Dastar v. Twentieth Century Fox Film

Dastar Corp. v. Twentieth Century Fox Film Corp., was a unanimous (8-0) U.S. Supreme Court decision written by Justice Antonin Scalia that discouraged the use of trademarks to perpetuate copyrights. Specifically, the court held that upon entry into the public domain of a work that was subject to copyright or patent protection, the rule of the Lanham Act forbidding reverse passing off does not apply. Upon expiration of trademark or copyright protection, attribution to the author is no longer required.

Justice Scalia explained for the Court:

“  |  The problem with this argument according special treatment to communicative products is that it causes the Lanham Act to conflict with the law of copyright, which addresses that subject specifically. The right to copy, and to copy without attribution, once a copyright has expired, like "the right to make [an article whose patent has expired]--including the right to make it in precisely the shape it carried when patented--passes to the public." Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 230, 11 L. Ed. 2d 661, 84 S. Ct. 784, 1964 Dec. Comm'r Pat. 425 (1964); see also Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 121-122, 83 L. Ed. 73, 59 S. Ct. 109, 1939 Dec. Comm'r Pat. 850 (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, 149 L. Ed. 2d 164, 121 S. Ct. 1255 (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, 103 L. Ed. 2d 118, 109 S. Ct. 971 (1989), under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution. Thus, in construing the Lanham Act, we have been "careful to caution against misuse or over-extension" of trademark and related protections into areas traditionally occupied by patent or copyright. TrafFix, 532 U.S., at 29, 149 L Ed 2d 164, 121 S Ct 1255. "The Lanham Act," we have said, "does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity." Id., at 34, 149 L Ed 2d 164, 121 S Ct 1255.  |  ”

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Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 33-34, 123 S. Ct. 2041, 2048 (2003).