Empire Strikes Back at ‘Empire': Indie Record Label Responds to Fox Lawsuit Over Title

“It isn’t just a fictional show; they are functioning as a record label in the real world,” CEO tells TheWrap in a statement

Last Updated: March 24, 2015 @ 5:23 PM

San Francisco-based record label and music distribution company Empire Distribution Inc. has fired back at 20th Century Fox Television in their name/title dispute regarding hip-hop opera “Empire.”

“Fox’s ‘Empire’ television program has created significant confusion with Empire’s products and services,” Empire Distribution founder and CEO Ghazi Shami said in a statement to TheWrap on Tuesday. “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 continued: “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.”

Fox had preemptively filed a lawsuit for the right to retain the name “Empire” for Lee Daniels‘ series on Monday.

In the lawsuit, filed in federal court in California, Fox claims that Empire Distribution sent Fox a claim letter in February “accusing Fox of using defendant’s alleged marks without authorization” and stating that Fox’s use of the word Empire “somehow confused defendant’s customers, artists and business partners as to whether the series and its music are somehow affiliated with defendant.”

The lawsuit also claims that Empire Distribution accused Fox of trademark dilution by tarnishment, based on the theory that “‘Empire’s’ portrayal of a label run by a homophobic drug dealer prone to murdering his friends threatens to tarnish [defendant’s] brand and harm [its] goodwill.”

A second letter arrived in March, Fox says, suggesting that the broadcaster could either settle the matter for $5 million and use Empire Distribution artists as regular guest stars on the series; pay $8 million; or stop using the word “Empire” altogether.

On Tuesday, the defendants had their opportunity to responded. “It isn’t just a fictional show; they are functioning as a record label in the real world,” Shami said on Tuesday. “This only makes the public confusion worse.”

“We are confident that this is a textbook trademark infringement case,” added Michael Hobbs, a partner with Troutman Sanders LLP, the law firm representing Empire Distribution. “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.”

Hobbs mentioned that his law firm reached out directly to Fox several times in an attempt to amicably resolve the matter, but was “rebuffed.”

“The only alternative with which we are left is to litigate, which we will do vigorously to protect our client’s valuable rights,” Hobbs concluded.

Empire Distribution claims it has released more 10,000 albums, 5,000 music videos and 100,000 songs.