A crusade in the public domain: the Dastar decision.

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.

I. 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)

II. 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, [section] 43(a) can never be a federal 'codification' of the overall law of 'unfair competition."' (40) Nevertheless, the Court affirmed that the language of [section] 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' embody or contain." (46) According to the Court, a consumer typically does not care about such origination and "does not automatically assume that the brand-name company is the same entity that came up with the idea for the product, or designed the product." (47) Thus, section 43(a) "should not be stretched to cover matters that are typically of no consequence to purchasers." (48)

The Court then turned to Fox's argument that the term "origin" must be interpreted differently when applied to a "communicative product--one that is valued not primarily for its physical qualities, such as a hammer, but for the intellectual content that it conveys, such as a book or ... a video." (49)

   It could be argued, perhaps, that the reality of purchaser concern
   is different for ... a communicative product.... The purchaser
   of a novel is interested not merely, if at all, in the identity of
   the producer of the physical tome (the publisher), but also, and
   indeed primarily, in the identity of the creator of the story it
   conveys (the author). And the author, of course, has at least as
   much interest in avoiding passing-off (or reverse passing-off) of
   his creation as does the publisher. For such a communicative
   product (the argument goes) "origin of goods" in [section] 43(a)
   must be deemed to include not merely the producer of the physical
   item (the publishing house Farrar, Straus and Giroux, or the
   video producer Dastar) but also the creator of the content that
   the physical item conveys (the author Tom Wolfe,
   or--assertedly--respondents). (50)

In essence, Fox was arguing that "origin" should be accorded the meaning of "originality" in the copyright sense. (51) According to the Court, although purchasers do care about ideas or communications contained or embodied in a communicative product such as a video, giving the Lanham Act special application to such products would cause it to conflict with copyright law, which is precisely directed to that subject, and which grants the public the right to copy without attribution once a copyright has expired. (52) The Copyright Act (53) serves the public interest by means of a "carefully crafted bargain." (54) It gives authors a financial incentive to create and share original works of authorship in exchange for a reward of exclusive rights for a limited time. (55) After the limited time has expired, copyright law permits those works to be freely copied and disseminated. (56) Indeed, as the Court noted, this is Congress' intention and expectation. (57)

By contrast, The Lanham Act does not exist to reward originality in authorship. (58) Rather, it "prohibits actions like trademark infringement that deceive consumers and impair a producer's goodwill," (59) "assur[ing] a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product." (60) Allowing an owner of an expired copyright to deploy the Lanham Act to enforce a right of attribution to the work would, the Court explained, "create a species of mutant copyright law that limits the public's federal right to 'copy and to use,' expired copyrights." (61)

Furthermore, Justice Scalia emphasized that recognizing a Lanham Act cause of action in this case would render superfluous the provisions of the Visual Artists Rights Act (62) that grant an author of an artistic work "the right ... to claim authorship," (63) as well as those provisions (64) that specifically limit and focus that right. (65) Similarly, the Court understood that application of section 43(a) of the Lanham Act "to require attribution of uncopyrighted materials would pose serious practical problems." (66)

   A video of the MGM film Carmen Jones, after its copyright has
   expired, would presumably require attribution not just to MGM,
   but to Oscar Hammerstein II (who wrote the musical on which
   the film was based), to Georges Bizet (who wrote the opera on
   which the musical was based), and to Prosper Merimee (who
   wrote the novel on which the opera was based). In many cases,
   figuring out who is in the line of "origin" would be no simple
   task.... We do not think the Lanham Act requires this search
   for the source of the Nile and all its tributaries. (67)

An additional practical dilemma would be posed for a manufacturer of communicative products:

   On the one hand, they would face Lanham Act liability for
   failing to credit the creator of a work on which their lawful
   copies are based; and on the other hand they could face Lanham
   Act liability for crediting the creator if that should be, regarded
   as implying the creator's "sponsorship or approval" (68) of the
   copy. (69)

