N-304017_7

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
DIANA E. RUBIO, Docket No. 14-cv-6561 (J SR)


Plaintiff,
v.
BARNES & NOBLE, INC., AND FASHION
INSTITUTE OF TECHNOLOGY,

Defendants.









DEFENDANTS MEMORANDUM OF LAW IN
SUPPORT OF THEIR MOTION TO DISMISS THE COMPLAINT


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TABLE OF CONTENTS

Page


TABLE OF AUTHORITIES .......................................................................................................... ii
PRELIMINARY STATEMENT .................................................................................................... 1
RELEVANT FACTS ...................................................................................................................... 2
ARGUMENT .................................................................................................................................. 4
I. APPLICABLE LEGAL STANDARDS ............................................................................... 4
II. RUBIOS COPYRIGHT CLAIMS SHOULD BE DISMISSED ......................................... 5
A. Rubios Copyright Claims Relating To The Drawing Are Insufficiently Pled .......... 5
B. The Subject Backpack Is Not Copyrightable .............................................................. 6
III. RUBIOS N.Y. CIVIL RIGHTS LAW CLAIM SHOULD BE DISMISSED AS
TIME-BARRED ................................................................................................................... 7
IV. RUBIOS UNJ UST ENRICHMENT CLAIM SHOULD BE DISMISSED AS PRE-
EMPTED BY FEDERAL LAW .......................................................................................... 9
V. RUBIOS LANHAM ACT CLAIMS SHOULD BE DISMISSED ................................... 10
CONCLUSION ............................................................................................................................. 14



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N-304017_7 ii
TABLE OF AUTHORITIES
Page(s)
CASES
Albert Furst von Thurn und Taxis v. Karl Prince von Thrun und Taxis,
04-CV-6107, 2006 U.S. Dist. LEXIS 56703 (S.D.N.Y. Aug. 8, 2006) ...................................11
Allen v. Natl Video, Inc.,
610 F. Supp. 612 (S.D.N.Y. 1985)...........................................................................................11
Ashcroft v. Iqbal,
556 U.S. 662 (2009) .............................................................................................................5, 11
Barr Lab. v. Quantum Pharmics, Inc.,
827 F. Supp. 111 (E.D.N.Y. 1993) ..........................................................................................11
Bell Atlantic Corp. v. Twombly,
550 U.S. 544 (2007) .........................................................................................................4, 5, 11
Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc.,
373 F.3d 296 (2d Cir. 2004).......................................................................................................9
Buffalo News, Inc. v. Metro Grp.. Inc.,
12-CV-808S, 2013 U.S. Dist. LEXIS 11161 (W.D.N.Y. J an. 28, 2013).................................12
Castel v. Jean Norihiko Sherlock Corp.,
159 A.D.2d 233 (1st Dept 1990) ..............................................................................................8
Condit v. Star Editorial, Inc.,
259 F. Supp. 2d 1046 (E.D. Ca. 2003) .....................................................................................11
Galiano v. Harrahs Operating Co.,
416 F.3d 411 (5th Cir. 2005) .....................................................................................................7
Gusler v. Fischer,
580 F. Supp. 2d 309 (S.D.N.Y. 2008) ..................................................................................7, 10
Khatib v. Sun-Times Media Grp., Inc.,
490 B.R. 487 (Bankr. D. Del. 2013) ..........................................................................................7
Kwan v. Schlein,
634 F.3d 224 (2d Cir. 2011)...................................................................................................5, 6
McLaren v. Chicos FAS, Inc.,
10-CV-2481, 2010 U.S. Dist. LEXIS 120185 (S.D.N.Y. Nov. 9, 2010).................................. 6

