verturning a lower court decision, the Second Circuit determined, in Kelly-Brown v. Winfrey, that Oprah must defend a trademark infringement lawsuit despite her argument that the trademark fair use doctrine shielded her production company’s use of the slogan “Own Your Power” in connection with its publications and other media offerings.
Plaintiff Simone Kelly-Brown is the owner of a motivational services business since 1996 and is the registrant (as of 2008) of the mark OWN YOUR POWER for workshops and seminars primarily in the field of entrepreneurship. In late 2010, Oprah prominently displayed the phrase “Own Your Power” on the cover of her “O” magazine and used it in connection with a so-called “First-Ever ‘Own Your Power’ Event” featuring motivational seminars and workshops. Videos from the event were displayed on Oprah’s website under the banner “Own Your Power” on at least 75 different individual webpages. After receiving inquiries from people who confused Kelly-Brown’s services with Oprah’s services, Kelly-Brown brought claims against Oprah (and her production company and certain sponsors) for trademark infringement and other related claims.
In moving to dismiss, Oprah did not argue that Kelly-Brown had failed to sufficiently allege the elements of a trademark infringement claim. Rather, Oprah’s team argued that their use of “Own Your Power” was protected by the doctrine of trademark fair use. The district judge in New York agreed but, on May 31, 2013, the appellate court reversed – making some interesting observations about trademark use and fair use in the process of its lengthy analysis. The appellate ruling is discussed below.
The Primary Issues
To make a successful fair use defense, the Second Circuit requires a defendant to prove that it used the mark in question (i) other than as a mark, (ii) in a descriptive sense, and (iii) in good faith. According to the court, Oprah failed on all three counts.
1. Did Oprah Prove Use ‘Other Than as a Mark’?
No. In the Second Circuit, a mark is used “other than as a mark” where it is not used “as a symbol to attract public attention.” Here, however, the slogan “Own Your Power” was used repeatedly on various different Oprah-related products, leading the court to determine that Kelly-Brown plausibly alleged that “Oprah was attempting to build a new segment of her media empire around the theme.” In the court’s view, the repeated and recurring uses permitted an inference that Oprah was trying to create an association between the mark and her products in the minds of the public, which could not be overcome on a motion to dismiss.
The court also departed with the Sixth Circuit by ruling that a plaintiff does not need to satisfy any threshold requirement of showing that the defendant made “use as a mark” in order to state a claim for trademark infringement.
2. Did Oprah Prove Descriptive Use of the Mark?
No. With respect to this factor, a majority of the court focused almost exclusively on Oprah’s use of “Own Your Power” on the cover of her magazine. It determined that the use was not descriptive, citing the fact that the slogan neither described the contents of a particular article in the magazine nor correlated to a specific section of the magazine as set out in its table of contents.
Those in the media industry may want to take note of Judge Robert Sack’s concurring opinion, in which he wrote that – in respect of the magazine – the use of “Own Your Power” was descriptive because it referred “in a general way” to the magazine’s contents; he cited the articles “Personal Power” and “Light Up A Room” (which appeared in the magazine) as examples of the type of articles one might expect to find in an “Own Your Power” issue. He wrote, “Our law has never required a connection as close and absolute as the majority demands” in conducting an analysis of whether a use is descriptive or not. Judge Sack (also the author of a leading First Amendment law treatise), expressed a concern that the majority’s opinion “may be misconstrued to suggest a general limitation upon the ability of a publisher in any medium to use a trademarked term, in good faith, to indicate the contents of its own communication . . . .”
Despite his criticism, Judge Sack ultimately agreed with the majority and concluded that the overall use of “Own Your Power” by Oprah was not descriptive when viewed as part of a larger campaign across the various media platforms at issue.
3. Did Oprah Prove Good Faith Use of the Mark?
No. In the Second Circuit, a lack of good faith is shown where there is an “intent to trade on the good will of the trademark holder by creating confusion as to source or sponsorship.” Here, Kelly-Brown alleged that Oprah would have come across the “Own Your Power” trademark application when conducting a trademark clearance search regarding the use of “OWN” as a trademark for Oprah’s television network. (Kelly-Brown pointed out that the defendants had acquired rights to use “OWN” from a woman who had previously registered it as an acronym for the “Onyx Woman Network.”) The court determined that it was therefore plausible that Oprah moved forward with using “Own Your Power” after obtaining knowledge that Kelly-Brown owned the mark. Given this, the court determined that, on a motion to dismiss, Oprah could not prove good faith use.
The court’s ruling is a cautionary tale for those seeking to use a word or slogan in a recurring or prominent way that might be considered “trademark use” rather than descriptive fair use. The ruling also shows the power – as a benefit or a pitfall, depending on one’s position – of having a trademark application or registration on file that might be found in a search report.
Hopefully, to echo Judge Sack’s concurring opinion, the ruling will not curtail the rights of media companies to speak freely. It should be read to apply only to situations where a trademarked phrase is used across a variety of media platforms in a manner that appears calculated toward the creation of a new and overarching brand.