Horse magazine morphs into fashion sheet and gets slapped with a law suit.

June 30, 2000 - The combination of the title "Polo" and luxury lifestyle content brought Westchester Media's magazine POLO more attention than it had planned.

Polo Ralph Lauren Corporation, which owns numerous trademarks on the polo theme, noticed and sued Westchester Media for trademark infringement, trademark dilution and unfair competition under the Lanham act.

Yesterday, the 5th U.S. Circuit Court of Appeals handed down a decision which upheld the trademark infringement claim although Westchester Media professed that the magazine was protected by the free speech of the First Amendment of the Constitution of the United States.

Polo Magazine began in 1975 and covered the sport of equestrian polo and was endorsed by the official American organization for the sport of horse polo.

In 1997 it was purchased by Westchester Media and underwent major refocus of its editorial mission. In October 1997 it reappeared on the newsstands as a fashion and lifestyle publication and was, according to its publisher, "not about the sport, but rather about an adventurous approach to living". The magazine even sent subscription offers to upscale mailing lists such as Neiman Marcus'.

After legal wranglings between the two, the Polo Ralph Lauren Corporation (PRL) filed the suit in the U.S. District Court and won. Westchester Media appealed and subsequently lost yesterday in the Appeals court.

The court held that since "the new magazine primarily covered affluent lifestyles, fashion and travel, rather than the sport, evidenced an intent to trade on PRL's reputation and goodwill". The court also found the fact that PRL does not publish a magazine -- i.e. that the parties were not direct competitors -- irrelevant. "The incontestable 'Polo' mark [that] was used to title a magazine about the sport of polo . cannot be transferred to a fundamentally different magazine," the court said.

Westchester Media claimed that the title was artistic speech and therefore protected by the First Amendment. The Fifth Circuit, however, only partially upheld this claim, calling a magazine's title "a hybrid between commercial and artistic speech." Therefore, "it requires more protection than the labeling of ordinary consumer products" but not complete First Amendment protection.

A lower court had required that Westchester Media change the name of the magazine; however, yesterday's ruling overruled the lower court and sent the case back down for decision on how to redress the situation.