Calvin Klein Cosmetics, Corp. v. Parfums De Coeur, Ltd.

• Decision Date: 29 July 1987
• Docket Number: Nos. 86-5266,86-5297 and 87-5215,s. 86-5266
• Citation: 3 USPQ2d 1498,824 F.2d 665
• Parties: , 3 U.S.P.Q.2d 1498 CALVIN KLEIN COSMETICS CORPORATION, Appellant, v. PARFUMS DE COEUR, LTD., Robert Baker, Inc., d/b/a Robert Baker Associates, Appellees. CALVIN KLEIN COSMETICS CORPORATION, Appellee, v. PARFUMS DE COEUR, LTD., Robert Baker, Inc., d/b/a Robert Baker Associates, Appellants. CALVIN KLEIN COSMETICS CORPORATION, Appellant, v. PARFUMS DE COEUR, LTD. and Robert Baker, Inc., d/b/a Robert Baker Associates, Appellees.
• Court: U.S. Court of Appeals — Eighth Circuit

Page 665

824 F.2d 665

8 Fed.R.Serv.3d 580, 3 U.S.P.Q.2d 1498

CALVIN KLEIN COSMETICS CORPORATION, Appellant, v. PARFUMS DE COEUR, LTD., Robert Baker, Inc., d/b/a Robert

Baker Associates, Appellees.

CALVIN KLEIN COSMETICS CORPORATION, Appellee, v. PARFUMS DE COEUR, LTD., Robert Baker, Inc., d/b/a Robert

Baker Associates, Appellants.

CALVIN KLEIN COSMETICS CORPORATION, Appellant, v. PARFUMS DE COEUR, LTD. and Robert Baker, Inc., d/b/a Robert

Baker Associates, Appellees.

Nos. 86-5266, 86-5297 and 87-5215.

United States Court of Appeals Eighth Circuit.

Submitted May 15, 1987.

Decided July 29, 1987.

Alan G. Carlson, Minneapolis, Minn., for appellant.

Allen Hinderaker, Minneapolis, Minn., for appellees.

Before LAY, Chief Judge, WOLLMAN and MAGILL, Circuit Judges.

LAY, Chief Judge.

This appeal is from the district court's ¹ denial of several preliminary injunction motions brought by Calvin Klein Cosmetics Corporation (Calvin Klein) against Parfums de Coeur, Ltd. and Robert Baker, Inc. (Parfums). Parfums cross-appeals from that portion of one of the district court's orders that enjoined Parfums from future violations of federal trademark law. We affirm the district court's denial of Calvin Klein's motions and vacate the district court's order to the extent that it instructs Parfums to "obey the law."

I. June 30, 1986, Order

Calvin Klein's appeal

Calvin Klein distributes high-priced fragrance products under the registered trademark OBSESSION through prestigious department stores and has spent substantial sums to advertise these products. Parfums manufactures an imitation of the OBSESSION scent, which it calls CONFESS and which it markets as part of its "Designer Imposters" [sic] line of designer perfume imitations. Parfums distributes the CONFESS fragrance in the form of a body spray and spray cologne ² through discount retailers and drugstore chains at prices far below those of OBSESSION products. ³

Parfums' body spray container displays the slogan, "If you like OBSESSION you'll love CONFESS." Body spray containers are sold both with and without an accompanying store display that bears the slogan "If you like OBSESSION by CALVIN KLEIN, you'll love CONFESS." In both slogans, the word CONFESS is printed in bolder type than the other words, and the terms OBSESSION and CALVIN KLEIN are both denoted as registered marks through the use of the TM registered trademark symbol. Near the bottom of the store display appear the words "Fragrance Body Spray" and "Designer Imposters by Parfums de Coeur."

Calvin Klein filed a motion for a preliminary injunction, seeking to enjoin all of Parfums' packaging and promotional materials and all use by Parfums of the "like/love" slogan. A hearing was held and both parties submitted supporting material for the district court's consideration, including affidavits and depositions of experts. Calvin Klein also submitted the results of a consumer survey it had commissioned, and Parfums submitted its own expert's analysis of the survey results. In an order filed June 30, 1986, the district court found that the information on the body spray container viewed as a whole was ambiguous and did not provide sufficient information for the consumer to adequately compare the two products, thus creating a likelihood of consumer confusion as to the source or origin of CONFESS and its relationship to OBSESSION. Finding that Calvin Klein would probably succeed on the merits at trial, the district court preliminarily enjoined distribution or sale of the body spray container. It did not, however, enjoin the use of the "like/love" slogan itself but stated that the "like/love" phrase could be used in conjunction with appropriate disclaimers or other source-identifying information. The district court also refused to preliminarily enjoin the store display, finding that the display's combination of the "like/love" slogan with the phrase "Designer Imposters by Parfums de Coeur" adequately informed consumers as to the source of CONFESS and invited consumers to compare the two products in a manner that lessened the likelihood of confusion. Finally, the district court included in its order as Paragraph 1(b) language prohibiting Parfums from "[u]sing any packaging, labeling, display materials, or other advertising or promotional materials in connection with CONFESS products which are likely to confuse, deceive, or mislead the public into believing that CONFESS products are associated with, sponsored by, or otherwise affiliated with OBSESSION products or plaintiff Calvin Klein Cosmetics Corporation."

