Amicus Curiae Brief — Dastar Corp. v. Twentieth Century Fox Film Corp.

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In the Supreme Court of the United States

DAS TAR CORPORATION, PETITIONER

TWENTIETH CENTURY FOX FILM CORPORATION,

ET AL.

ON WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPLALS

FOR THE NINTH CIRCUIT

BRIEF FOR THE UNITED STATES

AS AMICUS CURIAE SUPPORTING PETITIONER

THEODORE B. OLSON

Solicitor General

Counsel of Record

ROBERT D. MCCALLUM, JR.

Assistant Attorney General

PAUL D. CLEMENT

Deputy Solicitor General

GREGORY G. GARRE

Assistant to the Solicitor

General

ANTHONY J. STEINMEYER

MARK S. DAVIES

Attorneys

Department of Justice

Washington, D.C. 20530-0001

(202) 514-2217

QUESTION PRESENTED

The United States will address the following question:

Whether and to what extent the Lanham Act, 15 U.S.C.

1125(a), prevents the uncredited copying of a work.

(I)

TABLE OF CONTENTS

Interest of the United States

Statement

Summary of argument

Argument:

The Lanham Act prohibits false or misleading

designations that are likely to cause confusion as

to the source of goods, but does not establish an

independent duty to credit the original creators

of works

A. The creators of original works that qualify

for a copyright or patent enjoy extra-

ordinary protections during the life of the

B. The Lanham Act is focused on protecting con-

sumers against confusion as to the source of

goods and was designed to prevent direct

passing off

C. Although the Lanham Act has been applied to

claims of reverse passing off, it does not estab-

lish a generalized duty to credit a work’s

original creator

D. Other considerations also caution against over-

extending the Lanham Act in this context ................

E. The court of appeals’ Lanham Act analysis in this

case is fundamentally flawed

Conclusion

Appendix

(IID

» S$

IV Vv

TABLE OF AUTHORITIES

: Cases—Continued: Page

Cases: Page | Harper & Row Publishers, Inc. v. Nation Enters.,

Agee v. Paramount Communications, Inc., 59 f 471 U.S. 539 (1985) 8

F.3d 317 (2d Cir. 1995) 27 | International Ass of Machinists v. Winship

Arrow United Indus., Inc. v. Hugh Richards, Green Nursing Ctr., 103 F.3d 196 (Ist Cir. 1996) 27

Inc., 678 F.2d 410 (2d Cir. 1982) 16 International News Serv. v. Associated Press,

Attia v. Society of the New York Hosp., 201 F.3d 50 | 248 U.S. 215 (1918) 29

(2d Cir. 1999), cert. denied, 531 U.S. 843 (2000) ............ 21 Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S.

Barbeque Marz, Inc. v. 551 Ogden, Inc., 235 F.3d 844 (1982) 11

1041 (7th Cir. 2000) 27 | Kellogg Co. v. National Biscuit Co., 305 U.S. 111

Batiste v. Island Records, Inc., 179 F.3d 217 (5th (1938) 20

Cir. 1999), cert. denied, 528 U.S. 1076 (2000) 27 Kennedy v. National Juvenile Detention Ass n, 187

Blinded Veterans Ass’n v. Blinded American F.3d 690 (7th Cir. 1999), cert. denied, 528 U.S.

Veterans Found., 872 F.2d 1035 (D.C. Cir. 1989) ...... 27, 28 1159 (2000) 19

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., King v. Ames, 179 F.3d 370 (5th Cir. 1999) 27

489 U.S. 141 (1989) 7, 8, 20 LaMothe v. Atlantic Recording Corp., 847 F.2d 1403

Cleary v. News Corp., 20 F.3d 1255 (9th Cir. (9th Cir. 1988)

1994) : 17 Lipscher v. LPR Publ us, Inc., 266 F.3d 1305

College Sav. Bank v. Florida Prepaid Postsec- (11th Cir. 2001) 27

ondary Educ. Expense Bd., 527 U.S. 666 (1999) 29 Murray Hill Publ us, Inc. v. ABC Communica-

Compco Corp. v. Day-Bright Lighting, Inc., 376 tions, Inc., 264 F.3d 622 (6th Cir. 2001) 27

U.S. 234 (1964) 20 O. & W. Thum Co. v. Dickenson, 245 F. 609 (6th

Cooper Indus., Inc. v. Leatherman Tool Group, Cir. 1917), cert. denied, 246 U.S. 664 (1918) 12

Inc., 582 U.S. 424 (2001) 17 Pennock v. Dialogue, 27 U.S. (2 Pet.) 1 (1829) 18

Eldred v. Ashcroft, No. 01-618 (Jan. 15, 2003) 2,7,8 Peralta v. Heights Med. Ctr., Inc., 485 U.S. 80

F.E.L. Publ us, Ltd. v. Catholic Bishop, 214 (1988) 29

U.S.P.Q. 409 (7th Cir.), cert. denied, 459 U.S. Percy v. Truefitt, 6 Beav. 66 (Eng. 1842) 12

859 (1982) 27 Polaroid Corp. v. Polaroid Elecs. Corp., 287 F.2d

Feist Publ us, Inc. v. Rural Tel. Serv. Co., 499 492 (2d Cir.), cert. denied, 368 U.S. 820 (1981) 27

U.S. 340 (1991) 18, 25 N Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159

FTC v. Indiana Fed n of Dentists, 476 U.S. 447 (1995) 11, 12, 21, 24

(1986) 13 Roho, Inc. v. Marquis, 902 F. 2d 356 (5th Cir.

G. Ricordi & Co. v. Haendler, 194 F.2d 914 (24 1990) 17

Cir. 1952) 8, 20 Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225

Gilliam v. American Broad. Cos., 538 F.2d 14 (2d (1964) 20

Cir. 1976) 22 Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169

(1896) 20

Cases Continued: Page

Smith v. Montoro, 648 F.2d 602 (9th Cir. 1981) 6, 10,

14, 15, 16

TrafFix Devices, Inc. v. Marketing Displays, Inc.,

532 U.S. 23 (2001) 8, 19, 20, 23

Truck Equip. Serv. Co. v. Fruehauf Corp., 536

F.2d 1210 (8th Cir.), cert. denied, 429 U.S. 861

(1976) 17

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.

763 (1992) 12, 24

Waldman Publ g Corp. v. Landoll, Inc., 43 F.3d

775 (2d Cir. 1994) 25

Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S.

205 (2000) 23

Web Printing Controls Co. v. Oxy-Dry Corp., 906

F.2d 1202 (7th Cir. 1990) 16

Constitution, treaty, and statutes:

U.S. Const. Art. I, § 8, Cl. 8 7

Berne Convention for the Protection of Literary

and Artistic Works, U.N.TS. 221 1,9, 10

Berne Convention Implementation Act of 1988,

Pub. L. No. 100-568, f 3, 102 Stat. 28658 .................. 1,9, 10

Trademark Act of 1946 (Lanham Act), 15 U.S.C.

1050 et seq.:

§ 409(a), 15 U.S.C. 1122(a) 1

§ 43(a), 15 U.S.C. 1125(a) passim

§ 43(a), 15 U.S.C. 1125(a) (1982) 11, 15, 2a

§ 43(a)(1), 15 U.S.C. 1125(a)(1) 15

§ 43(a)(1)(A), 15 U.S.C. 1125(a)(1 XA) passim

§ 43(a)(1)(B), 15 U.S.C. 1125(a)(1)(B) ................ 12, 13, 15,

15, 16, 17, 29, la

§ 43(a)(3), 15 U.S.C. 1125(a)(3) 23

§ 45, 15 U.S.C. 1127 24

Trademark Law Revision Act of 1988, Pub. L. No.

100-667, § 132, 102 Stat. 3946 12

Statutes—Continued:

VII

Visual Artists Rights Act of 1990, Pub. L. No.

101-650, § 60 (a), 104 Stat. 5128

17 U.S.C. 106A(a)(1)(A) 21,

17 U.S.C. 106A(b) 2

17 U.S.C. 106A(d)(1)

17 U.S.C. 106A(e)(1) 21,

15 U.S.C. 45(b)

17 U.S.C. 101 21,

17 U.S.C. 302

17 U.S.C. 305

17 U.S.C. 304

35 U.S.C. 154

cron N g F E F F

Miscellaneous:

Leon H. Amdur, Copyright Law and Practice

(1936) 8

John T. Cross, Giving Credit Where Credit Is Due:

Revisiting the Doctrine of Reverse Passing Off in

Trademark Law, 72 Wash. L. Rev. 709 (1997) . 14, 16, 17, 28

H.R. Rep. No. 609, 100th Cong., 2d Sess. (1988) ............... 9

J. Thomas McCarthy, McCarthy on Trademarks

and Unfair Competition (2002):

Vol. 3 27

Vol. 4 12, 13, 18, 28

3 Melville B. Nimmer, Nimmer on Copyright

(2002) 9,19

Restatement (Third) of Unfair Competition (1995) ......... 9, 13

18, 27, 29

S. Rep. No. 1333, 79th Cong., 2d Sess. (1946) 11

S. Rep. No. 352, 100th Cong., 2d Sess. (1988) 10

S. Rep. No. 515, 100th Cong., 2d Sess. (1988) 12

The Implications, Both Domestic and International,

of U.S. Adherence to the International Union for

the Protection of Literary and Artistic Works,

1986: Hearings Before the Subcomm. on Patents,

Copyrights and Trademarks of the Senate Comm.

on the Judiciary, 99th Cong., Ist & 2d Sess.

