"Fair and Balanced" Response From Court in Dismissing Fox News' Trademark Infringement Suit Against Al Franken

Copyright © 2003 Tonya M. Evans, Esquire. This article may not be copied, distributed, or re-published without the consent of the author. Send reprint queries to [email protected]

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Dateline: August 24, 2003

Now this is a story we rarely hear. In fact, when I first heard this story break a couple of weeks ago I could hardly believe my ears. A member of the media coming out AGAINST free speech? There must be some sort of mistake. But it's not a mistake. It is a real (and I use the term 'real' loosely) trademark infringement and trademark dilution case filed on August 7th by Fox News Network, LLC, owner of the world famous Fox News channel, against comedian Al Franken, author of the new book "Lies and the Lying Liars Who Tell Them: A Fair and Balanced Look at the Right" ("Lies"), and the book's publisher Penguin Group for using the phrase "Fair and Balanced" in the book's title.

What's all hub bub about the phrase, you ask? Well Fox News registered "Fair and Balanced" in December of 1998 as a federally protected service mark in connection with producing and distributing television news programs. The phrase, used since 1996, has become the Fox News signature slogan. Fox also took issue with the cover of the book, which contains a picture of Fox News personality Bill O'Reilly in what appears to be a Fox News studio.

Fox asserts in its complaint that Franken and Penguin use its trademark to "confuse the public as to the origin of the book, and accordingly, boost sales of the book." Fox asserts further that "Franken's reputation as a political commentator is not of the same caliber as the stellar reputations of [Fox's] on-air talent, [and] any association between Franken and Fox News is likely to blur or tarnish Fox News' distinctive mark ...." Puleeze.

But Fox's giant and illogical leap to claims of infringement and dilution against Franken for a use that is clearly legally permissible as satire, parody, and commentary is beyond me - and, fortunately, beyond the realm of understanding of the court. On August 22nd (only hours before I was due to release the first version of this article) US District Court Judge Denny Chin denied Fox's motion for a preliminary injunction to block publication and noted in a scathing opinion that the case was "wholly without merit, both factually and legally." In turn Dutton (an imprint of Penguin) released the book one month ahead of schedule in order to ride the wave of publicity that sent the title to #2 at Amazon.com on its first day.

But I have to admit that it's an interesting case, especially when you look at the delicate and ever-present balance between the value of the right to control one's intellectual property and the countervailing value of free speech.

Now let's clear up what a trademark is. Basically, a trademark is a word, phrase, symbol, logo etc. used to sell products. A service mark is the same but used in connection with the sale of services. It is common to use the term trademark or mark to refer to both trademark and service mark. Once you use words to sell products or services in more than one state (known as "interstate commerce"), your mark may be registrable as a federal trademark.

Note that trademark should not be confused with a copyright that protects an original artistic or literary work and a patent that protects an invention. All are intellectual property but each type serves a very different purpose.

In response to the frivolous suit, Dutton stated that Fox News "is undermining the First Amendment principles that protect all media, guaranteeing a free, open and vigorous debate of public issues. The attempt to keep the public from reading Franken's message is un-American and runs contrary to everything this country stands for."

It is an understatement to note that this suit flies in the face of the media's never-ending efforts to extend the reach of free speech and freedom of the press. Evidently Fox can dish it out, but can't seem to take it. Then again, if you know anything about Fox and Franken you know that this debate is more political than legal. Fox, a staunchly conservative television station and Franken, a devoutly liberal comedian, are at odds over the stuff (or is it fluff?) that fuels the pundit fires and tantalizes the Sunday morning news talking heads. But more than that, this law suit could very well be the chest-thumping aftermath of a run-in Franken had with Fox's Bill O'Reilly at this year's BookExpo America in Los Angeles while serving on the same panel. This altercation and other run-ins Franken has had with Fox and its news personalities is detailed by Fox in its complaint.

Regardless of the outcome of this lawsuit, this very well may be a win/win situation for both parties. Why? Because of old adage that any press is good press. During this controversy Fox received almost daily free exposure on the shows of its competitors and Franken's book is currently #1 at Amazon.com, a spot it enjoyed before it was even released.

For more information about intellectual property and literary law, check out Literary Law Guide for Authors and other publications from LE Series Books.

Literary Law Guide for Authors: Copyright, Trademark, and Contracts in Plain Language 
by Attorneys Tonya Marie Evans and Susan Borden Evans