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A motivational speaker had sufficiently stated a claim that Oprah Winfrey's use of the phrase “Own Your Power”--in connection with an event on the cover of O, The Oprah Magazine and on more than 75 web pages throughout the Oprah Winfrey website--infringed her trademark, the U.S. Court of Appeals for the Second Circuit held May 31 (Kelly-Brown v. Winfrey, 2d Cir., No. 12-1207-cv, 5/31/13).
Reversing a federal district court's award of summary judgment in favor of Winfrey, the court also found that Winfrey's fair use defense should not have been accepted.
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.”
Oprah Winfrey is a famous television personality whose Harpo Productions Inc. is involved in a range of communications projects, including OWN L.L.C., which operates the Oprah Winfrey Network, a TV channel focusing on self development. 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.” The magazine promoted an Own Your Power event presented inpartnership with other companies, including Chico's FAS Inc., Wells Fargo & Co., and Clinique Laboratories L.L.C. 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, Harpo, Hearst, Wells Fargo, Chicos'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 appealed. Judge Chester J. Straub reversed the U.S. District Court for the Southern District of New York's dismissal of the case, Kelly-Brown v. Winfrey, 103 U.S.P.Q.2d 1375 (S.D.N.Y. 2012) (48 PTD, 3/13/12).
According to Judge Chester J. Straub, at this stage of the case, Kelly-Brown had met her burden for stating a claim. Winfrey's fair use defense was rejected on the basis that the use could be found to constitute an attempt to attract public attention. The use was not clearly descriptive or in good faith, in light of Winfrey's alleged knowledge of Kelly-Brown's mark.
The court parted ways with the Sixth Circuit on the showing required to state a claim for trademark infringement.
Section 43(a) of the Lanham Trademark Act of 1946, 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.
The court explored the differences between a defendant's use “of a mark” and use of a trademark “as a mark.”
The Sixth Circuit has required a plaintiff to allege the latter, Hensley Manufacturing Inc. v. ProPride Inc., 579 F.3d 603, 92 U.S.P.Q.2d 1003 (6th Cir. 2009) (173 PTD, 9/10/09). The Second Circuit disagreed with that approach.
“The Sixth Circuit's approach does not cohere with our jurisprudence on consumer confusion[,]” the court said, looking to the eight 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).
The Sixth Circuit has concluded that no consumer will be confused unless an alleged infringer uses infringing content as a mark. But the Polarad test is a fact-intensive inquiry that does not even mention use as a mark, the Second Circuit said.
“We therefore decline to adopt the rule that Lanham Act plaintiffs must show that the defendant was using the allegedly infringing content 'as a mark' as a threshold issue in order to establish consumer confusion,” 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.
In determining whether the defendants had used the phrase “Own Your Power” as a trademark, the court asked whether they were using the term as a symbol to attract public attention.
The court concluded that they had. Oprah had used the phrase on an issue of her magazine, at an event, when promoting the event through social media, and in online videos promoting the event and other motivational articles on her website.
“At this stage of the litigation, this array of uses is sufficient for us to infer a pattern of use[,]” the court held. Thus, the plaintiff plausibly alleged that Winfrey had attempted to build a new segment of her media empire around the phrase, beginning with the issue of the magazine and expanding from there.
The repetition of the phrase was important, because repetition forges an association in the minds of consumers between a marketing device and a product, the court said.
The court found that it had not been established that Winfrey had used the phrase in a descriptive sense. Courts more readily find a phrase to be descriptive when it is in common usage, the court said. The defendants had not argued that the phrase was in popular usage.
Winfrey had not used the phrase to describe the contents of the magazine, the court said. “Although both the center phrase and the article headline make use of the word 'power,' it does not appear that the phrase 'Own Your Power' is meant to describe the contents of a particular item in the Magazine.”
Kelly-Brown also argued that Winfrey had not acted in good faith because she had been aware of the mark. She alleged that Winfrey had purchased rights to another “own” mark, and would have learned of her mark during a trademark search.
Winfrey countered that it was implausible that someone as well-known as she was would attempt to trade on the goodwill of someone relatively obscure like Kelly-Brown.
At this stage of the case, Winfrey's good faith was unclear, the court found. As a result, the district court had erred in holding that Winfrey had conclusively demonstrated good faith in her use of the phrase “Own Your Power.”
Judge Robert D. Sack, concurring, reasoned that Winfrey's fair use defense crumbled only against claims targeting the use of the trademark on the website, in social media, and in connection with the event.
Kelly-Brown was represented by Patricia Lawrence-Kolaras of Hillsborough N.J. Winfrey was represented by Jonathan R. Donnellan of Hearst Corp., New York.
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