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By Tamlin Bason
March 6 — Although registered, the “Own Your Power” mark is not distinctive and is therefore not protected, and in any event the phrase's appearance on the cover of “O, the Oprah Magazine” did not create a likelihood of confusion, the U.S. District Court for the Southern District of New York held March 5.
In 2012, the district court had ruled in favor of Oprah Winfrey and her codefendants and dismissed a motivational speaker's asserted Lanham Act claims. The court at the time determined that the use of the term on the October 2010 magazine cover was not a trademark use, and that the fair use doctrine further protected the defendants.
However, in reinstating the claims in 2013, the U.S. Court of Appeals for the Second Circuit created a circuit split regarding whether Lanham Act infringement claims can be based on defendant's use “of a mark,” or must instead be based on a defendant's use of a trademark “as a mark.”
Finding the former sufficient, the appeals court said that the plaintiff had sufficiently pleaded an infringement claim by alleging that the defendants had used the mark on the cover of the magazine and on more than 75 web pages throughout the Oprah Winfrey website. The Second Circuit also rejected the lower court's fair use finding.
In the instant ruling, the court granted the defendants summary judgment, determining that the plaintiff's evidence could not demonstrate either that the phrase was protected or that the defendants' use of the phrase was likely to cause confusion. It also once again found fair use.
Own Your Power Communications Inc. of Pembroke Pines, Fla., founded in 1996 and headed by Simone Kelly-Brown, specializes in motivational speeches for personal and business-oriented self development.
The company holds a federal trademark registration on the term “Own Your Power.”
Hearst Corp. publishes Winfrey's monthly periodical, “O, the Oprah Magazine.” The October 2010 issue of “O” featured an image of Winfrey and the legend, in large lettering, “Own Your Power.”
(Click image to enlarge.)
The magazine promoted an Own Your Power event presented in partnership with other companies, including Chico's FAS Inc., Wells Fargo & Co. and Clinique Laboratories LLC.
The event, a panel discussion, was scheduled for September 2010 and was later referred to on The Oprah Winfrey Show, in “O,” on Winfrey's and “O”'s websites, and on Twitter and Facebook.
Kelly-Brown sued Winfrey, Hearst, Wells Fargo, Chico's, Clinique, and other associated entities, alleging numerous claims under federal trademark law and New Jersey state law.
Judge Paul A. Crotty of the U.S. District Court for the Southern District of New York granted Winfrey's motion to dismiss all the claims, finding no trademark infringement (Kelly-Brown v. Winfrey, 103 U.S.P.Q.2d 1375, 2012 BL 52944 (S.D.N.Y. 2012)).
When the Second Circuit reversed, it created a split with the U.S. Court of Appeals for the Sixth Circuit on a what a plaintiff must show to state a claim for trademark infringement (Kelly-Brown v. Winfrey, 717 F.3d 295, 106 U.S.P.Q.2d 1875 (2d Cir. 2013)).
Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a)(1), prohibits any person from using in commerce any word, name, symbol, or device which is likely to cause confusion as to the origin of the goods or services by another person.
Hensley Mfg. Inc. v. ProPride Inc., 579 F.3d 603, 92 U.S.P.Q.2d 1003 (6th Cir. 2009), determined that a plaintiff must show that the defendant use the mark “as a mark.”
But the Second Circuit said this test was too strict, and concluded that a plaintiff need only show that the mark has been used in commerce, regardless of whether that use constituted use of the mark “as a mark.”
However, the appeals court determined that, on the record before it, “Kelly-Brown has plausibly alleged that Oprah was attempting to build a new segment of her media empire around the theme or catchphrase ‘Own Your Power,' beginning with the October Issue and expanding outward from there.”
That showing, the court said, was enough to defeat Oprah's fair use defense with respect to her Rule 12(b)(6) motion to dismiss. It thus reversed and remanded.
Following extensive discovery, Winfrey moved for summary judgment on all of the asserted claims.
The court granted the motion, finding that the mark was not protectable, that there was no likelihood of confusion, and that Winfrey was protected by the fair use doctrine.
First, the court noted that Kelly-Brown's “special form” registration was for a trademark consisting of “light blue scripted letters which create the words Own Your Power.”
(Click image to enlarge.)
“Plaintiffs’ registration is, therefore, limited to its stylized light blue scripted' use of the phrase ‘Own Your Power' and Plaintiffs’ have no claim over the phrase itself,” the court said.
The court then determined that Kelly-Brown's use of the mark was descriptive because “it refers to the life/career empowerment services provided by Plaintiffs; these motivational services help clients own their power.”
The mark also lacked secondary meaning, the court held. Quoting Time, Inc. v. Petersen Publ'g Co., 173 F.3d 113, 50 U.S.P.Q2d 1474 (2d Cir. 1999), it said, “Here, Plaintiffs—despite voluminous discovery—do not even begin to demonstrate that ‘the [phrase] and the business have become synonymous in the mind of the public, submerging the primary meaning of the term in favor of its meaning as a word identifying that business.' ”
Because the phrase was descriptive and lacked secondary meaning, the mark was not protectable, the court said.
The court said that it was not necessary for it to consider confusion given that the mark was not protectable.
But the court nonetheless ticked off the first six likelihood of confusion factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 128 U.S.P.Q. 411 (2d Cir. 1961), before seemingly losing interest.
All of the first six factors favored Winfrey and, “Neither of the two remaining Polaroid factors supports a likelihood of consumer confusion,” the court said.
“Accordingly, even if Plaintiffs’ mark is entitled to protection, Plaintiffs fail to make a showing sufficient to establish infringement under the Lanham Act,” the court said.
Finally, “Even if Plaintiffs demonstrate infringement under the Lanham Act, Defendants’ use of the phrase ‘Own Your Power' is protected by fair use,” the court said.
In order to assert a successful fair use defense under 15 U.S.C. §1115(b)(4), a defendant must prove that the use was made: other than as a mark; in a descriptive sense; and in good faith.
As to the first factor, the Second Circuit when it reversed the district court's earlier ruling said that it was plausible that Winfrey was trying to create a sub-brand under the “Own Your Power” mark.
However, “Plaintiffs present no evidence supporting their claim,” the court said.
Winfrey also used the phrase in good faith and in a descriptive sense, the court held.
The court accordingly determined that Winfrey was entitled to summary judgment on three alternative grounds:
(1) the phrase “Own Your Power” is not protected; (2) even if the phrase were protected, there is not a shred of evidence establishing a likelihood of consumer confusion; and (3) even if Plaintiffs were to establish a likelihood of consumer confusion, the fair use defense applies.
Kelly-Brown was represented by Patricia Lawrence-Kolaras of Hillsborough, N.J. Winfrey was represented by Jonathan R. Donnellan of the Hearst Corp., New York.
To contact the reporter on this story: Tamlin Bason in Washington at email@example.com
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