govinfo:USCOURTS-ctd-3_18-cv-02045-1

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UNITED STATES DISTRICT COURT 
DISTRICT OF CONNECTICUT 
 
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Civil No. 3:18-cv-2045 (AWT) 
LEGO A/S; LEGO SYSTEMS, INC.; 
and LEGO JURIS A/S, 
 
  Plaintiffs, 
 
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v. 
 
ZURU INC., 
 
  Defendant. 
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SUPPLEMENT TO ORDER RE PLAINTIFFS’ EMERGENCY  
MOTION FOR TEMPORARY RESTRAINING ORDER 
 
Plaintiffs LEGO A/S, LEGO Systems, Inc., and LEGO Juris A/S 
(collectively “LEGO”) moved for a Temporary Restraining Order 
restraining defendant ZURU Inc. (“ZURU”) from manufacturing, 
selling, offering for sale, distributing, displaying or 
authorizing the sale of the ten figurines proposed by ZURU (the 
“Third-Generation Figurines”) in its Notice of Intent to 
Manufacture and Sell Non-Infringing Figurines (ECF No. 305) (the 
“Notice”), and confirming that the Third-Generation Figurines 
are subject to the Preliminary Injunction (ECF No. 87) and 
Ruling on Motion for Contempt (ECF No. 139) (the “Contempt 
Order”). On February 5, 2024, the court issued the Order Re: 
Plaintiffs’ Emergency Motion for Temporary Restraining Order 
(ECF No. 344). In accordance with the Mandate (ECF No. 361), 
dated April 16, 2025, the court provides this analysis with 
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respect to the issues of substantial similarity and likelihood 
of confusion. 
The Mandate states: 
We therefore find that a remand pursuant to this 
Court’s procedure in United States v. Jacobson is 
appropriate for the district court to supplement the 
record by providing its assessment of whether the 
Third-Generation figurines are substantially similar 
to or likely to be confused with Lego’s Minifigure. 15 
F.3d 19, 22 (2d Cir. 1994). In particular, we instruct 
the district court on remand to apply the more 
discerning observer test in its assessment of 
substantial similarity.   
   
  . . . . 
 
Because the district court did not perform any 
analysis in applying the preliminary injunction to the 
Third-Generation figurines, we cannot discern whether 
its ruling was based on unprotectable elements of 
Lego’s Minifigure. Accordingly, as stated above, we 
remand the case to the district court pursuant to 
Jacobson. See Jacobson, 15 F.3d at 22. On remand, the 
district court must use the more discerning observer 
standard stated above to assess whether the Third-
Generation figurines are substantially similar to 
Lego’s Minifigure so as to fall within the scope of 
the preliminary injunction order. In doing so, it must 
not base its finding of substantial similarity on 
unprotectable elements of the Minifigure. The court 
must also assess whether the Third-Generation 
figurines are likely to be confused with Lego’s 
Minifigure. See [Vans, Inc. v. MSCHF Product Studio, 
Inc., 88 F.4th 125, 135–136 (2d Cir. 2023)]. 
  
Mandate at 7, 10–11. The court addresses only the issues it has 
been directed to address by the Mandate. 
I. Substantial Similarity 
To demonstrate that substantial similarity exists between a 
defendant’s work and the protectible elements of a plaintiff’s 
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work, “[t]he plaintiff must show that the defendant appropriated 
the plaintiff’s particular means of expressing an idea, not 
merely that he expressed the same idea. The means of expression 
are the ‘artistic’ aspects of a work; the ‘mechanical’ or 
‘utilitarian’ features are not protectible.” Knitwaves, Inc. v. 
Lollytogs Ltd. (Inc.), 71 F.3d 996, 1002 (2d Cir. 1995) (quoting 
Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 123 
(2d Cir. 1994)). 
The ’104 Registration describes the nature of the work as 
“toy sculptures” and the nature of the authorship as “3-
Dimensional sculpture.” ECF No. 243-1, at 4. The ’230 
Registration describes the nature of the work as “toy sculpture” 
and the nature of the authorship as “3-Dimensional sculpture.” 
ECF No. 243-4, at 3. The copyrighted, sculptural features of 
expression are plainly visible in the exemplary portions of the 
Asserted Copyrights’ deposit materials. 
Both sides incorporated by reference the record from the 
preliminary injunction proceedings and their submissions in 
connection with their cross-motions for summary judgment. See 
Pls.’ Mem. in Supp. of Emergency Mot. for Temporary Restraining 
Order (ECF No. 307) (“Pls.’ Mem.”), at 13–14; Pls.’ Reply in 
Supp. of Emergency Mot. for Temporary Restraining Order (ECF No. 
324) (“Pls.’ Reply”), at 31; Def. ZURU’s Opp. to Pl. TLG’s 
Emergency Mot. for Temporary Restraining Order (ECF No. 313) 
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(“Def.’s Opp.”), at 42.1 Those submissions include the following 
expert reports: The November 8, 2021 expert report by Elizabeth 
B. Knight (ECF No. 322, Ex. A) (the “Knight Report”); the 
December 17, 2021 rebuttal report by Elizabeth B. Knight (ECF 
No. 322, Ex. B) (the “Knight Rebuttal Report”); the November 8, 
2021 expert report of Lee Loetz (ECF No. 312-5, Ex. 1) (the 
“Loetz Report”); and the December 17, 2021 rebuttal expert 
report of Lee Loetz (ECF No. 312-5, Ex. 2) (the “Loetz Rebuttal 
Report”). LEGO also submitted in support of the instant motion 
the Declaration of Elizabeth B. Knight (ECF No. 322) (the 
“Knight Declaration”), and ZURU submitted the Declaration of Lee 
Loetz (ECF No. 312-5) (the “Loetz Declaration”). 
LEGO acknowledges that “the stud projection on top of the 
head (but notably, not its position on the head), the inside 
radius of the c-shaped hands and the holes that receive stud 
projections at the base of the feet and back of legs are 
necessary for attachment and cannot be easily changed through 
alternative designs, yet remain capable of interacting with the 
LEGO Grid System.” Knight Rebuttal Report ¶ 53 (footnote 
omitted). Thus, these features are utilitarian and not 
protectible. 
“[W]here we compare products that contain both protectible 
 