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N-304017_7 iii
McKenzie v. Dow Jones & Co.,
355 Fed. Appx. 533 (2d Cir. 2009) ...........................................................................................9
Nat'l Basketball Assn v. Motorola, Inc.,
105 F.3d 841 (2d Cir. 1997).........................................................................................10, 13, 14
Nationwide CATV Auditing Servs., Inc. v. Cablevision Sys. Corp.,
12-CV-3648, 2013 U.S. Dist. LEXIS 65795 (E.D.N.Y. May. 7, 2013) ..................................13
Nussenzweig v. diCorcia,
9 N.Y.3d 184 (2007) ..............................................................................................................8, 9
Orange Cnty. Choppers, Inc. v. Olaes Enters., Inc.,
497 F. Supp. 2d 541 (S.D.N.Y. 2007) ......................................................................................10
Papasan v. Allain,
478 U.S. 265 (1986) ...................................................................................................................4
Pelton v. Rexall Sundown, Inc.,
99-CV-4342, 2001 U.S. Dist. LEXIS 3825 (S.D.N.Y. Apr. 4, 2001) .................................9, 12
S.C. Johnson & Son, Inc. v. Clorox Co.,
241 F.3d 232 (2d Cir. 2001).....................................................................................................12
Textile Deliveries v. Stagno,
90-CV-2020, 1990 U.S. Dist. LEXIS 13309 (S.D.N.Y. Oct. 9, 1990) ....................................11
Uhlig LLC v. Shirley,
08-CV-01208, 2011 U.S. Dist. LEXIS 31833 (D.S.C. Mar. 25, 2011) ...................................11
White v. Samsung Elecs. Am., Inc.,
971 F.2d 1395 (9th Cir. 1992) .................................................................................................11
RULES AND STATUTES
Fed. R. Civ. P. 8 .........................................................................................................................5, 11
Fed. R. Civ. P. 9(b) ........................................................................................................................11
Fed. R. Civ. P. 12(b)(6)......................................................................................................4, 7, 9, 10
CPLR 215(3) ................................................................................................................................8, 9
17 U.S.C. 101 ................................................................................................................................6
17 U.S.C. 102 ................................................................................................................................6
17 U.S.C. 411(a) ...........................................................................................................................6
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17 U.S.C. 507(b) ...........................................................................................................................6
Lanham Act 43(a) ............................................................................................................... passim
N.Y. Civil Rights Law 50-52 ............................................................................................ passim


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N-304017_7
Defendants Barnes & Noble, Inc. (Barnes & Noble) and Fashion Institute of
Technology (FIT, collectively, Defendants), submit this memorandum of law in support of
their motion to dismiss the Complaint.
PRELIMINARY STATEMENT
Plaintiff Diana E. Rubio (Rubio) brought this action alleging several claims arising
from her entry in a design collaboration between FIT and Barnes & Noble in 2010, when she was
a student at FIT. Rubios drawing was selected for production in March 2011, and a backpack
based on this design was sold by Barnes & Noble beginning that summer.
Each of Rubios claims should be dismissed. Rubios claim that Defendants have
infringed her copyright in the drawing should be dismissed because there are no facts on the face
of the Complaint from which it can be plausibly shown that the Defendants reproduced the
drawing. Rubios claim that the defendants have infringed her copyright in the backpack itself
should be dismissed because she has not registered a copyright for the backpack and the
backpack is a non-copyrightable useful article. Rubios claim under N.Y. Civil Rights Law
50-52 should be dismissed because it is time-barred by the one-year statute of limitations.
Rubios claim for unjust enrichment should be dismissed because that claim is pre-empted by
federal law. Finally, Rubios Lanham Act claims fail because she has not pled, inter alia, that
there is commercial value in her name and that Defendants made any false or misleading
statements.
Defendants respectfully request that this Court dismiss the Complaint.
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RELEVANT FACTS
1

