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.
.
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.
View post:
Use of Trademarks in Creative Works & Lanham Act Liability - The National Law Review
- Clarence Thomas plays a poor devils advocate in floating First Amendment limits for tech companies - TechCrunch - April 6th, 2021
- First Circuit Upholds First Amendment Right to Secretly Audio Record the Police - EFF - April 6th, 2021
- Justice Clarence Thomas Takes Aim At Tech And Its Power 'To Cut Off Speech' - NPR - April 6th, 2021
- "Fake News" and the First Amendment - University of Dayton - News Home - April 6th, 2021
- Bar owners went beyond First Amendment rights with their 'raised voices, interrupting,' AG argues - Cambridge Day - April 6th, 2021
- Clarence Thomas blasts Section 230, wants common-carrier rules on Twitter - Ars Technica - April 6th, 2021
- Drones (and the First Amendment) take on regulatory overreach in North Carolina - Chatham Journal Weekly - April 6th, 2021
- The university response to offensive speech often reflects a feeble commitment to diversity, equity and inclusion - Poynter - April 6th, 2021
- Online event examines the relationship between free speech and firearms - Nevada Today - April 6th, 2021
- Official Website for the Governor of Maryland - maryland.gov - April 6th, 2021
- Opinion: Remembering the Core Four Pillars of Journalism Amid a Pandemic - Times of San Diego - April 6th, 2021
- Tenth Circuit Misses Opportunity to Affirm the First Amendment Right to Record the Police - EFF - April 2nd, 2021
- Is There a First Amendment Right to Tweet? - JSTOR Daily - April 2nd, 2021
- Is blocking a constituent on Twitter against the First Amendment? This DC resident thinks so | The Hill is Home - The Hillishome - April 2nd, 2021
- The 6th Circuit Reached the Right Conclusion on Preferred Pronouns. Other Courts Should Follow Suit. - Heritage.org - April 2nd, 2021
- Why It's So Hard to Prosecute White Extremists - The Marshall Project - April 2nd, 2021
- Loeb School announces free spring classes and writing workshops - The Union Leader - April 2nd, 2021
- Parler Forced To Explain The First Amendment To Its Users After They Complain About Parler Turning Over Info To The FBI - Techdirt - March 31st, 2021
- Terrorism and Other Dangerous Online Content: Exporting the First Amendment? - Just Security - March 31st, 2021
- The First Amendment: Rarely Popular, Always Necessary - The Dispatch - March 31st, 2021
- The First Amendment: What It Is & What It Isn't - WSHU - March 31st, 2021
- Drawing a Line Between Internet Trolls and the First Amendment - Government Technology - March 31st, 2021
- BREAKING: ACLU Representatives Join Unprecedented Podcast to Discuss HUGE Ramifications of Creasy/Lindenbaum/TCPA on First Amendment Rights - Lexology - March 31st, 2021
- Courts: Bystanders have right to record police under the First Amendment - Newsday - March 31st, 2021
- RCFP urges court to order Texas AG to stop investigating Twitter - Reporters Committee for Freedom of the Press - March 31st, 2021
- Pronouns in the University Classroom & the First Amendment - Reason - March 31st, 2021
- Matt Taibbi: A Biden appointee's troubling views on the First Amendment - National Post - March 31st, 2021
- Pronouns and the Philosophy Professor - The Wall Street Journal - March 31st, 2021
- Letters to the editor | Opinion | journalpatriot.com - Wilkes Journal Patriot - March 31st, 2021
- Jane Briggs-Bunting, who championed the 1st Amendment, dies at 70 - Detroit Free Press - March 31st, 2021
- Was a Trump critic's 1st Amendment violated by Yale? We're about to find out. - MSNBC - March 31st, 2021
- The Cyberlaw Podcast: Can Editorial Middleware Cut the Power of the Big Platforms? - Lawfare - March 31st, 2021
- Judge In Chauvin Trial Rules That Underage Witnesses Can Testify - NPR - March 31st, 2021
- An Alternative to Impeachment: New Bill Helps Enforce Accountability for Capitol Riots - Just Security - March 31st, 2021
- Rep. Walsh refuses to vote as House approves firearms ban at Capitol grounds - The Daily World - March 31st, 2021
- Sixth Circuit Rules That Religious Freedom Entitles Professor To Debate Students Gender Identity In Class - Above the Law - March 31st, 2021
- Attorney: Owosso Barber Won't Pay $9000 In Fines Following 'Operation Haircut' Protest - WKAR - March 31st, 2021
- Court: University of Iowa officials can be held liable for First Amendment violations - The Gazette - March 23rd, 2021
- 'Clear and gross violation of First Amendment freedom': Andy Harris faults government over COVID battle with church - KPVI News 6 - March 23rd, 2021
