Ninth Circuit Nixes Rap Label’s ‘Empire’ Claim Against Fox

[Photo credit: Coolcaesar]
PASADENA, Calif. (CN) – Ruling that Fox’s use of the title “Empire” is relevant to the themes and settings in its hit television show, the Ninth Circuit on Thursday rejected $8 million trademark claims brought by a San Francisco record label after the show premiered in 2015.

On Thursday, the federal appeals court ruled against Empire Distribution in favor of Fox, affirming U.S. District Judge Percy Anderson’s dismissal of the label’s claims without a trial.

Fox filed a lawsuit against the label in March 2015, seeking a declaration that it was not violating the record label’s trademarks under federal or California law through the release of its show “Empire” and accompanying soundtracks and goods, including shirts and champagne glasses. The lawsuit came after the label mailed the studio a claim demanding up to $8 million.

In court documents, Fox said the show took its name from New York’s nickname, the Empire State, and the concept of a media empire that is central to the show’s premise about a thriving R&B and hip-hop label.

Established in 2010, Empire Distribution – like the fictional record label in the television show – releases albums and compilations in the hip-hop, rap, and R&B genres. The label has worked with artists Snoop Dogg, T.I., and Kendrick Lamar. It argued that Fox’s brand name would sow confusion in the marketplace.

In October, the record label told a Ninth Circuit panel that even if the panel found the show itself was protected expression under the First Amendment, the associated soundtracks and other merchandise were not.

The Ninth Circuit panel was not persuaded. It first found that Fox’s First Amendment interest in the show could be thwarted if it could use the title but not to promote the show and sell and license merchandise.

“Fox’s promotional activities, including those that generate revenue, are auxiliary to the television show and music releases, which lie at the heart of its ‘Empire’ brand,” Circuit Judge Milan Smith wrote in the 13-page opinion.

Fox is represented by O’Melveny partner Daniel Petrocelli. John Bowler with the Atlanta firm Troutman Sanders represents Empire Distribution. They did not immediately respond to requests for comment on Thursday.

The unanimous ruling used a two-part test established in Rogers v. Grimaldi, a 1989 case in the Second Circuit. In that case, famed actress-dancer-singer Ginger Rogers made unsuccessful trademark infringement claims against the producers of a movie about Rogers and her dancing partner Fred Astaire titled “Ginger and Fred.”

Applying the Rogers test, Smith said the “Empire” title was artistically relevant to the themes and setting of the show.

“In this case, Fox used the common English word ‘Empire’ for artistically relevant reasons: the show’s setting is New York, the Empire State, and its subject matter is a music and entertainment conglomerate, ‘Empire Enterprises,’ which is itself a figurative empire,” Smith wrote.

Under the second prong of the test, the panel rejected the label’s claim that the use of the “Empire” title would confuse consumers.

“Fox’s Empire show, which contains no overt claims or explicit references to Empire Distribution, is not explicitly misleading, and it satisfies the second Rogers prong,” Smith wrote.

Gerard Fox counsel Aaron Swerdlow said the ruling is significant and would likely influence creative decisions in the music, film and television industry. If studios are in doubt about the title of a movie they would use the court’s ruling as a reference, providing the label doesn’t appeal to the Supreme Court.

“It’s a fine line but this line has moved in the direction of more creativity and more flexibility around the use of similar names and similar imagery and I think that’ll play out right away,” Swerdlow said during a phone interview.

Given the success of the show, Swerdlow said he was not surprised when the lawsuit emerged. He said that while there were not necessarily similarities between Empire Distribution and the fictional label, he believed real life rap and hip-hop industry figures had influenced the show.

“It’s clear, at least to me, that the creators of the show were influenced or studied sort of real-life events of real-life artists and were inspired by that in making the show,” Swerdlow said.

“It’s clear at least to me that the creators of the show were influenced or studied sort of real life events of real life artists and were inspired by that in making the show,” Swerdlow 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.

Fox said Empire Distribution had sent a letter claiming Howard’s rap mogul Lucious Lyon tarnished the label’s brand because the “Empire” creators portrayed 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.

Circuit Judges Diana Motz and Jacqueline Nguyen joined Smith on the panel. They also rejected the label’s contention that Judge Anderson made procedural errors by refusing to allow more time for discovery, and by relying on disputed facts in granting summary judgment.

“The fact that the Empire show is a ‘fictional’ story was not a disputed fact, despite the evidence that it was based partly on individuals and events from the real world; fictional stories may take inspiration from reality,” Smith wrote.


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