COPYRIGHT | ATTY.
NEGRE
Copyright
INTRODUCTION
Development of Philippine Copyright Law
Actors involved
1. State
o Role is to balance the different interests
2. Creator or owner
o Property right
3. Public
o Middle-users
o End-users (general public)
Kho v. CA
 The scope of a copyright is confined to literary and artistic
works which are original intellectual creations in the literary
and artistic domain protected from the moment of their
creation.
 F: Kho alleges she had copyrights to Chin Chun Su and Oval
Facial Cream Container/Case and patent rights for the
medicated cream. Respondents claimed to have registered
trade name of Chin Chun Su Medicated Cream with the
Philippine Patent Office.
o Note: Supplemental registration is in fact a trademark
registration, not a patent.
 H: The name and container of a beauty cream product are
proper subjects of a trademark. Kho’s copyright and patent
registration of the name and container would not guarantee
her the right to the exclusive use of the same for the reason
that they are not appropriate subjects of the said intellectual
rights. Consequently, a preliminary injunction order cannot be
issued for not having proven that she has registered a
trademark thereto or used the same before anyone did.
Protection of IP and the Constitution
ARTICLE XIV
EDUCATION, SCIENCE AND TECHNOLOGY,
ARTS, CULTURE AND SPORTS
Section 13. The State shall protect and secure the exclusive
rights of scientists, inventors, artists, and other gifted citizens
to their intellectual property and creations, particularly when
beneficial to the people, for such period as may be provided by
law.
Section 15. Arts and letters shall enjoy the patronage of the
State. The State shall conserve, promote, and popularize the
nation's historical and cultural heritage and resources, as well as
artistic creations.
Section 16. All the country's artistic and historic wealth constitutes
the cultural treasure of the nation and shall be under the
protection of the State which may regulate its disposition.
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ARTICLE XII
NATIONAL ECONOMY AND PATRIMONY
Section 19. The State shall regulate or prohibit monopolies
when the public interest so requires. No combinations in restraint
of trade or unfair competition shall be allowed.
Section 6. The use of property bears a social function, and all
economic agents shall contribute to the common good.
Individuals and private groups, including corporations,
cooperatives, and similar collective organizations, shall have the
right to own, establish, and operate economic enterprises,
subject to the duty of the State to promote distributive justice and
to intervene when the common good so demands.
ABS-CBN v. Phil. Multi-Media
 H: Retransmission of ABS-CBN’s signals by PMSI – which
functions essentially as a cable television – does not constitute
rebroadcasting in violation of ABS-CBN’s IP rights under IP
Code.
o 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 & 23.
o Note: In RA 10372, retransmission is a violation.
 Franchise grantee shall provide at all times sound and
balanced programming and assist in the functions of public
information and education.
 Essence of IP laws: IP protection is merely a means towards the
end of making society benefit from the creation of its men and
women of talent and genius.
o Certain products of ingenuity that are concealed from the
public are outside the pale of protection afforded by law.
Universal Declaration of Human Rights
Article 17.
(1) Everyone has the right to own property alone as well as in
association with others.
(2) No one shall be arbitrarily deprived of his property.
Article 19. Everyone has the right to freedom of opinion and
expression; this right includes freedom to hold opinions without
interference and to seek, receive and impart information and
ideas through any media and regardless of frontiers.
Article 27.
(1) Everyone has the right freely to participate in the cultural
life of the community, to enjoy the arts and to share in
scientific advancement and its benefits.
(2) Everyone has the right to the protection of the moral and
material interests resulting from any scientific, literary or
artistic production of which he is the author.
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COPYRIGHT | ATTY. NEGRE
Berne Convention for the
Protection of Literary and Artistic Works
 WIPO: World Intellectual Property Organization
 Only for copyright
 No Most-Favored Nation Principle, Exhaustion, Dispute
Resolution, and Enforcement
 Principles
1. National Treatment
 Member country can’t discriminate against non-
nationals
 Nationals cannot be given more privilege over non-
nationals
2. Automatic Protection
 Moment of creation
3. Independence of Protection
 Protection is independent of the existence of
protection in the country of origin of the work
 Protection may be denied once protection in country
of origin ceases even if a contracting state provides
for a longer term
 Enumeration of works
TRIPs Agreement / WTO Treaty
 Agreement on Trade-Related Aspects of Intellectual Property
Rights
 WTO: World Trade Organization
 Covers all IP and other peripherals
1. Principles:
 National Treatment
 Most-Favored Nation
2. Exhaustion of IP rights
3. Dispute resolution
4. Enforcement
 Prior to TRIPs, only criminal action is possible
A. Fundamental Principles
 National treatment v. Most favored nation principle
Article 3. National Treatment
1. Each Member shall accord to the nationals of other
Members treatment no less favorable than that it
accords to its own nationals with regard to the protection
of intellectual property, subject to the exceptions already
provided in, respectively, the Paris Convention (1967), the
Berne Convention (1971), the Rome Convention or the Treaty
on Intellectual Property in Respect of Integrated Circuits. In
respect of performers, producers of phonograms and
broadcasting organizations, this obligation only applies in
respect of the rights provided under this Agreement. Any
Member availing itself of the possibilities provided in Article
6 of the Berne Convention (1971) or paragraph 1(b) of Article
16 of the Rome Convention shall make a notification as
foreseen in those provisions to the Council for TRIPS.
2. Members may avail themselves of the exceptions permitted
under paragraph 1 in relation to judicial and administrative
procedures, including the designation of an address for
service or the appointment of an agent within the jurisdiction
of a Member, only where such exceptions are necessary to
secure compliance with laws and regulations which are not
inconsistent with the provisions of this Agreement and where
such practices are not applied in a manner which would
constitute a disguised restriction on trade.
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Article 4. Most-Favored-Nation Treatment
With regard to the protection of intellectual property, any
advantage, favor, privilege or immunity granted by a Member
to the nationals of any other country shall be accorded
immediately and unconditionally to the nationals of all other
Members. Exempted from this obligation are any advantage,
favor, privilege or immunity accorded by a Member:
(a) deriving from international agreements on judicial
assistance or law enforcement of a general nature and not
particularly confined to the protection of intellectual
property;
(b) granted in accordance with the provisions of the Berne
Convention (1971) or the Rome Convention authorizing that
the treatment accorded be a function not of national
treatment but of the treatment accorded in another country;
(c) in respect of the rights of performers, producers of
phonograms and broadcasting organizations not provided
under this Agreement;
(d) deriving from international agreements related to the
protection of intellectual property which entered into force
prior to the entry into force of the WTO Agreement,
provided that such agreements are notified to the Council for
TRIPS and do not constitute an arbitrary or unjustifiable
discrimination against nationals of other Members.
 National Treatment
 Most-favored Nation Principle
o One state in relation to State A and State B
o Ex. In US, copyright has a term of 70 years. In PH, it is 50
years. If the copyright is already on its 51st year, then the
copyright in the Philippines has already expired.
B. Exhaustion of Intellectual Property Rights
Article 6. Exhaustion
For the purposes of dispute settlement under this Agreement,
subject to the provisions of Articles 3 and 4 nothing in this
Agreement shall be used to address the issue of the exhaustion of
intellectual property rights.
 Exhaustion of rights, not remedies
o Ex. I already sold the product; hence, I already received
royalties from that, I can no longer go after the royalties
for the succeeding sales.
 National, regional, and international exhaustion
C. Abuse of Intellectual Property Rights
Article 8. Principles
(2) Appropriate measures, provided that they are consistent with
the provisions of this Agreement, may be needed to prevent
the abuse of intellectual property rights by right holders or the
resort to practices which unreasonably restrain trade or
adversely affect the international transfer of technology.
D. Accession to WTO and TRIPs Compliance
Article 2. Intellectual Property Conventions
(1) In respect of Parts II, III and IV of this Agreement, Members
shall comply with Articles 1 through 12, and Article 19, of the
Paris Convention (1967).
(2) Nothing in Parts I to IV of this Agreement shall derogate from
existing obligations that Members may have to each other
under the Paris Convention, the Berne Convention, the Rome
Convention and the Treaty on Intellectual Property in Respect
of Integrated Circuits.
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COPYRIGHT | ATTY. NEGRE
SUBJECT MATTER OF COPYRIGHT LAW
Definitions
SEC. 177. 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)
COPYRIGHT SAFEGUARDS AND REGULATIONS
RULE 2 | DEFINITION OF TERMS
1. Author is the natural person who has created the work;
2. 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;
3. 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;
4. Computer program is a set of instructions capable, when
incorporated in machine-readable medium, of causing a
machine having information-processing capabilities, to
indicate, perform, or achieve a particular function, task, or
result;
5. 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;
6. Copyright Office refers to the Copyright Division of the
National Library;
7. Copyright symbol is represented by ©;
8. 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;
9. Decompilation means the reproduction of the code and the
translation of the forms of a computer program to achieve
the inter-operability of an independently-created computer
program with other programs;
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10. 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;
11. 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;
12. Performance symbol is represented by p;
13. 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;
14. 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;
15. 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;
16. Publisher is one who produces and makes available for
circulation or distribution the published work;
17. 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;
18. 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
machine-readable copy, but is limited to photography,
xerography and similar processes, resulting in a paper or
microform copy;
19. 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;
20. SAR shall refer to these Copyright Safeguards and
Regulations issued pursuant to the IPC;
21. SCL refers to the Library of the Supreme Court of the
Republic of the Philippines;
22. TNL refers to The National Library of the Republic of the
Philippines;
23. TNL Director refers to the head of The National Library of the
Republic of the Philippines;
24. Unpublished work means work that has not been
disseminated, circulated or distributed to the public prior to
its registration with the Copyright Office;
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COPYRIGHT | ATTY. NEGRE
25. Work refers to any original work, derivative work,
performance of producers, sound recording, or recording of
broadcasting organizations.
26. Derivative work is work that is derived from another work;
27. 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;
28. 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.
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 and each copy of the work into the jurisdiction of the
Republic of the Philippines.
 In cases where it is source indicating and artistic work, it can
be both copyright and trademark.
 Q: What is the difference between an inventor and an author?
o Patent vs. copyright
 Q: Are selfies subject of copyright protection?
 Q: What if two different people took photos of APS, who has a
copyright? Or do they have a copyright at all?
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Prerequisites for and Elements of
Copyrightable Subject Matter
SEC. 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;
(d) Letters;
(e) Dramatic or dramatico-musical compositions;
choreographic works or entertainment in dumb shows
(f) 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)
Ching Kian Chuan v CA
 Original Creator of Work. A person, to be entitled to
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.
o Grant of preliminary injunction depends on the extent of
doubt on validity of copyright, existence of infringement,
and the damages sustained by such infringement.
 Application | Vermicelli. Copies of certificates of copyright
registration in the name of Ceroilfood Shandong sufficiently
raise reasonable doubt. Preliminary injunction is unavailing.
Sambar v Levi Strauss
 Elements of Copyright. The thing copyrighted must be:
1. Original
2. Created by the author through his own skill, labor, and
judgment without directly copying or evasively imitating
the work of another
 Application | Levi Strauss’ arcuate design on back pockets.
Cancellation of Sambar’s copyright registration was justified
because the design was a mere copy of Levi’s trademark.
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A. Authorship and Originality COPYRIGHT PATENT

CREATOR
Burrow-Giles Lithographic Co v Sarony Author Inventor
 Author. An author is he to whom anything owes its origin; Ordinary skill is considered Implication which excludes
originator; maker; one who completes a work of science or the results of only ordinary skill
literature. WHEN ISSUED
o Author is the person who effectively is as near as he can Invention or discovery
be the cause of the picture which is produced – that is, the sufficiently useful & important
person who has superintended the arrangement, who has WHAT MUST BE PROVEN
actually formed the picture by putting the persons in While they demanded that an A patent applicant is obliged
position, and arranging the place where the people are to official should be satisfied to to file a specification “so
be – the man who is the effective cause of that. the character of an invention particular” as to “distinguish
o An author involves originating, making, producing, as the before a patent issued, no the invention or discovery
inventive or mastermind, the thing which is to be protected, such demand is found in from other things before
whether it be a drawing, or a painting, or a photograph. respect of a copyright known and used
 Originality in Photograph. Whether a photograph is a mere FIRST OF ITS KIND?
mechanical reproduction or an original work of art is a question The patent is to constitute
to be determined by proof of the facts of originality, The “author” has no right to
prima facie evidence that the
intellectual production, and of through and conception on the prevent another from
patentee was “the first and
part of the author, and when the copyright is disputed, it is publishing a work identical
true inventor or discoverer of
important to establish those facts. with his, if not copied from his.
the thing so specified
 Application | Oscar Wilde No. 18. Sarony is the author of the
UNIQUE AND NOVEL?
photo “Oscar Wilde No. 18.” The photo is an original work of art
which is a product of Sarony’s intellectual creation. Photo was The authorized of There must be a substantial
entirely from Sarony’s own original mental conception, to which copyrighting calls for no advance over the prior art.
he gave visible form by posing Oscar Wilde in from of the considerable uniqueness. No Otherwise, it is invalid. There
camera, selecting and arranging the costume, disposing the large measure of novelty is is a need for “inventive
light and shade, suggesting and evoking the desired necessary genius.”
expression. DOCTRINE OF ANTICIPATION
The “author” is entitled to a The alleged inventor is
Bleinstein v Donaldson Lithographing Co copyright if he independently chargeable with full
 Chromolitographs representing actual groups of persons and contrived of a work knowledge of all the prior art,
things, which have been designed from hints or descriptions of completely identical with although in fact he may be
the scenes represented, and which are to be used as what went before; utterly ignorant of it.
advertisements for a circus are “pictorial representations”
within the meaning of statute, allowing a copyright to the  Application | Mezzotint of Old Paintings of Old Masters.
author, designer, or proprietor of any engraving, cut, print, or Catalda’s suggestion that Bell’s mezzotints could not validly be
chromo. copyrighted because they are reproductions of works in the
o Use Immaterial. Works are not the less connected with public domain is untenable. Translations or other versions of
fine arts because their pictorial quality attracts the crowd, works in the public domain are copyrightable. The mezzotints
and therefore gives them a real use – i.e. advertisement. A were such versions.
picture is nonetheless a picture and a subject of copyright.  Q: If you create a mezzotint from Bell’s work, is it
 That chromolitographs were composed of hints or descriptions copyrightable?
of actual visible things does not deprive them of copyright
protection. The mere fact that they were drawn from life or its Muller & Co v New York Arrows Soccer Team
representations does not remove their copyright.  Creative Authorship. A work must show certain minimal levels
o Author has Unique Expression. The copy is the personal of creativity and originality. If the creator seeks to register the
action of an individual upon nature. Personality always item as a “work of art” or “pictorial, graphic, or sculptural work,”
contains something unique. It expresses singularity even in the work must embody some creative authorship in its
handwriting, and a very modest grade of art has in it delineation or form.
something irreducible which is one man’s alone. That  Application | Arrows Logo. Denial of registration of copyright
something he may copyright unless there is a restriction in is proper because the logo lacked the level of creativity
the words of the act. needed for copyrightability.
 Application | Circus advertisement. Chromolitographs  Q: Compare and contrast this case with the Levi’s case. Is Levi’s
depicting the reality as to be seen at the circus (e.g. ordinary double arch copyrightable?
ballet, men and women on bicycles) are subject to copyright. o Is it copyrightable in relation to the Feist case (modicum
level of creativity)?
Alfred Bell & Co v Catalda Fine Arts
 Author. Nothing in the Constitution commands that
copyrighted matter be strikingly unique or novel. All that is
needed to satisfy both the Constitution and the statute is that
the author contributed something more than a “merely
trivial” variation, something recognizably “his own.”
 Original. In reference to copyright, it means that the particular
work “owes its origin” to the “author.” No large measure of
novelty is necessary.

