The problem—as this blogger sees it—with most mass-media reports of court decisions is that they tell you the outcome, but they rarely if ever tell you what’s really interesting about a decision. Consider, for example, the May 31 decision in the Second Circuit matter of Kelly-Brown, et al. v. Winfrey, et al.
In the first place, the case might never have been reported as news if the Winfrey in question weren’t that Winfrey. But it is (a woman who “almost needs no introduction,” according to the court). So the news is that Oprah and her companies were bested (in part) in an appeal by a plaintiff claiming trademark infringement over use of the phrase “Own Your Power.”
But the interesting part of the ruling is the legal development in the decision! The refinement of a rule! Indeed, the acknowledgement and redress by the court of an historical error!
Your Own Blogger.
(In articulating—or clarifying, at any rate—the rule, however, the Second Circuit panel probably could have been more articulate. Indeed, your commentator had to read the relevant discussion several times before I fully understood what the court was explaining, and I’m no dummy. My mom thinks I’m smart, anyway. Or it’s my dad. One of them. [We are all very proud of you, Matthew. — RDC])
The relevant (“Oprah”) defendants put almost, but not quite, all of their eggs in a “fair use” basket. The District Court found the defense availing, even as that court was also persuaded by the defendants’ lone offensive defense, as it were: that the plaintiffs had failed to allege all of the requisite elements of a trademark infringement claim. Specifically, the defendants argued that Simone Kelly-Brown had not shown that the defendants had used the mark in question “as a mark.” That is, while they certainly had made use “of the mark,” they had not used the mark as a mark, and therefore could not even as an initial matter be said to have infringed the plaintiff’s rights in the mark (even putting aside having a complete defense to having done so, if they had).
You’re confused, said the Second Circuit. But we might be partially responsible for that. Read More…