Overview
This week, the Second Circuit affirmed Judge Crotty's grant of summary judgment dismissing trademark claims against Oprah Winfrey over use of the phrase "Own Your Power" (see our previous coverage here). The Second Circuit agreed with Judge Crotty that use of the phrase "Own Your Power" was fair use and did not infringe on the name of the plaintiff's motivational speaking business, Own Your Power Communications, Inc. This decision was based on the panel's finding that the plaintiff's "mark" was merely a descriptive phrase:
The Defendants presented extensive, and largely unrebutted, evidence that the phrase “own your power” as used by the Plaintiffs was merely descriptive of the Plaintiffs’ products. Such evidence included, but was not limited to: (1) evidence that the Plaintiffs in fact used the phrase descriptively in their own advertisements, (providing a snapshot of the Plaintiffs’ web-site, including the text “[w]e’ll EMPOWER you to gain clarity on who you truly are and prepare you to embark on a soulful journey leading to a successful and happy life. . . . Below are my services that can help you OWN YOUR POWER!”); (2) testimony offered by the Defendants from an expert in etymology, Professor David Yerkes of Columbia University, that “[s]ince at least 1981 . . . ‘own your power’ almost always has meant ‘have mastery over your own power,’” and that numerous motivational speakers and writers had used the phrase in precisely that way, including Winfrey herself in a much-publicized and often-repeated 1993 commencement address; and (3) testimony that the phrase, as applied to the Plaintiffs’ products, was descriptive, including Kelly-Brown’s own affirmation that “a number of people . . . [were] using Own Your Power in a variety of ways, some of them right directly in [her] business space." Thus, even if a presumption of inherent distinctiveness applied to the words “own your power” apart from their visual representation in the Plaintiffs’ special form mark, the Defendants demonstrated, as a matter of law, that the phrase is merely descriptive as applied to the Plaintiffs’ business.The Second Circuit also found that there was likely to be no confusion between the plaintiff's mark and Oprah's use of the phrase, basing their decision on three unchallenged consumer confusion surveys presented by the defense.