kelly-brown, et al. v. winfrey, et al

7/28/2019 Kelly-Brown, et al. v. Winfrey, et al.

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12-1207-cv Kelly-Brown, et al. v. Winfrey, et al.

1

UNITED STATES COURT OF APPEALS 2

For the Second Circuit3

_______________________________ 4

5August Term, 20126

7(Argued: September 25, 2012 Decided: May 31, 2013)8

9

Docket No. 12-1207-cv10 _______________________________ 11

12

SIMONE K ELLY-BROWN and OWN YOUR POWER COMMUNICATIONS, I NC., 13

14 Plaintiffs-Appellants,15

16 — v. — 17

18OPRAH WINFREY, HARPO PRODUCTIONS, I NC., HARPO, I NC., HEARST CORPORATION, HEARST19

COMMUNICATIONS, I NC., WELLS FARGO & CO., ESTEE LAUDER COMPANIES, I NC., CLINIQUE20

LABORATORIES, LLC, CHICO’S FAS, I NC., ABC COMPANIES (1-100), and JOHN DOES (1-100),2122

Defendants-Appellees.23

_______________________________ 24

25Before: STRAUB, SACK and CHIN, Circuit Judges.26

_______________________________ 27

On appeal from judgment entered pursuant to an Order dated March 6, 2012 by the28

United States District Court for the Southern District of New York (Paul A. Crotty, Judge)29

granting Defendants-Appellees’ motion to dismiss. Plaintiff is the owner of a motivational30services business named “Own Your Power Communications, Inc.,” and has a registered service31

mark in “Own Your Power.” Defendants published a magazine cover, hosted an event, and built32

a section of a website all utilizing the phrase “Own Your Power.” Plaintiff s bring suit alleging33

trademark infringement under the Lanham Act. The District Court held that the defendants’ use34of the phrase “Own Your Power” constituted fair use and also held that plaintiffs’ claims failed35

because she failed to meet the threshold requirement of showing use as a mark. We disagree36

with the District Court’s holding that the defendants have demonstrated fair use and also with its37holding that plaintiffs are required to make a threshold showing that defendants’ used “Own38Your Power” as a mark in order to state a claim for trademark infringement. We therefore39VACATE the judgment of the District Court with respect to plaintiffs’ trademark infringement,40

false designation of origin, and reverse confusion claims and REMAND for further proceedings41not inconsistent with this opinion. The District Court granted defendants’ motion to dismiss42

plaintiffs’ counterfeiting, vicarious infringement, and contributory infringement claims on43

separate grounds, and we AFFIRM with respect to these claims.44



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1

Judge SACK concurs in the result in a separate opinion.2

3 _________________________________ 4

5

PATRICIA LAWRENCE-K OLARAS, The PLK Law Group, P.C., Hillsborough, NJ, for 6 Plaintiffs-Appellants.7

8

JONATHAN R. DONNELLAN (Ravi V. Sitwala, Debra S. Weaver, on the brief ), The Hearst9

Corporation, New York, NY, Charles L. Babcock, Jackson Walker L.L.P.,10

Houston, TX, for Defendants-Appellees.11

_________________________________ 12

STRAUB, Circuit Judge:13

Plaintiff Simone Kelly-Brown (“Kelly-Brown”) is the owner of a motivational services14

business, Own Your Power Communications, Inc., that holds events and puts out publications15

under the registered service mark “Own Your Power.” Defendants Oprah Winfrey (“Oprah”),16

Harpo, Inc., and Harpo Productions, Inc. (collectively, “Harpo”), and Hearst Corp. and Hearst17

Communications, Inc. (collectively, “Hearst”) were involved in the production of a magazine,18

event, and website also employing the phrase “Own Your Power.” Kelly-Brown argues that in19

so using the phrase, the defendants infringed upon her mark. She brings suit for claims including20

trademark infringement, false designation of origin, reverse confusion, and counterfeiting. She21

also brings suit for vicarious and contributory infringement against Wells Fargo & Co. (“Wells22

Fargo”), Clinique Laboratories, LLC (“Clinique”), Estee Lauder Cos., Inc. (“Estee Lauder”), and23

Chico’s FAS, Inc. (“Chico’s”), which were all corporate sponsors of the allegedly infringing24

“Own Your Power” event.25

Kelly-Brown appeals from the grant of a motion to dismiss in the Southern District of 26

New York (Paul A. Crotty, Judge), finding that the defendants’ use of the phrase “Own Your 27

Power” was fair use. The District Court dismissed Kelly-Brown’s counterfeiting, vicarious28

infringement, and contributory infringement claims on additional grounds. Because we find that29



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the defendants have not adequately established a fair use defense, we VACATE the judgment of 1

the District Court with respect to Kelly-Brown’s trademark infringement, false designation of 2

origin, and reverse confusion claims and REMAND this case for further proceedings not3

inconsistent with this opinion. We agree with the District Court’s holdings with respect to Kelly-4

Brown’s vicarious infringement, contributory infringement, and counterfeiting claims and5

therefore AFFIRM with respect to these claims.6

BACKGROUND7

The allegations recited below are taken from the complaint, and we assume they are true8

for the purposes of this appeal.9

Kelly-Brown owns a motivational services business organized around the concept “Own10

Your Power.” Kelly-Brown hosts a radio show, holds conferences and retreats, and writes a blog11

promoting the concept of “owning” one’s power. She also has a federally registered service12

mark in the phrase “Own Your Power.” 13

The service mark registered with the United States Patent and Trademark Office is14

displayed in a distinctive font that Kelly-Brown uses on her website and other materials, as15

follows:1 16

17

The service mark states, “THE COLOR(S) LIGHT BLUE IS/ARE CLAIMED AS A FEATURE18

OF THE MARK. THE MARK CONSISTS OF LIGHT BLUE SCRIPTED LETTERS WHICH19

CREATE THE WORDS OWN YOUR ‘POWER.’” Kelly-Brown’s service mark was registered20

May 27, 2008. 21

1 The images discussed in this opinion are also available online at

http://www.ca2.uscourts.gov/Docs/Video_files/12_1207/Kelly-Brown_images.pdf



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Defendant Oprah almost needs no introduction, but warrants one in this context. She1

runs a vast media empire, which consists of, inter alia, a magazine, and a website, which is run2

by Harpo, and (until recently) a television program. Oprah’s name and images figure3

prominently in the branding of these enterprises.4

At roughly the same time that Kelly-Brown was seeking to register her service mark in5

“Own Your Power,” the defendants also sought to register a trademark in a new Oprah venture,6

the Oprah Winfrey Network, to be known as “OWN.” During the creation of OWN, Harpo7

arranged for the transfer of a trademark in “OWN ONYX WOMAN NETWORK” from its8

original owner to Harpo to avoid an infringement action from that mark’s original owner.9

Defendants would likely have been aware of Kelly-Brown’s pending registration for the service10

mark in “Own Your Power,” since the same search defendants would have run to locate and11

negotiate the transfer of the trademark in “OWN ONYX WOMAN NETWORK” would have12

also revealed Kelly-Brown’s mark. 13

Kelly-Brown alleges that the defendants infringed upon her service mark by producing a14

bevy of publications, events, and online content all using the phrase, “Own Your Power .” For 15

example, the October 2010 issue of O, the Oprah Magazine (the “Magazine”), which was16

distributed on or about September 13, 2010, prominently featured the words “Own Your Power”17

on its front cover. Beneath these words were the sub-headings “How to Tap Into Your 18

Strength”; “Focus Your Energy”; and “Let Your Best Self Shine.” It also contained the19

following headline set off to the right side: “THE 2010 O POWER LIST! 20 Women Who Are20

Rocking the World.” 21



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1



6

The Power List therein consisted of a list of people who were influential in various fields,1

with each serving as an example of a particular “kind” of power. For example, one page2

contained a photograph of the actress Julia Roberts and a paragraph describing her. Set off from3

the text is a red circle containing the phrase “THE POWER OF . . . living large.” 4

On September 16, 2010, the Magazine, in connection with various other businesses,5

including defendants Wells Fargo, Clinique, and Chico’s, held an “Own Your Power” event (the6

“Event”). At the Event, various celebrities posed for promotional photographs in front of an7

“Own Your Power” backdrop that also contained trademarks for Chico’s, Wells Fargo, Clinique,8

and the Magazine. The Event involved a seminar and workshop offering motivational advice9

regarding self-awareness, self-realization, and entrepreneurship, under the aegis of the theme10

“Own Your Power.” The Event was subsequently described in the December 2010 issue of the11

Magazine as the “FIRST-EVER OWN YOUR POWER EVENT.” 12

Following the Event, the Harpo website (the “Website”) contained video clips from the13

