Ninth Circuit Allows Fox to Use ‘Empire’ Despite Prior Use by Record Company

December 6, 2017


Michael I. Rudell and Neil J. Rosini

What distinguishes a First Amendment-protected use of that pre-existing mark from an actionable infringement?

Originally published in the Entertainment Law column in the New York Law Journal on December 1, 2017.

A television production company and affiliated network decided to create and broadcast a fictional series about a company, notwithstanding their alleged knowledge of an existing business that used a brand name and made products that were essentially the same as those of the television series. Moreover, the production company decided to sell associated products in the same category sold by the pre-existing business under its brand. What distinguishes a First Amendment-protected use of that pre-existing mark from an actionable infringement?

The U.S. Court of Appeals for the Ninth Circuit recently addressed that question in Twentieth Century Fox Television v. Empire Distribution, No. 16-55577 (Nov. 16, 2017) and held for the television companies.

Facts of the Case

Twentieth Century Fox Television and Fox Broadcasting Company (Fox) created and broadcast a television series named “Empire” about a fictional hip hop music label named “Empire Enterprises” based in New York. Fox also arranged to release music from the show as well as soundtrack albums bearing the “Empire” brand. In addition, Fox promoted the television show and associated music through live musical performances, radio play, and goods such as shirts and champagne glasses, also bearing the “Empire” brand. Fox did all this notwithstanding the existence of a respected record label known as Empire Distribution, which recorded and released albums in the urban music genre including hip hop, rap and R&B. The title of some of its albums included the phrase “EMPIRE Presents.”

After receiving a claim letter from Empire Distribution, Fox brought an action for a declaratory judgment that the television series and associated music releases did not violate Empire Distribution’s rights. Empire Distribution counterclaimed for trademark infringement, trademark dilution, unfair competition and false advertising under the Lanham Act and California state law. Fox based its First Amendment defense primarily on the Rogers test initially articulated by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) and later adopted by the Ninth Circuit. Fox moved for summary judgment and won in the district court. On appeal, the Ninth Circuit upheld the lower court in a decision that also turned on the Rogers test.

‘Rogers’ Test

The Rogers case involved the unauthorized use of the name of actress Ginger Rogers in the title of an “expressive work”—a film named “Ginger and Fred” directed by Federico Fellini. The film’s plot focused on the televised reunion of two retired Italian cabaret performers, Amelia and Pippo, who had imitated Rogers and Fred Astaire in their heyday, becoming known locally as “Ginger and Fred.” In her suit, Rogers claimed that the defendants’ use of her name in the title violated her rights under the Lanham Act by giving the false impression that the film was “about her or that she sponsored, endorsed, or was otherwise involved in the film.”

The court treated the Rogers name as a trademark and focused on the scope of First Amendment protection affording artists freedom of expression, not only for their benefit but also for the benefit of audiences who enjoy their creative works. But those audiences are also consumers and the Lanham Act guards against confusion on the part of ordinarily prudent purchasers as to the “origin, sponsorship or approval” of a product or service. Accordingly, “Consumers of artistic works … have a dual interest: they have an interest in not being misled and the also have an interest in enjoying the results of the author’s freedom of expression.”

To accommodate that dual interest, the Rogers court fashioned a two-prong test that placed First Amendment interests above commercial concerns: The author’s work will not violate the Lanham Act unless the unauthorized use “has no artistic relevance to the underlying work whatsoever,” or if it has some artistic relevance, unless the use “explicitly misleads as to the source or the content of the work.” The court’s guiding principle was that “in general the [Lanham] Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression,” notwithstanding the risk that some consumer confusion may result.

Applying the first prong of the test, the court found that the title “Ginger and Fred” was not “arbitrarily chosen just to exploit the publicity value of their real life counterparts but instead to have genuine relevance to the film’s story.” As for whether the title explicitly misled, the court noted that it contained “no explicit indication that Rogers endorsed the film or had a role in producing it.” At most, survey evidence showed “that some members of the public would draw the incorrect inference that Rogers had some involvement with the film.” But that risk—“not engendered by any overt claim in the title”—was “so outweighed by the interests in artistic expression as to preclude application of the Lanham Act.” And “[t]o the extent that there is a risk that the title will mislead some consumers as to what the work is about, that risk is outweighed by the danger that suppressing an artistically relevant though ambiguous title will unduly restrict expression.” Fellini won and Rogers lost.

