HA Bricks in Legal Troubles

[JopieK]

I already read it in the Dutch news, but 1000steine Dirk has now also picked up on it:

Toy manufacturer Lego is not prepared to reach a settlement with HA Bricks of entrepreneur Hein Alkema from Westerkwartier over train replicas built with Lego bricks that that company markets. This became apparent on Tuesday during summary proceedings initiated by Lego at the court in The Hague. Lego continues to consider the product an infringement of trademark law and demands that sales stop.

According to Lego's lawyer, "the reputation of the toys of superior quality" is at stake because of the trains. HA Bricks would modify and mutilate building blocks in its sets. "The consumer cannot see whether it is Lego or HA Bricks," the lawyer said. He gave the judge a pebble whose plastic would quickly tear.
Lego wants to maintain full control over its products and therefore does not allow any adjustments or printing. Lead is also said to have been used in Bricks' construction sets. "I can't add nutmeg to the scent at Chanel or have a Rolex chromed because I like it," the lawyer said.

Conflict is about a stone

But according to entrepreneur Alkema, the conflict only revolves around one stone to which a metal bearing can be connected. That would not have been a deterioration, but rather an improvement. 98 percent of the construction kit consists of original Lego bricks, said the lawyer for the Groningen company.
Furthermore, there would be no confusion among consumers, as the boxes contain a disclaimer that the material is from Lego. 'What do you mean inferior quality? Everything can be destroyed,' the counselor said. 'HA Bricks is one of Lego's most loyal ambassadors.'

The judge tried to see whether the parties could reach an agreement together, for example by replacing that stone. The entrepreneur from HA Bricks had offered this before and was willing again.

But Lego's lawyer thinks that is not enough and stands firm: a sales ban.

The judge will make a ruling on May 28. 

The original news article (in Dutch): https://www.rtvnoord.nl/112/1164034/lego-eist-verkoopverbod-voor-enumatilster-treinmodelbouwer
The topic (in German) from Dirk: https://www.1000steine.de/de/gemeinschaft/forum/?entry=1&id=476825&lastid=1#lastid

Personal comments:

The entire cases pivots around a technic brick that they or maybe Bricktracks put bearings in. LEGO though: the Train community is annoying so let's hate them even more by working against some of their favorite model makers?! I don't know if they first tried it 'the friendly way' but I think it is in no one's interest to attack HA Bricks.

[Hod Carrier]

I find it extremely disappointing that a matter such as this has found it's way into the courts and may threaten the future of a trusted retailer. That said, I'm not sure that I completely agree with @JopieK's views on the matter.

I've had a few Technic bricks with bearings inserted bought from a different retailer crack and fail, but as a consumer I understand that this modification is outside of what LEGO expect to happen with their product and over-stresses the part causing such failures to become more likely. I also understand that modifications such as this (or cutting, gluing, painting, etc, etc) voids any warranty that I may have regarding the part with LEGO themselves and, as such, the risk of part failure falls onto me. Also, what I choose to do with LEGO parts as an individual in the privacy of my own home to achieve certain results is my own business and not something that LEGO has any say over.

To me this seems to be a question over reputation. HA Bricks make it clear that these are LEGO parts, including customised and altered items, to differentiate themselves from the clone makers, thereby ensuring that customers can be reassured about the quality of the finished product. Clearly this must be fine as there are other retailers doing the same or similar things, including customising parts (unless we're going to find out about other retailers being pursued through the courts as time progresses). However, by doing this HA Bricks is invoking LEGO's reputation for quality and riding piggyback on it.

It seem to just comes down to the bearing part, which LEGO are worried about failing and the potential for reputational damage as a result. I guess the point that LEGO's lawyers are essentially trying to make is that you can't be invoking LEGO's reputation for quality while at the same time selling a part that has been modified in such a way that would make failure of the part more likely without it having some impact on LEGO themselves. While those of us within the AFOL train community may be aware of the risk of the part failing and give allowances, this may not necessarily be the case in the wider population, hence a concern regarding reputation. I'd feel fairly sure that if the bearing part had been a custom part rather than a modified one, whether printed or molded with the bearing, this would not have caused LEGO the same concerns. As such, I'm not so sure that it's a crusade against the train community but rather just a specific problem that just happens to affect the train community in particular.

