The opinion of the court was delivered by: VAN ANTWERPEN
This action arose under the common law, Sections 32 and 43(a) of the Trademark Act of 1946 (the Lanham Act), 15 U.S.C. § 1114, 1125(a), and the Pennsylvania Antidilution Law, 54 Pa.C.S.A. § 1124. The parties were diverse in citizenship and the amount in controversy exceeded $ 50,000 exclusive of interests and costs. This court had jurisdiction pursuant to 28 U.S.C. §§ 1331, 1332, 1337, 1338 and 1367. Plaintiffs chose to bring this action directly in district court pursuant to 28 U.S.C. § 1338 rather than through the adjudication of the Patent and Trademark Office. On December 8, 1994, Plaintiffs A & H Sportswear, Inc. and Mainstream Swimsuits, Inc. ("A&H")
filed their complaint alleging trademark infringement by Defendants Victoria's Secret Stores, Inc. ("VS Stores") and Victoria's Secret Catalogue, Inc. ("VS Catalogue"). Defendants were alleged to have infringed the Plaintiffs' MIRACLESUIT mark with their The MIRACLE BRA line of products. Pursuant to a telephone conference on June 13, 1995 and an order of June 15, 1995, the parties agreed to consolidate a hearing on a preliminary injunction with a trial on the merits. We deemed letters from counsel a stipulation waiving a jury trial in our order of July 31, 1995. In our order of October 20, 1995, we granted Defendants' motion for separate trials on the issues of liability and damages. A two-week non-jury civil trial to determine issues of liability was conducted from October 25 to November 3, 1995. Pursuant to Fed. R. Civ. P. 52(a), on May 24, 1996 we made our findings of fact and conclusions of law on the issue of liability. A&H Sportswear Co., Inc. v. Victoria's Secret Stores, Inc., 926 F. Supp. 1233, 1234-35 (E.D. Pa. 1996).
We concluded as a matter of law that Plaintiffs had not met their burden of establishing a likelihood of confusion under the applicable legal doctrines summarized in Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225 (3d Cir. 1978) and its progeny. A&H Sportswear, 926 F. Supp. at 1269. Likewise, we found that Defendants had not violated the Pennsylvania Antidilution statute, 54 Pa.C.S.A. § 1124. Id. We concluded that Plaintiffs had met their burden of establishing a possibility of confusion under Country Floors, Inc. v. A Partnership Composed of Gepner and Ford, 930 F.2d 1056, 1058 (3d Cir. 1991) and Merchant & Evans v. Roosevelt Bldg. Products, 963 F.2d 628, 637 (3d Cir. 1992) between the THE MIRACLE BRA and the MIRACLESUIT trademarks in the swimwear market. A&H Sportswear, 926 F. Supp. at 1269.
The opinion in A&H Sportswear also made or supports the following findings, which we reiterate here:
1. Plaintiffs acted promptly in bringing suit upon Defendants' extension of their trademark into swimwear. THE MIRACLE BRA Bikini first entered VS Catalogue's assortment in the Resort '95 Catalogue edition which was mailed in November 1994. A&H Sportswear, 926 F. Supp. at 1243 (citing Finding of Fact No. 33). Plaintiffs filed suit on December 8, 1994. Thus, Plaintiffs had been aware of Defendants' use of THE MIRACLE BRA for use with swimsuits for approximately one month when this complaint was filed. A&H Sportswear, 926 F. Supp. at 1254 (citing Finding of Fact No. 74).
