Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistKickerSectionsNewsLJN Newsletters

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

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.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

Beach Boys Songs Written Decades Ago Triggered Current Quarrel With Lawyers Image

There's current litigation in the ongoing Beach Boys litigation saga. A lawsuit filed in 2019 against Nevada residents Mike Love and his wife Jacquelyne in the U.S. District Court for the District of Nevada that alleges inaccurate payment by the Loves under the retainer agreement and seeks $84.5 million in damages.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

Warehouse Liability: Know Before You Stow! Image

As consumers continue to shift purchasing and consumption habits in the aftermath of the pandemic, manufacturers are increasingly reliant on third-party logistics and warehousing to ensure their products timely reach the market.