TLG Ban Custom Minifig Printing.

[Peppermint_M]

"Customized LEGO Minifigures with printed 3rd party logos, names of organizations, and trademarks are not allowed. It’s not acceptable to use of the registered Minifigure trademark in combination with 3rd party symbols. The reason for the rule is that a trademark cannot simultaneously serve as an exclusive, representative symbol of two different entities. The ability of the Minifigure to serve as a distinctive LEGO brand symbol is reduced when a Minifigure is also printed with the name, logo, symbol, or other representative indicia of another entity. Left unchallenged, such use by third-party entities could put our rights in the Minifigure at risk and could eventually result in the loss of our company’s exclusive rights. This is something that we cannot risk.

Therefore, we must request that the community refrain from printing any 3rd party logos, names of organizations, and trademarks onto LEGO Minifigures, and refrain from using, ordering, distributing or selling Minifigures in such customized versions.

We understand that the AFOL Community would still like to celebrate their community events and activities via use of customized items and are pleased to confirm that according to current corporate policy fans are free to print graphics on LEGO brick elements and custom builds made of LEGO brick elements to celebrate your community activities and events."

Ah, The LEGO Group. You really like to kick the most loyal fans in the teeth, don't you?

I can't see the legal department letting non-trademark graphics slide, so more than likely, blanket ban on any outside printing by clubs and businesses.

I also love the "according to current corporate policy" bit about custom bricks. So give it time and that is going to get a cease and desist from legal too.

[MAB]

Yet they don't seem to do much about custom printers making and selling licensed prints on genuine LEGO,  even when they are from current themes such as Super Heroes, Stranger Things, etc.

[Graupensuppe]

45 minutes ago, Peppermint_M said:

The ability of the Minifigure to serve as a distinctive LEGO brand symbol is reduced when a Minifigure is also printed with the name, logo, symbol, or other representative indicia of another entity.

Uhm...

[Lyichir]

I don't see why this new policy would rule out custom printing that doesn't include third-party logos or trademarks. There's a difference between a custom shirt print that just depicts a different outfit and one that (especially if bought secondhand without the context of where it came from) would seem to imply a corporate collaboration with or endorsement by Lego that doesn't actually exist. As far as I'm aware a lot of third-party customizers already would say no to a custom print of that sort unless the organization that owned the logo or trademark in question was commissioning them (I remember wanting to get a 1x8 brick printed with the logo of a non-Lego convention I attended and getting declined). It seems to me that that's the main casualty of this new policy, especially for things like Lego conventions that wanted to print and sell custom figs wearing their own merch—which, yeah, is a bummer. But I don't think there's any reason to panic about all custom fig printing being shut down altogether.

I also don't think Lego's own figs that feature third-party logos are some sort of hypocrisy here. Those were produced in the context of a licensing partnership between Lego and those other companies, which inherently involves both companies trademarks being used together.

[Toastie]

3 hours ago, Peppermint_M said:

could put our rights in the Minifigure at risk and could eventually result in the loss of our company’s exclusive rights

So this is, what this great company, caring so much about virtually everything, the core of the matter? Why don't they make it the core of the matter, to simply be better than these other entities?

Oh my. I am loosing ever more with TLG. But: Who cares, I know. It makes my life so much easier, though, as I feel much more "freed", to just walk away.

Play well.

Thorsten

[danth]

3 hours ago, Graupensuppe said:

Uhm...

Nice! You have perfectly demonstrated that they don't believe their own argument.

I, however, do believe their argument...and demand that all licensed minifigs immediately cease production! 😂

Anyway, I don't know about Europe, but in the US there's probably no way to enforce something like this.

[dr_spock]

That's going to cause some AFOLs strong trademark headaches.  Maybe some aspirin might help?.  Didn't the USA seized the Bayer-Mayer's Aspirin trademark and it was degenerated?  You could write to your representative in the US Congress.

 

 

[Johnny1360]

Lol, I knew there was a reason, I have no use for Minifigures.

[MAB]

12 hours ago, Peppermint_M said:

"Customized LEGO Minifigures with printed 3rd party logos, names of organizations, and trademarks are not allowed. It’s not acceptable to use of the registered Minifigure trademark in combination with 3rd party symbols. The reason for the rule is that a trademark cannot simultaneously serve as an exclusive, representative symbol of two different entities. The ability of the Minifigure to serve as a distinctive LEGO brand symbol is reduced when a Minifigure is also printed with the name, logo, symbol, or other representative indicia of another entity. Left unchallenged, such use by third-party entities could put our rights in the Minifigure at risk and could eventually result in the loss of our company’s exclusive rights. This is something that we cannot risk.

