Monday 25 February 2019

Vignelli Estate Claims Former Employee Had No Right to Publish Book about Famous Designer

The estate of Lella and Massimo Vignelli, represented by their daughter Valentina Vignelli, and Vignelli Designs, which hold the intellectual property rights in the Vignellis’designs, have filed a copyright and trademark infringement suit in the Southern District of New York against publishers Rizzoli and Mondadori, and Beatriz Cifuentes, a former employee of the Vignellis.

The case is The Estate of Massimo and Elena Vignelli et al v. Rizzoli International Publications, Inc. et al, No 1:19-cv-01584.

Defendants are the publishers and the author of a book published last October, which allegedly used without permission 102 original sketches made by Massimo Vignelli and misrepresented that the book was co-designed by Massimo Vignelli and is endorsed by the Vignelli Estate.

Lella and Massimo Vignelli

Lella and Massimo Vignelli’s designs are known by New York subway riders as the couple designed the now iconic subway signage. The map designed in 1972 is no longer in use, as many riders complained it was difficult to understand, but the train numbers of the lines are still in use. The Vignellis also designed Bloomingdale’s logo and its brown paper shopping bag. Some of their works are part of the MoMA collections.  

They worked together in New York until Massimo Vignelli’s death in 2014. Lella Vignelli died two years later. Their estate is now handling their intellectual property rights.

The 1990 book

Massimo Vignelli often designed books and even wrote a book about the topic, “The Vignelli Cannon.” In 1990, he designed a book published by Rizzoli, “design:Vignelli” and also designed the logo on the cover. Plaintiff claims that this logo “became the distinctive trade dress of the VIGNELLI brand.” In any case, Massimo Vignelli retained the intellectual property rights in it.

The book is registered with the U.S. Copyright Office as a compilation of the texts and photos and contains testimonies about the Vignellis’ work from various writers and photographers. These contributors retained their own rights.

The 2018 book

Beatriz Cifuentes joined Vignelli Associates in 2004 and worked there as a graphic designer. After Lella Vignelli died, and according to the couple’s wishes, the Vignellis’ professional artifacts and a portion of their personal artifacts were sent to the Vignelli Archives.

According to the complaint, the Vignellis’ children found out at that time that Beatriz Cifuentes had kept personal property belonging to Massimo Vignelli that needed to be returned to the Vignelli Archive, including some sketches, which had not yet been published, but which were published in the 2018 book.

Beatriz Cifuentes wrote in the introduction to the 2018 book “on his death bed, Massimo [Vignelli] made [her] promise [she] would finish the book.” However, according to the Complaint, Massimo Vignelli’s will does have a provision about the book.

The copyright infringement claims

The Complaint alleges that permission was not sought to use material for this book, and that Defendants had denied their requests to remove Massimo Vignelli’s name from the design credit, to include an “erratum slip” and to make sure that the press releases and promotional material were corrected.

It also alleges that Defendants reproduced without permission works authored by Massimo Vignelli, and also reproduced essays and photographs of third parties without their permission [these third parties are not parties to this suit, at least not yet. This is a classic copyright infringement claim.

The 1990 book is registered as a compilation, which are protectable by copyright. The Copyright Act defines them as being “formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” However, as explained by the Copyright Office in 2012, such compilation must result in one or more of the congressionally-established categories of authorship to be registered.  This is the case here, as the book is a literary work and also features graphic works.

Plaintiffs also allege that “Defendants prepared a compilation using unpublished works of Massimo Vignelli that were obtained without Plaintiffs’ authorization and then published by Defendants for the first time with the release of the 2018 Book on October 23, 2018.”

Unpublished works can be protected by copyright. Nevertheless, it is the author who has the exclusive right to publicly display the work. Beatriz Cifuentes claims that Massimo Vignelli wanted her to publish his works. This will be important to prove as a defense to the suit. Defendants could still claim fair use, whether permission to publish was granted or not. However, the Supreme Court explained in 1985 that the courts are less likely to find fair use if the work was unpublished, Harper & Row Publishers, Inc. v. Nation Enters. As a reminder, U.S. copyright law provides a very limited moral right to visual artists. Italian law, however, provides such rights, and it will be interesting to see if Plaintiffs will try to access it.

Plaintiffs are asking the court, inter alia, to permanently enjoin Defendants from further copying, marketing, publishing, selling, making derivative works, or otherwise commercially exploiting the works and the 2018 book.

The Defendants may now choose to defend themselves in court, or to settle.

Photo is courtesy of Flickr user Jonathan Wilsson under a CC BY-NC 2.0 license.

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