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Abstract
In the spring of 2003, the United States Supreme Court was presented with what appeared to be the relatively simple issue of whether the provisions of the U.S. Trademark Act (“the Lanaham Act”) prohibiting “false designations of origin” could be used to prevent the copying of creative work without giving attribution or credit to the original producers of the work. The Supreme Court, in Dastar v. Twentieth Century Fox Film Corp., incorrectly held that the relevant provision, section 43(a), was incapable of identifying the parties or entities that were the origin of “communicative content” because “origin of goods” as used in the provision only applied to the producers of the tangible physical objects. The holding in Dastar goes against over 50 years of precedent, literal statutory language, and legislative history. Prior to the Dastar opinion, plaintiffs had been successful in cases involving unauthorized edits of recordings, television programmes, stories, omission of co-author's credit, and even imitation of artistic style by asserting that under trademark law the incorrect attribution or credit was a “false designation of origin”. That avenue is no longer open. All attribution right under the Copyright Act, however, is quite limited in scope and only applies to “works of visual art” a definition that was included as part of the Visual Artists Rights Act of 1990 (VARA). As discussed in this article, the provisions of VARA were never intended to pre-empt or supersede other laws related to attribution. The Supreme Court ignored the distinction between trademark law and copyright law. The two are not mutually exclusive. Dastar Film Corp. v. Twentieth Century Fox Film Corp. is one of the most important cases in the United States intellectual property law in years. Congress should rectify the doctrinal wrongs wrought by the Supreme Court so that credit is given where and when credit is due.
Notes
1 Professor of Law and Director of the Intellectual Property Law Program, Georgia State University College of Law, Atlanta, GA, USA; J.D. University of Pennsylvania. This paper was presented at the 2004 BILETA Conference at the University of Durham.
2 I am using ‘author’ in the broad sense to stand for the creator of all copyrightable works. ‘Author’ is the word is used in most copyright statutes. For example, Article I, Section 8, Clause 8, of the US Constitution provides the US Congress with the authority to protect ‘authors and their writings’. Section 102(a) of the US Copyright Act of 1976 protects ‘original work of authorship.’ (17 U.S.C. §102(a). The Berne Convention, as well, uses the term ‘author’ to refer to creative parties. The ‘works made for hire’ provisions in the Copyright Act of 1976 are, in their own way, express rejections of the concept of the ‘right of paternity’ or ‘right of attribution’. The ‘employer’ or party with one agrees in writing that the work is a ‘work made for hire’ is the statutory ‘author’ of the work. See, 17 U.S.C. §201(b)(‘In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title.’ Therefore, if a staff photographer or illustrator creates a work, the publisher can rightfully claim to be the ‘author’.
This interestingly is different in patent law, in which the inventor is always given credit for the invention, even if he is a full time employee of a large corporation. For example, US Patent No. 5,960,411, ‘Method and System for Placing A Purchase Order Via A Communications Network’, lists Peri Hartman, Jeffrey Bezos, Shel Kaphan and Joel Spiegel as the Inventors. Amazon.com is listed as the assignee. US Patent No. 5,960,411 is Amazon.com's ‘one-click’ patent that was so controversial several years ago.
3 See Georg W F Hegel Philosophy of Right (T M Knox, Trans., 1952) and Immanuel Kant ‘Of the injustice in counterfeiting books’, in Essays and Treatises on Moral, Political, and various Philosophical Subjects Vol 225, pp 229–230 (W Richardson, Trans., 1798).
4 The term ‘moral rights’ is a translation of the French ‘droit moral’. The translation can be misleading, for ‘droit moral’ does not deal with common notions of morality, but more with a right of attachment or association with one's art. See, Roberta Kwall ‘Copyright and the moral right: is an American marriage possible?’ Vanderbilt Law Review Vol 38, No 1, 1985. Stephen Ladas proposed as a more appropriate concept the German term ‘urheberpersonlichkeitsrecht’, which translates into ‘right of the author's personality’. Stephen Ladas The International Protection of Artistic and Literary Property §272 (1938); Sidney A Diamond ‘Legal protection for the “Moral Rights” of authors and other creators’ Trademark Reporter Vol 68, p 244, 1978; Martin A Roeder, ‘The doctrine of moral right: a study in the law of artists, authors and creators’ Harvard Law Review Vol 53, p 554, 1940; Michael Landau, ‘Colourization, copyright and moral rights: a U.S. perspective’ Intellectual Property Journal Vol 5, p 215 (1990); Burton Ong ‘Why moral rights matter: recognizing the intrinsic value of integrity rights’ Columbia Journal of Law and Arts Vol 26, p 297, 2003; John H Merryman ‘The refrigerator of Bernard Buffet’ Hastings Law Journal Vol 27, p 1023, 1976; Dan Rosen, ‘Artists’ moral rights: a European evolution, an American revolution' Cardozo Arts and Entertainment Law Journal Vol 2, p 155, 1983. For a discussion of the differences between American and European views of moral rights, see, Henry Hansman and Marina Santilli ‘Authors’ and artists' moral rights: a comparative legal and economic analysis' Journal of Legal Studies Vol 26, p 95, 1997.
5 The Berne Convention for the Protection of Literary and Artistic Works, Article 6 bis provides:
(1) Independently of the author's economic rights, and even after the transfer of 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 and reputation.
