A Fox News Network business strategy backfired last week when Fox was literally laughed out of court. Fox News tried to stop Al Franken, the alleged comedian and satirist, from using its trademarked phrase “fair and balanced” in the subtitle of his new book. Fox News got something of a black eye in the press coverage of the case. And, in a classic illustration of the law of unintended — but surely not unforeseeable — consequences, Fox News did Franken a huge favor by generating priceless publicity for his book. All in all, Fox News doubtless would have been much better off gritting its collective teeth and keeping its mouth shut about Franken’s book.
The Situation: Al Franken is the author of such sober, thoughtful works as Rush Limbaugh is a Big Fat Idiot. (How the man won four Emmy awards for his work on Saturday Night Live, I’ll never understand.)
Franken was about to release a book entitled Lies, and the Lying Liars Who Tell Them: A Fair and Balanced Look at the Right. The book cover included a picture of, among others, Bill O’Reilly, a Fox News Network headliner.
Some folks at Fox News evidently took offense at Franken’s book and its subtitle. They must have cackled with glee (so to speak) when they learned that Fox News had previously obtained a federal trademark registration for the term “Fair and Balanced.”
The Business Decision: Fox News filed a lawsuit seeking an injunction to block publication of Franken’s book.
The Outcome: Things didn’t work out quite the way the Fox executives hoped.
- Fox News didn’t look too good in the press reports. (I can hear the likely response from certain quarters: “What else did you expect from the liberal media?”)
- In court, Fox News claimed that Franken’s use of the phrase “fair and balanced” would “blur and tarnish” Fox’s registered trademark. The New York Times reported that spectators in the courtroom laughed at Fox’s legal arguments.
- The judge was no kinder in his ruling; he held that Fox’s lawsuit was “wholly without merit, both factually and legally” and reportedly he was scathing in his criticism of Fox News. See the Reuters story for more quotes from the court hearing.
- Mr. Franken got the kind of national publicity for which most authors would cheerfully sacrifice a body part. His publisher, no doubt delighted by Fox’s unwitting gift, rushed the book into print ahead of schedule. The book quickly rose to No. 1 in the Amazon sales ranking.
Quotable Quotes: From a prior Reuters story: “‘You pay money to position your advertising so it becomes an American idiom,’ said Robert Thompson, media professor at Syracuse University. ‘Parodies in most cases do more good for a company than harm. It gets that brand out there.'”
Critique: What Could Fox News Have Done Differently?
- Fox News presumably knew that if you’re a trademark owner, you can’t baldly assert that someone else’s use of your mark is an infringement. The law requires that you demonstrate at least a likelihood of confusion — not a certainty, but more than just a possibility, of confusion — as to whether the other party’s products or services originated with you, or at least are sponsored or endorsed by you. The idea that anyone might would think Fox News had sponsored or endorsed Franken’s book is ludicrous on its face. (If your trademark is famous, you might also be able to assert “dilution” instead of infringement, but that’s another story.)
- Fox News should have remembered that, any time you start a high-profile squabble with someone who is at least semi-popular with the public, you risk taking a hit to your reputation if you lose.
- Fox News, of all people, should have realized that if you’re going to pick a fight where the other side will make a First Amendment argument, you can expect much of the press to line up against you, if not openly then implicitly. Moreover, Fox News is conservative in its general outlook, so it should have anticipated that the so-called liberal media might not be especially sympathetic.
Similar Stories: Reuters reports that other companies have tried similar tactics, with little success. For example, Verizon Communications unsuccessfully sued one of its union for using the catch-phrase “can you hear me now?” to protest layoffs.
- Susan Saulny, In Courtroom, Laughter at Fox and a Victory for Al Franken, New York Times, Aug. 23, 2003, at http://www.nytimes.com/2003/08/23/nyregion/23FRAN.html
- Gail Appleson, Fox Loses Bid to Stop Sale of Franken Book, Reuters, at http://www.reuters.com/newsArticle.jhtml?type=topNews&storyID=3324573
- Michele Gershberg, Who laughs last when parody goes to court?, Reuters, August 21, 2003, at http://www.reuters.com/newsArticle.jhtml?type=topNews&storyID=3318328