The Parties
Rubio is a skin care professional who resides in New J ersey. (Compl.
2
, 1, 64) Barnes
& Noble is a retailer of content, digital media, and educational products through bookstores and
its website. (Id., 2) FIT is an internationally recognized college for design, fashion, art,
communications, and business located in New York. (Id., 3)
Rubios Entry in the Back-to-Campus Collaboration
Rubio was a student at FIT from 2010 to 2011, when she earned an associates degree.
(Compl., 8) During the fall of 2010, FIT faculty and/or administration announced in Rubios
accessory drawing course that the students in the course were to submit a drawing for the Back-
to-Campus collaboration between FIT and Barnes & Noble. (Id., 9-10) The students were
told that Barnes & Noble would choose a winner in its discretion. (Id., 10) Rubio was not told
that she would receive any payment or that she would retain any rights in her submission should
her Drawing be chosen. (Id., 11, 15)
During the fall of 2010, Rubio submitted a drawing of a backpack to FIT as her
submission to the Back-to-Campus collaboration (the Drawing). (Id., 12, Ex. A) Rubios
drawing contains no less than four references to Barnes & Noble. (Id., Ex. A) On Rubios
drawing, the backpack is stamped with a prominent B&N and has the letters B and N
dangling from both sides. (Id.) On December 9, 2010, Barnes & Noble sent a letter to Rubio,
thanking her for her participation. (Id., 13, Ex. B)

1
Solely for the purposes of this Motion, Defendants accept the statements found in the Complaint as true.
2
For the Courts convenience, the Complaint filed in this action (Docket No. 1) is annexed as Exhibit A to the
Declaration of Richard D. Rochford, dated October 1, 2014.
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Rubioa Drawing Is Selected
In February 2011, FIT notified Rubio that her Drawing had been selected. (Id., 14) On
March 25, 2011, Rubio wrote to FIT faculty member Ellen Lynch, to thank her for the
wonderful news about winning the Back-to-Campus collaboration. (Id., 16, Ex. C) In this
email Rubio stated that she no longer had a copy of the Drawing. (Id., Ex. C) Rubio asked Ms.
Lynch if she could get in contact with Barnes & Noble, and ask them to provide her with a copy
of the Drawing. (Id.) Rubio also asked if she would receive anything for the selection of her
Drawing, such as a free prototype of my bag or a letter for my resume. (Id.)
By letter dated May 11, 2011, Barnes & Noble notified Rubio that the Drawing had been
selected for production and would be sold throughout the country in Barnes & Noble stores and
on BN.com as a featured part of the 2011 Back-To-Campus Design by Students for Students
collection. (Id., 17, Ex. D) Barnes & Noble began selling the backpack it produced based on
the Drawing (the Subject Backpack) during the summer of 2011, and Rubio learned of the sale
around this same time. (Id., 17, 33, 34, Exs. D, L)
Each Subject Backpack has a hangtag that reads, in part, FIT Fashion Institute of
Technology / State University of New York / Diana Rubio, AAS Accessories Design 2011.
(Compl., 24, Ex. H) The Barnes & Noble online store lists a description for the Subject
Backpack that reads, in part, This canvas backpack is designed by F.I.T. student, Diana Rubio,
exclusively for Barnes & Noble! (Id., 25, Ex. I)
Rubio Commences This Litigation
On J une 5, 2013, Rubios counsel sent a cease and desist letter to Barnes & Noble and
FIT. (Compl., 34, Ex. L) In this letter, Rubios counsel admitted that she had known that
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Barnes & Noble was selling the Subject Backpack. (Id.) Rubios counsel also stated that she
may pursue a cause of action pursuant to N.Y. Civil Rights Law 50. (Id.)
On August 15, 2014, Rubio commenced this action alleging claims for copyright
infringement (First Cause of Action), violation of N.Y. Civil Rights Law 50-52 (Second
Cause of Action), unjust enrichment (Third Cause of Action), false association in violation of
Lanham Act 43(a)(1)(A) (Fourth Cause of Action), and false advertising in violation of
Lanham Act 43(a)(1)(B) (Fifth Cause of Action).
Against this backdrop, Defendants move to dismiss each of Rubios claims.
ARGUMENT
I.

