Oprah “Owns Fair Use” in Trademark Lawsuit Involving O Magazine and Headline Phrase "Own Your Power"

On March 6^th, the Southern District of New York dismissed a trademark lawsuit filed against Oprah Winfrey, holding that Oprah's use of the phrase "Own Your Power" did not infringe plaintiff's trademark. The court held that Oprah's use constituted fair use under 15 U.S.C. § 1115(b).

The October 2010 O Magazine cover depicted the trademark "O," followed by "The Oprah Magazine," a photograph of Oprah, and the headline "Own Your Power." The phrase was surrounded by other phrases, including; "Unlock Your Inner Superstar," "The 2010 O Power List," "Tap Into Your Strength," "Focus Your Energy" and "Let Your Best Self Shine." The magazine also promoted an "Own Your Power" event.

Since 1996, Power Communications, Inc has provided personal branding, self-awareness and motivational communications under the trademark "Own Your Power." Power Communications sued Oprah, accusing her of trademark infringement. In defense, Oprah argued that fair use barred all claims.

In Kelly-Brown v. Winfrey, 2012 U.S. Dist. LEXIS 29695 (S.D.N.Y. Mar. 6, 2012) [enhanced version available to lexis.com subscribers], the court upheld Oprah's fair use defense and dismissed the complaint. Oprah's defense depended upon the phrase's use (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.

Non-Trademark Use

Oprah's use of the phrase was found to be in the descriptive sense (non-trademark use) and not as an indicator of the source or origin of the goods (the magazine and the event). Facts supporting a non-trademark use included:

• The magazine's source was clearly identified by the prominent and distinctive "O" trademark followed by "The Oprah Magazine."
• Oprah herself was pictured on the magazine cover, which further identified the source of the goods.
• Prominent display of the magazine's trademark "O" identified the phrase as a headline that, along with the other text on the cover, described the contents.

Plaintiff unsuccessfully argued that trademark use was demonstrated by the facts that Oprah: (1) filed trademark registrations for other phrases; and (2) combined her trademarked "O" with the "Own Your Power" trademark to create a single source identifier.

Descriptive Use

The phrase "Own Your Power" was found to describe both the magazine's contents and an action that Oprah hoped readers would take after reading the magazine. The phrase's position on the cover demonstrated that it served in a descriptive capacity. The magazine blocked off the trademark "O" in a red box on the upper left hand corner. The phrase, however, was not blocked off, but rather, was placed in the middle of text encouraging readers to; "Unlock Your Inner Superstar," "Tap Into Your Strength," "Focus Your Energy," and "Let Your Best Self Shine." While the "Own Your Power "phrase was more prominently displayed than the other phrases, the court noted that it capsulated the other phrases and, thus, the magazine's contents.

Bad Faith

Plaintiff failed to allege facts that suggested a likelihood of consumer confusion or Oprah's intent to capitalize on plaintiff's good will. The court held:

The appearance of the Phrase as used by Plaintiffs and Defendants, and the context in which the Phrase is used differs significantly. Plaintiffs depict the Phrase in all lowercase blue letters, which are not italicized, followed by a trademark; Defendants depict the Phrase in italics, in white ink on the Magazine and black and pink ink for the Event, mixing capital and lower case letters, and printed in a noticeably different font. Plaintiffs use the Phrase, inter alia, to sell "motivational communication services" including an annual "Retreat and other conferences." Defendants used the Phrase, inter alia, to sell a print magazine. Moreover, as discussed above, Defendants used the Phrase in a descriptive manner, while prominently displaying the trademark "O" and photographs of Oprah, which attributes the source of the products to the Defendants. Indeed, "the display of defendant's own name or trademark in conjunction with the mark it allegedly infringes is evidence of good faith."

Furthermore, "[s]o long as the defendants in good faith are using the phrase in its descriptive sense and prominently identifying the product with the defendants' marks, the defendants incurs no liability simply because the materials containing the descriptive phrase are so widely disseminated as to form some degree of association in the public's mind between the phrase and the product." That "is a risk the plaintiff took in selecting as its mark a phrase that was not only descriptive but readily recognized by consumers."

(citations omitted) 

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