FILED: NEW YORK COUNTY CLERK 10/16/2017 06:11 PM
`FILED: NEW YORK COUNTY CLERK 10m2017 06:11 P l
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`EXHIBIT C
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`EXHIBIT C
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`FILED: NEW YORK COUNTY CLERK 10/16/2017 06:11 PM
`FILED: NEW YORK COUNTY CLERK 10 $2017 06:11 PM
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`NYSCEF DOC. NO.
`8
`NYSCEF DOC. NO. 8
`U.S. Polo Ass'n, Inc. v. PRL USA Holdings, Inc., Not Reported in F.Supp.2d (2013)
`2013 WL 837565
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`INDEX NO. 655829/2017
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`2013WL837565
`Only the Westlaw citation is currently available.
`United States District Court,
`S.D. NewYork.
`
`UNITED STATES POLO ASSOCIATION,
`
`INC., and USPA Properties, Inc., Plaintiffs,
`'
`v.
`
`PRL USA HOLDINGS, INC, and
`
`L'Oréal USA, Inc., Defendants.
`
`No. 09 Civ. 9476.
`
`| March 6,2013.
`
`Attorneys and Law Firms
`
`This is the latest outbreak of a twenty-eight year trademark
`
`:jar 1between 11:11? alncll1 is predtlanceiss: possessors o: 3:6
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`USPA, a nationa :issocranon dedicated tr; the promonon
`of the sport of po 0 and the sale of pro acts which are
`designated as polo products. The parties have conducted
`this feud in various battlegrounds with tenacity, ability and
`
`assisted by eminent and high-skilled counsel. The outcome
`of these battles has not produced the clarity to compel the
`termination of the conflict. What follows is the outcome of
`
`another skirmish which involves a dispute over the USPA's
`
`parties' use ofvariants ofits Double Horsemen Mark and U.S.
`POLO ASSN. marks on eyewear.
`
`On the facts and conclusions set forth below, JRA‘ motion to
`
`intervene is considered first to allow for consideration of its
`
`Baker & Hostetler LLP, by: Gerald J. Ferguson, Esq, John
`
`D. Parker, Esq, David Sheehan. Esq, New York, NY, for
`
`opposition, and is granted. PRL's motion for contempt and
`appropriate sanctions is also granted.
`
`Plaintiffs United States Polo Association, Inc.
`
`Paul, Hastings, Janofsky 81. Walker, LLP, by: Robert L.
`Sherman, Esq, New York, NY, for Defendant L‘Oréal USA,
`Inc.
`
`Kelley Drye & Warren LLP, by: William R. Golden, Jr, Esq,
`John M. Callagy, Esq, Andrea L. Calvarusri, Esq, Matthew
`D. Marcottc, Esq, New York, NY, for Defendant PRL USA
`Holdings, Inc.
`
`Wilson Sonsini Goodrich & Rosati, P.C., by: Michael S.
`
`Sommer, Esq, Jessica L. Margolis, Esq, Scott D. Tenley,
`Esq., New York, NY, for IRA Trademark Company, Ltd.
`
`OPINION
`
`SWEET, District Judge.
`
`*1 Defendant PRL USA Holdings, Inc. (“PRL” or the
`
`“Defendant”) has moved to hold plaintiffs United States
`Polo Association,
`Inc.
`(“USPA”) and USPA Properties,
`
`the “USPA Parties” or
`(collectively,
`(“USPAP”)
`Inc.
`the “Plaintiffs”) in contempt for violating the Permanent
`Injunction and Final Judgment entered in this action on March
`5, 2012 (the “Injunction”) and the Final Order, Judgment and
`Decree entered on December 6, 1984 (the “1984 Order”).
`
`(“IRA”) has
`Non—party JRA Trademark Company, Ltd.
`moved to intervene pursuant to Rule 24 of the Federal Rules
`of Civil Procedure.
`
`1. Preceding Litigations and Pn'or Praceedings
`In 1984, USPA and its licensees commenced an action
`
`against PRL for a declaratory judgment that various articles
`of merchandise bearing a mounted polo player symbol did
`
`not infringe PRL's Polo Player Logo. PRL counterclaimed
`for trademark infringement. The matter came before the
`Honorable Leonard B. Sand.
`
`In his 1984 Order, Judge Sand denied USPA's request for
`
`a judgment of non-infiingernent, found that USPA and its
`licensees infringed PRL‘s Polo Player Logo, POLO, POLO
`BY RALPH LAUREN trademarks and PRL's trade dress,
`
`and engaged in unfair competition. See US. Polo Ass'n v.
