This Article is submitted by –
- Shrija Verma
Introduction
The Oxford Dictionary defines an Emoji as ‘A small digital image used to express an idea or emotion in emails, on the internet, on social media, etc [1]. 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.
History
Emojis were invented in Japan in 1999 by Shigetaka Kurita for mobile phones. She worked as a team member of DoCoMo’S I-mode[2]. Kurita wanted to design an attractive interface to convey information in a simple, succinct way: for example, an icon to show the weather forecast rather than spelling out “cloudy.” In the beginning, the hearts and symbols used on Japanese pagers and weather forecasts respectively inspired her and she started to design emojis. Emoji is a Japanese word . The name “emoji” comes from the Japanese phrase “e” (絵) and “moji” (文字), which translates to “picture character.” Shigetaka Kurita designed the first emoji which was 12 by 12 pixels and inspired by the manga art and kanji characters in Japanese. The World Emoji day is celebrated on 17 July.
Emoji and Emoticon
Ukwuachu v. The State of Texas[3], stated the difference between an emojis and an emoticon. Emoticons are a mix of typed keyboard characters such as 😉 🙁 :D. Whereas Emojis on the other hand are images. Thus, a smiley that contains a character (punctuation, number or letters) that can be found on a keyboard, is an emoticon. If it is a cartoon figure, free from punctuation, numbers, and letters. Then it is an emoji.
The purpose of Emojis’ is not only to present the writer’s emotion but also to help smooth out interpersonal relationships and to convey features such as irony. In recent times, the world is preferring conversation on Mobile Apps such as WhatsApp and Facebook Messenger over a voice call. Despite their ordinary use, emoji do come with their set of complex legal questions attached to them. The legal issues concerning emojis have made them vulnerable to prohibitions on its unrestricted usage.
Categorization
Various companies have their own set of emoji, however no one owns the Intellectual Property Right over the word emoji itself. Emojis can be categorized into two parts:
- Unicode Emoji; and
- Proprietary Emojis.
The Unicode Consortium has assigned a short description accompanied by a unique number and a black-and-white shape outline to nearly 2,000 emojis. This standard enables the emojis to be recognized across various platforms. For a sender to send an emoji symbol that recipients on other platforms can recognize, both the sender and recipient’s platforms are required to adopt a Unicode-defined emoji [4].
On the other hand, Platforms can also implement emojis that work only on their platforms and are known as “proprietary emojis” or stickers. For example, the twitter hashtag triggered emojis being recognized as a separate band. Even when proprietary emojis have similar designs to Unicode-defined emojis, they will not share the Unicode-defined numerical value for those emojis [5] Examples of “branded emojis” include Twitter hashtag-triggered emojis (such as NFL emoji hashtags for game day or that Kim Kardashian has her own celebrity set of emoji called “Kimoji”[6]. Accordingly, when a proprietary emoji is sent outside the platform, it typically appears in the form of a blank square indicating that the recipient platform has not recognized the character. [7]
House style are not types of emojis’ but a standard design which is applied to a set of emojis. This is done on particular platforms which helps them distinguish their emoji from others. For example, Creating all emojis in color red instead of the known yellow colour, or the “blob form” of emojis’ by Google.[8]
Considerations
- Copyright
Although on the face of it, emojis may appear to be copyrightable because they are a form of graphical image, yet there exist certain hindrance in obtaining copyright for these graphical representations:-
1. Emojis may not constitute a work of authorship as it is difficult to prove creativity in its designing irrespective of the variations which different platforms come up with.
2. Expressions, not ideas are protected under copyright law. As far as emojis are concerned, the grey area of merger doctrine comes into picture. When an idea can be expressed only in a limited number of ways, then in that case copyright protection cannot be granted. For Example a lot of platforms use the color yellow for ‘smiley faces’.
- Trademark
For any mark to be recognised under the Trademark Law, the mark shall be distinguishable, non – descriptive and even not identical or similar to any of the pre existing trademarks.[9]. A possibility may arise that more than one person is holding trademark rights in the same emoji for different classes of goods. However, communication based platforms are least likely to obtain trademark rights in an emoji because they cannot prove the “use in commerce” requirement for Trademark. This is because the emojis are being used descriptively and [10].
