by Michael Lovitz
Usually, when Hollywood has a hit, the studio that produced the hit finds itself fighting off claims of copyright infringement or idea theft. But in the case of Fox’s newest hit show, EMPIRE, it’s a trademark claim that’s first to come to the fore.
As we’re now learning from a complaint filed on March 23, 2015 (Case 2:15-cv-02158) in the Central District of California, a California company called Empire Distribution sent a demand letter to Fox on February 16, 2015, claiming that Fox’s television show had infringed the company’s trademarks; that use of the word “Empire” was likely to confuse the company’s customers, artists, and business partners as to whether the series and its music are affiliated with the company; and further that such use constituted dilution by tarnishment, resulting from the portrayal of the show’s record label head as “a homophobic drug dealer prone to murdering his friends.”
In a follow-up telephone discussion, Empire Distribution demanded through its counsel a payment of $8 million in order to resolve its claims against Fox, and in a second claim letter, provided three options for settling the claims: (1) Fox pay $5 million and include Empire Distribution’s artists as regular guest stars on the series; (2) Fox pay Empire Distribution $8 million; or (3) Fox stop using the word “Empire.”
In response to these claims and demands, Fox brought the March 23rd action against Empire Distribution in the Central District of California. In its complaint for declaratory relief, Fox notes that defendant Empire Distribution was not formed until 2011; that Empire Distribution has not registered its alleged trademarks; and that the two applications Empire Distribution filed in January 2014 have initially been refused by the USPTO. Fox goes on to allege that “empire” is a common word in trademark, including in the music and entertainment fields, identifying in California alone companies such as Empire Recordings LLC, Dark Empire Recordings LLC, Empire Entertainment, Inc., and Empire Media Center, and noting there is even a film titled Empire Records. Fox further alleges that the defendant’s trademark is not famous, given that on a recent Google search for “empire record label,” the company’s website doesn’t appear until the seventh page, and a second search for “Empire Distribution Inc.” listed defendant’s website as the fifth result, with none of the first four references referring to defendant. Fox has requested relief from the court in the form of a judgment declaring that its use of the word “Empire” as the title of its fictional TV series does not (a) infringe the defendant’s trademark rights, (b) tarnish or otherwise dilute the defendant’s trademarks, and (c) does not violate any applicable common law or statutory unfair competition law.
Michael Lovitz is a partner at Lovitz IP Law, where he practices all aspects of intellectual property law, including copyright, trademark, unfair competition, trade secrets, portfolio management, and licensing and transactional matters.