The U.S. Supreme Court has held that a claim for false designation of origin which is premised on the defendant’s representation that it created the idea embodied in a product that the defendant sells is deficient as a matter of law. Dastar Corp. v. Fox, 539 U.S. ___, U.S. 2003 U.S. LEXIS 4276 (June 2, 2003).

In Dastar, the defendant sold videotapes, which were copies of the plaintiff’s videotapes. The defendant sold the tapes as its own, without disclosing that it had copied the plaintiff's tapes. The defendant represented itself as the originator of the creative work conveyed in its tapes. The plaintiff alleged a claim under Section 43(a) of the Lanham Act. The Supreme Court held that such a claim failed as a matter of law.

The Court explained that Section 43(a) provides a remedy against a person who uses a "false designation of origin." The question presented was whether the term "origin" in the phrase "false designation of origin" referred exclusively to the actual manufacturer of the goods or also included the inventor of the goods that were copied. The Court noted, "[I]n construing the Lanham Act, we have been ‘careful to caution against misuse or overextension’ of trademark and related protections into areas traditionally occupied by patent or copyright. The Lanham Act … does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity."

Relying on the limited purpose of the Act, and the interplay between the Act and the Federal Copyright and Patent Statutes, the Court held that the term "origin" in Section 43(a) refers only to the party that actually manufactured the physical goods made available to the public. "Origin" does not include the creator of an underlying work, which has been copied. Id. As the Court put it, "reading the phrase ‘origin of goods’ in the Lanham Act in accordance with the 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), we conclude that the phrase refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept or communication. To hold otherwise would be akin to finding that Section 43(a) created a species of perpetual patent and copyright, which Congress may not do."

That did not mean that the plaintiff had no redress -- it did, but only under the Copyright Act. A false designation of origin claim under the Lanham Act was unavailable as a matter of law: "Because [the defendant] was the ‘origin’ of the products it sold as its own, [the plaintiff] cannot prevail on its Lanham Act claim."John Dabney is a partner in the Intellectual Property Department, resident in McDermott, Will & Emery’s Washington, D.C. office. He concentrates his practice on trademark litigation, prosecution and counseling.

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