B&N almost entirely off the hook for copying backpack design

Rubio v. Barnes & Noble, Inc., 2014 WL 6769150, No. 14–CV–6561 (S.D.N.Y Nov. 11, 2014)

Rubio sued her alma mater, the Fashion Institute of Technology (FIT) and Barnes & Noble, Inc. for copying her original drawing of a backpack, producing actual backpacks based on her design, and selling those backpacks using her name. Only her copyright claims survived.

Rubio studied accessory design at FIT; in 2010, she took a course in accessory drawing, one of the assignments for which was to create an original drawing for 30% of the course grade.  It was announced that each drawing would be automatically entered in a contest sponsored by defendant Barnes & Noble as part of its “Back–To–Campus” collaboration with FIT. FIT didn’t explain the terms or what would happen to the winning entry. Rubio’s drawing won.

Rubio's drawing

B&N sent Rubio a letter in May 2011 congratulating her and announcing that backpacks based on her drawing would be sold in Barnes & Noble stores and on its website.  FIT, months later, asked Rubio to sign a consent form assigning her rights, but she didn’t.  Rubio became aware that B&N was selling backpacks based on her design with a hangtag that reads: “Backpack, FIT Fashion Institute of Technology, State University of New York, Diana Rubio, AAS Accessories Design 2011.” The description on the Barnes & Noble website states: “This canvas backpack is designed by F.I.T. student, Diana Rubio, exclusively for Barnes & Noble!”  Rubio sent a C&D in 2013, registered her copyright, and sued in August 2014.

hangtag using Rubio's name

Backpack as sold on B&N website

The court found it plausible that defendants copied the drawing in the course of making the actual backpacks, and thus the copyright infringement claim survived to the extent that it was based on copying the drawing itself.  But there was no claim based on production of the actual backpacks, which were useful articles.  Rubio didn’t identify conceptually separable elements, and the court couldn’t either.  (Nor can I.)

Rubio’s claim for violation of her right of privacy under Section 51 of the New York Civil Rights Law was barred by the one-year statute of limitations. New York uses the single publication rule, so a claim accrues on the first day the offending material is published, not upon each subsequent publication, and she sued too late.

Her state law claim for unjust enrichment was preempted.  Rubio argued that if the backpacks were uncopyrightable, then there was no preemption, but her claim was based on her rights in her drawing.  Congress’s choice not to accord copyright protection to useful articles derived from copyrighted images meant that preemption was exactly the right result.

Rubio’s Lanham Act false association claim failed because she has not alleged that she has any commercial interest in her name. While the Lanham Act’s protections are not limited to widely known celebrities, a plaintiff has standing under the statute only if his or her identity carries some “level of consumer recognition.” Rubio alleged that she was “a young, aspiring entrepreneur and fashion designer who, while holding a day job as a skincare professional, has been in the process of designing and launching her own fashion accessories since at least 2011.” But that failed to allege that her name carried any commercial value analogous to a trademark, or that it is recognized by consumers in the relevant market. So she lacked standing to assert a Lanham Act claim for false association.  (Query whether Lexmark analysis ought to have changed this in any way.)

Nor could her Lanham Act false advertising claim survive. She didn’t plausibly allege a false or misleading statement. The only statement at issue was the description of her backpack on the Barnes & Noble websites: “This canvas backpack is designed by F.I.T. student Diana Rubio, exclusively for Barnes & Noble!”  The court found this to be true: Rubio’s own allegations established that she designed the backpack while a FIT student, for submission to B&N.  “[T]he Drawing’s multiple references to ‘B & N’ and ‘Barnes & Noble’ belie any claim that it was not made specifically for Barnes & Noble.” Thus there was nothing false or misleading about the statement.  Note: Dastar might be needed to sew up the reasoning here.  The implication—perhaps even the necessary implication—of B&N’s statement is that Rubio willingly participated/authorized B&N to use her design; that part isn’t true, but it’s (1) unlikely to be material, and (2) the kind of implication Dastar may put off limits.

There's no question that Rubio appears to have been badly treated.  FIT should have conducted itself much better, and B&N too.  The complaint indicates that Rubio found an initial settlement offer unpleasantly low; it's hard to know from the outside what that means, but the inability to claim statutory damages or fees based on the infringement occurring pre-registration probably affected the amount she was offered.