Aspiring patent attorneys often are introduced to the art of claim drafting for utility patents by reference to a number 2 pencil. The pencil is a simple item of manufacture with four parts: the writing tip; the hexagonal body; the ferrule (metal piece that attaches the eraser); and the eraser. This simple and familiar construction makes the pencil an ideal model for learning to draft claims for utility patents, that is, patents for functional items of manufacture.
As it turns out, reference to the simple number 2 pencil can help shed light on other forms of intellectual property: those that protect nonfunctional designs. A recent federal circuit case considered the modest number 2 pencil in the context of design patents and copyrights. A close look at the holding of the court and the detailed decision of the district court helps to explain the nonfunctional requirement for design patents and copyrights, and the differences between these two types of intellectual property.
In Lanard v. Dolgencorp LLC, 2020 U.S. App. Lexis 15422 (Fed. Cir. May 14, 2020), the federal circuit considered, among other issues, design patent and copyright protection for a sidewalk chalk holder designed to look like a number 2 pencil. In 2011, Lanard began selling its chalk holder, which it purported to protect by design patent and copyright. In 2012, Dolgencorp copied the idea of a chalk holder in the image of a pencil and began selling its own version. Lanard's sales fell, and Lanard sued Dolgencorp for, among other things, design patent infringement and copyright infringement. On motion for summary judgment, the U.S. District Court for the Middle District of Florida found no infringement on either count, 2019 U.S. Dist. Lexis 46911 (M.D. Fla. Mar. 21, 2019), and the federal circuit affirmed.
Design Patent
The district court assumed for purposes of its patent infringement analysis that the design patent was valid and protected the ornamental features of the "columnar shape of the eraser, the specific grooved appearance of the ferrule, the smooth surface and straight taper of the conical piece, and the specific proportional size of these elements in relation to each other." These aspects were shared by the design patent and the accused product, but their up-close designs were different. For example, the ferrule had different patterns of grooves and the body was stouter on the Dolgencorp model. Any similarities between the patented design and the accused product all stemmed from the functional aspects of the toy: both were chalk holders in the familiar design of a number 2 pencil. Because the accused product was similar to the patented design in only the functional aspects and differed from the patent in the protectable, ornamental features, there was no patent infringement.
The district court did not reach the issue of patent validity, but it did suggest that the patent was likely not valid because the chalk holder differed from the prior art pencils only in function, not in design. Since "the mere transferring of an old design to a new and analogous use is not patentable design invention," it seemed likely that the examiner had erred in issuing the patent.
Copyright
The copyright infringement claim failed because the design of the toy was functional and therefore could not be the subject of a valid copyright. The district court explained that the Copyright Act allows protection for a pictorial, graphic, or sculptural work incorporated into a useful article, but the copyright extends only to any design features that can be "identified separately from, and are capable of existing independently of, the utilitarian aspects of the article."
The district court found that the copyrighted chalk holder had two purposes: first, the utilitarian purpose of storing and holding chalk to facilitate writing; and second, the artistic purpose of evoking a cartoonish pencil to delight children. But the design aspects of the toy were not separable from the functional aspects of the toy ("the pencil design does not merely encase or disguise the chalk holder, it is the chalk holder"), and therefore, the chalk holder was not properly the subject of copyright protection. The federal circuit affirmed this holding.
Difference Between Design Patent and Copyright
This case aptly illustrates the difference between a design patent and a copyright for the design of a product. While both protect only nonfunctional aspects of a product, the difference is the separability of the design aspects from the functional aspects. A design patent only protects the design aspects of a functional item, but the design aspects need not be separable from the functional aspects. A copyright, on the other hand, also only protects the design aspects of a functional item, but only to the extent that the design aspects exist as a copyrightable work independent of the functional aspects.
For example, the hexagonal body of the chalk holder is functional in that it holds the chalk, but it has a design aspect in that it is hexagonal. This hexagonal shape, were it new, would be entitled to design patent protection. But since the hexagonal body is the chalk holder and cannot be separated from the chalk holder, it is not entitled to copyright protection. See also Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017).
The concept of a pencil with an eraser on the end opposite the lead tip dates back to at least 1858, when it was patented by Hymen Lipman as utility patent number 19783. It stands to reason that it would be difficult to protect any new ideas that incorporate this old and ubiquitous design. But, as it turns out, and as discussed above, the modest pencil still has valuable lessons to teach.
Originally published by DRI: The Voice, on June 2020
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