In Brief:  Copyright does not protect “useful articles” and design patents don’t always protect against infringement.

Here’s What Happened. Sidewalk chalk has been around a long time. Lanard Toys Ltd. designed chalk holders that looked like No. 2 pencils. Lanard sold the chalk holders to distributors and toy store chains like Toys R Us.  Lanard sought and obtained both a registered copyright and a design patent.

In 2012, Ja-Ru Inc. designed its own No. 2 pencil-lookalike chalk holder. As the illustration in this post shows, there’s little doubt that Ja-Ru copied Lanard’s chalk holder. In fact, Ja-Ru admitted that it used Lanard’s product as a reference. In 2013, Lanard’s customers started ordering from Ja-Ru instead of Lanard.

Lanard sued Ja-Ru and Toys R Us for copyright infringement, design patent infringement, trade dress infringement and unfair competition.

The defendants’ motion for summary judgment was granted and affirmed on appeal. The court held that Lanard didn’t have a valid copyright and the defendants didn’t infringe on the design patent.

On the copyright issue, the chalk holders are useful articles and can’t be protected by copyright. In Star Athletica, L.L.C. v. Varsity Brands, Inc., the US Supreme Court held that only ornamental, non-functional elements of a useful article can be protected by copyright. In this case, the chalk holder didn’t have sufficient ornamental elements for copyright protection.  Lanard argued that its product design should be protected as a sculptural work. The court rejected this argument, finding that "the pencil design does not merely encase or disguise the chalk holder, it is the chalk holder." 

Lanard’s design patent held up but victory eluded Lanard. The court used the “ordinary observer test” to construe the claims in the patent. The analysis focused on the design aspects of the chalk holder, including the eraser’s shape, the grooves in the ferrule, the taper of the point, and the proportionate sizes of those elements. Since Ja-Ru’s product was proportioned differently from the design in Lanard’s patent, no infringement had occurred.

Why You Should Know This.   Lanard experienced a common Intellectual Property black hole. The design and the utilitarian function of the chalk holder could not be separated for copyright protection. As for the design patent, the protection stopped at the literal design of the chalk holder. The slight changes that Ja-Ru made were enough to avoid infringement. So, what’s the best way to protect a useful article? Start at the design level. Include non-utilitarian ornamental aspects that can be separated from the article’s utilitarian function.