2. Plaintiffs did not prove that Defendants acted in bad faith or illegitimately. We made this finding at least three times in our prior opinion. First, we found that Defendants' actions with respect to Plaintiffs' MIRACLESUIT were not willfully tortious. We noted that instead, "these actions at most amounted to a 'decision to take the risk of coming very close to infringement, for the sake of a trade name defendant evidently believed would be more valuable to it than any of the available alternatives.'" A&H Sportswear, 926 F. Supp. at 1255 (citing Syntex Laboratories, Inc. v. Norwich Pharmacal Co., 315 F. Supp. 45, 52 (S.D.N.Y. 1970), aff'd, 437 F.2d 566 (2nd Cir. 1971)). Second, we noted that neither bad faith nor deliberate intent had been shown because Defendants did not intentionally choose the name "miracle" for use with bras to ride on the success of Plaintiffs' MIRACLESUIT swimsuit but had conceived of their name independently. A&H Sportswear, 926 F. Supp. at 1261 (citing Finding of Fact 23). Finally, we found that while Defendants had constructive notice from the trademark register and actual notice from their trademark searches of Plaintiffs' mark in the swimwear industry, Defendants' choice to extend THE MIRACLE BRA to swimwear (an area already occupied by Plaintiffs) for the purposes of the Lanham Act and the "possibility of confusion" standard were not illegitimate. We reiterated that Plaintiffs had not proven bad faith or illegitimacy. A&H Sportswear, 926 F. Supp. at 1267-68, Findings of Fact No. 1, 21, 25, 32-34. We will not find that Defendants have been unjustly enriched.
4. Both the MIRACLESUIT and the THE MIRACLE BRA trademarks are strong in their respective industries (swimsuits and lingerie, respectively), but the strength of their marks and the amount of protection they receive commensurately decreases when they extend into the industry dominated by the other. A&H Sportswear, 926 F. Supp. at 1263.
5. The MIRACLESUIT is targeted to a consumer pool similar to Defendants' products. A&H Sportswear, 926 F. Supp. at 1263.
6. Both parties engaged in substantial promotion activities which undoubtedly resulted in increased public recognition for the respective products. A&H Sportswear, 926 F. Supp. at 1257.
7. Although the VS Catalogue is carefully reviewed, in the past there have been references to the "Miracle Bikini" and the "Miracle Bodysuit" which omitted the word "bra." The Defendants' mark is often used without "THE" if to do so would read awkwardly or be grammatically improper. A&H Sportswear, 926 F. Supp. at 1258.
8. Plaintiffs were willing to give Defendant VS Catalogue at least a 2% and probably a 6% discount on Plaintiffs' MIRACLESUIT swimwear for Plaintiffs' mark to appear in Defendant VS Catalogue's catalog. In prior negotiations between Defendant VS Catalogue and Plaintiffs, Plaintiffs had agreed to pay Defendant VS Catalogue a 2% advertising fee over the standard 4% for the appearance of the MIRACLESUIT mark in the catalog. This two percent was refunded when the MIRACLESUIT mark did not appear in the Catalog. Plaintiffs' witness Mr. Mark Waldman had testified that he believed the standard 4% discount Defendant VS Catalogue had first received was in consideration for the appearance of the MIRACLESUIT trademark in the Catalogue. A&H Sportswear, 926 F. Supp. at 1242-43.
9. The parties' swimwear is comparably priced. The MIRACLESUIT normally retails in the range of $ 54.00 to more than $ 100. Defendants retail THE MIRACLE BRA Bikini at a cost of $ 69.00 for the top and $ 29.00 for the bottom and THE MIRACLE BRA Maillot (one-piece) for $ 69.00. A&H Sportswear, 926 F. Supp. at 1238.
A. Success of THE MIRACLE BRA Swimwear
1. The financial information provided by VS Catalogue and VS Stores, in particular, Defendants' Exhibits 285, 286, 287 and 82, are true and accurate representations by these entities of their respective sales and expenses related to THE MIRACLE BRA swimwear, and the information provided by such exhibits consists of actual business records of both Defendants which they rely upon in the regular and ordinary course of their businesses. (11/5 at 4-8; Fisher); (11/5 at 33, 42; Joyce).
2. Defendants' net sales for THE MIRACLE BRA swimsuits are $ 28.753 million. This figure has not been disputed. (Pls.' Ex. 413; 11/4 at 44-45); (Victoria's Secret's Resp. to A&H's Proposed Findings of Fact at P 1); (Victoria's Secret's Proposed Findings of Fact at P 1). The net sales during this period were $ 27.166 million and $ 1.587 million for VS Catalogue and VS Stores, respectively. (Pls.' Ex. 413 at 5-6).
