Empire Declaration

8/20/2019 Empire Declaration

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DANIEL M. PETROCELLI S.B. #97802)[email protected] M. LENS (S.B. #283867)

[email protected] H. BISCAY (S.B. #266786)[email protected]’MELVENY & MYERS LLP1999 Avenue of the Stars, 7th FloorLos Angeles, California 90067-6035Telephone: (310) 553-6700Facsimile: (310) 246-6779

Attorneys for Twentieth Century FoxTelevision, a division of Twentieth CenturyFox Film Corporation, and FoxBroadcasting Company

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

WESTERN DIVISION

TWENTIETH CENTURY FOXTELEVISION, a division ofTWENTIETH CENTURY FOX FILMCORPORATION, a Delaware company,et al.,

Plaintiffs,

v.

EMPIRE DISTRIBUTION, INC., aCalifornia corporation,

Defendant.

Case No. 2:15-cv-02158 PA FFMx)

DECLARATION OF MOLLY M.LENS IN SUPPORT OF FOX’SMOTION FOR SUMMARYJUDGMENT

Judge: Hon. Percy Anderson

Hearing Date: February 1, 2016Time: 1:30 p.m.Place: Courtroom 15

And related counterclaims

Case 2:15-cv-02158-PA-FFM Document 41-4 Filed 12/15/15 Page 1 of 176 Page ID #:649


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TABLE OF CONTENTS

Title Page

Declaration Of Molly M. Lens In Support Of Fox’s Motion For Summary

Judgment ....................................................................................................................................... 1

Exhibit 1: Local Rule 7-3 Correspondence ................................................................................... 5

Exhibit 2: Fox’s Complaint For Declaratory Relief...................................................................... 7

Exhibit 3: Empire Distribution, Inc.’s Answer To Complaint .................................................... 35

Exhibit 4: Empire Distribution, Inc.’s Counterclaims ................................................................ 47

Exhibit 5: Excerpts Of Empire Distribution, Inc.’s Responses To Fox’s First Set

Of Interrogatories ......................................................................................................................... 72

Exhibit 6: Excerpts Of Empire Distribution, Inc.’s Responses to Fox’s Second Set

Of Requests For Admission ......................................................................................................... 81

Exhibit 7: Ted Cohen’s Expert Report ........................................................................................ 84

Exhibit 8: Deborah Jay’s Expert Report ..................................................................................... 90

Exhibit 9: Phil Johnson’s Expert Report ................................................................................... 110

Exhibit 10: Front & Back Covers Of DVD Set Empire: The Complete First

Season ........................................................................................................................................ 135Exhibit 11: DVD Set Empire: The Complete First Season ......................................................136

Exhibit 12: Labels Of DVDs Of Ten Episodes Of Season 2 Of Empire ..................................137

Exhibit 13: DVDs Of Ten Episodes Of Season 2 Of Empire ................................................... 142

Exhibit 14: Front & Back Covers Of Album Empire: Original Soundtrack From

Season 1 .....................................................................................................................................143

Exhibit 15: CD of Album Empire: Original Soundtrack

From Season 1 ........................................................................................................................... 144

Exhibit 16: Front & Back Covers Of Album Empire: Original Soundtrack Season

2 Volume 1 145



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Exhibit 19: Excerpts Of Amazon.com Sales Page For Empire: Music

From A Man Sinned Against ...................................................................................................... 149

Exhibit 20: Defendant’s Website On September 23, 2015 ....................................................... 151



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I, Molly M. Lens, the undersigned, hereby declare:

1. I am a member in good standing of the State Bar of California, an

attorney in the law firm of O’Melveny & Myers LLP, and counsel for plaintiffs and

counterclaim defendants Twentieth Century Fox Film Television, a division of

Twentieth Century Fox Film Corporation, and Fox Broadcasting Company

(collectively, “Fox”). I submit this declaration in support of Fox’s Motion For

Summary Judgment. I have personal knowledge of the facts set forth herein and, if

called to testify, could and would testify competently thereto.

2. On or about November 23, 2015, I sent an email to defendant’s

counsel, Peter Villar, requesting, pursuant to Local Rule 7-3, that the parties meet

and confer on this motion. A true and correct copy of my L.R. 7-3 correspondence

dated November 23, 2015 is attached hereto as Exhibit 1.

3.

On December 2, 2015, my colleague Cameron Biscay and I met-and-

conferred telephonically with Mr. Villar to discuss Fox’s anticipated motion for

summary judgment. Defendant declined to withdraw any of its claims to address

the issues and arguments we raised in our L.R. 7-3 discussions.

4. Attached hereto as Exhibit 2 is a true and correct copy of Fox’s

Complaint For Declaratory Relief (Dkt. 1), filed on or about March 23, 2015,

including Exhibit A thereto.

5.

Attached hereto as Exhibit 3 is a true and correct copy of Empire

Distribution, Inc.’s Answer To Complaint (Dkt. 15), filed on or about June 4, 2015.

6. Attached hereto as Exhibit 4 is a true and correct copy of Empire

Distribution, Inc.’s Counterclaims (Dkt. 16), filed on or about June 4, 2015.



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8. Attached hereto as Exhibit 5 is a true and correct copy of excerpts of

Empire Distribution, Inc.’s Responses To Fox’s First Set Of Interrogatories, served

on or about November 23, 2015. (Per paragraph 5(a) of the Court’s Scheduling

Order (Dkt. 23), Fox is only submitting excerpts of discovery responses and other

documentary evidence where Fox is only relying on a portion of the document in

question.)

9.

