By Scott Hervey
Did you ever wonder why some movies use fictional names for companies or sports teams? TV and movie producers intentionally avoid using brand or company names in order to avoid any potential of an entanglement with a trademark owner. Some studio lawyers insist that no third-party brands may be used under any circumstances without permission (I have had these discussions). How do they explain that other producers, including the producers of HBO’s series, “Ballers”, use the actual names and logos of NFL teams within the show’s story without NFL permission? Hopefully, the Ninth Circuit’s decision in 20th Century Fox Television v. Empire Distribution, Inc. will provide the legal framework by which these reticent studio lawyers may now approve the uncleared use of a third-party trademark.
Empire Distribution is a record label that records and releases albums in the urban music genre, which includes hip hop, rap, and R&B. In 2015, Fox launched the TV series, “Empire”, a drama about a fictional New York based record label. The show features music in each episode, including some original music. Under an agreement with Fox, Columbia Records distributes the music from the show under the brand Empire.
Believing that its marks were being infringed, Empire Distribution sent Fox a cease and desist letter; Fox filed suit on March 23, 2015, seeking a declaratory judgment that the Empire show and its associated music releases do not violate Empire Distribution’s trademark
rights. Empire Distribution promptly filed a counterclaim for, among other claims, trademark infringement.
In most instances, likelihood of confusion is the method for determining trademark infringement. However, when the allegedly infringing use is in connection with an expressive work, courts in the 9th Circuit will apply a different test developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Courts apply this different test primarily because such situation implicates the First Amendment right of free speech which must be balanced against the public’s interest in avoiding consumer confusion. Sometimes a brand will acquire cultural significance and a storyteller may seek to use such significance to advance a storyline.
Under the Rogers test, the use of a third-party mark in an expressive work in not trademark infringement if the use of the third-party mark has artistic relevance and is not expressly misleading as to the source or the content of the work. Trademarks that do more than just identify goods, marks that “transcend their identifying purpose”, are more likely to be used in artistically relevant ways. However, a trademark mark that has no meaning beyond being a source identifier is more likely to be used in a way that has “no artistic relevance.”
The court easily found that Fox’s use of “Empire” for both the title of its series and the name of the record label at the center of the show’s drama had artistic relevance and its use was not misleading. However, Empire Distribution took issue with use of the “Empire” mark “as an umbrella brand to promote and sell music and other commercial products” such as appearances by cast members in other media, radio play, online advertising, live events, and the sale or licensing of consumer goods.
How far would Fox’s legitimate use extend? According to the 9th Circuit, quite far. The court acknowledged that while the above promotional efforts “technically fall outside the title or body of an expressive work, 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.” If the court did not extend Rogers to cover legitimate marketing and advertising endeavors, Fox would not have been able to effectively promote and market its TV program.
This is a good case for TV and movie producers and also the studios that market and promote their works. For brand owners (like Empire Distribution), it’s also clear that acceptable use under Rogers is broad enough to include any activity whose purpose includes the promotion and marketing of the creative work.