All that said, I do hope that an amicable solution can be reached. It does seem from what's been posted that this is something that probably was being discussed before the courts got involved which presumably didn't meet both parties' needs. But I do have to confess that there is a little detail that does worry me. If HA Bricks has already offered to remove the offending part once and this has been turned down, taking the matter to the courts does sound punitive. HA Bricks are not the only retailer selling parts like this and may not be the only ones coming under scrutiny, but maybe there are aspects of European law that make HA Bricks more vulnerable to this kind of action.

Maybe we ought to be going back to LEGO as a community and pointing out the potential for reputational damage as a consequence of bricks cracking in normal usage, as highlighted by @Imanol. Just a thought.

[Dirk1313]

4 hours ago, Hod Carrier said:

I I'd feel fairly sure that if the bearing part had been a custom part rather than a modified one, whether printed or molded with the bearing, this would not have caused LEGO the same concerns. 

@Imanol

The LEGO lawyer has refused HA Bricks offer to no longer sell or include the LEGO bricks with bearings. They want that HA Bricks calls back all the sets sold so far. And the lawyer does not only seem to be concerned about the bearings but also the prints on LEGO bricks (that he claims contain lead?).

So it looks like a crusade against the company as it will certainly bring the company down if they had to fulfill all the requirements from LEGO. That said: the court trial is still on and no decision was made.

[JopieK]

The lawyer made some strange remarks: "I can't add nutmeg to the scent at Chanel or have a Rolex chromed because I like it." I thought Apple was worse than LEGO but, but Apple seems to be fine with e.g. this: https://theluxgroup.us/product/custom-apple-iphone-12-pro-max-512gb-18k-24k-gold-plated/ and custom AirPods: https://www.macrumors.com/2019/11/08/colorware-custom-painted-airpods-pro/.

It is legally called 'upcycling' afaik: https://www.registreermijnmerk.nl/upcycling-binnen-het-merkenrecht/.

"Upcycling is an initiative from the fashion industry in the field of sustainability. Upcycling is the reuse of a product where the product has a higher quality after processing. Upcycling therefore goes further than recycling. While with recycling the product is often destroyed first, with upcycling (part of) the product remains intact, but by adding creativity a different product is created with a higher quality."

So it is a little tricky: if the brand thinks its reputation is being harmed. LEGO could e.g. think: the customers will hate use more of not having decent trains in our current lineups because of HA Bricks it becomes apparent what we lack. But I'm afraid this is a war on virtually every customization party.

[Dirk1313]

I would say the main mistake and topic that LEGO can sue HA Bricks for is how they advertise their sets and what they print on the packaging and instructions. These claims of „100% LEGO bricks“ will give LEGO the leaverage to be at least partly successful with their strategy. But from my point of view asking for customer data and a recall of all sets is far over the top.

 

[ivanlan9]

I agree with @JopieK:  "But I'm afraid this is a war on virtually every customization party."

We already know that they prohibit sales of custom or modified parts on BrickLink, and this is simply the next logical step.

I'm reminded of fan fiction.  Some fandoms, such as Star Trek, allow fan writers lots of room in which to write fan fiction using ST characters, and garner lots of goodwill and kudoes for allowing it.  They do, however, turn around and have come down hard on people who have put together fan videos, and will send the lawyers after them.  (There is a reason there is zero fan fiction about Dr Dolittle [book version, not the awful cinematic hacks].)

Other franchises will send lawyers after the minutest use of a character.  You can't copyright characters, only particular arrangements of words, but you CAN trademark characters in perpetuity.  And such lawyers will send cease & desist letters if they get even a whisper that one of their characters is being used without their approval (which cannot be had).

Also, remember that they used to try to prevent the making of copies of instructions, when all such copying ever did was make them more money.

Maybe that's what they're objecting to:  that HA Bricks is making additional money from Lego bricks that Lego feels should come to them, with not a penny allowed HA Bricks.  I think it's simple greed, and has nothing to do with HA Bricks delivering something to customers something said customers clearly want.

