Twentieth Century Fox Television v. Empire Distribution, Inc.

• Decision Date: 16 November 2017
• Docket Number: No. 16-55577,16-55577
• Citation: 875 F.3d 1192
• Parties: TWENTIETH CENTURY FOX TELEVISION, A DIVISION OF TWENTIETH CENTURY FOX FILM CORPORATION; Fox Broadcasting Company, Plaintiffs-Appellees, v. EMPIRE DISTRIBUTION, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Ninth Circuit

875 F.3d 1192

TWENTIETH CENTURY FOX TELEVISION, A DIVISION OF TWENTIETH CENTURY FOX FILM CORPORATION; Fox Broadcasting Company, Plaintiffs-Appellees,

v.EMPIRE DISTRIBUTION, INC., Defendant-Appellant.

No. 16-55577

United States Court of Appeals, Ninth Circuit.

Argued and Submitted October 3, 2017 Pasadena, California

Filed November 16, 2017

John M. Bowler (argued), Michael D. Hobbs, and Lindsay Mitchell Henner, Troutman Sanders LLP, Atlanta, Georgia; Paul L. Gale and Peter N. Villar, Troutman Sanders LLP, Irvine, California; for Defendant-Appellant.

Daniel M. Petrocelli (argued), Molly M. Lens, and J. Hardy Ehlers, O'Melveny & Myers LLP, Los Angeles, California; James W. Crooks, O'Melveny & Meyers LLP, Washington, D.C.; for Plaintiffs-Appellees.

Before: DIANA GRIBBON MOTZ,^** MILAN D. SMITH, JR., and JACQUELINE H. NGUYEN, Circuit Judges.

M. SMITH, Circuit Judge:

Empire Distribution, Inc. appeals the district court's grant of summary judgment in favor of Twentieth Century Fox Television and Fox Broadcasting Company (collectively, Fox). Empire Distribution argues that the district court erred substantively and procedurally in holding that Fox's use of the name "Empire" was protected by the First Amendment, and was therefore outside the reach of the Lanham Act, ch. 540, 60 Stat. 441 (1946) (codified as amended at 15 U.S.C. § 1125 ). We disagree, and affirm.

FACTUAL AND PROCEDURAL BACKGROUND

Empire Distribution, founded in 2010, is a well-known and respected record label that records and releases albums in the urban music genre, which includes hip hop, rap, and R&B. Empire Distribution has released many albums by established and lesser-known artists as well as music compilations with titles such as EMPIRE Presents: Ratchet Music , EMPIRE Presents: Yike 4 Life , and EMPIRE Presents: Triple X-Mas .

In 2015, Fox premiered a television show titled Empire , which portrays a fictional hip hop music label named "Empire Enterprises" that is based in New York. The show features songs in every episode, including some original music. Under an agreement with Fox, Columbia Records releases music from the show after each episode airs, as well as soundtrack albums at the end of each season. Fox has also promoted the Empire show and its associated music through live musical performances, radio play, and consumer goods such as shirts and champagne glasses bearing the show's "Empire" brand.

In response to a claim letter from Empire Distribution, 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 under either the Lanham Act or California law. Empire Distribution counterclaimed for trademark infringement, trademark dilution, unfair competition, and false advertising under the Lanham Act and California law, and sought both injunctive and monetary relief. Fox moved for summary judgment, and Empire Distribution's opposition to Fox's motion included a request for a continuance under Federal Rule of Civil Procedure 56(d) in order to complete discovery. On February 1, 2016, the district court denied Empire Distribution's request, and granted summary judgment to Fox on all claims and counterclaims. Empire Distribution moved for reconsideration, which was denied. Empire Distribution timely appealed.

JURISDICTION AND STANDARD OF REVIEW

We have jurisdiction pursuant to 28 U.S.C. § 1291. "We review a district court's decision to grant summary judgment de novo, considering all facts in dispute in the light most favorable to the nonmoving party." Glenn v. Washington Cty. , 673 F.3d 864, 870 (9th Cir. 2011).

ANALYSIS

In general, claims of trademark infringement under the Lanham Act are governed by a likelihood-of-confusion test. See Mattel, Inc. v. MCA Records, Inc. , 296 F.3d 894, 900 (9th Cir. 2002). When the allegedly infringing use is in the title of an expressive work, however, we instead apply a test developed by the Second Circuit in Rogers v. Grimaldi , 875 F.2d 994 (2d Cir. 1989), to determine whether the Lanham Act applies. Mattel , 296 F.3d at 902.¹ Like the Second Circuit, we have identified two rationales for treating expressive works differently from other covered works: because (1) they implicate the First Amendment right of free speech, which must be balanced against the public interest in avoiding consumer confusion; and (2) consumers are less likely to mistake the use of someone else's mark in an expressive work for a sign of association, authorship, or endorsement. See Rogers , 875 F.2d at 997–1000 ; Mattel , 296 F.3d at 900, 902.

