Dastar Corp. v. Twentieth Century Fox Film Corp.

ALA, American Association of Law Libraries, Association of Research Libraries, Medical Library Association, and Special Libraries Association have joined several other organizations as signatories to an amici curiae (friends of the court) brief in the U.S. Supreme Court.   The brief was filed on February 14, 2003, in support of the petitioner, Dastar Corporation, which is asking the Supreme Court to overturn a decision against it by the U.S. Court of Appeals for the Ninth Circuit.

The case involves Section 43(a) of the Lanham Act, which mostly has to do with trademark but is being used in this instance to apply to an alleged use and re-use of materials in the public domain.    The case could be very significant for databases specifically and preserving the public domain in general.   The nexus to overly-broad database protection is that the ruling by the court of appeals could be interpreted as requiring a publisher to footnote every fact it extracts from another database.   Additionally, the case raises many of the same constitutional issues that arise in the context of proposed database protection legislation.  

The following is a brief description of the case by Jonathan Band, outside counsel for the libraries and attorney of record on the amici brief (along with Professor Peter Jaszi, of American University’s Washington College of Law).   In the 1950s Fox produced a TV documentary on WWII.   Because Fox did not renew the copyright, the documentary entered the public domain.   Dastar Corp. copied large chunks of the documentary, added some of its own footage, and distributed it on its own.   Fox sued for a violation of Section 43(a) of the Lanham Act, asserting that Dastar had engaged in "reverse passing off" because they had not provided proper attribution of the source of some of the footage.   (Reverse passing off refers to taking someone else's product and selling it under your own label, implying that it was your product.)

The Ninth Circuit Court of Appeals agreed -- it said that because Dastar had "bodily approriated" Fox's work without proper attribution, there could be liability even in the absence of a showing of consumer confusion.   The petition to the U.S. Supreme Court seeking certiorari or review by that court, which was granted, suggests that Section 43(a) of the Lanham Act, at least as applied by the Ninth Circuit, conflicts with the Copyright Act because it allows the copyright owner to assert control after the copyright has expired.   This raises several constitutional questions -- the possible abridgement of the First Amendment, as well as use of the Commerce Clause to do something not permitted under the intellectual property clause.

The brief of the amici points out to the Supreme Court the adverse effect that the case could have on the information policy articulated by the Court in its decision in Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991):

In that case, the Court interpreted the Constitution as prohibiting copyright protection for the facts contained in a database.   The Court concluded that the Constitution's objective of promoting "the Progress of Science and useful arts" was accomplished by "encourag[ing] others to build freely upon the ideas and information conveyed by a work."   Id. at 349.   The Court has recognized that this fundamental policy of leaving facts in the public domain where they could be incorporated in new works has a First Amendment dimension as well: “Our profound national commitment to the principle that debate on public issues should be uninhibited, robust, and wide-open leaves no room for a statutory monopoly over information and ideas.”   Harper & Row, Publishers, Inc., v. Nation Enters., 471 U.S. 539, 582 (1985).   Affirmance of the decision below could undermine this information policy.

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