ZURU v. Lego - Complaint

Case 2:19-cv-00131 Document 1 Filed 01/07/19 Page 1 of 28 Page ID #:1
1 Thomas M. Dunlap (pro hac vice application pending)
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Brian M. Koide (State Bar No. 191852)
Dunlap Bennett & Ludwig PLLC
3 8300 Boone Boulevard, Suite 550
4 Vienna, Virginia 22182
Telephone: (703) 777-7319
5 Facsimile: (703) 777-3656
6 tdunlap@dbllawyers.com
bkoide@dbllawyers.com
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8 Nicholas A. Kurtz (State Bar No. 232705)

Dunlap Bennett & Ludwig PLLC
9 55 East Monroe, Suite 3300
10 Chicago, Illinois 60603

Telephone: (312) 868-0714
11 Facsimile: (855) 226-8791
12 nkurtz@dbllawyers.com
13 Attorneys for ZURU LLC
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15 IN THE UNITED STATES DISTRICT COURT

FOR THE CENTRAL DISTRICT OF CALIFORNIA
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ZURU LLC, Case No.: 2:19-cv-131
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19 Plaintiff, COMPLAINT
20 vs. DEMAND FOR JURY TRIAL
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LEGO SYSTEMS, INC., LEGO A/S,
22 and LEGO JURIS A/S,
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Defendants.
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COMPLAINT
1 Plaintiff ZURU LLC for its Complaint against Defendants LEGO Systems Inc.
2 (“LSI”), LEGO A/S (“LAS”), and LEGO Juris A/S (“LJAS”) (collectively, “the
3 LEGO Group”) alleges as follows:
4 JURISDICTION AND VENUE

5 1. This action seeks a declaratory judgment under the Declaratory
6 Judgment Act, 28 U.S.C. §§ 2201 and 2202.
7 2. An actual controversy exists between the parties regarding the LEGO

8 Group’s copyrights, design patents, trademarks, and trade dress referenced in this
9 Complaint.
10 3. This Court has subject matter jurisdiction over this matter pursuant to 28
11 U.S.C. §§ 1331, 1338(a) and (b), and 1367.
12 4. Venue is proper in this Court pursuant to 28 U.S.C. § 1391.

13 PARTIES
14 5. Plaintiff ZURU LLC is a limited liability company existing under the
15 laws of Oregon with its principal place of business in El Segundo, California.
16 6. On information and belief, Defendant LSI is a Delaware corporation

17 having its principal place of business at 555 Taylor Road, Enfield, CT 06082.
18 7. On information and belief, Defendant LAS is a private company with a

19 place of business located at Aastvej 1, Dk-7190, Billund, Denmark.
20 8. On information and belief, Defendant LJAS is a private company with a

21 place of business located at Koldingvej 2, Dk-7190, Billund, Denmark.
22 FACTS
23 The ZURU Group is an Industry-Recognized Toy Innovator
24 9. ZURU LLC is the United States arm of the ZURU Group, a group of
25 family-owned toy and consumer products companies founded in Cambridge, New
26 Zealand in 2004. The ZURU Group designs, manufactures, markets, and sells
27 innovative toys and consumer products. The ZURU Group is one of the fastest
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COMPLAINT
1 growing toy brands in the world and is known for their agility, creativity, and new-
2 age manufacturing techniques.
3 10. The ZURU Group has partnerships with entertainment properties,

4 including Nickelodeon, Disney, Universal Studios, and DreamWorks.
5 11. The ZURU Group has successfully built their own global brands such
6 as Bunch O Balloons™, X-Shot™, Robo Alive™, Mayka™, Fidget Cube™,
7 Tangle™, ZURU Smashers™, 5 Surprise™, and Metal Machines™.
8 12. The ZURU Group has been recognized by the toy industry for its
9 innovative products with recent awards and recognition, including the following:
10 • 2018 Toy of the Year (“TOTY”) award in the Active/Outdoor Toy

11 category for the company’s Bunch O Balloons™ Filler Soaker;
12 • 2017 TOTY award in the Active/Outdoor Toy category for Bunch O
13 Balloons™;
14 • The NPD Group, Inc.’s (“NPD”) Top Selling toy awards in 2018 for
15 Fidget Cube™ in the All Other Toys super category;
16 • NPD’s Top Selling award for Bunch O Balloons™ in the Outdoor &
17 Sports Toys super category;
18 • 2018 Mums Choice Award for Robo Alive™ Dino;
19 • 2018 MadeforMums Award for Rainbocorns;
20 • 2018 Independent Toy Awards for Smashers;
21 • 2018 Independent Toy Award for Rainbocorns; and
22 • 2017 Toy & Hobby Industry for Mayka Toy Block Tape.
23 13. The ZURU Group has flourished from its small beginnings in
24 Cambridge, New Zealand and now employs more than 400 staff, has 13 offices
25 worldwide, produces 400,000 toys a day, and supplies most major retailers in 121
26 countries.
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COMPLAINT
1 The Long History of Cylindrical Toys with Studs

2 14. The LEGO Group contends that it launched toys with cylindrical studs
3 in 1958.
4 15. Before their launch by the LEGO Group, cylindrical studs were used as
5 a functional element on toy construction bricks developed by Hilary “Harry” Fisher
6 Page of KIDDICRAFT (a company in the United Kingdom) in the 1940s.
7 16. A box cover of the KIDDICRAFT product is shown below:

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COMPLAINT
1 17. The photograph below shows the KIDDICRAFT bricks with cylindrical
2 studs on each brick:
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COMPLAINT
1 18. Mr. Page was granted patent protection for the brick in the UK, France,
2 and elsewhere. Figures from Mr. Page’s UK Patent No. 633,055, which Mr. Page
3 applied for in 1945, are shown below:
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20 19. The LEGO Group created a product almost identical to the

