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G.R. No. 108946 January 28, 1999 FRANCISCO G. JOAQUIN, JR.

, and BJ The copyright does not extend to the general concept or format of its dating
PRODUCTIONS, INC., petitioners,vs. HONORABLE FRANKLIN DRILON, game show. Accordingly, by the very nature of the subject of petitioner BJPI's
GABRIEL ZOSA, WILLIAM ESPOSO, FELIPEMEDINA, JR., and CASEY copyright, the investigating prosecutor should have the opportunity to compare
FRANCISCO, respondents. the videotapes of the two shows. Mere description by words of the general format
Facts: Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of of the two dating game shows is insufficient; the presentation of the master
Certificate of Copyright No. M922, dated January 28, 1971, of Rhoda and Me, a videotape in evidence was indispensable to the determination of the existence of
dating game show aired from 1970 to 1977. On June 28, 1973, petitioner BJPI probable cause. As aptly observed by respondent Secretary of Justice: A
submitted to the National Library an addendum to its certificate of copyright television show includes more than mere words can describe because it involves
specifying the show's format and style of presentation. a whole spectrum of visuals and effects, video and audio, such that no similarity
On July 14, 1991, while watching television, petitioner Francisco Joaquin, or dissimilarity may be found by merely describing the general copyright/format of
Jr., president of BJPI, saw on RPN Channel 9 an episode of It's a Date, which was both dating game shows.
produced by IXL Productions, Inc. (IXL). On July 18, 1991, he wrote a letter to The format or mechanics of a television show is not included in the list of
private respondent Gabriel M. Zosa, president and general manager of IXL, protected works in 2 of P.D. No. 49(172 of R.A. No. 8293). For this reason, the
informing Zosa that BJPI had a copyright to Rhoda and Me and demanding that protection afforded by the law cannot be extended to cover them. Copyright, in
IXL discontinue airing It's a Date. the strict sense of the term, is purely a statutory right. It is a new or independent
In a letter, dated July 19, 1991, private respondent Zosa apologized to right granted by the statute, and not simply a pre-existing right regulated by the
petitioner Joaquin and requested a meeting to discuss a possible settlement. IXL, statute. Being a statutory grant, the rights are only such as the statute confers,
however, continued airing It's a Date, prompting petitioner Joaquin to send a and may be obtained and enjoyed only with respect to the subjects and by the
second letter on July 25, 1991 in which he reiterated his demand and warned that, persons and on terms and conditions specified in the statute. Since copyright in
if IXL did not comply, he would endorse the matter to his attorneys for proper legal published works is purely a statutory creation, a copyright may be obtained only
action. Meanwhile, private respondent Zosa sought to register IXL's copyright to for a work falling within the statutory enumeration or description. Regardless of
the first episode of It's a Date for which it was issued by the National Library a the historical viewpoint, it is authoritatively settled in the United States that there
certificate of copyright August 14, 1991. is no copyright except that which is both created and secured by act of Congress.
Upon complaint of petitioners, an information for violation of P.D. No. 49 P.D. No. 49, 2, in enumerating what are subject to copyright, refers to
was filed against private respondent Zosa together with certain officers of RPN finished works and not to concepts. Thus, the new INTELLECTUAL PROPERTY
Channel 9, namely, William Esposo, Felipe Medina, and Casey Francisco, in the CODE OF THE PHILIPPINES provides:
RTC of Quezon City. However, private respondent Zosa sought a review of the Sec. 175. Unprotected Subject Matter. Notwithstanding the
resolution of the Assistant City Prosecutor before the Department of Justice. provisions of Sections 172 and 173, no protection shall extend, under this
On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon law, to any idea, procedure, system, method or operation, concept,
reversed the Assistant City Prosecutor's findings and directed him to move for the principle, discovery or mere data as such, even if they are expressed,
dismissal of the case against private respondents. Petitioner Joaquin filed a explained, illustrated or embodied in a work; news of the day and other
motion for reconsideration, but his motion denied by respondent Secretary of miscellaneous facts having the character of mere items of press
Justice on December 3, 1992. Hence, this petition. information; or any official text of a legislative, administrative or legal
Issue: Whether or not respondents are guilty of copyright infringement nature, as well as any official translation thereof.
Ruling: No, for lack of probable cause. Petitioners assert that the BJPI's copyright covers audio-visual recordings of each episode of Rhoda
presentation of a point-by-point comparison of the formats of the two shows clearly and Me, Cinematographic works and works produced by a process analogous to
demonstrates the nexus between the shows and hence establishes the existence cinematography or any process for making audio-visual recordings.
of probable cause for copyright infringement. Such being the case, they did not Petitioners contend, that the determination of the question whether the
have to produce the master tape. They are mistaken. format or mechanics of a show is entitled to copyright protection is for the court,

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and not the Secretary of Justice, to make. They assail the following portion of the The copyright registrations were issued in violation of the
resolution of the respondent Secretary of Justice: Intellectual Property Code on the ground that:
[T]he essence of copyright infringement is the copying, in whole or a) the subject matter of the registrations are not artistic or literary;
in part, of copyrightable materials as defined and enumerated in Section 2 b) the subject matter of the registrations are spare parts of
of PD. No. 49. Apart from the manner in which it is actually expressed, automobiles meaning there (sic) are original parts that they are designed
however, the idea of a dating game show is, in the opinion of this Office, a to replace. Hence, they are not original. They aver that the models are not
non-copyrightable material. Ideas, concepts, formats, or schemes in their original, and as such are the proper subject of a patent, not copyright.
abstract form clearly do not fall within the class of works or materials On January 3, 2002, the trial court issued an Order granting the motion,
susceptible of copyright registration as provided in PD. No. 49. (Emphasis and quashed the search warrant on its finding that there was no probable cause
added.) for its issuance. His motion for reconsideration of the order having been denied
It is indeed true that the question whether the format or mechanics of by the trial courts Order of February 14, 2002, the petitioner filed a petition for
petitioners television show is entitled to copyright protection is a legal question for certiorari in the CA which subsequently dismissed it.
the court to make. This does not, however, preclude respondent Secretary of Issue: Whether or not petitioners model is an artistic work subject to
Justice from making a preliminary determination of this question in resolving copyright protection.
whether there is probable cause for filing the case in court. In doing so in this case, Whether or not petitioner is entitled to copyright protection because
he did not commit any grave error. the certificates of registration are prima facie evidence of its validity.
Ruling: No and no; however a copyright certificate is in fact prima facie
G.R. No. 161295 June 29, 2005 JESSIE G. CHING, petitioner, vs. WILLIAM evidence of originality which is one element of copyright validity. It constitutes
M. SALINAS, SR., WILLIAM M. SALINAS, JR., JOSEPHINE L. SALINAS, prima facie evidence of both validity and ownership and the validity of the facts
JENNIFER Y. SALINAS, ALONTO SOLAIMAN SALLE, JOHN ERIC I. stated in the certificate. The presumption of validity to a certificate of copyright
SALINAS, NOEL M. YABUT (Board of Directors and Officers of WILAWARE registration merely orders the burden of proof. The applicant should not ordinarily
PRODUCT CORPORATION), respondents. be forced, in the first instance, to prove all the multiple facts that underline the
Facts: Jessie G. Ching is the owner and general manager of Jeshicris validity of the copyright unless the respondent, effectively challenging them, shifts
Manufacturing Co., the maker and manufacturer of a Utility Model, described as the burden of doing so to the applicant.
