01. Ching Kian Chuan v.

CA AUTHOR: S A Y O
[G.R. No. 130360. August 15, 2001] NOTES: LOLSKI Bawi ako next time
TOPIC: Standard for Copyright Protection
PONENTE: QUISUMBING, J.

CASE LAW/ DOCTRINE:

A person to be entitled to a copyright must be the original creator of the work. He must have created it
by his own skill, labor and judgment without directly copying or evasively imitating the work of another.
The grant of preliminary injunction in a case rests on the sound discretion of the court with the caveat
that it should be made with extreme caution. Its grant depends chiefly on the extent of doubt on the
validity of the copyright, existence of infringement, and the damages sustained by such infringement. In
our view, the copies of the certificates of copyright registered in the name of Ceroilfood Shandong
sufficiently raise reasonable doubt. With such a doubt, the preliminary injunction is unavailing.
In Medina vs. City Sheriff, Manila, 276 SCRA 133, 139 (1997), where the complainant’s title was
disputed, we held that injunction was not proper.
FACTS:

 Petitioner imports vermicelli from China National Cereals Oils and Foodstuffs, based in Beijing, China, under
the firm name C.K.C. Trading. He repacks it in cellophane wrappers with a design of two-dragons and the
TOWER trademark on the uppermost portion.
 Ong acquired a Certificate of Copyright Registration from the National Library on June 9, 1993 on the said
design.
 Ong filed against Tan a verified complaint for infringement of copyright with damages and prayer for
temporary restraining order or writ of preliminary injunction with the RTC-QC.
 Ong alleged that he was the holder of a Certificate of Copyright Registration over the cellophane wrapper
with the two-dragon design, and that Tan used an identical wrapper in his business. In his prayer for a
preliminary injunction in addition to damages, he asked that Tan be restrained from using the wrapper.
 Tan filed an opposition alleging that Ong was not entitled to an injunction.
 According to Tan, Ong did not have a clear right over the use of the trademark Pagoda and Lungkow
vermicelli as these were registered in the name of Ceroilfood Shandong, based in Qingdao, China.
 Further, Tan averred that he was the exclusive distributor in the Philippines of the Pagoda and Lungkow
vermicelli and was solely authorized to use said trademark.
 He added that Ong merely copied the two-dragon design from Ceroilfood Shandong which had the
Certificates of Registration issued by different countries.
 Private respondent alleges that the trademark PAGODA BRAND was registered in China on October 31, 1979
while the trademark LUNGKOW VERMICELLI WITH TWO-DRAGON DEVICE was registered on August 15, 1985.
 Trial Court issued a temporary restraining order on the same date the complaint was filed. It likewise issued
the writ in Ong’s favor upon his filing of a P100,000.00 bond.
 CA gave due course and granted the petition. The lower court’s orders, as well as the writ of preliminary
injunction, were set aside. Ong filed a MR from which CA modified its decision and made the injunction
permanent.
ISSUE(S):
WON the issuance of the writ of preliminary injunction in favor of private respondent was proper?

HELD: Petition is partially granted. The prayer for a writ of preliminary injunction to prohibit Tan from using the
cellophane wrapper with two-dragon device is denied, but the finding of the respondent appellate court that Ong’s
copyrighted wrapper is a copy of that of Ceroilfood Shandong is SET ASIDE for being premature. Case was remanded
to RTC.

RATIO:
 A person to be entitled to a copyright must be the original creator of the work. He must have
created it by his own skill, labor and judgment without directly copying or evasively imitating the
work of another. The copies of the certificates of copyright registered in the name of Ceroilfood Shandong
sufficiently raise reasonable doubt. With such a doubt, the preliminary injunction asked by Ong against Tan is
unavailing.
 To be entitled to an injunctive writ, petitioner must show, inter alia, the existence of a clear and unmistakable
right and an urgent and paramount necessity for the writ to prevent serious damage. In this case, the Court
found that petitioner’s right has not been clearly and unmistakably demonstrated.
 The Court added it was premature for the CA to declare that the design of petitioner’s wrapper is a copy of the
wrapper allegedly registered by Ceroilfood Shandong. The only issue brought before the CA involved the grave
abuse of discretion allegedly committed by the trial court in granting the writ of preliminary injunction, and not
on the merits of the infringement case. That matter remains for decision after appropriate proceedings at the
trial court.
DISSENTING/CONCURRING OPINION(S):

2. SAMBAR vs. LEVI STRAUSS AUTHOR: SOLIS

[G.R. No. 132604. March 6, 2002] NOTES:
TOPIC: Standard for Copyright Protection - Sambar is the owner of CVSGE
PONENTE: Quisumbing, J. - Levi Strauss & Co. is an internationally known clothing
manufacturer
CASE LAW/ DOCTRINE:

FACTS:
 Respondents Levi Strauss & Co. (LS&Co.), and Levi Strauss (Phil.), Inc. (LSPI), through a letter from the legal officer, demanded that CVS
Garment Enterprises (CVSGE) to desist from using their stitched arcuate design on the Europress jeans which CVSGE advertised in the Manila
Bulletin.
 Atty. Gruba, counsel of CVSGE, replied that the arcuate design on the back pockets of Europress jeans was different from the design on the
back pockets of Levis jeans. He further asserted that his client had a copyright on the design it was using.
 Respondents filed a complaint against Sambar, doing business under the name and style of CVSGE. Later on amended their complaint to
include CVSGIC—the company that took over CVSGE, because the latter stopped its operation. However, Sambar’s whereabouts were not
known. When respondents learned about the whereabouts of Sambar and CVSGE, the case was revived.
 In their complaint, respondents alleged that LS&Co. owns the arcuate design trademark which was registered under U.S. Trademark and in the
Principal Register of Trademarks with the Philippine Patent Office; that through a Trademark Technical Data and Technical Assistance
Agreement with LSPI as its agent to protect its trademark in the Philippines, and that sometime in 1987, CVSGIC and Sambar, without the
consent and authority of respondents and in infringement and unfair competition, sold and advertised, and despite demands to cease and
desist continued to manufacture, sell and advertise denim pants under the brand name Europress with the back pockets bearing a design
similar to the arcuate trademark of respondents, thereby causing confusion on the buying public, prejudicial to respondents good will and
property right.
 In CVSGIC’s answer, it admitted it manufactured, sold and advertised and was still manufacturing and selling denim parts under the brand
name of Europress, bearing a back pocket design two double arcs meeting in the middle. However, it denied that it infringed respondent’s
arcuate for the following reasons: (1) the public would not be confused because the department stores where both jeans were sold were,
distinctively segregated by billboards and other modes of advertisement; (2) they were properly labeled as Europress; and (3) CVSGUC had its
own original arcuate design, as evidence by a Copyright Registration which was different and distinct from Levis design.
 Sambar filed a separate answer, denying that he was connected with CVSGI, but admitted that the said Copyright Registration over arcuate
design of CVSGIC was issued to him, but denied using it, nor authorized anyone to use it.
 Trial court issued a writ of preliminary injunction enjoining CVSCGIC and Sambar from manufacturing, advertising and selling pants with the
accurate design on their back pockets.
 Respondents moved for reconsideration for the cancellation of Sambar’s copyright registration which the trial court granted.
 Sambar appealed to the CA which decided in favor of respondents.
ISSUE(S):
(1) Did petitioner infringe on respondents arcuate design?
(2) Must we hold Sambar liable with CVS Garments Industrial Corporation?
(3) Are respondents entitled to nominal, temperate and exemplary damages and cancellation of petitioner’s copyright?

