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Collaborations in Creativity & the Law

Nominative Fair Use, as Illustrated by Colorful Balls

Posted in Advertising, Branding, Fair Use, False Advertising, Infringement, Marketing, Non-Traditional Trademarks, Sight, Television, Trademarks

If you watch any amount of T.V. or happened to catch either of the AFC or NFC Championship games last weekend, you’ve probably seen one of the recent cell phone carrier ball commercials.

Initially, Verizon created this commercial, wherein a series of colorful balls rolling down a ramp are used to describe Verizon’s apparently superior performance in a study:

 

 

Verizon clearly demonstrates that its balls are larger and more plentiful than those of T-Mobile, Sprint, and AT&T.

In response, T-Mobile ran this ad, using similarly colored balls and a similar ramp to describe “the rest of the story” from the same study.  It seems now that T-Mobile is the carrier with an abundance of balls:

 

 

Ultimately, Sprint jumped in the ball pit too with this commercial, illustrating that it has the fastest balls, according to a different study:

 

 

Each of the commercials uses similar visuals, music, and even sound effects.  Potential copyright and false advertising issues aside, what struck me about this series of commercials is the strength of the networks’ colors.

Each of these companies has developed such a strong color identifier that, although the voice-over names the other companies, it does not blatantly draw the correlation for the viewer.  It’s immediately apparent which balls represent which network.

From a quick search, it appears that T-Mobile is the only one of the four networks to have sought federal registration of its color mark.  But enforcement of a trademark does not necessarily require federal registration.

This identification of competing brands by their colors suggests an interesting question of nominative fair use.  Nominative fair use is an affirmative defense to trademark infringement that provides for use of another’s mark for comparison or identification purposes.  A typical example of nominative fair use is a car repair shop that specializes in repairing Volkswagens, for example.  Under nominative fair use, the repair shop can advertise that it specializes in repairing Volkswagen vehicles.  Of course the defense does have limits.  The test for nominative fair use requires:

(1) The product cannot be readily identified without using the trademark;

(2) Only so much of the trademark is used as is necessary for the identification; and

(3) No sponsorship or endorsement of the trademark owner is suggested by the use.

We’ve written about nominative fair use of non-traditional trademarks before.  See here and here, for example.  But in those cases, the marks were being used as a prop to help sell unrelated goods or services.  In contrast, in the above commercials, the colors are being used for the purpose of comparing competing companies.  Verizon’s use of the T-Mobile magenta, for example, is for the purpose of identifying T-Mobile as a lesser service provider.

Before we can decide if the colored balls qualify as nominative fair use, however, we first have to determine if this is a trademark “use” to begin with.  Does Verizon’s portrayal of the magenta, orange, and blue balls to illustrate other networks constitute a use of the companies’ color marks?  After all, Verizon is not using T-Mobile’s magenta, Sprint’s orange, or AT&T’s blue to depict a product, packaging, or store trade dress.  It’s simply a series of colorful balls rolling down a ramp.  Even if the colored balls alone are not a trademark use, does it become a trademark use when coupled with the voice-over discussing each company’s study results?

The fact that this use is for purposes of comparing competing phone services seems to suggest that the colored balls are “uses” of the color marks, prompting the further question of whether it is a nominative fair use.

What do you think?  Is this what nominative fair use of a color mark looks like?

How do you like your rum?

Posted in Infringement, International, Mixed Bag of Nuts, Trademarks, USPTO

I don’t know what the record is for the longest time it has taken for a trademark application to clear the Trademark Office, but I’m pretty sure that Havana Club would medal. The application for the Havana Club mark for rum was filed on September 12, 1994. That’s 21 years ago, old enough to drink the rum behind the name.

The brand has been caught up in litigation for much of the time. Bacardi bought the rights to brand from the Arechabala family, which owned the brand until it’s company was nationalized by Cuban government after the revolution. Bacardi, another Cuban family company, had distilleries and other assets outside of Cuba. After the revolution they moved out and continued to produce in Puerto Rico.

