HA Bricks in Legal Troubles

[Phil B]

4 minutes ago, UltraViolet said:

I was going to make exactly your point - LEGO needs to be clear up front about what constitutes violations instead of waiting for someone to step into their murky trap.

https://www.uspto.gov/page/about-trademark-infringement

Quote

 

About Trademark Infringement

 

What is trademark infringement?

Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.

You cannot expect LEGO to spell out every way you can cause this confusion - rather, you need to ensure yourself that your product does not infringe on a trademark, and then it is up to LEGO to provide proof you did violate their trademark if they want to sue you (and they will first send you a Cease & Desist order, which it seems like you can discuss and remediate without ever needing to go to court).

[Toastie]

24 minutes ago, dtomsen said:

own team of lawyers who have fought those from TLG on numerous occasions by now - lost and won a few, a few still ongoing but settled most out of court afaik.

Yup, that's what I heard - and it tells a lot ...

[michaelgale]

28 minutes ago, Phil B said:

You cannot expect LEGO to spell out every way you can cause this confusion - rather, you need to ensure yourself that your product does not infringe on a trademark, and then it is up to LEGO to provide proof you did violate their trademark if they want to sue you (and they will first send you a Cease & Desist order, which it seems like you can discuss and remediate without ever needing to go to court).

Sure, we can't expect TLG to make an exhaustive list of practices and scenarios that would constitute a trademark violation.  Things like prohibition of TLG logos and brand assets are obvious.  However, clear rules for the vast majority of potential use cases can be defined and would be very helpful.  Specifically, guidelines for product descriptions, a range of different disclaimer texts for different applications (rather than the typical non-specific "Fairplay" text), acceptable use of TLG elements integrated in another product, etc.

The reality is that TLG is a global business with a powerful and valuable brand.  Protection of this brand is a major strategic imperative from their perspective.  However, I want to believe that this aim can be achieved with more "tools" besides aggressive legal action.  A framework of engagement and partnership with other business is surely better.  If anything, it would result in far better PR outcomes for TLG and its broader relationship with the fan community...

 

Edited May 28 by michaelgale
typos

[Phil B]

9 minutes ago, michaelgale said:

The reality is that TLG is a global business with a powerful and valuable brand.  Protection of this brand is a major strategic imperative from their perspective.  However, I want to believe that this aim can be achieved with more "tools" besides aggressive legal action.  A framework of engagement and partnership with other business is surely better.  If anything, it would result in far better PR outcomes for TLG and its broader relationship with the fan community...

 

I fully agree with this statement. And just for the record - I am not a staunch defender of LEGO, but I also don't see them as the enemy .. trying to get some balance against the "the sky is falling" statements that were made earlier.

[UltraViolet]

Exactly what Michael said, again.  I'm not dumb, and anyone starting a business should either read up on the basics of trademark law or hire someone to consult on it for them.  That said, clearly many business entities are having difficulty knowing ahead of time whether or not they are going to get in trouble with LEGO's legal department on a large variety of 'infractions'.  Maybe HA Bricks didn't do their homework, but I'm hard pressed to believe they acted maliciously.

Edited May 28 by UltraViolet

[Duq]

4 hours ago, Hod Carrier said:

I do understand the strength of feeling about this, but I do fear we're at risk of slipping into hysteria. We've had a couple of very informative contributions from @Phil B in this thread today, which I feel give a very balanced view from the perspective of someone who has been in a broadly similar position to HA Bricks and can explain a bit more why this is (or at least may be) happening.

I also wonder whether we are overstating the importance that we as a community really have to LEGO. The argument that retailers like HA Bricks are helping LEGO to grow the hobby is unlikely to hold much water given that we are a niche within a niche, even within the AFOL community which makes up only a fraction of their customer base. They neither need us in this capacity nor will they miss us if we turn our backs on them. But even if the contention were true, does that really give carte blanche for folk to infringe on registered trademarks or other legal rights, especially when, as @Phil B demonstrates, there is a way to navigate through this issue without ending up in court. And why shouldn't LEGO, like every other brand, exercise it's right to legal protection of it's property, whether physical or intellectual?

