What the Dominion Voting Systems Case Could Mean for the FOX NEWS Trademark

“Regardless of whether Fox wins this case under a freedom of press argument, its trademark, FOX NEWS, which indicates it is disseminating news, should likely be invalidated.”

https://depositphotos.com/stock-photos/fake-news.html?qview=142957863The Dominion Voting Systems lawsuit against Fox News attracted lots of attention. Claims of defamation, damages of $1.6 billion, the role of the First Amendment, and the press’ right to free speech were all key talking points around this lawsuit. What was not a part of these discussions were the implications to Fox’s trademark, FOX NEWS®. This case, even though it just settled, may have just cost Fox News a lot more than the $787.5 million settlement and the subsequent departure of Tucker Carlson—it could cost their name and brand.

The Complaint filed by Dominion Voting Systems (“Dominion) against Fox News Network, LLC (“Fox”) alleged:

1. Fox, one of the most powerful media companies in the United States, gave life to a manufactured storyline about election fraud…viewers began fleeing Fox in favor of media outlets endorsing the lie that massive fraud caused President Trump to lose the election…Fox set out to lure viewers back—including President Trump himself— by intentionally and falsely blaming Dominion for President Trump’s loss by rigging the election.

2. Fox endorsed, repeated, and broadcast a series of verifiably false yet devastating lies about Dominion…

3. Fox recklessly disregarded the truth. Indeed, Fox knew these statements about Dominion were lies…

4. …it [Fox] stuck to the inherently improbable and demonstrably false preconceived narrative and continued broadcasting the lies of facially unreliable sources—which were embraced by Fox’s own on-air personalities—because the lies were good for Fox’s business.

7. …Fox sold a false story of election fraud in order to serve its own commercial purposes, severely injuring Dominion in the process.

These allegations, if true, could cause Fox News Media to lose its key trademark, FOX NEWS.

Distinguishing Fake from Fact

As a society, we’ve been hearing a lot about “fake news.” We know that “fake news” is something that has been debunked as false, inaccurate, and not supported by facts, but who is responsible to police content to determine if the information is “fake”? In March of 2021, the CEOs of Meta, Google, and Twitter testified before Congress about how their organizations are responsible for and can help reduce the spread of fake news. This testimony was called “Disinformation Nation: Social Media’s Role in Promoting Extremism and Misinformation” by the House Energy and Commerce Committee. Yet the other month, Elon Musk, arguably one of the most influential people in the world, called The New York Times “propaganda” and Twitter recently labeled NPR as “State-affiliated media.” Clearly, we are still working through how we define and where we publish real news.

Dominion claimed that its reputation was damaged due to Fox’s promotion of stories known to be false. Fox, however, claimed free speech and freedom of the press as defenses in the Dominion lawsuit against them. Fox argued that freedom of speech and freedom of press is a guaranteed right in our country that is protected under the first Amendment, and accordingly anyone in the U.S. can print or say whatever they want.

So why are tech companies responsible to quell what other people say/post on their platform even if it’s not true? Freedom of speech and freedom of press are not unlimited rights. One of the limitations on free speech is when there is a threat of eminent harm resulting from the speech; this is why we are not allowed to yell “fire” in a crowded venue because people will likely get hurt during a mass exodus. While freedom of press allows for the freedom to print and broadcast information, this defense creates an interesting problem for Fox.

How exactly does Fox define “news?” Is there a journalistic standard that Fox and other news organizations need to adhere to before they can promote a story as “news?” How do these news organizations distinguish opinion from news and clearly convey this distinction to their audience? Does having a logo, with the word “News” in a corner of the screen suggest or imply that what is being viewed is news even when something is stated to be “opinion” or does that logo create a perception that it’s news despite people being told something is opinion? When tech company CEOs are called to testify to Congress about false information being posted by others on their platforms, should a “News” agency be allowed to promote stories it knows were lies and still be able to claim freedom of press?

False Information Isn’t News

With the Dominion case settled, all eyes will now turn to the $2.7 billion defamation lawsuit filed by Smartmatic, another voting technology company. Regardless of whether Fox wins this case under a freedom of press argument, its trademark, FOX NEWS, which indicates it is disseminating news, should likely be invalidated.

