Written by Deeksha Singh
Research Associate at Law & Order (July-Aug 2020)
Fifth Year, BA. LLB. Symbiosis Law School, Pune
Disclaimer: Please note that the views expressed below represent the opinions of the article's author. The following does not necessarily represent the views of Law & Order
What are Emoji?
Emoji are small icons which one uses while texting or while communicating to someone over social media platforms. Emoji are used by people for electronic communication to express their emotions in a better and easy way. They are very common now but they have been in existence since the 1990s on Japanese mobile phones.
The word emoji comes from the Japanese word ‘e’ meaning picture and ‘moji’ meaning letter. Emoji, thus, literally means a ‘picture letter’. The Japanese roots of the word is also one of the reasons why the plural form of ‘emoji’ is also ‘emoji’ and not ‘emojis’.
Prior to the invention of emoji, there existed emoticons, which are merely the combination of symbols on the keyboard. The first ever emoji was created by a Japanese artist, Shigetaka Kurita, in the year 1999. Emoji were exposed to other countries since the mid 2000s through the invention and proliferation of computer and mobile applications.
In 2011, Apple came up with its emoji keyboard and the same was followed by Android phones. With the introduction of emoji on computers and keyboards of mobile phones, people started expressing more with emoji while having conversations on text as this made it easy to express their emotions or feelings and hence it became a popular mode of communication.
However, emoji on each platform are slightly different in their appearance from each other. This is because those emoji are protected by way of intellectual property rights.
Today, emoji are such a popular mode of electronic communication and so easily available without the need for any permission, license or payment that people assume them to be a part of the public domain. Yet, emoji are very much a part of intellectual property and are protected under copyright law.
Types of Emoji
Though emoji vary in size, shape, colour and depiction, they can be categorized into two main types: Unicode-defined emoji and proprietary emoji.
Unicode-defined emoji: Unicode defined emoji are developed by the Unicode Consortium, a non-profit organisation which has aimed to develop uniformity in viewing and sharing data. The Consortium has thus developed a standard set of black and white emoji which are devoid of any 3-dimensional features. Platforms such as Whatsapp and Skype build their own sets of emoji based on these standardized styles defined by the Unicode Consortium.
Unicode-defined emoji look like this: “☺, ☹”. Thus, there is ample scope for a platform to introduce its own unique twist to the Unicode-define emoji and hence distinguish them among a plethora of other similar emoji. The need to make their emojis look different also makes platforms and individuals to develop emoji with slightly different variations from the Unicode-defined emoji. Thus, the burger emoji has the patty placed at different locations, sometimes below the cheese or sometimes above it.
Proprietary Emoji: These types of emoji are created and implemented by the platforms themselves and they are accessible only on those particular platforms. They can also be known as stickers. When such emoji are used outside of the platform for which it was intended to be used, the recipient platforms do not recognize it and are not able to display the proprietary platform’s emoji.
For example, Google has its own set of blob-shaped emoji which are based on the unicode defined emoji but are available for use only on Android phones. The social media platform, Hike, also uses a unique set of emoji which are also animated. Hike’s emoji are also compatible only on the platform of Hike.
Categories of Emoji Protection – Copyright, Trademark, Industrial Design
Emoji can be protected as an intellectual property. Yet, the various laws which apply to emoji protection and the requirements for these laws are different from each other.
Emoji can be protected under three laws of intellectual property – copyright, trademarks and industrial design.
Other laws like patent and geographical indications do not provide for any adequate protection to emoji due to the abstract nature of emoji and the requirements under such laws.
A work is protected under copyright law if it is original and made in a tangible form of expression. Copyright law doesn’t protect ideas or facts, but the way in which such an idea is expressed. For protection under copyright law, one doesn’t require any registration.
Emoji are indeed protected by copyright law. They can be protected either as a set of emoji or individually, but not all emoji can get protected under copyright law. This is because copyright law prohibits information and ideas which are commonly known to be protected and emoji are such a common mode of expression today that unless a particular emoji or a set thereof is so different from the standard emoji we see around us, it will not be able to seek protection under copyright.
There are two basic doctrines governing protection of emoji under copyright law. Firstly, the merger doctrine applies to emoji according to which, when the idea and its expression thereof give off the same meaning, such that one cannot be differentiated from the other, copyright cannot be granted. The small size of emoji makes the depiction of details difficult. This limits the number of ways in which an emoji can express an emotion or an object.
