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Dastar, [FOOTNOTE 1]with no dissents and an opinion by Justice Antonin Scalia, is a celebrated U.S. Supreme Court Lanham Act case that has produced so far more than 50 law review comments, and is mentioned in about 15 treatises. The effect is to curtail “moral rights” that scholars thought the U.S. had at the time in 1989 when the U.S. joined the Berne Convention, the premier international copyright convention. In my conclusion, I will explore briefly the underlying bases for “moral rights.” And a brief history is necessary to understand the implications of Dastarand its aftermath. BACKGROUND The Berne Convention’s philosophy is that formalities, such as notice and registration, are not necessary to achieve copyright protection. [FOOTNOTE 2]In addition, the Berne Convention requires “moral rights” [FOOTNOTE 3]of integrity and paternity. The paternity right is the right of the author to have the work attributed to himself or herself and the integrity right is the right of the author to prevent distortion or mutilation of work. We joined Berne on March 1, 1989. Congress had amended Title 17 to bring U.S. law, as to formalities, into conformity with Berne. But what about moral rights? At the time of adherence, did the United States protect moral rights? It was not until 1991 that the United States passed a narrow federal moral rights protection for visual artists. [FOOTNOTE 4]But what about “moral rights” protection in 1989? The Author’s League, at the urging of the State Department, had formed an ad hoc working group on U.S. adherence to the Berne Convention. The report [FOOTNOTE 5]of the working group thought that U.S. law was adequate for compliance with Article 6 bis, Berne’s moral rights provision. The report relied on scholarship which cited the Lanham Act (the federal trademark act), the Copyright Act and state common-law principles as providing sufficient moral rights protection. At the time, other Berne countries, notably Great Britain and Australia, had skimpy moral rights protection. [FOOTNOTE 6]More importantly, comfort was given to the U.S. position to exclude moral rights from Berne adherence legislation by Dr. Arpad Bogsch, director general of the World Intellectual Property Organisation (WIPO), and the result of a round table discussion in Geneva. [FOOTNOTE 7]Members of Berne were happy that the United States was joining at last. And to prevent any future moral rights claims, the Copyright Act specified that the Berne Convention was not self-executing and that our obligation to Berne can only be performed under explicit U.S. law. [FOOTNOTE 8] The conclusion of the ad hoc working group seemed sound from 1989 until Dastar.U.S. courts, working with the Lanham Act, did provide some moral rights protection. ‘DASTAR’ The sister disciplines of copyright, patent and trademarks are intended to deal with different subject matters: literary expression, functional features of products and processes and words and symbols used to distinguish one business from another. But then litigants and courts discovered �43(a) of the Lanham Act, which was an oddity because it did not deal with registered trademarks. It had evolved into something akin to a federal law of unfair competition and, most importantly, was an important adjunct to copyright. To some, �43(a) provided overprotection. As an example, the interplay of copyright and trademark in connection with characters: if copyright protection had expired, can you utilize public domain depictions of characters without the authorization of those who own trademark rights relating to such characters? [FOOTNOTE 9] Justice Scalia in Dastarstrengthened the distinction between copyright and trademark. Plaintiff had claimed that the uncredited use of public domain content was “reverse passing off” in violation of �43(a) of the Lanham Act. The breadth of �43(a) and prior court decisions appeared to accommodate such a claim. Section 43(a) provided a backdoor approach to moral rights by creating an attribution right. Until Dastar. Justice Scalia wrote: ” … 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 … “Thus, in construing the Lanham Act, we have been ‘careful to caution against misuse or over-extension’ of trademark and related protections into areas traditionally occupied by patent or copyright … ” … Assuming for the sake of argument that Dastar’srepresentation of itself as the ‘Producer’ of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under �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, Bonito Boats,supra, at 165 … ” … To hold otherwise would be akin to finding that �43(a) created a species of perpetual patent and copyright, which Congress may not do. See Eldred v. Ashcroft,537 US 186, 208 (2003).” THE AFTERMATH The circuits and district courts complied with Dastar.In an unpublished 9th U.S. Circuit Court of Appeals case, [FOOTNOTE 10]the author had claimed under the Lanham Act that a re-release of a musical album mistakenly attributed credit to another songwriter. The 9th Circuit held that, under Dastar,the author had no claim for “reverse passing off.” In another California case, Williams, [FOOTNOTE 11]the plaintiff film director discovered that this name was not listed on the film’s credits. Dastarprecluded plaintiff’s Lanham Act claim. In a U.S. District Court for the Southern District of New York case, [FOOTNOTE 12]plaintiff claimed that a movie company made a “false and misleading designation” of the origin of the movie. A Lanham