A crusade in the public domain: the Dastar decision.

• Author: Saunders, Kurt M.

Things are more like they are now than they ever were before.--Dwight D. Eisenhower (1)

Though the term of copyright protection has been constitutionally extended again and again by Congress, (2) when a copyright finally does expire, the work passes into the public domain and belongs to all of us. (3) Nevertheless, it was at the crossroads of copyright and trademark law that certainty of this longstanding principle became unclear. Keeping works that were already in the public domain free from former copyright owners who would use trademark law to extend their hold on those works indefinitely proved to be a challenge. Recently, however, the battle to defend the public domain from permanent capture has met with some success. According to the United States Supreme Court in Dastar Corp. v. Twentieth Century Fox Film Corp., (4) the Lanham Act, (5) which governs trademarks and commercial advertising, does not protect creative works in the public domain from uncredited copying under the guise of trademark law. (6)

The essence of the Court's holding in Dastar was that the phrase "origin" of "goods" as used in section 43(a) of the Lanham Act (7) refers to the producer of the tangible goods that are offered for sale, and not to the author of an idea or communication embodied in those goods. (8) There is no federal moral right of attribution that persists even after a previously copyrighted work has entered the public domain. The proper type of protection to ensure an author's exclusive rights is copyright law, and the right to copy and distribute a work without attribution passes to the public upon its expiration. Following the Supreme Court's recent decision in Eldred v. Ashcroft, (9) which upheld the latest 20-year extension of the copyright term, Dastar is a most welcome articulation of the Court's faith in the public domain. Moreover, in Eldred and Dastar, the Court has sought to strike a balance between the rights of copyright owners and the rights of the public to use and adapt works whose copyrights have expired and are therefore in the public domain.

In this essay, I begin with a review of the factual and procedural background of the Dastar litigation, followed by an analysis of the Supreme Court's decision and rationale. Finally, I assess the significance and implications of the Court's holding for intellectual property rights holders and, more broadly, for the public domain.

1. BODILY APPROPRIATION: THE PRELUDE TO CERTIORARI

   The dispute in Dastar has its roots in World War II. In 1948, former President Dwight D. Eisenhower completed a book entitled Crusade in Europe, (10) which was his first-hand account of the Allied campaign in Europe during the Second World War. (11) He sold all rights to the book to Doubleday, which then published the book, registered the copyright on it within 1948, and granted exclusive television rights to an affiliate of Twentieth Century Fox Film Corporation. Fox then arranged for Time, Inc. to produce a television series based on the book, also entitled "Crusade in Europe." Time, in turn, assigned its copyright in the series to Fox. The television series, consisting of 26 half-hour episodes, was initially broadcast in 1949. (12) It combined a soundtrack of Eisenhower's narration based on the book with vintage film footage as a means of recounting Eisenhower's personal experiences during the war. (13)

   In 1975, Doubleday renewed the copyright on the book, but did not renew the copyright on the "Crusade" television series, which expired in 1977, allowing the television series to fall into the public domain. (14) In 1988, Fox reacquired the television rights in Eisenhower's book, including the exclusive right to distribute the "Crusade" television series on video and to sublicense others to do the same. (15) 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 then distributed the videotapes. (16)

   Meanwhile, Dastar Corporation made a decision in 1995 to expand its product line from music compact discs to videos. (17) In anticipation of renewed interest in World War II on the fiftieth anniversary of the war's end, Dastar purchased a copy of the "Crusade" series, copied it to videotape, made minor revisions to it, and then released a video set entitled "World War II Campaigns in Europe." (18) Dastar manufactured and sold the "Campaigns" video set as its own product. Its advertising stated: "'Produced and Distributed by: Entertainment Distributing', (which is owned by Dastar), and ma[de] no reference to the Crusade television series." (19) Likewise, the screen credits read "DASTAR CORP presents" and "an ENTERTAINMENT DISTRIBUTING Production," and listed employees of Dastar as executive producer, producer, and associate producer. (20) Similarly, "[t]he 'Campaigns' videos themselves ... ma[de] no reference to the "Crusade" television series, New Line's Crusade videotapes, or the book." (21) Dastar sold its "Campaigns" videos to various retailers and mail-order companies for $25 per set, which was substantially less than New Line's video set, and the videos proved to be one of Dastar's biggest selling products. (22)

