Emojis and intellectual property law

June 2018

By Eric Goldman, Professor of Law, Santa Clara University School of Law, California, and Gabriella E. Ziccarelli, Technology and IP attorney, Washington, DC, USA

*This article is based on a longer forthcoming paper by Prof. Goldman called Emojis and the Law.

Everyone loves emojis, and why not? They are a fun and an increasingly ubiquitous way for people to express themselves. But despite their superficial frivolity, emojis can raise potentially complex and serious legal issues, including novel and complicated questions about intellectual property (IP). This article surveys how United States IP law protects emojis, and why such protection may be problematic.

Photo: koya79 / iStock / Getty Images Plus

What are emojis?

Emojis are small icons that people include in electronic communications to express an idea or an emotion. Emojis play a variety of communicative roles: they can function as a word substitute, a word complement (like the emphasis provided by an exclamation mark), an emotional signal, and more. Although most emojis are static images, they can be animated. Emojis were preceded by emoticons – icons comprised of keyboard characters such as the “smiley,” i.e., the keyboard characters :-). Emojis are subject to a wider range of depictions than emoticons because they can be literally anything, while emoticons are limited to keyboard characters.

Emojis can be divided into two categories: Unicode-defined emojis and proprietary emojis.

Unicode-defined emojis. The Unicode Consortium establishes standards for keyboard characters and, more recently, emojis. Unicode has assigned a unique number, a black-and-white shape outline and a short description to nearly 2,000 emojis. The Unicode standards enable emojis to be recognized across platforms. If both the sender’s and recipient’s platforms adopt a Unicode-defined emoji, a sender can send an emoji symbol that recipients on other platforms can recognize.

Despite the Unicode’s veneer of standardization, the emojis seen by users are not truly standardized because each platform implements Unicode-defined emojis differently. For example, some platforms adopt “house styles,” such as Google’s “blob”-shaped outlines (instead of the more typical circular shapes) for emojis depicting faces (what we call “face emojis”). Other platforms implement Unicode-defined emojis in strange or quirky ways, such as Apple’s depiction of the Unicode-defined pistol emoji as a neon green water gun. And even where platforms try to adhere to Unicode’s definitions, the way they each implement emojis still varies. For example, platforms have placed the cheese in the burger emoji in different locations – some above the burger, others below. Thus, virtually all implementations of the Unicode-defined emojis look different from each other, at least slightly.

Proprietary emojis. Platforms can also implement emojis that work only on their platforms. We call these “proprietary emojis” (other names include “stickers”). Even when proprietary emojis have similar designs to Unicode-defined emojis, they will not share the Unicode-defined numerical value for those emojis. Accordingly, when a proprietary emoji is sent outside the platform, it typically appears as a symbol such as a blank square indicating that the recipient platform did not recognize the character.

Unicode does not adopt emojis covered by third-party intellectual property, such as trademarked logos or copyrighted designs. However, these may be produced by platforms or individuals as proprietary emojis. Examples of “branded emojis” include Twitter hashtag-triggered emojis (such as NFL emoji hashtags for game day) and celebrity emoji sets like Kim Kardashian’s “Kimoji.”

Copyright considerations

Copyright may protect individual emojis, emoji sets and “house styles.”

Individual emojis. Individual emojis, whether proprietary or platform-implemented Unicode-defined, are presumptively copyrightable as graphical images. Nevertheless, most individual emojis will not receive copyright protection for at least three reasons.

(Photo: Clint Physter / CC BY-SA 4.0).

First, some emojis are so simple that they do not have enough expression to constitute a work of authorship. Also, some emoji designs are so venerable that they are not original.

Second, emojis are subject to the merger doctrine, which eliminates copyright protection when an idea can be expressed only in a limited number of ways, and scènes à faire, which eliminates copyright protection for details that, in context, are common or expected. There are only so many ways to express certain emojis, especially because emojis’ small size makes it hard to depict many details. Also, emojis seek to communicate their ideas as universally as possible. To do so, the details of many emojis invoke standard cultural references associated with an emoji’s meaning, raising the odds that the details will be scènes à faire. Furthermore, emojis have developed some conventions, such as depicting face emojis in bright yellow, which are now likely scènes à faire.

Third, though Unicode’s IP policy is not crystal clear, Unicode likely either disclaims ownership or freely grants unrestricted usage of its emoji definitions. Platform-specific implementations of Unicode-defined emojis are based on the Unicode outlines, so most implementations should be derivative works of Unicode’s definitions. However, some platform implementations, for example, Apple’s water gun depiction of the pistol emoji, vary so significantly from Unicode’s definition that they are not derivative works. For those emojis that qualify as derivative works, the platforms can only claim copyright for their incremental changes to the Unicode outline, which might be so inconsequential that they do not qualify for separate copyright protection.

