Petition for Writ of Certiorari — Empire Distribution Inc., Petitioner v. Twentieth Century Fox Television, et al.
Supreme Court briefApr 2, 2018
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No. 17-____
IN THE
Supreme Court of the United States
EMPIRE DISTRIBUTION INC.,
Petitioner,
v.
TWENTIETH CENTURY FOX TELEVISION AND
FOX BROADCASTING COMPANY,
Respondents.
On Petition for a Writ of Certiorari to
the United States Court of Appeals
for the Ninth Circuit
PETITION FOR A WRIT OF CERTIORARI
KATHLEEN M. SULLIVAN
Counsel of Record
TODD ANTEN
CORY D. STRUBLE
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue,
22nd Floor
New York, NY 10010
(212) 849-7000
kathleensullivan@
quinnemanuel.com
Counsel for Petitioner
April 2, 2018
i
QUESTION PRESENTED
Section 43(a) of the Lanham Act, 15 U.S.C.
1125(a)(1)(A), recognizes a cause of action for use of
another’s trademark that “is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person
with another person, or as to the origin, sponsorship,
or approval of his or her goods, services, or commercial activities by another person.” The Ninth Circuit
held below, however, that the Lanham Act does not
apply at all to the use of another’s trademark in an
“expressive work” or its “promotion,” no matter how
much confusion is likely to occur in the marketplace.
The question presented is:
Does an implied “expressive work”
exception to the Lanham Act, 15 U.S.C.
1125(a)(1)(A), excuse the use of another’s
trademark, including on directly competing
goods and services, without regard to the
likelihood of confusion among consumers?
ii
RULE 29.6 STATEMENT
Empire Distribution Inc. has no parent corporation, and no publicly held company owns 10% or
more of its stock.
iii
TABLE OF CONTENTS
Page
QUESTION PRESENTED........................................... i
RULE 29.6 STATEMENT ...........................................ii
TABLE OF AUTHORITIES........................................ v
INTRODUCTION ........................................................ 1
OPINIONS BELOW .................................................... 3
JURISDICTION .......................................................... 4
CONSTITUTIONAL AND STATUTORY
PROVISIONS INVOLVED ................................. 4
STATEMENT OF THE CASE .................................... 5
REASONS FOR GRANTING THE WRIT ................ 12
I.
II.
REVIEW IS WARRANTED BECAUSE
THE DECISION BELOW CONFLICTS
WITH THE LANHAM ACT AND
DEEPENS A SPLIT AMONG THE
COURTS OF APPEALS .................................... 12
A.
The Decision Below Conflicts With
The Text And Purpose Of Section
43(a) Of The Lanham Act ......................... 13
B.
The Decision Below Conflicts With
The Decisions Of Other Circuits............... 17
THE QUESTION PRESENTED IS
EXCEPTIONALLY IMPORTANT TO A
HOST OF CREATIVE INDUSTRIES .............. 23
CONCLUSION .......................................................... 31
iv
APPENDIX A – Ninth Circuit Opinion
(November 16, 2017) ..................... 1a
APPENDIX B – District Court Opinion
(February 1, 2016) ....................... 15a
APPENDIX C – District Court Opinion on
Reconsideration
(March 28, 2016) ......................... 31a
APPENDIX D – Ninth Circuit Opinion on Panel
Rehearing and Rehearing En Banc
(January 2, 2018) ........................ 41a
v
TABLE OF AUTHORITIES
Page
Cases
AMF Inc. v. Sleekcraft Boats,
599 F.2d 341 (9th Cir. 1979) ................ 6, 12, 15, 22
Anheuser-Busch, Inc. v. Balducci Publ’ns,
28 F.3d 769 (8th Cir. 1994) .................................. 21
Brown v. Elec. Arts, Inc.,
724 F.3d 1235 (9th Cir. 2013) .............................. 22
Bruesewitz v. Wyeth LLC,
562 U.S. 223 (2011) .............................................. 16
Cardtoons, L.C. v. Major League Baseball
Players Ass’n,
95 F.3d 959 (10th Cir. 1996) ................................ 21
Cliffs Notes, Inc. v. Bantam Doubleday Dell
Publ’g Grp., Inc.,
886 F.2d 490 (2d Cir. 1989) ................................. 20
Facenda v. NFL Films, Inc.,
542 F.3d 1007 (3d Cir. 2008) ............................... 15
Harley-Davidson, Inc. v. Grottanelli,
164 F.3d 806, 812-813 (2d Cir. 1999) .................. 23
KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc.,
543 U.S. 111 (2004) ........................................ 16, 17
Mattel, Inc. v. MCA Records, Inc.,
296 F.3d 894 (9th Cir. 2002) .................... 11, 22, 30
Mutual of Omaha Ins. Co. v. Novak,
836 F.2d 397 (8th Cir. 1987) ................................ 21
Nike, Inc. v. “Just Did It” Enters.,
6 F.3d 1225 (7th Cir. 1993) .................................. 21
vi
Park ’N Fly, Inc. v. Dollar Park & Fly, Inc.,
469 U.S. 189 (1985) ................................................5
Parks v. LaFace Records,
329 F.3d 437 (6th Cir. 2003) ................................ 14
Polaroid Corp v. Polarad Elecs. Corp.,
287 F.2d 492 (2d Cir. 1961) ....................... 6, 19, 20
Qualitex Co. v. Jacobson Prods. Co.,
514 U.S. 159 (1995) ................................................5
Radiance Found., Inc. v. N.A.A.C.P.,
786 F.3d 316 (4th Cir. 2015) .............................. 5, 6
Rogers v. Grimaldi,
875 F.2d 994 (2d Cir. 1989) ......................... passim
Sugar Busters LLC v. Brennan,
177 F.3d 258 (5th Cir. 1999) ................................ 20
Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd.,
996 F.2d 1366 (2d Cir. 1993) ................... 18, 19, 20
Westchester Media v. PRL USA Holdings, Inc.,
214 F.3d 658 (5th Cir. 2000) ................................ 20
Statutes
15 U.S.C. 1052(d).........................................................6
15 U.S.C. 1115(b)(4) .................................................. 16
15 U.S.C. 1125(a)(1) ....................................................4
15 U.S.C. 1125(a)(1)(A) ........................ 1, 6, 12, 13, 14
15 U.S.C. 1125(c)(3) ................................................... 16
15 U.S.C. 1127 .............................................................5
28 U.S.C. 1254(1).........................................................4
vii
Other Authorities
@americancrimestoryfx, INSTAGRAM
(Dec. 5, 2017) ........................................................24
BuzzAngle Music 2017 U.S. Report: A report
on 2017 U.S. Music Industry Consumption,
BUZZANGLE MUSIC (Jan. 3, 2018) ..........................8
Kenneth A. Matuszewski, Casting Out Confusion:
How Exclusive Appellate Jurisdiction in the
Federal Circuit Would Clarify Trademark
Law, 18 W. MICH. U. COOLEY J. PRAC. &
CLINICAL L. 31 (2016) ........................................... 30
J. Thomas McCarthy,
MCCARTHY ON TRADEMARKS & UNFAIR
COMPETITION (5th ed. 2018 update)
§ 10:17.10.............................................................. 14
§ 23.1 ......................................................................6
Ogden Payne, Empire: The Distribution Company
That Turned Music Streaming Pennies Into
Profit, FORBES (Sept. 26, 2016)........................ 8, 27
Sarah Perez, On-demand Streaming Now Accounts
for the Majority of Audio Consumption, says
Nielsen, TECH CRUNCH (Jan. 4, 2018) ................. 27
RESTATEMENT (THIRD) OF UNFAIR COMPETITION
(1995)
§ 20 cmt. d ..............................................................6
Trademark Reg. No. 2,121,984
(VERSACE) (registered Dec. 16, 1997) ............... 24
Trademark Reg. No. 3,928,818
(APPLE) (registered Mar. 8, 2011)...................... 25
Trademark Reg. No. 4,264,800
(CAPITOL) (registered Dec. 25, 2012) ................ 26
1
INTRODUCTION
Section 43(a) of the Lanham Act prohibits use of
another’s trademark that is “likely to cause
confusion” among the public. 15 U.S.C. 1125(a)(1)(A).
But the Ninth Circuit held below that petitioner
Empire Distribution Inc., a producer and distributor
of hip hop, R&B and rap music, could not protect its
trademark EMPIRE against respondent Fox entities’
use of an identical EMPIRE mark on a television
show called “Empire”—about a fictionalized hip hop,
R&B and rap record label called “Empire”—or
against Fox’s “promotion” of the show through
musical recordings, concerts and merchandise
labeled “Empire.” In the Ninth Circuit’s view, all of
Fox’s uses of petitioner’s EMPIRE mark—no matter
how confusing and no matter if directed at the sale of
competing goods and services—are protected by a socalled “expressive work” exception to section 43(a) of
the Lanham Act.
The Ninth Circuit’s categorical “expressive work”
exception warrants review because it conflicts with
the text and purpose of the Lanham Act as well as
the law of other circuits, and because it will have
intolerable practical consequences. Under the Ninth
Circuit’s decision, a television show called “Gianni
Versace” fictionalizing the life of the late fashion
designer could be used to market a “promotional”
line of high-fashion clothing using the VERSACE
mark, in direct competition with the Versace fashion
label. A television show called “Barbie Girl” about a
fictionalized doll character could be used to market a
“promotional” line of dolls using the BARBIE trademark, in direct competition with the Mattel toy
brand. And a television show called “Apple” about a
2
high-technology company could be used to market
tablets and smartphones labeled APPLE, in direct
competition with the Apple brand.
Nothing in the First Amendment requires that
the Lanham Act be construed to afford trademark
infringers such expressive latitude. The decision
below and the Ninth Circuit precedents on which it
relied cite the Second Circuit’s influential decision in
Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). But
Rogers was not a trademark case and did not create
a categorical “expressive work” exception—especially
not for directly competing products sold in the same
channels of commerce. That decision held merely
that legendary film star and dancer Ginger Rogers
could not, on grounds of deceptive association under
section 43(a), stop a filmmaker from using the title
“Fred and Ginger” for a film about two dancers far
more hapless than Rogers and Astaire. It deemed
such use permissible where the name has some
artistic relevance and does not “explicitly mislead”
consumers. But the Second Circuit did not abandon
the ultimate Lanham Act touchstone of likelihood of
confusion for trademark infringement, as postRogers decisions of the Second Circuit make clear.
The decision below thus conflicts with the Second
Circuit law it purports to follow (and the law of other
circuits) as to whether likelihood-of-confusion analysis always applies in Lanham Act claims, even to
uses of trademarks in or in connection with “expressive works.” The Court’s review is warranted to dispel this conflict and clarify how to properly balance
First Amendment concerns with the Lanham Act’s
goal to prevent consumer confusion in the use of
trademarks.
3
The decision below created an additional conflict
with the Lanham Act by holding that use of
another’s trademark in the title or body of an expressive work opens the door to subsequent uses on any
goods or services that can be characterized as
“promoting” the expressive work—even goods and
services that directly compete with and create source
confusion with the trademark holder’s own business.
The court called this “only a minor logical extension
of the reasoning of Rogers,” but it is in fact a
quantum leap that no other court of appeals has
taken. Rogers itself gave the Second Circuit no occasion to consider such “promotional” activities, for it
was not a trademark case and the filmmaker there
was not attempting to sell, say, competing FRED
AND GINGER footwear. Thus, the Ninth Circuit’s
unprecedented extension of its own “expressive
work” exception, far from merely “exten[ding]”
Rogers, invites the abuse of “artistic license” to
exploit the consumer goodwill and brand equity built
by another.
