Overview
LEGO failed to establish that its adaptation of a unique jacket worn in an episode of the lifestyle makeover series Queer Eye constitutes fair use, as Judge Omar Williams of the District of Connecticut decided at the end of September, denying in part LEGO’s motion for summary judgment. The decision offers a variety of insights regarding the management of risks in borrowing elements of a creative work:
- There is no rule-of-thumb or bright-line safe harbor applying fair use if you “change it enough so it looks different”: LEGO made numerous aesthetic and literal changes in its adaptation but could not establish fair use.
- Accurate depiction of an individual may not justify copying a particular work associated with that individual as fair use: the district court here focused on why LEGO needed to copy this jacket in particular in service of its depiction.
- A license to a given work may not include the rights to every protectable work embedded in it: LEGO had acquired a license from Queer Eye but still faced a copyright claim for using a different creator’s work that had appeared on the show.
The plaintiff, James Concannon, designed a unique jacket for Antoni Porowski to wear as a co-host on the Netflix television show Queer Eye. The jacket was black leather with a number of white design elements, such as a yin-yang symbol with smiley faces, a peace sign, painted-on safety pins, and several provocative phrases in a white graffiti-style font. Concannon gave the jacket to Porowski as a gift, with the understanding Porowski would wear the jacket on the Queer Eye show.
A year later, LEGO secured a license to create a Queer Eye construction set, which included the right to the likenesses of Porowski and the other stars of the show. LEGO’s construction set included a minifigure depicting Porowski, including with a black jacket displaying various white painted symbols and white graffiti-style phrases, albeit with some modifications and omissions compared to the original jacket. Concannon claimed LEGO’s Queer Eye set infringed his copyrights in the jacket he designed for Porowski (among other claims).
LEGO moved for summary judgment arguing, among other things, that any copying constituted a fair use under the Copyright Act. 17 USC § 107. The district court walked through the four statutory factors bearing on fair use, finding none weighed in LEGO’s favor.
Factor 1—Purpose and Character of the Use: The district court found that LEGO’s purpose for using Concannon’s design, namely, accurately depicting Porowski and promoting brand collaboration with Queer Eye, was commercial and not transformative, meaning the first fair use factor favored Concannon.
- The district court rejected the argument that “a reproduction of a copyrighted work intended simply to accurately portray that work” could be transformative.
- Even so, the district court doubted that Concannon’s jacket design had become part of Porowski’s likeness such that the copying was reasonably necessary to accurately depict him: Porowski had worn the jacket throughout just one episode of Queer Eye, with brief flashes in other episodes and promotional materials. This was unlike, for example, a tattoo on an NBA player as addressed in Solid Oak Sketches v. 2K Games that had specifically become part of the players’ likeness. It was also unlike iconic clothing styles that merged with an individual’s likeness.
- Nor did the minifigure offer any commentary or respond to the original expression in the original jacket. On the contrary, “Plaintiff and the original expressions of the Porowski Jacket” had been “entirely erased from the Minifigure Jacket.”
Factor 2—Nature of the Copyrighted Work: The district court found the original jacket was “[c]learly . . . creative and not factual” weighing against fair use. Although the jacket had been published, which can weigh in favor of fair use, that carried little weight.
Factor 3—Amount and Substantiality Used: While LEGO argued it copied “only what was necessary” to depict Porowski, the district court found these changes were only those “necessitated by the figurine’s size and [LEGO’s] commercial needs.” What LEGO retained constituted the “heart” of the copyrighted work: its aesthetic, the general design elements, and their specific placement. This factor, therefore, also favored Concannon.
Factor 4—Effect on the Potential Market: LEGO argued that its use of the elements of the Porowski jacket would have limited effect on Concannon’s market, because there was no evidence Concannon would have entered the toy market, and he had not otherwise licensed it. The district court was unconvinced, emphasizing the derivative nature of the minifigure and noting, “[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.”
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The opinion illustrates some of the tension inherent in applying the fair-use factors. Under the first factor, the district court faulted LEGO for “entirely eras[ing]” the original expression in the jacket, such that it served none of the public benefits of fair use. Under the third factor, however, the district court concluded LEGO had copied the “major elements” of the jacket. In essence, the district court faulted LEGO because both the changes it made and the similarities it maintained served commercial ends, and not some justification in line with the purpose of fair use: “simply taking another artist’s work and applying the ‘LEGO DNA’ to it does not qualify as justification.”
The district court also rejected LEGO’s implied license defense to copyright infringement as well as LEGO’s argument that conduct among affiliated corporations cannot constitute a “conspiracy” under the Connecticut Unfair Trade Practice Act. The district court granted, however, LEGO’s motion for summary judgment as to Concannon’s claim for trade dress infringement, because there was insufficient evidence of “real danger” that a purchaser of the LEGO set would believe that Concannon had produced the set. Concannon moved for reconsideration on this issue in early October, specifically arguing that confusion for trade dress purposes could include confusion as to whether the plaintiff sponsored or was otherwise affiliated with the accused use.
The docket does not currently list a trial date.