Hmmm . . . where do I start with this lawsuit that was breaking news on TMZ a few days ago? As a magazine owner, one of the things I know my team and I do is to prepare our monthly issues, of which the covers have various headlines which periodically could include common slogans or acronyms. No, we do not go fishing to see if there are registered Trademarks of slogans such as, “Be Inspired” or “New Year, Powerful You,” before we use them.
Oprah Winfrey, owner of O Magazine like most publishers across the nation has also used these common slogans and acronyms. In fact, for her October 2010 issue, Oprah, consistent with her personal and corporate brand, focused on women owning their power with the slogan “OWN YOUR POWER!” Oprah, being Oprah, took it a step further and republished “Own Your Power” articles on her website. In fact when you click on the website, there are several tabbed categories all related to owning your power. There is: “The Power List,” “Powerful Ideas” “Tap Into Your Power.”
This is where the drama comes in.The Plaintiff Simone Kelly-Brown who just filed a lawsuit against Oprah claims the following according to TMZ:
“In a lawsuit filed Thursday in a New Jersey federal court, Simone Kelly-Brown (CEO of something called Own Your Power Communications, Inc.) claims her company has been around since 1996 … providing “a personal brand of self-awareness and motivational communication services.”
According to the trademark infringement suit … Kelly-Brown claims all the trouble started with the October 2010 issue of Oprah’s magazine, which included the headline “Own Your Power.”
The suit claims the infringement continued when the magazine directed readers to a section of O’s website called Own Your Power . . . Kelly-Brown alleges a self-help collision nearly occurred when she and Oprah both hosted Own Your Power events in the same city … just days apart.”
So there are two alleged infringements.
Infringement #1 - The slogan “Own Your Power” written on the cover of Oprah’s Magazine October 2010 issue AND
Infringement #2- The website section that has Oprah’s “Own Your Power” with the aforementioned tabbed list.
We will get into the legal analysis in a quick minute. But, let’s talk policy issues, first. Especially for alleged Infringement #1, are you so kidding me?! Seriously off the hook. Like, really, really? I sometimes wonder when people file suits in situations like this whether they think through what they are asking the court/jury to do. You are asking the court to say that when Magazines come up with common slogans or acronymns headlines both for offline and online use, you get to sue these magazines, because . . . ? What impact, if you win, will this have on the publishing business and everyday life.
As to the second alleged infringement, there could potentially be a trademark infringement case but it is contingent on the analysis below. So, lets get into the analysis and do revisit my interview with my colleague John Tehranian were we discuss some of the broad issues that Trademark laws present.
What Law Governs?
First things first, we always want to know what area of the law we are dealing with. In this instance Intellectual Property laws. Here, it is subdivided it into Trademark Law which is further subdivided into three key statutes/laws that govern our situation.
- Federal law aka the Lanham Act;
- State statutes (law); and
- common law that deals with trademark and unfair competition
What is a Trademark?
It is any:
- Color, or
- Sound that you use to identify the source of your goods or services and to distinguish them from others in the marketplace.
When You Have a Trademark What Does it Really Mean?
Trademark law essentially says, “look, if you are the first business to use OWN YOUR POWER in the marketplace, then OWN YOUR POWER belongs to YOU and your rights are superior to that of other subsequent users.” If people infringe on those rights, you can sue, hopefully win, so you can recover damages.
“Customer Confusion” is at the Heart of Trademark Infringement Suits
So what you own “OWN YOUR POWER”? So what you registered it with the US Patent and Trademark Office? That does not give you a legitimate claim anytime someone uses a trademark that resembles yours. You must, to successfully prevail on a Trademark infringement claim, show that there is a “Likelihood of Confusion” and the public would or have been confused by the subsequent use of someone like OPRAH using “Own Your Power,” your trademark.
What’s the Deal? How Does this Likelihood of Confusion Really Work?
Courts will look at whether the subsequent i.e. junior user has a similar product/service to that of the Plaintiff alleging infringement. They will look at the territories that the alleged infringer markets and the intent of the alleged infringer. Courts pay attention to who used the mark first.