APPLICABLE LEGAL STANDARDS
To avoid dismissal pursuant to Fed. R. Civ. P. 12(b)(6), a plaintiff must demonstrate
grounds for relief beyond mere labels and conclusions. Bell Atlantic Corp. v. Twombly, 550
U.S. 544, 555 (2007). Rather, the complaint must set forth [f]actual allegations [that are] . . .
enough to raise a right to relief above the speculative level. Id. Otherwise, a plaintiff with a
largely groundless claim [could] . . . take up the time of a number of other people with the right
to do so representing an in terrorem increment of the settlement value. Id. at 558 (internal
citations omitted).
While well-pled factual allegations of a complaint are to be accepted as true for purposes
of a Rule 12(b)(6) motion, a plaintiff's obligation to provide the grounds of his entitle[ment] to
relief requires more than labels and conclusions, and a formulaic recitation of the elements of a
cause of action will not do. Twombly, 550 U.S. at 555 (internal quotation marks omitted)
(alteration in original) (citing Papasan v. Allain, 478 U.S. 265, 286 (1986)). When the facts are
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equally consistent with non-liability, the plaintiff fails to state a claim. See Twombly, 550 U.S. at
570.
Additionally, Rule 8 of the Federal Rules of Civil Procedure demands more than an
unadorned, the-defendant-unlawfully-harmed-me accusation and does not unlock the doors of
discovery for a plaintiff armed with nothing more than conclusions. Ashcroft v. Iqbal, 556 U.S.
662, 678-79 (2009). The complaint must do more than present a conceivable claim -- it must
provide enough facts to state a claim to relief that is plausible on its face. Twombly, 550 U.S.
at 570 (emphasis added); see also Iqbal, 556 U.S. at 697.
II.

RUBIOS COPYRIGHT CLAIMS SHOULD BE DISMISSED
A. Rubios Copyright Claims Relating To The Drawing Are Insufficiently Pled
Plaintiff alleges that BN reproduced without Dianas permission the Drawing. . . .
(Compl., 41) This claim should be dismissed because Rubio has failed to plead the requisite
elements of a copyright infringement claim.
According to the Complaint, Rubio submitted a Drawing to FIT as part of a Back-To-
Campus collaboration between FIT and Barnes & Noble. (Id., 10) Rubio was aware that her
Drawing was being submitted pursuant to this collaboration. (Id., 9, 12) Rubio was notified
that her Drawing had been selected at some time between December 2010 and March 2011. (Id.,
13-16) Barnes & Noble began selling the Subject Backpack during the summer of 2011.
Rubio became aware of the sale of the Subject Backpack several months after receiving a letter
from Barnes & Noble on May 11, 2011, and confirmed her knowledge of its sale in writing on
J une 5, 2013. (Id., 17, 33, 34, Exs. D, L)
To maintain an action for infringement, a plaintiff must establish (1) ownership of a valid
copyright, and (2) copying of constituent elements of the work that are original. See Kwan v.
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Schlein, 634 F.3d 224, 229 (2d Cir. 2011). Beyond parroting the language of the statute, Rubio
has alleged no fact that either Defendant actually reproduced the Drawing.
3
(Compl., 41) The
only facts provided relating to the reproduction of the Drawing is a March 25, 2011 email from
Rubio to a professor at FIT requesting that Barnes & Noble reproduce the Drawing. (Id., Ex. C)
B. The Subject Backpack Is Not Copyrightable
Rubio alleges that the Subject Backpack is an unauthorized derivative work of the
Drawing. (Compl., 40) This claim fails because the Subject Backpack has an intrinsic
utilitarian function, the design of which is not copyrightable, and Rubio has not alleged that she
has registered a copyright for the Subject Backpack, which is a prerequisite to maintaining an
action for copyright infringement. See McLaren v. Chicos FAS, Inc., 10-CV-2481, 2010 U.S.
Dist. LEXIS 120185 (S.D.N.Y. Nov. 9, 2010) (The possession of a valid copyright registration
is a prerequisite to bringing a claim for copyright infringement.); 17 U.S.C. 411(a).
Even if Rubio owned a copyright in the Subject Backpack which she has not alleged
this claim would fail because the Subject Backpack is not copyrightable. Under the Copyright
Act, works of authorship, such as works that are literary, musical, dramatic, pantomime,
choreographic, pictoral, graphic, sculptural, motion picture, audiovisusal, sound, and
architectural, are eligible for copyright protection, provided the Acts other requirements are
met. See 17 U.S.C. 102. The Act, excludes from protection any useful article, which is an
article having an intrinsic utilitarian function that is not merely to portray the appearance of the
article or to convey information. 17 U.S.C. 101.
The Subject Backpack is a useful article, and therefore not copyrightable subject matter
or capable of being an infringing work. In an analogous case, this Court held that a copyright in

