Social Technologies v. Apple Appeal

Case: 20-15241, 08/24/2020, ID: 11800702, DktEntry: 12, Page 1 of 85
No. 20-15241
__________________________________________________________________
IN THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT
SOCIAL TECHNOLOGIES, LLC,
Plaintiff-Appellant,
v.
APPLE, INC.,
Defendant-Appellee.
On Appeal from the United States District Court

for the Northern District of California
No. 3:18-cv-05945-VC
Hon. Vince Chhabria
APPELLANT’S OPENING BRIEF
John M. Pierce
PIERCE BAINBRIDGE P.C.
355 S. Grand Avenue, 44th Floor
(213) 262-9333
jpierce@piercebainbridge.com
Attorneys for Appellant

Social Technologies LLC
CORPORATE DISCLOSURE STATEMENT
Pursuant to Rule 26.1 of the Federal Rules of Appellate Procedure, Plaintiff-
Appellant Social Technologies LLC, by and through its undersigned counsel, hereby
certifies that it has no parent corporation and that no publicly held corporation owns
10% or more of its stock.
PIERCE BAINBRIDGE, PC
/s/ John M. Pierce

John M. Pierce

Date: August 24, 2020
i
TABLE OF CONTENTS
INTRODUCTION ................................................................................................ 1
JURISDICTIONAL STATEMENT ...................................................................... 2
STATUTORY AUTHORITIES ........................................................................... 2
ISSUE PRESENTED ............................................................................................ 3
STATEMENT OF THE CASE ............................................................................. 3
A. Background....................................................................................... 3
B. District Court Proceedings ................................................................ 4
SUMMARY OF THE ARGUMENT .................................................................... 5
ARGUMENT ....................................................................................................... 6
THE DISTRICT COURT ERRED BY GRANTING SUMMARY

JUDGMENT For DEFENDANT AS A MATTER OF LAW ON AN
IMPROPER HOLDING THAT NO REASONABLE JURY COULD
FIND SOCIAL TECH’s USE OF THE MEMOJI MARK SATISFIED
THE REQUIREMENT FOR USE IN COMMERCE .................................. 6
A. Standard Of Review .......................................................................... 6
B. A Reasonable Jury Could Find That Social Tech Used the

MEMOJI Mark “In Commerce”........................................................ 7
1. Social Tech’s MEMOJI Mark Use During Pre-sale

Activities and Upon Distribution of its App Constituted
“Use In Commerce” As Defined By The Lanham Act ............ 9
2. Considering Social Tech’s Pre-Sale And Sale Actions,

The Lower Court Erred In Asserting That No Reasonable
Jury Could Find Anything Other Than That Social
Tech’s Use Of Its MEMOJI Mark Was For The Sole
Purpose Of Suing Apple. ...................................................... 10
ii
3. The Lower Court Improperly Made A Fact-Intensive

Determination That The Existence Of Malfunctions In
Social Tech’s App Could Mean Nothing Other Than That
Social Tech’s Motive For Releasing Its App Was Solely
To Reserve Its Mark. ............................................................ 12
CONCLUSION .................................................................................................. 15
iii
TABLE OF AUTHORITIES
Page(s)
Cases
Anderson v. Liberty Lobby, Inc.,

447 U.S. 242 (1986)....................................................................................... 6, 7
Aycock Eng’g, Inc. v. Airflite, Inc.,

560 F.3d 1350 (Fed. Cir. 2009) .......................................................................... 8
Brookfield Commc'ns Inc. v. W. Coast Entm’t Corp.,

174 F.3d 1036 (9th Cir. 2009) ........................................................................ 7, 8
Chance v. Pac-Tel Teletrac Inc.,

242 F.3d 1151 (9th Cir. 2001) ...................................................................... 8, 13
Drop Dead Co. v. S.C. Johnson & Son, Inc.,

326 F.2d 87 (9th Cir. 1963).............................................................................. 13
Hangingout, Inc. v. Google, Inc.,

54 F. Supp. 3d 1109 (2014).............................................................................. 10
Hydro–Dynamics, Inc. v. George Putnam & Co.,

811 F.2d 1470 (Fed. Cir. 1987) .......................................................................... 9
Jones v. Royal Admin. Servs., Inc.,

887 F.3d 443 (9th Cir. 2018).............................................................................. 6
Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,

475 U.S. 574 (1986)........................................................................................... 6
New West Corp. v. NYM Co. of Calif., Inc.,

595 F.2d 1194 (9th Cir. 1979) ............................................................................ 8
Rearden LLC v. Rearden Commerce, Inc.,

683 F.3d 1190 (9th Cir. 2012) ........................................................................ 7, 8
Vantone Grp. Ltd. Liab. Co . v. Yangpu NGT Indus. Co.,

No. 13CV7639-LTS-FM, 2016 WL 4098564 (S.D.N.Y. July 28,
2016) ............................................................................................................... 14
iv
Versatop Support Sys., LLC, v. Georgia Expo, Inc.,

921 F.3d 1364. (Fed. Cir. 2019) ....................................................................... 12
Statutes
15 U.S.C. § 1116..................................................................................................... 2
15 U.S.C. § 1125..................................................................................................... 2
15 U.S.C. § 1127 (2015) ..................................................................................... 3, 7
28 U.S.C. § 1291..................................................................................................... 2
28 U.S.C. § 1331..................................................................................................... 2
28 U.S.C. § 1338..................................................................................................... 2
28 U.S.C. § 1367..................................................................................................... 2
Federal Rules
Fed. R. Civ. P. 56.................................................................................................... 5

Other Authorities
Federal Registration, Intell. Prop. L. Bus. Law. § 9:21 (2018-2019

ed.)..................................................................................................................... 7
v
INTRODUCTION
This case is about a tech industry behemoth using its endless resources to rob
a small, enterprising firm from using the protections of this country’s trademark laws
to shield itself and its product from predatory practices.
In April, 2016, Social Technologies, LLC (“Social Tech”), a Georgia-based
technology firm, filed an intent-to-use application with the United States Patent and
Trademark Office (“PTO”) for a stylized mark which includes as its dominant
element the word “MEMOJI”. Social Tech uses the mark in commerce in connection
with a messaging mobile application and has received a registered trademark
(hereinafter “MEMOJI”). Social Tech’s MEMOJI app allows users to send edited
pictures and videos in messages to others. MEMOJI was registered to Social Tech
by the PTO on September 18, 2018 (Reg. No. 5,566,242).
After an unsuccessful attempt to purchase the MEMOJI mark from Social
Tech, Apple, Inc. (“Apple”) chose instead to infringe on the MEMOJI mark by
developing and marketing its own Memoji app. The question before this court turns
on whether Social Tech’s use of the MEMOJI mark satisfied the standard of “use in
commerce” as set out in the Lanham Act, and established by Ninth Circuit precedent.
Social Tech maintains that a reasonable jury could find that it did satisfy this
requirement, and therefore that lower court erred in granting summary judgment for
1
Apple finding Social Tech’s claims fail as a matter of law because no reasonable
jury could find that Social Tech had a bona fide use of the mark.
JURISDICTIONAL STATEMENT
The District Court had jurisdiction over Social Tech’s claims pursuant to 28
U.S.C. §§ 1331 and 1338, 15 U.S.C. §§ 1116 and 1125, and 28 U.S.C. § 1367.
Jurisdiction over Social Tech’s appeal from the District Court’s entry of final
judgment on December 17, 2019, rests on 28 U.S.C. § 1291.
STATUTORY AUTHORITIES
“The term "use in commerce" means the bona fide use of a mark in the
ordinary course of trade, and not made merely to reserve a right in a mark. For
purposes of this chapter, a mark shall be deemed to be in use in commerce—
(1) on goods when—
(A) it is placed in any manner on the goods or their containers or the
displays associated therewith or on the tags or labels affixed
thereto, or if the nature of the goods makes such placement
impracticable, then on documents associated with the goods or
their sale, and
(B) the goods are sold or transported in commerce, and
2
(2) on services when it is used or displayed in the sale or advertising of
services and the services are rendered in commerce, or the services are rendered in
more than one State or in the United States and a foreign country and the person
rendering the services is engaged in commerce in connection with the services.”
15 U.S.C. § 1127 (2015).
ISSUE PRESENTED
Did the trial court err in finding that no reasonable jury could find that Social
Tech had a bona fide use of its trademark—a fact-intensive inquiry—and granting
Defendant’s summary judgment when there is evidence that (1) Social Tech used
the trademark in pre-sale activities and promotions, (2) Social Tech sold over 5,500
units bearing the trademark, (3) Social Tech refused an unsolicited offer to sell the
trademark, and (4) Social Tech implemented plans to build its app and business.
STATEMENT OF THE CASE

A. Background
Appellant Social Tech is a limited liability company organized and existing
under the laws of the State of Georgia and has a principal place of business in
Atlanta, Georgia. Social Tech owns the only federally registered MEMOJI
trademark and is the sole creator of an Android app called Memoji. Social Tech’s
MEMOJI app allows users to edit videos and photographs and send as messages.
Social Tech filed an intent-to-use application for the MEMOJI mark in April 2016,
but before registration was obtained, Apple hired a third-party agent to contact
3
Social Tech regarding their perceived rights in the Memoji mark. On May 21, 2018,
the Apple agent left a voicemail for Samuel Bonet, one of Social Tech’s co-founders.
When Mr. Bonet returned the call, the agent did not identify himself or the company
he represented. The Apple agent asked Mr. Bonet if Social Tech would be willing to
sell its rights to the MEMOJI mark, and Mr. Bonet responded that Social Tech was
not interested in selling them.
While registration was pending with the PTO, Social Tech used the MEMOJI
mark in commerce on marketing materials and, on June 28, 2018, releasing an app
in the Google Play store.
Nevertheless, Apple promoted, and on September 17, 2018, released to the
public, a feature for its new operating system called and marketed as “Memoji.” The
following day, September 18, 2018, the PTO registered MEMOJI to Social Tech
(Reg. No. 5,566,242).
Apple, using its dominant market power, caused Social Tech to lose control
of its brand. Social Tech sought preliminary and permanent injunctions restricting
Apple from using the Memoji trademark, damages, profits attributable to Apple's
unauthorized use of the name and confirmation of rights to the mark.
B. District Court Proceedings

