If the Word “Emoji” is a Protectable Trademark, What Happens Next?–Emoji GmbH v. Schedule A Defendants
Given the ubiquity of the word “emoji” as a reference to the various images and icons used in electronic communications, it is especially important that Plaintiff come forward with evidence demonstrating that the term is also known as an identifier of Plaintiff as a source of goods….Other than its say-so, Plaintiff offers no evidence demonstrating, for instance, that consumers actually associate Plaintiff with emoji products such as those offered for sale by Defendants
(The absence of secondary meaning sounds like a major problem with Emojico’s case, one of several problems the court spots and then essentially ignores).
As I previously documented, Emojico has likely sued about 10,000 defendants for trademark infringement. Many defendants are small-time Amazon vendors (often from China) selling items depicting emojis, who Emojico claims are infringing by using the term “emoji” in their product listings. Defendants often no-show in court, making the rulings vulnerable to obvious mistakes that never will be appealed.
Without the defendants in court to defend themselves, the court rules that the defendants violated Emojico’s trademark rights and grants a permanent injunction. The judge then turns to Emojico’s request for statutory damages, including Emojico’s assertion that infringement was willful. The court says it
finds the nature of Plaintiff’s trademark to be relevant to the willfulness inquiry, as it raises the concern that many persons might innocently use the word “emoji” in commerce without awareness of Plaintiff’s intellectual property rights. Indeed, the various images and icons commonly referred to as “emojis” have become a staple of modern communication, such that the term “emoji” is even defined in many dictionaries.
This means the term “emoji” is generic with respect to the dictionary definitions and Emojico’s litigation empire should crumble. The trademark registrations discourage that outcome.
Otherwise, “emoji” is at most descriptive of the goods in question, so there should be an air-tight descriptive fair use defense. The court says:
Fair use, however, is an affirmative defense, and none of the defaulting Defendants have appeared to assert it. But the Court believes the principle underlying the defense, “that no one should be able to appropriate descriptive language through trademark registration,” is relevant to its willfulness analysis. If Plaintiff’s mark can legitimately be used for a substantial number of descriptive purposes, it suggests that any particular Defendant might not have knowingly or recklessly disregarded Plaintiff’s rights.
That’s how the court sidesteps the elephant in the room. The defendants did not “disregard Plaintiff’s rights” because it’s completely permissible to use “emoji” in a descriptive fair use sense. But the court didn’t consider descriptive fair use in flatly declaring infringement because…well, I’m not sure why not, other than this judge apparently thinks courts can’t raise screamingly obvious defenses sua sponte?
This next passage may require tissues:
many Defendants are using the word “emoji” to describe a product that depicts one of the many digital icons commonly used in electronic communications. For example, one Defendant offered for sale a jewel encrusted pendant in the shape of the “Fire” emoji under the listing “2.00 Ct. Round Diamond Fire Emoji Charm Piece Pendant Men’s 14k Yellow Gold Over.” Especially since “Emoji” was used in conjunction with the word “Fire,” it would be reasonable to conclude that this particular Defendant honestly believed that they were using the word “Emoji” to identify the product as depicting a specific emoji, namely the Fire Emoji. Another Defendant offered for sale a pillow depicting a smiley face emoji with the listing reading “1PC 32cm Emoji Smiley Emoticon Pillow Plush Toy Doll Pillow Soft Sofa Cushion.” Again, the word emoji is used to describe the product as depicting a smiley face emoji. Further, the listing uses another word, “Emoticon,” that is commonly associated with digital representations of facial expressions. The listing’s inclusion of a word describing a similar concept to an emoji suggests that both words are simply being used to describe the product being offered.
[We now know what happens if you yell “Fire Emoji” in a crowded online marketplace. TRADEMARK INFRINGEMENT. 🔥]
The court seemingly understands the problem perfectly. Any person looking at the listings in question would instantly interpret “emoji” as describing the product’s physical attributes–AS TRADEMARK LAW PERMITS IT TO DO. Yet, somehow, the court creates a Schrodinger’s fair use defense–the usages may be descriptive trademark use for damages purposes, but apparently not so obviously to resolve infringement. That’s messed up.
How messed up? The court says:
Plaintiff suggests that any person who sells a product depicting a familiar emoji is forbidden from using the one word that most closely describes the image depicted. Plaintiff’s right cannot be so expansive.
💯 How did the court find infringement again?
After questioning the foundation of Emojico’s trademark empire and reaching the obvious conclusion that the defendants engaged in descriptive fair use, the court nevertheless awards $25k of statutory damages per defendant. The court treats this as benevolence towards the defendants:
That figure is below Plaintiff’s requested awards because it accounts for the many possible fair uses of Plaintiff’s mark as well as Plaintiff’s failure to present sufficient evidence concerning many key factors relevant to the statutory damages determination. On the other hand, the award is greater than the minimum authorized by § 1117(c)(1) in light of the need for deterrence, the fact that Defendants’ infringing conduct occurred online, and Plaintiff’s evidence of its licensing efforts and efforts at enforcing its trademark rights.
So, was justice served in this case? On the one hand, it’s all for show, because Emojico will almost certainly collect zero dollars of this damages award. On the other hand, it’s a terrifying reminder of how things can go wrong in default proceedings, when the court is hearing only the plaintiff’s unrebutted advocacy. The true victims of this court’s error, and of Emojico’s litigation campaign, are consumers who love emoji-themed items but increasingly will find it harder to acquire those products in online marketplaces because Emojico keeps lawfaring vendors out of the marketplace or forcing vendors to use terms that consumers don’t recognize. Even if the defendants didn’t make the arguments, the judge should have listened to her instincts and intervened on the consuming public’s behalf. All of us, except possibly for Emojico and its lawyers, are poorer because she didn’t.
Case citation: Emoji Co. v. Individuals, Corporations, Ltd. Liab. Co., Partnerships, & Unincorporated Ass’n Identified on Schedule A, 2022 U.S. Dist. LEXIS 173321 (N.D. Ill. Sept. 26, 2022)