Caseflicks

Supreme Court of the United States • 2003

Dastar Corp. v. Twentieth Century Fox Film Corp.

539 U.S. 23 | 123 S. Ct. 2041 | 156 L. Ed. 2d 18 | 2003 U.S. LEXIS 4276 | 194 A.L.R. Fed. 731 | 2003 Daily Journal DAR 5799 | 16 Fla. L. Weekly Fed. S 330 | 2003 Cal. Daily Op. Serv. 4554 | 71 U.S.L.W. 4415

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Takeaway

In short, this case holds that the Lanham Act cannot be used as a perpetual attribution right: copying a public-domain creative work without crediting its original creator is not reverse passing off when the copier accurately identifies itself as the producer of the physical goods it sells.

Background

General Dwight D. Eisenhower’s 1948 book, Crusade in Europe, was adapted into a 26-episode television series produced by Time, Inc. under an arrangement with Twentieth Century Fox. Fox held the series’ copyright, but failed to renew it; the television series entered the public domain in 1977. Fox later acquired television rights in Eisenhower’s book and licensed SFM Entertainment and New Line Home Video to distribute restored videos of the Crusade series.

In 1995, Dastar bought tapes of the public-domain Crusade series, copied and substantially edited them, added new introductions, credits, title sequences, packaging, and a new title—World War II Campaigns in Europe—and sold the resulting video set as a Dastar product. Dastar did not identify Fox, the Crusade series, or Eisenhower’s book.

Fox, SFM, and New Line sued, alleging copyright infringement, reverse passing off under § 43(a) of the Lanham Act, and state unfair competition. The District Court granted summary judgment to respondents, awarded Dastar’s profits, and doubled the award to deter future conduct. The Ninth Circuit affirmed the Lanham Act ruling and doubled-profits award, reasoning that Dastar had made a “bodily appropriation” of Fox’s series and marketed it without attribution. It reversed and remanded on the copyright claim. The Supreme Court granted review.

Issues

Issue #1

Whether § 43(a)(1)(A) of the Lanham Act makes a party liable for reverse passing off when it copies a public-domain creative work, repackages it, and sells it without crediting the creator of the underlying work.

Holding

No. For purposes of § 43(a)(1)(A), the “origin” of goods is ordinarily the producer of the tangible product sold in the marketplace, not the author or creator of the ideas, concepts, or communications embodied in that product.

Reasoning

Section 43(a) reaches certain deceptive trade practices, including traditional reverse passing off. If Dastar had simply bought respondents’ Crusade videotapes and relabeled those physical tapes as its own, that would be an ordinary reverse-passing-off claim. But Dastar instead copied a public-domain television series, altered it, and manufactured its own videotapes. The decisive question was therefore what “origin” means in the statute’s phrase “origin of goods.”

The ordinary meaning of the phrase points to the source of the wares offered for sale. Dastar produced the physical Campaigns videotapes that consumers bought and represented itself as their producer. Although “origin” can sometimes include a trademark owner that stands behind production, it does not naturally include the person who first created the ideas or expression contained in a product.

The Lanham Act protects consumers against confusion about the commercial source of products and protects producers’ goodwill. It is not a general law against copying or plagiarism. A buyer of a branded product may care which company made or stands behind the product, but does not necessarily assume that company invented the product or originated every idea incorporated into it.

Extending “origin” to the author of the content in a book, film, or other communicative product would improperly turn the Lanham Act into a substitute for copyright law. Copyright grants a limited monopoly; when the copyright expires, the public ordinarily gains the right to copy and use the work, including the right to do so without attribution. A Lanham Act attribution duty for public-domain works would create a perpetual, copyright-like restriction that Congress did not enact.

Congress knows how to create a specific attribution right when it chooses. The Visual Artists Rights Act gives authors of specified works of visual art a carefully limited right to claim authorship. Reading § 43(a) broadly to require attribution for all uncopyrighted expressive works would make those statutory limitations largely unnecessary.

Respondents’ interpretation would also be administratively unworkable. A copied film or video may draw from many contributors and earlier works, making it difficult to identify every supposed originator. In this case, Time, Fox, government entities, newsreel cameramen, and others all contributed material; the Lanham Act does not require tracing every tributary to identify the ultimate source.

A special attribution rule for communicative products would put copyists in a double bind. They could be sued for omitting credit, yet potentially sued for retaining credits if those credits falsely implied the original creator’s sponsorship or approval of the new product. The Court declined to read the statute to create that unstable result.

The Court’s interpretation also preserves the limits established in its trade-dress and patent cases. Treating the creator of an underlying design or content as the statutory origin would allow plaintiffs to use reverse passing off to obtain protection that cases such as Wal-Mart, Bonito Boats, and TrafFix deny when copyright, patent, or trade-dress law does not supply it.

Issue #2

Whether the Court needed to decide whether § 35(a) of the Lanham Act permitted doubling Dastar’s profits as a deterrent.

Holding

No. Because respondents could not prevail on their Lanham Act claim, the Court did not reach the propriety of the doubled-profits award.

Reasoning

The enhanced award depended on respondents’ success under the Lanham Act. Once the Court held that Dastar was the relevant origin of the videotapes it sold and that its failure to credit the creators of the public-domain series was not actionable reverse passing off, there was no Lanham Act judgment on which to assess or enhance profits.

The Court left unresolved issues outside the question presented. In particular, it expressed no view on the still-pending copyright dispute concerning Eisenhower’s book. It also noted that materially misleading advertising about a video’s nature, characteristics, or qualities might be actionable under § 43(a)(1)(B), but Dastar’s statement that it produced its own videotapes did not establish such a claim.