New issues with Lego's Legal Department...

[AndyC]

I am not sure, but wasn't there something about transmitting the copyright for Cuusoo submitted models to TLG? Need to read the EULA egain.

edit: Just looked that up, it's just the production and marketing rights that are transferred to TLG.

Marketing rights would seem to cover selling t-shirts showing the model and probably instructions too.

[Faefrost]

I don't think these actions were related to CuuSoo or his CuuSoo projects. If they had been Paul would have most likely been contacted directly. He would have been the one receiving a C&D. CuuSoo most certainly has his contact info.

[Meatman]

Marketing rights would seem to cover selling t-shirts showing the model and probably instructions too.

One of the shirt's images had absolutely nothing to do with anything he had on Cuusoo.

Paul, I spoke to a cousin on my wife's side who is an attorney and he said that corporations simply cannot push around people for no reason even if it is a bot program and I also showed him this thread and his exact words were "That is absurd"

[Lego Otaku]

Sounds like that lawyer should get in touch with LEGO and make them explain why a non LEGO shirt got pulled.

It is also possible to sue LEGO in USA for defamation of character by claiming his shirt infringed the copyright. Personally I'd settle for answer and apology, and to relist the shirt making sure there is no mention of LEGO anywhere.

[Faefrost]

Honestly, if you know any lawyers or have one in the family, A simple letter from them demanding an answer of TLG would get far more response then all the e-mails you could send. If I am correct, and most of your issues stem from automated tools, then the volume of such activity is such that pretty much any request for clarification, appeal or whatever, that does not come in on a lawyers letterhead will either be ignored, or simply take weeks to get to the top of the pile for you to get even a form response.

[Paul Boratko]

LOL.. I am not contacting an attorney or suing anyone, especially Lego, which is a major part of my life.. I just wanted a simple answer to a simple question about some things that never should have happened...

[Faefrost]

Not saying to sue anyone. Attorney's do actually have a much broader range of tricks. and many of them are only a few $$$. Your Lawyer can simply send a formal legal request for response and clarification. Just a basic letter. Sort of similar to and the opposite of the C&D letters. They send it certified and TLG's staff lawyers MUST respond to it within a reasonable time frame. (normally under 10 days). If you do sell a reasonable volume of plans or t shirts it might be worth throwing a few $$$ at a lawyer to get the clarification. If nothing else it forces one of TLG's actual in house lawyers to look at the case and make a real determination.

[MAH4546]

I used to practice trademark law.

I have no idea about the first one and how it violates LEGO's trademark.

The second one absolutely violates LEGO's trademark by having an image of a LEGO set. It can create consumer confusion - the consumer believes the shirt is endorsed, marketed, etc. by LEGO. LEGO is absolutely within it's right to have it taken down, especially because LEGO licenses it's brand to other clothing companies, and this not only dilutes the value of those contracts, but if LEGO doesn't police people who sell clothing featuring it's trademark without permission, how do you think clothing companies that pay a hefty sum for the license feel? If I was LEGO's trademark lawyer, I'd absolutely have the second shirt taken down.

[Paul Boratko]

I used to practice trademark law.

I have no idea about the first one and how it violates LEGO's trademark.

The second one absolutely violates LEGO's trademark by having an image of a LEGO set. It can create consumer confusion - the consumer believes the shirt is endorsed, marketed, etc. by LEGO. LEGO is absolutely within it's right to have it taken down, especially because LEGO licenses it's brand to other clothing companies, and this not only dilutes the value of those contracts, but if LEGO doesn't police people who sell clothing featuring it's trademark without permission, how do you think clothing companies that pay a hefty sum for the license feel? If I was LEGO's trademark lawyer, I'd absolutely have the second shirt taken down.

What trademark..? A picture of their product..?

If this is the case, then how can magazines like Brick Journal sell copies of it's magazine with Lego in it..? Or for that matter how can these new Lego cards be legally sold..?

