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govinfo:USCOURTS-ctd-3_18-cv-02045-2
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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,
:
:
:
:
:
v.
ZURU INC.,
Defendant.
:
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:
:
:
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RULING ON CROSS-MOTIONS FOR SUMMARY JUDGMENT
I. BACKGROUND ................................................ 3
II. LEGAL STANDARD .......................................... 5
III. DISCUSSION .............................................. 8
A. Claim for Copyright Infringement (Count I) and Copyright
Non-Infringement and Invalidity Defenses and Counterclaims ... 8
1. First Element of Feist Test: Ownership of Valid
Copyright .................................................. 9
a. Ownership; Presumption of Validity ................... 10
b. The Statutory Notice Requirements .................... 15
c. Fraud on the Copyright Office ........................ 32
d. Invalidity as Functional, Useful Article ............. 35
e. Patent and Copyright Clause of the Constitution ...... 43
2. Second Element of the Feist Test: Illegal Copying .... 44
a. Actual Copying ....................................... 45
b. The Copying is Illegal ............................... 48
B. Claims for Trademark Infringement (Counts II and III); and
Trademark Non-Infringement and Invalidity Defenses and
Counterclaims ............................................. 66
1. First Element: Valid Trademark Entitled to Protection 68
a. Distinctiveness ...................................... 70
b. Functional Trade Dress ............................... 79
i. Composition of the Asserted Trademark............... 84
ii. First Prong: Essential to Use or Purpose .......... 94
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iii. Second Prong: Affects Cost or Quality ........... 97
iv. Third Prong: Putting Competitors at a Significant,
Non-Reputational Disadvantage ......................... 103
c. Fraud on the USPTO .................................. 110
d. Inconsistent Appearance ............................. 116
e. Abandonment ......................................... 118
2. Second Element: Consumer Confusion .................. 120
a. Strength of the Mark ................................ 121
b. Degree of Similarity Between the Two Marks .......... 124
c. Proximity of the Products ........................... 137
d. Likelihood that the Prior Owner Will “Bridge the Gap” 139
e. Actual Confusion .................................... 140
f. The Defendant’s Good Faith (Or Bad Faith) in Adopting
Its Own Mark .......................................... 156
g. Quality of the Defendant’s Product .................. 161
h. Sophistication of the Buyers ........................ 163
i. Balancing the Polaroid Factors ...................... 168
C. Claim for Common Law Trademark and Trade Dress
Infringement, Unfair Competition, and Misappropriation (Count
IV) ...................................................... 171
D. Claim for Violation of CUTPA (Count VII) .............. 172
E. Equitable Defenses (Fifteenth Defense) ................ 174
IV. CONCLUSION ............................................ 176
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I. BACKGROUND
Plaintiffs LEGO A/S (“LAS”), LEGO Systems, Inc. (“LSI”),
and LEGO Juris A/S (“LJAS”) (collectively, “LEGO”) and defendant
Zuru Inc. (“Zuru”) have filed cross-motions for summary
judgment. At issue in the cross-motions are the following
copyrights and trademark owned by LEGO: copyrights registered
with the United States Copyright Office at Registration Numbers
VA0000655230 and VA0000655104 (the “Asserted Copyrights”), and a
trademark registered with the United States Patent and Trademark
Office (“USPTO”) at Registration Number 4,903,968 (the “Asserted
Trademark”).
The Asserted Copyrights and the Asserted Trademark relate
to LEGO’s Minifigure figurine. LEGO sells decorated toy
minifigurines (“LEGO Minifigures”), which are developed based on
the Minifigure figurine. Zuru has developed two versions of its
own decorated toy figures (“MAX Figures”). The first version
(“First Generation MAX Figures”) was developed before LEGO filed
this action. The second version (“Second Generation MAX
Figures”) was developed after LEGO filed this action.
LEGO has filed a seven count Complaint (ECF No. 1), and
Zuru, Inc.’s Answer and Counterclaims (ECF No. 94) contains
sixteen affirmative defenses and fifteen counterclaims. A number
of claims in the Complaint and a number of Zuru’s defenses and
counterclaims are not at issue in the cross-motions for summary
Case 3:18-cv-02045-AWT Document 370 Filed 04/02/26 Page 3 of 177
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judgment. LEGO moves for partial summary judgment as to
liability on the following claims in the Complaint: Count I
(copyright infringement of the Minifigure figurine), Counts II
and III (trademark infringement with respect to the Minifigure
figurine in violation of 15 U.S.C. §§ 1114(a) and 1125(a)(1)(A),
respectively) and Count VII1 (violation of the Connecticut Unfair
Trade Practices Act, Conn. Gen. Stat. § 42-110a, et seq.
(“CUTPA”)). LEGO also moves for summary judgment on Zuru’s First
and Second Defenses and Counterclaim Counts III and IV
(copyright non-infringement and invalidity); Third and Fourth
Defenses and Counterclaim Counts V and VI (trademark non-
infringement and invalidity); and Fifteenth Defense (equitable
defenses of waiver, ratification, acquiescence, laches, unclean
hands, and estoppel). See LEGO Mot. for Partial Summ. J. (ECF
No. 245).
Zuru moves for summary judgment on the following claims in
the Complaint: Count I (copyright infringement of the Minifigure
figurine), Count II (trademark infringement with respect to the
Minifigure figurine in violation of 15 U.S.C. § 1114(a)), Count
IV (common law trademark and trade dress infringement, unfair
competition, and misappropriation) and Count VII (violation of
CUTPA). Zuru’s motion does not include its affirmative defenses
1 The motion refers to this as Count IV, but based on the fact that LEGO
spells out the name of the statute and gives the statutory citation, the
court takes the motion to refer to Count VII.
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and counterclaims. See Zuru Mot. for Summ. J. (ECF No. 237).
For the reasons set forth below, LEGO’s motion is being
granted in part and denied in part; it is being denied with
respect to Count VII (the CUTPA claim) and being granted in all
other respects. Zuru’s motion is being denied.
II. LEGAL STANDARD
A motion for summary judgment may not be granted unless the
court determines that there is no genuine issue of material fact
to be tried and that the facts as to which there is no such
issue warrant judgment for the moving party as a matter of law.
Fed. R. Civ. P. 56(a). See Celotex Corp. v. Catrett, 477 U.S.
317, 322-23 (1986); Gallo v. Prudential Residential Servs., 22
F.3d 1219, 1223 (2d Cir. 1994). Rule 56(c) “mandates the entry
of summary judgment . . . against a party who fails to make a
showing sufficient to establish the existence of an element
essential to that party’s case, and on which that party will
bear the burden of proof at trial.” Celotex Corp., 477 U.S. at
322.
When ruling on a motion for summary judgment, the court
must respect the province of the jury. The court, therefore, may
not try issues of fact. See, e.g., Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 255 (1986); Donahue v. Windsor Locks Bd. of
Fire Comm’rs, 834 F.2d 54, 58 (2d Cir. 1987); Heyman v. Commerce
of Indus. Ins. Co., 524 F.2d 1317, 1319-20 (2d Cir. 1975). It is
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well-established that “[c]redibility determinations, the
weighing of the evidence, and the drawing of legitimate
inferences from the facts are jury functions, not those of the
judge . . . .” Anderson, 477 U.S. at 255. Thus, the trial
court’s task is “carefully limited to discerning whether there
are any genuine issues of material fact to be tried, not
deciding them. Its duty, in short, is confined . . . to issue-
finding; it does not extend to issue-resolution.” Gallo, 22 F.3d
at 1224.
Summary judgment is inappropriate only if the issue to be
resolved is both genuine and related to a material fact.
Therefore, the mere existence of some alleged factual dispute
between the parties will not defeat an otherwise properly
supported motion for summary judgment. An issue is “genuine
. . . if the evidence is such that a reasonable jury could
return a verdict for the nonmoving party.” Anderson, 477 U.S. at
248 (internal quotation marks omitted). A material fact is one
that would “affect the outcome of the suit under the governing
law.” Id. As the Court observed in Anderson: “[T]he materiality
determination rests on the substantive law, [and] it is the
substantive law’s identification of which facts are critical and
which facts are irrelevant that governs.” Id.
When reviewing the evidence on a motion for summary
judgment, the court must “assess the record in the light most
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favorable to the non-movant . . . and draw all reasonable
inferences in [the non-movant’s] favor.” Weinstock v. Columbia
Univ., 224 F.3d 33, 41 (2d Cir. 2000) (quoting Delaware & Hudson
Ry. Co. v. Consolidated Rail Corp., 902 F.2d 174, 177 (2d Cir.
1990) (alteration and omission in original)). Nonetheless, the
inferences drawn in favor of the nonmovant must be supported by
the evidence. “[M]ere speculation and conjecture is insufficient
to defeat a motion for summary judgment.” Stern v. Trustees of
Columbia Univ., 131 F.3d 305, 315 (2d Cir. 1997) (Calabresi, J.,
dissenting) (internal quotation marks omitted) (quoting W. World
Ins. Co. v. Stack Oil, Inc., 922 F.2d 118, 121 (2d Cir. 1990)).
Also, the nonmoving party cannot simply rest on the
allegations in its pleadings since the essence of summary
judgment is to go beyond the pleadings to determine if a genuine
issue of material fact exists. See Weinstock, 224 F.3d at 41.
“Although the moving party bears the initial burden of
establishing that there are no genuine issues of material fact,”
id., if the movant demonstrates an absence of such issues, a
limited burden of production shifts to the nonmovant, who must
“demonstrate more than some metaphysical doubt as to the
material facts, . . . [and] must come forward with specific
facts showing that there is a genuine issue for trial,”
Aslanidis v. United States Lines, Inc., 7 F.3d 1067, 1072 (2d
Cir. 1993) (emphasis, quotation marks and citations omitted).
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“Accordingly, unsupported allegations do not create a material
issue of fact.” Weinstock, 224 F.3d at 41. If the nonmovant
fails to meet this burden, summary judgment should be granted.
III. DISCUSSION
A. Claim for Copyright Infringement (Count I) and Copyright
Non-Infringement and Invalidity Defenses and Counterclaims
Works of authorship protected by the Copyright Act include
“pictorial, graphic, and sculptural works.” 17 U.S.C. §
102(a)(5). The copyright registered with the United States
Copyright Office at Registration Number VA0000655104 describes
the nature of the work as “toy sculptures” and the nature of the
authorship as “3-Dimensional sculpture.” Pls.’ Ex. 1 (ECF No.
243-1) at 4. The copyright registered with the United States
Copyright Office at Registration Number VA0000655230 describes
the nature of the work as “toy sculpture” and the nature of the
authorship as “3-Dimensional sculpture.” Pls.’ Ex. 4 (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.
The embodiment of the three-dimensional design covered by
the Asserted Copyrights is set forth in paragraph 24 of the
report of LEGO’s expert, Elizabeth Knight. See Pls.’ Ex. 33, Ex.
A, Expert Report of Elizabeth B. Knight (ECF No. 247-13). Knight
provides an analysis of the “design and visual expression of the
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Minifigure figurine.” Id. ¶ 24. Knight’s analysis is as follows:
The overall design of the Minifigure figurine is a simple,
yet thoughtful and elegant combination of geometric shapes
that together express the human form. As shown in the
images above, the Minifigure figurine has ornamental design
features comprised of basic shapes, square, flat surfaces,
edges made of right angles and slight curves. These
individual shapes and forms together create an overall look
and feel of the Minifigure figurine. Integral to that
expression are the relative proportions such as; overall
height to overall width, head height to body height, length
of legs to overall height. Proportions are important to the
overall look and feel as the individual shapes that make up
the whole.
The aesthetic design is not entirely realistic. The design
of the Minifigure figurine is a simplified human form,
inspired by construction brick elements and aesthetically
and thematically similar. The Minifigure figurine visually
fits in the construction play environment because it
reflects combinations of geometric forms that exist in that
world.
Id. ¶¶ 25–26.
To establish copyright infringement, “two elements must be
proven: (1) ownership of a valid copyright, and (2) copying of
constituent elements of the work that are original.” Feist
Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).
1. First Element of Feist Test: Ownership of Valid Copyright
With respect to the first element of the Feist test, LEGO
contends that it is entitled to a presumption of validity with
respect to the Asserted Copyrights, and Zuru maintains that the
court should not presume that the Asserted Copyrights are valid.
Zuru contends that the Asserted Copyrights are invalid for
failure to comply with statutory notice requirements; invalid
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for fraud on the Copyright Office; invalid as functional, useful
articles; and invalid under the Patent and Copyright Clause of
the United States Constitution.
a. Ownership; Presumption of Validity
There is no genuine issue as to the fact that LEGO owns the
Asserted Copyrights nor any genuine issue as to the fact that
they are registered with the United States Copyright Office.
The Copyright Act of 1976, 17 U.S.C. §§ 101-805, as amended
(the “1976 Copyright Act”), provides that a certificate of
registration “shall constitute prima facie evidence of the
validity of the copyright and of the facts stated in the
certificate” when the registration is made “before or within
five years after first publication of the [registered] work.” 17
U.S.C. § 410(c). See also Gaste v. Kaiserman, 863 F.2d 1061,
1065 (2d Cir. 1988) (“[U]nder section 209 of the 1909 Act, a
valid certificate of registration creates a rebuttable
presumption of compliance with the requirements for validity,
including the statutory requirement of initial publication with
notice.”); Telerate Sys., Inc. v. Caro, 689 F. Supp. 221, 227
(S.D.N.Y. 1988) (“The 1976 Act added the five-year requirement
because ‘the longer the lapse of time between publication and
registration the less likely to be reliable are the facts stated
in the certificate.’” (citation omitted)). This presumption of
validity “merely orders the burdens of proof,” relieving a
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copyright owner of the duty “to prove all of the multitude of
facts that underline the validity of the copyright unless the
[alleged infringer], by effectively challenging them, shifts the
burden of doing so to the [purported owner].” Carol Barnhart
Inc. v. Econ. Cover Corp., 773 F.2d 411, 414 (2d Cir. 1985)
(quoting H.R. Rep. No. 1476, 94th Cong., 2d Sess. 157).
Here the first publication of the Minifigure figurine
occurred in 1978 but the Asserted Copyrights were not registered
until 1994, i.e. 16 years after the first publication. Thus,
LEGO is not entitled to the statutory presumption of validity
based on the certificate of registration. When a certificate of
registration is made more than five years after first
publication of a work, the “evidentiary weight to be accorded
the certificate . . . shall be within the discretion of the
court.” 17 U.S.C. § 410(c).
Zuru contends that it has offered “a mountain of evidence
that ‘tends to show’ Lego’s registrations are invalid, including
because (i) Lego made false representations to the Copyright
Office about the manner in which its minifigures were packaged,
sold, and affixed with copyright notice; (ii) Lego in any event
failed to publish its minifigures with proper copyright notice,
and thereby injected them into the public domain; and (iii) the
minifigure is a functional ‘useful article’ that is ineligible
for copyright protection.” Redacted Mem. of Law in Supp. of Def.
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Zuru Inc.’s Mot. for Summ. J. (“Zuru Mot. Mem.”) (ECF No. 238)
at 17.2 For the reasons discussed below, the court concludes that
Zuru has failed to create a genuine issue of material fact with
respect to its claim that LEGO made false representations to the
Copyright Office, its claim that LEGO failed to comply with the
statutory notice requirements, and its claim that the Minifigure
figurine is a functional, useful article that is ineligible for
copyright protection.
Zuru argues that its “evidence is sufficient to support
summary judgment,” “[b]ut at a very minimum, it is enough to
require Lego to bear the burden of proving the validity of its
copyrights.” Id.
In support of this contention, Zuru cites to
Brown v. Latin Am. Music Co., 498 F.3d 18 (1st Cir. 2007).
However, in Brown, where twenty years had passed between the
date of first publication stated in the registration certificate
and the date of registration, the district court had “specific
reason . . . to question the facts contained in the
certificate,” namely that the defendants conceded that five of
the disputed poems were first published in 1957, but the
certificate listed the first publication as being in 1979. Id.
at 24 (quoting Brown v. Latin Am. Music Co., No. CV 05-
2 With the exception of citations to deposition and hearing transcripts, 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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1242(JAF), 2006 WL 8450668, at *3 (D.P.R. May 9, 2006), aff'd,
498 F.3d 18 (1st Cir. 2007)).
In Michael Grecco Photography, Inc. v. Everett Collection,
Inc., plaintiff Grecco brought suit against defendant Everett
for copyright infringement. 589 F. Supp. 2d 375 (S.D.N.Y. 2008),
order vacated in part on reargument sub nom. Grecco v. Everett
Collection, No. 07 CIV 8171(CM)(JCF), 2009 WL 969928 (S.D.N.Y.
Apr. 7, 2009). “Although Grecco submitted copyright
registrations for all the Images, Everett argue[d] that the
registrations should be accorded little weight because they were
obtained more than five years after the Images were first
published.” Id. at 381. The court’s analysis with respect to the
presumption of validity was as follows:
Everett has not offered any evidence tending to show that
the certificates of registration provided by Grecco are
invalid, or that Grecco does not in fact own the copyrights
in the Images covered by those registrations. And there is
considerable evidence (including the various license
agreements, which are discussed below) demonstrating that
plaintiff does indeed own the copyright in these
photographs. Therefore, the Court, in its discretion, will
consider the certificates as prima facie evidence of valid
copyrights in the Images. See Yurman Design, Inc. v. Golden
Treasure Imps., Inc., 275 F. Supp. 2d 506, 515–516
(S.D.N.Y. 2003) (certificates of registration issued more
than five years after works were first published are prima
facie evidence of valid copyrights, because defendants did
not come forward with any evidence that “would raise any
question as to the validity of the copyrights covered by
the registration certificates”) . . . .
Id. at 382.
It seems appropriate for the court to exercise its
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discretion to consider a certificate as prima facie evidence of
a valid copyright in a case such as this where the party
asserting invalidity fails to create a genuine issue of material
fact as to any of the asserted grounds for invalidity, in other
words, is not “effectively challenging” the validity of the
copyright. Carol Barnhart Inc., 773 F.2d at 414. Otherwise, a
party could, by merely making an unsupportable assertion that
the copyright is invalid, shift to the copyright owner the duty
“to prove all of the multitude of facts that underline the
validity of the copyright.” Id.
Therefore, the court concludes that under the circumstances
of this case, LEGO is entitled to the presumption of validity
and the burden of proof with respect to Zuru’s invalidity
defenses and counterclaims lies with Zuru. (The court notes,
however, that in reaching its conclusions below that LEGO is
entitled to summary judgment on Zuru’s defenses and counterclaim
that the Asserted Copyrights are invalid because the Minifigure
figurine was published without proper copyright notice, the
Asserted Copyrights are invalid for fraud on the Copyright
Office, the Asserted Copyrights are invalid because the
Minifigure figurine is a functional, useful article, and the
Asserted Copyrights are invalid under the Patent and Copyright
Clause of the United States Constitution, the court has not
relied on the presumption of validity.)
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b. The Statutory Notice Requirements
Zuru contends that the Asserted Copyrights are invalid for
lack of copyright notice “because Lego published its minifigures
without proper copyright notice, and thereby injected any
copyright in them into the public domain.” Zuru Mot. Mem. at 27.
The legal sufficiency of a copyright notice is “determined by
the law in effect at the time of first publication of the work.”
37 C.F.R. § 202.2(c)(1)(ii). LEGO has demonstrated that there is
no genuine issue as to the fact that the Minifigure figurine was
published with copyright notice that complied with the law in
effect at the time.
The Minifigure figurine was created in 1977, and it was
first published on January 7, 1978. The Asserted Copyrights were
registered on January 21, 1994. The 1976 Copyright Act “changed
the basis of copyright protection from publication of a work
[with notice] to creation of a work.” Societe Civile Succession
Guino v. Renoir, 549 F.3d 1182, 1186 (9th Cir. 2008). “That
change applies to works ‘created on or after January 1, 1978.’”
Id. (quoting 17 U.S.C. § 302). With respect to works “created
before January 1, 1978, but not theretofore in the public domain
or copyrighted,” the 1976 Copyright Act provides federal
copyright protection to works that comply with the applicable
formalities set forth in the 1976 Copyright Act. 17 U.S.C. §
303(a).
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The following rule applies to works first published between
January 1, 1978 and February 28, 1989. See 17 U.S.C. §§ 302(a),
405(a) (stating the duration of copyright in a work created on
or after January 1, 1978 and outlining exceptions to the notice
requirement for copies distributed before the effective date of
the Berne Convention Implementation Act of 1988); U.S. Copy.
Off. Circular 92, App. Q n.2 (noting that “[t]he Berne
Convention entered into force in the United States on March 1,
1989”); U.S. Copy. Off. Circular 3 (stating that “[d]ifferent
laws govern works first published before January 1, 1978, and
works first published between January 1, 1978, and February 28,
1989”). In order to receive federal copyright protection, (1) a
work first published in this period must be published with
proper notice (see 17 U.S.C. § 401(a)); unless (2) “the notice
has been omitted from no more than a relatively small number of
copies or phonorecords distributed to the public; . . . [(3)]
registration for the work has been made before or is made within
five years after the publication without notice, and a
reasonable effort is made to add notice to all copies or
phonorecords that are distributed to the public in the United
States after the omission has been discovered; or . . . [(4)]
the notice has been omitted in violation of an express
requirement in writing that, as a condition of the copyright
owner’s authorization of the public distribution of copies or
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phonorecords, they bear the prescribed notice.” 17 U.S.C. § 405.
LEGO was required to publish the Minifigure figurine with proper
notice. In January 1978, a proper copyright notice had three
elements: “(1) the symbol © (the letter C in a circle), or the
word ‘Copyright’, or the abbreviation ‘Copr.’; and (2) the year
of first publication of the work; [or] in the case of
compilations, or derivative works incorporating previously
published material, the year date of first publication of the
compilation or derivative work . . . ; and (3) the name of the
owner of copyright in the work, or an abbreviation by which the
name can be recognized, or a generally known alternative
designation of the owner.” Id. § 401(b).
Notice was to be included on “publicly distributed copies
from which the work can be visually perceived, either directly
or with the aid of a machine or device.” Id. § 401(a). Notice
was to be “affixed to the copies in such manner and location as
to give reasonable notice of the claim of copyright.” Id. §
401(c). However, “a notice on a container in which the work may
be expected to be kept by the user may be accepted (e.g., on a
box containing a set of cards, or on a folder containing a group
of maps).” Copy. Compendium 1 § 4.4.3.I.b (1973).
Here LEGO has shown that there is no genuine issue as to
the fact that the copyright notice for the Minifigure figurine
satisfied the statutory notice requirements in accordance with
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Uneeda Doll Co. v. Goldfarb Novelty Co., 373 F.2d 851 (2d Cir.
1967), the later-named “unit publication doctrine.”
At issue in Uneeda was whether the abbreviation “U.D. Co.
Inc. 1965” appearing on the sole of a plastic doll’s foot, when
read in conjunction with the legend “Uneeda Doll Co., Inc. 1966”
printed on the cardboard display package in which the dolls were
sold, constituted adequate compliance with the notice
requirements of the Copyright Act. The court identified the key
question as follows:
The dispute, rather, is centered on the question of whether
the abbreviation ‘U.D. Co. Inc. 1965’ which appears on the
sole of the doll's left foot when read in conjunction with
the legend ‘Uneeda Doll Co., Inc. 1966’ printed on the
cardboard display package with a three-sided transparent
plastic window in which the dolls are sold, satisfies the
following demands of section 19: ‘The notice may consist of
the letter C enclosed within a circle, thus accompanied by
the initials, monogram, mark, or symbol of the copyright
proprietor: Provided, That on some accessible portion of
such copies or of the margin, back, permanent base, or
pedestal, or of the substance on which such copies shall be
mounted, his name shall appear.’ Clearly, the inscription
on the left foot is the ‘initials’ of the copyright
proprietor. This leaves the more difficult question of
whether appellant has complied with the proviso to section
19. We hold that it has because the display on which
appellant’s name appears is ‘the substance on which * * *
(the dolls are) * * * mounted.’ In so ruling, we are
mindful of the difficulty of placing a legible, and
complete copyright notice on a three and one half inch
plastic doll without causing the disfigurement which § 19
with its short form of notice was enacted to avoid.
Uneeda, 373 F.2d, at 853 (footnote and internal citations
omitted).
The court also stated:
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We also notice that the display package is not only an
integral part of the product when it is sold but also can
be used as a keeping place for the doll. At this point, it
is pertinent to mention that in accordance with the
tradition of construing the notice requirements liberally,
courts have protected copyrights when the notice appears on
one of two or more separate or detachable parts of a single
item.
Id. at 853–54.
The court distinguished two situations: “Decidedly
distinguishable is the situation where the inscription appears
only on a simple wrapper or container. Different likewise are
cases in which the only copyright notice was on a detachable
tag.” Id. at 854 (internal citations omitted).
Other courts have also concluded that toys were published
with sufficient copyright notice when the copyright notice was
included on the packaging for the toy. In Tonka Corp. v.
Tsaisun, Inc., where the court cited to Uneeda as support for
its conclusion, the court’s analysis was as follows:
The trial testimony and other evidence presented has shown
that Tonka intended the POUND PUPPIES ® carrier to be an
important part of the play value of the POUND PUPPIES ®
product. Tonka specifically designed the POUND PUPPIES ®
cardboard package for use as a carrier for the puppy and
also as a kennel or doghouse in which to keep the puppy.
Use of the package as a carrier and kennel for the puppy is
suggested by the package itself and in certain
advertisements.
No. Civ. 3-85-1885, 1986 WL 29980, at *16 (D. Minn. Nov. 6,
1986) (footnote omitted).
At issue in Monogram Models, Inc. v. Industro Motive Corp.,
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492 F.2d 1281 (6th Cir. 1974), were plastic scale airplane model
kits and the boxes in which they were sold. The court’s analysis
was as follows:
Notice of Monogram’s copyright was placed on the boxes
containing the pieces of the plane and on the instruction
sheets of the kits for both the Thunderchief and Skyraider
kits of Monogram . . . . As we have just previously noted,
the ‘work’ with which this cause is concerned is scale
model airplane kits. In order to comply with Section 10
there must be publication with notice of the copyright, and
such notice ‘shall be affixed to each copy thereof
published or offered for sale . . ..’ For both of
Monogram’s kits, the A1-E Skyraider and the F-105
Thunderchief, there was publication of the work with notice
of the copyright affixed to the container boxes and the
instruction sheets of the kits. In our opinion such
publication and notice comply with Section 10 . . . .
Because the instruction sheets and the container boxes are
integral parts of the model airplane kits and the notice on
these parts complies with the necessary form for notice of
copyright, the notices of copyright on the two kits were
adequate.
Id. at 1284.
At issue in Koontz v. Jaffarian was “an electrical
estimating package which included [a] manual, the magnetic tapes
containing the program and the data compilation, and an
instruction book.” 787 F.2d 906, 908 (4th Cir. 1986). The
“manual contained a copyright notice,” but “there was no
copyright notice on the magnetic tapes or in the program or the
data compilation stored on the tapes.” Id. The district court,
“relying on the unit publication doctrine, held that the
copyright notice affixed to Koontz’s 1975 and 1979 MCP–5 manuals
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acted to protect both the manuals and the software.”3 Id. at 909.
The Fourth Circuit stated:
Courts adhering to the unit publication doctrine hold that
copyright notice affixed “to one element of a publication
containing various elements gives copyright protection to
all elements of the publication.” Koontz, 617 F.Supp. at
1112. Although the doctrine has not previously been
considered by this court, it has been employed in a variety
of circumstances by other courts of appeals.
Koontz, 787 F.2d at 909. With respect to the variety of
circumstances in which other courts of appeal had applied the
unit publication doctrine, the court cited Monogram Models, 492
F.2d at 1284-85, Uneeda, 373 F.2d at 853-54, and Lydiard-
Peterson Co. v. Woodman, 204 F. 921 (8th Cir. 1913). The court
concluded that “[i]n proper circumstances, linked elements of a
publication should be collectively protected, and we agree with
the district court that the unit publication doctrine should
apply where, as here, the elements of the publication form a
single commercial unit.” Koontz, 787 F.2d at 909.
LEGO has produced evidence which establishes that there is
no genuine issue as to the fact that the copyright notice for
the Minifigure figurine satisfied the statutory notice
requirements based on Uneeda and the unit publication doctrine.
“In 1978, the LEGO® Minifigure figurine was available for
purchase in the United States only as part of certain LEGO®
3 The district court opinion is the first reported decision in which the court
found a reference to the unit publication doctrine. See Koontz v. Jaffarian,
617 F. Supp. 1108, 1112 (E.D. Va. 1985).
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Sets.” Pls.’ Ex. 12, Decl. of Jared Carr (ECF No. 243-12) ¶ 4.
“In 1978, the Minifigure figurine did not come fully assembled.
Each LEGO® set containing a Minifigure figurine sold in the
United States contained Minifigure figurine component parts
along with other LEGO® elements such as bricks and accessories,
for assembly by the end user.” Id. ¶ 5.
The LEGO Minifigures did not come fully assembled, but the
notice appeared on more than one of their parts. “In 1978, the
word ‘LEGO’ appeared in the plastic on the top of the knob on
the head, the torso, and on the ‘hips’ of the Minifigure
figurine.” Id. ¶ 6 (accompanied by photographs). The Uneeda Pee
Wee doll was a three and one half inch mini-doll. See Uneeda,
373 F.2d, at 853. The LEGO Minifigure is much smaller than the
Uneeda Pee Wee doll, which makes it even more difficult to
display a full copyright notice on the plastic. See Redacted
Pls.’ Mem. of Law in Opp’n to Def.’s Mot. for Summ. J. (“LEGO
Opp. Mem.”) (ECF No. 264) at 18 (images of LEGO Minifigure in
Set No. 644 next to Uneeda Pee Wee doll); Pls.’ Ex. 50, actual
Uneeda Pee Wee doll (ECF No. 276).
