A graphic designer pushes back from their desk, stares at the screen, and smiles, sure the emoji they’ve created is exactly what the client needs. The marketing agency’s creative director enthusiastically agrees: “Let’s start using it!”
Unfortunately, designing an emoji is just the start of the process. The agency still has much work to do to ensure they (or their client) can use it without the risk of a lawsuit. There are issues of originality and ownership that have to be navigated to secure the rights to that beautiful little bit of intellectual property (IP). And you absolutely need legal protection before moving forward.
The last thing you want is to be served with a “cease and desist” order. If that occurs, you’ve wasted the time, effort, and money you put into your design.
The History of the First Smiley
The good news for marketers, brand managers, and business owners about protecting emojis is that there’s a well-worn path to follow. And there are trademark attorneys specializing in brand protection and brand identity to guide you.
One of the lessons in protecting emojis was a hard one learned by the designer of the first smiley face. A freelance artist named Harvey Ball was paid a one-time fee of $45 to create the iconic image for an insurance company in 1963. It was a hit, and soon smiley faces were popping up everywhere. The problem for Ball was that he didn’t trademark his creation.
Meanwhile, in Paris, journalist Franklin Loufrani created a very similar image in the early 1970s. And seeing its potential, he obtained a French trademark. With that protection in place, he began licensing the image. In another stroke of genius, he gave 10 million free stickers bearing the image to young people in France who loved its counter-culture message. That created strong interest from advertisers, who began paying large sums for the right to put smiley faces on their products.
Fast forward to today. The Smiley Company is a family-owned business that brings in more than $500 million in licensing fees per year. That’ll put a smile on your face!
Tips for Using Emojis in Your Branding
To conduct legal advertising using emojis, you must understand the risks and follow proven best practices. That’s true whether you’re using images you’ve created or licensing someone else’s work.
IP law on emojis is complex, so it’s best to work with an intellectual property law firm that can help you understand it. There is an interplay between copyright law (for a creative work) and trademark law (for branding) here. For example, on the copyright side, you can’t obtain legal protection for an emoji that doesn’t have enough “expression” and therefore isn’t a “work of authorship.” Similarly, emojis for ideas that can only be expressed in a few ways or that have minimal detail don’t qualify for protection.
Your IP attorney can also explain the difference between Unicode emojis and proprietary emojis and how that affects your rights to an image you’ve designed. In short, the Unicode Consortium is a nonprofit organization that sets language standards, including for the visual language of emojis. The emojis it has created are “in the public domain” and can be used by anyone. Proprietary emojis are those developed by individuals or entities—companies, their marketing firms, graphic designers, etc. You may be able to restrict their use if they meet certain conditions.
IP Protection for Your Emojis
It’s a good idea to talk with a trademark attorney even before you create an emoji or set of them. They can provide insights on design attributes that will make your work more likely subject to trademark or copyright protection.
Your attorney can help you figure out whether you are looking to protect a copyright (basically a creative work or a creative form of expression) or a trademark (being recognized as a source of a good through branding and association to a product or service).
Your attorney can also explain the fair use doctrine. Also called the fair use defense, it essentially says that not every use of someone’s IP constitutes infringement. For example, organizations can use protected works without permission for news reporting, teaching, and other non-commercial activities. An important thing to note is that “fair use” is a defense, not permission to instantly use something.
You’ll also learn the definition of a “trademark in the class of goods”—one that distinguishes specific products or services. In addition, your IP lawyer can talk with you about trademarks and copyrights and which protection is appropriate for your creation.
Emojis: Eye-Catching, Informative, and Worth Protecting
Emojis are everywhere and for a good reason. They’re a fun, fast way to express an idea or emotion. But don’t let their ubiquity fool you. There can be legal consequences for failing to protect your IP or infringing on the rights of others.
An intellectual property law firm can explain the rules, regulations, and requirements in clear, concise terms. That way, you can focus on your work, knowing you aren’t exposing yourself to legal risks or the loss of your rights and revenue.
Schedule an initial IP evaluation with Wilson Dutra Law today. : )
