UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
No. 99-20754
WESTCHESTER MEDIA; NAVASOTA HOLDING CO., L.L.C.
Plaintiffs/Counter-Defendants/Appellants,
v.
PRL USA HOLDINGS, INC.; POLO RALPH LAUREN CORPORATION d/b/a
Delaware Polo Ralph Lauren Corporation
Defendants/Counter-Claimants/Appellees.
Appeal from the United States District Court for the
Southern District of Texas, Houston Division
June 27, 2000
Before JONES, DeMOSS, and DENNIS, Circuit Judges.
EDITH H. JONES, Circuit Judge:
Appellants Westchester Media and Navasota Holding Co.
(“Westchester”) appeal the judgment finding that their use of the
mark “POLO” to title a magazine infringed marks for products sold
by Polo Ralph Lauren entities (“PRL”). Two features distinguish
this case from run of the mill trademark infringement claims. PRL
is attempting to prevent Westchester from titling a magazine even
though PRL itself sells no literary products. And Westchester
acquired its “POLO” mark from and, at least in part for the
continuation of, the official publication of the U.S. Polo
Association. This Court agrees with the magistrate judge’s finding
of trademark infringement but concludes that the court may have
erred in permanently enjoining Appellants from using the mark
“Polo” for their lifestyle magazine. We remand for further
consideration of remedy, in particular for reconsideration of
disclaimer relief.
I.
FACTUAL & PROCEDURAL HISTORY
PRL is a fashion and design business founded in 1967 by
Ralph Lauren. Lauren has built PRL into a multi-billion dollar
company that sells wearing apparel, accessories, home furnishings,
and fragrances. In the last four years alone, PRL sold
approximately four billion dollars wholesale value of products
bearing various “Polo” trademarks. PRL advertises extensively in
newspapers, trade publications, and magazines. Articles about
PRL’s products and Ralph Lauren himself have appeared in magazines
as diverse as Time, Financial World, Town & Country, and Vanity
Fair.
PRL has registered a number of trademarks with the Patent
and Trademark Office (“PTO”) that include the word POLO. We will
refer to these trademarks collectively as the “Polo Trademarks.”
PRL does not possess a POLO trademark for use on a publication.
All the Polo Trademarks remain in effect, and several have become
2
incontestable under the Lanham Act. 15 U.S.C. § 1065. PRL
contends that as a result of its thirty years of continuous and
extensive use of the Polo Trademarks, these marks have become
famous, and the word POLO has come to be closely identified with
both Ralph Lauren and PRL.
Westchester Media Company publishes magazines and, until
the summer of 1997, produced only specialty magazines such as
“Cowboys & Indians.” Westchester’s general partner is Navasota,
whose sole shareholder is John B. Goodman. An avid polo player,
Goodman is captain of a top-ranked polo team that has represented
the United States in the international Westchester Cup tournament.
He has been a member of the United States Polo Association (“USPA”)
since 1989 and serves on the boards of two USPA committees. He is
also on the board of directors of the Houston Polo Club, of which
he was president in 1994 and 1995.
In May 1997, Westchester Media and Navasota Holding
Company purchased the assets of POLO magazine, including its
trademarks, from Fleet Street Publishing Company and its owner, Ami
Shinitzky. Those trademark registrations were granted to Shinitzky
and Fleet Street in 1992 and read as follows:
(1) Registration No. 1,691,432 for “POLO”, a “magazine on
the subject of equestrian sports and lifestyles”;
3
(2) Registration No. 1,677,088 for a “horse and rider
design” for “magazine publication services”, and the
design which appears on the masthead of POLO magazine;
and
(3) Registration No. 1,710,894 for “POLO Life”, a
“magazine dealing with equestrian sports and lifestyles.”
The history of Ami Shinitzky’s POLO Magazine is critical
to this dispute. Shinitzky, a polo enthusiast and USPA member,
founded POLO Magazine (the “Old POLO Magazine”) in 1975. Until it
was sold in 1997, the Old POLO Magazine was a special interest
magazine that provided, in its own words, “an insider’s view of the
sport of polo and the international society and . . . traditions
that surround it.” In an August 1997 article on the history of the
Old POLO Magazine, Shinitzky wrote that the magazine “hit its
stride with a formulaic mixture of game coverage, personality and
club profiles, rules, opinions, history and how-to and horsemanship
articles.” The magazine’s advertising base was equally equine-
focused, consisting primarily of horse medicines, equestrian
products, and polo equipment. The USPA endorsed the Old POLO
Magazine as its “official publication,” and most of the magazine’s
7,000 subscribers were members of the USPA who received the
magazine as a benefit of membership.
4
Shinitzky’s direction of Old POLO Magazine was marked by
a peaceful coexistence with PRL. Soon after the magazine’s
founding, Shinitzky interviewed Ralph Lauren for the magazine. In
the following years, PRL frequently advertised in the magazine, as
did several other luxury goods manufacturers. At no point during
Old POLO Magazine’s existence did PRL complain about the magazine’s
use of the “Polo” mark.
Beginning in 1989, Shinitzky started publishing issues of
the Old POLO Magazine with expanded “lifestyle” content under the
title POLO Life. According to Westchester, issues with expanded
lifestyle content were published in 1989, 1990, 1992, 1993, 1994,
1995, and early 1997. Describing one of these issues in 1989, the
trade journal Ad Week wrote, “[Shinitzky’s magazine bears] a
striking resemblance to one of Lauren’s ads. It’s loaded with
pictures of upscale people having a good time at country clubs.
Shinitzky hopes to attract advertisers that want to reach just that
crowd.” PRL was aware of the Ad Week article but continued to
advertise in the Old POLO Magazine.
Ad Week was not the only entity to find similarity
between the Old Polo Magazine and PRL. According to Westchester,
potential advertisers in Old POLO Magazine frequently asked whether
there was some connection between Old POLO Magazine and PRL.
5
In 1992, Shinitzky obtained federal registration for POLO
covering a “magazine on the subject of equestrian sports and
lifestyles.” In support of its application to the PTO, Fleet
Street submitted two 1989 issues of the Old POLO magazine, one of
which included a PRL advertisement. PRL filed no opposition to the
title or description of the magazine. Shinitzky offered to sell
the magazine and its registration to PRL in 1994 but received no
response. In April 1998, the federal registration received by
Shinitzky became incontestable.
In May 1997, Westchester purchased all assets of POLO
Magazine from Fleet Street for approximately $400,000. Despite the
Old POLO Magazine’s lackluster financial performance -- it lost
$1,400 in 1996 -- Westchester explained the purchase price by
pointing to the goodwill and history behind Fleet Street’s POLO
mark and to the access the magazine provided to personalities in
the world of polo. Westchester repeatedly testified that it bought
the magazine intending to “re-launch” it in an effort to expand
readership and broaden polo’s appeal. Despite Shinitzky’s attempt
during the purchase negotiations to link the magazine with “Ralph
Lauren’s spectacular achievement with the name Polo,” Westchester
denied at trial any intent to infringe PRL’s trademarks or to trade
on PRL’s reputation and goodwill.