The decision warrants review, finally, because the
question presented has exceptional importance to a
host of creative industries, including film, television,
music and high technology. These industries are
heavily concentrated within the geographical boundaries of the Ninth Circuit, and are thus subject to
outsized effects from that court’s incorrect interpretation of the Lanham Act. The petition should be
granted.
OPINIONS BELOW
The opinion of the U.S. Court of Appeals for the
Ninth Circuit is reported at 875 F.3d 1192 and is
4
reproduced at App. 1a-14a. The Ninth Circuit’s
order denying panel and en banc rehearing is reproduced at App. 41a-42a. The district court’s opinion is
available at 161 F. Supp. 3d 902 and is reproduced at
App. 15a-30a. The district court’s opinion denying
reconsideration is available at 2016 WL 3092156 and
is reproduced at App. 31a-40a.
JURISDICTION
The court of appeals denied panel and en banc
rehearing on January 2, 2018. App. 41a. This Court
has jurisdiction under 28 U.S.C. 1254(1).
CONSTITUTIONAL AND STATUTORY
PROVISIONS INVOLVED
U.S. Constitution, amend. I states:
Congress shall make no law respecting an
establishment of religion, or prohibiting the
free exercise thereof; or abridging the freedom of speech, or of the press; or the right
of the people peaceably to assemble, and to
petition the government for a redress of
grievances.
Section 43(a) of the Lanham Act, 15 U.S.C.
1125(a)(1), states in relevant part:
Any person who, on or in connection with
any goods or services, or any container for
goods, uses in commerce any word, term,
name, symbol, or device, or any combination thereof, or any false designation of
origin, false or misleading description of
fact, or false or misleading representation
of fact, which—
5
(A) is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation, connection, or association of such
person with another person, or as to
the origin, sponsorship, or approval of
his or her goods, services, or commercial activities by another person,
* * *
shall be liable in a civil action by any
person who believes that he or she is or is
likely to be damaged by such act.
STATEMENT OF THE CASE
1. In enacting the Lanham Act in 1946, Congress
intended to make “actionable the deceptive and
misleading use of marks” in commerce and “to
prevent fraud and deception in such commerce by the
use of reproductions, copies, counterfeits, or colorable
imitations of registered marks.” 15 U.S.C. 1127. As
one court of appeals has observed, the Act’s “provisions prohibiting trademark infringement … exist to
protect consumers from confusion in the marketplace.” Radiance Found., Inc. v. N.A.A.C.P., 786
F.3d 316, 321 (4th Cir. 2015) (citing Qualitex Co. v.
Jacobson Prods. Co., 514 U.S. 159, 162-164 (1995));
see also Park ’N Fly, Inc. v. Dollar Park & Fly, Inc.,
469 U.S. 189, 198 (1985) (“The Lanham Act provides
national protection of trademarks in order to secure
to the owner of the mark the goodwill of his business
and to protect the ability of consumers to distinguish
among competing producers.”). These protections
allow mark holders “to build and benefit from the
reputation of their brands” while enabling consumers
to “rely on the marks to make purchasing decisions.”
6
Radiance Found., 786 F.3d at 321. To that end, the
Act creates a cause of action against the use of a
mark that is, inter alia, “likely to cause confusion, or
to cause mistake, or to deceive.”
15 U.S.C.
1125(a)(1)(A). Further, under the Act, the Patent
and Trademark Office will not approve an application for trademark registration where the mark is
likely to cause confusion with a previously registered
mark. Id. § 1052(d).
2. “The term ‘likelihood of confusion’ has long
been used to describe the standard of liability for
trademark infringement in actions at common law
and under federal and state trademark and unfair
competition statutes.” RESTATEMENT (THIRD) OF UNFAIR COMPETITION, § 20 cmt. d (1995).
Federal courts “have developed a multi-factor test
to assist in the difficult determination” of whether
there is a likelihood of confusion, although the “test
used is not identical throughout the various federal
circuits.” 4 J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS & UNFAIR COMPETITION § 23:1 (5th ed.
2018 update) (“McCarthy”). The Ninth Circuit, for
example, applies factors articulated in AMF Inc. v.
Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979),
including: (1) the strength of the mark; (2) proximity
of the goods; (3) similarity of the marks; (4) evidence
of actual confusion; (5) marketing channels used;
(6) type of goods and the degree of care likely to be
exercised by the purchaser; (7) defendant’s intent in
selecting the mark; and (8) likelihood of expansion of
the product lines. See also, e.g., Polaroid Corp v.
Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961)
(similar eight-factor test).
7
3. Empire Distribution Inc. (“Empire”),1 founded
in 2010, “is a well-known and respected record label”
and music distribution company that produces and
markets music—primarily urban, hip hop, rap and
R&B music—under its trademark EMPIRE. App. 4a,
17a. As of January 2016, Empire had released over
11,000 albums and singles, 6,000 music videos, and
85,000 songs, including multiple gold and platinum
singles and albums, primarily in the genres of hip
hop, rap and R&B music. App. 17a. Empire, which
has received 12 Grammy nominations in the last two
years, has worked with many famous artists, including T.I., Snoop Dogg, Kendrick Lamar, Trinidad
James, Too $hort, The Game, Mally Mall, Rich
Homie Quan, Tyga, Shaggy, Busta Rhymes, Fat Joe,
Sage the Gemini, Cam’ron, Jim Jones, Rocko, Gladys
Knight, and Rae Sremmurd, App. 17a, as well as,
most recently, Puff Daddy and 50 Cent. Empire,
which has now earned over $200 million in revenue,
has spent many millions of dollars to advertise and
promote its brand, using its EMPIRE mark to promote its performances and products. See Excerpts of
Record, No. 16-55577 (9th Cir.), ECF No. 13, at 501507 (“ER”).
Empire also uses the handle
“@EMPIRE” and hashtag “#EMPIRE” on popular
social networks such as Facebook, Twitter,
Instagram, SoundCloud and more, allowing it to
connect online with fans of music, pop culture and
entertainment. ER 508-510, 682-683. Forbes has
For clarity, this petition uses “Empire” to refer to
petitioner and “EMPIRE” to refer to its trademark, even
though petitioner in its business refers to both the
company and its trademark as “EMPIRE.”
1
8
lauded Empire for its innovation in the digital music
marketplace, and for leading the way for the digital
distribution of music.2
In January 2015, Fox premiered a television show
titled “Empire,” which portrays a fictionalized hip
hop, rap and R&B music label named “Empire
Enterprises,” referred to as “Empire.” App. 4a, 16a.
Through an agreement with Columbia Records, Fox
markets and sells music featured on the show after
each episode airs, as well as albums at the end of
each season, through the same online distribution
channels that Empire uses to market and sell its
music. App. 4a; ER 526-531. As part of this business, and like Empire, Fox scouts and signs recording artists and participates in the production and
distribution of music performed by its recording
artists. App. 16a-17a; ER 481-489. Fox uses the
name “Empire” prominently in its marketing and
product packaging for this music. App. 6a-7a; ER
523-530. In addition, Fox has sold “consumer goods
such as shirts and champagne glasses bearing the
show’s ‘Empire’ brand.” App. 4a, 7a. And, like
Empire, Fox uses the hashtag “#EMPIRE” in
See Ogden Payne, Empire: The Distribution Company
That Turned Music Streaming Pennies Into Profit,
FORBES (Sept. 26, 2016), https://tinyurl.com/yd88pbx2;
BuzzAngle Music 2017 U.S. Report: A report on 2017 U.S.
Music Industry Consumption, BUZZANGLE MUSIC 98, 102
(Jan. 3, 2018), https://tinyurl.com/y8e2lxse (Empire
among top ten overall music distributors and top three
independent distributors in 2017 based on total
consumption).
2
9
marketing its “Empire” show, music and products on
social media. ER 525-526.
4. In March 2015, after Empire sent Fox a claim
letter, Fox sued Empire seeking a declaratory judgment that Fox’s use of “Empire” on television and in
music releases does not violate Empire’s trademark
rights. App. 4a. Empire counterclaimed for trademark infringement, trademark dilution, unfair competition, and false advertising under the Lanham Act
and California law. App. 4a.
The record developed in discovery is replete with
evidence that Fox’s use of Empire’s EMPIRE mark is
likely to create significant confusion in the marketplace. By the time Fox launched its show, Empire
had used its mark continuously for many years,
spending millions of dollars to advertise and promote
its brand in commerce through national digital and
traditional advertising campaigns, such that the
mark had come to be known as a symbol of innovation and quality in music, and a source identifier to
buyers of music and entertainment. See, e.g., ER
499-516. Fox’s use of the EMPIRE mark in the title
and body of its television show and on associated
musical releases, CDs, and music videos (as well as
on a host of other marketing-related products including t-shirts, jackets, mugs, and other apparel and
accessories) is virtually identical to Empire’s use of
its EMPIRE mark on its own advertisement, promotion, packaging, and sale of musical releases (as well
as on its own marketing-related merchandise such as
shirts, hoodies, hats, cups, pens, lighters, towels and
cell phone accessories). App. 4a, 16a-17a; see also
ER 507, 523-532 (detailing Fox’s extensive use of the
10
EMPIRE mark, including to promote artists on
digital platforms), 1047-1050 (testimony from Fox).
Further, the record contains evidence of actual
confusion among both consumers and recording
artists as to whether Empire is associated with the
“Empire” television series—a show about a record
label named “Empire” that produces and distributes
the same kind of music as Empire—and with music
sold under the EMPIRE brand.
ER 531-535.
Compounding the problem, Fox and Empire use
identical channels of trade to market the same
products, including physical record stores and online
music platforms such as iTunes, Google Play,
Amazon, and Spotify as well as radio and online
social media, placing their competing goods in close
proximity. ER 523-531.
5. On summary judgment, the district court
ruled in favor of Fox and dismissed all of Empire’s
counterclaims. App. 29a. Specifically, applying the
two Rogers factors, the court found that Fox uses the
title “Empire” in an expressive work in a way that is
“relevant to the Empire series” and does not do so “in
an explicitly misleading way.” App. 29a. The court
thus concluded that “Fox’s use of ‘Empire’ is
protected by the First Amendment.” App. 29a. The
court reached this outcome—even though “the use
has caused consumer confusion”—because “[e]ven in
situations where there is widespread consumer
confusion, the Ninth Circuit has struck the balance
in favor of protecting First Amendment expression,”
and thus the court declined to “reach the issue of
consumer confusion.”
App. 20a, 28a-29a.
The
district court denied Empire’s motion for reconsideration. App. 40a.
11
6. The Ninth Circuit affirmed. That court held
that both Fox’s “Empire” show and the songs and
albums Fox sold using the “Empire” brand are
expressive works subject to the Rogers test under
prior Ninth Circuit law. App. 8a-12a. The court
further reasoned that, while Fox’s uses of “Empire”
to market and sell music and other products
“technically fall outside the title or body of an
expressive 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.” App. 7a. The court was unconcerned that its holding allows a defendant’s marketing activities to serve as a pretext for trading on
another’s goodwill, insisting that, in this case, “Fox’s
promotional activities, including those that generate
revenue, are auxiliary to the television show and
music releases.” App. 7a.
