Article - Disclaimers and Federal Court

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Source:
http://biotech.law.lsu.edu/Courses/ip/text_updates.htm#c-remedies
May 2, 2008 - emphasis is added

In a case that explores the tension between the Lanham Act and the First Amendment, the Fifth Circuit Court of Appeals, in Westchester Media v. PRL USA Holdings, Inc, 214 F.3d 658 (5th Cir. 2000) (No. 99-20754), upheld a lower court's finding of trademark infringement for plaintiff's "POLO" mark where defendant Westchester's use of "Polo" in its magazine title was likely to cause confusion, but held that the lower court may have erred in permanently enjoining defendant from using "Polo", and remanded for reconsideration. The circuit court criticized the lower court for too abruptly dismissing First Amendment concerns in granting the permanent injunction, and for failing to consider the possibility of using a disclaimer or other limited injunctive relief as a remedy, rather than completely restraining defendant Westchester's right of choosing the title for its literary work.
The circuit court noted that in a run of the mill Lanham Act case, the presence of a likelihood of confusion disposes of the issue of infringement. But in this case, plaintiff PRL was attempting to do more than merely enjoin a purely commercial use of the "Polo" mark; it was trying to prevent Westchester from using "Polo" as a title for a magazine. As such, the court held that, PRL's infringement claim implicates the First Amendment right to choose a title for literary works. The court held that a permanent injunction would only be appropriate in such a case if the likelihood of confusion could not be solved by means of a disclaimer or other limited injunctive relief.
Here, the court found a permanent injunction may be inappropriate because it: (a) could extend beyond the title of Westchester's magazine, posing special First Amendment concerns, (b) would allow PRL to arrogate the very name of a sport from the players' publication; (c) did not take into account that there was no evidence of actual confusion after the preliminary injunction of using a disclaimer was granted by the district court, and (d) did not take into account that the buyers for both PRL's products and Westchester's magazine are relatively sophisticated, being able to differentiate the trademarks by means of a disclaimer or other injunctive relief.[blurb by BR]