July 14, 2018

1. Limitations of Copyright
a. Limitations On Copyright – Sec 184; 184.1 (a) to (l); 184.2
b. For Use of Copyright Work – Sec 185, as amended

i. A&M Records Inc. v Napster Inc. (No. 00.1640; US Jurisdition)

In A&M Records, Inc. v. Napster, Inc. External link , 239 F.3d 1004 (2001), the Court of Appeals for the Ninth Circuit
held that a peer-to-peer file sharing service could indeed be held liable for contributory and vicarious infringement of
copyright. This landmark intellectual property case put an end to any speculation that such services could facilitate
copyright infringement, but still shield themselves from any liability due to the fact that it was the users that chose to
share illegal copies of protected works.
Case Background
Napster was an early peer-to-peer file sharing network which could be used for transmitting various files, but which
attained massive popularity as a way to share music through .mp3s. Unsurprisingly, major record companies took issue
with large-scale distribution of their music for free, and sued Napster for direct, contributory, and vicarious infringement
of copyright in order to protect their intellectual property.
The Holding
As stated above, the Court ruled against Napster.
The first issue the court dealt with was “fair use.” Fair use is a defense to infringement codified at 17 U.S.C. § 107, which
states that otherwise infringing activities are permitted if pursued, “[F]or purposes such as criticism, comment, news
reporting, teaching … scholarship, or research.” In order to determine whether the defense is met in a particular case, the
statute directs Courts to consider the following four factors:
1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit
educational purposes;
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 potential market for or value of the copyrighted work.
In Napster’s case, their platform allowed for “repeated and exploitative” copying, which met the meaning of the first
factor, even though no sales were taking place. In addition, songs were found to be “close to the core” of the types of
creative works intended to be protected by copyright, and entire songs were downloaded, setting the second and third
factors against Napster. Finally, the effect of the downloads was found to harm possible album sales, which was the final
nail in the coffin of Napster’s argument in favor of a fair use defense.
As for the contributory infringement claim, Napster knew of widespread infringement taking place on its system, and its
policing efforts were quite thin. Moreover, Napster materially contributed to the infringement, making success on this
claim likely for the appellants. Similarly, the court found that Napster’s lack of effort to reduce infringement, combined
with the fact that the company financially benefited therefrom, made success on the vicarious infringement claim likely as
well.
As a result, the court ordered the creation of an appropriate injunction consistent with its opinion against any of Napster’s
future infringing activities.
Issues related to peer-to-peer file sharing were again litigated a few years later when a successor company to Napster,
Grokster, was sued by MGM Studios in MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005). Currently, services
such as BitTorrent and The Pirate Bay are continuing to battle holders of protected works over the future of Internet file
sharing.
If you are interested in learning more, the @WashULaw online LL.M. in U.S. Law program offers a course entitled
“Intellectual Property,” that can help expand your understanding of certain issues that may be relevant to cases like these.

ii. Habana vs Robles (GR 131522; July 19, 1999)

FACTS:
Pacita Habana and two others were the authors of College English for Today Series 1 and 2 (CET). While they were
researching for books to assist them in updating their own book, they chanced upon the book of Felicidad Robles
entitled Developing English Proficiency Books 1 and 2 (DEP). They discovered further that the book of Robles was
strikingly similar to the contents, scheme of presentation, illustrations and illustrative examples of CET. They then sued
Robles and her publisher (Goodwill Trading Co.) for infringement and/or unfair competition with damages.
Robles, in her defense, alleged that her sources were from foreign books; that in their field, similarity in styles cannot be
avoided since they come from the same background and orientation. The trial court as well as the Court of Appeals ruled
in favor of Robles.
ISSUE: Whether or not the Court of Appeals is correct.
HELD: No. A perusal of the records yields several pages of the book DEP that are similar if not identical with the text of
CET. In several other pages the treatment and manner of presentation of the topics of DEP are similar if not a rehash of
that contained in CET. The similarities in examples and material contents are so obviously present in this case. How can
similar/identical examples not be considered as a mark of copying? Robles’ act of lifting from the book of Habana et al
substantial portions of discussions and examples, and her failure to acknowledge the same in her book is an infringement
of Habana et al’s copyrights.
The Supreme Court also elucidated that 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.

