Fox’s new series Empire has been massively successful, and a small, Bay Area based digital music distribution company is coming for their slice of the pie.
Empire Distribution Inc. recently filed a trademark lawsuit against the Fox over the title of the series, and their demands were pretty clear: pay up, or pay up and give our artists some shine. Per Billboard:
“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.'”
The company claims the series is diluting their trademark and tarnishing their name with the series that features a “homophobic drug dealer,” as its main character. The company issued a press release explaining how confusing the name can be for potential customers.
“Empire founder and CEO Ghazi Shami explained, ‘FOX’s Empire television program has created significant confusion with Empire’s products and services. Customers, artists and business partners have all expressed confusion to my employees, artists, and me as to whether the Empire program has any affiliation or business relationship with Empire. It does not.'”
Shami further explained, ‘Fox, through the Empire program, advertises, distributes, and streams music and sells downloads under the ‘Empire’ mark. This music shares the same search terms as Empire’s music, the musical genres are identical, and the songs and albums are positioned in close proximity in online outlets such as iTunes, Google Play, Amazon.com, and Spotify. It isn’t just a fictional show; they are functioning as a record label in the real world,” said Shami. ‘This only makes the public confusion worse.'”
Empire is Fox’s most successful series in years, and they are going to move mountains to protect that weekly money printer. So naturally, they’re countersuing to stake their own claim of the series’ title.
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.
The show’s fictional record label, “Empire Records,” is exactly that – fiction. But the series has been actively involved in the music industry, including releasing an official soundtrack that debuted number one on the Billboard 200 albums chart, moving 130,000 units in its first week. The suit comes just a week after the show pulled in almost 17 million viewers for its season finale.