21 KIDDICRAFT product configuration in a jurisdiction (Denmark) where there was no
22 active patent protection. The LEGO Group further modified the brick in the 1950s by
23 adding “tubes” or secondary projections in the hollow cavity of the brick. The LEGO
24 Group was granted patent rights in the modified brick and enjoyed these rights until
25 the patents expired in the 1980s.
26 20. More recently, other toy manufacturers have offered construction bricks
27 with cylindrical studs as a key functional component in their respective toy systems.
28 These competitor products include MEGA BLOKS (which has been acquired by
6
COMPLAINT
1 Mattel), KRE-O (which has been was acquired by Hasbro), BLOCKTECH,
2 BRICTEC, BLOKKO, and others (“Competitor Bricks”).
3 The LEGO Group’s Attempts to Improperly Extend its Patent Monopoly

4 21. Subsequent to the expiration of its improved brick patents, the LEGO
5 Group has sought to maintain its monopoly, stifle competition, maintain high prices,
6 and eliminate customer choices by asserting other alleged intellectual property rights,
7 including trademarks, trade dress, copyrights, and design patents.
8 22. In one of the first actions in which LEGO sought trademark protection
9 for its brick design, Tyco Industries, Inc. v. LEGO Systems, Inc., 5 U.S.P.Q.2d
10 (D.N.J. 1987), the court (Judge Brown) found that the LEGO block is “wholly
11 functional” and denied trademark protection on that basis.
12 23. The Tyco court specifically referenced the functionality of the

13 cylindrical studs on the brick surface in cooperation with the tubes on the bottom of
14 the brick.
15 24. Courts outside the United States have also held that the LEGO Group
16 cannot maintain a monopoly on once-patented improved-brick feature under the
17 guise of trademark law.
18 25. The LEGO Group has failed in its efforts to claim exclusive rights to the
19 functional cylindrical stud element in various actions around the world.
20 26. Despite the LEGO Group’s aggressive litigation tactics, for at least 20
21 years, courts in other countries have repeatedly rejected the LEGO Group’s efforts to
22 claim exclusive rights to the functional elements of its building blocks.
23 27. Specifically, the LEGO Group has attempted without avail to assert
24 exclusive rights to its cylindrical studs in France, Canada, Germany, the Netherlands,
25 and Italy.
26 28. LEGO’s Community trademark registration for the shape of the 2x4
27 brick, which features 8 pins, was cancelled by Europe’s highest court (the Court of
28 Justice of the European Union) in a judgment dated September 14, 2010 specifically
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COMPLAINT
1 on the basis of the functionality of the pins. LEGO’s trademark claims were also
2 dismissed by the Supreme Court of Canada in 2005, the Supreme Court of France in
3 1999, the Supreme Court of Germany in 2009, the Supreme Court of Italy in 2008,
4 and the Supreme Court of the Netherlands in 2009.
5 The ZURU Group’s Introduction of its MAX Build More Products

6 29. In 2018, decades after LEGO’s modified brick patents expired, the
7 ZURU Group entered the construction brick market. The ZURU Group developed its
8 own range of construction bricks, which it sold in sets under its MAX Build More
9 name with a large stylized “MAX” in bold white lettering together with the “ZURU”
10 name and colors (yellow lettering with a black outline) superimposed over a generic
11 and functional red brick outline. This tracks ZURU’s longstanding corporate logo,
12 depicting a stylized “ZURU” in yellow lettering superimposed over a solid red
13 square, which has been in use since ZURU’s founding back in New Zealand.
14 30. In 2018, the ZURU Group also developed its own distinctive line of
15 figurines to be compatible with its own MAX Build More construction bricks and
16 other generic bricks, including the LEGO Group bricks and Competitor Bricks.
17 31. Many other toy companies and brands (including MEGA BLOKS,
18 KRE-O, BLOCKTECH, BRICTEC, and BLOKKO) have and continue to offer their
19 own similar figurines for use in construction play and as collectibles. The following
20 chart shows these brands along with ZURU Group’s MAX figures and the LEGO
21 Group’s figures.
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COMPLAINT
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COMPLAINT
1 LEGO’s Stud Trademarks

2 32. On information and belief, LJAS owns the following trademarks
3 registered with the United States Patent & Trademark Office (“USPTO”):
4 Registration Nos. 2,273,314; 2,273,321; and 2,922,658 (collectively the “Stud
5 Trademarks”). Copies of the respective Registration Certificates are attached as
6 Exhibits 1, 2, and 3, respectively. All Exhibits to this Complaint are incorporated by
7 reference.
8 33. The LEGO Group contends products of the ZURU Group use
9 cylindrical protrusions and construction bricks as source identifiers that are
10 confusingly similar to the LEGO Group’s Stud Trademarks.
11 34. The LEGO Group contends that the following products (collectively
12 “the Accused Stud Products”) of the ZURU Group infringe the alleged Stud
13 Trademarks:
14 • MAX Build More Building Bricks Value Set (759 Bricks);

16 • MAX Build More Building Bricks Value Set (250 Pieces);
17 • MAX Build More Base Plates;
18 • MAYKA Toy Block Tape; and
19 • MAX Build More 15 MAX Figures.
20 35. The Accused Stud Products are not confusingly similar to the LEGO
21 Group’s Stud Trademarks.
22 LEGO’s Improper Actions Before the Trademark Office

23 36. U.S. Trademark Registration No. 2,273,314 (the “Single Stud
24 Registration”) issued on August 31, 1999 to Kirkbi AG (“Kirkbi”) for the design of a
25 “cylindrical surface feature” for “toy vehicles; toy figures and construction toys.”
26 Kirkbi later assigned the Single Stud Registration to LJAS.
27 37. U.S. Trademark Registration No. 2,273,321 (the “Four Stud

