Lanard Toys Ltd. v. Toys "R" United States-Delaware, Inc.
| Decision Date | 21 March 2019 |
| Docket Number | Case No. 3:15-cv-849-J-34PDB |
| Parties | LANARD TOYS LIMITED, Plaintiff, v. TOYS "R" US-DELAWARE, INC., DOLGENCORP, LLC, and JA-RU, INC., Defendants. |
| Court | U.S. District Court — Middle District of Florida |
THIS CAUSE is before the Court as a copyright, patent, trade dress and unfair competition action pertaining to a toy chalk holder. See generally Second Amended Complaint and Demand for Jury Trial (Doc. 103; Amended Complaint). Plaintiff Lanard Toys Limited (Lanard) developed a chalk holder in the shape of an over-sized, no. 2 pencil (the Chalk Pencil) as a fanciful toy for children. Lanard registered a copyright in its Chalk Pencil and also obtained a design patent for the toy. Soon thereafter, Defendant Ja-Ru, Inc. (Ja-Ru) released a similar version of a chalk holder in the shape of a pencil (the Ja-Ru Chalk Holder). When Defendants Toys R US-Delaware, Inc. (TRU) and Dolgencorp, LLC (Dolgencorp) stopped selling Lanard's Chalk Pencil and began selling the Ja-Ru Chalk Holder instead, Lanard brought this lawsuit asserting claims for copyright infringement, patent infringement, trade dress infringement and unfair competition against Defendants. Defendants responded with counterclaims seeking declaratory judgment as to the invalidity, unenforceability, and non-infringement of Lanard's copyright, patent and trade dress, as well as the lack of any unfair competition. See Answer, Affirmative Defenses, and Counterclaim to Second Amended Complaint, and Demand for Jury Trial (Docs. 270-272). At present, this simple toy, retailing at less than $5, has spawned five years of contentious litigation, hundreds of pages of evidence, expert testimony, and legal briefing, and no doubt hundreds of thousands of dollars in legal fees. Having unsuccessfully encouraged the parties to resolve the dispute amicably, the Court now turns to the merits of their claims.
On July 24, 2017, the parties filed cross motions for summary judgment. See Plaintiff's Motion for Partial Summary Judgment (Doc. 299; Lanard Motion); Defendants' Dispositive Motion for Summary Judgment and Memorandum of Law in Support (Doc. 302; Defendants Motion). In the Lanard Motion, Lanard seeks summary judgment in its favor on all of its claims, as well as Defendants' counterclaims for declaratory relief, and argues that damages are the only issue remaining for trial. See Lanard Motion at 1. In their Motion, Defendants move for summary judgment in their favor on all of Lanard's claims. See Defendants Motion at 1. The parties filed responses in opposition to these summary judgment motions on August 7, 2017. See Defendants Toys "R" Us-Delaware, Inc., Dolgencorp, LLC and Ja-Ru, Inc.'s Response in Opposition to Plaintiff Lanard Toys Limited's Motion for Partial Summary Judgment (Doc. 320; Defendants Response); Plaintiff's Response in Opposition to Defendants' Motion for Summary Judgment (Doc. 321; Lanard Response).1 On September 5, 2017, with leave of Court, Plaintiff filed a reply in support of its Motion for Summary Judgment. See Plaintiff Lanard Toys Limited'sResponse in Reply to Defendants' Response in Opposition to Plaintiff's Motion for Partial Summary Judgment (Doc. 382; Reply). On November 13, 2017, the Court stayed this matter due to TRU's bankruptcy. See Order (Doc. 391). After the Court lifted the stay on April 2, 2018, the parties filed notices of supplemental authority in support of their summary judgment briefing. See Plaintiff Lanard Toys Limited's Notice of Supplemental Authority in Support of its Motion for Partial Summary Judgment (Doc. 410); Defendants' Amended Notice of Supplemental Authority re: Motion for Summary Judgment (Doc. 419).2
On July 31, 2017, the parties filed seven Daubert motions. Lanard filed three such motions: one as to Defendants' patent and copyright expert, Ronald B. Kemnitzer, one as to Defendants' design expert, Deborah Ryan, and one as to Defendants' damages expert Michael J. Mard. See Plaintiff's Motion to (1) Strike the Supplemental Report of Ronald B. Kemnitzer as Untimely; and (2) Exclude the Opinions and Testimony of the Defendants' Purported Expert Ronald B. Kemnitzer (Doc. 310; Kemnitzer Motion); Plaintiff Lanard Toys Limited's Motion to Exclude the Opinions and Testimony of Deborah Ryan (Doc. 313; Ryan Motion); Plaintiff Lanard Toys Limited's Motion to Exclude the Opinions and Testimony of the Defendants' Purported Expert Michael J. Mard, CPA (Doc. 312; Mard Motion). Defendants responded to each of these motions on August 10, 2017. See Defendants' Response in Opposition to Plaintiff Lanard Toys Limited's Motion to Exclude the Opinion and Testimony of Deborah Ryan (Doc. 331; Ryan Response); Defendants' Response in Opposition to Plaintiff Lanard Toys Limited's Motion (1) to Strike the Supplemental Reportof Ronald B. Kemnitzer as Untimely; and (2) to Exclude the Opinions and Testimony of Ronald B. Kemnitzer (Doc. 336; Kemnitzer Response); Defendants' Response in Opposition to Plaintiff Lanard Toys Limited's Motion to Exclude the Opinion and Testimony of Michael J. Mard (Doc. 333; Mard Response). Lanard also filed notices of supplemental authority in support of its Daubert motions. See Plaintiff Lanard Toys Limited's Notice of Supplemental Authority in Support of its Motion to (1) Strike the Supplemental Report of Ronald B. Kemnitzer as Untimely; and (2) Exclue [sic] the Opinions and Testimony of the Defendants' Purported Expert Ronald B. Kemnitzer (Doc. 411); Plaintiff Lanard Toys Limited's Notice of Supplemental Authority in Support of its Motion to Exclude the Opinions and Testimony of the Defendants' Purported Expert Michael J. Mard, CPA (Doc. 412).
