Dropbox Fends Off Trademark Threat
Acaciapat.com - San Fransisco, Dropbox Fends Off Trademark Threat. A federal judge in San Francisco has handed a victory to data storage company Dropbox Inc. and its lawyers at Wilson Sonsini Goodrich & Rosati in a fight with a Texas company that claimed it had trademark rights to the Dropbox name.
Although Thru Inc. has used the name “DropBox” since 2004 for a software feature that allows customers to share files with third parties, U.S. District Judge Edward Chen of the Northern District of California found on Tuesday that Thru deliberately waited to sue Dropbox for trademark infringement until the Silicon Valley company had spent millions of dollars to build its brand and business.
“The evidence is overwhelming that Thru’s delay in filing suit was unreasonable and prejudiced Dropbox, and summary judgment is therefore appropriate here,” Chen wrote in a 10-page orderTuesday.
Thru waited until after Dropbox filed a declaratory judgment suit seeking to clear its use of the name last year before bringing counterclaims of trademark infringement. Thru CEO Lee Harrison had claimed in interrogatories that the company didn’t become aware of Dropbox’s use of the trademark until 2011.
But Chen pointed out in his order Tuesday that Dropbox had 40 million users by 2011 and had been featured in The New York Times, Forbes, PC Magazine and The Washington Post. Chen also noted that during a deposition Harrison had been forced to recant his interrogatory response after he was presented with 2009 emails discussing Dropbox and its services.
“A company such as Thru in the business of providing online file storage and transfer software should have been aware of what was, by then, the preeminent company offering similar products in the field, and that this company posed a competitive threat,” Chen wrote.
Harrison, Chen pointed out, had repeatedly referred to Thru’s trademark claims as a “lottery ticket” in internal emails and delayed filing suit to drive up the value of the company’s claims. Chen granted Dropbox’s motion for summary judgment on laches grounds and declined to reach a decision on alternative arguments put forward by the company.
Thru’s lawyers, Ian Boyd at Siskind Boyd in San Francisco and John Cone of Ferguson, Braswell & Fraser in Dallas, didn’t immediately respond to messages.
Source : www.therecorder.com