Own Your (Trade Mark) Power!

Here's a guest post from fellow blogger and NY-based attorney Marie-Andrée Weiss (thanks so much, Marie-Andrée!) on a long-running drama that has received relatively little coverage outside its native United States:

Americans have a reputation for being litigious, and this may be well deserved. They also love celebrities, soaps operas, staying positive and free speech, which is why Simone Kelly-Brown and OWN Your Power Communications, Inc v Oprah Winfrey et al, No. 12-1207-cv is such a tasty compendium of American tastes and obsessions, with a bit of trade mark law thrown in for good measure. 

Soap Oprah

This case is a soap opera because it has been running since 2011, when Ms Kelly-Brown, a motivational speaker and the owner of Own Your Power Communications, Inc., first filed a suit for trade mark infringement against, inter alia, Oprah Winfrey, Harpo Productions, a company founded by Oprah Winfrey and a co-owner of the Oprah Winfrey Network (“OWN”), and Hearst Magazines, the publisher of The Oprah Magazine, available at almost any American supermarket checkout (click here for trade mark registration). The Southern District of New York (SDNY) granted summary judgment to the defendants in March 2012 but, last August, the Second Circuit remanded the suit for further proceedings, and the parties should be back in court soon (complaint here; SDNY Order here; 2nd Circuit decision here).

SDNY says "no"

Ms Kelly-Brown owned the registered service mark “Own Your Power” for motivational workshops and seminars. While she was registering it, Harpo was applying to register the mark OWN for a new cable network, the Oprah Winfrey Network.

The complaint alleged that the defendants used the phrase “Own Your Power” on the cover of the October 2010 O Magazine, on the magazine’s website and also at an event promoting the release of the October 2010 issue. A picture of the cover can be found on page 5 of the Second Circuit’s opinion and is reproduced on the left. Ms Kelly-Brown argued that the defendants’ repeated use of the phrase “Own Your Power” had caused reverse confusion within the market for motivational services and publications, and therefore infringed her service mark. Reverse confusion happens when the public believes that it is the senior owner (Ms. Kelly-Brown) of the trade mark who is the infringer, not the Johnny-come-lately junior user. The SDNY ruled that because the use was fair there had been no trade mark infringement, and thus no reverse confusion either.

Did you attend too?

Oprah Winfrey is quite a celebrity.The paintiff herself described the person she was suing as “among the most influential women in the world.” The plaintiff also sued Wells Fargo, Estée Lauder, Clinique, and Chico’s, an American retailer with more than 700 stores, for vicarious and contributory infringement, as they were corporate sponsors of the O Magazine “Own Your Power” event. The SDNY dismissed this particular claim, and the Second Circuit affirmed it.

The list of high-profile persons involved in the case, however, keeps expanding, as Ms Kelly-Brown keeps subpoenaing non-parties to find out whether they did or did not attend the “Own Your Power” event in 2010. Most recently, Vera Wang was subpoenaed last February, but the famous fashion designer filed a motion to quash, arguing that she had only “briefly attended” the event and only had “a limited recollection” of it.

Free Speech

And now enters this other American favourite, free speech. The defendants had argued that the First Amendment protected their speech and also that the use of “Own Your Power” was fair use.

Indeed, the US Trademark Act, 15 U.S.C. § 1115(b)(4), allows a third party to use a trade mark if the use is descriptive and if it does not identify the source or origin of the goods. In the Second Circuit, the defence of fair use requires proof that the use was made (i) other than as a mark, (ii) in a descriptive sense, and (iii) in good faith.

The SDNY held that defendants’ use of “Own Your Power” was fair use, reasoning that the phrase on the cover merely described the content of the magazine, and noting that the source of the goods, O Magazine, was clearly indicated. What's more, the claim would have failed because the use as mark is a threshold requirement in a trade mark infringement claim and the plaintiff had not shown that the defendants used the phrase “Own Your Power” as a mark, because use as a mark means use in commerce, which happens when the mark is affixed to the goods “in any manner.”

The Second Circuit disagreed. For the Second Circuit, using a competitor’s mark as a mark is not the same as use of a mark in commerce. Rather, it means that the mark was used “as a symbol to attract public attention.” The Second Circuit found that it was plausible that “Oprah was attempting to build a new segment of her media empire around the theme or catchphrase “Own Your Power.”

Because it found no trade mark infringement, the SDNY did not address the defendant’s First Amendment arguments, and neither did the Second Circuit. However, Second Circuit Judge Sack wrote a concurring opinion to emphasize that the Second Circuit’s opinion should not be interpreted as preventing publishers in any medium to use a trade mark-protected term, as that would be “legally unwarranted and 99 and 44/100 percent foolish.” What the plaintiff was concerned about is not the one-time use of “Own Your Power” on the magazine cover, which Judge Sack considers fair use, but instead a systematic attempt “to build an association with consumers between the phrase 'Own Your Power' and Oprah."

The litigation is ongoing, and promises to be, well, litigious. A document filed earlier this month by plaintiff started as such: “In their haste to insult and revert to ad hominem attacks on Plaintiffs… ”This trade mark case is good soap opera indeed.