Rubik's cube image rights

Question

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 https://eu.rubiks.com/info/image-rights/ and https://eu.rubiks.com/info/usage-rights-faq/.

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:

Dear Ondrej

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.

This message was really quite disappointing, but .. is that even possible? How Rubik’s Brand Ltd. can have "exclusive license for Apps in place"? Have they any right for this restriction? 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 Ernö Rubik himself has Google+ account where he is posting some images of Rubik's Cubes almost everyday. 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.. It is also known that Rubik's Cube patents expired already.

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

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.

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

Thanks in advance!

Answer 1

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:

• Name Trademark: This one's the most straightforward. "Rubik's Cube" is a protected trademark owned 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.

• Shape Trademark: A shape can be trademarked, but not if that shape is a result of the product's function. Rubik's Brand Ltd. does indeed hold a US trademark for the shape. 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 invalidated. I'm not aware of this happening in the US, but as a similar US example, Lego was unable to defend a shape trademark on their bricks.

• Shape Copyright: 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.

• Colors: I concede it's possible 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.

Answer 2

Intellectual property is property!

Mr Rubik cannot come to your house, swim in your swimming pool and drink your beer without your permission; why do you think you should be able to use his property without his permission?

Types of IP

There are 4 types of intellectual property and all of them are applicable here:

Patent

This is property in the invention - the design of the cube as specified in the patent. As you say, the patent has expired so this is not a problem.

Registered Design

This is property in the design of the physical cube - this only happens if the design is registered. This is not a problem for your virtual cube.

Trade Mark

This is property in the brand and serves to identify the goods and services. Now the Rubik's cube design and name is very distinctive and well known. To avoid infringing it, you have to avoid all possibility that a reasonable person could confuse what you do with something that the trade mark owner does. Basically, given the stated purpose of you app you have zero chance of distributing it without infringing the trade mark. Trade marks last for as long as the owner offers the goods and services or if the trade mark becomes non-distinctive - this happened to Hoover and Xerox.

Copyright

This is property in the art - it lasts for a number of years (which vary by jurisdiction but 50 for the US) after the creator's death. Mr Rubik is still alive so the copyright is current. To create a derivative work, for example, a work in different colours, or with more or fewer cubes etc. you need the permission of the copyright holder. You don't have this.

Licencing

Intellectual property can be licensed (like renting physical property) or sold (like, um, selling physical property). It appears that Mr Rubik has licenced his IP to Rubik's Brand Ltd on an exclusive basis (meaning he has agreed that he wont licence it to anyone else).

Your questions

... is that even possible?

Yes.

How Rubik’s Brand Ltd. can have "exclusive license for Apps in place"?

Mr Rubik has sold them such a licence.

Have they any right for this restriction?

Yes, under both copyright and trade mark law.

And how can anyone restrict image representation of basically 27 cubes arranged into shape of cube?

They can't - but that is not what you are trying to do. Your work is clearly derived from the Rubik's cube.

And even in any color?

Yes, changing the color would be a derivative work.

Most confusing thing is that Ernö Rubik himself has Google+ account where he is posting some images of Rubik's Cubes almost everyday. I am really sure that creators of these images didn't asked Rubik's Brand Ltd for any permission.

Mr Rubik owns the copyright and the trade mark - he doesn't have to ask permission. We are not privy to the details of the licence between Mr Rubik and Rubik's Brand Ltd. Perhaps he reserved those rights to himself, perhaps there is an informal agreement between them or perhaps the fact that he is honorary life president of the company means the company is not going to sue him.

Can I somehow legalize my application?

Probably not.

... this could be just monopolistic behaviour ...

Intellectual property rights allow legal monopolistic behaviour - just like you can exercise monopolistic behaviour over your house.

Your options

1. Do as they say.

2. Publish anyway and fight them in court. Maybe you are right that they are overstating their rights, I don't think so but you can find out by finding lawyers who agree with your point of view and paying them to defend you, about $150,000 should get you started.