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.

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