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COPYRIGHT | ATTY. NEGRE
Meshwerks Inc v Toyota Motor Sales
 Original.
1. Independently created by the author
2. Not copied from other works, and
3. Work must possess some minimal degree of creativity
o Originality is the sine qua non of copyright. If the basic
design reflected in a work of art does not owe its origin to
the putative copyright holder, then that person must add
something original to that design, and then only the
original addition may be copyrighted.
 One possesses no copyright interest in reproductions, when
these reproductions do nothing more than accurately convey
the underlying image. The fact that intensive, skillful, and even
creative labor is invested in the process of creating a product
does not guarantee its copyrightability.
 Application | Wire-frame 3D Models of Toyota Cars.
Meshwerks' models, which form the base layers of
computerized substitutes for product photographs in
advertising, are unadorned, digital wire-frames of Toyota's
vehicles. While fully appreciating that digital media present
new frontiers for copyrightable creative expression, in this
particular case the uncontested facts reveal that Meshwerks'
models owe their designs and origins to Toyota and
deliberately do not include anything original of their own.
o Meshwerk did not make any decisions regarding the
lighting, shading, background, angle which would make
depictions of things or facts in the world as a completely
new expression subject to copyright protection.
 Q: Compare Meshwerks with Bell.
Mannion v Coors Brewing Company
 Original. Copyright protection may extend only to those
components of a work that are original to the author.
o Original in copyright 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.
 Originality in Photographs.
o Originality in the rendition
 Resides in specialties such as angle of shot, light and
shade, exposure, effects achieved by means of filter,
developing techniques. Copyright protects not what is
depicted but rather how it was depicted. Protection is
provided against someone using the actual picture,
but not to prevent others from photographing the
same object or scene.
o Originality in timing
 Original by being at the right place at the right time.
What is protectable is only the photographer’s actual
photograph since the photographer did not have any
hand in setting up the scene. Photographer cannot
stop anyone else from going and recreating the exact
shot, let along taking similar pictures.
o Originality in creation of the subject
 Original to the extent that the photographer created
the scene or subject to be photographed.
 Separate Elements Not Basis of Copyright. Elements in the
public domain (e.g. cloudy sky, white shirt, jewelry) may not be
copyrightable in and of themselves, but their existence and
arrangement in the photograph in the case indisputably
contribute to the originality.
 Application | Kevin Garnett Photograph in Basketball
Magazine. The photograph is an original work. Mannion’s
orchestration of the scene attributes additional originality in
the creation of the subject. The composition of a posing man
against the sky evidences originality in the creation of the
KAT NIETO | B 2019
subject. Further, the unusual angle and distinctive lighting
(originality in rendition) strengthen originality of photograph.
o The originality of the photo extends beyond the individual
clothing, jewelry, and pose viewed in isolation. It is the
entire image depicting a man, sky, clothing, and jewelry in
a particular arrangement that is at the issue of
infringement, not the individual components of the
photograph.
B. Creativity
Feist Publications Inc v Rural Telephone Service Co
 Minimal Degree of Creativity. Facts may not be copyrighted
because they are not “original” and are part of the public
domain available to every person. Factual compilations, on the
other hand, may possess the requisite originality. The
compilation author’s choices as to selection and arrangement,
so long as made independently by the compiler and entail a
minimal degree of creativity, are sufficiently original may be
copyrightable.
o Facts are never original, so the compilation author can
claim originality, if at all, only in the way the facts are
presented. To that end, the statute dictates that the
principal focus should be on whether the selection,
coordination, and arrangement are sufficiently original to
merit protection.
 Sweat of the Brow Doctrine. (Erroneous construction of
copyright protection)
o The underlying notion was that copyright was a reward for
the hard work that went into compiling the facts.
o The most glaring implication of the doctrine was that it
extended copyright protection in a compilation beyond
selection and arrangement -- the compiler's original
contributions -- to the facts themselves. A subsequent
compiler was "not entitled to take one word of information
previously published," but rather had to "independently
work out the matter for himself, so as to arrive at the same
result from the same common sources of information."
o The purpose of copyright is not to reward the labor of
authors, but to promote the progress of science and useful
arts.
 Application | White Pages in Telephone Directory. The
selection, coordination, and arrangement of Rural's white
pages do not satisfy the minimum constitutional standards for
copyright protection. No one disputes that Rural undertook the
task of alphabetizing the names itself. But there is nothing
remotely creative about arranging names alphabetically in a
white pages directory.
 Q: Can porn be protected as copyright?
o Sec. 172.2
o Non-discrimination in Bleinstein
 Q: What if the work is violative of RPC?
SUMMARY
1. Original + creativity (modicum level)
o Author(ship)
o Bell case: “recognizable,” trivial variation
2. Moment of creation
a. Registration, deposit of the work (mali yung National
Library na certification lang without deposit)
b. Notice -> (c) = only for damages, not for injunction because
entitled pa rin sa injunction even without (c)
c. Affidavit evidence
6
COPYRIGHT | ATTY. NEGRE
When Copyright Vests
PD 49
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:
(a) Books, including composite and encyclopedic works,
manuscripts, directories, and gazetteers;
(b) Periodicals, including pamphlets and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral
delivery;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic
works and entertainments in dumb shows, the acting form of
which is fixed in writing or otherwise;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture,
engraving, lithography, and other works of art; models or
designs for works of art;
(h) Reproductions of a work of art;
(i) Original ornamental designs or models for articles of
manufacture, whether or not patentable, and other works of
applied art;
(j) Maps, plans, sketches, and charts;
(k) Drawings, or plastic works of a scientific or technical
character;
(l) Photographic works and works produced by a process
analogous to photography; lantern slides;
(m) Cinematographic works and works produced by a process
analogous to cinematography or any process for making
audio-visual recordings;
(n) Computer programs;
(o) Prints, pictorial, illustration, advertising copies, labels, tags,
and box wraps;
(p) Dramatization, translations, adaptations, abridgements,
arrangements and other alterations of literary, musical or
artistic works or of works of the Philippine Government as
herein defined, which shall be protected as provided in
Section 8 of this Decree.
(q) Collection of literary, scholarly, or artistic works or of works
referred to in Section 9 of this Decree which by reason of the
selection and arrangement of their contents constitute
intellectual creations, the same to be protected as such in
accordance with Section 8 of this Decree.
(r) Other literary, scholarly, scientific and artistic works.
BERNE CONVENTION
ARTICLE 5 | 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.
COPYRIGHT SAFEGUARDS AND REGULATION
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.
KAT NIETO | B 2019
SECTION 3. Effect of Non-Registration and Deposit.
If, within 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 laws.
Santos v McCullough Printing Co
 Right of First Publication. The author of a literary composition
has a right to the first publication thereof. He has a right to
determine whether it shall be published at all, and if published,
when, where, by whom, and in what form. This exclusive right is
confined to the first publication.
o When once published, it is dedicated to the public, and the
author loses the exclusive right to control subsequent
publication by others, unless the work is placed under the
protection of the copyright law.
o Prevailing Law Before. Par. 33 of Patent Office
Administrative Order No. 3 (as amended dated September
18, 1947) promulgated pursuant to Republic Act 165,
provides, among others, that 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.
 Application | Christmas Cards. When Ambassador Neri
distributed 800 copies of the design in controversy, plaintiff lost
control of his design and necessary implication was that there
had been a general publication, there having been no showing
of a clear indication that a limited publication was intended.
Filipino Society of Composers v Tan
 Public Performance Prior to Copyright. If the general public
has made use of the object sought to be copyrighted for 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.
 Public Performance for Profit. 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.
o If the music is furnished and used for the purpose of
inducing the public to patronize the establishment and pay
for the entertainment in the purchase of food and drinks,
the music is performed for profit.
o The performance in a restaurant or hotel dining room, by
persons employed by the proprietor, of a copyrighted
musical composition, for the entertainment of patrons,
without charge for admission to hear it, infringes the
exclusive right of the owner of the copyright.
 Application | Songs by Artists of FILSCAP used in Restaurant.
Records show that the songs have already been popular in
radios, jukeboxes long before its registration. The musical
composition in question had long become public property, and
are therefore beyond the protection of Copyright Law.
7
COPYRIGHT | ATTY. NEGRE
Unilever Philippines v CA
 Protection Upon Creation. Section 2 of 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. The intellectual
creators exercise and enjoyment of copyright for his work and
the protection given by law to him is not contingent or
dependent on any formality or registration.
 Application | Laundry Detergent Commercial, “Double Tug” or
“Tac-tac”. Preliminary injunction granted to P&G was proper
because as a subsidiary of P&G Company for which the said
key visual was created, it is within the protective mandate of
the law (creator or his heirs or assigns shall own the copyright).
Such order was proper despite Unilever’s claims that P&G does
not have Certificate of Copyright Registration while Unilever
has.
Scope of Copyright
A. Original Works
BERNE CONVENTION
ARTICLE 2 | PROTECTED WORKS
(1) LITERARY AND ARTISTIC WORKS | 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 dramaticomusical 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) POSSIBLE REQUIREMENT OF FIXATION | 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) DERIVATIVE WORKS | 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) OFFICIAL TEXTS | 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 | 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) OBLIGATION TO PROTECT; BENEFICIARIES OF
PROTECTION | 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) WORKS OF APPLIED ART AND INDUSTRIAL DESIGNS |
Subject to the provisions of Article 7(4) of this Convention, it
KAT NIETO | B 2019
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) NEWS | 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.
SEC. 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:
(p) Books, pamphlets, articles and other writings;
(q) Periodicals and newspapers;
(r) Lectures, sermons, addresses, dissertations prepared for oral
delivery, whether or not reduced in writing or other material
form;
(s) Letters;
(t) Dramatic or dramatico-musical compositions; choreographic
works or entertainment in dumb shows
(u) Musical compositions, with or without words;
(v) Works of drawing, painting, architecture, sculpture,
engraving, lithography or other works of art; models or
designs for works of art;
(w) Original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial
design, and other works of applied art;
(x) Illustrations, maps, plans, sketches, charts and three-
dimensional works relative to geography, topography,
architecture or science;
(y) Drawings or plastic works of a scientific or technical
character;
(z) Photographic works including works produced by a process
analogous to photography; lantern slides;
(aa) Audiovisual works and cinematographic works and
works produced by a process analogous to cinematography
or any process for making audio-visual recordings;
(bb) Pictorial illustrations and advertisements;
(cc) Computer programs; and
(dd) 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)
SEC. 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
8
COPYRIGHT | ATTY. NEGRE
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)
SEC. 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)
SEC. 175. Unprotected Subject Matter. - Notwithstanding the
provisions of Section 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)
SEC. 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 of 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
 Expression, not Concepts. Copyright does not extend to an
idea, procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the form in which
it is described, explained, illustrated, or embodied in such work.
o Copyright protects finished works, not concepts.
 Application | Dating Game Show. Copyright does not extend
to the general concept or format of the dating game show.
Copyright covers the audio-visual recordings of each episode
of Rhoda and Me.
o Presentation of master videotape in evidence is also
indispensable to the determination of the existence of
probable cause.
KAT NIETO | B 2019
United Feature Syndicate v Munsingwear
 Sec. 2, PD 49, “Decree on Intellectual Property” provides:
o The rights granted by this Decree shall, from the moment
of creation, subsist with respect to any of the following
classes of works:
 (O) Prints, pictorial illustrations, advertising copies,
labels, tags, and box wraps.
 Application | Charlie Brown T-Shirts. United Feature has
copyright to the pictorial illustration Charlie Brown since 1950.
It is used and reproduced to the exclusion of others; hence, it
is protected by PD 49.
o Munsingwear cannot claim the defense that it has
trademark registration under Class 25 (children’s wear)
and therefore it can use such trademark so long as it is not
in conflict with United Feature’s use (comic strip in
magazine). This is because United Feature is also the
owner of the trademark due to its prior registration with
the Patent Office.
B. The "Idea/Expression" Distinction
ORIGINALITY NOVELTY
Copyright Patent
Objective
Subjective (Authorship)
New
Baker v Selden
 Copyright on Books. The teachings of science and the rules
and methods of useful art have their final end in application
and use; and this application and use are what the public
derive from the publication of a book which teaches them. But
as embodied and taught in a literary composition or book, their
essence consists only in their statement. This alone is what is
secured by the copyright. The use by another of the same
methods of statement, whether in words or illustrations, in a
book published for teaching the art, would undoubtedly be an
infringement of the copyright.
o Where the truths of a science or the methods of an art are
the common property of the whole world, any author has
the right to express the one, or explain and use the other,
in his own way.
 The description of the art in a book, though entitled to the
benefit of copyright, lays no foundation for an exclusive claim
to the art itself.
o The object of the one is explanation; the object of the
other is use.
o The former may be secured by copyright. The latter can
only be secured, if it can be secured at all, by letters
patent. (Patents are used to protect ideas and methods /
useful arts. Copyrights can only be used to protect
expressions.)
o The use of the art is a totally different thing from a
publication of the book explaining it. By publishing the
book without getting a patent for the art, the latter is given
to the public.
 Application | Book on Bookkeeping. Blank account-books are
not the subject of copyright and that mere copyright of
Selden’s book did not confer upon him the exclusive right to
make and use account-books ruled and arranged as
designated by him and described and illustrated in said book.
Illustrations are mere language employed by Selden to convey
his ideas more clearly. The process themselves are not
protectable.
9
COPYRIGHT | ATTY. NEGRE
A.A. Hoehling v Universal City Studios, Inc
 Historical Facts. 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.
o 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.
 Policy of Copyright. The fundamental policy of copyright laws
is the encouragement of contributions to recorded knowledge.
Copyright provides a financial incentive to those who would
add to the corpus of existing knowledge by creating original
works. Knowledge is expanded as well by granting new authors
of historical works a relatively free hand to build upon the work
of their predecessors.
 A grant of copyright in a published work secures for its author
a limited monopoly over the expression it contains.
 Scenes A Faire. Incidents, characters or settings which are as
practical matter indispensable, or at least standard in the
treatment of a given topic.
 Application | Hindenburg Tradgedy; Luxury Airship. Universal
Studios in making a film about the Hindenburg tragedy, did not
infringed upon Hoehling’s copyright to his book of the same
matter.
American Dental Association v
Delta Dental Plans Association
 Facts do not supply their own principles of organization.
Classification is a creative endeavor. Each scheme of
classification could be expressed in multiple ways.
o A taxonomy is a way of describing items in a body of
knowledge or practice; it is not a collection or compilation
of bits and pieces of reality.
 Application | Dental Procedures Book.
o The original code is not a compilation because for it to be
one, elements should have existed independently and ADA
merely put them together. The Code is a taxonomy.
o Taxonomy (numbers, short descriptions, long descriptions)
can be copyrighted but ADA couldn't stop dentists from
using the ADA Code in their forms and records, or stop
Delta from distributing forms that invited dentists to use the
ADA's Code (pursuant to Baker v Selden ruling that a
copyright did not give an author the right to prevent others
from using the same method).
Pearl & Dean v Shoemart
 There is no copyright infringement when one who, without
being authorized, uses a copyrighted architectural plan to
construct a structure. This is because the copyright does not
extend to the structures themselves.
 Baker vs. Selden. The Court held that exclusivity to the actual
forms is not extended by a copyright. The reason was that to
grant a monopoly in the underlying art when no examination of
its novelty has ever been made would be a surprise and a fraud
upon the public; that is the province of letters patent, not of
copyright.
 Muller vs. Triborough Bridge Authority. Muller had obtained
a copyright over an unpublished drawing entitled Bridge
Approach the drawing showed a novel bridge approach to
unsnarl traffic congestion. The defendant constructed a bridge
approach which was alleged to be an infringement of the new
design illustrated in plaintiffs drawings. In this case it was held
that protection of the drawing does not extend to the
unauthorized duplication of the object drawn because
KAT NIETO | B 2019
copyright extends only to the description or expression of the
object and not to the object itself. It does not prevent one from
using the drawings to construct the object portrayed in the
drawing.
 Application | Light Boxes in SM. The light boxes cannot, by any
stretch of the imagination, be considered as either prints,
pictorial illustrations, advertising copies, labels, tags or box
wraps, to be properly classified as a copyrightable; what was
copyrighted were the technical drawings only, and not the light
boxes themselves. In other cases, it was held that there is no
copyright infringement when one who, without being
authorized, uses a copyrighted architectural plan to construct
a structure. This is because the copyright does not extend to
the structures themselves.
Ching v Salinas
 The focus of copyright is the usefulness of the artistic design,
and not its marketability. The central inquiry is whether the
article is a work of art. Works for applied art include all original
works that are intended to be or have been embodied in useful
article regardless of factors such as mass production,
commercial exploitation, and the potential availability of
design patent protection. While works of applied art, original
intellectual, literary, and artistic works are copyrightable, useful
articles and works of industrial design are not.
o The dichotomy of protection for the aesthetic is not beauty
and utility but art for the copyright and the invention of
original and ornamental design for design patents. If the
sole intrinsic function of an article is its utility, the fact that
the work is unique and attractively shaped will not qualify
it as a work of art.
 Application | Utility Models. The utility models described as
“Leaf Spring Eye Bushing for Automobile” are not copyrightable
but they may be the subject of patent. The models (designs for
spare parts in a car) are not literary or artistic works. They are
not intellectual creations in the literary and artistic domain, or
works of applied art. They are certainly not ornamental designs
or one having decorative quality or value.
o A utility model is a technical solution to a problem in any
field of human activity which is new and industrially
applicable. It may be, or may relate to, a product, a
process, or an improvement of either. It is essentially an
invention in the mechanical field.
Hatchdoors case
 Bidding for hatchdoors
 Sought copyright registration for all the drawings, belatedly.
 No copyright infringement when the hatchdoors were
manufactured.
 Note: In the US, it is required to have copyright certificate to
sue. In Philippines, no need.
10
COPYRIGHT | ATTY. NEGRE
C. Derivative Works and Compilations
L. Batlin & Son, Inc. v Snyder
 Originality. Originality means that the work owes its creation
to the author and this in turn means that the work must not
consist of actual copying.
o One who has slavishly or mechanically copied from others
may not claim to be an author. The work must contain some
substantial, not merely trivial originality.
 Copyright for Reproduction. While a copy of something in the
public domain will not, if it be merely a copy, support a
copyright, a distinguishable variation will.
o The reproduction must contain an original contribution not
present in the underlying work of art and be more than just
a mere copy.
o The mere reproduction of a work of art in a different
medium should not constitute the required originality for
the reason that no one can claim to have independently
evolved any particular medium.
 Higher Degree of Skill Required. The requirement of
originality cannot be satisfied by demonstration of “physical
skill” or “special training.” A considerably higher degree of skill
is required, true artistic skill, to make the reproduction
copyrightable.
o In the Alfred Bell case, the engraver’s art there required
great talent and labor to effectuate the management of
light and shade.
 Application | Uncle Sam Banks Reproduced in HK. Snyder had
a copyright registration to the plastic Uncle Sam bank as
sculpture which had mass reproduction in Hong Kong. Batlin
also had Uncle Sam banks made in Taiwan. Snyder’s banks
were not copyrightable because there is no originality in the
expression of ideas.
o The differences between the copyrighted plastic banks
and the cast iron mechanical banks (original banks which
are part of public domain) are merely the reduction of size
and material.
o No significant alterations were made or that had any
purpose other than the functional one of making a more
suitable figure in plastic.
o Manufacture also takes a day and a half – no artistic skill
and effort.
o No benefit of copyright can be granted to the knock-off
reproduction of the cast iron Uncle Sam bank.
Entertainment Research Group, Inc. v
Genesis Creative Group
 Derivative Work. A work based upon one or more pre-existing
works, such as an art reproduction, or any other form in which
a work may be recast, transformed, or adapted.
o A work consisting of editorial revisions, annotations,
adapted elaborations, or other modifications, which, as a
whole, represent an original work of authorship, is a
derivative work.
o Copyright protection afforded to derivative works is more
limited than it is for original works of authorship. It only
extends to the material contributed by the author of
such work as distinguished from the preexisting material
employed in the work.
 Rationale: If copyright protection were given to
derivative works that are virtually identical to the
underlying works, then the owner of the underlying
copyrighted work would effectively be prevented from
permitting others to copy her work since the original
derivative copyright holder would have a de facto
monopoly.
KAT NIETO | B 2019
 Durham Test.
1. To support a copyright, original aspects of a derivative
work must be more than trivial.
2. The original aspects of a derivative work must reflect the
degree to which it relies on pre-existing material and
must not in any way affect the scope of any copyright
protection in that pre-existing material.
 Copyright in such work is independent of, and does not
affect or enlarge the scope, duration, ownership, or
subsistence of any copyright protection in the pre-
existing material.
 Application | 3D Inflatable Costumes of Known Characters.
Applying the Durham test, the costumes are not copyrightable.
1. No trivial changes because ERG has to copy the underlying
original character (since that is the essence of its
business).
2. Granting copyright would effectively result to ERG having
a monopoly over the production of costumes and limiting
the copyright holder of underlying copyrighted work.
Pickett v Prince
 Derivative Work. Work based upon one or more preexisting
works, or a modification which, as a whole, represents an
original work of authorship.
o Copyright Act grants the owner of a copyright the
exclusive right to prepare derivative works based upon the
copyrighted work.
o There is no infringement by the owner of the copyright of
the original work, since section 106(2) entitles him to make
derivative works based on his copyrighted work.
 Right to make a derivative work does not authorize the
maker to incorporate into it material that infringes
someone else’s copyright.
 A stranger can make a derivative work without the permission
of the owner of the copyright of the original work if the original
work does not "pervade" the derivative work.
o We can thus imagine the notion of pervasiveness being
used to distinguish a work fairly described as derivative
from works only loosely connected with some ancestral
work claimed to be their original.
o The Bernstein-Sondheim musical West Side Story, for
example, is based loosely on Shakespeare's Romeo and
Juliet, which in turn is based loosely on Ovid's Pyramus and
Thisbe, so that if "derivative work" were defined broadly
enough (and copyright were perpetual) West Side Story
would infringe Pyramus and Thisbe unless authorized by
Ovid's heirs.
 Application | Prince Guitar. Pickett has no cause of action
because Prince did not infringe upon Pickett’s rights since
Pickett did not have a copyright for his derivative work based
on Prince’s copyrighted symbol. Pickett could not make a
derivative work based on Prince’s symbol without Prince’s
authorization even if Pickett’s guitar had a smidgeon of
originality.
o Pickett’s argument that permission is not needed does not
hold water (“pervasiveness” only applies to those with
loose connection to some ancestral work). Prince’s symbol
clearly “pervades” the guitar.
Feist Publications, Inc. v Rural Telephone Service Co.
 Compilation. A work formed by the collection and assembly of
preexisting materials or of data that are selected, coordinated,
or arranged in such a way that the resulting work, as a whole,
constitutes an original work of authorship.
 The statute identifies three distinct elements, and requires each
to be met for a work to qualify as a copyrightable compilation:
11
COPYRIGHT | ATTY. NEGRE
1. Collection and assembly of preexisting material, facts, or
