Dastar Corporation v. Twentieth Century Fox Film Corporation
539 U.S. 23, 123 S.Ct. 2041
Facts: Dastar used video footage from a television series that was in the public domain to create a slightly different video of their own, and then sold it commercially without giving credit to Fox, who was the originator of the video. Fox’s copyright in the original video expired in 1977. Fox sued for copyright and Lanham Act violations. SCOTUS reviewed the Lanham Act claim, specifically §43(a) of the Lanham Act, 15 U.S.C. § 1125(a), in which Fox alleged that Dastar had 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.†Fox claims that Dastar should be found liable for “reverse passing off,†which is when a producer misrepresents someone else’s goods or services as their own, which is forbidden by the Lanham Act.
Procedural History: Summary judgment was granted to the plaintiff by the District Court. Appeal was taken, and the Lanham Act claim was affirmed by the Ninth Circuit. SCOTUS granted Certiorari regarding the Lanham Act claim.
Holding: Section 43(a) of the Lanham Act does not prevent the unaccredited copying of an uncopyrighted work. Section 43(a) should not be stretched to cover matters that are of no consequence to purchasers, because giving Lanham Act protection to such products would cause it to conflict with copyright law.
Analysis: The Court determined that Dastar was the “origin†of the physical product that it sold. Dastar took material from the public domain, modified it, and sold the resulting product as its own. Fox claimed that these actions by Dastar constituted “false misrepresentation†as to the “origin†of its goods, and constituted “reverse passing off.†However, the Court reasoned that the meaning of the word “origin†in the statute here rested solely on the manufacturer of the goods, and did not extend to the creator of the underlying work. Copyright law allows copying without attribution once a copyright has expired, similarly to the right “to make an article whose patent has expired, including the right to make it in precisely the shape it carried when patented.â€
Here, Fox had tried to make money from its creative work after the copyright had expired by trying to shoehorn Dastar into a Lanham Act violation. Although the facts in the case do not show whether there might have been any pre-litigation attempts by Fox to try to coerce Dastar into licensing the original video from Fox, ultimately this ruling shows that Dastar did not have to pay Fox anything to use the video anyway, since once a creative work passes into the public domain, anybody may freely copy or transform the work in any way they please.
539 U.S. 23, 123 S.Ct. 2041
Facts: Dastar used video footage from a television series that was in the public domain to create a slightly different video of their own, and then sold it commercially without giving credit to Fox, who was the originator of the video. Fox’s copyright in the original video expired in 1977. Fox sued for copyright and Lanham Act violations. SCOTUS reviewed the Lanham Act claim, specifically §43(a) of the Lanham Act, 15 U.S.C. § 1125(a), in which Fox alleged that Dastar had 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.†Fox claims that Dastar should be found liable for “reverse passing off,†which is when a producer misrepresents someone else’s goods or services as their own, which is forbidden by the Lanham Act.
Procedural History: Summary judgment was granted to the plaintiff by the District Court. Appeal was taken, and the Lanham Act claim was affirmed by the Ninth Circuit. SCOTUS granted Certiorari regarding the Lanham Act claim.
Holding: Section 43(a) of the Lanham Act does not prevent the unaccredited copying of an uncopyrighted work. Section 43(a) should not be stretched to cover matters that are of no consequence to purchasers, because giving Lanham Act protection to such products would cause it to conflict with copyright law.
Analysis: The Court determined that Dastar was the “origin†of the physical product that it sold. Dastar took material from the public domain, modified it, and sold the resulting product as its own. Fox claimed that these actions by Dastar constituted “false misrepresentation†as to the “origin†of its goods, and constituted “reverse passing off.†However, the Court reasoned that the meaning of the word “origin†in the statute here rested solely on the manufacturer of the goods, and did not extend to the creator of the underlying work. Copyright law allows copying without attribution once a copyright has expired, similarly to the right “to make an article whose patent has expired, including the right to make it in precisely the shape it carried when patented.â€
Here, Fox had tried to make money from its creative work after the copyright had expired by trying to shoehorn Dastar into a Lanham Act violation. Although the facts in the case do not show whether there might have been any pre-litigation attempts by Fox to try to coerce Dastar into licensing the original video from Fox, ultimately this ruling shows that Dastar did not have to pay Fox anything to use the video anyway, since once a creative work passes into the public domain, anybody may freely copy or transform the work in any way they please.