Fox loses Supreme Court decision on public domain material

Monday's decision concerned "Crusade in Europe", a TV series first shown in 1949 and based on Dwight Eisenhower's World War II memoirs of the same name.

Copyright for the original series was held by 20th Century Fox Film Corporation, now part of Rupert Murdoch's News Corporation. But in 1995, a company called Dastar Corporation released a set of videos called "World War II Campaigns in Europe" which used substantial parts of "Crusade in Europe," copied from tapes of the original series. This was done without attribution to Fox.

In the US, unlike the UK, there is a system of copyright registration. While registration is not required to create copyright protection, registration confers some advantages on the holder.

For works created since 1978, renewal of this registration is not necessary. But for works created before that year, renewal was required after 28 years if the copyright was to survive. Fox did not renew its copyright, so it expired in 1977. Had Fox renewed, it would have had a simple case of copyright infringement against Dastar. Instead, it had to rely on America's so-called Lanham Act.

The Lanham Act prohibits "any false designation of origin" in connection with any goods or services. Dastar's videos were sold as its own product without attribution to either Fox or Doubleday, publishers of Eisenhower's memoirs. Therefore, Fox argued that Dastar was in breach of this Act by not giving Fox sufficient credit, even if it could not have stopped the material being used.

The District Court agreed and awarded Fox a sum of damages equivalent to Dastar's profits from the sale of the videos. On appeal, the Court of Appeals for the Ninth Circuit agreed. But the matter then came before the Supreme Court which took a different view.

The judges in the Supreme Court ruled 8-0 for restricting the Lanham Act's scope. Its main consideration was over the meaning of "origin" in the Act.

In Monday's decision, Justice Antonin Scalia wrote:

"we conclude that the phrase refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods....To hold otherwise would be akin to finding that [the relevant section of the Lanham Act] created a species of perpetual patent and copyright, which Congress may not do."

Therefore, Dastar's package of tapes is being protected by the Lanham Act, not the original footage. Basically, the court appears to be saying that in the US, if a work is in the public domain, the Lanham Act does not control how it is used.

The Supreme Court Opinion is available as an 18-page PDF at:
www.supremecourtus.gov/opinions/02pdf/02-428.pdf