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On March 6th, 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.
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
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.
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.
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
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."
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