The Second Circuit Court of Appeals has held that Oprah Winfrey’s use of the phrase “Own Your Power” is not protected by the fair use defense. Kelly-Brown and Own Your Power Communications, Inc., v. Oprah Winfrey, et al., Case No. 12-1207-cv (2d Cir. May 31, 2013) (available here). Plaintiff Simone Kelly-Brown (“KB”) owns the motivational services business called “Own Your Power Communications, Inc.” KB has a federally registered service mark in “Own Your Power,” and sued Defendants for the Defendants’ use of the phrase “Own Your Power.” The lower court granted the Defendants’ motion to dismiss, finding that the use constituted fair use and that KB failed to show use as a mark. On appeal, the Second Circuit vacated the lower court’s holding regarding KB’s trademark infringement, false designation of origin, and reverse confusion claims. However, the Second Circuit affirmed the dismissal of KB’s counterfeiting, vicarious infringement, and contributory infringement claims.
Defendants Oprah Winfrey (“Oprah”), Harpo, Inc., and Harpo Productions, Inc. (collectively, “Harpo”), and Hearst Corp. and Hearst Communications, Inc. (collectively, “Hearst”) were involved in the use of the phrase “Own Your Power.” KB sued for trademark infringement, false designation of origin, reverse confusion, and counterfeiting. Defendants Wells Fargo & Co. (“Wells Fargo”), Clinique Laboratories, LLC (“Clinique”), Estee Lauder Cos., Inc. (“Estee Lauder”), and Chico’s FAS, Inc. (“Chico’s”) were corporate sponsors of the “Own Your Power” event. KB sued them for vicarious and contributory infringement.
In conjunction with her company, KB hosts a radio show, holds conferences and retreats, and writes a blog on how to “own” one’s power. Her federally registered service mark has a distinctive font, is light blue in color and was registered in 2008. Around the same time that KB was seeking registration of her mark, Defendants sought to register “OWN” in connection with the Oprah Winfrey Network. Defendants also arranged a transfer of the trademark “OWN ONYX WOMAN NETWORK” from its original owner to Harpo to avoid infringement. Thus, Defendants were likely aware of KB’s pending registration for “Own Your Power.” Defendants used the identical phrase “Own Your Power” on the cover of Oprah’s magazine (the “Magazine”), then held an “Own Your Power” event to offer motivational advice (the “Event”). Following the event, the Harpo website (the “Website”) displayed video clips from the Event and “Own Your Power” banners. KB received several inquiries from people who confused KB’s services with Oprah’s Event, Website, and Magazine.
In order for Defendants’ use of “Own Your Power” to constitute fair use, the Defendants must show that the use was made “(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.” JA Apparel Corp. v. Abboud, 568 F.3d 390, 400 (2d Cir. 2009). The lower court determined that the Defendants’ use was non-trademark use because it was used as a headline for the Magazine. The lower court also concluded that KB had not presented any evidence that Defendants acted in bad faith. Because KB’s primary trademark infringement claims were dismissed, the lower court dismissed the vicarious and contributory infringement claims.
On appeal, the Defendants’ main argument was that their use is protected by the doctrine of fair use. Defendants challenged KB’s trademark infringement claim by arguing that if Defendants did not use the “Own Your Power” “as a mark” (that is, as a trademark), then KB’s infringement claims fail.
The Second Circuit disagreed. “A plaintiff [KB] is not required to demonstrate that a defendant made use of the mark in any particular way to satisfy the ‘use in commerce’ requirement. The element is satisfied if the mark is affixed to the goods in any manner.” Kelly-Brown, Slip Op. P. 13. Here, the question is not whether the Defendants used the mark in commerce, which they clearly did, but whether the used “Own Your Power” as a symbol to attract public attention.
For the first element of the fair use defense, KB alleged four specific instances of Defendants’ use of “Own Your Power” to show that Defendants used the phrase as a mark: (1) the Magazine cover; (2) the Event; (3) the social medial promotions of the Event; and (4) the Website. Therefore, the Second Circuit inferred a pattern of use. For instance, each use was slightly different in nature in an apparently attempt to build on Oprah’s media empire. The Event was advertised as the “first-ever” of its kind, leading to the thought that it was not directly tied to the Magazine cover. “Courts are more likely to treat recurring themes or devices as entitled to protection as a mark, even where a single iteration might not enjoy such protection. . . Repetition is important because it forges an association in the minds of consumers between a marketing device and a product.” Kelly-Brown, Slip Op. Pp. 19-20. Here, the Defendants attempted to create an association between the phrase “Own Your Power” and Oprah.
The second fair use element requires a showing that the disputed use was in a descriptive sense. Defendants argued that their use of the phrase “Own Your Power” described the relevant publications to which the phrase was attached, and that the later uses at the Event and Website relate back to the original Magazine use. The Second Circuit noted that the phrase “Own Your Power” is not typically the type of phrase courts find to be used descriptively. The phrase does not describe the contents of the Magazine, for example the Table of Contents offers no article with that phrase in the title. Therefore, the Defendants did not meet their burden of showing that the use was descriptive.
The last requirement is that the Defendants used the phrase in good faith. The Second Circuit had to determine whether the Defendants intended to trade on the good will of KB by creating confusion. Defendants’ argument appeared to be: someone as popular as Oprah would not attempt to trade on the goodwill of KB, relatively unknown. However, prior to using “Own Your Power,” Defendants purchased the rights to the acronym “OWN.” This suggests that the Defendants had conduced a trademark registration search, which would have also turned up KB’s pending registration for “Own Your Power.” The Second Circuit concluded that even if Defendants did not intend to trade on the good will of KB, this does not preclude a finding of bad faith. As a result, the Second Circuit vacated the lower court’s dismissal of KB’s trademark infringement claims.
Regarding KB’s vicarious and contributory liability of trademark infringement, the Second Circuit affirmed the dismissal of these claims. The Second Circuit also affirmed the dismissal of KB’s counterfeit claim, finding that her mark and the Defendants’ phrase were different.