Fox can rule its ‘Empire,’ court says
When Fox TV premiered its “Empire” show in 2015, about a fictional hip-hop music label called Empire Enterprises, it chose a name already in use by the reallife Empire Distribution, which has been turning out hip-hop, rap and R&B albums under its label since 2010.
No problem, says a federal appeals court, despite the record-seller’s claims of trademark violation, unfair competition and false advertising.
“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,” the Ninth U.S. Circuit Court of Appeals in San Francisco said Thursday.
And while Empire Distribution argued that the program’s title would mislead viewers by falsely suggesting an affiliation with the record company, the court said the show, “which contains no overt claims or explicit references to Empire Distribution, is not explicitly misleading.”
Judge Milan Smith wrote the 3-0 ruling, upholding a federal judge’s February
2016 decision in favor of Fox TV.
Lawyers for the opposing sides were not available for comment.
The television show has branched into the music business, airing songs that Columbia Records releases after each episode and compiles into soundtracks at the end of each season. Fox has also staged live musical performances and sold shirts and Champagne glasses under the Empire brand.
Empire Distribution markets compilations of its performers with albums titled “Empire Presents.”
The court noted that trademark-holders can normally prove infringement by merely showing a likelihood that consumers would be confused by the competing company’s label or design.
But when the trademarked title belongs to an “expressive work,” the court said, the test should be more stringent, because of free-speech concerns and also because people are less likely to be misled into finding that the creators of the two works are connected, or that one has endorsed the other.
In those cases, Smith wrote, a trademark is violated only if the title of the allegedly infringing product has “no artistic relevance to the underlying work,” or the title “explicitly misleads as to the source or the content of the work.”
The Fox TV show falls into neither of those infringing categories, Smith said.