Old Havana Club Advert

The Cuban government, through a state held company, produced Havana Club and registered the mark in the United States in 1976 based on its Cuban registration. Bacardi has been contesting the trademark since at least 1994. Due to the diplomatic situation, Cuba had to secure a license from the U.S. Treasury’s Office of Foreign Assets Control to be able to pay to renew its registration. In 2006 that license was denied and Cuba was unable to renew the license. It appears that a cancellation was never ordered and that proceedings were on hold while fights in the courts proceeded. On January 13 of this year, the Trademark Office accepted the 2006 payments and renewed the registration after the Office of Foreign Assets Control granted a license.

This brings about an interesting situation. The Cuban state held company had partnered with Pernod Ricard, another spirits maker, to sell Havana Club just about everywhere. Pernod sued Bacardi for selling Havana Club in the U.S., but Bacardi won. So, Bacardi has continued to sell Havana Club in the United States while Cuba and Pernod have produced Havana Club in Cuba and sold it everywhere else (they couldn’t sell in the U.S. because of the embargo). Now Bacardi is selling Havana Club (with the apparent blessing of courts) while Cuba holds the valid trademark registration. The likelihood of confusion is pretty high if the embargo is lifted and Pernod begins selling Havana Club in the U.S.

Havana Club

(My guess is that this one is Cuban – but only because of the stamp on the bottom)

 

On another point, there has been a lot of discussion about whether the ® symbol acts as something of a government seal of approval, mainly revolving around marks like “The Slants” and “The Redskins.” It’s fairly apparent at this point that the government has been willing to bring trademarks into its diplomacy. So, by allowing the Cuban government to register the mark of a brand that it nationalized without compensation, is the government approving of nationalization without compensation?

Negative Look-For Advertising Statements

Posted in Advertising, Almost Advice, Articles, Branding, Look-For Ads, Loss of Rights, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Sight, Technology, Trademarks

Loyal readers know how important look-for advertising can be in making the difference between establishing trademark ownership in the shape or configuration of a product, and being left with nothing but a goose egg (as opposed to a Big Green Egg). That’s not to say, the clunky words “look-for” are required, yet something equivalent and vastly more creative would be nice.

The point is, what a brand owner says about a product’s shape or configuration, or what it says about a particular distinctive physical feature of a product, needs to inform the consumer that the shape, configuration, or feature is distinctive and stands out to perform the same role as the brand name or logo, that might also appear on the product.

In other words, if the brand name could not easily be seen, would consumers know — because of the shape, configuration or physical feature — that the product comes from a single source.

The challenge is to align all stakeholders (PR, marketing, sales, engineering, legal) with when and how to tout clearly functional features of a product without at the same time signing a death warrant on owning the shape, configuration, or feature as a non-traditional trademark, for as long as it remains in use (as opposed to expiring after the term of a design patent runs).

Last week, we identified some self-inflicted wounds that Spyderco Knives is suffering from in maintaining exclusive rights in its claimed round-hole-in-the-blade trademark.

As it turns out, the self-inflicted wounds are worse than originally anticipated, Spyderco actually has published negative look-for advertising statements, along with a road map to help adversaries make out a strong case for invalidation of those claimed rights. It goes on to ask and answer the question, why the trademark round hole, this way:

“The Spyderco Trademark Round Hole is the industry symbol of quality. It is our most recognizable feature and facilitates easy opening and closing of our knives with one hand. The hole offers convenient access and maximum control while opening as well as accommodating large, small and gloved hands. The position of the hole in the blade and the fact that it is round allow for a continuous opening motion. The thumb rests against the hole at a comfortable distance from the palm permitting easy rotation from the pivot point.”

“To open the knife using the hole, place the knife in your open hand at the base of your fingers and grasp the clip side of the handle with the tips of your fingers. Rest the pad of your thumb in the hole, then gently and smoothly slide the blade away from the handle (see below). When a solid click is heard, the knife is locked in the open position (note that the blade should always be locked securely in the full open position before use).”