Secondly, the doctrine of scènes à faire applies to emoji when the idea that very trite or common elements of a work cannot be granted protection under copyright. Some universally developed principles such as the depiction of emoji in yellow colour come in the realm of scènes à faire. Further, some emoji have such a simple basic look which makes it difficult to have enough expression to constitute a work of authorship. For example, the smile emoji and the crying emoji are so trite and common in their design that they have become part of the general public domain, applying the doctrine of scènes à faire on themselves.
This does not mean, however, that emoji used to display such common emotions or objects cannot be protected under copyright. For example, the revolver emoji in Apple’s IOS software does not actually display a gun, but a water gun in its place. While the creation of such an idea lies behind the fact that the earlier gun emoji of Apple was increasingly used to threaten people, the idea behind creating a water gun emoji in place of a real gun is unique and hence copyrightable.
Trademark is any word, symbol, phrase or device which helps in distinguishing one good from another. This broad definition of trademarks helps to include emoji in their purview as well. If an emoji can successfully help in distinguishing one good or service from another, it can very well attain protection as a registered trademark.
However, the common use of emoji today limits the protectability of emoji as trademarks. This is because words, phrases, symbols or images which have become categorically generic cannot be trademarked. Emoji are at a constant risk of genericide. Unlike copyright, trademark provides protection to the individual emoji with limited expression. Although it can be confusing as to what goods or services are identified by emoji, if the use of an emoji in commerce can be distinguished, then they will be entitled to get protection under trademark law.
Trademarks provide protection to the symbol of emoji and will also restrict any other party to use a similar symbol or identical emoji, with respect to the same or similar set of goods or services.
For example, the Chinese social media platform, WeChat’s facepalm smiley emoji came into a trademark dispute between a clothing brand which tried to get a trademark for using the particular emoji on its t-shirts. However, the clothing company failed to register the emoji as a trademark due to it being a copyright of the creator of the emoji.
Similarly, the clothing brand Gap Inc. and fashion design company Diane von Furstenberg (DVF) Studio tried to seek trademark registration for the heart emoticon but failed as it was already registered by a kid’s clothing brand.
Emoji have varied designs, such as Whatsapp’s distinguished yellowish-golden, round emojis or Google’s blob-shaped ones. Such different emoji are not always compatible with other platforms. For example, the emoji set Skype uses cannot be displayed on platforms such as Whatsapp or Telegram.
Section 2(d) of the Indian Designs Act 2000 provides with the definition of design as,
“design means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye”.
Protecting emoji under industrial design rights can prove to be tougher than protecting them under copyright or trademark law. According to Eric Goldman & Gabriella E. Ziccarelli, emoji can be protected under industrial design if they become an important though non-functional element of an object.
While examples of emoji protected as design are less, one such example would be of the US industrial design which depicted the element of an emoji winking on a water flotation device.
Emoji are hugely popular and due to their high demand, they are rapidly growing.
Though emoji have been provided protection under different categories of IPR but they are still not globally provided with the same protection. The future of emoji is bright as people are getting more reliable on them while expressing their feelings and they are not only restricted to social media but can now be seen in movies too.
However, IP rights over emoji can lead to exploitation of a popular mode of expression in the modern world. Gaining IP rights over emoji also leads to unnecessary versions of emoji depiction just to avoid risk of infringement.
It is thus important that the courts when deciding whom to grant exclusive IP rights over a set of emoji, consider the concerns related to granting any emoji or emoji set such protection.
