The Emoji Effect: Small Icon Big Impact

By Ananyaa Banerjee and Shivani

Introduction

“Hi, Gina Linetti, the human form of the 100 emoji.”[1]

“The English Language cannot fully capture the depth and complexity of my thoughts so I’m incorporating emoji into my speech to better express myself, Winky-face.”[2]

Humans have always found interesting ways to communicate. While we evolve, we have journeyed from hieroglyphs to emojis. Life does come to a full circle & clearly a picture speaks a thousand words.

Origin

The term emoji is etymologically derived from two Japanese characters “ e (絵, ‘picture’) + moji (文字, ‘character’)”, which is synonymous to the English word “emotion”. Evolution of the emojis is attributed to various creations ranging from Yakumomo typeface, PA-8500 device, NEC PI-ET1 PDA, 1997 SoftBank emoji set to NTT Docomo Inc. emoji set etc. Emojis became a global trend in 1999, when Shigetaka Kurita, a Japanese artist designed a series of symbols on a 12*12 pixel grid inspired by Manga and public signs.

Over the period of time, emojis have rapidly evolved. They are now an integral part of expressive personal and professional communication. One such example is the road signs designed by Margaret Calvert, a typographer, which became a model of modern road signage, replicated worldwide. The pictograms such as ,, etc., served as a problem solving tool, providing clarity, communication and safety for the general public.

The aforesaid designs are so simple that one can understand their meaning just from the shape, colour and picture of the sign, without any words. Such designs have effectively blended into the modern life as such that we almost fail to appreciate their presence yet criticize their absence. Likewise, emojis are better at conveying emotions which are inherently intertwined with cultural norms. They are now in messages, videos and advertisements & also on products, food etc. Below, you will find some images showcasing widespread use of licensed emojis:

Realm of Emojis in the Modern World

Li Binglu, a Chinese digital artist, who secured the second-runner up position in the World Intellectual Property Day 2022 Youth Video Competition took inspiration from personal experience, pop culture, humor and emotions to create bespoke GIF emojis to work with his fellow designers.[3] Binglu’s win highlighted the significance of emojis language in revolutionizing the communication in the digital age. The GIF created by Li Binglu is copied below for reference:

Emojis are widely used across social media platforms and have become more inclusive over time. Emojis have been used by companies as a marketing mechanism to boost engagement and to visually represent their brand and products and some are now also sponsored. Some examples are mentioned below:

Katy Perry, an American pop singer gained fame for releasing a music video featuring vibrant emoticons for her song “Roar”, captivating fans with its creativity. The music video comprised an iPhone text message screen, with a series of emoji-laden “text messages” spelling out the lyrics to the song.

Types of Emojis

The Unicode Consortium, a non-profit organization responsible for recognizing, codifying and digitizing emojis, have codified more than 3.6K emojis. All of these emojis are a sequence of one or more Unicode characters.

1. Unicode Emojis
   Emojis that are standardized using a unique code and are popularly known as ‘Unicode-defined emojis’. However, implementation of these Unicode emojis varies since each platform releases their own variation of the Unicode defined emojis. One example is the placement of cheese in the hamburger emoji which was approved by the Unicode Consortium in 2010, that sparked a fevered a debate across the internet. The picture below shows that in all burger emojis the cheese is placed on the top of burger patty except the emoji implemented by Google, where the cheese is placed underneath the burger patty. This shows how implementation of Unicode- defined emojis differs on different platform.
   
2. Proprietary EmojisThere are another set of emojis, famously known as ‘Proprietary emojis’, which are developed by the platforms on their own. These emojis do not work outside the said platform. The design of the proprietary emojis may slightly match with the Unicode- defined emojis. However, they do not share the same numeric value. There are famous celebrities who have their own sets of emojis like Kim Kardashian has Kimoji, Justin Bieber has Justmoji.
   

   ‘Kimoji’, the app allowed users to access over 500 themed emojis. While the ‘Justmoji’ app provided cutesy stickers, avatars and GIFS of Beiber’s things. According to Forbes, Kim Kardashian’s emoji keyboard reached over 5 million downloads in 2015.