HELD:
(1) We find that the first issue raised by petitioner is factual.
(2) Yes, Sambar is liable.
(3) Respondents are entitled to cancellation of petitioner’s copyright and is entitled to temperate damages only.

RATIO:

First Issue
 The basic rule is that factual questions are beyond the province of the SC in a petition for review. Although there are exceptions to this rule,
this case is not one of them. Hence, we find no reason to disturb the findings of the CA that Europress use of the arcuate design was an
infringement of the Levis design.

Second Issue
 Pertinent is Section 1, Rule 131 of the RoC which provides that burden of proof is the duty of a party to prove the truth of his claim or
defense, or any fact in issue by the amount of evidence required by law. In civil case, the burden of proof may be on either the plaintiff or
the defendant. It is on the latter, if in his answer he alleges an affirmative defense, which is not a denial of an essential ingredient in the
plaintiffs cause of action, but is one which, if established, will be a good defense i.e., an avoidance of the claim, which prima facie, the
plaintiff already has because of the defendants own admissions in the pleadings.
 Petitioner’s defense in this case was an affirmative defense. He did not deny that respondents owned the arcuate trademark nor that
CVSGIC used on it products to use it. He also said he was not connected with CVSGUC. These were not alleged by respondents in their
pleadings, and petitioner therefore had the burden to prove these.

Third Issue
 The cancellation of petitioner’s copyright was justified because petitioner’s copyright cannot prevail over respondents’ registration in the
Principal Register of Bureau of Patents, Trademarks, and Technology Transfer. The essence of copyright registration is originality and a
copied design is inherently non-copyrightable. Registration does not confer originality upon a copycat version of a prior design.
 Award of damages is clearly provided in Section 23, while cancellation of petitioner’s copyright finds basis on the fact that the design was a
mere copy of that of respondents trademark. To be entitled to copyright, the thing being copyrighted must be original, created by the
author through his own skill, labor and judgment, without directly copying or evasively imitating the work of another.
 However, what respondents are entitled to is an award for temperate damages, not nominal damages. For although the exact amount of
damage or loss can not be determined with reasonable certainty, the fact that there was infringement means they suffered losses for
which they are entitled to moderate damages. We find the award of P50,000.00 as temperate damages fair and reasonable, considering
the circumstance herein as well as the global coverage and reputation of respondents LS&Co. and LSPI.
DISSENTING/CONCURRING OPINION(S):
3. Mauro Malang Santos vs McCullogh Printing AUTHOR: The Taliño
Company NOTES:
[G.R. No. L-19439; October 31, 1964] MPC – McGullogh Printing Company
TOPIC: When does Copyright Vest?
PONENTE: Paredes, J.
CASE LAW/DOCTRINE:
 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. In the case at bar, even as of this moment, there is no copyright for the design in question.
 When the purpose is a limited publication, but the effect is general publication, irrevocable rights thereupon become vested in the public, in
consequence of which enforcement of the restriction becomes impossible.
 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. 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.
FACTS:
 This is an action for damages based on the provisions of Arts. 721 and 722 of the Civil Code, allegedly on the unauthorized use, adoption and
appropriation by the MPC of Santos’ intellectual creation or artistic design for a Christmas Card. The design depicts "a Philippine rural
Christmas time scene consisting of a woman and a child in a nipa hut adorned with a star-shaped lantern and a man astride a carabao, beside a
tree, underneath which appears the Santos’ pen name, Malang."
 Santos designed for former Ambassador Felino Neri, for his personal Christmas Card greetings for the year 1959, the artistic motif in question.
The following year, MPC, without the knowledge and authority of Santos, displayed the very design in its album of Christmas cards and offered
it for sale, for a price. For such unauthorized act, Santos suffered moral damages to the tune of Php 16k, because it has placed Santos’
professional integrity and ethics under serious question and caused him grave embarrassment before Ambassador Neri. He further prayed for
the additional sum of Php 3k by way of attorney's fee.
 MPC moved for dismissal, claiming that:
o The design claimed does not contain a clear notice that it belonged to Santos and that he prohibited its use by others;
o The design in question has been published but does not contain a notice of copyright, as in fact it had never been copyrighted by
Santos, for which reason this action is barred by the Copyright Law;
o The complaint does not state a cause of action.
 The documentary evidence submitted were the Christmas cards, as originally designed by Santos, the design as printed for Ambassador Neri,
and the subsequent reprints ordered by other parties. The case was submitted an a "Stipulation of Fact" the pertinent portions of which claim
that:
o Santos was the artist who created the design;
o the design carries the pen name of Santos, MALANG, on its face;
o the design was created by Santos in the latter part of 1959 for the personal use of former Ambassador Felino Neri;
o former Ambassador Neri had 800 such cards printed by MPC in 1959, which he distributed to his friends in December, 1959;
 o MPC utilized plaintiff's design in the year 1960 in its album of Christmas card samples displayed to its customers;
o Sampaguita Pictures, Inc., placed an order with MPC for 700 of said cards, while Raul Urra & Co. ordered 200, which cards were sent
out by them to their respective correspondent, clients and friends during the Christmas season of 1960;
o MPC’s use of Santos’ design was without knowledge, authority or consent of Santos;
o said design has not been copyrighted; and

o Santos is an artist of established name, good-will and reputation.

 TRIAL COURT: Dismissed the case. Santos case did not choose to protect his intellectual creation by a copyright. The fact that the design was
used in the Christmas card of Ambassador Neri who distributed eight hundred copies thereof among his friends during the Christmas season of
1959, shows that the, same was published. Unless satisfactorily explained a delay in applying for a copyright, of more than 30 days from the
date of its publication, converts the property to one of public domain. Since the name of the author appears in each of the alleged infringing
copies of the intellectual creation, MPC may not be said to have pirated the work nor guilty of plagiarism.
ISSUE(S):
1. WON Santos is entitled to protections, notwithstanding the fact that he has not copyrighted his design.
2. WON the publication is limited, so as to prohibit its use by others, or general.

HELD: No chance, no way, I won’t say it NO NO!

