Roblox Corporation v. WowWee Group Limited

Background

WowWee moved for summary judgment on all of Roblox’s claims that had not been stayed. The opinion states that Roblox’s claims for intentional interference with contractual relations and breach of contract concerning WowWee USA, Inc. had been sent to arbitration. The court did not otherwise recite the case background.

Summary judgment is a decision entered before trial when the evidence shows no genuine dispute about a fact that could affect the result and the moving party is entitled to judgment under the law. The court viewed the evidence in the light most favorable to the party opposing the motion.

Copyright Claims

Roblox claimed that WowWee infringed copyrights involving the Cindy, Lindsey, Kenneth, and Dennis avatar works, referred to in the opinion as the CLKD works. WowWee argued that Roblox could not establish ownership because the copyright registrations identified Jiangli Ge as the author, while Roblox argued that its employee I-Wei Huang authored the works and that Roblox alternatively received ownership from Ge.

The court found genuine factual disputes about who created and supervised the CLKD works and whether ownership transferred to Roblox under a 2019 agreement. It therefore denied summary judgment on Roblox’s infringement claim concerning the registered works.

Roblox also claimed that copyrightable elements of unregistered avatar bases were included in the registered CLKD works. The court held that the evidence did not show that the CLKD works included copyrightable elements of the avatar bases or were substantially copied from them. It granted summary judgment on this avatar-base copyright claim.

Trade Dress Claim

Trade dress is the overall appearance of a product that may identify its source. Roblox described its asserted avatar trade dress as a combination of features including humanoid blocky shapes, cylindrical heads, C-shaped hands, block-shaped legs, particular arm shapes, cartoon-like changeable facial expressions, no nose, and the combination of those features.

WowWee argued that Roblox’s asserted trade dress was not consistent across its products and had not acquired secondary meaning. Secondary meaning exists when consumers associate a product’s appearance with one source rather than only with the product itself. The court found factual disputes about whether Roblox’s avatars had an identifiable trade dress and whether that trade dress had acquired secondary meaning. The court also found factual disputes about the likelihood of consumer confusion, including disputes concerning similarity, marketing channels, the proximity of the products, and WowWee’s intent. It denied summary judgment on the trade dress claim.

Trademark Infringement and False Advertising

Roblox alleged that WowWee used the ROBLOX mark and related references to advertise the My Avastars dolls. The court found factual disputes about whether consumers were likely to be confused, including disputes concerning evidence of actual confusion and WowWee’s intent in using the mark. It denied summary judgment on the trademark infringement claim.

Roblox also alleged that WowWee made false or misleading advertising statements suggesting an association with Roblox, including statements and references in TikTok videos and other advertising. The court found evidence from an expert report and internet comments from which a factfinder could determine that the advertisements communicated misleading messages. It also found a factual dispute about whether WowWee intended to deceive consumers. It denied summary judgment on the false advertising claims.

Injunctive Relief and Damages

WowWee argued that Roblox’s requests for an injunction concerning the trademark and false advertising claims were moot because it had stopped using the ROBLOX mark and removed references to Roblox from its marketing materials. The court found that WowWee had met its burden of showing that the alleged conduct could not reasonably be expected to recur and granted summary judgment on Roblox’s requests for injunctive relief concerning those claims.

The court did not grant summary judgment on damages. It found that whether Roblox could prove actual damages or profits connected to WowWee’s alleged use of the Roblox name or mark was a factual question.

Disposition

Judge Susan Illston denied WowWee’s motion for summary judgment on Roblox’s copyright infringement claim concerning the registered works, trade dress infringement claim, trademark infringement claim, and false advertising claims. She granted the motion on Roblox’s claim that copyrightable elements of the avatar bases were included in the derivative registered works and on Roblox’s requests for injunctive relief concerning the trademark infringement and false advertising claims.