1 The page numbers cited to in this ruling for documents that have been 
electronically filed refer to the page numbers in the header of the documents 
and not to the page numbers in the original documents, if any. 
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and unprotectible elements, our inspection must be ‘more 
discerning’; we must attempt to extract the unprotectible 
elements from our consideration and ask whether the protectible 
elements, standing alone, are substantially similar.” Knitwaves, 
71 F.3d at 1002 (emphasis in original) (internal citations 
omitted).  
No matter which test we apply, however, we have 
disavowed any notion that “we are required to dissect 
[the works] into their separate components, and 
compare only those elements which are in themselves 
copyrightable.” Instead, we are principally guided “by 
comparing the contested design’s ‘total concept and 
overall feel’ with that of the allegedly infringed 
work” as instructed by our “good eyes and common 
sense.” This is so because “the defendant may infringe 
on the plaintiff's work not only through literal 
copying of a portion of it, but also by parroting 
properties that are apparent only when numerous 
aesthetic decisions embodied in the plaintiff's work 
of art--the excerpting, modifying, and arranging of 
[unprotectible components] . . . --are considered in 
relation to one another.” 
Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 
57, 66 (2d Cir. 2010) (alterations in original) (internal 
citations omitted). See also Knitwaves, 71 F.3d at 1003 (“It is 
commonplace that in comparing works for infringement purposes--
whether we employ the traditional ‘ordinary observer’ test or 
the Folio Impressions ‘more discerning’ inquiry--we examine the 
works’ ‘total concept and feel.’”).  
ZURU contends that the Minifigure figurine has 
unprotectible features to a greater extent than is acknowledged 
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by LEGO. ZURU argues that “it is undisputed that copyright law 
does not protect functional features of a product design, which 
here include 15 features that TLG itself has described as 
contributing to the “Functionality of the Lego Minifigure” (Ex, 
A, SOF 9), and many more features that unquestionably facilitate 
functionality like movement, attachment, poseability, and 
compatibility (Ex. A, SOF 9.)[.]” Def.’s Opp., at 29. Paragraph 
9 of ZURU’s Local Rule 56(a)(1) Statement of Undisputed Material 
Facts (ECF No. 236-1) states that “[t]he minifigure has 15 
‘functional’ features relating to ‘assembly,’ ‘poseability,’ and 
‘connectability,’” and relies on, among other things, the Loetz 
Report. In that report, Loetz states that “the Lego minifigure 
is highly ‘functional’ . . . as a standalone figurine (e.g., in 
the way that its elements move, rotate, etc.).” Loetz Report 
¶ 55. He elaborates:  
Based on my own analysis of the Lego minifigure and my 
review of other documents and testimony in the record, 
I have identified all the following ways that the 
minifigure is capable of attachment or movement: 
 
FUNCTIONS OF THE MINIFIGURE 
 
1. Stud on head allows for hair, helmet, hat, 
etc., connection. 
2. Head swivels on neck. 
3. Head is removable to switch with other styles. 
4. Right arm is articulated with a hinge joint. 
5. Left arm is articulated with a hinge joint. 
6. Right hand has a “c-cup” clutching shape. 
7. Right leg is articulated with a hinge joint. 
8. Legs are removable and replac[eable]. 
9. Left leg is articulated with a hinge joint. 
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10. Left hand has a “c-cup” clutching shape. 
11. Back of right leg has fitted “tube” holes to 
snap onto Lego studs. 
12. Back of [left] leg has fitted “tube” holes to 
snap onto Lego studs. 
13. Bottom of right foot has . . . fitted “tube” 
holes to snap onto Lego studs. 
14. Bottom of left foot has . . . fitted “tube” 
holes to snap onto Lego studs. 
15. Individual pieces of minifigure can connect 
to each[ ]other and to other Lego bricks and 
elements in various ways. 
 