28 Registration”) issued on August 31, 1999 to Kirkbi for the design of “four cylindrical
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COMPLAINT
1 surface feature[s] on packaging” for “toy figures and construction toys.” Kirkbi later
2 assigned the Four Stud Registration to LJAS.
3 38. U.S. Trademark Registration No. 2,922,658 the “Eight Stud Brick
4 Registration”) issued on February 1, 2005 to Kirkbi for the design of “red square,
5 outlined in black, within which appears in white, outlined in yellow, a fanciful
6 representation of the top portion of a building block having eight studs” for
7 “construction toys.” Kirkbi later assigned the Eight Stud Brick Registration to LJAS.
8 39. The Stud Trademarks were obtained by Kirkbi and maintained by LJAS
9 under false pretenses because Kirbi and its licensee, LJAS, knew that they could not
10 legitimately assert exclusive rights in cylindrical studs that are an essential
11 functional element of construction toy building blocks.
12 40. Each of the Stud Trademarks was initially rejected by the USPTO when
13 they were applied for. The USPTO objected to each of the marks as functional and
14 non-distinctive under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§ 1051, 1052
15 and 1127. In responding to these objections, Kirkbi evaded a direct inquiry
16 concerning designs used by competitors—withholding from the USPTO the highly
17 material history and ubiquity of the functional cylindrical stud element.
18 41. Kirkbi led the USPTO to believe that it was not seeking protection for
19 the cylindrical stud functional elements of the Stud Trademarks, but that instead it
20 was seeking protection only for their use as elements of product packaging.
21 42. At the time Kirkbi applied for the Stud Trademarks, it was well aware
22 that courts in the United States had severe doubts about whether the LEGO Group
23 building blocks were eligible for trademark protection.
24 43. The Stud Trademarks are invalid for the additional reason that LJAS’s
25 predecessor, Kirkbi, obtained the Stud Trademarks by intentionally misleading the
26 USPTO when it applied for the Stud Trademarks.
27 44. For example, Kirkbi failed to disclose the functionality of its cylindrical
28 studs in the Single Stud Registration to the USPTO and did not inform the USPTO
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COMPLAINT
1 that the principal of Kirkbi had obtained a patent on the use of cylindrical studs in
2 construction toys.
3 45. Indeed, Kirkbi affirmatively represented to the USPTO during

4 prosecution of the Single Stud Registration that its cylindrical studs were “not the
5 subject of a design patent or a utility patent.”
6 46. Kirkbi also affirmatively represented to the USPTO during prosecution

7 of the Single Stud Registration that the cylindrical studs were not functional: “We
8 wish to make absolutely clear that we are not claiming rights in a cylinder as an
9 overall configuration of a package . . . the mark is not a design of a cylindrical
10 package.” Kirkbi made this representation despite the fact that the cylindrical studs’
11 essential purpose is to enable combination and construction of building block toys.
12 47. On information and belief, the USPTO would not have issued the Stud
13 Registrations to Kirkbi—and the LEGO Group would not have any trademark rights
14 to enforce—if Kirkbi had disclosed the truth about the cylindrical studs’
15 functionality.
16 48. Excerpts of the file histories of the Stud Trademarks are attached as
17 Exhibit 4.
18 LEGO’s Trade Dress

19 49. The LEGO Group contends that it has used a color scheme consisting of
20 the colors red, yellow, black, and white (“Color Scheme”).
21 50. The LEGO Group contends that it has common law trade dress rights in
22 the Color Scheme (“Trade Dress”).
23 51. The LEGO Group contends that ZURU, Inc. adopted the colors red,
24 yellow, black, and white for its MAX Build More and MAYKA Toy Block Tape
25 lines of toys (“Accused Trade Dress Products”).
26 52. The ZURU Group (including its predecessor companies) has used
27 yellow and black for its ZURU brand logo since at least 2004, with a stylized yellow
28 “ZURU” outlined in black and superimposed on a red square.

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COMPLAINT
1 53. Toy products in the United States often have packaging or promotional
2 materials that uses some combination of black, white, yellow, and red.
3 54. The MAX Build More logo and the LEGO logo are not confusingly
4 similar.
5 55. The MAX Build More logo and the LEGO logo are not identical.
6 56. The Trade Dress and Accused Trade Dress Products are not confusingly
7 similar.
8 57. The Trade Dress and Accused Trade Dress Products are not identical.
9 LEGO’s Alleged Intellectual Property in the Minifigure Figurine
10 58. On information and belief, LAS owns the following copyrights
11 registered with the United States Copyright Office: Registration Nos.
12 VA0000655230 and VA0000655104 (collectively the “Minifigure Copyrights”).
13 Copies of the deposit materials maintained by the United States Copyright Office as
14 part of the Minifigure Copyrights are attached as Exhibits 5 and 6, respectively.
15 59. On information and belief, LJAS owns the following trademarks

16 registered with the United States Patent & Trademark Office: Registration No.
17 4,903,968 (“Minifigure Trademark”). A copy of the respective Registration
18 Certificate for the Minifigure Trademark is attached as Exhibit 7.
19 60. The LEGO Group contends that it has common law trademark rights
20 (“Common Law Minifigure Trademark”) in the Minifigure as set forth in Exhibit 7.
21 61. The LEGO Group contends that ZURU, Inc. sells figurines in its MAX
22 Build More 15 MAX Figures sets (“Accused Figurines”).
23 62. ZURU, Inc. has never sold the Accused Figurines to any United States
24 retailer.
25 63. ZURU, Inc. has never sold the Accused Figurines in the United States.
26 64. The Accused Figurines were sold outside the United States by ZURU
27 LLC to a United States retailer, and the United States retailer imported the Accused
28 Figurines into the United States.

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COMPLAINT
1 65. ZURU LLC has never sold the Accused Figurines in the United States.
2 66. The Accused Figurines are not confusingly similar to the LEGO
3 Minifigure figurine.
4 67. The Accused Figurines are not confusingly similar to the overall look
5 and feel of the LEGO Minifigure Copyrights.
6 68. The Accused Figurines are not strikingly similar to the overall look and
7 feel of the LEGO Minifigure Copyrights.
8 69. The Accused Figurines are not confusingly similar to the Minifigure
9 Trademark or Common Law Minifigure Trademark.
10 70. The LEGO Group contends that product packaging for the MAX Build
11 More and MAYKA Block Tape lines of toys display images (“Accused Images”)
12 that are confusingly similar to the LEGO Minifigure figurine.
13 71. The LEGO Group contends that the Accused Images are substantially
14 similar to the overall look and feel of the Minifigure figurine.
15 72. The LEGO Group contends that the Accused Images appear on product
16 packaging for the following specific products:
17 • MAX Build More 15 MAX Figures;