 

One Hand Opening


“To close a folding knife that includes a front lock, simply turn the open knife in your hand so that your fingers are on the open side of the handle and your thumb rests on the lock release. Making sure that your index finger is located as high as possible on the handle, release the lock by pressing with your thumb, a gentle flick of the wrist may be necessary. The kick (the unsharpened portion at the base of the blade) will fall onto your index finger protecting your hand from the cutting edge. Rotate the knife so that it is sitting at the base of your fingers with your fingertips on the clip side of the handle (the opening position). Place your thumb pad in the hole or on top of the blade spine and glide the blade safely to the closed position (see diagram). Slightly different closing procedures are used with other locking mechanisms. All closing mechanisms require the utmost caution and care.”

“In many Spyderco models, the hole forms a hump on the top of the blade that serves as a thumb rest for increased cutting control.”

There are some wonderful look-for equivalent statements, for example, “The Spyderco Trademark Round Hole is the industry symbol of quality.” And, it “is our most recognizable feature.”

But, then Spyderco goes on to explain in great detail how the round hole actually is the best shape in performing its intended function by facilitating one hand opening of the knife, providing a graphic tutorial too. I’m not sure how Spyderco survives this slit to the trademark throat.

Perhaps it’s time for Spyderco to call it a day on the “trademark round hole,” and pivot to the horizontal tear drop shaped hole, which it also owns a federal registration for:

SpydercoTearDropHoleWhat do you think, is this shape more distinctive and defensible than the perfectly round hole?

And, keeping in mind that naming a non-traditional trademark is beneficial, what would you call the tear drop shaped hole?

Any votes or support for the Trademark Viking Hole? VikingHelmet

The Internet of Names: CES Round-Up

Posted in Branding, Guest Bloggers, Marketing, Squirrelly Thoughts

Laurel Sutton, Senior Strategist & Linguist at Catchword Brand Name Development

CES 2016 (January 6-9, 2016) has come and gone, and, as always, offered up a rich selection of new product and company names for analysis (and occasional mockery). Questionable name choices for “innovative” products pop up every day, but only at CES are they concentrated in one place, at one time.

Of course, some of the names come from non-American/UK companies, and so should not be judged by the same standards as English-language efforts. Gyenno, for example, is a well-established Chinese company whose name apparently has no meaning, according to their registered US trademark. It sounds uncomfortably close to the Greek wordpart “gyno-”, but presumably it was chosen for its Chinese significance. Likewise, Carpyz (car pies? Car peas? Car piss?), a French company specializing in fluid mechanics, may have taken its name from its founder, Pierre Carrouset, and Pyz, a scientific notation used in fluid calculations. (This is just speculation – I’d love to know the real derivation.)

But what about Samsung Welt? The name was displayed at CES on a smart belt, or “wellness belt”, which is where the name apparently came from. Despite owning the registered TM for the name, Samsung might want to think about the primary meaning in English, which is “a red, swollen mark on the skin”, something you might get if your belt was too tight, I guess. Welt in German means “world”, which is at least not negative, but again, does not really play well with the product (I’m picturing a belt around the circumference of a lovely round globe – not the image you want for a wellness belt).

Ween is a smart thermostat developed by a French company but aimed at an English-speaking audience. Could it be a play on the French word for “yes”, oui? Or maybe it’s supposed to connote wean – but that doesn’t make any sense at all (wean means to accustom a child to food other than mother’s milk). I immediately thought of the indie band Ween, who coined the name as a combination of the words wuss and penis, and which provokes adolescent snickers to this day. Ween has not yet filed for a trademark, and I’d be very interested to see if they claim that the name is meaningless, and if so, whether the USPTO buys it. (The band does not have a trademark, either.)

Some names are just impenetrable (to me, anyway). Smaato is a mobile advertising platform; their registered trademark was likely a breeze, since the name appears meaningless and unique. Pureple seems to be a play on pure and purple; it’s an app for digitizing your wardrobe, but it’s not clear how the name relates to the function. Spün is the name of a set of smart utensils that tracks calories (something I never want). The set comes with a spoon and a fork, so the name is kind of limiting even if you can figure out that it’s pronounced “spoon” and not “spun”. (The actual sound of “ü” in German isn’t quite “oo”; it’s a front rounded vowel, whereas “oo” is a back rounded vowel.)