[Space Coyote]

This is kinda reminiscent of how Nintendo can't stand fangames of any kind, and those are almost always labors of love and free to boot. At least in this case the judge seems to be trying to make an informed, nuanced decision and not just folding in favor of the bigger company. I'm curious to see the ruling, as it may set a precedent for the future, one way or the other.

[lego3057]

So they should do the same with BMR, to name one.

[zephyr1934]

There is at least a grain of truth here, someone could say, "this Lego part broke, Lego has a strong satisfaction guarantee and I want my part replaced." But I THINK it is legal to sell broken things (even deliberately broken things) as long as it is clearly stated, be it Lego, Disney, Nintendo, or what not.

Custom printed parts and engraved bricks have been around forever, and with all of the conventions Lego sponsored that gave out engraved bricks, they might have a hard time arguing that the distribution of "altered" bricks has never been tolerated.

That ad claiming "100% Lego parts" is a little over the top though. Perhaps going forward they could address the matter with a delineation in the description and the parts, something like, "275 genuine Lego parts, 35 non-Lego parts." It could even go one step further, make them separate "sets" each with their own sku but they are only packaged and sold as a bundle. As for the past, perhaps they could offer to repair or replace any failed modified Lego brick in their previous sets, perhaps even offering to replace them with an unmodified Lego solution (technic axle and 3rd party train wheels)

 

[Barduck]

Superior quality? Sorry to burst their bubble but the “clone bricks” companies are getting better than the original. I’m pretty sure that almost everyone in this forum had a piece break without using a lot of force on it, I for one have piles of reddish brown 1x4 tiles and dark red plates that break from even looking at them the wrong way. So if they’re so sure about their quality, shouldn’t everyone that ever had a piece break sue them for selling faulty merchandise? I have a lot of “clone bricks” as well because they are 1) cheaper and 2) don’t break from blowing on them yet those clone bricks are seen as a no-go by purist that don’t know anything better

Edited May 19, 2024 by Barduck

[Ropefish]

Honestly it feels like Lego is just trying to throw its weight around it sucks as a fan, just another reminder how corporations are not your friends and they’ll go after their bottom line no matter what… my worry is they’ll start going after all the third party train folk if this sets precedence… 

[M_slug357]

Why HA Bricks in particular though? They seem (to me) to have barely gotten off the ground…

[sporadic]

It might be a lost in translation issue (I have some trouble parsing those articles), but I'm not sure Lego has any real case in terms of the actual product.  At least in the US, once you've sold a thing, the customer can do whatever they like, including modifying it and selling it on.  First sale doctrine applies (though I might be/probably am using the term wrong/wrong term).  The lawyer's example of adding nutmeg to perfume is most definitely legal here.  Maybe Europe is different? 

Where it gets sticky is when you don't clearly state non-affiliation with the original source.  And in that, I can see HA Bricks might have overstepped.  By claiming it to be authentic Lego, without clearly stating that it's been modified without the approval of the Lego group they probably do step into some murky IP rules.

My guess is that, like most initial legal claims, the claims Lego is making are likely overly broad and stronger than the law actually states to try to get HA Bricks to cave quickly.  

[Johnny1360]

I know nothing is really this easy but could they not include the part in question, then sell a custom made yet fully compatible part, separately?

[lego3057]

Or maybe Lego is just jealous about the superior train designs of HABricks (and also the much "superior" prices)  (<:

[JopieK]

8 hours ago, lego3057 said:

Or maybe Lego is just jealous about the superior train designs of HABricks (and also the much "superior" prices)  (<:

They have good reason to be jealous ;)

[BillytheKid]

Lego can win this battle, but at the end they will loose the war.

[Toastie]

On 5/20/2024 at 5:35 PM, M_slug357 said:

Why HA Bricks in particular though? They seem (to me) to have barely gotten off the ground…

That >is< the reason - they simply have no chance, so wipe them out. Also, maybe the lawyer in this case has some fun with it. Is building a certain "reputation". TLG hires these folks on whatever basis ... I simply don't want to know what they are.

It has happened now so often - and mostly the small ones, the smart ones, the startups with brilliant ideas go down the drain. It is simply so shameful.

Well, it is what it is. For me, a very good reason to simply look at TLG as one option among many, many others.

