United States District Court, S.D. New York
OPINION AND ORDER
RICHARD J. SULLIVAN, District Judge.
Plaintiff PRL USA Holdings, Inc. ("PRL") brings this action against Defendants United States Polo Association, Inc. ("USPA"), USPA Properties, Inc., and JRA Trademark Company Ltd., for violations of the Lanham Act, the New York General Business Law, and New York state common law, and for contempt of this Court's prior orders related to the parties' ongoing trademark disputes. Now before the Court is Defendants' motion to compel arbitration or, in the alternative, to dismiss certain claims stated in the complaint. For the reasons that follow, the motion is GRANTED in part and DENIED in part.
This dispute is the latest in a thirty-year battle between PRL and USPA. As virtually every consumer knows, PRL designs, markets, and distributes apparel, home furnishings, fragrances, and accessories under the name Ralph Lauren. It frequently employs as a trademark the "Polo Player Logo, " which depicts a rider with an upright polo mallet atop a horse. (Compl. ¶¶ 9-10.) The Polo Player Logo has appeared on Ralph Lauren products since the 1960s. ( Id. ¶ 10.) By contrast, Defendant USPA was founded in 1890 and is the governing body of the sport of polo in the United States. ( Id. ¶ 2.) Nonetheless, through its wholly-owned subsidiary, United States Polo Association Properties, Inc., USPA also registers trademarks and licenses for retail product sales in many of the same categories of goods as PRL. ( Id. ¶ 3.) For several decades, USPA has identified its products with various permutations of a logo featuring two overlapping mounted polo players, referred to collectively as USPA's "Double Horsemen Mark." ( Id. ¶ 21.)
In 1984, USPA and its licensees brought an action in the United States District Court for the Southern District of New York for a declaratory judgment against PRL, asking the Court to find that various articles of merchandise bearing USPA's newest version of its trademarked Double Horsemen Mark - a mounted polo player with lowered polo mallet preparing to strike a ball - did not infringe PRL's Polo Player Logo; PRL counterclaimed for trademark infringement. ( Id. ¶¶ 18-19); U.S. Polo Ass'n. Inc. v. Polo Fashions, Inc., No. 84-cv-1142 (LBS), 1984 WL 1309, at *5 (S.D.N.Y. Dec. 6, 1984) (describing the 1984 version of the Double Horsemen Mark). Judge Sand, adjudicating both claims, entered an order enjoining USPA from infringing on PRL's marks - including its Polo Player Logo and the word "POLO." ( Id. ¶ 19.) The Court, however, permitted USPA to license its "USPA" 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 the word "polo" in reference to the sport of polo in its retail sales. ( Id., Ex. B at ¶¶ 8-9 (setting forth Judge Sand's 1984 order)).
Later, 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, its newly redesigned trademarks, and other logos on apparel and related products. (Compl. ¶ 22.) The litigation involved merchandise identified by class, including watches, leather products, clothing, and sporting items related to polo. ( Id. ) Prior to a trial before Judge Daniels, however, the parties entered into a partial settlement that permitted USPA to use its name and certain other logos on apparel, leather goods, and watches. ( Id. ¶ 23; see also Declaration of Andrea L. Calvaruso, dated June 6, 2014, Doc. No. 42, Ex. A ("Settlement Agreement").) The Settlement Agreement incorporated by reference Judge Sand's order from the 1984 case and established dispute resolution mechanisms for later contests. As relevant here, the Settlement Agreement contained an arbitration provision stating:
[T]he parties agree that the sole remedy for any dispute, action, claim, or controversy of any kind hereafter arising between PRL on the one hand and any of the USPA Parties on the other hand... in any way arising out of, pertaining to, or in connection with this Settlement Agreement (including, but not limited to, any claims for breach of this Settlement Agreement, claims that the party's trademark and/or trade dress rights have been infringed, and/or claims for federal or state unfair competition and/or dilution that fall with[in] the Settlement Agreement) shall be resolved by arbitration pursuant to the procedures set forth below.
(Settlement Agreement ¶ 16.) The agreement further provided that:
Any arbitration proceeding between the parties... shall be administered by the American Arbitration Association ("AAA") under the Commercial Rules in the City and State of New York....
( Id. ¶ 16C.)
Notwithstanding the Settlement Agreement, the parties could not agree as to whether four particular USPA marks infringed on the PRL trademark, and they proceeded to a jury trial on those issues, agreeing in advance that the use of any symbols the jury found non-infringing would be governed by the terms of the Settlement Agreement. (Compl. ¶ 23.) Approximately one year later, a jury determined that: (1) USPA's Double Horseman Mark design featuring a solid image of two overlapping polo players, one with mallet lowered and the other with mallet raised, infringed PRL's Polo Player Logo trademark, but (2) the same solid Double Horsemen Mark with "USPA" written below and an outlined version of the Double Horsemen Mark, both with and without "USPA" written below, did not infringe PRL's Polo Player Logo trademark. ( Id. ¶¶ 23-25.) Judge Daniels entered an order consistent with the verdict shortly thereafter ("2005 Judgment"). ( Id. ¶ 26.) The Settlement Agreement, by incorporating the jury's finding and the 2005 Judgment, prohibited the use of the infringing marks in all but two countries worldwide. (Settlement Agreement ¶ 19J.)
In 2009, the saga began anew. USPA filed a complaint for declaratory judgment in the Southern District of New York, seeking the right to license and sell fragrance products bearing a solid Double Horsemen Mark, with "U.S. POLO ASSN." arching above, and the year "1890" - the date of USPA's founding - below. (Compl. ¶¶ 27-28.) After a bench trial, Judge Sweet found that "USPA's use of the Double Horsemen Mark along with the word mark U.S. POLO ASSN.' in the context of men's fragrances created a strong likelihood of confusion with the PRL Parties' products" and infringed PRL's trademarks. U.S. Polo Ass'n et al. v. PRL USA Holdings, Inc., et al., 800 F.Supp.2d 515, 538 (S.D.N.Y.2011). Accordingly, in March 2012, the Court enjoined USPA and its co-defendants from:
Using the PRL marks or any other name or mark, including the image of one or more mounted polo players, that constitutes a colorable imitation of or is confusingly similar to PRL's Polo Player Logo... or "POLO" word mark in connection with the sale or offering for sale of any goods or rendering of any services.
(Compl., Ex. D ("2012 Injunction") ¶ 3(c)). The Second Circuit upheld the injunction and directed Defendants to "maintain a safe distance" from PRL's marks. U.S. Polo Ass'n, Inc. v. PRL USA ...