4. The costs properly deductible from Defendant VS Catalogue's sales are $ 17.585 million. The costs properly deductible from Defendant VS Store's sales are $ 703,000. (Pls.' Ex. 416); (11/4 at 45-46; Newman). Thus, VS Catalogue's profits on THE MIRACLE BRA swimwear are $ 9.581 million and VS Store's profits are $ 884,000, for an aggregate total of $ 10,465 million. (Pls.' Ex. 413); (11/4 at 45-46; Newman). These profits were calculated without taking a deduction for taxes to prevent the infringer from obtaining a double benefit.
(11/4 at 41, 50-52; Newman).
5. The Defendants calculated profits using the full absorption method for a profit of $ 3,958,249 for VS Catalogue and a net loss of $ 29,144 for VS Stores. (Defs.' Ex. 290, Exhibits I and III); (11/5 at 60, 62-65; Hoeberlein). We reject these calculations because we do not believe that the volume of MIRACLE BRA Swimwear sales as a percentage of either Defendants' total sales was significant for the purpose of using the full absorption method.
6. Sales of THE MIRACLE BRA swimwear account for 3% of VS Catalogue's overall profits on an annual basis and more than 5% of its overall profits in its most recent selling season, namely, Spring, 1996. (11/5 at 14-15; Fisher). For VS Catalogue, very few items or collections reach 3% of total sales. The only other items or collections above 3% of gross sales have been THE MIRACLE BRA itself and the London Jean Collection. (11/5 at 15-16; Fisher); (See Defs.' Ex. 286). The sales of THE MIRACLE BRA bikini have continued to increase. (11/5 at 113; Fedus).
7. Plaintiffs assert that "defendants' officers have previously testified that defendants could easily dispense with 'THE MIRACLE BRA' swimwear line. (Fedus Dep. 08/09/95, p. 107, l.21-p. 108, l. 12.)" and that "VS Catalogue's Chief Financial Officer stated that 'THE MIRACLE BRA' swimwear line was not material or significant. Fisher Dep., 11/5/96, p. 24, l.8 - p. 25, l. 23." Plaintiffs have not presented us with a copy of this deposition testimony dated more than a year before our hearing on damages, nor have they asserted that or pointed to any place in the trial transcript where they have cross examined Defendants' officers on these statements. We have found the testimony of VS Catalogue's President to be particularly credible throughout these proceedings and the strength of her testimony has played a large role in our decision in this case. Accordingly, we will not find that Defendants can easily dispense with THE MIRACLE BRA swimwear line or that the THE MIRACLE BRA swimwear line is not material or significant to them.
9. However, in Ms. Fedus's August 1995 deposition she testified that in her opinion "the Miracle Bra...has passed its apex and is now heading down." (11/5 at 120; Fedus). She also stated at that time that a good mark on an item people do not want will not make it popular. (11/5 at 10-21; Fedus). We do not think that these deposition statements undercut her most recent testimony which we continue to credit.
10. THE MIRACLE BRA swimwear leverages on the success of THE MIRACLE BRA (bra). (11/5 at 22; Fisher). Plaintiffs' witness Bruce Waldman admitted on recross that "definitely a factor" in the success of THE MIRACLE BRA for swimwear was that Defendants had established THE MIRACLE BRA for bras. (11/4 at 137; Waldman).
11. While it is true that in deposition testimony from August of 1995 Ms. Fedus stated that the loss of THE MIRACLE BRA trademark might have no effect, we believe there is more than adequate support in the record for our finding that THE MIRACLE BRA swimwear has enabled VS Catalogue to position itself as the leading mail-order retailer of swimwear, holding almost 40% of the market. (11/5 at 117; Fedus); (See 11/5 at 119-121). At this time an injunction prohibiting VS Catalogue from selling swimwear using THE MIRACLE BRA trademark would have a significant adverse impact not only on the profitability of VS Catalogue, but also would be extremely detrimental to VS Catalogue's overall swimwear business since THE MIRACLE BRA swimwear comprises more than one-third of its total sales of swimwear. (11/5 at 21-23; Fisher); (11/5 at 115-117, 175-76; Fedus).