Finally, Justice Scalia wisely recognized the difficulty posed in reconciling a long line of carefully crafted precedents with a holding in the instant case that recognized a right of attribution in public domain works:

   For example, in Wal-Mart Stores, Inc. v. Samara Brothers, Inc.,
   we ... concluded that the designs could not be protected under
   [section] 43(a) without a showing that they had acquired "secondary
   meaning".... This carefully considered limitation would be
   entirely pointless if the "original" producer could turn around
   and pursue a reverse-passing-off claim under exactly the same
   provision of the Lanham Act.... Similarly ... [section] 43(a) would
   have supported the suit that we rejected in Bonito Boats, where
   the defendants had used molds to duplicate the plaintiff's
   unpatented boat hulls (apparently without crediting the
   plaintiff). And it would have supported the suit we rejected in
   TrafFix, The plaintiff, whose patents on flexible road signs had
   expired, and who could not prevail on a trade-dress claim under
   [section] 43(a) because the features of the signs were functional,
   would have had a reverse-passing-off claim for unattributed copying
   of his design. (70)

Having concluded that Dastar was in fact the "origin" (71) of the goods it had sold as its own, the Court reversed the Ninth Circuit and held that Fox was unable to prevail on its Lanham Act claim and thereby indirectly recapture the copyright that expired in 1977. (72)

III. AT THE INTERSECTION OF COPYRIGHT AND TRADEMARK LAW: THE SIGNIFICANCE FOR THE PUBLIC DOMAIN

The Supreme Court's holding in Dastar was a pragmatic result that avoided a further enclosure of the public domain (73) and reinforced the notion that the public domain is indispensable to future creative endeavor. Had Fox prevailed in regaining through trademark law a proprietary right in Dastar's "Campaigns" video, which was an adaptation of a public domain work due to the expiration of its copyright, Dastar would have faced a classic Hobson's choice. If Dastar failed to acknowledge Fox, it would have engaged in unlawful reverse passing off. On the other hand, if Dastar credited Fox, then Fox could have claimed that consumers had been confused into believing that Fox authorized Dastar's video, allowing Fox to sue for passing off. The Court's holding avoided sentencing authors to this revolving conundrum.

Moreover, the Court understood that creativity does not often spring from a single font. (74) Although Fox claimed to be the true "origin" of the Dastar's videos, Fox's own "involvement with the creation of the television series was limited at best." (75) Indeed, the Court suggested that Time, Inc. "was the principal if not the exclusive creator" (76) and that there were other contributors, including "the United States Army, Navy, and Coast Guard, the British Ministry of Information and War Office, the National Film Board of Canada, and unidentified 'Newsreel Pool Cameramen[,]'" (77) who provided much of the film footage, not to mention the efforts of Dwight Eisenhower, who wrote the book. (78) From a practical standpoint, the Court recognized that over time multiple creators may contribute to the production of a work and "[i]n many cases, figuring out who is in the line of 'origin' would be no simple task." (79)

Likewise, the Court made clear that it continues to favor a strict interpretation of the Lanham Act. (80) The Ninth Circuit's holding was based on liability for reverse passing off under section 43(a) through a standard known as "bodily appropriation." (81) Essentially, bodily appropriation presumed that the work itself serves as indicia of origin, and occurs when one duplicates and markets another's work as his or her own, without proper attribution to the original source. (82) No further proof of consumer confusion is required because "the 'bodily appropriation' test subsumes the less demanding 'consumer confusion' standard." (83) Had the Ninth Circuit's ruling been affirmed, the effect on the Internet could have been devastating. For instance, it is possible to conceive of hyperlinking to another's work as a form of bodily appropriation. (84) The same could possibly be said for the use of frames or thumbnails of another's work. (85) The Lanham Act, however, does not employ the language "bodily appropriation" and instead requires proof of "likelihood of confusion," (86) rather than mere copying, which is the basis for copyright infringement. (87) In applying a strict construction approach, the Court meant to avoid a conflict between trademark and copyright law, and to ensure that section 43(a) does not receive "boundless application as a remedy for unfair trade practices." (88)