And some names are easy to understand but not particularly elegant: Grush is a “gaming toothbrush”. Laundroid is a robot that folds laundry. Whill is a customizable wheelchair. Displ’ever is a home-automation display; the random apostrophe is puzzling, but the domain name is downright awful: displ-ever.com. And then there is Healbe, the company that really likes the word “be” – so much so that they stuck it on their fitness tracker to create the Pig Latinish name Healbe GoBe.

It’s heartening to see that these companies are at least protecting their, ahem, unusual name choices. But maybe, next time, hire a naming company?

Insert Coin

Posted in Copyrights, First Amendment, Patents, Trademarks

Those of you who occasionally read my posts may have noticed that video games are a hobby and interest of mine.  I have posted on issues involving video games several times. See Executing Noriega, Flash in the Panama, Calling All Gamers.  And as I look back on it now, it appears that I, for a long time, had an unhealthy addiction to Call of Duty. (Never fear.  I’ve moved on.)  But despite my general gaming interest, I’ve never taken the time to sit down and post about some of the incredibly important and interesting intellectual property issues that accompany video game development and distribution.

There are very few industries that so intricately intertwine the multiple pillars of intellectual property as do video games.  Indeed, its difficult to identify any other industries that depend so heavily upon copyright and patent and trademark and trade secret law.  Video game development involves artistry, technological innovation, and an entrepreneurial spirit; and it requires large doses of each. Mobile gaming brought along an explosion of development and distribution.  In an ever crowding field, I believe clearly defining and protecting the intellectual property rights associated with game development is going to be an increasingly important activity.  It will be an important strategy issue for developers, and it will be an important issue for elected representatives and regulators in attempting to set the proper incentives for creation and access.

In a lot of ways, the game is just beginning.

Does Louis Vuitton’s Loss to a Parody Defense Justify an Award of Attorney Fees?

Posted in Dilution, Fair Use, Famous Marks, Fashion, First Amendment, Infringement, Law Suits, Trademark Bullying, Trademarks

Earlier this month the Southern District of New York granted the defendant’s Motion for Summary in Louis Vuitton Malletier, S.A. v. My Other Bag , Inc. The fashion giant had brought suit against a California company over its sales of a canvas tote bag that included an image that “evoked” Louis Vuitton’s classic handbag design. An image of the Defendant’s products is shown below and you can read more about the Motion for Summary Judgment here.

 

Fresh off their victory, the Defendant My Other Bag (“MOB”) filed a Motion for Attorney’s fees just last week. MOB claims that the facts of the case render it an “exceptional” case under the Lanham Act and therefore request an award of $398,821.

In its Memorandum, MOB acknowledges that the Second Circuit normally requires a showing of “bad faith” before awarding attorney fees. However, the Supreme Court’s ruling in Octane Fitness v. Icon Health & Fitness, 134 S. Ct. 1749, 1758 (2014) rejected this interpretation of the term “exceptional,” instead finding that an exceptional case is merely one that stands out from others due to the relative merits of the claims or the litigation conduct of the parties. Although the case involved a claim of patent infringement, much of the language in the Patent Act mirrors the language of the Lanham Act and, as a result, courts regularly rely on decisions interpreting provisions of one act to interpret the other. Indeed, the Third, Fourth, and Sixth Circuits (and numerous district courts) have all recognized the applicability of Octane Fitness to requests for attorney fees under the Lanham Act.

Does MOB have a winning claim? MOB won on summary judgment on all three claims. That’s helpful, but does not mean that Louis Vuitton’s claims were weak enough to justify an award of attorney fees. Moreover, defenses of fair use or parody are particularly difficult to evaluate as courts frequently reach different conclusions on similar facts. In fact, Louis Vuitton successfully sued Hyundai Motor Co. in the same district under arguably less favorable facts (as MOB points out in its motion, though, Hyundai Motors undermined its own case with some poorly worded testimony).