Id. ¶ 61. Seven of the features identified by Loetz are the ones 
identified by LEGO. (The difference in the number of features is 
that, while LEGO does not, ZURU counts separately both the right 
hand and the left hand, both the back of the right leg and the 
back of the left leg, and both the bottom of the right foot and 
the bottom of the left foot.) 
Some of the eight remaining features that Loetz describes 
as “functions” of the Minifigure figurine are joints that enable 
movement with respect to the head, the arms, or the legs. (
See 
Items 2, 4, 5, 7, and 9.) The remainder of those features that 
Loetz characterizes as “functions” relate to assembly of the 
Minifigure figurine, i.e., the head and legs are removable and 
individual pieces connect to each other. (See Items 3, 8, and 
15.) 
These features are not utilitarian. “[A] design may evince 
. . . separability, meaning that it has identifiable features 
that were designed independent of functional considerations and 
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which are capable of existing apart from the useful article.” 
LEGO A/S v. Best-Lock Constr. Toys, Inc. (Best-Lock II), 404 F. 
Supp. 3d 583, 611 (D. Conn. 2019). As explained in LEGO A/S v. 
Best-Lock Construction Toys, Inc. (Best-Lock I), “[t]he question 
in each case . . . is whether [an] element is dictated by 
utilitarian considerations or, to put it another way, whether 
the element could be changed without affecting the functionality 
(i.e., capacity for movement and attachment) of the minifigure.” 
874 F. Supp. 2d 75, 99 (D. Conn. 2012).  
LEGO expert Knight states that “the elements Loetz claims 
are functional (the design of the head, arms, torso, legs, and 
feet) can each be designed differently and take another form or 
shape (human or even creature) without 
affecting the capacity of 
the sculpture to move and/or attach.” Knight Rebuttal Report 
¶ 52. Knight demonstrates, using pictures, that “any Minifigure 
figurine movement can be accomplished through multiple 
alternative designs, including all assembly (which is internal) 
or poseability (shown below). . . . The Friends figurine can 
perform almost all of these motions, including internal 
assembly, even though it is a completely different toy figure 
design with a different overall look and feel.” Id. ¶ 54–55 
(accompanying pictures omitted). See also Best-Lock II, 404 F. 
Supp. 3d at 611–12 (“Merely having some incidental effect on the 
nature of that movement, without more, does not make an element 
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‘functional.’”). 
ZURU argues that LEGO “does not attempt to identify what 
the ‘copyright protected expression’ of the minifigure actually 
is,” Def.’s Opp., at 32, and then posits that LEGO’s position as 
to what is the copyright protected expression can be determined 
by looking at a brief LEGO filed in Best-Lock, see id. ZURU also 
argues that LEGO “has waived any argument about which elements 
[of the Minifigure figurine] are protected. Accordingly, the 
Court should deem it undisputed that the features of the 
minifigure that are protected by copyright are limited, at the 
very most, to the combination of: (i) its trapezoidal torso 
which is wider at the bottom and narrower at the top; (ii) its 
square, block-like set of shoulders; (iii) arms extending from 
the upper side of the trunk, slightly below where shoulder 
starts; and (iv) square feet.” Def. ZURU’s Sur-Reply in Further 
Opp. to Pl. TLG’S Emergency Mot. for a Temporary Restraining 
Order (ECF No. 334) (“Def.’s Sur-Reply”), at 6. 
However, LEGO is clear that its claims are based on its 
“copyrights covering the sculpture of its iconic Minifigure 
figurine,” Pls.’ Mem., at 7, 
and it describes the Minifigure 
figurine as a work of art that is recognizable as a unique 
sculptural expression of a human figure. See Knight Report 
¶ 10(b). LEGO maintains that “[c]onsideration of the overall 
look and feel of the [Third-Generation] Figurines (as is 
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required) compels the conclusion that they are substantially 
similar to the Asserted Copyrights.” Pls.’ Reply, at 22. Thus, 
the court agrees with LEGO that ZURU’s reliance on SMS Group is 
misplaced. See Pls.’ Reply, at 25–26. 
In the Knight Rebuttal Report, Knight shows what 
unprotectible elements of the Minifigure figurine must be 
extracted for purposes of conducting the more discerning 
inquiry, namely the stud projection on the top of the head, the 
inside radius of the c-shaped hands and the holes that receive 
stud projections at the base of the feet and the back of the 
legs. See Knight Rebuttal Report ¶ 57. In the Knight 
Declaration, Knight extends the analysis in the Knight Report 
and the Knight Rebuttal Report to the Third-Generation 
Figurines.  
In the Knight Report, Knight shows side-by-side silhouettes 
of the Minifigure figurine and the 2018 
ZURU figurine from the 
front view, the side view, and the top view, and in addition 
shows the results of an overlay of the figurines from each view. 
See Knight Report ¶ 45. Knight provides, in the Knight Report, a 
similar analysis with respect to a comparison between the 
Minifigure figurine and the 2019 redesigned ZURU figurine. See 
Knight Report ¶¶ 47–53. 
In support of the Knight Declaration, Knight provides a 
similar analysis with respect to the Third-Generation Figurines. 
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See Knight Declaration Exs. C, D. Knight’s opinions include the 
following:  
The overall look and feel of each [Third-
Generation] Figurine is substantially similar to the 
overall look and feel of the Asserted Copyrights . . . 
embodied by the LEGO Minifigure figurine as evidenced 
by a side-by-side comparison of photographs of the 
[Third-Generation] Figurines and LEGO Minifigure 
figurine. The [Third-Generation] Figurines and the 
Minifigure figurine incorporate similar combinations 
of geometric shapes with similar overall proportions, 
including rectangular shapes, and slight curves. 
 
By reviewing an overlay of the silhouette of each 
[Third-Generation] Figurine layered upon the 
Minifigure figurine, it is evident that there are only 
miniscule differences between the figurines. 
 
