Lego A/S et al v. Zuru Inc.

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UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
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Civil No. 3:18-cv-2045 (AWT)
LEGO A/S; LEGO SYSTEMS, INC.; and
LEGO JURIS A/S,
Plaintiffs,
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v.
ZURU INC.,
Defendant.
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RULING ON ZURU’S MOTION FOR LEAVE TO FILE SUPPLEMENTAL
COUNTERCLAIMS AND MODIFY SCHEDULING ORDER
Defendant ZURU Inc. (“ZURU”) has moved pursuant to Federal
Rules of Civil Procedure 13(e), 15(d), and 16(b) for leave to
file supplemental counterclaims and to modify the scheduling
order in this case to permit discovery and supplemental summary
judgment briefing related to ZURU’s “Third Generation
Figurines.” Plaintiffs LEGO A/S, LEGO Systems, Inc., and LEGO
Juris A/S (collectively, “LEGO”) object. For the reasons set
forth below, ZURU’s motion is being denied.
I. BACKGROUND
The underlying facts and procedural history of this case
are extensive and only what is needed to explain the decision on
the instant motion is set forth below.
LEGO’s Verified Complaint claims, inter alia, that ZURU’s
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First Generation MAX Figures1 infringe on the copyright and
trademark rights of LEGO’s Minifigure Figurine, i.e. the
Asserted Copyrights and the Asserted Trademark. The Verified
Complaint requests a judgment, inter alia, that “ZURU has
infringed the Minifigure Copyrights” and that “ZURU has
infringed the Minifigure Trademarks.” Complaint, ECF No. 1 at
53.
LEGO also requested a
a temporary restraining order, preliminary and permanent
injunction restraining ZURU, its employees, and all persons
in active concert or participation with ZURU or with any of
the foregoing from:
a. manufacturing, selling, offering for sale, displaying or
authorizing the sale of products, including the
Infringing Products, containing unauthorized
reproductions of the copyrighted and trademarked
Minifigure figurine, including any figurine or image that
is substantially similar to the Minifigure Copyrights or
likely to be confused with the Minifigure Trademarks;
Id.
The court issued a Temporary Restraining Order, ECF No. 19,
on December 14, 2018. On July 8, 2019 the court issued a
Preliminary Injunction which provided, inter alia, that it was
FURTHER ORDERED that the defendant, ZURU Inc., together
with its agents, servants, employees, successors and
assigns, and all those in active concert or participation
with them, hereby are, and using defined terms as they
appear in the plaintiffs’ memorandum of law (ECF No. 7-1),
RESTRAINED AND ENJOINED from
a. manufacturing, selling, offering for sale,
distributing, displaying or authorizing the sale of
1 Except when quoting another document, the court uses in this ruling the
terminology used in the Ruling on Cross-Motions for Summary Judgment. See
Lego A/S v. Zuru Inc., 827 F. Supp. 3d 313 (D. Conn. 2026).
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products, including the Infringing Products,
containing unauthorized reproductions of the
copyrighted and trademarked Minifigure figurine,
including any figurine or image that is
substantially similar to the Minifigure Copyrights
or likely to be confused with the Minifigure
Trademarks[.]
Prelim. Inj., ECF No. 87 at 1-2.
In December 2018, after the issuance of the Temporary
Restraining Order, ZURU began the process of redesigning its MAX
Figures. By March 2019 ZURU had developed the Second Generation
MAX Figures. By August 2019, the Second Generation Max Figures
were available for sale on Walmart.com and in Walmart retail
locations. ZURU filed a Motion for Order that Redesigned
Figurines Do Not Violate the Preliminary Injunction, ECF No.
112, and LEGO filed an Emergency Motion for Contempt, ECF No.
114.
