Bluetooth group battles maker of Dodges and Jeeps for not paying twice

A US appeals court has ruled that Fiat Chrysler Automobiles (or FCA) has a valid argument in a trademark case filed against it by the standards body behind Bluetooth. The disputed case could end up setting a precedent for whether automakers can buy radios that are already certified for Bluetooth or whether they will also have to pay the Bluetooth Special Interest Group (SIG) to certify. carsalso, adding costs at a time when car prices are already exploding.

The Bluetooth SIG sued the automaker – now known as Stellantis after FCA merged with Peugeot – in 2018. At the time, it said FCA was improperly using its brand on cars like the Jeep Wrangler and the Dodge Grand Caravan, which Bluetooth SIG hadn’t certified. The appeals court’s decision means the case is sent back to the lower court, which will now have to hear the automaker’s argument. You can read this decision at the bottom of this article.

The FCA’s defense, which was initially rejected by this lower court, is that Bluetooth SIG is trying to double down by saying that the car stereo and the car itself must go through certification. Its basis is the so-called first-sale doctrine – a concept that seeks to enable the resale of copyrighted works. In this case, FCA says that 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 he re-certify what has already been certified just because he put those products in a dashboard?

Bluetooth SIG thinks it should. In its complaint (PDF), the group argues that FCA was trying to get “a free ride” by putting the Bluetooth brand in cars and advertisements “without paying the required product declaration fee” or having its cars certified . The group’s argument doesn’t appear to be that the automaker is tarnishing its brand with a bad experience — its complaint doesn’t mention compatibility issues at all. Basically, the group is unhappy that the automaker says its cars have Bluetooth just because it bought a Bluetooth-certified radio.

The recent appellate court decision indicates that the lower court erred in rejecting the FCA’s argument that the first-sale doctrine applies. As Reuters points out, this does not mean the case is settled, it just means the FCA can return to court and plead again. While the appeals court ruling may set a precedent for future cases, it is not yet a settled issue. FCA could still lose the case, and if it does, it could serve as a green light for Bluetooth SIG to sue other automakers.

We have seen the first sale doctrine appear in other cases. This was hinted at when StockX began selling NFTs containing images of Nike shoes, claiming the digital tokens were essentially substitutes for the physical sneakers it had previously purchased. This came back when Nike sued MSCHF for trademark infringement when he collaborated with Lil Was X to sell Nike sneakers he had modified into Satan shoes (which were made with human blood). MSCHF and Nike eventually settled before there were arguments in court over whether the first-sale doctrine allowed it to sell a set of shoes bearing the Nike logo, and the lawsuit StockX is still going.

Of course, this isn’t limited to cases involving Nike – there have also been arguments about it in relation to online thrift stores and the sale of second-hand books and DVDs.

Virginia C. Taylor