Professional Documents
Culture Documents
DISTRICT OF CONNECTICUT
--------------------------------x
LEGO A/S; LEGO SYSTEMS, Inc.; :
and LEGO JURIS A/S, :
:
Plaintiffs, :
:
v. : Civil No. 3:18-cv-2045(AWT)
:
ZURU INC., :
:
Defendant. :
--------------------------------x
Plaintiffs LEGO A/S, LEGO Systems, Inc., and LEGO Juris A/S
I. FACTUAL BACKGROUND
1
of business in Denmark. The LEGO Group is an industry leader in
See Verified Compl. (“Compl.”) (ECF No. 1), at ¶ 13. LAS owns
various locations, e.g. the leg element and the torso element,
2
works of the Friends figurine. Since at least 2012, the LEGO
States for its bricks and building elements. See id., at ¶ 44.
The LEGO Group owns the following patents that are at issue in
this motion: U.S. Patent No. D688,328S (the “‘328 Patent”); U.S.
Patent No. D641,053S (the “‘053 Patent”); and U.S. Patent No.
laws of the British Virgin Islands and has offices in Hong Kong.
1 The page numbers from the parties’ briefings refer to the page
numbers of the ECF at the top, and not the page numbering at the
bottom.
3
ZURU sells figurines in its MAX Build More 15 MAX Figures
the Infringing Figurines and ZURU’s MAX Build More and Mayka Toy
products: the MAX Build More Building Bricks Value Set (759
Bricks), MAX Build More Building Bricks Value Set (253 Bricks),
and the MAX Build More Building Bricks Accessories and Wheels
4
The plaintiffs contend that “ZURU uses an image on product
packaging for its Mayka Toy Block Tape that is strikingly and
62.
injunction motion. The Stud Trademarks and the ‘923 Patent are
the court held that the test for the grant of a preliminary
MercExchange, LLC, 547 U.S. 388, 391, 126 S. Ct. 1837, 164
5
Conn. 2012) (citing Salinger, 607 F.3d at 77, 79). Under that
test,
III. DISCUSSION
Schlein, 634 F.3d 224, 229 (2d Cir. 2011) (quoting Feist
Publ'ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361,
(1991).
6
The LEGO Group owns a valid copyright for the Minifigure
(see Compl., Ex. A and B), and the Friends Copyrights, covering
118 F. Supp. 3d 460, 465 (D. Conn. 2015) (quoting Walker v. Time
Inc. v. Carol Pub. Grp., Inc., 150 F.3d 132, 137 (2d Cir. 1998)
(quoting Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d
Cir. 1992)).
7
[accessing] the prior work; access cannot be based on
mere “speculation or conjecture.” Gaste v.
Kaiserman, 863 F.2d 1061, 1066 (2d Cir. 1988) . . . In
order to support a claim of access, a plaintiff must
offer “significant, affirmative and probative
evidence.” Scott v. Paramount Pictures Corp., 449
F.Supp. 518, 520 (D.D.C.1978), aff'd, 607 F.2d 494 (D.C.
Cir. 1979) (table), cert. denied, 449 U.S. 849, 101
S.Ct. 137, 66 L.Ed.2d 60 (1980) . . . .
When the LEGO Group contacted ZURU Inc. in August 2017 to demand
8
The plaintiffs have also produced evidence that establishes
sets since 2012, and the LEGO Group has undertaken substantial
best toy overall at the 2013 International Toy Fair in New York
197, 201 (D. Conn. 2015) (“In the absence of any proof of
Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 111 (2d Cir.
10
images of the figurines. The side-by-side comparison and the
products because “[a]n adult looks very briefly. They don’t pay
11
the Infringing Friends Image. She pointed out the similarities
the shape of the leg, the proportions or size of the torso, and
the head and the hair. Thus, she supported that her conclusion
that the overall look and feel was very much the same with
specific details.
on the other hand, are not substantial when one makes a visual
expert witness, Gottlieb, testified that the ZURU Inc. MAX Build
figurine because the “MAX product looks a little bit more like
153:17, 153:24—154:6; see also Def.’s Closing Arg. (ECF No. 57),
12
Knight’s analysis in light of the fact that the standard for
same.” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 111 (2d
form and proportion, creating different looks and feels that are
figurine.
