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Suit Unravels the Mystery of Sherlock Holmes’ Copyright

Written on March 20, 2014 by

We all know who Sir Arthur Conan Doyle is, but who is Leslie S. Klinger, and why is he suing the Estate of Conan Doyle? You might say Klinger leads a double life. He is an estate planning and tax attorney at Kopple & Klinger in Los Angeles. But he is better known as one of the world’s leading experts on Sherlock Holmes. He is the author of many scholarly works on Holmes, including an award-winning three volume annotated collection that has been called “the definitive exegesis of Holmes and his times.”

Why is this Holmes scholar suing the Estate of the beloved detective’s creator? It seems so irregular, yet the answer is obvious. Klinger is trying to free his hero from the shackles of copyright law.

Even though Holmes first appeared in 1887 in “A Study in Scarlet”, the Conan Doyle Estate continues to assert copyright in the character. The Holmes “canon” consists of 4 novels and 56 stories. Most of those works were published before the all-important year of 1923. Under copyright duration rules, any work published in the U.S. before 1923 is in the public domain because its copyright has expired. Only ten of the works (the “Ten Stories”) were first published in 1923 or later and are still protected by copyright.

Klinger is currently preparing a collection of original fictional stories that feature Sherlock and other characters that appear in the canon. As it had in the past, the Estate contacted Klinger and demanded that he enter a copyright license agreement, even though Klinger contends that all the characters and story elements in the proposed book appear in the pre-1923 works. Though Klinger had begrudgingly entered licenses with the Estate in the past, this time he refused. In the response, the Estate took a dastardly approach. According to Klinger, the Conan Doyle Estate threatened “if you proceed instead to bring out [the new collection] unlicensed, do not expect to see it offered for sale by Amazon, Barnes & Noble, and similar retailers. We work with those companies routinely to weed out unlicensed uses of Sherlock Holmes from their offerings, and will not hesitate to do so with your book as well.” This sounds like a tactic sprung from the mind of Professor Moriarty, who, according to Holmes, “had hereditary tendencies of the most diabolical kind.”

Not intimidated, Klinger brought a declaratory judgment action in the federal court in Chicago, seeking to clarify that all the characters and story elements from the pre-1923 works are in the public domain. Klinger v. Conan-Doyle Estate, Ltd, No. 13-cv-1226. Klinger has filed a motion for summary judgment and the Estate has responded.

I was anxious to see what ingenious defense the Estate would put forward to justify how it can demand copyright royalties for characters who were created 126 years ago. I was not disappointed. The Estate has proffered a most intriguing explanation as to why they still control Holmes, Watson, and company.

First, the Estate admits that the first fifty stories “are indeed in the public domain” — a prudent move since it is undeniable under the Copyright Act provisions on duration. The heart of the Estate’s argument lies, as it logically must, in the fact (also indisputable) that the Ten Stories are still protected by copyright. But to make this argument work, the Estate would have to show some incontrovertible nexus between the late copyrights and the early characters, since the early works are admittedly in the public domain. Put to the test, the Estate made an argument that only an English major could devise. The argument is that Holmes and Watson were not “complete” in the first fifty works; they continued to be developed in the copyrighted Ten Stories. In those later works, Sir Arthur added new aspects to each character’s background, and even changed Holmes’ outlook on the world, reflecting a gradual mellowing of his personality. Thus, we could not have known the real Holmes until the bitter end.

If the characters were only completed in the post-1922 stories, argues the Estate, then those characters are still protected. Klinger’s position would create multiple personalities out of Holmes — a public domain version and the true version. This, it argues, is a travesty and can’t be done: “Plaintiff suggests that Holmes and Watson can be dismantled into partial versions of themselves. But a complex literary figure can no more be unraveled without disintegration than a human personality.”

Ingenious, perhaps, but ultimately unsatisfying from a copyright perspective. This is copyright we’re talking about, not psychology. The problem with the Estate’s argument is that it would result in adding years onto the copyright life of the Mr. Holmes. Holmes was protected by copyright from the moment he appeared in a publication with a copyright notice. The law does not say that the copyright duration clock begins ticking only when a character is complete. How would we know whether or when a character is complete? Whose concept of “complete” controls? Is James Bond complete? How about Mickey Mouse? A copyright owner can continue developing a character and making derivative works throughout the entire term of the copyright in the original character. The notion that copyright duration is measured from the time a fictional character is complete seems unworkable. The result would be to keep a long-lived character in copyright far longer than the statute envisions.