6 See, Kwall, ‘Copyright and the moral right: is an American marriage possible?’ Vanderbilt Law Review Vol 38, No 1, 1985, p 6; see also, ‘The refrigerator of Bernard Buffet’ Hastings Law Journal Vol 27, p 1028, 1976; Roeder, ‘The doctrine of moral right: a study in the law of artists, authors and creators’ Harvard Law Review Vol 53, p 561, 1940; Yochai Benkler ‘Siren songs and Amish children: autonomy, information and the law’ New York University Law Review Vol 76, No 23, p 61, 2001 (discussing the philosophical aspects of the right of withdrawal).
7 See, Alexander Lindey and Michael Landau, Lindey on Entertainment, Publishing and the Arts 3rd edn, Vol 1, §1:1 (WEST—updated March 2004) (discussing revisions to the Copyright Act of 1976, subsequent to its enactment). On October 31, 1988, President Ronald Reagan signed the Berne Convention Implementation Act of 1988 (Berne Act) into law. Pub. L. 100–568. The Berne Act conformed United States Copyright Law to the requirements of the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) and enables the United States to join the Berne Convention. The Berne Convention dates back to 1886 and governs the rights accorded by member countries to copyright holders of a work copyrighted in another member country. The Berne Act, including its amendments to the Copyright Act (Berne Amendments), became effective 1 March 1989. See, US Copyright Circular No. 93a, ‘Highlights of United States Adherence to Berne Convention’, for a detailed discussion on how the Copyright Act changed as a result of the United States becoming a signatory of the Berne Convention.
8 Public Law No. 100–568.
9 H.R. 4262, 100th Cong., 2d Sess. (1988); see, Cathryn A Heise ‘Berne-ing down the House (and Senate): The Berne Convention Implementation Act of 1988’ Florida Bar Journal Vol 63, p 62, July–Aug. 1989 (‘According to the House committee, however, although no federal statute exists relating specifically to the “moral rights” of authors, based upon the testimony of the majority of the witnesses before the House subcommittee, the conclusions of international copyright experts, the comparison of United States' laws with those of Berne member countries, and the current status of federal and state protections of the rights of paternity and integrity, current United States law meets the requirements of Article 6bis.’)
10 S. Rep. No. 352, 100th Cong., 2d Sess. 9 (1988); see Heise, op cit, note 6 (‘According to the Senate report, this existing U.S. law includes various provisions of the Copyright Act and Lanham (Trademark) Act, various state statutes, and common law principles such as libel, defamation, misrepresentation, and unfair competition, which have been applied by courts to redress authors' invocation of the right to claim authorship or the right to object to distortion.’); see also, William Patry ‘The United States and international copyright law: from Berne to Eldred’ Houston Law Review Vol 40, p 749, 2003 (discussing the ‘Selective Adherence’ to Berne by the United States).
11 See, generally, Edward Damich, ‘The Visual Artists Rights Act of 1990: toward a federal system of moral rights protection for visual art’ Catholic University Law Review Vol 39, 945, 1990 (noting that the enactment of The Visual Artists Rights Act was a step in the right direction, and illustrating its relative shortcomings).
12 A work of visual art is defined in Section 101 (17 U.S.C. §101) as:
a painting, drawing, print or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.
A work of visual art does not include:
(A) (i) any poster, map, globe, chart, technical drawing, diagram, model, applied art, motion picture or other audiovisual work, book, magazine, newspaper, periodical, data base, electronic information service, electronic publication, or similar publication;
(ii) any merchandising item or advertising, promotional, descriptive, covering, or packaging material or container;
(iii) any portion or part of any item described in clause (i) or (ii);
(B) any work made for hire; or
(C) any work not subject to copyright protection under this title.
13 Very few people actually refer to the Trademark Act of 1946 by that name, but call it the ‘Lanham Act’ instead, after the Senator who introduced the legislation. In this article, I, too, will follow convention and call the Trademark Act of 1946, ‘The Lanham Act’. Section 43(a) of the Lanham Act provides:
(a) (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, misrepresents 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.
15 U.S.C. §1125(a).
14 See, e.g. PPX Enterprises, Inc. v Audiofidelity Enterprises, Inc., 818 F. 2d 266 (S.D.N.Y. 1987) (marketing of recordings of a band in which Jimi Hendrix was just a ‘side-man’ as previously unreleased ‘Jimi Hendrix’ records was a 43(a) violation); Benson v Paul Winley Record Sales Corp., 452 F. Supp. 516 (S.D.N.Y. 1978) (similar marketing of old recordings of George Benson).
15 See, e.g. King v Innovation Books, Inc., 976 F.2d 824 (2d Cir. 1992) (use of possessory credit in connection with motion picture that was very different from story enjoined).
16 See, e.g. Gilliam v American Broadcasting Co., 538 F.2d 14 (2d Cir. 1976) (television network, by editing out almost one-third of episodes of ‘Monty Python's Flying Circus’, created an unauthorized derivative work; ABC's only had rights to perform or display the works).
17 See, e.g. Follett v Arbor House Pub. Co., 497 F. Supp. 304 (S.D.N.Y. 1980Lanham Act, Section 43(a) violated where famous author's name appears as principal author on book that he did not write): cf Clevenger v Baker Voorhis & Co., 8 N.Y.2d 187 (N.Y.1960) (poorly edited and incorrect book with plaintiff listed as author could be defamation under New York law).
