UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 99-20754

WESTCHESTER MEDIA; NAVASOTA HOLDING CO., L.L.C.

Plaintiffs/Counter-Defendants/Appellants,

v.

PRL USA HOLDINGS, INC.; POLO RALPH LAUREN CORPORATION d/b/a

Delaware Polo Ralph Lauren Corporation

Defendants/Counter-Claimants/Appellees.

Appeal from the United States District Court for the

Southern District of Texas, Houston Division

June 27, 2000

Before JONES, DeMOSS, and DENNIS, Circuit Judges.

EDITH H. JONES, Circuit Judge:

Appellants Westchester Media and Navasota Holding Co.

(“Westchester”) appeal the judgment finding that their use of the

mark “POLO” to title a magazine infringed marks for products sold

by Polo Ralph Lauren entities (“PRL”). Two features distinguish

this case from run of the mill trademark infringement claims. PRL

is attempting to prevent Westchester from titling a magazine even

though PRL itself sells no literary products. And Westchester

acquired its “POLO” mark from and, at least in part for the

continuation of, t he official publication of the U.S. Polo2

Association. This Court agrees with the magistrate judge’s finding

of trademark infringement but concludes that the court may have

erred in permanently enjoining Appellants from using the mark

“Polo” for their lifestyle magazine. We remand for further

conside r ation of remedy, in particular for reconsideration of

disclaimer relief.

I.

FACTUAL & PROCEDURAL HISTORY

PRL is a fashion and design business founded in 1967 by

Ralph Lauren. Lauren has built PRL into a multi-billion dollar

company that sells wearing apparel, accessories, home furnishings,

and fragrances. In the last four years alone, PRL sold

approximately four billion dollars wholesa le value of products

bearing various “Polo” trademarks. PRL advertises extensively in

newspa pers, trade publications, and magazines. Articles about

PRL’s products and Ralph Lauren himself have appeared in magazines

as diverse as Time

, Financial World

, Town & Country

, and Vanity

Fair

.

PRL has registered a number of trademarks with the Patent

and Trademark Office (“PTO”) that include the word POLO. We will

r efer to these trademarks collectively as the “Polo Tradem arks.”

PRL does not posses s a POLO trademark for use on a publication.

All the Polo Trademarks remain in effect, and several have become3

incontestable under the Lanham Act . 15 U.S.C. § 1065. PRL

contends that as a result of its thirty years of continuous and

extensive use of the Polo Trademarks, these marks have become

famous, and the word POLO has come t o be closely identified with

both Ralph Lauren and PRL.

Westchester Media Company publishes magazines and, until

the summer of 1997, produced only sp ecialty magazines such as

“Cowboys & I ndians.” Westchester’s general partner is Navasota,

whose sole shareholder is John B. Goodman. An avid polo player,

Goodman is captain of a top-ranked polo team that has represented

the United States in the international Westchester Cup tournament.

He has been a member of the United States Polo Association (“USPA”)

since 1989 and serves on the boards of two USPA committees. He is

also on the board of directors of the Houston Polo Club, of which

he was president in 1994 and 1995.

In May 1997, Westchester Media and Na v asota Holding

Company purchased the assets of POLO m agazine, including its

trademarks, from Fleet Street Publishing Company and its owner, Ami

Shinitzky. Those trademark registrations were granted to Shinitzky

and Fleet Street in 1992 and read as follows:

(1) Registration No. 1,691,432 for “POLO”, a “magazine on

the subject of equestrian sports and lifestyles”;4

(2) Registration No. 1,677,088 for a “horse and rider

design” for “magazine publication services”, and the

design which appears on the masthead of POLO magazine;

and

(3) Registration No. 1,710,894 for “POL O Life”, a

“magazine dealing with equestrian sports and lifestyles.”

The history of Ami Shinitzky’s POLO Magazine is critical

to this dispute. Shinitzky, a polo enthusiast and USPA member,

founded POLO Magazine (the “Old POLO Magazine”) in 1975. Until it

was sold in 1997, the Old POLO Magazine was a special interest

magazine that provided, in its own words, “an insider’s view of the

sport of polo and the international society and

. . . traditions

that surround it.” In an August 1997 article on the history of the

Old POLO Magazine, Shinitzky wrote that the ma gazine “hit its

stride with a formulaic mixture of game coverage, personality and

club profiles, rules, opinions, history and how-to and horsemanship

articles.” The magazine’s advertising base was equally equinefocused, consisting primarily of horse medicines, equestrian

products, and polo equipment. The USPA endorsed the Old POLO

Magazine as its “official publication,” and most of the magazine’s

7,000 subscribers were members of the USPA who received the

magazine as a benefit of membership.5 Shinitzky’s direction of Old POLO Magazine was marked by

a peaceful coexistence with PRL. Soon after the magazine’s

founding, Shinitzky interviewed Ralph Lauren for the magazine. In

the following years, PRL frequently advertised in the magazine, as

did several other luxury goods manufacturers. At no point during

Old POLO Magazine’s existence did PRL complain about the magazine’s

use of the “Polo” mark.

Beginning in 1989, Shinitzky started publishing issues of

the Old POLO Magazine with expanded “lifestyle” content under the

title POLO Life

. According to Westchester, issues with expanded

lifestyle content were published in 1989, 1990, 1992, 1993, 1994,

1995, and early 1997. Describing one of these issues in 1989, the

trade journal Ad Week wrote, “[Shi nitzky’s magazine bears] a

striking resemblance to one of Lauren’s ads. It’s loaded with

pictures of upscale people having a good time at country clubs.

Shinitzky hopes to attract advertisers that want to reach just that

crowd.” PRL was aware of the A d Week article but continued to

advertise in the Old POLO Magazine.

Ad Week was not the only entity to find similarity

between the Old Polo Magazine and PRL. According to Westchester,

potential advertisers in Old POLO Magazine frequently asked whether

there was some connection between Old POLO Magazine and PRL.6 In 1992, Shinitzky obtained federal registration for POLO

covering a “magazine on the subject of equestrian sports and

lifestyles.” In support of its application to the PTO, Fleet

Street submitted two 1989 issues of the Old POLO magazine, one of

which included a PRL advertisement. PRL filed no opposition to the

title or description of the magazine. Shinitzky offered to sell

the magazine and its registration to PRL in 1994 but received no

response. In April 1998, the federal registration received by

Shinitzky became incontestable.

