The October 2010 issue of O Magazine graced stands bearing a host of motivational commands:  “Tap Into Your Strength,” “Unlock Your Inner Superstar,” “Focus Your Energy,” “Let Your Best Self Shine,” and—most prominently—“Own Your Power.”  The issue promoted a sponsored event called “Own Your Power,” described as a panel discussion about power.  Afterwards, the Oprah Winfrey Show, a later issue of O Magazine and related websites and social media accounts each referenced the event and/or the October 2010 issue.

Simone Kelly-Brown, who offers motivational speaking and counseling services through her company, Own Your Power Communications, Inc., filed suit against Oprah Winfrey, her production company Harpo Productions, Inc., and various other entities on theories of trademark infringement, false designation of origin, trademark counterfeiting, and state law claims.  One of the theories advanced by Ms. Kelly-Brown includes reverse confusion—a theory wherein the senior use of the mark is mistaken for that of a much larger, more well-known junior user of the mark (rather than vice-versa).  According to Ms. Kelly-Brown, there were instances in which individuals believed her company was affiliated with Oprah. 

Back in March 2012, District Court Judge Paul Crotty dismissed the complaint, finding fair use because the defendants’ use was descriptive and not used to identify a source.  It was therefore not being used as a trademark.  In addition, he found that there was no bad faith on the part of defendants because plaintiffs had “not alleged facts to plausibly suggest that [d]efendants intended to capitalize on [p]laintiffs’ goodwill or that there was a likelihood of confusion.” 

Having found fair use, Judge Crotty went on to find that, accordingly, the use was not infringing—there could be neither “reverse confusion” by Oprah and her affiliated companies nor vicarious or contributory liability for the event’s sponsors—and there was no false designation of origin.  He found that there could be no counterfeit liability because the appearance of Oprah’s “Own Your Power” is dissimilar to Kelly-Brown’s “Own Your Power” in color, font, and size.  It therefore could not be “identical with or substantially indistinguishable from” Kelly-Brown’s use of the mark.  Having dismissed those claims, Judge Crotty declined to exercise supplemental jurisdiction over the state claims or address the defendants’ First Amendment argument.

Kelly-Brown and her company appealed.  Among other things, they argue that the district court (i) improperly found fair use at the pleading stage, (ii) neglected to consider their pleadings of actual confusion, (iii) improperly focused solely on comparing the difference in appearance between the two uses rather than similarities in sound and meaning; and (iv) failed to acknowledge defendants’ use as a trademark for a campaign in connection with motivational services, rather than as a source identifier for the magazine or event.

In return, the defendants assert that the district court correctly held that the use of the phrase on the magazine “to describe the contents of the [i]ssue and as the theme for the related [e]vent was not a trademark-source-identifying use, especially where the source of the [i]ssue and [e]vent were prominently identified.”  They also emphasize that they did not use Kelly-Brown’s stylized mark and claim that Kelly-Brown’s trademark only covers the specific appearance of it in connection with Kelly-Brown’s services, rather than the words itself. 

Finally, the defendants advocate for an alternative ground of affirming the dismissal of the complaint, the First Amendment.  They assert that the defendants’ use of “Own Your Power” is editorial in nature and does not constitute a commercial use and is therefore outside the ambit of the Lanham Act and protected by the First Amendment.  In the plaintiffs’ reply brief, they assert that full First Amendment protection is not warranted, arguing defendants’ use primarily arises in the context of commercial speech.  In doing so, they describe the defendants’ uses as part of an advertising campaign towards corporate promotion of the event, to sell magazines and to advertise the event’s sponsors.

Stay tuned for the decision of the Second Circuit…