RATIO:
 Under the established facts, We find that Santos is not entitled to a protection, the provision of the Civil Code, notwithstanding. Par. 33 of
Patent Office Administrative Order No. 3 titled "Rules of Practice in the Philippines Patent Office relating to the Registration of Copyright
Claims" promulgated pursuant to RA 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. In the case at bar,
even as of this moment, there is no copyright for the design in question.
 We are not also prepared to accept the contention of appellant that the publication of the design was a limited one, or that there was an
understanding that only Ambassador Neri should, have absolute right to use the same. In the first place, if such were the condition then
Ambassador Neri would be the aggrieved party, and not the appellant. In the second place, if there was such a limited publication or
prohibition, the same was not shown on the face of the design.
 When the purpose is a limited publication, but the effect is general publication, irrevocable rights thereupon become vested in the public, in
consequence of which enforcement of the restriction becomes impossible. When Ambassador Neri distributed 800 copies of the design in
controversy, Santos lost control of his design and the 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.
 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. 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.
04 FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND AUTHOR: TAN
PUBLISHERS, INC. vs. BENJAMIN TAN NOTES:
[G.R. No. L-36402. March 16, 1987]

TOPIC: When does Copyright vest?

PONENTE: Paras, J.
CASE LAW/ DOCTRINE:
An intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila, or within the (60) days if made elsewhere,
failure of which renders such creation public property." Indeed, if the general public has made use of the object sought to be copyrighted for thirty
(30) days prior to the copyright application the law deems the object to have been donated to the public domain and the same can no longer be
copyrighted.

FACTS:
 Plaintiff-appellant is a non-profit association of authors, composers and publishers. It is the owner of certain musical compositions among which
are the songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness Of You."
 On the other hand, defendant-appellee is the operator of a restaurant known as "Alex Soda Foundation and Restaurant" where a combo with
professional singers, hired to play and sing musical compositions to entertain and amuse customers therein, were playing and singing the above-
mentioned compositions without any license or permission from the appellant to play or sing the same.
 Appellant demanded from the appellee payment of the necessary license fee for the playing and singing of aforesaid compositions but the
demand was ignored.
 Appellant filed a complaint with the lower court for infringement of copyright against defendant-appellee for allowing the playing in defendant-
appellee's restaurant of said songs copyrighted in the name of the former.
 Defendant-appellee, in his answer, countered that the complaint states no cause of action. While not denying the playing of said copyrighted
compositions in his establishment, appellee maintains that the mere singing and playing of songs and popular tunes even if they are copyrighted
do not constitute an infringement under the provisions of Section 3 of the Copyright Law (Act 3134).
 The lower court, finding for the defendant, dismissed the complaint.
 Plaintiff appealed to the Court of Appeals which certified the case to the Supreme Court for adjudication on the legal question involved.
ISSUE(S):
1. Whether the playing and signing of musical compositions, which have been copyrighted under the provisions of the Copyright Law, inside the
establishment of the defendant-appellee constitute a public performance for profit within the meaning and contemplation of the Copyright Law
of the Philippines.
2. Assuming that there were indeed public performances for profit, whether or not appellee can be held liable therefor.

HELD:
1. NO
2. NO
RATIO:
 It has been held that "The playing of music in dine and dance establishment which was paid for by the public in purchases of food and drink
constituted "performance for profit" within a Copyright Law." Thus, it has been explained that while it is possible in such establishments for the
patrons to purchase their food and drinks and at the same time dance to the music of the orchestra, the music is furnished and used by the
orchestra for the purpose of inducing the public to patronize the establishment and pay for the entertainment in the purchase of food and drinks.
The defendant conducts his place of business for profit, and it is public; and the music is performed for profit. In a similar case, the Court ruled
that "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."
 In the case at bar, it is admitted that the patrons of the restaurant in question pay only for the food and drinks and apparently not for listening to
the music. It will be noted that for the playing and singing the musical compositions involved, the combo was paid as independent contractors
by the appellant. It is therefore obvious that the expenses entailed thereby are added to the overhead of the restaurant which are either eventually
charged in the price of the food and drinks or to the overall total of additional income produced by the bigger volume of business which the
entertainment was programmed to attract. Consequently, it is beyond question that the playing and singing of the combo in defendant-appellee's
restaurant constituted performance for profit contemplated by the Copyright Law.
 Nevertheless, appellee cannot be said to have infringed upon the Copyright Law. Appellee's allegation that the composers of the contested
musical compositions waived their right in favor of the general public when they allowed their intellectual creations to become property of the
public domain before applying for the corresponding copyrights for the same is correct.
 The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative Order No. 3 entitled 'Rules of Practice in the Philippines Patent
Office relating to the Registration of Copyright Claims' promulgated pursuant to Republic Act 165, provides among other things that an
intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila, or within the (60) days if made elsewhere,
failure of which renders such creation public property." Indeed, if the general public has made use of the object sought to be copyrighted for
thirty (30) days prior to the copyright application the law deems the object to have been donated to the public domain and the same can no
longer be copyrighted.
 A careful study of the records reveals that the song "Dahil Sa Iyo" which was registered on April 20, 1956 became popular in radios, juke boxes,
etc. long before registration while the song "The Nearness Of You" registered on January 14, 1955 had become popular twenty five (25) years
prior to 1968, or from 1943 and the songs "Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao Lamang" both registered on July 10, 1966,
appear to have been known and sang by the witnesses as early as 1965 or three years before the hearing in 1968. The testimonies of the
witnesses at the hearing of this case on this subject were unrebutted by the appellant.
 Under the circumstances, it is clear that the musical compositions in question had long become public property, and are therefore beyond the
protection of the Copyright Law.
DISSENTING/CONCURRING OPINION(S):
Baker v. Selden AUTHOR: Tiglao
[101 U.S. 99 | 1879] NOTES:
TOPIC: Copyright
CASE LAW/ DOCTRINE:
 The copyright protection for a book explaining an art or system extends only to the author’s unique explanation of it and does not prevent
others from using the system or the forms incidentally used. To find that a copyright protected against use of the system itself or the forms
necessary to such use would be to grant protection similar to a patent without requiring a showing of novelty. Copyright is based on
originality, not novelty, and protects the explanation of the system and not the use of the system. In this case, therefore, the copyright Selden
obtained could not give him the exclusive right to use the bookkeeping system or the forms necessary to such use.
FACTS:
 Selden copyrighted a book in which he used in introductory essay explaining his system of bookkeeping followed by forms to put the system
to use. He had arranged the columns and headings so that the entire operation of a day, week or month was on a single page or on two pages
facing each other.
 It also contained illustrated examples of the system. The examples consisted of “form or blanks, consisting of ruled lines, and headings,
illustrating the system.”
 Baker wrote a book on bookkeeping also. It used ledgers that were pretty much the same as the ones Selden proposed.
 Baker then began selling forms with columns and headings arranged differently to achieve the same result.
 Selden brought suit against Baker for copyright infringement on account of Baker reproducing the illustrated examples of the system.
 Baker argued that you can't copyright a method, only an expression of that method. Because his book didn't slavishly copy Selden's, it was
not a violation of Selden's copyright. Baker didn't copy any of the text from Selden's book, he just used the same bookkeeping system.
 Trial Court: Rule in favor of Selden. It found that Baker's books were "in large and material part identical with and infringements of the
books of Selden system." Baker filed an appeal.
ISSUES:
1. W/N Baker infringed the copyright.
2. W/N Selden’s copyright extends to the right to make and use the book keeping method described in the copyright book.
HELD: For both issues, the Court ruled in the negative.
RATIO:
 The US Supreme Court found that a copyright did not give an author the right to prevent others from using the same method.
 "The copyright of a book on bookkeeping cannot secure the exclusive right to make, sell, and use account books prepared upon the plan set
forth in such a book."
 The Court found that Selden couldn't copyright the forms because the forms are necessary to the use of the bookkeeping system (aka
merger).
 The concept of merger is that if an idea can only be expressed in one way or a few ways, granting a copyright on that expression would
effectively lock up anybody from using the idea. Therefore, since you can't copyright ideas, you can't copyright those limited ways to
express the idea because the idea behind the work merges with its expression.
 The Court found that the forms are functional and not expressive, so Selden couldn't copyright the forms for that reason either.
 The Court found that what Selden was really trying to protect was a patent on his method, but he didn't have a patent. He only had a
copyright.
  Patents are used to protect ideas and methods (aka "useful arts"). Copyrights can only be used to protect expressions.
 "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."
 At the time, Selden's method would probably not have been eligible for patent protection, but he could probably patent it now under the US
Law.
 Copyright protects the book and no one else can reproduce it or substantial portions thereof. The whole purpose of publishing a book is to
communicate something to the public such as the useful knowledge the book contains. It would frustrate the whole purpose of publishing
the book if the knowledge could not be used without incurring liability for infringement. The use of the art is totally different from a
publication of the book explaining it.

