This article analyzes whether the Supreme Court intended its recent decision in Dastar Corp. v. Twentieth Century Fox Film Corp. to preclude a Reverse Passing Off claim under Section 43(a) of the Lanham Act by an author for misattribution of the protected and copyrightable elements of the author's work.
Dastar involved a Reverse Passing Off claim under Section 43(a) for a work that was in the public domain. In that context, the Supreme Court interpreted the phrase "origin of goods" in Section 43(a)(1)(A) of the Lanham Act as referring to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods. However, courts have begun to apply Dastar to cases involving Section 43(a) Reverse Passing Off claims by authors whose work is the subject of a valid and protectable copyright. Several courts, including the District of Oregon, have determined that Dastar precludes any claim for Reverse Passing Off under Section 43(a) where the material is the proper subject matter for a copyright.
This harsh result far overreaches the Supreme Court's rationale underlying its holding in Dastar, which was to preclude Section 43(a) from creating a species of perpetual patent and copyright protection. Instead, as an analysis of the rationale underlying the Court's Dastar decision evidences, the Court did not intend for Dastar to preclude a Section 43(a) claim by an author for misattribution of the protected and copyrightable elements of the plaintiff's work.
The Rationale Behind the Dastar Decision
In Dastar, Twentieth Century Fox Film Corporation ("Fox") alleged that, in marketing and selling a public domain work as its own product without acknowledging its nearly wholesale reliance on the original work, Dastar made a "false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . . is likely to cause confusion . . . as to the origin . . . of his or her goods." The Court stated,
Dastar . . . took a creative work in the public domain–the Crusade television series–copied it, made modifications (arguably minor), and produced its own series of videotapes. If 'origin' refers only to the manufacturer or producer of the physical 'goods' that are made available to the public (in this case the videotapes), Dastar was the origin. If, however, 'origin' includes the creator of the underlying work that Dastar copied, then someone else (perhaps Fox) was the origin of Dastar's product. At bottom, we must decide what § 43(a)(1)(A) of the Lanham Act means by the 'origin' of goods.
The Court determined that permitting the Lanham Act to protect expired copyrights in this way "would create a species of mutant copyright law that limits the public's federal right to copy and use expired copyrights." As such, the Court stated that trademark law cannot be used to trump copyright law to give perpetual protection to use of materials in public domain. "The rights of a patentee or copyright holder are part of a 'carefully crafted bargain,' under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution."
Under Fox's theory, the Court opined that the "origin of goods" provision of Section 43(a) would have supported the suit the Court rejected in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., where the defendants had used molds to duplicate the plaintiff's unpatented boat hulls (without crediting the plaintiff); and it would have supported the suit the Court rejected in TrafFix Devices v. Marketing Displays, where the plaintiff, whose patents on flexible road signs had expired would have had a reverse-passing-off claim for unattributed copying of his expired design.
Further, the Court reasoned that reading "origin" in Section 43(a) to require attribution of uncopyrighted materials would pose serious practical problems, because "without a copyrighted work as the basepoint, the word 'origin' has no discernable limits." In addition, applying "origin" to uncopyrighted materials would place the manufacturers of those products in the position of facing Lanham Act liability for failing to credit the creator of a work on which their lawful copies are based on the one hand, and facing Lanham Act liability for crediting the creator if that should be regarded as implying the creator's "sponsorship or approval" of the copy on the other.
It was in this context that the Court stated that in reading the phrase "origin of goods" in the Lanham Act in accordance with the Act's common-law foundations (which the Court stated were not designed to protect originality or creativity), and in light of the copyright and patent laws (which were), the phrase "origin of goods" refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods. "To hold otherwise would be akin to finding that §43(a) created a species of perpetual patent and copyright, which Congress may not do." As a result, the Court concluded that because Dastar was the "origin" of the uncopyrighted products it sold as its own, Fox could not prevail on its claim for Reverse Passing Off under the Lanham Act.
Dastar's Application by the Courts
In light of the Court's ruling in Dastar, courts have begun to apply Dastar to cases involving Reverse Passing Off of works where the copyright ownership is valid, subsisting and undisputed.
The District of Oregon recently determined that Dastar precluded a Reverse Passing Off claim by an author for misattribution of the protected elements of the plaintiff's copyrighted work. In Allegro Corporation v. Only New Age Music, Inc., the author and owner of copyrighted master recordings brought a cause of action under Section 43(a) for misappropriation and Reverse Passing Off against a nonexclusive licensee for distributing copies of the recordings with allegedly misattributed copyright notices. In deciding whether Dastar precluded Only New Age Music's Section 43(a) claim, the court stated, "the Supreme Court has decided that whether or not the material is protected by a copyright, if it was proper subject matter for a copyright, then Reverse Passing Off is not a theory that the U.S. Supreme Court will let stand under the Lanham Act. It's just not sustainable as a Lanham Act claim as I read that decision, if it was something that could have been or was protected by a copyright."
Similarly, in a recent case in the District of Massachusetts, the court stated, "I decline to construe Section 43(a) of the Lanham Act to require attribution to plaintiff Johnson for 'I Like It,' where the defendants here are the 'origin' of the product they recorded, produced, and sold on their own, and there is therefore no false designation of origin within the meaning of the Lanham Act."