In May 1997, Westchester purchased all assets of POLO

Magazine from Fleet Street for approximately $400,000. Despite the

Old POLO Magazine’ s lackluster financial performance -- it lost

$ 1,400 in 1996 -- Westchester explained the purchase price by

pointing to the goodwill and history behi nd Fleet Street’s POLO

mark and to the access the magazine provided to personalities in

the world of polo. Westchester repeatedly testified that it bought

the magazine intending to “re-launch” it in an effort to expand

readership and broaden polo’s appeal. Despite Shinitzky’s attempt

during the purchase negotiations to link the magazine with “Ralph

Lauren’s spectacular achievement with the name Polo,” Westchester

denied at trial any intent to infringe PRL’s trademarks or to trade

on PRL’s reputation and goodwill.7 After purchasing the Old POLO Magazine, Westchester “relaunched” the magazine in October 1997 under the name of POLO (the

“New POLO Magazine”), while at the same time publishing a separate

magazine called “Polo Players Edition.” In contrast to Shinitzky’s

magazine, the new POLO Magazine carried the tagline “Adventure •

Elegance • Sport.” The re-launched magazine also changed its

target audience and distribution m ethods. Westchester purchased

the customer list from Neiman Marc us, one of PRL’s largest

retailers, and arranged for promotional materials for the New POLO

Magazine to be mailed to these customers. Westchester then sent a

free copy of the New POLO Magazine to almost one million Neiman

Marcus customers. In promotional materials sent to prospective

advertisers, Westchester wrote that the New POLO Magazine was “not

about the sport, but rather about an adventurous approach to living

life.” The promotional materials also explained that the new

magazine would be distributed not only to USPA members but also “on

newstands, at hotels, resorts, and clubs.” Westchester also chose

fashion model Claudia Schiffer to appear on the cover of its

inaugural issue. The previous year, Ms. Schiffer had been PRL’s

featured model in an extensive advertising campaign.

While re-making the image of POLO magazine, Westchester

tried to maintain the old magazine’s links with PRL. Shortly after

purchasing POLO magazine, Westchester contacted PRL and secured a8

meeting with Elizabeth Morris, a PRL advertising executive. On

June 23, 1997, Westchester’s Reid Slaughter met with Morris and

made an advertising sales pitch. This pitch included two “mock-up”

covers of the New POLO Magazine, neither of which was ever used for

the New POLO Magazine. One cover depicted a horse, but Westchester

did not put a horse on its cover until more than a year after the

re-launch. Slaughter testified that Morris reacted positively to

his presentation. PRL, however, asserts that Morris made a clear

objection to the magazine’s title.

After this meeting, We stchester continued to lobby PRL

for advertising. In September 1997, PRL’s advertising agency

invited Westchester to “Magazine Week,” an event that allowed

select magazine “finalists” to pitch advertising deals to PRL.

This invitation was rescinded two days after it issued, and on

September 23, 1997, PRL formally objected to the title of the New

POLO Magazine.

In response, Westchester filed this action, seeking a

declaration that its use of the title “POLO” for its magazine on

“equestrian sports and lifestyles” does not infringe PRL’s “Polo”

mark. PRL asserted counterclaims for trademark infringement,

dilution and unfair competition under the Lanham Act and Texas law,

and sought injunctive relief. The parties stipulated that all

matters would be tried to a magistrate judge.9 The magistrate judge first entered a preliminary

injunction and r equired Westchester to disseminate a “disclaimer

which stat es clearly that POLO Magazine has no affiliation,

sponsorship, or association with Ral ph 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 is not affiliated with PRL, and to p ublish the

disclaimer on all “promotional materials.”

Following trial, the magistrate judge issued a lengthy

decision finding that Westchester had violated the L anham 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 this Court stayed the perm anent

injunc tion and reinstituted the disclaimer procedure pending the

appeal.

II.

DISCUSSION

Westchester appeals the finding of trademark infringement

and the denial of its defenses of laches, acquiescence, and1 PRL also charged Westchester with unfair competition un der Texas

common law. T E X

. B US

. & C OM

. C ODE § 16:29. Likelihood of confusion is also the

governing standard for PRL’s unfair competition claim. B lue Bell Bio-Medical v.

Cin-Bad, Inc.

, 864 F.2d 12 53, 1261 (5th Cir. 1989). The analysis of PRL’s

federal claim thus controls disposition of PRL’s state law claim.

10 trademark incontestability. In addition, Westchester challenges

the magistrate judge’s analys is of PRL’s counterclaim under the

Federal Trademark Diluti on Act (“FTDA”). Finally, Westchester

appeals the permanent unqualified injunction forbidding its use of

“POLO” to title its equestrian lifestyle magazine. We will

consider each issue in turn.

A

. Trademark Infringement

1. General Principles

To prevail on its trademark infringement claim, PRL must

show that Westchester’s use of the “Polo” mark creates a likelihood

of confusion in the minds of potential consumers as to the “source,

affiliation, or sponsorship” of Westchester’s magazine. S ee Elvis

Presley Enters., Inc. v. Capece

, 141 F.3d 188, 193 (5th Cir. 1998);

Society of Fin. Exam’rs v. Natio nal Ass’n of Certified Fraud

Exam’rs, Inc.

, 41 F.3d 223, 227 (5th Cir. 1995); see also 15 U.S.C.

§§ 1114(1), 1125(a)(1)(A). 1 Likelihood of confusion is synonymous

with a probability of confusion, which is more than a mere

possibility of confusion. See Elvis Presley Enters. , 141 F.3d at

193.11 In determining whether a likelihood of confusion exists,

courts consider the following nonexhaustive list of factors: (1)

the type of mark allegedly infringed, (2) the similarity b etween

the two marks, (3) the similarity of the products or services, (4)

the identity of the retail outlets and purchasers, (5) the identity

of the advertising media used, (6) the defendant’s intent, and (7)

any evidence of actual confusion. S ee Pebble Beach Co. v. Tour 18

Ltd.

, 155 F.3d 526, 543 (5th Cir. 1998); Elvis Presley Enters.

, 141

F.3d at 194; Conan Properties, Inc. v. Conans Pizza, Inc.

, 752 F.2d

145, 149 (5th Cir. 1985). No single factor is dispositive, and a

finding of a likelihood of confusion does not require a positive

finding on a majority of these “digits of confusion.” S ee Co nan

Properties

, 752 F.2d at 150; Elvis Presley Enters.

, 141 F.3d at

194. The court is also free to consider other relevant factors in

determining whether a likelihood of confusion exists. See id . at

194.

In the usual Lanham Act case, the presence of a

likelihood of confusion disposes of the issue of infringement. But

this case is not so simple. PRL is not trying to enjoin a purely

commercial use of the “Polo” mark. Rather, it is trying to prevent

Westchester from using “Polo” as a title for a magazine. In so

doing, PRL ’s infringement claim implicates the First Amendment

right to choose an appropriate title for literary works. See S ugar2 We reject PRL’s argument that book titles and magazine titles are

distinguishable for First Amendment purposes. While it is true that both S ugar

Busters and Twin Peaks involved book titles, book titles belong to the category

of literary titles, a category which also includes magazine titles. S ee 2 J.

