Emojis, Licensing, and the Law
August 29, 2016
This is an extended version of the August 29, 2016 edition of RaugustReports.
T-shirts, backpacks, socks, candy dispensers, stickers, drinkware, and more are increasingly embellished with emoji-related themes and/or identified with emoji-related branding.
Such items may feature proprietary (or allegedly proprietary) imagery or branding licensed from a variety of companies: trademark licensors that have created sets of characters (e.g., The Emoji Company or the Smiley Company), computer and mobile phone marketers (Apple, Google, Twitter, Snapchat), corporations (Pepsi, Disney), personalities (Kim Kardashian, Michael Phelps), or entertainment studios (Sony, Saban). Other items may feature graphics or branding that the marketer created in-house, rather than seeking rights from one of these third parties.
The abundance of emoji-related graphics and branding raises some questions for the licensing community. For example: What are my options if I want to create products featuring emoji-related designs and/or brands? Are emojis legally protectable in the first place? Do I need a license? Will I infringe on anyone if I create my own emoji designs?
Unfortunately, there are no clear answers yet. Trademark and copyright laws do not deal with emojis specifically and the courts have not yet weighed in with interpretations or precedents. That said, there are a number of issues that licensors and licensees should consider before signing a license or creating their own emoji-related properties.
Emojis were developed in Japan in the late 1990s as shorthand for conveying thoughts, emotions, or words via texting and online messaging. They were essentially graphic versions of the emoticons (made with a combination of punctuation symbols) that preceded them.
The emojis that are familiar from your computer or smartphone screen are typically registered with the Unicode Consortium, a group that oversees open-source computer programming standards for character sets, and can be used by any company for digital communications. Companies that create a set of emojis based on this code come up with their own, specific graphic look (e.g., their own version of the winky face). Apple, for one, has registered a copyright for the look of its Unicode-based emoji set.
Many attorneys believe that such a copyright would offer very narrow, if any, legal protection. The main reason is that “useful objects” with an intrinsic utilitarian function are not copyrightable, and it could be argued that emojis fall into this category, since their purpose is to convey language or emotion. Several observers believe the closest analogy for an emoji set is a typeface, which the U.S. Copyright Office has deemed non-copyrightable. (The computer code to create a scalable font can be copyrighted, as can some creative elements and ornamentation added to a standard typeface.)
“There are no court cases declaring emojis uncopyrightable,” says Pamela Deese, partner at Arent Fox. “Based on the law, or the lack thereof, you can’t say for sure that it couldn’t be copyrighted or that you wouldn’t have a defense. But what makes emojis artistic is also what makes them useful.” Thus the utilitarian argument that weighs against copyright protection.
While experts tend to agree that copyright protection for emojis used in digital communication is narrow or nonexistent, the situation is murkier when it comes to using an original emoji-like design as a graphic element on merchandise. “If you somehow take the language out and put it on another object, maybe,” says Gene Zelek, partner at Freeborn & Peters.
That said, an emoji can convey language or emotion even on a t-shirt or a pillow. “It would be analogous to writing happy on a shirt, which wouldn’t be copyrightable on its own, unless additional creative elements were added,” says David W. Koehser, Attorney at Law. “It goes back to it being a building block of language.”
He notes that, given their ubiquity and their association with multiple creators, emojis could also be considered “familiar symbols and designs,” which would be another factor making them ineligible for copyright protection.
Some property owners have sought trademark protection for the use of emoji-related brands, in addition to copyright protection for the graphics. The Emoji Company of Germany says it has broad trademark protection in more than 20 classes of products and services across many territories, including the U.S., and a library of more than 3,000 icons.
But licensors seeking trademark protection for emojis in the U.S. face many challenges, experts believe. A trademark must be distinctive and clearly identify the source or origin of a product or service. The confusion in the marketplace when it comes to emojis, as well as their descriptive or generic nature and the fact that they are used to convey thoughts and emotions, may all get in the way of trademark protection.