Attached hereto as Exhibit 6 is a true and correct copy of excerpts of

Empire Distribution, Inc.’s Responses to Fox’s Second Set of Requests for

Admission, served on or about December 2, 2015.

10. Attached hereto as Exhibit 7 is a true and correct copy of Ted Cohen’s

expert report, served on or about November 30, 2015.

11.

Attached hereto as Exhibit 8 is a true and correct copy of Deborah

Jay’s expert report, without its exhibits, served on or about November 30, 2015.

12.

Attached hereto as Exhibit 9 is a true and correct copy of Phil

Johnson’s expert report, without its exhibits, served on or about November 30,

2015.

13. Attached hereto as Exhibit 10 is a true and correct copy of the front

and back covers of the DVD set Empire: The Complete First Season. Fox lodged

herewith a true and correct copy of the DVD set Empire: The Complete First

Season, with the DVDs being designated as Exhibit 11.

14.

Attached hereto as Exhibit 12 is a true and correct copy of the labels

of the DVDs containing the episodes of Season 2 of Empire that have aired to date.

Each episode is on an individual DVD and, as there are 10 episodes to date in



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15. Attached hereto as Exhibit 14 is a true and correct copy of the front

and back covers of the album Empire: Original Soundtrack From Season 1, which

contains music from Empire’s first season. Fox lodged herewith a true and correct

copy of the Empire: Original Soundtrack From Season 1 album, with the CD being

designated as Exhibit 15.

16.

Attached hereto as Exhibit 16 is a true and correct copy of the front

and back covers of the album Empire: Original Soundtrack Season 2 Volume 1,

which contains music from the first ten episodes of Empire’s second season. Fox

lodged herewith a true and correct copy of the Empire: Original Soundtrack Season

2 Volume 1 album, with the CD being designated as Exhibit 17.

17.


the amazon.com sales page for Empire: Music From The Pilot , which contains

music from Empire’s pilot episode (i.e., the first episode of the first season). The

soundtracks from each episode of Empire from Season 1 follow this format, with

the album art comprised of a gold record label.

18.


the amazon.com sales page for Empire: Music From A Man Sinned Against , which

contains music from the ninth episode of Empire’s second season. The soundtracks

from each episode of Empire from Season 2 follow this format, with the album art

comprised of members of the fictional Lyon family with two lions.

19.

Attached hereto as Exhibit 20 is a true and correct copy of defendant’s

website, www.empi.re, as it existed on September 23, 2015. At my direction and

under my supervision, a paralegal at my law firm captured this image of



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EXHIBIT 1



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From: Lens, Molly

Sent: Monday, November 23, 2015 8:54 AM

To: Villar, Peter N.Cc: Gale, Paul L.; Bowler, John M.; [email protected]; Petrocelli, Daniel;

Biscay, Cameron H.; Ehlers, J. Hardy

Subject: Fox v. Empire Distribution

Peter -

We write to meet and confer in advance of our contemplated motion for summary judgment. We intend tomove for summary judgment on all claims based on the dispositive First Amendment defense; the lack of

likelihood of confusion; and the lack of famousness of Empire Distribution’s alleged marks. Pursuant to L.R.

7.3, please let us know when you are available to meet and confer. When you respond, please let us know ifyou anticipate moving for summary judgment on any claims.

With respect to the schedule, as you should be aware, Judge Anderson’s scheduling order provides that thecurrent deadline for summary judgment hearings is February 1. The scheduling order separately encourages the

moving party to provide more than the minimum twenty-eight (28) day notice for such motions. This means,

under the current schedule, summary judgment motion(s) will be filed prior to the completion ofdiscovery. Further, the motions themselves will likely be filed shortly before the holidays, with oppositions

falling over the Christmas/New Year holidays.

In light of this, we propose the parties stipulate to an extension of the summary judgment hearing deadline to

February 29 (leaving all other case deadlines in place). This would allow the parties to complete discovery

prior to summary judgment briefing and, of lesser importance, avoid any holiday conflicts. While the partiescan meet and confer to discuss the specific schedule, we propose the following, working backwards from theFebruary 29 hearing date: January 25: deadline to move for summary judgment, contemporaneous with the

close of discovery; February 4: opposition date; February 12: reply date (given the holiday of February 15).

To the extent your client is not willing to agree that the parties should jointly request that Judge Anderson move

the hearing to February 29, we ask that Empire Distribution stipulate that it will not oppose our forthcoming

summary judgment motion on 56(d) grounds.

We ask for your response by 10:00 am tomorrow, which will allow the parties to present any agreement toJudge Anderson for his consideration on Wednesday before the Thanksgiving holiday.

Molly ______________________________



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information. If you have received this transmission in error, please notify the sender immediately by reply e-mail and thendelete this message.



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EXHIBIT 2



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MARVIN S. PUTNAM S.B. #212839)[email protected] M. LENS (S.B. #283867)

[email protected]’MELVENY & MYERS LLP1999 Avenue of the Stars, 7th FloorLos Angeles, California 90067-6035Telephone: (310) 553-6700Facsimile: (310) 246-6779

Attorneys for Twentieth Century FoxTelevision, a division of Twentieth Century

Fox Film Corporation, and Fox BroadcastingCompany



TWENTIETH CENTURY FOXTELEVISION, a division ofTWENTIETH CENTURY FOX FILMCORPORATION, a Delaware company,and FOX BROADCASTINGCOMPANY, a Delaware corporation,

Plaintiffs,v.


Defendant.

