In an opinion Thursday, Judge Crotty granted Oprah Winfrey summary judgment in a case that was brought by a motivational speaking business, Own Your Power Communications, Inc., and that accused Ms. Winfrey of wrongfully using the phrase “Own Your Power” in her magazine, on her website and elsewhere. Judge Crotty found that the mark had not acquired “secondary meaning” and thus was not protectable:
Here, Plaintiffs—despite voluminous discovery—do not even begin to demonstrate that “the [phrase] and the business have become synonymous in the mind of the public, submerging the primary meaning of the term in favor of its meaning as a word identifying that business.” Time, Inc. v. Petersen Publ’g Co. L.L.C., 173 F.3d 113, 117 (2d Cir. 1999) (citation and quotation marks omitted). Courts within the Second Circuit look at six factors to establish whether a mark has acquired secondary meaning: (1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use. Rockland Exposition, Inc., 894 F. Supp. 2d at 315. Applying these factors supports but one conclusion: Plaintiffs’ complete failure to establish secondary meaning. In the five-year period from 2009 to 2013, Plaintiffs spent $2,957 on advertising. Sitwala Decl., Ex. LL. Plaintiffs have no consumer studies linking them to the phrase “Own Your Power.” Id. at Ex. K 226:19-22. Plaintiffs fail to present sufficient evidence of unsolicited media coverage discussing the phrase in connection with their business. Id. at 243:4-255:4. Plaintiffs’ sales were $966 in 2009, $6,388 in 2010, $5,390 in 2011, $23,130 in 2012, and $30,007 in 2013, id. at Ex. LL, and Plaintiffs failed to make a profit between 2010 and 2012, id. at Ex. L 163:12-15. Plaintiffs fail to identify any attempts to intentionally copy or plagiarize the phrase. Relatedly, there are multiple instances of other businesses using the phrase “Own Your Power,” see Kelly-Brown, 717 F.3d at 317 n.7; indeed, Defendant Oprah Winfrey used the phrase more than two decades ago in a commencement speech delivered to Spelman College, Sitwala Decl., Ex. E ¶ 2 (“The speech concluded with this admonition: ‘. . . Be a queen. Own Your Power. Own your glory. Go forth Spelman, and triumph’” (original emphasis removed)). There is no record evidence that is sufficient to raise a triable question of material fact regarding the phrase’s secondary meaning.