Apple sued over 'Animoji' trademark, allegedly tried to buy IP rights prior to iPhone X de...

Posted:
in General Discussion edited October 2017
A Japanese company on Wednesday filed suit against Apple for allegedly infringing on a U.S. trademark covering "Animoji," which the Cupertino tech giant is using to market a new facial recognition feature introduced with iPhone X.


App Store screenshot showing an early version of emonster's Animoji app.


In a complaint lodged with the U.S. District Court for the Northern District of California, plaintiffs emonster k.k. and Enrique Bonansea, a U.S. citizen living in Japan, registered for the "Animoji" mark in 2014, reports The Recorder. The U.S. Patent and Trademark Office subsequently granted rights to the property in 2015.

Emonster, a software development firm based out of Tokyo, applied the mark to a titular app that hit the iOS App Store on July 23, 2014. Still available for $0.99, Animoji - Free Animated Texting [Patent Pending] is described as a "fast, free and easy-to-use tool to animate your text and email messages."

The app provides basic animated emoji graphics for embedding in iMessage or email text. Unlike similar features rolled out by other messaging services, moving graphics sent by Animoji can be viewed by anyone, even users who do not have the app installed.

According to the complaint, Apple not only had knowledge of the Animoji app prior to September's iPhone X launch, but attempted to purchase rights for the mark from emonster. Bonansea claims he was approached by Apple "fronts," like The Emoji Law Group LLC., to sell the property this past summer. These entities allegedly threatened to file a cancellation proceeding if the developer failed to acquiesce to their requests.

The suit does not include evidence that ties Apple to the supposed fronts, but the iPhone maker has been known to conduct patent, trademark and other publicly accessible regulatory operations under the guise of shell corporations to avoid unintentional leaks.

"Instead of using the creativity on which Apple developed its worldwide reputation, Apple simply plucked the name from a developer on its own App Store," the complaint reads. "Apple could have changed its desired name prior to its announcement when it realized Plaintiffs already used ANIMOJI for their own product. Yet Apple made the conscious decision to try to pilfer the name for itself -- regardless of the consequences."

Apple filed for a cancellation of the "Animoji" trademark one day prior to announcing the highlight iPhone X feature at a special event in September. As noted by Apple, the Washington company "emonster Inc." did not exist at the time of the original trademark filing. Bonansea lived in Seattle prior to moving to Japan.

The suit points out, however, that the now dissolved "emonster Inc." and current Japanese corporation, "emonster k.k.," acted as a single commercial enterprise when the mark was first filed. As such, emonster's USPTO counsel filed for a technical correction to clarify correct ownership, but that attempt was rebuffed as the cancellation proceeding was already underway.

Plaintiffs reapplied for "Animoji" on Sep. 12, 2017, this time through emonster k.k., using the app's 2014 launch data as a basis of registration.

Apple announced Animoji alongside its next-generation iPhone X handset last month. Presented as a key feature that shows off the smartphone's TrueDepth camera system and advanced iOS 11 software, Animoji are emoji characters that animate based on a user's facial expressions. The fun messaging feature is actually quite complex, relying on computer vision and processing technology likely developed through acquisitions like real-time motion capture specialist Faceshift and facial expression analysis firm Emotient.

Emonster and Bonansea seek a permanent injunction against Apple's use of "Animoji," damages, profits attributable to the mark and court fees.

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Comments

  • Reply 1 of 24
    analogjackanalogjack Posts: 1,066member
    Damages are going to be a bit tricky since he'll likely sell more of the app, and make a profit. How would he make a valid claim for damages, it doesn't matter what Apple call it, no one is going to choose his shitty app on the iPhone X. Having said that, Apple seem to have done the wrong thing here.
    superklotonllama
  • Reply 2 of 24
    Rayz2016Rayz2016 Posts: 4,591member
    Damages are going to be a bit tricky since he'll likely sell more of the app, and make a profit. How would he make a valid claim for damages, it doesn't matter what Apple call it, no one is going to choose his shitty app on the iPhone X. Having said that, Apple seem to have done the wrong thing here.
    Mmmm. I’m not so sure.  The timeline of who applied for what and when is a bit unclear. But if an app called Animoji has existed since 2014 then surely that is enough to demonstrate ownership, even if they only filed when they heard Apple was going to use the name. 
  • Reply 3 of 24
    SoliSoli Posts: 8,810member
    For shame, Apple, for shame.



    arthurbahammerd21STnTENDERBITS
  • Reply 4 of 24
    calicali Posts: 3,495member
    Damages are going to be a bit tricky since he'll likely sell more of the app, and make a profit. How would he make a valid claim for damages, it doesn't matter what Apple call it, no one is going to choose his shitty app on the iPhone X. Having said that, Apple seem to have done the wrong thing here.