`Polo Fashions, Inc, No. 84 Civ.
`1 142(LBS), 1984 WL 1309
`
`(S.D.N.Y. Dec. 6. 1984).
`
`The 1984 Order enjoined USPA and its licensees from
`
`including the Polo Player Logo
`infringing PRL's marks,
`and the word “POLO,” but not
`from engaging in a
`
`licensing program that did not use the infringing trademarks.
`Specifically,
`the
`1984 Order
`included the following
`provisions enjoining the USPA parties and those in concert
`with them from the following:
`
`a. using any of the Polo Marks or any name or mark
`or symbol which is confusingly similar thereto,
`in
`connection with the sale or offering for sale of any goods
`
`or the rendering of any services;
`
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`

`FILED: NEW YORK COUNTY CLERK 10/16/2017 06:11 PM
`FILED: NEW YORK COUNTY CLERK'10m2017 06:11 PM
`NYSCI
`3F DOC. NO.
`8
`NYSCEF DOC. NO. 8
`U.S. Polo Ass'n, Inc. v. PRL USA Holdings, Inc., Not Reported in F.5upp.2d (2013)
`2013 WL 837565
`
`655829/2017
`INDEX NO. 655829/2017
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`b. manufacturing, distributing, advertising, promoting,
`importing, licensing, authorizing, sponsoring, holding
`for sale or selling any goods, labels, tags, logos, decals,
`emblems, signs and other forms of markings, any
`packaging, wrappers, containers and receptacles and
`any jacquard cards, catalogs, price lists, promotional
`materials and the like bearing an infringement or
`colorable imitation of any of the Polo Marks;
`
`*2 c. using for any commercial purposes whatsoever any
`symbol, logo, trade name or trademark which may be
`calculated to or has the effect of falsely representing that
`the services or products of or licensed by plaintiffs are
`sponsored or authorized by, or in any way associated
`with defendants, Ralph Lauren or any entity affiliated
`with any of them;
`
`the
`(1. using for any commercial purposes whatsoever,
`name “United States Polo Association,” or any other
`name which emphasizes the word POLO (or the words
`U.S. POLO) separate, apart and distinct from such
`
`name in a manner which likely to cause confusion with
`defendants, Ralph Lauren or any entity affiliated with
`any of them.
`
`(Cal. Dec. Ex. B, fiI 8). The 1984 Order, however, permitted
`USPA to conduct a retail licensing program using its name, “a
`mounted polo player or equestrian or equine symbol which is
`distinctive from [PRL's] polo player symbol in its content
`and perspective,“and other trademarks that refer to the sport
`ofpolo, subject to certain conditions and restrictions set forth
`
`in the 1984 Order. 1d. The USPA Parties did not appeal the
`1984 Order.
`
`In 2000, PRL brought a lawsuit in the Southern District of
`
`New York against the USPA and its master licensee affiliates,
`seeking to bar the use ofUSPA's name, the Double Horsemen
`
`Mark and other logos on apparel and related products. PRL
`USA Holdings, Inc. v. U.S. Polo Ass'n, Inc, No. 99 Civ.
`
`10199(GBD) (S.D.N.Y.2000) (the “Apparel Litigation”).
`
`On September 5, 2003, the PRL and USPA Parties entered
`
`into a settlement agreement that partially settled the claims
`made by PRL against the USPA Parties in the Apparel
`Litigation (the “2003 Settlement Agreement”). The 2003
`Settlement Agreement set forth terms for the USPA to use
`
`its name and certain other logos, designs and packaging on
`apparel, leather goods and watches. It also incorporated by
`reference the 1984 Order and provided a mechanism for PRL
`
`to raise complaints and objections regarding packaging that it
`believed was infringing its rights or in violation of the 2003
`Settlement Agreement. However, the parties failed to resolve
`whether the USPA had a right to use four of variants of its
`Double Horsemen Mark. Instead, the parties agreed to resolve
`that issue though a trial before the Honorable George B.
`Daniels, and that the result of the trial would be incorporated
`into the 2003 Settlement Agreement.
`
`On October 20, 2005, a jury verdict concluded that three
`out of the four versions of the Double Horsemen Mark did
`
`not infringe PRL's single horseman mark when used on
`
`apparel, leather goods and watches. PRL USA Holdings, Inc.