“1978 LEGO ® sets containing the Minifigure figurine also
included a copyright notice on the box. For example, Set No. 644
included the following copyright notice: ‘Made by LEGO System
A/S. Denmark. © 1978.” Pls.’ Ex. 12, Decl. of Jared Carr ¶ 7. In
addition, “[i]n 1978, the building instructions and pamphlet
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contained within boxes of LEGO sets also included a copyright
notice. For example, the building instructions for Set No. 644
included the following copyright notice: ‘© 1978 LEGO Systems
A/S.’” Id. at ¶ 8.
In 1978, the box housing LEGO sets with LEGO Minifigures
had a perforated edge and tab. See Photographs accompanying
Redacted Pls.’ Local Rule 56(a)1 Statement in Supp. of Their
Mot. for Summ. J. (ECF No. 243) ¶ 14. Thus, the box itself
suggested that it was meant to be a container in which consumers
could keep LEGO sets, including the LEGO Minifigures. The
plaintiffs have produced evidence that this was not merely
coincidental. LEGO expert Knight gives the following opinion
related to the perforated edge and tab:
Storage is a consistent insight or need that toy designers
learn in research with parents. Family rooms and homes
become cluttered with small parts and pieces. A toy that
delivers a solution to that common problem will be
recognized as a benefit and feature to the parent. The
design of the LEGO box uses a shape and perforated opening
that is familiar to parents as a way to open and close a
box, often seen in cereal boxes. Designing a package to be
reused is often a way to add extra value to a toy.
Pls.’ Ex. 33, Ex. A, Expert Report of Elizabeth B. Knight ¶ 91.
Zuru points out that the “tabs did not permit the packaging
to be resealed after opening.” Redacted Def.’s Local Rule 56(a)1
Statement in Supp. of Their Mot. for Summ. J. (ECF No. 239)
¶ 19. However, the pertinent question is not whether the
packaging could be “resealed,” but whether the tabs enabled
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consumers to close the box. There is no genuine issue as to the
fact that the tab provided a mechanism to close the box, much
like a cereal box is closed, so that it could be used to store
LEGO sets. “LEGO sets from 1978 can be purchased on websites
such as BrickLink and eBay, with the boxes and building
instructions intact.” Pls.’ Ex. 12, Decl. of Jared Carr ¶ 11.
Thus, the boxes were containers in which LEGO Minifigures could
be expected to be kept by the user.
Thus, LEGO satisfied the requirements of Uneeda and the
unit publication doctrine. It placed multiple abbreviated
notices on more than one part of a product that was too small to
contain a complete copyright notice; posted the full copyright
notice on the container that was not only an integral part of
the product when it was sold, but also could be expected to be
used by the consumer as a place to keep the product; and placed
the notice on the building instructions contained in each box.
These elements of a publication, i.e. the abbreviated notices on
the parts of a small item, the notices on the containers, and
the notices on the building instructions, were “linked elements
of a publication” for a single commercial unit. Koontz, 787 F.2d
at 909.
Zuru advances three arguments in support of its motion for
summary judgment.
First, Zuru argues:
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Lego’s reliance on the unit publication rule fails because
the six “Basic Minifigures” were not published as a unit .
. . . Thus, the core predicate requirements for the unit
publication rule are not met by the “Basic Minifigures”
because the undisputed evidence shows they were never sold
together as a unit in a box bearing a proper copyright
notice.
Zuru Mot. Mem. at 29. As discussed below, with respect to Zuru’s
argument that the Asserted Copyrights are invalid for fraud on
the United States Copyright Office, this argument is based on an
incorrect interpretation of the unit publication doctrine (or
rule).
Second, Zuru bases an argument on the following language
from the district court opinion in Koontz v. Jaffarian: “The
rule has been confined to situations where the elements are
integral or essential parts of one another.” 617 F. Supp. at
1112. Zuru’s argument does not take into account the fact that,
on appeal, the Fourth Circuit gave a different articulation of
the unit publication doctrine, which is set forth above. While
the Court of Appeals took Uneeda into account in explaining the
doctrine, the district court did not. The district court’s sole
reference to Uneeda was in an entirely different context. See
id. (“The purpose of copyright notice, as highlighted by 17
U.S.C. § 405(b), is to protect innocent infringers. Uneeda Doll
Co. v. Goldfarb Novelty Co., 373 F.2d 851 (2nd Cir. 1967);
Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 161 F.2d 406,
409 (2nd Cir. 1946) . . . .”).
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Third, Zuru makes a number of points with respect to notice
on the packaging of a copyrighted work. Zuru cites to the Code
of Federal Regulations for the proposition that “notice on the
outer packaging of a copyrighted work . . . is insufficient if
it is placed ‘on the wrapper or container which is not a part of
the work and which will eventually be removed and discarded when
the work is put to use.’” Zuru Mot. Mem. at 30 (quoting 37
C.F.R. § 202.2 (1978)).
Zuru quotes Shapiro & Son Bedspread Corp. v. Royal Mill
Assocs., 568 F. Supp. 972 (S.D.N.Y. 1983), where the court
concluded that reliance on Uneeda was misplaced because the
copyright notice was placed on a flyer or insert contained
within the heat-sealed packaging of the bedspread. The court
found that “[f]lyers are generally discarded with the unwrapping
of the bedspread.” Id. at 976. Shapiro & Son is not analogous.
Here the copyright notice was printed on something that was
designed to be used with the product going forward, the
copyright notice was also displayed on the instructions
contained in each LEGO set, and a proper abbreviation appeared
on the plastic on the top of the knob on the head, the torso,
and the “hips” of the LEGO Minifigures.
Zuru argues in its memorandum, with no citation to any
evidence, that the packaging here “is of a form that ‘will
eventually be removed and discarded when the work is put to
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use.’” Zuru Mot. Mem. at 31. It is undisputed that some
consumers might elect to discard the boxes in which a LEGO set
was sold. However, that fact does not address whether the boxes
in which the LEGO sets were sold were designed for and could be
expected to be used for permanent storage and were used by some
consumers for that purpose. See Tonka, 1986 WL 29980, at *16.
(“The court is cognizant that realistically the carrier may be
discarded after a short period of time by many consumers.
Nevertheless, it is entirely reasonabl[e] to presume that most
consumers will keep the carrier for use with the puppy.
Accordingly, as promoted and intended, the carrier is an
integral part of the POUND PUPPIES® product.”) Zuru points to no
evidence that, like the flyer in Shapiro & Son, the box in which
the LEGO sets were sold was generally, or was designed or
intended to be, discarded after the box was opened.
Zuru also argues that:
undisputed evidence shows that Lego never intended for its
consumers to permanently store their minifigures in the
original cardboard packaging in which they were sold,
including that (i) since its earliest sales of minifigures,
Lego has sold separate “storage” devices for its Lego
products (including bricks and minifigures), including
“storage cloths” and a variety of plastic storage
containers (SOF 21); (ii) Lego encourages its consumers to
recycle their cardboard packaging (SOF 22); and (iii) Lego
sold minifigures as standalone products in “blister packs”
that could only be torn open and that have no intrinsic
means to be reclosed (SOF 20).
Zuru Mot. Mem. at 31-32. However, the fact that LEGO has sold
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separate storage devices for its products does not negate the
design and the intended function of the box in which LEGO
Minifigures were initially sold. See Tonka, 1986 WL 29980, at
*16 (“[T]he fact that Tonka subsequently marketed other products
in which to carry or house the POUND PUPPIES” -- in addition to
the cardboard carrier kennel packaging containing the copyright
notice in which the POUND PUPPIES were sold -- did not “negate
the intent and function of the initial carrier kennel”). Nor
does the fact that LEGO now encourages consumers to recycle
packaging if they throw away the packaging. When asked about
that during his deposition, LEGO’s Jared Carr, the United States
General Manager at LSI, explained that the document on which
Zuru relies shows that LEGO “is just pointing out to consumers
that [we are] using recyclable material and as a lot of
companies do now, part of our sustainability initiative.” Def.’s
Ex. 39, Jared Carr Dep. Tr. Vol. 1, July 22, 2021 (ECF No. 236-
12) at 460:10-14. The reference to “now” is significant because
the document in question, defendant’s Exhibit 33, is dated April
21, 2018 and mentions the fact that LEGO announced a sustainable
packing initiative in 2015. See Def.’s Ex. 33 (ECF No. 239-34)
at 2.
As to Zuru’s argument about LEGO Minifigures being sold as
a standalone product in blister packs that could only be torn
open and could not be reclosed, LEGO has demonstrated that Zuru
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has failed to create a genuine issue based on this contention.
See Redacted Pls.’ Local Rule 56(a)2 Statement in Opp’n to
Def.’s Mot. for Summ. J. (ECF No. 265) Resp. to ¶ 20. Among
other things, only Samsonite -- not LEGO -- sold certain LEGO
Minifigures in blister packs. Samsonite did so in Canada, not in
the United States, and it did so no earlier than the third
quarter of 1978. See Unredacted Pls.’ Local Rule 56(a)2
Statement in Opp’n to Def.’s Mot. for Summ. J. (ECF No. 263)
Resp. to ¶ 20. Thus, in any event these products were sold well
after the initial publication of the Minifigure figurine with
proper copyright notice.
Therefore, Zuru has failed to create a genuine issue as to
the fact that the Minifigure figurine was published with
sufficient copyright notice.
Moreover, the court agrees with LEGO that Zuru is not “the
type of defendant that the copyright notice requirement is
designed to protect.” Mem. of Law in Supp. of Pls.’ Mot. for
Partial Summ. J. (“LEGO Mot. Mem.”) (ECF No. 242) at 31. “The
purpose of a copyright notice is to prevent innocent persons who
are unaware of the existence of the copyright from incurring the
penalties of infringers by making use of the copyrighted work.”
Uneeda, 373 F.2d at 852 (internal quotation marks and citations
omitted). It is undisputed that Zuru was aware of the Asserted
Copyrights at the time it designed the infringing MAX Figures.
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See Redacted Pls.’ Local Rule 56(a)1 Statement in Supp. of Their
Mot. for Summ. J. ¶ 23; Redacted Def.’s Local Rule 56(a)2
Statement of Facts in Opp’n to Pls.’ Mot. for Summ. J. (ECF No.
269) Resp. to ¶ 23; Def.’s Ex. 43, Elizabeth Knight Dep. Tr. Vol
1, Feb. 3, 2022 (ECF No. 236-16). In Uneeda, the court stated:
Finally, ‘[e]ven if, as defendants urge, the copyright
notice might not be sufficient for some purposes * * * the
defendants, as willful infringers wholly aware of the
existence of the copyright, are in no position to assert
the insufficiency of the notice.’ Dan Kasoff, Inc. v.
Novelty Jewelry Co., 309 F.2d 745 (2d Cir. 1962). We remain
‘unwilling to allow a barefaced infringer to invoke an
innocent deviation from the letter that could not in the
slightest degree have prejudiced him or the public.’
National Comics Pubs. v. Fawcett Pubs., 191 F.2d 594, 603
(2d Cir. 1951).
Uneeda, 373 F.2d at 854 (first alteration added). In response to
this argument, the defendant merely cites Neimark v. Ronai &
Ronai, LLP, 500 F. Supp. 2d 338 (S.D.N.Y. 2007) and Disenos
Artisticos E Industriales, S.A. v. Work, 676 F. Supp. 1254
(E.D.N.Y. 1987) for the proposition that “once a copyrighted
work is published without notice, it is in the public domain,
free for all to use,” which is not on point. Zuru then cites to
Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d
Cir. 1960) for the proposition that “even a ‘deliberate
copyist,’ . . . may assert an invalidity defense based on lack
of copyright notice when it shows a proper notice ‘could have
been embodied in the design without impairing its market
value.’” Redacted Def. Zuru’s Opp’n to Pl. LEGO’s Mot. for Summ.
Case 3:18-cv-02045-AWT Document 370 Filed 04/02/26 Page 30 of 177
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J. (ECF No. 268) (“Zuru Opp. Mem.”) at 25-26 (quoting Unredacted
Mem. of Law in Supp. of Pls.’ Mot. for Partial Summ. J.
(“Unredacted LEGO Mot. Mem.”) (ECF No. 246) at 31). The language
from Peter Pan Fabrics relied on by Zuru appears in a specific
context and it is not applicable here, but even accepting Zuru’s
interpretation of that language, the court concludes that
National Comics Publication v. Fawcett Publications, 191 F.2d
594 (2d Cir. 1951), supplemented sub nom. National Comics
Publication v. Fawcett Publications, 198 F.2d 927 (2d Cir.
1952); Dan Kasoff, Inc. v. Novelty Jewelry Co., 309 F.2d 745 (2d
Cir. 1962)(decided after Peter Pan Fabrics); and Uneeda Doll Co.
v. Goldfarb Novelty Co., 373 F.2d 851 (2d Cir. 1967) (decided
after Peter Pan Fabrics) state the controlling legal principle
in this Circuit.
Finally, Zuru asserts that it is not a willful infringer,
relying on deposition testimony of LEGO expert Elizabeth Knight.
A willful infringer is one that “had knowledge that its conduct
represented infringement or . . . recklessly disregarded the
possibility.” Bryant v. Media Right Productions, Inc., 603 F.3d
135, 143 (2d Cir. 2010) (ellipsis in original) (quoting Twin
Peaks Productions, Inc. v. Publications Intern., Ltd., 996 F.2d
1366, 1382 (2d Cir. 1993)). Zuru’s use of Knight’s testimony
does not create a genuine issue as to the fact that Zuru was a
willful infringer. Zuru pieces together portions of her
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deposition testimony, mischaracterizing it. See Redacted Pls.’
Local Rule 56(a)2 Statement in Opp’n to Def.’s Mot. for Summ. J.
Resp. to ¶ 59. In fact, when Zuru asked Knight, “[Y]ou say a
number of times that Zuru intentionally copied the Minifigure,
correct?”, her answer was, “It appears that they did.” Def.’s
Ex. 43, Elizabeth Knight Dep. Tr. Vol. 1, Feb. 3, 2022 at 168:24
to 169:3.
Therefore, LEGO is entitled to summary judgment on Zuru’s
defense/counterclaim that the Asserted Copyrights are invalid
because the Minifigure figurine was published without proper
copyright notice.
c. Fraud on the Copyright Office
“It is the law of this Circuit that the ‘knowing failure to
advise the Copyright Office of facts which might have occasioned
a rejection of the application constitute[s] reason for holding
the registration invalid and thus incapable of supporting an
infringement action.’” Whimsicality, Inc. v. Rubie’s Costume
Co., Inc., 891 F.2d 452, 456 (2d Cir. 1989) (alteration in
original) (quoting Eckes v. Card Prices Update, 736 F.2d 859,
861-62 (2d Cir. 1984)).
Zuru contends that:
[Lego] made knowingly false representations to convince the
Copyright Office that its minifigures were covered by an
obscure exception to the notice rules because they were
first published and then sold as a “unit of publication.” .
. . If that exception applied, then, Lego said, it only had
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to affix a notice to the outer packaging of the “unit,” and
if it did, all the copyrightable works within the packaging
would be covered by that notice.
Zuru Mot. Mem. at 21 (emphasis added).
Zuru states, with respect to the “unit of publication
option”:
“The unit of publication option is a narrow and limited
exception” to the “general rule” that “an applicant should
prepare a separate application, filing fee, and deposit for
each work that is submitted for registration.”
Id. (quoting Compendium of U.S. Copy. Off. Prac. § 1103.1(A)).
Zuru asserts that LEGO “had to convince the Copyright Office
that the six ‘Basic Minifigures,’ the ‘Figure with Brown Hair,’
and the ‘Astronaut’—the ‘works’ Lego was trying to register—were
‘physically packaged or bundled together as a single unit’ and
‘first published on the same date.’” Id. (quoting Compendium of
U.S. Copy. Off. Prac. at 1103).
Zuru further asserts that “[d]espite all this, Lego
represented in its letter that these ‘additional identifying
materials’ show ‘the box bearing a proper copyright notice’ for
a ‘unit [of] publication,’ in which ‘each of these elements’—
meaning the six ‘Basic Minifigures’—‘were published.’” Id. at
24-25 (second alteration and emphasis in original).
LEGO has established that there are no genuine issues with
respect to the fact that it did not make a false representation
to the Copyright Office.
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On March 15, 1994 counsel for LEGO received correspondence
from the Copyright Examiner stating,
The identifying material deposited does not show the
location and form of the copyright notice prescribed by law
. . . . If these figurines were published with a copyright
notice, please send additional identifying material that
clearly shows the prescribed form and location of the
notice on each work.
Pls.’ Ex. 6 (ECF No. 243-6) at 8. On May 20, 1994 counsel for
LEGO responded:
You have noted that the above-referenced works do not show
a visible copyright notice. In fact, each of these elements
were published in a box bearing a proper copyright notice.
Under the unit publication rule, the copyright notice on
the outer packaging covers each of the elements within.
For each work, I am enclosing the original application form
which was returned to us, together with additional
identifying materials and a copy of the side panel of the
box showing the copyright notice.
Id. at 2 (emphasis added).
Thus, there is no genuine issue as to the fact that LEGO
represented to the Copyright Office that it was proceeding under
the unit publication rule (or doctrine), not the unit of
publication option. In fact, when Zuru purports to describe the
letter from LEGO’s counsel at page 25 of its memorandum, it has
to misquote it by inserting the word “of” in order to make its
point with respect to “unit [of] publication.” Zuru Mot. Mem. at
25. Moreover, Zuru’s contention that LEGO was seeking to
convince the copyright office that the “Basic Minifigures,”
“Figure with Brown Hair,” and “Astronaut,” were first published
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on the same date, id. at 21, is contrary to the record, which
reflects that the Copyright Examiner understood that that was
not the case. The March 15 letter from the Copyright Examiner
said that “[t]he applications state that the works were first
published on January 7, 1978, January 26, 1979, and January 29,
1987, respectively.” Pls.’ Ex. 6 at 8 (emphasis in original).
Therefore, LEGO is entitled to summary judgment on Zuru’s
defense/counterclaim that the Asserted Copyrights are invalid
for fraud on the Copyright Office.
d. Invalidity as Functional, Useful Article
LEGO argues that the Minifigure figurine is a sculptural
work that is eligible for copyright protection because it is not
an intrinsically useful article notwithstanding the fact that it
has some functional elements. Zuru argues that “Lego’s ‘Basic
Minifigures’ copyright is invalid for the additional reason that
the minifigure is an uncopyrightable useful article.” Zuru Mot.
Mem. at 32. Zuru maintains that “Star Athletica [v. Varsity
Brands, Inc., 580 U.S. 405 (2017)] and its progeny mandate the
conclusion that Lego’s minifigure copyright is invalid. The
minifigure is a mass-produced article of manufacture that is
indisputably a creature of functionality—a ‘useful article’—that
can be moved, attached, disassembled, reassembled, played with,
etc.” Id. at 35. It contends that “[i]ndeed, Lego admits that
the minifigure is intended for ‘role play,’ and that, despite
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being just two inches tall, it has more than 15 ‘functional’
features, including features relating to ‘assembly,’
‘poseability,’ and ‘connectability,’ as shown above.” Zuru Mot.
Mem. at 35.
In Gay Toys, Inc. v. Buddy L Corp., 703 F.2d 970, 972 (6th
Cir. 1983), the court explained the pertinent provisions of 17
U.S.C. §§ 101 and 102 as follows: “Section 102(a)(5) extends
copyright protection under the statute to ‘pictorial, graphic,
and sculptural works.’” See 17 U.S.C. § 102(a)(5) (“Works of
authorship include the following categories: . . . (5)
pictorial, graphic, and sculptural works . . . .”).
“Pictorial, graphic, and sculptural works” include two-
dimensional and three-dimensional works of fine, graphic,
and applied art, photographs, prints and art reproductions,
maps, globes, charts, diagrams, models, and technical
drawings, including architectural plans. Such works shall
include works of artistic craftsmanship insofar as their
form but not their mechanical or utilitarian aspects are
concerned; the design of a useful article, as defined in
this section, shall be considered a pictorial, graphic, or
sculptural work only if, and only to the extent that, such
design incorporates pictorial, graphic, or sculptural
features that can be identified separately from, and are
capable of existing independently of, the utilitarian
aspects of the article.
17 U.S.C. § 101. The portion of the definition that begins with
the words “the design of a useful article, as defined in this
section,” “indicates that ‘useful articles’ are not generally
copyrightable, although certain features of ‘useful articles’
may be copyrighted separately.” Gay Toys, 703 F.2d at 972.
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A useful article is defined as follows: “A ‘useful article’
is an article having an intrinsic utilitarian function that is
not merely to portray the appearance of the article or to convey
information. An article that is normally a part of a useful
article is considered a ‘useful article’.” 17 U.S.C. § 101. The
court summarized the statutory scheme as follows:
The statutory scheme of the provisions at issue in this
case, then, is that copyright protection is extended to
“pictorial, graphic, and sculptural works” generally; an
exception to this general rule is carved out by exempting
“useful articles” from copyrightability; nevertheless,
certain particular features of “useful articles” may be
separately copyrighted.
Gay Toys, 703 F.2d at 972.
“Numerous courts have recognized that various types of toys
can qualify for copyright protection, in whole or in part, as
‘pictorial, graphic or sculptural works’ as defined by 17 U.S.C.
§ 101, even where there is some mechanical or functional element
to the toy.” Lanard Toys Ltd. v. Novelty, Inc., 375 F. App’x
705, 709 (9th Cir. 2010) (citing Hasbro Bradley, Inc. v. Sparkle
Toys, Inc., 780 F.2d 189, 192 (2d Cir. 1985) (“transformer”
changeable robotic action figures held copyrightable as
sculptural works); Spinmaster, Ltd. v. Overbreak LLC, 404
F. Supp. 2d 1097, 1102–04 (N.D. Ill. 2005) (although its motor
and main propeller were uncopyrightable “functional” elements,
the hub, blades, and outer ring of a flying saucer toy, as well
as the design of a separate controller and base station, were
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“artistic” elements subject to copyright protection)).
Thus, the first question that should be addressed is
whether the Minifigure figurine is an article that has intrinsic
utilitarian function that is not merely to portray the
appearance of the article or to convey information. One of the
cases highlighted by Zuru is Lanard Toys Limited v. Dolgencorp
LLC, 958 F.3d 1337 (Fed. Cir. 2020). At issue in that case was
“a toy chalk holder designed to look like a pencil.” Id. at
1339. The court stated: “As the district court found, Lanard’s
’458 copyright for a ‘Pencil/Chalk Holder’ has an intrinsic
utilitarian function—storing and holding chalk and facilitating
writing or drawing—which makes it a useful article under the
Copyright Act.” Id. at 1345 (citation omitted).
The district court’s analysis as to why the toy chalk
holder was a useful article is helpful to the analysis in this
case:
A useful article is “an article having an intrinsic
utilitarian function that is not merely to portray the
appearance of the article or to convey information.” See 17
US.C. § 101. To the extent Lanard contends that the Chalk
Pencil is not a useful article simply because it is
intended as a toy for children, this argument is not
persuasive. While the Chalk Pencil may be a toy, it is
nevertheless a toy with the intrinsic utilitarian function
of storing and holding chalk to facilitate writing or
drawing. See Hesterberg Decl. ¶ 4. Indeed, Lanard’s
packaging for the Chalk Pencil instructs the user how to
insert chalk into the device, depicts a person’s hand using
the Chalk Pencil to draw on the sidewalk, and touts a
“working eraser.” See id., Ex. B. The Chalk Pencil is not
like a toy which is designed only to portray the appearance
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of another object, with no function other than in a child’s
imagination. Compare Gay Toys[, 703 F.2d at 973] (“To be
sure, a toy airplane is to be played with and enjoyed, but
. . . [o]ther than the portrayal of a real airplane, a toy
airplane, like a painting, has no intrinsic utilitarian
function.”); Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d
904, 916 n.12 (9th Cir. 2010) (explaining that doll clothes
are not “useful articles” because they are “intended only
to portray the appearance of clothing” and have no
utilitarian function given that “[d]olls don’t feel cold or
worry about modesty”). Nor is the Chalk Pencil designed
merely to “simulate” writing. Compare Lanard Toys Ltd. v.
Novelty, Inc., 375 F. App’x [at] 710 . . . (“A child can
make the toy ‘copters’ fly high into the air, but that
‘flight’ is simply a portrayal of the real objects, and the
toys are not capable of actually flying, or transporting
people or supplies, like real helicopters.”). Children do
not hold the Chalk Pencil and imagine using it to draw,
children can, and are intended to, actually draw with the
device.
Lanard Toys Limited v. Toys “R” Us-Delaware, Inc., No. 3:15-CV-
849-J-34PDB, 2019 WL 1304290, at *21 (M.D. Fla. March 21, 2019).
At issue in Gay Toys, as noted in the above passage, was a
toy airplane. The pertinent passage from that case is:
But the statutory definition of “useful article” suggests
that toys are copyrightable. To be a “useful article,” the
item must have “an intrinsic utilitarian function that is
not merely to portray the appearance of the article.” And a
toy airplane is merely a model which portrays a real
airplane. To be sure, a toy airplane is to be played with
and enjoyed, but a painting of an airplane, which is
copyrightable, is to be looked at and enjoyed. Other than
the portrayal of a real airplane, a toy airplane, like a
painting, has no intrinsic utilitarian function.
703 F.2d at 973 (footnote omitted). The court then observed,
with respect to toys generally, that “toys do not even have an
intrinsic function other than the portrayal of the real item.”
Id. at 974 (emphasis in original).
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What these cases demonstrate is that a toy is not a “useful
article” if it is simply to be played with and enjoyed and has
no function other than in a child’s imagination. If its
intrinsic utilitarian function is merely to portray the
appearance of a particular article, it is not “useful article,”
even if it has some mechanical or functional element. The
consequence of there being a mechanical or functional element is
that such an element is not protectable.
Zuru maintains that the Minifigure figurine is a useful
article because of its “extensive functionality and
compatibility with the Lego play system.” Redacted Def. Zuru’s
Reply in Supp. of Mot. for Summ. J. (“Zuru Mot. Reply”) (ECF No.
279) at 29. With respect to “functionality” Zuru points to
LEGO’s Minifigure Guidelines as evidence that “[t]he minifigure
has 15 ‘functional’ features relating to ‘assembly,’
‘poseability,’ and ‘connectability.’”
4 Unredacted Pls.’ Local
Rule 56(a)2 Statement in Opp’n to Def.’s Mot. for Summ. J. ¶ 9.
LEGO disputes that there are 15 “functional features.” It
4 Zuru also attempts to rely on a video prepared by Zuru expert Lee Loetz and
attached to his declaration as Exhibit B. See ECF No. 243-7. This video was
not produced during discovery and LEGO moves to strike it from the summary
judgment record. See Fed. R. Civ. P. 37(c); see, e.g., Packard v. City of New
York, No. 115CV07130ATSDA, 2019 WL 11287678, at *2 n.4 (S.D.N.Y. Oct. 30,
2019) (excluding video that was not produced in discovery). Zuru does not
dispute that the video was not produced during discovery. Rather, Zuru
contends that it is merely a “demonstrative tool.” Zuru Mot. Reply at 29 n.9.
Demonstrative exhibits are not admissible trial evidence. Accordingly, the
court strikes the Loetz video from the summary judgment record because it was
not disclosed during discovery.
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maintains that there are no more than four “intrinsically
utilitarian, and therefore potentially unprotectable, aspects of
the Minifigure figurine . . . .” LEGO Opp. Mem. at 35. But even
accepting Zuru’s interpretation, the fact that there is some
“mechanical or functional element to a toy” is not sufficient to
establish that the toy itself has an intrinsic utilitarian
function and cannot “qualify for copyright protection, in whole
or in part.” Lanard Toys Ltd. v. Novelty, Inc., 375 F. App’x at
709.
In support of its position, Zuru argues that it is an
“undisputed fact that Lego designed [the Minifigure figurine] to
be fully compatible with the Lego play system and to facilitate
‘role play.’” Zuru Mot. Reply at 30. Zuru offers no analysis as
to why the Minifigure figurine’s compatibility with the other
elements of the LEGO play system (at times referred to as the
LEGO Grid System) is an intrinsic utilitarian function causing
it to be a “useful article.” In fact, emphasizing the degree to
which the Minifigure figurine is compatible with the LEGO play
system and facilitates role play serves to highlight the ways in
which it is similar to toys that courts have determined are not
useful articles. See Gay Toys, Inc., 703 F.2d at 973 (“To be
sure, a toy airplane is to be played with and enjoyed, but . . .
[o]ther than the portrayal of a real airplane, a toy airplane,
like a painting, has no intrinsic utilitarian function.”);
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Lanard Toys Ltd. v. Novelty, Inc., 375 F. App’x at 710 (“A child
can make the toy ‘copters’ fly high into the air, but that
‘flight’ is simply a portrayal of the real objects, and the toys
are not capable of actually flying, or transporting people or
supplies, like real helicopters.”).
Zuru argues that Star Athletica mandates the conclusion
that the Asserted Copyrights are invalid, citing to Lanard Toys
Limited v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020) and
Inhale, Inc. v. Starbuzz Tobacco, Inc., No. 211CV03838ODWFFM,
2017 WL 4163990 (C.D. Cal. May 8, 2017). However, Star Athletica
did not involve determination of whether a work was a useful
article. Rather, it involved application of the “special rule
for copyrighting a pictorial, graphic, or sculptural work
incorporated into a ‘useful article.’” Star Athletica, 580 U.S.
at 411. See also id. at 409 (“Congress has afforded limited
protection for these artistic elements by providing that
‘pictorial, graphic, or sculptural features’ of the ‘design of a
useful article’ are eligible for copyright protection as
artistic works if those features ‘can be identified separately
from, and are capable of existing independently of, the
utilitarian aspects of the article.’” (quoting 17 U.S.C. §
101)).