Some of the [Third-Generation] Figurines are 
slightly taller than the Minifigure figurine, have a 
slightly more narrow waist, or slightly higher arms. 
These differences do not change the overall look and 
feel of the figurines. . . . 
 
Knight Decl. ¶¶ 9–11.  
ZURU argues that “when the asserted minifigure copyright is 
properly construed as limited to its features potentially 
protected by copyright, there are no similarities between the 
parties’ figurines at all. Instead, the many discernable 
dissimilarities prevent TLG from showing it is likely to prevail 
on any claim for copyright infringement.” Def.’s Opp., at 34 
(emphasis in original) (internal quotation marks and citations 
omitted). ZURU submits the Loetz Declaration in support of its 
position. Loetz attaches to the Loetz Declaration the Loetz 
Report and the Loetz Rebuttal Report, and extends the analysis 
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in those reports to the Third-Generation Figurines.  
In paragraphs 32 through 38 of the Loetz Declaration, Loetz 
discusses “Differences Between Overall Impression Of Minifigure 
And Third-Generation Figurines,” and in paragraphs 39 through 
42, Loetz discusses “Specific Differences Between Third-
Generation Figurines and Minifigure.”  
With respect to specific differences between the Third-
Generation Figurines and the Minifigure figurine, Loetz states:  
I have also compared the individual elements of the 
minifigure and the Third-Generation Figurines. When 
the parties’ figurines are broken down into their 
component parts (as is an intended part of the play 
pattern as construction toy figurines), there are many 
notable differences between corresponding features of 
the minifigure and the Third-Generation Figurines--and 
hardly any similarities other than that the features 
are intended to represent the same human body parts 
and be roughly the same size so they can connect with 
the same construction toy elements. 
  
Loetz Decl. ¶ 39. Loetz continues: “Below is a summary of 
differences between the heads/necks, shoulders/torsos, 
arms/hands, waists, and legs/feet of each version of the Third-
Generation Figurines and the minifigure.” Id. ¶ 40. However, 
Loetz’s methodology for conducting the “more discerning inquiry” 
is contrary to the manner in which that test must be applied. As 
explained in Gaito, “we have disavowed any notion that ‘we are 
required to dissect [the works] into their separate components, 
and compare only those elements which are in themselves 
copyrightable.’ Instead, we are principally guided ‘by comparing 
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the contested design’s “total concept and overall feel” with 
that of the allegedly infringed work’ as instructed by our ‘good 
eyes and common sense.’” 602 F.3d at 66 (citations omitted)). 
With respect to the total concept and overall feel of the 
Third-Generation Figurines versus the Minifigure figurine, Loetz 
states:  
As noted, it is my opinion that [for] the Third-
Generation Figurines, Zuru has further emphasized the 
differences between the prior versions of its 
figurines and the minifigure, which leads to the 
Third-Generation Figurines having an even more 
different overall impression from the minifigure than 
the prior versions. 
 
Attached as Exhibit 3 are photos of each version 
of the Third-Generation Figurines next to a 
minifigure, in the form of the below example (which 
shows Third-Generation Figurine Version 7): [Photo 
omitted.] 
 
Overall, the Zuru figurines are smaller, 
“skinnier,” less smooth, more “movable,” and more 
human-like than the minifigure. Contrary to the 
angular body shape of the minifigure, Zuru’s figurines 
are more natural and organic in their appearance. They 
have rounded shoulders and legs. The shoulders, necks, 
and heads flow together more organically than the 
minifigure. They have ears on the sides of their 
heads, and chin/lower jaw definition. 
 
The Third-Generation Figurines have muscular 
definition in the shoulders (deltoids), chest, arms, 
and legs. The shoulders are broad and the waists are 
more narrow, as in a muscular, masculine human form. 
These features cause the Third-Generation Figurines to 
look more like “action figures” than construction-toy 
figurines (like the minifigure). 
 
Loetz Decl. ¶¶ 32–35. The photos in Exhibit 3 show a front view 
only of the Third-Generation Figurine and a Minifigure figurine.  
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In paragraph 54 of the Loetz Declaration, Loetz provides 
overlay images which compare, among other things, the shapes of 
the Minifigure figurine and two versions of the Third-Generation 
figurines. Unlike Knight, and despite the fact that what is at 
issue here is a copyright for a three-dimensional sculpture, 
Loetz provides only the front view; he does not provide overlay 
images comparing the shapes from the side view or the top view. 
Thus, the overlay comparison Loetz presents with respect to the 
overall look and feel of the Third-Generation Figurines versus 
the Minifigure figurine is deficient because it leaves out two 
of the three dimensions. On the other hand, Knight properly 
supports her opinions that: “The changes made to the 2019 
Redesigned Figurines do not come close to altering the overall 
look and feel. . . . Mr. Loetz attempts to point out differences 
between the [Third-Generation] Figurines and the 2019 Redesigned 
Figurines. However, the ‘differences’ are so small in their 
visual effect that they have negligible, if any, effects on the 
overall visual expression as evidenced by the overlays shown in 
Exhibit C-D.” Knight Decl. ¶¶ 15–16. As Knight stated in the 
Knight Report, “[b]y reviewing an overlay of each figure, you 
can see that the basic elements of height, width, head size and 
proportion of head to bodies are almost identical. These 
similarities in terms of scale and proportion, i.e. the length 
of the leg, the shape of the leg, the proportions or size of the 
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torso and the head, are all part of the overall look and feel of 
the figure. Tiny differences do not change the overall look and 
feel of the figure.” Knight Report ¶ 46. 
II. Likelihood of Confusion 
In evaluating the likelihood of confusion, courts in this 
circuit look to the Polaroid factors: 
(1) the strength of the senior mark; (2) the degree of 
similarity between the two marks; (3) the proximity of 
the products; (4) the likelihood that the prior owner 
will “bridge the gap”; (5) actual confusion; (6) the 
defendant's good faith (or bad faith) in adopting its 
own mark; (7) the quality of defendant's product; and 
(8) the sophistication of the buyers. Moreover, 
depending on the complexity of the issues, “the court 
may have to take still other variables into account.” 
 