18 • MAX Build More Bricks Value Sets (250);
21 • MAX Build More Base Plate; and
22 • MAYKA Toy Block Tape.
23 73. The Accused Images are not confusingly similar to the LEGO
24 Minifigure figurine.
25 74. The Accused Images are not substantially similar to the overall look and
26 feel of the Minifigure figurine.
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COMPLAINT
1 LEGO’s FRIENDS Figurine Copyrights

2 75. On information and belief, LAS owns the following copyrights
3 registered with the United States Copyright Office: Registration Nos. VA 1-876-291,
4 VA 1-876-279, VA 1-876-378, and VA 1-876-373 (collectively the “Friends
5 Copyrights”). Copies of the deposit materials maintained by the United States
6 Copyright Office as part of the Friends Copyrights are attached as Exhibits 8, 9, 10,
7 and 11, respectively.
8 76. The LEGO Group contends that ZURU, Inc. uses an image (“Accused
9 Friend Image”) on product packaging for its Mayka Toy Block Tape that is strikingly
10 and substantially similar to the overall look and feel of the Friends Copyrights.
11 77. The Accused Friends Image is shown below:

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ZURU Group’s MAYKA Toy Block Tape is strikingly or substantially similar to the
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overall look and feel of the Friends Copyrights.
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the overall look and feel of the Friends Copyrights.
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COMPLAINT
1 LEGO’s Design Patents

2 80. On information and belief, LAS owns U.S. Design Patent Nos.
3 D701,923S (“the ’923 Patent”); D688,328S; D641,053S; and D614,707S
4 (collectively “Asserted Design Patents”). Copies of the Asserted Design Patents are
5 attached as Exhibits 12, 13, 14, and 15, respectively.
6 81. The LEGO Group contends that ZURU, Inc. manufactured, sold,
7 offered to sell, and imported, and/or currently manufactures, sells, offers to sell, and
8 imports in the United States certain building bricks (“Accused Bricks”) that are
9 substantially similar to the Asserted Design Patents in at least three different
10 products:

12 • MAX Build More Building Bricks Value Set (253 Bricks); and
13 • MAX Build More Building Bricks Value Set (250 Pieces) (collectively
14 “MAX Build More Building Bricks Value Sets”).
15 82. ZURU, Inc. has not manufactured the building bricks in the MAX Build
16 More Building Bricks Value Sets in the United States.
17 83. ZURU, Inc. has not sold the MAX Build More Building Bricks Value
18 Sets in the United States.
19 84. ZURU, Inc. has not offered to sell the MAX Build More Building
20 Bricks Value Sets in the United States.
21 85. ZURU, Inc. has not imported the MAX Build More Building Bricks
22 Value Sets into the United States.
23 86. The LEGO Group contends that the MAX Build More Building Bricks
24 Value Sets include the Accused Bricks.
25 The LEGO Group contends that the Accused Bricks in the MAX Build More
26 Building Bricks Value Sets are substantially similar to the Accused Bricks.
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COMPLAINT
1 The LEGO Group’s Assertion of Invalid IP Rights Against ZURU, Inc.

2 87. On December 13, 2018, the LEGO Group filed a complaint against
3 ZURU, Inc. in the United States District Court for the District of Connecticut
4 alleging (i) copyright infringement; (ii) trademark infringement under Section 32(a)
5 of the Lanham Act; (iii) trademark infringement, false designation of origin, and
6 unfair competition under Section 43(a)(1)(A) of the Lanham Act; (iv) common law
7 trademark and trade dress infringement, unfair competition, and misappropriation;
8 (v) infringement of design patents.
9 88. In its Connecticut Complaint, the LEGO Group named ZURU, Inc. as a
10 defendant and did not name any other defendant.
11 89. As of the date of this Complaint, the LEGO Group has not properly
12 served ZURU, Inc. with a Summons or Complaint.
13 90. In its Connecticut Complaint, the only ZURU Group products the
14 LEGO Group identified as infringing its intellectual property are certain MAX Build
15 More products and MAYKA Toy Block Tape products.
16 91. ZURU, Inc. is part of the ZURU Group.

17 92. ZURU, Inc. has never sold any MAX Build More products to retailers in
18 the United States.
19 93. All of the MAX Build More products sold to United States retailers
20 were sold by ZURU LLC.
21 94. Except for two orders, which were sold FOB, China by ZURU, Inc. to a
22 United States-based retailer, all of the MAYKA Toy Block Tape products sold to
23 United States retailers were sold by ZURU LLC.
24 The LEGO Group’s Interference with ZURU LLC’s Business Relations

25 95. After filing the Connecticut Complaint, the United States District Court
26 for the District of Connecticut entered a temporary restraining order (“TRO”) on
27 December 14, 2018. A copy of the TRO is attached as Exhibit 16.
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COMPLAINT
1 96. The TRO does not reference any retailers or compel any retailers being
2 restrained or enjoined by the TRO.
3 97. The TRO does not reference Walmart.

4 98. The TRO does not reference any ZURU products being removed from
5 Walmart stores.
6 99. The TRO does not reference any ZURU products being removed from
7 Walmart’s website, walmart.com.
8 100. After the TRO was entered, R. Scott Slifka (using a

9 Scott.Slifka@lego.com email address) emailed an in-house Walmart attorney (at the
10 email address jlamp@walmart.com). A copy of the email is attached as Exhibit 17.
11 101. On information and belief, R. Scott Slifka is the Vice President and
12 General Counsel, Americas of the LEGO Group.
13 102. On information and belief, the in-house Walmart attorney receiving Mr.
14 Slifka’s email was Joel Lamp, Senior Associate General Counsel-Section Head at
15 Walmart Global eCommerce.
16 103. On information and belief, Mr. Lamp maintains offices in California and
17 Walmart’s Global eCommerce business unit are based in California.
18 104. In the email, Mr. Slifka states that “This is a follow up to the voice mail
19 message I left with you earlier tonight. Along with your colleagues copied on this
20 message, I’m requesting that you distribute the following as appropriate to the most
21 senior members of your legal team and those in the general business.”
22 105. On information and belief, at least one senior member of Mr. Lamp’s
23 legal team maintains offices in California.
24 106. Mr. Slifka also states in the email that the TRO “requires that the
25 following ZURU product be removed from Walmart stores and http://Walmart.com,
26 effective immediately…” and then identifies specific ZURU Group products.
27 107. Each of the products listed in Mr. Slifka’s email were the result of a
28 valid contract or valid contracts between ZURU LLC and Walmart.
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COMPLAINT
1 108. On information and belief, both Mr. Slifka and the LEGO Group were
2 aware before contacting Mr. Lamp that such a valid contract existed.
3 109. By sending his email, Mr. Slifka and the LEGO Group intended to
4 induce a breach and/or disruption the contractual relationship between ZURU LLC
5 and Walmart.
6 110. On information and belief, the LEGO Group’s misrepresentation of the

