from the get-over-it dept
In the earlier days of Techdirt, Lego made multiple appearances as an IP bully. However, its IP bullying ran into some legal headaches as various courts pushed back again and again and again. The company failed, pretty spectacularly, in its quest to argue that no one could make similar, or even interconnecting, Lego bricks. Its patents long expired, and any copyright and trademark rights were much more limited.
For years, the company has relied on the fact that even with the ability of other companies to copy its designs, really only Lego could manufacture the toy bricks with the kind of exact precision that made them work properly. Knock-offs tended to not connect nearly as well. And Lego’s manufacturing was such that beyond the precision in the blocks, it could also make the blocks so cheaply that it was difficult for anyone to undercut them anyway. Finally, Lego’s brand is pretty powerful in its own right, and many people would buy official Lego products as the default anyway, because of the brand association.
All of that makes the recent news of Lego threatening the 3D printing community all the more bizarre. There’s simply no way that 3D printed version of Lego-style bricks are a “threat” in any way. The takedown letter itself, as posted by recipient MyMiniFactory (who initially thought it was spam!), is bizarre. It’s symptomatic of obnoxious IP bullying, in that it was sent to platforms like MyMiniFactory that host 3D printable designs for sale, but, while it lists out designs it says are infringing, it appears not to explain how or why they are infringing. It does list out copyright and trademark rights that the company holds, but does not indicate which ones its complaining about for which designs, leaving it up to MyMiniFactory to determine such things. That, by itself, is a bullying tactic, effectively making it harder for the recipient to judge the merit of the infringement claims, and (most likely) hoping that leads to broader compliance with the request to avoid the hassle and potential legal costs and liability.
Dear myminifactory.com: LEGO A/S, LEGO Juris A/S and LEGO System A/S (collectively but not exclusively “the LEGO Group”) hold exclusive worldwide rights to the LEGO® intellectual property, including but not limited to the famous LEGO word mark, the famous red-square LEGO logo and the Minifigure figurine. These trademarks and copyrights, registered and/or protected under US and international trademark and copyright law, are used to identify, advertise and promote products and activities developed and/or held by the LEGO Group of companies. In addition, LEGO holds exclusive Copyright and Trademark rights to the world-famous LEGO® Minifigure figurine design. The LEGO Minifigure design is protected by United States Copyright registrations VA655104, VA655230. The LEGO Minifigure design, since the first launch in 1978, is protected by copyright laws and enforceable internationally through application of the Berne Convention. I, the undersigned, state UNDER PENALTY OF PERJURY that: 1. I am an agent authorized to act on behalf of the LEGO Group, of certain intellectual property rights; 2. I have a good faith belief that the URLs identified below offer items or contain materials that are not authorized by the the LEGO Group, its agent, or the law, and therefore infringe the IP Owner’s rights; and 3. The information in this notice is accurate. Please act expeditiously to remove the listings identified below:
As NYU’s Michael Weinberg (who used to be General Counsel at Shapeways) explains in great detail, another element of the bullying factor here is that while there may be narrow areas where the infringement claims are correct, the overall point of the bullying appears to be nonsense.
To be specific, it appears that Lego maintains a legitimate copyright on the “mini figure” Lego characters (“minifigs”), and if someone is making such things, in theory, Lego could ask them to stop. The trademark claims also could have some level of legitimacy, but it still sounds like Lego is over-claiming its rights. As Weinberg explains:
If you are using the Lego trademarks to make it appear that your models are coming from the Lego company you are likely infringing on Lego’s trademarks. In contrast, if you are merely using Lego’s trademarks to show that your model is compatible with Lego, you are unlikely to be infringing on that trademark….
It seems that many of the targeted users are not trying to pass their goods off as official Lego goods. Instead, they are using the term “Lego” to indicate that their model is compatible with Lego-style connectors. One could argue about ways to make that more clear – say by using a term like “Compatible with Lego” or “Lego-Compatible” – but it seems unlikely that a consumer looking at at least some of these models would be confused as to their source or origin.
This is, tragically, all too common with trademark claims however — where big brands act as though a trademark gives them the right to stop all non-official uses, even in cases of pointing out compatibility. That’s not how trademark is supposed to work.
Indeed, Lego’s own comments, when questioned about these takedown notices by the press, do not inspire confidence that they have legitimate reasons for sending such notices:
Jonas Søndergård, Global Press Officer, The LEGO Group, Corporate Communications did provide a brief statement. Søndergård explained that while LEGO would not discuss specifics, the recent infringement notices were “to protect the long-term exclusive rights of the LEGO trademarks, copyrights and patents.”
LEGO says that issuing takedown notices and challenges is necessary to ensure that the “LEGO wordmark or IP protected elements” does not erode over time. LEGO’s “Fair Play Policy” describes a number of guidelines on how the company would like to be referred to, and what it deems permissible by enthusiasts. For example, “If the LEGO trademark is used at all, it should always be used as an adjective, not as a noun. For example, say “MODELS BUILT OF LEGO BRICKS”. Never say “MODELS BUILT OF LEGOs”.
Yeah, the thing is, that’s pretty much all nonsense. First off, on copyrights, there is no requirement that you need to protect them in this manner. For trademarks, the only risk is if the company is allowing the marks to become generic, but from all of the evidence that is not the case, and people are using the word “Lego” to accurately portray that their designs are meant to be compatible with Lego-brand blocks. As for Lego’s own guidelines? So what? They are guidelines. They are not legally binding, and as we’ve seen, Lego has a long history of over-claiming its own rights and demanding more of Lego fans than is legally allowed. This appears to be no different.
But, let’s circle around to a much bigger point here as to why this entire enterprise by Lego in issuing takedowns is particularly stupid. As noted up top, Lego is already going to be making its own bricks much better and cheaper than anything that anyone can make with a 3D printer. As Weinberg notes, the only reasons to use 3D printing for Lego-compatible blocks is if you’re trying to do something that Lego doesn’t currently make — and that’s only likely to be happening with people who already buy a ton of legit Lego bricks:
… almost no one would buy a 3D printed lego-style block if an injection molded one existed. Lego is really good at making lego bricks. In a head-to-head matchup, a lego-produced brick is going to be cheaper and better than a 3D printed one by almost any metric.
The only reason to turn to 3D printing is to create a lego-compatible object that does not already exist. If you need something custom or specific that Lego does not make, 3D printing is probably your only option. And if you need a custom lego-compatible block, that is probably because you already have many, many official Lego blocks. You are probably already a Lego superfan.
That means that the 3D printed Lego-compatible market is almost purely complimentary to the official market.
And, as Weinberg notes, this is why MyMiniFactory’s response to Lego is so dead on:
We believe that as a community we can build a positive way forward. We invite you to collaborate with us, to come up with, and share some creative solutions to help build better opportunities for indie designers and brands to work together as a form of co-creation. Much like the way Ravensburger did with the Labyrinth competition, a competition that incentivizes designers to create IP models for their beloved Labyrinth board game. We ask you to help us by commenting below with your best solutions!
In addition, if you’d like to get involed – We know some of you are better with designs than words! – we’ve launched an exciting new “OGEL: Beyond the Brick” competition! You can even win an eLEGOo resin 3D printer!!
If there’s one consistent theme that we’ve had over the years concerning over-enforcement of IP, it’s that there are almost always more productive ways to deal with supposed or alleged “infringement” than by issuing takedowns and legal threats. Collaborating with people who, it seems clear, are likely already Lego superfans who are buying bricks by the barrel and only resorting to 3D printed options when necessary, seems like it would be a hell of a lot more productive than unleashing the lawyers. But, I guess Lego has to Lego.