6
After purchasing the Old POLO Magazine, Westchester “re-
launched” the magazine in October 1997 under the name of POLO (the
“New POLO Magazine”), while at the same time publishing a separate
magazine called “Polo Players Edition.” In contrast to Shinitzky’s
magazine, the new POLO Magazine carried the tagline “Adventure •
Elegance • Sport.” The re-launched magazine also changed its
target audience and distribution methods. Westchester purchased
the customer list from Neiman Marcus, one of PRL’s largest
retailers, and arranged for promotional materials for the New POLO
Magazine to be mailed to these customers. Westchester then sent a
free copy of the New POLO Magazine to almost one million Neiman
Marcus customers. In promotional materials sent to prospective
advertisers, Westchester wrote that the New POLO Magazine was “not
about the sport, but rather about an adventurous approach to living
life.” The promotional materials also explained that the new
magazine would be distributed not only to USPA members but also “on
newstands, at hotels, resorts, and clubs.” Westchester also chose
fashion model Claudia Schiffer to appear on the cover of its
inaugural issue. The previous year, Ms. Schiffer had been PRL’s
featured model in an extensive advertising campaign.
While re-making the image of POLO magazine, Westchester
tried to maintain the old magazine’s links with PRL. Shortly after
purchasing POLO magazine, Westchester contacted PRL and secured a
7
meeting with Elizabeth Morris, a PRL advertising executive. On
June 23, 1997, Westchester’s Reid Slaughter met with Morris and
made an advertising sales pitch. This pitch included two “mock-up”
covers of the New POLO Magazine, neither of which was ever used for
the New POLO Magazine. One cover depicted a horse, but Westchester
did not put a horse on its cover until more than a year after the
re-launch. Slaughter testified that Morris reacted positively to
his presentation. PRL, however, asserts that Morris made a clear
objection to the magazine’s title.
After this meeting, Westchester continued to lobby PRL
for advertising. In September 1997, PRL’s advertising agency
invited Westchester to “Magazine Week,” an event that allowed
select magazine “finalists” to pitch advertising deals to PRL.
This invitation was rescinded two days after it issued, and on
September 23, 1997, PRL formally objected to the title of the New
POLO Magazine.
In response, Westchester filed this action, seeking a
declaration that its use of the title “POLO” for its magazine on
“equestrian sports and lifestyles” does not infringe PRL’s “Polo”
mark. PRL asserted counterclaims for trademark infringement,
dilution and unfair competition under the Lanham Act and Texas law,
and sought injunctive relief. The parties stipulated that all
matters would be tried to a magistrate judge.
8
The magistrate judge first entered a preliminary
injunction and required Westchester to disseminate a “disclaimer
which states clearly that POLO Magazine has no affiliation,
sponsorship, or association with Ralph Lauren, or any Polo Ralph
Lauren entities.” Westchester was ordered to display the
disclaimer in a prominent place on the magazine’s cover, on its
masthead and on the magazine’s table of contents page. In
addition, it was required to notify subscribers and advertisers
that its magazine is not affiliated with PRL, and to publish the
disclaimer on all “promotional materials.”
Following trial, the magistrate judge issued a lengthy
decision finding that Westchester had violated the Lanham Act by
infringing upon PRL’s “Polo” trademark. In consequence, she issued
a permanent injunction essentially requiring Westchester to cease
and desist publishing New POLO Magazine under the title “POLO”.
Westchester appealed, and this Court stayed the permanent
injunction and reinstituted the disclaimer procedure pending the
appeal.
II.
DISCUSSION
Westchester appeals the finding of trademark infringement
and the denial of its defenses of laches, acquiescence, and
9
trademark incontestability. In addition, Westchester challenges
the magistrate judge’s analysis of PRL’s counterclaim under the
Federal Trademark Dilution Act (“FTDA”). Finally, Westchester
appeals the permanent unqualified injunction forbidding its use of
“POLO” to title its equestrian lifestyle magazine. We will
consider each issue in turn.
A. Trademark Infringement
1. General Principles
To prevail on its trademark infringement claim, PRL must
show that Westchester’s use of the “Polo” mark creates a likelihood
of confusion in the minds of potential consumers as to the “source,
affiliation, or sponsorship” of Westchester’s magazine. See Elvis
Presley Enters., Inc. v. Capece, 141 F.3d 188, 193 (5th Cir. 1998);
Society of Fin. Exam’rs v. National Ass’n of Certified Fraud
Exam’rs, Inc., 41 F.3d 223, 227 (5th Cir. 1995); see also 15 U.S.C.
§§ 1114(1), 1125(a)(1)(A).1 Likelihood of confusion is synonymous
with a probability of confusion, which is more than a mere
possibility of confusion. See Elvis Presley Enters., 141 F.3d at
193.
1
PRL also charged Westchester with unfair competition under Texas
common law. TEX. BUS. & COM. CODE § 16:29. Likelihood of confusion is also the
governing standard for PRL’s unfair competition claim. Blue Bell Bio-Medical v.
Cin-Bad, Inc., 864 F.2d 1253, 1261 (5th Cir. 1989). The analysis of PRL’s
federal claim thus controls disposition of PRL’s state law claim.
10
In determining whether a likelihood of confusion exists,
courts consider the following nonexhaustive list of factors: (1)
the type of mark allegedly infringed, (2) the similarity between
the two marks, (3) the similarity of the products or services, (4)
the identity of the retail outlets and purchasers, (5) the identity
of the advertising media used, (6) the defendant’s intent, and (7)
any evidence of actual confusion. See Pebble Beach Co. v. Tour 18
Ltd., 155 F.3d 526, 543 (5th Cir. 1998); Elvis Presley Enters., 141
F.3d at 194; Conan Properties, Inc. v. Conans Pizza, Inc., 752 F.2d
145, 149 (5th Cir. 1985). No single factor is dispositive, and a
finding of a likelihood of confusion does not require a positive
finding on a majority of these “digits of confusion.” See Conan
Properties, 752 F.2d at 150; Elvis Presley Enters., 141 F.3d at
194. The court is also free to consider other relevant factors in
determining whether a likelihood of confusion exists. See id. at
194.
In the usual Lanham Act case, the presence of a
likelihood of confusion disposes of the issue of infringement. But
this case is not so simple. PRL is not trying to enjoin a purely
commercial use of the “Polo” mark. Rather, it is trying to prevent
Westchester from using “Polo” as a title for a magazine. In so
doing, PRL’s infringement claim implicates the First Amendment
right to choose an appropriate title for literary works. See Sugar
11
Busters LLC v. Brennan, 177 F.3d 258, 269 n.7 (5th Cir.