Event and placed “Own Your Power” banners and content on at least 75 different individual14

webpages. Each page containing the “Own Your Power” banner displayed the same header 15

image, with font and graphics that resembled the layout of the October issue of the Magazine. In16

the center of the banner were the words “Own Your Power!” in a large italicized font. On either 17

side of these words were truncated, colored circles, each containing text. The text inside the left-18

most circle contained the words, “The Power of . . .” To the right were arrayed other circles19

containing ellipses followed by the words, “. . . heart,” “. . . vision,” “. . . one voice,” and “. . .20

seizing the moment.” 21



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1

The Octo ber issue contained pages with a similar format, with the phrase “the power 2

of . . .” surrounded by various concepts written in colored circles, each beginning with an3

ellipsis. The “Own Your Power” bannered pages of the website included articles such as, “How4

to Tap Into Your True Power,” “Motivation: One Entrepreneur’s Fabulous Story,” and “The5

Secrets of Success.” Each page is accompanied by banner advertisements.6

Approximately two weeks after the Event occurred, the Magazine’s Facebook page7

displayed photographs taken that evening. On September 27, 2010, Oprah appeared on her 8

television show and displayed the cover of the October 2010 issue of the Magazine. In addition,9

the December 2010 issue of the Magazine, circulated around November 13, 2010, contained10

information encouraging readers to view the videos from the Event online at the Website. 11



8

Following the Magazine’s Own Your Power cover, Kelly-Brown and Own Your Power 1

Communications, Inc. received numerous inquiries from people who appear to have confused2

Kelly-Brown’s services with Oprah’s Event, Website, and Magazine. Competition from Oprah3

has been detrimental to Kelly-Brown’s brand. 4

As a result, Kelly-Brown brought this suit in the District of New Jersey on July 28, 2011,5

alleging six causes of action under the Lanham Act: trademark counterfeiting, trademark 6

infringement, reverse confusion, false designation of origin, contributory trademark 7

infringement, and vicarious trademark infringement, as well as seven New Jersey state law8

claims. On November 3, 2011, the District of New Jersey granted a motion to transfer venue of 9

the case to the Southern District of New York.10

The defendants moved to dismiss. The District Court granted their motion in its entirety.11

Kelly-Brown v. Winfrey, No. 11 Civ. 7875, 2012 WL 701262 (S.D.N.Y. Mar. 6, 2012). With12

regard to the Lanham Act claims, the District Court held that the defendants’ use of the words13

Own Your Power constituted fair use. The defense of fair use requires proof that the use was14

made “(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.” JA Apparel 15

Corp. v. Abboud , 568 F.3d 390, 400 (2d Cir. 2009) (internal quotation marks omitted).16

The District Court first reasoned that defendants engaged in a non-trademark use because17

there was no chance that an observer of the Magazine or Event would believe that they were18

created by Kelly-Brown and her company. Kelly-Brown, 2012 WL 701262, at *3. It noted that19

Oprah was pictured on the October 2010 Magazine cover, indicating to the viewer who it was20

that had put forward the Magazine. Id . Further, it stated that the placement of the phrase on the21

Magazine’s cover indicated that it was simply a headline describing the contents of the22

Magazine. Id. In deciding that the Magazine Cover employed a non-trademark use of “Own23



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Your Power,” the District Court indicated that the satisfaction of the first factor of the fair use1

analysis alone would be sufficient to dismiss Kelly-Brown’s Lanham Act claims, but it went on2

to discuss the other two elements of the analysis because these, too, it believed, supported its3

determination that the defendants had engaged in fair use of the phrase “Own Your Power.” Id. 4

at *4.5

Thus, the District Court determined that the use of the words “Own Your Power” was6

descriptive because it described an action that it hoped that Magazine readers would take after 7

reading the Magazine. Id . at *4-5. 8

Finally, the District Court held that the defendants did not exhibit bad faith in using the9

mark. It decided that Kelly-Brown had pleaded no facts that plausibly suggested that the10

defendants intended to capitalize on her good will. Id . at *6. It reasoned further that there was11

no likelihood of consumer confusion because the font, color, and formatting of the defendants’12

use was significantly different from that protected by Kelly-Brown’s registered service mark. Id . 13

The District Court therefore held that all three of the elements of the fair use defense were met.14

Having found that the defendants’ use constituted fair use, the District Court went on to15

dismiss Kelly-Brown’s trademark infringement, reverse confusion, and false designation of 16

origin claims on that basis. Id . at *6-7. With regard to contributory and vicarious trademark 17

infringement, it held that those claims should be dismissed because there was no primary18

infringement to which any defendant could have contributed, and because Kelly-Brown had not19

adequately alleged a partnership or agency relationship among any of the defendants. Id . at *7-8.20

The District Court then dismissed Kelly-Brown’s trademark counterfeiting claim because21

there was no evidence that the defendants’ use was identical in appearance to her own. Id . at *8-22

9. Because it found that Kelly-Brown’s complaint must be dismissed for all the above reasons, it23



10

declined to reach the defendants’ First Amendment arguments. Id . at *9. The District Court also1

declined to exercise supplemental jurisdiction over Kelly-Brown’s state law claims, thereby2

dismissing her complaint in its entirety. Id . 3

This timely appeal followed.4

DISCUSSION5

On an appeal from a grant of a motion to dismiss, we review de novo the decision of the6

district court. Capital Mgmt. Select Fund Ltd. v. Bennett, 680 F.3d 214, 219 (2d Cir. 2012). We7

accept all factual allegations in the complaint as true, drawing all reasonable inferences in favor 8

of the plaintiff. Tiberio v. Allergy Asthma Immunology of Rochester, 664 F.3d 35, 36 (2d Cir.9

2011). “To survive a motion to dismiss, a complaint must contain sufficient factual matter,10

accepted as true, to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 55611

U.S. 662, 678 (2009) (internal quotation marks omitted).12

Kelly-Brown brings suit pursuant to §§ 32 and 43 of the Lanham Act. 15 U.S.C.13

§§ 1114, 1125. Section 32(1)(a) of the Lanham Act prohibits any person from “us[ing] in14

commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in15

connection with the sale, offering for sale, distribution, or advertising of any goods or services on16

or in connection with which such use is likely to cause confusion, or to cause mistake, or to17

deceive.” 15 U.S.C. § 1114(1)(a). Section 43(a) similarly prohibits any person from “us[ing] in18

commerce,” in connection with any goods or services, “any word, term, name, symbol, or 19

device, or any combination thereof . . . which . . . is likely to cause confusion, or to cause20

mistake, or to deceive . . . as to the origin, sponsorship, or approval of his or her goods [or]21

services . . . by another person . . . .” 15 U.S.C. § 1125(a)(1).22



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I. Trademark Use as a Threshold Requirement1

In its analysis the District Court stated that unless Kelly-Brown showed that the2

defendants used the phrase “Own Your Power” as a trademark, her claim must fail as a matter of 3

law. Kelly-Brown, 2012 WL 701262, at *4. The defendants advance the same argument on4

appeal. Defendants claim that our prior decisions and law from the Sixth Circuit support the5

conclusion that use as a mark is a threshold requirement. We conclude that defendants6

misinterpret our prior law, and we conclude that the Sixth Circuit’s analysis does not comport7

with our law on consumer confusion.8

In interpreting our prior decisions, defendants conflate two distinct concepts, use of a9

trademark in commerce and use as a mark, both of which, confusingly, we describe by the10

shorthand phrase “trademark use.” Plaintiffs are required to show “use in commerce” as an11

element of an infringement claim. See 18 U.S.C. §§ 1114(1)(a), 1125(a)(1). The Lanham Act12

defines “use in commerce” as follows: 13

The term “use in commerce” means the bona fide use of a mark in the ordinary14

course of trade, and not made merely to reserve a right in a mark. For purposes of 15this chapter, a mark shall be deemed to be in use in commerce--16

(1) on goods when--17

(A) it is placed in any manner on the goods or their containers or the18

displays associated therewith or on the tags or labels affixed thereto, or if 19

the nature of the goods makes such placement impracticable, then on20

documents associated with the goods or their sale, and21

(B) the goods are sold or transported in commerce, and22

(2) on services when it is used or displayed in the sale or advertising of 23

services and the services are rendered in commerce, or the services are24

rendered in more than one State or in the United States and a foreign country25

and the person rendering the services is engaged in commerce in connection26

with the services.27

15 U.S.C. § 1127 (emphasis added).28



13

A plaintiff is not required to demonstrate that a defendant made use of the mark in any1

particular way to satisfy the “use in commerce” requirement. The element is satisfied if the mark 2

is affixed to the goods “in any manner.” 15 U.S.C. § 1127; see also Rescuecom Corp. v. Google,3