[AndyC]

I notice that in the blog post announcing the updates to the Cuusoo rules, one of the things they specifically call out is that by submitting a project you are granting exclusive marketing rights to Lego and you cannot then go on to sell items containing the design or things like instructions on how to build a model you've submitted,

[Faefrost]

I notice that in the blog post announcing the updates to the Cuusoo rules, one of the things they specifically call out is that by submitting a project you are granting exclusive marketing rights to Lego and you cannot then go on to sell items containing the design or things like instructions on how to build a model you've submitted,

True, but I still don't think that was Paul's issue. In those cases he would have been contacted by CuuSoo, or his CuuSoo projects would have been taken down. CuuSoo only has standing with regard to their own site. I don't believe they can enforce a copyright claim on E-Bay or another third party.

[Meatman]

I used to practice trademark law.

I have no idea about the first one and how it violates LEGO's trademark.

The second one absolutely violates LEGO's trademark by having an image of a LEGO set. It can create consumer confusion - the consumer believes the shirt is endorsed, marketed, etc. by LEGO. LEGO is absolutely within it's right to have it taken down, especially because LEGO licenses it's brand to other clothing companies, and this not only dilutes the value of those contracts, but if LEGO doesn't police people who sell clothing featuring it's trademark without permission, how do you think clothing companies that pay a hefty sum for the license feel? If I was LEGO's trademark lawyer, I'd absolutely have the second shirt taken down.

How exactly is his model creating consumer confusion and why would anyone believe that it is endorsed or marketed by Lego? He said that it didn't say Lego on it anywhere or had Lego as a tag for it. Since when do you pay license fees for your own creations?

[AndyC]

True, but I still don't think that was Paul's issue. In those cases he would have been contacted by CuuSoo, or his CuuSoo projects would have been taken down. CuuSoo only has standing with regard to their own site. I don't believe they can enforce a copyright claim on E-Bay or another third party.

They absolutely can. The minute you upload your creation to Cuusoo, you've signed away any rights to ever sell instructions or promotional material of that set in any other form whatsoever. Those rights now belong to TLG and it's up to them how they can be used on other sites. Uploading a creation to Cuusoo is not just casually sharing it with the community the way brickshelf or mocpages are, you are entering into a formal contract with Lego on the expectation your design could become a real set and you should not do so if you aren't prepared to accept the terms and conditions of doing so.

[MAH4546]

What trademark..? A picture of their product..?

If this is the case, then how can magazines like Brick Journal sell copies of it's magazine with Lego in it..? Or for that matter how can these new Lego cards be legally sold..?

Yes, a picture of their product. It uses their trademark - the LEGO brick - in a for profit product that can cause a consumer to believe the shirt is officially endorsed by LEGO.

A magazine does not cause consumer confusion. A reasonable person will not believe a magazine is sponsored, endorssed, etc. by LEGO because it has pictures of LEGO. Now if the fan magazine had the word LEGO in its title, that would cause co fusion, and LEGO would obviously stop that.

The cards have a very inconspicuous disclaimer that it's not an official LEGO endorsed product, and in this area, as opposed to fashion, a disclaimer can satisfy the consumer confusion prong in the defandant's favor.

How exactly is his model creating consumer confusion and why would anyone believe that it is endorsed or marketed by Lego? He said that it didn't say Lego on it anywhere or had Lego as a tag for it. Since when do you pay license fees for your own creations?

It doesn't have to say LEGO. It uses a LEGO trademark - the brick - on a piece of merchandise in an area which LEGO normally operates in through licensing. Even if we ignore the consumer confusion part, the fact remains that LEGO receives income from licensing it's image to clothing companies, and when somebody makes a shirt without paying LEGO a license, that eats into the value of those contracts and can make licensees upset.

Edited December 24, 2013 by MAH4546

[Paul Boratko]

I am fairly certian that Lego's legal issue about their brick being a trademark was fought and lost a few years ago...

