieth Century Fox Television v. Empire Distribution Inc.Twentieth Century Fox Television v. Empire Distribution Inc.
IN CHAMBERS
Bеfore the Court are a Motion for Summary Judgment (Docket No. 41) and a Motion to Strike Expert Report (Docket No. 46) filed by plaintiffs and counterdefendants Twentieth Century Fox Television, a division of Twentieth Century Fox Film Corporation, and Fox Broadcasting Company (collectively “Fox” or “Plaintiffs”). Defendant and counterclaimant Empire Distribution, Inc. (“Empire Distribution” or “Defendant”) hаs filed oppositions to both Motions, and requests a continuance under Federal Rule of Civil Procedure 56(d). The Court vacates the hearing calendared for February 1, 2016, finding the matter appropriate for decision without oral argument under Federal Rule of Civil Procedure 78 and Local Rule 7-15.
I. Background
On January 7, 2015, Fox debuted “Empire,” a television series which tells the
One of the unique features of the Empire Series is that music is heavily featured on the show, including songs which were originally produced for the Emрire Series. (Declaration of Geoff Bywater in Support of Fox’s Motion, ¶ 2.) Fox partners with Columbia Records to release songs following the broadcast of each episode of the Empire Series, which are then collected to create a compilation soundtrack featuring all of the songs from the season (the “Empire Soundtracks”). (Declaration of Andrew Ross in Support of Fox’s Motion, ¶¶ 2-3.) Fox offers the Empire Soundtracks for sale in both physical record stores and online stores such as iTunes. (Empire Distribution’s Appendix of Exhibits, Ex. 69.) In connection with the Empire Series, Fox also enters into contracts with artists, produces and releases music. It also promotes the artists and their music at radio stations and live performances. {Id.)
Defendant Empire Distribution is a record label, music distributor, and publishing company which was founded in 2010. (Declaration of Ghazi Shami in Support of Empire Distribution’s Opposition, ¶ 6.) Empire Distribution is a large producer and distributor of urban, hip hop, rap, and R & B music, and has released over 11,000 albums/singles, 6,000 music videos, and 85,000 songs. {Id.) Empire Distribution has released multiple platinum and gold records, and has worked with famous artists such as “T.I., Snoop Dogg, Kendrick Lamar, Trinidad James, Too $hort, The Game, Mally Mall, Rich Homie Quan, Tyga, Shaggy, Busta Rhymes, Fat Joe, Sage the Gemini, Cam’ron, Jim Jones, Rocko, Gladys Knight, Rae Sremmurd, and many more.” {Id. ¶¶ 7-15.)
Empire Distribution uses the trademarks “Empire,” “Empire Distribution,” “Empire Publishing,” and “Empire Recordings.” {Id. ¶ 22.) Empire has several federal trademark applications fоr these marks pending before the United States Patent and Trademark Office. (Declaration of Michael D. Hobbs in Support of Empire Distribution’s Opposition, ¶¶ 6-11.) However, three of Empire Distribution’s trademark applications have been suspended: The application for “Empire” with Serial No. 86590365 was suspended on July 17, 2015; the application for “Empire” with Serial No. 86590402 was susрended on July 17, 2015; and the application for “Empire Distribution” with Serial No. 86476822 was suspended on October 19, 2015. (Declaration of Molly M. Lens in Support of Fox’s Reply, ¶ 11, Exs. 28-30.)
