Polo Fashions, Inc. v. Rabanne

Citation661 F. Supp. 89
Decision Date09 September 1986
Docket NumberNo. 84-1763-Civ.,84-2991-Civ.,84-1763-Civ.
PartiesPOLO FASHIONS, INC. Plaintiff, v. Pierre RABANNE, et al., Defendants. POLO FASHIONS, INC. Plaintiff, v. COUNTY LINE FASHIONS, INC., et al., Defendants.
CourtU.S. District Court — Southern District of Florida

Robert W. Wells, Smathers & Thompson, Miami, Fla., for plaintiff.

Mark A. Levine, Miami, Fla., for defendants.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

ZLOCH, District Judge.

I. FINDINGS OF FACT
The Parties

1. Plaintiff, Polo Fashions, Inc. (hereinafter referred to as "Polo"), is a corporation organized and existing under the laws of the State of New York, having an office and place of business at 40 West 55th Street, New York, New York 10019.

2. Defendant, Jay Miller (hereinafter Defendant) is a resident and citizen of the State of Florida. He was the general manager for Pierre Rabanne, County Line Fashions and Tony's Joint Venture.

Background

3. Polo is a renowned fashion house, which, under the direction of its chairman and designer, Ralph Lauren, styles, manufactures and sells, both directly and through related companies and licensees, diverse articles of men's and women's wearing apparel identified by the trademarks and trade names, POLO, RALPH LAUREN, POLO BY RALPH LAUREN and a fanciful representation of polo player on a horse (the "Polo Player Symbol") both individually and as composite trademarks, including a composite mark consisting of the mark Ralph Lauren in combination with the Polo Player Symbol (the "Ralph Lauren Logo") (collectively the "Polo Trademarks"). These trademarks are depicted below:

4. Commencing at least as early as 1967, Polo adopted one or more of The Polo Trademarks for diverse articles of men's and women's wearing apparel and accessories and caused these trademarks to be registered in the United States Patent and Trademark Office. Polo's current U.S. Trademark Registrations include, among others: Registration No. 978,166 of February 5, 1974 for the trademark POLO BY RALPH LAUREN, in a distinctive style for diverse items of wearing apparel; Registration No. 984,005 of May 14, 1974 for the Ralph Lauren Logo trademark for diverse items of apparel; Registration No. 990,395 of August 6, 1974 for the trademark POLO BY RALPH LAUREN for retail clothing store services; and Registration No. 1,050,722 of October 19, 1976 for the Ralph Lauren Logo trademark for diverse items of women's apparel, including shirts and tee-shirts (the "Polo Registrations").

5. The Polo Registrations are in full force and effect, and the trademarks thereof and the goodwill of the business of Polo in connection with which the trademarks are used have never been abandoned and are licensed throughout the United States and elsewhere throughout the world by Polo through related companies.

6. In addition to the menswear line, Polo markets through licensees a broad line of other products under the Polo Trademarks, such as womenswear, boyswear, girlswear, leather goods and hosiery.

7. The Polo menswear line is distributed only by Polo through its sales force directly to selected retail customers.

8. For the fiscal year 1984, the volume of products sold by Polo at wholesale exceeded $125,000,000. For that year, the volume in units of menswear POLO knit shirts exceeded 3,500,000.

9. Polo maintains strict control over the quality of its knit shirts. All POLO knit shirts produced for Polo by its contractors are sent to Polo's distribution facility in Carlstadt, New Jersey; there they are subsequently shipped by Polo pursuant to a retail customer's order.

10. Knit shirts which do not meet Polo's quality standards are sold by Polo in one of its own outlet stores with their neck labels cut and marked as "irregular," and are always labeled as such.

11. There is actual harm suffered by POLO and consumer confusion from the sale of counterfeit POLO goods in the marketplace. Particularly, once a consumer buys an inferior quality counterfeit garment and experiences dissatisfaction, that consumer is less likely to buy genuine POLO garments. The customer feels that the rest of the merchandise bearing the POLO label will be as inferior as the counterfeit items.

12. The Polo Trademarks have come to be identified by the general public with goods and services emanating from, sponsored by, authorized by or affiliated with Polo.

