IP/Entertainment Law Weekly Case Update for Motion Picture Studios and Television Networks -- June 13, 2013

Table of Contents

Kelley-Brown v. Winfrey, U.S.C.A., Second Circuit, May 31, 2013
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  • Second Circuit reverses dismissal of trademark infringement action against Oprah Winfrey, her production company, and other defendants, finding that plaintiff adequately alleged that defendants infringed plaintiff’s service mark “Own Your Power” in magazine, on website, and during event organized and sponsored by defendants, and that defendants failed to establish fair use defense at motion to dismiss stage. 

Plaintiff Simone Kelley-Brown, owner of Own Your Power Communications, Inc., registered the stylized service mark “Own Your Power” with the U.S. Patent and Trademark Office in 2008. The company provides motivational services and publishes works under the Own Your Power service mark, and Kelley-Brown hosts a radio show and holds conferences and retreats promoting the concept “Own Your Power.”

Defendants Oprah Winfrey; her companies, Harpo, Inc., and Harpo Productions, Inc.; and Hearst Corp. and Hearst Communications, Inc. (collectively the Oprah defendants), are the creators and publishers of O, The Oprah Magazine (O Magazine) and the Harpo website. In September 2010, the Oprah defendants published the October 2010 issue of O Magazine, which featured on its cover the words “Own Your Power.” The magazine contained the “2010 O Power List,” a list of various influential people exhibiting a particular “power.” Winfrey promoted the October 2010 issue on her television show and displayed the magazine cover. Together with several corporate sponsors, the Oprah defendants also organized an “Own Your Power” event on September 16, 2010, which featured various celebrity attendees, and a motivational workshop and seminar. The Oprah defendants posted video clips of the “Own Your Power” event and “Own Your Power” banners on the Harpo website and described the event as the “FIRST-EVER OWN YOUR POWER EVENT” in the December 2010 issue of O Magazine.

After Kelley-Brown and her company received inquiries regarding the Own Your Power event, O Magazine, and Harpo’s website, Kelley-Brown sued the Oprah defendants for trademark infringement, false designation of origin, reverse confusion, and trademark counterfeiting under the Lanham Act. She also sued the corporate sponsors for vicarious and contributory infringement. The U.S. District Court for the Southern District of New York granted the defendants’ motion to dismiss, finding that the Oprah defendants did not use plaintiff’s service mark as a trademark, a threshold requirement for a trademark infringement claim under Sixth Circuit precedent that the court applied, and that defendants had established the three elements of a fair use defense – that they used “Own Your Power” other than as a mark, in a descriptive sense, and in good faith. Finding no primary violation of the Lanham Act, the district court also dismissed the contributory and vicarious infringement claims against the corporate sponsors as well as Kelley-Brown’s state-law claims.

Plaintiff appealed the decision, and the Second Circuit reversed in part, finding that Kelley-Brown was not required to show that the Oprah defendants used “Own Your Power” as a trademark as a threshold requirement to establish her trademark infringement claim. She established, and the Oprah defendants did not dispute, that their use of the service mark constituted a “use in commerce.” Although the Sixth Circuit has previously held that use of a service mark “as a mark” was required to demonstrate a likelihood of consumer confusion, the court of appeals found this precedent to be inconsistent with the Second Circuit’s eight-factor balancing test for likelihood of consumer confusion.

The Second Circuit also found that the Oprah defendants failed to establish a fair use defense at the motion to dismiss stage. According to the court, in order to establish that they did not use “Own Your Power” as a mark, the Oprah defendants must show that, based on the allegations in the complaint, they did not use the term “as a symbol to attract public attention.” Kelley-Brown successfully alleged, however, that the Oprah defendants used her mark with the intent to create and market a new line of products and services offered under the Oprah brand. While the defendants’ use of the service mark in this manner defeated their fair use defense, the court also considered the second element of the defense – whether the Oprah defendants used “Own Your Power” in a descriptive manner – and concluded that defendants’ use of the phrase on the magazine cover did not describe any of the content or items with which it appeared or as a headline for any article. Finally, the Second Circuit found that Kelley-Brown adequately alleged that the Oprah defendants used “Own Your Power” in bad faith, with the likely knowledge that plaintiff owned the trademark. The complaint alleged that the Oprah defendants previously bought the rights to use the acronym OWN from another person and that a trademark registration search for OWN would also have revealed Kelley-Brown’s registration for “Own Your Power.” Because the Oprah defendants failed to establish fair use, the Second Circuit reversed the district court’s order granting their motion to dismiss the Lanham Act claims based on trademark infringement, false designation of origin, and reverse confusion, and reinstated plaintiff’s state-law claims.

The Second Circuit affirmed the lower court’s dismissal of the vicarious and contributory infringement claims against the sponsors of the “Own Your Power” event, finding that the district court correctly found that plaintiff had failed to adequately plead those claims. Vicarious liability for trademark infringement requires a finding that the defendant and the infringer have an apparent or actual partnership, have authority to bind one another in transactions with third parties, or exercise joint ownership or control over the infringing product – plaintiff did not challenge the district court’s conclusion that she had not properly alleged a partnership or agency relationship. Contributory trademark infringement requires that a defendant either intentionally induced the primary infringer to infringe or continued to supply an infringing product to an infringer with knowledge that the infringer was mislabeling such product; plaintiff’s allegation that certain defendants provided sponsorship for an “Own Your Power” event did not suffice.

The Second Circuit also affirmed the dismissal of Kelley-Brown’s trademark counterfeiting claims, finding that Kelley-Brown had failed to state a plausible claim that the Oprah defendants utilized a “spurious mark” that was identical to, or substantially indistinguishable from, Kelley-Brown’s registered mark. 


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