Guest star Andre Royo, Jussie Smollette, Terrence Howard and Trai Byers in the “Et Tu, Brute?” fall finale episode of EMPIRE airing Dec. 2 2015 on FOX. CHUCK HODES/FOX
Empire is the television equivalent of Genghis Khan, but Twentieth Century Fox Television has a little legal problem by way of a record label, Empire Distribution, asserting trademark rights.
This record label, which has worked with such hip-hop stars as Kendrick Lamar, Snoop Dogg and Sage the Gemini, has demanded millions of dollars for trademark infringement and tarnishment, and in the absence of a license, is seeking a court-ordered injunction to prevent Fox from using “Empire” as the title of its hip-hop drama with accompanying soundtracks.
On Tuesday, Fox submitted a motion for summary judgment (read here) that’s largely premised on the argument that the series title has artistic relevance and isn’t misleading.
If Fox prevails on the argument, it will want to tip Lucious Lyon’s hat to Italian film maestro Federico Fellini, who in 1986 came out with a film titled Ginger and Fred, which prompted a lawsuit from Ginger Rogers. In that case, Rogers v. Grimaldi, the court’s conclusion was to protect expressive works like films and television shows from Lanham Act claims unless artistic relevance was dubious and a title was explicitly deceptive. Judges around the nation have been using this standard ever since.
And so, Fox argues, “Rogers controls here, as Empire and the Soundtracks that advance its plot are archetypal expressive works protected by the First Amendment, with ‘Empire’ describing both the show’s setting (New York, the ‘Empire State’) and subject (the fight for control over ‘Empire Enterprises,’ a figurative entertainment empire).
Discussing the second prong of the Rogers test, Fox points out that the show doesn’t say anything about its legal adversary nor has there been any suggestion of consumers being misled as to the source of the series or its soundtracks. “This begins and ends the analysis,” states Fox’s motion, authored by attorney Daniel Petrocelli.
Fox is also contending with claims of diluting the record label’s trademark and committing unfair competition. According to court papers filed by Empire Distribution, some of the label’s artists have been walking in the same radio promotional path as Fox’s Empire artists, while other musicians like Shaggy have been mixing up logos on social media.
Fox is attempting to rebut these secondary claims by emphasizing the difference between commercial and expressive speech as well as the relatedness of the goods being offered to the public. For example, on the latter point, Empire Distribution doesn’t produce broadcast television programming, and as far as consumers potentially getting mixed up about musical albums for sale, Fox posits that consumers “do not take into account record labels when making their purchasing decisions.”
Separately, there’s also an attack on Empire Distribution for a “weak mark in a crowded field,” (other producers in the entertainment space have used “Empire” to title works). As for the marks, it is Fox’s view that “Empire Distribution” and “Empire Recordings” is not famous enough to be tarnished. Fox tells a judge, “‘Empire Distribution’ is not ‘COACH,’ much less ‘KODAK’ or ‘COKE.’ ”
Don’t be fooled. Fox is certainly taking this case extremely seriously. If the summary judgment motion itself doesn’t demonstrate it, the hundreds of pages in declarations and exhibits (some examples) certainly testify to the fact that the network has spared no expense here to keep the title of its hit series. It certainly does not come cheap at all to hire marketing experts to conduct field surveys about where consumers are sourcing the origins of Empire. In fact, trademark cases like this one present nice opportunities to peek into how conscious consumers are about the entertainment companies behind the works being enjoyed. As seen by the table below, hardly anyone is sourcing Fox’s hip-hop drama to Empire Distribution, although one person who answered “Empire,” according to the court papers, explained, “I’m not sure, but it seems like a joint venture between a major broadcaster and a record company in order to try to sell more singles and boost viewership, similar to Glee and Nashville.”
This article originally appeared in THR.com.