- Appeals Court Judge Attacks Fundamental Principle Of 1st Amendment Law, Because He Thinks The Media Likes Democrats Too Much - Techdirt - March 23rd, 2021
- Roundtable debate discusses UPD and First Amendment rights - Binghamton University Pipe Dream - March 21st, 2021
- How the meat lobby is waging war on the First Amendment - Crain's Chicago Business - March 16th, 2021
- Requirements are an assault on the First Amendment - Antelope Valley Press - March 16th, 2021
- Biden Justice Department inherits tricky tech, media law issues - Reporters Committee for Freedom of the Press - March 16th, 2021
- Letter: Why the left wants the First Amendment modified - Daily Journal - March 16th, 2021
- Opinion | Iowa protest bill stifles free speech and assembly through harsh penalties - UI The Daily Iowan - March 16th, 2021
- Sunshine Week and a Show Me State statesman - The Highland County Press - March 16th, 2021
- Twitter Sued Texas AG Ken Paxton over First Amendment Concerns - Dallas Observer - March 16th, 2021
- Ammon Bundy arrested after missing trial on trespass charge - ABC News - March 16th, 2021
- Santa Monica Lawmakers Withdraw Law That Would Have Restricted Certain Forms of Protest - SM Mirror - Santa Monica Mirror - March 16th, 2021
- Control over online speech should be in the hands of users, not the government - Bucks County Courier Times - March 16th, 2021
- Court clarifies protections for testifying workers, but rules they can still be demoted - coloradopolitics.com - March 16th, 2021
- Who Gets First Amendment Protections These Days, Anyway? - Slate - March 7th, 2021
- Let's keep Tennessee's knee off the First Amendment - Johnson City Press (subscription) - March 7th, 2021
- Eyman Commentary: I'm Committed to Appealing Restrictions on the First Amendment - Centralia Chronicle - March 7th, 2021
- After settlement, freedom of speech, yellow sign and First Amendment 'stand tall in Brookfield' - Worcester Telegram - March 7th, 2021
- Judge Andrew P. Napolitano: Silencing free speech -- when the First Amendment is not enforced, this can happen - Fox News - March 7th, 2021
- Editorial: The public square doesn't always get First Amendment protection - The Bulletin - March 7th, 2021
- Lets keep Tennessees knee off the First Amendment | Opinion - Daily News Journal - March 7th, 2021
- Keep Tennessee's knee off the First Amendment - Murfreesboro Post - March 7th, 2021
- Impeachment and the First Amendment, Revisited Reason.com - Reason - March 7th, 2021
- Federal Court Affirms Travelers Have A First Amendment Right To Record TSA Screeners - Techdirt - March 7th, 2021
- Mountlake Terrace High School again honored with First Amendment Press Freedom Award - MLT News - March 7th, 2021
- Death threats and rule changes cause some to fear for the First Amendment in New Port Richey - WMNF - WMNF - March 7th, 2021
- Student Editor Sues University Over Alleged First Amendment Violation - The College Post - March 7th, 2021
- Do we not understand the 1st amendment? - The Wahkiakum County Eagle - March 7th, 2021
- Gov. Greg Abbott touts bill to stop Twitter, Facebook from banning Texans - The Texas Tribune - March 7th, 2021
- Commentary: I'm committed to appealing these ridiculous restrictions on the First Amendment - The Reflector - March 7th, 2021
- Mayor Frey tells WCCO radio that the city is ready for trial - 1033 Amp Radio - March 7th, 2021
- Florida Reporter thinks Trustee needs permission to speak; received Emancipation Proclamation and First Amendment in response to FOIA request -... - March 7th, 2021
- Trump Impeachment Trial And The 1st Amendment Debate : Trump Impeachment Trial: Live Updates - NPR - February 14th, 2021
- Trumps claim impeachment violates the 1st Amendment and Brandenburg v. Ohio, explained - Vox.com - February 14th, 2021
- WATCH: Trump not protected by First Amendment for inciting insurrection, Rep. Raskin says - PBS NewsHour - February 14th, 2021
- The Insurrection, Police Accountability, and the First Amendment - brennancenter.org - February 14th, 2021
- Opinion: Guns shouldn't trump the First Amendment - The Missouri Times - February 14th, 2021
- Comment: Trump's lawyers have it wrong on First Amendment, too | HeraldNet.com - The Daily Herald - February 14th, 2021
- Highlights of Day 4 of the Trump Impeachment Trial - The New York Times - February 14th, 2021
- The Atlantic The Great Free-Speech Reversal - The Atlantic - January 29th, 2021
- First Ammendment Rights What Is the First Ammendment? - Reader's Digest - January 29th, 2021
- [OPINION] Does the First Amendment apply to what you post on social media? - Asian Journal News - January 29th, 2021