FUJIFILM NORTH AMERICA CORPORATION v. PLR IP HOLDINGS, LLC and PLR BRAND SERVICES, LLC
Case 1:17-cv-08796-NRB
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
08/25/25
NAOMI REICE BUCHWALD, UNITED STATES DISTRICT JUDGE
Document 263
17 Civ. 8796 (NRB)
In this intellectual property dispute, multiple entities affiliated with the Polaroid brand of cameras, film, and related products assert seven counterclaims sounding primarily in trademark infringement against multiple entities affiliated with the Fujifilm brand. Fujifilm North America Corporation and Fujifilm Corporation (together, “Fujifilm“) now move for summary judgment on the remaining six counterclaims asserted by Polaroid
FACTUAL BACKGROUND2
This Court has set out the facts of this case in a prior memorandum and order. See Fujifilm North America Corp. v. PLR IP Holdings, LLC, 17 Civ. 8796 (NRB), 2019 WL 274967 (S.D.N.Y. Jan. 7, 2019). Accordingly, we review only the facts necessary to address the instant motion.
Beginning in 1972, Polaroid Corporation, a predecessor to the entities involved in this action, sold a variety of products bearing what Polaroid terms its “Classic Border Logo,” or “CBL.” ECF No. 258 (“Fujifilm‘s Counterstatement to Polaroid‘s Rule 56.1 Statement“) ¶ 1. As depicted below, the CBL is a “vertically-oriented rectangle surrounding a small inner square, with the square positioned in a way that creates the visual impression of
Polaroid owns two federal trademark registrations for the CBL. Id. ¶ 96.3 The CBL is two-dimensionally depicted on packaging for Polaroid‘s products, and Polaroid characterizes the design of its film as a three-dimensional utilization of its CBL mark. ECF No. 252 (“Polaroid‘s Annotated Rule 56.1 Statement“) ¶ 2.
Polaroid Corporation filed for Chapter 11 bankruptcy protection in October 2001. ECF No. 227 (“Polaroid‘s Response to Fujifilm‘s Rule 56.1 Statement“) ¶¶ 4, 20. In 2008, Polaroid Corporation announced that it would “cease manufacturing of instant film products[,]” including its instant film products
In April 2009, in connection with Polaroid Corporation‘s Chapter 11 bankruptcy, various Polaroid entities entered into an Asset Purchase Agreement and Assignment Agreement, pursuant to which PLR IP Holdings, LLC acquired:
[A]ll Intellectual Property . . . used by Sellers in connection with the operation of the Business, as historically operated by Sellers . . . including, without limitation, all rights to the name ‘Polaroid’ (and all rights to any other trade names, trademarks and service marks owned by Sellers; and the Intellectual Property filings listed on Schedule 1.1(f).
See Fujifilm‘s Counterstatement to Polaroid‘s Rule 56.1 Statement ¶¶ 3-6.
Following Polaroid‘s bankruptcy, Impossible and other retailers that partnered with Polaroid continued to sell Polaroid-manufactured and Polaroid-branded film bearing the CBL. Id. ¶ 49.4 Throughout this same period, Polaroid continued to partner
In or around September 2014, Fujifilm began developing an Instax camera that would use square-shaped film. Id. ¶ 98. Fujifilm began to sell this film in the United States in May 2017, using the brand name “Instax Square.” Polaroid‘s Response to Fujifilm‘s Rule 56.1 Statement ¶ 38.5
On January 13, 2017, Polaroid, via counsel, sent a letter to Fujifilm alleging that its Instax Square film was “essentially identical to Polaroid‘s Classic Border Logo and trade dress[,]” and thereby “infringe[d] Polaroid‘s Intellectual Property.” Fujifilm‘s Response to Polaroid‘s Rule 56.1 Statement ¶¶ 147-48.6
Fujifilm launched its Instax Square camera and film in the United States in May 2017. Polaroid‘s Response to Fujifilm‘s Rule 56.1 Statement ¶ 38. In or around September 2017, Impossible began to sell analog instant film, including film bearing the CBL, using the brand name “Polaroid Originals[.]” Id. ¶¶ 45-46; Fujifilm‘s Response to Polaroid‘s Rule 56.1 Statement ¶ 80.7
PROCEDURAL HISTORY
On November 13, 2017, Fujifilm North America Corporation filed suit against PLR IP Holdings, LLC and PLR Brand Services, LLC, seeking to obtain a declaration that Fujifilm‘s Instax Square products did not infringe any Polaroid trademark or trade dress rights and did not constitute unfair competition under New York or federal law, and seeking cancellation of Polaroid‘s trademark
In response to Fujifilm‘s Complaint, PLR IP Holdings, LLC, PLR Brand Services, LLC, Impossible B.V., and Impossible America Corp., d/b/a Polaroid Originals, filed an Answer with Counterclaims, ECF No. 14, asserting seven counterclaims against Fujifilm Holdings Corporation, Fujifilm North America Corporation, and Fujifilm Corporation, namely: (1) counterfeiting, in violation of
On June 1, 2018, Fujifilm filed a motion to dismiss Polaroid‘s counterclaim for counterfeiting, ECF No. 35, on the basis that
Fujifilm filed an Amended Complaint on November 1, 2019, ECF No. 70 (“Am. Compl.“),9 Polaroid filed an Answer to this Amended Complaint with Counterclaims on December 19, 2019, ECF No. 80,10
On December 21, 2023, Fujifilm filed a motion for summary judgment. ECF Nos. 147-54. Polaroid opposed the motion, ECF Nos. 155-78, and it was fully briefed on February 16, 2024, ECF Nos. 181-85. On July 24, 2024, the Court dismissed Fujifilm‘s motion without prejudice, determining that the parties’ Rule 56.1 statements had been “filed in violation of this Court‘s Local Rules.” See Fujifilm North America Corp., 17 Civ. 8796 (NRB), 2024 WL 3520231, at *2 (S.D.N.Y. July 24, 2024).
