Justice Scalia on Trademark and Copyright: Dastar, Penguin-Shaped Cocktail Shakers and “Guilt by Resemblance”

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition
Contact

When we decided to mark the passing of Justice Antonin Scalia by recounting a few of his copyright and trademark opinions, we were somewhat surprised to discover that there really hadn’t been that many. In fact, we located only seven matters in which Justice Scalia contributed a written opinion on a substantive issue of trademark or copyright law, and only four were majority opinions. Here they are, in chronological order:

K Mart Corp. v. Cartier, 486 U.S. 281 (1988)

In 1922, the United States began regulating the importation of gray-market goods, that is, foreign-manufactured goods bearing a valid U.S. trademark that are imported into the U.S. without consent of the U.S. trademark holder. Section 526 of the Tariff Act prohibited gray-market imports, but the implementing regulations provided for various “common control” exceptions, which allowed the importation of goods manufactured abroad by affiliates of the trademark holder. In 1984, an association of U.S. trademark holders challenged these regulatory exceptions as invalid and inconsistent with the broad prohibition set forth in the statute. In a deeply wonky opinion complex enough to merit its own Lonely Planet guide, Justice Kennedy cobbled together a majority and held that most of the exceptions were a permissible interpretation of the statute. Justice Scalia, then in his second term on the Court, disagreed and dissented, arguing that the regulations contradicted the statute. “The authority to clarify an ambiguity in a statute,” Justice Scalia wrote, “is not the authority to alter [] its unambiguous applications, and [Section 526] unambiguously encompasses most of the situations that the regulation purports to exclude.”

Feltner v. Columbia Pictures, 523 U.S. 340 (1998)

Several broadcast television stations continued airing masterpieces such as Who’s the Boss, Silver Spoons and T.J. Hooker even after they had stopped paying royalties, leading to a fairly slam dunk copyright claim by Columbia Pictures. Columbia prevailed on summary judgment and exercised its option under Section 504 of the Copyright Act to collect statutory damages (in lieu of actual damages), which were supposed to be measured by what “the court considers just.” The stations demanded a jury trial on what the amount of statutory damages should be, but the District Court and Ninth Circuit refused. Justice Thomas, writing for the Court, reversed. Although the text of Section 504 afforded no jury right, the Court held that the Seventh Amendment nevertheless required it. Justice Scalia, in concurrence, felt that this constitutional issue should have been avoided altogether, because there was a “fairly possible” reading of Section 504 that did in fact provide for a jury trial right. Justice Scalia noted that, according to certain dictionaries, the word “court” was not necessarily limited to a judge, but could also mean anyone duly assigned to administer justice, including a jury.

College Savings Bank v. Florida Prepaid, 527 U.S. 666 (1999)

Justice Scalia authored his first majority opinion on a trademark or copyright issue nearly a dozen years into his tenure. College Savings, a private bank engaged in the business of education financing, had brought suit against Florida Prepaid, an arm of the Florida government that offered competing services. College Savings claimed that Florida Prepaid made false claims about its own services in violation of Section 43(a) of the Lanham Act. Florida Prepaid asserted that it was protected by sovereign immunity, but College Savings argued that Florida’s sovereign immunity was expressly abrogated by the 1992 Trademark Remedy Clarification Act (TRCA). Justice Scalia, writing for a slim 5-4 majority, held that the Eleventh Amendment did not give Congress the authority to abrogate state sovereign immunity. Moreover, although the Fourteenth Amendment did give Congress this authority, such authority was limited to situations involving the deprivation of property without due process. Here, however, Justice Scalia held that the relevant false advertising provisions of the Lanham Act’s did not invoke “property” rights, because a claim that a competitor lied about its own product does not involve the “right to exclude others.” Justice Breyer dissented, joined by Justices Stevens, Souter and Ginsberg.