On September 27, 2018, Social Tech filed this intellectual property action in
federal district court in Santa Clara County, California alleging that Apple violated
Social Tech’s trademark rights under The Lanham Act and common-law, and
4
bringing claims under California’s Unfair Competition Law that are not at issue
under this appeal. With practically no discovery and treating industry gossip as a
smoking gun, Apple filed a motion for summary judgement seeking to evade
punishment for infringement of the Social Tech “MEMOJI” trademark.
The district court granted summary judgement on December 17, 2019 based
on its conclusion that no reasonable jury could find that Social Tech used the
MEMOJI mark “in commerce” as the Ninth Circuit has applied that term in the
context of trademark infringement claims arising out of The Lanham Act. Social
Tech appeals from that ruling.
SUMMARY OF THE ARGUMENT
In granting Defendant’s motion for summary judgment, the district court erred
in ruling that as a matter of law no reasonable jury could find that Social Tech used
the MEMOJI mark “in commerce” as the Ninth Circuit has applied that term.
Under F.R.C.P. 56, in order to succeed in a motion for summary judgment, a
movant must show (1) that there is no genuine dispute as to any material fact, and
(2) that the movant is entitled to judgment as a matter of law. Here, Defendant has
made neither showing. The central issue is whether a reasonable jury could find that
Social Tech used the MEMOJI mark “in commerce” as the Ninth Circuit has applied
that term. Plaintiff contends that a de novo review by this Court will reveal that such
a determination could be made by a reasonable jury and therefore that a question of
5
material fact remains in dispute. As such, Defendant is not entitled to a judgment as
a matter of law.
For this reason, this Court should reverse the district court’s dismissal of
Plaintiffs’ amended complaint.
ARGUMENT
THE DISTRICT COURT ERRED BY GRANTING SUMMARY
JUDGMENT FOR DEFENDANT AS A MATTER OF LAW ON
AN IMPROPER HOLDING THAT NO REASONABLE JURY
COULD FIND SOCIAL TECH’S USE OF THE MEMOJI MARK
SATISFIED THE REQUIREMENT FOR USE IN COMMERCE
A. Standard Of Review
An order granting summary judgment is reviewed de novo. Jones v. Royal
Admin. Servs., Inc., 887 F.3d 443, 447 (9th Cir. 2018). All facts and inferences must
be viewed in the light most favorable to the non-moving party. Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). The movant is not
entitled to summary judgment unless it proves that it would be impossible for any
reasonable juror to find in favor of the non-moving party. Id. Further, the movant
cannot prevail where “the evidence is such that a reasonable jury could return a
verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 447 U.S. 242,
248 (1986). To defeat a summary judgment motion, the non-moving party need only
show the existence of a genuine issue of material fact. Elec. Indus. Co., 475 U.S. at
587. The non-moving party need not show conclusively that the issue would be
resolved in their favor but need merely provide a sufficient showing that triable
6
issues requiring jury resolution exist. Anderson, 447 U.S at 248. Because of the
intensely factual nature of trademark disputes, summary judgment is generally
disfavored in the trademark arena. Rearden LLC v. Rearden Commerce, Inc., 683
F.3d 1190, 1205 (9th Cir. 2012).
B. A Reasonable Jury Could Find That Social Tech Used the MEMOJI
Mark “In Commerce”
The Lanham Act grants protection to marks that are “used to identify and to
distinguish goods or services in commerce.” Brookfield Commc'ns Inc. v. W. Coast
Entm’t Corp., 174 F.3d 1036, 1051 (9th Cir. 2009). Use in commerce under the
Lanham Act requires “the bona fide use of a mark in the ordinary course of trade,
and not [use] made merely to reserve a right in a mark.” 15 U.S.C. § 1127 (emphasis
added). The Lanham Act was amended to require “bona fide” use of a mark to avoid
the practice of “token use” which “refers to the practice of affixing a mark to a
limited number of products and selling those products to a prearranged buyer or
buyers across state lines for the purpose of establishing trademark rights in the mark.
The buyer [is] often a related entity to the seller.” Acquiring trademark rights—
Federal Registration, Intell. Prop. L. Bus. Law. § 9:21 (2018-2019 ed.).
For trademarks, the “use in commerce” requirement is met, and not solely a
token use, when a mark is “(1) placed on the good or container, or on documents
associated with the goods if the nature of the goods makes placement on the good or
container impracticable, and (2) that good is then sold or transported in commerce.”
7
Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009). This is
exactly the type of bona fide use SocialTech engaged in when it completed its
MEMOJI App and placed it on the Google Play store for public purchase.
In determining whether the “use in commerce” test has been satisfied, courts
have generally followed a “totality of the circumstances” approach–considering not
only actual sales but also non-sale activities by the party asserting trademark rights.
Rearden LLC, 683 F.3d at 1205. The essential inquiry turns on whether there has
been “use in a way sufficiently public to identify or distinguish the marked goods in
an appropriate segment of the public mind.” Id. (citing New West Corp. v. NYM Co.
of Calif., Inc., 595 F.2d 1194 (9th Cir. 1979)). In other words, “trademark rights can
vest even before any goods or services are actually sold if the totality of [one’s] prior
actions, taken together, [can] establish a right to use the trademark . . . [and the
trademark is] [u]se[d] in a way sufficiently public to identify or distinguish the
marked goods in an appropriate segment of the public mind as those of the adopter
of the mark.” Brookfield Commc'ns, Inc., 174 F.3d at 1052. Still, the use of a mark
in actual product sale is highly persuasive and the Federal Circuit has held that even
a single sale can constitute use in commerce under the Lanham Act if the sale has
the color of a bona fide transaction and is accompanied by activities that would tend
to indicate an intent to continue to use of the mark. Chance v. Pac-Tel Teletrac Inc.,
8
242 F.3d 1151, 1156 (9th Cir. 2001) citing Hydro–Dynamics, Inc. v. George Putnam
& Co., 811 F.2d 1470, 1472–74 (Fed. Cir. 1987).
1. Social Tech’s MEMOJI Mark Use During Pre-sale

Activities and Upon Distribution of its App Constituted
“Use In Commerce” As Defined By The Lanham Act
Social Tech’s use of the MEMOJI mark during its pre-sale activities and on
the distribution of its “MEMOJI” application on the Google Play Store constituted
“use in commerce” as defined by the Lanham Act since Social Tech used the mark
MEMOJI in a sufficiently public manner so as to distinguish its mark in the public
mind. First, it is undisputed that Social Tech’s app bearing the MEMOJI mark was
released to the public on June 28, 2018. (See Mot. at 18.) It did so by releasing its
MEMOJI smart-phone app on the Google Play Store—an online application store
accessed by millions of users each day. Shortly after the application was on the
Google Play Store, it garnered over 5,500 downloads. Therefore, several thousands
of smart-phone users had viewed Social Tech’s product bearing the MEMOJI mark
and had, consequently, identified Social Tech’s product by the mark. Hence, this
mass distribution is, in and of itself, sufficient to establish “use in commerce.”
Social Tech’s activities and actions prior to the release of the application
further demonstrate Social Tech’s bona fide intention to launch the application and
to continue to use the mark for the app. Subsequent to filing its Intent to Use
application, Social Tech developed a business plan for the MEMOJI application,
made presentations and sought potential investors, and developed another
9
application to raise funds for the MEMOJI app–all essential steps for any
entrepreneurial venture. Social Tech also created video advertisements and
developed a website advertising the forthcoming MEMOJI app. Finally, Social Tech
rejected a solicitation from Apple (at the time unidentified) to purchase the rights for
MEMOJI mark. These steps were all taken prior to the announcement of Apple’s
infringing MEMOJI application and, therefore, exhibit Social Tech’s bona fide
intent to develop the application independent of any potential lawsuit against Apple.
See Hangingout, Inc. v. Google, Inc., 54 F. Supp. 3d 1109, 1121 (2014) (finding that
plaintiff’s creation of promotional videos for its social media application along with
200 downloads of the application contributed to the plaintiff’s successful claim that
it had used the application’s mark “in commerce”).
2. Considering Social Tech’s Pre-Sale And Sale Actions, The

Lower Court Erred In Asserting That No Reasonable Jury
Could Find Anything Other Than That Social Tech’s Use
Of Its MEMOJI Mark Was For The Sole Purpose Of Suing
Apple.
Whether Social Tech accelerated its app launch in response to Apple’s clear
usurpation of Social Tech’s trademark rights does not demonstrate that Social Tech’s
sole purpose in releasing the app was to secure trademark rights. In fact, the evidence
shows that Social Tech intended to develop its app and took steps to develop its app
prior to Apple’s announcement of its Memoji software feature:
• Social Tech created a business plan for its MEMOJI app, along with
examples of the app Social Tech envisioned (see, e.g. Ex. C);
10
• Social Tech sought investors and made presentations to investors to
procure funds to develop its MEMOJI app (Dkt. 4-16 ¶ 8); Social
Tech created videos advertising its MEMOJI app (exs. D-E);
• Social Tech created a website that advertised its forthcoming
MEMOJI app;
• Social Tech developed another app in an effort to raise funds to
develop its MEMOJI app (ex. JJ at 32:11-16);
• Social Tech submitted an extension request for additional time to
submit a statement of use in March 2018, and that application was
nearly immediately approved (ex. B at APL-STECH_00000217-20,
225);
• Social Tech secured an influx of funds to be able to develop its
MEMOJI app (ex. JJ at 29:12-22);
• Social Tech refused to sell its rights in MEMOJI when the mysterious
agent called (ex. F at 136:10-138:21; Dkt. 32 ¶ 33); and
• Social Tech corresponded with and discussed next steps for
development of the MEMOJI app with its contracted developer app (ex.
JJ at 132:15-134:2).
11
3. The Lower Court Improperly Made A Fact-Intensive

