I’m not a lawyer, and I don’t play one on TV, either. I’m not able to provide any insight on this topic, I can only bring it up and maybe ask some questions, and speculate a little, which should be taken with a massive grain of salt. I probably know less about legal matters than the average person my age, so keep that in mind—I’m not pretending to be an expert on this whatsoever.
The news yesterday, as reported by PetaPixel, is that Polaroid (that is, PLR IP Holdings, LLC, which owns the rights to the Polaroid brand name, and doing business as Polaroid Originals) has filed a lawsuit against Fujifilm, and a judge has found sufficient evidence to allow the case to move forward. At some point in the coming months—unless the two parties agree on a settlement—this will go to trial.
The complaint is that Fujifilm’s Instax Square instant film is too similar to Polaroid’s classic film, which they trademarked years ago. Essentially, as I understand it, Polaroid’s film is not just film, it’s their logo. Since the white border of the film is highly recognizable, Polaroid registered a trademark for it. So, if a company wants to make instant film, it must look different than a Polaroid print. For example, Instax Mini is divergent enough that Polaroid would have a weak infringement case. Instax Wide isn’t 100% identical to the classic Polaroid frame, but it is very similar, and the judge in this case believes it is similar enough to move forward with the trial.
Fujifilm’s argument is that 1) the border serves a functional purpose (for example, housing the chemistry), and as such cannot be trademark protected (for example, Goodyear cannot trademark a tire just because it’s round and black), and 2) Polaroid had stopped making their film, which could be considered an abandonment of the trademark on the grounds of non-use. I think both of these arguments hold some merit, but are either strong enough to win? I have no idea.
Nearly a decade ago, Polaroid threatened Fujifilm with a lawsuit unless they paid them “millions per year” for their trademark. I’m not sure how much they will be seeking in damages should they win this suit, but I’m reminded of when Polaroid sued Kodak, and won big. Well, it was more that Kodak lost big than Polaroid won, because this lawsuit—how much was spent, and, perhaps more importantly, how much of a distraction it was—has been identified as a contributing factor to Polaroid’s eventual bankruptcy. But Kodak had to pay $925 million dollars to Polaroid (which, at the time, was the largest ever settlement), plus stop production of their Kodamatic instant film line. Oh, and they had to give their Kodamatic customers a refund, too. It was a huge blow to Kodak, and eventually contributed to their bankruptcy, at least a little.
Polaroid took Kodak out, and took themselves out in the process. Of course, that’s a massive—just massive—oversimplification of it all. The lawsuit was only a very, very small factor in both bankruptcies, as there were many other—and much larger—issues at play. A lot of articles have been written about this topic, and even a book (there are a lot of resources available, should you want to learn more). Obviously we’re only briefly touching the very surface here in this article and overgeneralizing, but it should be noted that the Polaroid vs Kodak lawsuit did have an impact on the film industry, probably more than most realize. There was no winner, despite Polaroid’s legal win.
I want to bring this back around to Fujifilm. It is very possible that a judgement could be ruled in Polaroid’s favor, and that Fujifilm will have to pay them millions—tens of millions at least, but quite possible hundreds of millions, if not more—and they’ll have to stop making Instax Wide cameras and film. They’ll probably have to give their customers a refund, too. I mean, if Red Bull had to pay a settlement because you don’t actually grow wings after drinking it, any judgement is possible. If such a ruling were to happen, that would be a massive blow to Fujifilm, which has the potential to ultimately end Fujifilm’s photography business.
Instax is Fujifilm’s big moneymaker. While the X-series and GFX-series have both grown in recent years, Instax is still Fujifilm’s largest camera/photo segment. Losing hundreds of millions in a judgement would be a massive setback, but if they have to stop making Instax Wide, that might be just as big of a blow—a double whammy. This has the potential to be devastating.
I don’t know, nor do I care to speculate, if Fujifilm violated Polaroid’s trademark. Maybe they did, maybe they didn’t—I have no idea, and that’s not for me to decide, anyway. With that said, I hope the judge rules in favor of Fujifilm, or, if not, it is like when the USFL sued the NFL and won, but only got a $1 judgement. The worst-case scenario (from my perspective as a long-time loyal Fujifilm customer) is that Polaroid wins and receives a very large settlement, which becomes a turning point for Fujifilm, eventually leading to a future bankruptcy or a shuttering of the photographic business (which is only a small part of the company overall). It’s like dominoes, where knocking one down can lead to more falling. Obviously, I hope that can be avoided.