Inc., 562 F.3d 123, 125-26, 129 (2d Cir. 2009) (holding that Google’s use of the plaintiff’s4

trademark as a keyword to trigger the display of the advertiser’s copy on Google’s search results5

page and as a suggestion to advertisers as a keyword they might purchase were sufficient to6

satisfy the “use in commerce” requirement). 7

Defendants do not argue that Kelly-Brown has not satisfied the “use in commerce”8

requirement. Such an argument would be unavailing in any event. The defendants have9

certainly used the words “Own Your Power” in commerce. The words “Own Your Power”10

appeared prominently on the front cover of the Magazine — a good for sale — and on the Oprah11

Website, which contained banner advertisements alongside “Own Your Power” content.12

The analysis we conduct when considering whether a defendant has used a mark in13

commerce contrasts sharply with the inquiry we conduct when, as here, we are considering14

whether the defendant used a competitor’s mark “as a mark.” In determining whether a15

particular use is made “as a mark,” we ask whether the defendant is using the “term as a symbol16

to attr act public attention.” JA Apparel Corp., 568 F.3d at 400.17

In JA Apparel , the defendant sold an eponymous clothing line; he subsequently began a18

new clothing line and ran print ads for the line that included his trademarked name. Id . at 392.19

We suggested, without deciding, that our conclusion as to whether defendant was using his own20

name as a mark would differ depending on the content of the ad he ran. Id . at 402. We21

suggested that an ad which contained, in small text, the words “Designer Joseph Abboud in a 222

Button Super 120 S Charcoal Chalkstripe from His Fall 2008 Jaz Collection,” would be a use of 23



14

defendant’s name that was not a mark. Id . By contrast, we suggested that an ad which contained1

the words, “A New Composition by JOSEPH ABBOUD,” in larger text than the name of the2

new brand, would be use as a mark. Id . When determining whether a defendant has used3

something “as a mark,” we must conduct a close examination of the content and context of the4

use.5

Thus, in determining whether the plaintiffs have satisfied the “use in commerce”6

requirement, we ask whether the trademark has been displayed to consumers in connection with7

a commercial transaction. In determining whether a use is made “as a mark,” however, we make8

a more detailed determination of the particular manner in which the mark was used.9

In arguing that “trademark use” is a threshold requirement, defendants rely upon 1-80010

Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400, 411-12 (2d Cir. 2005). They cite 1-80011

Contacts for the proposition that “‘use’ must be decided as a threshold matter.” Id . at 412. An12

examination of the surrounding text makes clear that 1-800 Contacts refers not to use as mark,13

but rather use of a mark in commerce. This passage reads,14

Not only are “use,” “in commerce,” and “likelihood of confusion” three distinct15

elements of a trademark infringement claim, but “use” must be decided as a16

threshold matter because, while any number of activities may be “in commerce”17or create a likelihood of confusion, no such activity is actionable under the18

Lanham Act absent the “use” of a trademark.19

Id . (emphasis added). While we held in 1-800 Contacts that demonstrating use in commerce is a20

threshold burden on plaintiff, we have never so held with regard to use “as a mark .” Defendants21

are therefore incorrect that our case law requires plaintiffs to demonstrate they have used Own22

Your Power “as a mark” in order to adequately allege a cause of action for trademark 23

infringement.24

Defendants also rely upon Sixth Circuit law for the proposition that use as a mark is a25

threshold requirement for a Lanham Act claim. The Sixth Circuit, unlike this Circuit, has held26



16

one particular consideration, which is not even one of the eight Polaroid factors, above all of the1

other factors would be inconsistent with this Circuit’s approach to Lanham Act cases. 2

Moreover, although we have never decided this precise issue, we have previously3

allowed certain claims to proceed even where the defendant is not using the plaintiff’s mark as a4

mark. See, e.g., EMI Catalogue P’ship, 228 F.3d at 64, 67-68 (holding that material issues of 5

fact existed as to whether use of the slogan “Swing Swing Swing,” playing off of the6

trademarked song title “Sing Sing Sing (with a Swing),” was fair use, notwithstanding our 7

holding that the slogan was not used as a mark); Louis Vuitton Malletier v. Burlington Coat 8

Factory Warehouse Corp., 426 F.3d 532, 539 (2d Cir. 2005) (holding that defendant’s handbag9

meant to evoke Louis Vuitton’s trademarked handbags could create consumer confusion even in10

the absence of an allegation that the defendant was attempting to establish its design as a11

competing mark). The Sixth Circuit’s test would lead to the dismissal of these claims without12

addressing what is beyond doubt the central question in considering consumer confusion:13

whether consumers were actually confused by the allegedly infringing product. 14

We therefore decline to adopt the rule that Lanham Act plaintiffs must show that the15

defendant was using the allegedly inf ringing content “as a mark” as a threshold issue in order to16

establish consumer confusion. 17

II. Fair Use 18

In order to assert a successful fair use defense to a trademark infringement claim, the19

defendant must prove three elements: that the use was made (1) other than as a mark, (2) in a20

descriptive sense, and (3) in good faith. See 15 U.S.C. § 1115(b)(4); EMI Catalogue P’ship, 22821

F.3d at 64. Because fair use is an affirmative defense, it often requires consideration of facts22

outside of the complaint and thus is inappropriate to resolve on a motion to dismiss. Affirmative23



17

defenses may be adjudicated at this stage in the litigation, however, where the facts necessary to1

establish the defense are evident on the face of the complaint. McKenna v. Wright , 386 F.3d2

432, 436 (2d Cir. 2004). Plaintiffs, in rebutting defendants’ arguments, are held only to the usual3

burden of a motion to dismiss, id ., which is to say they must plead sufficient facts to plausibly4

suggest that they are entitled to relief, Iqbal , 556 U.S. at 678.5

Defendants here note that the mere fact that someone owns a mark that contains a6

particular word or phrase does not grant the holder the exclusive right to use that word or phrase7

commercially. See Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 951 (7th Cir.8

1992) (“The fair use doctrine is based on the principle that no one should be able to appropriate9

descriptive language through trademark registration.”). “[T]he owner ’s rights in a mark extend10

only to its significance as an identifying source, not to the original descriptive meanings of a11

mark,” EMI Catalogue P’ship, 228 F.3d at 64, and so where another person uses the words12

constituting that mark in a purely descriptive sense, this use may qualify as permissible fair use.13

We now consider whether the defendants have satisfied each element of a fair use14

defense in turn.15

A. Trademark Use16

As noted above, in determining whether the defendants were using the words “Own Your 17

Power” as a mark, we ask whether they were using the term “as a symbol to attract public18

attention.” JA Apparel , 568 F.3d at 400 (internal quotation marks omitted). Kelly-Brown19

alleges that the defendants used the phrase “Own Your Power” in several unique instances and20

that these collectively constitute use as a mark. She provides allegations regarding several such21

uses, including: (1) the October Issue of the Magazine, featuring the phrase in the center of the22

Issue’s cover ; (2) the Own Your Power Event, billed as the “first ever,” that featured23



18

motivational content; (3) promotion of the Event through social media; and (4) the online video1

from the Event and other motivational articles provided on an “Own Your Power” section of 2

Oprah’s website. Kelly-Brown argues that, taken together, these uses suggest that the defendants3

were attempting to build an association with consumers between the phrase “Own Your Power”4

and Oprah.5

At this stage in the litigation, this array of uses is sufficient for us to infer a pattern of use.6

We thus conclude that Kelly-Brown has plausibly alleged that Oprah was attempting to build a7

new segment of her media empire around the theme or catchphrase “Own Your Power,”8

beginning with the October Issue and expanding outward from there. We have recognized that9

established companies are allowed to seek trademarks in sub-brands. See Abercrombie & Fitch10

Co. v. Hunting World, Inc., 537 F.2d 4, 14 (2d Cir. 1976). Kelly-Brown’s complaint implies that11

Oprah is a brand and is therefore the ultimate source of all things related to that brand, but that12

defendants sought to use the phrase “Own Your Power” to denote a particular line of services13

and content within the larger Oprah brand.14

Defendants counter that this case is on all fours with Packman v. Chicago Tribune Co.,15

267 F.3d 628, 633 (7th Cir. 2001). There, the Chicago Tribune published a newspaper with the16

headline “The Joy of Six” after the Chicago Bulls won their sixth basketball championship. Id .17

at 634. Plaintiff claimed she had a trademark in the phrase. Id . The Tribune later reproduced18

this front page on various promotional items. Id . The Seventh Circuit concluded that this use19

was merely a headline, rather than a use as a mark, because the Tribune’s masthead clearly20

identified the source of the newspaper, and because the sports memorabilia at issue in the case21

was more readily identifiable with the Tribune brand name than with the phrase “Joy of Six.” Id .22

at 639-40. Defendants rely on Packman to argue that their use of the phrase “Own Your Power”23



