Federal Circuit Denies Extension of IP Protection on Copycat Chalk Holder Product

In Lanard Toys Ltd. v. Dolgencorp LLC, No. 2019-1781 (Fed. Cir. May 14, 2020), the Federal Circuit affirmed a district court’s grant of summary judgment in favor of Dolgencorp holding that Lanard’s design patent, copyright, and trade dress infringement claims failed.

Lanard owns a copyright and design patent on its toy chalk holder that is designed to look like a pencil. Lanard originally began selling the Lanard Chalk Pencil to Dolgencorp and Toys “R” Us. A year later, Ja-Ru, Inc. designed a look-alike chalk holder using the Lanard Chalk Pencil as a reference. Lanard brought suit alleging, inter alia, copyright infringement, design patent infringement, and trade dress infringement. Both parties filed motions for summary judgment, and the district court granted Dolgencorp’s motion.

On appeal, the Federal Circuit rejected Lanard’s arguments and held that the district court correctly granted summary judgment in Dolgencorp’s favor. Beginning with the design patent claim, the Court construed a number of features of the claimed design as being “functional.”  The Court also noted that Lanard’s design patent was only distinct from the prior art with regard to its proportion and the size and shape of the tapered end.  Turning to its comparison of the patented design and the Ja-Ru product, the Court thus noted that the design similarities stemmed from aspects of the claimed design that are either functional or well-established in the prior art.  Therefore, the Court concluded that no reasonable fact finder could find infringement under the ordinary observer test. 

In its copyright analysis, the Federal Circuit explained that Lanard was seeking copyright protection over “the idea of a pencil-shaped chalk holder,” but copyright protection did not protect “ideas.” The Court held that Lanard’s copyright was invalid and not infringed because Lanard’s product had an “intrinsic utilitarian function” and could not exist independently as a work of art entitled to copyright protection.

Additionally, the Court held that the accused product did not infringe Lanard’s trade dress because Lanard failed to provide adequate evidence to prove that consumers could associate the product with the company, as required for trade dress infringement. The Court also noted that no reasonable trier of fact could conclude that the Lanard Chalk Pencil acquired secondary meaning.