Having found that all of Fox’s uses met the two
Rogers factors, the Ninth Circuit declined to assess
Fox’s use of EMPIRE for any likelihood of consumer
confusion, holding that such a test plays no role:
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, Inc. v. MCA Records,
Inc., 296 F.3d 894, 902 (9th Cir. 2002)]
(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
12
this test conflates the second prong of the
Rogers test with the general Sleekcraft
likelihood-of-confusion test, which applies
outside the Rogers context of expressive
works.
App. 12a. The court concluded that Fox’s use of
EMPIRE was not explicitly misleading because it did
not “contain[] [any] overt claims or explicit references to Empire Distribution”—notwithstanding that
the parties’ competing uses of EMPIRE, and not
“Empire Distribution,” were at issue. App. 12a. The
court also held that its analysis resolved Empire’s
other Lanham Act claims for trademark dilution,
false advertising and unfair competition. App. 4a-5a.
The court of appeals denied Empire’s petition for
panel and en banc rehearing. App. 42a.
REASONS FOR GRANTING THE WRIT
I.
REVIEW IS WARRANTED BECAUSE
THE DECISION BELOW CONFLICTS
WITH THE LANHAM ACT AND DEEPENS A SPLIT AMONG THE COURTS OF
APPEALS
The decision below cannot be reconciled with the
text of section 43(a) of the Lanham Act, which
creates a cause of action for use of another’s trademark that “is likely to cause confusion.” 15 U.S.C.
1125(a)(1)(A).
Moreover, it deepens an existing
circuit split regarding whether the Lanham Act’s
core concern with likelihood of confusion applies at
all to the use of another’s mark in an “expressive
work.” This Court’s intervention is needed to dispel
this conflict.
13
A.
The Decision Below Conflicts With
The Text And Purpose Of Section
43(a) Of The Lanham Act
Section 43(a) of the Lanham Act makes actionable
any use of a mark in commerce that is “likely to
cause confusion.” 15 U.S.C. 1125(a)(1)(A). Thus,
pursuant to the plain text of the statute, the lower
courts must undertake a likelihood-of-confusion
analysis to determine whether the conduct at issue is
actionably infringing and thus violates the Act.
Despite noting that “the only threshold requirement for the Rogers test is an attempt to apply the
Lanham Act to First Amendment expression,” the
Ninth Circuit did not “attempt” to apply the Lanham
Act at all. App. 9a. To the contrary, the court held
that the use of a mark in the title or body of an
expressive work renders the Lanham Act
inapplicable. See App. 5a. (“In general, claims of
trademark infringement under the Lanham Act are
governed by a likelihood-of-confusion test”; when the
use “is in the title of an expressive work, however, we
instead apply” Rogers) (emphasis added). Accordingly, the Ninth Circuit did not conduct any
likelihood-of-confusion analysis, instead limiting its
inquiry to “the Rogers test,” which it interpreted to
hold that use of another’s mark as part of the title or
body of an expressive work “does not violate the
Lanham Act” unless the use lacks any artistic
relevance or is “explicitly mislead[ing].” App. 6a.
This holding conflicts with the plain text of the
statute. Section 43(a) contains no exception for the
use of a mark in “expressive works” unless the use is
artistically irrelevant or “explicitly misleading”;
rather, it asks whether a use is “likely to cause
14
confusion.” 15 U.S.C. 1125(a)(1)(A). While Rogers
provides guidance as to the competing values that
courts should consider, it does not supersede the
statute’s text by entirely removing consideration of
likely confusion. As the leading treatise explains:
Application of the Rogers balancing test is
just that: a balancing of competing
interests. It does not mean that a junior
user producer of an expressive work can
ignore a senior user and create probable
confusion just because the title has some
“artistic relevance” to the accused expressive work and the junior user does not
falsely assert that there is an affiliation. …
The Rogers test does not mean that the
producer of an expressive work gets a free
pass to confuse the public.
2 McCarthy § 10:17.10; cf. Parks v. LaFace Records,
329 F.3d 437, 447 (6th Cir. 2003) (“the First
Amendment cannot permit anyone who cries ‘artist’
to have carte blanche when it comes to naming and
advertising his or her works, art though it may be”).
The Ninth Circuit’s own reinterpretation of the
Rogers test, in contrast, departs from the Lanham
Act’s statutory language by effectively immunizing
all uses of a mark in relation to an expressive work
from trademark infringement at the threshold,
without inquiry into likelihood of confusion. The
Ninth Circuit’s test thus allows second comers to use
a mark in a manner that is “likely to cause
confusion,” as long as that use has minimal artistic
relevance and is not “explicitly misleading.” The
decision below, for example, holds inapplicable to an
“expressive work” any consideration of the degree to
15
which the plaintiff’s and the defendant’s goods will
compete (in the language of Sleekcraft, 599 F.2d at
348, the “proximity” of the goods), a factor that often
increases the likelihood of consumer confusion as to
source. Under the Ninth Circuit’s approach, a junior
user in the “expressive work” context is free to cause
as much confusion in the marketplace as it likes, as
long as the use is not “explicitly misleading” as to
source. See App. 12a (“explicitly misleading” requires “overt claims” about or “explicit reference” to
petitioner.). The Ninth Circuit’s purported application of Rogers, therefore, cannot be reconciled with
the text of the Lanham Act.
The Ninth Circuit compounded this problem by
extending its interpretation of Rogers to Fox’s separate commercial activities “promoting” its “Empire”
television show through the creation and distribution
of merchandise, including directly competing musical
performances and releases under the brand
“EMPIRE.” The Ninth Circuit failed to note that
these are uses of the EMPIRE mark separate from
the television show that are independently likely to
cause significant, widespread confusion.3 The deciMoreover, the Ninth Circuit took no account of the
lesser First Amendment protection that may attach to
marketing and promotional activities that, unlike the
expressive work itself, are commercial in nature. See,
e.g., Facenda v. NFL Films, Inc., 542 F.3d 1007, 1018 (3d
Cir. 2008) (describing as “commercial speech rather than
artistic expression” the NFL’s use of a narrator’s voice
without authorization in the film “The Making of Madden
NFL 06,” a film made about the creation of a video game
for the purpose of promoting and selling the video game).
3
16
sion below thus presents an additional conflict with
the text and purpose of section 43(a) of the Lanham
Act by construing it to contain not only an
“expressive works” exception, but also an expressive
“marketing” exception.
The expansion of such a judicially created exception for “expressive works” is particularly dubious in
light of the fact that, where Congress wished to
create “expressive” exceptions to the Lanham Act, it
said so. For example, 15 U.S.C. 1125(c), which addresses trademark dilution in the very same section
as trademark infringement, contains express “exclusions” for “[a]ny fair use” other than as a designation
of source, including for “identifying and parodying,
criticizing, or commenting upon” a famous mark or
for comparative advertising; “[a]ll forms of news
reporting and news commentary”; and “[a]ny noncommercial use of a mark.” 15 U.S.C. 1125(c)(3)(A)(C); see also KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc., 543 U.S. 111, 114 (2004) (recognizing that 15 U.S.C. 1115(b)(4) provides a “statutory
affirmative defense of fair use”). In light of such explicit exemptions, Congress’s comparative silence on
an exception for “expressive works” and their supposed “promotional” penumbras may be presumed to
have been intentional. See, e.g., Bruesewitz v. Wyeth
LLC, 562 U.S. 223, 232-233 (2011) (applying canon of
expressio unius, exclusio alterius where statute
addressed certain grounds and was silent on others).
Thus, the court of appeals disregarded the
statutory language of section 43(a) of the Lanham
Act by declining even to consider the likelihood of
consumer confusion resulting from Fox’s use of
Empire’s EMPIRE mark.
17
B.
The Decision Below Conflicts With
The Decisions Of Other Circuits
The decision below also warrants review because
it furthers an already-existing circuit split. In particular, while the Second and Fifth Circuits treat
First Amendment considerations as an aspect of the
requisite likelihood-of-confusion analysis, the Ninth
Circuit treats “expressive” use as obviating any application of the Lanham Act’s likelihood-of-confusion
analysis at all. The decision below is also in tension
on this score with decisions of the Seventh and
Eighth Circuits. This Court’s intervention is warranted to dispel these conflicts.
1. The Second and Fifth Circuits hold that, in
evaluating whether an “expressive” work’s use of
another’s trademark is infringing, a court still must
consider whether the use is “likely to cause confusion,” even if the likelihood of confusion must be particularly compelling to account for potential First
Amendment concerns.4
In Rogers, 875 F.2d 994, a false advertising action
in which Ginger Rogers sued a filmmaker over the
title of the film “Fred and Ginger,” the Second
Circuit reasoned that the Lanham Act “should be
This is consistent with this Court’s prior approach to
assessing likelihood of confusion. In KP Permanent MakeUp, for example, the Court recognized, in assessing a
statutory fair use defense, that “some possibility of
consumer confusion must be compatible with fair use.”
543 U.S. at 121. But such an approach requires at least
some consideration of the possibility of, and extent of,
consumer confusion.
4
18
construed to apply to artistic works only where the
public interest in avoiding consumer confusion
outweighs the public interest in free expression.” Id.
at 999. The court concluded that this “balance will
normally not support application of the Act unless
the title 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.” Id. (emphasis added). That
being said, the court noted that “[t]he purchaser of a
book, like the purchaser of a can of peas, has a right
not to be misled as to the source of the product.” Id.
at 997.5
Later Second Circuit decisions confirm that the
Rogers factors are interpreted in that court as, at
most, a rule of thumb or presumption in favor of use
of trademarks in expressive works, and not the
source of a rigid rule or blanket immunity for such
use without regard to likelihood of confusion. In
Twin Peaks Productions, Inc. v. Publications
International, Ltd., 996 F.2d 1366, 1370 (2d Cir.
1993), for example, the plaintiff—the owner of the
trademark TWIN PEAKS in connection with the
television series of the same name—alleged that the
title of the defendant’s book, Welcome to Twin Peaks:
A Complete Guide to Who’s Who and What’s What,
was infringing. Using Rogers as a guide, the Second
Rogers also contains a footnote explaining that its test
“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.
5
19
Circuit accepted that the title had “some artistic
relevance” and proceeded to determine “whether the
title is misleading in the sense that it induces
members of the public to believe the Book was
prepared or otherwise authored by” the plaintiff. Id.
at 1379. To assess this, the Second Circuit ruled:
This determination must be made, in the
first instance, by application of the venerable Polaroid factors. However, the finding
of likelihood of confusion must be particularly compelling to outweigh the First
Amendment interest recognized in Rogers.
Id. (citation omitted).
That is, even where an
expressive work is at issue, the likelihood-ofconfusion factors and analysis remain the hallmark,
although the threshold for finding liability will be
more exacting. Thus, the Second Circuit specifically
directed the district court on remand “to fully
examine the factors relevant to the likelihood of
confusion” so that it could “determine whether the
likelihood of confusion was so great as to overcome
the presumption of Rogers.” Id. 6 See also Cliffs
The Second Circuit provided several reasons for
“careful application” of the likelihood-of-confusion factors
in light of Rogers, including: (1) the possible effect of a
disclaimer on the cover; and (2) the possible effect of the
imagery accompanying a word mark. See Twin Peaks,
996 F.2d at 1379-1380 (“It’s a fair question whether a title
that might otherwise be permissible under Rogers violates
the Lanham Act when displayed in a manner that
conjures up a visual image prominently associated with
the word bearing the mark that was copied.”) (emphasis
added).
6
20
Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp.,
Inc., 886 F.2d 490, 495 & n.3 (2d Cir. 1989) (traditional likelihood-of-confusion factors apply to Lanham Act claims against titles of expressive works,
although “the Polaroid factors should be applied with
proper weight given to First Amendment concerns,”
and a court should “tak[e] into account that somewhat more risk of confusion is to be tolerated”).
