Friday, March 06, 2015

You come at the queen, you best not miss: Oprah wins Own Your Power suit

Kelly-Brown v. Winfrey, No. 11 cv 7875 (S.D.N.Y. Mar. 5. 2015)
Kelly-Brown and her company, Own Your Power Communications, Inc., sued Oprah Winfrey and related defendants, alleging that they unlawfully used plaintiffs’ “Own Your Power” trademark on the cover of their magazine, at a magazine-related event, on their website and social media accounts, and on their TV show.  The district court granted defendants’ motion to dismiss, but the 32/§43(a) claims were revived on appeal. Kelly-Brown v. Winfrey, 717 F.3d 295, 315 (2d Cir. 2013). Here, Winfrey secures a hat trick: the claimed mark is invalid; there’s no likely confusion; and her use was descriptive fair use.
Kelly-Brown is a motivational speaker, life coach, and business coach who has been using the phrase “Own Your Power” in workshops and seminars since 2004. Her service mark was approved in 2008:

According to the registration, light blue was claimed as a feature of the mark.
The October 2010 issue of O, The Oprah Magazine prominently displayed the phrase “Own Your Power”—in white, italic font—surrounded by the phrases: “Unlock Your Inner Superstar: Our 4-step plan”; “The 2010 O Power List!: 20 Women Who Are Rocking the World”; “How to Tap Into Your Strength”; “Focus Your Energy”; and “Let Your Best Self Shine.”

Defendants also used the phrase on a promotional page inside the October and December 2010 issues, and on banners at their “first-ever own your power event”:

