Last week, multimedia production company founded by Oprah Winfrey dropped its trademark action against podcast f/k/a Oprahdemics.
The dispute started last January when co-hosts Kellie C. Jackson and Leah W. Rigueur announced the release of their new podcast, Oprahdemics, to break down the most iconic episodes of The Oprah Winfrey Show. Oprah started in September 1986 and ran for 29 seasons before ending in May 2011.
kept its name throughout its entire first season, which wrapped up in June 2022 with a live show at the Tribeca Film Festival. The show’s branding included a dictionary-style definition of “Oprahdemics,” defined as “the study of the Queen of Talk.” The purpose of the podcast is to explore what Oprah has meant for our culture. But according to the lawsuit, the podcast is a “bad faith” attempt to capitalize on the goodwill and reputation of Harpo’s trademarks to raise [Jackson’s and Rigueur’s] own personal and professional brands.”
In August 2022, Harpo Inc., which owns Oprah’s trademarks, sued the podcasters and their producer Roulette Productions LLC in the Southern District of New York for infringement and dilution of "Oprah" and "O" protected trademarks. Harpo – which, by the way, is Oprah spelled backwards – alleged that the “Oprahdemics” moniker mislead listeners into thinking that Oprah is involved with the podcast, dilutes the power of her brand, and will cause irreparable harm to Harpo’s hard-earned goodwill and reputation. The complaint stated that “[d]espite Harpo’s requests, Defendants, through counsel, have refused to transition away from the dilutive and confusingly similar OPRAHDEMICS brand.”
In response to Harpo’s suit, Jody Avirgan of Roulette Productions stated, “‘Oprahdemics’ is a journalistic exploration by history professors and sincere, longtime fans of Oprah Winfrey. As independent producers, we feel it’s important to have fun, approachable, and educational conversations about the cultural impact of Ms. Winfrey. This comes from a place of both deep admiration and critical thinking. Kellie and Leah are remarkable hosts. Roulette Productions produces ‘Oprahdemics’ and has been engaged with the team at Harpo for some time–while genuinely surprised by this, we hope to resolve it.”
Harpo did not seek monetary damages or disgorgement of profits for defendant’s “wrongful acts of building a media and entertainment brand by capitalizing on the goodwill of the OPRAH and O family of trademarks,” or “to prohibit defendants from airing a podcast series on their chosen topic.” Instead, Harpo just asked the court to enjoin the defendants “from wrongfully creating a new brand incorporating Harpo's trademarks.”
Note that “descriptive fair use” permits use of another’s trademark to describe a product or service, rather than as a trademark to indicate the source of the goods or service. Had the podcast mounted such a fair use defense, the court would have looked at whether the podcast falsely suggested sponsorship or endorsement by the trademark owner (here, Harpo).
But, at an unknown date after Harpo initiated its action, the title of the podcast changed from Oprahdemics to You Got A Podcast! on all streaming platforms. The new title is a play on words related to Winfrey’s practice of gifting various items to her talk show audiences.
And last week Harpo agreed to dismiss its suit against the fan podcast concerning the podcast’s initial title because the parties have apparently reached a settlement. The stipulation of dismissal, blessed by United States District Judge Alvin K. Hellerstein, did not disclose details of the settlement agreement.