13
relatively long-term protections of copyright, as
opposed to the more temporary rights provided by the
Patent Act, 35 U.S.C. § 271 et seq.
Varsity Brands, Inc., 137 S. Ct. 1002, 197 L. Ed. 2d 354 (2017).
Supp. 2d at 98.
elements that affect the look and feel of the toys by comparing
14
them to various toy human figurines that all look and feel
may enforce the right to exclude others from using the trademark
15
protection, and second, whether defendant's use of a similar
Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 115 (2d Cir.
2006).
Polaroid factors:
16
Savin Corp. v. Savin Grp., 391 F.3d 439, 456 (2d Cir. 2004)
Rest., L.L.C., 360 F.3d 125, 130 (2d Cir. 2004) (quoting Lois
Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867,
17
a. Strength of the Mark
“The strength of a mark is its tendency to identify the
RJG Holdings of Fla., Inc., 312 F. Supp. 2d 195, 225 (D. Conn.
mark.” Id.
18
The mark of the LEGO Group’s Minifigure figurine is strong
figurine.
unpersuasive because the LEGO Group has been policing its brand
Def.’s Opp. to Pls.’ Mot. for TRO and Prelim. Inj. (“Def.’s
Opp.”) (ECF No. 37), at 43, are “ones that the [LEGO Group] is
19
the similarity has upon prospective purchasers.” The Sports
Auth., Inc. v. Prime Hosp. Corp., 89 F.3d 955, 962 (2d Cir.
marks. The court agrees with the plaintiffs that the Minifigure
Opp., at 37, and the MAX Build More figurine does not have legs
Group’s product. See Prelim. Inj. Hrg. Tr. (ECF No. 66), at
minuscule, then it looks and feels the same.”). The high degree
223:13-16.
20
c. Proximity of the Products
The proximity of products is concerned with the
Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1134 (2d Cir.
1979).
junior user is operating, that is, bridge the gap. If the senior
A/S/M Commc'ns, Inc., 830 F.2d 1217, 1227 (2d Cir. 1987). Here,
21
there is no gap to be bridged because both companies already
e. Actual Confusion
that ZURU Inc. customers have used the LEGO name in connection
with ZURU’s Products. See Prelim. Inj. Hrg. Tr. (ECF No. 65), at
f. Bad Faith
22
his and the senior user's product.” Lang v. Ret. Living Pub.
Co., 949 F.2d 576, 583 (2d Cir. 1991). Additionally, “actual or
818 F.2d 254, 259 (2d Cir. 1987) (internal quotation marks
omitted).
social media pages. See Pls.’ Ex. 43. The plaintiffs will be
the number of infringing products, and the fact that ZURU Inc.
Mayka Lego Tape.” Pls.’ Mot. for TRO and Prelim. Inj., Ex. 1
23
fact that the junior user's product is of inferior
722, 735 (S.D.N.Y. 2004), aff'd, 159 F. App'x 270 (2d Cir. 2005)
Div. of Gruner + Jahr Printing & Pub. Co. v. Meredith Corp., 991
glueing the legs and body together so they [don’t] come apart
easily when your kids are playing with them.” Pls.’ Ex. 43. (A
24
h. Sophistication of Buyers
“In evaluating the sophistication of the buyers, the
a set of toy figures selling for $12.97. The court agrees with
attention as some kids do. They’re busy, and shopping the way
easily be confused.”).
25
that each of the Polaroid factors supports the conclusion that
at trial.” Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d
Prod., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404 (Fed. Cir.
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed.
26
familiar with the prior art designs, would be deceived into
design.” Crocs, Inc. v. Int'l Trade Comm'n, 598 F.3d 1294, 1303
itself.
Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) (citing Lee v.
27
non-functional elements, the scope of the claim must be
Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993)
form.” Prelim. Inj. Hrg. Tr. (ECF No. 66), at 242:9. She
explained:
28
It's a slab that has one step up with a single stud
projection on the first step and two on the top. It's
got this sort of S curve that is sort of abstract, makes
the form abstracted. It's nothing specific. It feels
very open to possibilities. It doesn't say I want to be
this kind of thing or a character or a structure. It
feels like it could be a lot of different things.
question from the court, she explained that the “S curve” was
29
It's a sort of an open rectangle. So it has four slabs,
one on each side. It's open in the middle. It's sort of
size feels like it's kind of cute and well balanced.