Emojis and Intellectual Property

As highlighted above, emojis has become a subject of Intellectual Property. The emojis can possibly be protected as an Intellectual Property under the domain of Copyright law and Trade Marks law.

Copyright

Copyright is granted for original works of authorship and artistic expressions. The emojis can be protected under the Copyright regime, however, there are certain factors that require consideration. Unicode- defined emojis at their essence are simple numeric values, hence, it is unlikely that curating these emojis would constitute authorship. Moreover, the idea-expression dichotomy stipulates that manifestation of idea is to be protected rather than the idea itself. Therefore, it is the expression that is the subject matter of the copyright protection.

In the case of emojis, it is difficult to separate the “idea” from “expression”. Since, emojis are conceived as human expressions, their scope is limited in establishing the features separate from the original idea. The nature of Unicode-defined emojis and their derivatives developed by respective platforms permits the respective platforms to claim authorship only over the variation introduced. This infers that if any platform implementation significantly varies from Unicode’s-defined emojis, they will not be considered as derivative works and the same can be understood with the example of Apple’s water gun depiction of the pistol emoji, which carries incremental changes to the Unicode outline. In this case, Apple does not hold a copyright over the pistol emoji, now “water pistol” emoji since Unicode defines the basic concept and name of the emoji. However, Apple does have a copyright over its specific visual gun design of the water gun emoji. The aforesaid factors highlight that acquiring copyright over Unicode-defined emojis are difficult. However, derivatives of Unicode-defined emojis developed by a platform may be eligible for copyright protection. Unicode and the platform developing the emoji both may be deemed to be copyright owners. For example- a heart emoji is not protected under the copyright regime unless there is unique expression involved which attributes to its originality.

The chances of proprietary emojis being protected as copyrighted work are relatively high since, the proprietary emojis are original and a result of creative design, skill, labor and aesthetic sense. However, there are also certain factors that require consideration in respect of the proprietary emojis. Therefore, it is wise for the platforms or individuals to proliferate the variations of their emojis and prepare a collection or Emoji Set. The Emoji set may qualify for a compilation copyright if originally selected, creatively arranged and coordinated. For example, Justin Beiber has come up with his Justmoji inspired merchandise.

 

Trade Marks

It is well known that marks capable of distinguishing the goods and services of one proprietor from that of another can be protected under the Trade Marks law. The foundation of trade mark regime lays down that if a mark qualifies the criteria of being distinctive, non-generic and non-descriptive, it is eligible to be granted statutory protection. An emoji may qualify as a trade mark if it is capable of distinguishing the goods and services in the market, is not used for a dictionary meaning and is not generic. This can be understood with the help of a fictitious example of a burger chain called Adam’s Burger operating in India. If the burger chain seeks to register the following trade mark in class 30 and 43:

The aforesaid trade mark comprising the emoji may be registered but with no right over the hamburger emoji as the said emoji is used in replacement of a dictionary word ‘burger’ and describes the nature of the goods and services provided thereunder. Further, the hamburger emoji is a widely recognized emoji therefore, the same is generic and resultantly would not serve as a source identifier. Therefore, for an emoji to be registered as a trade mark, it is important that rather than using any generic version available on keyboards, the proprietor is using a trade mark having significant modifications in the emoji to reflect the distinctive and unique features of the brand it is representing. It is suggestive that the brand owners create their proprietary emojis or develop the Unicode-defined emojis by incorporating their brand name or brand logo for making it unique and eligible for registration.

