Thursday, June 05, 2003

Small distributor triumphs over 20th century fox in court

June 5, 2003
In this newsletter:

Mark Litwak to Lecture at University OF HAWAII jUNE 21-22
Mark Litwak will be teaching two of his most popular courses at the University of Hawaii at Manoa.

"Self-defense for Writers & Filmmakers" will be held June 21. This seminar explains how writers and filmmakers can prevent problems from arising by properly securing underlying rights and by encouraging the other party to live up to agreements by adding performance milestones, default penalties and arbitration clauses. Participants will also learn what remedies are available to enforce their rights in the event of a dispute.
For more information and registration for this class, click here:

"Financing and Distributing Independent Features" will be held June 22. This seminar explores how independent films are financed and distributed. The seminar includes an extensive handout with a long-form distribution contract, checklists and other materials useful in preparing to raise cash and distribute your film.
For more information and registration for this class, click here:

Hollywood Finance and Distribution Market AT DOUBLETREE HOTEL, JULY 19–20
Want to know how industry insiders approach financing and distribution? Wonder how you can improve your distributor and studio execs think your project's chances are?
On July 19 – 20, the Hollywood Film Festival will provide independent filmmakers with the opportunity to learn about finance and distribution opportunities from organizations such as Buena Vista Studios, Regent Entertainment, Initial Entertainment Group, iFilm, Paramount Classics, Miramax Films, Lions Gate Films Releasing, and Laemmle Theatres.

The two day event will cover such topics as international co-productions, subsidies, and production incentives; distribution channels; how soon is too soon to promote or market a film; and the future of film financing.

In addition, filmmakers will have the opportunity to discuss their projects with agents, studio execs and distributors in 30-minute roundtables. The full schedule of events and details can be found at

Small distributor triumphs over 20th century fox in court
by Chrys Wu, Paralegal to Mark Litwak

The U.S. Supreme Court gave one to the little guy on Monday, June 2. Fox had attempted to stop the defendant, Dastar Corporation, from distributing a program that had gone into the public domain by relying on unfair competition law since copyright law no longer protected the work. Under copyright law, once a copyright expires, others are free to copy and distribute the work without restriction. Unlike copyright law, which provides for a limited term of protection, a trademark can last indefinitely, provided the mark stays in use. Fox attempted to stop Dastar from duplicating and distributing footage from a program that was once under copyright to Fox, by asserting that Dastar had violated unfair competition laws by distributing this material under Dastar's name, and not crediting the origin of the work to Fox.

If Fox had prevailed with this line of reasoning, then unfair competition laws would be able to restrict the use of works that were no longer copyrighted.

Key to the Supreme Court's decision was determining the definition of the phrase "origin of goods" as used in the §43(a) of the Lanham Act.

In the late 1940s, 20th Century Fox was granted exclusive television rights to a book by General Dwight D. Eisenhower. Fox arranged for Time, Inc. to produce a TV series based on the book. Time assigned the TV series copyright to Fox and Fox first broadcast the series 1949.

In 1975, Doubleday renewed the book's copyright. Fox, however, did not renew the TV series copyright and the series fell into the public domain in 1977. In 1988, Fox reacquired television rights to the book, including the exclusive right to distribute the TV series on video and to sub-license that right. The sub-licensors then began to repackage and resell the 1949 TV series.

In 1995, Dastar released its own set of World War II videotapes based in part on the 1949 TV series now in the public domain. Dastar did not attribute the portions of the public domain footage to Fox or its sub-licensors and they, claiming reverse passing off in violation of Section 43(a) of the Lanham Act.

The lower courts ruled in Fox's favor, saying that because a substantial portion of Dastar's videotape series was based on the 1949 Fox television series, the public was likely to be "deceived or confused" about the origins of the Dastar video content.

The Supreme Court ruled that had Dastar bought some of the sub-licensors new tapes and simply repackaged them as Dastar's own, they would surely have been in violation of the Act.

In this case, the Court wrote, Dastar had taken work from the 1949 TV series, which is in the public domain, made additional changes and produced its own video series, resulting in a new "origin of goods."

Writing for the Court, Justice Antonin Scalia determined that "origin of goods" referred to the producer of a tangible product sold in the marketplace. However it would be impossible for this phrase to refer to "the person or entity that originated the ideas or communications that 'goods' embody or contain," as it would conflict with the Act's purpose – which is to make "actionable the deceptive and misleading use of marks" and "to protect persons engaged in … commerce against unfair competition."

Furthermore, if one had to trace the "origin of goods" to uncopyrighted materials, such the public domain work in this case, "'origin' has no discernable limits," the Court wrote. By example, the Court traced one possible attribution sequence for the MGM film, "Carmen Jones." If uncopyrighted materials had to be attributed for this film after its copyright expired, not only would attribution be made to MGM, but also to Oscar Hammerstein II, who wrote the musical on which the film was based; and to Georges Bizet, who wrote the opera on which the musical was based; and to Prosper Mérimée, who wrote the novel on which the opera was based.

"We do not think the Lanham Act requires this search for the source of the Nile and all is tributaries," the Court concluded. Ruling that trademark law, as embodied in the Lanham Act, does not prevent the unaccredited copying of a work in the public domain, the high court reversed a decision against music and video distributor Dastar Corporation, sending the case back to the lower court for further review.
Dastar Corporation v. Twentieth Century Fox Film Corporation et al., S.Ct. No. 02-428