As to the implications of the Court's decision for the public domain, the outcome in Dastar apparently stands in contrast to the Court's decision in Eldred v. Ashcroft upholding the constitutionality of the Sonny Bono Copyright Term Extension Act, (89) which extended all copyright terms by 20 years. In Eldred, the Court reinforced copyright owners' rights and, thereby, narrowed the public domain by approving the copyright term extension. (90) By contrast, the Court in Dastar curtailed further extension of those rights by rejecting use of the Lanham Act to expand their control over a work that was in the public domain. (91) Although Eldred and Dastar have surely taken different paths to defining the ambit of the public domain, the decisions can be reconciled by considering them more broadly. The means of rectifying the seeming inconsistencies between the two cases is to consider how the Court views the legislative prerogative in the sphere of intellectual property law.

In affirming in Eldred the constitutionality of the copyright term extension, the Court substantially deferred to Congress by holding that the law was a "rational exercise of the legislative authority conferred by the Copyright Clause" and "reflect[ed] judgments of a kind Congress typically makes." (92) In Dastar, the Court sided with subsequent users of works that had fallen into the public domain because the period of exclusivity had expired. (93) Eldred and Dastar illustrate the Court's willingness to reinforce a copyright owner's exclusive rights--and, thus, hold the public domain at bay--when Congress deemed it advisable to do so, as well as the Court's reluctance to circumscribe the availability of works already in the public domain unless Congress had explicitly acted by expanding the scope of intellectual property protection. (94) In doing so, the Court resisted the invitation to judicially fashion a moral right of attribution from the Lanham Act. (95) As such, both Eldred and Dastar can be read to signal the Court's ongoing deference to Congress in these matters.

What Dastar may portend for the future of the public domain is much less clear. Although the Court in Eldred endorsed Congress' choice to extend the duration of exclusive rights, the Court also cautioned that "copyright law contains built-in First Amendment accommodations" (96) such as the "idea/expression dichotomy [which] strike[s] a definitional balance between the First Amendment and the Copyright Act by permitting the free communication of facts while still protecting an author's expression." (97) The Court added that "[d]ue to this distinction, every ... fact in a copyrighted work becomes instantly available for public exploitation at the moment of publication." (98) Similarly, in its unanimous opinion in Feist Publications, Inc. v. Rural Tel. Serv. Co., (99) the Court rejected the "sweat of the brow" doctrine that conferred copyright protection on the facts contained in compilations by virtue of the effort the publisher expended in collecting the facts. (100) Rather, the Court emphasized that the Constitution protects only the original expression reflected by the selection, coordination, and arrangement of the facts and that the facts themselves remained in the public domain. (101)

Dastar indicates that the Court remains mindful of such Constitutional limitations on copyright, but at the same time, its willingness to defer to Congress indicates that the public domain may be vulnerable to further legislative attempts at enclosure. Increasingly, owners of works not otherwise protected by intangible proprietary rights, as well as owners of expired copyrights and patents, have sought to persuade Congress to extend intellectual property protection or have relied on contract and tort theories to claim exclusive rights from the public domain.

After the Supreme Court held in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., (102) that a Florida statute that created sui generis protection for unpatented boat hull designs was preempted by the Supremacy clause, Congress was successfully lobbied to legislatively reverse the Court by enacting the Vessel Hull Design Protection Act. (103)

In addition to term extension, commercial copyright owners welcomed the passage of the Digital Millenium Copyright Act (DMCA), (104) which added further layers of fortification to their rights. Among other things, the DMCA protects against circumvention of technological measures used by copyright owners to prevent access to their works, and prohibits the manufacture, sale, or distribution of devices used to copy such works without permission. (105)

