Fashion trends may evolve rapidly, but litigation within the fashion industry often proceeds at a comparatively slower pace, frequently requiring years to reach a verdict, settlement, or resolution. One such case, Concannon v. LEGO Systems Inc., No. 3:21-cv-01678 (D. Conn.), filed in 2021, may finally approach resolution this year.
This dispute arises from allegations of copyright infringement brought by multidisciplinary artist and fashion designer James Concannon against Danish toy manufacturer LEGO. At the heart of the case is a black biker jacket, worn by a miniature figure representing Antoni Porowski (Download AntoniPorowski), included in LEGO's "Queer Eye - The Fab 5 Loft" toy set. Launched in October 2021 at a retail price of $99.99, the set is one of LEGO's signature products marketed toward adult collectors.
Concannon contends that the leather jacket, which features his distinctive aesthetic and design elements, is a protected work under copyright law. According to what Concannon stated in the original lawsuit filed against the Danish toy giant in a Connecticut District Court, the designer's creations have been used by the production team of the Netflix series Queer Eye since 2017, with prior authorization and clearance. However, he alleges that the specific jacket depicted in the LEGO set was neither cleared for use nor authorized.
Concannon asserts that the jacket, designed for Porowski in 2018 and subsequently worn in a 2019 episode of the show, was unlawfully replicated by LEGO without his consent. Initially attributing the use in the show to an oversight, the designer ultimately filed suit against LEGO in September 2021, seeking redress for what he claims is unauthorized reproduction of his intellectual property.
Upon being contacted by Concannon's legal counsel, LEGO's attorneys acknowledged that the jacket design in question was derived from Concannon's work. However, they contended that Concannon had gifted the jacket to Antoni Porowski, thereby granting Netflix an "implied license" to use the design as it saw fit, including permitting LEGO to reproduce it in the "Queer Eye - The Fab 5 Loft " set.
A copy of the complaint filed in the U.S. District Court for the District of Connecticut includes side-by-side comparisons of Concannon's original jacket and the LEGO figurine. While some symbols and the slogan on the back of the jacket were altered - albeit retaining the hand-painted, graffiti-style lettering - the "unique placement, coordination, and arrangement of the individual artistic elements," as described by Concannon in the filing, appear strikingly similar. Specific elements, such as the peace sign on the left lapel, remain notably alike.
Yet Concannon registered the artwork embodied in the jacket with the U.S. Copyright Office on November 29, 2021, asserting that the design originated in 2018. By contrast, LEGO began utilizing the design in its product line in September 2021.
Concannon alleges that LEGO has not provided any compensation for its use of the design and further accuses the company of exploiting his intellectual property by producing animated versions of the jacket. Consequently, Concannon seeks damages for what he claims constitutes willful copyright infringement.
In February 2022, Concannon filed an amended complaint, introducing claims of federal trade dress infringement, unfair competition, and a violation of the Connecticut Unfair Trade Practices Act (CUTPA).
In response, LEGO filed a motion for a pre-filing conference, signalling its intent to move for dismissal of Concannon's amended complaint in its entirety. However, in March 2023, the U.S. District Court for the District of Connecticut denied LEGO's motion to dismiss (Download Concannon_Lego_RulingonMotiontoDismiss_March2023). The court's ruling allowed Concannon’s claims - including direct and contributory copyright infringement, trade dress infringement, and unfair competition - to proceed.
At the end of 2024, LEGO filed a motion for summary judgment with a federal court in Connecticut to dismiss the lawsuit. LEGO argues that Concannon's claims are unfounded, asserting that it had an express license to use Antoni Porowski's likeness and that Concannon granted an implied, non-exclusive license for the jacket's adornments. LEGO also defends its use by arguing that it constitutes transformative fair use, as it highlights the brand collaboration with Queer Eye. Besides, LEGO contends that Concannon's claims of contributory and vicarious copyright infringement fail because the direct infringement claim is baseless. LEGO further argues that Concannon's trade dress and unfair competition claims should be dismissed, as he has not proven that his design has secondary meaning or caused confusion with LEGO's toy set. Therefore, LEGO requests that the court grant summary judgment on all claims.
A relevant precedent in this case is Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017), which provides guidance on copyright claims related to design elements. In Star Athletica, the Supreme Court established a two-part test to determine whether design elements, such as the lines, stripes, zigzags, and chevrons that characterize cheerleader uniforms, merit copyright protection. According to the Court, while the uniforms themselves are not copyrightable, their design elements may qualify for copyright protection under § 101 of the Copyright Act of 1976 if they: (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) qualify as a protectable "pictorial, graphic, or sculptural work," independently of the useful article in which they are incorporated.
The Court concluded that Varsity's designs on the cheerleading uniforms were copyrightable because they possessed pictorial, graphic, or sculptural qualities. Moreover, if these designs were separated from the uniforms and applied to another medium, such as a painter's canvas, they would still qualify as works of art.
In Concannon's case, the key issues are whether the designs on his leather jacket qualify as protectable art independent of the jacket and if the designs used by LEGO on the figurine's jacket are substantially similar to his original work.
It is not uncommon for toy companies to draw inspiration from fashion trends - and for fashion designers to take cues from toys (as exemplified by Jeremy Scott's S/S 15 Moschino collection inspired by Barbie clothing…), but this case shouldn't be dismissed as trivial just because it focuses on the attire of a miniature figurine as this case may have broader implications for intellectual property rights and industry practices.
Aside from the potential copyright infringement, the core issue of the case lies indeed in determining what qualifies as protectable. Hence the case serves as a valuable lesson for emerging fashion designers who lend their creation for gigs, films, or performances, only to see their designs adapted into other mediums. This lawsuit underscores the importance of safeguarding creative rights in such scenarios, making it a case worth following for any fashion designer seeking to protect their work.
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