T HOMAS M C C ARTHY

, M C C ARTHY ON T RADEMARKS AND U NF A IR C OMPETITION § 10:1 (4th ed.

1998)[hereinafter M C C ARTHY ](explaining that the law of literary titles encompasses

magazine titles).

12 Busters LLC v. Brennan

, 177 F.3d 258, 269 n.7 (5th Cir.

1999)(noting a First Amendment interest in choosing an appropriate

b ook title); Twin Peaks Productions, Inc. v. Publications Int’l,

Ltd. , 996 F.2d 1366, 1379 (2d Cir. 1993)(same). 2

This case thus involves the tension be tween the

protection afforded by the Lanham Act to trademark owners and the

protection afforded by the First Amendment to expressive activity.

In Rogers v. Grimaldi

, 875 F.2d 994 (2d Cir. 1989), the Se cond

Circuit ruled that this tension could not be resolved by allowing

the First Amendment to insulate titles of artisti c works from

Lanham Act claims. S ee Rogers

, 875 F.2d at 998. But neither could

c ourts ignore First Amendment concerns when enforcing the Lanham

Act. I d. Titles, according to the Rog ers court, combine both

artistic expression and commercial promotion, and they consequently

require more First Amendment protection than the labeling of

ordinary commercial products. I d. F inding that “overextension of

Lanham Act restrictions in the area of titles might intrude on

First Amendment values”, id.

, the court concl uded that it “must

construe the Lanham Act narrowly to avoid such a conflict.” Id.

,13

citing Silverman v. CBS , 870 F.2d 40, 48 (2d Cir. 1989); see also

Cliff’s Notes, Inc. v. Bantam Doubleday Dell Publ’g Group, Inc.

,

886 F.2d 490, 494 (2d Cir. 1989).

Relyin g on R ogers

, the Second Circuit has adopted the

following framework 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 the

content of the work.” T win Peaks Prod uctions , 996 F.2d at 1379,

quoting Rogers

, 875 F.2d at 999; see also No Fear, Inc. v. Imagine

Films, Inc

., 930 F.Supp. 1381, 1383 (D.C. Cal. 1995)(endorsing the

Rogers approach). To determine whether an artistically relevant

title misleads as to the source or content of the work, the Second

Circuit applies the likelihood of confusion test used in evaluating

standard trademark infringement claim s. See Twin Peaks

Productions

, 996 F.2 d at 1379. However, the likelihood of

confusion must be “particularly compelling” to outweigh the First

Amendment interests at stake. I d. This Circuit has adopted the

Second Circuit’s approach:

Any finding that defendant s’ book title is likely to

cause confusion with plaintif f ’s book title must be

“particularly compelling” to outweigh defendants’ First

Amendment interest in choosing an appropriate book title

for their work.14

Sugar Busters

, 177 F.3d at 269 n.7, citing Twin Peaks Productions

,

996 F.2d at 1379.

The magistrate judge’s finding of a likelihood of

confusion is in this circuit a finding of fact reviewed for clear

error. S ee Elvis Presley Enters.

, 141 F.3d at 196. Under the

clear error standard, we will reverse the district court only if we

have a “definite and firm conviction that a mistake has been

committed.” B.H. Bunn Co. v. AAA Replacement Parts Co. , 451 F.2d

1254, 1260 (5th Cir. 1971)(internal quotation marks omitted).

2. Analysis

Westchester argues that the court improperly applied the

“particularly compelling” standard mandated by Sugar Busters

.

Further asserting that the standard could not in any event be

sa tisfied on this record, Westchester challenges as clearly

erroneous the findings on several of the digits of confusion: that

Westchester inte n ded to infringe upon PRL’s mark; that

Westchester’s and PRL’s products were similar because magazines are

within PRL’s “natural zone of expansion;” and that the 1997

relaunch of the New POLO Magazine resulted in increased actual

confusion. We consider each of these arguments in turn.

a. The Sugar Busters standard

Westchester argues that the trial court, improperly

applying the Sugar Busters standard, based the finding of liability3 The magistrate judge did not decide the threshol d matter whether

Westchester’s title bears some artistic relevance to the und erlying magazine.

There can be no question on this point, however. Though the New POLO Magazine

contains articles on fashion and travel, it also contains articles specifically

related to polo. In each issue, sections entitled “The Blue Book” and “Through

the Monocle” report on polo tournaments, profile polo players and personalities,

and provide other polo-related information. Furthermore, the magazine is the

official publication of the USPA.

15 on simple likelihood of confusion rather than a “particularly

compelling” likelihood. 3 In discussing First Amendment interests,

however, the magistrate judge explicitly held:

Accepting,

. . . without necessarily deciding, that Sugar

Busters has ‘raised the bar’, in this c ircuit, in a

trademark analysis, and requires that ‘particularly

compelling’ circumstances exist before an injunction can

issue in view of a first amendment objection, the court

still finds such relief appropriate here.

Westchester Media Co., L.P. v. PRL USA Holdings, Inc.

, 1999 U.S.

Dist. LEXIS 12333, *177-78 (S.D.Tex. Aug. 4, 1999). The court then

recapitulated the f indings which formed the basis for this

conclusion. Westchester would apparently require the court to

state in so many words that it found a particularly compelling

likelihood of confusion. But its argument is about the clarity

rather than the substance of the court’s opinion. The substance

followed Sugar Busters

.

Westchester next argues that even if the S ugar Busters

standard is applied, there is ins ufficient evidence of a

“particularly compelling” likelihood of confusion. In support of

this argument, Westchester challenges several of the findings under

the digits of confusion analysis, hoping to deconstruct piecemeal16

the ultimate f inding of likelihood of confusion. Before

considering Westchester’s contentions, it is necessary to emphasize

that the “particularly compelling” standard applies to the ultimate

issue, not to the strength of the evidence on each of the

subsidiary digits of confusion. T win Peaks so depicted the

standard: “[T]he finding of likel ihood of confusion must be

particularly compelling

. . . .” T win Peaks

, 996 F.2d at 1379; see

also Sugar Busters , 177 F.3d at 269 n.7.

b. Westchester’s intent

Westchester denies that, as the magistrate judge found,

it intentionally aligned itself with PRL to confuse the consuming

public as to the source of the New POLO Magazine.

An innocent intent in adopting a mark does not immunize

an intent to confuse in the actual use of the mark. S ee Elvis

Presley Enters.

, 141 F.3d at 203; see also R ESTATEMENT (T HIRD ) OF U NFAIR

C OMPETITION § 22 cmt. c (1995)[hereinafter R ESTATEMENT ]. In light of

Goodman’s history with and commitment to the sport of polo, the

magistrate judge did not find that Goodman purch ased the “Polo”

mark with intent to trade on PRL’s reputation and goodwill.