20

meaning need not be proven for an inherently distinctive title of a literary series, newspaper,1

periodical, television series or the like.”). Similarly, courts have protected advertising slogans2

under the theory that companies have devoted a great deal of time and expense into creating an3

association in the minds of consumers between a slogan and a particular product. See, e.g., Nike,4

Inc. v. “ Just Did It ” Enters., 6 F.3d 1225, 1227-28 (7th Cir. 1993); Cont’ l Scale Corp. v. Weight 5

Watchers Int’ l, Inc., 517 F.2d 1378, 1379-80 (C.C.P.A. 1975); Chem. Corp. of Am. v. Anheuser-6

Busch, Inc., 306 F.2d 433, 436 (5th Cir. 1962).7

Repetition is important because it forges an association in the minds of consumers8

between a marketing device and a product. When consumers hear a successful slogan, for 9

example, they immediately think of a particular product without even being prompted by the10

product’s actual name. When they encounter the title of a popular literary series, they will11

recognize, just based on the name, that the work is one of that series and is therefore the work of 12

a particular author. The slogan or title becomes a symbolic identifier of a product or product line13

through repetition.14

It is adequately alleged in the complaint that the defendants were trying to create, through15

repetition across various forms of media, a similar association between Oprah and the phrase16

“Own Your Power.” The defendants began to create the association between that phrase and17

Oprah with the cover of the October Issue of the Magazine, and continued to encourage it18

through both the Event and the Website. Each of these employed usages of the phrase “Own19

Your Power” involved separate content and context, and thus it is plausible that the defendants20

were attempting to build up a line of wide-ranging content all denoted by the phrase “Own Your 21

Power.” “Own Your Power,” through these interrelated uses, would thus become symbolic22

shorthand for the products and message as a whole, meant to remind consumers of a particular 23



21

kind of Oprah-related content. Thus, plaintiffs have alleged that this repeated and wide-ranging1

usage of the phrase “Own Your Power” functioned as a mark. Of course, further information2

may emerge during discovery that undermines Kelly-Brown’s theory that Oprah’s use was an3

attempt to create a sub-brand, but her allegations are sufficient at this stage.4

The fact that Oprah’s (household) name was also attached to the Magazine, the Website,5

and the Event does not suffice to demonstrate that “Own Your Power” was not also employed as6

a mark in each of its uses by defendants. It is well established law that both a slogan and a single7

brand name can serve as co-existent marks. See Grotrian, Helfferich, Schulz, Th. Steinweg 8

Nachf. v. Steinway & Sons, 523 F.2d 1331, 1338-39 (2d Cir. 1975) (holding that “Steinway The9

Instrument of Immortals” was a properly “registered slogan” notwithstanding the fact that10

Steinway itself was also a protected mark); see also Sands, Taylor & Wood Co. v. Quaker Oats11

Co., 978 F.2d 947, 954 (7th Cir. 1992) (“ Nor is a defendant’s use of a term in conjunction with12

its own trademark per se a use other than as a trademark.” (internal quotation marks omitted)); 1 13

MCCARTHY ON TRADEMARKS § 7.21 (“The fact that a slogan is used in conjunction with a14

previously existing trademark does not mean that the slogan does not also function as a mark, for 15

a product can bear more than one trademark.”). 16

To be sure, we have previously noted that “the prominent display of the defendants’ own17

trademarks” can contribute to a finding that the defendants were not using a different distinct18

phrase as a mark. See Cosmetically Sealed Indus., Inc. v. Chesebrough- Pond’s USA Co., 12519

F.3d 28, 30-31 (2d Cir. 1997). In Cosmetically Sealed , a lipstick manufacturer had a display of 20

trial-sized lipsticks as well as complimentary postcards that customers were encouraged to use to21

test the lipsticks. Id . at 29. The display featured the words, “Seal it with a Kiss!!” which another 22

lipstick manufacturer, the plaintiff, used as a slogan, and in which the plaintiff held a valid23



23

descriptive when it is in common usage. For example, we have found the instruction “Seal it1

with a Kiss!!” to be descriptive where lipstick testers were to kiss a postcard wearing the lipstick 2

and then send it to a loved one. Cosmetically Sealed Indus., 125 F.3d at 30. In so holding, we3

noted, “The phrase ‘sealed with a kiss’ is a fixture of the language, used by generations of school4

girls, who have given it such currency that it is readily recognized when communicated only as5

an acronym —SWAK.” Id . Similarly, the Seventh Circuit held that the phrase “The Joy of Six”6

was descriptive after noting that the phrase “is a play on the 1970s book series The Joy of Sex”7

and “has been used to describe positive feelings associated with six of anything.” Packman, 2678

F.3d at 641. By contrast, we have held that the slogan “Swing Swing Swing” for golf clubs,9

playing on the title of the Benny Goodman song “Sing Sing Sing,” was not descriptive because10

golfers “swing” their clubs, not “swing swing swing” them. EMI Catalogue P’ship, 228 F.3d at11

65.12

Defendants have not argued that the phrase “Own Your Power” was in popular usage.13

Nor indeed could they in a motion to dismiss. Doing so would surely require defendants to14

reference material beyond the four corners of the complaint. Of course, discovery may reveal15

that the phrase has some wider currency than is immediately apparent.16

To be sure, there is no requirement that a usage be immediately recognizable as a popular 17

phrase for it to be descriptive. See Sands, Taylor & Wood Co., 978 F.2d at 952-53. In Sands, the18

court held that a material issue of fact existed regarding whether the tagline “Gatorade is Thirst19

Aid” was descriptive notwithstanding the fact that it was not a “common phrase.” Id . at 953. It20

so held because “the average consumer [could] perceive[] ‘Thirst Aid’ as describing a21

characteristic of Gatorade — its ability to quench thirst.” Id .22



24

But here the phrase “Own Your Power” does not describe the contents of the Magazine.1

The words are prominently displayed in the center of the Magazine with the subtitles “How to2

Tap Into Your Strength”; “Focus Your Energy”; and “Let Your Best Self Shine” in smaller type3

below. Along the edges of the magazine are specific headlines for articles, including “THE 20104

O POWER LIST! 20 Women Who Are Rocking the World.” Although both the center phrase5

and the article headline make use of the word “power,” it does not appear that the phrase “Own6

Your Power” is meant to describe the contents of a particular item in the Magazine. For 7

example, the “Power List” inside the Magazine contains a list of admirable people, accompanied8

by biographical information about each. But the list does not provide specific advice regarding9

how a reader can follow in the footsteps of any of these individuals, nor does it provide advice10

regarding how a reader can become more powerful in general.11

The Table of Contents of the Magazine further underscores the fact that the phrase is not12

used as a headline for a particular article or content. The bottom left corner of the page contains13

a smaller picture of the cover and a list describing where the articles referenced on the cover can14

be found. It does not list any article corresponding to the phrase “Own Your Power.” 15

It is the defendants’ burden here to show that their use of the phrase “Own Your Power”16

was descriptive. At this stage in the litigation, defendants have not made that showing.17

C. Good Faith18

The final element of a fair use defense is a showing that the use was made in good faith.19

We “equate a lack of good faith with the subsequent user’s intent to trade on the good will of the20

trademark holder by creating confusion as to source or sponsorship.” EMI Catalogue P’ship,21

228 F.3d at 66. Even where there is no direct evidence of intent, “if there is additional evidence22

that supports the inference that the defendant sought to confuse consumers as to the source of the23



25

product, . . . the inference of bad faith may fairly be drawn.” Id . (internal quotation marks1

omitted).2

Defendants, who bear the burden in establishing a fair use defense, assert that their good3

faith is evident from the face of the complaint. They argue, in essence, that it is implausible that4

someone as well-known as Oprah would attempt to trade on the goodwill of someone relatively5

obscure like Kelly-Brown. See Star Indus., 412 F.3d at 389 (finding good faith based in part on6

“the implausibility of the notion that a premier international rum manufacturer would seek to7

conflate its products with those of a regional discount vodka manufacturer ”). The defendants8

further observe that the phrase “Own Your Power” was comingled with other Oprah-related9

marks, suggesting both that no consumer would be confused as to the origin of their “Own Your 10

Power” publications and that they were not trading on Kelly-Brown’s good will. 11

The defendants are correct that we have found good faith where a defendant prominently12

displayed its own marks in a way that overshadows the plaintiff’s mark, reasoning that the13

prominent placement demonstrates that the defendant had no intent to trade on the plaintiff’s14

good will. Cosmetically Sealed Indus., 125 F.3d at 30-31. But a plaintiff may also show absence15

of good faith where a junior user had knowledge or constructive knowledge of the senior user’s16

mark and chose to adopt a similar mark. Star Indus., 412 F.3d at 389.17

Kelly-Brown argues that she has pleaded facts sufficient to plausibly suggest that the18

defendants had knowledge of her mark and chose to go forward with the “Own Your Power”19

campaign anyway. Indeed, she alleges that prior to the rollout of Oprah’s new Oprah Winfrey20