data;
2. Selection, coordination, or arrangement of those
materials; and
3. Creation, by virtue of the particular selection,
coordination, or arrangement, of an "original" work of
authorship.
Roth Greeting Cards v United Card Co.
 Words of Public Domain. While the textual matter involved are
of public domain, the arrangement of the words, their
combination and plan, together with appropriate and original
artwork, is the entitled to copyright protection.
 Application | The textual matter in Roth’s greeting cards was
not original to Roth and therefore not copyrightable. However,
proper analysis of the problem requires that all elements of
each card, including text, arrangement of text, artwork, and
association between artwork and text, be considered as a
whole. Roth’s cards, considered as a whole, represents a
tangible expression of an idea and that such expression was,
in totality, created by Roth.
o The total concept and feel of United’s cards are the same
as the copyrighted cards of Roth. The characters depicted
in the art work, mood portrayed, combination of artwork
conveying a particular mood with a particular message,
and arrangement of words on the greeting card are
substantially the same as in Roth’s. The lettering is also very
similar.
 Dissenting Opinion | Phrases on the cards were in common
use. Ordinary phraseology within the public domain is not
copyrightable. The case cited by the majority opinion held that
both the artwork and the text materials were copyrightable
individually.
Mason v Montgomery Data, Inc.
 Compilation. Maps are not mere factual compilations but
classified as “pictorial, graphic, and sculptural works.” Unlike
telephone directories and other factual compilations, maps
have an inherent pictorial or photographic nature that merits
copyright protection.
o It is true that maps are factual compilations insofar as their
subject matter is concerned. Admittedly, most maps
present information about geographic relationships, and
the "accuracy" of this presentation, with its utilitarian
aspects, is the reason most maps are made and sold.
o Unlike most other factual compilations, however, maps
translate this subject-matter into pictorial or graphic form.
Since it is this pictorial or graphic form, and not the map's
subject matter, that is relevant to copyright protection,
maps must be distinguished from non-pictorial fact
compilations.
o A map does not present objective reality; just as a
photograph's pictorial form is central to its nature, so a
map transforms reality into a unique pictorial form central
to its nature.
 Application | Maps. Mason’s compilation of the information of
his maps involved creativity in selection, coordination, and
arrangement of the facts that far exceeds the required
minimum level. They include identification, location, relative
position, size, shape of land grants and real property in
Montgomery County and representations of survey lines, tract
boundaries, identification of deeds, abstract numbers.
KAT NIETO | B 2019
Authorship
SEC. 178. Rules on Copyright Ownership. - Copyright ownership
shall be governed by the following rules:
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)
SEC. 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
doubts as to the author’s identity, or if the author of the
anonymous works discloses his identity. (Sec. 7, P.D. 49)
SEC. 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)
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 is patented. (n)
Article 723. Letters and other private communications in
writing are owned by the person to whom they are addressed
and delivered, but they cannot be published or disseminated
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. 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)
A. Sole Authorship
SEC. 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;
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COPYRIGHT | ATTY. NEGRE
Lindsay v The Wrecked and Abandoned Vessel R.M.S. Titanic
 Author. Author of a work is a person who actually creates the
work, that is, the person who translates an idea into a fixed,
tangible expression entitled to copyright protection.
o Authors may be entitled to copyright protection even if
they do not perform with their own hands the mechanical
tasks of putting the material into the form distributed to
the public.
 Joint Authorship. Joint work is one prepared by two or more
authors with the intention that their contributions be merged
into inseparable or interdependent parts of a unitary whole.
o To prove co-authorship status, it must be shown by the
individual claiming co-authorship status that each of the
putative co-authors:
1. Fully intended to be co-authors, and
2. Made independently copyrightable contributions to
the work
 An important indicator of authorship is a contributor’s decision
making authority over what changes are made and what is
included in a work.
o 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.
 Application | Lindsay is the author of the documentary. Though
he was not the one who actually filmed the wreckage, he had
high degree of control over the filming – e.g. camera angles,
lighting, etc. No joint authorship in this care because Lindsay
exercised total control.
o Q: Commissioned work?
o Q: Co-authorship with cameramen?
B. Joint Authorship
SEC. 178. Rules on Copyright Ownership. - Copyright ownership
shall be governed by the following rules:
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 co-ownership. 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;
 Is intention material under Sec. 178?
o No express requirement for intention to be co-authors.
Erickson v Trinity Theatre, Inc.
 Joint Authorship. In a joint work, the joint authors hold
undivided interests in a work, despite any differences in each
author’s contribution. Each author as co-owner has the right to
use or to license the use of the work subject to an accounting
of profits among the owners. No matter how minor the
contribution is, if accorded joint authorship status, enjoys a
significant benefit.
o Even if two or more persons collaborate with the intent to
create a unitary work, the product will be considered a
joint work only if the collaborators can be considered
authors.
o Two Tests in Evaluating Contributions of Authors.
1. De minimis test
 Requires that only the combined product of joint
efforts must be copyrightable
KAT NIETO | B 2019
 Requires that more than a word or line must be
added by one who claims to be a joint author
 Uncopyrightable plot ideas for author 1 + literary
expression for author 2 = joint work
 Court did not accept this test because it is
inconsistent with the premise that ideas and
concepts standing alone cannot be copyrighted
2. Copyrightable subject matter
i. Each author’s contribution is copyrightable or
can stand on its own as a subject matter of
copyright, and
ii. Parties must have intended to be joint authors at
the time work was created
 Q: In a thesis paper, can the thesis adviser claim a
right to be a co-author?
 Author. To qualify as an author, one must supply more than
mere direction or ideas. An author is the party who actually
creates the work, i.e., the person who translates an idea into a
fixed, tangible expression entitled to copyright protection.
 Application | First two plays are owned by Erickson. The third
play is co-authored with Lynn.
Aalmuhammed v Lee
 Author. Involves originating, making, producing, as the
inventive or mastermind, the thing which is to be protected.
 Joint Authorship. For a work to be considered joint:
1. A copyrightable work
2. Two or more authors
3. Authors must intend their contributions be merged into
inseparable or interdependent parts of a unitary whole
o Requires each author to make an independently
copyrightable contribution to the disputed work.
 A creative contribution does not suffice to establish authorship
of the movie. Burrow-Giles, in defining “author,” requires more
than a minimal creative or original contribution to the work.
 Contribution of independently copyrightable material to a work
intended to be inseparable whole will not suffice to establish
authorship of a joint work. A person claiming to be an author
of a joint work must prove that both parties intended each
other to be joint authors.
o In absence of contract, one of the most important factors
to be considered is control – i.e. one who superintends the
work by exercising control or the inventive or mastermind
who gives effect to the idea.
 Application | Aalmuhammed made valuable contributions to
the movie but it was not sufficient for him to be considered a
co-author. He had no control and did not offer evidence that
he was the inventive or mastermind of the movie.
o Q: Can you use the previous case where photographer
arranged the subject of the photo to be applied in this
case?
o Q: Cherie Gil case. Is she the sole author?
1. Creativity test.
2. Substantial contribution test.
3. Authorship.
 She could have claimed copyright. The director has
control as to what can or cannot be included in the
movie.
 Is she a co-author?
 She cannot claim copyright.
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COPYRIGHT | ATTY. NEGRE
C. Works Made for Hire
SEC. 178. Rules on Copyright Ownership. - Copyright ownership
shall be governed by the following rules:
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;
Community for Creative Non-Violence v Reid
 Works-for-hire.
o GR: Author is the party who actually creates the work, that
is, the person who translates an idea into a fixed, tangible
expression entitled to copyright protection.
o E: Works made for hire.
 Employer or other person for whom the work was
prepared is considered the author and owns the
copyright unless there is a written agreement to the
contrary.
 Work for hire under the law provides 2 circumstances:
1. A work prepared by an employee within the
scope of his or her employment, or
2. A work specially commissioned or ordered for
use as a contribution (to a collective work, part
of a motion picture or other audiovisual work,
translation, supplementary work, compilation,
instructional text, text, answer material for a test,
or an atlas) if the parties expressly agree in a
written instrument signed by them that the work
shall be considered a work made for hire
o The argument that a work is "prepared by an employee
within the scope of his or her employment" whenever the
hiring party retains the right to control, or actually controls,
the work is inconsistent with the language and legislative
history of the work for hire provisions, and would distort the
provisions' structure, which views works by employees and
commissioned works by independent contractors as
mutually exclusive entities.
 Application | Modern Nativity Sculpture. Application of the
two types:
1. Reid was an independent contractor, rather than an
“employee" since, although CCNV members directed
enough of the work to ensure that the statue met their
specifications, all other relevant circumstances weigh
heavily against finding an employment relationship. Reid
engages in a skilled occupation; supplied his own tools;
worked in Baltimore without daily supervision from
Washington; was retained for a relatively short period of
time; had absolute freedom to decide when and how long
to work in order to meet his deadline; and had total
discretion in hiring and paying assistants.
2. Sculpture does not fit within any of the nine categories of
"specially ordered or commissioned" works enumerated in
KAT NIETO | B 2019
that subsection, and no written agreement between the
parties establishes "Third World America" as a work for
hire.
 Compare with Lindsay.
 Q: Do you apply the employer-employee relationship test
(labor law) for Sec. 178.3?
 Q: Arrangement is to pay-per-piece. Control over results.
Aymes v Bonelli
 Work-for-hire.
1. A work prepared by an employee within the scope of his or
her employee, or
2. A work specially ordered or commissioned for use if the
parties expressly agree in a written instrument signed by
them that the work shall be considered a work made for
hire
 In Reid, the Court concluded that to determine whether a work
is for hire under the Act, a court first should ascertain, using
principles of agency, whether the work was prepared by an
employee or an independent contractor.
 Court identified following as necessary factors to determine
employee or independent contractor using principles of
agency
1. Hiring party’s right to control the manner and means by
which the product is accomplished
2. Skill required
3. Provision of employee benefits
4. Tax treatment of hired party
5. Whether hiring party has the right to assign additional
projects to the hired party
 Application | Program Made for Swimming Pool Store. Aymes
owns the copyright to the program because he is not an
employee of the company; rather, he was an independent
contractor.
Roeslin v District of Columbia
 Work-for-Hire. Scope of employment, as per principles of
agency:
1. Within the kind he is employed to perform
2. Occurs substantially within authorized time & space limits
3. It is actuated, at least in part, by a purpose to serve master
 Application | Program Voluntarily Made for Bureau of Labor
Statistics. Application of the principles of agency:
1. Developing computer software was not the kind of work
that Roeslin was hired to do. He was a labor economist,
not a computer programmer.
2. Roeslin did the computer program in his spare time, not
during office hours.
3. Roeslin created the program to create job opportunities
for himself and to prove that it can be done – not to serve
the Bureau.
 Q: Should the creation be necessary to the work?
o Nature of the work?
 Q: Would it have changed the result if the district immediately
accepted Roeslin’s proposal? Then awarded him for helping
the system?
 Q: If the creation is directly related to his job description?
 Q: Jay Sonza case. Should he have sued for copyright
infringement because ABS-CBN continued to air his program?
o Court ruled that he was not an employee.
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COPYRIGHT | ATTY. NEGRE
D. Government Works
SEC. 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 of 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)
E. Duration of Copyright
BERNE CONVENTION
ARTICLE 7 | TERM OF PROTECTION
(1) GENERALLY | The term of protection granted by this
Convention shall be the life of the author and 50 years after
his death.
(2) CINEMATOGRAPHIC WORKS | However, in the case of
cinematographic works, the countries of the Union may
provide that the term of protection shall expire 50 years
after the work has been made available to the public with
the consent of the author, or, failing such an event within
50 years from the making of such a work, 50 years after
the making.
(3) ANONYMOUS AND PSEUDONYMS | In the case of
anonymous or pseudonymous works, the term of protection
granted by this Convention shall expire 50 years after the
work has been lawfully made available to the public.
However, when the pseudonym adopted by the author
leaves no doubt as to his identity, the term of protection
shall be that provided in paragraph (1). If the author of an
anonymous or pseudonymous work discloses his identity
during the above-mentioned period, the term of protection
applicable shall be that provided in paragraph (1). The
countries of the Union shall not be required to protect
anonymous or pseudonymous works in respect of which it is
reasonable to presume that their author has been dead for
fifty years.
(4) PHOTOGRAPHIC WORKS AND WORKS OF APPLIED ART | It
shall be a matter for legislation in the countries of the Union
to determine 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.
(5) STARTING DATE OF COMPUTATION | The term of
protection subsequent to the death of the author and the
KAT NIETO | B 2019
terms 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 year following death or such event.
(6) LONGER TERMS | The countries of the Union may grant a
term of protection in excess of those provided by the
preceding paragraphs.
(7) SHORTER TERMS | Those countries of the Union bound by the
Rome Act of this Convention which 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) APPLICABLE LAW; COMPARISON OF TERMS | 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.
ARTICLE 7BIS | TERM OF PROTECTION FOR 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.
F. Literary and Artistic Works
SEC. 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 50 years
after his death. This rule also applies to posthumous
works. (Sec. 21, first sentence, P.D. No. 49a)
213.2. In case of works of joint authorship, the economic rights
shall be protected during the life of the last surviving
author and for 50 years after his death. (Sec. 21, second
sentence, P.D. no. 49)
213.3. In case of anonymous or pseudonymous works, the
copyright shall be protected for 50 years from the date on
which the work was first lawfully published: Provided,
That where, before the expiration of the said period, the
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
published before shall be protected for fifty (50) years
counted from the making of the work. (Sec. 23, P.D. No. 49)
213.4. In case of works of applied art the protection shall be for
a period of 25 years from the date of making.
213.5. In case of photographic works, the protection shall be for
50 years from publication of the work and, if
unpublished, 50 years from the making. (Sec. 24(C), P.D.
49a) 213.6. In case of audio-visual works including those
produced by process analogous to photography or any
process for making audio-visual recordings, the term shall
be 50 years from date of publication and, if
unpublished, from the date of making.
SEC. 214. Calculation of Term. - The term of protection
subsequent to the death of the author provided in the preceding
Section shall run from the date of his death or of publication,
but such terms shall always be deemed to begin on the 1st day
of January of the year following the event which gave rise to
them. (Sec. 25, P.D. No. 49)
15
COPYRIGHT | ATTY. NEGRE
PROTECTED WORKS AND
BOUNDARY PROBLEMS
Useful Articles with Pictorial,
Graphic, or Sculptural Aspects
Mazer v Stein
 Useful Article. An article having a utilitarian application may
be copyrighted. We find nothing in the copyright statute to
support the argument that the intended use or use in industry
of an article eligible for copyright bars or invalidates its
registration. We do not read such a limitation into the copyright
law.
o Verbal distinctions between purely aesthetic articles and
useful works of art have long ago ended insofar as
statutory copyright language is concerned.
o Subsequent Utilization. A subsequent utilization of a
work of art in an article of manufacture in no way affects
the right of the copyright owner to be protected against
infringement of the work of art itself.
o The subsequent registration of a work of art published as
an element in a manufactured article, is a misuse of the
copyright.
 Copyright v Patent. The dichotomy of protection for the
aesthetic is not beauty and utility, but art for the copyright and
the invention of original and ornamental design for design
patents.
o Artistic articles are protected in form but not their
mechanical or utilitarian aspects.
 Application | Human Figures as Statuettes and Lamp Bases.
Stein obtained a copyright on a statuette which was then put
into mass production as base for table lamps. Subsequent use
as table lamps did not remove statuette's copyright protection.
Pursuant to the copyright, Stein may not exclude others from
using statuettes of human figures in table lamps. He may only
prevent the use of copies of such statuettes as such or as
incorporated in some other article.
Lucasfilm v Ainsworth (UK Case)
 Copyright, Designs and Patents Act 1988 provides for acts
permitted in relation to copyright works:
o Sec. 51 provides that it will not be an infringement of any
copyright in a design document or model recording or
embodying a design for anything other than an artistic
work or typeface to make an article to the design or to
copy an article made to the design.
 Design document is defined as a record of a design
and includes a drawing
 The basis of the defense is to allow generic industrial
spare parts to be made by third party suppliers without
them being accused of infringement of copyright in
the drawings for the original spare part.
o Section 52 CDPA provides that where the owner of the
copyright in an artistic work has made copies of the work
by an industrial process and marketed such articles, the
artistic work can be copied by making articles of any
description, after 15 years from when such articles were
first marketed.
 Application | Stormtrooper Helmets. Helmet did not qualify as
a sculpture. Primary function of the helmet was utilitarian. While
it was intended to express an idea, it was not conceived, or
created, with the intention that it should do so other than as a
character portrayal in the film. The helmets are a mixture of
costume and prop to contribute to the artistic effect of the film
KAT NIETO | B 2019
as a film. The helmet was utilitarian in the sense that it was an
element in the process of production of the film.
o Sec. 51 - Drawings provided to Ainsworth, although not
definitive of the ultimate product, were indeed in a real
sense a design document for the costume/prop that was
to be used in the film.
 The reproductions of Ainsworth were not in themselves
an artistic work in the form of a sculpture or comprised
a work of artistic craftsmanship.
o Sec. 52 – Ainsworth was able to rely on this defense as the
armor and the helmet were not artistic works and in any
event the 15 year period had expired before 2004 when
Ainsworth began reproducing copies.
A. Useful Articles [Woks of Applied Art]
and Doctrine of Separability
Kieselstein-Cord v Accessories by Pearl
 Artistic Feature Separated from Functional Elements. The
1976 copyright statute does not provide for the copyrighting of
useful articles except to the extent that their designs
incorporate artistic features that can be identified separately
from the functional elements of the articles.
o Legislative policy supports the Copyright Office's "effort to
distinguish between the instances where the aesthetic
element is conceptually severable and the instances where
the aesthetic element is inextricably interwoven with the
utilitarian aspect of the article."
o It will, so long as the statute remains in its present form,
always be necessary to determine whether in a given case
there is a physically or conceptually separable artistic
sculpture or carving capable of existing independently as
a work of art.
 Application | Belt Buckles. We see in appellant's belt buckles
conceptually separable sculptural elements, as apparently
have the buckles' wearers who have used them as
ornamentation for parts of the body other than the waist. The
primary ornamental aspect of the Vaquero and Winchester
buckles is conceptually separable from their subsidiary
utilitarian function. Pieces of applied art, these buckles may be
considered jewelry, the form of which is subject to copyright
protection.
Carol Barnhart Inc v Economy Cover Corp
 The law provides that design of a useful article shall only be
considered pictorial, graphic, and sculptural works only if, and
only to the extent that such design incorporates pictorial,
graphic, or sculptural features that can be identified
separately from, and are capable of existing independently of,
the utilitarian aspects of the article.
 Utility as Sole Function Not Copyrightable. If sole intrinsic
function of an article is utility, the fact that the article is unique
and attractively shaped will not qualify as a work of art.
o An article with ornamental features inseparable from its
functional features is not copyrightable.
 Utility and Artistic Feature Separable. However, if the shape
of a utilitarian article incorporates features which can be
identified separately and are capable of existing
independently as a work of art, such features will be eligible
for registration.
 Temporal Displacement Test. The aesthetic features are
conceptually separable if the article stimulates in the mind
of the beholder a concept that is separate from the concept
evoked by its utilitarian function.
 Application | Human Torso Mannequins. While evidence may
indicate that the torso forms are in fact aesthetically satisfying
16
COPYRIGHT | ATTY. NEGRE
and valuable, it is insufficient to show that the forms possess
aesthetic or artistic features that are physically or conceptually
separable from the forms' use as utilitarian objects to display
clothes. The features claimed to be aesthetic or artistic (i.e.
life-size configuration of breasts and width of shoulders) are
inextricably intertwined with the utilitarian feature - the display
of clothes.
 Dissenting | The separateness between function and
aesthetics necessary for copyright is not physical, but
conceptual. If, to the ordinary reasonable observer, the
function and aesthetics would be conceptually distinct, the
ornamental features are copyrightable.
o Here, such observer could admire the ornamental features
without contemplating the function of the mannequins, so
these features should be copyrightable.
Brandir International v Cascade Pacific Lumber
 The Copyright Act defines "pictorial, graphic, and sculptural
works" as that "the design of a useful article, as defined in this
section, shall be considered a pictorial, graphic, or sculptural
work only if, and only to the extent that, such design
incorporates pictorial, graphic, or sculptural features that can
be identified separately from, and are capable of existing
independently of, the utilitarian aspects of the article."
 Denicola Test. In the language of conceptual separability, 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.
Conversely, where design elements can be identified as
reflecting the designer's artistic judgment exercised
independently of functional influences, conceptual separability
exists.
o Statutory limitation of copyrightability is an attempt to
identify elements whose form and appearance reflect the
unconstrained perspective of the artist, such features not
being the product of industrial design.
 The dominant characteristic of industrial design is the
influence of nonaesthetic, utilitarian concerns.
 Copyrightability ultimately should depend on the
extent to which the work reflects artistic expression
uninhibited by functional considerations.
 Application | Bike Racks. Rack is not copyrightable because
its design is mainly dependent upon its utility. The form of the
rack is influenced in significant measure by utilitarian concerns
and thus any aesthetic elements cannot be said to be
conceptually separable from the utilitarian elements.
o Had Brandir merely adopted one of the existing sculptures
as a bicycle rack, neither the application to a utilitarian
end nor commercialization of that use would have caused
the object to forfeit its copyrighted status.
KAT NIETO | B 2019
Star Athletica v Varsity Brands
 Court abandoned the distinction between physical and
conceptual separability.
o Physical separability - Feature can be physically separated
from the underlying useful article by ordinary means while
leaving the utilitarian aspects of the article completely
intact
o Conceptual separability - If feature physically cannot be
removed from the useful article by ordinary means
 Separability Analysis. An artistic feature of the design of a
useful article is eligible for copyright protection if the feature:
1. Can be perceived as 2D or 3D work of art separate from
the useful article, and
 Separate identification – decisionmaker need only
be able to look at the useful article and spot some 2D
or 3D element that appears to have pictorial, graphic,
or sculptural qualities.
2. Would qualify as a protectable pictorial, graphic, or
sculptural work either on its own or in some other medium
if imagined separately form the useful article.
 Independent existence – decisionmaker must
determine that the separately identified feature has
the capacity to exist apart from the utilitarian aspects
of the article.
o The feature cannot itself be a useful article or an article
that is normally a part of a useful article.
o The focus of the separability inquiry is on the extracted
feature and not on any aspects of the useful article that
remain after the imaginary extraction. The law does not
require the decisionmaker to imagine a fully functioning
useful article without the artistic feature.
 Law requires that the separated feature qualify as a
non-useful pictorial, graphic, or sculptural work on its
own.
o An artistic feature that would be eligible for copyright
protection on its own cannot lose that protection simply
because it was first created as a feature of the design of
a useful article, even if it makes that article more useful.
 Application | Cheerleading Uniforms. Application of
separability analysis:
1. One can identify the decorations as features having
pictorial, graphic, or sculptural qualities
2. Arrangement of colors, shapes, chevrons on the surface of
the uniform can be separated from the uniform and
applied in another medium (e.g. canvass) and would