On the same day it issued this decision, the Court wrote a letter to the parties “offer[ing] some guidance with respect to the anticipated filing of a renewed motion for summary judgment” and identifying specific issues with the briefing it had received. See ECF No. 189 at 1-4. The Court also requested that Polaroid file a stipulation specifying “the claims to intellectual property that it is asserting and . . . the source of its asserted right” for each counterclaim. Id. at 2. On August 9, 2024, Polaroid
On December 13, 2024, pursuant to a briefing schedule approved by the Court, ECF No. 202, Fujifilm filed a renewed motion for summary judgment as to Polaroid‘s six remaining counterclaims, ECF Nos. 205-06, 208, 217. Fujifilm also submitted a Rule 56.1 Statement, ECF Nos. 207, 218-20, and a Declaration by James DeCarlo, Fujifilm‘s counsel, attaching seventy-nine accompanying exhibits, ECF Nos. 209-16 (the “DeCarlo Decl.“). Polaroid filed its opposition to Fujifilm‘s motion on January 17, 2025, ECF Nos.
LEGAL STANDARD
Under
In evaluating a motion for summary judgment, the Court must “resolve all ambiguities, and credit all factual inferences that could rationally be drawn, in favor of the party opposing summary judgment[.]” McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 202 (2d Cir. 2007) (citations omitted). “The moving party bears the initial burden of demonstrating the ‘absence of a genuine issue of material fact.‘” F.D.I.C. v. Great Am. Ins. Co., 607 F.3d 288, 292 (2d Cir. 2010) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986)).
DISCUSSION
Fujifilm contends that it is entitled to summary judgment on all Polaroid‘s remaining counterclaims. ECF No. 217 (“Mot.“) at 1. Specifically, Fujifilm asserts that: (1) Polaroid‘s counterclaims predicated on its common-law rights in the CBL12 fail
Polaroid disputes each of Fujifilm‘s assertions, claiming that genuine disputes of material fact exist with respect to each argument that preclude a finding of summary judgment. ECF No. 225 (“Opp.“) at 2. We address each argument in turn.
First, Fujifilm contends that all Polaroid‘s counterclaims predicated on its common-law rights must fail because Polaroid lacks any common-law rights in the CBL. Mot. at 5-25. Fujifilm posits four reasons for its position: (i) abandonment; (ii) lack of assignment of common law rights; (iii) functionality; and (iv) lack of secondary meaning. Id.
1. Abandonment
We begin by addressing Fujifilm‘s argument that Polaroid abandoned its common-law rights in the CBL following its announcement in 2008 that it would stop manufacturing analog instant film bearing the CBL. Mot. at 5-7.
If a trademark owner “expressly abandons his mark . . . others are no longer restrained from using it since it ceases to be associated in the public‘s mind with the owner‘s goods or services.” Defiance Button Machine Co. v. C & C Metal Products Corp., 759 F.2d 1053, 1059 (2d Cir. 1985), cert. denied, 474 U.S. 844 (1985) (citing Manhattan Indus., Inc. v. Sweater Bee by Banff, Ltd., 627 F.2d 628, 630 (2d Cir. 1980)). To establish abandonment, “it is necessary to show either the owner‘s intent to abandon the mark, or a course of conduct on the part of the owner causing the mark to become generic or lose its significance as a mark.” Hermes Int‘l v. Lederer de Paris Fifth Ave., Inc., 219 F.3d 104, 110 (2d Cir. 2000) (citing Defiance Button Machine Co., 759 F.2d at 1059).
Lack of intent to resume use “may be inferred from circumstances[,]” and nonuse of a trademark for three consecutive years constitutes prima facie evidence of abandonment.
Abandonment of a mark “constitutes a forfeiture of a property right,” and, as a result, “must be proven by clear and convincing evidence.” Empresa Cubana Del Tabaco v. Culbro Corp., 213 F.R.D. 151, 156-57 (S.D.N.Y. 2003) (citing Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1044 (2d Cir. 1980) (“[A]bandonment, being a forfeiture of a property interest, should be strictly proved.“)).
