u.s. polo association v. prl usa holdings, 12-1346-cv (2d cir.) (appellee polo ralph lauren...
TRANSCRIPT
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
1/43
IN THE
United States Court of AppealsFOR THE SECOND CIRCUIT
UNITED STATES POLO ASSOCIATION, INC.,
USPA PROPERTIES, INC.,
Plaintiffs-Counter-Defendants-Appellants,
v.
PRL USA HOLDINGS, INC.,
Defendant-Counter-Claimant-Appellee,
and
LOREAL USA, INC.,
Intervenor-Defendant-Counter-Claimant-Appellee.
BRIEF FOR DEFENDANT-COUNTER-CLAIMANT-APPELLEE
John M. Callagy
William R. Golden
Andrea L. CalvarusoMatthew D. Marcotte
KELLEY DRYE & WARREN, LLP
Attorneys for Defendant-
Counter-Claimant-Appellee
101 Park Avenue
New York, New York 10178
212-808-7800
On Appeal from the United States District Court
for the Southern District of New York (New York City)
12-1346-CV
!! !!
Case: 12-1346 Document: 77 Page: 1 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
2/43
TABLE OF CONTENTS
Page
i
I. INTRODUCTION ............................................................................................................. 1
II. COUNTERSTATEMENT OF ISSUES PRESENTED ..................................................... 1
III. THE PROCEEDINGS BELOW ........................................................................................ 2
IV. COUNTERSTATEMENT OF FACTS ............................................................................. 3
A. The PRL POLO Marks .......................................................................................... 3
B. The Past Litigation With USPA ............................................................................. 5
C. The Current Lawsuit .............................................................................................. 7
1. Procedural History ..................................................................................... 7
2. The PRL Parties POLO Fragrances .......................................................... 8
3. Brand Images of the PRL POLO Marks .................................................... 9
V. SUMMARY OF ARGUMENT ....................................................................................... 11
VI. ARGUMENT ................................................................................................................... 13
A. The District Court Correctly Held that Unless the USPAParties Infringing Activities Were Enjoined, PRL WouldSuffer Irreparable Harm ....................................................................................... 13
B. The Injunction Fashioned by the District Court is Not An Abuse ofDiscretion ............................................................................................................. 25
VII. CONCLUSION ................................................................................................................ 36
Case: 12-1346 Document: 77 Page: 2 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
3/43
NY01\MarcT\1596875.21 ii
TABLE OF AUTHORITIES
Page(s)
CASES
A. Bourjois & Co., Inc. v. Katzel,260 U.S. 689 (1923) ...........................................................................................................16
Aronowitz v. Health-Chem Corp.,513 F.3d 1229 (11th Cir. 2008) .......................................................................................34
Bear U.S.A., Inc. v. Kim,71 F. Supp. 2d 237 (S.D.N.Y. 1999) ..............................................................................32
Benham Jewelry Corp. v. Aron Basha Corp.,No. 97 Civ. 3841 (RWS), 1997 WL 639038 (S.D.N.Y. Oct. 15, 1997) ...............32
Coach, Inc. v. OBrien,No. 10 Civ. 6071 (JPO) (JCL), 2012 WL 1255276 (S.D.N.Y. Apr. 13,2012).......................................................................................................................................29
eBay Inc. v. MercExchange, L.L.C.,547 U.S. 388 (2006) ...........................................................................................................13
Enterprise International, Inc. v. Corporacion Estatal Petrolera Ecuatroiana,762 F.2d 464 (5th Cir. 1985)............................................................................................23
Espinoza v. Allen Imports & Trade Corp.,100 F.3d 942 (table), No. 95-7531, 1996 WL 19142 (2d Cir. 1996) .....................29
Esquire Trade & Finance, Inc. v. CBQ, Inc.,562 F.3d 516 (2d Cir. 2009) .............................................................................................31
GMA Accessories, Inc. v. Eminent, Inc.,No. 07 Civ. 3219 (LTS) (DF), 2008 WL 2355826 (S.D.N.Y. May 29,2008).......................................................................................................................................32
Grout Shield Distributors, LLC v. Elio E. Salvo, Inc.,824 F. Supp. 2d 389 (E.D.N.Y. 2011) .....................................................................23, 24
Henrietta D. v. Bloomberg,331 F.3d 261 (2d Cir. 2003) ...............................................................................................1
Case: 12-1346 Document: 77 Page: 3 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
4/43
NY01\MarcT\1596875.21 iii
Maharaj v. Bankamerica Corp.,128 F.3d 94 (2d Cir. 1997) ...............................................................................................31
MercExchange, L.L.C. v. eBay, Inc.,500 F. Supp. 2d 556 (E.D. Va. 2007).......................................................................15, 21
New York City Triathlon, LLC v. NYC Triathlon Club, Inc.,704 F. Supp. 2d 305 (S.D.N.Y. 2010)......................................................................14, 21
Omega Importing Corp. v. Petri-Kine Camera Co.,451 F.2d 1190 (2d Cir. 1971)...........................................................................................21
Patsys Brand, Inc. v. I.O.B. Realty, Inc.,317 F.3d 209 (2d Cir. 2003) .............................................................................................33
Paulsson Geophysical Services, Inc. v. Sigmar529 F.3d 303 (5th Cir. 2008)............................................................................................23
Perry Knitting Co. v. Meyers,120 F. Supp. 880 (S.D.N.Y. 1954) .................................................................................28
Polo Fashions, Inc. v. Extra Special Products, Inc.,451 F. Supp. 555 (S.D.N.Y. 1978) ...................................................................................5
Power Test Petroleum Distributors, Inc. v. Calcu Gas, Inc.,754 F.2d 91 (2d Cir. 1985) ...............................................................................................14
Pretty Girl, Inc. v. Pretty Girl Fashions, Inc.,778 F. Supp. 2d 261 (E.D.N.Y. 2011) ...........................................................................14
PRL USA Holdings, Inc. v. U.S. Polo Association, Inc.,520 F.3d 109 (2d Cir. 2008) .........................................................................................7, 27
Register.com, Inc. v. Verio, Inc.,356 F.3d 393 (2d Cir. 2004) .............................................................................................28
Salinger v. Colting,607 F.3d 68 (2d Cir. 2010) ...............................................................................................13
Scandia Down Corp. v. Euroquilt, Inc.,772 F.2d 1423 (7th Cir. 1985) ...................................................................................27, 33
Case: 12-1346 Document: 77 Page: 4 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
5/43
NY01\MarcT\1596875.21 iv
Starter Corp. v. Converse, Inc.,170 F.3d 286 (2d Cir. 1999) .......................................................................................25, 26
Sterling Drug, Inc. v. Bayer AG,14 F.3d 733 (2d Cir. 1994) .........................................................................................33, 34
Times Mirror Magazines, Inc. v. Field & Stream Licenses Co.,294 F.3d 383 (2d Cir. 2002) .............................................................................................35
U.S. Polo Association, Inc. v. Polo Fashions, Inc.,No. 84 Civ. 1142 (LBS), 1984 WL 1309 (S.D.N.Y. Dec. 6, 1984) .........................5
U.S. Polo Association, Inc. v. PRL USA Holdings, Inc.,800 F. Supp. 2d 515 (S.D.N.Y. 2011)..............................................................................3
United States v. Carson,52 F.3d 1173 (2d Cir. 1995) ...............................................................................................1
Uzdavines v. Weeks Marine, Inc.,418 F.3d 138 (2d Cir. 2005) .............................................................................................30
STATUTES
15 U.S.C. 1116(a) ..................................................................................................................27
Case: 12-1346 Document: 77 Page: 5 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
6/43
NY01\MarcT\1596875.21
CORPORATE DISCLOSURE STATEMENT
Pursuant to Federal Rule of Appellate Procedure 26.1(a), Defendant-
Counter-Claimant-Appellee PRL USA Holdings, Inc. (PRL) states, by and
through its undersigned counsel, as follows:
Ralph Lauren Corporation is the corporate parent of PRL.
