INTELLECTUAL PROPERTY LAW G.

PROTECTED WORKS AND BOUNDARY PROBLEMS 15

BASED ON THE SYLLABUS OF 1. USEFUL ARTICLES WITH PICTORIAL, GRAPHIC, OR SCULPTURAL ASPECTS 15
ATTY. EDMUND JASON G. BARANDA A) "KITSCH" OR "PROGRESS"? 15
Mazer v. Stein 15
COPYRIGHT LAW B) DEFINING USEFUL ARTICLES AND DETERMINING SEPARABILITY 16
Kieselstein-Cord v. Accessories by Pearl, Inc., 16
Carol Barnhart Inc. v. Economy Cover Corp 16
Table of Contents Brandir International, Inc. v. Cascade Pacific Lumber Co 16
C) COMPUTER SOFTWARE 17
A. DEFINITION OF COPYRIGHT 3 Apple Computer, Inc. v. Franklin Computer Corp 17
Lotus Development Corporation v. Borland International, Inc 17
EU Software Directive, Directive on the Legal Protection of Computer Programs 17
B. ELEMENTS OF COPYRIGHTABLE SUBJECT MATTER 4
D) ARCHITECTURAL WORKS 18
Ching Kian Chuan v. CA 4 Intervest Construction, Inc. v. Canterbury Estate Homes, Inc 18
Sambar v. Levi Strauss 4 E) CHARACTERS 18
Muller & Co. v. New York Arrows Soccer Team Inc 4
2. EXPRESSION OR IDEA? 18
Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc 5
Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., 18
Mannion v. Coors Brewing Company 5
Titan Sports, Inc. v. Turner Broadcasting Systems, Inc 19
Designers Guild Ltd. v. Russell Williams (Textiles) Ltd, 19
C. WHEN COPYRIGHT VESTS 6 Norovzian v. Arks Ltd 20
Fraser v. Thames Television Ltd 20
Santos v. McCullough Printing Co 6 Anderson v. Stallone 21
Filipino Society of Composers v. Benjamin Tan 7 Microstar v. FormGen Inc 21
Unilever Philippines (PRC) v. CA 7
Suntrust Bank v. Houghton Mifflin Co 21
3. RIGHTS OF PUBLICITY 22
D. SCOPE OF COPYRIGHT 8 Wendt v. Host Int’l, Inc 22

1. ORIGINAL WORKS 8 White v. Samsung Elecs. Am 22

Joaquin v. Drilon 9 4. DATABASES 22
United Feature Syndicate v. Munsingwear 9 Bellsouth Advertising & Publishing Corp. v. Donnelley Information Publishing 22
CCC Information Services, Inc. v. Maclean Hunter Market Reports, Inc 23
2. THE "IDEA/EXPRESSION" DISTINCTION 9
CDN Inc. v. Kapes 23
Baker v. Selden 9
A.A. Hoehling v. Universal City Studios, Inc 10 Matthew Bender & Co. v. West Publishing Co 23
3. DERIVATIVE WORKS AND COMPILATIONS 10
L. Batlin & Son, Inc. v. Snyder 10 H. WORKS THAT VIOLATE THE PUBLIC ORDER 24
Entertainment Research Group, Inc. v. Genesis Creative Group, Inc 10
Pickett v. Prince 10 Attorney General v. Guardian Newspapers Ltd 24
Feist Publications, Inc. v. Rural Telephone Service Co 11
Mason v. Montgomery Data, Inc 11
I. LITERARY WORKS 24

E. AUTHORSHIP 12 SHORT PHRASES 24

Exxon Corp. v. Exxon Insurance Consultants Ltd 24
1. SOLE AUTHORSHIP 13 SPEECH AND INTERVIEWS 24
Lindsay v.The Wrecked and Abandoned Vessel R.M.S. Titanic 13 Falwell v. Penthouse International Ltd 24
2. JOINT AUTHORSHIP 13 BLANK FORMS 24
Erickson v. Trinity Theatre, Inc 13
Bibbero Systems Inc. v. Colwell Systems, Inc 24
Aalmuhammed v. Lee 13
3. WORKS MADE FOR HIRE 14
Community for Creative Non-Violence v. Reid 14 J. ACQUIRING AND TRANSFERRING COPYRIGHT 24
Aymes v. Bonelli 14
1. DEPOSIT AND NOTICE 25
Roeslin v. District of Columbia 14 Estate of Martin Luther King, Jr., Inc. v. CBS, Inc 26
4. GOVERNMENT WORKS 14 2. TRANSFER OF COPYRIGHT 26
Asset Marketing Systems, Inc. v. Gagnon 27
F. DURATION OF COPYRIGHT 15 Random House v. Rosetta Books, LLC 27

pg. 1
3. OPEN SOURCE SOFTWARE AND CREATIVE COMMONS 28 4. THE DISTRIBUTION RIGHT 46
Capitol Records, Inc. v. Thomas 46
K. LIMITATIONS ON COPYRIGHT 28 5. THE RIGHT TO PREPARE DERIVATIVE WORKS 46
Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc 46
1. EXPRESS LIMITATIONS UNDER THE IPC 28 Warner Bros. Entertainment, Inc. v. RDR Books 46
Filipino Society of Composers v. Benjamin Tan 30 Mirage Editions, Inc. v. Albuquerque A.R.T. Company, 47
Philippine Education Co. v. Sotto 31 Lee v. A.R.T. Company 47
2. FAIR USE 31 6. THE DIRECT INFRINGER 48
Harper & Row, Publishers v. Nation Enterprises 31 Religious Technology Center v. Netcom On-Line Communication Services, Inc 48
Campbell v. Acuff-Rose Music, Inc 31 7. VICARIOUS AND CONTRIBUTORY INFRINGEMENT 48
New Era Publications Int'l v. Carol Publishing Group 32 Fonovisa, Inc. v. Cherry Auction, Inc 48
Castle Rock Entertainment v. Carol Publishing Group, Inc 32 Perfect 10, Inc. v. Amazon.com, Inc 49
Nuñez v. Caribbean International News Corp 32 Perfect 10, Inc. v. Visa International Service Association 49
Video Pipeline, Inc. v. Buena Vista Home Entertainment, Inc 32 8. LIABILITY OF DEVICE MANUFACTURERS 49
Bill Graham Archives v. Dorling Kindersley Ltd 33 Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd 49
Sega Enterprises Ltd. v. Accolade, Inc 33
Sony Computer Entertainment, Inc. v. Connectix Corp 33
Perfect 10, Inc. v. Amazon, Inc 34 N. RELATED RIGHTS 50
Sony Corporation of America v. Universal City Studios, Inc 34
A&M Records, Inc. v. Napster, Inc 34
1. MORAL RIGHTS 50
American Geophysical Union v. Texaco, Inc 34 2. RIGHT TO PROCEEDS IN SUBSEQUENT TRANSFERS
Princeton University Press v. Michigan Document Services, Inc 35 (DROIT DE SUITE OR FOLLOW UP RIGHTS) 51
3. NEIGHBORING RIGHTS 51
L. TECHNOLOGICAL PROTECTIONS 35 A. RIGHTS OF PERFORMERS 51
B. RIGHTS OF PRODUCERS OF SOUND RECORDING 52
1. THE U.S. DIGITAL MILLENNIUM COPYRIGHT ACT 35 C. RIGHTS OF BROADCASTING ORGANIZATIONS 52
Universal City Studios, Inc. v. Reimerdes 35 In the Matter of the Charges of Plagiarism, etc., against Associate Justice Mariano C.
2. AUTHORIZED VERSUS UNAUTHORIZED ACCESS AND INTEROPERABLE del Castillo 53
PRODUCTS 35 4. MORAL RIGHTS UNDER US LAW 53
Lexmark International, Inc. v. Static Control Components, Inc 35 Gilliam v. American Broadcasting Companies, Inc 53
Lilly v. Stout 53
Martin v. City of Indianapolis 53
M. COPYRIGHT SCOPE AND ENFORCEMENT 36 Dastar Corp. v. Twentieth Century Fox Film Corp 54
Columbia Pictures Indus. v. Redd Horne, Inc 54
1. INFRINGEMENT 36
Cartoon Network LP v. CSC Holdings, Inc 55
20th Century Fox v. CA 38
Perfect 10, Inc. v. Amacon.com, Inc. 55
Columbia Pictures, Inc. v. Court of Appeals 39
Newton v. Diamond, 55
Columbia Pictures v. Court of Appeals 39
Bridgeport Music, Inc. v. Dimension Films, 55
People v. Ramos 39
Arista Records, LLC v. Launch Media, Inc 55
Serrano Laktaw v. Paglinawan 39
Habana v. Robles 40
Joaquin v. Drilon 40
Pearl & Dean v. Shoemart 41
Microsoft Corporation v. Manansala 41
2. COPYING IN FACT 41
Three Boys Music Corp. v. Michael Bolton 41 Not taking credit for anything. This is just a crude compilation of provisions and digests
Selle v. Gibb 42 (some made, others copied, others are digests from digests)
Ty, Inc. v. GMA Accessories, Inc 42
Bauman v. Fussell 42 How ironic is it that this "reviewer" for Intellectual Property
3. "SUBSTANTIALLY SIMILAR" COPY 42 may well have infringed other works already.
Nichols v. Universal Pictures Corp. 42
Arnstein v. Porter 42 I'm not even sure if this shall fall under fair use.
Steinberg v. Columbia Pictures Industries, Inc 43
Boisson v. Banian, Ltd 43 Peace and have fun studying!
Computer Associates International, Inc. v. Altai, Inc 44
Cavalier v. Random House, Inc 44
Swirsky v. Carey 45
Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp 45
pg. 2
A. Definition of Copyright Decompilation means the reproduction of the code and the translation of the
• A right over literary and artistic works which are original intellectual creations in the
literary and artistic domain protected from the moment of creation.
• It protects expression rather than ideas; extends only to author’s unique explanation
Section 177, Intellectual Property Code (IPC)
Copyright or Economic Rights. - Subject to the provisions of Chapter VIII, copyright or
economic rights shall consist of the exclusive right to carry out, authorize or prevent the
following acts:
177.1. Reproduction of the work or substantial portion of the work;
177.2. Dramatization, translation, adaptation, abridgment, arrangement or other
transformation of the work;
177.3. The first public distribution of the original and each copy of the work by sale or
other forms of transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or cinematographic work, a work
embodied in a sound recording, a computer program, a compilation of data and other
materials or a musical work in graphic form, irrespective of the ownership of the original or
the copy which is the subject of the rental; (n)
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the work. (Sec. 5, P. D. No. 49a)
Rule 2, Copyright Safeguards and Regulations
(issued by the National Library)
Definition of Terms
For the purpose of these Copyright Safeguards and Regulations, the following terms are
herein defined:
Author is the natural person who has created the work;
Collective work is work which has been created by two (2) or more natural
persons at the initiative and under the direction of another with the understanding that it
will be disclosed by the latter under his own name and that contributing natural persons
will not be identified;
Communication to the public or communicate to the public means the
making of a work available to the public by wire or wireless means in such a way that
members of the public may access these works from a place and time individually chosen by
them;
Computer program is a set of instructions capable, when incorporated in
machine-readable medium, of causing a machine having informationprocessing capabilities,
to indicate, perform, or achieve a particular function, task, or result;
Copyright is a right granted by statute to the author or originator of literary,
scholarly, scientific, or artistic productions, including computer programs. A copyright gives
him the legal right to determine how the work is used and to obtain economic benefits from
the work. For example, the owner of a copyright for a book or a piece of software has the
exclusive rights to use, copy, distribute, and sell copies of the work, including later editions
or versions of the work. If another person improperly uses material covered by a copyright,
the copyright owner can obtain legal relief;
Copyright Office refers to the Copyright Division of the National Library;
Copyright symbol is represented by ©;
Date of publication is the earliest date when a copy of the first authorized
edition of the work was placed on sale, sold, distributed, or otherwise made available to the
public, by the copyright owner or his representative;
forms of a computer program to achieve the inter-operability of an independently-created
computer program with other programs;
Exhibition of an audiovisual work means any form of exploitation of a work,
including its distribution in copies, its public performance, and its communication to the
public, including broadcast or rebroadcast, cable retransmission, or satellite broadcast or
transmission;
Fee refers to the amount prescribed by The National Library for the issuance of a
Certificate of Registration and Deposit to claim copyright or for the filing of assignment or
license, or for such other services or transactions as may be covered by these Copyright
Safeguards and Regulations;
Performance symbol is represented by p;
Public lending is the transfer of possession of the original or a copy of a work or
multimedia for a limited period, for non-profit purposes, by an institution the services of
which are available to the public, such as a public library or archive;
Public performance is the recitation, playing, dancing, acting or any
performance of the work, either directly or by means of any device or process; in the case of
an audiovisual work, the broadcast or showing of its images in sequence and the making of
the sounds accompanying it audible; and in the case of a sound recording, the making of the
recorded sounds audible at a place or at places where persons outside the normal circle of a
family and that family’s closed social acquaintances are or can be present, irrespective of
whether they are or can be present at the same place and at the same time, or at different
places and/or different times, and where the performance can be perceived without the need
for communication within the meaning of “communication to the public” defined above;
Published work means work which, with the consent of the author, is made
available to the public by wire or wireless means in such a way that members of the public
may access the work from a place and time individually chosen by them: Provided, That
availability of such copies has been such as to satisfy the reasonable requirements of the
public, having regard to the nature of the work;
Publisher is one who produces and makes available for circulation or distribution
the published work;
Rental is the transfer of the possession of the original or a copy of a work or
multimedia for a limited period of time, for profit-making purposes;
Reproduction is the making of one (1) or more copies of a work, including
multimedia, in any manner or form. A reprographic reproduction, as authorized under
certain circumstances by the IPC, does not include a digital or machinereadable copy, but is
limited to photography, xerography and similar processes, resulting in a paper or microform
copy;
Reprographic right is one exercisable anywhere to reproduce or authorize the
reproduction of the work by means of any appliance or process capable of producing multiple
copies of the work in such a form that the work may be perceived visually. Reprography and
other forms of reproduction require the permission of the copyright holder;
SAR shall refer to these Copyright Safeguards and Regulations issued pursuant
to the IPC;
SCL refers to the Library of the Supreme Court of the Republic of the Philippines;
TNL refers to The National Library of the Republic of the Philippines;
TNL Director refers to the head of The National Library of the Republic of the
Philippines;
Unpublished work means work that has not been disseminated, circulated or
distributed to the public prior to its registration with the Copyright Office;
Work refers to any original work, derivative work, performance of producers,
sound recording, or recording of broadcasting organizations.
Derivative work is work that is derived from another work;
Work of applied art is an artistic creation with utilitarian functions, or
incorporated in a useful article, whether made by hand or produced on an industrial scale;
pg. 3
 Work of the Government of the Philippines is work created by an officer or
employee of the Philippine Government or any of its subdivisions and instrumentalities,
including government-owned or controlled corporations, as part of his regularly prescribed
official duties.
Rules 11-12, Copyright Safeguards and Regulations
Rule 11 Communication to the Public of Copyrighted Works
SECTION 1. Communication to the Public of Copyrighted Work. — “Communication to the
public” or “communicate to the public,” also includes point-to-point transmission of a work,
including video on demand, and providing access to an electronic retrieval system, such as
computer databases, servers, or similar electronic storage devices. Broadcasting,
rebroadcasting, retransmission by cable, and broadcast and retransmission by satellite are
all acts of “communication to the public” within the meaning of the IPC.
Rule 12 First Public Distribution of Work
SECTION 1. First Public Distribution of Work. — An exclusive right of first distribution of
work includes all acts involving distribution, specifically including the first importation of
an original andeach copy of the work into the jurisdiction of the Republic of the Philippines.
B. Elements of Copyrightable Subject Matter Levi’s jeans. He further asserted that his
BASIC REQUIRMENTS FOR COPYRIGHTABLITY
(1) Original – to the author through own skill, labor & judgment without directly
copying
(2) Fixed in a form of expression
(3) Must be a work of authorship – with minimum degree of creativity
Section 172.1, IPC
Literary and Artistic Works. - 172.1. Literary and artistic works, hereinafter referred to as
"works", are original intellectual creations in the literary and artistic domain protected from
the moment of their creation. x x x
Section 172.2, IPC
Works are protected by the sole fact of their creation, irrespective of their mode or form of
expression, as well as of their content, quality and purpose. (Sec. 2, P.D. No. 49a)
Ching Kian Chuan v. CA, 363 SCRA 142 (2001)
Ong imports vermicelli from Ceroilfood based in
Beijing China. He repacks it in cellophane wrappers
with a design of two-dragons and the TOWER
trademark on the uppermost portion. He later
acquired a Certificate of Copyright.Ong discovered
that Lorenzo Tan repacks his vermicelli, imported
from the same company but from the Qingdao branch,
in a nearly identical wrapper. Ong filed, with the
RTC of QC, against Tan a complaint for infringement
of copyright. Tan alleged that Ong was not entitled
over the use of the trademark Pagoda and Lungkow
vermicelli as these were registered in the name of
Ceroilfood Shandong and that Tan was the exclusive
distributor in the Philippines of the vermicelli and was solely authorized to use said
trademark.
Elements of Copyrightable Subject Matter
(a) A person to be entitled to a copyright must be the original owner.
(b) The petitioner must show the existence of a clear and unmistakable right and an
urgent and paramount necessity for the writ to prevent serious damage.
The copies of the certificates of copyright registered in the name of Ceroilfood Shandong
sufficiently raise reasonable doubt. Ong’s right has yet to be clearly and unmistakably
demonstrated. In the absence of proof of a legal right and the injury sustained by the Ong,
the order of the RTC granting the issuance of an injunctive writ will be set aside for having
been issued with grave abuse of discretion.
Sambar v. Levi Strauss, 378 SCRA 364 (2002)
Levi Strauss & Co., and Levi Strauss Phil,
Inc., demanded that CVS Garment
Enterprises (CVSGE) desist from using
their stitched arcuate design on the
Europress jeans which CVSGE advertised
in the Manila Bulletin.
Defense: Atty. Benjamin Gruba, counsel
of CVSGE: the arcuate design on the back
pockets of Europress jeans was different
from the design on the back pockets of
client had a copyright on the design it was using.
The Court held that Europress’ use of the arcuate design was an infringement of the Levi’s
design. The backpocket design of Europress jeans, a double arc intersecting in the middle
was the same as Levi’s’ mark, also a double arc intersecting at the center. Although the
trial court found differences in the two designs, these differences were not noticeable.
The cancellation of petitioner’s copyright was justified because petitioner’s copyright cannot
prevail over respondents’ registration in the Principal Register of Bureau of Patents,
Trademarks, and Technology Transfer.
According to private respondents, the essence of copyright registration is originality and a
copied design is inherently non-copyrightable. They insist that registration does not confer
originality upon a copycat version of a prior design. The award of damages and cancellation
of petitioner’s copyright are appropriate. Award of damages is clearly provided in Section
23, while cancellation of petitioner’s copyright finds basis on the fact that the design was a
mere copy of that of private respondents’ trademark.
A person to be entitled to a copyright must be the original creator of the work. He must have
created it by his own skill, labor and judgment without directly copying or evasively imitating
the work of another; The grant of preliminary injunction in copyright cases depends chiefly
on the extent of doubt on the validity of the copyright, existence of infringement, and the
damages sustained by such infringement
Muller & Co. v. New York Arrows Soccer Team Inc.
802 F.2d 989 (US: Court of Appeals, 8th Cir., 1986)
John Muller & Company, Inc. contracted with Dr. David
Schoenstadt, owner of New York Arrows soccer team to
do advertising work, including the design of a logo for the
team. A dispute of fees arose and Muller, attempted to
copyright the team logo. The Register of Copyrights twice
refused to register the logo, saying that it lacked the
minimal creativity necessary to support a copyright. The logo consists of four angled lines
which form an arrow and the word “Arrows” in cursive script below the arrow.
In order to be copyrightable, a work must show certain minimal levels of creativity and
originality. If the creator seeks to register the tem as a “work of art” or “pictorial, graphic,
pg. 4
or sculptural work, the work must embody some creative authorship in its delineation or
form”.
Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc. 528 F.3d 1258 (10th Cir. 2008)
Toyota began work on its model-year 2004 advertising campaign. Saatchi, its advertising
agency, and Toyota hired G&W, which subcontracted with Meshwerks to assist with two
initial aspects of the project – digitization and modeling. Digitizing involves collecting
physical data points from the object to be portrayed.
Meshwerks took copious measurements of Toyota’s vehicles The vehicles’ data points
(measurements) were mapped onto a computerized grid and the modeling software
connected the dots to create a “wire frame” of each vehicle.
The on-screen image remained far from perfect and manual “modeling” was necessary.
Meshwerks personnel fine-tuned or, as the company prefers it, “sculpted,” the lines on
screen to resemble each vehicle as closely as possible. With Meshwerks’ wire-frame products
in hand, G&W then manipulated the computerized models by, first, adding detail, the result
of which appeared on screen as a “tightening” of the wire frames, as though significantly
more wires had been added to the frames, or as though they were made of a finer mesh.
Next, G&W digitally applied color, texture, lighting, and animation for use in Toyota’s
advertisements. G&W’s digital models were then sent to Saatchi to be employed in a number
of advertisements prepared by Saatchi and Toyota in various print, online, and television
media.
This dispute arose because, according to Meshwerks, it contracted with G&W for only a
single use of its models – as part of one Toyota television commercial – and neither Toyota
nor any other defendant was allowed to use the digital models created from Meshwerks’
wire-frames in other advertisements. Thus, Meshwerks contends defendants improperly –
in violation of copyright laws as well as the parties’ agreement – reused and redistributed
the models created by Meshwerks in a host of other media. Meshwerks points to the fact
that it sought and received copyright registration on its wire-frame models.
The Court held that Meshwerks had nothing to do with designing the appearance of Toyota’s
vehicles, distinguishing them from any other cars, trucks, or vans in the world. That
expressive creation took place before Meshwerks happened along, and was the result of work
done by Toyota and its designers; indeed, at least six of the eight vehicles at issue are still
covered by design patents belonging to Toyota and protecting the appearances of the objects
for which they are issued.
On the other hand, how the models Meshwerks created were to be deployed in advertising
– including the backgrounds, lighting, angles, and colors – were all matters left to those
(G&W, Saatchi, and 3D Recon) who came after Meshwerks left the scene. Meshwerks thus
played a narrow, if pivotal, role in the process by simply, if effectively, copying Toyota’s
vehicles into a digital medium so they could be expressively manipulated by others.
On the bedrock principles of copyright law --- originality, “as the term is used in copyright,
means only that the work was independently created by the author (as opposed to copied
from other works).” Because our copyright laws protect only “original” expression, the
reason for refusing copyright protection to copies is clear, “since obviously a copier is not a
creator, much less an ‘independent’ creator.”
In the case before us, there is no doubt that transposing the physical appearances of Toyota’s
vehicles from three dimensions to two, such that computer-screen images accurately reflect
Toyota’s products, was labor intensive and required a great amount of skill. But because the
end-results were unadorned images of Toyota’s vehicles, the appearances of which do not
owe their origins to Meshwerks, we are unable to reward that skill, effort, and labor with
copyright protection.
To make a case for copyright infringement, Meshwerks must show
(1) it owns a valid copyright, and
(2) defendants copied constituent elements of the work that are original to Meshwerks.
Mannion v. Coors Brewing Company, 377 F. Supp. 2d 444 (S.D.N.Y. 2006)
Jonathan Mannion (plaintiff) was hired to
photograph an athlete, Kevin Garnett, for a
spread in SLAM magazine. One of the
photographs ultimately featured in the spread
was distinctive in its combination of all-white
athletic clothing and distinctive jewelry, as well
as its pose, camera angle, lighting, and
background. Mannion had instructed Garnett on
what kind of clothing and accessories to wear and
how to pose. However, Garnett selected the
specific items to wear to meet Mannion’s
requests. Carol H. Williams Advertising (CHWA)
(defendant) was hired by Coors Brewing
Company (Coors) (defendant) to create billboard
ads for Coors Light beer. CHWA obtained
permission to use Mannion’s photograph in a
comp-board image when pitching billboards to
Coors. However, when the final billboard was
made, CHWA used another photographer to
create an image that was substantially the same
with respect to the subject’s clothing and
accessories, pose, camera angle, lighting, and
background. Mannion saw the billboard and brought suit for copyright infringement. Both
parties moved for summary judgment.
It is well-established that "the sine qua non of copyright is originality" and, accordingly,
that "copyright protection may extend only to those components of a work that are original
to the author." 'Original' in the copyright context "means only that the work was
independently created by the author (as opposed to copied from other works), and that it
possesses at least some minimal degree of creativity."
First, "there may be originality which does not depend on creation of the scene or object to
be photographed . . . and which resides [instead] in such specialties as angle of shot, light
and shade, exposure, effects achieved by means of filters, developing techniques etc."
this type of originality as originality in the rendition because, to the extent a photograph is
original in this way, copyright protects not what is depicted but rather how it is depicted
"[A] person may create a worthwhile photo- graph by being at the right place at the right
time." Copyright based on originality in timing is limited by the principle that copyright in
a photo- graph ordinarily confers no rights over the subject matter. In practice, originality
in timing gives rise to the same type of protection as originality in the rendition. In each
case, the image that exhibits the originality, but not the underlying subject, qualifies for
copyright protection.
pg. 5

The principle that copyright confers no right over the subject matter has an important
limitation. A photograph may be original to the extent that the photographer created "the
scene or subject to be photographed."
The nature and extent of protection conferred by the copyright in a photograph will vary
depending on the nature of its originality. Insofar as a photograph is original in the rendition
or timing, copyright protects the image but does not prevent others from photographing the
same object or scene.
By contrast, to the extent that a photograph is original in the creation of the subject,
copyright extends also to that subject. Thus, an artist who arranges and then photographs
a scene often will have the right to prevent others from duplicating that scene in a
photograph or other medium.
Comparision of the Coors Billboard and the Garnett Photograph
Substantial similarity is a question of fact. "The standard test for substantial similarity
between two items is whether an ' ordinary observer, unless he set out to detect the
disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the
same.'"
The test "requires the court to eliminate the unprotectable elements from its consideration
and to ask whether the protectable elements, standing alone, are substantially similar."
Court concludes that it is immaterial whether the ordinary or more discerning observer test
is used here because the inquiries would be identical.
The Garnett Photograph is protectable to the extent of its originality in the rendition and
creation of the subject. Key elements of the Garnett Photograph that are in the public
domain - such as Kevin Garnett's likeness - are not replicated in the Coors Billboard. Other
elements arguably in the public domain - such as the existence of a cloudy sky, Garnett's
pose, his white T-shirt, and his specific jewelry - may not be copyrightable in and of
themselves, but their existence and arrangement in this photograph indisputably contribute
to its originality.
Thus the fact that the Garnett Photograph includes certain elements that would not be
copyrightable in isolation does not affect the nature of the comparison. The question is
whether the aesthetic appeal of the two images is the same.
The two photographs share a similar composition and angle. The lighting is similar, and
both use a cloudy sky as backdrop. The subjects are wearing similar clothing and similar
jewelry arranged in a similar way.
The defendants, in other words, appear to have recreated much of the subject that Mannion
had created and then, through imitation of angle and lighting, rendered it in a similar way.
The similarities here thus relate to the Garnett Photograph's originality in the rendition
and the creation of the subject and therefore to its protected elements.
There of course are differences between the two works. The similarity analysis may take
into account some, but not all, of these. It long has been the law that "no plagiarist can
excuse the wrong by showing how much of his work he did not pirate." Thus the addition of
the words "Iced Out" and a can of Coors Light beer may not enter into the similarity
analysis.
Other differences, however, are in the nature of changes rather than additions. One image
is black and white and dark, the other is in color and bright. One is the mirror image of the
other. One depicts only an unidentified man's torso, the other the top three-fourths of Kevin
Garnett's body. The jewelry is not identical. One T-shirt appears to fit more tightly than the
other. These changes may enter the analysis because "if the points of dissimilarity not only
exceed the points of similarity, but indicate that the remaining points of similarity are,
within the context of plaintiff's work, of minimal importance . . . then no infringement
results."
C. When Copyright Vests
From the MOMENT OF CREATION
Santos v. McCullough Printing Co., 12 SCRA 321 (1964)
This is an action for damages based on the provisions of Articles 721 and 722 of the Civil
Code of the Philippines, allegedly on the unauthorized use, adoption and appropriation by
the defendant company of plaintiff's intellectual creation or artistic design for a Christmas
Card. The design depicts "a Philippine rural Christmas time scene consisting of a woman
and a child in a nipa hut adorned with a star-shaped lantern and a man astride a carabao,
beside a tree, underneath which appears the plaintiff's pen name, Malang."
The complaint alleges that plaintiff Mauro Malang Santos designed for former Ambassador
Felino Neri, for his personal Christmas Card greetings for the year 1959, the artistic motif
in question. The following year the defendant McCullough Printing Company, without the
knowledge and authority of plaintiff, displayed the very design in its album of Christmas
cards and offered it for sale, for a price. For such unauthorized act of defendant, plaintiff
suffered moral damages to the tune of P16,000.00, because it has placed plaintiff's
professional integrity and ethics under serious question and caused him grave
embarrassment before Ambassador Neri. He further prayed for the additional sum of
P3,000.00 by way of attorney's fee.
Whether Santos is entitled for protection, notwithstanding the fact that he has not
copyrighted his design.NO
The lower court dismisses the complaint which the Supreme Court affirmed.
Santos did not choose to protect his intellectual creation by a copyright. The fact that the
design was used in the Christmas card of Ambassador Neri who distributed 800 copies
thereof among his friends during the Christmas season of 1959, shows the same was
published.Unless satisfactory explained a delay in applying for a copyright, of more than 30
days from the date of its publication, converts the property to one of public domain.
Since the name of the author appears in each of the alleged infringing copies of intellectual
creation, the defendant may not be said to have pirated the work nor guilty of plagiarism.
Consequently, the complaint does not state a cause of action against the defendant.
The Supreme Court held that Santos is not entitled to a protection.
Rules of Practice in the Philippine Patent Office relating to the Registration of Copyright
Claims.
“An intellectual creation should be copyrighted 30 days after its publication, if made in
Manila, or within 60 days if made elsewhere, failure of which renders such creation public
property.”
When the purpose is limited publication, but the effect is general publication, irrevocable
rights thereupon become vested in the public, in consequence of which enforcement of the
restriction becomes impossible.
pg. 6
Filipino Society of Composers v. Benjamin Tan, 148 SCRA 461 (1987)
FILSCAP Is the owner of certain musical compositions among which are the songs entitled:
"Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The
Nearness Of You." They filed a complaint with the lower court for infringement of copyright
against defendant-appellee for allowing the playing in defendant-appellee's restaurant of
said songs copyrighted in the name of the former.
Benjamin Tan countered that the complaint states no cause of action. While not denying the
playing of said copyrighted compositions in his establishment, appellee maintains that the
mere singing and playing of songs and popular tunes even if they are copyrighted do not
constitute an infringement under the provisions of Section 3 of the Copyright Law.
The issue at bar is whether the playing and signing of musical compositions which have
been copyrighted under the provisions of the Copyright Law (Act 3134) inside the
establishment of the defendant-appellee constitute a public performance for profit within
the meaning and contemplation of the Copyright Law of the Philippines; and assuming that
there were indeed public performances for profit, whether or not appellee can be held liable
therefor.
The Court held that "The playing of music in dine and dance establishment which was paid
for by the public in purchases of food and drink constituted "performance for profit" within
a Copyright Law." Thus, it has been explained that while it is possible in such
establishments for the patrons to purchase their food and drinks and at the same time dance
to the music of the orchestra, the music is furnished and used by the orchestra for the
purpose of inducing the public to patronize the establishment and pay for the entertainment
in the purchase of food and drinks. The defendant conducts his place of business for profit,
and it is public; and the music is performed for profit.
Nevertheless, appellee cannot be said to have infringed upon the Copyright Law. Appellee's
allegation that the composers of the contested musical compositions waived their right in
favor of the general public when they allowed their intellectual creations to become property
of the public domain before applying for the corresponding copyrights for the same is correct.
The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative Order No.
3(as amended, dated September 18, 1947) entitled 'Rules of Practice in the Philippines
Patent Office relating to the Registration of Copyright Claims' promulgated pursuant to
Republic Act165, provides among other things that an intellectual creation should be
copyrighted thirty (30)days after its publication, if made in Manila, or within the (60) days
if made elsewhere, failure of which renders such creation public property." Indeed, if the
general public has made use of the object sought to be copyrighted for thirty (30) days prior
to the copyright application the law deems the object to have been donated to the public
domain and the same can no longer be copyrighted. Under the circumstances, it is clear that
the musical compositions in question had long become public property, and are therefore
beyond the protection of the Copyright Law
Unilever Philippines (PRC) v. CA, GR No. 119280, 10 August 2006
P & G filed a complaint for injunction with damages. A P & G subsidiary in Italy used a key
visual in the advertisement of its laundry detergent and bleaching products. This key visual
known as the “Double Tug” or “tac tac” demonstration.
Unilever, started airing its “Breeze PowerWhite” laundry product called “Porky”. The said
TVC included a stretching visual presentation and sound effects almost identical or
substantially identical or substantially similar to P&G’s “tac tac” key visual.
Whether P&G is entitled for the relief which is to enjoin the petitioner from airing said TVC.
(Petitioner has copyright Registration for advertisement while P&G has none.) Yes.
Section 2. PD 49 stipulates that the copyright for a work or intellectual creation subsists
from the moment of its creation. Accordingly, the creator acquires copyright for his work
right upon its creation.
Section 2, PD 49
The Rights granted by this Decree shall, from the moment of creation, subsist with respect
to any of the following classes of works: x x x
Article 5(2), Berne Convention for the Protection of Literacy and Artistic
Works
Rights Guaranteed:
(2) The enjoyment and the exercise of these rights shall not be subject to any formality; such
enjoyment and such exercise shall be independent of the existence of protection in the
country of origin of the work. Consequently, apart from the provisions of this Convention,
the extent of protection, as well as the means of redress afforded to the author to protect his
rights, shall be governed exclusively by the laws of the country where protection is claimed.
Section 172 and 172.2, IPC
Literary and Artistic Works. - 172.1. Literary and artistic works, hereinafter referred to as
"works", are original intellectual creations in the literary and artistic domain protected from
the moment of their creation. x x x
Works are protected by the sole fact of their creation, irrespective of their mode or form of
expression, as well as of their content, quality and purpose. (Sec. 2, P.D. No. 49a)
Rule 7, Sections 2-4, Copyright Safeguards and Regulations
Rule 7 Effectivity and Effects of Registration and Deposit
SECTION 2. Effects of Registration and Deposit of Work. — The registration and deposit of
the work is purely for recording the date of registration and deposit of the work and shall
not be conclusive as to copyright ownership or the term of copyrights or the rights of the
copyright owner, including neighboring rights.
SECTION 3. Effect of Non-Registration and Deposit. — If, within three (3) weeks after
receipt by the copyright owner of a written demand from TNL and/or SCL for the deposit of
a work listed in Rule 5 Sec. 4 of this SAR, the required copies are not delivered and the fee
for registration and deposit is not paid, the copyright owner, his assignee, or his agent shall
be liable to pay a fine equivalent to the required fee per month of delay and to pay to TNL
and SCL the amount of the retail price of the best edition of the work.
SECTION 4. Other Laws. — Upon issuance of a certificate of deposit, the copyright owner
shall be exempt from making additional deposits of the work with TNL or the SCL under
other law
pg. 7
D. Scope of Copyright d.
1. Original works f.
Article 2, Berne Convention for the Protection of Literacy and Artistic
Works
Article 2
Protected Works:
(1) The expression “literary and artistic works” shall include every production in
the literary, scientific and artistic domain, whatever may be the mode or form of its
expression, such as books, pamphlets and other writings; lectures, addresses, sermons and
other works of the same nature; dramatic or dramatico-musical works; choreographic works
and entertainments in dumb show; musical compositions with or without words;
cinematographic works to which are assimilated works expressed by a process analogous to
cinematography; works of drawing, painting, architecture, sculpture, engraving and
lithography; photographic works to which are assimilated works expressed by a process
analogous to photography; works of applied art; illustrations, maps, plans, sketches and
three-dimensional works relative to geography, topography, architecture or science.
(2) It shall, however, be a matter for legislation in the countries of the Union to
prescribe that works in general or any specified categories of works shall not be protected
unless they have been fixed in some material form.
(3) Translations, adaptations, arrangements of music and other alterations of a
literary or artistic work shall be protected as original works without prejudice to the
copyright in the original work.
(4) It shall be a matter for legislation in the countries of the Union to determine
the protection to be granted to official texts of a legislative, administrative and legal nature,
and to official translations of such texts.
(5) Collections of literary or artistic works such as encyclopaedias and anthologies
which, by reason of the selection and arrangement of their contents, constitute intellectual
creations shall be protected as such, without prejudice to the copyright in each of the works
forming part of such collections.
(6) The works mentioned in this Article shall enjoy protection in all countries of
the Union. This protection shall operate for the benefit of the author and his successors in
title.
(7) Subject to the provisions of Article 7(4) of this Convention, it shall be a matter
for legislation in the countries of the Union to determine the extent of the application of
their laws to works of applied art and industrial designs and models, as well as the
conditions under which such works, designs and models shall be protected. Works protected
in the country of origin solely as designs and models shall be entitled in another country of
the Union only to such special protection as is granted in that country to designs and models;
however, if no such special protection is granted in that country, such works shall be
protected as artistic works.
(8) The protection of this Convention shall not apply to news of the day or to
miscellaneous facts having the character of mere items of press information.
Sections 172, 172.2, 173, 173.2, 174, IPC
SECTION 172. Literary and Artistic Works. —
172.1. Literary and artistic works, hereinafter referred to as "works", are original
intellectual creations in the literary and artistic domain protected from the moment of their
creation and shall include in particular:
a. Books, pamphlets, articles and other writings;
b. Periodicals and newspapers;
c. Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or
not reduced in writing or other material form;
Letters;
e. Dramatic or dramatico-musical compositions; choreographic works or
entertainment in dumb shows;
Musical compositions, with or without words;
g. Works of drawing, painting, architecture, sculpture, engraving, lithography or
other works of art; models or designs for works of art;
h. Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art;
i. Illustrations, maps, plans, sketches, charts and three-dimensional works relative
to geography, topography, architecture or science;
j. Drawings or plastic works of a scientific or technical character;
k. Photographic works including works produced by a process analogous to
photography; lantern slides;
l. Audiovisual works and cinematographic works and works produced by a process
analogous to cinematography or any process for making audio-visual recordings;
m. Pictorial illustrations and advertisements;
n. Computer programs; and
o. Other literary, scholarly, scientific and artistic works.
172.2. Works are protected by the sole fact of their creation, irrespective of their
mode or form of expression, as well as of their content, quality and purpose. (Sec. 2, P.D. No.
49a)
SECTION 173. Derivative Works. —
173.1. The following derivative works shall also be protected by copyright:
a. Dramatizations, translations, adaptations, abridgments, arrangements, and other
alterations of literary or artistic works; and
b. Collections of literary, scholarly or artistic works, and compilations of data and
other materials which are original by reason of the selection or coordination or
arrangement of their contents. (Sec. 2, [P] and [Q], P.D. No. 49)
173.2. The works referred to in paragraphs (a) and (b) of Subsection 173.1 shall be protected
as new works: Provided however, That such new work shall not affect the force of any
subsisting copyright upon the original works employed or any part thereof, or be construed
to imply any right to such use of the original works, or to secure or extend copyright in such
original works. (Sec. 8, P.D. 49; Art. 10, TRIPS)
SECTION 174. Published Edition of Work. — In addition to the right to publish granted
by the author, his heirs, or assigns, the publisher shall have a copyright consisting merely
of the right of reproduction of the typographical arrangement of the published edition of the
work. (n)
UNPROTECTED WORKS (Sec. 175)
1) Idea, procedure, system, method or operation, concept, principle, discovery or
mere data as such
2) News of the day and other items of press information
3) Any official text of a legislative, administrative or legal nature, as well as any
official translation thereof
4) Pleadings

