Charles of the Ritz Group Ltd. v. Quality King Distributors, Inc., 371
| Citation | 832 F.2d 1317 |
| Decision Date | 03 November 1987 |
| Docket Number | D,No. 371,371 |
| Parties | , 4 U.S.P.Q.2d 1778 CHARLES OF THE RITZ GROUP LTD. and Yves Saint Laurent Parfums Corp., Plaintiffs-Appellees, v. QUALITY KING DISTRIBUTORS, INC., Deborah International Beauty, Ltd., and Deborah Richman, Defendants-Appellants. ocket 87-7623. |
| Court | United States Courts of Appeals. United States Court of Appeals (2nd Circuit) |
David S. Klafter, White and Case, New York City (Lile H. Deinard, Carole P. Sadler, of counsel), for plaintiffs-appellees.
Robert L. Sherman, Ruskin, Schlissel, Moscou, Evans & Faltischek, Mineola, N.Y., for defendant-appellant Deborah Intern. Beauty, Ltd.
Before KAUFMAN and ALTIMARI, Circuit Judges, and TENNEY, District Judge. *
Consumed by the feud between her family and Romeo's, Juliet mused But Juliet could as easily have been speaking about the dispute before us on appeal. Here, the combatants are two fragrance companies: one produces a luxury perfume and the other manufactures a low-priced "smell-alike." They have been feuding over claims of trademark infringement for more than a year, and this appeal represents the latest skirmish.
The appellees, Charles of the Ritz Group Ltd. ("Charles of the Ritz"), manufactures a fragrance called Opium. One of Deborah International Beauty, Ltd.'s ("Deborah International") products, Omni, is not only similar in scent to Opium, but it also copies Opium's trade dress and includes a direct reference to Opium in a slogan appearing on a tab which rises from the top of the box.
On May 30, 1986, Charles of the Ritz filed suit in the United States District Court for the Southern District of New York, pursuant to Section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (1982), seeking a preliminary injunction against Deborah International, charging that use of similar trade dress as well as the name Opium in the slogan on the top of the Omni box was likely to cause consumer confusion.
In a decision issued June 11, 1986, Judge Weinfeld, finding a likelihood of confusion in the use of the trademark Opium in Omni's slogan but not in the similarity of trade dress, granted a preliminary injunction against the phrase, "If you like OPIUM, you'll love OMNI." Two months later, Deborah International moved for "clarification," proposing a substitute, "If you like OPIUM, a fragrance by Yves Saint Laurent, you'll love OMNI, a fragrance by Deborah Int'l Beauty." On August 21, 1986, Judge Weinfeld rejected this suggestion in a second order. These orders were not appealed.
At issue here is a third version, This is essentially a combination of the August 1986 alternative and a disclaimer. On July 16, 1987, Judge Weinfeld agreed to enjoin use of this substitute but denied Charles of the Ritz's motion to hold appellants in contempt.
We affirm the decision below for three reasons. First, a balancing of all the factors enumerated in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, L.Ed.2d 25 (1961), most of which were considered in the court's earlier decisions, results in a finding of consumer confusion. Second, district courts must be given wide latitude in fashioning enforcement mechanisms for earlier injunctions. Third, Deborah International failed to introduce empirical evidence that the disclaimer actually lessens consumer confusion as required to overcome such a previous finding.
In 1977, Charles of the Ritz introduced the fragrance Opium, a registered trademark produced and marketed by its wholly-owned subsidiary, Yves Saint Laurent Parfums Corp. The Opium line includes several related fragrance products including perfume, eau de toilette, and bath powder. Appellees claim that the best-selling product in the line, "Eau de Toilette Natural Spray," has been infringed by the appellants.
Opium products are packaged in trade dress consisting of an oblong exterior carton colored red and blue, with horizontal gold-colored stripes and "oriental flower" design. The trade dress prominently bears the mark Yves Saint Laurent. Opium's trade dress has also been registered as a trademark used in connection with fragrances.
Opium is sold nationwide to more than 1600 department and specialty stores. Opium perfume retails for over $100 an ounce, and the 1.2 ounce Opium Eau de Toilette Network Spray sells for over $37.00 at retail.
To say the least, Charles of the Ritz has been extraordinarily successful: sales have exceeded 226 million dollars. Since 1978, Charles of the Ritz has expended in excess of 25 million dollars promoting Opium by advertising in high-circulation national and fashion magazines as well as on television, through mass mailings, and by publicity appearances by the famous fashion designer Yves Saint Laurent.
Deborah International is amoung the growing number of companies that duplicate the scents of higher-priced "designer" fragrances and offer them at inexpensive prices. One of its products, marketed under the unregistered mark Omni, is a "smell-alike" of Charles of the Ritz's Opium. Deborah International concedes that its marketing strategy has been to attract consumers who are either unwilling or unable to pay designer prices. Accordingly, the company has directed its efforts towards consumers who shop in "mass" markets such as drug stores, discount stores, chain stores and supermarkets. The suggested retail price for Omni (1.7 fluid ounces of eau de toilette) is $7.50.