PRL is wholly owned by Ralph Lauren Corporation, a publicly held
corporation.
Dated: New York, New York KELLEY DRYE & WARREN LLPOctober 16, 2012By:
John M. CallagyWilliam R. GoldenAndrea L. CalvarusoMatthew D. Marcotte
101 Park AvenueNew York, New York 10178Telephone: (212) 808-7800
Facsimile: (212) 808-7897
Attorneys for PRL USA Holdings, Inc.
Case: 12-1346 Document: 77 Page: 6 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
7/43
NY01\MarcT\1596875.21 1
I. INTRODUCTIONPRLs brief is limited to addressing two issues raised on appeal that
have particular importance to PRL as the owner of the Polo Player Logo and other
POLO Marks (the PRL POLO Marks).1 These issues are whether PRL would
suffer irreparable harm to the reputation and goodwill symbolized by the PRL
POLO Marks without a permanent injunction and whether the court below abused
its discretion in fashioning the scope of the permanent injunction. Irreparable harm
here was proven, not presumed. This Court will uphold a district courts decision
to award injunctive relief unless the court abused its discretion,Henrietta D. v.
Bloomberg, 331 F.3d 261, 290 (2d Cir. 2003), and has recognized that a district
court has broad discretion to enjoin possible future violations of law where past
violations have been shown, U.S. v. Carson, 52 F.3d 1173, 1183-84 (2d Cir.
1995).
II. COUNTERSTATEMENT OF ISSUES PRESENTED1. Was the District Court correct in holding that PRL would be
irreparably harmed by, among other things, the loss of control of the reputation and
goodwill symbolized by the PRL POLO Marks as used on designer fragrances, if
the United States Polo Association (USPA) and its licensing subsidiary USPA
Properties Inc. (Properties) were not enjoined from using a Double Horsemen
1 PRL joins in the arguments presented by LOral USA, Inc., its exclusivefragrance and cosmetics licensee, in its brief.
Case: 12-1346 Document: 77 Page: 7 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
8/43
NY01\MarcT\1596875.21 2
logo that the District Court determined was confusingly similar to the PRL POLO
Marks when used on fragrance products?
2. Did the District Court abuse its discretion in fashioning an
injunction designed to prevent the likelihood of consumer confusion by prohibiting
the use by USPA and Properties (collectively, the USPA Parties) of colorable
imitations of, or marks confusingly similar to, the PRL POLO Marks on
fragrances, cosmetics, and all other products?
III. THE PROCEEDINGS BELOWIn 2009, the USPA Parties sought a declaratory judgment that their
proposed usage of a version of a Double Horsemen logo on fragrances in a blue
package did not infringe the PRL POLO Marks. PRL and its exclusive fragrance
licensee, LOral USA, Inc. (collectively, the PRL Parties), answered and
counterclaimed for trademark infringement. The USPA Parties consented to an
injunction prohibiting the sale of their first iteration of a fragrance product one
sold in a blue package bearing a Double Horsemen logo and the word mark US
Polo Assn. (A-580-584.) However, the USPA Parties continued to assert that
they should be allowed to use other permutations of that logo. The parties agreed
to consolidate the hearing on the preliminary injunction motion with a bench trial
on the merits. The District Court concluded that the PRL POLO Marks were
infringed by the USPA Parties use of the Double Horsemen logo and the words
Case: 12-1346 Document: 77 Page: 8 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
9/43
NY01\MarcT\1596875.21 3
US Polo Assn. on fragrances and that the PRL Parties would be irreparably
harmed absent entry of a permanent injunction. U.S. Polo Assn, Inc. v. PRL USA
Holdings, Inc., 800 F. Supp. 2d 515 (S.D.N.Y. 2011). After deciding the PRL
Parties motion for attorneys fees (A-2331-2346), and receiving submissions
concerning the form and scope of the injunction, the District Court concluded that
a broad injunction against future infringement was appropriate (A-2346), and
entered a permanent injunction (SPA-62-72).
IV. COUNTERSTATEMENT OF FACTSA. The PRL POLO Marks
In the 1960s, Ralph Lauren, through his fashion businesses, created
and brought to international prominence what is believed to be the first true
lifestyle family of brands one built around the PRL POLO Marks, including the
POLO word mark and the now-iconic Polo Player Logo shown below.
The PRL POLO Marks were initially used on mens and womens fashions and
subsequently extended to a wide array of other designer products, including
fragrances. The PRL POLO Marks, which are now owned by PRL (A-2178-2215),
symbolize to the consuming public the singular creative force of Mr. Lauren as
Case: 12-1346 Document: 77 Page: 9 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
10/43
NY01\MarcT\1596875.21 4
embodied in the products PRL approves for sale under those marks. As PRLs
Vice President for Brand Management testified:
we put out products and goods that are of such highstandard, a premium product, that the consumer places alot of value on and controlling what the consumer seesand what the consumer buys and how they regard ourbrand is so important to us, if a consumer mistakenlybuys a product that they think is authentic Ralph Laurenbut it is counterfeit and the quality will not be of thesame standard and they have a bad experience with it, ittears down everything we have worked over close to 45years to build.
And everybody in our company, certainly everybody thatworks with the product and works in advertising wherewe so carefully hone and craft our image, everybody thatworks in sales, everybody that has contact withconsumer[s], knows that.
(Darsses Dep. at 154:10-155:5; see also Darsses Dep. at 18:16-24, admitted at A-
1222:2-13; A-837:12-23.)
In the late 1970s, the PRL POLO Marks were first used on fragrances,
cosmetics, and other beauty products under an exclusive license with LOreals
predecessor. (A-814:7-13.) LOreal is PRLs exclusive licensee for POLO
fragrance products, and those products are carefully monitored to ensure that they
comport with PRLs quality and image standards. (Darsses Dep. 25:21-26:9,
admitted at A-1222:2-13; A-814:7-13; A-837:12-23.)
Case: 12-1346 Document: 77 Page: 10 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
11/43
NY01\MarcT\1596875.21 5
B. The Past Litigation With USPASuccessful prestige brands like those embodied in the PRL POLO
Marks almost invariably attract infringers who wish to get a free ride on the
goodwill and reputation such prestige brands represent. As early as 1978, PRLs
predecessor, Polo Fashions, Inc. (also referred to herein as PRL), was forced to
defend its marks against infringers. Even at this early stage of PRLs business,
Judge Goettel held not only that the PRL POLO Marks were fanciful as applied to
many items of apparel, but also that they had acquired secondary meaning and
were unquestionably strong marks. Polo Fashions, Inc. v. Extra Special Prods.,
Inc., 451 F. Supp. 555, 558-59 (S.D.N.Y. 1978).