(1986) 10

In the Supreme Court of the Anited States

No. 02-428

DASTAR CORPORATION , PETITIONER

— — — —

TWENTIETH CENTURY FOX FILM CORPORATION,

ET AL.

ON WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

BRIEF FOR THE UNITED STATES

AS AMICUS CURIAE SUPPORTING PETITIONER

INTEREST OF THE UNITED STATES

This case concerns the circumstances in which the Trade-

mark Act of 1946 (Lanham Act), 15 U.S.C. 1125(a), prevents

the uncredited copying of a work. The United States has a

strong interest in promoting the pro-competitive policies

underlying the Nation’s trademark and antitrust laws, and in

preventing consumer confusion as to the source of goods or

services. The United States also has a substantial interest in

ensuring that domestic law is consistent with the United

States’ international obligations under the Berne Convention

for the Protection of Literary and Artistic Works, 828

U.N.T.S. 221, to which the United States has acceded. See

Berne Convention Implementation Act of 1988, Pub. L. No.

100-568, 102 Stat. 2853. In addition, the United States and

its agencies are subject to suit under the Lanham Act. 15

U.S.C. 1122(a).

(1)

STATEMENT

1. In 1948, three and a half years after the German

surrender at Reims, General Dwight D. Eisenhower com-

pleted Crusade in Europe (Crusade), his written account of

the allied campaign in Europe during World War II. Double-

day published Crusade and registered it with the Copyright

Office in 1948. Pet. App. 9a. Doubleday granted the exclu-

sive television rights in the book to an affiliate of respondent

Twentieth Century Fox Film Corporation (Fox). In 1949,

Fox made a television series based on Crusade, and regis-

tered the series with the Copyright Office. Id. at 8a-10a.' In

1975, Doubleday renewed the copyright on the book as the

“proprietor of copyright in a work made for hire.” Id. at 9a.

Fox, however, did not renew the copyright on the Crusade

television series, Br. in Opp. 20-21 n.4, and that copyright

expired in 1977.”

In 1988, Fox reacquired from Doubleday the television

rights in Eisenhower’s book, including the exclusive right to

distribute the Crusade television series on video, and to sub-

license others to do so. Pet. App. 10a. Through sublicenses,

respondents SFM Entertainment (SFM) and New Line

Home Video, Inc., acquired from Fox the exclusive rights

to distribute the Crusade series on video. SFM obtained

the negatives of the original television series and restored

and repackaged the series on video. Respondents’ Crusade

Fox contracted with Time, Inc., to produce the television series. Pet.

App. 25a, 43a. Time assigned its copyright in the series to Fox. Id. at 9a.

2 The validity of Doubleday’s renewed copyright in the book remains

at issue in this litigation, and is not ad by this brief. If Doubleday’s

renewed copyright on the book is ttm to be valid, it will not expire

for several decades (until 2043) due to Congress’s determination to extend

existing and renewed copyrights in 1978 and 1998. See 17 U.S.C. 302, 304,

as amended; Eldred v. Ashcroft, No. 01-618 (Jan. 15, 2003), slip op. 3-5. If

Fox had renewed its copyright on the Crusade television series, that copy-

right also would be in effect today and for decades more.

videos are a “direct reproduction” of the television series and

bear the same title as that series. Id. at lla, 12a. The videos

credit New Line, SFM, “A March of Time Production By

Arrangement with 20th Century Fox,” and Eisenhower and

his book. Id. at IIa.

In 1995, petitioner, anticipating renewed interest in World

War II on the 50th anniversary of the war’s end, released

a competitive video series entitled Campaigns in Europe

(Campaigns). To make Campaigns, petitioner purchased

tapes of the original Crusade television series, copied them,

and then edited the series. Pet. App. 13a, 45a; see J.A. 247a-

248a. In revising the Crusade series, petitioner’s director of

video acquisitions, Lanny Tarter, substituted a new opening

sequence, credit page, and final closing for those in the

Crusade series; substituted 26 new chapter-title sequences

(which corresponded to the chapter-title sequences in the

Crusade series); removed references to and images of the

book; moved the “recap” in Crusade to the beginning of

Campaigns and retitled it as a “preview”; added music; and

narrated chapter introductions written by petitioner. /bid.;

see Pet. C.A. Br. 26, 28. The Campaigns series is nearly an

hour shorter than respondents’ Crusade series, and has

about 30 minutes of new footage. Pet. 5.

Petitioner manufactured and sold the set of Campaigns

videotapes as its own good. The screen credits appearing on

petitioner’s Campaigns videos state “DASTAR CORP

presents” and “an ENTERTAINMENT DISTRIBUTING Pro-

duction,” and list Norman Andersen, petitioner’s president,

as “executive producer”; Tarter as “producer”; and Barbara

Kaye, Tarter’s assistant, as “associate producer.” Pet. App.

18a, 45a; see Supp. J.A. 1-9. Petitioner’s Campaigns series

makes no reference to the Crusade television series or

Eisenhower’s book. Pet. App. 18a. The packaging for the

Campaigns videos similarly contains no reference to the

Crusade television series, and states: “Produced and Distri-

buted by: Entertainment Distributing” (owned by peti-

tioner). Supp. J.A. 28-29.

Petitioner sells its Campaigns video series to Sam’s Club,

Costco, Best Buy, and other retailers and mail-order com-

panies for $25 per set, substantially less than the Crusade

video series sold by respondents. Pet. App. 19a.

2. In 1998, respondents brought this action alleging that

petitioner’s sale of its Campaigns video series infringed

Doubleday’s copyright in Eisenhower’s book and, by exten-

sion, their exclusive television rights in the book. Respon-

dents later amended their complaint to claim that peti-

tioner’s sale of Campaigns “without proper credit” to the

Crusade television series constitutes “reverse passing off” in

violation of the Lanham Act, 15 U.S.C. 1125(a), and state

unfair competition law. Pet. App. 3la. On cross-motions for

summary judgment, the district court entered judgment for

respondents on all three counts. /d. at 55a.

To prevail on their reverse passing off claim under the

Lanham Act—the only claim at issue in this Court—the

district court stated that respondents must show that peti-

tioner’s Campaigns series “is a ‘bodily appropriation’ of the

television series,” which the court defined as the “copying or

unauthorized use of substantially the entire item.” Pet. App.

25a-26a. The court found that Campaigns amounts to such a

copy, and violates the Lanham Act due to petitioner’s failure

to credit Crusade, stating: Ipetitioner's] failure to identify

the television series and the Book is misleading to the public;

it gives the false impression that the series contains only the

work of those listed in the credits even though the television

series was produced by Fox and Time and significant

portions of the Book are used verbatim.” Id. at 53a.

To remedy that violation, the court found that respon-

dents are entitled to actual damages in the amount of lost

sales and good will from petitioner’s infringing conduct, as

well as double petitioner’s profits from the sale of Cam-

paigns. Pet. App. 25a-26a. In addition, the court awarded

damages and injunctive relief on respondents’ copyright in-

fringement claim. Id. at 22a-23a.

3. The court of appeals affirmed the judgment for re-

spondents on the Lanham Act claim, but reversed as to the

spect to the Lanham Act claim, the court reasoned that

Apetitioner] copied substantially the entire Crusade in

Europe series created by [Fox], labeled the resulting pro-

duct with a different name and marketed it without attri-

bution to Fox.” Id. at 3a. The court rejected petitioner’s

argument that respondents were required to “make an inde-

pendent showing that the series manufactured by [peti-

tioner] resulted in consumer confusion,” reasoning that

petitioner’s “‘bodily appropriation’ of Fox's original series is

sufficient to establish the reverse passing off.” Id. at 3a-4a.°

SUMMARY OF ARGUMENT

Federal law grants extraordinary protections to the

owners of a patent or copyright to prevent the uncredited

and credited copying of original works, but those protections

are necessarily available only for limited terms. Once a

domain, federal law generally allows, indeed encourages, the

copying of the work to promote competition, but not without

limitation. The Lanham Act—the federal trademark law—

protects consumers from confusion as to the source of goods

and, in particular, establishes a federal remedy against the

“false designation of origin” or “false or misleading descrip-

tion of fact” with respect to a good that is “likely to cause

3 As to the copyright claim, the court of appeals concluded that a

triable issue exists related to whether Doubleday properly renewed the

is not before the Court, see Pet. i, but remains alive in this case.

confusion * * * as to the origin, sponsorship, or approval”

of the good by another person. 15 U.S.C. 1125(a)(1)(A).

