[Eric’s introductory note: I have made a personal life choice to ignore the entire Kardashian enterprise and their constant and often faux drama (except that I have occasionally mocked the Kardashians in my law school exams). I’ve decided that life is short and I should invest my limited energy and attention only into people who truly deserve such a precious resource, and none of the Kardashians, or anyone in their orbit, come close to clearing this standard. As a result, before today, the term “Kardashian” has only appeared on the blog 3 times out of over 3,300 posts, and never as the central focus of a post. That streak ends today, but for good reason. The Kardashian drama factory is at the epicenter of a rare and fascinating legal dispute over emoji ownership. That’s compelling enough that I’m holding my nose and handing over the blog reins to emoji law expert Gabriella Ziccarelli to grok the dispute.]
Do not let anyone tell you there is not any money to be made in the business of emojis: just ask Kim Kardashian West. Her $1.99-a-download Kimoji app featuring various Kim-related emoji (“Kimoji”) has grossed millions to date. Following the app’s initial release in December 2015, users were downloading the app at a voracious rate of 9,000 downloads per second, resulting in the Apple App store temporarily crashing.
Now, an individual named David Liebensohn is claiming Kimoji was his multi-million dollar idea –at least $300 million in damages to be exact – in a recent lawsuit filed in Oklahoma federal court against both Kim Kardashian West and her company, Kimsaprincess Inc. Liebensohn v. Kim Kardashian West, Case No. CIV-19-137-C (complaint filed Feb. 12, 2019). Liebensohn’s complaint alleges claims of breach of a partnership agreement, breach of fiduciary duty, unjust enrichment, and fraud against Kardashian West.
According to the complaint, David Liebensohn, Narayan Shankar, and Daniel Rice founded their company App Social LLC in 2014. App Social released a number of social media-related product lines, including their “Wall Street” and “sexy” emoji sets and an application called CensorGram that protected users’ social media accounts from bullying and online trolling.
On June 18, 2014, Kardashian West’s best friend and Instagram celebrity Jonathan Cheban reached out to the App Social team, explaining Kardashian West’s interest in their CensorGram app due to her concerns regarding bullying on the Instagram platform and the need for a one-size-fits all solution for trolling. Cheban offered App Social an 80%/20% profit divide in partnership. Although the App Social team rejected Cheban’s initial offer, they agreed to schedule a call with Kardashian West for July 15, 2014. This call would lead to an in-person meeting on July 28, 2014 at the Calabasas, California home of Kris Jenner, Kardashian West’s “momager.”
In anticipation of the meeting, Liebensohn alleges the App Social team placed Kardashian West’s likeness into the company’s already developed Wall Street and sexy emoji sets and they coined the term “Kimoji” for the emoji set. It’s unclear from the complaint when the Kimoji were eventually shared with Kardashian West and in what format. However, at some point in advance of, or during, the meeting, the Kimoji prototype was shared with Kardashian West and her team.
[Note: there were no exhibits attached to the complaint showing copies of the original Kimoji mockup emoji set. Also, the complaint is inconsistent as to when the Kimoji were actually shared. In the beginning of the complaint, the Kimoji were allegedly shared in advance of the July 28th meeting, but later in paragraph 14 of the complaint, it says the Kimoji were shared based on the understanding of the partnership (a topic that was discussed at the July 28th meeting). In paragraph 48 of the complaint, Liebensohn alleges he showed the Kimoji prototype to Kardashian West on his phone so it’s unclear how the Kimoji were shared, when, and in what format.]
During the July 28th meeting, the parties allegedly negotiated the final terms of a partnership between App Social and Kardashian West: 60% of profits to the App Social team and 40% to Kardashian West. In exchange for the App Social team’s contribution of its skill, intellectual property, and ideas relating to both CensorGram and emoji content, Kardashian West would raise $660,000 in capital contributions. Liebensohn claims the App Social team understood that Kardashian West wanted to promote the Kimoji concept together, as a team.
The agreement was a verbal one. However, there’s little logic in relying on a verbal agreement encompassing a purported major business partnership in the first instance. Partnership arrangements are complicated and inherently risky (see, e.g., this post), and partners benefit from negotiating and memorializing the terms of the partnership in writing. Because partnerships typically place unlimited personal liability on each partner for company debts, it’s essential to carve out the obligations and the rights of the partners in forming the partnership agreement. What’s even more mind boggling here is the Plaintiff’s decision to bring a lawsuit alleging breach of a verbal partnership “agreement” – without pleading any facts that suggest the elements of a verbal agreement had been met, including offer, acceptance, exchange of consideration, and most importantly certainty of terms. Based on the pleadings the terms of the verbal agreement were, at best, preliminary and left a lot up to question (e.g., who would own the intellectual property that resulted from the partnership).