Reverse Passing Off Before Dastar
In light of these recent interpretations of Dastar, the question necessarily arises as to whether the Supreme Court intended Dastar to preclude a Reverse Passing Off claim by an author for misattribution of the copyrightable elements of protected works. A look at materials discussing Reverse Passing Off claims by authors for misattribution of the protected and copyrightable elements of their work before Dastar provides guidance in interpreting the Supreme Court's decision.
A House of Representatives report from 1976 states that the Copyright Act was "not intended to preempt common law protection in cases involving activities such as false labeling, fraudulent representation, and passing off even where the subject matter involved comes within the scope of the copyright statute." Since Section 43(a)'s false representation prohibition is essentially a codification of the federal common law of unfair competition, this House report, which accompanied the Copyright Act of 1976, is indicative that Congress did not intend the Copyright Act to preempt Reverse Passing Off claims, even where the subject matter involved comes within the scope of the Copyright Act.
Furthermore, before Dastar, each Circuit recognized a cause of action for Reverse Passing Off by an author of a copyrighted work, and both Nimmer on Copyright and McCarthy on Trademarks recognized that a copyright infringer who used his own name on the infringing work violated Section 43(a) of the Lanham Act's false representation prohibition.
In addition, the Second Circuit has held that copyright infringement and the Lanham Act's concept of Reverse Passing Off address different harms. In particular, "through a copyright infringement action, a copyright owner may control who publishes, sells or otherwise uses a work. Through a Lanham Act action, an author may ensure that his or her name is associated with a work when the work is used." Thus, the court concluded that it is possible that the misuse of one author's work by another may result in different harms leaving two separate causes of action under both the Copyright Act and the Lanham Act.
The Second Circuit has also addressed the issue of the scope of Section 43(a)'s protection for attribution of an author's copyrighted works. In Attia v. Society of New York Hosp., the court stated that there cannot be Section 43 (a) claim for passing off a plaintiff's uncopyrightable idea as that of defendant. Instead, a Reverse Passing Off claim is only sustainable where the defendant is marketing a work that is substantially similar to the protected and copyrightable elements of the plaintiff's work. The rationale behind this holding was that otherwise "A plaintiff unable to prevail under the law of copyright could simply restate his claim as one of unfair competition for Reverse Passing Off. Ideas would no longer be in the public domain."
This approach by the Second Circuit addresses the Supreme Court's concern of creating "a species of mutant copyright law that limits the public's federal right to copy and use expired copyrights," while still maintaining the cause of action under Section 43(a)'s false representation prohibition for authors of protected and copyrightable works that was recognized by each Circuit and the leading treatises on trademark and copyright law before Dastar.
Squaring These Materials with Dastar
The Copyright Act provides that the owner of a copyright has, among other rights, the exclusive right to reproduce, prepare derivatives, and distribute copies of the work. As such, while a copyright is valid and enforceable, there is only one legally authorized "producer" of the work as a tangible good offered for sale. Even if the copyright owner licenses the right to produce the work as a tangible good, the physical producer is still acting on legal authority from the copyright owner. As such, the owner of the valid copyright is, by definition, the producer of the tangible goods. It is only once the copyright expires that third parties no longer need to obtain the copyright owner's permission to reproduce and distribute copies of the work, and thus owner of the copyright is no longer the producer of the tangible goods.
Moreover, trademark protection has long been available to authors of copyrighted works. For example, the Lanham Act affords trademark protection to artists for their names when used in connection with the sale of sound recordings such as phonograph records and prerecorded audiocassettes and compact discs. Further, the Lanham Act permits registration of an artist's name in connection with the sale of sound recordings even if the goods are sold by a related company or a through licensee. Thus, if the Dastar decision is interpreted to preclude any claim for Reverse Passing Off under Section 43(a) where the material is the proper subject matter for a copyright, if one were to obtain a compulsory license to manufacture and sell an artist's records and began selling those records under his or her own name, even though the artist's name is a trademark for the licensed phonograph records featuring the artist's copyrighted music and sold through a "related company," the artist would not have a cause of action for Reverse Passing Off under Section 43(a) of the Lanham Act. This is because, as the physical producer of the tangible goods, the infringer would automatically be considered the "origin" of the goods, and the artist would be considered the mere "author of any idea, concept, or communication embodied in the goods."
As this example evidences, interpreting Dastar as precluding any claim for Reverse Passing Off under Section 43(a) where the material is the proper subject matter for a copyright, even for the protected and copyrightable elements of the work, would create a confusing and contradictory result. In addition, this interpretation of Dastar would create a loophole whereby licensees of copyrighted works could pass the work off as their own without facing liability for infringement under the Copyright or Lanham Acts.
This harsh result far overreaches the Supreme Court's rationale underlying its holding in Dastar, which was to preclude Section 43(a) from creating a species of perpetual patent and copyright protection. As evidenced by the foregoing analysis of the rationale underlying the Court's Dastar decision, the Court's holding is only meant to preclude a claim for Reverse Passing Off under the Lanham Act for works that are in the public domain. As such, the Court did not intend Dastar to preclude a Section 43(a) claim by an author for misattribution of the protected and copyrightable elements of the plaintiff's work.