Some of the specific arguments against trademark protection include:
- An emoji may be viewed as a universal symbol, defined as “an icon or image that is commonly used in an informational manner and that conveys a widely recognized or understood meaning.” (A peace symbol would be an example.) Generally, this sort of common symbol or expression is viewed as simply imparting information or serving as ornamentation, rather than acting as an indicator of the source of the goods or services. “If Target has a shelf of emoji backpacks, and the emoji on the Target backpacks looks similar to the emoji on the products marketed by another emoji holder, you could argue that the emojis are merely decorative features, and that neither emoji is performing the function of a trademark, which is to identify the source or origin of the goods,” Koehser says.
- Trademarks do not protect functional attributes, and emojis, as symbols conveying language or emotion, could be considered functional. Therefore, it might be difficult to trademark an emoji-related brand or logo for products that involve communication or language. The jury is still out on whether that would also preclude establishing a trademark in a class outside of that function, such as shoes or bedding: Does the emoji branding still serve the function of language in that case?
- Trademarks cannot be “merely descriptive” of the product being branded. The term emoji is widely defined as describing a graphic or pictogram used to express an idea or emotion, especially through electronic communications, which would likely preclude its being used as a trademark in that category. Some would argue that its descriptive, or generic, nature would extend beyond that to at least some other goods or services as well.
One factor supporting the use of emojis as trademarked brands is that several emoticons have been registered, for products such as alcohol and greeting cards. That may set a precedent when it comes to protecting emojis, depending on the specifics of the usage.
Differentiation Is Key
The range of emojis available has broadened over time to include all kinds of imagery outside of emotion-conveying faces, such as whales, fruit, palm trees, and beyond. And the more an emoji design moves away from conveying language, the more likely it is to be legally protectable. “Something a little more unique and creative would have a better layer of copyright protection than a more generic winky face,” says Mikhael Ann Bortz, founder and managing partner at Bortz Law.
Susan Schlesinger, partner at Meister Seelig & Fein, agrees, noting that the closer an emoji is to the standard Unicode version (which includes faces as well as other symbols), the more difficult it is to argue that the design is legally protectable. “You could try to come up with something protectable based on those, but it would be tricky,” she says. “There might be something more protectable when you get away from the smiley or frowny face areas.”
A growing number of emojis are based on underlying trademarks, copyrights, or rights of publicity, such as those tied to Olympic athletes, Kim Kardashian, Pepsi, or Disney. Some, such as the Kimojis and the Pepsimojis, are already being licensed for ranges of merchandise. Their underlying rights, as well as their distinctiveness, likely makes them more protectable than a more standard emoji would be.
Characters based on emojis, as in The Emojimovie, are also a safer bet. “Characters can be protected under both copyright and trademark,” says Zelek. “You have to get beyond the conveyance of the emotion that is emojis’ core function. If they’re just created as characters, not for communication, there could be some protection there.”
To License, or Not To License
Given the unsettled legal landscape when it comes to what is and is not protectable under copyright and trademark law, licensees’ decision about whether to work with a licensor of emoji-related brands and/or designs can be difficult. After all, one of the reasons for securing a license is to differentiate your products from the competition by associating with a legally protected property.
“It’s a stretch to say that any one company will have legitimate ownership over an emoji. It’s like saying they own the shape of the letter A,” Bortz says. “They may have a bank of artwork so licensees don’t have to create their own, which could be a benefit, but can they stop someone else from making something similar? Probably not. I would counsel caution. ”
“The first question for any licensee,” notes Deese, “is whether the rights they’re promising can be protected. You wouldn’t want to be paying for a pig in a poke. If the object of your desire in a licensing agreement can’t be protected, you don’t necessarily want to be paying a royalty on it.”
A key value of a license in this case may simply be to avoid litigation. The Smiley Company, which says it legally protects its original logo and owns the rights to over 3,000 Smiley graphics, took legal action 138 times in 2015 alone, resulting in the destruction of hundreds of thousands of products, according to the company.
“In some ways, what you’re buying is a license not to be sued. It might be the path of least resistance, and that may be the value at the end of the day,” says Zelek. “I’m not sure you’re getting much else with a license. If you like the emojis and don’t want to create new artwork yourself, if you’re willing to pay the royalty, and if you understand that the rights are narrow, if protected at all, then go ahead.”
IP attorneys stress the importance of prospective licensees doing their due diligence and negotiating a fair contract before signing any license, but particularly an emoji-related one:
- Determine whether the rights the licensor is promising are or can be protected by posing lots of questions, asking for the trademark registration paperwork or copyright number, doing trademark searches, and having an IP lawyer look over the evidence. Remember that the law varies by jurisdiction, and don’t be swayed by the number of licensees already signed up, since they may not have vetted the property adequately.
