Oprah Winfrey wins Trademark lawsuit for the use of “Own your power” mark.

by eleonoracurreri

The U.S. District Court for the Southern District of New York, on the 5th of March, ruled in favour of the popular talk-show host.

 

Plaintiff Simone Kelly-Brown, a motivational speaker and life coach, sued Defendants Oprah Winfrey, Harpo Productions and Hearst Communications claiming TM infringements under Sections 32 and 46 of the Lanham Act (dealing with reverse confusion and false designation of origin and unfair competition, respectively). The Plaintiff has been using the phrase “Own Your Power” since 2004 both in workshops and seminars. For this reason, in 2008, the United Stated Patent and Trademark office approved Kelly-Brown’ s service mark.

In October 2010, the cover of the Defendant’ s magazine “O, The Oprah” showed a full-page picture of herself and the phrase “Own your power” written in white and Italic font.

The issue of her magazine was subsequent to an episode of the popular Defendant’s show, which aired in September 2010, entitled “Own your power”. This same phrase has also been used for panel discussions and seminars that followed the magazine issue and TV show episode.

The Judge found that the phrase “Own your Power” is not protected. More specifically, he stated that even though the mark is registered, it only concerns “a stylized light blue scripted letters which create the words Own Your Power”.

This means that the exclusive right can be used only on the mark as shown and the Plaintiff has no claim over the phrase itself. Furthermore the Defendants demonstrated the lack of distinctiveness of the phrase to be entitled to protection. According to the Judge “Own Your Power” has only a description feature as it refers to the life empowerment services provided by Kelly-Brown. Once established as being descriptive, the Second Circuit had to determine if the mark acquired secondary meaning by looking at the following aspects:

(1) advertising expenditures, (2) mark linked to source, (3) media coverage, (4) sales success, (5) attempt of plagiarism, (6) exclusivity of the mark’s use.

The evidence showed by the Plaintiff was not strong enough to show the acquired secondary meaning, indeed the Defendant Oprah showed that she first used this phrase in a commencement speech at Spelman College, more than two decades ago. Plaintiff also claimed a likelihood of confusion under the Lanham Act. The Court, by analyzing the factors set in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 128 U.S.P.Q. 411 (2d Cir. 1961), pointed out that the Plaintiff did not satisfy the Polaroid factors.

Judge Crotty added that “Own Your Power” is protected by the fair use defense (The Lanham Act, 15 U.S.C. § 1115(b)(4)) that is successful when the defendant proves that the use was made other than as a mark; in a descriptive way, and in good faith.

Winfrey demonstrated that the phrase only appeared on the October issue, hence she used it in good faith and in a descriptive sense as the defendant wanted to spread a general message of self-empowerment.

The Court decided that Winfrey was entitled to summary judgment since the claimed phrase is not protected, there is not a likelihood of confusion and the fair use doctrine applies[1].

This case needs further consideration.

One of the most interesting aspects is that even if the Courts have established the fair use doctrine, Judges struggle in applying it, as it is the most indeterminate area of law that requires a case-by-case application.

In my view, in Kelly-Brown- v. Winfrey, there is no doubt about the good faith of the American TV Star. Since the very beginning of her career she presented herself as a philanthropist. Winfrey has always had a huge impact on her audience, inviting people to take actions to change their lives and to create the desired ones. As a consequence, it was clear that the contested phrase was part of her encouraging messages rather that an attempt to steal a mark.
Eleonora Curreri, QMJIP Assistant Editor

 

[1] http://www.scribd.com/doc/258008087/Kelly-Brown-v-Oprah-Winfrey-Own-Your-Power-Summary-Judgment-Opinion#scribd