You’ve probably heard about the bankruptcy of Eastman Kodak Company. Yes, everyone sees the irony in a once successful company famous for its technical innovations failing to keep pace with the rapid speed of digital technology. Should we write off Kodak and leave it to the dry and dusty bins of history — as one of our partners puts it (see below) — or should we await to see what emerges from black box of bankruptcy? We’ll leave that question to bankruptcy lawyers. For now, let’s briefly consider the impact of Eastman Kodak upon trademark law.
Intellectual property lawyers are fond of pointing out that the KODAK trademark has assumed almost iconic proportions as the epitome of trademark fame and strength. One court noted that “The Kodak trademark is perhaps one of the strongest and most distinctive trademarks in this country, if not the world.” Indeed, KODAK is listed in the leading treatise of trademark law by J. Thomas McCarthy as one of just a handful of fanciful — hence strong — marks joining ranks with the likes of CLOROX, EXXON, and POLAROID. Did you realize that the fame of the KODAK mark has its roots in the 19th century?
In 1890, Eastman defended its KODAK brand before the Patents Court of the United Kingdom in the case of Eastman Photographic Materials Company, v. John Griffiths Cycle Corporation, Limited (15 RPC 105). This was a period when steam was king, the automobile was in its infancy, and wireless telegraphy was high-tech. Yet, the facts of the case have a modern ring. Here’s what happened:
For many years, Eastman had been using the registered trademark “Kodak” to identify their goods, especially cameras. One of its products was a specialty camera and attachment hardware for bicyclists. The product was advertised by Eastman as “Bicycle Kodaks.” During the same period, Eastman Company owned shares in a limited company called the “Kodak Company, Limited,” which had yet to begin business but showed commitment to its mark. In the previous year, 1897, the John Griffiths Cycle Corporation (“JG”) applied for and obtained registration of the word “Kodak” as a trademark identifying bicycles and other vehicles. It also registered a new company called “the Kodak Cycle Company, Limited” and commenced to advertise “Kodak Cycles”. Although Eastman’s KODAK mark was registered it was not registered to identify bicycles. Displeased with these developments, Eastman sued JG and the Kodak Cycle Company demanding that they refrain from carrying on business under the name Kodak Cycle Company, passing off their goods as the goods of Eastman, and infringing Eastman’s trademarks.
The court held that KODAK had become identified with Eastman and its goods, and that there was a close connection between the bicycle and photographic trades. The court further held JG’s registration had been obtained by fraud, that the defendants were trying to get the benefit of the reputation of the Eastman company, and that the trademark must be “expunged” as being calculated to deceive. Finally, of course, the court imposed an injunction on the defendants to stop the infringing conduct.
So, if you didn’t know that there is a close connection between bicycles and cameras, now you do. Let’s hope that the Eastman Kodak Company can pull itself together and reclaim its lost grandeur.
— Adam G. Garson, Esq.