If they believed that, maybe they should be clear what minifigure means across all LEGO owned companies. The LEGO website is clear about distinctions between minifigures and droids, skeletons, etc. Collectable series that included Unikitty had character written on the packet, not minifigure. Yet LEGO's bricklink has cars, wardrobes, cups, single bricks, and so on listed as minifigures. They need to be consistent as to what a minifigure is if they want to protect it.

Edited June 30, 2022 by MAB

[Peppermint_M]

2 hours ago, MAB said:

Yet LEGO's bricklink has cars, wardrobes, cups, single bricks, and so on listed as minifigures. They need to be consistent as to what a minifigure is if they want to protect it.

Exactly! I was looking at this in the "case" against Zuru and their little figures. There is limited match-up between Zuru product and the LEGO Minifigure (How long before they ask us to put ™ every time?) and Bricklink had the Cars built characters listed as minifigures!

I honestly think this is in reaction to or fallout from that case. 

Sure, I may be a cynic, but it would be much quicker and easier for TLG Legal to pressure anyone custom printing Minifigures in any way than it would be to "risk" them breaking this "law". Again, TLG can hold IP ownership on their minfig prints, and minifig part design, so allowing other businesses to print onto blank LEGO minifig torsos could risk the foundation for that trademark ownership.

It is just sad that they are going after the community that cares the most about the product. The average Joe is going to call any toy construction brick with studs a Lego (or legos, ugh). It is the AFOLs who make the biggest drive for LEGO only, no compatible brands, etc. I could go to Wilko and get 100 blank bricks and have them printed for badges, but I do not know 100 LEGO fans who would want the off-brand brick! 

[MAB]

9 minutes ago, Peppermint_M said:

It is just sad that they are going after the community that cares the most about the product. The average Joe is going to call any toy construction brick with studs a Lego (or legos, ugh). It is the AFOLs who make the biggest drive for LEGO only, no compatible brands, etc. I could go to Wilko and get 100 blank bricks and have them printed for badges, but I do not know 100 LEGO fans who would want the off-brand brick! 

I think you can still print on LEGO bricks according to their policy. We understand that the AFOL Community would still like to celebrate their community events and activities via use of customized items and are pleased to confirm that according to current corporate policy fans are free to print graphics on LEGO brick elements and custom builds made of LEGO brick elements to celebrate your community activities and events.

There is a really simple work around, don't give out custom minifigures. Instead, give out custom printed parts, such as a torso. Parts do not make a minifigure until they are assembled. LEGO even refers to them as bricks ("search for same brick", "you haven't picked any bricks", etc) through their pick-a-brick service. So buy what LEGO themselves call 'bricks' and then do custom prints on these 'bricks' according to their policy, just don't complete a minifigure.

 

[Feuer Zug]

6 hours ago, MAB said:

There is a really simple work around, don't give out custom minifigures. Instead, give out custom printed parts, such as a torso. Parts do not make a minifigure until they are assembled. LEGO even refers to them as bricks ("search for same brick", "you haven't picked any bricks", etc) through their pick-a-brick service. So buy what LEGO themselves call 'bricks' and then do custom prints on these 'bricks' according to their policy, just don't complete a minifigure.

Might ye be a lawyer? Either way, I like your thinking. LEGO has a bit of an image issue if they really try to push it in court. I'll bet they'd just send a few nasty cease and desist letters and hope that takes care of everything.

[danth]

7 hours ago, MAB said:

There is a really simple work around, don't give out custom minifigures. Instead, give out custom printed parts, such as a torso.

Or, give out whatever you want, and just don't use the Lego trademark or branding (e.g their actual logos). Which is all Lego can legally ask.

And no, Lego minifigs are not a trademark, they are a product.

Anyone can buy a product, modify it, and sell it. Lego asking us to not do that is just a ridiculous overreach with no basis in law (in the US at least).

Obligatory "I'm not a lawyer".

Edited June 30, 2022 by danth

[Karalora]

30 minutes ago, danth said:

Or, give out whatever you want, and just don't use the Lego trademark or branding (e.g their actual logos). Which is all Lego can legally ask.

And no, Lego minifigs are not a trademark, they are a product.

