958 F.3d 1337
Fed. Cir.2020Background
- Lanard manufactures the "Lanard Chalk Pencil," a pencil-shaped toy chalk holder, and owns Design Patent D671,167 and copyright registration VA 1-794-458 for the design.
- Ja-Ru designed a similar pencil-shaped chalk holder using Lanard’s product as a reference; major distributors Dolgencorp and Toys "R" Us (TRU) began buying Ja-Ru’s product instead of Lanard’s.
- Lanard sued Dolgencorp, Ja-Ru, and TRU for design patent infringement, copyright infringement, trade dress infringement, and statutory/common-law unfair competition; the case was transferred to the Middle District of Florida.
- The district court granted summary judgment for defendants on all claims, finding noninfringement of the design patent, the copyright invalid (and alternatively not infringed), no trade dress protection (no secondary meaning), and dismissed unfair competition claims as derivative.
- Lanard appealed to the Federal Circuit, which reviews the district court’s grant of summary judgment de novo under Eleventh Circuit law.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Design patent infringement | Lanard: court mis-construed the claim (improperly excised features), did element-by-element comparison, and resurrected a point-of-novelty test | Defendants: court correctly relied on drawings, separated ornamental vs. functional features, applied ordinary-observer test in light of prior art | Affirmed: claim construction and ordinary-observer analysis were proper; no infringement when viewed in context of prior art and functional elements |
| Copyright validity/infringement | Lanard: the "Pencil/Chalk Holder" design has separable, sculptural, cartoonish pencil features protectable by copyright | Defendants: the item is a useful article; the design is not separable from the utilitarian chalk-holder and thus not copyrightable | Affirmed: copyright invalid because the design is a useful article and lacks separable sculptural features; no need to reach infringement |
| Trade dress infringement | Lanard: widespread sales and being the only pencil-shaped chalk holder create secondary meaning among wholesalers/retailers | Defendants: Lanard offered only sales and copying evidence, no direct proof of secondary meaning; no evidence how customers identify source | Affirmed: no genuine dispute that Lanard failed to show secondary meaning; summary judgment for defendants |
| Unfair competition (statutory & common law) | Lanard: unfair competition should survive if underlying IP claims survive | Defendants: unfair competition claims depend on and fail with the IP claims | Affirmed: unfair competition claims fail because the underlying infringement claims fail |
Key Cases Cited
- Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) (sets ordinary-observer test and directs comparing designs in context of prior art)
- Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017) (provides separability test for copyright protection of designs on useful articles)
- Payless Shoesource, Inc. v. Reebok Int’l, Ltd., 998 F.2d 985 (Fed. Cir. 1993) (design-patent comparison must be to the claimed design, not a commercial embodiment)
- Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir. 1995) (two-step design-patent infringement framework: claim construction then comparison)
- Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316 (Fed. Cir. 2016) (design patents typically claimed as shown in drawings; distinguish ornamental vs. functional features)
- Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365 (Fed. Cir. 2006) (courts may discount functional aspects but must not convert inquiry into element-by-element test)
- Baby Buddies, Inc. v. Toys "R" Us, Inc., 611 F.3d 1308 (11th Cir. 2010) (copyright-infringement requires ownership of a valid copyright and copying of original elements)
- Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010) (consider ornamental elements and overall effect under ordinary-observer test)
- Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010) (examines overall ornamental effect in design-patent disputes)
- OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997) (where designs contain functional and non-functional elements, scope must identify non-functional aspects)