USPA was numbered among those infringers who were found guilty
of free-riding on the goodwill of the PRL POLO Marks. In 1984, in U.S. Polo
Assn, Inc. v. Polo Fashions, Inc., No. 84 Civ. 1142 (LBS), 1984 WL 1309,
(S.D.N.Y. Dec. 6, 1984), USPA and its licensees brought a declaratory judgment
action against PRL, claiming that they were entitled to, among other things, use the
mounted polo player logo shown below in connection with apparel and other goods
and services:
Case: 12-1346 Document: 77 Page: 11 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
12/43
NY01\MarcT\1596875.21 6
PRL counterclaimed for trademark infringement. The district court found that the
USPA Parties were liable for trademark infringement, and in an order (the 1984
Order) enjoined the USPA Parties from:
1. Using any name or mark or symbol which is confusingly similarto the PRL POLO Marks, in connection with the sale or offeringfor sale of any goods or the rendering of any services, (A-1590, 8(a));
2. [M]anufacturing, ... holding for sale or selling any goods ... andthe like bearing an infringement or colorable imitation of any ofthe PRL POLO Marks, (A-1590, 8(b));
3. [U]sing for any commercial purposes whatsoever, the name UnitedStates Polo Association, or any other name which emphasizes theword POLO (or the words U.S. POLO) separate, apart and distinctfrom such name in a manner which is likely to cause confusion with[the PRL Parties], (A-1591, 8(d)); and
4. [I]nfringing [the PRL Parties] trademarks..., (A-1591, 8(e)).The USPA Parties did not appeal from the 1984 Order.
In July 2000, PRL brought a trademark infringement action in the
Southern District of New York against the USPA Parties and their licensees
alleging that their sale of apparel and certain specific other goods infringed the
PRL POLO Marks as applied to the same goods. After a jury trial, Judge Daniels
entered judgment holding that the use of three variants of Double Horsemen logos
by USPA on those specific goods was not an infringement. The USPA Parties use
Case: 12-1346 Document: 77 Page: 12 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
13/43
NY01\MarcT\1596875.21 7
of the solid Double Horsemen logo shown below on those same goods was,
however, held to have infringed the PRL POLO Marks as applied to those same
goods.
This Court affirmed the trial courts decision. PRL USA Holdings, Inc. v. U.S.
Polo Assn, Inc., 520 F.3d 109 (2d Cir. 2008).
C. The Current Lawsuit1. Procedural HistoryOn November 13, 2009, the USPA Parties filed a complaint against
PRL seeking a declaratory judgment that they had the right to use the mark ,
which the USPA Parties described as the Double Horsemen Mark,2 in connection
with fragrances and other products in International Class 3. (A-18-138.) The PRL
Parties counterclaimed, seeking preliminary and permanent injunctive relief. (A-
139-175, A-179-199.) After expedited discovery, the parties agreed that the
2 In their brief and elsewhere, the USPA Parties use the term DoubleHorsemen Mark to refer not only to this specific mark, but also tovariations of this mark which may differ from it in presentation, display, andimpression.
Case: 12-1346 Document: 77 Page: 13 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
14/43
NY01\MarcT\1596875.21 8
preliminary injunction hearing would be consolidated with trial on the merits. A
bench trial was held in late September 2010.
On May 13, 2011, the District Court issued its opinion finding that the
USPA Parties had infringed the PRL POLO Marks. (SPA-1-61.) Following a
motion for attorneys fees, on March 5, 2012, the District Court entered a final
judgment and permanent injunction. (SPA-62-72.)
2. The PRL Parties POLO FragrancesSince the late 1970s, the PRL Parties have sold fragrance products
under the PRL POLO Marks. (A-815:4-9; A-816:2-817:21; A-831:11-19.) More
than one billion dollars ($1,000,000,000) in retail sales of fragrances bearing the
PRL POLO Marks were achieved in the ten years before the trial. (A-819:1-10; A-
2596) At the time of trial, POLO fragrances were available for purchase in
approximately 5,000 retail locations across the United States, including department
stores, specialty stores, and other retail outlets, as well as on the Internet. (A-
824:6-825:1; A-826:17-24; A-856:19-857:1.) The PRL POLO Marks appear
prominently on packaging, on the product itself, and in advertising and promotions
for those fragrances. (A-815:4-817:21; A-2177; A-2220-2227.)
In the ten years preceding the trial, more than one hundred million
dollars ($100,000,000) was spent on advertising POLO fragrances. This included
traditional media advertising as well as cooperative advertising and Internet
Case: 12-1346 Document: 77 Page: 14 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
15/43
NY01\MarcT\1596875.21 9
promotions. (A-819:15-820:3; A-2596.) The widespread visibility of the PRL
Parties POLO fragrances, together with their high quality, resulted in those POLO
fragrances achieving enormous popularity with the public. (A-818:8-17; A-822:5-
11; A-823:18-22; A-832:1-833:3.) This advertising and promotion also created
extremely high brand awareness of the PRL POLO Marks in the fragrance
category. (A-823:7-824:4; A-830:17-25.)
3. Brand Images of the PRL POLO MarksOne of the principal purposes of the extensive advertising and
promotion of the PRL Parties POLO fragrances was to create and maintain a
specific brand image for those fragrances that was congruent with the overall
image that Ralph Lauren created for the PRL POLO Marks. As an example, the
PRL Parties created a video that was a behind-the-scenes feature for television
commercials for their POLO fragrances. These television commercials depict
Nacho Figueras, a fashion model and polo player, elegantly dressed in various
scenes, including piloting a yacht and driving a vintage sports car. Each scene
illustrates the particular exotic lifestyle portrayed by Mr. Figueras in that vignette,
and each lifestyle is associated with a different POLO fragrance product.
(A:840:13-842:24.) These lifestyle images are always deliberately designed to
reflect and mirror the creative vision of Ralph Lauren.
Case: 12-1346 Document: 77 Page: 15 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
16/43
NY01\MarcT\1596875.21 10
Similarly, the PRL Parties produced another video to promote the BIG
PONY line of POLO fragrances. That video featured impeccably dressed young
men and women attending a polo match at a country estate, and contains scenes of
sophisticated, attractive young people cavorting on the estate grounds in vintage
cars, playing polo, drinking wine and eating fine food, and dancing. (A-845:3-
847:6.) The marketing and promotion of the BIG PONY line of POLO fragrances
was also designed to associate different POLO fragrances with specific aspirational
goals according with the creative vision of Mr. Lauren.
As a result of such advertising and promotion, consumers have a very
particular understanding and view of the PRL Parties POLO fragrances. For
example, consumers associate POLO fragrances with the following words:
Classic, Quality, American, Sporty, Happiness, and Confident. (A-
2571.) Those are the attributes to which men who buy and use the PRL Parties
fragrances aspire, and the attributes the friends and relatives who buy those
fragrances for them want the recipients to exemplify, all of which derive from the
masterful weaving of the POLO fragrances into the image associated with the PRL
POLO Marks created by Mr. Lauren himself.
In contrast, David Cummings, USPAs licensing head, asserted that
the image he sought to present for fragrances sold under USPAs marks differs
radically from the image associated with the PRL POLO Marks and the fragrances
Case: 12-1346 Document: 77 Page: 16 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
17/43
NY01\MarcT\1596875.21 11
that bear them. (A-977:22-979:25.) Indeed, Cummings disparaged the image of
the PRL POLO Marks as elitist and snobby, and wholly different from the
USPA Parties supposed image, which he claimed was based on the authentic
sport of polo. (A-978:12-979:25.) As Mr. Cummings took pains to point out, the
brand image the USPA Parties purport to desire for their products is fundamentally
different than Ralph Laurens carefully crafted and nurtured image for fragrances
and other licensed products sold under the PRL POLO Marks. (See A:986:20-
987:3 (PRLs brand image unlike actual polo match).)
