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If copyright “is not capable of ‘existing independently’ as a work of art, it is not protectable under copyright law

Lanard makes and sells the “Lanard Chalk Pencil,” which is a toy chalk holder designed to look like a pencil. Lanard owns Design Patent, which contains five figures showing a pencil-shaped chalk holder from different angles. Lanard also owns copyright Reg. for a work entitled “Pencil/Chalk Holder.”

In 2011, Lanard began selling the Lanard Chalk Pencil to Dolgencorp LLC, which is a national distributor. In 2012, Lanard began selling the Lanard Chalk Pencil to “TRU”, which was a large toy retailer with stores throughout the United States. All Lanard Chalk Pencils sold to Dolgencorp and TRU were marked to indicate Lanard’s copyright and patent protection. In 2012, Ja-Ru, Inc. designed a toy chalk holder that looks like a pencil.

It is undisputed that Ja-Ru used the Lanard Chalk Pencil as a reference sample in designing its product. In late 2013, Dolgencorp and TRU stopped ordering units of the Lanard Chalk Pencil and instead began ordering and selling the Ja-Ru product. On March 27, 2014, Lanard filed suit against Dolgencorp, TRU, and Ja-Ru.

The district court granted summary judgment that Ja-Ru’s product does not infringe the patent, that the copyright is invalid and alternatively not infringed by JaRu’s product, that Ja-Ru’s product does not infringe Lanard’s trade dress, and that Lanard’s unfair competition claims fail because its other claims fail. Lanard appealed.

Lanard asserted three challenges against the district court’s decision on design patent infringement. First, Lanard argues that the court erred in its claim construction by eliminating elements of the design based on functionality and lack of novelty.

Second, Lanard argues that the court erred in its infringement analysis by conducting an element-by-element comparison rather than comparing the overall designs. Third, Lanard argues that the court used a rejected “point of novelty” test to evaluate infringement.

The district court began by placing the patented design side-by-side with the Ja-Ru product and noting that they “share a broad design concept – they are both chalk holders designed to look like a no. 2 pencil.” But, importantly, the court noted that “the problem for Lanard, however, is that the design similarities stem from aspects of the design that are either functional or well-established in the prior art.”

Thus, the court found that “the attention of the ordinary observer ‘will be drawn to those aspects of the claimed design that differ from the prior art,’” which would cause “the distinctions between the patented and accused designs to be readily apparent”.

The court concluded, based on the evidence presented, that no reasonable fact finder could find that an ordinary observer, taking into account the prior art, would believe the accused design to be the same as the patented design.

Lanard insists that the district court made two errors in its infringement analysis. First, Lanard argues that the court conducted an element-by-element comparison “in lieu of” a comparison of the overall design and appearance of the claimed design and the Ja-Ru product. Second, Lanard argues that the court revived the “point of novelty” test that the appeal has rejected.

To be clear, the “ordinary observer” test for design patent infringement requires the fact finder to “compare similarities in overall designs, not similarities of ornamental features in isolation.” But, while the “ordinary observer” test is not an element-by-element comparison, it also does not ignore the reality that designs can, and often do, have both functional and ornamental aspects.

Under the “ordinary observer” test, a court must consider the ornamental features and analyze how they impact the overall design. That is what the district court did in this case.  In comparing the overall design of the patent with the overall design of the Ja-Ra product, the court necessarily considered how the ornamental differences in each element would impact the ordinary observer’s perception of the overall designs.

Copyright infringement

The district court found that, as a matter of law, Lanard cannot show that it owns a valid copyright, and alternatively, that Lanard cannot show that Appellees infringed any protectable aspect of that work.

As the district court found, Lanard’s ’458 copyright for a “Pencil/Chalk Holder” has an intrinsic utilitarian function – storing and holding chalk and facilitating writing or drawing – which makes it a useful article under the Copyright Act.

Thus, as the district court noted, the pertinent question is whether the copyright incorporates features that are sufficiently “separable” from the utilitarian aspects of the article to be eligible for copyright protection.

Based on that finding, the court concluded that the features of Lanard’s copyright “are not capable of ‘existing independently’ as a work of art, and therefore, it is not protectable under copyright law.”

Lanard argues that its ’458 copyright is a cartoonish No. 2 pencil design that can be perceived as a sculptural work separate from its function as a chalk holder and would qualify as a protectable work on its own if imagined in another medium separate from its utility as a chalk holder.

Here, Lanard’s ’458 copyright is for the chalk holder itself, and Lanard’s arguments in the district court and in this appeal merely confirm that it seeks protection for the dimensions and shape of the useful article itself. Because the chalk holder itself is not copyright protectable, Lanard cannot demonstrate that it holds a valid copyright.

Furthermore, the ’458 copyright shows images that appear to be a pencil with the words “Chalk Pencil” on it, and the copyright is titled “Pencil/Chalk Holder.” Based on that limited information, in conjunction with its arguments in the district court and this appeal, Lanard is essentially seeking to assert protection over any and all expressions of the idea of a pencil-shaped chalk holder.

On appeal, Lanard merely emphasizes that it sold a lot of units of the Lanard Chalk Pencil through direct marketing to wholesalers and retail stores, but Lanard cites no evidence as to how those customers view its Lanard Chalk Pencil product.

The appeal affirmed the judgment of the district court.

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