Lotus Development Corp vs. Borland intern AUTHOR: Valera

49 F.3d 807 (1st Cir. 1995)
When does Copyright Vest: STAHL.
NOTES:
 Di ko gets kung bakit under to nang topic na to.

SC decision was only on voting. There was a tie so it affirmed the CA

decision.

(17 USC sec 102(b)): “In no case does copyright protection

for an original work of authorship 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."

CASE LAW/ DOCTRINE:

 Method of operation as its used in sec 102 (b) 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.
 The Court holds that the lotus menu command hierarchy is an un-copyrightable “method of operation” since it provides the means
by which users control and operate Lotus 1-2-3. Since if a use wants to copy material, it would use the “Copy” command, if they
want to print they use the “Print” command. Users must use the command use the command terms to tell the computer what to do.
And without such users would not be able to access and control or use Lotus 1-2-3’s functions
FACTS:
 LOTUS 1-2-3 is a spreadsheet program which enables the user to perform accounting functions on a computer. Users use the program via a
series of menu commands such as “Copy” “Print” and “Quit”. Lotus 1-2-3 has 469 commands arranged into more than 50 menus and submenus
 LOUTS 1-2-3 allows users to write MACROS, where a user can designate a series of command choices with a single macro keystroke, to
execute a series of commands in multiple parts of the spreadsheet rather than typing the whole series each time.
 Borland released its Quattro program in 1987, Borland’s objective was to develop a spreadsheet program superior to existing programs.
 Borland does not contest that they included in its Quattro and Quattro Pro version a “virtually identical copy of the entire Lotus 1-2-3 menu
tree” in doing so, they did not copy any of Lotus’ underlying computer code, it only copied only the words and structure of Lotus’ menu
command hierarchy. Borland included the Lotus menu command hierarchy y in its programs in order for Users who are familiar with LOTUS1-
2-3 would be able to switch to the program without having to learn new commands or rewrite their lotus macros.
 In the Quattro and Quattro Pro programs, Borland achieved compatibility with LOTUS 1-2-3 by offering its users and alternate interface, the
“LOTUS EMULATION INTERFACE” wherein users would see lotus menu commands on their screens and could interact with the
Quattro/Quattro Pro as if using the Lotus 1-2-3 with a slightly different looking screen and many Borland options not available on the Lotus 1-
2-3.
 Lotus then filed an action against Borland in the district court of Massachusetts. Which held that the LOTUS 1-2-3 menu structure as a whole
was protected expression covered by Lotus’ copyrights.
 The Massachusetts court order both parties to file motions for summary judgement. In its motion, Borland contends that the menus were not
copyrightable as a matter of law and that no reasonable trier of fact could find that the similar between its products and Lotus’ was sufficient to
sustain a determination of infringement. While Lotus continues in its motion that Borland copied Lotus 1-2-3’s entre user interface.
 The district ruled in favor of Lotus. Holding that the menu command hierarchy was copyrightable expression “because a very satisfactory
spreadsheet menu tree can be constructed using different commands and a different command structure from those of Lotus 1-2-3, in fact,
Borland has constructed just such alternate tree for use in Quattro’s native mode. Even if one holds the arrangement of menu commands
constant it is possible to generate millions of satisfactory menu trees by varying the menu commands employed.” The District court offered
alternate command words for 10 commands that appear in Lotus main menu such as the Quit may be name Exit” and Copy could be
Clone/Ditto/imitate/mimic. Because of the many variations possible the court concluded that the Lotus’ Developers’ choice and arrangement of
commands constitutes copyrightable expression. Thus found Borland guilty of infringing Lotus’s copyright in Lotus 1-2-3.
 After the district court’s summary judgement decision, Borland removed the Lotus emulation Interface from its products. But it retained the
programs compatibility with Lotus 1-2-3 with the “Key Reader” functions, which allows the product to understand and perform some Lotus 1-
2-3 macros.
 The district court, permitted Lotus to file a supplemental complaint alleging that the Key reader infringed its copy rights. In where they also
held in favor of Lotus.
 On appeal, Borland did not dispute that it factually copied the words and arrangement of the Lotus menu command hierarchy, rather, Borland
argues that it lawfully copied the unprotectable menus of Lotus 1-2-3, since it is not a copyrightable because it is a system, method of
operation, process, or procedure foreclosed from protection.

ISSUE(S): WON BORLAND’s Quattro program infringed Lotus’ Lotus 1-2-3’s copyrights by copying its menu command hierarchy.

HELD:
 NO.

