Dastar Corporation v. Twentieth Century Fox Film Corporation – Oral Argument – April 02, 2003

Media for Dastar Corporation v. Twentieth Century Fox Film Corporation

Audio Transcription for Opinion Announcement – June 02, 2003 in Dastar Corporation v. Twentieth Century Fox Film Corporation

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William H. Rehnquist:

We’ll hear argument now in Number 02-428, Dastar Corporation versus Twentieth Century Fox Film Corporation.

Mr. Gerber.

David A. Gerber:

Thank you, Mr. Chief Justice, and may it please the Court:

Dastar discovered that an old TV show made by Time Inc. was in the public domain because Fox neglected to renew the copyright.

Dastar adapted the public domain show at considerable expense to make it into a war narrative as opposed to Eisenhower’s story.

Dastar’s product did not refer to Time Inc. Dastar’s product also did not refer to respondents who had their own competitive video of the same TV show.

William H. Rehnquist:

Of the same what?

David A. Gerber:

TV show.

Because of the latter, that is, the omission of credits to respondents, and the finding that Dastar acted willfully in omitting those credits, the lower court awarded $1.6 million, substantially in excess of the $850,000 total gross of Dastar, in order to deter it.

The lower courts departed from the Lanham Act in a very expansionary way in our view in six separate dimensions.

Ruth Bader Ginsburg:

Can we go back to your statement?

As I… as I understood it, it wasn’t the omission of Fox, but the addition of your people.

In other words, it wasn’t the failure to give credit to respondents, but it was petitioner’s taking credit for it that was what the lower courts thought was wrong.

David A. Gerber:

Taking the lower courts in ascending order, on page 53a of the cert petition, the language is that the court finds that defendant’s failure to identify the television series and the book is misleading to the public.

And then at the Ninth Circuit level, on page 3a of the petition, the language is that Dastar copied, et cetera, and marketed it without attribution to Fox.

Neither court, Justice Ginsburg, examined Dastar’s credits, affirmative credits, for accuracy, for whether they registered with the consumers, for misleadingness or falsity in any way.

I would suggest that the record indeed is that it was the omission of credits for their competitors that was, in fact, the basis for the double award.

William H. Rehnquist:

This is a failure… this is a failure to attribute case then?

David A. Gerber:

Yes, it is, Your Honor.

Our first and most sweeping point–

John Paul Stevens:

But may I just point out on 3a, it… the quote… you left out the first clause I think.

They… they labeled the… the resulting product with a different name and marketed it without attribution.

David A. Gerber:

–Oh, yes.

That’s a reference to changing the title of the work.

The entire phrase… and pardon my truncation of it… on page 3a is that Dastar copied substantially the entire Crusade in Europe series created by Twentieth Century Fox, labeled the resulting product with a different name, and marketed it without attribution.

The name Dastar put on it, instead of Crusade in Europe, was World War II Campaigns in Europe.

And you will, I believe, see that in neither opinion does either court take a look at the credits on Dastar’s product and conclude that they were in any way misleading, nor does the court examine them at all.

Our first–

Sandra Day O’Connor:

Counsel, would… would the new Dastar video qualify as a derivative work that would deserve copyright protection on its own?

David A. Gerber:

–Yes, yes.

David A. Gerber:

The–

Sandra Day O’Connor:

And is that issue being litigated?

David A. Gerber:

–No, it isn’t.

Sandra Day O’Connor:

No.

Thank you.

David A. Gerber:

Our… our most sweeping statutory point is, while not necessary for this opinion certainly… this case, certainly would dispose of it, that the current version of the governing statute, Lanham Act 43(a)(1)(A), does not recognize reverse passing off at all.

The judicial interpretations of the Lanham Act, under which this claim was born, were under a prior version that was substantially amended in 1988, and while no court has construed the ’88 language, we think that the natural and plain meaning of it is that it encompasses only forward passing off.

William H. Rehnquist:

Only what kind of passing?

David A. Gerber:

Forward passing off.

William H. Rehnquist:

What is forward passing off?

It sounds like a football game.

David A. Gerber:

It’s not football, Your Honor.

[Laughter]

It is the standard type of trademark or trade dress infringement in which the wrongdoer… let’s call it Brand X… utilizes the mark Rolex… of usually a well-recognized company and puts that mark on its product.

Sandra Day O’Connor:

Is it some kind of affirmative misrepresentation?

David A. Gerber:

In forward passing off?

Sandra Day O’Connor:

Mm-hmm.

David A. Gerber:

I… I–

Sandra Day O’Connor:

To… to get some kind of liability under the Lanham Act under a reverse passing off theory.

David A. Gerber:

–If I may first distinguish reverse passing off and then come back to Your Honor’s question.

Sandra Day O’Connor:

Yes.

David A. Gerber:

Reverse passing off, in contrast, is where Brand X for some reason… the commercial motivation is often hard to discern… gets a legitimate Rolex, removes the Rolex name and puts the Brand X name on it.

Instead of passing its goods off as Rolex, it’s passing Rolex’s goods off as its own.

I’m sorry, Justice O’Connor, I–

Sandra Day O’Connor:

Well, it’s… it’s related to this.

This is a so-called reverse passing off theory that the Ninth Circuit is relying on.

Right?

David A. Gerber:

–Yes.

Sandra Day O’Connor:

And do you say there is no such thing at all or do you acknowledge that there could be some Lanham Act violation if there were some kind of affirmative misrepresentation?

David A. Gerber:

Both.

David A. Gerber:

Our… our most ambitious argument is none at all, and we do have as a less ambitious argument the second.

Sandra Day O’Connor:

Indeed, the Solicitor General would urge that we… we not take the broader view.

Right?

David A. Gerber:

I don’t believe so, from the Solicitor General’s brief.

And let me–

Sandra Day O’Connor:

Okay.

Well, we’ll find out in a minute.

[Laughter]

David A. Gerber:

–Yes.

I… our view, which I believe is shared by the Solicitor General, is that under the particular statute in issue in this case, subsection (a)(1)(A), reverse passing off is a no.

Antonin Scalia:

Where… where is that?

Let’s… let’s look at the statute and talk about it.

David A. Gerber:

It’s on… it’s on page 2 of the cert petition.

Antonin Scalia:

Okay.

David A. Gerber:

And if I may present our most sweeping argument, the language in particular in (a)(1)(A) requires a designation as to the origin, sponsorship, or approval of Dastar’s goods by another person.

So that would naturally cover the situation in which Dastar’s goods had the name of another person such as Fox on them, but it would not cover the situation in which Dastar’s goods had its own name on them because of the by another person language.

When Fox’s name is on Dastar’s goods… and that is the normal passing off, forward passing off… there is a designation that Fox sponsored Dastar’s goods or approved it or was the origin of it.

But you can–

Antonin Scalia:

Now, I mean, that’s… that’s one reading of that.

I mean, you could say… and maybe… maybe it’s the more natural reading… that as to the origin by another person means that some other person originated it.