5) Decisions of courts and tribunals – this
refers to original decisions and not to annotated decisions such as the SCRA or
SCAD as these already fall under the classification of derivative works, hence
copyrightable
6) Any work of the Government of the Philippines
GR: Conditions imposed prior the approval of the government agency or office
wherein the work is created shall be necessary for exploitation of such work for
pg. 8
 profit. Such agency or office, may, among other things, impose as condition the
payment of royalties.
XPN: No prior approval or conditions shall be required for the use of any purpose
of statutes, rules and regulations, and speeches, lectures, sermons, addresses, and
dissertations, pronounced, read, or rendered in courts of justice, before
administration agencies, in deliberative assemblies and in meetings of public
character. (Sec. 176)
7) TV programs, format of TV programs (Joaquin v. Drilon)
8) Systems of bookkeeping; and
9) Statutes.
Section 175, IPC
SECTION 175. Unprotected Subject Matter. — Notwithstanding the provisions of
Sections 172 and 173, no protection shall extend, under this law, to any idea, procedure,
system, method or operation, concept, principle, discovery or mere data as such, even if they
are expressed, explained, illustrated or embodied in a work; news of the day and other
miscellaneous facts having the character of mere items of press information; or any official
text of a legislative, administrative or legal nature, as well as any official translation thereof.
(n)
Section 176, IPC
SECTION 176. Works of the Government. —
176.1. No copyright shall subsist in any work of the Government of the Philippines.
However, prior approval of the government agency or office wherein the work is created
shall be necessary for exploitation of such work for profit. Such agency or office may, among
other things, impose as a condition the payment of royalties. No prior approval or conditions
shall be required for the use for any purpose of statutes, rules and regulations, and speeches,
lectures, sermons, addresses, and dissertations, pronounced, read or rendered in courts of
justice, before administrative agencies, in deliberative assemblies and in meetings of public
character. (Sec. 9, first par., P.D. No. 49)
176.2. The author of speeches, lectures, sermons, addresses, and dissertations mentioned in
the preceding paragraphs shall have the exclusive right of making a collection of his works.
(n)
176.3. Notwithstanding the foregoing provisions, the Government is not precluded from
receiving and holding copyrights transferred to it by assignment, bequest or otherwise; nor
shall publication or republication by the Government in a public document of any work in
which copyright is subsisting be taken to cause any abridgment or annulment of the
copyright or to authorize any use or appropriation of such work without the consent of the
copyright owner. (Sec. 9, third par., P.D. No. 49)
Joaquin v. Drilon, 302 SCRA 225 (1999)
BJ Productions Inc. (BJPI) was the holder of copyright over the show Rhoda and Me. It holds
rights over the show’s format and style of presentation. In 1991, BJPI’s president Francisco
Joaquin saw on TV – RPN 9’s show It’s a Date, a show which is basically the same as Rhoda
and Me. He eventually sued Gabriel Zosa, the manager of the show It’s a Date. The
investigating prosecutor found probable cause against Zosa. Zosa later sought a review of
the prosecutor’s resolution before the Secretary of Justice (Franklin Drilon). Drilon reversed
the findings of the fiscal and directed him to dismiss the case against Zosa.
The essence of copyright infringement is the copying, in whole or in part, of copyrightable
materials as defined and enumerated in Section 2 of PD. No. 49 (Copyright Law). Apart
from the manner in which it is actually expressed, however, the idea of a dating game show
is a non-copyrightable material. Ideas, concepts, formats, or schemes in their abstract form
clearly do not fall within the class of works or materials susceptible of copyright registration
as provided in PD. No. 49. What is covered by BJPI’s copyright is the specific episodes of the
show Rhoda and Me.
Further, BJPI should have presented the master videotape of the show in order to show the
linkage between the copyright show (Rhoda and Me) and the infringing show (It’s a Date).
This is based on the ruling in 20th Century Fox vs CA (though this has been qualified by
Columbia Pictures vs CA, this is still good law). Though BJPI did provide a lot of written
evidence and description to show the linkage between the shows, the same were not enough.
A television show includes more than mere words can describe because it involves a whole
spectrum of visuals and effects, video and audio, such that no similarity or dissimilarity may
be found by merely describing the general copyright/format of both dating game shows.
United Feature Syndicate v. Munsingwear, 179 SCRA 260 (1989)
United Feature Syndicate filed a petition for the cancellation of the registration of
trademark CHARLIE BROWN in the name of Munsingwear Creation Manufacturing Co.,
Inc., with the PH Patent Office.
Since the name CHARLIE BROWN and its pictorial representation were covered by a
copyright registration way back in 1950, the same are entitled to protection under PD 49.
Aside from copyright registration, petitioner is also the owner of several trademark
registration and application for the name and likeness of CHARLIE BROWN which is the
duly registered trademark and copyright of petitioner.
Respondent’s defense that there is no trademark significance since it uses the trademark
“CHARLIE BROWN” & “DEVICE” on children’s wear (e.g. T-shirts, undershirts, sweaters,
brief and sandos), whereas “CHARLIE BROWN” is only used by petitioner as character in
a pictorial illustration used in a comic strip appearing in newspapers and magazines is
without merit. It is undeniable from the records that petitioner is the actual owner of said
trademarks due to its prior registration with the Patent’s Office.
The Court of Appeals in reversing the Director of Patent’s decision in Touch of Class, Inc.
succintly said:
“The Patents Office ruled that a trademark, unlike a label, cannot be copyrighted. The
‘Cookie Monster’ is not, however, a trademark. It is a character in a TV series entitled
‘Sesame Street.’ It was respondent which appropriated the ‘Cookie Monster’ as a trademark,
after it has been copyrighted. We hold that the exclusive right secured by PD 49 to the
petititoner precludes the appropriation of the ‘Cookie Monster’ by the respondent.”
Pertinently, Section 2 of Presidential Decree No. 49, otherwise known as the “Decree on
Intellectual Property”, provides:
“Section 2. The rights granted by this Decree shall, from the moment of creation, subsist
with respect to any of the following classes of works:
xxx xxx xxx
“(O) Prints, pictorial illustrations, advertising copies, labels, tags and box wraps. x x x”
Therefore, since the name “CHARLIE BROWN” and its pictorial representation were
covered by a copyright registration way back in 1950 the same are entitled to protection
under PD No. 49.
2. The "Idea/Expression" Distinction
Baker v. Selden, 101 U.S. 99 (1879)
Baker (Defendant) sold forms similar to forms contained in a bookkeeping system within
Selden’s (Plaintiff) copyrighted book. Charles Selden took the necessary steps for obtaining
the copyright of a book entitled “Selden’s Condensed Ledger, or Book-keeping Simplified”.
In the succeeding years, he took the copyright of several other books, containing additions
to and improvements upon said system. A complaint was filed against Baker for an alleged
infringement of these copyrights. Baker denied the infringement charge and that Selden
was the author of these books. He contends that the matter alleged to be infringed is not a
lawful subject of copyright.
The copyright protection for a book explaining an art or system extends only to the author’s
unique explanation of it and does not prevent others from using the system or the forms
incidentally used. To find that a copyright protected against use of the system itself or the
pg. 9
forms necessary to such use would be to grant protection similar to a patent without
requiring a showing of novelty. Copyright is based on originality, not novelty, and protects
the explanation of the system and not the use of the system. In this case, therefore, the
copyright Selden (Plaintiff) obtained could not give him the exclusive right to use the
bookkeeping system or the forms necessary to such use. Reversed and remanded.
A.A. Hoehling v. Universal City Studios, Inc.
618 F.2d 972 (2d Cir.), cert. denied, 449 U.S. 841 (1980)
Hoehling was a historian who researched the Hindenberg
disaster. He published a book (based on several other sources)
that blamed the disaster on the work of a saboteur. Later, a fiction
writer named Mooney wrote a novel about the disaster that
featured a plot and characters similar to Hoehling's research. It
was later turned into a movie. Mooeny admitted that he used
Hoehling's book as a source for his novel. However, he changed
the names of the people and deviated from historical fact on a
number of occasions.
Hoehling sued Mooney and Universal City for copyright
infringement. Hoehling argued that Mooney copied the essential
plot of his book. Mooney argued that a plot is an idea, and ideas
and not copyrightable as a matter of law. In addition, Mooney
argued that historical facts are not copyrightable.
A grant of copyright in a published work secures for its author a
limited monopoly over the expression it contains. The copyright
provides a financial incentive to those who would add to the corpus of existing knowledge
by creating original works. Nevertheless, the protection afforded the copyright holder has
never extended to history, be it documented fact or explanatory hypothesis. The rationale
for this doctrine is that the cause of knowledge is best served when history is the common
property of all, and each generation remains free to draw upon the discoveries and insights
of the past. Accordingly, the scope of copyright in historical accounts is narrow indeed,
embracing no more than the author's original expression of particular facts and theories
already in the public domain. As the case before us illustrates, absent wholesale usurpation
of another's expression, claims of copyright infringement where works of history are at issue
are rarely successful.
3. Derivative Works and Compilations by simply copying them.
Section 173, IPC
Derivative Works. - 173.1. The following derivative works shall also be protected by
copyright:
(a) Dramatizations, translations, adaptations, abridgments, arrangements, and other
alterations of literary or artistic works; and
(b) Collections of literary, scholarly or artistic works, and compilations of data and
other materials which are original by reason of the selection or coordination or
arrangement of their contents. (Sec. 2, [P] and [Q], P.D. No. 49)
173.2. The works referred to in paragraphs (a) and (b) of Subsection 173.1 shall be protected
as new works: Provided however, That such new work shall not affect the force of any
subsisting copyright upon the original works employed or any part thereof, or be construed
to imply any right to such use of the original works, or to secure or extend copyright in such
original works. (Sec. 8, P.D. 49; Art. 10, TRIPS)
L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir.)
(en banc), cert. denied, 429 U.S. 857 (1976)
A long time ago, a
manufacturer produced
some metal piggy banks
that had the character of
Uncle Sam on them. They
were popular for a while,
but the manufacturer
eventually stopped
production and the design
fell in the public domain.
Years later, a toymaker
named Snyder produced a
plastic version of the Uncle
Sam bank. It had slight
design changes, and was
made of plastic instead of
metal, but it was very
similar. Snyder registered a copyright of his design.
Batlin was a competitor. He produced metal Uncle Sam banks that were similar to both
Snyder's version and the original version. Snyder told Batlin to stop violating his copyright,
and Batlin sued to have Snyder's copyright declared invalid.
Batlin argued that Snyder couldn't copyright the design because it was too derivative of the
public domain original.
Snyder argued that his bank was sufficiently different from the public domain original to be
copyrightable, and that Batlin's version was sufficiently similar to his to be a copyright
infringement.
The Trial Court found for Batlin. Snyder appealed. The Appellate Court affirmed. The
Appellate Court found that a reproduction can be afforded limited copyright protection,
namely a copyright on the distinctive features contributed by the reproducer. However, the
Court found that the reproduction must contain "an original contribution not present in the
underlying work of art." (aka a distinguishable variation) The Court found that the
differences between Snyder's version and the public domain original too miniscule to give
Snyder a copyright. The Court noted that if a reproduction with only miniscule variations
was afforded copyright protection, it would allow people to monopolize public domain works
Entertainment Research Group, Inc. v. Genesis Creative Group, Inc.
122 F.3d 1211 (9th Cir. 1997), cert. denied, 523 U.S. 1021 (1998)
ERG made giant inflatable costumes of well-known public domain characters (like Santa
Claus), and copyrighted characters (like cartoon cereal spokesmen). When they found out
that their competitors (Genesis and Aerostar) were making similar inflatable costumes.
They sued for copyright infringement.
ERG argued that Aerostar was copying their giant inflatable Santa Claus costume. Aerostar
argued that they were copying the underlying original character. While ERG could copyright
their exact giant inflatable costume, they could not prevent others from making giant
inflatable costumes based on public domain characters, or costumes based on characters
copyrighted by another copyright holder.
So, just because Pillsbury licensed the Pillsbury doughboy to ERG, that didn't give ERG the
right to prevent Pillsbury from licensing the same character to other costume-makers.
The Trial Court found for Genesis and Aerostar. ERG appealed. The Appellate Court
affirmed. The Appellate Court found that if a derivative work (in this case a giant inflatable
costume) is sufficiently different from an underlying work (in this case Santa), then that
derivative work is copyrightable under 17 U.S.C. §103.
pg. 10
However, the Court found that Aerostar's costumes were sufficiently different enough that
it was obvious that they were copying the underlying character, and not ERG's specific
designs.
The Court noted that if they had decided the other way, it would have given ERG a de facto
monopoly over the underlying characters.
This case established a two-prong test to determine the copyrightability of a derivative work.
In order to be copyrightable: The derivative work must have original aspects that are "more
than trivial," and Granting the copyright in the derivative work will not affect the copyright
protection in the underlying work.
Pickett v. Prince, 207 F.3d 402 (7th Cir. 2000)
Respondent Prince, the famous rockstar, started referring to himself by
a strange unpronounceable symbol. (See symbol above). He received a
trademark and a copyright on the said symbol. Plaintiff Pickett, a
guitar-maker, started producing guitars in the same shape as the
symbol. Soon after, Prince started performing with his own guitar in
the same shape as the symbol. Pickett sued, claiming copyright
infringement. Prince countersued for the same thing. Prince argued
that he held the copyright on the symbol, therefore Pickett was violating
it when he made the guitar. Pickett argued that while Prince held the
copyright on the symbol, Pickett's guitar was a derivative work and was
itself copyrightable.
Pickett argued that the fact Prince owned the symbol does not ipso facto mean he could own
a guitar shaped like the symbol. So even if Pickett was infringing on Prince's copyright by
making the guitar, Prince was infringing on Pickett's copyright on the derivative work by
making a copy of Pickett's guitar.
Derivative Work is defined as “a work based upon one or more
preexisting works, such as a translation, musical arrangement,
dramatization, fictionalization, motion picture version, sound
recording, art reproduction, abridgment, condensation, or any other
form in which a work may be recast, transformed, or adapted. A
work consisting of editorial revisions, annotations, elaborations, or
other modifications which, as a whole, represent an original work
of authorship, is a ‘derivative work’ ”
While copyright can be obtained in derivative works, “protection for
a work employing preexisting material in which copyright subsists
does not extend to any part of the work in which such material has
been used unlawfully.”
If Pickett had gotten Prince's permission to use the symbol, or was using a public domain
symbol, then he would have a claim to stop others from making guitars shaped like the
symbol. But since his guitar was an infringement of Prince's copyright, he couldn't claim it
as a derivative work.
Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991)
To qualify for copyright protection, a work must be original to the author, which means that
the work was independently created by the author, and it possesses at least some minimal
degree of creativity. A work may be original even thought it closely resembles other works
so long as the similarity is fortuitous, not the result of copying.
Rural Telephone Service Company, Inc. (Plaintiff) provides telephone service to several
communities. Due to a state regulation, it must issue an annual telephone directory, so it
published a directory consisting of white and yellow pages. The yellow pages have
advertisements that generate revenue. Feist Publications, Inc. (Defendant) is a publishing
company whose directory covers a larger range than a typical directory. Defendant
distributes their telephone books free of charge, and they also generate revenue through the
advertising in the yellow pages. Plaintiff refused to give a license to Defendant for the phone
numbers in the area, so Defendant used them without Plaintiff’s consent. Rural sued for
copyright infringement.
Facts cannot be copyrighted, however compilations of facts can generally be copyrighted. To
qualify for copyright protection, a work must be original to the author, which means that
the work was independently created by the author, and it possesses at least some minimal
degree of creativity. A work may be original even thought it closely resembles other works
so long as the similarity is fortuitous, not the result of copying.
Facts are not original. The first person to find and report a particular fact has not created
the fact; he has merely discovered its existence. Facts may not be copyrighted and are part
of the public domain available to every person.
Factual compilations may possess the requisite originality. The author chooses what facts
to include, in what order to place them, and how to arrange the collected date so they may
be effectively used by readers. Thus, even a directory that contains no written expression
that could be protected, only facts, meets the constitutional minimum for copyright
protection if it features an original selection or arrangement. But, even though the format
is original, the facts themselves do not become original through association. The copyright
on a factual compilation is limited to formatting. The copyright does not extend to the facts
themselves.
To establish copyright infringement, two elements must be proven: ownership of a valid
copyright and copying of constituent elements of the work that are original. The first
element is met in this case because the directory contains some forward text. As to the
second element, the information contains facts, which cannot be copyrighted. They existed
before being reported and would have continued to exist if a telephone directory had never
been published. There is no originality in the formatting, so there is no copyrightable
expression. Thus, there is no copyright infringement.
Mason v. Montgomery Data, Inc., 967 F.2d 135 (5th Cir. 1992)
Mason’s maps
o Between August 1967 and July 1969, Mason created and published 118 real estate
ownership maps that, together, cover all of Montgomery County, Texas.
o Mason obtained the information that he included on the maps from a variety of sources.
o Mason testified that he used substantial judgment and discretion to reconcile
inconsistencies among the various sources, to select which features to include in the
final map sheets, and to portray the information in a manner that would be useful to
the public. From 1970 to 1980, Mason revised the original maps and eventually
published 115 new maps with copyright notices, for a total of 233 maps.
o Mason registered the copyright for one of the original 118 maps in October 1968.
MDI and Landata’s use of Mason’s maps
o Montgomery Data (MDI) and Landata used Mason’s maps as part of a geographical
indexing system that Landata created to continuously organize and store ever-
changing title information on each tract in Montgomery County.
o MDI and Landata then entered into a series of agreements under which MDI's
shareholders can use Landata's system when they issue title insurance policies. On
September 17, 1985, Landata asked Mason for permission to use his maps as part of
its system, but Mason denied the request because Landata refused to pay a licensing
fee. Landata then provided its products to MDI without Mason's permission. Each of
MDI's shareholders purchased an original set of Mason's maps, and either MDI or the
shareholders reorganized the maps from 118 to 72 map sheets according to Landata's
specifications.
Mason sues MDI and Landata
o Mason sued MDI and Landata for copyright infringement.
pg. 11
o MDI and Landata argued that all of the information contained on the map was publicly
available. There was nothing in the map that was created by Mason, or represented
any originality on his part. Therefore, the map was not copyrightable.
o The District Court found for MDI. It held that Mason's maps are not copyrightable
under the idea/expression merger doctrine, and granted summary judgment for the
defendants. Mason’s idea to create the maps, based on legal and factual public
information, is inseparable from its expression embodied within the maps, and hence
not subject to copyright protection. Mason appealed.
o Mason argued that the court clearly erred in finding that this idea can be expressed in
only one or a limited number of ways.
Mason’s Maps are copyrightable
Mason’s idea in creating the maps was to bring together the available information on
boundaries, landmarks, and ownership, and to choose locations and an effective pictorial
expression of those locations. That idea and its final expression are separated by Mason's
efforts and creativity are entitled to protection from competitors.
The Idea/Expression Merger Doctrine not applicable
In finding for MDI, the Disctrict Court applied the idea/expression merger doctrine. Under
this doctrine, while a copyright bars others from copying an author's original expression of
an idea, it does not bar them from using the idea itself.
However, the Circuit Court held that the idea/expression merger doctrine does not apply to
this case. It said that to determine whether the doctrine is applicable in any case, the courts
must focus on whether the idea is capable of various modes of expression.
The record in this case contains copies of maps created by Mason's competitors that prove
beyond dispute that the idea embodied in Mason's maps is capable of a variety of
expressions. By selecting different sources, or by resolving inconsistencies among the same
sources differently, or by coordinating, arranging, or even drawing the information
differently, other mapmakers may create--and indeed have created-- expressions of Mason's
idea that differ from those that Mason created.
E. Authorship
OWNERSHIP OF COPYRIGHT (Sec. 178)
1. Author – Original literary and artistic works. (Sec. 178.1, IPC)
2. Co-authors – Works of joint authorship; in the absence of agreement, their rights
shall be governed by the rules on co-ownership.
Note: If work of joint authorship consists of parts that can be used separately, then the
author of each part shall be the original owner of the copyright in the part that he has
created. (Sec. 178.2, IPC)
3. In the course of employment, the copyright shall belong to:
a. The employee, if not a part of his regular duties even if the employee uses
the time, facilities and materials of the employer. (Sec. 178.3, IPC)
b. The employer, if the work is the result of the performance of his regularly-
assigned duties, unless there is an agreement, express or implied, to the
contrary. (ibid.) 
 is patented. (n)
4. The person who commissioned the work shall own the work but the copyright
thereto shall remain with the creator – In cases of work pursuant to commission,
unless there is a written stipulation to the contrary. (Sec. 178.4, IPC) 
 to whom they are addressed and delivered, but they cannot be published or disseminated
5. In case of collective works – contributor is deemed to have waived his right
unless he expressly reserves it. (Sec. 196, IPC)
Section 178, Section 179, Section 174, IPC
Section 178. Rules on Copyright Ownership. - Copyright ownership shall be governed by the
following rules:
178.1 Subject to the provisions of this section, in the case of original literary and
artistic works, copyright shall belong to the author of the work;
178.2. In the case of works of joint authorship, the co-authors shall be the original
owners of the copyright and in the absence of agreement, their rights shall be governed by
the rules on coownership. If, however, a work of joint authorship consists of parts that can
be used separately and the author of each part can be identified, the author of each part
shall be the original owner of the copyright in the part that he has created;
178.3. In the case of work created by an author during and in the course of his
employment, the copyright shall belong to:
a. The employee, if the creation of the object of copyright is not a part of his regular
duties even if the employee uses the time, facilities and materials of the employer.
b. The employer, if the work is the result of the performance of his regularly-assigned
duties, unless there is an agreement, express or implied, to the contrary.
178.4. In the case of a work commissioned by a person other than an employer of
the author and who pays for it and the work is made in pursuance of the commission, the
person who so commissioned the work shall have ownership of the work, but the copyright
thereto shall remain with the creator, unless there is a written stipulation to the contrary;
178.5. In the case of audiovisual work, the copyright shall belong to the producer,
the author of the scenario, the composer of the music, the film director, and the author of
the work so adapted. However, subject to contrary or other stipulations among the creators,
the producer shall exercise the copyright to an extent required for the exhibition of the work
in any manner, except for the right to collect performing license fees for the performance of
musical compositions, with or without words, which are incorporated into the work; and
178.6. In respect of letters, the copyright shall belong to the writer subject to the
provisions of Article 723 of the Civil Code. (Sec. 6, P.D. No. 49a)
Section 179. Anonymous and Pseudonymous Works. - For purposes of this Act, the
publishers shall be deemed to represent the authors of articles and other writings published
without the names of the authors or under pseudonyms, unless the contrary appears, or the
pseudonyms or adopted name leaves no doubt as to the author's identity, or if the author of
the anonymous works discloses his identity. (Sec. 7, P.D. 49)
Section 174. Published Edition of Work. - In addition to the right to publish granted by
the author, his heirs, or assigns, the publisher shall have a copyright consisting merely of
the right of reproduction of the typographical arrangement of the published edition of the
work. (n)
Article 722 and 723, Civil Code
Article 722. The author and the composer, mentioned in Nos. 1 and 2 of the preceding article,
shall have the ownership of their creations even before the publication of the same. Once
their works are published, their rights are governed by the Copyright laws.
The painter, sculptor or other artist shall have dominion over the product of his art even
before it is copyrighted.
The scientist or technologist has the ownership of his discovery or invention even before it
Article 723. Letters and other private communications in writing are owned by the person
without the consent of the writer or his heirs. However, the court may authorize their
publication or dissemination if the public good or the interest of justice so requires. (n)
Article 520 of the Civil Code
Article 520. A trade-mark or trade-name duly registered in the proper government bureau
or office is owned by and pertains to the person, corporation, or firm registering the same,
subject to the provisions of special laws. (n)
pg. 12
 1. Sole Authorship Under copyright law, a joint work (aka one with multiple authors) can be licensed by any
Lindsay v.The Wrecked and Abandoned Vessel R.M.S. Titanic, 52 U.S.P.Q.2d 1609
(S.D.N.Y. 1999)
Lindsay (plaintiff) contracted with a television company to direct and film a documentary
about the salvage of the RMS Titanic. The film followed RMST’s (defendant) third salvage
expedition of the ship, during which Lindsay spent a month filming the wreck. Lindsay
planned a later film project involving the Titanic wreck site based on his experience filming
the documentary. He decided to film the wreck using high-illumination lighting equipment
mounted on custom-designed lighting towers installed at specific locations underwater
around the site. Lindsay spent several weeks directing creation and placement of the
lighting towers, detailing shot angles, and deciding on equipment to be used for the shoot.
However, Lindsay’s instructions were carried out by others, and Lindsay did not capture the
footage himself. RMST eventually licensed the footage to the Discovery Channel, and
Lindsay filed suit for copyright infringement. RMST filed a motion to dismiss.
Lindsay has a right to claim compensation from the footage. Lindsay's alleged storyboards
and the specific directions he provided to the film crew regarding the use of the lightowers
and the angles from which to shoot the wreck all indicate that the final footage would indeed
be the product of Lindsay's "original intellectual conceptions." The fact that Lindsay did not
literally perform the filming, i.e. by diving to the wreck and operating the cameras, will not
defeat his claims of having "authored" the illuminated footage. Lindsay actually "directed
the filming" of the Titanic from on board the Ocean Voyager, the salvage vessel that held
the crew and equipment.
Lindsay is considered as the sole author of the footage and thus having a right over such
claims Where one contributor retains a so-called "veto" authority over what is included in a
work, such control is a strong indicator that he or she does not intend to be co-authors with
the other contributor. According to the pleadings, the plaintiff exercised virtually total
control over the content of the film as "the director, producer and cinematographer" of the
production. Additionally, he briefed the photographers with regards to the specific camera
angles they were to employ, and Lindsay screened the film each day to make sure the proper
footage was obtained. Based on these allegations, and implicit in the notion that the film
crew was simply "following directions," Lindsay retained what appeared to be exclusive
authority over what was included in the footage.
An individual claiming to be an author for copyright purposes must show "the existence of
those facts of originality, of intellectual production, of thought, and conception." All else
being equal, where a plaintiff alleges that he exercised such a high degree of control over a
film operation -- including the type and amount of lighting used, the specific camera angles
to be employed, and other detail-intensive artistic elements of a film -- such that the final
product duplicates his conceptions and visions of what the film should look like, the plaintiff
may be said to be an "author" within the meaning of the Copyright Act.
2. Joint Authorship accorded the various parties. Here, none of the parties made any objective manifestations
Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994)
Erickson worked for Trinity Theatre where she prepared three plays for the company: Much
Ado About Shakespeare ("Much Ado"); The Theatre Time Machine ("Time Machine"); and
Prairie Voices: Tales from Illinois ("Prairie Voices"). After she left trinity, she managed to
secure copyright registration of the said plays. They had a falling out and Erickson quit.
When Trinity continued to perform the plays, Erickson sued for copyright infringement.
Erickson argued that she was the author, and therefore controlled the rights to the plays.
Trinity argued that, since the actors made suggestions about the play to Erickson during
production and rehearsals, Trinity was a co-author.
one of the authors, even over the objections of the others.
The Trial Court found for Erickson. Trinity appealed. The Appellate Court affirmed.
A "joint work" as a work prepared by two or more authors with the intention that their
contributions be merged into inseparable or interdependent parts of a unitary whole.
A work is "joint" if the authors collaborated with each other, or if each of the authors
prepared his or her contribution with the knowledge and intention that it would be merged
with the contributions of other authors as "inseparable or interdependent parts of a unitary
whole." The touchstone here is the intention, at the time the writing is done, that the parts
be absorbed or combined into an integrated unit
The Court considered two approaches for determining if someone was a co-author:
1. The de minimis test, where everyone who contributed even a tiny bit to the
whole is considered a -co-author.
2. The copyrightable subject matter test, which says that a contributor is only a
co-author if that person's contribution would be theoretically copyrightable by
itself.
The Court found that the copyrightable subject matter test was the proper test to use.
In order for the plays to be joint works under the Act, Trinity also must show that actors'
contributions to Ms. Erickson's work could have been independently copyrighted.
The Court found that the contributions of the actors was not enough to be independently
copyrightable, therefore they could not be considered co-authors of the plays. Trinity cannot
establish this requirement for any of the above works. The actors, on the whole, could not
identify specific contributions that they had made to Ms. Erickson's works. Even when
Michael Osborne was able to do so, the contributions that he identified were not
independently copyrightable. Ideas, refinements, and suggestions, standing alone, are not
the subjects of copyrights. Consequently, Trinity cannot establish the two necessary
elements of the copyrightability test and its claims must fail.
Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 1999)
A person claiming to be a co-owner of a joint work must prove that both parties intended
the work to be a joint work.
Aalmuhammed (Plaintiff) worked as a consultant on Lee’s (Defendant) film about Malcolm
X. Aalmuammed (Plaintiff) reviewed the script, suggested revisions, and rewrote particular
areas. When the film was released, Plaintiff was listed in the credits as an “Islamic
Technical Consultant.” Plaintiff sought a declaratory judgment that the movie was a “joint
work” and that he was a co-owner of the copyright and entitled to an accounting of profits.
Plaintiff did not claim to be a co-author. The district court granted summary judgment to
the defendants.
A contribution of independently copyrightable material to a work intended to be an
inseparable whole does not make the work a joint work. joint work is one that was intended
by both parties to be a joint work. That determination is fact specific. The courts will look
to, among other things, the apportionment of decision-making authority and the billing
of intent to be co-authors. Specifically, Plaintiff had no supervisory authority over the film
and signed a “work for hire” agreement that prevented him from being a co-author.
Aalmuhammed did make substantial and valuable contributions to the movie, including
technical help. However, he never have superintendence of the work. The production of
Malcolm X was controlled by Warner Brothers and Spike Lee. Aalmuhammed’s lack of
control over the work, and absence of control is strong evidence of the absence of co-
authorship. Likewise, there was no objective manifestation an intense to be co-authors.
Lastly, Aalmuhammed gave no evidence that he was the “inventive or master mind” of the
movie. His contributions cannot be considered as sufficient to prove his claim of joint work
or co-authorship. A ruling otherwise would extend the definition of joint authorship to many
pg. 13
“overreaching contributors”, which will deny sole authors exclusive authorship status. This
will give way to claimjumping of people who have provided some form of assistance.
3. Works Made for Hire the position of a Labor Economist. At the time the Roeslin was hired, he had no computer
Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989)
Under common-law agency principles, one who creates an artwork at the directive of
another retains copyright upon it unless that other had employed the artist.
Community for Creative Non-Violence (CCNV) (Plaintiff) was a nonprofit organization
dedicated to advocacy for the cause of the homeless in the United States. It negotiated with
Reid (Defendant), a sculptor, to create a variation on the classic nativity scene, depicting
homeless persons. Agreement was finally reached and Defendant made the sculpture out
of a bronze-like material. Defendant worked in his studio with little direction from CCNV
(Plaintiff). Following the unveiling, Defendant registered a copyright on the work.
Subsequent to this, a disagreement arose between Plaintiff and Defendant who had taken
custody of the sculpture, over future exhibition thereof. Plaintiff filed an action seeking to
obtain possession of the work. The district court held Plaintiff to have the right to exhibit
the statue. The federal circuit of the court of appeals reversed, and the United States
Supreme Court granted review.
Under common-law agency principles, one who creates an artwork at the directive of
another retains copyright upon it unless that other had employed the artist.
17 U.S.C. § 201 (a) provides that copyright ownership vests initially in the work’s author,
something Reid (Defendant) in this case obviously was. Section 101 of the 1976 Copyright
Act creates an exception to this in the case of works created “for hire.” Section 101(2)
mandates copyright vestiture in the case where the author is an independent contractor of
another, in specific instances not applicable in this case. Section 101(1) provides that the
work is one created “for hire” if the work is created by an employee within the scope of his
employment, and this subsection is the only one that can divest Reid (Defendant) of
copyright therein. “Employee” is not defined in the section. This being so, the rule comes
into play that words used in a statute will be presumed to possess their normal meanings.
Contrary to CCNV’s (Plaintiff) assertions, “employee” is a narrower term than one over
whom another exercises a measure of control. Rather, “employee” has a particular meaning,
derived from common-law agency principles, wherein one party performs labor for another
under circumstances in which that other exerts substantial control over the work
environment on the laborer, as well as the manner of performance. Numerous factors figure
in this equation, such as the level of skill required, tax treatment of the putative employee,
the singleness of the assignment, and the source of the instrumentalities of the labor. In
this instance, the work was highly skilled; Reid (Defendant) was retained only for this single
assignment, was not treated as an employee for tax purposes, and provided his own work
area and tools. The conclusion is mandated that, under agency principles, Defendant was
not an employee of P. Therefore, the § 101(1) exception to § 201(a) does not apply, and the
copyright belongs to Reid (Defendant).
Aymes v. Bonelli, 980 F.2d 857 (2d. Cir. 1992)
Aymes was hired by Island Recreation Inc. (Island) and its president Bonelli, to create a
computer program. Aymes created CSALIB, it is designed to facilitate Island’s inventory,
record keeping, etc.Aymes allege that respondents infringed his copyright over the computer
program when the latter modified the same and used it on more than one computer, in
contrast to the parties’ verbal agreement. Island claimed that it is the owner of the computer
program because Aymes was its employee.
Aymes, being an Independent Contractor owns the copyright over CSALIB. However,
respondents cannot infringe the copyright because of the fact that Aymes was paid by Island
to design a program specifically for Island’s use. The facts show that it is not true that Island
used the program in more than one computer as alleged by Aymes. The modification done
by Respondents does not also constitute infringement because such modifications are
necessary as provided for by the Contu Report.
Roeslin v. District of Columbia, 921 F. Supp. 793 (D.D.C. 1995)
Employee sued employer for infringement of copyrighted computer program developed by
employee.
Charles Roeslin was hired by defendant Department of Employment Services (D.O.E.S) for
programming skills, nor was his supervisor, Mr. Groner, aware of whether he had said
skills. He was then given tasks that did not involve any computer programming.
When Roeslin began working at D.O.E.S, employees manually collected, recorded, and
computed information from returned CES surveys with the aid of computers. The District
anticipated the future development of the Automated Current Employment Statistics
(ACES) mainframe system.
In 1988, Roeslin was motivated to create the DC-790 system after attending a Current
Employment Service (CES) conference. His supervisor advised him against it since D.O.E.S
will eventually implement ACES. Roeslin still decided to create DC-790 to prove that it
could be done and to develop job opportunities for himself.
Roeslin then purchased a personal computer and programming books, with his own funds,
and spent approximately 3,000 hrs in creating various modules to complete the DC-790
system. He eventually succeeded in creating it without any direction, assistance, nor
compensation from his supervisor/ D.O.E.S.
He then brought the program into his workplace to test actual data. After the DC-790
system became operational, he promoted it to the Federal Bureau of Labor Statistics (BLS).
However, he later learned that the District had asserted a proprietary interest in the
system.
Charles Roeslin, as the author of the DC-790 system, is the owner of the copyright on the
DC-790 system.
The court held that the program was not a work made for hire seeing that the system was
not made within the scope of his employment, nor was it incidental to his job duties:
1. Developing a computer software is not the kind of work Roeslin was employed to
do. He was hired as a labor economist, not as a computer programmer. While
developing the DC-790 system did help the functioning of the workplace, it was
not the type of activity in which Roeslin would be reasonably expected to engage;
2. The development of the system did not occur substantially within the authorized
time and space limits since Roeslin spent 3,000 hrs outside normal working hours
creating the modules of the program; and
3. Roeslin was primarily motivated to create the system for his own benefit. It is also
unfair for the District to now claim that an activity it discouraged–developing the
system—was within the scope of plaintiff’s employment.
4. Government Works
Section 176 IPC
SECTION 176. Works of the Government. —
176.1. No copyright shall subsist in any work of the Government of the
Philippines. However, prior approval of the government agency or office wherein the work
is created shall be necessary for exploitation of such work for profit. Such agency or office
may, among other things, impose as a condition the payment of royalties. No prior approval
or conditions shall be required for the use for any purpose of statutes, rules and regulations,
and speeches, lectures, sermons, addresses, and dissertations, pronounced, read or rendered
in courts of justice, before administrative agencies, in deliberative assemblies and in
meetings of public character. (Sec. 9, first par., P.D. No. 49)
176.2. The author of speeches, lectures, sermons, addresses, and dissertations
mentioned in the preceding paragraphs shall have the exclusive right of making a collection
of his works. (n)
176.3. Notwithstanding the foregoing provisions, the Government is not precluded
from receiving and holding copyrights transferred to it by assignment, bequest or otherwise;
pg. 14
nor shall publication or republication by the Government in a public document of any work 213.2. In case of works of joint authorship, the economic rights shall be protected
in which copyright is subsisting be taken to cause any abridgment or annulment of the during the life of the last surviving author and for fifty (50) years after his death. (Sec. 21,
copyright or to authorize any use or appropriation of such work without the consent of the second sentence, P.D. No. 49)
copyright owner. (Sec. 9, third par., P.D. No. 49) 213.3. In case of anonymous or pseudonymous works, the copyright shall be
protected for fifty (50) years from the date on which the work was
first lawfully published: Provided, That where, before the expiration of the said period, the
F. Duration of Copyright author's identity is revealed or is no longer in doubt, the provisions of Subsections 213.1.
and 213.2 shall apply, as the case may be: Provided, further, That such works if not
Articles 7, Berne Convention for the Protection of Literary and Artistic Works
published before shall be protected for fifty (50) years counted from the making of the work.
Term of Protection:
(Sec. 23, P.D. No. 49)
(1) The term of protection granted by this Convention shall be the life of the author
213.4. In case of works of applied art the protection shall be for a period of twenty-
and fifty years after his death.
five (25) years from the date of making. (Sec. 24(B), P.D. No. 49a)
(2) However, in the case of cinematographic works, the countries of the Union may
213.5. In case of photographic works, the protection shall be for fifty (50) years
provide that the term of protection shall expire fifty years after the work has been made
from publication of the work and, if unpublished, fifty (50) years from the making. (Sec.
available to the public with the consent of the author, or, failing such an event within fifty
24(C), P.D. 49a)
years from the making of such a work, fifty years after the making.
213.6. In case of audio-visual works including those produced by process analogous
(3) In the case of anonymous or pseudonymous works, the term of protection
to photography or any process for making audio-visual recordings, the term shall be fifty
granted by this Convention shall expire fifty years after the work has been lawfully made
(50) years from date of publication and, if unpublished, from the date of making. (Sec. 24(C),
available to the public. However, when the pseudonym adopted by the author leaves no
P.D. No. 49a)
doubt as to his identity, the term of protection shall be that provided in paragraph (1). If the
SECTION 214. Calculation of Term. — The term of protection subsequent to the death of
author of an anonymous or pseudonymous work discloses his identity during the above-
the author provided in the preceding Section shall run from the date of his death or of
mentioned period, the term of protection applicable shall be that provided in paragraph (1).
publication, but such terms shall always be deemed to begin on the first day of January of
The countries of the Union shall not be required to protect anonymous or pseudonymous
the year following the event which gave rise to them. (Sec. 25, P.D. No. 49)
works in respect of which it is reasonable to presume that their author has been dead for
fifty years.
(4) It shall be a matter for legislation in the countries of the Union to determine G. Protected Works and Boundary Problems
the term of protection of photographic works and that of works of applied art in so far as
they are protected as artistic works; however, this term shall last at least until the end of a
period of twenty-five years from the making of such a work. 1. Useful Articles with Pictorial, Graphic, or Sculptural
(5) The term of protection subsequent to the death of the author and the terms Aspects
provided by paragraphs (2), (3) and (4) shall run from the date of death or of the event
referred to in those paragraphs, but such terms shall always be deemed to begin on the first
of January of the year following the death or such event. a) "Kitsch" or "Progress"?
(6) The countries of the Union may grant a term of protection in excess of those
provided by the preceding paragraphs.
(7) Those countries of the Union bound by the Rome Act of this Convention which Mazer v. Stein, 347 U.S. 201 (1964)
grant, in their national legislation in force at the time of signature of the present Act, shorter
terms of protection than those provided for in the preceding paragraphs shall have the right
to maintain such terms when ratifying or acceding to the present Act.
(8) In any case, the term shall be governed by the legislation of the country where
protection is claimed; however, unless the legislation of that country otherwise provides, the
term shall not exceed the term fixed in the country of origin of the work.

