Reselling old TV series without credit does not violate trademark laws

Reselling old TV series without credit does not violate trademark laws

• Giving credit to the original creator is not necessary for works in the public domain, the Supreme Court ruled.

June 5, 2003 — Reversing a lower court’s ruling, the U.S. Supreme Court decided in an 8-0 decision Monday that users of works in the public domain need not credit the work’s original creator.

The decision is a victory for Dastar Corp., an Oregon-based media company that sold the “Crusade in Europe” television program as a reedited video series. The original program’s copyright expired in 1977. The program was based on the book of the same name written by Gen. Dwight D. Eisenhower.

Twentieth Century Fox Film Corp., which owned the rights to the television series, sued Dastar in 1998, claiming the company’s failure to credit the television series was a violation of the Lanham Act. Under that act, a person can be liable for giving false information concerning the origin of a good or a service in order to confuse or deceive consumers.

A Los Angeles district court ruled in Fox’s favor, awarding the company $1.5 million, according to the Los Angeles Times. A U.S. Court of Appeals in San Francisco (9th Cir.) upheld the decision in 2002.

In the Court’s opinion, Justice Antonin Scalia focused on the definition of the term “origin” as used in the Lanham Act. As used in the act, the term applies 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,” Scalia said. Dastar did not falsely describe the origin of the video, because it did produce the item. Had Dastar merely remarketed and repackaged a video produced by someone else, the outcome would have been different.

If the Supreme Court upheld the lower court’s decision, the consequences would have been frightening, said Jonathan Band, council for the American Library Association, who filed a friend-of-the-court brief in the case.

The earlier ruling imposed no limits on the Lanham Act, meaning the use of any source could have required a footnote or some type of citation. This could prove burdensome for journalists and others who use preexisting information, Band said.

Although Fox lost the Lanham Act claim, they could be successful on other fronts, said Dale Cendali, counsel for Fox. While the Supreme Court was hearing this case, a California district court found that Dastar violated the copyright of the Eisenhower book upon which the original series was based, Cendali said.

(Dastar Corp. v. Twentieth Century Fox Film Corp; Counsel for Dastar: Stewart A. Baker, Steptoe & Johnson LLP, Washington, D.C.) — EH

© 2003 The Reporters Committee for Freedom of the Press

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