Savin Corp. v. Savin Grp., 391 F.3d 439, 456 (2d Cir. 2004) 
(quoting Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 
495 (2d Cir. 1961)) (internal citations omitted). “[T]he list of 
Polaroid factors is not exclusive and the analysis of the 
factors is not a mechanical process.” Merriam-Webster, Inc. v. 
Random House, Inc., 35 F.3d 65, 70 (2d Cir. 1994) (internal 
citations and quotation marks omitted). “[E]ach factor must be 
evaluated in the context of how it bears on the ultimate 
question of likelihood of confusion as to the source of the 
product.” Brennan’s, Inc. v. Brennan’s 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, 872 (2d Cir. 1986)).  
The Asserted Trademark consists of  
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the three-dimensional configuration of a toy figure 
featuring a cylindrical head, on top of a cylindrical 
neck, on top of a trapezoidal torso of uniform 
thickness, with flat sides and a flat back, where arms 
are mounted slightly below the upper surface of the 
torso, on top of a rectangular plate, on top of legs 
which bulge frontwards at the top and are otherwise 
rectangular with uniform thickness, on top of flat 
square feet. 
ECF No. 243-7, at 2 (original in all caps). The mark is depicted 
in a single drawing in the registration. See ECF No. 243-9, at 
8. 
After evaluating the Polaroid factors in light of the 
record here, the court concludes that LEGO is likely to be able 
to establish that the Third-Generation Figurines are likely to 
cause confusion. This is so because LEGO is likely to be able to 
show that each of the six Polaroid factors that bear on the 
ultimate question of likelihood of confusion as to the source of 
the products at issue here supports such a conclusion. 
A. Strength of the Mark 
“When determining a mark’s strength, courts consider both 
the mark’s inherent distinctiveness, based on the 
characteristics of the mark itself, and its acquired 
distinctiveness, based on associations the mark has gained 
through use in commerce.” CSL Silicones, Inc. v. Midsun Grp. 
Inc., 301 F. Supp. 3d 328, 356–57 (D. Conn. 2018). “The Supreme 
Court has held that unlike word marks and product-packaging 
trade dress, product-design trade dress can never be inherently 
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distinctive.” Converse, Inc. v. Int’l Trade Comm’n Skechers 
U.S.A., Inc., 909 F.3d 1110, 1116 (Fed. Cir. 2018). In 
evaluating a mark’s acquired distinctiveness, the court may 
examine “copying, advertising expenditures, sales success, 
length and exclusivity of use, unsolicited media coverage, and 
consumer studies (linking the name to a source).” In re 
Steelbuilding.com, 415 F.3d 1293, 1300 (Fed. Cir. 2005). “A 
showing of secondary meaning need not consider each of these 
elements. Rather, the determination examines all of the 
circumstances involving the use of the mark.” Id. 
In ruling on an earlier motion by LEGO for injunctive 
relief, the court concluded that “[t]he mark of the LEGO Group’s 
Minifigure figurine is strong based on the extrinsic evidence 
presented by the plaintiffs, which includes, inter alia, a 
federally-registered trademark; substantial expenditures on 
promotional and marketing efforts; a long and continuous use of 
the mark since 1978; third-party licensing agreements; the 
substantial revenue from products and services connected to the 
Minifigure Trademark; and the widespread public exposure and 
recognition of the Minifigure figurine.” Ruling on Mot. for 
Preliminary Injunction (ECF No. 86), at 18. The record as it 
currently stands still supports that conclusion. LEGO has 
submitted evidence that between 1978 and 2015, it spent in 
excess of $200 million on advertising and promotion, and that 
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the approximate number of Minifigures sold in the United States 
from 1978 to 2015 was in excess of 120 million. See Pls.’ Mem. 
in Supp. of Mot. for Partial Summ. J. (ECF No. 246) (“Pls.’ 
Summ. J. Mem.”), at 43. With respect to length and exclusivity 
of use, LEGO has submitted evidence that the Minifigure figurine 
was first sold in 1978, and had been sold for approximately 37 
years before the application for the Asserted Trademark was 
filed. See id. It has also submitted evidence that LEGO has 
authorized licensees, and that it takes steps to police 
activities by infringers. See id. at 43–44.  
ZURU argues that “[t]here is no evidence that Lego has a 
strong mark in the body form of a blank, undecorated minifigure—
which is the most Lego’s trade dress protects.” Def.’s Mem. in 
Supp. of Mot. for Summ. J. (ECF No. 236) (“Def.’s Summ. J. 
Mem.”), at 54. However, as LEGO has pointed out, “ZURU cites no 
authority for its position that varying decorative elements 
render the Minifigure figurine trade dress unrecognizable, and 
such argument is belied by the fact that the Trademark Office 
registered the Minifigure figurine trade dress despite being 
aware of the various ways in which the Minifigure figurine may 
be adorned.” Pls.’ Mem. in Opp. to Def.’s Mot. for Summ. J. (ECF 
No. 262) (“Pls.’ Summ. J. Opp.”), at 54. 
Based on the foregoing, LEGO is likely to be able to show 
that the Asserted Trademark is strong. 
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B. Degree of Similarity Between the Two Marks 
“Similarity” turns on whether the competing marks create 
the “same general overall impression” when viewed separately. 
Paco Rabanne Parfums, S.A. v. Norco Enters., Inc., 680 F.2d 891, 
893 (2d Cir. 1982) (quoting RJR Foods, Inc. v. White Rock Corp., 
603 F.2d 1058, 1060 (2d Cir. 1979)). Courts consider “1) whether 
the similarity between the two marks is likely to cause 
confusion and 2) what effect the similarity has upon prospective 
purchasers.” Sports Auth., Inc. v. Prime Hosp. Corp., 89 F.3d 
955, 962 (2d Cir. 1996). 
LEGO is likely to be able to show that there is a high 
degree of similarity between the Minifigure figurine and the 
Third
-Generation Figurines. Knight’s analysis in the Knight 
Declaration with respect to the Third-Generation Figurines 
addresses the Asserted Trademark as well as the Asserted 
Copyrights. See Knight Decl. ¶ 9 (“The overall look and feel of 
each [Third-Generation] Figurine is substantially similar to the 
overall look and feel of the Asserted Copyrights and Asserted 
Trademark[] embodied by the LEGO Minifigure figurine as 
evidenced by a side-by-side comparison of photographs of the 
Proposed Figurines and LEGO Minifigure figurine.”). Based on her 
analysis, Knight concludes that “[a]n ordinary observer would 
consider them to be substantially similar, particularly when 
displayed in product packaging. This is particularly true 
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because adult purchasers of toys generally do not inspect 
individual details close enough to recognize differences.” Id. 
¶ 11. The Loetz Declaration also addresses the Asserted 
Trademark, but for the reasons discussed above with respect to 
Loetz’s analysis on the question “substantial similarity,” the 
court concludes that his analysis is deficient. In that part of 
his analysis where he points to discrete differences between the 
Minifigure figurine and the Third-Generation Figurines, Loetz 
fails to address the question of whether the same general 
overall impression is created, and in that part where he does 
focus on the overall impression, he bases his analysis on 
viewing the three-dimensional configuration of toy figures from 
only one perspective. In addition, Loetz does not dispute that 
the toys are displayed in product packaging, nor that adult 
purchasers of toys generally do not inspect individual details 
closely enough to recognize differences. 
C. Proximity of the Products 
The proximity of the products is concerned with the 
“competitive distance between the products.” McGregor-Doniger 
Inc. v. Drizzle Inc., 599 F.2d 1126, 1134 (2d Cir. 1979).  
The “proximity-of-the-products” inquiry concerns 
whether and to what extent the two products compete 
with each other. We look to the nature of the products 
themselves and the structure of the relevant market. 
Among the considerations germane to the structure of 
the market are the class of customers to whom the 
goods are sold, the manner in which the products are 
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advertised, and the channels through which the goods 
are sold.  
 
Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480 (2d Cir. 
1996) (internal quotation marks and citations omitted). In its 
summary judgment papers, ZURU argues that “[this] factor do[es] 
not support a finding of likely confusion because Zuru was 
admittedly--and upon Walmart’s express request--trying to design 
a figurine that was ‘completely compatible’ with Lego.” Def.’s 
Summ. J. Mem., at 55. But the record continues to reflect, as it 
did at the time of the ruling on LEGO’s previous motion for 
injunctive relief, that both LEGO’s and ZURU’s “products are toy 
figurines and toy construction products, and there is no 
difference between them in terms of the relevant market they 
target.” Ruling on Mot. for Preliminary Injunction (ECF No. 86), 
at 21. 
 Thus, LEGO is likely to be able to show that the proximity 
of the products supports a conclusion that there is a likelihood 
of confusion. 
D. Likelihood that the Prior Owner Will “Bridge the Gap” 
With respect to this factor, the court evaluates “whether 
the senior user of the mark is likely to enter the market in 
which the junior user is operating, that is, bridge the gap. If 
the senior user can show such an intention, it helps to 
establish a future likelihood of confusion as to source.” 
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Centaur Commc’ns, Ltd. v. A/S/M Commc’ns, Inc., 830 F.2d 1217, 
1227 (2d Cir. 1987). Here, there is no gap to be bridged because 
both LEGO and ZURU already sell toy figurines and toy 
construction products. Thus, this factor does not bear on the 
ultimate question of likelihood of confusion as to the source of 
the product. 
E. Actual Confusion 
“For purposes of the Lanham Act, actual confusion means 
consumer confusion that enables a seller to pass off his goods 
as the goods of another.” The Sports Auth., Inc. v. Prime Hosp. 
Corp., 89 F.3d 955, 963 (2d Cir. 1996) (internal quotation marks 
and citations omitted). But “actual confusion need not be shown 
to prevail under the Lanham Act, since actual confusion is very 
difficult to prove and the Act requires only a likelihood of 
confusion as to source.” Lois Sportswear, U.S.A., Inc. v. Levi 
Strauss & Co., 799 F.2d 867, 875 (2d Cir. 1986).  
 ZURU contends that “[t]he record demonstrates the 
affirmative absence of actual confusion.” Def.’s Opp., at 43. To 
support this contention it relies on a survey conducted by its 
expert, Dr. Bruce Isaacson, and submitted in connection with the 
cross-motions for summary judgment. ZURU asserts: “Moreover, any 
association between the parties’ figurines resulted from the 
fact that they are both tiny, plastic, compatible construction-
toy figurines—not from the asserted trade dress elements. Again, 
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because the Third-Generation Figur[ines] are even more 
different, actual confusion is even less likely.” Id. (citation 
omitted).  
 As noted above, actual confusion is not required
 ; a 
likelihood of confusion as to source is sufficient. Based on her 
comparisons of the Third-Generation Figurines and the Minifigure 
figurine, and her conclusion that “adult purchasers of toys 
generally do not inspect individual details close enough to 
recognize differences,” Knight Decl. ¶ 11, Knight concludes that 
“[f]or the same reasons set forth in the Knight Report, and 
given the minor differences between the [Third-Generation] 
Figurines and the Minifigure figurine, consumers are likely to 
be confused, deceived or mistaken as to the source of the 
[Third-Generation] Figurines,” id. ¶ 12 (footnote omitted). To 
the extent that Loetz’s analysis and conclusions bear on the 
issue of likelihood of confusion, for the reasons discussed 
above with respect to Loetz’s analysis on the question of 
“substantial similarity” and the degree of similarity between 
the two marks, the court concludes that his analysis is 
deficient. 
 Based on the foregoing, LEGO is likely to be able to show 
that this factor supports a conclusion that there is a 
likelihood of confusion. 
 