Section 43(a) of the Lanham Act was designed to prevent

passing off, the classic example of unfair competition. But

lower courts have concluded that Section 43(a) also applies to

certain types of reverse passing off. For example, in one

leading case, the court held that Section 43(a) was violated

when the distributor of a movie misattributed the name of

the star of the film in the movie’s advertising and credits by

replacing the name of the actor who starred in the film with

the name of someone who did not even appear in it. Smith v.

Montoro, 648 F.2d 602 (9th Cir. 1981). So too, courts have

concluded that Section 43(a) prevents a producer from ob-

taining the goods manufactured by a competitor, obliterating

the competitor’s mark, and then relabeling and reselling the

same goods as the producer’s own. Although they fall

outside the heartland of Lanham Act protections, such mis-

attribution and relabeling cases can be squared with a care-

ful textual analysis of Section 43(a).

At the same time, however, Section 43(a) should not be

construed in a manner that would establish a generalized

duty on the part of producers to credit the original creators

of works. Such a construction could overextend the Lanham

Act by giving the original creators of works a perpetual

trademark right to prevent the uncredited copying of a

work, even after the work is no longer subject to copyright

or patent protection from such copying. In addition, Con-

gress has shown that it knows how to legislate additional

protections from uncredited copying, and in 1990 did so with

respect to specific artistic works. Likewise, recognizing such

a duty would invite Lanham Act litigation by creators who

viewed attribution as an unwelcome sign of their “approval”

or “sponsorship” (15 U.S.C. 1125(a)(1)(A)) of a competitor’s

copy, especially where, as here, the copy is an edited version

of the original work.

This case does not match either of the misattribution or

relabeling situations in which lower courts have applied

Section 43(a), and the court of appeals failed to engage in any

careful analysis of respondents’ reverse passing off claim

under Section 43(a)’s terms. Indeed, without identifying

any specific misattribution made by petitioner as to the

source of Campaigns, the court of appeals held that peti-

tioner was liable under Section 43(a) for distributing Cam-

paigns “without attribution to Fox.” Pet. App. 3a (emphasis

added). That is, the court of appeals treated this as a non-

attribution case. In addition, the court of appeals awtomati-

cally assumed the requisite confusion based solely on the

fact that Campaigns is substantially copied from the Cru-

sades series. But that analysis improperly disregards the

textual requirements in Section 43(a)(1)(A), and all but es-

tablishes a blanket rule against the uncredited copying of

works in the public domain. Accordingly, the decision below

should not stand.

ARGUMENT

THE LANHAM ACT PROHIBITS FALSE OR MIS-

LEADING DESIGNATIONS THAT ARE LIKELY TO

CAUSE CONFUSION AS TO THE SOURCE OF

GOODS, BUT DOES NOT ESTABLISH AN INDE-

PENDENT DUTY TO CREDIT THE ORIGINAL

CREATORS OF WORKS

A. The Creators Of Original Works That Qualify For A

During The Life Of The Copyright Or Patent

1. The Nation’s copyright and patent systems are built

on a “carefully crafted bargain.” Bonito Boats, Inc. v.

Thunder Craft Boats, Inc., 489 U.S. 141, 150-151 (1989); see

Eldred v. Ashcroft, No. 01-618 (Jan. 15, 2003), slip op. at 24;

U.S. Const. Art. I, § 8, Cl. 8. To encourage innovation, the

qualify for a patent or copyright an exclusive right to use

and benefit from their works for a period of years. See 17

U.S.C. 301-305; 35 U.S.C. 154. During that period, copyright

and patent holders are free to authorize others to copy and

sell their works and, in doing so, may insist through contract

on receiving specified attribution for such works. But on

expiration of a patent or copyright, the creation inures to the

public, which is generally entitled to copy it and profit from

its use. See TrafFix Devices, Inc. v. Marketing Displays,

Inc., 582 U.S. 23, 29 (2001); Harper & Row Publishers, Inc.

v. Nation Enters., 471 U.S. 539, 545 (1985)." _

The copying of works that enter the public domain is not

always welcomed by creators who have grown accustomed

to the limited patent or copyright monopoly on such works,

but such copying often benefits consumers by promoting

competition and reducing prices. Indeed, as this Court has

observed, “imitation and refinement through imitation are

both necessary to invention itself and the very lifeblood of a

competitive economy.” Bonito Boats, 489 U.S. at 146; see

TrafFix, 532 U.S. at 29 (“Allowing competitors to copy will

4 As the Court observed in Eldred, slip op. 24-25, copyright law does

not entail the same quid pro quo as patent law, but it is nonetheless built

on a similar construct. In G. Ricordi & Co. v. Haendler, 194 F.2d 914, 914-

915 (2d Cir. 1952), for example, Judge Learned Hand explained that after

the copyright on a book published by the plaintiff had expired the public

was free to copy it and sell it. The work in Haendler contained the libretto

and vocal and piano scores from Verdi's Falstaff. After the copyright had

expired, the defendant published “substantially an exact copy of the

plaintiff's [book], save for the interpolation in the libretto of passages from

Shakespeare’s play.” Id. at 914. Judge Hand explained that this was

proper under federal copyright law, and further rejected the argument

that the sale of defendant’s copy violated state unfair competition law,

where defendant “gave notice that [the copy] was his product.” Id. at 916.

See also Leon H. Amdur, Copyright Law and Practice § 15, at 299-300

(1936) (“By the expiration of the copyright of the novel, * * any person

could make any use of the novel which he saw fit. He could copy it, or

publish it, or make a play out of it.”) (citation omitted).

have salutary effects in many instances.”); Restatement

(Third) of Unfair Competition, § 1 emt. a (1995) (Restate-

ment) (“Competition in the marketing of goods and services

creates incentives to offer quality products at reasonable

prices and fosters the general welfare by promoting the

efficient allocation of economic resources.”).

2. Copyright holders also are protected by laws that

honor the Nation’s international commitments. In 1989, the

United States acceded to the Berne Convention for the

Protection of Literary and Artistic Works, U.N.T.S. 221;

see Berne Convention Implementation Act of 1988, Pub. L.

No. 100-568, 102 Stat. 2853 (BCIA). Article 6bis of the

Convention provides in part:

(1) Independently of the author’s economic rights, and

even after the transfer of the said rights, the author shall

have the right to claim authorship of the work and to

object to any distortion, mutilation or other modification

of, or other derogatory action in relation to, the said

work, which would be prejudicial to his honor * * *.

828 U.N.T.S. at 235. The article embodies the European con-

cept of non-economic, “moral rights.” H.R. Rep. No. 609,

100th Cong., 2d Sess. 33 (1988); see 3 Melville B. Nimmer &

David Nimmer, Nimmer on Copyright, § 8D.01[{A] (2002)

(Nimmer). N

In acceding to the Berne Convention, Congress carefully

considered the United States’ obligations under Article 6bis

and concluded that the protections available under then-

existing domestic law, including the Lanham Act, were suffi-

cient to meet those obligations. See H.R. Rep. No. 609,

supra, at 38 (“Based on a comparison of its laws with those of

Berne member countries, and on the current status of

Federal and State protections of the rights [embodied in

Article 6bis], the Committee finds that current United

States law meets the requirements of Article 6bis.”); see id.

at 34 n.66 (IT hne totality of our law, including the common

law of torts, provides protection at a level sufficient to

comply with the convention’s [moral rights] requirements.”)

(quoting letter from Secretary of Commerce); S. Rep. No.

352, 100th Cong., 2d Sess. 9-10 (1988) (considering “various

provisions of the Copyright Act and Lanham Act, various

state statutes, and common law principles”).°

Like domestic copyright law, the Berne Convention is

limited in important respects. For example, as Congress

made clear when it passed the BCIA, the Convention is “not

self-executing under the Constitution and laws of the United

States,” and the United States’ adherence to the Convention

does “not expand or reduce any right of an author of a work

* * * to claim authorship of the work” under existing

domestic law. § 3, 102 Stat. at 2853; see 828 U.N.T.S. at 235

(Art. 6bis(3)). In addition, the Convention by its terms does

not apply to works that have entered the public domain in

their country of origin. See 828 U.N.T.S. at 251 (Art. 18(2)).