1999)(noting a First Amendment interest in choosing an appropriate
book title); Twin Peaks Productions, Inc. v. Publications Int’l,
Ltd., 996 F.2d 1366, 1379 (2d Cir. 1993)(same).2
This case thus involves the tension between the
protection afforded by the Lanham Act to trademark owners and the
protection afforded by the First Amendment to expressive activity.
In Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the Second
Circuit ruled that this tension could not be resolved by allowing
the First Amendment to insulate titles of artistic works from
Lanham Act claims. See Rogers, 875 F.2d at 998. But neither could
courts ignore First Amendment concerns when enforcing the Lanham
Act. Id. Titles, according to the Rogers court, combine both
artistic expression and commercial promotion, and they consequently
require more First Amendment protection than the labeling of
ordinary commercial products. Id. Finding that “overextension of
Lanham Act restrictions in the area of titles might intrude on
First Amendment values”, id., the court concluded that it “must
construe the Lanham Act narrowly to avoid such a conflict.” Id.,
2
We reject PRL’s argument that book titles and magazine titles are
distinguishable for First Amendment purposes. While it is true that both Sugar
Busters and Twin Peaks involved book titles, book titles belong to the category
of literary titles, a category which also includes magazine titles. See 2 J.
THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 10:1 (4th ed.
1998)[hereinafter MCCARTHY](explaining that the law of literary titles encompasses
magazine titles).
12
citing Silverman v. CBS, 870 F.2d 40, 48 (2d Cir. 1989); see also
Cliff’s Notes, Inc. v. Bantam Doubleday Dell Publ’g Group, Inc.,
886 F.2d 490, 494 (2d Cir. 1989).
Relying on Rogers, the Second Circuit has adopted the
following framework when a trademark is used by another for a valid
literary or artistic purpose: Literary titles do not violate the
Lanham Act “‘unless the title has no artistic relevance to the
underlying work whatsoever, or, if it has some artistic relevance,
unless the title explicitly misleads as to the source or the
content of the work.” Twin Peaks Productions, 996 F.2d at 1379,
quoting Rogers, 875 F.2d at 999; see also No Fear, Inc. v. Imagine
Films, Inc., 930 F.Supp. 1381, 1383 (D.C. Cal. 1995)(endorsing the
Rogers approach). To determine whether an artistically relevant
title misleads as to the source or content of the work, the Second
Circuit applies the likelihood of confusion test used in evaluating
standard trademark infringement claims. See Twin Peaks
Productions, 996 F.2d at 1379. However, the likelihood of
confusion must be “particularly compelling” to outweigh the First
Amendment interests at stake. Id. This Circuit has adopted the
Second Circuit’s approach:
Any finding that defendants’ book title is likely to
cause confusion with plaintiff’s book title must be
“particularly compelling” to outweigh defendants’ First
Amendment interest in choosing an appropriate book title
for their work.
13
Sugar Busters, 177 F.3d at 269 n.7, citing Twin Peaks Productions,
996 F.2d at 1379.
The magistrate judge’s finding of a likelihood of
confusion is in this circuit a finding of fact reviewed for clear
error. See Elvis Presley Enters., 141 F.3d at 196. Under the
clear error standard, we will reverse the district court only if we
have a “definite and firm conviction that a mistake has been
committed.” B.H. Bunn Co. v. AAA Replacement Parts Co., 451 F.2d
1254, 1260 (5th Cir. 1971)(internal quotation marks omitted).
2. Analysis
Westchester argues that the court improperly applied the
“particularly compelling” standard mandated by Sugar Busters.
Further asserting that the standard could not in any event be
satisfied on this record, Westchester challenges as clearly
erroneous the findings on several of the digits of confusion: that
Westchester intended to infringe upon PRL’s mark; that
Westchester’s and PRL’s products were similar because magazines are
within PRL’s “natural zone of expansion;” and that the 1997
relaunch of the New POLO Magazine resulted in increased actual
confusion. We consider each of these arguments in turn.
a. The Sugar Busters standard
Westchester argues that the trial court, improperly
applying the Sugar Busters standard, based the finding of liability
14
on simple likelihood of confusion rather than a “particularly
compelling” likelihood.3 In discussing First Amendment interests,
however, the magistrate judge explicitly held:
Accepting, . . . without necessarily deciding, that Sugar
Busters has ‘raised the bar’, in this circuit, in a
trademark analysis, and requires that ‘particularly
compelling’ circumstances exist before an injunction can
issue in view of a first amendment objection, the court
still finds such relief appropriate here.
Westchester Media Co., L.P. v. PRL USA Holdings, Inc., 1999 U.S.
Dist. LEXIS 12333, *177-78 (S.D.Tex. Aug. 4, 1999). The court then
recapitulated the findings which formed the basis for this
conclusion. Westchester would apparently require the court to
state in so many words that it found a particularly compelling
likelihood of confusion. But its argument is about the clarity
rather than the substance of the court’s opinion. The substance
followed Sugar Busters.
Westchester next argues that even if the Sugar Busters
standard is applied, there is insufficient evidence of a
“particularly compelling” likelihood of confusion. In support of
this argument, Westchester challenges several of the findings under
the digits of confusion analysis, hoping to deconstruct piecemeal
3
The magistrate judge did not decide the threshold matter whether
Westchester’s title bears some artistic relevance to the underlying magazine.
There can be no question on this point, however. Though the New POLO Magazine
contains articles on fashion and travel, it also contains articles specifically
related to polo. In each issue, sections entitled “The Blue Book” and “Through
the Monocle” report on polo tournaments, profile polo players and personalities,
and provide other polo-related information. Furthermore, the magazine is the
official publication of the USPA.
15
the ultimate finding of likelihood of confusion. Before
considering Westchester’s contentions, it is necessary to emphasize
that the “particularly compelling” standard applies to the ultimate
issue, not to the strength of the evidence on each of the
subsidiary digits of confusion. Twin Peaks so depicted the
standard: “[T]he finding of likelihood of confusion must be
particularly compelling . . . .” Twin Peaks, 996 F.2d at 1379; see
also Sugar Busters, 177 F.3d at 269 n.7.
b. Westchester’s intent
Westchester denies that, as the magistrate judge found,
it intentionally aligned itself with PRL to confuse the consuming
public as to the source of the New POLO Magazine.
An innocent intent in adopting a mark does not immunize
an intent to confuse in the actual use of the mark. See Elvis
Presley Enters., 141 F.3d at 203; see also RESTATEMENT (THIRD) OF UNFAIR
COMPETITION § 22 cmt. c (1995)[hereinafter RESTATEMENT]. In light of
Goodman’s history with and commitment to the sport of polo, the
magistrate judge did not find that Goodman purchased the “Polo”
mark with intent to trade on PRL’s reputation and goodwill.
