U.S. Polo Ass'n, Inc. v. PRL USA Holdings, Inc.

UNITED STATES POLO ASSOCIATION, INC.,and USPA PROPERTIES, INC., Plaintiffs,

v. PRL USA HOLDINGS, INC.,and L'ORÉAL USA, INC., Defendants.

09 Civ. 9476

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

Dated: March 5, 2013

Dated: March 6, 2013

OPINION

APPEARANCES;

Attorneys for Plaintiffs United States Polo

Association, Inc.

BAKER & HOSTETLER LLP

By: Gerald J. Ferguson, Esq.

John D. Parker, Esq.

David Sheehan, Esq.

Attorneys for Defendant L'Oréal USA, Inc.

PAUL, HASTINGS, JANOFSKY & WALKER, LLP

By: Robert L. Sherman, Esq.

Attorneys for Defendant PEL USA Holdings, Inc.

KELLEY DRYE & WARREN LLP

By: William R. Golden, Jr., Esq.

John M. Callagy, Esq.

Andrea L. Calvaruso, Esq.

Matthew D. Marcotte, Esq.

Attorneys for JRA Trademark Company, Ltd.

WILSON SONSINI GOODRICH & ROSATI, P.C.

By: Michael S. Sommer, Esq.

Jessica L. Margolis, Esq.

Scott D. Tenley, Esq.

Sweet, D.J.

Defendant PRL USA Holdings, Inc. ("PRL" or the "Defendant") has moved to hold plaintiffs United States Polo Association, Inc. ("USPA") and USPA Properties, Inc. ("USPAP") (collectively, the "USPA Parties" or the "Plaintiffs") in contempt for violating the Permanent Injunction and Final Judgment entered in this action on March 5, 2 012 (the "Injunction") and the Final Order, Judgment and Decree entered on December 6, 1984 (the "1984 Order"). Non-party JRA Trademark Company, Ltd. ("JRA") has moved to intervene pursuant to Rule 24 of the Federal Rules of Civil Procedure.

This is the latest outbreak of a twenty-eight year trademark war between PRL and its predecessor, possessors of the highly-successful Ralph Lauren Polo Player Logo, and the USPA, a national association dedicated to the promotion of the sport of polo and the sale of products which are designated as polo products. The parties have conducted this feud in various battlegrounds with tenacity, ability and assisted by eminent and high-skilled counsel. The outcome of these battles has not produced the clarity to compel the termination of the conflict. What follows is the outcome of another skirmish which involves adispute over the USPA's parties' use of variants of its Double Horsemen Mark and U.S. POLO ASSN. marks on eyewear.

On the facts and conclusions set forth below, JRA' motion to intervene is considered first to allow for consideration of its opposition, and is granted. PRL's motion for contempt and appropriate sanctions is also granted.

I. Preceding Litigations and Prior Proceedings

In 1984, USPA and its licensees commenced an action against PRL for a declaratory judgment that various articles of merchandise bearing a mounted polo player symbol did not infringe PRL's Polo Player Logo. PRL counterclaimed for trademark infringement. The matter came before the Honorable Leonard B. Sand.

In his 1984 Order, Judge Sand denied USPA's request for a judgment of non-infringement, found that USPA and its licensees infringed PRL's Polo Player Logo, POLO, POLO BY RALPH LAUREN trademarks and PRL's trade dress, and engaged in unfair competition. See U.S. Polo Ass'n v. Polo Fashions, Inc., No. 84 Civ. 1142 (LBS), 1984 WL 1309 (S.D.N.Y. Dec. 6, 1984).

The 1984 Order enjoined USPA and its licensees from infringing PRL's marks, including the Polo Player Logo and the word "POLO," but not from engaging in a licensing program that did not use the infringing trademarks. Specifically, the 1984 Order included the following provisions enjoining the USPA parties and those in concert with them from the following:

a. using any of the Polo Marks or any name or mark or symbol which is confusingly similar thereto, in connection with the sale or offering for sale of any goods or the rendering of any services;

b. manufacturing, distributing, advertising, promoting, importing, licensing, authorizing, sponsoring, holding for sale or selling any goods, labels, tags, logos, decals, emblems, signs and other forms of markings, any packaging, wrappers, containers and receptacles and any jacquard cards, catalogs, price lists, promotional materials and the like bearing an infringement or colorable imitation of any of the Polo Marks;

c. using for any commercial purposes whatsoever any symbol, logo, trade name or trademark which may be calculated to or has the effect of falsely representing that the services or products of or licensed by plaintiffs are sponsored or authorized by, or in any way associated with defendants, Ralph Lauren or any entity affiliated with any of them;

d. using for any commercial purposes whatsoever, the name "United States Polo Association," or any other name which emphasizes the word POLO (or the words U.S. POLO) separate, apart and distinct from such name in a manner which likely to cause confusion with defendants, Ralph Lauren or any entity affiliated with any of them.

