Lego's IP Grab Bag

Lego recently sent a series of takedowns to websites that host 3D printable models, including MyMiniFactory.* It looks like some of Lego’s claims are legitimate, while others appear to be less so. Taken together, the claims highlight the complicated ways in which IP attaches to 3D printable models, and the ways in which various legal ambiguities can allow a large company like Lego to try and control behavior that is probably not legally within its right to control.

The Notice

The notice link received by MyMiniFactory is interesting in and of itself. While many people refer to these types of notices as “DMCA” notices (after the Digital Millennium Copyright Act), this notice actually combines both copyright and trademark claims (this is going to become relevant later).

Dear myminifactory.com: LEGO A/S, LEGO Juris A/S and LEGO System A/S (collectively but not exclusively “the LEGO Group”) hold exclusive worldwide rights to the LEGO® intellectual property, including but not limited to the famous LEGO word mark, the famous red-square LEGO logo and the Minifigure figurine. These trademarks and copyrights, registered and/or protected under US and international trademark and copyright law, are used to identify, advertise and promote products and activities developed and/or held by the LEGO Group of companies. In addition, LEGO holds exclusive Copyright and Trademark rights to the world-famous LEGO® Minifigure figurine design. The LEGO Minifigure design is protected by United States Copyright registrations VA655104, VA655230. The LEGO Minifigure design, since the first launch in 1978, is protected by copyright laws and enforceable internationally through application of the Berne Convention. I, the undersigned, state UNDER PENALTY OF PERJURY that: 1. I am an agent authorized to act on behalf of the LEGO Group, of certain intellectual property rights; 2. I have a good faith belief that the URLs identified below offer items or contain materials that are not authorized by the the LEGO Group, its agent, or the law, and therefore infringe the IP Owner’s rights; and 3. The information in this notice is accurate. Please act expeditiously to remove the listings identified below:

I understand that the notice then goes on to list a number of models, but does not make an attempt to match the individual models with any specific accusation of infringement. That leaves it up to the platform and the user to guess which rights Lego believes any individual model might infringe upon. That ambiguity makes it hard for an accused user to evaluate the claim against them.

Differences Between the Type of Right Allegedly Infringed Matters

This kind of ‘we have lots of rights so take it all down’ approach to takedown notices does a disservice to both creators and platforms. From the perspective of a platform potential liability for infringement, it makes a huge difference if the model is being targeted because of claimed copyright infringement or claimed trademark infringement.

If the claim is based in copyright, the platform is generally immune from liability because of the safe harbors created in the DMCA (the DMCA is a US law but EU law - at least as of now - currently provides the same types of protections). The DMCA also creates a system where the user can challenge the takedown without needing the platform’s permission.

If the claim is based in trademark, the platform’s liability is less clear. At a minimum, there is unlikely to be a way for an accused user to challenge the takedown request without the agreement of the platform. Since it may not be worth the platform’s time to even analyze the accusation (let alone push back on it), and a platform is unlikely to allow a user to push back if the platform itself could be held liable for infringement, in practice that makes it much easier for a rightsholder to bluff their way into having something taken down for an alleged trademark infringement than for an alleged copyright infringement. The combined nature of the notice enhances this power, as it is not clear from the notice itself which models are being accused of infringing what kinds of rights. A conservative platform doing a cursory review of the letter would assume that all of the models are being accused of trademark infringement and take them down without asking too many questions.

By combining all of these issues into an omni-notice, Lego has made it much more costly for the platform to evaluate its validity, and making it much easier (at least in the short term) to just take everything down without giving accused users a way to fight back.

Might those users want to fight back even if they could? Let’s take a deeper look at how copyright and trademark law might connect to the models.

Although the language is not particularly clear, the only copyright that Lego claims is in the Minifig design. This makes sense, because the lego blocks themselves were patented (patents and copyrights are generally mutually exclusive, so if something is patented it is not eligible for copyright protection (there are a thousand lawyerly qualifications I could add here, so see disclaimer below)) and that patent expired some time ago.

That means it is not copyright infringement to make lego blocks, or models that are compatible with lego blocks. It might be copyright infringement to reproduce a full minifig. It is probably not copyright infringement to create an accessory for a minifig and then take a picture of that accessory with the minifig itself.

The upshot of this is that Lego’s copyright claims are probably fairly narrow, clustered around models that replicate minifigs. Anything beyond that is unlikely to be a copyright issue. That means that Lego is probably leaning fairly heavily on its trademark claims.

Trademark

Lego’s letter specifically references ownership of trademarks in the world “LEGO,” the stylized representation of “Lego” in a red box, and in the minifig (unlike patents and copyrights, trademarks and copyrights are not necessarily mutually exclusive). It is important to remember that trademarks are all about showing who is responsible for goods. That means that merely copying or using a trademark does not mean you are infringing on it.

Instead, trademark infringement is all about causing confusion in users. If you are using the Lego trademarks to make it appear that your models are coming from the Lego company you are likely infringing on Lego’s trademarks. In contrast, if you are merely using Lego’s trademarks to show that your model is compatible with Lego, you are unlikely to be infringing on that trademark (here is a longer explainer on how all of this works).

It seems that many of the targeted users are not trying to pass their goods off as official Lego goods. Instead, they are using the term “Lego” to indicate that their model is compatible with Lego-style connectors. One could argue about ways to make that more clear - say by using a term like “Compatible with Lego” or “Lego-Compatible” - but it seems unlikely that a consumer looking at at least some of these models would be confused as to their source or origin.

These Models Are Unlikely to Compete with Lego

That is all the more true because the reality of the situation is that almost no one would buy a 3D printed lego-style block if an injection molded one existed. Lego is really good at making lego bricks. In a head-to-head matchup, a lego-produced brick is going to be cheaper and better than a 3D printed one by almost any metric.

The only reason to turn to 3D printing is to create a lego-compatible object that does not already exist. If you need something custom or specific that Lego does not make, 3D printing is probably your only option. And if you need a custom lego-compatible block, that is probably because you already have many, many official Lego blocks. You are probably already a Lego superfan.

That means that the 3D printed Lego-compatible market is almost purely complimentary to the official market. Lego’s fair play guidance is interesting and helpful, but it does not define Lego’s legal rights. Complying with the guidance may help you avoid a nastygram from Lego. Stepping outside of its bounds does not mean that Lego has a legal right to stop you.

That makes MyMiniFactory’s response kind of a fun one. After inviting Lego to collaborate with the community instead of attacking it, they announced a “OGEL” competition to redesign the building blocks. Submissions close on November 14th and the winner gets a brand new 3D printer.

*As with everything posted on this site, nothing in this post should be construed as legal advice. If you have been targeted by a takedown notice that you believe to be illegitimate you should contact a lawyer who can be your lawyer. Unless I am sending you a bill I am not your lawyer.

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