For all Lego knows this picture could be a render of a model built from some Chinese knock off company...

And here it is... LEGO brick not a trademark, court rules

Edited December 25, 2013 by Paul Boratko

[MAH4546]

I am fairly certian that Lego's legal issues about their brick being a trademark was fought and lost a few years ago...

For all Lego knows this picture could be a render of a model built from some Chinese knock off company...

And HERE it is...

1) That ruling was in Europe. LEGO still holds a valid trademark with the USPTO (which Best Lock is attempting to get cancelled).

2) The trademark does not have to be "a brick." Any model made of LEGO products constitutes use of its trademark.

3) Even if we ignore the entirely valid trademark issue, the selling of this shirt materially interferes with LEGO's contracts with clothing manufacturers and retailers. It's within it's right to protect those contracts.

Edited December 25, 2013 by MAH4546

[Meatman]

They absolutely can. The minute you upload your creation to Cuusoo, you've signed away any rights to ever sell instructions or promotional material of that set in any other form whatsoever. Those rights now belong to TLG and it's up to them how they can be used on other sites. Uploading a creation to Cuusoo is not just casually sharing it with the community the way brickshelf or mocpages are, you are entering into a formal contract with Lego on the expectation your design could become a real set and you should not do so if you aren't prepared to accept the terms and conditions of doing so.

I am not so sure about that. This is their rule from their website and it basically says you are giving them the right to commercialize your project, not 100% own it. It does says that your project will be removed without notice if they learn that you are sell instructions or kits for it. By submitting a project, you are basically allowing Cussoo to promote your project, not giving them ownership of it. There would most definitely have to be some type of legal documents that would require being signed to give full ownership and that probably doesn't happen until your project passes the review. If someone submits a project that someone else did, would that legally give Lego the rights to it? Of course not.

Sheepo's Landrover passed the review and he has been selling instructions for his model for some time now since it hit it the goal, so I don't know how strict that Cuusoo is being as I am sure that they are well aware of his instructions being sold.

When you submit a project on LEGO CUUSOO, you're giving us the rights we need to commercialize your idea. This also means you may not sell anything related to your project independently. You may not sell building instructions, custom kits, or anything related to your project. We will remove projects without notice if we learn you are commercializing content submitted to LEGO CUUSOO. You may share and distribute photos and building instructions free of charge on your own website and online profiles.

So the first step would be to remove the project from Cuusoo, which never happened as Paul said that he deleted them after these other things started happening.

[Stunter]

To me the biggest surprise is that Paul started the first threat on 19-Oct and there is still not clear why LEGO is trying to shut him down.

From my personal point of view Paul has a positive impact on the LEGO community.

To my knowledge we have this Embassy forum to communicate via the ambassadors with LEGO.

Did the ambassadors get any reply from LEGO? Is the ambassador forum only one direction and no answers to negative problems from the LEGO organisation?

Is this a new trend from LEGO who is next?

[Faefrost]

To me the biggest surprise is that Paul started the first threat on 19-Oct and there is still not clear why LEGO is trying to shut him down.

From my personal point of view Paul has a positive impact on the LEGO community.

To my knowledge we have this Embassy forum to communicate via the ambassadors with LEGO.

Did the ambassadors get any reply from LEGO? Is the ambassador forum only one direction and no answers to negative problems from the LEGO organisation?

Is this a new trend from LEGO who is next?

As I said above, the chances are that all of this began via automation. I'd further bet that any C&D'd or takedown requests probably originated with a third party firm contracted by TLG to assist in policing copyright matters on the Internet. Such a firm would have no idea of who Paul is within the Lego community, nor would they likely be doing a costs benefits analysis of what he does. And any ambassadors would likewise have limited if any access to such an outside firm.

It's not a new trend from Lego, it's a new trend on the Internet. Copyright and trademark enforcement services are big business now. Just look at the disaster going on over on YouTube surrounding their mysterious and Draconian "Content ID" system since December.