Whose Empire Is It?

Now. This. Is. Funny. The subject matter is only tangentially related to music law, but I just could not, not share this story. Now I know everybody has watched at least one episode of Fox’s new hit series “Empire” featuring Terrence Howard and Taraji P. Henderson. The series, which is fictional in nature, is based on a music label (Empire) and the family that built it from the ground up. This show has been instrumental in showcasing music artists, both new and established, so much so that it even has its own music soundtrack (which I happen to own and kind of love, but that’s neither here nor there). After every episode airs, a featured artist or song on the show is downloaded by the masses within hours of the show. It seems to be a great platform for artists to get in on, making old artists relevant again and providing advertisement and publicity. But that’s not what this is about.

So, get this. There is a music label out there that goes by the name of Empire Distribution (“ED”). Heard of it? Anybody…anybody? Anyway, apparently they thought they had some pull. Earlier this year, ED sent a letter to Fox demanding that Fox pay them $5 million and feature some of their artists on the show or $8 million without, based on their belief that Fox was infringing their trademark by use of the Empire name for the music label and name of the show. ED also alleged trademark dilution based on the fact that the fictional label, “Empire”, is operated and run by a “homophobic drug dealer who is prone to murdering his friends”.

Fox responded to ED’s threats by going on the preemptive and filed a suit for declaratory judgment against ED, seeking verification from the court that it has every right to use the name Empire in connection with the show and label. Fox takes the position that ED, a fairly unknown label, despite its history with a few well-known artists, is attempting to use Empire’s platform to leverage its own success. Honestly, I can’t say that I blame them. At any rate, within the last few days, ED countered back with various claims of trademark infringement, unfair competition, and trademark dilution.

A small primer on trademark law, so the basis of the lawsuit makes sense: A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs that identifies and distinguishes the source of goods of one party from those of others. The crutch of a trademark infringement lawsuit is whether one party’s mark is so similar to another’s that it causes a “likelihood of confusion”. There’s only so many words and combinations available in the English language, so trademark law doesn’t grant exclusive use of a word or combination thereof to any one party, but it will deny use of the same words or combinations where the public is likely to be confused as to the origin of the goods. So while one could trademark the words “Empire Distribution” to represent a company that distributes paper goods, another company that deals in an industry that has absolutely nothing to do with paper goods (e.g. pizza dough), may possibly receive a registered trademark for the same mark because the public at large would not be confused by it. That is, someone who is in the pizza making business is not likely to be confused into thinking that the company who makes paper goods is also the same company who distributes the pizza dough she purchases. There’s definitely more to trademark law than presented here, as the court examines a variety of factors and considers market considerations and the like to determine the actual likelihood of confusion, but that’s pretty much the gist of it: where the public is likely to be confused, the mark is denied.

Applicably, both the marks at issue here make use of the word “Empire” and here they are both used to represent a music label and music recordings. The part that has me tickled, and maybe the part worthy of most note, is the fact that “Empire” as used on the show, is a fictional music label and does not really exist. Maybe ED was confused by the Empire soundtrack that was released and mistook them for a real label based on that alone, but as exciting and real as the show may be, it is, just that…a show. ED alleges in its counter-complaint that consumers have been confused and associate the Empire show with ED, stating that one of their artists posted the label’s Empire logo and a fan hash tagged “TeamCookie” beneath it. ED has even gone so far as to infer that Fox is shadowing ED artists and making appearances that piggyback off of ED’s artists’ appearances. Because Fox (a network that most people are aware of) and Empire (a show that the masses know almost as well as they know the network in which it airs) would need to do just that…use a label that almost no one knows exists to assist with its own exposure.

I don’t know though. ED may have a viable claim. With the popularity of reality television and the scripted reality television shows, we are entering a world of entertainment where it’s hard to separate fact from fiction and real life from reality tv. I mean Empire is the fictional label, but Fox is out here distributing albums based off the label’s show. And I don’t believe there are any hard and fast rules in trademark law that separate the line between what exists in the real life world versus what exists in the television world. Technically Empire (the show) is a brand, just as is Empire Distribution, and they are arguably in the same business. And the sophistication level of Empire consumers and ED may not rise to a level where a likelihood of confusion is unheard of. More importantly, the courts seem to be getting extremely crafty in their decision-making as it relates to the entertainment industry these days. After they decided that Marvin Gaye’s estate had a successful copyright infringement claim based on a “feeling”, the court just might decide the difference between fact and fiction is immaterial to the issue of trademark liability and after analyzing the various factors weighing toward or against the likelihood of confusion, they may find it to be more likely than not. Let’s hope not. I don’t think I can continue to support the show if they change their name…

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