Term of Protection for Works of Joint Authorship

The provisions of the preceding Article shall also apply in the case of a work of
joint authorship, provided that the terms measured from the death of the author shall be
calculated from the death of the last surviving author.

Section 213, Section 214, IPC

SECTION 213. Term of Protection. —
213.1. Subject to the provisions of Subsections 213.2 to 213.5, the copyright in
works under Sections 172 and 173 shall be protected during the life of the author and for
fifty (50) years after his death. This rule also applies to posthumous works. (Sec. 21, first
sentence, P.D. No. 49a)
Stein designed a Grecian-style sculpture of a lady and registered it with the Copyright Office
as a "work of art." Then he turned the sculpture into a lamp (with the lady holding up a
bulb) and began mass producing them. Mazer started making identical lamps. Stein sued
for copyright infringement.

pg. 15
Mazer argued that the lamp was ineligible for copyright protection because it was not a
"work of art," it was a lamp.
In general, copyrights are intended to protect works of art (literature, paintings, sculptures,
etc.) and not utilitarian items such as lamps and furniture.
The Trial Court found for Mazer. Stein appealed. The Appellate Court reversed. Mazer
appealed. The Appellate Court found that a subsequent utilization of a work of art in an
article of manufacture in no way affects its right of the copyright owner to be protected
against infringement of the work of art itself. The US Supreme Court affirmed.
The US Supreme Court found that there was no distinction between purely aesthetic articles
and useful works of art. The Court found that a “work of art” has a broader specification
than just a “work of fine art.” A work that is the result of the original, tangible ideas of the
creator is subject to copyright protection. Thus, the Court finds that the lamp base satisfies
the requisite originality needed for protection.
The Court also reasons that the lamp base, fitted as lamps or unfitted, may be granted a
deign patent but patentability does not bar the lamp bases from being copyrighted as a
“work of art. Furthermore, the Court found that the intended or actual use in industry of an
article eligible for copyright does not bar or invalidate its registration. As a result, Stein’s
lamp base is entitled to copyright protection. An original idea, incorporated into an
utilitarian object, may be protected as a “work of art” under U.S. Copyright Law.
Basically, this case said that just because a thing has a utilitarian use (like being a lamp or
a doorknocker), that usefulness doesn't automatically preclude copyright protection of the
artistic/aesthetic parts of the thing. However, later cases clarified that a utilitarian item
must have some artistic component in order to be copyrightable, and you need to be able to
separate the artistic component from the utilitarian component.
17 U.S.C. §101 now says that, "such works shall include works of artistic craftsmanship
insofar as their form but not their mechanical or utilitarian aspects are concerned."
b) Defining Useful Articles and Determining Separability torsos did not.
Kieselstein-Cord v. Accessories by Pearl,
Inc., 632 F.2d 989 (2d Cir. 1980)
Kieselstein-Cord was a jewelry designer who
designed two very distinctive silver belt buckles.
He registered the belt buckles with the
Copyright Office as 'jewelry.' Kieselstein-Cord
won some design awards for the belt buckles and
they were even placed on display in a museum.
Pearl started producing identical belt buckles.
Kieselstein-Cord sued for copyright
infringement. Pearl argued that Kieselstein-
Cord's copyright was invalid because they
weren't works of art, they were belt buckles, and
that utilitarian items (aka useful articles) are
not copyrightable.
The Trial Court found for Pearl, Kieselstein-
Cord appealed. The Trial Court looked to 17
U.S.C. §101 and found that works with
utilitarian features are only copyrightable to the
extent that the design features "can be identified
separately from, and are capable of existing
independently of, the utilitarian aspects of the
article."
The Court found that there was no separability
of the artistic and utilitarian aspects of the belt
buckle, so it could not be copyrighted. A t-shirt with a cartoon on it is easily separable
because you can easily see how the cartoon could be separated from the t-shirt itself. But in
this case, it was harder to see how the copyrightable design elements were separable from
the functional features of the belt buckle.
The Appellate Court reversed. The Court looked at the belt buckle and found that it did
contain artistic qualities. The Court found that you could make a belt buckle without some
of the distinct features that Kieselstein-Cord's belt buckle had. Therefore, there was
separability.
The Court noted that separability could be either physical or conceptual.
Basically, if you can identify some features to a utilitarian item (such as say, a pattern
stamped into a belt buckle) that have no utilitarian purpose, then those features can be
copyrighted, even if the overall function of the work is to be a utilitarian item.
Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985)
A utilitarian article is only copyrightable to the extent that its aesthetic design elements
can be identified and separated from its utilitarian function.
Barnhart designed plastic torsos that clothing stores used to display clothing. They were
sculpted to look just like the human body. Economy copied Barnhart's designs. Barnhart
sued for copyright infringement. Economy argued that Barnhart could not copyright the
torsos because they weren't works of art, they were utilitarian, and utilitarian items (aka
useful articles) are not copyrightable.
The Trial Court found for Economy. Barnhart appealed. The Appellate Court affirmed.
The Appellate Court looked to 17 U.S.C. §101 and found that works with utilitarian features
are only copyrightable to thee extent that the design features "can be identified separately
from, and are capable of existing independently of, the utilitarian aspects of the article."
The Court distinguished Kieselstein-Cord v. Accessories by Pearl, Inc. (632 F.2d 989 (2d Cir.
1980)), which held that a fancy belt buckle was copyrightable, by saying that the belt buckle
had features which were not necessary for it to be useful as a belt buckle. However, the
Barnhart argued that there was artistic expression in how the torsos were sculpted to look
like real human torsos, but the Court found that if they didn't look like real human torsos
they wouldn't have worked for modeling clothing effectively.
Brandir International, Inc. v. Cascade Pacific Lumber Co.
834 F.2d 1142 (2d Cir. 1987)
Copyrightability ultimately depends on the extent to which the work reflects artistic
expression not restricted by functional considerations.
pg. 16
After seeing undulating wire sculptures, a friend suggested to the artist, the chief owner of
Brandir International, Inc. (Brandir) (Plaintiff), that the sculptures would make excellent
bicycle racks. Plaintiff then started to manufacture and sell bike racks derived in part from
one or more of the works of art. When Plaintiff discovered that Cascade Pacific Lumber
(Defendant) was selling a similar product, it included a copyright notice with its products
and applied to the Copyright Office for registration. The Copyright Office denied the
applications for registration as the bicycle racks did not include any element that was
capable of independent existence as a copyrightability, and the district court granted
summary judgment on the copyright claim. Plaintiff appealed.
Copyrightability ultimately should depend on the extent to which the work reflects artistic
expression not restricted by functional considerations. If design elements reflect a merger
of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be
conceptually separable from the utilitarian elements. The final form of the bicycle rack sold
by Brandir (Plaintiff) is basically a product of industrial design. Form and function are
inextricably intertwined in the rack, its ultimate design being as much the result of
utilitarian pressures as aesthetic choices. The original aesthetic elements have clearly been
adapted to accommodate and further a utilitarian purpose.
c) Computer Software the cheaper and easier route of just taking what Apple had created.
Text or Machine?
Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983), cert.
dismissed, 464 U.S. 1033 (1984)
Franklin Computer began making computers that were 'compatible' with Apple computers.
Franklin sold a personal computer, the ACE 100, that was intended to be compatible with
all software and equipment designed for use with the Apple II computer. To ensure
functionality for all products, Franklin purposely copied Apple Computer, Incorporated’s
operating system programs. This required that they have the same operating software.
Apple sued for copyright infringement and filed a motion for a preliminary injunction. Apple
argued that:
• Ace 100, had included some of the same mathematical logic and language for the ROM
as Apple II
• Basis of the copyright infringement case against Franklin Computer Corporation was
that Ace 100 featured a similar motherboard scheme to that of Apple II
Franklin did not dispute that it copied Apple's software, but respondents alleged that the
software was not copyrightable. Franklin argued that the operating system was a method
or process, and those aren't copyrightable. Franklin cited the case of Baker v. Selden (101
U.S. 99 (1879) wherein plaintiff's testator held a copyright on a book explaining a
bookkeeping system which included blank forms with ruled lines and headings designed for
use with that system.
A computer (operating system) program of is copyrightable.
Under the law, two primary requirements must be satisfied in order for a work to constitute
copyrightable subject matter – it must be an “original work of authorship” and must be
“fixed in [a] tangible medium of expression.”
Although section 102(a) does not expressly list computer programs as works of authorship,
the legislative history suggests that programs were considered copyrightable as literary
works. “Computer Program” is a set of statements or instructions to be used directly or
indirectly in a computer in order to bring about a certain result.
Legislative history indicates that section 102(b) was intended “to make clear that the
expression adopted by the programmer is the copyrightable element in a computer program,
and that the actual processes or methods embodied in the program are not within the scope
of the copyright law.”
It is copyrightable
Many of the courts which have sought to draw the line between an idea and expression have
found difficulty in articulating where it falls. Unlike a patent, a copyright protects
originality rather than novelty or invention.”
Just as a patent affords protection only to the means of reducing an inventive idea to
practice, so the copyright law protects the means of expressing an idea; and it is as near the
whole truth as generalization can usually reach that, if the same idea can be expressed in a
plurality of totally different manners, a plurality of copyrights may result, and no
infringement will exist
The Court found that even though the operating system was part of what made the computer
work, the statutory definition of a computer program did not differentiate between the
operating system and other applications programs (which were already held to be
copyrightable).
The Court found that there was evidence suggesting that there were other possible ways to
write the operating system, so there wasn't a single expression, and the doctrine of merger
didn't apply.
Franklin could have theoretically done some reverse engineering and developed their own
program that was still interoperable with Apple's products, but they chose instead to take
That was economically efficient for Franklin, but it didn't justify their actions.
Distinguishing Idea from Expression in Software
Lotus Development Corporation v. Borland International, Inc., 49 F.3d 807 (1st Cir.
1995), affirmed by an equally divided court, 516 U.S. 233 (1996)
A computer menu command hierarchy is not copyrightable subject matter.
Lotus Development Corp. (Lotus) (Plaintiff) marketed a computer spreadsheet program,
Lotus 1-2-3. The program incorporated 469 menu commands, such as “Copy,” “Print,” etc.
The program also enabled the user to write macros that would designate a series of
commands with a single macro keystroke. Borland International (Borland) (Defendant)
then released two versions of its own spreadsheet programs, called Quattro and Quattro
Pro. Borland (Defendant) included a virtually identical copy of the whole 1-2-3 menu tree
in its Quattro programs. It did not copy any of the Plaintiff’s underlying computer code, but
it did copy the words and structures of Lotus’s (Plaintiff) menu command hierarchy so that
consumers who used Borland’s (Defendant) programs would not have to relearn any
commands or rewrite their Lotus (Plaintiff) macros. Plaintiff sued for copyright
infringement and received a judgment in its favor. Defendant appealed, arguing that the
Lotus (Plaintiff) menu command hierarchy was not copyrightable because it was a system,
method of operation, process, or procedure excluded from protection by the Copyright Act.
A computer menu command hierarchy is not copyrightable subject matter. A menu
command hierarchy is an uncopyrightable “method of operation” as that term is used in S
102(b) of the Copyright Act. It provides the means by which users control and operate a
program’s functional capabilities. Just as it would be impossible to operate a VCR without
buttons, it would be impossible to operate Lotus 1-2-3 with using its menu command
hierarchy. Therefore, the Lotus (Plaintiff) command terms are equivalent to the buttons
themselves, which are an uncopyrightable method of operating the VCR. Therefore,
Defendant did not infringe Plaintiff’s copyright when it copied its menu command hierarchy.
EU Software Directive, Directive on the Legal Protection of Computer Programs
1991 O.J. (L-122) 42 (EU Software Directive)
pg. 17
 d) Architectural Works in such a way that the resulting work as a whole constitutes an original work of authorship”)
Section 186, IPC
SECTION 186. Work of Architecture. — Copyright in a work of architecture shall include
the right to control the erection of any building which reproduces the whole or a substantial
part of the work either in its original form or in any form recognizably derived from the
original: Provided, That the copyright in any such work shall not include the right to control
the reconstruction or rehabilitation in the same style as the original of a building to which
that copyright relates. (n)
Intervest Construction, Inc. v. Canterbury Estate Homes, Inc., 554 F.3d 914 (11th
Cir. 2008)
In 1992, Intervest Construction, Incorporated (Intervest) (plaintiff) created a floor plan for
a four-bedroom, two-bathroom house, named the Winchester. Canterbury Estates Homes,
Incorporated (Canterbury) created a floor plan in 2002, called the Kensington, that had
many similar features. It was also a four-bedroom, two-bath house. Additionally, both plans
had a master suite, a two-car garage, a dining room, a living room, a family room, a nook,
and a porch. Although the layouts of those features were similar, there were also distinct
differences between the two designs. For example, the rooms in each plan had different
square footage; space that was for attic access in the Winchester was treated as a bonus
room in the Kensington; the nooks had different features that changed the flow of the
adjoined rooms; and the kitchens, walls, and counters were placed in different areas.
Intervest sued for copyright infringement. The district court found for Canterbury, basing
its decision on the differences that existed between the two plans. Intervest appealed,
alleging error based on the district court’s emphasis on the differences rather than the
similarities between the two designs.
Under the Copyright Act, a copyrightable “architectural work” includes “the overall form as
well as the arrangement and composition of spaces and elements in the design” but not
individual standard features. According to the Eleventh Circuit, while such features aren’t
copyrightable, an architect’s original arrangement of them may be.
The court explained that the definition of an “architectural work” thereby closely parallels
the definition of a “compilation” under the act (defined as “a work formed by the collection
and assembling of preexisting materials or of data that are selected, coordinated or arranged
and noted that the “copyright protection in a compilation is ‘thin.’”
The court held that, as with compilations, any comparison of the works at issue must be
accomplished at the level of protected expression — in other words, “the arrangement and
coordination of those common elements” such as rooms, windows and doors. And, when
making the comparison, a court should recall that the copyright protection is “thin.”
Here, the district court had carefully compared the protectable components of the two plans,
focusing on the narrow arrangement and coordination of otherwise standard architectural
features. It cited, for example, differences in the location of the entrances and the placement
of the air conditioning units and water heaters. The Eleventh Circuit agreed that the
differences in these and other aspects were sufficiently significant to preclude a finding that
the plans were substantially similar.
The case provides a helpful reminder that copyrighted works carry different levels of
protection. If the protection is deemed “thin,” the copyright holder may find it difficult to
establish infringement.
e) Characters
See Cases under Expression or Idea
2. Expression or Idea?
Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co.,
900 F. Supp. 1287 (C.D. Cal. 1995)
To advertise their new Honda del Sol convertible with a detachable roof, Honda and its
advertising firm, made a commercial. The commercial involved a helicopter chase scene,
featuring a suave “James Bond” type of hero, an attractive heroine and a menacing villain.
Metro-Goldwyn-Mayer, Inc. (MGM) filed an instant motion for preliminary injunction to
pull the commercial off the air alleging that Honda infringed its copyrights to sixteen James
Bond films as well as the James Bond character. Honda claimed that their use of the James
Bond character is protected under the fair use doctrine, which protects parodies.
Honda commercial appropriated both the idea and expression of the James Bond
films and characters.
The court held that the Honda commercial had substantial similarities with the specific
protected elements of the James Bond films such as (1) the theme, plot, and sequence (2)
the setting involving a high-speed chase (3) the mood and pace - fast-paced involving hi-tech
effects with loud exciting horn music in the background (4) the dialogue of James Bond and
the Honda commercial male lead were both laced with dry wit and subtle humor (5) both
leads were both young tuxedo-clad British looking men.
In addition, several aspects of the Honda commercial appear to have been lifted from the
James Bond films.
There are many ways to express a helicopter chase scene, but only James Bond films would
do it the way the Honda commercial did with the very similar characters, music, pace, and
moo
The fair use doctrine cannot be applied in this case.
The SC’s decision in Campbell v. Acufff-Rose provided four factors in invoking the fair use
doctrine:
(1) the purpose and character of the use, including whether such use is of a commercial
nature or nonprofit educational purposes
(Campbell held that a parody is not protected if it merely uses the original work to get
attention or to avoid the pain of working up something new instead of commenting on
the substance or style of the original work)
(2) the nature of the copyrighted work
(It is recognized that some works (like creative works) are closer to the core of
intended copyright protection than others (like factual works), and thus are more
deserving of protection.)
pg. 18
(3) the amount and substantiality of the portion used in relation to the copyrighted work as
a whole; and
(Look to the quantitative and qualitative extent of the copying of the original work
involved. A parodist may appropriate only that amount of the original necessary to
achieve his or her purpose.)
(4) the effect of the use on the potential for, or value of, the copyrighted work
(The effect of the use upon the potential market for or value of the copyrighted work
should be measure. As where the appropriation involves "mere duplication for
commercial purposes," market harm is presumed.)
Factors discussed in relation to this case
(1) The Honda advertisement is completely commercial in its nature and does not comment
on the earlier Bond films.
(2) The James bond films are considered core-predictable work as it has created its own
unique niche in the larger “action film” genre.
(3) The commercial is a total appropriation and the brevity of the infringing work when
compared with the original does not excuse copying.
(4) One of the most commercially lucrative aspects of the copyrights is their value as
lending social cachet and upscale image to cars. It is likely that James Bond's
association with a low-end Honda model will threaten its value in the eyes of future
upscale licensees.
Titan Sports, Inc. v. Turner Broadcasting Systems, Inc.,
981 F. Supp. 65 (D. Conn. 1997)
World Championship Wrestling is a corporation and majority owned subsidiary of Turner
Broadcasting, competes directly with World Wrestling Federation (Titan Sports Inc) in
televising professional wrestling, associated merchandising, and licensing programs.
Titan Sports contends that success in the professional wrestling business depends upon the
development of interesting wrestling characters and story lines. characters must have
names, personalities, histories, relationships, personas, and visual appearances that appeal
to consumers
Titan Sports alleges that WWF programming combines character-driven story lines with
skillful wrestling while WCW has no reputation for creativity.
TBS proposed interpromotional matches in order to associate WCW with WWF, but this was
rejected by Titan Sports.
Scott Hall (wrestler) after wrestling unsuccessfully with
WCW, contracted to wrestle for plaintiff Titan Sports a
wrestling character was created for Hall called “Razor
Ramon” alias “The Bad Guy”:
• had distinctive Hispanic accent
• slicked black hair in ponytail with curl in the front
• toothpick in his mouth
• wears vest and multiple chains around his neck
Titan Sports registered the service mark “Razor Ramon”
with the US Patent and Trademark Office.
The contract between Titan Sports and Hall provided that
Titan Sports retained exclusive ownership of the
character’s name and likeness and the exclusive right to
distribute copyrightable materials based on the character.
Hall warranted that he would not enter other agreements
conflicting with Titan Sport’s contract rights
Titan Sports developed another character using wrestler
Kevin Nash who also wrestled unsuccessfully with WCW
Nash and Titan Sports entered into a contract similar with
Halls’; Nash’s character was “Diesel” alias “Big Daddy Cool:
• goatee beard and mustache
• black leather boots, pants and vest decorated with
silver studs and tassels
• black low cut tank-top shirt,
• black fingerless glove on right hand, black elbow
pads, black wrist bands, sunglasses
Both Ramon Razor and Diesel became popular characters.
Hall and Nash contracted to wrestle with WCW due to
WCW’s promise of lucrative, guaranteed contracts. Plaintiff
Titan Sports alleges that defendant Bischoff planned to
capitalize on the goodwill of the Razor Ramon and Diesel
characters. Plaintiff Titan Sports filed a complaint against
defendants alleging copyright infringement of the characters
Razor Ramon and Diesel.
Defendants are liable for copyright infringement of the characters of Razor Ramon and
Diesel. To establish copyright infringement, plaintiff must prove ownership of a copyright
and that defendants copied the protected material. Copyright registration is prima facie
evidence of the valid ownership of a copyright.
The owner of a copyright in various works embodying a character can acquire copyright
protection itself. The plaintiff, however, must still demonstrate that the character was
distinctively delineated in the plaintiff’s work, and such delineation was copied in the
defendant’s work
But the protection is limited to the character as defined by performance in the copyrighted
works, only a uniquely developed character with some degree of novelty is copyrightable; the
less developed the characters, the less they can be copyrighted
Although the language in Warner Bros. suggests that if a plaintiff owns a valid copyright in
a work the plaintiff automatically obtains a copyright in the characters, all characters
embodied in a copyrighted work are not necessarily protected. Instead, the character still
must be sufficiently developed in the work to be worthy of copyright protection. To hold
otherwise would provide copyright protection to any insubstantial and undeveloped
character.
In the present case, plaintiff Titan Sports does not have a registered copyright in the
character Diesel but has obtained copyright registrations in numerous broadcasts, videos,
and magazines in which its Diesel character has appeared
Designers Guild Ltd. v. Russell Williams (Textiles) Ltd,
[2000] 1 W.L.R. 2416 (U.K.: House of Lords)
Both parties design and sell fabrics and wallpapers. DGL complained that RWT, in its
Marguerite design, had copied the Ixia design and so infringed its copyright. RWT strongly
contested that accusation at trial, seeking to show that it had not and could not have copied
the Ixia design. But the judge rejected RWT's evidence. Relying on similarities, which he
listed, between the Marguerite and Ixia designs, he concluded in round terms that the one
had been copied from the other. The trial judge (Mr. Lawrence Collins Q.C.) found that the
defendants had prior access to the copyright work and that their design reproduced many
of its features. He rejected the defendants' evidence of independent origin, and found that
pg. 19
their design was copied from and reproduced a substantial part of the copyright work. He
accordingly gave judgment for the plaintiffs.
He listed these similarities as follows:
1. Each fabric consists of vertical stripes, with
spaces between the stripes equal to the width of
the stripe, and in each fabric flowers and leaves
are scattered over and between the stripes, so as
to give the same general effect.
2. Each is painted in a similar neo-Impressionistic
style. Each uses a brushstroke technique, i.e. the
use of one brush to create a stripe, showing the
brush marks against the texture.
3. In each fabric the stripes are formed by vertical
brush strokes, and have rough edges which
merge into the background.
4. In each fabric the petals are formed with dryish
brushstrokes and are executed in a similar way
(somewhat in the form of a comma).
5. In each fabric parts of the colour of the stripes
show through some of the petals. [Technically
called the "resist effect"].
6. In each case the centres of the flower heads are
represented by a strong blob, rather than by a
realistic representation.
7. In each fabric the leaves are painted in two
distinct shades of green, with similar brush
strokes, and are scattered over the design."
RWT's Marguerite design is an infringing copy of DGL's Ixia design
Plainly there can be no copyright in an idea which is merely in the head, which has not been
expressed in copyrightable form, as a literary, dramatic, musical or artistic work. But the
distinction between ideas and expression cannot mean anything so trivial as that. Every
element in the expression of an artistic work is the expression of an idea on the part of the
author.
The expression of these ideas is protected, both as a cumulative whole and also to the extent
to which they form a "substantial part" of the work. Substantiality depends upon quality
rather than quantity. And there are numerous authorities which show that the "part" which
is regarded as substantial can be a feature or combination of features of the work, abstracted
from it rather than forming a discrete part. That is what the judge found to have been copied
in this case. Or to take another example, the original elements in the plot of a play or novel
may be a substantial part, so that copyright may be infringed by a work which does not
reproduce a single sentence of the original. If one asks what is being protected in such a
case, it is difficult to give any answer except that it is an idea expressed in the copyright
work. Generally speaking, in cases of artistic copyright, the more abstract and simple the
copied idea, the less likely it is to constitute a substantial part. Originality, in the sense of
the contribution of the author's skill and labor, tends to lie in the detail with which the basic
idea is presented. Copyright law protects foxes better than hedgehogs. In this case, however,
the elements which the judge found to have been copied went well beyond the banal and I
think that the judge was amply justified in deciding that they formed a substantial part of
the originality of the work.
The first step in an action for infringement of artistic copyright is to identify those features
of the defendant's design which the plaintiff alleges have been copied from the copyright
work. The court undertakes a visual comparison of the two designs, noting the similarities
and the differences. The purpose of the examination is not to see whether the overall
appearance of the two designs is similar, but to judge whether the particular similarities
relied on are sufficiently close, numerous or extensive to be more likely to be the result of
copying than of coincidence. It is at this stage that similarities may be disregarded because
they are commonplace, unoriginal, or consist of general ideas. If the plaintiff demonstrates
sufficient similarity, not in the works as a whole but in the features which he alleges have
been copied, and establishes that the defendant had prior access to the copyright work, the
burden passes to the defendant to satisfy the judge that, despite the similarities, they did
not result from copying.
Even at this stage, therefore, the inquiry is directed to the similarities rather than the
differences. This is not to say that the differences are unimportant. They may indicate an
independent source and so rebut any inference of copying. But differences in the overall
appearance of the 2 works due to the presence of features of the defendant's work about
which no complaint is made are not material. In the present case, the disposition of the
flowers and (except in one instance) the colorways of the defendants' design are very
different from those of the plaintiffs' design. They were not taken from the copyright work,
and the plaintiffs make no complaint in respect of them. They make a significant difference
to the overall appearance of the design. But this is not material where the complaint is of
infringement of copyright and not passing off.
Norovzian v. Arks Ltd (No. 2), [2000] E.M.L.R. 67 (U.K.: Court of Appeal)
A film may be protected as a dramatic work subject to copyright law, but not the artistic
techniques demonstrated in it.
Claimant, Mehdi Norowzian is a director of advertising films. He created and produced a
short film entitled “Joy” which depicted a man, casually dressed, dancing to music in a
quirky manner against a plain backdrop. The film was shot with a camera in a fixed position
and the editing process heavily used the ‘jump cutting’ technique – a process whereby the
editor excises pieces of film, joining together the remaining pieces. The first defendant was
the advertising agent for Guinness, the second defendant. Claimant claimed that a
Guinness advertisement entitled ‘Anticipation’ infringed his copyright in Joy. Anticipation
used a similar jump cutting technique and showed a man dancing around to music in a
quirky manner, waiting for his pint of Guinness beer to settle.
Even though there is a striking similarity between the filming and editing styles and
techniques used by the directors of the 2 films, no copyright subsists in mere style or
technique.
Although the Court of Appeals held that Joy was protected by copyright as a dramatic work,
the Court agreed with the trial judge that such copyright had not been infringed since no
substantial part of that film had been copied. A film may be protected as a dramatic work
subject to copyright law, but not the artistic techniques demonstrated in it.
Fraser v. Thames Television Ltd, [1984] 1 Q.B. 44 (U.K.: High Court)
Fraser was the manager of a rock group of a rock group composed of 3 girls called “Rock
Bottom.” The group and Fraser developed an idea for a TV show based on how their rock
group was formed, where the intention was for the 3 girls of Rock Bottom to play the leading
roles. This idea was communicated to a scriptwriter, who in turn pitched the idea to Thames.
Thames paid the petitioners £500 to maintain the idea’s confidentiality until it could reach
a decision about making the show. It was also stipulated that the 3 girls should not appear
in any competing television program and that should the company decide to make the show,
the petitioners have the right of first refusal, and their refusal would not jeopardize Thames’
right to undertake the project with different artists. This was confirmed in a letter sent by
Thames to petitioners. Thames decided to make the series titled “Rock Follies,” which the
petitioners agreed to take part of but no concrete or firm offer was ever made to them by
Thames. Instead, Thames cast different girls for the leading roles.
Petitioners then proceeded against Thames, claiming breach of confidence relating to the
use of the idea and of contract. It was their contention that it was agreed that Thames would
pg. 20
not use the idea without casting the originators thereof in the leading roles unless they were
unwilling to be cast.
Thames is liable for breach of confidence. If an idea was communicated in confidence and
was readily identifiable, original, of potential value, and capable of being put into practice,
the Court would restrain its onward communication indefinitely, or until it becomes public
knowledge. Thames knew that the idea belonged to the plaintiffs and had been imparted in
confidence. As such, it was under an obligation of confidence. In making, transmitting,
writing, and producing the series based on the petitioners’ idea without consent, the
obligation of confidence was breached. Due to this, Thames is liable for damages.
The fact that the idea was orally communicated is irrelevant in determining liability. The
information can be confidential regardless of its form. The idea is confidential if it has some
element of originality and not already of public knowledge. The idea must also be clearly
identifiable as it will not suffice if that idea is vague, HOWEVER, neither is there a need
for the idea to be fully developed.
Anderson v. Stallone, 11 U.S.P.Q.2d 1161
Sylvester Stallone wrote the script and played the role of Rocky Balboa in the movies Rocky
I, II, and III. After viewing Rocky III, Timothy Anderson wrote a thirty-one-page treatment
entitled "Rocky IV" that he hoped would be used by Stallone and MGM as a sequel to Rocky
III. The treatment incorporated the characters created by Stallone in his prior movies.
Anderson and MGM then discussed the possibility to use the treatment for the movie.
Stallone completed his Rocky IV script and the movie was subsequently released. Thus,
Anderson filed an action for copyright infringement, unfair competition, unjust enrichment,
as well as breach of confidence.
The lower court dismissed all the actions of Anderson. Among others, the court ruled that
his work is not copyrightable considering it is an unauthorized derivative work of Stallone’s
work and thus not protected by copyright.
The Rocky character is copyrightable work or not.
Test to determine whether a character is copyrightable or not:
1. Copyright protection is granted to a character if it is developed with enough specificity
to constitute protectable expression.
2. A character could not be granted copyright protection unless it "constituted the story
being told".
Applying the test, the Court concluded that Rocky characters are copyrightable:
The Rocky characters are one of the most highly delineated group of characters in
modern American cinema. The physical and emotional characteristics of the characters were
set forth in tremendous detail in the three Rocky movies before Anderson appropriated the
characters for his treatment. The interrelationships and development of Rocky, Adrian,
Apollo Creed, Clubber Lang, and Paulie are central to all three movies. Rocky Balboa is such
a highly delineated character that his name is the title of all four of the Rocky movies and
his character has become identified with specific character traits ranging from his speaking
mannerisms to his physical characteristics.
As to the second test, the Rocky characters were so highly developed and central
to the three movies made before Anderson's treatment that they "constituted the story being
told". All three Rocky movies focused on the development and relationships of the various
characters. The movies did not revolve around intricate plots or story lines. Instead, the
focus of these movies was the development of the Rocky characters.
The treatment of Anderson is not protected under copyright law.
Anderson’s work is an unauthorized derivative work not protected by copyright. It is
uncontroverted that the characters were lifted lock, stock, and barrel from the prior Rocky
movies. Anderson retained the names, relationships and built on the experiences of these
characters from the three prior Rocky movies. The subject matter of copyright as specified
by section 102 includes compilations and derivative works, but protection for a work
employing preexisting material in which copyright subsists does not extend to any part of
the work in which the material has been used unlawfully
As for the plot, the court concluded that Rocky IV is not substantially similar to Anderson's
treatment.
Microstar v. FormGen Inc., 154 F.3d 1107 (9th Cir. 1998)
FormGen made, distributed and own the rights to Duke Nukem 3D (DN-3D) Players explore
a futuristic city infested with aliens and other hazards. The basic game comes with 29 levels,
each with a different combination of scenery, aliens, and other challenges. The game also
includes a “Build Editor,” a utility that enables players to create their own levels. With
FormGen’s encouragement, players frequently post levels they have created on the Internet
where others can download them.
MicroStar, a computer software distributor, did just that: it downloaded 300 user-created
levels and stamped them onto a CD, which it then sold commercially as Nuke It (NI). NI is
packaged in a box decorated with numerous ‘screen shots,’ pictures of what the new levels
look like when played.
A derivative work is a work based upon one or more preexisting works in which another
work may be recast, transformed, or adapted. In addition, "[a] work will be considered a
derivative work only if it would be considered an infringing work of the material which it
has derived from a preexisting work had been taken without the consent of a copyright
proprietor of such preexisting work." Also, a derivative work must exist in a ‘concrete or
permanent form,’ and must substantially incorporate protected material from the
preexisting work.
To prove infringement, FormGen must show that DN-3D and NI’s audiovisual displays are
substantially similar in both ideas and expression.
Similarity of ideas may be shown by comparing the objective details of the works: plot, theme,
dialogue, mood, setting, characters, etc.
Similarity of expression focuses on the respondent of the ordinary reasonable person, and
considers the total concept and feel of the works.
In the present case, since the audiovisual displays generated when the player chooses the
NI levels come entirely out of DN-3D's source art library, FormGen will doubtlessly succeed.
Also, the audiovisual displays assume a concrete or permanent form in the MAP files of NI.
Hence, such MAP files are considered as derivative works.
Also, the work that Micro Star infringes is the DN-3D story itself – a beefy commando type
named Duke who wanders aroud post-apocalypse Los Angeles, shooting Pig Cops with a
gun, lobbing hand grenades, searching for medkits and steroids, among others. A copyright
owner holds the right to create sequels, and the stories told in the NI MAP files are surely
sequels, telling new tales of Duke's fabulous adventures. A book about Duke Nukem would
infringe for the same reason, even if it contained no pictures.
Suntrust Bank v. Houghton Mifflin Co., 286 F.3d 1257 (11th Cir. 2001)
A person under the Fair-Use and Dichotomy Doctrines may critique another persons writing
and publish that writing without violating any copyright laws.
Houghton Mifflin has rights to a book called The Wind Done Gone (TWDG), a critique of
Gone with the Wind’s (GWTW) depiction of slavery and Civil-War era American South. Gone
with the Wind is one of the worlds best selling books, and SunTrust Bank is the trustee of
the Michelle Trust that holds the copyrights to that book. The author of TWDG, Alice
Randall, in her critique of the book used several characters, plots, and major scenes in the
first half of her book. SunTrust first asked Houghton to refrain from publication and they
refused. So SunTrust filed a copyright action claiming the book violated the Lanham act
and also sought a preliminary injunction to stop the book from publication.
pg. 21
The United States Constitution copyright clause is made for the promotion of learning,
protection of the public domain and for exclusive rights of authors. Originally an author only
had copyright protection against published works, then that changed to works that were
fixed in any tangible medium but also created the fair-use doctrine. The purpose was to
promote authors to share their ideas to the public, and for those books to remain public once
copyrights extinguished, and to encourage creativity of authors. The drafters had a fine
balance between copyrights and freedom of speech. To promote that balance the doctrine of
dichotomy and fair use where derived. Dichotomy states a person’s copyright only extends to
the expression of an idea not the idea itself. Therefore the public may freely discuss an idea
but through his or her original expression. The fair-use doctrine promotes freedom of speech
by allowing criticism, comment, news reporting, teaching and research on another persons
work and to publish those ideas. In order for SunTrust to prevail they would have to show
they have proper copyrights and that the book used original elements from the book they
have those rights to. It is not disputed that SunTrust held copyrights. However the issue is
whether the book used original elements. In order to use the fair use exception to copyright
laws the court discusses; the purpose of and characters of a book, the nature of the book, the
amount and substantiality of the portion of the book used and the effect on the market value
of the original. The court found that this parody on the book was appropriate and did qualify
for the fair-use exception.
3. Rights of Publicity Further, the Court held that the law protects a celebrity’s sole right to exploit celebrity
Wendt v. Host Int’l, Inc., 125 F.3d 806, 811 (9th Cir. 1997)
George Wendt and John Ratzenberger (plaintiffs), actors in the TV show Cheers, brought
suit against Host International and Paramount Picture Corporation (defendants). Host
created robotic figures that the actors claimed were based on their likenesses, and placed
them in airport bars that were modeled on the Cheers set. The actors sued based on
California’s statutory and common law rights of publicity, and for unfair competition in
violation of the federal Lanham Act. The district court dismissed the claims after it
compared photographs of the actors with photographs of the robots and determined that the
robots did not resemble the actors. The Ninth Circuit reversed, holding that the trier of fact
must compare the actual robots with the actual actors. The district court then granted
summary judgment for the defendants a second time after the judge visually inspected the
robots. The actors appealed again.
Right to Publicity Rights – Violated. The degree to which these robots resemble, caricature,
or bear an impressionistic resemblance to appellants is therefore clearly material to a claim
of violation of Cal. Civ. Code ß 3344. Hence, Summary judgment would have been
appropriate upon remand only if no genuine issues of material fact concerning that degree
of resemblance were raised by appellants. California Civil Code ß 3344 provides in relevant
part: “any person who knowingly uses another's name, voice, signature, photograph, or
likeness, in any manner, . . . for purposes of advertising or selling, . . . without such person's
prior consent . . . shall be liable for any damages sustained by the person or persons injured
as a result thereof. “
Right to Publicity - means in essence that the reaction of the public to name and likeness,
which may be fortuitous or which may be managed and planned, endows the name and
likeness of the person involved with commercially exploitable opportunities. The protection
of name and likeness from unwarranted intrusion or exploitation is the heart of the law of
privacy.
White v. Samsung Elecs. Am., Inc., 971 F.2d 1395 (9th Cir. 1992)
Samsung Electronics America, Inc. (Defendant) ran an advertisement that clearly indicated
that Vanna White (Plaintiff) of the television game show “Wheel of Fortune” had been the
basis for the images. Plaintiff’s likeness, however, was not used in the advertisement.
Plaintiff sued, alleging violations of state statutory and common law right to publicity and
the federal Lanham Act. The district court dismissed and White (Plaintiff) appealed.
A person’s right of publicity may be usurped even if the offending use did not incorporate
that person’s likeness.
The Court stated that the common law rights of publicity cause of action can be pleaded if
all the requirements met as;
1) Defendants use of plaintiff’s identity, 2) the appropriation of plaintiff’s name or likeness to
defendant’s advantage, commercially or otherwise, 3) Lack of consent; and 4) resulting
injury.
In this case, plaintiff failed to satisfy the second prong reasoning that defendants had not
appropriated White’s “name or likeness” with their robot ad. Although the female-shaped
robot was wearing a long gown, blond wig and large jewelry resembling Vanna White’s
identity at times, but so do many other women. Furthermore, the robot was dressed as
Vanna White while turning a block letter on a game-board. Even so, this could be similar
to any Scrabble playing women.
However, the Court stated that the robot standing next to the Wheel that looked like the
Wheel of Fortune game show set and enforced Vanna White’s claim of being depicted in the
ad. Because Vanna White was the only one who dressed like the robot, turned letters, and
did this on the Wheel of Fortune game show, it was more persuasive that the defendants
were profiting from Vanna White’s publicity. In addition to this, defendants themselves
referred to their ad as the “Vanna White” ad. Therefore, it was obvious that the defendants
used the celebrity identity without her consent.
identity value regardless of the means of achieving the fame out of rare ability or dump luck,
or a combination of both. Therefore, the Court declined defendants’ request to permit the
evisceration of the common law right of publicity. Because the plaintiff alleged facts
establishing that the defendants had appropriated her identity, the Court ruled in favor of
plaintiff’s claim of common law right of publicity.
4. Databases
Selection, Arrangement, and Utility
Bellsouth Advertising & Publishing Corp. v. Donnelley Information Publishing
999 F.2d 1436 (11th Cir. 1993) (en banc), cert. denied, 510 U.S. 1101 (1994)
A compiler's selection, arrangement and coordination, if original, are the only protectable
elements of a factual compilation.
Three requirements for a compilation to qualify for copyright protection:
(Feist Publications, Inc. v. Rural Tel. Serv. Co)
(1) the collection and assembly of preexisting material, facts, or data;
(2) the selection, coordination, or arrangement of those materials; and
(3) the creation, by virtue of the particular selection, coordination, or arrangement, of an
'original' work of authorship.
BAPCO arranged its directory in an alphabetized list of business types, with individual
businesses listed in alphabetical order under the applicable headings. BAPCO’s
arrangement and coordination is ‘‘entirely typical’’ for a business directory. With respect to
business telephone directories, such an arrangement ‘‘is not only unoriginal, it is practically
inevitable.’’
Donnelley’s acts of preparing its own competitive directory by substantially relying on the
information copied from the BAPCO directory does not constitute copyright infringement.
By copying the name, address, telephone number, business type, and unit of advertisement
purchased for each listing in the BAPCO directory, Donnelley copied no original element of
selection, coordination or arrangement; Donnelley thus was entitled to summary judgment
on BAPCO's claim of copyright infringement.
pg. 22

