Fujifilm North America Corporation v. PLR IP Holdings, LLC, 1:17-cv-08796

Background

This case centers on trademark and trade dress rights in the "Classic Border Logo" (CBL) associated with Polaroid's instant film, challenged by Fujifilm's introduction of its Instax Square film, which Polaroid claims is confusingly similar.
Polaroid halted production of instant film in 2008, leading to questions about abandonment of trademark rights, but continued licensing the CBL and resumed film manufacturing in 2017.
After bankruptcy and a 2009 asset sale, Polaroid's intellectual property, including common-law and federal rights in the CBL, was transferred to new Polaroid entities, raising issues regarding the validity and scope of the assignment.
Fujifilm sought summary judgment on all Polaroid's remaining counterclaims, including those for trademark and trade dress infringement and unfair competition, arguing lack of rights, functionality, lack of secondary meaning, fair use, and lack of consumer confusion.
The court addressed whether Polaroid abandoned its rights, whether those rights are functional or had secondary meaning, whether Fujifilm fairly used representations of the CBL, and the likelihood of consumer confusion or bad faith.
The court partially granted summary judgment in favor of Fujifilm (limited to certain promotional use), but denied it as to substantive trademark and trade dress claims, finding material factual disputes.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Abandonment	Polaroid did not abandon the CBL despite ceasing film production, due to licensing, intent to resume use, and existing goodwill	Fujifilm claims Polaroid abandoned CBL rights post-2008 by stopping manufacture and lacking intent to resume	Denied summary judgment; material fact issue on intent/goodwill
Assignment of Rights	Assignment language in asset sale included all IP, including common-law rights	Claim rights in CBL/trade dress never assigned; APA closing uncertain	Denied summary judgment; enough evidence of assignment for trial
Functionality	CBL design is non-functional and ornamental, supported by Fujifilm's own design patent	CBL is functional and thus not protectable as trade dress	Denied summary judgment; judicial estoppel and design patent create factual issue
Secondary Meaning	CBL acquired secondary meaning via long-term use, media, copying, and partial consumer survey evidence	No secondary meaning at key time; survey results insufficient	Denied summary judgment; triable factual issue
Fair Use (Promotional Materials)	Only using CBL image to show film format, not as source indicator	Images of film are not infringing, used fairly and in good faith	Granted summary judgment for Fujifilm on this point
Likelihood of Confusion/Bad Faith	Strong similarity, evidence of intent to confuse/copy, actual confusion among consumers	Market differences, incompatible products, sophisticated consumers, lack of evidence of confusion	Denied summary judgment; substantial material fact issues

Key Cases Cited

Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (summary judgment standard; genuine issue required to defeat motion)
Defiance Button Machine Co. v. C & C Metal Products Corp., 759 F.2d 1053 (abandonment of trademarks and the role of residual goodwill)
ITC Ltd. v. Punchgini, Inc., 482 F.3d 135 (standard for intent to resume trademark use after nonuse)
Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373 (multi-factor test for likelihood of confusion)
McGregor-Doniger Inc. v. Drizzle, Inc., 599 F.2d 1126 (strength of the trademark and evaluation of consumer confusion)
W.W.W. Pharmaceutical Co., Inc. v. Gillette Co., 984 F.2d 567 (bad faith analysis in trademark cases)
Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867 (confusion analysis in trademark infringement)
New Hampshire v. Maine, 532 U.S. 742 (judicial estoppel doctrine applied to inconsistent positions)
The Sports Authority, Inc. v. Prime Hospitality Corp., 89 F.3d 955 (actual confusion evidence and its weight)