Kelly-Brown v. Winfrey

• Decision Date: 05 March 2015
• Docket Number: No. 11 cv 7875PAC.,11 cv 7875PAC.
• Citation: 95 F.Supp.3d 350,114 U.S.P.Q.2d 1311
• Parties: Simone KELLY–BROWN and Own Your Power Communications, Inc., Plaintiffs, v. Oprah WINFREY, Harpo Productions, Inc., Harpo, Inc., Hearst Corporation, and Hearst Communications, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

95 F.Supp.3d 350

114 U.S.P.Q.2d 1311

Simone KELLY–BROWN and Own Your Power Communications, Inc., Plaintiffs

v.Oprah WINFREY, Harpo Productions, Inc., Harpo, Inc., Hearst Corporation, and Hearst Communications, Inc., Defendants.

No. 11 cv 7875PAC.

United States District Court, S.D. New York.

Signed March 5, 2015.

Patricia Lawrence–Kolaras, The PLK Law Group, P.C., Hillsborough, NJ, Fernando M. Pinguelo, Robert Levy, Scarinci & Hollenbeck, Lyndhurst, NJ, for Plaintiffs.

Jonathan R. Donnellan, Kristina E. Findikyan, Ravi Viren Sitwala, Hearst Corporation, New York, NY, Amanda Z. Patrick, Charles L. Babcock, Nancy W. Hamilton, Jackson Walker LLP, Houston, TX, Carl C. Butzer, Jackson Walker LLP, Dallas, TX, for Defendants.

OPINION & ORDER

PAUL A. CROTTY, District Judge:

Plaintiffs Simone Kelly–Brown and her company, Own Your Power Communications, Inc. (collectively, “Plaintiffs”), bring this action against Defendants Oprah Winfrey, Harpo Productions, Inc., Harpo, Inc., Hearst Corporation, and Hearst Communications, Inc. (collectively, “Defendants”) asserting claims under §§ 32 and 43 of the Lanham Act,¹ and under common law. Plaintiffs allege Defendants unlawfully used Plaintiffs' “Own Your Power” trademark on the cover of their magazine, at a magazine-related event, on their website and social media accounts, and on their TV show.

Previously, the Court granted Defendants' motion to dismiss the complaint in its entirety pursuant to Fed.R.Civ.P. 12(b)(6). Kelly–Brown v. Winfrey, 2012 WL 701262 (S.D.N.Y. Mar. 6, 2012). On appeal, the Second Circuit affirmed the Court's dismissal of Plaintiffs' vicarious infringement, contributory infringement, and counterfeiting claims, but vacated the Court's order with respect to Plaintiffs' trademark infringement, false designation of origin, and reverse confusion claims. Kelly–Brown v. Winfrey, 717 F.3d 295, 315 (2d Cir.2013). Essentially, the Second Circuit ruled that Plaintiffs alleged sufficient facts to support a plausible inference that Defendants violated §§ 32 and 43 of the Lanham Act and rejected the Court's finding of fair use. On December 12, 2013, the Court dismissed Plaintiffs' New Jersey statutory claims; only Plaintiffs' Lanham Act and common law claims remain.

Having completed discovery, Defendants now move for summary judgment and Plaintiffs move for partial summary judgment.

For the reasons below, Defendants' motion is GRANTED in its entirety and Plaintiffs' motion is DENIED in its entirety.

BACKGROUND²

Plaintiff Simone Kelly–Brown is a motivational speaker, life coach, and business coach who has been using the phrase “Own Your Power” in workshops and seminars since 2004. Kelly–Brown Decl. ¶ 3. She is the CEO of Own Your Power Communications, Inc., which was incorporated in Florida in 2010. Id. at ¶¶ 1, 6. On May 27, 2008, the United States Patent and Trademark Office approved Plaintiff Kelly–Brown's service mark:

The color(s) light blue is/are claimed as a feature of the mark. The mark consists of light blue scripted letters which create the words own your ‘power.’

Am. Compl., Ex. A. The service mark is depicted as follows:

Id.

In September 2010, Defendants distributed the October 2010 issue of O, The Oprah Magazine. Its cover is predominantly occupied by a full-page picture of Defendant Oprah Winfrey, as well the magazine's trademark stylized “O” in the top left corner. Written prominently across the October 2010 issue's cover was the phrase “Own Your Power”—in white, italic font—surrounded by the phrases: “Unlock Your Inner Superstar: Our 4–step plan”; “The 2010 O Power List!: 20 Women Who Are Rocking the World”; “How to Tap Into Your Strength”; “Focus Your Energy”; and “Let Your Best Self Shine,” depicted as follows:

Am. Compl., Ex. B.

Besides the use of phrase “Own Your Power” on the October 2010 issue's cover, Defendants also used the phrase on a promotional page inside the October and December 2010 issues, Kolaras Decl., Ex. Z, and on banners at Defendants' “first-ever own your power event,” depicted as follows:

Id. at Ex. FF. Defendants' magazine and event were subsequently referred to on an episode of Defendants' TV show that aired on September 27, 2010, id. at Ex. AA, and on affiliated websites and social media accounts, id. at Exs. BB, CC.

