U.S. Supreme Court Rules that the Lanham Act Does Not Prohibit the Use of Public Domain Programming in the Production of New Programming
In an 8-0 decision, the Supreme Court yesterday issued a seemingly narrow Lanham (Trademark) Act opinion, which is likely to have broader implications for programmers and others who use television programming and other works that are in the public domain. In Dastar Corp. v. Twentieth Century Fox Film Corp., No. 02-428, 539 U.S. ___ (2003), the Court held that Section 43(a) of the Lanham Act does not provide grounds for liability under a “false designation of origin” theory for using public domain programming to make a new creative work.
In 1995, Dastar manufactured and distributed a videotape set titled “Campaign in Europe.” Although the videotape footage identified Dastar as “producer” of the programming, much of the footage was copied from a 26-episode television series titled “Crusade in Europe,” first broadcast in 1949, which was produced by Time, Inc. pursuant to permission from Twentieth Century Fox (“Fox”). The series was based on the Doubleday book of the same title, authored by Dwight D. Eisenhower.
Using slightly more than half of the original footage, Dastar edited and rearranged Time’s materials, adding a new opening sequence, credit page, chapter-title sequences and introduction, and a new closing. Dastar also removed any footage containing images of, or references to, the book. Fox’s copyright in the original television series expired in 1977, leaving the audiovisual work in the public domain and nullifying any possible copyright claim. (The copyright status of the underlying book was not at issue before the Supreme Court.)
Fox sued Dastar in part on Lanham Act grounds, alleging that Dastar’s copying from the original television series and attribution to itself as “producer” violated Section 43(a) of the Lanham Act, which prohibits the use of any “false designation of origin,” on or in connection with any goods or services, that is likely to cause consumer confusion. 15 U.S.C. § 1125(a)(1)(A). Since the copyright had expired in the underlying works, Fox was forced to rely on a trademark-related claim, alleging that Dastar was “passing off” Fox’s goods as its own. Both the U.S. District Court and the U.S. Court of Appeals for the Ninth Circuit ruled in favor of Fox, reasoning that Dastar’s copying of television footage constituted a “bodily appropriation” sufficient to trigger reverse passing off liability under the Lanham Act.
Reversing the Ninth Circuit and finding no liability for Dastar under Section 43(a), the Supreme Court held that “origin” within the meaning of the Lanham Act refers to the source of tangible goods only—not the ideas or communications contained therein, which are protected by copyright law. The Court noted that if Dastar had merely purchased and repackaged Time’s actual videotapes as its own, the trademark-related claim would have been sustained. The Court characterized Dastar’s role as taking a formerly copyrighted work now in the public domain and producing its own series of videotapes—thus Dastar was the “origin” of its own creative work, rendering moot Fox’s “false designation of origin” claim.
The true significance of this case comes from the Supreme Court’s refusal to impose trademark liability on what was essentially a copyright claim. The Court held that the Lanham Act must be construed in light of copyright law, which protects the communicative or creative elements of a work, while the Lanham Act and trademark law protect the designation of origin of tangible goods. Once the communicative elements have been disassembled and used to create different goods, the different goods are no longer those of the original trademark owner.
The Court’s decision may provide a measure of security for programmers and other users of televised works in the public domain, clarifying that there is no Lanham Act liability for false attribution if the new user creates a different work using that programming.
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