Once again, we have Taylor Swift to thank for inspiring a blog. In the past few weeks the news has featured Ms. Swift's decision to trademark various phrases, such as "This Sick Beat," "Nice to Meet You. Where You Been?", and "Cause We Never Go Out Of Style."
A recent case out of the Southern District of New York demonstrates some of the limits to protecting and successfully litigating over a trademarked phrase. In Simone Kelly-Brown and Own Your Power Communications Inc. v. Oprah Winfrey et al, Case No. 11 cv 7875, the plaintiff owned a trademark for "Own Your Power." Defendants (Oprah Winfrey and her empire) allegedly used the same phrase on the cover of their magazine, at a magazine-related event, on their website, on social media accounts, and on their TV show.
The plaintiff's mark, in addition to the phrase Own Your Power, included the color light blue and scripted letters which created the word "power."
The Court granted Oprah's motion for summary judgment against plaintiff because (1) the phrase Own Your Power on its own was not protected, (2) even if the phrase were protected there was no evidence establishing a likelihood of consumer confusion, and (3) a fair use defense applied.
In this case, the plaintiff's mark did not cover just the phrase, but its registration included color and script features. Taylor Swift, and others, may have solved that problem with their registrations. But, those registering phrases will still face the second two hurdles that: confusion and fair use. If you have registered a phrase, careful attention should be placed on confusion and fair use before filing a lawsuit to assess the risks and benefits of pursuing litigation in a space where proving your claim can be challenging. On the flip side, if you are using someone else's phrase, caution should be used there too, especially if the phrase belongs to someone as well-known as Taylor Swift.
With that, it has been nice to meet you. Where you been?
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