    Is there proof Apple scrolled through the App Store looking for a name to copy?
    You really think Apple typed in “Animoji” into their App Store and thought “Aha! That’s the name we’ll copy!!”

    I highly doubt that and the article seems to suggest the company has went out of business.

    It’s crazy to see things go full circle.
    Apple creates a new craze called the App Store, allows 3rd Parties to monetize their iPhone creations, Apple creates new feature, an App developer wants to sue Apple, a developer who wouldn’t exist without Apple’s creation.

    Didn’t a small app developer wanna sue Apple for using “Lion” in OS X?
    bshank
  • Reply 5 of 24
    JinTechJinTech Posts: 357member
    cali said:
    Damages are going to be a bit tricky since he'll likely sell more of the app, and make a profit. How would he make a valid claim for damages, it doesn't matter what Apple call it, no one is going to choose his shitty app on the iPhone X. Having said that, Apple seem to have done the wrong thing here.

    It’s crazy to see things go full circle.
    Apple creates a new craze called the App Store, allows 3rd Parties to monetize their iPhone creations, Apple creates new feature, an App developer wants to sue Apple, a developer who wouldn’t exist without Apple’s creation.
    Rob from the rich to pay for the poor? 
  • Reply 6 of 24
    rob53rob53 Posts: 2,030member
    Rayz2016 said:
    Damages are going to be a bit tricky since he'll likely sell more of the app, and make a profit. How would he make a valid claim for damages, it doesn't matter what Apple call it, no one is going to choose his shitty app on the iPhone X. Having said that, Apple seem to have done the wrong thing here.
    Mmmm. I’m not so sure.  The timeline of who applied for what and when is a bit unclear. But if an app called Animoji has existed since 2014 then surely that is enough to demonstrate ownership, even if they only filed when they heard Apple was going to use the name. 
    I'm not a lawyer but we're talking about trademarks not patents and the rules are different. If emonster inc didn't exist at the time of the original trademark filing then filing for a trademark by a non-existing company might be enough to invalidate the trademark, which is what I believe Apple is saying. I didn't notice anything that says Apple filed for a trademark on Animoji but maybe that doesn't matter in this lawsuit. It's getting to the point where every word is already trademarked so what kind of made up, non-sensible word is any company supposed to use?
  • Reply 7 of 24
    The plaintiff's claim of events don't sound realistic, nor does the suggestion that someone couldn't come up with the portmanteau "animoji" independently. (I'd even be surprised if there wasn't an existing unregistered trademark/s prior.)

    Apple filing for the Animoji cancellation seems to be proof of that. Otherwise they'd just have a shell company file for cancellation much earlier. However, what is telling is that the plaintiff is asking for 'profits'.

    Historically Apple have switched product names (e.g. Rendezvous versus Bonjour) after launches when there has been legitimate infringement of trademarks. Since Animoji isn't a product name I'd expect similar if Emonster's claim to the trademark is sustained.

    In other news the plaintiff's app also utilises Apple's intellectual property, making this case seem more opportunistic than genuine. 
    edited October 2017
  • Reply 8 of 24
    This seems to be Apple's strategy - go to market with a service even if they know they don't own the name then settle behind closed doors. They did the same with Cisco, who owned the iPhone name
  • Reply 9 of 24
    rob53 said:
    It's getting to the point where every word is already trademarked so what kind of made up, non-sensible word is any company supposed to use?
    You mean like AirPower?
  • Reply 10 of 24
    gatorguygatorguy Posts: 20,588member
    cali said:
    Damages are going to be a bit tricky since he'll likely sell more of the app, and make a profit. How would he make a valid claim for damages, it doesn't matter what Apple call it, no one is going to choose his shitty app on the iPhone X. Having said that, Apple seem to have done the wrong thing here.

    Is there proof Apple scrolled through the App Store looking for a name to copy?
    You really think Apple typed in “Animoji” into their App Store and thought “Aha! That’s the name we’ll copy!!”

