Dastar Corp. v. Twentieth Century Fox Film Corp.
Supreme Court of the United States
Argued April 2, 2003 Decided June 2, 2003
Full case name: Dastar Corporation, Petitioner v. Twentieth Century Fox Film Corporation, et al. Citations: 539 U.S. 23; 123 S. Ct. 2041; 156 L. Ed. 2d 18; 2003 U.S. LEXIS 4276; 71 U.S.L.W. 4415; 66 U.S.P.Q.2D (BNA) 1641; Copy. L. Rep. (CCH) P28,622; 194 A.L.R. Fed. 731; 2003 Cal. Daily Op. Service 4554; 2003 Daily Journal DAR 5799; 16 Fla. L. Weekly Fed. S 330 Prior history: Judgment for plaintiffs, 2000 U.S. Dist. LEXIS 22064 (C.D. Cal. Nov. 27, 2000); affirmed in part, sub nom. Twentieth Century Fox Film Corp. v. Entertainment Distributing, 34 Fed. Appx. 312 (9th Cir. 2002); cert. granted, sub nom. Dastar Corp. v. Twentieth Century Fox Film Corp., 537 U.S. 1099 (2003) Subsequent history: Judgment for plaintiffs, 2003 U.S. Dist. LEXIS 21194 (C.D. Cal. Oct. 14, 2003); affirmed, sub nom. Twentieth Century Fox Film Corp. v. Entertainment Distributing, 429 F.3d 869 (9th Cir. 2005)
Holding
A former copyright holder could not bring a Lanham Act claim for false designation of origin against a subsequent distributor who labelled itself the "producer" rather than the work's original author, because "origin" under the Lanham Act refers only to the origin of the physical goods rather than the intangible ideas contained therein. Ninth Circuit Court of Appeals reversed and remanded.
Court membership
Chief Justice: William Rehnquist Associate Justices: John Paul Stevens, Sandra Day O'Connor, Antonin Scalia, Anthony Kennedy, David Souter, Clarence Thomas, Ruth Bader Ginsburg, Stephen Breyer
Case opinions
Majority by: Scalia Joined by: Rehnquist, Stevens, O'Connor, Souter, Thomas, Kennedy, Ginsburg Breyer took no part in the consideration or decision of the case.
Laws applied
15 U.S.C. § 1125(a) (Lanham Act § 43(a))

Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003)^[1], was a copyright and trademark lawsuit between two videotape production companies, filed in 1998; and which was appealed to the U.S. Supreme Court which rendered an 8-0 verdict on 2 June 2003. Image File history File links Seal_of_the_United_States_Supreme_Court. ... Federal courts Supreme Court Circuit Courts of Appeal District Courts Elections Presidential elections Midterm elections Political Parties Democratic Republican Third parties State & Local government Governors Legislatures (List) State Courts Local Government Other countries Atlas  US Government Portal      The Supreme Court of the United States (sometimes colloquially referred to by the... The Federal Appendix is a case law reporter published by West Publishing. ... William Hubbs Rehnquist (October 1, 1924 – September 3, 2005) was an American lawyer, jurist, and a political figure who served as an Associate Justice on the Supreme Court of the United States and later as the Chief Justice of the United States. ... John Paul Stevens (born April 20, 1920) is currently the most senior Associate Justice of the Supreme Court of the United States. ... Sandra Day OConnor (born March 26, 1930) is an American jurist who served as the first female Associate Justice of the Supreme Court of the United States from 1981 to 2006. ... Antonin Gregory Scalia (born March 11, 1936[1]) is an American jurist and the second most senior Associate Justice of the Supreme Court of the United States. ... This article is about the Associate Justice of the U.S. Supreme Court. ... David Hackett Souter (born September 17, 1939) has been an Associate Justice of the Supreme Court of the United States since 1990. ... Clarence Thomas (born June 23, 1948) is an American jurist and has been an Associate Justice of the Supreme Court of the United States since 1991. ... Ruth Joan Bader Ginsburg (born March 15, 1933, Brooklyn, New York) is an Associate Justice on the U.S. Supreme Court. ... Stephen Gerald Breyer (born August 15, 1938) is an American attorney, political figure, and jurist. ... The United States Code (U.S.C.) is a compilation and codification of the general and permanent federal law of the United States. ... The Lanham (Trademark) Act (title 15, chapter 22 of the United States Code) is a piece of legislation that contains the federal statutes of trademark law in the United States. ... // The United States Reports, the official reporter of the Supreme Court of the United States Case citation is the system used in many countries to identify the decisions in past court cases, either in special series of books called reporters or law reports, or in a neutral form which will... Year 2003 (MMIII) was a common year starting on Wednesday of the Gregorian calendar. ... Not to be confused with copywriting. ... “(TM)” redirects here. ... The Supreme Court Building, Washington, D.C. The Supreme Court Building, Washington, D.C., (large image) The Supreme Court of the United States, located in Washington, D.C., is the highest court (see supreme court) in the United States; that is, it has ultimate judicial authority within the United States... is the 153rd day of the year (154th in leap years) in the Gregorian calendar. ... Year 2003 (MMIII) was a common year starting on Wednesday of the Gregorian calendar. ...

