Protus IP chief executive Joseph Nour.

Accusations fly, barbs traded in international patent infringement case

U.S.-based Internet faxing company j2 Global Communications is fighting back after Ottawa firm Protus declared victory last week in its opposition of j2's trademark application for the word 'eFax' in the United Kingdom.

"We think this decision is erroneous, and we're in the process of preparing an appeal," said j2 general counsel Jeff Adelman.

The U.K. case is the latest part of a three-year saga, with j2 accusing Protus of infringing on five patents with Protus's MyFax and Virtual Fax online fax services and alleged involvement in sending out junk faxes to j2's customers.

Mr. Adelman said j2 already holds a registered trademark in the United Kingdom for eFax in the software class, which it attempted to register for the telecommunications class. He argued that people would think specifically of j2's service when they thought of the term 'eFax.'

But the U.K. Intellectual Property Office upheld Protus's opposition on the grounds that the mark was clearly descriptive or generic.

In December, Protus announced that j2's patent infringement case against it in the U.S. had been dismissed with prejudice, meaning j2 could no longer assert patent claims against Protus.

However, Mr. Adelman said Protus had omitted that j2 had itself dropped the case when it learned Protus was operating a service based outside the U.S., since it was exclusively doing business in Canada.

"Protus did not 'win' anything, and the court did not rule on anything that resulted in the ultimate dismissal," Mr. Adelman said at the time. He added j2's litigation against Protus in the Canadian courts, related to two patent families, is moving forward along with two patent cases in Texas and California. The junk faxing case, which is moving towards trial, could cost Protus up to $1,500 per unsolicited fax if actions are found to be wilful.

But Protus isn't sitting back. When called for comment, CEO Joseph Nour accused j2 and Georgia-based patent holding company Catch Curve of using the courts to hurt j2's rivals.

"This is a litigious space, and j2 is driving a strategy of weakening competitors, but Protus is not a weak competitor," said Mr. Nour, who defended the company's reputability and said the junk faxing case was simply another j2 "angle."

"Basically, Protus's MyFax is clearly the second-largest player in the market, and we believe j2 clearly views us as a threat."

He noted that j2 has launched lawsuits against close to 50 companies in the past few months, and pointed out j2 itself is facing antitrust lawsuits by companies including Miami-based Venali Inc. and Internet domain registrar Go Daddy.

Mr. Nour added that j2 had licensed its patents to more than 30 companies before suing Protus, and said, "If they could have licensed to us, they would have, but they could not, and Protus won.

"We're confident about our position and believe we will win the next round."

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TIMELINE

Aug. 2, 2005 - j2 launches patent lawsuit against Protus

Jan. 26, 2006 - j2 files statement of claim in Toronto

Feb. 2, 2006 - j2 sues Protus for allegedly sending unsolicited faxes to j2 customers

Dec. 12, 2007 - Protus announces j2 patent suit has been dismissed with prejudice in the Central District of California

June 30, 2008 - j2 files another patent infringement lawsuit against Protus and two other companies, in a Texas district court

Aug. 5, 2008 - Protus announces U.K. Intellectual Property Office has issued a decision upholding its opposition to j2's registration of 'eFax' as its own trademark