The Lanham Act, 15 USC § 1051, is the statute that codifies our trademark laws. Within the Lanham Act the method to cancel a registered trademark is under 15 USC § 1064 and it states “A petition to cancel a registration of a mark, stating the grounds relied upon, may…be filed as follows by any person who believes that he is or will be damaged…if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used” [emphasis added]. Fox’s trademark, serial #76354173, is registered as providing goods and services under the classification of “Services in the Nature of Television News Programming.”

While we can debate what is “news,” we definitively know that stories known to be false are not news. With Fox positioning false stories as news, they misrepresented the source of the goods or services associated with their trademark, television news programming. If proven, or admitted (which may have already occurred), these cases against Fox could result in the FOX NEWS trademark becoming cancelled under 15 USC § 1064.

In the world of news and fake news, a challenge to Fox’s trademark is a real news story I look forward to reading.

Image Source: Deposit Photos
Image ID: 142957863
Author: Zerbor

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Join the Discussion

16 comments so far.

  • [Avatar for Anon]
    Anon
    April 28, 2023 06:03 pm

    You are going to be AWFULLY busy Mr. Ullman — and certainly NOT constrained to Fox — if you want to chase down media lies.

    Main Stream Media has LONG been guilty of that.

  • [Avatar for Adam Ullman]
    Adam Ullman
    April 28, 2023 02:55 pm

    @Robert Rountree
    Thank you for bringing up 15 USC § 1125. There is no doubt that Dominion Voting Systems or Smartmatic could bring a claim under 15 USC § 1125(a)(1)(B) which states “(1)Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—

    (B)in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”

    What Fox News said about Dominion Voting Systems and Smartmatic was not news. Fox misrepresented the nature and quality of their goods, services and commercial activities because what they stated as fact (or news) was a lie. But this statute is for a Civil Action.

    Should this first go to the FTC for deceptive advertising? 15 USC § 1052(e) prevents the registration of marks “when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them.”

    There is no doubt that cancellation of a mark that has been on the principal registry for 5+ years is a significant challenge. At the same time, a registered trademark with the word “news” in it should not allow an organization to say whatever it wants to, especially when it knows those statements are false.

    15 USC § 1052(e) prevents against the registration of marks that are deceptively misdescriptive. If it’s not 15 USC § 1064, then what is the process to remove a registered mark when it knowingly becomes deceptively misdescriptive?

  • [Avatar for Robert Rountree]
    Robert Rountree
    April 27, 2023 11:21 am

    Adam, the plain language of 15 USC 1064 is evident once the words you omitted are included as follows:
    “A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:
    (3) At any time . . . if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. “
    In their analysis, Stone et. al. state the Act provides “for cancellation of U.S. marks that misrepresent the source of the goods or services that are sold in connection with the U.S. mark 15 U.S.C. §1064(3) (Section 14(3)).” Eric A. Stone & Catherine Nyarady, Cancellation of US Trademarks Based On Misrepresentation of Source, NY Law Journal, Vol. 267-No. 45 (March 9, 2022).
    See https://www.paulweiss.com/media/3981826/nylj3082022545961paul_ada.pdf for their excellent analysis.

  • [Avatar for Bob Zeidman]
    Bob Zeidman
    April 27, 2023 08:23 am

    @Adam Ullman, the Lanham Act is about misrepresenting “the source of the goods or services” not the goods or services themselves. In other words, CNN cannot call itself Fox News and Newsweek cannot start a blog called IPWatchdog. As you should also know, trademarks cannot be “simply descriptive” (see https://www.uspto.gov/trademarks/basics/strong-trademarks). Just as Microsoft is neither small nor soft, Apple does not sell fruit, and Johnson & Johnson is not a porn company.

    By the way, it would be helpful if you got my name right in addition to getting the law right.

  • [Avatar for Adam Ullman]
    Adam Ullman
    April 26, 2023 08:10 pm

    @ Bob Ziedman

    I did look up the trademark for Fox News and specifically called attention to Fox’s trademark, serial #76354173, which is registered as providing goods and services under the classification of “Services in the Nature of Television News Programming.”

    Perhaps you may be referring to FOX’s trademarks serial #76354174 or #76354268? Agreed that these are registered under the classification of “Television Broadcasting Services.”

    Fox also has registered trademarks for cups, mugs, etc. (i.e. serial #88127715). I take no issue with those.

    Again, what is news and how do we distinguish it from opinion when the broadcast always has the word “news?”

