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Origin of Goods Under the Lanham Act: An Analysis of the Supreme Court's Decision in Dastar Corp. v. Twentieth Century Fox Film Corp.

By Jonathan D. Reichman and Amy G. Feinsilver
September 05, 2003

The Copyright Act and Patent Act were designed to protect originality and creativity. Courts, however, have generally been cautious about misusing or overextending the Lanham Act to areas traditionally occupied by patent or copyright law. See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001).

Section 43(a) of the Lanham Act creates a cause of action for 'passing off' or 'palming off,' defined as the substitution of one brand of goods for another. See McCarthy on Trademarks and Unfair Competition, '1:10 (4th ed. 2003)(noting that this constitutes unfair competition). Reverse passing off occurs when a party removes or replaces the original trademark without permission and brands the item with its own mark. See, e.g., Smith v. Montoro, 648 F.2d 602, 603 (9th Cir. 1981); see also McCarthy on Trademarks and Unfair Competition '25:6 (4th ed. 2003). The Lanham Act has been interpreted to also cover reverse passing off. See Smith, 648 F.2d at 603. However, in the case of routine consumer goods, the courts have not addressed what occurs when one modifies a pre-existing work of an expressive nature (eg, a book or a movie), which, from a copyright standpoint, is in the public domain, as in the case of Dastar.

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