Network, to be known as “OWN,” the defendants bought the rights to use the acronym “OWN”21

from a woman who had previously registered it as an acronym for the “Onyx Woman Network.”22

Kelly-Brown argues that this transaction plausibly suggests that the defendants conducted a23



26

trademark registration search for the word “Own,” and that such a search would have turned up1

her then-pending service mark in the phrase “Own Your Power.” We agree that these allegations2

do plausibly suggest that the defendants had knowledge of Kelly-Brown’s mark , liked it, and3

decided to use it as their own. In other words, defendants’ allegations that they did not intend to4

trade on Kelly-Brown’s good will, even if true, do not preclude a finding of bad faith. See5

Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 483 (2d Cir. 1996) (declining to decide6

good faith as a matter of law where defendant used a mark, which happened to be the name of 7

defendant’s parent company, knowing it was identical to plaintiff’s registered mark); see also8

Kiki Undies Corp. v. Promenade Hosiery Mills, Inc., 411 F.2d 1097, 1101 (2d Cir. 1969)9

(explaining that defendant has the burden of persuasion in such circumstances).10

At bottom, the defendants ask us to weigh their averments that they did not use the phrase11

“Own Your Power” in order to trade on Kelly-Brown’s good will against Kelly-Brown’s12

allegations that they were aware of her registered mark before launching the “Own Your Power”13

campaign. Our role in considering a motion to dismiss is not to resolve these sorts of factual14

disputes. Accordingly, the District Court erred in holding that the defendants have conclusively15

demonstrated good faith in their use of the phrase “Own Your Power.” 16

D. First Amendment Defense 17

Defendants argue that the judgment of the District Court should be affirmed on the18

ground that the First Amendment bars Kelly-Brown’s claims. We decline to consider this19

argument in the first instance.20

* * *21

The District Court dismissed Kelly-Brown’s claims of trademark infringement, false22

designation of origin, and reverse confusion because it found that Kelly-Brown had failed to23



27

satisfy the threshold trademark use requirement and because it found that the defendants’ use1

was fair use. We hold that Lanham Act plaintiffs need not satisfy the first element of a fair use2

defense as a threshold requirement for bringing claims pursuant to the Lanham Act. We also3

hold that the defendants here have not adequately demonstrated that they are entitled to dismissal4

of plaintiff’s claims under the fair use defense. Accordingly, the judgment of the District Court5

with respect to these claims is vacated.6

In addition, the District Court, having dismissed Kelly-Brown’s federal claims, declined7

to exercise supplemental jurisdiction over her remaining state law claims. Because we vacate the8

District Court’s judgment with respect to three of Kelly-Brown’s federal claims, we also9

reinstate her state law claims.10

III. Other Federal Claims11

A. Secondary Trademark Infringement 12

Kelly-Brown brings two claims of secondary trademark infringement against the13

sponsors of the Own Your Power Event: vicarious trademark infringement and contributory14

trademark infringement. The District Court dismissed these claims on the separate ground that15

Kelly-Brown failed to allege that the sponsors were involved in a partnership with the primary16

infringers or that the sponsors treated the primary infringers as agents. Kelly-Brown challenges17

this holding.18

“Vicarious liability for trademark infringement requires a finding that the defendant and19

the infringer have an apparent or actual partnership, have authority to bind one another in20

transactions with third parties or exercise joint ownership or control over the infringing product.” 21

Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788, 807 (9th Cir. 2007) (internal quotation22

marks omitted). Kelly-Brown does not challenge the District Court’s conclusion that she has not23



28

properly alleged a partnership or agency relationship. The District Court’s holding with regard1

to vicarious trademark infringement is therefore affirmed.2

“To be liable for contributory trademark infringement, a defendant must have (1)3

‘intentionally induced’ the primary infringer to infringe, or (2) continued to supply an infringing4

product to an infringer with knowledge that the infringer is mislabeling the particular product5

supplied.” Id . (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 855 (1982)). With6

respect to the first prong, Kelly-Brown alleges only that the corporate sponsors provided7

sponsorship for the Own Your Power Event. This allegation is not sufficient to plausibly suggest8

that the sponsors “intentionally induced” the remaining defendants to infringe. The complaint9

also does not allege that Wells Fargo, Clinique (and its corporate parent Estée Lauder), and10

Chico’s, the remaining defendants, supplied a product to an infringer with the knowledge that the11

infringer was mislabeling that product. Thus, Kelly-Brown has not adequately alleged the12

second prong of the applicable test, either. The District Court’s holding with respect to13

contributory trademark infringement is therefore affirmed.14

B. Counterfeiting 15

A counterfeit is “a spurious mark which is identical with, or substantially16

indistinguishable from, a registered mark.” 15 U.S.C. § 1127. The District Court found that the17

defendants had not produced a counterfeit mark after comparing Kelly-Brown’s service mark 18

with the logo displayed at the Event, and the headline on the cover of the Magazine. It found19

that the font of the words “Own Your Power” in the Oprah publications was different from the20

stylized powder-blue letters that Kelly-Brown registered as a part of her service mark. Kelly-21

Brown argues that the District Court’s analysis was flawed because her mark was a service mark,22



29

and so the ordinary consumer of her services would have less contact with the physical logo than1

with the auditory representation of that mark.2

This argument is of no effect with respect to the Website and the October Issue of the3

Magazine. While it may be that these publications were in competition with Kelly-Brown’s own4

services and publications, consumers interact with a magazine and website visually, and would5

recognize the differences between Kelly-Brown’s mark and the defendants’ representations of 6

the words “Own Your Power” from a cursory visual inspection. As the District Court noted, the7

font, color, and capitalization of Kelly-Brown’s mark differed from the offending uses made by8

defendants.9

Kelly-Brown’s argument carries more weight in the context of the “Own Your Power”10

Event. An audience member in such an event might encounter the phrase “Own Your Power”11

aurally and so might experience the phrase similarly in either Kelly-Brown’s or Oprah’s event.12

Nonetheless, Kelly-Brown alleges that Oprah’s “Own Your Power” logo figured prominently in13

displays featured at the event, including the backdrops against which celebrities had their 14

photographs taken. This logo is markedly different from Kelly-Brown’s own mark, as already15

discussed. Further, the majority of audience members were not present at Oprah’s invitation-16

only event. Most encountered the Event only later through video clips on Oprah’s website,17

which, as we have discussed above, contained obvious visual differences from Kelly-Brown’s18

mark . In this context, the differences between Oprah’s logo and Kelly-Brown’s logo would be19

clear.20

Kelly-Brown thus does not state a plausible claim for trademark counterfeiting, and the21

District Court’s dismissal of these claims is affirmed.22

23



30

CONCLUSION1

For the foregoing reasons, the judgment of the District Court is VACATED with respect2

to Kelly-Brown’s trademark infringement, false designation of origin, and reverse confusion3

claims. Kelly-Brown’s state law claims are also accordingly reinstated. We AFFIRM the4

judgment of the District Court with respect to Kelly-Brown’s vicarious infringement,5

contributory infringement, and counterfeiting claims. This case is REMANDED for further 6

proceedings not inconsistent with this opinion.7



secondar y meani ng t o consumer s, as a means of communi cat i on, but1

wi t hout t r enchi ng on t he r i ght s of t he mar k' s owner .2

Li ke t he copyr i ght l aws, t he Lanham Act i s " desi gned t o3

bal ance t he needs of mer chant s f or i dent i f i cat i on as t he pr ovi der4

of t he goods wi t h t he needs of soci et y f or f r ee communi cat i on and5

di scussi on. " Pi er r e N. Leval , Tr ademar k: Champi on of Free6

Speech, 27 COLUM. J . L. & ARTS 187, 210 ( 2004) . Thi s pr i nci pl e i s7

i mpor t ant when consi der i ng the def endant s' uses of t he phr ase8

"Own Your Power! " i n t hi s case. 29

I I . The Meani ng of " Own"10

Kel l y- Br own cl ai ms t o own the mark "Own Your Power , " as11

used i n connect i on wi t h t he mot i vat i onal ser vi ces she of f er s.12

J ust as t he maj or i t y begi ns i t s anal ysi s by det er mi ni ng i n what13

sense the phr ase "as a mark" i s and has been used, ant e at 12- 16,14

I t hi nk i t usef ul t o addr ess at t he out set t he di f f er ent senses15

i n whi ch t he wor d "own" i s used i n t hi s l i t i gat i on.16

When we tal k about "owni ng" a t r ademar k, we obvi ousl y17

use t he t r adi t i onal l egal meani ng of t he wor d i n t he sense of 18

"r i ght f ul l y hav[ i ng] or possess[ i ng] as pr oper t y. " BLACK ' S LAW19

DI CTI ONARY 1214 ( 9t h ed. 2009) . Taken l i t er al l y and usi ng t he20

2 Par ent het i cal l y, and appar ent l y by pecul i ar coi nci dence,one of t he def endant s i n t hi s case i s Wi nf r ey' s pr oduct i oncompany, "Har po Pr oduct i ons, " "Har po" bei ng "Opr ah" spel l edbackwar ds. Anot her , unr el at ed def endant i s Chi co' s FAS, I nc. ,t he owner of sever al br ands of cl ot hi ng. Thus t he oddi t y: Twoof def endants have t he same name as t wo of t he t hree MarxBr ot her s.