But it could mean as to the origin by another person, if I represent that I originated it, okay, when in fact another person originated it, I would be making a misrepresentation as to the origin by another person because I’m denying that that other person originated it.

I’m saying that I did.

Wouldn’t that be a misrepresentation as to the origin by another person?

David A. Gerber:

–I don’t think… the… the latter principle that Your Honor stated I think would be correct, but I would suggest that it’s not illustrated by the example.

I think Your Honor is perhaps looking at the as to language here.

And in our view what that means is that a representation by Dastar that Fox did sponsor Dastar’s work or that Fox did not sponsor Dastar’s work would be covered.

Antonin Scalia:

Yes, either it did or did not.

Either it did or did not.

David A. Gerber:

But neither of… both of those are in contrast to reverse passing off in which the offending party is putting its own name on the work.

So that doesn’t help.

David A. Gerber:

And the… the other argument… the other construction, which is the only competitor on the table here by respondents to–

Antonin Scalia:

Well, excuse me.

Before you get on–

David A. Gerber:

–Excuse me, Your Honor.

Antonin Scalia:

–When… when you put your own name on it, aren’t you denying that it was originated by somebody else?

David A. Gerber:

You’re not stating that it was originated by another person, and that is the statutory requirement.

Antonin Scalia:

You’re… you’re stating that it was not.

You’re saying that it was not originated by another person.

And that seems to me it could be interpreted as being a misrepresentation as to the origin by another person.

David A. Gerber:

Well, I–

Antonin Scalia:

If you put your name on it, you’re saying I did it.

Nobody else did it.

You… you made a… well–

David A. Gerber:

–Pardon me.

I… I would rely on the statutory distinction.

It’s one thing to make a representation that the wrongdoer is the originator, with whatever implications that may have, and another to make a misrepresentation which… which seems down the middle of the alley of the statutory language, that another person, Fox, originated the work.

Sandra Day O’Connor:

–Well, and is this affected at all by the fact that the copyright had expired?

This was in the public domain.

David A. Gerber:

Well–

Sandra Day O’Connor:

Is there some… how does that affect it?

Can you put your own name on something that’s now in the public domain?

David A. Gerber:

–That, separate and apart from the most sweeping argument we have, really goes to a number of other attacks on what the lower court did.

The short answer is you can if it is not likely–

Ruth Bader Ginsburg:

Mr. Gerber, I’d like to go back to what the lower court did because I don’t think that you were accurate when you said in the view of the lower court, this was a non-attribution case.

I’m looking at page 53, and the court indeed does start out by saying that defendants failed to identify the series, but then there’s a semicolon, and it goes on to say–

Antonin Scalia:

–Excuse me.

Where… where is this?

William H. Rehnquist:

At what page… what page are we on?

Ruth Bader Ginsburg:

53… 53a of the petition.

I’m questioning Mr. Gerber’s characterization that this case is simply a non-attribution one because after the semicolon, it says why that was a problem.

Ruth Bader Ginsburg:

It’s… it gives the false impression that the series contains only the work of those listed in the credits.

So that was the problem that was central for the district court, not simply a non-attribution, but an incorrect attribution.

And I don’t see how you can ignore that clear statement by the district court.

David A. Gerber:

–Well, in the district court, if one is talking about the… the wheat and the chaff, on page 31a in which the district court introduces its lengthy discussion, the statement is that the lawsuit is based on defendant’s distribution of a video series, which plaintiffs claim is an infringement of the protected material found in the book, and is an appropriation of the television series, Crusade in Europe, without proper credit.

Now, the reason I think that is the correct interpretation of what the district court was doing–

Ruth Bader Ginsburg:

Without proper credit could mean improper credit, but when the court is developing that point in full, it says there are two things.

It was the failure to identify.

Why was that a violation of the Lanham Act in the court’s view?

Because it gave the false impression that only those listed–

David A. Gerber:

–Yes.

I would suggest that without proper credit means what it says.

It doesn’t mean improper credit.

It means that the proper credits were not affixed.

And then, of course, when you look at the Ninth Circuit… Circuit–

Ruth Bader Ginsburg:

–It was an improper attribution case, not simply a non-attribution case.

I’m simply questioning your original characterization which I do not think pays attention to what the district court, in fact, said.

David A. Gerber:

–I understand, Justice Ginsburg, but again I would urge that without proper credit, that phrase, is not a statement that there were improper credits.

It’s a statement that the proper credits were absent.

And I would add that whatever ambiguity may lurk in the district court’s findings, it’s quite clear that at the Ninth Circuit level, which, of course, is what this Court is reviewing, the case is a non-attribution case.

Ruth Bader Ginsburg:

The Ninth Circuit had a rather quick, unpublished opinion–

David A. Gerber:

Correct.

Ruth Bader Ginsburg:

–in this case.

David A. Gerber:

We agree with that.

Ruth Bader Ginsburg:

So it didn’t tell us very much.

[Laughter]

David A. Gerber:

If… if I may turn just for a moment to some of the… to the question 2, the remedies issue.

Here we would urge that the statutory language and legislative intent, to the extent that it is pertinent, coalesce.

Subject to the principles of equity, means subject to the principles of equity.

This Court, while the Lanham Act was being debated, applied equitable principles in an intellectual property case to define the circumstances under which profits may be disgorged.

That’s the Sheldon case.

David A. Gerber:

And it said equitable disgorgement of profits is permissible only for restitutionary purposes, only to restore to plaintiff something that he has lost.

That by definition precludes a purely deterrent award which is not restitutionary in the slightest.

If the Court has no further questions, I would like to reserve my remaining time.

William H. Rehnquist:

Very well, Mr. Gerber.

Mr. Garre, we’ll hear from you.

Gregory G. Garre:

Thank you, Mr. Chief Justice, and may it please the Court:

The petitioner in this case did not make any false designation as to the origin of its good, a videotaped series on World War II, when it put its own label on that good.

Petitioner manufactured the good at issue in this case, the video series.

It produced it and it and it distributed it to consumers.

Under this Court’s decisions interpreting the Lanham Act and under the Lanham Act itself, petitioner is, therefore, the origin of the good at issue at this case and is the source of that good in the way that this Court has used that term.

In 1990, Congress addressed the question of artistic attribution and it addressed it in the… in the context of the copyright laws.

And it–

Antonin Scalia:

Excuse me.

Before you go on, suppose… suppose they hadn’t edited the… the prior Crusade in Europe thing at all.

They had not done anything to it, didn’t have a… a new introduction, didn’t have the little snippets of addition that they had.

However, they did, indeed, make the copies and they… they made the… the plastic cassette in which it was inserted and so forth.

Would you take the position that… that they were the origin of that… of that product and therefore could represent that it was their product?

Gregory G. Garre:

–We… we would take that position, Justice Scalia, and I think that… that would be consistent with the way this Court has consistently interpreted the term origin, if you look at the Wal-Mart case, the Qualitex case, and going back to the concurring decisions in the Two Pesos, which is to refer to the source of production or manufacture.