The case of Silverman v. CBS, Inc. (2d Cir. 1989) provides a solution to the conundrums presented by this case. Silverman involved the characters of the old 1940’s radio show “Amos ‘n Andy,” which went on to become a television show in the 1960’s. The radio scripts had fallen into the public domain, but the television shows had not. When confronted with the issue of whether the characters were still protected by copyright, the court ruled that the original characters as delineated in the radio shows remained in the public domain. The copyright in the television episodes provided protection only for the increments of expression beyond what was contained in the early radio scripts.

That concept could readily be applied to the Holmes affair. Events and character first appearing in the Ten Stories would remain inviolate. But anything or anyone appearing in the first fifty works belongs to the public. There is a quid pro quo in copyright — certain exclusive rights are given to a copyright owner for a defined period of time, but once that period expires, the subject matter is free for the public to use as they wish. The Estate’s theory would provide it with extra years of copyright protection that were not part of the legislative bargain.

So perhaps Holmes does have a split personality for copyright purposes. But we can take solace in the fact that after 2022, when the last of the Ten Stories falls into the public domain, his malady will be cured and he will come together again as a whole person. In the meantime, we will leave it to the experts to speculate about what Holmes himself would think of all this.

Trademark Board Finds Subway’s “Footlong” a Generic Term, Not a Trademark

Written on February 11, 2014 by

In a recent review in the New Republic entitled “The Incoherence of Antonin Scalia,” Judge Richard Posner writes a scathing critique of Justice Scalia’s new book, “Reading Law: The Interpretation of Legal Texts.” Scalia’s book (co-authored with Bryan Garner, Editor-in-Chief of Black’s Law Dictionary) advocates what Posner calls “textual originalism” in judicial decision-making. Scalia’s book argues that judges, when interpreting a governing text such as a statute or contract, should “ascribe to that text the meaning it has borne from its inception” rather than speculate about the drafters’ “extra-textually derived purposes.” Posner complains that this methodology results in undue reliance on dictionaries, which can lead judges to myopic results. He illustrates the point by attacking a case discussed by Scalia that looks to the dictionary to find out how to interpret the word “sandwich” in a lease (the landlord promised a sandwich shop that no leases in the shopping mall would be given to other shops that sell sandwiches).

We all think we know what a sandwich is, but maybe we shouldn’t be so sure about that. Is a hot dog a sandwich? Posner says it is, but the Merriam-Webster dictionary definition suggests otherwise. It defines a sandwich as “two thin pieces of bread, usually buttered, with a thin layer (as of meat, cheese, or savory mixture) spread between them.” To emphasize the imprudence of relying too heavily on dictionaries, Posner picks apart the definition: “A sandwich does not have to have two slices of bread; it can have more than two (a club sandwich) and it can have just one (an open-faced sandwich). The slices of bread do not have to be thin…. The slices do not have to be slices of bread: a hamburger is regarded as a sandwich, and also a hot dog….”

My brain hurt for weeks trying to decide whether a hot dog (or a burrito) is a sandwich. Just as I was getting over it and willing to embrace my uncertainty, I had the cruel fate of coming upon an important new trademark case entitled Sheetz v. Doctor’s Associates, Inc. (September 5, 2013), decided by the Trademark Trial and Appeal Board. In the Sheetz case, the Board was called upon to answer the very question that had haunted me: Is a hot dog a sandwich?

The philological inquiry arose out of the attempt by sandwich purveyor Subway (owned by Doctor’s Associates) to obtain a trademark registration for the term “Footlong.” This was no trifling matter for the Board. Subway sold over 4 billion “Footlong” sandwiches in the last decade.

Most sentient beings are aware of Subway’s annoying jingle hawking its “Five-Dollar Footlongs.” Apparently not satisfied with having drummed the jingle into our heads and hearts, Subway felt that it could also claim trademark rights in the term “Footlong.” Subway’s competitors who sold 12-inch sandwiches and hot dogs did not agree. Sheetz, Inc., a chain of gas stations and convenience stores, for one, opposed Subway’s effort to obtain a federal registration, asserting that “Footlong” is a generic term for any 12-inch sandwich.

Footlong hot dogs were pervasive in American culture long before Subway first appeared in 1965. The longstanding use of “Footlong” as a common name for a 12-inch hot dog would be a serious impediment to Subway’s effort to register the word as a trademark. Sensing that it had bitten off more than it could chew, Subway narrowed its request by amending the application to cover only “Sandwiches, excluding hot dogs.” The issue before the Board then was whether “Footlong” is a generic term for 12-inch sandwiches — that is, does the consuming public understand “Footlong” to refer to the class of products that includes sandwiches other than hot dogs?

