Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

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.

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Murphy v. Murphy, No. 04 C 3496, 2007 WL 551576 (N.D. Ill. Feb. 15, 2007) (Darrah, J.).

Judge Darrah granted defendants summary judgment of noninfringement of plaintiff’s copyright. Plaintiff, a documentary filmmaker, filmed several residents of Chicago Housing Authority Projects. Plaintiff copyrighted his documentary film and, in early 1998, sent it to Oprah Winfrey at Harpo Productions. He requested that Winfrey and Harpo air his documentary on the Oprah Winfrey Show and that they forward it to a list of people in the film industry, several of whom are named defendants. Winfrey never responded to plaintiff and his documentary was never aired on her show. Shortly thereafter, defendants’ animated program, “The PJs” – telling the story of several fictional characters living in an urban housing project – aired on the Fox network. Plaintiff alleged that the defendants collectively infringed his copyrighted documentary by using scenes from it, as well as unique features of several of plaintiff’s subjects to make their characters.

The Court granted summary judgment for defendants for several reasons. First, after reviewing the evidence, including a comparison of clips from each work, the Court held that no reasonable jury could find that plaintiff’s documentary is substantially similar to The PJs. Plaintiff’s movie is a series of interviews of people, while The PJs is an animated program telling fictional stories using fictional characters. And to the extent that any similarities existed, they were in non-copyrightable elements of the video. For example, the Court noted that plaintiff could not hold a copyright in someone else’s appearance or how a building looks.

Second, plaintiff had not established that defendants had access to plaintiff’s film. Plaintiff only provided his film to Winfrey via Harpo Studios and plaintiff provided no evidence that she or anyone at Harpo had sent the film to any third party. Additionally, Harpo Studios never aired the film and plaintiff could not even provide any evidence proving that Winfrey or Harpo Studios had actually received the film.

Third, defendants presented uncontradicted evidence that they conceived of the characters and concept of The PJs before plaintiff sent his film to Winfrey and Harpo Studios. While The PJs began airing on Fox in 1999, defendants submitted evidence that they had drafted characters and plots for The PJs by December 1997.

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Over the weekend the Tribune ran two articles on trademark suits.  The first on Friday - 'March Madness' Use Approved - reported on a trademark suit in Cook County Circuit Court between Intersport, a Chicago-based sports media company, and the NCAA.  Intersport brought the action for, it appears, declaratory judgment that Intersport's license with the NCAA allowed it to use the NCAA's March Madness mark in connection with college-basketball related programming on wireless devices.  Circuit Judge Palmer held that Intersport could use the mark for distributing content "in any manner, including but not limited to distribution to video-enabled mobile wireless media devices."  The Tribune reports that Cingular Wireless, one of the NCAA's sponsors, offered wireless scores and highlights last year.  Last year, Intersport produced basketball-related wireless content for Sprint, but was barred from using the March Madness mark.  This year, it appears they will be free to use the mark.

The second Tribune story - Tribune Wants Fox `Red Eye' Title Closed by Phil Rosenthal - is about the federal trademark suit the Tribune filed last week against Fox.  The Tribune claims that Fox's new "Red Eye" news program violates the Tribune's federal trademark for its RedEye newspaper.  The Tribune's complaint argues that consumers were led to believe that the Tribune and Fox are collaborating on Fox's Red Eye program.  We will likely see more of this case on the Blog as opinions start to be issued.

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