12. Plaintiffs' financial expert Glenn Newman calculated a reasonable royalty of 6%. He multiplied this 6% figure by Defendants' THE MIRACLE BRA swimsuit's net sales of $ 28.753 million (See Findings of Fact, supra, No. 2) for a reasonable royalty total of $ 1,725,000. The 6% figure was based on "historical license agreements negotiated by A&H, the levels of profitability, industry data, the competitive nature of the parties, the plaintiff's unwillingness to negotiate a license of the "Miraclesuit" trademark, and other factors." Plaintiffs also presented a copy of an article summarizing various royalty and licensing amounts showing that the average "fashion" industry royalty rates for 1994 and 1995 were 6.0% and 7.4% respectively. The royalty range in this category was 5 to 10%. Newman did not have the article when making his report but he testified that the article corroborated his own calculations. Newman testified regarding this report. (Pls.' Ex. 413 at 6); (11/4 at 55-57, 62-63; Newman); (Pls' Ex. 416).
13. Plaintiffs' principals considered Newman's estimate of a 6% reasonable royalty overly conservative; they advised him that A&H would have demanded a royalty far higher than 6% to license the MIRACLESUIT mark to Defendants for THE MIRACLE BRA swimsuits. A&H was concerned about unwanted competition for A&H's own MIRACLESUIT swimsuits that such a license would engender. (11/4, at 63-64, 114-116; Waldman); (Victoria's Secret's Response to A&H's Proposed Findings of Fact at P 9). Plaintiffs do not have a history of licensing the MIRACLESUIT product. (11/4 at 60; Newman).
15. Plaintiffs failed to offer any evidence of lost profits or other direct pecuniary harm proximately caused by Defendants' use of THE MIRACLE BRA on swimwear. (11/4 at 120, 134; B. Waldman). In fact, Plaintiffs' sales of its MIRACLESUIT swimwear have increased since Defendants' sales of THE MIRACLE BRA swimwear began. A & H Sportswear Co, 926 F. Supp. at 1252.
16. Plaintiffs' witness Bruce Waldman testified that Plaintiffs would not be inclined to grant a royalty to Defendants but if they were "they certainly would want a lot higher rate than 6%." (11/4 at 112; B. Waldman). Mr. Waldman testified that the reasons he is not inclined to permit a license is that he believes there would be (1) two swimsuits in the market using "Miracle," by two different companies; (2) loss of control by A&H over its MIRACLESUIT mark and reputation; and (3) loss of control over the quality of swimsuits sold under a similar mark. (11/4 at 112; B. Waldman).
17. Waldman was also concerned that the returned merchandise rates for THE MIRACLE BRA swimsuits in VS Catalogue were between about 30% for Spring and 50% for fall. (11/4 at 112, 114-15; B. Waldman); (Pls.' Ex. 408). He testified that the returned merchandise rate of MIRACLESUIT swimsuits sold in stores was under 5%. (11/4 at 117, 130; B. Waldman). Waldman testified on cross examination that the average returned merchandise rate in the industry with respect to catalog swimwear in general was 20% and under 5% with respect to swimwear sold in retail stores. (11/4 at 130-131; Waldman). He also testified on cross examination that he had not heard any bad things about THE MIRACLE BRA swimsuit. (11/4 at 133; B. Waldman). Waldman also testified that the current maker of THE MIRACLE BRA swimwear, Cole of California as purchased by Authentic Fitness, was a reputable and substantial company. (11/4 132-33; B. Waldman). However, Defendant VS Catalogue has had a very liberal returns policy: a no questions asked, ironclad guarantee that has permitted customers to return swimsuits at the end of a season. (11/5 at 18; Fisher). VS Catalogue's President testified that returned merchandise rates were high for swimwear because a woman judges swimsuits by a higher standard because the swimsuit is the only thing between her and the public. (11/5 at 115; Fedus).
