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Trial Court Upholds Fair Use Defense And Grants Motion To Dismiss Trademark Claims Against Oprah Winfrey

On March 6, 2012, Judge Paul A. Crotty of the United States District Court for the Southern District of New York issued an opinion dismissing trademark and other Federal claims against Oprah Winfrey in reliance on the “fair use” doctrine. Simone Kelly-Brown and Own Your Power Communications, Inc. v. Oprah Winfrey et al., 11 Civ. 7875 (PAC)(slip op., March 6, 2012). Since 1996, plaintiffs provided a personal brand of self-awareness and motivational communications services nationally, and on May 27, 2008 plaintiffs registered their “Own Your Power” trademark with the United States Patent and Trademark Office (“PTO”). On September 13, 2010, the October 2010 issue of “O Magazine” was distributed. This issue of “O Magazine” contained a cover that depicted the trademark, “O” followed by “The Oprah Magazine”, a photograph of Oprah, and the headline phrase “Own Your Power”, which was surrounded by the phrases “Unlock Your Inner Superstar”, The 2010 O Power List, “Tap Into Your Strength”, “Focus Your Energy” and “Let Your Best Self Shine”. O Magazine promoted an “Own Your Power” event to be held on September 16, 2010, which was described as a lively panel discussion about power featuring some of the notables from this issues Power List. The Event was promoted as being sponsored “in partnership with” Chico’s, Wells Fargo and Clinique. The Magazine and “Own Your Power” event was referred to thereafter in one episode of The Oprah Winfrey Show, in the December 10, 2010 edition of “O Magazine”, on affiliated websites and on Harpo and Hearst Communications’ Twitter and Facebook accounts.

On July 28, 2011, plaintiffs filed an action in the District of New Jersey asserting numerous claims under Sections 32 and 43 of the Lanham Act (15 U.S.C. Sections 1114,1125), including claims for trademark counterfeiting, trademark infringement, reverse confusion, false designation of origin, unfair competition, contributory trademark infringement and vicarious trademark infringement. The plaintiffs also filed numerous state law claims under New Jersey State and common law. Defendants successfully moved to transfer the case to the Southern District of New York, and then moved to dismiss on various grounds, including that the First Amendment and fair use doctrines permit defendants uses of the “Own Your Power” trademark.

Applying the fair use doctrine, the Court dismissed plaintiffs’ federal claims and declined to exercise supplemental jurisdiction over the New Jersey claims. In the context of trademark law, the fair use defense allows use of protected trademarks in descriptive ways, provided that the use does not identify the source or origin of the goods. This defense is Codified in Section 1115(b)(4) of the Lanham Act, which provides that the use of the name, term or device charged to be an infringement is a use otherwise than as a mark which is descriptive of and used fairly and in good faith only to describe goods or services of [a] party or their geographic origin. 15 U.S.C. Section 1115(b)(4). To prevail in asserting fair use, an accused infringer must show that his use of the phrase was (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith. See EMI Catalogue Partnership v Hill, Holliday, Connors, Cosmopulos, Inc., 228 F.3d 56, 64 (2d Cir 2000). The Court found that defendants had sustained their burden of establishing each of these elements of a fair use defense.

First, defendants established that the use was “other than as a mark”. The phrase “Own Your Power” was used in a descriptive sense and not to indicate the origin or source of the goods. In fact, the cover of the O Magazine made clear that “The Oprah Magazine” was the source of the goods, especially because Oprah herself was pictured on the cover. Defendants’ trademark was well known, clearly displayed and used to indicate the source of the product, and the phrase “Own Your Power” was simply not used for the purpose of identifying the source or origin of goods.

Second, the Court found that the phrase “Own Your Power” was to describe the product (in this case O Magazine) rather than the source of the product. See Car-Freshener corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267, 269 (2d Cir. 1995)(holding that defendant’s use of a pine-tree shape was not as a mark but rather to describe the car freshener’s pine scent and the Christmas season). Use of a trademark is descriptive when it describes an action that the alleged infringer hopes that a consumer will make of its product. The Court found that the phrase “Own Your Power” describes both the O Magazine’s content and an action that the defendants hoped that O Magazine readers would take after reading O Magazine.

Third, the Court held that use of the mark by defendants was in good faith. In considering the issue of good faith, courts consider whether defendants adopted the mark with the intent on capitalizing on the trademark owner’s good will and whether the use made by defendants could cause consumer confusion. The Court held that plaintiffs had not alleged facts that plausibly suggested that defendants intended to capitalize on plaintiffs’ good will or that there was a likelihood of consumer confusion. The Court also found that defendants’ failure to cease using the alleged infringing mark did not establish bad faith. The manner in which O Magazine used the phrase “Own Your Power” differed significantly from the appearance and manner of use of the phrase by plaintiffs. Plaintiffs use the phrase to sell “motivational communication services” including an annual retreat and other conferences, whereas defendants used the phrase to sell a print magazine.

The Court reasoned further that plaintiffs have no cause to complain about defendants’ use of the phrase “Own Your Power” in a descriptive manner because plaintiffs selected a trademark that was descriptive and thereby assumed the risk that others might use the phrase in a descriptive manner. Defendants clearly used the phrase in a descriptive sense and prominently identified their product (the magazine) with the trademarks thereby avoiding any consumer confusion.

Based on these three findings, the Court held that defendants had established a fair use defense to plaintiffs’ trademark infringement and false designation of origin claims under 15 U.S.C. Sections 1114 and 1115. The Court further rejected plaintiffs’ “reverse confusion” theory of trademark infringement because plaintiffs failed to allege that defendants made a trademark use of the phrase “Own Your Power”. Defendants did not use the phrase as a trademark for the magazine, but only to describe its contents as a product.

The Court also rejected plaintiffs’ claim that defendants engaged in trademark counterfeiting. In fact, defendants depicted the phrase “Own Your Power” in a manner that appeared noticeably different than the appearance of the trademark as used by plaintiffs. Further, since plaintiffs do not use the phrase to market a print magazine, the claim of trademark counterfeiting clearly fails. Since the appearance of the mark as used by defendants is not identical with or substantially indistinguishable from plaintiffs’ use of the mark, plaintiffs counterfeiting claim fails. See GMA Accessories, Inc. v. BOP, LLC, 765 F.Supp.2d 457, 472 (S.D.N.Y. 2011).

Having disposed of all of the federal claims based on a fair use analysis, the Court found it unnecessary to address defendants First Amendment arguments. Some argue that the fair use doctrine, itself, takes into account First Amendment concerns. In any event, defendants First Amendment arguments were compelling the purpose of a trademark is to identify the source of goods and services and protect the public against consumer confusion. If the accused infringer has not used a trademark to identify goods and services, but has used it for descriptive purposes, the First Amendment should preclude the trademark owner from banning such descriptive uses. It may be possible to obtain a valid trademark to a phrase such as “Own Your Power” but the First Amendment prevents the owner of such a trademark from preventing others from using the trademark for literary or other descriptive purposes.

The bottom line is that the Court dismissed the case because, applying traditional fair use and trademark law principles, the Court could not conceive of any scenario where plaintiffs could prove that they suffered injury of the type that trademark law was designed to avoid. There was no plausible argument on behalf of the plaintiffs that the defendants use of their trademark had caused consumer confusion or otherwise diminished plaintiffs legitimate interest in, and use of, their trademark. While one can expect plaintiffs to appeal this ruling, plaintiffs likelihood of success in such an appeal is very low.