After the expiration of their utility patents on a dual-spring road sign mechanism, the appellants in TrafFix Devices, Inc. v. Marketing Displays, Inc., attempted to employ trade dress protection to foreclose competitors from copying the device. (106) The Supreme Court found that an expired utility patent creates a strong presumption that the design was functional and unprotectable by trade dress. (107)

In the aftermath of the Feist decision, (108) there have been repeated bills introduced in Congress and supported by database creators that would put in place a federal sui generis database right (109) similar to that promulgated by the European Union. (110) Finally, courts have been increasingly willing to enforce shrink-wrap and click-wrap licenses, (111) or to recognize claims based on trespass to chattels, (112) to effectively extend the scope of control over works not protected by patent or copyright law.

In the end, what Dastar teaches, if nothing else, is that unless a valid intellectual property right, such as a patent or copyright, protects something, it may be freely copied and distributed without attribution. The Lanham Act does not provide a claim for trademark infringement for what is essentially an act of plagiarism. If there is to be a right of attribution, it must be expressly created by Congress. (113) To this extent, at least, the public domain is secure.

(1.) The Quotations Page, Dwight D. Eisenhower, at http://www.quotationspage.com/quotes/Dwight_D._Eisanhower/(last visited Nov. 2, 2003) (on file with the Rutgers Computer and Technology Law Journal).

(2.) See Eldred v. Ashcroft, 537 U.S. 186 (2003) (upholding the Sonny Bono Copyright Term Extension Act, Pub. L. No. 105-298, [section] 102(b), (d), 112 Stat. 2827-2828) (amending 17 U.S.C. [subsections] 302, 304 (1994)).

(3.) See U.S. CONST. art. I, [section] 8, el. 8 (declaring that copyright be granted only "for limited Times").

(4.) 123 S. Ct. 2041 (2003).

(5.) 15 U.S.C. [subsections] 1051-1127 (1994). The purpose of the Lanham Act is to prevent deception and unfair competition. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773 (1992); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163-64 (1995).

(6.) A trademark is "any word, name, symbol, or device, or any combination thereof ... used ... to identify and distinguish ... goods ... from those manufactured or sold by others and to indicate the source of the goods." U.S.C. [section] 1127.

(7.) Id.

(8.) Dastar, 123 S. Ct. at 2049.

(9.) Eldred, 537 U.S. at 206.

(10.) DWIGHT D. EISENHOWER, CRUSADE IN EUROPE (Doubleday 1977) (1948).

(11.) Dastar, 123 S. Ct. at 2044.

(12.) Id.

(13.) Id.

(14.) Id.

(15.) Id.

(16.) Id.

(17.) Id

(18.) Id.

   Dastar's Campaigns series [wa]s slightly more than half as long as
   the original Crusade television series. Dastar substituted a new
   opening sequence, credit page, and final closing for those of the
   Crusade television series; inserted new chapter-title sequences and
   narrated chapter introductions; moved the "recap" in the Crusade
   television series to the beginning and retitled it as a "preview";
   and removed references to and images of the book. Dastar created new
   packaging for its Campaigns series and (as already noted) a new
   title.

Id.

(19.) Id.

(20.) Id.

(21.) Id.

(22.) Id.

(23.) See id.

(24.) Twentieth Century Fox v. Dastar, No. 98-7189, 2000 U.S. Dist. LEXIS 22064, at *6-*7 (C.D. Cal. Nov. 27, 2000), aff'd in part, rev'd in part, vacated in part, and remanded by sub nom. Twentieth Century Fox Film Corp. v. Entm't Distrib., 34 Fed. Appx. 312 (9th Cir. 2002) (unpublished), rev'd sub nom. Dastar, 123 S. Ct. 2041.