3



t er m "own" i n t hi s t r adi t i onal 3 sense, however , t he i nvocat i on t o1

"Own Your Power" bor ders on t he absurd. I f t he "Power" i s mi ne,2

do I not by def i ni t i on al r eady "Own" i t ? What am I bei ng t ol d t o3

do? Or what ar e t he par t i es t el l i ng me t hat t hey can do - -4

doubt l ess at some pr i ce - - t o hel p me?5

J udgi ng by t he cont ext i n whi ch i t has been used by6

bot h t he pl ai nt i f f and t he def endant s, i t i s cl ear t hat t he7

meani ng of t he word "own" here i s cl oser t o "embrace and empl oy"48

t han i t i s to possess or have l egal owner shi p. Thi s i s har dl y a9

novel way t o use the t erm.10

By way of an easi l y accessi bl e exampl e, i n t he f i nal11

scene of t he popul ar mot i on pi ct ur e THE BI RDCAGE ( Uni t ed Ar t i st s12

1996) , a char act er pl ayed by Robi n Wi l l i ams i s escor t i ng an13

upt i ght , pol i t i cal l y and soci al l y conser vat i ve char acter pl ayed14

by Gene Hackman t hr ough a "dr ag cl ub. " Thei r pur pose i s t o al l ow15

Hackman' s char act er t o escape medi a recogni t i on "by dr essi ng [ hi m16

and hi s f ami l y] i n dr ag and havi ng t hem l eave t he cl ub as t he17

3 "Who st eal s my pur se st eal s t r ash; ' t i s somet hi ng,not hi ng; ' Twas mi ne, ' t i s hi s, and has been sl ave t ot housands . . . . " WI LLI AM SHAKESPEARE, O THELLO, act 3, sc. 3.

4 Another way t o underst and the phr ase as used by bot h thepl ai nt i f f and t he def endant s i s i n l ess concret e t er ms: "t opossess psychol ogi cal l y, " or " t o i nt egr at e t he power you havei nt o your sense of your sel f . " I n any event , and under any suchappr oach, t he t er m i s used si mi l ar l y by the par t i es and i sshar pl y di st i ngui shabl e f r om "own" i n i t s t r adi t i onal sense.

4



ni ght ' s show ends. " The Bi r dcage, ht t p: / / en. wi ki pedi a. or g/1

wi ki / The_Bi r dcage ( l ast vi si t ed May 28, 2013) .2

But Hackman' s char act er , upt i ght as he i s, f i nds i t3

al l - but - i mpossi bl e t o gi ve a convi nci ng por t r ayal of a man act i ng4

and dr essed as a woman. Wi l l i ams' s char act er t ur ns t o hi m and5

shout s encour agi ngl y, " Wor k i t . Sel l i t . Own i t . "5 I thi nk i t6

i s al most cer t ai nl y i n t hi s BI RDCAGE sense - - t o embr ace and7

empl oy - - or one ver y l i ke i t t hat t he par t i es her e used t he wor d8

"own" i n t hei r busi nesses and publ i cat i ons, i f not i n di scussi ng9

who "owns" t he t r ademark at i ssue.10

Usi ng "own" i n t hat sense, t he phr ase "Own Your Power"11

has mor e cur r ency t han t he pl ai nt i f f s l et on i n t hei r compl ai nt12

- - al t hough t he extent t o whi ch t hi s pr eci se use ant edat es ei t her13

t he def endant s' use or t he f i l i ng of t he compl ai nt i s uncl ear .14

Wr i t er s have empl oyed t he wor d "own" i n si mi l ar l y f i gur at i ve, i f 15

not necessari l y i dent i cal , senses f or many year s. 6 And by now16

t he phr ase "Own Your Power " i t sel f , usi ng "own" i n t hi s way, has17

apparent l y gai ned an est abl i shed meani ng i n t he l anguage. 718

5 See ht t p: / / www. yout ube. com/ wat ch?v=dYLk34GCXbo ( f i nalscene of THE BI RDCAGE) ( l ast vi si t ed May 28, 2013) ( emphasi sadded) .

6 " I t was a di sgui se; i t was t he r ef uge of a man af r ai d t oown hi s own f eel i ngs, who coul d not say, Thi s i s what I l i ke - -thi s i s what I am . . . . " VI RGI NI A WOOLF, TO THE LI GHTHOUSE 56 ( CRWPubl i shi ng Lt d. 2004) ( 1927) .

7 See [1] J EWI SH WOMAN MAGAZI NE, ht t p: / / www. j wi . or g/page. aspx?pi d=3406 ( l ast vi si t ed May 28, 2013) ( "Own Your Power

5



I I I . Fai r Use as t o Use of "Own Your Power ! " on t he Magazi ne1

Underst andi ng t he meani ng of "Own Your Power " t hus, I2

t hi nk that t he def endant s' use of i t on t he cover of t he3

Magazi ne, wi t hout mor e, i s pl ai nl y and l egal l y "f ai r " and4

t her ef or e l awf ul . I have l i t t l e doubt , mor e gener al l y, t hat t he5

use of a t r ademarked phr ase on t he cover of a magazi ne t o ref er6

i n a gener al way t o i t s cont ent s i s, st andi ng by i t sel f and i n7

most cases, ent i r el y l egi t i mat e - - a st r ai ght f or war d and8

si gni f i cant case of f ai r use. I di f f er f r om t he maj or i t y i nsof ar9

as i t s anal ysi s i mpl i es ot her wi se.10

But I under st and t he maj or i t y and I are bot h r eadi ng11

t he pl ai nt i f f s' compl ai nt not t o at t ack t hi s si ngl e use st andi ng12

Wi t h New Ways of Act i vi sm: As women, we have made gi ant st r i des,but now's the time to own your power. " ( emphasi s added) ) ; [ 2] Own

Your Power! Onl i ne Cour se: The Ar t & Sci ence of Shi f t i ngConsci ousness[ ; ] 8- Lesson Ser i es wi t h Dr . Darr en Wei ssman and Dr .Br uce Li pt on, ht t p: / / www. hayhouse. com/ event _det ai l s. php?event _i d=1692 (emphasi s added) ( l ast vi si t ed May 28, 2013) ; [ 3]Shann Vander Leek, Tr ue Bal ance l i f ecoachi ng[ ; ] Own Your Personal

Power, ht t p: / / www. t r uebal ancel i f ecoachi ng. com/ar t i cl es/ own_your _per sonal _power . php ( l ast vi si t ed May 28, 2013;emphasi s added) ; [ 4] Leadershi p St r ategi es f or Women, ® LLC, Own

Your Power: 8 Leader shi p St r at egi es f or Women, ht t p: / /l eader shi pst r at egi esf or women. com/ 2012/ 07/ own- your - power - 8- l eader shi p- st r at egi es- f or - women- 2 ( l ast vi si t ed May 28, 2013; emphasi sadded) ; [ 5] AMY APPELBAUM, O WN YOUR POWER : CREATE CONFI DENCE ( 2012)( hypnotherapy audi o book; emphasi s added) ; [ 6] Tetka Rhu, O WN YOUR

POWER : GODDESS BOOK OF PRAYERS ( 2010) ( emphasi s added) ; [ 7] J ANI NARENEE, TAROT, YOUR EVERYDAY GUI DE: PRACTI CAL PROBLEM SOLVI NG AND EVERYDAY

ADVI CE 28 ( 2003) ( "Because t he Empr ess i s a car d of sover ei gnt y,you are encour aged t o own your own power . . . . " ) ; [ 8] Own Your

Power i n t he Bedr oom Wor kshop f or Women,ht t p: / / mar r i agei nt i macyexper t . com/ wor kshops/ own- your - power - i n- t he- bedr oom/ ( l ast vi si t ed May 28, 2013) ( emphasi s added) .

