## Facts

- Fox produced and broadcast a television drama titled *Empire* about a hip hop music and entertainment company and its founding family’s struggle for control.
- Fox released and promoted music connected to the series, including songs appearing in episodes, and marketed the series through advertising, performances, and consumer goods.
- Empire Distribution operated a real-world record label and music distributor using “Empire” as its name and asserted trademark rights in that mark.
- After Empire Distribution demanded that Fox stop using “Empire,” Fox sued for declaratory relief that its use did not infringe under federal or California law.
- Empire Distribution counterclaimed under the Lanham Act and California law for infringement, dilution, and unfair competition, seeking damages and injunctive relief.
- The district court granted summary judgment for Fox, holding Fox’s use was protected under the First Amendment pursuant to the *Rogers v. Grimaldi* test; it also denied Empire Distribution’s request for additional discovery.

## Issues

1. Whether the *Rogers v. Grimaldi* test governs trademark claims challenging the use of “Empire” in the title and content of a television series and related music and promotion, instead of the ordinary likelihood-of-confusion analysis.
2. Whether Fox’s use of “Empire” satisfies *Rogers* by (a) having artistic relevance to the work and (b) not being explicitly misleading as to source, sponsorship, or content.
3. Whether the district court abused its discretion by denying additional discovery under Federal Rule of Civil Procedure 56(d) before ruling on summary judgment.

## Decision

- The Ninth Circuit affirmed summary judgment for Fox.
- The court held *Rogers* applied because the challenged use occurred in connection with an expressive work and its related uses were sufficiently connected to that work.
- Fox satisfied *Rogers*’ artistic-relevance prong because “Empire” related to the show’s subject matter and themes and also referenced New York as the “Empire State.”
- Fox satisfied *Rogers*’ explicitly-misleading prong because there was no explicit indication or overt claim that Empire Distribution produced, sponsored, or was affiliated with the show or its associated music and promotions.
- The court held the Lanham Act claims were barred by the First Amendment under *Rogers*, and parallel California claims failed for the same reason.
- The court found no abuse of discretion in denying further discovery because the requested evidence would not be material to the controlling *Rogers* analysis.

## Legal Principles

- When a trademark claim targets a use of a mark in the title or content of an expressive work, courts apply the *Rogers v. Grimaldi* test to balance First Amendment interests against the Lanham Act.
- The artistic-relevance prong sets a low bar; the Lanham Act is displaced unless the mark has no artistic relevance to the work whatsoever.
- Under *Rogers*, potential consumer confusion is insufficient absent an explicit indication, overt claim, or clear misstatement of source or sponsorship; ordinary likelihood-of-confusion factors do not control once *Rogers* applies.
- Where *Rogers* protects the challenged use, the Lanham Act does not reach it, and state-law trademark and unfair-competition claims aimed at the same use generally fail on the same First Amendment grounds.
- A district court may deny Rule 56(d) discovery where the requested discovery would not affect the dispositive legal question.

## Conclusion

The Ninth Circuit held that Fox’s use of “Empire” for a television series and related music and promotion was an expressive use protected under the First Amendment because it was artistically relevant and not explicitly misleading, foreclosing Lanham Act and related California claims and supporting summary judgment without further discovery.


Twentieth Century Fox Television v. Empire Distribution, Inc., 875 F.3d 1192 (9th Cir. 2017)