The Board first addressed the misconception that to be generic, a term must be a noun rather than an adjective. Subway argued that “Footlong” is not the name of a food product, but rather is an adjective referring to the length of the sandwich. The Board rejected the adjective/noun dichotomy. The fact that a term is an adjective does not preclude it from being generic (think of “light” for beer). “Genericness cannot be determined simply by applying prescriptivist rules based on parts of speech,” according to the Trademark Board.

The record in the case was replete with evidence showing that “Footlong” has been widely used for many years in the food industry to refer to 12- inch sandwiches. The Board was unwilling to give Subway a trademark monopoly over a term used by so many others to refer to the length of their sandwiches. It held that the term was generic for any 12-inch sandwich, hot dog or not. The term does not merely describe a sandwich, but rather identifies a category of sandwiches.

Though it had already reached its conclusion without getting embroiled in hot dog semantics, the Board weighed in on the hot dog conundrum for good measure. Subway had argued that hot dogs are not “sandwiches” and thus the Board should not consider evidence that the term “Footlong” is commonly used to identify a type of hot dog.

The Board did not hesitate to take sides in the debate, boldly proclaiming “we find that a hot dog is a sandwich.” That should settle the matter. All the footlong hot dog evidence before the Board was relevant. Judge Posner will no doubt be pleased with this commonsensical conclusion. At the same time, Justice Scalia might be pleased to know that the basis for the Board’s confident proclamation was a dictionary. The Board cited the Random House Dictionary, which tells us that a “hot dog” is “a sandwich consisting of a frankfurter in a split roll, usually eaten with mustard, sauerkraut, or relish.” As any Chicagoan will tell you, and as Random House confirms, if there is ketchup on it, it’s not a hot dog.

Right of Publicity Claims by Former NCAA Players Survive First Amendment Challenge

Written on January 15, 2014 by

Johnny Manziel, a/k/a “Johnny Football,” is in hot water with the National Collegiate Athletic Association for allegedly receiving payments for signing autographs. Last season Manziel, the star quarterback for Texas A&M, won the Heisman Trophy — the first freshman ever to do so.

At the time the NCAA’s investigation was announced, ESPN analyst Jay Bilas did some investigating of his own – not of Manziel, but of the NCAA. In one of the most effective “Twitter takedowns” in the annals of sport, Bilas explained in a series of tweets that if a fan visited www.Shopthe NCAASports.com and plugged in “Manziel” in the search box, the fan would be led to a page where he or she could purchase Texas A&M football jerseys with the number “2,” which of course is Manziel’s number. The site sold jerseys of other high profile as well. Apparently shamed by the tawdriness and hypocrisy of this conduct, the NCAA soon pulled the site down and announced that it would no longer sell this kind of merchandise.

Sportstalk radio hosts have spent countless hours discussing whether college football and basketball players should get paid for their efforts. Many players at the high profile universities have no interest in getting an education, so they don’t get much value from their “free” education. The universities make millions off the entertainment value provided by the players. Some of that money undoubtedly is put to good use by the universities. Perhaps the more troubling exploitation of college athletes comes from the NCAA itself. It requires student-athletes to sign “Form 08-3a”, which gives the NCAA permission to use their images (without pay) to promote NCAA events. The NCAA profits handsomely from the heroics of the student-athletes. According to the New York Times, the NCAA has licensing deals estimated at more than $4 billion. Then there are the media deals as well. The NCAA is in the midst of a 14-year, $10.8 billion media agreement with CBS for the NCAA Basketball Tournament alone. It says that 96% of that goes to the universities, but that still leaves a tidy amount for the NCAA.

One of the not so subtle ways the NCAA exploits the economic value of college football stars is by allowing the use of their personas for video games. It licenses a video game producer, Electronic Arts (“EA”) to sell a popular video game called NCAA Football, which allows the users to control virtual players that represent actual college football players in simulated games. In designing the games, EA replicates each school’s team as accurately as possible. Each real player on a college team has a corresponding virtual player with the same jersey number and position, and identical height, weight, build, skin tone, hair color, and home state. The players get none of the revenues from the licensing or sale of the video games.

