An Implied Copyright License Requires a “Meeting of the Minds” on how the Copyright is to be Used – Permission to a Television Host to Wear a Clothing Design Did Not Imply a License to a Toy Company to use the Design on Toy Figurines

Abstract

A clothing designer sued the Lego toy company for infringing the designer’s copyrighted jacket design. The court denied Lego’s attempt to dismiss the case, claiming an implied non-exclusive license, because Lego failed to prove the parties had a meeting of the minds regarding permitted uses of the designer’s copyrighted jacket design. Permission to a television host to wear a clothing design did not imply a license to a toy company to use the clothing design on toy figurines of the host.

Background

James Concannon designed jackets worn by Antoni Porowski, one of the co-hosts of Netflix’s show Queer Eye, and complained that the Lego toy company designed a new toy set featuring a figurine of Mr. Porowski wearing a Concannon jacket without his permission. While Mr. Concannon signed a release permitting some of his jackets to be shown on the Netflix show, he did not sign such a release for his jackets to be used in a Lego toy set.

Mr. Concannon sued Lego for copyright infringement, trade dress infringement, and unfair competition. In response, Lego asked the court to dismiss the case, asserting that Lego had an implied non-exclusive license to use the Concannon jacket in its toy set. 

The Concannon Decision

At this early stage of the case, Lego could only rely on the facts and evidence in Mr. Concannon’s complaint to support its implied license theory. In its motion to dismiss, Lego argued that Mr. Concannon granted Mr. Porowski an implied license (which was then sublicensed to Lego) by gifting the jacket to Mr. Porowski, a celebrity, without restrictions. In response, Mr. Concannon argued an implied license lies only if Mr. Concannon knew and intended that his jacket would be used for another specific purpose.

The court explained the Second Circuit has not adopted a particular implied license test but does require a “meeting of the minds.” That is, the parties must have agreed to permit the specific use at issue. Reviewing the information in the complaint, the court ruled there was insufficient information to support Lego’s license defense. Lego argued that Mr. Concannon had added the copyrighted design to Mr. Porowski’s jacket for free, knowing that Mr. Concannon would appear in public. It supported its allegations by noting Mr. Concannon had not authorized each appearance of the jacket on Netflix, had not protested unauthorized appearances, and had not asked Mr. Porowski to limit display of the jacket. Accordingly, Lego argued, Mr. Concannon had granted both Mr. Porowski and the producers of Queer Eye an implied license that each was free to sublicense.

The court ruled that at the pleadings stage, Lego’s theory relied on too many inferential leaps. It found that Mr. Concannon’s failure to take further action to protect his designs after their appearances on Queer Eye did not show that he intended the jacket to be distributed or that he, Mr. Porowski, or the producers had a common understanding of how the jacket could be used.

Finally, the court noted that even if an implied license existed previously, the lawsuit revoked any existing license, and at least Mr. Concannon’s claim for continuing infringement (by distribution of the set) would survive, and that the case would not be dismissed at this stage. 

Strategy and Conclusion

This case demonstrates possible issues that may arise in using designs of others without an explicit written license agreement, and that a lawsuit may revoke existing implied licenses. Parties must be careful in using products containing a copyrighted design in different contexts than originally intended even if they own the product in question.