DEFENDANTS' MOTION FOR SUMMARY JUDGMENT

I. Legal Standard

Pursuant to Fed.R.Civ.P. 56(a), summary judgment is appropriate when there is “no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Genuine issues of material fact do not exist if, “after adequate time for discovery and upon motion, [a party] fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). In such cases, “Rule 56(c) mandates the entry of summary judgment .... since a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial.” Id. at 322–23, 106 S.Ct. 2548. In determining whether summary judgment is appropriate, courts must “constru[e] the evidence in the light most favorable to the nonmoving party, ... ‘drawing all inferences and resolving all ambiguities in [their] favor.’ ” LaSalle Bank Nat'l Ass'n v. Nomura Asset Capital Corp., 424 F.3d 195, 205 (2d Cir.2005) (quoting Preseault v. City of Burlington, 412 F.3d 96, 101 (2d Cir.2005) (internal citation and quotation marks omitted)).

II. Lanham Act Claims

Plaintiffs argue Defendants' use of the phrase “Own Your Power” amounted to trademark infringement and reverse confusion under § 32 of the Lanham Act, 15 U.S.C. § 1114, and false designation of origin and unfair competition under § 43 of the Lanham Act, 15 U.S.C. § 1125(a). Plaintiffs' argument fails for three reasons: (1) the phrase “Own Your Power” is not protected; (2) even if the phrase were protected, there is not a shred of evidence establishing a likelihood of consumer confusion; and (3) even if Plaintiffs were to establish a likelihood of consumer confusion, the fair use defense applies.

A. The Phrase “Own Your Power” Is Not Protected

Trademark registration creates a rebuttable presumption of the mark's validity and of the owner's exclusive right to use the mark in commerce. Cartier, Inc. v. Three Sheaves Co., Inc., 465 F.Supp. 123, 128 (S.D.N.Y.1979) (“Registration further creates a rebuttable presumption that the mark is suggestive, arbitrary or fanciful rather than merely descriptive.”). Here, Plaintiffs registered a “special form” mark consisting of “light blue scripted letters which create the words Own Your ‘Power’ ” with the following disclaimer: “No claim is made to the exclusive right to use own your power apart from the mark as shown.”³ Sitwala Decl., Ex. GG 34, 38. Plaintiffs' registration is, therefore, limited to its stylized “light blue scripted” use of the phrase “Own Your Power” and Plaintiffs' have no claim over the phrase itself.

Notwithstanding Plaintiffs' registration, Defendants have demonstrated that the phrase lacks the requisite distinctiveness to be entitled to protection. See Abercrombie & Fitch Co. v. Hunting World Inc., 537 F.2d 4, 9 (2d Cir.1976) (“Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.”). Clearly, Plaintiffs' use of the phrase “Own Your Power” is not generic, or arbitrary or fanciful; nor is the use suggestive.⁴ Instead, Plaintiffs' use of the phrase “Own Your Power” is “descriptive” since it refers to the life/career empowerment services provided by Plaintiffs; these motivational services help clients own their power.⁵ Sitwala Decl., Ex. QQ (“[Plaintiffs have] been helping entrepreneurs transform their passions into the lifestyles they deserve. We'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!”). Since the mark is descriptive, Plaintiffs must establish a secondary meaning in order to have a protectable interest. See Rockland Exposition, Inc. v. Alliance of Auto. Serv. Providers of N.J.,

894 F.Supp.2d 288, 314 (S.D.N.Y.2012) (“Descriptive marks are not inherently distinctive, and therefore use alone is insufficient to confer a protectable interest in a descriptive mark.”).

The existence of a mark's secondary meaning is a “factual determination, proof of which entails vigorous evidentiary requirements.” Id. at 313 (citation and quotation marks omitted). Here, Plaintiffs—despite voluminous discovery—do not even begin to demonstrate that “the [phrase] and the business have become synonymous in the mind of the public, submerging the primary meaning of the term in favor of its meaning as a word identifying that business.” Time, Inc. v. Petersen Publ'g Co. L.L.C., 173 F.3d 113, 117 (2d Cir.1999) (citation and quotation marks omitted). Courts within the Second Circuit look at six factors to establish whether a mark has acquired secondary meaning: (1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark's use. Rockland Exposition, Inc., 894 F.Supp.2d at 315. Applying these factors supports but one conclusion: Plaintiffs' complete failure to establish secondary meaning. In the five-year period from 2009 to 2013, Plaintiffs spent $2,957 on advertising. Sitwala Decl., Ex. LL. Plaintiffs have no consumer studies linking them to the phrase “Own Your Power.” Id. at Ex. K 226:19–22. Plaintiffs fail to present sufficient evidence of unsolicited media coverage discussing the phrase in connection with their business. Id. at...