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F. The Defendant’s Good Faith (Or Bad Faith) in Adopting 
Its Own Mark 
 
To evaluate this factor, the court “looks to whether the 
defendant adopted its mark with the intention of capitalizing on 
plaintiff's reputation and goodwill and any confusion between 
his and the senior user’s product.” Lang v. Ret. Living Pub. 
Co., 949 F.2d 576, 583 (2d Cir. 1991). Additionally, “actual or 
constructive knowledge may signal bad faith.” Mobil Oil Corp. v. 
Pegasus Petroleum Corp., 818 F.2d 254, 259 (2d Cir. 1987) 
(internal quotation marks omitted).  
ZURU argues: 
There is no basis to conclude that, through its 
Third-Generation Figurine, Zuru intends to “deceive or 
confuse” consumers about an association between its 
figurines and TLG. To the contrary, Zuru took pains to 
include a great number of substantial modifications, 
in a good-faith attempt to comply with the Court’s 
Contempt Order—and it has unquestionably done nothing 
to make its figurines more like the minifigure than 
its prior versions (and thus potentially more likely 
to be confused with the minifigure). Further, as 
noted, Zuru has always avoided many signature 
characteristics of the minifigure, including its 
yellow head and hands and facial decorations, which 
also shows Zuru has no intent to confuse consumers. 
Zuru also relied on TLG’s admissions regarding 
differently sculpted figurines (such as Kre-O and 
Mega) as part of its design process for its Third-
Generation Figurines. 
 
Def.’s Opp., at 43. However, the pictures in both the Loetz 
Declaration, see ¶ 31, and the Knight Declaration, see ¶¶ 13–16, 
coupled with the fact that ZURU was put on notice in the 
Contempt Order, at 21, that it “had an obligation to keep a 
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‘safe distance’ from infringing conduct going forward,” support 
LEGO’s position that it will likely be able to show that what it 
said in its summary judgment papers is true with respect to the 
Third-Generation Figurines:  
ZURU’s bad faith argument fails to address that 
not only did ZURU repeatedly reference the Minifigure 
figurine throughout its truncated design process, it 
also designed a figurine that was confusingly similar 
to it – twice. Indeed, it is undisputed that ZURU knew 
of the Asserted Trademark when it designed the MAX 
Products, and it reviewed the Minifigure figurine 
throughout the design process. Def.’s 56(a)(2) ¶¶ 23, 
26. These undisputed facts, coupled with the striking 
similarities between the Minifigure figurine and the 
MAX Figurines, evidence ZURU’s bad faith. . . .  
 
. . . . 
 
. . . The fact that ZURU claims to have made efforts 
to depart from fully recreating the Minifigure 
figurine does nothing to change the fact that it was 
intimately aware of the level of similarity between 
the two products, and did nothing to avoid the 
likelihood of confusion. 
 
