FOR PUBLICATION



### UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT

T WENTIETH C ENTURY F OX
T ELEVISION , a division of Twentieth Century Fox Film Corporation ; F OX
B ROADCASTING C OMPANY
, Plaintiffs

- Appellees

,

v.

E MPIRE D ISTRIBUTION
, I NC
., 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 T WENTIETH C ENTURY F OX V

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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 b ody 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 c ould 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.T WENTIETH C ENTURY F OX V

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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 p rotected 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 compilation s with titles such as EMPIRE Presents: Ratchet4 T WENTIETH C ENTURY F OX V

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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 bear ing 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 fo r 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

cou nterclaims. Empire Distribution moved for reconsideration, which was denied. Empire Distribution timely appealed.T WENTIETH C ENTURY F OX V

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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 8 64, 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 Mat tel , 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 h ave no occasion to address whether the Rogers test applies to any state laws.6 T WENTIETH C ENTURY F OX V

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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 omit ted) (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 ROGER S 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).

Empir e 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 Char les 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 expressiveT WENTIETH C ENTURY F OX V

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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 destabilize d 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 Di stribution 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

unne cessary: identifying “misleading titles that are confusingly similar to other titles” has the potential to duplicate either the likelihood

- of

- confusion test or the8 T WENTIETH C ENTURY F OX V

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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 i dentifying 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.3 d 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 it s 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 likel ihood

- of

confusion test provides insufficient protection against aT WENTIETH C ENTURY F OX V

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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 ex pressive meaning apart from its source

identifying 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 what soever,” 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 source

identifying function.10 T WENTIETH C ENTURY F OX V

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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. B ecause 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” do es 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

zer o.” 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. DespiteT WENTIETH C ENTURY F OX V

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the song’s use of the civil rights figure’s name, “[t]he composers did not intend it to be a bout 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 titl e 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 artis tic 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 rel evant 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
Distributi on 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 the12 T WENTIETH C ENTURY F OX V

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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 ke y

. . . 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 cau sed 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 Distributio n, 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 den ying 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 addition al 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 ‘EM PIRE’ 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 shedT WENTIETH C ENTURY F OX V

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no light on the question of whether the word “Empire” is

art istically 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 correctl y 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 m aterial 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 inspir ation 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 Em pire 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 b ear costs on appeal. Fed. R. App. P. 39(a)(2).

AFFIRMED

.