As Ms. Darsses of PRL testified, the use of the confusingly similar
Double Horsemen logo on a USPA fragrance with a different brand promise,
premise, and image would cause harm to PRLharm which cannot be quantified
through monetary relief:
[I]f it were to sell in the marketplace, I believe that itwould cannibalize sales of our product and I am assumingit is selling at a lower price point, I am assuming that'sthe business model draft, that if you're thinking you'regetting it for $10 less and it doesn't deliver the samebrand promise that you as a consumer bought into, that itwould do harm to our business in the long-term, yes.
(Darsses Dep. at 187:11-20, admitted at A-1222:2-13 (emphasis added).)
V. SUMMARY OF ARGUMENTContrary to the assertion in the USPA Parties brief, the District Court
did not rely on a presumption of irreparable harm in granting injunctive relief, and,
Case: 12-1346 Document: 77 Page: 17 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
18/43
NY01\MarcT\1596875.21 12
in fact, expressly rejected the existence of such a presumption. As the record
amply supports, the injunctive relief granted below was necessary and appropriate
to protect the invaluable reputation and goodwill symbolized by the PRL POLO
Marks as applied to fragrances and other designer products from further
infringement. PRL, as the owner of the PRL POLO Marks, has the exclusive right
to the goodwill with the buying public which those marks have built up over the
years and the sole and exclusive right to control its hard won reputation as the
licensor of goods that deliver a particular brand promise. Allowing PRLs
reputation and goodwill to fall into the hands of the USPA Parties threatens sure
and irremediable harm to the PRL Parties. Notably, the USPA Parties are unable
to cite a single case where the finding of irreparable harm in similar circumstances
in support of granting injunctive relief was held to be an abuse of discretion.
Secondly, the USPA Parties contend that the injunction is overbroad
in that it prohibits the use of marks that are confusingly similar to or colorable
imitations of the PRL POLO Marks on products other than fragrances, cosmetics,
and other goods in International Class 3. USPAs contention is fallacious. After
finding trademark infringement, courts often enter, and this Court has affirmed,
injunctions that require infringers to keep a safe distance away from the infringed
marks on all goods and services. Here, the parties have engaged in extensive
litigation in the past, so a broad injunction is particularly appropriate. The District
Case: 12-1346 Document: 77 Page: 18 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
19/43
NY01\MarcT\1596875.21 13
Court, contrary to the USPA Parties assertions, did not simply create a boilerplate
injunction. Judge Sweet considered proposals from both parties about the
appropriate scope of the injunction, the parties briefed the issue of the proper scope
of injunctive relief, and then, in the exercise of his equitable discretion, Judge
Sweet crafted the injunction. (SPA-62-72.) The terms of the injunction are
supported by the record below. Furthermore, contrary to the USPA Parties
contentions, the injunction does not and cannot overrule or modify their previously
adjudicated trademark rights. The District Court cannot fairly be said to have
abused its discretion by entering this permanent injunction.
VI. ARGUMENTA. The District Court Correctly Held that Unless the USPA
Parties Infringing Activities Were Enjoined, PRL Would
Suffer Irreparable Harm
The USPA Parties argue that the District Court presumed that the PRL
Parties would suffer irreparable harm if the USPA Parties were not enjoined from
future acts of infringement. (USPA Br. at 48-49.) This argument is misplaced. In
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), the Supreme Court held
that the traditional rule that the grant of injunctive relief ought to be exercised in all
cases consistently with traditional equitable principles, which require a showing of
irreparable harm before injunctive relief may be entered, continues. As a result,
this Court, in Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010), declared no
Case: 12-1346 Document: 77 Page: 19 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
20/43
NY01\MarcT\1596875.21 14
presumption of irreparable harm existed in copyright cases. Judge Sweet, in light
of these precedents, found the presumption of irreparable injury in trademark
cases is no longer appropriate. (SPA-57 (citing Pretty Girl, Inc. v. Pretty Girl
Fashions, Inc., 778 F. Supp. 2d 261, 269 & n.4 (E.D.N.Y. 2011);New York City
Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d 305, 342-43
(S.D.N.Y. 2010)).) Judge Sweet then went on to hold that [e]ven without the
presumption the PRL Parties have adequately demonstrated irreparable harm
here. (SPA-57.) Accordingly, contrary to the USPA Parties protestations, no
presumption of irreparable harm was applied.
As courts have noted since eBay and Salinger, [i]rreparable harm
exists in a trademark case when the party seeking the injunction shows that it will
lose control over the reputation of its trademark , because loss of control over
ones reputation is neither calculable nor precisely compensable. New York City
Triathlon, 704 F. Supp. 2d at 343 (quoting Power Test Petroleum Distribs., Inc. v.
Calcu Gas, Inc., 754 F.2d 91, 95 (2d Cir. 1985) (quotation marks omitted)). The
District Court relied not on a categorical rule as USPA claims, but on long-
standing law that injury to reputation, by its nature, imposes irreparable harm that
nearly always cannot be recompensed by money damages.
The District Courts holding comports with eBay and its progeny.
After the Supreme Courts eBay decision, the district court, on remand, concluded
Case: 12-1346 Document: 77 Page: 20 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
21/43
NY01\MarcT\1596875.21 15
that on the unusual facts in that case, monetary damages were adequate to
compensate the plaintiff for patent infringement. The plaintiff in eBay did not
practice the patents at issue in the suit, but merely used those patents to extract
licensing revenues. As a result, the district court concluded that the plaintiff had
no reputation to protect [and] no goodwill or brand recognition to protect,
indicating that an injunction was not necessary. MercExchange, L.L.C. v. eBay,
Inc., 500 F. Supp. 2d 556, 581 (E.D. Va. 2007). In contrast to the lack of goodwill,
reputation, and brand recognition noted there, the evidence below demonstrated
not only that the PRL POLO Marks have extensive reputation, goodwill, and brand
recognition, but also that the USPA Parties infringement, if not enjoined, would
have adversely affected that reputation, goodwill, and brand recognition. Without
the entry of a permanent injunction, PRL would unquestionably lose control over
the hard-earned, enormously valuable reputation and goodwill symbolized by the
PRL POLO Marks as applied to fragrances. The nigh impossibility of calculating
money damages for such reputational injury was recognized by the District Court
and confirmed by the fact that the PRL Parties did not seek money damages but
rather pursued injunctive relief to protect the reputation and commercial
magnetism of the PRL POLO Marks.
The holding below is ultimately grounded in long standing precedent
explaining how valuable and delicate the reputational value of a trademark is and
Case: 12-1346 Document: 77 Page: 21 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
22/43
NY01\MarcT\1596875.21 16
how easily it may be impaired or destroyed. Justice Holmes, inA. Bourjois & Co.,
Inc. v. Katzel, 260 U.S. 689 (1923), observed that a trademark owner stakes his
reputation on the character of the goods sold under his mark and that the reputation
symbolized by a trademark is a delicate matter that may be of great value but that
easily is destroyed, and therefore should be protected with corresponding care.
Id. at 692.