7 TRO to Walmart resulted in Walmart removing the ZURU Group’s products from its
8 stores and website.
9 111. The LEGO Group’s misrepresentation of the TRO to Walmart has

10 resulted in damages to ZURU LLC.
11 COUNT I
12 (Invalidity of the Stud Trademarks & Registration)
13 112. ZURU LLC incorporates the allegations in the foregoing paragraphs as
14 if the same were set forth herein.
15 113. On information and belief, LJAS owns the Stud Trademarks.

16 114. The Stud Trademarks are invalid and unenforceable against ZURU LLC
17 because (a) the “cylindrical surface feature” covered by the trademarks is generic
18 and/or functional and therefore not entitled to protection under United States
19 trademark law and/or (b) LEGO’s predecessor obtained the Stud Trademarks by
20 fraud, by withholding highly material information, by intentionally misleading the
21 USPTO as to the functionality of the “cylindrical surface feature,” and by
22 intentionally failing to disclose that the “cylindrical surface feature” was depicted in
23 expired patents at the time trademark registration was sought.
24 115. ZURU LLC is entitled to a declaration pursuant to the Declaratory

25 Judgment Act, 28 U.S.C. § 2201, that the Stud Trademarks are invalid and
26 unenforceable against ZURU LLC. There is an actual case or controversy between
27 ZURU LLC and the LEGO Group requiring a declaration because of the LEGO
28 Group’s assertion of its Stud Trademarks in the Connecticut Complaint.

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COMPLAINT
1 COUNT II
2 (Noninfringement of the Stud Trademarks)
5 117. On information and belief, LJAS owns the Stud Trademarks.

6 118. The Accused Stud Products do not infringe the Stud Trademarks and
7 because (a) the Stud Trademarks are invalid and unenforceable; (b) the Accused Stud
8 Products are not confusing similar to the LEGO Group’s Stud Trademarks; and/or (c)
9 the Accused Stud Products are a descriptive fair use of the Stud Trademarks.

11 Judgment Act, 28 U.S.C. § 2201, that the Accused Stud Products do not infringe the
12 Stud Trademarks. There is an actual case or controversy between ZURU LLC and
13 the LEGO Group requiring a declaration because of the LEGO Group’s assertion of
14 its Stud Trademarks in the Connecticut Complaint.
15 COUNT III
16 (Declaratory Judgement of Invalidity of the Trade Dress)
19 121. The LEGO Group contends that it has common law Trade Dress rights.
20 122. The Trade Dress is invalid and unenforceable against ZURU LLC
21 because the Color Scheme covered by the Trade Dress is generic and/or commonly
22 used in toy packaging and promotion and therefore not entitled to protection under
23 common law.

25 Judgment Act, 28 U.S.C. § 2201 that the Trade Dress is invalid and unenforceable
26 against ZURU LLC. There is an actual case or controversy between ZURU LLC and
27 the LEGO Group requiring a declaration because of the LEGO Group’s assertion of
28 its Trade Dress in the Connecticut Complaint.

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COMPLAINT
1 COUNT IV
2 (Noninfringement of the Trade Dress)
5 125. The LEGO Group contends that it has common law Trade Dress rights.
6 126. The Accused Trade Dress Products do not infringe the Trade Dress
7 because (a) the Trade Dress is invalid and unenforceable and (b) the Accused Trade
8 Dress Products and Trade Dress are not confusingly similar.

10 Judgment Act, 28 U.S.C. § 2201 that the Accused Trade Dress Products do not
11 infringe the Trade Dress. There is an actual case or controversy between ZURU LLC
12 and the LEGO Group requiring a declaration because of the LEGO Group’s assertion
13 of its Trade Dress against the Accused Trade Dress Products in the Connecticut
14 Complaint.
15 COUNT V
16 (Invalidity of the Minifigure Copyrights)
19 129. On information and belief, LAS owns the Minifigure Copyrights.

21 Judgment Act, 28 U.S.C. § 2201 that the Minifigure Copyrights are invalid. There is
22 an actual case or controversy between ZURU LLC and the LEGO Group requiring a
23 declaration because of the LEGO Group’s assertion of its Minifigure Copyrights
24 against the Accused Figurines in the Connecticut Complaint.
25 COUNT VI
26 (Noninfringement of the Minifigure Copyrights)
21
COMPLAINT
1 132. On information and belief, LAS owns the Minifigure Copyrights.

3 Judgment Act, 28 U.S.C. § 2201 that the Accused Figurines do not infringe the
4 Minifigure Copyrights. There is an actual case or controversy between ZURU LLC
6 of its Minifigure Copyrights against the Accused Logos in the Connecticut
7 Complaint.
8 COUNT VII
9 (Invalidity of the Minifigure Trademark and Common Law Minifigure
10 Trademark)
13 135. On information and belief, LJAS owns the Minifigure Trademark.

14 136. The LEGO Group contends that it has a Common Law Minifigure
15 Trademark.
16 137. The Minifigure Trademarks and the Common Law Minifigure

17 Trademark are invalid and unenforceable against ZURU LLC because the figures
18 covered by the trademarks are generic and/or functional and therefore not entitled to
19 protection under United States trademark laws.

