Twentieth Century Fox Television v. Empire Distribution, Inc.

                    FOR PUBLICATION

   UNITED STATES COURT OF APPEALS
        FOR THE NINTH CIRCUIT

 TWENTIETH CENTURY FOX                           No. 16-55577
 TELEVISION, a division of Twentieth
 Century Fox Film Corporation; FOX                 D.C. No.
 BROADCASTING COMPANY,                          2:15-cv-02158-
                 Plaintiffs-Appellees,             PA-FFM

                     v.
                                                   OPINION
 EMPIRE DISTRIBUTION, INC.,
               Defendant-Appellant.

        Appeal from the United States District Court
           for the Central District of California
         Percy Anderson, District Judge, Presiding

           Argued and Submitted October 3, 2017
                   Pasadena, California

                   Filed November 16, 2017

Before: DIANA GRIBBON MOTZ, * MILAN D. SMITH,
 JR., and JACQUELINE H. NGUYEN, Circuit Judges.

            Opinion by Judge Milan D. Smith, Jr.

    *
      The Honorable Diana Gribbon Motz, United States Circuit Judge
for the U.S. Court of Appeals for the Fourth Circuit, sitting by
designation.
2      TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.

                          SUMMARY **


               Lanham Act / First Amendment

   Affirming the district court’s summary judgment in
favor of Twentieth Century Fox Television and Fox
Broadcasting Company, the panel held that Fox’s use of the
name “Empire” was protected by the First Amendment, and
was therefore outside the reach of the Lanham Act.

    Fox sought a declaratory judgment that its television
show titled Empire and associated music releases did not
violate the trademark rights of record label Empire
Distribution, Inc. Empire counterclaimed for trademark
infringement and other causes of action.

    The panel explained that when an allegedly infringing
use is in the title or within the body of an expressive work,
the Rogers test is used to determine whether the Lanham Act
applies. The panel held that the Rogers test applied to Fox’s
use of the mark “Empire.” The panel concluded that the first
prong of the test was satisfied because it could not say that
Fox’s use of the mark had no artistic relevance to the
underlying work; rather, the title Empire supported the
themes and geographic setting of the work. The second
prong of the test also was satisfied because the use of the
mark “Empire” did not explicitly mislead consumers.




    **
       This summary constitutes no part of the opinion of the court. It
has been prepared by court staff for the convenience of the reader.
      TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.              3

                        COUNSEL

John M. Bowler (argued), Michael D. Hobbs, and Lindsay
Mitchell Henner, Troutman Sanders LLP, Atlanta, Georgia;
Paul L. Gale and Peter N. Villar, Troutman Sanders LLP,
Irvine, California; for Defendant-Appellant.

Daniel M. Petrocelli (argued), Molly M. Lens, and J. Hardy
Ehlers, O’Melveny & Myers LLP, Los Angeles, California;
James W. Crooks, O’Melveny & Meyers LLP, Washington,
D.C.; for Plaintiffs-Appellees.


                         OPINION

M. SMITH, Circuit Judge:

    Empire Distribution, Inc. appeals the district court’s
grant of summary judgment in favor of Twentieth Century
Fox Television and Fox Broadcasting Company
(collectively, Fox). Empire Distribution argues that the
district court erred substantively and procedurally in holding
that Fox’s use of the name “Empire” was protected by the
First Amendment, and was therefore outside the reach of the
Lanham Act, ch. 540, 60 Stat. 441 (1946) (codified as
amended at 15 U.S.C. § 1125). We disagree, and affirm.

  FACTUAL AND PROCEDURAL BACKGROUND

    Empire Distribution, founded in 2010, is a well-known
and respected record label that records and releases albums
in the urban music genre, which includes hip hop, rap, and
R&B. Empire Distribution has released many albums by
established and lesser-known artists as well as music
compilations with titles such as EMPIRE Presents: Ratchet
4     TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.

Music, EMPIRE Presents: Yike 4 Life, and EMPIRE
Presents: Triple X-Mas.

