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Oprah Winfrey has learned the strength of the Second Circuit Court of Appeals.
In 2010, the media queen was sued by a motivational entrepreneur named Simone Kelly-Brown who has held a trademark registration on “Own Your Power” since 1996. The woman claimed that The Oprah Magazine featured on its cover a photograph of Winfrey and the headline, “Own Your Power,” held an “Own Your Power” corporate-sponsored event in conjunction with a Power Issue, and promoted it on an episode of The Oprah Winfrey Show.
Last year, a federal judge dismissed the trademark lawsuit, ruling that there could be no confusion about the source and that Winfrey had a fair use right to descriptively label her magazine.
On Friday, the appeals court vacated that ruling, reviving the lawsuit and remanding it for further proceedings. Here’s the full ruling.
In the opinion, Circuit Judge Chester Straub notes that to prevail on a fair use defense, a defendant like Winfrey has to show that the use was made other than as a mark, in a descriptive sense and in good faith.
On the first prong, the judge says that the plaintiff has sufficiently alleged that Oprah was attempting to make use of a trademark, particularly in the wide-ranging, varied and repeated way it used the catchphrase.
“We thus conclude that 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,’ beginning with the October Issue and expanding outward from there,” writes the appellate judge. “Kelly-Brown’s complaint implies that Oprah is a brand and is therefore the ultimate source of all things related to that brand, but that defendants sought to use the phrase ‘Own Your Power’ to denote a particular line of services and content within the larger Oprah brand.”
The next question is whether the use of the mark was descriptive. Oprah (and fellow corporate defendants who were accused of contributing to the infringement) argued that the use of the slogan “served as an exhortation for readers to take action to own their power and described a desired benefit of reading the Magazine Issue.”
But Judge Straub says that the specific issue of The Oprah Magazine didn’t really live up to the billing. The issue might have had an article that was headlined “THE 2010 O POWER LIST! 20 Women Who Are Rocking the World,” but the appeals court says that specific phrase in dispute was not “meant to describe the contents of a particular item in the Magazine.”
“For example,” says the ruling. “the ‘Power List’ inside the Magazine contains a list of admirable people, accompanied by biographical information about each. But the list does not provide specific advice regarding how a reader can follow in the footsteps of any of these individuals, nor does it provide advice regarding how a reader can become more powerful in general.”
Oprah hasn’t yet made a showing that its use of the phrase was descriptive, the appeals court concludes.
And as for whether or not the use was in bad faith, Judge Straub points to Kelly-Brown’s allegation that prior to Oprah’s rollout of the Oprah Winfrey Network, she bought the rights to use the acronym, “OWN,” from a woman who had previously registered it.
According to the ruling, “Kelly-Brown argues that this transaction plausibly suggests that the defendants conducted a trademark registration search for the word ‘Own,’ and that such a search would have turned up her then-pending service mark in the phrase ‘Own Your Power.’ We agree…”
As a result of all this, the dispute is remanded back to the trial court for further consideration. The claims against some of the corporate sponsors for contributory infringement remain dismissed.
The opinion draws a concurring opinion by Circuit Judge Robert D. Sack, who expresses caution about how the ruling will be interpreted. He writes that he fears “that the Court’s 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 — whether by magazine cover, newspaper headline, ‘blog’ heading, or otherwise.”
He says that 99.44 percent of the time, allowing property rights to trump the transmission of news with vernacular phrases is “foolish” but that in this instance, Oprah’s “use seen as part of a campaign of recurring uses, across different media, designed to appropriate the defendants’ source-identifier, or without regard for a high likelihood of that occurring, that defeats their fair use defense.”
In a certain sense, Oprah might just well be too powerful, able to communicate a message across multiple mediums with risk of stumbling upon an already-used trademark and then echoing it enough to the detriment of the owner. Then again, despite Judge Sack’s advisement, it won’t be surprising to see this decision come up in future trademark lawsuits against other media and entertainment companies.
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