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Use of the word “Polo” as the title of a magazine focusing on the luxury lifestyle associated with the sport is likely to cause confusion between the magazine and Polo Ralph Lauren Corp., which holds a family of registered “Polo” marks, the 5th U.S. Circuit Court of Appeals held June 27, finding infringement even under the “particularly compelling” standard applied when First Amendment interests are at stake ( Westchester Media v. PRL USA Holdings Inc., 5th Cir., No. 99-20754, June 27, 2000). In an opinion by Judge Edith H. Jones, the court also held — as an issue of first impression — that a violation of the Federal Trademark Dilution Act requires proof of actual harm, not merely “likelihood of dilution.” In doing so, the court explicitly adopted the standard set forth in Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Utah Div. of Travel Development, 170 F.3d 449 (4th Cir. 1999), and rejected the test announced in Nabisco Inc. v. PF Brands Inc., 191 F.3d 208 (2d Cir. 1999). BACKGROUND Westchester Media’s “Polo” magazine entered the market in 1997 as the relaunch of a magazine that focused solely on the sport of polo. The new magazine was, according to its publisher, “not about the sport, but rather about an adventurous approach to living.” The new magazine’s publisher also changed its target market, sending solicitations to, for example, persons on Nieman Marcus’ mailing lists. A separate publication, “Polo Players Edition,” was devoted solely to the sport. PRL USA Holdings Inc., which owns a family of “Polo” trademarks for clothing, accessories, home furnishings, and fragrances, had no complaints about sharing its mark with the old magazine. In fact, it advertised in the old magazine and its founder, designer Ralph Lauren, consented to be interviewed for an article that appeared therein. However, PRL objected to the new magazine’s use of the “Polo” name. It refused to even consider advertising in the new magazine despite Westchester’s repeated efforts to pitch advertising deals to PRL. In response, Westchester filed this declaratory judgment action seeking a holding that its use of the “Polo” title did not infringe PRL’s “Polo” marks. PRL counterclaimed for trademark infringement, trademark dilution, and unfair competition under the Lanham Act. In a lengthy opinion, a magistrate judge of the U.S. District Court for the Southern District of Texas ruled that the magazine infringed PRL’s marks; declined to rule on the dilution issue; and entered a permanent injunction requiring Westchester to change the magazine’s name. Westchester appealed. CASENOT SO SIMPLE‘ To prevail on its trademark infringement claim, PRL was required to prove that Westchester’s use of the mark created a likelihood of confusion in consumers’ minds as to the source, affiliation, or sponsorship of the magazine, the Fifth Circuit began. In determining whether a likelihood of confusion exists, courts look at several factors, including: (1) the type of mark; (2) the similarity between the two marks; (3) the similarity of products or services; (4) the identity of the retail outlets and purchasers; (5) the identity of the advertising media use; (6) the defendant’s intent; and (7) any evidence of actual confusion. In the usual infringement case, the presence of a likelihood of confusion disposes of the issue, the court said. “But this case is not so simple.” Instead of trying to enjoin a purely commercial use of the mark, PRL was attempting to prevent Westchester from using “Polo” as a magazine title. Thus, PRL’s claim implicated the First Amendment right to choose an appropriate title for literary works. “This case thus involves the tension between the protection afforded by the Lanham Act to trademark owners and the protection afforded by the First Amendment to insulate titles of artistic works from Lanham Act claims,” the court wrote. This tension “cannot be resolved by allowing the First Amendment to insulate titles of artistic works from Lanham Act claims,” the court added. But courts cannot ignore the First Amendment when enforcing the Lanham Act. In this circuit, courts follow a framework developed by the U.S. Court of Appeals for the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), when a trademark is used by another for a valid literary or artistic purpose: “Literary titles do not violate the Lanham Act ‘unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or content of the work.’” To determine whether a title misleads in this fashion, the court applies a likelihood of confusion analysis. However, the likelihood of confusion must be “particularly compelling” to outweigh the First Amendment interests. Here, Westchester argued that the trial court improperly applied the “particularly compelling” standard. The Fifth Circuit disagreed. The lower court, “[a]ccepting, � without deciding” that the “particularly compelling” standard applied, found injunctive relief appropriate in the face of the First Amendment concerns. The Fifth Circuit, reviewing the lower court’s conclusions on the likelihood of confusion factors, agreed that, in total, they supported a finding of a “particularly compelling” likelihood of confusion. For example, the court said, Westchester intentionally adopted the “Polo” mark, even if it did so innocently. “An innocent intent in adopting a mark does not immunize an intent to confuse in the actual use of the mark.” The proof — that the new magazine primarily covered affluent lifestyles, fashion, and travel, rather than the sport — evidenced an intent to trade on PRL’s reputation and goodwill, the court said. The court also found the fact that PRL does not publish a magazine — i.e., that the parties were not direct competitors — irrelevant. Although a close question, the court agreed that magazines