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Sony's New Emoji Animated Movie At Trademark Odds With Guy Who Trademarked Emojis

from the sad-face dept

It probably goes without saying that the word "emoji" is now a full member of the popular lexicon. So popular, in fact, that Sony is apparently going to release an animated film called The Emoji Movie, which will follow the "lives" of a bunch of emojis, for reasons I cannot possibly fathom. But, as the release of the film is currently in the works, Sony is also apparently preparing to fend off a trademark claim from Marco Husges, a game developer and emoji creator.

According to The Hollywood Reporter, however, the studio may also be preparing for a legal battle as one former game developer says he owns the merchandising trademarks for more than 3,000 emoji.

Marco Husges, who worked on the MMO Shadowbane, and on Starbreeze Studios'Enclave, filed for commercial trademarks of the word "emoji" back in 2013. As such, Husges doesn't own the rights to the emoji images people use on their iPhones (which are trademarked to Apple) or Android devices (trademarked to Google), but he does own the rights to his own designs. He also owns the rights to certain words, like "emojitown" and "emojiworld."

Now, were Sony to be insane enough to pilfer unique creatively designed emojis and simply use them in its film, Husges would appear to have a straightforward copyright and/or trademark claim. But there's almost zero chance that Sony would do that, as well traveled as the company is in intellectual property dispute circles. What appears to be more at issue here is Sony's production of a movie with "emoji" in the title at all, not to mention should it attempt to do any merchandising around the film.

"I am curious how Sony would want to produce a movie under that name and do accompanying merchandising, especially given the fact our brand has already been successfully established with license partners and retailers all over the world," Husges told The Hollywood Reporter.

Husges added that the reason he trademarked certain aspects of emoji back in 2013 was to eventually adapt the pictograms for film and television use. He said he believed emojis could be the next Teenage Mutant Ninja Turtles or Minions if the right stories were applied.

Sony has indicated that it will move forward with the movie, with Husges responding that he's ready to take the film studio on in court. Sony, for its part, has begun working with a licensing firm to ensure that the film's characters themselves won't run afoul of any IP issues.

But what of the title of the film itself, or the use of the term "emoji" on merchandise? Can that word really be the subject of a trademark action when it is clearly descriptive? The etymology of the word "emoji" will travel you down the path of the Japanese language and the portmanteau of the terms for picture and character. Emoji is a literal descriptive term for a picture-character. How does that limited use of the word qualify for trademark protection?

To be clear, longer film titles like The Emoji Movie might qualify for trademark protection for films and merchandise, but that isn't what Husges is arguing. Even were Husges to make good on his promise of his own emoji-based animated productions, that doesn't itself render emoji non-descriptive. Given its recent emergence in popular language, it will be interesting to see how the courts view this dispute, should it ever get that far.

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Filed Under: emoji movie, emojis, marco husges, movie, trademark
Companies: sony pictures

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  1. icon
    Kevin Wimberly (profile), 6 Jun 2016 @ 6:15am

    Cannot register movie title as TM

    You actually cannot register the title of a single movie (or book or album) as a trademark (unless it is serialized). This is the second or third erroneous "armchair TM attorney" issue I've seen within the last month or two on TechDirt. Please research some of these statements first.

    Yes, many times the names of movies are registered trademarks, but not for "movie services" or "movie goods."

    See TMEP 1202.08:

    1202.08 Title of a Single Creative Work
    The title, or a portion of a title, of a single creative work must be refused registration under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, unless the title has been used on a series of creative works. The title of a single creative work is not registrable on either the Principal or Supplemental Register. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) ("the title of a single book cannot serve as a source identifier"); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 400 (C.C.P.A. 1958) , cert. denied, 358 U.S. 840, 119 USPQ 501 (1958) ("A book title ... identifies a specific literary work ... and is not associated in the public mind with the publisher, printer or bookseller...."); In re Posthuma, 45 USPQ2d 2011 (TTAB 1998) (holding the title of a live theater production unregistrable); In re Hal Leonard Publ'g Corp., 15 USPQ2d 1574 (TTAB 1990) (holding INSTANT KEYBOARD, as used on music instruction books, unregistrable as the title of a single work); In re Appleby, 159 USPQ 126 (TTAB 1968) (holding the title of single phonograph record, as distinguished from a series, does not function as mark).
    As noted in In re Cooper, there is a compelling reason why the name or title of a book cannot be a trademark, which stems from copyright law. Unlike a copyright that has a limited term, a trademark can endure for as long as the trademark is used. Therefore, once copyright protection ends, and the work falls in the public domain, others must have the right to call the work by its name. G. & C. Merriam Co. v. Syndicate Publ’g Co., 237 U.S. 618, 622 (1915); In re Cooper, 254 F.2d at 616, 117 USPQ at 400; Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1144 (TTAB 2011). Moreover, if the work sought to be registered is not copyrighted, the public may copy it at once and would be as clearly entitled to call it by its name. In re Cooper, 254 F.2d at 616, 117 USPQ at 400.
    See TMEP §1301.02(d) regarding the titles of radio and television programs.

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