The court denied ZURU’s motion and granted LEGO’s Motion
for Contempt. With respect to LEGO’s burden to establish that
the order ZURU had failed to comply with is clear and
unambiguous, the court concluded:
The language of the Preliminary Injunction Order is
clear and unambiguous. The prohibition extends to “any
figurine or image that is substantially similar to the
Minifigure Copyrights or likely to be confused with the
Minifigure Trademarks.” In its opposition, ZURU, Inc.
states in a footnote that “[t]he boundaries of the terms
‘substantially similar’ and ‘likely to be confused with’ in
the Preliminary Injunction are ambiguous.” ZURU, Inc.’s
Opp’n to Pl.’s Mot. for Contempt at 2 n.1, ECF No. 124. It
is unclear exactly what point ZURU, Inc. is making in this
footnote, but, in any event, the use of these terms in the
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Preliminary Injunction Order is based on the discussion and
analysis in the Ruling, where these terms are elaborated
upon in detail. Also, at the hearing, ZURU, Inc. did not
point to any ambiguity in the terms of the Preliminary
Injunction Order; rather it argued, with respect to the
Redesigned Figurines, that “it is a figure that ZURU does
not believe is substantially similar to the minifigure
copyright or likely to be confused with the minifigure
trademark[.]
Ruling on Mot. for Contempt, ECF No. 139 at 8-9.
LEGO also sought an amendment to the Preliminary
Injunction, and the court granted its request by adding the
following language:
During the pendency of this case and until further order
of the court, ZURU, Inc. must file a notice with the court,
which shall include detailed information about any such
figurine, at least 30 days prior to manufacturing,
selling, offering for sale, distributing, displaying, or
authorizing the sale of any figurine in its MAX Build More
product line or in any replacement for the MAX Build More
product line[.]
Ruling on Mot. for Contempt, ECF No. 139 at 28-29.
In November 2023, ZURU filed a notice of intent to
manufacture its “Third Generation Figurines,” contending that
the Third Generation Figurines “fall outside the bounds of any
protection that [LEGO]’s asserted minifigure (“Minifigure”)
copyrights and trademarks afford to [LEGO][.]” Def. Not. of
Intent to Manufacture and Sell Non-Infringing Figs., ECF No. 305
at 2.
LEGO promptly moved for a Temporary Restraining Order
restraining ZURU from “manufacturing, selling, offering for
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sale, distributing, displaying or authorizing the sale of the
ten figurines proposed by ZURU . . . in its Notice of Intent to
Manufacture and Sell Non-Infringing Figurines (ECF No. 305) . .
. and confirming that the [Third Generation Figurines] are
subject to the Preliminary Injunction.” Pls. Emerg. Mot. for
TRO, ECF No. 306 at 1.
On February 5, 2024, the court issued an order (ECF No.
344) finding that the Third Generation Figurines are subject to
the Preliminary Injunction. ZURU appealed and the case was
remanded by the Court of Appeals.
The Mandate (ECF No. 361), dated April 16, 2025, stated:
We therefore find that a remand pursuant to this
Court’s procedure in United States v. Jacobson is
appropriate for the district court to supplement the record
by providing its assessment of whether the Third-Generation
figurines are substantially similar to or likely to be
confused with Lego’s Minifigure. 15 F.3d 19, 22 (2d Cir.
1994). In particular, we instruct the district court on
remand to apply the more discerning observer test in its
assessment of substantial similarity.
. . . .
Because the district court did not perform any
analysis in applying the preliminary injunction to the
Third-Generation figurines, we cannot discern whether its
ruling was based on unprotectable elements of Lego’s
Minifigure. Accordingly, as stated above, we remand the
case to the district court pursuant to Jacobson. See
Jacobson, 15 F.3d at 22. On remand, the district court must
use the more discerning observer standard stated above to
assess whether the Third-Generation figurines are
substantially similar to Lego’s Minifigure so as to fall
within the scope of the preliminary injunction order. In
doing so, it must not base its finding of substantial
similarity on unprotectable elements of the Minifigure. The
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court must also assess whether the Third-Generation
figurines are likely to be confused with Lego’s Minifigure.