3
To the extent Rubio premises her claim on any alleged copying that occurred prior to August 15, 2011, such
claim would be time-barred, because the statute of limitations for copyright infringement is three years. 17
U.S.C. 507(b); Kwan, 634 F.3d at 228.
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a technical drawing of a useful article [] does not preclude Defendants manufacturing and
marketing of the article itself. Gusler v. Fischer, 580 F. Supp. 2d 309, 315 (S.D.N.Y. 2008).
In Khatib v. Sun-Times Media Grp., Inc., the court found that a backpack was not
copyrightable because it was not capable of existing independently of its utilitarian function of
carrying items and was not a work of authorship in which Plaintiff can own a valid copyright.
490 B.R. 487, 496 (Bankr. D. Del. 2013)
Rubio has not pled any facts to plausibly show that the backpack could exist
independently of its utilitarian function, and the images of the backpack submitted as exhibits to
the Complaint similarly make it clear that the backpack could not be marketed independently of
its utilitarian function. See, e.g., Galiano v. Harrahs Operating Co., 416 F.3d 411, 422 (5th Cir.
2005) (uniform designs are not copyrightable absent a showing that its designs are marketable
independently of their utilitarian function as casino uniforms); (Compl., Exs. A, I, J 1-5).
Rubios copyright claim (First Cause of Action) should be dismissed pursuant to Fed. R.
Civ. P. 12(b)(6) for failure to state a claim upon which relief can be granted.
III.

RUBIOS N.Y. CIVIL RIGHTS LAW CLAIM
SHOULD BE DISMISSED AS TIME-BARRED
Rubios claim for alleged violation of the N.Y. Civil Rights Law 50-52 is time-barred,
because it was filed after the one-year statute of limitations had passed.
On May 11, 2011, Rubio was notified that her drawing had been selected and that the
Subject Backpack would go into production, and Barnes & Noble began selling the Subject
Backpack during the summer of 2011
4
. (Compl., 17) Rubio learned of the sale of the Subject