Defendant contends that the debut of the Empire Series caused confusion over the affiliation between Empire Distribution and Fox’s Empire Series. {See Lens Deck, Ex. 5.) Unhappy with Fox’s use of “Empire,” Empire Distribution sent Fox a letter requesting that Fox cease and desist its use of the mark. After receiving the cease and desist demand, Fox initiated this lawsuit, asserting claims for declaratory relief against Empire Distribution for: (1) federal trademark infringement under 15 U.S.C. § 1125(a); (2) federal trademark dilution under 15 U.S.C. § 1125(c); and (3)
In response, Empire Distribution asserted counterclaims against Fox for: (1) federal trademark infringement, 15 U.S.C. § 1125(a); (2) federal trademark dilution, 15 U.S.C. § 1125(c); (3) federal unfair competition, 15 U.S.C. § 1125(a); (4) California statutory unfair competition and false advertising, Cal. Bus. and Prof.Code §§ 17200 and 17500, et seq.; (5) California common law trademark infringement; and (6) California trademark dilution, Cal. Bus. & Prof.Code § 14247.
Fox now moves for summary judgment on all claims in its Complaint and against all of Empire Distribution’s counterclaims. Fox also moves the Court to strike the expert report of James Pampinella.
II. Legal Standard
Summary judgment is proper where “the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). The moving party has the burden of demonstrating the absence of a genuine issue of material faсt for trial. Anderson v. Liberty Lobby, Inc.,
As required on a motion for summary judgment, the facts are construed “in the light most favorable to the party opposing the motion.” See Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
III. Discussion
Fox contends that summary judgment is appropriate because its use of “Empire” is protected by the First Amendment, and because Empire Distribution has failed to establish that there is a genuine issue of material fact as to consumer confusion. As explained below, the Court finds that Fox’s use of “Empire” is protected by the First Amendment, and therefore does not reach the issue of consumer confusion.
A. The First Amendment
The Lanham Act protects the public’s right not to be misled as to the
In MCA Records, the Ninth Circuit adopted the Rogers test to determine when trademark protection must give way to expressive speech protected by the First Amendment. MCA Records,
Empire Distribution implores the Court to analyze this case under the AMF Inc. v. Sleekcraft Boats,
1. The Rogers Test Does Not Include a Threshold “Cultural Significance” Inquiry
Empire Distribution contends that before applying the two-prong Rogers test, the Court must find that the “Empire” mark is “of such cultural signifiсance that it has become an integral part of the public’s vocabulary.” Rebelution, LLC v. Perez,
The cultural significance inquiry required under Rebelution, Dita, and Global Asylum, has been disapproved of by numerous courts. E.g., VIRAG, S.R.L. v. Sony Computer Entm’t Am. LLC, No. 3:15-CV-01729 LB,
The dispositive case on this issue is E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir.2008). In E.S.S., the Ninth Circuit was presented with the argument that the mark at issue could not be protected under Rogers because it was not a cultural icon. Id. at 1100. The court dismissed this argument beсause it “miss[ed] the point.” Id. Even more significantly, the court concluded that the use at issue was protected by the First Amendment even though the mark had “little cultural significance.” Id. Thus, it is clear that the E.S.S. court did not interpret the Rogers test as including a threshold cultural significance inquiry. See id.; see also Mil-Spec Monkey,
The only threshold for applying the Rogers test is whether the allegedly infringing use is contained in an expressive work. Brown v. Electronic Arts, Inc.,
2. Rogers Prong 1
The first prong of the Rogers test requires a showing that the use of a mark has artistic relevance to the underlying work. MCA Records,
However, Empire Distribution contends that the proper inquiry under the first prong of the Rogers test asks whether the junior use of the mark is a reference to the senior use. Under this interpretation of the Rogers test, it is not enough for a junior user to show a relevant use of a word which is part of the senior user’s mark. Because Fox is clear that its use of “Empire” is not a reference to Empire Distribution, Empire Distribution contends that Fox fails to meet the first prong of the Rogers test.
In Rebelution, supra, the first prong of the Rogers test was interpreted as including this referential requirement.