In 1948, Fox obtained the exclusive rights to create a television series called Crusade in Europe, based on the 1948 book written by Dwight D. Eisenhower and published by Doubleday. The 26-episode series showed World War II film footage from the US military and other sources, with a voice soundtrack based on a narration of the book. In 1975, Doubleday renewed the copyright on the book. Fox, however, did not renew the copyright on the TV series, so the show entered the public domain in 1977. Year 1948 (MCMXLVIII) was a leap year starting on Thursday (link will display the 1948 calendar) of the Gregorian calendar. ... Related articles FOX Television Network Fox Searchlight Pictures Fox Entertainment Group List of Hollywood movie studios List of movies Variant of current 20th Century Fox logo External links 20th Century Fox Movies official site Twentieth Century Fox is also the punning title of a song by The Doors on their... Dwight David Eisenhower, born David Dwight Eisenhower (October 14, 1890 – March 28, 1969), nicknamed Ike, was a five-star General in the United States Army and U.S. politician, who served as the thirty-fourth President of the United States (1953–1961). ... Doubleday is one of the largest book publishing companies in the world. ... Combatants Allied powers: China France Great Britain Soviet Union United States and others Axis powers: Germany Italy Japan and others Commanders Chiang Kai-shek Charles de Gaulle Winston Churchill Joseph Stalin Franklin Roosevelt Adolf Hitler Benito Mussolini Hideki Tōjō Casualties Military dead: 17,000,000 Civilian dead: 33,000... The public domain comprises the body of all creative works and other knowledge—writing, artwork, music, science, inventions, and others—in which no person or organization has any proprietary interest. ...

In 1988, Fox reacquired the television rights to the book, and licensed to other companies the right to distribute Crusade in Europe on video. Then in 1995, Dastar purchased Betacam videotapes of the original TV series, copied the tapes, edited them to about half the original length, created new packaging, and sold the TV series as World War II Campaigns in Europe. The new videotapes and advertising mentioned Dastar and its employees as the producers, and did not mention the original Crusade in Europe book, TV series, or producers. Sony Betacam-SP VTP BVW-65 Betacam and VHS size comparison Betacam SP L (top), Betacam SP S (left), VHS (right) The early form of Betacam tapes are interchangeable with Betamax, though the recordings are not. ...

Fox sued in 1998, claiming that Dastar had infringed the copyright to the Crusade in Europe book, and that, under the Lanham Act, it had illegally done a "reverse passing off", passing off the work of others as its own work. The district court found for Fox and awarded it double the profits that Dastar had made. The Court of Appeals reversed the copyright claim and sent it back to the district court on remand, but upheld the "reverse passing off"/Lanham Act ruling, and affirmed the award of double the profits. The Lanham (Trademark) Act (title 15, chapter 22 of the United States Code) is a piece of legislation that contains the federal statutes of trademark law in the United States. ... Passing off is a common law tort which can be used to enforce unregistered trademark rights. ...