4
While Rubio has not pled the exact initial sale date of the Subject Backpack, Rubio admits to learning of the sale
of the Subject Backpack several months after receiving a letter from Barnes & Noble on May 11, 2011, which
is around the time sales actually began. (Id., 17, 33, 34, Exs. D, L)
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Backpack several months after May 2011. (Id., 17, 33, 34, Exs. D, L) Rubio has attached, to
her Complaint, screenshots of Barnes & Nobles website demonstrating sale of the Subject
Backpack in 2013 and 2014. (Id., 25) At least as early as J une 5, 2013, Rubio confirmed her
awareness of sales of the Subject Backpack in writing when her counsel sent a cease and desist
letter to Barnes & Noble. (Id., 34, Ex. L)
Rubio alleges that each Subject Backpack sold has a hangtag bearing her name. (Id.,
24) This hangtag is the basis for Rubios claim for infringement of her right of privacy,
pursuant to N.Y. Civ. Rights Law 50-52. (Id., 49-53)
There is a one-year statute of limitations for alleged violations of N.Y. Civil Rights Law
51; CPLR 215(3) (The following actions shall be commenced within one year . . . an action to
recover damages for . . . a violation of the right of privacy under section fifty-one of the civil
rights law.).
Further, the single publication rule applies to alleged violations of N.Y. Civil Rights Law
50-52. See Nussenzweig v. diCorcia, 9 N.Y.3d 184, 188 (2007) (the single publication rule
applies to claims brought pursuant to Civil Rights Law 50 and 51); Castel v. Jean Norihiko
Sherlock Corp., 159 A.D.2d 233, 233 (1st Dept 1990). Under the single publication rule, the
time to bring suit begins to accrue upon the first publication of the allegedly offending material.
See Nussenzweig, 9 N.Y.3d at 188.
Here, the first alleged publication of Rubios name was when Barnes & Noble began
selling the Subject Backpack during the summer of 2011. Moreover, notwithstanding that
Rubios knowledge is not necessary for the statute of limitations to accrue, Rubio and her legal
counsel had knowledge of the backpack on J une 5, 2013 when they sent a cease and desist letter
to Barnes & Noble that specifically mentions N.Y. Civil Rights Law 50. (Compl., Ex. L)
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Nevertheless, Rubio did not file this suit until August 15, 2014. (Compl.) This claim is not
timely as it was filed more than one year after the first publication of the allegedly offending
hangtag. See, e.g., Nussenzweig, 9 N.Y.3d at 188 (the publishing event giving rise to plaintiff's
right of privacy claims first occurred . . . more than one year before he commenced suit,
plaintiff's claims are time-barred); McKenzie v. Dow Jones & Co., 355 Fed. Appx. 533, 537
(2d Cir. 2009) (affirming dismissal of N.Y. Civil Rights Law 50-52 claim as time-barred
because invasion of privacy, a tort that is severely limited in New York [ ] is, in any event,
subject to the one-year statute of limitations in CPLR 215(3)); Pelton v. Rexall Sundown, Inc.,
99-CV-4342, 2001 U.S. Dist. LEXIS 3825, at *10-12 (S.D.N.Y. Apr. 4, 2001) (dismissing N.Y.
Civil Rights Law 51 claim because [a]ctions brought pursuant to Section 51 are subject to a
one-year statute of limitations and the limitations period runs from the first distribution of the
offending item).
Accordingly, Rubios N.Y. Civil Rights Law claim (Second Cause of Action) should be
dismissed pursuant to Fed. R. Civ. P. 12(b)(6) and CPLR 215(3) for failure to comply with the
statute of limitations.
IV.

RUBIOS UNJUST ENRICHMENT CLAIM SHOULD BE
DISMISSED AS PRE-EMPTED BY FEDERAL LAW
Rubios claim for unjust enrichment should be dismissed, as that claim is pre-
empted by federal law. It is well-settled that New York unjust enrichment claims are pre-empted
by federal law when based on the same underlying facts as a copyright infringement claim. See
Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296, 304-07 (2d Cir. 2004).
For example, in Gusler, the court found an unjust enrichment claim was pre-empted by
federal law where, as here, the plaintiff alleged infringement of a drawing and the non-
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N-304017_7 10
copyrightable useful article allegedly based on that drawing. 580 F. Supp. 2d at 316; see also
Orange Cnty. Choppers, Inc. v. Olaes Enters., Inc., 497 F. Supp. 2d 541, 555 (S.D.N.Y. 2007)
(Plaintiffs unjust enrichment claim is based on the allegation that OCC has supplied ODM
Designs to other OCC Licensees without permission from ODM. Because these OCC licensees
are reproducing and distributing the ODM designs, the unjust enrichment claim falls squarely
within the ambit of the Copyright Act.); Nat'l Basketball Assn v. Motorola, Inc., 105 F.3d 841,
849 (2d Cir. 1997) (New York state misappropriation claim pre-empted by federal copyright law
even where the subject matter was not copyrightable because it was based on same underlying
facts as copyright claim and [i]t is often difficult or impossible to separate the fixed
copyrightable work from the underlying uncopyrightable events or facts).
Accordingly, Rubios unjust enrichment claim (Third Cause of Action) should be
dismissed pursuant to Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon which relief may
be granted.
V.