While the Convention does not itself create enforceable pri-

vate rights, it ensures that copyrighted works receive impor-

tant protections in member states.

8. This case began as a copyright infringement action,

and respondents’ copyright claim is still alive. If respon-

dents prevail on that claim, copyright law will enable

them—for decades to come, see note 2, supra—to prevent

petitioner from copying the Crusade television series, with

5 In particular, the ad hoc working group advising Congress on the

BCIA in 1988 pointed to the Ninth Circuit’s decision in Smith v. Montoro,

648 F.2d 602 (9th Cir. 1981). See The Implications, Both Domestic and

International, of U.S. Adherence to the International Union for the

Protection of Literary and Artistic Works, 1986: Hearings Before the

Subcomm. on Patents, Copyrights and Trademarks of the Senate Comm.

on the Judiciary, 99th Cong., Ist & 2d Sess. (1986) (App. 424 n.23) (“Smith

v. Montoro indicates, in dicta, that omission of an author’s name from his

work may constitute ‘an implied reverse passing off’ and thus violate

section 43(a) of the Lanham Act.“) (quoting report). As discussed in Part

C, infra, the holding in Montoro is grounded in the Lanham Act.

—

— — —

or without attribution. But as this case comes to the Court,

the question is not whether copyright law enables respon-

dents to insist on attribution for the original Crusade series;

it is whether federal trademark law specifically, Section

4 (a) of the Lanham Act —entitles respondents to such attri-

bution. The court of appeals reversed and remanded respon-

dents’ copyright claim, but held that respondents nonethe-

less are entitled to judgment on their Lanham Act claim.

B. The Lanham Act Is Focused On Protecting Consumers

Against Confusion As To The Source Of Goods And

Was Designed To Prevent Direct Passing Off

Quite unlike copyright or patent law, the Lanham Act is

not designed to reward innovation or encourage invention,

but instead to protect the public from confusion as to the

source of goods. See Inwood Labs., Inc. v. Ives Labs., Inc.,

456 U.S. 844, 854 n.14 (1982); S. Rep. No. 1333, 79th Cong., 2d

Sess. 3 (1946). By preventing competitors from copying “a

source-identifying mark,” the Lanham Act “reduce[s] the

customer’s costs of shopping and making purchasing de-

cisions.” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159,

164-165 (1995) (quotation omitted). At the same time, by

protecting such a source-identifying mark, the Lanham Act

“helps assure a producer that it (and not an imitating com-

petitor) will reap the financial, reputation-related rewards

associated with a desirable product.” Id. at 164.

As originally enacted, Section 43(a) of the Lanham Act,

the provision relied on by respondents in this case, created a

federal remedy against persons who used in commerce

either “a false designation of origin, or any false description

or representation” in connection with goods or services. 15

U.S.C. 1125(a) (1982) (emphasis added). The provision codi-

fied “the related common-law torts of technical trademark

§ The original and current versions of Section 43(a) are reprinted in

the appendix to this brief.

infringement and passing off, which were causes of action for

false descriptions or representations concerning a good’s or

service’s source of production.” Two Pesos, Inc. v. Taco

Cabana, Inc., 505 U.S. 763, 785 (1992) (Thomas, J., concur-

ring) (citations omitted).

Passing off is the prototypical example of unfair competi-

tion and occurs where one producer attempts to sell his

goods under the pretense that they are another’s. See O. &

W. Thum Co. v. Dickinson, 245 F. 609, 621 (6th Cir. 1917)

(“The essence of unfair competition consists in palming off.”),

cert. denied, 246 U.S. 664 (1918); Percy v. Truefitt, 6 Beav.

66, 73 (Eng. 1842) (“A man is not to sell his own goods under

the pretence that they are the goods of another man.”) (Lord

Langdale); 4 J. Thomas McCarthy, McCarthy on Trade-

marks and Unfair Competition § 25:5, at 25-11 (2002)

(McCarthy) (Passing off is “the classic form of trademark

infringement.”). A producer’s attempt to palm off his goods

as another’s directly impedes the basic objectives of trade-

mark law by deceiving consumers as to the source of goods,

and permitting one producer to capitalize on another pro-

ducer’s name. See Qualitex, 514 U.S. at 164.

In 1988, Congress amended Section 43(a) to bring it into

conformity with certain developments in trademark law.

See Trademark Law Revision Act of 1988, Pub. L. No. 100-

667, § 132, 102 Stat. 3946; S. Rep. No. 515, 100th Cong., 2d

Sess. 40 (1988). As amended, Section 43(a) still covers any

“false designation of origin” or “false or misleading descrip-

tion of fact” about a good or service used in commerce. 15

U.S.C. 1125(a)(1)(A). But in 1988, Congress added a new

requirement—in subsection (a)(1)(A)—that to be actionable

such a false or misleading designation must be “likely to

cause confusion * * * as to the origin, sponsorship, or

approval” of one person’s goods by another person. 15

U.S.C. 1125(a)(1)(A). In addition, Congress added a new

section—subsection (a)(1)(B)—creating liability for such a

false or misleading designation when it “misrepresents the

nature, characteristics, qualities, or geographic orgin” of

goods or services “in commercial advertising or promotion.”

15 U.S.C. 1125(a)(1)(B); see 4 McCarthy § 27:10, at 27-19 to

27.21.

C. Although The Lanham Act Has Been Applied To Claims

Of Reverse Passing Off, It Does Not Establish A

Generalized Duty To Credit A Work’s Original Creator

This case does not present a typical Lanham Act claim

involving passing off. Petitioner has marked the Campaigns

series as its own good, and respondents’ claim is that peti-

tioner violated the Lanham Act by selling its videos without

crediting the original Crusade television series. That kind of

claim has been characterized as “reverse passing off’—i.e., a

producer’s attempt to sell another’s good as its own—and

raises different considerations under the Lanham Act.

1. Unlike regular passing off, “reverse passing off does

not directly threaten the reputation of another since by

definition the misrepresentation acts to sever the actual

producer’s association with the goods or services marketed

by the actor.” Restatement § 5 cmt. a (emphasis added). In

addition, reverse passing off may not create the immediate

deception caused by passing off. As one commentator has

explained, “{iJn a case of reverse passing off, con-

sumers assume that the product comes from the defendant.

If defendant has no reputation for quality, a situation that is

fairly common in the cases, consumers are not deceived be-

7 Congress has established other measures to prevent unfair trade

practices. In particular, the Federal Trade Commission Act gives the

Federal Trade Commission (FTC) broad authority to take action when-

ever it believes that any person “has been or is using any unfair method of

competition or unfair or deceptive act or practice in or affecting com-

merce.” 15 U.S.C. 45(b); see FTC v. Indiana Fed n of Dentists, 476 U.S.

447, 454 (1986). The FTC’s authority to bring such a proceeding is not

limited to trademark’s focus on false designations as to a product’s source.

cause they have no specific expectations concerning the

quality of the product.” John T. Cross, Giving Credit Where

Credit Is Due: Revisiting The Doctrine Of Reverse Passing

Off In Trademark Law, 72 Wash. L. Rev. 709, 755 (1997).

But at the same time, reverse passing off may indirectly

confuse consumers as to the actual source of goods and de-

prive producers of the goodwill that is associated with being

known as the creator of a well-liked good, and tnerefore

implicates the basic policies underlying the trademark law.

2. Although reverse passing off generally does not pre-

sent the classic Lanham Act problems posed by direct

passing off, lower courts have concluded that certain types of

reverse passing off may be proscribed by Section 43(a).

a. Smith v. Montoro, 648 F.2d 602 (9th Cir. 1981), is a

path marking case. In Montoro, an actor, Paul Smith, con-

tracted to appear in a film and “receive star billing in the

screen credits and advertising for the film.” Id. at 603.

Defendants obtained the rights to distribute the film, and

“removed Smith’s name and substituted the name of another

actor, ‘Bob Spencer,’ in place of Smith’s name in both the

film credits and advertising material.” Ibid. Smith brought

suit alleging, inter alia, that defendants violated Section

43(a) of the Lanham Act “by affixing or using ‘a false desig-

nation or representation,’ i. e., another actor’s name in place

of [Smith’s], in connection with the movie’s advertising and

credits.” Id. at 604. The Ninth Circuit agreed.