Like most of us here, I am not privy to the full chronology of this, but I doubt that this situation went from zero to court action immediately without some other discussions and whatnot in the interim.

We are a niche, but trains are always popular at shows. Lego hasn't completely pulled the plug on trains for adults. You can look at that the other way as well: is it worth going after that niche within a niche? HA Bricks probably sells less in a year than Lego in two minutes. Is someone who sells a few dozen or even a few hundred custom sets really damaging the brand?

There's a lot of room between carte blanche and killing off a small business. I don't know what was proposed either way before it got to court, but I do wonder if there really wasn't a better way out. I've been critical of the mothership for a while; the ever rising prices and the continuing quality issues don't go well together. This affair with HA Bricks has left a very bad taste in my mouth. I'm not about to put my entire collection on eBay, but something will change.

And no, I'm not an outsider, and not entirely unbiased. I've known the guys who designed that Dutch loco for years, and I've met Hein (HA Bricks) a few months ago in the Netherlands. Maybe that's why this is hitting me harder than a lot of other AfoLs.

 

[UltraViolet]

4 minutes ago, Duq said:

We are a niche, but trains are always popular at shows. Lego hasn't completely pulled the plug on trains for adults. You can look at that the other way as well: is it worth going after that niche within a niche? HA Bricks probably sells less in a year than Lego in two minutes. Is someone who sells a few dozen or even a few hundred custom sets really damaging the brand?

There's a lot of room between carte blanche and killing off a small business. I don't know what was proposed either way before it got to court, but I do wonder if there really wasn't a better way out. I've been critical of the mothership for a while; the ever rising prices and the continuing quality issues don't go well together. This affair with HA Bricks has left a very bad taste in my mouth. I'm not about to put my entire collection on eBay, but something will change.

And no, I'm not an outsider, and not entirely unbiased. I've known the guys who designed that Dutch loco for years, and I've met Hein (HA Bricks) a few months ago in the Netherlands. Maybe that's why this is hitting me harder than a lot of other AfoLs.

 

I'd like to know what the effect on Hein will be.  Can he even afford the cost of the judgement, let alone legal fees?  LEGO seems to have basically slammed and locked the door to him staying in this business in any form.  It's important to know the character of the people who get stomped by multi-national corporations, as they are not all China-based knock-off artists or cons.

[Duq]

Right now his website is gone. I'd imagine he's going to take a few days (or longer) to consider what's next. Appeal won't be cheap. He may well decide that he's had enough. Time will tell.

[Vilhelm22]

1 hour ago, UltraViolet said:

I just ordered custom train wheels from Breckland Bricks.  Sure hope they aren't under the gun next.

I know the guy personally and it seems like he should be fine I think.  None of his stuff is actual LEGO but is 3D-printed custom stuff TLG does not make itself.  For legal purposes, he’s effectively just a 3D-printed parts producer of compatible pieces with the LEGO system.  He’s said absolutely nothing in the way of how he’s being affected (yet).

 

 

 

 

HA Bricks on Facebook has changed its cover photo from a custom locomotive (with presumably offending parts) to the company’s own 3D printed wheels in a way that suggests it’s not completely dead.

Edited May 28 by Vilhelm22

[dtomsen]

Some of the train wheels from HA Bricks are actually molded 

[Shiva]

7 hours ago, Duq said:

All I can say is [censored] you, you [censored] greedy corporate [censored].
This is total BS. It does not hurt the brand. Their own inferior quality is hurting them. To go after a one-man shop that's generating business for them, not costing them a penny, and put him out of business? Is that really what LEGO has turned into?

Time to reconsider why I'm spending the amount I spend on a company that cares so little about its customers anymore.

I would recommend you reading the following post ->

link correction.

