There was big intellectual property news last week as Disney was sued because of its subsidiary, Pixar, for trademark infringement. The plaintiff, Luxo, is a Norwegian company that makes swivel lamps. Pixar’s first film, “Luxo Jr.”, was a 2 minute computer animation showing what the company was capable of. The creator of Pixar has even said the inspiration for his digital short Luxo Jr., was based off of the Luxo lamp. Anything sound weird about that to you? Pixar not only took the Luxo lamp image, but also apparently stole the name of the company as well. Someone should have told them that they’d have better luck getting away with committing trademark infringement if they didn’t also name their product after the alleged inventor.
The swivel lamp is also the inspiration behind Pixar’s logo. You can see a similar lamp in the beginning of “Toy Story” and “Wall-E.” However, Luxo has never brought suit before on any trademark infringement by Pixar.
Disney began selling and distributing the “Limited Edition Luxo Jr. Lamp Collectible Pack” in the U.S. and elsewhere. The pack consists of a DVD of the movie “UP” along with a replica lamps called a Luxo Jr. The lamp looks strikingly simlar to Luxo’s lamps. In the complaint, Luxo alleges that it was not consulted about the use of the lamp and is not being paid for its use. It claims it has a trademark in the name Luxo. It alleges that this is clear infringement of that trademark because the lamp is being sold without its permission.
Luxo also alleges that the lamps marketed by Disney are of inferior quality to their lamps and confuse consumers into thinking Luxo made Disney’s lamps. This would ultimately damage Luxo’s reputation. In the suit, Luxo is asking for the court to hand over all the materials created by Disney so they can be destroyed. It also wants an injunction to forbid further sale of any Luxo lamps. Finally, Luxo asks for damages for Disney’s profits from sales of the lamp. The Collectible Pack is currently listed on Amazon for $120.99.
It seems odd to me that Luxo decided to bring suit now. Apparently Pixar has been profiting from the Luxo lamp for over twenty years. They should be time barred from bringing suit. However, Luxo’s lawyers have argued that the image was previously only used on screen, in the world of make believe. They also argue that the Luxo name was never used previously, either. Now that Disney has exploited the image for profit, Luxo has decided to bring suit.
This case seems interesting to me for two reasons.
- It illustrates the point that businesses need to be careful of the images they use to brand themselves. If it is too similar to another company’s image, you could end up paying massive amounts of damages.
- I will be anxious to see what arguments are made about Luxo sitting on its rights too long, barring the company from bringing suit now.
Feel free to let me know what you think and I will keep you updated on the litigation.
Good post. Tamera Bennett and I covered this story in our most recent, episode 5 of Entertainment Law Update Podcast. Clearly someone at Disney/Pixar screwed up in going forward with the product.
Thanks for the compliment. I am a law student, and no expert at intellectual property, but it still boggles my mind how someone at such a big company could have thought this was a good idea. I wonder what kind of effect a lawsuit like this will have on Disney. Also, I like your site. Keep commenting and let other people know about entertainmentagentblog.com
I think the biggest problem here is that Disney called the product "Luxo Jr." One of the policies of the Lanham Act is to prevent confusion as to source of goods and services. By naming the product "Luxo Jr" Disney is likely to confuse consumers into believing that the source of the toy is also the source of the lamp. Thus, the senior user of the mark – Luxo (the lamp company) – has a cause of action against Disney.
Disney would have been wise to change the name, especially if they now want to literally compete with the Luxo Company for lamp sales. As far as the Luxo Company is concerned, whenever Disney sells one of these toys, Luxo loses a sale; this is unacceptable from a trademark perspective if both companies use confusingly similar names.
Very interesting article.
I agree. I cannot believe that someone in the legal department of Disney OK'd the name Luxo, Jr. How could that not be confusing? Clearly someone at Disney needs to go read the Lanham Act or take an intellectual property course.
Thanks for the compliment. I am a law student, and no expert at intellectual property, but it still boggles my mind how someone at such a big company could have thought this was a good idea. I wonder what kind of effect a lawsuit like this will have on Disney. Also, I like your site. Keep commenting and let other people know about entertainmentagentblog.com