Apple accused of unsavory business practices in 'Memoji' trademark lawsuit

Posted:
in General Discussion edited September 2018
A lawsuit filed on Thursday alleges Apple snaked the Memoji trademark from an Android app of the same name through a series of questionable behind-the-scenes moves, one of which allegedly involved the creation of a single-purpose LLC.

Memoji


A complaint filed with the U.S. District Court for the Northern District of California claims Apple's Memoji mark, used to describe a marquee iPhone X and XS feature, infringes on a similar trademark -- "MEMOJI" -- currently in use by Android app maker Social Tech.

According to the suit, Social Tech filed an intent-to-use application for the MEMOJI mark in April 2016, but before registration was obtained, Apple made a play for its version of the name.

The app maker alleges Apple formed a subsidiary called Memofun Apps LLC to obtain a "forgotten and abandoned" app using the name "Memoji." Along with goodwill, Apple sought prior rights to a then-suspended "Memoji" trademark application from owners Big 3 ENT and Lucky Bunny. A deal was apparently reached, as Memofun assigned rights to Memoji to Apple on June 4, 2018, the same day Memoji for iOS was introduced at the Worldwide Developers Conference.

Further, Social Tech said an unknown person inquired about buying the rights to MEMOJI in May, just two weeks prior to Apple's Memoji debut. The person, who declined to identify the company he worked for, was told the MEMOJI name was not for sale. Social Tech believes the unknown man was a representative of Apple.

On June 30, Social Tech filed a Statement of Use with the U.S. Patent and Trademark Office. The agency subsequently registered the mark on Sept. 18, with a "first use" and use "in commerce" dated June 28, the day the app was made available on the Google Play store.

In its complaint, Social Tech says Apple's Memoji launch "completely swamped" efforts to associate the mark with the app maker's brand. Beyond name recognition, the debut of Memoji for iOS in June forced Social Tech's hand, the company says, prompting the developer to release a "basic but functional" version of MEMOJI that was not fully baked. A more complete iteration would have hit market if Social Tech was able to stick to its planned release schedule, the filing claims.

"Apple's infringing product has, since the day of its announcement, caused Social Tech to lose control of its brand: a Google search and YouTube search for MEMOJI is dominated by Apple's Infringing Memoji," the complaint reads.

Counsel for Social Tech in early June informed Apple that the MEMOJI app would soon launch on Google Play, and that registration for MEMOJI would be sought from the USPTO. In response, Apple said it would be able to cancel the registration because its "common law rights" predate those of Social Tech's April 2016 application. Social Tech refutes these claims.

Exacerbating the situation is the relative similarity between the two products marketed under "Memoji" and "MEMOJI," Social Tech argues. For example, both apply to messaging features offered to mobile platform users.

Beyond their messaging functions, however, the two products are grossly divergent.

Widely publicized as a highlight iOS 12 feature, Apple's Memoji creates three-dimensional avatars which users can animate using facial expressions captured by iPhone's TrueDepth camera system. Social Tech's version, on the other hand, allows users to edit videos and photographs and send the results as messages.

Social Tech seeks preliminary and permanent injunctions restricting Apple from using the Memoji trademark, damages, profits attributable to Apple's unauthorized use of the name and confirmation of rights to the mark.

Ironically -- and perhaps typical of Google's wild and woolly storefront -- there are already multiple copycats on the Google Play store taking advantage of Apple's "Memoji" hype. Dozens of apps incorporate "Memoji" in search term metadata, while at least seven include the term directly in their name. Whether Social Tech is also seeking redress from publishers of those Android apps is unknown.

Comments

  • Reply 1 of 14
    Ridiculous claim and case.
    imergingeniousronnjbdragonllamawatto_cobra
  • Reply 2 of 14
    Just like madonna sing, again and again over and over
    watto_cobra
  • Reply 3 of 14
    I’m not a lawyer, but if I’m following this correctly...

    Apple purchases the rights to existing but abandoned trademarks using a subsidiary which Apple always does to avoid rumors and paying way too much for these things.

    So when Apple found out that there was another trademark that was filed, they attempted to buy it, but the company foolishly said no instead of entertaining the request. Apple didn’t have to buy it since they already had the trademark, but they tried.

    So a foolish company that used a term that doesn’t provide marketing value could have sold it to Apple but instead got outclassed by a company steeped in copyright law and is now grasping for scraps.
    imergingeniousronnpbruttoberndogjbdragonStrangeDayspslicellamaflashfan207gilly017
  • Reply 4 of 14
    jkichline said:
    I’m not a lawyer, but if I’m following this correctly...

    Apple purchases the rights to existing but abandoned trademarks using a subsidiary which Apple always does to avoid rumors and paying way too much for these things.