CCC Information Services, Inc. v. Maclean Hunter Market Reports, Inc
44 F.3d 61 (2d Cir. 1994), cert. denied, 516 U.S. 817 (1995)
Maclean Hunter Market Reports, Inc. (Maclean) (defendant) published a used-car valuation
compilation entitled Automobile Red Book – Official Used Car Valuations (the Red Book).
The Red Book was published in hard copy eight times a year, with four different versions
available based on location in the United States. Each edition used factors weighed by the
Maclean editors using independent judgment, such as year, mileage, and location, to predict
prices for specific model years of featured vehicles in the coming six weeks. CCC Information
Services, Inc. (CCC) (plaintiff) appropriated the information in the Red Book to create a
computer database that used information from the Red Book and another similar
compilation, the Blue Book, to provide vehicle valuation to its subscribers. CCC brought an
action for declaratory judgment that it did not infringe on a copyright held by Maclean, and
Maclean submitted a counterclaim alleging that infringement had occurred. The district
court granted summary judgment in favor of CCC. Maclean appealed.
The Red Book manifest originality so as to be protected by the copyright laws
Maclean's evidence demonstrated without rebuttal that its valuations were neither reports
of historical prices nor mechanical derivations of historical prices or other data. Rather, they
represented predictions by the Red Book editors of future prices estimated to cover specified
geographic regions. According to Maclean's evidence, these predictions were based not only
on a multitude of data sources, but also on professional judgment and expertise. The
testimony of one of Maclean's deposition witnesses indicated that fifteen considerations are
weighed; among the considerations, for example, is a prediction as to how traditional
competitor vehicles, as defined by Maclean, will fare against one another in the marketplace
in the coming period. The valuations themselves are original creations of Maclean.
The Court held that the selection and arrangement of data in the Red Book displayed amply
sufficient originality to pass the low threshold requirement to earn copyright protection. This
originality was expressed, for example, in Maclean's division of the national used car market
into several regions, with independent predicted valuations for each region depending on
conditions there found. A car model does not command the same value throughout a large
geographic sector of the United States; used car values are responsive to local conditions
and vary from place to place. A 1989 Dodge Caravan will not command the same price in
San Diego as in Seattle. In furnishing a single number to cover vast regions that
undoubtedly contain innumerable variations, the Red Book expresses a loose judgment that
values are likely to group together with greater consistency within a defined region than
without. The number produced is necessarily both approximate and original. Several other
aspects of the Red Book listings also embody sufficient originality to pass Feist's low
threshold. These include: (1) the selection and manner of presentation of optional features
for inclusion; (2) the adjustment for mileage by 5,000 mile increments (as opposed to using
some other breakpoint and interval); (3) the use of the abstract concept of the "average"
vehicle in each category as the subject of the valuation; and (4) the selection of the number
of years' models to be included in the compilation.
What Is a "Fact"? Council of March 11, 1996 on the Legal Protection of Databases,
CDN Inc. v. Kapes, 197 F.3d 1256 (19th Cir. 1999)
Kenneth Kapes operates a coin business, Western Reserve Numismatics, in Ohio. In
response to many inquiries he received regarding the price of coins, Kapes developed ‘‘The
Fair Market Coin Pricer,’’ which listed on his internet web page the retail prices of many
coins. In order to generate the prices he listed, Kapes used a computer program he developed
to create retail prices from wholesale prices. The exact process is unclear, but Kapes
acknowledges using appellee CDN, Inc.’s wholesale price lists.
CDN publishes the Coin Dealer Newsletter, a weekly report of whDiscoverable facts, like
ideas, are not copyrightable. But compilations of facts are copyrightable even where the
underlying facts are not. The distinction between facts and non-facts, and between discovery
and creation, lies at the heart of this case. The essential ingredient present in creations, but
absent in facts, is originality, "the sine qua non of copyright." Id. at 345. Subject matter
created by and original to the author merits copyright protection. Items not original to the
author, i.e., not the product of his creativity, are facts and not copyrightable the prices in
CDN's guides are not facts, they are "wholly the product of [CDN's] creativity. The evidence
indicates that the plaintiff uses its considerable expertise and judgment to determine how
a multitude of variable factors impact upon available bid and ask price data. And it is this
creative process which ultimately gives rise to the Plaintiff's `best guess' as to what the
current `bid' and `ask' prices should be. As such, the Court finds that these prices were
created, not discovered."
Matthew Bender & Co. v. West Publishing Co
158 F.3d 693 (2d. Cir. 1998), cert. denied, 526 U.S. 1154 (1999)
West Publishing Company and West Publishing Corporation (West) (defendants) published
printed compilations of judicial opinions, the volume and page number of which are used as
a standard for citation. Matthew Bender & Company, Incorporated (Bender) (plaintiff) and
HyperLaw, Incorporated (HyperLaw) (plaintiff) produced electronic compilations of judicial
opinions on CD-ROMs. Both Bender and HyperLaw use star pagination within case text to
show what the page number would be in West’s printed edition. West’s compilations do not
include all the judicial opinions available in the plaintiffs’ electronic compilations. The
plaintiffs filed for declaratory judgment that use of the star pagination to reference West’s
citation information did not constitute a copyright infringement. The district court granted
summary judgment for Bender and partial summary judgment for HyperLaw. West
appealed.
It is true that neither novelty nor invention is a requisite for copyright protection, but
minimal creativity is required. Aside from its syllabi, headnotes and key numbers - none of
which HyperLaw proposes to copy - West makes four different types of changes to judicial
opinions that it claimed at trial are copyrightable: (i) rearrangement of information
specifying the parties, court, and date of decision; (ii) addition of certain information
concerning counsel; (iii) annotation to reflect subsequent procedural developments such as
amendments and denials of rehearing; and (iv) editing of parallel and alternate citations to
cases cited in the opinions in order to redact ephemeral and obscure citations and to add
standard permanent citations (including West reporters). All of West's alterations to judicial
opinions involve the addition and arrangement of facts, or the rearrangement of data
already included in the opinions, and therefore any creativity in these elements of West's
case reports lies in West's selection and arrangement of this information. In light of accepted
legal conventions and other external constraining factors, West's choices on selection and
arrangement can reasonably be viewed as obvious, typical, and lacking even minimal
creativity. Therefore, we cannot conclude that the district court clearly erred in finding that
those elements that HyperLaw seeks to copy from West's case reports are not copyrightable,
and affirm.
EU Database Directive, Directive 96/9/EC of the European Parliament and of the
1996 O.J. (L 77) 20
Jane C. Ginsburg, No "Sweat"? Copyright and Other Protection of Works of
Information after Feist v. Rural Telephone, 92 Colum. L. Rev. 338
J.H. Reichman & Pamela Samuelson, Intellectual Property Rights in Data?,
50 Vand. L. Rev. 51, 144-46 (1997)
pg. 23
H. Works that violate the public order afford either information and instruction, or pleasure, in the form of literary enjoyment”
Art. 17 of the Berne Convention
Possibility of Control of Circulation, Presentation and Exhibition of Works
The provisions of this Convention cannot in any way affect the right of the Government of
each country of the Union to permit, to control, or to prohibit, by legislation or regulation,
the circulation, presentation, or exhibition of any work or production in regard to which the
competent authority may find it necessary to exercise that right.
Attorney General v. Guardian Newspapers Ltd., [1990] A.C. 109 (U.K., House of
Lords)
From 1955 to 1976 Peter Wright was employed in a senior capacity by the counter-espionage
branch of the British Security Service known as M.I.5. In that capacity he acquired
knowledge of a great many matters of prime importance to the security of the United
Kingdom. Following his retirement from the service he went to live in Australia and later
formed the intention of writing and publishing a book of memoirs describing his experiences
in the service. The Attorney-General in right of the Crown, learning of the intended
publication of the book, instituted an injunction to restrain the publication in Australia or
alternatively an account of profits. The UK Government may censor Spycatcher on the
ground that the work violates public order The work of a member of M.I.5. and the
information which he acquires in the course of that work must necessarily be secret and
confidential and be kept secret and confidential by him. There is no room for discrimination
between secrets of greater or lesser importance, nor any room for close examination of the
precise manner in which revelation of any particular matter may prejudice the national
interest. It is common ground that neither the defence of prior publication nor the so called
"iniquity" defence would have availed Mr. Wright had he sought to publish his book in
England.
I. Literary works afforded the extraordinary protection of copyright. Plaintiff cannot contend that each of his
Short phrases There is nothing concrete which distinguishes his particular expression of his ideas from
Exxon Corp. v. Exxon Insurance Consultants Ltd,
[1982] Ch. 119 (U.K.: High Court and Court of Appeal)
Exxon Corporation initially was “Standard Oil Co., New Jersey” until it changed its name
to “Exxon Corporation”. The name was registered as a trade mark.
“Esso Petroleum Co. Ltd” or “Esso” a producing, transporting, refining and marketing of
petroleum products in the UK.
Third and Fourth plaintiffs, incorporated in 1969 and 1973m carrying on business with the
names of Exxon Ltd. and Exxon International Ltd. Plaintiffs claim that Exxon is an original
literary work falling within the provisions of Section 2(1) of the Copyright Act of 1956 and
that the first plaintiff is the owner of the copyright therein. This includes the licensees of
the name used by the second, third and fourth plaintiffs. Defendants are a company formed
in 1977 and adopted the word “Exxon” in its corporate name. Plaintiff claims that they are
using it without any license or consent from them, a violation of their copyright. Plaintiffs’
claims that it fully created the word and does not exist prior to its creation in the English
language. They claim that there is no limit in protected original literary work which can be,
and has been, written down for the first time; any combination of letters thought out and
written down, any tangible product of intellectual endeavor. The word “Exxon” is not
“original literary work” Citing case of Lord Justice Davey, “…a literary work is intended to
Applying this definition to the word “Exxon”, the Court finds that the word would not afford
any information or instruction, nor it would provide pleasure through literary enjoyment by
itself. Exxon is not a literary work under the 1956 Act and there can be no claim for copyright
infringement. Additionally, the plaintiffs are already given protection under the Trade
Marks Act.
Speech and interviews
Falwell v. Penthouse International Ltd, 215 U.S.P.Q. 975 (U.S.: District Court, West
Virginia, 1981)
Falwelll is an evangelical fundamentalist minister who broadcasts his weekly sermons
heard nationwide. His activities are funded largely by contributions received from viewers
and listeners.Penthouse International, Ltd. and Curtis Circulation Company are
corporations organized under the laws of a state other than the State of Virginia, and
defendants Andrew Duncan and Sasthi Brata work as freelance journalists.
Falwell’s complaint arises as a result of interviews conducted with Falwell by Duncan and
Brata and published by Penthouse International and Curtis Circulation Co.
The interviews appeared in Penthouse Magazine, along with Falwell’s name and picture. It
was learned that Brata and Duncan sold the transcript of the interview to defendant
Penthouse.
He alleges that he had specifically refused his interview to be published in a magazine he
considered obscene. Plaintiff now claims that the interview appeared without his consent
and contrary to specific conditions given orally to defendants Brata and Duncan at the time
of the interviews.
Falwell’s spoken words are not copyrightable, he cannot sue defendants for the publication
of his words. Falwell’s claim of copyright presupposes that every utterance he makes is a
valuable property right. If this were true, the courts would be inundated with claims from
celebrities and public figures all of whom may argue that their expressions should also be
responses in the published interview setting forth his ideas and opinions is a product of his
intellectual labors which should be recognized as a literary or even intellectual creation.
the ordinary. Although it is sometimes difficult to differentiate, the expression of ideas is a
separate and distinct concept from that of the ideas themselves. However different or unique
plaintiff's thoughts or opinions may be, the expression of those opinions or thoughts is too
general and abstract to rise to the level of a literary or intellectual creation that may enjoy
the protection of copyright.
Bank forms
Bibbero Systems Inc. v. Colwell Systems, Inc.
893 F.2d 1104 (U.S. Court of Appeals, 9th Cir., 1989)
“Blank forms which do not convey information are not copyrightable”
However, “Although blank forms are generally not copyrightable, there is a well-established
exception where text is integrated with blank forms. Where a work consists of text
integrated with blank forms, the forms have explanatory force because of the accompanying
copyrightable textual material”
Bibbero designs and markets blank forms known as "superbills" which doctors use to obtain
reimbursement from insurance companies. Each superbill contains simple instructions to
pg. 24
the patient for filing insurance claims; boxes for patient information; simple clauses
assigning insurance benefits to the doctor and authorizing release of patient information;
and two lengthy checklists for the doctor to indicate the diagnosis and any services
performed, as well as the applicable fee.
Bibbero includes approximately 25 or 30 sample superbills in its catalog. Bibbero claims a
copyright in each of these forms, as well as in the forms designed by its customers.
In its fall 1987 catalog, Colwell featured a superbill which was nearly identical to Bibbero's
superbill, except for slightly different typefaces and shading, as well as a different sample
doctor's name and address.
Upon seeing Colwell’s superbill, Bibbero filed for registration of copyright, upon issuance of
copyright certificate, Bibbero demanded that Colwell cease to infringe upond Bibbero’s
copyright.
Bibbero’s blank “Superbill” is not Copyrightable.
General rule(blank form not copyrightable) shall apply. The purpose of Bibbero's superbill
is to record information. Until the superbill is filled out, it conveys no information about the
patient, the patient's diagnosis, or the patient's treatment. Doctors do not look to Bibbero's
superbill in diagnosing or treating patients. The superbill is simply a blank form which gives
doctors a convenient method for recording services performed. The fact that there is a great
deal of printing on the face of the form--because there are many possible diagnoses and
treatments--does not make the form any less blank.
“Text with forms" exception to the blank forms rule is inapplicable here. It is true, as Bibbero
notes, that the superbill includes some simple instructions to the patient on how to file an
insurance claim using the form. These instructions are far too simple to be copyrightable as
text in and of themselves.
J. Acquiring and Transferring Copyright Although no copyright should subsist in any work of the government, any
1. Deposit and Notice the time of his employment but which does not form part of his regularly prescribed official
Section 191, 192, IPC
SECTION 191. Registration and Deposit with National Library and the Supreme
Court Library. — After the first public dissemination of performance by authority of the
copyright owner of a work falling under Subsections 172.1, 172.2 and 172.3 of this Act, there
shall, for the purpose of completing the records of the National Library and the Supreme
Court Library, within three (3) weeks, be registered and deposited with it, by personal
delivery or by registered mail, two (2) complete copies or reproductions of the work in such
form as the directors of said libraries may prescribe. A certificate of deposit shall be issued
for which the prescribed fee shall be collected and the copyright owner shall be exempt from
making additional deposit of the works with the National Library and the Supreme Court
Library under other laws. If, within three (3) weeks after receipt by the copyright owner of
a written demand from the directors for such deposit, the required copies or reproductions
are not delivered and the fee is not paid, the copyright owner shall be liable to pay a fine
equivalent to the required fee per month of delay and to pay to the National Library and the
Supreme Court Library the amount of the retail price of the best edition of the work. Only
the above mentioned classes of work shall be accepted for deposit by the National Library
and the Supreme Court Library. (Sec. 26, P.D. No. 49a)
SECTION 192. Notice of Copyright. — Each copy of a work published or offered for sale
may contain a notice bearing the name of the copyright owner, and the year of its first
publication, and, in copies produced after the creator's death, the year of such death. (Sec.
27, P.D. No. 49a)
Section 227-229, IPC
SECTION 227. Ownership of Deposit and Instruments. — All copies deposited and
instruments in writing filed with the National Library and the Supreme Court Library in
accordance with the provisions of this Act shall become the property of the Government.
(Sec. 60, P.D. No. 49)
SECTION 228. Public Records. — The section or division of the National Library and the
Supreme Court Library charged with receiving copies and instruments deposited and with
keeping records required under this Act and everything in it shall be opened to public
inspection. The Director of the National Library is empowered to issue such safeguards and
regulations as may be necessary to implement this Section and other provisions of this Act.
(Sec. 61, P.D. No. 49)
SECTION 229. Copyright Division; Fees. — The Copyright Section of the National
Library shall be classified as a Division upon the effectivity of this Act. The National Library
shall have the power to collect, for the discharge of its services under this Act, such fees as
may be promulgated by it from time to time subject to the approval of the Department Head.
(Sec. 62, P.D. 49a)
Rule 5, Copyright Safeguards and Regulations
RULE 5 Registration and Deposit of Work
SECTION 1. Who May Apply. — The owner or assignee of the copyright or his duly
authorized agent or representative, may apply for a certificate of registration and deposit of
the work: Provided, That if an author could not claim the benefit of copyright protection, his
assignee or agent cannot claim it. If the applicant is not the owner or author or assignee of
the work, he shall be required to submit his authority to apply.
An assignee is a person to whom an author may assign copyright in whole or in
part. The assignee is entitled to all the rights and remedies which the assignor has with
respect to the copyright.
employee may claim it by submitting for registration any work that has been created during
duties.
SECTION 2. Identification of Author or Authors. — An application for copyright certificate
shall identify the author or authors, as far as practicable, without prejudice to the provisions
of Sections 171.2 and 179 of the IPC.
SECTION 3. Non-Resident Applicant. — A non-resident applicant shall appoint a resident
agent, by special power of attorney (SPA), who shall be authorized to pursue the copyright
application for his/her/its behalf with TNL and/or the SCL and to receive service of notice
or other legal process relating to the application and the copyright. In the event of death,
absence or incapacity of the resident agent, the applicant shall appoint a new resident agent,
by SPA with revocation of the prior SPA, and file notice and a copy thereof with TNL and/or
the SCL.
SECTION 4. Works That Shall Be Registered and Deposited. — Two (2) copies or
reproductions of the following classes of works, and transfers and assignments related
thereto, shall be registered and deposited with TNL Copyright Division and another two (2)
copies with the SCL:
• Books, pamphlets, articles and other writings;
• Periodicals and newspapers;
• Lectures, sermons, addresses, dissertations prepared for oral delivery whether or
not reduced in writing or other material form;
• Letters;
• Musical compositions with or without words.
SECTION 5. Replicas and Pictures. — For practical purposes, only replicas and pictures of
pg. 25
the following classes of works, shall be registered and deposited with TNL Copyright
Division:
• Works of drawing, painting, architecture, sculpture, engraving, lithography or
other works of art, models or designs for works of art;
• Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art;
• Illustrations, maps, plans, sketches, charts and three-dimensional works relative
to geography, topography, architecture or science;
• Drawings or plastic works of a scientific or technical character.
SECTION 6. Works that May be Registered and Deposited. — The following works may be
registered and deposited:
• Dramatic or dramatic-musical compositions, choreographic works or
entertainment in shows;
• Photographic works including works produced by a process analogous to
photography, lantern slides;
• Audiovisual works and cinematographic works and works produced by a process
analogous to cinematography or any process for making audio-visual recordings;
• Pictorial illustrations and advertisements;
• Computer programs;
• Other literary, scholarly, scientific and artistic works;
• Sound recordings;
• Broadcast recordings.
SECTION 7. When to Register and Deposit. — The registration and deposit of copies of
reproductions of the work or works, using the prescribed form, shall be made personally or
by registered mail within three (3) weeks after the first public dissemination or publication
as authorized by the author.
What Is Publication? SECTION 181. Copyright and Material Object. — The copyright is distinct from the
Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 194 F.3d 1211 (11th Cir. 1999)
King gave a famous speech that was widely reported in the newspapers and broadcast on
radio and television. Copies of the speech were given to members of the press.
One month after he gave the speech, King secured a copyright. He immediately sued to
enjoin unauthorized sale of recordings of the speech.
Twenty years later, a TV station, CBS, made a documentary about King and used the video
they recorded of King's speech. CBS, however, did not seek the Estate's permission to use
the Speech in this manner and refused to pay royalties to the Estate.
King's estate sued for copyright infringement. CBS argued that if you publish a work
without filing for a copyright first, you lose protection of that work. Since King waited a
month to file, he missed his chance.
Dr. King's delivery of the Speech did not constitute as a general publication of speech so as
to place it in a public domain.
The Court noted that under the Copyright Act of 1909, an author received a common-law
copyright protection at the time of creation. However, when general publication occurred,
the author forfeited his work to the public domain unless he converted his common-law
copyright into a Federal statutory copyright.
The term general publication was defined as "when a work was made available to
members of the public at large without regard to their identity or what they intended to do
with the work."
As opposed to limited publication, where you just pass it around to a few friends.
The Court found that delivering the speech was not a general publication.
The Court found that a general publication only occurs if (1) tangible copies are
distributed, or (2) if the work is exhibited in a manner to permit unrestricted
copying. The Court looked to case law and found that distribution to the news media, as
opposed to the general public, is only a limited publication.
In addition, a public performance of a work (no matter how broad the audience) does not
constitute publication. This conclusion is not altered by the fact that the Speech was
broadcast live to a broad radio and television audience and was the subject of extensive
contemporaneous news coverage.
"Publication" is the distribution of copies or phonorecords of a work to the public by sale or
other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies
or phonorecords to a group of persons for purposes of further distribution, public
performance, or public display, constitutes publication.
2. Transfer of Copyright
Sections 180, 181, 182, 183, IPC (as amended by R.A. No. 10372)
SECTION 180. Rights of Assignee. —
180.1. The copyright may be assigned in whole or in part. Within the scope of the
assignment, the assignee is entitled to all the rights and remedies which the assignor had
with respect to the copyright.
180.2. The copyright is not deemed assigned inter vivos in whole or in part unless
there is a written indication of such intention.
180.3. The submission of a literary, photographic or artistic work to a newspaper,
magazine or periodical for publication shall constitute only a license to make a single
publication unless a greater right is expressly granted. If two (2) or more persons jointly
own a copyright or any part thereof, neither of the owners shall be entitled to grant licenses
without the prior written consent of the other owner or owners. (Sec. 15, P.D. No. 49a)
property in the material object subject to it. Consequently, the transfer or assignment of the
copyright shall not itself constitute a transfer of the material object. Nor shall a transfer or
assignment of the sole copy or of one or several copies of the work imply transfer or
assignment of the copyright. (Sec. 16, P.D. No. 49)
SECTION 182. Filing of Assignment or License. — An assignment or exclusive license
may be filed in duplicate with the National Library upon payment of the prescribed fee for
registration in books and records kept for the purpose. Upon recording, a copy of the
instrument shall be returned to the sender with a notation of the fact of record. Notice of
the record shall be published in the IPO Gazette. (Sec. 19, P.D. No. 49a)
SECTION 183. Designation of Society. — The copyright owners or their heirs may
designate a society of artists, writers or composers to enforce their economic rights and
moral rights on their behalf. (Sec. 32, P.D. No. 49a)
Section 4.2 in relation to Sections 87 and 88, IPC
Section 92, IPC
SECTION 92. Non-Registration with the Documentation, Information and
Technology Transfer Bureau. — Technology transfer arrangements that conform with
the provisions of Sections 86 and 87 need not be registered with the Documentation,
Information and Technology Transfer Bureau. Non- conformance with any of the provisions
of Sections 87 and 88, however, shall automatically render the technology transfer
arrangement unenforceable, unless said technology transfer arrangement is approved and
registered with the Documentation, Information and Technology Transfer Bureau under the
provisions of Section 91 on exceptional cases. (n)
pg. 26
 Section 237, IPC
SECTION 237. Notification on Berne Appendix. — The Philippines shall by proper
compliance with the requirements set forth under the Appendix of the Berne Convention
(Paris Act, 1971) avail itself of the special provisions regarding developing countries,
including provisions for licenses grantable by competent authority under the Appendix. (n)
There is an implied license on the part of AMS.
(1) a person (the licensee) requests the creation of a work,
(2) the creator (the licensor) makes that particular work and delivers it to the licensee who
requested it; and
(3) the licensor intends that the licensee-requestor copy and distribute his work.”

Gagnon intended that AMS use, retain, and modify the programs therefore rendering that
there was a transfer of copyright ownership via the NDA.
Asset Marketing Systems, Inc. v. Gagnon, 542 F.3d 748 (9th Cir. 2008), cert. denied,
129 S. Ct. 2442 (2009) There was an intention of transferring the copyright ownership of Gagnon to AMS, because:
AMS Requested the Creation of the Programs. Gagnon argues that AMS never specifically
requested that he create the programs, but “rather relayed its needs to Mr. Gagnon and he
An implied software license is granted when the licensee requests the creation of a work, satisfied them by providing either computer hardware or computer software at his
the licensor creates and delivers the work, and the licensor intends the licensee to copy and discretion.” We find this interpretation of “request” to be strained. Gagnon did not create
distribute the work. the programs on his own initiative and market them to AMS; rather, he created them in
AMS is a field marketing organization offering sales and marketing support to insurance response to AMS’s requests.
marketing entities. Gagnon was an at-will, independent contractor for AMS, hired to assist
with its information technology needs. Gagnon Created the Software for AMS and Delivered It
Gagnon was asked to develop custom software for AMS. Thus, he developed 6 computer Though Gagnon argues that the programs could be converted for use by another company,
programs for AMS. Gagnon admitted that the programs were created specifically for AMS and that AMS paid
AMS and Gagnon entered a Technical Services Agreement, which set forth Gagnon’s fees for the work related to drafting of the programs as well as some related costs. It is, therefore,
and the services to be provided. The services included “Custom Application Programming— undisputed that Gagnon created these programs for AMS.
Consultant will provide Contractor with specific add-on products to enhance Contractor’s
current in-house database application”.
AMS claims that Gagnon signed a Vendor Nondisclosure Agreement (NDA). The NDA would Random House v. Rosetta Books, LLC, 150 F. Supp. 2d 613 (S.D.N.Y. 2001)
have given AMS ownership of all intellectual property developed for AMS by Gagnon.
Gagnon claims that the document is a forgery and that his signature cannot be
Random House (plaintiff) originally signed licensing agreements with a number of authors
authenticated. Gagnon proposed that AMS execute an Outside Vendor Agreement (OVA).
granting Random House the exclusive right to print, publish, and sell the authors’ work in
The OVA included a Proprietary Rights clause which basically provide that Client agrees
book form. At the time these agreements were signed, literary work like that produced by
that information or items produced by Contractor while performing services under this
the authors did not exist in digital or electronic form. Each author, pursuant to his
agreement will be the property of Contractor and will be licensed to Client.
respective licensing agreement, granted Random House the right to his work, but withheld
Consequently, AMS decided to terminate Gagnon’s services. Thus, the parties never
certain rights of distribution (recording rights for the published work, for example).
executed the OVA.
However, in the year 2000, Rosetta (defendant) had begun distributing literary works in an
Gagnon sent a letter to AMS demanding from it $1.75 million so it will have the right to
electronic form known as “ebooks.” Rosetta contracted with several of the authors whose
continue to use the programs and $2M for Gagnon not to sell or disclose the programs to
work was already licensed to Random House in order to obtain the right to distribute the
AMS’ competitors.
authors’ literary work in ebook form. Random House brought a copyright infringement
In a letter, AMS terminated its relationship with Gagnon. According to AMS, a consultant
action to enjoin Rosetta from selling the ebooks.
identified numerous problems with Gagnon’s work. Letter also contains:
“In connection with that separation, you must immediately provide any and all copies of the
Random House does not have exclusive rights to publishing the said works, including the
source code for all software developed by and on behalf of Asset Marketing Systems
rights to publish such as ebooks.
immediately. You are not authorized to utilize that software which we believe is owned and
Relying on "the language of the license contract and basic principles of interpretation, the
all copyrights belong to Asset Marketing Systems. Furthermore, despite your claimed
court found that the most reasonable interpretation of the grant in the contracts at issue to
ownership in that copyright, we believe that Asset Marketing Systems’ trade secrets are
"print, publish and sell the work in book form" does not include the right to publish the work
embedded and utilized throughout that software which would preclude use by you as well.
as an ebook. At the outset, the phrase itself distinguishes between the pure content, i.e. "the
We also demand that you return to us any copies of the SalesLogix software or Asset
work", and the format of display "in book form."
Marketing databases, programs or other materials that may have come into your possession
The separate grant language was used to convey the rights to publish book club editions,
during our relationship.”
reprint editions, abridged forms, and editions in Braille. This language would not have been
Meanwhile, 7 of Gagnon’s 12 employees resigned and were hired by AMS to provide directly
necessary if the phrase "in book form" encompassed all types of books. Additionally, each of
to AMS the same services they previously provided to AMS through Gagnon. Gagnon sent
the authors specifically reserved certain rights for themselves by striking out phrases,
AMS a cease and desist letter, asserting that the use of the programs was unauthorized.
sentences, and paragraphs of the publisher's form contract. This evidenced an intent not to
AMS responded by asserting that Gagnon could not unilaterally stop AMS from continuing
grant the publisher the broadest rights in their works.
to use and update the programs because it had an irrevocable license to use, copy, and
modify the programs based on the course of conduct of the parties over the past 2 ½ years.
The Court concluded that Random House is not the beneficial owner of the right to publish
AMS also asserted that Gagnon could not use the programs because it contained AMS’s
the eight works at issue as ebooks. This is neither a victory for technophiles nor a defeat for
trade secrets.
Luddites. It is merely a determination, relying on neutral principles of contract

pg. 27
interpretation, that because Random House is not likely to succeed on the merits of its K. Limitations on Copyright
copyright infringement claim and cannot demonstrate irreparable harm, its motion for a
preliminary injunction should be denied.
Since the publishing company could not establish a prima facie case of copyright LIMITATIONS ON COPYRIGHT
infringement, it was not likely to succeed on the merits and could not meet the test for 1) Fair use doctrine (Sec. 185) – work for
obtaining a preliminary injunction. (1) Criticism
(2) Comment
(3) News reporting
(4) Teaching (including LIMITED number of copies for classroom)
3. Open source software and creative commons (5) Scholarship
(6) Research & similar purposes
(7) Decompilation
a. Open source licenses, see http://www.fsf.org/ (8) Time-shifting (Betamax case)
à 4 factors: (1) purpose & character of the use (i.e. commission/non-profit); (2)
An open-source license is a type of license for computer software and other products that
allows the source code, blueprint or design to be used, Updates and/or shared under defined nature of copyrighted work; (3) amount & substantiality of portion used; (4)
terms and conditions. This allows end users and commercial companies to review and modify effect of us on potential market value
the source code, blueprint or design for their own customization, curiosity or troubleshooting
2) “Must-carry rule” by NTC – wider access for public for news, info, event,
needs. Open-source licensed software is mostly available free of charge, though this does not
entertainment i.e. thru cable
necessarily have to be the case. Licenses which only permit non-commercial redistribution
3) “Performance for profit”
or modification of the source code for personal use only are generally not considered as open-
4) estoppel – i.e. did not prevent infringement
source licenses. However, open-source licenses may have some restrictions, particularly
5) de minimis
regarding the expression of respect to the origin of software, such as a requirement to
preserve the name of the authors and a copyright statement within the code, or a
requirement to redistribute the licensed software only under the same license (as in a 1. Express limitations under the IPC
copyleft license). One popular set of open-source software licenses are those approved by the
Open Source Initiative (OSI) based on their Open Source Definition (OSD). Sections 176, 171.11, 184, 186, 187, 188, IPC

SECTION 176. Works of the Government. —

b. Creative commons licenses, see http://creativecommons.org/
A Creative Commons (CC) license is one of several public copyright licenses that enable the
free distribution of an otherwise copyrighted work. A CC license is used when an author
wants to give people the right to share, use, and build upon a work that they have created.
CC provides an author flexibility (for example, they might choose to allow only non-
commercial uses of their own work) and protects the people who use or redistribute an
author's work from concerns of copyright infringement as long as they abide by the
conditions that are specified in the license by which the author distributes the work.
176.1. No copyright shall subsist in any work of the Government of the Philippines.
However, prior approval of the government agency or office wherein the work is created
shall be necessary for exploitation of such work for profit. Such agency or office may, among
other things, impose as a condition the payment of royalties. No prior approval or conditions
shall be required for the use for any purpose of statutes, rules and regulations, and speeches,
lectures, sermons, addresses, and dissertations, pronounced, read or rendered in courts of
justice, before administrative agencies, in deliberative assemblies and in meetings of public
character. (Sec. 9, first par., P.D. No. 49)
176.2. The author of speeches, lectures, sermons, addresses, and dissertations mentioned in
the preceding paragraphs shall have the exclusive right of making a collection of his works.
(n)
176.3. Notwithstanding the foregoing provisions, the Government is not precluded from
receiving and holding copyrights transferred to it by assignment, bequest or otherwise; nor
shall publication or republication by the Government in a public document of any work in
which copyright is subsisting be taken to cause any abridgment or annulment of the
copyright or to authorize any use or appropriation of such work without the consent of the
copyright owner. (Sec. 9, third par., P.D. No. 49)

SECTION 171. Definitions. — For the purpose of this Act, the following terms have the
following meaning:
171.11.A "work of the Government of the Philippines" is a work created by an officer or
employee of the Philippine Government or any of its subdivisions and instrumentalities,
including government-owned or controlled corporations as a part of his regularly prescribed
official duties.

