NEWS21 August 2009

SPSS founder denied jury trial in row over trademark

Legal North America

US— SPSS co-founder Norman Nie has been denied a jury trial in his dispute with the research and analytics software company over its use of the ‘SPSS’ trademark.

Nie (pictured) sued SPSS for damages alleging trademark infringement after the company asked a judge to rule on its right to continue to use the trademark as it has done since 1975.

SPSS claims it sought declaratory relief from the courts in January last year after failing to reach an agreement with Nie on transferring his ownership of the trademarks to the company.

In May 2007, Nie was offered $10 for assigning his rights to the company – but according to court filings, his lawyers wrote back to SPSS CEO Jack Noonan stating that “the value of the retained ownership rights in those trademarks is more likely tens of million dollars than the ten dollars you have offered to pay”.

Documents in the case state that the United States Patent and Trademark Office granted registration of the SPSS trademarks to Nie and his co-founder C Hadlai Hull in April 1978, but a year earlier the pair had signed a licence agreement with the SPSS board of directors granting the company exclusive right to use the trademarks royalty-free, subject to terms and conditions.

Nie was CEO of the company up until 1992 and remained chairman of the board in the years afterwards. In late 2007, following disagreements with the rest of the board and management over the direction of the company, and in the wake of the dispute over the trademark ownership, Nie began to assert what he considered to be his rights under the trademark licence agreement.

Specifically he requested information about the company’s activities. Initially those requests were granted, but follow-up requests for more detailed information were refused, ultimately landing the matter in court. Nie resigned as chairman and as a member of the SPSS board on 3 January 2008.

He had sought a jury trial for his counterclaim of trademark infringement against SPSS, but that was denied by the court this week.

SPSS recently agreed to be bought by IBM in a deal worth $1.2bn.