<b><i>Decision of Note</b></i> No Credit Needed For Public Domain Materials

Enacted in 1946, the Lanham Act prohibits false designation of origin for any good or service, including any action that creates confusion as to the origin of the good. But Justice Antonin Scalia, writing for the Supreme Court, said that it would be impractical to require publishers to give credit to all the originators of their products. Scalia offered the example of the 1954 movie 'Carmen Jones,' which strictly speaking should give credit to Oscar Hammerstein II, who wrote the musical on which it was based; to Georges Bizet, who wrote the opera on which the musical was based; and to Prosper Merimee, who wrote the novel on which the opera was based.

In the case before the Supreme Court, Scalia added, an overly broad interpretation of the Lanham Act could require that credit go to even the military cameramen who took the wartime footage. 'We do not think the Lanham Act requires this search for the source of the Nile and all its tributaries,' wrote Scalia.

Scalia noted that Fox could have protected itself by renewing the copyright, which would have led to 'an easy case of copyright infringement' against Dastar. In recent years, the Lanham Act had become part of the arsenal of legal weapons used by copyright holders against alleged infringers. The Dastar ruling appears to eliminate the Lanham Act's use of this legal strategy. The ruling, by giving added protection to the public domain, also stands in contrast to January's Eldred v. Ashcroft ruling, in which the high court said Congress could limit the public domain by substantially extending copyrights.

In a major narrowing of the Lanham Act, the U.S. Supreme Court has ruled unanimously that the law allows the copying of public domain material without giving credit to its source. The 8-0 ruling in Dastar Corp. v. 20th Century Fox Film Corp., 02-428, removes Lanham Act liability from parties that repackage facts or information that originated elsewhere. It could sweep away lawsuits often filed against major studios and publishers by authors and others who claim they were given insufficient credit for their contributions.

In spite of the long-range benefit for studios, the ruling itself was a defeat for Fox, which sued Dastar over Dastar's 'Campaigns in Europe' videotapes marketed in 1998. The tapes made heavy use of footage from a Fox TV series called 'Crusade in Europe,' based on Dwight Eisenhower's book of the same name. The TV series originally aired in 1949 and the copyright expired in 1977. The Dastar package included a new opening sequence but did not use all of the footage from the TV series. In its marketing, Dastar made no mention of the series or the Eisenhower book.

Fox sued, claiming the Dastar product amounted to reverse passing off in violation of the Lanham Act. Fox won at both the district court and the U.S. Court of Appeals for the Ninth Circuit. (One member of the Ninth Circuit panel was U.S. District Judge Charles Breyer, sitting by designation. His participation explains why his brother, Supreme Court Justice Breyer, did not participate in the Supreme Court decision. Breyer routinely recuses himself in cases ruled on earlier by his brother Charles.)

Enacted in 1946, the Lanham Act prohibits false designation of origin for any good or service, including any action that creates confusion as to the origin of the good. But Justice Antonin Scalia, writing for the Supreme Court, said that it would be impractical to require publishers to give credit to all the originators of their products. Scalia offered the example of the 1954 movie 'Carmen Jones,' which strictly speaking should give credit to Oscar Hammerstein II, who wrote the musical on which it was based; to Georges Bizet, who wrote the opera on which the musical was based; and to Prosper Merimee, who wrote the novel on which the opera was based.

In the case before the Supreme Court, Scalia added, an overly broad interpretation of the Lanham Act could require that credit go to even the military cameramen who took the wartime footage. 'We do not think the Lanham Act requires this search for the source of the Nile and all its tributaries,' wrote Scalia.

Scalia noted that Fox could have protected itself by renewing the copyright, which would have led to 'an easy case of copyright infringement' against Dastar. In recent years, the Lanham Act had become part of the arsenal of legal weapons used by copyright holders against alleged infringers. The Dastar ruling appears to eliminate the Lanham Act's use of this legal strategy. The ruling, by giving added protection to the public domain, also stands in contrast to January's Eldred v. Ashcroft ruling, in which the high court said Congress could limit the public domain by substantially extending copyrights.