Second Circuit reinstates trademark infringement action against Oprah Winfrey
In Kelly-Brown v Winfrey (12-1207), the US Court of Appeals for the Second Circuit has determined that a trademark infringement proceeding against Oprah Winfrey and Harpo Productions can proceed. The defendants in the case filed a motion to dismiss the claims on the grounds that their use of the plaintiffs' mark OWN YOUR POWER was fair use. The US District Court for the Southern District of New York granted that motion to dismiss. The plaintiffs successfully appealed the decision to the Second Circuit and the case will now proceed before the district court.
Simone Kelly-Brown is a motivational speaker and owner of the business Own Your Power Communications Inc. Own Your Power Communications holds events and publishes information under its federally registered mark OWN YOUR POWER. In 2010 Winfrey, who runs a expansive media empire which includes O Magazine and various websites, published an issue of O Magazine in which the cover prominently featured the words 'own your power'. Later, the defendants used 'own your power' on the Harpo website as a banner and posted videos from an event titled Own Your Power. That event included seminars and workshops offering motivational advice. There were additional uses by the defendants of OWN YOUR POWER including on Facebook pages.
After the defendants used OWN YOUR POWER, the plaintiffs began to receive inquiries from people who appeared to have confused the plaintiffss services and the defendants' magazine, website and event. The plaintiffs brought an action for trademark infringement, among other things. Instead of filing an answer, the defendants filed a motion to dismiss, which the district court granted on the grounds that the defendants made fair use of the wording 'own your power'.
On appeal, the Second Circuit made a number of findings. The court first noted that, since this was a motion to dismiss, the allegations in the complaint were to be viewed as true and all reasonable inferences were to be drawn in favour of the plaintiff. The court then considered the fair use defence.
Fair use is a defence to a trademark infringement allegation and the defendant must prove three elements to be successful in such a defense. The use made must be:
- other than trademark use;
- made in a descriptive sense; and
- made in good faith.
In addressing these issues, the Second Circuit found that the defendants made use of OWN YOUR POWER in a trademark fashion. Although the use was not traditional trademark use, the plaintiffs alleged that these different types of uses suggested 'sub-brand'' use and also suggested that the defendants intended to create an association between O Magazine and the phrase 'own your power'. As to the second element, the court found that the defendants had not made a showing that their use of 'own your power' was descriptive. Finally, the plaintiffs "pleaded facts sufficient to plausibly suggest that the defendants had knowledge" of the plaintiffs' mark. There were allegations in the complaint that the defendants had likely conducted an availability search before adopting OWN YOUR POWER and, therefore, were aware of the plaintiffs' federally registered mark.
In reaching its decision, the Second Circuit reminded the parties that its role in considering a motion to dismiss was not to resolve factual issues. The decision by the Second Circuit merely means that the plaintiffs have alleged facts in their complaint that are sufficient for the case to proceed. The defendants will still have an opportunity to prove that their use of OWN YOUR POWER was fair use and not actionable.
Leigh Ann Lindquist, Sughrue Mion PLLC, Washington DC
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