Oprah Winfrey’s victory in a trademark-infringement case brought against her over the phrase “Own Your Power” was overturned by a federal appeals court.
The district court was incorrect in finding that Winfrey’s use of the phrase in her magazine, on her website and in an event constituted fair use under trademark law, the U.S. Court of Appeals in New York said today. The judges sent the case back to the lower court.
Simone Kelly-Brown sued Winfrey and her company, Harpo Productions Inc., and her magazine publisher, Hearst Corp., claiming they violated Kelly-Brown’s trademark for “Own Your Power,” which she uses for a motivational services company. She also sued corporations including Wells Fargo & Co. (WFC:US), Estee Lauder Cos. (EL:US), Clinique Laboratories LLC and Chico’s FAS Inc. (CHS:US) that sponsored Winfrey’s Own Your Power event.
“The defendants have not adequately established a fair-use defense,” U.S. Circuit Judge Chester Straub wrote in his opinion. “Kelly-Brown has plausibly alleged that Oprah was attempting to build a new segment of her media empire around the theme or catchphrase ‘Own Your Power.’”
The appeals judges also overturned the lower-court rulings in Winfrey’s favor on the claims of reverse confusion and false designation of origin. They affirmed U.S. District Judge Paul Crotty’s order dismissing the claims for counterfeiting, vicarious infringement and contributory infringement.
Hearst and Harpo said in a joint e-mailed statement that they were pleased with the outcome. “The editorial use of the single phrase at issue, ‘Own Your Power,’ is fully protected by the First Amendment,” they said.
Calls for comment to Kelly-Brown’s company, Own Your Power Communications Inc., weren’t returned.
Kelly-Brown hosts a radio show, conferences and a blog that promote the message of personal empowerment.
Straub wrote in his opinion that Winfrey sought to trademark her new enterprise, Oprah Winfrey Network, or OWN, about the same time that Kelly-Brown registered her trademark.
“Defendants would likely have been aware of Kelly-Brown’s pending registration for the service mark in Own Your Power,” Straub wrote.
In September 2010, an issue of O the Oprah Magazine prominently featured the phrase Own Your Power on the cover. That month the magazine hosted an Own Your Power event that included a seminar, workshop and motivational advice.
Celebrities posed for photos with a backdrop of the phrase and the logos of companies like Wells Fargo and Clinique.
Straub said the event was billed as the “first-ever,” which suggested it “was to be a recurring enterprise.”
Following the magazine cover, the event and the displaying of the cover on Winfrey’s TV show, Kelly-Brown claimed she got “numerous inquiries from people who appear to have confused” her services with Winfrey’s event, the court filing said.
Kelly-Brown sued in New Jersey federal court in July 2011 and in November the case was transferred to New York. The defendants moved for dismissal of all the claims. Crotty granted that motion in March 2012.
“There was no chance that an observer of the magazine or event could believe that they were created by Kelly-Brown and her company,” the defendants said in their motion.
The appeals case is Kelly-Brown v. Winfrey, 12-1207, U.S. Court of Appeals for the Second Circuit (Manhattan).
To contact the reporter on this story: Don Jeffrey in New York at firstname.lastname@example.org.
To contact the editor responsible for this story: Michael Hytha at mhytha @bloomberg.net