Earlier this week, Oprah’s media company, Harpo, sued a pair of podcasters and their production company over their podcast called “Oprahdemics.” Harpo is alleging trademark infringement, dilution, unfair competition, and cybersquatting.
Harpo has commenced this action, the sole purpose of which is to protect its trademark rights. Harpo does not seek monetary damages or profits available under applicable law from Defendants’ wrongful acts of building a media and entertainment brand by capitalizing on the goodwill of the OPRAH and O family of trademarks. Nor does Harpo seek to prohibit Defendants from airing a podcast series on their chosen topic. However, Harpo submits that the Court should enjoin Defendants from wrongfully creating a new brand incorporating Harpo’s trademarks and making trademark use which is dilutive of and constitutes misuse of Harpo’s OPRAH and O family of trademarks and explicitly misleads consumers as to the source and/or sponsorship of Defendants’ branded offerings.
Compl. at 2-3, Harpo, Inc. v. Jackson, Case No. 1:22-cv-06787 (S.D.N.Y. Aug. 9, 2022).
The podcast features two history professors who discuss Oprah, her long-running daytime talk show, and her overall career as an actress and media entity. Here is the podcast’s cover art, which describes the show as “the study of the Queen of Talk”:
Open And Shut Case?
Oprah and her billions of dollars are not likely to stand for unlicensed use of her trademarks, especially because the law requires trademark owners to vigorously protect their marks. Imagine if I tried to sell cereal called OPRAH O’S or a line of car-shaped cherry popsicles called OPRAH BARS. It would never fly. Likewise, if I attempted to produce a television show or podcast series called THE OPRAH SHOW, I wouldn’t make it past the pilot episode.
However, this case may not be as obviously in Oprah’s favor as my hypothetical examples.
Balancing Free Speech Against Trademark Protection: The Rogers Test
The Second Circuit (which happens to be where this lawsuit was filed) developed a widely applied test for protecting free speech in trademark infringement lawsuits. The Rogers test (see Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)) is applied in cases of non-commercial trademark use to balance the interests of free speech and artistic expression against the interests of protecting the rights of trademark owners.
In short, the Rogers test says that the title of an artistic work is protected free speech under the First Amendment if:
- the title of the work has some artistic relevance to the underlying work; and
- that title is not explicitly misleading as to the source of the work.
Id. at 999. The Second Circuit went on to explain that unless the title “explicitly denote[s] authorship, sponsorship, or endorsement by the celebrity or explicitly mislead[s] as to content” it does not violate the second prong of this test. Id. at at 1005. In recent years, several circuits have folded in a likelihood of confusion analysis into the Rogers test, either as part of the second prong or as its own separate analysis.
Here, it would be hard to argue that OPRAHDEMICS has no artistic relevance to the underlying work. The podcast is a historical, almost academic review and analysis of the career of Oprah Winfrey. The portmanteau of “Oprah” and “academics” to create the name of the podcast is a direct reference to the themes of the show.
But is the title explicitly misleading as to the source of the podcast? I think we have to look at the word “explicitly” and take it, well, explicitly. There is not a literal denotation of “authorship, sponsorship, or endorsement.” The name does not use the OPRAH mark in the possessive (e.g., “Oprah’s”). The cover art makes it clear the show is a study “of” Oprah and not “by” Oprah or “with” Oprah (actually it doesn’t even use her name, which I think will help the defendants).
Could the podcast avoid using the OPRAH mark entirely? Of course. But even if the defendants had no intent to trade off of Oprah’s success or to use her name to bolster their own SEO, forcing them to exclude the subject matter of their show from the name of the show is pretty burdensome. That’s the exact type of restraint on free speech that the Rogers test looks to avoid. This also brings me to another possible, albeit weaker, argument in the defendants’ favor.
Nominative Fair Use
There’s a specific flavor of fair use known as nominative fair use. The idea of nominative fair use is that it is okay for you to use someone else’s trademark when your use of that mark is simply to refer to the goods or services covered by that mark. The classic example of this is New Kids on the Block v. New America Pub, 971 F.2d 302 (9th Cir. 1992). In that case, the popular boy band New Kids on the Block sued a newspaper for using their trademarked name in reader opinion polls. The defendants won that case on the theory that they were allowed to use the band’s trademark because the only way reasonably available to describe the band was the name of the band itself.
The “Oprahdemics” defendants would not have as strong of an argument. By creating a portmanteau using the OPRAH mark it is not literal nominative use of the mark. I would still argue for nominative fair use in the alternative, along with the Rogers argument, but if this were my only lifeline I wouldn’t necessarily love my chances against the plaintiffs.
What’s Going To Happen?
The answer in these cases is usually, “they’ll probably settle.” It’s a boring answer, but it’s an honest one. Here, Harpo, Inc. has gone out of their way to say they’re not looking for money and they’re not even looking to shut the show down. They only wish to stop the podcasters from what they feel is an unlicensed use of one of their trademarks. This makes it more likely that a settlement is imminent.
However, in an alternate universe where settlement is not an option, I would bet on the defendants prevailing on the Rogers test.
Full complaint: Harpo, Inc. v. Jackson, Case No. 1:22-cv-06787 (S.D.N.Y. Aug. 9, 2022)