Recent Trademark In Titles Cases Show 'High Bar' for Proving Public Was 'Explicitly Misled'

In Twentieth Century Fox TV v. Empire Distribution Inc., 875 F.3d 1192 (9th Cir. 2017), for example, the Ninth Circuit decided that the use of the title "Empire" for a Fox TV show didn't infringe on the trademark rights of an urban music label named Empire Distribution, even though the TV show was about a fictional New York-based record company named "Empire Enterprises." Fox also sold soundtrack albums and merchandise, and promoted its TV program through live events, for its Empire brand.

In the "Empire" case, the Ninth Circuit affirmed a district court ruling in favor of Fox by utilizing the landmark decision in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under Rogers, expressive works in which the title is artistically relevant to the underlying content, and doesn't "explicitly mislead" consumers regarding its source, can escape Lanham Act liability. The Ninth Circuit found as to artistic relevance in Twentieth Century Fox TV: "Fox used the common English word 'Empire' for artistically relevant reasons: the show's setting is New York, the Empire State, and its subject matter is a music and entertainment conglomerate, 'Empire Enterprises,' which is itself a figurative empire." The Ninth Circuit went on to find: "Fox's Empire show, which contains no overt claims or explicit references to Empire Distribution, is not explicitly misleading, and it satisfies the second Rogers prong."