Kelly-Brown v. Winfrey

717 F.3d 295 (2nd Cir. 2013)

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Nature of the Case

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Facts

P is the owner of a motivational services business, Own Your Power Communications, Inc., that holds events and puts out publications under the registered service mark 'Own Your Power.' Ds were involved in the production of a magazine, event, and website also employing the phrase 'Own Your Power.' P hosts a radio show holds conferences and retreats and writes a blog promoting the concept of 'owning' one's power. She also has a federally registered service mark in the phrase 'Own Your Power.' The service mark is displayed in a distinctive font that P uses on her website and other materials. P's service mark was registered May 27, 2008. At roughly the same time that P was seeking to register her service mark in 'Own Your Power,' Ds sought to register a trademark in a new Oprah venture, the Oprah Winfrey Network, to be known as 'OWN.' Ds arranged for the transfer of a trademark in 'OWN ONYX WOMAN NETWORK' from its original owner to avoid an infringement action from that mark's original owner. Ds were aware of P's mark since the same search Ds would have run to locate and negotiate the transfer of the trademark in 'OWN ONYX WOMAN NETWORK' would have also revealed P's mark. P alleges that Ds infringed upon her service mark by producing a bevy of publications, events, and online content all using the phrase, 'Own Your Power.' P received numerous inquiries from people who appear to have confused P's services with D's Event, Website, and Magazine. Competition from D has been detrimental to P's brand. P sued Ds alleging six causes of action under the Lanham Act: trademark counterfeiting, trademark infringement, reverse confusion, false designation of origin, contributory trademark infringement, and vicarious trademark infringement, as well as seven New Jersey state law claims. P had received numerous inquiries from people who appear to have confused P's services with D's Event, Website, and Magazine. Competition from D has been detrimental to P's brand. Ds moved to dismiss. The District Court granted their motion in its entirety. The District Court held that Ds' use of the words Own Your Power constituted fair use. The defense of fair use requires proof that the use was made '(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.' It reasoned that Ds engaged in a non-trademark use because there was no chance that an observer of the Magazine or Event would believe that they were created by P. It stated that the placement of the phrase on the Magazine's cover indicated that it was simply a headline describing the contents of the Magazine with Oprah's picture on the cover. The District Court determined that the use of the words 'Own Your Power' was descriptive because it described an action that it hoped that Magazine readers would take after reading the Magazine. The District Court held that Ds did not exhibit bad faith in using the mark. It decided that P had pleaded no facts that plausibly suggested that Ds intended to capitalize on her goodwill. It reasoned further that there was no likelihood of consumer confusion because the font, color, and formatting of Ds' use was significantly different from that protected by P's registered service mark. The District Court, therefore, held that all three of the elements of the fair use defense were met. The Court went on to dismiss Kelly-Brown's trademark infringement, reverse confusion, and false designation of origin claims on that basis. It also dismissed P's trademark counterfeiting claim because there was no evidence that Ds' use was identical in appearance to her own. P appealed.