How Do Courts Really Determine Customer Confusion?
The courts weigh 8 factors in a trademark infringement case. They ask:
- What is the similarity of the conflicting marks;
- What is the proximity of the two companies’ products or services
- What is the strength of the Plaintiff’s mark
- What is the marketing channel used by the two companies to market their products/services
- What is the degree of care likely to be exercised by purchasers in selecting goods i.e. customer sophistication?
- What was the defendant (Oprah’s) intent when selecting the mark
- What is the evidence of actual consumer confusion; and
- What is the likelihood of expansion of product lines
I cover the 4 crucial ones.
- #1- Are there similarities of the conflicting marks in appearance, sound, meaning? In the Own Your Power ‘OYP’ case, clearly the words are the same, sound the same, mean the same although the appearance is different in terms of font of kelly-Brown’s logo and the font text of ‘OYP’ used on Oprah’s website. But, this factor, while important, is not the only factor used.
- Do the products or services actually conflict? Here, courts determine whether there is indeed actual conflict. For example, Ford Modeling agency v Ford Motors.One is a modeling agency, the other a car company. If the court finds there are no actual conflict, then both can exist.Applying the OYP situation, do the services conflict? Oprah is technically not selling OYP services. She featured a series of inspirational articles on OYP in her magazine and on her website. She does not have a service arm or a registered service mark looking to turn this into a business. Her business Oprah Winfrey Network already does this. She need not further subdivide into subparts that is why she had her OYP an article in O print magazine which was republished online. Oprah has also always empowered women. So, “OMG” like this is not an issue! On the flip side, Kelly-Brown would argue and does argue that the services are related and Oprah is doing exactly what Kelly-Brown already does to assure women they can achieve whatever it is they want to achieve.
- What is the Sophistication Level of Customers Who Purchase the Products or Services of Oprah vs. Kelly-Brown: The more sophisticated and knowledgeable the customer, the less likely it can be argued that they would be confused by similar marks. I am hard press to believe that majority women in America, professional or non-professional, rich or poor, would confuse Oprah’s brand for Kelly-Brown’s. I find it very hard to believe and do not believe kelly-Brown can provide evidence to the contrary.
- What is the strength of Kelly-Brown’s mark? If Kelly-Brown’s mark is strong, it stays in the consumer’s mind. Say the word, “Oprah” and images of HARPO Studios, OWN Network, O Magazine come to mind for millions of Americans. Say “Simone Kelly-Brown” and I doubt many would know who you speak of. Say Kelly-Brown’s ‘OYP’ and it would be no surprise to me if no one has a clue. Is Kelly-Brown’s mark strong?
How Does the Court Determine What Qualifies as a Trademark?
The questions that would be asked are twofold:
- Does Simone Kelly-Brown’s Own Your Power have an inherent distinctiveness in the marketplace? OR
- Has Simone Kelly-Brown been using the mark for a while now so that it has acquired distinctiveness where if the public sees it, they say, “Aha, that slogan “OWN YOUR POWER” is Kelly-Brown’s?” I, for one, had never heard of Kelly-Brown as I suspect the same holds for majority of America. But, she might very well have a huge following.
Typical Remedies in Infringement Suits
Assuming Kelly-Brown was to indeed prevail in this infringement suit, what are her remedies?
- The facts say she has asked for unspecified damages. But she could ask for injunctive relief. This means the court would ask Oprah to immediately stop using “OWN Your Power.” If Oprah was still selling that issue, she would need to take it off the shelves.
To Settle vs Not Settle
Yesterday I discussed the need for Andrew Breibart in the Shirley Sherrod case to sit on his ego and consider settlement because the facts made sense in that scenario. In this instance, I really I am uncertain Oprah should settle. There are some lawsuits you just have to say, “okay, you want a fight? You got it.” Obviously I say this because Oprah is a public figure and public figures are always concerned about the media and are quick to settle cases to avoid bad press. This, to me, is not one of those suits that should compel a quick settlement.
However, majority of suits filed are negotiated and resolved through settlement.
That is it from me, for now!
Check out the video below, catch the full story on this lawsuit on TMZ.