"Leaf Spring Eye Bushing for Automobile" made up of plastic. On September 4, It is worthy to state that the works protected under the Law on Copyright
2001, Ching and Joseph Yu were issued by the National Library Certificates of are: literary or artistic works (Sec. 172) and derivative works (Sec. 173). The Leaf
Copyright Registration and Deposit of the said work described therein as "Leaf Spring Eye Bushing and Vehicle Bearing Cushion falls on neither classification.
Spring Eye Bushing for Automobile." Accordingly, if, in the first place, the item subject of the petition is not entitled to
On September 20, 2001, Ching requested the National Bureau of be protected by the law on copyright, how can there be any violation?
Investigation (NBI) for police/investigative assistance for the apprehension and Ownership of copyrighted material is shown by proof of originality and
prosecution of illegal manufacturers, producers and/or distributors of the works. copyrightability. By originality is meant that the material was not copied, and
After due investigation, the NBI filed applications for search warrants in the evidences at least minimal creativity; that it was independently created by the
RTC of Manila against William Salinas, Sr. and the officers and members of the author and that it possesses at least same minimal degree of creativity. Copying
Board of Directors of Wilaware Product Corporation. It was alleged that the is shown by proof of access to copyrighted material and substantial similarity
respondents therein reproduced and distributed the said models penalized under between the two works. The applicant must thus demonstrate the existence and
Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293. The RTC granted the the validity of his copyright because in the absence of copyright protection, even
application and issued the search warrants which were subsequently executed. original creation may be freely copied.
The respondents filed a motion to quash the search warrants on the SEC. 172. Literary and Artistic Works. 172.1. Literary and artistic
following grounds: works, hereinafter referred to as "works," are original intellectual creations in the

Alan Vincent S. Fontanosa II 2


literary and artistic domain protected from the moment of their creation and shall artistic works" in Section 172.1(a) of R.A. No. 8293. Applying the principle of
include in particular: ... ejusdem generis the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are
(h) Original ornamental designs or models for articles of not copyrightable, being not of the same kind and nature as the works enumerated.
manufacture, whether or not registrable as an industrial design, and other That the works of the petitioner may be the proper subject of a patent does not
works of applied art. entitle him to the issuance of a search warrant for violation of copyright laws.
Related to the provision is Section 171.10, which provides that a "work of The RTC is mandated under the Constitution and Rules of Criminal
applied art" is an artistic creation with utilitarian functions or incorporated in a Procedure to determine probable cause. The court cannot abdicate its
useful article, whether made by hand or produced on an industrial scale. But, as constitutional obligation by refusing to determine whether an offense has been
gleaned from the specifications appended to the application for a copyright committed. The absence of probable cause will cause the outright nullification of
certificate filed by the petitioner, the said Leaf Spring Eye Bushing for Automobile the search warrant. For the RTC to determine whether the crime for infringement
is merely a utility model described as comprising xxx. Likewise, the Vehicle under R.A. No. 8293 as alleged in an application is committed, the petitioner-
Bearing Cushion is illustrated as a bearing cushion comprising xxx. Plainly, these applicant was burdened to prove that (a) respondents Jessie Ching and Joseph
are not literary or artistic works. They are not intellectual creations in the literary Yu were the owners of copyrighted material; and (b) the copyrighted material was
and artistic domain, or works of applied art. They are certainly not ornamental being copied and distributed by the respondents. Thus, the ownership of a valid
designs or one having decorative quality or value. copyright is essential.
It bears stressing that 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 G.R. No. 76193 November 9, 1989 UNITED FEATURE SYNDICATE, INC.,
of art. As gleaned from the description of the models and their objectives, these petitioner, vs. MUNSINGWEAR CREATION MANUFACTURING COMPANY,
articles are useful articles which are defined as one having an intrinsic utilitarian respondent.
function that is not merely to portray the appearance of the article or to convey Facts: This case arose from petition filed by petitioner for the cancellation
information. Useful articles and works of industrial design are not copyrightable. of the registration of trademark CHARLIE BROWN in the name of respondent
A useful article may be copyrightable only if and only to the extent that such design MUNSINGWEAR in Inter Partes Case No. 1350 entitled xxx with the Philippine
incorporates pictorial, graphic, or sculptural features that can be identified Patent Office alleging that petitioner is damaged by the registration of the
separately from, and are capable of existing independently of the utilitarian trademark CHARLIE BROWN of T-Shirts in the name of Munsingwear Creation
aspects of the article. There is no copyright protection for works of applied art or Manufacturing Co., Inc., on the following grounds:
industrial design which have aesthetic or artistic features that cannot be identified (1) that respondent was not entitled to the registration of the mark
separately from the utilitarian aspects of the article. CHARLIE BROWN, & DEVICE at the time of application for registration;
A utility model is a technical solution to a problem in any field of human (2) that CHARLIE BROWN is a character creation or a pictorial illustration,
activity which is new and industrially applicable. It may be, or may relate to, a the copyright to which is exclusively owned worldwide by the petitioner;
product, or process, or an improvement of any of the aforesaid. Essentially, a (3) that as the owner of the pictorial illustration CHARLIE BROWN,
utility model refers to an invention in the mechanical field. This is the reason why petitioner has since 1950 and continuously up to the present, used and
its object is sometimes described as a device or useful object. A utility model reproduced the same to the exclusion of others;
varies from an invention on at least three aspects: first, the requisite of "inventive (4) that the respondent-registrant has no bona fide use of the trademark in
step" in a patent for invention is not required; second, the maximum term of commerce in the Philippines prior to its application for registration.
protection is only seven years compared to a patent which is twenty years, both On October 2, 1984 the Director of the Philippine Patent Office rendered
reckoned from the date of the application; and third, the provisions on utility model a decision in this case holding that a copyright registration like that of the name
dispense with its substantive examination and prefer for a less complicated and likeness of CHARLIE BROWN may not provide a cause of action for the
system. cancellation of a trademark registration. Petitioner filed a motion for
Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing reconsideration of the decision rendered by the Philippine Patent Office which was
Cushion as included in the catch-all phrase "other literary, scholarly, scientific and denied by the Director of said office.