6



al one. See ant e at 18 ( "Kel l y- Br own ar gues t hat , t aken t oget her ,1

t hese uses suggest t hat t he def endant s wer e at t empt i ng t o bui l d2

an associ at i on wi t h consumers bet ween t he phr ase ' Own Your Power '3

and Opr ah. " ( emphasi s added) ) . I t i s t he def endant s' use seen as4

par t of a campai gn of r ecur r i ng uses, acr oss di f f er ent medi a,5

desi gned t o appr opr i at e t he def endant s' sour ce- i dent i f i er , or6

wi t hout r egar d f or a hi gh l i kel i hood of t hat occur r i ng, t hat7

def eat s t hei r f ai r use def ense. Thi s i s not t o say t hat even t he8

use of "Own Your Power" f or t he Magazi ne, websi t e, and semi nar9

event ( t he "Event " ) t oget her may not al so const i t ut e f ai r use.10

Onl y that any such concl usi on i s f or ecl osed at t hi s st age of t he11

pr oceedi ngs.12

As t he maj or i t y expl ai ns, ant e at 16, t he use of t he13

phr ase "Own Your Power" on t he Magazi ne i s a f ai r use, and14

t her ef or e not act i onabl e under t he Lanham Act , i f and onl y i f t he15

phr ase was used " ( 1) ot her t han as a mar k, ( 2) i n a descr i pt i ve16

sense, and ( 3) i n good f ai t h. " J A Appar el Cor p. v. Abboud, 56817

F. 3d 390, 400 ( 2d Ci r . 2009) ( i nt er nal quot at i on mar ks omi t t ed) .18

Because t he appl i cat i on of t he thi r d el ement seems t o me to be19

di sposi t i ve, I addr ess t hem i n r ever se or der , i . e. , use ( 1) i n20

good f ai t h, ( 2) i n a descr i pt i ve sense, and ( 3) ot her t han as a21

mar k.22

1. Good Fai t h. Wer e t he i ssue l i mi t ed t o t he use of 23

"Own Your Power! " on t he Magazi ne' s cover , I woul d concl ude t hat24

7



r eversi ng t he conf usi on and damage that has1al r eady been done.2

3Compl . ¶ 99.4

The pl ai nt i f f s have t hus al l eged f act s t hat r ai se t he5

pl ausi bl e i nf er ence t hat t he def endant s used t he phr ase on t he6

Magazi ne cover as par t of a caref ul pl an t hat i ncl uded t he Event7

and t he websi t e, and sought col l ect i vel y t o appr opr i at e t he "Own8

Your Power " mar k f r om t he pl ai nt i f f s wi t h knowl edge t hat t he9

pl ai nt i f f s owned i t and wi t h t ot al di sregar d f or t he pl ai nt i f f s'10

r i ght s. I t her ef or e j oi n t he maj or i t y' s concl usi on t hat a11

f i ndi ng of "good f ai t h" wi t h r espect t o use of t he phr ase on t he12

Magazi ne cover i s i nappr opr i at e at t hi s st age of t he pr oceedi ngs.13

I t r emai ns, of cour se, f or t he pl ai nt i f f s t o pr ove14

t hei r al l egat i ons. The evi dence may show t hat t he def endant s,15

even knowi ng of t he pl ai nt i f f s' t r ademar k, r easonabl y bel i eved16

t hat t he use of t he words "Own Your Power " on t he Magazi ne or17el sewhere woul d conf use no one as t o sour ce; t hat t he use woul d18

i n any event be a f ai r one; or t hat i t was not i n f act a19

cal cul at ed par t of a mor e el abor at e ef f or t t o appr opr i at e t he20

pl ai nt i f f s' pr oper t y. Cf . Ar r ow Fast ener Co. , I nc. v. St anl ey21

Wor ks, 59 F. 3d 384, 397 ( 2d Ci r . 1995) ( "Pr i or knowl edge of a22

seni or user ' s t r ade mar k does not necessar i l y gi ve r i se to an23

i nf er ence of bad f ai t h and may be consi st ent wi t h good f ai t h. " ) ;24

Campbel l v. Acuf f Rose Musi c I nc. , 510 U. S. 569, 585 n. 18 ( 1994)25

( "Even i f good f ai t h wer e cent r al t o [ copyr i ght ] f ai r use, 2 Li ve26

9



phr ase "Come on St r ong, " whi ch was used by the pl ai nt i f f as a1

r egi st er ed t r ademar k f or a wi de var i et y of pr oduct s, was used i n2

a descr i pt i ve sense by t he def endant i n adver t i sement s f or i t s3

men' s cl othi ng l i ne. We r easoned t hat t he phr ase communi cates t o4

t he pr ospect i ve cust omer t hat def endant ' s cl ot hi ng "woul d assi st5

t he pur chaser i n pr oj ect i ng a commandi ng, conf i dent , ' st r ong'6

i mage to hi s f r i ends and admi r er s. "8 I d. at 353. We r el i ed upon7

t hi s under st andi ng t o concl ude bot h t hat t he use was not l i kel y8

t o cause conf usi on and t hat i t was a descr i pt i ve f ai r use. I d.9

at 354.10

The def endant s' use of "Own Your Power " on t he Magazi ne11

cover f i t s easi l y among t he uses f ound t o be descr i pt i ve i n t hese12

8 We have def i ned "descr i pt i ve sense" i n arguabl y morecapaci ous t er ms than our si st er ci r cui t s. A hi nt as t o t hebr eadt h of our r ul e l i es i n our di scussi on i n Cosmet i cal l ySeal ed. Ther e, we r ead a pr i or case, Car - Freshener Cor p. v. S. C.

J ohnson & Son, I nc. , 70 F. 3d 267, 270 ( 2d Ci r . 1995) , as havi ngconcl uded t hat t he pi ne- t r ee shape of a car f r eshener - - a"descr i pt i on ( by t he suggest i ve use of t he i mage) of t he per i odi n whi ch t he pr oduct was sol d" - - was " a descr i pt i on of t he goodswi t hi n t he meani ng of t he f ai r use def ense. " 125 F. 3d at 30( emphasi s added) ( i nt er nal quotat i on mar ks omi t t ed) .

Ot her ci r cui t s, by cont r ast , appear t o have adopt ed t hevi ew of t he l eadi ng t r ademar k t r eat i se t hat "t o be el i gi bl e f or af ai r use, def endant must be usi ng t he chal l enged desi gnat i on i n adescr i pt i ve, not mer el y suggest i ve, sense. " MCCARTHY ON TRADEMARKS

§ 11. 45 ( ci t i ng Br euer El ec. Mf g. Co. v. Hoover Co. , No. 97 C

7443, 1998 WL 427595 ( N. D. I l l . J ul y 23, 1998) ) . Thus t he ef f or ti n Sands, Tayl or & Wood Co. v. Quaker Oat s Co. , 978 F. 2d 947, 952( 7t h Ci r . 1992) , a Sevent h Ci r cui t case ci t ed by the maj or i t y, t odetermi ne whether t he phr ase "Gatorade i s Thi r st Ai d" wasdescr i pt i ve or mer el y suggest i ve. See al so For t une Dynami c, I nc.v. Vi ct or i a' s Secr et St or es Br and Mgmt . , I nc. , 618 F. 3d 1025,1042 ( 9t h Ci r . 2010) ( ci t i ng MCCARTHY ON TRADEMARKS § 11. 45) .

11



cases. The f eat ur e st or y i n t he Oct ober i ssue i s t he 2010 O1

Power Li st , The 2010 O Power Li st , O THE OPRAH MAGAZI NE, Oct ober2

2010, at 198, whi ch honor s publ i c f i gur es and ot her not abl es who3

embody cer t ai n char act er i st i cs of power . Al so i nsi de t he4

Magazi ne ar e sever al shor t er ar t i cl es rel at ed t o t hi s t heme. See5

Dr . Phi l , Per sonal Power : 6 Rul es f or How t o Har ness Your s, i d.6

at 74 ( pr ovi di ng "st r at egi es f or t appi ng your i nner power7

r eserves" ) ; How t o Li ght Up a Room, i d. at 214- 16 ( t heor i zi ng8

t hat char i sma i s t he "X f act or " possessed by al l of t he peopl e9

f eat ur ed on t he 2010 O Power Li st ) . The descr i pt i ve connect i on10

i s obvi ous - - i ndeed, i t i s di f f i cul t t o see how any pot ent i al11

r eader wi t h whomt he def endant s are t r yi ng to communi cate, upon12

pi cki ng up t he Magazi ne and r eadi ng t he cover l i ne, woul d not13

expect t o f i nd j ust t hese sor t of ar t i cl es i nsi de. I t hus f i nd14

i mpl ausi bl e any asser t i on t hat t he phr ase "Own Your Power " i s not15

used i n a descr i pt i ve sense her e.16

The maj or i t y - - al t hough not cal l ed upon t o do so i n17

l i ght of our shar ed vi ew t hat i t i s pl ausi bl e t hat t he Magazi ne18

cover , as par t of t he def endant s' al l eged over al l pl an, was i n19

any event not a f ai r use - - f i nds t hat t he phr ase as used20

speci f i cal l y on t he Magazi ne cover i s not used i n a descr i pt i ve21

sense. The maj or i t y appar ent l y does not consi der t he f eat ur e22

ar t i cl e, or t he "Per sonal Power " and "Li ght Up a Room" ar t i cl es,23

t o cont ai n "speci f i c advi ce r egar di ng how a reader can f ol l ow i n24

12



t he f oot st eps" of t he subj ect s f eat ur ed on t he O Power Li st , or1

"advi ce r egardi ng how a reader can become more power f ul i n2

gener al , " ant e at 24.3

Even i f t hi s wer e a f ai r char acter i zat i on of t he4

Magazi ne' s cont ent s - - and I doubt t hat i t i s - - our l aw has5

never r equi r ed a connect i on as cl ose and absol ut e as t he maj or i t y6

demands. For t unat el y, t he maj or i t y l eaves open t he possi bi l i t y7

t hat t he def endant s may adduce evi dence of t he r equi si t e8

descr i pt i ve connect i on, per haps by ei t her ( a) pr ovi di ng a f ul l er9