`v. US. P010 Ass'n, Inc, No. 99 Civ. 10I99(GBD). 2006
`WL [881744, at *l
`(S.D.N.Y. July 7, 2006). Specifically,
`“the jury found (1) [USPA Parties'] solid double horseman
`mark infringed PRL's Polo Player Symbol trademarks; and (2)
`[USPA Parties'] solid double horseman mark with ‘USPA,’
`outline double horseman mark, and outline double horseman
`
`mark with ‘USPA’ did not infringe PRL's Polo Player Symbol
`trademar
`.”
`
`*3 Afler considering post-trial briefing by the parties, Judge
`Daniels denied PRL's motion for a new trial in July 2006.
`PRL appealed the jury's verdict, which the United States
`Court of Appeals for the Second Circuit upheld. See PRL
`USA Holdings, Inc. v. USiPoloAss'n, Inca, 520 F.3d 109 (2d
`Cir.2008).
`
`On November 13, 2009, the USPA Parties filed a complaint
`for declaratory judgment that sought the right to license and
`sell in the United States fragrance products bearing U.S.
`POLO ASSN., the Double Horsemen Marks and “1890,” the
`year of the founding of the US. Polo Assn. (the “Fragrance
`Litigation”). (Dkt. No. 1). PRL and its exclusive fragrance
`licensee, L'Oreal USA, Inc. (“L'Oreal”), intervened in the
`action without objection. (Dkt. No. 12). PRL and L'Oreal
`brought various counterclaims against the USPA Parties and
`sought a preliminary injunction barring the use of the Double
`Horsemen Logo on March 2, 2010. (Dkt.Nos.] 1, 14, 15).
`
`The parties agreed that the preliminary injunction hearing
`would be consolidated with a trial on the merits. Atter a bench
`
`trial, an opinion was entered on May 13, 2011 by this Court
`(the “May 13 Opinion”) determining that the USPA Parties'
`use of a confusingly similar logo consisting of two mounted
`polo players and their use of composite word marks in which
`the word “POLO” predominated, infringed the PRL Marks
`with respect to fragrance products. (Dkt. No. 80);.ree US.
`
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`

`FILED: NEW YORK COUNTY CLERK 10/16/2017 06:11 PM
`FILED: NEW YORK COUNTY CLERK 10m2017 06:11 PM
`
`NYSCEF DOC. NO.
`8
`NYSCEF DOC. NO. 8
`U.S. Polo Ass'n, Inc. v. PRL USA Holdings, Inc.. Not Reported in F.5upp.2d (2013)
`2013 WL 837565
`
`INDEX NO. 655829/2017
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`RECEIVED NYSCEF: 10/16/2017
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`Polo Ass'n v. PRL USA Holdings, Inc. 800 F.5upp.2d 515
`(S.D.N.Y.2011).
`
`such as cosmetics, personal care products and beauty
`products;
`
`The May 13 Opinion held that PRL‘s federally registered Polo
`Player Logo and POLO trademarks (collectively, the “PRL
`Marks”) on fragrance products were valid and “extremely
`strong” and were entitled to a substantial degree of protection
`from infringement. 1d, at 527728 .The May 13 Opinion also
`found that the similarity between PRL's Polo Player Logo and
`USPA's Double Horsemen Mark was “apparent[,]” Id. at 528,
`
`noting that,
`
`Both marks are similar in perspective—containing a polo
`player on horseback, facing slightly to the viewer's left,
`leaning forward with a polo mallet raised. Both are
`displayed in embossed metallic or glossy material—with
`PRL‘s appearing in a number of colors including silver and
`gold, and USPA's appearing in a light gold.
`
`The primary difference between the marks is that the
`PRL's logo contains one player, while USPA's contains
`two, one with mallet raised and the other with mallet
`lowered, which significantly overlap. In USPA's mark,
`the front horseman is displayedin solid metallic ink,
`while the rear horseman is only outlined, such that the
`
`background packaging shows through. This gives the front
`—mallet raised—horseman more visual prominence, while
`the torso of the rear horseman can be said to fade into
`
`the background. Both of USPA's horsemen share the same
`directional perspective and overlap to a degree that it can
`be difficult to discern if there is one horse or two.
`
`Id. at 528—529.