(25.) "Passing off ... occurs when a producer misrepresents his own goods or services as someone else's. 'Reverse passing off,' as its name implies, is the opposite: [t]he producer misrepresents someone else's goods or services as his own." Id. at 2045 n. 1 (citation omitted). For instance, reverse passing off would occur if one firm purchased another firm's product and sold it as its own after removing the original firm's trademark. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION [section] 5 (1995), which states:

   One is subject to liability to another ... if, in marketing goods or
   services manufactured, produced, or supplied by the other, the actor
   makes a representation likely to deceive or mislead prospective
   purchasers by causing the mistaken belief that the actor or a third
   person is the manufacturer, producer, or supplier of the goods or
   services if the representation is to the likely commercial detriment
   of the other....

Id.; see also Roberta Rosenthal Kwall, The Attribution Right in the United States: Caught in the Crossfire Between Copyright and Section 43(A), 77 WASH. L. REV. 985, 1003-04 (2002) (reviewing the development of this doctrine); John T. Cross, Giving Credit Where Credit Is Due: Revisiting the Doctrine of Reverse Passing Off in Trademark Law, 72 WASH. L. REV. 709, 766 (1997).

(26.) Id. at 2044-45.

(27.) 15 U.S.C. [section] 1125(a)(1)(A).

(28.) See Twentieth Century Fox, 34 Fed. Appx. at 314.

(29.) Id. at 315. The sum was doubled pursuant to section 35 of the Lanham Act, 15 U.S.C. [section] 1117(a) (1994). See id.

(30.) Id. at 314-15.

(31.) Id. at 314. As to the copyright claim, the court held that the tax treatment Eisenhower sought for his manuscript of the book created triable issues as to whether he intended the book to be a work for hire, and whether Doubleday properly renewed the copyright in 1976. See id.

(32.) Id. In other words, Dastar bodily appropriated the "Crusade" series by "copy[ing] substantially the entire crusade in Europe series" and giving the false impression that the series contains only the work of those listed in the credits even though the television series was produced by Fox and significant portions of the b]ook were used verbatim, Id. at 314-15.

(33.) Id. The Ninth Circuit has long recognized reverse passing off as occurring when "the wrongdoer removes the name or trademark on another party's product and sells that product under a name chosen by the wrongdoer." Lamothe v. Atlantic Recording Corp., 847 F.2d 1403, 1406 (9th Cir. 1988) (citing Smith v. Montoro, 648 F.2d 602, 605 (9th Cir. 1981)).

(34.) Twentieth Century Fox, 34 Fed. Appx. at 314.

(35.) Id. at 315.

(36.) See Dastar, 123 S. Ct. 2041.

(37.) This section of the Lanham Act reads:

   Any person who, on or in connection with any goods or services, or
   any container for goods, uses in commerce any word, term, name,
   symbol, or device, or any combination thereof, or any false
   designation of origin, false or misleading description of fact, or
   false or misleading representation of fact, which--

   (A) is likely to cause confusion, or to cause mistake, or to deceive
   as to the affiliation, connection, or association of such person
   with another person, or as to the origin, sponsorship, or approval
   of his or her goods, services, or commercial activities by another
   person, or

   (B) in commercial advertising or promotion, misrepresents the
   nature, characteristics, qualities, or geographic origin of his or
   her or another person's goods, services, or commercial activities,
   shall be liable in a civil action by any person who believes that he
   or she is or is likely to be damaged by such act.

15 U.S.C. [section] 1125(a)(1) (2000).

(38.) Dastar, 123 S. Ct. at 2049. "Justice Breyer took no part in the consideration or decision of the case." Id.

(39.) Id. at 2045 (citing 15 U.S.C. [section] 1127).

(40.) Id. at 2045.

(41.) See id. at 2046.

(42.) Id.

(43.) Id. at 2046-47.

(44.) Id. at 2047.

(45.) Id. The Court expressly rejected an expansive reading of these terms to connote the actual trademark owner:

   The concept might be stretched ... to include not only the actual
   producer, but also the trademark owner who commissioned or assumed
   responsibility for ("stood behind") production of the physical
   product. But as used in the Lanham Act, the phrase "origin of goods"
   is in our view incapable of connoting the person or entity that
   originated the ideas or communications that "goods" embody or
   contain. Such an extension would not only stretch the text, but it
   would be out of accord with the history and purpose of the Lanham
   Act and inconsistent with precedent.