The evidence provided by Polaroid, however, is sufficient to raise a genuine issue of material fact regarding whether Polaroid “maintained an intent to resume use” of the CBL during this period. ITC Ltd., 482 F.3d at 149. Polaroid notes that the company‘s new owner publicly stated following Polaroid Corporation‘s bankruptcy that it “was not going out of business but merely needed time to restructure” and that it intended to continue “licens[ing] out Polaroid‘s intellectual property[,]” including its rights in the CBL. Opp. at 9 (citing Polaroid‘s Annotated Rule 56.1 Statement ¶¶ 19, 63).13 Polaroid also asserts that it engaged in “extensive licensing” of the CBL throughout this period, including in 2011 in
In sum, we agree that the evidence submitted by Polaroid is sufficient to raise a genuine issue of material fact with respect to abandonment, particularly in light of the “strict[]” proof required in this Circuit before a court may divest a party of a property interest under an abandonment theory. Saratoga Vichy Spring Co., 625 F.2d at 1044. A reasonable jury could rely on Polaroid‘s licensing activities, its proposed supply agreement with Fujifilm, its policing efforts, and its resumed manufacturing of analog instant film bearing the CBL in 2017 to determine that Polaroid maintained an intent to resume its use of the CBL following Polaroid Corporation‘s bankruptcy in 2008.
2. Lack of Assignment of Common Law Rights
Next, Fujifilm asserts that it is entitled to summary judgment on Polaroid‘s counterclaims premised on its common law rights because, it claims, the counterclaimant entities never received the relevant common law rights from Polaroid Corporation after it declared bankruptcy in 2008. Mot. at 7-10.
Specifically, Fujifilm contends that Polaroid Corporation never transferred its rights in the CBL to the Polaroid counterclaim plaintiff entities pursuant to the Asset Purchase
The APA provided for the transfer to PLR Acquisition LLC of all properties and assets of the existing Polaroid entities, including:
[A]ll Intellectual Property owned by Sellers or licensed to Sellers pursuant to an Acquired Contract or otherwise used by Sellers in connection with the operation of the Business, as historically operated by Sellers . . . including, without limitation, all rights to the name ‘Polaroid’ (and all rights to any other trade names, trademarks and service marks owned by Sellers; and the Intellectual Property filings listed on Schedule 1.1(f)[.]
APA § 1.1(f).17
The agreement further provided that PLR Acquisition LLC would acquire these properties and assets “[a]t Closing[.]” Id. § 1.1.
Subsequently, on May 7, 2009, Polaroid Corporation and PLR IP Holdings, LLC executed a Trademark Assignment Agreement pursuant to which Polaroid Corporation assigned “all its right title and interest in and to the Marks[,]” defined as “the trademarks and service marks listed in the attached Schedule[,]” to PLR IP Holdings, LLC. DeCarlo Decl., Ex. 69 at 1. On the same day, PLR Acquisition, LLC and PLR IP Holdings, LLC executed an Acquired Intellectual Property Assignment and Assumption Agreement (the “Acquired IP Agreement“) pursuant to which PLR Acquisition, LLC assigned to PLR IP Holdings, LLC, “to the extent not directly assigned to IP Holdings by Sellers, . . . all of the Acquired Intellectual Property and all Acquired Contracts . . . relating thereto[.]” DeCarlo Decl., Ex. 70 § 1.
The language in the Asset Purchase Agreement is broad, covering “all Intellectual Property owned by Sellers or licensed to Sellers pursuant to an Acquired Contract or otherwise used by
Further, Polaroid asserts that the “Closing” contemplated by the APA occurred on May 7, 2009, noting that the United States Bankruptcy Court for the District of Minnesota approved the sale in April 2009 and pointing to a Notice of Closing filed by Polaroid Corporation‘s counsel stating that “[t]he approved sale transaction between Buyer and Debtors officially closed on May 7, 2009 (the ‘Closing‘).” Opp. at 13 (citing Chanin Decl., Ex. 87). Although we agree with Fujifilm that it is inapt to characterize the Notice of Closing as an “Order” issued by the Bankruptcy Court, Reply at 3, Fujifilm has not challenged Polaroid‘s contention that the Bankruptcy Court approved the APA.
Moreover, Fujifilm‘s contention that the Closing described in the APA never occurred is belied by public court documents filed
Accordingly, Polaroid has sufficiently demonstrated that genuine issues of material fact exist with respect to whether Polaroid Corporation transferred its rights in the CBL to the counterclaim plaintiff entities. Fujifilm‘s motion for summary judgment on Polaroid‘s counterclaims relevant to this issue is denied.
3. Functionality
Next, we address Fujifilm‘s argument that Polaroid‘s counterclaims premised on its common law rights in the CBL must
Fujifilm contends that “every component of the film‘s ‘border,’ their relative locations, and overall shape is dictated by function[,]” Mot. at 16, noting that analog instant film “includes all the components necessary to develop a photo in one self-contained unit[,]” Mot. at 10. Polaroid, however, asserts that Fujifilm is precluded from asserting a functionality defense due to judicial estoppel. Opp. at 26-28.
