Oprah Loses The Right to Own Her Power
by Jerry Glover
July 10, 2013
The U.S. Court of Appeals for the Second Circuit is requiring Oprah Winfrey and her companies (including Harpo, Inc.) to go to trial in a trademark infringement case brought by the owner of the trademark OWN YOUR POWER. Kelly-Brown v. Winfrey, 2013 WL 2360999 (2d Cir. May 31, 2013). Winfrey had claimed that her use of the trademark was a “fair use.” Although the trial court initially agreed with Winfrey, the Second Circuit reversed that conclusion and remanded the case back to the lower court for trial.
Kelly-Brown, the plaintiff, registered OWN YOUR POWER in the U.S. Trademark Office in 2008 as a service mark for a motivational services business that included a radio show, conferences, retreats and a blog which all promoted the concept of owing one’s power. At about that same time, Harpo registered a trademark in what was then a new Oprah venture, The Oprah Winfrey Network (OWN). Prior to registration of the OWN mark, Harpo discovered a third party owned trademark OWN ONYX WOMAN NETWORK. Harpo got an assignment of that mark from its owner.
After Harpo used OWN YOUR POWER in several venues, Kelly-Brown sued Harpo for trademark infringement. Harpo moved to dismiss Kelly-Browns claims.
Harpo had included the phrase on the cover of the October 2010 issue of “O, The Oprah Magazine.”
There was no article in that issue of the magazine, however, entitled “Own Your Power.” In September, 2010 Harpo and several other businesses co-sponsored an “Own Your Power” event where various celebrities posed for photographs in front of an “Own Your Power” backdrop. The Harpo website placed “Own Your Power” banners and content on at least 75 individual web pages and included video clips from the event.
Plaintiff received inquiries from several people who apparently confused her services with the Oprah “Own Your Power” events. Kelly-Brown then sued Oprah and Harpo for trademark infringement under 15 U.S.C. Sec. 1114 and for false association/endorsement under 15 U.S.C. Sec. 1125(a). In all litigation in which a plaintiff claims the defendant is infringing on her mark, the plaintiff must show that the relevant consuming public is likely to be confused that the defendant’s products/service emanate from or are sponsored/endorsed by or associated with the plaintiff.
On appeal from the trial court finding that Harpo made a fair use of plaintiff’s mark, the appellate court noted that there are two types of confusion: direct confusion (described in the previous paragraph) and reverse confusion (consumers believe the senior user (Kelly-Brown) is infringing on the junior user’s (Harpo) mark usually because the junior user is a much larger “presence” than the plaintiff. But both types of confusion can be avoided with a successful fair use defense.
To prove fair use of a trademark, the defendant must show that the use made was “other than as a mark,” the mark was used in a descriptive sense and the use was made in good faith. 15 U.S.C. Sec. 1115(b)(4).
Harpo first argued that Kelly-Brown had to show that Harpo had used “Own Your Power” as a trademark. The appeals court, however, held that all Kelly-Brown had to do was show that Harpo had made use of a trademark in commerce. Kelly-Brown was not required, the court noted, to prove any particular kind of use. Plaintiff claimed that Harpo was trying to establish a new segment of its media empire using the “Own Your Power” theme (a so-called “sub-brand” of the Oprah brand). Harpo’s use of the mark in various media/venues was an attempt to have consumers associate the mark with Oprah/Harpo. The court concluded that it was clear Harpo used “Own Your Power” in commerce.
Harpo also argued that it used “Own Your Power” in a descriptive sense because the mark was descriptive of the publications on which the mark was used and noted, for example, that “Own Your Power” described the contents of the O Magazine issue on which it appeared. Other uses of the mark on the web site and at the live event merely referenced the initial use on the magazine. The Second Circuit noted that a use is considered descriptive when it involves a phrase in common use like “Sealed with a Kiss.” In addition, the mark as used on the cover of the magazine did not describe the contents of the magazine which included articles entitled “How to Tap Into Your Strength,” “Focus Your Energy” and “Let Your Best Self Shine.” Finally, there was no article in that issue of the magazine entitled “Own Your Power.” The court concluded that Harpo had failed to show a descriptive use.
Finally, the court looked at whether Harpo had used the mark in good faith. Kelly-Brown argued that Harpo had knowledge or, at least, constructive knowledge, of her mark as a result of Harpo conducting a trademark search prior to the premiere of the OWN Network that located another “OWN” mark. The court agreed that at this preliminary stage of the case plaintiff had alleged sufficient facts regarding the question of good faith. The appeals court remanded the case back to the trial court for further proceedings.