Antonin Scalia:

Production not in the Hollywood sense of production.

Gregory G. Garre:

Absolutely, and–

Antonin Scalia:

Production in the sense of I made this… this physical article.

Gregory G. Garre:

–That’s correct, Justice Scalia.

And that’s… of course, we encourage the intellectual property laws, and this Court’s decisions encourage firms to go out and copy goods that come into the public domain.

In the Court’s recent TrafFix case–

Sandra Day O’Connor:

That’s what this was, in the public domain, was it not?

Gregory G. Garre:

–That’s correct.

The television–

Sandra Day O’Connor:

Do you think that this Dastar product could have been copyrightable as a derivative work on its own?

Gregory G. Garre:

–We do think that it could be copyrightable as a derivative work to the extent that it’s not subject to copyright protection.

Of course, the… the original television series was subject to a copyright, but that copyright expired in 1977 because respondent, Twentieth Century Fox, failed to renew it.

Gregory G. Garre:

And of course, if… if the respondent had renew it, one suspects that we wouldn’t be here today arguing about the… an expansive interpretation of the Lanham Act.

Now, Congress has addressed the… the question of artistic rights of attribution.

It did so in the context of the copyright laws, and it did so very carefully.

It limited… it recognized specific rights of artistic attribution in 1990, but it limited those rights to a small class of visual arts, made them personal to the author of those works, and limited the duration of the life… limited the duration of the… the rights to the life of the author.

In this case, the Ninth Circuit recognized a general right of artistic attribution that is not limited in time, that applies to a work, an audiovisual work, that Congress specifically exempted from the scope of its 1990 legislation and that is not personal to the author of the work, which in this case was Time Inc. who initially produced the television series.

Antonin Scalia:

Now, is there… is there no… I understand you’re saying I say I produced this, all it means is I produced this physical object.

But suppose in addition the person says I produced this… this physical object and, moreover, I… I produced the show that is on this physical object.

That is, I’m using produced in the Hollywood sense now.

Is there… is there… when in fact I didn’t.

I just did a little bit and most of it was done by Fox.

Gregory G. Garre:

Well–

Antonin Scalia:

Is there no remedy for that?

Because that’s what they say occurred here.

They… they wouldn’t mind your just saying, you know, I… I am the maker of this cassette or of this disk.

They wouldn’t mind that.

But… but what happened was that on the disk it said I am the artistic producer of this thing.

That’s what they’re complaining about.

Now, is there no remedy for that when they weren’t?

Gregory G. Garre:

–Two responses.

First, when they labeled a good that they manufactured and produced as their own good, they didn’t make any false designation of origin within the meaning of section (a)(1)(A) of the Lanham Act.

Now, as we’ve discussed in our brief, section (a)(1)(B) of the Lanham Act, which the respondents in this case have never invoked and the courts below didn’t address, isn’t limited to false designations of origin.

It applies to false designations that misrepresent the nature or qualities or characteristics of a good.

So the second type of description that Your Honor characterized conceivably could fall within the scope of section (a)(1)(B), but of course section (a)(1)(B) was not raised in this case and it’s also limited to the context of commercial advertising and protection.

The purpose of the Lanham Act and the trademark laws… and this is made clear in the definition of trademark that appears at 15 U.S.C. 1127, is to ensure that firms identify and distinguish their goods in order to prevent consumer confusion as to the source of goods.

Antonin Scalia:

There isn’t any general Federal anti-lying law–

Gregory G. Garre:

Well–

Antonin Scalia:

–that you could these people–

[Laughter]

Gregory G. Garre:

–No.

There’s… there’s another source, Justice Scalia, and we’ve mentioned in note 7 of our brief, the Federal Trade Commission Act gives the Federal Trade Commission authority to go out and address deceptive or unfair trade practices.

Gregory G. Garre:

But that statute too isn’t limited to false designations of origin.

Origin doesn’t even appear in that… in that statute.

Origin has–

Anthony M. Kennedy:

If I… if I just read the… the label on the videotape and it says Campaigns in Europe and it’s identical to Crusades in Europe, and I want to sue under (B) because I’ve just bought something that duplicated what I bought last week, does the label constitute commercial advertising or promotion?

Gregory G. Garre:

–We haven’t addressed that issue, Justice Kennedy, and… and there is some varying case law on that.

I think most courts would probably answer that question in the negative.

Most courts have interpreted section (a)(1)(B) to refer to advertising in the print ad–

Anthony M. Kennedy:

Well, then (B) doesn’t… doesn’t help and if… if–

Gregory G. Garre:

–Well, of course–

Anthony M. Kennedy:

–in the case I put, the… the hope you hold out for us under (B) isn’t… isn’t very promising unless you’re talking about sitting and reading what comes on in… in–

Gregory G. Garre:

–Of course, advertising is often–

Anthony M. Kennedy:

–in the credits which no one ever reads.

[Laughter]

Gregory G. Garre:

–Advertising is often associated with the sale of products, but more importantly, (a)(1)(A) is addressed… it’s intended to ensure that consumers can look at a product and identify the source of that product so if they do have complaints about the product, they can go to that person.

And notably, in this case, no consumer who has ever purchased petitioner’s videos has registered any complaint along the lines that Your Honor is suggesting.

And if–

Anthony M. Kennedy:

Well, I’m… I’m supposing a case, and I thought you had indicated that (B) might cover it, but there has to be some advertising other than what’s on… on the label.

Gregory G. Garre:

–Under section (a)(1)(B), that’s correct, but I think that the important distinction between (a)(1)(B) and (a)(1)(A) in this case with respect to origin is that… is that (a)(1)(A) is limited to false designations of origin or as to sponsorship or approval, and… and the latter two elements, sponsorship or approval, aren’t addressed in… in this case.

(a)(1)(B) is much broader and… and would include the types of other representations that Your Honor is concerned about.

And of course, all this we think goes back to the notion that respondents seek artistic attribution for their product.

David H. Souter:

May I… on that score, may I go back to your answer to Justice O’Connor’s question about the… the possibility of copyright as derivative work?

Would that copyright cover not only the new material, but all the original material that they incorporated in?

Gregory G. Garre:

I believe the… the copyright would cover the new material.

And of course, the–

David H. Souter:

So… so that if they… if they did that, if they got that copyright, they then couldn’t turn around and sue for copyright infringement when the original Crusade in Europe was… was marketed by the others.

Gregory G. Garre:

–I… I think that’s right.

We haven’t addressed that–

David H. Souter:

Okay.

Gregory G. Garre:

–question in detail in our brief.

David H. Souter:

But your… in that case your… your understanding is that it’s only the new material that would be subject to copyright.

Gregory G. Garre:

Under the derivative work.

David H. Souter:

Yes.

Gregory G. Garre:

I believe that that’s true.

But we think it’s also important that when a consumer buys the product in this case, a video… a package of videotapes on World War II, the consumer doesn’t purchase the intellectual property on those tapes.

And that’s the purpose of the FBI warning that appears at the very beginning of… of the tape.