`
`b. Using the word “POLO” alone or in combination with
`any name, symbol, device or other word(s) in connection
`with the advertising, promotion, offering for sale or
`sale of fiagrances or related products such as cosmetics,
`
`personal care products and beauty products;
`
`c. Using the PRL marks or any other name or mark,
`including the image of one or more mounted polo
`players, that constitutes a colorable imitation of or is
`confusingly similar to PRL's Polo Player Logo
`or
`“POLO” word mark in connection with the sale or
`
`offering for sale of any goods or rendering of any
`services;
`
`d. Using for any commercial purpose whatsoever any
`symbol, logo,
`trade name, trademark, or trade dress
`which is calculated to or has the effect of representing
`
`that the products or services of or licensed by the USPA
`Parties are associated with, sponsored, endorsed, or
`
`authorized by, or are in any way connected or associated
`with the PRL Parties or any entity affiliated with them.
`
`(Injunction jjj 3(c)—(d)).
`
`On April 3, 2012, the USPA Parties appealed the May 13
`Opinion and the Injunction to the Second Circuit. (Dkt. No.
`96). On February 11, 2013,
`the Second Circuit affirmed
`this Court‘s judgment of dismissal and entry of permanent
`injunction. US. Polo A355: 12.. PRL USA Holding, Inc, No.
`12 Civ. 1346, 2013 WL 490796 (2d Cir. Feb. 11, 2013) (the
`
`“USPA Appeal”).
`
`*4 The May 13 Opinion also found that the USPA acted
`in bad faith in adopting the Double Horsemen Mark for
`
`fragrances and that “USPA's use of the Double Horsemen
`Mark along with the word mark ‘U.S. POLO ASSN.‘ in the
`context of men's fragrances created a strong likelihood of
`confusion with the PRL Parties' products.”1d. at 538.
`
`the instant motion
`On August 21, 2012, PRL brought
`for sanctions and contempt of the Injunction, based upon
`the USPA Parties' sale of eyewear bearing logos, which
`
`according to PRL, are colorable imitations of PRL's Polo
`Player Logo.
`
`On March 5, 2012, PRL's motion for attomeys‘ fees was
`
`denied and the Injunction was entered. (Dkt.Nos.94, 95). The
`Injunction provided that the USPA Parties were permanently
`enjoined and restrained from:
`
`alone or in
`a. Using the Double Horsemen Mark,
`combination with any name, symbol, device or other
`word(s) in connection with the advertising, promotion,
`offering for sale or sale of fragrances or related products
`
`After learning of PRL's motion for contempt and sanctions,
`IRA contacted the USPA Parties to seek its consent for IRA
`
`to intervene in this action for the purpose ofdefending against
`PRL's motion and the interpretation of the Injunction on
`
`Wednesday, August 22, 2012. That consent was given on
`August 27, 2012, The next day, JRA requested PRL's consent
`for its intervention. On August 29, 2012, PRL notified IRA
`that it would not consent to JRA's intervention because that
`
`intervention would cause undue delay. In response, JRA
`
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`FILED: NEW YORK COUNTY CLERK 10/16/2017 06:11 PM
`FILED: NEW YORK COUNTY CLERK 10.132017 06:11 PM
`NYSCI
`3F DOC. NO.
`8
`NYSCEF DOC. NO. 8
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`INDEX NO. 655829/2017
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`R*.C fiIVfiD \lYSCEF:
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`RECEIVED NYSCEF: 10/16/2017
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`U.S. Polo Ass'n, Inc. v. PRL USA Holdings, Inc., Not Reported in F.5upp.2d (2013)
`2013 WL 837565
`
`agreed to be bound by whatever schedule the named parties
`agreed to and submitted its opposition for consideration
`should its motion to intervene be granted.
`
`*5 Both motions were heard and marked fully submitted on
`October 3,2012.
`
`II. The Applicable Facts
`
`Since 1978, PRL has marketed eyewear and sunglasses,
`which bear its Polo Player Logo and other trademarks.
`Sales of PRL's eyewear products have generated nearly $3 00
`million in the United States since 2007. According to PRL,
`it and its licensees have spent approximately $17 million in
`the last five years to advertise and promote eyeWear bearing
`the PRL Marks.
`
`In July 2010, USPAP's President and CEO David Cummings
`(“Cummings”) provided deposition testimony that eyewear
`was being sold in the US. market with the Double Horsemen
`
`Mark and also testified during the trial of this action stating
`the same. The USPA Parties presented evidence at trial
`that included 49 computer-assisted designs (“CADs”) for
`sunglasses bearing the Double Horsemen mark and that the
`
`U.S. POLO ASSN. name that had been approved for sale
`in the United States by the USPA. According to the USPA
`Parties, since 2009, more than 987,000 pairs of sunglasses
`bearing the USPA's trademarks have been sold in the United
`
`States, with more than $1 million in sales each year from 2010
`through 2012.
