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In a major narrowing of the Lanham Act, the U.S. Supreme Court ruled unanimously in June that the statute allows the copying of public domain material without giving credit to its source. The 8-to-0 ruling, in Dastar Corp. v. 20th Century Fox Film Corp., removes the cloud of Lanham Act liability from companies, libraries, Web sites, and databases that repackage facts or information that originated elsewhere. It could sweep away the lawsuits often filed against major studios and publishers by authors and others who claim they were given insufficient credit for their work. “Reverse Passing Off” In spite of that long-range benefit for studios, the ruling itself was a defeat for Fox, which sued Dastar over its Campaigns in Europe package of videotapes marketed in 1998. The tapes made heavy use of footage from a Fox television series called Crusade in Europe, based on Dwight Eisenhower’s book of the same name. The television series aired in 1949, and the copyright expired in 1977. The Dastar package included a new opening sequence and did not use all the footage from the television series. In its marketing, Dastar made no mention of the series or the Eisenhower book. Fox sued, claiming the Dastar product amounted to “reverse passing off” barred by the Lanham Act. The term refers to misrepresenting someone else’s work as one’s own. Fox won at both the district court and the U.S. Court of Appeals for the Ninth Circuit. One member of the Ninth Circuit panel was U.S. district court judge Charles Breyer, who was sitting by designation on the appeals court. His participation explains why his brother, Supreme Court justice Stephen Breyer, did not participate in the case. Justice Breyer routinely recuses himself from cases ruled on earlier by his brother. Impractical to Credit All Enacted in 1946, the Lanham Act prohibits “false designation of origin” for any good or service, including any action that creates confusion as to the origin of the good. But Justice Antonin Scalia, writing for the Court, said the phrase refers to the good that is being offered for sale � in this case the Dastar package of tapes � not to earlier versions. Scalia said it would be impractical to require publishers to give credit to all the originators of their products. He offered the example of the 1954 movie Carmen Jones, which, strictly speaking, should give credit to Oscar Hammerstein II, who wrote the musical on which it 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 the case before the Court, Scalia added, an overly broad interpretation of the Lanham Act could require that credit go to even the military cameramen who took the wartime footage � not just to Fox for broadcasting the footage. “We do not think the Lanham Act requires this search for the source of the Nile and all its tributaries,” wrote Scalia. Scalia noted that Fox could have protected itself by renewing the copyright, which would have led to “an easy case of copyright infringement” against Dastar. Lingering Doubt Removed “The net effect [of this decision] is very far-reaching,” says Washington, D.C. � based Morrison & Foerster lawyer Jonathan Band, who wrote a brief in the case for the American Library Association and other groups seeking expanded access to the public domain. “There was always this lingering doubt about what the Lanham Act said about copying public domain materials. The Court today said, ‘Don’t worry about it.’ “ In recent years, the Lanham Act had become part of the arsenal of legal weapons used by copyright holders against alleged infringers. The ruling appears to eliminate the Lanham Act’s use in this legal strategy. The ruling, by giving added protection to the public domain, also stands in contrast to January’s Eldred v. Ashcroft ruling, in which the high court said Congress could limit the public domain by substantially extending copyrights. A version of this story originally appeared in Legal Times, a sibling publication of Corporate Counsel and a part of American Lawyer Media.

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