18 See, e.g. Lamothe v Atlantic Recording Corp., 847 F.2d 1403 (9th Cir. 1988) (attributing authorship of musical compositions to less than all of joint authors stated cause of action under Lanham Act for express reverse palming off).
19 See, e.g. Smith v Montoro, 648 F.2d 602 (9th Cir. 1981, Section 43(a) claim stated where actor's credit removed from film).
20 539 U.S. 23 (2003).
21 REM, please accept my apologies for that one—Musical Composition: ‘It's The End Of The World As We Know It (And I Feel Fine)’, BMI Work # 748763. Publishers: Night Garden Music (BMI); Artist: REM; Songwriters/Composers: William Thomas Berry, Peter Lawrence Buck, Michael E. Mills, John Michael Stipe. The information was found by doing a search on the BMI website. The song web page for doing searches can be found at the following url: http://repertoire.bmi.com/startpage.asp.
22 Dastar, 539 U.S. at 31 (emphasis added).
23 15 U.S. C. §1125(a).
24 The Lanham Act of 1946, 15 U.S.C. §§1051–1141(n) (11th ed—Amended as of 3 November 2003). The full text of the Lanham Act is available on the US Patent & Trademark Office's website at: http://www.uspto.gov/web/offices/tac/tmlaw2.html
25 15 U.S.C. §1125(a).
26 J. Thomas McCarthy lists four functions trademarks perform: ‘(1) To identify one seller's goods and distinguish them from goods sold by other; (2) to signify that all goods bearing the trademark come from or are controlled by a single, albeit anonymous source; (3) to signify that all goods bearing the trademark are of an equal level of quality; (4) to act as a primer instrument in advertising and selling the goods.’ J Thomas McCarthy McCarthy on Trademarks and Unfair Competition 4th edn, Vol 1, §3.2, 1996.
27 Congress receives its power to regulate trademarks from the Commerce Clause of the United States Constitution, which permits federal legislation ‘to regulate commerce with foreign nations, and among the several states, and with the Indian tribes’. Article I, §8, cl. 3, US Constitution. To further emphasize the difference between trademarks and copyrights and patents, it should be noted that the constitution authority for regulating trademarks originates from a different Section in the Constitution than for regulating Copyrights and Patents. The Copyright and Patent clause is found at Article I, §8, cl. 1 of the US Constitution.
28 See 15 U.S.C. §1127 (Section 45 of the Lanham Act). The ‘even if the source is unknown’ language was added as part of the Trademark Clarification Act of 1984 (P.L. 98–620, 98 Stat. 1335 (1984) largely in response to Anti-Monopoly, Inc. v General Mills Fun Group, 684 F.2d 1316 (9th Cir. 1982), in which the Ninth Circuit held that the trademark ‘Monopoly’ for a board game was no longer valid because it had become generic because the primary significance of the trademark was product, the game itself rather than source. The mark ‘Monopoly’ did not identify its source, Parker Brothers, the game. For a mark to be generic, it has to identify the category of product, and not the source of one of the members of the category. By finding that ‘Monopoly’ was generic, the Court was essentially holding that the relevant market was not board games or but real-state board games depicting Atlanta City, New Jersey. See S.Rep. No. 627, 98th Cong. 2d Sess. 9 (1984), reprinted in 1984 U.S. Code Cong. & Ad. News 5708, 5718, 5726.
29 See William L Landes and Richard A Posner ‘Trademark law: an economic perspective’ Journal of Law and Economics Vol 30, p 265 (1987) (discussing the benefits of trademarks as sources of information about the nature and quality of goods and services as well as indicators of source). Steven Carter ‘The trouble with trademarks’ Yale Law Journal Vol 99, p 759, 1990. (‘Successful marks are like packets of information. They lower consumer search costs, thus promoting the efficient functioning of the market.’)
30 See William L Landes and Richard A Posner ‘The economics of trademark law’ Trademark Report Vol 78, pp 267, 277, 1988.
31 See, 15 U.S.C. §1114(1) (authorizing infringement actions by trademark registrants).
32 See, 15 U.S.C. §1116 (authorizing ex parte seizures of counterfeit goods).
33 15 U.S.C.§1125(a).
34 Rudolf Callmann, The Law, Unfair Competition, Trademarks and Monopolies 4th edn, 2003; McCarthy, McCarthy on Trademarks and Unfair Competition 4th edn, Vol 1, 1996, §11:48, at 11–102 (discussing the ‘fair use’ trademarks defense); Mattel, Inc. v Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003).
35 Veronica Tucci ‘The case of the invisible infringer: metatags, trademark infringement and false designations of origin’ University of Florida Journal of Technology Law and Policy Vol 5, No 2, 2000 (discussing ‘false designation of origin’ lawsuits as a way of preventing he use of metatags or invisible code on competitors' web pages).