qualify as a 2D work
o Copyright limited to the 2D art, Varsity Brands cannot
prohibit any other person from manufacturing a
cheerleading uniform identical in shape, cut, etc.
o Dissent argues that designs are not separable because
imaginatively removing them from the uniforms and
placing them in some other medium would create the
pictures of cheerleading uniforms.
 Such is not a bar to copyright. Just as 2D fine art
corresponds to the shape of the canvass on which it is
painted, 2D applied art correlates to the contours of
the article on which it is applied.
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Computer Software
Apple Computer Inc v Franklin Computer Corp
 As Literary Works. Programs are copyrightable as literary
works. Literary works include expressions not only in words but
also numbers or other numerical symbols or indica.
 Computer Program. A set of statements or instructions to be
used directly or indirectly in a computer in order to bring about
a certain result.
o Law does not distinguish as to what could be subject of
copyright – object code or source code.
 Object code – lowest level of computer language, it is
machine language which is binary language using only
1s and 0s.
 Source code – statements in high level language and
apparently also in assembly language.
o Statute does not make a distinction between application
programs and operating programs.
 Copyright protects the instructions, not the process
involved; hence, both instructions in an operating
system and in an application program are protected.
 US Copyright Act grants copyright protection to original works
of authorship fixed in any tangible medium of expression (now
known or later developed) from which they can be perceived,
reproduced, or otherwise communicated either directly or with
the aid of a machine or device.
 A copyright protects originality rather than novelty or invention.
Copyright law protects the means of expressing the idea. 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.
 Application | Programs in Apple II Computer. Apple does not
seek to copyright the method by which the program instructs
the computer to perform its operating functions but only the
instructions themselves. If other programs can be written or
created which perform the same function as an Apple’s
operating system program, then that program is an expression
of the idea and hence copyrightable.
A. Distinguishing Idea from Expression in Software
Computer Associates International v Altai
 Abstraction-Filtration-Comparison. Test used for substantial
similarity in computer program structure.
1. Abstraction: Court should dissect the allegedly copied
program’s structure and isolate each level of abstraction
contained within it.
 A work may consist of a mixture of numerous ideas and
expressions. It is necessary to retrace and map each
of the designer’s steps in the opposite order in which
there were taken during the program’s creation – i.e.
reverse engineering.
2. Filtration: Examining the structural components at each
level of abstraction to determine whether their particular
inclusion at that level was –
i. Idea (protectable expression), or
ii. Dictated by considerations of (non-protectable
expressions):
a. Efficiency so as to be necessarily incidental to
that idea
o Merger Doctrine: Copyrighted language
may be copied without infringing when there
is but a limited number of ways to express a
given idea
KAT NIETO | B 2019
 Computer context: Most concise logical
proof of formulating the most succinct
mathematical computation – more
efficient a set of modules are, the more
closely they approximate the idea or
process embodied in the program’s
structure
o If the use of the particular set of modules is
necessary to efficiently implement that part
of the program’s process, then the expression
or the programmer’s choice of a specific
module has merged with the underlying idea,
therefore, it is unprotected.
b. Required by factors external to program itself, or
o Scenes A Faire Doctrine: Elements are
mandated by or are customary to a particular
genre. Doctrine is also applicable to
computer programs.
o Mechanical specifications of the computer
o Compatibility requirements of other programs
with which a program is designed to operate
in conjunction
o Computer manufacturer’s design standards
o Demands of the industry being served
o Widely accepted programming practices
within the computer industry
c. Taken from the public domain
o Computer programs that have entered the
public domain
3. Comparison: Determine whether there remains a core
protectable expression
 Substantial similarity inquiry focuses on whether
defendant copies any aspect of this protected
expression as well as an assessment of the copied
portion’s relative importance with respect to the
overall program
 Application | Scheduler Program with Built-in Sub-Program as
Compatibility Component for Other OS. Application of test:
1. Abstraction: There are no similarities between the
organizational charts because the charts were so simple
and obvious to anyone exposed to operation of programs.
This is but one formulation of the scenes a faire doctrine.
2. Filtration: Similar elements were dictated by functional
demands of program and in the public domain; hence, not
copyrightable.
3. Comparison: Upon re-writing of OSCAR 3.4 to 3.5, there
remained virtually no lines of code that were identical to
ADAPTER.
Softel, Inc. v Dragon Medical and Scientific Communications
 Non-Literal Similarity Can Constitute Infringement.
o The individual elements of a computer program that are
filtered out at one level might be copyrightable when
viewed as part of an aggregate of elements at another
level of abstraction. (The Court compared this to a play by
the Greek poet Homer. Each individual word in the play
wasn't independently copyrightable, but put together they
created a copyrightable work.)
o An allegation of infringement based on similarities in
architecture cannot be ignored because many or all of the
design elements are not protectable when considered at
a lower level of abstraction.
o At a higher level of abstraction, there may be
infringement based on claims that there is similarity
between the organizational charts of programs.
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COPYRIGHT | ATTY. NEGRE
 Application | Softel owned a copyright on some video imaging
software. They provided the software to Dragon, but eventually
the deal ended. Dragon retrieved deleted files Softel had left
on their Dragon's computers and used them to make their own
version of Softel's software. Softel sued for copyright
infringement.
o The software was made up of a bunch of different
software 'modules' or 'design elements' that each
performed a function. Dragon used four of Softel's
modules. Dragon argued that each of the modules
performed a pretty basic function, and since Softel
couldn't claim a copyright on any individual basic function,
they couldn't claim that Dragon was infringing.
o Even if all the various features of a computer program are
not individually protectable elements, it could be that the
choice of arrangement and selection could create some
level of copyright protection, similar to how a compilation
can have copyright protection.
Lotus Development Corporation v Borland International
 Altai test may provide a framework for assessing non-literal
copying of computer code but it cannot be applied to
determine whether literal copying of menu command
constitutes copyright infringement.
 Method of Operation. Refers to the means by which a person
operates something. Thus, a text describing how to operate
something would not extend copyright protection to the
method of operation itself.
 Command Hierarchy. A menu command hierarchy is an
uncopyrightable "method of operation." 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).
 Application | Spreadsheet Commands. Lotus menu command
hierarchy is a method of operation. It provides the means by
which users control and operate the Lotus 1-2-3. Without the
menu command hierarchy, users would not be able to access
and control the program. Borland had to copy the menu
command hierarchy to allow its users to operate the program
in substantially the same way.
o While original expression is necessary for copyright
protection, we do not think that it is alone sufficient. Courts
must still inquire whether original expression falls within
one of the categories foreclosed from copyright
protection.
Architectural Works
SEC. 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)
Nelson-Salabes, Inc. v Morningside Holdings
 The mere fact that component parts of a collective work are
neither original to the plaintiff nor copyrightable by the plaintiff
does not preclude a determination that the combination of
such component parts as a separate entity is both original and
copyrightable.
 Protection of Architectural Work. An "architectural work"
includes the overall form as well as the arrangement and
KAT NIETO | B 2019
composition of spaces and elements in the design, but does
not include individual standard features.
 Application | Housing Project. Nelson-Salabes's combination
of common features such as a Y-shaped footprint, bay
windows, the octagonal silo entrance, and gables created a
unique design. To be sure, Paul Seiben, plaintiff's expert in
architecture, testified that he had never seen the same
combination of elements used by Nelson-Salabes on any other
building. Further, the footprint and front elevation used by
Nelson-Salabes were not the only feasible designs.
Consequently, the Court further finds that the defendants have
failed to rebut the prima facie validity of plaintiff's copyright,
and that Nelson-Salabes's selection and arrangement of
common architectural features is unique and exhibits artistic
expression.
Intervest Construction v Canterbury Estate Homes
 Architectural Work. The design of a building as embodied in
any tangible medium of expression, including a building,
architectural plans or drawings. The work includes the overall
form as well as the arrangement and composition of spaces
and elements in the design, but does not include individual
standard features.
o While individual standard features and architectural
elements classifiable as ideas or concepts are not
themselves copyrightable, an architect's original
combination or arrangement of such elements may be.
o The definition of an architectural work closely parallels that
of a "compilation" under the statute, that is: "[A] work
formed by the collection and assembling of preexisting
materials or of data that are selected, coordinated, or
arranged in such a way that the resulting work as a whole
constitutes an original work of authorship."
o When viewed through the narrow lens of compilation
analysis only the original, and thus protected
arrangement and coordination of spaces, elements and
other staple building components should be compared.
 Floor Plans. To determine whether an architectural floor-plan
infringes another, only the differences between the
arrangement and coordination of non-protectible elements
should be compared to determine if there is substantial
similarity between the two plans.
 Application | Floor Plans. Floor plan had common elements to
most houses but upon comparison of the protectable aspects
of the 2 floor plans at issue, focusing only on the narrow
arrangement and coordination of otherwise standard
architectural features, the differences between the designs in
Westminister and Kensington are so significant that no
reasonable, properly instructed jury could find the works
substantially similar.
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COPYRIGHT | ATTY. NEGRE
Characters
A. Expression or Idea?
MGM v American Honda Motor
 Character Tests.
o Story Being Told: It is copyrightable if it is conceivable
that the character really constitutes the story being told.
But if the character is only the chessman in the game of
telling the story, he is not within the area of protection
afforded by copyright (Sam Spade case) – siya ang bida
 But subsequent decisions have casted doubt on the
continued viability of this case as applied to graphic
characters; hence, the character delineation test.
(Note that Sam Spade was a literary character.)
o Character Delineation: Copyright protection is granted
to characters who are especially distinctive.
 Characters which have developed with enough
specificity as to constitute protectable expression.
o Q: Is it possible that in one test, character is copyrightable
but in another it is not? Is it necessary for the show to have
a sequence (Part 2, etc) or is one movie enough to grant
such protection?
o A plaintiff who holds copyrights in a film series acquires
copyright protection as well as for expression of any
significant characters portrayed therein.
 Application | James Bob. Honda’s commercial featured
elements which are unique to James Bond. James Bond is
copyrightable under either the story being told test or
character delineation test. Despite the constant change in
actors, Bond is a unique character whose specific qualities
remain constant despite the change in actors.
Titan Sports v Turner Broadcasting Systems
 Character Delineation Test. The owner of a copyright in
various works embodying a character can acquire copyright
protection for the character itself. 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.
o Protection is limited to the character as defined by
performances 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.
 Application | WWF Wrestlers. Diesel character is a developed
and distinctive character worthy of copyright protection. Titan
Sports described in detail Diesel’s trade dress, costumes, hair
color, and style, all of which were unique among wrestlers and
recognizable by wrestling fans. Diesel character developed
into a fully independent character and ultimately became
integral to the story lines of many televised events.
Designers Guild v Russell Williams (Textiles) (UK case)
 Every element in the expression of an artistic work (unless it got
there by accident or compulsion) is the expression of an idea
on the part of the author. The expression of these ideas is
protected, both as cumulative whole and also to the extent to
which they form a “substantial part” of the work.
o Substantiality depends upon quality rather than quantity.
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.
KAT NIETO | B 2019
 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.
 Idea v Expression. Two propositions for the distinction:
1. A copyright work may express certain ideas which are not
protected because they have no connection with the
literary, dramatic, musical, or artistic nature of the work
2. Certain ideas expressed by a copyright work may not be
protected because (though they are ideas of a literary,
dramatic, or artistic nature) they are not original, or so
commonplace as not to form a substantial part of the work
 Application | Ixia Printed Fabric. Although in this case not the
smallest part of a fabric design had been reproduced with
anything approaching photographic fidelity, the copying of
certain of the ideas expressed in that design which, in their
conjoined expression, had involved original artistic skill and
labor, constituted the copying of a substantial part of the
artistic work.
Anderson v Stallone
 Olson v National Broadcasting. Copyright protection may be
afforded to characters visually depicted in a television series
or in a movie.
 Application | Rocky. Story being told and character
delineation tests applied.
1. Story being told: Highly developed character, and syempre
bida siya eh
2. Character delineation: Specific character traits ranging
from speaking mannerisms to his physical characteristics
o Anderson is guilty of copyright infringement because in
writing his script, he retained the names, relationships, and
built on the experiences of these characters from the prior
Rocky movies. His characters were not merely substantially
similar to Stallone’s – they are Stallone’s characters. His
work is an unauthorized derivative work.
B. Rights of Publicity
Wendt v Host
 Statutory Right of Publicity. 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.
 Common Law Right of Publicity. California recognizes a
common law right of privacy that includes protection against
appropriation for the defendant's advantage of the plaintiff's
name or likeness. The right to be protected against such
appropriations is also referred to as "right of publicity."
o The so-called right of 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.
o The protection of name and likeness from unwarranted
intrusion or exploitation is the heart of the law of privacy.
 Application | Robots in Airport Bars. An actor or actress does
not lose the right to control the commercial exploitation of his
or her likeness by portraying a fictional character.
o Wendt and Ratzenberger concede that they retain no
rights to the characters Norm and Cliff; they argue that the
figures, named "Bob" and "Hank," are not related to
Paramount's copyright of the creative elements of the
characters Norm and Cliff. They argue that it is the physical
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COPYRIGHT | ATTY. NEGRE
likeness to Wendt and Ratzenberger, not Paramount's
characters, that has commercial value to Host.
White v Samsung Electronics
 Common Law Right of Publicity. Extends to means of
appropriation other than name or likeness. Specific means of
appropriation are only relevant for determining whether the
defendant has in fact appropriated the plaintiff’s identity. The
right of publicity does not require that appropriations of
identity be accomplished through particular means to be
actionable.
o If the celebrity’s identity is commercially exploited, there
has been an invasion of his right whether or not his name
or likeness is used.
o The law protects the celebrity’s sole right to exploit the
marketable celebrity identity value whether the celebrity
has achieved her fame out of rare ability, dumb luck, or a
combination thereof.
 Application | Wheel of Fortune Girl. The female-shaped robot
is wearing a long gown, blond wig, and large jewelry. Vanna
White dresses exactly like this at times, but so do many other
women. The robot is in the process of turning a block letter on
a game-board. Vanna White dresses like this while turning
letters on a game-board but perhaps similarly attired
Scrabble-playing women do this as well. The robot is standing
on what looks to be the Wheel of Fortune game show set.
Vanna White dresses like this, turns letters, and does this on the
Wheel of Fortune game show. She is the only one. Indeed,
defendants themselves referred to their ad as the "Vanna
White" ad.
 Q: Should a person be popular to invoke this doctrine?
o For “likeness” it seems so.
C. Database
Selection, Arrangement, and Utility
Bellsouth Advertising & Publishing Co v Donnelley Information
Publishing, Inc.
 Selection of Facts. The protection of copyright must inhere in
a creatively original selection of facts to be reported and not
in the creative means to discover those facts. In no case does
copyright protection extend to any idea, procedure, process,
system, method of operation, concept, principle, or discovery,
regardless of the form in which it is described, explained,
illustrated, or embodied in such work.
 Merger Doctrine. Expression is not protected in those
instances where there is only one or so few ways of expressing
an idea that protection of the expression would effectively
accord protection to the idea itself.
 Infringement Where Expression Constrained by Function.
Where the form of expression is largely prescribed by the
functional constraints, the similarity of expression in a
subsequent work must be very close in order to establish
infringement. Therefore, similarity of expression may have to
amount to verbatim reproduction or very close paraphrasing
before a factual work will be deemed infringed.
 Application | Directories. No copyright protection extended to
compilation because arrangement of BellSouth directory is
typical of such directories. Donnelley did not photocopy or
reproduce the page by page arrangement of BellSouth. There
are apparent differences in the headings between the two
directories though they have the same content.
KAT NIETO | B 2019
CCC Information Services v Maclean Hunter Market Reports
 Copyright in Compilation. Compilations are assemblies of
data selected, coordinated, or arranged in such a way that the
resulting work as a whole constitutes an original work of
authorship. The protection in a compilation extends only to the
material contributed by the author of such work and does not
imply any exclusive right in the preexisting material.
 Originality in Compilation. The required level of originality is
minimal, and that most compilations, merely by exercising some
independent choice in the coordination, selection, or
arrangement of data, will pass the test.
 Facts in Compilation. The facts set forth in the compilation
are not protected and may be freely copied; the protection
extends only to those aspects of the compilation that embody
the original creation of the compiler. For these reasons, the
copyright law undertakes to guarantee the exclusive rights of
compilers, to whatever is original and creative in their works,
even where those original contributions are quite minimal.
 (Idea-Expression Dichotomy) Limited Applicability of
Merger Doctrine. In cases of wholesale takings of
compilations, a selective application of the merger doctrine,
withholding its application as to soft ideas infused with taste
and opinion, will carry out the statutory policy to protect
innovative compilations without impairing the policy that
requires public access to ideas of a more important and useful
kind.
o The original contribution of the compiler will relate to ideas
for the coordination or arrangement of the data.
Generally, these are designed to serve the consumers’
needs, making data more useful by increasing the ease of
access to data.
o If merger doctrine is to be applied on extremes:
 Unbridled application of the merger doctrine would
undo the protection the copyright law intends to
accord to compilations.
 Complete failure to apply it, however, would result in
granting protection to useful ideas.
 Application | Red Book Car Prices.
o Maclean’s valuations were not merely discovered but they
represent the editors’ predictions (based on professional
judgment and expertise) of the feature prices of the cars.
Arrangement responds logically to the needs of the
market.
o As a matter of copyright policy, this was not an appropriate
instance to apply the merger doctrine so as to deprive Red
Book of copyright protection.
What is a “Fact”?
CDN Inc v Kapes
 Facts. Items not original to the author – i.e. not the product of
his creativity – are facts and not copyrightable.
o To warrant protection, compilations and other works must
contain a minimal amount of originality or creativity.
 Merger Doctrine. When the idea and its expression are
inseparable, copying the expression will not be barred since
protecting the expression in such circumstances would confer
monopoly of the idea upon the copyright owner free of the
conditions and limitations imposed by the patent law.
o But accepting the principle in all cases, including these
facts, would eviscerate (i.e. deprive something of its
essential content) the protection of copyright law.
o The guiding consideration in drawing the line is the
preservation of the balance between competition and
protection reflected in copyright laws.
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COPYRIGHT | ATTY. NEGRE
 Application | Coin Pricer. Web listings on retail prices of
collectible US coins. To determine the price, CDN reviews data
to retain only that information it considers to be the most
accurate and important. It is simply not a process through
which they discover a preexisting historical fact, but rather a
process by which they create a price which, in their best
judgment, represents the value of an item as closely as
possible.
o If CDN merely listed historical facts of actual transactions,
the guides would be long, cumbersome, and of little use to
anyone. Dealers looking through such data would have to
use their own judgment and expertise to estimate the value
of a coin.
o What CDN has done is use its own judgment and expertise
in arriving at that value for the dealers. This process imbues
the prices listed with sufficient creativity and originality to
make them copyrightable.
o CDN does not, nor could it, claim protection for its idea of
creating a wholesale price guide, but it can protect its
idea of what those prices are. This allows CDN’s
competitors to create their own price guides, thus
furthering competition while protecting CDN’s creation.
Matthew Bender & Co v West Publishing Co
 Application | West Publishing Page Numbers. The star
pagination is a fact, rather than as an essential part of the
selection or arrangement. The page numbers in the context of
West citation system are facts rather than an expression of
originality. West’s arrangement of cases is protectable but the
page numbers are not. The page numbers are physical
embodiment rather than result of originality.
o Matthew Bender, in its own compilation of judicial
opinions, may insert parallel citation to the West case
reporter through star pagination – i.e. cross-reference
citations that show the page location of a particular text
in West’s printed version of opinions.
Works that Violate the Public Order
BERNE CONVENTION
ARTICLE 17 | 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 (UK case)
 No Copyright for Publication Contrary to Public Interest.
Nor would the Courts of this country enforce a claim by them
to the copyright in a work the publication of which they had
brought about contrary to the public interest. Mr. Wright is
powerless to prevent anyone who chooses to do so from
publishing “Spycatcher” in whole or in part in this country, or to
obtain any other remedy against them.
 Ownership of Copyright. There remains of course, the
question whether the Crown might successfully maintain a
claim that it is in equity the owner of the copyright in the book.
Such a claim has not yet been advanced but might well
succeed if it were to be.
 Separate opinion | Lord Jauncey
o Copyright Limitations in UK. The Courts of UK will not
enforce copyright claims in relation to every original
KAT NIETO | B 2019
literary work. Equitable relief has been refused where the
work contained false statements calculated to deceive
the public and where the work was of grossly immoral
tendency.
 Application | Spycatcher. Wright no copyright in UK because
he breached his obligation of confidence in revealing his
experience with the British Secret Service during his active
service.
Literary Works
A. Short Phrases
Exxon Co v Exxon Insurance Consultants (UK case)
 Word. A word which, though invented and therefore original,
has no meaning and suggests nothing in itself. To give it
substance and meaning, it must be accompanied by other
words or used in a particular context (e.g. name of company)
or juxtaposition (e.g. upon goods).
o A word can be subject to copyright if it has qualities or
characteristics in itself which would justify its recognition
as an original literary work rather than merely as an
invented word.
 Mere fact that a word was invented and that research
or labor was involved in its invention does not in itself
necessarily enable it to qualify original literary work.
 Literary Work. Intended to afford either information and
instruction, or pleasure, in the form of literary enjoyment.
 Application | Exxon. Exxon conveys no information, provides
no instruction. It simply is an artificial combination of 4 letters
of the alphabet which serves purpose only when it is used in
juxtaposition with other English words, to identify one or other
of the companies in the plaintiff’s group.
B. Speech and Interviews
Falwell v Penthouse International
 Fixation Requirement. Court have entertained actions based
on a claim of common law copyright in which the medium of
expression was the spoken word, but in each instance the
courts have never recognized a proprietary interest where
there was no tangible embodiment of the expression of an
idea.
o Note: No fixation needed in Philippine law
o If every utterance is a valuable property right, courts will
be inundated with claims from celebrities and public
figures all of whom may argue that their expressions should
also be afforded the extraordinary protection of copyright.
This would run counter to free speech and press.
o Oral expression of 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.
 Application | Reverend’s Interview Published on Penthouse
Magazine. Reverend’s claim of common law copyright is not
cognizable under the law. He cannot seriously contend that
each of his 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 intellectual
creation. It does not fall under the narrow circumstances where
a cause of action on an oral expression can be sustained under
a common law copyright theory.
 Q: IP code protects sermons. No fixation is needed in
Philippines.
22
COPYRIGHT | ATTY. NEGRE KAT NIETO | B 2019