Case No. 2:15-cv-2158

COMPLAINT FORDECLARATORY RELIEF

DEMAND FOR JURY TRIAL

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Plaintiffs Twentieth Century Fox Television (“TCFTV”), a division of

Twentieth Century Fox Film Corporation (“TCFFC”), and Fox Broadcasting

Company (“FBC”) (collectively, “Fox”), for their complaint against defendant

Empire Distribution, Inc., allege as follows:

NATURE OF THE ACTION

1. Fox brings this action to protect its intellectual property rights in and

to its breakout fictional television series Empire. Even though the series onlydebuted on January 7, 2015, Empire has already become a cultural phenomenon.

To date, each episode of Empire has attracted more viewers than the prior

episode—a feat that no other show in the last 23 years has accomplished. FBC

recently renewed the series for a second season.

2. Fox seeks a declaration pursuant to 28 U.S.C. § 2201 that Empire, and

the release of music therefrom, does not violate any of defendant’s purported

trademark rights. This action has been necessitated by defendant’s meritless claims

of trademark infringement and dilution, as well as unfair competition, and its

attendant demands for millions of dollars.

PARTIES

3. TCFFC is a corporation organized and existing under the laws of

Delaware, having its principal place of business at 10201 West Pico Boulevard, Los

Angeles, California 90064. TCFFC owns the intellectual property rights in and to

the fictional television series Empire and the music therefrom, including copyright

and trademark rights.

4. TCFTV is a television studio engaged in the business of creating and


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6. Defendant Empire Distribution, Inc. is a California corporation with a

principal place of business at 375 Portrero Avenue, Suite 5, San Francisco,

California 94103. On information and belief, defendant is a music record label and

music distribution company engaged in the business of live and recorded music

production, distribution, and sales.

JURISDICTION AND VENUE

7.

This is an action for declaratory relief brought under 28 U.S.C.§§ 2201 et seq.; under the Lanham Act, 15 U.S.C. §§ 1125(a) and 1125(c); and

under state unfair competition law, California Business and Professions Code

§§ 17200 et seq. This Court has federal question subject matter jurisdiction over

the federal claims pursuant to 28 U.S.C. §§ 1331 and 1338(a) and 15 U.S.C. §

1121. This Court has subject matter jurisdiction over the state law claim under 28

U.S.C. § 1338(b) and the doctrine of supplemental jurisdiction.

8. This Court has personal jurisdiction over defendant because defendant

is incorporated and domiciled in California.

9.

Venue is proper in this Court pursuant to 28 U.S.C. § 1391(b)(2)

because a substantial part of the events giving rise to Fox’s claims against

defendant occurred in the Central District of California. Fox created, produces,

distributes, exhibits, and sells the purportedly infringing properties in this District;

attempted to resolve the dispute with defendant in this District; and received threats

of litigation and cease-and-desist letters from defendant in this District. Venue is

also proper in this Court pursuant to 28 U.S.C. § 1391(b)(1) because defendant

directed its cease-and-desist letters to this District and also, on information and


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dealer turned music mogul Lucious Lyon (played by Academy Award-nominee

Terrence Howard) is diagnosed with a fatal disease, viewers watch his ex-wife,

Cookie (played by Academy Award-nominee Taraji P. Henson), and their three

sons fight for future control over Lucious’ powerhouse music and entertainment

company. This fictional company is fittingly called “Empire Enterprises,” as it is a

veritable—and fantastical—conglomerate based in New York City. In addition to

producing hip-hop and R&B hits, Empire Enterprises is portrayed to own anightclub, make champagne and sneakers, and generate over $343 million in annual

revenue.

11. By all accounts, Empire is a massive hit, garnering widespread

attention, critical acclaim, and unprecedented ratings success. For example, Empire

has set multiple viewership records since its debut. Its recently-aired season finale

reached 16.7 million same-day viewers. This represented an entire season in which

each episode attracted more viewers than the last. No program has accomplished

even five weeks of consecutive viewership growth under the modern system for

measuring viewership, in place for over two decades. FBC renewed Empire for asecond season on January 17, 2015.

12. Music is, not surprisingly, featured prominently on Empire. This

music includes original songs produced for the show by Grammy Award-winning

producer Timothy “Timbaland” Mosley. Through Columbia Records, Fox releases

songs following the broadcast of each new episode, and it recently released an

Empire compilation soundtrack (collectively, the “Soundtrack Music”). The album,

Empire: The Original Soundtrack from Season 1, debuted as the number one


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DEFENDANT’S ALLEGED TRADEMARKS

13. Defendant claims rights to three purported trademarks: “Empire,”

“Empire Distribution,” and “Empire Recordings.”

14. Defendant has never applied for federal registration of a trademark in

“Empire.”

15. Defendant’s January 24, 2014 application for registration of “Empire

Distribution” to identify various non-electronic music recordings is pending, andwas initially denied by the United State Patent and Trademark Office (the

“USPTO”) due to a likelihood of confusion with “Empire Entertainment” and

“DVD Empire.” The USPTO has not yet taken action on defendant’s December 10,

2014 application for registration of “Empire Distribution” to identify electronic

delivery of musical recordings.

16. Defendant’s January 24, 2014 application for registration of “Empire

Recordings” to identify various non-electronic music recordings is pending, and it

was initially denied by the USPTO due to a likelihood of confusion with “Empire

Entertainment” and “DVD Empire.”17. Defendant claims to use the logo below:

Fig. 1.

18. Upon information and belief, the Empire Distribution logo does not

generally appear on its album covers.