Defendant Jay Miller

13. Defendant Jay Miller ("Miller") was the general manager for Pierre Rabanne, a manufacturer of apparel. Subsequently Pierre Rabanne became Tony's Joint Venture. Miller testified that while working at Tony's Joint Venture he never shipped any POLO garments. Thereafter, Miller was a "packer" at County Line Fashions, Inc. ("County Line"). At County Line, he acknowledged handling, as a packer only, "not many" POLO garments. Miller's testimony is not credible.

14. The third party discovery taken by Polo in this matter, disclosed a far different picture than that testified to by defendant Miller. Harvey Gelber ("Gelber") testified that in August, 1982 he purchased 2,376 POLO knit shirts for $23,760.00 from Pierre Rabanne. Gelber stated that Miller was the only individual he dealt with at Pierre Rabanne. Miller was in charge of the sale of the POLO knit shirts; Gelber picked up the shirts from Miller and paid him.

15. Harry Mullins ("Mullins") testified that, commencing in the fall of 1982, he obtained over Twenty-Six Thousand (26,000) POLO garments from Miller. The selling price of these garments ranged from $11.75 to $18.75. Mullins testified that he was one of twelve salesmen for Miller, covering the states of Alabama, Tennessee, North Carolina and Kentucky. At various times Mullins' commission checks were drawn on the accounts of Pierre Rabanne, Tony's Joint Venture and County Line. Mullins explained the name changes as follows: "Whatever suited their fancy at the time. They had a policy every 90 days of changing their name.... I felt it was to keep a step ahead of everybody that was trying to find them." Mullins further stated that no matter the name of the entity, he always worked with defendant Miller. Miller was "running the show".

16. Paul Dascomb ("Dascomb"), was a salesman for Miller, in the state of Arkansas, Oklahoma and Texas, and sold POLO garments on his behalf. He received in excess of 7,500 POLO garments from Miller. Defendant's selling price of these garments was at least $11.75 per garment. Dascomb testified that Miller directed the operation of Tony's Joint Venture. "He seemed to be the one that ran things and took care of the business end of it." (Dascomb 13).

17. The following table summarizes the quantitive sales made by Gelber Mullins and Dascomb:

                  NAME                QUANTITY                 REVENUE
                 Gelber    2,376 @ $10.00                     $23,760.00
                 Mullins   12 weeks × 15 doz. @ $11.75         25,380.00
                 Mullins   12 weeks × 30 doz. @ $16.00         69,120.00
                 Mullins   48 weeks × 35 doz. @ $11.75        236,880.00
                 Dascomb   7,500 @ $11.75                      88,125.00
                                                              __________
                                               TOTAL         $443,265.00
                

18. Eight (8) retail apparel outlets in Texas and New York, have identified their respective cancelled company checks proffered in payment for POLO garments they purchased. Each of these retailers identified checks which were deposited in the bank accounts of either Tony's Joint Venture or County Line (Shulse 1-8, Exh. 1; Finstad 1-14, Exhs. 1-4; Shearer 1-17, Exhs. 1-3; Williams 1-9, Exh. 1; Barnard 1-12, Exhs. 1-3; Phillip 1-13, Exh. 1; Elliot 1-12, Exhs. 1-2; Bernstein, Exhs 1-3).

19. The deposition testimony of these eight retailers corroborates the statements made in the declarations of the fifteen other retailers which Polo introduced as direct evidence during the trial (Exh. 74).

II. CONCLUSIONS OF LAW—LIABILITY

1. This action arises under the provisions of the Trademark Act of 1946 (hereinafter referred to as the "Lanham Act"), 15 U.S.C. § 1051 et seq., particularly 15 U.S.C. § 1114(1) and § 1125(a), and for unfair competition under the laws of the State of Florida. This Court has jurisdiction over the subject matter of this claim pursuant to 15 U.S.C. § 1121 and 28 U.S.C. § 1338. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391. Jurisdiction is proper over the defendant pursuant to the laws of the State of Florida and Rule 4 of the Federal Rules of Civil Procedure.

2. The issues tried to the Court included a determination as to whether the defendant is liable for trademark infringement under 15 U.S.C. § 1114 and § 1125(a) and for unfair competition under the laws of the State of Florida. The issues related to relief include permanent injunctive relief and damages, including an accounting of monetary relief pursuant to 15 U.S.C. § 1117, calculation of the defendant's profits to be awarded to Polo, trebling thereof, and a determination of costs and attorneys' fees.

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