36 See, eg JR Tobacco of America, Inc. v Davidoff of Geneva, Inc., 957 F. Supp. 426 (S.D.N.Y. 1997), rehearing denied, 1997 WL 555611 (S.D.N.Y. 4 September 1997) (cigar advertisements and brochures were literally false); The Coca-Cola Co. v Tropicana Products, Inc., 690 F.2d 312 (2d Cir. 1982) (claim that orange juice was ‘pure pasteurized juice as it came from the orange’ was literally false); Coors Brewing Co. v Anheuser-Busch, Inc., 802 F. Supp. 965, 975 (S.D.N.Y. 1992) (Coors Beer distributed East of the Mississippi River did not contain ‘Colorado Rocky Mountain Spring Water’); see also, Jessica Litman ‘Breakfast with Batman: the public interest in the advertising age’ Yale Law Review Vol 108, p 1717, 1999.
37 Two Pesos, Inc. v Taco Cabana, Inc., 505 U.S. 763, 112 S. Ct. 2753, 23 U.S.P.Q.2d 1081 (1992) (Section 43(a) action successful against party with similar ‘trade dress’ or overall visual appearance of Mexican restaurant); cf Wal-Mart Stores, Inc. v Samara Bros., Inc., 529 U.S. 205 (2000) (distinguishing Two Pesos by requiring proof of ‘secondary meaning’ or ‘association in the minds of consumers with source’ for all ‘product design’ trade dress; ‘product packaging’ trade dress can still be inherently distinctive). For discussions of the Supreme Court's Section 43(a) trade dress cases, see generally, Gregory Rehlman ‘Infringement claims under the Lanham Act: relaxed standards of protection for distinctive trade dress’ Tennessee Law Review Vol 60, p 449, 1993; Jenny Johnson ‘Two Pesos, Inc. v Taco Cabana, Inc.’ Loyola University of Chicago Law Review Vol 24, p 285, 1993; Jamison Dean Newberg ‘The same old enchilada? The Supreme Court simplifies the protection of inherently distinctive trade dress’ Review of Litigation Vol 13, p 2999, 1994; George R Stewart ‘Two pesos for a taco: inherent distinctiveness and likelihood of confusion for protectable trademark rights—hold the secondary meaning’ International Property Journal Vol 8, No 1, 1993; Vincent Pallidino ‘Trade dress after Two Pesos’ Trademark Reporter Vol 84, p 408, July–August 1994; Joan A. Dillon ‘Two Pesos: more interesting for what it does not decide’ Trademark Reporter Vol 83, p 77, January–February 1993; Michael B Landau ‘Reconciling Qualitex with Two Pesos: ambiguity and inconsistency from the Supreme Court’ UCLA Entertainment Law Review Vol 3, 219, 1996 (hereinafter ‘Landau’).
38 The ‘Right of Publicity’ protects the economic value of the name, image, or likeness of an individual. There is currently no express federal protection for the right in the United States. Approximately one-half of the individual states provide protection under either statutory or common law, or in the State of California, both. For a discussion of the Right of Publicity, see, generally, Lindey and Landau, Lindey on Entertainment, Publishing and the Arts 3rd edn, Vol 1, §§3:16–3:23; see also, J Thomas McCarthy The Rights of Publicity and Privacy WEST, 2004.
39 Plaintiffs in ‘Right of Publicity’ lawsuits usually include Section 43(a) causes of actions for ‘false impressions of sponsorship or endorsement’ in their complaints as well. See, eg Abdul-Jabbar v General Motors Corp., 85 F.3d 407 (9th Cir. 1996); Waits v Frito Lay, 978 F.2d 1093 (9th Cir. 1992), cert. denied, 506 U.S. 1080 (1993); Prudhomme v Proctor & Gamble, 800 F. Supp. 390 (E.D.La. 1992).
40 Moral rights protection is based upon Article 6 bis of ‘The Berne Convention for the Protection of Literary and Artistic Works’, Article 6 bis of which provides:
(1) Independently of the author's economic rights, and even after the transfer of 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 and reputation. Berne Convention for the Protection of Literary and Artistic Works, Article 6 bis.
41 ‘Works of visual art’ is a defined legal category, with many exclusions. See, 17 U.S.C.§§101, 106A. The Visual Artists Rights Act is discussed in more detail below.
42 For discussions of the doctrine of moral rights, see, generally, Burton Ong ‘Why moral rights matter, recognizing the intrinsic value of the integrity right’ Columbia Journal of Law and Arts Vol 26, p 297, 2003; Russ VerSteeg ‘Federal moral rights for visual artists: contract theory and analysis’ Washington Law Review Vol 67, p 828, 1992; Kwall, ‘Copyright and the moral right: is an American marriage possible?’ Vanderbilt Law Review Vol 38, No 1, 1985; Dan Rosen ‘Artist's moral rights: a European evolution, an American revolution’ Cardozo Arts and Entertainment Law Journal Vol 2, p 155, 1984; Diamond ‘Legal protection for the “moral rights” of authors and other creators’ Trademark Report Vol 68, p 244, 1978; Roeder, ‘The doctrine of moral right: a study in the law of artists, authors and creators’ Harvard Law Review Vol 53, p 554, 1940.
43 See, e.g. Gilliam v American Broadcasting Co., 538 F.2d 14 (2d Cir. 1976) (television network, by editing out almost one-third of episodes of ‘Monty Python's Flying Circus’, created an unauthorized derivative work; ABC only had rights to perform or display the works).