Despair Inc was the first to get the Trademark protection of emojis. Here, they trademarked and protected their emoticons ‘:-(’ in the USA. Similarly, The Smiley Co. owns copyright as well as trademark over the ‘classic smiley’ in over 100 countries.[11]
In 2019, Nirvana, a clothing brand, sued Marc Jacobs, for infringing their trademark. Jacob had used a similar looking emoji on their clothing line just by replacing the ‘X’ of the smiley face’s eyes with their initials M and J over each eye. The Court pronounced the judgement in favour of Nirvana granting protection extended to both copyright and trademark,due to its distinctive creation and details[12]. Producers or marketing firms therefore with an intent to use emojis for branding their product can satisfy the “use in commerce” requirement easily and therefore trademark protection can be obtained by them without many hindrances.[13]
- Patent
There are certain technologies that revolve around creation, depiction or translation of emojis which have patents attributed to them[14]. Apple also owns certain patents in the USA related to emoji titled “Portable touch screen device, method, and graphical user interface for using emoji characters”[15] Moreover, there are similar other examples which portray that emoji itself do not qualify for patents, but the technology around it sure does.
- Design:
The Design law provides protection to the ‘aesthetic attribute, which does not provide function, to an item created industrially’, or through industrial methods.[16] [17]. In the USA a design patent (similar to the design law in India) was granted to a company for a winky-face over a floatation apparatus. [18]. The emojis in question here are platform oriented, whose specific function is to cater to ease of communication, therefore, it would not qualify for protection under the same.
- Publicity rights:
Proprietary emojis can portray individual faces and other attributions uniquely associated with a particular person. Bitmojis is one of such kinds which allows people to create emojis of themselves. Any emoji depiction of any individual requires consent from the person so depicted. Such a consent is certainly required if the emoji is to be used as a brand on marketplace goods or services and put in public domain[19].
Conclusion
While regulations for protecting emojis have been developed, it is not yet a global phenomenon. With the growth in technology, the companies will soon start capitalizing on these graphical forms of human expressions. Nevertheless, the contemporary business world makes Intellectual Property securitisation a necessary evil. Emojis and graphical images are now assets for the developers. Hence, emojis which qualify as an original work of creativity should be granted Intellectual Property Rights protection so that rightful owners of these are not denied the benefits that arise out of their use. Inasmuch as the linguistic role of emojis is parallel to words in communicative sentences, Intellectual Property for emojis imposes a substantial tax on standard human communication[20]. For such reasons, the institutions that regulate Intellectual Property need to be circumspect in determining the scope of Intellectual Property protection for emojis.
Endnotes
[1]Oxford Learners Dictionaries, Emoji https://www.oxfordlearnersdictionaries.com/definition/english/emoji
[2]Arielle Pardes, Emoji: The Complete History, WIRED (Jan 02, 2018, 09.23AM) https://www.wired.com/story/guide-emoji/
[3] Ukwuachu v. The State of Texas (2018 WL 2711167)
[4] Emojis and intellectual property law, WIPO Magazine, June 2018
https://www.wipo.int/wipo_magazine/en/2018/03/article_0006.html
[5] India: Intellectual Property Rights Over Emojis: Transforming Expressions Into Assets, Mondaq, 04 July 2018
[6] Sally French, Kim Kardashian’s ‘Kimoji’ app already No. 1 on its first day in the App Store, The Margin, Market Watch (Dec. 22, 2015, 03:50 p.m. ET) https://www.marketwatch.com/story/kim-kardashians-kimoji-app-already-no-1-on-its-first-day-in-the-app-store-2015-12-22.
[7] supra 4
[8] Id
[9] Introduction to trademark law and practice, WIPO, 1993
https://www.wipo.int/edocs/pubdocs/en/wipo_pub_653.pdf
[10] Supra 5
[11] Robert Reading, Emoji TMs: an emotional journey, WIPR, 28-10-2019
https://www.worldipreview.com/contributed-article/emojis-as-trademarks-are-they-or
[12]Case No. LA CV18-10743 JAK (SKx) Date November 8, 2019, https://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?article=3081&context=historical
[13]Marc Jacobs Says Nirvana Has Failed to Make its Copyright, Trademark Case in Summary Judgment Filing, November 5, 2020 – By TFL https://www.thefashionlaw.com/marc-jacobs-says-nirvana-has-failed-to-make-its-copyright-trademark-case-in-summary-judgment-filing/
[14]WordLogic Corporation et al v. Fleksy, Inc., JUSTIA,
https://docs.justia.com/cases/federal/district-courts/illinois/ilndce/1:2016cv11714/335033/30
[15] Kalyan Banerjee & Mitchell Taylor, The rise of emoji, IP Watchdog, March 26, 2016 https://www.ipwatchdog.com/2016/03/26/the-rise-of-emoji/id=67261/
[16]Industrial design, FAQ, WIPO https://www.wipo.int/designs/en/faq_industrialdesigns.html
[17]Section 2(d), Design Act 2000, No. 16 of 2000.
[18] WIPO Magazine, June 2018
https://www.wipo.int/export/sites/www/wipo_magazine/en/pdf/2018/wipo_pub_121_2018_03.pdf
[19] supra 8
[20] Id
