A US appeals court has ruled that Fiat Chrysler Automobiles (or FCA) has a valid argument in a trademark lawsuit brought against the company by the standards organization behind Bluetooth. The case being challenged could eventually set a precedent as to whether automakers can buy radios that are already certified for Bluetooth or whether they also have to pay the Bluetooth Special Interest Group (SIG) to get certified. the carsalso, adding costs at a time when car prices are already skyrocketing†
The Bluetooth SIG sued the automaker – now known as Stellantis after FCA merged with Peugeot – in 2018. At the time, it said FCA improperly used its trademark on cars like the Jeep Wrangler and Dodge Grand Caravan, which lacked the Bluetooth SIG. t certified. The appeals court’s decision means the case will be referred back to the lower court, which must now hear the carmaker’s argument. You can read that decision at the bottom of this post.
FCA’s defense, initially rejected by that lower court, is that Bluetooth SIG is trying to double-dip by saying that both the car radio and the car itself must go through certification. The base is called something the first sales doctrine — a concept intended to allow for the resale of copyrighted works. In this case, FCA says it applies because it buys its infotainment systems from companies like Alpine, Harmon and Panasonic, which have already paid fees and certified their products for Bluetooth. Why should it recertify what’s already certified just because it put those products in a dashboard?
Bluetooth SIG thinks it should. In his complaint (PDF), the group argues that FCA was trying to get “a free ride” by putting Bluetooth branding on cars and ads “without paying the required product declaration fees” or getting its cars certified. The group’s argument doesn’t seem to be that the automaker is tainting its brand with a bad experience – its complaint mentions no compatibility issues at all. Basically, the group is angry that the automaker is saying its cars have Bluetooth just because it bought a radio certified for Bluetooth.
The appeals court’s recent ruling states that the lower court erroneously rejected FCA’s argument that the first sale doctrine applies. Such as Reuters points outHowever, this doesn’t mean the case is settled — it just means FCA can go back to court and plead it again. While the appeals court decision could set a precedent for future cases, it’s not a foregone conclusion. FCA could still lose the case, and if it does, it could be a green light for Bluetooth SIG to go after other automakers.
We’ve seen the first sale doctrine pop up in other cases. It was brought up when StockX started selling NFTs featuring images of Nike shoes, saying that the digital tokens were in fact stand-ins for physical sneakers it had already purchased. It came up again when Nike sued MSCHF for trademark infringement when it partnered with Lil Was X to sell Nike sneakers it had transformed into Satan Shoes (which were made with human blood). MSCHF and Nike eventually reached a settlement before there were arguments in court over whether the First Sales Doctrine allowed the sale of a set of shoes with Nike’s logo on them, and the StockX lawsuit is over. still going on†
Of course, it’s not just limited to cases involving Nike, there have also been fights over online thrift stores and the sale of second-hand books and DVDs.