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From this decision, petitioner-appellant appealed to the Court of Appeals Industrial Property to which the Philippines and (France) U.S. are parties.
and respondent court in its resolution dated September 16, 1986 denied the We are simply interpreting a solemn international commitment of the
appeal. While the Motion for Reconsideration was filed on time, that is, on the last Philippines embodied in a multilateral treaty to which we are a party and
day within which to appeal, still it is a mere scrap of paper because there was no, which we entered into because it is in our national interest to do so.
date, of hearing stated therein. Subsequently, petitioner-appellant filed a motion
for reconsideration which public respondent denied for lack of merit. Hence this FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE SERVICE CO., 499 U.S.
petition for review on certiorari. 340 (1991)
Issue: Whether or not a copyrighted character may be appropriated as a Facts: Rural Telephone Service Company is a certified public utility that
trademark by another under PD No. 49. provides telephone service to several communities in northwest Kansas. It is
Ruling: No. Petitioner contends that it will be damaged by the registration subject to a state regulation that requires all telephone companies operating in
of the trademark CHARLIE BROWN & DEVICE in favor of private respondent and Kansas to issue annually an updated telephone directory. Accordingly, as a
that it has a better right to CHARLIE BROWN & DEVICE since the likeness of condition of its monopoly franchise, Rural publishes a typical telephone directory,
CHARLIE BROWN appeared in periodicals having worldwide distribution and consisting of white pages and yellow pages. Rural distributes its directory free of
covered by copyright registration in its name which antedates the certificate of charge to its subscribers, but earns revenue by selling yellow pages
registration of respondent issued only on September 12, 1979. advertisements.
Pertinently, Section 2 of Presidential Decree No. 49, otherwise known as Feist Publications, Inc., is a publishing company that specializes in area-
the "Decree on Intellectual Property", provides: wide telephone directories which cover a much larger geographical range,
Section 2. The rights granted by this Decree shall, from the reducing the need to call directory assistance or consult multiple directories. Like
moment of creation, subsist with respect to any of the following classes of Rural's directory, Feist's is distributed free of charge and includes both white
works: pages and yellow pages. Feist and Rural compete vigorously for yellow pages
xxx xxx xxx advertising.
(O) Prints, pictorial illustrations, advertising copies, labels, tags and To obtain white pages listings for its area-wide directory, Feist approached
box wraps. ... each of the 11 telephone companies operating in northwest Kansas and offered
Therefore, since the name "CHARLIE BROWN" and its pictorial to pay for the right to use its white pages listings. Of the 11 telephone companies,
representation were covered by a copyright registration way back in 1950 the only Rural refused to license its listings to Feist. Rural's refusal created a problem
same are entitled to protection under PD No. 49. for Feist, as omitting these listings would have left a gaping hole in its area-wide
Aside from its copyright registration, petitioner is also the owner of several directory, rendering it less attractive to potential yellow pages advertisers. In a
trademark registrations and application for the name and likeness of "CHARLIE decision subsequent to that which we review here, the District Court determined
BROWN" which is the duly registered trademark and copyright of petitioner United that this was precisely the reason Rural refused to license its listings. The refusal
Feature Syndicate Inc. as early as 1957 and additionally also as TV SPECIALS was motivated by an unlawful purpose "to extend its monopoly in telephone
featuring the "PEANUTS" characters "CHARLIE BROWN." It is undeniable from service to a monopoly in yellow pages advertising."
the records that petitioner is the actual owner of said trademark due to its prior Unable to license Rural's white pages listings, Feist used them without
registration with the Patent's Office. Rural's consent. Feist began by removing several thousand listings that fell
Finally, in La Chemise Lacoste S.A. v. Hon. Oscar Fernandez & outside the geographic range of its area-wide directory, then hired personnel to
Gobindram Hemandas Sujanani v. Hon. Roberto V. Ongpin, et al. 129 SCRA 373 investigate the 4,935 that remained.
[1984]), the Court declared. Rural sued for copyright infringement in the District Court for the District of
In upholding the right of the petitioner to maintain the present suit Kansas taking the position that Feist, in compiling its own directory, could not use
before our courts for unfair competition or infringement of trademarks of a the information contained in Rural's white pages. Rural asserted that Feist's
foreign corporation, we are moreover recognizing our duties and the rights employees were obliged to travel door-to-door or conduct a telephone survey to
of foregoing states under the Paris Convention for the Protection of discover the same information for themselves. Feist responded that such efforts
Alan Vincent S. Fontanosa II 4
were economically impractical and, in any event, unnecessary because the This protection is subject to an important limitation. The mere fact that a
information copied was beyond the scope of copyright protection. work is copyrighted does not mean that every element of the work may be
Issue: Whether or not a white page listing in alphabetical order is protected. Originality remains the sine qua non of copyright; accordingly, copyright
copyrightable. protection may extend only to those components of a work that are original to the
Ruling: No. This case concerns the interaction of two well-established author.
propositions. The first is that facts are not copyrightable; the other, that This inevitably means that the copyright in a factual compilation is thin.
compilations of facts generally are. That there can be no valid copyright in facts is Notwithstanding a valid copyright, a subsequent compiler remains free to use the
universally understood. The most fundamental axiom of copyright law is that "no facts contained in an another's publication to aid in preparing a competing work,
author may copyright his ideas or the facts he narrates." There is an undeniable so long as the competing work does not feature the same selection and
tension between these two propositions. Many compilations consist of nothing but arrangement. It may seem unfair that much of the fruit of the compiler's labor may
raw data -- i. e., wholly factual information not accompanied by any original written be used by others without compensation but the primary objective of copyright is
expression. On what basis may one claim a copyright in such a work? not to reward the labor of authors, but "to promote the Progress of Science and
The key to resolving the tension lies in understanding why facts are not useful Arts."
copyrightable. The sine qua non of copyright is originality. To qualify for copyright To this end, copyright assures authors the right to their original expression,
protection, a work must be original to the author. Original, as the term is used in but encourages others to build freely upon the ideas and information conveyed by
copyright, means only that the work was independently created by the author (as a work. This principle, known as the idea-expression or fact-expression dichotomy,
opposed to copied from other works), and that it possesses at least some minimal applies to all works of authorship. As applied to a factual compilation, assuming
degree of creativity, "no matter how crude, humble or obvious." Originality does the absence of original written expression, only the compiler's selection and
not signify novelty; a work may be original even though it closely resembles other arrangement may be protected; the raw facts may be copied at will. This result is
works so long as the similarity is fortuitous, not the result of copying. neither unfair nor unfortunate. It is the means by which copyright advances the
The Court defined "author," in a constitutional sense, to mean "he to whom progress of science and art.
anything owes its origin; originator; maker." It described copyright as being limited This, then, resolves the doctrinal tension: Copyright treats facts and factual
to "original intellectual conceptions of the author," ibid., and stressed the compilations in a wholly consistent manner. Facts, whether alone or as part of a
importance of requiring an author who accuses another of infringement to prove compilation, are not original and therefore may not be copyrighted. A factual
"the existence of those facts of originality, of intellectual production, of thought, compilation is eligible for copyright if it features an original selection or
and conception." arrangement of facts, but the copyright is limited to the particular selection or
It is this bedrock principle of copyright that mandates the law's seemingly arrangement. In no event may copyright extend to the facts themselves.