The Fifth Circuit—expressly adopting Twin
Peaks—uses the same approach, instructing that,
when considering an expressive work, “the court
should determine whether plaintiff has demonstrated ‘particularly compelling’ evidence indicating
that consumers are likely to confuse the title of
defendants’ book with [plaintiff’s] mark.” Sugar
Busters LLC v. Brennan, 177 F.3d 258, 270 (5th Cir.
1999) (citing Twin Peaks, 996 F.2d at 1379). In
Westchester Media v. PRL USA Holdings, Inc., 214
F.3d 658, 661 (5th Cir. 2000), for example, the owner
of the Ralph Lauren POLO trademark brought
Lanham Act claims against the publisher of POLO
Magazine, which was about the sport of polo. After
discussing Rogers, the court explained that, even
though the magazine title had artistic relevance and
was not explicitly misleading, the court still would
“appl[y] the likelihood of confusion test,” but “the
likelihood of confusion must be ‘particularly
compelling’ to outweigh the First Amendment
interests at stake.” Id. at 664-665 (quoting Twin
Peaks, 996 F.2d at 1379). The court ultimately ruled
that the magazine’s use of the POLO mark was
infringing, even if the use was artistically relevant
and not explicitly misleading. Id. at 668. In other
words, the court found infringement notwithstanding
that both Rogers factors were satisfied.
21
Other circuits, while not directly addressing
Rogers in the context of a trademark infringement
claim, are consistent with the approaches of the
Second and Fifth Circuits in applying likelihood-ofconfusion analysis to parodic uses of trademarks. In
Anheuser-Busch, Inc. v. Balducci Publications, 28
F.3d 769, 773, 775-776 (8th Cir. 1994), for example,
the Eighth Circuit applied likelihood-of-confusion
analysis to the defendant’s use of the plaintiff’s
trademark in a parody, concluding that, in the context of a confusing parody, “we are convinced that
the First Amendment places no bar to the application of the Lanham Act.” See id. at 777 (parody “is
vulnerable under trademark law since the customer
is likely to be confused”); see also Mutual of Omaha
Ins. Co. v. Novak, 836 F.2d 397, 401-402 (8th Cir.
1987) (applying likelihood-of-confusion analysis to
parody and finding infringement). Similarly, in Nike,
Inc. v. “Just Did It” Enterprises, 6 F.3d 1225, 12271233 (7th Cir. 1993), the Seventh Circuit recognized
that, in reviewing a parodic use of a trademark,
“[t]he ultimate question … is whether [defendant’s]
goods confuse customers. Parodies do not enjoy a
dispensation from this standard.” Id. at 1228; cf.
Cardtoons, L.C. v. Major League Baseball Players
Ass’n, 95 F.3d 959, 970 (10th Cir. 1996) (suggesting
that the Lanham Act’s requirement of proof of
likelihood of confusion is “a built-in mechanism[]
that serve[s] to avoid First Amendment concerns”).
2. In contrast, the Ninth Circuit has repeatedly
held that, if an expressive work satisfies both Rogers
factors (that it possesses at least minimal artistic
relevance and is not explicitly misleading), then any
likelihood of confusion—no matter how great, no
matter the circumstances—is irrelevant and the
22
Lanham Act has no application. The decision below,
for example, held that, where the allegedly infringing
use is part of an “expressive work,” the court does
not assess the use for a likelihood of confusion, but
“instead” applies the Rogers test. App. 5a. Indeed, it
specifically stated that the “Sleekcraft likelihood-ofconfusion test … applies outside the Rogers context
of expressive works.” App. 12a (emphasis added).
This decision in this respect followed earlier
Ninth Circuit precedent that long jettisoned the
application of likelihood-of-confusion analysis to
expressive works. See, e.g., Brown v. Elec. Arts, Inc.,
724 F.3d 1235, 1239 (9th Cir. 2013) (Ҥ 43(a) will not
be applied to expressive works” that satisfy both
Rogers elements) (emphasis added); Mattel, Inc. v.
MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002)
(holding likelihood-of-confusion analysis inapplicable
to use of Mattel’s BARBIE mark in the title of the
musical recording “Barbie Girl” because “literary
titles do not violate the Lanham Act” whenever they
satisfy both Rogers elements) (emphasis added).
These differing treatments of expressive works
are material: In the Second and Fifth Circuits, for
example, the use of another’s mark in an expressive
work, even if it has artistic relevance and is not
expressively misleading, may be infringing if there is
a sufficiently compelling showing of a likelihood of
confusion. In the Ninth Circuit, however, that same
use can never be infringing as a matter of law, no
matter how compelling the proof of likelihood of
confusion may be, because that court’s implied First
Amendment exception to the Lanham Act presents
23
an absolute threshold barrier to the Lanham Act’s
application.7
In sum, the Rogers analysis, dating back to 1989,
has evolved across the courts of appeals in conflicting
fashion. This Court has never adjudicated the scope
of this judicially created exception to the Lanham
Act. Now that the Ninth Circuit has expanded its
judicial exception to swallow the statutory rule by
holding that an alleged infringer’s sale of directly
competing goods can be excused as a “minor logical
extension” of Rogers, this Court’s intervention is
urgently needed.
II.
THE QUESTION PRESENTED IS EXCEPTIONALLY IMPORTANT TO A HOST OF
CREATIVE INDUSTRIES
For all the reasons set forth above, certiorari is
warranted so that the Court may adopt a uniform
standard for the federal courts to apply when faced
with claims that an allegedly infringing mark has
been used in an expressive work and associated
marketing activities. The petition also should be
In taking such a categorical approach, the decision
below also disregarded that the appropriate balance
between First Amendment freedom and consumer
protection may vary with the type of expressive use. For
example, a parodic use of a trademark that refers to or
comments on the mark might well be given more “leeway”
than a use that does not comment on the mark and is
used “to sell a competing product.” Harley-Davidson, Inc.
v. Grottanelli, 164 F.3d 806, 812-813 (2d Cir. 1999). Fox
makes no such reference to or comment on Empire’s own
mark here.
7
24
granted because the proper balance between trademark rights under the Lanham Act and First
Amendment concerns has great practical importance,
especially to the many creative industries including
television, film, music and high technology that are
heavily concentrated in the Ninth Circuit. This issue
of whether the use of a mark in a title is exempt from
Lanham Act likelihood-of-confusion analysis is all
the more urgent in today’s digital age, where
shorthand hashtags and online identities like
#EMPIRE and @EMPIRE are a principal vehicle for
marketing creative works.
Under the decision below, a business in the Ninth
Circuit that enters a marketplace through initial use
of a mark for “First Amendment expression” is then
free to seize a senior user’s goodwill and brand
equity by selling directly competing goods to the
same customers in the same channels of trade using
the senior user’s own trademark. App. 28a. The
Ninth Circuit’s supposed “minor logical extension” of
Rogers (App. 7a) thus in fact creates a gaping hole in
the scope of traditional trademark protection.
For example, Fox’s sister network, FX, recently
aired a show about assassinated fashion designer
Gianni Versace, founder of the eponymous clothing
line trademarked VERSACE. See VERSACE, Reg.
No. 2,121,984 (federal trademark registration for
clothing) (Dec. 16, 1997). FX prominently uses the
mark VERSACE in the show’s advertising.8 Under
the reasoning of the decision below, it would be only
See, e.g., @americancrimestoryfx, INSTAGRAM (Dec. 5,
2017), https://tinyurl.com/yaclj3bn.
8
25
a “minor logical extension” for FX to now sell and
market high-fashion clothing under the VERSACE
mark in direct competition with the Versace label,
ostensibly to “promote” the television series, without
any consequence under the Lanham Act. Further,
under the Ninth Circuit’s decision, such a use would
not be “explicitly misleading” as long as FX makes no
express claim to be speaking on behalf of Gianni
Versace S.p.A. See App. 12a (reasoning that Fox’s
use of EMPIRE was not “explicitly misleading” because it made no express reference to petitioner
itself).
The Ninth Circuit’s requirement of minimal
“artistic relevance” provides no meaningful limitation on this dangerous new avenue for unfair
competition. The decision below implausibly found
that “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.”
App. 10a. By that logic, a television producer could
launch a television show with the title “Apple” about
a computer and technology company located in New
York City, include tablets and smartphones on the
show (referred to as “Apple” products), and then
promote the show by selling tablets and smartphones
under the designation APPLE and use the social
media handle @apple and hashtag #apple, and be
fully protected by the First Amendment, regardless
of confusion with Apple Inc., because “apple” is a
“common English word” and the depicted company is
located in the “Big Apple.” See APPLE, Reg. No.
3,928,818 (federal trademark registration for, inter
alia, computers and mobile phones) (Mar. 8, 2011).
26
Similarly, a television producer could launch a show
called “Capitol” about a storied record label, include
music on the show, and then promote the show by
selling musical recordings under the brand
CAPITOL and using the Twitter handle @capitol and
the hashtag #capitol, all without infringing the
Capitol Records’ CAPITOL mark, because “capitol” is
a “common English word” and the depicted record
label is at the “capitol” of its profession.
See
CAPITOL, Reg. No. 4,264,800 (federal trademark
registration for musical sound recordings and related
merchandise, online sales and websites) (Dec. 25,
2012). Such consequences would be avoided if courts
assessing Lanham Act claims were required to
determine whether a use is “likely to cause
confusion,” even while considering countervailing
concerns about expressive freedom.
The practical consequences of the Ninth Circuit’s
expansive exception to trademark protection are
exponentially greater in a world in which consumers
increasingly rely on “hashtags” and social media
“handles” (i.e., usernames or profile names that
appear in the URL of a webpage) and other forms of
digital branding to search for, identify, and connect
with merchants. Social media networks such as
Twitter, Facebook and Instagram are now primary
avenues for individuals to communicate with one
another and for merchants to communicate with
their customers.
Merchants—particularly those
marketing popular culture—must out of necessity
extend the use of their trademarks beyond
traditional advertising and product packaging, and
use their trademarks as hashtags and handles,
maximizing the source-identifying function of their
marks on digital platforms.
27
The facts of this case are illustrative. Today music is heavily marketed through digital distribution
channels such as Apple Music, Spotify and Google
Play, and record labels use social media platforms
extensively to promote their brands. 9 Empire, in
particular, has been praised for its industry-leading
focus on digital music distribution and revolutionary
approach in the digital marketplace since its
founding in 2010. 10 The Ninth Circuit’s decision,
however, allows Fox to enter the scene and compete
on the same turf using the same EMPIRE mark.
And while “#EMPIRE” was once associated with
Empire on social media platforms, a search for content tagged “#EMPIRE” now leads to competing
content published by both Fox and Empire in connection with their directly competing goods (and, in
several promotions, returns imagery associated with
Fox’s show instead of Empire’s logo or artwork).11 In
See, e.g., Sarah Perez, On-demand Streaming Now
Accounts for the Majority of Audio Consumption, says
Nielsen,
TECH
CRUNCH
(Jan.
4,
2018),
https://tinyurl.com/y76fc7wk (noting that “[o]n-demand
audio streaming now accounts for 54 percent of total
audio consumption”).
9
10
See Payne, supra note 2.
See, e.g., ER 525-526 (declaration of Empire’s CEO
describing how Empire has “received hundreds of tweets
referring to Fox’s Empire, many of which reference” both
Empire’s and Fox’s respective Twitter accounts, and how
whenever a user tweets the hashtag #EMPIRE, “symbols
representing the Empire Series automatically appear,
regardless of whether or not the user is talking about our
EMPIRE label or the Empire series”).