Determination That The Existence Of Malfunctions In Social
Tech’s App Could Mean Nothing Other Than That Social
Tech’s Motive For Releasing Its App Was Solely To Reserve
Its Mark.
That a company may rush a product to the marketplace to prevent a goliath of
a company like Apple from swallowing its legally recognized trademark is a
completely understandable step for a company that has a genuine interest in
engaging in bona fide use of the mark in commerce; courts have time after time
recognized the particular threat posed by one company swallowing up another’s
company’s trademark rights. Versatop Support Sys., LLC, v. Georgia Expo, Inc., 921
F.3d 1364, 1365. (Fed. Cir. 2019)
Yet despite all the evidence in support of Social Tech’s bona fide use and
consequent priority in trademark rights, the lower court improperly made a factual
determination, that should have been reserved for a jury, and concluded that Social
Tech “rushed to the market” and developed its application for the sole purpose of
suing Apple. In doing so, the court focused almost exclusively on Social Tech’s
internal correspondence expressing enthusiasm at the prospect of a lawsuit against
the infringing behemoth, Apple, and overlooked virtually all contrary evidence.
From a trademark filing perspective, Social Tech was in no need to “rush to
the market” when Apple released the infringing MEMOJI feature in June of 2018,
because Social Tech was issued a Notice of Allowance by the PTO on January 30,
12
2018, and Social Tech subsequently filed for a six-month extension, thereby giving
Social Tech until January 30, 2019 to file a Statement of Use and still take advantage
of the priority filing date. In fact, Social Tech could have potentially filed for four
subsequent extensions, giving the company up until January 30, 2020, to file a
Statement of Use. Given these facts, a jury could reasonably find that Social Tech’s
sale was bona fide.
The lower court also focused heavily on the fact that Social Tech’s MEMOJI
application included several glitches when it was first launched; however, releasing
an app with glitches is not at all the same as releasing a prototype application. In
conducting its analysis, the lower court conflated these two scenarios. Smartphone
applications frequently include glitches when they are first released. These glitches
are gradually smoothed out over time using one or multiple software updates, just as
occurred in the case of MEMOIJ. At the very least, these issues raise a dispute of
material fact that a reasonable jury could find highlight Social Tech’s bona fide use.
Therefore, the lower court’s granting of summary judgment was improper and
should be reversed.
Furthermore, evidence of sales is deemed “highly persuasive” to the question
of whether a mark was used in commerce. Chance, 242 F.3d at 1159. Even a single
sale or transport of a trademarked product is sufficient to constitute a use in
commerce. Id. at 1157; Drop Dead Co. v. S.C. Johnson & Son, Inc., 326 F.2d 87,
13
93-94 (9th Cir. 1963) (holding that the transport of a single trademarked product is
sufficient to constitute a use in commerce). Once Social Tech posted MEMOJI on
the Google Play store, the app obtained 5,500 downloads. Ex 1 at 3, Dkt. No. 123-
6.
Clearly, Social Tech’s use of MEMOJI was not solely to sue Apple or secure
trademark rights; the app was completed and put on the market for commercial
purposes as Social Tech had always planned. At the very least, Social Tech has least
demonstrated a material issue of fact with respect to bona fide use that is sufficient
to defeat summary judgment. See Vantone Grp. Ltd. Liab. Co . v. Yangpu NGT Indus.
Co., No. 13CV7639-LTS-FM, 2016 WL 4098564, at *9 (S.D.N.Y. July 28, 2016)
(denying Defendants’ motion for summary judgment seeking cancellation of
Plaintiff’s marks because “Defendants – who bear the burden of proof – proffer[ed]
only that Plaintiff attempted to sell the rights to the . . . mark for a hefty sum as
evidence of Plaintiff’s bad faith use of the mark. This was not enough to win on
summary judgment [a]lthough Plaintiff’s explanation as to how . . . the mark [was
formulated was] specious at best” because these accounts constituted genuine issues
of material facts). The district court’s order granting Defendant’s motion for
summary judgment should therefore be reversed and the case remanded to the
district court for trial.
14
CONCLUSION
For the foregoing reasons, the judgment of the district court should be
reversed, and the case remanded for trial.
Pierce Bainbridge, PC
/s/ John M. Pierce

John M. Pierce

15
STATEMENT OF RELATED CASES
Pursuant to Ninth Circuit Rule 28-2.6, there are no known case pending in the
United States Court of Appeals for the Ninth Circuit related to this appeal.
/s/ John M. Pierce

John M. Pierce


CERTIFICATE OF COMPLIANCE
Pursuant to Fed. R. App. P. 32(a)(7)(C), I certify that:
This brief complies with the type-volume limitation of Fed. R. App. P.
32(a)(7)(B) because this brief contains 3362 words, excluding the parts of the brief
exempted by Fed. R. App. P. 32(a)(7)(B)(iii).
This brief complies with the typeface requirements of Fed. R. App. P.
32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6) because this
brief has been prepared in a proportionately spaced typeface using Microsoft
Work Times New Roman 14-point font.
/s/ John M. Pierce

John M. Pierce


CERTIFICATE OF SERVICE
I hereby certify that on August 24, 2020, I electronically filed the foregoing
with the Clerk of the Court for the United States Court of Appeals for the Ninth
Circuit by using the appellate CM/ECF system.
Participants in the case who are registered CM/ECF users will be served by
the appellate CM/ECF system.
/s/ John M. Pierce

John M. Pierce


ADDENDUM
Case:3:18-cv-05945-VC
Case 20-15241, 08/24/2020, ID: 11800702,
Document DktEntry:
115-4 Filed 12, Page
10/03/19 Page261of
of85
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EXHIBIT C
Case: Case
20-15241, 08/24/2020, ID:Document
3:18-cv-05945-VC 11800702,115-4
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SocialTech_0000655
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20-15241, 08/24/2020, ID:Document
3:18-cv-05945-VC 11800702,115-4
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SocialTech_0000656
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20-15241, 08/24/2020, ID:Document
3:18-cv-05945-VC 11800702,115-4
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SocialTech_0000657
Case: Case
20-15241, 08/24/2020, ID:Document
3:18-cv-05945-VC 11800702,115-4
DktEntry:
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How much do people love emojis?
People absolutely emojis.
According to research from eMarketer, there are 2 billion smartphone users worldwide. On
those devices, some 41.5 billion messages and 6 billion emoticons or stickers are sent
around the world every day on mobile messaging apps, according to branded digital startup
Swyft Media.
Instagram’s decision to enable the hashtagging of emojis was also prompted by numbers —
with nearly half of all Instagram posts containing at least one emoji.
Snaps, which also creates custom emoji suites for brands, has even seen branded emojis
resonate among fans. The company, which created the chicken fries emoji for Burger King,
for example, reports that 3.6 million emojis have been shared across the different branded
keyboards it has created.
“Given that users are on the same playing field using the same social and messaging
platforms every day, there is a desire these days to express ourselves in a more unique
manner than just text,” said Andrew Cunningham, Huge’s social lead.
SocialTech_0000658
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So have emojis replaced Internet slang?
Sort of! The recent Instagram study

found that people align the meanings
of popular emojis with early internet
vernacular. For instance, the tears of
joy face is commonly understood to
mean the same as “lol,” “lmfao” and
“lmao,” whereas the thumbs-up emoji
implies “keep it up” or “good job.”
“The vocabulary of Instagram is

shifting similarly across many
different platforms with a decline in
Internet slang corresponding to a rise
in the usage of emoji’s,” said the post
by Instagram.
SocialTech_0000659
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3:18-cv-05945-VC 11800702,115-4
DktEntry:
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Is this why I’m seeing these things in more commercials now?
Emojis present brands with an opportunity to convey their messages even more creatively,
which explains the ineluctable emojification of brands. They are not only using emojis in
their daily communication with fans on social media, but several are also commissioning
custom emoji keyboards specific to their brands.
Time Inc.’s Food & Wine magazine, for instance, is soon launching its own suite of emojis.
“Since our avid fans actively communicate with standard emojis all the time — some going
as far as writing entire restaurant reviews in emojis — we wanted to create a whole new
world of possibilities for the super foodie connecting the images with the objects of their
obsession,” said Dana Cowin, editor-in-chief of Food & Wine.
Agencies have gotten in on it too. Scott Wolf, copywriter at McCann, created “Admojis” —
emojis with one-liners that poke fun at ad agency life. Swedish agency Dogwash has also
launched Advertising Emojis, a suite of 70-plus ad-themed emojis.
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More people around the world have cell phones than ever had land-lines
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There are almost as many cell-phone

subscriptions (6.8 billion) as there are people
on this earth (seven billion)—and it took a
little more than 20 years for that to happen. In
2013, there were some 96 cell-phone service
subscriptions for every 100 people in the
world.
Those figures are the latest from the United Nations telecommunications agency, which
keeps track of the rise and fall of various kinds of communications technology. Of course,
100 subscriptions doesn’t mean that everyone has a cell phone, just most people. In
wealthier countries, penetration rates exceed 100% because of individuals with multiple
subscriptions, making up for the disparity in developing economies. Still, penetration
rates are impressive even in poor countries, with an average of 89.4 subscriptions per 100
inhabitants.
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Snapchat Acquires Bitmoji Maker Bitstrips – New Snap Options Coming?
This is an interesting one. Reports have circulated today that Snapchat (valued at $16
billion as of March 4, 2016) has purchased Bitstrips, the cartoon/emoji hybrid that enables
you to transform yourself into an animated character.
If you use Facebook (which you do), you’re no doubt well aware of Bitstrips. A few years
ago, Bitstrips were all over the social network, with personalized comic images like this
being circulated at high velocity.
After seeing initial success with their

comic strip approach, Bitstrips translated
the functionality into an app called
Bitmoji, which enables users to create a
customized cartoon image of themselves,
then put their likeness into a wide range
of emoji responses, triggered via an in-
app keyboard.
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The app’s proven a big success, regularly ranking in the top 10 for utility apps (as per App
Annie) with a range of big name celebrities and high profile users helping boost interest.
As to what Snapchat might have planned for Bitmoji, no one knows at this stage. Neither
Snapchat nor Bitstrips have confirmed the deal, which is reportedly worth somewhere in the
vicinity of $100 million. Some commentators have speculated that Snapchat will look to
introduce the personal emoji option into the Snapchat experience, giving users another way
to decorate their snaps alongside the already available emoji, filter and built-in drawing
options. If that’s the approach Snapchat takes, Bitstrips emoji could also act as a form of
personal branding – you could create your own Bitmoji logo with your title and attach that to
every snap you take, that way, if your snap content is re-used in a Live Story or captured via
screenshot, it would still be aligned to your brand and would help boost awareness.
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Which consumer tech trends will rise, fall in 2016?