"Cute" is a term we use in the toy industry. It's got
two stud projections on the top and it connects on the
bottom as well. So it's kind of a unique open-ended form
that could be used horizontally or vertically.
small table with a lamp, where two of the bricks are put
30
And because there are two -- these two stud projections,
feels like they can become very decorative in their use
as well.
where the bricks are lined up so they look “like the rivets in
31
identical in order for design patent infringement to be
found. See Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815,
Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). “The proper
F.3d at 1304.
Asserted Patent. See Pls.’ Mot. for TRO and Prelim. Inj. (ECF
32
indistinguishable except for extremely small letters identifying
c. Obviousness
reference “may be combined only when the designs are “so related
33
suggest the application of those features to the other.” In re
34
She also described the overall visual appearance of two
references, i.e. U.S. Pat. No. D290,476 and U.S. Pat. No.
Inj. Hrg. Tr. (ECF No. 66), at 243:15-18. Knight also explained,
what was different about each of them and then combining those
35.
35
testified, they are very different. See Prelim. Inj. Hrg. Tr.
are very different. See Prelim. Inj. Hrg. Tr. (ECF No. 66), at
36
at the two references and taking what was different about each
B. Irreparable Harm
(citing Salinger, 607 F.3d at 79). The plaintiffs have met their
burden.
Toys, Ltd., 858 F.2d 70, 73 (2d Cir. 1988). “The most corrosive
858 (7th Cir. 1982); see also Yale Elec. Corp. v. Robertson, 26
F.2d 972, 974 (2d Cir. 1928) (“If another [entity] uses [an
though the borrower does not tarnish it, or divert any sales by
the court finds that the plaintiffs have met their burden of
38
fact, demonstrated that analysis of each of the Polaroid factors
1446, 1456–57 (Fed. Cir. 1988). “If monetary relief were the
(quoting Atlas Powder Co. v. Ireco Chems., 773 F.2d 1230, 1233
39
not fully compensable by money because the damages caused are
LEGO Group and its brand resulting from ZURU Inc.’s infringing
products:
of brand value. It showed that the LEGO Group was way ahead all
place company. Gottlieb agreed that this meant that the LEGO
40
agreed that the LEGO Group built up that brand equity based on
its reputation “and a lot of hard work.” Prelim. Inj. Hrg. Tr.
free product. See Prelim. Inj. Hrg. Tr. (ECF No. 35), at 92:23-
will lead to the LEGO Group losing market share. See, e.g.,
Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1362 (Fed. Cir.
that they think is Lego that is not, they are not getting the
less of our brand.” TRO Hrg. Tr., at 44:17-45:1. Thus, not only
altogether.
41
With respect to copyright infringement, “the court must
increase its sales and market share, and would also enable it to
C. Balance of Hardships
the plaintiff and defendant and issue the injunction only if the
42
607 F.3d at 80. The balance of hardships analysis is related to
the MAX Build More products and the Mayka Toy Block Construction
clients. The defendant would also suffer lost sales and harm to
sent ZURU Inc. cease and desist letters in connection with the
2017. See WPIX, Inc. v. ivi, Inc., 691 F.3d 275, 287 (2d Cir.
Clear Channel Outdoor, Inc. v. City of N.Y., 594 F.3d 94, 110
43
violations of City ordinance the result of a “self-inflicted
wound”).
D. Public Interest
F.3d 27, 50 (2d Cir. 2016). The court agrees with the plaintiffs
ZURU Inc. and the LEGO Group when, in fact, there is none.
44
interest in open and free competition between such companies.”
Def.’s Closing Arg., at 41. However, whether the MAX Build More
competition.
E. Bond
an amount that the court considers proper to pay the costs and
InterDigital, Inc., 645 F.3d 553, 557 (2d Cir. 2011). “Although
45
to the damages sought. The presumption applies to ‘provable’
IV. CONCLUSION
It is so ordered.
Dated this 8th day of July 2019, at Hartford, Connecticut.
/s/ AWT
Alvin W. Thompson
United States District Judge
46