539 US 23
Facts: the publisher of a WWII book licensed the book to be used in a television series. After the tv series was made, the company eventually allowed the copyright to expire and the video went into the public domain. The publisher then reacquired the rights to the tv series, and licensed them to two companies to repackage and distribute the series through videocassette. A Rival company then purchased the tape of the original public domain video, created their own version of the same WWII videocassettes, and sold the videos.
The original publishers/owners of the video sued the Rival company under section 43(a) of the Lanham act, which forbids a person to use in commerce any word, term, name, symbol or device that is likely to cause confusion or mistake as to the origin of the person’s goods.
Proc. History: The original publisher was granted a summary judgment in District Court. The Ninth Circuit affirmed. The Supreme Court of the United States (SCOTUS) granted certiorari.
Issue: whether one can sue under the Lanham Act which forbids using a misleading mark, where the “misleading†aspect is that the mark-user is “misleading†the public in terms of where the ideas behind the product came from.
Holding: no. reversed, remanded
Analysis: Scalia, writing for a unanimous Court concludes that under he Lanham Act, the Rival was the “origin†of the products that the Rival had sold as its own. The plaintiff’s claim would have been materially different (and sustainable) had the Rival company simply taken their videos, repackaged them as their own, then sold them to the public. However, in this case, the Rival company crated an entirely new product and simply failed to acknowledge where the ideas behind their product originated. The Lanham Act was never designed to operate in such a fashion.
Facts: the publisher of a WWII book licensed the book to be used in a television series. After the tv series was made, the company eventually allowed the copyright to expire and the video went into the public domain. The publisher then reacquired the rights to the tv series, and licensed them to two companies to repackage and distribute the series through videocassette. A Rival company then purchased the tape of the original public domain video, created their own version of the same WWII videocassettes, and sold the videos.
The original publishers/owners of the video sued the Rival company under section 43(a) of the Lanham act, which forbids a person to use in commerce any word, term, name, symbol or device that is likely to cause confusion or mistake as to the origin of the person’s goods.
Proc. History: The original publisher was granted a summary judgment in District Court. The Ninth Circuit affirmed. The Supreme Court of the United States (SCOTUS) granted certiorari.
Issue: whether one can sue under the Lanham Act which forbids using a misleading mark, where the “misleading†aspect is that the mark-user is “misleading†the public in terms of where the ideas behind the product came from.
Holding: no. reversed, remanded
Analysis: Scalia, writing for a unanimous Court concludes that under he Lanham Act, the Rival was the “origin†of the products that the Rival had sold as its own. The plaintiff’s claim would have been materially different (and sustainable) had the Rival company simply taken their videos, repackaged them as their own, then sold them to the public. However, in this case, the Rival company crated an entirely new product and simply failed to acknowledge where the ideas behind their product originated. The Lanham Act was never designed to operate in such a fashion.