Act claim based a defendants’ alleged failure to give plaintiff proper notice as author and/or producer was held to be foreclosed by Dastar. In a Kansas case, Larkin, [FOOTNOTE 13]Judge John W. Lungstrum explained: There are two basic types of false-designation-of-origin claims. One is passing off (or palming off, as it is sometimes called), which occurs when a person represents his or her goods or services as someone else’s. Dastar,539 US at 28 n.1. The other is reverse passing off (or reverse palming off), which occurs when a person misrepresents someone else’s goods or services as his or her own. Id. In this case, plaintiff’s complaint attempts to state a claim for reverse passing off because it alleges that defendants misrepresented plaintiff’s goods or services as their own. Defendants contend the allegations in plaintiff’s complaint cannot state a claim for reverse passing off in light of the Supreme Court’s decision in Dastar.The court agrees … Even if plaintiff authored some of the ideas and concepts embodied in those proposals, the Lanham Act does not provide protection for such plagiarism, i.e., ‘the use of otherwise unprotected works and inventions without attribution.’ Id. At 36 (explaining that �43(a) of the Lanham Act does not provide a cause of action for plagiarism) … Plaintiff’s reliance on pre- Dastarcase law is unpersuasive, as Dastarsignificantly restricts the types of claims that may formerly have been cognizable under a reverse-passing-off theory. See generally 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition �27:77.1, at 27-145 to 27-152 (4th ed. 2004) … Smith v. Montoro, [FOOTNOTE 14]holding that failure to give appropriate credit is actionable under the Lanham Act, and similar pre- Dastarcases are no longer good law. Dastarrules. CONCLUSION The Underlying Bases for “Moral Rights.” Moral rights are curtailed. Is there a solution? Judge Scalia has the answer: “When Congress has wished to create an addition to the law of copyright, it has done so with much more specificity than the Lanham Act’s ambiguous use of ‘origin.’” Section 106A of the Copyright Act, the Visual Artists Rights Act, is an example: it provides a limited moral right. Should the Copyright Act be amended to require correct attribution? Should it be amended for unlimited moral rights? Is this not what Article 6 bisof the Berne Convention requires? The media is generally opposed to such extension. The reason? We are a litigating country, as opposed to Europe. And artists certainly know how to protect their rights. In my opinion, a modest extension of moral rights is necessary to fulfill our obligation under Berne. Moral rights are independent of an author’s economic rights. Why should creators be given such a preferred position? [FOOTNOTE 15]Do artists in the 20th and 21st centuries perform heroic activity? The notion of an artist as a cultural hero is a modern idea, from the mid-19th century on. There are many theories as to why. First, the deification of the artist occurred at around the time of the decline of religious values. The artist became the minister. Secondly, the artist became the secular foundation of the civilization. In American intellectual history and because there was such diversity in the American democracy, luminaries such as Emerson in “The Poet” and Whitman in “Song of Myself” thought that the artist was the glue of society and would provide unity. Artists would make us one country. The common culture makes us Americans. Combined with military power, American mass culture at this point of time achieved global dominance. A third theory: the natural rights of authors. Notwithstanding the barbarism of the 20th century, moral rights based on natural rights was introduced in Europe in the Berne Convention in 1928. According to the Guide to the Berne Convention, [FOOTNOTE 16]the moral right: ” … is a reflection of the personality of the creator, just as the economic rights reflect the author’s need to keep body and soul together.” How odd to consider Bob Dylan “holy,” but how else to explain the discrimination accorded to artists in “moral” rights? Alan J. Hartnick is a partner of Abelman, Frayne & Schwab and an adjunct professor of law at Fordham Law School. FOOTNOTES:::: FN1 Dastar Corp. v. Twentieth Century Fox Film Corp., 539 US 23, 123 S.Ct. 2041 (2003). FN2Berne Convention, Article 5 (2). FN3 Id, Article 6bis. FN4Visual Artists Right Act of 1990, 17 USC �106 (A). FN510 Colum – VLA Jl and Arts 513, 547 (1986). FN6Brown, Adherence to the Berne Copyright Convention: The Moral Rights Issue, 35 J. Copy. Soc’y 196, 205 (1988). FN7Berne Convention Implementation Act of 1987: Hearings before Subcommittee on Courts, 100th Cong., 1st Session, (Roundtable Discussions) Appendix 111, 135-1213. FN817 USC �104 (c). FN9Zissu, “The Interplay of Copyright and Trademark Law with Protection of Character Rights,” 51 J. Copy. Soc’y 453 (2004). FN10 Borrego v. BMG, U.S. Latin, 92 Fed. Appx 572, 2004 WL 729170, 2004 U.S. App. LEXIS 6568, 2004 Copr.L.Dec. �28,829 (9th Cir. 2004). FN11 Williams v. UMG Recordings Inc., 281 FSupp2d 1177 (C.D. Cal. 2003). FN12 Smith v. New Line Cinema, 2004 WL 2049232, 2004 U.S. Dist. LEXIS 18382 (SDNY 2004). FN13 Larkin Group, Inc. v. Aquatic Design Consultants Inc., 323 FSupp2d 1121 (D. Kan. 2004). FN14 Smith v. Montoro, 648 F2d 602 (9th Cir. 1981). FN15For some of the ideas in this section, I thank Prof. Carl F. Hovde, of Columbia College. FN16WIPO Geneva, 1978 at p. 41.

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