Concannon v. LEGO Systems, Inc.

District court denies LEGO’s motion for summary judgment on copyright infringement claims against toymaker brought by the creator of unique jacket worn by Queer Eye star, based on LEGO figure of star wearing similar jacket, holding that LEGO did not benefit from an implied license to portray the jacket in LEGO form, and its reproduction of the jacket was not fair use, but grants summary judgment on trade dress claim.

James Concannon is a self-employed artist who created clothing worn by Antoni Porowski, one of the stars of the Netflix show Queer Eye. In 2018, Porowski commissioned Concannon to make a black leather biker-style jacket with hand-painted graffiti-style phrases and images, including the phrase “BLESS THE YOUTH MANIFESTO,” an altered yin-yang with smiling faces, a skull, painted-on safety pins, and the phrase “THYME IS ON MY SIDE” on the back. Concannon obtained copyright protection for the use, combination and arrangement of the expressive elements on the jacket. Porowski wore the jacket while filming four episodes of the show. While the show’s production company, Scout Productions Inc., had previously secured releases to display other clothing Concannon had created for Porowski, it did not do so for the jacket at issue. In 2019, Scout Productions granted toymaker LEGO Systems Inc. and LEGO System A/S a license to use the show’s intellectual property, including the likenesses of its stars, to create a Queer Eye LEGO set. The final set included a LEGO “Minifigure” representing Porowski with its torso painted to look like a black leather jacket with elements including a teardrop shape with a smiley face, a peace sign, a LEGO skull, safety pins, and the phrase “REBUILD THE WORLD” in graffiti-style writing on the back. Concannon sued LEGO for copyright infringement, trade dress infringement and violation of the Connecticut Unfair Trade Practices Act (CUTPA). LEGO moved for summary judgment on all claims.

On the copyright claims, LEGO argued that Concannon granted Porowski an implied nonexclusive license to use the jacket as part of his likeness and that the use of Porowski’s likeness was part of LEGO’s license to make the set. The district court rejected the argument (which had previously been rejected at the motion to dismiss stage), finding that while evidence showed that Concannon gifted the jacket to Porowski knowing it would be worn on Queer Eye and did not object to its depiction on the show, this did not evidence the required “meeting of the minds” between the parties or Concannon’s assent to further copying and distribution of the jacket. 

LEGO also argued that any copying of the jacket on the Porowski Minifigure constituted fair use under the Copyright Act, arguing that the Minifigure jacket was meant to accurately depict Porowski, was a transformative use, did not reproduce every element of the original jacket and did not harm the market for Concannon’s work. The court disagreed, finding that all four of the fair use factors weighed in Concannon’s favor and against a finding of fair use.

On the first factor—the purpose and character of the use, including whether the use is of a commercial nature—the court found that commerciality clearly weighed against LEGO, which identified its purposes as accurately depicting Porowski and promoting LEGO’s brand collaboration with Queer Eye, not some broader public purpose. The court rejected LEGO’s argument that accurately representing Porowski’s likeness was a “factual” and therefore transformative use, holding that the use “appears to be a purely substitutive purpose, and therefore by definition not transformative.” The court also questioned whether the jacket was part of Porowski’s “likeness” at all, noting that Porowski wore it throughout only one episode and in brief flashes in three others. Further questions of fact remained, according to the court, as to the degree to which the Minifigure jacket factually re-created Concannon’s jacket. The court pointed out, for example, that LEGO’s originally proposed design reproduced Concannon’s “THYME IS ON MY SIDE” script exactly, “even including the precise drips of paint,” and that when the wording was changed to the LEGO slogan “REBUILD THE WORLD,” the font and drips remained. 

Regarding the second factor—the nature of the copyrighted work—the court concluded Concannon’s jacket was creative rather than factual, and that its prior publication broadened the scope of fair use only to a small degree because publication does not forfeit the author’s exclusive right to prepare derivative works. “At the end of the day,” the court reasoned, “the Minifigure Jacket is intended to be, and is, a reproduction of the unique, commissioned Porowski Jacket.”

As to the third factor—the amount and substantiality of the portion of the copyrighted work used—LEGO argued that it did not copy Concannon’s jacket in its entirety and anything it did copy was necessary to create a realistic rendering of Porowski. The court disagreed, finding that Concannon’s jacket and the LEGO Minifigure jacket “appear incredibly similar,” that LEGO copied the “major elements” of Concannon’s jacket, and that it was unclear whether re-creating Concannon’s jacket was necessary to accurately depict Porowski.

On the fourth factor—the effect on the potential market for or value of the copyrighted work—the court rejected LEGO’s arguments that Concannon was unlikely to enter the global toy market and would have signed a release anyway, explaining that a copyright owner has sole control over derivative works and it is the defendant’s burden to show no adverse impact on the market for derivatives. The court concluded that “[i]t cannot be that LEGO is free to use any artist’s original works as long as those artists are not likely to enter the toy market and do not mass-produce their products.” Finding that none of the fair use factors favored LEGO, the court denied summary judgment on the copyright claims.

The court reached a different result on Concannon’s trade dress claim, which requires a plaintiff to show that its product design is distinctive, that there is a likelihood of confusion between plaintiff’s and defendant’s product design, and that the product design is not functional. The court found that Concannon’s proffered trade dress—“(1) short, provocative phrases; (2) satirical commentary on punk rock and mainstream pop culture; [and] (3) hand-painted graffiti-style lettering”—had been properly articulated and that Concannon raised triable issues of fact as to whether his trade dress had taken on secondary meaning, given unsolicited media coverage, his success as a small artist, apparent copies of his work online and more than a decade of use. In weighing the Polaroid factors used by the Second Circuit to assess likelihood of confusion, however, the court found that four factors favored LEGO, including the lack of proximity between adult apparel and plastic toys, the absence of any indication that Concannon would enter the toy market, lack of actual confusion, and the sophistication of Concannon’s customers. Although LEGO conceded it deliberately copied the jacket, nothing showed it intended to co-opt Concannon’s consumer base, so the bad faith factor favored Concannon only weakly. The court held as a matter of law there was insufficient evidence that a consumer purchasing the LEGO-branded set might believe Concannon had produced the Minifigure jacket, and granted summary judgment to LEGO on the trade dress claim.

Last, the court denied LEGO summary judgment on the CUTPA claim, rejecting the argument that the CUTPA claim was derivative of the trade dress infringement claim. The court also rejected LEGO’s reliance on the intracorporate conspiracy doctrine—which provides that “wholly intracorporate conduct does not satisfy the plurality requirement necessary to establish an actionable conspiracy claim.” When dealing with a parent company and its wholly owned subsidiary, as here, “‘[a] parent corporation may be liable . . . for the acts of its subsidiary depending on the amount of control the parent corporation exercises over the actions of the subsidiary,’” the court said, pointing out that LEGO had not shown that such control existed and therefore it was not clear that the intracorporate conspiracy doctrine would apply.

Summary prepared by Safia Gray Hussain and Kyle Petersen