Pls.’ Reply Memo. in Further Supp. of Pls.’ Mot. for Partial 
Summ. J. (ECF No. 281) (“Pls.’ Summ. J. Reply”), at 42–43.  
 ZURU states that the fact that it has avoided many 
signature characteristics of the Minifigure figurine, including 
its yellow head and hands and facial decorations, is evidence of 
an absence of bad faith. However, as pointed out by LEGO in its 
summary judgment papers, this “is yet another improper attempt 
to dissect the relevant marks, and is also unavailing because 
neither of those features are claimed in the Asserted 
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Trademark.” Id. at 40 (footnote omitted). 
ZURU purports to rely on “admissions” by LEGO, and it 
refers to a “shift in positions” by LEGO. Def.’s Sur-Reply, at 
9-10. The statements relied on by ZURU were the subject of the 
court’s Ruling on Defendants’ Motion to Dissolve Preliminary 
Injunction (ECF No. 297) (“Ruling on Motion to Dissolve”). In 
the Ruling on Motion to Dissolve, the court concluded that “Zuru 
cannot show that a factual position taken by the Lego Group in 
this case is clearly inconsistent with a factual position it 
took in Best-Lock.” Id. at 13. As ZURU points out, the court did 
state: “As the LEGO Group contends, ‘[a]t most, statements about 
whether particular KRE-O or MEGA Bloks figurines do or do not 
infringe the Minifigure Copyrights “may be impeaching” and a 
proper subject for cross-examination.’ Pls.’ Opp. at 23 
(quoting Remcor Products Co. v. Scotsman Group, Inc., 860 F. 
Supp. 575, 579 (N.D. Ill. 1994)).” Id. at 17. 
But ZURU does not offer any explanation of how the fact 
that such statements could be offered by it at trial (and almost 
certainly objected to) tends to support a conclusion that ZURU’s 
design process with respect to the Third-Generation Figurines 
was undertaken in good faith. LEGO describes that design process 
as follows: 
Consistent with its “design” process for the MAX 
Figurine and Redesigned Figurine, it appears Zuru, 
once again, merely started with the Redesigned 
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Figurine, compared it to the Minifigure figurine, and 
shaved off or added millimeters of plastic. Zuru has 
yet to undertake a creative design process that did 
not begin with the Minifigure figurine. Indeed, the 
[Third-Generation] Figurines are nearly identical to 
versions of the Redesigned Figurine that Zuru 
considered in its truncated “redesign process.” See 
Exhibit 2. Exhibit 3 includes a mix of images of 
figurines6 considered in Zuru’s truncated “redesign” 
process along with the [Third-Generation] Figurines. 
It is virtually impossible to ascertain which version 
is which.
7 This only underscores that Zuru, once again, 
did not undertake any meaningful creative design 
process in connection with designing the [Third-
Generation] Figurines. 
 
[Footnote 6: Because these images were taken from 
multiple different documents, each prepared by Zuru, 
the scaling in the demonstrative exhibits is not 
perfect.] 
 
[Footnote 7: An answer key is provided on the 
bottom of page 2 of Exhibit 3.] 
 
Pls.’ Mem., at 20. LEGO is likely to be able to show that the 
process described in the Loetz Declaration can be fairly 
described as a “truncated redesign process.”  
All of the foregoing must be viewed in the context of 
ZURU’s actions throughout the course of this litigation, as 
summarized in LEGO’s reply, see Pls.’ Reply, at 8–10. Also, the 
court notes that while LEGO quotes from the Contempt Order, 
there are significant parts of the Contempt Order that it does 
not quote. 
Based on the foregoing, LEGO is likely to be able to show 
that this factor supports a conclusion that there is a 
likelihood of confusion. 
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G. Quality of the Defendant’s Product 
This factor does not bear on the ultimate question of 
likelihood of confusion because ZURU has only “manufactured two 
prototypes of each version of the Third-Generation Figurines.” 
See Notice, at 11 n.6. 
H. Sophistication of the Buyers 
“In evaluating the sophistication of the buyers, ‘the 
general impression of the ordinary purchaser, buying under the 
normally prevalent conditions of the market and giving the 
attention such purchasers usually give in buying that class of 
goods, is the touchstone.’” Pro. Sound Servs., Inc. v. Guzzi, 
349 F. Supp. 2d 722, 735 (S.D.N.Y. 2004) (quoting McGregor-
Doniger, 599 F.2d at 1137), aff’d, 159 F. App’x 270 (2d Cir. 
2005). 
The parties do not specifically address this factor as it 
applies to the Third-Generation Figurines. But the following 
analysis, which was included in the Ruling on Motion for 
Preliminary Injunction, appears to be applicable here: 
Here, as the plaintiffs point out, the relevant 
product is a set of toy figures selling for $12.97. 
The court agrees with the plaintiffs that the purchase 
of inexpensive toy figures, intended for use by 
children, does not require a high degree of 
sophistication. Moreover, the concern about confusion 
is heightened by the fact that, as stated by the 
defendant’s expert, “[i]t’s harder for an adult” to 
notice differences, as “[a]n adult looks very briefly. 
They don’t pay a lot of attention,” Prelim. Inj. Hrg. 
Tr. (ECF No. 65), at 153:20-22 (testimony of 
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Gottlieb); see also id. (ECF No. 66), at 224:9-14 
(testimony of Knight) (“moms and dads aren’t paying as 
close attention as some kids do. They’re busy, and 
shopping the way shopping is today, they’re running 
through the aisles quickly. So if they look at a 
product for a couple seconds, they can easily be 
confused.”). 
 
Ruling on Mot. for Preliminary Injunction (ECF No. 86), at 25.  
Thus, LEGO is likely to be able to show that this factor 
supports a conclusion that there is a likelihood of confusion.  
III. Conclusion 
Accordingly, the court has concluded that LEGO has 
established that the Third-Generation Figurines fall within the 
scope of the preliminary injunction order. 
Dated this 28th day of May 2025, at Hartford, Connecticut. 
 
 
         /s/AWT        
        Alvin W. Thompson 
       United States District Judge 
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