Predictably, MOB also throws out the “bully” label.  This is by far the first time the label has been thrown at Louis Vuitton.  MOB argues that Louis Vuitton has pursued numerous “weak” claims, including a law school symposium’s use of the LV design on a promotional poster, a “Chewy Vuitton” dog toy, a Danish artist who placed a photograph of a child refugee holding a Louis Vuitton bag on a t-shirt (and then the painting of that photograph), other art exhibits, and the appearance of a character named “Lewis Vuitton” in the movie The Hangover II.  It certainly can’t help that Louis Vuitton appears to wear these tactics as a badge of honor, alleging in its own pleadings that it “actively and aggressively” enforces its trademark rights.

The chances of the court not adopting Octane Fitness are low, but the better question is whether the court considers the facts of the case to justify an award. It will also be interesting to see what consideration the court gives to Louis Vuitton’s perceived “bullying” tactics. When granting the Motion for Summary Judgment, the court did not seem particularly impressed with Louis Vuitton’s claims as it wondered whether the company “just cannot take a joke.” Maybe a $400,000 bill would be the perfect punchline.

iPhone 6, Can You Say Nominative Fair Use?

Posted in Advertising, Articles, Branding, Fair Use, Marketing, Technology, Trademarks

We cover a lot of topics related to nominative fair use of trademarks, see here, here, and here for some of those discussions. Does the example below on product packaging from J. Crew qualify for fair use of the iPhone 6 mark?

iPhoneCaseJCrew

The International Trademark Association would say so: “In general, the following uses are considered fair use . . . Use of ‘iPhone’ in non-stylized form on packaging for phone cases to indicate that it is usable with iPhone 6.”

Do you agree? And, why?

Self-Inflicted Cuts That Can Kill a Trademark?

Posted in Advertising, Almost Advice, Articles, Branding, Guest Bloggers, Look-For Ads, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Sight, Trademarks

We have some razor sharp readers and guest bloggers. We’re deeply thankful and especially grateful when our readers and guest bloggers send us real life illustrations of marketing pitfalls we’ve identified, sliced and diced here on DuetsBlog. They provide more great teaching tools.

Hat tip to our own James Mahoney of Razor’s Edge Communications for reading and passing on to us the fine print appearing on the package insert for a Spyderco Dragonfly 2 pocket knife, appearing to provide a large opening to probe the validity of a federally-registered, non-traditional trademark, namely the prominent round hole depicted on a Spyderco knife blade:

SpydercoDragonfly2

The nearly twenty-year-old incontestable federal trademark registration describes the design trademark this way: “The mark consists of the configuration of a portion of the goods, namely a circular through hole formed in the body of a knife blade.”

The package insert for the Spyderco Dragonfly 2 is reported to describe the round opening on the blade feature this way: “The Trademark Round Hole(TM) in the blade proudly proclaims it as a Spyderco product and ensures swift, positive one-handed opening with either hand.”

Let’s just say, it’s kind of an odd combination of highly beneficial look-for advertising (without using the clunky word “look-for”) in the first part of the sentence (“proudly proclaims”), but then after the word “and” the dreaded functional touting appears, linking function to the round hole trademark design feature (without using the “F-word”).

The website information for the Spyderco Dragonfly 2 reads similarly: “The position of the enlarged Spyderco Round Opening Hole in relation to the pivot leads to smooth opening and the FRN (fiberglass reinforce nylon) handle fits the hand ergonomically with a series of grip angles and leveraging spots.”

The Spyderco Manix product information adds additional cuts: “Improved jimping on the thumb ramp and forefinger choil provide enhanced control and a large 14mm Trademark Spyderco Hole makes one-handed deployment a breeze, even while wearing gloves.”

The Spyderco Dragonfly Foliage Green knife is described this way: “Even the positioning of the Spyderco Round Opening Hole in relation to the pivot is tweaked for smooth opening and hitting all the correct pressure points in the hand. Blade and handle geometry create a series of grip angles with a purposeful flat shelf at the base where the pinkie finger rides as a leverage point.”