See Westchester Media Co. , 1999 U.S. Dist. LEXIS 12333, *58. The

court did, however, find that Westchester’s actual use of the

“Polo” mark evidenced an intent to trade on PRL’s reputation. The

magistrate judge exhaustively reviewed evidence

-- magazine covers,17

editorial and advertising content, and customer surveys

-- showing

that the New POL O Magazine primarily covers affluent lifestyles,

fashion, and travel rather than the sport of polo. The evidence

also supports an inference that, in deciding to publish both Polo

Player s Edition and the New POLO Magazine, Westchester was

attempting to segregate lifestyle content from techn i cal polo

content in an attempt to trade on the lifestyle image already

projected by PRL’s “Polo” mark. Certainly, other explanations for

Westchester’s decision to publish two polo-related mag azines are

p ossible. But in the absence of strong reasons to prefer those

alternative explanations

-- none of which were found credible, see

id. at *60 -- we cannot say that the court’s characterization of

Westchester’s intent is clearly erroneous.

c. Similarity of Products and Services

Ralph Lauren publishes no magazine or periodical, but the

magistrate judge nonetheless found this digit of confusion in PRL’s

favor because magazines are within PRL’s “natural zone of

e xpansion.” S ee Westchester Media Co.

, 1999 U.S. Dist. LE XIS

12333, *46. Westchester challenges this finding. Similarity is a

close question, but we cannot say that the magistrate judge clearly

erred.

In general, “[t]he greater the similarity between

products and service s, the greater the likelihood of confusion.”18

Exxon Corp. v. Texas Motor Exch. of Ho uston, Inc. , 628 F.2d 500,

505 (5th Cir. 1980). But direct competition between the parties’

products is not required in order to find a likelihood of

confusion. S ee Elvis Presley Enters.

, 141 F.3d at 202; see also 4

M C C ARTHY §§ 24:13-14. When products or services are noncompeting,

t he confusion at issue is one of sponsorship, affiliation, or

connection. See Elvis Presley Enters. , 141 F.3d at 202.

The danger of affiliation or sponsorship confusion

increases when the junior user’s market is one into which the

senior user would naturally expand. See R ESTATEMENT § 21(e) & cmt.

j. The actual intent of the senior user to expand is not

particularly probative for this purpose. See Elvis Presley

Enters.

, 141 F.3d at 202. Instead, consumer perception is the

controlling factor. “‘If consumers believe, even though falsely,

that the natural tendency of producers of the type of goods

marketed by the prior user is to expand into the market for the

type of goods marketed by the subsequent user, confusion may be

likely.’” Id., quoting R ESTATEMENT § 21 cmt. j.

Following the applicable law, the court examined whether

the consuming public could believe there is an association between

PRL and the New POLO Magazine. PRL has a strong presence not only

in fashion marketing but across a spectrum of products . The New

POLO Magazine, with its emphasis on fashion, elegance, and affluent4 It is irrelevant to the questions of similarity or “natural zone of

expansion” that PRL advertises in magazines.

19 lifestyles, appeals to the same markets in which PRL has a

widespread identity. 4 Significantly, the noncompeting products of

PRL and Westchester have been marketed to consumers in the same

context (Neiman Marcus promotions). These facts led the court to

find that there was a likelihood that consumers would believe that

PRL is associated with New POLO Magazine.

W e stchester dismisses the idea that magazines are a

natural zone of expansion for PRL by emphasizing that no fashion

designer has ever started a magazine. But whether PRL could ever

successfully publish a magazine is not the issue here; consumer

perc eption is the issue. This finding is not the court’s most

significant or unassailable one, but it is not clearly erroneous.

d. Evidence of Actual Confusion

Westchester ar gues clear error in the finding that the

1997 “relaunch” of New POLO Magazine resulted in an increase in

incremental confusion. In so doing, it is essentially challenging

the survey results submitted by PRL and upon which the magistrate

judge relied. S ee Westchester Media Co.

, 1999 U.S. Dist. LEXIS

12333, *96.5 Fo r a detailed explanation of how PRL’s survey worked, s ee

Westchester Media Co. , 1999 U.S. Dist. LEXIS 12333, *88-91.

20 Westchester attacks PRL’s survey principally on grounds

that it used a f aulty control. 5 According to Westchester, PRL’s

survey was flawed because it did not distinguish between actionable

confusion produced by the New POLO Magazine and permissible

confusion attributable to the Old POLO Magazine. Westchester

argues that the survey should have used the Old POLO Magazine as a

control rather than Polo Players Edition. This would have

effectively isolated the variable at issue here, which is the

change in the look of the relaunched magazine, not the name. By

using Polo Players Edition as a control, another variable was

admitted

- - the name of the magazine -- which meant that the one

variable at issue, the magazine’s new look, could not be isolated,

and the incremental confusion attributable solely to the magazine’s

new look cou ld not be determined. In other words, some of the

incremental confusion could have been attributed to the different

names, Polo Players Edition and POLO.

Westchester’s argument makes sense, but it is not so

compelling as to produce clear error in the court’s reliance on

PRL’s surv ey for evidence of incremental confusion. This is

because the magistrate judge found that Polo Players Edition is the

continuation of Old POLO Magazine. It would have been preferable

for the PRL survey to use the Old POLO Magazine as a control. But6 Westchester left unchallenged: the type of mark infringed (strong),

t he similarity between the two marks, the identity of the retail outlets and

purchasers, and the identity of the advertising media used. See Elvis Presley

Enters.

, 141 F.3d at 200 (accepting the district court’s findings on the digits

of confusion that were not challenged by the parties).

21 Polo Players Edition is not so different from the Old POLO Magazine

as to ma ke it clearly erroneous to rely on PRL’s survey. In

addition, trademark law is concerned wi th the level of actual

confusion in the current marketplace. Consumers today are exposed

to Polo Players Edition, not the Old POLO Magazine . These two

magazines now define the differen ce between permissible and

actionable confusion.

d. Weighing the digits of confusion

Because we have found no clear error in the digits of

confusion challenged by Westchester, and because the magis trate

judge’s findings on the remaining digits were unchallenged, we must

conclude that a li kelihood of confusion exists between New POLO

Magazine and the PRL marks. 6

As has been discussed, Westchester’s First Amendment

interest in choosing a title for its magazine requires a

particularly compelling like lihood of confusion. S ugar Busters

,

177 F.3d 269 n.7. This finding, too, is supported by the record.

Westchester’s New POLO Magazine and PRL’s products target the same

cons umers and on occasion use the same retail outlets. The New

POLO Magazine’s emphasis on fashion, affluent lifestyle, and travel22

can plausibly lead consumers to believe that PRL is associated with

the New POLO Magazine. Buttressing these core findings is the

evidence of actual confusion, both anecdotal and survey-based, and

Westchester’s intent to trade on PRL’s goodwill and reputation.