44 Courts have found that physically removing art prints or illustrations from an original book and individually remounting them constituted a sufficient ‘modification’ or ‘recasting’, to be an unauthorized ‘derivative work’. See, eg Greenwich Workshop, Inc. v Timber Creations, Inc., 932 F. Supp. 1210 (C.D. Cal 1996); see also Mirage Editions, Inc. v Albuquerque ART Co., 856 F.2d 1341, cert. denied, 489 U.S. 1018 (9th Cir. 1988) (Patrick Nagel illustrations cut out from a book that had been purchased by the defendant and mounted on ceramics and sold was found to infringe the derivative work rights); Metro-Goldwyn-Mayer Inc. v Showcase Atlanta Cooperative Products Inc., 479 F. Supp. 351 (N.D. Ga. 1979) (unauthorized humorous stage version of a dramatic movie is an infringement).
45 A ‘derivative work’ is an alteration, modification, transformation, or recasting of a pre-existing work. See, 17 U.S.C. §101.
46 193 F.2d 585 (2d Cir. 1952).
47 818 F. 2d 266 (S.D.N.Y. 1987).
48 818 F. 2d 266 (S.D.N.Y. 1987); see also, Benson v Paul Winley Record Sales Corp., 452 F. Supp. 516 (S.D.N.Y. 1978) (deceptive marketing of old records of George Benson); Smith v Montoro, 648 F.2d 602 (9th Cir. 1981) (substituting false name in film credits and advertising).
49 452 F. Supp. 516 (S.D.N.Y. 1978).
50 497 F. Supp. 304 (S.D.N.Y. 1980); cf Clevenger v Baker Voorhis & Co., 8 N.Y.2d 187 (N.Y.1960) (very poorly edited and error ridden new edition of a reference book with plaintiff listed as the primary author could be actionable under New York state law).
51 847 F.2d 1403 (9th Cir. 1988).
52 648 F.2d 602 (9th Cir. 1981).
53 For a discussion of reverse passing off, see, John T Cross ‘Giving credit where credit is due: revisiting the doctrine of reverse passing off in trademark law’ Washington Law Review Vol 72, p 709, July 1997; see also Catherine Romero Wright ‘Reverse passing off: preventing healthy competition’ Seattle University Law Review Vol 20, p 785, 1997; McCarthy, McCarthy on Trademarks and Unfair Competition 4th edn, Vol 1, §25:6, 1996.
54 538 F.2d 14 (2d Cir. 1976).
55 Time Life became TimeWarner, the AOL/TimeWarner, and then TimeWarner again.
56 Who on earth knows what this means. At the time of the Gilliam case, as well as today, it is ‘indecent’ to show a breast on televisions in the USA, but it is decent to show blood, guts, and gore, especially if they are the result of gun attacks, fictional or real. This foolishness was illustrated by the furor and even Congressional hearings over Janet Jackson's ‘wardrobe malfunction’ at an American ‘football game’, or the almost US $500,000 or approximately £220,000 fine by the Federal Communications Committee against radio personality Howard Stern's program for ‘indecent language’. On any given night, however, the television shows mass murder or nude Iraqi prisoners piled on tope of one another guarded by unmuzzled attack dogs and smiling US soldiers.
57 Gilliam, v American Broadcasting Co., 538 F,2d at 24.
58 The quotation has been supplied by the author.
59 They were also successful on their copyright claim. Because their agreement gave the BBC the right to broadcast the shows, and to license others to broadcast the shows, but not the right to make unapproved material edits, the BBC could not license anything more than its rights to others. Therefore, neither Time Life not ABC could have acquired any rights to make alterations. By making such excessive edits, ABC acted outside of the scope of the grant and the resultant show was an unauthorized derivative work.
60 539 U.S. 1099, 123 S.Ct. 2041 (2003).
61 539 U.S. at 24. The actual questions presented in the petition for certiorari were:
1. Does the Lanham Act protect creative works from unaccredited copying, even without a likelihood of consumer confusion?
2. May a court applying the Lanham Act award twice the defendant's profits for purely deterrent purposes?
Dastar Corp. v Twentieth Century Fox Film Corp., 2002 WL 32101137 (11 September 2002) (petition for certiorari granted).
62 Perhaps some of the Justices had trouble sleeping after upholding the constitutionality of The Copyright Term Extension Act earlier in the year in Eldred v Ashcroft. See, Eldred v Ashcroft, 537 U.S. 186 (2003), rehearing denied, 538 U.S. 916 (2003). On 15 January 2003, the Supreme Court, in a 7 to 2 decision, held that the Copyright term Extension Act, which added an additional twenty years to the terms of both preexisting works and works to be created in the future was not unconstitutional. Justice Ginsburg, writing for the majority, held that extending the term was creating a ‘perpetual copyright’ in violation of the ‘limited Times’ language in Article I, clause 8, Section 8 of the U.S. Constitution. In addition, Congress was found to have been acting in a ‘rational exercise’ of legislative authority.