 Arielle Pardes, The WIRED Guide to Emoji, WIRED (Jan. 02, 2018), https://www.wired.com/story/guide-emoji/.  Are Emoji Protected by Copyright Law, David Lizerbam & Associates (May 17, 2016), https://lizerbramlaw.com/2016/05/17/emoji-protected-copyright/.  Ibid.  Robert Reading, Emoji TMs: An Emotional Journey, World Intellectual PropertyReview (October 28, 2019), https://www.worldipreview.com/contributed-article/emojis-as-trademarks-are-they-or.  Saper Law, Can you Copyright Emoji?, Saper Law (July. 03, 2018), https://saperlaw.com/2018/07/03/can-you-copyright-an-emoji/  Unicode - Emoji, Unicode Consortium, https://home.unicode.org/emoji/about-emoji/.  What Cannot Be Copyrighted In India, Legal Services India (May 12, 2018), http://www.legalservicesindia.com/law/article/990/7/What-cannot-be-copyrighted-in-India#:~:text=Ideas%2C%20methods%2C%20and%20systems%20are,process%2C%20or%20method%20of%20operation.  Ibid.  Doctrine of Merger And Copyright Law, BananaIP Counsels (November 23, 2015), https://www.bananaip.com/ip-news-center/doctrine-of-merger-and-copyright-law/.  Priyanka Chakraborty, Scenes Affaire in India, Legal Service India, http://www.legalservicesindia.com/article/2219/Scenes-affaire-in-India.html.  Heather Kelly, Apple replaces the pistol emoji with a water gun, CNN Business (August 2, 2016), https://money.cnn.com/2016/08/01/technology/apple-pistol-emoji/.  Trademark, Legal Information Institute (LII), Cornell Law School, https://www.law.cornell.edu/wex/trademark.  Lena Marcinoska, From Smiley to Sad Faces—Registering Emoticons as Trademarks, INTA BULL., Dec. 15, 2017, https://www.inta.org/INTABulletin/Pages/Registering_Emoticons_as_Trademarks_7221.aspx  Tian Lu,, The Facepalm Trademark case in China, IPKat (Sep. 04. 2019), http://ipkitten.blogspot.com/2019/09/the-facepalm-trade-mark-case-in-china.html. Devika Agarwal, A matter of the heart, SpicyIP (January 14, 2014), https://spicyip.com/2014/01/a-matter-of-the-heart.html  Eric Goldman, Gabriella E. Ziccarelli, Emoji and intellectual property law, World Intellectual Property Organisation (June, 2018), https://www.wipo.int/wipo_magazine/en/2018/03/article_0006.html.  Ibid.
Arielle Pardes, The WIRED Guide to Emoji, WIRED (Jan. 02, 2018), https://www.wired.com/story/guide-emoji/.
Are Emoji Protected by Copyright Law, David Lizerbam & Associates (May 17, 2016), https://lizerbramlaw.com/2016/05/17/emoji-protected-copyright/.
Robert Reading, Emoji TMs: An Emotional Journey, World Intellectual PropertyReview (October 28, 2019), https://www.worldipreview.com/contributed-article/emojis-as-trademarks-are-they-or.
Saper Law, Can you Copyright Emoji?, Saper Law (July. 03, 2018), https://saperlaw.com/2018/07/03/can-you-copyright-an-emoji/
Unicode - Emoji, Unicode Consortium, https://home.unicode.org/emoji/about-emoji/.
What Cannot Be Copyrighted In India, Legal Services India (May 12, 2018), http://www.legalservicesindia.com/law/article/990/7/What-cannot-be-copyrighted-in-India#:~:text=Ideas%2C%20methods%2C%20and%20systems%20are,process%2C%20or%20method%20of%20operation.
Doctrine of Merger And Copyright Law, BananaIP Counsels (November 23, 2015), https://www.bananaip.com/ip-news-center/doctrine-of-merger-and-copyright-law/.
Priyanka Chakraborty, Scenes Affaire in India, Legal Service India, http://www.legalservicesindia.com/article/2219/Scenes-affaire-in-India.html.
Heather Kelly, Apple replaces the pistol emoji with a water gun, CNN Business (August 2, 2016), https://money.cnn.com/2016/08/01/technology/apple-pistol-emoji/.
Trademark, Legal Information Institute (LII), Cornell Law School, https://www.law.cornell.edu/wex/trademark.
Lena Marcinoska, From Smiley to Sad Faces—Registering Emoticons as Trademarks, INTA BULL., Dec. 15, 2017, https://www.inta.org/INTABulletin/Pages/Registering_Emoticons_as_Trademarks_7221.aspx
Tian Lu,, The Facepalm Trademark case in China, IPKat (Sep. 04. 2019), http://ipkitten.blogspot.com/2019/09/the-facepalm-trade-mark-case-in-china.html.
Devika Agarwal, A matter of the heart, SpicyIP (January 14, 2014), https://spicyip.com/2014/01/a-matter-of-the-heart.html.
Eric Goldman, Gabriella E. Ziccarelli, Emoji and intellectual property law, World Intellectual Property Organisation (June, 2018), https://www.wipo.int/wipo_magazine/en/2018/03/article_0006.html.