Smartwatches have been vying for attention for a number of years now, but they've yet
to go truly mainstream. In 2016 we are unlikely to see any forward shift. No
manufacturer (Apple included) has been able to tell a compelling story around wearable
devices, and there's no sign that anything fundamentally different will happen next year,
either. The devices released in 2015, were incremental refinements. Apple Watch tried to
marry fitness and notifications in a pretty form factor, while Pebble, Motorola, Martian,
and others tried making more watch-like discs. Certainly, there's a market for people
who want smartphone notifications on their wrist, but average consumers would rather
wear an inexpensive fitness band, it would seem, if anything at all.
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“GIVING YOUR HANDS A VOICE”
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Line-of-sight
will never limit
the use of
tactical hand
signals again.
Get the
message
safely, fast.
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Other implementations include:
- Coast Guard
- National Guard
- FBI / CIA / DEA / ATF
- Secret Service
- Law Enforcement & S.W.A.T.
- Potential integration into military-based
video games, such as Call of Duty.
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Nicholas Ranallo (SBN 275016)

1 nranallo@mavrolaw.com
MAVRONICOLAS & DEE LLP
2 2443 Fillmore St., #380-7508
San Francisco, CA 94115
3 T: (831) 607-9229
F: (831) 533-5073
4
Peter Dee (pro hac vice to be filed)
5 pdee@mavrolaw.com
MAVRONICOLAS & DEE LLP
6 3 Park Avenue, 15th Floor
New York, NY 10016
7 T: (646) 770-1256
F: (866) 774-9005
8
Attorneys for Plaintiff Social Technologies LLC
9
10 UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
11
12 SOCIAL TECHNOLOGIES LLC, a Georgia Case Number: 18-5945
limited liability company,
13
Plaintiff, DECLARATION OF SAMUEL
14 BONET IN SUPPORT OF
vs. PLAINTFF’S MOTION FOR
15 PRELIMINARY INJUNCTION
APPLE INC., a California corporation,
16
Defendant.
17
18
I, Samuel Bonet, pursuant to 28 U.S.C. § 1746, hereby declare as follows:
19
1. I am the co-founder and president of Social Technologies LLC (“Social Tech”). I
20
am duly authorized to make this declaration which I submit based on personal knowledge. If called
21
22 upon as a witness, I could competently testify to the truth of each statement herein.
23 2. Social Tech is a 100% minority-owned Georgia limited liability company focused
24 on the creation of innovative mobile applications to enhance the personal online and smartphone-
25 based messaging experience by providing consumers with exciting new methods to express
26
themselves.
27
28
1
Bonet Declaration in Support of Motion for Preliminary Injunction Case No. 18-5945
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3. Social Tech’s first release into the marketplace was in 2017 with “HELLOJIS,” a
1
2 downloadable suite of emojis with the enhanced-capability of movement. Each HELLOJI displays
3 an animated emoji. The kissing emoji, for example, would actually blow a kiss. Social Tech has
4 continued to promote and enhance its HELLOJIS app with the addition of new features and updates
5 through nine different versions within the first nine months of its release.
6
4. Social Tech’s related, second concept under development since 2016 is “MEMOJI”
7
– the subject of this case. Social Tech’s MEMOJI app utilizes the same movement concept as the
8
HELLOJIS suite, but allows consumers to use their device’s camera to capture and edit a photo or
9
10 video of themselves or their surroundings to send a personalized, moving emoji. Social Tech’s
11 MEMOJI app was released on the Google Play store for use on Android devices on June 28, 2018.
12 5. After collaborating with my partner, I came up with the name MEMOJI in 2016.
13
Neither of us had ever heard the word before.
14
6. Prior to adopting the name, I searched the U.S. Patent and Trademark Office (“PTO”)
15
website for “memoji” to make sure no one else had registered the mark. That search revealed an
16
abandoned 2014 application for “Memoji”, U.S. Serial Number 86438926, filed by Big 3 ENT, LLC
17
18 and Lucky Bunny, LLC (together “Lucky Bunny”). I also conducted a web search and found an
19 unsuccessful mobile application with the name “MEmoji” which appeared to have been released in
20 2014 but abandoned almost immediately thereafter. We therefore settled on the MEMOJI name
21
after seeing that the name was not in use.
22
7. On April 1, 2016, I filed an intent-to-use application for Social Tech (f/k/a One
23
Monkey LLC) to register the following stylized MEMOJI trademark on April 1, 2016:
24
25
26
27
28
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1
2
3
4
5 8. I created a thorough presentation and began seeking investors for MEMOJI in April
6 2016 and began promoting MEMOJI on the Social Tech website as of January 4, 2017 at
7
(https://www.socialtechnologiesllc.com/memoji), and with two promotional videos posted to
8
YouTube also on January 4, 2017 (https://youtu.be/lb7EeFNJy2U and
9
https://youtu.be/cPEwDXIYaEA).
10
9. On May 21, 2018, an unknown person, but now believed to be acting at the direction
11
12 of Apple Inc. (“Apple”), left a message with Social Tech inquiring about MEMOJI. I returned the
13 call and the same person answered and inquired whether Social Tech had any interest in selling its
14 rights in MEMOJI. After the person refused to identify the company he worked for, I indicated that
15
MEMOJI was not for sale.
16
10. Within a matter of days after that seemingly random call, Apple announced on June
17
4, 2018 that it was planning to offer its own messaging feature using the name “Memoji”.
18
19 11. After Apple announced its “Memoji” feature, it immediately became clear that Social
20 Tech was losing control of the Memoji brand we worked hard to cultivate. Before Apple announced
21 its “Memoji” feature, a search for Memoji would have turned up our MEMOJI at or near the top of
22 search results. A search in YouTube for instance would have displayed our promotional MEMOJI
23
video as the first result. Now that is all gone. Social Tech’s promotional video is now at
24
approximately the 190th result in a search for MEMOJI on YouTube, where absolutely nobody will
25
see it. Likewise, after many pages of Google search results for MEMOJI, I cannot find Social Tech’s
26
27 MEMOJI product anymore.
28
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12. Swamped by the wave of publicity for Apple’s Memoji feature, Social Tech cut its
1
2 funding and development process short as we felt forced to advance the timeline for our MEMOJI
3 app (to stem whatever loss we could from Apple’s use of “Memoji”) and released a basic but
4 functional version of its app through the Google Play store on June 28, 2018:
5
6
7
8
9
10
11
12
13
14
15
16
17 See https://play.google.com/store/apps/details?id=com.socialTech.memoji, where we describe
18 MEMOJI as “The world’s best messaging app that will capture the facial expression of the end
19
user with full-motion capabilities, and transpose the image into a custom, personalized emoji of
20
the users actual face.” Our anticipated release for MEMOJI was Fall 2019.
21
13. I have also been active in promoting our MEMOJI app by purchasing Facebook
22
23 advertisements, and posting on Facebook (https://www.facebook.com/memojitrademarked/),
24 Instagram (https://www.instagram.com/socialtechnologies/), and YouTube

25 (https://www.youtube.com/channel/UCvxBLdaQ9Hql7u54EUiW_7A). We have also engaged a
26
company to enhance search engine optimization (SEO) for Social Tech’s MEMOJI app, but these
27
28
4
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efforts have yielded none of the expected results given Apple’s towering presence and complete
1
2 domination of the Memoji name.
3 14. Indeed, a number of customers and potential customers have already expressed
4 confusion and negative comments on our MEMOJI Facebook page and on our Google Play site,
5 which illustrate how Apple’s use of “Memoji” is negatively affecting Social Tech’s reputation,
6
brand, and goodwill with respect to its MEMOJI trademark.
7
15. On September 17, 2018, the same day that Apple’s “Memoji” feature became
8
available to the general public, a user, apparently expecting Apple’s version, asked Social Tech via
9
10 Facebook: “What kind of app is this?? This app looks nothing like the app on iPhone! . . . When
11 will y’all make the memoji app look and function like this memoji app on iPhones? Picture above”:
12
13
14
15
16
17
18
19
20
21
22
23 16. The same user also left a searing negative review on our Google Play site because
24 she didn’t find the Apple product she was looking for, calling our app “Trash! No emoji
25
transformation whatsoever. Nothing like the memoji update on the iPhone!!! Please don’t even
26
waste your time downloading. Keeps crashing as well.”
27
28
5
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1
2
3
4
(The crashing she mentions is likely because she wasn’t using our MEMOJI on What’s App.
5
Because of the shortened time frame in which we released our app, it is only optimized for use
6
with the messaging service What’s App).
7
8 17. Two messages to our Facebook page on September 18 and 19, 2018 (just after
9 Apple’s release) were left by people who apparently have older iPhones which are not compatible
10 with Apple’s new “Memoji” feature, yet are looking for Apple’s feature (Social Tech’s MEMOJI is
11
only offered on Android phones through the Google Play store):
12
13
14
15
16
17
18
19
20
21 18. Another message to our Facebook page left on September 1, 2018, before Apple
22 released its “Memoji” feature, apparently seeking Apple’s product, asked “How do I create my own
23 Memoji on my iphone x?”
24
25
26
27
28
6
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1
2
3
4
5
6
7
8
9
19. To make matters worse, Social Tech has not attempted to enter the MEMOJI app
10
into Apple’s App Store for use on iPhones given some of the terms that Apple requires developers
11
to agree to which, given the instant dispute, could result in a waiver of significant rights according
12
13 to our attorneys.
14 20. Given our extremely limited resources, upon the granting of the requested
15 preliminary injunction, Social Tech would likely not be able to post security for anything greater
16 than a nominal amount.
17
18 I declare under penalty of perjury that the foregoing is true and correct.
19 Executed on September 27, 2018.
20
21 _____________________________
Samuel Bonet
22 President, Social Technologies LLC
23
24
25
26
27
28
7
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EXHIBIT D
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From: "sambonet3 @gmail.com" <sambonet3 @gmail.com>

