Supreme Court Reverses in Dastar v. Fox
June 2, 2003. The Supreme Court issued its opinion [18 pages in PDF] in Dastar v. Twentieth Century Fox, reversing the opinion of the U.S. Court of Appeals (9thCir), which had upheld a District Court judgment of violation of the Lanham Act.
Technically, this is a Lanham Act, reverse passing off, case. "Passing off" occurs when a producer misrepresents his own goods or services as someone else's. "Reverse passing off" occurs when a producer misrepresents someone else's goods or services as his own. Both can be actionable under the Lanham Act, which makes actionable not only the misleading use of marks, but also the false designation of origin of goods.
In another sense, this is a case in which a plaintiff/producer is passing off a copyright claim as a Lanham Act claim. The plaintiff alleged that its work of authorship was copied (which can be actionable under the Copyright Act), but instead proceeded on the legal theory of violation of the Lanham Act's false designation of origin provision.
The defendant copied a work whose copyright had expired, and failed to attribute its origin. The lower courts ruled for the producer. The Supreme Court reversed, 8-0. It held that this is not the purpose of the Lanham Act. Moreover, allowing this sort of use of the Lanham Act would have the impermissible effect of creating perpetual quasi patents and copyrights.
Background. Twentieth Century Fox Film Corporation (Fox) made a TV series based on Dwight Eisenhower's 1948 book, Crusade in Europe (under license from the publisher, Doubleday). The series was first broadcast in 1949. In 1995, Dastar Corporation made a video on the same subject that copied extensively from Fox's TV series. Fox's problem is that it failed to renew the copyright on the TV program. Consequently, the work entered the public domain in 1977. And hence, Fox could not sue Dastar for copyright infringement.
However, Dastar's had its own problem. It failed to credit the source of the material that it copied from Fox. It claimed that the video was its own product.
Proceeding Below. Fox filed a complaint in 1998 in U.S. District Court against Dastar alleging violation of Section 43(a) of the Lanham Act, which is codified at 15 U.S.C. § 1125(a). This case also involves a state unfair competition claim, and a copyright claim involving the Doubleday book copyright. However, those were not at issue in the Supreme Court's review.
The District Court ruled for Fox on the Lanham Act claim. It further awarded Dastar's profits to Fox, and doubled them pursuant to § 35 of the Lanham Act, codified at 15 U.S.C. § 1117(a), to deter future infringing conduct by Dastar.
Dastar appealed to the U.S. Court of Appeals (9thCir). It affirmed. It further held that a finding of likelihood of consumer confusion is not required. Dastar petitioned for writ of certiorari. The Supreme Court granted certiorari.
Statute. 15 U.S.C. § 1125(a)(1) provides, in part, that "Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which -- (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act."
Supreme Court. The Supreme Court reversed. Justice Antonin Scalia wrote for a unanimous Court (although Justice Breyer did not participate). He wrote that "At bottom, we must decide what §43(a)(1)(A) of the Lanham Act means by the ``origin´´. of ``goods´´."
In the end, he concluded that "In sum, 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 embodied in those goods. ... To hold otherwise would be akin to finding that §43(a) created a species of perpetual patent and copyright, which Congress may not do."
Justice Scalia first confirmed that the Lanham Act does protect against reverse passing off. He wrote that "every Circuit to consider the issue found §43(a) broad enough to encompass reverse passing off. ... The Trademark Law Revision Act of 1988 made clear that §43(a) covers origin of production as well as geographic origin. Its language is amply inclusive, moreover, of reverse passing off, if indeed it does not implicitly adopt the unanimous court-of-appeals jurisprudence on that subject." (Citations and footnote omitted.)
Scalia continued that "The gravamen of respondents' claim is that, in marketing and selling Campaigns as its own product without acknowledging its nearly wholesale reliance on the Crusade television series, 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 his or her goods´´."