On 5/21/2024 at 6:27 PM, JopieK said:

They have good reason to be jealous

Oh yes, indeed. They have. And never underestimate jealous people, who can't do better.

All the best,
Thorsten

[Berthil]

The trial case was today and the verdict is there, in short:

• HA Bricks has to stop sales within 2 days and has to share all sales data with TLG.
• If HA Bricks does not comply, a fine of EUR 1.000 a day has to be paid. TLG could also demand a fine of EUR 500 euro per sold product.
• HA Bricks has to pay the EUR 16.000 legal fees.

Main points: Printing of bricks and minifigures without permission of TLG. Adding metal bearings to LEGO bricks. Printing and bearings alter the LEGO bricks permanently and are used in combination with the LEGO trademark in products and on the website, this is not permitted. Full verdict (in Dutch) here with English quotes. TLG has done a test purchase of a HA Bricks train to support their case at court.

If I understood correctly the trains are not the only business of HA Bricks, there is also a large Bricklink store.

Edited May 28, 2024 by Berthil

[Murdoch17]

1 hour ago, Berthil said:

The trial case was today and the verdict is there, in short:

• HA Bricks has to stop sales within 2 days and has to share all sales data with TLG.
• If HA Bricks does not comply, a fine of EUR 1.000 a day has to be paid. TLG could also demand a fine of EUR 500 euro per sold product.
• HA Bricks has to pay the EUR 16.000 legal fees.

Main points: Printing of bricks and minifigures without permission of TLG. Adding metal bearings to LEGO bricks. Printing and bearings alter the LEGO bricks permanently and are used in combination with the LEGO trademark in products and on the website, this is not permitted. Full verdict (in Dutch) here with English quotes. TLG has done a test purchase of a HA Bricks train to support their case at court.

If I understood correctly the trains are not the only business of HA Bricks, there is also a large Bricklink store.

If I was any minifig or train customizer shop, I would be worried at this point that I would be next.

Edited May 28, 2024 by Murdoch17

[Vilhelm22]

So our entire hobby is at threat of being shut down now?  Thank you LEGO, I loathe you.

People in my club are saying they will never buy anything direct from LEGO ever again, including buying new sets.  Because LEGO has purchased BrickLink it’s inescapable that way, but they’ll be actively avoiding the company in the future.

If it wasn’t banned on the forum I’d be using some extremely bad language right now.

Edited May 28, 2024 by Vilhelm22

[Phil B]

7 minutes ago, Vilhelm22 said:

So our entire hobby is at threat of being shut down now?  Thank you LEGO, I loathe you.

People in my club are saying they will never buy anything direct from LEGO ever again, including buying new sets.  Because LEGO has purchased BrickLink it’s inescapable that way, but they’ll be actively avoiding the company in the future.

If it wasn’t banned on the forum I’d be using some extremely bad language right now.

BrickOwl is still independent, and not owned by TLG.

 

Now for some food for thought: As a patent and license holder, The LEGO Group needs to actively enforce its intellectual property rights, otherwise it risks losing those rights. I have personally owned registered trademarks before, and I needed to enforce those trademarks otherwise they would be forfeited. It might be that they went for HA Bricks because it was an "easy" case and helped them maintain legal precedent on enforcing their rights, something which is harder to do in a Chinese court (even though they are likely many years into exploring how to enforce their trademarks there). Not saying it is fair to HA Bricks, but just to provide some perspective.

[BrickHat]

1 hour ago, Murdoch17 said:

If I was any minifig or train customizer shop, I would be worried at this point that I would be next.

I was wondering the same thing! I mean there are so many vendors selling printed parts, but also replica stickers and capes and stuff.

One would almost think LEGO is starting a witch-hunt for anything that is related to LEGO but is not theirs

[Jon Reynolds]

So, if HA Bricks had not permanently altered bricks by printing them or by force-fitting bearings to them, would TLG have left them alone?

Jon

[Barduck]

All the more reasons to stop buying genuine LEGO and look at the other brands. In many cases the quality of the off-brands is even better than “the real thing”, they don’t break, they have no color differences and clutch is just as good. Plus they offer things Lego never will. Some even pay you for your Mocs like letbricks. And they don’t complain about altering pieces or printing on parts, they applaud it