    So when Apple found out that there was another trademark that was filed, they attempted to buy it, but the company foolishly said no instead of entertaining the request. Apple didn’t have to buy it since they already had the trademark, but they tried.

    So a foolish company that used a term that doesn’t provide marketing value could have sold it to Apple but instead got outclassed by a company steeped in copyright law and is now grasping for scraps.

    my understanding of what the article is saying is a tad different. my read is that this android developer found out that the trademark was about to expire and was going to make a play for it. probably figured they could get it cheap because it hadn't been used for a while and was all but abandoned. there might even be a mechanism in the trademark processes to apply for an existing but about to expire trademark before the expiration. if the current owner doesn't re-up then the new application is processed before anyone should have found out it's available. but before it was fully expired, Apple via this shell company, bought the rights from the legit owners. and probably legitimized the purchase by filling some kind of use documentation. so now Mr Android App is screwed. 

    as for using subsidiaries and shells, Apple does that as much to keep their plans a secret as to avoid being taken for a ride on value so I'm not shocked about that move. in fact I think Apple may have been screwed over by Cisco over the iPhone trademark in part because they didn't use a fake name. course that one didn't work out so well for Cisco since the Trademark Office etc agreed that they jumped in at the last minute with a claim they were about to use the trademark again just to keep it away from Apple. In the end they were allowed use the mark for the office phone or whatever it was they claimed they were about to create and Apple got cell phone use of the name (sort of like Apple getting Apple for computers etc but they couldn't start a record company cause Apple Records)
    ronnmuthuk_vanalingamwatto_cobra
  • Reply 5 of 14
    entropysentropys Posts: 1,617member
    Not sure how you can say MrAndroid App was screwed. He couldn’t take advantage of an emerging opportunity, sure, but that was because there wasn’t an emerging opportunity. Apple had already closed the door.
    edited September 2018 ronnllamaNotsofastSpamSandwich
  • Reply 6 of 14
    chasmchasm Posts: 1,263member
    Surely no other company — especially not Google — has ever done this. Riiiiight.
    maciekskontaktSpamSandwichlkruppwatto_cobra
  • Reply 7 of 14
    Is it me or is it similar to Cisco iPhone vs Apple iPhone?
    watto_cobra
  • Reply 8 of 14
    saareksaarek Posts: 1,105member
    So, to try and get in before Apple they released a half baked app and are now upset that everyone has essentially ignored it and think of Apple when the term Memoji is used?
    watto_cobra
  • Reply 9 of 14
    chasm said:
    Surely no other company — especially not Google — has ever done this. Riiiiight.
    You're implying Apple did something wrong or unethical, "but everyone does it."   In fact, they did nothing wrong.  They simply bought a trademark from an existing owner which is routine and why large companies employ intellectual property attorneys to research names they are contemplating using.  The company suing Apple either didn't want to spend the money to have the research done, or simply gambled that no one else would be interested in using that name before they got their application filed.
    edited September 2018 watto_cobra
  • Reply 10 of 14
    lkrupplkrupp Posts: 6,782member
    chasm said:
    Surely no other company — especially not Google — has ever done this. Riiiiight.
    You’re implying Apple is guilty. That has not been determined yet by any means. Like all of this crap it has to make its way through the system and it’s all about money every time. Apple may or may not be guilty but they might find that settling out of court is cheaper than fighting it. We do know from Apple’s history that they tend to fight this stuff to the bitter end.
    watto_cobraAndersen
  • Reply 11 of 14
    crowleycrowley Posts: 5,771member
    Little bit of a grimy maneuvre, but I can't see how Apple did anything illegal here.  Social Tech gambled on being able to assume a lapsed trademark, but Apple swooped in, and they lost the gamble.  What's the legal argument here?
  • Reply 12 of 14
    AndersenAndersen Posts: 1unconfirmed, member
    Yep, Apple will win, over the person who did not entertain the apple offer. One of the stipulations is not only to pay for the trademark, -- here is from a trademark website quote "but So long as all required fees are paid to the Trademark Office and the mark is continuously used in commerce, a Federal trademark registration will remain in force"... The android app developer did not have anything used in commerce. Until after the fact they tried to push a half baked app. So it actually fails on the second half of the trademark agreement. It was NOT used continuously (if at all) in commerce.
  • Reply 13 of 14
    What if there was an App that has been using the name "MEmoji-emoji yourself " that has been in use since 2013, and is still on the App store. Apple decided to use it and the concept without prior approval from the developer?  Can anyone fathom that? 
  • Reply 14 of 14
    The truest Fact of the matter is that Apple did not come up with the name or the concept. They have and are still using there enormous technological boot to which makes the biggest print and stamps out the prints that have come ahead of them. Intellectual property should be protected exactly with full disclosure from the person who wishes to use or purchase the idea or terminology.
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