In 2011, entrepreneur and professional motivational speaker, Simone Kelly-Brown, and her company, Own Your Power Communications, Inc., filed a lawsuit against Oprah Winfrey (“Oprah”) and various related companies alleging that the defendants unlawfully used and infringed her federally registered OWN YOUR POWER trademark. According to Kelly-Brown’s allegations, the defendants used and incorporated the phrase “Own Your Power” in publications and events, including prominent use in issues of Oprah’s O Magazine and events that touted “Own Your Power” as a central theme and focus. The case drew widespread attention not only because it involved one of the most famous and recognizable figures in entertainment and media, Oprah, but also because the allegations tested the rights of publishers to use terms, phrases and words protected as trademarks to reference content of publications and communications, e.g., it tested publishers’ rights to use trademarks in newspaper and media headlines, magazine covers, etc. The rights of publishers to use trademarks in publications and communications is not only important to the media, news and publishing industries, it is also significant to trademark owners seeking to enforce their intellectual property rights against unauthorized use and abuses by the media, news organizations and publishers.
Last year, Judge Paul A. Crotty of the U.S. District Court for the Southern District of New York dismissed Kelly-Brown’s lawsuit. In his opinion, Judge Crotty held, among other things, that the defendants’ use of the phrase “Own Your Power” constituted “fair use”. Almost one year later, in a decision issued last week, a three-judge panel of the U.S. Court of Appeals for the Second Circuit vacated Judge Crotty’s decision with respect to “fair use” and remanded it back to Judge Crotty for further proceedings. (The panel did agree with Judge Crotty’s decision as it pertained to other aspects of the case).
According to public filings and the panel’s opinion, Kelly-Brown obtained a federal registration for the OWN YOUR POWER trademark in 2008 which she used on her website and in materials associated with her business. (Examples can be seen here). The panel noted that the description of the trademark included this statement: “THE COLOR(S) LIGHT BLUE IS/ARE CLAIMED AS A FEATURE OF THE MARK. THE MARK CONSISTS OF LIGHT BLUE SCRIPTED LETTERS WHICH CREATE THE WORDS OWN YOUR ‘POWER.'”
While Kelly-Brown was in the process of obtaining the federal registration for the OWN YOUR POWER trademark, defendants were apparently seeking to register a trademark for Oprah’s new venture, the Oprah Winfrey Network, popularly known as “OWN”. The Panel recognized that “[d]uring the creation of OWN, [Oprah’s company] Harpo arranged for the transfer of a trademark in ‘OWN ONYX WOMAN NETWORK’ from its original owner to Harpo in order to avoid an infringement action from the mark’s original owner.” Insofar as their initial trademark search had netted the trademark OWN ONYX WOMAN NETWORK, the panel concluded that “Defendants would likely have been aware of Kelly-Brown’s pending registration for the service mark in ‘Own Your Power,’ since the same search defendants would have run to locate and negotiate the transfer of the trademark in ‘OWN ONYX WOMAN NETWORK’ would have also revealed Kelly-Brown’s mark.”
With that background, the panel recognized that Kelly-Brown had alleged numerous uses of the phrase “Own Your Power” by defendants across various forms of media. Most notably, Kelly-Brown alleged that an issue of O Magazine in 2010 prominently featured the phrase “Own Your Power” on the cover. Subsequently, in September 2010
O Magazine held an “Own Your Power” event (“Event”) featuring “various celebrities” posing for promotional photographs in front of a backdrop prominently featuring the phrase “Own Your Power” alongside other well-known trademarks such as Chico’s, Wells Fargo, Clinique and
O Magazine. The Event included seminars and workshops concerning motivational advice, self-awareness and entrepreneurship all of which operated under the theme of “Own Your Power”. In the December 2010 issue of
O Magazine, the Event was described as the “FIRST-EVER OWN YOUR POWER EVENT”. Thereafter, the Harpo website featured video clips from the event with “Own Your Power” banners and content “on at least 75 different individual web pages.”
Judge Crotty had determined that defendants’ use of “Own Your Power” constituted fair use pursuant to the test applied in the Second Circuit. In the Second Circuit, the “defense of fair use requires proof 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)(internal quotation omitted)”. Judge Crotty determined that defendants’ “use” was “other than as a mark” (i.e., a non-trademark use) ” because there was no chance that an observer of [O] Magazine or the Event would believe that they were created by Kelly-Brown and her company.” Moreover, Judge Crotty held that the defendants did not exhibit bad faith in using the mark as Kelly-Brown had failed to plead “facts that plausibly suggested that the defendants intended to capitalize on her good will.” Judge Crotty also held “that there was no likelihood of consumer confusion because the font, color, and formatting of the defendants’ use was significantly different from that protected by Kelly-Brown’s registered service mark.”
The panel disagreed with Judge Crotty’s ruling. In reviewing “fair use” and Judge Crotty’s decision that defendants use of the phrase “Own Your Power” was in a manner “other than as a mark”, the panel asked whether defendants used the “Own Your Power” phrase “as a symbol to attract public attention.” In light of the fact that Kelly-Brown had alleged defendants used the phrase in various contexts, including the October issue of O Magazine “featuring the phrase in the center of the Issue’s cover and the Own Your Power Event”, as well as throughout online components, the panel held that “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’.” In other words, Kelly-Brown had raised sufficient allegations to plausibly show that the phrase “Own Your Power” was being used as a trademark by defendants. The panel also held that Kelly-Brown had sufficiently alleged, at least at the pleading stage, that defendants had used the OWN YOUR POWER trademark in bad faith insofar as defendants reportedly conducted trademark searches while seeking to register trademarks associated with the Oprah Winfrey Network and would have likely discovered Kelly-Brown’s OWN YOUR POWER trademark among the search results.
Although there has been speculation in the media and blogosphere that the panel’s ruling might subject media, news agencies and publishers to an increase of trademark infringement accusations and lawsuits, the panel undoubtedly did not intend to open the floodgates. As noted by Judge Sack in a concurring opinion, the panel’s decision is not that Kelly-Brown should or will prevail on the facts but simply that in light of all of the allegations taken together the allegations were plausible and sufficient enough to survive a motion to dismiss and meet the minimal pleading standards of the federal rules. In other words, it “remains to be seen” whether Kelly-Brown can actually prevail beyond defendants’ motion to dismiss.
The case is Kelly-Brown, et al v. Oprah Winfrey, et al, Docket No. 12-1207 (2d Cir.). A copy of the panel’s decision is available
here.