That the goodwill of the PRL POLO Marks for fragrances is of great
value cannot be questioned on the record evidence. The retail sales of the PRL
Parties POLO fragrances in the ten years before trial totaled well in excess of a
billion dollars. (A-819:1-10, A-2596.) The commercial magnetism of the PRL
POLO Marks for fragrances and other designer products took many years to build,
and the PRL Parties assiduously work together to maintain and protect that
goodwill and reputation. (See Darsses Dep. at 154:15-22, admitted at A-1222:2-
13; A-837:12-23.) Hundreds of millions of dollars have been spent advertising the
PRL Parties POLO fragrances. (A-819:15-820:3, A-2596.) Because, as Justice
Holmes observed, goodwill is necessarily delicate, the PRL Parties painstakingly
control every aspect of the fragrances sold under the PRL POLO Marks to the
general public:
I think anybody that has ever worked at Ralph Laurencomes to understand -- we work in a fashion, again,going back to that control, where we work so hard, everydetail is attended to, we put out products and goods that
Case: 12-1346 Document: 77 Page: 22 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
23/43
NY01\MarcT\1596875.21 17
are of such high standard, a premium product, that theconsumer places a lot of value on and controlling whatthe consumer sees and what the consumer buys and howthey regard our brand is so important to us, if a consumermistakenly buys a product that they think is authenticRalph Lauren but it is counterfeit and the quality will notbe of the same standard and they have a bad experiencewith it, it tears down everything we have worked overclose to 45 years to build.
And everybody in our company, certainly everybody thatworks with the product and works in advertising wherewe so carefully hone and craft our image, everybody thatworks in sales, everybody that has contact with
consumer[s], knows that.
(Darsess Dep. at 154:5-155:5, admitted at A-1222:2-13; see also A-837:12-23.)
The reputation and goodwill POLO fragrances and other PRL POLO
designer products have earned in the marketplace is attributable to the singular
creative genius of Ralph Lauren. The PRL POLO Marks in the fragrance category
evoke the image of a sophisticated, aspirational lifestyle. For example, videos used
to advertise and promote the PRL Parties POLO fragrances feature yachts, vintage
cars, and impeccably dressed young men and women attending functions at
country estates. (A-840:13-842:24, A-845:3-847:6.) This advertising is intended
to capture the different worlds of the Polo man and inspire notions of winning,
seduction, adventure, and celebrity. (A-842:17-24.) Though a polo match on
occasion flashes in the backdrop for these commercials, Mr. Cummings acerbically
observed that what was shown in the advertising for the PRL Parties fragrances
Case: 12-1346 Document: 77 Page: 23 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
24/43
NY01\MarcT\1596875.21 18
bore no resemblance to the sport of polo he knew. (A-986:20-987:3.) But that is
precisely the point: the advertising promoting POLO fragrances is not intended to
evoke an actual polo match, but rather the ethereal and sophisticated world of
Ralph Lauren.
The success of the efforts of the PRL Parties to create an association
in the minds of prospective purchasers between their POLO fragrances and an
aspirational, sophisticated lifestyle is confirmed by evidence showing consumers
associate fragrances sold under the PRL POLO Marks not with the sport of polo
itself, but rather with subjective notions, concepts, and aspirations drawn from the
world of Ralph Lauren, such as Classic, Quality, American, Sporty,
Happiness, and Confident. (A-2571.) If USPA, which purportedly wants to
create its own entirely different brand image based solely on the sport of polo for
its licensed products, were allowed to continue selling fragrances under a
confusingly similar mark, the publics perception of fragrances bearing the PRL
POLO Mark would be outside of PRLs control.
The USPA Parties make the straw man argument that the PRL Parties
loss of control over the goodwill and reputation of the PRL POLO Marks as
applied to fragrances is not irreparable harm because the USPA Parties have used
their Double Horsemen Mark in connection with apparel without evidence of
loss of control of the marks by either party. (USPA Br. at 49.) This argument is
Case: 12-1346 Document: 77 Page: 24 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
25/43
NY01\MarcT\1596875.21 19
fallacious on several grounds. USPA lumps together a number of different
mounted polo player logos under the term Double Horsemen Mark. This
terminology deliberately obfuscates the differences in these various logos and the
word and design elements used in conjunction with them. For instance, in the prior
litigation, the jury concluded that USPAs use of three versions of Double
Horsemen logos on apparel was not likely to confuse or mislead prospective
purchasers into believing USPAs apparel items came from or were approved by
PRL. A fourth was held to be an infringement. Whether or not actual customer
confusion arises from the sale of apparel bearing the USPA marks that were held to
be non-infringing when used on apparel is irrelevant to the question of irreparable
harm in the present case where likely confusion has been found arising out of the
USPA Parties use (on fragrances) of a Double Horsemen logo different in
presentation from any of those found to be non-infringing when used on apparel.
The USPA Parties try to buttress this flawed argument by contending
that designers commonly develop their own fragrances and market such fragrance
products in connection with apparel. (USPA Br. at 14.) However, USPA is not a
fashion designer, but rather the governing body for a small sport, rendering the
premise of this argument also false. (A-917:3-25.) Mr. Cummings, who is in
charge of the USPAs licensing program, has no background in fashion,
fragrances, or advertising and promoting designer products. (A-1086:20-1088:2.)
Case: 12-1346 Document: 77 Page: 25 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
26/43
NY01\MarcT\1596875.21 20
Moreover, Mr. Cummings conceded that he was unaware of whether other major
athletic leagues, such as Major League Baseball, the National Football League, and
the National Hockey League, licensed their marks for use on fragrances. (A-
1038:8-1039:1.)
Perhaps more germanely, there has been a finding of a likelihood of
confusion between the PRL POLO Marks and USPAs Double Horsemen Mark
as applied to fragrances. As a consequence of this finding, the carefully cultivated
image, reputation, and invaluable goodwill represented and symbolized by the PRL
POLO Marks would no longer be exclusively in PRLs hands if the USPA Parties
were allowed to continue to sell fragrances under their confusingly similar Double
Horsemen Mark. The scent of USPAs fragrance, the presentation, the packaging,
and the commercial impression created by USPA, or more likely its licensee,3
would not and could not be the same as that of Ralph Lauren. A consumer who
mistakenly purchases a USPA fragrance or designer product believing it originated
with PRL will expect but not receive the brand promise that is embodied in
the PRL POLO Marks. This results in damage to the reputation and goodwill
owned by PRL and symbolized by the PRL POLO Marks, a harm that cannot be
3 It appears from the record that USPA has, at best, limited control over itsown licensee, who would not inform USPA of the identity of the consultantit had retained to design and develop the fragrance product (A-1051:15-1053:7), or even who produced the fragrance product (A:1089:3-10).
Case: 12-1346 Document: 77 Page: 26 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
27/43
NY01\MarcT\1596875.21 21
remedied by monetary damages. (See Darsses Dep. at 187:8-20 admitted at A-
1222:2-13.)
The district court on remand in eBay emphasized that the inadequacy
of any available legal remedy is intimately related to and overlaps with the
existence of irreparable harm, and concluded that there, damages existed as an
adequate remedy. MercExchange, 500 F. Supp. 2d at 582. In contrast, here, there
is no adequate legal remedy the extent of reputational harm and damage to the
goodwill of PRL would, as a practical matter, be impossible to prove and measure
in dollars and cents, which is itself sufficient proof of irreparable harm to warrant
issuance of an injunction. See SPA-58;New York City Triathlon,704 F. Supp. 2d
at 343; Omega Importing Corp. v. Petri-Kine Camera Co., 451 F.2d 1190, 1195
(2d Cir. 1971). Moreover, trademark infringement is a continuing offense and the
PRL Parties have no remedy against this continuing violation of their rights other
than injunctive relief, since, unlike in the eBay case, monetary damages are not
available.