In India, the Trade Marks Registry has granted registrations for the term EMOJI as well as device marks incorporating emojis. Details of some of registrations are given below:

Kim Kardashian is one of the first celebrity to encash upon her Proprietary Emojis. Through her company, Kimsaprincess Inc., she has obtained various trade mark registrations worldwide for the term KIMOJI in various classes. Details of the some of the registrations are given below:

It is certain that a registered emoji trade mark will restrain other proprietors in the market from using both identical and confusingly-similar emojis. However, Unicode-defined emojis are standardized emojis and it is possible that multiple proprietors or platform developers will have similar emoji designs. One such example is creating your custom emoji- called Genmoji with Apple Intelligence. The user just needs to describe what they want and how they want the Genmoji to look like or create one from the photos. Please refer to the image below:

 

The Genmojis can be added to messages, shared as a stickers etc. In 2024, Apple successfully obtained trade mark registrations for trade mark GENMOJI in various classes worldwide. Details of the some of the registrations are given below:

There may also be instances, where the emojis used as trade marks are widely known or generic in nature. In such scenarios, the emoji trade marks will co-exist on the Trade Marks Register in respect of the goods and services provided thereunder exactly like how various generic terms or logo formative marks are co-existing on the Trade Marks Register. However, the same may also lead to dilution of the emoji trade mark. Therefore, it is advisable for the platforms to develop such emoji sets which are not substantially similar to the other widely used or protected trade marks and are in consonance with the requirements as enunciated in the legal provisions.

Emojis & Legal Issues

As discussed above, proprietary emojis are more likely to be granted a copyright if, they form a Emoji Set. Emoji Sets are prepared in collaboration with any individual or different platforms, the ownership over such sets should be clearly set out. The duties & obligations of both parties should be negotiated at the beginning to avoid any legal issues. One of such example is the Liebensohn lawsuit filed[4] by company named App Social LLC. In the suit, it was alleged that Kim Kardashian West and her company Kimsaprincess Inc. had breached the partnership agreement and committed fraud. App Social LLC claimed that in pursuance of Kim Kardashian’s interest in their CensorGram App, they coined the term KIMOJI for their ‘Wall Street and Sexy’ emoji sets and entered into a verbal agreement. It was allegedly decided that the App Social and Kim Kardashian would jointly promote the KIMOJI emoji set, which was a derivative work of App Social’s proprietary emoji sets. It was verbally decided that the App Social Company would receive 60 % of the profits and Kim Kardashian to receive 40%.

The cause of action arose when Kim Kardashian West filed application for registration of trade mark KIMOJI (word) in various classes for products ranging from mobile phones, apparel to fragrances, in the name of Kimsaprincess Inc. as the sole owner. The court observed that the Kimoji set was a derivative work of App Social company, however, since the Kimoji emoji set depicts individual faces and attributes exclusively associated with her and her family, App Social would still be required to obtain Kim Kardashian’s consent for using and monetizing the Kimoji emoji set on its own even though it is the rightful owner.

In the aforesaid case, even if App Social company had used their ‘Wall Street and Sexy’ emoji sets in commerce and the same were eligible to be protected by a trade mark, any claims of infringement or passing off would not have been successful as the term KIMOJI is exclusively associated and identified with Kim Kardashian. This reflects that emojis also falls under ambit of personality rights.

This case highlighted that it is very important to negotiate a written agreement incorporating rights and obligations of both the parties, terms of licensing, royalty schemes, and ownership details of the Intellectual Property before entering into a partnership deed for creating a new emoji set or developing any already existing emoji set.

Conclusion

Apart from significance of emojis in the digital age and use in the domain of Intellectual Property, emojis also affects the society at large and delivers various messages to the society. By introducing different skin tones, haircuts, occupations, disabilities etc., in the human figurine emojis, conversations have become more inclusive. Emojis have clearly emerged as defining a moment in pop culture and deserve their share of legal protection. Therefore, if the considerations regarding registration of emojis as copyright and/ or trade mark and are not decided and clarified effectively, it might lead to proliferation of proceedings and overlapping of rights.

[1] Gina Linetti. Brooklyn Nine-Nine- Season 3 Episode 1.

[2] Gina Linetti. Brooklyn Nine-Nine- Season 1 Episode 22.

[3] Revolutionizing communication with emojis, WIPO, https://www.wipo.int/wipo_magazine/en/ip-at-work/2022/emoji.html

[4] Liebensohn v. Kim Kardashian West, Case No. CIV-19-137-C (complaint filed Feb. 12, 2019)