    In 2015, Fox premiered a television show titled Empire,
which portrays a fictional hip hop music label named
“Empire Enterprises” that is based in New York. The show
features songs in every episode, including some original
music. Under an agreement with Fox, Columbia Records
releases music from the show after each episode airs, as well
as soundtrack albums at the end of each season. Fox has also
promoted the Empire show and its associated music through
live musical performances, radio play, and consumer goods
such as shirts and champagne glasses bearing the show’s
“Empire” brand.

    In response to a claim letter from Empire Distribution,
Fox filed suit on March 23, 2015, seeking a declaratory
judgment that the Empire show and its associated music
releases do not violate Empire Distribution’s trademark
rights under either the Lanham Act or California law.
Empire Distribution counterclaimed for trademark
infringement, trademark dilution, unfair competition, and
false advertising under the Lanham Act and California law,
and sought both injunctive and monetary relief. Fox moved
for summary judgment, and Empire Distribution’s
opposition to Fox’s motion included a request for a
continuance under Federal Rule of Civil Procedure 56(d) in
order to complete discovery. On February 1, 2016, the
district court denied Empire Distribution’s request, and
granted summary judgment to Fox on all claims and
counterclaims.       Empire Distribution moved for
reconsideration, which was denied. Empire Distribution
timely appealed.
        TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.                        5

   JURISDICTION AND STANDARD OF REVIEW

    We have jurisdiction pursuant to 28 U.S.C. § 1291. “We
review a district court’s decision to grant summary judgment
de novo, considering all facts in dispute in the light most
favorable to the nonmoving party.” Glenn v. Washington
Cty., 673 F.3d 864, 870 (9th Cir. 2011).

                             ANALYSIS

     In general, claims of trademark infringement under the
Lanham Act are governed by a likelihood-of-confusion test.
See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900
(9th Cir. 2002). When the allegedly infringing use is in the
title of an expressive work, however, we instead apply a test
developed by the Second Circuit in Rogers v. Grimaldi,
875 F.2d 994 (2d Cir. 1989), to determine whether the
Lanham Act applies. Mattel, 296 F.3d at 902.1 Like the
Second Circuit, we have identified two rationales for treating
expressive works differently from other covered works:
because (1) they implicate the First Amendment right of free
speech, which must be balanced against the public interest
in 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. See Rogers, 875 F.2d at 997‒1000; Mattel,
296 F.3d at 900, 902.

   Under the Rogers test, the title of an expressive work
does not violate the Lanham Act “unless the title has no

    1
      As we noted in Mattel, the Rogers test is a limiting construction of
the Lanham Act. 296 F.3d at 901 (quoting Rogers, 875 F.2d at 999).
The parties have offered no arguments in this appeal concerning the state
law claims and counterclaims in their pleadings, and we thus have no
occasion to address whether the Rogers test applies to any state laws.
6      TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.

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.” Mattel,
296 F.3d at 902 (internal quotation marks omitted) (quoting
Rogers, 875 F.2d at 999). We have extended this test from
titles to allegedly infringing uses within the body of an
expressive work. See E.S.S. Entm’t 2000, Inc. v. Rock Star
Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008).

    DOES THE ROGERS TEST APPLY TO FOX’S USE
            OF THE MARK “EMPIRE?”

    We must first determine whether the Rogers test applies
to Fox’s use of the mark “Empire.” We decide this legal
question de novo. See Brown v. Elec. Arts, Inc., 724 F.3d
1235, 1240–41 (9th Cir. 2013).