See Westchester Media Co., 1999 U.S. Dist. LEXIS 12333, *58. The
court did, however, find that Westchester’s actual use of the
“Polo” mark evidenced an intent to trade on PRL’s reputation. The
magistrate judge exhaustively reviewed evidence -- magazine covers,
16
editorial and advertising content, and customer surveys -- showing
that the New POLO Magazine primarily covers affluent lifestyles,
fashion, and travel rather than the sport of polo. The evidence
also supports an inference that, in deciding to publish both Polo
Players Edition and the New POLO Magazine, Westchester was
attempting to segregate lifestyle content from technical polo
content in an attempt to trade on the lifestyle image already
projected by PRL’s “Polo” mark. Certainly, other explanations for
Westchester’s decision to publish two polo-related magazines are
possible. But in the absence of strong reasons to prefer those
alternative explanations -- none of which were found credible, see
id. at *60 -- we cannot say that the court’s characterization of
Westchester’s intent is clearly erroneous.
c. Similarity of Products and Services
Ralph Lauren publishes no magazine or periodical, but the
magistrate judge nonetheless found this digit of confusion in PRL’s
favor because magazines are within PRL’s “natural zone of
expansion.” See Westchester Media Co., 1999 U.S. Dist. LEXIS
12333, *46. Westchester challenges this finding. Similarity is a
close question, but we cannot say that the magistrate judge clearly
erred.
In general, “[t]he greater the similarity between
products and services, the greater the likelihood of confusion.”
17
Exxon Corp. v. Texas Motor Exch. of Houston, Inc., 628 F.2d 500,
505 (5th Cir. 1980). But direct competition between the parties’
products is not required in order to find a likelihood of
confusion. See Elvis Presley Enters., 141 F.3d at 202; see also 4
MCCARTHY §§ 24:13-14. When products or services are noncompeting,
the confusion at issue is one of sponsorship, affiliation, or
connection. See Elvis Presley Enters., 141 F.3d at 202.
The danger of affiliation or sponsorship confusion
increases when the junior user’s market is one into which the
senior user would naturally expand. See RESTATEMENT § 21(e) & cmt.
j. The actual intent of the senior user to expand is not
particularly probative for this purpose. See Elvis Presley
Enters., 141 F.3d at 202. Instead, consumer perception is the
controlling factor. “‘If consumers believe, even though falsely,
that the natural tendency of producers of the type of goods
marketed by the prior user is to expand into the market for the
type of goods marketed by the subsequent user, confusion may be
likely.’” Id., quoting RESTATEMENT § 21 cmt. j.
Following the applicable law, the court examined whether
the consuming public could believe there is an association between
PRL and the New POLO Magazine. PRL has a strong presence not only
in fashion marketing but across a spectrum of products. The New
POLO Magazine, with its emphasis on fashion, elegance, and affluent
18
lifestyles, appeals to the same markets in which PRL has a
widespread identity.4 Significantly, the noncompeting products of
PRL and Westchester have been marketed to consumers in the same
context (Neiman Marcus promotions). These facts led the court to
find that there was a likelihood that consumers would believe that
PRL is associated with New POLO Magazine.
Westchester dismisses the idea that magazines are a
natural zone of expansion for PRL by emphasizing that no fashion
designer has ever started a magazine. But whether PRL could ever
successfully publish a magazine is not the issue here; consumer
perception is the issue. This finding is not the court’s most
significant or unassailable one, but it is not clearly erroneous.
d. Evidence of Actual Confusion
Westchester argues clear error in the finding that the
1997 “relaunch” of New POLO Magazine resulted in an increase in
incremental confusion. In so doing, it is essentially challenging
the survey results submitted by PRL and upon which the magistrate
judge relied. See Westchester Media Co., 1999 U.S. Dist. LEXIS
12333, *96.
4
It is irrelevant to the questions of similarity or “natural zone of
expansion” that PRL advertises in magazines.
19
Westchester attacks PRL’s survey principally on grounds
that it used a faulty control.5 According to Westchester, PRL’s
survey was flawed because it did not distinguish between actionable
confusion produced by the New POLO Magazine and permissible
confusion attributable to the Old POLO Magazine. Westchester
argues that the survey should have used the Old POLO Magazine as a
control rather than Polo Players Edition. This would have
effectively isolated the variable at issue here, which is the
change in the look of the relaunched magazine, not the name. By
using Polo Players Edition as a control, another variable was
admitted -- the name of the magazine -- which meant that the one
variable at issue, the magazine’s new look, could not be isolated,
and the incremental confusion attributable solely to the magazine’s
new look could not be determined. In other words, some of the
incremental confusion could have been attributed to the different
names, Polo Players Edition and POLO.
Westchester’s argument makes sense, but it is not so
compelling as to produce clear error in the court’s reliance on
PRL’s survey for evidence of incremental confusion. This is
because the magistrate judge found that Polo Players Edition is the
continuation of Old POLO Magazine. It would have been preferable
for the PRL survey to use the Old POLO Magazine as a control. But
5
For a detailed explanation of how PRL’s survey worked, see
Westchester Media Co., 1999 U.S. Dist. LEXIS 12333, *88-91.
20
Polo Players Edition is not so different from the Old POLO Magazine
as to make it clearly erroneous to rely on PRL’s survey. In
addition, trademark law is concerned with the level of actual
confusion in the current marketplace. Consumers today are exposed
to Polo Players Edition, not the Old POLO Magazine. These two
magazines now define the difference between permissible and
actionable confusion.
d. Weighing the digits of confusion
Because we have found no clear error in the digits of
confusion challenged by Westchester, and because the magistrate
judge’s findings on the remaining digits were unchallenged, we must
conclude that a likelihood of confusion exists between New POLO
Magazine and the PRL marks.6
As has been discussed, Westchester’s First Amendment
interest in choosing a title for its magazine requires a
particularly compelling likelihood of confusion. Sugar Busters,
177 F.3d 269 n.7. This finding, too, is supported by the record.
Westchester’s New POLO Magazine and PRL’s products target the same
consumers and on occasion use the same retail outlets. The New
POLO Magazine’s emphasis on fashion, affluent lifestyle, and travel
6
Westchester left unchallenged: the type of mark infringed (strong),
the similarity between the two marks, the identity of the retail outlets and
purchasers, and the identity of the advertising media used. See Elvis Presley
Enters., 141 F.3d at 200 (accepting the district court’s findings on the digits
of confusion that were not challenged by the parties).
21
can plausibly lead consumers to believe that PRL is associated with
the New POLO Magazine. Buttressing these core findings is the
evidence of actual confusion, both anecdotal and survey-based, and
Westchester’s intent to trade on PRL’s goodwill and reputation.
Unless one of Westchester’s defenses prevails, the appellants have
infringed upon PRL’s marks.