11
28
other words, Empire has been displaced from controlling the hashtag of its own senior mark. Fox also
uses the word “empire” in its social media handles
(and therefore in URLs of its social media pages),
weakening the utility of a handle to identify
Empire’s brand. Fox, whose Twitter and Facebook
handle is “@EmpireFOX,” named its profiles on those
sites simply “Empire,” and applied for and received
from both Twitter and Facebook identity verification
for its claimed “name”—i.e., a checkmark that appears next to its use of the “Empire” name to signify
that it is the authentic and authoritative account:
29
Further, today’s digitalization of yesterday’s
record store now puts Fox and Empire side by side in
the digital marketplace. Whereas in traditional,
physical record stores, the two brands might have
been at least at separate ends of the hip hop music
aisle, or perhaps even on different aisles altogether,
digital music stores and distribution platforms
including Apple, Spotify, and YouTube place the
brands side by side (largely based on keywords), such
as on hip hop charts, playlists, profiles and in search
results, as depicted in the below search for “empire”
on iTunes:
See also ER 526-528 (examples of Empire’s and Fox’s
music offered side by side).
The issue of whether the Lanham Act categorically exempts use of a mark in an expressive work’s
title and associated uses is thus of essential
commercial importance to the music industry, as
30
well as to other creative industries. As Rogers itself
recognized, its presumption in favor of “expressive”
use “would not apply to misleading titles that are
confusingly similar to other titles” because “[t]he
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. The decision below dismissed that important qualification in Rogers as merely a rarely
cited “footnote” and suggested that the trademark
holder’s interests are adequately protected because
even a use in an expressive work may not “‘explicitly
mislead[] as to the source or the content of the
work.’” App. 8a (quoting Mattel, 296 F.3d at 902
(quoting Rogers, 875 F.2d at 999)). In today’s digital
environment, however, Fox may create great
consumer confusion simply by using Empire’s mark
EMPIRE even if Fox does not falsely say “brought to
you by Empire Distribution Inc.,” as the Ninth
Circuit’s “explicitly misleading” test would require.
Definitive resolution of this issue is particularly
important for creative industries such as film, music,
television and high technology, which are heavily
concentrated within the Ninth Circuit and will be
subject to outsized effects from that court’s incorrect
interpretation of the Lanham Act.12
See Kenneth A. Matuszewski, Casting Out Confusion:
How Exclusive Appellate Jurisdiction in the Federal
Circuit Would Clarify Trademark Law, 18 W. MICH. U.
COOLEY J. PRAC. & CLINICAL L. 31, 58 & table 4 (2016)
(observing that Ninth Circuit handled nearly twice as
many appeals from trademark cases in 2014-2015 than
court of appeals with next highest number).
12
31
Accordingly, this Court should decide the highly
consequential question whether likelihood-of-confusion analysis applies to all Lanham Act section 43(a)
claims, even where an initial use is purportedly
“expressive.”
CONCLUSION
The petition should be granted.
Respectfully submitted,
KATHLEEN M. SULLIVAN
Counsel of Record
TODD ANTEN
CORY D. STRUBLE
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue,
22nd Floor
New York, NY 10010
(212) 849-7000
kathleensullivan@
quinnemanuel.com
April 2, 2018
Counsel for Petitioner
APPENDIX
1a
APPENDIX A
FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
————
No. 16-55577
D.C. No. 2:15-cv-02158-PA-FFM
————
TWENTIETH CENTURY FOX TELEVISION, a division
of Twentieth Century Fox Film Corporation;
FOX BROADCASTING COMPANY,
Plaintiffs-Appellees,
v.
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
————
2a
Before: DIANA GRIBBON MOTZ,* MILAN D. SMITH,
JR., and JACQUELINE H. NGUYEN, Circuit Judges.
————
Opinion by Judge Milan D. Smith, Jr.
————
OPINION
————
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 Honorable Diana Gribbon Motz, United States Circuit
Judge for the U.S. Court of Appeals for the Fourth Circuit, sitting
by designation.
**
This summary constitutes no part of the opinion of the court.
It has been prepared by court staff for the convenience of the
reader.
3a
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.
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.
4a
FACTUAL AND PROCEDURAL BACKGROUND
Empire Distribution, founded in 2010, is a wellknown 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 lesserknown artists as well as music compilations with titles
such as EMPIRE Presents: Ratchet 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
5a
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.
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-ofconfusion 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
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.
6a
(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 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
7a
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 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
8a
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 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 sourceidentifying function.
9a
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 RollsRoyce 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 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
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.
10a
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 sourceidentifying 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 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.
11a
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 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.
12a
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
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.
13a
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
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
14a
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.
15a
APPENDIX B
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 15-2158 PA (FFMx)
Date
February 1, 2016
Title
Twentieth Century Fox Television,
et al. v. Empire Distribution Inc.
Present: The
Honorable
PERCY ANDERSON,
UNITED STATES DISTRICT JUDGE
Stephen Montes Kerr
Deputy Clerk:
Not Reported
Court Reporter:
N/A
Tape No.:
Attorneys Present for Plaintiffs:
None
Attorneys Present for Defendants: None
Proceedings: IN CHAMBERS
Before the Court are a Motion for Summary Judgment (Docket No. 41) and a Motion to Strike Expert
Report (Docket No. 46) filed by plaintiffs and
counterdefendants Twentieth Century Fox Television,
a division of Twentieth Century Fox Film Corporation,
and Fox Broadcasting Company (collectively “Fox” or
“Plaintiffs”). Defendant and counterclaimant Empire
Distribution, Inc. (“Empire Distribution” or “Defendant”) has filed oppositions to both Motions, and requests
a continuance under Federal Rule of Civil Procedure
56(d). The Court vacates the hearing calendared for
16a
February 1, 2016, finding the matter appropriate for
decision without oral argument under Federal Rule of
Civil Procedure 78 and Local Rule 7-15.1
I. Background
On January 7, 2015, Fox debuted “Empire,” a television series which tells the fictional story of a feuding
entertainment industry family (the “Empire Series”).
(Declaration of Molly M. Lens in Support of Fox’s
Motion (“Lens Decl.”), Ex. 2.) The Empire Series
chronicles the struggle of rapper and drug-dealer
turned music mogul Lucious Lyon, who is diagnosed
with a fatal disease in the show’s premiere. (Id., Ex.
11.) The Empire Series centers around Lucious’s exwife, Cookie, and their three sons, who fight for future
control over Lucious’ music and entertainment company “Empire Enterprises.” (Id.) The Empire Series
has been a breakout hit, and Fox has spent millions to
advertise the show. (Declaration of Shannon Ryan in
Support of Fox’s Motion, ¶¶ 2-3.)
One of the unique features of the Empire Series is
that music is heavily featured on the show, including
songs which were originally produced for the Empire
Series. (Declaration of Geoff Bywater in Support
of Fox’s Motion, ¶ 2.) Fox partners with Columbia
Records to release songs following the broadcast of
each episode of the Empire Series, which are then
collected to create a compilation soundtrack featuring
all of the songs from the season (the “Empire Soundtracks”). (Declaration of Andrew Ross in Support of
Fox’s Motion, ¶¶ 2-3.) Fox offers the Empire
1
The parties have lodged a large number of evidentiary
objections to the evidence supporting their respective statements
of facts. The Court has not relied on any disputed evidence in
deciding this Motion.
17a
Soundtracks for sale in both physical record stores and
online stores such as iTunes. (Empire Distribution’s
Appendix of Exhibits, Ex. 69.) In connection with the
Empire Series, Fox also enters into contracts with
artists, produces and releases music. It also promotes
the artists and their music at radio stations and live
performances. (Id.)
Defendant Empire Distribution is a record label,
music distributor, and publishing company which was
founded in 2010. (Declaration of Ghazi Shami in Support of Empire Distribution’s Opposition, ¶ 6.) Empire
Distribution is a large producer and distributor of
urban, hip hop, rap, and R&B music, and has released
over 11,000 albums/singles, 6,000 music videos, and
85,000 songs. (Id.) Empire Distribution has released
multiple platinum and gold records, and has worked
with famous artists such as “T.I., Snoop Dogg, Kendrick
Lamar, Trinidad James, Too $hort, The Game, Mally
Mall, Rich Homie Quan, Tyga, Shaggy, Busta Rhymes,
Fat Joe, Sage the Gemini, Cam’ron, Jim Jones, Rocko,
Gladys Knight, Rae Sremmurd, and many more.”
(Id. ¶¶ 7-15.)
Empire Distribution uses the trademarks “Empire,”
“Empire Distribution,” “Empire Publishing,” and
“Empire Recordings.” (Id. ¶ 22.) Empire has several
federal trademark applications for these marks pending before the United States Patent and Trademark
Office. (Declaration of Michael D. Hobbs in Support of
Empire Distribution’s Opposition, ¶¶ 6-11.) However,
three of Empire Distribution’s trademark applications
have been suspended: The application for “Empire”
with Serial No. 86590365 was suspended on July 17,
2015; the application for “Empire” with Serial No.
86590402 was suspended on July 17, 2015; and the
application for “Empire Distribution” with Serial No.
18a
86476822 was suspended on October 19, 2015. (Declaration of Molly M. Lens in Support of Fox’s Reply,
¶ 11, Exs. 28-30.)
Defendant contends that the debut of the Empire
Series caused confusion over the affiliation between
Empire Distribution and Fox’s Empire Series. (See
Lens Decl., Ex. 5.) Unhappy with Fox’s use of “Empire,”
Empire Distribution sent Fox a letter requesting that
Fox cease and desist its use of the mark. After
receiving the cease and desist demand, Fox initiated
this lawsuit, asserting claims for declaratory relief
against Empire Distribution for: (1) federal trademark
infringement under 15 U.S.C. § 1125(a); (2) federal
trademark dilution under 15 U.S.C. § 1125(c); and
(3) state unfair competition under Cal. Bus. & Prof.
Code §§ 17200 et seq.
In response, Empire Distribution asserted counterclaims against Fox for: (1) federal trademark infringement, 15 U.S.C. § 1125(a); (2) federal trademark dilution, 15 U.S.C. § 1125(c); (3) federal unfair competition,
15 U.S.C. § 1125(a); (4) California statutory unfair competition and false advertising, Cal. Bus. and Prof. Code
§§ 17200 and 17500, et seq.; (5) California common law
trademark infringement; and (6) California trademark
dilution, Cal. Bus. & Prof. Code § 14247.
Fox now moves for summary judgment on all claims
in its Complaint and against all of Empire Distribution’s counterclaims. Fox also moves the Court to
strike the expert report of James Pampinella.
II. Legal Standard
Summary judgment is proper where “the pleadings,
the discovery and disclosure materials on file, and any
affidavits show that there is no genuine issue as to any
19a
material fact and that the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). The
moving party has the burden of demonstrating the
absence of a genuine issue of material fact for trial.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106
S. Ct. 2505, 2514, 91 L. Ed. 2d 202 (1986). “[T]he
burden on the moving party may be discharged by
‘showing’—that is, pointing out to the district court—
that there is an absence of evidence to support the
nonmoving party’s case.” Celotex Corp. v. Catrett, 477
U.S. 317, 325, 106 S. Ct. 2548, 2554, 91 L. Ed. 2d 265
(1986); see also Musick v. Burke, 913 F.2d 1390, 1394
(9th Cir. 1990). The moving party must affirmatively
show the absence of such evidence in the record, either
by deposition testimony, the inadequacy of documentary evidence, or by any other form of admissible evidence. See Celotex, 477 U.S. at 322, 106 S. Ct. at 2552.
