The phrase “Own Your Power” is plastered on Oprah Winfrey’s website, discussed at length in O, The Oprah Magazine, and widely publicized through corporate sponsored events. But there is one small problem—Winfrey may not actually own the phrase.
The Second Circuit Court of Appeals has revived the debate over who owns the rights to the phrase “Own Your Power,” and it appears that the small company that took up the fight against the media mogul may have intellectual property rights that are just as valuable.
On May 31, 2013, the U.S. appeals court said Winfrey will have to defend her use of the phrase “Own Your Power” in her magazine, on her website, and at a highly publicized event. Kelly-Brown v. Winfrey, No. 12-1207 (2nd Cir. May 31, 2013). Tossing out a lower court ruling, the Second Circuit revived claims brought by the owner of a motivational services business who says she owns a trademark on the phrase.
David v. Goliath
Back in July 2011, the talk show icon was sued by a motivational entrepreneur named Simone Kelly-Brown, who hosts a radio show, writes a blog and holds conferences and retreats about “owning” one's power. According to her website www.ownyourpower.biz, Kelly-Brown provides assistance to entrepreneurs for personal growth and business development. Kelly-Brown registered the mark in May 2008, and while the registration was pending, the defendants sought to register a trademark in a new venture, the Oprah Winfrey Network, or OWN.
Kelly-Brown alleges that Winfrey, Harpo, as well as Hearst Corp., which publishes O, The Oprah Magazine, and Estée Lauder Cos. launched a series of publications, events and online initiatives using the phrase “Own Your Power.” The launch started in September 2010, with the release of Winfrey’s magazine, using the words “Own Your Power” on the cover, followed by subheadings reading “How to Tap Into Our Inner Strength”; “Focus Your Energy”; and “Let Your Best Self Shine.”
A few days after the magazine was distributed, and in conjunction with certain advertisers later named as defendants, the magazine held an "Own Your Power" event with celebrities that included a seminar offering motivational advice. The widely publicized event was marketed through the magazine, and through social media and on websites, including a video of the event. Winfrey later discussed the event in an episode of the famed “Oprah Winfrey Show,” and in a subsequent issue of the magazine.
Kelly-Brown claims that soon after this massive launch, she began to get phone calls from people expressing confusion between her business and the new Winfrey initiative.
Her complaint alleges that the wording in the marks are identical, the services are close, and therefore the infringement rises to the level of reverse confusion. The act of reverse confusion occurs when the new user of a mark is so well-known and/or puts enough marketing dollars behind the phrase that the mark becomes closely associated with the new user, and consumers think the first user’s product or service comes from the new user. Take for example the situation where the richest and most powerful woman in entertainment, who has her own media conglomerate, starts to use and extensively advertise the trademark of a small motivational services company. As people start to believe that the small company is riding on the coattails of the conglomerate, you have reverse confusion.
Goliath Wins Round One
Back in 2012, Southern District Judge Paul Crotty granted Winfrey’s motion to dismiss, finding that that Kelly-Brown could not claim false designation of origin or reverse confusion based on the fact that there could be no confusion about the source. In addition to tossing the reverse confusion claim, the judge found that the use of the words "Own Your Power" constituted fair use. The judge explained that the fair use defense allows use of protected marks in descriptive ways, provided it does not identify the source or origin of the goods. Looking at the cover of the magazine, the judge saw the magazine’s trademark “O” as identification that the phrase was meant as a headline, describing the contents of the publication.
David Wins Round Two
The plaintiff did not back down. She appealed to the Second Circuit, where the panel of three judges heard oral arguments and recently handed down its opinion.
In its decision, the court noted that to prevail on a fair use defense, a defendant like Winfrey has to show that the use was made other than as a mark, in a descriptive sense and in good faith. On the first prong, the court explained that the three judges were persuaded that the array of uses of the phrase "Own Your Power" is sufficient for us to infer a pattern of use by Winfrey. The court found that Kelly-Brown had plausibly alleged that Winfrey was attempting to build a new segment of her media empire around the theme or catchphrase, beginning in the October magazine issue and expanding out to other various forms of media.
Additionally, as the highly publicized event was referred to as the “first-ever” of its kind, the court found that it was not directly tied to a particular issue of the magazine, but instead was to be a recurring enterprise within the Winfrey media empire. The court noted the importance of this distinction as the defendants were trying to create, through repetition across various forms of media, an association between the subject phrase and Winfrey.
As it was clear to the court that the defendants began to create the association between the phrase, the magazine, event and website, the court found that the plaintiff had alleged that the repeated and wide-ranging usage of the phrase functioned as a mark, and that Winfrey's use was an attempt to create a sub-brand.
While Winfrey was not able to show that her use of the phrase was descriptive, and thereby permissible under fair use, the court turned to the matter of good faith. Here, the defendants argued that, in essence, it is implausible that someone as well-known as Winfrey would attempt to trade on the goodwill of someone relatively obscure like Kelly-Brown. In opposition, Kelly-Brown asserted that, while her registration was pending, the defendants had bought the rights to use the acronym “OWN” from a woman who had previously registered it as an acronym for the “Onyx Woman Network,” so any search for OWN would surely have turned up her own then-pending service mark.
Round Three Is Set
The court agreed with Kelly-Brown, finding that there is a possibility that the defendants had knowledge of Kelly-Brown's mark, liked it, and decided to use it as their own. Ultimately, the court remanded the case for further proceedings.
This matter confirms that those in entertainment, fashion and other industries that are often crushed by large companies can properly register their mark and put up a fight against even the most powerful of moguls. The majority’s reasoning clearly disfavors well-known defendants arguing that there is good faith when they prominently display their own marks in a way that overshadows the plaintiff’s mark when they had constructive knowledge of the plaintiff’s mark.
As for Winfrey, it appears we will have to wait to see if the most powerful woman in entertainment can Own Your Power.