Dastar Corp. v. Twentieth Century Fox Film Corp. (LEXIS )

The following is a brief summary written on 02-Jun-03 for a different audience. Do not rely on it for comprehansive coverage until it has been reworked into proper legal article format - the initial author needed to refer to it, so provided this overview for the convenience of those discussing the matter.

The US federal Supreme Court today ruled on the Dastar case. The Court rejected the argument that Dastar had engaged in a Lanham act reverse passing off offence (passing off the work of others as its own) on the basis that it would conflict with the more specific copyright law which give anyone unlimited and unconditional rights to reproduce the work with or without attribution. You can't use the Lanham act to prevent people from making free use of public domain works. This strongly worded decision reaffirms the rights of the general population to make unencumbered use of public domain works. All of the members of the Court who considered the case agreed with the decision.

This decision may ultimately hold some promise when it comes to the use of technical means to acquire rights to public domain works by preventing the free copying of them. That is an area where there is a direct conflict between the anti-circumvention of technical means and public domain provisions of copyright law.

Some highlights of the decision, comments within {}:

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 television rights to an affiliate of respondent Twentieth Century Fox Film Corporation (Fox). Fox, in turn, arranged for Time, Inc., to produce a Crusade in Europe television 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 television series, which expired in 1977, leaving the series in the public domain. In 1988, Fox reacquired the television rights in the book, including the exclusive right to distribute the Crusade television series on video and to sub-license others to do so. Respondents SFM Entertainment and New Line Home Video, Inc., acquired from Fox the exclusive rights to manufacture and distribute Crusade on video. In 1995, petitioner Dastar released a video set, World War II Campaigns in Europe, which it made from tapes of the original version of the Crusade television series and sold as its own product for substantially less than New Line’s video set.

That {JD: Fox Lanham Act} claim {of assign of its product as that of someone else} 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 ... copied it, made modifications ... and produced its very own series of videotapes.

{JD: passing off and reverse passing off prohibit Coke from selling Coke as Pepsi or Pepsi as Coke.}

The right to copy, and to copy without attribution, once a copyright has expired, like the right to make [an article whose patent has expired] including the right to make it in precisely the shape it carried when patented.passes to the public. Sears, Roebuck & Co. v. Stiffel Co., 376 U. S. 225, 230 (1964); see also Kellogg Co. v. National Biscuit Co., 305 U. S. 111, 121.122 (1938). .In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying.. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U. S. 23, 29 (2001). The rights of a patentee or copyright holder are part of a carefully crafted bargain, Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 150.151 (1989), under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution. ... 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, Bonito Boats, supra, at 165.

Reading "origin" in §43(a) to require attribution of un-copyrighted materials would pose serious practical problems. Without a copyrighted work as the basepoint, the word origin. has no discernable limits. A video of the MGM film Carmen Jones, after its copyright has expired, would presumably require attribution not just to MGM, but to Oscar Hammerstein II (who wrote the musical on which the film was based), to Georges Bizet (who wrote the opera on which the musical was based), and to Prosper Mérimée (who wrote the novel on which the opera was based). ... And of course it was neither Fox nor Time, Inc., that shot the film used in the Crusade television series. Rather, that footage came from the United States Army, Navy, and Coast Guard, the British Ministry of Information and War Office, the National Film Board of Canada, and unidentified Newsreel Pool Cameramen. If anyone has a claim to being the original creator of the material used in both the Crusade television series and the Campaigns videotapes, it would be those groups, rather than Fox. We do not think the Lanham Act requires this search for the source of the Nile and all its tributaries.

.. we conclude that the phrase [origin of goods] 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.

Still to be resolved in the lower courts is whether the videotapes might infringe the copyright of the book, which was renewed.

The decision may also have bearing on the practice of making available unauthorized edited/censored versions of commercial movie releases, perhaps suggesting that it will be found to be a problem under the Lanham Act.

Facts

Case history

For other fair use and copyright cases see: List of leading legal cases in copyright law.

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