Unless one of Westchester’s defenses prevails, the appellants have

infringed upon PRL’s marks.

B. Defenses

Westchester’s defenses are based on laches, acquiescence

and the incontestability of its trademark.

1. Laches

“Laches is commonly defined as an inexcusable delay that

results in prejudice to the defendant.” C onan Properties

, 752 F.2d

at 153. Laches comprises three elements: (1) delay in asserting

one’s trademark rights, (2) lack of excuse for the delay, and (3)

undue prejudice to the alleged infri nger caused by the delay.

Elvis Presley Enters. , 141 F.3d at 205.

The trial court ruled that Westchester established none

of these elem ents. There was no delay because the New POLO

Magazine “is an entirely new product and different from the Old

POLO Magazine in most aspects,” a fin ding we have upheld. S ee

Westchester Media Co.

, 1999 U.S. Dist. LEXIS 12333, *196. PRL’s

long familiarity with the Old POLO Magazine

-- in 1975, Ralph

Lauren granted Ami Shinitzky an exclusive interview for Old POLO7 The magistrate judge also did not clearly err in dismissing

Westchester’s argument of undue prejudice

-- in the amount of $1.3 million

-- by

PRL’s delay in objecting to the Ne w POLO Magazine. PRL cannot be held

responsible for Westchester’s investment prior to its learning about the planned

launch of the New POLO Magazine; any investment made b y Westchester after PRL

objected to Westchester’s use of its trademark was made at Westchester’s risk.

23 Magazine -- was therefore immaterial to its objections to the New

POLO Magazine. The court found that PRL registered its written

objections with Westchester at the latest in its cease and desist

letter of September 26, 1997, not an unreasonable amount of time

from the June meeting between We stchester’s then-publisher Reid

Slaughter and PRL’s Liz Morris. See id . at *195.

Westchester challenges the laches findings by repeatedly

pointing to its tr ademark registration for an “equestrian sports

and lifestyles” magaz ine, in effect since 1975, and noting that

both the old and the new POLO magazines fit this description. It

follows, according to Westchester, that if PRL ever had a claim

against a magazine titled “Polo”, it ripened in 1975 or at the time

of Ralph Lauren’s interview in the Old POLO Magazine, or no later

than 1989 when Shinitzky launched the first of his issues with

expanded lifestyle content. While it may be true that both the old

and new POLO magazines concern “equestrian sports and lifestyles”,

Westchester’s argument fai ls to crack the essential barrier to

relief

-- the court’s finding that New POLO Magaz ine is not a

continuation of Old POLO Magazine but is in fact a different

entity. 7See Conan Properties , 752 F.2d at 151-52.

24 2. Acquiescence

Westchester contends that PRL’s failure to object to its

relaunch efforts at the June 1997 meeting between Slaughter and

PRL’s Morris constituted an implicit assurance that induced

reliance. C onan Properties

, 752 F.2d at 153. The argument is

unpersuasive, inasmuch as Westchester has not successfully

challenged the trial court’s finding that Westchester misled Morris

about the extent of the new venture. Under these circumstances,

PRL did not legally acquiesce in the use of the mark o n New POLO

Magazine.

3. Incontestability

Westchester asserts that pursuant to § 33(b) of the

Lanham Act, its incontestable registration for the mark “Polo” on

or in connection with a “magazine on the subject of equestrian

sports and lifestyles” conclusively proves its right to publish the

New POLO Magazine. Westchester’s argument presumes, however, that

the registration it purchased covers New POLO Magazine.

Section 33(b) provides that an incontestable registration

is conclusive evidence of:

the exclusive right to use the mark on or in connection

with the goods or services specified in the affidavit

filed under the provisions of section 15.

15 U.S.C. § 1115(b). A mark becomes incontestable through five

years’ continuous use following federal registration and compliance8 15 U.S.C. § 1115(b) lists eight defenses to an incontestable mark,

n one of which applies here, and M C C ARTHY identifies a few others. 5 M C C ARTHY §

32:147.

9 Section 15 of the Lanham Act, 15 U.S.C. § 1065, specifies the prior

use defense, as it provides in pertinent part that a mar k registered and

supported by the proper affidavits is incontestable

except to the extent, if any, to which the use of a mark registered

on the principal register infringes a valid right acquired under the

law of any State or Territory by use of a mark or trade name

continuing from a date prior to th e date of the publication under

this chapter of such registered mark.

25 with statutory formalities. 15 U.S.C. § 1065. An incontestable

mark is subject to challenge only under limited circumstances

including the prior use defense of § 1065. 8 The parties argue at

length over the relatively novel issue of the scope of PRL’s rights

as a prior user. 9 It is unnecessary to address that issue,

however, because Westchester’s incontestability argument first runs

afoul of the finding that Old POLO a nd New POLO magazines are

different products. Hence, New POLO had not been published for the

statutory minimum five years when PRL challenged appellants’ use of

the mark.

Westchester contends that New POLO, like its predecessor,

is a “magazine on the subject of equestrian sports and lifestyles”.

As both magazines fit this literal description of the mark under

which they were registered, the mark is incontestable for “goods

.

. . specified in the affidavit filed under

. . . section 15.” Such

a literal application of § 1115 has some appeal, but it ignores the

district court’s finding that the two magazines are not the same10 PRL also claimed dilution under Texas state law. T X

. B US

. & C OM

. C ODE

§ 16:29. The magistrate ruled, however, that this claim was pre-empted by

Westcheste r’s federal registration of the “Polo” mark. S ee Westchester Media

Co.

, 1999 U.S. Dist. LEXIS 12333, *128-29. Neither party challenges this ruling,

and we will leave it undisturbed.

11 Contrary to Westchester’s position, this case does not involve

impermissible retroactive application of the FTDA. PRL’s dilution claim is based

on Westchester’s continuing use of the “Polo” mark after enactment of the FTDA.

See Viacom Inc. v. Ingram Enters., Inc. , 141 F.3d 886, 889 (8th Cir. 1998).

26 product. A federal registration does not create the trademark; the

trademark is acquired by use. S ee 3 M C C ARTHY § 19:3; Volkswagenwerk

Aktiengesellschaft v. Wheeler , 814 F.2d 812, 819 (1st Cir. 1987).

The incontestable “Polo” mark was used to title a magazine about

the sport of polo, and cannot be transferred to a fundamentally

different magazine. Thus, the incontestability of the mark as

applied to Old POLO Magazine does not shield New POLO from attack.

C. The Federal Trademark Dilution Act

PRL alleges dilution of its “Polo” mark under 15 U.S.C.

§ 1125(c)(3), the Federal Trademark Dilution Act (“FTDA”), which

became effective January 1996. 10 The magistrate judge declined to

r ule on this claim, finding that the Fifth Circuit had not y e t

addressed the standards governing relief under the FTDA and noting

that PRL’s requested relief was the same as that orde red in the

i nfringement action. S ee Westchester Media Co.