disparate treatment of facts and factual compilations. "No one may claim There is no doubt that Feist took from the white pages of Rural's directory
originality as to facts." This is because facts do not owe their origin to an act of a substantial amount of factual information. At a minimum, Feist copied the names,
authorship. The distinction is one between creation and discovery: the first person towns, and telephone numbers of 1,309 of Rural's subscribers. Not all copying,
to find and report a particular fact has not created the fact; he or she has merely however, is copyright infringement. To establish infringement, two elements must
discovered its existence. To borrow from Burrow-Giles, one who discovers a fact be proven: (1) ownership of a valid copyright, and (2) copying of constituent
is not its "maker" or "originator." "The discoverer merely finds and records." elements of the work that are original. The first element is not at issue here; Feist
Factual compilations, on the other hand, may possess the requisite appears to concede that Rural's directory, considered as a whole, is subject to a
originality. The compilation author typically chooses which facts to include, in what valid copyright because it contains some foreword text, as well as original material
order to place them, and how to arrange the collected data so that they may be in its yellow pages advertisements. The question is whether Rural has proved the
used effectively by readers. These choices as to selection and arrangement, so second element. In other words, did Feist, by taking 1,309 names, towns, and
long as they are made independently by the compiler and entail a minimal degree telephone numbers from Rural's white pages, copy anything that was original to
of creativity, are sufficiently original that Congress may protect such compilations Rural? Certainly, the raw data does not satisfy the originality requirement. Rural
through the copyright laws. may have been the first to discover and report the names, towns, and telephone
Alan Vincent S. Fontanosa II 5
numbers of its subscribers, but this data does not 'owe its origin' to Rural. Rather, 8293. Moreover, MANLYs certificates of registrations were issued only in 2002,
these bits of information are uncopyrightable facts; they existed before Rural whereas there were certificates of registrations for the same sports articles which
reported them and would have continued to exist if Rural had never published a were issued earlier than MANLYs, thus further negating the claim that its
telephone directory. copyrighted products were original creations.
The question that remains is whether Rural selected, coordinated, or On August 11, 2003, the trial court denied MANLYs motion for
arranged these uncopyrightable facts in an original way. The selection, reconsideration. Hence it filed a petition for certiorari before the Court of Appeals
coordination, and arrangement of Rural's white pages do not satisfy the minimum which was denied for lack of merit. The appellate court found that the trial court
constitutional standards for copyright protection. As mentioned at the outset, correctly granted the motion to quash and that its ruling in the ancillary proceeding
Rural's white pages are entirely typical. Persons desiring telephone service in did not preempt the findings of the intellectual property court as it did not resolve
Rural's service area fill out an application and Rural issues them a telephone with finality the status or character of the seized items. After denial of its motion
number. In preparing its white pages, Rural simply takes the data provided by its for reconsideration on September 15, 2004, MANLY filed the instant petition for
subscribers and lists it alphabetically by surname. The end product is a garden- review on certiorari.
variety white pages directory, devoid of even the slightest trace of creativity. Rural Issue: Whether or not copyright certificates constitute conclusive evidence
expended sufficient effort to make the white pages directory useful, but insufficient of the validity and ownership of a copyright.
creativity to make it original. Ruling: No. The copyright certificates issued in favor of MANLY constitute
Nor can Rural claim originality in its coordination and arrangement of facts. merely prima facie evidence of validity and ownership. However, no presumption
The white pages do nothing more than list Rural's subscribers in alphabetical of validity is created where other evidence exist that may cast doubt on the
order. This arrangement may, technically speaking, owe its origin to Rural; no one copyright validity. Hence, where there is sufficient proof that the copyrighted
disputes that Rural undertook the task of alphabetizing the names itself. But there products are not original creations but are readily available in the market under
is nothing remotely creative about arranging names alphabetically in a white various brands, as in this case, validity and originality will not be presumed and
pages directory. the trial court may properly quash the issued warrant for lack of probable cause.
Besides, no copyright accrues in favor of MANLY despite issuance of the
G.R. No. 165306 September 20, 2005 MANLY SPORTWEAR certificates of registration and deposit pursuant to Section 2, Rule 7 of the
MANUFACTURING, INC., Petitioners, vs. DADODETTE ENTERPRISES Copyrights Safeguards and Regulations which states:
AND/OR HERMES SPORTS CENTER, Respondent. Sec. 2 Effects of Registration and Deposit of Work. The registration
Facts: On March 14, 2003, a police investigator applied for a search and deposit of the work is purely for recording the date of registration and
warrant before the RTC, based on the information that Respondents were in deposit of the work and shall not be conclusive as to copyright ownership
possession of goods, the copyright of which belonged to Petitioner MANLY. After or the term of the copyrights or the rights of the copyright owner, including
finding reasonable grounds that a violation of Sections 172 and 217 of Republic neighboring rights.
Act (RA) No. 82936 has been committed, the warrants were issued. At most, the certificates of registration and deposit issued by the National
Respondents thereafter moved to quash and annul the search warrant Library and the Supreme Court Library serve merely as a notice of recording and
contending that the same is invalid since the requisites for its issuance have not registration of the work but do not confer any right or title upon the registered
been complied with. They insisted that the sporting goods manufactured by and/or copyright owner or automatically put his work under the protective mantle of the
registered in the name of MANLY are ordinary and common hence, not among copyright law. It is not a conclusive proof of copyright ownership. As it is, non-
the classes of work protected under Section 172 of RA 8293. registration and deposit of the work within the prescribed period only makes the
On June 10, 2003, the trial court granted the motion to quash and declared copyright owner liable to pay a fine.
the Search Warrant null and void based on its finding that the copyrighted
products of MANLY do not appear to be original creations and were being
manufactured and distributed by different companies locally and abroad under
various brands, and therefore unqualified for protection under Section 172 of RA
Alan Vincent S. Fontanosa II 6
G.R. No. 130360 August 15, 2001 WILSON ONG CHING KlAN CHUAN, for the issuance of a TRO and/or writ of preliminary injunction. Ong filed an
petitioner, vs. HON. COURT OF APPEALS and LORENZO TAN, opposition to Tan's prayer for an issuance of TRO and/or writ of preliminary
respondents. injunction on the ground that the trial court did not commit a grave abuse of
Facts: Petitioner Wilson Ong Ching Kian Chuan ("Ong"), imports discretion in issuing the writ in his favor. The CA set aside the order of the RTC
vermicelli from China National Cereals Oils and Foodstuffs Import and Export Issue: Whether or not petitioner has a clear and unmistakable right that
Corporation, based in Beijing, China, under the firm name C.K.C. Trading. He must be protected against infringement.
repacks it in cellophane wrappers with a design of two-dragons and the TOWER Ruling: No. Petitioner avers that the CA erred in issuing a preliminary
trademark on the uppermost portion. Ong acquired a Certificate of Copyright injunction in private respondent's favor. He says, firstly, that he is more entitled to
Registration from the National Library on June 9, 1993 on the said design. Ong it. He states that as holder of the Certificate of Copyright Registration of the twin-
discovered that private respondent Lorenzo Tan repacked his vermicelli he dragon design, he has the protection of P.D. No. 49 which allows an injunction in
imports from the same company in a "nearly" identical wrapper. case of infringement. Petitioner asserts that private respondent has no registered
On September 16, 1993, Ong filed against Tan a verified complaint for copyright and merely relies on the trademark of his principal abroad, which insofar
infringement of copyright with damages and prayer for temporary restraining order as Philippine laws is concerned, cannot prevail over petitioner's copyright.
