Copyright 2003 The New York Times Company  
The New York Times
June 3, 2003, Tuesday, Late Edition - Final
SECTION: Section A; Page 26; Column 2; National Desk

LENGTH: 806 words

HEADLINE: Court Rules Out Using Trademark Law in Case About Old War Footage

BYLINE:  By LINDA GREENHOUSE

DATELINE: WASHINGTON, June 2

BODY:
The Supreme Court ruled today in a dispute between two filmmakers that once the copyright on a creative work has expired others may copy it and pass it off as their own without incurring liability under a provision of a federal unfair trade law.

The 8-to-0 decision came in an unusual case at the intersection of copyright and trademark law, and for that reason was eagerly anticipated in intellectual property circles. The 20th Century Fox Film Corporation, which more than 50 years ago had made a television series from Dwight D. Eisenhower's World War II memoir, "Crusade in Europe," sued the Dastar Corporation for using much of the footage without attribution in a current video series that Dastar calls "World War II Campaigns in Europe."

Twentieth Century Fox, now a unit of the News Corporation, had allowed the copyright on its series to expire, so the case was not a conventional one of copyright infringement. Twentieth Century Fox sued under the Lanham Act, a federal trademark law that prohibits "any false designation of origin" in the sale of "any goods or services."

The question for the Supreme Court was whether, in offering its video set as its own product, with only its own employees listed in the screen credits, Dastar had falsely described the videos' "origin." The court's answer was no.

Writing for the court, Justice Antonin Scalia said that "origin" in the Lanham Act referred only to "tangible goods" -- a counterfeit watch, for example -- and not to the content of a creative work like a book or film.

To hold otherwise, Justice Scalia said, would amount to the judicial creation of "a species of mutant copyright law." Quoting an earlier decision, he said that patents and copyrights offered a "carefully crafted bargain," a temporary monopoly after which "the public may use the invention or work at will and without attribution."

If Congress wants to expand intellectual property protection, Justice Scalia said, it must do so explicitly, as it did when it created new rights for visual artists in a 1990 law.

Justice Stephen G. Breyer did not take part in the case, Dastar Corp. v. Twentieth Century Fox Film Corp., No. 02-428, because his brother, Judge Charles R. Breyer, was a member of the three-judge panel of the federal appeals court in San Francisco that decided the case last year.

The court today reversed the decision of that court, the United States Court of Appeals for the Ninth Circuit. The appeals court had upheld a trial court ruling for Twentieth Century Fox that had imposed a penalty on Dastar of twice its profits from the videos, about $1.6 million. The Supreme Court had agreed to decide whether doubling the profits was a proper remedy, but given their ruling in favor of Dastar, the justices did not decide that issue.

The Bush administration and much of the intellectual property bar filed briefs in support of Dastar's Supreme Court appeal. Peter Jaszi, a law professor at American University who helped write one of the briefs, said today that the decision reflected the court's concern "that intellectual property rights can get out of hand and that you can have too much of a good thing." The concern was well placed, he said, adding that "the court is properly showing deference to Congress's choices in intellectual property."

But Dale M. Cendali, the lawyer who argued the case for Twentieth Century Fox, said that a legal rule that would permit her to publish "Dale Cendali's War and Peace" and pass off Tolstoy's masterpiece as her own was not one that would benefit consumers.

While the decision was clearly a victory for Dastar, it represented only one phase of a complex lawsuit that has not gone well for the company in other respects. While the copyright had expired on the original "Crusade in Europe" television series, the Federal District Court in Los Angeles ruled earlier this year that a copyright claimed by Doubleday on the Eisenhower book was still valid and that Dastar had infringed it. On that basis, Twentieth Century Fox is now entitled to seek an injunction against the sale of Dastar's videos.

Further, the court ruled today that Twentieth Century Fox could pursue Dastar under a separate provision of the Lanham Act that deals with false advertising. That provision was not at issue in the case today.

Dastar's appeal did raise the question of whether a plaintiff seeking to prove a Lanham Act violation for uncredited copying has to demonstrate that consumers are likely to be confused. The court did not decide that issue.

Christopher Larkin, a lawyer in the Los Angeles office of the Seyfarth Shaw law firm who was not involved in the case, said today that the decision was likely to have a relatively limited application because the case and its facts were so unusual.        

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LOAD-DATE: June 3, 2003