A group of former college football and basketball stars has gone on the offensive. The group, led by a quarterback named Sam Keller, filed a class action suit for violation of their rights of publicity. EA argues that its First Amendment right to freedom of expression allows it to use images of former players in the games, which are expressive works. In a stinging defeat to EA and the NCAA, the 9th Circuit Court of Appeals recently held that the First Amendment would not defeat the players’ right of publicity claims. Keller v. Electronic Arts, (9th Circuit, July 31, 2013).

The case highlights the conflict between two well-established legal principles. Our Constitution requires that expression in creative works, even in the form of video games, be protected. Yet it is also been widely accepted that an individual has the right to prevent his image from being used for commercial purposes without permission. Does EA’s constitutional right to make artistic, realistic video games trump Sam Keller’s right to control how his image is used in a commercial context? To resolve the issue, the court asked whether the work “adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.” When a work contains significant transformative elements, “it is especially worthy of First Amendment protection.” The court concluded that the video game’s presentation of Keller’s likeness does not contain significant transformative elements. Even though the video game as a whole contains many creative elements, Keller is merely depicted as Keller performing the same activity he performed in real life on the field of play.

The court engaged in some hairsplitting in distinguishing this case, which is based on the right of publicity, from a companion case based on a false endorsement theory under §43(a) of the Lanham Act. In Brown v. Electronic Arts, Hall of Fame running back Jim Brown sued EA for using his persona in its Madden NFL video games. His claim is that EA’s use of his image will confuse customers into thinking he endorses or sponsors the video games, which he does not. Though EA’s conduct is essentially the same in both cases, the 9th Circuit came to the opposite conclusion in Brown’s case as to the impact of the First Amendment, due to Brown’s slightly different legal theory. The court found that in a false endorsement case the First Amendment is given a more expansive reading. The court held that Brown failed to overcome EA’s First Amendment defense because the use of Brown’s image in the game is “artistically relevant” and because EA did not explicitly mislead consumers as to Brown’s involvement with the game. “The public interest in free expression outweighs the public interest in avoiding consumer confusion.” But apparently it does not outweigh the public interest in compensating celebrities for the commercial use of their images. Go figure. I guess Jim Brown will have to go file a right of publicity action in state court. Under the rationale of Keller, he should be able to state a claim.

The Keller case puts the NCAA in a difficult position. Though the court’s opinion was not a final decision on the merits, it decimated the NCAA’s most potent defense. The court’s ruling would appear to expose the NCAA to a flood of right of publicity claims from former players. The NCAA has already announced that the recent release of NCAA Football 2014 will be its last due to “the costs of litigation.” This litigation defeat, together with the disclosure that it was merchandising Johnny Football’s jersey even as it was investigating him, will undoubtedly sideline the NCAA’s merchandising efforts, at least for a while.

The World’s Most Popular Song Goes to Court

Written on December 9, 2013 by

When Marilyn Monroe sang “Happy Birthday” to President Kennedy on May 19, 1962 in Madison Square Garden, I wonder if the President was thinking about whether the song was protected by copyright.

The copyright status of the song, then and now, is a question of legitimate concern. It is not just an academic question (although it is that, as we shall see), because one of the world’s largest music companies continues to collect royalties for public performances and reproductions of the song, 120 years after the original melody of the song was published. In fact, it is thought that Warner/Chappell, the company claiming to own copyright in “Happy Birthday to You,” collects $2 million dollars a year in royalties for the song. Warner/Chappell would have received at least some royalties, through the collective licensing agency ASCAP, for Ms. Monroe’s sultry rendition of “Happy Birthday Mr. President.”

The copyright status of the birthday song has long been a problem for independent filmmakers in particular. A filmmaker who wants to include the song in a film is faced with the Hobson’s choice of either paying a license fee for the music synchronization rights or cutting the song out of the film and possibly compromising the artistic integrity of the film. One such filmmaker, Jennifer Nelson, is producing a documentary movie about the beloved and oft-performed song. Warner/Chappell spoiled her party by demanding a $1,500 license fee for use of the song in the movie. Nelson’s company, Good Morning to You Productions (“GMTY”) was faced with the possibility of paying statutory damages of up to $150,000 plus Warner/Chappell’s attorney’s fees if it flaunted the demand. Dutifully, but reluctantly, GMTY paid the fee.

But Nelson and GMTY decided that the party was not over yet, and devised a special goodie bag for Warner/Chappell. In June, GMTY filed a class action lawsuit in federal court in New York City asking for a declaration that Warner/Chappell does not own a valid copyright in “Happy Birthday to You” and seeking restitution to GMTY and the other class members (i.e., others who have recently paid to use the song).