pg. 28
SECTION 184. Limitations on Copyright. —
184.1. Notwithstanding the provisions of Chapter V, the following acts shall not constitute
infringement of copyright:
a. The recitation or performance of a work, once it has been lawfully made accessible
to the public, if done privately and free of charge or if made strictly for a charitable
or religious institution or society; (Sec. 10(1), P.D. No. 49)
b. The making of quotations from a published work if they are compatible with fair
use and only to the extent justified for the purpose, including quotations from
newspaper articles and periodicals in the form of press summaries: Provided, That
the source and the name of the author, if appearing on the work, are mentioned;
(Sec. 11, third par., P.D. No. 49)
c. The reproduction or communication to the public by mass media of articles on
current political, social, economic, scientific or religious topic, lectures, addresses
and other works of the same nature, which are delivered in public if such use is
for information purposes and has not been expressly reserved: Provided, That the
source is clearly indicated; (Sec. 11, P.D. No. 49)
d. The reproduction and communication to the public of literary, scientific or artistic
works as part of reports of current events by means of photography,
cinematography or broadcasting to the extent necessary for the purpose; (Sec. 12,
P.D. No. 49)
e. The inclusion of a work in a publication, broadcast, or other communication to the
public, sound recording or film, if such inclusion is made by way of illustration for
teaching purposes and is compatible with fair use: Provided, That the source and
of the name of the author, if appearing in the work, are mentioned;
f. The recording made in schools, universities, or educational institutions of a work
included in a broadcast for the use of such schools, universities or educational
institutions: Provided, That such recording must be deleted within a reasonable
period after they were first broadcast: Provided, further, That such recording may
not be made from audiovisual works which are part of the general cinema
repertoire of feature films except for brief excerpts of the work;
g. The making of ephemeral recordings by a broadcasting organization by means of
its own facilities and for use in its own broadcast; cdt
h. The use made of a work by or under the direction or control of the Government, by
the National Library or by educational, scientific or professional institutions
where such use is in the public interest and is compatible with fair use;
i. The public performance or the communication to the public of a work, in a place
where no admission fee is charged in respect of such public performance or
communication, by a club or institution for charitable or educational purpose only,
whose aim is not profit making, subject to such other limitations as may be
provided in the Regulations; (n)
j. Public display of the original or a copy of the work not made by means of a film,
slide, television image or otherwise on screen or by means of any other device or
process: Provided, That either the work has been published, or, that the original
or the copy displayed has been sold, given away or otherwise transferred to
another person by the author or his successor in title; and
k. Any use made of a work for the purpose of any judicial proceedings or for the giving
of professional advice by a legal practitioner.
184.2. The provisions of this section shall be interpreted in such a way as to allow the work
to be used in a manner which does not conflict with the normal exploitation of the work and
does not unreasonably prejudice the right holder's legitimate interests.
SECTION 186. Work of Architecture. — Copyright in a work of architecture shall include
the right to control the erection of any building which reproduces the whole or a substantial
part of the work either in its original form or in any form recognizably derived from the
original: Provided, That the copyright in any such work shall not include the right to control
the reconstruction or rehabilitation in the same style as the original of a building to which
that copyright relates. (n)
SECTION 187. Reproduction of Published Work. —
187.1. Notwithstanding the provision of Section 177, and subject to the provisions of
Subsection 187.2, the private reproduction of a published work in a single copy, where the
reproduction is made by a natural person exclusively for research and private study, shall
be permitted, without the authorization of the owner of copyright in the work.
187.2. The permission granted under Subsection 187.1 shall not extend to the reproduction
of:
a. A work of architecture in the form of building or other construction;
b. An entire book, or a substantial part thereof, or of a musical work in graphic form by
reprographic means;
c. A compilation of data and other materials;
d. A computer program except as provided in Section 189; and
e. Any work in cases where reproduction would unreasonably conflict
with a normal exploitation of the work or would otherwise unreasonably prejudice
the legitimate interests of the author. (n)
SECTION 188. Reprographic Reproduction by Libraries. —
188.1. Notwithstanding the provisions of Subsection 177.6, any library or archive
whose activities are not for profit may, without the authorization of the author of copyright
owner, make a single copy of the work by reprographic reproduction:
a. Where the work by reason of its fragile character or rarity cannot be lent to user
in its original form;
b. Where the works are isolated articles contained in composite works or brief
portions of other published works and the reproduction is necessary to supply
them, when this is considered expedient, to persons requesting their loan for
purposes of research or study instead of lending the volumes or booklets which
contain them; and
c. Where the making of such a copy is in order to preserve and, if necessary in the
event that it is lost, destroyed or rendered unusable, replace a copy, or to replace,
in the permanent collection of another similar library or archive, a copy which has
been lost, destroyed or rendered unusable and copies are not available with the
publisher.
188.2. Notwithstanding the above provisions, it shall not be permissible to produce
a volume of a work published in several volumes or to produce missing tomes or pages of
magazines or similar works, unless the volume, tome or part is out of stock: Provided, That
every library which, by law, is entitled to receive copies of a printed work, shall be entitled,
when special reasons so require, to reproduce a copy of a published work which is considered
necessary for the collection of the library but which is out of stock. (Sec. 13, P.D. 49a)
Section 189, IPC
SECTION 189. Reproduction of Computer Program. —
189.1. Notwithstanding the provisions of Section 177, the reproduction in one (1)
back-up copy or adaptation of a computer program shall be permitted, without the
authorization of the author of, or other owner of copyright in, a computer program, by the
lawful owner of that computer program: Provided, That the copy or adaptation is necessary
for:
a. The use of the computer program in conjunction with a computer for the purpose,
and to the extent, for which the computer program has been obtained; and
b. Archival purposes, and, for the replacement of the lawfully owned copy of the
computer program in the event that the lawfully obtained copy of the computer
program is lost, destroyed or rendered unusable.
189.2. No copy or adaptation mentioned in this Section shall be used for any purpose
other than the ones determined in this Section, and any such copy or adaptation shall be
pg. 29
destroyed in the event that continued possession of the copy of the computer program ceases
to be lawful.
189.3. This provision shall be without prejudice to the application of Section 185
whenever appropriate. (n)
Section 190, IPC
SECTION 190. Importation for Personal Purposes. —
190.1. Notwithstanding the provision of Subsection 177.6, but subject to the
limitation under the Subsection 185.2, the importation of a copy of a work by an individual
for his personal purposes shall be permitted without the authorization of the author of, or
other owner of copyright in, the work under the following circumstances:
a. When copies of the work are not available in the Philippines and:
a. Not more than one (1) copy at one time is imported for strictly individual use only;
or
b. The importation is by authority of and for the use of the Philippine Government;
or
c. The importation, consisting of not more than three (3) such copies or likenesses in
any one invoice, is not for sale but for the use only of any religious, charitable, or
educational society or institution duly incorporated or registered, or is for the
encouragement of the fine arts, or for any state school, college, university, or free
public library in the Philippines.
b. When such copies form parts of libraries and personal baggage belonging to
persons or families arriving from foreign countries and are not intended for sale:
Provided, That such copies do not exceed three (3).
190.2. Copies imported as allowed by this Section may not lawfully be used in any
way to violate the rights of owner the copyright or annul or limit the protection secured by
this Act, and such unlawful use shall be deemed an infringement and shall be punishable
as such without prejudice to the proprietor's right of action.
190.3. Subject to the approval of the Secretary of Finance, the Commissioner of
Customs is hereby empowered to make rules and regulations for preventing the importation
of articles the importation of which is prohibited under this Section and under treaties and
conventions to which the Philippines may be a party and for seizing and condemning and
disposing of the same in case they are discovered after they have been imported. (Sec. 30,
P.D. No. 49)
Rule 14, Copyright Safeguards and Regulations
Rule 14 Limitations on Copyright
SECTION 1. Public Performance or Communication to the Public of Work by Non-Profit
Institution. — The public performance or the communication to the public of a work, in a
place where no admission fee is charged in respect of such public performance or
communication, by a club or institution for charitable or educational purposes only, whose
aim is not profit-making, shall not constitute infringement of copyright, if:
(a) The works are limited to non-dramatic literary works and non-copyrighted
musical compositions, and do not include audiovisual works or computer
programs;
(b) The clubs or institutions to which this subsection applies are limited to those
organized exclusively for charitable or educational purposes; and if the following
conditions are satisfied:
i. No fee or compensation is paid to any performers, promoters or organizers of
the public performance;
ii. There is no direct or indirect admission charge to the place where the
performance occurs; and
iii. Admission to the performance is restricted to persons who are, and for at
least the preceding thirty days have been, members in good standing of the
club or the institution for whose charitable or education purposes the
performance is being carried out.
SECTION 2. Use in Judicial Proceedings or by Legal Practitioners. — Without prejudice to
other exceptions to protection, the use of copyrighted works as provided in the IPC “for the
giving of professional advise by a legal practitioner” is limited to those uses directly
connected to the rendering of legal advice with respect to such works, or to individuals,
institutions, events or circumstances to which the creation of exploitation of such works are
directly related. This exception does not apply to the exercise of exclusive rights of copyright
owners in legal research materials, legal-related computer software, legal-related online
material, or the other works utilized in the practice of law on a regular basis.
SECTION 3. Uses Compatible with Fair Use. — To determine whether use of a copyrighted
work is “compatible with fair use,” the criteria set forth in Sec. 185 of the IPC shall be
applied.
SECTION 4. Fair Use and Decompilation of Computer Software. — An act of decompilation
of software may qualify for analysis under the fair use provisions if it meets all of the criteria
set out in
the IPC, viz:
a. It consist only of the reproduction of code and translation of the forms of a
computer program;
b. The reproduction and translation are indispensable to obtain information, such
that information can be obtained in no other way than through decompilation;
c. The information is necessary in order to achieve interoperability (i.e.,
interoperability cannot be achieved without obtaining the information and
without using decompilation to obtain it); and
d. The interoperability that is sought is between the decompiled program and an
independently created computer program (i.e., a computer program that was
created prior to and without reference to the decompilation).
If the above criteria are satisfied, then the fair use factors set forth in the IPC can be applied
in order to decide whether or not the decompilation, in the particular circumstances
involved, constitutes a fair use. The fact that a use is decompilation (as defined by the
statutory criteria) creates no presumption that the use is fair.
SECTION 5. Effect on Value of the Work. — The effect of the use upon the value of the
copyrighted work shall also constitute a limitation on fair use of works, particularly
whenever their reproduction will affect their usefulness, reliability, and validity such as
psychological tests and others of similar nature. Reproduction of these works shall,
therefore, need prior authority of the copyright owner.
SECTION 6. Reproduction or Communication to the Public by Mass Media of Articles,
Lecture, etc. — The reproduction or communication to the public by mass media of articles,
such as those publish in newspapers or periodicals on current political, social, economic,
scientific, or religious topics, as well as lectures, addresses, and other works of the same
nature, which are delivered in public, shall not constitute infringement of copyright if such
use is for information purposes and has not been expressly reserved: Provided, that the
source is clearly indicated and that the use of the work should not unreasonably prejudice
the right holder’s legitimate interests.
Filipino Society of Composers v. Benjamin Tan, 148 SCRA 461 (1987)
If the general public has made use of the object sought to be copyrighted within 30 days
prior to the copyright application, the law deems the object to have been donated to the
public domain and can no longer be copyrighted as in the case of the songs at bar.
pg. 30

Philippine Education Co. v. Sotto, 52 Phil. 580
Philippine Education Company, Inc. (PECI, for brevity) is a domestic corporation; it is the
proprietor and publisher of the monthly magazine Philippine Education Magazine
published in the City of Manila.
In December 1927, PECI contracted with Austin Craig for the preparation and publication
of an original article to be written by him concerning Mrs. Jose Rizal, to be published in the
Philippine Education Magazine. Craig then prepared and wrote an original article entitled
“The True Story of Mrs. Rizal” and delivered it to PECI which paid him for it. The same was
printed and published in the December 1927 issue then put in market for sale. In every
issue, it gave a notice that all rights thereto were reserved.
Later on, Sotto, the proprietor and publisher of a weekly newspaper known as The
Independent and Alindada, the editor, allegedly appropriated, copied and published the
article unlawfully and without the knowledge and consent of PECI in The Independent of
December 24th and 31st, 1927, without citing the PECI as source.
Upon discovery, PECI requested thru a letter that on the former’s next issue, they cite it as
the source of the article in some prominent place. However, notwithstanding the letter, the
publication of the article was continued.
Alindada advised PECI in substance that it had not registered such right under the
Copyright Law. Consequently, PECI sued Sotto and Alindada for damages.
Sotto and Alindada demurred to the evidence and alleged as a special defense that PECI is
not the owner of the article because it had not registered it in its name in the proper registry
under Act 3134 and the regulation concerning the registration of intellectual property made
by the Chief of the Philippine Library and Museum, also, they had published the same
without any intention to prejudice anybody in his property right but in good faith. Trial
court ruled in favor of PECI, hence, the present appeal.
The article may not be reproduced considering that PECI has not registered the same in its
name and merely served a notice that it reserved the rights to publication
The present case calls for the interpretation of Section 5 of Act 3134 i.e. An Act to Protect
Intellectual Property which is known as the Copyright Law of the Philippine Islands.
Analyzing the language used, such news items, editorial paragraphs and articles in
periodicals may be reproduced unless they contain a notice that their publication is reserved
or unless they contain a notice of copyright. In either event, the law specifically provides
that the source of the reproduction or original reproduced shall be cited. To give the Section
another construction would be to nullify, eliminate and take from the paragraph the works
“they contain a notice that their publication is reserved. The words are plain and clear, it
should be applied.
In the case at bar, PECI did not give notice of its copyright for the simple reason that it did
not have one but it did notify Sotto and Alindada that in the publication of the article “we
reserved all right,” which was legally equivalent to a notice of copyright. Furthermore, the
latter would have had the legal right to publish the article by giving the source of the
reproduction to which it failed to.
If it had been the purpose of and intent of the Legislature to limit the reproduction of news
items, editorial paragraphs and articles in periodicals to those which have a notice of
copyright only, it never would have said if “they contain a notice that their publication is
reserved.”
2. Fair use
Section 185, IPC (as amended by R.A. No. 10372)
SECTION 185. Fair Use of a Copyrighted Work. —
185.1. The fair use of a copyrighted work for criticism, comment, news reporting,
teaching including multiple copies for classroom use, scholarship, research, and similar
purposes is not an infringement of copyright. Decompilation, which is understood here to be
the reproduction of the code and translation of the forms of the computer program to achieve
the inter-operability of an independently created computer program with other programs
may also constitute fair use. In determining whether the use made of a work in any
particular case is fair use, the factors to be considered shall include:
a. The purpose and character of the use, including whether such use is of a
commercial nature or is for non-profit educational purposes;
b. The nature of the copyrighted work;
c. The amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
d. The effect of the use upon the potential market for or value of the copyrighted
work.
185.2. The fact that a work is unpublished shall not by itself bar a finding of
fair use if such finding is made upon consideration of all the above factors.
Harper & Row, Publishers v. Nation Enterprises, 471 U.S. 539 (1985)
Publication of parts of a work soon to be published does not qualify as fair use.
Harper & Row Publishers, Inc. (Harper) (Plaintiff) obtained the rights to publish President
Ford’s memoirs, A Time to Heal. Time magazine contracted for the rights to preview the
work immediately before publication. Before the publication of the article by Time
magazine, Nation Enterprises (Defendant), publisher of The Nation magazine, got a copy of
the Ford manuscript. The Nation published an article that quoted the manuscript about the
Nixon pardon. Time then choose not to use the article as planned and canceled its contract
with Harper (Plaintiff). Plaintiff sued Defendant for copyright infringement. The district
court awarded damages for infringement. The Second Circuit reversed, holding Nation
Enterprises’ (Defendant) use to be a “fair use” under 17 U.S.C.107.
Publication of parts of a work soon to be published does not qualify as fair use. The idea
behind the fair use doctrine as it was framed in the common law was that one using a
copyrighted work should not have to get a copyright holder’s permission to use the
copyrighted work in a case where a reasonable copyright holder would in fact grant
permission. Section 107 of the Copyright Act, which codified the doctrine, expressly noted
in its legislative history that it was not meant to change the common law. As for
reasonableness, it is not reasonable to expect a copyright holder to let another person “scoop”
it by publishing his material ahead of time. Regarding the language of § 107, the section
lists four points to consider in applying the doctrine. The two factors most relevant here are
purpose of the use and effect on the market. Usually, a fair use will not be one of economic
competition with the copyright holder, which is exactly what prior publication of a
copyrighted work is. In addition, the effect on the market of such a use is shown by what
happened here: it greatly decreases the market value of the copyrighted work. Therefore,
the conclusion in this case, and in almost all cases, is that prior publication of a work
pending publication will not be a fair use.
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994)
For fair use purposes, the commercial purpose of a work is only one element of the inquiry
into the purpose and character of the work.
2 Live Crew (Defendant) recorded a rap parody of the hit by Roy Orbison, “Oh, Pretty
Woman.” Acuff-Rose (Plaintiff), the copyright holder of the original song, brought suit
against 2 Live Crew (Defendant) for copyright infringement. The district court granted
summary judgment for 2 Live Crew (Defendant), concluding that its song made fair use of
pg. 31
Orbison’s original. The appeals court reversed and remanded. It concluded that every
commercial use is presumptively unfair and the blatantly commercial purpose of 2 Live
Crew’s (Defendant) version prevented it from constituting fair use. Defendant appealed.
For fair use purposes, the commercial purpose of a work is only one element of the inquiry
into the purpose and character of the work. The other elements to be considered are the
nature of the copyrighted work, the amount and substantiality of the portion used in relation
to the copyrighted work as a whole, and the effect of the use upon the potential market for
the copyrighted work. In this case, it was error for the court of appeals to conclude that the
commercial nature of 2 Live Crew’s (Defendant) parody rendered it presumptively unfair.
No such evidentiary presumption exists for either the first factor (the character and purpose
of the use) or the fourth factor (market harm). The court also erred in holding that 2 Live
Crew (Defendant) had copied excessively from the Orbison original, considering the satiric
purpose of their version. Reversed and remanded to evaluate the amount taken from the
original, its transformative elements, and potential for market harm.
New Era Publications Int'l v. Carol Publishing Group, 904 F.2d 152 (2d Cir.), cert.
denied, 498 U.S. 921 (1990)
New Era was the exclusive licensee of all Church of Scientology Founder L. Ron Hubbard’s
writings. Carol Publishing Group intended to publish an approximately 527-page
manuscript titled A Piece of Blue sky: Scientology, Dianetics and L. Ron Hubbard Exposed,
“an unfavorably biography of Hubbard and a strong attack on Scientology,” written by a
former member of the Church. In both the text and at the beginning of many chapters, the
author quoted widely from Hubbard’s substantial body of published works. Defendant
publisher appealed the district court’s ruling that the author’s use of Hubbard’s writing was
not a fair use.
The court found that defendant’s use of Hubbard’s works was fair use. The court first found
that defendant’s unfavorable biography fit comfortably within the categories of uses that
could be fair –namely criticism, scholarship, and research– because A Piece of Blue Sky was
designed “to educate the public about Hubbard, a public figure who sought public attention,”
and used quotes to further that purpose rather than to unnecessarily appropriate Hubbard’s
literary expression. The court also found that defendant’s book quoted from a small portion
of plaintiff’s writings and did not take the heart of the works. Further, the quoted works
were all published, which the court pointed out allows for a “greater amount of copying.”
Even though plaintiff argued that defendant’s biography harmed any future biography they
may authorize, the court concluded that there was not a negative effect on plaintiff’s market
because potential customers for an authorized favorable biography would likely not be
deterred from buying it on the basis that an unfavorable biography used the same sources.
Furthermore, the court found that even if A Piece of Blue Sky’s negative critique did
dissuade customers from purchasing an authorized biography, such harm “would not result
from unfair infringement forbidden by the copyright laws, but rather from a convincing work
that effectively criticizes Hubbard, the very type of work that the Copyright Act was
designed to protect and encourage.”
Castle Rock Entertainment v. Carol Publishing Group, Inc., 150 F.3d 132 (2d Cir.
1998)
Plaintiff Castle Rock Entertainment, Inc. owned the copyrights for the entire Seinfeld
television series. Defendants, author Beth B. Golub and publisher Carol Publishing Group,
Inc., released a book titled The Seinfeld Aptitude Test (The SAT), a 132-page book that
contained 643 trivia questions and answers about the characters and events in Seinfeld.
The book drew from eighty-four of the eighty-six
Seinfeld episodes broadcast up to that time and included
direct quotes. The district court ruled against
defendants, finding that this was not fair use.
Defendants appealed.
The Second Circuit held that defendants’ unauthorized
use of the copyright protected aspects of the television
series was not fair use. The court determined that
defendants’ use was commercial and, more importantly,
nontransformative because The SAT did not provide
commentary or analysis about Seinfeld or act as a
research tool, but instead “[repackaged] Seinfeld to
entertain Seinfeld viewers.” The court then noted that
defendants’ creation of 643 questions based on the
television series was more than was necessary to
advance defendants’ purported “commentary” of the
show, further suggesting that the book’s purpose was
entertainment. Turning to the effect on the potential
market, the court found that although Castle Rock had
shown little interest in exploiting the market for
Seinfeld-related books, the defendants’ work substituted for the derivative market for such
books, and the court noted that “copyright law must respect [the] creative and economic
choice” of plaintiffs not to exploit a particular market.
Nuñez v. Caribbean International News Corp. (El Vocero de Puerto Rico), 235 F.3d 18
(1st Cir. 2000)
Plaintiff Sixto Nunez, a professional photographer, took several nude and nearly nude
photographs of Joyce Giraud, who was Miss Puerto Rico Universe 1997, for her modeling
portfolio. Following standard practice, he distributed them to members of the modeling
community. Controversy ensued over whether nude and semi-nude photographs were
appropriate for a pageant winner. After the photos were displayed on television, defendant’s
newspaper, El Vocero, published three of plaintiff’s photos without permission, alongside
several articles about the controversy. Plaintiff appealed the district court’s ruling that
defendant’s publication of the photographs was a fair use.
The court determined that defendant’s publication of plaintiff’s photographs was fair use.
Although the photos were placed on the newspaper’s cover in an attempt to increase sales,
the court found that the purpose and character of use still favored fair use: the photos were
informative and illustrative of the story; the purpose of the use was transformative from the
original intended use as a modeling portfolio; and defendant used the photos in good faith.
The court decided the nature of the work was a neutral factor since it was difficult to
categorize the photos as either creative or factual. The court further stated that the
newspaper did not threaten plaintiff’s right of first publication because he had previously
distributed them, they were shown on the television before the newspaper printed them,
and they were intended for public dissemination. The court also found that the market was
not negatively affected because plaintiff used the photos for publicity purposes, not to make
money, by distributing them to the modeling community for free. Additionally, the court
determined that the relatively poor reproduction by the newspaper cover should not affect
demand for the portfolio, but instead could increase it.
Video Pipeline, Inc. v. Buena Vista Home Entertainment, Inc., 42 F.3d 191 (3rd Cir.
2003)
Defendant Buena Vista Home Entertainment, Inc., a wholly owned subsidiary of The Walt
Disney Pictures and Television Co., held an exclusive license to distribute Disney products
in the home video market. In 1988, defendant authorized plaintiff Video Pipeline to create
compilations of its video trailers and distribute the trailers to traditional home video retail
outlets. In 1997, when the video retail market shifted to an internet distribution model,
pg. 32
plaintiff began distributing the trailers over the internet, via digital streams, and charging
internet video retailers for the right to access the trailers. In 2000, defendant advised
plaintiff that it did not have permission to distribute its trailers on the internet. In response,
plaintiff filed suit seeking a declaratory judgment that its online use of the trailers was legal
pursuant to a previous licensing agreement. Defendant subsequently terminated the
licensing agreement. After the licensing agreement was cancelled, plaintiff began using
short segments from defendant’s films to create its own movie trailers and stream them over
the internet. Plaintiff then sought a declaratory judgment that its use of the segments was
permissible. Defendant claimed plaintiff’s use of the segments or “clip previews” infringed
its copyrights in the films. Plaintiff argued that its use was protected by the first sale and
fair use doctrines. The district court granted a preliminary injunction in favor of defendant.
The court found that the district court correctly held that plaintiff failed to show that it was
likely to prevail on its defense that its online display of the clip previews constituted fair
use. Regarding the purpose and character of the use, the court found that plaintiff’s use did
not add new expression, meaning, or message to the original works and thus lacked
transformative quality. Regarding the nature of the works, the court characterized
defendant’s works as “creative, non-factual expression” and weighed the factor against a
finding of fair use. Regarding the amount and substantiality of the work copied, the court
found that plaintiff only copied a small amount of defendant’s works (full-length films) and
that the copied segments did not go to the “heart” of the films, which weighed in favor of fair
use. Finally, regarding the potential market effect, the court held that plaintiff’s streaming
of segments of defendant’s works over the internet could cause cognizable harm to the
market for defendant to license authorized trailers for its works.
Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006)
Plaintiff Bill Graham Archives owned copyrights in
artistic images originally used on concert posters and
tickets to promote events for the rock band the Grateful
Dead. Defendant Dorling Kindersley Publishing (DK)
sought permission from plaintiff to reproduce images of
seven such posters and tickets in a 480-page cultural
history of the group titled Grateful Dead: The Illustrated
Trip. After the parties failed to reach an agreement, DK
nevertheless reproduced and displayed the posters and
tickets. When DK refused to pay license fees for use of the
posters and tickets after publishing the book, plaintiff
sued for infringement. Plaintiff appealed the district
court’s ruling that DK’s reproduction of the images in the
book was fair use.
The court upheld the district court’s ruling that defendants’ copying of the images was fair
use. It reasoned that defendant’s use of the concert posters and tickets “as historical artifacts
of Grateful Dead performances is transformatively different from the original expressive
purpose of [the] copyrighted images.” The court also reasoned that the fact that the images
were copied in their entirety did not weigh against fair use because “the reduced size of the
images” was consistent with plaintiff’s transformative purpose. Additionally, the court
found that the plaintiff’s use did not harm the market for defendant’s sale of the copyrighted
artwork.
Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992)
Sega Enterprises Ltd. (Sega) (Plaintiff) and Accolade, Inc. (Defendant) made and marketed
video game cartridges. In order to make its own games compatible with Sega’s (Plaintiff)
console, Accolade (Defendant) “reverse engineered” Sega’s (Plaintiff) video game programs
to discover the requirements for compatibility with the console. In order to do this, it first
copied Plaintiff’s copyright code in its entirety and then disassembled it to see how it worked.
Defendant then created its own games for use with Plaintiff’s console, but did not copy
Plaintiff’s programs or use any of its codes. Plaintiff sued for copyright infringement. The
district court granted Plaintiff’s motion for a preliminary injunction to prevent Defendant
from further disassembly of Plaintiff’s object codes. Defendant appealed.
Disassembly of a copyrighted object code is a fair use of the material if it is the only way to
access uncopyrighted elements of the code and there is a legitimate reason for seeking to
do so.
Disassembly of a copyrighted object code is a fair use of the material if it is the only way to
access uncopyrighted elements of the code and there is a legitimate reason for seeking to do
so. Section 107 of the Copyright Act of 1976 lists four factors to be considered in determining
whether a certain use is a fair one: (1) the purpose and character of the use; (2) the nature
of the copyrighted work; (3) the amount and substantiality of the portion used in relation to
the copyrighted work as a whole; and (4) the effect of the use upon the market for the
copyrighted work. First, Accolade (Defendant) only sought to become a legitimate competitor
in the field of Sega (Plaintiff) compatible video games. It therefore had a legitimate, non-
exploitative purpose for copying Plaintiff’s code. Second, Plaintiff’s video game programs
must be afforded a lower degree of protection than more traditional literary works as they
contain unprotected aspects that cannot be examined without copying. Third, the fact that
Defendant disassembled entire programs written by Sega (Plaintiff) should receive little
weight. Fourth, Accolade’s (Defendant) copying may have affected the market, but not
significantly, as customers tend to buy many video games, not just one. Accordingly,
Defendant has the better case on the fair use issue. Affirmed in part, reversed in part, and
remanded.
Sony Computer Entertainment, Inc. v. Connectix Corp. 203 F.3d 596 (9th Cir.), cert.
denied, 531 U.S. 871 (2000)
Plaintiff Sony Computer Entertainment, Inc. produced and marketed the Sony PlayStation
video game console. Sony owned the copyright to BIOS, the software program that operated
the PlayStation. Defendant Connectix Corporation made and sold a software program called
“Virtual Game Station.” The purpose of the Virtual Game Station was to emulate on a
regular computer the functioning of the Sony PlayStation console, so that computer owners
who buy the Virtual Game Station software can play Sony PlayStation games on their
computers. In order to create the Virtual Game Station, Connectix “reverse engineered”
Sony’s BIOS program. As part of the reverse engineering process, Connectix made several
intermediate copies of the BIOS program. Sony sued Connectix for copyright infringement.
The district court concluded that Sony was likely to succeed on its infringement claim
because Connectix’s “intermediate copying” was not a protected fair use. The court also
enjoined Connectix from selling the Virtual Game Station and copying or using Sony’s BIOS
program in the development of other Virtual Game Station products.
The circuit court reversed the district court’s ruling and remanded the case with instructions
to dissolve the injunction against Connectix. The court concluded that the intermediate
copies Connectix made and used during the course of its reverse engineering of the BIOS
program were protected fair use, necessary to permit Connectix to make its non-infringing
Virtual Game Station function with PlayStation games. In reaching its conclusion, the court
found that three of four fair use factors—the purpose and character of the use the nature of
the copyrighted work, and the effect of the use upon the potential market for the work—all
weighed in favor of fair use. Although the court found that Connectix copied the entire BIOS
program, it concluded that this factor warranted “very little weight” in cases of
“intermediate infringement” where “the final product does not itself contain infringing
material.”
pg. 33
Perfect 10, Inc. v. Amazon, Inc., supra
Plaintiff Perfect 10, Inc., a subscription website for images of nude models, alleged that
defendants Google, Inc. and Amazon.com, Inc. infringed its copyrights. Plaintiff alleged that
Google infringed because its search engine results for image searches included plaintiff’s
images. The image search results were shown as reduced-sized, lower resolution
“thumbnail” versions of the original images. Another aspect of plaintiff’s claim related to a
business agreement Google had with Amazon.com that permitted Google’s search engine to
send search results, including plaintiff’s images, to Amazon.com customers. Defendants
appealed the district court’s grant of a preliminary injunction enjoining Google from
creating and publicly displaying thumbnail versions of plaintiff’s images.
The court concluded that the use of thumbnail versions of plaintiff’s images was a fair use
and held that Google was likely to succeed in proving its fair use defense, thus vacating the
preliminary injunction regarding Google’s use of the thumbnail images. It deemed the use
“highly transformative” because a search engine transformed an image into a pointer
directing a user to a source of information and provided a social benefit by incorporating an
original work into an electronic reference tool. The court held that market harm could not
be presumed, given the highly transformative nature of the use, and that the potential harm
to plaintiff’s market was hypothetical.
(1) A computer owner that stores an image as electronic information and provides that
electronic information directly to a user violates the copyright holder’s exclusive right to
display the image.
(2) A computer owner that in-line links to or frames a full-size image does not infringe the
distribution right of the image’s copyright owner when the image is displayed on the
computer screen of a user.
(3) A search engine’s owner’s appropriation of a copyrighted image for use as an indexed
thumbnail picture is a protected “fair use” under the copyright law where the balance of the
statutory fair use factors favors the owner of the search engine.
Sony Corporation of America v. Universal City Studios, Inc., 464 U.S. 417 (1984)
Sony Corp. (Sony) (Defendant) marketed Betamax videocassette recorders (VCRs or VTRs),
which allowed home recording of televised programs. Several movie studios (Plaintiff),
holders of copyrights on televised movies and other televised programs, brought an action
for contributory copyright infringement on the theory that Defendant was contributorily
liable for infringement by consumers of VTRs of the studios’ (Plaintiff) copyrighted works
on the basis of Sony’s (Defendant) marketing and distribution of the VTRs. The district
court, finding, inter alia, that no Sony (Defendant) employee had either direct involvement
with the allegedly infringing activity or direct contact with purchasers of Betamax who
recorded copyrighted works off-the-air, and that there was no evidence that any of the copies
made by individuals were influenced or encouraged by Defendant’s advertisements, held
that Defendant was not liable for direct or contributory copyright infringement.
One who supplies the way to accomplish an infringing activity and encourages that activity
through advertisement is not liable for copyright infringement
The protection given to copyrights is wholly statutory, and, in a case like this, in which
Congress has not plainly marked the course to be followed by the judiciary, the Court must
be circumspect in construing the scope of rights created by a statute that never
contemplated such a calculus of interests based on technological advances. In proceeding,
the Court must balance the encouraging and rewarding of authors to create new works with
the public good. This case does not fall in the category of those in which it is manifestly just
to impose vicarious liability because the “contributory” infringer was in a position to control
the use of copyrighted works by others and had authorized the use without permission from
the copyright owner. In this case, the only contact between Defendant and the users of the
VTR’s occurred at the moment of sale. However, there is no precedent for imposing vicarious
liability on the theory that Sony (Defendant) sold the VTR’s with constructive knowledge
that its customers might use the equipment to make unauthorized copies of copyrighted
material. The sale of copying equipment, like the sale of other articles of commerce, does
not constitute contributory infringement if the product is widely used for legitimate,
unobjectionable purposes, or actually, is merely capable of substantial noninfringing uses.
In this case, a large portion of the public’s use of VTRs does not implicate copyright at all,
and also time-shifting, the most common use for the Betama, constitutes a fair use.
Reversed.
A&M Records, Inc. v. Napster, Inc., 2000 WL 573136 (N.D. Cal. 2000)
Defendant Napster, Inc. designed and operated a peer-to-peer (P2P) filesharing network
allowing users to search, access, and download audio recordings stored in MP3 digital file
format on their own or others’ computers. Plaintiffs, corporate music producers, complained
that Napster users obtained copyrighted works from each other’s networked computers
without copyright holders’ authorization. Napster asserted that the service had legitimate
purposes: sampling works in deciding whether to make a purchase; accessing works the
users already owned (space-shifting); and receiving authorized distributions of copyrighted
works. Plaintiffs alleged Napster was liable for contributory and vicarious copyright
infringement as a result of its operation of the P2P network. The district court granted
plaintiffs a preliminary injunction, finding in part that Napster’s P2P file-sharing service
was not a fair use of copyrighted works. Napster appealed.
The Ninth Circuit held that the district court did not err in ruling that transfer of digital
files through Napster’s service was not fair use. The court deemed the purpose of the use
non-transformative, noting that courts are reluctant to find fair use where the original work
is merely retransmitted in a new medium. The court also found the purpose to be
commercial, concluding that recurring exploitative copying constitutes commercial use
when made to avoid the expense of buying an authorized copy and that users also received
other copyrighted works in exchange for making their own files available for download.
Additionally, the court found that the nature of the works was creative (as opposed to fact-
based) and that the file-sharing process generally involved copying works in their entirety,
both weighing against a finding of fair use. Regarding the market effect, plaintiffs
introduced sufficient evidence to show that Napster caused a reduction in audio CD sales
and hindered plaintiffs’ ability to enter the digital sales market. The court also found that
the lower court did not err in determining that downloading for sampling purposes is a
commercial use. It determined that, even if users ultimately buy the recording, free
promotional downloads are highly regulated by the recording industry. Furthermore, the
court found that the users who downloaded for sampling purposes were actually less likely
to purchase an authorized copy. Regarding space-shifting, the court remarked that courts
have only permitted space shifting by the original user. Napster impermissibly allowed
space shifting between different, subsequent users.
American Geophysical Union v. Texaco, Inc., 60 F.3d 913 (2d Cir. 1995)
Plaintiffs, including American Geophysical Union and eighty-two other publishers, sold
scientific journal subscriptions to defendant Texaco, Inc. They alleged that Texaco’s four to
five hundred employees infringed their copyrights by repeatedly photocopying individual
journal articles without permission and distributing them widely. The district court allowed
this interlocutory appeal after ruling it was not fair use for employees to copy plaintiffs’
journal articles.
Affirming the district court, the Second Circuit held that defendant’s unauthorized copying
of the journal articles was not fair use. In reaching its conclusion, the court found that
defendant’s actions were “part of a systematic process of encouraging employee researchers
to copy articles so as to multiply available copies while avoiding payment.” Specifically, the
court found that employees were simply making copies for convenience, which it did not
consider to be a transformative use. Further, the court found that the employees were
copying articles in their entirety, and such copying interfered with the commercial value
publishers derive from the articles via subscriptions and licensing agreements.
pg. 34
The photocopying of copyrighted material to convert scholarly articles into a useful format
is not a transformative use of the material and therefore not a fair use.
Princeton University Press v. Michigan Document Services, Inc., 99 F.3d 1381 (6th
Cir. 1996) (en banc), cert. denied, 520 U.S. 1156 (1997)
Defendant Michigan Document Services, Inc. is a commercial photocopy shop that
reproduced substantial segments of written materials that were assigned reading for
University of Michigan courses. Defendant assembled the photocopied material into
“coursepacks” that it offered for sale to students for use in their studies to fulfill reading
assignments. Plaintiffs are publishers who owned copyrights for the assigned reading
materials defendant used to create the coursepacks. The publishers asserted that defendant
photocopy shop was prohibited from copying and distributing their works without their
permission. Defendant appealed the district court’s ruling that using the copyrighted works
in the coursepacks was not protected by the fair use doctrine.
The court held that defendant’s commercial exploitation of the protected works did not
constitute fair use. In its analysis, the court weighed the fact that defendant was a
“commercial enterprise” copying protected works “on a profit-making basis” against a
finding of fair use. The court clarified that while the educational use to which students put
the course packs was noncommercial in nature, the challenged use in this case was the
defendant’s unauthorized commercial duplication of plaintiffs’ copyrighted works. The court
found defendant’s non-transformative, verbatim copying would cause a significant adverse
impact on the potential market for the works. Factoring into the court’s decision was its
finding that there was an established market in which copyright owners frequently licensed
segments of their works to copy shops for reproduction and sale to students and that, should
defendant’s conduct become widespread, plaintiffs’ licensing revenue stream would
“shrivel.” Also weighing against a finding of fair use were the court’s findings that some of
the works contained in the course packs were excerpts of creative material; that the length
of most of the segments included in the course packs (in relation to entire versions) were
“not insubstantial;” and that the qualitative value of the excerpts was high in light of the
fact that it is normal practice for professors to choose the most important or significant
portions of materials.
L. Technological Protections because it was content-neutral and furthered a substantial government interest unrelated
1. The U.S. Digital Millennium Copyright Act
DMCA Act of 1998
It criminalizes production and dissemination of technology, devices, or services intended to
circumvent measures that control access to copyrighted works (commonly known as digital
rights management or DRM). It also criminalizes the act of circumventing an access control,
whether or not there is actual infringement of copyright itself. In addition, the DMCA
heightens the penalties for copyright infringement on the Internet.
Universal City Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 294 (S.D.N.Y. 2000)
Universal and other movies studios used an encryption system called CSS that made so that
DVDs could only be played on licensed DVD players that wouldn't allow the user to copy the
data.
CSS was shared with the companies that made the DVD players.
Johansen was a hacker who reverse engineered a DVD player and developed a program
called DeCSS that would let users copy the data DVDs.
Johansen was only 15 at the time!
Universal started sending out cease and desist letter to all the web sites that allowed users
to download the DeCSS code. Corley's website hosted the code, but deleted in when
Universal threatened to sue. However, Corley provided links on their website to other
websites that still had the code available.
Universal sued Corley for copyright infringement.
Corley argued that this was a 1st Amendment freedom of speech issue because he didn't
think CSS should be legal.
Universal argued that this was akin to publishing the combination to a bank vault to
encourage people to rob the bank.
The Trial Court found for Universal.
The Trial Court looked to the Digital Millennium Copyright Act (DMCA) (17 U.S.C.
§1201(a)(2)) and found that DeCSS was a copyright violation because it's only purpose was
to defeat copyright protection.
Therefore offering to transfer the DeCSS code to a user was not legal.
The Court found that Corley engaged in the functional equivalent of transferring the DeCSS
code to the user by linking to sites that hosted the code.
Especially because many of the sites Corley linked to had nothing on them but the DeCSS
code. The Court noted that if a site Corley linked to had the DeCSS code and also a lot of
other content, then maybe that would be ok.
The Court addressed 1st Amendment concerns, and found that §101(a)(2) could not be used
enforce an injunction against a linking site (like Corley's) absent clear and convincing
evidence that the person responsible for the link:
Knows that the relevant material is linked to the site,
Knows that the material linked to the site is technology that may not lawfully be offered,
and create or maintain the link for the purpose of disseminating the technology.
The Court issued a permanent injunction barring Corley from posting DeCSS or links to
DeCSS.
The Court found that damages would be difficult to calculate because who knows how many
movies would be copied, and who knows how those copied movies would affect DVD sales.
Corley argued that an injunction was silly because there was many places on the internet
where you could get DeCSS, so it was too late to stop it. However, the Court found that an
injunction was the best they could do to limit the damage.
The Appellate Court affirmed.
The Appellate Court found that §1201(a)(2) was not a violation of the 1st Amendment
to the suppression of free speech.
2. Authorized Versus Unauthorized Access and Interoperable Products
Lexmark International, Inc. v. Static Control Components, Inc.
387 F.3d 522 (6th Cir. 2005)
Lexmark International, Incorporated (Lexmark) (plaintiff) manufactured inkjet
and laser printers and complementary toner cartridges. Lexmark’s toner cartridges
contained a small microchip with a simple computer program, the Toner Loading Program
(TLP). TLP measured the remaining toner in the cartridge and conveyed relevant
information to the printer. TLP also provided information to the printer to authenticate use
of the cartridge. Lexmark’s printers contained a more complex computer program, called
the Printer Engine Program (PEP). PEP directed the printer to complete its various
functions, like feeding paper. Neither program was encrypted. Lexmark sold toner
cartridges for its laser printers at two price levels. Lexmark’s Prebate cartridges required
consumers to agree to return cartridges to Lexmark after use in return for a discounted
price at the time of sale. Non-Prebate cartridges were sold at full price, but could be refilled
and reused by the consumers rather than returning the cartridges to Lexmark. The
authentication procedure built into the printer ensured that Prebate toner cartridges were
not reused by consumers. Static Control Components, Incorporated (SCC) (defendant)
pg. 35
manufactured microchips for use on toner cartridges. One of the microchips SCC
manufactured, the SMARTEK chip, was designed to bypass Lexmark’s authentication
program and allow consumers or third-party manufacturers to replace the microchip on
used Prebate cartridges. By replacing the microchip, the cartridges could be purchased at
Lexmark’s discount price and then resold at a discount off Lexmark’s prices. The SMARTEK
chip contained an exact copy of the Toner Loading Program to enable the cartridge to
operate with Lexmark’s printers. Lexmark sued SCC for violating 17 U.S.C. § 106 by selling
a technology intended to circumvent Lexmark’s access-control mechanism for operating its
printers. The district court granted a preliminary injunction, and SCC appealed.
The Court rejected Static's claim that its activities were protected by the fair use doctrine.
This determination was supported both by the fact that Static copied Lexmark's programs
for the commercial purpose of selling Smartek chips, and by the fact that Static copied
Lexmark's programs in their entirety, which in turn led to a presumption of significant
market harm.
The Court also found that Lexmark was likely to prevail on its DMCA claims.
"The DMCA … prohibit[s] … the trafficking of products or devices that circumvent the
technological measures used by copyright owners to restrict access to their copyrighted
works."
Section 1201(a)(2) of the DMCA prohibits the manufacture, distribution and/or
sale of any product or device that:
(a) is primarily designed or produced for the purpose of circumventing a
technological measure that effectively controls access to a work protected under this title;
(b) has only a limited commercially significant purpose or use other than to
circumvent a technological measure that effectively controls access to a work protected under
this title; or
(c) is marketed by that person or another acting in concert with that person with
that person's knowledge for use in circumventing a technological measure that effectively
controls access to a work protect under this title.
According to the Court "a technological measure 'controls access' to a copyrighted
work if that measure 'requires the application of information, or a process or a treatment
with the authority of the copyright owner, to gain access to the work.' In addition, the
[DMCA] provides that a product or device 'circumvents' a technological measure by
'avoiding, bypassing, removing, deactivating or otherwise impairing' the operation of that
technological measure."
Applying these standards, the Court held that Lexmark's authentication sequence
was a technological measure that controls access to a copyrighted work, namely Lexmark's
Printer Engine and Toner Loading Programs. Said the court:
The authentication sequence that occurs between Lexmark's printers and the
microchips contained on authorized Lexmark toner cartridges constitutes a 'technological
measure' that 'controls access' to a copyrighted work. This authentication sequence requires
the application of information and the application of a process to gain access to Lexmark's
copyrighted Toner Loading Programs and Printer Engine Programs. Lexmark's
authentication sequence effectively 'control access' to the Toner Loading Programs and the
Printer Engine Program because it controls the consumer's ability to make use of these
programs.
The Court further found that Static's Smartek chips "avoid or bypass Lexmark's
authentication sequence … As a result, the Smartek chips are able to deceive the Lexmark
T-series printers into thinking that the Smartek chips are, in fact, original microchips
contained on authorized Lexmark toner cartridges." This in turn led the Court to conclude
that Lexmark was likely to prevail on its DMCA claims for three independent reasons: (1)
the chips were specifically developed to circumvent the authentication sequence; (2) the
chips had no commercial purpose other than circumventing that sequence; and (3) the chips
are marketed as being capable of circumventing that authentication sequence.
The Court held that Static's actions were not protected under the DMCA's reverse
engineering sections, 1201(f)(2) and (3). These sections only protect copying if done "solely
for the purpose of enabling interoperability of an independently created program with other
programs, and to the extent that doing so does not constitute infringement under this title or
violate applicable law other than this section." Because Static's chips utilize Lexmark's own
Toner Loading Program, they do not make an independently created program interoperable
with Lexmark's printers, and thus fall outside the protection of section 1201(f).
Lastly, the Court rejected Static's arguments that the DMCA was not intended to
protect a toner cartridge manufacturing against competition from remanufacturers. The
DMCA was not "only intended to protect copyrighted works from digital piracy … [Nor is]
the DMCA … limited to the protection of "copies of works (such as book, CD's and motion
pictures) that have an independent market value.' … Quite simply, if a work is entitled to
protection under the Copyright Act, trafficking in a device that circumvents a technological
measure that controls access to such work constitutes a violation under section 1201(a)."
Section 186.1 (as amended by R.A. No. 10372)
M. Copyright Scope and Enforcement
1. Infringement
REMEDIES
Sections 221-224, IPC
SECTION 221. Points of Attachment for Works under Sections 172 and 173. —
221.1. The protection afforded by this Act to copyrightable works under Sections
172 and 173 shall apply to:
a. Works of authors who are nationals of, or have their habitual
residence in, the Philippines;
b. Audio-visual works the producer of which has his headquarters or
habitual residence in the Philippines;
c. Works of architecture erected in the Philippines or other artistic works
incorporated in a building or other structure located in the Philippines;
d. Works first published in the Philippines; and
e. Works first published in another country but also published in the
Philippines within thirty days, irrespective of the nationality or
residence of the authors.
221.2. The provisions of this Act shall also apply to works that are to be
protected by virtue of and in accordance with any international convention or other
international agreement to which the Philippines is a party. (n)
SECTION 222. Points of Attachment for Performers. — The provisions of this Act on
the protection of performers shall apply to:
222.1. Performers who are nationals of the Philippines;
222.2. Performers who are not nationals of the Philippines but whose
performances:
a. Take place in the Philippines; or
b. Are incorporated in sound recordings that are protected under this Act; or Which
has not been fixed in sound recording but are carried by broadcast qualifying for
protection under this Act. (n)
pg. 36

