Oprah Winfrey‘s recent legal troubles, stemming from her media empire’s use of the phrase “Own Your Power,” illuminate the tensions between fair use and trademark rights.
In a May 2013 decision, "Kelly-Brown v. Winfrey," the United States Court of Appeals for the Second Circuit reversed the Southern District of New York court’s dismissal of a suit brought by Simone Kelly-Brown, owner of a motivational services business called Own Your Power, Inc.
Kelly-Brown sued Winfrey for her use of the phrase “Own Your Power” in her magazine, website and as the title of a motivational event. At issue in the appellate court’s reversal was a differing interpretation of what constitutes fair use of a trademark.
Trademark holders’ rights are protected by the Lanham Act, 15 U.S.C. § 1051 et seq. A trademark owner can sue anyone who uses their mark in a way that will cause confusion about or otherwise dilute the mark.
Those accused of trademark infringement, however, can raise a “fair use” defense. In a 2009 case, "JA Apparel Corp. v. Abboud," the Second Circuit defined the elements of the defense as use that is (1) not intended as a mark, (2) descriptive in nature, and (3) in good faith. As evinced by the Kelly-Brown case, whether a defendant meets this burden is subject to the courts’ interpretation.
In 2008, Kelly-Brown received a federally registered trademark for the phrase, “Own Your Power” in a stylized font covering workshops and seminars in the field of entrepreneurship among other goods. Kelly-Brown sued Winfrey, Harpo Inc., and the Hearst corporation for trademark infringement in 2011 after Winfrey used the phrase “Own Your Power” on the cover of the October 2010 issue of O, The Oprah Magazine, as the name of a motivational event, and on 75 individual webpages on Winfrey’s website.
Claiming that her use of the phrase was protected by the fair use defense, Winfrey moved to dismiss the suit in district court. The district court granted the dismissal, finding that Winfrey engaged in non-trademark use, because the phrase “Own Your Power” was not intended to be a trademark for the magazine, event or website.
Second, the court agreed with Winfrey that “Own Your Power” was meant to describe the contents of the magazine and actions Winfrey wanted her readers to take. Finally, the court found that Winfrey used the phrase in good faith, because she did not intend to capitalize on Kelly-Brown’s trademarked logo.
On appeal, however, the court agreed with Kelly-Brown that by using the phrase in three related contexts, Winfrey had engaged in a “pattern of use” that allowed Kelly-Brown to “plausibly [allege] that Oprah was attempting to build a new segment of her media empire around the theme or catchphrase ‘Own Your Power,'” and was therefore using the phrase as a trademark.
The appellate court also disagreed with Winfrey’s assertion that her use of the phrase was descriptive, because it did not refer to any specific content in the magazine, nor to any particular action that she wanted her followers to take.
Finally, the court was unwilling to assume that Winfrey used the phrase in good faith, because in the process of registering her own trademark for her television channel, OWN, the Oprah Women’s Network, she likely would have run across Kelly-Brown’s “Own Your Power” trademark in the federal trademark office records.
Reflection upon the district and appellate courts’ differing interpretations of the fair use defense demonstrate the challenges of trademark clearance and the scope of protection afforded any given mark.
In the appellate proceedings, Winfrey and her co-defendants argued that “the mere fact that someone owns a mark that contains a particular word or phrase does not grant the holder the exclusive right to use that word or phrase commercially.”
This is a point that Judge Robert D. Sack took to heart in his concurring opinion. Although agreeing with the ultimate result, Judge Sack wrote separately out of “fear that the majority opinion may be misconstrued to suggest a general limitation upon the ability of a publisher in any medium to use a trademarked term, in good faith, to indicate the contents of its own communication[.]”
Noting that “the stock in trade of those engaged in publishing … includes turns of phrase and imagery,” Judge Sack expressed concern that providing trademark protection to phrases that are not particularly novel or noteworthy could “cripple publishers’ effectiveness” by depriving them of the ability to use words that provide “raw material” of their business.
If Winfrey had limited her use of “Own Your Power” to the cover of her magazine, it is unlikely that this case would have ever seen the light of day. Like Al Franken‘s use of the phrase “Fair and Balanced” in his 2003 book "Lies and the Lying Liars Who Tell Them: A Fair and Balanced Look at the Right," which Fox News Network unsuccessfully disputed as trademark infringement, Oprah’s use of “Own Your Power” solely on the cover of her magazine is most likely protected by the First Amendment.
Here, the problem lies in Oprah’s additional use of the phrase on her website and as the title of a motivational event. By virtue of her celebrity, Oprah cannot do anything quietly, and using “Own Your Power” in three related contexts could be seen as an attempt to further build her brand. In effect, she quite possibly tipped the balance away from a protected fair use to arguable trademark use.
That said, as demonstrated by the Kelly-Brown case, drawing a line between trademark rights and fair use is a nebulous task. While the three elements of the fair use defense provide a useful framework for analyzing these claims, the Kelly-Brown decision reminds us that even the most sophisticated brand owners are challenged by this legal construct.
(Kate D'Ambrosio contributed to the article)