C. Blank Forms

Bibbero Systems Inc. v Colwell Systems

 Blank Forms. Blank forms which do not convey information are
not copyrightable.
o Blank forms, such as time cards, graph paper, account
books, diaries, bank checks, scorecards, address books,
report forms, order forms and the like, which are designed
for recording information and do not in themselves convey
information.
 Application | Forms for Medical Reimbursement. 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. The superbill is
simply a blank form which gives doctors a convenient method
for recording services performed.
o Bibbero’s simple instructions to the patient on how to file
an insurance claim using the form, such as "complete
upper portion of this form" are far too simple to be
copyrightable as text in and of themselves, unlike the
instructions in other "text with forms" cases (account books
with several pages of instructions on the use of the forms
and advice on the successful management of a service
station conveyed information and were therefore
copyrightable).

23
COPYRIGHT | ATTY. NEGRE
ACQUIRING AND TRANSFERRING
COPYRIGHT
Deposit and Notice
SEC. 191. Deposit and Notice of Deposit with the National Library
and the Supreme Court Library. - At any time during the
subsistence of the copyright, the owner of the copyright or of any
exclusive right in the work may, for the purpose of completing the
records of the National Library and the Supreme Court Library,
register and deposit with them, by personal delivery or by
registered mail, 2 complete copies or reproductions of the
work in such form as the Directors of the said libraries may
prescribe in accordance with regulations: Provided, That only
works in the field of law shall be deposited with the Supreme
Court Library. Such registration and deposit is not a
condition of copyright protection.
(As amended by Republic Act No.10372 or an Act Amending certain provisions of
Republic Act No. 8293 otherwise known as the Intellectual Property Code of the
Philippines, and for other Purposes)
SEC. 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)
SEC. 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)
SEC. 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)
SEC. 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)
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.
Although no copyright should subsist in any work of the
government, any employee may claim it by submitting for
KAT NIETO | B 2019
registration any work that has been created during the time of
his employment but which does not form part of his regularly
prescribed official 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 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
24
COPYRIGHT | ATTY. NEGRE
within three (3) weeks after the first public dissemination or
publication as authorized by the author.
What Is Publication
Estate of Martin Luther King, Jr., Inc. v. CBS, Inc.
 Publication. A performance, no matter how broad the
audience, is not publication. This conclusion is not altered by
the fact that a speech is broadcasted live to a broad radio and
television audience and was the subject of extensive
contemporaneous news coverage.
o General Publication. 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.
 When a general publication occurred, the author
either forfeited his work to the public domain.
 Depends not on the number of people involved, but
rather on the fact that the work is made available to
the public without regard to who they are or what they
propose to do with it.
 Two Instances.
1. Tangible copies of the work are distributed to the
general public in such a manner as allows the
public to exercise dominion and control over the
work.
2. Work is exhibited or displayed in such a manner as
to permit unrestricted copying by the general
public.
o Limited Publication. Contents are communicated to a
select group and for a limited purpose, and without the
right of diffusion, reproduction, distribution, or sale.
 Distribution to the news media for the purpose of
enabling the reporting of a contemporary newsworthy
event is a limited publication.
 Application | I Have a Dream Speech. Delivering speech to the
public does not constitute general publication. General
publication only occurs if tangible copies are distributed, or if
the work is exhibited in a manner to permit unrestricted
copying.
 Class Notes
o Considered as publication because content already
exposed to media
Transfer of Copyright
SEC. 180. Rights of Assignee or Licensee.
180.1. The copyright may be assigned or licensed in whole or in
part. Within the scope of the assignment or license, the
assignee or licensee is entitled to all the rights and
remedies which the assignor or licensor had with respect
to the copyright.
180.2. The copyright is not deemed assigned or licensed 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)
180.4. Any exclusivity in the economic rights in a work may be
exclusively licensed. Within the scope of the exclusive
license, the licensee is entitled to all the rights and
KAT NIETO | B 2019
remedies which the licensor had with respect to the
copyright.
180.5. The copyright owner has the right to regular statements of
accounts from the assignee or the licensee with regard to
assigned or licensed work.
(As amended by Republic Act No.10372 or an Act Amending certain provisions of
Republic Act No. 8293 otherwise known as the Intellectual Property Code of the
Philippines, and for other Purposes)
SEC. 181. Copyright and Material Object. - The copyright is
distinct from the property in the material object subject to it.
Consequently, the transfer, assignment or licensing 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, assignment
or licensing of the copyright. (Sec. 16, P.D. No. 49)
(As amended by Republic Act No.10372 or an Act Amending certain provisions of
Republic Act No. 8293 otherwise known as the Intellectual Property Code of the
Philippines, and for other Purposes)
SEC. 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)
SEC 183. Designation of Society. - The owners of copyright and
related rights or their heirs may designate a society of artists,
writers, composers and other right-holders to collectively
manage their economic or moral rights on their behalf. For the
said societies to enforce the rights of their members, they shall
first secure the necessary accreditation from the Intellectual
Property Office. (Sec. 32, P.D. No. 49a)
(As amended by Republic Act No.10372 or an Act Amending certain provisions of
Republic Act No. 8293 otherwise known as the Intellectual Property Code of the
Philippines, and for other Purposes)
SEC. 4. Definitions. - 4.2. The term "technology transfer
arrangements" refers to contracts or agreements involving the
transfer of systematic knowledge for the manufacture of a
product, the application of a process, or rendering of a
service including management contracts; and the transfer,
assignment or licensing of all forms of intellectual property
rights, including licensing of computer software except
computer software developed for mass market.
SEC. 87. Prohibited Clauses. - Except in cases under Section 91,
the following provisions shall be deemed prima facie to have an
adverse effect on competition and trade:
87.1. Those which impose upon the licensee the obligation to
acquire from a specific source capital goods, intermediate
products, raw materials, and other technologies, or of
permanently employing personnel indicated by the
licensor;
87.2. Those pursuant to which the licensor reserves the right to fix
the sale or resale prices of the products manufactured on
the basis of the license;
87.3. Those that contain restrictions regarding the volume and
structure of production;
87.4. Those that prohibit the use of competitive technologies in a
nonexclusive technology transfer agreement;
87.5. Those that establish a full or partial purchase option in favor
of the licensor;
87.6. Those that obligate the licensee to transfer for free to the
licensor the inventions or improvements that may be
obtained through the use of the licensed technology;
25
COPYRIGHT | ATTY. NEGRE
87.7. Those that require payment of royalties to the owners of
patents for patents which are not used;
87.8. Those that prohibit the licensee to export the licensed
product unless justified for the protection of the legitimate
interest of the licensor such as exports to countries where
exclusive licenses to manufacture and/or distribute the
licensed product(s) have already been granted;
87.9. Those which restrict the use of the technology supplied
after the expiration of the technology transfer
arrangement, except in cases of early termination of the
technology transfer arrangement due to reason(s)
attributable to the licensee;
87.10. Those which require payments for patents and other
industrial property rights after their expiration, termination
arrangement;
87.11. Those which require that the technology recipient shall not
contest the validity of any of the patents of the technology
supplier;
87.12. Those which restrict the research and development
activities of the licensee designed to absorb and adapt the
transferred technology to local conditions or to initiate
research and development programs in connection with
new products, processes or equipment;
87.13. Those which prevent the licensee from adapting the
imported technology to local conditions, or introducing
innovation to it, as long as it does not impair the quality
standards prescribed by the licensor;
87.14. Those which exempt the licensor for liability for
nonfulfillment of his responsibilities under the technology
transfer arrangement and/or liability arising from third
party suits brought about by the use of the licensed product
or the licensed technology; and
87.15. Other clauses with equivalent effects. (Sec. 33-C(2), RA
165a)
SEC. 88. Mandatory Provisions. - The following provisions shall be
included in voluntary license contracts:
88.1. That the laws of the Philippines shall govern the interpretation
of the same and in the event of litigation, the venue shall
be the proper court in the place where the licensee has its
principal office;
88.2. Continued access to improvements in techniques and
processes related to the technology shall be made
available during the period of the technology transfer
arrangement;
88.3. In the event the technology transfer arrangement shall
provide for arbitration, the Procedure of Arbitration of the
Arbitration Law of the Philippines or the Arbitration Rules of
the United Nations Commission on International Trade Law
(UNCITRAL) or the Rules of Conciliation and Arbitration of
the International Chamber of Commerce (ICC) shall apply
and the venue of arbitration shall be the Philippines or any
neutral country; and
88.4. The Philippine taxes on all payments relating to the
technology transfer arrangement shall be borne by the
licensor. (n)
SEC. 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
KAT NIETO | B 2019
and Technology Transfer Bureau under the provisions of Section 91
on exceptional cases. (n)
SEC. 237. Preservation of Existing Rights – Nothing herein shall
adversely affect the rights on the enforcement of rights in patents,
utility models, industrial designs, marks and works, acquired in
good faith prior to the effective date of this Act. (n)
Asset Marketing Systems, Inc. v Gagnon
 Licenses.
o GR: Exclusive licenses must be in writing
o E: Non-exclusive licenses need not be in writing (pwede
implied)
 Implied License.
1. Licensee requests the creation of a work
2. Licensor makes that particular work and delivers it to the
licensee who requested it
3. Licensor intends that the licensee-requestor copy and
distribute his work
 Relevant intent is the licensor’s objective intent at the
time of the creation and delivery of the software as
manifested by the parties’ conduct.
 Factors determinative of intent
 Whether parties were engaged in a short-term
discrete transaction as opposed to an ongoing
relationship
 Whether creator utilized written contracts
providing that copyrighted materials could only be
used with the creator’s future involvement or
express permission
 Whether creator’s conduct during creation or
delivery of copyrighted material indicated that
use of material without creator’s involvement or
consent was permissible
 Application | Software Programs Created by Gagnon. AMS
did not infringe upon Gagnon’s copyright when it continued to
use and modify the programs Gagnon created without his
consent because AMS had an implied unlimited license for the
programs.
o Gagnon delivered the software without any caveats or
limitations on AMS’s use of the programs. Gagnon had to
express an intent to retain control over the programs and
limit AMS’s license if he intended to do so. Belated
statement was not sufficient to negate all other objective
manifestations of intent to grant AMS an unlimited license.
o Splash screens containing copyright notice speak of
Gagnon’s intent to retain copyright ownership over the
programs, not to his intent to grant or not grant a license
as would be his right as the copyright owner.
 Class Notes
o Q: Do we have implied license in the Philippines?
 Sec. 180.2 requires that it be written.
o Q: Is it necessary that intention be express?
New York Times Company v Tasini
 Two Copyrights in a Collective Work.
o Separate Contribution. Vests initially in the author of the
contribution.
o Collective Work as a Whole. Extends only to the creative
material contributed by that author, not to the pre-existing
material employed in the work.
 GR: Publisher only has copyright over the collective
work, thus, privileged to reproduce or distribute an
article contributed by an author only as part of any or
all of the 3 categories of collective work:
26
COPYRIGHT | ATTY. NEGRE
1. That collective work to which the author
contributed
2. Any revision of that collective work
3. Any later collective work in the same series
 Doctrine of Copyright Indivisibility. Previously adopted by
the old Copyright Act where author did not have the option to
assign only the right of publication in the periodical. Author’s
copyright in a published article only recognized when the
article was printed with a copyright notice in the author’s
name.
 Application | Lexis/Nexis. Publishers’ license agreement with
Nexis to feature the articles of the authors infringed upon the
latter’s copyrights. Database created by Nexis may be viewed
as parts of a new compendium. It may also be viewed as
separate articles, no longer part of a collective work since
articles appear disconnected from the original content.
o Publishers have exercised some rights that the law initially
assigns exclusively to the authors: make CD reproduction
of articles, distribute the copies for sale, and licensing the
production of such copies.
 Class Notes
o Q: Is there a distinction between digital & physical copy?
 Sec. 180.3 – Single publication
Boosey & Hawkes Music Publishers v Walt Disney Co.
 Scope of License. When the language of a license is broad
enough to include a new use, the license will cover that new
medium, unless specifically excluded by the grantor.
o Bartsch v MGM. Licenses may properly pursue any uses
which may be reasonably be said to fall within the medium
as described in the license. License of a motion picture
rights to a play included the right to telecast the motion
picture.
o Nimmer Rule. License in a given medium includes only
such uses as falling within the unambiguous core meaning
of the term and excludes those that lie within the
ambiguous penumbra.
 But, the Bartsch case is a better rule.
 Application | Fantasia. Disney's licensing agreement with
Stravinsky's "The Rite of Spring" featured in "Fantasia" included
distribution of Fantasia in video format for sale in US and not
strictly limited to release in movie houses and TV as claimed by
Boosey.
Random House v Rosetta Books
 Publisher’s License Limitation. A publisher's exclusive license
to print, publish, and sell an author's work in book form does not
extend to ebooks.
 Application | Random House's suit against Rosetta Books for
infringement and injunctive relief will fail because previous
grant of license by authors to Random House to print, publish,
and sell their books in book form did not prohibit such authors
to publish ebook format with Rosetta Books.
Vernor v Autodesk
 First Sale Doctrine. A copyright owner’s exclusive distribution
right is exhausted after the owner’s first sale of a particular
copy of the copyrighted work.
o Owner of a particular copy of a copyrighted work may sell
or dispose of his copy without the copyright owner’s
authorization.
 Essential Step Defense. Software purchasers were owners of
copies of copyrighted works for essential step defense. In order
to use a software program, a user’s computer will automatically
copy the software into the computer’s RAM. Owner of a copy
of the copyrighted software does not infringe by making a copy
KAT NIETO | B 2019
of the computer program because it is an essential step to
utilizing the program.
 License. Labeled a license, requires return or destruction,
forbids duplication, or requires transferee to maintain
possession of the copy for the agreement’s duration.
o First sale doctrine and essential step defense are both
unavailable defenses to those who are only licensed to
use their copies of copyrighted works.
o A software user is a licensee rather than the owner of a
copy where copyright owner imposes the conditions
enumerated below.
 Factors to Consider.
1. Whether copyright owner specifies that a user is granted
a license
2. Whether copyright owner significantly restricts the user’s
ability to transfer the software
3. Whether copyright owner imposes notable use restriction
 EULA: End-User License Agreement
 Application | AutoCAD. AutoDesk retained title in the
software. It imposed restrictions in reverse-engineering,
modifying, translating, etc and provided for termination of the
license of the licensee upon unauthorized copying or failure to
comply with other receptions. CTA is a mere licensee and so
Vernor did not receive title to the copies from CTA and
accordingly could not pass ownership to others through eBay.
Vernor infringed upon AutoDesk’s copyright.
Open Source Software and
Creative Commons
Open Source Licenses
 Open source licenses allow software to be freely used,
modified, and shared.
 A type of license for computer software and other products
that allows the source code, blueprint or design to be used,
modified and/or shared under defined terms and conditions.
This allows end users and commercial companies to review and
modify the source code, blueprint or design for their own
customization, curiosity or troubleshooting needs.
Creative Commons Licenses
 Creative Commons (CC) is an American non-profit
organization devoted to expanding the range of creative works
available for others to build upon legally and to share.
 The organization has released several copyright-licenses
known as Creative Commons licenses free of charge to the
public. These licenses allow creators to communicate which
rights they reserve, and which rights they waive for the benefit
of recipients or other creators.
 Creative Commons licenses do not replace copyright, but are
based upon it. They replace individual negotiations for specific
rights between copyright owner (licensor) and licensee, which
are necessary under an "all rights reserved" copyright
management, with a "some rights reserved" management
employing standardized licenses for re-use cases where no
commercial compensation is sought by the copyright owner.
27
COPYRIGHT | ATTY. NEGRE
COPYRIGHT SCOPE & ENFORCEMENT
Infringement of Economic Rights
Remedies
COPYRIGHT OR ECONOMIC RIGHTS
SEC. 177. 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)
SCOPE OF APPLICATION
SEC. 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)
SEC. 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
(c) Which has not been fixed in sound recording but are
carried by broadcast qualifying for protection under
this Act. (n)
KAT NIETO | B 2019
SEC. 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)
SEC. 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)
THE INTELLECTUAL PROPERTY OFFICE
SEC. 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 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 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:
(1) An assurance to comply with the provisions of the
intellectual property law violated;
(2) An assurance to refrain from engaging in unlawful and
unfair acts and practices subject of the formal
investigation;
(3) An assurance to recall, replace, repair, or refund the
money value of defective goods distributed in
commerce; and
(4) 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;
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COPYRIGHT | ATTY. NEGRE
(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 P5,000 nor more than
P150,000. In addition, an additional fine of not more than
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. (Sec. 6, 7, 8, and
9, Executive Order No. 913 [1983] a)
INFRINGEMENT
SEC. 216. Infringement. – Any person infringes a right protected
under this Act when one:
(a) Directly commits an infringement;
(b) Benefits from the infringing activity of another person who
commits an infringement if the person benefiting has been
given notice of the infringing activity and has the right and
ability to control the activities of the other person;
(c) With knowledge of infringing activity, induces, causes or
materially contributes to the infringing conduct of another.
216.1. Remedies for Infringement – 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.
(b) To pay to the copyright proprietor or his assigns or heirs such
actual damages, including legal costs and other expenses, as
he may have (i) Circumvents effective technological measures;
or (ii) Having reasonable grounds to know that it will induce,
enable, facilitate or conceal the infringement, remove or alter
any electronic rights management information from a copy of
a work, sound recording, or fixation of a performance, or
distribute, import for distribution, broadcast, or communicate
to the public works or copies of works without authority,
knowing that electronic rights management information has
been removed or altered without authority.
(c) 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.
(d) 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.
(e) 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. The copyright owner may elect, at any time before final
judgment is rendered, to recover instead of actual damages
KAT NIETO | B 2019
and profits, an award of statutory damages for all
infringements involved in an action in a sum equivalent to the
filing fee of the infringement action but not less than
Php50,000.00. In awarding statutory damages, the court may
consider the following factors:
(1) The nature and purpose of the infringing act;
(2) The flagrancy of the infringement;
(3) Whether the defendant acted in bad faith;
(4) The need for deterrence;
(5) Any loss that the plaintiff has suffered or is likely to suffer
by reason of the infringement; and
(6) Any benefit shown to have accrued to the defendant by
reason of the infringement. In case the infringer was not
aware and had no reason to believe that his acts
constitute an infringement of copyright, the court in its
discretion may reduce the award of statutory damages
to a sum of not more than P10,000: Provided, That the
amount of damages to be awarded shall be doubled
against any person who:
(i) Circumvents effective technological measures; or
(ii) Having reasonable grounds to know that it will induce,
enable, facilitate or conceal the infringement,
remove or alter any electronic rights management
information from a copy of a work, sound recording,
or fixation of a performance, or distribute, import for
distribution, broadcast, or communicate to the public
works or copies of works without authority, knowing
that electronic rights management information has
been removed or altered without authority.
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, in accordance
with the rules on search and seizure involving violations of
intellectual property rights issued by the Supreme Court. (Sec.28,
P.D. No. 49a)
The foregoing shall not preclude an independent suit for relief by
the injured party by way of damages, injunction, accounts or
otherwise.
(As amended by Republic Act No.10372 or an Act Amending certain provisions of
Republic Act No. 8293 otherwise known as the Intellectual Property Code of the
Philippines, and for other Purposes)
SEC. 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:
(a) Imprisonment of 1 year to 3 years plus a fine ranging from
P50,000 to P150,000 for the first offense.
(b) Imprisonment of 3 years and 1 day to 6 years plus a fine ranging
from P150,000 to P500,000 for the second offense.
(c) Imprisonment of 6 years and 1 day to 9 years plus a fine ranging
from P500,000 to 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: Provided, That the respective maximum penalty
stated in Section 217.1. (a), (b) and (c) herein for the first, second,
third and subsequent offense, shall be imposed when the
infringement is committed by:
(a) The circumvention of effective technological measures;
(b) The removal or alteration of any electronic rights management
information from a copy of a work, sound recording, or fixation
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COPYRIGHT | ATTY. NEGRE
of a performance, by a person, knowingly and without
authority; or
(c) The distribution, importation for distribution, broadcast, or
communication to the public of works or copies of works, by a
person without authority, knowing that electronic rights
management information has been removed or altered without
authority.
(As amended by Republic Act No.10372 or an Act Amending certain provisions of
Republic Act No. 8293 otherwise known as the Intellectual Property Code of the
Philippines, and for other Purposes)
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)
SEC. 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. The affidavit shall be admitted in
evidence in any proceedings 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.
(As amended by Republic Act No.10372 or an Act Amending certain provisions of
Republic Act No. 8293 otherwise known as the Intellectual Property Code of the
Philippines, and for other Purposes)
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)
SEC. 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.
KAT NIETO | B 2019
219.2. The person or body corporate whose name appears on an
audiovisual work in the usual manner shall, in the absence of proof
to the contrary, be presumed to be the maker of said work. (n)
SEC. 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)
SEC. 220A. Disclosure of Information. - Where any article or its
packaging or an implement for making it is seized or detained
under a valid search and seizure under this Act is, or is reasonably
suspected to be, by an authorized enforcement officer, in violation
of this Act, the said officer shall, wherever reasonably practicable,
notify the owner of the copyright in question or his authorized
agent of the seizure or detention, as the case may be.
(As amended by Republic Act No.10372 or an Act Amending certain provisions of
Republic Act No. 8293 otherwise known as the Intellectual Property Code of the
Philippines, and for other Purposes)
INSTITUTION OF ACTIONS
SEC. 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)
SEC. 226. Damages. - No damages may be recovered under this
Act after the lapse of 4 years from the time the cause of
action arose. (Sec. 58, P.D. No. 49)
(As amended by Republic Act No.10372 or an Act Amending certain provisions of
Republic Act No. 8293 otherwise known as the Intellectual Property Code of the
Philippines, and for other Purposes)
FINAL PROVISIONS
SEC. 231. Equitable Principles to Govern Proceedings – In all
inter partes proceedings in the Office under this Act, the equitable
principles of laches, estoppel, and acquiescence where
applicable, may be considered and applied. (Sec. 9-A, R.A. No.
165)
20th Century Fox v CA (1988)
 Essence of Copyright Infringement. Similarity or at least
substantial similarity of the purported pirated works to the
copyrighted work.
 Master Tapes Necessary. Presentation of master tapes is
necessary for the validity of search warrants against those who
have in their possession the pirated films. Court cannot
presume that duplicate or copied tapes were necessarily
reproduced from the master tapes. Mere allegations as to the
existence of the copyrighted films cannot serve as basis for the
issuance of a search warrant.
 Application | Lifting of search warrants was proper for failure
to present master tapes.
Columbia Pictures v CA (1994)
 Probable Cause for Search Warrant.
1. Unauthorized sale, lease, or distribution of copyrighted
materials, and
2. Transfer or causing to be transferred of the copyrighted
material
 Application | Search warrants also quashed because no
master tapes were presented.
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COPYRIGHT | ATTY. NEGRE
Columbia Pictures v CA
 Master Tapes. Master tapes are object evidence. Use of
testimonial or documentary evidence, depositions, admissions,
or other classes of evidence tending to prove the factum
probandum, especially where the production in court of object
evidence would result in delay, inconvenience, or expenses out
of proportion to its evidentiary value. There is no law or rule
requiring that the existence of a probable cause is or should
be determined solely by a specific kind of evidence.
o In 20th Century Fox case, the necessity for presentation of
master tapes merely serves as a guidepost in determining
the existence of probable cause in copyright infringement
cases where there is doubt as to the true nexus between
the master tape and the pirated copies.
 Registration and Deposit. Even without prior registration and
deposit of a work, the creator can file an action for
infringement of its rights. He cannot demand, however,
payment of damages arising from infringement. The
requirements of registration and deposit are not conditions for
the acquisition of copyright and other rights, but as
prerequisites to a suit for damages.
o Rights are granted from the moment of creation.
o So long as proscribed acts are shown to exist, an action
for infringement may be initiated.
 Application | Witnesses testified according to their personal
knowledge. They displayed none of the ambivalence and
uncertainty that the witnesses in the 20th Century Fox case
exhibited.
 Class Notes
o Note: Presumption of authorship, Sec. 219
o No need for mater tapes because it is a case of piracy
Joaquin v Drilon
 Master Tapes in TV Shows. Mere description by words of the
general format of the two dating game shows is insufficient;
the presentation of the master videotape in evidence was
indispensable to the determination of the existence of
probable cause.
o 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.
Laktaw v Paglinawan
 Dictionaries. The protection of law cannot be denied to the
author of a dictionary, for although words are not the property
of anybody, their definitions, example that explain their sense,
and manner of expressing their different meanings, may
constitute a special work.
 Applicable Law. One cannot be deprived of a right
recognized and sanctioned by law merely because the law is
not in force now or is of no actual application. This conclusion
is necessary to protect intellectual property rights vested after
the sovereignty of Spain superseded by US.
 Application | Hispano-Tagalog. Laktaw cannot be denied
legal protection as expressly provided by law considering that
Paglinawan reproduced his work without permission. That
certificate of registration was lost is immaterial especially
where Laktaw’s dictionary contains “all rights reserved.” Laktaw
was awarded damages.
 Class Notes
o Q: Is merger doctrine applicable?
KAT NIETO | B 2019
Habana v Robles
 Substantial Reproduction in Infringement. 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.
o Amount Copied. 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.
 In cases of infringement, copying alone is not what is
prohibited. Copying must produce an injurious
effect.
o Ignorance is Not a Defense. A copy of a piracy is an
infringement of the original, and it is no defense that the
pirate, in such cases, did not know whether or not he was
infringing any copyright; he at least knew that what he was
copying was not his, and he copied at his peril.
 Application | English Textbook. Robles lifted from Habana’s
book materials that were the result of Habana’s research work
and compilation. Robles misrepresented them as her own. It
may be correct that since books are grammar books, some
technical contents are similar with other grammar books.
o The numerous pages, however, showing similarity in style
and manner the books were presented and the identical
example cannot pass as similarities merely because of
technical consideration.
o Goodwill showed guilt when it pulled out Robles’ books and
revised the version cited by Habana.
 Dissenting | Davide
o Original Work. To constitute infringement, the usurper
must have copied or appropriated the original work of an
author or copyright proprietor. Absent copying, there can
be no infringement of copyright. In turn, a work is deemed
by law an original if the author created it by his own skill,
labor, and judgment.
o Fair Use. Privilege to use the copyrighted material in a
reasonable manner without the consent of the copyright
owner or as copying the theme or ideas rather than their
expression.
o Application | Both are grammar books and inevitably deal
with the same subjects. They had common resources which
are earlier works from foreign authors. Similarity in
orientation and style can be attributed to the exposure of
both Habana and Robles to APCAS Syllabus and their
respective academic experience as they are both faculty
members of FEU.
NOTES
 If only for injunction, no need for notice
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ECONOMIC RIGHTS
SEC. 177. 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)
Distribution Right
SEC. 177. Copyright or Economic Rights.
177.1. Reproduction of the work or substantial portion 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;
Capitol Records v Thomas (2008)
 Distribution. Congress’ choice to not include offers to do the
enumerated acts or the making available of the work indicates
its intent that an actual distribution or dissemination is
required.
o Publication effected by merely offering to distribute copies
or phonorecords to the public is merely an offer of
distribution, not an actual distribution.
o If simply making a copyrighted work available to the public
constituted a distribution, even if no member of the public
ever accessed that work, copyright owners would be able
to make an end run around the standards for assessing
contributor copyright infringement.
 Publication. Distribution of copies or phonorecords of a work
to the public by sale or other transfer of ownership, or by rental,
lease, or lending.
o Offering Included. Offering to distribute copies or
phonorecords to a group of persons for purposes of further
distribution, public performance, or public display,
constitutes publication.
o Public Performance is Not Publication. A public
performance or display of a work does not of itself
constitute publication.
o Distribution is Not Publication. Nowhere in this legislative
history does Congress state that distribution should be
given the same broad meaning as publication.
 Two Rights. Statute grants two separate rights:
1. Right to “do” distribution
2. Right to “authorize” distribution
 A means for secondary liability which only applies if
there is an actual dissemination.
 Does not expand the scope of direct infringement
liability.
KAT NIETO | B 2019
 Application | Kazaa. Thomas’ sharing of music files on Kazaa
does not constitute distribution. It also does not violate Capitol
Records’ exclusive right to authorize distribution because there
was no actual distribution.
 Class Notes: Liability for other intellectual properties
o Trademark: Preparatory acts
o Patent: Offering to sell
Bobbs-Merrill Company v Straus (1908)
 Exclusive Right to Distribution. Copyright is an exclusive right
to the multiplication of the copies, for the benefit of the author
or his assigns, disconnected from the plate, or any other
physical existence. It is an incorporeal right to print and
publish the map, or, 'a property in notion, and has no corporeal,
tangible substance.
o Future Transactions Not Covered. Does not create the
right to impose, by notice, such as is disclosed in this case,
a limitation at which the book shall be sold at retail by
future purchasers, with whom there is no privity of contract.
 Application | “Selling Price of Book Should be $1”. Exclusive
right to vend is limited to first sales of the work. To add to the
right of exclusive sale the authority to control all future retail
sales by a notice that such sales must be made at a fixed sum
would give a right not included in the terms of the statute, and
extend its operation, by construction, beyond its meaning,
when interpreted with a view to ascertaining the legislative
intent in its enactment.
 Class Notes
o Q: What is the difference between software and ebook?
Quality King Distributors v L’anza Research Int’l (1998)
 First Sale Doctrine. Sec. 109 (A) provides that
“notwithstanding the provisions of Sec. 106 (3), the owner of a
particular copy or phonorecord lawfully made under this title,
or any person authorized by such owner, is entitled, without the
authority of the copyright owner, to sell or otherwise dispose of
the possession of that copy or phonorecord.
o After the first sale of a copyrighted item, any subsequent
purchaser, whether from a domestic or from a foreign
reseller, is obviously an owner of that item.
o Sec. 106 (3). Owner of a copyright has the exclusive right
to distribute copies of a copyrighted work.
o Sec. 602 (A). Importation into US, without authority of the
copyright owner is an infringement of the exclusive right to
distribute copies or phonorecords.
 Does not categorically prohibit the unauthorized
importation of copyrighted materials. Instead, it
provides that such importation is an infringement of
the exclusive right to distribute copies.
 Application | Hair Products from Malta Imported to US for
Lower Price. Contractual provisions limiting L’anza US’s
distributors to limit their sales to authorized retail outlets are
inadequate to protect it from the actions of foreign distributors
who may resell the products to American vendors. Sec. 602 (A)
is inapplicable to both foreign and domestic owners of L’anza
products who decide to import them and resell them in US.
 Class Notes
o Prices are different in countries because of market
segmentation
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COPYRIGHT | ATTY. NEGRE
Kirtsaeng v John Wiley & Sons (2013)
 First Sale Doctrine. Permits copyright holder to control the
resale or other disposition of a chattel once sold. Once a copy
has been legally sold, copyright owner cannot restrict its resale.
o Geography. Statute phases out the manufacturing clause
which appeared in earlier statutes and had limited
importation of many copies of copyrighted works printed
outside US. The phasing out of this clause sought to
equalize treatment of copies manufactured in America
and abroad.
 A geographical interpretation will likely require
libraries to obtain permission before circulating or
otherwise distributing these books. Such would be
costly and highly tedious.
o To come within the scope of Sec. 109 (A), a copy or
phonorecord must have been “lawfully made under this
title” though not necessarily with the copyright owner’s
authorization. For example, any resale of an illegally
pirated phonorecord would be an infringement but the
disposition of a phonorecord legally made under the
compulsory licensing provisions of Sec. 115 would not.
 Application | Textbooks Brought from Thailand and Resold in
US. Kirtsaeng not liable for reselling the books he lawfully
purchased from Thailand.
Public Performance
SEC. 177. Copyright or Economic Rights.
177.6. Public performance of the work; and
Columbia Pictures v Redd (1984)
 Performance. In the case of a motion picture or other
audiovisual work, to show its images in any sequence or to
make the sounds accompanying it audible.
 Public Performance. To transmit or otherwise communicate a
performance of the work to a place specified by clause 1 or to
the public by means of any device or process, whether the
members of the public are capable of receiving the
performance in the same place or in separate places and at
the same time or at different times.
o To perform it 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.
 First Category. A place open to the public.
 Second Category. Semi-public place as determined
by the size and composition of the audience.
o If the same copy of a given work is repeatedly played by
different members of the public, although at different
times, this constitutes a public performance.
 Exclusive Rights. A copyright owner may dispose of a copy of
his work while retaining all underlying copyrights which are not
expressly or impliedly disposed of with that copy.
o First Sale Does Not Affect Exclusive Rights. Owner of a
particular copy is entitled to sell or otherwise dispose of
the possession of that copy. It prevents the copyright
owner from controlling the future transfer of a particular
copy once its material ownership has been transferred.
 The copyright owner’s exclusive right to perform the
copyrighted work publicly has not been affected by
the first sale doctrine. Only the distribution right as to
the transferred copy has been circumscribed.
 Application | Private Booths for Viewing. Redd Horne infringed
upon Columbia’s copyright through unauthorized public
performance. It is immaterial that Redd Horne has only one
copy of each film since it was repeatedly played. The transfer
KAT NIETO | B 2019
of the video cassettes to Redd Horne did not result in the
forfeiture or waiver of all of the exclusive rights.
Cartoon Network v CSC Holdings (2008)
 Reproduction. Copies as defined in the Copyright Act are
material objects in which a work is fixed by any method and
from which the work can be reproduced.
o Fixation. A work is fixed in a tangible medium of
expression when its embodiment is sufficiently permanent
or stable to permit it to be reproduced for a period of more
than transitory duration.
1. Embodiment requirement: Work must be embodied in
a medium
2. Duration requirement: Work must remain embodied
for a period of more than transitory duration
o To establish direct liability under the Act, something
more must be shown other than mere ownership of a
machine used by others to make illegal copies. There must
be actual infringing conduct.
 Application | Remote Storage Digital Video Recorder System.
o Method for recording: Data passes through the primary
ingest buffer the server inquires whether customer has
requested that the program be recorded. If customer did,
the data for the program moves from the primary buffer
into a secondary buffer and then onto a portion of one of
the hard disks allocated to that customer.
o Right of Reproduction | Automated copying of content
at user’s request did not constitute direct infringement
because primary ingest buffering of data does not create
a “copy” within the meaning of the Act because the data
is not “fixed” in the buffer. Data resides in the buffer for no
more than 1.2 seconds which is not a period of “more than
transitory duration.”
o Public Performance | Time shifting or replaying
content to original audience did not constitute public
performance because Cablevision system only transmits a
performance to a single subscriber.
o Cablevision is not liable for direct infringement because it
was the user who created the copy and it only maintained
a system which allowed users to make reproductions of
copyrighted material. It may, however, be liable for
contributory infringement.
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Public Performance, Public Display, & Internet 2. General test for substantial similarity, which looks to the
response of the average audience, or ordinary observer
to determine whether a use is infringing
SEC. 177. Copyright or Economic Rights.
 Fragmented Literal Similarity. Defendant copies a
177.1. Reproduction of the work or substantial portion of the
portion of plaintiff’s work exactly or nearly exactly,
work;
without appropriating the work’s overall essence or
177.5. Public display of the original or a copy of the work;
structure.
177.6. Public performance of the work; and
 Because degree of similarity is high in this case,
substantiality of the similarity is measured by
Perfect 10 v Amazon (2007)
considering the qualitative and quantitative
 Display. To show a copy of it, either directly or by means of a significance of the copied portion in relation to
film, slide, television image, or any other device or process. the plaintiff’s work as a whole.
o Copy. Material objects, other than phonorecords, in which
 The inquiry is whether a substantial portion of the
a work is fixed by any method now known or later
protectable material in the plaintiff’s work
developed, and from which the work can be perceived,
was appropriated – not whether a substantial
reproduced, or otherwise communicated, either directly or
portion of defendant’s work was derived from
with the aid of a machine or device."
plaintiff’s work.
o Fixation. A photographic image is a work that is “fixed” in
 Application | “Choir” Composition. Newton granted license
a tangible medium of expression - when embodied (i.e.,
covering only the sound recording of “Choir” to ECM Records.
stored) in a computer's server. A person displays a
He retained all rights to the composition. Beastie Boys obtained
photographic image by using a computer to fill a computer
a license from ECM of various renditions of “Choir” but did not
screen with a copy of the photographic image fixed in the
obtain a license from Newton to use the underlying
computer's memory.
composition.
 Distribution requires an actual dissemination of copy.
o Note: Sound recordings and their underlying compositions
o Server Test. A computer owner that stores an image as
are separate works with their own distinct copyrights.
electronic information and serves that electronic
o No Substantial Similarity.
information directly to the user (i.e. physically sending
 When viewed in relation to Newton’s composition as a
ones and zeroes over the internet to the user's browser) is
whole, the sampled portion is neither quantitatively nor
displaying the electronic information in violation of a
qualitatively significant. Quantitatively, 3-note
copyright holder's exclusive display right.
sequence (6 secs when played) appears only once in
 Conversely, the owner of a computer that does not
Newton’s composition which is roughly 2% of “Choir”
store and serve the electronic information to a user is
(4 mins, 30 secs). Qualitatively, Newton failed to prove
not displaying that information, even if such owner in-
this section’s particular significance in the composition
line links to or frames the electronic information.
as a whole.
 Application | Porn on Google Images.
 An average audience would not discern Newton’s
o Full size images | Google's computers do not store the
hand as a composer, apart from his talent as a
photographic images thus cannot communicate a copy.
performer, from Beastie Boys’ use of the sample.
Google provides HTML instructions that direct a user's
 Class Notes
browser to a website publisher's computer that stores the
o Court somehow required secondary meaning.
full-size photographic image which is not equivalent to
showing a copy.
Bridgeport Music v Dimension Films (2005)
 Google may facilitate the user's access to infringing
 Copyright Over Sound Recording. World at large is free to
images. However, such assistance raises only
imitate or stimulate the creative work fixed in the recording so
contributory liability issues and does not constitute
long as an actual copy of the sound recording itself is not
direct infringement of the copyright owner's display
made. One can neither pirate the whole sound recording not
rights.
lift or sample something less than the whole.
o Thumbnails | Google's computers store thumbnail versions
 Digital Sampling. Technique of taking a recorded passage
of Perfect 10's copyrighted images and communicate
from an already existing or recorded musical, spoken or other
copies of those thumbnails to Google's users. Google,
work and then adding it into a new recording. It is referred as
however, was able to prove fair use (further discussed
a sample and is regularly used in a repetitive manner or
under Fair Use section).
backwards or in combination with other sounds or samples.
o Sound recording owner has the exclusive right to sample
The Music Industry
his own recording. Get a license or do not sample.
 Inapplicability of De Minimis and Substantial Similarity
Newton v Diamond (2004)
o Composition v Sound Recoding. The analysis that is
 Music Sampling. Incorporation of short segments of prior
appropriate for determining infringement of a musical
sound recordings into new recordings. Digital sampling allowed
composition copyright, is not the analysis that is to be
artist to manipulate and combine sampled sounds, expanding
applied to determine infringement of a sound recording.
the range of use of pre-recorded music.
We address this issue only as it pertains to sound recording
o Often presents cases where the degree of similarity is high.
copyrights.
Unless the sample has been altered or digitally
 One can take 3 notes from a musical composition
manipulated, it will be identical to the original.
without infringing.
 Test for Infringement in Music.
 One cannot take 3 notes by way of sampling from a
1. Observation of de minimis maxim – i.e. use is de minimis sound recording.
only if the average audience would not recognize the o De Minimis. Even when a small part of a sound recording
appropriation is sampled, the part taken is something of value. No further