Judicial estoppel provides that, “[w]here a party assumes a certain position in a legal proceeding, and succeeds in maintaining that position, he may not thereafter, simply because his interests have changed, assume a contrary position[.]” Intellivision v. Microsoft Corp., 484 F. App‘x 616, 618-19 (2d Cir. 2012) (quoting New Hampshire v. Maine, 532 U.S. 742, 749 (2001)). In determining whether judicial estoppel applies, courts consider three factors: (1) whether the party‘s “new position is ‘clearly inconsistent’ with its earlier position“; (2) whether “the party seeking to assert this new position previously persuaded a court to accept its earlier position“; and (3) whether “the party ‘would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped.‘” Id. at 619 (quoting New Hampshire, 532
Polaroid asserts that Fujifilm‘s position that Polaroid‘s CBL trade dress is wholly functional is “clearly inconsistent” with Fujifilm‘s application for a design patent in connection with its own Instax Square film. Opp. at 26-27. On March 13, 2017, Fujifilm filed with the PTO an application for a design patent for the Instax Square, representing in its application that it had “invented a new, original and ornamental design for an INSTANT FILM” that closely resembled the CBL. Id. at 27 (citing Polaroid‘s Annotated Rule 56.1 Statement ¶¶ 160-62); see also Chanin Decl., Ex. 65. The PTO relied on the representations made by Fujifilm in issuing Design Patent No. D821,484. Chanin Decl., Ex. 65.
Design patents are granted only for “ornamental” designs. See
Fujifilm contends that it did not represent to the PTO that its film was non-functional under trademark law, but only that its film design was sufficiently ornamental under design patent law, which protects inherently functional “articles of manufacture[.]” Reply at 11-12.18 However, we agree with Polaroid that, by seeking a design patent from the PTO, Fujifilm represented that the border for its analog instant film was not primarily functional, but sufficiently ornamental, and the PTO relied on this representation when it issued a design patent. See Chanin Decl., Ex. 65. This representation is relevant to the functionality analysis for the CBL, given that, as discussed infra Section A.4.v., the parties’
Fujifilm also contends that, “in general, courts do not bind parties to their statements made or positions taken in ex parte application proceedings in front of the PTO.” Reply at 12 (quoting Kennedy v. Basil, 531 F. Supp. 3d 828, 839 (S.D.N.Y. 2021)). However, this language is qualified, and Fujifilm withholds the fact that the court in Kennedy ultimately determined that plaintiff was judicially estopped from claiming she owned the trademarks at issue, based on statements she made to the USPTO. 531 F. Supp. 3d at 839-40.
In sum, Polaroid has sufficiently raised genuine issues of material fact regarding whether Fujifilm should be permitted to benefit from the protection of a design patent for its Instax Square film while contending that Polaroid‘s near-identical design is entirely functional and unworthy of protection. See Yeda Rsch. & Dev. Co. v. Imclone Sys., Inc., 443 F. Supp. 2d 570, 624 (S.D.N.Y. 2006) (applying the doctrine of judicial estoppel to bar defendants from taking contrary position after “obtain[ing] the benefit of” statements made to the PTO); see also Mitchell, 190 F.3d at 6 (applying doctrine of judicial estoppel to sworn statements made to an administrative agency). Accordingly, Fujifilm‘s motion for summary judgment based on the alleged functionality of the configuration of the CBL is denied.19
Finally, we address Fujifilm‘s argument that Polaroid‘s counterclaims premised on its common law rights in the CBL must fail because Polaroid cannot show that the configuration of the CBL had secondary meaning at the time that Fujifilm began to sell its Instax Square film. Mot. at 19-25.
Secondary meaning exists when, “in the minds of the public, the primary significance of [the mark] . . . is to identify the source of the product rather than the product itself.” Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 216 (2d Cir. 2012) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982)). The Second Circuit has identified six non-exclusive factors to guide a court‘s inquiry into the existence of secondary meaning, namely: “‘(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark‘s use.‘” Id. at 226 (quoting Centaur Commc‘ns, Ltd. v. A/S/M Commc‘ns, Inc., 830 F.2d 1217, 1222 (2d Cir. 1987)).
Here, the relevant question is whether the CBL had acquired secondary meaning by 2017, when the Fujifilm Instax Square became available for purchase in the United States. See Thompson Med. Co., 735 F.2d at 217. We examine each of the secondary meaning factors in turn.
i. Factor One: Advertising Expenditures
For purposes of the secondary meaning analysis, advertising expenditures may show “indirect evidence of the possible effect that advertising may have on consumers’ association of the trade dress with the source of the product.” Ergotron, Inc. v. Hergo Ergonomic Support Sys., Inc., No. 94 Civ. 2732 (SAS), 1996 WL 143903, at *8 (S.D.N.Y. Mar. 29, 1996) (citation omitted). In
This factor favors Fujifilm, as Polaroid has provided little evidence of advertising expenditures specific to the CBL. As Fujifilm notes, no Polaroid-brand film bearing the CBL was manufactured between 2008 and 2017. Mot. at 22. Further, much of Polaroid‘s advertising during this period contained multiple marks, and Polaroid has not rebutted Fujifilm‘s contention that it had no separate marketing budget for the Configuration. See, e.g., Opp. at 19-20. Similarly, although Polaroid has alleged that its licensing efforts and collaborations with high-profile celebrities served to reinforce recognition of the CBL in the years after it halted manufacture of analog instant film, id., it has not provided evidence demonstrating that these strategic marketing efforts were specific to the CBL. See, e.g., MZ Wallace Inc. v. Fuller, No. 18 Civ. 2265 (DLC), 2018 WL 6715489, at *10 (S.D.N.Y. Dec. 20, 2018) (no secondary meaning despite “millions of dollars of advertising expenditures[,]” because plaintiff “has not provided any indication of what portion of its advertising expenditures was
ii. Factor Two: Consumer Studies Linking the CBL to a Single Source
“[C]ourts have long held that consumer surveys are the most persuasive evidence of secondary meaning[.]” LVL XIII Brands, 209 F. Supp. 3d at 638 (citing Sports Traveler, Inc. v. Advance Magazine Publishers, Inc., 25 F. Supp. 2d 154, 164 (S.D.N.Y. 1998); Ergotron, Inc., 1996 WL 143903, at *8).
