Kelly-Brown v. Winfrey
659 F. App'x 55
2d Cir.2016Background
- Simone Kelly-Brown registered a stylized/design trademark for the visual representation of the words “Own Your Power” (light blue script) in 2008; she did not register a standard-character mark for the words alone.
- Oprah Winfrey and affiliated entities used the phrase “own your power” (without Kelly-Brown’s stylized design) in multiple editorial and event contexts in 2010–2011.
- Kelly-Brown sued under the Lanham Act (trademark infringement, reverse confusion, false designation) and related state/common-law claims; venue was transferred to S.D.N.Y.
- The district court granted summary judgment for defendants, holding (1) the literal phrase lacked distinctiveness and secondary meaning, (2) no likelihood of consumer confusion, and (3) defendants’ use was fair use. This Court had earlier vacated a dismissal and remanded for further proceedings.
- On appeal after discovery, the Second Circuit affirmed the district court’s grant of summary judgment, though it affirmed on somewhat different grounds.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Distinctiveness of literal phrase (“own your power”) | Phrase is inherently distinctive (or entitled to presumption via registration) | Phrase is descriptive of coaching/motivational services and lacks secondary meaning at relevant time | Phrase is descriptive; defendants rebut presumption and no secondary meaning shown |
| Protectability of composite (stylized) mark when literal element is weak | Composite design mark may still be protectable notwithstanding unprotectable words | Even if composite protected, the unprotectable literal element weakens claim and defendants’ use (words alone) does not create confusion with stylized mark | Court did not need to decide full protectability of composite; even assuming protection, plaintiffs cannot show likelihood of confusion based on defendants’ non-stylized use |
| Likelihood of confusion (Polaroid factors) | Consumers would likely confuse defendants’ use of the phrase with plaintiffs’ mark | Defendants’ use (plain words, different context) is not likely to confuse consumers; surveys and lack of actual confusion support this | No reasonable jury could find a likelihood of confusion; minimal evidence of actual confusion and defendant surveys negate it |
| Fair use defense | Plaintiffs argue defendants’ use infringed | Defendants invoke nominative/descriptive fair use (use other than as a mark, descriptively, in good faith) | Even if there were protectable rights, defendants’ use qualifies as fair use as a matter of law (district court’s finding effectively upheld) |
Key Cases Cited
- Playtex Prods., Inc. v. Georgia-Pac. Corp., 390 F.3d 158 (2d Cir. 2004) (discussing standard of appellate deference to district-court findings on Polaroid factors)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (summary-judgment standard and role of the court in weighing evidence)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (establishing multi-factor likelihood-of-confusion test)
- Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) (framework distinguishing descriptive, suggestive, and arbitrary/fanciful marks)
- Time, Inc. v. Petersen Pub. Co. L.L.C., 173 F.3d 113 (2d Cir. 1999) (definition of secondary meaning in trademark context)
- Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d 114 (2d Cir. 2001) (standard for assessing actual confusion evidence)