The consumer purchases a videotape series package and a copy of that which it can view at home.

Nothing in the Lanham Act, which is not an artistic credit statute, required the petitioner in this case to provide any attribution to the true creator of the television series that petitioner initially copied.

Antonin Scalia:

Or prevented him from… prevented them from making a misattribution.

You have to add that.

Gregory G. Garre:

Well, we… we think that… that’s true with respect to authorship because we don’t think authorship or… or the concept of invention is covered by (a)(1)(A).

And, of course, the notion of attribution that respondents would urge this Court to adopt this case would have to apply to other types of goods like the sign stand in the TrafFix case.

No one in TrafFix suggested that petitioner could go out and reverse engineer and copy the sign stand which had entered the public domain, but that when it did that, it had to go and give credit to Marketing Displays, the firm that initially had the… the patent on that, or to the original inventor himself, Robert Sarkisian.

Now–

Ruth Bader Ginsburg:

Mr. Garre, before you finish, there was a reference in your brief that I didn’t follow.

It cropped up in another brief too, and it had… it was a reference to the Berne Convention.

Could you… what is the relevance of that international treaty to this… to this case?

Gregory G. Garre:

–May I answer that question?

William H. Rehnquist:

Briefly.

Gregory G. Garre:

It is relevant in that it’s an international convention that… that covers copyrights, but we explain our brief it… we don’t think that it affects the analysis in this case because it… as… as the Berne Convention Implementation Act states, it doesn’t expand or reduce existing rights under… under domestic law.

William H. Rehnquist:

Thank you, Mr. Garre.

Gregory G. Garre:

Thank you.

William H. Rehnquist:

Ms. Cendali, we’ll hear from you.

Antonin Scalia:

It’s still too high.

[Laughter]

Dale M. Cendali:

Italians.

Mr. Chief Justice, and may it please the Court:

This is not a case about copying.

It’s a case about deception.

No one is disputing that someone has the right to copy works when they’re no longer protected by copyright or patent, but as this Court has long recognized in decisions like Bonita Boats, Sears, and Compco, that doesn’t give you the right to create consumer confusion in how you label such works.

This, I should correct, is not a case about a work that’s actually in the public domain.

Dale M. Cendali:

Since the Ninth Circuit decision, as we’ve explained in our brief, we retried the work for hire issue.

The district court once again affirmed her previous summary judgment decision that the work was work for hire.

So the underlying book by General Eisenhower is, in fact, still protected by copyright, though they intend to appeal.

In any case, here Dastar violated the Lanham Act by advertising, packaging, titling, and crediting Crusade in Europe in a manner intentionally designed to give the false impression that it was an original product originally created by it.

And Dastar knew, moreover, that consumer confusion was likely.

Norman Andersen, Dastar’s President, admitted that a consumer would not be happy to have purchased a copy of Campaigns if he or she already had a copy of Crusade.

Antonin Scalia:

But the… the issue is whether the Lanham Act creates a cause of action with respect to that particular unhappiness.

What do you respond to the contention that the word origin in this provision simply means who manufactured it, not whose… whose idea it was?

And to put it in… it applies in a patent context as… as well.

You know these… these vise grips that you can have a pliers that will hold on automatically until you release it.

Suppose the patent has… has expired on that, and I produce an identical copy of… of the vise grip and I sell it and I say, you know, manufactured by Scalia.

Do I have to say, oh, but it’s not my idea?

I want you to know that, you know, Mr. Vise Grip is the guy that… that originally did it.

[Laughter]

Antonin Scalia:

I don’t have to say that, do I?

Dale M. Cendali:

Absolutely not, Your Honor, and we’re not urging that, but–

Antonin Scalia:

And what if I say, and moreover it was my original idea?

Would there be a cause of action under the Lanham Act?

Dale M. Cendali:

–Yes, that would–

Antonin Scalia:

It would be.

Dale M. Cendali:

–If… if you hold yourself out falsely–

Antonin Scalia:

Oh, my.

[Laughter]

Dale M. Cendali:

–If you hold yourself out falsely as the inventor of a product when you are not, that creates liability under the Lanham Act.

Antonin Scalia:

Why?

What does… what does that have to do with… all right.

I don’t see it.

David H. Souter:

Why is it… I mean, why is it Lanham Act rather than Copyright Act?

Dale M. Cendali:

Well, the Copyright Act just deals with copying, people making copies of something and selling it.

The Lanham Act deals with deception, and that’s what… that’s what this is.

Dale M. Cendali:

It’s not just that they made the copies, but by crediting themselves as the creator of Campaigns in Europe, they were able to jump start their video business and to be able to then get all the good will associated with that product and say, look, we can make these videos–

David H. Souter:

No.

I… I realize that, but you say, well, the Copyright Act is concerned with copying.

It’s… it’s concerned basically with… with copying a certain intellectual content.

That’s what’s… that’s what they’re trying to protect.

Dale M. Cendali:

–That’s right.

David H. Souter:

The Lanham Act, I thought, was not trying to protect intellectual content.

It doesn’t have to.

There’s another statute there.

The Lanham Act, I thought, wanted to make it clear… wanted producers to make it clear who is at fault if somebody buys the product and doesn’t like it.

There’s no deception here about that, is there?

They know they’re going to go to Dastar and raise the devil if… if they don’t like it.

Isn’t that the point of the Lanham Act?

Dale M. Cendali:

No, Your Honor.

For one thing, if they don’t like the content and they go to Dastar, they’ll have no one to talk to.

With regard to the purposes of the Lanham Act, as this Court has made clear in Inwood and in Qualitex–

David H. Souter:

No, but they will have somebody to talk to.

Dastar will say… I’m assuming they are honest people, and they will say, well, yes, we did that.

You–

Dale M. Cendali:

–But–

David H. Souter:

–you don’t like the fact that we copied this other stuff and said it was ours?

We’re the ones to blame.

Dale M. Cendali:

–But the purposes of the Lanham Act, as this Court has made clear numerous occasions, most… very recently in Qualitex, is to let consumers be able to know when they’re getting a product, if they want to get… if they like it, they want to get other things from that product… from that supplier, they can.

David H. Souter:

Dastar knows who to plagiarize.

[Laughter]

David H. Souter:

When… when I see the Dastar name, I’m getting good stuff.

[Laughter]

Dale M. Cendali:

Well… well, Your Honor, you just don’t know whether the next person they plagiarize is going to be as good as Twentieth Century Fox–

David H. Souter:

That’s why I’m relying… yes, but I’m relying on them.

[Laughter]

They… they knew who to copy the first time.

David H. Souter:

It seems to me that is just as much a… a guarantee that they’ll know who to copy the next time, as if they had made it themselves.

Dale M. Cendali:

–Well, the other problem with it, beyond the fact that they are deprived, because you have no idea whether the next time they copy will be as good as the first time, you’re also depriving the consumer of the ability to end up buying two of the same product, a very real possibility that they would recognize.

David H. Souter:

That’s right, and they… and they can go to… and they can go to Dastar and raise the devil.