    I highly doubt that and the article seems to suggest the company has went out of business.

    It’s crazy to see things go full circle.
    Apple creates a new craze called the App Store, allows 3rd Parties to monetize their iPhone creations, Apple creates new feature, an App developer wants to sue Apple, a developer who wouldn’t exist without Apple’s creation.

    Didn’t a small app developer wanna sue Apple for using “Lion” in OS X?
    So you think Apple didn't bother to check trademarks? That no one even did a simple web search for the name to see what popped up? Well OK then. Personally I think it's very likely Apple was aware of both the app and the trademark but wanted to use it anyway. 
    edited October 2017 mike1hubbaxSolicommand_fbonobob
  • Reply 11 of 24
    radarthekatradarthekat Posts: 3,046moderator
    Rayz2016 said:
    Damages are going to be a bit tricky since he'll likely sell more of the app, and make a profit. How would he make a valid claim for damages, it doesn't matter what Apple call it, no one is going to choose his shitty app on the iPhone X. Having said that, Apple seem to have done the wrong thing here.
    Mmmm. I’m not so sure.  The timeline of who applied for what and when is a bit unclear. But if an app called Animoji has existed since 2014 then surely that is enough to demonstrate ownership, even if they only filed when they heard Apple was going to use the name. 
    I wouldn’t count on that.

    My sense is that, since Apple certainly knew about the name prior to Sept 12, as evidenced by their filing a request for cancelation of the trademark, this suggests that Apple’s legal team was on the case and would have looked at the law around the question of ownership by a company that didn’t legally exist back when the trademark was originally filed, and likely came to the conclusion that they indeed have a leg to stand on.  Otherwise they would have not have proceeded.  Either that or Apple feels they can push to have the trademark invalidated by some other means.  All’s fair in love and business. 
    edited October 2017
  • Reply 12 of 24
    cali said:
    Damages are going to be a bit tricky since he'll likely sell more of the app, and make a profit. How would he make a valid claim for damages, it doesn't matter what Apple call it, no one is going to choose his shitty app on the iPhone X. Having said that, Apple seem to have done the wrong thing here.

    Is there proof Apple scrolled through the App Store looking for a name to copy?
    You really think Apple typed in “Animoji” into their App Store and thought “Aha! That’s the name we’ll copy!!”

    I highly doubt that and the article seems to suggest the company has went out of business.

    It’s crazy to see things go full circle.
    Apple creates a new craze called the App Store, allows 3rd Parties to monetize their iPhone creations, Apple creates new feature, an App developer wants to sue Apple, a developer who wouldn’t exist without Apple’s creation.

    Didn’t a small app developer wanna sue Apple for using “Lion” in OS X?
    Is there proof that Apple scrolled through the App Store looking for a name to copy?  Of course not.  The fact that no one made that claim didn't stop you from making that deflective inference did it?  Of course not.   And of course you highly doubt it because you, and you alone, made up the scenario to do exactly what you're doing: trying to cast doubt.   Also, not sure what article you read, but there's nothing in this one that suggests the company went out of business.  It does suggest there were technical errors in registering the trademark with an American version of the company's name.

    If that wasn't enough, you decided it would be a good idea to "Turn it up to 11" with unrelated gibberish about creating the App store and broke the knob off conflating this situation with something from the distant past.  You should be in politics because you managed to dance around every fact in the article and present a fairy tale of righteous indignation based on nothing but your imagination and rhetoric.  Kudos.
    gatorguyhubbaxsingularityradarthekatmuthuk_vanalingam
  • Reply 13 of 24
    SoliSoli Posts: 8,810member
    gatorguy said:
    cali said:
    Damages are going to be a bit tricky since he'll likely sell more of the app, and make a profit. How would he make a valid claim for damages, it doesn't matter what Apple call it, no one is going to choose his shitty app on the iPhone X. Having said that, Apple seem to have done the wrong thing here.

    Is there proof Apple scrolled through the App Store looking for a name to copy?
    You really think Apple typed in “Animoji” into their App Store and thought “Aha! That’s the name we’ll copy!!”

    I highly doubt that and the article seems to suggest the company has went out of business.

    It’s crazy to see things go full circle.
    Apple creates a new craze called the App Store, allows 3rd Parties to monetize their iPhone creations, Apple creates new feature, an App developer wants to sue Apple, a developer who wouldn’t exist without Apple’s creation.