The Ninth Circuit recognized that the alleged infringe-

ment was not direct passing off, but reasoned that the

Lanham Act covers “economic practices or conduct ‘economi-

cally equivalent’ to palming off,” including in an appropriate

case “reverse passing off.” 648 F.2d at 605. As the court

explained:

As a matter of policy, such conduct, like traditional palm-

ing off, is wrongful because it involves an attempt to

misappropriate or profit from another’s talents and

—— — OO

workmanship. Moreover, in reverse palming off cases,

the originator of the misidentified product is involuntar-

ily deprived of the goodwill that otherwise would stem

from public knowledge of the true source of the satis-

factory product. The ultimate purchaser (or viewer) is

also deprived of knowing the true source of the product

and may even be deceived into believing that it comes

from a different source.

Id. at 606-607 (citations omitted).

The Ninth Circuit’s holding in Montoro is grounded in the

text of Section 43(a). As the court of appeals explained, “the

Lanham Act explicitly eondemnled] false designations or re-

presentations in connection with ‘any goods or services.’”

648 F.2d at 605; see 15 U.S.C. 1125(a) (1982). At the time

that Montoro was decided, the Lanham Act did not require a

plaintiff to show that replacing the star’s name with an actor

who did not appear in the film was “likely to cause confusion”

as to the “origin” of the film. 15 U.S.C. 1125(a)(1)(A) (2000)

(emphasis added). But the court in Montoro emphasized

that a false designation about who starred in a film is likely

to affect how moviegoers perceive the nature or attributes of

the film. See 648 F.2d at 607 (“In the film industry, a par-

ticular actor’s performance * * * may be the primary

attraction for movie-goers,” and “being accurately credited

for films in which they have played would seem to be of criti-

cal importance in enabling actors to sell their ‘services,’ i. e.,

their performances.”).°

The result in Montoro also fits under Section 43(a)(1)(B) of the

Lanham Act, which was added in 1988 (seven years after Montoro). That

subsection is not limited to false designations as to origin and instead

prohibits a producer from making a “false or misleading description of fact

* * * in commercial advertising or promotion” as to a good’s “nature,

characteristics, qualities, or geographic origin.” 15 U.S.C. 1125(a)(1)(B).

The Lanham Act claim in Montoro was specifically aimed at “the movie's

advertising and credits,” 648 F.2d at 604, and advertising an actor who

b. Another class of reverse passing off cases in which the

lower courts have applied the Lanham Act involves the re-

labeling and resale of goods manufactured by another pro-

ducer as the defendant’s own goods. For example, in Web

Printing Controls Co. v. Oxy-Dry Corp., 906 F. 2d 1202 (7th

Cir. 1990), Oxy-Dry purchased high-tech printing equipment

from Web Printing and then resold the equipment. Before

reselling the equipment, Oxy-Dry “obliterated, hid, or other-

wise confused [Web Printing’s] trademark” and thus

“claim[ed] credit for the quality of [Web Printing's] pro-

ducts.” Id. at 1203. The courts concluded that Oxy-Dry

violated Section 43(a) by falsely labeling and passing off Web

Printing’s products as its own in a manner that was likely to

deceive consumers as to the source of the goods. Id. at 1204

& n.2; see Montoro, 648 F.2d at 606 & n.5 (discussing re-

labeling cases); Arrow United Indus. Inc. v. Hugh Richards,

Inc., 678 F.2d 410, 416 (2d Cir. 1982).”

That conclusion, too, comports with the text of Section

43(a). When A acquires a good manufactured by his com-

petitor, B, obliterates B's label, and puts A’s own label on the

good, A has made a “faise designation of origin” or “false or

misleading description of fact” as to the source of the

good—the good was manufactured by B, not A. See Cross,

supra, at 723 (“If defendant acquires a product originally

manufactured by plaintiff and merely resells it as its own, it

does not appear in a movie as the movie's star misrepresents the movie’s

“nature, characteristics, [or] qualities” (Section AN).

9 In some of the relabeling cases, the competitor makes sli ht changes

to the plaintiff's product before scraping off the plaintiff's mark and

affixing its own mark on the good. In Arrow United, for — the

competitor slightly altered the size of the product—an “Arrow-Foil

damper used to regulate air flow. 678 F.2d at 415. Nevertheless, the

court of appeals concluded that the plaintiff was entitled to preliminary

relief under Section 43(a) of the Lanham Act after showing that the

defendant had simply put its own label on the plaintiff's product because it

was incapable of producing the product itself. Id. at 415-416.

is clear that plaintiff is the ‘origin,’ at least in the absolute

sense of the word.”); id. at 722 nn.63 & 64 (citing cases). At

the same time, by simply relabeling B’s product as A’s own,

A is likely to confuse or deceive consumers as to the source

of its goods, which were manufactured by B.

e. In other cases, however, courts have rejected reverse

passing off claims under the Lanham Act where, even

though a producer began with a competitor’s product, it

manufactured its own good before attaching its label to it. In

Roho, Inc. v. Marquis, 902 F.2d 356, 357 (5th Cir. 1990), for

example, the defendant used cushions made by the plaintiff

to create a “therapeutic mattress.” The plaintiff argued that

because defendant had produced only “a slightly modified

version of [its] mattress, which [the defendant] sold under

his own label, he has-violated section 43(a).” Id. at 359. But

in rejecting that “reverse palming off” claim, the court of

appeals reasoned that, regardless of the “similarity” in the

two products, the defendant had “actually created” a “new

product” through its own] efforts.” Id. at 360-361.

To be clear, not only does the Lanham Act not prevent the

sort of imitation in Roho, but the Nation’s intellectual prop-

erty laws encourage that kind of imitation in order to

promote competition and innovation. When an existing work

is copied and refined, a good is often improved and value is

added to the economy. As Justice Story observed long ago,

10 Another kind of reverse passing off that courts have found action-

able under Section 43(a) occurs where a producer uses a photograph of a

competitor’s product to advertise or promote its own good. See, e. g.,

Cooper Indus., Inc. v. Leatherman Tool Group, Inc., 582 U.S. 424, 428

(2001) (defendant retouched photograph of plaintiff's pocket survival tool

and removed trademark and then labeled photograph as defendant's own”

pocket tool in marketing materials and catalogues); Truck Equip. Serv.

Co. v. Fruehauf Corp., 536 F.2d 1210, 1216 (8th Cir.) (farm equipment

manufacturer labeled photograph of competitor’s grain trailer as its own

in manufacturer’s sales literature), cert. denied, 429 U.S. 861 (1976).

Today, that kind of reverse passing off is addressed by Section 43(a)(1)(B).

the “best” way to promote the progress of useful arts is “by

giving the public at large a right to make, construct, use, and

vend the thing invented, at as early a period as possible.”

Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 19 (1829); cf. Feist

Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349-350

(1991). That public right, perhaps as much as any other

factor, explains the unparalleled progress and ingenuity of

American science and arts.

3. As the foregoing case law illustrates, reverse passing

off may be actionable under Section 43(a) of the Lanham Act.

But at the same time, because Section 43(a) was designed to

prevent direct passing off—and thus eliminate the acute con-

fusion such passing off creates as to the source of goods—in

considering claims for reverse passing off under the Lanham

Act courts should be diligent in ensuring that the require-

ments of Section 43(a) are met. That is especially true when

a Lanham Act claim for reverse passing off does not involve

a misattribution of credit, as in Montoro, or the relabeling

and resale of goods that were actually manufactured by

another competitor, as in Oxy-Dry Corp.

Furthermore, courts should be cognizant that Section

43(a) of the Lanham Act was not intended to establish an

independent duty on the part of a producer who copies a

work within the public domain to identify the work’s original

creator. See Cleary v. News Corp., 30 F.3d 1255, 1260 (9th

Cir. 1994) (“{[T]he case law does suggest that the Lan-

ham Act does not create a duty of express attribution, but

does protect against misattribution.”); Restatement § 5, Re-

porters’ Note cmt. b (“The case law does not recognize an

affirmative duty on the part of a seller to disclose the

identity of the manufacturer or producer of goods offered for

sale; liability is imposed only on the basis of an express or

implied misrepresentation that the goods have been pro-

duced by the actor or a third person.”) (citing cases); 4

McCarthy § 27:85, at 27-156 to 27-157 (“[Montoro} holds only

LN em

that mis-attribution violates § 43(a), not that the mere re-

moval of a credit created falsity and not that every actor and

everyone that worked on a film is entitled under § 43(a) to

receive screen credit.”) (emphasis added).

As a result, in a typical case, a producer who copies a work

that is in the public domain, manufactures its own copy or re-

finement of the work, and clearly marks the copy as its own

good, does not violate Section 43(a) simply by failing to

credit the original creator of the underlying work.

D. Other Considerations Also Caution Against Over-

extending The Lanham Act In This Context

Several additional conside.ations counsel against con-

struing Section 43(a) of the Lanham Act in a manner that

would establish a generalized duty on the part of producers

to identify the original creators of works that have entered

the public domain.

