Bodily Appropriation" Of A Creative Work: Can Trademark Law Provide A Remedy When Copyright Law Cannot?

Defendant Dastar (the other named defendants were the distributors of the videotape manufactured by Dastar) launched its video production business with the Crusade Series, which it re-titled Campaigns and altered by 1) adding a new opening title sequence, credit page and closing; 2) substituting 26 new chapter-title sequences for those that appeared in the original Fox version; 3) deleting references to the book, including images of the book that appeared at the beginning of each episode or “chapter” of the series; 4) moving the original's “recap” to the beginning of the series and retitling it “preview”; and 5) inserting narrated chapter introductions. All remaining aspects of the original were untouched, including the original narration. Moreover, Dastar's version included text either directly copied or very closely paraphrased from the book: in number of pages, over half the book was copied or paraphrased; and in number of lines, over 10% was copied or paraphrased. In addition to copying much of the literal text of the book, Dastar also used visual images to mirror the structure and organization of the book in its version of the series.

The District and Circuit Court Holdings

The district court granted summary judgment for Fox, awarding damages under the copyright law. It also entered summary judgment for Fox on the Lanham Act claim. The Ninth Circuit, in a brief unpublished decision, found a factual issue as to Fox' copyright ownership precluded summary judgment on the copyright claim. Specifically, the circuit court found that there were fact issues surrounding determination of whether the book was a “work made for hire” commissioned by Doubleday, because it was unclear that this is what Eisenhower intended in the absence of a work made for hire agreement. The court affirmed, however, the district court's grant of summary judgment on the Lanham Act claim.

The brief affirmance ruled cursorily on the issue of the standard for relief under the Lanham Act, stating simply that it was unnecessary for Fox to make “an independent showing that the series manufactured by Dastar resulted in consumer confusion.” Rather, “Dastar's 'bodily appropriation' of Fox's original series is sufficient to establish the reverse passing off, because the 'bodily appropriation' test subsumes the 'less demanding 'consumer confusion' standard.'” (citation omitted).

Just as with the circuit court, the district court went into little detail in support of the holding that the circuit court went on to affirm. Rather, the district court cited the governing law in the Ninth Circuit, to wit, that the plaintiff must demonstrate that the infringing work is a “bodily appropriation” of the original. In so ruling, the court noted that “[b]odily appropriation” is the “copying or unauthorized use of substantially the entire item.” Because Dastar had admitted to copying the original, and to making only minor revisions, and had omitted attribution to the original television series or the book on which it was based, the court found Dastar liable for reverse passing off.

Circuit Courts Split

The district court and circuit court opinions in Dastar are aligned with the law in some circuits and in sharp contrast to the law in others. The Second Circuit, nearly one decade ago, articulated a “substantial similarity” standard for reverse passing off that calls to mind the same standard governing whether there is “copying” under the copyright law. Waldman Publishing Corp. v. Landoll, Inc., 43 F.3d 775 (2d Cir. 1994). This standard is consistent with, if more lenient than, the Ninth Circuit's bodily appropriation test. By contrast, the Fifth, Sixth and Eleventh Circuits all require the plaintiff to make a showing of likelihood of confusion pursuant to a traditional trademark multi-factor analysis. King v. Ames, 179 F.3d 370 (5th Cir. 1999); Murray Hill Publications, Inc. v. ABC Communications, Inc., 264 F.3d 622 (6th Cir. 2001); Lipscher v. LRP Publications Inc., 266 F.3d 1305 (11th Cir. 2001).

Constitutional Issue Raised

The split among the Circuits raises a constitutional question that the Supreme Court may address in its opinion. Specifically, if a plaintiff can demonstrate entitlement to relief under the Lanham Act by showing bodily appropriation, or “substantial similarity,” which is essentially the same as the critical element required to prove copyright infringement, has the plaintiff received a benefit arising from the unconstitutional extension of its rights under the copyright law? This same issue, in a different context, was before the Court in Eldred v. Ashcroft,71 USLW 4052, 65 U.S.P.Q.2d 1225 (January 15, 2003), in which the Supreme Court recently held that the Copyright Term Extension Act was constitutional. The copyright clause of the Constitution grants authority to Congress to issue copyrights and patents “for limited times” in order “[t]o promote the [p]rogress of [s]cience and useful [a]rts, by securing for limited [t]imes to [a]uthors and [i]nventors the exclusive right to their respective [w]ritings and [d]iscoveries.” In protecting works that are “bodily appropriated” under the Lanham Act, regardless of whether they are protected by copyright, Dastar has submitted in its brief in support of its cert petition that the decision below works an unconstitutional extension of copyright. In particular, Dastar argued that protection against copying is extended by application of the Lanham Act to a work that is in the public domain, or due to failure to comply with a formality of the copyright law, has fallen into the public domain; that is not copyrightable; or whose copyright has expired.