It seems more likely than not that Fujifilm will pull through this just fine, even if they lose the case. Instax Mini has a larger market share than Instax Wide, and the digital camera division has been on a roll lately. But, to a small extent that I’m clearly overstating, Polaroid took down Kodak, and they could do the same to Fujifilm, even if it’s seemingly unlikely. This is something to keep an eye on. No court date has been set, and I’m not sure how long we’ll have to wait to find out—the battle between Polaroid and Kodak took 14 years to play out. Oh, and I know it may sound like it, but by no means am I anti-Polaroid. I have Polaroid cameras and film, and even sport a Polaroid t-shirt from time-to-time. I sincerely wish them much success in everything …aside from this lawsuit.
What do you think? Will Fujifilm win? Will Polaroid? What kind of impact will it have if they do? Is this all much ado about nothing? Let me know your thoughts in the comments!
“Polaroid” is trying to assert a trademark claim on behalf of a company that doesn’t even exist any more. That leaves an awful lot of room for Fujifilm to argue that Polaroid abandoned its claim to the format when it stopped making the product, went out of business, and didn’t try to assert those rights for many years. What’s now “Polaroid” started out as the Impossible Project, and did not try to assert any trademark rights for quite a long time. Unlike patents, trademarks have to be actively defended in order for courts to enforce them. Furthermore, if Fujifilm can make a case that the resemblance is for functional reasons, they could prevail on those grounds.
I’m not a lawyer, either, but I suspect that this will either settle or, if it goes to court, Fujifilm has a pretty decent chance of winning. I hope Fujifilm are too smart to risk the whole company (or even a big part of their profits) on something like this.
I really hope that you are right. It seems as though the trademark should have expired when Polaroid abandoned their product, plus failed to defend the trademark for a time. And it seems like a questionable trademark to begin with, that may have been granted in error. But I’m often surprised how court cases go, so it wouldn’t surprise me in the least if Polaroid won.
I am a retired attorney, but this area was by no means my specialty. To a certain extent civil commercial lawsuits are part of a negotiating process. At times good lawyering involves trying a case; at times it involves getting a client to the negotiating table. If the product is profitable, giving Polaroid a small piece of the action can be a win-win situation, especially since Polaroid is not presently manufacturing a competing product. And if I were Polaroid’s attorney, I would tell them not to be too greedy. A small piece of a continuing product is better than a larger piece of a product Fujifilm decides to discontinue.
Thanks for the input!
If the two parties can agree on a settlement, that might be the closest thing to a win-win. I’m not sure how eager either party is to settle, but I’m sure both have to be somewhat willing, right?
I have multiple Instax and Polaroid instant cameras. I actually became interested in the new Polaroid I-2 camera because I liked using Instax but wanted a better camera and bigger picture. So there is lots of crossover between the two brands I bet. If I were Polaroid I would focus my energy on making better film instead of suing Fujifilm. Their color film takes 15 minutes to develop and is extremely temperature sensitive. Their new monochrome film looks amazing but turns yellow within two weeks of shooting it.
The best case scenario would be Polaroid and Fuji work together to mutually advance the capabilities of instant film. Kodak currently makes film for Fuji, so why can’t Fuji help the new Polaroid advance their chemistry and production capabilities for instant film?
Yeah, it’s too bad they couldn’t work together. In the past they did, but 1) as I understand it, today’s Polaroid is actually an entirely different company, and 2) I’m sure none of the people involved in either company are even around anymore, probably all retired. But, still, a collaboration seems much more beneficial to both parties than a lawsuit. Thanks for the input, Dan!
This was my eldest, 100 year old, brothers area of expertease.
Maybe, in his time, the World’s best. Certainly Europe’s best.
Key is, not only the case but where. That also means where the Patents and Trademarks are held. It is also very possible the Patents and Trademarks conflict.
Back in the day, there was nothing special about a square print having borders. Quite the norm. Possibly, Polaroid were trying to look grown up by producing a print similar to one processed commercially from120 film, exposed on a prestigious camera, say a Rolleiflex TLR or even an Hasselblad. Aspirational even.