    Didn’t a small app developer wanna sue Apple for using “Lion” in OS X?
    So you think Apple didn't bother to check trademarks? That no one even did a simple web search for the name to see what popped up? Well OK then. Personally I think it's very likely Apple was aware of both the app and the trademark but wanted to use it anyway. 
    It wouldn't be the first time they did that. The iPhone trademark is the most infamous one.
  • Reply 14 of 24
    As bad as it looks, it seems like Apple tried to negotiate to buy the rights initially, already knowing there were weak legal claims by the “owner” due to the way the trademark was original filed. And when the owner refused (and I’m guessing tried to ask for more), Apple had to go with plan B to invalidate the claims.

    Based on the way the timeline of events and subsequent damages requested in the lawsuit, it sounds like a case where Apple tried to act in good faith to give credit and negotiate but the other side tried to go for a money grab instead. 
    edited October 2017 radarthekat
  • Reply 15 of 24
    They did the same thing with the iPhone. They knew there was a preexisting voip phone, but also knew they could afford to keep it in court long enough to win. 
    edited October 2017
  • Reply 16 of 24
    SoliSoli Posts: 8,810member
    As bad as it looks, it seems like Apple tried to negotiate to buy the rights initially, already knowing there were weak legal claims by the “owner” due to the way the trademark was original filed. And when the owner refused (and I’m guessing tried to ask for more), Apple had to go with plan B to invalidate the claims.

    Based on the way the timeline of events and subsequent damages requested in the lawsuit, it sounds like a case where Apple tried to act in good faith to give credit and negotiate but the other side tried to go for a money grab instead. 
    There's evidence that Apple did try to obtain the rights before using it, but we can't say that the offer was reasonable. Maybe the owner was wanting something obscene (e.g.: one billion dollars), but maybe Apple offered something ridiculously low (e.g: one thousand dollars).
  • Reply 17 of 24
    mnbob1mnbob1 Posts: 262member
    The app hasn’t been updated for 3 years. That doesn’t show much interest in by the developer in keeping it up to date. The update version history at that time shows “patent pending” to the app title. 
  • Reply 18 of 24
    Say what you like, it still looks like the little guy got it first and the big guy wanted it and took it. It's bad PR at minimum.
    Solimuthuk_vanalingam
  • Reply 19 of 24
    As bad as it looks, it seems like Apple tried to negotiate to buy the rights initially, already knowing there were weak legal claims by the “owner” due to the way the trademark was original filed. And when the owner refused (and I’m guessing tried to ask for more), Apple had to go with plan B to invalidate the claims.

    Based on the way the timeline of events and subsequent damages requested in the lawsuit, it sounds like a case where Apple tried to act in good faith to give credit and negotiate but the other side tried to go for a money grab instead. 
    It really doesn't seem that way.  The trademark holder assumed it was Apple looking to buy Animoji. There is still nothing provable that says it was Apple.  Sure anecdotally, the evidence suggests The Emoji Law Group LLC was an Apple front, but using a front company is not typically considered acting in good faith. Threatening to cancel the guy's trademark if he doesn't sell, that ain't good faith.  It's understandable since Apple probably wants to lessen the chance of a potential deal getting out of hand because of "Apple money", but that ain't good faith.  Dats bidness.  Big boy pants and all.

    Based on the timeline, you and I came to very different conclusions.  The app has been on the store since 2014.  According to a related article on 9to5, Apple supposedly defended his trademark on the App Store by removing other apps that infringed on his trademark.  Anecdotal? Yes. But more evidence against Apple in the court of public opinion.  Then earlier this summer, Apple allegedly tried to buy the TM through front companies, even resorting to threats of cancellation... allegedlyCoinkidinkally TM, right before WWDC they do, they as in Apple - not The Emoji Law Group LLC - in fact, attempt to cancel the guys trademark.

    To be fair, you and I might be working from totally different timelines.  But I am really curious how you got to 1. Apple acting in good faith.   2.  Tried to negotiate.  3. The other side tried to go for a money grab based on your timeline.


    muthuk_vanalingam
  • Reply 20 of 24
    mnbob1 said:
    The app hasn’t been updated for 3 years. That doesn’t show much interest in by the developer in keeping it up to date. The update version history at that time shows “patent pending” to the app title. 
    Trademarks are not patents.
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