Own (Up to) Your (Alleged) Infringement

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!

Matthew David Brozik

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. For the court admittedly has, in prior opinions, used the term “trademark use” indiscriminately to refer to both “use of a mark” and “use of [something] as a mark.” But the element of a trademark infringement claim is use of a mark, in commerce. And that’s a much, much broader thing than use of something as a mark…

…even if in the Sixth Circuit a plaintiff must show a defendant’s use of a mark as a mark to properly plead an infringement claim (a fact the defendants pointed out). But that, notes the Second Circuit, is because the Sixth Circuit is reading the Lanham Act differently, in such a way that does not comport with the Second Circuit’s understanding of consumer confusion. So the Second Circuit declined to adopt the other circuit’s rule that effectively, essentially dictates that a consumer can not be confused by an allegedly infringing use of a plaintiff’s mark if that mark is not being used by a defendant as a mark.

That squared away, the Second Circuit then did have to consider whether the Oprah defendants had used the mark at issue as a mark, because use “other than as a mark” is the first of the three elements of a fair use defense. In the end, the court found that the defendants satisfied none of the three elements of the defense (whereas the District Court had found that they satisfied all three).

Consequently, the Circuit Court reversed the District Court’s wholesale dismissal in part, reinstating Kelly-Brown’s claims of trademark infringement, false designation of origin, and reverse confusion. (The remainder of the plaintiffs’ federal law claims remain dismissed, including claims against several non-Oprah defendants). Of course, Kelly-Brown can still fail to prevail; she might not prove her claims, and the Oprah defendants can still prove that their use was fair. But still, this is an Important Decision. And not even because Oprah says so.

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