U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren...

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


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



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



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



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



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.



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.



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



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



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.)



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:



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



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.



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



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.



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



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,



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



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



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



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



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



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



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



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.)



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).



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



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



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.



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.



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



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



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



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



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).)



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.



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.)



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



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



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.



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.



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




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



U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren...

Documents

Transcript of U.S. Polo Association v. PRL USA Holdings, 12-1346-CV (2d Cir.) (Appellee Polo Ralph Lauren...