Emojis, Licensing, and the Law

The abundance of emoji-related graphics and brands available for licensing and the strong presence of emoji-themed merchandise at retail this fall raise 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 in the U.S. do not deal with emojis specifically and the courts have not yet weighed in with interpretations or precedents. Many attorneys believe that both copyright and trademark law would offer very narrow, if any, legal protection in many cases, not just for electronic communications but also for merchandise. Protection is likely to vary from country to country as well.

In general, the closer an emoji looks to the standard face-based graphics familiar from your computer keyboard, the less legal protection there will be. The more an emoji-like design moves away from conveying language, the more likely it is to be legally protectable. Ownership rights are also clearer for emoji-related properties based on underlying trademarks, copyrights, or rights of publicity (such as those tied to Disney, Pepsi, or Kim Kardashian) or those involving emoji-like characters (e.g., Sony’s Emojimovie).

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 a licensee securing a license is to differentiate its products from the competition by associating with a legally protected property.

If a licensee does decide to secure an emoji-related license, attorneys counsel doing plenty of due diligence by posing lots of questions, asking for the trademark registration paperwork or copyright numbers, doing trademark searches, and having an IP lawyer look over the evidence. When negotiating the contract, make sure there are strong indemnifications and warranties, that the licensor will defend against any claims, and that there are termination clauses in case the mark is abandoned or ruled invalid.

In addition, licensees should make sure the royalty they are paying is fair given their perception of the value of the license. They may be securing the rights simply to get access to an already-created portfolio of emojis or to avoid being sued, rather than to reap the benefits of a unique and high-profile brand, and the payment should reflect that, experts say.

There is also an alternative to a traditional license, in the form of open-source emoji sets that could potentially be used on merchandise legally and inexpensively, depending on the specifics of the grant of rights.

Meanwhile, marketers that are planning to create their own emoji graphics or branding, in lieu of licensing, should try to create something original and differentiated from the competition, do their best to determine whether they are infringing on anyone else’s copyright or trademark rights, and realize that there is always a risk of being sued.

If you are considering licensing an emoji-related property or creating your own, click here for a longer version of this story that discusses the nuances of the legal landscape, options for licensing, and contractual safeguards in more detail, with comments from attorneys Mikhael Ann Bortz of Bortz Law; Pamela Deese of Arent Fox; Dave Koehser, Attorney at Law; Mitchell Radin of Collen IP; Susan Schlesinger of Meister Seelig & Fein; and Gene Zelek of Freeborn & Peters.

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