789 F.3d 29
2d Cir.2015Background
- PRL (Polo Ralph Lauren) owns the Polo Player Logo and POLO word mark; USPA (U.S. Polo Ass’n) is a separate organization that markets consumer goods and used a “Double Horsemen” logo.
- 1984 Injunction barred USPA from using PRL’s marks or any confusingly similar marks; meaning of “confusingly similar” has been treated as market-specific.
- In 2006 Apparel Litigation, a jury found three of four Double Horsemen marks did not infringe PRL when used on apparel, leather goods, and watches.
- In the 2009–2012 Fragrance Litigation, the district court found USPA’s use of the Double Horsemen mark on fragrances infringed PRL and entered a permanent injunction (the Fragrance Injunction) prohibiting use of the mark in fragrance/cosmetics and, by repeating 1984 language, prohibiting use of confusingly similar mounted-polo-player images in other markets.
- PRL moved for contempt after USPA sold nearly one million sunglasses bearing the Double Horsemen mark; the district court found USPA in contempt for violating Paragraphs 3(c) and 3(d) of the Fragrance Injunction without applying a market-specific confusion analysis and awarded prospective relief.
- The Second Circuit vacated and remanded, holding that (1) the injunction must be read in context of prior rulings and is subject to market-by-market confusing-similarity analysis derived from the 1984 injunction and prior appeals, and (2) contempt requires clearer notice and clear-and-convincing proof that use on eyewear violated the injunction and would have put a reasonable firm on clear notice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Fragrance Injunction’s Paragraph 3(c) unambiguously bars USPA’s Double Horsemen use in all markets (including eyewear) | PRL: Paragraph 3(c) applies to all markets; it repeats the 1984 injunction and thus bars confusingly similar polo images everywhere | USPA: The Fragrance Injunction was targeted to fragrance/cosmetics and should not be read to prohibit uses in markets found non-infringing (e.g., apparel) without a market-specific analysis | Held: Paragraph 3(c) cannot be read to eliminate the market-specific analysis required by the 1984 order; injunction must be read in context and does not automatically bar all non-fragrance uses without further market analysis |
| Whether a contempt finding may be based on a non-market-specific determination of confusing similarity | PRL: For contempt, showing confusing similarity under Paragraph 3(c) suffices; market analysis unnecessary | USPA: Contempt requires market-by-market application of confusing-similarity analysis, given prior apparel verdict and the Fragrance Injunction’s scope | Held: Contempt requires market-specific analysis; court must consider whether a reasonable firm would have had clear notice that the injunction barred the specific conduct, and confusing similarity must be proved by clear and convincing evidence |
| What standard and proof are required to hold USPA in contempt for eyewear sales | PRL: Clear and convincing evidence of confusing similarity to support contempt | USPA: Need both market-specific infringement showing and clear notice given prior litigation history | Held: Two additional findings required for contempt — (1) a reasonable firm in USPA’s position would have had clear notice that eyewear use violated the injunction, and (2) confusing similarity in the eyewear market is proved by clear and convincing evidence |
| Whether Wella precedent permits rejecting market-specific analysis in contempt proceedings | PRL: Wella allows contempt determinations without Polaroid-style market analysis in certain contempt contexts | USPA: Wella is distinguishable; it addressed a clear evasion of an obviously infringing mark, not a disputed mark already held non-infringing in other markets | Held: Wella is distinguishable; market-specific analysis remains appropriate where prior litigation shows non-infringement in other markets; contempt must be based on reasonable notice and clear-and-convincing proof |
Key Cases Cited
- Wella Corp. v. Wella Graphics, Inc., 37 F.3d 46 (2d Cir. 1994) (contempt context where a plainly evasive change to an unquestionably infringing mark was at issue)
- Perfect Fit Indus. v. Acme Quilting Co., Inc., 646 F.2d 800 (2d Cir. 1981) (elements required before finding contempt for violating an injunction)
- Perez v. Danbury Hosp., 347 F.3d 419 (2d Cir. 2003) (standard of review for contempt orders is a more exacting abuse-of-discretion)
- Brennan’s Inc. v. Brennan’s Rest., L.L.C., 360 F.3d 125 (2d Cir. 2004) (likelihood-of-confusion analysis focuses on the particular industry where the marks compete)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (multi-factor test for trademark likelihood of confusion)
- Starter Corp. v. Converse, Inc., 170 F.3d 286 (2d Cir. 1999) (warning about overbroad injunctions that reach unrelated markets)