Edited May 28 by Shiva

[JopieK]

"Wednesday May 29, 2024 | The latest news first on NU.nl

Dutch people are no longer allowed to sell self-built LEGO trains
By our economics editors
May 28, 2024 at 12:29
Update: 13 hours ago

A Dutchman who builds real trains with LEGO bricks and resells his buildings must stop doing so. LEGO believes that it is infringing the trademark rights of the largest toy manufacturer in the world and the judge has ruled in favor.
The Dutchman must stop selling LEGO trains through his company HA bricks within two days. He must also share all his sales figures with the toy manufacturer.
If the man does not do this, he will have to pay LEGO 1,000 euros per day. The manufacturer can also demand an additional 500 euros per product sold. The Dutchman must also pay 16,000 euros in legal costs to the toy company.
The Dutchman sees his buildings as a tribute to LEGO and thought he was reselling the goods according to the rules.
But the preliminary relief judge ruled differently. Because he printed the LEGO bricks and provided them with ball bearings, he permanently changed the appearance of the bricks. According to the judge, this is simply not allowed."

But I guess they will also attack the use of stickers but than for other reasons (e.g. copyright violations).

https://www.nu.nl/economie/6314601/nederlander-mag-geen-zelfgebouwde-lego-treinen-meer-verkopen.html

So summarize: all customizing small companies are basically screwed... 16.000 euro, the costs of a high end UV printer, just in legal costs... 

1000steine Dirk also gave a link to the actual verdict, mostly in Dutch but here it is:

https://uitspraken.rechtspraak.nl/details?id=ECLI:NL:RBDHA:2024:7992&showbutton=true&keyword=lego&idx=1http:%2F%2F

This might well be the start of the end for the hobby for many, many AFOLs.

[Toastie]

2 hours ago, JopieK said:

This might well be the start of the end for the hobby for many, many AFOLs.

Well, yes, when TLG's bricks are used for turning them into something way better than what TLG ever accomplished.

But wait, there is more, there always is: Why not using e.g. GoBricks? These folks may even be happy to cooperate ... or at least some suppliers of GoBricks bricks may be.

The lawyers TLG hired in this case behaved like a**holes. The judge - well, you know, a judge is a judge; when the "prosecution" ^^ brings strong legal arguments and there is essentially no tough defense, then hey, what should the judge do.

My take on this is: Goodbye TLG, thank you for all the fish. It was fun, it was good, you impressed me when I was younger, and in the end you just suck. I may continue buying this <$4 plastic bag type stuff from you when I am traveling, because I find it rewarding to bring something home for memory sakes. But that should be it. 1965 I got my first LEGO set. 2024 - I did not buy anything from TLG. 2023 it was "used (vintage) LEGO stuff", same some years before - actually these sets and pieces seem to come from a totally different "TLG". 

I just go East. No end to my hobby there, not even close.

All the best,
Thorsten

[Duq]

@Toastie You meant "So long, and thanks for all the fish" ;-)

Yes, you are dependent on the judge to a degree. When I separated, the judge ruled that my ex could keep my computer because she had two text files with a diary on it, and some IT expert had blinded the judge with science, and told him that it's impossible to delete those files beyond the point where they can be retrieved. That was a PC I'd built myself with 100k of my files on it... 

Anyway, if I understand the ruling correctly, this means all custom brick printers will have to shut down. They alter Lego bricks without explicit permission, and using a process TLG has no control over.

[JopieK]

Probably a solution could one would only sell based on individual requests and try to make it in such a way that the buyer accepts responsibility (and the seller can say, well I just sold a service, not actually a product)... I just did a custom built for some friend and asked a brick printer to print some text on tiles. Arguably me sending the parts to the printer, asking them to put the text on it as a service and shipping the items back (again as a service) to me will be a much harder case for LEGO to fight against.

This will definitely but large dents in the feeling we all have for TLG and I totally understand you @Toastie! I don't go so far yet, but maybe I will have a different opinion in future (what if they would also come after people that are part of this community here for example (I won't mention their names but we all know them...). 

