Kelly-Brown v. Winfrey

Use "as a mark" is not a threshold requirement for a Lanham Act claim.

Opinion (Straub): Simone Kelley-Brown ("Kelley-Brown") is the owner of a motivational services business and has a registered service mark in “Own Your Power” (the “phrase”). She filed action against Oprah Winfrey, et al. ("Winfrey") Winfrey used this phrase on a magazine cover, at an event, and on a section of a website. Kelly-Brown brought six causes of action: trademark counterfeiting, trademark infringement, reverse confusion, false designation of origin, contributory trademark infringement, and vicarious trademark infringement. The district court granted a motion to dismiss, holding that because Kelley-Brown had not shown that Winfrey used the phrase as a trademark and Winfrey’s use of the phrase constituted fair use. The district court found that the phrase as used by Winfrey was not used as a trademark, was descriptive of the action the readers should take and Kelley-Brown had pleaded no facts indicative of bad faith. Kelley-Brown appealed. The appellate court found prior case law does require a plaintiff to show that the defendant was using the allegedly infringing content "as a mark" as a threshold issue in establishing consumer confusion. The appellate court refused to adopt "use as a mark" as a threshold issue out of concern that it does not address the whether or not consumers are actually confused. Concerning fair use, the appellate court found that Kelley-Brown adequately alleged that Winfrey was attempting to build an association between Oprah and the phrase because of the repetition of the phrase across various forms of media. The appellate court VACATED the district courts decision concerning the trademark infringement, false designation of origin, and reverse confusion claims. The district court's dismissal of Kelly-Brown's vicarious infringement, contributory infringement, and counterfeiting claims was AFFIRMED.