underst andi ng of t he sense i n whi ch t he phr ase "Own Your Power"10

was used and was l i kel y t o be underst ood by t he r el evant consumer11

gr oup, and t her ef or e i l l umi nat i ng t he nexus bet ween t hat phr ase12

and t he Magazi ne' s cont ent s; or ( b) demonst r at i ng t hat t he phr ase13

or phr ases l i ke i t ar e commonl y used. I t hi nk nei t her i s14

necessary.15

3. Use ot her t han as a mar k. Fi nal l y, i f we wer e16

consi der i ng i ndi vi dual l y the si ze, l ocat i on, and cont ext of t he17

def endant s' use of "Own Your Power! " on t he cover of t he18

Magazi ne, as our l aw seems t o pr escr i be, see J A Appar el Cor p. ,19

568 F. 3d at 400- 401, i t woul d be cl ear t o me t hat t he def endant s20

di d not use t he phr ase as a mark.21

The t wo most promi nent i t ems on t he cover of t he22

Oct ober i ssue ar e t he "O The Oprah Magazi ne" mar k i n t he upper23

l ef t - hand cor ner and t he f ul l page phot ogr aph of Opr ah her sel f .24

13



That " t he sour ce of t he def endant s' product i s cl ear l y i dent i f i ed1

by t he pr omi nent di spl ay of t he def endant s' own t r ademar ks" i s a2

st r ong i ndi cat i on t hat t he def endant s' use i s ot her t han as a3

mar k. Cosmet i cal l y Seal ed, 125 F. 3d at 30. The si ze and4

l ocat i on of t he phr ase, mor eover , consi der ed i n l i ght of t he5

cont ext of t he use on a magazi ne cover f ur t her suggest t hat t he6

def endant s di d not use the phr ase "as a symbol t o at t r act publ i c7

at t ent i on. " J A Appar el , 568 F. 3d at 400 ( emphasi s added)8

( i nt er nal quot at i on mar ks omi t t ed) . A r easonabl e consumer woul d9

t her ef or e expect t he phr ase t o expl ai n somet hi ng about t he nat ur e10

of t he cont ent s of t hi s par t i cul ar i ssue, not t o denot e t he11

sour ce of t hose cont ent s.12

But t he maj or i t y opi ni on does not consi der t hi s use13

i ndi vi dual l y. I t concl udes i nst ead t hat t he "sever al uni que14

i nst ances" - - t hat i s, t he use on t he Magazi ne, at t he Event , and15

on t he websi t e - - "col l ect i vel y const i t ut e use as a mar k, " ant e16

at 17, appar ent l y because "i t i s pl ausi bl e t hat t he def endant s17

wer e at t empt i ng t o bui l d up a l i ne of wi de- r angi ng cont ent al l18

denoted by t he phr ase ' Own Your Power, ' " i d.19

Per haps t hi s somewhat novel t heor y i s usef ul at t hi s20

st age i n det er mi ni ng t he pl ausi bi l i t y of t he pl ai nt i f f s' f actual21

al l egat i ons. 9 But I do not t hi nk, and I do not r ead t he maj or i t y22

9 I do t hi nk i t wor t h not i ng t hat t hi s "col l ect i ve use"t heor y i s i n some t ensi on wi t h J A Appar el ' s cal l f ori ndi vi dual i zed consi der at i on of each par t i cul ar use. See J A

14



opi ni on t o mean, t hat t he mer e coi nci dence of sever al uses1

f or ecl oses t he possi bi l i t y t hat i ndi vi dual uses ar e "ot her t han2

as a mar k. " They do, I t hi nk, asser t t hat i f use of "Own Your3

Power " on t he Magazi ne' s cover was par t of an over al l pl an t o4

appr opr i at e t he pl ai nt i f f s' mar k, t hen t o t hat extent t he use on5

t he Magazi ne may be act i onabl e. I n order t o pr evai l at summary6

j udgment or t r i al , t hen, t he pl ai nt i f f s must adduce proof i n7

suppor t of t hat al l egat i on i n or der t o be abl e t o pr evai l on t he8

cl ai m r el at i ng t o t he Magazi ne. They must pr ove, f or exampl e,9

t hat t he Magazi ne use was i ndeed par t of def endant s' pl an t o10

devel op a l i ne of goods or ser vi ces under an "Own Your Power"11

sub- br and, or t hat r el evant consumer s woul d be l i kel y, per haps as12

a resul t of r epet i t i on, t o per cei ve the phr ase on t he Magazi ne13

"as a symbol t o at t r act publ i c at t ent i on, " J A Appar el , 568 F. 3d14

at 400 ( emphasi s added) , and not j ust as a cover l i ne descr i bi ng15

t he t heme of t he i ssue. Whet her t he pl ai nt i f f s can do t hi s, of 16

cour se, r emai ns t o be seen.17

18

19

Appar el , 568 F. 3d at 402. I not e al so t hat t he pr i nci palaut hor i t i es t he maj or i t y ci t es i n suppor t of i t ar e dr awn f r om an

ent i r el y di f f er ent cont ext - - t he pr ot ectabi l i t y of a mar k as af unct i on of i t s val ue as an i dent i f i er of sour ce. Ant e at 19- 20.So al t hough i t may be t r ue t hat t he concept i s hel pf ul at t hi s

st age, when our onl y t ask i s t o i dent i f y f actual pl ausi bi l i t y, Iwoul d caut i on agai nst r eadi ng the maj or i t y opi ni on t o mean t hati n al l cases and at al l st ages of l i t i gat i on uni que uses ar e t obe consi der ed "col l ect i vel y. "

15



I V. The Websi t e and t he Event1

Wi t h respect t o t he def endant s' use of "Own Your Power"2

on t he websi t e and f or t he Event , I agr ee wi t h t he maj or i t y t hat3

t he pl ai nt i f f s have pl eaded suf f i ci ent pl ausi bl e f act s t o f end4

of f t he f ai r use def ense on a mot i on t o di smi ss.5

* * *6

I f we wer e consi der i ng t he Oct ober 2010 i ssue of t he7

Magazi ne al one, I woul d concl ude t hat t he def endant s' use of t he8

t r ademar ked phr ase was a " f ai r " one. I si mpl y do not t hi nk we9

coul d concl ude at t hi s st age, wer e we asked t o do so, t hat t he10

al l egat i ons i n t he pl ai nt i f f s' compl ai nt r el at i ng t o t he Magazi ne11

cover l i ne consi der ed al one can be r ead pl ausi bl y to descr i be a12

use t hat i s not f ai r as a mat t er of l aw. A hol di ng t o t he13

cont r ar y mi ght endanger t he abi l i t y of publ i sher s of al l st r i pes14

accur at el y and ar t f ul l y to descri be t hei r publ i cat i ons.15

But I , l i ke t he maj or i t y, under st and t he compl ai nt not16

t o at t ack t he def endant s' use of "Own Your Power! " on t he17

Magazi ne' s cover al one, but as par t of an over al l campai gn by t he18

def endant s i n sever al medi a t o wr est f r om t he pl ai nt i f f s t hei r19

r i ght s i n t he mar k. I t r emai ns possi bl e t hat a f ul l r ecor d wi l l20

r eveal t hat despi t e t he mul t i pl e uses, any or al l of t hem ar e21

f ai r uses, and t her ef or e not act i onabl e under t he Lanham Act . I22

t hus concl ude, wi t h t he maj or i t y, t hat t hi s case must be r et ur ned23

i n i t s ent i r et y t o t he di st r i ct cour t f or f ur t her pr oceedi ngs.24

kelly-brown, et al. v. winfrey, et al

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