or writ of preliminary injunction with the Regional Trial Court in Quezon City. Ong Private respondent, for his part, avers that petitioner has no "clear right"
alleged that he was the holder of a Certificate of Copyright Registration over the over the use of the copyrighted wrapper since the PAGODA trademark and label
cellophane wrapper with the two-dragon design, and that Tan used an identical were first adopted and used and have been duly registered by Ceroilfood
wrapper in his business. In his prayer for a preliminary injunction in addition to Shandong not only in China but in nearly 20 countries and regions worldwide.
damages, he asked that Tan be restrained from using the wrapper. He said he Petitioner was not the original creator of the label, but merely copied the design
would post a bond to guarantee the payment of damages resulting from the of Ceroilfood Shandong. Private respondent presented copies of the certificates
issuance of the writ of preliminary injunction. The trial court issued a temporary of copyright registration in the name of Ceroilfood Shandong issued by at least
restraining order on the same date the complaint was filed. twenty countries and regions worldwide which although unauthenticated are,
Tan filed an opposition to Ong's application for a writ of preliminary according to him, sufficient to provide a sampling of the evidence needed in the
injunction with counter-application for the issuance of a similar writ against Ong. determination of the grant of preliminary injunction. Private respondent alleges,
Tan alleged that Ong was not entitled to an injunction. According to Tan, Ong did that the trademark PAGODA BRAND was registered in China on October 31,
not have a clear right over the use of the trademark Pagoda and Lungkow 197912 while the trademark LUNGKOW VERMICELLI WITH TWO-DRAGON
vermicelli as these were registered in the name of CHINA NATIONAL CEREALS DEVICE was registered on August 15, 1985.
OIL AND FOODSTUFFS IMPORT AND EXPORT CORPORATION, SHANDONG To resolve this controversy, we have to return to basics. A person to be
CEREALS AND OILS BRANCH (hereafter Ceroilfood Shandong), based in entitled to a copyright must be the original creator of the work. He must have
Qingdao, China. Further, Tan averred that he was the exclusive distributor in the created it by his own skill, labor and judgment without directly copying or evasively
Philippines of the Pagoda and Lungkow vermicelli and was solely authorized to imitating the work of another. The grant of preliminary injunction in a case rests
use said trademark. He added that Ong merely copied the two-dragon design from on the sound discretion of the court with the caveat that it should be made with
Ceroilfood Shandong which had the Certificates of Registration issued by different extreme caution. Its grant depends chiefly on the extent of doubt on the validity of
countries. He concluded that Ong's Certificate of Copyright Registration was not the copyright, existence of infringement, and the damages sustained by such
valid for lack of originality. infringement. In our view, the copies of the certificates of copyright registered in
On September 30, 1993, Ong countered Tan's opposition to the issuance the name of Ceroilfood Shandong sufficiently raise reasonable doubt.
of the writ of preliminary injunction. On October 13, 1993, the could issued the writ To be entitled to an injunctive writ, petitioner must show, inter alia, the
in Ong's favor upon his filing of a P100,000.00 bond. Tan filed a motion to dissolve existence of a clear and unmistakable right and an urgent and paramount
the writ of preliminary injunction, but the trial court denied it on December 15, 1993. necessity for the writ to prevent serious damage. From the above discussion, we
The motion for reconsideration was also denied on March 1, 1994. Tan elevated find that petitioner's right has not been clearly and unmistakably demonstrated.
the case to the Court of Appeals via a special civil action for certiorari with a prayer That right is what is in dispute and has yet to be determined. In the absence of
Alan Vincent S. Fontanosa II 7
proof of a legal right and the injury sustained by the plaintiff, an order of the trial be the aggrieved party, and not the appellant. In the second place, if there was
court granting the issuance of an injunctive writ will be set aside, for having been such a limited publication or prohibition, the same was not shown on the face of
issued with grave abuse of discretion. Conformably, there was no abuse of the design. When the purpose is a limited publication, but the effect is general
discretion by the Court of Appeals when it issued its own order to restrain the publication, irrevocable rights thereupon become vested in the public, in
enforcement of the preliminary injunction issued by the trial court. consequence of which enforcement of the restriction becomes impossible.
It has been held that the effect of offering for sale a dress, for example
G.R. No. L-19439 October 31, 1964 MAURO MALANG SANTOS, plaintiff- manufactured in accordance with an original design which is not protected by
appellant, vs. MCCULLOUGH PRINTING COMPANY, defendant-appellee. either a copyright or a patent, is to divest the owner of his common law rights
Facts: therein by virtue of the publication of a 'copy' and thereafter anyone is free to copy
This is an action for damages based on the provisions of Articles 721 and the design or the dress. When Ambassador Neri distributed 800 copies of the
722 of the Civil Code of the Philippines, allegedly on the unauthorized use, design in controversy, the plaintiff lost control of his design and the necessary
adoption and appropriation by the defendant company of plaintiff's intellectual implication was that there had been a general publication, there having been no
creation or artistic design for a Christmas Card. The design depicts "a Philippine showing of a clear indication that a limited publication was intended. The author
rural Christmas time scene consisting of a woman and a child in a nipa hut of a literary composition has a light to the first publication thereof. He has a right
adorned with a star-shaped lantern and a man astride a carabao, beside a tree, to determine whether it shall be published at all, and if published, when, where,
underneath which appears the plaintiff's pen name, Malang." by whom, and in what form. This exclusive right is confined to the first publication.
The complaint alleges that plaintiff Mauro Malang Santos designed for When once published, it is dedicated to the public, and the author loses the
former Ambassador Felino Neri, for his personal Christmas Card greetings for the exclusive right to control subsequent publication by others, unless the work is
year 1959, the artistic motif in question. The following year the defendant placed under the protection of the copyright law.
McCullough Printing Company, without the knowledge and authority of plaintiff,
displayed the very design in its album of Christmas cards and offered it for sale, Brandir International, Inc. v. Cascade Pacific Lumber Co Brief
for a price. For such unauthorized act of defendant, plaintiff suffered moral Fact: Brandir International, Inc. (Plaintiff) sold a wire sculpture as a bicycle
damages to the tune of P16,000.00, because it has placed plaintiff's professional rack that by was deemed not to be copyrightable because it was an industrial
integrity and ethics under serious question and caused him grave embarrassment design not subject to copyright protection. Synopsis of Rule of Law.
before Ambassador Neri. He further prayed for the additional sum of P3,000.00 Copyrightability ultimately depends on the extent to which the work reflects artistic
by way of attorney's fee. expression not restricted by functional considerations. Facts. After seeing
Issue: Whether or not publication divests the author of an unregistered undulating wire sculptures, a friend suggested to the artist, the chief owner of
copyright of his right to control subsequent publications. Brandir International, Inc. (Brandir) (Plaintiff), that the sculptures would make
Ruling: Yes. We find that plaintiff is not entitled to a protection, the excellent bicycle racks. Plaintiff then started to manufacture and sell bike racks
provision of the Civil Code, notwithstanding. The Rules of Practice in the derived in part from one or more of the works of art. When Plaintiff discovered that
Philippines Patent Office relating to the Registration of Copyright Claims" Cascade Pacific Lumber (Defendant) was selling a similar product, it included a
promulgated pursuant to Republic Act 165, provides, among others, that an copyright notice with its products and applied to the Copyright Office for
intellectual creation should be copyrighted thirty (30) days after its publication, if registration. The Copyright Office denied the applications for registration as the
made in Manila, or within sixty (60) day's if made elsewhere, failure of which bicycle racks did not include any element that was capable of independent
renders such creation public property. existence as a copyrightability, and the district court granted summary judgment
In the case at bar, even as of this moment, there is no copyright for the on the copyright claim. Plaintiff appealed.