19 Upon information and belief Empire Distributions Inc was not




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page. None of the other hits on the first six pages were related to defendant. And

the entries on the first six pages are predominantly for other record labels with

“empire” in their name, such as Empire Records, Royal Empire Records, American

Empire Records, and Empire State Recordings.

21. On March 23, 2015, a Google search for “Empire Distribution Inc.”

displayed defendant’s website as the fifth result, with none of the earlier entries

referring to defendant.22. Empire is a common word in trademarks, including in the

entertainment field. For example, just in the State of California, there are

companies doing business as Empire Recordings LLC; Dark Empire Recordings

LLC; Empire Entertainment, Inc.; Empire Entertainment Productions, Inc.; Empire

Media Center; and Empire Publishing, Inc. There is even a film called Empire

Records. Outside the State of California, as well as outside the entertainment field,

there are myriad more Empire-related marks.

FOX’S USE OF THE WORD “EMPIRE”

23.

Empire is the title of Fox’s breakout dramatic series. EmpireEnterprises is the name of the fictional company at the heart of the series. The

Soundtrack Music also prominently bears the Empire series logos along with other

indicia from the series so that consumers can associate it with the television show.

24. Fox has spent hundreds of thousands of dollars to advertise and

promote the series. These efforts included developing consistent branding. For this

reason, Fox uses several, related logos to identify Empire and the music therefrom.

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25. The following two logos are exemplars of those used to promote the

series itself:

Fig. 2.

Fig. 3.

26. The following two logos are exemplars of those used to promote the

Soundtrack Music:

Fi 4

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Fig. 5.

DEFENDANT’S CLAIMS

27. On February 16, 2015—three days after Empire increased viewership

for a then-record fifth straight week and claimed a total viewership of 11.9

million—defendant sent Fox a claim letter, authored by outside counsel, accusing

Fox of using defendant’s alleged marks without authorization. See Exhibit A.

28. This letter claimed trademark infringement under sections 1114 and

1125(a) of the Lanham Act. Defendant claimed that 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. 29. This letter also accused Fox of trademark dilution by tarnishment.

Defendant’s theory is 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.”

30.

Defendant demanded that Fox issue document preservation notices for

all records that are potentially relevant to this dispute.

31. During a subsequent March 6, 2015 telephone call, defendant, also

g gg g #:667



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“options” to settle the claims made against it: (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.”

33. Faced with defendant’s increasing claims and demands, Fox

commences this action to affirm its rights.

COUNT ONE-DECLARATORY JUDGMENTREGARDING FEDERAL TRADEMARK INFRINGEMENT

(28 U.S.C. §§ 2201 et seq . and 15 U.S.C. § 1125(a))

34. Fox repeats and realleges each allegation contained in paragraphs 1

through 33 of this complaint as if fully set forth herein.

35. Defendant has alleged that the fictional television series Empire and

the related Soundtrack Music infringe its purported trademark rights in “Empire,”

“Empire Distribution,” and “Empire Recordings.” Defendant has further made

demands for millions of dollars to settle these purported claims. By virtue of

defendant’s conduct, Fox has a real and reasonable apprehension of litigation and

has been brought into adversarial conflict with defendant.

36. Defendant’s conduct threatens to place a cloud over Fox’s intellectual

property rights in the fictional television series Empire and the Soundtrack Music.

37. By reason of the foregoing, there now exists between the parties an

actual and justiciable controversy concerning Fox’s and defendant’s respective

rights with respect to the use of the word “Empire.”

38. The aforesaid declaration is necessary and appropriate at this time so

#:668

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in connection with the Soundtrack Music does not infringe defendant’s trademark

rights, if any.

COUNT TWO-DECLARATORY JUDGMENT

REGARDING FEDERAL TRADEMARK DILUTION

(28 U.S.C. §§ 2201 et seq . and 15 U.S.C. § 1125(c))


through 33 of this complaint as if fully set forth herein.42. Defendant contends that Fox’s portrayal of the main character in the

fictional television series Empire dilutes, by tarnishment, its purported trademark

rights in “Empire,” “Empire Distribution,” and “Empire Recordings.” Defendant

has further made demands for millions of dollars to settle these purported claims.

By virtue of defendant’s conduct, Fox has a real and reasonable apprehension of

litigation and has been brought into adversarial conflict with defendant.

43. Defendant’s purported marks are not “famous marks” entitled to

protection under 15 U.S.C. § 1125(c)(1).

44.

Defendant’s conduct threatens to place a cloud over Fox’s intellectual



actual and justiciable controversy concerning Fox’s and defendant’s respective

rights and obligations with respect to the use of the word “Empire.”


that Fox’s right to continue its conduct can be affirmed.

47. Fox has no adequate remedy at law.

#:669

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COUNT THREE-DECLARATORY JUDGMENT

REGARDING STATE UNFAIR COMPETITION

(28 U.S.C. §§ 2201 et seq. and Cal. Bus. Prof. Code §§ 17200 et seq .)


through 33 of this complaint as if fully set forth herein.

50. Defendant contends that Fox’s use of the mark “Empire” in the title of

its fictional television series, in connection with the fictional entity “EmpireEnterprises,” and in connection with the Soundtrack Music constitutes unfair

competition. Defendant has further made demands for millions of dollars to settle

this purported claim. By virtue of defendant’s conduct, Fox has a real and

reasonable apprehension of litigation and has been brought into adversarial conflict

with defendant.

51. Defendant’s conduct threatens to place a cloud over Fox’s intellectual



actual and justiciable controversy concerning Fox’s and defendant’s respectiverights with respect to the use of the word “Empire.”


that Fox’s right to continue its conduct can be affirmed.