The table for this shindig was actually set a few years ago in a law review article by Professor Robert Brauneis of The George Washington University Law School, entitled “Copyright and the World’s Most Popular Song,” 56 J. Copyright Soc’y 335 (2009). In an outstanding piece of historical, investigative, and analytic scholarship, Professor Brauneis digs into the origins of the song and its copyright history. He explains that the melody we know as “Happy Birthday to You” was written sometime before 1893 by two sisters, Mildred and Patty Hill, from Louisville. Mildred, the elder sister, was an accomplished musician and composer. Patty was a teacher who specialized in early childhood education. The song, entitled “Good Morning to All” was written as a greeting for Patty’s kindergarten students. The melody of “Good Morning to All” is identical to the now universally recognized birthday song. The lyrics are also the same, except that the four repeated lines were originally “Good morning to you” rather than “Happy birthday to you.” The Hill sisters’ included the ditty in a songbook collection entitled “Song Stories for Kindergarten.”

In 1893, Mildred and Patty sold their rights in the songbook to Clayton F. Summy, who published and copyrighted it. In those days, a copyright lasted for 28 years, so the initial term of copyright would have expired in 1921. If it was properly renewed in 1921 (and it is not clear that it was), the copyright would remain alive for another 28 years, through 1949. Whether properly renewed or not, the copyright in “Good Morning to All” expired long before Marilyn Monroe serenaded her President.

How can Warner/Chappell claim to own a copyright in “Happy Birthday to You”? First, through a concatenation of corporate acquisitions, Warner/Chappell is the successor in interest to the Summy Company that had originally obtained the rights of the Hill sisters. Even though “Good Morning to All” is now in the public domain, Warner/Chappell claims ownership of the birthday song on the theory that it is a combination of an old melody with new words (“happy birthday” instead of “good morning”). Who actually authored the new lyrics (if it can be considered authorship at all) is not clear in the historical record. It does not appear that the Hill sisters ever claimed rights in the “Happy Birthday” lyrics. Whether the combination of a public domain melody with a slightly revised lyric has sufficient originality to sustain a copyright is a dubious proposition.

In 1935, the Summy Company obtained two copyright registrations for certain piano and choral arrangements of the melody plus the revised text. Under current copyright law duration rules, those registrations, if they were properly renewed in 1963, would subsist until 2030. That totes up to a grand total of 137 years of copyright protection for a melody originally copyrighted in 1893. Copyright is not supposed to work that way. If there was any originality in the 1935 versions, it would be limited to the specific arrangements that were registered.

Professor Brauneis’s article makes a convincing argument that the 1935 registrations were not properly renewed, and that the copyright notice on the 1935 publication was defective. Either of those pitfalls would have put the song in the public domain. There is also substantial doubt that Warner/Chappell can trace its title back to the author of the song that combined the GMTY melody with the “happy birthday” words. The professor concludes that “it is doubtful that ‘Happy Birthday to You,’ the famous offspring of ‘Good Morning to All,’ is really still under copyright.”

Professor Brauneis’s detailed research and collection of historical documents is truly a gift to GMTY and members of the class action lawsuit. Understandably, the allegations of the complaint draw heavily from the information in the professor’s 90-page article. This case will allow the court to decide, after all these years, whether the birthday song is in the public domain. Even more interesting is the question whether Warner/Chappell violated the law by demanding and collecting fees for use of the song, and is required to make restitution. If so, there will be much celebrating by those who paid the unwarranted license fees.

We shall see how this plays out. For the time being, I will hold off on my plans to copyright and collect royalties for my new song called “Happy Lawsuit to You.”

Court Rejects Oprah’s Defense of Trademark Fair Use

Written on November 13, 2013 by

Owning things is an important concept for Oprah Winfrey. She once testified that she had created a culture of ownership at her company, Harpo Productions. “My intent always is to own myself and every part of myself that I can, including photographs, a building, everything in the building. I have, you know, created a culture…at Harpo of ownership.” She owns “O,” the magazine. She owns OWN, the Oprah Winfrey Network. She owns a lot of things. One thing she does not own is the trademark “Own Your Power,” of which more later.