The U.S. Supreme Court, ruling only on the "reverse passing off" claim, reversed the decisions of the appeals court and district court, ruling 8-0 in favor of Dastar. The Court reasoned that although the Lanham Act forbids a reverse passing off, this rule regarding the misuse of trademarks is trumped by the fact that once a copyrighted work (or, for that matter, a patented invention) passes into the public domain, anyone in the public may do anything they want with the work, with or without attribution to the author. Federal courts Supreme Court Circuit Courts of Appeal District Courts Elections Presidential elections Midterm elections Political Parties Democratic Republican Third parties State & Local government Governors Legislatures (List) State Courts Local Government Other countries Atlas  US Government Portal      The Supreme Court of the United States (sometimes colloquially referred to by the... “(TM)” redirects here. ... Not to be confused with copywriting. ... For other uses, see Patent (disambiguation). ... The public domain comprises the body of all creative works and other knowledge—writing, artwork, music, science, inventions, and others—in which no person or organization has any proprietary interest. ...

Justice Antonin Scalia, writing in the decision, noted that the Court has said in the past that the Lanham Act "does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity," and that, therefore, claims about authorship cannot be used as an end-run around the underlying philosophy of a time limit on exclusive ownership of a copyright or patent. Allowing such restrictions on a public domain work would, Scalia wrote, "create a species of mutant copyright law that limits the public's 'federal right to "copy and to use"' expired copyrights," and would effectively create "a species of perpetual patent and copyright, which Congress may not do" according to Article One of the United States Constitution. Antonin Gregory Scalia (born March 11, 1936[1]) is an American jurist and the second most senior Associate Justice of the Supreme Court of the United States. ... Wikisource has original text related to this article: Article One of the United States Constitution Article One of the United States Constitution describes the powers of the legislative branch of the United States government, known as Congress, which includes the House of Representatives and the Senate. ...

Scalia noted that if Dastar had instead purchased the post-1988 videotapes and copied them, this would have been a clear copyright infringement.

Analysis

This decision strengthened the rights of those who wish to make use of works that have passed into the public domain. If this lawsuit had been decided the other way, claims based on trademark, or even based on moral rights such as attribution of authorship, could have been used to make it impractical for anyone to use works in the public domain as intended by Article One of the United States Constitution. “(TM)” redirects here. ... Moral rights are rights of creators of copyrighted works generally recognized in civil law jurisdictions and first recognized in France and Germany, before they were included in the Berne Convention for the Protection of Literary and Artistic Works in 1928. ... Wikisource has original text related to this article: Article One of the United States Constitution Article One of the United States Constitution describes the powers of the legislative branch of the United States government, known as Congress, which includes the House of Representatives and the Senate. ...

Dastar may have been able to avoid this legal attack entirely if they had credited the original authors. However, as Scalia noted in the opinion, this would have put them in a bind: crediting the original authors might have implied their sponsorship or approval, which could have exposed Dastar to other lawsuits, unless the credit had been carefully worded.

Congress has repeatedly extended the term of U.S. copyrights, with legislation such as the Sonny Bono Copyright Term Extension Act. Because of this, no copyrighted works are currently passing into the public domain as long as they were still in copyright in 1998. The Dastar case will therefore be unable to have an effect on the use of any works under copyright as of 2006, unless Congress allows copyrights to begin to expire again in 2019. The Sonny Bono Copyright Term Extension Act of 1998 extended copyright terms in the United States by 20 years. ...

Subsequent History

On remand the district court, per the Supreme Court's ruling, dismissed Twentieth Century Fox's Lanham Act claims as well as analogous California state law unfair competition claims.^[2] The only remaining issue was whether the plaintiffs had a copyright in the underlying work, Eisenhower's book Crusade in Europe. The district court held a bench trial and determined that the plaintiffs did own a valid copyright and that Dastar did infringe that copyright by including portions of the book's narrative in its film version.^[3] Dastar appealed, but the Ninth Circuit affirmed.^[4]

See also

• List of leading legal cases in copyright law
• List of United States Supreme Court cases, volume 539

The following is a list of cases that deal with issues of concern to copyright in various jurisdictions. ... This is a list of all the United States Supreme Court cases from volume 539 of the United States Reports: , Dastar Corp. ...

References

1. ^ 539 U.S. 23 (Full text of the decision courtesy of Findlaw.com)
2. ^ Twentieth Century Fox Film Corp. v. Entertainment Distributing, 429 F.3d 869, 875 (9th Cir. 2005).
3. ^ Id.
4. ^ Id. at 876.