They said, you didn’t tell us that you copied that other thing.

We’ll never buy Dastar again.

But they know exactly who to blame.

Dale M. Cendali:

They don’t know who to blame because if someone buys Campaigns and Crusade, they will not know who cheated them.

They will not be able to tell.

The products are lodged with the Court.

The Court can look at them.

If you bought them both, if I bought my dad one for Christmas and another one for him for his birthday, he’s not going to be happy to find he has 2 hours of the same… two copies of the same 7-hour videotape.

And in page 205 of the record, it’s clear that there are 7 hours of content in that.

Anthony M. Kennedy:

But the same point.

Why can’t he sue or you sue Dastar?

Dale M. Cendali:

You wouldn’t know who to sue.

And maybe he also would think–

Anthony M. Kennedy:

You sue the person you bought it from.

Dale M. Cendali:

–But it could have been Fox.

He wouldn’t have known who was the one telling the truth.

Moreover, he also wouldn’t know… maybe he would think, you know what?

Anthony M. Kennedy:

Well, he can sue… he can sue them both and find out.

[Laughter]

Dale M. Cendali:

I don’t know if that’s… that’s the… the best way the law should deal with it.

Going back to Justice Scalia’s question, though, about origin, there’s nothing in the Lanham Act to suggest that Congress wanted to limit the word origin to just the manufacture of a product.

Now, in Justice Stevens’ concurring opinion in Two Pesos, he specifically noted that the term origin has expanded over time from its original roots as denoting geographic origin, a concept that’s now in (a)(1)(B) of the Lanham Act, to encompass origin of both source and manufacture.

So just by this Court’s own opinion, source is something different from manufacture.

What is source?

Going back to Justice O’Connor writing for the Court in Feist, in talking about origin, originator, author, the common reading of what–

John Paul Stevens:

Yes, but there is… there is a sort of an ambiguity or at least a debate over what the source is.

John Paul Stevens:

I think your Traficante… the… the sign that stood up well in the wind… what obligation did the… did the second manufacturer have to say the idea was somebody else’s?

Dale M. Cendali:

–Absolutely none.

They could–

John Paul Stevens:

Why not?

Why isn’t it the same case?

Dale M. Cendali:

–It’s not at all the same case.

But when you’re… because you’re simply selling a physical product… if all Dastar did here was sell Crusade in Europe as Crusade in Europe, it would be a totally different case.

But what they did here is they held themselves out as the maker of it, as the creator of it.

John Paul Stevens:

No, but they didn’t hold themselves out as the people who took all the pictures.

A lot of them were secondhand pictures, you know, taken by news photographers and all sorts of people.

Dale M. Cendali:

They held themselves out by putting their names and only their names on the credits, by… by having a special thanks to the National Archives right before their names, when they admitted they had no contact… contact with the National Archives with regard to creating these products, by putting only a ’95 copyright notice on it, by… by listing only themselves as producers.

The only conclusion one can reach–

John Paul Stevens:

I don’t… I don’t readily see the difference between that and the sign situation.

The sign manufacturer wants everybody to think what a brilliant builder of signs he is.

He has a lot of other models in his catalog.

Dale M. Cendali:

–But the sign manufacturer… when we deal with products, we don’t normally think, when you have a product, that someone is saying I invented this.

We’re accustomed to lots of people selling similar products.

The commercial context is very different.

Anthony M. Kennedy:

Is what you’re… is what you’re saying that when you buy the books or the videotape, you’re buying it because you think it’s going to be different and you’re disappointed when you find out that it isn’t.

With… with TrafFix you know if it’s a sign that stands in the wind that–

Dale M. Cendali:

Well, you’re right, Your Honor.

Anthony M. Kennedy:

–But that goes again to what I… Justice Souter’s initial line of questioning.

I… I really think it’s the major problem in the case for me.

David H. Souter:

Yes, and–

Anthony M. Kennedy:

–What you do is you sue the seller Dastar… Dastar… for misrepresenting.

Dale M. Cendali:

But–

Anthony M. Kennedy:

And… and that Fox is not the injured person.

Dale M. Cendali:

–I maybe can help you on that, Your Honor–

Anthony M. Kennedy:

And that’s critical in the case for me.

Dale M. Cendali:

–because… because the Lanham Act does not provide a cause of action for consumers.

Dale M. Cendali:

So if you… if you posit the idea that consumers need to… can sue Dastar if they’re disgruntled, they cannot do that under the Lanham Act.

The Lanham Act provides… it’s been well recognized that there’s only… there’s no cause of action for consumers.

The only people then who can sue–

Anthony M. Kennedy:

There’s no cause of action if a commercial advertising misrepresents the nature of the… of the goods?

Dale M. Cendali:

–No, Your Honor.

There’s been… if you can look in McCarthy, there’s well-established case law.

David H. Souter:

No.

But who has the cause of action?

The cause of action is the other company.

Dale M. Cendali:

The… that’s right.

The people who can sue are people such as… as respondents–

David H. Souter:

All right.

Dale M. Cendali:

–who are… who are… who have had some other company come along, steal the–

David H. Souter:

No, I… I–

Dale M. Cendali:

–good will of this product and–

David H. Souter:

–I realize.

Sandra Day O’Connor:

Well, you know, I… I… this just totally ignores the fact that it was in the public domain.

I mean, of course, they had a right to copy it.

Why didn’t Fox renew the copyright if they wanted to do that?

Dale M. Cendali:

–Your Honor, they had–

Antonin Scalia:

You wouldn’t have all this trouble if they had renewed the copyright.

Dale M. Cendali:

–There’s… there’s no issue if they simply copied it as Crusade in Europe and sold it as Crusade in Europe.

There… we would not be here on a Lanham Act cause of action.

Our problem is, as we said in our complaint at… at paragraphs 12 and 22 I believe, what they did was that they held themselves out as the producers.

Antonin Scalia:

No, but isn’t the–

Sandra Day O’Connor:

–Does someone have a right to go in and take part of a previous work that’s now in the public domain and add original work to it and reissue it under their name and get a derivative copyright for at least the new part?

Now, is it authorized?

Dale M. Cendali:

Yes, they absolutely can do that–

Sandra Day O’Connor:

Yes.

Dale M. Cendali:

–but when you have a case like this which is two courts have found it was a bodily appropriation.

Dale M. Cendali:

The only things they changed were to–

Sandra Day O’Connor:

–the State court, we’re talking about the district court and the court of appeals in a–

Dale M. Cendali:

–That’s right.

Sandra Day O’Connor:

–a jurisdiction that has taken a rather extreme view of what the Lanham Act protects.

That’s what we’re reviewing.

I mean, there… it… it’s a means, it seems to me, of expanding copyright protection.

Dale M. Cendali:

Your Honor, I… I really don’t think so because, again, they could have copied.

The problem isn’t with the copying.

The problem was the taking credit for themselves.

