Trademark

by Tim Cushing


Filed Under:
lottery ticket, trademark

Companies:
dropbox, thru



'Thru Dropbox' Trademark Registrant's 'Bad Faith' Litigation Results In $2 Million Fee Award To Dropbox

from the countersues-bull,-demands-horns dept

Thru, Inc. made a mess of its registered trademark by allowing it to lie dormant. It registered "Thru Dropbox" but made no attempt to challenge Dropbox's application for the term "DROPBOX" in 2009. Instead, it sat back and watched as Dropbox grabbed market share. Five years after it filed its application, the trademark was awarded to Dropbox. Only then did Thru, Inc. act, so to speak. It acted like the horrified victim of Dropbox's motion for declaratory judgment, one that would uncontestably award the "Dropbox" registration solely to the cloud storage service. Thru countersued, claiming infringement. Bad move.

During the lawsuit, discovery by Dropbox uncovered Thru Inc.'s master plan. Emails showed company officials actually referred to the "Thru Dropbox" trademark registration as a "lottery ticket" that would pay off as soon as Dropbox went public. As the court pointed out while handing bits and pieces of Thru's thoroughly-chewed ass back to it, referring to a dormant trademark registration as a "lottery ticket" is like counting your yachts before you've purchased them. It demonstrates bad faith -- the sort of thing that generally leads to lawsuit losses and hefty legal fee liability.

And here come the financial losses Thru clearly didn't figure into its "lottery ticket" calculations. The presiding judge has awarded more than $2 million in legal fees to Dropbox. From the order [PDF]:

The Court awards $1,761,781.50 in fees, $419,610.41 in nontaxable costs, and $116,040.18 in taxable costs.

As the court points out multiple times in the order, everything Thru did reeks of bad faith. The "slow walk" of its trademark enforcement to coincide with Dropbox's IPO. The references to the unenforced trademark as a golden ticket to unearned riches. The numerous false statements made during early depositions.

Of course, Thru Inc. had plenty of arguments left, especially now that it's own money was on the line. But the court doesn't have much sympathy for Thru's financial hole of its own creation.

Thru… argues that such a large fee award would be unfair given that it spent 27% of its annual revenue “on a lawsuit it tried hard to avoid.” As noted above, the record clearly belies the claim that Thru tried hard to avoid this litigation, and a significant portion of the expense incurred by Dropbox came as a result of Thru‟s bad faith litigation conduct.

Dropbox likely won't see any of this until after the Ninth Circuit Appeals Court has disposed of the case. Thru Inc. immediately appealed the adverse ruling handed down last year, but I can't imagine the Appeals Court is going to take a look at this and see that the trademark slow-walkers have somehow been screwed out of their IP "lottery ticket." All it's going to do is add more Dropbox billable hours Thru Inc. will have to pay for.


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  • identicon
    Anonymous Coward, 13 Mar 2017 @ 3:16pm

    All it's going to do is add more Dropbox billable hours Thru Inc. will have to pay for.

    Assuming that Thru does not spend all its money on its own lawyer fees, ans golden parachutes for the board as they go bust.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 13 Mar 2017 @ 8:10pm

      Re:

      Depends on whether or not the judge orders an escrow account for the fees and whether or not any bad faith justifies going after the corporate officers themselves. Incorporation and other liability limitation strategies aren't absolute.

      reply to this | link to this | view in chronology ]

  • icon
    TechDescartes (profile), 13 Mar 2017 @ 4:05pm

    So it was a lottery ticket…

    … just not for Thru.

    reply to this | link to this | view in chronology ]

    • identicon
      ryuugami, 13 Mar 2017 @ 8:49pm

      Re: So it was a lottery ticket…

      Wait, aren't legal fees just a refund on what Dropbox has already spent on litigation? Or were they awarded more than they spent?

      reply to this | link to this | view in chronology ]

      • icon
        TechDescartes (profile), 14 Mar 2017 @ 7:39am

        Re: Re: So it was a lottery ticket…

        Dropbox paid its lawyers for a service. The lawyers provided the service, so Dropbox received what it paid for. Thus, it's not a "refund".

        Instead, after the case is over, it's like Dropbox is being given a coupon with a scratch-off covering the amount of a possible rebate. Dropbox scratched it off and it read "90%" (based on the order giving Dropbox its full requested fees less a 10% "haircut").

        I guarantee that the person managing Dropbox's legal budget felt like he had been given a lottery ticket. (If you can't identify with paying legal fees, just imagine how you would feel after paying for a $20k surgery out of pocket and then being handed a 90% rebate.)

        reply to this | link to this | view in chronology ]

  • icon
    Anon E. Mous (profile), 13 Mar 2017 @ 4:25pm

    I love heart warming stories like this! Nothing better than seeing a troll get slammed

    reply to this | link to this | view in chronology ]

  • identicon
    Pixelation, 13 Mar 2017 @ 5:39pm

    My name is Thru...

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 13 Mar 2017 @ 5:40pm

    This is a disaster!

    SCO is a footnote in the archives of Hell; Prenda Law has just dropped out of the league--but at least they provided years and years of entertainment that is the public's right, with the concomitant popcorn consumption to prop up farming subsidies. Now "Thru Dropbox" is just ... "Through".

    The public will resort to Youtube content for entertainment--either cat videos or pirated MPAA products. Piracy will soar. Cats will be harmed. Popcorn sales will plummet. Basic internet service will become exceedinly acidic. BMWs will be repossessed as lawyers seek remunerable (if not socially acceptable) tasks. Civilization As We Know It Is At An End. And the worst of it is:

    IT IS ALL GOOGLE'S FAULT!

    reply to this | link to this | view in chronology ]

  • icon
    That Anonymous Coward (profile), 14 Mar 2017 @ 2:29am

    Just because someone said IP is our most valuable asset, doesn't mean it should be your only business model.

    reply to this | link to this | view in chronology ]


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