The rule applicable in Star Athletica, Lanard Toys v.
Dolgencorp LLC, and Inhale, Inc. v. Starbuzz Tobacco, Inc. does
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not come into play unless it has already been determined that
the work is a useful article. Thus, in Lanard Toys Ltd. v.
Dolgencorp LLC, the court stated:
As the district court found, Lanard’s ’458 copyright for a
“Pencil/Chalk Holder” has an intrinsic utilitarian
function—storing and holding chalk and facilitating writing
or drawing—which makes it a useful article under the
Copyright Act. Thus, as the district court noted, the
pertinent question is whether the copyright incorporates
features that are sufficiently “separable” from the
utilitarian aspects of the article to be eligible for
copyright protection.
958 F.3d at 1345 (internal citations omitted). See also Inhale,
Inc., 2017 WL 4163990, at *2 (“The Supreme Court found that
[designs printed or sewn onto cheerleading uniforms] were
copyrightable despite the fact that they were part of a useful
article.” (citing Star Athletica, 580 U.S. at 424)). Here,
because there is no genuine issue as to the fact that the
Asserted Copyrights are for an article that is not a “useful
article,” there is no need to proceed with the analysis required
under Star Athletica.
Therefore, LEGO is entitled to summary judgment on Zuru’s
defense/counterclaim that the Asserted Copyrights are invalid
because the Minifigure figurine is a functional, useful article.
e. Patent and Copyright Clause of the Constitution
During the course of this litigation, Zuru has asserted
that:
the asserted copyrights are invalid under the Patent and
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Copyright Clause of the Constitution (“Patent Clause”)
. . . . The Patent Clause therefore precludes the Lego Group
from claiming copyright, trademark, and/or trade dress
protection for the same subject matter claimed in at least
U.S. Patent Nos. 3,005,282, 3,874,113, 3,995,395,
4,028,844, 4,205,482, 4,643,691, 6,213,839, 9,067,147,
D253,711, D352,078.
Pls.’ Ex. 11, Def. Zuru Inc.’s Resp. to Pls.’ Second Set of
Interrogs. (Nos. 8-17) (ECF No. 243-11) at 16.
As LEGO explains, this argument is without merit:
ZURU appears to be relying on an outdated, and since
revised, United States Copyright Office Rule. See 46 FR
33248 (June 29, 1981) (“[A] copyright claim in a patented
design or in the drawings or photographs in a patent
application will not be registered after the patent has
been issued.”). This rule was revised in 1995 and provides
that the existence of a patent does not affect a work’s
eligibility for copyright protection. 37 CFR § 202.10(a),
as amended in 60 Fed. Reg. 15605, 15606 (Mar. 24, 1995)
(“The availability of protection or grant of protection
under the law for a utility or design patent will not
affect the registrability of a claim in an original work of
pictorial, graphic, or sculptural authorship.”); see also
Star Athletica, [580 U.S. at 508] (“[W]e have long held
that design patent and copyright are not mutually
exclusive.”). Indeed, this Court has previously rejected
this argument. LEGO A/S, 404 F. Supp. 3d at 610 (“It is
clear that the same elements of a work protected under
patent law are also eligible for copyright protection.”).
LEGO Mot. Mem. at 31-32.
Therefore, LEGO is entitled to summary judgment on Zuru’s
defense/counterclaim that the Asserted Copyrights are invalid
under the Patent and Copyright Clause of the United States
Constitution.
2. Second Element of the Feist Test: Illegal Copying
The second element that a plaintiff with a copyright
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infringement claim must establish is infringement, i.e.,
“copying of constituent elements of the work that are original.”
Feist, 499 U.S. at 361. “A plaintiff with a valid copyright
proves infringement by demonstrating that: (1) the defendant has
actually copied the plaintiff’s work; and (2) the copying is
illegal because a substantial similarity exists between the
defendant’s work and the protectible elements of plaintiff’s.”
Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119,
122–23 (2d Cir. 1994) (emphasis in original).
The plaintiff may prove copying by direct evidence, or by
showing that the defendant had access to the plaintiff’s
work and that the works are similar enough to support an
inference that the defendant copied the plaintiff’s work.
In the context of deciding whether the defendant copied at
all (as distinguished from whether it illegally copied),
‘similarity’ relates to the entire work, not just the
protectible elements.
Id. at 123 (emphasis in original) (internal citations omitted).
a. Actual Copying
Here, direct evidence shows that there is no genuine issue
as to the fact that Zuru actually copied the Minifigure
figurine, particularly in light of the fact that “similarity”
for this purpose relates to the entire work, not just the
protectable elements.
Zuru admits that it “had knowledge of the Asserted
Copyrights and Asserted Trademark when it designed the MAX
Products.” Redacted Def.’s Local Rule 56(a)2 Statement of Facts
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in Opp’n to Pls.’ Mot. for Summ. J. ¶ 23. Zuru also admits that
it “began designing its first-generation figurines in or around
the first quarter of 2017, and that draft control drawings for
the body shape of the Max first generation figurines were close
to final in September 2017.” Id. Resp. to ¶ 24. Zuru further
admits that it “had knowledge of the LEGO Minifigure figurine at
the time it designed the MAX Products, including the MAX
Figurines.” Id. ¶ 25.
Zuru submitted a Private Brand Proposal to Walmart dated
March 2017. See Pls.’ Ex. 18 (ECF No. 247-4). Zuru’s Chief
Operations Officer Anna Jane Mowbray has admitted that in that
Private Brand Proposal Zuru was “clearly using [LEGO
Minifigures] as placeholders.” Pls.’ Ex. 10, Anna Jane Mowbray
Dep. Tr. Vol. 2, June 9, 2021 (ECF No. 247-2) at 332:11-12.
It is undisputed that Zuru did not use any focus groups
during its design process. Zuru admits that it reviewed the
Minifigure figurine while designing the MAX Figures, but adds,
“we try to like make it compatible like while different, so we
have to review the details.” Pls.’ Ex. 13, Coco Chan Dep. Tr.,
Aug. 30, 2021 (ECF No. 247-3) at 107:11-13. Documents in Zuru’s
design file compare the MAX Figures to LEGO’s Minifigure
figurine. Zuru’s design file includes, among other things, a
design document that shows seven different points of comparison
between LEGO’s Minifigure figurine and the MAX Figure (referred
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to at that time as the “Maykafig”), see Pls.’ Ex. 19 (ECF No.
247-5), Dep. Ex. 257; Pls.’ Ex. 13, Coco Chan Dep. Tr. Vol. 2,
Aug. 31, 2021 at 232:14-15 (“But here, you can see there are
seven different points of comparison to a LEGO Minifigure . . .
.”), and a later document showing design changes, see Pls.’ Ex.
19, Dep. Ex. 259. Coco Chan, Zuru’s Head of New Product
Development testified with respect to the design process:
When we design it, we give a target to the designers that
you need to make it different from the LEGO figurines.
While it is compatible, that is our whole like target is
very clearly delivered to the designers. So that is why
they try to put it like what the difference is in their
designs in their presentation. But I remember we still
talked about it is still not good enough. So it is like the
design process keeps going on for quite a few iterations,
if I remember correctly, because they -- you can see the
facial expression now is different from before because we
keep asking them to have more like energy and more
characters into the figures. And then they will --
afterwards they keep changing the body, the legs and
everything else.
Pls.’ Ex. 13, Coco Chan Dep. Tr. Vol. 2, Aug. 31, 2021 at 233:6-
25.
Even if the court had concluded that there was a genuine
issue of material fact as to whether LEGO had proved copying by
direct evidence, there is no genuine issue as to the fact that
Zuru had access to LEGO’s work and the works are similar enough
to support an inference that Zuru copied LEGO’s work. In this
context, a plaintiff must only show “probative similarity” to
demonstrate the works are similar enough to support the required
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inference.
Probative similarity is a “less demanding test than”
substantial similarity, and requires “only that there are
similarities between the two works that would not be
expected to arise if the works had been independently
created.” Michael Grecco Prods., Inc. v. Valuewalk, LLC,
345 F. Supp. 3d 482, 500 (S.D.N.Y. 2018) (internal
quotation marks and citation omitted). When comparing works
for the purpose of determining probative similarity,
protectable and unprotectable elements need not be
differentiated. Fisher-Price, 25 F.3d at 123.
Best-Lock, 404 F. Supp. 3d at 607–08.
Here, examination of the Minifigure figurine and the MAX
Figure reveals that they are probatively similar, a fact which
is confirmed by the documents in Zuru’s design file and Zuru’s
explanation of its design process. See id. at 608 (“Visual
examination of the products at issue in this case reveals that
they are . . . ‘probatively similar’ . . . .”)
Thus, no reasonable trier of fact could conclude that Zuru
did not actually copy the Minifigure figurine in designing the
MAX Figures.
b. The Copying is Illegal
To satisfy this requirement a plaintiff must demonstrate
that substantial similarity exists between the defendant’s work
and the protectable elements of the plaintiff’s 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
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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)
(alteration in original) (quoting Fisher-Price, 25 F.3d at 123).
“In most cases, the test for ‘substantial similarity’ is
the so-called ‘ordinary observer test’ . . . : whether ‘an
average lay observer would [ ] recognize the alleged copy as
having been appropriated from the copyrighted work.’” Knitwaves,
71 F.3d at 1002 (second alteration in original) (citations
omitted); see also Laureyssens v. Idea Group, Inc., 964 F.2d
131, 141 (2d Cir. 1992) (test is “whether ‘the ordinary
observer, unless he set out to detect the disparities, would be
disposed to overlook them, and regard their aesthetic appeal as
the same’”) (quoting Peter Pan Fabrics, 274 F.2d at 489);
Salinger v. Colting, 607 F.3d 68, 83 (2d Cir. 2010) (quoting
Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759, 766 (2d Cir.
1991) (“In considering substantial similarity between two items
. . . what is required is only a visual comparison of the works
. . . .”).
“However, . . . where we compare products that contain both
protectible 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,
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71 F.3d at 1002 (emphasis in original) (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.’”)
“Though substantial similarity often presents a jury
question, it may be resolved as a matter of law where ‘access to
the copyrighted work is conceded, and the accused work is so
substantially similar to the copyrighted work that reasonable
jurors could not differ on this issue.’” Andy Warhol Found. for
Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021)
(quoting Rogers v. Koons, 960 F.2d 301, 307 (2d Cir. 1992)),
aff’d sub nom. Andy Warhol Found. for the Visual Arts, Inc. v.
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Goldsmith, 598 U.S. 508 (2023); see also Gaito, 602 F.3d at 67
(“Finally, and critically, it is patent that the overall visual
impressions of the two designs are entirely different.”).
LEGO asserts that the “ordinary observer test” is
applicable here and that “[t]he ordinary observer test is easily
satisfied because the overall look and feel of the Infringing
MAX Figurines is substantially similar to the Minifigure
figurine protected by the Asserted Copyrights.” LEGO Mot. Mem.
at 22 (footnote omitted). In addition, LEGO maintains that “the
Infringing MAX Figurines are substantially similar to the LEGO
Minifigure figurine under the more demanding ‘discerning
ordinary observer’ standard.” Id. at 22, n.8. Zuru maintains
that it is entitled to summary judgment based on the requirement
of substantial similarity because LEGO should be “held to the
positions it took in its litigation against Best Lock,” see
Best-Lock, 404 F. Supp. 3d, and when it is, LEGO’s infringement
claim fails “because the Zuru figurines are different from the
minifigure in all the same ways as the Kre-O and in more ways,
and clearly are not ‘virtually identical,’ or even substantially
similar, to any alleged protectable feature of the minifigure.”
Zuru Mot. Mem. at 41. Zuru asserts that:
Lego makes no showing—and offers no argument—that these
standards are satisfied here. It does not even argue, let
alone show, that Zuru’s designs are “virtually identical”
to those of Lego.
Nor does it argue, or show, that there is
similarity of protected expression. On the governing legal
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standard for infringement, Lego makes no argument, and
offers no evidence, of any type.
Zuru Mot. Reply at 15.
As noted, Zuru argues that LEGO took certain positions in
the Best-Lock litigation and judicial estoppel applies with
respect to those positions. The court has already ruled against
Zuru on that argument. See Lego A/S v. Zuru Inc., No. 3:18-CV-
2045 (AWT), 2023 WL 2727552, at *5 (D. Conn. Mar. 31, 2023)
(“Here, Zuru cannot show that even the first prerequisite for
applicability of judicial estoppel is present . . . , i.e., 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.”).
In addition, Zuru relies on the following language from
Best-Lock: “[W]hen one subtracts from a copyrighted object the
unoriginal and unprotected elements, the copyright owner is
‘left with a thin copyright, which protects only against
virtually identical copying.’” Zuru Mot. Reply at 15 (quoting
Best-Lock, 404 F. Supp. 3d at 614 (quoting Satava v. Lowry, 323
F.3d 805, 810-12 (9th Cir. 2003))). However, there is no support
in the record for the proposition that here there are
“unoriginal” elements to be subtracted in conducting the
substantial similarity inquiry. The following language from
Best-Lock, which quotes Satava, is not applicable here:
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Taken together, the holdings in Fisher-Price, affirm the
general principle that “expressions that are standard,
stock, or common to a particular subject matter or medium
are not protectable under copyright law,” and when one
subtracts from a copyrighted object the unoriginal and
unprotected elements, the copyright owner is “left with a
thin copyright, which protects only against virtually
identical copying.”
Best-Lock, 404 F. Supp. 3d at 614 (quoting Satava, 323 F.3d at
810-12). At issue in Satava were glass-in-glass jellyfish
sculptures. The court noted that “no copyright protection may be
afforded to the idea of producing a glass-in-glass jellyfish
sculpture or to elements of expression that naturally follow
from the idea of such a sculpture.” Satava, 323 F.3d at 810. The
court then observed that, “[i]t is true, of course, that a
combination of unprotectable elements may qualify for copyright
protection. . . . United States v. Hamilton, 583 F.2d 448, 451
(9th Cir. 1978) (Kennedy, J.) (‘[O]riginality may be found in
taking the commonplace and making it into a new combination or
arrangement.’).” Id. at 811 (emphasis in original) (internal
citation omitted). But the court concluded that “[t]he
combination of unprotectable elements in Satava’s sculpture
falls short of this standard.” Id. The court explained:
We do not mean to suggest that Satava has added nothing
copyrightable to his jellyfish sculptures. He has made some
copyrightable contributions: the distinctive curls of
particular tendrils; the arrangement of certain hues; the
unique shape of jellyfishes’ bells. To the extent that
these and other artistic choices were not governed by
jellyfish physiology or the glass-in-glass medium, they are
original elements that Satava theoretically may protect
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through copyright law. Satava’s copyright on these original
elements (or their combination) is “thin,” however,
comprising no more than his original contribution to ideas
already in the public domain. Stated another way, Satava
may prevent others from copying the original features he
contributed, but he may not prevent others from copying
elements of expression that nature displays for all
observers, or that the glass-in-glass medium suggests to
all sculptors. Satava possesses a thin copyright that
protects against only virtually identical copying.
Id. at 812. Here, expression that is standard stock or common to
a particular subject matter is not at issue. In designing the
Minifigure figurine LEGO did not achieve originality by “taking
the commonplace and making it into a new combination or
arrangement,” nor did it merely make an original contribution to
an idea that was already in the public domain. Hamilton, 583
F.2d at 451.
LEGO acknowledges that there are “intrinsically
utilitarian” features of the Minifigure figurine. LEGO Opp. Mem.
at 35. Consequently, the court’s inquiry here must be “more
discerning” because that is the test that must be applied when
the product contains both protectable and unprotectable
elements. See Knitwaves, 71 F.3d at 1002 (“[T]he ‘mechanical’ or
‘utilitarian’ features are not protectible.” (quoting Fisher-
Price, 25 F.3d at 123)). LEGO maintains that “[o]nly 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
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of legs are necessary for attachment and cannot be easily
changed through alternative designs, yet remain capable of
interacting with the LEGO Grid System.” Pls.’ Ex. 33, Ex. B,
Rebuttal Report of Elizabeth B. Knight (ECF No. 247-13) ¶ 53
(footnote omitted).
Zuru maintains that the Minifigure figurine has fifteen
features that are unprotectable elements. Zuru expert Loetz
states that “the Lego minifigure is highly ‘functional’ . . . as
a standalone figurine (e.g., in the way that its elements move,
rotate, etc.).” Def.’s Ex. 7, Ex. A, Expert Report of Lee Loetz
(ECF No. 236-2) ¶ 55. He explains:
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 [replaceable].
9. Left leg is articulated with a hinge joint.
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 right 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
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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 Loetz counts separately the “c-cup” clutching shape on the
right hand and the left hand, the “tube” holes on the back of
the right leg and the back of the left leg, and the “tube” holes
on 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, i.e., the head and legs are removable and individual
pieces connect to each other. See Items 3, 8, and 15.
In determining what elements are unprotectable, “[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.”
Lego A/S v. Best-Lock Construction Toys, Inc., 874 F. Supp. 2d
75, 99 (D. Conn. 2012). Zuru expert Loetz opines, “[i]n my
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opinion, it would be difficult for Zuru to make its figurines
more different from the minifigure without sacrificing
functionality and other non-design considerations . . . .”
Def.’s Ex. 7, Ex. A, Expert Report of Lee Loetz ¶ 5. But LEGO
expert Knight shows 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.” Pls.’ Ex. 33, Ex. B, Rebuttal
Report of Elizabeth B. Knight ¶ 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).
Zuru also argues that the sizes and proportions of the
Minifigure figurine are functional because they ensure
compatibility with the LEGO Grid System. Zuru expert Loetz
states: “In addition to designing the minifigure to have many
functional features as a standalone product, Lego also designed
the size and proportions of the fully assembled minifigure in
accordance with precise measurements to ensure its compatibility
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with the Lego system of play. Virtually every element of Lego’s
minifigure can attach to a brick within the Lego play system in
multiple ways.” Def.’s Ex. 7, Ex. A, Expert Report of Lee Loetz
¶ 62. Loetz opines that “[d]eviation from these exacting
specifications would limit the functionality, and thus the play
performance, of the figurines.” Id. ¶ 63. However, LEGO expert
Knight demonstrates that “[t]he Minifigure figurine fits within
the LEGO Grid System, but the system does not require that all
figures be the same size and scale.” Pls.’ Ex. 33, Ex. B,
Rebuttal Report of Elizabeth B. Knight ¶ 58. Knight shows how
“[t]he LEGO Grid System allows for . . . variations of sizes and
scale, of figurines and models.” Id. Knight demonstrates, using
photographs, how “[a]s shown below, the Friends figurine is
similar in size and scale to the Minifigure figurine, in
particular even when it is expanded in vertical directions to
similarly accessorize (scuba tanks, backpacks, shoes, flippers,
etc.) [but] [a]s stated in my opening report, one need to merely
add plates in the vertical direction to allow for alternative
figurines to be fit within the system. The LEGO Grid System is
infinitely scalable.” Id. ¶ 60. In paragraph 62 of her rebuttal
report Knight also illustrates how “one can design a toy
figurine that has an entirely different look and feel, while
incorporating holes in the back of the legs that allow for
attachment in the seated position.” Id. ¶ 62 (footnote omitted).
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Thus, there is no genuine issue as to the fact that the size and
proportions of the Minifigure figurine are not functional.
Thus, there is no genuine issue as to the fact that the
only functional elements of the Minifigure figurine are those
that facilitate attachment. Only the stud projection on 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 on the
back of the legs are utilitarian.
LEGO maintains that when one excludes these unprotectable
elements and conducts a more discerning inquiry, it has
demonstrated that there is no genuine issue with respect to the
fact that Zuru has appropriated the total concept and overall
feel of the Minifigure figurine. See Knitwaves, 71 F.3d at 1003.
The court agrees.
“The design of the Minifigure figurine is an original work
of art [that is] . . . recognizable as a unique sculptural
expression of a human figure.” Pls.’ Ex. 33, Ex. A, Expert
Report of Elizabeth B. Knight ¶ 10(b). The image in paragraph 57
of Knight’s rebuttal report reflects the unprotectable elements
of the Minifigure figurine that 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
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base of the feet and the back of the legs.5 See Pls.’ Ex. 33, Ex.
B, Rebuttal Report of Elizabeth B. Knight ¶ 57.
Zuru contends that the overall appearance of the MAX Figure
is different from the Minifigure figurine. In the section of his
report under the heading “Comparison of Zuru Figurines to
Minifigures Depicted in Lego Copyright and Trademark
Registrations,” Zuru expert Loetz opines that “my analysis and
opinions above about the differences between the appearance and
design of the Zuru MAX figurines and the Lego minifigure apply
comparably to the minifigures shown in the Lego registrations.”
Def.’s Ex. 7, Ex. A, Expert Report of Lee Loetz ¶ 147. He adds:
I note, however, that the Zuru Max figurines that I have
reviewed have additional differences from the Lego
minifigures as shown in the Asserted Copyrights. In
particular, none of the Zuru figurines I have reviewed have
the head accessories (hair or helmets) shown on the Lego
minifigures, none of the Zuru figurines has a clear head or
a yellow head, and, to the extent the Lego minifigures
shown in Lego’s registrations have paint, coloring, or
decorations on them (like facial decorations or “jackets”),
none of the Zuru figurines I have reviewed have similar
decorations.
Id. ¶ 148. The analysis and opinions “above” about the
differences between the appearance and design of the MAX Figures
and the Minifigure figurine are set forth in Loetz’s report
5 Thus, Zuru’s argument that “Lego concedes that its design expert, Ms.
Knight, ‘did nothing to ensure her similarity opinions “were not premised on
unprotectable features” of the Minifigure figurine,’ and claims she has no
obligation to do so,” Zuru Mot. Reply at 11 (emphasis in original), and its
argument that “Lego does not identify what the supposedly protectable
features of the minifigure are, and it makes no showing that the parties’
figurines are substantially similar, let alone virtually identical, when only
‘protectable’ expression is considered,” id. at 18, lack merit.
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under the heading “Comparison of Design of Zuru and Lego
Figurines.” In that section, Loetz cites to LEGO’s Minifigure
Guidelines for the proposition that LEGO “considers three of
[the features of the Minifigure figurine] to be the ‘essential
characteristics that define a minifigure’: (i) the shape of the
head; (ii) the shape of the torso; and (iii) the shape of the
foot. . . .” Id. ¶ 118. In the section where Loetz compares the
design of Zuru’s MAX Figure and the design of LEGO’s Minifigure
figurine, he compares a representative sample of a First
Generation MAX Figure to LEGO Minifigures by comparing the heads
and pointing out differences between them; then comparing the
torsos and pointing out differences between them; and then
comparing the legs and feet, and pointing out differences
between them. He then concludes with respect to the First
Generation MAX Figure that “given that the ‘essential’
minifigure characteristics of the head, torso, legs, and feet
are different in the first generation Zuru figurine and the Lego
minifigure, the overall appearance of the figurines is likewise
different . . . .” Id. ¶ 132. See also id. ¶ 62. Loetz then
repeats the process with respect to LEGO Minifigures and a
representative sample of a Second Generation MAX Figure. See id.
¶¶ 134–41. He then reaches a similar conclusion: “Again, given
the differences in each of the elements that comprise the
‘essential characteristics’ of the Lego minifigure, the overall
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appearance of the second generation Zuru MAX Figurine is
different from the Lego minifigure.” Id. ¶ 142.
The approach taken by Loetz is not a reliable foundation
for his opinion. Federal Rule of Evidence 702 sets forth the
standard to be used by the court in evaluating the admissibility
of expert testimony:
If scientific, technical, or other specialized knowledge
will assist the trier of fact to understand the evidence or
to determine a fact in issue, a witness qualified as an
expert by knowledge, skill, experience, training, or
education, may testify thereto in the form of an opinion or
otherwise, if (1) the testimony is based upon sufficient
facts or data, (2) the testimony is the product of reliable
principles and methods, and (3) the witness has applied the
principles and methods reliably to the facts of the case.
Fed. R. Evid. 702. In Daubert, the Supreme Court held that Rule
702 “assign[s] to the trial judge the task of ensuring that an
expert's testimony both rests on a reliable foundation and is
relevant to the task at hand.” Daubert v. Merrell Dow Pharm.,
Inc., 509 U.S. 579, 597 (1993). In Kumho, the Court emphasized
the relevance/reliability standard in determining the
admissibility of expert testimony, stating that Rule 702
“establishes a standard of evidentiary reliability . . .
requir[ing] a valid connection to the pertinent inquiry as a
precondition to admissibility . . . [and] a reliable basis in
the knowledge and experience of the relevant discipline.”
Kumho
Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 149 (1999) (internal
quotations and citations omitted).
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A court must undertake “a rigorous examination of the facts
on which the expert relies, the method by which the expert draws
an opinion from those facts, and how the expert applies the
facts and methods to the case at hand.” Amorgianos v. Nat'l R.R.
Passenger Corp., 303 F.3d 256, 267 (2d Cir. 2002). “A minor flaw
in an expert’s reasoning or a slight modification of an
otherwise reliable method will not render an expert’s opinion
per se inadmissible. The judge should only exclude the evidence
if the flaw is large enough that the expert lacks good grounds
for his or her conclusions.” Id. But “when an expert opinion is
based on data, a methodology, or studies that are simply
inadequate to support the conclusions reached, Daubert and Rule
702 mandate the exclusion of that unreliable opinion testimony.”
Id. at 266.
As an initial matter, the descriptions of the works
protected by the Asserted Copyrights are not set forth in the
Minifigure Guidelines but in the deposit materials for the
Asserted Copyrights. More importantly though, Loetz’s
methodology for conducting the more discerning inquiry is
contrary to the manner in which that inquiry must be conducted.
As explained in Gaito, “[n]o 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.’” 602
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F.3d at 66 (second alteration in original) (citations omitted).
See also Knitwaves, 71 F.3d at 1003 (“Lollytogs’ argument,
however, misconstrues the nature of our inquiry into
‘substantial similarity.’ We do not believe that we are required
by the ‘more discerning ordinary observer test’ to undertake so
mechanical and counterintuitive an exercise as Lollytogs
suggests.”).
Zuru points to no other evidence in support of its position
that the total concept and overall feel of the MAX Figure is
different from that of the Minifigure figurine. On the other
hand, LEGO expert Knight explains that “[t]he Minifigure
figurine’s whole sculpture (e.g., cylindrical head and body
features, including torso, arms, and legs) represents a human
figure and comprise the total look and feel of the sculptures.”
Pls.’ Ex. 33, Ex. A, Expert Report of Elizabeth B. Knight ¶ 45.
Knight shows side-by-side silhouettes of the Minifigure figurine
and the First Generation MAX Figure from the front view, the
side view, and the top view. She then shows the results of an
overlay of the figures from each view. Knight states accurately
that
[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 torso and the head, are all part of the overall
look and feel of the figure. Tiny differences do not change
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the overall look and feel of the figure.
Id. ¶ 46.
Knight provides a similar analysis with respect to a
comparison between the Minifigure figurine and the Second
Generation MAX Figure. The overlay shows that “[t]he overall
shape and proportions are substantially similar to . . . the
Minifigure Copyrights . . . . The overlay diagrams . . . show
the very small differences in the overall shape of figures. The
shoulders are slightly higher and the height of the head is a
tiny bit taller. Neither of the changes would change the extreme
similarity to the overall look and feel of the figure.” Id. ¶
49. She concludes further that “[t]he shape and proportions of
leg to head to torso of the Redesigned ZURU Figurine are nearly
identical to the Minifigure figurine.” Id. “When comparing
overlays of the silhouettes it is clear that there are few small
shape differences,” id. ¶ 51, and “[t]he changes made to the
2019 Redesigned ZURU Figurine do not change the overall look and
feel,” id. ¶ 50. Her analysis supports her conclusion that “ZURU
has attempted to point out differences between the 2019 ZURU
Figurine and the Minifigure figurine and the Copyrights and
Trademarks, but they are so small in their visual effect that
they have negligible effects on the overall visual expression.”
Id. ¶ 54. There is no genuine issue as to these conclusions
reached by Knight.
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Thus, there is no genuine issue as to the fact that Zuru
actually copied LEGO’s work, nor as to the fact that a more
discerning observer would conclude that the total concept and
overall feel of the First Generation and Second Generation MAX
Figure is substantially similar to that of the Minifigure
figurine. Therefore, LEGO is entitled to summary judgment on its
claim for copyright infringement of the Minifigure figurine
(Count I) and Zuru’s First and Second Defenses and Counterclaim
Counts III and IV (copyright non-infringement and invalidity),
and Zuru’s motion for summary judgment with respect to Count I
is being denied.
B. Claims for Trademark Infringement (Counts II and III); and
Trademark Non-Infringement and Invalidity Defenses and
Counterclaims
“The Lanham Act provides for the registration of
trademarks, which it defines in § 45 to include ‘any word, name,
symbol, or device, or any combination thereof [used or intended
to be used] to identify and distinguish [a producer’s] goods . .
. from those manufactured or sold by others and to indicate the
source of the goods . . . .” Wal-Mart Stores, Inc. v. Samara
Bros., 529 U.S. 205, 209 (2000) (alterations and omissions in
original) (quoting 15 U.S.C. § 1127). The Lanham Act defines
trademark infringement as the use without the consent of the
registrant of “any reproduction, counterfeit, copy, or colorable
imitation of a registered mark in connection with the sale,
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offering for sale, distribution, or advertising of any goods or
services on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive.” 15 U.S.C.
§ 1114(1)(a). “The Act similarly prohibits the infringement of
unregistered, common law trademarks. See [15 U.S.C.] §
1125(a)(1).” Time, Inc. v. Petersen Publ’g. Co., 173 F.3d 113,
117 (2d Cir. 1999); see also Converse, Inc. v. Int’l Trade Comm’n
Skechers U.S.A., Inc., 909 F.3d 1110, 1115 (Fed. Cir. 2018)
(“[W]e think that it is confusing and inaccurate to refer to two
separate marks—a registered mark and a common-law mark. Rather,
there is a single mark, as to which different rights attach from
the common law and from federal registration.”)
