Dastar Corp. v. Twentieth Century Fox Film Corp.

Dastar Corp. v. Twentieth Century Fox Film Corp.
Supreme Court of the United States
Argued April 2, 2003 Decided June 2, 2003
Full case name	Dastar Corporation, Petitioner v. Twentieth Century Fox Film Corporation, et al.
Citations	539 U.S. 23 (more) 123 S. Ct. 2041; 156 L. Ed. 2d 18; 2003 U.S. LEXIS 4276; 71 U.S.L.W. 4415; 66 U.S.P.Q.2D (BNA) 1641; Copy. L. Rep. (CCH) P28,622; 194 A.L.R. Fed. 731; 2003 Cal. Daily Op. Service 4554; 2003 Daily Journal DAR 5799; 16 Fla. L. Weekly Fed. S 330
Prior history	Judgment for plaintiffs, 2000 U.S. Dist. LEXIS 22064 (C.D. Cal. Nov. 27, 2000); affirmed in part, sub nom. Twentieth Century Fox Film Corp. v. Entertainment Distributing, 34 Fed. Appx. 312 (9th Cir. 2002); cert. granted, sub nom. Dastar Corp. v. Twentieth Century Fox Film Corp., 537 U.S. 1099 (2003)
Subsequent history	Judgment for plaintiffs, 2003 U.S. Dist. LEXIS 21194 (C.D. Cal. Oct. 14, 2003); affirmed, sub nom. Twentieth Century Fox Film Corp. v. Entertainment Distributing, 429 F.3d 869 (9th Cir. 2005)
Holding
A former copyright holder could not bring a Lanham Act claim for false designation of origin against a subsequent distributor who labelled itself the "producer" rather than the work's original author, because "origin" under the Lanham Act refers only to the origin of the physical goods rather than the intangible ideas contained therein. Ninth Circuit Court of Appeals reversed and remanded.
Court membership
Case opinions
Majority	Scalia, joined by Rehnquist, Stevens, O'Connor, Souter, Thomas, Kennedy, Ginsburg
Breyer took no part in the consideration or decision of the case.
Laws applied
15 U.S.C. § 1125(a) (Lanham Act § 43(a))

Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), was a copyright and trademark case of the Supreme Court of the United States involving the applicability of the Lanham Act to a work in the public domain.

In 1948, Fox obtained the exclusive rights to create a television series called Crusade in Europe, based on the 1948 book, Crusade in Europe written by Dwight D. Eisenhower and published by Doubleday. The 26-episode series showed World War II 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, so the show entered the public domain in 1977.

In 1988, Fox reacquired the television rights to the book, and licensed to other companies the right to distribute Crusade in Europe on video. Then 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 producers, and did not mention the original Crusade in Europe book, TV series, or producers.

Fox sued in 1998, 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 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 upheld the "reverse passing off"/Lanham Act ruling, and affirmed the award of double the profits.

The U.S. Supreme Court, 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, this rule regarding the misuse of trademarks is trumped by the fact that once a copyrighted work (or, for that matter, a patented invention) passes into the public domain, anyone in the public may do anything they want with the work, with or without attribution to the author.