18. The inferior quality of THE MIRACLE BRA swimwear compared to the MIRACLESUIT has not been established since customers return swimsuits for a variety of reasons other than quality. (11/4 at 131-133; B. Waldman). Since the VS Catalogue consumer does not have the opportunity to try on the swimsuit prior to purchase, the returned merchandise rate may reasonably be higher than for a retail store. (11/5 at 18; Fisher); (11/5 at 115; Fedus). However, it is reasonable to attribute some significant portion of Defendants' returned merchandise to the quality of the products. (11/4 at 114, 116-17; B. Waldman); (Pls.' Resp. to Defs.' Proposed Findings of Fact at P 3).
D. Defendants' Disclaimer
19. Bruce Waldman testified that a disclaimer that appeared in a recent Victoria's Secret Catalogue after liability was found was too small, gave the appearance that the MIRACLESUIT is the imitator, was unlikely to decrease confusion, and could require him to come to court again to litigate whether the disclaimer is big enough, small enough, and frequent enough. (11/4 at 122-125, 138; B. Waldman); (See Pls.' Ex. 414). We do not credit his testimony that the disclaimer is too small or is unlikely to decrease confusion. In addition, we believe that an appropriate order by this court will not require Plaintiffs to come to court frequently to litigate the size and frequency of a disclaimer.
21. VS Catalogue's president Ms. Fedus agreed that a message would most effectively be conveyed by the large banner sized type used at the top of the layout. (11/5 at 127-128; Fedus). In discussing the catalog itself, Fedus also testified that there are only a very few seconds in which to capture a consumer's attention, so placement near the telephone number is particularly appropriate. (11/5 at 111-12; Fedus).
22. Ms. Fedus conceded that although her team is committed to publishing without error, mistakes do occur in the publication of the catalog. (11/5 at 145-48; Fedus). She also testified that she did not think it would be fair to the Plaintiffs to have to come into court every time a disclaimer fails to run and reapply for relief. (11/5 at 148; Fedus); (Defendants' Response to Plaintiffs' Proposed Findings of Fact at P 18). However, she doubted that the disclaimer would be omitted given the high level involvement of Defendants' management in this litigation. (11/5 at 154; Fedus). Ms. Fedus admitted that she would not know how to control editorial content concerning THE MIRACLE BRA swimwear outside the confines of VS Catalogue's catalog. (11/5 at 154-56; Fedus). However, she also testified that VS Catalogue does not reach out for editorial coverage, does not produce press kits, and that the only advertising she does is the catalog. (11/5 at 157; Fedus).
Ms. Fedus also acknowledged that a disclaimer in the catalog would not be effective for women unless they picked up and looked at a VS Catalogue. (11/5 at 161; Fedus). She also admitted that Defendants' disclaimer could not eliminate confusion if a consumer saw a MIRACLESUIT display at a retail store; she noted, however, that Plaintiffs would be free to implement their own disclaimer. (11/5 at 158-60; Fedus).
23. Defendant VS Catalogue presented the disclaimer: "The Miracle Bra TM swimwear collection is exclusive to Victoria's Secret and not associated with MIRACLESUIT(R) by Swim Shaper(R)" published in the Victoria Secret's Resort 1997 Catalogue. Ms. Fedus testified that the statement is true, accurate, and effective in eliminating the possibility of confusion. (11/5 at 134, 170-172, 174; Fedus); (Defs.' Ex. 296). She testified that she thought the disclaimer was prepared jointly by trademark counsel and the copy writing team at VS Catalogue. (11/5 at 112; Fedus).