The moving party has no burden to negate or disprove
matters on which the opponent will have the burden
of proof at trial. See id. at 325, 106 S. Ct. at 2554.
As required on a motion for summary judgment,
the facts are construed “in the light most favorable to
the party opposing the motion.” See Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587,
106 S. Ct. 1348, 1356, 89 L. Ed. 2d 538 (1986). However, the nonmoving party’s allegation that factual
disputes persist between the parties will not automatically defeat an otherwise properly supported motion
for summary judgment. See Fed. R. Civ. P. 56(e)(2)
(nonmoving party “may not rely merely on allegations
or denials in its own pleading; rather, its response
must—by affidavits or as otherwise provided in this
rule—set out specific facts showing a genuine issue for
trial”). A “mere ‘scintilla’ of evidence will be insufficient to defeat a properly supported motion for summary judgment; instead, the nonmoving party must
20a
introduce some ‘significant probative evidence tending
to support the complaint.’” Fazio v. City & County of
San Francisco, 125 F.3d 1328, 1331 (9th Cir. 1997)
(quoting Anderson, 477 U.S. at 249, 252, 106 S. Ct. at
2510, 2512). Otherwise, summary judgment shall be
entered.
III. Discussion
Fox contends that summary judgment is appropriate because its use of “Empire” is protected by the
First Amendment, and because Empire Distribution
has failed to establish that there is a genuine issue of
material fact as to consumer confusion. As explained
below, the Court finds that Fox’s use of “Empire” is
protected by the First Amendment, and therefore does
not reach the issue of consumer confusion.
A. The First Amendment
The Lanham Act protects the public’s right not to
be misled as to the source of a product. Rogers v.
Grimaldi, 875 F.2d 994, 997 (2d Cir. 1989). However,
trademark rights do not allow “the owner to quash
an unauthorized use of the mark by another who is
communicating ideas or expressing points of view.”
Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900
(9th Cir. 2002). Courts must construe “the Lanham
Act ‘to apply to artistic works only where the public
interest in avoiding consumer confusion outweighs
the public interest in free expression.’” Mattel, Inc. v.
Walking Mountain Prods., 353 F.3d 792, 807 (9th Cir.
2003) (quoting Rogers, 875 F.2d at 999).
In MCA Records, the Ninth Circuit adopted the
Rogers test to determine when trademark protection
must give way to expressive speech protected by the
First Amendment. MCA Records, 296 F.3d at 902.
Under the Rogers test, “[a]n artistic work’s use of a
21a
trademark that otherwise would violate the Lanham
Act is not actionable ‘unless the use of the mark has
no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless
it explicitly misleads as to the source or the content
of the work.’” E.S.S. Entm’t 2000, Inc. v. Rock Star
Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008) (quoting MCA Records, 296 F.3d at 902). The Rogers test
applies to uses of a trademarked term in both the title
and the body of a work. Id.
Empire Distribution implores the Court to analyze
this case under the AMF Inc. v. Sleekcraft Boats, 599
F.2d 341 (9th Cir. 1979) likelihood of confusion test.
Empire Distribution asserts that Sleekcraft should
govern because Fox is allegedly attempting to extend
its use of another’s trademark much further than in
any other case applying Rogers. The Ninth Circuit has
repeatedly made clear, without qualification based
on the extent of the use, that the “only relevant legal
framework for balancing the public’s right to be free
from consumer confusion” against First Amendment
rights is the Rogers test. Brown v. Elec. Arts, Inc., 724
F.3d 1235, 1242 (9th Cir. 2013) (emphasis added).
Accordingly, the Court will consider this case under
the two-pronged Rogers test.
1. The Rogers Test Does Not Include
a Threshold “Cultural Significance”
Inquiry
Empire Distribution contends that before applying
the two-prong Rogers test, the Court must find that
the “Empire” mark is “of such cultural significance
that it has become an integral part of the public’s
vocabulary.” Rebelution, LLC v. Perez, 732 F. Supp. 2d
883, 887 (N.D. Cal. 2010). Under this interpretation
of the Rogers test, no First Amendment rights are
22a
implicated until a word or mark takes on “expressive
meaning apart from [its] source-identifying function.”
Id. at 888; see also Dita, Inc. v. Mendez, No. CV 106277 PSG (FMOx), 2010 WL 5140855, at *9 (C.D. Cal.
Dec. 14, 2010); Warner Bros. Entm’t v. Global Asylum,
Inc., No. CV 12-9547 PSG (CWx), 2012 WL 6951315,
at *45-46 (C.D. Cal. Dec. 10, 2012), aff’d, 544 F. App’x
683 (9th Cir. 2013).2
The cultural significance inquiry required under
Rebelution, Dita, and Global Asylum, has been disapproved of by numerous courts. E.g., VIRAG, S.R.L. v.
Sony Computer Entm’t Am. LLC, No. 3:15-CV-01729
LB, 2015 WL 5000102, at *9-10 (N.D. Cal. Aug. 21,
2015); Mil-Spec Monkey, Inc. v. Activision Blizzard,
Inc., 74 F. Supp. 3d 1134, 1140 (N.D. Cal. 2014);
Stewart Surfboards, Inc v. Disney Book Grp., LLC, No.
CV 10-2982 GAF (SSx), 2011 WL 12877019, at *2-3
(C.D. Cal. May 11, 2011); Winchester Mystery House,
LLC v. Glob. Asylum, Inc., 210 Cal. App. 4th 579, 592,
148 Cal. Rptr. 3d 412, 421 (2012).
The dispositive case on this issue is E.S.S.
Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547
F.3d 1095 (9th Cir. 2008). In E.S.S., the Ninth Circuit
was presented with the argument that the mark at
issue could not be protected under Rogers because it
was not a cultural icon. Id. at 1100. The court dismissed this argument because it “miss[ed] the point.”
Id. Even more significantly, the court concluded that
the use at issue was protected by the First Amend-
2
Although the district court’s decision in Global Asylum was
affirmed on appeal, the appellant challenged only the district
court’s analysis of a fair use defense. Global Asylum, 544 F. App’x
at 683. The Ninth Circuit therefore did not consider whether or
not the Rogers test included a cultural significance requirement.
23a
ment even though the mark had “little cultural significance.” Id. Thus, it is clear that the E.S.S. court did
not interpret the Rogers test as including a threshold
cultural significance inquiry. See id.; see also Mil-Spec
Monkey, 74 F. Supp. 3d at 1140-41 (explaining that
courts which have imported a “cultural significance”
inquiry into the Rogers test have done so based on a
misreading of MCA Records.)
The only threshold for applying the Rogers test is
whether the allegedly infringing use is contained in an
expressive work. Brown v. Electronic Arts, Inc., 724
F.3d 1235, 1241 (9th Cir. 2013) (holding that the
“Rogers test is reserved for expressive works.”) Both
the Empire Series and the Empire Soundtracks are
clearly expressive works, and are therefore entitled to
First Amendment protection if they satisfy the Rogers
test. See Rogers, 875 F.2d at 997 (“Movies, plays,
books, and songs are all indisputably works of artistic
expression and deserve protection.”)
2. Rogers Prong 1
The first prong of the Rogers test requires a showing
that the use of a mark has artistic relevance to the
underlying work. MCA Records, 296 F.3d at 902. The
Ninth Circuit has explained that the required “level of
relevance merely must be above zero.” E.S.S., 547 F.3d
at 1100. The word “Empire” is clearly relevant to Fox’s
work because the Empire Series tells the story of
characters struggling for literal control over an entertainment company called “Empire Enterprises,” and
figurative control over the vast “empire” that Lucious
Lyon has built. Additionally, the Empire Series is
set in New York, the Empire State. Indeed, Empire
Distribution concedes that the word “Empire” has
artistic relevance to Fox’s work. (See Opp’n, 11.)
24a
However, Empire Distribution contends that the
proper inquiry under the first prong of the Rogers test
asks whether the junior use of the mark is a reference
to the senior use. Under this interpretation of the
Rogers test, it is not enough for a junior user to show
a relevant use of a word which is part of the senior
user’s mark. Because Fox is clear that its use of
“Empire” is not a reference to Empire Distribution,
Empire Distribution contends that Fox fails to meet
the first prong of the Rogers test.
In Rebelution, supra, the first prong of the Rogers
test was interpreted as including this referential
requirement. 732 F. Supp. 2d at 888-89; see also Dita,
Inc. v. Mendez, No. CV 10-6277 PSG (FMOx), 2010 WL
5140855, at *2 (C.D. Cal. Dec. 14, 2010); Warner Bros.
Entm’t v. Glob. Asylum, Inc., No. CV 12-9547 PSG
(CWx), 2012 WL 6951315, at *45-46 (C.D. Cal. Dec. 10,
2012). However, the Rebelution court has been criticized for misapplying the Rogers test. See Stewart
Surfboards, Inc v. Disney Book Grp., LLC, No. CV 102982 GAF (SSx), 2011 WL 12877019, at *4 (C.D. Cal.
May 11, 2011); Fortres Grand Corp. v. Warner Bros.
Entm’t Inc., 947 F. Supp. 2d 922, 933 n. 2 (N.D. Ind.
2013); Rebellion Developments Ltd. v. Stardock Entm’t,
Inc., No. 12-12805, 2013 WL 1944888, at *3 (E.D.
Mich. May 9, 2013). Additionally, several courts have
found that the Rogers test protects a junior user even
where the use of the mark made no reference to
the senior user. See Rebellion, 2013 WL 1944888, at
*3 (collecting cases).
While it is certainly true that in every Ninth Circuit
case interpreting Rogers, the allegedly infringing use
was a reference to the senior user, the Ninth Circuit
has never stated that the Rogers test includes a
“referential requirement.” At most, the Ninth Circuit
25a
has suggested that this is a fact which a court may
consider. See MCA Records, 296 F.3d at 901 (“[W]here
an artistic work targets the original and does not
merely borrow another’s property to get attention,
First Amendment interests weigh more heavily in the
balance.”)
The common thread in opinions interpreting the
Rogers test is that a junior user “must not have
arbitrarily chosen to use the trademarks just to exploit
the[ir] publicity value, but rather the use of the
trademarks must have genuine relevance to the work.
This, however, does not require the [junior user’s]
work to be ‘about’ the trademark or what the trademark signifies.” Stewart, 2011 WL 12877019 at *4
(internal quotations and citation omitted). This case
illustrates the principle: “Empire” has genuine relevance to the Empire Series and it was not arbitrarily
chosen to exploit Empire Distribution’s fame. Moreover, it would be a perverse result if Fox’s use of
“Empire” would be protected if Fox had claimed that
the Empire Series was in some minimal way a commentary on Empire Distribution, but the use would
not be protected if, as is the case here, Fox had disclaimed any such use. Such a distinction serves neither the interests of the First Amendment nor the
Lanham Act.
Fortres Grand provides another apt illustration.