For their part, Defendants filed four Daubert motions: one as to Plaintiff's patent and copyright expert Robert John Anders, one as to Plaintiff's patent and copyright expert Parker H. Bagley, one as to Plaintiff's industry expert Larry B. Myer, and one as to Plaintiff's damages expert William Kerr. See Defendants' Daubert Motion to Disqualify Robert John Anders and Preclude Testimony (Doc. 314; Anders Motion); Defendants' Daubert Motion to Exclude Parker H. Bagley as an Expert and to Exclude his Rebuttal Expert Report and Testimony for all Purposes (Doc. 309; Bagley Motion); Defendants' Daubert Motion to Exclude Larry B. Myer as an Expert, Exclude His Initial and Rebuttal Expert Reports and Testimony for all Purposes, or Alternatively Motion to Strike New Materials and Opinions in Rebuttal Report (Doc. 315; Myer Motion); Defendants' Daubert Motion to Exclude William Kerr's Expert Report and Reply Expert Report and to Exclude Testimony for all Purposes, or Alternatively to Strike New Materials and Opinions in Reply Report; Memorandum of Law (Doc. 316; Kerr Motion). Plaintiff responded to each of thesemotions on August 10, 2017. See Plaintiff Lanard Toys Limited's Response in Opposition to Defendants' Daubert Motion to Disqualify Robert John Anders and Preclude Testimony (Doc. 329; Anders Response); Plaintiff's Response in Opposition to Defendants' Daubert Motion to Exclude Parker H. Bagley as an Expert and to Exclude his Rebuttal Expert Report and Testimony for all Purposes (Doc. 332; Bagley Response); Plaintiff's Response in Opposition to Defendants' Daubert Motion to Exclude Larry B. Myer as an Expert, and His Initial and Rebuttal Expert Reports and Testimony, and Motion to Strike (Doc. 334; Myer Response); Plaintiff Lanard Toys Limited's Opposition to Defendants' Daubert Motion to Exclude William Kerr's Expert Report and Reply Expert Report and to Exclude Testimony for All Purposes, or Alternatively to Strike New Materials and Opinions in Reply Report (Doc. 335; Kerr Response). Accordingly, all of those motions are ripe for review.
Lanard manufactures and sells toys to retail stores throughout the world, who, in turn, sell Lanard's toys to the public. See Lanard Response, Ex. 3: Declaration of James W. Hesterberg in Support of Lanard's Response in Opposition to Defendants' Motion for Summary Judgment (Doc. 321-3; Hesterberg Decl.) ¶ 3. In 2010, Lanard's designers developed a design for a chalk holder—"a device that can hold pieces of colored chalk to allow children to draw on the sidewalk." Id. ¶ 4. The initial design for this chalk holder was in the shape of a "magic wand." Id. However, an individual in the Lanard Hong Kong office saw the wand prototype and made the suggestion that it look like a big pencil instead. See Deposition of Blake C. Nichols (Doc. 341-1; Nichols Dep.) at 73-75. Lanard's corporate design director, Blake C. Nichols, then tasked Logan James Williams, a senior product designer at Lanard, with making the initial prototype of a chalk holder thatlooks like a pencil. See Nichols Dep. at 16-17, 82; Deposition of Logan James Williams (Doc. 353; Williams Dep.) at 26-28. In creating this prototype, Williams looked at pencils present in the design shop. See Williams Dep. at 39-40.
Lanard began selling its Chalk Pencil in the United States on November 1, 2010. See Declaration of Lewis Anten (Doc. 302-9; Anten Decl.) ¶ 6, Ex. E; see also Lanard Response, Ex. 4: Declaration of Angel Lee (Doc. 321-4; Lee Decl.) ¶ 9. Lanard submitted a United States copyright application for the design of the Chalk Pencil on September 20, 2011. See Lanard Response, Ex. C. The Copyright Office issued a Certificate of Registration for Lanard's Chalk Pencil effective September 20, 2011, and assigned it Registration No. VA 1-794-458. See Hesterberg Decl. ¶ 8; Lanard Response, Ex. D. The Certificate of Registration identifies the title of the work as "Pencil / Chalk Holder" and identifies it as a work of sculpture.3 See Lanard Response, Ex. D. Since the Chalk Pencil's first publication in 2010 and continuing with every Chalk Pencil sold since that time, Lanard has stamped a copyright notice, "© 2010 LANARD" into the plastic on the Chalk Pencil. See Hesterberg Decl. ¶ 10.
On August 3, 2011, Lanard designers Blake Christopher Nichols and ...
To continue reading
Request your trial