54. Fox has no adequate remedy at law.

55.

Accordingly, Fox seeks, pursuant to 28 U.S.C. § 2201, a judgment

from this Court that Fox’s use of the word “Empire” in the title of its fictional

television series, in connection with the fictional entity “Empire Enterprises,” and

#:670


#:671


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fictional television series, in connection with the fictional entity “Empire

Enterprises,” and in connection with the Soundtrack Music does not:

i.

Infringe, dilute, or otherwise violate any of defendant’s

trademark rights;

ii. Violate Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a);

iii. Violate Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(c);

iv.

Violate California Business and Professions Code §§ 17200 et seq.;

v. Violate any applicable common law or statutory unfair

competition law;

B. For a permanent injunction enjoining defendant, and its agents,

servants, employees, attorneys, successors and assigns, and all persons, firms and

corporations acting in concert with it, from making false statements and

representations to third parties asserting that Fox has violated its trademark rights,

if any;

C.

For Fox’s attorney fees and costs incurred; andD. For such other and further relief as the Court deems just and equitable.

Dated: March 23, 2015 MARVIN S. PUTNAM

O’MELVENY & MYERS LLP

By: /s/ Marvin S. Putnam Marvin S. Putnam

Att f T ti th C t F

#:671


#:672


24/176

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5

6

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8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23


Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Fox hereby

demand a trial by jury for all issues triable to a jury.

Dated: March 23, 2015 MARVIN S. PUTNAMO’MELVENY & MYERS LLP

By: /s/ Marvin S. Putnam Marvin S. Putnam

Attorneys for Twentieth Century FoxTelevision, a division of TwentiethCentury Fox Film Corporation, and FoxBroadcasting Company

#:672

Case 2:15-cv-02158 Document 5 Filed 03/23/15 Page 2 of 20 Page ID #:21Case 2:15-cv-02158-PA-FFM Document 41-4 Filed 12/15/15 Page 25 of 176 Page ID#:673


25/176

ExhibitA

#:673

MI

CdE

L

r’OEBS

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TROUTVAN

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rson

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G

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PIRE

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adem

ark

Inf

ringe

men

t

De

ar

Mr

.

Z

weif

ach:

Our

firm

re

pres

ents Em

pire D

istri

bu ti

on In

c. “E

mp ir

e” ,

a we

ll-kn

own mus i

c rec

ord

l

abel

and

m

usic d

istrib

utio

n

co

mpa

ny th

at

has

rele

ased

alb

um s

in

a

w

ide

va

riety

of genr

es ,

but

spec

ifica

lly foc

usin

g

on

h

ip

hop

,

rap ,

and R

B

, un

de r the

ma

rks

EMP

IRE

TM,

EM

PIRE

DISTRIBUTIONTM and

EMPIRE

RECORDINGSTM

t he “Marks”)

see

http://empLre or

ww

w.em

pir

edist

ribu

tion.

com

.

O

ver

th

e

p

ast fiv

e yea

rs,

Em

pir e

has bec

ome

o

ne

of t

he lar

ge st

distr

ibuto

rs and

pro

duce

rs of d

igita

l

m

usic

in the c

oun

try.

It has h

ad

num

ero

us

Bill

boar

d char

ting

re

lease

s

f

rom well

-rec

ogni

zed artis

ts u

nder

its

lab el

,

havi

ng

par

tner

ed

wi

th no

tabl

e ar t

ists

such as

Ke

ndric

k

La

mar

, Mig

os. T

he Fo

reig

n Exc

han

ge a

nd

Sno

op

Dog

g. Song

s

rele

ased

b

y E

MP

IRE

R

EC

ORD

ING

S

h

ave

earn

ed

pla

tinu

m an

d

g

old

r

ecord

s

a

nd

th

e

lab

el

has spon

sore

d

so ld-

ou t

sh

ow c

ases u

nde

r

its

n

ame

a

t

eve

nts su

ch a

s

S

outh

by

Sou

thw

est.

Emp

ire, un

de r

bo t

h

t

he

R

ECO

RD

ING

S

a

nd

DIS

TRIB

UT

ION

M

ark

s, h

as

built

rel

ati on

sh ip

s

acro

ss t

he m

usic i

ndu

stry to

suc

cess

fully r

eco r

d,

p

rom

ote, a

nd

dis

tribu

te

p

latin

um -

and

go ld-certified

records. As part

of

its

par tnersh ip

with

Universal/Repub lic

Records,

Empire

Rec

ordi

ng s was

r

ecog

niz e

d

by

t

he

Reco

rdin

g

In

dus

try A

ssoc

iatio

n

of

A

me ri

ca for its

role

in

selli

ng o

ver

1,5

00 ,0

00

reco

rds

for the

arti

st Sag

e

t

he

Ge

mini

. Se

e

At

tach

men

t

A.)

Th

e Ma

rks

h

ave

be

en

prom

ine

nt ly

u

sed

i

n p

re ss re

leas

es

and

cove

rage

o

f

tho

se re

cord

s. Sep

arate

ly,

Emp

ire

Rec

ordi

ng s is en

gage

d

in an o

ngoi

ng re la

tio ns

hip

wit

h At

lanti

c

Re c

ords

to

co-

deve

lop ,

dis tr

ibu t

e,

an

d m

arke

t arti

sts. Th

rou

gh its

p

artne

rshi

p

w

ith

eO

ne

and

ot

hers,

Emp

ire

h

as

d

istri

bu te

d, ma

rket

ed,

a

nd s

old

tho

usan

ds of p

hysic

al rec

ords und

er

it

s

Ma

rks

do

mes

tical

ly

and

arou

nd

the w

orld.