, 1999 U.S. Dist.

LEXIS, 12333, *138. This court must reach the claim, however, as

it potentially affords a distinct basis of equitable relief. 1112 There are two recognized forms of dilution: blurring and tarnishment.

See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Division of

Travel Development

, 170 F.3d 449, 4 52 (4th Cir. 1999)(noting that the FTDA’s

legislative history indicates congressional understanding that dilution results

from blurring or tarnishment). Blurring involves “‘the gradual whittling away

or dispersion of the identity and hold upon public mind of the mark or name by

its use upon noncompeting goods.’” E lvis Presley Enters., Inc. v. Capece

, 950

F.Supp. 783, 798 (S.D. Tex. 1996), quoting Frank I. Schecter, The Rational Basis

of Trademark Protection

, 40 Harv. L. Rev. 813, 825 (1927). Tarnishment results

when one party uses another’s mark in a manner that tarnishes or appropriates the

goodwill and reputation associated with the mark. S ee M C C ARTHY §§ 24:67-69. PRL

alleges that New POLO Magazine both blurs and tarnishes its “Polo” mark.

27 Under the FTDA, the owner of a “famous mark” is protected

“against another person’s commercial use . . .of a mark or trade

name, if such use begins after the mark has become famous and

causes dilution of the distinctive quality of the mark.” 15 U.S.C.

§ 1125(c)(1). The FTDA defines dilution as:

the lessening of the capacity of a famous mark to

identify and distinguish goods and services, regardless

of the presence or absence of (1) competition between the

owner of the famous mark and ot her parties, or (2)

likelihood of confusion, mistake or deception.

15 U.S.C. § 1127. Injunctive relief may be ordered for a

violation, but if a willful violation is proved, the remedy may

include restitutionary, compensatory, or specific relief in the

form of destruction of offending articles. Id. §§ 1125(c)(1)-(2),

1117(a), 1118.

To prevail on its dilution claim, PRL must prove that its

marks are famous and distinctive; that Westchester adopted its mark

after PRL’s had become famous and distinctive; and that Westchester

caused dilution of PRL’s mark. 12 S ee 15 U.S.C. §§ 1125(c)(1), 1127;13 Several courts outside the Fourth Circuit have followed the standard

of proof announced in Ringling Bros.

. S ee Playboy Enters., Inc. v. Netscape

Communications

, 55 F.Supp. 2d 1070 (C.D. Cal. 1 999); A merican Cyanamid Co. v.

Nutraceutical Corp. , 54 F.Supp. 2d 379 (D.N.J. 1999).

14 At least one court outside the Second Circuit has agreed with N abisco

.

See Eli Lilly and Co. v. Natural Answers, Inc. , 86 F.Supp. 2d 834, 852 (S.D.

Ind. 2000).

15 Fifth Circuit courts have encountered FTDA claims but have either

declined to rule on them, see Sunbeam Products, Inc. v. West Bend Company , 123

F.3d 246, 261 n. 28 (5th Cir. 1997), or have avoided an analysis of the new Act,

see Elvis Presley Enters. , 950 F.Supp. at 797 (using New York’s antidilution

statute as a guide to interpreting the FTDA).

28 Ringling Bros.

, 170 F.3d at 452. The parties do not contest the

first two of these requirements. Rather, they dispute whether

proof of dilution requires a showing of actual or merely threatened

economic harm. Westchester, relying on a recent Fourth Circuit

opinion, argues that proof of dilution under the FTDA requires

proof of “actual, consummated harm.” Ringling Bros. , 170 F.3d at

464. 13 PRL counters with a Second Circuit opinion holding that the

FTDA requires only proof of a likelihood of dilution. S ee Nabisco,

Inc. v. PF Brands, Inc. , 191 F.3d 208, 224-25 (2d Cir. 1999). 14

As an issue of first impression in this Circuit, 1 5 we

endorse the Fourth Circuit’s holding that the FTDA requires proof

of actual harm since this standard best accords with the plain

meaning of the statute. There is a key difference between the

state antidilution statutes that formed the backdrop for passage of

the FTDA and the FTDA itself. Whereas state antidilution statutes

incorporate, often expressly, the “likelihood of dilution”16 S ee, e.g.

, T EX .B US

. & C OM

. C ODE §16.29 (“A person may

. . . enjoin an act

likely to

. . . dilute the distinctive quality of a mark

. . . .”); N.Y. G EN

. B US

.

L AW § 360-1 (“Likelihood of

. . . dilution of the distinctive quality of a mark

shall be a ground for injunctive relief . . . .”); C AL

. B US

. & P ROF

. C ODE § 14330

(same).

17 Commentators have noted this key difference between the federal

dilution act and its state counterparts. S ee, e.g.

, Robert N. Klieger, Trademark

Dilution: The Whittling Away of the Rational Basis for Trademark Protection

, 58

U. Pitt . L. Rev. 789, 840 (1997)(“In place of the ‘likelihood of dilution’

language of the state antidilution statutes, the [federal Act]

. . . creates an

actual dilution requirement

. . . .”); see also Ringling Bros.

, 170 F.3d at 461

n. 6.

29 standard, 16 the federal statute does not. S ee Ringling Bros. , 170

F.3d at 461. Instead, it prohibits any commercial use of a famous

mark that “causes dilution.” 15 U.S.C. § 1125(c)(1). Both the

present tense of the ve rb and the lack of any modification of

“dilution” support an actual harm standard. 17

Several persuasive contextual indicators were also

pointed out by the Fourth Circuit. For instance, the conduct

proscribed under the FTDA is “another person’s . . . use,” 15

U.S.C. § 1125(c)(1), not merely threatened use of the mark. See

Ringling Bros.

, 170 F.3d at 461. In addition, “unlike the state

antidilution statutes which provide only injunctive relief,

reflecting their sole focus on the prevention of future harm, the

federal Act provides that where willful conduct is shown,

compensatory and restitutionary relief may be awarded--for

necessarily consummated economic harm. 15 U.S.C. §§ 1125(c)(2),

1117(a), 1118.” Id.30 The Nabisco opinion asserts that an actual harm standard

allows “excessive literalism to defeat the intent of the statute.”

See Nabisco

, 191 F.3d at 224. But in the absence of any authority

stating that Congress intended a “likelihood of dilution” standard

for the FTDA, we may not depart from the plain meaning of the

statute.

The magistrate judge reviewed the current and projected

circulation for the New POLO Magazine, and found that PRL made no

showing of actual harm. S ee Westchester Media Co.

, 1999 U.S. Dist.

LEXIS, 12333, *142. Because we have concluded that the FTDA

requires proof of actu al dilution, this finding, which we cannot

say was clearly erroneous, dooms PRL’s dilution claim.

