SAN FRANCISCO — Susman Godfrey on Wednesday filed suit against Apple Inc. on behalf of a Japanese company that says the tech giant ripped off the trademark for “Animoji” when it announced a feature for the moving graphics at last month’s iPhone X launch.
Emonster k.k., owned by a U.S. citizen living in Japan named Enrique Bonansea, alleges that Bonansea came up with the term “ANIMOJI” in 2014 and registered it at the U.S. Patent and Trademark Office the following year. He’s been using the name to market an app for moving emojis in Apple’s own app store since 2014, according to the complaint.
“This is a textbook case of willful, deliberate trademark infringement. With full awareness of plaintiffs’ ANIMOJI mark, Apple decided to take the name and pretend to the world that ‘Animoji’ was original to Apple,” says the complaint, which was filed in the U.S. District Court for the Northern District of California by Susman Godfrey partner Oleg Elkhunovich.
The complaint also alleges that Apple used intermediary companies as “fronts” in attempts to purchase the rights to the ANIMOJI mark this past summer, but that Bonansea did not sell or license it. Then, on Sept. 11—the day before Apple publicly announced its own “Animoji” feature at the unveiling of the new iPhone X—the company filed a petition with the USPTO to cancel the mark, according to the complaint.
Apple did not immediately respond to a request for comment on the lawsuit Thursday.
This is not the first time that the Susman Godfrey firm has gone head-to-head with Apple in an intellectual property case. In fall of 2016, lawyers for the firm clinched a critical victory at a California state appellate court in favor of the inventor of Apple headphone line Beats.
Bonansea’s suit appears complicated by the fact that his original trademark registration filing was made by “emonster Inc.”—a corporation in Washington State that did not exist at the time; Apple pointed to that fact in seeking to cancel the mark, according to the complaint. (Bonansea lived in Seattle prior to moving to Japan in 2003, the complaint notes.)
But Susman Godfrey argues that the dissolved Washington corporation and the existing Japanese corporation “had been acting as a single commercial enterprise” when the registration was filed. In any event, “to avoid any doubt,” emonster k.k. filed a new registration for ANIMOJI on Sept. 12, dating the term’s first “use in commerce” back to July 2014, the complaint says.
Apple’s “Animoji” feature, according to the company’s Sept. 12 press release, uses the iPhone X’s new camera features to analyze over 50 different facial muscle movements, “then animates those expressions in a dozen different Animoji, including a panda, unicorn and robot.”
According to the complaint, Bonansea’s app similarly allows users “to animate characters inside messages.” The complaint adds that he had planned to release an update at the end of 2017, but cut the process short to rush out a new version shortly after Apple’s announcement.