United States: Supreme Court Holds That Lanham Act Does Not Protect The Right To Claim Authorship In A Literary Work

The Supreme Court has extended its recent trend of interpreting federal trademark protection strictly in light of conflict with copyright and patent laws by holding that Section 43(a) of the Lanham Act does not prevent the unaccredited copying of a creative work that has fallen into the public domain. In Dastar Corp. v. Twentieth Century Fox Film Corp., Case No. 02-428 (June 2, 2003), the Court held that the phrase "origin" of goods in Section 43(a) refers to the producer of the tangible goods that are offered for sale, and not to the author of an idea, concept or communication embodied in those goods. The proper form of protection to ensure an author’s rights is a copyright registration, and the right to copy and sell a work without attribution passes to the public upon its expiration.

In 1948, General Dwight D. Eisenhower wrote an account of the allied campaign in Europe during World War II. The book was published by Doubleday, which secured a federal copyright registration and granted exclusive television rights to Twentieth Century Fox Film Corporation ("Fox"). Fox retained Time, Inc. to produce a television series based on the book, called "Crusade in Europe". Time assigned its copyright in the series to Fox. The series consisted of 26 episodes and combined a soundtrack based on narration from the book with film footage culled from various United States, British and Canadian government sources as well as unidentified "Newsreel Pool Cameramen." Although Doubleday renewed its copyright registration in the book in 1975, Fox allowed its copyright in the television series to expire in 1977. The work, therefore, fell into the public domain. Fox reacquired the television rights in 1988 and sublicensed third parties to restore, repackage and distribute "Crusade in Europe" as a video series.

In 1995, petitioner Dastar released a video set entitled "World War II Campaigns in Europe" ("Campaigns"). To make the videos, Dastar obtained tapes of the public domain Crusade series, edited them to about half their length, substituted a new opening and chapter title sequences, credit page and final closing, moved a "recap" at the end of the series to a "preview" and removed references and images of the book. Dastar also created new packaging and a new title for the series. It manufactured and sold the Campaigns video set as its own product with all credits to Dastar and its employees at a significantly lower price than the new Fox video series; it failed to include any references to the original Crusade television series, the new Crusade video series or the book.

Fox and its sublicensees brought the instant action in 1998, alleging that Dastar’s sale of the Campaigns video set constituted copyright infringement. They later added the novel claim that Dastar’s sale of the Campaigns series without proper credit to the Crusade series constituted "reverse passing off" (when a producer misrepresents some else’s goods or services as his or her own) under Section 43(a) of the Lanham Act.¹

The Court of Appeals for the Ninth Circuit affirmed the district court’s summary judgment for the plaintiffs on the Lanham Act claim, but reversed and remanded as to the copyright claim. The Supreme Court granted certiorari to determine whether Section 43(a) of the Lanham Act prevents the unaccredited copying of a work. 537 U.S. 1099 (2003).

Echoing its recent strict interpretation of Section 43(c) in the Moseley v. V Secret Catalogue decision, the Court declined to find that Section 43(a) has "boundless application as a remedy for unfair trade practices". Rather, it "can apply only to certain unfair trade practices prohibited by its text." Slip Op. at 5. Justice Scalia, writing on behalf of the Court, found that the gravamen of the issue in this case rests in the interpretation of the "false designation of origin" language in Section 43(a). If the "origin" refers to the manufacturer or producer of the physical "goods" that are made available to the public, Dastar was the origin of the Campaigns work and there is no actionable claim under Section 43(a). If the "origin" is defined as the creator of the underlying work, however, then Dastar was not the origin of the goods. Id. At 7.

The Court turned to dictionary definitions of the term "origin" and "goods", and found that the most natural understanding is that "origin" means the producer of the tangible product sold in the marketplace – in this case, the videos sold by Dastar. Having settled on this meaning, the Court confirmed that the phrase "origin of the goods" is incapable of connoting the person or entity that originated the idea embodied in the goods. The Court found that consumers who are protected by the Lanham Act do not typically care who devised the idea or design for a product, but rather are concerned only with the entity that stands behind its production. Thus, the "words of the Lanham Act should not be stretched to cover matters that are typically of no consequence to purchasers." Id. at 9.

The Court declined to adopt a different standard for a "communicative product" which embodies intellectual content, where arguably purchasers care more about the author than the publisher. Reasoning that such a rule would cause the Lanham Act to conflict with the law of copyright, the Court found that the right to copy without attribution passes to the public once a copyright has expired. Id. Thus, Justice Scalia wrote, allowing a cause of action under Section 43(a) for a false representation of origin of a public domain work would create "a species of mutant copyright law that limits the public’s federal right to copy and to use expired copyrights," id. at 10 (citing Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 165 (1989)). Moreover, such a cause of action would render superfluous the express limitations in the Visual Artists Rights Act of 1990, 17 U.S.C. §106A(a)(1)(A).

The Court recognized that reading "origin" in Section 43(a) to require attribution of uncopyrighted materials would pose serious practical problems. First, there are no discernable limits to who is the creator deserving of attribution. For example, in the present case, the original creators of the material used in both series are the governments and cameramen who supplied the film footage – not the respondents. Manufacturers also would be placed between a figurative rock and a hard place as they would be liable both for failing to credit the creator of the work, and for crediting the creator if it created the appearance of sponsorship or approval of the copy. Id. at 12.

Finally, the Court recognized that creating a Section 43(a) cause of action for plagiarism would be irreconcilable with the Court’s previous decisions in the area holding that copying (presumably unaccredited copying) is permitted where there is no protection under federal intellectual property protection laws. Id. at 12-13 (citing Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U. S. 205 (2000) (holding that designs are protected under §43(a) only upon a showing of secondary meaning); Bonito Boats, supra (holding state statute prohibiting use of "direct molding process" to duplicate unpatented boat hulls is pre-empted by operation of federal patent system); TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U. S. 23 (2001) (holding that there is no trade dress claim under §43(a) where plaintiff’s patents on item expired and features of signs are functional)). Further, such a cause of action would be tantamount to creating a species of perpetual patent and copyright in violation of the "limited Times" clause of the Constitution. Id. at 13-14.

In sum, the Court held that the phrase "origin of goods" should be read in accordance with the Lanham Act’s common law foundations – which were not designed to protect originality or creativity – and in light of the copyright and patent laws – which were – to mean the producer of the tangible goods offered for sale. The proper form of protection in this case, which Fox allowed to expire, is a copyright registration.