III.

REMEDIES

The magistrate judge entered a broad injunction ordering

Westchester to cease publ ishing the New POLO Magazine under the

name POLO. On appeal, the parties have staked out diametrically

opposed positions concerning the First Amendment ramifications of

the injunction and the availability and advisability of a narrower

disclaimer remedy. Rather than respond to these adversarially

charge d arguments, however, this discussion will explain certain

misconceptions that influenced the magistrate judge’s decision to

adopt broad rather than targeted injunctive relief. In brief, the31

magistrate judge unduly discounted the First Amendment interests

impaired by the injunction and, despite an otherwise heroic effort

in unraveling this case, failed to accommodate its distinctive

features.

This court reviews injunctive relief in trademark cases

as in other cases under the abuse o f discretion standard. S ee

Pebble Beach Co.

, 155 F.3d at 550. An abuse of discretion

automatically inhe res in an injunctive decree if the trial court

misinterpreted applicable law. S ee P eaches Entertainment Corp. v.

Entertainment Repertoire Assocs., Inc.

, 62 F.3d 690, 693 (5th Cir.

1995). As with injunctive relief generally, an equitable remedy

for trademark infringement should be no broader than necessary to

prevent the deception. S ee Soltex Polymer Corp. v. Forte x

Industries, Inc.

, 832 F.2d 1325, 1329 (2d Cir. 1987); B etter

Business Bureau, Inc. v. Medical Directors, Inc.

, 681 F.2d 397, 405

(5th Cir. 1982).

The magistrate judge concluded that the rights of a

trademark owner need not yield to First Amendment concerns “where

a defendant has alternative avenues of commu nication available.”

Westchester Media Co.

, 1999 U.S. Dist. LEXIS 12333, *173, citing

Reddy Communications, Inc. v. Environmental Action Foundation,

Inc.

, 1977 U.S. Dist. LEXIS 12968, 199 U.S.P.Q. 630, 634 (D.D.C.18 Other cases cited by the magistrate judge, Mutual of Omaha Ins. Co.

v. Novak

, 836 F.2d 397, 402 (8th Cir. 1987) and Dallas Cowboys Cheerleaders, Inc.

v. Scoreboard Posters, Inc.

, 600 F.2d 1184, 118 8 (5th Cir. 1979), essentially

make the same argument as the language from Reddy Co mmunciations

-- that the

First Amendment does not give “license” to infringe upon trademark rights.

Westchester Media Co.

, 1999 U.S. Dist. LEXI S 12333, *167, *172. Though

Scoreboard Posters involved copyright law (and arguably should not be cited in

a trademark opinion), both it and Novak rely on the same authority as R eddy

Communications and belong to the same line of cas es, the so-called “adequate

alternative” cases. Thus, our rejection of reasoning behind R eddy Communications

is also a rejection of these other two cases.

32 1977). 18 The alternative avenue is Westchester’s publishing its

lifestyle magazine under any title other than POLO. Even if that

is all the injunction ordered, a point to be discussed later, the

magistrate judge too abruptly dismissed First Amendment concerns.

For one thing, several circuit courts have rejected the R eddy

Communications approach, holding instead that even where trademark

infringement has been found, First A m endment interests should

influence the choice of remedy. S ee L.L. Bean, Inc. v. Drake

Publishers, Inc. , 811 F.2d 26 (1st Cir. 1987); Consumers Union of

the United States, Inc. v. General Signal Corp.

, 724 F.2d 1044 (2d

Cir. 1983). And on its own terms, the reasonable alternative

avenues approach bears a tenuous relation to communica tive and

property interests embodied in trademarks. See L.L. Bean

, 811 F.2d

at 29; see also Robert C. Denicola, T rademarks as Speech:

Consitutional Implications of the Emerging Ratio n ales for the

Protection of Trade Symbols

, 1982 Wis. L. Rev. 158, 197 (1982).

More to the point, as this court has a lready been committed to

exercising sensitivity for First Amendment interests where33

trademark violations are asserted, we are bound by our precedent

rather than by Reddy Communications

. See Better Business Bureau

,

681 F.2d at 404-05 (reviewing the scope of an injunction for

compliance with the First Amendment).

The magistrate judge also labeled Westchester’s title

“commercial speech”, suggesting that it deserves less First

Amendment protection for that reason. Westchester Media Company

,

1999 U.S. Dist. Lexis 12333, *170. As has been previously noted,

a magazine title is a hybrid between commercial and artistic

speech. S ee Rogers

, 87 5 F.2d at 998. Here, the speech is

expressive to an appreciable degree, and it requires more

protection than the labeling of ordinary commercial products. I d

.

Insofar as the p urpose of a remedy for trademark

infringement is to elimina te the likelihood of confusion between

the holder of the mark and the interloper, the remedy might in a

particular case require suppression of otherwise constitutionally

protected speech. S ee, e.g.

, Dr. Suess Enters., L.P. v. Penguin

Books USA, Inc.

, 109 F.3d 1394 (9th Cir. 1997); Dallas Cowboy

Cheerleaders, Inc. v. Pussycat Cinema, Ltd.

, 604 F.2d 200 (2d Cir.

1979). Like fraudulent speech, speech that misleads or creates

confusion is not protected under the First Amendment. See Better

Business Bureau , 681 F.2d at 404. Where the allegedly infringing

speech is at least partly literary or artistic, however, and not19 Other cases have disallowed a disclaimer remedy after a fact-specific

conclusion that it would be ineffective. S ee, e.g., Boston Professional Hockey

Association, Inc. v. Dallas Cap & Emblem Mfg, Inc.

, 510 F.2d 1004, 1013 (5th Cir.

1975). Neither these cases, nor others in which a disclaimer has been rejected

without a discussion of First Amendment interests, e.g

., Playboy Enters., Inc.

v. Chuckl e berry Publishing, Inc.

, 687 F.2d 563, 571 (2d Cir. 1982), should be

understood to defe at the use of disclaimers where they would be effective to

accommodate conflicting legal principles.

34 solely a commercial appropriation of another’s mark, the preferred

course is to acc ommodate trademark remedies with First Amendment

interests. One obvious mode of accommodation is a disclaimer that

will officially dissociate the junior user of the mark from the

senior user’s product. Disclaimers have frequently been approved

by this 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. 19 Even in this case, the court issued a

p reliminary injunction requiring Westchester to publish the New

POLO magazine with a disclaimer of any relation to PRL.

When the court ultimately rejected a disclaimer, it took

insufficient account of Westchester’s continuing First Amendment

interests

-- in both the u se of the title and content of its

ongoing publication

-- and failed to implement the general rule

that an equitable remedy should be no broader than the scope of the

violation.

Unlike the magistrate judge, we are persuaded for several

reasons that a broad injunction may be unnecessary to remedy the35

s ource confusion and will therefore remand for further factu a l

development.