design in question. We are not also prepared to accept the contention of appellant Issue: Whether or not copyrightability ultimately depend on the extent to
that the publication of the design was a limited one, or that there was an which the work reflects artistic expression, not be restricted by functional
understanding that only Ambassador Neri should, have absolute right to use the considerations?
same. In the first place, if such were the condition then Ambassador Neri would
Alan Vincent S. Fontanosa II 8
Ruling: Yes. Copyrightability ultimately should depend on the extent to action. The district court ruled that the Lotus menu command hierarchy was
which the work reflects artistic expression not restricted by functional copyrightable expression because [a] very satisfactory spreadsheet menu tree
considerations. If design elements reflect a merger of aesthetic and functional can be constructed using different commands and a different command structure
considerations, the artistic aspects of a work cannot be said to be conceptually from those of Lotus 1-2-3. In fact, Borland has constructed just such an alternate
separable from the utilitarian elements. The final form of the bicycle rack sold by tree for use in Quattro Pro's native mode. Even if one holds the arrangement of
Brandir (Plaintiff) is basically a product of industrial design. Form and function are menu commands constant, it is possible to generate literally millions of
inextricably intertwined in the rack, its ultimate design being as much the result of satisfactory menu trees by varying the menu commands employed.
utilitarian pressures as aesthetic choices. The original aesthetic elements have Immediately following the district court's summary judgment decision,
clearly been adapted to accommodate and further a utilitarian purpose. Affirmed. Borland removed the Lotus Emulation Interface from its products. Nonetheless,
Borland's programs continued to be partially compatible with Lotus 1-2-3, for
LOTUS DEVELOPMENT CORPORATION, Plaintiff, Appellee, v. BORLAND Borland retained what it called the "Key Reader" in its Quattro Pro programs. Once
INTERNATIONAL, INC., Defendant, Appellant. No. 93-2214 turned on, the Key Reader allowed Borland's programs to understand and perform
Facts: Lotus 1-2-3 is a spreadsheet program that enables users to perform some Lotus 1-2-3 macros. Accordingly, people who wrote or purchased macros
accounting functions electronically on a computer. Lotus 1-2-3, like many to shorten the time needed to perform an operation in Lotus 1-2-3 could still use
computer programs, allows users to write what are called "macros." With a macro, those macros in Borland's programs. The district court permitted Lotus to file a
a user can designate a series of command choices with a single macro keystroke. supplemental complaint alleging that the Key Reader infringed its copyright.
In all, Lotus 1-2-3 has 469 commands arranged into more than 50 menus/sub-. On appeal, Borland does not dispute that it factually copied the words and
Borland released its first Quattro program to the public in 1987, after arrangement of the Lotus menu command hierarchy. Rather, Borland argues that
Borland's engineers had labored over its development for nearly three years. it "lawfully copied the unprotectable menus of Lotus 1-2-3." Borland contends that
Borland's objective was to develop a spreadsheet program far superior to existing the Lotus menu command hierarchy is not copyrightable because it is a system,
programs, including Lotus 1-2-3. method of operation, process, or procedure foreclosed from protection.
The district court found, and Borland does not now contest, that Borland Issue: Whether or not the Lotus menu command hierarchy a system,
included "a virtually identical copy of the entire 1-2-3 menu tree." In so doing, method of operation, process, or procedure foreclosed from copyright protection.
Borland did not copy any of Lotus's underlying computer code; it copied only the Ruling: Yes, it is not copyrightable. In this appeal, we are faced only with
words and structure of Lotus's menu command hierarchy. Borland included the whether the Lotus menu command hierarchy is copyrightable subject matter in the
Lotus menu command hierarchy in its programs to make them compatible with first instance, for Borland concedes that Lotus has a valid copyright in Lotus 1-2-
Lotus 1-2-3 so that spreadsheet users who were already familiar with Lotus 1-2-3 3 as a whole and admits to factually copying the Lotus menu command hierarchy.
would be able to switch to the Borland programs without having to learn new To establish copyright infringement, a plaintiff must prove "(1) ownership
commands or rewrite their Lotus macros. In effect, Borland allowed users to of a valid copyright, and (2) copying of constituent elements of the work that are
choose how they wanted to communicate with Borland's spreadsheet programs: original." In judicial proceedings, a certificate of copyright registration constitutes
either by using menu commands designed by Borland, or by using the commands prima facie evidence of copyrightability and shifts the burden to the defendant to
and command structure used in Lotus 1-2-3 augmented by Borland-added demonstrate why the copyright is not valid.
commands. To show actionable copying, a plaintiff must first prove that the alleged
Lotus filed this action against Borland four days after a district court held infringer copied plaintiff's copyrighted work as a factual matter; to do this, he or
that the Lotus 1-2-3 "menu structure, taken as a whole -- including the choice of she may either present direct evidence of factual copying or, if that is unavailable,
command terms [and] the structure and order of those terms," was protected evidence that the alleged infringer had access to the copyrighted work and that
expression covered by Lotus's copyrights. Three days earlier, Borland had filed a the offending and copyrighted works are so similar that the court may infer that
declaratory judgment action against Lotus in the Northern District of California, there was factual copying (i.e., probative similarity). The plaintiff must then prove
seeking a declaration of non-infringement. On September 10, 1990, the district that the copying of copyrighted material was so extensive that it rendered the
court in California dismissed Borland's declaratory judgment action in favor of this offending and copyrighted works substantially similar.
Alan Vincent S. Fontanosa II 9
The Second Circuit designed an Altai test to deal with the fact that terms to tell the computer what to do. Without the menu command hierarchy,
computer programs, copyrighted as "literary works," can be infringed by what is users would not be able to access and control, or indeed make use of, Lotus 1-2-
known as "nonliteral" copying, which is copying that is paraphrased or loosely 3's functional capabilities. In other words, to offer the same capabilities as Lotus
paraphrased rather than word for word. When faced with nonliteral-copying cases, 1-2-3, Borland did not have to copy Lotus's underlying code (and indeed it did not);
courts must determine whether similarities are due merely to the fact that the two to allow users to operate its programs in substantially the same way, however,
works share the same underlying idea or whether they instead indicate that the Borland had to copy the Lotus menu command hierarchy.
second author copied the first author's expression. Accepting the district court's finding that the Lotus developers made some
The Altai test involves three steps: abstraction, filtration, and comparison. expressive choices in choosing and arranging the Lotus command terms, we
The abstraction step requires courts to "dissect the allegedly copied program's nonetheless hold that that expression is not copyrightable because it is part of
structure and isolate each level of abstraction contained within it." This step Lotus 1-2-3's "method of operation." We do not think that "methods of operation"
enables courts to identify the appropriate framework within which to separate are limited to abstractions; rather, they are the means by which a user operates
protectable expression from unprotected ideas. Second, courts apply a "filtration" something. If specific words are essential to operating something, then they are
step in which they examine "the structural components at each level of abstraction part of a "method of operation" and, as such, are unprotectable. This is so whether
to determine whether their particular inclusion at that level was 'idea' or was they must be highlighted, typed in, or even spoken, as computer programs no
dictated by considerations of efficiency, so as to be necessarily incidental to that doubt will soon be controlled by spoken words.
idea; required by factors external to the program itself; or taken from the public Our holding that "methods of operation" are not limited to mere
domain." Id. Finally, courts compare the protected elements of the infringed work abstractions is bolstered by Baker v. Selden.