(Cal. Dec. Ex. B, ¶ 8). The 1984 Order, however, permitted USPA to conduct a retail licensing program using its name, "a mounted polo player or equestrian or equine symbol which is distinctive from . . . [PRL's] polo player symbol in its content and perspective," and other trademarks that refer to the sport of polo, subject to certain conditions and restrictions set forth in the 1984 Order. Id. The USPA Parties did not appeal the 1984 Order.

In 2000, PRL brought a lawsuit in the Southern District of New York against the USPA and its master licensee affiliates, seeking to bar the use of USPA's name, the Double Horsemen Mark and other logos on apparel and related products. PRL USA Holdings, Inc. v. U.S. Polo Ass'n, Inc., No. 99 Civ. 10199 (GBD) (S.D.N.Y. 2000) (the "Apparel Litigation").

On September 5, 2003, the PRL and USPA Parties entered into a settlement agreement that partially settled the claims made by PRL against the USPA Parties in the Apparel Litigation (the "2003 Settlement Agreement"). The 2003 Settlement Agreement set forth terms for the USPA to use its name and certain other logos, designs and packaging on apparel, leather goods and watches. It also incorporated by reference the 1984Order and provided a mechanism for PRL to raise complaints and objections regarding packaging that it believed was infringing its rights or in violation of the 2003 Settlement Agreement. However, the parties failed to resolve whether the USPA had a right to use four of variants of its Double Horsemen Mark. Instead, the parties agreed to resolve that issue though a trial before the Honorable George B. Daniels, and that the result of the trial would be incorporated into the 2003 Settlement Agreement.

On October 20, 2005, a jury verdict concluded that three out of the four versions of the Double Horsemen Mark did not infringe PRL's single horseman mark when used on apparel, leather goods and watches. PRL USA Holdings, Inc. v. U.S. Polo Ass'n, Inc., No. 99 Civ. 10199 (GBD), 2006 WL 1881744, at *1 (S.D.N.Y. July 7, 2006). Specifically, "the jury found (1) [USPA Parties'] solid double horseman mark infringed PRL's Polo Player Symbol trademarks; and (2) [USPA Parties'] solid double horseman mark with 'USPA,' outline double horseman mark, and outline double horseman mark with "USPA' did not infringe PRL's Polo Player Symbol trademarks."

After considering post-trial briefing by the parties, Judge Daniels denied PRL's motion for a new trial in July 2006.PRL appealed the jury's verdict, which the United States Court of Appeals for the Second Circuit upheld. See PRL USA Holdings, Inc. v. U.S. Polo Ass'n, Inc., 520 F.3d 109 (2d Cir. 2008).

On November 13, 2009, the USPA Parties filed a complaint for declaratory judgment that sought the right to license and sell in the United States fragrance products bearing U.S. POLO ASSN., the Double Horsemen Marks and "1890," the year of the founding of the U.S. Polo Assn. (the "Fragrance Litigation"). (Dkt. No. 1). PRL and its exclusive fragrance licensee, L'Oreal USA, Inc. ("L'Oreal"), intervened in the action without objection. (Dkt. No. 12). PRL and L'Oreal brought various counterclaims against the USPA Parties and sought a preliminary injunction barring the use of the Double Horsemen Logo on March 2, 2010. (Dkt. Nos. 11, 14, 15).

The parties agreed that the preliminary injunction hearing would be consolidated with a trial on the merits. After a bench trial, an opinion was entered on May 13, 2011 by this Court (the "May 13 Opinion") determining that the USPA Parties' use of a confusingly similar logo consisting of two mounted polo players and their use of composite word marks in which the word "POLO" predominated, infringed the PRL Marks with respect tofragrance products. (Dkt. No. 80); see U.S. Polo Ass'n v. PRL USA Holdings, Inc., 800 F. Supp. 2d 515 (S.D.N.Y. 2011).

The May 13 Opinion held that PRL's federally registered Polo Player Logo and POLO trademarks (collectively, the "PRL Marks") on fragrance products were valid and "extremely strong" and were entitled to a substantial degree of protection from infringement. Id. at 527-28. The May 13 Opinion also found that the similarity between PRL's Polo Player Logo and USPA's Double Horsemen Mark was "apparent[,]" Id. at 528, noting that,

Both marks are similar in perspective — containing a polo player on horseback, facing slightly to the viewer's left, leaning forward with a polo mallet raised. Both are displayed in embossed metallic or glossy material — with PRL's appearing in a number of colors including silver and gold, and USPA's appearing in a light gold.

The primary difference between the marks is that the PRL's logo contains one player, while USPA's contains two, one with mallet raised and the other with mallet lowered, which significantly overlap. In USPA's mark, the front horseman is displayed in solid metallic ink, while the rear horseman is only outlined, such that the background packaging shows through. This gives the front — mallet raised — horseman more visual prominence, while the torso of the rear horseman can be said to fade into the background. Both of USPA's horsemen share the same directional perspective and overlap to a degree that it can be

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