Roblox Corporation v. WowWee Group Limited

Purpose of the Order

The court stated that the case was set for a June 20, 2024 hearing on the parties’ summary judgment motions and Daubert motions. A Daubert motion concerns whether expert evidence may be considered. The court listed questions for the parties to address at that hearing. The order does not grant or deny any motion and does not resolve the underlying claims.

Copyright Questions

The court asked whether both Ge and Huang could be authors of the Cindy, Lindsey, Kenneth, and Dennis avatar works, and what legal authority supported each party’s position. It also asked what period was covered by the assignment provision in a 2019 consulting agreement between Ge and Roblox, which assigned material developed “during the term of the Agreement” to Roblox.

The court asked whether Roblox’s Fourth Amended Disclosures were the first time Ge’s address and telephone number had been disclosed to WowWee. It also asked about the use of avatar-base elements in the copyright claims, including whether the cited authority allowed Roblox to claim infringement of those elements and which avatar bases were involved. Finally, it asked for support concerning whether features such as cylindrical heads, rounded or rectangular arms, similar or rectangular legs, cartoonlike faces without noses, and tapered waists were copyrightable or instead were common geometric features that could not receive copyright protection.

Trade Dress, Trademark, and False Advertising Questions

The court asked whether Roblox had to identify a consistent trade dress—the overall appearance or commercial presentation it claimed was protected—and, if so, across what group of avatars that appearance had to be consistent. Regarding trademark infringement, the court identified WowWee’s nominative fair use defense and asked questions concerning whether the products were readily identifiable without the Roblox mark, whether WowWee used more of the mark than necessary, and whether WowWee falsely suggested sponsorship or endorsement.

The court also asked what evidence showed that WowWee profited from using the Roblox mark in advertising and promotional materials. It asked how profits from My Avastars dolls sold after WowWee stopped using the Roblox mark could be attributed to the earlier use of that mark.

Defenses and Disposition

The court noted that several defenses depended on competing interpretations of Roblox’s May 18, 2021 Terms of Use and incorporated Community Usage Guidelines. Its preliminary view was that those materials neither clearly prohibited nor clearly permitted WowWee’s conduct. The court asked whether an express-license defense could be raised when an agreement does not clearly prohibit conduct but also does not expressly permit it, and whether additional evidence could help interpret the terms.

The order ends by directing the parties to address these questions at the June 20 hearing. Judge Susan Illston did not issue a merits ruling or otherwise state a disposition of the parties’ motions in this order.