Kelly-Brown v. Winfrey
717 F.3d 295
2d Cir.2013Background
- Kelly-Brown owns a motivational services business and has a federally registered service mark for “Own Your Power.”
- Oprah, Harpo entities, Hearst entities used the phrase “Own Your Power” in a magazine, event, and website, creating potential consumer confusion.
- Plaintiff sues in New Jersey federal court for Lanham Act claims including trademark infringement, false designation of origin, reverse confusion, counterfeiting, and for vicarious and contributory infringement; state claims also asserted.
- District Court dismissed claims finding fair use; venue later transferred to SDNY for this appeal.
- Plaintiff appeals, arguing fair use does not bar the claims and seeking reversal on infringement, false designation, and reverse confusion; district court’s rulings on vicarious/contributory infringement and counterfeiting are contested.
- The Second Circuit vacates in part, reinstates some federal claims, and remands for further proceedings consistent with the opinion; vicarious/contributory infringement and counterfeiting claims are affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Use as a mark as a threshold requirement | Kelly-Brown argues use as a mark is not a required threshold for infringement. | Defendants contend use as a mark is a threshold element to plead infringement. | Threshold use as a mark not required to plead infringement. |
| Fair use requirement alignment and sufficiency | Plaintiff contends defendants’ uses are not descriptive, not non-trademark uses, and not in good faith. | Defendants assert fair use defense applies to the challenged uses. | Fair use must satisfy three elements; defendants fail to establish at this stage. |
| Descriptive sense element of fair use | Uses described the Magazine/Event content and encouraged action, implying descriptive use. | Uses were not descriptive of contents or actions; primarily as a mark. | Descriptive sense not shown for Magazine cover; the court analyzes descriptiveness as part of a broader record. |
| Good faith element of fair use | Alleges knowledge of Kelly-Brown’s mark and deliberate adoption to trade on goodwill. | Argues lack of shown bad faith and that use was in good faith. | Bad faith not adequately demonstrated on the pleadings; dismissal not warranted at this stage. |
| Secondary infringement and counterfeiting claims | Sponsors’ involvement supports vicarious or contributory infringement and potential counterfeiting. | Sponsors not shown to be partners/agents or to supply mislabeling products. | Vicarious and contributory infringement affirmed; counterfeiting claims affirmed as to visual/logo distinctions. |
Key Cases Cited
- JA Apparel Corp. v. Abboud, 568 F.3d 390 (2d Cir.2009) (three elements of fair use; use other than as a mark, descriptive sense, good faith)
- EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56 (2d Cir.2000) (eight-factor test for consumer confusion; descriptive/fair use guidance)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.1961) (Polaroid eight-factor test for likelihood of confusion)
- Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir.2009) (use in commerce; keyword/ad context; likelihood of confusion concepts)
- 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir.2005) (use in commerce; threshold burdens; distinction between use in commerce and use as a mark)
- Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir.2001) (headline as descriptive; differences from Tribune’s masthead in branding)
- Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond’s USA Co., 125 F.3d 28 (2d Cir.1997) (descriptive use of slogan in advertising; prominence of source identifiers)
- Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532 (2d Cir.2005) (recognizes coexistence of slogans and marks; source identification)
- Star Indus., Inc. v. Bacardi & Co., Ltd., 412 F.3d 373 (2d Cir.2005) (polaroid factors; consumer sophistication considerations)
- Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir.1976) (generic to descriptive vs suggestive spectrum in marks)
- Nike, Inc. v. “Just Did It” Enters., 6 F.3d 1225 (7th Cir.1993) (advertising slogan protection under fair use context)