Animoji, perhaps the most gimmicky iPhone X feature, has earned Apple a lawsuit over infringing on an existing “Animoji” trademark held by a Japanese software development firm.
Emonster, based out of Tokyo, lodged a complaint with the United States District Court for the Northern District of California alleging that it, along with developer Enrique Bonansea, a U.S. citizen living in Japan, registered for a trademark covering “Animoji” back in 2014.
“This is a textbook case of willful, deliberate trademark infringement,” reads the complaint. “With full awareness of plaintiffs’ ‘Animoji’ mark, Apple decided to take the name and pretend to the world that ‘Animoji’ was original to Apple.”
According to The Recorder, the United States Patent and Trademark Office subsequently granted rights to the mark in 2015.
As it turns out, Emonster would go on to use the Animoji name for its messaging app, released on App Store in July 2014. The app, named “Animoji – Free Animated Texting [Patent Pending]” remains available on the store for $0.99.
The complaint claims Apple was aware of the trademark well ahead of the iPhone X press conference and even ostensibly attempted to purchase rights for the mark from Emonster this past summer via its alleged shell firm The Emoji Law Group LLC.
The complaint continues:
Indeed, Apple offered to buy plaintiffs’ mark but was rebuffed. 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.
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.
Bonansea claims that representatives for The Emoji Law Group LLC threatened him with a cancellation proceeding if he did not sell the mark. Apple’s offer to buy the mark was declined.
Interestingly enough, on September 11—right ahead of the iPhone X press conference—Apple filed a petition with the USPTO to cancel the mark arguing that Emonster did not exist at the time the trademark was originally filed for.
Following the iPhone X unveiling, Bonansea rushed to submit a new version of his app to avoid “Animoji” being further associated in the public’s minds with Apple. This, the developer claims, has caused him “irreparable injury” as he had to submit an unfinished product.
The developer is seeking preliminary and permanent injunctions to prevent Apple from using the Animoji name along with damages and attorney fees.