Going back to the misattribution point on page 21 of the cert petition and Justice… Judge Cooper’s description of her own summary judgment decision, she says, by bodily appropriating the Crusade series and falsely identifying themselves as producers of Campaigns–

William H. Rehnquist:

How does the phrase, bodily appropriation, fit into the Lanham Act?

Dale M. Cendali:

–I think it’s designed as a… as a tool in reverse passing off cases where you’re dealing with products to help assess how similar those… those products are.

To go back to–

William H. Rehnquist:

Certainly there’s nothing like that in the Lanham Act itself.

Dale M. Cendali:

–No, but… but what it’s trying to do is to find a way of getting at the reverse passing off problem.

The Lanham Act doesn’t provide a particular way of establishing confusion, deception, or–

Sandra Day O’Connor:

But what it… what the Ninth Circuit theory seems to me to do is to equate the likelihood of consumer confusion with bodily appropriation.

Now, in… in the case of the traffic sign, once there was no more protection under law for that, some other manufacturer can come in and sell it and produce it and that’s a bodily appropriation, all right, but it wasn’t treated as producing consumer confusion.

Why should this?

Dale M. Cendali:

–I don’t think it… there would be liability for TrafFix under the Ninth Circuit test because it’s not just bodily appropriation, but it’s misattribution.

And as I say, when you’re just simply saying I manufactured the product, you’re not misattributing it.

If Dastar said, Dastar… I manufactured and distributed this product, that would not be reverse passing off.

They are allowed to credit themselves for what they did.

They just cannot credit themselves for what they didn’t do.

Antonin Scalia:

What… Ms. Cendali, how far back do you go?

I mean, my problem with your interpretation of the word origin… it seems to me a very good cut-off point means origin means who’s selling it, who… who produced the physical thing.

Now, you… you don’t want to limit it to that.

You want to say it also includes what the physical thing contains if it’s a… if it’s an intellectual matter.

But why do you cut it off at the last copyright owner?

I mean, suppose the cassette contained Carmen Jones.

Antonin Scalia:

Okay?

Why… why… would I have to identify not only whoever was the author of the derivative work, Carmen Jones, Harry Belafonte… I don’t know who did it.

Would I also have to identify Bizet as… as the, you know, the… the author of the original idea, plus the unknown Frenchman who wrote the novel from whom Bizet got the… got the idea?

Dale M. Cendali:

Absolutely not, Your Honor.

There–

Antonin Scalia:

Why not?

Dale M. Cendali:

–Because–

Antonin Scalia:

Why… why do you arbitrarily say, you know, you go back to the last copyright owner?

Dale M. Cendali:

–It has nothing to do with who is the copyright owner or not.

It’s distinct from copyright.

The issue is and the only issue a court needs to decide in these cases is does the person claiming a credit for themselves–

Antonin Scalia:

Right.

Dale M. Cendali:

–was that accurate.

So if the person–

Antonin Scalia:

Okay.

John Paul Stevens:

But may I ask what difference would it make if the person claiming the credit, instead of claiming for himself, said, developed by an unknown genius–

[Laughter]

John Paul Stevens:

–when he knows it was developed by you?

That would be equally misleading.

And would it be covered?

Dale M. Cendali:

–I’m… I’m sorry.

If–

John Paul Stevens:

The representation is not I developed it.

Dale M. Cendali:

–Right.

John Paul Stevens:

I know you developed it.

What I… what I represent is it was developed by a brilliant third party whose name I’m not going to disclose.

Would that be also actionable?

Dale M. Cendali:

I don’t think so, Your Honor.

John Paul Stevens:

Why not?

It’s the same… it’s the same impact on you.

John Paul Stevens:

It fails to give you credit for what you did.

Dale M. Cendali:

But again, the issue isn’t giving us credit.

The… the danger here is them taking the credit, them taking it–

John Paul Stevens:

Well, but what does it matter whether they take the credit for themselves or… or for Thomas Edison or some third party that everybody assumes really is the genius here?

It’s false in both cases.

Dale M. Cendali:

–You’re… you’re right.

If… if I understand what you’re saying is if someone mislabels a product in a false way as to what the origin of that product is–

John Paul Stevens:

Yes.

Dale M. Cendali:

–that is… that I believe is actionable under the Lanham Act, and I think it should be.

Antonin Scalia:

Even you didn’t have a copyright.

And that would apply even if you had no copyright on the product, just… just–

Dale M. Cendali:

Copyright really has nothing to do with… with this case.

They’re separate causes of action for separate purposes–

John Paul Stevens:

–Does it have to be a deliberate or could be a mistake?

Suppose the person thought the third party did it and he was wrong.

He said this was really written by William Shakespeare and it was written by Joe Smith.

Would that also be actionable?

Dale M. Cendali:

–If it was… if it was a mistake, it may be false or misleading, but there wouldn’t be any… the damage is likely to be very different if there was a mistake.

John Paul Stevens:

Why wouldn’t the damage be exactly the same?

You didn’t get credit for something you developed.

Dale M. Cendali:

But again, it’s not the… to go back, Your Honor, it’s not the giving us credit.

It’s simply the injury lies from someone taking the credit for themselves, for a company such as Dastar with no experience in the video business to suddenly in 3 months, at the investment of $4,000, be able to produce a 7-hour video tape that it can represent to the world and use to jump start its video business and sell 150 other boxed sets in competition with our client.

David H. Souter:

Well, that’s certainly… it may be unfair competition, but I’m not sure that it has anything to do with confusion.

Let me… may I ask you a different kind of question?

I thought, in answer to a question I put to you earlier, that you might be suggesting… you did not come out and say it, but I thought you might be suggesting that there would be a different kind of analysis, depending on whether we were talking about an object like the sign on the two springs, on the one hand, and an object with intellectual content on the other.

You said to me… I… I said, you know, they… if they don’t like what they get, they will know that Dastar is to blame.

And your answer was, no, they won’t because they won’t know whether Dastar copied or Fox or Fox copied Dastar.

And therefore Fox will suffer because there is confusion and Fox will get hurt.

And… and that seems to be a distinction based on the fact that you’re buying intellectual content as opposed simply to buying a sign that either stays up or it doesn’t stay up.

Is… is that an argument that… that you would make?

Dale M. Cendali:

Well, yes, in part, in the sense that certainly when someone buys a creative work knowing the author is important to the person.

If you like a Tom Clancy novel, you’ll buy another Tom Clancy novel.

David H. Souter:

No, but I mean, that’s important to me, but I thought your argument was that the original producer is… is, in fact, going to be hurt by the confusion because maybe the original producer will be blamed for the fact that there are these two identical intellectual products on the market.

Dale M. Cendali:

Yes.

That’s exactly right.

David H. Souter:

All right.

Now, what happens in the case… what would happen in the case in… in which we… we start out with… with Fox marketing its… its series and they call it Crusade in Europe, just… just as they… they labeled the original TV program, and Dastar comes out with a… with a series which is identical to it, again, copyright has expired?

Dastar comes out with a series that is identical to it and calls it War and simply says at the bottom of… of the cassette, cassette manufactured by Dastar.