21 Judgment Act, 28 U.S.C. § 2201 that the Minifigure Trademark and the Common
22 Law Minifigure Trademark are each invalid and not enforceable against ZURU LLC.
23 There is an actual case or controversy between ZURU LLC and the LEGO Group
24 requiring a declaration because of the LEGO Group’s assertion of its Minifigure
25 Trademark and Common Law Minifigure Trademark against the Accused Figures in
26 the Connecticut Complaint.
27
28
22
COMPLAINT
1 COUNT VIII
2 (Noninfringement of the Minifigure Trademark)
5 140. On information and belief, LJAS owns the Minifigure Trademark.

6 141. The Accused Figurines and Accused Images do not infringe the
7 Minifigure Trademark and/or Common Law Minifigure Trademark because (a) the
8 Minifigure Trademark and the Common Law Minifigure Trademark are each invalid
9 and unenforceable; (b) the Accused Figurines and Minifigure Trademark are not
10 confusingly similar; (c) the Accused Images and the Minifigure Trademark are not
11 confusingly similar; (d) the Accused Figurines and Common Law Minifigure
12 Trademark are not confusingly similar; and (e) the Accused Images and Common
13 Law Minifigure Trademark are not confusingly similar.

15 Judgment Act, 28 U.S.C. § 2201 that the Accused Logos do not infringe the Trade
16 Dress. There is an actual case or controversy between ZURU LLC and the LEGO
17 Group requiring a declaration because of the LEGO Group’s assertion of its
18 Minifigure Trademark and the Common Law Minifigure Trademark against the
19 Accused Figurines in the Connecticut Complaint.
20 COUNT IX
21 (Invalidity of the Friends Figurine Copyright)
24 144. On information and belief, LAS owns the Friends Figurine Copyright.
25 145. The Friends Figurine Copyright is invalid and unenforceable against
26 ZURU LLC because the figures covered by the copyright are functional and
27 therefore not entitled to protection under United States copyright laws.
28
23
COMPLAINT

2 Judgment Act, 28 U.S.C. § 2201 that the Friends Figurine Copyright is invalid and
3 unenforceable. There is an actual case or controversy between ZURU LLC and the
4 LEGO Group requiring a declaration because of the LEGO Group’s assertion of its
5 Friends Figure Copyright in the Connecticut Complaint.
6 COUNT X
7 (Noninfringement of the Friends Figurine Copyright)
10 148. On information and belief, LAS owns the Friends Figurine Copyright.
11 149. The Accused Friends Image is not strikingly or substantially similar to
12 the overall look and feel of the Friends Figurine Copyright.

14 Judgment Act, 28 U.S.C. § 2201 that the Accused Friends Image does not infringe
15 the Friends Figurine Copyright. There is an actual case or controversy between
16 ZURU LLC and the LEGO Group requiring a declaration because of the LEGO
17 Group’s assertion of its Friends Figurine Copyright against the Accused Friends
18 Image in the Connecticut Complaint.
19 COUNT XI
20 (Invalidity of the Asserted Design Patents)
23 152. On information and belief, LAS owns the Asserted Design Patents.
24 153. The Asserted Design Patents are each invalid under the Patent Act., 35
25 U.S.C. § 101 et seq., including, but not limited to, Sections 102, 103, and/or 171.

27 Judgment Act, 28 U.S.C. § 2201 that the Accused Bricks do not infringe any valid
28 Asserted Design Patent. There is an actual case or controversy between ZURU LLC
24
COMPLAINT
2 of its Asserted Design Patent against the Accused Bricks in the Connecticut
3 Complaint.
4 COUNT XII
5 (Noninfringement of the Asserted Design Patents)
8 156. On information and belief, LAS owns the Asserted Design Patents.
9 157. The ZURU Group has alleged that the Accused Bricks infringe the
10 Asserted Design Patents.
11 158. The Accused Bricks do not infringe any the Asserted Design Patents.
13 Judgment Act, 28 U.S.C. § 2201 that the Accused Bricks do not infringe any
14 Asserted Design Patents. There is an actual case or controversy between ZURU LLC
16 of its Asserted Design Patents against the Accused Bricks in the Connecticut
17 Complaint.
18 COUNT XIII
19 (Tortious Interference with Existing Business Relationships)
22 161. ZURU LLC has entered into contracts with retail customers, including
23 Walmart, whereby the retailers have placed orders for ZURU Group products,
24 including the MAX Build More product line.
25 162. The LEGO Group is aware of the existence of these contractual

26 relationships.
27
28
25
COMPLAINT
1 163. The LEGO Group engaged in intentional acts designed to induce a

2 breach and/or disruption of the contractual relationships between ZURU LLC and its
3 retail customers.
4 164. The LEGO Group’s intentional acts resulted in an actual breach or

5 disruption of the contractual relationships between ZURU LLC and its retail
6 customers.
7 165. The actual breach or disruption resulted in damages to ZURU LLC.

8 166. LEGO Group’s tortious interference has harmed ZURU LLC’s business
9 relationship with its customers.
10 167. LEGO Group’s actions have also damaged ZURU LLC’s relationship
11 with its licensors and/or prospective licensors by damaging ZURU LLC’s reputation
12 for respecting intellectual property rights, which will harm ZURU LLC’s ability to
13 maintain licenses to intellectual property and acquire additional licenses in the future.
14 REQUEST FOR RELIEF

15 WHEREFORE, ZURU LLC requests the following relief against the LEGO
16 Group:
17 a. a declaration that each of the Stud Trademarks are invalid and

18 unenforceable against ZURU LLC;
19 b. a declaration that the Accused Stud Products do not infringe and have not
20 infringed any of the Stud Trademarks;
21 c. a declaration that the Trade Dress is invalid and unenforceable against
22 ZURU LLC;
23 d. a declaration that the Accused Trade Dress Products do not infringe and
24 have not infringed the Trade Dress;
25 e. a declaration that the Minifigure Copyrights are invalid and not enforceable
26 against ZURU LLC;
27 f. a declaration that the Accused Figurines do not infringe and have not
28 infringed any of the Minifigure Copyrights;
26
COMPLAINT
1 g. a declaration that the Minifigure Trademark is invalid and not enforceable

