Concannon v. LEGO — Artist’s Copyright Claims Survive LEGO’s Fair-Use Defense

Background

Artist James Concannon created a one-of-a-kind black leather jacket for Antoni Porowski, a star of Netflix’s Queer Eye. Concannon covered the jacket with hand-painted phrases, symbols, and punk-inspired imagery. Porowski wore it on the show, but Concannon did not grant LEGO permission to reproduce his artwork.

LEGO later licensed Queer Eye intellectual property and released a construction set featuring minifigures of the show’s cast. The Porowski minifigure wore a tiny jacket that retained much of Concannon’s visual arrangement: painted safety pins, a peace sign, a skull, and other imagery appeared in corresponding positions. LEGO changed or omitted some wording, including replacing “THYME IS ON MY SIDE” with its own “REBUILD THE WORLD” slogan, but retained the lettering style and paint-drip details.

Concannon sued for direct, contributory, and vicarious copyright infringement, trade-dress infringement under the Lanham Act, and violation of the Connecticut Unfair Trade Practices Act (CUTPA). LEGO moved for summary judgment, arguing among other things that the minifigure jacket was fair use and that consumers were unlikely to confuse a LEGO toy with Concannon’s clothing.

The Court’s Holding

Judge Omar A. Williams granted LEGO’s motion only in part. The court allowed all three copyright claims to proceed, concluding that LEGO had not established fair use. It also allowed the CUTPA claim to continue, but entered judgment for LEGO on the trade-dress claim.

On fair use, the court found that every statutory factor favored Concannon. LEGO’s copy served essentially the same expressive purpose as the original jacket and did not comment on or provide information about Concannon’s art. Applying the Supreme Court’s reasoning in Andy Warhol Foundation v. Goldsmith, the court said that merely applying “LEGO DNA” to another artist’s work did not supply a sufficient justification for copying. A reasonable jury could find that the miniature closely imitated the original within the physical limits of a minifigure.

The jacket was a creative work at copyright’s core. LEGO also copied what the court described as the heart of the work: its overall aesthetic, principal adornments, and their placement. Changes made to fit the small format or avoid political content did not create a new expressive meaning. Finally, the court rejected LEGO’s contention that Concannon was unlikely to enter the global toy market. Copyright owners control derivative markets, and a small artist does not lose that right simply because the artist has not mass-produced toys.

The trade-dress claim failed for a different reason. Although Concannon produced enough evidence for a jury to consider whether his combination of short provocative phrases, punk commentary, and hand-painted graffiti lettering had acquired secondary meaning, he did not show a triable likelihood of confusion. LEGO toys and high-priced adult apparel occupy distant markets, and consumers were unlikely to believe Concannon produced the clearly LEGO-branded set. Evidence that some people congratulated him suggested perceived collaboration, but not confusion about the product’s source.

The court preserved the CUTPA claim because it rested on alleged misappropriation broader than the dismissed trade-dress theory. It also declined to apply the intracorporate-conspiracy doctrine on the existing record to conduct involving a parent company and a legally distinct subsidiary.

Key Takeaways

• Turning artwork into a miniature toy accessory does not by itself make the use transformative; the copier still needs a persuasive justification for borrowing the protected expression.
• A copyright owner’s derivative-market rights are not limited to markets the owner already serves. Small artists can challenge unlicensed merchandising by much larger companies.
• Copyright and trade dress ask different questions. Close copying may support infringement while the great distance between the parties’ products defeats likely consumer confusion.
• Selective omissions made for size or commercial acceptability may do little to support fair use when the overall look and arrangement remain recognizable.

Why It Matters

The ruling is a practical warning for entertainment licensors and merchandise designers. A license to a television program, character, or celebrity likeness may not include independently owned artwork that appears in costumes, sets, or props. Clearing those embedded works separately can matter even when the final reproduction is tiny or stylized.

The decision also gives independent creators a useful application of Warhol: a famous company cannot establish fair use merely by translating an artwork into its house aesthetic or a new product category. At the same time, the dismissal of the trade-dress claim shows that copying alone does not prove consumer confusion when the products, price points, and branding are sharply different.

Surfaced via Law360 IP.