May 5, 2020
Robert L. Lichter
Lanard Toys Limited v. Dolgencorp LLC et. al., No. 19-1781 (Fed. Cir. May 14, 2020)
In Lanard, the Court of Appeals for the Federal Circuit (CAFC) affirmed the denial of Lanard’s claims for design patent infringement, copyright infringement, trade dress infringement, and unfair competition. Regarding the issue of design patent infringement, according to the CAFC panel, “the district court followed our claim constriction directives to a tee.”
Lanard makes and sells the “Lanard Chalk Pencil,” a toy chalk holder designed to look like a pencil. Lanard owns U.S. Design Patent D671,167 for a “Chalk holder,” and U.S. copyright registration VA 1-794-458 for a “Pencil/Chalk Holder.”
There was no dispute that Ja-Ru used the Lanard Chalk Pencil as a reference in designing its own toy chalk holder, which it then began selling to the other defendants. Lanard filed suit for design patent infringement, copyright infringement, trade dress infringement, and unfair competition under federal and state law.
The U.S. District Court for the Middle District of Florida had granted summary judgment that Ja-Ru’s chalk pencil does not infringe the ‘167 patent. Under the two-part test for determining design patent infringement, the court first construed the claim and then compared the properly construed claim to the accused design. In its claim construction analysis, the district court identified ornamental and functional features of the claimed chalk holder, as well as ornamental aspects of each functional element. The court also considered features of the claimed design as they relate to the accused design and the prior art. In view of the prior art references, which were all directed to the shape and design of a pencil, the district court stated, “the overall appearance of Lanard’s design is distinct from this prior art only in the precise proportions of its various elements in relation to each other, the size and ornamentation of the ferrule, and the particular size and shape of the conical tapered end.” Having construed the claim, the district court then compared the accused design to Lanard’s patented design. According to the district court, although there are similarities between the two, the problem for Lanard “is that the design similarities stem from aspects of the design that are either functional or well-established in the prior art.” The district court found that there was no genuine factual dispute precluding summary judgment, concluding that an ordinary observer would not believe the accused product to be the same as Lanard’s patented design. The CAFC panel found no error with the district court’s analysis.
The district court had also found Ja-Ru’s ‘458 copyright is invalid, and alternatively that Ja-Ru’s chalk pencil does not infringe the ‘458 copyright. It considered whether the copyright incorporates features that are sufficiently separable from the utilitarian aspects of the article to be eligible for copyright protection. According to the district court, “the pencil design does not merely encase or disguise the chalk holder, it is the chalk holder. When one imagines the pencil design as a separate work of sculptural art, one is merely picturing a replica of the chalk holder.” Relying on Star Athletica LLC v. Varsity Brands, Inc., the CAFC agreed with the district court.
The CAFC also affirmed the district court’s grant of summary judgment on the trade dress and unfair competition claims.
Key Takeaway: The CAFC holds this lower court decision out as an example of proper design patent claim construction. The CAFC panel stated, “Here, the district court followed our claim constriction directives to a tee.” Copyright registration for a useful article (here, a chalk holder) is not valid where the owner seeks to protect the dimensions and shape of the useful article itself.
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