So, if you change someone’s art enough, it’s fair use, right?
Not so fast.
In late September, a federal judge in Connecticut told LEGO pretty much the opposite. The fight is over a tiny jacket on a LEGO minifigure, and it’s a real-world lesson in how the fair use defense actually works in a copyright case.
What happened in the LEGO fair use case?
The jacket
James Concannon designed a one-of-a-kind jacket for Antoni Porowski to wear as a co-host on Netflix’s Queer Eye. It’s black leather with white art all over it. You’ll see a yin-yang with smiley faces, a peace sign, painted-on safety pins, and a few edgy phrases in white graffiti-style letters. Concannon gave the jacket to Porowski as a gift. The understanding was that Porowski would wear it on the show.
The LEGO set
About a year later, LEGO got a license to make a Queer Eye building set. That license covered the likenesses of Porowski and the other stars. The set came with a Porowski minifigure wearing, you guessed it, a black jacket with white painted symbols and white graffiti-style phrases. Some details were changed or left out, but the jacket was definitely “inspired” by the Concannon design, at minimum.
Concannon sued. Among other things, he claimed the LEGO set infringed his copyright in the jacket.
Judge Omar Williams of the District of Connecticut ruled that LEGO had not shown its use of a jacket design was fair use. The jacket was worn by Antoni Porowski on Queer Eye. The judge denied part of LEGO’s motion for summary judgment. (That’s a request to win the case without a trial.)
3 fair use lessons for businesses that borrow creative work
- There’s no “change it enough” copyright safe zone. LEGO made lots of changes, both to the look and to the wording. It still couldn’t show fair use. If your team is adapting someone else’s design, “we tweaked it” is not a copyright strategy.
- Showing a real person accurately doesn’t always let you copy a work tied to that person. The court kept coming back to one question. Why did LEGO need this jacket in particular?
- A license to one work may not cover every copyright inside it. LEGO had a license from Queer Eye. It still got hit with a copyright claim over a different artist’s work that showed up on the show. So when you license a show, a brand, or a person’s likeness, it pays to ask whose art is in the picture. (This is where the way your licensing deal is built really matters.)
Why didn’t fair use protect LEGO from the copyright claim?
LEGO asked the court to end things early in a summary judgment. Part of its argument alleged a defense: that any copying was fair use under the Copyright Act, 17 U.S.C. § 107. Fair use lets you use someone’s copyrighted work without asking in some cases, and courts weigh four factors to decide.
The judge went through all four. Unfortunately for LEGO, none of them went LEGO’s way.
Fair use factor 1: Purpose and character of the use (including whether the use is of a commercial nature or is for nonprofit educational purposes)
Translation: Why and how did LEGO use it?
Courts look at how the party claiming fair use is using the copyrighted work, and are more likely to find that nonprofit educational / noncommercial uses are fair (BUT NOTE: not all nonprofit education /noncommercial uses are fair!). Courts will balance the purpose and character of the use against the other factors.
LEGO said it wanted to show Porowski the way he really looks and to promote its tie-in with Queer Eye. The court saw that as commercial, not transformative. (Transformative just means the new use brings a new purpose or message to the table.) So this one went to Concannon.
A few things stood out:
- The court said that copying a work just to show that work accurately isn’t transformative.
- The court also doubted the jacket had really become part of Porowski’s look, so it wasn’t clear LEGO needed to copy it to show him accurately. He wore it for one episode, plus some quick flashes in other episodes and promos. That’s pretty different from, for example, the NBA player tattoos in Solid Oak Sketches v. 2K Games, which had actually become part of those players’ likeness. It’s also different from a famous clothing style that has merged with a person’s look.
Fair use factor 2: Nature of the Copyrighted Work:
Translated: What kind of work is it?
This factor analyzes the degree to which the work that was used relates to copyright’s purpose of encouraging creative expression. Copying a more creative or imaginative work (such as a novel, movie, or song) is less likely to support a claim of a fair use than using a factual work (such as a database, technical article, or news item).
The jacket itself was a creative expression. The court said the jacket was “[c]learly . . . creative and not factual,” which cut against fair use.
Alternatively the jacket had been :published,” which can sometimes help in a fair use argument. For LEGO, though, it didn’t count for much.
Fair use factor 3: How much did LEGO take?
LEGO argued it copied “only what was necessary” to show Porowski.
The court didn’t buy it.
In the judge’s view, LEGO only made the changes “necessitated by the figurine’s size and [LEGO’s] commercial needs.” What LEGO kept was the “heart” of the copyrighted work: the overall look, the general design elements, and where each one sat on the jacket. This factor went to Concannon too.
Fair use factor 4: Did it hurt the artist’s market?
LEGO said its use would barely touch Concannon’s market. There was no proof he’d ever get into toys, and he hadn’t licensed the design to anyone else. That seems rational, right?
But court wasn’t convinced. It pointed to the fact that the minifigure was built off his work, and said: “[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.”
This factor went to Concannon as well.
Wait… don’t these kind of contradict?
[In my opinion] Sort of, yes. This ruling shows some of the tension built into the fair use factors, and why it’s not an easy, quick answer– and it’s not a defense that I like to rely on when combatting copyright infringement claims.
Under factor one, the court faulted LEGO for “entirely eras[ing]” the original expression, so the use didn’t serve any of the public good that fair use is there to protect. Under factor three, though, the court said LEGO copied the “major elements” of the jacket.
In a way, LEGO lost from both sides. The (i) changes it made and the (ii) parts it kept both served business goals, and neither reason fit the true purpose of fair use. As the court put it, taking another artist’s work and applying the ‘LEGO DNA’ to it does not qualify as justification. Ouch.
What next?
As of today (10/19) there are motions still flying. The court has to make several more decisions on how the case can proceed. However, this ruling illustrates the complexity of relying on fair use– and why we really don’t like to put all of our “legal eggs” in that narrow basket.
Before You think “Fair Use,” Let’s Talk
Thinking about putting someone else’s design, artwork, or likeness on your product? Before it ships, let’s look at it together. Contact us today and get your legal house in order before production.