He commented that "That claim would undoubtedly be sustained if Dastar had bought some of New Line's Crusade videotapes and merely repackaged them as its own. Dastar's alleged wrongdoing, however, is vastly different: it took a creative work in the public domain -- the Crusade television series -- copied it, made modifications (arguably minor), and produced its very own series of videotapes." (Parentheses in original.)
"If ``origin´´ refers only to the manufacturer or producer of the physical ``goods´´ that are made available to the public (in this case 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." (Parentheses in original.)
Justice Scalia concluded, "But as used in the Lanham Act, the phrase ``origin of goods´´ is in our view incapable of connoting the person or entity that originated the ideas or communications that ``goods´´ embody or contain. Such an extension would not only stretch the text, but it would be out of accord with the history and purpose of the Lanham Act and inconsistent with precedent."
Scalia reasoned that §43(a) "prohibits actions like trademark infringement that deceive consumers and impair a producer's goodwill. It forbids, for example, the Coca-Cola Company's passing off its product as Pepsi-Cola or reverse passing off Pepsi-Cola as its product. But the brand-loyal consumer who prefers the drink that the Coca-Cola Company or PepsiCo sells, while he believes that that company produced (or at least stands behind the production of) that product, surely does not necessarily believe that that company was the ``origin´´ of the drink in the sense that it was the very first to devise the formula. The consumer who buys a branded product does not automatically assume that the brand-name company is the same entity that came up with the idea for the product, or designed the product -- and typically does not care whether it is. The words of the Lanham Act should not be stretched to cover matters that are typically of no consequence to purchasers."
He also examined whether the analysis might be different for a "communicative product", such as a book or video, but concluded that the analysis should be the same. He wrote that "The problem with this argument according special treatment to communicative products is that it causes the Lanham Act to conflict with the law of copyright, which addresses that subject specifically. The right to copy, and to copy without attribution, once a copyright has expired," passes to the public.
Scalia elaborated on attempts to use trademark law in areas reserved for copyright or patent law. "Federal trademark law ``has no necessary relation to invention or discovery´´", citing Trade-Mark Cases, 100 U. S. 82 (1879)." Rather, trademark law reduces customers costs or shopping and making purchasing decisions, and prevents an imitating competitor from reaping the benefits of a desirable product.
He continued that "Assuming for the sake of argument that Dastar's representation of itself as the ``Producer´´ of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under §43(a) for that representation would create a species of mutant copyright law that limits the public's ``federal right to `copy and to use,´ ´´ expired copyrights", citing Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141 (1989).
Finally, Scalia observed that interpreting "origin" to require attribute of uncopyrighted materials would be difficult to implement. For example, what would be the "origin" of a movie, which was based on a musical, which was based on an opera, which was based novel. As another example, Scalia pointed out, requiring attribution would create potential liability, if the credit is regarding as implying sponsorship or approval.
The Court did not address issue of damages under the Lanham Act, because it found no underlying violation of the Lanham Act.
Commentary. Justice Scalia's opinion is narrowly focused on resolving the legal issue before the Court. Nevertheless, this case may have consequences beyond the situation of unattributed copying of TV programs that have fallen into the public domain.
For example, had the Court affirmed, this case might have weakened the impact of the Feist case, which held that collections of data, such as electronic databases, are not subject to copyright protection. The present opinion precludes the creator of a database from suing a copier under the Lanham Act for failing to attribute the origin of the copied data. See, Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991),
Also, the Court's discussion of using one species of intellectual property protection to, in effect, create protections that resemble other categories of intellectual property, may be relevant to some other types of disputes, such as some that may arise regarding enforcement of the Digital Millennium Copyright Act's (DMCA) anti-circumvention provisions.
However, Scalia did not touch these subjects.
The case attracted amicus curiae briefs urging reversal. See, for example,
amicus curiae brief
[29 pages in PDF] of the American
Intellectual Property Law Association (AIPLA), and
[38 pages in PDF] of the International
Trademark Association (INTA). See also,
amicus brief of the American Library
Association (ALA), Computer
& Communications Industry Association (CCIA),
Public Knowledge, and other
groups, and Bloomberg L.P.