: 1. In construing the Lanham Act, this Court has been

careful to caution against misuse or over-extension” of the

trademark protection into areas traditionally occupied by pa-

tent or copyright. Traf Fix, 532 U.S. at 29; see id. at 34 (“The

Lanham Act does not exist to reward manufacturers for

their — in creating a particular device; that is the

purpose o the patent law and its period of exclusivity.”).

discussed above, while the patent and copyright — *

ereators substantial rights to prevent the copying of their

works (whether eredited or uneredited) for limited terms

the Court has repeatedly affirmed the public's right to copy

I See also, e. g., Kennedy v. National Juvenile Detention ’

F.3d 690, 696 (7th Cir. 1999) (“{I]t is generally accepted —

who sells or licenses his work, absent an express provision in a contract

does not have an inherent right to be credited as the author of the work.”)

(distinguishing Montoro), cert. denied, 528 U.S. 1159 (2000); 3 Nimmer

§ 8D.03(A][1] (The general rule is that outside of copyright or contract, an

author does not have a right of attribution for its work).

NS —— A ³ - U m •

works once they have entered the public domain. See id. at

32 Bonito Boats, 489 U.S. at 150-151.”

To be sure, the Court also has emphasized that the

public's right to copy such goods is conditioned by laws, such

as the Lanham Act, designed to “‘protect businesses in the

use of their trademarks, labels, or distinctive dress in the

packaging of goods so as to prevent others, by imitating such

markings, from misleading purchasers as to the source of the

goods.’” Bonito Boats, 489 U.S. at 154; see id. at 166. But in

discussing such trademark protection, the Court has focused

on the obligation of a competitor who copies another’s good

to identify the copy as its own product (i. e., to prevent pass-

ing off), and not necessarily to identify the good’s original

creator. See, e.g., Kellogg Co. v. National Biscuit Co., 305

U.S. 111, 120-121 (1938) (Kellogg “was free to use the pillow-

shaped form, subject only to the obligation to identify its

product lest it be mistaken for that of the plaintiff,” which

Kellogg did by selling its good in packaging that bears!

prominently the Kellogg name”).

12 See, e. g., Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 232-233

(1964); Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 237 (1964);

Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 119-120 (1938); Singer

Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185 (1896); see also G. Ricordi &

Co., 194 F.2d at 914-915, discussed in note 4, supra.

13 Thus, for example, there was no suggestion in the recent TrafFiz

case that TrafFix’s ability to copy MDI’s dual-spring sign stand after the

patent on that sign stand expired was subject to any requirement under

the Lanham Act that TrafFix put a label on its sign stands specifically

crediting MDI, or for that matter the device’s inventor, Robert Sarkisian,

as the original creator of its dual-spring sign stand. At the same time,

MDI could—and did—invoke the Lanham Act to prevent TrafFix from

selling its sign stands with a name (WindBuster) that was confusingly

similar to MDI’s (WindMaster). 532 U.S. at 26. Protecting against the use

of a confusingly similar mark—and not imposing a duty on producers to

credit the original creator of a work—is the way in which the Lanham Act

has traditionally been invoked.

—

In deciding this case, the Court should avoid construing

the Lanham Act in a manner that would enable creators to

extend in perpetuity the protections available to creators for

only a limited time under the patent and copyright laws,

including the ability of a patent or copyright owner to pre-

vent the uncredited copying of a registered work. Cf.

Qualitex, 514 U.S. at 164 (“It is the province of patent law,

not trademark law, to encourage innovation. by granting

inventors a monopoly over new product designs or functions

for a limited time, * * * after which competitors are free to

use the innovation.”) (citations omitted); Attia v. Society of

the New York Hosp., 201 F.3d 50, 59 (2d Cir. 1999), cert.

denied, 531 U.S. 843 (2000). Indeed, respondents initiated

this action under the Copyright Act and, while they may

prevail on their copyright claim based on the book, they

could have readily prevented petitioner from distributing its

Campaigns series if Fox had not allowed the copyright on

the Crusade television series to expire in 1977.

2. Nor is there any reason to read into the Lanham Act a

specialized right of attribution for the authors of artistic

works. Congress knows how to establish such rights when it

wants to. In 1990, Congress passed the Visual Artists

Rights Act (VARA), Pub. L. No. 101-650, § 603(a), 104 Stat.

5128, which, inter alia, provides that the authors of certain

artistic works “shall have the right * to claim

authorship of that work.” 17 U.S.C. 106A(a)(1)(A). But that

explicit right of attribution is carefully limited. First, the

right attaches only to specified “work{s] of visual art,” such

as paintings, sculptures, and photographs. 17 U.S.C. 101."

Second, the right is personal to the artist. 17 U.S.C. 106A(b)

and (e). Third, the right only endures for “the life of the

Among other things, the Act’s definition of “work of visual art”

specifically excludes books, motion pictures and audiovisual works, and

works for hire. 17 U.S.C. 101. As a result, the Act has no application to

the type of work at issue in this case.

author.” 17 U.S.C. 106A(d)(1). Recognizing in Section 43(a)

of the Lanham Act an independent duty on the part of

producers to credit the creators of original works would all

but render superfluous VARA’s carefully crafted right of

attribution with respect to only specific works.

3. Adopting a generalized rule requiring producers who

copy works in the public domain to identify a work’s original

creator also could spark Lanham Act litigation over claims of

improper approval or endorsement. Section 43(a) of the

Lanham Act prohibits not only false or misleading designa-

tions as to origin, but false or misleading designations of

fact that are likely to cause confusion as to the “sponsor-

ship” or “approval” of a good by another person. 15 U.S.C.

1125(a)(1)(A). While some original creators may seek attri-

bution from copiers, others may view such attribution as an

unwelcome sign that they sponsor or approve of a com-

petitor’s copy. That is especially true in a case, such as this,

where an original work has been altered by a competitor.

See, e.g., Gilliam v. American Broad. Cos., 538 F.2d 14, 24

(2d Cir. 1976).

At the same time, interpreting the Lanham Act to estab-

lish a generalized right of attribution would require the

courts to develop a new body of case law over what form or

detail such attribution must take. In Gilliam, for example,

the court debated whether the Lanham Act would be satis-

fied if defendants had aired a legend at the beginning of an

edited broadcast of Monty Pythons Flying Circus stating

that Monty Python did not endorse the edited work, or

whether such a legend would have to run during the entire

broadcast. See id. at 25 n.13; id. 27 n.1 (Gurfein, J., con-

curring); cf. Lamothe v. Atlantic Recording Corp., 847 F. 2d

1403, 1408 (9th Cir. 1988) (partial attribution with respect to

songs). The copyright laws avoid that problem by leaving to

tion to determine whether—and, if so, on what terms—to

license copying of their works.

Such a regime would create a Catch-22. On the one hand,

producers could face Lanham Act liability for failing to

credit the original creators of works on which their lawful

copies are based and, on the other hand, they could face

liability for furnishing such credit when an original creator

does not want it. Even the mere threat of such litigation

could stifle competition by discouraging producers from

copying and selling works in the public domain. Cf. Wal-

Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 214 (2000)

(“Competition is deterred * * * not merely by successful

suit but by the plausible threat of successful suit”).

4. Finally, there are other protections under the Lanham

Act to prevent against confusion when a producer copies a

work in the public domain without crediting the original

creator. The Lanham Act prevents a producer from selling

his copy under a confusingly similar mark as the original

work. See 15 U.S.C. 1125(a); TrafFix, 532 U.S. at 28. In

addition, the Lanham Act prevents a producer from dressing

his copy in a way that is confusingly similar to a competitor’s

design or packaging. See 15 U.S.C. 1125(a)(3); Wal-Mart,

529 U.S. at 209. Carefully policing the trademarks, or trade

dress, used by producers who copy goods in the public do-

main is the conventional stuff of trademark law, and typi-

cally is sufficient to protect against consumer confusion as to

a good’s source. Requiring producers under the Lanham Act

to go further and credit a good’s original creator should be

the exception and not the rule.”

15 Of course, the original creators of works, or those with the exclusive

rights to sell such works, also may engage in self-protection by advertising

or promoting their goods as the “real thing,” and thus distinguish their

own goods from copies.

E. The Court Of Appeals’ Lanham Act Analysis In This

Case Is Fundamentally Flawed

1. The reverse passing off claim in this case does not fit

into either of the categories discussed above in which courts

have usually found violations of Section 43(a). Unlike the

situation in Montoro, the court of appeals did not find that

petitioner made any misattribution about its Campaigns

videos series; rather, the court relied on petitioner’s distri-

bution of the series “without attribution to Fox.” Pet. App.

3a (emphasis added). That is, the court of appeals grounded

its decision on a lack of attribution, not on a misattribution.