`
`the USPA Parties filed an intent-to-use
`In April 2011,
`application with the United States Patent and Trademark
`
`Office (“USPTO”) to register the Double Horsemen Mark
`
`for “eyewear, namely, ophthalmic eyewear frames, reading
`glasses, sunglasses, eyeglass cases and covers, sun clips in
`the nature of eycwear.”(the “USPA Eyewear Application”).
`On December 21, 2011, PRL filed a notice of opposition to
`the registration of the USPA Eyewear Application with the
`Trademark Trial and Appeal Board (“TTAB”), alleging that
`the USPA's Double Horsemen Mark as applied to eyewear
`was so similar to PRL's Polo Player Logo that it was likely
`to cause confusion. USPA did not contest PRL's notice of
`opposition but instead asked PRL to consent to the withdrawal
`
`of the USPA Eyewear Application. PRL refiised.
`
`On May 30, 2012, the USPA abandoned the USPA Eyewear
`Application, resulting in a TTAB order' sustaining PRL's
`opposition with prejudice (the “TTAB Order”). The USPA
`withdrew the trademark application limited to the Double
`
`Horsemen Mark, and re—filed applications (Serial Nos.
`85695036 and 85695059) for eyewear with the composite
`mark of the Double Horsemen Mark and “USPA” on August
`3, 2012.
`
`The USPA Parties are promoting and selling at least 11
`different styles of sunglasses bearing the Double Horsemen
`Mark through major retail locations, including Kohl's, TJ
`Maxx, Burlington Coat Factory and Ross stores, as well as
`at its own retail outlets. The USPA Parties' sunglasses are
`sometimes sold with a navy blue case hearing the Double
`Horsemen Mark colored in silvery cream or very light gold
`with the words “U.S. POLO ASSN.” underneath. A navy blue
`hang tag displaying a monochromatic gold Double Horsemen
`Mark on the hunt is attached to the USPA sunglasses.
`
`Recently at the 2012 London Olympic Games, PRL was
`an official outfitter for Team USA, and holds a license
`from the United States Olympic Committee (the “USOC”)
`to use certain Olympic symbols, labels, and trademarks (the
`“USOC Commercial Marks”) in connection with the licensed
`
`merchandise, including sunglasses. Under its USOC license,
`PRL has produced products for Team USA and its fans,
`including sunglasses, which display the USOC Commercial
`Marks together with the PRL Marks.
`
`*6 PRL also created a special Olympic Polo Player Logo,
`which is displayed exclusively on Olympic products. The
`logo was prepared for the 2012 Olympics and consists of
`PRL's Polo Player Logo in white on a blue background,
`encircled by a red band with white borders, with “RALPH
`LAUREN” and “2012” appearing within the band (the
`“Olympic Polo Player Logo”).
`
`Beginning with the 2008 Olympic Games, PRL had used the
`Olympic Polo Player Logo, altered to include the applicable
`year of the then current games, on products donated to Team
`USA and sold to consumers. The Olympic Polo Player Logo
`was also used on products promoted and sold in connection
`
`with the Olympic Games held in Canada in 2010. To date,
`in 2012, sales of PRL products bearing the Olympic Polo
`Player Logo and the USOC Commercial Mark have exceeded
`several million dollars.
`
`According to PRL, the USPA Parties' “Cape Cod” sunglasses
`style bears a colorable imitation of PRL's Olympic Polo
`Player Logo. USPA's logo consists of a sold white colored
`
`Double Horsemen Mark on a blue background, encircled by
`a red band with white borders, with “US. POLO ASSN.”
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`FILED: NEW YORK COUNTY CLERK 10/16/2017 06:11 PM
`FILED: NEW YORK COUNTY CLERK 10m2017 06:11 PM
`
`NYSCEF DOC. NO.
`8
`NYSCEF DOC. NO. 8
`U.S. Polo Ass'n, Inc. v. PRL USA Holdings. Inc., Not Reported in F.5upp.2d (2013)
`2013 WL 837565
`
`INDEX NO. 655829/2017
`INDEX N0~ 655829/2017
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`5
`
`appearing in the red band and is displayed on the temple
`portion of the frame next to the hinge. I PRL contends that
`the Double Horsemen mark imprinted on these sunglasses
`blur together, making it difficult, without close inspection, to
`decipher whether there is one horseman or two. In addition,
`PRL asserts that the shape of this style of the USPA Parties'
`
`sunglasses is similar to the PRL Olympic sunglasses.