Spyderco’s 2014 Product Guide contains additional functionality blade cuts, and in one place, actually uses the dreaded F-word:

  • “All CLIPITs have a pocket clip, a Spyderco Round Hole™ for single-hand operation, and an exceptionally sharp cutting edge.”
  • “and Trademark Round Hole™ provide fully ambidextrous carrying and high speed operation.”
  • “A reversible pocket clip Spyderco Round Hole and sturdy lock mechanism offer convenient carry one-handed access and serious functionality.” (emphasis added)
  • “and has a 14 mm Spyderco Round Hole for quick, one-handed opening — even while wearing gloves.”
  • “with a 14 mm Trademark Round Hole for infallible one-hand opening.”
  • “features a Trademark Round Hole for easy opening.”
  • “have Spyderco’s Trademark Round Hole for one-hand opening.”

The federally-registered round hole design feature is presumed valid as a non-traditional trademark, but given the prevalent language touting function, one must wonder how many cuts with the functionality knife will it take to render the claimed trademark design feature functional and unprotectable as a trademark?

Keep in mind that marketing statements linking form to function can be considered self-inflicted fatal wounds, used against the brand owner when trying to assert exclusive rights in a non-traditional trademark, when the product feature being claimed as a trademark is functional.

Here’s to starting 2016 the right way, by encouraging effective collaboration between trademark and marketing types, and resisting the temptation to tout function when there is the potential for owning and/or maintaining a product design feature as a trademark.

What do you think, are these functionality references fatal wounds, like evidence of a ticking time bomb that can serve to invalidate even incontestable federal trademark registrations?

David Bowie: Ziggy Stardust teaches us about branding.

Posted in Branding, Guest Bloggers, Marketing, Mixed Bag of Nuts, Technology

– Randall Hull, The Br@nd Ranch®

On January 10, 2016, David Bowie “left the building” after an 18 month battle with cancer — a complete shock to many of us who were fans. We didn’t know David was ill. Yes, there were the rumors of his death triggered by his heart attacks, six of them in total. But nothing could make Aladdin Sane mortal, or so we thought.

The sense of loss was palpable — like the death of Steve Jobs.

Bowie was not only a pop icon, he was an innovator, entrepreneur, media manipulator, ever-evolving his image over the decades. He was a brand and his own chief strategist.

Born David Robert Jones on January 8, 1947, Bowie worked in marketing, as a graphic designer, for a very short time before pursuing music full-time. But his eye for color, composition, and contrast was ever present.

His first metamorphosis was in 1960 when he changed his surname to Bowie. This ‘rebranding’ was necessitated by the well-known Davy Jones, lead singer of The Monkees but was not his last transformation.

Bowie’s constant image altering would give most brand practitioners headaches. But there are lessons to be learned by observing his ability to change yet remain himself.

What can be called ‘Brand Bowie’ meant willingly embracing the freedom to transform, to fuse the thing he experimented with into something new, sometimes disconcerting, but always ahead. He was glam before glam rock and his influence reached into hip-hop with samplings from the likes of Jay Z and Notorious B.I.G.

As noted by a recent article in The Verge, Bowie saw the technological evolution of the Internet approaching and wanted to leverage it for marketing his material to larger audiences and allowing the fans to interact with his art. His prescience signaled the thinking of a brand strategist before the term was part of our lexicon and practice. He foresaw what has become reality for most of us — Instagram and Twitter, to name two — as digital venues for artist and audience interactions.

Bowie explored interactive CD-ROMs in 1994 with the release of Jump. He was one of the first major artists to initiate an online-only release of a new song exclusively on the Internet — 1996’s “Telling Lies”. It topped 300,000 downloads.

Through UltraStar, the Internet company Bowie founded, he developed the initial website for the New York Yankees, predating the formation of MLB Advanced Media. This was fandom in the dial-up age.

Sorry Kim Kardashian, in 1997 Bowie was the first to “break the Internet” with a live ‘cybercast’ of his Earthling concert in Boston. I remember watching buffering and pixelated images as the available bandwidth could not handle the demand.

