Published by LawTechie - June 3, 2013 - LawTechie

intellectual propertyLast week the Second Circuit overturned a lower court’s trademark ruling which had previously found Oprah Winfrey and her affiliate companies innocent of trademark infringement. Instead, the Second Circuit ruled that none of Oprah’s Fair Use defense elements were met to justify the lower court’s early dismissal of the case. Kelly-Brown v Winfrey, 12-1207-CV, 2013 WL 2360999 (2nd Cir. May 31, 2013).

Background

Plaintiff Kelly-Brown owns the service mark “Own your Power.” She “hosts a radio show, holds conferences and retreats, and writes a blog promoting the concept of “owning” one’s power.”

Thereafter, Oprah used the “Own Your Power” phrase in connection with a variety of ventures. It was first featured in the center of the cover of the Oprah Magazine. Then, an Own Your Power Event, featuring motivational content was organized and heavily promoted through social media. Finally, an “Own Your Power” section was added to Oprah’s website.

No Fair Use

Oprah’s defense argued that because of the strength of the Oprah mark, it would be pretty unlikely for the public to be confused as to the source of these services. That is, because Oprah’s name and images are so prominently displayed in connection with the Own Your Power services, it would be clear that Oprah is the underlying source for these services, not Kelly Brown.

Nevertheless, the Second Circuit held that the strength and preponderance of Oprah’s mark constitute but one factor in the fact-intensive trademark infringement analysis. In the Court’s opinion, the strength and preponderance of Oprah’s mark could not trump the fact that Oprah actually uses Own Your Power as a mark. The Second Circuit supported its analysis on the basis of the recurrence of the “Own Your Power” phrase, which is heavily used across a variety of mediums.

The Court thus concluded that use by a strong mark (OPRAH) of a new mark (OWN YOUR POWER) in juxtaposition to the strong mark does not bar a finding of trademark infringement where the new mark functions, in effect, as a mark.

Finding of Bad Faith because of Oprah’s previous USPTO activity

Additionally, Oprah’s showing that she did not possess a free-ride intent was held insufficient to demonstrate good faith. Although the Second Circuit conceded that  “it is implausible that someone as well-known as Oprah would attempt to trade on the goodwill of someone relatively obscure like Kelly–Brown,” it refused to find good faith because Oprah was chargeable with constructive notice of Kelly-Brown’s mark.

Indeed, after Kelly-Brown filed her trademark application, Oprah purchased rights in “OWN,” from a third party, to use as an acronym for the “Oprah Network.” Thus, Oprah was likely to have had conducted a trademark registration search, which would have revealed Kelly-Brown’s then-pending mark in the phrase.

The Second Circuit held:

“At bottom, [Oprah] ask us to weigh their averments that they did not use the phrase “Own Your Power” in order to trade on Kelly-Brown’s good will against Kelly–Brown’s allegations that they were aware of her registered mark before launching the “Own Your Power” campaign. Our role in considering a motion to dismiss is not to resolve these sorts of factual disputes.”

Guest author Steven Buchwald is a law clerk on Tim’s internet law team at Handal & Morofsky. Steven is currently a law student at the Benjamin N. Cardozo School of Law and will graduate in June 2014 with concentrations in intellectual property law and litigation.

LawTechie is a blog focusing on trends in tech and digital media. Areas covered include intellectual property, cyberlaw, venture capital, transactions and litigation as they relate to the emerging sectors. The blog is edited by the firm's partner Tim Bukher with contributions from the firm's experts in their respective areas of law.

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