software licensing trademark
Rubik&#39;s cube image rights
<p>Some time ago I have created an Android application as a part of my bachelor's thesis. The application can advice user how to solve Rubik's Cube, and user also can play the Cube using touchscreen. During creation of application I have noticed the image rights statement at <a href="https://eu.rubiks.com/info/image-rights/" rel="nofollow noreferrer">https://eu.rubiks.com/info/image-rights/</a> and <a href="https://eu.rubiks.com/info/usage-rights-faq/" rel="nofollow noreferrer">https://eu.rubiks.com/info/usage-rights-faq/</a>.</p>

<p>I was quite confused by this information, and so I contacted Rubik's Brand Ltd. I briefly described my application and attached some screenshots to my email. Their response follows:</p>

<blockquote>
  <p>Dear Ondrej</p>
  
  <p>Rubik's has an exclusive license for Apps in place.  As
  such we cannot allow publication of any app using the Rubik's Cube. 
  We are aware that several such apps do exist and regularly take these
  down via our legal team. I realise this is disappointing for you and
  you are welcome to produce the app for personal or school project use.
  However, we cannot allow publication. I am sorry we cannot be more
  helpful this time.</p>
</blockquote>

<p>This message was really quite disappointing, but .. is that even possible? How Rubik’s Brand Ltd. can have "exclusive license for Apps in place"? <strong>Have they any right for this restriction?</strong> And how can anyone restrict image representation of basically 27 cubes arranged into shape of cube? And even in any color? Most confusing thing is that <em>Ernö Rubik himself has Google+ account where he is posting some images of Rubik's Cubes almost everyday.</em> I am really sure that creators of these images didn't asked Rubik's Brand Ltd for any permission. It is really strange for me.. <strong>It is also known that Rubik's Cube patents expired already.</strong></p>

<p><strong>Can I somehow legalize my application?</strong> (by changing name, changing colours of the Cube, avoid 3x3x3 Cube.. please advice anything)</p>

<p>They also wrote that they "are aware that several such apps do exist and regularly take these down via our legal team", but apps which I have installed one year ago are still at Google Play. I suspect that this could be just monopolistic behaviour because Rubik's Cube has its "official application" at Google Play.</p>

<p>There are some screenshots (posting this is probably also illegal!) of my application:</p>

<p><a href="https://i.stack.imgur.com/RLlQm.png" rel="nofollow noreferrer"><img src="https://i.stack.imgur.com/RLlQm.png" alt="enter image description here"></a></p>

<p>Thanks in advance!</p>

<p>Surprisingly, my opinion is that the only IP breach here is your use of "Rubik's cube" in the 2nd screenshot. This is not an in-depth answer, and certainly not legal advice, but here's an overview of the main IP considerations:</p>

<ul>
<li><p><strong>Name Trademark</strong>: This one's the most straightforward. "Rubik's Cube" is a protected trademark <a href="https://tsdr.uspto.gov/#caseNumber=73261351&amp;caseType=SERIAL_NO&amp;searchType=statusSearch" rel="nofollow noreferrer">owned</a> by Rubik's Brand Ltd. As such, absent any licensing, you may not use it in a way that would confuse consumers into believing the application is associated with Rubik's Brand Ltd.</p></li>
<li><p><strong>Shape Trademark</strong>: A shape can be trademarked, but not if that shape is a result of the product's <a href="https://en.wikipedia.org/wiki/Functionality_doctrine" rel="nofollow noreferrer">function</a>. Rubik's Brand Ltd. does indeed hold a <a href="http://tsdr.uspto.gov/#caseNumber=73358308&amp;caseType=SERIAL_NO&amp;searchType=statusSearch" rel="nofollow noreferrer">US trademark for the shape</a>. Being published on the Google Play store, you must comply with US law on the matter, but my guess is the trademark wouldn't hold in court. On the functionality basis, the shape trademark in the EU has been <a href="https://www.theguardian.com/lifeandstyle/2016/nov/10/rubiks-cube-puzzled-losing-eu-trademark-battle" rel="nofollow noreferrer">invalidated</a>. I'm not aware of this happening in the US, but as a similar US example, <a href="https://www.washingtonpost.com/archive/business/1987/09/01/lego-tyco-each-declare-victory-in-battle-of-the-bricks/0d3f7283-37d7-4687-8f3e-ec5cb14d173b/" rel="nofollow noreferrer">Lego was unable to defend a shape trademark</a> on their bricks.</p></li>
<li><p><strong>Shape Copyright</strong>: I don't have as good citations on the copyright aspect, but I imagine it's similar to the trademark situation. Copyright is for protecting expression of creative choices, not those which are driven by function. That's what patents are for, and as you noted they are expired in this case.</p></li>
<li><p><strong>Colors:</strong> I concede it's <em>possible</em> that the 6 specific colors chosen might qualify for trademark or copyright protection. However, on the trademark aspect, this might not be distinctive enough for wide protection. On the copyright aspect, this might not meet the "modicum of creativity" standard (i.e. it's way too simplistic and unoriginal to qualify). The fact 6 distinct colors are used though would be a result of function.</p></li>
</ul>