Bowie also created his own service, BowieNet, launched in Fall of 1998. It was an ISP for fans offering ‘unfiltered’ access to the Internet and your own BowieNet email address. No, I don’t have mine anymore!

According to The Guardian, he said at the time, “If I was 19 again, I’d bypass music and go right to the internet.”

In 2000, Bowie took what was considered a controversial step, extending his brand to an online bank, BowieBanc, which offered a credit card with Bowie’s image and a free subscription to BowieNet. Toke on that Snoop Dogg!

Bowie understood the power of subtlety, demonstrated in January 2013 when, without fanfare, he uploaded to his website the video for his single “Where Are They Now”. It became available immediately in 119 countries on iTunes. Social media did the heavy lifting for Bowie.

Brands can learn that to remain relevant, to keep the experience current in our constant state of flux, the one thing that must remain consistent is sense of self.

‘Brand Bowie’ was an iconic and formidable exemplar of experimentation, foresight, adaption and metamorphosis. He showed us how rigid rules could be flexed and yet return to a recognizable shape.

This form of existence on the ‘bleeding edge’ may not be appropriate for all companies and their brands but we have learned from David Bowie that ch-ch-ch-changes can create a lasting legacy, a dynamic brand, and loyal followers.

RIP David. Long live Brand Bowie!

The “Poo” People Use: Who Owns Emojis

Posted in Mixed Bag of Nuts

Emojis – those cute images you may find in a keyboard on your Android or iPhone device – have changed the way many people communicate thoughts, ideas, feelings and concepts.  They can add a certain level of pizzazz to an otherwise ordinary text message, Facebook post, or tweet.  And, if I may borrow a line from a more famous Martha, they certainly are “a good thing.”  For Apple/Macintosh fans, I always was fond of the Zapf Wingbats font – so you might call me an early adopter of this phenomenon.

Emojis have been accepted as part of the Unicode – the computing standard for text.  But each platform has a different expression of that Unicode.

So what about when emojis, or even glyphs, are used as part of an advertisement?

We like to reference billboards in our posts here, so take for example this use:

deadpool-emoji-billboard-pic

First of all, what is that?

Skull Poople?

A Super Bowl 50 reference?

Death to Poopy Face L (did I miss the others? and an ode to Death to Smoochy, one of my favorite Robin Williams movies)

Ohhh Dead Pool.  Like DUH.  (Insert sarcastic emoji).  And there is a pool, or at least a guy swimming in a pool, emoji.

Adweek last week called this billboard “so stupid it’s genius.”

We have written before on the use of emoticons and rights associated with it, but this was one of the first examples that I’ve using emojis as part of commercial speech.  So who owns the “skull” and “poo” emoji?

Well, like most legal questions, the answer is:  it depends.  Because emojis are part of the Unicode, their expression is dependent upon the platform in which the viewer sees the emoji.  An emoji viewed as part of an iMessage is different than one on an Android device or one in a tweet or one on Facebook or in your Google chat.  Because of that, it’s important to consider potential copyright issues before using this in an advertisement.  Assuming this was not a permissive use, the Dead Pool example shown may not qualify as a fair use of the skull or poo emojis.  Fair use is a subjective test that considers:

  1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  2. the nature of the copyrighted work;
  3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  4. the effect of the use upon the potential market for or value of the copyrighted work.

It’s clearly a commercial use and may be considered to take the whole of the copyrighted work, but whether it’s effect of the use upon the potential market for or value of the copyrighted work (to the extent it is one) remains to be determined.

Is life in 140 characters or less moving us into a glyphful culture?  Bachelor Farmer recently launched a new cafe with no name but cleverly and brilliantly branded with a unique logo from iconography (designed by our good friends at Capsule), a logo that has even spurned a hashtag.

bachelor

Maybe once again Minneapolis’  prince, The Artist Formerly Known As Glyph, who’s playing sold out shows at Paisley Park tonight, was well ahead of the times.  Sort of surprisingly, with the benefit of 15+ years, there’s an article about how to write his glyph in Unicode.