Luxo AS, a Norwegian light manufacturer and distributor, has sued Disney and Pixar et. al. asserting various trademark-related claims arising from Disney’s and Pixar’s use of the LUXO trademark. In an always interesting case of trademark law/branding meets fair use, Luxo has alleged that Disney/Pixar’s use of “Luxo Jr.” to identify the “hopping lamp,” which has been the corporate mascot of Pixar since 1986, has crossed into the realm of forbidden behavior.
Although Pixar has been using the mascot since 1986, according to the complaint, it was only recently that infringing goods or services were being sold under the allegedly infringing mark. Specifically, Disney/Pixar is now selling a limited edition DVD copy of Up packaged with a working “Luxo Jr.” collectible desk lamp. Additionally, they are using Luxo Jr. to draw in visitors at Disney’s Hollywood Studios.
This case raises some interesting trademark related questions: (1) Has Luxo relinquished some of its rights by not previously attempting to stop Pixar’s use of the “hopping lamp?” (2) Why didn’t Luxo take action earlier? (3) Absent Disney/Pixar’s expansion of its use to selling lamps, would Luxo have had a viable infringement case?
If I had to venture a guess, I would say that Luxo didn’t really have a problem with Disney/Pixar’s use until it got a little too real with the lamp sales. Arguably, the animations enhanced the popularity of Luxo’s products and lead to increased lamp sales. Luxo apparently didn’t have a problem until Disney/Pixar tried to monetize some of that popularity itself by packaging a lamp with a DVD.
Moreover, the viability of an infringement claim would have likely required an examination of the often cited, yet often elusive “fair use” analysis. As demonstrated by the Spa’am muppet case, infringement isn’t clear cut when someone is using your mark to say something besides “buy my goods.”