The magazine and event were subsquently mentioned on an episode of Oprah’s TV show and on affiliated websites/social media accounts.
First, the court found that “Own Your Power” was descriptive and lacking in secondary meaning.  Registration creates a rebuttable presumption of validity, but here plaintiffs registered a “special form” mark with script letters in light blue, with the disclaimer (also inherent in the fact that this wasn’t a word mark registration), “No claim is made to the exclusive right to use own your power apart from the mark as shown.” As a result, the registration was limited to that use of the phrase, and plaintiffs had no claim over the phrase itself.  (Compare the Ninth Circuit in KP Permanent, which held that the word portion of a mark was the most important and therefore protected by the special form registration there.)
In any event, defendants showed that the term was descriptive and not distinctive.  Plaintiffs’ use was descriptive because it referred to “the life/career empowerment services provided by Plaintiffs; these motivational services help clients own  their power.”  Though plaintiffs claimed that the phrase meant different things to different people, they still used the phrase on their website to describe their services: “Below are my services that can help you OWN YOUR POWER!” 
Despite “voluminous” discovery, plaintiffs couldn’t show that the claimed mark had secondary meaning.  Applying the Second Circuit’s six factors—(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use—the only conclusion was that plaintiffs completely failed to establish secondary meaning. From 2009 to 2013, they spent $2,957 on advertising.  They had no consumer studies, insufficient evidence of unsolicited media coverage, sales ranging from $966 in 2009 to $30,007 in 2013, and no profit between 2010 and 2012. There was no evidence of intentional copying; they issued C&Ds to other businesses that used the phrase, but that alone fell short of showing intentional copying.  Indeed, multiple other businesses used the phrase, as did Winfrey more than 20 years ago in a commencement speech delivered to Spelman College: “. . . Be a queen. Own Your Power. Own your glory. Go forth Spelman, and triumph.”  There was no triable question of material fact here. (Also compare AOL v. AT&T, where a registration alone created a triable question despite a lot of evidence of lack of distinctiveness.)
But even if there were a protectable mark, no confusion was likely; in fact, plaintiffs didn’t show that any Polaroid factor favored them.  Plaintiffs showed neither inherent nor market strength. Although both parties used the same phrase, the similarities were reduced in context.  Plaintiffs used “light blue scripted letters,” while defendants used white italicized letters against a large background image of Oprah Winfrey. In all other uses, they began the word “Own” using their trademark stylized “O,” and surrounded the phrase with colored bubbles containing other power-evoking words.
The parties also offered “fundamentally different services”: small scale/individual life coaching services versus a global media empire disseminating positive messages. Even were the services similar, defendants’ “geographic scope (worldwide), market position (highest rated program of its kind in history), and audience appeal (up to 16 million viewers) eliminate any actual competition and decrease any likelihood of confusion.” There was no evidence of likely bridging the gap; defendants have a global media presence and plaintiffs failed to make a profit from 2010 to 2012.
Plaintiffs’ evidence of actual confusion consisted of anecdotal statements from four business associates who emailed them purporting to be confused. (A fifth associate emailed questioning whether Kelly-Brown was “owning [her] power with Oprah now.” That query was not evidence of confusion, just an inquiry. Another associate also emailed plaintiffs, noting that defendants’ use of the phrase reminded her of Kelly-Brown, but not indicating confusion.)  Anecdotal evidence can raise a genuine issue of fact, but this evidence appeared to be in response to “a ‘call-me-and-tell-me-you-are-confused’ request,” and two emails were apparently solicited by Kelly-Brown.  One sender spoke to Kelly-Brown about defendants’ use of the phrase two days before emailing purporting to be confused, and another conceded that despite his email, he “knew [Plaintiff Kelly-Brown] wasn’t working with Oprah.” The remaining two people were already familiar with plaintiffs’ use of the phrase and their emails didn’t relate to any purchasing decisions.
Defendants, by contrast, introduced three surveys demonstrating no consumer survey—one tested forward confusion, one tested reverse, and one tested both.  Plaintiffs quibbled about the surveys, but failed to present their own, which weighed against them.
Also, there was no bad faith, even though plaintiffs’ mark was registered before defendants’ use.  Had defendants conducted a trademark search, they’d have noted that plaintiffs’ rights were limited to the stylized use, and their use was primarily descriptive, which itself showed good faith.
And furthermore, even if plaintiffs could show likely confusion, fair use would still apply.  Though the Second Circuit determined that plaintiffs plausibly pled defendants’ use of the phrase was “as a mark,” plaintiffs provided no evidence to support their claim that the uses of the phrase “Own Your Power” “collectively created a sub-brand using the phrase as a symbol to attract public attention.” 
As Judge Sack’s concurrence in Kelly-Brown noted, to prevail at summary judgment plaintiffs would need to prove a plan for such use or consumer perception of the phrase as a mark. Though plaintiffs argued that defendants made multiple uses of the phrase, they were exclusively associated with defendants’ Own Your Power conference, “an isolated event which occurred on September 16, 2010.” Shortly thereafter, defendants stopped using the phrase.  [Though presumably they are now free to begin again!] The court also found that defendants’ use of the phrase was inconsistent in font/stylization, weighing against a finding of intent to create a sub-brand.  Plus, plaintiffs failed to show that each use of the phrase was as a symbol to attract public attention, given that in each case the use was accompanied by defendants’ own registered marks.
The use was instead in a descriptive sense. The court found that “Own Your Power” was a commonly used phrase and courts “more readily find a phrase descriptive when it is in common usage.” Defendants’ expert evidence showed that the phrase had been used since at least 1981 as “a common motivational exhortation to harness or achieve mastery over one’s own power.” Winfrey’s own use of the phrase in her 1993 commencement speech at Spelman College, as well as numerous recent examples of the phrase’s use in the media, supported that conclusion.  On the magazine’s cover, the phrase described the issue’s theme: power. Likewise, at the conference, the phrase appeared on banners, surrounded by other power/confidence evoking words that are encapsulated by the phrase “Own Your Power.” These words—prefaced by “The Power of . . .”—surrounded the phrase: “living large,” “one voice,” “proof,” “passion,” “taking a stand,” “authenticity,” “command,” “speaking out,” “the big picture,” “make-believe,” “taking a leap,” “style,” “heart,” and “vision.”  Winfrey used the phrase descriptively on her TV show when she advised Serena Williams to “own her own power.”
And the use was in good faith, even though defendants had constructive knowledge of the registration; prior knowledge doesn’t necessarily mean bad faith.  There was no evidence of an intent to generate confusion, or intent to appropriate the phrase and create a sub-brand.

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