Fox argued in opposition to Dastar's petition that Ninth Circuit law does not eliminate plaintiff's need to prove likely confusion in a Lanham Act reverse passing off claim. Instead, Fox contends that likely confusion may be proven with evidence of bodily appropriation, but that the Ninth Circuit has never ruled that this showing, alone, is sufficient to establish likely confusion. Rather, Fox argued, the Ninth Circuit simply failed to recite and apply all of the traditional factors underpinning a trademark likelihood of confusion analysis. Such factors include the willfulness of the infringement, and the identity of the population of consumers to whom the parties' respective videotapes were marketed. Fox also argued that recognition of a Lanham Act claim for reverse passing off is not tantamount to an unconstitutional extension of the duration of copyright. The expiration of a copyright, Fox contended, does not create a license to market public domain works in a way that misleads the consuming public as to their origin, for example, by falsely claiming authorship of works created by others, or omitting an accurate attribution to the original author.

Of course, the Supreme Court may sidestep the constitutional issues entirely by, for example, adopting Fox's argument that the likely confusion standard is required and was implicitly applied by the courts below; or that likely confusion is subsumed by the bodily appropriation standard.

Conclusion

The Dastar decision rests at the crossroads of the law of copyright and the law of trademark. With limited exceptions, such as the federal Visual Artists Rights Act, the U.S. does not recognize independent moral rights (or droit moral). The Supreme Court in Dastar may however, if it so chooses, rule upon whether a right of attribution transcends the boundaries of copyright, and can be best addressed, under current law, by a claim of commercial misrepresentation. If the Court chooses to avoid the constitutional issue, that question will wait for another case and another day.

Can the victim of infringement of a creative work find relief under the trademark law, when relief under the copyright law may not be available, without the need to prove likely consumer confusion? With the Circuit courts split, the Supreme Court recently agreed to decide the issue in Dastar Corp. v. Twentieth Century Fox Film Corp., U.S. NO. 02-428 (granting cert. on January 10, 2003)

Factual Background

Twentieth Century Fox Film Corp. (Fox), a plaintiff in Dastar (the other plaintiffs were the distributors of the Fox television series on videotape), held exclusive television rights in and to a book entitled Crusades in Europe, which General Dwight Eisenhower authored about his experiences in World War II. Fox licensed the television rights from Doubleday, the book's publisher and purported copyright owner. Fox then produced a television program, Crusade Series, comprised of more than two dozen separate half-hour episodes based upon the book. Fox copyrighted the series, but failed to renew copyright when the time came.

Defendant Dastar (the other named defendants were the distributors of the videotape manufactured by Dastar) launched its video production business with the Crusade Series, which it re-titled Campaigns and altered by 1) adding a new opening title sequence, credit page and closing; 2) substituting 26 new chapter-title sequences for those that appeared in the original Fox version; 3) deleting references to the book, including images of the book that appeared at the beginning of each episode or “chapter” of the series; 4) moving the original's “recap” to the beginning of the series and retitling it “preview”; and 5) inserting narrated chapter introductions. All remaining aspects of the original were untouched, including the original narration. Moreover, Dastar's version included text either directly copied or very closely paraphrased from the book: in number of pages, over half the book was copied or paraphrased; and in number of lines, over 10% was copied or paraphrased. In addition to copying much of the literal text of the book, Dastar also used visual images to mirror the structure and organization of the book in its version of the series.

The District and Circuit Court Holdings

The district court granted summary judgment for Fox, awarding damages under the copyright law. It also entered summary judgment for Fox on the Lanham Act claim. The Ninth Circuit, in a brief unpublished decision, found a factual issue as to Fox' copyright ownership precluded summary judgment on the copyright claim. Specifically, the circuit court found that there were fact issues surrounding determination of whether the book was a “work made for hire” commissioned by Doubleday, because it was unclear that this is what Eisenhower intended in the absence of a work made for hire agreement. The court affirmed, however, the district court's grant of summary judgment on the Lanham Act claim.

The brief affirmance ruled cursorily on the issue of the standard for relief under the Lanham Act, stating simply that it was unnecessary for Fox to make “an independent showing that the series manufactured by Dastar resulted in consumer confusion.” Rather, “Dastar's 'bodily appropriation' of Fox's original series is sufficient to establish the reverse passing off, because the 'bodily appropriation' test subsumes the 'less demanding 'consumer confusion' standard.'” (citation omitted).

