Twentieth Century Fox Rules The Empire
A US Court of Appeal has ruled in favour of Twentieth Century Fox (TCF) in a case concerning the title of its television show, Empire. TCF took the rather unusual step of issuing proceedings for a declaration that its use of Empire did not infringe on trademarks owned by Empire Distribution, a record label. The Ninth Circuit ruled that that title was speech protected under the First Amendment.
TCF brought their claim in March 2015 having received cease and desist letters from Empire Distribution regarding their use of Empire. When TCF filed its complaint for declaratory relief, Empire Distribution responded by issuing counterclaims on the basis that TCF was using Empire’s trademarks in an unauthorised manner. When first writing to TCF, Empire Distribution had requested a payment of $8 million in damages for use of the Empire name. This was then followed by a demand for $8 million in damages, as well as a further $5 million in damages and to promote artists represented by Empire Distribution, featuring them as guests on the show.
In February 2016, the Judge at first instance favoured TCF. This decision was appealed by Empire Distribution who argued that the court had been mistaken in procedure when discussing protection by the First Amendment and the Lanham Act.
The Appeal Court reviewed the district’s summary judgment decision, and applied the test developed in the 1989 case of Rogers v Grimaldi. Using the Rogers test, the title of “Empire” for the television show satisfied the use for artistically relevant reasons and it contained no explicit references to Empire Distribution which the Court held meant that it was not misleading for consumers causing no confusion, thus affirming the decision of the lower court.