B. Defenses
Westchester’s defenses are based on laches, acquiescence
and the incontestability of its trademark.
1. Laches
“Laches is commonly defined as an inexcusable delay that
results in prejudice to the defendant.” Conan Properties, 752 F.2d
at 153. Laches comprises three elements: (1) delay in asserting
one’s trademark rights, (2) lack of excuse for the delay, and (3)
undue prejudice to the alleged infringer caused by the delay.
Elvis Presley Enters., 141 F.3d at 205.
The trial court ruled that Westchester established none
of these elements. There was no delay because the New POLO
Magazine “is an entirely new product and different from the Old
POLO Magazine in most aspects,” a finding we have upheld. See
Westchester Media Co., 1999 U.S. Dist. LEXIS 12333, *196. PRL’s
long familiarity with the Old POLO Magazine -- in 1975, Ralph
Lauren granted Ami Shinitzky an exclusive interview for Old POLO
22
Magazine -- was therefore immaterial to its objections to the New
POLO Magazine. The court found that PRL registered its written
objections with Westchester at the latest in its cease and desist
letter of September 26, 1997, not an unreasonable amount of time
from the June meeting between Westchester’s then-publisher Reid
Slaughter and PRL’s Liz Morris. See id. at *195.
Westchester challenges the laches findings by repeatedly
pointing to its trademark registration for an “equestrian sports
and lifestyles” magazine, in effect since 1975, and noting that
both the old and the new POLO magazines fit this description. It
follows, according to Westchester, that if PRL ever had a claim
against a magazine titled “Polo”, it ripened in 1975 or at the time
of Ralph Lauren’s interview in the Old POLO Magazine, or no later
than 1989 when Shinitzky launched the first of his issues with
expanded lifestyle content. While it may be true that both the old
and new POLO magazines concern “equestrian sports and lifestyles”,
Westchester’s argument fails to crack the essential barrier to
relief -- the court’s finding that New POLO Magazine is not a
continuation of Old POLO Magazine but is in fact a different
entity.7
7
The magistrate judge also did not clearly err in dismissing
Westchester’s argument of undue prejudice -- in the amount of $1.3 million -- by
PRL’s delay in objecting to the New POLO Magazine. PRL cannot be held
responsible for Westchester’s investment prior to its learning about the planned
launch of the New POLO Magazine; any investment made by Westchester after PRL
objected to Westchester’s use of its trademark was made at Westchester’s risk.
23
2. Acquiescence
Westchester contends that PRL’s failure to object to its
relaunch efforts at the June 1997 meeting between Slaughter and
PRL’s Morris constituted an implicit assurance that induced
reliance. Conan Properties, 752 F.2d at 153. The argument is
unpersuasive, inasmuch as Westchester has not successfully
challenged the trial court’s finding that Westchester misled Morris
about the extent of the new venture. Under these circumstances,
PRL did not legally acquiesce in the use of the mark on New POLO
Magazine.
3. Incontestability
Westchester asserts that pursuant to § 33(b) of the
Lanham Act, its incontestable registration for the mark “Polo” on
or in connection with a “magazine on the subject of equestrian
sports and lifestyles” conclusively proves its right to publish the
New POLO Magazine. Westchester’s argument presumes, however, that
the registration it purchased covers New POLO Magazine.
Section 33(b) provides that an incontestable registration
is conclusive evidence of:
the exclusive right to use the mark on or in connection
with the goods or services specified in the affidavit
filed under the provisions of section 15.
15 U.S.C. § 1115(b). A mark becomes incontestable through five
years’ continuous use following federal registration and compliance
See Conan Properties, 752 F.2d at 151-52.
24
with statutory formalities. 15 U.S.C. § 1065. An incontestable
mark is subject to challenge only under limited circumstances
including the prior use defense of § 1065.8 The parties argue at
length over the relatively novel issue of the scope of PRL’s rights
as a prior user.9 It is unnecessary to address that issue,
however, because Westchester’s incontestability argument first runs
afoul of the finding that Old POLO and New POLO magazines are
different products. Hence, New POLO had not been published for the
statutory minimum five years when PRL challenged appellants’ use of
the mark.
Westchester contends that New POLO, like its predecessor,
is a “magazine on the subject of equestrian sports and lifestyles”.
As both magazines fit this literal description of the mark under
which they were registered, the mark is incontestable for “goods .
. . specified in the affidavit filed under . . . section 15.” Such
a literal application of § 1115 has some appeal, but it ignores the
district court’s finding that the two magazines are not the same
8
15 U.S.C. § 1115(b) lists eight defenses to an incontestable mark,
none of which applies here, and MCCARTHY identifies a few others. 5 MCCARTHY §
32:147.
9
Section 15 of the Lanham Act, 15 U.S.C. § 1065, specifies the prior
use defense, as it provides in pertinent part that a mark registered and
supported by the proper affidavits is incontestable
except to the extent, if any, to which the use of a mark registered
on the principal register infringes a valid right acquired under the
law of any State or Territory by use of a mark or trade name
continuing from a date prior to the date of the publication under
this chapter of such registered mark.
25
product. A federal registration does not create the trademark; the
trademark is acquired by use. See 3 MCCARTHY § 19:3; Volkswagenwerk
Aktiengesellschaft v. Wheeler, 814 F.2d 812, 819 (1st Cir. 1987).
The incontestable “Polo” mark was used to title a magazine about
the sport of polo, and cannot be transferred to a fundamentally
different magazine. Thus, the incontestability of the mark as
applied to Old POLO Magazine does not shield New POLO from attack.
C. The Federal Trademark Dilution Act
PRL alleges dilution of its “Polo” mark under 15 U.S.C.
§ 1125(c)(3), the Federal Trademark Dilution Act (“FTDA”), which
became effective January 1996.10 The magistrate judge declined to
rule on this claim, finding that the Fifth Circuit had not yet
addressed the standards governing relief under the FTDA and noting
that PRL’s requested relief was the same as that ordered in the
infringement action. See Westchester Media Co., 1999 U.S. Dist.
LEXIS, 12333, *138. This court must reach the claim, however, as
it potentially affords a distinct basis of equitable relief.11
10
PRL also claimed dilution under Texas state law. TX. BUS. & COM. CODE
§ 16:29. The magistrate ruled, however, that this claim was pre-empted by
Westchester’s federal registration of the “Polo” mark. See Westchester Media
Co., 1999 U.S. Dist. LEXIS 12333, *128-29. Neither party challenges this ruling,
and we will leave it undisturbed.
11
Contrary to Westchester’s position, this case does not involve
impermissible retroactive application of the FTDA. PRL’s dilution claim is based
on Westchester’s continuing use of the “Polo” mark after enactment of the FTDA.
See Viacom Inc. v. Ingram Enters., Inc., 141 F.3d 886, 889 (8th Cir. 1998).