c. Work of Architecture – Sec 186

d. Reproduction of Published Work – Sec 187-187.2
e. Reprographic Reproduction by Libraries – Sec 188
f. Importation for Personal Purposes
i. Sec 190 as amended (Sec 190.1 & 190.2 are already deleted by RA 10372)
2. Registration and Deposit with National Library and Supreme Court Diary
a. Sec 191 as amended; 192; 227; 228
3. Moral Rights
a. Scope of Moral Rights – Sec 193
b. Breach of Contract – Sec 194
c. Waiver of Moral Rights – Sec 195
d. Contribution to Collective Work – Sec 196
e. Term of Moral Rights – Sec 198 as amended; 199; 226
4. Rights to Proceed in Subsequent Transfers
a. Sale or Lease of Work – Sec 200; 201
5. Rights of Performers, Producers of Sound Recordings and Broadcasting Organization
a. Definitions – Sec 202-202.8
b. Scope of Performers; Rights – Sec 203 as amended
c. Moral Rights of Performers – Sec 204, 204.1 as amended
d. Limitation on Performer’s Rights – Sec 205; 205.2
e. Additional Remuneration for Subsequent Communications or Broadcasts – Sec 204
f. Contract Terms – Sec 207
g. Scope and Limitation of Right on Sound Recordings – Sec 208 as emended; 210
h. Communication to the Public on Sound Recordings – Sec 209
i. Scope of Right of Broadcasting Organizations – Sec 211
j. Limitations on Rights – Sec 212

i. ABS-CBN vs Phil. Multi-media System Inc. (GR 175769-70; Jan. 19, 2009)
Facts:

Petitioner ABS-CBN, a broadcasting corporation, filed a complaint against respondent PMSI alleging that the latter’s
unauthorized rebroadcasting of Channels 2 and 23 infringed on its broadcasting rights and copyright. PMSI posits that it
was granted a franchise to operate a digital direct-to-home satellite service and that the rebroadcasting was in accordance
with the NTC memo to carry television signals of authorized television broadcast stations, which includes petitioner’s
programs. The IPO Bureau of Legal Affairs found PMSI to have infringed petitioner’s broadcasting rights and ordered it
to permanently desist from rebroadcasting. On appeal, the IPO Director General found for PMSI. CA affirmed.

Issue: Whether or not petitioner’s broadcasting rights and copyright are infringed.

Ruling: NO.

The Director-General of the IPO correctly found that PMSI is not engaged in rebroadcasting and thus cannot be
considered to have infringed ABS-CBN’s broadcasting rights and copyright.

Section 202.7 of the IP Code defines broadcasting as “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.” On the other hand,
rebroadcasting as defined in Article 3(g) of the International Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations, otherwise known as the 1961 Rome Convention, of which the Republic of
the Philippines is a signatory, is “the simultaneous broadcasting by one broadcasting organization of the broadcast of
another broadcasting organization.” The Working Paper prepared by the Secretariat of the Standing Committee on
Copyright and Related Rights defines broadcasting organizations as “entities that take the financial and editorial
responsibility for the selection and arrangement of, and investment in, the transmitted content.” Evidently, PMSI would
not qualify as a broadcasting organization because it does not have the aforementioned responsibilities imposed upon
broadcasting organizations, such as ABS-CBN.

ABS-CBN creates and transmits its own signals; PMSI merely carries such signals which the viewers receive in its
unaltered form. PMSI does not produce, select, or determine the programs to be shown in Channels 2 and 23. Likewise, it
does not pass itself off as the origin or author of such programs. Insofar as Channels 2 and 23 are concerned, PMSI merely
retransmits the same in accordance with Memorandum Circular 04-08-88. With regard to its premium channels, it buys
the channels from content providers and transmits on an as-is basis to its viewers. Clearly, PMSI does not perform the
functions of a broadcasting organization; thus, it cannot be said that it is engaged in rebroadcasting Channels 2 and 23.