## Facts

- Lanard manufactured the “Lanard Chalk Pencil,” a toy chalk holder designed to resemble a pencil.
- Lanard owned U.S. Design Patent No. D671,167 covering the ornamental design of the chalk holder and a copyright registration for a work titled “Pencil/Chalk Holder.”
- Lanard sold the Chalk Pencil to Dolgencorp beginning in 2011 and to Toys “R” Us beginning in 2012; the products were marked for patent and copyright protection.
- In 2012, Ja-Ru designed a competing pencil-shaped chalk holder and used Lanard’s product as a reference sample.
- By late 2013, Dolgencorp and Toys “R” Us stopped ordering Lanard’s product and instead ordered and sold Ja-Ru’s competing product.
- Lanard sued for design patent infringement, copyright infringement, trade dress infringement, and federal/state unfair competition; the district court granted summary judgment for defendants on all claims.

## Issues

1. Whether summary judgment of no infringement of Lanard’s D167 design patent was proper under a correct construction of the claimed ornamental design and the ordinary observer test in view of the prior art.
2. Whether Lanard’s copyright in the “Pencil/Chalk Holder” was invalid as an uncopyrightable useful article, and, if valid, whether it was infringed.
3. Whether Lanard established protectable trade dress (including nonfunctionality and secondary meaning) and infringement.
4. Whether Lanard’s unfair-competition claims could proceed absent liability on the asserted intellectual property theories.

## Decision

- The Federal Circuit affirmed summary judgment for defendants on all claims.
- The court held there was no design patent infringement because, considering the prior art and overall visual impression, no reasonable factfinder could find substantial similarity under the ordinary observer test.
- The court held the asserted copyright was invalid because it sought protection for the shape/dimensions of a useful article without separable artistic features; alternatively, the court agreed there was no actionable copying of protectable expression.
- The court held Lanard failed to establish protectable trade dress because it did not show secondary meaning and the asserted features were functional or common.
- The court held the unfair-competition claims failed because they were predicated on the unsuccessful patent, copyright, and trade dress claims.

## Legal Principles

- A design patent protects only the “new, original and ornamental” aspects of an article of manufacture; it cannot be used to claim a broad monopoly over a common or functional product concept.
- Design patent infringement is assessed under the ordinary observer test, and the significance of differences between designs is evaluated in light of the closeness of the prior art.
- Copyright does not protect a useful article’s overall shape; protection extends only to pictorial, graphic, or sculptural features that are identifiable separately from, and capable of existing independently of, the article’s utilitarian aspects.
- Product-design trade dress requires proof of nonfunctionality and secondary meaning; evidence of sales and marketing alone may be insufficient to show consumers view the design as a source identifier.
- Unfair-competition theories that rest on alleged intellectual property violations generally fail when the underlying IP claims fail absent an independent deceptive practice.

## Conclusion

The court affirmed judgment for defendants because Lanard’s design patent did not cover the general idea of a pencil-shaped chalk holder, the copyright claimed an uncopyrightable useful article, Lanard failed to prove secondary meaning for trade dress, and the unfair-competition claims depended on those unsuccessful theories.


Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020)