Decisions in Brief

AuthorJohn C. Gatz
Published in Landslide® magazine, Volume 12, Number 5, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Decisions in Brief
Comparison of Physical Embodiment of a
Copyrighted Image Is Proper Infringement Analysis
LEGO A/S v. ZURU Inc., No. 2019-2122, 2020 WL 229874,
2020 U.S. App. LEXIS 1282 (Fed. Cir. Jan. 15, 2020). LEGO
led a complaint against ZURU alleging that ZURU’s MAX
action gures and MAYKA Toy Block Tape product pack-
aging infringe LEGO’s copyrights and other rights. LEGO
also moved for a temporary restraining order and preliminary
injunction to restrain ZURU from manufacturing and sell-
ing the alleged infringing products. The district court granted
LEGO’s motion for preliminary injunction. ZURU appealed.
LEGO argued and the district court agreed that the ZURU
action gures are substantially similar to LEGO’s iconic Mini-
gures. LEGO holds copyright registrations covering the 3D
sculpture of certain LEGO Minigures. On appeal, ZURU
argued that the district court (1) improperly relied on LEGO’s
comparisons of the alleged infringing ZURU action gures to
LEGO Minigures instead of to the images associated with the
LEGO copyright registrations; and (2) even if such an approach
were acceptable, made erroneous factual ndings because the
ZURU action gures are different from the LEGO Minigures.
The Federal Circuit disagreed with ZURU. The Federal Cir-
cuit found that the district court did not err in comparing the
ZURU action gures to the LEGO Minigures, because the
LEGO Minigures are physical embodiments of the copyrighted
images. The Federal Circuit afrmed the district court’s conclu-
sion that the product designs are substantially similar because
they have a similar general concept and feel.
The Federal Circuit further found that the district court
did not abuse its discretion in determining irreparable harm
to LEGO and that the balance of hardships weighed in favor
of LEGO with respect to the alleged infringing ZURU action
gures. Thus, the Federal Circuit upheld the district court’s
decision granting LEGO a preliminary injunction against the
ZURU action gures.
With respect to the MAYKA packaging, LEGO contended
and the district court agreed that ZURU incorporated an image
on such packaging that is substantially similar to LEGO’s
Friends series of Minigures. As with the ZURU action gures,
ZURU alleged on appeal that the district court erred because
(1) it relied on references to the Friends Minigures that are not
the subject of a copyright registration; and (2) its conclusion
that the products are substantially similar is an abuse of discre-
tion. The Federal Circuit found that LEGO is likely to succeed
on the merits of its copyright infringement claim, as the district
court did not abuse its discretion in determining that the image
incorporated in the MAYKA packaging and the Friends Minig-
ures are substantially similar for the same reasons as the ZURU
action gures. However, the Federal Circuit held that the district
court did abuse its discretion with respect to a nding of irrepa-
rable harm and balance of hardships and vacated the preliminary
injunction with respect to the MAYKA packaging.
Statutory Damages and Attorney Fees Require
Copyright Registration before Infringement
Southern Credentialing Support Services, L.L.C. v. Hammond
Surgical Hospital, L.L.C., 946 F.3d 780, 2020 U.S.P.Q.2d 6868
(5th Cir. 2020). Southern Credentialing provided health-care cre-
dentialing services to Hammond Surgical Hospital for several
years. Southern created forms used for both initial credential-
ing and recredentialing of medical professionals. Hammond
switched vendors, and used credentialing forms very similar
to those created by Southern. Southern registered the copy-
right in its forms more than a year after Hammond started using
the different vendor. Southern sued Hammond for copyright
infringement and was granted summary judgment at the district
court. An injunction was issued against Hammond to prevent it
from using the Southern forms, and Southern was also awarded
statutory damages and attorney fees. Hammond appealed.
The Fifth Circuit initially determined whether Southern had
a valid copyright in its credentialing forms. Southern’s forms
showed sufcient creativity to be eligible for copyright regis-
tration. The Fifth Circuit also found that Hammond had copied
almost half of Southern’s forms while creating new creden-
tialing forms. Therefore, Southern was entitled to a permanent
injunction against Hammond for copyright infringement.
The Fifth Circuit overturned the district court’s award of
attorney fees and statutory damages. The Fifth Circuit ruled
that the Copyright Act requires that copyright registration
must occur before any infringement takes place for statu-
tory damages or attorney fees to be available to a plaintiff.
The Fifth Circuit rejected Southern’s argument that statu-
tory damages and attorney fees are available to a plaintiff if
preregistration infringement and post-registration infringe-
ment violate different exclusive rights of the copyright holder.
Instead, the Fifth Circuit ruled that § 412 of the Copyright
Act bars statutory damages if a defendant violates any of the
exclusive rights before copyright registration occurs.
John C. Gatz is a member of the rm Nixon Peabody in Chicago, Illinois. Column contributors include the following writers: Copyrights:
Jenni Psihoules, Nixon Peabody LLP; and Mark R. Anderson, Actuate Law LLC. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor
Carter, Daniel M. Lechleiter, and Andrew M. McCoy, Faegre Drinker Biddle & Reath LLP; Robert W. (Bill) Mason, Southwest Research
Institute; and Angelo Christopher, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks: Elizabeth W. Baio,
Nixon Peabody LLP; and Amy L. Sierocki, Blumeneld & Shereff LLP.

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