RATIO:
 To establish copyright infringement, the plaintiff must prove 1.) ownership of a valid copyright, and 2.) copying of constituent elements of
the work that are original.
 Computer programs receive copyright protection as “literary works”
  Borland argues citing the case of Baker vs. Selden where the court held that Selden’s copyright over the textbook in which he explained his
new way to do accounting did not grant him a monopoly on the use of his accounting system: Borland argues that the double entry
accounting is now the universal accounting system and the facts of the case are identical but in this case the user interface of Selden’s system
was implemented by pen and paper rather than by computer. However, the Court disagrees since unlike Selden, Lotus does not claim
monopoly over its system by its monopoly over the commands it uses in its programs.
 The court then cited the case of Computer Assoc vs. Altai where it designed the Altai test to deal with computer programs, as copyrighted as
literary works, can be infringed by nonliteral copying. The test involves 3 steps, Abstaction- Filtration- Comparison. Abstraction step
requires the courts to dissect the copied program’s structure and isolate each level of abstraction contained within. Filtration is when they
examine the structural components at each level of abstraction to determine whether their particular inclusion at that level was idea or
dictated by considerations of efficiency so as to be necessarily identical to that idea required by factors external to the program itself. In
Comparison, the courts compare the protected elements of the infringed work to determine whether there was sufficient copying of protected
material. the court stated that since they are not confronted with nonliteral copying rather by Borland’s deliberate copying of the Lotus menu
hierarchy, such test is little of help. (NOT IMPORTANT but he may ask about the discussion of the case re this)
 Borland argues that the Lotus Menu command hierarchy is un-copyrightable because it is a system, method of operation, process or
procedure foreclosed from copyright protection by (17 USC sec 102(b))The Court concludes that the such command hierarchy is a method
of operation.
 Method of operation as its used in sec 102 (b) 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.
 The Court holds that the lotus menu command hierarchy is an un-copyrightable “method of operation” since it provides the means by which
users control and operate Lotus 1-2-3. Since if a use wants to copy material, it would use the “Copy” command, if they want to print they
use the “Print” command. Users must use the command use the command terms to tell the computer what to do. And without such users
would not be able to access and control or use Lotus 1-2-3’s functions.
 The menu hierarchy s different from Long prompts since such are not necessary to the operation of the program. The menu hierarchy is also
different from the lotus screen displays because users need not use any expressive aspects of the display in order to operate the program. It is
also different from its underlying computer code, because while the code is necessary for the program to work its precise formulation is not.
In other words, to offer the same capabilities as Lotus 1-2-3, Borland did not have to copy Lotus’ code, which they indeed did not. To allow
users to operate its programs in the same way. However, Borland had to copy the lotus menu command hierarchy. Thus the code is not an
un-copyrightable “method of operation.”
The court then stated that in many ways, the Lotus menu command hierarchy is like the buttons used to control a VCR, which can be
controlled by pressing series of buttons that are typically labelled “Record, Play, Reverse, Fast forward, pause, Stop/Eject.” That how the
buttons are arranged and labeled does not make them a literary work or an expression of the abstract method of operating a VCR instead the
buttons are themselves the method of operating the VCR. When a Lotus 1-2-3 user chooses a command either by clicking it is analogous to
pressing a VCR button.
 Since the lotus menu command hierarchy is un-copyrightable subject matter, the court held that Borland did not infringe Lotus copyright by
copying it.
DISSENTING/CONCURRING OPINION(S):
 Boudin: Because computer programs, unlike literary works or works of art, are utilitarian, granting copyright protection to such programs
can have the same effect that granting a patent would have, that is, limiting the ability of users to perform a task in the most efficient way.
 While utility does not bar copyrightability, it changes the calculus. While the incentive for the creator remains the same through the grant of
a limited monopoly, the cost to users is great where the creation is the most efficient way to accomplish a particular task. Copyright law has
not extensively addressed utility, so there is not much precedent to go by. Where protection is sought for a computer menu, which may be a
creative work, the importance of the menu over time may reside more in the investment that users have made in learning the menu and
building macros based on it. Therefore, to assume a computer program is just another form of expression, like a film, may be incorrect.
While the expression of the computer program may look or feel like the familiar subject matter of copyright, its substance may be more
suited to protection by patent law. The application of copyright law to computer programs does not quite “fit.” In this case, Borland’s
rationale for wanting to incorporate the Lotus menus rings true, that is, to give Plaintiff users who have invested time learning the Lotus
menu hierarchy a fallback option when they use Borland’s product. The issue is not whether Lotus would lose money if its menu hierarchy
were awarded copyright protection. The issue remains whether it should be awarded such protection. Given that the menu commands are
largely for standard procedures that Lotus did not invent and are common words that Plaintiff cannot monopolize, copyrightability does not
seem warranted, even for just the particular combination and subgrouping of the commands. Granting Lotus copyright on this pattern of
commands would lock users into using Lotus If a better spreadsheet were developed, there is no reason why those customers who have
learned the Lotus menu and devised macros for it should be forced to remain captive to Plaintiff simply because of an investment in learning
made by them and not by Lotus who would have then already reaped the rewards of being first. Accordingly, Defendant should prevail, but
the question remains on what basis. The choice seems to be between finding the menus not copyrightable or devising a new doctrine that
renders Borland’s use privileged. Each approach has its pros and cons. In any event, the majority’s approach is satisfactory

MORRISSEY v. PROCTER & GAMBLE CO. AUTHOR: ACIDO

379 F.2d 675 (1st Cir. 1967) NOTES: Short case pero ang dami lang citations; basically
TOPIC: When does copyright vest? PONENTE: Aldrich, hindi copyrightable yung rules ni plaintiff kasi ilang ways
C.J. mo lang ba masasabi na “Official rules are explained”
haha.
CASE LAW/ DOCTRINE:
Operation of limiting principle for copyright (i.e. in this case, the uncopyrightable subject matter is very narrow, so
that "the topic necessarily requires," if not only one form of expression, at best only a limited number) need not await
an attempt to copyright all possible forms.
FACTS:
 Plaintiff, Morrissey, is the copyright owner of a set of rules for a sales promotional contest of the "sweepstakes"
type involving the social security numbers of the participants. Plaintiff alleges that the defendant, Procter &
Gamble Company, infringed, by copying, almost precisely, Rule 1. (Changes are bolded and italicized)
o MORRISSEY: “1. Entrants should print name, address and social security number on a boxtop, or a
plain paper. Entries must be accompanied by * * * boxtop or by plain paper on which the name * * * is
copied from any source. Official rules are explained on * * * packages or leaflets obtained from dealer.
If you do not have a social security number you may use the name and number of any member of
your immediate family living with you. Only the person named on the entry will be deemed an entrant
and may qualify for prize.
 "Use the correct social security number belonging to the person named on entry * * * wrong number
will be disqualified."
o P&G: "1 . Entrants should print name, address and Social Security number on a Tide boxtop, or on [a]
plain paper. Entries must be accompanied by Tide boxtop (any size) or by plain paper on which the
name 'Tide' is copied from any source. Official rules are available on Tide Sweepstakes packages,
or on leaflets at Tide dealers, or you can send a stamped, self-addressed envelope to: Tide
'Shopping Fling' Sweepstakes, P.O. Box 4459, Chicago 77, Illinois.
"If you do not have a Social Security number, you may use the name and number of any member of
your immediate family living with you. Only the person named on the entry will be deemed an entrant
and may qualify for a prize. "Use the correct Social Security number, belonging to the person named
on the entry wrong numbers will be disqualified."
 In its motion for summary judgment, based upon affidavits and depositions, P&G denies that plaintiff's Rule I is
copyrightable material, and denies access.
 District court: Held for the defendant on both grounds.
ISSUE:
Whether or not the substance of the contest is copyrightable.
HELD:
No. Judgment affirmed.
RATIO:
 On the issue of access: The defendant offered affidavits or depositions of all of its allegedly pertinent
employees, all of whom denied having seen plaintiff's rules. Although the plaintiff, by deposition, flatly testified
that prior to the time the defendant conducted its contest he had mailed to the defendant his copyrighted rules
with an offer to sell, the court ruled that the defendant had "proved" nonaccess.
 Copyright attaches to form of expression, and defendant's own proof, introduced to deluge the court on
the issue of access, itself established that there was more than one way of expressing even this simple
substance. Nor, in view of the almost precise similarity of the two rules, could defendant successfully invoke the
principle of a stringent standard for showing infringement which some courts apply when the subject matter
involved admits of little variation in form of expression.
 But when the uncopyrightable subject matter is very narrow, so that "the topic necessarily
requires," if not only one form of expression, at best only a limited number, to permit copyrighting
would mean that a party or parties, by copyrighting a mere handful of forms, could exhaust all
possibilities of future use of the substance. In such circumstances it does not seem accurate to say that
any particular form of expression comes from the subject matter. However, it is necessary to say that the
subject matter would be appropriated by permitting the copyrighting of its expression. Copyright is not a game
of chess in which the public can be checkmated.
 Upon examination the matters embraced in Rule 1 are so straightforward and simple that this limiting principle
is applicable. Furthermore, its operation need not await an attempt to copyright all possible forms.
 It cannot be only the last form of expression which is to be condemned, as completing defendant's
exclusion from the substance. Rather, in these circumstances, copyright does not extend to the subject
matter at all, and plaintiff cannot complain even if his particular expression was deliberately adopted.

