Kelly-Brown, et al. v. Winfrey, et al.
Not provided in the text (2013)
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Rule of Law:
A defendant's repeated, multi-platform use of a plaintiff's trademark may plausibly constitute use 'as a mark' intended to create a sub-brand, making it difficult to establish the affirmative defense of fair use on a motion to dismiss, particularly when there are allegations of the defendant's prior knowledge of the senior user's mark.
Facts:
- Simone Kelly-Brown operates a motivational services business, Own Your Power Communications, Inc.
- Kelly-Brown holds a federally registered service mark for the phrase 'Own Your Power,' registered on May 27, 2008, featuring light blue scripted letters.
- While developing the 'OWN' television network, Oprah Winfrey's company, Harpo, conducted a trademark search and acquired the rights to a similar mark, 'OWN ONYX WOMAN NETWORK'.
- In September 2010, the October issue of O, The Oprah Magazine, featured the words 'Own Your Power' prominently on its front cover.
- On September 16, 2010, the magazine, along with corporate sponsors like Wells Fargo and Clinique, hosted a motivational seminar called the 'Own Your Power' event, which was promoted as the 'first-ever' of its kind.
- Following the event, Oprah's website hosted an 'Own Your Power' section with banners, video clips from the event, and additional motivational articles using the phrase.
- After Oprah's 'Own Your Power' campaign launched, Kelly-Brown received numerous inquiries from people who confused her services with Oprah's magazine, event, and website.
- Kelly-Brown alleged that competition from Oprah's use of the phrase was detrimental to her brand.
Procedural Posture:
- Simone Kelly-Brown sued Oprah Winfrey, Harpo, Hearst, and corporate sponsors in the U.S. District Court for the District of New Jersey, alleging trademark infringement and other claims.
- The case was transferred on the defendants' motion to the U.S. District Court for the Southern District of New York.
- The defendants filed a motion to dismiss all claims against them.
- The District Court granted the motion to dismiss in its entirety, holding that the defendants' use of the phrase 'Own Your Power' constituted fair use.
- Kelly-Brown, as appellant, appealed the dismissal to the U.S. Court of Appeals for the Second Circuit, with Winfrey et al. as appellees.
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Issue:
Does a defendant's repeated and multi-platform use of a trademarked phrase as a theme for a magazine issue, a live event, and a website section constitute fair use as a matter of law, shielding it from a trademark infringement claim at the motion to dismiss stage?
Opinions:
Majority - Straub, J.
No. A defendant has not established fair use as a matter of law at the motion to dismiss stage where a plaintiff plausibly alleges the phrase was used 'as a mark' to build a sub-brand, was not purely descriptive, and was used with prior knowledge of the plaintiff's registration. The court found that Kelly-Brown's allegations were sufficient to survive a motion to dismiss because the defendants could not prove all three elements of the fair use defense from the face of the complaint. First, the repeated use of 'Own Your Power' across the magazine, a live event, and a website plausibly suggested an attempt to build a new sub-brand, which constitutes use 'as a mark.' Second, the phrase did not clearly describe the contents of the magazine, as there was no specific article or section corresponding to it. Third, Kelly-Brown's allegation that the defendants' prior trademark search for 'OWN' would have revealed her mark plausibly suggested a lack of good faith. The court also explicitly rejected the argument that 'use as a mark' is a threshold requirement for an infringement claim, clarifying it is the first element of the affirmative defense of fair use.
Concurring - Sack, J.
No. Although concurring in the result to remand the case, the analysis should emphasize that a single use on a magazine cover to describe its contents is typically a clear case of fair use. The key fact that allows the claim to proceed is the allegation of a 'pattern of deliberate and systematic unauthorized use' across multiple media platforms. This alleged campaign to appropriate the mark, with knowledge of the plaintiff's rights, is what defeats the fair use defense at the motion to dismiss stage. Viewed in isolation, the use on the magazine cover was descriptive and not used as a mark. However, because the complaint alleges it was part of a larger, multi-tiered campaign to saturate the market and build a brand, dismissal is inappropriate.
Analysis:
This decision clarifies the significant challenge defendants face in asserting a fair use defense on a motion to dismiss in the Second Circuit. It establishes that a pattern of using a mark across different media can be sufficient to plead 'use as a mark,' thereby undermining the first element of the fair use defense. The ruling also solidifies the Second Circuit's position that 'use as a mark' is not a threshold for an infringement claim, but rather part of the defendant's affirmative defense, distinguishing its approach from that of the Sixth Circuit. The case serves as a caution to large media entities that using a smaller competitor's trademark as a recurring theme or slogan, even when accompanied by their own famous house mark, may lead to protracted litigation.
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