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United States Polo Ass'n, Inc. v. PRL USA Holdings, Inc.

United States Court of Appeals, Second Circuit

May 13, 2015

UNITED STATES POLO ASSOCIATION, INC., USPA PROPERTIES, INC., Plaintiffs-Counter-Defendants-Appellants,
v.
PRL USA HOLDINGS, INC., L'OREAL USA, INC., Defendants-Counter-Claimants-Appellees JRA TRADEMARK COMPANY, LTD., Intervenor-Plaintiff-Appellant,

Argued February 19, 2014.

Appeal from a contempt judgment entered in the United States District Court for the Southern District of New York (Robert W. Sweet, Judge). We vacate and remand.

KYLE C. BISCEGLIE (Matteo J. Rosselli, on the brief), Olshan Frome Wolosky LLP, New York, NY, for Plaintiffs-Counter-Defendants-Appellants.

MICHAEL S. SOMMER (Jessica L. Margolis & Scott D. Tenley, on the brief), Wilson Sonsini Goodrich & Rosati, P.C., New York, NY, for Intervenor-Plaintiff-Appellant.

JOHN M. CALLAGY (William R. Golden, Jr., Andrea L. Calvaruso, Taraneh J. Marciano, on the brief), Kelley Drye & Warren LLP, New York, NY, for Defendants-Counter-Claimants-Appellees.

Before: KEARSE, WINTER, and WESLEY, Circuit Judges.

OPINION

Page 30

WINTER, Circuit Judge:

This appeal is the latest chapter in a now over-30-year dispute involving trademarks relating to the sport of polo used on consumer goods. United States Polo Association, Inc. and USPA Properties, Inc. (together, " USPA" ) and USPA's licensee, JRA Trademark Co., appeal from Judge Sweet's order of contempt finding USPA in violation of a permanent injunction. The court held that appellants' logo on eyewear products was confusingly similar to the logo used by appellees PRL USA Holdings, Inc. and L'Oreal USA, Inc. (together, " PRL" ) on PRL's eyewear products. USPA argues that the underlying injunction did not enjoin all uses of the mark. We agree and vacate the contempt order and remand for further proceedings.

BACKGROUND

USPA is the governing body of the sport of polo but also markets certain consumer goods, often in competition with PRL. PRL owns the trademark rights and exclusive licenses for the Polo Ralph Lauren brand, which includes the " Polo Player Logo" -- an image depicting a mounted polo player with a raised mallet -- and the " POLO" word mark.

a) The 1984 Injunction

The conclusion of the opening litigation occurred in 1984, when, after a bench trial, Judge Sand issued an injunction against USPA. U.S. Polo Ass'n v. Polo Fashions, Inc., No. 84 Civ. 1142 (LBS), 1984 WL 1309 (S.D.N.Y. Dec. 6, 1984) (" 1984 Injunction" ). The 1984 Injunction prohibited USPA, inter alia, from " using any of the [PRL

Page 31

marks] or any name or mark or symbol which is confusingly similar thereto, in connection with the sale . . . of any goods or the rendering of any services[.]" U.S. Polo Ass'n v. PRL USA Holdings, Inc., No. 09 Civ. 9476, 2013 WL 837565, at *1 (S.D.N.Y. Mar. 6, 2013). While the 1984 Injunction applied to all markets, the term " confusingly similar" was not a bright line. Rather, as amplified in subsequent litigation, discussed infra, its meaning turned on a comparison of competing logos and the words associated with them, see PRL USA Holdings, Inc. v. U.S. Polo Ass'n, 520 F.3d 109 (2d Cir. 2008), and varied with the nature of the various markets in which the logos and words are used, see U.S. Polo Ass'n v. PRL USA Holdings, Inc., 511 F.App'x 81 (2d Cir. 2013) (summary order).

b) The Apparel Litigation

The mark at issue in this appeal is styled the " Double Horsemen Mark." It depicts two mounted polo players vying for a ball. When USPA began using four variations of this mark in 1996, PRL brought an action seeking to enjoin its use on a ...


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