Under the Rogers test, the title of an expressive work does not violate the Lanham Act "unless the title has 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." Mattel , 296 F.3d at 902 (internal quotation marks omitted) (quoting Rogers , 875 F.2d at 999 ). We have extended this test from titles to allegedly infringing uses within the body of an expressive work. See E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc. , 547 F.3d 1095, 1099 (9th Cir. 2008).

DOES THE ROGERS TEST APPLY TO FOX'S USE OF THE MARK "EMPIRE?"

We must first determine whether the Rogers test applies to Fox's use of the mark "Empire." We decide this legal question de novo. See Brown v. Elec. Arts, Inc. , 724 F.3d 1235, 1240–41 (9th Cir. 2013).

Empire Distribution argues that at least some of Fox's uses of the mark "Empire" fall outside the title or body of an expressive work, and therefore outside the scope of the Rogers test. The Empire television show itself is clearly an expressive work, see Charles v. City of Los Angeles , 697 F.3d 1146, 1151–52 (9th Cir. 2012), as are the associated songs and albums, see Mattel , 296 F.3d at 902, but Empire Distribution asserts that Fox's use of the mark "Empire" extends well beyond the titles and bodies of these expressive works. Specifically, Empire Distribution points to Fox's use of the "Empire" mark "as an umbrella brand to promote and sell music and other commercial products." These promotional activities under the "Empire" brand include appearances by cast members in other media, radio play, online advertising, live events, and the sale or licensing of consumer goods.

Although it is true that these 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, and we so hold. Indeed, the Rogers case itself concerned both a movie with an allegedly infringing title and its advertising and promotion, although the majority opinion did not deal separately with the latter aspect. See Rogers , 875 F.2d at 1005 (Griesa, J., concurring in the judgment). The balance of First Amendment interests struck in Rogers and Mattel could be destabilized if the titles of expressive works were protected but could not be used to promote those works. In response, Empire Distribution raises the specter of a pretextual expressive work meant only to disguise a business profiting from another's trademark, but the record in this case makes clear that the Empire show is no such thing. Fox's promotional activities, including those that generate revenue, are auxiliary to the television show and music releases, which lie at the heart of its "Empire" brand.

Empire Distribution also claims that Fox's uses of the "Empire" mark fall within the Lanham Act due to a footnote in Rogers , which stated that Rogers ' "limiting construction would not apply to misleading titles that are confusingly similar to other titles [because the] public interest in sparing consumers this type of confusion outweighs the slight public interest in permitting authors to use such titles." 875 F.2d at 999 n.5. This footnote has been cited only once by an appellate court since Rogers , in a case in which the Second Circuit itself rejected its applicability and applied the Rogers test. See Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ'g Grp., Inc. , 886 F.2d 490, 494–95 (2d Cir. 1989). The exception the footnote suggests may be ill-advised or unnecessary: identifying "misleading titles that are confusingly similar to other titles" has the potential to duplicate either the likelihood-of-confusion test or the second prong of Rogers , which asks whether a title "explicitly misleads as to the source or the content of the work." Mattel , 296 F.3d at 902 (quoting Rogers , 875 F.2d at 999 ). More importantly, it conflicts with our precedents, which "dictate that we apply the Rogers test in [Lanham Act] § 43(a) cases involving expressive works." Brown , 724 F.3d at 1241–42. We therefore examine Fox's use of the "Empire" mark under that test.

APPLYING THE ROGERS TEST

I

Under the two prongs of the Rogers test, "the Lanham Act should not be applied to expressive works ‘unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [trademark or other identifying material] explicitly misleads as to the source or the content of the work.’ " Brown , 724 F.3d at 1242 (alterations in original) (quoting Rogers , 875 F.2d at 999 ). In addition to these two prongs, Empire Distribution argues that the Rogers test includes a threshold requirement that a mark have attained a meaning beyond its source-identifying function.

What Empire Distribution identifies as a threshold requirement is merely a consideration under the first prong of the Rogers test. Trademark suits often arise when a brand name enters common parlance and comes to signify something more than the brand itself, but we apply the Rogers test in other cases as well. In Mattel , we noted that some trademarks, such as Rolls-Royce or Band-Aid, "enter our public discourse and become an integral...