Although Professor Ochoa view seem logical, the United States took a
different view in its Amicus brief in support of petitioner. The brief is
available on line at
http://www.usdoj.gov/osg/briefs/2002/3mer/1ami/2002-0428.mer.ami.html
In its brief, the United States posits that misattribution may still be
actionable under the Lanham Act:
"Section 43(a) of the Lanham Act was designed to prevent passing off, the
classic example of unfair competition. But lower courts have concluded that
Section 43(a) also applies to certain types of reverse passing off. For
example, in one leading case, the court held that Section 43(a) was violated
when the distributor of a movie misattributed the name of the star of the
film in the movie's advertising and credits by replacing the name of the
actor who starred in the film with the name of someone who did not even
appear in it. Smith v. Montoro, 648 F.2d 602 (9th Cir. 1981). So too, courts
have concluded that Section 43(a) prevents a producer from obtaining the
goods manufactured by a competitor, obliterating the competitor's mark, and
then relabeling and reselling the same goods as the producer's own. Although
they fall outside the heartland of Lanham Act protections, such
misattribution and relabeling cases can be squared with a careful textual
analysis of Section 43(a)."
The brief continues
"At the same time, however, Section 43(a) should not be construed in a
manner that would establish a generalized duty on the part of producers to
credit the original creators of works. Such a construction could overextend
the Lanham Act by giving the original creators of works a perpetual
trademark right to prevent the uncredited copying of a work, even after the
work is no longer subject to copyright or patent protection from such
copying."
The interest of the United States as identified at the beginning of the
brief included a reference to the Berne Convention to which the United
States adhered in 1989:
"This case concerns the circumstances in which the Trademark Act of 1946 (La
nham Act), 15 U.S.C. 1125(a), prevents the uncredited copying of a work. The
United States has a strong interest in promoting the pro-competitive
policies underlying the Nation's trademark and antitrust laws, and in
preventing consumer confusion as to the source of goods or services. The
United States also has a substantial interest in ensuring that domestic law
is consistent with the United States' international obligations under the
Berne Convention for the Protection of Literary and Artistic Works, 828
U.N.T.S. 221, to which the United States has acceded. See Berne Convention
Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853. In
addition, the United States and its agencies are subject to suit under the
Lanham Act. 15 U.S.C. 1122(a)."
The Amicus brief noted U.S. compliance with the moral rights provision of
Berne.
"In acceding to the Berne Convention, Congress carefully considered the
United States' obligations under Article 6bis and concluded that the
protections available under then-existing domestic law, including the Lanham
Act, were sufficient to meet those obligations. See H.R. Rep. No. 609,
supra, at 38 ("Based on a comparison of its laws with those of Berne member
countries, and on the current status of Federal and State protections of the
rights [embodied in Article 6bis], the Committee finds that current United
States law meets the requirements of Article 6bis."); see id. at 34 n.66
("[T]he totality of our law, including the common law of torts, provides
protection at a level sufficient to comply with the convention's [moral
rights] requirements.") (quoting letter from Secretary of Commerce); S. Rep.
No. 352, 100th Cong., 2d Sess. 9-10 (1988) (considering "various provisions
of the Copyright Act and Lanham Act, various state statutes, and common law
principles").
Perhaps the Department of Justice was concerned that eliminating the remedy
for misattribution as it existed in 1988 could weaken that Congressional
finding.
Jim Brennan
> >>> keleti[_at_]manifesto.com 06/05/03 07:39AM >>> wrote:
> But taking credit for a symphony, painting, novel or play WOULD be a
> false designation of origin. Under the Lanham Act it's not necessary,
> for example, the credit the songwriters to a musical work, but if one
> does undertake the attribution, if must be completely accurate. Under
> Lamothe v. Atlantic Recording Corp., 847 F.2d 1403 (9th Cir. 1988), a
> song had three writers, but only two were credited. That was held to be
> a violation; although literally true, the attribution was to two actual
> writers, the suppression of the third was improper. Because the work at
> issue in Lamothe was still covered by copyright, the Dastar decision
> does not affect it, but it would be a different matter using your
> hypothetical examples, since those are public domain works.
> <<<<<
>
> I respectfully disagree with Martin on this point. I think Dastar
> implicitly overrules Lamothe. Dastar says the word "origin" in the
> Lanham Act means the source of tangible goods, not the creator of a
> work. If that's true, then there is no statutory basis for an action in
> Lamothe.
>
> Tyler T. Ochoa
> Professor and Co-Director
> Center for Intellectual Property Law
> Whittier Law School
> 3333 Harbor Blvd.
> Costa Mesa, CA 92626
> (714) 444-4141, ext. 243
> (714) 444-1854 (fax)
> tochoa[_at_]law.whittier.edu
>
> EFFECTIVE JULY 1, 2003:
> Professor of Law
> High Tech Law Institute
> Santa Clara University School of Law
> 500 El Camino Real
> Santa Clara, CA 95053
> (408) 554-4767
> (408) 554-4426 (fax)
> ttochoa[_at_]scu.edu
>
>
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Received on Tue Jun 10 2003 - 19:01:54 GMT
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