539 U.S. 23 (2003), 03-428, Dastar Corp. v. Twentieth Century Fox Film Corp.

Docket Nº:No. 03-428
Citation:539 U.S. 23, 123 S.Ct. 2041, 156 L.Ed.2d 18, 71 U.S.L.W. 4415
Party Name:Dastar Corp. v. Twentieth Century Fox Film Corp.
Case Date:June 02, 2003
Court:United States Supreme Court
 
FREE EXCERPT

Page 23

539 U.S. 23 (2003)

123 S.Ct. 2041, 156 L.Ed.2d 18, 71 U.S.L.W. 4415

Dastar Corp.

v.

Twentieth Century Fox Film Corp.

No. 03-428

United States Supreme Court

June 2, 2003

Argued April 2, 2003

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT

Syllabus

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 sublicense 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. Fox, SFM, and New Line brought this action alleging, inter alia, that Dastar's sale of Campaigns without proper credit to the Crusade television series constitutes "reverse passing off" in violation of § 43(a) of the Lanham Act. The District Court granted respondents summary judgment. The Ninth Circuit affirmed in relevant part, holding, among other things, that because Dastar copied substantially the entire Crusade series, labeled the resulting product with a different name, and marketed it without attribution to Fox, Dastar had committed a "bodily appropriation" of Fox's series, which was sufficient to establish the reverse passing off.

Held: section 43(a) of the Lanham Act does not prevent the unaccredited copying of an uncopyrighted work. Pp. 28-38.

(a) Respondents' claim that 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 [its] goods

in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), would undoubtedly be sustained if Dastar had bought

Page 24

some of New Line's Crusade videotapes and merely repackaged them as its own. However, Dastar has instead taken a creative work in the public domain, copied it, made modifications (arguably minor), and produced its very own series of videotapes. If "origin" refers only to the manufacturer or producer of the physical "good" that is made available to the public (here, 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. At bottom, the Court must decide what § 43(a) means by the "origin" of "goods." Pp. 28-31.

(b) Because Dastar was the "origin" of the physical products it sold as its own, respondents cannot prevail on their Lanham Act claim. As dictionary definitions affirm, the most natural understanding of the "origin" of "goods" -- the source of wares -- is the producer of the tangible product sold in the marketplace, here Dastar's Campaigns videotape. The phrase "origin of goods" in the Lanham Act is incapable of connoting the person or entity that originated the ideas that "goods" embody or contain. The consumer typically does not care about such origination, and § 43(a) should not be stretched to cover matters that are of no consequence to purchasers. Although purchasers do care about ideas or communications contained or embodied in a communicative product such as a video, giving the Lanham Act special application to such products would cause it to conflict with copyright law, which is precisely directed to that subject, and which grants the public the right to copy without attribution once a copyright has expired, e.g., Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 230. Recognizing a § 43(a) cause of action here would render superfluous the provisions of the Visual Artists Rights Act that grant an artistic work's author "the right . . . to claim authorship," 17 U.S.C. § 106A(a)(1)(A), but carefully limit and focus that right, §§ 101, § 106A(b), (d)(1), and (e). It would also pose serious practical problems. Finally, reading § 43(a) as creating a cause of action for, in effect, plagiarism would be hard to reconcile with, e.g., WalMart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211. Pp. 31-38.

34 Fed.Appx. 312 reversed and remanded.

SCALIA, J., delivered the opinion of the Court, in which all other Members joined, except BREYER, J., who took no part in the consideration or decision of the case.

Page 25

OPINION

SCALIA, JUSTICE.

In this case, we are asked to decide whether § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), prevents the unaccredited copying of a work, and if so, whether a court may double a profit award under § 1117(a), in order to deter future infringing conduct.

I

In 1948, three and a half years after the German surrender at Reims, General Dwight D. Eisenhower completed Crusade in Europe, his written account of the allied campaign in Europe during World War II. Doubleday published the book, registered it with the Copyright Office in 1948, 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 television series, also

Page 26

called Crusade in Europe, based on the book, and Time assigned its copyright in the series to Fox. The television series, consisting of 26 episodes, was first broadcast in 1949. It combined a soundtrack based on a narration of the book with film footage 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". In 1975, Doubleday renewed the copyright on the book as the "`proprietor of copyright in a work made for hire'". App. to Pet for Cert. 9a. Fox, however, did not renew the copyright on the Crusade television series, which expired in 1977, leaving the television series in the public domain.

In 1988, Fox reacquired the television rights in General Eisenhower's book, including the exclusive right to distribute the Crusade television series on video and to sublicense others to do so. Respondents SFM Entertainment and New Line Home Video, Inc., in turn, acquired from Fox the exclusive rights to distribute Crusade on video. SFM obtained the negatives of the original television series, restored them, and repackaged the series on videotape; New Line distributed the videotapes.

Enter petitioner Dastar. In 1995, Dastar decided to expand its product line from music compact discs to videos. Anticipating renewed interest in World War II on the 50th anniversary of the war's end, Dastar released a video set entitled World War II Campaigns in Europe. To make Campaigns, Dastar purchased eight beta cam tapes of the original version of the Crusade television series, which is in the public domain, copied them, and then edited the series. Dastar's Campaigns series is slightly more than half as long as the original Crusade television series. Dastar substituted a new opening sequence, credit page, and final closing for those of the Crusade television series; inserted new chapter-title sequences and narrated chapter introductions; moved the "recap" in the Crusade television series to the

Page 27

beginning and retitled it as a "preview", and removed references to and images of the book. Dastar created new packaging for its Campaigns series and (as already noted) a new title.

Dastar manufactured and sold the Campaigns video set as its own product. The advertising states: .Produced and Distributed by: Entertainment Distributing (which is owned by Dastar), and makes no reference to the Crusade television series. Similarly, the screen credits state "DASTAR CORP presents" and "an ENTERTAINMENT DISTRIBUTING Production," and list as executive producer, producer, and associate producer, employees of Dastar. Supp.App. 2-3, 30. The Campaigns videos themselves also make no reference to the Crusade television series, New Line's Crusade videotapes, or the book. Dastar sells its Campaigns videos to Sam's Club, Costco, Best Buy, and other retailers and mail order companies for $25 per set, substantially less than New Line's video set. In 1998, respondents Fox, SFM, and New Line brought this action alleging that Dastar's sale of its Campaigns video set infringes Doubleday's copyright in General Eisenhower's book, and thus their exclusive television rights in the book. Respondents later amended their complaint to add claims that Dastar's sale of Campaigns "without proper credit" to the Crusade television series constitutes "reverse passing off"[1] in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and in violation of state unfair competition law. App. to Pet. for Cert. 31a. On cross-motions for summary judgment, the District Court found for respondents on all three counts, id. at 54a-55a, treating its

Page 28

resolution of the Lanham Act claim as controlling on the state law unfair competition claim because "the ultimate test under both is whether the public is likely to be deceived or confused," id. at 54a. The court awarded Dastar's profits to respondents and doubled them pursuant to § 35 of the Lanham Act, 15 U.S.C. § 1117(a), to deter future infringing conduct by...

To continue reading

FREE SIGN UP