Dastar asks Supreme Court to balance trademark and copyright law

The Supreme Court has heard oral arguments in Dastar Corp v Twentieth Century Fox Film Corp to decide whether trademark law can prevent the copying of public-domain material. The court's decision will have important implications for issues arising from the intersection of copyright and trademark law.

The case arose when Dastar copied substantial portions of a television series Twentieth Century Fox had produced in the late 1940s based on former US President Dwight D Eisenhower's memoirs. Although the copyright in the book was renewed, Fox did not renew its copyright in the television series. Dastar made minor changes to the original series and sold it as its own product.

Fox filed suit in a federal court in California, claiming copyright infringement (based on the underlying book), unfair competition, and reverse passing off under the Lanham Act. The question presented to the court was whether Dastar could use the footage without giving credit to the original producer because the series was in the public domain. The district court (in an unpublished decision) granted summary judgment for Fox on both the copyright infringement and Lanham Act claims, stating that Dastar's actions amounted to "bodily appropriation" of the original series. The Ninth Circuit Court of Appeals remanded the issue of copyright infringement (to determine whether the underlying book was a work for hire), but affirmed the finding that Dastar violated the Lanham Act because its actions constituted reverse passing off - that is, copying "substantially all of the television series" and reselling it without either attributing its production to Fox or acknowledging that significant portions of the Eisenhower book were used (34 Fed Appx 312 (9th Cir 2002)).

The Supreme Court granted certiori and has heard oral arguments to determine whether the Lanham Act protects creative works from uncredited copying, even without a likelihood of consumer confusion.

Dastar cautioned the Supreme Court that if the Ninth Circuit's interpretation of the Lanham Act is upheld, it could give authors indefinite protection against uncredited copying, which is inconsistent with the time limits imposed by US copyright law. Additionally, Dastar argued that consumer confusion, not bodily appropriation, is the appropriate standard for any Lanham Act suit, stating that the 'bodily appropriation' test was borrowed from copyright doctrine and is not applicable to Lanham Act analysis.

In response, Fox argued that this is not a case about copying, but about deception. Fox contends Dastar violated the Lanham Act by intentionally giving the impression that Dastar, not Fox, created the series of tapes. The Lanham Act applies, Fox argued, because the statute is intended to prevent consumer confusion and competitive injury by allowing the public to rely on designations of origin as a guarantee of quality from that source. Fox conceded that public-domain works can be copied, but argued that the combination of bodily appropriation and misattribution constitutes reverse passing off.

Ron N Dreben and Kristin Altoff, Morgan Lewis & Bockius LLP, Washington DC