North Nash


Posted: April 3, 2018 |

Do you ever wonder why TV shows and movies typically substitute fictional names for well-known actual brand names like “Coke”, “American Airlines,” “BMW,” “New York Yankees? This is primarily because studio lawyers are extremely cautious about infringing a trademark or dealing with the hassle of a complaining trademark owner. They know that federally registered marks are protected by the federal Lanham Act, which affords robust remedies for infringement.  Lawyers for producers, studios, and networks have long steered clear of even remote trademark infringement claims, arising from unauthorized use of most brand names in expressive works such as TV shows and movies. 

While there have long been good arguments as to why using third-party marks are non-infringing in an expressive work, it remained a gray area until a recent case. What in-house lawyer wants to sign off on use of a mark, only to end up defending a lawsuit?  Better to be safe than to exceed the legal budget.  Hence studios rarely approved third-party trademark references.  (Just to be clear, and by contrast, authorized use of a brand in movies/TV is common. In fact, brands often pay for product placement on a TV show or movie or donate products such as cars in order to promote the brand.)

After the Ninth Circuit’s recent decision in 20th Century Fox Television v. Empire Distribution, Inc. (9th Cir. Nov. 16, 2017), nervous lawyers, authors, studios, playwrights, and theater companies may breathe a little easier and begin approving more uncleared use of third-party marks in expressive works.  In Empire Distribution, the Ninth Circuit affirmed the grant of summary judgment in favor of Fox and its affiliates, holding that Fox’s “Empire” TV show and promotions of the show, were protected First Amendment speech and did not infringe the trademark rights of record label Empire Distribution.   

The case arose out of Fox’s TV series “Empire” about a fictional, turbulent family in the hip-hop music business and a fictional, New York-based record label. The program centers on music in each episode including original songs commissioned for the show. Fox releases the songs for distribution by Columbia Records after each episode and on a track at season’s end under the brand name “Empire.”

Empire Distribution, which uses the marks “Empire,” “Empire Distribution,” and “Empire Recordings,” sent Fox a cease and desist letter demanding that Fox cease using the “Empire” mark in connection with its TV series and record distribution.  Fox filed a declaratory relief action against Empire Distribution seeking a declaration that the “Empire” show and its associated music releases did not infringe or dilute Empire Distribution’s trademark rights or violate state law. Empire Distribution filed a counterclaim for, among other things, trademark infringement.  

The trial court granted summary judgment for Fox on the ground that its use of “Empire” was protected speech under the First Amendment and thus not actionable. The Ninth Circuit affirmed, applying the two-prong test, first established in the Second Circuit case  of Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).  The Rogers test dispenses with the standard “likelihood of confusion” analysis when the mark at issue was used as artistic expression. Courts apply this alternative test because the right of free expression must be balanced against the public interest in avoiding confusion as to source, sponsorship, or affiliation.  Courts reason that a brand may acquire cultural significance and a writer/artist may attempt to use such significance to advance a storyline. The test will balance infringement claims under the Lanham Act with rights of free expression in expressive works. Under this test, the use of a mark in artistic expression is  constitutionally protected speech and not trademark infringement unless (i) the use of the mark has no artistic relevance to the underlying work, or (ii) if it does have relevance, the mark’s use explicitly misleads the public as to the source or content of the artistic work.  Marks that perform a function beyond source designation, that “transcend their identifying purpose,” are more likely to be artistically relevant. But a mark that has no meaning beyond serving as a designation of source is more likely to have “no artistic relevance.” 

The appellate court first held that the Rogers test applied. The court rejected Empire Distribution’s argument that the test did not protect the work because the Rogers test requires a threshold showing that the mark has attained a meaning beyond a traditional trademark source-identifying function. The court bluntly stated: “[T]he only threshold requirement …is an attempt to apply the Lanham Act to First Amendment expression.” The cultural meaning of the mark was merely one consideration under the test’s first prong. The court also rejected the argument that some of Fox’s uses of “Empire” were outside the title or content of the TV show or the music releases (the expressive work), such as the promotional activities under the mark.  The court held that while these promotional activities (including music distribution) “technically” fall outside the title or content of the expressive work, expressive works protected under the Rogers test may be advertised and marketed by name. The court reasoned that the promotional activities were only “auxiliary” to the TV show and music releases, and these expressive works were the “heart” of the “Empire” mark.

Applying the second prong of the  Rogers test, the court held that the mere likelihood of consumer confusion – the conventional standard for trademark infringement – would not suffice for artistic expression. The expressive work must explicitly mislead consumers to be subject to liability under the Lanham Act.  The “Empire” show contained no overt claims or explicit references to Empire Distribution, and therefore Fox satisfied the second prong.  Fox’s use of the common English word “Empire” satisfied both prongs of the Rogers test because it was used for artistically relevant reasons and was not explicitly misleading to the public. The Fox show is set in the “Empire State,” New York, and its subject matter is a fictional company named “Empire Enterprises,” an allusion to the fictional music and entertainment conglomerate.