26
Under the FTDA, the owner of a “famous mark” is protected
“against another person’s commercial use . . .of a mark or trade
name, if such use begins after the mark has become famous and
causes dilution of the distinctive quality of the mark.” 15 U.S.C.
§ 1125(c)(1). The FTDA defines dilution as:
the lessening of the capacity of a famous mark to
identify and distinguish goods and services, regardless
of the presence or absence of (1) competition between the
owner of the famous mark and other parties, or (2)
likelihood of confusion, mistake or deception.
15 U.S.C. § 1127. Injunctive relief may be ordered for a
violation, but if a willful violation is proved, the remedy may
include restitutionary, compensatory, or specific relief in the
form of destruction of offending articles. Id. §§ 1125(c)(1)-(2),
1117(a), 1118.
To prevail on its dilution claim, PRL must prove that its
marks are famous and distinctive; that Westchester adopted its mark
after PRL’s had become famous and distinctive; and that Westchester
caused dilution of PRL’s mark.12 See 15 U.S.C. §§ 1125(c)(1), 1127;
12
There are two recognized forms of dilution: blurring and tarnishment.
See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Division of
Travel Development, 170 F.3d 449, 452 (4th Cir. 1999)(noting that the FTDA’s
legislative history indicates congressional understanding that dilution results
from blurring or tarnishment). Blurring involves “‘the gradual whittling away
or dispersion of the identity and hold upon public mind of the mark or name by
its use upon noncompeting goods.’” Elvis Presley Enters., Inc. v. Capece, 950
F.Supp. 783, 798 (S.D. Tex. 1996), quoting Frank I. Schecter, The Rational Basis
of Trademark Protection, 40 Harv. L. Rev. 813, 825 (1927). Tarnishment results
when one party uses another’s mark in a manner that tarnishes or appropriates the
goodwill and reputation associated with the mark. See MCCARTHY §§ 24:67-69. PRL
alleges that New POLO Magazine both blurs and tarnishes its “Polo” mark.
27
Ringling Bros., 170 F.3d at 452. The parties do not contest the
first two of these requirements. Rather, they dispute whether
proof of dilution requires a showing of actual or merely threatened
economic harm. Westchester, relying on a recent Fourth Circuit
opinion, argues that proof of dilution under the FTDA requires
proof of “actual, consummated harm.” Ringling Bros., 170 F.3d at
464.13 PRL counters with a Second Circuit opinion holding that the
FTDA requires only proof of a likelihood of dilution. See Nabisco,
Inc. v. PF Brands, Inc., 191 F.3d 208, 224-25 (2d Cir. 1999).14
As an issue of first impression in this Circuit,15 we
endorse the Fourth Circuit’s holding that the FTDA requires proof
of actual harm since this standard best accords with the plain
meaning of the statute. There is a key difference between the
state antidilution statutes that formed the backdrop for passage of
the FTDA and the FTDA itself. Whereas state antidilution statutes
incorporate, often expressly, the “likelihood of dilution”
13
Several courts outside the Fourth Circuit have followed the standard
of proof announced in Ringling Bros.. See Playboy Enters., Inc. v. Netscape
Communications, 55 F.Supp. 2d 1070 (C.D. Cal. 1999); American Cyanamid Co. v.
Nutraceutical Corp., 54 F.Supp. 2d 379 (D.N.J. 1999).
14
At least one court outside the Second Circuit has agreed with Nabisco.
See Eli Lilly and Co. v. Natural Answers, Inc., 86 F.Supp. 2d 834, 852 (S.D.
Ind. 2000).
15
Fifth Circuit courts have encountered FTDA claims but have either
declined to rule on them, see Sunbeam Products, Inc. v. West Bend Company, 123
F.3d 246, 261 n. 28 (5th Cir. 1997), or have avoided an analysis of the new Act,
see Elvis Presley Enters., 950 F.Supp. at 797 (using New York’s antidilution
statute as a guide to interpreting the FTDA).
28
standard,16 the federal statute does not. See Ringling Bros., 170
F.3d at 461. Instead, it prohibits any commercial use of a famous
mark that “causes dilution.” 15 U.S.C. § 1125(c)(1). Both the
present tense of the verb and the lack of any modification of
“dilution” support an actual harm standard.17
Several persuasive contextual indicators were also
pointed out by the Fourth Circuit. For instance, the conduct
proscribed under the FTDA is “another person’s . . . use,” 15
U.S.C. § 1125(c)(1), not merely threatened use of the mark. See
Ringling Bros., 170 F.3d at 461. In addition, “unlike the state
antidilution statutes which provide only injunctive relief,
reflecting their sole focus on the prevention of future harm, the
federal Act provides that where willful conduct is shown,
compensatory and restitutionary relief may be awarded--for
necessarily consummated economic harm. 15 U.S.C. §§ 1125(c)(2),
1117(a), 1118.” Id.
16
See, e.g., TEX.BUS. & COM. CODE §16.29 (“A person may . . . enjoin an act
likely to . . . dilute the distinctive quality of a mark . . . .”); N.Y. GEN. BUS.
LAW § 360-1 (“Likelihood of . . . dilution of the distinctive quality of a mark
shall be a ground for injunctive relief . . . .”); CAL. BUS. & PROF. CODE § 14330
(same).
17
Commentators have noted this key difference between the federal
dilution act and its state counterparts. See, e.g., Robert N. Klieger, Trademark
Dilution: The Whittling Away of the Rational Basis for Trademark Protection, 58
U. Pitt. L. Rev. 789, 840 (1997)(“In place of the ‘likelihood of dilution’
language of the state antidilution statutes, the [federal Act] . . . creates an
actual dilution requirement . . . .”); see also Ringling Bros., 170 F.3d at 461
n. 6.
29
The Nabisco opinion asserts that an actual harm standard
allows “excessive literalism to defeat the intent of the statute.”
See Nabisco, 191 F.3d at 224. But in the absence of any authority
stating that Congress intended a “likelihood of dilution” standard
for the FTDA, we may not depart from the plain meaning of the
statute.
The magistrate judge reviewed the current and projected
circulation for the New POLO Magazine, and found that PRL made no
showing of actual harm. See Westchester Media Co., 1999 U.S. Dist.
LEXIS, 12333, *142. Because we have concluded that the FTDA
requires proof of actual dilution, this finding, which we cannot
say was clearly erroneous, dooms PRL’s dilution claim.
III.
REMEDIES
The magistrate judge entered a broad injunction ordering
Westchester to cease publishing the New POLO Magazine under the
name POLO. On appeal, the parties have staked out diametrically
opposed positions concerning the First Amendment ramifications of
the injunction and the availability and advisability of a narrower
disclaimer remedy. Rather than respond to these adversarially
charged arguments, however, this discussion will explain certain
misconceptions that influenced the magistrate judge’s decision to
adopt broad rather than targeted injunctive relief. In brief, the
30
magistrate judge unduly discounted the First Amendment interests
impaired by the injunction and, despite an otherwise heroic effort
in unraveling this case, failed to accommodate its distinctive
features.
