“Plaintiffs shall have judgment in their favor on defendant Empire Distribution Inc.’s counterclaims for federal trademark infringement, federal trademark dilution, federal unfair competition, California statutory unfair competition and false advertising, California common law trademark infringement, and California trademark dilution, and defendants shall recover nothing,” Judge Percy Anderson wrote earlier this week, granting Fox’s motion for summary judgment (read it here). He also granted Fox declaratory relief for its initial federal trademark infringement and other claims.
Citing First Amendment protection, this brings to an end the multimillion-dollar legal back and forth between Empire the TV show and Empire the San Francisco-based music company – at least for now. It all starred when, not long after the Lee Daniels and Danny Strong co-created series debuted on January 7, 2015, Empire Distribution sent letters to Fox claiming it had rights to the name used by the hip-hop drama.
The established hip-hop company also said that for $8 million, or guest spots for their artists and $5 million, it would back off the assertion that its brand was being tarnished by the hit show’s “portrayal of a label run by a homophobic drug dealer prone to murdering his friends.” On March 23, Fox took Empire Distribution to court to protect its “intellectual property rights in and to its breakout fictional television series Empire.” The hip-hop company countersued and the two sides went to the trademark mattresses.
After trying to move the parties to mediation last year, Anderson declared one Empire over the other after vacating a scheduled hearing this week.
” ‘Empire’ has genuine relevance to the Empire Series and it was not arbitrarily chosen to exploit Empire Distribution’s fame,” he wrote in an order Monday (read it here). “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.”
O’Melveny and Myers LLP’s Daniel Petrocelli, Cameron Biscay and Molly Lens represented Twentieth Century Fox Television and Fox Broadcasting Company in the matter. A team of attorneys from Atlanta’s Troutman Sanders LLP represented Empire Distribution Inc.