Id.

(46.) Id. (emphasis added).

(47.) Id.

(48.) Id.

(49.) Id.

(50.) Id. at 2047-48.

(51.) Under the Copyright Act, copyright subsists in "original works of authorship fixed in any tangible medium of expression." 17 U.S.C. [section] 102 (2000) (emphasis added).

(52.) See Dastar, 123 S. Ct. at 2048 (citing Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 230 (1964)).

(53.) 90 Star. 2541 (1976) (current version at 17 U.S.C. [section] 101 (2001)).

(54.) See Dastar, 123 S. Ct. at 2048 (citing Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150-51 (1989)); see also Eldred, 537 U.S. at 212 ("[C]opyright law serves public ends by providing individuals with an incentive to pursue private ones."). For a treatment of copyright protection that is both historical and forward looking, see Paul Geller, Copyright History and the Future: What's Culture Got to Do With It?, 47 J. COPYR. SOC'Y 209 (2000).

(55.) This is a utilitarian justification of copyright protection as a mechanism that maximizes social utility and avoids market failure. See William Landes & Richard Posner, An Economic Analysis of Copyright Law, 18 J. LEG. STUD. 325 (1989). See also Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984) ("The monopoly privileges that Congress may authorize are neither unlimited nor primarily designed to provide a special private benefit. Rather, the limited grant is a means by which an important public purpose may be achieved. It is intended to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired."); Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975) ("The immediate effect of our copyright law is to secure a fair return for an 'author's' creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good.").

(56.) See Dastar, 123 S. Ct. at 2048.

(57.) See id; see also TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29 (2001) ("In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying." Id).

(58.) Dastar, 123 S. Ct. at 2048.

(59.) Id. at 2047.

(60.) Id. at 2048 (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163-164 (1995)).

(61.) Id.

(62.) Id.

(63.) 17 U.S.C. [section] 106A(a)(1) (2000).

(64.) See id. [section] 101 (applies only to specified "work[s] of visual art."); see also [section] 106A(b), (d)(1) (endures only for the author's life), & (e).

(65.) See Dastar, 123 S. Ct. at 2048.

(66.) Id. at 2049.

(67.) Id. The Court illustrated its point by reference to the case at hand:

   Indeed, in the present case it is far from clear that respondents
   have that status.... [I]t was neither Fox nor Time, Inc., that shot
   the film used in the Crusade television series. Rather, that footage
   came from the United States Army, Navy, and Coast Guard, the British
   Ministry of Information and War Office, the National Film Board of
   Canada, and unidentified "Newsreel Pool Cameramen." If anyone has a
   claim to being the original creator of the material used in both the
   Crusade television series and the Campaigns videotapes, it would be
   those groups, rather than Fox.

Id.

(68.) 15 U.S.C. [section] 1125(a)(1)(A)(2000).

(69.) See Dastar, 123 S. Ct. at 2049 (internal citation omitted).

(70.) See id (internal citations omitted) (citing Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 216 (2000) (holding that designs are protected under [section] 43(a) only upon proof of secondary meaning); Bonito Boats, 489 U.S. at 168 (holding state statute prohibiting use of "direct molding process" to duplicate unpatented boat hulls is preempted by federal patent law); TrafFix Devices, 532 U.S. at 32 (holding that there is no trade dress claim under [section] 43(a) where plaintiff's patents on a sign expired and features of the signs are functional).

(71.) See Dastar, 123 S. Ct. at 2049. The Court defined "origin of goods" in the context of the Lanham Act as the "the producer of the tangible goods that are offered for sale." Id.