2 against ZURU LLC;
3 h. a declaration that the Accused Figurines do not infringe the Minifigure
4 Trademark;
5 i. a declaration that the Friends Figurine Copyright is invalid and not
6 enforceable against ZURU LLC;
7 j. a declaration that the Accused Friends Images do not infringe the Friends
8 Figurine Copyright;
9 k. a declaration that Asserted Design Patents are each invalid;
10 l. a declaration that the Accused Bricks do not infringe any of the Asserted
11 Design Patents;
12 m. a declaration that the LEGO Group’s conduct alleged herein constitutes
13 tortious interference with an existing business relationship with ZURU
14 LLC and its retail customers, including Walmart;
15 n. a preliminary and permanent injunction prohibiting the LEGO Group from
16 inducing a breach and/or disruption the contractual relationship between
17 ZURU LLC and its retail customers, including Walmart, regarding the
18 Accused Stud Products, Accused Trade Dress Products, Accused Figurines,
19 or Accused Friends Images, Accused Bricks;
20 o. an award of compensatory damages sustained by ZURU LLC as a result of
21 the LEGO Group’s conduct alleged herein;
22 p. an award of attorneys’ fees and costs associated with this Action; and
23 q. any further relief as the Court deems just and proper.
24 JURY DEMAND
25 Pursuant to Fed. R. Civ. P. 38(b), Plaintiff ZURU LLC demands a trial by jury
26 of all issues raised by this Complaint that are triable by jury.
27
28
27
COMPLAINT
1 /s/ Brian M. Koide

2
Thomas M. Dunlap (pro hac vice application pending)
3 Brian M. Koide (State Bar No. 191852)
4 Dunlap Bennett & Ludwig PLLC
8300 Boone Boulevard, Suite 550
5 Vienna, Virginia 22182
6 Telephone: (703) 777-7319
Facsimile: (703) 777-3656
7 tdunlap@dbllawyers.com
8 bkoide@dbllawyers.com
9 Nicholas A. Kurtz (State Bar No. 232705)

10 Dunlap Bennett & Ludwig PLLC
55 East Monroe, Suite 3800
11 Chicago, Illinois 60603
12 Telephone: (312) 868-0714
Facsimile: (855) 226-8791
13 nkurtz@dbllawyes.com
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
28
COMPLAINT
Case 2:19-cv-00131 Document 1-1 Filed 01/07/19 Page 1 of 2 Page ID #:29
Exhibit 1
Exhibit 2
Exhibit 3

Excerpts from Prosecution History for Reg. No. 2,273,314



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Exhibit 6
.STATE
S.
'187 0 '
COPY OF DEPOSIT
VA 655-104
BASIC MINIFIGURES
'f • •
From 6 years
Ab 6 Jahre
A partir de 6 ans
A partir de 6 atios
a 6 ar
Exhibit 7
Exhibit 8
Exhibit 9
Exhibit 10
Exhibit 11
Exhibit 12
Exhibit 13
Exhibit 14
Exhibit 15
Exhibit 16
UNITED STATES DISTRICT COURT

DISTRICT OF CONNECTICUT
--------------------------------x
LEGO A/S; LEGO SYSTEMS, Inc.; :
and LEGO Juris A/S, :
:
Plaintiffs, :
:
v. : Civil No. 3:18-cv-2045(AWT)
:
ZURU Inc., :
:
Defendant. :
--------------------------------x
TEMPORARY RESTRAINING ORDER
Upon consideration of the plaintiffs’ Motion for a
Temporary Restraining Order and a Preliminary Injunction and the
entire record herein, including the Verified Complaint, the
plaintiffs’ memorandum of law, and the testimony at the hearing
today, it is hereby:
ORDERED that for a period of fourteen (14) days from the
issuance of this Temporary Restraining Order, good cause having
been shown pursuant to Rule 65 of the Federal Rules of Civil
Procedure that immediate and irreparable injury and damage will
result to the plaintiffs before the motion for a preliminary
injunction can be heard and decided, that the plaintiffs’ motion
for a temporary restraining order is GRANTED; and it is
FURTHER ORDERED that the defendant, ZURU Inc., together
with its agents, servants, employees, successors and assigns,
and all those in active concert or participation with them be
- 1 -
and hereby are, for a period of fourteen (14) days from entry of
this Temporary Restraining Order and using defined terms as they
appear in the plaintiffs’ memorandum of law (ECF No. 7-1),
RESTRAINED AND ENJOINED from
a. manufacturing, selling, offering for sale, displaying or
authorizing the sale of products, including the Infringing
Products, containing unauthorized reproductions of the
copyrighted and trademarked Minifigure figurine, including
any figurine or image that is substantially similar to the
Minifigure Copyrights or likely to be confused with the
Minifigure Trademarks;
b. manufacturing, selling, offering for sale, or authorizing
the sale of construction toy elements that are
substantially similar to the Asserted Patents, including in
the Infringing Products, or applying the patent design or
any colorable imitation thereof to any article of
manufacture for the purpose of sale;
c. manufacturing, selling, offering for sale, displaying or
authorizing the sale of products, including the Infringing
Products, containing unauthorized reproductions of the
copyrighted Friends figurine including any figurine or
image that is substantially similar to the Friends
Copyrights; and it is
- 2 -
FURTHER ORDERED that the plaintiffs have shown that they
have and will suffer immediate and irreparable injury and it is
apparent that they are likely to prevail on their claims, and
accordingly, the plaintiffs are not required to post bond; and
it is
FURTHER ORDERED this Temporary Restraining Order shall take
effect immediately and shall remain in effect pending the show
cause hearing or further order of this court; the defendant may
apply to the court for dissolution or modification of this
Temporary Restraining Order on two court days’ notice to the
plaintiffs; and it is
FURTHER ORDERED that a hearing will be held by this court
on December 27, 2018, in the South Courtroom, at 10:00 a.m., at
which time the defendant is required to show cause why a
preliminary injunction should not issue.
It is so ordered.
Signed this 14th day of December 2018, at 6:24 p.m., at
Hartford, Connecticut.
_______/s/ AWT____________________
Alvin W. Thompson
United States District Judge
- 3 -
Exhibit 17
From: "R. Scott Slifka" <Scott.Slifka@lego.com>

Date: December 14, 2018 at 4:42:57 PM PST
To: "jlamp@walmart.com"
<jlamp@walmart.com>
Cc: "jeremy.snell@walmartlegal.com"
<jeremy.snell@walmartlegal.com>,
"lkearney@walmart.com"
<lkearney@walmart.com>,
"jennifer.johnson@walmartlegal.com"
<jennifer.johnson@walmartlegal.com>
Subject: EXT: Temporary Restraining Order re
ZURU
Atty. Lamp,

This is a follow up to the voice mail message I
left with you earlier tonight. Along with your
colleagues copied on this message, I’m
requesting that you distribute the following as
appropriate to the most senior members of
your legal team and those in the general
business.