`
`According to PRL, the use of the USPA Double Horsemen
`Mark on their sunglasses is a violation of 1] 3(c)—(d) of
`the Injunction and constitutes contempt of the Injunction.
`In opposition, the USPA contends that the Injunction is
`limited to fragrance products only, that there is no evidence
`of confusion, and that PRL has been aware of the conduct
`complained of since July 2010 but did not act until over five
`month after the entry of the Injunction.
`
`IRA, as the exclusive licensee for the USPA Marks in
`the United States, avers that they have a significant and
`compelling interest in the outcome of the instant motion and
`the appropriate use of the contested marks.
`
`III. JRA 's Motion to Intervene is Granted
`
`Rule 24(3) of the Federal Rules of Civil Procedure provides
`for intervention as a matter of right when certain specific
`
`circumstances are met. 2 To demonstrate a right to intervene
`
`under Rule 24(a), a prospective intervener must show that
`“(1) the motion is timely; (2) the applicant asserts an interest
`relating to the property or transaction that is the subject
`of the action; (2) the applicant is so situated that without
`intervention, disposition of the action may, as a practical
`matter, impair or impede the applicant's ability to protect
`its interest; and (4) the applicant's interest is not adequately
`represented by the other parties.”Masrer-Card Inr'I. Inc. v.
`Visa 1m”! Sew. Ass’n, Inc, 471 F.3d 377, 389 (2d Cir.2006)_
`
`*7 Alternatively, even if a court concluded that a party
`could not intervene as of right, Rule 24(b) provides for
`
`permissive intervention. 3 Under Rule 24(b)(1')(B), a court
`has the discretion to “permit anyone to intervene who
`has a claim or defense that shares with the main action a
`
`common question of law or fact.”Fed.R.Civ.l’, 24(b)(1)(B).
`In addition, Rule 24(b) (3) states that “[i]n exercising its
`discretion, the court must consider whether the intervention
`will unduly delay or prejudice the adjudication ofthe original
`parties' rights.”Fed.R.Civ.P. 24(b)(3).
`
`Within this discretion, courts have held that Rule 24(b)
`
`(2) is to be liberally construed in favor of intervention.
`See e.g., Degrqfim'cid v. Ricks. 417 F.Supp.2d 403, 407
`(S.D.N.Y.2006); Willisfcn v. Feliz. No. 04 Civ. 4454, 2005
`WL 1669008. at *1 (S.D.N.Y, July 14, 2005). Additional
`
`relevant factors considered by courts “ ‘include the nature
`and extent of the intervenors‘ interests,’ the degree to which
`
`those interests are ‘adcquately represented by other parties,’
`and ‘whcther parties seeking intervention will significantly
`contribute to [the] full development of the underlying factual
`issues in the suit and to the just and equitable adjudication
`
`of the legal questions presented.’ “ Diversified Group Inc.
`v. Daugerdar. 217 F_R.D. 152, i5? (S.D.N .Y.2003); (citing
`H.L. Hayden Co. QfN. Y. v. Siemens Med. Sys, Inc, 797 F.2d
`85, 89 (2d Cir. 1986)).
`
`While IRA may have an absolute right of intervention, the
`issue need not be reached because permissive intervention
`
`is warranted under Rule 24(b). As an initial matter, IRA
`
`moved to intervene promptly and in a manner calculated to
`effectively eliminate any delay caused by its intervention.
`While timeliness “defies precise definition," in determining
`whether a motion to intervene is timely, courts generally
`consider: “(1) how long the applicant had notice of the
`interest before it made the motion to intervene; (2) prejudice
`
`to existing parties resulting from any delay; (3) prejudice
`to the applicant if the motion is denied; and (4) any
`unusual circumstances militating for or against a finding of
`timeliness.”United States v. Pimey Bowes, Inc, 25 F.3d 66,
`
`70 (2d Cir. 1 994).
`
`Here, IRA commenced its efforts to intervene on August 22,
`2012, one day after PRL filed its motion for contempt and
`sanctions. Promptly thereafter, within a week, IRA contacted
`counsel for the parties seeking consent to intervene. When
`PRL refused to consent, and rejected IRA's briefing schedule,
`IRA commenced its instant motion. Any delay was minimal
`
`and thus, IRA made a timely motion.
`
`IRA's sole purpose is to manufacture and sell products
`bearing the USPA Marks. IRA has invested millions of
`dollars into the USPA brand and derives substantial revenue
`
`from the products currently threatened by the pending
`litigation. The majority of the administrative and financial
`burden of complying with the Court's decision would also fall
`on IRA, giving it greater incentive to limit the scope of any
`adverse decision or reporting requirement. Thus, IRA has a
`sufficient significant interest as a potential intervenor.