08 BRANDIR INTERN., INC. v. CASCADE PAC. LUMBER AUTHOR: Adre

[834 F.2d 1142 (2d Cir. 1987)] NOTES: case filed in United States Court of Appeals, Second
TOPIC: WHEN DOES COPYRIGHT VEST? Sec. 172 and 172.2 Circuit. Brandir International, Inc. sold a wire sculpture as a
IPC, Rule 7, Sec. 2-4, Copyright Safeguards bicycle rack that by was deemed not to be copyrightable because
PONENTE: OAKES, Circuit Judge. it was an industrial design not subject to copyright protection.
Ganito ata yung itsura (wala sa appendix ng case kahit sabi
nandun haha)

CASE LAW/ DOCTRINE: “Copyright ultimately should depend on the extent to which the work reflects artistic expression not
restricted by functional considerations. If design elements reflect a merger of aesthetic and functional considerations, the artistic
aspects of a work cannot be said to be conceptually separable from the utilitarian elements. The final form of the bicycle rack sold by
Brandir (Plaintiff) is basically a product of industrial design. Form and function are inextricably intertwined in the rack, its ultimate
design being as much the result of utilitarian pressures as aesthetic choices. The original aesthetic elements have clearly been
adapted to accommodate and further a utilitarian purpose.”
Emergency Facts:
A wire sculpture was created by the owner Lavine, Brandir International, Inc. (Brandir) created the Ribbon Rack, a bike rack consisting
of looped, bent tubing. Brandir made minor adjustments to the original sculpture for functional purposes, such as widening the upper
loops so that bikes could park below as well as above the loops. The U.S. Copyright Office denied Brandir a copyright for the Ribbon
Rack. Cascade Pacific Lumber Co. (defendant) sold a similar bike rack. Brandir brought suit for copyright infringement. The United
States District Court for the Southern District of New York granted Cascade summary judgment. Brandir appealed.
FACTS:
 Brandir contends (and its owner Lavine) that the original design of the Ribbon Rack stemmed from wire sculptures that Levine had
created, each formed from one continuous undulating piece of work.
 He created these sculptures and displayed it in his home as a means of personal expression but was never sold or displayed
elsewhere.
 He also created a wire sculpture in the shape of a bicycle he did not give any thought to the utilitarian application of any of his
sculptures until he accidentally juxtaposed the bicycle sculpture with one of the self-standing wire sculpture
 November 1978: Levine seriously began pursuing the utilitarian application of his sculptures, when a friend, G. Duff Bailey, a
bicycle buff and author of numerous articles about urban cycling, was at Levine's home and informed him that the sculptures would
make excellent bicycle racks, permitting bicycles to be parked under the overloops as well as on top of the underloops.
 After, he met with several others completing the designs for the RIBBON Rack by the use of a vacuum cleaner hose, and
 submitting his drawings to a fabricator complete with dimensions. The Brandir RIBBON Rack began being nationally advertised
and promoted for sale in September 1979.
 November 1982 Levine discovered that another company, Cascade Pacific Lumber Co., was selling a similar product
 Beginning in December 1982, a copyright notice was placed on all RIBBON Racks before shipment and on December 10, 1982,
five copyright applications for registration were submitted to the Copyright Office.
 Copyright Office: refused registration by letter, stating that the RIBBON Rack did not contain any element that was "capable of
independent existence as a copyrightable pictorial, graphic or sculptural work apart from the shape of the useful article."
 Appeal to Copyright Office: denied. Letter stated: "nothing more than a familiar public domain symbol." Appealed again.
 After the denial of the second appeal of the examiner's decision, Brandir sent letters to customers enclosing copyright notices to be
placed on racks sold prior to December 1982. (its sales were about $1.367 M and even won awards and even featured in a
magazine.)
 Cascade Pacific Lumber Co began copying the bike racks. Brandir sued for copyright infringement.
 Cascade argued that Brandir could not copyright the bike racks because they weren't works of art, they were utilitarian, and
utilitarian items (aka useful articles) are not copyrightable.
 The Trial Court found for Cascade. Brandir appealed.
 The Appellate Court affirmed.
 The Appellate Court looked to 17 U.S.C. §101 and found that works with utilitarian features are only copyrightable to the extent that
the design features "can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the
article." This separablity can be either physical or conceptual.
ISSUE(S): WON the RIBBON Rack is copyrightable?
HELD: No. It is not copyrightable. It seems clear that 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 element.

RATIO:
Court interpreted §101 to mean that, "if design elements reflect a merger of aesthetic and functional considerations, the artist 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."
 Basically, the courts must look at the features of a work and decide if the creator chose those features for design reasons or
aesthetic reasons.

The Court looked at the features of the bike rack and found that the form of the bike rack was significantly influenced by utilitarian
concerns and not aesthetic concerns. Therefore there was no conceptual separability.

They applied the Denicola test. To state the 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.
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. Comparison of the RIBBON Rack with the
earlier sculptures, however, reveals that while the rack may have been derived in part from one of[sic ]more ‘‘works of art,’’ it is in its
final form essentially a product of industrial design.

