Court simplifies origin-of-work law

By MICHAEL KIRKLAND, UPI Legal Affairs Correspondent

WASHINGTON, June 2 (UPI) -- The Supreme Court ruled unanimously Monday that the unaccredited copying of an uncopyrighted work does not violate the federal law against false representation.

But in the underlying case, which involves a videotape depiction of Dwight Eisenhower's book, "Crusade in Europe," the justices said Twentieth Century Fox could pursue other avenues in court against the alleged copier.


An analysis of the unanimous opinion, written by Justice Antonin Scalia, shows the court wanted to not only rule on the language of the law but said tried to keep the Lanham Act from getting tangled up with federal copyright law.

For the most part, the federal Lanham Act targets the registration and use, as well as the infringement, of trademarks. However, one section also banned the "false designation of origin, or any false description or representation" of "any goods or services."

Then-General Eisenhower's book, "Crusade in Europe," was completed in 1948, 3 1/2 years after the German surrender in World War II.

The book was the future president's account of the allied campaign.

Doubleday published the book, but granted exclusive television rights to an affiliate of Twentieth Century Fox Film Corp.


In turn, Fox arranged for Time Inc. to produce a television series, "Crusade in Europe," based on the book. The resulting 26 episodes -- consisting of narration from the book and U.S. and Canadian military films -- were first broadcast in 1949.

Doubleday renewed the book copyright in 1975, but Fox did not renew the copyright on the TV series, which expired in 1977.

In 1988, Fox reacquired the TV rights to the book, including the exclusive right to distribute the series on videotape, and licensed that right to two other companies, SFM Entertainment and New Line Home Video Inc.

At that point, the Dastar Corp. entered into the case.

Dastar published music compact discs, but decided in 1995 to expand its product line in anticipation of the 50th anniversary of the end of World War II.

Dastar purchased eight beta cam tapes of the original version of the "Crusade" series -- the one in which Fox had allowed the copyright to expire -- copied them, modified them slightly and released them as "World War II Campaigns in Europe."

Fox, SFM and New Line sued in Los Angeles, saying the sale of "Campaigns" without proper credit to "Crusade" was a "reverse passing off," and in violation of the Lanham Act's origin-of-work provision.


A "passing off" occurs when a seller attempts to represent something as something else -- selling fake Rolex watches on the street, for instance.

A "reverse passing off" is when a seller attempts to pass off something as his own work when it is in reality the work of another, Scalia said in his opinion Monday.

The lower courts sided with Fox, SFM and New Line, but the Supreme Court reversed.

Scalia wrote in his opinion that Dastar would have violated the Lanham provision if it had simply bought the tapes and repackaged them as its own.

Instead, it took a creative work in the public domain, copied it, made minor changes and produced its own series of videotapes, without credited the origin of the series.

"We don't think the Lanham Act requires the search for the Nile and all its tributaries," Scalia said from the bench. Otherwise, distributors would have to credit some public domain works ad inifinitum -- from book author, to playwright, to lyricist to composer and so on.

The opinion sent the case back for a rehearing.

Scalia said Fox's contention that Dastar's action "infringes Doubleday's copyright on Gen. Eisenhower's book is still a live question." There also might be liability if Dastar has given buyers the impression that its series was "quite different" from the Fox series, he said.



(No. 02-428, Dastar Corp. vs. Twentieth Century Fox Film Corp. et al.)

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