Subject: MeMOJI Processing Flow
Date: Wed, 18 May 2016 16:34:24 -0400
MeMOJI Processing Flow
Blank wall /lit well

Facial recognition /motion tracking /edge detection
Cut out face /specify body part
Flatten image
Apply automatic LUT
De -noise if necessary
Digital makeup
Slight sharpen
Artificial light if necessary
Set on short loop (around 40 -45 frames, could be selectable ?)
Compress and store to distribute (200 -300k for Android, 400 -500k for iPhone).
Log to REC 709 (RED and Arri cameras)

Express Color
Photo /film apps
NODES FX Factory
Ease of use /compile stock MeMOJIS to send just like photos (eventually integrate into phone itself, like using photos)
Bad precursors (templates, full body)
r
BONET
EXHIBIT
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From: "Vimeo <vimeo@email.vimeo.com>" <vimeo@email.vimeo.com>
To: "sambonet3@gmail.com" <sambonet3@gmail.com>
Subject: Your video is now on Vimeo
Date: Fri, 06 May 2016 11:26:09 -0600
Your video MeMOJI SHOPPING Master 60 fps is now ready to watch

on Vimeo.
Share it with friends, or hop into your video settings to tweak your
privacy settings or custom embed options, and do things like add music
or captions and subtitles. Or, upload more videos.
Go to video
MeMOJI SHOPPING Master 60 fps

https://vimeo.com/165608503
Only people with a password
Help this video look its very best by following these file recommendations.
Want more storage, privacy, and player customization options?

Upgrade to Vimeo Plus or PRO.
TM + © Vimeo, LLC
555 West 18th Street, New York, NY 10011
Terms | Privacy
SocialTech_0000603
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Page 1

2 NORTHERN DISTRICT OF CALIFORNIA
3 ----------------------------*
4 SOCIAL TECHNOLOGIES LLC,
5 Plaintiff, Case No.
6 vs. CV 18-05945-VC
7 APPLE INC.,
8 Defendant.
9 ----------------------------*
10 HIGHLY CONFIDENTIAL - ATTORNEYS EYES ONLY
11 ORAL AND VIDEO DEPOSITION OF
12 SAMUEL E. BONET
13 July 3, 2019
14 New York, New York
15 9:12 a.m.
16
17
18
19
20
Reported by:
21 Josephine H. Fassett, RPR, CCR
22
23
24
25
David Feldman Worldwide

800-642-1099 A Veritext Company www.veritext.com
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HIGHLY CONFIDENTIAL - ATTORNEYS EYES ONLY
Page 29
1 executive.
2 Q. And how long has Ms. Printer been your
3 girlfriend?
4 MR. HECHT: Objection.
5 A. Over a year.
6 Q. Does she have any involvement with
7 Social Tech?
8 A. She's listed as the director of
9 marketing on our website. That's just kind of,
10 like, a public face. She doesn't have any -- she
11 doesn't make any decisions or advise in any way.
12 Q. And has she ever invested any money in
13 Social Tech?
14 A. Yes.
15 Q. How much money?
16 A. Around a hundred thousand dollars.
17 Q. And when did she make this investment?
18 A. I don't know the exact date, but it was
19 last year.
20 Q. Was it after Apple's June 4, 2018,
21 announcement of its Memoji feature?
22 A. No.
23 Q. Do you have any documents reflecting her
24 investment?
25 A. No.

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1 if Social Tech received money from Apple in this

2 litigation?
3 MR. HECHT: Objection to form.
4 A. Nicola said that she wanted to see me be
5 successful, were her exact words.
6 Q. So she -- did she write a check for a
7 hundred thousand dollars?
8 A. It was a cashier's check. And it
9 wasn't -- a cashier's check for 50,000 and then
10 she wire transferred the rest.
11 Q. And was there something in particular
12 that Social Tech was doing at the time of this
13 investment that led to the investment?
15 A. We were looking to market Hellojis and
16 develop Memoji.
17 Q. Have you ever communicated with
18 Ms. Printer regarding Social Tech's MEMOJI app?
20 A. We've discussed it from time to time,
21 yes.
22 Q. Have you ever communicated with
23 Ms. Printer via text or email regarding Social
24 Tech's MEMOJI app?

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1 in mid-2016?
3 A. Yes.
4 Q. Isn't it true that no investors were
5 interested?
7 A. I don't know if they were interested,
8 but they didn't pull the trigger for some reason.
9 Q. Well, if -- none of the investors you
10 spoke to decided to invest, correct?
11 A. Correct.
12 Q. And did any of them explain why they
13 decided not to invest?
14 A. I don't recall, no.
15 Q. Isn't it true that after the investors
16 declined to invest, no further work was done on
17 the proposed Social Tech MEMOJI app until after
18 Apple's announcement?
20 A. We maintained promotional -- a
21 promotional presence on the website. And in the
22 late spring of 2018 after Hellojis -- what we
23 thought was in a good place -- Justin and I began
24 discussing Memoji on how to build it.
25 Q. Do you -- when you said that you thought

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1 Hellojis "was in a good place," what do you mean

2 by that?
3 A. Structurally, content-wise.
4 Q. You thought that Hellojis was
5 successful?
6 A. I thought there was no more structural
7 work that needed to be done to it.
8 Q. Did you think it was unsuccessful?
10 MS. CENDALI: Move to strike.
11 BY MS. CENDALI:
12 Q. You thought Hellojis was in a good place
13 so you say you spoke to Mr. Grant in late spring
14 of 2018; is that right?
15 A. Yes.
16 Q. Do you have any documents reflecting
17 that you spoke to Mr. Grant about Social Tech's
18 MEMOJI app prior to Apple's announcement of
19 June 4, 2018?
20 A. I do not. It was a phone call.
21 Q. So is it your testimony that you -- had
22 you emailed or texted Mr. Grant about Social
23 Tech's MEMOJI app prior to June 4 of 2018?
25 A. I believe he sent me an email about

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1 augmented reality but, to the best of my

2 knowledge, that's the only one, the only thing.
3 Q. What code, if any, was written with
4 regard to the Social Tech Memoji prospective app
5 in 2017? Nothing, right?
7 A. 2017, there was no code written.
8 Q. Essentially no work was done on the
9 Social Tech MEMOJI app in 2017, right?
11 A. There was no code written, no.
12 Q. And no new marketing or promotion or
13 nothing else was done, right?
15 A. I didn't make any new content, no.
16 Q. And prior to Apple's announcement of its
17 Memoji feature on June 4th of 2018, had any code
18 been written for Social Tech's MEMOJI app?
19 A. That would have been a question for
20 Justin. I'm not completely sure.
21 Q. You don't know of any, right?
23 A. Justin would know that. I don't -- I
24 don't know what he would have done after we began
25 talking about it.

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1581 (Rev 090005)
OMB No 0651 -0054 (Pop 123120201
Request for Extension of Time to File a Statement of Use

(15 U.S.C. Section 1051(d))
The table below presents the data as entered.
Input Field Entered

SERIAL NUMBER 86961925
LAW OFFICE ASSIGNED {LAW OFFICE 113
MARK SECTION
MARK MEMOJI (stylized and /or with design)
STANDARD CHARACTERS NO
rUSPTO- GENERATED IMAGE NO
OWNER SECTION (current)

I NAME SOCIAL TECHNOLOGIES LLC
rINTERNAL ADDRESS
881 N. HIGHLAND AVENUE NE
STREET APT. 19
CITY ATLANTA
STATE Georgia
ZIP /POSTAL CODE 30306
COUNTRY United States
OWNER SECTION (proposed)
NAME SOCIAL TECHNOLOGIES LLC
INTERNAL ADDRESS 881 N. HIGHLAND AVENUE NE
STREET APT. 19
CITY ATLANTA
[TATE Georgia
ZIP /POSTAL CODE 30306
r
COUNTRY United States
PHONE 6783584965
GOODS AND /OR SERVICES SECTION
INTERNATIONAL CLASS 009
Computer application software for mobile phones, namely, software for
recording, editing, and distributing images, videos, and audio; Computer
application software for mobile phones, computers, and tablets, namely,
CURRENT IDENTIFICATION software for recording, editing, and distributing images, videos, and audio;
Downloadable mobile applications for recording, editing, and distributing
r -
images, videos, and audio; Downloadable software in the nature of a mobile
application for recording, editing, and distributing images, videos, and audio
APL -STECH 00000217

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GOODS OR SERVICES I KEEP ALL LISTED

EXTENSION SECTION
EXTENSION NUMBER 1
ALLOWANCE MAIL DATE 01/30/2018

STATEMENT OF USE NO
PAYMENT SECTION
NUMBER OF CLASSES I 1
SUBTOTAL AMOUNT (EXTENSION FEE] 125
TOTAL AMOUNT 125
SIGNATURE SECTION
SIGNATURE /Samuel E. Bonet/
SIGNATORY'S NAME Samuel E. Bonet
SIGNATORY'S POSITION Principal
DATE SIGNED 03/21/2018
SIGNATORY'S PHONE NUMBER 6783584965
FILING INFORMATION
SUBMIT DATE Wed Mar 21 15:00:44 EDT 2018
USPTO/ESU-XX.XX.XX.XX-201
80321150044372583-8696192
5-5109b36e4eaa32c44df6fl 6
TEAS STAMP
443a720838cc8d8b6e274554b
e16ae2a248285f9d6b-CC-108
6-20180321145303602701
APL -STECH 00000218

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1581 (Rev 0920051
OMB No 0651-0054 (E,p 12312020
SOU Extension Request

(15 U.S.C. Section 1051(d))
To the Commissioner for Trademarks:
MARK: MEMOJI (stylized and/or with design)

