In Zuffa, LLC v. Justin.tv, Inc., the key issue litigated before the US District Court for the District of Nevada was whether certain trademark claims under the Lanham Act should be dismissed because they violate the rule of Dastar v. Twentieth Century Fox Film Corp., in seeking to enforce perpetual copyrights in the guise of a trademark claim (539 U.S. 23 (2003)).

Plaintiff Zuffa, LLC, was an organizer of mixed martial arts fights, which it frequently broadcast on pay-per-view television. The defendant, Justin.tv, Inc., operated a website allowing users to stream live video across the internet to other users. Zuffa sued Justin.tv, alleging that Justin.tv users had streamed one of Zuffa's copyrighted fights on Justin.tv. Zuffa asserted various claims, including copyright infringement and federal trademark infringement under the Lanham Act. Justin.tv moved to dismiss Zuffa's trademark and other non-copyright claims.

Citing the US Supreme Court's opinion in Dastar v. Twentieth Century Fox Film Corp., the district court dismissed Zuffa's trademark claims based on any trademarks that were an inherent part of the video broadcast (539 U.S. 23 (2003)).

In Dastar, the Court held that a reverse passing off claim under Section 43(a) of the Lanham Act could not be used to create perpetual copyrights. Reverse passing off occurs when one party removes an original trademark without authorization before reselling another party's goods.

The district court distinguished this case from Dastar, because this case did not concern a physical product with modified intellectual property. Instead, this case concerned the display of Zuffa's trademarks in a streaming video. The district court held that this was not a reverse passing off case as in Dastar, but was instead a basic trademark claim.

Citing Dastar, the district court dismissed Zuffa's trademark claim based on the display of Zuffa's octagon fighting ring. The district court explained that to allow such claims for infringement of trademarks that are inherently part of a copyrighted broadcast would create the constitutionally impermissible perpetual copyrights condemned in Dastar. Under this scenario, parties would be forbidden from displaying video containing trademarks, even if the video was in the public domain.

The district court deferred its decision on Justin.tv's motion to dismiss Zuffa's remaining trademark claims to a later stage in the proceedings pending a determination about whether these claims concerned marks that also formed an inherent part of Zuffa's broadcast and, therefore, should also be dismissed.

Parties seeking to protect trademarks appearing in video content should carefully analyze whether a particular mark will be considered to be an inherent part of the video or not. Under the reasoning in this case, marks that are inherent parts of a video are unlikely to be protected, as this could improperly extend copyright protection beyond the statutory term. While this case provides an interesting application of Dastar, it lends little guidance about when a trademark forms an inherent part of a copyrightable work.