With demands for millions on one side and the seeking of a court declaration that Empire isn’t violating any “purported trademarks rights” on the other, this lawsuit seems to have taken the expressive lane to a sit-down before it could blow up. Just one day after the broadcaster of blockbuster series Empire filed a complaint for declaratory relief against music label Empire Distribution, the federal court today said it wants the parties to work out their problems in mediation before going to trial. Maybe not the way Lucious Lyon does business on the fictional Empire but the ways of real-life busy courts.
“The district judge to whom the above-referenced case has been assigned is participating in an ADR (alternative dispute resolution) Program that presumptively directs this case to either the Court Mediation Panel or to private mediation,” U.S. District Court clerk Edwin Sambrano said Tuesday in a short filing (read it here). “At the initial scheduling conference, counsel should be fully prepared to discuss their preference for referral to the Court Mediation Panel or to private mediation and when the mediation should occur. The Court will enter an Order/Referral to ADR at or around the time of the scheduling conference.” The case has been assigned to District Judge Percy Anderson and Magistrate Judge Frederick Mumm.
This heated disagreement that looks to be moving toward cooler heads all started when the San Fran-based music company sent letters to Fox claiming that it has the rights to Empire, Empire Recordings and Empire Distribution. That’s one thing, but the music company had some more requests. It said, “(1) Fox could pay $5 million and include artists that defendant represents as ‘regular guest stars’ on the fictional television series Empire; (2) Fox could pay defendant $8 million; or (3) Fox could stop using the word ‘Empire,’” according to the broadcaster’s complaint on March 23 (read it here), which cited a letter from Empire Distribution’s lawyers. An earlier correspondence “accused Fox of trademark dilution by tarnishment,” said the lawsuit over the series created by Lee Daniels and Danny Strong and starring Terrence Howard and Taraji P. Henson. “Defendant’s theory is that Empire‘s portrayal of a label run by a homophobic drug dealer prone to murdering his friends threatens to tarnish [defendant’s] brand and harm [its] goodwill.’”
Needless to say, Fox wanted to protect its Golden Goose and struck back with its own lawsuit this week that painted it as something to be plucked. “This action has been necessitated by defendant’s meritless claims of trademark infringement and dilution, as well as unfair competition, and its attendant demands for millions of dollars,” said the 13-page jury-trial-seeking complaint that Marvin Putnam and Molly Lens of O’Melveny & Myers LLP filed for Fox corporate entities.
Besides detailing what looks like a shakedown, the Fox complaint also says that “Defendant’s January 24, 2014 application for registration of ‘Empire Recordings’ to identify various non-electronic music recordings is pending, and it was initially denied by the USPTO due to a likelihood of confusion with ‘Empire Entertainment’ and ‘DVD Empire.’” Noting that Empire Distribution moved to registration soon after the TV show debut on January 9, Fox also pointed out in its complaint that “Defendant has never applied for federal registration of a trademark in ‘Empire.’”
Fox wants a declaration that the use of Empire in the context of the hit series doesn’t violate laws like the Lanham Act and the California Business and Professions Code. They additionally desire “a permanent injunction enjoining defendant, and its agents, servants, employees, attorneys, successors and assigns, and all persons, firms and corporations acting in concert with it, from making false statements and representations to third parties asserting that Fox has violated its trademark rights” plus legal fees from the other side.
Now it looks like both sides are going to have to be a little less imperial, go to the scheduling conference and then sit down and work out a deal – or not.