The USPA Parties attempts to distinguish theNew York City
Triathlon and Pretty Girl cases cited by the District Court are futile. (USPA Br. at
51.) Their arguments about the supposedly differing channels of distribution and
price points for fragrances bearing the PRL POLO Marks and fragrances bearing
the infringing Double Horsemen logo are meritless. This trade channels point is
Case: 12-1346 Document: 77 Page: 27 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
28/43
NY01\MarcT\1596875.21 22
properly considered as part of the Polaroidanalysis of likely confusion, and is
irrelevant to the existence of irreparable harm. Moreover, the customer base for
the PRL Parties POLO fragrances is not the same as the customer case for PRL
apparel. (A-814:20-815:3; Darsses Dep. 192:22-193:21, admitted at A-1222:2-13.)
The PRL Parties POLO fragrances are sold in much broader channels to a broader
customer base than many of PRLs POLO apparel items. (Darsses Dep. at 103:16-
23, admitted at A-1222:2-13; A-814:20-815:3; A-824:21-825:17.) Furthermore,
even if the PRL Parties do not target mid-tier stores as the preferred channels of
distribution for POLO fragrances, those fragrances still may be obtained and sold
by mid-tier department stores and other perfume outlets. (A-825:4-10.) Both
USPA fragrances and POLO fragrances may be purchased on the Internet from
online merchants. (A-826:17-24; A-856:19-857:1; A-1065:22-25.) Finally,
contrary to the USPA Parties assertion, there was no large amount of wholesale
sales of USPAs fragrance. (USPA Br. at 51.) Total sales of USPAs fragrance
amounted to 10,000 units, and those sales were made to only one wholesaler other
than USPAs own master licensee. (A-1057:11-15; A-1060:9-22; A-1001:20-
1002:7.)
In the present case, the infringement was cut off in its incipiency, as
USPA voluntarily agreed to an order to cease selling its fragrances bearing the
Case: 12-1346 Document: 77 Page: 28 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
29/43
NY01\MarcT\1596875.21 23
infringing Double Horsemen logo at an early stage. 4 (DI 24; A-1057:16-25.)
However, for purposes of evaluating irreparable harm, it does not matter precisely
where USPA may sell fragrances bearing the infringing Double Horsemen logo or
how many potential customers for the PRL Parties POLO fragrances were
exposed to USPAs infringing fragrance product. The exact magnitude of the
irreparable harm is of no import. As long as there is any irreparable harm,
injunctive relief is appropriate. See Paulsson Geophysical Servs., Inc. v. Sigmar
529 F.3d 303, 312 (5th Cir. 2008) (quotingEnter. Intl, Inc. v. Corporacion Estatal
Petrolera Ecuatroiana, 762 F.2d 464, 472-73 (5th Cir. 1985)) (Federal courts
have long recognized that, when the threatened harm is more than de minimis, it is
not so much the magnitude but the irreparability that counts for purposes of a[n]
injunction .).
USPAs reliance on Grout Shield Distributors, LLC v. Elio E. Salvo,
Inc., 824 F. Supp. 2d 389 (E.D.N.Y. 2011), is misplaced. In Grout Shield, the
court found the plaintiff had failed to demonstrate a likelihood of success on the
merits at the preliminary injunction stage. Given the finding that plaintiff was
unlikely to prove a likelihood of consumer confusion at trial, the finding that the
plaintiff also failed to show irreparable harm is hardly remarkable. Id. at 403. The
4 The USPA Parties declaratory judgment complaint alleged that they had notlaunched a fragrance product, and, indeed, claimed that their licensee wasnot able to sell and distribute fragrance products due to fears of litigationwith PRL. (A-30 44). This proved to be incorrect.
Case: 12-1346 Document: 77 Page: 29 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
30/43
NY01\MarcT\1596875.21 24
irreparable injury here, where likely confusion was found to exist at trial, stems
from letting the USPA Parties control the carefully cultivated image and public
perception that PRL developed for the PRL POLO Marks, for which no adequate
legal remedy exists. In Grout Shield, the court noted that the plaintiff delayed
almost two years in bringing a preliminary injunction motion, during which the
purportedly infringing products remained on the market. Id. at 403. This has no
relevance to issuance of the permanent injunction here, as the PRL Parties
promptly sought injunctive relief and the USPA Parties agreed, at an early stage, to
refrain from sales of their product.
In sum, then, irreparable harm is adequately proven here. The court
below explicitly did not rely on a presumption of irreparable harm, and evidence of
such harm appears in the record. If the USPA Parties are permitted to continue
selling their fragrances under a mark confusingly similar to the PRL POLO Marks,
the goodwill in those marks, which rightfully belongs to PRL, will become subject
to the whims of USPA and its licensees. This sort of harm to reputation and
goodwill has repeatedly been held to be irreparable and not redressable with
monetary damages. The USPA Parties cite no case finding a lack of irreparable
harm once a likelihood of success has been established and the threatened harm is
to reputation.
Case: 12-1346 Document: 77 Page: 30 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
31/43
NY01\MarcT\1596875.21 25
B. The Injunction Fashioned by the District Court is Not An Abuseof Discretion
The USPA Parties argue that the breadth of the injunction entered
below is inconsistent with the District Courts findings. (USPA Br. at 53-55.) The
USPA Parties rely primarily on Starter Corp. v. Converse, Inc., 170 F.3d 286 (2d
Cir. 1999), to support their argument that this Court should vacate or modify the
District Courts injunction. The Starterholding turns on its unusual facts and
unique procedural posture. Converse sold sneakers and other athletic footwear
bearing a five-pointed star design (the Converse STAR Mark). Id. at 290.
Starter, beginning in 1971, without objection from Converse, sold athletic apparel
under (1) the STARTER house mark; (2) an S & STAR Design mark; and (3) a
composite mark containing the STARTER house mark and the S & STAR Design
(the STARTER STAR Marks). Id. When Starter tried to obtain a federal
registration of the STARTER and S & STAR Design marks for use on apparel and
shoes, Converse opposed the application. Id. In 1990, a settlement agreement was
entered allowing registration of the name STARTER as a mark for footwear, but
excluding footwear from the registration for the S STAR Design mark. Id. A
cover letter to the 1990 settlement agreement from Starter stated that Starter was
not using a star logo on shoes or sneakers, and has no plans for doing so. Id.
Five years later, Starter changed its mind about using the STARTER
STAR Marks on footwear, Converse objected, and Starter brought a declaratory
Case: 12-1346 Document: 77 Page: 31 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
32/43
NY01\MarcT\1596875.21 26
judgment action. Id. at 290. Converse answered, asserting that Starter was
estopped from using the STARTER STAR Marks on athletic footwear, and
counterclaimed for trademark infringement. Id. Converse then dropped these
trademark infringement counterclaims before trial. Id. at 291. After a trial, the
jury returned four special verdicts essentially finding that Starters use of the
STARTER STAR Marks for athletic footwear would be likely to cause
confusion and that Starter was estopped from using those marks on athletic
footwear. Id. During the court proceedings, Converse admitted it had no objection
to the use of the STARTER STAR Marks on hiking shoes. Id. at 300. The court
then, sua sponte, entered an injunction barring Starter from using the STARTER
STAR Marks either alone or in combination with any other words or designs, on
footwear or in connection with the advertising, promotion, packaging, display,
offer for sale or sale of footwear. Id.
Starter successfully objected to the scope of the injunction because it
prohibited the use of the STARTER STAR Marks on all footwear even though
Converse had made judicial admissions that Starters use of the STARTER STAR
Marks on hiking shoes was not at issue, that Converse had no stake in the market
for hiking shoes, and that the usage of the STARTER STAR Marks on hiking
shoes was unlikely to cause consumer confusion. In short, the injunction was
Case: 12-1346 Document: 77 Page: 32 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
33/43
NY01\MarcT\1596875.21 27
overly broad as it unnecessarily prohibited a trademark usage on hiking shoes that
Converse had conceded would not confuse consumers.