SECTION 223. Points of Attachment for Sound Recordings. — The provisions of this
Act on the protection of sound recordings shall apply to:
223.1. Sound recordings the producers of which are nationals of the Philippines; and
223.2. Sound recordings that were first published in the Philippines. (n)
SECTION 224. Points of Attachment for Broadcasts. —
224.1. The provisions of this Act on the protection of broadcasts shall apply to:
a. Broadcasts of broadcasting organizations the headquarters of which are situated
in the Philippines; and
b. Broadcasts transmitted from transmitters situated in the Philippines.
224.2. The provisions of this Act shall also apply to performers who, and to producers of
sound recordings and broadcasting organizations which, are to be protected by virtue of and
in accordance with any international convention or other international agreement to which
the Philippines is a party. (n)
Section 3, IPC
SECTION 3. International Conventions and Reciprocity. — Any person who is a
national or who is domiciled or has a real and effective industrial establishment in a country
which is a party to any convention, treaty or agreement relating to intellectual property
rights or the repression of unfair competition, to which the Philippines is also a party, or
extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits
to the extent necessary to give effect to any provision of such convention, treaty or reciprocal
law, in addition to the rights to which any owner of an intellectual property right is
otherwise entitled by this Act. (n)
Section 10.2, IPC
SECTION 10. The Bureau of Legal Affairs. — The Bureau of Legal Affairs shall have the
following functions:
10.2.
a. Exercise original jurisdiction in administrative complaints for violations of laws
involving intellectual property rights: Provided, That its jurisdiction is limited to
complaints where the total damages claimed are not less than Two hundred
thousand pesos (P200,000): Provided further, That availment of the provisional
remedies may be granted in accordance with the Rules of Court. The Director of
Legal Affairs shall have the power to hold and punish for contempt all those who
disregard orders or writs issued in the course of the proceedings. (n)
b. After formal investigation, the Director for Legal Affairs may impose one (1) or
more of the following administrative penalties:
i. The issuance of a cease and desist order which shall specify the acts that the
respondent shall cease and desist from and shall require him to submit a
compliance report within a reasonable time which shall be fixed in the order;
ii. The acceptance of a voluntary assurance of compliance or discontinuance as
may be imposed. Such voluntary assurance may include one or more of the
following:
a. An assurance to comply with the provisions of the intellectual property
law violated;
b. An assurance to refrain from engaging in unlawful and unfair acts and
practices subject of the formal investigation;
c. An assurance to recall, replace, repair, or refund the money value of
defective goods distributed in commerce; and
d. An assurance to reimburse the complainant the expenses and costs
incurred in prosecuting the case in the Bureau of Legal Affairs. The
Director of Legal Affairs may also require the respondent to submit
periodic compliance reports and file a bond to guarantee compliance of
his undertaking;
iii. The condemnation or seizure of products which are subject of the offense. The
goods seized hereunder shall be disposed of in such manner as may be
deemed appropriate by the Director of Legal Affairs, such as by sale, donation
to distressed local governments or to charitable or relief institutions,
exportation, recycling into other goods, or any combination thereof, under
such guidelines as he may provide;
iv. The forfeiture of paraphernalia and all real and personal properties which
have been used in the commission of the offense;
v. The imposition of administrative fines in such amount as deemed reasonable
by the Director of Legal Affairs, which shall in no case be less than Five
thousand pesos (P5,000) nor more than One hundred fifty thousand pesos
(P150,000). In addition, an additional fine of not more than One thousand
pesos (P1,000) shall be imposed for each day of continuing violation;
vi. The cancellation of any permit, license, authority, or registration which may
have been granted by the Office, or the suspension of the validity thereof for
such period of time as the Director of Legal Affairs may deem reasonable
which shall not exceed one (1) year;
vii. The withholding of any permit, license, authority,or registration which is
being secured by the respondent from the Office;
viii. The assessment of damages;
ix. Censure; and
x. Other analogous penalties or sanctions.
Sections 216-220, IPC (as amended by R.A. No. 10372)
SECTION 216. Remedies for Infringement. —
216.1. Any person infringing a right protected under this law shall be liable:
a. To an injunction restraining such infringement. The court may also order the
defendant to desist from an infringement, among others, to prevent the entry into
the channels of commerce of imported goods that involve an infringement,
immediately after customs clearance of such goods.
a. Pay to the copyright proprietor or his assigns or heirs such actual damages,
including legal costs and other expenses, as he may have incurred due to the
infringement as well as the profits the infringer may have made due to such
infringement, and in proving profits the plaintiff shall be required to prove sales
only and the defendant shall be required to prove every element of cost which he
claims, or, in lieu of actual damages and profits, such damages which to the court
shall appear to be just and shall not be regarded as penalty.
b. Deliver under oath, for impounding during the pendency of the action, upon such
terms and conditions as the court may prescribe, sales invoices and other
documents evidencing sales, all articles and their packaging alleged to infringe a
copyright and implements for making them.
c. Deliver under oath for destruction without any compensation all infringing copies
or devices, as well as all plates, molds, or other means for making such infringing
copies as the court may order.
d. Such other terms and conditions, including the payment of moral and exemplary
damages, which the court may deem proper, wise and equitable and the
destruction of infringing copies of the work even in the event of acquittal in a
criminal case.
216.2. In an infringement action, the court shall also have the power to order the
seizure and impounding of any article which may serve as evidence in the court
proceedings. (Sec. 28, P.D. No. 49a)
SECTION 217. Criminal Penalties. —
217.1. Any person infringing any right secured by provisions of Part IV of this Act or aiding
or abetting such infringement shall be guilty of a crime punishable by:
pg. 37
 a. Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty
thousand pesos (P50,000) to One hundred fifty thousand pesos (P150,000) for the
first offense.
b. Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging
from One hundred fifty thousand pesos (P150,000) to Five hundred thousand
pesos (P500,000) for the second offense.
c. Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging
from Five hundred thousand pesos (P500,000) to One million five hundred
thousand pesos (P1,500,000) for the third and subsequent offenses.
d. In all cases, subsidiary imprisonment in cases of insolvency.
217.2. In determining the number of years of imprisonment and the amount
of fine, the court shall consider the value of the infringing materials that the defendant has
produced or manufactured and the damage that the copyright owner has suffered by reason
of the infringement.
217.3. Any person who at the time when copyright subsists in a work has in his possession
an article which he knows, or ought to know, to be an infringing copy of the work for the
purpose of:
a. Selling, letting for hire, or by way of trade offering or exposing for sale, or
hire, the article;
b. Distributing the article for purpose of trade, or for any other purpose to an
extent that will prejudice the rights of the copyright owner in the work; or
c. Trade exhibit of the article in public, shall be guilty of an offense and shall
be liable on conviction to imprisonment and fine as above mentioned. (Sec.
29, P.D. No. 49a)
SECTION 218. Affidavit Evidence. —
218.1. In an action under this Chapter, an affidavit made before a notary public by or on
behalf of the owner of the copyright in any work or other subject matter and stating that:
a. At the time specified therein, copyright subsisted in the work or other subject
matter;
b. He or the person named therein is the owner of the copyright; and
c. The copy of the work or other subject matter annexed thereto is a true copy thereof,
shall be admitted in evidence in any proceedings for an offense under this Chapter
and shall be prima facie proof of the matters therein stated until the contrary is
proved, and the court before which such affidavit is produced shall assume that
the affidavit was made by or on behalf of the owner of the copyright.
218.2. In an action under this Chapter:
a. Copyright shall be presumed to subsist in the work or other subject matter to
which the action relates if the defendant does not put in issue the question
whether copyright subsists in the work or other subject matter; and
b. Where the subsistence of the copyright is established, the plaintiff shall be
presumed to be the owner of the copyright if he claims to be the owner of the
copyright and the defendant does not put in issue the question of his ownership.
c. Where the defendant, without good faith, puts in issue the questions of whether
copyright subsists in a work or other subject matter to which the action relates, or
the ownership of copyright in such work or subject matter, thereby occasioning
unnecessary costs or delay in the proceedings, the court may direct that any costs
to the defendant in respect of the action shall not be allowed by him and that any
costs occasioned by the defendant to other parties shall be paid by him to such
other parties. (n)
SECTION 219. Presumption of Authorship. —
219.1. The natural person whose name is indicated on a work in the usual manner as the
author shall, in the absence of proof to the contrary, be presumed to be the author of the
work. This provision shall be applicable even if the name is a pseudonym, where the
pseudonym leaves no doubt as to the identity of the author.
219.2. The person or body corporate whose name appears on an audio- visual work in the
usual manner shall, in the absence of proof to the contrary, be presumed to be the maker of
said work. (n)
SECTION 220. International Registration of Works. — A statement concerning a work,
recorded in an international register in accordance with an international treaty to which
the Philippines is or may become a party, shall be construed as true until the contrary is
proved except:
220.1. Where the statement cannot be valid under this Act or any other law concerning
intellectual property.
220.2. Where the statement is contradicted by another statement recorded in the
international register. (n)
Sections 225-226, IPC (as amended by R.A. No. 10372)
SECTION 225. Jurisdiction. — Without prejudice to the provisions of Subsection 7.1(c),
actions under this Act shall be cognizable by the courts with appropriate jurisdiction under
existing law. (Sec. 57, P.D. No. 49a)
SECTION 226. Damages. — No damages may be recovered under this Act after four (4)
years from the time the cause of action arose. (Sec. 58, P.D. No. 49)
Section 231, IPC
SECTION 231. Reverse Reciprocity of Foreign Laws. — Any condition, restriction,
limitation, diminution, requirement, penalty or any similar burden imposed by the law of a
foreign country on a Philippine national seeking protection of intellectual property rights in
that country, shall reciprocally be enforceable upon nationals of said country, within
Philippine jurisdiction. (n)
Rule on Search and Seizure in Civil Actions for Infringement of Intellectual Property Rights
(A.M. No. 02-1-06-SC)
20th Century Fox v. CA, 164 SCRA 655 (1988)
The petitioner maintains that the lower court issued the questioned search warrants after
finding the existence of a probable cause justifying their issuance. According to the
petitioner, the lower court arrived at this conclusion on the basis of the depositions of
applicant NBI's two witnesses which were taken through searching questions and answers
by the lower court.
The respondent posits that the three questioned search warrants against the private
respondents should be lifeted on the ground that it acted on the application for the issuance
of the said search warrants and granted it on the misrepresentations of applicant NBI and
its witnesses that infringement of copyright or a piracy of a particular film have been
committed.
They also maintained that the presentation of the master tapes of the copyrighted films
from which the pirated films were allegedly copied, was necessary for the validity of search
warrants against those who have in their possession the pirated films. The petitioner's
argument to the effect that the presentation of the master tapes at the time of application
may not be necessary as these would be merely evidentiary in nature and not determinative
of whether or not a probable cause exists to justify the issuance of the search warrants is
not meritorious.
The presentation of the master tapes of the copyrighted films from which the pirated films
were allegedly copied, was necessary for the validity of search warrants against those who
have in their possession the pirated films. The petitioner's argument to the effect that the
presentation of the master tapes at the time of application may not be necessary as these
would be merely evidentiary in nature and not determinative of whether or not a probable
pg. 38
cause exists to justify the issuance of the search warrants is not meritorious. The court
cannot presume that duplicate or copied tapes were necessarily reproduced from master
tapes that it owns.
The application for search warrants was directed against video tape outlets which allegedly
were engaged in the unauthorized sale and renting out of copyrighted films belonging to the
petitioner pursuant to P.D. 49. The essence of a copyright infringement is the similarity or
at least substantial similarity of the purported pirated works to the copyrighted work.
Hence, the applicant must present to the court the copyrighted films to compare them with
the purchased evidence of the video tapes allegedly pirated to determine whether the latter is
an unauthorized reproduction of the former. This linkage of the copyrighted films to the
pirated films must be established to satisfy the requirements of probable cause. Mere
allegations as to the existence of the copyrighted films cannot serve as basis for the issuance
of a search warrant.
Columbia Pictures, Inc. v. Court of Appeals, 237 SCRA 367 (1994)
The NBI filed with the RTC three applications for search warrant against private
respondents, charging them with violation of Section 56 of P.D. No. 49. It was alleged that
respondents committed copyright infringement by "pirating" the original works of
petitioners.
Seized were pirated video tapes of original films which belong to petitioners as well as
posters, leaflets, brochures, and the likes.
Acting on the applications, then RTC Judge Maria Alicia M. Austria conducted a joint
hearing during which she made a personal examination of the applicant and his witnesses.
Finding just and probable cause for granting the application at the time, Judge Austria
issued the corresponding Search Warrants.
Private respondents filed a motion to quash for want of probable cause; complainants failed
to prove ownership over the films in question
The search warrants in question were not issued upon probable cause concerning the alleged
copyright infringement
A basic requirement for the validity of search warrants in cases involving film piracy is the
presentation of the master tapes of the copyrighted films from which the pirated films are
supposed to have been copied
“It is not correct to say that ‘the basic fact’ to be proven to establish probable cause in the
instant cases is not the ‘unauthorized transfer’ of a motion picture that has been recorded’
but the ‘sale, lease, or distribution of pirated video tapes of copyrighted films.’
In applying for the search warrants the NBI charged violation of the entire provisions of
Section 56 of P.D. No. 49 as amended by P.D. No. 1988. This included not only the sale,
lease or distribution of pirated tapes but also the transfer or causing to be transferred of
any sound recording or motion picture or other audio visual work. But even assuming, as
appellants argue, that only the sale, lease, or distribution of pirated video tapes is involved,
the fact remains that there is need to establish probable cause that the tapes being sold,
leased or distributed are pirated tapes, hence the issue reverts back to the question of
whether there was unauthorized transfer, directly or indirectly, of a sound recording or
motion picture or other audio visual work that has been recorded
Columbia Pictures v. Court of Appeals, 261 SCRA 144 (1996)
Petitioners filed a formal complaint with NBI. NBI applied for search warrant and was
granted. They were able to search Sunshine Home Video Inc. NBI was able to seize pirated
video tapes of copyrighted films of all the films attached in the list of application for the
warrant and other things used to show, reproduce, sale, lease and dispose of videogram
tapes.
A Motion to Lift Search warrant was filed with the Court which was denied. However, it
was granted in a Motion for Reconsideration. The reason for lifting the warrant was that
the master tapes of the copyrighted films from which the pirated films were allegedly copied
were never presented citing the case of 20th Century Fox vs. CA.
Sunshine contends that the complainants failed to register their materials. Thus, there can
be no right created and no infringement committed.
Rules and decisions must be applied prospectively. The ruling in the cited case is not
applicable since the ruling in the case at bar happened before such ruling was ever upheld.
The ruling in the 20th Century Fox only serves as a guidepost and not absolute since it is
not always necessary to present the original tapes before ascertaining probable cause.
Infringement of a copyright is a trespass on a private domain owned and occupied by the
owner of the copyright, and, therefore, protected by law, and infringement of copyright, or
piracy, which is a synonymous term in this connection, consists in the doing by any person,
without the consent of the owner of the copyright, of anything the sole right to do which is
conferred by statute on the owner of the copyright.
Failure to comply with registration and deposit does not deprive the copyright owner of the
right to sue for infringement but merely limits the remedies available to him because the
copyright for a work is granted from the moment of creation.
People v. Ramos, 83 SCRA 1 (1978)
On September 3, 1965, two criminal cases were filed against Ramos for violations of the
Copyright Law.
It was alleged that Ramos was the proprietor aid general manager of the National Bookstore
and illegally sold and distributed spurious pirated copies of the high school textbook,
“General Science Today for Philippine School,” knowing full well that the said book was duly
copyrighted by the Phoenix Publishing House, Inc.
Identical motions to quash were filed by Ramos on the ground of prescription. She alleged
that the prescriptive period started to run on the day after the discovery was made (in July
17, 1963) and not on the day when the police search was made (made in Sept. 4, 1963).
Prescription will apply based on the Copyright Law. In favor of Ramos
Section 1. Violations penalized by special acts shall unless otherwise provided in such acts,
prescribe in accordance with the following rules: (b) after four years for those punished by
imprisonment for more than one month, but less than two years;
Act No. 3326 applies only if the special act does not provide for its own prescriptive period.
It has no application here, where the Copyright Law provides for its own prescriptive period:
Section 24. All actions, suits, or proceedings arising under this Act shall be originally
cognizable by the Courts of First Instance of the Philippines and shall prescribe after two
years from the time the cause of action arose.
In this case, the two-year prescriptive period shall apply. February 28 and 29 of a leap year
should be counted as separate days in computing periods of prescription. The case is
dismissed for being filed out of the prescribed period which should have been before
September 3, 1965.
Serrano Laktaw v. Paglinawan, 44 Phil. 855
Laktaw is the registered owner and author of a literary work entitled Diccionario Hispano-
Tagalog (Spanish-Tagalog Dictionary) published in the City of Manila in 1889 by the
printing establishment La Opinion.
Paglinawan without the consent of Laktaw, reproduced said literary work, improperly
copied the greater part thereof in the work published by him and entitled Diccionariong
Kastila-Tagalog (Spanish-Tagalog Dictionary).
The act of Pagliwanan is a violation of article 7 of the Law of January 10, 1879, on
Intellectual Property, caused irreparable injuries to Laktaw who was surprised when, on
publishing his new work entitled Diccionario Tagalog-Hispano (Tagalog-Spanish
Dictionary) he learned of the fact, and (4) that the damages occasioned to him by the
publication of Paglinawan's work amounted to $10,000. Laktaw prayed the court to order
pg. 39
the Paglinawan to withdraw from sale all stock of the work of Paglinawan to pay him the
sum of $10,000, with costs.
Paglinawan in his answer denied generally each and every allegation of the complaint and
prayed the court to absolve him from the complaint.
Article 7 of the Law of January 10, 1879, on Intellectual Property:
Nobody may reproduce another person's work without the owner's consent, even merely to
annotate or add anything to it, or improve any edition thereof.
Paglinawan violated Article 7 of Intellectual Property Law.
It is not necessary that a work should be an improper copy of another work previously
published. It is enough that another's work has been reproduced without the consent of the
owner, even though it be only to annotate, add something to it, or improve any edition
thereof.
As early as 1918, the Supreme Court enunciated that a person who published a Spanish-
Tagalog dictionary and copied the equivalents, definitions and different meanings given in
another author’s Spanish-Tagalog dictionary, although making some additions of his own
and some unimportant changes in the examples to illustrate the meanings of the words, has
violated the intellectual property rights of other author. The Supreme Court reasoned that
although words are not the property of anybody, their definitions, the example that explain
their sense and the manner of expressing their different meanings, may constitute special
work.
Habana v. Robles, 310 SCRA 511 (1999)
Habana is the author of the copyrighted book entitled College English for Today (CET).
Robles and GoodWill is the author and publisher of the book entitled Developing English
Proficiency (DEP).
When Habana et al. try to revise their work they encountered by chance that the work of
Robles (DEP) is similar of the contents, scheme of presentation, illustrations and illustrative
examples in their own book.
After an itemized examination and comparison of the two books (CET and DEP), Habana
found that several pages of the Robles’ book are similar, if not all together a copy of Habana’s
book, which is a case of plagiarism and copyright infringement.
Habana then made demands for damages against respondents and also demanded that they
cease and desist from further selling and distributing to the general public the infringed
copies of Robles’ works.
However, Robles ignored the demands, hence, Habana et al. filed with the Regional Trial
Court, Makati, a complaint for “Infringement and/or unfair competition with damages”
against private respondents.
Robles committed copyright infringement.
Robles’ act of lifting from the book of petitioners substantial portions of discussions and
examples, and her failure to acknowledge the same in her book is an infringement of
petitioners’ copyrights.
In cases of infringement, copying alone is not what is prohibited. The copying must produce
an “injurious effect”. Here, the injury consists in that Robles lifted from Habana’s book
materials that were the result of the latter’s research work and compilation and
misrepresented them as her own. She circulated the book DEP for commercial use and did
not acknowledge Habana as her source.
Hence, there is a clear case of appropriation of copyrighted work for her benefit that Robles
committed. Habana’s work as authors is the product of their long and assiduous research
and for another to represent it as her own is injury enough. In copyrighting books the
purpose is to give protection to the intellectual product of an author. This is precisely what
the law on copyright protected, under Section 184.1 (b). Quotations from a published work
if they are compatible with fair use and only to the extent justified by the purpose, including
quotations from newspaper articles and periodicals in the form of press summaries are
allowed provided that the source and the name of the author, if appearing on the work, are
mentioned.
Notes
When is there a substantial reproduction of a book?
It does not necessarily require that the entire copyrighted work, or even a large portion of
it, be copied. If so much is taken that the value of the original work is substantially
diminished, there is an infringement of copyright and to an injurious extent, the work is
appropriated.
In determining the question of infringement, the amount of matter copied from the
copyrighted work is an important consideration. To constitute infringement, it is not
necessary that the whole or even a large portion of the work shall have been copied. If so
much is taken that the value of the original is sensibly diminished, or the labors of the
original author are substantially and to an injurious extent appropriated by another, that
is sufficient in point of law to constitute piracy.
Joaquin v. Drilon, 302 SCRA 225 (1999)
“Rhoda and Me and It’s a Date” Case
The presentation of the master tapes of the copyrighted films from which the pirated films
were allegedly copied, was necessary for the validity of search warrants against those who
have in their possession the pirated films. The petitioners argument to the effect that the
presentation of the master tapes at the time of application may not be necessary as these
would be merely evidentiary in nature and not determinative of whether or not a probable
cause exists to justify the issuance of the search warrants is not meritorious. The court
cannot presume that duplicate or copied tapes were necessarily reproduced from master
tapes that it owns.
The application for search warrants was directed against video tape outlets which allegedly
were engaged in the unauthorized sale and renting out of copyrighted films belonging to the
petitioner pursuant to P.D. 49.
The essence of a copyright infringement is the similarity or at least substantial similarity
of the purported pirated works to the copyrighted work. Hence, the applicant must present
to the court the copyrighted films to compare them with the purchased evidence of the video
tapes allegedly pirated to determine whether the latter is an unauthorized reproduction of
the former. This linkage of the copyrighted films to the pirated films must be established to
satisfy the requirements of probable cause. Mere allegations as to the existence of the
copyrighted films cannot serve as basis for the issuance of a search warrant.
In the case at bar, during the preliminary investigation, petitioners and private respondents
presented written descriptions of the formats of their respective televisions shows, on the
basis of which the investigating prosecutor ruled:
As may [be] gleaned from the evidence on record, the substance of the television productions
complainants RHODA AND ME and Zosas ITS A DATE is that two matches are made
between a male and a female, both single, and the two couples are treated to a night or two
of dining and/or dancing at the expense of the show. The major concepts of both shows is the
same. Any difference appear mere variations of the major concepts.
That there is an infringement on the copyright of the show RHODA AND ME both in content
and in the execution of the video presentation are established because respondents ITS A
DATE is practically an exact copy of complainants RHODA AND ME because of substantial
similarities as follows,
pg. 40
Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)
Pearl and Dean is a corporation in the manufacture of advertising display units also known
as light boxes, which were manufactured by Metro Industrial Services. A copyright
Registration was obtained in 1981. These were marketed in the name of "Poster Ads". They
also applied for a registration of trademark with the Bureau of Patents in 1983, but was
only approved in 19988. In 1985, petitioner had n agreement with respondent Shoemart
Inc (SMI) to install these light boxes in their Makati and Cubao branch, Only the Makati
branch was able to sigh the agreement. In 1986, the contract was rescinded unilaterally by
SMI, and instead contracted with Metro Industrial Services. They installed these lightboxes
in different SM city branches, including Cubao and Makati, with association with North
Edsa Marketing Inc (NEMI), SMI's sister company. Petitioner requested SMI and NEMI to
put down their installations of the light boxes, and payment of compensatory damages worth
P20M. Claiming that respondents failed to comply, they filed a case for infringement of
trademark and copyright, unfair competition and damages. RTC ruled in favor of petitioner,
but CA reversed.
(1) Whether there was a copyright infringement; (2) Whether there was a patent
infringement; (3) Whether there was a trademark infringement; (4) Whether there was
unfair competition – NO to all.
(1) Copyright is a statutory right, subject to the terms and conditions specified in the
statute. Therefore, it can only cover the works falling within the statutory enumeration or
description. Since the copyright was classified under class "O" works, which includes "prints,
pictorial illustrations, advertising copies, labels, tags and box wraps," and does not include
the light box itself. A lightbox, even admitted by the president of petitioner company, was
neither a literary nor an artistic work but an engineering or marketing invention, thus not
included under a copyright.
(2) Petitioner was not able to secure a patent for its lightboxes, and cannot legally prevent
anyone from manufacturing or commercially using the same. Patent has a three-fold
purpose: a) to foster and reward invention; b) promotes disclosures of invention and permit
public to use the same upon expiration; c) stringent requirements for patent protection to
ensure in the public domain remain there for free use of the public. Since petitioner was not
able to go through such examination, it cannot exclude others from manufacturing, or selling
such lightboxes. No patent, no protection.
(3) The certificate of registration issued by the Director of Patents gives exclusive right to
use its own symbol only to the description specified in the certificate. It cannot prevent
others to use the same trademark with a different description.
(4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and Dean,
thus it cannot be considered to use such term to be unfair competition against the petitioner.
Microsoft Corporation v. Manansala, G.R. No. 16639, 21 October 2015
The mere sale of the illicit copies of the software programs was enough by itself to show the
existence of probable cause for copyright infringement. There was no need for the petitioner
to still prove who copied, replicated or reproduced the software programs. Indeed, the public
prosecutor and the DOI gravely abused their discretion in dismissing the petitioner's charge
for copyright infringement against the respondents for lack of evidence. There was grave
abuse of discretion because the public prosecutor and the DOI acted whimsically or
arbitrarily in disregarding the settled jurisprudential rules on finding the existence of
probable cause to charge the offender in court. Accordingly, the CA erred in upholding the
dismissal by the DOI of the petitioner's petition for review. We reverse.
2. Copying in Fact
Three Boys Music Corp. v. Michael Bolton, 212 F.3d 477 (9th Cir. 2000), cert. denied,
531 U.S. 1126 (2001)
n the 1960’s, popular soul and Motown artists the Isley Brothers released a song entitled
Love is a Wonderful Thing (the Isley song). Though other songs by the Isley Brothers were
often highly ranked in national music charts, the the Isley song was never ranked in a top
100 list. However, experts testified that the Isley song was played for a period of a few weeks
in 1966 on radio stations in Connecticut. In 1990, Michael Bolton (defendant) and Andrew
Goldmark (defendant) co-wrote a song entitled Love is a Wonderful Thing (Bolton’s Song),
which was released in 1991 and topped the year-end pop chart at number 49. Bolton made
a name for himself in the 1980s and 1990s by recording soul music like the music that was
popular in the 1960s. Bolton was a fan of soul music from the time he was around 10 or 11
years old, and he was about 13 when the Isley song was being played on the radio. Likewise,
Goldmark listened to soul music from a young age and was about 14 years old when the
Isley song was being played. Both Goldmark and Bolton lived in Connecticut when the Isley
ong was on the radio. Three Boys Music Corporation (Three Boys) (plaintiff) was the
copyright holder of the Isley song in the 1990s. Three Boys sued Bolton and Goldmark for
copyright infringement and were awarded $5.4 million in a jury trial. Bolton and Goldmark
appealed the decision.
Absent direct evidence of copying, proof of infringement involves fact-based showings that
the defendant had “access” to the plaintiff's work and that the two works are “substantially
similar.”
Proof of access requires “an opportunity to view or to copy plaintiff's work.” This is often
described as providing a “reasonable opportunity” or “reasonable possibility” of viewing the
plaintiff's work. Circumstantial evidence of reasonable access is proven in one of two ways:
 (1) a particular chain of events is established between the plaintiff's work and the
defendant's access to that work (such as through dealings with a publisher or record
company), or (2) the plaintiff's work has been widely disseminated.
Proof of widespread dissemination is sometimes accompanied by a theory that copyright
infringement of a popular song was subconscious. Subconscious copying has been accepted
since Learned Hand embraced it in a 1924 music infringement case:  “Everything registers
somewhere in our memories, and no one can tell what may evoke it․ Once it appears that
another has in fact used the copyright as the source of this production, he has invaded the
author's rights. It is no excuse that in so doing his memory has played him a trick.”
Under our case law, substantial similarity is inextricably linked to the issue of access. In
what is known as the “inverse ratio rule,” we “require a lower standard of proof of
substantial similarity when a high degree of access is shown.” Furthermore, in the absence
of any proof of access, a copyright plaintiff can still make out a case of infringement by
showing that the songs were “strikingly similar.”
Proof of the substantial similarity is satisfied by a two-part test of extrinsic similarity and
intrinsic similarity.
Initially, the extrinsic test requires that the plaintiff identify concrete elements based on
objective criteria. The extrinsic test often requires analytical dissection of a work and expert
testimony. Once the extrinsic test is satisfied, the factfinder applies the intrinsic test. The
intrinsic test is subjective and asks “whether the ordinary, reasonable person would find the
total concept and feel of the works to be substantially similar.”
Court ruled in favor of Isley Brothers
pg. 41
Selle v. Gibb, 741 F.2d 896 (7th Cir. 1984)
Selle was a small-time musician who wrote a song and sent some demo tapes to various
record label, but none of them offered to distribute his music. Later, a band called the Bee
Gees recorded a very similar-sounding song. Selle sued for copyright infringement.
The Bee Gees argued that they never even heard Selle's song and they came up with his
song all by themselves (aka independent creation).
The Trial Court found for the Bee Gees. Selle appealed. The Appellate Court affirmed.
The Appellate Court found that there are two elements to establishing infringement:
1. There must be evidence that the defendant had access to the copyrighted work.
2. There must be evidence that the works are substantially similar.
Selle was unable to show any evidence that the Bee Gees ever had access to his song. The
best he could show was an expert witness who said that the songs we so strikingly similar
that there was no way they could have been written independent of each other. However,
the Court found that wasn't enough.
The Court noted that if two works are so similar as to make it highly probable that the later
one is a copy of the earlier one, the issue of access need not be addressed since if the later
work was a copy its creator must have had access to the original.
If two works are almost identical, then there is no requirement that the copyright owner
establish access.
Ty, Inc. v. GMA Accessories, Inc., 132 F.3d 1167 (7th Cir. 1997)
Ty made small stuffed animals. They made a stuffed pig. GMA made a similar stuffed pig.
Ty sued for copyright infringement.
GMA argued that they came up with their pig design by themselves (aka independent
creation).
The Trial Court found for Ty. GMA appealed. The Appellate Court affirmed.
The Appellate Court found that generally, there are two elements to establishing
infringement:
1. There must be evidence that the defendant had access to the copyrighted work.
2. There must be evidence that the works are substantially similar.
However, the Court looked to Selle v. Gibb (741 F.2d 286 (1984)), and found that if two works
are so strikingly similar as to make it highly probable that the later one is a copy of the earlier
one, the issue of access need not be addressed since if the later work was a copy its creator
must have had access to the original.
The Court looked at the Ty pig, the GMA pig, and real live pigs. They found that the GMA
pig was strikingly similar to the Ty pig but not to anything in the real world, including real
live pigs.
The two stuffed pigs weren't very realistic depictions of pigs, so it was hard to imagine that
all the features of the GMA pig didn't come from the Ty pig. GMA could not point to any
fictional pig in the public domain that resembled their pig.
Bauman v. Fussell, [1978] R.P.C. 485 (U.K.: County Court & Court of Appeal, 1953)
A magazine published a reproduction of a colour photograph that Bauman had taken in
Cuba of two cocks fighting. The defendant artist liked the photo, pinned it on his wall, and
painted a picture based on the photo. The painting was duly sold by an art dealer. Bauman
sued Fussell for copyright infringement on the ground that the position of the birds was the
main element of the photographic composition and that a substantial part of the photograph
had been reproduced.. The action was dismissed by the Country Court and the Court of
Appeals.
The painting is not an infringing copy of the photograph.
Taking an original photograph and making alterations to it through the use of digital
manipulation which fails to destroy the elements of the photograph in which originality
subsists will amount to an infringing copy. Conversely, there is no infringement if all that is
copied from the photograph is non-original material and there is no appropriation of the
photographer's labour and skill
In this case, the painting based on a photograph of a cock fight only reproduced the relative
positions of the birds to each other there was no infringement. It was held that the positions
of the birds did not amount to a substantial part of the photograph. It is submitted that the
reasoning in this case is doubtful and to capture a fast-moving event like a cock fight
requires a level of skill in respect of the composition and the decision as to when to take the
photograph. Although the relative positions are not the work of the photographer, capturing
them in a particular way when skill is required may form part of the originality of the work.
This will not always be the case – in some instances the relative positions of objects in a
photograph will be commonplace.
Where the photograph is of subject matter over which the photographer has no control –
such as a news event – it is arguable that there is no originality, as all that is occurring is a
reproduction of the scene. Although the photograph was of a scene over which the plaintiff
had no control, it was not disputed that he had a copyright in the work. The report suggests
that the painting was "entirely different" from the photograph, save for the position of the
birds relative to one another. The effect of the paining was entirely different from that of
the photograph and that Fussell had produced a new work of art of his own using Bauman’s
work only as inspiration. It was held by a majority that there had been no infringement of
the photograph.
3. "Substantially Similar" Copy
Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930), cert. denied, 282 U.S.
902 (1931)
Arnstein (Plaintiff) claimed that Porter (Defendant) had plagiarized some songs and sued
for infringement of copyright. The district court considered Arnstein’s (Plaintiff) allegations
that Porter (Defendant) or his “stooges” had burglarized his room to gain access to his songs
“fantastic,” and accepted Defendant’s denial of access and copying. When Defendant’s
motion for summary judgment was granted, Plaintiff appealed.
In a copyright infringement dispute, if there is evidence of access and similarities exist, then
the trier of the facts must decide whether the similarities are enough to prove copying. If
no similarities exist, no amount of evidence of access will do to prove copying. There are
enough similarities here between Arnstein’s (Plaintiff) and Porter’s (Defendant)
compositions so that, if there is enough evidence of access to permit the case to go to the
jury, the jury may properly infer that the similarities were not a result of coincidence. No
oral testimony on the issue of access was presented to the district court and Plaintiff’s
credibility, even as to the “fantastic” improbabilities, should be left to the jury. Since it is
not “indubitable” that Defendant did not have access to Plaintiff’s compositions, summary
judgment was not proper
Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946), cert. denied, 330 U.S. 851 (1947)
Plaintiff is the author of a play, “Abie’s Irish Rose.” Defendant produced a motion picture,
“The Cohens and The Kells,” which the plaintiff claims was taken from it. Both plays portray
pg. 42
stories of a Jewish and an Irish-Catholic family in which the children fall in love and are
married, their parents are outraged, a grandchild is born, and there is a reconciliation that
follows.
Two plays may be similar enough in plot for a finding of infringement. It appears in this
case that the defendant took no more of the plaintiff’s work, assuming he took anything at
all, than the law allowed. Both stories were very different, the only similarity being an
argument between an Irish father and a Jewish father, the marriage of their children, the
birth of grandchildren, and a reconciliation. The plaintiff’s copyright did not cover all that
might be drawn from her play; its content went to some extent into the public domain. The
theme was basically an idea and the characters were mainly stock figures, which have been
used for many decades. Affirmed.
This case involves the question of to what extent ideas may be subject to copyright
protection. As a general rule, the “idea/expression dichotomy” holds that ideas are never
copyrightable, though the expression of those ideas may be subject to copyright protection.
While a plot is more of an idea, the court recognizes that in some cases the play may
nonetheless be copyrightable, though not in this case.
Steinberg v. Columbia Pictures Industries, Inc., 663 F. Supp. 706 (S.D.N.Y. 1987)
Steinberg drew an illustration of New York City that was featured on the cover of a
magazine. Columbia used a very similar-looking illustration of New York City in a
promotional poster for a movie. Steinberg sued for copyright infringement.
Columbia admitted that they had used Steinberg's illustration as a basis for their poster.
However, they argued that they were dissimilar enough that it wasn't an infringement.
Columbia argued that they merely copied Steinberg's idea, not his expression, and ideas
cannot be the basis of copyright protection.
The Court looked at a number of properties of the two illustrations and found that they both
had certain things in common which were not common among other illustrations of New
York. The Court defined substantially similar to be "whether the average lay observer would
recognize the alleged copy as having been appropriated from the copyrighted work."
Basically the movie poster took 3 people and placed them in front of the New Yorker cover
and thus infringement.
Boisson v. Banian, Ltd., 273 F.3d 262 (2d. Cir. 2001)
Judi Boisson (plaintiff) designed two quilts, School Days I and School Days II, that depicted
the alphabet as capital letters and some pictures in square blocks. School Days I showed the
alphabet in five horizontal rows, grouping letters in the rows as follows: A-E, F-J, K-O, P-T,
U-Y, and Z, with four pictures. The pictures were a cat, a house, a single-starred American
flag, and a basket. The letters were depicted in a variety of contrasting fabrics, with either
solid colors or polka dots. Schools Days II used a different arrangement of the letters in red,
white, and blue. Vijay Rao (defendant), president and owner of Banian, Limited (Banian)
(defendant), imported three quilts from India that depicted the letters of the alphabet in
square blocks. All the quilts, by both Boisson and Banian, used diamond stitching inside of
the blocks, with wavy stitching around the borders. Banian’s three quilts were ABC Green
Version I (Green I), ABC Green Version II (Green II), and ABC Navy. The coloring and
pattern contrasting on 20 of the letters were essentially the same on School Days I, Green
I, and Green II. The layout of the blocks on Green I and Green II were five horizontal rows
of letters, also grouped A-E, F-J, K-O, P-T, U-Y, and Z with four pictures. The pictures in
Green I were a cow, a sailboat, a bear, and a star. The pictures in Green II replaced Green
I’s bear with a teddy bear in a flag vest. Boisson sued Rao and Banian for copyright
infringement. The district court ruled that the Banian quilts were not substantially similar
to Boisson’s quilts after a bench trial. The district court used a more discerning substantial-
similarity test, because elements of the quilts were in the public domain, but the court’s
analysis did not consider the arrangement of the elements in addition to the individual
elements. Boisson appealed.
(On the Left, "School Days I" by Judi Boisson; On the Right, "ABC Navy" by Banian Ltd.)
The Appellate Court found that many elements of the quilt design like the alphabet are not
copyrightable. However, elements such as the layout and color combinations are.
The Court defined substantially similar to be if "the ordinary observer, unless she set out to
detect the disparities, would be disposed to overlook them, and regard the aesthetic appeal
as the same."
pg. 43
The Court found that the courts needed to consider the "total concept and feel" of the two
works.
The Court looked at the various features of the various quilts, and found that in some cases
there was a substantial similarity between the copyrightable elements of Boisson's quilt and
Banian's quilt.
The Court found that some of Banian's quilts infringed, and others' did not.
The Court went on to find that the three quilts had “an enormous amount of sameness.” In
particular, the Court found that:
• all three quilts used a combination of contrasting color fabrics or a combination of solid
and polka-dot fabrics for the blocks and alphabet letters. Many of the letters and block
backgrounds in Vijay’s quilts had the same color combination as in Judi’s quilt.
• Vijay’s quilts used the same unique shape for some of the alphabet letters;
• The body of Vijay’s quilts had the same diamond-shaped quilting as Judi’s quilt and a
wavy quilt pattern in the plain white border surrounding the quilt blocks; and
• All three quilts were edged with 3/8 inch green binding.
In light of all of the similarities, the Court found that Vijay’s first quilt was similar enough
to Judi’s designs to demonstrate illegal copying.
NOTE:
Copyright protection extends only to the particular expression of an idea and not to the idea
itself. For example, in the American Quilts case, the idea of using the alphabet in a quilt
design was not protected by copyright, but Judi’s particular expression of that idea (e.g., her
selection of color, letter shape and placement) was protectable.
Simply because a work has a copyright registration doesn’t mean that every element of that
work is protected. For example, elements of the work that are in the public domain are not
protectable.
damages and apportioned profits for copyright infringement regarding Oscar 3.4. However,
the court denied relief on Plaintiff’s second claim, finding that Oscar 3.5 was not
substantially similar to Adapter. In addition, the court concluded that Plaintiff’s state law
trade secret misappropriation claim against Defendant was preempted by the federal
copyright act. On appeal, Altai (Defendant) conceded liability for the copying of Adapter
into Oscar 3.4 and raised no challenge to the award of damages. Therefore, only CA’s
(Plaintiff) second and third claims were addressed on appeal.
For a finding of copyright infringement, the protectable, nonliteral elements of one computer
program must be very similar to the same elements in a second computer program.
Yes. For a finding of copyright infringement, the protectable, nonliteral elements of one
computer program must be very similar to the same elements in a second computer
program. It is now well settled that the literal elements of computer programs, i.e., their
source and object codes, are the subject of copyright protection. Altai (Defendant) made sure
that the literal elements of its revamped Oscar program were no longer substantially similar
to the literal elements of CA’s (Plaintiff) Adapter. If the nonliteral structures of literary
works are protected by copyright (and by law computer programs are literary works), then
the nonliteral structures of computer programs are also protected by copyright. It is a
fundamental principle of copyright law that a copyright does not protect an idea, but only
the expression of the idea. A three-step procedure, based on the abstractions test the district
court utilized, should be used to determine whether the nonliteral elements of two or more
computer programs are very similar. As applied to computer programs, the abstractions
test will include the first step in the examination for substantial similarity inquiry focuses
on whether Defendant copied any aspect of this protected expression, along with an
assessment of the copied portion’s relative importance regarding Plaintiff’s overall program.
After reviewing the record in this case, this court can discern no error on the part of the
district court judge. Affirmed.
Cavalier v. Random House, Inc., 297 F.3d 815 (9th Cir. 2002)