`
`WestlawNert
`
`”$3117".-
`
`_,..
`
`

`

`FILED: NEW YORK COUNTY CLERK 10/16/2017 06:11 PM
`FILED: NEW YORK COUNTY CLERK 10.132017 06:11 PM
`
`NYSCTF DOC NO.
`8
`NYSCEF DOC. NO. 8
`U.S. Polo Ass'n, Inc. v. PRL USA Holdings, Inc., Not Reported in F.5upp.2d (2013)
`2013 WL 837565
`
`INDEX NO. 655829/2017
`INDEX N0~ 655829/2017
`
`
`
`
`
`RnCnIVnD VYSCEF: 10/16/2017
`RECEIVED NYSCEF: 10/16/2017
`
`*8 In addition, courts have characterized the “adequacy of
`interest” requirement of Rule 24(a) as “minimal.” Trbovr‘cli
`
`v. United Mine Workers of'America, 404 US. 528, 538, 92
`S.Ct. 630, 30 L.Ed.2d 686 (1972) (“The requirement ofthe
`Rule is satisfied if the applicant shows that representation of
`his interest ‘may be’ inadequate; and the burden of making
`that showing should be treated as minimal”). While the
`USPA Parties and IRA share some similar interests and
`
`both seek to defeat PRL's motion, the parties do not have
`identical interests. IRA has contractual and business concerns
`
`involving agreements with sub-licensees for the design and
`production of USPA products, including eyewear. IRA and
`its sub-licensees also employ thousands of individuals who
`perform all ofthe functions necessary to bring USPA products
`to the marketplace in the United States. Thus, IRA, not the
`USPA Parties, will bear the primary burden of complying
`with the outcome of PRL's motion.
`
`Moreover, contrary to PRL's assertion that IRA's intervention
`
`would result in a delay in the final resolution of its contempt
`motion and complicate the proceedings, IRA has already
`briefed its opposition for consideration as to avoid such
`
`concerns. Resolution of IRA's motion has also not required
`any additional discovery that would cause any delay or
`prejudice. See Berroyer v. United States, No. 10 Civ.
`
`3888(ADS) (ARL), 2012 WL l486758, at *4 (E.D.N.Y. May
`5, 2012) (holding that no prejudice to existing parties to
`litigation where no additional discovery needed by putative
`intervener). Instead,
`there is no risk of undue delay or
`prejudice here, and permitting IRA to intervene will ensure
`“that all relevant parties to the dispute are present before the
`Court.”Lonis Berger Gal, Inc. v. State Bank QfIndia, 802
`F.Supp.2d 482, 489 (S.D.N.Y.20] I).
`
`Taken together, JRA has demonstrated that it has a substantial
`
`interest in the outcome of this proceeding, and is therefore
`permitted to intervene for the limited purpose of defending
`against PRL's contempt motion.
`
`IV. PRL 's Motion for Contempt is Granted
`
`A) The Standard For Civil Contempt
`Rule
`65(d)
`states
`that
`“[e]very order granting an
`injunction and every restraining order must:
`state the
`
`issued; state its terms specifically; and
`reasons why it
`describe in reasonable detail—and not by referring to the
`complaint or other documentfithe act or acts retrained or
`
`rcquired.”Fed.R.Civ.P. 65(d). As the Supreme Court noted,
`this rule “reflects Congress‘ concern with the dangers inherent
`
`WestlawNext
`
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`
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`
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`
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`
`r-n win“? 1
`
`in the threat of a contempt citation for violation of an
`order so vague that an enjoined party may unwittingly and
`unintentionally transcend its bounds.”!nr'l ergrnoremenir
`Ass’n, Local 129] v. Philadelphia Marine Trade Ass'n, 389
`
`US. 64, 76, 88 S.Ct. 201, 19 L.Ed.2d 236 (1967)). Thus, the
`clarity of the order must be such that it enables the enjoined
`party “to ascertain from the four corners ofthe order precisely
`what acts are forbidden.”Dry Wall Tapers and Pointers of
`Greater New York, Local 1974 1:. Local 530 of Operative
`Pfaslerers and Cemen.r Masons Int’l' Ass'n. 889 F.2d 389, 395
`(2d Cir. 1 989). Ambiguities are usually resolved in favor of
`the party charged with contempt. See e.g., N. Y. Tel. Co. v.
