copying/explicit references let Roblox proceed with dubious (c) claim; Lego should be watching

Roblox Corp. v. Wowwee Gp. Ltd., 2023 WL 2433970, -- F. Supp. 3d --, No. 22-cv-04476-SI (N.D. Cal. Mar. 9, 2023)

Roblox runs a “digital world where users create virtual games and experiences and connect with other users.” Users interact with the platform through virtual characters known as “Avatars.” Roblox’s “Classic Avatars” are “humanoid figures with cylindrical heads, C-shaped hands, block-shaped bodies and legs, square or rounded arms, and cartoon-like facial expressions.” (Comment: That is, they’re just like Lego minifigs.) Roblox authorized plaintiff Jazwares to manufacture “Avatar Figurines,” real-world toys based on the digital Avatars. Its TOS provide that users will not use Roblox content outside of the Roblox Platform, monetize Roblox content, or imply an association with Roblox for their businesses outside of the Roblox Platform.

Wowwee sells a line of dolls called “My Avastars,” which plaintiffs allege were “copied directly from Roblox’s Classic Avatars.” WowWee’s Vice President of Brand Development & Creative Strategy, Sydney Wiseman, used her WowWee email address to create a Roblox user account and used her Roblox account to promote My Avastars dolls on social media, including videos on her TikTok account. Wiseman narrates, “I was playing roblox and as I was customizing my avatar I was inspired to create a doll line called my Avastars.” Defendants allegedly marketed the My Avastars dolls with a “code” that could be used in the Roblox platform.

Roblox sued for copyright infringement, false advertising, trademark infringement, false association and false designation of origin, trade dress infringement, intentional interference with contractual relations, breach of contract, and false advertising and unfair competition under California law.

The court found copyright infringement adequately pled as to several figures, although substantial similarity was a “close issue.” “While the features for which plaintiffs allege protection are similar to those of other toys, there are differences including the customizability of features of plaintiffs’ avatars and the shape of the avatars’ legs.” And defendants’ dolls were “virtually identical” in shape to Roblox’s avatars.  

Looking at the side by side pictures in the complaint, this is a bit hard to swallow, but the evidence of copying/references to Roblox clearly bleed over from the TM side.

Lindsey Roblox avatar

Cindy Roblox avatar

Allegedly jnfringing Dreamer My Avastars

The trade dress claim also survived based on a trade dress definition that Lego surely doesn’t like: “a distinct overall look and feel stemming from at least their (1) humanoid, blocky shape; (2) cylindrical heads; (3) C-shaped hands; (4) block-shaped legs; (5) square or rounded arms; (6) cartoon-like facial expressions and lack of a nose; and (7) the particularized combination of these elements.”

 The court also found that the alleged use of the Roblox name was not, as a matter of law, nominative fair use. The allegations that WowWee advertised the dolls would be sold with a code redeemable in a game on Roblox, used the hashtags #roblox and #newroblox to advertise the My Avastars dolls, and included the Roblox mark and interface in social media advertisements, including responding to user inquiries by stating that WowWee was “working with top [R]oblox developers.” This was enough survive the motion to dismiss. There’s no blanket rule that hashtags can’t constitute infringement, as long as “the use otherwise meets the test for trademark infringement.”

more images from the complaint

 Interestingly, the contract/tortious interference claims against US resident defendants had to be arbitrated because of Roblox's own TOS. And Jazwares, Roblox’s licensee, lacked standing for copyright claims, but did have Lanham Act standing because that doesn’t require copyright or trademark ownership. “Jazwares has adequately pled injury due to customers associating the My Avastars dolls with Roblox, leading to lost sales of Jazwares’ Avatar Figurines.”

Interestingly, the contract/tortious interference claims against US resident defendants had to be arbitrated because of its own TOS. And Jazwares, Roblox’s licensee, lacked standing for copyright claims, but did have Lanham Act standing because that doesn’t require copyright or trademark ownership. “Jazwares has adequately pled injury due to customers associating the My Avastars dolls with Roblox, leading to lost sales of Jazwares’ Avatar Figurines.”