The lead attorney only has to make this seem obvious. Make the Head of the bench think it was his idea and it all goes away.
Bro was asked to Head the European Intellectual Property Bench when he was nigh 80.
(He is still registered).
His response was.
I dislike Munich.
I hate Germans (from discovering Concentration Camps in the push across Europe). Field Ranked as Major, REME at 19.
Why didn’t you ask me when I was 60?
Most Patents are as watertight as a colander.
Never approach them at face value. Very rarely truly Novel if you look at it right.
Seems. if the Patent falls, the Trademark also falls.
Rgds.
Malcolm.
Yeah, that’s a really good point. I have photo albums from my late-grandparents, and there are many pictures with a white border, some probably predating Polaroid as a camera company. Thanks for the input!
I believe that Fujifilm have kept their photography business out of respect and loyalty to the ethos of photography itself but as a company they diversified into other areas many years ago and would continue to exist perfectly well without Instax Wide. A rather shameless attempt at a money grab by Polaroid but that’s the world we live in now.
Yes, they said that even if the photo business was not profitable, they’d keep it open because it is a national treasure (or something like that). Mostly, they are now a pharmaceutical/medical and cosmetics company, with some other side hustles, like photography.
Interesting article… In Europe, we are aware of how well-funded American law firms are scrutinizing how they can obtain large sums of money without offering anything significant in return.
This Polaroid-Fuji case is no exception. Isn’t it a shame that highly renowned brands, which were the only ones capable of bringing an excellent product to market, appreciated by millions of end users, now want to take down Fuji after years of slacking off? Why destroy Kodak? Why try to undermine Fuji now? Polaroid is incapable of creating a good product of its own. We no longer live in the era of creative engineers who allowed us users to enjoy their fantastic products. Instead, we now have hungry money wolves who want to destroy brands.
It’s very sad: I loved Polaroid, I still love Kodak, and I am in love with Fuji engineers….
Willem Kramer, Netherlands
Translated with DeepL.com (free version)
Unfortunately, it is a problem. The attorneys stand to gain millions, if not a lot more.
I put a white border around my printed photos, I hope I’m not going to sued!
I hope not, too 😮 🤣
Off to the side…. Fuji ought to have an Instax film sim on the next iteration of X-Trans processors.
Barring that, any hope for a Instax recipe from FXW? (ideally compatible with X-Trans 4)
I would love for Fujifilm to introduce an Instax Film Sim, or at least an Instax Advanced Filter. Seems pretty obvious.
I’ve made some attempts at a Recipe, but getting that lofi analog feel is pretty difficult. Dan Allan (I believe that’s who it was) was working on one that was probably as close as I’ve seen, but the aesthetic seems just out of reach.
Please don’t confuse readers by mixing the lawsuit between kodak and Polaroid and this one together.
The argument is totally different.
Polaroid sued Kodak for manufacturing an instant film which used the same technologies as Polaroid, and kodak lost the case.
Polaroid had also sued Fujifilm for the same reason in 1986, but this time, Polaroid couldn’t convince the judge. Eventually the case was dropped with a settlement, Polaroid could access to certain areas where Fujifilm had a patent to avoid a prolonged lawsuit.
If you want to understand why Polaroid dropped the case, cut the thicker part of the frame where the chemicals are stored and check the difference between Fujiiflm instax and a Polaroid print.
They are quite obviously much different cases, and I encourage anyone who is interested to search out more information. There are a lot of articles, and even a book, that discuss it in detail.
I think, this is another one of those cases, where a company specialised in buying brands out of a bankruptcy or similar situation for peanut money, gets a brand, where in the beginning that IP company had nothing to do with. The classic case is, that this IP company then looks for opportunities to sue some other company to some sort of payback for buying the brand. Call me a hater, but, I do not think, these kinds of companies bring any value to the market.
It seems that there is some truth in that. From what I understand, the largest shareholder of The Impossible Project purchased the rights to the name and intellectual properties of Polaroid, and then allows The Impossible Project to use the Polaroid brand name and intellectual properties. It is that shareholder that is suing Fujifilm, from what I understand. Perhaps their investments in the Polaroid world aren’t as profitable as they’d like them to be.