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COPYRIGHT | ATTY. NEGRE
proof is necessary than the fact that the producer of the
record or the artist on the record intentionally sampled
because it would (1) save costs, or (2) add something to
the new recording, or (3) both.
 For the sound recording copyright holder, it is not the
"song" but the sounds that are fixed in the medium of
his choice. When those sounds are sampled they are
taken directly from that fixed medium. It is a physical
taking rather than an intellectual one.
 Defendant cannot claim the defense of de minimis use
in sampling. Fair use defense, however, can still be
invoked.
o Substantial Similarity. The only way to infringe on a
sound recording is to re-record sounds from the original
work, which is exactly the nature of digital sound sampling.
Then the only issue becomes whether the defendant re-
recorded sound from the original.
 Application | Get Off Your Ass and Jam. Summary judgment
improper in this case because District Court should not have
used de minimis test (ruled that there was no infringement
because de minimis) in determining whether the digital
sampling constituted infringement on copyright to sound
recording. There is copyright infringement in this case because
Dimension did not secure a license for sound recording with
Bridgeport – it had, however, a license for composition.
 Class Notes
o License over the use vs. License over the sound recording
Arista Records LLC v Launch Media (2010)
 Sound Recording Copyright. There is no general right of
performance in the sound recording copyright. There is only a
limited right to performance of digital audio transmission with
several exceptions to the copyright – as in this case.
 Interactive Service. Enables a member of the public to
receive a transmission of a program specially created for the
recipient, or on request, a transmission of a particular sound
recording which is selected by or on behalf of the recipient.
o If a digital audio transmission is not an interactive service
and its primary purpose is to provide to the public such
audio or other entertainment programming, the transmitter
need only pay a compulsory licensing fee (as in the case
of radios).
o Coverage under DMCA.
1. User can request and have played a particular sound
recording, or
2. User can receive a transmission of a program
specially created for her
 Transmission Program. Body of material that, as
an aggregate, has been produced for the sole
purpose of transmission to the public in sequence
and as a unit.
 Digital Performance Right in Sound Recordings Act. (Prior
to DMCA) Sound recording copyright holders have an exclusive
but narrow right to perform – play or broadcast – sound
recordings via a digital audio transmission.
o Non-interactive subscription services qualified for
compulsory licensing as provided by statute.
o Interactive services are required to obtain individual
licenses for each sound recording. Webcasting services
which are not interactive (i.e. playing sound recording on
request) fell outside the control of copyright holder.
 Digital Millennium Copyright Act. Expanded definition of
interactive service to include those that are specially created
for a particular individual.
o If user had sufficient control over the interactive service
such that she can predict the songs she will hear, much as
KAT NIETO | B 2019
she would if she owned the music herself and could play
each song at will, she would have no need to purchase the
music she wishes to hear.
o Interactive service provides a degree of predictability –
based on choices made by the user – that approximates
the predictability the music listener seeks when purchasing
music.
 Application | Launchcast. Launchcast is not an interactive
service because it does not provide sufficient control to users
such that playlists are so predicable that users will chose to
listen to the webcast instead of buying the music. User has
control over the genre of songs to be played but this degree of
control is no different from a traditional radio listener. The only
thing that a user can control is rating the song but the ability
to listen to a song freely is not given.
 Class Notes
o There is no similar provision regarding interactive system in
our IP Code.
o Q: What can be your cause of action?
o Q: Is Spotify committing infringement?
CLASS NOTES
SEC. 177. Copyright or Economic Rights.
177.3. The first public distribution of the original and each copy
of the work by sale or other forms of transfer of ownership;
 E: Keeping a copy for archival purposes
 Note the difference between distribution and reproduction
RA 10372
SEC. 171.9. ‘Reproduction’ is the making of 1 or more copies,
temporary or permanent, in whole or in part, of a work or a
sound recording in any manner or form without prejudice to the
provisions of Section 185 of this Act
SEC. 185. Fair Use of a Copyrighted Work.
 Reproduction includes both permanent and temporary
o Q: Is buffering considered reproduction?
 In the case of software, installation in computer is considered
as reproduction. Autocad case requires deletion of program.
RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS
SEC. 71. Rights Conferred by Patent. - 71.1. A patent shall confer
on its owner the following exclusive rights:
(a) Where the subject matter of a patent is a product, to restrain,
prohibit and prevent any unauthorized person or entity from
making, using, offering for sale, selling or importing that
product;
 Patent in relation to the first sale doctrine
 Can doctrine of exhaustion be applied to Patent Law?
o LexMark case applied it.
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COPYRIGHT | ATTY. NEGRE
Right to Prepare Derivative Works
SEC. 177. Copyright or Economic Rights.
177.2. Dramatization, translation, adaptation, abridgment,
arrangement or other transformation of the work;
Castle Rock Entertainment v Carol Publishing Group (1998)
 Derivative Works. Copyright owners are granted a bundle of
exclusive rights which includes the right to reproduce the
copyrighted work in copies and to prepare derivative works
based on the copyrighted work.
 Infringement.
1. Plaintiff must show that his work was actually copied
2. That copying amounts to an improper or unlawful
appropriation
 Substantial Similarity.
1. Qualitative Component. Copying of expression rather
than ideas.
2. Quantitative Component. Amount of copyrighted work
that is copied must be more than de minimis.
o Ordinary Observer Test. Two works are substantially
similar where the ordinary observer, unless he set out to
detect the disparities, would be disposed to overlook them,
and regard the aesthetic appeal of the two works as the
same.
 Derivative Work Cannot Exploit Original Market. Secondary
users may not exploit markets that original copyright owners
would in general develop or license others to develop even if
those owners had not actually done so, copyright owners may
not preempt exploitation of transformative markets, which they
would not in general develop or license others to develop by
actually developing or licensing others to develop those
markets.
 Application | Seinfeld Aptitude Test. Unlike parody, criticism,
scholarship, news reporting, or other transformative uses, the
SAT substitutes for a derivative market that a television
program copyright owner such as Castle Rock would in general
develop or license others to develop. SAT borrows exclusively
from Seinfeld and not from any other TV or entertainment
programs. (Check under Fair Use discussion)
Warner Bros. Entertainment v RDR Books (2008)
 Derivative Work. A work based upon one or more preexisting
works, such as a translation, musical arrangement,
dramatization, fictionalization, motion picture version, sound
recording, art reproduction, abridgement, condensation, or any
other form in which a work may be recast, transformed, or
adapted.
o A work is not derivative, however, simply because it is
based upon the preexisting works. If that were the case,
then parodies and book reviews would fall under the
definition.
o Castle Rock Case. Derivative works that are subject to
the author’s copyright transform an original work into a
new mode of presentation.
o Twin Peaks Case. Guidebook based on the Twin Peaks TV
contain a substantial amount of material from the
teleplays, transformed from one medium to another was a
derivative work.
o Ty Case. Collector’s guide to Beanie Babies was not a
derivative work because guides don’t recast, transform, or
adapt the things to which they are guides.
 Application | Harry Potter.
o Derivative Work. Lexicon is not a derivative work. The use
of plot elements is far from an elaborate recounting (unlike
KAT NIETO | B 2019
in Twin Peaks case whose plot summaries giving an
elaborate recounting of plot details were found to
constitute an abridgement of the original work). Lexicon
also does not recast the material in another medium to
retell the story of Harry Potter but gives the copyrighted
material another purpose which is to give the reader a
ready understanding of the elaborate world of Harry
Potter.
o Fair Use. But Lexicon was not able to establish fair use.
 Transformative. The utility of Lexicon as a reference
guide to a multi-volume work of fantasy literature,
demonstrates a productive use for a different purpose
other than the original works.
 Substantial Copying and Commercial Gain. Both
factors weighed against finding of fair use.
 Class Notes
o Work is less transformative compared to the Perfect 10
case. Expressions of Rowling are not facts.
Mirage Editions v Albuquerque ART Company
 Derivative Work. 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.
o Protection of derivative rights extends beyond mere
production against unauthorized copying to include the
right to make other versions of, perform, or exhibit the
work.
o According to Nimmer, a work will be considered a
derivative work only if it would be considered an infringing
work if the material which it has derived from a preexisting
work had been taken without the consent of a copyright
proprietor of such preexisting work.
 Application | Book Pages Mounted on Tiles. 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.
Lee v ART Company
 Distinguished From Mirage Case. Mirage case acknowledge
that framing and other traditional means of mounting and
displaying art do not infringe authors’ exclusive right to make
derivative works. Nonetheless, the 9th Circuit held, what ART
does creates a derivative work because the epoxy resin bonds
the art to the tile. Court (7th Circuit) in this case disagrees.
o The 9th Circuit, in another case, also ruled that the Mirage
Editions reasoning is equally applicable to works of art that
were sold loose. Note that in the Mirage case, the court
dealt with pages cut from books and mounted on tiles.
 Application | Notecards and Lithographs Mounted on Tiles.
Tiles were not derivative works. They did not recast, adapted,
or transformed the notecards. The copyrighted notecards and
lithographs were not transformed in the slightest. The art was
bonded to a slab of ceramic, but it was not changed in the
process. It still depicts exactly wat it depicted when it left Lee’s
studio. If mounting works a transformation, then changing a
painting’s frame or a photograph’s mat equally produces a
derivative work – this results in any alteration of a work requiring
the author’s permission.
o Undue Expansion of Moral Rights. If Lee (and the ninth
circuit) are right about what counts as a derivative work,
then the United States has established through the back
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COPYRIGHT | ATTY. NEGRE KAT NIETO | B 2019

door an extraordinarily broad version of authors' moral  Class Notes | Bolton invoked the defense of independent
rights, under which artists may block any modification of creation (originality)
their works of which they disapprove.
 The Visual Artists Rights Act of 1990 does not consider Selle v Gibb
Lee’s notecards and lithographs as visual arts,  Infringement in Music.
therefore, she cannot invoke the moral rights provision 1. Ownership of copyright in the complaining work
under the Copyright Act. It would not be sound to use 2. Originality of the work
the right to prepare derivative works to provide artists 3. Copying of the work by the defendant
with exclusive rights deliberately omitted from the 4. Substantial degree of similarity
Visual Rights Act.  Striking Similarity. Similarities are of a kind that can only be
(1) explained by copying, rather than by (2) coincidence,
Copying in Fact independent creation, or prior common source.
o Similarities should appear in sufficiently unique or complex
SEC. 177. Copyright or Economic Rights. context as to make it unlikely that both pieces were copied
177.1. Reproduction of the work or substantial portion of the work; from a prior common source or that the defendant was
able to compose the accused work as a matter of
independent creation.
Three Boys Music Corp v Michael Bolton
o In Relation to Access. If plaintiff presents evidence of
 Infringement in Music. Absent direct evidence of copying,
striking similarity sufficient to raise an inference of access,
proof of infringement involves fact-based showings that the
then copying is presumably proved simultaneously,
defendant had access to plaintiff’s work and that the works
although substantial similarity still requires proof that the
are substantially similar.
defendant copied a substantial amount of the complaining
o Access. Opportunity to view or copy plaintiff’s work. This
work.
is often described as providing a reasonable opportunity
 Striking similarity is just one piece of circumstantial
or possibility.
evidence tending to show access and must not be
 Must be reasonable access – i.e. more than a bare
considered in isolation. Plaintiff must always present
possibility. It may not be inferred through mere
sufficient evidence to support a reasonable possibility
speculation or conjecture.
of access because jury cannot draw an inference of
 Proven in either way:
access based upon speculation and conjecture alone.
1. Particular chain of events established between
 Application | How Deep Is Your Love. Bee Gees was able to
plaintiff’s work and defendant’s access to that
present a tape detailing the actual proves of creation of the
work (e.g. dealings with a record or publishing
song. Selle failed to meet the minimum threshold of possibility
company)
of access.
2. Plaintiff’s work has been widely disseminated
o Independent Creation. The expert witness presented, in
o Subconscious Copying Doctrine.
stating that there was striking similarity, only ruled out the
Everything registers somewhere in our
possibility of independent creation and did not state that
memories, and no one can tell what may
similarities could only be the result of copying. Bee Gees’
evoke it. Once it appears that another has in
tape, however, constitutes enough proof of independent
fact used the copyright as the source of this
creation. There should have been some testimony or other
production, he has invaded the author’s
evidence of the relative complexity or uniqueness of the
rights. It is no excuse that in so doing, his
two compositions.
memory has played him a trick. The mere
lapse of a considerable period of time
Ty v GMA Accessories
between the moment of access and creation
 Infringement. Identity is not infringement but it can be a
of defendant’s work does not preclude a
powerful evidence of copying. The more a work is both like an
finding of copying.
already copyrighted work that is unlike anything that is in the
o Substantial Similarity.
public domain, the less likely it is to be an independent
 Inverse Ratio Rule. Lower standard of proof of
creation.
substantial similarity is required when high degree of
o Access and Copying. Issues of copying can be broken
access is shown. It does not mean, however, that a
down into two sub-issues:
weak showing of access requires a stronger showing
1. Whether the alleged copier has access to the work
of substantial similarity.
that he is claimed to have copied
 Extrinsic Test. Requires that plaintiff identify
2. Whether if so used his access to copy
concrete elements based on objective criteria.
 Copying Inferred. Access does not entail copying,
Requires an analytic dissection of a work and
but copying entails access. If therefore, two works are
expert testimony. Once this is satisfied, intrinsic
so similar as to make it highly probable that the later
test is applied.
one is a copy of the earlier one, the issue of access
 Intrinsic Test. Subjective and asks whether the
need not be addressed separately. This can be
ordinary, reasonable person would find the total
rebutted by proof, but still, a similarity that is so close
concept and feel of the works to be substantially
as to be highly unlikely to have been an accident of
similar.
independent creation is evidence of access.
 Application | Love is a Wonderful Thing. Bolton infringed upon  Copying Not Inferred. Two works may be strikingly
Isley Brother’s copyright because he had access to their work similar (may in fact be identical) not because one is
due to widespread dissemination as he grew up listening to copied from the other but because both are copies of
their songs. the same thing in the public domain.

37
COPYRIGHT | ATTY. NEGRE KAT NIETO | B 2019

 Application | Beanie Babies. Access in this case is not an issue “Substantially Similar” Copy
since the allegedly copied work (TY’s Beanie Babies) is a mass-
produced consumer product. GMA’s pig is strikingly similar to QUALITY
Ty’s pig but not to anything in the public domain such as a real
 Actual proof
pig. Ty’s pig does not bear any resemblance to real pigs.
o Admission
o GMA claims that real pigs are not the only pigs in the
o Witness
public domain and that any fictional pig in the public ANALYSIS
 Inference
domain that resembles its pig. GMA’s pig, however,
o Access or
resembles only Ty’s pig. GMA failed to establish
o Striking similarity
independent creation.
 Unprotected elements
 Class Notes
o Scenes a fair
o Preliminary injunction in US:
o Merger doctrine
 Balancing of hardships, presumption of damages in
 Protected elements + is the copying
intellectual property -> should there be guidelines?
injurious
(thesis!!) how can you prove IP, example if one uses UNLAWFUL
o For a plot, there has to be more
your mark, how do you prove APPROPRIATION
details, expression, so that it can be
 As long as there is presumption of likelihood, there is
considered as a protected element
presumption of damages
 If there was enough expression
copied, then perhaps a plot
Bauman v Fussell
can be protected
 Nobody denies [the] picture was inspired by [the] photograph.
The mere taking of an idea would not be an infringement. The  Layman’s perspective
birds are interlocked in a way very similar to the photo – but any o Children
birds fighting would get similarly interlocked. I have to consider SUBSTANTIAL  Look and feel
whether this picture is a copy of the photograph. The points are SIMILARITY  Intrinsic and extrinsic
very fine – I think I am entitled to look at finer points. Although o Intrinsic – layman’s view
the photograph is a brilliant one there is not the life in it. o Extrinsic – objective factors
o In the painting the bird’s heads show a vigour and life QUANTITY
which has nothing to do with the photograph. In the  Quantity of copying, amount of the work copied is not
photograph there is 24 sunlight and shadow as part of the material
art of the photographer. There are no shadows really in the o Quantity is relevant in fair use – ex. 90% was copied,
picture as an integral part. therefore difficult to prove fair use
o I will only mention a few important differences. There is no
sun and no shadow in the painting and no attempt to Nichols v Universal Pictures Corp
produce shadow. Having jettisoned the shadow the artist  Scope of Copyright in Plays. Does not cover everything that
has adopted bright red to show blood and fury. The left- might be drawn from a certain play. Some parts may be part
hand cock has almost dissolved in flame. of public domain.
o In my view the effect is entirely different from the o Plots of play may correspond closely enough for
photograph. There are some similarities such as the infringement, however, the degree of similarity and
positions of the birds; the claws are similar, of course. I correspondence must be substantial enough to warrant
think these factors bring in the art of the artist here and infringement.
show that he has used the plaintiff’s work as an inspiration;  Scenes-a-Faire. Copyright does not extend to the incidents,
that he has not copied it, but has made a new work of art character, or settings that are as a practical matter,
of his own. The mere taking of an idea would not be an indispensable or at least standard in the treatment of a given
infringement. The birds are interlocked in a way very topic.
similar to the photo – but any birds fighting would get  Application | Movie Had Similar Plot with a Play. Plot in this
similarly interlocked. case is a mere idea – i.e. a father who disapproves of
 Dissenting | Justice Romer daughter’s fiancé. There is no infringement for use of universal
o The photograph is of two birds engaged in the one activity concepts of love, disapproval of marriage, and use of stock
for which they were reared and trained; and I cannot but characters or fathers and children.
think that the positions in which the camera caught them
are of the essence of the plaintiff’s skilful presentation of Arnstein v Porter
that activity.  Infringement. Two separate elements:
 Q: Is the position of the fighting cocks relevant? 1. Defendant copied from plaintiff’s copyrighted work
 Evidence may consist of:
a. Defendant’s admission that he copied, or
b. Circumstantial evidence usually evidence of
access from which copying may be inferred
 With evidence of access and similarities exist:
Dissection analysis and expert testimony may be
received to determine whether similarities are
sufficient to prove copying
 Without evidence of access: Similarities must be so
striking as to preclude the possibility that plaintiff and
defendant independently arrived at the same result

38
COPYRIGHT | ATTY. NEGRE
2. Copying went so far as to constitute improper
appropriation
 If copying is established, test for illicit copying is
response of ordinary lay hearer, issue on dissection
and expert testimony are irrelevant
 There is a need to determine unlawful copying
because there is permissible copying
o In some cases, similarities are so extensive and striking as,
without more, both to justify an inference of copying and
to prove improper appropriation.
 Application | Burglarized Room to Access Songs. There are
similarities in compositions but this alone does not support a
finding that Porter copied Arnstein. Court cannot determine
issue on unlawful appropriation. Court remanded case.
Steinberg v Columbia Pictures Industries
 Substantial Similarity. Whether an average observer would
recognize the alleged copy as having been appropriated from
the copyrighted work. Copying need not be of every detail so
long as the copy is substantially similar to the copyrighted work.
o Infringement may occur by reason of a substantial similarity
that involves only a small portion of each work. It does not
require that all details be alike, but that there were similar
concepts in the design.
 Commercial Nature of Copyrightable Work. Two
conceptually different situations:
1. Advertising material that promotes a parody of a
copyrighted work
 Does not necessarily mean infringement if the product
that it advertises constitutes a fair use of the
copyrighted work
2. Advertising material that itself infringes a copyright
 Work being advertised bears no relationship to the
copyrighted work, but the advertisement itself
infringes the copyright
 Application | New York Sketch Poster. As defendants
conceded access to the plaintiff’s work, lesser degree of
similarity suffices to establish infringement. At first glance, one
can see the striking stylistic relationship between the posters.
There is no parody in this case since the movie poster merely
borrowed numerous elements from the magazine cover to
create an appealing advertisement to promote the movie.
 Class Notes
o The New Yorker’s illustration contained buildings not really
in New York and those elements were copied in the
Moscow on the Hudson poster.
Boisson v Banian
 Originality. Copyright only extends to those components of a
work that are original to the author.
o Color. Color by itself is not subject to copyright protection.
An original combination or arrangement of colors,
however, should be regarded as an artistic creation
capable of copyright protection.
 Substantial Similarity.
o Ordinary Observer Test. An allegedly infringing work is
considered substantially similar to a copyrighted work if
the ordinary observer, unless he set out to detect the
disparities, would be disposed to overlook them, and
regard their aesthetic appeal as the same.
 Comparison of finished product that the fabric
designs were intended to grace (women’s dresses)
and would be inclined to view the entire dress
(consisting of protectable and unprotectable
elements) as one whole.
KAT NIETO | B 2019
o More Discerning Observer Test. Where plaintiff’s work
contains material imported from the public domain.
Comparing the total concept and feel of the contested
work. Court is not to dissect the works into separate
components and compare only the copyrightable
elements.
 Literary Works. When evaluating claims of infringement
involving literary works, while liability would result only if the
protectable elements were substantially similar, our
examination would encompass the similarities in such aspects
as the total concept and feel, theme, characters, plot,
sequence, pace, and setting of plaintiff’s books and
defendant’s works.
 Application | Alphabet Quilts. The more discerning observer
test is applied since alphabet and colors are from the public
domain. In School Days I v ABC Green, although the icons
chosen for each quilt are different and defendants added a
green rectangular border around their rows of blocks, these
differences are not sufficient to cause even the "more
discerning" observer to think the quilts are other than
substantially similar insofar as the protectible elements of
plaintiffs' quilt are concerned.
 Class Notes
o Look and feel test applied
 Not always applied, it depends on the nature of work
Computer Associates v Altai
 Take note of unprotected elements.
Cavalier v Random House
 Substantial Similarity. Two-part analysis:
1. Extrinsic Test. Objective comparison of specific
expressive elements. Test focuses on articulable
similarities between the plot, themes, dialogue, mood,
setting, pace, characters, and sequence of events in two
works.
2. Intrinsic Test. Subjective comparison that focuses on
whether the ordinary, reasonable audience would find the
works substantially similar in the total concept and feel of
the works.
o Court must inquire only whether the protectable elements,
standing alone, are substantially similar. A court must filter
out and disregard the non-protectable elements.
 Children’s Works. A compilation of random similarities
scattered throughout the works is inherently subjective and
unreliable. Further, consideration of the total concept and feel
of a work, rather than specific inquiry into plot and character
development, is especially appropriate in an infringement
action involving children’s works.
 Application | Elmo and Ernie Good Night Books.
 Question of expression, how much detail is considered
Swirsky v Carey
 Extrinsic Test. Requires analytical dissection of a work and
expert testimony.
o Analytical Dissection. Breaking the works down into their
constituent elements and comparing those elements for
proof of copying as measured by substantial similarity.
Essential to distinguish between protected and
unprotected material in a plaintiff’s work.
 Substantial Similarity in Music. Music is comprised of a large
array of elements, some combination of which is protectable
by copyright.
o Combination of 5 Otherwise Unprotectable Elements.
1. Title hook phrase (including lyric, rhythm, and pitch)
2. Shifted cadence
39
COPYRIGHT | ATTY. NEGRE
3.
Instrumental figures
4.
Verse/chorus relationship
5.
Fade ending
6.
Others – e.g. Melody, harmony, rhythm, pitch, tempo,
phrasing, chord progressions, etc.
 No magical combination of these factors that will
automatically substantiate a musical infringement suit.
Extrinsic test is satisfied if plaintiff is able to
demonstrate through expert testimony that
addresses some or all of these elements and supports
its employment of them, that the similarity was
substantial and to protected elements of the
copyrighted work.
 Measure-by-measure comparing the numerical
representations of pitch sequences is not a proper
analysis. To disregard chord progression, key, tempo,
rhythm, and genre is to ignore the fact that a
substantial similarity can be found in a combination of
elements, even if those are individually unprotected.
 Application | Thank God I Found You. Mariah Carey
committed infringement. Differences in the songs were not
enough because the overall emphasis on musical notes were
the same. There was also proof of access.
Sid & Marty Krofft TV Productions v McDonald’s Corp
 Infringement.
1. Ownership of copyright
2. Access
 Proof of access does not infer copying; rather, it
merely reduces the degree of proof required to
establish substantial similarity.
3. Substantial similarity not only of the general ideas but of
the expressions of those ideas as well
 Extrinsic Test. Analytic dissection + expert testimony
 It is extrinsic because it depends not on the
responses of the trier of fact, but on specific
criteria which can be listed and analyzed. Such
criteria include the type of artwork involved, the
materials used, the subject matter, and the setting
for the subject. Since it is an extrinsic test, analytic
dissection and expert testimony are appropriate.
Moreover, this question may often be decided as
a matter of law.
 Intrinsic Test. Response of ordinary reasonable
person
 It is an intrinsic one because it depends on the
response of the ordinary reasonable person. It
does not depend on the type of external criteria
and analysis which marks the extrinsic test.
Because this is an intrinsic test, analytic dissection
and expert testimony are not appropriate.
 Unity of Idea and Expression. Copying is allowed when idea
and expression are inseparable; otherwise, it results in the
monopoly of the idea. Protection depends on how idea is
expressed.
 Application | McDonaldland. Extrinsic test is not appropriate
because children do not dissect each of the elements of
characters. Duplication or near identity is not necessary.
McDonaldland and Pufnstuf characters have the same concept
and feel, hence, McDonaldland infringed upon Pufnstuf’s
copyright.
o McDonaldland cannot claim unity of idea and expression
because characters have each developed personalities.
KAT NIETO | B 2019
The Direct Infringer
SEC. 216. Infringement. – A person infringes a right protected
under this Act when one:
(a) Directly commits an infringement;
Religious Technology Center v Netcom
 Infringement. Occurs when a defendant violates one of the
exclusive rights of the copyright holder.
o Elements.
1. Ownership of a valid copyright
2. Copying of protectable expression
 Direct Infringement. Does not require intent or any
particular state of mind, although willfulness is relevant to the
award of statutory damages.
 Contributory Infringement. Where a defendant has
knowledge of the primary infringer's infringing activities, it will
be liable if it induces, causes or materially contributes to
the infringing conduct of the primary infringer. Such
participation must be substantial.
 Vicarious Liability. A defendant is liable for vicarious liability
for the actions of a primary infringer where the defendant
1. Has the right and ability to control the infringer's acts and
2. Receives a direct financial benefit from the infringement
 Application | Scientology Works Posted in Forums.
o Direct Infringement. Netcom's act of designing or
implementing a system that automatically and uniformly
creates temporary copies of all data sent through it is not
unlike that of the owner of a copying machine who lets the
public make copies with it. Although some of the people
using the machine may directly infringe copyrights, courts
analyze the machine owner's liability under the rubric of
contributory infringement, not direct infringement.
 Although copyright is a strict liability statute, there
should still 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.
 Where the infringing subscriber is clearly directly liable
for the same act, it does not make sense to adopt a
rule that could lead to the liability of countless parties
whose role in the infringement is nothing more than
setting up and operating a system that is necessary for
the functioning of the Internet.
o Contributory Infringement. Netcom allows Erlich's
infringing messages to remain on its system and be further
distributed to other Usenet servers worldwide. It does not
completely relinquish control over how its system is used,
unlike a landlord. Netcom could be held liable for
contributory infringement for having knowledge of Erlich's
infringing postings yet continues to aid in the
accomplishment of Erlich's purpose of publicly distributing
the postings.
o Vicarious Liability. Although Netcom had the ability to
control, there was no financial benefit proven.
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Vicarious and Contributory Infringement
SEC. 216. Infringement. – A person infringes a right protected
under this Act when one:
(b) Benefits from the infringing activity of another person who
commits an infringement if the person benefiting has been
given notice of the infringing activity and has the right and
ability to control the activities of the other person;
(c) With knowledge of infringing activity, induces, causes or
materially contributes to the infringing conduct of another.
Fonovisa, Inc. v Cherry Auction
DANCE HALL MODEL LANDLORD-TENANT MODEL
Operator of an entertainment A landlord who lacked
venue held liable for infringing knowledge of the infringing
performances when operator: acts of its tenant and who
 Could control premises, exercised no control over the
and leased premises was not
 Obtained a direct liable for infringing sales by
financial benefit from the its tenant
audience who paid to
enjoy the infringing
performance
 Concessionaire-Store Owner. Liability imposed is closer to
the Dance Hall Model because even though the defendant was
unaware of the infringement, he is still held liable. This is
because the store proprietor had the power to cease the
conduct of the concessionaire and because the proprietor
derived an obvious and direct financial benefit from
infringement.
 Vicarious Liability. Even if no employer-employee
relationship, if elements are satisfied, liable vicariously:
1. Right and ability to supervise the infringing activity
2. Has a direct financial interest in such activities
 Contributory Infringement. One who directly contributes to
another’s infringement should be held accountable. Merely
providing the means for infringement may be sufficient to incur
contributory copyright liability.
 Application | Pirated Materials in Flea Market in California.
o Vicarious Liability. Cherry Auction exercised control over
vendors through imposition of rules and regulations and it
directly benefited financially from such activities.
o Contributory Infringement. Cherry Auction’s
participation by providing space, utilities, parking,
advertising, plumbing, and customers to the vendors is not
merely passive participation; hence, also liable for
contributory infringement.
Perfect 10 v Amazon
 Secondary Liability. Does not exist in the absence of direct
infringement by another party.
o One infringes contributorily by intentionally inducing or
encouraging direct infringement.
o One infringes vicariously by profiting from direct
infringement while declining to exercise a right to stop or
limit it.
 Contributory Liability. Failure to stop own actions which
facilitate 3rd party infringement.
1. Actively Encouraging. One who with knowledge of the
infringing activity, induces, causes or materially
contributes to the infringing conduct of another, may be
held liable as a contributory infringer.
 Cyberspace. If a computer system operator learns of
specific infringing material available on his system and
KAT NIETO | B 2019
fails to purge such material from the system, the
operator knows of and contributes to direct
infringement
2. Distributing Products. If the product is not capable of
substantial or commercially significant non-infringing uses.
 Vicarious Liability. Defendant’s failure to cause a 3rd party to
stop its directly infringing activities.
o One who profiting from direct infringement while declining
to exercise a right to stop or limit it.
o Plaintiff must establish that the defendant exercises the
requisite control over the direct infringer and that the
defendant derives a direct financial benefit from the direct
infringement.
 Control. A defendant exercises control over a direct
infringer when he has both a legal right to stop or
limit the directly infringing conduct, as well as the
practical ability to do so.
 Application | Porn in Google Images. Direct infringement by
3rd parties.
o Contributory Infringement. Google could be held
contributorily liable if it had knowledge that infringing
Perfect 10 images were available using its search engine,
could take simple measures to prevent further damage to
Perfect 10's copyrighted works, and failed to take such
steps.
o Vicarious Liability. Perfect 10 must demonstrate a
likelihood of success in establishing that Google has the
right and ability to stop or limit the infringing activities of
third-party websites. In addition, Perfect 10 must establish
a likelihood of proving that Google derives a direct
financial benefit from such activities. Perfect 10 has not
met this burden.
Perfect 10 v Visa
 Contributory Infringement. In the internet context, there is
contributory liability when defendant engages in personal
conduct that encourages or assists the infringement.
o Intentionally inducing or encouraging direct infringement.
o Actor knowingly takes steps that are substantially certain
to result in such direct infringement.
o Elements.
1. Has knowledge of another’s infringement, and
2. Materially contributes or induces that infringement
 Inducement. One who distributes a device with
the object of promoting its use to infringe
copyright, as shown by clear expression or other
affirmative steps taken to foster infringement is
liable for the resulting acts of infringement by 3rd
parties.
o Crucial to establish that the distributors
communicated an inducing message to their
users. The classic example of which is an
advertisement or solicitation that broadcasts
a message designed to stimulate others to
commit violations.
 Vicarious Liability. Defendant must have the right and ability
to supervise and control the infringement not just affect it.
 Application | Porn and Visa Credit Cards.
o Contributory Infringement. It was not established that
Visa induced or materially contributed to the infringing
activity. Infringement rests on the reproduction, alteration,
display, and distribution of Perfect 10’s images over the
internet and Perfect 10 has not alleged that any infringing
material passes over Visa’s payment networks. These
infringing activities can occur without payment. Marketing
of credit cards does not follow that they affirmatively
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COPYRIGHT | ATTY. NEGRE KAT NIETO | B 2019

