Children’s Toy Manufacturer Allegedly Infringes On Copyright Design


Copyright Expert

Court: United States District Court for the Middle District of Florida, Jacksonville Division
Jurisdiction: Federal
Case Name: Lanard Toys Ltd. v. Toys “R” US-Delaware, Inc.
Citation: 2019 U.S. Dist. LEXIS 46911


The plaintiff, Lanard Toys Limited, developed and held copyright design patents on the children’s toy, Chalk Pencil, a chalk holder in the shape of a no. 2 pencil. The defendant Ja-Ru, Inc. announced a similar version of a chalk holder in the shape of a pencil. Other defendants Toys R US-Delaware, Inc. and Dolgencorp, LLC began to sell the Ja-Ru product instead of the plaintiff’s Chalk Pencil. Lanard brought this lawsuit asserting claims for copyright infringement, patent infringement, trade dress infringement, and unfair competition against the defendants.

The Experts

The defendants’ copyright expert specialized in design patent infringement, design patent invalidity, trade dress issues, patent appeal board, and ITC reviews. He held bachelor’s and master’s degrees in design, and he had been in practice for over 40 years.

The plaintiff’s copyright expert had more than 40 years of industry design experience as 1) an industrial designer and manufacturer for the U.S. government; 2) a consultant for design firms; 3) the head of corporate design for Bristol-Myers Company; and 4) the head of Revlon’s POP display department.

Neither Lanard nor the defendants challenged the qualifications of either expert regarding their experience in industrial design.

Court Discussion

The court questioned whether the analyses and opinions of industrial designers would aid fact-finders in this case, as copyright infringement is premised on similarity seen by the “average lay observer.”

The court observed that experts’ factual analysis would help the fact-finder while determining the shapes and features one observed when designs are compared. Lanard contented that the defendant expert’s analyses were not consistent with the ordinary observer standard. However, the court rejected his contention as Lanard’s argument was not in regard to the admissibility of the defendant expert’s opinion.

Lanard sought exclusion of the defendant copyright expert’s opinion that a patent is “primarily functional, not ornamental,” as the expert relied on incorrect legal standard to determine functionality. Lanard contended that legal standard obtained by the defendants’ expert was applicable on trademarks, not patents. However, the court refused to exclude the testimony as it found that Federal Court had applied the concept of functionality on which the defendant expert’s opinion relied upon.

With regard to the motion to exclude the plaintiff’s expert, the court found that the defendants were entitled to summary judgment on the issues pertaining to patent and copyright infringement. The court did not address the request of the defendant to exclude his testimony except the ultimate opinions and denied the remaining motion as moot.

Lanard contended that opinions of the defendants’ expert were not reliable because he cited prior art references without establishing that the references did in fact exist prior to the patent. The defendants presented unrebutted evidence that art references to the no. 2 pencil have been used in commerce for years. Lanard did not challenge or even acknowledge evidence establishing other designs references pencils existed prior to the Chalk Pencil.


The court observed that the ultimate issue was infringement, and this issue could not be a proper subject for the testimony of the expert. Therefore, the court excluded the ultimate conclusions of both the experts on the issues of infringement except the factual analysis.

Lanard’s request to exclude the defendant expert’s opinions on this basis were deemed without merit. It was held that a copyright expert witness must know “facts which would enable him to express a reasonably accurate conclusion instead of mere conjecture or speculation.”

Based on this, the court granted the motion in part and denied it in part.