Author: Mark C. Humphrey
On May 14, 2020, the Federal Circuit Court of Appeals issued a decision in Lanard Toys Limited v. Dolgencorp LLC et al., Case No. 2019-178, affirming summary judgment for the defendants and dismissing claims for design patent and copyright infringement. The claims were grounded in a challenging intellectual property law concept: the level of protection available for objects claimed to have both aesthetic and utilitarian functions. While the decision does little to provide additional clarity on the issue, it offers a useful snapshot of current jurisprudence, particularly in the copyright context in light of the United States Supreme Court’s Star Athletica decision, and identifies the salient distinctions between copyright law, design patent law, and trade dress law as they apply to a product design.
Lanard involves toy chalk holders made to look and function like pencils. Since 2011, Lanard had been making and selling one such product, the “Lanard Chalk Pencil,” to national distributors including Dolgencorp LLC (parent of Dollar General) and Toys R’ Us (“TRU”). Lanard owned patent registrations for its design, as well as a copyright for a work entitled “Pencil/Chalk Holder.” In 2012, Ja-Ru, Inc. (“Ja-Ru”) released a similar toy chalk pencil holder that used the Lanard Chalk Pencil as a design reference. By 2013, Dolgencorp and TRU had stopped ordering the Lanard Chalk Pencil in favor of Ja-Ru’s product.
A few months later, Lanard filed suit against Ja-Ru, Dolgencorp, and TRU, asserting claims for copyright infringement, design patent infringement, trade dress infringement, and statutory and common law unfair competition under federal and state law. The parties filed cross-motions for summary judgment, with defendants prevailing on the grounds that (1) Ja-Ru’s product did not infringe Lanard’s patent; (2) Lanard’s copyright was invalid and in the alternative not infringed by Ja-Ru’s product; (3) Ja-Ru’s product did not infringe Lanard’s trade dress; and (4) Lanard’s unfair competition claims failed because its other claims failed. Lanard appealed to the Federal Circuit, which had jurisdiction owing to Lanard’s design patent infringement claim.
Of particular note is the discussion of Lanard’s copyright infringement claim. The Federal Circuit agreed with the district court that Lanard’s copyrighted design had an intrinsic utilitarian function: storing and holding chalk and facilitating writing. This made it a useful article under 17 U.S.C. § 102(a)(5). Under the standard recently annunciated by the United States Supreme Court in Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002, 1008 (2017), a feature incorporated into the design of a useful article is eligible for copyright protection only if it (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in another tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.