The Starterholding has no application here based on the different
record evidence developed below. Here, unlike in Starter, the District Court
fashioned an injunction with terms the District Court deemed reasonable to prevent
future violations of PRLs rights in the registered PRL POLO Marks. See 15
U.S.C. 1116(a) (granting court power to enter injunctions to prevent the
violation of any right of the registrant of a mark). In Starter, there also was no
history of litigation involving the parties. Here, USPA has three times been found
to have infringed the PRL POLO Marks, and a broad injunction against such a
repeat infringer is appropriate to protect PRL from reputational injury and
consumers from likely confusion. This Court pointedly observed in PRL USA
Holdings that [a]n obligation on the part of a previously adjudicated infringer to
maintain a safe distance from infringing the plaintiffs marks has been found to
serve a useful purpose in fashioning injunctions based on a finding of
infringement. 520 F.3d at 117. Other courts have likewise held that a broad
injunction in these circumstances is necessary so as to avoid, rather than invite, still
further litigation. See, e.g., Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423,
1432 (7th Cir. 1985) (injunction may require party to choose a distinctively
different mark rather than to hew so close to the line that the parties must
Case: 12-1346 Document: 77 Page: 33 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
34/43
NY01\MarcT\1596875.21 28
interminably return to court to haggle about every mark); Perry Knitting Co. v.
Meyers, 120 F. Supp. 880, 885 (S.D.N.Y. 1954) (If defendants own deliberate
and illegal acts now require a broad injunction to completely bar the use of the
mark and name Mighty Mite in the field of infants and childrens wearing apparel,
defendants have but themselves to blame.). The injunction here was issued in an
effort to draw a clear line requiring the USPA Parties to choose a mark
distinctively different from the PRL POLO Marks for their goods in order to avoid
consumer confusion and avoid future litigation. Especially given the extensive
history of litigation between the parties, the District Courts exercise of its
discretion to fashion a broad injunction is entirely justifiable. Nothing in the
injunction prevents the USPA Parties from licensing the sale of products, including
fragrances, provided that they do so under distinctive marks of their own devising.
Courts fashioning trademark injunctions are often obliged to paint the
prohibitions contained in those injunctions with broad, overlapping strokes to serve
the Lanham Acts twin purposes of avoiding likelihood of consumer confusion and
securing the reputation and goodwill of the owner of the infringed trademarks. For
example, inRegister.com, Inc. v. Verio, Inc., 356 F.3d 393, 397-98 (2d Cir. 2004),
the Second Circuit affirmed the district courts injunction, which barred defendant
from, inter alia: (1) [u]sing or causing to be used plaintiffs mark or any other
designation similar thereto in connection with the advertising, marketing, or
Case: 12-1346 Document: 77 Page: 34 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
35/43
NY01\MarcT\1596875.21 29
promotion of [defendant] and/or any of [defendants] services and (2) from
[r]epresenting, or committing any act which is calculated to or is likely to cause
third parties to believe that [defendant] and/or [defendants] services are sponsored
by, or have the endorsement or approval of [plaintiff.] Similarly, inEspinoza v.
Allen Imports & Trade Corp., 100 F.3d 942 (table), No. 95-7531, 1996 WL 19142,
at *2-3 (2d Cir. 1996), the Second Circuit affirmed an injunction enjoining
defendant from, inter alia: (1) using plaintiffs mark, design, or signature in the
sale of its products; (2) using the words Metabolic or Harmonizer to refer to
any of its products; (3) representing that it is the owner of [plaintiffs] mark or
design; and (4) engaging in any other advertising attempting to take
advantage of [plaintiffs] goodwill. The broad injunctions inRegister.com and
Espinoza are not isolated examples. See also Coach, Inc. v. OBrien, No. 10 Civ.
6071 (JPO) (JCL), 2012 WL 1255276, at *4-5 (S.D.N.Y. Apr. 13, 2012) (entering
injunction against use of mark or colorable imitation thereof on broad range of
goods and services after finding trademark infringement). Indeed, the 1984 Order,
which was not appealed from, likewise enjoined the USPA Parties from using any
name or mark or symbol which is confusingly similar to PRLs marks, in
connection with the sale or offering for sale of any goods or the rendering of any
services. (A-1590 8(a).)
Case: 12-1346 Document: 77 Page: 35 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
36/43
NY01\MarcT\1596875.21 30
The USPA Parties argue disingenuously that terms of the injunction
conflict with their legitimate and recognized rights to use marks related to the
sport of polo. (USPA Br. at 55.) This argument omits a necessary qualifier the
USPA Parties right to use marks related to the sport of polo is limited to those
marks that are distinctly different from the PRL POLO Marks. The USPA Parties
have been enjoined in the past from using logos consisting of a single mounted
polo player and of two mounted polo players, as well as from displaying the word
Polo prominently in a trademark manner.5 The argument that the injunction
issued here somehow affects the USPA Parties trademark rights with respect to
apparel that were established in prior litigation between them and PRL is similarly
a red herring. In that prior litigation, the jury concluded that the USPA Parties use
of three particular Double Horsemen logos on apparel did not infringe PRLs rights
stemming from the prior use of the PRL POLO Marks for the same items. Under
the doctrines of collateral estoppeland res judicata, the Double Horsemen logos
litigated in that case have been conclusively established as being neither colorable
imitations of, nor confusingly similar to, the PRL POLO Marks when used in
connection with the goods at issue in that case. See Uzdavines v. Weeks Marine,
Inc., 418 F.3d 138, 146 (2d Cir. 2005) (Collateral estoppel, or issue preclusion,
applies where: (1) the identical issue was raised in a previous proceeding; (2) the
5 The use of polo in a non-trademark display to refer to the sport of polo is ageneric usage, and so free to all.
Case: 12-1346 Document: 77 Page: 36 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
37/43
NY01\MarcT\1596875.21 31
issue was actually litigated and decided in the previous proceeding; (3) the party
had a full and fair opportunity to litigate the issue; and (4) the resolution of the
issue was necessary to support a valid and final judgment on the merits. (internal
citations omitted)); Esquire Trade & Fin., Inc. v. CBQ, Inc., 562 F.3d 516, 520 (2d
Cir. 2009) (The doctrine ofres judicata bars later litigation if an earlier decision
was (1) a final judgment on the merits, (2) by a court of competent jurisdiction, (3)
in a case involving the same parties or their privies, and (4) involving the same
cause of action. (internal quotations and citation omitted));Maharaj v.
Bankamerica Corp., 128 F.3d 94, 97 (2d Cir. 1997) (a final judgment on the
merits of an action precludes the parties or their privies from relitigating [][claims]
that were or could have been raised in that action (internal quotations, alterations,
and citation omitted)).
The injunction entered below, therefore, cannot possibly conflict with
the USPA Parties adjudicated trademark rights as PRL is precluded from future
court or administrative proceedings challenging those adjudicated rights. What is
also indisputable is that the question of whether USPAs various Double Horsemen
logos were colorable imitations of, or confusingly similar to, the PRL POLO Marks
when applied to fragrances or other designer products was deliberately left for later
resolution by the parties in that prior litigation. (A-2232-2237; A-1095:23-
1097:11.)