@Duq that is really horrible... so-called IT expert I would say... There is no justice in that...

[Hod Carrier]

This isn't the end of the world for the hobby, as I'm sure there will be ways around this. One option would be to sell a kit of parts (e.g. bearings and axles) that the consumer can then add to their own LEGO elements and to either offer a sticker sheet that the consumer can choose to use or to provide an optional parts printing service as outlined by @JopieK above.

That said, it is a harsh judgment for HA Bricks. I don't know what the normal range of penalties for trademark infringement under European law are, but these costs do seem punitive. That said, there is a difference between thinking that you know where the boundaries are and doing your research to find out. As I hinted above, I think that, as a community, we need to get away from the idea that we're doing LEGO some sort of favour by helping to grow the hobby, as that leads to the erroneous assumption that they will somehow see and understand this and smile benevolently on us. 

[JaBaCaDaBra]

Excellent action mr lego

indulge in your sets with worthless wheels and do not make sets that people want

instead sew them, good action, you will get rich now.

[zephyr1934]

6 hours ago, Duq said:

Anyway, if I understand the ruling correctly, this means all custom brick printers will have to shut down. They alter Lego bricks without explicit permission, and using a process TLG has no control over.

But Lego has known of and tolerated 3rd party printing and otherwise "damaging" bricks for decades. Brickworld has been distributing 3rd party engraved LEGO brick badges from their first convention roughly 20 years ago and checking the current BW web page, you get an event brick and have the option of ordering a brick built badge with your name printed or engraved on it. Lego has sponsored that convention from the start (I don't know the current status of Lego sponsorship, but they have sponsored many years). Presumably the same is true for many other fan conventions that Lego sponsors. It's not just conventions, there are a lot of First Lego League trophies going back decades that include 3rd party printed or modified bricks?

I suspect more happened in the case of HA, e.g., there must have at least been a cease and desist letter that spelled out how Lego thought HA was infringing. While I'm no expert, that photo early in this thread showing "HA models with 100% Lego parts" could be problematic.

Maybe it is simply saying that the modified bricks are Lego that is the issue. If you are selling modified bricks, without identifying the source, that might be okay.

But if lego does start actively pursuing "no reselling of unmarked modified bricks", hopefully they will also offer a means to "mark" modified bricks, e.g., using a small punch on just one stud to damage the lego logo.

[SerperiorBricks]

Last I checked, LEGO sets don't come with an EULA or Terns of Use from LEGO, so I think that the argument of 'you can't use bricks this way' from LEGO's lawyers is a poor precedent to the community. It would be excessively hypocritical if LEGO decides to go after (exclusively) custom brick printers following this, given the history with even engraving LEGO bricks that LEGO has supported. Especially if many of those members are LAN members...

LEGO needs to come forward with these rules to the consumer. They shouldn't just decide when to start enforcing these restrictions through C&D's. 

[Duq]

2 hours ago, zephyr1934 said:

I suspect more happened in the case of HA, e.g., there must have at least been a cease and desist letter that spelled out how Lego thought HA was infringing. While I'm no expert, that photo early in this thread showing "HA models with 100% Lego parts" could be problematic.

Maybe it is simply saying that the modified bricks are Lego that is the issue. If you are selling modified bricks, without identifying the source, that might be okay.

But if lego does start actively pursuing "no reselling of unmarked modified bricks", hopefully they will also offer a means to "mark" modified bricks, e.g., using a small punch on just one stud to damage the lego logo.

Nope, it's not the mentioning of Lego parts on the box, it's modifying parts. About the marking, Technic bricks don't have a Lego logo on the studs. You'd have to look very closely inside the brick to find the logo.