B

eyo

nd

t

his

w

ides

prea

d

exp

osu

re, the

Ma

rks h

ave b

ee n th e

sub

ject

of

b

road

ad

ve rt

isi ng

and

promot iona l

campaigns

and

online presence. The Marks became

a

recognized

symbol for

A

TLA

NT

A

IJ

ING

CHA

RL

OTT

E

CH

ICA

GO

HON

KONG

N EW Y ORK

O

RAN

GE COU

NT

Y POR

TLA

ND

RA

LE

IGH RIC

Hf I

OND

SAN

D

JEG

O SHA

NG

HAI

TYS

ON

S

C

OR

NER V

IRG

INIA BEA

CH

W

AS

HIN

GTO

N

DC

7 9

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15EXHIBIT 2

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OUT

M

N

S N

ER

S



27/176

Ge

rson

A

.

Zw

eifac

h

Feb

ruar

y

1

6, 201

5

Pa

ge 2

qu

ality

musi

c

an

d m

usi

c ser

vice

s year

s a

go. S

ee A

ttac

hm e

nt B.

As a

res

ult, th

e Ma

rks

are wel

l

known

among the

re levan t

consum ing

public

as

identifying

Em pire’s goods

and

service s. Due

to

the

tr

eme

ndou

s am o

un t

of

va l

uable

goo

dw il

l E

mp i

re has

de

ve lo

ped in th

e

Mar

ks,

it c

ann

ot

to l

erate

the

una

utho

rize

d u

se o

f its M

arks

, be c

ause

such

un

autho

rize

d

use

is li

kely to c

ause

con

fUsi

on

am

on g t

he

pub

lic

as

to

the

so

urce

,

o

rigi

n,

spo

nsor

ship

,

or aff i

liatio

n

of

se

rvice

s

iden

tified

by

the M

ark

s, bu

t not

a

uth o

rize

d by Emp

ire.

Th

e rec

en t de

but

of

FOX

’s

tel

ev is

ion p

rogr

am Em

pire

has

c

reate

d s

ignif

ica n

t con

fusi

on

with

Em

pir e

’s pr

oduc

ts an

d se

rvice

s

i

n

the

mark

etpl

ace

As

yo

u

kno

w,

the

pr

ogra

m

fol

lows

th

e

fi

ction

al hip

hop

m

usic

la

be l nam

ed “Em

pire

Ent

erpr

ise s

” N

um e

rous con

sum

ers,

ar

tists

and

bu

sin e

ss par

tners

have

ex

press

ed con

fusio

n

to

Em

pire wi

th re

gard

s

to w

heth

er

t

he

Em

pire

pro

gram h

as any affili

ation

or

business relationship with

Empire , which

it

does not .

FOX’s

use

o

f

the

“E m

pire

” mar

k belo

w in

all

u

pp e

r cas

e

lette

rs, the

sa

me fo

nt trea

tme

nt

as ou r

c

lien

t, has

signi

fica

ntly

ex

acer

bate

d

this

co

nfus

ion.

E

M

P

IR

E

M

P

R

F

OX

’s u

se of a

city

s

kylin

e

grap

hic

in

con

junc

tion w

ith

the “Em

pir e

” mar

k,

a

c

omb

inati

on

or

igina

ting

w

ith

o

ur

cl

ien t,

in

bo t

h m

arke

ting

mat

eria

ls

and

me

rch a

nd is

e has made

th

e con

fusio

n

betw

een

t

he two

title

s ine

scap

able.

EMPIRE

Mo

reo v

er. F

OX

dver

tises

distr

ibu t

es

a

nd

sell

s mus

ic un

de r

the

“E

mp i

re”

m

ark

.

Be

caus

e th

is

mus

ic sha

res th

e sam

e se

arch

term

s

as E

mp ir

e’s mu

sic, a

nd the

m

usic

al ge

nres

are

iden

tica

l, the

al

bum

s an

d

s

ongs

hav

e been

po si

tio n

ed

in

cl

ose

pro

xim

ity

in

onl

ine

st

ores s

uch

a

s

ilune

s Go

ogle

Play

.

A

ma

zon c

om

Spo

tify a

nd

Rdio

.

See

A

ttac

hme

nt B. Th

is

f

urth

er

p

erpet

uate

s dam

agi

ng publ

ic

co

nfus

ion .

Th

e

fed

eral

L

anha

m Ac

t an

d

sim

ilar

sta te

law

s proh

ibit F

OX

’s use

o

f

a

t

r de

m rk

i

n

com iection w ith the

adve rti sing

or

sale

of

any

goods

or

services

when such

use

is

likely

to

cause

47 9

37 v 16EXHIBIT 2

22

TR

OU

TM

N

S

N

ER

S



28/176

Ge

rson

A

.

Z

we i

fach

Fe

brua

ry 1

6, 201

5

Pa

ge

c

on fu

sio n

a

s to

the

so

urce

of

tho s

e g

oods

or

s

ervic

es.

15

U.S

.C.

1114

,

1125

a .

The

Lan

ham

Act also

prohibits

any person

or

entity

from

us ing

a

word

or name

in

a

manne r

tha t

is

likely

to

c

ause

con

fusi

on

as

to

the

aff

iliati

on ,

conn

ec tio

n

or

ass

ocia

tion

wi

th an

othe

r

pe r

son o

r en

tity.

