Oprah Winfrey’s Fair Use Defense Rejected
IP Litigation Attorney
by Nicholas Kanter
818-907-3289
On Friday, the Second Circuit ruled that the owner of a motivation services business (Simone Kelly-Brown) can continue with her trademark infringement lawsuit against media mogul Oprah Winfrey.
Kelly-Brown owns a trademark registration for “Own Your Power.” She uses the trademark in connection with her motivational services business. After Kelly-Brown applied to register her trademark, Oprah (along with her production company, publisher and others) produced a magazine, event and website using the phrase “Own Your Power.”
Kelly-Brown sued Oprah and others claiming the unauthorized use of her trademark constituted infringement, false designation of origin and other Lanham Act claims. The District Court dismissed Kelly-Brown’s claims, finding Oprah’s use of the mark was fair use. Kelly-Brown appealed, and the Second Circuit reversed, finding Oprah did not show that her use of “Own Your Power” was fair use.
Fair Use: What it Takes
The Court found the defendant must show the following to prove fair use: “that the use was made (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.” The Court ruled Oprah did not satisfy any of these three elements. Here’s why:
Use as a Mark: To determine if Oprah used the words as a trademark, the court asked whether she used “Own Your Power” as a symbol to attract public attention. The Court found Oprah used the phrase prominently in several unique instances, including: the cover of the October 2010 issue of OWN; in connection with an Own Your Power event; promotion of the Own Your Power event, among other uses.
In a Descriptive Sense: In analyzing the use of the phrase on the magazine cover, the Court found that the phrase did not describe the contents of the magazine, as opposed to other phrases on the cover (e.g., How to Tap Into Your Strength, Focus Your Energy, etc.) which were displayed on the cover in smaller print and did describe the contents of articles in the magazine.
Good Faith: Finally, the Court found Kelly-Brown alleged facts to suggest Oprah had knowledge of her “Own Your Power” trademark and chose to use it anyway. Specifically, Kelly-Brown alleged that Oprah (through her production company Harpo) obtained an assignment of rights from the prior owner of the registered “OWN ONYX WOMAN NETWORK” trademark during the creation of Oprah’s “OWN” network “to avoid an infringement action from the mark’s original owner.”
Kelly-Brown further alleged that this transaction suggests that Oprah conducted a trademark search for the word “Own,” and that such search would have discovered Kelly-Brown’s “Own Your Power” mark. Thus, the Court concluded Oprah could have had knowledge of Kelly-Brown’s mark, and thus her use was not in good faith.
Because the Second Circuit found Oprah could not satisfy the elements of a fair use defense, the Court ruled that Kelly-Brown can continue with her trademark infringement claim.
Nicholas Kanter is a Trademark Dispute and Litigation Attorney at our Firm. Contact him via email, for more information regarding intellectual property and trademark enforcement: nkanter@lewitthackman.com.