The Ninth Circuit Court of Appeals issued a ruling that should help game developers, authors and other creative-types that use third-party trademarks in the commercial promotion of an artistic work.
In Twentieth Century Fox Television v. Empire Distribution the appellate court determined that “it only takes a minor logical extension” to hold that First Amendment protection extends to the advertisement of those protected works. This would mean that video game developers, virtual reality creators and authors could use a third party’s trademark of the real world and assert First Amendment protection to commercially promote their work while displaying the third-party trademarks.
At issue is the use of the name “Empire” by the popular Fox television series featuring a fictitious record label. Empire Distribution is a real record label that sent a cease and desist letter to Fox (owners of the Empire tv show) with respect to its mark. Going on the offensive, Fox filed a lawsuit requesting a court issue a declaratory judgment that there was no infringement. On a summary judgment motion, the California court agreed that there was no violation of trademark under the Lanham Act or California law.
The case seems to answer the question of whether one might be able to use a trademark without permission of the mark holder when the use is tangential to the work. The ruling follows the Ninth Circuit’s trend granting First Amendment protection for expressive works. The overarching test is found in the famous Rogers v. Grimaldi case. The “Rogers test” states that “an artistic work’s use of a 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.”
The two components of the Rogers test were key with the Ninth Circuit ruling in Empire.
1) The title has no artistic relevance to the underlying work whatsoever, or
2) If there is artistic relevance to the underlying work, the title explicitly misleads consumers as t the source or content of the work.
As we’ve explained in the past, the test stems from the Ginger Rogers-Alberto Grimaldi case. There, the Second Circuit ruled in favor of the defendant as it related to a lawsuit filed by Ginger Rogers who sued Alberto Grimaldi for a film which emulated a dance routine featuring Rogers and Fred Astaire. The Court stated that there is a conflict between the right to protect a celebrity’s name and the right for others to express themselves freely in their own artistic work. The Court sided with the right to express versus trademark protection when it came to the mark’s minimal use so long as it did not “explicitly denote authorship, sponsorship, or endorsement by the celebrity or explicitly mislead as to content. See Rogers v. Grimaldi, 875 F.2d 994, 1005.
One of the notable issues in the “Empire” ruling was the argument by Empire Distribution that Fox had advertised its show outside the “title or body of the work” as actors did media appearances to promote the show as well as the sale or licensing of consumer goods. Empire Distribution argued that “Fox’s use of the mark “Empire” extends well beyond the titles and bodies of these expressive works.”
The Court stated in its ruling, “[a]lthough 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.”
Recently, AM General, LLC, the maker of Humvee vehicles filed a lawsuit against the video game publisher for Call of Duty for trademark infringement. Similar to the “Empire” lawsuit, the trademark holder claims that the unauthorized use of its registered mark was infringement.
We note that the ruling is from the west coast’s Ninth Circuit. It’s not clear whether other jurisdictions would follow as the Ninth Circuit is known as a liberal jurisdiction. But, the ruling is a good sign for those wishing to use trademarks in passing.