“To prevail on a trademark infringement claim under the
Lanham Act, the plaintiff must show that: (1) plaintiff owns a
valid protectable mark; and (2) defendant’s use of a similar
mark is likely to cause consumer confusion as to the origin or
association of the goods or services.” Vans, Inc. v. MSCHF Prod.
Studio, Inc., 88 F.4th 125, 135–36 (2d Cir. 2023); see also
Time, Inc., 173 F.3d at 117 (citation and internal quotation
marks omitted) (“To prevail on a trademark infringement claim
under either [15 U.S.C. §§ 1114(1)(a) or 1125(a)(1)], a
plaintiff must demonstrate that it has a valid mark entitled to
protection and that the defendant's use of it is likely to cause
confusion.”). “Because the Lanham Act is a strict liability
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statute, a registrant need not prove knowledge or intent in
order to establish liability.” Innovation Ventures, LLC v.
Ultimate One Distrib. Corp., 176 F. Supp. 3d 137, 153 (E.D.N.Y.
2016).
It is undisputed that LEGO owns the Asserted Trademark,
Registration Number 4,903,968 (the “’968 Registration”). With
respect to the other requirement in the first element of a claim
for trademark infringement, LEGO contends that there is no
genuine issue as to whether the Asserted Trademark is valid and
entitled to protection. Zuru contends that the Asserted
Trademark is invalid because the Minifigure figurine is not
distinctive, invalid because the Minifigure figurine is a
functional product configuration, invalid due to fraud on the
USPTO, invalid due to inconsistent appearance, and invalid
because it has been abandoned.
With respect to the second element of a claim for trademark
infringement, LEGO contends that there is no genuine issue as to
whether there is a likelihood of confusion between Zuru’s MAX
Figures and the Asserted Trademark. Zuru contends that, as a
matter of law, the MAX Figures do not infringe the Asserted
Trademark.
1. First Element: Valid Trademark Entitled to Protection
The Asserted Trademark consists of
the three-dimensional configuration of a toy figure
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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.
Pls.’ Ex. 7 (ECF No. 243-7) at 2 (original in all caps). The
mark is depicted in a single drawing in the ‘968 Registration.
See Pls.’ Ex. 9 (ECF No. 243-9) at 8.
It is undisputed that the Asserted Trademark is for a
product-design trade dress. In Wal-Mart Stores, the Court
explained, with respect to product-design trade dress:
The breadth of the definition of marks registrable under §
2 . . . has been held to embrace not just word marks, such
as “Nike,” and symbol marks, such as Nike's “swoosh”
symbol, but also “trade dress”—a category that originally
included only the packaging, or “dressing,” of a product,
but in recent years has been expanded by many Courts of
Appeals to encompass the design of a product. See, e.g.,
Ashley Furniture Industries, Inc. v. Sangiacomo N. A.,
Ltd., 187 F.3d 363 (C.A.4 1999) (bedroom furniture);
Knitwaves, [71 F.3d] (sweaters); Stuart Hall Co., Inc. v.
Ampad Corp., 51 F.3d 780 (C.A.8 1995) (notebooks). These
courts have assumed, often without discussion, that trade
dress constitutes a “symbol” or “device” for purposes of
the relevant sections, and we conclude likewise. “Since
human beings might use as a ‘symbol’ or ‘device’ almost
anything at all that is capable of carrying meaning, this
language, read literally, is not restrictive.” Qualitex Co.
v. Jacobson Products Co., 514 U.S. 159, 162 . . . (1995).
529 U.S. at 209–10.
“For infringement in the period after registration, the
Lanham Act entitles the owner of the registered mark to a
presumption that the mark is valid, including that it has
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acquired secondary meaning.” Converse, Inc., 909 F.3d at 1117
(internal citations omitted). In Converse, the court stated:
In the context of cancellation proceedings, we have held
that this presumption shifts both the burden of persuasion
and the initial burden of production to the challenger to
rebut the presumption. . . . We see no reason why the
effect of the presumption should be any different in the
infringement context, and we join with the majority of
circuits that have held that the presumption shifts both
burdens to the party challenging secondary meaning.
Id.
Thus, Zuru has the initial burden of production with
respect to its contention that the Asserted Trademark is not a
valid and legally protectable mark.
a. Distinctiveness
Zuru contends that “[t]he features at issue for the LEGO
Minifigures have not acquired distinctiveness, and are commonly
used by third parties.” Zuru, Inc.’s Answer and Countercls. ¶
160.
“All trademarks, in order to be valid or protectable, must
be distinctive of a product’s source, and ‘courts have held that
a mark can be distinctive in one of two ways.’” Converse, Inc.,
909 F.3d at 1116 (quoting Wal-Mart Stores, 529 U.S. at 210).
“First, a mark is inherently distinctive if ‘[its]
intrinsic nature serves to identify a particular source.’”
[Wal-Mart Stores, 529 U.S. at 210] (alteration in original)
(quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.
763, 768 . . . (1992)). “Second, a mark has acquired
distinctiveness, even if it is not inherently distinctive,
if it has developed secondary meaning, which occurs when,
‘in the minds of the public, the primary significance of a
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[mark] is to identify the source of the product rather than
the product itself.’” Id. at 211 . . . (alteration in
original) (quoting Inwood Labs., Inc. v. Ives Labs., Inc.,
456 U.S. 844, 851 n.11 . . . (1982)); see also 15 U.S.C. §
1052(f).
Id. at 1116. “The Supreme Court has held that unlike word marks
and product-packaging trade dress, product-design trade dress
can never be inherently distinctive.” Id. “As a result, [such]
‘a product’s design is distinctive, and therefore protectable,
only upon a showing of secondary meaning.’” Id. (quoting Wal-
Mart, 529 U.S. at 216).
“Factors that are relevant in determining secondary meaning
include ‘(1) advertising expenditures, (2) consumer studies
linking the mark to a source, (3) unsolicited media coverage of
the product, (4) sales success, (5) attempts to plagiarize the
mark, and, (6) length and exclusivity of the mark’s use.’”
Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings,
Inc., 696 F.3d 206, 226 (2d Cir. 2012) (quoting Genesee Brewing
Co. v. Stroh Brewing Co., 124 F.3d 137, 143 n.4 (2d Cir. 1997));
see also Car-Freshner Corp. v. Am. Covers, LLC, 980 F.3d 314,
329 (2d Cir. 2020) (“Acquired distinctiveness, sometimes called
secondary meaning, is determined by analyzing six factors:
advertising expenditures, consumer studies linking the mark to a
source, unsolicited media coverage of the product, sales
success, attempts to plagiarize the mark, and the length and
exclusivity of the mark’s use.”). “[N]o ‘single factor is
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determinative,’ and every element need not be proved.” Thompson
Med. Co. v. Pfizer Inc., 753 F.2d 208, 217 (2d Cir. 1985)
(quoting Am. Footwear Corp. v. Gen. Footwear Co., 609 F.2d 655,
663 (2d Cir. 1979)). See also Easy Spirit, LLC v. Skechers
U.S.A., Inc., 515 F. Supp. 3d 47, 61 (S.D.N.Y. 2021) (“[N]o
single factor is determinative and every element need not be
proved.”) (alteration in original) (quoting Thompson Med. Co.,
753 F.2d at 217); Focus Prods. Grp. Int’l, LLC v. Kartri Sales
Co., 647 F. Supp. 3d 145, 210 (S.D.N.Y. 2022) (“The Second
Circuit has identified six non-exclusive factors that bear on
[the secondary meaning] inquiry.”).
LEGO contends that consideration of the secondary meaning
factors shows that Zuru has no evidence to rebut the presumption
of acquired distinctiveness. With respect to advertising
expenditures and sales success, LEGO points to the October 20,
2015 Declaration in Support of Acquired Distinctiveness Under
Section 2(f), Pls.’ Ex. 9 (ECF No. 243-9) at 9-72 (the “Hecht
Declaration”), executed by Michael G. Hecht and submitted to the
USPTO in support of LEGO’s application for the Asserted
Trademark. The Hecht Declaration was submitted in response to an
office action by the USPTO requesting evidence of acquired
distinctiveness. See Pls.’ Ex. 9 at 2. With respect to
advertising, the Hecht Declaration states:
Between 1978 and the present, LSI has spent, on advertising
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and promotion in the United States for LEGO toy sets
containing such Minifigures and for such Minifigures sold
separately, in excess of 200 . . . million dollars,
including, among other things, extensive advertising on
television and print media. Examples are in Exhibit A.
Hecht Declaration ¶ 7.
6
With respect to sales success, it states:
5. The LEGO Minifigure in the configuration in the mark of
this application was first sold in 1978. Sales in commerce,
that is, in the U.S., also began in 1978 and millions have
been sold in the U.S. each year since 1978. Since that
time, worldwide sales of LEGO Minifigures have exceeded
four billion.
6. The approximate number of LEGO Minifigures sold in the
United States from 1978 to the present (separately or in
construction toy sets) exceeds 120 . . . million. Total
retail sales in the U.S., from 1978 to the present, of LEGO
Minifigures sold separately and LEGO construction toy sets
containing such Minifigures exceed one billion dollars.
Id. ¶¶ 5-6.
While the Hecht Declaration makes no mention of consumer
studies or unsolicited media coverage linking the mark to a
source, it does reflect that “LEGO Minifigures are so popular
that there is an industry of producing products that facilitate
collecting them, including a wide variety of books showing the
Minifigures. Books include general encyclopedias and guides to
6 The Hecht Declaration states that LSI has spent in excess of “200 hundred
million dollars.” Hecht Declaration ¶ 7. LEGO’s Memorandum of Law in Support
of LEGO’s Motion for Partial Summary Judgment states that the number is $200
million dollars. See LEGO Mot. Mem. at 43. The court references the Hecht
Declaration in accordance with LEGO’s Memorandum of Law in Support of LEGO’s
Motion for Partial Summary Judgment here and throughout this ruling because
the numbers used in that memorandum are consistent with the $1 billion figure
in ¶ 6.
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the Minifigures and books on the Minifigures with specific
subject matter.” Id. ¶ 10. In addition, the Hecht Declaration
states that “[t]he familiarity of consumers with the Minifigure
is reinforced by a wide variety of LEGO books, sticker books,
video games and movies for children (shown often on television)
featuring animated versions of these Minifigures as star
characters.” Id. ¶ 12.
With respect to attempts to plagiarize the mark, in Best-
Lock, the court concluded that “no reasonable trier of fact
could determine that Best-Lock did not actually copy Lego.” 404
F. Supp. 3d at 608.
As to length and exclusivity of the use of the mark, as
noted above, the Minifigure was first sold in 1978 and had been
sold for approximately 37 years before the application for the
Asserted Trademark was filed. The Hecht Declaration states:
The use of the mark of this application, that is, the
Minifigure, has been substantially exclusive, that is, only
by The LEGO Group, apart from uses by occasional small
infringers, which The LEGO Group usually polices. Except
for these occasional small infringers, no other toy
manufacturer uses the same configuration for plastic
figurines sold in the U.S. as far as LSI is aware. Because
the infringers are small, elusive and usually located in
China, the policing often takes the form of requesting
United States Customs and Border Protection to seize
incoming shipments of construction toy sets containing
copies of the Minifigure, or Minifigures or Minifigure
parts imported separately, as infringements of the recorded
U.S. copyright registration for the Minifigure, Reg No. VA-
655-104, recorded with CBP under CBP Recordation No. COP
99-00203. This is more cost-effective than trying to sue
small, elusive entities in China, whose export volumes to
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the US. are trivial.
Id. ¶ 13. The Best-Lock litigation is an example of LEGO’s steps
to police activities by infringers.
The Hecht Declaration also reflects that LEGO has
authorized licensees. See id. ¶ 9.
In response to an interrogatory from LEGO asking Zuru to
state the facts upon which it based its claim that the Asserted
Trademark has not acquired distinctiveness, Zuru stated, in
relevant part, “[u]pon information and belief, the primary
significance of the purported mark to consumers is that of a
construction toy, and not an indicator of source.” Pls.’ Ex. 11,
Def. Zuru Inc.’s Resp. to Pls.’ Second Set of Interrogs. (Nos.
8-17) at 25. In connection with the instant motions, Zuru argues
that there are several reasons why there is at least a genuine
issue of material fact as to whether LEGO’s asserted product-
design trade dress has acquired distinctiveness.
First, Zuru contends that LEGO cannot rely on statements in
the Hecht Declaration. It argues that “Mr. Hecht’s declaration
is inadmissible because Lego never disclosed him as a witness in
this case . . .” and “[i]ndependently, Mr. Hecht’s declaration
is inadmissible as hearsay because it was filed in the Best Lock
case, and is thus an out-of-court statement being offered for
its truth.” Zuru Opp. Mem. at 56-57. However, the Hecht
Declaration was submitted in response to the office action by
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the USPTO and is part of the public trademark prosecution file
for the Asserted Trademark. See Pls.’ Ex. 9; see also Redacted
Reply Mem. in Further Supp. of Pls.’ Mot. for Partial Summ. J.
(ECF No. 281) (“LEGO Mot. Reply”) at 37 n.39 (“Indeed, ZURU
produced the full trademark prosecution file for the Asserted
Trademark (Bates numbers ZURU-00040191 through -40317),
including the Hecht Declaration, and used it as deposition
exhibit 200.”).
Zuru also argues that “Lego’s ‘distinctiveness’ arguments
go to the heart of Lego’s misrepresentations.” Zuru Opp. Mem. at
58; see also id. at 59 (“Lego must be held to the
representations in made, and benefitted from, in Best Lock, that
the Kre-O and Mega Bloks figurines are ‘non-infringing,’
‘different expressions’ of the minifigure.”). However, as
discussed earlier, the court has already concluded that judicial
estoppel does not apply. See Lego A/S v. Zuru Inc., 2023 WL
2727552, at *5.
In addition, Zuru contends that “[a]n undecorated
minifigure is ‘broadly generic’ and ‘extremely simplistic’ so it
can ‘act[] as the perfect blank canvas’ for ‘any sort of
character.’” Redacted Def.’s Local Rule 56(a)1 Statement in
Supp. of Their Mot. for Summ. J. ¶ 13 (second alteration in
original). It argues that “[c]onsistent with Lego’s view of its
trade dress as ‘generic,’ Lego’s corporate designees in this
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case, who work for Lego and are consumers of Lego products, were
unable to recognize the shape and form of the minifigure.”
Unredacted Def. Zuru’s Opp’n to Pl. LEGO’s Mot. for Summ. J.
(ECF No. 267) (“Unredacted Zuru Opp. Mem.”) at 54. Zuru relies
in part on a LEGO/Newsweek promotional article in which Matt
Ashton, LEGO vice president of design states that “[w]e are
really lucky that the original Minifigure was designed in a way
that gave us an extremely simplistic figure, which acts as the
perfect canvas for us to now apply any sort of character.”
Def.’s Ex. 16 (ECF No. 239-17) at 10. But in the same paragraph
Ashton is quoted as saying that “I would imagine that the
original designers had little idea that the figure they created
would ultimately turn into such a brand icon.” Id.
The balance of Zuru’s support for this particular
contention comes from deposition testimony of LEGO employees.
During that testimony these witnesses were unable to say with
certainty whether images of figurines were LEGO Minifigures. See
Unredacted Zuru Opp. Mem. at 54-56 (containing examples of
statements by certain employees reflecting that they were unable
to say with certainty whether an image of a figurine that was
being shown during deposition was a LEGO Minifigure). Zuru does
not tie the excerpted testimony to any of the secondary meaning
factors. In any event, none of these snippets of deposition
testimony constitutes an admission by LEGO as to a fact material
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to the question of whether the Asserted Trademark has acquired
secondary meaning.
Finally, Zuru argues that Hecht’s statements in the Hecht
Declaration “relating to Lego’s sales, licensing, and marketing
of the minifigure apparently pertain to the fully adorned,
decorated, and accessorized minifigures that
Lego brings to
market—not the ‘generic,’ ‘blank canvas’ body form that Lego’s
asserted trade dress actually covers.” Zuru Opp. Mem. at 57-58.
The court agrees with LEGO that “this argument is belied by the
fact that the USPTO registered the Asserted Trademark (that is,
it agreed that it had acquired distinctiveness), knowing that
the Asserted Trademark was the unadorned, three-dimensional
configuration of the Minifigure figurine.” LEGO Mot. Reply at
37. As noted above, the mark is depicted in a single drawing in
the ‘968 Registration. That drawing is the very drawing that
appears in the trademark prosecution file. See Pls.’ Ex. 9 at 8.
Whether a mark has acquired distinctiveness is “‘an
inherently factual inquiry.’” Louboutin, 696 F.3d at 226
(quoting Yarmuth–Dion, Inc. v. D’ion Furs, Inc., 835 F.2d 990,
993 (2d Cir. 1987)). However, there are circumstances in which
summary judgment is appropriate because there are no genuine
issues of material fact. See id. (“Where, as here, the record
contains sufficient undisputed facts to resolve the question of
distinctiveness—not to speak of facts found by the District
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Court that are based upon evidence of record and not clearly
erroneous—we may do so as a matter of law.”). This is such a
case. Zuru’s arguments with respect to whether the Hecht
Declaration should be considered and judicial estoppel, and the
argument that the statements by Hecht with respect to LEGO’s
sales, licensing and marketing of the LEGO Minifigures do not
relate to the unadorned three-dimensional configuration of the
Minifigure figurine, all lack merit. To the extent the excerpts
of deposition testimony that Zuru relies on would be admissible,
they are insufficient to create a genuine issue as to whether
Zuru can rebut the presumption of distinctiveness in light of
the evidence in the record, cited by LEGO, that is consistent
with that presumption.
Therefore, LEGO has shown it is entitled to summary
judgment with respect to Zuru’s defense/counterclaim that the
Asserted Trademark has not acquired distinctiveness.
b. Functional Trade Dress
Zuru claims that the Asserted Trademark is invalid because
the product-design trade dress is functional.
“As the Supreme Court observed in Qualitex, aspects of a
product that are ‘functional’ generally ‘cannot serve as a
trademark.’” Louboutin, 696 F.3d at 218 (quoting Qualitex, 514
U.S. at 165). “This is so because functional features can be
protected only through the patent system, which grants a limited
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monopoly over such features until they are released into general
use . . . .” Id. at 218-19. In Sulzer Mixpac AG v. A&N Trading
Co., the court explained the “three-step functionality test.”
988 F.3d 174, 183 (2d Cir. 2021). “In [this] Circuit, ‘a product
feature is considered to be “functional” in a utilitarian sense
if it is (1) “essential to the use or purpose of the article,”
or if it (2) “affects the cost or quality of the article.”’” Id.
at 182 (quoting Louboutin, 696 F.3d at 219 (footnote omitted)
(quoting Inwood Lab’ys, Inc., 456 U.S. at 850 n.10)).
Product features are essential when they are “dictated by
the functions to be performed by the article.” [Louboutin,
696 F.3d at 219] (internal quotation marks omitted);
accord Warner Bros., Inc. v. Gay Toys, Inc., 724 F.2d 327,
331 (2d Cir. 1983) (“[A] feature that merely accommodates a
useful function is not enough.”).
Id. “A feature affects cost or quality when it ‘permits the
article to be manufactured at a lower cost or constitutes an
improvement in the operation of the goods.’ Louboutin, 696 F.3d
at 219 (internal quotation marks omitted).” Id. As to the third
step:
A feature can still be functional even if it is not
essential to a product’s use or purpose and does not affect
a product’s cost or operation. This is referred to as
aesthetic functionality, where “the aesthetic design of a
product is itself the mark for which protection is sought.”
Id. (quoting Louboutin, 696 F.3d at 219-20 (emphasis in
original)). “In such instances, this Court considers whether
‘giving the markholder the right to use it exclusively would put
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competitors at a significant non-reputation-related
disadvantage.’” Id. (quoting Louboutin, 696 F.3d at 220).
In Sulzer, the court stated,
[a]t the start, we address the two prongs of the Inwood
test, asking whether the design feature is either essential
to the use or purpose or affects the cost or quality of the
product at issue . . . . Next, if necessary, we turn to a
third prong, which is the competition inquiry . . . .
Id. at 183 (alterations in original) (quoting Louboutin, 696
F.3d at 220).
“[I]f a design feature would, from a traditional
utilitarian perspective, be considered essential to the use or
purpose of the article, or to affect its cost or quality, then
the design feature is functional under Inwood and our inquiry
ends.” Id. (quoting Louboutin, 696 F.3d at 220). “If and only if
a design feature is not functional in the traditional sense, do
we move to the fact-intensive test where the feature must be
‘shown not to have a significant effect on competition in order
to receive trademark protection.’” Id. (quoting Louboutin, 696
F.3d at 220).
In Maharishi Hardy Blechman Ltd. v. Abercrombie & Fitch
Co., the plaintiff sought “trade dress protection for the
overall look of Snopants.” There the court stated:
Where the asserted trade dress extends to the “overall
look” of the combination of features comprising a product
or product line, the Court must evaluate the
distinctiveness and functionality of those features taken
together, not in isolation. See LeSportsac, Inc. v. K Mart
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Corp., 754 F.2d 71, 76 (2d Cir. 1985) (recognizing trade
dress for “particular combination and arrangement of design
elements” of a sports bag) . . . .
292 F. Supp. 2d 535, 543 (S.D.N.Y. 2003) (emphasis in original).
In Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc.,
the court cited LeSportsac for the proposition that “despite
[the] functionality of individual elements, [the] bag was
nonfunctional ‘when viewed in its entirety.’” 58 F.3d 27, 32 (2d
Cir. 1995). In LeSportsac the court observed that “by breaking
LeSportsac’s trade dress into its individual elements and then
attacking certain of those elements as functional, K mart
misconceives the scope of the appropriate inquiry.” 754 F.2d at
76.
A party can receive trade dress protection for the overall
combination of functional features, but
in order to receive trade dress protection for the overall
combination of functional features, those features must be
configured in an arbitrary, fanciful, or distinctive way.
See TrafFix Devices, [Inc. v. Mktg. Displays, Inc., 532
U.S. 23, 34 (2001)] where the Supreme Court rejected the
trade dress protection claim because the sign
manufacturer “has pointed to nothing arbitrary about the
components of its device or the way they are assembled.”
Antioch Co. v. W. Trimming Corp., 347 F.3d 150, 158 (6th Cir.
2003). “In other words, where individual functional components
are combined in a nonarbitrary manner to perform an overall
function, the producer cannot claim that the overall trade dress
is nonfunctional.” Id. “Nonetheless, the fact that a trade dress
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is composed exclusively of commonly used or functional elements
might suggest that that dress should be regarded as
unprotectable or ‘generic,’ to avoid tying up a product or
marketing idea.” Maharishi, 292 F. Supp. 2d at 543 (quoting
Jeffrey Milstein, 58 F.3d at 32).
At issue in Antioch was a scrapbook album that had “several
distinctive features,” described as follows:
The album utilizes a dual strap-hinge design that permits
the pages to lie flat when the album is open, facilitates
the turning of the pages, and enables the easy insertion of
additional pages. Another design element of the CREATIVE
MEMORIES album is its spine cover that conceals the dual
strap-hinge, which causes it to be known as a “closed back”
or “bookshelf” album. A third element of Antioch’s album is
the laminated, padded album covers. Finally, the CREATIVE
MEMORIES album pages have ribbed edges that provide
reinforcement, keep them separated, and hold the staples
together. Antioch seeks trade dress protection for the
CREATIVE MEMORIES album that encompasses these above-
described features.
347 F.3d at 152. The court found that “[t]he dual strap-hinge
design, spine cover, padded album cover, and reinforced pages
are all components that are essential to the use of Antioch’s
album . . . .” Id. at 157. The court concluded that the overall
design combination was not deserving of trade dress protection
because “in order to receive trade dress protection for the
overall combination of functional features, those features must
be configured in an arbitrary, fanciful, or distinctive way.”
Id. at 158.
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For the reasons that follow, there is no genuine issue as
to the fact that the Asserted Trademark is not functional either
(i) as an overall combination of functional features, or (ii)
under any of the three prongs of the Inwood test. Thus, LEGO is
entitled to summary judgment on Zuru’s defense/counterclaim that
the Asserted Trademark is functional.
i. Composition of the Asserted Trademark
Zuru makes an argument that presents the following
question: Is the Asserted Trademark an overall combination of
functional features, or are there merely some features of the
Asserted Trademark that are functional in a utilitarian sense?
Zuru contends that it has
demonstrated that every feature of the minifigure has at
least one “function” in that they all facilitate movement
and/or are capable of attachment to other elements, there
is nothing “arbitrary, fanciful, or distinctive” in the way
the component functional features of the minifigure are
assembled to form the overall product configuration, and
Lego designed the entire configuration of the minifigure to
“work well” and “fit perfectly” with the Lego play system.
Zuru Opp. Mem. at 41-42.
Zuru argues that the fact that every feature of the
Minifigure figurine has at least one function is established by
evidence from its expert Lee Loetz; statements by LEGO’s
witnesses in this case; statements by LEGO in its advertising
and promotional materials; LEGO’s “admissions that every feature
of the minifigure has a ‘function,’ including 15 features
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relating to attachment, movement, and ‘poseability,’ (Zuru SOF
6-12.),” Zuru Opp. Mem. at 43; and the fact that “several
utility patents claim the utilitarian advantages of virtually
every feature of the minifigure— including the stud on the head,
the connection between the torso and legs, the bottom of the
torso, the legs and the feet, and the hands.” Zuru Mot. Mem. at
47. Zuru argues that “[t]hese utility patents create a heavy
presumption that Lego’s asserted trade dress is functional.” Id.
(emphasis omitted).
In his report, Loetz opines that “the Lego minifigure is
highly ‘functional’ . . . as a standalone figurine (e.g., in the
way that its elements move, rotate, etc.).” Def.’s Ex. 7, Ex. A,
Expert Report of Lee Loetz ¶ 55. Loetz cites to LEGO’s
Minifigure Guidelines, which “identify twelve separate features
that represent” the functionality of the Minifigure figurine.
Id. ¶¶ 56-57. Those features relate to assembly, poseability,
and connectability. See id. ¶ 57. In paragraph 61 of his report,
Loetz states that he has “identified all the . . . ways that the
minifigure is capable of attachment or movement.” Id. ¶ 61. The
relevant language from paragraph 61 of Loetz’s report is quoted
in Part III.A.2.b.
Zuru contends there is no genuine issue as to the fact
that:
Lego’s corporate designee on the topic . . . and one of
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Lego’s longest-tenured minifigure designers, Chris
Johansen, identified still more features of the minifigure
that are “functional,” including that (i) the head of the
minifigure can rotate; (ii) the head of the minifigure can
be removed and replaced with different heads; (iii) the
head of the minifigure can be attached to the bottom of
Lego system bricks, or even to other heads; and (iv) the
torso of the minifigure can be removed and attached to
studded bricks through the stud (or neck piece) on the top
of the torso.
Unredacted Def.’s Local Rule 56(a)1 Statement in Supp. of Their
Mot. for Summ. J. (ECF No. 236-1) ¶ 10. In his report, Loetz
states:
Mr. Johansen testified at his deposition to many ways that
the minifigure is functional, including the following:
• The head of the minifigure can rotate.
• The head of the minifigure can be removed and replaced
with different heads.
• The head of the minifigure can be attached to the
bottom of Lego system bricks, or even to other heads.
• Elements like hair or hats can attach to the top of
the head of a minifigure through the stud on the top
of the head.
• The torso of the minifigure can be removed and
attached to studded bricks through the stud (or neck
piece) on the top of the torso.
• The bottom of the torso of the minifigure can attach
to the top of studded bricks.
• The holes on the back of the legs of the minifigure
can attach to studded bricks in a seated position.
• The arms of the minifigure can be rotated around.
• The hands of the minifigure can attach to accessories.
Def.’s Ex. 7, Ex. A, Expert Report of Lee Loetz ¶ 59 (footnote
omitted). Loetz also points to Johansen’s inability to identify
“any elements of the minifigure that do not involve attachment
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or movement.” Id. ¶ 60.
Zuru submits evidence that “Lego has promoted the
functionality of the minifigure, and its play system more
generally, including in a promotional article, on its website,
and in its product catalogues.” Redacted Def.’s Local Rule
56(a)1 Statement in Supp. of Their Mot. for Summ. J. ¶ 23. It
points to the fact that LEGO vice president Matt Ashton stated
in a promotional article that “[t]he minifigure was ‘originally
designed with its functionality probably being pretty high on
the design criteria to deliver great roleplay experiences.’” Id.
¶ 5. It also cites to product catalogs, including a “1982 Lego
product catalogue” which “stat[ed] that minifigures have ‘arms
and legs that really move, plus sturdy hands for carrying,
lifting and climbing.’” Id. ¶ 23.
The evidence from Loetz, statements by LEGO personnel, and
statements by LEGO in promotional materials fail to create a
genuine issue on the question of functionality.
The manner in which Zuru uses statements by LEGO designer
Chris Johansen, the Minifigure Guidelines, and statements in
LEGO’s promotional materials, substitutes the lay meaning of the
term “functional” for the legal meaning of that term. In In re
Morton-Norwich Prod., Inc., the court took note of the fact that
“the label ‘functional’ has dual significance.” 671 F.2d 1332,
1337 (C.C.P.A. 1982). “It has been used, on the one hand, in lay
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fashion to indicate ‘the normal or characteristic action of
anything,’ and, on the other hand, it has been used to denote a
legal conclusion.” Id.
Accordingly, it has been noted that one of the “distinct
questions” involved in “functionality” reasoning is, “In
what way is (the) subject matter functional or utilitarian,
factually or legally?” In re Honeywell, Inc., 497 F.2d
1344, 1350 . . . (C.C.P.A. 1974) (Rich, J., concurring).