There, Fortres Grand owned “Clean Slate,” a program
which was used to protect computer security. Fortres
Grand, 947 F. Supp. 2d at 924. In the Batman film
“The Dark Knight Rises,” one of the plot lines centered
around “Clean Slate,” a fictional program capable of
erasing an individual’s criminal history. Id. The court
rejected the argument that in order for the movie’s use
of “Clean Slate” to be protected, it had to be “some
26a
well-thought-out ‘expressive’ critique of the trademark” owned by Fortres Grand. Id. at 932. Instead,
the court held that there was no logical reason to limit
Rogers to situations where the use essentially
amounted to parody, and noted that such an interpretation could severely chill otherwise constitutionally
protected speech. Id. at 932-33. The same result is
appropriate here, where Empire Distribution contends
that the common word “Empire” cannot be used in
an expressive work unless it is referencing Empire
Distribution.
In E.S.S., the Ninth Circuit held that “only the
use of a trademark with no artistic relevance to
the underlying work whatsoever does not merit First
Amendment protection.” E.S.S., 547 F.3d at 1100
(emphasis in original, internal quotations omitted).
The Ninth Circuit also made clear that the work need
not be “about” the trademark, requiring only a level of
“relevance merely above zero.” Id. Interpreting the
first prong of the Rogers test as including a reference
requirement would be inconsistent with these standards and would unnecessarily upset the carefully
crafted balance between the First Amendment and the
Lanham Act.
3. Rogers Prong 2
The second prong of the Rogers test requires a junior
user to show that their work does not explicitly
mislead as to the source or content of the work. MCA
Records, 296 F.3d at 902. The Ninth Circuit has been
clear that the use of a mark in the title of a work,
divorced from other explicitly misleading actions, is
not enough to bar First Amendment protection. Id.
27a
Once again, the parties dispute the proper test to
apply when determining whether the work is explicitly
misleading. Fox contends that the Court should employ
a straightforward application of the test, requiring an
“explicit indication, overt claim, or explicit misstatement” as to the source of the work. Brown, 724 F.3d
at 1246 (citing Rogers, 875 F.2d at 1001) (internal
quotations omitted). On the other hand, Empire Distribution contends that the second prong of the Rogers
test imports the Sleekcraft likelihood of confusion
analysis. Like the parties, lower courts have also split
on the proper standard. Compare Kiedis v. Showtime
Networks, Inc., No. CV 07-8185 DSF (MANx), 2008
U.S. Dist. LEXIS 124334, at *14-15 (C.D. Cal. Feb. 19,
2008) (requiring a likelihood of confusion analysis in
the second prong of the Rogers test) with Stewart
Surfboards, Inc v. Disney Book Grp., LLC, No. CV 102982 GAF (SSx), 2011 WL 12877019, at *7 (C.D. Cal.
May 11, 2011) (refusing to do the same).
The Court finds that any ambiguity about the proper
standard was resolved by the Ninth Circuit’s decision
in Brown. There, the senior user put forward strong
consumer survey evidence demonstrating a likelihood
of confusion, which he contended established a triable
issue of fact as to the second prong of the Rogers test.
Brown, 724 F.3d at 1245-46 (emphasis added). The
Ninth Circuit discredited the importance of the evidence, explaining that:
Adding survey evidence changes nothing. The
[second prong of the Rogers] test requires that
the use be explicitly misleading to consumers.
To be relevant, evidence must relate to the
nature of the behavior of the identifying material’s user, not the impact of the use. Even if
28a
Brown could offer a survey demonstrating
that consumers of the Madden NFL series
believed that Brown endorsed the game, that
would not support the claim that the use was
explicitly misleading to consumers.
Brown, 724 F.3d at 1245-46 (emphasis added).
Thus, it is clear that no amount of evidence showing
only consumer confusion can satisfy the “explicitly
misleading” prong of the Rogers test because such
evidence goes only to the “impact of the use” on a
consumer. See id. Even in situations where there is
widespread consumer confusion, the Ninth Circuit
has struck the balance in favor of protecting First
Amendment expression: “‘The risk of misunderstanding, not engendered by any explicit indication on the
face of the [work], is so outweighed by the interest in
artistic expression as to preclude application of the
[Lanham] Act.’” Id. at 1246 (quoting ETW Corp. v.
Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003)).
It follows that the Sleekcraft likelihood of confusion
analysis is inapplicable to the second prong of the
Rogers test.
Here, Empire Distribution’s argument under the
second prong of the Rogers test focuses solely on consumer confusion. (See Opposition, 12.) Because Brown
holds that such consumer confusion is irrelevant and
there is no evidence that of an “explicit indication,
overt claim, or explicit misstatement” as to the source
of the work, the Court concludes that Fox has not
explicitly misled consumers about its affiliation with
Empire Distribution.
In sum, the First Amendment protects the use of a
trademark in an expressive work if the use of the mark
has artistic relevance to the underlying work and does
29a
not explicitly mislead as to the source or content of
the work. MCA Records, 296 F.3d at 902. Empire
Distribution asserts that: (1) Fox uses “Empire” in an
expressive work, although the mark has not reached
the level of cultural significance; (2) Fox’s use of
“Empire” is relevant to the Empire Series, although
the use is not a reference to Empire Distribution; and
(3) Fox has not used “Empire” in an explicitly misleading way, although the use has caused consumer confusion. Thus, Empire Distribution has conceded that
Fox’s use of “Empire” satisfies all of the requirements
of the Rogers test. Empire Distribution’s only arguments against summary judgment require the Court
to rewrite the Rogers test. The Court declines to do so.
B. Remaining Claims
Because the Court concludes that Fox’s use of
“Empire” is protected by the First Amendment and
falls outside the proscriptions of the Lanham Act, Fox
is entitled to summary judgment on all claims asserted
in Fox’s Complaint and Empire Distribution’s Counterclaim. See MCA Records, 296 F.3d at 902 n. 2, 906907; Kerr Corp. v. Tri Dental, Inc., No. SACV 12-0891
DOC (CWx), 2013 WL 990532, at *4 (C.D. Cal. Mar.
11, 2013); Mallard Creek Indus., Inc. v. Morgan, 56
Cal. App. 4th 426, 434-35, 65 Cal. Rptr. 2d 461, 466-67
(1997).
Conclusion
For the foregoing reasons, the Court grants Fox’s
Motion for Summary Judgment. The Court shall enter
a Judgment consistent with this Order. Because the
Court rules in favor of Fox on First Amendment
grounds, the Court denies as moot Fox’s Motion to
30a
Strike and Empire Distribution’s request for a continuance under Federal Rule of Civil Procedure 56(d).3
IT IS SO ORDERED.
3
The discovery which formed the basis of Empire Distribution’s request under Rule 56(d) was not germane or relevant to
the First Amendment bar raised by Fox’s Motion for Summary
Judgment. See Brown, 724 F.3d at 1239 (a Rogers defense to
claims of trademark infringement may be adjudicated through a
motion to dismiss).
31a
APPENDIX C
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 15-2158 PA (FFMx)
Date
March 28, 2016
Title
Twentieth Century Fox Television,
et al. v. Empire Distribution Inc.
Present: The
Honorable
PERCY ANDERSON,
UNITED STATES DISTRICT JUDGE
Stephen Montes Kerr
Deputy Clerk:
Not Reported
Court Reporter:
N/A
Tape No.:
Attorneys Present for Plaintiffs:
None
Attorneys Present for Defendants: None
Proceedings: IN CHAMBERS
Before the Court is a Motion for Reconsideration
(Docket No. 83) filed by defendant and counterclaimant Empire Distribution, Inc. (“Empire Distribution”
or “Defendant”). Plaintiffs and counterdefendants
Twentieth Century Fox Television, a division of Twentieth Century Fox Film Corporation, and Fox Broadcasting Company (collectively “Fox” or “Plaintiffs”)
have filed an Opposition. The Court vacates the hearing calendared for March 28, 2016, finding the matter
appropriate for decision without oral argument under
32a
Federal Rule of Civil Procedure 78 and Local Rule
7-15.
I. Background
On March 23, 2015, Fox filed a Complaint for
Declaratory Relief which sought a “declaration pursuant to 28 U.S.C. § 2201 that Empire, and the release
of music therefrom, does not violate any of defendant’s
purported trademark rights.” (Compl. ¶ 2.) On June
29, 2015, Empire Distribution filed a Counterclaim
which sought to stop “Fox’s rampant, unauthorized
use of the ‘Empire’ name to promote, market, distribute and sell its television program and music.” (Counterclaim ¶ 1.) The Court issued a Scheduling Order on
July 23, 2015. (Docket No. 22.) The Scheduling Order
established a discovery cutoff date of January 25,
2016, and a motion cutoff date of February 1, 2016.
On December 8, 2015, the parties filed a Joint Stipulation requesting that the Court alter its Scheduling
Order to allow Fox’s prospective summary judgment
motion to be heard on March 4, 2016, or, in the
alternative, that the Court allow a modified briefing
schedule which would provide Empire Distribution
with additional time to file its opposition but still allow
the motion to be heard before the motion cutoff date.
(Docket No. 39.) The parties represented to the Court
that the purpose of the Joint Stipulation was to “allow
for the completion of discovery . . . .” (Id.) The Court
granted the parties’ alternative request which modified the briefing schedule on the Motion for Summary
Judgment but did not alter the Court’s Scheduling
Order. (Docket No. 40.)
Fox’s Motion for Summary Judgment was briefed in
accordance with the schedule proposed in the parties’
33a
Joint Stipulation. (Docket Nos. 41, 55, 75.) Notwithstanding the modified schedule, Empire Distribution’s
Opposition included a request for a continuance under
Federal Rule of Civil Procedure 56(d). On February 1,
2016, the Court granted Fox’s Motion for Summary
Judgment, denied Empire Distribution’s Rule 56(d)
request, and issued a Judgment. (Docket Nos. 79, 80.)
Empire Distribution has now filed the instant
motion seeking reconsideration of the Court’s ruling
on Fox’s Motion for Summary Judgment.
II. Legal Standard
Reconsideration is an “extraordinary remedy, to be
used sparingly in the interests of finality and conservation of judicial resources.” Kona Enters., Inc. v.
Estate of Bishop, 229 F.3d 877, 890 (9th Cir. 2000)
(citation omitted). A “motion for reconsideration should
not be granted, absent highly unusual circumstances,
unless the district court is presented with newly
discovered evidence, committed clear error, or if there
is an intervening change in the controlling law.”
389 Orange St. Partners v. Arnold, 179 F.3d 656, 665
(9th Cir. 1999) (citation omitted); see also McDowell
v. Calderon, 197 F.3d 1253, 1255 (9th Cir. 1999). A
motion to reconsider “may not be used to raise arguments or present evidence for the first time when
they reasonably could have been raised earlier in
the litigation.” Carroll v. Nakatani, 342 F.3d 934, 945
(9th Cir. 2003). Under Local Rule 7-18, a motion to
reconsider may only be brought if the moving party
demonstrates:
(a) a material difference in fact or law from
that presented to the Court before such decision that in the exercise of reasonable diligence could not have been known to the party
34a
moving for reconsideration at the time of such
decision, or (b) the emergence of new material
facts or a change of law occurring after the
time of such decision, or (c) a manifest showing of a failure to consider material facts
presented to the Court before such decision.
Local Rule 7-18 also advises that “[n]o motion for
reconsideration shall in any manner repeat any oral or
written argument made in support of or in opposition
to the original motion.”
III. Discussion
Empire Distribution contends that the Court erred
in denying its request for a continuance under Rule
56(d). Empire Distribution also contends that the Court
erred by relying on disputed evidence when applying
the First Amendment defense articulated in Rogers v.
Grimaldi, 875 F.2d 994 (2d Cir. 1989) and adopted by
the Ninth Circuit in Mattel, Inc. v. MCA Records, Inc.,
296 F.3d 894 (9th Cir. 2002). As explained below,
neither contention is correct.