Firs t, in this unusual case, it is undisputed that

Westchester has the right to publish some magazine under the title

POLO. The remedial injunction acknowledges this fact: it attempts

t o prohibit use of the title on New POLO magazine while allowing

Westchester to publish Polo Players Edition, the sport- centered

periodical, as POLO. The injunction, although deceptively simple

in concept, would in practice pose a continual threat of

substantive editing to the magazine, because the editorial line

between the publications is not clear. Old POLO magazine, the

forerunner of Polo Players Edition, contained lifestyle advertising

by manufacturers like PRL. Further, it is perfectly consistent

with the theme of a polo sport-centered periodical to include such

articles as profiles of celebrity players and supporters of polo or

features concerning venues where polo is played. And unless

Westchester confined POLO (formerly Po lo Players Edition) to

distribution to the members of the USPA, arguments could arise

whether the appellant breac hed the scope of the injunction by

seeking a broader circulation and hence a wider audience for the

sport. The content-based impact of this injunction could extend

beyond the title of West chester’s magazine, posing special First

Amendment concerns.36 Second, and also unique to this case, is PRL’s claim to

police use of the “Polo” mark by the publisher of USPA’s official

magazine. PRL products became famous by basking in the reflected

glow of an elegant sport. PRL now asserts that it, not the sport,

is the source of the glow. While PRL’s primary claim is the

essence of the ordinary trademark case, we cannot be blind, when

balancing the equities, to the fact that PRL is arrogating the very

name of a sport from the players’ publication. In a sense, PRL is

biting the hand that fed it.

Thir d, 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

confusio n after the preliminary injunction ordered New POLO

published with disclaimers. See Westchester Media Co. , 1999 U.S.

Dist. LEXIS 12333, *224. The magistrate judge speculated that the

absence of confusion was due to publicity surrounding this lawsuit

rather than to the disclaimers. Speculation has no evidentiary

weight, however. The magistrate judge also found that the survey

evidence submitted by Westcheste r proved that the disclaimer was

ineffective in alleviating source confusion. S ee Westchester Media

Co

., 1999 U.S. Dist. LEXIS 12333, *237-38. But the survey results

were not necessarily entitled to more weight than the lack of

actual confusion following the dissemination of disclaimers. A20 Westchest er Media Co

. , 1999 U.S. Dist. LEXIS 12333, *233-34 (“[A]

joint pretrial order signed by both parties

. . . governs the issues in evidence

to be presented at trial.

. . . [I]f a claim or issue is omitted from the order,

it is waiv ed,” citing E lvis Presley Enters.

, 141 F.3d at 206 (citations

omitted)).

37 lack of actual confusion, though not determinative, is relevant to

the fa shioning of relief. See 3 M C C ARTHY § 23:18. In any event,

the effectiveness of a disclaimer remedy, being considered at the

end of a long trial, was not thoroughly explored. On remand, the

parties can draw from the experience of New POLO’s publication with

a disclaimer pending this appeal.

Fourth, the markets f or both PRL’s products and

Westchester’s magazine consist of relatively sophisticated buyers.

See Soltex Polymer Corp.

, 832 F.2d at 1330 (the presence of

sophisticated consumers weighs in favor of disclaimer relief).

Such buyers are more likely to notice, read, and understand the

import of any written disclaimer s attached to Westchester’s

magazine. S ee Times Mirror Magazines, Inc. v. Las Vegas Sports

News

, 2000 WL 526779, *10 (3d Cir. Apr.28, 2000) (“Unsophisticated

buyers

. . . are more vulnerable to confusion, mistake, and

misassociations against which the trademark protects”).

In requiring discl aimer relief to be reconsidered, we

re ject 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. 20 Read in context, the record38

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 re sponsibility and have reviewed

the breadth of injunctive relief in the face of similar waiver

arguments. S ee Allard Enterprises, Inc. v. Advanced Prog ramming

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 also expressed skepticism that Westchester,

after violating th e preliminary injunction order, could not be

trusted to adhere to a disclaimer. S ee Westchester Media Co.

, 1999

U.S. Dist. LEXIS 12333, *234. Although Westchester’s track record

of compliance was relevant to pe rmanent disclaimer relief, the

errors cited by the court were minor. Westchester was accused, not

of refusing to disseminate the disclaimer, but of making it

inconspicuous. S ee id. at *228-29. Westchester’s alleged

noncompliance was apparently not serious enough for PRL to complain

about before trial

-- except for a complaint about the language of

a disclaimer letter that Westchester promptly changed. Westchester21 This is not to say that if Westchester persistently failed to post

proper disclaimers on the magazine, a narrow injunctive order would remain

appropriate.

22 S ee Westchester Media Co. , 1999 U.S. Dist. LEXIS 12333, *236 (“In

deciding whether t o order an injunction, it is important to remember that in

fashioning relief against [the infringing] party . . . , a court of equity is

free to proscribe activities that standing alone, would have been unassailable,”

citing Pebble Beach Co.

, 155 F.3d at 550); see also id. at *241-42 (citing Conan

Properties

, 752 F.2d at 153, for the same proposi tion: that courts can issue

broad injunctions prohibiting infringing conduct as well as conduct that would

not usually justify relief).

39 also posted disclaimer stickers on an issue of magazines published

without the nece ssary language. It was not alleged that PRL was

hurt as a result of Westchester’s behavior; on the contrary, the

court acknowledged that there were no reports of actual confusion

after the disclaimer was ordered. See id. at *224. 21

Similarly, the discovery abuses cite d by the court are

inadequate to bar disclaimer relief. If such abuses were not

serious enough to warrant the adverse inferences PRL asked for

during trial, see id. at *230-31, then they do not warrant an

overbroad injunction.

Finally, we reject the district court’s repeated

invocations of the “safe distance” line of cases in order to

justify imposing a broad injunction. 22 In B etter Business Bureau

,

this court faced facts analogous to those here and disapproved of

the “safe distance” principle where First Amendment interests are

at stake. See Better Business Bureau , 681 F.2d at 404-05.40 Because the court thus erred in too read ily dismissing

the possibility of a disclaimer or other limited injunctive relief,

we must remand for further factual d evelopment and for

reconsideration whether a disclaimer procedure better comports with

First Amendment principles than an outright prohibition on

Westchester’s use of “Polo” for New POLO Magazine. In other words,

as this court concluded in Better Business Bureau

, the appropriate

remedy may be “not less speech, but more.”

IV.

For the foregoing reasons, the judgment of the court is

AFFIRMED in PART on liability, but VACATED and REMANDED in PART on

the question of the appropriate remedy.

Pending a final order on remand in the trial court, this

court’s injunction pending appeal, which continued the disclaimer

order of the magistrate judge, will remain in effect.