This definitional division, noted in “truism” (4) in
Deister, leads to the resolution that if the designation
“functional” is to be utilized to denote the legal
consequence, we must speak in terms of de facto
functionality and de jure functionality, the former being
the use of “functional” in the lay sense, indicating that
although the design of a product, a container, or a feature
of either is directed to performance of a function, it may
be legally recognized as an indication of source. De jure
functionality, of course, would be used to indicate the
opposite-such a design may not be protected as a trademark.
Id. The court gave an example: “No doubt, by definition, a dish
always functions as a dish and has its utility, but it is the
appearance of the dish which is important in a case such as this
. . . .” Id. at 1338.
Based on the context in which each of these statements by
or on behalf of LEGO was made, there is no genuine issue as to
the fact that the statements addressed de facto functionality.
During Johansen’s deposition, when he was being asked about
functionality in the trademark context, Johansen inquired as to
what the questioner meant by “functionality.” See Def.’s Ex. 42,
Chris Johansen Dep. Tr., July 15, 2021 (ECF No. 236-15) at
77:14-15. The questions directed to him were not put in the
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context of the three prongs of the test for functionality.
LEGO does not dispute that “certain elements of the
Minifigure figurine facilitate attachment or movement, and
therefore have a ‘function.’” LEGO Opp. Mem. at 45. It
acknowledges that 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 back of the
legs are functional in that they “are necessary for attachment
and cannot be easily changed through alternative designs, yet
remain capable of interacting with the LEGO Grid System.” Pls.’
Ex. 33, Ex. B, Rebuttal Report of Elizabeth B. Knight ¶ 53. LEGO
agrees that these elements of the Minifigure figurine are
“intrinsically utilitarian.” LEGO Opp. Mem. at 35. See Sulzer,
988 F.3d at 182 (“Product features are essential when they are
dictated by the functions to be performed by the article.”
(internal quotation marks and citation omitted)). But LEGO’s
product-design trade dress is for the three-dimensional
configuration of a toy figure that features the cylindrical
head, the cylindrical neck, the trapezoidal torso, the
rectangular plate, the legs which bulge forward at the top, and
the flat square feet. It does not include the stud on the head,
the c-cup clutching shapes in the hands, or the fitted tube
holes in the legs and on the bottom of the feet, and LEGO does
not seek protection for those features.
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Zuru has proffered no evidence that the fact that the stud
on the cylindrical head is intrinsically utilitarian means that
the cylindrical head itself is intrinsically utilitarian, nor
any evidence that the fact that the legs and the feet have
fitted tube holes, which are utilitarian, means that the legs
and the feet themselves are functional. The same is true with
respect to the inside radius of the c-shaped hands.
Loetz opines that the Minifigure figurine is highly
functional because of the way elements move, rotate, and relate
to assembly. For example, the head swivels and is removable, the
arms and legs have hinge joints, and the legs are removable.
However, while the fact that elements of the Minifigure figurine
are capable of movement establishes that the elements are
“functional” in a de facto sense, that mere fact does not
suggest that those elements are “functional” in a de jure sense.
LEGO expert Knight provides examples of art that is capable of
movement but is not functional in the utilitarian sense and is
the product of original and artistic design. See
Pls.’ Ex. 33,
Ex. B, Rebuttal Report of Elizabeth B. Knight ¶ 56 (Knight
providing examples from the mobiles of Alexander Calder, with
photographs). Knight also shows how the functions related to
assembly of the Minifigure figurine are internal or a result of
joints and therefore do not have an impact on the overall look
of the Minifigure figurine. See id. ¶ 57 (image prepared by
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Knight that reflects the utilitarian functions of the Minifigure
figurine, juxtaposed with the diagram prepared by Zuru expert
Loetz). Thus, Zuru has not created a genuine issue with respect
to whether the fact that certain elements of the Minifigure
figurine are capable of movement and relate to assembly makes
them de jure functional.
Zuru argues that “several utility patents claim the
utilitarian advantages of virtually every feature of the
minifigure . . . .” Zuru Mot. Mem. at 47. Zuru asserts that:
Lego has protected the minifigure through utility patents
covering the “stud” on top of the head; the “c-cup” hands;
and a “leg assembly” with four holes on the back of the
legs to attach to bricks in a seated position, two holes on
the underside of the feet to attach in a standing position,
a disc-shaped holder with laterally extending pivots for
pivotally mounting the two legs (i.e., the leg members),
such that the two legs have slidable contact with the
connecting plate, two “studs” on the top to attach to the
underside of the torso element (or the underside side of
other bricks), and a body member (torso) with a cavity
adapted to receive a pair of coupling studs (like the leg
studs or brick studs). (Ex. 13 [Depo. Ex. 75 (“Christiansen
Patent”) at Patent Abstract, Figs. 1-7, col. 1 lines 4-9,
col. 1 lines 50-68, col. 2 lines 5-21, col. 2 line 44 to
col. 3 line 11, Patent Claim 1]; Ex. 11 [Depo. Ex. 73
(“Pedersen Patent”) at Patent Abstract, Figs. 1-3, col. 1
lines 14-20, col. 1 lines 38-45, col. 1 lines 48-50, col. 2
lines 3-7, col. 2 lines 58-62, col. 3 lines 31-51, Patent
Claim 1]; Ex. 12 [Depo Ex. 74 (“Brick Studs Patent”) at
Figs. 1-12, col. 1 lines 10-15, col. 2 lines 8-44, col. 2
line 72 to col. 3 line 5, Patent Claims 1-7 (claiming the
“cylindrical projections” as part of the utility patent’s
functional protection, which are colloquially called
“studs”)] . . . .).
Redacted Def.’s Local Rule 56(a)1 Statement in Supp. of Their
Mot. for Summ. J. ¶ 12 (alterations in original).
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Zuru cites to TrafFix Devices, 532 U.S. at 29, for the
proposition that “[a] utility patent is strong evidence that the
features therein claimed are functional.” However the three-
dimensional configuration of the Minifigure figurine, which is
the subject of the Asserted Trademark, is not part of any of the
claims in the ’282 Patent, the ’482 Patent, or the ’839 Patent.
Moreover, LEGO was granted a U.S. Design Patent for the
Minifigure figurine, Des. 253,711. The claim is: “The ornamental
design for toy figure, as shown.” Pls.’ Ex. 49 (ECF No. 265-15)
at 2. There are nine drawings depicting the ornamental design of
the toy figure. The overall look of the toy figurine in these
drawings is the same as the overall look of the three-
dimensional configuration of the toy figurine in the ‘968
Registration. As the court observed in Morton-Norwich, “[i]t is
interesting to note that appellant also owns design patent
238,655 for the design in issue, which, at least presumptively,
indicates that the design is not de jure functional. See In re
Schilling, 421 F.2d 747, 750 . . . (C.C.P.A. 1970); In re Garbo,
. . . 287 F.2d 192, 193-94 . . . ([C.C.P.A.] 1961).” 671 F.2d at
1342 n.3. Thus, there is no basis for Zuru’s contention with
respect to the expired utility patents.
Zuru argues that the components of the Minifigure figurine
“are body parts and they are assembled in the locations where
body parts appear in nature—the head on the top of the torso,
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the arms protruding from the top sides of the torsos, the legs
and feet below the torso, etc.” Zuru Mot. Mem. at 47. Zuru then
asserts that the Minifigure’s features are assembled in “a non-
arbitrary way to track the human form.” Id. But LEGO does not
contend that its product-design trade dress is for the human
form. This case is analogous to LeSportsac, where the court
explained that “LeSportsac does not claim a trademark in all
lightweight nylon bags using hollow zipper pulls or carpet tape
trim. It claims as its mark the particular combination and
arrangement of design elements that identify its bags and
distinguish them from other bags.” 754 F.2d at 76. See also
Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604
F.2d 200, 203 (2d Cir. 1979) (“Plaintiff does not claim a
trademark in all clothing designed and fitted to allow free
movement while performing cheerleading routines, but claims a
trademark in the particular combination of colors and
collocation of decorations that distinguish plaintiff’s uniform
from those of other squads.” (footnote omitted)). Here LEGO
claims only a trademark in the three-dimensional configuration
of a toy sculpture having the features detailed in the Asserted
Trademark.
Consequently, the court does not agree with Zuru that the
“the non-arbitrary manner in which the component functional
parts of the minifigure are assembled renders the entire product
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configuration functional and unprotectable as trade dress as a
matter of law.” Zuru Mot. Mem. at 47.
ii. First Prong: Essential to Use or Purpose
“A feature is essential if [it] is dictated by the
functions to be performed by the article.” Louboutin, 696 F.3d
at 219 (alteration in original) (internal quotation marks
omitted). As discussed above, LEGO acknowledges that 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 back of the legs are functional because
they “are necessary for attachment.” Pls.’ Ex. 33, Ex. B,
Rebuttal Report of Elizabeth B. Knight ¶ 53. What LEGO claims is
protected is the overall look of a three-dimensional
configuration of a toy figure.
Zuru contends that “Lego’s witnesses have effectively
admitted to ‘de jure’ functionality by acknowledging that Lego
designed the minifigure to work with the Lego play system, and
that it ‘works really well in the system.’” Unredacted Mem. of
Law in Supp. of Def. Zuru Inc.’s Mot. for Summ. J. (“Unredacted
Zuru Mot. Mem.”) (ECF No. 236) at 47 (emphasis in original).
Zuru expert Loetz opines that “the Lego minifigure is highly
‘functional’ . . . with respect to the ways it ‘fits’ within the
entire Lego system of play, which includes Lego construction
bricks and models built out of them.” Def.’s Ex. 7, Ex. A,
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Expert Report of Lee Loetz ¶ 55. Loetz further opines that “Lego
. . . designed the size and proportions of the fully assembled
minifigure in accordance with precise measurements to ensure its
compatibility with the Lego system of play.” Id. ¶ 62.
“Deviation from these exacting specifications would limit the
functionality, and thus the play performance, of the figurines.”
Id. ¶ 63.
To support its position, Zuru cites to testimony by LEGO
expert Knight, and LEGO designer Johansen; it also cites to the
Minifigure Guidelines. However, when Knight was asked during her
deposition whether she considered “the ability of the parties’
figurines to fit with and scale with the LEGO play system to be
a functional attribute of them,” Def.’s Ex. 43, Elizabeth Knight
Dep. Tr. Vol 1, Feb. 3, 2022 at 122:4-7, her response included a
statement that the LEGO Grid System “is totally adaptable to any
scale, small or large,” id. at 122:13-14. This was consistent
with her report, in which she stated:
The Minifigure figurine fits within the LEGO Grid System,
but the system does not require that all figures be the
same size and scale. The LEGO Grid System allows for
infinite variations of sizes and scale, of figurines and
models. This open-ended system allows for endless
creativity and flexibility for children to use it in any
way they want. Structures, vehicles, and any element of a
world can be scaled up to fit any size figure, this is one
of the greatest features of the system. If a child wants to
create a world for her Barbie doll, she can do that simply
by scaling up or adding more bricks to accommodate the
scale and proportions.
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Pls.’ Ex. 33, Ex. B, Rebuttal Report of Elizabeth B. Knight ¶
58. Zuru produces no admissible evidence to the contrary.
Johansen’s testimony is also contrary to Zuru’s contention.
Johansen was asked if he would “agree that this LEGO grid system
enabled precision in the design of mini figure parts and
accessories to ensure that they will fit within the LEGO play
system.” Def.’s Ex. 42, Chris Johansen Dep. Tr., July 15, 2021
at 101:15-19. Johansen explained, consistent with Knight’s
testimony and report:
It’s more to ensure that you can actually place whatever
you have built within the LEGO grid, so to speak.
If a part designed for mini figure like a hat, we saw the
Roman helmet on one of the pages. If the plumes were too
high and it didn’t fit with the let’s say the height of
four LEGO system bricks and two plates, then you just add
another plate and then it suddenly fits, so it’s not like
it has to stay precisely within the grid because you can
always build your way out of it.
Id. at 102:4-16; see also Pls.’ Ex. 39, Elizabeth Knight Dep.
Tr. Vol. 1, Feb. 3, 2022 (ECF No. 263-5) at 200:18-19 (“[A]ny
scale can work within the brick system.”).
Zuru also cites to pages 155 to 157 of the Minifigure
Guidelines, which discuss the basics of the LEGO Grid System.
Nothing in that discussion supports Zuru’s assertion that the
Minifigure figurine is de jure functional.
Based on the foregoing, Zuru has failed to demonstrate that
there is a genuine issue of material fact as to whether the
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Asserted Trademark is functional in a utilitarian sense because
the design feature for which LEGO seeks protection is essential
to the use or purpose of the Minifigure figurine.
iii. Second Prong: Affects Cost or Quality
“A feature affects cost or quality when it ‘permits the
article to be manufactured at a lower cost or constitutes an
improvement in the operation of the goods.’” Sulzer Mixpac AG,
988 F.3d at 182 (quoting Louboutin, 696 F.3d at 219). Zuru
contends that product features of the Minifigure figurine trade
dress LEGO maintains are protected gives LEGO an advantage by
permitting the Minifigure figurine to be manufactured at a lower
cost. What LEGO maintains is protected is the overall look of a
three-dimensional configuration of a toy figure.
With respect to the impact on manufacturing costs, Zuru
argues that:
the undisputed evidence shows that the design of the
minifigure is a comparatively simple or cheap method of
manufacturing the product . . . . Lego admits, the
minifigure was designed to be “broadly generic” and a
“perfect blank canvas” for creating any character
imaginable.
(SOF 13.) This “chameleon” characteristic saves
costs because it allows Lego to use the same mold to create
any figurine-character it wants. On the other hand, a
competitor that is required to use a less “generic” design—
such as a more “muscular” body shape—would be required to
use multiple molds to produce figurines that are suitable
for different characters, and would therefore be at a
significant competitive disadvantage in terms of costs.
Zuru Mot. Mem. at 52 (further internal quotation marks and
citations omitted). But Zuru cites to no evidence in support of
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this argument.
On the other hand, LEGO expert Knight provides a detailed
analysis of why the shape of the Minifigure figurine does not
offer manufacturing advantages, and she takes into account the
shapes and forms that together create its overall look. Knight
explains the manufacturing process and why the plastic pieces of
the Minifigure figurine are more difficult and costly to make
using LEGO’s manufacturing process. She also explains why Zuru’s
MAX Figures are easier to manufacture. See Pls.’ Ex. 33, Ex. B,
Rebuttal Report of Elizabeth B. Knight ¶¶ 89-95. Compare Schutte
Bagclosures Inc. v. Kwik Lok Corp., 193 F. Supp. 3d 245, 262
(S.D.N.Y. 2016), aff’d, 699 Fed. App’x 93 (2d Cir. 2017)
(finding “that the simple shape of the closures at issue
facilitates the efficient use of the articles in automatic
machines and reduces possible costs to the manufacturers of the
closures and the purchasers of the closures”).
Zuru also argues that “potential design changes that have
been suggested . . . result in increased costs or decreased
marketability.” Zuru Mot. Mem. at 52. Zuru advances four
contentions in support of this argument.
First, Zuru contends that “[a] Lego-compatible figurine
that is larger than the minifigure--like Lego’s now discontinued
Belville figurine--is more costly than the minifigure to
manufacture because of the additional plastic needed for the
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figurine and for larger-sized accessories on scale with it.”
Def.’s Redacted Local Rule 56(a)1 Statement of Undisputed
Material Facts ¶ 27. Second, and relatedly, Zuru contends that
“[m]aking the design of a Lego-compatible figurine more complex
and detailed than the minifigure, or decreasing the size and
smoothness of the ‘printable’ surfaces of the figurine, make it
more costly and difficult to add decorations and ‘paint.’” Id. ¶
31. Zuru relies on the report of its expert Loetz, the
deposition testimony of LEGO designer Chris Johansen, and two
LEGO research reports as support for these contentions.
Zuru’s first contention is premised on an assumption that
if one design requires more plastic than another design, then
the manufacturing costs for that design will always be higher.
However, Zuru does not proffer evidence that could support a
conclusion that that is an accurate assumption, either in
general or in the context of this case. As LEGO points out, Zuru
has not shown that “additional plastic is . . . the only, or
even the chief, cost consideration in the design process.” LEGO
Opp. Mem. at 53. Zuru does not rebut the evidence submitted by
LEGO, in the form of Knight’s rebuttal report, that
the cost of the toy is made up of many elements, i.e.
plastic resin, tooling, labor, number of parts (related to
tooling)[,] decoration, packaging (materials, dimensions,
weight), shipping, overhead, volume (the more you make, the
less it costs), and profitability. Each of these elements
is a tool for the team to work as they get a product into
cost for a desired price point.
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Pls.’ Ex. 33, Ex. B, Rebuttal Report of Elizabeth B. Knight ¶
74. Instead, Loetz simply states that “[a]s a general matter,
the more plastic that is needed, the higher the cost of
manufacturing,” with no citation to any support for his
statement and without any explanation as to whether there is a
basis for finding that it is applicable in this case. Def.’s Ex.
7, Ex. A, Expert Report of Lee Loetz ¶ 109.
Second, Loetz states, without elaboration, that “Zuru
needed to design its figurine with flat surfaces that can be
easily decorated, as it is more complicated and costly to
manufacture and decorate complex or curved surfaces.” Id. ¶ 108.
But Zuru presents no evidence to rebut the evidence submitted by
LEGO (in the form of paragraphs 89-94 of Knight’s Rebuttal
Report) that the shape of the Minifigure figurine does not offer
an advantage in terms of manufacturing costs.
Zuru also relies on the deposition testimony of LEGO
designer Chris Johansen. But Johansen disagreed that size was
the determinative factor in the cost of the Belville figurine.
See Def.’s Ex. 42, Chris Johansen Dep. Tr., July 15, 2021 at
233:24-234:5 (“I believe the complexity driving the cost. If I
remember correctly, that [Belville] figure was made of a lot
[of] elements that also had to be assembled. I don’t think the
scale necessarily had any effect on the cost.”). In addition,
when Johansen was asked if he had information about whether a
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larger size figure cost more to manufacture than a standard
Minifigure, he responded, “It shouldn’t.” Pls.’ Ex. 36, Chris
Johansen Dep. Tr., July 15, 2021 (ECF No. 263-2) at 209:13.
Zuru also cites to two research reports in support of its
position that a figure larger than the Minifigure figurine is
more costly to manufacture because of the need for additional
plastic. See Def.’s Ex. 20 (ECF No. 236-5); Def.’s Ex. 21 (ECF
No. 236-6). Those research reports comment on higher costs for
LEGO’s Belville line “compared to other themes,” Defs.’ Ex. 20
at 4, but they do not compare the cost of manufacturing the
Belville figurine and the LEGO Minifigures, nor do they refer to
the cost of additional plastic. Instead, Def.’s Ex. 20 merely
states that “[h]igher costs are very much a matter of the
complexity and the scale of the Belville adult figure.” Id. at
4; see also Def.’s Ex. 21 at 4 (stating that “Belville is a more
complex and cost intensive product line to manufacture than
other LEGO themes primarily because of the scale of the adult
Belville figurine and the need for larger elements” but making
no comparison to the LEGO Minifigure). On the other hand, as
referenced above, LEGO expert Knight explains how the cost of a
toy is made up of many elements. See Pls.’ Ex. 33, Ex. B,
Rebuttal Report of Elizabeth B. Knight ¶ 74.
Third, relying on the testimony of LEGO designer Chris
Johansen and a research report by LEGO, Zuru asserts that:
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Similarly, enlarging the head of the figurine relative to
the size of the body—as Lego has implicitly suggested Zuru
must do—not only decreases compatibility with the Lego play
system (such as the ability for such oversized heads to
attach to Lego head accessories scaled for the minifigure),
but also results in a less aesthetically pleasing, and thus
less marketable, figurine, as a Lego consumer study
confirmed. (SOF 28.)
Unredacted Zuru Mot. Mem. at 52. See also Def.’s Redacted Local
Rule 56(a)1 Statement of Undisputed Material Facts ¶ 28.
However, the evidence cited to by Zuru does not support the
contention that an enlargement of the head decreases
compatibility with the LEGO Grid System. Also, with respect to a
less aesthetically pleasing and thus less marketable figurine,
the evidence cited to by Zuru simply refers to the fact that
girls ages six to eight prefer the head of a figurine to look
realistic in relation to the rest of the body of the figurine.
Fourth, relying on deposition testimony by LEGO expert
Knight, Zuru argues that “making a figurine ‘skinnier’ than the
minifigure, like the Lego Friends figurine, creates
compatibility problems and cost increases, including by
requiring consumers to purchase separate plastic ‘adapters’ to
finagle attachment between the figurine and studded bricks.”
Unredacted Zuru Mot. Mem. at 52. Zuru offers no evidence to
support this contention. In addition, as LEGO states, “Knight
testified that the Friends figurine requires an adapter to
attach to a LEGO brick in the seated position . . . however, she
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did not testify regarding the cost of the adapter or offer
testimony regarding whether other ‘skinnier’ figurines that
could be designed would require an adapter.” Unredacted Pls.’
Local Rule 56(a)2 Statement in Opp’n to Def.’s Mot. for Summ. J.
Resp. to ¶ 30.
Based on the foregoing, Zuru has failed to demonstrate that
there is a genuine issue of material fact as to whether the
Asserted Trademark is functional in a utilitarian sense because
the design feature for which LEGO seeks protection allows the
Minifigure figurine to be manufactured at a lower cost.
iv. Third Prong: Putting Competitors at a
Significant, Non-Reputational Disadvantage
“[I]f a design’s aesthetic value lies in its ability to
confe[r] a significant benefit that cannot practically be
duplicated by the use of alternative designs, then the design is
functional.” Qualitex, 514 U.S. at 170 (second alteration in
original) (internal quotation marks and citation omitted).
“To be probative of non-functionality, ‘alternative designs
must be practical, feasible and effective.’” Schutte Bagclosures
Inc., 193 F. Supp. 3d at 269–70 (quoting J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 7:75 (4th ed.)).
“The existence of actual or potential designs that work equally
well strongly suggests that the particular design [used by
plaintiff] is not needed by competitors to effectively
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compete[.]” Id. (second alteration in original) (quoting Valu
Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276 (Fed. Cir.
2002)).
Zuru argues that “the record is devoid of any evidence of
an alternative design for the minifigure that works ‘equally
well’ as the minifigure--which is not surprising given that the
minifigure was designed to fit ‘perfectly’ within the Lego play
system.” Zuru Mot. Mem. at 49.
In support of its contention that there is no evidence in
the record of an alternative design that would work equally well
in the LEGO Grid System as the Minifigure figurine, Zuru asserts
that “[d]iscovery has revealed that none of the supposed
‘alternative’ figurine designs that Lego presented during the
preliminary injunction proceedings . . . comes close to matching
all the functionality of the minifigure, and some do not have
any of the minifigure’s functionality.” Id. at 49 (emphasis in
original). Zuru gives as examples of differences in
functionality the Lego Friends figurine, Fisher-Price Imaginext,
Fisher-Price Little People, Lego Family figurine, Childcraft,
Lego Belville, and Lego Maui. Id. at 49-50. Zuru asserts that
“[n]one of the alternatively designed figurines that Lego has
presented to the Court in this case have the same functionality
as the minifigure, including with respect to movement,
attachment, and compatibility or ‘fit’ with the Lego play
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system.” Redacted Def.’s Local Rule 56(a)1 Statement in Supp. of
Their Mot. for Summ. J. ¶ 24.
By limiting alternative designs to those presented during
the preliminary injunction proceedings, Zuru does not take into
account two alternative designs identified by LEGO. In support
of its motion for summary judgment, LEGO submitted its “Friends
Design Document,” which reflects that in the course of
developing the concept for the LEGO Friends® Figurine, LEGO
created “several designs with different overall looks” that are
capable of movement and attachment to the LEGO Grid System.
Redacted Pls.’ Local Rule 56(a)1 Statement in Supp. of Their
Mot. for Summ. J. ¶ 58; see Pls.’ Ex. 32 (ECF No. 247-12). In
addition, when Knight was asked during her deposition by counsel
for Zuru whether she had determined whether a figurine that has
features different from the Minifigure figurine still had the
ability to move and attach, Knight responded, referring to the
Friends figurine, that it is very different in form and still
attaches to the LEGO Grid System. See Pls.’ Ex. 39, Elizabeth
Knight Dep. Tr. Vol. 1, Feb. 3, 2022 at 235:22-25. While that
response by Knight did not address movement, both sides rely on
evidence from the preliminary injunction hearing and the Friends
figurines submitted by LEGO as exhibits during that hearing are
capable of movement. See
Prelim. Inj. Hr’g, Feb. 14, 2019, Ex.
83.
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LEGO also identified as a figurine that is capable of
movement and attachment to the LEGO Grid System “[t]he control
figure in the November 8, 2021 Report of Stephen Nowlis.” Pls.’
Ex. 33, Ex. B, Rebuttal Report of Elizabeth B. Knight ¶ 82. The
images included in Knight’s Rebuttal Report show that the
control figure “has a very different overall look and fee[l] as
compared to the LEGO Minifigure figurine.” Id.
Zuru argues that:
a trade dress that prevents competitors from selling their
own products that fit perfectly with the Lego play system,
or that requires competitors to use a design that doesn’t
fit with Lego elements, is unprotectable because it
inhibit[s] legitimate competition by allowing a producer to
control a useful product feature.
Zuru Mot. Reply at 33 (alteration in original) (internal
quotation marks and citation omitted). Zuru argues further that:
any competitor who is forced to sell an oversized figurine
that could only be used with Lego models that are
“expanded” to accommodate them (see Lego Opp. 40-41) would
plainly be at a competitive disadvantage to Lego with
respect to its consumers’ ease and enjoyment of the play
experience, as well as product costs.
Id.
Zuru expert Loetz shows photos of a MAX Figure and a LEGO
Minifigure figurine fitting “snugly inside a model of a car
built out of Lego bricks,” accompanied by photos of the “the
other figurines Lego has identified as supposedly providing
alternative designs for a figurine.” Def.’s Ex. 7, Ex. A, Expert
Report of Lee Loetz ¶ 103. Loetz concludes that they “are not on
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scale with the model and do not fit inside the car, and
therefore, in my opinion would not provide a satisfactory play
experience for consumers.” Id. The other figurines that are
shown by Loetz are the Fisher-Price Little People figurine, the
LEGO Maui figurine, the LEGO Belville figurine, the Fisher-Price
Imaginex figurine, the LEGO Family figurine, the C3 figurine,
and the Childcraft figurine. See id. However, in her opening
report, LEGO expert Knight explained the LEGO Grid System as
follows:
The Minifigure figurine fits within the LEGO Grid System,
but the system does not require that all figures be the
same size and scale. The Grid System allows for infinite
variations of sizes and scale, of figurines and models.
This open-ended system allows for endless creativity and
flexibility for children to use it in any way they want.
Adding plates—any number of plates—in the vertical
direction allows for the Minifigure figurine to be
accessorized with any number of different headgear.
Similarly, the size and scale of the Minifigure figurine
can be expanded in vertical directions to similarly
accessorize (scuba tanks, backpacks, shoes, flippers,
etc.). Other figures such as Friends™ Minidoll figurines
(with different sizes and shapes), as well as creatures,
are all similarly designed to fit in the LEGO Grid System.
The aesthetic appearance, scale and proportions have no
relevance to the function of the system. The LEGO Grid
System is flexible, you can lower or raise or expand by
adding plates or modules.
Pls.’ Ex. 33, Ex. A, Expert Report of Elizabeth B. Knight ¶ 40.
Knight supports her position with photographs showing how each
of the LEGO Minifigures, the Friends™ Minidoll figurine, the
LEGO Belville figurine, and the LEGO Maui figurine fit into the
LEGO Grid System. See id. She also includes a rendering of the
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LEGO Grid System in three-dimensions showing how three varied
size figurines, i.e. a LEGO Minifigure, a Friends™ Minidoll
figurine, and a LEGO “Moana” figurine, all fit within the LEGO
Grid System next to each other. See id. ¶ 41.
On the other hand, Loetz simply shows the same size model
car for different size figurines. Thus he merely demonstrates
that if a car is scaled to one size of figurine, different sizes
of figurines will not fit inside that car, not that different
sized figurines will not fit within the LEGO Grid System.
After asserting that the record is “devoid of any evidence
of an alternative design for the minifigure that works ‘equally
as well’ as the minifigure,” Zuru states: “Instead, Lego relies
on Ms. Knight’s speculation that ‘I think it’s possible’ that
such a design could exist. (SOF 25, 26 (Ms. Knight agreeing she
cannot identify any figurine that matches the functionality of
the minifigure, while speculating that ‘anything is
possible’).)” Unredacted Zuru Mot. Mem. at 49 (emphasis in
original). But LEGO is not relying on the deposition testimony
to which Zuru refers. Rather, Zuru is relying on that deposition
testimony in an effort to create a genuine issue of material
fact.
Paragraph 25 of Zuru’s Local Rule 56(a)1 Statement of Facts
reads:
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No other figurine that has ever been designed or sold
matches all the functionality of the minifigure, including
its “perfect” compatibility with the Lego play system. (Ex.
43 [Knight Tr. Vol. 1 at 169:24-170:16]; Ex. 44 [Knight Tr.
Vol. 2 at 279:4-280:25]; see Ex. 8 [Dep. Ex. Knight 10
(demonstrative)].)