promote each product that their cards are used to
purchase.
o Vicarious Liability. Defendants may have some measure
of control over the offending websites since fear of losing
access to credit card payment processing would be
sufficient incentive for such websites to comply with
content-based suggestion of Visa. This, however, does not
give Visa the right and ability to control the actual
infringing activity.
 In this case, there was survey evidence where it was
shown that most of the files shared were copyrighted
materials and Grokster was not able to dispute that.
 Court tried to differentiate form Sony case because in
that case, the purpose and use was not for infringing,
more on speculations lang na for infringement. In that
case, time-shifting lang, and time-shifting in itself is
not infringement. For Grokster, purpose was clearly to
infringe – facilitate.

Liability of Device Manufacturers

MGM v Grokster
 Sony v Universal City Studios. Sony dealt with a claim of
liability based solely on distributing a product with alternative
lawful and unlawful uses, with knowledge that some users
would follow the unlawful course. The case struck a balance
between the interests of protection and innovation by holding
that the product’s capability of substantial lawful employment
should bar the imputation of fault and consequent secondary
liability for the unlawful acts of others.
o Erroneous Reading. Lower Court erred in ruling that Sony
barred secondary liability based on presuming or imputing
intent to cause infringement solely from the design or
distribution of a product capable of substantial lawful use,
which the distributor knows is in fact used for infringement.
The producer can never be held contributorily liable for
third parties’ infringing use of it even when an actual
purpose to cause infringing use is shown by evidence
independent of design and distribution of the product,
unless the distributors had specific knowledge of
infringement at a time at which they contributed to the
infringement, and failed to act upon that information.
o Proper Reading. Nothing in Sony requires courts to ignore
evidence of intent if there is such evidence, and the case
was never meant to foreclose rules of fault-based liability
derived from the common law. Thus, where evidence goes
beyond a product’s characteristics or the knowledge that
it may be put to infringing uses, and shows statements or
actions directed to promoting infringement, Sony’s staple-
article rule will not preclude liability.
 Infringement by Inducement. One who distributes a device
with the object of promoting its use to infringe copyright, as
shown by clear expression or other affirmative steps taken to
foster infringement, is liable for the resulting acts of
infringement by third parties.
o Liability Premised on Culpable Conduct. Mere
knowledge of infringing potential or of actual infringing
uses would not be enough here to subject a distributor to
liability. Nor would ordinary acts incident to product
distribution, such as offering customers technical support
or product updates, support liability in themselves. The
inducement rule, instead, premises liability on purposeful,
culpable expression and conduct, and thus does nothing
to compromise legitimate commerce or discourage
innovation having a lawful promise.
o Inducement theory of course requires evidence of actual
infringement by recipients of the device.
 Application | File-Sharing Networks. Grokster was marketed
as a replacement for Napster and its users were also largely
former Napster users. It did not attempt to develop filtering
tools or other mechanisms to diminish infringing activity.
Further, it made money from advertising space.
 Class Notes
o Q: How about non-copyrightable works? Why shoot down
the system when it can be used for non-infringing works?

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COPYRIGHT | ATTY. NEGRE
LIMITATIONS ON COPYRIGHT
Free Competition
 IP is an exception to Free Competition
Express Limitations under IPC
SEC. 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
part of his regularly prescribed official duties.
WORKS NOT PROTECTED
SEC. 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 of 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)
LIMITATIONS ON COPYRIGHT
SEC. 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)
KAT NIETO | B 2019
(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;
(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.
(l) The reproduction or distribution of published articles or
materials in a specialized format exclusively for the use of the
blind, visually- and reading-impaired persons: Provided,
That such copies and distribution shall be made on a
nonprofit basis and shall indicate the copyright owner
and the date of the original publication. (As amended by
Republic Act No.10372 or an Act Amending certain provisions of Republic Act
No. 8293 otherwise known as the Intellectual Property Code of the Philippines,
and for other Purposes)
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.
SEC. 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
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COPYRIGHT | ATTY. NEGRE
rehabilitation in the same style as the original of a building to
which that copyright relates. (n)
SEC. 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)
SEC. 188. Reprographic Reproduction by Libraries
188.1. Notwithstanding the provisions of Subsection 177.1, any
library or archive whose activities are not for profit may,
without the authorization of the author or copyright owner,
make a limited number of copies of the work, as may be
necessary for such institutions to fulfill their mandate, 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 limited copies 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. (As amended by Republic Act
No.10372 or an Act Amending certain provisions of Republic Act No.
8293 otherwise known as the Intellectual Property Code of the
Philippines, and for other Purposes)
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)
SEC. 189. Reproduction of Computer Program.
189.1. Notwithstanding the provisions of Section 177, the
reproduction in 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
KAT NIETO | B 2019
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
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)
SEC. 190. Importation and Exportation of Infringing Materials. -
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 or exportation of
infringing articles prohibited under Part IV of this Act and under
relevant 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 or
before they are exported. (Sec. 30, P.D. No. 49) (As amended by
Republic Act No.10372 or an Act Amending certain provisions of Republic Act No.
8293 otherwise known as the Intellectual Property Code of the Philippines, and for
other Purposes)
FILSCAP v Tan
 Performance. One who plays a musical composition on a
piano, thereby producing in the air sound waves which are
heard as music and if the instrument he plays on is a piano plus
a broadcasting apparatus, so that waves are thrown out, not
only upon the air, but upon the other, then also he is performing
the musical composition.
o Performance for Profit. Playing of music in dine and
dance establishment which was paid by the public in
purchases of food and drink.
o The Performance in a restaurant or hotel dining room, by
persons employed by the proprietor, of a copyrighted
musical composition, for the entertainment of patrons,
without charge for admission to hear it, infringes the
exclusive right of the owner of the copyright.
 Application | Old Filipino Songs in Restaurants. Patrons of the
restaurant pay only for the food and drinks and apparently not
for listening to the music. However, from the records, the
combo singers were paid as independent contractors. The
expenses are added to the overhead of the restaurant which
are eventually charged to the price of food and drinks.
However, there is no infringement because the works are
already property of public domain.
Philippine Education Co v Sotto
 Reproduction of Articles. News items, editorial paragraphs,
and articles in periodicals may also be reproduced unless they
contain a notice that their publication is reserved or a notice
of copyright, but the source of the reproduction or original
reproduced shall be cited. In case of musical works part of little
extent may also be reproduced.
o GR: News items, editorial paragraphs, and articles in
periodicals may be reproduced.
 E: They contain a notice that their publication is
reserved, or a notice of copyright. In either case, the
44
COPYRIGHT | ATTY. NEGRE
law specifically provides that the source of the
reproduction or original reproduced shall be cited.
 Application | True Story of Mrs. Rizal Article Originally
Published in Magazine, Subsequently Published in Newspaper.
Philippine Education did not have a copyright over the article
but in the publication of the article, it stated that all rights were
reserved which was legally equivalent to a notice that their
publication is reserved. Newspaper may publish but in this case,
newspaper failed to cite and therefore, liable for damages.
Fair Use
SEC. 185. Fair Use of a Copyrighted Work.
185.1. The fair use of a copyrighted work for criticism, comment,
news reporting, teaching including limited number of
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
a computer program to achieve the interoperability of
an independently created computer program with other
programs may also constitute fair use under the criteria
established by this section, to the extent that such
decompilation is done for the purpose of obtaining the
information necessary to achieve such interoperability.
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. (As amended by Republic Act
No.10372 or an Act Amending certain provisions of Republic Act No. 8293
otherwise known as the Intellectual Property Code of the Philippines, and
for other Purposes)
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.
4 FACTORS
 Additional considerations such as bad faith by the user of
copyrighted material that suggests unfairness or prejudice
suffered by the alleged infringer are factors that are taken into
consideration.
1. The purpose and character of the use, including whether such
use is of a commercial nature or is for non-profit educational
purposes;
 Purpose and Character; Transformative. To what extent the
work is transformative
o Whether the new work adds something new, with a further
purpose or different character, altering the first with new
expression, meaning, or message
o Whether the work is copied because it altered the first with
a new expression, meaning, or message, or whether the
new work merely supersedes the object of the original
creation.
o Possible confusion with derivative works.
 Derivative works: Based upon pre-existing works.
Transformed an original work into a new mode of
expression, but unlike a work of fair use expression, its
purpose was not transformed.
KAT NIETO | B 2019
 When a derivative work transformed an original
work into a new mode of expression such that little
similarity remained, it would not infringe the
copyright of the original work.
 Commercial or Nonprofit. The fact that a publication was
commercial, as opposed to non-profit, is a separate factor
that tends to weigh against a finding of fair use. Every
commercial use is presumptively an unfair exploitation.
o Crux: Not whether the sole motive of the use is monetary
gain, but whether the user stands to profit from
exploitation of the copyrighted material without
paying the customary price.
o The mere fact that a use is education and not for profit
does not insulate it from a finding of infringement, any
more than the commercial character of a use bars a
finding of fairness.
2. The nature of the copyrighted work;
 Some works are closer to the core of intended copyright
protection than others, with the consequence that fair use is
more difficult to establish.
 Fact or Fiction. The law generally recognizes a greater need
to disseminate factual works than works of fiction or fantasy.
o Extent to which it is a creative work enjoying broader
copyright protection as opposed to a factual work
requiring broader dissemination.
 Publication. Scope of fair use is narrower to unpublished
works.
o Unpublished: Right of first publication is implicated.
3. The amount and substantiality of the portion used in relation
to the copyrighted work as a whole; and
 Amount. Whether extent of copying is consistent with or more
than necessary to further the purpose and character of the use.
 Substantiality. Use of a substantial part or the heart of a
protected work is justified when the character of the work is
criticism or parody, because these expressions necessarily
demand a greater quantity to be useful.
o A taking may not be excused merely because it is
insubstantial with respect to the infringing work.
 The quantitative aspect refers to the amount copied while the
qualitative component concerns the copying of expression,
rather than ideas. The acceptable amount of what is copied is
directly related to the purpose of the copying.
4. The effect of the use upon the potential market for or value
of the copyrighted work.
 Some cases refer to this as the single most important element
of fair use. But Castle Rock court ruled that this is only a factor
to be taken equally with the others to determine fair use.
 Fair use, when properly applied, is limited to copying by others
which does not materially impair the marketability of the
work which is copied.
o Note: The statute directs us to consider "the effect of the
use upon the value of the copyrighted work," not only the
effect upon the "market," however narrowly that term is
defined.
 Once a copyright holder establishes with reasonable
probability the existence of a causal connection between
infringement and loss of revenue, the burden properly shifts to
the infringer to show that this damage would have occurred
had there been no taking of copyrighted expression.
 Inquiry must take into account not only harm to the original
works but also market for derivative works.
45
COPYRIGHT | ATTY. NEGRE
 Does not look to whether the secondary work detracts from
market of the copyrighted work, but rather does it substitute
the market of the original (nature of copyright as a monopoly
on publication does not permit a substitution).
o If derivative market was one that copyright holder would
generally develop or license, a secondary author would be
barred from entering it.
o If the market was one generally protected by fair use, such
as criticism, parody, or academic scholarship, copyright
holder could not enter those markets and attempt to
preclude secondary authors from entering it.
CLASS NOTES
 GR: Free Competition
o E: Copyright Protection
 E to E:
1. Exclusions
2. Limitations
o Sec. 184: “Non-infringing”
o Sec. 185: Fair Use – “Fairness” is subjective
 Free competition, exclusions and limitations are to be
construed liberally
 Q: What if case falls under fair use, can one still file a
trademark infringement case?
o It depends on the content. If it is the title that is subject of
the case, then no infringement. If work is popular, it can be
under unfair competition.
 Q: Video splicing to come up with a new video.
o Are there specific works identifiable? To what extent? Is it
transformative?
o If use is commercial, maybe it does not fall under fair use.
o If only words are used and specific works are not
identifiable, then it is not infringing.
 Cases where the entirety of works were used:
o Poster case: Highly transformative
o American v Texaco: Non-transformative even if there is a
transformative value for science
o Seinfeld case and Harry Potter case: More inconsistent
with the poster case because in the poster case, it can be
argued that it was a derivative work
 ABS-CBN v Gozon
o Fair use as a defense
 Matter of right
o Q: Was fair use raised to the level of copyright?
o Burden of claimant that it is not fair use
o Note: Criminal in nature
KAT NIETO | B 2019
Lenz v Universal Music Corporation
 DMCA’s Takedown Clause. Section 512(c) permits service
providers, e.g., YouTube or Google, to avoid copyright
infringement liability for storing users' content if the service
provider "expeditiously" removes or disables access to the
content after receiving notification from a copyright holder
that the content is infringing.
o Elements that a "takedown notification" must contain:
1. Identification of the copyrighted work
2. Identification of the allegedly infringing material, and
3. A statement that the copyright holder believes in good
faith the infringing material "is not authorized by the
copyright owner, its agent, or the law."
 Fair Use. Fair use of a copyrighted work is permissible because
it is a non-infringing use.
o In Relation to DMCA’s Takedown Clause.
 A copyright holder's consideration of fair use need not
be searching or intensive. The DMCA already requires
copyright owners to make an initial review of the
potentially infringing material prior to sending a
takedown notice.
 Liable. If a copyright holder ignores or neglects our
unequivocal holding that it must consider fair use
before sending a takedown notification, it is liable for
damages under § 512(f).
 Not Liable. If, however, a copyright holder forms a
subjective good faith belief the allegedly infringing
material does not constitute fair use, we are in no
position to dispute the copyright holder's belief even if
we would have reached the opposite conclusion.
 A copyright holder who pays lip service to the
consideration of fair use by claiming it formed a
good faith belief when there is evidence to the
contrary is still subject to § 512(f) liability.
 Application | Prince’s Song on Youtube. Case remanded to
determine if Universal was in good faith and if it considered
fair use in issuing its takedown notice.
 Class Notes
o Fair use as an affirmative defense
Harper & Row, Publishers v Nation Enterprises
 Fair Use. A privilege in others than the owner of the copyright
to use the copyrighted material in a reasonable manner without
his consent. Necessary incident of the constitutional policy of
promoting the progress of science and the useful arts.
o Publication. The fact of non-publication does not negate
protection. Publication of an author’s expression before he
has authorized its dissemination seriously infringes the
author’s right to decide when and whether it will be made
public, a factor not present in fair use of published works.
 Fair Use.
1. Purpose of use
 News reporting is an example of activities that courts
may regard as fair use.
 Issue is not what constitutes “news” but whether a
claim of news reporting is a valid fair use defense
to an infringement of copyrightable expression.
2. Nature of copyrighted work
 Right of first publication encompasses not only the
choice whether to publish at all, but also the choices
of when, where, and in what form first to publish a
work.
 Scope of fair use is narrower with respect to
unpublished works. While even substantial quotations
may qualify as fair use in a review of a published work
or a news account of a speech delivered in public, the
46
COPYRIGHT | ATTY. NEGRE
author’s right to control the first public appearance of
his expression weight against use of such work before
its release.
3. Amount and substantiality
4. Effect on the market
 Application | Reader’s Digest, Memoirs of President Ford. Not
fair use.
1. Purpose of use
 Nation, a political commentary magazine, had every
right to be the first to publish information, but it went
beyond simply reporting the work and actively sought
to exploit the headline value of its infringement,
making a news event out of its unauthorized first
publication of a noted figure’s copyrighted expression.
 Nation’s use had not merely the incidental effect, but
the intended purpose of supplanting the copyright
holder’s commercially valuable right of first
publication.
2. Nature of copyrighted work
 Confidential interest in the manuscript is irrefutable.
Nation’s publication afforded no opportunity for
creative or quality control as it was hastily patched
together and contained a number of inaccuracies.
3. Amount and substantiality
 Substantial portion of the work was copied verbatimly
4. Effect on the market
 Cancellation of contract between Time and Reader’s
Digest resulted in losses for Reader’s Digest
Campbell v Acuff-Rose Music, Inc.
 Parody. Literary or artistic work that imitates the characteristic
style of an author or a work for comic effect or ridicule or as a
composition in prose or verse in which the characteristic turns
of thought and phrase in an author or class of authors are
imitated in such a way as to make them appear ridiculous.
o Needs to mimic an original to make its point.
o Whether a parodic character may reasonably perceived.
Whether, going beyond that, parody is in good taste or bad
does not and should not matter in fair use.
 Satire. Can stand on its own and so requires justification for
the very act of borrowing.
 Fair Use.
4. Effect on the market: Parody and the original usually
serve different market functions. Parody may have more
complex character, with effects not only in the arena of
criticism but also in protectable markets for derivative
works too.
 No presumption or inference of market harm that
might find support in the Sony case – in that case,
there was verbatim copying of the original for
commercial purposes.
 Application | Pretty Woman. Fair use.
1. Purpose of use: 2 Live Crew’s song was clearly intended
to ridicule the white bread original. It juxtaposes the
romantic musings of a man whose fantasy comes true, with
degrading taunts, bawdy demand for sex, and sigh of relief
from paternal responsibility.
2. Nature of copyrighted work: Factor not much use in the
case since parodies invariably copy publicly known,
expressive works
3. Amount and substantiality: It took no more than what
was necessary from the original.
4. Effect on market: Market of 2 Live Crew was different
from the original song since the former was a rap music
and a parody.
KAT NIETO | B 2019
New Era Publications Int'l v Carol Publishing Group
 Fair Use.
1. Purpose of use: Use of copyrighted materials for purposes
such as criticism, scholarship, or research, is not an
infringement of copyright.
 Biographies in general and critical biographies are
examples of such
2. Nature of copyrighted work: Biographies are
fundamentally personal histories and it is both reasonable
and customary for biographies to refer to and utilize works
dealing with the subject of the work and occasionally
quote directly from such works
3. Amount and substantiality
4. Effect on market: Harm to the market for a copyrighted
work or its derivatives caused by a devastating critique
that diminished sales by convincing the public that the
original work was of poor quality is not within the scope of
copyright protection.
 Application | Scientology Founder’s Bad Biography. Fair use.
1. Purpose of use: Quotes of Hubbard, the founder, were
necessary to convey the author’s perception of Hubbard’s
hypocrisy and pomposity.
2. Nature of copyrighted work: Quoted works were factual
or informational
3. Amount and substantiality: Quantitatively, small
percentage of works were used. Qualitatively, use did not
take essentially the heart of Hubbard’s work. Use of the
quotes was not an important ingredient of the work.
4. Effect on market: Critical biography does not in any way
compete with the original. Even assuming that the book
discourages potential purchasers of the authorized
biography, this is not necessarily actionable.
Castle Rock Entertainment v Carol Publishing Group, Inc.
 Application | Seinfeld Aptitude Test. Not fair use.
1. Purpose of use: Use was not transformative. Book’s
commercial use weighed against fair use.
2. Nature of copyrighted work: Seinfeld was fictional and this
factor tends to favor works based on facts.
3. Amount and substantiality: Greater degree of material
from Seinfeld would be necessary for an accurate critique
of the show but since there was little transformative use,
factor weighed against it.
4. Effect on market: Lack of transformative use made the
book a derivative work in a derivative market. SAT was the
only Seinfeld trivia book, it completely substituted this
derivative market for the show.
Nuñez v Caribbean International News Corp. (El Vocero de
Puerto Rico)
 Application | Ms. Puerto Rico Photos in Newspaper. Fair use.
1. Purpose of use: Transformation of the works into news and
not mere newsworthiness of the works weighs in favor of
fair use.
2. Nature of copyrighted work: Photos were hardly
confidential. Photographer did not sought to control
further dissemination during his limited distribution, there
was no copyright registration nor oral promises not to re-
distribute photographs.
3. Amount and substantiality: Entire work was copied but
this factor is irrelevant in this case.
4. Effect on market: Little impact on market of pictures. Fact
that a relatively poor reproduction was displayed on the
cover of a newspaper should not change the demand of
the portfolio.
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COPYRIGHT | ATTY. NEGRE
Video Pipeline, Inc. v Buena Vista Home Entertainment, Inc.
 Movie Review. The movie reviewer does not simply display a
scene from the movie under review but as well provides his or
her own commentary and criticism. In so doing, the critic may
add to the copy sufficient "new expression, message, or
meaning" to render the use fair.
 Copyright Misuse Doctrine. Misuse often exists where the
patent or copyright holder has engaged in some form of anti-
competitive behavior. Anti-competitive licensing agreements
may conflict with the purpose behind a copyright's protection
by depriving the public of the would-be competitor's creativity.
o Precludes Enforcement. Misuse is not cause to invalidate
the copyright or patent, but instead precludes its
enforcement during the period of misuse.
 Application | Trailer and Clip Previews (Snippets of Movie).
Not fair use.
1. Purpose of use: Use is not substantially altered because
clip previews are likely to supersede the trailers or act as
substitutes.
2. Nature of copyrighted work: Disney's movies and trailers
contain mainly creative expression, not factual material,
suggests that the use is not fair regardless of the published
or unpublished status of the original.
3. Amount and substantiality: In favor of fair use because
it does not go into the heart of the work.
4. Effect on market: Video Pipeline’s use of clip previews is
detrimental to Disney’s interest
Bill Graham Archives v Dorling Kindersley Ltd.
 Fair Use.
1. Purpose of use: While there are no categories of
presumptively fair use, courts have frequently afforded fair
use protection to the use of copyrighted material in
biographies, recognizing such works as forms of historic
scholarship, criticism, and comment that require
incorporation of original source material for optimum
treatment of their subjects.
2. Nature of copyrighted work: Creative nature of artistic
images typically weighs in favor of the copyright holder.
However, this factor may be of limited usefulness where
the creative work of art is being used for a transformative
purpose.
3. Amount and substantiality: Copying does not necessarily
weigh against fair use because copying the entirety of a
work is sometimes necessary to make a fair use of the
image.
 The extent of permissible copying varies with the
purpose and character of the image.
4. Effect on market: Court looks into the potential licensing
revenues for traditional, reasonable, or likely to be
developed markets.
 As a general matter, a copyright holder is entitled to
demand a royalty for licensing others to use its
copyrighted work, and that the impact on potential
licensing revenues is a proper subject for
consideration in assessing the 4th factor.
 The court has also noted, however, that were the
court automatically to conclude in every case that
potential licensing revenues were impermissibly
impaired simply because the secondary user did
not pay a fee for the right to engage in the use,
the 4th fair use factor would always favor the
copyright holder.
KAT NIETO | B 2019
 Application | Coffee Table Book of a Band, Image of Poster
was Used. Fair use.
1. Purpose of use:
 Transformative Use. Posters were used in coffee
table book as historical artifacts, graphically
representing the band’s concerts. Originally, the
posters were used as artistic expression and
promotion. Photos were also resized – much smaller
than the actual poster.
 Commercial Use. Posters were not exploited for
commercial advertising or any way to promote the
book. Use was incidental to the commercial
biographical value of the book.
2. Nature of copyrighted work: Factor is of limited weight
since use of poster was transformative.
3. Amount and substantiality: Although the entire posters
were copied, the size was significantly reduced; therefore,
the visual impact of the artistic expression is significantly
limited. The reduction of size was necessary to ensure
reader’s recognition of the images as historical artifacts of
the band’s concert.
4. Effect on market: Use of images was transformatively
different from their original expressive purpose. A
publisher’s willingness to pay license fees for reproduction
of images does not establish that the publisher may not, in
the alternative, make fair use of those images.
Sega Enterprises Ltd. v Accolade, Inc.
 Fair Use.
4. Effect on market: Attempt to monopolize the market by
making it impossible for others to compete runs counter
to the statutory purpose of promoting creative expression
and cannot constitute a strong equitable basis for
resisting the invocation of the fair use doctrine.
 Other Factors.
o The fact that computer programs are distributed for public
use in object code form often precludes public access to
the ideas and functional concepts obtained in those
programs, and thus confers on the copyright owner a de
facto monopoly over those ideas and functional concepts.
That result defeats the fundamental purpose of the
Copyright Act.
 Application | Game Made Compatible with SEGA’s Genesis.
Fair use.
1. Purpose of use: Accolade copied SEGA’s software solely
in order to discover the functional requirements for
compatibility with the Genesis console – i.e. aspects which
are not protected by copyright. Accolade also did not
simply copied SEGA’s code but only wanted to discover
the functional aspects.
 It is the growth in creative expression, based on the
dissemination of other creative works and the
unprotected ideas contained in those works, that the
Copyright Act was intended to promote.
2. Nature of copyrighted work: Only the functional aspect
was copied.
3. Amount and substantiality: Against Accolade but it does
not necessarily preclude fair use per se.
4. Effect on market: Accolade did not attempt to “scoop”
SEGA’s release of any particular game but merely wanted
to be a legitimate competitor.
 Class Notes. Essentially piracy but trumped by free
competition. Competition was increased because SEGA will
be challenged to develop.
48
COPYRIGHT | ATTY. NEGRE
Sony Computer Entertainment, Inc. v Connectix Corp.
 Disassembly to Extract Functional Elements. Fair use was
applied in Sega Enterprises v Accolade in the disassembly of
computer software if copying was necessary to gain access to
the functional elements of the software – i.e. utilitarian articles
that accomplish the task.
 Application | Play Station v. PC Emulator; Reverse
Engineering. Fair use.
1. Purpose of use: Connectix’s new object code was
transformative as it creates a new platform which affords
opportunities for gameplay in new environment. Sony does
not claim that the object code infringes its copyright.
2. Nature of copyrighted work: Connectix’s reverse
engineering was necessary to gain access to the
unprotected functional elements within the program.
3. Amount and substantiality: In favor of Sony since
Connectix copied the entire BIOS multiple times. But in a
case of intermediate infringement when the final product
does not itself contain infringing material, this factor is of
very little weight.
4. Effect on market: Although in substituting the PC Emulator
for Play Station, Sony will lose console sales and profits,
the former remains to be transformative and does not
merely supplant the Play Station. Some economic loss by
Sony as a result of the competition does not compel a
finding of no fair use. Copyright law does not confer the
monopoly for devices that play games which Sony seeks.
Perfect 10, Inc. v Amazon, Inc.
 Fair Use.
1. Purpose of use: A work is "transformative" when the new
work does not "merely supersede the objects of the original
creation" but rather "adds something new, with a further
purpose or different character, altering the first with new
expression, meaning, or message." Conversely, if the new
work "supersedes the use of the original," the use is likely
not a fair use.
2. Nature of copyrighted work: The right of first publication
is "the author's right to control the first public appearance
of his expression." Because this right encompasses "the
choices of when, where, and in what form first to publish a
work," an author exercises and exhausts this one-time right
by publishing the work in any medium.
3. Amount and substantiality: Asks whether the amount and
substantiality of the portion used in relation to the
copyrighted work as a whole are reasonable in relation to
the purpose of the copying.
4. Effect on market:
 Application | Porn Thumbnails. Fair use.
1. Purpose of use: Google's use of thumbnails is highly
transformative. Although an image may have been
created originally to serve an entertainment, aesthetic, or
informative function, a search engine transforms the image
into a pointer directing a user to a source of
information. The fact that Google incorporates the entire
Perfect 10 image into the search engine results does not
diminish the transformative nature of Google's use. Even
making an exact copy of a work may be transformative so
long as the copy serves a different function than the
original work.
 The significantly transformative nature of Google's
search engine, particularly in light of its public benefit,
outweighs Google's superseding and commercial uses
of the thumbnails in this case (i.e. use of thumbnail to
direct users to AdSense partners).
KAT NIETO | B 2019
 Weighing this significant transformative use against
the unproven use of Google's thumbnails for cell
phone downloads, and considering the other fair use
factors, all in light of the purpose of copyright, we
conclude that Google's use of Perfect 10's thumbnails
is a fair use.
2. Nature of copyrighted work: Once Perfect 10 has exploited
this commercially valuable right of first publication by
putting its images on the Internet for paid subscribers,
Perfect 10 is no longer entitled to the enhanced protection
available for an unpublished work.
3. Amount and substantiality: This factor did not weigh in
favor of either party. Because the same analysis applies to
Google's use of Perfect 10's image, the district court did
not err in finding that this factor favored neither party.
4. Effect on market: Because market harm cannot be
presumed, and because Perfect 10 has not introduced
evidence that Google's thumbnails would harm Perfect 10's
existing or potential market for full-size images, we reject
this argument.
Sony Corporation of America v Universal City Studios, Inc.
 Infringement. An unlicensed use of the copyright is not an
infringement unless it conflicts with one of the specific
exclusive rights conferred by the copyright statute.
 Non-Commercial Use. Although every commercial use of
copyrighted material is presumptively an unfair exploitation of
the monopoly privilege that belongs to the owner of the
copyright, noncommercial uses are a different matter. A
challenge to a noncommercial use of a copyrighted work
requires proof either that the particular use is harmful or that,
if it should become widespread, it would adversely affect the
potential market for the copyrighted work. Actual present harm
need not be shown; such a requirement would leave the
copyright holder with no defense against predictable damage.
Nor is it necessary to show with certainty that future harm will
result. What is necessary is a showing by a preponderance of
the evidence that some meaningful likelihood of future harm
exists. If the intended use is for commercial gain, that likelihood
may be presumed. But if it is for a noncommercial purpose, the
likelihood must be demonstrated.
 Application | Recording; Time-Shifting. Fair use.
o First, Sony demonstrated a significant likelihood that
substantial numbers of copyright holders who license their
works for broadcast on free television would not object to
having their broadcasts time-shifted by private viewers.
o And second, respondents failed to demonstrate that time-
shifting would cause any likelihood of nonminimal harm to
the potential market for, or the value of, their copyrighted
works.
o The Betamax is, therefore, capable of substantial
noninfringing uses. Sony's sale of such equipment to the
general public does not constitute contributory
infringement of respondents' copyrights.
49
COPYRIGHT | ATTY. NEGRE KAT NIETO | B 2019