On August 14, 2014, the complaint alleges Kardashian West asked if the App Social team filed the KIMOJI trademark application. Because the team had not, Kardashian West proceed to file the trademark for KIMOJI – listing only Kimsaprincess, Inc. as the sole owner.
The complaint alleges one day after filling the KIMOJI trademark, Kardashian West, through her attorney Martin Singer, sent the App Social team a letter stating the App Social team caused Kardashian West emotional distress and defamation in excess of $5 million. [Attorney Martin Singer, protector of the stars, is known for his aggressive tactics. Singer has a reputation for doing whatever it takes to make famous people’s problems disappear.] Although a copy of the letter was not attached, Liebensohn claims the letter stated Kardashian West suffered these damages as a result of a screen shot she received from one of the App Social founder’s acquaintances – the screen shot allegedly contained personal information about Kardashian’s use of the App Social CensorOut [the successor name for CensorGram] app that had been shared with “all of Chicago.”
The letter offered the App Social team a release from a $5 million lawsuit if they agreed to walk away from future development of Kimoji. (Again, no copy of this letter was attached to the complaint). Liebensohn claims Kardashian West was aware of the screen shot she used to justify cancelling the partnership before the July 28th meeting set up to establish the partnership agreement terms. Liebensohn claims this is indicative of Kardashian West’s lack of intention to follow through on the partnership in the first place.
Mr. Libensohn refused to sign the August 15, 2014 release. It’s unclear, however, if the other founders of App Social signed the release.
After August 2014, Kardashian West proceeded to file the KIMOJI mark in a number of additional classes for products including retail, cases for mobile phones, apparel, and fragrances (see registrations 5013465, 5013466, 5246291, 5246294, 5246295, and 5581586).
Liebensohn claims he did not become aware of Kardashian West’s intention to pursue the Kimoji app and use the Kimoji name until a year later (in December 2015), when Kardashian West released the Kimoji app.
The Liebensohn lawsuit raises a number of the legal issues we’ve previously discussed with regard to emojis.
Noticeably, Liebensohn does not raise any intellectual property infringement claims against Kardashian West. But at its core, Liebensohn’s allegations insinuate that the Kimoji emoji set was a derivative work of App Social’s proprietary emoji sets. This raises some complex legal issues.
As an initial matter, this lawsuit raises issues regarding proprietary, not Unicode-defined, emoji. Unicode emoji refer to the emoji the Unicode Consortium assigns a unique number, a black-and-white shape outline, and a short description to in such a way that enables the emoji to be recognized across platforms. The emoji you see on your keyboard when texting are platform implemented versions of the Unicode emoji. On the other hand, proprietary emojis are platform- or, in the case of branded emoji like Kimoji, source-specific. The App Social and Kimoji emoji sets at issue in this case are proprietary emoji because they are not based on the Unicode-defined emoji. The Unicode Consortium does not adopt proprietary emojis that are covered by third-party intellectual property, such as the Kimoji or AppSocial’s emoji set. (For more on intellectual property and emoji, check out the article Eric and I co-authored on the topic).
Now that we’ve set up some background, let’s dive in to the intellectual property issues at play in the Liebensohn lawsuit. From an intellectual property perspective, if the App Social emoji sets were used to distinguish goods and services in the marketplace, they can be protected as trademarks. Nothing in the complaint suggests that App Social used the emoji sets in this context. Providing free emoji sets that users can incorporate into messages typically isn’t a “use in commerce.”
Kardashian West’s use case, however, of the Kimoji are a classic example of how emoji can be utilized as a use in commerce. Not only was the app a paid one, but a number of the most popular Kimoji were transformed in to tangible products – from phone cases to pool floaties. Even if App Social had used their emoji sets in commerce and the emoji sets were eligible for trademark protection, a claim of trademark infringement against Kardashian West’s Kimoji may not stand since multiple parties could have coexisting trademark rights in the same emoji symbols for different classes of goods.
Additionally, to the extent App Social’s emoji sets reflect significant creative judgments, Liebensohn may be positioned to claim copyright protection in those emoji sets. And even if the Kimoji set appears to be a derivative work of the App Social emoji sets, there is still an inherent issue in that the set (prototype or otherwise) is based on Kardashian West’s likeness.
Even if the court were to find that the Kimoji emoji set was a derivative work of App Social’s emoji sets, although a level of creativity may be involved the derivation from the original would primarily be based on the use of Kardashian West’s likeness. The Kimoji emoji set depicts individual faces and other attributes uniquely associated with Kardashian West and her family. Ultimately, App Social would need the consent of Kardashian to use and monetize the Kimoji on its own even if the court determined App Social to be the rightful owner.
Intellectual property issues aside, this lawsuit highlights the financial value in monetizing a prop