On March 27, 2014, Lanard filed suit in the United States District Court for the District of New Jersey against Dolgencorp, TRU, and Ja-Ru, J.A. In late 2013, Dolgencorp and TRU stopped ordering units of the Lanard Chalk Pencil and instead began ordering and selling the Ja-Ru product. Ja-Ru Product It is undisputed that Ja-Ru used the Lanard Chalk Pencil as a reference sample in designing its product. (“Ja-Ru”) designed a toy chalk holder that looks like a pencil. All Lanard Chalk Pencils sold to Dolgencorp and TRU were marked to indicate Lanard’s copyright and patent (or pending patent) protection. (“TRU”), which was a large toy retailer with stores throughout the United States. In 2012, Lanard began selling the Lanard Chalk Pencil to Toys “R” Us–Delaware, Inc. DOLGENCORP LLC Filed: 3 In 2011, Lanard began selling the Lanard Chalk Pencil to Dolgencorp LLC (“Dolgencorp”), which is a national distributor. 1) ’458 copyright (first image) Case: 19-1781 Document: 61 LANARD TOYS LIMITED Page: 3 v. VA 1-794-458 (the “’458 copyright”) for a work entitled “Pencil/Chalk Holder.” The relevant images are depicted below. The D167 patent claims: “The ornamental design for a chalk holder, as shown and described.” Lanard also owns copyright Reg. Lanard owns Design Patent D671,167 (the “D167 patent”), which contains five figures showing a pencil-shaped chalk holder from different angles. BACKGROUND Lanard makes and sells the “Lanard Chalk Pencil,” which is a toy chalk holder designed to look like a pencil.
For the reasons described below, we affirm. (collectively, “Appellees”) with respect to Lanard’s claims for design patent infringement, copyright infringement, trade dress infringement, and statutory and common law unfair competition. Lanard Toys Limited (“Lanard”) appeals from the decision of the United States District Court for the Middle District of Florida granting summary judgment in favor of Dolgencorp LLC, Ja-Ru, Inc., and Toys “R” Us–Delaware, Inc.
Case: 19-1781 Document: 61 2 Page: 2 LANARD TOYS LIMITED Filed: v. _ Before LOURIE, MAYER, and WALLACH, Circuit Judges. PAGE, Holland & Knight LLP, Jacksonville, FL ILENE PABIAN, Miami, FL. LEWIS ANTEN, Lewis Anten, PC, Encino, CA, for defendants-appellees. _ Decided: _ RICHARD PAUL SYBERT, Gordon Rees Scully Mansukhani LLP, San Diego, CA, for plaintiff-appellant. 3:15-cv-00849-MMH-PDB, Judge Marcia Morales Howard. DOLGENCORP LLC, JA-RU, INC., TOYS "R" USDELAWARE, INC., Defendants-Appellees _ 2019-1781 _ Appeal from the United States District Court for the Middle District of Florida in No. Lanard cannot establish that the Chalk Pencil has acquired secondary meaning.Ĭase: 19-1781 Document: 61 Page: 1 Filed: United States Court of Appeals for the Federal Circuit _ LANARD TOYS LIMITED, Plaintiff-Appellant v. Because the chalk holder itself is not copyright protectable, Lanard cannot demonstrate that it holds a valid copyright.
Lanard’s copyright is for the chalk holder itself Lanard’s arguments seek protection for the dimensions and shape of the useful article itself. Lanard impermissibly seeks to exclude any chalk holder in the shape of a pencil and extend the scope of the patent beyond the “new, original and ornamental design,” 35 U.S.C. The district court properly construed the claims commensurate with the statutory protection for an ornamental design. Lanard’s unfair competition claims failed because its other claims failed. The Federal Circuit affirmed summary judgment that Ja-Ru’s product does not infringe the patent, that the copyright is invalid and alternatively not infringed, and that Ja-Ru’s product does not infringe Lanard’s trade dress. Lanard sued, asserting copyright infringement, design patent infringement, trade dress infringement, and statutory and common law unfair competition. Lanard’s retailers stopped ordering the Chalk Pencil and began ordering Ja-Ru’s product. Ja-Ru designed a toy chalk holder, using the Chalk Pencil as a reference sample. Lanard sold the Chalk Pencil, marked to indicate Lanard’s copyright and patent protections, to national retailers. Lanard owns Design Patent D167 and the 458 copyright for a work entitled “Pencil/Chalk Holder,” relating to a toy chalk holder designed to look like a pencil.
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