Ninth Circuit Asked to Snub ‘Empire’ Trademark Claims

PASADENA, Calif. (CN) – After winning a court victory under the First Amendment, Fox pushed the Ninth Circuit on Tuesday to reject a San Francisco record label’s trademark claims over the network’s hit musical drama “Empire.”

U.S. District Judge Percy Anderson agreed in February 2016 that Twentieth Century Fox Television’s use of the “Empire” title for its hit TV series was protected after the record label Empire Distribution brought an $8 million claim against the network. The label contended that Fox cannot use the name in the title of the show for accompanying soundtrack music.

At a Tuesday morning hearing at the Richard H. Chambers U.S. Court of Appeals in Pasadena, the record label’s attorney John Bowler was reluctant to concede that the show was protected expression under the First Amendment.

Fox has argued in court documents that the show took its name from New York’s nickname, the Empire State, and the idea of a media “empire” that is central to the show’s premise.

Bowler said that even if there was “minimal expression” in the naming of the series, the federal trademark law the Lanham Act should take precedent.

“Even if the show is an expressive work you can’t take protection in one form of art and then go launch and record and distribute music and cloak that under the guise of the First Amendment,” Bowler told the Ninth Circuit panel.

Fox’s attorney Daniel Petrocelli asked the appeals court to affirm Anderson’s ruling, arguing that the network’s right to expression trumps the label’s trademark claims.

“I submit to you this is the most extreme case that has ever been submitted where a plaintiff has challenged First Amendment protection because we’re talking about the use of an ordinary word in the English language according to its ordinary meaning in an artistic work of art. And no court has ever suggested that is forbidden,” Petrocelli said.

Created by “Precious” director Lee Daniels and actor and writer Danny Strong, “Empire” stars Terrence Howard and Taraji Henson. The show is currently in its fourth season.

In a March 2015 lawsuit filed by the network seeking declaratory relief, Fox said Empire Distribution had sent it a letter claiming that the fictional rap mogul Lucious Lyon, played by Howard, tarnished the label’s brand because “Empire” portrays him as a homophobe, murderer and drug dealer.

Empire Distribution gave Fox three options to settle the claims: pay $5 million and allow the label’s artists to guest star in the series, pay $8 million, or stop using the “Empire” title altogether, according to the network.

U.S. Circuit Judges Diana Motz, Milan Smith and Jacqueline Nguyen took the case under advisement. It is unclear when they will make a decision.

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