FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

TWENTIETH CENTURY FOX 

TELEVISION, a division of Twentieth 

Century Fox Film Corporation; FOX 

BROADCASTING COMPANY,

Plaintiffs-Appellees,

v.

EMPIRE DISTRIBUTION, INC.,

Defendant-Appellant.

No. 16-55577

D.C. No.

2:15-cv-02158-

PA-FFM

OPINION

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

Before: DIANA GRIBBON MOTZ,* MILAN D. SMITH, 

JR., and JACQUELINE H. NGUYEN, Circuit Judges.

Opinion by Judge Milan D. Smith, Jr.

 * The Honorable Diana Gribbon Motz, United States Circuit Judge 

for the U.S. Court of Appeals for the Fourth Circuit, sitting by 

designation.
2 TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.

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 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.

 ** This summary constitutes no part of the opinion of the court. It 

has been prepared by court staff for the convenience of the reader.
TWENTIETH CENTURY FOX V. EMPIRE DISTRIB. 3

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.

FACTUAL AND PROCEDURAL BACKGROUND

Empire Distribution, founded in 2010, is a well-known 

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 lesser-known artists as well as music 

compilations with titles such as EMPIRE Presents: Ratchet 
4 TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.

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 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.
TWENTIETH CENTURY FOX V. EMPIRE DISTRIB. 5

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-of-confusion 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 (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 

 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.
6 TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.

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 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 
TWENTIETH CENTURY FOX V. EMPIRE DISTRIB. 7

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 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 
8 TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.

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 source-identifying 

function.

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 Rolls-Royce or Band-Aid, “enter 

our public discourse and become an integral part of our 

vocabulary.” 296 F.3d at 900. The ordinary likelihood-ofconfusion test provides insufficient protection against a 
TWENTIETH CENTURY FOX V. EMPIRE DISTRIB. 9

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 sourceidentifying 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 

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 source-identifying 

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 

 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 sourceidentifying function.
10 TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.

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.

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 
TWENTIETH CENTURY FOX V. EMPIRE DISTRIB. 11

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. 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 
12 TWENTIETH CENTURY FOX V. EMPIRE DISTRIB.

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.

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 
TWENTIETH CENTURY FOX V. EMPIRE DISTRIB. 13

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 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.