Motivational speaker claims O magazine's use of the line represented an attempt to seize her trademark and confused people
It may truly be empowering to “Own Your Power,” but an appellate court panel said Friday that Oprah Winfrey, her Harpo Productions and the Hearst Corp. can be sued by a motivational speaker and radio-show host who claims the line violated her trademark and was illegally used on an “O” magazine cover and a related event.
A three-judge panel of the 2nd Circuit Court of Appeals overturned a lower court's decision that said the use of the line amounted to “fair use” and threw out claims made by Simone Kelly-Brown against Winfrey, Hearst, as well as corporate sponsors of the event.
The appellate court ordered the lower court to reconsider the case, in which Kelly-Brown sought an injunction to stop Winfrey's use of the phrase.
The case stems from the prominent use of the line on the front cover of the October 2010 issue of O.
“Own Your Power,” touted the cover, which featured the requisite photo of Winfrey and the secondary headline: “How to Tap into Your Strength, Focus Your Energy, Let Your Best Shine.” One of the stories in the edition was about “The 2010 O Power List: 20 Women Who Are Rocking the World.”
The issue was promoted in a Sept. 16 New York event called “Own Your Power,” which was then featured in the December edition of the magazine and identified as the “first-ever own your power event.”
Kelly-Brown (pictured below right), who registered “Own Your Power” as a blue and white trademark in May 2008, sued, arguing both that the magazine's use of the line — though in a different typeface, different color and different capitalization — represented an attempt to seize her trademark and confused people.
She argued that the confusion was detrimental to her brand, and she fielded numerous inquiries from people who were confused between her events and Oprah's.
While judges were unanimous Friday in overturning the lower-court opinion dismissing Kelly-Brown's suit, they offered two sets of reasoning.
The court majority questioned whether Winfrey, Harpo and Hearst had the right to “fair use” of the line, just because the magazine featured a different typeface and color than the version Kelly-Brown trademarked.
While the judges agreed with the lower court's decision to throw out claims that the defendants counterfeited the trademark, the judges said that the repetition of the line in headlines and promotion demonstrated enough evidence of violations not to qualify as “fair use” and for the case to proceed.
The judges noted that the defendants could still offer evidence to buttress their claims that the line was widely used before Kelly-Brown's trademark was granted.
One judge in a separate opinion cautioned that the case should be read narrowly. He said questions about whether the magazine's action amount to “fair use” remain to be determined. The court's ruling, he said, meant the appellate court felt there were sufficient allegations for the case to proceed to trial.
In a joint statement Hearst and Harpo noted that while sending the case back for trial, the appellate court dismissed a number of allegations. “We are pleased the Court of Appeals affirmed dismissal of all but one claim in the case. The editorial use of the singlephrase at issue, “Own Your Power," is fully protected by the First Amendment. Harpo and Hearst will vigorously defend the only remaining claim in this case,” said the statement.
Pamela Chelin contributed to this report.