While it is certainly true that in every Ninth Circuit case interpreting Rogers, the allegedly infringing use was a reference to the senior user, the Ninth Circuit has never stated that the Rogers test includes a “referential requirement.” At most, the Ninth Circuit has suggested that this is a fact which a court may consider. See MCA Records,
The common thread in opinions interpreting the Rogers test is that a junior user “must not have arbitrarily chosen to use the trademarks just to exploit the[ir] publicity value, but rather the use of the trademarks must have genuine relevance to the work. This, however, does not require the [junior user’s] work to be ‘about’ the trademark or what the trademark signifies.” Stewart,
In E.S.S., the Ninth Circuit held that “only the use of a trademark with no artistic relevance to the underlying work whatsoever does not merit First Amendment protection.” E.S.S.,
3. Rogers Prong 2
The second prong of the Rogers test requires a junior user to show that their work does not explicitly mislead as to the source or content of the work. MCA
Once again, the parties dispute the proper test to apply when determining whether the work is explicitly misleading. Fox contends that the Court should employ a straightforward application of the test, requiring an “explicit indication, overt claim, or explicit misstatement” as to thе source of the work. Brown, I2A F.3d at 1246 (citing Rogers,
The Court finds that any ambiguity about the proper standаrd was resolved by the Ninth Circuit’s decision in Brown. There, the senior user put forward strong consumer survey evidence demonstrating a likelihood of confusion, which he contended established a triable issue of fact as to the second prong of the Rogers test. Brown,
Adding survey evidence changes nothing. The [second prong of the Rogers] test requires that the use be explicitly misleading to consumers. To be relevant, evidence must relate to the nature of the behavior of the identifying material’s user, not the impact of the use. Even if Brown could offer a survey demonstrating that consumers of the Madden NFL series believed that Brown endorsed the game, that would not support the claim that the use was explicitly misleading to consumers.
Brovin,
Thus, it is clear that no amount of evidence showing only consumer confusion can satisfy the “explicitly misleading” prong of the Rogers test because such evidence goes only to the “impact of the use” on a consumer. See id. Even in situations where there is widespread consumer confusion, the Ninth Circuit has struck the bаlance in favor of protecting First Amendment expression: “ ‘The risk of misunderstanding, not engendered by any explicit indication on the face of the [work], is so outweighed by the interest in artistic expression as to preclude application of the [Lanham] Act.’ ” Id. at 1246 (quoting ETW Corp. v. Jireh Publishing, Inc.,
Here, Empire Distribution’s argument under the second prong of the Rogers test focuses solely on consumer confusion. (See Opposition, 12.) Because Brown holds that such consumer confusion is irrelevant and there is no evidence that of an “explicit indication, overt claim, or explicit misstatement” as to the source of the work, the Court concludes that Fox has not explicitly misled consumers about its affiliation with Empire Distribution.
In sum, the First Amendment protects the use of a trademark in an expressive work if the use of the mark has artistic relevance to the underlying work and does not explicitly mislead as to the source or content of the work. MCA Rec
B. Remaining Claims
Because the Court concludes that Fox’s use of “Empire” is protected by the First Amendment and falls outside the proscriptions of the Lanham Act, Fox is entitled to summary judgment on all claims asserted in Fox’s Complaint and Empire Distribution’s Counterclaim. See MCA Records,
Conclusion
For the foregoing reasons, the Court grants Fox’s Motion for Summary Judgment. The Court shall enter a Judgment' consistent with this Order. Because the Court rules in favor of Fox on First Amendment grounds, the Court denies as moot Fоx’s Motion to Strike and Empire Distribution’s request for a continuance under Federal Rule of Civil Procedure 56(d).
IT IS SO ORDERED.
Notes
. The parties have lodged a large number of evidentiary objections to the evidence supporting their respective statements of facts. The Court has not relied on any disputed evidence in deciding this Motion.
. Although the district court's decision in Global Asylum was affirmed on appeal, the apрellant challenged only the district court’s analysis of a fair use defense. Global Asylum,
. The discovery which formed the basis of Empire Distribution’s request under Rule 56(d) was not germane or relevant to the First Amendment bar raised by Fox’s Motion for Summary Judgment. See Brown,