The testimony above about Oprah’s culture of ownership was given almost 15 years ago in a deposition in the case of Natkin v. Winfrey, 111 F. Supp. 2d 1003 (N.D. Ill. 2000). It was a suit by two Chicago freelance photographers, Paul Natkin and Stephen Green, who claimed that Winfrey published some of their copyrighted photographs in one of her books without their permission. They had created the photos over a period of years during tapings of the Oprah show. Not surprisingly, Winfrey claimed that she owned the copyrights. Her philosophy of ownership, however, did not align with the rules of ownership in the copyright law. The court (Judge Castillo) ruled that Natkin and Green, not Oprah, owned the copyrights in the photos. The photographers were independent contractors, not employees of Oprah, and thus the photos were not works made for hire. Absent a written agreement to the contrary, copyrights in works created by freelancers like Natkin and Green are owned by the freelancers, not the party who hires them. The photographers had never signed such an agreement. So that’s another example of something Oprah does not own.

Currently, Winfrey is in a different type of ownership dispute. This time the court battle involves a trademark instead of a copyright. The case relates to Winfrey’s use of the phrase “Own Your Power.” Oprah is on the defense in this case, and her defense is that she is using the phrase descriptively and not as a trademark. Ironically, despite her culture of ownership, her legal team in this case asserts that she does not own a trademark in the phrase.

Simone Kelly-Brown owns a motivational services business, Own Your Power Communications, Inc., engaging in personal and business development coaching. OYPC’s stated mission is “to serve as an empowering Guiding Force…connecting entrepreneurs to their fullest potential.” Ms. Kelly-Brown reminds us on her website that “ANYTHING YOU WANT IS ATTAINABLE!” That’s good — I wish I had known that sooner. But to make that happen, the motivational coach says, you have to “maintain the ‘Own Your Power’ attitude.” Wisely, and perhaps as a manifestation of owning her power, Kelly-Brown registered her “Own Your Power” trademark in 2008.

Oprah Winfrey is a great motivator too, encouraging her fans to “Live Your Best Life.” (In fact, Oprah owns a federally registered trademark on that bit of sage advice). In 2010, Oprah’s empire launched a campaign encouraging her followers to “Own Your Power.” For Kelly-Brown, who serves an audience similar to Oprah’s, this was not good news. With vast resources and numerous media outlets, Oprah could quickly co-opt the “Own Your Power” name, leaving Kelly-Brown’s motivational business looking derivative, like a lame Oprah wanna-be.

True to her philosophy, Kelly-Brown took action and filed a trademark infringement suit against Winfrey and Harpo Productions, alleging that the defendants had infringed her trademark by “producing a bevy of publications, events and online content” all using the trademarked phrase. First was a prominent use of the phrase on the cover of Oprah’s magazine, followed by an “Own Your Power” event at which celebrities posed for photos in front of an “Own Your Power” banner. Winfrey’s website had “Own Your Power” banners and content on at least 75 different pages.

Winfrey claims she was merely using the phrase as a description to illustrate the ideas and content contained in her publications. She was relying on the doctrine of trademark fair use. “Fair use” is an important limitation on the rights of trademark owners to prevent overreaching when a mark contains common words. The law does not want trademarks to be used in a way that stifles expression or monopolizes language needed to fairly describe things or ideas. It provides a defense to someone who uses a phrase which happens to be a trademark (such as “Own Your Power” or “Live Your Best Life”) if the phrase is used (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.

The district court found that Winfrey’s use of the phrase was a fair descriptive use and dismissed Kelly-Brown’s case, but the court of appeals reinstated the case. Kelly-Brown v. Winfrey (2d Cir., May 31, 2013). It held that Kelly-Brown had adequately alleged that the defendants’ use of the phrase could constitute use “as a trademark” rather than just as a descriptive phrase. While simply using a phrase on a magazine cover or as a headline would not normally qualify as trademark use, here the plaintiff made a plausible allegation that Oprah used the term “as a symbol to attract public attention,” and not just as a descriptive phrase. Defendants’ use was far more wide-ranging than just a call-out on a magazine cover. Winfrey had made an entire range of uses that collectively gave plausibility to Kelly-Brown’s allegation that Oprah was “attempting to build a new segment of her media empire” around the catch phrase “Own Your Power.”

Winfrey’s recurring use of the phrase contributed to the appellate court’s finding that it could be considered a trademark use. “Repetition is important because it forges an association in the minds of consumers between a marketing device and a product.”

Litigating against Winfrey’s media empire is not for the faint of heart. Ms. Kelly-Brown tells us that the term “Own Your Power…represents a confident state of mind.” She demonstrated her confidence by bringing the appeal and winning. Adhering to her own motivational coaching philosophy, she used her power to achieve her goals. Remember, “Anything you want is attainable!” So far she seems to be right.

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