Alleged ‘Memoji’ Trademark Holder Is Trolling Apple for a Massive Payout

When Apple introduced Memoji back in iOS 12, it quickly found itself slapped with a lawsuit from a small Android app developer that claimed that they had the rights to the name, and going so far as to accuse Apple of unsavoury business practices in trying to acquire rights to the trademark.

After winding its way through the legal system for the past couple of years, it now appears that the courts have come down on the side of Apple, ruling that the developer, Social Tech, basically resurrected its dormant trademark in an attempt to extort a big payout from Apple.

In the original lawsuit, Social Tech more or less admitted that its own “Memoji” app had been “forgotten and abandoned,” but accused Apple of trying to surreptitiously obtain the rights through a subsidiary shell company. Social Tech also claimed that “an unknown person” who approached its executives in the weeks leading up to WWDC 2018 was actually an Apple representative in disguise.

At the time, Social Tech insisted that the name was not for sale, since it was allegedly working on re-releasing its own MEMOJI app on iOS. In its court filings, however, it claims that Apple’s decision to use the Memoji name for its own iOS 12 feature “completely swamped” its own efforts, forcing the small company to release a sub-standard version of its app instead.

‘Get your Lamborghini picked out!’

Unfortunately for Social Tech, it looks like its lawyers have failed to convince the courts of the righteousness of its cause. Instead, according to Reuters, the appellate court determined that the company acted completely in bad faith, creating an app for the express purpose of the lawsuit, clearly hoping for a lucrative settlement.

Specifically, although Social Tech applied for the Memoji trademark back in 2016, it had failed to actually do anything with it until after it became apparent that Apple was planning to use it. In the latest ruling, U.S. Senior Judge Jane Restani wrote that “Social Tech lacked protectable rights in its Memoji mark because it never made legitimate use of it in commerce.

This latest decision comes as a result of an appeal of the original case, which also ruled in favour of Apple back in 2019.

The undisputed evidence in the record points in only one direction: Social Tech developed and posted its app with a singular focus on securing registration to sue Apple, without any good-faith regard to the commercial viability of its product.

U.S. District Judge Vince Chhabria, in the 2019 ruling.

In fact, in the original ruling, U.S. District Judge Vince Chhabria also cited an internal email from Social Tech CEO Samuel Bonet, where he told colleagues to “Get your Lamborghini picked out!” in reference to “a nice lawsuit against Apple, Inc!”

For example, Bonet wrote before the launch: ‘We are lining up all of our information, in preparation for a nice lawsuit against Apple, Inc! We are looking REALLY good. Get your Lamborghini picked out!'”

U.S. District Judge Vince Chhabria, in the 2019 ruling.

In the ruling, Chhabria cited the “undisputed timeline by which Social Tech developed its app,” pointing to the fact that on June 4, 2018, when Apple announced “Memoji” for iOS 12, Social Tech had “written no code for its own MEMOJI app” — even though it had filed for the trademark two years earlier.

The first version of the Social Tech MEMOJI app didn’t appear on the Google Play Store until June 28 — three weeks after Apple’s announcement.

Social Tech also appeared to be “singularly concerned with laying the groundwork for a lawsuit,” to the point of splitting up updates and fixing bugs in the app piecemeal so that it would look like the company was doing more work. One week after launching the app, Bonet told his colleagues that “It’s better if we split up the updates, so it looks like we have more of them for the lawsuit.”

As this correspondence undisputedly illustrates, Social Tech was singularly concerned with laying the groundwork for a lawsuit—including manipulating the timing of updates with an eye to litigation—in contrast to releasing a commercially viable product.

U.S. District Judge Vince Chhabria, in the 2019 ruling.

In the original 2019 ruling, Chhabria also added that the app in question was a “defective product” — and that Social Tech was fully aware of this.

Most prominently, Social Tech released a defective product. Bonet knew at the time of the launch that the app crashed and did not properly edit images. Social Tech’s half-baked app is thus more akin to a “prototype” which is “insufficient to establish trademark rights.”

U.S. District Judge Vince Chhabria, in the 2019 ruling.

Going for Broke

In ruling on the appeal, the three-judge panel of the 9th U.S. Circuit Court of Appeals affirmed the earlier decision, maintaining that Social Tech did not make a “bona fide use” of the trademark. The court further ordered the U.S. Patent and Trademark Office to cancel Social Tech’s “Memoji” trademark registration.

We do not suggest that rushing to develop a product or releasing a product of low quality are themselves sufficient to preclude a finding of bona fide use in commerce. But here, Social Tech fails to provide any evidence that its use of ‘Memoji’ was bona fide.

U.S. Senior Judge Jane Restani, 9th U.S. Circuit Court of Appeals

Social Tech’s lawyers attempted to argue that 5,000 downloads of its application should have been sufficient to establish it as a legitimate app, however Restani disagreed, stating that it had provided no evidence to suggest that the company’s Memoji application was developed “for genuine commercial reasons.”

For its part, however, it doesn’t appear that Social Tech is ready to lay down its arms. The company’s attorney, John Pierce of Pierce Bainbridge, told Reuters that he plans to “immediately begin preparing an appeal to the U.S. Supreme Court.”