Redeye Preliminary Injunction Denied Despite Aurally Identical Marks
Chicago Tribune Co. v. Fox News Network LLC, No. 07 C 0865, 2007 WL 1052508 (N.D. Ill. Apr. 4, 2007) (Bucklo, J.).*
Judge Bucklo denied plaintiff Chicago Tribune's ("Tribune") motion for a preliminary injunction. The Tribune sought an injunction which would have required defendant Fox News Networks ("Fox") to change the name of its "Redeye" late-night television news program based upon alleged infringement of the Tribune's Redeye mark related to its Redeye newspaper. The Court held that the Tribune had only shown a "possibility" that it would prevail on the merits. The Court found that the Tribune's Redeye mark was at least suggestive and, therefore a strong mark. And the Court held that while the marks did not visually resemble each other, the Tribune proved a likelihood that the marks were aurally identical. But the evidence did not favor the Tribune on either of the other two "most important" factors in deciding likelihood of confusion: defendant's intent and actual confusion. No evidence showed that Fox "passed off" its program as coming from the Tribune, so the issue of Fox's intent favored Fox. As to actual confusion, the Tribune put forth a witness that testified that he suffered "momentary actual confusion" when he first learned of Fox's Redeye program, but that it was cleared up almost immediately by someone he was talking with about the program. Additionally, the witness did not have cable television, so could not watch the show. While initial confusion can be sufficient to show actual confusion, the Court disregarded the witnesses testimony because he admitted that he was a consumer of neither the Tribune's nor Fox's products.
Having determined that the Tribune had shown a "possibility" of success on the merits, the Court balanced the possibility against the potential harm to the public and to Fox. Fox presented evidence that it could not change the name of its program only in Chicago and would have to change it nationwide at great expense. While the Court was not persuaded by Fox's assessment of the monetary cost of changing the program's name, the Court held that changing the name would have been difficult for a show that had obtained a national audience and denied the preliminary injunction. The Court did, however, note that additional evidence might show that the relevant public is likely to confuse the Tribune's Redeye mark with Fox's Redeye program. As a result, the Court ordered expedited discovery and set a quick trial date -- August 6, 2007.
If you would like to read the opinion, which is very thorough and interesting, you can find it here.
* The Blog reported the filing of this suit in this prior post.