See [Vans, Inc. v. MSCHF Product Studio, Inc., 88 F.4th at
135–36 (2d Cir. 2023)].
Mandate at 7, 10-11.
On May 28, 2025, in accordance with the Mandate, the court
issued a Supplement to Order Re Plaintiffs’ Emergency Motion for
Temporary Restraining Order (“Supplement to Order”) (ECF No.
363). In accordance with the Mandate, the court set forth its
analysis with respect to substantial similarity and likelihood
of confusion.
In the Supplement to Order, the court noted that in the
briefing for LEGO’s motion for a temporary restraining order
with respect to the Third Generation Figurines “both sides
incorporated by reference the record from the preliminary
injunction proceedings and their submissions in connection with
their cross-motions for summary judgment.” Supp. to Or., ECF No.
363 at 3. The court stated:
Those submissions include the following expert reports: The
November 8, 2021 expert report by Elizabeth B. Knight (ECF
No. 322, Ex. A) (The “Knight Report”); the December 17,
2021 rebuttal report by Elizabeth B. Knight (ECF No. 322,
Ex. B) (the “Knight Rebuttal Report”); the November 9,
2021 expert report of Lee Loetz (ECF No. 312-5, Ex. 1) (the
“Loetz Report”); and the December 17, 2021 rebuttal expert
report of Lee Loetz (ECF No. 312-5, Ex. 2) (the “Loetz
Rebuttal Report”). LEGO also submitted in support of the
instant motion the Declaration of Elizabeth B. Knight (ECF
No. 322) (the “Knight Declaration”), and ZURU submitted the
Declaration of Lee Loetz (ECF No. 312-5) (the “Loetz
Declaration”).
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Id. at 4.
With respect to substantial similarity, the court applied
the more discerning observer test and explained why, taking into
account only the protectable elements of the Minifigure
Figurine, the overall look and feel of the Third Generation
Figurines is substantially similar to the Asserted Copyrights.
With respect to likelihood of confusion, the court
evaluated the Polaroid factors and concluded:
After evaluating the Polaroid factors in light of the
record here, the court concludes that LEGO is likely to be
able to establish that the Third-Generation Figurines are
likely to cause confusion. This is so because LEGO is
likely to be able to show that each of the six Polaroid
factors that bear on the ultimate question of likelihood of
confusion as to the source of the products at issue here
supports such a conclusion.
Id. at 16.
After the Supplement to Order was filed, ZURU appealed and
the appeal was dismissed for lack of appellate jurisdiction. The
Court of Appeals explained:
Because the existing preliminary injunction “rightly
applies to any figurine that meets the legal standard for
copyright infringement (substantial similarity) or
trademark infringement (likelihood of confusion)[,]” id.,
if the Third Generation figurines are substantially similar
to or likely to be confused with Lego's Minifigure, they
would fall within the existing preliminary injunction order
(without modification), and we would lack jurisdiction over
this appeal. As set forth below, we conclude that we lack
appellate jurisdiction because the district court correctly
determined that the Third-Generation figurines fall within
the existing injunction both because of their substantial
similarity to, and likelihood of confusion with, Lego's
Minifigure.
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Lego A/S v. Zuru, Inc., No. 24-634-cv, 2025 WL 3537350, at *2
(2d Cir. Dec. 10, 2025) (alteration in original).
II. LEGAL STANDARD
Rule 13(e) provides that “[t]he court may permit a party to
file a supplemental pleading asserting a counterclaim that
matured or was acquired by the party after serving an earlier
pleading.” Fed. R. Civ. P. 13(e). “The purpose of Rule 13(e) is
to further judicial economy by allowing parties to litigate in
one action all claims they have with respect to each other . . .
and to bring a controversy up to date.” Gasser Chair Co. v.