Anyone can buy a product, modify it, and sell it. Lego asking us to not do that is just a ridiculous overreach with no basis in law (in the US at least).

Obligatory "I'm not a lawyer".

IANAL either, but I think the iconic appearance of the minifig is a registered LEGO trademark, and this extends to physical minifigs. I don't know whether this extends to grounds to sue for infringement if TLG says "Hey guys, please don't use our trademark in this way" and someone responds with "How 'bout I do anyway?" It would probably depend on the judge.

[Vindicare]

This sounds like a copyright issue more than a custom printing issue. I know of at least one person whose sigfig has their Instagram name along with the app’s logo printed on the torso. I doubt they’re dissuading people from doing that sort of printing. But I haven’t dug into this much yet. 

Although...the above example does have a corporate logo...oof. I don’t know. 

Edited June 30, 2022 by Vindicare

[danth]

1 hour ago, Karalora said:

IANAL either, but I think the iconic appearance of the minifig is a registered LEGO trademark, and this extends to physical minifigs.

If physical Lego minifigs are a "trademark", then Lego could just sue anyone who sells minifigs, at all. So, you buy a CMF, later you want to sell it on ebay, and Lego sues you. Right? Or am I missing something?

I think this is a just a request to the community. Like, "please don't do this." But I don't know. Lego has sued people before without any legal basis in reality and lost, so who knows.

They can definitely cut you off from special privileges though. If I were a Lego fan website and wanted access to interviews etc, I wouldn't be printing custom minifigs.

Edited June 30, 2022 by danth

[Karalora]

1 hour ago, danth said:

If physical Lego minifigs are a "trademark", then Lego could just sue anyone who sells minifigs, at all. So, you buy a CMF, later you want to sell it on ebay, and Lego sues you. Right? Or am I missing something?

I think this is a just a request to the community. Like, "please don't do this." But I don't know. Lego has sued people before without any legal basis in reality and lost, so who knows.

They can definitely cut you off from special privileges though. If I were a Lego fan website and wanted access to interviews etc, I wouldn't be printing custom minifigs.

I think the main difference is the alteration of the minifig to promote another trademark. Someone just selling a minifig on the secondary market isn't piggybacking on the recognizability and popularity of the minifig to prop up something else. A customizer who creates a minifig to resemble a character that has never been done officially, and then sells it, is at least selling that minifig as a LEGO toy, probably to a LEGO fan, and almost certainly with ***CUSTOM*** plastered all over the listing. Someone who makes 50 minifigs with a third-party logo on the torsos to hand out to customers at a corporate event is in dodgier territory, and I think it's the latter that TLG would like to crack down on.

Not to say that this isn't a petty move, because I question how often that sort of thing actually happens to be worth worrying about.

But again, IANAL.

Edited June 30, 2022 by Karalora

[danth]

18 minutes ago, Karalora said:

Someone who makes 50 minifigs with a third-party logo on the torsos to hand out to customers at a corporate event is in dodgier territory, and I think it's the latter that TLG would like to crack down on.

Hmmm, if Lego can argue someone is trying to pass off custom figs as official Lego products (i.e. counterfeits), I could imagine more of a real legal footing there. Or do you mean the opposite? Trying to pass off Lego products as their own?

If I bought a bunch of cans of Coca Cola, and slapped "Danth Soda" labels on them, and sold them, would Coke sue me? Maybe they could...I have no idea.

Alright is anyone in here a real lawyer? Help! 😁

Edited June 30, 2022 by danth

[MaximillianRebo]

I'm also not a lawyer, but this seems to be the key sentence: "Left unchallenged, such use by third-party entities could put our rights in the Minifigure at risk and could eventually result in the loss of our company’s exclusive rights." I'm wondering if there's been some recent changes to Danish/EU copyright laws or perhaps a case where a company lost or had their IP/patents significantly watered down because they allowed third parties unrestricted use of their own IP. Kind of like the IP law version of adverse possession. Again, not a lawyer, just spitballing to see where TLG is coming from with this. As far as I know the minifig design is still under patent while basic brick designs are not, which would explain why TLG is ok with logo printing on bricks but not on torsos.

[Mylenium]

7 hours ago, MaximillianRebo said:

I'm wondering if there's been some recent changes to Danish/EU copyright laws

There's no changes to the law, but LEGO currently has several challenges in various courts and at the EUIPO. That's why they're scared witless over potentially losing their trademarks and some patents. That's all there is to this panicked call. It's too late one way or they other. There's plenty of evidence out there that they didn't care much about this in the past, which severely will weaken their case either way. They won't lose the trademarks likely, but they may have to instate more liberal policies and they clearly don't like that prospect...