This evening, Hon. Alvin W. Thompson, United
States District Judge, District of Connecticut,
granted The LEGO Group a temporary
restraining order (TRO) against ZURU, Inc. for
selling product that infringes on The LEGO
Group’s intellectual property. A copy of the
order is attached.

The order requires that the following ZURU
product be removed from Walmart stores and
http://Walmart.com, effective immediately:
Max Build More Mini Figure Set
(Walmart SKU # 567285203)

Max Build More Building Bricks Value Set
(759 bricks) (Walmart SKU # 571715089)

Max Build More Building Bricks Value Set
(253 bricks) (Walmart SKU # 569813555)

Max Build More Building Bricks
Accessories and Wheels Value Set (250
pieces) (Walmart SKU # 567727090)

Max Build More Base Plate (Walmart
SKU # 567285213)

Mayka Toy Block Tape (containing
infringing images) (Walmart SKU#
564994477; 564994386 ; 564994513

Images of the above products are shown in
the table below.

You should also hear from ZURU directly to
request compliance with the TRO, but we
appreciate your taking immediate action to
comply.
Thank you in advance for your cooperation and
please feel free to contact me with any
questions.

Sincerely,
Scott Slifka

Table of Infringing ZURU
Products

Max Build More Mini Figure Set (15
Figures)

ZURU v. Lego - Complaint

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Case 2:19-cv-00131 Document 1 Filed 01/07/19 Page 1 of 28 Page ID #:1

1 Thomas M. Dunlap (pro hac vice application pending)

8 Nicholas A. Kurtz (State Bar No. 232705)

10 Chicago, Illinois 60603

13 Attorneys for ZURU LLC

15 IN THE UNITED STATES DISTRICT COURT

3 LEGO Group”) alleges as follows:

4 JURISDICTION AND VENUE

7 2. An actual controversy exists between the parties regarding the LEGO

12 4. Venue is proper in this Court pursuant to 28 U.S.C. § 1391.

16 6. On information and belief, Defendant LSI is a Delaware corporation

18 7. On information and belief, Defendant LAS is a private company with a

20 8. On information and belief, Defendant LJAS is a private company with a

2 age manufacturing techniques.

3 10. The ZURU Group has partnerships with entertainment properties,

7 Tangle™, ZURU Smashers™, 5 Surprise™, and Metal Machines™.

10 • 2018 Toy of the Year (“TOTY”) award in the Active/Outdoor Toy

1 The Long History of Cylindrical Toys with Studs

6 Page of KIDDICRAFT (a company in the United Kingdom) in the 1940s.

7 16. A box cover of the KIDDICRAFT product is shown below:

3 applied for in 1945, are shown below:

20 19. The LEGO Group created a product almost identical to the

25 the patents expired in the 1980s.

1 Mattel), KRE-O (which has been was acquired by Hasbro), BLOCKTECH,

2 BRICTEC, BLOKKO, and others (“Competitor Bricks”).

3 The LEGO Group’s Attempts to Improperly Extend its Patent Monopoly

7 including trademarks, trade dress, copyrights, and design patents.

11 functional” and denied trademark protection on that basis.

12 23. The Tyco court specifically referenced the functionality of the

17 guise of trademark law.

22 claim exclusive rights to the functional elements of its building blocks.

4 and the Supreme Court of the Netherlands in 2009.

5 The ZURU Group’s Introduction of its MAX Build More Products

12 depicting a stylized “ZURU” in yellow lettering superimposed over a solid red

1 LEGO’s Stud Trademarks

4 Registration Nos. 2,273,314; 2,273,321; and 2,922,658 (collectively the “Stud

5 Trademarks”). Copies of the respective Registration Certificates are attached as

6 Exhibits 1, 2, and 3, respectively. All Exhibits to this Complaint are incorporated by

10 confusingly similar to the LEGO Group’s Stud Trademarks.

14 • MAX Build More Building Bricks Value Set (759 Bricks);

22 LEGO’s Improper Actions Before the Trademark Office

26 Kirkbi later assigned the Single Stud Registration to LJAS.

27 37. U.S. Trademark Registration No. 2,273,321 (the “Four Stud

2 assigned the Four Stud Registration to LJAS.

5 outlined in black, within which appears in white, outlined in yellow, a fanciful

10 legitimately assert exclusive rights in cylindrical studs that are an essential

11 functional element of construction toy building blocks.

15 and 1127. In responding to these objections, Kirkbi evaded a direct inquiry

16 concerning designs used by competitors—withholding from the USPTO the highly

17 material history and ubiquity of the functional cylindrical stud element.

23 building blocks were eligible for trademark protection.

26 USPTO when it applied for the Stud Trademarks.

3 45. Indeed, Kirkbi affirmatively represented to the USPTO during

5 subject of a design patent or a utility patent.”

6 46. Kirkbi also affirmatively represented to the USPTO during prosecution

9 overall configuration of a package . . . the mark is not a design of a cylindrical

11 essential purpose is to enable combination and construction of building block toys.

18 LEGO’s Trade Dress

25 lines of toys (“Accused Trade Dress Products”).

28 “ZURU” outlined in black and superimposed on a red square.

12 VA0000655230 and VA0000655104 (collectively the “Minifigure Copyrights”).

14 part of the Minifigure Copyrights are attached as Exhibits 5 and 6, respectively.

15 59. On information and belief, LJAS owns the following trademarks

17 4,903,968 (“Minifigure Trademark”). A copy of the respective Registration