US trade marks: Trade mark infringement test for TV show titles
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

US trade marks: Trade mark infringement test for TV show titles

In Twentieth Century Fox Television v Empire Distribution the US Court of Appeals for the Ninth Circuit recently addressed the issue of the appropriate test to apply when an allegedly infringing use is in the title or within the body of an expressive work.

Empire Distribution, a record label that releases albums in the urban music genre, had sent a demand letter to Twentieth Century Fox Television (Fox) regarding a television show titled "Empire", which portrays a fictional music label named "Empire Enterprises". In response to such demand letter, Fox commenced a law suit seeking a declaratory judgment that the "Empire" television show did not violate Empire Distribution's trade mark rights. Empire Distribution, in turn, counterclaimed for trade mark infringement under the Lanham Act, among other causes of action.

The district court granted summary judgment in favour of Fox, holding that Fox's use of the name "Empire" was protected by the First Amendment and, as such, outside the reach of the Lanham Act. Empire Distribution appealed such decision to the Ninth Circuit.

In reviewing the district court's decision, the Ninth Circuit noted that, generally, Lanham Act claims of trade mark infringement are governed by a likelihood of confusion test. However, when the allegedly infringing use is in the title of an expressive work (such as, in the case at hand, a television program), the court first applies the "Rodgers" two-prong test to determine whether the Lanham Act is applicable. The court explained that expressive works are treated differently because: "(1) they implicate the First Amendment right of free speech, which must be balanced against the public interest of 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."

Under the Rodgers test, a television show title 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." In applying the Rodgers test, the Court found that Fox's use of the name "Empire" satisfied both prongs. First, the Court determined that Fox used the word "Empire" for artistically relevant reasons – noting that the level of relevance does not need to be high – since the television show is set in New York (known as "The Empire State") and its subject matter is a music and entertainment conglomerate (a figurative empire). Second, the Court found that Fox's use of the title did not explicitly mislead consumers, indicating that it contains no overt claims or explicit references to Empire Distribution and no explicit misstatement that caused consumer confusion. In analysing the second prong, the Court held that "use of a mark alone is not enough" and that they must ask not only about the likelihood of consumer confusion but whether the creator explicitly misleads consumers.

The Court also dismissed Empire Distribution's arguments that Fox's use of the "Empire" mark "as an umbrella brand to promote and sell music and other commercial properties" falls outside the title of an expressive work and therefore outside the Rogers test. The Court noted that "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."

This decision is instructive for media companies when developing content.

ash-karen-artz.jpg

danow.jpg

Karen Artz Ash

Bret J Danow


Katten Muchin Rosenman LLP 575 Madison AvenueNew York, NY 10022-2585United StatesTel: +1 212 940 8554Fax: +1 212 940 8671karen.ash@kattenlaw.comwww.kattenlaw.com

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article