SERIAL NUMBER: 86961925
The applicant, SOCIAL TECHNOLOGIES LLC, having an address of

881 N. HIGHLAND AVENUE NE
APT. 19
ATLANTA, Georgia 30306
United States
6783584965
info @socialtechnologiesllc.com (authorized)
requests a six -month extension of time to file the Statement of Use under 37 C.F.R. Section 2.89 in this application. The Notice of Allowance
mailing date was 01/30/2018.
For International Class 009:

Current identification: Computer application software for mobile phones, namely, software for recording, editing, and distributing images,
videos, and audio; Computer application software for mobile phones, computers, and tablets, namely, software for recording, editing, and
distributing images, videos, and audio; Downloadable mobile applications for recording, editing, and distributing images, videos, and audio;
Downloadable software in the nature of a mobile application for recording, editing, and distributing images, videos, and audio
For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection
with all of the goods /services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective /certification
mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or
in connection with the goods /services /collective membership organization listed in the Notice of Allowance, or as subsequently modified for this
specific class.
This is the first extension request.
A fee payment in the amount of S125 will be submitted with the form, representing payment for 1 class.
Declaration
STATEMENTS: The signatory believes that: the applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or
in connection with all the goods /services under Section 1(b) in the notice of allowance or as subsequently modified, or, if applicable, the
applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in
connection with all the goods /services /collective membership organization under Section 1(b) in the notice of allowance or as subsequently
modified; and that to the best of the signatory's knowledge and belief, no other persons, except, if applicable, members and concurrent users,
have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in
connection with the goods /services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under
18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any resulting
registration, declares that all statements made of his/her own knowledge are true and that all statements made on information and belief are
believed to be true.
Signature: /Samuel E. Bonet/ Date Signed: 03/21/2018
APL -STECH 00000219

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Signatory's Name: Samuel E. Bonet

Signatory's Position: Principal
Signatory's Phone: 6783584965
RAM Sale Number: 86961925

RAM Accounting Date: 03/22/2018
Serial Number: 86961925

Internet Transmission Date: Wed Mar 21 15:00:44 EDT 2018
TEAS Stamp: USPTO/ESU- XX.XX.XX.XX -201803211500443725
83- 86961925- 5109b36e4eaa32c44df6f16443a7
20838cc8d8b6e274554be16ae2a248285t9d6b -C
C -1086- 20180321145303602701
APL-STECH_00000220
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From: TMOfficialNotices @USPTO.GOV

Sent: Friday, March 23, 2018 00:15 AM
To: sambonet34 @gmail.com
Subject: Official USPTO Notice of Approval of Extension Request: U.S. Trademark SN 86961925: MEMOJI (Stylized /Design)
NOTICE OF APPROVAL OF EXTENSION REQUEST
U.S. Serial Number: 86961925

Mark: MEMOJI (Stylized/Design)
Owner: SOCIAL TECHNOLOGIES LLC
Extension Request Number: 1
Docket/Reference Number:
Notice of Allowance Date: Jan 30, 2018
The USPTO issued a Notice of Allowance on Jan 30, 2018 for the trademark application identified above. Applicant's FIRST request for Extension of Time to File a Statement
of Use has been GRANTED. If you are currently using the mark in commerce, please visit http : / /www.uspto.gov /trademarks /teas /intent to use.¡sp and select form number 1
( "Statement of Use /Amendment to Allege Use for Intent -to -Use Application ") to file your statement of use and complete the registration process.
PLEASE NOTE:
1. Applicant must continue to file extension requests every six (6) months calculated from the date the Notice of Allowance was issued until a Statement of Use is filed, or
the USPTO will abandon the application.
2. Applicant may only request a total of five (5) extensions of time.
3. Applicant may NOT file a Statement of Use more than thirty -six (36) months from the date the Notice of Allowance was issued.
To check the status of the application, go to http: / /tsdr. uspto. gov / #caseNumber =86961925 &caseType= SERIAL NO &searchType = statusSearch or contactthe Trademark
Assistance Center at 1- 800 -786 -9199. Please check the status of the application at least every three (3) months after the application filing date.
To view this notice and other documents for this application on -line, go to
http://tsdr.uspto.qov/#caseNumber=86961925&caseType=SERIAL NO &searchType = documentSearch. NOTE: This notice will only become available on -line the next business
day after receipt of this e-mail.
For further information on filing a Statement of Use or an additional extension request, if applicable, please consult the USPTO website at http : /www.uspto.qov /trademarks /,
view the video on the USPTO website entitled "Statement of Use" (click on "TMIN Trademark Information Network" to view a list of available videos), or contact the Trademark
Assistance Center at 1- 800 -786 -9199.
APL-STECH_00000225
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EXHIBIT F
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Page 1

2 NORTHERN DISTRICT OF CALIFORNIA
3 ----------------------------*
4 SOCIAL TECHNOLOGIES LLC,
5 Plaintiff, Case No.
6 vs. CV 18-05945-VC
7 APPLE INC.,
8 Defendant.
9 ----------------------------*
10 HIGHLY CONFIDENTIAL - ATTORNEYS EYES ONLY
11 ORAL AND VIDEO DEPOSITION OF
12 SAMUEL E. BONET
13 July 3, 2019
14 New York, New York
15 9:12 a.m.
16
17
18
19
20
Reported by:
21 Josephine H. Fassett, RPR, CCR
22
23
24
25

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2 A. I am prepared.
3 Q. So what is your answer, yes or no?
5 Q. Had code been written -- and I remind
6 you you're under oath -- prior to June 4, 2018,
7 for Social Tech's MEMOJI app?
8 A. I'm not sure. If I had to guess,
9 probably not.
10 Q. Now, on May 21st of 2018, you were
11 contacted from someone inquiring about the Memoji
12 name, right?
13 A. Yes.
14 Q. And going back to your declaration in
15 support of the preliminary injunction motion,
16 Exhibit 228, that should be in front of you.
17 Turning to Paragraph 9, you wrote: On
18 May 21, 2018, an unknown person -- but now
19 believed to be acting at the direction of Apple
20 Inc. -- left a message with Social Tech inquiring
21 about Memoji. Do you see that?
22 A. Yes.
23 Q. Did the person give his name?
24 A. On the voice mail he left a name, but I
25 didn't -- I could not make it out.

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1 Q. Well, you returned the call, correct?

2 A. I did.
3 Q. And the person answered the phone and
4 gave you his name, correct?
6 A. No, I just believe I said I'm returning
7 a call from a voice mail I received. I didn't get
8 his name.
9 Q. Isn't it true that the person you spoke
10 to was named Tony Yarborough and that he
11 identified himself by that name?
13 A. I mean, I -- he might have. I don't
14 recall.
15 Q. Mr. Yarborough told you that he was
16 representing an undisclosed principal, correct?
17 A. I'm not sure of the exact details of how
18 he worded it.
19 Q. Well, in Paragraph 9 of your declaration
20 you wrote: I returned the call and the same
21 person answered and inquired whether Social Tech
22 had any interest in selling its rights in Memoji.
23 After the person refused to identify the company
24 he worked for, I indicated that Memoji was not for
25 sale. Do you see that?

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1 A. Yes.
2 Q. So you understood that Mr. Yarborough
3 was working for some unidentified company?
4 A. For someone, yeah.
5 Q. Okay.
6 A. Yeah.
7 Q. And did you ask him who he was working
8 for?
9 A. No.
10 Q. What did Mr. Yarborough say to you in
11 this conversation?
12 A. If I wanted to sell my rights to Memoji.
13 I believe. I'm paraphrasing. I'm not exactly
14 sure, something to that effect. He said for a lot
15 of money. And I said no thank you. And then I
16 asked him what this was for, and he said something
17 similar to what you have, something along those
18 lines. And that was it.
19 Q. Was there anything else said by you or
20 him in this conversation?
21 A. I'm not sure.
22 Q. Do you have any documents reflecting
23 this conversation?
24 A. I believe I sent a copy of the voice
25 mail to counsel. Maybe a screenshot of my phone

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Diana M. Torres (S.B.N. 162284)

diana.torres@kirkland.com
Lauren J. Schweitzer (S.B.N. 301654)
lauren.schweitzer@kirkland.com
KIRKLAND & ELLIS LLP
333 South Hope Street
Los Angeles, California 90071
Telephone: (213) 680-8400
Dale M. Cendali (S.B.N. 1969070)

dale.cendali@kirkland.com
Mary Mazzello (pro hac vice pending)
mary.mazzello@kirkland.com
Megan L. McKeown (pro hac vice pending)
megan.mckeown@kirkland.com
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, New York 10022
Telephone: (212) 446-4800
Attorneys for Defendant Apple Inc.
UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
SOCIAL TECHNOLOGIES LLC, a Georgia ) CASE NO.: 3:18-cv-05945-VC
limited liability company, )
)
Plaintiff, ) DECLARATION OF THOMAS R. LA PERLE
) IN SUPPORT OF APPLE INC.’S
vs. ) OPPOSITION TO PLAINTIFF’S MOTION
) FOR PRELIMINARY INJUNCTION
APPLE INC., a California corporation, )
)
Defendant. )
LA PERLE DECLARATION ISO OPPOSITION CASE NO. 3:18-cv-05945-VC

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I, Thomas R. La Perle, declare as follows:
1. I am over 18 years of age and am competent to testify to the following statements on
behalf of Apple Inc. (“Apple”) if called upon to do so.
2. I am a Senior Director in Apple’s Legal Department, managing Apple’s Trademark
and Copyright Group. My responsibilities include the clearance, prosecution, and protection of
Apple’s trademarks. I have been employed by Apple continuously since September 1999. Before
joining Apple, I worked as an intellectual property attorney at a law firm in California, where I was
one of Apple’s outside intellectual property counsel. As a result of my considerable experience and
position at Apple, I am familiar with Apple’s brands, operations, and products.
3. I submit this declaration in Opposition to Plaintiff Social Technologies LLC’s
(“Social Tech”) Motion for Preliminary Injunction asking the Court to order that Apple cease using
“Memoji” in connection with Apple’s software that uses video of an individual to create emojis that
resemble the individual.
Trademark Clearance Search Conducted By Apple

