Second Circuit reinstates ‘Own Your Power’ trademark infringement lawsuit against Oprah and others

by John Chapman

Simone Kelly–Brown owns a motivational services business organized around the concept “Own Your Power.” Kelly–Brown 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.”

Oprah Winfrey, Harpo, Inc., and Harpo Productions, Inc., and Hearst Corp. and Hearst Communications, Inc. (collectively “Defendants”) were involved in the production of a magazine, event, and website also employing the phrase “Own Your Power.” Kelly–Brown argues that in using the phrase, the defendants infringed upon her mark. She brought suit against the Defendants alleging trademark infringement, false designation of origin, reverse confusion, and counterfeiting.

Kelly–Brown alleges that the Defendants infringed upon her service mark by producing a bevy of publications, events, and online content all using the phrase, “Own Your Power.” For example, the October 2010 issue of O, the Oprah Magazine prominently featured the words “Own Your Power” on its front cover Following the Magazine’s Own Your Power cover, Kelly–Brown and Own Your Power Communications, Inc. received numerous inquiries from people who appear to have confused Kelly–Brown’s services with Oprah’s Event, Website, and Magazine. Competition from Oprah has been detrimental to Kelly–Brown’s brand.

The Defendants moved to dismiss. The District Court granted their motion in its entirety. The District Court reasoned that defendants 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 Kelly–Brown and her company.

Kelley-Brown appealed to the Second Circuit Court of Appeals. In response, the Defendants argued, as the District Court decided, that their actions are protected by the doctrine of “fair use.” The Second Circuit disagreed and has reinstated the lawsuit. Kelly-Brown v. Winfrey, — F.3d —-, No. 12–1207–cv (2d Cir. May 31, 2013).

The Second Circuit began by noting that in order to assert a successful fair use defense to a trademark infringement claim, the Defendant must prove three elements: that the use was made (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith. Given that it was considering a motion to dismiss based on the pleadings, the court of appeals found that Defendants had not established any of these elements and thus reversed the District Court’s dismissal.

Trademark Use

In determining whether the Defendants were using the words “Own Your Power” as a mark, the Second Circuit explained that the question is whether the Defendants were using the term “as a symbol to attract public attention.” Here, Kelly–Brown alleged that the defendants used the phrase “Own Your Power” in several unique instances and that these collectively constitute use as a mark. She provides allegations regarding several such 22 uses, including: (1) the October Issue of the Magazine, featuring the phrase in the center of the Issue’s cover; (2) the Own Your Power Event, billed as the “first ever,” that featured motivational content; (3) promotion of the Event through social media; and (4) the online video from the Event and other motivational articles provided on an “Own Your Power” section of Oprah’s website.

Kelly–Brown argues that, taken together, these uses suggest that the defendants were attempting to build an association with consumers between the phrase “Own Your Power” and Oprah. At this stage in the litigation, the court of appeals agreed with Kelly-Brown and found this “array of uses to be sufficient to infer a pattern of use.” The Second Circuit thus concluded 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.

Descriptive Sense

The next element of a fair use defense is that the disputed use was in a descriptive sense. The Defendants argued that their use of the phrase “Own Your Power” was descriptive of the publications to which that phrase was attached. They argued that the use of the phrase on the Magazine’s cover describes its contents and also “served as an exhortation for readers to take action to own their power and described a desired benefit of reading the Magazine Issue.” They further assert that subsequent uses of the phrase in connection with the Event, on the Website, etc., were merely referring back to this original, approved use.

The Second Circuit disagreed, finding that:

…it does not appear that the phrase ‘Own Your Power is meant to describe the contents of a particular item in the Magazine. For example, 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. … The Table of Contents of the Magazine further underscores the fact that the phrase is not used as a headline for a particular article or content. The bottom left corner of the page contains a smaller picture of the cover and a list describing where the articles referenced on the cover can be found. It does not list any article corresponding to the phrase “Own Your Power.”

The court of appeals found that the Defendants failed to meet their burden at this stage to show that their use of the phrase “Own Your Power” was descriptive

Good Faith

Defendants argued that it is implausible that someone as well-known as Oprah would attempt to trade on the goodwill of someone relatively obscure like Kelly–Brown. Kelly–Brown responded that she has pleaded facts sufficient to plausibly suggest that the defendants had knowledge of her mark and chose to go forward with the “Own Your Power” campaign anyway.

Kelley-Brown alleged that prior to the rollout of Oprah’s new Oprah Winfrey Network, to be known as “OWN,” the Defendants bought the rights to use the acronym “OWN” from a woman who had previously registered it as an acronym for the “Onyx Woman Network.” Kelly–Brown argued 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.”

The Second Circuit agreed with Kelly-Brown that these allegations plausibly suggest that the Defendants had knowledge of Kelly–Brown’s mark, liked it, and decided to use it as their own. Because the question at this stage is only whether Kelly-Brown’s suit should be dismissed on the pleadings, the Court’s role is not to resolve factual disputes. Accordingly, the court held of appeals held that the District Court erred in holding that the Defendants have conclusively demonstrated good faith in their use of the phrase “Own Your Power.”

The judgment of the District Court was vacated with respect to Kelly–Brown’s trademark infringement, false designation of origin, and reverse confusion claims. Kelly–Brown’s state law claims were also a reinstated. The court of appeals affirmed the judgment of the District Court with respect to Kelly–Brown’s vicarious infringement, contributory infringement, and counterfeiting claims. This case was remanded to the District Court for further proceedings.

Intellectual Property Law at Heygood, Orr & Pearson

At Heygood, Orr & Pearson, our attorneys have handled numerous patent matters including prosecuting claims for infringement. Our lawyers have handled claims brought by a large local company for infringement of its rail car patent, claims by a local inventor for infringement of her patent for a childcare product and claims by an Israeli company against a Fortune 500 company for infringement of its wireless technology patent. Our firm has also represented a client suing a large American pharmaceutical company for interfering with his patent rights to liposome technology.

Our attorneys are capable of litigating patent infringement claims throughout the country. In addition, firm attorney John “Jay” Pate is licensed to prosecute patents before the U.S. Patent and Trademark Office.

Beyond our specific experience in the field of intellectual property, our ability to prosecute patent infringement action is aided by our extensive trial experience in general. While technical knowledge and familiarity with patent rules is a must for attorneys handling patent infringement claims, there is no substitute for courtroom experience. At Heygood, Orr & Pearson, our seasoned litigators have the experience to take even the most complex patent case and explain it in terms a jury can understand. We have a track record of proven success representing businesses large and small. Several of our trial lawyers are board certified* and many of them have been selected as Super Lawyers in the State of Texas for several years in a row.** Our firm is AV-rated, the highest legal and ethical ranking available from the leading law firm ranking service, Martindale-Hubbell.

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Michael Heygood, James Craig Orr, Jr. and Eric Pearson are all Board Certified in Personal Injury Trial Law — Texas Board of Legal Specialization.

** Michael Heygood, James Craig Orr, Jr. and Eric Pearson were selected to the Super Lawyers List, a Thomson Reuters publication, for the years 2003 through 2013.

by John Chapman

John Chapman is a licensed attorney with experience in complex commercial litigation (including securities fraud, RICO, shareholder oppression, and derivative actions) and personal injury litigation.