Polaroid has commissioned two secondary meaning surveys, and it contends that both surveys demonstrate that consumers associate the CBL with a single source — namely, Polaroid. Opp. at 16-17. The first survey, conducted in 2017 (the “2017 Survey“), measured consumer recognition of a two-dimensional representation of the CBL and showed a “significant level” of association with Polaroid as a single source. Id. at 16 (citing Polaroid‘s Annotated Rule 56.1 Statement ¶¶ 94, 97); see also Poret Decl., Ex. 3. The second survey, conducted in 2023 (the “2023 Survey“), measured consumer recognition of the three-dimensional CBL in the form of Polaroid‘s analog instant film and showed that 40% of relevant consumers associated it with Polaroid as a single source. Id. (citing Polaroid‘s Annotated Rule 56.1 Statement ¶ 94); see also Poret Decl., Ex. 4.
Further, Fujifilm is correct that “the date upon which [a] survey was taken can affect both the relevancy of the survey data and the weight a court should give it.” RVC Floor Decor, Ltd. v. Floor and Decor Outlets of America, Inc., Case No. 18 Civ. 6449 (JS) (ARL), 2023 WL 2844249, at *4 (E.D.N.Y. Apr. 7, 2023). However, we note that, although Fujifilm contends that the results of the 2023 Survey should be disregarded because they post-date this litigation, the existence of continued consumer recognition of the CBL approximately six years after the introduction of Fujifilm Instax Square film strongly suggests the existence of secondary meaning at the time of Fujifilm‘s entry into the market. See Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 419 (6th Cir.) (“A court may easily take into consideration the strength of recognition at the time of the survey in light of the amount of time passed between that date and the date of infringement,” determining that consumer surveys conducted in 1999 and 2002 provided “strong statistical evidence” supporting the existence of secondary meaning in 1992 and 1997).20
Regardless, we agree with Fujifilm that both the 2017 and 2023 Surveys fall short of the 50% or greater recognition requirement necessary to definitively establish secondary meaning. See Empresa Cubana del Tabaco v. Culbro Corp., No. 97 Civ. 8399 (RWS), 2004 WL 602295, at *36 (S.D.N.Y. Mar. 26, 2004), aff‘d in part, rev‘d in part on other grounds, 399 F.3d 462 (2d Cir. 2005) (“In the Second Circuit, survey data showing 50% or greater recognition has generally been required to establish secondary meaning.“) (collecting cases). Accordingly, this factor does not weigh heavily in either party‘s favor.
iii. Factor Three: Unsolicited Media Coverage
“Extensive, unsolicited media coverage of a product is a strong indication that a mark has obtained secondary meaning.”
Polaroid contends that the CBL “has been recognized by newspapers, magazines, websites, and even celebrated in entire books[,]” Opp. at 21, and has provided numerous examples of media placements featuring the CBL in its papers, see Polaroid‘s Annotated Rule 56.1 Statement ¶¶ 87-89 (citing Smolokowski Decl., Exs. 77-83; Chanin Decl., Exs. 75-76, 96-97).21
Fujifilm correctly asserts that it is not clear, based on the record, whether these examples were solicited by Polaroid. See Gameologist Grp., LLC v. Scientific Games Intern., Inc., 838 F. Supp. 2d 141, 159 (S.D.N.Y. 2011) (articles solicited by plaintiff as part of promotional strategy do not support finding of unsolicited media coverage). However, given the volume of evidence
iv. Factor Four: Sales Success
Fujifilm contends that sales data for the five years before the alleged infringement is “the period most relevant to this suit.” Mot. at 20 (quoting Capri Sun GmbH v. American Beverage Corp., 595 F. Supp. 3d 83, 156 (S.D.N.Y. 2022) (citing Easy Spirit, LLC v. Skechers U.S.A., Inc., 515 F. Supp. 3d 47, 65 (S.D.N.Y. 2021))).
We agree with Fujifilm that sales of analog instant film bearing the IMPOSSIBLE mark before 2017 are irrelevant, as Polaroid did not sell this film itself. Reply at 6. Further, sales of other types of instant film, such as Spectra and Image instant film, are not persuasive evidence of sales success because they do not bear the CBL. Id. Accordingly, this factor favors Fujifilm.
v. Factor Five: Attempts to Plagiarize the Mark
Secondary meaning may be supported by intentional copying, “particularly when the purpose is ‘to benefit from the good will of the prior user through confusion.‘” Cartier, Inc. v. Four Star Jewelry Creations, Inc., 348 F. Supp. 2d 217, 243 (S.D.N.Y. 2004) (quoting New Colt Holding Corp. v. RJG Holdings of Fla., Inc., 312 F. Supp. 2d 195, 208-09 (D. Conn. 2004) (quoting Laureyssens v. Idea Group, Inc., 964 F.2d 131, 136 (2d Cir. 1992))). The key question is “whether the copying was done deliberately, so as to benefit from [Polaroid‘s] name and good will.” Id.
