Trademark Law - Disclaimers - Westchester Media Co., L.P. v. PRL USA Holdings, Inc

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Edmund Burke

Westchester Media Co., L.P. v. PRL USA Holdings, Inc , 214 F.3d 658, United States Court of Appeals for the Firth Circuit, 2000

The following is excerpted from the court ruling:
The magistrate judge first entered a preliminary injunction and required Westchester to disseminate a "disclaimer which states clearly that POLO Magazine had no affiliation, sponsorship, or association with Ralph Lauren, or any Polo Ralph Lauren entities." Westchester was ordered to display the disclaimer in a prominent place on the magazine's cover, on its masthead and on the magazine's table of contents page. In addition, it was required to notify subscribers and advertisers that its magazine was not affiliated with PRL, and to publish the disclaimer on all "promotional materials." .
Following trial, the magistrate judge issued a lengthy decision finding that Westchester had violated the Lanham Act by infringing upon PRL's "Polo" trademark. In consequence, she issued a permanent injunction essentially requiring Westchester to cease and desist publishing New POLO Magazine under the title "POLO". Westchester appealed, and the Court of Appeals for the 5th Circuit stayed the permanent injunction and reinstituted the disclaimer procedure pending the appeal.
Disclaimers have frequently been approved by (the 5th Circuit) court and others when trademark and First Amendment interests intersect. See, e.g., Better Business Bureau, 681 F.2d at 405; Consumers Union, 724 F.2d at 1053; Twin Peaks Productions, 996 F.2d at 1379. Even in this case, the court issued a preliminary injunction requiring Westchester to publish the New POLO magazine with a disclaimer of any relation to PRL.
Third, it is possible that a limited injunction containing disclaimer relief could be an effective remedy. PRL, despite strong incentive to do so, offered no evidence of actual confusion after the preliminary injunction ordered New POLO published with disclaimers. See Westchester Media Co., 1999 U.S. Dist. LEXIS 12333, *224.
In requiring disclaimer relief to be reconsidered, (the 5th Circuit Court of Appeals) reject the court's additional reasons for rejecting that remedy. The court held that Westchester waived any disclaimer argument by its omission from the pretrial order. Read in context, the record does not support waiver. After all, the court itself introduced disclaimer relief into this case by ordering it in the preliminary injunction. The court also admitted evidence on the effectiveness of a disclaimer remedy. More important, courts in trademark cases have a responsibility to tailor the relief to the violation, a responsibility that includes consideration of disclaimers. Appellate courts have a similar responsibility and have reviewed the breadth of injunctive relief in the face of similar waiver arguments. See Allard Enterprises, Inc. v. Advanced Programming Resources, Inc., 146 F.3d 350, 360 (6th Cir. 1998); Sovereign Order of Saint John of Jerusalem, Inc. v. Grady, 119 F.3d 1236, 1241 (6th Cir. 1997).
The court acknowledged that there were no reports of actual confusion after the disclaimer was ordered. See id. at *224.

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