After the debut of hit showEmpire, record label Empire Distribution asserted trademark infringement counterclaims against Twentieth Century Fox Television, who sought a declaratory judgment that its television show and associated music releases did not violate Empire Distributions trademark rights. InTwentieth Century Fox TV v. Empire Distribution, Inc., 875 F.3d 1192 (9th Cir. 2017), the Ninth Circuit affirmed the district courts finding that the First Amendment protected Foxs use of the name Empire for an expressive, creative work and ancillary works. In doing so, the appellate panel reaffirmed First Amendment protection for use of marks in creative works where the use of the mark bears some artistic relevance to the underlying work and does not explicitly mislead consumers.

Founded in 2010, Empire Distribution is a record label that records and releases albums in the urban music genre, which includes hip hop, rap, and R&B. In 2015, Fox premiered Empire, a dramatic television series about a fictional New York-based hip-hop record label, and the storylines that revolve around its inception, founding members, executives, and artists. The show features songs in every episode, some of which are original, and Fox contracted with Columbia Records to distribute the music in the show under theEmpirebrand. After receiving several threatening letters from Empire Distribution about Foxs use of the Empire name, Fox filed a declaratory judgment action seeking a determination that itsEmpireshow, its associated music releases, and affiliate merchandise did not violate Empire Distributions trademark rights. Empire Distribution counterclaim for trademark infringement, unfair competition, and false advertising. The fight centered on whether Foxs creative work, which utilized the protected name and trademark of Empire Distribution, was exempt from the Lanham Act as a First Amendment expression.

When it comes to First Amendment protections for trademark use, the discussion must start with the test expounded by the Second Circuit inRogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989). Courts generally apply theRogerstest in determining whether an expressive work runs afoul of the Lanham Act where the public interest in avoiding consumer confusion outweighs the public interest in free expression. Pursuant toRogers, use of anothers trademark or protected identifying material in an expressive work does not violate the Lanham Act unless the use has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads consumers as to the source or content of the work.

Analyzing the first prong, the Ninth Circuit found Fox used the word Empire for artistically relevant reasons because the show was set in New York, the Empire State, and its subject matter is a music and entertainment conglomerate. The court rejected Empire Distributions contention that for a use to have an artistic relevance it must refer to the owners mark, in this case Empire Distribution, holding that supporting the themes and geographic setting of the work was sufficient to satisfy the first prong of theRogerstest, which simply requires minimal relevance.

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Turning to the second prong, the Ninth Circuit found Foxs use of the titleEmpiredid not explicitly mislead consumers. Absent an explicit indication, overt claim, or explicit misstatement that causes such consumer confusion, the second prong of theRogerstest will be satisfied. SinceEmpiredid not mislead consumers into believing it was produced or created by Empire Distribution, the Court affirmed the lower courts grant of summary judgment in favor of Fox.

Tucked away in the Ninth Circuits decision is the acknowledgment that not only is an expressive work protected from trademark infringement liability if it passes theRogerstest, but also are similarly branded ancillary promotional activities and commercial products based on the expressive work. So as long as the attendant commercial use is auxiliary to the expressive work and not explicitly misleading, it falls within the protective umbrella. Thus, Fox can sellEmpirebranded CDs, t-shirts, and music, as well as put on and promoteEmpireconcerts without infringing on Empire Distributions exclusive rights to use the Empire name in conjunction with those goods and services. Although the Ninth Circuits decision may be a significant victory for Fox and other creators of expressive works, brand owners will likely see this decision as a setback to trademark enforcement and an expansion of theRogerstest. With bated breath, we anticipate how other courts apply and expound onRogersin light of the Ninth Circuits decision, and whether the Supreme Court will weigh in on the topic.

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Use of Trademarks in Creative Works & Lanham Act Liability - The National Law Review