by Eriq Gardner
The broadcaster takes preemptive action after being sent multimillion-dollar demands from Empire Distribution Inc.
A preemptive lawsuit holds risks, as the "Blurred Lines" verdict demonstrates, but on the other hand, Fox might wish to avoid another Glee, which ran into trademark trouble in the U.K. with a judge there basically allowing the owner of a comedy club to assert dominion.
In this instance, Fox is suing Empire Distribution, Inc., which is identified as a California corporation that has not only come forward asserting rights to "Empire," "Empire Distribution" and "Empire Recordings" but has also in a demand letter claimed trademark dilution by tarnishment via a series that features "a label run by a homophobic drug dealer prone to murdering his friends."
Fox, of course, sees its Lee Daniels-created show about a feuding entertainment-industry family differently, especially now that it's a massive success, attracting 16.7 million same-day viewers for its season finale. The show has also spawned a soundtrack album that debuted on top of the Billboard 200 chart.
The defendant might be in the music business, but Fox portrays Empire Distribution as commercially weak, with a Google search for "empire record label" not resulting in defendant's website until the seventh page. To get there, Google users will be flipping past others who have used the mark. "There is even a film called Empire Records," remarks the complaint, filed on behalf of Fox by attorney Marvin Putnam in California federal court.
Empire Distribution's website lists many prominent artists on its roster. They include Kendrick Lamar, N.O.R.E., and Sean Paul. (Some of the artists appear to have released early or side work on Empire before moving on to bigger labels.)
Fox also says that the defendant never applied for a federal trademark registration on "Empire," and after applying for "Empire Distribution" for non-electronic music recordings in January 2014, the defendant was initially denied out of a likelihood of confusion. A separate trademark registration covering electronic delivery of music recordings is pending.
Empire Distribution has hired a lawyer and sent demands.
The first claim is said to have come on Feb. 16, with an $8 million demand to resolve potential trademark infringement and dilution claims.
The second came on March 6.
"This letter, again authored by outside counsel, reiterated defendant’s trademark claims, asserted a new claim for unfair competition, and gave Fox three 'options' to settle the claims made against it," states the complaint. "(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.'”
Fox won't pay up. Instead, it's suing to protect itself upon "a cloud over Fox’s intellectual property rights in the fictional television series Empire and the Soundtrack Music."
“Unfortunately, success today can often make creators a target for a myriad of baseless legal claims,” says Putnam, of O'Melveny & Myers. “They hope you will just pay a little something from that success to make them go away. As underscored by today’s complaint, Fox has no intention of allowing anyone to leverage Empire’s success for their own unwarranted financial gain.”
Empire says it has partnerships with Atlantic Records, Republic Records, eOne, and Kobalt Publishing. CEO Ghazi Shami says Empire "isn’t just a fictional show; they are functioning as a record label in the real world."
The company has retained Michael Hobbs, a partner with Troutman Sanders, who says he is confident this is a textbook trademark infringement case. "Empire was started over five years before the first broadcast of the show, the marks are identical, and they sell the same products to the same customers. The significant number of incidents of actual public confusion is disturbing.”