A&M Records, Inc. v Napster, Inc.

 If a use is non-commercial, the plaintiff bears the burden of
showing a meaningful likelihood that it would adversely affect
the potential market for the copyrighted work if it became
widespread.
 Application | Napster. Not fair use.
1. Purpose of use: The vast scale of Napster use among
anonymous individuals, the court Uinds that downloading
and uploading MP3 music Uiles with the assistance of
Napster are not private uses. Plaintiffs have demonstrated
a meaningful likelihood that it would adversely affect their
entry into the online market if it became widespread.
2. Nature of copyrighted work: Musical compositions are
creative in nature.
3. Amount and substantiality: Downloading or uploading
MP3 files involves copying the entirety of the copyrighted
work. Wholesale copying for private home use tips the fair
use analysis in plaintiffs' favor if such copying is likely to
adversely affect the market for the copyrighted material.
4. Effect on market: Plaintiffs have produced evidence that
Napster use harms the market for their copyrighted musical
compositions and sound recordings in at least two ways.
First, it reduces CD sales among college students. Second,
it raises barriers to plaintiffs' entry into the market for the
digital downloading of music.

American Geophysical Union v Texaco, Inc.

 Application | Science Journals. Not fair use.
1. Purpose of use: Photocopies was merely for archival
purposes, no transformative use. Photocopying was done
to avoid payment of more copies of issues. Use of articles
was a factor for production of new products, hence there
was indirect economic advantage.
2. Nature of copyrighted work: Factual nature of the work
weighs in favor of Texaco.
3. Amount and substantiality: Case involves the individual
copyrights of publishes, hence, though the entire volumes
of journals were not photocopied, the entire articles were,
and so factor weighs against Texaco.
4. Effect on market: Substantial harm to American
Geophysical’s market for additional journal subscriptions,
back issues, and back volumes. Licensing revenues and
fees also affected.

Princeton University Press v Michigan Document Services,

Inc.
 Application | Academic Coursepacks. Not fair use.
1. Purpose of use: Copying was performed on a profit-
making basis by a commercial enterprise, not limited to
copying by students and teachers for non-profit.
2. Nature of copyrighted work: Coursepacks contained
creative material.
3. Amount and substantiality: More than 30% was being
used. Also, the fact that the professors thought the
excerpts sufficiently important to make them required
reading strikes us as fairly convincing "evidence of the
qualitative value of the copied material.

50
COPYRIGHT | ATTY. NEGRE
RELATED RIGHTS
CLASS NOTES
ECONOMIC AND
NEIGHBORING RIGHTS
MORAL RIGHTS
Authors Performers
Creators  Closest to authors (artists)
 Has moral rights
Sound Producers
 Label, publishers
 No moral rights
 Mechanical recording of
performances
Broadcasting
 Outside of these rights are public domain rights (Sec. 175, 184,
185)
Moral Rights
BERNE CONVENTION FOR THE PROTECTION
OF LITERARY AND ARTISTIC WORKS
ARTICLE 6BIS
(1) Independently of the author's economic rights, and even after
the transfer of the said rights, the author shall have the right
to claim authorship of the work and to object to any
distortion, mutilation or other modification of, or other
derogatory action in relation to, the said work, which would
be prejudicial to his honor or reputation.
(2) The rights granted to the author in accordance with the
preceding paragraph shall, after his death, be maintained, at
least until the expiry of the economic rights, and shall be
exercisable by the persons or institutions authorized by the
legislation of the country where protection is claimed.
However, those countries whose legislation, at the moment of
their ratification of or accession to this Act, does not provide
for the protection after the death of the author of all the
rights set out in the preceding paragraph may provide that
some of these rights may, after his death, cease to be
maintained.
(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.
SEC. 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 such right, have the
right:
193.1. To require that the authorship of the works be attributed to
him, in particular, the right that his name, as far as
practicable, be indicated in a prominent way on the copies,
and in connection with the public use of his work;
193.2. To make any alterations of his work prior to, or to withhold
it from publication;
193.3. To object to any distortion, mutilation or other modification
of, or other derogatory action in relation to, his work which
would be prejudicial to his honor or reputation; and
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)
SEC. 194. Breach of Contract. - An author cannot be compelled
to perform his contract to create a work or for the publication of
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his work already in existence. However, he may be held liable for
damages for breach of such contract. (Sec. 35, P.D. No. 49)
SEC. 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:
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)
SEC. 230. Adoption of Intellectual Property (IP) Policies. - Schools
and universities shall adopt intellectual property policies that
would govern the use and creation of intellectual property with
the purpose of safeguarding the intellectual creations of the
learning institution and its employees, and adopting locally-
established industry practice fair use guidelines. These policies
may be developed in relation to licensing agreements entered into
by the learning institution with a collective licensing organization.
 Q: Sec. 193.1 provides that right to attribution must be asserted
(“to require”). What if the author does not assert the right?
o Sec. 230: Laches
o Note: Sec. 195 provides that rights may be waived through
a written waiver
SEC. 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)
SEC. 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)
SEC. 198. Term of Moral Rights.
198.1. The rights of an author under Section 193.1 shall last
during the lifetime of the author and in perpetuity after
his death while the rights under Sections 193.2, 193.3, and
193.4 shall be coterminous with the economic rights, the
moral rights 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
a written instrument which shall 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. (As amended by Republic Act No.10372 or an Act
Amending certain provisions of Republic Act No. 8293
otherwise known as the Intellectual Property Code of the
Philippines, and for other Purposes)
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
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reasonable fees to be charged for his services in the
application of provisions of this Section. (Sec. 39, P.D. No.
49)
SEC. 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)
MORAL RIGHTS
1. Attribution
2. Divulgation or publish
3. Mutilation + reputation = Integrity
4. Non-attribution
Right to Proceeds in Subsequent Transfers
(Droit De Suite or Follow Up Rights)
RIGHTS TO PROCEEDS IN SUBSEQUENT TRANSFERS
SEC. 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 5%. This right shall exist during the lifetime of the author
and for 50 years after his death. (Sec. 31, P.D. No. 49)
SEC. 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)
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Neighboring Rights
RIGHTS OF PERFORMERS, PRODUCERS OF SOUND
RECORDINGS AND BROADCASTING ORGANIZATIONS
SEC. 202. Definitions. - For the purpose of this Act, the following
term 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;
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.
LIMITATIONS ON PROTECTION
SEC. 212. Limitations on Rights. - The provisions of Chapter VIII
shall apply mutatis mutandis to the rights of performers, producers
of sound recordings and broadcasting organizations. (As
amended by Republic Act No.10372 or an Act Amending certain
provisions of Republic Act No. 8293 otherwise known as the
Intellectual Property Code of the Philippines, and for other
Purposes)
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Rights of Performers
SEC. 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 or
audiovisual works or fixations in any manner or form;
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 recordings
or audiovisual works or fixations through sale or rental of
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 or audiovisual works or fixations, 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 or
audiovisual works or fixations, 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) (As amended by Republic Act
No.10372 or an Act Amending certain provisions of
Republic Act No. 8293 otherwise known as the Intellectual
Property Code of the Philippines, and for other Purposes)
SEC. 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 or in audiovisual
works or fixations, 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. (As amended by Republic Act
No.10372 or an Act Amending certain provisions of
Republic Act No. 8293 otherwise known as the Intellectual
Property Code of the Philippines, and for other Purposes)
204.2. The rights granted to a performer in accordance with
Subsection 203.1 shall be maintained and exercised 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)
SEC. 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)
SEC. 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 5%
KAT NIETO | B 2019
of the original compensation he or she received for the first
communication or broadcast. (n)
SEC. 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)
SEC. 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, 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, 50 years from the
end of the year in which the recording took place.
215.2. In case of broadcasts, the term shall be 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)
Rights of Producers of Sound Recording
SEC. 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)
208.4. The right to authorize the making available to the public of
their sound recordings in such a way that members of the
public may access the sound recording from a place and
at a time individually chosen or selected by them, as well
as other transmissions of a sound recording with like effect.
(As amended by Republic Act No.10372 or an Act
Amending certain provisions of Republic Act No. 8293
otherwise known as the Intellectual Property Code of the
Philippines, and for other Purposes)
SEC. 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)
SEC. 210. Limitation of Right. - Sections 184 and 185 shall apply
mutatis mutandis to the producer of sound recordings. (Sec. 48,
P.D. No. 49a)
SEC. 215. Term of Protection for Performers, Producers and
Broadcasting Organizations.
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COPYRIGHT | ATTY. NEGRE
215.1. The rights granted to performers and producers of sound
recordings under this law shall expire:
(a) For performances not incorporated in recordings, 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, 50 years from the
end of the year in which the recording took place.
215.2. In case of broadcasts, the term shall be 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)
Rights of Broadcasting Organizations
BROADCASTING ORGANIZATIONS
SEC. 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)
SEC. 215. Term of Protection for Performers, Producers and
Broadcasting Organizations.
215.2. In case of broadcasts, the term shall be 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)
PD 285 | AUTHORIZING THE COMPULSORY LICENSING OR
REPRINTING OF EDUCATIONAL, SCIENTIFIC OR CULTURAL
BOOKS AND MATERIALS AS A TEMPORARY OR EMERGENCY
MEASURE WHENEVER THE PRICES THEREOF BECOME SO
EXORBITANT AS TO BE DETRIMENTAL TO THE NATIONAL
INTEREST
WHEREAS, the spiralling of prices of educational, scientific or
cultural books and materials has reached very serious proportion;
WHEREAS, it is in the national interest that such books and
materials be made available to everybody at the least cost; and
WHEREAS, this can be achieved by the compulsory licensing and
reprinting of both domestic and foreign educational, scientific or
cultural books and materials, as a temporary or emergency
measure, whenever their prices become exorbitant;
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
KAT NIETO | B 2019
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 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.
SEC. 239. Appropriations – The funds needed to carry out the
provisions of this Act shall be charged to the appropriations of the
Bureau of Patents, Trademarks, and Technology Transfer under the
current General Appropriations Act and the fees, fines, royalties
and other charges collected by the Bureau for the calendar year
pursuant to Sections 14.1 and 234 of this Act. Thereafter such sums
as may be necessary for its continued implementations shall be
included in the annual General Appropriations Act. (n)
Moral Rights under US Law
Gilliam v American Broadcasting Companies, Inc.
 No Moral Rights in US. 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.
o Resort to Other Remedies. 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 or tort of unfair competition. Although such
decisions are clothed in terms of proprietary right in one's
creation, they also properly vindicate the author's personal
right to prevent the presentation of his work to the public
in a distorted form.
o "To deform his work is to present him to the public as
the creator of a work not his own, and thus makes him
subject to criticism for work he has not done." In such
a case, it is the writer or performer, rather than the
network, who suffers the consequences of the mutilation,
for the public will have only the final product by which to
evaluate the work.
 Application | Monty Phyton. Injunction granted because there
have been substantial omissions made. The editing impaired
the integrity of Monty Phyton’s work.
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The Visual Artists Rights Act
Lilly v Stout
In Re Justice Del Castillo
 Work of Visual Art Under VARA. A still photographic image
 Dissenting | Sereno
produced for exhibition purposes only, existing in a single copy
that is signed by the author, or in a limited edition of 200 copies
or fewer that are signed and consecutively numbered by the
author.
 Moral Rights Under VARA. The enactment of this law was to
protect both the reputations of certain visual artists and the
works of art they create. These are enumerated in the individual
rights of “Attribution” and “Integrity” known collectively as
“moral rights.” This ensures that artists are correctly identified
with the works of arts they create and not identified with works
by others. Thus, this protects their works against modifications
and destructions.
o Rights of Attribution.
1. Claim authorship of a work he or she created, and;
2. Prevent the use of one's name as the author of a work
that he or she did not create.
o Rights of Intergity.
1. Prevent any intentional distortion, mutilation, or other
modification of his or her work, and;
2. Prevent any destruction of a work of recognized
stature.
 Application | Photos in this case, when they were taken, were
not for exhibition purposes only. They served as studies for
paintings that Stout planned to create. VARA does not pose a
per se bar to protection for preparatory works such as studies.
 Concurring | Brion
Martin v City of Indianapolis
 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.”
The Right of Attribution
Dastar Corp. v 20th Century Fox Film Corp.
 The most natural understanding of ‘origin’ of ‘goods’ is the
producer of the tangible product sold in the marketplace. The
concept of ‘origin’ might be too stretched to include not only
the actual producer, but also the trademark owner who
commissioned the production of the physical product. The
phrase origin of goods in the Lanham Act is in our view
incapable of connoting the person or entity that originated the
ideas or communications that "goods" embody or contain.
o Reading ‘origin’ to require attribution of uncopyrighted
materials would pose serious practical problems.
 Application | Dastar was the origin of the products it sold as
its own. “Origin” refers to the producer of tangible goods that
are offered for sale, and not to the author of any idea, concept,
or communication embodied in those goods.
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COPYRIGHT VS PLAGIARISM
o Plagiarism is not necessarily copyright infringement,
nor is copyright infringement necessarily
plagiarism…In some ways the concept of plagiarism is
broader than infringement, in that it can include the
copying of ideas, or of expression not protected by
copyright, that would not constitute infringement, and it
can include the copying of small amounts of material that
copyright law would disregard. An action for violation of
copyright – which may take on either a criminal and a civil
aspect, or even both – does not sufficiently remedy the
broader injury inherent in plagiarism.
o Plagiarism, with its lack of attribution, severs the
connection between the original author's name and
the work. A plagiarist, by falsely claiming authorship of
someone else's material, directly assaults the author's
interest in receiving credit. In contrast, attribution is
largely irrelevant to a claim of copyright infringement
for infringement can occur even when a work is properly
attributed if the copying is not authorized–for example, a
pirated edition of a book produced by someone who does
not own the publication rights.
o The recognition of plagiarism as an offense that can stand
independently of copyright infringement allows a
recognition that acts of plagiarism are subject to reproof
irrespective of whether the work is copyrighted or not.
o Plagiarism is not necessarily copyright infringement, nor is
copyright infringement necessarily plagiarism. The two
concepts diverge with respect to three main aspects of the
offense: copying, attribution and intent. In some ways the
concept of plagiarism broader than infringement, in
that it can include the copying of ideas or of expression
not protected by copyright, that would not constitute
infringement and it can include copying of small amounts
of material that would be disregarded under copyright
law. In other ways the concept of infringement is
broader, in that it can include both properly attributed
copying and unintentional copying that would be excused
from being called plagiarism.
o The divergence between plagiarism’s popular definition
and copyright’s statutory framework suggests an essential
contradiction between what is at stake in plagiarism – the
creative process – and what is at stake in copyright
infringement – the creative result.
o Separately from these distinctions, the matter before the
Court is Justice del Castillo’s alleged plagiarism or failure
to make attributions as an ethical violation, not a
copyright violation under the Intellectual Property
Code. Given these distinctions, I see no reason to quibble
over the definition of plagiarism – a term that, in the
absence of any statutory limitation, the Court can define
and interpret for purposes of its administrative authority
over all courts and the personnel thereof.
55