RIM vs. Samsung: Did imitation go from flattery to infringement?

When two women in distinctive but identical designer dresses are seated side-by-side in a trendy restaurant, there may be mutual if mortified acknowledgement of the other’s good taste, rapidly followed by a seating shuffle.
In contrast, when Samsung Electronics Co. Ltd.’s BlackJack smart phone appeared at Cingular Wireless L.L.C., the leading outlet in the United States for Research In Motion Ltd.’s BlackBerry devices, the latter was not amused, honored or flattered-RIM sued in U.S. District Court in Los Angeles, alleging that Samsung and its BlackJack infringe upon and dilute the value of RIM’s trademarks.
In an industry where imitation appears to run rampant, the outcome of the case may well help define the line between flattery and infringement. The case arises in the hotly contested market segment for affordable, multimedia and productivity devices in slab form that appeal to both consumers and enterprise.
Where enterprise-oriented, QWERTY-keyboard equipped messaging devices once were RIM’s nearly exclusive domain, many major handset vendors have entered the market with voice-enabled slabs at attractive price points designed to straddle the line between the massive consumer market and the needs of enterprise. Motorola Inc. launched its Q device this past spring, Nokia Corp. offered its E62 in fall to profit on the trend and grow the nascent smart-phone market. RIM, responding to pressure to broaden its enterprise base, launched its own entry, the Pearl, at T-Mobile USA Inc. in September. The Pearl launched at Cingular on Dec. 1.
According to financial analyst Ittai Kidron, RIM has enjoyed strong demand for its devices in the crucial fourth quarter and the Pearl’s launch at Cingular boded well for RIM’s end-of-year financials.
“With a growing exposure to the pro/consumer (market), RIM’s execution risk is higher and competition is stronger,” Kidron wrote in a note to investors.
A rose by another name?
Competition is all good and well, but when Samsung launched the BlackJack at Cingular Nov. 16, RIM cried foul.
RIM claimed in its suit that the BlackJack name, form factor, logo, product packaging and advertising campaign all are designed to capitalize on the BlackBerry’s trademarks and reputation, according to a copy of the complaint provided by RIM. Specifically, the BlackJack’s appearance mimics the Pearl to an unacceptable degree that will confuse consumers and dilute the value of RIM’s trademarks, the BlackBerry maker alleged.
RIM seeks an injunction against further sales of the BlackJack as well as monetary damages. The vendor is asking the court to order all BlackJack products and packaging recalled and turned over to RIM for destruction. RIM’s lawsuit lays out the history of its own registered trademarks, the success and fame of its devices and declared that BlackBerries have become “iconic in form and function,” while noting that “Cingular is the largest carrier of BlackBerry smart phones.”
RIM, Samsung and Cingular all declined to comment on the lawsuit.
The points made in RIM’s lawsuit clearly attempt to address the two legal issues being alleged: infringement and dilution.
The standard for determining trademark infringement, according to an informational Web site associated with Harvard Law School, is the “likelihood of confusion.” Courts typically consider seven factors affecting this standard, including the strength of the trademark, the proximity of the original and offending goods, the similarity of their “marks,” evidence of actual consumer confusion, the similarity of marketing channels, the degree of caution exercised by typical purchasers and the defendant’s intent. The concept of dilution relies on factors such as the original’s distinctiveness, duration of use and other factors.
Perhaps the flattering form of imitation is best observed from a distance. In RIM’s case, getting seated side-by-side with a similarly dressed rival provided the impetus to seek legal remedies.