are within PRL’s “natural zone of expansion.” It also pointed out that the lack of direct competition or evidence of the senior user’s intention to expand into the junior user’s market does not mitigate the danger of confusion as to affiliation or sponsorship. Evidence of actual confusion was also presented by PRL in the form of consumer surveys. On appeal, Westchester contended that the surveys were flawed because they should have used the old “Polo” magazine as a control, rather than the new “Players Edition.” While the court found that the surveys may have constituted better evidence if the old magazine was used as the control, there was no clear error in the lower court’s reliance on the surveys as evidence of incremental confusion. On balance, the court held that there was no clear error in the lower court’s findings on these likelihood of confusion factors. Therefore, the court found no clear error in the conclusion that a likelihood of confusion existed. Finally, the court also found the “particularly compelling” conclusion supported by the record. LACHES, ACQUIESCENCE, AND INCONTESTABILITY As did the district court, the Fifth Circuit rejected Westchester’s defenses of laches, acquiescence, and incontestability. To prevail on any one of the three, the court said, Westchester would have to show that the new magazine was the same as the old magazine. However, as the lower court found, the new magazine was “an entirely new product.” Therefore, PRL’s failure to object to the old magazine’s use of the “Polo” name was irrelevant. Similarly, the new name has not been in use for the five years necessary to establish the incontestability of the mark. “The incontestable ‘Polo’ mark [that] was used to title a magazine about the sport of polo � cannot be transferred to a fundamentally different magazine,” the court held. DILUTION The lower court declined to address PRL’s dilution argument, saying that PRL’s requested relief under this claim was the same as that on its infringement claim. In its opinion, the Fifth Circuit focuses on the issue to clarify its stance on what must be proven to make out a claim under the Federal Trademark Dilution Act, 17 U.S.C. �1125(c). To prevail on a dilution claim, the court said, a plaintiff must show that its mark is famous and distinctive; that the mark was adopted by the defendant after it became famous and distinctive; and that the defendant caused the dilution of the plaintiff’s mark. In the present case, the parties did not contest the first two issues. Instead, they disputed whether proof of dilution requires a showing of actual or merely threatened economic harm. This issue has already resulted in a circuit split, with the U.S. Court of Appeals for the Fourth Circuit ruling that proof of “actual, consummated harm” is necessary, and the Second Circuit saying that proof of a likelihood of dilution is sufficient. Deciding “[a]n issue of first impression in this Circuit,” the court endorsed the “Fourth Circuit’s holding that the FTDA requires proof of actual harm since this standard best accords with the plain meaning of that statute. There is a key difference between the state antidilution statutes � and the FTDA itself,” the court explained. State statutes, “often expressly,” incorporate a likelihood of dilution standard. The FTDA, on the other hand, “prohibits any commercial use of a famous mark that ’causes dilution.’” This language supports an actual harm standard, the court concluded. The lower court found that PRL made no showing of actual harm. Because the Fifth Circuit did not find this conclusion clearly erroneous, PRL’s antidilution claim was doomed. OVERBROAD INJUNCTION As a remedy for the infringement, the lower court entered an injunction essentially requiring Westchester to change the name of its magazine. This relief, the Fifth Circuit found, was overbroad. “In brief,” the court wrote, “the magistrate judge unduly discounted the First Amendment interests impaired by the injunction and, despite an otherwise heroic effort in unraveling the case, failed to accommodate its distinctive features.” The lower court held that a mark owner’s rights need not yield to the First Amendment where there are alternative avenues of communication — in this case, using a different magazine title. However, several circuit courts have rejected this notion, holding instead that First Amendment concerns should influence the choice of remedy, the court said. “More to the point, � this court has already been committed to exercising sensitivity for First Amendment interests where trademark violations are asserted.” The magistrate judge also labeled Westchester’s title as “commercial speech,” thereby subjecting it to less rigid First Amendment protection. But, the Fifth Circuit noted, “a magazine title is a hybrid between commercial and artistic speech.” Thus, “it requires more protection than the labeling of ordinary consumer products.” While a remedy in any particular case might “require suppression of otherwise constitutionally protected speech,” the court found it inappropriate here. Where the allegedly infringing speech is at least partly literary or artistic, however, and not solely a commercial appropriation of another’s mark, the preferred course is to accommodate trademark remedies with First Amendment interests. One obvious mode of accommodation is a disclaimer that will officially disassociate the junior use of the mark from the senior user’s product. When the lower court rejected the disclaimer remedy, the court said, “it took insufficient account of Westchester’s First Amendment interests.” Therefore, although affirming the lower court’s decision on the merits, the court vacated the remedy portion and remanded the case for reconsideration of the appropriate remedy.

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