Likewise, petitioner did not simply purchase respondents’

videos, obliterate respondents’ label, and then put peti-

tioner’s own label on respondents’ videos; rather, petitioner

manufactured and refined its own copy, which it sells as its

own good. The Lanham Act claim in this case accordingly

merits careful review under Section 43(a)’s terms. The court

of appeals in this case failed to engage in such an inquiry.

2. a. By identifying its Campaign video series as its own

good, petitioner has not made a “false designation of origin”

or “false or misleading description of fact” as to the “origin”

of that good. 15 U.S.C. 1125(a)(1(A). Section 43(a)’s use of

“origin” has been read to include not simply geographic

origin, but also origin of source or manufacture Two

Pesos, 505 U.S. at 779 (Stevens, J., concurring); id. at

785 (Thomas, J., concurring) (“source of production”); see

Qualitexr, 514 U.S. at 166 (a trademark “distinguishes a

firm’s goods and identifies their source”); 15 U.S.C. 1127 (a

“trademark” is used “to identify and distinguish” one per-

son’s goods from the goods “manufactured or sold by others

and to indicate the source of the goods”). Petitioner is the

source of its Campaigns video series, and the place for con-

sumers to go if they experience problems with that good.

Petitioner produced and manufactures its Campaigns video

series using its own video production and manufacturing

equipment. Indeed, the court of appeals itself recognized

that Campaigns was “manufactured by [petitioner].” Pet.

App. 3a.

The fact that the content of petitioner’s Campaigns was

substantially copied from the original Crusade television

series does not alone compel the conclusion that petitioner

misrepresented the “origin” of its video series. As discussed

above, in creating its Campaigns series petitioner did alter

the original Crusade television series in certain respects and,

perhaps in the eyes of some viewers, even improved it. See

p. 3, supra. Indeed, assuming petitioner did not infringe a

valid copyright on the Crusade series, petitioner’s selection

and arrangement of new music, a new opening title se-

quence, movement of the recap to the beginning, and crea-

tion of a new final closing likely would be sufficient to

establish it as the author of a derivative work that could

itself qualify for copyright protection. See 17 U.S.C. 101;

Feist Publ us, Inc., 499 U.S. at 345-347; Waldman Publ’g

Corp. v. Landoll, Inc., 43 F.3d 775, 782 (2d Cir. 1994). When

an edited copy of a creative work not subject to copyright

satisfies the originality requirement for a derivative work, it

hardly follows that a producer misrepresents the “origin” of

such a derivative work by putting its own label on it.“

The court of appeals did not rely on the screen credits in

the Campaigns videos. But, as discussed, petitioner and the

listed employees were in fact responsible for the production

of Campaigns. See p. 3, supra. The credits in this case,

therefure, do not contain the sort of misattribution in Mon-

toro. Moreover, names appearing in the screen credits of a

movie—which often include a variety of individuals such as

actors, directors, make-up artists, and costume designers—

do not in ordinary parlance identify the “origin” of a good;

'6 Even respondents have tacitly acknowledged that petitioner “cre-

ateldy Campaigns insofar as it copied and altered it. Resps. C.A. Br. 9

(discussing how petitioner ereateſd] Campaigns”).

they tend to identify the people who appeared in or contri-

buted to a film. In addition, consumers deciding whether to

purchase a video or buy a movie ticket are most likely to rely

on a feature’s advertising or promotion (including a video’s

packaging or label), and not on screen credits that are acces-

sible only by viewing the feature.

In any event, in finding a violation of Section 43(a), the

court of appeals relied exclusively on petitioner’s distribu-

tion of Campaigns “without attribution to Fox.” Pet. App.

3a. To the extent that the court believed that Section 43(a)

establishes a freestanding right of attribution, the court was

mistaken.”

b. Even when there is a false or misleading designation

as to origin, Section 43(a)(1)(A) requires a plaintiff to-show

that such a designation was “likely to cause confusion * * *

as to the origin” of the good. 15 U.S.C. 112% (A0. The

court of appeals automatically assumed that such a likelihood

of confusion exists because petitioner's Campaigns series is

a “substantial{]” copy—or “bodily appropriation”—of the

original Crusades series. Pet. App. 3a. That was error.

In Lanham Act cases, courts typically determine likeli-

hood of confusion by looking to a variety of factors, only one

17 Interpreting Section 43(a)’s reference to “origin” to include any

original creator of an artistic work would raise other problems. For

example, in this case Time, not Fox, arguably created the original Cru-

sade television series in an artistic sense. See note 1, supra. But the court

of appeals held that Foz, not Time, was entitled to attribution. Fox hel

the initial copyright on the Crusade series. But interpreting the Lanhan.

Act to require attribution for an original copyright holder would be even

more problematic from the standpoint of overextending trademark law

into the province of copyright law. In addition, the court of appeals

analysis reveals that imposing a generalized attribution requirement for

artistic works could lead to disputes about precisely who is entitled to

such attribution, especially in the case of a work, such as Crusades, to

which many may have contributed in some part. Interpreting “origin” to

mean the source or manufacturer of a good avoids these problems.

of which is the similarity of the products. See, e. g., Barbecue

Marz, Inc. v. 551 Ogden, Inc., 235 F.3d 1041, 1043-1044 (7th

Cir. 2000) (listing factors); International Ass n of Machinists

v. Winship Green Nursing Ctr., 103 F.3d 196, 201 (1st Cir.

1996); Blinded Veterans Ass’n v. Blinded Am. Veterans

Found., 872 F.2d 1035, 1043-1044 (D.C. Cir. 1989) (Ginsburg,

J.); Polaroid Corp. v. Polaroid Elecs. Corp., 287 F.2d 492,

495 (2d Cir.) (Friendly, J.), cert. denied, 368 U.S. 820 (1961);

3 McCarthy § 23:19, at 23-66 to 23-68. To establish a likeli-

hood of confusion, a plaintiff must show that the allegedly

infringing conduct is likely to “confound[{] an appreciable

number of reasonably prudent purchasers exercising ordi-

nary care.” Winship Green Nursing Ctr., 103 F.3d at 201.

“(C)onfusion resulting from the consuming public’s careless-

ness, indifference, or ennui will not suffice.” bid.

Moreover, courts have recognized that consumer con-

fusion is an essential element of reverse passing off claims

under Section 43(a). See, e. g., Lipscher v. LPR Publ us, Inc.,

266 F.3d 1305, 1313 (11th Cir. 2001); Murray Hill Publ us,

Inc. v. ABC Communications, Inc., 264 F.3d 622, 634 (6th

Cir. 2001); King v. Ames, 179 F.3d 370, 374-375 (5th Cir.

1999); Batiste v. Island Records, Inc., 179 F.3d 217, 224-225

(5th Cir. 1999), cert. denied, 528 U.S. 1076 (2000); Agee v.

Paramount Communications, Inc., 59 F.3d 317, 327 (2d Cir.

1995); F. E. L. Publ us, Ltd. v. Catholic Bishop, 214 U.S. P. Q.

(BNA) 409, 416-417 (7th Cir.), cert. denied, 459 U.S. 859

(1982).

'® As explained in the Restatement (§ 2 cmt. d), when a “representation

is literally false, a court may conclude in the absence of credible evidence

to the contrary that the representation is likely to deceive or mislead.”

But “{wJhen the tendency to deceive or mislead turns instead upon the

inferences to be drawn from the representation or upon a choice among

several possible interpretations, direct evidence of the meaning attached

te the representation by the relevant audience may be necessary to

establish a likelihood of deception.” Ibid. (emphasis added). The alleged

In many cases, courts may determine likelihood of con-

fusion without extensive evidentiary proceedings. But the

court of appeals did not consider whether there was any evi-

dence of consumer confusion as to the — of —

a from the fact that the content of the Campaigns videos

— similar to the content of the Crusade

series. It did not consider, for example, whether there was

any evidence as to the familiarity of typical consumers with

the Crusade television series; the respective channels in

which petitioner and respondents advertise and distribute

their goods; or any actual confusion with respect to the

origin of the Crusade television series. See 4 MeCarthy

§ 23:2.1, at 23-12 (discussing types of confusion evidence).

More fundamentally, assuming that the requisite con-

fusion as to origin automatically exists under Section

43(a)(1)(A) whenever a producer has copied substantially, or

entirely, a creative work in effect establishes a generalized

right to attribution (and rule against uncredited copying)

that is not supported by the text or history of the Lanham

Act or the other considerations discussed above. Thus, even

if the Court concludes that respondents have shown a false

or misleading designation as to origin, the Court should

remand for further consideration of whether the record

supports a finding of likely confusion as to origin.

misrepresentation in this case at best falls into the category in which

direct evidence is typically required.

