2nd Circuit rules against Oprah in trademark violation

KWIKA partner Jeremiah Reynolds was quoted by Law360.com in Ryan Davis’s piece on a ruling last Friday by the Second Circuit reversing a district court decision that Oprah Winfrey’s use of the phrase “Own Your Power” was merely fair use.

The concept of “fair use” generally allows the use of trademarked terms in the media in limited descriptive or editorial circumstances without permission.  However, the mark holder in this case, Own Your Power Communications Inc., claimed that because Winfrey is so well-known, the public’s natural assumption is that she owns the mark, when in fact the opposite is true (“reverse confusion”).  At issue was the October 2010 issue of O, Winfrey’s magazine, which featured the phrase “Own Your Power” on the cover and in several articles, in addition to an “Own Your Power” event.

Jeremiah said the ruling is a “very narrow and confining” view that could encourage future allegations of trademark infringement based on the use of a phrase in the media and that “it’s been made easier at least to state a claim at the pleading stage that the use of a phrase in a magazine and in related events could give rise to trademark liability.”