    Empire Distribution argues that at least some of Fox’s
uses of the mark “Empire” fall outside the title or body of an
expressive work, and therefore outside the scope of the
Rogers test. The Empire television show itself is clearly an
expressive work, see Charles v. City of Los Angeles,
697 F.3d 1146, 1151–52 (9th Cir. 2012), as are the
associated songs and albums, see Mattel, 296 F.3d at 902,
but Empire Distribution asserts that Fox’s use of the mark
“Empire” extends well beyond the titles and bodies of these
expressive works. Specifically, Empire Distribution points
to Fox’s use of the “Empire” mark “as an umbrella brand to
promote and sell music and other commercial products.”
These promotional activities under the “Empire” brand
include appearances by cast members in other media, radio
play, online advertising, live events, and the sale or licensing
of consumer goods.

    Although it is true that these promotional efforts
technically fall outside the title or body of an expressive
       TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.               7

work, 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, and we so
hold. Indeed, the Rogers case itself concerned both a movie
with an allegedly infringing title and its advertising and
promotion, although the majority opinion did not deal
separately with the latter aspect. See Rogers, 875 F.3d at
1005 (Griesa, J., concurring in the judgment). The balance
of First Amendment interests struck in Rogers and Mattel
could be destabilized if the titles of expressive works were
protected but could not be used to promote those works. In
response, Empire Distribution raises the specter of a
pretextual expressive work meant only to disguise a business
profiting from another’s trademark, but the record in this
case makes clear that the Empire show is no such thing.
Fox’s promotional activities, including those that generate
revenue, are auxiliary to the television show and music
releases, which lie at the heart of its “Empire” brand.

    Empire Distribution also claims that Fox’s uses of the
“Empire” mark fall within the Lanham Act due to a footnote
in Rogers, which stated that Rogers’ “limiting construction
would not apply to misleading titles that are confusingly
similar to other titles [because the] public interest in sparing
consumers this type of confusion outweighs the slight public
interest in permitting authors to use such titles.” 875 F.2d at
999 n.5. This footnote has been cited only once by an
appellate court since Rogers, in a case in which the Second
Circuit itself rejected its applicability and applied the Rogers
test. See Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g
Grp., Inc., 886 F.2d 490, 494‒95 (2d Cir. 1989). The
exception the footnote suggests may be ill-advised or
unnecessary: identifying “misleading titles that are
confusingly similar to other titles” has the potential to
duplicate either the likelihood-of-confusion test or the
8      TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.

second prong of Rogers, which asks whether a title
“explicitly misleads as to the source or the content of the
work.” Mattel, 296 F.3d at 902 (quoting Rogers, 875 F.2d
at 999). More importantly, it conflicts with our precedents,
which “dictate that we apply the Rogers test in [Lanham Act]
§ 43(a) cases involving expressive works.” Brown, 724 F.3d
at 1241‒42. We therefore examine Fox’s use of the
“Empire” mark under that test.

            APPLYING THE ROGERS TEST

                              I

    Under the two prongs of the Rogers test, “the Lanham
Act should not be applied to expressive works ‘unless the
[use of the trademark or other identifying material] has no
artistic relevance to the underlying work whatsoever, or, if it
has some artistic relevance, unless the [trademark or other
identifying material] explicitly misleads as to the source or
the content of the work.’” Brown, 724 F.3d at 1242
(alterations in original) (quoting Rogers, 875 F.2d at 999).
In addition to these two prongs, Empire Distribution argues
that the Rogers test incudes a threshold requirement that a
mark have attained a meaning beyond its source-identifying
function.

    What Empire Distribution identifies as a threshold
requirement is merely a consideration under the first prong
of the Rogers test. Trademark suits often arise when a brand
name enters common parlance and comes to signify
something more than the brand itself, but we apply the
Rogers test in other cases as well. In Mattel, we noted that
some trademarks, such as Rolls-Royce or Band-Aid, “enter
our public discourse and become an integral part of our
vocabulary.” 296 F.3d at 900. The ordinary likelihood-of-
confusion test provides insufficient protection against a
        TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.                      9

trademark owner’s ability to control public discourse in
these cases—but not only in these cases. Mattel focused on
these examples, in which “the mark (like Rolls Royce) has
taken on an expressive meaning apart from its source-
identifying function,” as part of a larger class of cases in
which “a trademark owner asserts a right to control how we
express ourselves.” Id. 2 In other words, the only threshold
requirement for the Rogers test is an attempt to apply the
Lanham Act to First Amendment expression.