(i.e., those that survived the filtration screening) to the corresponding elements of In Baker, the Supreme Court explained that the teachings of
the allegedly infringing work to determine whether there was sufficient copying of science and the rules and methods of useful art have their final end in
protected material to constitute infringement. application and use; and this application and use are what the public derive
In the instant appeal, we are not confronted with alleged nonliteral copying from the publication of a book which teaches them. . . . The description of
of computer code. Rather, we are faced with Borland's deliberate, literal copying the art in a book, though entitled to the benefit of copyright, lays no
of the Lotus menu command hierarchy. Thus, we must determine not whether foundation for an exclusive claim to the art itself. The object of the one is
nonliteral copying occurred in some amorphous sense, but rather whether the explanation; the object of the other is use. The former may be secured by
literal copying of the Lotus menu command hierarchy constitutes copyright copyright. The latter can only be secured, if it can be secured at all, by
infringement. letters-patent.
Borland argues that the Lotus menu command hierarchy is
uncopyrightable because it is a system, method of operation, process, or Triad Systems vs. Southeastern Express Co USC, 8th Circuit
procedure foreclosed from copyright protection Section 102(b) states: "In no case Facts: Triad manufactures computers for use by automotive parts stores
does copyright protection for an original work of authorship extend to any idea, and designs, sells, and licenses unique software to run its computers.
procedure, process, system, method of operation, concept, principle, or discovery, Southeastern is what is known as an independent service organization (ISO)
regardless of the form in which it is described, explained, illustrated, or embodied that services Triad computers. Southeastern and Triad thus compete for the
in such work." Because we conclude that the Lotus menu command hierarchy is business of servicing and maintaining Triad computers. The crux of Triad's
a method of operation, we do not consider whether it could also be a system, complaint is that Southeastern has infringed on its software copyrights and
process, or procedure. We think that "method of operation" refers to the means continues to do so by performing maintenance on Triad computer systems for
by which a person operates something, whether it be a car, a food processor, or Triad's licensees.
a computer. In 1986, Triad began licensing rather than selling its software (Regime 2).
We hold that the Lotus menu command hierarchy is an uncopyrightable Under Regime 2 agreements, customers may not duplicate the software or allow
"method of operation." The Lotus menu command hierarchy provides the means it to be used by third parties. In 1991, Triad added a requirement that licensees
by which users control and operate Lotus 1-2-3. Users must use the command selling their computer systems pay Triad a license transfer fee (Regime 3). Thus,
Alan Vincent S. Fontanosa II 10
Southeastern's performance of service and maintenance on the computer words, neither creative nor transformative and does not provide the marketplace
systems of Regime 2 and 3 customers is at issue. At stake is the business of with new creative works. Southeastern is simply commandeering its customers'
servicing these systems. software and using it for the very purpose for which, and in precisely the manner
In order to service a Triad computer, the Southeastern technician uses the in which, it was designed to be used. As a result, the copies made by Southeastern
OS software and the service software in the Triad customer's possession. Triad while servicing Triad computers have undoubtedly diminished the value of Triad's
argues that Southeastern has infringed its software copyrights because copies of copyright. In short, we detect no appreciable public benefit arising from
the software are made in the computer's random access memory (RAM) when the Southeastern's practice to justify this continuance under the fair use doctrine. We
computer is in use. therefore agree with the district court's thoughtful analysis and its rejection of
On March 15, 1995, the district court granted Triad's motion for a Southeastern's fair use claim.
preliminary injunction. This was a long step forward for Triad. In essence, the Not surprisingly, we also conclude that Southeastern cannot show that it
injunction bars Southeastern from performing service or maintenance on Triad is likely to prevail on its asserted copyright misuse defense. In the case at bar,
computer systems that contain licensed software. Under the terms of the Triad did not attempt to prohibit Southeastern or any other ISO from developing
injunction, the onus is on Southeastern to determine whether a particular its own service software to compete with Triad.
customer's software is subject to a Regime 2 or 3 license agreement. Triad,
however, is obligated to provide the license agreement upon the customer's Los Angeles News Service vs. Frank Tullo, 973F. 2D 791
written request; if it fails to do so within ten business days, Southeastern may Facts: Los Angeles News Service ("LANS") records newsworthy events
service the customer's computer without violating the injunction. on videotape and licenses television stations and networks to use all or segments
Issue: Whether or not Southeasterns copying of Triads OS in order to of the unedited ("raw") footage in edited broadcast news stories. Audio Video
service computers falls under fair use or copyright misuse. Reporting Services ("AVRS") provides a video "news clipping" service: It monitors
Ruling: No. To make its required showing of copyright infringement, Triad television news programs, records them on videotape and sells copies of all or
must prove (1) ownership of the copyrights and (2) copying of an expression segments of the tapes to interested individuals and businesses.
protected by those copyrights. Triad has shown both. Its ownership of valid LANS videotaped the sites of an airplane crash and a train wreck,
copyrights is apparently not in dispute; Triad has produced certificates of registered its copyrights to the tapes, and licensed certain Los Angeles-area
registration, which raise a presumption of the validity of Triad's copyrights in its television stations to use them on news programs. AVRS made video recordings
software. Triad, to show that Southeastern made copies of its protected works, of these news programs, which included portions of LANS's footage, and
relies on the MAI decision; where we held that the loading of an operating system marketed the recordings. LANS sued, claiming copyright infringement. AVRS
software into RAM makes a copy under the Copyright Act. It is clear that counterclaimed, alleging LANS had fraudulently induced AVRS to provide LANS
Southeastern's activities are copying for purposes of the Copyright Act. Because with copies of AVRS recordings by falsely promising to pay for the tapes.