`Conimc'ns Workers (JAM. AFLeCIO, 445 F.2d 39. 48 (2d
`Cir.l97l).
`
`*9 A contempt order is a “potent weapon to which courts
`should not resort where there is a fair ground of doubt
`as to the wrongfulness of the defendant's conduct.”Taciic-a
`
`Int'l, Inc. v. All. Horizon Int'l', Inc, 154 F.Supp.2d 586, 609
`(S.D.N.Y.2001) (internal citations and quotations omitted).
`Thus, the prerequisites for a finding of civil contempt are as
`follows; (1) the order which has been violated must be clear
`
`and unambiguous; (2) the violation must be proved by clear
`and convincing evidence; and (3) the violating party has not
`made a diligent effort to comply with the terms of the order.
`See, e.g., Benham Jewehy Corp. v. Aron Basna Corp. No. 97
`Civ. 384, 1997 WL 639038 at *l (S.D.N.Y. Oct.
`l5, 1997)
`(citing cases); Paramedics E[ectromedicina Comercial. Lida.
`v. GE Med. Sys. Info. Tech. Inc, 369 F.3d 645. 655 (2d
`
`Cir.2004). A finding of contempt, however, does not require
`a court to find willfulness. Paramedics, 369 F.3d at 65 5.
`
`The clear and convincing standard “requires a quantum of
`proof adequate to demonstrate a ‘reasonable certainty’ that a
`violation occurred."Levin v. Tiber Holding Corp, 277 P.3d
`243, 250 (2d Cir.2002); see also Hart Schaffner & Marx v.
`Alexander's [)ep'! Stores. Inc, 34] F.2d lOl, 102—103 (2d
`Cir. l 965) (per curiam) (“A civil contempt order will not issue
`unless there is ‘clear and convincing‘ proof of violation of
`a court decree; a bare preponderance of the evidence will
`
`not suffice”). The moving party must demonstrate that the
`
`enjoined party “had knowledge of and disobeyed a clear,
`explicit and lawful order of the court and that the offending
`conduct prejudiced the right ofthe opposing party.”Levin, 277
`F.3d at 251.
`
`B) Hie USPA Has Violator! The Injunction
`Although the USPA Parties and IRA have contended that
`
`the Injunction is limited to fragrance products and that the
`
`

`

`FILED: NEW YORK COUNTY CLERK 10/16/2017 06:11 PM
`FILED: NEW YORK COUNTY CLERK 10m2017 06:11 PM
`
`NYSCEF DOC. NO.
`8
`NYSCEF DOC. NO. 8
`u.s. Polo Ass'n, Inc. v. PRL USA Holdings. Inc., Not Reported in F.3upp.2d {2013)
`2013 WL 837565
`
`INDEX NO. 655829/2017
`INDEX NO~ 655829/2017
`
`
`
`
`
`
`RnCnIVnD VYSCEF: 10/16/2017
`RECEIVED NYSCEF: 10/16/2017
`
`context of the underlying action was limited to proof of
`confusion (USPA Opp. at 13—15), the Injunction by its terms
`is not so limited. PRL has also produced clear and convincing
`
`evidence demonstrating non-compliance with the Injunction.
`
`i. The Injunction Clearly and Unambiguously Bars the
`Double Horseman Mark
`
`The Injunction prohibits the USPA Parties from, among
`other things, use of “the image of one or more mounted
`polo players, that constitutes a colorable imitation of or is
`confiisingly similar to PRL's Polo Player Logo
`or ‘POLO’
`word mark in connection with the sale or offering for sale
`
`of any goods or rendering of any services,” and/or “any
`symbol, logo, trade name, trademark, or trade dress which is
`calculated to or has the effect ofrepresenting that the products
`
`or services of or licensed by the USPA Parties are associated
`with, sponsored, endorsed, or authorized by, or are in any
`way connected or associated with the PRL Parties,” “for any
`commercial purpose whatsoever.” Injunction 1H] 3(c—d}.
`
`The injunctive provisions in the 1984 Order are similar
`to their counterparts in the Injunction. (See Comparison
`Table attached to the Calvaruso Dec. as Exhibit G).
`
`This resemblance is especially evident with respect to the
`
`provisions against the USPA Parties' expansion of the use
`of the infringing marks to other items. See also US Polo
`Assh. 2013 WL 490796 at *4 (finding that that the Injunction
`
`“merely tracks the language of the 1984 Order, to which
`USPA was already subject”). Both the Injunction and the
`1984 Order sought appropriately to elim