This factor leans decidedly in Polaroid‘s favor. While Fujifilm contends that “[t]here is no evidence that Fujifilm intentionally copied the Configuration to benefit from [Polaroid‘s] goodwill[,]” this assertion is belied by the factual record submitted to the Court. Documents produced by Fujifilm and created by Fujifilm employees prior to the introduction of Instax Square film clearly indicate that the company intended to benefit from pre-existing recognition of the Polaroid brand, suggesting that the use of square-format instant film would be “nostalgi[c]” for consumers. See, e.g., Chanin Decl., Ex. 33 at 8. For example, a PowerPoint created by Fujifilm in 2016 asks, “Why SQUARE Format?” and states: “Long before the rise of Instagram, square format film cameras from . . . Polaroid were held in high esteem . . . , which adds another touch of nostalgia to the format[.]” Chanin Decl., Ex. 33 at 8. The PowerPoint subsequently identifies “Polaroid fans” as a reason to launch square-format film, describing the group as a “[h]eretofore hopeless segment[.]” Id. at 9. Similarly, other internal Fujifilm materials identify the
Moreover, articles published around the time that Fujifilm launched its Instax Square film noted that it was nearly identical to Polaroid‘s analog instant film bearing the CBL. See, e.g., Chanin Decl., Ex. 95 (Time.com article dated January 26, 2017, stating that Fujifilm planned to “unveil a new film that will mimic Polaroid‘s famous square format“); id., Ex. 98 (PopularScience.com article dated April 19, 2017, stating that “[t]he square shape [of Instax Square] is important because it evokes the classic Polaroid films . . . True story: If you take an Instax camera to a party, it‘s almost guaranteed someone will still call it a Polaroid.“).
Fujifilm contends that it did not need or want to benefit from Polaroid‘s goodwill, as it “dominated more than 90% of the instant integral film market when INSTAX Square film launched.” Reply at 8. Fujifilm also asserts that the probative value of copying is limited in product design cases, as the alleged copier “may very well be exploiting a particularly desirable feature, rather than seeking to confuse consumers[.]” Id. (citing Kaufman & Fisher Wish Co., Ltd. v. F.A.O. Schwarz, 184 F. Supp. 2d 311, 319 (S.D.N.Y. 2001), as amended (Oct. 22, 2001) (citations omitted)). However, such arguments are less persuasive where, as here, the contemporaneous record clearly demonstrates that Fujifilm executives designed their product in a way that was
vi. Factor Six: Length and Exclusivity of the Mark‘s Use
“In connection with the length and exclusivity of [a] mark‘s use, no absolute time span can be posited as a yardstick in cases involving secondary meaning.” Jewish Sephardic Yellow Pages, Ltd. v. DAG Media, Inc., 478 F. Supp. 2d 340, 374 (E.D.N.Y. 2007) (quotation marks and citation omitted). However, courts in this Circuit have indicated that “continuous exclusive usage of a trade dress . . . over a five-year period” may support a finding of secondary meaning. Bubble Genius LLC v. Smith, 239 F. Supp. 3d 586, 600 (E.D.N.Y. 2017) (citing Landscape Forms, Inc. v. Columbia Cascade Co., 117 F. Supp. 2d 360, 366-67 (S.D.N.Y. 2000)).
Here, the record shows that Polaroid first introduced the CBL in 1972, Fujifilm‘s Rule 56.1 Statement ¶ 1, continued licensing of the CBL throughout the 2010s, Polaroid‘s Annotated Rule 56.1 Statement ¶¶ 62-74, and resumed manufacturing of analog instant film bearing the CBL in 2017, id. ¶ 80. Taken together, Polaroid
*
In sum, Polaroid has raised genuine issues of material fact regarding whether the CBL had acquired secondary meaning at the time that Fujifilm launched its Instax Square film in 2017. While two of the secondary meaning factors weigh in Fujifilm‘s favor and one factor is neutral, the three remaining factors weigh in favor of Polaroid. Accordingly, we decline to grant summary judgment in Fujifilm‘s favor on this issue.
B. Fair Use
Next, we address Fujifilm‘s argument that images of developed Instax Square film on Fujifilm promotional materials constitute fair use and do not infringe Polaroid‘s trademark registration or common law rights. Mot. at 25-28.
The fair use doctrine serves as a defense to a trademark infringement claim when “the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of [a] party.”
Fujifilm asserts that images of Instax Square film on Fujifilm promotional materials are used descriptively, “other than as a mark[,]” and in good faith. Mot. at 26-27. Specifically, Fujifilm writes that its packaging merely depicts images of developed film to show consumers how a photograph taken in that format might look, and the only trademarks used on the accused promotional materials are the house marks Instax and Fujifilm, “the prominent display of” which evidences “[t]he non-trademark use” of the developed film images. See Mot. at 27 (citing Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond‘s USA Co., 125 F.3d 28, 30 (2d Cir. 1997)). It further asserts that the “display of [Fujifilm‘s] own
However, Polaroid has stipulated that it will not assert any claims against Fujifilm based on images of developed instant film shown on packaging for Fujifilm Instax Square film, ECF No. 141 at 2, and, as a result, it does not substantially rebut Fujifilm‘s fair use defense, contending only that Fujifilm is not entitled to summary judgment on its fair use claim due to its bad faith. Opp. at 3-5. While Polaroid has raised genuine issues of material fact regarding Fujifilm‘s bad faith more generally, it has not done so in the specific context of Fujifilm‘s promotional materials, which prominently bear Fujifilm‘s “Fujifilm” and “Instax” marks. Further, as noted supra, this Court previously dismissed Polaroid‘s counterfeiting counterclaim to the extent it addressed Fujifilm‘s packaging and promotional materials, observing that “Fujifilm‘s famous ‘Fujifilm’ and ‘Instax’ marks are proverbially front and center on the Instax Square film packaging[.]” Fujifilm, 2019 WL 274967, at *5. Accordingly, summary judgment in favor of Fujifilm on this issue is warranted.
