What’s in a name? For Lee Daniels, apparently, a big headache.
Daniels, whose 2013 film was rechristened “Lee Daniels‘ The Butler” due to a claim by Warner Bros. on the title “The Butler,” now has another of his projects embroiled in a title showdown — this time his soapy breakout TV hit “Empire.”
Twentieth Century Fox Television, Twentieth Century Fox Film Corporation and Fox Broadcasting corporation filed a preemptive lawsuit on Monday against Empire Distribution in an effort to retain the title “Empire” for the series, which recently wrapped up its first season.
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.”
Fox’s “Empire” revolves around rapper and drug dealer-turned-music mogul Lucious Lyon (Terrence Howard), the kingpin behind music and entertainment company Empire Enterprises. As the suit notes, music factors heavily in the program, with a soundtrack album from the first season debuting at the top spot on the Billboard 200 chart in March.
According to its website, Empire Distribution distributes music by artists including Sean Paul, Numskull and Kurupt, among others.
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
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.
Now Fox is seeking a judgment that Fox’s use of the word “Empire” does not “infringe defendant’s trademark rights, if any.”
In a statement provided to TheWrap, Fox said that the lawsuit “underscores Fox’s commitment to vigorously protecting its intellectual property” and called Empire Distribution’s claims “meritless.”
“Today’s ‘Complaint for Declaratory Relief’ filed in the federal district court in Los Angeles underscores Fox’s commitment to vigorously protecting its intellectual property – specifically the extraordinarily successful TV series ‘Empire’ – from these meritless claims,” the broadcaster said. “Fox is seeking a court declaration that its use of ‘Empire’ in no way violates any trademark rights held by the defendant. It is illogical that anyone would equate a small, independent record label in San Francisco, California with a completely fictional music and lifestyle conglomerate on television.”
Marvin Putnam of O’Melveny & Myers, Fox’s outside counsel in the matter, added, “Unfortunately, success today can often make creators a target for a myriad of baseless legal claims,” said Marvin Putnam of O’Melveny & Myers, LLP, Fox’s outside counsel. “They hope you will just pay a little something from that success to make them go away. As underscored by today’s complaint, Fox has no intention of allowing anyone to leverage ‘Empire’s’ success for their own unwarranted financial gain.”
Empire Distribution has not yet responded to TheWrap‘s request for comment.
Pamela Chelin contributed to this report.