RUBIOS LANHAM ACT CLAIMS SHOULD BE DISMISSED
Rubios Lanham Act claims should be dismissed for failure to plead facts that plausibly
present a prima facie claim. Rubio alleges that Barnes & Nobles attribution of the design of the
Subject Backpack to Rubio, on both its website and the hangtag, violates Lanham Act
43(a)(1)(A) (False Association Claim). Rubio alleges that the use of her name and the
statement designed by F.I.T. student, Diana Rubio, exclusively for Barnes & Noble! violate
Lanham Act 43(a)(1)(B) (False Advertising Claim). Pursuant to the Supreme Courts
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decisions in Twombly, 550 U.S. 544 and Iqbal, 556 U.S. 662, discussed supra at Section I, Rubio
must plead enough facts to state a claim for relief that is plausible on its face.
5

As a threshold matter, Rubios False Association Claim fails because Section 43 only
protects a person whose name or likeness is akin to . . . a trademark, and Rubios name did not
have commercial value at the time of the disputed publication. Condit v. Star Editorial, Inc.,
259 F. Supp. 2d 1046, 1054 (E.D. Ca. 2003) (dismissing Lanham Act 43(a)(1)(A) claim
because a use of the identity of a claimed non-commercial, private figure is not Lanham Act
commercial advertising or promotion) (citing White v. Samsung Elecs. Am., Inc., 971 F.2d
1395, 1400 (9th Cir. 1992)); Allen v. Natl Video, Inc., 610 F. Supp. 612, 625 (S.D.N.Y. 1985)
(Woody Allen successful on a Lanham Act claim because [a] celebrity has a similar commercial
investment in the drawing power of his or her name and face in endorsing products and in
marketing a career) (emphasis added); Albert Furst von Thurn und Taxis v. Karl Prince von
Thrun und Taxis, 04-CV-6107, 2006 U.S. Dist. LEXIS 56703, at *29-32 (S.D.N.Y. Aug. 8,
2006) (a claim for false endorsement can only be brought by celebrities).
Rubio has not alleged that her name had any commercial value at the time the hangtags or
website listing was published, warranting dismissal. See, e.g., Uhlig LLC v. Shirley, 08-CV-
01208, 2011 U.S. Dist. LEXIS 31833, at *19 (D.S.C. Mar. 25, 2011) (Only celebrities have
standing to assert a false association or endorsement claim under the Lanham Act.); Albert
Furst von Thurn, 2006 U.S. Dist. LEXIS 56703, at *29-32 (false endorsement claim sufficiently
plead where alleged that plaintiff is well-known throughout the world, numerous tourists

5
Although it is not settled in the Second Circuit, there is significant authority for the proposition that Lanham Act
claims are held to the heightened pleading standards of Fed. R. Civ. P. 9(b). See, e.g., Textile Deliveries v.
Stagno, 90-CV-2020, 1990 U.S. Dist. LEXIS 13309 (S.D.N.Y. Oct. 9, 1990); Barr Lab. v. Quantum Pharmics,
Inc., 827 F. Supp. 111, 118 (E.D.N.Y. 1993). Rubio has failed to meet this standard of pleading her Lanham Act
claims with particularity, but these claims fail even under Fed. R. Civ. P. 8, as discussed infra.
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N-304017_7 12
from the United States visit both the Familys Palace and the Familys website annually, and a
quick search on the Internet for the [plaintiffs] yielded close to 200,000 results).
To survive a motion to dismiss, Rubios False Advertising Claim must plausibly state
facts to support the following elements
6
: (i) the defendant has made a false or misleading
statement; (ii) the false or misleading statement has actually deceived or has the capacity to
deceive a substantial portion of the intended audience; (iii) the deception is material, in that it is
likely to influence purchasing decisions; (iv) the defendant placed the false or misleading
statement in interstate commerce; and (v) the plaintiff has been injured as a result of the
misrepresentation. See Buffalo News, Inc. v. Metro Grp.. Inc., 12-CV-808S, 2013 U.S. Dist.
LEXIS 11161 at *8-9 (W.D.N.Y. J an. 28, 2013) (citing S.C. Johnson & Son, Inc. v. Clorox Co.,
241 F.3d 232, 238 (2d Cir. 2001)).
The only statement alleged by Rubio to be false is on the Barnes & Noble online store
listing for the Subject Backpack, which reads, This canvas backpack is designed by F.I.T.
student, Diana Rubio, exclusively for Barnes & Noble! (Compl., 25) Rubio has failed to
plead facts plausibly supporting her Lanham Act claims because:
First, Rubio has failed to allege sufficient facts to plausibly demonstrate that this
statement is false or misleading. Rubio, throughout her complaint, alleges that she was an F.I.T.
student and designed the Subject Backpack. (See, e.g., id., 12, 23) Rubio alleges no facts to
plausibly evidence that the Subject Backpack was not designed exclusively by herself and for
Barnes & Noble. Rubio alleges that she alone designed the Subject Backpack. (See, e.g., id.,
12, 37) Rubio also alleges that the Subject Backpack was designed for Barnes & Noble as

