Ralph Lauren scores in five-year 'Polo' dispute

The US Court of Appeals for the Fifth Circuit has affirmed a district court judgment granting permanent injunctive relief to Polo Ralph Lauren (PRL) preventing Westchester Media from using the name 'Polo' in connection with an equestrian and lifestyle magazine, unless it displays a detailed disclaimer stating that the magazine is not affiliated with PRL.

The appellate court's decision in Westchester Media Co LP v PRL USA Holdings Inc, H-97-3278, 2001 US Dist LEXIS 17468 (SD Tex, Oct 23 2001) aff'd per curiam, 01-21194 (5th Cir, Sept 17 2002), puts an end to a five-year litigation concerning Westchester's right to use 'Polo' as a magazine title.

Westchester originally filed the action in 1997 in the US District Court for the Southern District of Texas seeking a declaratory judgment that it did not infringe PRL's POLO mark for clothing, accessories, home furnishings and fragrances by using 'Polo' as the title of its magazine. PRL counterclaimed for trademark infringement and the district court entered a preliminary injunction in favour of PRL, which required Westchester to use a disclaimer clearly stating that Polo Magazine was not affiliated with PRL. Following the trial, the court found that Westchester's use of the word 'Polo' created a likelihood of confusion as to the magazine's source and therefore infringed PRL's POLO mark. The judge issued a broad permanent injunction that allowed for no disclaimer and required Westchester to discontinue using 'Polo' in the title of its magazine.

On appeal in 2000, the Fifth Circuit affirmed the district court's judgment on liability. However, it concluded that the district court had taken insufficient account of Westchester's First Amendment interests (ie, free speech) and held that a broad injunction was unnecessary to remedy the source confusion. The appellate court therefore stayed the permanent injunction, remanded the case to the district court for further fact-finding with respect to an appropriate remedy, and reinstated the terms of the original disclaimer.

When the case returned to the district court, the judge issued a new order requiring that Westchester use the phrase 'Not affiliated with Polo Ralph Lauren' following any reference to the magazine's title. The court ordered that the disclaimer should be located in a prominent position and should appear on all of Westchester's correspondence and promotional materials.

Again on appeal, the Fifth Circuit affirmed the district court's permanent injunction and upheld the terms of the disclaimer.

Howard J Shire and Aimee Soucie, Kenyon & Kenyon, New York