Ninth Circuit Decides Case Involving Use of Trademark in the Title of a Creative Work

Every so often you hear of disputes concerning the use of someone else's famous trademark in the title of a creative work such as a song or television show. One famous case in this area concerns Aqua's song "Barbie Girl", which was the subject of unsuccessful litigation brought by Mattel. And there have been other disputes in this area as well, such as the dispute involving the group Outkast and its song "Rosa Parks", and the dispute involving the title of the Showtime series, "Californication," which shares its name with a Red Hot Chili Peppers album. Earlier this month, the Ninth Circuit decided a case involving the television show "Empire", which was alleged to violate the trademark rights of a Empire Distribution, a well-known record label. 

The purpose of trademarks is to serve as designations as to the origin or source of goods and services.  For example, if a soft drink says Pepsi on it, you know what it is and where it comes from. Federal registration of a trademark is not necessary to accrue trademark rights but it can be a good idea because it confers important benefits. 

In 2015, Twentieth Century Fox Television and Fox Broadcasting Company (collectively, "Fox") debuted a show called Empire, which is about a fictional New York hip hop label named "Empire Enterprises." In addition, Columbia records, by way of an agreement with Fox, commercially releases music from the show. The show and the music therein has been promoted via live performances and via merchandise. Fox received a claim letter from Empire Distribution and subsequently sought a declaratory judgement that the show's name did not infringe any of Empire Distribution's federal or California law-based trademark rights. Empire Distribution was alleging trademark infringement, trademark dilution, unfair competition, and false advertising under the Lanham Act and California law. 

At the lower court, Fox prevailed on its Motion for Summary Judgment. Empire Distribution then appealed. 

Normally trademark infringement claims are governed by a "likelihood of confusion" test. However, because this case involved the use of a trademark in the title of an expressive work, the court used a test from the Second Circuit case of Rogers v. Grimaldi. Under the test from Rogers, the title of an expressive work does not violate the Lanham Act (the federal act governing trademarks) "unless the title as no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” The rationale for using the Rogers test is that expressive works implicate First Amendment concerns and that there is less likely to be consumer confusion. 

In regard to whether the Rogers test should apply, Empire Distribution had argued that Fox's use of the term went beyond mere use as title of expressive work. Specifically, Empire Distribution noted that Fox used the term as an "umbrella brand to promote and sell music and other commercial products." However, the court held that works protected under the Rogers test may be advertised and marketed by name. 

In applying the Rogers test to the case, the court noted the relevance the title "Empire" to the show, which relevance arose from the fact that the show was set in New York, the Empire State, and from the fact that the subject matter of the show was "Empire Enterprises", a music and entertainment conglomerate. While Empire Distribution did not dispute the relevance, it argued that to pass the Rogers test, the junior work must refer to the senior work (i.e., that the show Empire must refer to Empire Distribution). However, the court said that no such requirement exists in the Rogers test, noting that "[r]eference to another work may be a component of artistic relevance, but it is not a prerequisite." 

Having found that the relevance of the title to the show was sufficient to satisfy the first prong of the Rogers test, the court then went on to analyze whether the title was explicitly misleading "as to the source or origin of the work." In doing so, the court noted that in order to fail this second prong of the test, it's not enough that there be confusion, "the creator must explicitly mislead customers." In this case, the court, noting that the show contained "no overt claims or explicit references to Empire Distribution, said that the show satisfied the second prong. 

The court reached a sensible result in this case. Trademark law offers important protections, both for consumers in the marketplace, as well as for companies that have invested in their brand. But, like other areas of IP law, too much protection comes at a cost of limiting the creative commons, so it's important that balance be maintained.