Some of my favorite trademark cases involve “reverse confusion.” Instead of the usual scenario in which a rich and powerful senior trademark user crushes a little start-up for trading on its good name, the essence of a reverse confusion case is that a rich and powerful entity has flooded the market with much more promiscuous use of a mark than a smaller, but senior, user of the mark had ever mustered, with the result that the public comes to believe wrongly that the poor senior user is the infringer. That is the gravamen of the complaint that Own Your Power Communications, a “motivational services business,” brought against Oprah Winfrey and her media empire for the “Own Your Power!” issue of O Magazine pictured here, together with associated online content and events. In a ruling handed down by the Second Circuit last week, Own Your Power won the first round, surviving Oprah’s motion to dismiss the case which was based on the ground that her use of the mark “Own Your Power” was protected under the doctrine of trademark fair use.
Some time ago I did a post discussing the court-made doctrine of nominative fair use. That defense arises in situations where a trademark is used by someone other than the owner to actually denote the trademarked product or service. (E.g., “Tune in tomorrow for the Academy Awards®.”) The Own Your Power case involves a traditional fair use defense based on a statute, 15 U.S.C. § 1115(b)(4), which the Second Circuit has held requires a defendant to prove three things: That the use was made (1) other than “as a mark,” (2) in a descriptive sense, and (3) in good faith. Assume, for instance, that a manufacturer of sports undergarments owns the trademark “Sweat it Out.” (That was a client of mine many years ago, who claimed that Gatorade had infringed his mark by running a contest under the name “Sweat it Out.”) The statutory doctrine of fair use would likely protect Oprah (in an unusual departure from the usual formality of judicial opinions, Ms. Winfrey is referred to throughout by her given name) if she used that phrase on the cover of a magazine or book to describe content within about aerobic exercises. In essence, the fair use defense prevents trademark owners from appropriating all uses of common descriptive words or phrases.
But the Second Circuit found that, at least taking the allegations of Own Your Power’s complaint at face value, Oprah had not established that her use was fair. In particular, the court found that Oprah’s use of the phrase could be construed as a trademark use, i.e., it was intended that “‘Own Your Power,’ through these interrelated uses, would become symbolic shorthand for the products and message as a whole, meant to remind consumers of a particular kind of Oprah-related content.” It went on to hold that “it does not appear that the phrase ‘Own Your Power’ is meant to describe the contents of a particular item in the magazine.”
Judge Robert Sack, a one-time media lawyer, wrote a lengthy concurring opinion that seeks to cabin the scope of the court’s ruling. It is worth a read, if nothing else for his bizarre footnote noting that, with Oprah’s corporate entity Harpo Productions and Chico’s clothing stores (a co-sponsor of an Own Your Power event) named as defendants in the case, “two of defendants have the same name as two of the three Marx Brothers.”