1. Rights Protection of LEGO-brand Toys

LEGO is a world-renowned toy brand, and its main products are interlocking plastic bricks. Its block toys involve knowledge in mechanics, mathematics, energy, physics, automatic control, programming and its other products cover fields of education, film and television, and games, which are loved by children and adults. However, the high price of LEGO bricks ranging from dozens to hundreds of dollars is unaffordable to many customers. Therefore, some manufacturers copied LEGO products and attracted a large number of consumers at lower prices, and LEPIN was one of them. However, LEPIN was not the originator of imitation LEGO toys. A few years ago, there were manufacturers in Europe and the United States copied LEGO products. Surprisingly, some still exist today and do not infringe LEGO's rights. The reason is that many of LEGO’s patents have already expired, then the related patented products have entered the public domain and were free to use by any unit or individual. These manufacturers made use of LEGO's expired patents and added innovative designs to form products with their own characteristics, thus forming a differentiated competition with LEGO. LEGO had tried to defend its expired patents, but neither the Office for Harmonization in the Internal Market (OHIM) nor the European Court of First Instance had backed it.

So, how does LEPIN constitute an infringement of LEGO?

In 2016, LEGO sued LEPIN in court, claiming that LEPIN's manufacturers and sellers plagiarized its copyrighted works and its package and decoration, which constituted unfair competition. It is reported that the products in which LEGO sued LEPIN infringed its copyright involved the "KNIGHTS KINGDOM" (Figure 1), "LEGENDS OF CHIMA", and "NINJAGO" series, including more than 60 LEGO minifigures. During the trial, the People's Court of Yuexiu District, Guangzhou explained whether the above-mentioned products are art works during the trial, arguing that: "According to the relevant provisions of the Implementation Regulations of the Copyright Law, the overall shape of the assembled three-dimensional model together with its corresponding LEGO minifigures are practical works of art constructed from building blocks. The expressions carried by these carriers are independently created by the plaintiff with certain originality and unique aesthetic significance. Therefore, the assembled three-dimensional model and the corresponding LEGO minifigures belong to the category of art works protected by China's Copyright Law. "^[1] While the corresponding products of LEPIN are almost identical to the LEGO products mentioned above, the court ruled that LEPIN infringed LEGO's copyright. Meanwhile, the court believed that the package and decoration of LEPIN toys were very similar to LEGO, which was enough to lead confusion and misidentification among consumers. LEPIN's behavior improperly obtained transaction opportunities that were not its own, and damaged the plaintiff's trading opportunities and competitive edge, which constitutes unfair competition behavior ^[1] and violates the Anti-Unfair Competition Law.

2. Status Quo of LEGO's Patents in China

The LEGO Group has not yet used patents to defend rights in its series of rights fights in China. Doesn’t LEGO have Chinese patent?

It can be seen from the current patent data published in China,  as of August 21, 2019, there were 44 exterior design patents of LEGO, of which six were in the state of effective protection (see Figure 2). While the patents that have been invalidated, were all unit components of the interlocking toys (see Figure 3).

Figure 2

Figure 3

As can be seen from the exterior design patents of LEGO, its valid patents do not include LEGO interlocking toys commonly found in the market. The interlocking toys involved in the invalid design patents are all single components of those building block rather than interlocked as a whole. The counterfeit products of LEGO toys are mainly building products in a complete assembled state (see Figure 4).The Chinese Patent Law Rule No.2 under Article 59 stipulates that the scope of protection for an exterior design patent shall be based on the design of the product shown in the picture or photograph. In other words, what is the view submitted by the applicant then what is protected by the patent. The knockoffs on the Internet are in the completely-assembled state of the product. Although the patented assembly units of the LEGO bricks may be used, these loose-packed units are significantly different in appearance from the assembled products, therefore, cannot be used to defend for the protection of the patented unit. In addition, the author has not yet seen LEGO’s exterior design patents related to building block products, such as packaging boxes and product labels.