19 The need for such record evidence may be particularly important in

cases, such as this, where the defendant sells goods at retail outlets known

for selling copies of goods at discount prices. As one commentator has

explained, “{iJn today’s economy, with its vast distribution chains and

large retailers, consumers are accustomed to buying goods that are

produced by unknown people. Therefore, a defendant’s use of its name or

mark may not be interpreted as an indication of origin.” Cross, supra, at

753. See also Blinded Veterans, 872 F. 2d at 1045 (consumers’ awareness

of original mark may affect likelihood of confusion).

— — —

3. Even when a case does not fit within Section

43(a)(1)(A), there may still be concern about whether a

producer’s designation or representation about a good could

mislead consumers in a matter that is material to their pur-

chasing decision. Section 43(a)(1)(B) is not limited to false or

misleading statements as to origin, but instead provides

broader protections in the specific context of commercial ad-

vertising and promotion. As discussed, that subsection,

which was added in 1988, applies to any “false or misleading

deseriptionſs] of fact” that misrepresent “the nature, charac-

teristics, [or] qualities” of a good in “commercial advertising

or promotion.” 15 U.S.C. 1125(a)(1)(B). Accordingly, in

certain instances, Section 43(a)(1)(B) may provide a cause of

action that is not available under subsection (a)(1)(A).

But in this case, respondents have not focused on any

particular advertising or promotional practice of petitioner.

Moreover, respondents have litigated their reverse passing

off claim under Section 43(a)(1)(A), and thus neither the

court of appeals nor the district court considered the appli-

cation of Section 43(a)(1)(B) in this case. See Pet. App. 50a-

51a n.4; J. A. 130a- 13 1a. The Court’s usual practice is to “deal

with the case as it came here and affirm or reverse based on

the ground relied on below.” Peralta v. Heights Med. Ctr.,

Inc., 485 U.S. 80, 86 (1988). There is no reason to do

otherwise here.”

0 In International News Service v. Associated Press, 248 U.S. 215

(1918), this Court held that a news service violated common law by “taking

news bodily from the bulletin boards and early editions of [Associated

Press] newspapers and selling it as its own” later that same day. Id. at

231. As this Court recently stated, “the unfair competition at issue in

International News Service amounted to nothing short of theft of proprie-

tary information.” College Sav. Bank v. Florida Prenaid Postsecondary

Educ. Expense Bd., 527 U.S. 666, 674 (1999). International News Services

has not been applied outside its “unusual circumstances.” Restatement

§ 38 cmt. e. Respondents in this case have not relied on the common law

CONCLUSION

The judgment of the court of appeals should be reversed

and the case remanded for further proceedings.

Respectfully submitted.

THEODORE B. OLSON

Solicitor General

ROBERT D. MCCALLUM, JR.

Assistant Attorney General

PAUL D. CLEMENT

Deputy Solicitor General

GREGORY G. GARRE

Assistant to the Solicitor

General

ANTHONY J. STEINMEYER

MARK S. DAVIES

Attorneys

FEBRUARY 2003

rule of International News Services, and the case does not, in any event,

shed light on the Lanham Act issue in this case.

APPENDIX

1. Section 43(a)(1) of Title 15, United States Code,

provides:

§ 1125. False designations of origin, false descriptions,

and dilution forbidden

(a) Civil action

(1) Any person who, on or in connection with any goods

or services, or any container for goods, uses in commerce any

word, term, name, symbol, or device, or any combination

thereof, or any false designation of origin, false or misleading

description of fact, or false or misleading representation of

fact, which—

(A) is likely to cause confusion, or to cause

mistake, or to deceive as to the affiliation, connection,

or association of such person with another person, or as

to the origin, sponsorship, or approval of his or her

goods, services, or commercial activities by another

person, or

(B) in commercial advertising or promotion, mis-

represents the nature, characteristics, qualities, or

geographic origin of his or her or another person’s

goods, services, or commercial activities,

shall be liable in a civil action by any person who believes

that he or she is or is likely to be damaged by such act.

(la)

2. Section 43(a) of Title 15, United States Code (1982),

provides:

§ 1125. False designations of origin and false des-

criptions forbidden

(a) Civil action

Any person who shall affix, apply, or annex, or use in

connection with any goods or services, or any container or

containers for goods, a false designation of origin, or any

false description or representation, including words or other

symbols tending falsely to describe or represent the same,

and shall cause such goods or services to enter into com-

merce, and any person who shall with knowledge of the

falsity of such designation of origin or description or rep-

resentation cause or procure the same to be transported or

used in commerce or deliver the same to any carrier to be

transported or used, shall be liable to a civil action by any

person doing business in the locality falsely indicated as that

of origin or in the region in which said locality is situated, or

by any person who believes that he is or is likely to be

damaged by the use of any such false description or

representation.

8. Section 106A of Title 17, United States Code

provides:

§ 106A. Rights of certain authors to attribution and

integrity

(a) RIGHTS OF ATTRIBUTION AND INTEGRITY.—Subject

to Section 107 and independent of the exclusive rights

provided in section 106, the author of a work of visual art—

(1) shall have the right—

(A) to claim authorship of that work, and

(B) to prevent the use of his or her name as the

author of any work of visual art which he or she did not

create;

(2) shall have the right to prevent the use of his or her

name as the author of the work of visual art in the event

of a distortion, mutilation, or other modification of the

work which would be prejudicial to his or her honor or

reputation; and

(3) subject to the limitations set forth in section

113(d), shall have the right—

(A) to prevent any intentional distortion, muti-

lation, or other modification of that work which would

be prejudicial to his or her honor or reputation, and any

intentional distortion, mutilation, or modification of

that work is a violation of that right, and

(B) to prevent any destruction of a work of

recognized stature, and any intentional or grossly

negligent destruction of that work is a violation of that

right.

(b) SCOPE AND EXERCISE OF RIGHTS.—Only the

author of a work of visual art has the rights conferred by

subsection (a) in that work, whether or not the author is the

are coowners of the rights conferred by subsection (a) in that

work.

(e) EXCEPTIONS.—(1) The modification of a work of

visual art which is a result of the passage of time or the in-

herent nature of the materials is not a distortion, mutilation,

or other modification described in subsection (a)(3)(A).

(2) The modification of a work of visual art which is the

result of conservation, or of the public presentation, in-

cluding lighting and placement, of the work is not a destruc-

tion, distortion, mutilation, or other modification described in

subsection (a)(3) unless the modification is caused by gross

negligence.

(3) The rights described in paragraphs (1) and (2) of

subsection (a) shall not apply to any reproduction, depiction,

portrayal, or other use of a work in, upon, or in any

connection with any item described in subparagraph (A) or

(B) of the definition of “work of visual art” in section 101, and

any such reproduction, depiction, portrayal, or other use of a

work is not a destruction, distortion, mutilation, or other

modification described in paragraph (3) of subsection (a).

(d) DURATION OF RIGHTS.—(1) With respect to works

of visual art created on or after the effective date set forth in

section 610(a) of the Visual Artists Rights Act of 1990, the

rights conferred by subsection (a) shall endure for a term

consisting of the life of the author.

(2) With respect to works of visual art created before the

effective date set forth in section 610(a) of the Visual Artists

Rights Act of 1990, but title to which has not, as of such

effective date, been transferred from the author, the rights

conferred by subsection (a) shall be coextensive with, and

shall expire at the same time as, the rights conferred by

section 106.

(3) In the case of a joint work prepared by two or more

authors, the rights conferred by subsection (a) shall endure

for a term consisting of the life of the last surviving author.

(4) All terms of the rights confer. ed by subsection (a)

run to the end of the calendar year in which they would

otherwise expire.

(e) TRANSFER AND WAIVER.—(1) The rights conferred

by subsection (a) may not be transferred, but those rights

may be waived if the author expressly agrees to such waiver

in a written instrument signed by the author. Such

instrument shall specifically identify the work, and uses of

that work, to which the waiver applies, and the waiver shall

apply only to the work and uses so identified. In the case of

a joint work prepared by two or more authors, a waiver of

rights under this paragraph made by one such author waives

such rights for all such authors.

2 Ownership of the rights conferred by subsection (a)

with respect to a work of visual art is distinct from owner-

ship of any copy of that work, or of a copyright or any

exclusive right under a copyright in that work. Transfer of

ownership of any copy of a work of visual art, or of a

constitute a waiver of the rights conferred by subsection (a).

Except as may otherwise be agreed by the author in a

written instrument signed by the author, a waiver of the

rights conferred by subsection (a) with respect to a work of

visual art shall not constitute a transfer of ownership of any

copy of that work, or of ownership of a copyright or of any

exclusive right under a copyright in that work.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.