Roblox Corporation v. WowWee Group Limited
3:22-cv-04476
N.D. Cal.Sep 3, 2024Background
- Roblox Corporation sued WowWee Group Limited and others for alleged copyright, trademark, and trade dress infringement related to WowWee’s My Avastars dolls, which incorporated elements created on the Roblox platform.
- WowWee asserted several affirmative defenses, including express and implied license, waiver, estoppel, acquiescence, unclean hands, copyright misuse, and issues regarding Roblox’s Terms of Use (TOU).
- Roblox moved for partial summary judgment to dismiss these affirmative defenses before trial.
- The motion was heard by the United States District Court for the Northern District of California on June 20, 2024.
- The dispute centered on whether Roblox’s TOU permitted, forbade, or acquiesced to the uses made by WowWee, as well as whether Roblox engaged in improper conduct that would bar enforcement of its intellectual property rights.
- The court ultimately granted summary judgment for Roblox on most defenses, but left some issues for trial, especially those related to trademark claims and the estoppel defense.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Express License | TOU prohibits WowWee’s actions; no express license granted. | TOU/Guidelines permit off-platform uses including dolls; prior conduct amounts to license. | Granted for copyright/trade dress, denied for trademark/false advertising. |
| Implied License | No evidence Roblox intended to license the use. | Roblox knew of the dolls and did not object, implying consent. | Summary judgment granted for Roblox (no implied license). |
| Waiver | No intentional relinquishment of rights by Roblox. | Roblox knowingly allowed similar uses; prior collaborations indicate waiver. | Summary judgment granted for Roblox (no waiver). |
| Estoppel | Roblox did not act to reasonably mislead WowWee into believing rights wouldn’t be enforced. | Roblox’s conduct and language in Guidelines led WowWee to believe use was authorized. | Summary judgment denied; factual disputes remain. |
| Acquiescence | No active consent or representation unasserting rights. | Roblox’s actions and lack of objection to similar uses imply acquiescence. | Summary judgment granted for Roblox (no acquiescence). |
| Unclean Hands | Roblox’s enforcement is proper; must be serious and related to suit. | Roblox selectively enforced/vague policies, misstatements to copyright office, improper conduct. | Summary judgment granted for Roblox (no unclean hands). |
| Copyright Misuse | No overreaching; limited monopoly not exceeded. | Roblox overstates IP and asserts rights beyond copyright scope to chill competition. | Summary judgment granted for Roblox (no copyright misuse). |
Key Cases Cited
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment standard; burden shifting)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (standard for genuine issue of material fact in summary judgment)
- Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574 (non-moving party must do more than show metaphysical doubt)
- A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (waiver/abandonment in copyright context; copyright misuse doctrine)
- Micro Star v. Formgen, Inc., 154 F.3d 1107 (abandonment requires overt act indicative of purpose to surrender rights)
- Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837 (unclean hands standard in IP litigation)
- Republic Molding Corp. v. B.W. Photo Utilities, 319 F.2d 347 (unclean hands requires serious transgression related to right asserted)
- Apple Inc. v. Psystar Corp., 658 F.3d 1150 (limits of copyright misuse defense)
- Seller Agency Council, Inc. v. Kennedy Ctr. for Real Est. Educ., Inc., 621 F.3d 981 (elements of acquiescence)
- Netbula, LLC v. BindView Dev. Corp., 516 F. Supp. 2d 1137 (burden of proof in license scope disputes)