What exactly is Free Kick Master? A new graduate degree focusing on athletic theory? A new martial arts video game that channels the Jackie Chan classic, The Legend of Drunken Master? While both of those are reasonable guesses, Free Kick Master is actually a company that runs a skill-based competition that features the world's best soccer free kickers shooting against the world's best goalkeepers to declare the "Free Kick Master" and "Golden Goalkeeper," respectively. This past February, Amazon, Apple, Google and Samsung successfully tackled a trademark infringement suit brought by Free Kick Master LLC ("Free Kick Master") based on the offering of third-party apps that allegedly infringed the plaintiff's mark. (Free Kick Master LLC, v. Apple Inc, 2016 WL 777916 (N.D Cal. Feb. 29, 2016)).
So how does a soccer skills challenge end up toe-to-toe with some of the biggest names in mobile? We are very glad you asked.
Free Kick Master owns the registered "Free Kick Master" mark, which is intended for use in a variety of settings including, television shows, film production, organizing sporting events and computer games and applications. Amazon, Apple and Google all offer downloads of apps through their app stores, and although Samsung does not have its own app store, Samsung permits third party applications to run on its devices, and affords certain online services to app developers. Free Kick Master alleged that the defendants' use, sale, distribution, and/or promotion of the unrelated Free Kick Master apps infringed its trademarks.
The case, originally filed in Ohio, was booted to a California forum, where the plaintiff then filed an amended complaint. The second amended complaint alleged six causes of action, including multiple trademark infringement claims under the Lanham Act, requests for injunctive relief, as well as trademark-related claims under California state law. In the opening match, the court gave Free Kick Master's direct infringement claims the red card, dismissing them because no facts showed that Amazon or Google, as app store operators, or Samsung, as device maker, "used" the mark in displaying apps created by third-party developers or that the "use" created a likelihood of confusion (See Free Kick Master LLC v. Apple Inc., 2015 WL 6123058 (N.D. Cal. Oct. 19, 2015)). Free Kick Master initially got a friendly call from the referee when the court stated that despite not pleading it expressly, Free Kick Master's claim was really one of contributory infringement. However, the court swatted away the contributory claims too. It concluded that Amazon, Google and Samsung did not intentionally induce the third-party developers to infringe plaintiff's mark, or supply a product or service to individuals with knowledge that the third-party developers' apps/games were infringing plaintiff's mark.
Barely avoiding another red card, Free Kick Master persuaded the judge to allow it to file a third amended complaint, purportedly to include evidence that company representatives had previously attempted to contact the defendants to inform them about the allegedly infringing apps (but had received no affirmative reply or assistance).
In the February 2016 rematch, Free Kick Master was equally unsuccessful, as the court finally deemed time had expired and dismissed the action, with prejudice. Among other reasons, the court found the claims to be untimely based on the doctrine of laches. The third amended complaint stated that Free Kick Master knew of the alleged infringement before March 2011, which was more than four years prior to the filing of the original complaint – at least two years past the applicable statute of limitations period. The defendants also satisfied the other requisite elements for a successful laches defense, namely that the delay was unreasonable and that the delay was prejudicial because the passage of time made uncovering evidence of any notice from plaintiff more difficult.
Victory was not achieved merely on a technicality, however, as the court also ruled on the merits of the trademark claims, reiterating that the plaintiffs failed to show that Apple, Amazon and Google intentionally induced third party app developers to infringe on Free Kick Master's trademarks, or that they had the requisite knowledge of the infringement. Indeed, the court found that plaintiff had failed to submit sufficient documentation that its representatives telephoned the defendants about the infringing apps or that the defendants ignored the plaintiff's alleged calls or had actual knowledge of the existence of potentially infringing apps in their stores. Perhaps a more effective way to gain the defendants' attention would have been to blow a vuvuzela outside corporate headquarters? Moreover, with regard to claims against Samsung, the court found no evidence that any of the purportedly infringing apps ever used Samsung's developers tools or that Samsung had "directly monitored" the app developer's activities.
Despite the extra time granted by the court to amend the complaint, Free Kick Master failed to get a shot on goal against the "Golden Goalkeeper" of legal teams representing the Real Madrid-like giants of mobile, companies who, at least in this case, were able to leave the pitch with a resounding win in front of their home crowd in California.