## Facts

- Simone Kelly-Brown and her company operated a motivational services business using the registered service mark “Own Your Power” for motivational and life-coaching services.
- Oprah Winfrey and related media entities used the phrase “Own Your Power” in connection with motivational content, including:
  - prominent placement on a magazine cover;
  - promotion of a live motivational seminar billed as the “First-Ever Own Your Power Event,” with corporate sponsors; and
  - a website section organized around the phrase as a recurring theme.
- Kelly-Brown alleged the phrase was used as a source-identifier and that defendants’ publicity and market reach created consumer confusion, including reverse confusion (consumers believing Kelly-Brown was affiliated with, sponsored by, or infringing Oprah’s brand).
- Kelly-Brown sued for Lanham Act trademark infringement, false designation of origin, reverse confusion, and related state-law claims, and also asserted vicarious infringement, contributory infringement, and counterfeiting theories (including against event sponsors).
- The district court dismissed the Lanham Act claims on a Rule 12(b)(6) motion, concluding defendants established descriptive fair use, and dismissed the vicarious, contributory, and counterfeiting claims on separate grounds.

## Issues

1. Whether the complaint plausibly alleged defendants used “Own Your Power” as a mark (a source identifier) rather than purely descriptive language.
2. Whether defendants’ descriptive fair-use defense was established on the pleadings so as to support dismissal of trademark infringement, false designation, and reverse confusion claims.
3. Whether the complaint stated claims for vicarious infringement, contributory infringement, and trademark counterfeiting.

## Decision

- The Second Circuit vacated dismissal of the Lanham Act claims for trademark infringement, false designation of origin, and reverse confusion, and reinstated related state-law claims.
- The court held defendants had not established a descriptive fair-use defense at the motion-to-dismiss stage.
- The court affirmed dismissal of the vicarious infringement, contributory infringement, and counterfeiting claims.
- The case was remanded for further proceedings on the surviving claims.

## Legal Principles

- Descriptive fair use requires (1) use “otherwise than as a mark,” (2) descriptiveness as used, and (3) good faith; it will not warrant Rule 12(b)(6) dismissal where the complaint plausibly alleges trademark use and lack of good faith.
- A phrase used repeatedly and in varied contexts (e.g., magazine cover, event title/theme, and website branding) may plausibly function as a mark, even if it has an ordinary descriptive meaning.
- Good faith in fair use is fact-intensive; allegations of knowledge of the plaintiff’s registered mark and extensive high-visibility deployment can be sufficient to preclude dismissal at the pleading stage.
- Reverse confusion is plausibly pleaded where a larger user’s saturation of the market with the challenged designation could cause consumers to believe the smaller senior user is affiliated with, sponsored by, or infringing the larger user.
- Vicarious infringement requires allegations of a relationship involving mutual control akin to principal-agent or a joint enterprise; sponsorship alone is insufficient.
- Contributory infringement requires plausible allegations of intentional inducement or continued supply/support with knowledge of infringement; mere event sponsorship does not satisfy this standard.
- Trademark counterfeiting demands more than ordinary infringement and generally targets classic piracy; allegations of promotional use of the same phrase did not fit the counterfeiting theory as pleaded.

## Conclusion

The Second Circuit held that resolving descriptive fair use on the pleadings was premature where the complaint plausibly alleged that “Own Your Power” was used as a mark and not in good faith, including under a reverse-confusion theory, while upholding dismissal of vicarious liability, contributory infringement, and counterfeiting claims for insufficient factual allegations.


Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013)