COPYRIGHT CORNER
November 2003
ORIGIN OF GOODS IN TRADEMARK LAW DOES NOT MEAN CREATOR
If someone uses a public domain work to create another work, does the law mandate that the original author be credited? Or, is a copyrighted work that enters the public domain really free for the taking? In creating a work, if a publisher or producer uses large portions of an existing public domain work, should that publisher or producer not so alert the consumer?
The U.S. Supreme Court answered the first two of these questions in the recently decided case, Dastar Corp. v. Twentieth Century Fox,[1] which examined the intersection of the Copyright Act and the trademark statute, the Lanham Act, for information products.
In 1949 Twentieth Century Fox produced a multi-part television series entitled “Crusade in Europe” based on General Dwight D. Eisenhower’s published campaign memoirs. It registered the copyright in the television series but failed to renew that copyright in 1977, as was required under the 1909 Copyright Act, so the work passed into the public domain. More than 20 years later, Dastar released a set of videos “Campaigns in Europe” which were substantially copied from the earlier Fox television series. The Dastar's video series, which is a little more than half as long as the original Crusade television series, contained a different opening sequence, credit page and final closing than those of the Crusade television series. Additionally, Dastar inserted new chapter-title sequences and narrated chapter introductions and rearranged some of the other items. It also removed references to and images of the Eisenhower memoir.
Dastar listed itself as producer of the videos and made no mention of “Crusade” or Fox on the packaging of the videos or on the screen credits. Fox sued Dastar claiming a violation of the Lanham Act because the substitution of Dastar’s name for that of Fox constituted a reverse passing off of goods as a false designation of origin. Dastar maintained that its designation of itself as the origin of the physical video product was entirely accurate, but both the federal district court and the 9th Circuit U.S. Court of Appeals agreed with Fox.
The U.S. Supreme Court opinion focuses on the difference in the meaning of the term “originality” in copyright law and “origin of the goods” in trademark law. In copyright, originality refers to the person or group who actually created the work, i.e., whose creative endeavor brought the work to fruition. This might be the producer of a motion picture, the author of a novel or the developer of software. The Copyright Act states that a work is eligible for copyright protection if it is an original work that is fixed in tangible medium of expression. The statutory language means that the creator of the work did not copy it from someone else. Clearly, had the Fox television series still been protected by copyright, Dastar would have infringed the copyright since it copied substantial portions of Fox’s “Crusade in Europe.” Because the copyright had expired, however, the work was in the public domain and Dastar was free to copy the work and not required to credit Fox as the creator of the original video series.
So, there was no copyright cause of action it could pursue, thus Fox claimed reverse passing off and sued under section 43(a) of the Lanham Act which deals with false description of goods, false designation of origin and dilution of trademarks. The common law cause of action on which this section of the Lanham Act is based is called passing off or palming off of goods which occurs when a producer misrepresents his or her own goods or services as those of another producer. "Reverse passing off," as its name implies, is the opposite: the producer misrepresents someone else's goods or services as his or her own. The claim was that Dastar was guilty of false designation of origin since it was not the original creator of the work. The Supreme Court held that under the Lanham Act, origin of the goods means who placed the goods, i.e., the tangible video product into the stream of commerce, not who created the work in the copyright sense. Therefore, Dastar was the originator of the goods and there was no false designation of origin. The Court analogized the situation to that of a consumer who buys a branded product who does not automatically assume that the brand-name company is the same entity that came up with the original idea for the product or designed it.
The Court acknowledged that when the product was a “communicative product” such as a book or video series, there might be somewhat different purchaser concerns since the purchaser of a copy of a novel is not so much interested in who published the work but in who actually wrote it. The problem with this argument, however, is that it would cause the trademark law to conflict with copyright law. The right to copy without attribution once a copyright has expired is precisely what passes to the public when copyright protection terminates.
The trademark statute has common law foundations that were not designed to protect originality or creativity. Instead, it was aimed at identifying the producer of the goods that are offered for sale, and not the author of any idea, concept or communication embodied in those goods.
This case has particular relevance for librarians who may be misled to purchase a work not realizing that it was based wholly or substantially on a public domain work. Many librarians would also consider the practice to be unethical and misleading. Dastar holds that under neither copyright nor trademark law is the producer of this new work required to cite the original work as the sources for the material. Would it not have been more ethical to do so? Certainly, especially in the world of serious research and scholarship where it would be unconscionable to publish such a work without crediting the earlier work from the public domain.