Infanti Chair Mfg. Corp., 1991 WL 10931, at *1 (E.D.N.Y. Jan.
24, 1991).
Rule 15(d) provides that, “[o]n motion and reasonable
notice, the court may, on just terms, permit a party to serve a
supplemental pleading setting out any transaction, occurrence,
or event that happened after the date of the pleading to be
supplemented.” Fed. R. Civ. P. 15(d). “Absent undue delay, bad
faith, dilatory tactics, undue prejudice to the party to be
served with the proposed pleading, or futility, the motion
should be freely granted.” Quaratino v. Tiffany & Co., 71 F.3d
58, 66 (2d Cir. 1995). “Leave is normally granted, especially
when the opposing party is not prejudiced by the supplemental
pleading.” Id. “Th[e] liberal amendment policy of Rule 15
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applies to requests to add counterclaims pursuant to Rule
13(e).” Tommy Hilfiger Licensing, Inc. v. Bradlees, Inc., No. 99
CIV 4677(WK), 2001 WL 1702151, at *4 (S.D.N.Y. Jan. 11, 2002);
see also BAT LLC v. TD Bank, N.A., 2018 WL 4922736, at *6 n.7
(E.D.N.Y. July 31, 2018) (“the standards for amendment or
supplementation under Rule 13 are substantially the same . . .
[as] Rule 15”); Gasser Chair, 1991 WL 10931, at *1 (“Rule 13
must be read in conjunction with Rule 15 of the Federal Rules of
Civil Procedure.”).
Rule 16(b) provides that “[a] schedule may be modified only
for good cause and with the judge’s consent.” Fed. R. Civ. P.
16(b)(4). “[W]here a party’s motion to amend would require
altering a court’s scheduling order, the party must satisfy both
Federal Rules of Civil Procedure 15 and 16 to be permitted to
amend.” Int’l Techs. Marketing, Inc. v. Verint Sys., Ltd., 850
F.App’x 38, 43 (2d Cir. 2021) (internal quotation marks
omitted); accord Parker v. Columbia Pictures Indus., 204 F.3d
326, 340 (2d Cir. 2000). “[A] finding of ‘good cause’ depends on
the diligence of the moving party.” Parker, 204 F.3d at 340.
“The district court, in the exercise of its discretion under
Rule 16(b), also may consider other relevant factors including,
in particular, whether allowing the amendment of the pleading at
this stage of the litigation will prejudice defendants.” Kassner
v. 2nd Ave. Delicatessen Inc., 496 F.3d 229, 244 (2d Cir. 2007).
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III. DISCUSSION
ZURU states that its objective is to have the court “decide
the parties’ rights as to the Third-Generation Figurines on a
targeted, product-specific record, within the existing case.”
ZURU’s Mot. for Leave to File Suppl. Counterclaims and Mod. Sch.
Or., ECF No. 368 at 2. The court has already done so.
The court granted summary judgment in favor of LEGO on its
claim for copyright infringement with respect to the Asserted
Copyrights because it concluded that there is no genuine issue
as to, inter alia, the fact “that a more discerning observer
would conclude that the total concept and overall feel of the
First Generation and Second Generation MAX Figure is
substantially similar to that of the Minifigure figurine.” Lego
A/S, 827 F. Supp. 3d at 357. The court granted summary judgment
in favor of LEGO on its claims for trademark infringement
because it concluded that there is no genuine issue as to, inter
alia, the fact that ZURU “used a similar mark that is likely to
cause consumer confusion as to the source of Zuru’s MAX
Figures.” Id. at 402.
Having been granted summary judgment on these claims, LEGO
is entitled to the permanent injunction it requested in the
Verified Complaint. LEGO did not limit its request for a
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permanent injunction to the First Generation MAX Figures. (The
Second Generation MAX Figures did not exist when the Verified
Complaint was filed.) Rather, LEGO requested a permanent
injunction against ZURU covering products
containing unauthorized reproductions of the copyrighted
and trademarked Minifigure figurine, including any figurine
or image that is substantially similar to the Minifigure
Copyrights or likely to be confused with the Minifigure
Trademarks[.]