There is no claim that Dastar produced anything.

Is there a Lanham Act violation then?

Dale M. Cendali:

There would not be a false designation of origin claim under (a)(1)(A).

It’s… because… because Dastar is not representing itself to be the… the creator.

It’s accurately just simply listing itself–

David H. Souter:

But the consumer would be just as mad and… I suppose, and there would be a danger even in the second case of Fox being blamed for the identity of these two products.

Dale M. Cendali:

–But there might… there would be, however, I believe in that scenario a claim under (a)(1)(B) of the Lanham Act for falsely describing the nature of the product.

As… as the cases cited in our brief–

David H. Souter:

No, but in my second example, they didn’t falsely describe it.

They just said, cassette produced by Dastar.

Dale M. Cendali:

–Only… that was true from the purposes of origin, and I’m saying there wouldn’t be an origin claim.

David H. Souter:

Yes.

Dale M. Cendali:

But with regard to the title, for the reasons discussed in the Second Circuit cases, the new American Library cases, when someone comes up with a creative work, and puts a title on it, inherent in that use is the idea that… that this–

David H. Souter:

Any change in title is therefore a deception.

Dale M. Cendali:

–It… it… that’s what those cases said, so to the–

David H. Souter:

It’s a deception in the sense that it’s an implicit denial of the identity.

Dale M. Cendali:

–That’s right–

David H. Souter:

Yes, okay.

Dale M. Cendali:

–and so therefore, I think that would be a separate issue.

And that’s why as consumers, we all know when we look at a book and we check to see, you know, if it was the same Agatha Christie book published under a different title.

And that’s an example where disclaimers are not very difficult for people to deal with in… in reality, and something that consumers all can expect.

Ruth Bader Ginsburg:

Ms. Cendali, could you describe to us precisely what it is that Dastar could represent?

Ruth Bader Ginsburg:

It has this cassette that it’s selling, and you said that they can’t say produced by Dastar and not say Fox.

What exactly could they say?

You don’t question that they could copy word for word what’s in the public domain.

In packaging it, what could they say?

Dale M. Cendali:

Probably the easiest thing for them to have done would have been to have copied it down to the last iota of the frame and simply called it and said, manufactured and distributed by Dastar.

That would not have been a problem under the Lanham Act or the… or the Copyright Act if… but for the fact that the work is not truly in public domain.

If they had want… they could have also said, new credits created by Dastar.

They could have accurately credited themselves for that.

They could have chosen not to credit anybody.

There’s no requirement of credit.

Or they could have given credit to everyone.

They could have listed the original creditors and they could have… creators, and they could have added their name on it.

All of these things they could have done which would have protected the consumer.

The consumer would have known what he or she was getting and also not usurped for themselves unjustly in an unjust enrichment way the good will to which they do not deserve.

This is–

Ruth Bader Ginsburg:

You haven’t had time to address the damages aspect of it, and if you’re right that what went wrong here was not the copying… they were free to copy–

Dale M. Cendali:

–Absolutely, Your Honor.

Ruth Bader Ginsburg:

–Then… and the only thing that was wrong was that they… the attribution of creator.

Dale M. Cendali:

The misattribution, yes, Your Honor.

Ruth Bader Ginsburg:

Why should they get the profits of Dastar when… when all they did wrong… I mean, did… copying the pages, copying the cassettes was fine.

It seems to me to… to have that large disgorgement of damages is a misfit.

Dale M. Cendali:

For several reasons, Your Honor.

First, the… what they… the disgorgement is the normal remedy in cases like this because it’s very difficult to establish actual damages of… of any type.

The statute is premised and works this way.

You… you establish your entitlement to profits.

In other words, the plaintiff just simply, once they show liability, needs to show what their… that they are… what the sales were, and then the burden is on Dastar to come forward and establish what… what deductions should be from that.

Deductions have included the ability to argue apportionment, that only some of the sales should be attributed to the infringement, for example.

John Paul Stevens:

Yes, but can I interrupt with… with… you got double profits in this case, didn’t you?

Dale M. Cendali:

Yes, we did.

The court had–

John Paul Stevens:

And wasn’t the theory of that to deter new violations, which I find strange when there’s an injunction against new violations.

Dale M. Cendali:

–No, but… but the issue here is the… they… this was undisputed.

This was the first of 150 videos.

And as Judge Posner in the Louis Vuitton opinion, discussed in our brief, discusses the enhanced damages, and, in fact, damages of any type, are particularly proper in cases such as this where there’s a risk of surreptitious infringement.

And it’s not easy to detect reverse passing off.

You could have easily have a situation where someone would rather… a rational, economic actor would rather lose the profits on a particular item if… if they can get their entire stream of… of business going forward.

This is just such a case because this was their first video.

They… they were able to use this to get instant legitimacy in the video business, and get… the injury to us isn’t just with regard to this product, but the injury for us is the entire future diversion of sales that they’ve been able to get by suddenly using Twentieth Century Fox’s work to march into the video business and get profits time immemorial.

That is why Congress has enacted the kind of damages provisions it has under the Lanham Act which I think are singularly suited for just this type of case where it’s difficult to show actual damages in any given way.

I’ll note, though, that the court in our case did specifically find that we did suffer actual damages and they did not appeal from that.

The… the record is… is clear and they’re bound with it, that we lost sales and that we also lost good will.

They have not appealed from that.

The court did not quantify that in any way, but the court then went on to award us profits and, in her discretion, to award us double profits.

She was using her discretion.

She could have awarded treble profits, but she chose in the… in the principles of equity to make a rational decision as befitting the facts of this case.

And I… she also had the opportunity, after a damages trial, to see the demeanor in each of everyone of the witnesses and to assess the credibility of their various statements, and I’m sure she factored that into her analysis as well.

And I think that the award should be upheld and we hope that the Court will affirm summary judgment.

I note that even though the Ninth Circuit opinion was… was short, given the fact it was a summary unpublished opinion, my understanding is that this Court has de novo review and has the ability, if it so chooses, to affirm the district court’s opinion on any fact in the record.

We think that the record amply supports the fact that there was reverse passing off here.

It is a cause of action.

I’m not aware of any court to ever suggest a reading of the Lanham Act that reads reverse passing off out of the Lanham Act the way that the Solicitor General and Dastar urges here.

I’m not aware of a single court to ever make that suggestion.

It just doesn’t make sense in light of the plain language of the Lanham Act.

It doesn’t make sense in light of the fact that, as this Court again has recognized in Two Pesos, the ’88 amendments were only designed to codify existing law.

They weren’t entitled… intended to make any change, and there was absolutely no suggestion anywhere that anyone ever thought that reverse passing off should be eliminated.

It’s–

Anthony M. Kennedy:

Did the disclaimer or the acknowledgement have to be on the package or just in the forewords… or on the film, just in the screen credits?

Dale M. Cendali:

–The disclaimer… I’m sorry, Your Honor.

Anthony M. Kennedy:

If… if Dastar had done what you say they’re required to do, would it have sufficed if they put the information just on the screen credits, or does it have to be on the package that the consumer buys?

