Ethical/Legal Issues: Luxo AS v. Walt Disney

Pixar Logo

Pixar Logo

When viewers watch any Pixar film, it is likely they will recognize the endearing, hopping lamp that stumbles upon the Pixar logo and replaces the letter I. What they may not know is that this character, named Luxo, Jr. had its debut in Pixar’s first short film from 1986, which was nominated for an Oscar. Here, Luxo Jr. finds a ball to play with, which tests the patience of an older Luxo model. When the ball bursts, the elder Luxo is pleased, but this is soon eradicated when another ball, ten times larger than the last, comes along, much to Luxo Jr.’s joy. The short can be seen here.

Luxo Jr. Short Film

Luxo Jr. Short Film

This character has become iconic, and closely related to the Pixar (now Disney/Pixar) brand image. This is to the extent that a 6 foot tall animatronic replica has been installed in Walt Disney World’s Orlando Florida theme park, where it emerges throughout the day to “perform” for the visitors. Disney has also created working Luxo Jr. replicas to be sold with DVDs in a special edition bundle pack.

Luxo Jr. Animatronic

Luxo Jr. Animatronic

What viewers also may not know is that in September of 2006, the Norwegian lamp making company Luxo AS filed a complaint against Walt Disney, claiming that the use of Luxo Jr. was a trademark infringement upon one of their models, the Luxo LS desk lamp. In 1986, Disney (Pixar at the time) established an agreement with Luxo AS, where the studios were allowed to use the name Luxo in connection to the short film, and for use in the logo. Pixar creative genius John Lasseter had the Luxo LS desk lamp, which was where he got inspiration for the character from. However, Luxo AS claimed that Disney producing actual goods resembling their product, especially ones that functioned, would “cause devastating damage to Luxo and dilute the goodwill which Luxo has built up”, and was an element that was not covered by the initial agreement. They felt similarly about the animatronic replica at Walt Disney World.

Luxo Logo

Luxo Logo

Facts of the Case

  • Norwegian company Luxo AS manufactures, designs and distributes high quality lighting products. Luxo AS has sold over 25 million of its Luxo LS desk lamp models since its expansion into US markets in 1939.
  • Luxo LS lamp models have received numerous design awards as well as placement in the Museum of Modern Art‘s permanent collection. In addition, Luxo AS owns the title, rights and interest to the trade name Luxo, which is a registered trademark with the US Patent and Trademark office. This trademark includes the distinctive design “Luxo Trade Dress” pictured below:
Luxo Trade Dress

Luxo Trade Dress

  • Disney was advertising/distributing “Limited Edition Luxo Jr. Lamp Collectible Packs”, which consisted of a DVD and a small working lamp, with the name Luxo Jr. on the base, which resembled the character Luxo Jr., and thus the Luxo Trade Dress.
Collectible Pack

Collectible Pack

They also installed a new attraction at their Orlando Florida theme park in August of 2009, named “Luxo Jr.”, an animatronic replica of the lamp.

  • In the 1986 short film, and logo animations, Disney never explicitly referenced the name Luxo.
  • These lamps produced for the Disney collectible pack were determined to have been manufactured by an unknown entity, at a lesser quality than those produced by Luxo AS, contradicting the high quality standards upheld by the Norwegian company. This was thought the confuse the public, and lead them believe it was associated with Luxo AS.

Disney was charged with various trademark infringement violations, as defined under the Lanham Act. In order to have a valid case for infringement, there are three elements that must be proven:

  1. The plaintiff must demonstrate that they have a legally protected mark- Luxo AS had registered the name (Luxo), title and rights with the US Patent Office, demonstrating their ownership, which was filed in 1983.
  2. The plaintiff must have proof that they own the mark- can also be evidenced by the patent registration.
  3. The use of the mark must be similar enough to the protected mark, to the extent that it would cause confusion among buyers or retailer- The Luxo Jr. lamp was a very close representation of the actual Luxo lamp model, with the Luxo Trade Dress design
Patent Registration

Patent Registration

In November of 2009, Luxo AS withdrew the complaint against Walt Disney, however no details as to the settlement agreements were made available to the public.

I believe that the complaint was filed for a reasonable purpose, and that Luxo AS had a valid right to worry about the affect Disney’s retail endeavors would have on their business. With a focus on product quality, using stainless steel and high quality control standards, it is understandable to see how Luxo AS would not want a mass produced, plastic replica of one of their models to be associated with their goodwill and reputation. I also think that the semblance is striking enough to confuse consumers, especially since Luxo AS is not an American company, and many consumers may not know that it even exists at all. Before this assignment, I myself did not know that the character had been based off another company’s product, but I was easily able to recognize the Pixar character when I saw it.

I think that the main issue that makes me support Luxo AS’s actions is when Disney began to actually use the mark Luxo to market the bundle pack, and for a title for the theme park attraction. With mere use in the animations and logo, viewers just see a lamp and little else. However, using the mark Luxo adds a sense of identity to the character, that will more often than not cause audiences to relate the name Luxo to Pixar rather than Luxo AS. Since Luxo AS is the rightful owner of this mark, I believe that it was unethical for Disney to use it without addressing the question of whether or not it was covered in their initial agreement. It seems like they had a pretty cordial relationship prior to this, so I was surprised that Disney did not.

I would have been interested to see what was included in the settlement, and how large the damages were that were claimed by Luxo AS, for it seems like this had potential to turn out as a win-win for both companies if they chose to negotiate some terms. I feel that an easy solution to the problem of the collectible packs would be to have Luxo AS manufacture the small lamps, so they would be accredited for their work, and there would be no question of quality to confuse the consumers. The issue of the attraction in Orlando is a bit more tricky, but again, it seems that there are certain conditions that could be negotiated to create a mutual benefit for both parties.

References

“Luxo Lawsuit Settled.” Big Screen Animation. N.p., 4 Nov. 2009. Web. 20 Feb. 2014.

“Trademark Infringement.” LII / Legal Information Institute. Cornell University, n.d. Web. 20 Feb. 2014.

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