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When the copyright expires and a work enters the public domain, don’t look to trademark law for a continuing right of attribution. So said the Supreme Court in its June 2 ruling in Dastar Corp. v. Twentieth Century Fox Film Corp. Justice Antonin Scalia, writing for a unanimous Court, interpreted Section 43(a) of the Lanham Act narrowly. He postulated that the public has the right “to copy without attribution, once a copyright has expired.” And he cautioned against the creation of a “species of mutant copyright law” or a federal cause of action in plagiarism. For the publishing and entertainment industries, the Dastardecision raises some intriguing possibilities. TWISTS AND TURNS The case involved a number of parties who, separately or in collaboration, produced and distributed first a book, then a television series and, finally, competing videotape sets. The book was Crusade in Europe,written by Dwight D. Eisenhower. In 1948, Doubleday published the book, registered the copyright, and granted exclusive TV rights to Fox. Fox commissioned Time to produce a TV series based on the book. In 1949, that series was first broadcast. Time assigned its copyright in the series to Fox. In 1975, Doubleday renewed its copyright in the book. Fox did not renew its copyright in the TV series, which expired in 1977. In 1988, Fox reacquired television rights in the book, including the exclusive right to distribute videos. Fox then sublicensed to SFM Entertainment and New Line Home Video the right to produce and distribute a video set. In 1995, Dastar copied the original TV series, removed the credits, repackaged the set, and released it as its own video product — with the credit “Dastar Corp. Presents.” In 1998, Fox, SFM, and New Line filed suit alleging copyright infringement. They later amended their complaint to assert that Dastar’s video set constituted “reverse passing off” in violation of Section 43(a) and state unfair competition law. The court granted Fox’s motion for summary judgment, finding that Dastar had committed a “bodily appropriation” by substantially copying the series and selling it without attribution to Fox, and that Dastar was guilty of reverse passing off and copyright infringement. The U.S. Court of Appeals for the 9th Circuit reversed and remanded on the infringement claim, but affirmed on the passing-off claim. The court found that Dastar had made a “false designation of origin” in violation of trademark law and that the “bodily appropriation” test simply subsumed any need to demonstrate consumer confusion. When the Supreme Court took the case, many Court watchers were surprised. Some theorized that the justices were looking to counterbalance Eldred v. Ashcroft,their Jan. 15 ruling that the Sonny Bono Copyright Term Extension Act is constitutional. Unlike Eldred, Dastaris not a constitutional decision — arguments alleging use of the commerce clause to end-run the copyright clause were ignored — but rather a case of statutory construction. THE INVISIBLE AUTHOR The Dastarholding is less surprising than its rationale. Certain members of the trademark bar had predicted, even hoped for, a decision requiring a finding of actual consumer confusion (as in the Court’s March 4 decision in Moseley v. V Secret Catalogue Inc.). But the Court’s approach was quite different. To interpret Section 43(a), Justice Scalia consulted his trusty dictionary, seeking standard definitions of “goods” and “origin,” and determining that those terms could not be stretched to cover underlying intellectual property or its creators. The Court could have stopped there, but went much further by finding (some say resurrecting) a federal right to copy and use works in the public domain. And then it went even further by negating a right of attribution for works whose copyright has expired. Scalia sought to support his conclusion by asserting that consumers may care who manufactured a product, but don’t care who created it. In all probability, some consumers don’t care about the source of noncopyrightable subject matter, such as data. But surely some, if not most, do wish to know the author’s name when the content is intellectual property. Most of us want to know who wrote the book or took the photo. Scalia did not present a parade of horribles, but he did assert that requiring attribution would be a “search for the source of the Nile.” Yet his example — that the producer of a remake of the film “Carmen Jones” would have to give credit to MGM, Oscar Hammerstein II, Georges Bizet, and Prosper Mérimée — doesn’t seem that onerous. If this is “mutant copyright,” the mutation is very weak. Indeed, a finding that Section 43(a) provided for attribution on works for which the copyright has expired would still allow copying in any medium without obtaining a license or other authorization. And the author would still have no control over how, when, where, why, or for whom copies were produced. The only requirement would be to acknowledge authorship. Dastarfails to recognize that trademark is distinct from copyright, and that a trademark right could exist, in the form of an attribution right, without improperly extending a copyright. WHAT HAPPENS NEXT? The negation of a right of attribution under the Lanham Act raises a significant international concern. In the years before the United States signed on to the Berne Convention, the most important copyright treaty for artistic works, more than lip service was given to the idea that authors’ moral rights were protected by the United States under legal schemes other than copyright. Chief among these, it was argued, was Section 43(a). The United States joined the Berne Convention in 1989 without a change to copyright law, based on an express congressional finding that no change was necessary. Then, when the Visual Artists Rights Act (VARA) was passed in 1990, its narrow protection of moral rights was tolerated because other protections were supposedly available, including state laws against misappropriation and, of course, Section 43(a). Now the Court tells us that the Lanham Act offers little or no moral rights protection and that enactment of VARA implies that the rights of attribution and integrity are not present under other legal schemes. With one or two legs of the stool taken away, will the United States still be compliant with Berne? Or will we be required to re-examine our treaty credentials? For all its careful defining, Dastarleaves us with more than a little uncertainty. First, the case involved “goods.” Would the rule be the same for “services,” assuming that authorship could be deemed a service? Also, Dastarseems only to interpret Section 43(a)(1)(A). Might Section 43(a)(1)(B), which talks about misrepresentation in advertising rather than confusion as to source, still provide some protection? The Court said that Section 43(a) offers no right of attribution. But Dastarwas charged with false attribution. Does the federal right to use public domain works extend that far? If the publisher of Mr. Darcy’s Daughters(a sequel to Pride and Prejudiceby modern author Elizabeth Aston) sold a boxed set of the sequel and the original, apparently it could omit any mention of Jane Austen. But could it actually claim authorship of Pride and Prejudicefor Ms. Aston? Or could, say, Justice Scalia claim authorship of the works of Oliver Wendell Holmes? What is the significance of Dastarfor future database protection? Proposals have suggested a shorter term than standard copyright. Assuming that some works would qualify for protection as both copyrightable subject matter and a database, what will happen to them when the shorter term of database protection expires? Shrink-wrap and click-on licenses have been seen as attempts to end-run copyright law, in that they seek to restrict the use of noncopyrightable material. Might the Dastaropinion cause courts to view enforceability of such licenses less favorably? And might Dastarinfluence judicial decisions on the intersection of other schemes of legal protection, including the overlap between the Digital Millennium Copyright Act and traditional copyright law? Coming near the end of a Supreme Court term rife with high-profile issues, the Dastaropinion received relatively little press. But for lawyers and companies with IP to protect, the ripples of Dastarmay prove very interesting. Janet Fries is a senior attorney and Michael J. Remington is a partner in the D.C. office of Drinker Biddle & Reath. They focus their practices on copyright, trademark, entertainment, and Internet law and legislation. They can be reached at [email protected]and [email protected], respectively. (c) 2003 Janet Fries and Michael J. Remington

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