Case: 12-1346 Document: 77 Page: 37 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
38/43
NY01\MarcT\1596875.21 32
The USPA Parties further argue that the injunction as written creates
uncertainty and forces them into the position of having to guess on pain of
contempt at what conduct is proscribed. (USPA Br. at 58.) On the contrary, the
terms of the injunction Judge Sweet entered are clear. The USPA Parties are
prohibited from, among other things, use of the image of one or more mounted
polo players, that constitutes a colorable imitation of or is confusingly similar to
PRLs Polo Player Logo . . . or POLO word mark in connection with the sale or
offering for sale of any goods or rendering of any services (SPA-66 3(c)), and/or
any symbol, logo, trade name, trademark, or trade dress which is calculated to or
has the effect of representing that the products or services of or licensed by the
USPA Parties are associated with, sponsored, endorsed, or authorized by, or are in
any way connected or associated with the PRL Parties, for any commercial
purpose whatsoever (SPA-66 3(d)). Courts have regularly found such language
to be clear and unambiguous. See, e.g., GMA Accessories, Inc. v. Eminent, Inc.,
No. 07 Civ. 3219 (LTS) (DF), 2008 WL 2355826, at *2-4 (S.D.N.Y. May 29,
2008);Bear U.S.A., Inc. v. Kim, 71 F. Supp. 2d 237, 246-48 (S.D.N.Y. 1999);
Benham Jewelry Corp. v. Aron Basha Corp., No. 97 Civ. 3841 (RWS), 1997 WL
639038, at *2 (S.D.N.Y. Oct. 15, 1997) (all rejecting challenges that similarly
worded injunctions were not adequately clear). Indeed, an injunction does not
require a torrent of words when more words would not produce more
Case: 12-1346 Document: 77 Page: 38 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
39/43
NY01\MarcT\1596875.21 33
enlightenment about what is forbidden. Scandia Down, 772 F.2d at 1432. Here,
on a fair reading, the words of the injunction are plain and unambiguous.
Finally, the cases relied on by the USPA Parties in support of their
overbreadth argument are all distinguishable. In Patsys Brand, Inc. v. I.O.B.
Realty, Inc., 317 F.3d 209 (2d Cir. 2003), this Court affirmed the district courts
finding of infringement and issuance of an injunction, but modified the injunction
by deleting provisions which mandated (i) the cancellation of defendants
registered trademark for restaurant services, and (ii) that the defendants change the
name of their restaurant. Id. at 221. Nonetheless, the Court in Patsys Brand
rejected the defendants objection to the terms of the injunction covering not only
pasta sauce, the specific product at issue in the case, but also all packaged food
products. Id. at 220-21. In much the same manner, the injunction entered by the
District Court here was not required to be limited to solely fragrance products.
Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733 (2d Cir. 1994) is
likewise distinguishable. The Court there, while affirming a finding of
infringement, modified the permanent injunction granted by the district court on
several grounds, the majority of which are irrelevant in the present case, such as
modifying the injunction to expressly provide that it did not forbid use of the mark
BAYER overseas or in a non-commercial fashion. Id. at 744-750. While the
Court did find that a provision of the injunction enjoining the defendant from
Case: 12-1346 Document: 77 Page: 39 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
40/43
NY01\MarcT\1596875.21 34
violating any of [plaintiffs] rights in the trademark and trade name BAYER
under the Lanham Trademark Act was inadequately clear, the Court specifically
noted that an injunction that follows the language of the statute at issue may be
appropriate in some cases where the context clarifies the scope of the injunction.
Id. at 748 & n.10. The injunction in the present case is not a simple directive to
obey the Lanham Act but instead prohibits the use of colorable imitations of or
marks confusingly similar to specific PRL POLO Marks. As noted above, such
language has regularly been found to be adequately specific.
The USPA Parties also cite toAronowitz v. Health-Chem Corp., 513
F.3d 1229 (11th Cir. 2008), an Eleventh Circuit decision not binding on this Court.
InAronowitz, Aronowitz was enjoined from using HEALTH-CHEM alone, while
still having the right to use the mark HEALTH-CHEM DIAGNOSTICS in
connection with limited goods under a license agreement. Id. at 1235-36. As such,
the court determined that the familiar boilerplate language or any other marks
similar to Defendants trademark rendered the injunction inappropriately broad,
as it could effectively overrule the license agreement between the parties. Id. at
1242. Here, as outlined above, the injunction cannot alter the USPA Parties
rights, which are established not under a private license, but by court decisions that
are final and preclude PRL from ever again raising a court challenge.
Case: 12-1346 Document: 77 Page: 40 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
41/43
NY01\MarcT\1596875.21 35
Nor does Times Mirror Magazines, Inc. v. Field & Stream Licenses
Co., 294 F.3d 383 (2d Cir. 2002), support the USPA Parties contentions. There,
the Court had no reason to engage in a trademark analysis, expressly holding that
the rights of the parties to use the mark in connection with the goods at issue in
this lawsuit are defined by the agreements rather than by any residual trademark
right. Id. at 391. Here, the issues litigated were under the Lanham Act, not under
any contractual right, and the parties rights are derived from the Lanham Act, not
from any agreement between them.
The injunction here was entered after careful consideration of the
evidence presented below and was fashioned to be as broad as the wrong corrected
the USPA Parties confusion of consumers by the use of marks that colorably
imitate or are confusingly similar to the PRL POLO Marks. The injunction issued
does not prevent the USPA Parties from having a licensing program with a
fragrance product or any product. The USPA Parties simply must brand any
such products with marks that are distinctive from the PRL POLO Marks. The
issuance of such an injunction was clearly within the District Courts discretion.
Case: 12-1346 Document: 77 Page: 41 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
42/43
NY01\MarcT\1596875.21 36
VII. CONCLUSIONFor the foregoing reasons and the reasons stated in LOral USA,
Inc.s Brief, the appellees respectfully request that the Court affirm the judgment
and permanent injunction entered by the District Court in its entirety.
Dated: New York, New York Respectfully Submitted,October 16, 2012
By:John M. CallagyWilliam R. GoldenAndrea L. CalvarusoMatthew D. Marcotte
KELLEY DRYE & WARREN LLP101 Park AvenueNew York, New York 10178Telephone: (212) 808-7800Facsimile: (212) 808-7897
Attorneys for PRL USA Holdings, Inc.
Case: 12-1346 Document: 77 Page: 42 10/16/2012 747869 43
-
7/31/2019 U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren Brief).PDF
43/43
CERTIFICATE OF COMPLIANCE
WITH TYPE-VOLUME LIMITATION, TYPEFACE
REQUIREMENTS AND TYPE STYLE REQUIREMENTS
This brief complies with the type-volume limitation of Fed. R. App. P.
32(a)(7)(B) because this brief contains 8,200 words, excluding the parts of the
brief exempted by Fed. R. App. P. 32(a)(7)(B)(iii).
This brief complies with the typeface requirements of Fed. R. App. P.
32(a)(5) and the type style requirements of Fed. R. App. P. 32 (a)(6) because this
brief has been prepared in a proportionately spaced typeface using Microsoft
Office Word in 14-point Times New Roman font.
Dated: New York, New York Respectfully Submitted,October 16, 2012
By:John M. Callagy
William R. GoldenAndrea L. CalvarusoMatthew D. Marcotte
KELLEY DRYE & WARREN LLP101 Park AvenueNew York, New York 10178Telephone: (212) 808-7800Facsimile: (212) 808-7897
Attorneys for PRL USA Holdings, Inc.
Case: 12-1346 Document: 77 Page: 43 10/16/2012 747869 43