In creating the RIBBON Rack, the designer has clearly adapted the original aesthetic elements to accommodate and further a
utilitarian purpose. These altered design features of the RIBBON Rack, including the space saving, open design achieved by widening
the upper loops to permit parking under as well as over the
rack’s curves, the straightened vertical elements that allow in-and above-ground installation of the rack, the ability to fit all types of
bicycles and mopeds, and the heavy-gauged tubular construction of rustproof galvanized steel are all features that combine to make
for a safe, secure, and maintenance-free system of parking bicycles and mopeds.

While the RIBBON Rack may be worthy of admiration for its aesthetic qualities alone, it remains nonetheless the product of industrial
design. Form and function are inextricably intertwined in the rack, its ultimate design being as much the result of utilitarian pressures
as aesthetic choices. Indeed, the visually pleasing proportions and symmetricality of the rack represent design changes made in
response to functional concerns. Judging from the awards the rack has received, it would seem in fact that Brandir has achieved with
the RIBBON Rack the highest goal of modern industrial design, that is, the harmonious fusion of function and aesthetics. Thus there
remains no artistic element of the RIBBON Rack that can be identified as separate and "capable of existing independently, of, the
utilitarian aspects of the article."
Concurrence. (Winter, J.) The relevant question should be whether the design of a useful article, however intertwined with the article’s
utilitarian aspects, causes an ordinary reasonable observer to perceive an aesthetic concept not related to the article’s use. The
answer to this question is clear in this case since any reasonable observer would easily see the bicycle rack as an ornamental
sculpture. The Copyright Act expressly states that the legal test is how the final article is perceived, not how it was developed at
various stages along the way.
Discussion. The majority in this case adopted a test suggested by Professor Denicola in his article “Applied Art and Industrial Design,”
67 Min. L. Rev. 707 (1983). The Winter dissent suggested applying a different test and another dissent suggested using a temporal
displacement test. In general, if a work is a useful article, the artistic elements have to be separate in order for the work to be
copyrightable.

Joaquin, Jr. and BJ Productions, Inc. v. Drilon AUTHOR: Castro

[G.R. No. 108946. January 28, 1999] NOTES: PD 49, Section 2. The Rights granted by this
TOPIC: Scope of Copyright 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.

RA 8293, 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)

Sec. 175. Unprotected Subject Matter. - Notwithstanding

the provisions of Sections 172 and 173, no protection
shall extend, under this law, to any idea, procedure,
system method or operation, concept, principle, discovery
or mere data as such, even if they are expressed,
explained, illustrated or embodied in a work; news of the
day and other miscellaneous facts having the character of
mere items of press information; or any official text of a
legislative, administrative or legal nature, as well as any
official translation thereof.
CASE LAW/ DOCTRINE:
P.D. No. 49, §2, in enumerating what are subject to copyright, refers to finished works and not to concepts. The
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.

FACTS:
 BJ Productions, Inc. (BJPI) is a holder of a Certificate of Copyright of Rhoda and Me, a dating game show.
 BJPI submitted to the National Library an addendum to its certificate of copyright specifying the show’s format and
style of presentation.
 While watching television on July 14, 1991, Francisco Joaquin, Jr. (President of BJPI) saw on RPN Channel 9 an
episode of It’s a Date, by IXL Productions, Inc. (IXL).
 He then wrote a letter to Gabriel Zosa (President/General Manager of IXL) informing him that BJPI had a copyright
to Rhoda and Me and demanding that IXL discontinue airing It’s a Date.
 Although Zosa apologized to Joaquin and requested a meeting to discuss a possible settlement, IXL continued
airing It’s a Date, prompting Joaquin to write a second letter.
 Meanwhile, Zosa was issued by the National Library a certificate of copyright for the first episode of It’s a Date,
upon registration.
 An Information for violation of P.D. No. 49 was filed against Zosa together with certain officers of RPN Channel 9 in
the Regional Trial Court of Quezon City.
 Upon review of the written descriptions of the formats of the televisions shows, the Investigation Prosecutor found
that there is infringement on the copyright of Rhoda and Me both in content and in execution because It’s a Date is
practically an exact copy of it. [Substantial similarities: two matches are made between a male and a female, both
single, and the two couples are treated to a night or two of dining and/or dancing at the expense of the show. The
major concepts of both shows are the same.]
 Zosa sought a review of the resolution of the Assistant City Prosecutor before the Department of Justice.
 Secretary of Justice Franklin Drilon (respondent) reversed the Assistant City Prosecutor’s findings and directed him
to move for the dismissal of the case against Zosa and the other officers.
 Joaquin filed a motion for reconsideration, but his motion was denied by Drilon. Hence, this petition.
Petitioners’ contention: The format of Rhoda and Me is a product of ingenuity and skill and is entitled to copyright
protection. Hence, there is copyright infringement.

Respondents’ contention: Joaquin and BJPI failed to establish the existence of probable cause due to their failure to
present the copyrighted master videotape of Rhoda and Me. They contend that BJPI’s copyright covers only a specific
episode of Rhoda and Me and that the formats or concepts of dating game shows are not covered by copyright
protection under P.D. No. 49.
ISSUE:
Whether formats or concepts of game shows are copyrightable
HELD:
No. The format of a show is not copyrightable.
RATIO:

BJPI’s copyright covering audio-visual recordings of each episode of Rhoda and Me, fall within the class of works
mentioned in P.D. 49, §2(M), to wit: Cinematographic works and works produced by a process analogous to
cinematography or any process for making audio-visual recordings. However, the copyright does not extend to the
general concept or format of its dating game show.

Section 2 of P.D. No. 49 (Decree on Intellectual Property), which is substantially the same as Sec. 172 of the
Intellectual Property Code (RA 8293), enumerates the classes of work entitled to copyright protection. (refer to the
notes above)

The format or mechanics of a television show is not included in the list of protected works in §2 of P.D. No. 49. For this
reason, the protection afforded by the law cannot be extended to cover them. Copyright, in the strict sense of the
term, is purely a statutory right. It is a new or independent right granted by the statute, and not simply a pre-existing
right regulated by the statute. Being a statutory grant, the rights are only such as the statute confers, and may be
obtained and enjoyed only with respect to the subjects and by the persons, and on terms and conditions specified in
the statute.

Since copyright in published works is purely a statutory creation, a copyright may be obtained only for a work falling
within the statutory enumeration or description. Regardless of the historical viewpoint, it is authoritatively settled in
the United States that there is no copyright except that which is both created and secured by act of Congress.

P.D. No. 49, §2, in enumerating what are subject to copyright, refers to finished works and not to concepts. The
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.

Regarding Secretary of Justice’s authority to determine whether the show’s formats are entitled to copyright
protection:
In reviewing resolutions of prosecutors, the Secretary of Justice is not precluded from considering errors, although
unassigned, for the purpose of determining whether there is probable cause for filing cases in court. It is indeed true
that the question whether the format or mechanics of petitioners’ television show is entitled to copyright protection is
a legal question for the court to make. This does not, however, preclude respondent Secretary of Justice from making
a preliminary determination of this question in resolving whether there is probable cause for filing the case in court. In
doing so in this case, he did not commit any grave error.

