Fan Fiction (Tangent 5.2)

Part of the problem with analyzing marks in copyrighted material is that courts go out of their way—well out of their way, often at the expense of logic—to avoid ever mixing trademark law and copyright law. Probably the best recent example is Dastar v. 20th Century Fox Film, No. 02–248 (U.S. 2003) (slip op.) (PDF, 226kb). Perhaps, though, it's better to say that it's the implications that suffer.

As Justice Scalia (for a unanimous Court) describes the matter,

In 1948, three and a half years after the German surrender at Reims, General Dwight D. Eisenhower completed Crusade in Europe, his written account of the allied campaign in Europe during World War II. Doubleday published the book, registered it with the Copyright Office in 1948, and granted exclusive television rights to an affiliate of respondent Twentieth Century Fox Film Corporation (Fox). Fox, in turn, arranged for Time, Inc., to produce a television series, also called Crusade in Europe, based on the book, and Time assigned its copyright in the series to Fox. The television series, consisting of 26 episodes, was first broadcast in 1949. It combined a soundtrack based on a narration of the book with film footage from the United States Army, Navy, and Coast Guard, the British Ministry of Information and War Office, the National Film Board of Canada, and unidentified "Newsreel Pool Cameramen." In 1975, Doubleday renewed the copyright on the book as the "proprietor of copyright in a work made for hire." Fox, however, did not renew the copyright on the Crusade television series, which expired in 1977, leaving the television series in the public domain.

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In 1995, Dastar decided to expand its product line from music compact discs to videos. Anticipating renewed interest in World War II on the 50th anniversary of the war's end, Dastar released a video set entitled World War II Campaigns in Europe. To make Campaigns, Dastar purchased eight beta cam tapes of the original version of the Crusade television series, which is in the public domain, copied them, and then edited the series. Dastar's Campaigns series is slightly more than half as long as the original Crusade television series. Dastar substituted a new opening sequence, credit page, and final closing for those of the Crusade television series; inserted new chapter-title sequences and narrated chapter introductions; moved the "recap" in the Crusade television series to the beginning and retitled it as a "preview"; and removed references to and images of the book. Dastar created new packaging for its Campaigns series and (as already noted) a new title.

Dastar manufactured and sold the Campaigns video set as its own product. The advertising states: "Produced and Distributed by: Entertainment Distributing" (which is owned by Dastar), and makes no reference to the Crusade television series. Similarly, the screen credits state "DASTAR CORP presents" and "an ENTERTAINMENT DISTRIBUTING Production," and list as executive producer, producer, and associate producer, employees of Dastar. The Campaigns videos themselves also make no reference to the Crusade television series, New Line's Crusade videotapes, or the book. Dastar sells its Campaigns videos to Sam's Club, Costco, Best Buy, and other retailers and mail-order companies for $25 per set, substantially less than New Line's video set.¹

The Court concluded that Fox had no right to file a Lanham Act § 43(a) (designation of origin) complaint alleging that Campaigns is attributed improperly.² The Court found that, for a work in the public domain, this would be inconsistent with the restrictions on the horribly cramped conception of moral rights found in the Copyright Act³ and with the purpose of the Lanham Act. Of course, the real problem is with potential ownership of any mark from Crusade. Assuming for the moment that such a mark is in issue, Fox is at most a licensee of the mark, which belongs to either General Eisenhower or Bertelsmann.⁴

The real problem, though, is that Justice Scalia, with an all-too-typical rhetorical flourish, "decided" an issue that was not before the Court.

In sum, reading the phrase "origin of goods" in the Lanham Act in accordance with the Act's common-law foundations (which were not designed to protect originality or creativity), and in light of the copyright and patent laws (which were), we conclude that the phrase 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.⁵

What's missing from this? Acknowledgement that the facts before the court concern material that is in the public domain for copyright purposes. Previously in the opinion, Justice Scalia had been careful to so limit his statements; here, he was not. And this passage, no doubt, will be cited as the holding by people who would rather not read the whole opinion.⁶

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1. Dastar, slip op. at 1–3 (record references deleted; typography corrected; emphasis in original).
2. Note that it's Fox's own damned fault it couldn't have filed a copyright action—its own negligence resulted in lapse into the public domain for failure to renew, presuming both that Fox's editorial work on what appears to have been public-domain material qualified for copyright in the first place and that similarity of its work to Fox's would be sufficient to support a copyright cause of action.
3. 17 U.S.C. § 106, 106A.
4. Dastar, slip op. at 4 n.2 (discussing whether Eisenhower's text may have been a work for hire).
5. Dastar, slip op. at 13–14 (internal citations omitted; emphasis in original).
6. The book's copyright, though, was another matter. Dastar, slip op. at 4 n.2 ("The copyright issue is still the subject of litigation, but is not before us. We express no opinion as to whether petitioner's product would infringe a valid copyright in General Eisenhower's book."). Neither, on the other hand, are other theories under the Lanham Act precluded. Id., slip op. at 14 (noting possibility of a § 43(b) challenge is not foreclosed).