As of August 21, 2019, there have been 60 invention patent applied by LEGO, 30 of which have been granted patents covering many fields, such as rule and production of building blocks, automation and electronics, computer programming, games and AR, etc. The invention patent protects the technical solution of the product from a technical perspective. As of now, The author has not found any other companies counterfeiting these patented technologies, and LEGO has not used its invention patents to defend rights. The counterfeit products of LEGO toys are all elementary interlocking toys.

3. The Protection of Interlocking Toys from Copyright Law, Patent Law and Anti-Unfair Competition Law

Interlocking toys are industrial products, and their appearance obviously belongs to the subject of exterior design patents. Some of the toys are derived from animated works, bearing the feature of artistry. They belong to art works, therefore they can be protected by copyright if they meet the relevant conditions.

In the LEGO v. LEPIN lawsuit, LEGO chose to sue under Copyright Law and Anti-Unfair Competition Law. Compared with patent rights, each law has its own advantages, but also limitations.

Compared with patent rights, copyright has a longer protection span, which is lifelong and 50 years after death, without the requirements of approval and annual fees to confirm the rights, and it shall automatically take effect from the date of completion of the creation. However, to use copyright for right protection, the rights holder needs to prove that the work is original, and submit design manuscripts, copyright registration certificates, and proof issued by the certification authority and so on. Among them, the copyright registration certificate is only used as evidence of the existence of the right and cannot be used as proof of right. In addition, if the subject of the dispute has sufficient evidence to prove that the work in question is original, the infringement does not hold. In other words, the copyright is easy to be obtained but challenging to be confirmed, which is weak in exclusivity ^[2]. At the same time, the copyright requires that the work has a certain level of artistic creation, which is difficult for interlocking building block toys to meet. The author believes that the LEGO company's interlocking toys can be identified as works, which is attributed to its large amount of film and television publicity. The LEGO animation and LEGO movie contain a lot of LEGO building block design elements. These building block designs constitute art works under the spread of the film and television carrier, which is difficult for ordinary interlocking toys to achieve.

The products involved in the LEGO v. LEPIN case were just part of LEGO's counterfeit products. There are still a large number of popular LEGO interlocking toys (such as architecture series, technology series, racing series, city series, etc.), which did not appear in the LEGO v. LEPIN case. Many of these toys are assembling models that imitate well-known designs. The author believes that it is difficult to meet the copyright requirements in terms of originality, such as the Sydney Opera House model in LEGO toys (see Figure 5). Some models that imitate well-known designs were produced after the LEGO Group purchased the copyright license. According to the relevant provisions of the Copyright Law of China, the licensor of copyright has no right to file infringement lawsuits against infringement of copyright by others, the right of action for infringement shall be exercised by the original copyright owner. For example, LEGO toys contain Marvel character models, but the LEGO Group cannot sue others for infringing the copyrights of their Marvel characters, only Marvel Cinematic Universe has the right. This regulation has brought many inconveniences to defenders in reality and made it harder to defend rights.

Compared with copyright, the term of patent protection is relatively short. The appearance patent span is 10 years and requires an application and annual fee. However, patents possess stronger exclusivity than copyright. Once the applicant obtained the patent right, after the filing date, whether it is an independently or non-independently created design, as long as it is the same or substantially the same as the design patent, it can be protected by the patent right. The approval date of the exterior design right is based on the application date. If the designs are the same, then the date of the first application shall prevail and its attribution is clear. Exterior design patents have lower requirements on the artistic quality of products than copyrights. For interlocking blocks that cannot obtain copyright protection but have certain aesthetics, obviously, they can be protected by exterior design patents. When the design is authorized, the right holder can exercise the right with the patent certificate. Although China's exterior design patents have not been substantively examined, they still have legal effect. At the same time, the patent right evaluation report can also be used to quickly remove infringing products on the e-commerce platform, which significantly improves the efficiency of rights protection.