Wal-Mart Stores v. Samara Bros., 529 U.S. 205 (2000)

Clothing designer Samara brought Lanham Act and copyright infringement counts against Wal-Mart, alleging that the retailer was selling knock-offs of its children’s apparel. Samara asserted that its clothing designs were protectable as inherently distinctive trade dress for purposes of Section 43(a). The Second Circuit upheld a jury verdict in favor of Samara, but a unanimous Supreme Court reversed, in an opinion authored by Justice Scalia. The Court held that, in an action for unregistered trade dress infringement, the plaintiff was required to prove secondary meaning in order to establish distinctiveness. The Court also held that product design, like color, cannot be inherently distinctive. Justice Scalia wrote “that product design almost invariably serves purposes other than source identification,” and therefore “[c]onsumers are aware of the reality that, almost invariably, even the most unusual of product designs — such as a cocktail shaker shaped like a penguin — is intended not to identify the source, but to render the product itself more useful or more appealing.”

Dastar v. Twentieth Century Fox, 539 U.S. 23 (2003)

Probably the most important copyright or trademark decision by Justice Scalia involved a World War II documentary series called Crusade in Europe. Twentieth Century Fox owned the rights to the series, but for some reason let the copyright expire. Dastar took full advantage of the public domain status of the program by purchasing a copy, editing it down to about half its length, and then selling copies of this shortened derivative work under the DASTAR mark. Twentieth Century Fox, unable to rely on copyright law, turned to the Lanham Act, claiming that Dastar was engaged in reverse passing off under Section 43(a), because it was misrepresenting the “origin” of the product.  But Justice Scalia, writing for the majority, disagreed and held that the “origin” of a product for trademark purposes meant the origin of the object consumers are purchasing, not the author or inventor whose ideas led to the product’s creation. Justice Scalia used Coke and Pepsi as examples: the Lanham Act protects a consumer’s right to know that the bottle of Coke he or she is purchasing isn’t really a Pepsi, but it doesn’t protect a consumer’s right to know the name of the individuals who invented Coke or Pepsi. Dastar effectively ended the use of Section 43(a) as remedy to correct the improper attribution of authorship in scholarly and creative work; in fact, some argue that Justice Scalia’s opinion effectively caused that the United States to fall out of compliance with the Berne Convention.

Lexmark International v. Static Control Components, Inc., 134 S. Ct. 1377 (2014)

Lexmark, the manufacturer of printers and printer cartridges, allegedly made false statements about Static Control, the maker of a chip that facilitated the recycling and reuse of Lexmark’s cartridges. Static Control brought a claim for false advertising, but the District Court, noting that the parties were not direct competitors, dismissed the case for lack of standing.  The Sixth Circuit reversed and Lexmark appealed. Writing for a unanimous Court, Justice Scalia agreed that Static Control had standing, because it fell within the “zone of interests” protected by the Lanham Act; that is, although not a direct competitor, Static Control had adequately alleged that certain commercial speech by Lexmark was likely to cause it lost sales or harm to its business reputation.

ABC, Inc. v. Aereo, Inc., 134 S. Ct. 2498 (2014)

Aereo offered a service that allowed viewers to watch broadcast television programs over the internet through the remote control use of tiny dime-sized antennae that serviced only one viewer at a time. The Supreme Court held that Aereo’s service infringed the broadcasters’ exclusive right to publicly perform their work. Justice Scalia, in his last published opinion on a copyright or trademark issue, dissented on the grounds that what Aereo did was not a performance by Aereo at all; rather, the viewers were the ones “calling all the shots” by directing the antennae to transmit infringing programs.  Justice Scalia further argued that the majority opinion imposed on Aereo “guilt by resemblance,” holding it liable for copyright infringement not so much because it violated the text of the Copyright Act, but because it resembled past technologies that were found to have done so. Justice Scalia perhaps summed up a large chunk of his judicial oeuvre with the concluding exhortation: “the proper course is not to bend and twist the Act’s terms in an effort to produce a just outcome, but to apply the law as it stands and leave to Congress the task of deciding whether the Copyright Act needs an upgrade.”

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Foley Hoag LLP - Trademark, Copyright & Unfair Competition | Attorney Advertising

Written by:

Foley Hoag LLP - Trademark, Copyright & Unfair Competition
Contact
more
less

Foley Hoag LLP - Trademark, Copyright & Unfair Competition on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.