     Of course, the cultural significance of a mark may often
be relevant to the first prong of the Rogers test. Trademarks
that “transcend their identifying purpose,” id., are more
likely to be used in artistically relevant ways. For example,
at issue in Mattel was a song titled “Barbie Girl,” which
poked fun at the shallow materialism identified with Mattel’s
trademarked Barbie brand of dolls. Id. at 899, 901. Barbie’s
status as a “cultural icon” helped explain the artistic
relevance of Mattel’s doll to the song. Id. at 898, 901‒02.
A mark that has no meaning beyond its source-identifying
function is more likely to be used in a way that has “no
artistic relevance to the underlying work whatsoever,” id. at
902 (quoting Rogers, 875 F.2d at 999), because the work
may be “merely borrow[ing] another’s property to get
attention,” id. at 901. See, e.g., Dr. Seuss Ents., L.P. v.
Penguin Books USA, Inc., 109 F.3d 1394, 1401 (9th Cir.
1997) (holding that an account of the O.J. Simpson murder
trial titled The Cat NOT in the Hat! borrowed Dr. Seuss’s

    2
      Empire Distribution’s argument for a threshold requirement is also
belied by the example given in Mattel of “a painting titled ‘Campbell’s
Chicken Noodle Soup,’” which would be analyzed under the Rogers test
if Campbell’s brought suit. Id. at 902. Although Campbell’s is an iconic
soup brand, its brand name has not attained a meaning beyond its source-
identifying function.
10     TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.

trademark and poetic style only “‘to get attention’ or maybe
even ‘to avoid the drudgery in working up something
fresh.’” (citation omitted)).

     In this case, 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. Because we
cannot say that Fox’s use of the “Empire” mark “has no
artistic relevance to the underlying work whatsoever,” the
first prong of the Rogers test is satisfied.

    Empire Distribution does not dispute that the title
“Empire” is relevant to Fox’s work in this sense, but it argues
that the first prong of the Rogers test includes a requirement
that the junior work refer to the senior work. In this case,
Empire Distribution argues that the Empire show fails the
test because its use of the word “Empire” does not refer to
Empire Distribution. This referential requirement does not
appear in the text of the Rogers test, and such a requirement
would be inconsistent with the purpose of the first prong of
Rogers.

     The first prong of Rogers distinguishes cases in which
the use of the mark has some artistic relation to the work
from cases in which the use of the mark is arbitrary. In these
latter cases, the First Amendment interest is diminished. The
bar is set low: “the level of relevance merely must be above
zero.” E.S.S. Entm’t, 547 F.3d at 1100. Empire Distribution
argues that cases like Parks v. LaFace Records, 329 F.3d
437 (6th Cir. 2003), show that this prong contains a
referential requirement. In Parks, the Sixth Circuit held that
a district court erred in concluding as a matter of law that the
title of the song “Rosa Parks” by the hip hop duo OutKast
was artistically relevant to the work. Id. at 452‒59. Despite
       TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.               11

the song’s use of the civil rights figure’s name, “[t]he
composers did not intend it to be about Rosa Parks, and the
lyrics are not about Rosa Parks.” Id. at 452. There was no
question, however, that the title did refer to Parks; no one
contended the name was a coincidence. The Sixth Circuit
suggested that OutKast had chosen an irrelevant title that
“unquestionably enhanced the song’s potential sale to the
consuming public.” Id. at 453. A reasonable person could
find that the song “Rosa Parks” failed the Rogers test not
because of a lack of relationship between the title “Rosa
Parks” and the person Rosa Parks, but because of the “highly
questionable” artistic relevance of the title “Rosa Parks” to
the song itself—the underlying work. Id. at 459.

