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Professor Eugene Quinn
Temple University School of Law
JURIST Guest Columnist

The United States Supreme Court issued a decision on Monday, June 2, in Dastar Corp. v. Twentieth Century Fox Film Corp., an intellectual property case that is substantively based on a rather narrow issue of trademark law; the theory of reverse passing off, which is a claim authorized pursuant to 15 U.S.C. ァ 1125(a). Supreme Court watchers may be tempted to treat this decision as one of relatively low importance, which has wasted the Court痴 time when it could be deciding issues of great social and political significance. This case has not and will not capture the headlines of some of the other Supreme Court decisions this term, but this is a decision that should be seen as a significant victory for the use of material that has fallen into the public domain. It also reaffirms something the Supreme Court has been trying to convey to the federal courts for several years now trademark law cannot be used as a subterfuge to extend the limited exclusivity enjoyed by copyrights and patents.

The Supreme Court in Dastar ruled that the theory of reverse passing off cannot be used to prevent the use, or punish the use, of material that has fallen into the public domain. In order to understand the significance of this ruling it is first necessary to understand the basics of reverse passing off. In a nutshell, reverse passing off is a theory that prevents the selling of a manufacturer痴 goods after removing the manufacturer痴 trademark from the goods and either substituting the distributor痴 mark or simply leaving the goods unbranded. At first glance this may seem to be exactly what Dastar did, but the critical piece to the puzzle of this case is that which Dastar copied was already in the public domain and free to be copied. In essence, this decision stands for two points. First, one is free to copy that which is in the public domain, which is certainly not new or earth shattering by any means. Second, and most important, this case also stands for the proposition that if you copy something in the public domain you need not give credit to the creator of the copied, public domain work. It is this second step that is worthy of further attention, because on a legal basis this means that trademark law theories cannot be used to prohibit that which is clearly allowed by copyright law.

The real dispute involved is built upon a factual foundation laid over 50 years ago. In 1948, then General Dwight D. Eisenhower completed Crusade in Europe, which was his written account of the allied campaign in Europe during World War II. Doubleday published the book and appropriately registered it with the Copyright Office in 1948. Doubleday then granted exclusive television rights to an affiliate of Twentieth Century Fox Film Corporation. Fox, in turn, arranged for the production of a television series of the same name. In 1975, Doubleday renewed the copyright on the book, which under applicable law at the time was required for the continued maintenance of a valid copyright. Fox, however, did not renew the copyright on the television series, choosing rather to allow the copyright on the television series to fall into the public domain as of 1977. Eleven years later, in 1988, Fox reacquired the television rights to General Eisenhower痴 book, including the exclusive right to distribute the Crusade television series on video.

In 1995, in anticipation of renewed interest in World War II as a result of the approaching 50th anniversary of the end of the war in Europe, Dastar decided to release a video set entitled World War II Campaigns in Europe. To make Campaigns, Dastar purchased eight video tapes of the original version of the Crusade television series and copied certain video footage and included it in Campaigns. Dastar manufactured and sold the Campaigns video set as its own product, without any reference or credit given to Fox as the original creator of the copied footage. Fox did not appreciate Dastar痴 copying, which they believed to be their own. In 1998, Fox sued Dastar primarily alleging reverse passing off in violation of ァ43(a) of the Lanham Act, which is codified at 15 U. S. C. ァ1125(a).

Both the District Court and the Court of Appeals for the Ninth Circuit sided with Fox. In a rather short, unpublished decision, the Ninth Circuit simply concluded, without any real analysis, that because Dastar copied the Fox video and did not provide credit, it misappropriated the Fox series in violation of 15 U.S.C. ァ 1125(a). What the Ninth Circuit failed to realize, however, is that the Lanham Act was never intended to have boundless application as a remedy for all trade practices that may seem unfair. The Supreme Court reiterated that the Act must be limited to its terms and cannot be stretched and pulled in a way that allows it to become an omnibus statute to rid the United States of everything considered 砥nfair.

In reaching its determination that Dastar痴 action did not and cannot violate trademark law, the Supreme Court engaged in a technical analysis of the language of 15 U.S.C. ァ 1125(a), particularly focusing on the definition of the term 登rigin as that term is understood commonly and within the meaning attributed through the Lanham Act itself. For intellectual property specialists this portion of the opinion is must reading. For those who are only looking for the bigger picture, such a statutory analysis is not necessary in order to understand the significance of this decision. What must be understood, however, is what the Supreme Court has been saying over and over again in cases over the last few years unless there exists a current intellectual property right in the form of a valid patent and/or copyright, copying of any kind cannot be prohibited.

When considering whether intellectual property infringement exists one cannot impose any kind of moral judgment into the equation. This is simply because the law of infringement is really based upon the concept of such infringement comprising a business tort. There is nothing personal in these cases, just business. In this legal-business context that which is not specifically prohibited is allowed, without reference to whether it appears 吐air or 屠ust.

The Supreme Court has tried, with limited success it would seem based on the decisions it keeps reviewing from lower courts, to explain that the rights of a patentee or copyright holder are part of a carefully crafted bargain. This bargain grants exclusive rights to the owners of this intellectual property for only a limited time. Increasingly owners of these rights have attempted to rely upon other legal theories to attempt to have their exclusivity live long after the copyright or patent has entered the public domain. The Supreme Court has steadfastly adhered to the principle that once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution. In construing the trademark laws, the Supreme Court has always been very careful to caution against over extension of trademark law into areas traditionally occupied by patent or copyright law. Without such vigilance trademark law, which can be used to provide protection forever, will be used to prevent the use of inventions and works that quite clearly cannot be prevented under patent or copyright law.

In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying, regardless of the availability of clever trademark legal theories. Trademark law cannot and does not create a cause of action for what is effectively a claim of plagiarism. When there exists no current, valid patent or copyright plagiarism is allowed, at least insofar as intellectual property law is concerned. Whether this is a good thing may be open for debate, but what is clear is that plagiarism is not the legal equivalent of infringement.

Eugene Quinn is currently a Visiting Professor of Law at Temple University School of Law, where he teaches and specializes in the areas of Intellectual Property, Business and Internet Law.

June 4, 2003


JURIST Guest Columnist Eugene Quinn is currently a Visiting Professor of Law at Temple University School of Law. Professor Quinn teaches and specializes in the areas of Intellectual Property, Business and Internet Law, and is a member of the patent bar and admitted to practice in New Hampshire.

Professor Quinn is the author of numerous articles on patent law, copyright law and the Internet. His latest article, titled An Unconstitutional Patent in Disguise, examines the constitutionality of the circumvention prevention measures of the DMCA. He holds an LL.M. in Intellectual Property from Franklin Pierce Law Center; a J.D. from Franklin Pierce Law Center; and a B.S.E.E. from Rutgers University. For his Internet home page, click here.