Empire Distribution is a hip-hop record label founded in 2010. Empire is a popular television show on Fox about the internal goings-on at a fictional music label called "Empire Enterprises." In 2015, Empire Distribution sent a demand letter to Fox alleging that Fox's use of "Empire" violated Empire Distribution's trademark rights in its name. Fox responded by filing suit, seeking a declaratory judgment that its use of "Empire" was non-infringing, and Empire Distribution counterclaimed for trademark infringement, unfair competition, and dilution. In 2016, Fox won summary judgment on all claims and counterclaims.
In affirming summary judgment, the Ninth Circuit explained that where an allegedly infringing use of a mark is the title of an expressive work, or part of the work itself, the use is protected by the First Amendment "unless the [use] 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."
The Ninth Circuit found that Fox's use of "Empire" was related to the underlying content of the show and was not misleading. The court of appeals explained that the show is set in New York and features a business conglomerate that is a "figurative empire." Nor did the show "explicitly mislead" viewers, because the show did not expressly indicate or claim association with Empire Distribution.
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