Apple sued over 'Animoji' trademark, allegedly tried to buy IP rights prior to iPhone X de...
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.
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.
Animoji Complaint by Mikey Campbell on Scribd
Comments
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?
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'.
In other news the plaintiff's app also utilises Apple's intellectual property, making this case seem more opportunistic than genuine.
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.
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.
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.
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... allegedly. Coinkidinkally 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.