     This is how a work fails the first prong of the Rogers test:
by bearing a title which has no artistic relevance to the work.
A title may have artistic relevance by linking the work to
another mark, as with “Barbie Girl,” or it may have artistic
relevance by supporting the themes and geographic setting
of the work, as with Empire. Reference to another work may
be a component of artistic relevance, but it is not a
prerequisite. Accordingly, the relevance of the word
“empire” to Fox’s expressive work is sufficient to satisfy the
first prong of the Rogers test.

                               II

     If the use of a mark is artistically relevant to the
underlying work, the Lanham Act does not apply “unless the
title explicitly misleads as to the source or the content of the
work.” Mattel, 296 F.3d at 902 (quoting Rogers, 875 F.2d
at 999) (internal quotation mark omitted).              Empire
Distribution argues that the “relevant inquiry . . . is whether
the defendant’s use of the mark would confuse consumers as
to the source, sponsorship or content of the work.” But this
test conflates the second prong of the Rogers test with the
12     TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.

general Sleekcraft likelihood-of-confusion test, which
applies outside the Rogers context of expressive works. See
Mattel, 296 F.3d at 900 (citing AMF, Inc. v. Sleekcraft Boats,
599 F.2d 341, 348‒49 (9th Cir. 1979)).

     To fail the second prong of the Rogers test, “[i]t is key
. . . that the creator must explicitly mislead consumers.”
Brown, 724 F.3d at 1245. We must ask not only about the
likelihood of consumer confusion but also “whether there
was an ‘explicit indication,’ ‘overt claim,’ or ‘explicit
misstatement’ that caused such consumer confusion.” Id.
(quoting Rogers, 875 F.2d at 1001). As “the use of a mark
alone is not enough to satisfy this prong of the Rogers test,”
id., 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.

         CLAIMED PROCEDURAL ERRORS

   Empire Distribution’s claims of procedural error are also
meritless.

    First, Empire Distribution argues that the district court
abused its discretion in denying its Rule 56(d) motion to
defer consideration of Fox’s summary judgment motion in
order to allow more time for discovery. The district court
denied the 56(d) motion as moot in its order granting
summary judgment, concluding that the requested additional
discovery was not “germane or relevant” to the First
Amendment issues (i.e., the Rogers test) which it found
dispositive. The subjects of further discovery that Empire
Distribution claims would have been relevant are “FOX’s
reason for selecting the ‘EMPIRE’ name, FOX’s prior
knowledge of EMPIRE’s trademarks . . . , and FOX’s
marketing strategy to mislead consumers.” None of these
facts is relevant to either prong of the Rogers test: they shed
       TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.              13

no light on the question of whether the word “Empire” is
artistically related to the show, and they cannot make the use
of that word explicitly misleading. As these facts are
irrelevant to the ground on which summary judgment was
granted, Empire Distribution’s request for further time to
discover them was correctly denied as moot.

    Second, Empire Distribution argues that the district court
improperly relied on disputed facts in granting summary
judgment. Although it identifies several disputed facts that
the district court allegedly resolved in favor of Fox, none of
these facts is material to the application of the Rogers test.
The application of the test comes out the same way whether
or not Empire Distribution has validly registered trademarks
to the “Empire” name and whether or not all of the songs
Fox released under the “Empire” brand were later collected
in compilation albums. The fact that the Empire show is a
“fictional” story was not a disputed fact, despite the evidence
that it was based partly on individuals and events from the
real world; fictional stories may take inspiration from reality.
Finally, the district court’s statement that the name “Empire”
“was not arbitrarily chosen to exploit Empire Distribution’s
fame” was a legal conclusion relevant to the first prong of
the Rogers test, not a statement of fact. Since Empire
Distribution cannot identify any disputed fact the district
court relied on that was material to its grant of summary
judgment, it has not shown error.

                      CONCLUSION

    For the foregoing reasons, the district court’s judgment
is affirmed. Appellant shall bear costs on appeal. Fed. R.
App. P. 39(a)(2).

   AFFIRMED.