Origin of Goods Under the Lanham Act: An Analysis of the Supreme Court's Decision in Dastar Corp. v. Twentieth Century Fox Film Corp.

Section 43(a) of the Lanham Act creates a cause of action for 'passing off' or 'palming off,' defined as the substitution of one brand of goods for another. See McCarthy on Trademarks and Unfair Competition, '1:10 (4th ed. 2003)(noting that this constitutes unfair competition). Reverse passing off occurs when a party removes or replaces the original trademark without permission and brands the item with its own mark. See, e.g., Smith v. Montoro, 648 F.2d 602, 603 (9th Cir. 1981); see also McCarthy on Trademarks and Unfair Competition '25:6 (4th ed. 2003). The Lanham Act has been interpreted to also cover reverse passing off. See Smith, 648 F.2d at 603. However, in the case of routine consumer goods, the courts have not addressed what occurs when one modifies a pre-existing work of an expressive nature (eg, a book or a movie), which, from a copyright standpoint, is in the public domain, as in the case of Dastar.

In Dastar Corp. v. Twentieth Century Fox Film Corp., 123 S. Ct. 2041 (2003), the Supreme Court found that '43(a) of the Lanham Act, 15 U.S.C. '1125(a), did not prevent the unaccredited copying of such a work. The Dastar decision reversed a decision by the Court of Appeals for the Ninth Circuit that upheld the lower court's finding that Dastar's sales constituted reverse passing off under '43(a). Dastar, 34 Fed. Appx. 312 (9th Cir. 2002).