1 hour ago, SerperiorBricks said:

Last I checked, LEGO sets don't come with an EULA or Terns of Use from LEGO, so I think that the argument of 'you can't use bricks this way' from LEGO's lawyers is a poor precedent to the community. It would be excessively hypocritical if LEGO decides to go after (exclusively) custom brick printers following this, given the history with even engraving LEGO bricks that LEGO has supported. Especially if many of those members are LAN members...
 

You can use your bricks any way you want, and modify or print them any way you want. It's when you start selling them that you have a problem.

The points about Lego supporting/ endorsing events with 'official' engraved or printed bricks are interesting...

[JopieK]

We can at least do something:

"Friends from the afol community have started a crowdfunding campaign: https://gofund.me/8c7581ed"

[zephyr1934]

1 hour ago, Duq said:

Nope, it's not the mentioning of Lego parts on the box, it's modifying parts. About the marking, Technic bricks don't have a Lego logo on the studs. You'd have to look very closely inside the brick to find the logo.

There are a lot of details that we do not know about here, including the exact nature of the ruling and the scope to which it will transfer to other situations. But time should tell in those regards.

Presumably someone who sells roller bearing train wheels only saying that they are compatible with Lego is at lower risk than someone who sells roller bearing train wheels explicitly stating that they use modified Lego parts.

If indeed it is now illegal to sell modified lego parts, technically that would also outlaw the sale of used parts since they have unknown modification in the form of wear and damage that can include cracks, scuffs, marks, stickers, sun damage, discolorization, etc. I think it is within the TOS on bricklink to sell a broken part as long as that fact is disclosed, with no distinction between accidental or deliberate damage. If it remains legal to sell used parts then what's to stop the 3rd party vendors to say the printed or modified parts are simply "used."

But taken to the extreme, there are ways of marking items as "no longer from the manufacturer". In the US, for garments I think they cut the tags off of them, for books and magazines they remove the cover, for passports and drivers licenses they punch a hole in them (not really a product, but similar concept of voiding). There could be a simple way of doing similar to lego. Nullifying all of the studs would be arduous, especially for hollow studs, hence, the idea of just using a metal punch to put a "dot" in ONE of the lego logo's to show the part has been invalidated.

 

[dr_spock]

It's not too difficult to program your CNC mill to remove the LEGO logo in addition to engraving the bricks.

 

7 hours ago, Duq said:

Nope, it's not the mentioning of Lego parts on the box, it's modifying parts. About the marking, Technic bricks don't have a Lego logo on the studs. You'd have to look very closely inside the brick to find the logo.

You can use your bricks any way you want, and modify or print them any way you want. It's when you start selling them that you have a problem.

The points about Lego supporting/ endorsing events with 'official' engraved or printed bricks are interesting...

I don't think you can do minifigs printed with your event or other trademarks any longer.   Minifigs are trademarked.  That could be trademark dilution.

[MAB]

On 5/28/2024 at 7:01 PM, UltraViolet said:

I am quite confident that we have not seen the last of this - LEGO going after hobbyist individuals. 

This was not a hobbyist individual. They were selling items, and using LEGO trademarks to sell them. Producing and selling the items makes them a company, not someone doing it as a hobby.

LEGO are perfectly fine with a hobbyist buying their items and adapting them for their own personal use.

[JopieK]

34 minutes ago, MAB said:

This was not a hobbyist individual. They were selling items, and using LEGO trademarks to sell them. Producing and selling the items makes them a company, not someone doing it as a hobby.

LEGO are perfectly fine with a hobbyist buying their items and adapting them for their own personal use.

You have some points there, but I don't agree. This is how it goes (at least how it worked in our case), we hated the old 12V trains having faded logo stickers, so we found a printer that allowed us to print replacements but as it is was an expensive machine we could only afford it on a loan and needed to pay of that loan before making money. Our printer broke down twice (3000 euro for a new printing head). Nowadays you can get Chinese UV printers that could do white but that was impossible a few years ago. We basically only used the small profit we had to go to events and buy LEGO for our hobby... For some people it evolves into a day job (as with Bricklink sellers) but for many others it stays a 'professionalized' side project.