FC: Paul Levy on Supreme Court's important new trademark decision

[Declan McCullagh <declan () well com>]

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Date: Mon, 02 Jun 2003 11:16:50 -0400
From: "Paul Levy" <PLEVY () citizen org>
To: <declan () well com>
Subject: Important new trademark decision

The Supreme Court today rejected an expansive construction of the Lanham
Act that had been adopted by the Ninth Circuit.  In Dastar Corp. v.
Twentieth Century Fox Film Corp., the Court overturned a decision that
had held Dastar liable for issuing a series of videotapes that were
based very heavily on a TV series that had fallen into the public
domain.  20th C Fox, which had succeeded to the rights to the TV series,
avoided the problem that copyright law gave it no rights, sued Dastar
under the Lanham Act, claiming that its failure to acknowledge that it
was plagiarizing large sections of Fox's series, it was misrepresenting
the origins of the creative work as its own.  In a unanimous opinion by
Justice Scalia, however, the Court adopted a narrow construction of  the
statutory term "false designation of origin", saying that the Act only
protects against misrepresentation of the source of the goods, not
misrepresentation of the source of the intellectual content of the
goods.

The ruling does not bear directly on most of the cases in which
trademark law is invoked as a basis for suppressing free speech on
internet gripe sites, but this is the second case in as many years in
which the Court has expressed antipathy toward expansive readings  of
the trademark laws, while focusing on the social cost that such readings
may create  (last Term was the V Secret case, about the level of showing
required for a dilution claim).  For that reason, it is a welcome
development.  (there is also a passing reference to Eldred, saying that
if the Ninth Circuit were correct, that "would be akin to a finding that
section 43(a) created a species of perpetual patent and copyright, which
Congress may not do.  Cf. Eldred...."


Paul Alan Levy
Public Citizen Litigation Group
1600 - 20th Street, N.W.
Washington, D.C. 20009
(202) 588-1000
http://www.citizen.org/litigation/litigation.html




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