Finally, Fujifilm asserts that summary judgment is warranted on all Polaroid‘s counterclaims alleging confusion, as Polaroid cannot demonstrate a likelihood of initial interest or point-of-sale confusion involving Fujifilm Instax Square film. Mot. at 28-34.23
Additionally, we note that Fujifilm claims that “[i]nitial interest confusion is a disfavored doctrine[,]” Mot. at 28 (citing Soter Techs., LLC v. IP Video Corp., 523 F. Supp. 3d 389, 405 (S.D.N.Y. 2021)), contending that a plaintiff alleging initial interest confusion must prove intentional deception in order to prevail on such claims, id. at 29. However, the cases it cites to support this contention are inapposite, as they each involve the use of the internet. See Mot. at 29, n.20. The Second Circuit has stated that a showing of intentional deception is required in cases where “a consumer who searches for the plaintiff‘s website with the aid of a search engine is directed instead to the defendant‘s site because of a similarity in the parties’ website addresses[,]” and that requiring such a showing is appropriate “[b]ecause consumers diverted on the Internet can more readily get back on track than those in actual space, thus minimizing the harm to the owner of the searched-for site.” Savin Corp., 391 F.3d at 462 n.13. Such cases are clearly inapposite here, where the film at issue is a physical product that is used and depicted beyond the internet. Accordingly, we decline to accept Fujifilm‘s assertion that, without evidence of intentional deception, Polaroid‘s initial interest confusion theory must fail.
“[T]he evaluation of the Polaroid factors is not a mechanical process[.]” Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000) (quotation marks and citation omitted). “[T]he ultimate conclusion as to whether a likelihood of confusion exists is not to be determined in accordance with some rigid formula[,]” and “[e]ach case . . . presents its own peculiar circumstances.” Lois Sportswear, U.S.A., Inc., 799 F.2d at 872. Accordingly, in evaluating the Polaroid factors, “a court should focus on the ultimate question of whether consumers are likely to be confused.” Nabisco, Inc., 220 F.3d at 46 (quotation marks and citation omitted). We consider each factor in turn.
1. Factor One: Strength of the Mark
“[T]he strength of a mark depends ultimately on its distinctiveness, or its ‘origin-indicating’ quality, in the eyes of the purchasing public.” McGregor-Doniger Inc. v. Drizzle, Inc., 599 F.2d 1126, 1131-32 (2d Cir. 1979), superseded on other grounds by
Fujifilm contends that the CBL line drawing “lacks inherent distinctiveness” because it is “merely descriptive” of Polaroid‘s film and has not acquired secondary meaning. Mot. at 30 (citing
However, Polaroid has provided evidence sufficient to raise a genuine issue of material fact regarding the strength of its mark, including, as discussed supra in Section A.4., its longstanding use, licensing activities, and press coverage over a period of more than forty years. Opp. at 24 (citing Polaroid‘s Annotated Rule 56.1 Statement ¶¶ 19, 22-49, 50-67, 74-86). Accordingly, this factor weighs in Polaroid‘s favor.
2. Factor Two: Similarity of the Marks
“Courts examine the similarity between the marks and the contexts in which they appear to assess the likelihood that consumers will be confused by the competing marks.” Perfect Pearl Co. v. Majestic Pearl & Stone, Inc., 887 F. Supp. 2d 519, 536 (S.D.N.Y. 2012) (citing Gruner + Jahr USA Pub. v. Meredith Corp., 991 F.2d 1072, 1078 (2d Cir. 1993)).
There can be no dispute that, when removed from its packaging, Fujifilm‘s Instax Square film is nearly identical to Polaroid‘s analog instant film bearing the CBL. As Polaroid notes, Fujifilm‘s own employees could not distinguish between Instax Square film and Polaroid film bearing the CBL. Opp. at 25 (citing Polaroid‘s
3. Factor Three: Proximity and Competitiveness of the Marks
In assessing this factor, courts examine “the nature of the products themselves and the structure of the relevant market.” Vitarroz v. Borden, Inc., 644 F.2d 960, 967 (2d Cir. 1981). This factor “has two elements, market proximity and geographic proximity. Market proximity asks whether the two products are in related areas of commerce and geographic proximity looks to the geographic separation of the products.” Brennan‘s, Inc. v. Brennan‘s Rest., L.L.C., 360 F.3d 125, 134 (2d Cir. 2004). Courts use both elements “to determine whether the two products have an overlapping client base that creates a potential for confusion.” Id.
