Shidler Journal of Law, Commerce & Technology 3 Shidler J. L. Com. & Tech. 15 Volume 3, Issue 4, Spring 2007
Intellectual Property
Cite as: Jared Barrett, Cases in Wake of Dastar v. Twentieth Century Fox Continue to Narrow the Scope of a "Reverse Passing Off" Claim, 3 Shidler J. L. Com. & Tech. 15 (Apr. 6, 2007), at [http://www.lctjournal.washington.edu/Vol3/a015Barrett.html]
Cases in Wake of Dastar v. Twentieth Century Fox Continue to Narrow the Scope of a "Reverse Passing Off" Claim
Jared Barrett
(fn1)(c) 2007 Jared Barrett
Abstract
In 2003, the United States Supreme Court decided Dastar Corp. v. Twentieth Century Fox Film Corp, narrowing the scope of protection under the federal Lanham Act for "reverse passing off." "Reverse passing off" is derived from the statutory language in § 43(a) of the Lanham Act prohibiting a "false designation of origin" that is likely to cause consumer confusion and generally occurs where one company puts forth another company's product as its own. A "reverse passing off" claim was also thought to be feasible against one who misrepresented the source of the creative or communicative work embodied in a product. In Dastar, however, the Court limited the ability to bring a claim of "reverse passing off" by narrowly defining the term "origin," holding that "origin" refers only to the source of the tangible goods and not to the source of any idea, concept or communication embodied in the tangible goods. Following Dastar, several cases have further defined the scope of a "reverse passing off" claim. This Article introduces the concept of "reverse passing off" and then discusses the impact of Dastar and its application in subsequent cases.
Table of Contents
Introduction Reverse Passing Off Reverse Passing Off Prior to Dastar Dastar Corp. v. Twentieth Century Fox Film Corp. Application of Dastar A. Software - General Universal Systems, Inc. v. Lee B. Textbooks - Zyla v. Wadsworth, Div. of Thomson Corp. C. Tables - Bretford Mfg., Inc. v. Smith System Mfg. Corp. Conclusion
Introduction
[1] Prior to the decision in Dastar Corp. v. Twentieth Century Fox Film Corp.(fn2) , an originator of communicative or creative works could bring a claim of "reverse passing off" against those that had included the originator's work in a commercial product without accreditation. In Smith v. Montero, for example, the U.S. Court of Appeals for the Ninth Circuit found that a film actor had a valid claim for "reverse passing off" when a film distributor substituted the original actor's name for another name in the credits and advertising material of a film.(fn3) This ability for the originator of a communicative or creative work to bring a claim of "reverse passing off," however, was foreclosed by the decision in Dastar.
[2] In Dastar, the U.S. Supreme Court held that a plaintiff must show that a misrepresentation or false designation led to confusion as to the origin of the "tangible goods" and not simply confusion as to the origin of any underlying creative work when bringing a valid claim of "reverse passing off."(fn4) For example, an author would be unsuccessful when bringing a "reverse passing off claim" if a company took the author's underlying story, made minor changes and then bound and sold the book under its own label. In this case, there would be no confusion as to the origin of the physical book, because the company is the "origin" of the physical book. As a result, originators of creative works can no longer bring a claim of "reverse passing off" for misattribution, plagiarism or false authorship.(fn5) The particular work at issue in Dastar had fallen into the public domain and therefore it was unclear whether the decision would also apply to works that are still protected under valid copyrights.(fn6) In addition, because the work at issue in Dastar was of a communicative nature, it was unclear whether the decision would also apply to non-communicative works. Subsequent to Dastar, several cases have interpreted the decision to apply both to goods not protected by copyright, as well as to those under valid copyright protection. In addition, courts have applied the bar against a "reverse passing off" claim to non-communicative works. This Article introduces the concept of "reverse passing off" and then discusses how cases in the wake of Dastar have clarified and solidified the narrowing of a "reverse passing off" claim.
Reverse Passing Off
[3] A claim of "reverse passing off" finds its statutory support in § 43(a), 15 U.S.C. § 1125(a), of the federal Lanham Act.(fn7) The Lanham Act generally provides protection for "persons engaged in . . . commerce against unfair competition" and from the "deceptive and misleading use of marks."(fn8) Although the majority of the Lanham Act addresses the use, registration and infringement of trademarks, § 43(a) reaches beyond trademark protection.(fn9) Section 43(a) provides a cause of action against anyone using a "false designation of origin" which is likely to cause consumer confusion "as to the origin" of his or her goods.(fn10)
[4] The most obvious form of "reverse passing off" occurs when a person removes or obliterates the original trademark of another, without authorization, before reselling goods produced by someone else.(fn11) For example, Pepsi would be vulnerable to a claim for "reverse passing off" if it...