Compl., ECF No. 1 at 53.
Hypothetically, if ZURU were to develop “Fourth Generation
Figurines” that are substantially similar to the Asserted
Copyrights or are likely to be confused with the Asserted
Trademark, they would be subject to the permanent injunction.
Similarly, the Third Generation Figurines will be subject to the
permanent injunction because they are substantially similar to
the Asserted Copyrights and are likely to be confused with the
Asserted Trademark. The determination that the Third Generation
Figurines are substantially similar to the Asserted Copyrights
and likely to be confused with the Asserted Trademark was made
on a “product-specific record”, as reflected in the Supplement
to Order. That record included not only the parties’ submissions
from the preliminary injunction proceedings and their
submissions in connection with their cross-motions for summary
judgment, but also the expert declarations with respect to the
Third Generation Figurines.
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With respect to ZURU’s desire to file supplemental
counterclaims, as discussed above, the purpose of Rule 13(e) is
to “further judicial economy by allowing parties to litigate in
one action all claims they have with respect to each other . . .
and to bring a controversy up to date.” Gasser Chair Co., 1991
WL 10931 at *1. Permitting ZURU to file its proposed new
counterclaims would not serve the purpose of Rule 13(e). They
present no claim that would be new to this case. The parties
have made extensive submissions with respect to the Third
Generation Figurines, and the court has ruled on the parties’
motions. LEGO is entitled to the permanent injunction it
requested in the Verified Complaint. The scope of that permanent
injunction will be the same as the scope of the Preliminary
Injunction. The court has determined that the Third Generation
Figurines fall within the scope of the preliminary injunction,
both because of their substantial similarity to the Asserted
Copyrights and because of their likelihood of confusion with the
Asserted Trademark.
In addition, ZURU’s motion should be denied on the basis of
undue prejudice to LEGO. ZURU seeks to generate a “product-
specific record” with respect to the Third Generation Figurines.
ZURU’s Mot. for Leave to File Suppl. Counterclaims and Mod. Sch.
Or., ECF No. 368 at 2. However, there is already such a record
in this case, and granting ZURU’s request, which includes a
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request for additional “discovery and supplemental summary
judgment briefing” would merely be giving ZURU a “second bite at
the apple.” This would constitute undue prejudice to LEGO in
light of the extensive discovery and briefing that preceded the
cross-motions for summary judgment.
In addition, unless ZURU is given such a “second bite at the
apple,” permitting it to serve a supplemental pleading in this
case would be futile because “where a motion to amend is filed
following a motion for summary judgment, ‘even if the amended
complaint would state a valid claim on its face,’ leave to amend
may be denied where ‘the evidence in support of the plaintiff’s
proposed new claim creates no triable issue of fact and the
defendant would be entitled to judgment as a matter of law[.]’”
Morritt v. Stryker Corp., 973 F. Supp. 2d 177, 183 (E.D.N.Y.
2013); see also Smith v. P.O. Canine Dog Chas, No. 02-CV-06240,
2004 WL 2202564, at *12 (S.D.N.Y. Sept. 28, 2004) (“Where,
however, a summary judgment motion has been made and evidence
outside the pleadings has already been submitted, the court must
determine whether the amendment would be futile under the
summary judgment standard.”).
For these reasons, ZURU’s motion to amend the scheduling
the order is also being denied.
IV. CONCLUSION
For the reasons set forth above, ZURU’s Motion for Leave to
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File Supplemental Counterclaims and Modify Scheduling Order (ECF
No. 368) is hereby DENIED.
It is so ordered.
Dated this 15th day of October 2026, at Hartford,
Connecticut.
/s/ AWT
Alvin W. Thompson
United States District Judge
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