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Luxo A.S. sues Pixar for trademark infringement
In 1986, John Lasseter created an animated short to promote the know-how of his new company, and depicted the "Luxo Jr." desk lamp to show the special effects Pixar was able to design.
After having won an Oscar nomination for the first “Best Animated Short Film”, the lamp became the mascot for the studio, notably present before and after every feature film, and sometimes in specific variations (e.g. in “Cars” it stood for the zero in the “Celebrating 20 Years” message, and in “Wall E” the little robot changes its bulb).
”Luxo Jr.” being a representation of the existing “L-1” lamp created in 1937 by the Norwegian company Luxo A.S., its use by Pixar had been subject to an authorization of its original designer (Jacob Jacobsen).
Jacobsen had previously bought the production rights of the English 1934 “Anglepoise” lamp of George Carwadine, and redefined the overall aspect of this task lamp.
Both Pixar and Luxo found a commercial interest in their quid pro quo, since Pixar had become famous, among others thanks to its “Luxo Jr.” animated, and that this latter made the promotion of Luxo’s “L-1”.
However, this 20-year-long agreement could have been broken when Luxo filed a lawsuit against Pixar in September 2009, having discovered that the American studio had decided to package a limited-edition "Luxo Jr." lamp with the Blu-ray version of its movie "Up", and had created an audio-animatronic version of "Luxo Jr." at the Disney’s Hollywood Studios theme park.
The Norwegian lamp manufacturer, who claimed suffering devastating damage due to the dilution of its goodwill, based its legal action on trademark and copyright infringement as well as unfair competition.
Indeed, Luxo A.S. had agreed to Pixar using the representation of its “L-1”, but not its trademark (U.S. registrations No. 778106 and 1314484) and company name with no compensation and no prior authorization.
Since the goods at stake and the sign under which they were sold were identical, the likelihood of confusion was obvious, and the targeted public might have been deceived as to the origin of the lamps.
Even though contractual relations had been established beforehand, the fact that Pixar was allowed to use the visual representation of Luxo’s “L-1” task lamp in its “Luxo Jr.” version had never implied authorization to use the related trademarks for commercial purposes, nor to manufacture and sell real lamps.
In November 2009, the parties finally settled the matter amicably and the lawsuit was dismissed: Pixar undertook to stop selling lamps, especially under the “Luxo Jr.” name, and Luxo A.S. agreed to keep on letting Pixar use its famous character in its motion pictures.
Another story showing that authorization should always be sought before using an existing Intellectual Property Right, so that no issue arises even within the frame of long-lasting business relations.