United States: Barnes & Noble Schools Former FIT Student In IP Suit, As Federal Court Finds Backpack Design Not Copyrightable

Last Updated: December 29 2014
Article by Anthony V. Lupo and Anthony Peluso

A former student of the Fashion Institute of Technology (FIT) recently suffered a decisive blow in her lawsuit against her alma mater and Barnes & Noble, Inc. (Barnes & Noble), which is based on the latter's use of the student's copyrighted drawing in connection with the production of a line of backpacks. In largely granting Barnes & Noble's motion to dismiss, the Federal District Court for the Southern District of New York tossed out most of the student's claims against the retailer and the school, leaving intact only the student's claim of infringement relating to the defendants' alleged reproduction of her drawing. See Rubio v. Barnes & Noble, Inc., No. 14-cv-6561 (JSR) (S.D.N.Y. Nov. 12, 2014).

In August, Diana Rubio filed suit against Barnes & Noble and FIT, claiming that they had copied her drawing of a backpack, produced actual products based on her design, and sold them using her name without her permission. According to the complaint, Rubio studied accessory design at FIT in 2010-2011, and in the autumn of 2010, she and her classmates were required to create original designs as part of an accessory drawing course. The students were informed that each of their designs would be automatically entered in a contest sponsored by Barnes & Noble in collaboration with FIT, and Rubio's design was ultimately chosen as the winner. In May 2011, Barnes & Noble sent Rubio a letter announcing that it would be selling backpacks based on her design in its stores and on its website. In September 2011, Rubio received an email from FIT asking her to sign and return a consent form, which provided, in relevant part, that Rubio would assign her rights in the design to FIT for licensing to Barnes & Noble and would consent to Barnes & Noble's use of her name in connection with the product. However, Rubio never signed the form and otherwise never authorized FIT or Barnes & Noble to use her design or her name.

After discovering that Barnes & Noble had begun to sell backpacks based on her design and that the company had been using her name on the products' hangtags and related promotional materials, Rubio sent Barnes & Noble a cease-and-desist letter, with a copy to FIT, in June 2013. She eventually filed a complaint in federal court in August 2014, asserting five causes of action: (1) copyright infringement under the federal Copyright Act; (2) violation of her right of privacy under New York state law; (3) unjust enrichment under New York common law; (4) false association under the federal Lanham Act; and (5) false advertising under the Lanham Act. The defendants subsequently moved to dismiss all of Rubio's claims, the Court issued a short order granting most of the defendants' motion on October 24, 2014, and the Court later issued its corresponding memorandum opinion on November 11, 2014.

In its memorandum opinion, the Court began its analysis by separately addressing Rubio's copyright infringement claim as applied to the defendants' alleged reproduction of the drawing itself, and as applied to the defendants' preparation of "unauthorized derivative works" based on Rubio's drawing. As to the former, the Court concluded that Rubio had plead sufficient facts to state a claim, reasoning that it found it "plausible (indeed, highly likely) that, in order to produce a Backpack based on the Drawing, defendants must have copied the Drawing itself." It therefore denied the defendants' motion to dismiss this component of Rubio's infringement claim.

However, the Court held that Rubio's claim for copyright infringement based on the production of the actual backpacks must be dismissed, given that the Copyright Act expressly excludes from protection any "useful article," which has "an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." 17 U.S.C. § 101. Reasoning that "a backpack has such an 'intrinsic utilitarian function,'" the Court concluded that the backpack is not copyrightable. Further, the Court explained that Rubio does not enjoy any derivative rights in the Barnes & Noble backpack just because it was based on her copyrighted drawing, reasoning that "ownership of a copyright in a pictorial representation of a useful article does not vest the owner of the picture with a derivative copyright in the useful article itself."

While noting that "the artistic elements of a useful article are protected by the Copyright Act to the extent that they are 'physically or conceptually separable from the underlying product'" — for instance, "the design of an animal-shaped children's backpack is copyrightable because the artistic element of the animal image is unrelated to the backpack's useful function" — the Court concluded that Rubio had failed to "identify any elements of her backpack design that could stand alone as 'pictorial, graphic, or sculptural works.'" As such, and because none of the aesthetic or design considerations reflected in Rubio's drawing were separable from the backpack's function, the Court concluded that "no aspect" of the backpack is copyrightable, and that this component of Rubio's copyright infringement claim must therefore be dismissed.

The Court went on to dismiss each of Rubio's remaining claims — namely, for violation of her right of privacy under state law, for unjust enrichment under state law, and for false association and false advertising under the federal Lanham Act. The state law claims were barred by a one-year statue of limitations and preempted by the federal Copyright Act, respectively. As for the federal false association claim, the Court reasoned that Rubio had failed to allege any commercial interest in her name and therefore lacked standing. Finally, the Court concluded that Rubio had failed to allege every element of the Lanham Act false advertising claim, finding that nothing about Barnes & Noble's statement at issue — namely, "This canvas backpack is designed by F.I.T. student Diana Rubio, exclusively for Barnes & Noble!" — is false or misleading.

This case illustrates one of the biggest challenges facing artists and designers in the fashion industry, where imitation is rampant and knockoffs are the norm. As exemplified by the Rubio case, US copyright law simply does not recognize copyright protection for fashion designs — with the exception of original prints and patterns, unique color arrangements, and novel combinations of elements — because clothing and accessories are generally considered "useful articles," elements of which are only protectable to the extent they are physically or conceptually separable from the functional aspects of the design itself. It is therefore essential that fashion designers consult appropriate legal counsel to determine the best avenues for maximizing their intellectual property protection, whether by seeking design patents for new and non-obvious ornamental fashion designs, or by registering for trademark or trade dress protection where the designer's apparel or accessories feature designs or other elements that identify the source and origin of the products.

Arent Fox will continue to monitor this case.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement

    Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of www.mondaq.com

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

    Disclaimer

    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

    Registration

    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

    Cookies

    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

    Links

    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

    Mail-A-Friend

    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

    Emails

    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

    Security

    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at enquiries@mondaq.com.

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions