A US District judge in Pennsylvania recently reinforced the distinction between federal trademark and copyright protections by holding that the Lanham Act – the United States’ federal trademark law – protects against the misrepresentation of the origin of goods, but does not reach communicative products such as books or articles. See Andela v. American Ass’n for Cancer Research, 93 USPQ.2d 1312, 1313 (EDPA 2009). In the case, a cancer researcher brought Lanham Act claims, as well as other federal and state claims, against a medical journal and its publisher. The plaintiff claimed that the cancer research journal had published a plagiarized and falsified research paper, and that it refused to publish his letter to the editor regarding that paper. These actions, the plaintiff asserted, constituted false advertising under the Lanham Act.

Senior District Judge John Fullam granted summary judgment to the defendants, relying on the Supreme Court decision Dastar Corp. v. Twentieth Century Fox Film Corp., 539 US 23, 36-37 (2003). Judge Fullam noted that the plaintiff’s Lanham Act claim failed because, under Dastar, the Lanham Act applies to tangible goods offered for sale; trademark protection does not extend to the content of communicative products such as films, books, and journal articles. Those products instead are subject to the protections offered by the copyright regime. The court also granted summary judgment to the defendant on remaining federal claims, noting that the plaintiff could pursue his state law claims in the appropriate state court.

This case illustrates the complex issues that confront individuals and companies that seek to protect their intellectual property. Entities are advised to seek legal counsel to determine the extent to which they may be able to protect their products under the trademark and copyright regimes. For more information on this matter, contact:

Anthony V. Lupo
lupo.anthony@arentfox.com
202.857.6353

Grace L. Applefeld
applefeld.grace@arentfox.com
202.857.6498