Whether a motion for a preliminary injunction should be granted in whole or in part lies within the sound discretion of the district court. Dataphase Sys., Inc. v. C L Sys., Inc., 640 F.2d 109, 114 (8th Cir.1981). In exercising this discretion, the district court analyzed the evidence before it under the Dataphase factors to consider the threat of irreparable harm to the movant, the state of the balance between this harm and the injury that granting the injunction will inflict on others, the probability that the movant will succeed on the merits, and the public interest. Id. at 113-14. As is always true when weighing these factors to determine whether the extraordinary relief of a preliminary injunction should be granted, no single factor is in itself dispositive; all of the factors must be considered to determine whether on balance they tip towards granting injunctive relies. Id. at 113. "On appeal, this court may not disturb the district court's balancing of the equities absent a clearly erroneous factual determination, an error of law, or an abuse of discretion." Calvin Klein Cosmetics Corp. v. Lenox Laboratories, Inc., 815 F.2d 500, 503 (8th Cir.1987).

Calvin Klein contends that by selling fragrance products whose labels and promotional materials prominently display the OBSESSION trademark, Parfums infringes on Calvin Klein's trademark rights in violation of sections 32 and 43(a) of the Lanham Act, 15 U.S.C. Secs. 1114 and 1125(a) (1982), and in violation of state law. Calvin Klein contends that the district court should have enjoined the distribution of all Parfums products that carry the "like/love" slogan, including the store displays, claiming that the court found that the slogan has inherent informational ambiguities that create likely consumer confusion. However, we believe that the district court did not abuse its discretion in expressly refusing to preliminarily enjoin all uses by Parfums of the "like/love" slogan. "Like/love" slogans have been found by courts both to contribute to likely consumer confusion, see, e.g., Charles of the Ritz Group Ltd. v. Quality King Distributors, Inc., 636 F.Supp. 433, 438 (S.D.N.Y.1986), and to not create likely consumer confusion, see, e.g., Saxony Products, Inc. v. Guerlain, Inc., 513 F.2d 716, 723 (9th Cir.1975). In reaching either conclusion, courts do not focus solely on the "like/love" slogan but on the overall context in which that phrase appears. Compare Charles of the Ritz, 636 F.Supp. at 435-38 (use of "like/love" slogan on perfume imitator's products and promotional materials found likely to confuse consumers and enjoined where imitator's packaging was similar in size and appearance to original, mark of imitator's manufacturer and disclaimer of origin not readily visible to consumer at point of sale, and both products appeared on same merchandiser shelves) with Saxony, 513 F.2d at 723 (summary judgment for perfume imitator proper where insufficient evidence presented that use of "like/love" slogan in advertising and displays for imitation of high-priced perfume would likely confuse customers as to source of imitator's product).

The district court correctly recognized that numerous factors may be weighed in determining whether there is a likelihood of confusion and that no one factor is dispositive in reaching that conclusion. See SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir.1980) (listing factors). Factors that the district court weighed here include the OBSESSION mark's strength as a widely recognized trademark, the close relationship between CONFESS and OBSESSION products, and the manner in which the OBSESSION mark is used by Parfums. In enjoining the body spray container but not the store display, the district court found that while the slogan does invite consumers to compare CONFESS with OBSESSION, the spray container as a whole was insufficient to denote the source of CONFESS as a Parfums, not a Calvin Klein, product. It specifically contrasted the container design with Parfums' prominent uses of the phrase "Designer Imposters by Parfums de Coeur" on the store display, which it found adequately cured any likely confusion as to source. A manufacturer does not commit unfair competition merely because it refers to another's product by name in order to win over customers interested in a lower cost copy of that product if the reference is truthful and does not likely confuse consumers into believing that the copy is from the same source as the original. Sykes Laboratory, Inc. v. Kalvin, 610 F.Supp. 849, 855 (C.D.Cal.1985). See Calvin Klein, 815 F.2d at 503, citing Smith v. Chanel, Inc., 402 F.2d 562, 563-66 (9th Cir.1968) (imitator may use in a truthful way an originator's trademark when advertising that imitator's product is a copy, if that use is not likely to create confusion in consumer's mind as to product's source). In properly looking at the "like/love" slogan's likely effect in the overall context in which it was used, the district court did not clearly err in finding that Calvin Klein failed to show it would probably succeed in demonstrating that Parfums' store displays would cause likely consumer confusion, ⁴ and did not abuse its discretion in denying preliminary injunctive relief as to the store display.

Parfums' Cross-Appeal

Parfums requests that this court vacate Paragraph 1(b) of the June 30 order on the grounds that it is...