Fox Sues Humor Writer for Using 'Signature' Slogan (Al "Irrelevant" Franken)

Yahoo! News ^ | August 12, 2003 | Reuters

[El Conservador]

NEW YORK (Reuters) - Fox News Network is suing humor writer Al Franken for trademark infringement over the phrase "fair and balanced" on the cover of his upcoming book, saying it has been "a signature slogan" of the network since 1996.

According to court papers made available on Monday, Fox is seeking a temporary or permanent injunction against Franken and publisher Penguin Group to stop them using the phrase in connection with the book to be published next month.

The network, part of the News Corp group, also asked Manhattan Supreme Court for compensatory and punitive damages.

The title of liberal satirist Franken's new book is "Lies and the Lying Liars Who Tell Them." At the bottom of the planned cover is the tag line, "A Fair and Balanced Look at the Right."

Fox claims the use of the phrase is intended to confuse the public and boost book sales.

In the lawsuit, Fox said the network was created "as a specific alternative to what its founders perceived as a liberal bias in the American media."

A spokeswoman for Penguin imprint Dutton, Lisa Johnson, called the lawsuit "extraordinary."

"In trying to suppress Al Franken's book the News Corp is undermining First Amendment principles that protect all media by guaranteeing a free, open and vigorous debate of public issues," she said.

"The attempt to keep the public from reading Franken's message is un-American and runs contrary to everything this country stands for."

Franken worked as a comedy writer in the 1970s and has appeared frequently on "Saturday Night Live."

Reuters/VNU

[Atlas Sneezed]

"Yes, but if he did not appropriate their slogan as his, but rather used their slogan as "satire" then I think he's okay. Satire is protected."

Legally irrelevant. All that matters is whether the phrase is used on the same goods or services as by the original user of the phrase. Satire is no defense if used on the same goods, and a defense is not needed if the goods are different.

[libravoter]

They have the right to exclude others from using them in conjunction with the provision of television news and entertainment services

Satire directed at Fox is definitely protected from the trademark law you are citing.

[Atlas Sneezed]

"Based on the words alone, I would say that FoxNews doesn't have much of a case. But given the fact that the cover shows Franken standing in a TV control room with two of four TV screens showing FoxNews personalities, their case is strengthened."

They have no trademark infringement case, since the goods are different. It doesn't matter if the cover is a close-up of Bill O'Reilly's private tattoo (though that might give rise to a different cause of action.)

[libravoter]

All that matters is whether the phrase is used on the same goods or services as by the original user of the phrase.

Agreed. But television news and satire directed at television news are not the same goods and services.

[joesnuffy]

Franken.....humor?....I dont see the connection

[Atlas Sneezed]

"The words "fair and balanced" belong to nobody."

"Fox seems to think they belong to them."

They do, but only in conjunction with news services.

[libravoter]

Oh, wait, I think we agree. (I hate when that happens ;->)

[Atlas Sneezed]

"The burden of proof is on Fox to show someone could be confused."

You don't even need to go there when the goods are different.

"There was a recent case in the south where a sex novelty shop (toys and such, I think) called itself "Victor's Little Secret". Victoria's Secret sued. The court ruled no reasonable person could have thought the two were related."

No. The court ruled that there needed to be evidence provided to support the allegation of confusion. Such evidence regularly appears in trademark infringement litigations. (Note that the VS case both involved selling lingerie, while humor books and news programming are different goods/services.)

[moehoward]

wuss lib.

BUMP

[tomakaze]

while Franken's definately a tit, Fox's case is pure B.S.

[Atlas Sneezed]

""They have the right to exclude others from using them in conjunction with the provision of television news and entertainment services""

"Satire directed at Fox is definitely protected from the trademark law you are citing."

Not necessarily. Satire is not an absolute defense. Certainly not when the same mark is used on the same goods.

[Your Nightmare]

If Fox looses (and they will), maybe they can send Franken a bill for marketing & promotion.

Good job, Fox! Really brilliant!

[Your Nightmare]

Not necessarily. Satire is not an absolute defense. Certainly not when the same mark is used on the same goods.

Is Franken's book "entertainment services in the nature of production and distribution of television news programs"?

[Constitutional Patriot]

What a "f"ing J.O.

[triplejake]

Well, whether the products are sold in the same channels of trade is a factor in the analysis, but wouldn't be dispositive here, where there is at least some relationship between the infringing and infringed products (if the book was called something like "The Fair & Balanced Guide to the Middle East," Fox might conceivably have a case). Agree with the other posts, though, that likelihood of confusion (the test of infringement) is extremely far-fetched here.

[irgbar-man]

I'm not even sure what the man believes.

I think he's in the "What would Wellstone do?" wing of the Democrat-media complex.

[DeweyCA]

How does all of this relate to Spike Lee "spiking" the "Spike channel" for trademark infringement? Is that another case of a company being afraid of looking bad when a minority complains about something? A ruking was made against the channel, and in favor of Spike. Was that affirmation action justice?

[Range Rover]

Is it REALLY Satire?

None of us has read the "book" and I think we're all making a leap of faith assuming that this "humorist" would stick faithfully to his genre - whatever that is.

It appears that Franken AND Penguin knew exactly what they were inviting. Any publisher of volume would no doubt have dealt with copyright issues and wordmark suits at some time in the past - at least enough to know what to expect from something like this.

There looks to be no blatant disclaimer on the cover offered stating "Not Affiliated with News Corp" so someone not intimately familiar with either Franken or Fox may put 2 and 2 together and get "Franken's book is from Fox". It's not too hard to imagine a non-US person not knowing who Franken is.

Bottom line is that Franken is using a wordmarked phrase and the images in the background are there to suggest a connection to the contents being about Fox. If he were a bit more intellectually honest (an impossibility, I'm sure), he would have the words FOX NEWS somewhere in the title instead of alluding to the connection in the manner he did/is.

[libravoter]

A ruling was made against the channel, and in favor of Spike.

All the ruling said was that the channel shouldn't be marketed as SpikeTv until the case was decided.

But the ruling also required Spike to put up an ungodly amount of money to be forked over as damages if Spike lost.

Hence, I believe they settled because they both had so much to lost. SpikeTV was supposed to go on the air in days, and so the channel wanted to market itself as SpikeTV ASAP, and Spike Lee stood to lose multi-millions if he lost his case.

[syriacus]

Trying to cash in Fox's popularity

What a great idea...cashing in on someone's popularity, (and, while you trash them, yet)

I plan on using the words

By Al Franken

someplace in the subtitle of a satirical novel

Maybe the title could be like this

Healing Malformed Teeth in the Middle East:
A Novelized Biography of the esteemed Egyptian Orthodontist
By Al Franken

My main character will be a orthodontist named By Al Franken.

Maybe I'll include a caricature of the orthodontist on the cover that looks like Al Franken in scrubs, too.

Putting Franken's name and picture on the cover should boost sales.