Apple on Thursday was slapped with a new lawsuit accusing it of stealing the Memoji name from an Android app bearing the same moniker.
Memoji is the marketing name of Apple’s new 3D imaging feature for iOS 12, which allows users to create custom cartoon avatars and use them to record fun and interactive videos through the iMessage app.
The Chief Complaint
According to the complaint (via Scribd), which was filed with the U.S. District Court for the Northern District of California, Apple’s use of the Memoji name as applied to describe a “marquee iPhone X and XS feature,” infringes a similar trademark — “MEMOJI” — which is currently in use by Android app developer, Social Tech.
Social Tech alleges that Apple piggy-backed on its name by employing a series of questionable, behind-the-scenes moves, including the creation of a single-purpose LLC.
Specifically, the firm asserts in court filings that Apple formed a subsidiary (Memofun Apps LLC) in order to obtain a “forgotten and abandoned” app using the name “Memoji.” The company sought the rights to the suspended “Memoji” trademark which was owned by developers Big 3 ENT and Lucky Bunny.
While it’s unclear if a deal was formally reached, that would appear to be the case as Memofun Apps LLC officially reserved the Memoji name for Apple on June 4, 2018 — the same day the feature was briefly showcased alongside iOS 12 at the company’s annual Worldwide Developers Conference (WWDC) 2018.
Social Tech further believes Apple may have confronted its executives in-person under disguise, saying in court documents that “an unknown person” approached the firm inquiring about the likelihood of purchasing the rights to MEMOJI back in May, 2018 — at least two weeks before Apple’s WWDC keynote. The unknown person, who Social Tech says declined to identify who they worked for, was informed the name was not for sale.
In its complaint, Social Tech states that Apple’s Memoji launch in June “completely swamped” its efforts to associate the name with its own brand, and that the untimely debut of Memoji for iOS in June forced the firm to release a “basic but functional” version of its MEMOJI app that wasn’t ready for market.
In court filings, the firm maintains that a more complete app experience would have been released if only Social Tech were able to adhere to its original release schedule, instead of having to fend off the threat from Apple.
“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.
Back in June, Social Tech’s chief legal counsel informed Apple that its MEMOJI app would be launching soon on the Google Play App Store, while warning the iPhone-maker that registration for the MEMOJI name would be sought from the USPTO pursuant with its previous application.
Apple, in response, allegedly shot back, claiming it wouldn’t 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, however.
According to court documents, the firm is seeking a permanent injunction restricting Apple from using the Memoji trademark, along with punitive damages, court, legal fees, and profits attributable to the iPhone-maker’s unauthorized use of the name.
Social Tech also wants confirmation of rights to the MEMOJI name, but we’ll just have to see about that much, especially since the scales tend to tip in Apple’s favor in these kind of cases.