To promote its products, Deborah International has chosen point-of-purchase displays depicting eight prominent designer fragrances, including Opium, as a backdrop to its own eight alternatives. The display's background riser, which has undergone textual modifications during the course of this litigation, currently contains a picture of Opium and a disclaimer which states, "The manufacturers, distributors and trademarks of the designer fragrances on this photograph are not related in any manner to Deborah International Beauty, Ltd.'s 'Scent Sational Scents.' "
Omni is sold in a trade dress consisting of an oblong carton, colored maroon, bearing the Omni mark, diagonal stripes and "palm leaves" in gold. In size and appearance the carton resembles appellees'.
The manner of display and the trade dress of the products provide the context for our analysis, but neither is directly implicated in this appeal. The issue on appeal involves a tab, bearing the disputed slogan, which projects out from the top of each package of Omni.
The district court found, and the parties essentially agree, that the perfume industry consists of two markets: "designer" or "luxury" fragrances, which are generally sold in department stores and boutiques, and "discount" fragrances, which are found in discount stores, drug stores and low-end department stores. Omni is considered a "discount" fragrance. Opium, in contrast, is regarded as a "luxury" fragrance. But while Charles of the Ritz does not distribute Opium directly to "mass" market retail outlets, certain of its wholesale distributors do. Accordingly, both product lines may appear on the same retailer's counters.
The dispute between these parties has a long and tortuous history. Indeed, as we noted, the district court order considered here is the third such order issued in little more than a year. On June 11, 1986, the trial court found that Omni's original slogan raised a substantial likelihood of confusion regarding the source of the product. Charles of the Ritz Group, Ltd. v. Quality King Distributors, Inc., 636 F.Supp. 433 (S.D.N.Y.1986) (hereinafter "first order"). Moreover, the court rejected a disclaimer, hidden inside the box, which stated, "Opium is a Registered Trademark Parfum and is not related in any manner with Deborah International Beauty, Ltd." The court noted that the placement "suggests a calculated effort by defendant to escape liability for infringement." As a result, Deborah International was enjoined from using the tab.
The court found, on the trade dress issue, "substantial and significant" differences between the two: the leaves depicted on the Omni box are bamboo or palm, and differ in shape, size, and configuration from Charles of the Ritz's registered trademark "Oriental Flower Design." As for the color pattern of the Opium package, which Charles of the Ritz also claims as part of its package design trademark, the court found them distinct: the Opium package is predominantly rust red, with top and bottom areas colored dark blue; the Omni package is predominantly maroon. Because the court held the trade dress was dissimilar, the use of a photograph of Opium on the display was also found to cause no additional confusion.
Shortly thereafter, Deborah International moved for "clarification" of the first order. It proposed a new phrase for the tab, "If You Like OPIUM, a fragrance by Yves Saint Laurent, You'll Love OMNI, a fragrance by Deborah Int'l Beauty," and suggested, in the alternative, a slogan using the words "product of" instead of the words "fragrance by." The court rejected the modified slogan (hereinafter "second order"), noting that it left the relationship between the companies and trademarks completely ambiguous.
The third order resulted from Charles of the Ritz's motion to hold Deborah International in contempt for use of the combined slogan and disclaimer or, in the alternative, to enjoin it from using the new tab. Charles of the Ritz Group, Ltd. v. Quality King Distributors, Inc., 664 F.Supp. 152, 156 (S.D.N.Y.1987). Finding insufficient evidence to hold ...
To continue reading
Request your trial
-
Pebble Beach Co. v. Tour 18 I, Ltd., Civil Action No. 93-3875.
...the burden on the defendant to provide evidence establishing that its disclaimers are effective. Charles of the Ritz Group v. Quality King Distributors, 832 F.2d 1317, 1324 (2d Cir.1987); Home Box Office v. Showtime/The Movie Channel, 832 F.2d 1311, 1315 (2d Cir.1987). With these considerat......
-
PaF Srl v. Lisa Lighting Co., Ltd., 88 Civ. 6006 (BN).
......., a New York corporation, and Hunter-Melnor, Inc., a Delaware corporation, Defendants. . No. 88 ...(Lawrence I. Lerner, pro hac vice, and Charles P. Kennedy, of counsel), and Piliero & Goldstein, ... lamps are minor, the Swan is, in terms of quality, a poor imitation of the Dove. The record is ...v. Pro-Group, Inc., 809 F.2d 971, 974 (2d Cir. 1987). ... of the goods in question.'" Charles of the Ritz Group, Ltd. v. Quality King Distributors, Inc., ......
-
Conopco, Inc. v. May Dept. Stores Co.
...Chesebrough regarding secondary meaning proves that the VICL trade dress is a "strong mark." See Charles of the Ritz Group, Ltd. v. Quality King Distrib., Inc., 832 F.2d 1317 (2d Cir.1987). Strong marks are entitled to a wide scope of protection. Squirtco, 628 F.2d at 72. The parties' respe......
-
Cartier, Inc. v. Four Star Jewelry Creations, Inc.
...issue here is whether the two companies are likely to compete directly in the same market." Charles of the Ritz Group, Ltd. v. Quality King Distribs., Inc., 832 F.2d 1317, 1322 (2d Cir.1987). To the extent that Cartier's and defendants' products compete in the same market, there is no gap t......