FOX

’s

u

naut

ho riz

ed u

se

of the

M

arks

has

alrea

dy co

nfus

ed

and

is

li

ke ly

to

c

on tin

ue

to co

nfus

e

me

mbe

rs

of

the

pu

blic

int

o be

liev

ing

tha

t

y

ou

are

an

ap

prov

ed

licen

see o

f

or

o

the r

wise a

ffi lia

ted

with

Em

pire,

th

e

very

typ

e

o

f

dec

eptio

n

that

the

se

law s

pro

hibit

.

Mor

eove

r,

Em

pire’

s

po

nray

al

of

a

lab

el r

un

by a ho

mop

hob

ic

drug

de

aler

pron

e

to

m

urde

ring

his

fr

iend

s

thr e

aten

s

to tar

nish

th

e b

rand

an

d

ha

rm

the

go

odw

ill

bu i

lt

b

y

ou

r

cl

ient .

Re

med

ies

prov

ided

for

unde

r th

e Lan

ham

Ac

t

inc

lude

inju

nc ti

ons a

nd

mo

neta

ry d

am a

ges.

Emp

ire

r

eque

sts

t

hat

with

in

sev

en

7

ca

lend

ar d

ays

of

th

e

date of thi

s

lett

er F

OX

respond

to set

a

meeting

to

discuss these

legal issues.

If

we do no t

receive

a

tim ely response,

we

will

ass

ume

FOX

doe

s

n

ot

wi

sh

to

pur

sue

a

res

olut

ion

in

this m

atte

r

a

nd

w

ill adv

ise

Em

pir e

acc

ordi

ng ly

W

e

a

lso

req

ues t

tha t

FOX

i

mme

diat

ely p

reser

ve

a

ll doc

ume

nts ,

d

ata, an

d

ta

ngib

le t

hing

s

her

eafte

r

“Re

cord

s”

in

it

s po

ssess

ion

cus

tody

,

a

nd

c

ontr

ol

that

are

po

tent i

ally

re

lev a

nt

to

the

sub

jec t

m

atte

r

of

t

his

di s

pute

, inc

ludi

ng

all

ele

ctr o

nic al

ly

stor

ed

i

nfor

mati

on , an

d no

t d

estro

y,

d

elete

,

eras

e

or

over

w

rite

any

s

uch m

ate

rials

.

T

he sc

ope

of

prese

rvat

ion

sho

uld

inclu

de,

at a

mi

nim

um

all

Re

cord

s rel

ating

to t

he

c

once

pt io

n, de

velo

pmen

t,

and

la

unc

h

of

the

Emp

ire

pro

gram

;

all c

omm

uni

ca tio

ns a

nd

oth

er

ma t

erial

s

e

xch

ange

d

reg a

rdin

g the

sele

ction o

f

the

Empire

program

name

and its

logo;

and all

cost

and

financial Records

relating

to

the creation and

ro

ll ou

t of

the

prog

ram

.

T

his

lette

r

does no

t

co

nta i

n

a

f

ull an

aly s

is of

all

of t

he le

gal

is

sues

rel

ated

to

this

ma

tte r

an

d

is mad

e

wi th

ou t

a

ny

wa

iver

of

any

r

ights

or

re

med

ies

whi

ch

a

re

ex

press

ly res

erve

d.

Sinc

erely

,

J

a

7

1

_

M

ich

ael

D.

H

obb

s

Jr.

2

4

7 9

4

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17EXHIBIT 2

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29/176

Bcc

v ia e-mail

only :

Mr.

Ghazi

Shami

Vinny

Kumar,

Esq.

Scott

Kenily,

Esq.

24 7094

v 18EXHIBIT 2

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30/176

TT

HM

EN

T

A

Pe dal ”

The

EMP

IR E

R

E O

R

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rk in

u

se alon

gside

the R

epu

blic

Rec

ords

ma

rk

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eir

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c

ertif

ied

pl

atinu

m pla

qu e

co

mm

emo

ratin

g their

sa l

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r

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Ga s

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947

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31/176

ce

rtifi

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pla

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p

laq u

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omm

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eir sale

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r

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e E

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IRE

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IN

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ark in

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R

20EXHIBIT 2

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res

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ip H

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ap.

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usic

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ased

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’l

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E

mpi

re Rec

ordi

ngs

an

d

t

an

tic

R

ecor

ding

Co

rpor

ation

for

the

Un

ted

St

ates

n

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Inte

rnati

onal

tor

th

e

worl

d D

Ut i

de

o

f

the

Un

ited

Sta

tes

The

EM

PIR

E R

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RD

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S

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ark

in

use al

ongs

ide

th

e

t

lanti

c

Rec

ordi

ng mark

in

t

he

iT

unes

stor

e

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aw

in i

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es

4 7 9

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33/176

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ENT

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h

zi

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go

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ove

men

t is

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W I L

KEMP RE

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mez

zyo hel

lraza

hgra

m

west

o s

ttrey

’n

2

2 o

we’s

ke h

s

blgt

oneB

5

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Jay

tee7

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very

n

onth

r

gha

zl

De

pend on

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rke

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p

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mpi

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Case 2:15-cv-02158-PA-FFM Document 15 Filed 06/04/15 Page 1 of 12 Page ID #:69Case 2:15-cv-02158-PA-FFM Document 41-4 Filed 12/15/15 Page 41 of 176 Page ID #:689


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PAUL L. GALE (SBN 065873) [email protected] N. VILLAR (SBN 204038)

[email protected] SANDERS LLP5 Park Plaza, Suite 1400Irvine, California 92614-2545Telephone: (949) 622-2704Facsimile: (949) 769-2052

JOHN M. BOWLER ( pro hac vice) [email protected]

MICHAEL D. HOBBS ( pro hac vice)[email protected] SANDERS LLPBank of America Plaza600 Peachtree Street NE, Suite 5200Atlanta, Georgia 30308-2216

Attorneys for Defendantmpire Distribution Inc.