Color by itself isn’t subject to copyright protection, but an original combination or Wanda and Christopher Cavalier
arrangement of colors with a minimum degree of creativity is eligible for copyright (plaintiffs) wrote children’s stories about
protection. a character named Nicky Moonbeam.
The stories included a few books of
An infringer can’t get around an infringement claim by just adding some minor different several thousand words and a board
aspects to the work if the overall look and feel of a copyrighted work has been copied. For book for young children. In one
example, in the American Quilts case, the Court found copyright infringement, illustration, a star is shown lounging on
notwithstanding that Vijay’s first quilt had different icons in the last few blocks of his quilt a cloud during the daytime. In another,
design. a star is being polished by the main
character. The board book included a
Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992) night-light built into the back cover,
Computer Associates International (CA) (Plaintiff) designed, developed, and marketed with a smiling moon surrounded by
numerous types of computer programs, including “CA-Scheduler,” a job-scheduling program stars and a power switch to the lower
containing a subprogram named “Adapter.” Adapter was a wholly integrated component of right.
CA-Scheduler with no capacity for independent use. In 1982, Altai, Inc. (Defendant) started
to market its own job-scheduling program named “Zeke.” Then, Defendant decided to The general theme of the stories
rewrite Zeke to run in conjunction with a different operating system, and Altai’s (Defendant) included traveling through the night sky
president, Williams, approached Arney, a computer programmer who work for Plaintiff, and speaking with the moon and stars.
about working for Defendant. When Arney left Plaintiff to work for Defendant, he took The Cavaliers submitted the stories and
copies with him of the source code for two versions of Adapter and used them to design illustrations to Random House,
Altai’s (Defendant) new component-program, “Oscar” (Version 3.4). Arney copied Incorporated (Random House)
approximately 30% of Oscar’s code from Plaintiff’s Adapter program. When Plaintiff (defendant), but the submissions were
discovered that Defendant may have appropriated parts of Adapter, it brought this rejected. Random House later published
copyright and trade secret misappropriation action against Altai (Defendant). A rewrite of two books, Good Night, Ernie and Good
Oscar began, named Oscar 3.5. The district court awarded Plaintiff $364,444 in actual Night, Elmo (the Good Night books).
pg. 44
The books involved Ernie and Elmo traveling through the night sky accompanied by the
moon. The Good Night books included illustrations of stars lounging on clouds during the
day and stars being polished. The Good Night books also included a night-light depicting a
smiling moon and a smiling star, with rosy cheeks, surrounded by stars and a power switch
to the lower right. Each book was around 100 words long. The Cavaliers sued Random
House, CTW Publishing Company, and the Children's Television Workshop Inc.
(defendants) for copyright infringement.
changes, tempo, and style. Walser presented a detailed, technical analysis broken down by
measure. Walser also acknowledged that one measure in One was more similar to another,
older song than it was to Thank God. The defendants moved for summary judgment, arguing
that the plaintiffs failed to present an issue of triable fact under the ninth circuit’s extrinsic
test for substantial similarity.
The Court found that in order to be triable, there noted to be an "indicia of a sufficient
disagreement concerning the substantial similarities of the two works." The Court found
that Swirsky's expert adequately defined the similarities, so the case should be heard by a
jury.

This case did not rule on whether there was actually an infringement. The focus of the case
was on the “triability of the issue”.

Case was remanded back to the lower court to determine whether there was an
infringement.

UPDATE: MC WON THE CASE!

https://www.billboard.com/articles/news/74345/carey-wins-suit-over-stolen-song
“U.S. District Judge Christina Snyder said there was a "lack of melodic similarity between
the two songs." The judge did not find any "similarity in key, harmonic structure, tempo, or
genre" between the songs, the ruling stated.”
The Trial Court found for Random House. The Cavaliers appealed.
The Trial Court found that many of the elements that the Cavaliers' claimed were being
infringed were just general ideas or stock characters, and those are not protectable by Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 62 F.2d 1157
copyright. (9th Cir. 1977)
The Court found that the copyrightable elements of the Cavaliers' work were not
substantially similar to Random House's work. Shortly after the children’s television show HR Pufnstuf was launched in 1969, the creators,
The Appellate Court affirmed. Sid and Marty Krofft, were approached by a marketing firm, Needham, about using the
The Appellate Court found that there is a two part analysis for infringement: characters in a series of ads for McDonalds. After development on the ads began, Needham
• The extrinsic test which is an objective comparison of specific expressive elements, informed the Kroffts that the campaign had been cancelled. However, Needham hired
and former Pufnstuf employees, including the voice actor for many of the characters, and in 1971
• The intrinsic test which is a subjective comparison that focuses on whether a premiered the first of many “McDonaldland” commercials using elements noticeably similar
reasonable audience would find the "total concept and feel" of the works to be to those found in HR Pufnstuf.
similar.
The Court looked at the fact of the case and concluded that neither the works as a whole, “Substantial Similarity”
nor specific elements of the works were substantially similar enough to rise to the level of On the cross-appeal by
infringement. the Defendants the Court
evaluated whether the
Swirsky v. Carey, 376 F.3d 841 (9th Cir. 2004) jury erred in its
(Sana may way for the readers to actually hear the songs while studying eh no?) infringement finding. In
laying out the analysis
http://mcir.usc.edu/cases/2000-2009/Pages/swirskycarey.html for infringement, the
Open the link if you wanna hear it. Lol! I should have done this with the other cases about Court recognized that
song infringement. ‘copying’ may be shown
by proving “access” and
In 1997, Seth Swirsky (plaintiff) and Warryn Campbell (plaintiff) composed the song “One “substantial similarity.”
of Those Love Songs” (One). The song was recorded by musical group Xscape and released In this case there was no
in May 1998. In 1999, Mariah Carey, James Harris III, and Terry Lewis (defendants) issue with ‘access’ given
composed the song “Thank God I Found You” (Thank God). The defendants recorded Thank the initial collaboration
God, and it was released in November 1999. Both One and Thank God were R&B songs. The between the Kroffts and
plaintiffs sued the defendants for copyright infringement of the chorus only. The plaintiffs the ad agency. The
presented expert testimony from Dr. Robert Walser, who was chair of the Musicology Defendants argued, however, that there was not a “substantial similarity” between the two
Department at the University of California at Los Angeles. Walser concluded that the productions, listing numerous differences between the two, and at one point describing in
choruses in both songs were substantially similar based on melodies, bass lines, chord detail the attire of HR Pufnstuf compared to that of Mayor McCheese.

pg. 45
The Court engaged in lengthy discussion of the idea-expression dichotomy alluded to in
Arnstein; basically, that one is free to copy an idea but that copyright and infringement
focus on the expression of ideas.
Extrinsic and Intrinsic Tests
The Defendants did not dispute copying the Pufnstuf idea: a fantasyland filled with diverse
and fanciful characters in action. But they did argue the expressions of the idea were beyond
substantially similar when viewed with a dissection analysis. Their argument was premised
on attention paid to constituent parts of the Pufnstuf series — characters, setting, and plot
— and pointing out the dissimilarities between these parts and those of the McDonaldland
commercials.
The Court was unpersuaded by the Defendants position, and declared an ‘extrinsic’ test for
substantial similarity was insufficient. The extrinsic test was deemed as one that included
analytical dissection and expert testimony, and is not affected by the trier of fact. The
extrinsic test may be comprised of a set of criteria which can be listed and analyzed, and
requires examining, for example, “the type of artwork involved, the materials used, the
subject matter, and the setting for the subject.”
But the Court believed one must also apply an ‘intrinsic’ test – a consideration of the
expression of the idea as a whole – in order to properly determine infringement. This
determination is to be made by a reasonable person, making it a question suited to a jury.
Of the Defendant’s arguments, the Court noted that they improperly tried to remove each
individual element – the characters, setting, etc. – from the whole, and that the Court “[did
not believe] that the ordinary reasonable person, let alone a child, viewing these works will
even notice that Pufnstuf is wearing a cummerbund while Mayor McCheese is wearing a
diplomat’s sash.”
The Court ultimately found the trial court jury had not erred in its finding of substantial
similarity between HR Pufnstuf and the McDonaldsland advertisements.
NOTE:
• The extrinsic test, which looks at specific criteria that can be listed and analyzed
(type of artwork, materials used, subject matter). This can be decided as a matter
of law and with expert testimony.
• The intrinsic test, which considers the impressions of the average reasonable
reader or spectator. This is a mater of fact and should be decided by a jury.
The Court applied the tests and found that while under the extrinsic test, the works were
not substantially similar, McDonald's characters still invoked the same "concept and feel"
as the Kroffts. Therefore it was still an infringement.
The Court noted that "duplication or near identity is not necessary to establish
infringement."
4. The Distribution Right Potter novels and two companion books that
Capitol Records, Inc. v. Thomas, 579 F.Supp. 2d 1210 (D. Minn. 2008)
Jammie Thomas (defendant) downloaded and distributed copyright-protected songs, using
the peer-to-peer file-sharing program Kazaa. Capitol Records, Incorporated and other
recording companies (plaintiffs) held exclusive copyrights in 24 sound recordings. The
plaintiffs sued Thomas, seeking injunctive relief and statutory damages.
A Person who makes an unauthorized copy or phonerecord of a copyrighted work for the
purposes of uploading it onto a peer-to-peer network, absent a defense such as fair use,
violates the reproduction right. That person might also be liable for indirect infringement
to the extent that her conduct caused others to engage in unauthorized reproduction,
adaptation, public distribution, public performance, or public display of another’s
copyrighted work. The end user who accesses or downloads the unauthorized copy or
phonorecord may be liable for direct infringement, depending on the facts of the case and
the applicability of defenses, such as the fair use defense.
Direct proof of actual dissemination is not required by the Copyright Act. Plaintiffs are free
to employ circumstantial evidence to attempt to prove actual dissemination. Overall, it is
apparent that implementation of Congress’s intent through a plain meaning interpretation
of the Copyright Act will not leave copyright holders without recourse when infringement
occurs over a peer-to-peer network.
5. The Right to Prepare Derivative Works
Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc., 150 F.3d 132 (2d
Cir. 1998)
We note a potential source of confusion in our copyright jurisprudence over the use of the
term "transformative."
A "derivative work," over which a copyright owner has exclusive control, is defined as a
work based upon one or more pre-existing works, such as a translation, musical
arrangement, dramatization, fictionalization, motion picture version, sound recording, art
reproduction, abridgment, condensation, or any other form in which a work may be recast,
transformed, or adapted.
Although derivative works that are subject to the author's copyright transform an original
work into a new mode of presentation, such works - unlike works of fair use - take
expression for purposes that are not "transformative."
In the instant case, since The SAT has transformed Seinfeld's expression into trivia quiz
book form with little, if any, transformative purpose, the first fair use factor weighs
against defendants.
Warner Bros. Entertainment, Inc. v. RDR Books, 75 F.Supp. 2d 513 (S.D.N.Y. 2008)
Plaintiff J.K. Rowling authored the Harry Potter
books that plaintiff Warner Bros. Entertainment,
Inc. produced as films. Defendant RDR Books
published The Lexicon: An Unauthorized Guide to
Harry Potter Fiction and Related Materials (the
Lexicon), an “A-to-Z guide to the creatures,
characters, objects, events, and places that exist in
the world of Harry Potter.” To create The Lexicon,
defendant relied solely on Rowling’s seven Harry
expanded on the fictional history and mythical
creatures in the novels.
As regards fair use
The court held that the fair use factors, “weighed
together in light of the purposes of copyright law,”
did not support a finding of fair use. Regarding
the nature and purpose of the use, the court found
that the factor weighed against a finding of fair
pg. 46
use because “although the Lexicon has a transformative purpose, its actual use of the
copyrighted works is not consistently transformative.” Regarding the substance and amount
of the work used, the court found that the Lexicon took more of the copyrighted works than
was reasonably necessary in relation to its purpose as a reference guide. The court also
found that both the creative nature of the copyrighted works and the potential for harm that
the Lexicon posed to the market for plaintiff’s works weighed against a finding of fair use.
According to the court, “reference guides to works of literature should generally be
encouraged by copyright law” but “they should not be permitted to ‘plunder’ the works of
original authors . . . ‘without paying the customary price’ . . . lest original authors lose
incentive to create new works that will also benefit the public interest.”
As regards Derivative Work
Plaintiffs allege that the Lexicon not only violates their right of reproduction, but also their
right to control the production of derivative works but the court rejected this argument. It
held that the act of condensing, synthesizing, and reorganizing the preexisting material in
an A-to-Z reference guide does not recast the material in another medium to retell the story
of Harry Potter, but instead gives the copyrighted material another purpose which is to give
the readers ready understanding of individual elements in the elaborate world of Harry
Potter that appear in voluminous and diverse sources. As a result, the Lexicon no longer
"represents the original works of authorship." Under these circumstances, and because the
Lexicon does not fall under any example of derivative works listed in the statute, Plaintiffs
have failed to show that the Lexicon is a derivative work.
Mirage Editions, Inc. v. Albuquerque A.R.T. Company, 856 F.2d 1341 (9th Cir. 1988),
cert. denied, 489 U.S. 1018 (1989)
Albuquerque A.R.T. Co. (A.R.T.) (defendant) was a company that purchased art books and
prints, removed the individual art works from the books and prints, and mounted the
removed works onto tiles for sale and display. Mirage Editions, Inc. (Mirage) (plaintiff) was
the owner of several copyrights for art created by Patrick Nagel. Many of Nagel’s individual
works were selected and licensed for use in a compilation book featuring Nagel’s art. A.R.T.
took pages from the compilation book and applied the pages to tiles via A.R.T.’s mounting
process. Mirage brought a claim of copyright infringement against A.R.T. for unauthorized
use of the works contained within the compilation book.
The Trial Court found for Mirage. ART appealed.
The Trial Court found that ART had infringed on Mirage's copyrights by preparing a
derivative work. The Appellate Court affirmed.
The Appellate Court noted that 17 U.S.C. §109(a) (aka the first sale doctrine), gives someone
who buys a book the right it or lend it or do anything they want with it, in general.
So if ART was buying Mirage's books and then selling them in a bookstore, there would be
no copyright infringement.
However, the Court found that §109(a) did not give someone the right to "recast, transform,
or adapt" a work. The right to prepare derivative works remains with the original copyright
holder.
The Court found that ripping the book apart and turning it into ceramic tiles was enough of
an alteration to constitute a derivative work, and therefore it was copyright infringement
under 17 U.S.C. §106(2).
What appellant has clearly done here is to make another version of Nagel's art works, and
that amounts to preparation of a derivative work. By borrowing and mounting the
preexisting, copyrighted individual art images without the consent of the copyright
proprietors — Mirage and Dumas as to the art works and Van Der Marck as to the book —
appellant has prepared a derivative work and infringed the subject copyrights.
Appellant's contention that since it has not engaged in "art reproduction" and therefore its
tiles are not derivative works is not fully dispositive of this issue. Appellant has ignored the
disjunctive phrase "or any other form in which a work may be recast, transformed or
adapted." The legislative history of the Copyright Act of 1976 indicates that Congress
intended that for a violation of the right to prepare derivative works to occur "the infringing
work must incorporate a portion of the copyrighted work in some form."
The language "recast, transformed or adapted" seems to encompass other alternatives
besides simple art reproduction. By removing the individual images from the book and
placing them on the tiles, perhaps the appellant has not accomplished reproduction. We
conclude, though, that appellant has certainly recast or transformed the individual images
by incorporating them into its tile-preparing process.
Contrast this decision with Lee v. A.R.T. Company (125 F.3d 580 (7th Cir. 1997)), which
came to the exact opposite conclusion. (THE NEXTCASE)
Lee v. A.R.T. Company, 125 F.3d 580 (7th Cir. 1997)
Lee was an artist who owned the copyright to her paintings. She authorized postcards to be
made of her work, which were then sold in stores.
ART legitimately bought copies of Lee's postcards and glued the individual pages onto
ceramic tiles, which they sold. Lee sued for copyright infringement.
Lee argued that she had the right to control the distribution of her copyrighted work, and
that had never authorized ART to make ceramic tiles.
ART argued that they had legitimately purchased the postcards and therefore had the right
to do anything they wanted with them, including ripping them apart, gluing the pages to
ceramic tiles and selling them.
The Trial Court found to ART. Lee appealed. The Trial Court found that Lee retained the
right to authorize derivative works under 17 U.S.C. §106(2). However, since ART had not
altered the work in anyway, they could not theoretically claim a copyright on what they had
done. Therefore no derivative work had been created. The Appellate Court affirmed.
The Appellate Court noted that 17 U.S.C. §109(a) (aka the first sale doctrine), gives someone
who buys a work the right it or lend it or do anything they want with it, in general.
The Court found that Lee had not suffered any economic loss because she had already
"captured the value" of the original sale of the postcard.
pg. 47
Any subsequent alterations that consume or destroy the postcard lack economic
significance. The Court found that mounting the artwork on a ceramic tile wasn't an
alteration that resulted in a derivative work. It was more like putting a painting in a frame.
And you wouldn't say that someone who buys a painting is violating a copyright by putting
it into a frame of their choosing.
Since the work wasn't recast, transformed, adapted, or altered, it couldn't be considered a
derivative work, so §106(2) did not apply.
Contrast this decision with Mirage Editions, Inc. v. Albuquerque A.R.T. Company (856 F.2d
1341 (9th Cir. 1988)), which came to the exact opposite conclusion. (THE PREVIOUS CASE)
6. The Direct Infringer The Court found that there was evidence to show that Klemesrud and Netcom had the
Religious Technology Center v. Netcom On-Line Communication Services, Inc.,
907 F. Supp. 1361 (N.D. Cal. 1995)
Direct Infringement; Infringement consists of the unauthorized exercise of one of the
exclusive rights of the copyright holder. Direct infringement does not require intent or any
particular state of mind, although willfulness is relevant to the award of statutory damages.
Erlich was a former Scientologist who was now critical of the group. He posted some
Scientology documents in an internet newsgroup. The Scientologists informed Erlich that
he was infringing on their copyright.
In addition to sending notice to Erlich, they also notified Klemesrud, who owned the website
Erlich used to post the documents, as well as Netcom, which was Klemesrud's internet
service provider, and told them to block Erlich.
After Klemesrud and Netcom took no action to block Erlich, the Scientologists sued
everybody for copyright infringement.
The Scientologists argued that when Erlich uploaded the documents, they were temporarily
stored on Klemesrud's computer, then copies were made and sent by Netcom to places all
over the internet.
That would be a violation of the Scientologists' right to reproduce, the right to distribute,
and the right to publicly display under 17 U.S.C. §106.
Klemesrud and Netcom argued that they weren't responsible for what Erlich was doing, and
they did not have the capability of screening their system to find every potential infringer.
The Trial Court denied Klemesrud and Netcom's motion for summary judgment.
The Trial Court found that the postings were definitely fixed enough to be copyrightable
copies.
The Court found that Klemesrud and Netcom were not liable for direct infringement because
the copying that occurred between the computers on the internet was incidental to Erlich's
intentional copying of the documents to the internet.
The Court likened the Klemesrud and Netcom to a photocopy machine where the public can
make copies.
The Court noted that if Klemesrud and Netcom were liable, then where would it end? Every
computer connected to the internet copies data from other places on the internet, so the total
number of potential infringers would be unreasonably large.
The Court found that even thought §106 is s strict liability Statute, there should be some
element of volition or causation which is lacking where a defendant's system is merely used
to create a copy by a third party.
The Court looked to Gershwin Publishing Corp. v. Columbia Artists Management, Inc. (443
F.2d 1159 (1971) which defined contributory copyright infringement as where "one who,
with knowledge of the infringing activities, induces, causes, or materially contributes to the
infringing conduct."
The Court found that Klemesrud and Netcom should have had knowledge of Erlich's
activities.
The Court found that Klemesrud and Netcom did not relinquish control of their system to
Erlich, and could have stopped him if they wanted to. Their inaction rose to the level of
substantial aid, and could constitute contributory copyright infringement.
The Court defined vicarious copyright infringement as where a defendant has the right and
ability to control an infringer's acts, and receives direct financial benefit from the
infringement.
ability to control Erlich's postings.
However, the Court found that there was no evidence that Erlich's infringement gave any
financial benefit to Klemesrud or Netcom.
Later Congress enacted 17 U.S.C. §512, which establishes "safe harbor" and provides
immunity from infringement liability under certain circumstances for internet service
providers.
7. Vicarious and Contributory Infringement
Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996)
Contributory infringement originates in tort law and stems from the notion that one who
directly contributes to another's infringement should be held accountable.
Cherry Auction ran a swap meet. Vendors would rent tables and sell whatever they wanted,
while Cherry Auction collected an entrance fee from buyers, and provided advertising.
Shockingly, some of the vendors were found to be selling bootleg music!
Fonovisa, who owned the copyright on some of the bootleg music, sued Cherry Auction for
copyright infringement.
Fonovisa argued that Cherry Auction was (or should have been) aware that vendors were
selling illegal music on their premises.
Therefore, Cherry Auction was guilty of contributory copyright infringement, and vicarious
copyright infringement.
Cherry Auction argued that they only provided the space, it wasn't their job to police what
the vendors sold.
The Trial Court found for Cherry Auction in summary judgment. Fonovisa appealed.
pg. 48
The Trial Court found that, as a matter of law, Cherry Auction could not be liable for sales
by vendors who leased their premises. The Appellate Court reversed and remanded for trial.
The Appellate Court looked to Shapiro, Bernstein and Co. v. H.L. Green Co. (316 F.2d 304
(1963)), and found that with regard to vicarious liability, there were two lines of cases:
In "landlord-tenant" cases, the courts had held that a landlord who lacked knowledge of
infringing acts of its tenants and who exercised no control over the leased premises was not
liable for infringing sales by the tenants.
In "dance hall" cases, the courts had found that a landlord can be liable for infringing
performances when the landlord could control the premises, and obtained a direct financial
benefit from the audience who paid to enjoy the infringing performance.
The Court found that since Cherry Auction retained the right to kick any vendor out the
'controlled the premises', and since they collected admission at the door from people who
came to buy bootleg music, they obtained a 'direct financial benefit', so there was evidence
they were vicarious copyright infringers.
The Court defined contributory copyright infringement as where "one who, with knowledge
of the infringing activities, induces, causes, or materially contributes to the infringing
conduct."
The Court found that Cherry Auction knew about the bootleg music, and advertised to get
more people to come to the swap meet, there was evidence that they were contributory
copyright infringers.
Perfect 10, Inc. v. Amazon.com, Inc., supra
A computer owner that stores an image as electronic information and provides that
electronic information directly to a user violates the copyright holder’s exclusive right to
display the image. The district court’s reasoning and “server test” comport with the language
in the Copyright Act, and, therefore, its ruling is correct as far as Perfect 10’s (Plaintiff)
display rights. Based on the plain language of the statute, a person displays a photographic
image by using a computer to fill a computer screen with a copy of the photographic image
fixed in the memory of the computer. Google’s (Defendant) computers store thumbnail
versions of Plaintiff’s copyrighted images and communicate copies of those thumbnails to
Defendant’s users. Therefore, Plaintiff has made a prima facie case that Defendant’s
communication of its stored thumbnail images directly infringes Plaintiff’s display right.
Conversely, Defendant’s computers do not store the full0siuze photographic images, but
merely in-line links to, and frames, those images. Therefore, Google (Defendant) does not
have a copy of the images for purposes of the Copyright Act, i.e., it does not have any
“material objects . . . in which a work is fixed . . . and from which the work can be perceived,
reproduced, or otherwise communicated” and therefore Google (Defendant) cannot
communicate a copy as defined under 17 U.S.C. § 101. While Google (Defendant) may
facilitate access to infringing copies, such assistance only implicates contributory liability for
copyright infringement, not direct liability. Even if such in-line linking and framing may
cause some computer users to believe they are viewing a single Google (Defendant) web
page, the Copyright Act, unlike the Trademark Act, does not protect a copyright holder
against acts that cause consumer confusion. Finally, the same analysis is applicable to
Defendant’s cache.
Perfect 10, Inc. v. Visa International Service Association, 494 F.3d 788 (9th Cir.
2007), cert. denied, 128 S. Ct. 2871 (2008)
Perfect 10, Incorporated (plaintiff) published a magazine named “PERFECT10” and a
website www.perfect10.com that each contained copyrighted images of beautiful models.
Perfect 10 alleges that various websites based in several countries have stolen its
proprietary images infringed its copyright in the images by altering the images and selling
them online.
Perfect 10 notified Visa International Service Association (defendant) and other banks and
processing services of websites containing infringing images and asked the defendants to
stop processing payments for those sites.
The Visa and Master-Card entities are associations of member banks that issue credit cards
to consumers, automatically process payments to merchants authorized to accept their
cards, and provide information to the interested parties necessary to settle the resulting
debits and credits.
The said banks and processing services of websites refused to do so.
Visa received a fee for each transaction, and Visa’s user agreement provided that member
banks must not provide services to merchants committing certain illegal activities.
Perfect 10 sued Visa and the other defendants for secondary copyright infringement under
theories of contributory and vicarious infringement.
Perfect 10 has sued Defendants, not the direct infringers, claiming contributory and
vicarious copyright infringement because Defendants process credit card charges incurred
by customers to acquire the infringing images.
Perfect 10 alleges that Defendants have the right and ability to control the content of the
infringing websites by refusing to process credit card payments to the websites, enforcing
their own rules and regulations, or both.
Visa filed a motion to dismiss for failure to state a claim. The district court granted Visa’s
motion and dismissed the claim. Perfect 10 appealed.
There was no contributory copyright infringement
One contributorily infringes when he (1) has knowledge of another's infringement and (2)
either (a) materially contributes to or (b) induces that infringement. Viewed in isolation, the
language of the tests described is quite broad, but when one reviews the details of the actual
"cases and controversies" before the relevant court in each of the test defining cases and the
actual holdings in those cases, it is clear that the factual circumstances in this case are not
analogous. To find that Defendants' activities fall within the scope of such tests would
require a radical and inappropriate expansion of existing principles of secondary liability
and would violate the public policy of the United States.
To state a claim of contributory infringement, Perfect 10 must allege facts showing that
Defendants induce, cause, or materially contribute to the infringing conduct.
Credit cards serve as the primary engine of electronic commerce and that Congress has
determined it to be the "policy of the United States—(1) to promote the continued
development of the Internet and other interactive computer services and other interactive
media [and] (2) to preserve the vibrant and competitive free market that presently exists
for the Internet and other interactive computer services, unfettered by Federal or State
regulation.
Vicarious infringement is a concept related to, but distinct from, contributory infringement.
Whereas contributory infringement is based on tort-law principles of enterprise liability and
imputed intent, vicarious infringement's roots lie in the agency principles of respondeat
superior.
To state a claim for vicarious copyright infringement, a plaintiff must allege that the
defendant has (1) the right and ability to supervise[13] the infringing conduct and (2) a
direct financial interest in the infringing activity.
Defendants' conduct alleged in Perfect 10's first amended complaint fails to state a claim for
vicarious copyright infringement.
8. Liability of Device Manufacturers
Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 125 S. Ct. 2764 (2005)
Grokster, LTD and StreamCast Network distributed fee software that allowed the sharing
of files in a peer to peer network. This avoided the need for central servers and costly server
storage and works faster. Since files can go from computer to computer and not through the
server it is safer and cost efficient. This program was used by universities, government
agencies, corporations, libraries and then private users. Private users began sharing
pg. 49
copyrighted music and video files without authorization. Grokster used technology called
FastTrack and Stream Cast used Gnutella. The files shared do not go to a central location
so Grokster and StreamCast did not know when the files were being copied but if they had
searched there software they would see the type of files being shared. It was shown that
StreamCast gave software called OpenNap labeled the best alternative to Napster in the
hopes to take all the Napster users that had to stop using that software after Napster was
sued. Grokster had a program called OpenNap that allowed users to search for Napster files.
Grokster and StreamCast received revenues from posting advertising all over its program
software. MGM was able to show that some 90 percent of the files being shared where
copyrighted files. Also there is no evidence that either company tried to filter or stop
copyright infringement. The district court granted summary judgment in favor of Grokster
and Stream Case because although users of the software did infringe MGM’s property there
was no proof there the distributors had actual knowledge of specific acts of infringement.
MGM appealed.
c) Right to preserve integrity of work, 
object to any distortion, mutilation or other
modification which would be prejudicial to his honor or reputation; and 

d) To restrain the use of his name with respect to any work not of his own creation
or in a distorted version of his work. (Sec.193, IPC)
GR: Moral rights can be waived in writing, expressly so stating such waiver.
XPN: Even in writing, waiver is not valid if:
1. Use the name of the author, title of his work, or his reputation with respect to any
version/adaptation of his work, which because of alterations, substantially tend
literary/artistic reputation of another author
2. Use name of author in a work that he did not create
*3. Data privacy Act – protects raw data 


1. Moral Rights
When a distributor takes affirmative steps to foster infringement through the use of its
product, the distributor will be liable for that infringement conducted by 3rd parties
Article 6bis, Berne Convention for the Protection of Literary and Artistic
Works
The appeals court stated that since these distributors did not have actual knowledge, did Moral Rights:
not partake in, or monitor the file sharing they are not directly liable for the infringement. (1) Independently of the author's economic rights, and even after the transfer of
However the court erred in finding they were not secondarily liable for the actions of the the said rights, the author shall have the right to claim authorship of the work and to object
users of its products. There is a balance between growing technologies and copyright to any distortion, mutilation or other modification of, or other derogatory action in relation
protection, but to not make distributors liable will make copyright protections meaningless. to, the said work, which would be prejudicial to his honor or reputation.
The lower court looked to the commerce doctrine now codified which states that a product
(2) The rights granted to the author in accordance with the preceding paragraph
must be capable of commercially significant noninfridging uses and if so, no secondary
shall, after his death, be maintained, at least until the expiry of the economic rights, and
liability would follow. This court finds that interpretation too narrow. Here this court
shall be exercisable by the persons or institutions authorized by the legislation of the
considers the doctrine of inducement to also be relevant. When a distributor promotes using
country where protection is claimed. However, those countries whose legislation, at the
its device to infringe copyright material, shown by affirmative steps to foster infringement
moment of their ratification of or accession to this Act, does not provide for the protection
this is inducement and the distributor will be liable for 3rd party infringement. All the after the death of the author of all the rights set out in the preceding paragraph may provide
actions of the companies is enough to show a genuine issue of material fact, thus the court that some of these rights may, after his death, cease to be maintained.
reversed the summary judgment ruling and remanded the case upon those findings. (3) The means of redress for safeguarding the rights granted by this Article shall
be governed by the legislation of the country where protection is claimed.
N. Related Rights
Sections 193-199, IPC
RIGHTS OF AN AUTHOR SECTION 193. Scope of Moral Rights. — The author of a work shall, independently of
the economic rights in Section 177 or the grant of an assignment or license with respect to
1. Economic rights – The right to carry out, authorize or prevent the following acts: such right, have the right:
b) Reproduction of the work or substantial portion thereof 
 193.1. To require that the authorship of the works be attributed to him, in
c) Carry-out derivative work (dramatization, translation, adaptation, abridgement, particular, the right that his name, as far as practicable, be indicated in a prominent way
arrangement or other transformation of the work) 
 on the copies, and in connection with the public use of his work;
d) First distribution of the original and each copy of the work by sale or other forms 193.2. To make any alterations of his work prior to, or to withhold it from
of transfer of ownership 
 publication;
e) Rental right 
 193.3. To object to any distortion, mutilation or other modification of, or other
f) Public display 
 derogatory action in relation to, his work which would be prejudicial to his honor or
g) Public performance 
 reputation; and
h) Other communications to the 
public. 
 193.4. To restrain the use of his name with respect to any work not of his own
creation or in a distorted version of his work. (Sec. 34, P.D. No. 49)
2. Moral rights – For reasons of professionalism and propriety, the author has the right:
SECTION 194. Breach of Contract. — An author cannot be compelled to perform his
a) To require that the authorship of 
the works be attributed to him 
(attribution
contract to create a work or for the publication of his work already in existence. However,
right) 

he may be held liable for damages for breach of such contract. (Sec. 35, P.D. No. 49)
b) To make any alterations of his 
work prior to, or to withhold it 
from publication SECTION 195. Waiver of Moral Rights. — An author may waive his rights mentioned in