Redacted Def.’s Local Rule 56(a)1 Statement in Supp. of Their
Mot. for Summ. J. ¶ 25. Knight’s statement “I think it’s
possible” appears at page 170, line 7 of the deposition
transcript. Def.’s Ex. 43, Elizabeth Knight Dep. Tr. Vol. 1,
Feb. 3, 2022 at 170:7. It follows a line of questions that began
with the following question: “Do you think a figurine that is
outside the proportions of the LEGO Minifigure could be
completely compatible with the LEGO Play System?” Id. at 169:11-
14. Thus, as an initial matter, while the line of questioning is
premised on a figurine that is outside the proportions of the
LEGO Minifigure figurine, Zuru’s Local Rule 56(a)1 Statement of
Facts paragraph 25 is broader in scope. In addition, when Knight
is being questioned by counsel for Zuru about the ability of a
competitor to design a figurine that has the capabilities for
movement and attachment identified in the chart produced by
Zuru’s expert Loetz, Knight responds that “it appears that they
can do any of those things in a totally new form, sculpted
form.” Def.’s Ex. 44, Elizabeth Knight Dep. Tr. Vol. 2, Feb. 4,
2022 at 279:23-24. Also, when Knight is asked by counsel for
Zuru whether she “[c]an . . . point to a single other figurine
that can do all the 15 things identified . . . [in] Mr. Loetz’s
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report but that has . . . a totally new form,” Knight responds:
“I mean, the LEGO brand has designed a figure. I haven’t seen a
new design. Somebody can do it.” Id. at 280:6-10, 280:15-17.
Then in response to a follow up question, she states: “I don’t
know everything that’s being done and what opportunities there
are for companies to create new figures, but anything is
possible.” Id. at 280:22-25. Thus, Knight’s deposition testimony
relied on by Zuru fails to create a genuine issue of material
fact with respect to the question of whether competitors are put
at a significant, non-reputational disadvantage.
Based on the foregoing, Zuru has failed to demonstrate that
there is a genuine issue of material fact as to whether the
Asserted Trademark is functional in a utilitarian sense because
its aesthetic value lies in its ability to put competitors at a
significant, non-reputational disadvantage.
c. Fraud on the USPTO
Zuru claims that the Asserted Trademark is invalid because
LEGO committed fraud on the USPTO. See Zuru, Inc.’s Answer and
Countercls. ¶ 128 (“LEGO fraudulently and inequitably obtained .
. . trademark . . . protections, including through material
misrepresentations and/or fraudulent nondisclosures to the
USPTO, and then knowingly and improperly asserted such invalid
and/or unenforceable intellectual property rights against ZURU
Inc. . . . .”). LEGO moves for summary judgment on this
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defense/counterclaim. Zuru maintains that there is at least a
genuine issue of material fact with respect to whether the
Asserted Trademark is invalid as a result of fraud on the USPTO.
“Fraud in procuring a trademark registration . . . occurs
when an applicant knowingly makes false, material
representations of fact in connection with his application.” MPC
Franchise, LLC v. Tarntino, 826 F.3d 653, 658 (2d Cir. 2016)
(omission in original) (quoting In re Bose Corp., 580 F.3d 1240,
1243 (Fed. Cir. 2009)). “[A] trademark is obtained fraudulently
under the Lanham Act only if the applicant or registrant
knowingly makes a false, material representation with the intent
to deceive the PTO.” Id. at 659 (emphasis in original) (quoting
Bose, 580 F.3d at 1245). “That is, to succeed on a claim that a
trademark holder procured the mark by fraud, a plaintiff cannot
merely show that the trademark holder ‘should have known’ that
the application contained false statements of material fact.”
Id. (quoting Bose, 580 F.3d at 1244). “Moreover, the knowing
misstatement must have been with respect to a material fact—one
that would have affected the PTO’s action on the applications.”
Orient Exp. Trading Co. v. Federated Dep’t Stores, Inc., 842
F.2d 650, 653 (2d Cir. 1988) (emphasis in original). “A party
seeking cancellation of a registered trademark on grounds of
fraud must demonstrate the alleged fraud by ‘clear and
convincing evidence.’” MPC Franchise, 826 F.3d at 658 (quoting
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Orient Exp., 842 F.2d at 653).
Zuru contends that LEGO made two fraudulent statements to
the USPTO. First, Zuru points to the fact that:
To obtain its asserted registration, Lego had to swear to
the following:
[T]o the best of the verifier’s knowledge and belief,
no other person has the right to use such mark in
commerce either in the identical form thereof or in
such near resemblance thereto as to be likely, when
used on or in connection with the goods of such other
person, to cause confusion, or to cause mistake, or to
deceive . . . .
15 U.S.C. § 1051(a)(3)(D).
Zuru Opp. Mem. at 50 (first alteration in original) (emphasis
omitted).
Second, Zuru asserts that “[t]o attempt to make these
showings, Lego submitted a sworn declaration.” Id. Zuru points
to paragraph thirteen of the Hecht Declaration where, as
discussed above, Hecht stated, inter alia, “[t]he use of the
mark of this application, that is, the Minifigure, has been
substantially exclusive . . . .” Id. at 50-51 (quoting Hecht
Declaration ¶ 13); see Part III.B.1.a.
With respect to the requirement that there be a false
material representation, Zuru contends that LEGO told the USPTO
that no other person had the right to use the mark even though
it had made representations in the Best-Lock litigation “that
Hasbro and Mega Bloks had a right to sell their figurines
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because they were sufficiently ‘different’ from the minifigure
(e.g., they were not ‘identical’ to the minifigure) . . . .”
Zuru Opp. Mem. at 51. But, as LEGO explains, it “made no such
statement in Best-Lock. Indeed, there was no trademark
infringement claim at issue in Best-Lock . . . .” LEGO Mot.
Reply at 33. In ruling on Zuru’s motion to dissolve the
preliminary injunction, the court set out the parts of the
record in the Best-Lock case on which Zuru is relying. The
record reflects that counsel for LEGO was responding to
questions by Judge Haight during oral argument as to why LEGO
had sued Best-Lock but had not sued Hasbro and Mega Bloks. The
response to Judge Haight was that Best-Lock had been sued
because its figure was identical to such an extent that you
could use the same mold and it had the same exact dimensions and
geometry. Consequently, in ruling on Zuru’s motion to dissolve
the preliminary injunction, the court found 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.” Lego A/S v. Zuru Inc., 2023 WL 2727552, at *5.
Zuru’s contention that LEGO represented that Hasbro and Mega
Bloks had a right to sell their figurines rests solely on its
interpretation of the record in Best-Lock, which the court has
rejected. Thus, Zuru has failed to create a genuine issue with
respect to this contention.
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Zuru also contends that LEGO made a false material
representation to the USPTO related to “Best Lock’s ‘use’ of its
figurine” because that was a “competitive use Lego failed to
disclose to the Trademark Office.” Zuru Opp. Mem. at 52.
However, ” [a] trademark applicant must disclose only those users
who are known to have a right to use the same or a related
mark.” Dial-A-Mattress Operating Corp. v. Mattress Madness,
Inc., 841 F. Supp. 1339, 1353 (E.D.N.Y. 1994) (emphasis in
original) (citing 37 C.F.R. 2.33(b)(1)). Also, “the fact that
others used the mark does not, standing alone, establish that
the applicant’s use was not ‘substantially exclusive.’”
Victorinox AG v. B & F Sys., Inc., 114 F. Supp. 3d 132, 138
(S.D.N.Y. 2015) (quoting L.D. Kichler Co. v. Davoil, Inc., 192
F.3d 1349, 1352 (Fed. Cir. 1999)), aff’d sub nom. Victorinox AG
v. B&F Sys., Inc., 709 F. App’x 44 (2d Cir. 2017), as amended
(Oct. 4, 2017); see also Victorinox AG, 709 F. App’x at 48, as
amended (Oct. 4, 2017) (“But, as the district court stated,
other companies’ use of the mark alone does not establish that
Plaintiffs’ use was not ‘substantially exclusive.’”).
With respect to materiality, Zuru simply asserts that “Lego
fails to establish as a matter of law that its fraudulent
statements were not ‘material[.]’” Zuru Opp. Mem. at 52. But
Zuru has the initial burden of production, and it has failed to
point to evidence, or even make an argument, that supports its
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position that notwithstanding the submissions by LEGO to the
USPTO demonstrating advertising expenditures, sales success,
attempts to plagiarize the mark, and the length of the mark’s
use, some question related to Best Lock about the exclusivity
about the mark’s use would have been material to the analysis by
the USPTO. Zuru does not address the fact that “[n]o single
factor among the six is determinative, and every element need
not be proved.” New York City Triathlon, LLC v. NYC Triathlon
Club, Inc., 704 F. Supp. 2d 305, 315 (S.D.N.Y. 2010) (quoting
Simon & Schuster, Inc. v. Dove Audio, Inc., 970 F. Supp. 279,
295 (S.D.N.Y. 1997)). Nor does Zuru address the fact that when
Best-Lock introduced its product in 1998, LEGO’s Minifigure
figurine had been on the market for approximately 20 years. See
RVC Floor Decor, Ltd. v. Floor & Decor Outlets of Am., Inc., 527
F. Supp. 3d 305, 318 (E.D.N.Y. 2021) (“[C]ourts often point to
five years of exclusive use of a mark as evidence of secondary
meaning.”) (quoting Hello I Am Elliot, Inc. v. Sine, No. 19 CIV.
6905 (PAE), 2020 WL 3619505, at *10 (S.D.N.Y. July 2, 2020)
(citing cases)). It simply cites to City of New York v. Tavern
on the Green, L.P., 427 B.R. 233, 242-43 (S.D.N.Y. 2010) for the
proposition that “deliberate omission in a trademark application
of information regarding another’s right to use the mark applied
for is a material omission justifying cancellation of that
mark.” See Zuru Opp. Mem. at 52.
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Thus, Zuru has not created a genuine issue as to whether
LEGO made a false material representation. Nor has it created a
genuine issue as to whether there is clear and convincing
evidence that LEGO knowingly made a representation with the
intent to deceive the USPTO. It simply asserts that it has “has
proffered substantial evidence of Lego’s knowingly inconsistent
representations.” Zuru Opp. Mem. at 51. The facts here are far
removed from those in MPC Franchise where, among other things,
Tarntino was well aware that he was merely a one-third
owner of the [corporation that in turn owned Pudgie’s
Horseheads]. Tarntino’s misstatement of ownership was not a
mistake . . . . Tarntino was not attempting to register the
mark on behalf of the corporation in which he was a part
owner; he registered it for himself.
826 F.3d at 661 (alteration and omission in original) (quoting
MPC Franchise, LLC v. Tarntino, 19 F. Supp. 3d 456, 480
(W.D.N.Y. 2014)).
Based on the foregoing, LEGO has shown that it is entitled
to summary judgment with respect to Zuru’s defense/counterclaim
that the Asserted Trademark is invalid due to fraud on the
USPTO.
d. Inconsistent Appearance
Zuru claims that the Minifigure Trademark is invalid
because “LEGO’s Minifigures have highly variable and
inconsistent appearances.” Zuru, Inc.’s Answer and Countercls. ¶
159. Zuru asserts that “[t]he trademark is . . . invalid because
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the Lego Group has used inconsistent and varying forms of
decorations on its minifigurine. . . . Because the minifigurine
does not have a consistent look or appearance, it cannot be
trademarked and cannot be protected by trade dress.” Pls.’ Ex.
11, Def. Zuru Inc.’s Resp. to Pls.’ Second Set of Interrogs.
(Nos. 8-17) at 27.
The registration and the prosecution history for the
Asserted Trademark show that the mark consists of the three-
dimensional configuration of a toy figure. Zuru cites no
authority to support its position that the Minifigure figurine
does not have a consistent look or appearance.
Moreover, as LEGO notes,
the materials submitted to the Trademark Office in response
to the office action show numerous examples of the
Minifigure figurine with different decorations and
accessories, see, e.g., Ex. 9 (Hecht Decl.) at Ex. A and B
(showing Minifigure figurines with decorations evoking,
inter alia, a town person, a mummy, an explorer, a
construction worker, a sailor, a law enforcement officer, a
sumo wrestler, a skier, a baseball player, a surgeon, a
Viking, Dracula, and Santa Claus, to name a few).
LEGO Mot. Mem. at 69. The court agrees with LEGO that “ZURU
cannot prevail on this defense because the [USPTO], in issuing
the registration, concluded the Minifigure figurine was
protectable despite the use of different colors and
decorations.” Id. at 69-70.
Based on the foregoing, LEGO has shown that it is entitled
to summary judgment with respect to Zuru’s defense/counterclaim
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that the Asserted Trademark is invalid because LEGO has used
varying forms of decorations on the Minifigure figurine.
e. Abandonment
Zuru claims that the Asserted Trademark is invalid because
“the purported mark has been abandoned.” Pls.’ Ex. 11, Def. Zuru
Inc.’s Resp. to Pls.’ Second Set of Interrogs. (Nos. 8-17) at
27. Zuru states:
Lego does not dispute that Lego Juris A/S is a holding
company that legally owns the asserted minifigure trade
dress, and that Lego Systems, Inc. is the distributor of
Lego construction toys bearing the asserted trade dress. .
. . Yet Lego has failed to put forth any evidence that Lego
Juris A/S has used the trade dress itself, or exercised
control over the goods of Lego Systems, Inc.
Zuru Opp. Mem. at 68. In response, LEGO explains: “Based on the
lack of deposition questions on this issue, minimal explanation
in its interrogatory responses, and the LEGO Group producing 23
license, operating, and assignment agreements . . . , the LEGO
Group did not think ZURU would pursue this . . . defense.” LEGO
Mot. Reply at 44, n.45.
Zuru has not identified any evidence that LEGO Juris A/S
has not exercised control over the Minifigure figurine or the
goods of LEGO Systems, Inc. Nor has it identified any evidence
that would create a genuine issue as to whether, as LEGO
maintains, 15 U.S.C. § 1055 applies here. That section provides:
“Where a registered mark . . . is or may be used legitimately by
related companies, such use shall inure to the benefit of the
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registrant . . . and such use shall not affect the validity of
such mark or of its registration . . . .” 15 U.S.C. § 1055.
On the other hand, LEGO explains that “[d]uring discovery
the LEGO Group produced four license agreements between LJAS and
LEGO System A/S (‘LSAS’), the parent company of LSI, dating back
to 2008.” LEGO Mot. Reply at 44 (footnotes omitted). LEGO
submits the four license agreements between LJAS and LSAS (the
“License Agreements”) and the operating agreement between LSAS
and LSI, which was executed in 2007 (the “Operating Agreement”).
See Pls.’ Ex. 56, Supplemental Decl. of Jared Carr (ECF No. 285-
3) ¶¶ 4-5; Pls. Ex. 56, Exs. A-E (ECF Nos. 285-4, 285-5, 285-6,
285-7, 285-8).
LEGO states, accurately:
The License Agreements and Operating Agreement demonstrate
that LJAS owns and controls the Asserted Trademark, which
mark is used by LSAS through the actions of its
subsidiaries like LSI. Specifically, the License Agreements
set forth certain quality control standards, namely,
adherence to quality instructions issued by LJAS with
respect to all LEGO products. See, e.g. Pls.’ Ex. 56, Ex. D
§ 2.1. Moreover, the License Agreements provide that all
trademark use by LSAS inures to the benefit of LJAS, and
that LSAS must comply with the LEGO Group’s “fair play”
guide with respect to use of trademarks. See e.g., id. §§
3.1, 3.8. The Operating Agreement entitles LSI to, inter
alia, use all trademarks licensed to LSAS in its marketing
of LEGO products and further specifies that the use shall
take place according to the LEGO Group’s policies for
trademarks. Pls.’ Ex. 56, Ex. E § 1.3.
Unredacted Reply Mem. in Further Supp. of Pls.’ Mot. for Partial
Summ. J. (ECF No. 284) (“Unredacted LEGO Mot. Reply”) at 45
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(footnotes omitted).
Based on the foregoing, LEGO has shown it is entitled to
summary judgment with respect to Zuru’s defense/counterclaim
that the Asserted Trademark is invalid because it has been
abandoned.
2. Second Element: Consumer 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)
(internal citation omitted) (quoting Polaroid Corp. v. Polarad
Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961)). “[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) (citation 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) (internal quotation marks omitted) (quoting Lois
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Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867,
872 (2d Cir. 1986)).
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) (citation and
internal quotation marks omitted). “The Supreme Court has held
that unlike word marks and product-packaging trade dress,
product-design trade dress can never be inherently distinctive.”
Converse, Inc., 909 F.3d at 1116. 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.
With respect to advertising expenditures, LEGO has
submitted the Hecht Declaration which, as discussed in Part
III.B.1.a, was submitted to the USPTO in response to an office
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action requesting evidence of acquired distinctiveness. See
Pls.’ Ex. 9. The Hecht Declaration establishes that between 1978
and the date of the Hecht Declaration, i.e. October 20, 2015,
LEGO spent in excess of $200 million on advertising and
promotion in the United States for LEGO toy sets containing LEGO
Minifigures and for LEGO Minifigures sold separately. See id.
¶ 7.
LEGO has also submitted evidence in the form of the Hecht
Declaration with respect to sales success. As discussed in Part
III.B.1.a, the Hecht Declaration shows that total retail sales
in the United States from 1978 to the date of the declaration
for LEGO Minifigures, sold separately and in LEGO construction
toy sets containing LEGO Minifigures, exceeded $1 billion. See
id. ¶ 6. The Hecht Declaration establishes that from 1978 to the
date of the declaration, the approximate number of LEGO
Minifigures sold in the United States (separately or in
construction toy sets) exceeded 120 million, and the number of
worldwide sales of LEGO Minifigures exceeded four billion. See
id. ¶¶ 5-6.
With respect to length and exclusivity of use and copying,
LEGO has submitted evidence also in the form of the Hecht
Declaration. The Hecht Declaration establishes that the
Minifigure was first sold in 1978 and LEGO’s use of it “has been
substantially exclusive, that is, only by The LEGO Group, apart
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from uses by occasional small infringers, which The LEGO Group
usually polices.” Id. ¶ 13. With respect to copying, the court
in Best-Lock concluded that “no reasonable trier of fact could
determine that Best-Lock did not actually copy Lego.” 404 F.
Supp. 3d at 608.
As is also discussed in Part III.B.1.a, while the Hecht
Declaration makes no mention of consumer studies or unsolicited
media coverage linking the Asserted Trademark to a source, it
does reflect that “LEGO Minifigures are so popular that there is
an industry of producing products that facilitate collecting
them.” Pls.’ Ex. 9 ¶ 10. Consumers’ familiarity with LEGO
Minifigures has been reinforced by a variety of books, sticker
books, video games, and movies for children.
Zuru argues that LEGO’s “purported evidence of the strength
of its asserted trade dress . . . is inadmissible as hearsay and
because it is testimony from an undisclosed witness.” Zuru Opp.
Mem. at 60. However, as discussed in Part III.B.1.a, Zuru’s
argument that LEGO cannot rely on statements in the Hecht
Declaration lacks merit.
Zuru argues that “[t]here is no evidence that Lego has a
strong mark in the body form of a blank, undecorated
minifigure.” Zuru Mot. Mem. at 54. Zuru asserts that “Lego’s
admissions, including that the body form is a ‘broadly generic,’
‘perfect blank canvas,’ for Lego’s signature head coloring,
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decorations, and accessories to be added, further shows that any
‘strength’ in the ‘appearance’ of the Lego minifigure is based
on features that are not protected by Lego’s trade dress . . .
.” Id. But, as LEGO points out, “ZURU cites no authority for its
position that varying decorative elements render the Minifigure
figurine trade dress unrecognizable.” LEGO Opp. Mem. at 54. As
LEGO also points out, the USPTO “registered the Minifigure
figurine trade dress despite being aware of the various ways in
which the Minifigure figurine may be adorned.” Id. Exhibits A
and B to the Hecht Declaration, which show LEGO Minifigures with
various decorations, support LEGO’s contention. See Pls.’ Ex. 9,
Ex. A and B. Zuru also argues that “Lego’s trade dress is not
distinctive . . . and it is not ‘exclusive,’ particularly in
consideration of the Kre-O and Mega Bloks figurines that Lego
admits are lawful competition despite their ‘very similar’
appearance.” Zuru Opp. Mem. at 60. However, as discussed in Part
III.B.1.a, that argument lacks merit.
Based on the foregoing, there is no genuine issue as to
this factor, and it supports the conclusion that there is a
likelihood of confusion.
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,
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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).
Zuru argues that it “has ample evidence, including expert
analysis and Lego’s admissions, showing Zuru’s figurines are
different from the minifigure with respect to every possible
‘design feature’ . . . .” Zuru Opp. Mem. at 61. See also Zuru
Mot. Mem. at 55. Zuru argues further that it
also has evidence showing the parties’ figurines are not
“similar,” and are highly distinguishable, when features
other than the asserted trade dress—such as the
minifigure’s signature “yellow head” and facial
decorations, which do not appear on Zuru’s figurines, and
their different product packaging, branding, and labeling—
are considered. (Zuru SOF Ex. 7[)]; (Loetz Report at pp.
66-73.)
Zuru Opp. Mem. at 61.
The expert analysis relied upon by Zuru is that done by its
expert Loetz. Zuru maintains that “the evidence establishes that
the minifigure’s potentially protectable features (if there are
any) are not present in the Zuru figurines . . . .” Zuru Mot.
Mem. at 55. Loetz begins his analysis on this issue as follows:
117. At the outset of this discussion, it is notable that
each of the elements of the Lego minifigure that Lego
claims are part of its protected design look different on
the Zuru Max figurine. Specifically, Lego describes what
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its trademark in the minifigure “consists of” as follows
(the internal numbering was added by me):
THE MARK CONSISTS OF THE THREE-DIMENSIONAL
CONFIGURATION OF A TOY FIGURE FEATURING (1) A
CYLINDRICAL HEAD, (2) ON TOP OF A CYLINDRICAL NECK,
(3) 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, (4) ON TOP OF A RECTANGULAR PLATE, (5) ON TOP
OF LEGS WHICH BULGE FRONTWARDS AT THE TOP AND ARE
OTHERWISE RECTANGULAR WITH UNIFORM THICKNESS, (6) ON
TOP OF FLAT SQUARE FEET.
118. Of these supposedly “trademarked” features of the
minifigure, Lego considers three of them to be the
“essential characteristics that define a minifigure”: (i)
the shape of the head; (ii) the shape of the torso; and
(iii) the shape of the foot. (Minifigure Guidelines at 11.)
119. As shown below with respect to both the first and
second generation Zuru Max figurines, none of these
supposedly trademarked “essential characteristics” of the
Lego minifigure are present in the Zuru figurines.
Def.’s Ex. 7, Ex. A, Expert Report of Lee Loetz ¶¶ 117-19
(footnote omitted).
As discussed in Part III.A.2.b, Federal Rule of Evidence
702 “establishes a standard of evidentiary reliability . . .
requir[ing] a valid connection to the pertinent inquiry as a
precondition to admissibility . . . [and] a reliable basis in
the knowledge and experience of the relevant discipline.”
Kumho
Tire Co., Ltd., 526 U.S. at 149 (internal quotations and
citations omitted). “[W]hen an expert opinion is based on data,
a methodology, or studies that are simply inadequate to support
the conclusions reached, Daubert and Rule 702 mandate the
exclusion of that unreliable opinion testimony.” Amorgianos, 303
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F.3d at 266.
Loetz compares the Minifigure figurine to the First
Generation MAX Figure. He observes that “[t]he only similarity
is the internal shape of the ‘c-cup’ hand which, in my
understanding, is not an element of the Lego minifigure that
Lego claims it has exclusive rights to use . . . .” Def.’s Ex.
7, Ex. A, Expert Report of Lee Loetz ¶ 121. Loetz compares the
head shape of a LEGO Minifigure and that of the First Generation
MAX Figure and shows “that the Zuru figurine head is distinct
from the Lego minifigure head in shape, size, color, and
decorations.” Id. ¶ 122. Next, Loetz compares the torsos of a
LEGO Minifigure and the First Generation MAX Figure and points
out a number of “differences in the shapes of the torsos of the
figurines.” Id. ¶ 127. For example, “[t]he Zuru figurine’s neck
has a ball joint to allow for a wider range of movement for the
connected head,” and “[t]he Zuru figurine’s shoulders have a
ball joint connection for a wider range of movement for the
connected arms.” Id. He concludes that “[o]verall, the
difference in the shapes of the torsos is a defining
distinction.” Id. ¶ 128. Finally, Loetz compares the legs and
feet of a LEGO Minifigure and the First Generation MAX Figure.
He concludes that
[a]ccording to the Lego trademark registration, the legs of
the minifigure “bulge frontwards at the top and are
otherwise rectangular with uniform thickness,” and the feet
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of the minifigure “are flat square feet.” As shown below,
the legs and feet of the first generation Zuru figurine do
not share those characteristics.
Id. ¶ 129. He identifies several respects in which the
characteristics of the legs and feet are different.
Loetz then concludes that “given that the ‘essential’
minifigure characteristics of the head, torso, legs, and feet
are different in the first generation Zuru figurine and the Lego
minifigure, the overall appearance of the figurines is likewise
different, and reveals that the Zuru Max figurine has a unique
design.” Id. ¶ 132 (footnote omitted).
Loetz then performs an analysis using the same methodology
with respect to the Zuru Second Generation figurines. He
concludes: “Again, given the differences in each of the elements
that comprise the ‘essential characteristics’ of the Lego
minifigure, the overall appearance of the second generation Zuru
Max figurine is different from the Lego minifigure.” Id. ¶ 142.
Loetz also compares the First Generation MAX Figures and
Second Generation MAX Figures to the image of the Asserted
Trademark from the ‘968 Registration and states that his
“analysis and opinions above about the differences between the
appearance and design of the Zuru Max figurines and the Lego
minifigure apply comparably to the minifigures shown in the Lego
registration[].” Id. ¶ 147.
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However, the approach taken by Loetz is not a reliable
foundation for his opinions, and they cannot be considered
because “[w]hen evaluating the similarity of marks, courts
consider the overall impression created by a mark. Each mark
must be compared against the other as a whole; juxtaposing
fragments of each mark does not aid in deciding whether the
compared marks are confusingly similar.” Brennan’s, Inc., 360
F.3d at 133 (citing Universal City Studios, Inc. v. Nintendo
Co., 746 F.2d 112, 117 (2d Cir. 1984)). From the very beginning
of his analysis, Loetz makes it clear that he is juxtaposing
fragments of each mark; in paragraph 117, he skips over the
language about a three-dimensional configuration of a toy figure
and begins numbering his version of the parts of the protected
design with the cylindrical head, and then continues assigning
numbers to other fragments. See Def.’s Ex. 7, Ex. A, Expert
Report of Lee Loetz ¶ 117.
LEGO, on the other hand, submits an analysis by its expert
Knight that does not juxtapose fragments of each mark in
determining whether the marks being compared are similar.
Knight explains that “[t]he Minifigure figurine’s whole
sculpture (e.g., cylindrical head and body features, including
torso, arms, and legs) represents a human figure and comprise
the total look and feel of the sculptures.” Pls.’ Ex. 33, Ex. A,
Expert Report of Elizabeth B. Knight ¶ 45. Knight shows a First
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Generation MAX Figure side-by-side with the Minifigure figurine.
Knight then shows a LEGO Minifigure and a First Generation MAX
Figure side-by-side from a front view, a side view, and a back
view. Knight then shows silhouettes of a LEGO Minifigure and a
First Generation MAX Figure next to each other and then, next to
that, the results of an overlay of the two silhouettes from
three perspectives: a top view, a front view, and a side view.
The overlays support Knight’s conclusion, which is:
By 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 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. The ordinary
observer or consumer would not notice the differences
between the figures and would consider them to be almost
identical.
Id. ¶ 46.
Knight also compares the Minifigure figurine and the Second
Generation MAX Figure side-by-side from a front view, a side
view, and a back view. She also includes at each point of her
analysis the First Generation MAX Figure. Knight then shows
silhouettes of the Minifigure figurine and the Second Generation
MAX Figure next to each other and then, next to that, the
results of an overlay of the two silhouettes from three
perspectives: a top view, a front view, and a side view. The
comparison of the overlays of the silhouettes supports her
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conclusion that “it is clear that there are few small shape
differences. . . . [L]ooking at the overall appearance it is in
an irrefutable conclusion that the figurines are substantially,
and confusingly, similar.” Id. ¶ 51. Knight then shows overlays
of silhouettes of the First Generation MAX Figure and the Second
Generation MAX Figure. The comparison of these overlays supports
her conclusion that “[w]hen silhouettes of the [First Generation
MAX Figure] and the [Second Generation MAX Figure] are layered
upon each other, it is clear that ZURU made very little changes
to the [First Generation MAX Figure].” Id. ¶ 52.
Knight shows images that illustrate the amount of material
added to and removed from the First Generation MAX Figure during
the design of the Second Generation MAX Figure. These images,
shown in paragraph 53 of her report, support her conclusion that
“[t]he following images below illustrate the minimal amounts of
material added to and removed from the [First Generation MAX
Figure] during the design of the [Second Generation MAX
Figure].” Id. ¶ 53.
Finally, Knight includes a side-by-side comparison of the
Minifigure figurine and the Second Generation MAX Figure, with
annotations pointing to the differences between the two that
have been highlighted by Zuru. She notes that the Minifigure
figurine is 40.33 millimeters high and the head is 21 percent of
that figure, so the ”[p]roportion of head size to stature [is]
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equivalent to a 3 year old child,” and she shows that the Second
Generation MAX Figure is 41.6 millimeters high and the head is
27 percent of that figure, so the “[p]roportion of head size to
stature [is] equivalent to a 1 year old child.” Id. ¶ 53.
Knight’s analysis supports her conclusion that “[t]he
similarities between the ZURU figurines and Minifigure figurine
are prominent whereas the differences are negligible and would
not be perceived by an ordinary observer, which is an adult
purchaser of the toys. Adult purchasers do not inspect
individual details of the figurines close enough to recognize
any differences.” Id. ¶ 57. 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.
In his rebuttal report, Zuru expert Loetz argues that
Knight’s “overlays are flawed and do not support her opinion.”
