In June 2003, the U.S. Supreme Court resolved a dispute between Twentieth Century Fox Film Corporation and Dastar Corporation. At issue was whether Dastar's release of a video set entitled "World War II Campaigns in Europe" ("Campaigns") constituted "reverse passing off" in violation of the federal Lanham Act. "Reverse passing off" is to purposely cause confusion or deception as to a product's origin.
Background
In 1948, Doubleday published and obtained the copyright on General Dwight D. Eisenhower's book, "Crusade in Europe," which detailed the Allied campaign in Europe during World War II. Doubleday granted exclusive television rights to an affiliate of Fox, which subsequently arranged for Time, Inc. to produce a television series based on the book. Time, Inc. assigned its copyright in the series to Fox, and it was first broadcast in 1949.
In 1975, Doubleday renewed its copyright on the book, but Fox failed to renew its copyright on the television series. Therefore, once the copyright on the series expired in 1977, the television series entered the "public domain." (Works in the public domain are available for copying and other forms of use by anyone interested in doing so). Later, in 1988, Fox reacquired the television rights in General Eisenhower's book and authorized SFM Entertainment to repackage the series on videotape and New Line to distribute the videotapes.
In 1995, Dastar (the defendant) released the "Campaigns" video set. To make "Campaigns," Dastar purchased tapes of the original version of the television series (i.e., the 1949 public domain version), copied the tapes, and made minor modifications (e.g., created new packaging, inserted new narrated chapter introductions) to produce its own series of videotapes.
Litigation Ensues
In 1998, Fox, SFM and New Line (the respondents) sued Dastar for the following:
- Infringement of Doubleday's copyright in Eisenhower's book and thus, their exclusive television rights in the book
- "Reverse passing off," in violation of Section 43(a) of the federal Lanham Act
- "Reverse passing off," in violation of state unfair-competition law
A federal court in California entered judgment for respondents on all three counts. On appeal, the Ninth Circuit affirmed the judgment on the Lanham Act claim, but reversed as to the copyright claim and sent the case back to the lower federal court. (The Ninth Circuit said nothing with respect to the state law claim). In 2003, the U.S. Supreme Court agreed to review the Lanham Act claim.
Section 43(a) of the Lanham Act
For the most part, the federal Lanham Act addresses the registration, use and infringement of trademarks and related marks. However, Section 43(a) provides more general protection by imposing civil liability on any person who 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."
To cite the Court's example, Section 43(a) prohibits the Coca-Cola Company from passing off its product as Pepsi-Cola, or "reverse passing off" Pepsi-Cola as its product. In this case, the respondents argued that Dastar was liable under Section 43(a) for reverse passing off "Campaigns" as its own product, without accrediting the earlier series.
The Meaning of "Origin"
To determine whether Dastar was liable, the Court had to first decide what Section 43(a) meant by "origin" of "goods." As stated by the Court:
- 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.
After considering dictionary definitions and "the most natural understanding" of the words, the Court concluded that Dastar, as the producer of the tangible product sold in the marketplace (i.e., the videotapes), constituted the "origin" of the goods. The Court also dismissed the alternative definition by considering the following:
- The history and purpose of the Lanham Act
- The difficulty of reconciling the alternative definition with earlier judicial decisions
- Preventing the Lanham Act from conflicting with the law of copyright (i.e., the Court did not wish to create a "species of mutant copyright law")
- Avoiding numerous practical problems with such a definition (e.g., serious difficulty in ascertaining the "origin" of a work to which many individuals contributed)
Conclusion The Court concluded that the phrase "origin of goods" referred 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;" in this case, Dastar. As such, the Court reversed the Ninth Circuit such that no Lanham Act liability attached to Dastar.
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