Case(s): Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003)
General Dwight D. Eisenhower’s World War II book, Crusade in Europe, was published by Doubleday, which registered the work’s copyright and granted exclusive TV rights to an affiliate of Twentieth Century Fox Film Corporation. Fox arranged for Time, Inc. to produce a Crusade in Europe TV series based on the book, and Time assigned its copyright in the series to Fox. The series was first broadcast in 1949.
In 1975, Doubleday renewed the book’s copyright, but Fox never renewed the copyright on the TV series, which expired in 1977, leaving the series in the public domain. In 1988, Fox reacquired the TV rights in the book, including the exclusive right to distribute the Crusade television series on video and to sub-license others to do so. SFM Entertainment and New Line Home Video, Inc., acquired from Fox the exclusive rights to manufacture and distribute Crusade on video. In 1995, Dastar released a video set, World War II Campaigns in Europe, which it made from tapes of the original version of the Crusade series and sold as its own product for substantially less than New Line’s video set.
Fox, SFM, and New Line filed suit alleging that Dastar’s sale of Campaigns without proper credit to the Crusade series constitutes “reverse passing off” in violation of section 43(a) of the Lanham Act.
District Court Decision & Ninth Circuit Appeal
The District Court granted Fox, SFM, and New Line’s motion for summary judgment.
The Ninth Circuit affirmed, holding, among other things, that because Dastar copied substantially the entire Crusade series, labeled the resulting product with a different name, and marketed it without attribution to Fox, Dastar had committed a “bodily appropriation” of Fox’s series, which was sufficient to establish the reverse passing off.
Supreme Court Decision
The Supreme Court granted certiorari, and held that Section 43(a) of the Lanham Act does not prevent the unaccredited copying of an uncopyrighted work. Specifically, SCOTUS found …
(a) Fox, SFM, and New Line’s claim that Dastar has made a “false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which … is likely to cause confusion … as to the origin … of [its] goods” in violation of §43(a) of the Lanham Act, would undoubtedly be sustained if Dastar had bought some of New Line’s Crusade videotapes and merely repackaged them as its own. However, Dastar has instead taken a creative work in the public domain, copied it, made modifications (arguably minor), and produced its very own series of videotapes.
If “origin” refers only to the manufacturer or producer of the physical “good” that is made available to the public (here, the videotapes), Dastar was the origin. If, however, “origin” includes the creator of the underlying work that Dastar copied, then someone else (perhaps Fox) was the origin of Dastar’s product. At bottom, the Court must decide what section 43(a) means by the “origin” of “goods.”
(b) Because Dastar was the “origin” of the physical products it sold as its own, Fox, SFM, and New Line cannot prevail on their Lanham Act claim. As dictionary definitions affirm, the most natural understanding of the “origin” of “goods” – the source of wares – is the producer of the tangible product sold in the marketplace, here Dastar’s Campaigns videotape. The phrase “origin of goods” in the Lanham Act is incapable of connoting the person or entity that originated the ideas that “goods” embody or contain.
The consumer typically does not care about such origination, and §43(a) should not be stretched to cover matters that are of no consequence to purchasers. Although purchasers do care about ideas or communications contained or embodied in a communicative product such as a video, giving the Lanham Act special application to such products would cause it to conflict with copyright law, which is precisely directed to that subject, and which grants the public the right to copy without attribution once a copyright has expired, e.g., Sears, Roebuck & Co. v. Stiffel Co.
Recognizing a section 43(a) cause of action here would render superfluous the provisions of the Visual Artists Rights Act that grant an artistic work’s author “the right … to claim authorship,” but carefully limit and focus that right. It would also pose serious practical problems. Finally, reading §43(a) as creating a cause of action for, in effect, plagiarism would be hard to reconcile with, e.g., Wal-Mart Stores, Inc. v. Samara Brothers, Inc.