The Eldred decision was not the end of it. Some of the individuals involved with in bringing the Eldred case lobbied Congress to introduce legislation to create a mechanism for having works fall into the public domain earlier that under the present life-plus-seventy scheme. On 25 June 2003, Representatives Lofgren and Doolittle introduced H.R. 2061, ‘The Public Domain Enhancement Act’, which provides that the Copyright Office ‘charge a fee of $1 for maintaining in force the copyright in any published United States work. The fee shall be due 50 years after the date of first publication or on 31 December 2004, whichever occurs later, and every 10 years thereafter until the end of the copyright term. Unless payment of the applicable maintenance fee is received in the Copyright Office on or before the date the fee is due or within a grace period of 6 months thereafter, the copyright shall expire as of the end of that grace period.’
This sounds a lot like the system that Congress deliberately abandoned, namely ‘renewal’, when it drafted the 1976 Act and went to a ‘life-plus-X years’ system.
63 See, Dastar, 539 U.S. at 23. The copyright in the book was renewed. The issue of whether Dastar's videos infringed the underlying book is not the subject of the action before the Supreme Court. See, eg Russell v Price, 612 F.2d 1123 (9th Cir. 1979), cert. denied, 446 U.S. 952 (1980) (reaffirming well-established doctrine that a derivative copyright protects only the new material contained in the derivative work, not the matter derived from the underlying work).
64 See, Dastar, 539 U.S. at 23. The copyright in the book was renewed. The issue of whether Dastar's videos infringed the underlying book is not the subject of the action before the Supreme Court. See, eg Russell v Price, 612 F.2d 1123 (9th Cir. 1979), cert. denied, 446 U.S. 952 (1980) (reaffirming well-established doctrine that a derivative copyright protects only the new material contained in the derivative work, not the matter derived from the underlying work), SFM Entertainment and New Line Home Video, Inc., in turn, acquired from Fox the exclusive rights to distribute ‘Crusade in Europe’ on video.
65 See, Dastar, 539 U.S. at 23. The copyright in the book was renewed. The issue of whether Dastar's videos infringed the underlying book is not the subject of the action before the Supreme Court. See, eg Russell v Price, 612 F.2d 1123 (9th Cir. 1979), cert. denied, 446 U.S. 952 (1980) (reaffirming well-established doctrine that a derivative copyright protects only the new material contained in the derivative work, not the matter derived from the underlying work), SFM Entertainment and New Line Home Video, Inc., in turn, acquired from Fox the exclusive rights to distribute ‘Crusade in Europe’ on video at 25.
66 There was also a copyright infringement claim with respect to the copyright the renewed book. The Court of Appeals for the Ninth Circuit found questions relating to the copyright status of the book based upon whether at the time it was written it would have been a work made for hire.
67 Section 35 of the Lanham Act, 15 U.S.C. §1117(a), provides:
Recovery of profits, damages, and costs.
(a) When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 43(a) or (d) or a willful violation under section 43(c), shall have been established in any civil action arising under this Act, the plaintiff shall be entitled, subject to the provisions of sections 29 and 32 and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant's sale only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award reasonable attorney fees to the prevailing party.
68 Twentieth Century Fox Film Corp. v Entertainment Distributing, 34 Fed. Appx. 312, 316 (2002), rev'd sub nom, Twentieth Century Film Corp. v Dastar Corp., 539 U.S. 23 (2003).
69 Twentieth Century Fox Film Corp. v Entertainment Distributing, 34 Fed. Appx. 312, 316 (2002), rev'd sub nom, Twentieth Century Film Corp. v Dastar Corp., 539 U.S. 23 (2003) at 314.
70 Twentieth Century Fox Film Corp. v Entertainment Distributing, 34 Fed. Appx. 312, 316 (2002), rev'd sub nom, Twentieth Century Film Corp. v Dastar Corp., 539 U.S. 23 (2003) at 314.
71 Section 301 of title 17, United States Code, is amended by adding at the end the following:
'(f)(1) On or after the effective date set forth in Section 9(a) of The Visual Artists Rights Act of 1990, all legal or equitable rights that are equivalent to any of the rights conferred by Section 106A with respect to works of visual art to which the rights conferred by Section 106A apply are governed exclusively by Section 106A and Section 113(d) and the provisions of this title relating to such Sections. Thereafter, no person is entitled to any such right or equivalent right in any work of visual art under the common law or statutes of any State.
(2) Nothing in paragraph (1) annuls or limits any rights or remedies under the common law or statutes of any State with respect to –
(A) any cause of action from undertakings commenced before the effective date set forth in Section 9(a) of The Visual Artists Rights Act of 1990; or
(B) activities violating legal or equitable rights that are not equivalent to any of the rights conferred by Section 106A with respect to works of visual art.'
H.R. Rep. No. 514, 101ST Cong., 2nd Sess. 1990, 1990 WL 258818.
72 See, 15 U.S.C. §1125(a).
73 Dastar, 539 U.S. at 31 (emphasis added).
74 376 U.S. 225 (1964).
75 489 U.S. 141 (1989).
76 Sears, Roebuck & Co. v Stiffel Co., 376 U.S. 225, 230, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964); see also Kellogg Co. v National Biscuit Co., 305 U.S. 111, 121–122, 59 S.Ct. 109, 83 L.Ed. 73 (1938). ‘In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying.’ TrafFix Devices, Inc. v Marketing Displays, Inc., 532 U.S. 23, 29, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001). The rights of a patentee or copyright holder are part of a ‘carefully crafted bargain’, Bonito Boats, Inc. v Thunder Craft Boats, Inc., 489 U.S. 141, 150–151, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989), under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution. ‘Careful to caution against misuse or over-extension’ of trademark and related protections into areas traditionally occupied by patent or copyright. Assuming for the sake of argument that Dastar's representation of itself as the ‘Producer’ of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under §43(a) for that representation would create a species of mutant copyright law that limits the public's ‘federal right to “copy and to use”’, expired copyrights. Bonito Boats, Inc. v Thunder Craft Boats, Inc., 489 U.S. at 165, 109 S.Ct. 971.