WESTERN DIVISION

TWENTIETH CENTURY FOXTELEVISION, a division ofTWENTIETH CENTURY FOXFILM CORPORATION, a Delawarecompany, and FOXBROADCASTING COMPANY, aDelaware corporation,

Plaintiffs,

v.


Defendant

Case No. 2:15-cv-02158-PA-FFM

Hon. Percy Anderson

EMPIRE DISTRIBUTION, INC.’S

ANSWER TO COMPLAINT




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Defendant Empire Distribution, Inc. (“Empire”) hereby answers the

Complaint for Declaratory Relief (“Complaint”) of Plaintiffs Twentieth Century

Fox Television, a division of Twentieth Century Fox Film Corporation, and Fox

Broadcasting Company (collectively “Fox”) as follows:

NATURE OF THE ACTION

1. Empire admits that Fox brought this suit as a preemptive action

intended to deprive Empire of its natural position as plaintiff, in anticipation of

Empire’s filing suit against Fox for trademark infringement. Empire is without

knowledge or information sufficient to form a belief about the truth of the

remaining allegations in paragraph 1, which therefore are denied.

2. Empire admits that Fox seeks a declaration that it does not violate

Empire’s trademark rights, but denies that Fox is entitled to any such relief. Empire

denies the remaining allegations in paragraph 2.

PARTIES

3. Empire is without knowledge or information sufficient to form a belief

about the truth of the allegations in paragraph 3, which therefore are denied.





6. Empire admits that it is a California Corporation, but that its principal

place of business is at 16 Maiden Lane, Fourth Floor, San Francisco, CA 94108.

JURISDICTION AND VENUE



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FOX’S ALLEGED INTELLECTUAL PROPERTY

10. Empire admits that Empire is a television series with music. Empire is

without knowledge or information sufficient to form a belief about the truth of the




12. Empire admits that music appears on Empire. Empire is without



DEFENDANT EMPIRE’S TRADEMARKS

13. Empire denies that its trademarks are “purported.” Empire admits the

remaining allegations in paragraph 13.

14. Empire denies that it has not applied for federal registration of the

mark “EMPIRE.” Empire specifically shows that it is also the owner of U.S.

Trademark Application Nos. 86/477,123, 86/476,822 and 86/174,484 for EMPIRE

DISTRIBUTION and U.S. Trademark Application No. 86/174393 for EMPIRE

RECORDINGS.

15. Empire admits that its application for EMPIRE DISTRIBUTION

(Serial No. 86/174,484) filed January 24, 2014 was initially refused by the USPTO.

Empire denies that the USPTO has not taken action on its applications for EMPIRE

DISTRIBUTION (Serial Nos. 86/477,123 and 86/476,822 ) filed December 10,

2014.

16. Empire admits the allegations in paragraph 16.



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Empire specifically shows that in a search of the Internet using the Google search

engine conducted April 15, 2015, Empire was referenced in the first, third and sixth

organic search results among many others.



Empire specifically shows that in a search of the Internet using the Google search

engine conducted April 15, 2015, Empire was referenced in the second and fifth

organic search results among many others.

22. Empire denies the allegations of the first sentence in paragraph 22.

Empire admits that its affiliated companies, Empire Recordings, Inc. and Empire

Publishing, Inc., do business in the State of California. Empire is not aware of any

California entity named Empire Recordings, LLC and is otherwise without



FOX’S USE OF “EMPIRE”

23. Empire admits that Fox’s television series is named Empire. Empire

further admits that Empire Enterprises or Empire Entertainment is the name of the

company featured in the Empire series. Empire further admits that Fox promotes,

markets and sells music featured on the Empire series using the “Empire” name and

logos. Empire is without knowledge or information sufficient to form a belief

about the truth of the remaining allegations in paragraph 23, which therefore are

1 25 E i d i h h l d i d i h 25



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25. Empire admits that the two logos depicted in paragraph 25 are

examples of the different logos used by Fox to promote the Empire series.

26. Empire admits that the two logos depicted in paragraph 26 are

examples of the different logos used by Fox to promote the sale of the music

featured on the Empire series.

DEFENDANT EMPIRE’S CLAIMS

27. Empire admits that its outside counsel sent a letter to Fox’s General

Counsel dated February 16, 2015 asserting trademark infringement. To the extent

paragraph 27 purports to describe, characterize or quote the terms of the February

16, 2015 letter, the document speaks for itself, should be read as a whole, and

provides only as stated therein. Empire refers the Court to the document for a full

and complete statement of its content. Empire is without knowledge or information

sufficient to form a belief about the truth of the remaining allegations in paragraph

27, which therefore are denied.

28. Empire admits that its outside counsel’s February 16, 2015 letter

asserted trademark infringement and likelihood of confusion against Fox. To the

extent paragraph 28 purports to describe, characterize or quote the terms of the

February 16, 2015 letter, the document speaks for itself, should be read as a whole,

and provides only as stated therein. Empire refers the Court to the document for a

full and complete statement of its content. Empire denies the remaining allegations

in paragraph 28.

29. Empire admits that its outside counsel’s February 16, 2015 letter

asserted that Fox threatens to tarnish the brand and harm the goodwill built by

1 30 E i d it th t it t id l’ F b 16 2015 l tt



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