Shortly after Twentieth Century Fox Television (“Fox”) debuted its hip-hop drama called Empire, a record label named Empire Distribution sent them letters claiming a trademark violation for the use of their name. Initially, Empire Distribution asked for one of two payment options to make the lawsuit go away- $8 million or $5 million compensation plus guest spots on the show. Further, Empire Distribution alleged that its reputation was being ruined by its association with the show, due to the show’s “portrayal of a label run by a homophobic drug dealer prone to murdering his friends.” In March 2015, the real legal battled began when Fox sued Empire Distribution in hopes of safeguarding its intellectual property rights related to Empire.
Empire Distribution ended up fighting back by countersuing Fox. On Tuesday, February 2, 2016, a California federal judge ruled in favor of Fox. The Court based its ruling on the two-part Rogers test regarding protections of the First Amendment. First, it ruled that the use of the word “Empire” was relevant to the hip-hop drama due to its premise and location. Secondly, it decided, “Fox has not explicitly misled consumers about its affiliation with Empire Distribution.” Thus, the Court granted Fox a win on its motion for summary judgment and “declaratory relief for its initial federal trademark infringement.”
Dominic Patten, ‘Empire’ & Fox Win Trademark Infringement Lawsuit Over Name, Deadline (Feb. 3, 2016 9:53 AM), http://deadline.com/2016/02/empire-fox-trademark-infringement-lawsuit-order-lee-daniels-1201695714/.
Dominic Patten, ‘Empire’ & Fox Win Trademark Infringement Lawsuit Over Name, Deadline (Feb. 3, 2016 9:53am), http://deadline.com/2016/02/empire-fox-trademark-infringement-lawsuit-order-lee-daniels-1201695714/.
Eriq Gardner, Fox Gets to Keep ‘Empire’ Series Titles After Beating Hip-Hop Record Label in Court, Hollywood Reporter (Feb. 3, 2016 8:36 AM), http://www.hollywoodreporter.com/thr-esq/fox-gets-keep-empire-series-861607.
Eriq Gardner, Fox Gets to Keep ‘Empire’ Series Titles After Beating Hip-Hop Record Label in Court, Hollywood Reporter (Feb. 3, 2016 8:36 AM), http://www.hollywoodreporter.com/thr-esq/fox-gets-keep-empire-series-861607.
Eriq Gardner, Fox Gets to Keep ‘Empire’ Series Titles After Beating Hip-Hop Record Label in Court, Hollywood Reporter (Feb. 3, 2016 8:36 AM), http://www.hollywoodreporter.com/thr-esq/fox-gets-keep-empire-series-861607.