Lego A/S v. Zuru Inc.
3:18-cv-02045
D. Conn.May 28, 2025Background
- LEGO sought a temporary restraining order (TRO) to stop ZURU from manufacturing and selling its "Third-Generation Figurines," alleging they infringed LEGO's copyright and trademark rights in the LEGO Minifigure.
- The court previously granted a preliminary injunction in LEGO's favor; following an appellate mandate, the district court was directed to assess substantial similarity and likelihood of confusion using the "more discerning observer" test and to avoid relying on unprotectable (functional) features.
- Both parties submitted expert testimony regarding similarities and differences between the LEGO Minifigure and ZURU's figurines, with debate focusing on which design features are functional (hence unprotectable) versus artistic (hence protectable by copyright).
- The legal focus included both copyright (substantial similarity of protectible elements) and trademark (likelihood of consumer confusion based on trade dress) claims.
- The products in dispute are competing toy figurines sold through similar channels to similar purchasers, raising direct marketplace competition concerns.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Substantial similarity (copyright) | Third-Generation Figurines are substantially similar to LEGO Minifigure's protectible sculptural features, considering overall look and feel. | The figurines are not substantially similar; only limited, functional features are shared, and ZURU's design changes further differentiate. | LEGO's argument accepted: overall concept and feel of figurines are substantially similar when unprotectable elements are set aside. |
| Identification of protectible elements | Protectable expression includes unique sculptural aspects of Minifigure, not just purely functional parts. | Only specific body shapes (trapezoidal torso, block-like shoulders, etc.) may be protectible, if at all, and most features are functional. | The court agreed protectible expression is broader than ZURU claims; focused on artistic decisions and overall feel. |
| Likelihood of confusion (trade dress) | High degree of similarity in design, strength of LEGO's mark, product proximity, and low buyer sophistication create likely confusion. | No likely confusion: ZURU made design changes in good faith and avoided signature LEGO features; no evidence of actual confusion. | LEGO likely to show likelihood of confusion; court applied Polaroid factors and credited LEGO's evidence and expert. |
| Defendant's good faith | ZURU intentionally copied LEGO's design after being put on notice; design process closely referenced the Minifigure. | ZURU acted in good faith, attempting to comply with court orders and intentionally avoiding certain LEGO design features. | Court found LEGO likely to show ZURU acted with bad faith in its redesign process. |
Key Cases Cited
- Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996 (2d Cir. 1995) (explains the 'more discerning observer' test and extracting unprotectable elements in copyright analysis)
- Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57 (2d Cir. 2010) (adopts total concept and overall feel test for substantial similarity)
- Savin Corp. v. Savin Group, 391 F.3d 439 (2d Cir. 2004) (recites and applies the Polaroid test for likelihood of confusion)
- McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126 (2d Cir. 1979) (addresses proximity of products in trademark law)
- Paco Rabanne Parfums, S.A. v. Norco Enters., Inc., 680 F.2d 891 (2d Cir. 1982) (overall impression test for mark similarity)
- Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474 (2d Cir. 1996) (factors for competitive proximity in trademark disputes)
- Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867 (2d Cir. 1986) (likelihood of confusion standard and relevance of actual confusion evidence)