4. In April of 2018, Apple’s outside counsel at Dechert LLP (“Dechert”) conducted a
full, multinational trademark search on the mark MEMOJI for a selfie emoji software application,
and conducted follow-up investigations based on the results of that search as part of Apple’s
clearance process. Apple initiated this search in anticipation of a new software feature that would be
released in June of 2018 with the release of iOS 12, the latest version of Apple’s mobile operating
system. The new software feature would allow the user of an iPhone X or later device running iOS
12 to take video of himself or herself and create and share emojis that resemble the user. In addition
to searching trademark registers and obtaining searches from foreign counsel, Dechert also
performed online searches.
5. Dechert’s search identified two active U.S. trademark applications for the mark
MEMOJI filed by two different applicants.
6. In particular, the search revealed that Lucky Bunny LLC and Big 3 Ent LLC
(together the “Prior Owners”) were joint applicants in two separate applications for “MEmoji”, both
filed as “Standard Character” marks, meaning no claim of stylization, design, font, size or color was
1
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claimed. The Prior Owners filed the first application for “MEmoji” (Serial No. 86438926) on
October 29, 2014, asserting use of the mark in connection with “Computer application software for
mobile phones and other computing devices, namely, software for creating and sending emoticons;
Downloadable computer software for creating and sending emoticons” with a first use in commerce
date of October 1, 2014. That first application also asserted an intent-to-use the mark on baseball
caps and hats, shirts and t-shirts. The U.S Patent and Trademark Office (“PTO”) approved the
application for registration on February 19, 2015, it was published without opposition on March 31,
2015, and a Notice of Allowance issued May 26, 2015. The Prior Owners also submitted a
specimen of use for the in-use portion of the application, i.e. the computer software portion of the
application, showing use of the mark in connection with a mobile application that allowed users to
create emojis of themselves. The entire application was abandoned, however, on December 28,
2015 because the Prior Owners did not file a Statement of Use for the intent-to-use portion of the
application covering caps, hats, and shirts.
7. The Prior Owners then filed a second application for “MEmoji” on April 6, 2017
(Serial No. 87397135), this time covering only computer software, with a description of goods
identical to the description in the 2014 application (“Computer application software for mobile
phones and other computing devices, namely, software for creating and sending emoticons;
Downloadable software in the nature of a mobile application for creating and sending emotions”)
and the same October 1, 2014 first use in commerce date. This second application was suspended
on June 26, 2017 pending the disposition of an intent-to-use application (Serial No. 86961925) filed
by Social Tech for the registration of a design mark incorporating the word “MEMOJI,” described
further below. This suspension is routine and not indicative of the relative merits of the applications,
however, because examiners at the PTO look only to the filing dates of the applications to determine
which application may proceed to registration. In other words, examiners do not determine which
applicant ultimately has priority (i.e. which applicant first used the mark in commerce). Thus, where
a senior user’s first use of a trademark predates an applicant’s filing date, the way the senior user can
obtain relief is by petitioning to cancel the later user’s registration. This is precisely what Apple is
currently in the process of doing, as explained further below.
2
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8. Dechert’s investigations into the Prior Owners’ use revealed that there was an app
named “MEmoji” from the developer Lucky Bunny LLC (the “MEmoji App”). The MEmoji App
was the first personalized emoji app in the App Store to operate under the mark MEMOJI. In its
Apple App Store listing and on its website, Lucky Bunny LLC described the MEmoji App as “the
world’s first iOS app for capturing and accessorizing GIF selfies,” touting the user’s ability to
“TURN YOURSELF INTO AN EMOJI” and “TEXT YOUR MEMOJI PHOTOS & VIDEOS TO
YOUR FRIENDS.” While the app itself could be downloaded for free, the app offered in-app
purchases to customers. Further, once a user downloaded the app, the user could use the app without
ever having to download it again. Below is a screenshot of the MEmoji App as it appeared in the
App Store Preview:
9. It is my understanding that after releasing the MEmoji App in 2014, the Prior Owners
steadily promoted the MEmoji App through various sources, including through a dedicated website
and Twitter. The Prior Owners’ MEmoji App also has been widely publicized in the media,
including in news articles and radio and television shows, as described below.
3
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10. On October 22, 2014, the well known actor and comedian Howie Mandel retweeted a
tweet from @bigman7000 calling the MEmoji App a “Cool app.” See
https://twitter.com/howiemandel/status/524921214847168513?s=20 (last visited October 9, 2018).
A true and correct copy of this tweet is attached hereto as Exhibit 1.
11. On October 22, 2014, Howie Mandel retweeted a tweet from @jackelynmandel to
“don’t forget to write a review for #MEmoji in the ITunes Store.” See
12. On October 22, 2014, Howie Mandel retweeted a link to the MEmoji App to
@dpaquin to download the app. See
https://twitter.com/howiemandel/status/524894170738356224?s=20 (last visited October 9, 2018). .

@jaecee201 to download the app. See
@uncleange to download the app. See
15. On October 22, 2014, Howie Mandel tweeted a link to the MEmoji App to
@tsm0009 to download the app. See
https://twitter.com/howiemandel/status/524893952198311936?s=20 (last visited October 9, 2018). A
true and correct copy of this tweet is attached hereto as Exhibit 6.
16. On October 24, 2014, Howie Mandel tweeted about the MEmoji App to
@summergal6 and @StacyIM. See
4
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17. On October 24, 2014, Howie Mandel tweeted about the MEmoji App to @Johnny
Kosich saying “Nice app Me moji.” See
18. On October 24, 2014, Howard Stern’s @sternshow Twitter account tweeted about
Howie Mandel promoting the MEmoji App on the Howard Stern Show and calling the MEmoji App
an “awesome new app.” See https://twitter.com/sternshow/status/525678622237945856 (last visited
October 8, 2018). A true and correct copy of this tweet is attached hereto as Exhibit 9.
19. On October 24, 2014, Howie Mandel tweeted a link to the MEmoji App to
@ZSchultzEMCCorp after mentioning the app on the Howard Stern Show. See

20. On October 24, 2014, Howie Mandel retweeted a link to the MEmoji App on the App
Store from @Thememojiapp. See
21. On October 24, 2014, the Huffington Post’s @HuffPostVideo Twitter account
tweeted “Enjoy this MEmoji gif taken by @joshzepps on set with @howiemandel!” See
https://twitter.com/HuffPostVideo/status/525690511361712129 (last visited October 9, 2018). A
22. On October 26, 2014 Howie Mandel retweeted a link to the MEmoji App to
@WhisperadoDave to download the app. See
23. A November 3, 2014 USA Today article explained that Howie Mandel was “backing
two new apps, MeMoji, which is out, and Uguru, which has yet to be released.” The article
prominently features a screenshot of the MEmoji App on the App Store. See
https://www.usatoday.com/story/tech/columnist/talkingtech/2014/11/03/howie-mandel-the-tech-
5
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mogul/18235747/ (last visited October 1, 2018). A true and correct copy of the USA Today article is
attached hereto as Exhibit 14.
24. On December 1, 2014, Howie Mandel also was interviewed by AdWeek, where he
claimed the Prior Owners’ MEmoji App as his favorite App. See https://www.adweek.com/tv-
video/howie-mandel-watches-literally-everything-tv-161635/ (last visited October 1, 2018). A true
and correct copy of the AdWeek article is attached hereto as Exhibit 15.
25. The Prior Owners also promoted the MEmoji App through their website
thememojiapp.com until the website was deactivated following Apple’s acquisition, described
further below. A true and correct copy of a March 30, 2018 WayBack Machine preservation of
thememojiapp.com website is attached hereto as Exhibit 16.
26. The Prior Owners also promoted the MEmoji App on Twitter using the handle
@Thememojiapp. See Dkt. 4-13.
27. The Co-Founder and CEO of Lucky Bunny LLC Jacob Demonte-Finn touts on his
LinkedIn page that “MEmoji has been featured by Howie Mandel on the Ellen Degeneres Show.”
See https://www.linkedin.com/in/jacobdemontefinn/. The Ellen DeGeneres Show is a well known