24. This disclaimer appeared in dark, black type against a light background at the lower left corner of the actual page on which THE MIRACLE BRA Swimwear Collection was featured in the catalog, just above the telephone number for placing an order. It was legible. VS Catalogue receives approximately 80% of its orders by telephone. (11/5 at 111-113; Fedus); (Defs.' Ex. 296). Ms. Fedus testified that since in her experience a customer does not read the copy unless the photograph intrigues her, the position of the disclaimer near the phone number is most appropriate rather than placed within the copy on the facing page. (11/5 at 112-113; Fedus). Ms. Fedus also testified that her company can follow whatever instructions this Court may issue with respect to a disclaimer. However, Ms. Fedus testified that currently there are no written instructions concerning a disclaimer nor are their any instructions concerning what will occur to an employee if they fail to run a disclaimer. (11/5 147-148; Fedus).
26. Mr. Fisher testified that during the twelve-month period beginning in November, 1996, the disclaimer in Finding of Fact No. 23 would appear in at least 145 million to in excess of 220 million catalogs distributed throughout the United States. (11/5 at 19-21; Fisher); (Defs.' Ex. 288).
27. VS Stores has not marketed swimwear in approximately 1 1/2 years and has no plans to market swimwear in 1997. However, if VS Stores decides to reintroduce THE MIRACLE BRA swimwear in the future, it has agreed to incorporate the aforesaid disclaimer on the product hangtag. (11/5 at 44-46; Mabe).
A. General Legal Standards7
Plaintiffs only proved a possibility of confusion at the liability portion of trial in this case. As we noted in our opinion following the liability phase of trial, the Third Circuit has expressly held that a possibility of confusion can exist independently of a likelihood of confusion. A&H Sportswear, 926 F. Supp. at 1265.
However, in determining Plaintiffs' appropriate relief we face an issue of first impression. Third Circuit cases on the possibility of confusion standard have not provided detailed guidance as to the appropriate remedy after a trial on the merits. Versa Prods. Co. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189 (3d Cir.), cert. denied, 516 U.S. 808, 133 L. Ed. 2d 19, 116 S. Ct. 54 (1995); Country Floors, 930 F.2d 1056; Merchant & Evans, 963 F.2d 628.
Similarly, district courts within the Third Circuit typically have found both a likelihood of and a possibility of confusion or no liability at all. See, e.g., Sweetzel, Inc. v. Hawk Hill Cookies, Inc., 1995 U.S. Dist. LEXIS 13495, 39 U.S.P.Q.2D (BNA) 1258 (E.D. Pa. 1995) (after analysis of Scott factors, district court found neither possibility nor likelihood of confusion); Rockland Mortgage Corp. v. Shareholders Funding, Inc., 835 F. Supp. 182, 191 n.15 (D. Del. 1993) ("In this case, the Court does not decide whether five years constitutes 'long established,' for the Court finds a likelihood of confusion, not a mere possibility of confusion, between the marks of the parties."); National Icee Corp. v. J & J Snack Foods, Corp., 1992 U.S. Dist. LEXIS 3896, 22 U.S.P.Q.2D (BNA) 1783 (E.D. Pa. 1992) (finding both possibility and likelihood of confusion); Barre-National, Inc. v. Barr Labs., Inc., 773 F. Supp. 735, 740-41 (D.N.J. 1991) (acknowledging possibility of confusion standard but declining to apply it); Dominion Bankshares Corp. v. Devon Holding Co., 690 F. Supp. 338, 345 (E.D. Pa. 1998) (finding both possibility and likelihood of confusion); Blumenfeld Development v. Carnival Cruise Lines, 669 F. Supp. 1297, 1320 (E.D. Pa. 1987) (acknowledging possibility of confusion standard but basing finding on likelihood of confusion).
In two recent opinions, the district courts within the Third Circuit again noted the existence of the possibility of confusion analysis, but declined to apply it. Genovese Drug. Stores, Inc. v. TGC Stores, Inc., 939 F. Supp. 340, 345 (D.N.J. 1996); The Guardian Life Ins. Co. of America v. American Guardian Life Assurance Co., 943 F. Supp. 509, 521 n.8 (E.D. Pa. 1996).
Without such guidance, we take as our starting point the statutory language of the remedies provisions in the Trademark Act of 1946 (the Lanham Act), 15 U.S.C. §§ 1116, 1117. The Lanham Act has two major remedies provisions, one providing for ...