In contrast, some proprietary emojis reflect significant creative judgments, in which case they will be better positioned to obtain copyright protection. Branded emojis may also be copyrightable when the source image is itself protected by copyright.

Even if an individual emoji qualifies for copyright protection, its scope of protection may be quite narrow. For example, many courts in the United States will apply the fair use defense broadly to authorize non-identical emoji implementations, and even identical depictions could qualify as fair use. Despite the graphical depictions of emojis, courts might feel like copyright law should not reach so deeply into how humans communicate.

We believe the fact that copyright might protect individual emojis has spurred platforms to create their own version of the same emojis. Does the world really need hundreds of slightly different emoji implementations of the smiley? No, but copyright law may motivate platforms to proliferate variations nonetheless.

To reduce exposure to copyright or trademark infringement, many
platforms are creating their own version of the same emojis. To avoid
a proliferation of emojis, those responsible for regulating IP need
to be circumspect in determining the scope of IP protection for
emojis (photo: Pingebat / iStock / Getty Images Plus).

Emoji sets. Emoji sets are collections of individual emojis. The sets may qualify for compilation copyrights if they have sufficiently original selection, arrangement and coordination.

House styles. House styles represent standard design choices implemented across an emoji set, such as the Google blob shape or a uniform non-yellow color for face emojis. A house style could provide the basis of compilation copyrights in emoji sets, and applying the style to individual emojis might help make those emojis copyrightable (or qualify as a derivative work, if they are a variation of the Unicode standard). House styles also could be part of a platform’s trade dress.

Trademark considerations

But where emojis do not qualify for copyright protection, as outlined above, and when they distinguish goods and services in the marketplace, they can be protected as trademarks. In such instances, multiple parties could have coexisting trademark rights in the same emoji symbols for different classes of goods. We believe that hundreds of emojis, or emoji-like symbols, have been registered as trademarks.

However, the “use in commerce” requirement for trademark protection may prevent trademark protection for many emojis. For example, platforms typically do not make a “use in commerce” by providing free emoji sets that users can incorporate into messages. Also, where an emoji is used for its dictionary meaning (e.g., Bob’s Car seeks a trademark registration for Bob’s + a car emoji), the emoji is being used descriptively and is unlikely to qualify for trademark protection.

The possibility of trademark protection for standard and widely used emojis raises potential troubles for platforms. To reduce their trademark infringement exposure, platforms may deliberately implement emojis so that they are not substantially similar to protected trademarks – even if the platforms are not commercializing the emojis and merely providing emoji sets to their users. This effort to avoid possible trademark complications exacerbates copyright’s emoji proliferation problem.

Other IP considerations

Design patents. Emojis may be covered by design patents (industrial design rights) when they are an ornamental, nonfunctional design element of an item. For example, US patent D793,512 depicts a winky emoji on a water flotation device. However, platforms probably cannot obtain design patents for using emojis online because they serve the function of facilitating communication among users.

Utility patents. Emoji- and emoticon-related technologies are potentially patentable, and we are aware of at least four lawsuits involving such technologies. These include, for example, WordLogic v Flesky, which involves a patent that predicts words as mobile app users type and whether predicting emoticons would violate the patent.

Publicity rights. Proprietary emojis can depict individual faces and other attributes uniquely associated with a single person. For example, bitmojis allow people to create emojis of themselves. Also, some celebrities have created emoji sets containing emojis that look like them. Any emoji depictions of individuals may require consent from the depicted person. Such consent is certainly required if the emoji is to be used as a brand on marketplace goods or services.

Owning emojis

Because emojis are eligible for IP protection, we expect that IP protection and assertions for emojis will increase as their popularity grows. IP protection for emojis, however, is a mixed blessing. While some emoji owners may profit from exploiting their IP, the rest of us may find it harder to communicate effectively with each other. Acquiring IP rights over emojis implicitly encourages unnecessary and undesirable variations of emoji depictions. It is as if each publisher intentionally spelled common words differently just to avoid any risk of infringement claims. Insofar as the linguistic role of emojis is analogous to words in communicative sentences, IP for emojis imposes a substantial tax on standard human communication. For these reasons, the institutions that regulate IP – courts, government registration offices and, as necessary, legislatures – need to be circumspect in determining the scope of IP protection for emojis.

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