''Dastar Corp. v. Twentieth Century Fox Film Corp.'', 539 U.S. 23 (2003), was a

copyright A copyright is a type of intellectual property that gives its owner the exclusive right to copy, distribute, adapt, display, and perform a creative work, usually for a limited time. The creative work may be in a literary, artistic, education ...

and

trademark A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others ...

case of the

Supreme Court of the United States The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. federal court cases, and over state court cases that involve a point o ...

involving the applicability of the Lanham Act to a work in the

public domain The public domain (PD) consists of all the creative work A creative work is a manifestation of creative effort including fine artwork (sculpture, paintings, drawing, sketching, performance art), dance, writing (literature), filmmaking, ...

Background

In 1948,

Fox Foxes are small to medium-sized, omnivorous mammals belonging to several genera of the family Canidae. They have a flattened skull, upright, triangular ears, a pointed, slightly upturned snout, and a long bushy tail (or ''brush''). Twelve sp ...

obtained the exclusive rights to create a television series, ''Crusade in Europe'', based on a 1948 book '' Crusade in Europe'', written by

Dwight Eisenhower Dwight David "Ike" Eisenhower (born David Dwight Eisenhower; ; October 14, 1890 – March 28, 1969) was an American military officer and statesman who served as the 34th president of the United States from 1953 to 1961. During World War II, ...

and published by Doubleday. The 26-episode series showed

World War II World War II or the Second World War, often abbreviated as WWII or WW2, was a world war that lasted from 1939 to 1945. It involved the vast majority of the world's countries—including all of the great powers—forming two opposin ...

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 and so the show entered the

in 1977. In 1988, Fox reacquired the television rights to the book and licensed it to other companies the right to distribute ''Crusade in Europe'' on video. 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 producer but did not mention the original ''Crusade in Europe'' book, TV series, or producers. Fox sued in 1998 by 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 is a common law tort which can be used to enforce unregistered trade mark rights. The tort of passing off protects the goodwill of a trader from misrepresentation. The law of passing off prevents one trader from misrepresenting go ...

" by 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 it upheld the "reverse passing off" Lanham Act ruling and affirmed the award of double the profits.

Decision

The

U.S. Supreme Court The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. federal court cases, and over state court cases that involve a point o ...

, 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, the rule regarding the misuse of

s is trumped by the fact that once a

ed work (or even a

patent A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...

ed invention) enters into the

, anyone in the public may do anything with the work, with or without attribution to the author. Justice

Antonin Scalia Antonin Gregory Scalia (; March 11, 1936 – February 13, 2016) was an American jurist who served as an associate justice of the Supreme Court of the United States from 1986 until his death in 2016. He was described as the intellectu ...

, writing in the decision, noted that the Court in the past has held 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." 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 serve, Scalia wrote, "to create a species of mutant copyright law that limits the public's 'federal right to "copy and to use"' expired copyrights," and that would effectively create "a species of perpetual patent and copyright, which Congress may not do," according to

Article I Article One may refer to: Legal codes * Article One of the United States Constitution, pertaining to the powers of the United States Congress * Article One of the Constitution of India, pertaining to the federal nature of the republic Other us ...

of the

US Constitution The Constitution of the United States is the supreme law of the United States of America. It superseded the Articles of Confederation, the nation's first constitution, in 1789. Originally comprising seven articles, it delineates the nation ...

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

Analysis

In reconciling this case with the earlier ''

Eldred v. Ashcroft ''Eldred v. Ashcroft'', 537 U.S. 186 (2003), was a decision by the Supreme Court of the United States upholding the constitutionality of the 1998 Sonny Bono Copyright Term Extension Act (CTEA). The practical result of this was to prevent a number ...

'', Kurt M. Saunders considered ''Dastar'' a reassurance from the Supreme Court that, although ''Eldred'' said Congress was free to extend copyright durations, a work outside of copyright was free to use.

Subsequent history

On remand, the district court, after the Supreme Court's ruling, dismissed Twentieth Century Fox's Lanham Act claims as well as analogous California state law unfair competition claims. 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 owned a valid copyright in the book and that Dastar had infringed that copyright by including portions of the book's narrative in its film version. Dastar appealed, but the Ninth Circuit affirmed.''Twentieth Century Fox Film Corp. v. Entertainment Distributing'', 429 F.3d at 876.

References

External links