The Anti-Unfair Competition Law is an essential supplement to the intellectual property system. It is also fundamental law, that is, when specific law is applicable, priority shall be given to the specific law, and when it cannot be effectively used for rights protection, the Anti-Unfair Competition Law is a life-saving straw for businesses, especially under the circumstances that well-known products being counterfeited.

4. Suggestions on the Protection of Interlocking Toys under the Current Intellectual Property Rights System in China

Interlocking toys are presented to consumers mainly in two states: assembled state and individual components. Copyright and patent rights can be selected for protection according to the product's manifestation.

(I) Interlocking toys with a specific assembly relationship

1. Original design

Judging from the court's judgment, the interlocking toys that have a specific assembly relationship and meet the originality and artistry can be protected by the Copyright Law. For such products, the applicant should actively register for copyright, meanwhile, pay attention to retaining the evidence during the creating process, such as original design drafts, design proposals, etc. Where conditions permit, rights holders should actively use multiple media platform(such as animation, film and television) to promote their products to meet the requirements of copyright.

In addition, the applicant should also actively apply for an exterior design patent. Judging from China's judicial practice, obtaining the protection of an exterior design patent does not affect its simultaneously or continuously protected by copyright. During the validity period of a patent, the use of patent rights has a stronger exclusivity. When the intersecting blocks are not recognized as art works in actual rights protection, patent rights can also be used as another guarantee.

2. Non-original design

If the interlocking model is based on other well-known designs, the protection of exterior design patents should be actively sought. It should be noted here that if the interlocking model only imitates a well-known existing design and is not significantly different from the existing design, it will not be a new design in the examination of the design patent application and will be classified as a case where no patent right is granted. If there is a certain innovative design based on the well-known existing design and the original well-known design's copyright still have attribution, the copyright owner's permission must be obtained before the design patent protection can be granted.

(II) The individual components of the toy

1. A single component with independent use value

From the LEGO v. LEPIN case, we can see that interlocking toy products can be protected by copyright when they meet the requirements for originality and artistry. For such products, exterior design patents can also protect them. For example, LEGO's minifigures are complete and independent building blocks (see Figure 6), which can be used independently and belong to a single component with independent use value.

2.A single component without independent use value

For a single component without independent use value, its artistic height is generally difficult to meet the requirements of the Copyright Law, so it is difficult to obtain copyright protection. At the same time, the exterior design patent stipulates that a single component without independent use value does not belong to the subject protected by the design patent and is not protected.

(III) Classic packaging decoration and labelling

The applicant should also submit the classic packaging decoration, labelling and other derivatives of the products to obtain comprehensive protection.

After the patent applying for authorization, the applicant can submit a patent right evaluation report, while further confirming the right, the evaluation report can also be used to defend rights in the market competition. After obtaining the authorization, the applicant can indicate his own patent number on the product packaging and proactively declare his scope of rights.

5. Summary

Interlocking toys can mainly seek the protection of the Copyright Law and the Patent Law, both of which have their advantages. The applicant can apply for a design patent on an original component or an assembled product with independent use value, and at the same time, keep original evidence for the original and artistic design, and actively register copyright to obtain copyright protection. More importantly, in the context of China's vigorous protection of intellectual property rights and the increasingly mature international intellectual property system, manufacturers of interlocking toys should actively innovate, abandon plagiarism, develop independent products and technologies, and strengthen independent intellectual property rights.

References:
[1] Guangzhou Intellectual Property Court. 2017. No. 431-449 paper of civil judgment

[2] Fan Li, et al. 2004. Analysis On Intellectual Property Protection of Practical Artworks, Art Science and Technology（4）

About the Authors: 

Chen Yi Exterior Design Examiner, Assistant Researcher of Patent Examination Cooperation Beijing Office of the National Intellectual Property Administration

Liu Qiang Exterior Design Examiner, Assistant Researcher of Patent Examination Cooperation Beijing Office of the National Intellectual Property Administration

Source: China IP Magazine, Issue 95