Southeastern's service activities involved copying entire programs, there is no Issue: Whether or not raw footage can be considered as original works
doubt that protected elements of the software were copied. Therefore, Triad has that are protected under copyright laws.
shown a likelihood of success as to its prima facie case. Ruling: Yes. Whether the raw tapes are sufficiently original to merit
Southeastern argues that, despite Triad's carrying its burden, the copyright protection is a mixed question of law and fact that we must examine.
preliminary injunction was improper because the district court failed to consider AVRS argues LANS's tapes merely captured whatever was before the
adequately its affirmative defenses of fair use and copyright misuse. The doctrine camera, involved no creativity or intellectual input, and so are not original works
of fair use allows a holder of the privilege to use copyrighted material in a deserving copyright protection. The Supreme Court rejected a similar argument
reasonable manner without the consent of the copyright owner. more than 100 years ago. It is clear from the record in this case that the
Southeastern's activities do not fall under fair use. Southeastern did not preparation of the two videotapes at issue required the intellectual and creative
make a minimal use of Triad's programs solely to achieve compatibility with Triad's input entitled to copyright protection. The district court so concluded after hearing
computers for Southeastern's own creative programs. Rather, Southeastern has testimony, from the operator of the video camera and the pilot of the helicopter in
invented nothing of its own; its use of Triad's software is, in the district court's which the camera operator flew, regarding the production of LANS's news
Alan Vincent S. Fontanosa II 11
videotapes in general and the tapes in this case in particular. The witnesses granted summary judgment for 2 Live Crew, holding that its song was a parody
described the initial decisions about the newsworthiness of the events and how that made fair use of the original song. The Court of Appeals reversed and
best to tell the stories succinctly and effectively; the selections of camera lenses, remanded, holding that the commercial nature of the parody rendered it
angles and exposures; the choices of the heights and directions from which to presumptively unfair under the first of four factors relevant under 107; that, by
tape and what portions of the events to film and for how long. The camera operator taking the "heart" of the original and making it the "heart" of a new work, 2 Live
described herself as "an artist. I use a paintbrush. I use the camera to tell a story." Crew had, qualitatively, taken too much under the third 107 factor; and that
AVRS contends that even if the tapes are original enough to merit market harm for purposes of the fourth 107 factor had been established by a
copyright protection, we should adopt a bright-line rule that no videotape of a presumption attaching to commercial uses.
newsworthy event is copyrightable because its creator's proprietary interest must Issue: Whether or not the parody song falls under fair use.
give way to the public's First Amendment right of access to information. Copyright Ruling: Yes.
law incorporates First Amendment goals by ensuring that copyright protection (a) Section 107, which provides that "the fair use of a copyrighted work . . . for
extends only to the forms in which ideas and information are expressed and not purposes such as criticism [or] comment . . . is not an infringement . . . ,"
to the ideas and information themselves. [T]he idea-expression dichotomy ... continues the common law tradition of fair use adjudication and requires
serves to accommodate the competing interests of copyright and the first case by case analysis rather than bright line rules. The statutory examples
amendment. The 'marketplace of ideas' is not limited by copyright because of permissible uses provide only general guidance. The four statutory
copyright is limited to protection of expression. factors are to be explored and weighed together in light of copyright's
AVRS contends that if the videotapes are copyrightable, AVRS's use of purpose of promoting science and the arts. Pp. 4-8.
them is protected by the doctrine of fair use, which "allows a holder of the privilege (b) Parody, like other comment and criticism, may claim fair use. Under the
to use copyrighted material in a reasonable manner without the consent of the first of the four 107 factors, "the purpose and character of the use,
copyright owner." Congress has identified four nonexclusive factors as "especially including whether such use is of a commercial nature . . . ," the enquiry
relevant" in determining fair use. The Copyright Act provides: focuses on whether the new work merely supersedes the objects of the
[T]he fair use of a copyrighted work ... for purposes such as original creation, or whether and to what extent it is "transformative,"
criticism, comment, news reporting, teaching ..., scholarship, or research, altering the original with new expression, meaning, or message. The more
is not an infringement of copyright. In determining whether the use made transformative the new work, the less will be the significance of other
of a work in any particular case is a fair use the factors to be considered factors, like commercialism, that may weigh against a finding of fair use.
shall include The heart of any parodist's claim to quote from existing material is the use
(1) the purpose and character of the use, including whether such of some elements of a prior author's composition to create a new one that,
use is of a commercial nature or is for nonprofit educational purposes; at least in part, comments on that author's work. But that tells courts little
(2) the nature of the copyrighted work; about where to draw the line. Thus, like other uses, parody has to work its
(3) the amount and substantiality of the portion used in relation to way through the relevant factors.
the copyrighted work as a whole; and (c) The Court of Appeals properly assumed that 2 Live Crew's song contains
(4) the effect of the use upon the potential market for or value of parody commenting on and criticizing the original work, but erred in giving
the copyrighted work. virtually dispositive weight to the commercial nature of that parody by way
Only the second factor is in AVRS favour, the rest weight heavily in LANS favour. of a presumption, that "every commercial use of copyrighted material is
presumptively . . . unfair . . . ." The statute makes clear that a work's
CAMPBELL, aka SKYYWALKER, et al. v. ACUFF ROSE MUSIC, INC. commercial nature is only one element of the first factor enquiry into its
Facts: Respondent Acuff Rose Music, Inc., filed suit against petitioners, purpose and character.
the members of the rap music group 2 Live Crew and their record company, (d) The second 107 factor, "the nature of the copyrighted work," is not much
claiming that 2 Live Crew's song, "Pretty Woman," infringed Acuff Rose's help in resolving this and other parody cases, since parodies almost
copyright in Roy Orbison's rock ballad, "Oh Pretty Woman." The District Court invariably copy publicly known, expressive works, like the Orbison song.
Alan Vincent S. Fontanosa II 12
(e) The Court of Appeals erred in holding that, as a matter of law, 2 Live Crew
copied excessively from the Orbison original under the third 107 factor,
which 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 copying's purpose. Even if 2 Live Crew's copying of the original's first
line of lyrics and characteristic opening bass riff may be said to go to the
original's "heart," that heart is what most readily conjures up the song for
parody, and it is the heart at which parody takes aim. Moreover, 2 Live
Crew thereafter departed markedly from the Orbison lyrics and produced
otherwise distinctive music. As to the lyrics, the copying was not excessive
in relation to the song's parodic purpose. As to the music, this Court
expresses no opinion whether repetition of the bass riff is excessive
copying, but remands to permit evaluation of the amount taken, in light of
the song's parodic purpose and character, its transformative elements,
and considerations of the potential for market substitution. Pp. 17-20.
(f) The Court of Appeals erred in resolving the fourth 107 factor, "the effect
of the use upon the potential market for or value of the copyrighted work,"
by presuming the likelihood of significant market harm based on 2 Live
Crew's use for commercial gain. No "presumption" or inference of market
harm is applicable to a case involving something beyond mere duplication
for commercial purposes. The cognizable harm is market substitution, not
any harm from criticism. As to parody pure and simple, it is unlikely that
the work will act as a substitute for the original, since the two works usually
serve different market functions. The fourth factor requires courts also to
consider the potential market for derivative works. If the later work has
cognizable substitution effects in protectable markets for derivative works,
the law will look beyond the criticism to the work's other elements. 2 Live
Crew's song comprises not only parody but also rap music. The absence
of evidence or affidavits addressing the effect of 2 Live Crew's song on the
derivative market for a nonparody, rap version of "Oh, Pretty Woman"
disentitled 2 Live Crew, as the proponent of the affirmative defense of fair
use, to summary judgment.

Alan Vincent S. Fontanosa II 13