Dastar v. Twentieth Century Fox Film

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

Factual Background
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 was left in 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 sub-license 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 produced a video set by purchasing, copying, and editing tapes of the original public-domain version of the television series. The rival company's video set and related advertising made no reference to the original book and television series or to the videotapes that the film corporation had authorized.

The film corporation and the companies that had made and distributed the authorized videotapes brought an action in the United States District Court for the Central District of California 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 § 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.

The District Court granted the plaintiffs summary judgment. The United States Court of Appeals for the Ninth Circuit, in affirming in relevant part, concluded that (1) the rival company had committed a "bodily appropriation" of the television series, and (2) such appropriation was sufficient to establish reverse passing off.

On certiorari, the United States Supreme Court reversed and remanded. In an opinion by Scalia, J., expressing the unanimous view of all participating members of the court, it was held that the plaintiffs could not prevail on a claim under § 43(a), for:

(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 federal right to copy and to use expired copyrights.

Factual Background:

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 sub-license 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.

Factual Background:

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 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.'" 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 sub-license 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.

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 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. 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.

Trial Court Proceedings: 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, and in violation of state unfair-competition law. On cross-motions for summary judgment, the trial court found for respondents on all three counts, treating itsresolution 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 respondents and doubled them pursuant to § 35 of the Lanham Act, to deter future infringing conduct by Dastar.

Appellate Court Proceedings:

The Court of Appeals for the Ninth Circuit affirmed the judgment for respondents 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 appellate 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 appellate court also affirmed the trial court’s award under the Lanham Act of twice Dastar's profits. The Supreme Court granted certiorari.

Supreme Court Proceedings:

The Supreme 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 addresses the registration, use, and infringement of trademarks and related marks, § 43(a), 15 U.S.C. § 1125(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 Supreme Court held that the plaintiffs could not prevail on a claim under § 43(a), for:

(1) The plaintiffs' claim was that Dastar, in marketing and selling the video set as their 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 Dastar had bought some of the plaintiffs' videotapes and merely repackaged them as its own, Dastar's alleged wrongdoing was vastly different.

(3) For purposes of § 43(a), Dastar was the "origin" of the products that they had sold as their 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 federal right to copy and to use expired copyrights. The Supreme 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.”