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Dastar v. Twentieth Century Fox Film

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Citation Edit

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

Factual Background Edit

The publisher of a book on World War II granted exclusive television rights in the book to an affiliate of a film corporation, which arranged for the production of a television series that was based on the book. The film corporation's copyright on the television series was not renewed and thus expired in 1977, at which time the series entered the public domain.

In 1988, the film corporation reacquired the television rights in the book, which rights purportedly included the exclusive right to distribute the television series on videotape and to sublicense others to do so. Subsequently, the film corporation granted this right to two companies. One of these companies obtained and restored the negatives of the original television series and repackaged the series on videotape. The other company distributed the videotapes.

In 1995, a rival company, Dastar, produced a video set by purchasing, copying, and editing tapes of the original public-domain version of the television series, which it sold as its own product for substantially less than the plaintiffs. The Dastar's video set and related advertising made no reference to the original book or television series or to the videotapes that the film corporation had authorized.

The advertising states: "Produced and Distributed by: Entertainment Distributing" (which is owned by Dastar). Similarly, the screen credits state "DASTAR CORP presents" and "an ENTERTAINMENT DISTRIBUTING Production," and listed as executive producer, producer, and associate producer, employees of Dastar.

Trial Court Proceedings Edit

The film corporation and the companies that had made and distributed the authorized videotapes brought an action in federal court against the rival company and other parties. The plaintiffs alleged, among other matters, that the sale of the rival company's video set without credit to the television series constituted "reverse passing off" — that is, the misrepresentation of another's goods as one's own — in violation of Section 43(a) of the Lanham Act, which forbids a person to use in commerce any word, term, name, symbol, or device that is likely to cause confusion or mistake as to the origin of the person's goods.

On cross-motions for summary judgment, the trial court found for the plaintiffs on all three counts, treating its 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." The court awarded Dastar's profits to the plaintiffs and doubled them pursuant to Section 35 of the Lanham Act, to deter future infringing conduct by Dastar.

Appellate Court Proceedings Edit

The Court of Appeals for the Ninth Circuit affirmed the judgment for plaintiffs on the Lanham Act claim, but reversed as to the copyright claim and remanded. It said nothing with regard to the state-law claim.

With respect to the Lanham Act claim, the court reasoned that "Dastar copied substantially the entire Crusade in Europe series created by Twentieth Century Fox, labeled the resulting product with a different name and marketed it without attribution to Fox and, therefore committed a 'bodily appropriation' of Fox's series." It concluded that "Dastar's 'bodily appropriation' of Fox's original television series is sufficient to establish the reverse passing off." The court also affirmed the trial court’s award under the Lanham Act of twice Dastar's profits.

U.S. Supreme Court Proceedings Edit

On certiorari, the U.S. Supreme Court reversed and remanded. The Court stated that the Lanham Act was intended to make "actionable the deceptive and misleading use of marks," and "to protect persons engaged in . . . commerce against unfair competition." While much of the Lanham Act addressed the registration, use, and infringement of trademarks and related marks, §43(a) is one of the few provisions that goes beyond trademark protection. As originally enacted, §43(a) created a federal remedy against a person who used in commerce either "a false designation of origin, or any false description or representation" in connection with "any goods or services."

The Court held that the plaintiffs could not prevail on a claim under Section 43(a) because:

  1. The gravamen of the plaintiffs' claim was that the rival, in marketing and selling the video set as the rival's own product without acknowledging reliance on the television series, had made a false designation of origin, false or misleading description of fact, or false or misleading representation of fact which was likely to cause confusion as to the origin of the rival's goods.
  2. Although the plaintiffs' claim would have been sustained if the rival had bought some of the plaintiffs' videotapes and merely repackaged them as its own, the rival's alleged wrongdoing was vastly different.
  3. For purposes of § 43(a), the rival was the "origin" of the products that the rival had sold as its own.
  4. Even if it were assumed for the sake of argument that the rival's representation of itself as the producer of the video set amounted to a representation that the rival had originated the creative work conveyed by the video set, allowing a cause of action under § 43(a) for that representation would have created a species of mutant copyright law limiting the public's right to copy and to use works with expired copyrights.

The Court stated that:

Because we conclude that Dastar was the “origin” of the products it sold as its own, respondents cannot prevail on their Lanham Act claim. We thus have no occasion to consider whether the Lanham Act permitted an award of double petitioner's profits. The judgment of the Court of Appeals for the Ninth Circuit is reversed, and the case is remanded for further proceedings consistent with this opinion.”

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