Just as with the circuit court, the district court went into little detail in support of the holding that the circuit court went on to affirm. Rather, the district court cited the governing law in the Ninth Circuit, to wit, that the plaintiff must demonstrate that the infringing work is a “bodily appropriation” of the original. In so ruling, the court noted that “[b]odily appropriation” is the “copying or unauthorized use of substantially the entire item.” Because Dastar had admitted to copying the original, and to making only minor revisions, and had omitted attribution to the original television series or the book on which it was based, the court found Dastar liable for reverse passing off.

Circuit Courts Split

The district court and circuit court opinions in Dastar are aligned with the law in some circuits and in sharp contrast to the law in others. The Second Circuit, nearly one decade ago, articulated a “substantial similarity” standard for reverse passing off that calls to mind the same standard governing whether there is “copying” under the copyright law. Waldman Publishing Corp. v. Landoll, Inc., 43 F.3d 775 (2d Cir. 1994). This standard is consistent with, if more lenient than, the Ninth Circuit's bodily appropriation test. By contrast, the Fifth, Sixth and Eleventh Circuits all require the plaintiff to make a showing of likelihood of confusion pursuant to a traditional trademark multi-factor analysis. King v. Ames , 179 F.3d 370 (5th Cir. 1999); Murray Hill Publications, Inc. v. ABC Communications, Inc., 264 F.3d 622 (6th Cir. 2001); Lipscher v. LRP Publications Inc., 266 F.3d 1305 (11th Cir. 2001).

Constitutional Issue Raised

The split among the Circuits raises a constitutional question that the Supreme Court may address in its opinion. Specifically, if a plaintiff can demonstrate entitlement to relief under the Lanham Act by showing bodily appropriation, or “substantial similarity,” which is essentially the same as the critical element required to prove copyright infringement, has the plaintiff received a benefit arising from the unconstitutional extension of its rights under the copyright law? This same issue, in a different context, was before the Court in Eldred v. Ashcroft,71 USLW 4052, 65 U.S.P.Q.2d 1225 (January 15, 2003), in which the Supreme Court recently held that the Copyright Term Extension Act was constitutional. The copyright clause of the Constitution grants authority to Congress to issue copyrights and patents “for limited times” in order “[t]o promote the [p]rogress of [s]cience and useful [a]rts, by securing for limited [t]imes to [a]uthors and [i]nventors the exclusive right to their respective [w]ritings and [d]iscoveries.” In protecting works that are “bodily appropriated” under the Lanham Act, regardless of whether they are protected by copyright, Dastar has submitted in its brief in support of its cert petition that the decision below works an unconstitutional extension of copyright. In particular, Dastar argued that protection against copying is extended by application of the Lanham Act to a work that is in the public domain, or due to failure to comply with a formality of the copyright law, has fallen into the public domain; that is not copyrightable; or whose copyright has expired.

Fox argued in opposition to Dastar's petition that Ninth Circuit law does not eliminate plaintiff's need to prove likely confusion in a Lanham Act reverse passing off claim. Instead, Fox contends that likely confusion may be proven with evidence of bodily appropriation, but that the Ninth Circuit has never ruled that this showing, alone, is sufficient to establish likely confusion. Rather, Fox argued, the Ninth Circuit simply failed to recite and apply all of the traditional factors underpinning a trademark likelihood of confusion analysis. Such factors include the willfulness of the infringement, and the identity of the population of consumers to whom the parties' respective videotapes were marketed. Fox also argued that recognition of a Lanham Act claim for reverse passing off is not tantamount to an unconstitutional extension of the duration of copyright. The expiration of a copyright, Fox contended, does not create a license to market public domain works in a way that misleads the consuming public as to their origin, for example, by falsely claiming authorship of works created by others, or omitting an accurate attribution to the original author.

Of course, the Supreme Court may sidestep the constitutional issues entirely by, for example, adopting Fox's argument that the likely confusion standard is required and was implicitly applied by the courts below; or that likely confusion is subsumed by the bodily appropriation standard.

Conclusion

The Dastar decision rests at the crossroads of the law of copyright and the law of trademark. With limited exceptions, such as the federal Visual Artists Rights Act, the U.S. does not recognize independent moral rights (or droit moral). The Supreme Court in Dastar may however, if it so chooses, rule upon whether a right of attribution transcends the boundaries of copyright, and can be best addressed, under current law, by a claim of commercial misrepresentation. If the Court chooses to avoid the constitutional issue, that question will wait for another case and another day.