77 Bonito Boats, Inc. v Thunder Craft Boats, Inc., 489 U.S. at. 150–151. The full quote from Bonito Boats from which the ‘carefully crafted bargain’ language is taken is as follows, and says nothing whatsoever about ‘without attribution’: ‘The federal patent system thus embodies a carefully crafted bargain for encouraging the creation and disclosure of new, useful, and nonobvious advances in technology and design in return for the exclusive right to practice the invention for a period of years.’
78 539 U.S. at 33–34(emphasis added).
79 539 U.S. at 32.
80 17 U.S.C. §106A.
81 529 U.S. 205 (2000).
82 See, 15 U.S.C. §§2(e), 2 (f)
83 505 U.S. 763 (1992), rehearing denied, 505 U.S. 1244 (1992)
84 505 U.S. at 28.
85 505 U.S. at 28.
86 505 U.S. at 29 (emphases added).
87 505 U.S. at 29 (emphases added), citing McCarthy, McCarthy on Trademarks and Unfair Competition 4th edn, Vol 1, 1996, §27:7, pp 27–14 (4th edn, 2002).
88 See, 15 U.S.C. §1125(a).
89 Services are protected by ‘service marks’. A ‘service mark’ is defined as ‘any word, name, symbol, or device, or any combination thereof—(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.’ 15 U.S.C. §1127.
90 See, International Classification of Goods and Services, §1401.02(a) Trademark Manual of Examining Procedure (3d edn, 11 November 2003) (hereinafter ‘TMEP’).
91 International Class 9(Electrical and scientific apparatus) includes:
‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), lifesaving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.’ §1401.02(a) TMEP, (3d edn, 11 November 2003).
92 CLASS 41 (Education and entertainment) Education; providing of training; entertainment; sporting and cultural activities. Explanatory Note This class contains mainly services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage the attention. Includes, in particular: services consisting of all forms of education of persons or training of animals; services having the basic aim of the entertainment, amusement or recreation of people; Presentation of works of visual art or literature to the public for cultural or educational purposes.' §1401.02(a) TMEP, (3d edn, 11 November 2003).
93 The Trademark Office records show all of the marks being owned by: Twentieth Century Fox Film Corporation, 10201 West Pico Blvd., Los Angeles, CA 90035, USA.
94 Trademark Registration No: 1465225 was made in both Class 9 for ‘Cinematographic Films, Videotapes, Pre-Recorded Videocassettes And Video Discs’ and in Class 41 for ‘Production And Distribution Of Motion Picture Films, Television Programs, Pre-Recorded Videocassettes And Videodiscs.’
95 Listed as being owned by New Line Productions, Inc., 888 Seventh Avenue, New York, NY 10106, USA.
96 See, 17 U.S.C. §101 for the definition of a ‘work of visual art’.
97 17 U.S.C. §106A(c)(3).
98 Under Section 105 of the Copyright Act of 1976, works created by US government employees within the scope of their employment are not protected by copyright. It is possible for the US government to own works that are protected by copyright, if those works were acquired through donation, purchase, or satisfaction of an obligation. It is just those works created by the US government that are not protected.
99 Eric Clapton loves that music. His latest album, Me and Mr. Johnson (Warner Bros. 2004) contains all Robert Johnson songs. Wheels of Fire (ATCO, 1968) is one of my favorite albums and also contains songs, such as Sittin' on Top of the World, Spoonful, and Crossroads composed respectively by blues greats Chester Burnet (also known as ‘Howlin’ Wolf'), Willie Dixon and Robert Johnson.
100 For a detailed discussion of the status of musical compositions and sound recordings under the 1909 Copyright Act, see, Michael B. Landau, ‘“Publication”, musical compositions, and the Copyright Act of 1909: still crazy after all these years’ Vanderbilt Journal of Entertainment Law and Practice Vol 2, p 28, 2000. (This discussed how ‘sound recordings’ were not viewed as ‘copies’ of the musical compositions, but as ‘captured performances’. Performances were not ‘publications’ for the purpose of being vested with copyrights. Therefore, the sound recordings, as captured performances, were also not ‘publications’ of the underlying compositions.); see also Benjamin Kaplan, ‘Publication in copyright law: the question of phonograph records’ University of Pennsylvania Law Review Vol 103, pp 469, 473, 1955.