A. 56(d) Request
Under Rule 56(d), the Court has discretion to extend
a response deadline where the “nonmovant shows by
affidavit or declaration that, for specified reasons, it
cannot present facts essential to justify its opposition.”
Accordingly, to meet its burden under Rule 56(d), the
non-moving party must show: “(1) it has set forth in
affidavit form the specific facts it hopes to elicit from
further discovery; (2) that the facts sought exist; and
(3) that the sought-after facts are essential to oppose
summary judgment.” Family Home & Fin. Ctr., Inc.
v. Fed. Home Loan Mortg. Corp., 525 F.3d 822, 827
(9th Cir. 2008). An extension is not justified merely
because discovery is incomplete or desired facts are
35a
unavailable. Jensen v. Redev. Agency of Sandy City,
998 F.2d 1550, 1554 (10th Cir. 1993). Rather, “the
party filing the affidavit must show how additional
time will enable him to rebut the movant’s allegations
of no genuine issue of fact.” Id. “[T]he party seeking a
continuance bears the burden to show what specific
facts it hopes to discover that will raise an issue of
material fact.” Continental Maritime v. Pacific Coast
Metal Trades, 817 F.2d 1391, 1395 (9th Cir. 1987).
“The burden is on the party seeking additional discovery to proffer sufficient facts to show that the evidence
sought exists, and that it would prevent summary
judgment.” Chance v. Pac-Tel. Teletrac, Inc., 242 F.3d
1151, 1161 n.6 (9th Cir. 2001).
In support of Empire Distribution’s Rule 56(d)
request, its counsel submitted a declaration detailing
perceived shortcomings in Fox’s conduct during discovery. (See Declaration of Peter N. Villar in Support
of Empire Distribution’s Opposition to Fox’s Motion
for Summary Judgment, ¶¶ 2-34.) The declaration
stated that:
The depositions, documents and other discovery that EMPIRE has requested is directed at
issues raised by Fox in its Motion including,
but not limited to, the origin of, and Fox’s
selection of, the “Empire” name; Fox’s knowledge of the EMPIRE marks (including Fox’s
trademark searches relating to the EMPIRE
marks); Fox’s marketing expenses and promotional efforts relating to the Empire series
and Empire series music; sales data for the
Empire series music; the strength of the
marks at issue; the proximity of the goods; the
similarity of the marks; the evidence of actual
and likely confusion; the marketing channels
36a
used; the type of goods and the degree of care
likely to be exercised by the purchaser; Fox’s
intent in selecting the Empire mark; and the
likelihood of expansion of the product lines.
(Id. ¶ 34.)
Counsel’s declaration was insufficient to satisfy the
requirements for a Rule 56(d) continuance. Specifically, Empire Distribution’s counsel’s laundry list of
additional discovery did not identify with specificity
the facts he hoped to obtain. Nor did Empire Distribution’s counsel make any showing that such facts exist.
Instead, Empire Distribution’s counsel appeared to
be engaged in a fishing expedition in the hopes of
obtaining evidence to support his theories, as confirmed by the Magistrate Judge’s denial of Empire
Distribution’s Motion to Compel. (Docket No. 59.)
Moreover, the general categories of evidence Empire
Distribution’s counsel hoped to obtain would not
defeat Fox’s Motion for Summary Judgment. As the
Court’s Order previously noted, “[t]he discovery which
formed the basis of Empire Distribution’s request
under Rule 56(d) was not germane or relevant to
the First Amendment bar raised by Fox’s Motion for
Summary Judgment.” (February 1, 2016 Minute
Order, 8 n.3 (citing Brown v. Elec. Arts, Inc., 724 F.3d
1235, 1239 (9th Cir. 2013) (holding that a Rogers
defense to claims of trademark infringement may be
adjudicated through a motion to dismiss)).)
Finally, Empire Distribution’s Reply contends that
“[t]here is nothing improper about gathering evidence
through the final days of discovery.” (Reply, 10.) While
that statement may be correct in the abstract, its
applicability to the present case is belied by the very
facts underlying Empire Distribution’s Rule 56(d)
37a
request. Despite the fact that Fox noticed its Motion
for Summary Judgment for the final day allowed
by the Court’s Scheduling Order, and even though
Empire Distribution had the benefit of a modified
briefing schedule which afforded it more time to file an
opposition, Empire Distribution still requested a continuance under Rule 56(d). That request was made in
a deficient manner, and sought discovery which was
irrelevant to the Motion’s dispositive issue. As such,
the Court did not err in denying Empire Distribution’s
Rule 56(d) request. See Family Home & Fin. Ctr., Inc.
v. Fed. Home Loan Mortgage Corp., 461 F. Supp. 2d
1188, 1192 (C.D. Cal. 2006) aff’d sub nom. Family
Home & Fin. Ctr., Inc. v. Fed. Home Loan Mortgage
Corp., 525 F.3d 822 (9th Cir. 2008).
B. Applicability of Rogers
Empire Distribution also contends that the Court
erred in applying the Rogers test, and relied on disputed evidence in doing so. Many of Empire Distribution’s arguments, in blatant disregard for the Court’s
Local Rules, are entirely duplicative of those already
advanced in its Opposition to Fox’s Motion for Summary Judgment. See L.R. 7-18. Primarily, Empire
Distribution reiterates its flawed argument that the
use of a trademark which is otherwise protected under
Rogers, loses that protection if it also serves a sourceidentifying function for the junior user.
In its Opposition to the Motion for Summary Judgment, Empire Distribution contended that Fox sells
“ancillary goods (including, but not limited to, shirts,
jackets, hats, handbags, mugs, and other apparel and
accessories) under the ‘Empire’ banner” and that “Fox
will sell, sells, or has sold at least branded music,
apparel, nail polish, mugs, and bags. SOF ¶¶ 74-77,
38a
82, 123.” (Opposition to Motion for Summary Judgment, 3, 7 n.4.) However, the Court’s review of the
cited evidence did not reveal any support for the associated propositions. The rest of the Opposition, just as
the pleadings in the Complaint and Counterclaim,
focused on the Empire television show and Fox’s sale
of music featured on the show. The Court thus agreed
with Fox’s contention that these alleged ancillary uses
were not properly before the Court in the Motion for
Summary Judgment or, to the extent that they were,
they were only used to support Empire Distribution’s
“source-identifying function” argument. Accordingly,
the Court also does not consider Fox’s new evidence
showing that Fox uses “Empire” for “branded nail
polish, champagne glasses, key chains, backpacks,
hats, purses, calendars, slot machines, and more”
because that argument could have been, but was not,
raised in Empire Distribution’s Opposition. (Motion
for Reconsideration, 15 n.10.) However, the Court
agrees that the use of a mark on a commercial good is
not the type of expressive activity which is protectable
under Rogers. Despite this, even if Empire Distribution had adequately put these commercial uses before
the Court, it is clear that it did not put forward any
evidence demonstrating a likelihood of confusion
which would have justified denying the Motion for
Summary Judgment.
Nor did the Court rely on any disputed facts in
adjudicating the Motion for Summary Judgment.
Empire Distribution contends that the Court ignored
evidence that Fox releases songs featured on the
Empire show both individually and in compilation
albums. However, The Court’s Order made clear that
“Fox partners with Columbia Records to release songs
following the broadcast of each episode of the Empire
39a
Series.” (February 1, 2016 Minute Order, 1.)1 Thus,
the Court clearly considered that Fox regularly sold
individual songs featured on the show.
C. Other Arguments
None of Empire Distribution’s remaining arguments
regarding newly discovered evidence2 or likelihood
of confusion merit reconsideration. (Motion, 9-22.) As
shown by the Court’s ruling on the Motion for Summary Judgment, evidence of the validity of Empire
Distribution’s trademarks was not material to the
Court’s First Amendment analysis. Indeed, the Court
assumed the validity of Empire Distribution’s rights to
1
The sentence with which Empire Distribution takes issue,
reads: “Fox partners with Columbia Records to release songs
following the broadcast of each episode of the Empire Series,
which are then collected to create a compilation soundtrack
featuring all of the songs from the season.” (February 1, 2016
Minute Order, 1.) Although the Court inadvertently stated that
“all” of the individually released songs from a season are also
released in a compilation album, both the evidence the Court
cited in support of that statement and common sense make clear
that only selected songs are featured on compilation albums.
(Declaration of Andrew Ross in Support of Fox’s Motion for
Summary Judgment, ¶ 4.) The Court clearly considered that
Fox’s use of the Empire mark included selling individual songs
featured on the Empire show, and Empire Distribution’s reading
of the Court’s resuscitation of the facts is demonstrably incorrect.
Moreover, this is not the type of a “manifest showing of a failure
to consider material facts” that would warrant reconsideration.
L.R. 7-18.
2
Additionally, as Fox points out, much of the evidence which
Empire Distribution purports to rely on as newly discovered
evidence supporting its Motion for Reconsideration was produced
by Fox prior to the date that Empire Distribution’s Opposition
to the Motion for Summary Judgment was due. (See Declaration
of Molly M. Lens in Support of Fox’s Opposition to Empire
Distribution’s Motion for Reconsideration, ¶¶ 2-7.)
40a
the Empire mark when conducting its First
Amendment analysis. Next, Fox’s assertion of a trademark right in “Empire” against multiple third parties
may be proper or improper, but it is clearly outside of
the scope of the Court’s well-defined inquiry under
Rogers. Additionally, this argument was previously
advanced in Empire Distribution’s Opposition to the
Motion for Summary Judgement. Likewise, the Court
has already considered, and rejected as immaterial to
the Rogers analysis, Empire Distribution’s arguments
based on Fox’s plans to market the record label portrayed in the show as a real record label, and the fact
that music featured on the show is sold in the marketplace alongside music sold by Empire Distribution.
These facts do not “explicitly mislead as to the source
or content of the work” and at most create some likelihood of confusion which is irrelevant under Rogers.
MCA Records, 296 F.3d at 902; Brown, 724 F.3d at
1245-46. Not surprisingly, Empire Distribution’s discovery of additional evidentiary support for these facts
does not change that conclusion. Finally, because the
Court did not conduct a likelihood of confusion analysis in its initial ruling on the Motion for Summary
Judgment, none of Empire Distribution’s arguments
on that point provide a basis for reconsideration.
Conclusion
For the foregoing reasons, the Court denies Empire
Distribution’s Motion for Reconsideration.
IT IS SO ORDERED.
41a
APPENDIX D
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
[Filed Jan. 2, 2018]
————
No. 16-55577
D.C. No. 2:15-cv-02158-PA-FFM
Central District of California, Los Angeles
————
TWENTIETH CENTURY FOX TELEVISION, a division
of Twentieth Century Fox Film Corporation,
and FOX BROADCASTING COMPANY,
Plaintiffs-Appellees,
v.
EMPIRE DISTRIBUTION, INC.,
Defendant-Appellant.
————
ORDER
Before: MOTZ,* M. SMITH and NGUYEN, Circuit
Judges.
The panel has unanimously voted to deny the
petition for panel rehearing; Judges M. Smith and
Nguyen have voted to deny the petition for rehearing
en banc, and Judge Motz so recommends. The full
court has been advised of the petition for rehearing
*
The Honorable Diana Gribbon Motz, United States Circuit
Judge for the U.S. Court of Appeals for the Fourth Circuit, sitting
by designation.
42a
en banc and no judge of the court has requested a vote
on it. Fed. R. App. P. 35.
The petition for panel rehearing and the petition for
rehearing en banc are DENIED.
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