(72.) See id. The Court had agreed to decide whether doubling the profits was a proper remedy, but given its ruling in favor of Dastar, the Court did not decide that issue. The Court did, however, rule that Fox could pursue Dastar under a separate provision of the Lanham Act that deals with false advertising. See id. Justice Scalia added that "respondents' contention that "Campaigns" infringes Doubleday's copyright in General Eisenhower's book is still a live question on remand." Id. Dastar's appeal also raised the question of whether a plaintiff seeking to prove a Lanham Act violation for uncredited copying has to demonstrate that consumers are likely to be confused. See Twentieth Century Fox, 34 Fed. Appx. at 314. The Court however, chose not address that issue. See Dastar, 123 S. Ct. at 2049.

(73.) For further extension of this metaphor, see James Boyle, The Second Enclosure Movement and the Construction of the Public Domain, 66 LAW & CONTEMP. PROBS. 33 (2003).

(74.) See supra text accompanying note 67.

(75.) Dastar, 123 S. Ct. at 2049.

(76.) Id.

(77.) Id.

(78.) See EISENHOWER, supra note 10. The Court added: "If anyone has a claim to being the original creator of the material used in both the Crusade television series and the Campaigns videotapes, it would be those groups, rather than Fox." Dastar, 123 S. Ct. at 2049.

(79.) Dastar, 123 S. Ct. at 2049.

(80.) Id.

(81.) See supra text accompanying notes 32-33.

(82.) See Cleary v. News Corp., 30 F.3d 1255, 1261 (9th Cir. 1994).

(83.) Twentieth Century Fox, 34 Fed. Appx. at 314. This proposition had led to a conflict with the Second Circuit, which had ruled that reverse passing off may be proved when a plaintiff merely shows "substantial similarity" between the plaintiff's work and the defendant's work; and with three other circuits, which had held that copying of a work of authorship does not in itself establish a Lanham Act violation absent an independent demonstration of consumer confusion. Compare Waldman Publ'g Corp. v. Landoll, Inc., 43 F.3d 775, 784 (2d Cir. 1994) with King v. Ames, 179 F.3d 370, 374 (5th Cir. 1999), Batiste v. Island Records, 179 F.3d 217, 225 (5th Cir. 1999), Murray Hill Publ'ns, Inc. v. ABC Communs., Inc., 264 F.3d 622, 634 (6th Cir. 2001), and Lipscher v. LRP Publ'ns, Inc., 266 F.3d 1305, 1313-14 (11th Cir. 2001).

(84.) See Intellectual Reserve, Inc. v. Utah Lighthouse Ministry, Inc., 19 F. Supp. 2d 1290, 1294 (D. Utah 1999) (linking to a website containing infringing copies held to be contributory copyright infringement).

(85.) See Kelly v. Arriba Soft Corp., 280 F.3d 934, 948 (9th Cir. 2002) (use of thumbnail images of another's work on an Internet search engine results page protected by copyright fair use); Futuredontics Inc. v. Applied Anagramics Inc., 45 U.S.P.Q.2d (BNA) 2005, 2010 (C.D. Cal. 1998) (frame of another's webpage may be an infringing derivative work).

(86.) See 15 U.S.C. [section] 1125(a)(1) (2000). Likelihood of confusion is determined by weighing a variety of factors. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961); AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).

(87.) See 17 U.S.C. [section] 106 (2000).

(88.) Dastar, 123 S. Ct. at 2045 (quoting Alfred Dunhill Ltd. v. Interstate Cigar Co., Inc., 499 F.2d 232, 237 (2d Cir. 1974)).

(89.) Pub. L. No. 105-298, [section] 102(b) & (d), 112 Star. 2827-2828 (1998) (amending 17 U.S.C. [subsections] 302, 304 (1994)).

(90.) Eldred, 537 U.S. at 204.

(91.) Dastar, 123 S. Ct. at 2048.

(92.) Eldred, 537 U.S. at 204.

(93.) See Dastar, 123 S. Ct. at 2048. Cf. Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 120 (1938) (holding that exclusive rights in the name and shape of product expire with the patents).