 Section 193 by a written instrument, but no such waiver shall be valid where its effects is
to permit another:

pg. 50
 195.1. To use the name of the author, or the title of his work, or otherwise to make
use of his reputation with respect to any version or adaptation of his work which, because
of alterations therein, would substantially tend to injure the literary or artistic reputation
of another author; or
195.2. To use the name of the author with respect to a work he did not create. (Sec.
36, P.D. No. 49)
SECTION 196. Contribution to Collective Work. — When an author contributes to a
collective work, his right to have his contribution attributed to him is deemed waived unless
he expressly reserves it. (Sec. 37, P.D. No. 49)
SECTION 197. Editing, Arranging and Adaptation of Work. — In the absence of a
contrary stipulation at the time an author licenses or permits another to use his work, the
necessary editing, arranging or adaptation of such work, for publication, broadcast, use in
a motion picture, dramatization, or mechanical or electrical reproduction in accordance with
the reasonable and customary standards or requirements of the medium in which the work
is to be used, shall not be deemed to contravene the author's rights secured by this chapter.
Nor shall complete destruction of a work unconditionally transferred by the author be
deemed to violate such rights. (Sec. 38, P.D. No. 49)
SECTION 198. Term of Moral Rights. —
198.1. The rights of an author under this chapter shall last during the lifetime of
the author and for fifty (50) years after his death and shall not be assignable or subject to
license. The person or persons to be charged with the posthumous enforcement of these
rights shall be named in writing to be filed with the National Library. In default of such
person or persons, such enforcement shall devolve upon either the author's heirs, and in
default of the heirs, the Director of the National Library.
198.2. For purposes of this Section, "Person" shall mean any individual,
partnership, corporation, association, or society. The Director of the National Library may
prescribe reasonable fees to be charged for his services in the application of provisions of
this Section. (Sec. 39, P.D. No. 49)
SECTION 199. Enforcement Remedies. — Violation of any of the rights conferred by this
Chapter shall entitle those charged with their enforcement to the same rights and remedies
available to a copyright owner. In addition, damages which may be availed of under the
Civil Code may also be recovered. Any damage recovered after the creator's death shall be
held in trust for and remitted to his heirs, and in default of the heirs, shall belong to the
government. (Sec. 40, P. D. No. 49)
2. Right to Proceeds in Subsequent Transfers (Droit De Suite or Follow 212.4. Fair use of the broadcast subject to the conditions under Section 185.
Up Rights) (Sec. 44, P.D. No. 49a)
Sections 200-201, IPC
SECTION 200. Sale or Lease of Work. — In every sale or lease of an original work of
painting or sculpture or of the original manuscript of a writer or composer, subsequent to
the first disposition thereof by the author, the author or his heirs shall have an inalienable
right to participate in the gross proceeds of the sale or lease to the extent of five percent
(5%). This right shall exist during the lifetime of the author and for fifty (50) years after his
death. (Sec. 31, P.D. No. 49)
SECTION 201. Works Not Covered. — The provisions of this Chapter shall not apply to
prints, etchings, engravings, works of applied art, or works of similar kind wherein the
author primarily derives gain from the proceeds of reproductions. (Sec. 33, P.D. No. 49)
3. Neighboring Rights
Section 202, IPC
SECTION 202. Definitions. — For the purpose of this Act, the following terms shall have
the following meanings:
202.1. "Performers" are actors, singers, musicians, dancers, and other persons who act, sing,
declaim, play in, interpret, or otherwise perform literary and artistic work;
202.2. "Sound recording" means the fixation of the sounds of a performance or of other
sounds, or representation of sound, other than in the form of a fixation incorporated in a
cinematographic or other audiovisual work;
202.3. An "audiovisual work or fixation" is a work that consists of a series of related images
which impart the impression of motion, with or without accompanying sounds, susceptible
of being made visible and, where accompanied by sounds, susceptible of being made audible;
202.4. "Fixation" means the embodiment of sounds, or of the representations thereof, from
which they can be perceived, reproduced or communicated through a device;
202.5. "Producer of a sound recording" means the person, or the legal entity, who or which
takes the initiative and has the responsibility for the first fixation of the sounds of a
performance or other sounds, or the representation of sounds; cd
202.6. "Publication of a fixed performance or a sound recording" means the offering of copies
of the fixed performance or the sound recording to the public, with the consent of the right
holder: Provided, That copies are offered to the public in reasonable quality;
202.7. "Broadcasting" means the transmission by wireless means for the public reception of
sounds or of images or of representations thereof; such transmission by satellite is also
"broadcasting" where the means for decrypting are provided to the public by the
broadcasting organization or with its consent;
202.8. "Broadcasting organization" shall include a natural person or a juridical entity duly
authorized to engage in broadcasting; and
202.9. "Communication to the public of a performance or a sound recording" means the
transmission to the public, by any medium, otherwise than by broadcasting, of sounds of a
performance or the representations of sounds fixed in a sound recording. For purposes of
Section 209, "communication to the public" includes making the sounds or representations
of sounds fixed in a sound recording audible to the public.
Section 212, IPC
SECTION 212. Limitations on Rights. — Sections 203, 208 and 209 shall not apply where
the acts referred to in those Sections are related to:
212.1. The use by a natural person exclusively for his own personal purposes;
212.2. Using short excerpts for reporting current events;
212.3. Use solely for the purpose of teaching or for scientific research; and
a. Rights of Performers
Sections 203-207, IPC
SECTION 203. Scope of Performers' Rights. — Subject to the provisions of Section 212,
performers shall enjoy the following exclusive rights:
203.1. As regards their performances, the right of authorizing:
a. The broadcasting and other communication to the public of their
performance; and
b. The fixation of their unfixed performance.
203.2. The right of authorizing the direct or indirect reproduction of their
performances fixed in sound recordings, in any manner or form;
pg. 51
 203.3. Subject to the provisions of Section 206, the right of authorizing the first
public distribution of the original and copies of their performance fixed in the sound
recording through sale or rental or other forms of transfer of ownership;
203.4. The right of authorizing the commercial rental to the public of the original
and copies of their performances fixed in sound recordings, even after distribution of them
by, or pursuant to the authorization by the performer; and
203.5. The right of authorizing the making available to the public of their
performances fixed in sound recordings, by wire or wireless means, in such a way that
members of the public may access them from a place and time individually chosen by them.
(Sec. 42, P.D. No. 49a)
SECTION 204. Moral Rights of Performers. —
204.1. Independently of a performer's economic rights, the performer, shall, as
regards his live aural performances or performances fixed in sound recordings, have the
right to claim to be identified as the performer of his performances, except where the
omission is dictated by the manner of the use of the performance, and to object to any
distortion, mutilation or other modification of his performances that would be prejudicial to
his reputation.
204.2. The rights granted to a performer in accordance with Subsection 203.1 shall
be maintained and exercised fifty (50) years after his death, by his heirs, and in default of
heirs, the government, where protection is claimed. (Sec. 43, P.D. No. 49)
SECTION 205. Limitation on Right. —
205.1. Subject to the provisions of Section 206, once the performer has authorized
the broadcasting or fixation of his performance, the provisions of Sections 203 shall have no
further application.
205.2. The provisions of Section 184 and Section 185 shall apply mutatis mutandis
to performers. (n)
SECTION 206. Additional Remuneration for Subsequent Communications or
Broadcasts. — Unless otherwise provided in the contract, in every communication to the
public or broadcast of a performance subsequent to the first communication or broadcast
thereof by the broadcasting organization, the performer shall be entitled to an additional
remuneration equivalent to at least five percent (5%) of the original compensation he or she
received for the first communication or broadcast. (n)
SECTION 207. Contract Terms. — Nothing in this Chapter shall be construed to deprive
performers of the right to agree by contracts on terms and conditions more favorable for
them in respect of any use of their performance. (n)
Section 215, IPC
SECTION 215. Term of Protection for Performers, Producers and Broadcasting
Organizations. —
215.1. The rights granted to performers and producers of sound recordings under this law
shall expire:
a. For performances not incorporated in recordings, fifty (50) years from the end of the
year in which the performance took place; and
b. For sound or image and sound recordings and for performances incorporated therein,
fifty (50) years from the end of the year in which the recording took place.
215.2. In case of broadcasts, the term shall be twenty (20) years from the date the broadcast
took place. The extended term shall be applied only to old works with subsisting protection
under the prior law. (Sec. 55, P.D. No. 49a)
b. Rights of Producers of Sound Recording under the prior law. (Sec. 55, P.D. No. 49a)
Sections 208-210, IPC
SECTION 208. Scope of Right. — Subject to the provisions of Section 212, producers of
sound recordings shall enjoy the following exclusive rights:
208.1. The right to authorize the direct or indirect reproduction of their sound recordings,
in any manner or form; the placing of these reproductions in the market and the right of
rental or lending;
208.2. The right to authorize the first public distribution of the original and copies of their
sound recordings through sale or rental or other forms of transferring ownership; and
208.3. The right to authorize the commercial rental to the public of the original and copies
of their sound recordings, even after distribution by them by or pursuant to authorization
by the producer. (Sec. 46, P.D. No. 49a)
SECTION 209. Communication to the Public. — If a sound recording published for
commercial purposes, or a reproduction of such sound recording, is used directly for
broadcasting or for other communication to the public, or is publicly performed with the
intention of making and enhancing profit, a single equitable remuneration for the performer
or performers, and the producer of the sound recording shall be paid by the user to both the
performers and the producer, who, in the absence of any agreement shall share equally.
(Sec. 47, P.D. No. 49a)
SECTION 210. Limitation of Right. — Sections 184 and 185 shall apply mutatis mutandis
to the producer of sound recordings. (Sec. 48, P.D. No. 49a)
Section 215, IPC
SECTION 215. Term of Protection for Performers, Producers and Broadcasting
Organizations. —
215.1. The rights granted to performers and producers of sound recordings under this law
shall expire:
a. For performances not incorporated in recordings, fifty (50) years from the end of the year
in which the performance took place; and
b. For sound or image and sound recordings and for performances incorporated therein, fifty
(50) years from the end of the year in which the recording took place.
215.2. In case of broadcasts, the term shall be twenty (20) years from the date the broadcast
took place. The extended term shall be applied only to old works with subsisting protection
under the prior law. (Sec. 55, P.D. No. 49a)
c. Rights of Broadcasting Organizations
Sections 211, IPC
SECTION 211. Scope of Right. — Subject to the provisions of Section 212, broadcasting
organizations shall enjoy the exclusive right to carry out, authorize or prevent any of the
following acts:
211.1. The rebroadcasting of their broadcasts;
211.2. The recording in any manner, including the making of films or the
use of video tape, of their broadcasts for the purpose of communication to the public of
television broadcasts of the same; and
211.3. The use of such records for fresh transmissions or for fresh recording. (Sec. 52, P.D.
No. 49)
Section 215.2, IPC
SECTION 215. Term of Protection for Performers, Producers and Broadcasting
Organizations. —
215.2. In case of broadcasts, the term shall be twenty (20) years from the date the broadcast
took place. The extended term shall be applied only to old works with subsisting protection
pg. 52
 P.D. No. 285
Section 1. Whenever the price of any educational, scientific or cultural book, pamphlet and
other written materials, whether of domestic or foreign origin, has become so exorbitant as
to be detrimental to the national interest, as determined and declared by a committee
composed of the Secretary of Education and Culture, such book, pamphlet or written
material may be reprinted by the Government or by any private printer or printers for a
limited period and only for the purpose of making the same available to the people at
reasonable cost.
Section 2. The reprinted books, pamphlets and materials shall bear proper acknowledgment
of the source, authorship, copyright proprietors and past printers, if known, as well as the
names and addresses of the reprinter or reprinters. If abbreviated or edited in any manner,
such fact shall be stated be stated. The following inscription shall also appear on the covers
thereof: "Export of this Book or material from the Philippines is punishable by law." The
export of such reprints under any circumstance is hereby prohibited.
Section 3. The reprinting of the above books, pamphlets and materials shall be subject to
the condition that the reprinter shall pay, in local currency, a royalty of three per centum
(3%) of the gross selling price, if so demanded by the authors, publishers or copyright
proprietors concerned, whoever is legally entitled thereto: Provided, That in the case of non-
resident authors, publishers or copyright proprietors, the payment of the royalties shall be
made only to them personally in the Philippines or their respective representative or branch
offices in the Philippines.
Section 4. Any person, natural or judicial, who shall violate the provisions of this Decree
shall, upon conviction thereof, be punished by imprisonment of not less than Five Thousand
Pesos nor more than two Ten Thousand Pesos. If the violation is committed by a firm,
company or corporation, the manager or person in charge of the management of the business
thereof shall be responsible thereof. Books and materials printed or published or exported
in violation of this Decree shall be immediately confiscated and the establishment that
printed or published or exported them shall forthwith be closed and its operation
discontinued.
Section 239, IPC
SECTION 239. Repeals. —
239.1. All Acts and parts of Acts inconsistent herewith, more particularly Republic Act No.
165, as amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised
Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285, as amended,
are hereby repealed.
239.2. Marks registered under Republic Act No. 166 shall remain in force but shall be
deemed to have been granted under this Act and shall be due for renewal within the period
provided for under this Act and, upon renewal, shall be reclassified in accordance with the
International Classification. Trade names and marks registered in the Supplemental
Register under Republic Act No. 166 shall remain in force but shall no longer be subject to
renewal.
239.3. The provisions of this Act shall apply to works in which copyright protection obtained
prior to the effectivity of this Act is subsisting: Provided, That the application of this Act
shall not result in the diminution of such protection. (n)
In the Matter of the Charges of Plagiarism, etc., against Associate Justice Mariano
C. del Castillo, A.M. No. 10-7-17-SC, 15 October 2010 and 8 February 2011
We all know this by heart naman na siguro. From Into to Law, to Legal Profession, Legal
Writing, and Legal Ethics haha.
4. Moral Rights under US Law
Gilliam v. American Broadcasting Companies, Inc., 538 F.2d 14 (2d Cir. 1976)
Gilliam et. al. were the creators of a tv show called Monty Python. They sold the show to the
BBC. As part of their contract with BBC, BBC was not to make any significant edits to the
tv show after it was recorded. BBC broadcast the show, and then sold the rights to ABC.
When ABC broadcast the show they made significant edits to make room for commercials.
The agreement between the BBC and ABC did not contain any caveats about making edits.
Gilliam et. al sued ABC to make them stop broadcasting the show.
Gilliam argued that ABC's edits impaired the integrity of the original work.
The Trial Court found for ABC. Gilliam appealed. The Trial Court found that it wasn't clear
Gilliam et. al. owned the copyright to the tv show, therefore they couldn't control what
happened to it.
The Appellate Court reversed. The Appellate Court found that Gilliam et. al. were definitely
the owners of the copyright to the script. Since the tv show was a derivative work based on
the script, Gilliam et. al. had some rights to what happened to the tv show.
While BBC obtained the rights to the derivative work, they did not have any rights they did
not obtain from Gilliam et. al. Since Gilliam did not give them the right to edit the work,
they couldn't sell the right to edit the work to ABC.
The Appellate Court found that ABC had impaired the integrity of the work by making edits
can cutting out key jokes. That was a violation of the Lanham Act (15 U.S.C. §1125(a)),
which prevents someone from making a representation of a product that, even though
technically true, creates a false impression of the product's origin.
RE: Moral Rights–American copyright law, as presently written, does not recognize moral
rights or provide a cause of action for their violation, since the law seeks to vindicate the
economic, rather than the personal, rights of authors. Nevertheless, the economic incentive
for artistic and intellectual creation that serves as the foundation for American copyright
law cannot be reconciled with the inability of artists to obtain relief for mutilation or
misrepresentation of their work to the public on which the artists are financially dependent.
Thus courts have long granted relief for misrepresentation of an artist's work by relying on
theories outside the statutory law of copyright, such as contract law.
The Visual Artists Rights Act
Lilly v. Stout, 384 F.Supp. 2d 83 (D.D.C. 2005)
Plaintiff has alleged a claim under the Visual Artists Rights Act of 1990 (‘‘VARA’’). Congress
enacted VARA to ‘‘protect[ ] both the reputations of certain visual artists and the works of
art they create.’’ H.R. Rep No. 101-514, at 7, reprinted in 1990 U.S.C.C.A.N. 6915 (‘‘House
Report’’). These protections are enumerated in the individual rights of ‘‘attribution’’ and
‘‘integrity,’’ known collectively as ‘‘moral rights.’’ Id. As described in the House Report
accompanying the legislation, ‘‘[t]he former ensures that artists are correctly identified with
the works of art they create, and that they are not identified with works created by others.
The latter allows artists to protect their works against modifications and destructions that
are prejudicial to their honors or reputations.’’ Id. Specifically, the rights of attribution
include the right to (a) claim authorship of a work he or she created, and (b) prevent the use
of one’s name as the author of a work that he or she did not create. See 17 U.S.C. §106A(a)(1)-
(2). The rights of integrity permit an author to (a) prevent any intentional distortion,
mutilation, or other modification of his or her work, and (b) prevent any destruction of a
work of recognized stature. See 17 U.S.C. §106A(a)(3).
Martin v. City of Indianapolis, 192 F.3d 608 (7th Cir. 1999)
Martin is a sculptor and creator Symphony #1, a large, outdoor metal sculpture located on
city land. Martin had a contract with the city to preserve the sculpture and he engineered
pg. 53
the sculpture in a manner that it could later be removed and reassembled. Martin’s
sculpture received several awards and recognition by local press. The city then demolished
the sculpture without notifying Martin.
Martin brought suit against the city for a violation of his rights under the Visual Artists
Rights Act (VARA) of 1990. Martin attempted to offer evidence that his sculpture was one
of “recognized stature” under VARA through newspaper clippings and articles, rather than
expert testimony. Martin was granted summary judgment. The city appealed and Martin
cross-appealed.
A sculptor can prove a VARA claim after the unauthorized destruction of his sculpture by
showing that his work was one of “recognized stature?”
VARA protects an artists rights to claim authorship and to disclaim authorship in
appropriate circumstances, including the mutilation or modification of a “work of visual art”
that would be prejudicial to the artists honor or reputation. Moreover, the author of a work
of visual art shall have the right to prevent any destruction of “a work of recognized stature”
and any “intentionally or grossly negligent destruction of that works is a violation of that
right.”
To determine if a work of visual art is one of “recognized stature,” the court applied the test
articulated in Carter v. Helmsey-Spear? which found that a “recognized stature” is proved
if the work of art has: (1) merit or intrinsic worth and (2) public acknowledgement of the
merit. To satisfy the public acknowledgement prong, the work of visual art must be
recognized by art experts or members of the artistic community and is proven by expert
testimony as to stature of the work of art in the community.
The Court reasoned that the Carter test does not require the onerous burden of expert
testimony when a work of visual art is destroyed because it is impossible to elicit first-hand
expert testimony or evidence concerning the work since was no longer in existence. As a
result, Martin can introduce articles and letters concerning his work of visual art.
The Court reasoned that such evidence does not qualify as hearsay because the plaintiff is
not offering them for their truth, rather they are being offered to show that the declarant’s
said such statements about the plaintiffs work of visual art.
The Right of Attribution
Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003)
In 1948, Twentieth Century Fox Film Corporation (Fox) (plaintiff) was assigned the
copyright for Crusade in Europe, a television series based on a book of the same name.
Fox neglected to renew the copyright on the television series before the series expired in
1977, and the series subsequently entered the public domain.
However, the copyright for the Crusade in Europe book was renewed. In 1988, Fox
reacquired the television rights to the book, which included the right to license the original
Crusade in Europe television series.
In 1995, Dastar Corporation (Dastar) (defendant) purchased copies of the original version
of the Crusade in Europe television series, repackaged Dastar’s own version, and sold copies
of the video to retailers under a new title.
Dastar listed itself as the producer and distributer of the videos and made no
acknowledgments or references to the original television series or book.
In 1998, Fox brought a suit against Dastar, claiming that the sale of Dastar’s videos without
attribution to the original series amounted to reverse passing off, which was a violation of §
43(a) of the Lanham Act.
The Lanham Act does not prevent the unaccredited copying of a work
The Court did not answer the question. In an 8-0 opinion delivered by Justice Antonin
Scalia, the Court held that section 43(a) of the Lanham Act does not prevent the
unaccredited copying of an uncopyrighted work. Under the Lanham Act, the Court reasoned
that no false designation of origin was shown since the phrase "origin of goods," as used in
the Act, did not connote the person or entity that originated the ideas contained in the video,
but instead referred only to the producer's tangible video product. Thus, Dastar was the
"origin" of the products it sold as its own, without acknowledging the series, because it
marketed a video that copied a public domain television series. Justice Stephen G. Breyer
took no part in the consideration or decision of this case.
Public Performance
Columbia Pictures Indus. v. Redd Horne, Inc., 749 F.2d 154 (3d. Cir. 1984)
Redd Horne was the owner of several Maxwell's video rental stores. Instead of renting out
the videos, at Maxwell's customers would come in, get a movie, and would watch it in a
private video booth. This was back in the day before most people had VCRs at home.
Columbia, who made some of the movies Maxwell's was renting sued for copyright
infringement. Columbia argued that under 17 U.S.C. §106(4) they had an exclusive right to
public performance of their works.
Maxwell's argued that this wasn't any different than just renting the customers the
videotape and letting them watch it at home.
The Trial Court found for Columbia. Maxwell's appealed. The Appellate Court affirmed.
The Appellate Court noted that 17 U.S.C. §101 defines the term public performance as one
where it is performed "at a place open to the public or at any place where a substantial
number of persons outside of a normal circle of a family and its social acquaintances is
gathered."
The Appellate Court found that the store as a whole met the definition of being "open to the
public", even if you could argue that each individual booth was private.
The Court also found that since Maxwell's 'transmitted' the movie from the VCRs in the
front of the store to the tvs in the private booths, it met the "transmit or otherwise
communicate" definition in §101 for being a public performance of the work.
This would also cover things like a hotel sending movies to patrons watching in their private
hotel rooms.
pg. 54
Maxwell's argued that they were protected by the first sale doctrine in 17 U.S.C. §109(a),
but the Court found that showing a video is a significantly different transaction than renting
out a videotape.
Unlike a sale or rental, Maxwell's remained in physical control of the videotape at all time

Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008)

Public Performance, Public Display, and the Internet

Perfect 10, Inc. v. Amacon.com, Inc., 508 F.3d 1146 (9th Cir. 2007)

The Music Industry

Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2004)

Newton was a jazz musician who composed and recorded a song. He sold the rights to the
sound recording to ECM. However, he retained the rights to the composition.
Years later, another band called the Beastie Boys (represented by Diamond) sampled three
notes from Newton's song, and used them in a tape-loop for one of their songs. Diamond got
the rights to the sound recording from ECM, but did not get any rights from Newton.
Newton sued for copyright infringement. The Trial Court found for Diamond. Newton
appealed. The Trial Court found that a three-note sample was too short to be independently
copyrightable, and even if it was, Diamond's use was de minimus.
The Appellate Court affirmed. The Appellate Court found that Diamond's use of the sample
was de minimus.

The Court found that trivial copying does not constitute actionable infringement under
copyright law. The Court defined de minimus copying as that where the average audience
would not recognize the appropriation.
3 notes was way too short for the average person to recognize that it came from Newton's
song. The Court noted that Diamond had a license to use Newton's performance, he just
didn't have a license to use the underlying composition. Therefore, in order to be
infringement, the sample had to be such that the average person would recognize that the
notes were written by Newton.
Newton had argued that his flute playing technique was unique and that people could tell
he was playing just by listening to how the notes were sounded. But the Court found that
didn't matter because it was only the underlying notes that were the basis for the
infringement claim.
Newton should probably have added annotations to his sheet music so that his unique play
style would have been described in the underlying composition. That would have granted
him the protection he was looking for.

Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005)

Arista Records, LLC v. Launch Media, Inc., 578 F.3d 148 (2d Cir. 2009), cert. denied,
130 S.Ct. 1290 (2010)

pg. 55
 A.M. No. 02-1-06-SC
RULE ON SEARCH AND SEIZURE IN CIVIL ACTIONS FOR INFRINGEMENT
OF INTELLECTUAL PROPERTY RIGHTS
Section 1. Coverage. - This Rule shall govern the provisional seizure and impounding of
documents and articles in pending and intended civil actions for the purpose of preventing
infringement and preserving relevant evidence in regard to alleged infringement under
Republic Act No. 8293, otherwise known as the Intellectual property Code of the Philippines,
Article 50 of the Agreement on Trade Related Aspects of intellectual Property Rights,
otherwise known as TRIPS and other related laws and international conventions.
Section 2. The writ of search and seizure. - Where any delay is likely to cause irreparable
harm to the intellectual property right holder or where there is demonstrable risk of
evidence being destroyed, the intellectual property right holder or his duly authorized
representative in a pending civil action for infringement or who intends to commence such
an action may apply ex parte for the issuance of a writ of search and seizure directing the
alleged infringing defendant or expected adverse party to admit into his premises the
persons named in the order and to allow the search, inspection, copying, photographing,
audio and audiovisual recording or seizure of any document and article specified in the
order.
Section 3. Where application filed. - The application shall be filed with any of the Regional
Trial Courts of the judicial region designated to try violations of intellectual property rights
stationed at the place where the alleged violation occurred or is to occur, or me place to be
searched, at the election of the applicant. Provided, however, that where the complaint for
infringement has a1ready been filed, the application shall be made in the court where the
case is rending.
Section 4. Verified application and affidavits. - The applicant shall file a verified application
alleging the ground upon which it is based and the specific description and location of the
documents and articles to be searched, inspected, copied or seized and their value. It shall
also state the names of the applicant, his representative, witnesses and counsel who will
attend the search in the event that the application is granted. The application shall be
supported by affidavits of witnesses who personally know the facts and by authenticated or
certified documents.
The application shall contain a certification against forum shopping as prescribed by Section
5, Rule 7 of the 1997 Rules of Civil Procedure.
The applicant shall undertake in his application that he will not use any of the documents,
articles or information obtained by reason of the search and seizure for any purpose other
than in the action in which the writ is issued.
Section 5. Examination of applicant; record; confidentiality of proceedings. - The application
shall be acted upon within twenty-four (24) hours from its filing; The judge must, before
issuing the writ, examine in the form of searching questions and answers, in writing and
under oath or affirmation, the applicant and the witnesses he may produce on facts
personally known to them. The examination of the applicant and his witnesses shall be
recorded. Their sworn statements and their affidavits shall form part of the record of the
case.
The hearing on the application for the writ shall be held in the chambers of the judge. Court
personnel shall maintain the confidentiality of the application proceeding.lawphi1.net
The court may require the applicant to give other information necessary for the
identification of the articles and documents to be searched, inspected, copied or seized and
the premises to be searched. Where feasible, it may direct the applicant to submit copies
and photographs of the documents or articles to be seized and impounded.
Section 6. Grounds for the issuance of the order. - Before the Order can be issued, the
evidence proffered by the applicant and personally evaluated by the judge must show that:
a. the applicant is the right holder or his duly authorized representative;
b. there is probable cause to believe that the applicant's right is being infringed or that
such infringement is imminent and there is a prima facie case for final relief against
the alleged infringing defendant or expected adverse party;
c. damage, potential or actual, likely to be caused to the applicant is irreparable;
d. there is demonstrable risk of evidence that the alleged infringing defendant or expected
adverse party may destroy, hide or remove the documents or articles before any
application inter partes can be made; and
e. the documents and articles to be seized constitute evidence of the alleged infringing
defendant's or expected adverse party's infringing activity or that they infringe upon
the intellectual property right of the applicant or that they are used or intended to be
used as means of infringing the applicant's intellectual property right.
Section 7. When writ may issue. - If the judge is satisfied with the proof of facts upon which
the application is based, he shall issue the writ requiring the search, inspection or copying
of the subject documents or articles or commanding the sheriff to take them into his custody
subject to the control of the court. The enforcement of the writ shall be supervised by an
independent Commissioner to be appointed by the court.
Section 8. Contents of the writ. - The writ shall contain the following:
(a) an order to the alleged infringing defendant, expected adverse party or to the person
who appears to be in charge or in control of the premises or residing or working therein
to permit the persons named in the writ to enter into the premises for the purpose of
searching, inspecting, copying, or removing from the premises and transferring to the
custody of the sheriff and subject to the control of the court the subject documents and
articles;
(b) an order to the alleged infringing defendant, expected adverse party or to the person
in charge or in control of the premises to disclose to the sheriff serving the writ the
location of the documents and articles subject of the writ;
(c) the period when the writ shall be enforced which in no case shall be more than ten (10)
days from the date of issuance by the court;
(d) the names of the applicant or his agent or representative and the Commissioner who
shall supervise the enforcement of the writ; and
(e) other terms and conditions that will insure the proper execution of the writ with due
regard to the rights of the alleged infringing defendant or expected adverse party.
It shall also contain a warning that violation of any of the terms and conditions of the writ
shall constitute contempt of court.
Section 9. Bond and its conditions. - The applicant shall be required to post a cash bond,
surety bond or other equivalent security executed in favor of the defendant or expected
adverse party in a reasonable amount to be fixed by me court in its order granting me
issuance of a writ of search and seizure. The bond shall be conditioned on the undertaking
of the applicant that he will pay all the costs which may be adjudged to defendant or
expected adverse party and all damages which me latter may sustain by reason of me
issuance of the writ.
pg. 56
Section 10. When writ shall be served. - The writ shall be served only on weekdays and from
8 o'clock in the morning to 5 o'clock in the afternoon. However, the court may direct that the
writ be served on any day and any time for compelling reasons stated in the application and
duly proved.
Section 11. To whom writ shall be served. - The writ shall be served on the alleged infringing
defendant or expected adverse party in the place to be searched.
If the alleged infringing defendant or expected adverse party cannot be found in the
premises, the writ shall be served on his agent or representative. In the absence of an agent
or representative, it shall be served on the person in charge or in control of the premises, or
residing or working therein who is of sufficient age and discretion. If such person is absent,
the sheriff or proper officer shall post the papers on the premises and proceed with the
enforcement of the writ.
Section 12. Commissioner, duties, qualifications and fees. - The enforcement of the writ shall
be supervised by the independent Commissioner appointed by the court. In the performance
of his duty, the Commissioner shall:
a) give impartial advise to the alleged infringing defendant, expected adverse party or to
the person in charge of the premises to be searched as to the meaning and coverage of
the writ;
b) attempt to achieve agreement on a suitable search procedure;
c) assess what documents or articles come within the terms of the writ;
d) ensure the accuracy of the list of documents and articles searched, inspected, copied or
seized by the sheriff;
e) prepare his own report on the search and seizure and verify and sign the return
prepared by the sheriff; and
f) generally, assist in the proper execution of the writ.
The Commissioner shall be a member of the Philippine Bar and of proven competence,
integrity and probity. He shall receive such reasonable compensation as may be determined
by the court which can be charged as cost of suit.
Section 13. Search to be conducted in the presence of defendant, his representative, person
in charge of the premises or witnesses. - The premises may not be searched except in the
presence of the alleged infringing defendant, expected adverse party or his representative
or the person in charge or in control of the premises or residing or working m therein who
shall be given the opportunity to read the writ before its enforcement and seek its
interpretation from the Commissioner. In the absence of the latter, two persons of sufficient
age and discretion residing in the same locality shall be allowed to witness the search or in
the absence of the latter, two persons of sufficient age and discretion residing in the nearest
locality.
Section 14. Manner of search and seizure; duties of the sheriff. - Upon service of the writ in
accordance with section 11 hereof, sheriff, under the supervision of the Commissioner, shall
search for the documents and articles specified in the writ, and take them in his custody
subject to the control of the court.
If the subject articles are not capable of manual delivery, the sheriff shall attach to them a
tag or label stating the fact of seizure and warning all persons from tampering with them.
The sheriff shall, in the presence of the applicant or his representative, and under the
supervision of the Commissioner, prepare a detailed list of the seized documents and
articles. He shall give an accurate copy of the same to the alleged infringing defendant,
expected adverse party, his agent or representative, to the person in charge or in control of
the premises or residing or working therein in whose presence the search and seizure were
made. In the absence of the person in charge or in control of the premises or residing or
working therein, the sheriff must, in the presence of at least two witnesses of sufficient age
and discretion residing in the same locality, leave a copy of the receipt in the place in which
he found the seized property. Where no witnesses are available in the same locality, the
copy of the receipt shall be left by the sheriff in the presence of two witnesses residing in the
nearest locality. The applicant or his representative and the Commissioner shall also be
given a copy of the receipt.
After the sheriff has taken possession of the documents and articles, he shall deliver them
to a bonded warehouse or government warehouse for safekeeping. The applicant or his
representative shall be allowed access to said materials for the purpose of examining them.
The applicant shall be responsible for the necessary expenses incurred ill the seizure and
safekeeping of the documents and articles in a bonded warehouse or government warehouse.
Section 15. Use of reasonable force to effect writ. - The sheriff, if refused admittance to the
premises after giving notice of his purpose and authority or in absence of the alleged
infringing defendant or expected adverse party, his agent or representative, or person in
charge or in control of the premises or residing or working therein who is of sufficient age
and discretion, may use reasonable force to gain entry to the premises or any part of the
building or anything therein, to enforce the writ or to liberate himself or any person lawfully
aiding him when unlawfully detained therein.
Section 16. Seizure of computer disks other storage devices. - The seizure of a computer disk
or any storage device may be executed in any of the following manner:
(a) by the physical taking thereof;
(b) by Copying its contents in a suitable device or disk provided by the applicant; or
(c) by printing out the Contents of the disk or device with a the use of a printer.
When the computer disks or storage devices cannot be readily removed from the computer
to which they are fitted, the sheriff may take the subject computer from the custody of the
alleged infringing defendant, expected adverse party or person in charge or in control of the
premises or residing or working therein.
Section 17. Sheriff's return. - The sheriff who executed the writ shall, within three (3) days
from its enforcement, make a verified return to the court which issued the writ. The return
shall contain a full statement of the proceedings under the writ and a complete inventory of
the documents and articles searched, inspected or copied or seized and impounded, with
copies served on the applicant, the defendant or expected adverse party and the
Commissioner.
If not all of the documents and articles enumerated in the order and writ were seized, the
sheriff shall so report to the court and state is the reasons therefor. All objections of the
defendant, expected adverse party or person in charge of the premises on the manner and
regularity of the service of the writ shall be included by the sheriff in his return.
Section 18. Discharge of writ by the defendant or expected adverse party. - Without waiting
for return to be filed by the sheriff, the defendant, expected adverse party or the party whose
property has been searched, inspected, copied or seized may file a motion with the court
which issued the writ for its discharge with prayer for the return of the documents and
articles seized.
The writ may be discharged on any of the following grounds:
(a) that the writ was improperly or irregularly issued, or excessively enforced;
(b) that the bond is insufficient;
pg. 57

(c) that tile safeguards provided in the writ have been violated by the applicant or the
sheriff; or
(d) that the documents and articles seized are not infringing copies or means for making
the materials alleged to infringe the intellectual property right of the applicant.
The writ may be discharged in a summary hearing by the court after notice to the applicant,
the sheriff and the Commissioner.
If the court finds that the bond is insufficient, it shall order a. new bond to be filed by the
applicant within a reasonable time. The discharge of the writ based on the insufficiency of
the bond may only be made if the applicant fails to post the new bond within the period fixed
by the court.
Section 19. Proceedings on return. - Five (5) days after issuance of the writ, the issuing judge
shall ascertain if the writ has not been served or the return has been made by the sheriff. If
the writ was not served or no return was made, it shall summon the sheriff and the applicant
to whom the writ was issued and require them to explain why the writ was not served or
why no return has been filed as the case may be. If the return has been made, the judge
shall, after notice to the applicant, the alleged infringing defendant or expected adverse
party, the sheriff and the Commissioner, ascertain whether the provisions of this Rule and
applicable laws have been complied with.
Section 20. Failure to file complaint. - The writ shall also. Upon motion of the expected
adverse party, be set aside and the seized documents and articles returned to the expected
adverse party if no case is filed with the appropriate court or authority within thirty-one
(31) calendar days from the date of issuance of the writ.
Section 21. Claim for damages. - Where the writ is discharged on any of die grounds provided
in this Rule, or where it is found after trial that there has been no infringement or threat of
infringement of an intellectual property right, the court. Upon motion of the alleged
infringing defendant or expected adverse party and after due hearing, shall order the
applicant to compensate the defendant or expected adverse party upon the cash bond, surety
bond or other equivalent security for any injury or damage the latter suffered by the
issuance and enforcement of the writ. Should the damages exceed the amount of the bond,
the applicant shall be liable for the payment of the excess.
When a complaint is already filed in court, the motion shall be filed with the same court
during the trial or before appeal is perfected or before judgment becomes executory, with
due notice to the applicant, setting forth the facts showing the defendant's right to damage's
and the amount thereof. The award of damages shall be included in the judgment in the
main case.
Where no complaint is filed against the expected adverse party, the motion shall be filed
with the court which issued the writ. In such a case, the court shall set the motion for
summary hearing and immediately determine the expected adverse party's right to
damages.
A judgment in favor of the applicant in its principal claim, should not necessarily bar the
alleged infringing defendant from recovering damages where he suffered losses by reason of
the wrongful issuance or enforcement of the writ.
The damages provided for in this section shall be independent from the damages claimed by
the defendant in his counterclaim.
Section 22. Judgment. - If it appears after trial that the seized documents and articles are
found to infringe the intellectual property right of the applicant or that they constitute the
means for the production of infringing goods, the court shall order their destruction or
donation to charitable, educational or religious institutions with the prohibition against
bringing the same into the channels of commerce. In the latter case, infringing trademarks
or trade names found on labels, tags and other portions of the infringing materials shall be
removed or defaced before the donation. In no case shall the infringing materials be returned
to the defendant.
If the court finds no infringement, the seized materials shall be immediately returned to the
defendant.
Section 23. Direct filing, provisional docketing and deposit of prescribed filing fee. - The
Regional Trial Courts specially designated to try violations of intellectual property rights
shall keep a distinct and separate logbook for writs of search and seizure. The application
for a writ of search and seizure filed directly with the said courts shall be given a provisional
docket number. The prescribed filing fee shall be deposited with the branch clerk of court
and properly receipted for and transmitted to the Clerk of Court within twenty-four (24)
hours from issuance of the order granting or denying the application for said writ. If a formal
complaint is filed thereafter, the Clerk of Court may make a. reassessment of the filing fee.
Section 24. Separate logbook. - In every court, there shall be a logbook under the custody of
the Clerk of Court wherein shall be docketed and entered within twenty-four (24) hours
after the issuance or denial of the writ of search and seizure, the filing of such application
and other particulars thereof. All the subsequent proceedings concerning the writ of search
and seizure shall be faithfully recorded in the separate logbook.
Section 25. Effect of violation. - A violation of any of the terms and conditions of the order
and the writ of search and seizure or any provision of this Rule shall constitute contempt of
court.
Section 26. Writ not a bar to other measures. - The availment of the writ of search and
seizure under this Rule shall not prevent the applicant from resorting to other provisional
measures or remedies provided in existing laws and procedural rules.
Section 27. Effectivity. - This Rule shall take effect on February 15, 2002 after its publication
in two (2) newspapers of general circulation not later than January 30, 2002.
pg. 58