This court reviews injunctive relief in trademark cases
as in other cases under the abuse of discretion standard. See
Pebble Beach Co., 155 F.3d at 550. An abuse of discretion
automatically inheres in an injunctive decree if the trial court
misinterpreted applicable law. See Peaches Entertainment Corp. v.
Entertainment Repertoire Assocs., Inc., 62 F.3d 690, 693 (5th Cir.
1995). As with injunctive relief generally, an equitable remedy
for trademark infringement should be no broader than necessary to
prevent the deception. See Soltex Polymer Corp. v. Fortex
Industries, Inc., 832 F.2d 1325, 1329 (2d Cir. 1987); Better
Business Bureau, Inc. v. Medical Directors, Inc., 681 F.2d 397, 405
(5th Cir. 1982).
The magistrate judge concluded that the rights of a
trademark owner need not yield to First Amendment concerns “where
a defendant has alternative avenues of communication available.”
Westchester Media Co., 1999 U.S. Dist. LEXIS 12333, *173, citing
Reddy Communications, Inc. v. Environmental Action Foundation,
Inc., 1977 U.S. Dist. LEXIS 12968, 199 U.S.P.Q. 630, 634 (D.D.C.
31
1977).18 The alternative avenue is Westchester’s publishing its
lifestyle magazine under any title other than POLO. Even if that
is all the injunction ordered, a point to be discussed later, the
magistrate judge too abruptly dismissed First Amendment concerns.
For one thing, several circuit courts have rejected the Reddy
Communications approach, holding instead that even where trademark
infringement has been found, First Amendment interests should
influence the choice of remedy. See L.L. Bean, Inc. v. Drake
Publishers, Inc., 811 F.2d 26 (1st Cir. 1987); Consumers Union of
the United States, Inc. v. General Signal Corp., 724 F.2d 1044 (2d
Cir. 1983). And on its own terms, the reasonable alternative
avenues approach bears a tenuous relation to communicative and
property interests embodied in trademarks. See L.L. Bean, 811 F.2d
at 29; see also Robert C. Denicola, Trademarks as Speech:
Consitutional Implications of the Emerging Rationales for the
Protection of Trade Symbols, 1982 Wis. L. Rev. 158, 197 (1982).
More to the point, as this court has already been committed to
exercising sensitivity for First Amendment interests where
18
Other cases cited by the magistrate judge, Mutual of Omaha Ins. Co.
v. Novak, 836 F.2d 397, 402 (8th Cir. 1987) and Dallas Cowboys Cheerleaders, Inc.
v. Scoreboard Posters, Inc., 600 F.2d 1184, 1188 (5th Cir. 1979), essentially
make the same argument as the language from Reddy Communciations -- that the
First Amendment does not give “license” to infringe upon trademark rights.
Westchester Media Co., 1999 U.S. Dist. LEXIS 12333, *167, *172. Though
Scoreboard Posters involved copyright law (and arguably should not be cited in
a trademark opinion), both it and Novak rely on the same authority as Reddy
Communications and belong to the same line of cases, the so-called “adequate
alternative” cases. Thus, our rejection of reasoning behind Reddy Communications
is also a rejection of these other two cases.
32
trademark violations are asserted, we are bound by our precedent
rather than by Reddy Communications. See Better Business Bureau,
681 F.2d at 404-05 (reviewing the scope of an injunction for
compliance with the First Amendment).
The magistrate judge also labeled Westchester’s title
“commercial speech”, suggesting that it deserves less First
Amendment protection for that reason. Westchester Media Company,
1999 U.S. Dist. Lexis 12333, *170. As has been previously noted,
a magazine title is a hybrid between commercial and artistic
speech. See Rogers, 875 F.2d at 998. Here, the speech is
expressive to an appreciable degree, and it requires more
protection than the labeling of ordinary commercial products. Id.
Insofar as the purpose of a remedy for trademark
infringement is to eliminate the likelihood of confusion between
the holder of the mark and the interloper, the remedy might in a
particular case require suppression of otherwise constitutionally
protected speech. See, e.g., Dr. Suess Enters., L.P. v. Penguin
Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997); Dallas Cowboy
Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir.
1979). Like fraudulent speech, speech that misleads or creates
confusion is not protected under the First Amendment. See Better
Business Bureau, 681 F.2d at 404. Where the allegedly infringing
speech is at least partly literary or artistic, however, and not
33
solely a commercial appropriation of another’s mark, the preferred
course is to accommodate trademark remedies with First Amendment
interests. One obvious mode of accommodation is a disclaimer that
will officially dissociate the junior user of the mark from the
senior user’s product. Disclaimers have frequently been approved
by this court and others when trademark and First Amendment
interests intersect. See, e.g., Better Business Bureau, 681 F.2d
at 405; Consumers Union, 724 F.2d at 1053; Twin Peaks Productions,
996 F.2d at 1379.19 Even in this case, the court issued a
preliminary injunction requiring Westchester to publish the New
POLO magazine with a disclaimer of any relation to PRL.
When the court ultimately rejected a disclaimer, it took
insufficient account of Westchester’s continuing First Amendment
interests -- in both the use of the title and content of its
ongoing publication -- and failed to implement the general rule
that an equitable remedy should be no broader than the scope of the
violation.
Unlike the magistrate judge, we are persuaded for several
reasons that a broad injunction may be unnecessary to remedy the
19
Other cases have disallowed a disclaimer remedy after a fact-specific
conclusion that it would be ineffective. See, e.g., Boston Professional Hockey
Association, Inc. v. Dallas Cap & Emblem Mfg, Inc., 510 F.2d 1004, 1013 (5th Cir.
1975). Neither these cases, nor others in which a disclaimer has been rejected
without a discussion of First Amendment interests, e.g., Playboy Enters., Inc.
v. Chuckleberry Publishing, Inc., 687 F.2d 563, 571 (2d Cir. 1982), should be
understood to defeat the use of disclaimers where they would be effective to
accommodate conflicting legal principles.
34
source confusion and will therefore remand for further factual
development.
First, in this unusual case, it is undisputed that
Westchester has the right to publish some magazine under the title
POLO. The remedial injunction acknowledges this fact: it attempts
to prohibit use of the title on New POLO magazine while allowing
Westchester to publish Polo Players Edition, the sport-centered
periodical, as POLO. The injunction, although deceptively simple
in concept, would in practice pose a continual threat of
substantive editing to the magazine, because the editorial line
between the publications is not clear. Old POLO magazine, the
forerunner of Polo Players Edition, contained lifestyle advertising
by manufacturers like PRL. Further, it is perfectly consistent
with the theme of a polo sport-centered periodical to include such
articles as profiles of celebrity players and supporters of polo or
features concerning venues where polo is played. And unless
Westchester confined POLO (formerly Polo Players Edition) to
distribution to the members of the USPA, arguments could arise
whether the appellant breached the scope of the injunction by
seeking a broader circulation and hence a wider audience for the
sport. The content-based impact of this injunction could extend
beyond the title of Westchester’s magazine, posing special First
Amendment concerns.