101 H.R. Rep. No. 92–487, at 1566–1567; see also, Landau, ‘“Publication”, musical compositions, and the Copyright Act of 1909: still crazy after all these years’ Vanderbilt Journal of Entertainment Law and Practice Vol 2, 2000, p 49. The Sound Recording Act extended protection to the sound recordings themselves as opposed to the ‘tangible medium of fixation’ or ‘reproductions of sound recordings’. This protection was intended for the ‘aggregation of sounds’ created by the record producers or the performers ‘whose performance is captured’. The statute's legislative history indicates that its purpose was to stop the ‘unauthorized reproduction of phonograph records and tapes’ by ‘record pirates’; the legislation was only to be effective until 31 December 1974, at which time the next copyright revision could possibly provide permanent protection. This protection was included as copyrightable subject matter in the 1976 Copyright Act as §102. 17 U.S.C. §102 (1994). Further, the legislative history of §301, dealing with common law preemption, of the current act reveals that Congress intended to both prevent pre-1972 sound recordings from enjoying ‘perpetual protection’ under common law and to prevent such works from immediately falling into the public domain. H.R.Rep. No. 1476, at 133.
102 978 F.2d 1093 (9th Cir. 1992), cert. denied, 506 U.S. 1080 (1993).
103 See, Midler v Ford Motor Co., 849 F.2d 460 (9th Cir. 1988); see also, Allen v National Video, Inc., 610 F. Supp. 612 (S.D.N.Y. 1985) (Woody Allen was successful against a company that used a look-alike in an advertisement).
104 538 F.2d 14 (2d Cir. 1976).
105 786 F.Supp. 1126 (E.D.N.Y. 1992).
106 Article I, clause 8, Section 8 of the U.S. Constitution provides:
The Congress shall have Power … To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.
107 §106: Exclusive rights in copyrighted works
Subject to Sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.
108 Works that have been created on or after 1 January 1978 are protected for a term of the life of the author plus seventy years thereafter. See, 17 U.S.C. §302(a). If a work is a ‘joint work’, the work is protected for a term of the life of the last surviving author plus seventy years thereafter. See, 17 U.S.C. §302(b). In the case of anonymous, pseudonymous works, or works made for hire created on or after 1 January 1978, the term of protection is for either 95 years from the date of first publication or 120 years from the date of creation, whichever comes first.
For works created and copyrighted prior to 1 January 1978, that were still protected by copyright on 1 January 1978, the term of protection is now 95 years from the date of publication with notice or registration and deposit with the US Copyright Office. See §304(a).
109 See 17 U.S.C. §107.
110 17 U.S.C. §106.
111 15 U.S.C. §502.
112 15 U.S.C. §504.
113 15 U.S.C. §505.
114 For discussions and various viewpoints regarding the ‘public domain’, see Jessica Litman ‘The public domain’ Emory Law Journal Vol 39, p 965, 1990 (‘It furnishes a crucial device to an otherwise unworkable system by reserving the raw material available for other authors to use. The public domain thus permits the law of copyright to avoid a confrontation with the poverty of some of the assumptions on which it is based.’); Robert P Merges ‘A new dynamism in the public domain’ University of Chicago Law Review Vol 71, p 183, 2004; Mark Rose ‘Nine-tenths of the law: the English copyright debates and the rhetoric of the public domain’ Law and Contemporary Problems Vol 66, p 75, 2003; Yochai Benkler ‘Through the looking glass: Alice and the constitutional foundations of the public domain’ Law and Contemporary Problems Vol 66, p 175, 2003.
115 376 U.S. 225, 230, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964);
116 489 U.S. 141, 150–151, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989).
117 305 U.S. 111, 121–122, 59 S.Ct. 109, 83 L.Ed. 73 (1938).
118 37 C.F.R. §202.1(a).
119 17 U.S.C.§106A 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, mutilation, 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.
120 See 17 U.S.C. §101.
121 See 17 U.S.C.§101. Moral rights protection that is available to civil law artists on the European continent is much stronger than the protection that is available to artists in the USA. For example, in Huston v Le Cinq, the French Cour de Cassation held that the moral rights of the late John Huston could be enforced against a French television station to enjoin the broadcast of a colorized version of The Asphalt Jungle, despite the fact that the work was created in the USA under an employment agreement, and despite the fact that the movie studio had the right to determine when and how the film would be released. The French high court reversed the Paris Court of Appeals, which analyzed much of the case with respect to the country of origin of the work.
122 The Visual Artists Rights Act of 1989; hearings on H.R. 2690 before the Subcommittee on Courts, Intellectual Property, and the Administration of Justice of the House Committee on the Judiciary, 101st Cong., 1st Sess. (1989) (hereinafter cited as Subcommittee Hearings) (statement of Professor Jane Ginsburg).
123 §301 Preemption with respect to other laws
(d) Nothing in this title annuls or limits any rights or remedies under any other Federal statute …
…
(f) (1) On or after the effective date set forth in Section 610(a) of the Visual Artists Rights Act of 1990, all legal or equitable rights that are equivalent to any of the rights conferred by Section 106A with respect to works of visual art to which the rights conferred by Section 106A apply are governed exclusively by Section 106A and Section 113(d) and the provisions of this title relating to such Sections.
Thereafter, no person is entitled to any such right or equivalent right in any work of visual art under the common law or statutes of any State.
(2) Nothing in paragraph (1) annuls or limits any rights or remedies under the common law or statutes of any State with respect to—
(A) any cause of action from undertakings commenced before the effective date set forth in Section 610(a) of The Visual Artists Rights Act of 1990;
(B) activities violating legal or equitable rights that are not equivalent to any of the rights conferred by Section 106A with respect to works of visual art; or
(C) activities violating legal or equitable rights which extend beyond the life of the author.