Affirming the district court’s summary judgment in favor of Twentieth Century Fox Television and Fox Broadcasting Company, the panel held that Fox’s use of the name “Empire” was protected by the First Amendment, and was therefore outside the reach of the Lanham Act. Fox sought a declaratory judgment that its television show titled Empire and associated music releases did not violate the trademark rights of record label Empire Distribution, Inc. Empire counterclaimed for trademark infringement and other causes of action.
The panel explained that when an allegedly infringing use is in the title or within the body of an expressive work, the Rogers test is used to determine whether the Lanham Act applies. The panel held that the Rogers test applied to Fox’s use of the mark “Empire.” The panel concluded that the first prong of the test was satisfied because it could not say that Fox’s use of the mark had no artistic relevance to the underlying work; rather, the title Empire supported the themes and geographic setting of the work. The second prong of the test also was satisfied because the use of the mark “Empire” did not explicitly mislead consumers.