Taraji P. Henson, Star of 20th Century Fox’s Empire

In 2015, Empire Distribution Inc., a record label, sued Twentieth Century Fox for trademark infringement. The lawsuit revolves around the television show Empire, a “primetime drama based around a fictional [record label] of the name.” Both the real-life record label and the fictional record label predominantly release hip-hop songs.

The Lanham Act, the main law that government trademark use in the US, “prohibits [the] use of another’s trademark that is likely to cause confusion among the public.” However, the Ninth Circuit has found that the First Amendment constrains the application of the Laham Act on expressive works that contains an allegedly infringing use. The rationale for this constraint is twofold. First, expressive works usually implicate the right to free speech under the First Amendment that must be weighed against the “public interest in avoiding consumer confusion”. Second, consumers are less likely to be confused by trademark use in the context of an expressive work; when a trademark is being used in a TV show, consumers are less likely to assume that the trademark signifies a “sign of association, authorship or endorsement.” The Ninth Circuit applies a two-part test in Rogers v. Grimaldi, established by the 2nd Circuit in 1989, to determine if a trademark use in an expressive work generates liability under the Lanham Act. If the allegedly infringing use of the trademark has some artistic relevance to the expressive work and is not being used to explicitly to mislead consumers, then there is no liability under the Lanham Act.

The Ninth Circuit ruled in November 2017 that Fox did not infringe upon Empire Distribution’s trademarks because of the First Amendment. As long as the author did not use it for a completely irrelevant purpose, or used it explicitly to mislead consumers, trademarks can legally be used in “expressive works” like TV shows. Furthermore, the Ninth Circuit held that the First Amendment also protected the use of a trademark on commercial goods and services that are sold to promote an expressive work.

In April 2018, Empire Distribution filed a petition for certiorari to the Supreme Court. Empire Distribution claims that the Ninth Circuit ruling had extended the First Amendment protections too far, “undercutting the confusion-preventing goals of the Lanham Act.” Empire Distribution argues that the Ninth Circuit, by extending free speech protections to promotional goods, a TV show called “Apple” about a technology company, could use the Apple name and sell tablets and smartphones labeled Apple, in direct competition with the real-life Apple brand. In this case, both the fictional and real-life Empire labels sell marketing related merchandising (t-shirts, hats, cups etc.) bearing the “Empire” name. Fox uses the Empire mark on “musical releases, CDs, and music video” which Empire Distribution also uses for their musical works. Empire Distribution alleges that both their use and Fox’s use of the Empire mark “is virtually identical.” Furthermore, the petition alleges that the record contains evidence of “actual confusion among both consumers and recording artists” as to the use of the Empire mark when it comes to selling music from the TV show as opposed to music from the real-life record label. Though Fox did not use “Empire” to explicitly mislead consumers, the fact that Fox’s Empire is the same type of record label as the real-life Empire does generate consumer confusion. This is especially true if Fox, in an effort to promote Empire the show, engages in essentially the same business as Empire Distribution; both are record labels selling hip-hop songs under the same name.

The petition further argues this case is of “exceptional importance” to industries, such as entertainment and technology, that are heavily concentrated in the Ninth Circuit. As such, the Ninth Circuit’s decision will have “outsized effects from that court’s incorrect interpretation.”

Adele Zhang is the Online Content Chair and an Entertainment Highlight Contributor for the Harvard Journal of Sports and Entertainment Law and a current first year student at Harvard Law School (Class of 2020).