Chalk holder that looks like a pencil a four time loser at the Federal Circuit

Lanard Toys v Dolgencorp, Appeal No. 2019-1781, Fed. Cir. May 14, 2020

Lanard Toys makes and sells the “Lanard Chalk Pencil”, a chalk holder that looks like a pencil.  Lanard obtained Design patent D671,167 directed to the ornamental features of the chalk holder, and also owns copyright Reg. Va 1-794-458.  Lanard began selling their Chalk pencil to national distributor Dolgencorp in 2011, and to Toys-R-Us in 2012.  All products sold to both entities were correctly marked.  Ja-Ru used the Lanard chalk pencil as a reference sample in designing its product, and in 2013, both Dolgencorp and Toys-R-Us stopped ordering Lanard chalk pencils and instead begin ordering and selling the Ja-Ru product.   Lanard filed suit with 4 claims – for copyright infringement, design patent infringment, trade dress infringement and statutory and common law unfair competition.  The district court granted summary judgement that Lanard’s copyright is invalid and not infringed, Ja-Ru’s product does not infringe Lanard’s design patent or trade dress.  Larnard’s unfair competition claims failed because the other three did.

I.  Design Infringement

After viewing the patented design side by side with the Ja-Ru product and acknowledging that they shared the common design concept of being chalk holders designed to look like pencils, the District Court stated:

[t]he problem for Lanard, however, is that the design similarities stem from aspects of the design that are either functional or well-established in the prior art.

And held that no reasonable fact finder could find that an ordinary observer would believe the accused design to be the same as the patented design.

Lanard attempted to sway the Federal Circuit by emphasizing the similarities between its product and the Ja-Ru product, which drew the following rebuke from the Federal Circuit:

The test for infringement requires that “an accused design be compared to the claimed design not a commercial embodiment”…To the extent that the Lanard chalk pencil embodies features that are not claimed in its D167 patent, features that are purely functional, or features that are in the prior art, those features are not themselves entitled to patent protection.

The Federal Circuit affirmed the District Court, determining that Lanard had attempted “to exclude any chalk holder in the shape of a pencil and thus extend the scope of the D167 patent far beyond the statutorily protected “new, original and ornamental design.”

II. Copyright Infringement

Lanard’s copyright infringement claim failed under a similar analysis.  Specifically, the District Court found that Lanard’s copyright has an “intrinsic utilitarian function” – which makes it a useful article under the Copyright Act.  The District Court stated:

[T]he pencil design does not merely encase or disguise the chalk holder, it is the chalk holder.

Emphasis original.  And then held that the features of Lanard’s copyright are not capable of existing independently as a work of art, and it is thus not protectable under copyright law.

The Federal Circuit affirmed, holding:

Furthermore, the ‘458 copyright shows images that appear to be a pencil with the words “Chalk Pencil” on it, and the copyright is titled “Pencil/Chalk holder.”  Based on that limited information…Lanard is essentially seeking to assert protection over any and all expressions of the idea of a pencil-shaped chalk holder.  But copyright protection does not extend to an “idea.”

Lanard’s trade dress argument failed because the Federal Circuit held that they had not established that the Lanard Chalk Pencil had acquired secondary meaning.  And the unfair competition claims failed because the other three had failed.