   Dastar assumed that because the TV series was now part of the public domain, the videos created from that series were also in the public domain. (23) Fox sent cease and desist letters to Dastar after discovering what Dastar was up to, but the distribution of "Campaigns" continued. (24)

   Consequently, in 1998, Fox filed suit against Dastar in federal district court in California, alleging copyright infringement, unfair competition, and reverse passing off (25) under the Lanham Act. (26)

   The Lanham Act prohibits

   false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which ... is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation ... or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person. (27) On cross-motions for summary judgment, the district court sided with Fox, finding that Dastar had engaged in bodily appropriating the "Crusade" series and falsely identifying themselves as producers of "Campaigns." (28) The court awarded Dastar's profits to the respondents and doubled them to deter future infringing conduct by petitioner. (29)

   The Court of Appeals for the Ninth Circuit unanimously affirmed the judgment for Dastar and the other respondents on the Lanham Act claim, (30) but reversed and remanded as to the copyright claim. (31) Regarding the Lanham Act claim, the Ninth Circuit explained 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." (32) The court rejected Dastar's contention that Fox should have to demonstrate that the "Campaigns" series caused consumer confusion and concluded that "Dastar's 'bodily appropriation' of Fox's original [television] series is sufficient to establish the reverse passing off" (33) under the Lanham Act. (34) The court also affirmed the district court's award under the Lanham Act of twice Dastar's profits. (35) Dastar then appealed to the Supreme Court, which granted certiorari. (36)

2. ORIGIN VERSUS ORIGINALITY: THE DECISION AND ITS JUSTIFICATION

   In a unanimous ruling authored by Justice Scalia, the Court held that section 43(a) of the Lanham Act (37) does not prevent the uncredited copying of an uncopyrighted work. (38) The Court began its analysis by reviewing the purpose and scope of section 43(a) of the Lanham Act, which "was intended to make 'actionable the deceptive and misleading use of marks,' and 'to protect persons engaged in ... commerce against unfair competition.'" (39) However, the Court cautioned that "[b]ecause of its inherently limited wording, § 43(a) can never be a federal 'codification' of the overall law of 'unfair competition."' (40) Nevertheless, the Court affirmed that the language of § 43(a) is broad enough to encompass the act of reverse passing off. (41)

   Next, the Court observed that Fox's claim that Dastar engaged in reverse passing off by making a false designation of origin of its goods in violation of the Lanham Act "would undoubtedly be sustained if Dastar had bought some of New Line's Crusade videotapes and merely repackaged them as its own." (42) However, what Dastar did was completely different. Instead,

   it took a creative work in the public domain, ... copied it, made modifications (arguably minor), and produced its very own series of videotapes. If "origin" refers only to the manufacturer or producer of the physical "goods" that are made available to the public (in this case the videotapes), Dastar was the origin. If, however, "origin" includes the creator of the underlying work that Dastar copied, then someone else (perhaps Fox) was the origin of Dastar's product. (43) As such, the Court instructed that it was ultimately necessary to decide what section 43(a)(1)(A) meant by "origin" of "goods." (44)

   In examining the plain meaning of these terms, Justice Scalia pointed to their dictionary definitions, which affirmed that "the most natural understanding of the 'origin' of 'goods'--the source of wares--is the producer of the tangible product sold in the marketplace," (45) here Dastar's "Campaigns" videotape. The phrase, as used in the Lanham Act, is "incapable of connoting the person or entity that originated the ideas that 'goods'...