Preemption and Mutant Copyright

In Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 31 (2003), Justice Scalia phrased the question to be decided this way:

[A]s it comes to us, the gravamen of respondents' claim is that, in marketing and selling [defendant’s TV series] as its own product without acknowledging its nearly wholesale reliance on the [plantiff’s] television series, Dastar has made a “false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which ... is likely to cause confusion ... as to the origin ... of his or her goods.” § 43(a). See, e.g., Brief for Respondents 8, 11. That claim would undoubtedly be sustained if Dastar had bought some of New Line's Crusade videotapes and merely repackaged them as its own. Dastar's alleged wrongdoing, however, is vastly different: It took a creative work in the public domain-the Crusade television series-copied it, made modifications (arguably minor), and produced its very own series of videotapes. If “origin” refers only to the manufacturer or producer of the physical “goods” that are made available to the public (in this case the videotapes), Dastar was the origin. If, however, “origin” includes the creator of the underlying work that Dastar copied, then someone else (perhaps Fox) was the origin of Dastar's product. At bottom, we must decide what § 43(a)(1)(A) of the Lanham Act means by the “origin” of “goods.”

He then answered the question as follows:

Assuming for the sake of argument that Dastar's representation of itself as the “Producer” of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under § 43(a) for that representation would create a species of mutant copyright law that limits the public's “federal right to ‘copy and to use’ ” expired copyrights, Bonito Boats, supra, at 165, 109 S.Ct. 971. When Congress has wished to create such an addition to the law of copyright, it has done so with much more specificity than the Lanham Act's ambiguous use of “origin.”

Subsequent courts have not limited Dastar to works that are in the public domain, which is why it is a surprise to read the recent opinion in LBB Corp. v. Lucas Distribution, Inc., 2008 WL 2743751 (S.D.N.Y July 14, 2008) No. 08 Civ. 4320(SAS). The facts are a bit spare, perhaps because of the court’s sensitivity to the pornographic of the films. As related by the court:

Plaintiff LBB Corporation is a California corporation that produces and distributes pornographic films that are marketed toward niche audiences. Pursuant to a contract dated November 6, 2007, LBB purchased all rights to a film entitled Nasty Piss Boys (the “Work”), a film produced in the Czech Republic by Galaxia Studio. Defendants are marketing a film entitled Raw Twinks in Czech, an identical or substantially similar film that features the same performers in the same sequence.FN3

FN3. See Compl. ¶¶ 23, 36. A cursory examination of the DVD cases indicates that at least one of the photographs on defendants' case is identical to a photograph on the case of the Work.

Claims were brought under the Copyright Act and a New York State consumer protection law. Section 349 of the General Business Law. The opinion only concerns the state law claim. Defendant moved to dismiss the claim under FRCP 12(b)(6) for failure to state a claim, arguing inadequacy under state law. The court granted the motion on that ground, but rejected defendant’s preemption argument. That seems error to me. In finding that the requirement of intentional deception saved the claim from preemption, the court merely cited to a pre-Dastar opinion in the Second Circuit, and then added: “The only harm alleged in the Complaint is actual confusion amongst consumers whereby the public is deceived and confused into believing that the Defendants' film is produced, provided, endorsed or authorized by Plaintiff.”

But the actual claim seems to be based on what Dastar rejected, a claim based on the content of the film, not confusion as to its origin.