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Redefining the Balance Between Trademark and Copyright Law A Recently Argued Case Asks the Supreme Court to Decide


Tuesday, Apr. 08, 2003

In 1948, General Dwight D. Eisenhower completed his memoirs, Crusade in Europe, which recounted his experiences during World War II. Doubleday, the publisher, secured "all rights of every nature" in the work and obtained the appropriate copyright registrations. Doubleday granted exclusive television rights to Twentieth Century Fox to produce a television series of the same name and based on the book.

When the time came to renew the copyrights, Doubleday renewed the memoirs in its own name as a work for hire; Fox, however, failed to renew its copyright in the television series.

In 1995, Dastar Corporation entered the video market with its first major video project--a World War II compilation. Instead of creating a new video, however, Dastar obtained tapes of the Crusade television series and substituted new opening and chapter-title sequences, credits, music and closing. Dastar otherwise copied the series in its entirety. Dastar deleted all references to the original book and the Fox television series and released the video under the title Campaigns in Europe.

The Rulings of the Courts Below

Fox filed suit for copyright infringement and, under the Lanham Act, for "false designation of origin." Fox complained that Dastar removed the Fox name from the Crusade video and subsequently palmed the video off as its own.

Fox relied on the 1981 Ninth Circuit decision of Smith v. Montoro as the basis for its Lanham Act claim. In Montoro, Paul Smith, an actor, found his "billing" in a movie replaced with that of a fictional actor. Smith complained the switch deprived him of recognition and harmed his ability to sell his acting services in the future. The Ninth Circuit found the switch an "attempt to misappropriate or profit from another's talents and workmanship"--'palming off'--and thus a violation of the Lanham Act.

Similar attempts to deprive the originator of "the goodwill that otherwise would stem from public knowledge of the true source of the satisfactory product"--'reverse palming off'--also constitute violations of the Lanham Act, according to the Ninth Circuit's Montoro decision. Consumers should not be "deprived of knowing the true source of the product" and thus "deceived into believing that it [came] from a different source."

Dastar appealed to the Supreme Court with its petition raising two issues: can "bodily appropriation," without proof of consumer confusion, establish liability under Section 43(a) of the Lanham Act? And, in a question that forms the focus of this discussion, can the Lanham Act extend the term of copyright protection beyond the "limited times" provided by the Copyright Clause and the Copyright Act?

The latter issue arose as copyright protection in the Crusade television series expired when Fox failed to renew its copyright registration. The question thus became whether an assertion of false designation or origin, under the guide of the Lanham Act, can protect a work from copying after its registration and protection expired and it became a part of the public domain.

The Lanham Act Should Not Be Allowed to Extend Expired Copyrights

The Constitution's Copyright Clause allows Congress to grant copyrights "for limited times." Once the government grant of exclusive rights in a copyright expires, the right to copy an expression passes to the public. The underlying work can be used freely as a part of the public domain.

Notwithstanding the expiration of Fox's copyright in the Crusade television series, the district court and Ninth Circuit effectively imposed an eternal, copyright-like obligation on Dastar and anyone else using content from the Crusade series, content in the public domain.

This obligation, under the lower courts' logic, would require creators of derivative works, that is, a work based upon one or more preexisting works, to do two things. First, creators of a derivative work would have to provide attribution to the original creator (here, Fox) to avoid a 'reverse passing off' claim. Second, the Ninth Circuit would require a clear distinction, a disclaimer of sorts, that the second work is not associated with the creator of the first work to avoid a 'passing off' claim.

This obligation would effectively create a partial copyright against derivative works under the cloak of trademark law and without expiration. For these reasons, the United States argued in its amicus curiae ("friend of the court") brief that the Lanham Act "should not be construed in a manner that would establish a generalized duty on the part of producers to credit the original creators of works. Such a construction could overextend the Lanham Act by giving the original creators or works a perpetual trademark right to prevent the uncredited copying of a work."

A Recent Patent Decision Agrees on the Limits of the Lanham Act

The Supreme Court's decision in TrafFix Devices, Inc. v. Marketing Displays, Inc. previously established the impermissibility of this sort of perpetual extension. In TrafFix Devices, the Supreme Court found an attempt to extend the protection of an expired design patent under the label of trade dress (the total image and appearance of a product) and the Lanham Act improper.

The same should hold true of copyrights. As Fox's copyright expired, the Crusade video series should be committed to the public domain without limitations of attribution and disclaimer. Justice O'Connor, preliminarily at least, seemed to concur as she noted during the April 2 oral argument since the Fox series was "in the public domain," Dastar "ha[d] a right to copy it."

Colby B. Springer is an intellectual property attorney with Carr & Ferrell LLP in Palo Alto, CA, and an adjunct professor of law at Santa Clara University School of Law where he teaches international intellectual property law and the Giles Sutherland Rich and Saul Lefkowitz moot courts. He can be reached at

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