Mylenium

[timemail]

If you are really interested in seeing trademark infringement cases look up "little trees" lawsuits. They make the air fresheners shaped like pine trees that you hang in your car, and sue anyone and everyone who infringes on what may look like it is trying to copy their idea. Everything from tree shaped dog toys to plane shaped air fresheners.

What is and isn't classed as trademark infringement is quite interesting in and of itself, but the limit they need to go to to ensure their pine tree air freshener is the only pine tree air freshener, and anything that could be classed as looking like a pine tree is in their sights regardless of actual use.

The way I understand it is that they ensure that the pine tree air freshener is always theirs and theirs alone. Similarly Lego want the shape of a minifig to be theirs and theirs alone. If you stand to make any profit as a result of using their minifigure shape then you should be in their sites. That would include providing any sort of company logo on a minifigure, as you are profiting based on their trademark.
As mentioned above the fact that they dilute what is a minifigure would definitely act against them in a court of law, but so would allowing a bunch of randoms to use the minifigure to promote their company, or club, or event. If it is seen as common use, and they allow it for common use, then it no longer becomes theirs and therefore people have a reasonable right to use or copy it.

[MAB]

1 hour ago, timemail said:

If you are really interested in seeing trademark infringement cases look up "little trees" lawsuits. They make the air fresheners shaped like pine trees that you hang in your car, and sue anyone and everyone who infringes on what may look like it is trying to copy their idea. Everything from tree shaped dog toys to plane shaped air fresheners.

What is and isn't classed as trademark infringement is quite interesting in and of itself, but the limit they need to go to to ensure their pine tree air freshener is the only pine tree air freshener, and anything that could be classed as looking like a pine tree is in their sights regardless of actual use.

The way I understand it is that they ensure that the pine tree air freshener is always theirs and theirs alone. Similarly Lego want the shape of a minifig to be theirs and theirs alone. If you stand to make any profit as a result of using their minifigure shape then you should be in their sites. That would include providing any sort of company logo on a minifigure, as you are profiting based on their trademark.
As mentioned above the fact that they dilute what is a minifigure would definitely act against them in a court of law, but so would allowing a bunch of randoms to use the minifigure to promote their company, or club, or event. If it is seen as common use, and they allow it for common use, then it no longer becomes theirs and therefore people have a reasonable right to use or copy it.

 

 

Yeah, it is the sort of thing where if you ask people what this is, most will say a LEGO brick (or a LEGO or LEGO). When it isn't.

I think the wording they are using is wrong, as they have shown that a minifigure advertising a brand is possible to have two trademarks - eg. theirs and Ford's. The problem they have when it is another company or fan group doing it outside of their knowledge.

 

[dtomsen]

3 hours ago, Mylenium said:

There's no changes to the law, but LEGO currently has several challenges in various courts and at the EUIPO. That's why they're scared witless over potentially losing their trademarks and some patents. That's all there is to this panicked call.

Spot on.

Corporate decision deemed absolutely nessesary trying to fit this strange non-corporate entity called the AFOL community into it.

[Mylenium]

57 minutes ago, MAB said:

The problem they have when it is another company or fan group doing it outside of their knowledge.

Yeah, absolutely. And a minifigure in a set is a whole different thing just as well because the set puts it in a different context.

Mylenium

2 hours ago, timemail said:

If it is seen as common use, and they allow it for common use, then it no longer becomes theirs and therefore people have a reasonable right to use or copy it.

They don't have to lose anything, and that is the crux here. Since LEGO do not offer any official way of licensing, they only have allowed the situation to become so muddy. People use their trademarks, logos and insignia wrong all the time simply because there is no way to just say "Here's 5 bucks for you, no let me print that friggin' logo on the box!". This is further complicated by their own loyalist armies (certified builders, user groups, select partners etc.) being allowed to use those trademarks in some form, but also having contributed to this mess of third-party IPs being used in relation to LEGO stuff. It's certainly quite a corner they've gotten themselves into with those inconsistent interpretations of their own rules...

Mylenium

 

[CP5670]

I don't see how they can ban what others do after they buy the product. Are they trying to make it like a software license where you only license the right to use the minifig in predefined ways? I doubt that would hold up in any court.