4. Factor Four: Bridging the Gap
“‘Bridging the gap’ refers to the likelihood that the senior user will enter the junior user‘s market in the future, or that consumers will perceive the senior user as likely to do so.” Star Indus., 412 F.3d 373 at 387 (citing The Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 963 (2d Cir. 1996)).
Both Fujifilm and Polaroid agree that, because their products are already in competition, “there is really no gap to bridge[.]” Star Indus., 412 F.3d at 387; see Mot. at 38, n.24; Opp. at 35. Accordingly, this factor is not relevant to our analysis.
“It is self-evident that the existence of actual consumer confusion indicates a likelihood of consumer confusion.” Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 151 (2d Cir. 2003) (citing Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 228 (2d Cir. 1999), abrogated on other grounds by Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003)).
“If consumers have been exposed to two allegedly similar trademarks in the marketplace for an adequate period of time and no actual confusion is detected either by survey or in actual reported instances of confusion, that can be [a] powerful indication that the junior trademark does not cause a meaningful likelihood of confusion.” Nabisco, Inc., 191 F.3d at 228 (citing McGregor-Doniger, Inc., 599 F.2d at 1136).
While a lack of consumer survey data generally serves as “evidence that actual confusion cannot be shown[,]” The Sports Auth., Inc., 89 F.3d at 964, “a [court] may still conclude that actual confusion exists in the absence of such evidence, so long as there is other evidence of actual confusion[,]” id.
Polaroid has provided more than one hundred examples of social media posts and emails dating from 2017 and 2018 in which users misidentify Fujifilm Instax Square film as Polaroid analog instant film bearing the CBL. Opp. at 23 (citing Polaroid‘s Annotated
Given the volume and variety of this evidence, which includes customer support emails, Twitter and Instagram posts, and other online inquiries, Polaroid has sufficiently raised a genuine issue of material fact with respect to the existence of actual confusion.25 See The Sports Auth., Inc., 89 F.3d at 964 (concluding that evidence of actual confusion existed where plaintiff submitted evidence of “extensive phone calls made to [defendant‘s] restaurants seeking to contact [plaintiff‘s] stores” and vice versa); cf. The Fashion Exchange LLC v. Hybrid Promotions, LLC, et al., 697 F. Supp. 3d 86, 109 (S.D.N.Y. 2023) (six emails received
6. Factor Six: Bad Faith
This factor considers “whether the defendant adopted its mark with the intention of capitalizing on plaintiff‘s reputation and goodwill and any confusion between his and the senior user‘s product.” W.W.W. Pharmaceutical Co., Inc. v. Gillette Co., 984 F.2d 567, 575 (2d Cir. 1993) (quoting Lang v. Retirement Living Pub. Co., 949 F.2d 576, 583 (2d Cir. 1991) (internal quotation omitted)).
As discussed supra at Section A.4.v., Polaroid has provided evidence sufficient to raise a genuine issue of material fact regarding whether Fujifilm intentionally copied the configuration of the CBL when designing its Instax Square film. Fujifilm was
7. Factor Seven: Quality of the Products
“If an infringing product is of inferior quality, the senior user is entitled to protect the good reputation associated with his mark from the possibility of being tarnished by inferior merchandise of the junior user.” Gillette, 984 F.2d at 575 (internal citation and quotation marks omitted).
There is no evidence in the record concerning the quality of either party‘s product. Accordingly, we cannot determine whether this factor weighs in favor of either party.27
“This factor examines the sophistication of the typical consumers and the level of care they exercise when purchasing the products at issue.” Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 326 (S.D.N.Y. 2000). The theory of this factor is that “the more sophisticated the purchaser, the less likely he or she will be confused by the presence of similar marks in the marketplace.” Savin Corp., 391 F.3d at 461. In analyzing consumer sophistication, courts “consider[] the general impression of the ordinary purchaser, buying under the normally prevalent conditions of the market and giving the attention such purchasers usually give in buying that class of goods.” Star Indus., 412 F.3d at 390 (quoting The Sports Auth., Inc., 89 F.3d at 965).
Fujifilm contends that this factor also favors it, asserting, inter alia, that instant film cameras and film are “expensive[,]” that Instax Square and Polaroid products are incompatible, and that the instant film market is niche in light of today‘s technology. Mot. at 32-33. However, we find that Polaroid has sufficiently alleged that the relevant consumer base could still be susceptible to initial-interest and post-sale confusion, rather than point-of-sale confusion, as consumers could easily confuse the parties’ nearly identical products when encountering them
*
In sum, triable issues of fact remain with regard to many of the Polaroid factors, and particularly with respect to actual consumer confusion and Fujifilm‘s bad faith. Accordingly, summary judgment is not warranted on Polaroid‘s counterclaims alleging initial interest and point-of-sale confusion with respect to the CBL.
CONCLUSION
In sum, Fujifilm‘s motion for summary judgment is granted in part and denied in part. Specifically, as stated in Section B., Fujifilm‘s motion is granted to the extent that Polaroid‘s counterclaims are directed towards images of developed Instax Square film on Fujifilm‘s promotional materials. However, its motion for summary judgment on Polaroid‘s remaining counterclaims
Dated: August 25, 2025
New York, New York
NAOMI REICE BUCHWALD
UNITED STATES DISTRICT JUDGE