Def.’s Ex. 75, Rebuttal Report of Lee Loetz (ECF No. 236-2)
¶ 96. With respect to Knight’s comparison between the Minifigure
figurine and the First Generation MAX Figure, Loetz states:
97. As an initial matter, and without any explanation, Ms.
Knight altered the shapes of the Lego and Zuru figurines
that she used in her overlays. . . . In particular, the
images of the Zuru figurines that Ms. Knight used have
sharper and more angular shapes than the actual Zuru
figurines, which, other than the feet on the first-
generation Max figurines, lack squares, rectangles, or
sharp angles. In other instances, Ms. Knight simply changed
the shape of the figurines.
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98. For example, Ms. Knight’s side-view of the minifigure
on page 24 obscures the round “bulge” on the top part of
the legs that is specifically identified by Lego as being a
(supposedly) trademarked feature of the minifigure—and that
is not present on the Zuru figurines. The feet of the
minifigure in Ms. Knight’s image are also misshapen, as
they are taller than, and fail to depict the sharp
rectangular shape of, the actual feet of the minifigure.
99. Ms. Knight’s “side view” of the Zuru figurine shown on
page 24 (which appears to be intended to depict a first-
generation Max figurine) is also modified and deformed. In
Ms. Knight’s image, the body of the Zuru figurine gently
slopes inward at the waist area, but this is not an actual
feature of the Zuru figurine. Likewise, the legs of the
figurine in Ms. Knight’s image show a concave slope,
whereas the legs of the actual Zuru figurine do the
opposite.
Id. at ¶¶ 97-99. However, Loetz does not support any of his
points with any illustrations or overlays of the figurines of
his own. One is required to closely scrutinize the images used
by him to determine whether there is any validity to the points
he makes, and the fact that such close scrutiny is required
reinforces, rather than detracts from, Knight’s ultimate
conclusion.
With respect to Knight’s comparison of the Minifigure
figurine and the Second Generation MAX Figure, Loetz states:
The images of the Zuru figurines on page 28 are also
different from the actual figurines. For example, Ms.
Knight’s image of the front view of the second generation
Zuru figurine has a different torso from the actual second
generation figurine, in that it is either wider than or the
same width at the waist than the shoulders, whereas the
actual figurine is more narrow at the waist. Likewise, the
“chin” of the second generation figurine in Ms. Knight’s
sideview image is more angular and “sharp” than on the
actual figurine, which has a curved chin. And the arms as
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shown on the side view of the Zuru figurines are bent to a
greater degree than the actual arms of the Zuru figurines.
Id. at ¶ 100. Here, Loetz does provide an illustration, and it
shows an “Actual Zuru Max Second Generation Figurine” next to a
“Knight Drawing of Zuru Max Second Generation Figurine” with an
overlay. Id. at ¶ 101. However, once again, one is required to
closely scrutinize Loetz’s overlay to determine whether there is
any validity to the point he makes; again this requirement of
close scrutiny reinforces Knight’s ultimate conclusion. In
addition, Loetz’s criticism of the diagram in paragraph 49 of
Knight’s report cannot be applied to the depiction of the Second
Generation MAX Figure shown by Knight beginning at paragraph 54
of her report (and the following paragraphs), where she states
her conclusions regarding similarities.
Thus, Loetz has identified potential fodder for cross-
examination, but he fails to create a genuine issue as to
whether the approach taken by Knight to her overlay analysis is
a reliable foundation for her opinions.
Zuru argues that it
also has evidence showing the parties’ figurines are not
“similar,” and are highly distinguishable, when features
other than the asserted trade dress—such as the
minifigure’s signature “yellow head” and facial
decorations, which do not appear on Zuru’s figurines, and
their different product packaging, branding, and labeling—
are considered. (Zuru SOF Ex. 7[)]; (Loetz Report at pp.
66-73.)
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Zuru Opp. Mem. at 61. Loetz opines that “the paint, coloring,
and decorations (in addition to body design differences) on the
Zuru figurines further differentiate the Zuru figurines from the
Lego minifigure depicted in the Lego Asserted Trademark, which
is simply the ‘blank canvas’ form of the minifigure.” Def.’s Ex.
7, Ex. A, Expert Report of Lee Loetz ¶ 149. However, as LEGO
points out, Zuru’s argument that “the yellow head and different
facial features of the Minifigure figurine somehow changes [the]
conclusion . . . is yet another improper attempt to dissect the
relevant marks, and is also unavailing because neither of those
features are claimed in the Asserted Trademark.” LEGO Mot. Reply
at 40 (footnote omitted).7
Zuru also argues that “[b]ased on evidence cited [in the
section of Zuru’s memorandum discussing substantial similarity
in the context of copyright infringement], including Lego’s
binding admissions from Best Lock that the Kre-O figurine is a
‘different expression,’ no reasonable juror could find that
Zuru’s figurines are similar to the minifigure in any
protectable (non-functional) expressions.” Zuru Mot. Mem. at 55.
However, as discussed in Part III.A.2.b, the court has already
7 LEGO also points out that “[d]espite ZURU’s continued efforts to point to
the yellow head of some Minifigure figurines, no color is claimed in
the Asserted Trademark, and the LEGO Group makes many Minifigure figurines
which do not contain the yellow head. Moreover, the LEGO Group has a
trademark registration for the yellow head (U.S. Reg. No. 4520327), which
it did not assert in this action.” LEGO Mot. Reply at 40, n.40.
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ruled against Zuru on that argument. See Lego A/S v. Zuru Inc.,
2023 WL 2727552, at *5.
Finally, Zuru argues that the testimony of “Lego’s own
corporate designee on the topic of ‘Lego’s use of its Asserted
Trademarks,’” shows “that Lego itself recognizes that Zuru’s
figurines do not capture the ‘overall look and feel’ of the
minifigure.” Unredacted Zuru Mot. Mem. at 42-43. Meghan Blair is
a brand design specialist whose job is to “look[] after and
manag[e] the expression of the LEGO brand across experiences.”
Pls.’ Ex. 47, Meghan Blair Dep. Tr., June 24, 2021 (ECF No. 263-
9) at 17:3-6. She was LEGO’s corporate designee on “LEGO’s use
of its Asserted Trademarks in the U.S. since January 1, 2016,
including but not limited to in products, marketing and
advertising.” Redacted Pls.’ Local Rule 56(a)2 Statement in
Opp’n to Def.’s Mot. for Summ. J. Resp. to ¶ 54. Her deposition
was taken by video and she was shown a series of two-dimensional
images. She “commented from her perspective as a specialist in
design, including minute details of the LEGO Minifigure
figurine.” Unredacted Pls.’ Local Rule 56(a)2 Statement in Opp’n
to Def.’s Mot. for Summ. J. Resp. to ¶ 54. She pointed out the
differences as being “the shape of the legs is more rounded, the
shape of the arms has a larger biceps, the shape of the chin has
softness to it, that’s not as squared off cylindrically as the
mini[]figure head,” and that the “[s]hape of the torso . . .
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looks like it has a different angle on the sides and isn’t a
purely trapezoidal shape like the mini[]figure torso.” Def.’s
Ex. 37, Meghan Blair Dep. Tr., June 24, 2021 (ECF No. 236-10) at
125:15-126:2. Blair’s job is to ensure that the Minifigure
figurine is depicted accurately and consistently in varying
settings. Thus, her testimony is not probative on the question
of what effect any similarity between the Minifigure figurine
and Zuru’s MAX Figures would have on prospective purchasers. Her
testimony does not create a genuine issue of material fact with
respect to this Polaroid factor.
Based on the foregoing, there is no genuine issue as to
this factor, and it supports the conclusion that there is a
likelihood of confusion.
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, 1139 (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 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).
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As to the nature of the products, it is undisputed that the
LEGO Minifigures and the MAX Figures are toy figures. As to the
class of customers to whom the goods are sold, it is also
undisputed that the products are directed to the same class of
customers, i.e. parents and children. As to the channels through
which the products are sold, Zuru has admitted that “its
figurines were displayed at Walmart retail locations in the
United States in the same aisle as the Lego Group’s products in
at least some instances.” Redacted Def.’s Local Rule 56(a)2
Statement of Facts in Opp’n to Pls.’ Mot. for Summ. J. ¶ 49
(internal quotation marks omitted). Thus, LEGO has established
that the two products compete with each other. See Rubik’s Brand
Ltd. v. Flambeau, Inc., No. 17CV6559PGGKHP, 2021 WL 363704, at
*14 (S.D.N.Y. Jan. 31, 2021) (finding that the parties’ products
were in direct competition for the purpose of analyzing
proximity because both products were 3x3 puzzle cubes sold in
the same stores and “displayed and sold side by side in at least
three retail settings”); Waddington N. Am. Bus. Tr. v. EMI
Plastics, Inc., No. 02-CV-3781(FB), 2002 WL 2031372, at *1, *7
(E.D.N.Y. Sept. 5, 2022) (finding that the “defendant sells its
products in the identical market and is in direct competition
with plaintiff” where, inter alia, both parties “primarily sell
their lines at wholesale to distributors” and “[t]he retail
customers are primarily restaurants, caterers and grocers”).
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Zuru argues that this factor does “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,” and “there is nothing wrong—i.e.,
illegal, immoral, or improper—with Walmart and Zuru undertaking
this task, and to the contrary, consumers benefit from having
additional options in their construction-toy systems.” Zuru Mot.
Mem. at 55. However, this argument does not address the
considerations that are germane to the inquiry with respect to
proximity of products.
Based on the foregoing, there is no genuine issue as to
this factor, and it supports the 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.”
Centaur Commc’ns, Ltd. v. A/S/M Commc’ns, Inc., 830 F.2d 1217,
1227 (2d Cir. 1987) (internal quotations marks and citation
omitted). Here,
there is no competitive gap to be bridged because
both LEGO and Zuru already sell toy figurines and toy
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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.” Sports Auth., Inc., 89 F.3d at 963
(internal quotation marks and citation 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., 799 F.2d at 875.
LEGO maintains that “while not necessary, ‘[t]here can be
no more positive or substantial proof of the likelihood of
confusion than proof of actual confusion.’” LEGO Mot. Mem. at 49
(alteration in original) (quoting Mobil Oil Corp. v. Pegasus
Petroleum Corp., 818 F.2d 254, 259 (2d Cir. 1987)) (further
citation omitted). LEGO contends that “[i]n the short period of
time the MAX Figurines were on the market, there were at least
three instances of actual consumer confusion.” Redacted Pls.’
Local Rule 56(a)1 Statement in Supp. of Their Mot. for Summ. J.
¶ 34. LEGO supports this statement with pages eight to ten of
Exhibit 21, which are screenshots of Walmart.com and MAX
Facebook reviews. See Pls.’ Ex. 21 (ECF No. 243-21) at 8-10.
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Zuru argues that “[e]ven if the documents are admissible, the
hearsay comments related to brick products generally . . . , not
to figurines specifically.” Redacted Def.’s Local Rule 56(a)2
Statement of Facts in Opp’n to Pls.’ Mot. for Summ. J. Resp. to
¶ 34. However, the comments identified by LEGO do relate to
figurines. See Pls.’ Ex. 21 at 8 (“Walmart has these and they
are cheap. He loves these Legos and they have a big package of
the little guys.”); id. at 9 (“I saw these tonight at Walmart .
. . they had a box of LEGO people.”); id. at 10 (“He will
definitely love the Lego people.”).
Zuru also maintains that “even if the three comments showed
meaningful ‘confusion,’ three comments of out 46,000 comments is
de minimis and does not support a likelihood of confusion.”
Redacted Def.’s Local Rule 56(a)2 Statement of Facts in Opp’n to
Pls.’ Mot. for Summ. J. Resp. to ¶ 34. Three comments is not
compelling evidence, but the comments are nonetheless relevant
evidence.
“Evidence of actual confusion may consist of anecdotal or
survey evidence.” Paco Sport, Ltd. v. Paco Rabanne Parfums, 86
F. Supp. 2d 305, 319 (S.D.N.Y. 2000), aff'd sub nom. Paco Sport,
Ltd. v Paco Rabanne Perfumes, 234 F.3d 1262 (2d Cir. 2000). LEGO
and Zuru have each proffered evidence on the question of
likelihood of confusion in the form of surveys conducted by
experts. LEGO expert Stephen Nowlis conducted four surveys, as
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follows: (1) a survey that measured the extent to which the
overall impression created a likelihood of confusion between
First Generation MAX Figures and LEGO Minifigures at the point
of sale (“2018 Point of Sale Survey”); (2) a survey that
measured the extent to which the overall impression created a
likelihood of confusion between Second Generation MAX Figures
and LEGO Minifigures at the point of sale (“2019 Point of Sale
Survey”); (3) a survey that measured the extent to which the
overall impression created a likelihood of confusion between
First Generation MAX Figures and LEGO Minifigures post sale
(“2018 Post Sale Survey”); and (4) a survey that measured the
extent to which the overall impression created a likelihood of
confusion between Second Generation MAX Figures and LEGO
Minifigures post sale (“2019 Post Sale Survey”).
Zuru does not submit any survey evidence with respect to
the First Generation MAX Figures, with respect to either the
point of sale or post sale. Zuru expert Bruce Isaacson conducted
a survey that measured the extent to which there was a
likelihood of confusion between Second Generation MAX Figures
and LEGO Minifigures at the point of sale. Zuru expert Matthew
Ezell conducted a survey that measured the extent to which there
was a likelihood of confusion between Second Generation MAX
Figures and LEGO Minifigures post sale.
The objective of the surveys conducted by all three experts
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was to measure “net confusion.” “Net confusion is the difference
between the likelihood of confusion found in the Test group and
the likelihood of confusion found in the Control group (the
Control group measures ‘survey noise’ and is thus subtracted
from the Test group results).” Pls.’ Ex. 22, Expert Report of
Stephen M. Nowlis (ECF No. 243-22) ¶ 7 (footnote omitted); see
also Def.’s Ex. 78, Rebuttal Report of Matthew G. Ezell (ECF No.
269-26) ¶ 3 (explaining that his survey results are “on a net
basis after adjusting the survey results based on a proper
control cell”). The likelihood of confusion for the test group
is determined by having participants in the survey view MAX
Figures. The likelihood of confusion for the control group is
determined by having participants in the survey view a control
figurine.
“When creating a survey control . . . a core principle is
to create controls that share as many characteristics as
possible with the test item, with the exception of any disputed
characteristics.” Def.’s Ex. 76, Rebuttal Report of Bruce
Isaacson (ECF No. 269-24) ¶ 82 (citing Shari Seidman Diamond,
Reference Manual on Scientific Evidence, Reference Guide on
Survey Research, 399 (3d ed. 2011)). “Typically, this means that
a control should be similar to the corresponding test item,
except that the control should remove all disputed elements from
the test item.” Id. As explained by Nowlis,
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18. It is very important that a likelihood of confusion
survey uses an appropriate Control.
19. A Control is needed to account for what is known as
“survey noise,” and is similar in spirit to a placebo
used to test, for example, a new medication.
20. Without a proper Control, there is no way to track the
correct amount of survey noise, and thus no way to
know the proper amount of survey noise to remove from
a Test result to arrive at an overall level of net
confusion (net confusion = Test percentage – Control
percentage).
21. Without a proper Control, an individual reviewing the
data generated by the survey will not be able to
discern whether the results are due to confusion or
survey noise.
22. It is critically important that the Control itself is
not infringing. When a Control itself is infringing,
it is not possible to generate an accurate level of
net confusion.
Pls.’ Ex. 22, Expert Report of Stephen M. Nowlis ¶¶ 18-22; see
also Def.’s Ex. 78, Rebuttal Report of Matthew G. Ezell ¶ 3
(quoting Shari Seidman Diamond, Reference Manual on Scientific
Evidence (3d ed. 2011)) (“In designing a survey-experiment, the
expert should select a stimulus for the control group that
shares as many characteristics with the experimental stimulus as
possible, with the key exception of the characteristic whose
influence is being assessed.”).
Nowlis’s findings with respect to the four surveys he
conducted were as follows:
a. For the 2018 Point of Sale Survey, net confusion was
20.0% (54.4% - 34.4%).
b. For the 2019 Point of Sale Survey, net confusion was
17.5% (41.7% - 24.2%).
c. For the 2018 Post Sale Survey, net confusion was 29.1%
(70.4% - 41.3%).
d. For the 2019 Post Sale Survey, net confusion was 31.0%
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(67.0% - 36.0%).
Pls.’ Ex. 22, Expert Report of Stephen M. Nowlis ¶ 7.
Isaacson’s findings with respect to the one survey he
conducted were as follows:
16. Across Questions 1, 4, and 7, which measured confusion
as to source and confusion as to connection or
affiliation, 36.7% of respondents shown the test
figurines provided a response referencing Lego,
compared with 38.5% of those shown the control
figurines. The net percentage, which is calculated as
the test measure minus the control measure, is -1.8%
(negative 1.8%). The negative net measure means that,
compared with those shown the test figurines, a
numerically greater percentage of respondents shown the
control figurines answered that the figurines were made
by Lego or by a company connected or affiliated with
Lego.
17. Across those same questions, 48.2% of respondents shown
the test figurines, and 42.5% of respondents shown the
control figurines, provided a response that referenced
a toy company other than Lego, including responses that
mentioned either Zuru or other toy manufacturers.
Def.’s Ex. 6, Expert Report of Bruce Isaacson, Part 1 (ECF No.
239-6) ¶¶ 16-17 (footnotes omitted). Isaacson concluded that
“[b]ased on the findings from my survey, I conclude that the
Lego Measured Form, which is the trade dress measured in the
survey, is not likely to cause relevant consumers to confuse the
Zuru Max Build figurines measured in the survey with Lego.” Id.
¶ 18.
Ezell’s assignment was
to design and conduct . . . a survey to address the issue
of likelihood of post-sale confusion with respect to the
Zuru’s MAX figures. Specifically, I was engaged to
replicate a survey designed by Dr. Stephen Nowlis, his 2019
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Post Sale Survey design (“Nowlis Survey”), remedying its
flawed control cell stimuli and adjusting the presentation
of the test cell stimuli.
Def.’s Ex. 78, Rebuttal Report of Matthew G. Ezell ¶ 2. Ezell
concluded:
Whereas the Nowlis Survey with its flawed control yielded
31% purported likelihood of confusion, the results of my
replication survey evidence that, on a net basis after
adjusting the survey results based upon a proper control
cell, 7.8% of consumers of toy figures are likely to be
confused as to the source, business affiliation or business
connection of, or permission or approval of Zuru’s MAX
figures.
Id. ¶ 3. “This level of confusion supports a finding of no
likely confusion as it is below the threshold typically relied
on by courts.” Id. (footnote omitted).
There are four areas where the experts offered by LEGO and
Zuru disagree about the ways in which their surveys were
conducted. The first three areas do not have an impact on the
admissibility of their opinions.
As to the first area of disagreement, “[i]n any survey,
including a likelihood of confusion survey, the universe of
respondents who complete the survey is one of the most important
and fundamental aspects of research design.” Def.’s Ex. 76,
Rebuttal Report of Bruce Isaacson ¶ 32; see also Pls.’ Ex. 22,
Ex. B, Rebuttal Report of Stephen M. Nowlis (ECF No. 243-23)
¶ 10 (footnotes omitted) (“The selection of a proper survey
universe/population is critical to conducting a proper
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survey. For a test of forward confusion, the proper universe
consists of potential purchasers of products or services sold by
the junior user (Zuru).”).
Isaacson contends that the survey universe constructed by
Nowlis included respondents who are not relevant to this case.
He states:
Dr. Nowlis qualified a universe of respondents that is
overinclusive. Respondents were qualified as purchasing
“toy figures,” which include many toys not relevant to this
matter, including toys not likely to be purchased for
children. In other respects, the universe is
underinclusive, because two Nowlis Surveys qualified
respondents as purchasing the toys only in either a
physical retail environment (the 2018 Point of Sale Survey)
or online (the 2019 Point of Sale Survey), even though
these toys were sold both at physical retail and online,
and other Zuru Max Build More toys currently are sold both
at physical retail and online.
Def.’s Ex. 76, Rebuttal Report of Bruce Isaacson ¶ 17(i). Nowlis
is equally critical of the survey universe used by Isaacson. He
maintains that Isaacson did not focus on potential purchasers of
the MAX Figures. He states:
My survey population thus focused on consumers in the
market for “toy figures,” while Dr. Isaacson’s survey
focused on consumers in the market for “construction toys,
building sets, figurines or minifigures.” As Zuru’s MAX
Build More package clearly describes its product as “15 MAX
FIGURES,” (See Figure 1 below, underlining added), the
correct survey population is in fact consumers who are in
the market for “toy figures,” which is how I defined my
survey population in my surveys. On the other hand, Zuru’s
MAX Build More figures are not described on its packaging
as either “construction toys,” “building sets,”
“figurines,” or “minifigures.” As a result, it is clear
that my survey focused on the type of product sold by the
junior user (toy figures), whereas Dr. Isaacson’s survey
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did not.
Pls.’ Ex. 22, Ex. B, Rebuttal Report of Stephen M. Nowlis ¶ 12.
Nowlis and Isaacson each give reasonable explanations for
why they constructed their survey universe as they did, and
these explanations appear to be based on their knowledge and
experience. Thus, there is no issue here as to the
inadmissibility of either of their opinions on this basis.
Rather, the points raised would go to the weight the finder of
fact would place on their opinions.
As to the second area of disagreement, Nowlis contends that
Isaacson failed to approximate marketplace conditions in a
number of ways. Citing a treatise, he asserts that “[i]t is
axiomatic that ‘the closer the survey context comes to
marketplace conditions, the greater the evidentiary weight it
has.’” Id. ¶ 28 (footnote omitted). He asserts that “Isaacson
did not allow survey respondents to see the back of the Zuru MAX
Build More package. This is clearly a mistake, because in the
actual marketplace, consumers are able to see the back of the
package (and thus, the full package).” Id. ¶ 29. He also asserts
that Isaacson’s approach was flawed because
Isaacson allowed respondents to take his survey on a
smartphone. In fact, over half (53.6%) of his respondents
took his survey when using a smartphone. This is also
highly improper, because the images that respondents could
see (the front of the box and closeups of the figures) in
Dr. Isaacson’s survey would have been small and potentially
very difficult to see on a smartphone.
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Id. ¶ 30 (footnote omitted). (Nowlis also asserts that the
quality of the pictures shown to the respondents was “very
poor,” id. ¶ 31, but that is not self-evident from the images
included in his report.) To the extent that Nowlis’s criticism
is valid, it is not a basis for finding that Isaacson’s opinion
is inadmissible. Rather, the points raised would go to the
weight the finder of fact would place on his opinion.
As to the third area of disagreement, Isaacson asserts that
“the leading nature of [Nowlis’s] questions would tend to raise
the survey’s measures, by making it more likely that respondents
would provide a single answer consisting of the first response
that comes to mind, which was likely Lego.” Def.’s Ex. 76,
Rebuttal Report of Bruce Isaacson ¶ 71. Nowlis gives a detailed
explanation for the reasons for structuring his survey as he
did, and it appears he did so based on his knowledge and
experience. Thus, to the extent that Isaacson’s criticism is
valid, it is not a basis for finding that Nowlis’s opinion is
inadmissible. Rather, the points raised would go to the weight
the finder of fact would place on his opinion.
The fourth area of disagreement is whether the control
figurines used by each expert in his survey or surveys was
valid. Isaacson contends that “[t]he control figurines in the
Nowlis Surveys were altered well beyond the elements disputed in
this matter, making them invalid controls.” Def.’s Ex. 76,
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Rebuttal Report of Bruce Isaacson Part III. Isaacson explains
that “a control should be similar to the corresponding test
item, except that the control should remove all disputed
elements from the test item. The controls in the Nowlis Surveys
are invalid because they do not follow this principle.” Id. ¶
82.
Isaacson then quotes the description of the Asserted
Trademark in the ‘968 Registration. See id. ¶ 83. Referring to
that description, he states, “[a] valid control should change
only these elements. However, in the Nowlis Surveys, the control
images are substantially altered from the test images, and some
of the alterations significantly change elements that are not
related to the claimed trade dress.” Id. ¶ 84 (emphasis added).
Isaacson then summarizes what he sees as the flaws in the
control figurines used by Nowlis, as follows:
85. The Nowlis Report displays the control images in that
report’s Figures 3, 4, 7, 8, 10, 12, 14, and 16.
Comparing the control images to the test images
indicates that the control figurines differ from the
test figurines in ways that are not related to the
claimed trade dress disputed in this matter, including
the following:
i. The figurines in the control images have very
large heads that are oversized, and also
appear top-heavy or likely to make the
figurine topple over.
ii. The figurines in the control images have
rounded eyes, rather than squareshaped eyes.
iii. The figurines in the control images have
different expressions on their faces, which
are much friendlier-looking than the
expressions on the test figurines.
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iv. The figurines in the control images have
articulated elbows and knees, rather than
straight elbows and knees, with much thinner
legs.
v. The figurines in the control images have
thinner feet that do not appear to have
sufficient size to fit stud-shaped holes that
connect to a brick.
vi. The figurines in the control images have
fingers that are longer than their thumbs,
while the test figurines have hands that are
symmetrical and u-shaped.
Id. ¶ 85 (emphasis added). In addition, he states that “changes
were made to the control package that are also unrelated to the
disputed claimed trade dress.” Id. ¶ 86 (emphasis added).
Isaacson also conducted his own survey that measured the
extent to which there was a likelihood of confusion between
Second Generation MAX Figures and LEGO Minifigures at the point
of sale. In his report, Isaacson states that his “control
figurines were altered to modify elements from the test
figurines that Lego has asserted are similar to elements of the
Lego figurine shown and described in [the ‘968 Registration].”
Def.’s Ex. 6, Expert Report of Bruce Isaacson, Part 1 ¶ 8.
Isaacson explains:
10. My survey tested control versions of the Zuru Max Build
More figurines that were modified to remove or alter
features or product forms that are disputed as allegedly
similar to the Lego Measured Form. To create the control
figurines, staff at my firm, working under my
supervision, made the following alterations:
i. The ’968 registration describes figurines with
heads and necks that are cylindrical in shape. The
control figurines have heads that are angular in
shape, rather than cylindrical. The control
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figurines’ heads are larger than the test
figurines’ heads to emphasize the angular head
shape.
ii. The ’968 registration describes figurines with “a
trapezoidal torso of uniform thickness, with flat
sides and a flat back.” The control figurines have
torsos that taper in from the shoulders toward the
waist, and have angled or rounded sides.
iii. The ’968 registration describes figurines with
arms that “are mounted slightly below the upper
surface of the torso.” The control figurines have
arms attached either at the top of the torso, or
slightly above the torso, and the arms are longer
than those of the test figurines.
iv. The ’968 registration describes figurines with
legs “which bulge frontwards at the top and are
otherwise rectangular with uniform thickness, on
top of flat square feet.” The control figurines
have tapered legs that are narrower toward the
waist and wider toward the feet, and have rounded
feet.
v. Lego figurines are described as having a yellow
cylindrical head. The control figurines have heads
that are altered to be more angular than Lego’s
cylindrical figurine head. Also, the color of the
heads on the control figurines is changed to gray.
Id. ¶ 10 (footnote omitted). The results of these “alterations”
are shown in Figure 3 in Isaacson’s report. See id. ¶ 12. The
results of the alterations made by Nowlis in developing his
control images are shown in Figure 1 in Isaacson’s rebuttal
report. Def.’s Ex. 76, Rebuttal Report of Bruce Isaacson at 6-
11.
Isaacson’s report makes it clear that when he was designing
his control figurines, he did not take into account the
requirement that the court consider the overall impression
created by the Asserted Trademark when evaluating the similarity
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of marks. As set forth in Brennan’s, “[e]ach mark must be
compared against the other as a whole; juxtaposing fragments of
each mark does not aid in deciding whether the compared marks
are confusingly similar.” 360 F.3d at 133. See also Paco Rabanne
Parfums, S.A. v. Norco Enters., Inc., 680 F.2d at 893. However,
developing control figurines that would enable the court to only
juxtapose fragments of the marks being compared is what Isaacson
has done. This fact renders the control figurines used by
Isaacson invalid.
Zuru expert Matthew Ezell conducted a survey that measured
the extent to which there was a likelihood of confusion between
Second Generation MAX Figures and LEGO Minifigures post sale.
Ezell’s report reflects that he used the same methodology that
was used by Isaacson to develop control figurines. He states:
In the control cell, survey respondents were shown the same
images as the test cell but without the trade dress
features that LEGO claims in its trademark registrations
numbers 4,903,968 and 4,520,327. Specifically, the control
cell toy images were modified to transform or remove the
following features to the extent present in Zuru’s MAX toy:
“a trapezoidal torso of uniform thickness” with “flat
sides,” “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...square
feet” (Reg. No. 4,903,968); and “a cylindrical yellow toy
figure head, on top of a yellow...neck” (Reg. No.
4,520,327). See images below or Appendix D page 115 for a
larger view.
Def.’s Ex. 78, Rebuttal Report of Matthew G. Ezell ¶ 21. Ezell
lists as modifications made in creating the control figurines
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the following: “[d]esaturated color of bullet-shaped head to
remove any yellow tint, resulting in a grayish color[;] [y]ellow
neck not present[;] [f]urther tapered torso from shoulder to
waist and emphasized curves of torso side[;] [a]rms mounted at
or above upper surface of the torso[;] [t]orso mounted on
rectangular plate . . . [n]ot visible in images shown[;]
[t]apered legs from waist (narrower) to feet (wider)[;] [w]idth
of D-shaped feet increased; flat feet needed for figure to
stand.” Id. at 9.
As did Isaacson, Ezell used control figurines that would
enable the court to only juxtapose fragments of the marks being
compared rather than the overall impression, as is required.
Consequently, the control figurines used by Ezell are invalid.