daytime talk show hosted by comedian and actress Ellen DeGeneres. It has won numerous Daytime
Emmy and People’s Choice Awards. A true and correct copy of his LinkedIn page is attached
hereto as Exhibit 17.
28. The trademark clearance search conducted by Dechert also revealed a second U.S.
trademark application which was filed on an intent-to-use basis by Social Tech on April 1, 2016 for
a design mark with the word “MeMOJI” covering “Computer application software for mobile
phones, namely, software for recording, editing, and distributing images, videos, and audio;
Computer application software for mobile phones, computers, and tablets, namely, software for
recording, editing, and distributing images, videos, and audio; Downloadable mobile applications for
recording, editing, and distributing images, videos, and audio; Downloadable software in the nature
of a mobile application for recording, editing, and distributing images, videos, and audio”(Serial No.
86961925). A reproduction of the Social Tech mark with a heavy design aspect including a
photograph of a woman (the “MEMOJI & Design Mark”) is shown below:
6
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29. In its application, Social Tech claims black, white, gray, brown, tan, red and pink as
features of its mark, and describes the mark as “the stylized wording “MEMOJI” appearing in white
on a black background with a white oval with gray highlighting replacing the letter “O”, a woman's
cross-eyed face appearing within the oval with brown hair, tan skin, brown eyebrows, black and
white eyes, pink cheeks and red lips. A partial reflection of the wording and design appears inverted
directly below “MEMOJI” in gray, tan, brown, black red and pink.”
30. Social Tech’s intent-to-use application was filed on April 1, 2016, a year and a half
after the October 1, 2014 first use date the Prior Owners identified in their use-based trademark
application. Dechert’s investigations during clearance searching confirmed that Social Tech did not
have a “Memoji” app on the App Store, Google Play, or any other app market, and Social Tech was
not using the MEMOJI & Design Mark at that time, even though two years had passed since it filed
its intent-to-use trademark application.
31. Social Tech did not submit proof of use of the mark to the USPTO until June 30,
2018, and when it did submit it Social Tech claimed a first use date of June 28, 2018, well after
Apple had announced its Memoji iOS 12 software feature on June 4, 2018. The specimen of use
described Social Tech’s Memoji app as an app that allows users to create “personalized emoji.” A
true and correct copy of Social Tech’s specimen of use is attached hereto as Exhibit 18.
Steps Taken Following the Trademark Search
32. Dechert’s searches revealed that the Prior Owners were prior users of the MEMOJI
mark in the U.S. Apple’s agent Tony Yarborough, Vice President of Robert Jackson and Associates,
Inc., thus contacted the Prior Owners on or around May 19, 2018 to determine whether they were
willing to sell their rights in the MEMOJI mark and their associated application. The Prior Owners
represented to Mr. Yarborough that their MEmoji App had 80,000 users.
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33. Mr. Yarborough also contacted Social Tech on or around May 21, 2018 to inquire
whether Social Tech was interested in selling whatever rights it might have in the MEMOJI mark.
Social Tech responded that it was not interested. Mr. Yarborough did not make further attempts to
contact Social Tech.
34. On May 31, 2018, the Prior Owners sold their common law rights and pending
application for MEmoji (Serial No. 87397135) together with the goodwill connected with and
symbolized by the mark to an Apple-owned Delaware LLC called MemoFun Apps LLC (the
“MEMOJI Assignment”). A true and correct copy of the MEMOJI Assignment recorded with the
PTO is attached hereto as Exhibit 19. As part of the MEMOJI Assignment, Apple granted the Prior
Owners a license to continue their use of MEmoji through July 30, 2018, after which they were
required to cease use of the MEMOJI mark and cease promotion of their MEmoji App, including on
their website and social media.
35. On June 4, 2018 at its annual Worldwide Developers Conference (“WWDC”), Apple
announced its Memoji software feature as part of a new version of its iOS 12 operating system. The
following day, on June 5, 2018, Apple recorded at the PTO the assignment of the Prior Owners’
rights in the mark MEmoji to MemoFun Apps, LLC, and the assignment of those rights from
MemoFun Apps LLC to Apple.
36. Like the Prior Owners’ app, Apple’s Memoji software feature allows users to create
emojis of themselves, and the personalized emoji can then be shared with friends through text
message.
37. The Prior Owner’s MEmoji App was available for download as Apple’s licensee
from May 31, 2018 until July 30, 2018, at which point the Prior Owners ceased all use of the
MEMOJI mark. Accordingly, use of MEmoji by the Prior Owners’ and its successor in interest
Apple has been continuous since 2014.
Social Tech Subsequently Releases Its Own Memoji App
38. On June 13, 2018, Social Tech contacted Apple demanding that Apple immediately
cease use of the MEMOJI mark in light of Social Tech’s intent-to-use application. That letter
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specifically referenced Apple’s June 4, 2018 announcement at the WWDC. A true and correct copy
of this letter is attached hereto as Exhibit 20.
39. Apple responded through counsel on June 14, 2018 explaining that Apple had prior
rights, as Apple had acquired rights to the MEMOJI mark that predated Social Tech’s April 1, 2016
intent-to-use application for its MEMOJI & Design Mark. Apple further explained that because it
had prior rights to the MEMOJI mark, Social Tech’s use of the mark MEMOJI would infringe
Apple’s rights in the mark, and Apple would be able to cancel Social Tech’s registration, if issued.
A true and correct copy of this letter is attached hereto as Exhibit 21.
40. On June 22, 2018, Social Tech sent Apple’s counsel another letter, reaffirming its
position. A true and correct copy of this letter is attached hereto as Exhibit 22.
41. After this June correspondence, Apple heard nothing further from Social Tech.
42. Social Tech filed a Statement of Use on June 30, 2018 claiming that it had first used
its MEMOJI & Design Mark in connection with the goods identified in its intent-to-use application
on June 28, 2018, twenty-four (24) days after Apple’s announcement of its Memoji software feature
and release of the iOS 12 public beta that contained the feature, and three years and nine months
after the Prior Owner’s first use of the MEMOJI mark in commerce for the same type of software.
A true and correct copy of Social Tech’s Statement of Use is attached hereto as Exhibit 23.
43. Social Tech’s mark registered on September 18, 2018 (U.S. Reg. 5,566,242) giving
Social Tech a constructive priority date of April 1, 2016—still 18 months after the Prior Owners had
first used the MEMOJI mark that Apple now owns.
44. Social Tech launched its Memoji & Design app knowing that Apple had acquired the
Prior Owners’ rights in the MEMOJI mark and had recorded its assignment of those rights with the
PTO. Social Tech’s LinkedIn page stated its intent to introduce a Memoji product “[i]n the latter
part of 2017” and that its Memoji product would allow the consumer “to capture a headshot of
themselves, and convert the image to a personalized emoji, that moves.” See
https://www.linkedin.com/company/socialtechnologiesllc/?originalSubdomain=au (last visited
October 15, 2018). A true and correct copy Social Tech’s LinkedIn page is attached hereto as
Exhibit 24.
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45. In its June 14, 2018 letter to Social Tech’s counsel, Apple stated that if Social Tech’s
intent-to-use application did indeed mature to registration, Apple would be able to cancel the
registration because Apple’s common law rights in the MEMOJI mark predated Social Tech’s April
1, 2016 filing date. Consistent with that, Apple petitioned to cancel Social Tech’s registration of its
MEMOJI & Design Mark, asserting Apple’s priority in the MEMOJI mark (Cancellation No.
92069578), on September 26, 2018, eight days after Social Tech’s intent-to-use application matured
to registration.
46. Two days later, on September 28, 2018 (roughly four months after Apple’s WWDC
announcement of the Memoji software feature on June 4, 2018, and the parties’ initial
communications about each party’s respective rights to the MEMOJI mark), Social Tech’s counsel
informed Apple that it had filed this lawsuit and was seeking a preliminary injunction. I am now
aware the lawsuit was filed the day after Apple filed its Petition to Cancel the Social Tech
registration.
I declare under the penalty of perjury under the laws of the United States that the foregoing is true
and correct.
Dated: October 19, 2018
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CERTIFICATE OF SERVICE
On October 19, 2018, I electronically filed the foregoing with the Clerk of the Court by using
CM/ECF system which will send a notice of electronic filing to all persons registered for ECF. All
copies of documents required to be served by Fed. R. Civ. P. 5(a) and L.R. 5-1 have been so served.
/s/ Dale M. Cendali

Dale M. Cendali
CERTIFICATE OF SERVICE CASE NO. 3:18-cv-05945-VC

Social Technologies v. Apple Appeal

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Social Technologies v. Apple Appeal

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Case: 20-15241, 08/24/2020, ID: 11800702, DktEntry: 12, Page 1 of 85

IN THE UNITED STATES COURT OF APPEALS

SOCIAL TECHNOLOGIES, LLC,

On Appeal from the United States District Court

APPELLANT’S OPENING BRIEF

Attorneys for Appellant

CORPORATE DISCLOSURE STATEMENT

Pursuant to Rule 26.1 of the Federal Rules of Appellate Procedure, Plaintiff-

10% or more of its stock.

/s/ John M. Pierce

Attorneys for Appellant

Date: August 24, 2020

JURISDICTIONAL STATEMENT ...................................................................... 2

STATUTORY AUTHORITIES ........................................................................... 2

ISSUE PRESENTED ............................................................................................ 3

STATEMENT OF THE CASE ............................................................................. 3

B. District Court Proceedings ................................................................ 4

SUMMARY OF THE ARGUMENT .................................................................... 5

THE DISTRICT COURT ERRED BY GRANTING SUMMARY

A. Standard Of Review .......................................................................... 6

B. A Reasonable Jury Could Find That Social Tech Used the

1. Social Tech’s MEMOJI Mark Use During Pre-sale

2. Considering Social Tech’s Pre-Sale And Sale Actions,

3. The Lower Court Improperly Made A Fact-Intensive

Anderson v. Liberty Lobby, Inc.,

Aycock Eng’g, Inc. v. Airflite, Inc.,

Brookfield Commc'ns Inc. v. W. Coast Entm’t Corp.,

Chance v. Pac-Tel Teletrac Inc.,

Drop Dead Co. v. S.C. Johnson & Son, Inc.,

Hangingout, Inc. v. Google, Inc.,

Hydro–Dynamics, Inc. v. George Putnam & Co.,

Jones v. Royal Admin. Servs., Inc.,

Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,

New West Corp. v. NYM Co. of Calif., Inc.,

Rearden LLC v. Rearden Commerce, Inc.,

Vantone Grp. Ltd. Liab. Co . v. Yangpu NGT Indus. Co.,

Versatop Support Sys., LLC, v. Georgia Expo, Inc.,

15 U.S.C. § 1127 (2015) ..................................................................................... 3, 7

Fed. R. Civ. P. 56.................................................................................................... 5

Federal Registration, Intell. Prop. L. Bus. Law. § 9:21 (2018-2019

to shield itself and its product from predatory practices.

In April, 2016, Social Technologies, LLC (“Social Tech”), a Georgia-based

with a messaging mobile application and has received a registered trademark

by the PTO on September 18, 2018 (Reg. No. 5,566,242).

After an unsuccessful attempt to purchase the MEMOJI mark from Social

judgment on December 17, 2019, rests on 28 U.S.C. § 1291.

purposes of this chapter, a mark shall be deemed to be in use in commerce—

(1) on goods when—

(A) it is placed in any manner on the goods or their containers or the

displays associated therewith or on the tags or labels affixed

thereto, or if the nature of the goods makes such placement

impracticable, then on documents associated with the goods or

their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or advertising of

rendering the services is engaged in commerce in connection with the services.”

15 U.S.C. § 1127 (2015).

STATEMENT OF THE CASE

not interested in selling them.

in the Google Play store.

Nevertheless, Apple promoted, and on September 17, 2018, released to the

(Reg. No. 5,566,242).

unauthorized use of the name and confirmation of rights to the mark.

B. District Court Proceedings