How iconic is Polaroid’s square format? Courts to decide as years-long dispute between camera makers heats up

From the Outkast song Hey Ya to Taylor Swift album covers, Polaroid’s instant film has remained both a piece of photography history and a part of pop culture. But is that iconic white border around a square photo part of a trademarked aesthetic, or just integral to how instant film works? The courts are poised to examine that question and several others as a trademark infringement case between Polaroid and Fujifilm that originally initiated in 2017 will soon likely come to trial.

The trademark infringement case dates back to 2017 and has been in and out of courts since, but a judge for the United States District Court for the Southern District of New York has recently dismissed Fujifilm’s requests for a summary judgment. Last month, Judge Naomi Reice Buchwald partially dismissed Fujifilm’s motion for summary judgment, a move that likely means the case will be headed for a trial.

Polaroid’s longstanding square format instant film became such a key part of the brand’s reputation that it is now part of the brand’s logo, referred to in the lawsuit as the “classic border logo,” which first started appearing on some Polaroid products in 1972.

The lawsuit questions whether or not Fujifilm’s Instax Square film infringes on Polaroid’s intellectual property, which includes two trademarks, one for the logo and one for the design of the film itself. Fujifilm has three Instax film formats (and a line of portable printers and instant cameras to go along with them): Instax Mini, Instax Wide, and Instax Square. The court case concerns the latter and examines whether or not the square Instax infringes on Polaroid's trademarks.

While on the surface the case appears as a question of intellectual property, the case goes beyond whether or not Instax Square is different enough from the original Polaroid Square film. When Fujifilm began developing Instax Square in 2014 and then later launched the product in 2017, Polaroid had already announced in 2008 that it had stopped making instant film.

But the same year that Instax Square launched, the Impossible Project, the company that had bought Polaroid’s film factory in an attempt to save the format, became the largest shareholder for PLR IP Holdings, LLC, the company that owns the Polaroid trademark. In essence, Impossible Project eventually became Polaroid Originals and, eventually, Polaroid, although PLR IR Holdings LLC remains a separate entity.

Common law rights describe “abandonment of a mark”, where three years of non-use and lack of intent to resume use “constitute a forfeiture of a property right”. Fujifilm says that Polaroid abandoned its rights when it stopped producing film in 2008, while Polaroid says that a statement from the new owner and licensing deals as early as 2011 made it clear that Polaroid intended to resume the use of that format.

That’s not the only question that the courts will debate over, however. The court looked at factors like whether or not the two products can be easily confused with one another. According to the court document, the court examined an “email from a Fujifilm executive stating, ‘I’m looking at a square instax on my desk and am not sure how to tell it’s different [from Polaroid’s film].’”

Another issue that the court examined is whether or not the white border on instant film is functional and an essential part of the ability to put both film and developing materials into one pouch, or aesthetic. Fujifilm argues that the film’s borders are dictated by function. Polaroid argues that Fujifilm’s application for a design patent for Instax Square, filed in 2017, implies that the design is aesthetic, not functional, as design patents are only issued for “ornamental designs,” unlike standard patentsThe lawsuit was originally filed in 2017 by Fujifilm in response to Polaroid’s claims that Instax Square infringed on their trademark and requests for payments to license the square film format. While the judge granted the motion for dismissal for the elements of the court case dealing with the film’s promotional materials, the judge denied Fujifilm’s request for a summary judgment on the remainder of the trademark infringement claims.

The denial of the summary judgment means the judge has deemed that there’s enough of a dispute for the case to head to trial. A court date has not yet been announced.

You may also like

Debating on an instant film camera? Here's how Instax vs Polaroid differs. Or, here's the size comparison between different instant film types.