Polaroid must be getting desperate because Fujifilm felt the need to file against PLR IP Holding, LLC in New York Federal Court, Monday, November 13rd (Case Number 1:17-cv-08796). Fujifilm alleges that “the company is lobbing insincere trademark and trade dress infringement claims over its white film border as a last-ditch effort to profit from its intellectual property portfolio.” Fujifilm’s argument against infringement is based on the border serving a functional purpose and Fujifilm is asking for Polaroid’strademarks to be canceled because “functional designs are unprotectable as either trademarks or trade dress.”
“Defendants’ assertions of infringement are disingenuous, because, notwithstanding their ownership of trademark registrations, defendants own no protectable rights that could implicate the square white borders at issue,” Fujifilm said in its complaint. “The shape of the photographic borders used in Fujifilm’s instant film is purely functional … and in any event, these borders are not used as trademarks identifying Fujifilm’s film or cameras.”
Apparently, PLR sent a letter in January and June calling the instax Square format “essentially identical” to PLR’s border logo, with the June letter including a demand for annual royalties in the amount of $23.4 million in annual royalties through 2024 along with their intent to bring legal action if their demands were not met. This is arguably patent troll behavior and Fujifilm didn’t seem to appreciate it much, especially considering the patents protecting polaroid’s instant cameras and film “expired decades ago.”
“Defendants have made this assertion of infringement knowing full well that Fujifilm has imported and sold instant film that has looked much the same for many years,” the complaint said. “Given the outrageous demands and threats made by defendants, Fujifilm has no alternative but to seek relief in the form of a declaratory judgment of non-infringement.”
Fujifilm attorney James DeCarlo said the company filed suit “to resolve that we are not infringing” and because it values intellectual property rights.
Fujifilm is represented by Greenberg Traurig LLP, which is a notoriously well-known law firm among lawyers, so it’s highly unlikely Fujifilm is messing around with this lawsuit. It is highly likely they are looking to settle this issue once and for all in their favor. These kinds of battles can take years to complete and require very deep pockets, so who knows if PLR can go all the way, but the outcome will certainly be of interested to all of us because it could end up affecting Fujifilms bottom line. Good Luck Fujifilm.
Via Law360
