When You Wish Upon Dastar: Creative Provenance and the Lanham Act

This Article examines the application of section 43(a) of the Lanham Act to claims of reverse passing off through the lens of the Supreme Court\u27s unpersuasive effort in Dastar Corp. v. Twentieth Century Fox Film Corp. to exclude a single class of reverse passing off-claims - those involving “expressive” works as opposed to physical commodities - from the scope of section 43(a). The Article critiques the Court\u27s analysis of section 43(a) in light of case law and the pertinent legislative history, including, the Trademark Law Revision Act of 1988, the Berne Convention Implementation Act of 1988, and the Visual Artists Rights Act of 1990. This history received no attention whatsoever in the Dastar opinion. The Article then proposes an alternative analysis which respects the public policy goals of both trademark and copyright law while eliminating the more problematic aspects of the Court\u27s interpretation of the Lanham Act. Under this approach, tangible goods and expressive works would be treated alike. In both cases, affirmatively false or misleading representations of origin would be actionable under section 43(a), while merely omitted or incomplete provenances would be disregarded. As the Article demonstrates, this approach is more consistent with the international treaty obligations of the United States under the Berne Convention, as well as the historical understanding of the common law of reverse passing off, as exemplified in the Restatement (Third) of Unfair Competition. This approach preserves the application of section 43(a) to traditional passing off claims in the context of expressive works, thus ensuring that authors and other creative artists will continue to enjoy the same rights as other trademark owners - most importantly, the right to prevent others from using an author\u27s name and reputation as a marketing tool to attract customers for works to which the author did not in fact contribute