Dale M. Cendali:

Well, I think it… probably on the package the consumer buys it should have said, manufactured and distributed by Dastar.

Anthony M. Kennedy:

But… and if it’s not on the package, then there’s–

Dale M. Cendali:

And–

Anthony M. Kennedy:

–then there’s a cause of action even if it’s on the screen credits?

Dale M. Cendali:

–No.

I think that if the credits… if our credits are on the inside and not on the outside, they wouldn’t need to put a disclaimer probably on the… on the outside.

In other words–

Anthony M. Kennedy:

But the buyer doesn’t… the buyer has already bought it by the… I mean, the screen credits, you know, you’re going to the refrigerator or reading cert petitions or something.

[Laughter]

Anthony M. Kennedy:

No one… no one looks at–

Dale M. Cendali:

–Well, that… well, that’s why the outer packaging has to be correct.

All I’m saying is that if they simply put on the outer packaging manufactured and distributed by Dastar, they wouldn’t need to have a disclaimer.

If on… if on the inside they were doing something different, or if they–

Anthony M. Kennedy:

–Again, I… I’m bothered.

It doesn’t seem to me this is for the protection of the consumer at all.

I… I understand what you’re telling me about the act.

Dale M. Cendali:

–Well, again, you know, as this Court in Qualitex and other decisions have said, a consumer… and Colgate-Palmolive… has the right to know when they buy something, even if it’s a capricious reason, you know, who they’re getting it from and they should have the right to base their future purchasing decisions based on accurate information.

Here Dastar took that right from the consumer.

A consumer, if they liked Campaigns in Europe, they may go out–

John Paul Stevens:

Yes, but if that’s right, there’s a duty to disclose the true producer then.

That’s your position.

Dale M. Cendali:

–No.

You would think it could be, but it doesn’t have to be.

John Paul Stevens:

Well, if you’re saying they have a right to know that, there must be a duty to disclose.

Dale M. Cendali:

No.

Only that they had the right not to know what’s false.

In other words, the law could go so far–

John Paul Stevens:

Well, that’s a very lesser right than the one you were just describing–

Dale M. Cendali:

–I appreciate that, but… but at… at a minimum a consumer should not have false information.

And again, as I come back to where I started, that’s what this is about.

These videos have been lodged with the Court.

Dale M. Cendali:

I invite the Court to… to look at them.

And you will see how deceptive they are on the inside and on the outside and how going back to the… my… the father getting the… the Christmas and birthday presents that are identical, which is a very real possibility, that is not a happy situation for the consumer.

Congress put in the competitor the… the private attorney general role to stop it.

And I note, moreover, that this was very targeted act… misconduct on their part.

Before they released Campaigns in Europe, they saw in a video catalog that Crusade in Europe in a boxed set was for sale.

They didn’t care.

They targeted the competition and they continued.

Thank you.

William H. Rehnquist:

–Thank you, Ms. Cendali.

Mr. Gerber, you have 5 minutes remaining.

David A. Gerber:

I have two short points.

Number one, Ms. Cendali contends that there is no textual support in the section of the Lanham Act at issue, 41(a)(1)(A), supporting our and the SG’s interpretation of origin and excluding the authorship concept.

I would suggest that she’s wrong.

The textual support is the word origin.

Unlike the Copyright Act, which uses the word author, the Patent Act, which uses the word inventor, the Lanham Act uses a different word and the word is origin.

And that is completely in accord with this Court’s jurisprudence.

I think perhaps as Justice Souter had suggested, the… the purpose from a policy perspective is to render efficient purchasing decisions, as this Court stated in Qualitex.

Antonin Scalia:

And you… you would stand by that for forward–

David A. Gerber:

Absolutely.

Antonin Scalia:

–causes of action–

David A. Gerber:

Yes.

Antonin Scalia:

–as well as… as well as reverse.

David A. Gerber:

Yes.

Antonin Scalia:

So that if I sold a cassette that I physically manufactured and I advertised it as being Carmen Jones, the original MGM production, and in fact it was The Capitol Steps, there wouldn’t be any… there wouldn’t be any Lanham Act cause of action.

David A. Gerber:

I think that is forward passing off.

I may be–

Antonin Scalia:

That’s what I’m saying.

That’s forward passing off, and you would say that since origin means what you say it means, I’ve manufactured the piece of plastic, there’s no… there’s no cause of action under the Lanham Act.

David A. Gerber:

–Oh, excuse me.

Yes.

Antonin Scalia:

I mean, he who says A must say B, right?

David A. Gerber:

The… the answer under the specific, myopic section we’re looking at that it is correct.

That would not be assertable.

It would be redressable under, arguably, subsection (B) and we may differ from the SG with respect to commercial advertising and promotion and whether a point of sale labeling qualifies.

And under a lot of consumer protection statutes in the States as well as the Federal Trade Act, the… the second point that I promised responds, I believe, to Justice O’Connor.

I wanted to add to the answer to the question yes, this would be a copyrightable derivative work, the observation that the copyright defines proper credits for derivative works.

It tells owners of derivative works who may be designated as the copyright proprietor, and the law there is that the owner of a derivative work, such as Dastar, may use its name.

It doesn’t have to refer to the names of owners of preexisting works.

So what we have with the suggestion of respondents is a kind of dual series of credits, proper credits under the Copyright Act, and then authorial credits.

I… I would suggest another example in response to Justice Scalia’s question, it can become quite burdensome.

You know, for a very highly complex, iterative product like a car, you might have 300 pages of credits in the owner’s manual before you even get to how do you turn on the key under the alternative universe of credits that is completely different from the derivative work credits required by the Copyright Act.

Unless the Court has further questions, then–

David H. Souter:

Well, if you have a minute, would you address Ms. Cendali’s argument that there is significance when a product has intellectual content and there is duplication because then the confusion may very well, indeed, redound to the… to the original… to the originator of the product?

The consumer doesn’t know who to blame, so the originator of the product may well be hurt.

What is your response to that argument?

David A. Gerber:

–I’m not sure I… I’m recalling the example completely.

If I get it, the consumer does know who to blame.

It has the–

David H. Souter:

No.

Her… her point is you got… you got two sets of videos out.

One has got Dastar on it saying, in effect, it’s ours.

The other one has got Crusade in Europe saying Fox.

The consumer is mad because the consumer has both.

The consumer doesn’t know who to blame, so the consumer blames both.

What’s the response to that argument?

David A. Gerber:

–I’m not sure I will buy into that consequence.

Where both parties state their names as manufacturer, the consumer could be quite happy.

He could say Dastar’s cost one-fifth of what Fox’s did and recommend it to all of his friends.

So while there might be confusion in the literal sense, it might actually be salutary.

And the efficiency of that type of consumer decision is really what putting the name of the manufacturer on enables the consumer to do.

David A. Gerber:

It renders the transactions efficient.

William H. Rehnquist:

Thank you, Mr. Gerber.

The case is submitted.