In subsequent cases, the influence of Rogers spread beyond unauthorized use of trademarks in titles to uses found within the expressive works themselves. In 2008, the Ninth Circuit adopted the Rogers test in a decision involving the use of the plaintiff’s allegedly “distinctive logo and trade dress” without authorization within the body of another kind of “artistic work,” a video game. ESS Entertainment 2000 d/b/a Playpen v. Rock Star Videos, 547 F.3d 1095 (9th Cir. 2008).

On appeal in Empire, Empire Distribution argued in its opening brief that the district court had “vastly extended First Amendment protection well beyond the Rogers case” particularly because Fox was selling goods and services in direct competition. By way of example, it asserted that the lower court’s ruling would allow a studio to “produce a television series titled ‘Motown’ about a record label, and then have the right to record, promote and distribute Motown music-genre under the mark ‘Motown’ in direct competition with and without the permission of the owner of the famous label founded by Barry Gordy in Detroit.” Empire Distribution asserted that when art imitates life to this degree, “it crosses the bounds of protected speech.”

Court’s Decision

The Ninth Circuit disagreed. First, it had no trouble categorizing the “Empire” television series as an expressive work that deserved First Amendment protection and the application of the Rogers test. As for the use by Fox of “Empire” as an “umbrella brand to promote and sell music and other commercial products,” the court found them to be promotional in nature even if they generated revenue. The court observed that “these promotional efforts technically fall outside the title or body of an expressive work” but “it requires only a minor logical extension of the reasoning of Rogers to hold that works protected under its test may be advertised and marketed by name, and we so hold.”

Moreover, there was no evidence that Fox had created a “pretexual expressive work meant only to disguise a business profiting from another’s trademark” (which seems intended to address the Motown example). On the contrary its “promotional activities, including those that generate revenue, [were] auxiliary to the television show and music releases, which lie at the heart of its ‘Empire’ brand” and therefore were also eligible for consideration under the Rogers test.

Empire Distribution argued that a “threshold requirement” had not been met: The Rogers test was supposed to be reserved for instances in which the pre-existing brand had entered “common parlance” and had come to “signify something more than the brand itself” (like using “Rolls Royce” to denote a high standard of automotive quality), which was not the case with “Empire.” The court refused to recognize that requirement and instead drew attention to the fact that “empire” was a “common English word” used by Fox for “artistically relevant reasons: the show’s setting in New York, the Empire State, and its subject matter is a music and entertainment conglomerate, ‘Empire Enterprises,’ which is itself a figurative empire.”

Empire Distribution also argued (somewhat counterintuitively) that Fox’s use of “Empire” failed the Rogers test because it was not intended to refer to Empire Distribution, unlike, for example, the “Ginger” in the title “Ginger and Fred” that intentionally referred to Ginger Rogers. The court refused to locate such a “referential requirement” in the Rogers decision and declared it “inconsistent with the purpose of the first prong” of the Rogers test.

Applying that first prong—whether the “use of the mark has some artistic relation to the work,” the level of which only needed to exceed zero—the court found that Fox’s use had “artistic relevance by supporting the themes and geographic setting of [its] work.” Accordingly, the word “empire” was sufficiently relevant to satisfy the first prong of the Rogers test. Addressing the second prong—whether the allegedly infringing use “explicitly misleads as to the source or the content of the work”—the court found no “explicit indication,” or “overt claim” or “explicit misstatement” (phrases taken from the Rogers decision) causing consumer confusion. Fox’s use thereby satisfied that second prong, too.


At least in the Ninth Circuit, the First Amendment right to use a real pre-existing business name in the title and setting of an expressive work—and to sell related products under that name—seems quite broad. Some of our creative readers already may be pondering the dramatic and financial possibilities of a television juggernaut set in an existing major corporation, with promotional branding opportunities to match.