Sexy but too similar? App developers “Bang-ed” up over trade mark dispute

What happens when you take three College aged guys, a few hours of spare time, Red Bull, vodka, and a smartphone? Why, a new “casual sex matchmaking app” called “Bang With Friends”!   Unfortunately for our anonymous trio (yes, despite the “honesty” of the app they refuse to reveal their identities) the hangover may last a while.  In late July 2013, Zynga, makers of apps like “Words With Friends” and the owners of the registered trade mark “WITH FRIENDS”, filed a complaint in the U.S. District Court claiming “Bang With Friends” are “free riding on recognized and valuable intellectual property rights”.

Bang With Friends” (BWF) is an app which allows you to “rate” your Facebook friends and, if they think you look pretty spunky in your profile pic too, “hook up”.  The Daily Beast helps us understand this new dating experience [Ed: For those who want to…] by explaining:

  • a few ‘fun facts’ such as the nature of the creative process for our anonymous trio;
  • the occasional negative review sparked by the app’s email contact  [email protected]  (ie “This app was created by a 7th grader”);
  • a description of how the app’s icons seem to favour a ‘blokes locker room’ style;
  • some teething issues such as the unfortunate absence of any method of screening, say, close family members, from selecting each other; and
  • the double standard of one of the creators who is happy for the world to use this app (and presumably make him money), just so long as his little sister is blocked from doing so.

BWF appears to be a take-off, leveraging from the “WITH FRIENDS” brand to gain notoriety.  The question preoccupying us is: what happens when a take-off is in really bad taste?  Does the bad taste nature of the product ultimately serve to protect its creators from legal liability, because the prospect of confusion amongst consumers is likely to be non-existent?

In trade mark law, such considerations are of marginal relevance, which is one reason to go to the effort of registering a trade mark rather than relying on common law rights.  In trade mark law, only limited context may be considered when testing infringement.  The investigation is into whether the offending words are substantially identical or deceptively similar to the original registered mark.  This means the primary investigation will be whether the use of “WITH FRIENDS” is sufficient to infringe the registered mark, or whether introducing the word “BANG” is sufficient to negate any issue.

Zynga’s “WITH FRIENDS” trade mark is classed under the category of providing an online portal for, and information about, games and applications via the Internet, which potentially covers a broad range of goods and services. There are distinct similarities between Zynga’s “WITH FRIENDS” brand and “Bang With Friends”- they’re both portals for Internet applications, and they do have similar names.

Zynga’s claim against BWF seems to focus on the similarity with its “X With Friends” family of trade marks. It will be interesting to see whether the U.S. Court takes into consideration the entirety of the phrase “Bang With Friends”, or chooses to consider the words “Bang” and “With Friends” separately to determine whether there has been any infringement. “Bang” for example, is quite distinctive, whereas the words “with friends”, in ordinary use, could be very generic. It may be that it is only when the words are used as a phrase, with a distinct meaning (i.e. “Chess With Friends”, “Words With Friends”) that it could be an infringement of Zynga’s trade mark.

Interestingly, the U.S. Patents and Trade Marks Office has refused multiple third party efforts to register marks with the “WITH FRIENDS” suffix due to likelihood of confusion with Zynga’s mark, which indicates a preparedness to accept that the term “WITH FRIENDS” has gained a level of distinction separate from other words or indicia used in combination with it.

Interestingly, if the case were run in Australia, BWF could seek protection under the exception in s120 of the Trade Marks Act 1995 (Cth), which provides that there will not be an infringement if the use of the trade marked material did not deceive or confuse consumers.  While parody will not avoid infringement, BWF may argue that their use of “WITH FRIENDS” is a take-off, not a rip-off, and that consumers would clearly see it as such. However, unless BWF can bring evidence that the market has not been deceived into thinking BWF has anything to do with Zynga, this argument may not be successful given:

  • BWF and Zynga share the same marketing platforms;
  • The apps in question are for (ahem!) entertainment; and
  • Zynga has an established family of well-known apps using the “WITH FRIENDS” mark.

In Australia, there are also other actions such as common law passing off, or clause 18 of our Australian Consumer Law, which allow for a more contextual investigation into whether consumers would be genuinely mistaken into thinking that BWF is somehow associated with Zynga and its “WITH FRIENDS” products.  The level of disclosure about the product and its originators before one buys the app, as well as the presence of appropriate disclaimers, will all be relevant to this analysis.

As we wait to hear BWF’s side of the story, it is worth remembering that a sensational idea in the wee hours of the morning needs also to be tested rigorously in the cold hard light of day prior to launch.  Without spending some money on a thorough legal risk assessment, the prospect of landing in hot water can only increase (and no, we’re not just thinking of a Jacuzzi built for two).