6
In order to plead her False Association Claim, in addition to pleading facts sufficient to plausibly demonstrate
that her name is akin to a trademark, Rubio must plead that: (1) goods or services were involved, (2) there was an
effect on interstate commerce, and (3) there was either a false designation of origin or a false description of the
goods or services. See Pelton., 2001 U.S. Dist. LEXIS 3825, at *8. As discussed herein, Rubio has pled no facts
to support elements (2) and (3).
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N-304017_7 13
part of a collaboration wherein BN would ultimately choose the best drawing in its discretion.
(Id., 10) Additionally, Rubios drawing contains no less than four references to Barnes &
Noble. (Id., Ex. A) On Rubios drawing, the backpack is stamped with a prominent B&N and
has the letters B and N dangling from both sides. (Id.) Rubio also admits that Barnes &
Noble had the only copy of the drawing because she had not backed up her own version. (Id.,
Ex. C) Importantly, Rubio does not even allege that she or third parties produced copies of the
Subject Backpack or that she attempted or intended to design the Subject Backpack for third
parties.
There are no facts pled to suggest that the Subject Backpack was not designed by F.I.T.
student, Diana Rubio, exclusively for Barnes & Noble. Rubios failure to plead facts to
plausibly demonstrate that the Defendants made a false or misleading statement is fatal to this
claim. See, e.g., Nationwide CATV Auditing Servs., Inc. v. Cablevision Sys. Corp., 12-CV-3648,
2013 U.S. Dist. LEXIS 65795, at *40-45 (E.D.N.Y. May. 7, 2013) (Lanham Act 43(a)(1)(B)
claim dismissed where the allegedly false statement was not literally false and was not
otherwise likely to materially mislead or confuse customers).
Second, even if Rubio had pled a false or misleading statement, which she did not, she
has failed to plead facts that plausibly support a finding that the statement has actually deceived
or has the capacity to deceive a substantial portion of the intended audience. See, e.g.,
Nationwide CATV Auditing Servs., 2013 U.S. Dist. LEXIS 65795, at *40-45.
Third, Rubio has failed to allege that any false or misleading statement is material, in that
it is likely to influence purchasing decisions. Even if Rubio could point to a false statement, she
would need to plead facts sufficient to plausibly demonstrate that [t]he inaccuracy in the
statements would [] influence consumers at the present time. Natl Basketball Assn, 105 F.3d
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N-304017_7 14
at 855. The Complaint is bereft of facts that show any possibility of a false statement influencing
consumers, thus warranting dismissal. See Natl Basketball Assn, 105 F.3d at 855 (affirming
dismissal of claim under Lanham Act 43(a), where origin of sports stats is irrelevant to
consumers because the consumers interest is in obtaining the stats).
Fourth, Rubio has failed to plead how she was injured as a result of the alleged falsity.
Accordingly, Rubios Lanham Act claims should be dismissed.
CONCLUSION
Based on the foregoing, Defendants respectfully request that this Court grant their motion
to dismiss the Complaint in its entirety, together with such other and further relief as this Court
deems just and proper.
Dated: October 1, 2014
New York, New York
HAYNES AND BOONE, LLP
Attorneys for Defendants


By:s/Richard D. Rochford
Richard D. Rochford
J oseph Lawlor
30 Rockefeller Plaza, 26
th
Floor
New York, New York 10112
Telephone: (212) 659-4984
richard.rochford@haynesboone.com

Case 1:14-cv-06561-JSR Document 11 Filed 10/01/14 Page 19 of 19