How can you tell if a client is talking too much about a lawsuit? Their lips are moving. For one tech company’s CEO, not learning this lesson proved legally fatal. To be fair, he was following in the footsteps of so many others who have inadvertently shot themselves in the foot by disseminating an emotional outburst in writing.
Social Technologies LLC v. Apple Inc. is an appeal to the Ninth Circuit over the use of the trademark MEMOJI. One can see how the mark is memorable, and so it’s not surprising that three different companies had their eyes on it: Apple, Lucky Bunny, and Social Technologies (“Social Tech”).
Lucky Bunny had advanced the furthest of the three in securing the MEMOJI trademark, but ultimately abandoned its effort by default when it failed to file a statement of use. Apple approached Social Tech about acquiring MEMOJI, which rejected the offer. Next, Apple approached Lucky Bunny, which agreed. Apple then assumed the abandoned trademark application for the mark and announced that it was going to release its MEMOJI application, which triggered Social Tech to bring this trademark infringement case and request for cancellation.
Social Tech’s claim on the mark rested on a two-year track record that consisted of nothing but non-commerce websites and promotions of MEMOJI — in fact, Social Tech hadn’t produced a single line of code until after Apple released its version of MEMOJI. That might not have been fatal by itself, except the company’s president sabotaged the company’s efforts to indicate a bona fide intent to use the trademark in commerce by writing a series of ill-advised emails.
The Ninth Circuit took great interest in the emails, starting on page 18 of the decision. Some highlights include:
- “The lawsuit is coming together nicely. . . . [W]e are just waiting for the trademark registration to file the lawsuit and get PAID,”
- “[w]e 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!”
- “Almost there! How are we looking on everything? What else do you need from me . . . . Of course, it seems best to split these [changes] up in to individual updates, so it appears like we are doing more work. We just need to show some progress.”
- “The lawsuit is coming together nicely. We should be done with the paperwork and forms in the next several days, then we are just waiting for the trademark registration to file the lawsuit and get PAID.”
- “[i]n other news . . . the initial letter has been sent to Apple. The process has begun. Peace and wealth!”
Once again, writing emails out of sheer exuberance claims another victim. The court looked at the emails and found that there was no question of fact that would prevent the dismissal of Social Tech’s lawsuit. The emails demonstrated that there was never a bona fide intent to use the trademark, but to only appear to use the trademark for the purpose of winning a lawsuit against Apple.
I can imagine a scenario in which Social Tech’s trademark attorney rang an alarm bell and advised them to just start developing the app so they could show that they’re using it, responding to consumers, and intending to make it work in commerce. But all those good ideas were marred by the inability of the president to keep his excitement to himself and keep it out of writing.
The moral to this story transcends legal practitioners and their clients, it’s a good lesson for everyone: Don’t say it in writing. If you have ulterior motives, try to keep them to yourself.
