The Hollywood Reporter recently broke a story saying that a former video game executive from Germany may have all the merchandise trademarks for the forthcoming Sony film “The Emoji Movie”. The article claimed that Sony could face a legal spat, as Marco Husges, founder of the The Emoji Co., created more than 3,000 of his own icons which were trademarked and licensed for use on an array of merchandise and also trademarked titles such as “emojiplanet” and “emojitown.”
The Hollywood Reporter recently broke a story saying that a former video game executive from Germany may have all the merchandise trademarks for the forthcoming Sony film “The Emoji Movie”. The article claimed that Sony could face a legal spat, as Marco Husges, founder of the The Emoji Co., created more than 3,000 of his own icons which were trademarked and licensed for use on an array of merchandise and also trademarked titles such as “emojiplanet” and “emojitown.”
While Husges doesn’t own the rights to the popular digital icons on phones and social media, these were first created by mobile-phone operators in Japan in the late 1990s, he was quoted as saying he “thinks a project called The Emoji Movie may violate his trademarks”.
The case highlights the complexities the movie industry faces when it comes to IP rights. In the Sony example, the company filed applications for several trademarks in connection with its Emoji Movie project in October 2015, however these trademarks were rejected in February. Despite that, Sony has announced the film will be released in 2017 and a spokesperson has been quoted as saying “We have full confidence in our rights as we make the film we’ve always intended to make.”
Like every other industry, trademarks are a critical part of the movie sector. Film studios use trademarks to create a distinctive identity and to stand out in a crowded marketplace and the movie title itself is commonly protected as a trademark. Registering elements of the film as trademarks can also be a lucrative business, paving the way to potential licensing and merchandising agreements that could contribute to the cost of the movie’s production and promotion.
One of the challenges surrounding clearing trademarks in the movie industry has been brought by the Internet and social media, and the fact that it is now a major source of new entertainment works and titles. The rapid expansion of content has added yet another dimension for the intellectual property (IP) legal professionals tasked with clearing and protecting entertainment titles for use in the marketplace.
Titles, just like trademarks, have to acquire “secondary meaning” in the market for the owner to claim exclusive rights— for example, “Star Wars” is associated with Lucas Films and “Bambi” with Disney. With social media, works can go viral in days or even hours, and IP professionals have to think outside the box when searching and clearing titles and review and consider these non-traditional media sources along with the traditional ones.
When the project has the potential for merchandising, it is now vital to ensure the title can be used on everything, from toys and action figures to bedding and curtains. The trademark can be checked in all territories of potential use in numerous classes of goods and services, in addition to its use as a title, and registrations can be filed in a variety of countries before the film ever hits the screen.
The recent high profile cases highlight the complexities surrounding rights and trademarks in the entertainment sector and the importance of a having a well-informed strategy for all new works. The industry is evolving in terms of the way entertainment is produced, delivered and consumed and businesses need to look at the best way to clear, protect and monetise their work in this changing landscape. This will cut out any complexity further down the line and ensure the industry is full of smiley faces instead of down-turned frowns!