  • [Avatar for Bob Zeidman]
    Bob Zeidman
    April 26, 2023 04:17 pm

    This article is silly and shows a lack of understanding of trademark law. The Rocket Mortgage example by @Dolt is spot on. Had the author looked up the trademark for Fox News, it’s registered as “TELEVISION BROADCASTING SERVICES” (see https://tmsearch.uspto.gov/bin/showfield?f=doc&state=4809:j9hu2i.2.50).

  • [Avatar for John smith]
    John smith
    April 26, 2023 03:21 pm

    This is stupid. Too cute by half. Any fox lawyer, or the ttab would get a good chuckle out of this.

    Don’t quit your day job.

  • [Avatar for Anon]
    Anon
    April 26, 2023 02:50 pm

    Mr. Ullman,

    It is your article. Why ask me what you should already have done?

    This is akin to doubling down on the perception that you previously created.

  • [Avatar for Adam Ullman]
    Adam Ullman
    April 26, 2023 01:35 pm

    @Dolt
    No doubt Rocket Mortgage is not a rocket company; their name is arbitrary which makes it a strong trademark. By that same analogy, are you are saying that Fox News isn’t a news company?
    I have no issue with Fox presenting opinion. However, I did pose the question whether a logo, in the corner of the screen, with the word “news” creates confusion about whether the content is news or opinion. The argument would change if they removed the logo during opinion pieces or just used the Fox logo rather than Fox News.

    @Anon
    What other mainstream media has the word “News” in its name and logo? Cable News Network does have “news” in its name, but their logo, CNN, does not reinforce that everything they broadcast is “news.”

  • [Avatar for Anon]
    Anon
    April 26, 2023 09:22 am

    I tend to question any narrative put forth that singles out one side of the political spectrum, and does not question the plain fact that the other side has been running rampant with far more questionable bias.

    To wit, “Regardless of whether Fox wins this case under a freedom of press argument, its trademark, FOX NEWS, which indicates it is disseminating news, should likely be invalidated” — without even a mention of the troves of Main Stream Media that have been nothing but abject purveyors of propaganda is just too much.

    I certainly do not excuse Fox from its role in the divisive political battle, and have made it clear that they are no better than the Left side of the aisle, but please, to even attempt to portray this as merely affecting Fox is quite the disservice.

  • [Avatar for Dolt]
    Dolt
    April 26, 2023 08:26 am

    Here’s a news flash: Rocket Mortgage is not a rocket company.
    Misrepresenting the _source_ of the goods is entirely different from misrepresenting the goods (which is a different action).

    Not to mention that Fox News does publish news, and that the defamatory statements were made by the opinion side of the network (which does not make them opinions).

    Get a trademark lawyer to write about trademarks.

  • [Avatar for Pro Say]
    Pro Say
    April 25, 2023 06:16 pm

    Interesting theory.

    Yet; who / what org / entity would waste their time and money trying to invalidate it? To what end?

    If you thought Fox fought hard to beat back Dominion . . . just try to take away their TM.

    . . . and while we’re on the subject of Fox, how ’bout everyone (including the “mainstream media,” who used to know better) stop calling what they and so many others refer to as, “untruths,”misinformation,” “falsehoods,” and their ilk . . . and call them what they are; lies.

    Lies.

  • [Avatar for Adam Ullman]
    Adam Ullman
    April 25, 2023 03:44 pm

    @Robert Rountree
    Robert, what “source” are you referring to? Fox News stated they broadcast information they knew to not be true. And just to clarify, are you saying that news agencies, without verifying validity or accuracy, can report whatever a “source” tells them as long as they do not misrepresent the source?

  • [Avatar for Robert Rountree]
    Robert Rountree
    April 25, 2023 01:56 pm

    Even if the FOX report was false, there is no indication the source was misrepresented. Did FOX ever misrepresent the “source” of their report? All I see in Ullman’s post is hand waving and political bias. Let’s see if Ullman makes a retaliatory comment.

  • [Avatar for K. David Crockett]
    K. David Crockett
    April 25, 2023 01:26 pm

    Is it deceptively misdescriptive if everybody knows it’s deceptive and that is part of the brand salience?

  • [Avatar for Breeze]
    Breeze
    April 25, 2023 01:15 pm

    Faux News is not going to pay one penny of the settlement. They are going to pass the cost on to every single person who pays for cable or a streaming service by raising their carriage fee on the cable companies and the streaming services. So in effect, we are all going to pay it.