Fashion Counsel with Anthony V. Lupo

Arent Fox's fashion law blog offers news, analysis, and insights for the industry from fashion attorney Anthony Lupo.

Fashion Counsel with Anthony V. Lupo

Empire vs. EMPIRE: Fox Defends Its Hit Television Series Against Lanham Act Claims

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Empire vs. EMPIRE: Fox Defends Its Hit Television Series Against Lanham Act Claims

What’s the News?

Twentieth Century Fox Television recently filed a motion for summary judgment in a dispute with record label Empire Distribution, Inc. over the name of Fox’s popular television series Empire. Empire Distribution has alleged that Fox’s use of “Empire” in the show’s title and on its soundtracks constitutes trademark infringement under the Lanham Act, but Fox claims that it is shielded from any such claims by the broad protection afforded to “expressive works” under the First Amendment.
 

Background on the Dispute

Fox’s series Empire is a musical drama that follows the story of a fictional hip hop music and entertainment company, “Empire Enterprises,” as members of the show’s central family struggle for control over the business. The show, which is currently in its second season, has been a hit both in terms of ratings and critical reception. In March, Fox preemptively filed suit in federal district court in California, seeking a declaratory judgment that the show’s title does not violate any trademark rights held by Empire Distribution. Fox was prompted to file after Empire Distribution, a hip hop record label that has released albums by artists such as Snoop Dogg and Kendrick Lamar, sent a letter to Fox claiming that its use of “Empire” was a violation of the Lanham Act’s trademark infringement and dilution provisions. In June, the record label responded with counterclaims, formally alleging that Empire violates its rights in the trademarks EMPIRE, EMPIRE RECORDINGS, and EMPIRE DISTRIBUTION (the “EMPIRE Marks”).
 

Fox’s Recent Motion

Fox recently filed a motion for summary judgment, asking the court to hold that Empire Distribution’s claims are barred by the First Amendment. Under the seminal trademark case Rogers v. Grimaldi, the Lanham Act does not apply to titles of “expressive works,” such as television shows or musical works, except in two circumstances—(1) when the title has no artistic value to the underlying work or (2) when the title is explicitly misleading as to the source of the underlying work. According to Fox, neither exception applies. In its motion, Fox argues that the show’s title has considerable artistic value, as it is an “on-the-nose” reminder of the show’s central themes: its Empire State setting; “Empire Enterprises,” the fictional business at the center of the show; and the figurative “empire” over which the characters struggle. Further, Fox claimed, the title does not explicitly mislead consumers, as Fox has not stated that Empire Distribution is involved in or otherwise associated with the series.
 
Fox further asserts that in addition to First Amendment protection, the record label’s Lanham Act claims still fail, as no consumer confusion between Empire and Empire Distribution is likely. According to Fox, Empire Distribution’s marks are “commercially weak” and exist in a crowded field of “EMPIRE” marks, entitling them to a relatively narrow scope of protection. Further, Fox claims that consumers are unlikely to encounter Empire and the EMPIRE Marks in the same channels of trade, given that one is the title of a television series and the other is the name of a record label.
 
Please contact Anthony V. Lupo, Amy E. Salomon, or Thorne Maginnis with any questions.

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Arent Fox LLP, founded in 1942, is internationally recognized in core practice areas where business and government intersect. With more than 350 lawyers, the firm provides strategic legal counsel and multidisciplinary solutions to clients that range from Fortune 500 corporations to trade associations. The firm has offices in Los Angeles, New York, San Francisco, and Washington, DC.