35
Second, and also unique to this case, is PRL’s claim to
police use of the “Polo” mark by the publisher of USPA’s official
magazine. PRL products became famous by basking in the reflected
glow of an elegant sport. PRL now asserts that it, not the sport,
is the source of the glow. While PRL’s primary claim is the
essence of the ordinary trademark case, we cannot be blind, when
balancing the equities, to the fact that PRL is arrogating the very
name of a sport from the players’ publication. In a sense, PRL is
biting the hand that fed it.
Third, it is possible that a limited injunction
containing disclaimer relief could be an effective remedy. PRL,
despite strong incentive to do so, offered no evidence of actual
confusion after the preliminary injunction ordered New POLO
published with disclaimers. See Westchester Media Co., 1999 U.S.
Dist. LEXIS 12333, *224. The magistrate judge speculated that the
absence of confusion was due to publicity surrounding this lawsuit
rather than to the disclaimers. Speculation has no evidentiary
weight, however. The magistrate judge also found that the survey
evidence submitted by Westchester proved that the disclaimer was
ineffective in alleviating source confusion. See Westchester Media
Co., 1999 U.S. Dist. LEXIS 12333, *237-38. But the survey results
were not necessarily entitled to more weight than the lack of
actual confusion following the dissemination of disclaimers. A
36
lack of actual confusion, though not determinative, is relevant to
the fashioning of relief. See 3 MCCARTHY § 23:18. In any event,
the effectiveness of a disclaimer remedy, being considered at the
end of a long trial, was not thoroughly explored. On remand, the
parties can draw from the experience of New POLO’s publication with
a disclaimer pending this appeal.
Fourth, the markets for both PRL’s products and
Westchester’s magazine consist of relatively sophisticated buyers.
See Soltex Polymer Corp., 832 F.2d at 1330 (the presence of
sophisticated consumers weighs in favor of disclaimer relief).
Such buyers are more likely to notice, read, and understand the
import of any written disclaimers attached to Westchester’s
magazine. See Times Mirror Magazines, Inc. v. Las Vegas Sports
News, 2000 WL 526779, *10 (3d Cir. Apr.28, 2000) (“Unsophisticated
buyers . . . are more vulnerable to confusion, mistake, and
misassociations against which the trademark protects”).
In requiring disclaimer relief to be reconsidered, we
reject the court’s additional reasons for rejecting that remedy.
The court held that Westchester waived any disclaimer argument by
its omission from the pretrial order.20 Read in context, the record
20
Westchester Media Co., 1999 U.S. Dist. LEXIS 12333, *233-34 (“[A]
joint pretrial order signed by both parties . . . governs the issues in evidence
to be presented at trial. . . . [I]f a claim or issue is omitted from the order,
it is waived,” citing Elvis Presley Enters., 141 F.3d at 206 (citations
omitted)).
37
does not support waiver. After all, the court itself introduced
disclaimer relief into this case by ordering it in the preliminary
injunction. The court also admitted evidence on the effectiveness
of a disclaimer remedy. More important, courts in trademark cases
have a responsibility to tailor the relief to the violation, a
responsibility that includes consideration of disclaimers.
Appellate courts have a similar responsibility and have reviewed
the breadth of injunctive relief in the face of similar waiver
arguments. See Allard Enterprises, Inc. v. Advanced Programming
Resources, Inc., 146 F.3d 350, 360 (6th Cir. 1998); Sovereign Order
of Saint John of Jerusalem, Inc. v. Grady, 119 F.3d 1236, 1241 (6th
Cir. 1997).
The court also expressed skepticism that Westchester,
after violating the preliminary injunction order, could not be
trusted to adhere to a disclaimer. See Westchester Media Co., 1999
U.S. Dist. LEXIS 12333, *234. Although Westchester’s track record
of compliance was relevant to permanent disclaimer relief, the
errors cited by the court were minor. Westchester was accused, not
of refusing to disseminate the disclaimer, but of making it
inconspicuous. See id. at *228-29. Westchester’s alleged
noncompliance was apparently not serious enough for PRL to complain
about before trial -- except for a complaint about the language of
a disclaimer letter that Westchester promptly changed. Westchester
38
also posted disclaimer stickers on an issue of magazines published
without the necessary language. It was not alleged that PRL was
hurt as a result of Westchester’s behavior; on the contrary, the
court acknowledged that there were no reports of actual confusion
after the disclaimer was ordered. See id. at *224.21
Similarly, the discovery abuses cited by the court are
inadequate to bar disclaimer relief. If such abuses were not
serious enough to warrant the adverse inferences PRL asked for
during trial, see id. at *230-31, then they do not warrant an
overbroad injunction.
Finally, we reject the district court’s repeated
invocations of the “safe distance” line of cases in order to
justify imposing a broad injunction.22 In Better Business Bureau,
this court faced facts analogous to those here and disapproved of
the “safe distance” principle where First Amendment interests are
at stake. See Better Business Bureau, 681 F.2d at 404-05.
21
This is not to say that if Westchester persistently failed to post
proper disclaimers on the magazine, a narrow injunctive order would remain
appropriate.
22
See Westchester Media Co., 1999 U.S. Dist. LEXIS 12333, *236 (“In
deciding whether to order an injunction, it is important to remember that in
fashioning relief against [the infringing] party . . . , a court of equity is
free to proscribe activities that standing alone, would have been unassailable,”
citing Pebble Beach Co., 155 F.3d at 550); see also id. at *241-42 (citing Conan
Properties, 752 F.2d at 153, for the same proposition: that courts can issue
broad injunctions prohibiting infringing conduct as well as conduct that would
not usually justify relief).
39
Because the court thus erred in too readily dismissing
the possibility of a disclaimer or other limited injunctive relief,
we must remand for further factual development and for
reconsideration whether a disclaimer procedure better comports with
First Amendment principles than an outright prohibition on
Westchester’s use of “Polo” for New POLO Magazine. In other words,
as this court concluded in Better Business Bureau, the appropriate
remedy may be “not less speech, but more.”
IV.
For the foregoing reasons, the judgment of the court is
AFFIRMED in PART on liability, but VACATED and REMANDED in PART on
the question of the appropriate remedy.
Pending a final order on remand in the trial court, this
court’s injunction pending appeal, which continued the disclaimer
order of the magistrate judge, will remain in effect.
40