- Make sure there are adequate indemnifications and warranties in the contract to protect you against claims of infringement. Also seek assurances that if someone makes a claim against the licensor (or you, as the licensee), that the licensor is responsible for defending (or is required to defend) the property, as well as paying for the lawyers and the judgment. The contract can also note that the royalty will be waived in the case of a claim.
- Negotiate a royalty rate (or flat fee) and minimum guarantees you believe are equitable given the value you are getting from the license, whether that value is an exclusive, rights-protected brand, a portfolio of already-created artwork, or simply a hedge against being sued.
- Include a termination provision in case the licensor abandons the trademark (that is, it stops using the word or graphic as a trademark for a period of time, thus losing its trademark rights). The licensor should also be barred from alleging infringement if the former licensee continues to use the abandoned word or graphic on its products.
“Realize that this is a risky new area, since there’s not much precedent,” says Deese “Examine the rights the owners believe they have and really dig in.”
Creative Commons and Open-Source Options
Licensees that are just looking for emoji imagery for use on products, without too much concern for marketing, exclusivity, or other benefits typically associated with licensing, may want to consider using emojis that are protected under a Creative Commons or other form of open-source license. Open-source licenses are offered to foster legal sharing of images or other assets, which can often be used free of charge, with proper attribution.
Examples of open-source emoji sets include Twitter’s Tweemojis, Emoji One, Emojidex, and Phantom, among others.
The intent is typically to give open access for digital use, but these character sets may also be appropriate for use on consumer products, although their availability for that purpose is not guaranteed under the license. “Even if it’s free, there may be some restrictions,” cautions Mitchell Radin, partner at Collen IP. “Look at the licensing grant and make sure there are no caveats.” Many times, the grant of rights will exclude commercial uses of the emojis in general, for example, or prohibit their use on consumer products specifically.
If there are merchandise exclusions, a prospective licensee could still approach the creator of the open-source emoji set to see if a separate merchandise licensing agreement is a possibility. Licensees can also try to approach any keyboard emoji licensor directly, open-source or not—whether a big player such as Apple or a smaller developer—to secure the rights they desire. Remember that even when an emoji’s computer code falls under the purview of Unicode, meaning it can be freely shared, the look of the emoji is a separate attribute and is owned by someone.
Creating Your Own Emojis
If copyright and/or trademark protection is potentially non-existent or thin, especially for the more commonly recognized face-based character sets—and other widely known emojis, such as the “pile of poo” or the “thumbs up”—does that mean licensees or licensors are free to create their own emojis and sell or license merchandise featuring these images?
“You probably could create your own, if it’s distinctive, without a license,” Zelek says. Noting, however, that it would be difficult to ensure you are filling a unique niche, when there are so many emoji-themed designs already on the market, he adds, “There is always the risk of being sued, which is an especially important consideration for the little guy.”
If you design your own emoji and plan to use it as a brand, “you need to at least do an initial design trademark search to see if anyone else is using it in the marketplace,” Schlesinger counsels.
“If it’s a visual work that would be protected under copyright, you don’t have to worry about confusion in the marketplace, as you do with a trademark,” says Radin. “But you still can’t trample on someone else’s rights.”
Once you have managed to create a new emoji design or brand that you believe does not infringe on anyone else, will it then be legally protectable? Perhaps, especially if there is some distance between the look of your emoji and that of familiar keyboard emojis.
“It comes down to a risk-evaluation question,” says Koehser. “Even if you’re in the right, you might have a battle on your hands that you don’t want. You have to consider a claim as a possible scenario.”
In a few years there might be more clarity in terms of what can and cannot be protected, which would simplify the decision process for marketers who want to attach their products or services to emojis (assuming emojis are still an in-demand theme for merchandise at that time). “This is still an evolving area,” says Schlesinger. “It’s a situation where we’ll start to see some more litigation or more proceedings in the Trademark Office.”
Note: This article is meant to outline some of the basic legal issues related to emoji licensing, to inform readers as they consider the pros and cons of securing a license or creating their own properties. It should not be construed as legal advice.