As discussed in Part III.A.2.b, Federal Rule of Evidence
702 “establishes a standard of evidentiary reliability . . .
requir[ing] a valid connection to the pertinent inquiry as a
precondition to admissibility . . . [and] a reliable basis in
the knowledge and experience of the relevant discipline.”
Kumho
Tire Co., Ltd., 526 U.S. at 149 (internal quotations and
citations omitted). “[W]hen an expert opinion is based on data,
a methodology, or studies that are simply inadequate to support
the conclusions reached, Daubert and Rule 702 mandate the
exclusion of that unreliable opinion testimony.” Amorgianos, 303
F.3d at 266. Because the methodology used by Isaacson and Ezell
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to develop control figurines is invalid, the foundation for
their opinions on net confusion is not reliable and those
opinions cannot be considered.
On the other hand, LEGO expert Nowlis has taken into
account the overall impression created by the Asserted Trademark
and designed control figurines that change the element that is
disputed here, i.e. the overall impression created by the mark.
Consequently, Nowlis’s survey evidence is admissible.
Therefore, Zuru cannot rely on the expert evidence
proffered by Isaacson and Ezell to create a genuine issue with
respect to the question of whether there is consumer survey
evidence showing that there is no likelihood of confusion as to
source, but LEGO can rely on Nowlis’s consumer surveys as
evidence of a likelihood of confusion as to source. Because what
is at issue then is LEGO’s motion for summary judgment, the
court must assess the record in the light most favorable to Zuru
and drawing all reasonable inferences in its favor. See
Weinstock, 224 F.3d at 41. While Nowlis’s opinion is admissible,
Zuru has proffered evidence that the universe of survey
respondents constructed by Nowlis included respondents who are
not relevant to this case and evidence that the nature of the
questions used by Nowlis skewed the results of his surveys. A
reasonable jury could credit these criticisms of the surveys
done by Nowlis and conclude that it will place no weight on
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Nowlis’s conclusion that his surveys show a likelihood of
confusion as to source. Therefore, the court does not consider
Nowlis’s consumer survey evidence in analyzing whether this
factor supports a conclusion that there is a likelihood of
confusion.
Based on the foregoing, all that should be considered at
the summary judgment stage with respect to this factor is the
very limited evidence of actual confusion. Thus this factor
provides very limited support to the conclusion that there is a
likelihood of confusion, and it should be not be given material
weight.
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) (internal quotation marks
and citation omitted). “[A]ctual or constructive knowledge may
signal bad faith.” Mobil Oil Corp., 818 F.2d at 259 (emphasis in
original). “Bad faith can be found where prior knowledge of the
senior user’s mark or trade dress is accompanied by similarities
so strong that it seems plain that deliberate copying has
occurred.” U.S. Polo Ass’n, Inc. v. PRL USA Holdings, Inc., 800
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F. Supp. 2d 515, 536 (S.D.N.Y. 2011), aff’d, 511 Fed. App’x 81
(2d Cir. 2013).
As discussed in Part III.A.2.a, direct evidence shows that
there is no genuine issue as to the fact that Zuru actually
copied the Minifigure figurine. Zuru admits that it had
knowledge of the Asserted Copyrights and Asserted Trademark when
it designed the MAX products, and further admits that it had
knowledge of the Minifigure figurine at the time it designed the
MAX products, including the MAX Figures. In addition, Zuru’s
Chief Operations Officer Mowbray admits that in its Private
Brand Proposal to Walmart in March 2017, Zuru was “clearly using
[LEGO Minifigures] as placeholders.” Pls.’ Ex. 10, Anna Jane
Mowbray Dep. Tr. Vol. 2, June 9, 2021 at 332:11-12. Also,
documents in Zuru’s design file compare the MAX Figures to LEGO
Minifigures. See Pls.’ Ex. 19, Dep. Ex. 257.
LEGO states that “ZURU clearly knew that designing the
Infringing MAX Figurines could cause confusion which is why
there were purportedly conversations during the design stage
about needing to be ‘further away from, for example, LEGO’ and
efforts to look ‘more different than LEGO.’ Ex. 13 (Chan Dep.)
at 223; 274–75.” Unredacted LEGO Mot. Mem. at 53. Zuru maintains
that Chan’s testimony “that Zuru wanted to make its figurines
‘more different’ and ‘further away’ from the minifigure” shows
that Zuru was acting in good faith. Zuru Mot. Reply at 21.
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However, Chan’s deposition testimony reflects that at the point
in time to which she was referring, Zuru had been put on notice
that it could not sell the First Generation MAX Figures because
“the Minifigure figurine is substantially similar in overall
impression to the” First Generation MAX Figures. Ruling on Mot.
for Prelim. Inj., LEGO A/S v. ZURU Inc., No. 3:18-CV-2045(AWT),
2019 WL 4643718 at *8 (D. Conn. July 8, 2019). See Pls.’ Ex. 13,
Coco Chan Dep. Tr. Vol. 2, Aug. 31, 2021 at 274:7-12 (“So we are
receiving the information that we cannot sell the first
generation. So we are looking at different options and what we
can do to get even further away from the first generation. And
then to see how we can be – like, look more different than
LEGO.”). But even though Zuru had been put on notice that its
product was legally required to have a different overall
impression, it continued to focus on making minor changes to
discreet parts of the MAX Figures. See id. at 274:14-17 (“Like
we experiment different heads, different body shape, different
arm shape, different leg shape, different height of the
character.”)
Zuru argues that LEGO “admits there was nothing wrong with
Zuru ‘looking at’ the minifigure when designing its figurines,
and that, in fact, there is no other way for a competitor to
design a product that is ‘completely compatible’ with Lego.”
Unredacted Zuru Mot. Mem. at 57. However, the evidence submitted
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by LEGO shows that Zuru did not simply look at the Minifigure
figurine, but looked at it and then developed a product that has
similarities so strong that they support the conclusion that
deliberate copying occurred.
Zuru also argues that it is
undisputed that Zuru did not incorporate the signature
“yellow head” of the minifigure (SOF 57), that Zuru changed
all the “essential characteristics” of the minifigure (SOF
53), and that Zuru did not copy Lego branding in any way
(and instead added “Max” branding to the back of its
second-generation figurine) (SOF 58)
id., and this shows that it did not act in bad faith. However,
as LEGO points out, it is immaterial that Zuru did not
incorporate a yellow head because the Asserted Trademark “covers
the three-dimensional configuration of the Minifigure figurine,
and does not claim any color. See Pls.’ Ex 7. Further, the MAX
branding on the back of the Redesigned Figurines did little to
mitigate any potential for confusion, especially where such
branding is not visible at the point of sale.” LEGO Opp. Mem. at
56-57 (footnote omitted).
Finally, Zuru argues that LEGO expert Knight
disavowed [her prior opinion] and testified that she “does
not know what their intention was,” and that “[i]t seems
possible to me” that Zuru’s actual intent was to “come as
close to the Minifigure as it could without infringing on
Lego’s rights”—which is the opposite of an intent to
infringe Lego’s trade dress by causing confusion. (SOF 59.)
Unredacted Zuru Mot. Mem. at 57. The prior opinion to which Zuru
refers is Knight’s opinion that “the only reasonable conclusion
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is that ZURU intentionally copied the Minifigure figurine when
designing the ZURU Figurines.” Pls.’ Ex. 33, Ex. A, Expert
Report of Elizabeth B. Knight ¶ 10(c). The court agrees with
LEGO that Zuru’s argument “mischaracterizes the cited
testimony.” Redacted Pls.’ Local Rule 56(a)2 Statement in Opp’n
to Def.’s Mot. for Summ. J. Resp. to ¶ 59. Knight never
disavowed her opinion that the only reasonable conclusion is
that Zuru intentionally copied the Minifigure figurine when
designing the MAX Figures. During her deposition, she was asked
whether it was her opinion that Zuru “wanted to cause confusion
in the marketplace between its figurines and LEGO’s figurines,”
and she responded, “I don’t know what their intention was.”
Def.’s Ex. 43, Elizabeth Knight Dep. Tr. Vol. 1, Feb. 3, 2022 at
168:16-18, 21-22. She was asked, “you say a number of times that
ZURU intentionally copied the Minifigure, correct?” and her
response was, “[i]t appears that they did.” Id. at 168:24-25,
169:2-3. When Knight was asked whether it was her opinion that
Zuru “wanted to come as close to the Minifigure as it could
without infringing on LEGO’s rights,” she responded, “[i]t seems
possible to me.” Id. at 225:13-16. Thus, Knight never disavowed
her opinion that the only reasonable conclusion is that Zuru
intentionally copied the Minifigure figurine when designing the
MAX Figures.
Based on the foregoing, there is no genuine issue as to
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this factor, and it supports the conclusion that there is a
likelihood of confusion.
g. Quality of the Defendant’s Product
This factor “is primarily concerned with whether the senior
user’s reputation could be jeopardized by virtue of the fact
that the junior user’s product is of inferior quality.” Sports
Auth., Inc., 89 F.3d at 965 (quoting Arrow Fastener Co. v.
Stanley Works, 59 F.3d 384, 398 (2d Cir. 1995)). “Generally,
quality is weighed as a factor when there is an allegation that
a low quality product is taking unfair advantage of the public
good will earned by a well-established high quality product.”
Gruner + Jahr USA Publ’g v. Meredith Corp., 991 F.2d 1072, 1079
(2d Cir. 1993).
LEGO and Zuru both produce evidence with respect to this
factor. LEGO submits a quality inspection report for a batch of
MAX Figures that shows there were issues with, inter alia,
clutch and dislocation. See Pls.’ Ex. 27 (ECF No. 247-10). But,
as Zuru points out, LEGO does not provide any evidence that the
batch that was being tested was ever released or sold. Also,
Zuru contends that “this document actually shows Zuru’s
commitment to quality, by conducting the test and indicating the
affected batch should be put on hold.” Unredacted Def.’s Local
Rule 56(a)2 Statement of Facts in Opp’n to Pls.’ Mot. for Summ.
J. (ECF No. 267-1) Resp. to ¶ 52.
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LEGO submits the opinion of its expert Knight that “[t]he
ZURU Figurines have inferior quality when compared to the
Minifigure figurine.” Pls.’ Ex. 33, Ex. A, Expert Report of
Elizabeth B. Knight ¶ 81. In addition, LEGO submits the
following testimony of David Buxbaum, LEGO’s vice president of
Global Amazon Marketing and Commerce: “You can just tell that
the clutch power on [the MAX Figure] is . . . not up to the what
we would call our quality standards.” LEGO Mot. Mem. at 53
(ellipsis in original) (quoting Pls.’ Ex. 16, Tr. of Hr’g on
Mot. for TRO, Dec. 14, 2018 (ECF No. 243-16) at 38:19-21). But
ZURU submits the opinion of its expert Loetz, who states:
I have played with Zuru’s figurines extensively and do not
believe they look or work like a “cheap” toy (i.e., a
poorly constructed or poor quality toy). Instead, I find
them to be of high quality, comparable to the Lego
minifigure (albeit at a lower cost), and that they attach
securely to studded bricks in a seated and standing
position.
Def.’s Ex. 7, Ex. A, Expert Report of Lee Loetz ¶ 131; see also
Def.’s Ex. 75, Rebuttal Report of Lee Loetz ¶ 140 (“I do not
believe the Zuru figurines are poor quality products.”)
LEGO submits evidence in support of its contention that
“[i]n 2019, Walmart Canada was not willing to leave its current
supplier for its house brand construction toys because ZURU
needed to improve the clutch factor for the MAX line.”
Unredacted Pls.’ Local Rule 56(a)1 Statement in Supp. of Their
Mot. for Summ. J. (ECF No. 247) ¶ 53; but see also Pls.’ Ex. 28,
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James Nunziati Dep. Tr., June 16, 2021 (ECF No. 247-11) at
192:23-24 (suggesting that while the Walmart’s Canada team
thought Zuru needed to improve the clutch factor, Walmart’s U.S.
team had “a different opinion of the clutch”). Zuru submits
evidence in support of its contention that “Lego itself admitted
that Zuru has a reputation with retailers for a quality product,
something that differentiates it with knockoffs that enter the
market at a similar time.” Redacted Def.’s Local Rule 56(a)2
Statement of Facts in Opp’n to Pls.’ Mot. for Summ. J. Resp. to
¶ 52 (internal quotation marks omitted); see Def.’s Ex. 36 (ECF
No. 236-9).
Based on the foregoing, there is a genuine issue of
material fact as to this factor.
h. Sophistication of the Buyers
“This final factor recognizes that the likelihood of
confusion between the products at issue depends in part on the
sophistication of the relevant purchasers.” Arrow Fastener Co.,
59 F.3d at 398. “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.
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2005).
There is no genuine issue as to the fact that Zuru’s
“intention with its [MAX] figurines was to target the price-
conscious customers (including parents and their children) who
might not be able to afford, or want to pay for, the high-priced
construction brick and figurine products offered by [LEGO].”
Redacted Def.’s Local Rule 56(a)2 Statement of Facts in Opp’n to
Pls.’ Mot. for Summ. J. ¶ 50 (citation omitted). Nor is there
any genuine issue with respect to the fact that “[t]he price
point for the [Second Generation MAX Figure] 15-Pack was
$12.97.” Id. ¶ 51 (citation omitted).
LEGO expert Knight states:
As I have previously testified, the average observer or
consumer for the products at issue in this case would be an
adult who is buying toys for a child. These adults do not
pay as close attention to the small differences between the
products because they often look very briefly and don’t pay
a lot of attention. In fact[,] ZURU’s expert Richard
Gottlieb agreed with this position.
Pls.’ Ex. 33, Ex. A, Expert Report of Elizabeth B. Knight ¶ 43
(footnote omitted). In making this statement, Knight relies on
the testimony of Richard Gottlieb, who gave expert testimony on
behalf of Zuru at a hearing on the motion for a preliminary
injunction. Gottlieb testified that the products of LEGO and
Zuru were “substantially different,” looking at them “from the
end user standpoint, which is typically a seven or eight year
old child.” Tr. of Prelim. Inj. Hr’g, Vol. 1, Feb. 14, 2019 (ECF
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No. 65) at 153:17-20. But Gottlieb then continued: “It’s hard
for an adult. An adult looks very briefly. They don’t pay a lot
of attention.” Id. at 153:20-22. Knight gave similar testimony
at that hearing. She testified that she “would consider a mom or
a dad who’s the one buying the toys for their children.” Tr. of
Prelim. Inj. Hr’g, Vol. 2, Feb. 15, 2019 (ECF No. 66) at 224:4-
5. Then when she was asked why the overall look and feel was
important, she testified, “I think it's really important,
because 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.” Id.
at 224:9-14 (emphasis added). She was then asked if she agreed
with Gottlieb’s testimony that “it’s hard for an adult or a
parent here to see any of the small differences.” Id. at 224:16-
17. She said that she agreed. See CJ Products LLC v. Snuggly
Plushez LLC, 809 F. Supp. 2d 127, 156 (E.D.N.Y. 2011)
(“Purchasing inexpensive toys for children does not require any
sophistication on the part of the buyer.”); Rubik’s Brand Ltd.,
2021 WL 363704 at *19 (“Both 3x3 puzzle cubes in the instant
case are relatively low priced. . . . Thus, purchasing either
product is not a major expenditure for most consumers. In these
circumstances, there is greater likelihood that a consumer will
assume that the [defendant’s product] is affiliated with the
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Rubik’s brand.”).
Zuru argues that
while Ms. Knight initially testified that consumers of the
parties’ products spend only two or three seconds (an
absurdly short time) making a purchasing decision, she
disavowed that testimony too, and now admits consumers span
a full range of “sophistication” based on how long they
spend making a buying decision, with “a larger group in the
middle.” (Zuru SOF 60.)
Zuru Opp Mem. at 67. Knight’s initial testimony in this case was
at the preliminary injunction hearing. The reference to a
disavowal by Knight relates to her deposition testimony.
However, Knight did not disavow her testimony from the
preliminary injunction hearing during her deposition.
Knight’s answers to questions from counsel for Zuru during
her deposition do not provide a basis for citing to her
testimony as evidence that buyers of the products at issue are
sophisticated. Knight explained that her testimony during her
deposition was based on “[y]ears of developing products and
working with consumer insight, people at companies and doing
focus groups and walk arounds through the stores.” Pls.’ Ex. 39,
Elizabeth Knight Dep. Tr. Vol. 1, Feb. 3, 2022 at 226:8-11. With
respect to buyers, she testified that “I think there’s a full
range. I think some parents are moving fast, they see something
at [$]14.99, that’s what they want to spend on a birthday party,
it’s a construction set and they grab it. Other parents are
taking more time.” Def.’s Ex. 43, Elizabeth Knight Dep. Tr. Vol.
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1, Feb. 3, 2022 at 230:8-12. She testified further that “[a]ll
the people are in the full spectrum, but there’s a larger group
in the middle. . . . I think there’s a range, but a lot of
people move very quickly through stores when shopping.” Id. at
232:5-7, 14-16. When asked, “Can people who move quickly through
stores when shopping still be sophisticated consumers?” she
responded, “If they take the time.” Id. at 232:17-20. She also
testified that “[i]t’s commonly discussed that you had three
seconds to get the attention of a consumer walking down the
aisle.” Pls.’ Ex. 39, Elizabeth Knight Dep. Tr. Vol. 1, Feb. 3,
2022 at 226:20-22.
Zuru asserts that
Lego’s own documents show that consumers of toy
construction products pay close attention to what they are
purchasing—and do not blindly grab construction toy
figurines off the shelves in two or three seconds. (Zuru
AMF 8 (showing shoppers watching videos, carefully
considering what product to purchase based on price, and
relying on specific lists of product from their children).)
Zuru Opp. Mem. at 67. However, the internal documents to which
Zuru refers, Defendant’s Exhibits 97 to 100, are, as LEGO
explains, “emails containing anecdotal stories of ‘merchandiser
success[es]’ wherein employees of certain stores engage with
consumers regarding their purchasing decision,” Unredacted LEGO
Mot. Reply at 43 (alteration in original). Thus they are not
indicative of the ordinary purchaser. Nor is Zuru’s description
of what those documents “show” supported by the documents
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themselves.
Zuru also cites to paragraphs 92, 115, and 139 of the
rebuttal report of Zuru expert Loetz. In paragraph 92, Loetz
simply states: “I do not believe Ms. Knight is giving consumers
enough credit with regard to their ability to distinguish
between products that look and are different.” Def.’s Ex. 75,
Rebuttal Report of Lee Loetz ¶ 92. He makes similar points in
paragraphs 115 and 139. Moreover, unlike Knight, who bases her
opinions on “[y]ears of developing products and working with
consumer insight, people at companies and doing focus groups and
walk arounds through the stores,” Pls.’ Ex. 39, Elizabeth Knight
Dep. Tr. Vol. 1, Feb. 3, 2022 at 226:8-11, Loetz bases his views
on his experience and observations as a consumer, and although
he refers to decades of experience in the toy industry, he does
not identify any experience relevant to this point. See Def.’s
Ex. 75, Rebuttal Report of Lee Loetz ¶ 139.
Based on the foregoing, there is no genuine issue as to
this factor, and it supports the conclusion that there is a
likelihood of confusion.
i. Balancing the Polaroid Factors
As discussed above, the list of Polaroid factors is not
“exclusive,” Merriam-Webster, Inc., 35 F.3d at 70, but no
additional factors have been identified by the parties. As also
noted above, “the analysis of the factors is not a mechanical
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process,” id., and “each 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., 360
F.3d at 130 (internal quotation marks omitted) (quoting Lois
Sportswear, U.S.A., Inc., 799 F.22d at 872).
The fourth Polaroid factor is likelihood that the prior
owner will bridge the gap, and in this case that factor has no
bearing on the question of likelihood of confusion as to the
source of the product.
The seventh factor is the quality of the defendant’s
product and genuine issues of material fact exist as to whether
that factor supports a conclusion that there is a likelihood of
confusion. In deciding LEGO’s motion for summary judgment, the
court must “assess the record in the light most favorable to”
Zuru as the non-movant. Weinstock, 224 F.3d at 41. Therefore,
for purposes of balancing the Polaroid factors at the summary
judgment stage, this factor should be viewed as supporting a
conclusion that there is not a likelihood of confusion.
In the context of this case, the strength of the mark (the
first factor), degree of similarity between the two marks (the
second factor), proximity of the products (third factor), and
the defendant’s bad faith (the sixth factor) weigh particularly
heavily in favor of the conclusion that there is a likelihood of
confusion as to the source of Zuru’s products. Sophistication of
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the buyers (the eighth factor) also weighs in favor of a finding
of likelihood of confusion. Actual confusion (the fifth factor)
would weigh heavily in favor of the conclusion that there is a
likelihood of confusion if Zuru had not produced evidence to
create genuine issues of material fact with respect to Nowlis’s
opinions. But in any event that factor also weighs in favor of a
finding of likelihood of confusion as to the source of Zuru’s
products even though it is not being given material weight.
Finally, the quality of the defendant’s product (the seventh
factor) weighs against a finding of likelihood of confusion as
to the source of Zuru’s products.
Based on the analysis of the Polaroid factors set forth
above, the court concludes that weighing the quality of the
defendant’s product (the seventh factor) against the factors
that show there is a likelihood of confusion does not create a
genuine issue as to the fact that there is a likelihood of
confusion as to the source of Zuru’s products when one considers
the Polaroid factors.
Therefore, LEGO has demonstrated that there is no genuine
issue of material fact with respect to its claim that it owns a
valid protectable mark and Zuru used a similar mark that is
likely to cause consumer confusion as to the source of Zuru’s
MAX Figures. Accordingly, LEGO is entitled to summary judgment
on its claims in Counts II and III for fraudulent infringement
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with respect to the Minifigure figurine and Zuru’s Third and
Fourth Defenses and Counterclaims Counts V and VI (trademark
non-infringement and invalidity), and Zuru’s motion for summary
judgment with respect to Count II is being denied.
C. Claim for Common Law Trademark and Trade Dress
Infringement, Unfair Competition, and Misappropriation
(Count IV)
Although LEGO refers to its common law trademark
infringement claim in a footnote in its memorandum of law, Count
IV is not listed in its motion as one of the claims on which
LEGO is moving for summary judgment. Zuru lists Count IV in its
motion as one of the claims on which it is moving for summary
judgment. Zuru states:
Lego’s unfair competition claims are premised on Lego
having valid copyrights and a valid trademark and/or Zuru
having infringed those asserted rights. Because Lego has no
such valid rights and Zuru did not infringe them if it
does, Lego’s claims for copyright and trademark
infringement fail, and so do Lego’s tagalong claims that
turn on the same allegations.
Zuru Mot. for Summ. J. at 2, ¶ 7.
Because the court has determined that LEGO is entitled to
summary judgment because there are no genuine issues of material
fact with respect to its claim that the Asserted Trademark is
valid and Zuru has infringed on the Asserted Trademark, Zuru’s
motion for summary judgment with respect to Count IV is being
denied.
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D. Claim for Violation of CUTPA (Count VII)
Both Zuru and LEGO move for summary judgment on the CUTPA
claim. Zuru states in its motion that “Lego's unfair competition
claims are premised on Lego having valid copyrights and a valid
trademark and/or Zuru having infringed those asserted rights.”
Zuru Mot. for Summ. J. at 2, ¶ 7. It contends that “Lego has no
such valid rights and Zuru did not infringe them if it does,
Lego’s claims for copyright and trademark infringement fail.”
Id.
The court has determined that LEGO is entitled to summary
judgment because there are no genuine issues of material fact
with respect to its claim that the Asserted Trademark is valid
and Zuru has infringed on the Asserted Trademark, so Zuru’s
motion for summary judgment with respect to Count VII is being
denied.
LEGO states that it “is entitled to judgment as a matter of
law on its claims for trademark infringement (Counts II and III)
and ZURU’s non-infringement defense/counterclaim (Answer, Third
Affirmative Defense; Counterclaim, Count V).” LEGO Mot. Mem. at
54-55. LEGO includes with that statement the following footnote:
The LEGO Group is entitled to Summary Judgment on its
Connecticut Unfair Trade Practices Act claim . . . for the
same reason. See Pfizer, Inc. v. Miles, Inc., 868 F. Supp.
437, 442 (D. Conn. 1994) (“A violation of the Lanham Act is
a per se violation of CUTPA . . . [t]o the extent
defendants’ actions violated the Lanham Act, . . . they
should be held automatically to violate CUTPA.”) (internal
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quotation and citation omitted).
Id. at 55, n.24.
As referenced in Part II, “[t]he moving party bears the
initial burden of ‘informing the district court of the basis for
its motion’ and identifying those portions of the record that it
‘believes demonstrate the absence of [a] genuine issue of
material fact.’” United States v. Fireman’s Fund Ins. Co., No.
99 CIV. 2622 (BSJ), 2001 WL 88226, at *2 (S.D.N.Y. Jan. 31,
2001) (quoting Celotex Corp., 477 U.S. at 323); see also CILP
Associates, L.P. v. PriceWaterhouse Coopers LLP, 735 F.3d 114,
123 (2d Cir. 2013) (internal quotation marks omitted)
(alteration in original) (“The moving party bears the initial
burden of showing that there [is] no genuine dispute as to a
material fact.”). “If the moving party meets its burden, the
burden then shifts to the non-moving party to ‘demonstrate to
the court the existence of a genuine issue of material fact.’”
Fireman’s Fund Ins. Co., 2001 WL 88226, at *2 (quoting Lendiono
v. Trans Union Credit Info. Co., 970 F.2d 1110, 1112 (2d Cir.
1992)).
A material fact is one that would “affect the outcome of
the suit under the governing law.” Anderson, 477 U.S. at 248.
“[T]he materiality determination rests on the substantive law,
[and] it is the substantive law’s identification of which facts
are critical and which facts are irrelevant that governs.” Id.
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Here, LEGO does not discuss the substantive law, i.e. what
elements a plaintiff must prove in order to prevail on a CUTPA
claim. Nor does it identify the portions of the record it
believes demonstrates the absence of a genuine issue of material
fact with respect to each of the elements of a CUTPA claim. It
merely cites Pfizer, Inc. v. Miles, Inc., 868 F. Supp. 437
(1994) for the proposition that
[a] violation of the Lanham Act is a per se violation of
CUTPA, Conn. Gen. Stat. § 42–110b. “To the extent
defendants’ actions violated the Lanham Act, . . . they
should be held automatically to violate CUTPA.” Dial Corp.
v. Manghnani Inv. Corp., 659 F. Supp. 1230, 1239 (D. Conn.
1987).
Id. at 442. Neither Pfizer nor Dial Corp. cite to any precedent
for the general proposition if a court grants summary judgment
in favor of a plaintiff on a Lanham Act claim, the court should
automatically grant summary judgment on an accompanying CUTPA
claim.
Based on the foregoing, LEGO has failed to meet its initial
burden at the summary judgment stage, and its motion for summary
judgment on the CUTPA claim is being denied.
E. Equitable Defenses (Fifteenth Defense)
Zuru’s Fifteenth Affirmative Defense (equitable defenses)
is that “LEGO’s claims are barred by the doctrines of waiver,
ratification, acquiescence, laches, unclean hands, and
estoppel.” Zuru, Inc.’s Answer and Countercls. at 16. LEGO moves
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for summary judgment on this affirmative defense in its
entirety.
With respect to the doctrines of waiver, ratification,
acquiescence, and laches, Zuru’s response to an interrogatory
asking for the factual basis for each of its affirmative
defenses did not address any of these defenses. See Pls.’ Ex.
11, Def. Zuru Inc.’s Resp. to Pls.’ Second Set of Interrogs.
(Nos. 8-17) Resp. to Interrogatory 12, at 7-10. In addition,
Zuru now states that it does not intend to pursue these
defenses. See Zuru Opp. Mem. at 69 n.16 (“Zuru does not intend
to pursue its other equitable defenses . . . .”).
With respect to estoppel, Zuru contends that:
Lego is estopped as a matter of law from asserting in this
case, contrary to its representations to Judge Haight in
Best Lock, that the Kre-O and Best Lock figurines are
“infringing,” and when Lego is held to its Best Lock
admissions, its claims in this case against Zuru fail as a
matter of law because the Zuru figurines are more different
from the minifigure than those other non-infringing
figurines.
Zuru Opp. Mem. at 69. Zuru incorporates by reference the
arguments it made in support of its motion to dissolve the
preliminary injunction. See Zuru’s Mem. in Support of Mot. to
Dissolve Prelim. Inj. (ECF No. 251). As already noted in this
ruling, judicial estoppel is not applicable because “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
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Best-Lock.” Lego A/S v. Zuru Inc., 2023 WL 2727552, at *5.
With respect to unclean hands, Zuru contends that its
“unclean-hands defense is supported by all manner of evidence
Zuru has presented relating to Lego’s misconduct concerning the
core disputed issues in this case—the validity of Lego’s
asserted copyrights and trade dress, and Zuru’s alleged
infringement of them.” Zuru Opp. Mem. at 69. As Zuru bases its
unclean hands defense on the arguments it has made with respect
to its copyright and trademark invalidity defenses, LEGO is
entitled to summary judgment on the unclean hands defense for
the same reasons it is entitled to summary judgment on Zuru’s
copyright and trademark invalidity defenses.
Therefore, LEGO has shown it is entitled to summary
judgment with respect to Zuru’s Fifteenth Affirmative Defense.
IV. CONCLUSION
For the reasons set forth above, LEGO’s Motion for Partial
Summary Judgment (ECF No. 245) is hereby GRANTED in part and
DENIED in part. It is being denied with respect to Count VII
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(the CUTPA claim) and being granted in all other respects.
Defendant’s Motion for Summary Judgment (ECF No. 237), filed by
Zuru Inc., is hereby DENIED.
It is so ordered.
Dated this 2nd day of April 2026, at Hartford, Connecticut.
/s/AWT
Alvin W. Thompson
United States District Judge
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