(94.) See Dastar, 123 S. Ct. at 2048 ("When Congress has wished to create such an addition to the law of copyright, it has done so with much more specificity than the Lanham Act's ambiguous use of 'origin.'").

(95.) See id ("allowing a cause of action under [section] 43(a) for that representation would create a species of mutant copyright law that limits the public's 'federal right to 'copy and to use," expired copyrights.").

(96.) Eldred, 537 U.S. at 219.

(97.) Id. at 789 (quoting Harper & Rowe, Publishers, Inc. v. The Nation Enters., 471 U.S. 539, 556 (1985)).

(98.) Id.

(99.) Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991).

(100.) See id. at 353-54. The Court stated: "Without a doubt, the 'sweat of the brow' doctrine flouted basic copyright principles.... '[S]weat of the brow' courts ... handed out proprietary interests in facts and declared that authors are absolutely precluded from saving time and effort by relying upon the facts contained in prior works." Id. at 354 (citation omitted).

(101.) Id. at 358-61.

(102.) 489 U.S. at 167-68.

(103.) 17 U.S.C. [subsections] 1301-32(Supp. 1998).

(104.) Pub. L. No. 105-304, 112 Stat. 2860 (1998) (codified as amended at 17 U.S.C. [subsections] 1201-05).

(105.) See id. at [section] 1201(a)(1) ("No person shall circumvent a technological measure that effectively controls access to a work protected under [the Digital Millenium Copyright Act]...." Id.).

(106.) TrafFix, 532 U.S. at 30.

(107.) See id. at 29-30. The Court explained:

   A prior patent ... has vital significance in resolving the trade
   dress claim. A utility patent is strong evidence that the features
   therein claimed are functional. If trade dress protection is sought
   for those features the strong evidence of functionality based on the
   previous patent adds great weight to the statutory presumption that
   features are deemed functional until proved otherwise by the party
   seeking trade dress protection. Where the expired patent claimed the
   features in question, one who seeks to establish trade dress
   protection must carry the heavy burden of showing that the feature
   is not functional, for instance by showing that it is merely an
   ornamental, incidental, or arbitrary aspect of the device.

Id.

(108.) See supra text accompanying note 100.

(109.) See, e.g., Database Investment and Intellectual Property Antipiracy Act of 1996, Hearing on H.R. 3531, 104th Cong. (1996) (enacted); Collections of Information Antipiracy Act, Hearing on H.R. 2652, 105th Cong. (1997) (enacted); Collections of Information Antipiracy Act, Hearing on H.R. 354, 106th Cong. (1999) (enacted); Consumer and Investor Access to Information Act, Hearing on 15 H.R. 1858, 106th Cong. (1999) (enacted). See also Jonathan Band & Makoto Kono, The Database Protection Debate in the 106th Congress, 62 OHIO ST. L.J. 869, 871 (2001).

(110.) Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the Legal Protection of Databases, 1996 O.J. (L 77/20).

(111.) See, e.g., Bowers v. Baystate Techs., Inc., 320 F.3d 1316, 1323 (Fed. Cir. 2003); Hill v. Gateway 2000, Inc., 105 F.3d 1147, 1149 (7th Cir. 1997); ProCD, Inc. v. Zeidenberg, 86 F.3d 1447, 1452-55 (7th Cir. 1996).

(112.) See, e.g., eBay, Inc., v. Bidder's Edge, Inc., 100 F. Supp. 2d 1058, 1069-70 (N.D. Cal. 2000); Register.com, Inc. v. Verio, Inc., 126 F. Supp. 2d 238, 248-49 (S.D.N.Y. 2000); Oyster Software Inc., v. Forms Processing, Inc., No. C-00-0724, 2001 WL 1736382 (N.D. Cal. Dec. 6, 2001).

(113.) See supra text accompanying notes 94-95.

KURT M. SAUNDERS, Associate Professor of Business Law, California State University, Northridge. All rights reserved.