Regarding the failure to present the video tape of Rhoda and Me:

Accordingly, by the very nature of the subject of petitioner BJPI’s copyright, the investigating prosecutor should have
the opportunity to compare the videotapes of the two 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.

10 United Features Syndicate, Inc. AUTHOR: Miguel M. Consing

vs. Munsingwear Creation
Manufacturing Company
[G.R. No. 76193; November 9 1989]
TOPIC: Scope of Copyright
PONENTE: Paras, J.
NOTES:
United Features – United Features Syndicate, Inc.; owners of the
copyright to Charlie Brown (yes, the character)
Munsingwear – Munsingwear Creation Manufacturing Company;
registered a trademark to Charlie Brown so they could print it on a shirt

Director – Director of the Philippine Patent Office

Final Note: I did not focus on the procedural aspect of the case.
FACTS:
 United Features filed a case to cancel the registration of trademark CHARLIE BROWN in the name of
Munsingwear.

 United Features alleged that: (1) Munsingwear is not entitled to the registration of Charlie Brown; (2) United
Features owns the copyright to Charlie Brown; (3) United Features, as the owner, used and reproduced the
same to the exclusion of others; and (4) Munsingwear has no bona fide use of the trademark in commerce in
the Philippines prior to its application for registration.

 The Director ruled against United Features and held that a copyright registration like that of the name and
likeness of CHARLIE BROWN may not provide a cause of action for the cancellation of a trademark registration.

 United Features filed an MR which was denied. It appealed to the CA which denied the appeal. Hence this
appeal to the SC
ISSUE(S):
Was Munsingwear entitled to registration of the trademark for Charlie Brown?
HELD/RATIO:
No. Munsingwear is not entitled to the above registration.

Pertinently, Section 2 of Presidential Decree No. 49, otherwise known as the "Decree on Intellectual Property",
provides:
Section 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any of the
following classes of works:
xxx xxx xxx
(O) Prints, pictorial illustrations, advertising copies, labels, tags and box wraps. ...

Therefore, since the name "CHARLIE BROWN" and its pictorial representation were covered by a copyright registration
way back in 1950 the same are entitled to protection under PD No. 49.

Aside from its copyright registration, United Features is also the owner of several trademark registrations and
application for the name and likeness of "CHARLIE BROWN" which is the duly registered trademark and copyright of
petitioner United Feature Syndicate Inc. as early as 1957 and additionally also as TV SPECIALS featuring the
"PEANUTS" characters "CHARLIE BROWN"

United Features wins.

CASE LAW/ DOCTRINE:
Section 2 of Presidential Decree No. 49, otherwise known as the "Decree on Intellectual Property", provides:

Section 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any of the
following classes of works:

xxx

(O) Prints, pictorial illustrations, advertising copies, labels, tags and box wraps. ...

CASE Feist Publications, Inc. v. Rural Tel. Service AUTHOR: De Leon

Co., 499 U.S. 340
[G.R. No. DATE] Decided March 27, 1991
TOPIC: Scope of Copyright
PONENTE:
FACTS:
Respondent Rural Telephone Service Company (plaintiff) is a certified public utility providing telephone service to several communities in Kansas.
Due to a state regulation, it must issue an annual telephone directory, so it published a directory consisting of white and yellow pages. The yellow
pages have advertisements that generate revenue. It obtains data for the directory from subscribers, who must provide their names and addresses
to obtain telephone service.

Petitioner Feist Publications, Inc., is a publishing company that specializes in area-wide telephone directories covering a much larger geographic
range than directories such as Rural's.

Defendant (Feist Publications) distributes their telephone books free of charge, and they also generate revenue through the advertising in the
yellow pages. When Rural refused to license its white pages listings to Feist for a directory covering 11 different telephone service areas, Feist
extracted the listings it needed from Rural's directory without Rural's consent. Although Feist altered many of Rural's listings, several were
identical to listings in Rural's white pages. The District Court granted summary judgment to Rural in its copyright infringement suit, holding that
telephone directories are copyrightable. The Court of Appeals affirmed.

ISSUE(S): W/N the names, addresses, and phone numbers in a telephone directory can be copyrighted?

HELD: No

RATIO:
Facts cannot be copyrighted (phone numbers blab la), however compilations of facts can generally be copyrighted.
To qualify for copyright protection, a work must be original to the author, which means that the work was independently created by the author, and
it possesses at least some minimal degree of creativity. A work may be original even though it closely resembles other works so long as the
similarity is fortuitous, not the result of copying.

Facts are not original. The first person to find and report a particular fact has not created the fact; he has merely discovered its existence. Facts may
not be copyrighted and are part of the public domain available to every person.

Factual compilations may possess the requisite originality. The author chooses what facts to include, in what order to place them, and how to
arrange the collected date so they may be effectively used by readers. Facts, meets the constitutional minimum for copyright protection if it features
an original selection or arrangement. But, even though the format is original, the facts themselves do not become original through association. The
copyright on a factual compilation is limited to formatting. The copyright does not extend to the facts themselves.

To establish copyright infringement, two elements must be proven: ownership of a valid copyright and copying of constituent elements of the work
that are original. The first element is met in this case because the directory contains some forward text. As to the second element, the information
contains facts, which cannot be copyrighted (not original). They existed before being reported and would have continued to exist if a telephone
directory had never been published. There is no originality in the formatting, so there is no copyrightable expression. Thus, there is no copyright
infringement.

CASE LAW/ DOCTRINE: Facts cannot be subject to copyright laws; otherwise there would be no spreading of information or learning.
Subjecting facts to copyright laws would mean that any time a person used a fact found in a book, be it in a school paper, newspaper, or another
book, that person would be guilty of piracy.
DISSENTING/CONCURRING OPINION(S):
CASE TITLE: Community for Non-Violence v. AUTHOR: DELFIN
Reid NOTES:
[490 U.S. 730 (1989)] Art. 520. A trademark or trade name duly registered in the
TOPIC: WHO OWNS COPYRIGHT proper government bureau or office is owned by and
(Article 520 of the Civil Code) pertains to the person, corporation, or firm registering the
PONENTE: MARSHALL same, subject to the provisions of special laws.

*Not discussed in the case but by inference na lang on the

last phrase (I guess) since the law of agency was used
here to determine the owner of the copyright.
CASE LAW/ DOCTRINE:
 The Copyright Act of 1976 provides that copyright ownership "vests initially in the author or authors
of the work." 17 U.S.C. § 201(a). As a general rule, the 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. § 102.
The Act carves out an important exception, however, for "works made for hire."
 If the work is for hire, "the employer or other person for whom the work was prepared is considere the
author," and owns the copyright, unless there is a written agreement to the contrary. § 201(b). Classifying a
work as "made for hire" determines not only the initial ownership of its copyright, but also the copyright's
duration, § 302(c), and the copyright, § 601(b)(1). The contours of the work for hire doctrine therefore carry
profound significance for freelance creators -- including artists, writers, photographers, designers, composers,
and computer programmers -- and for the publishing, advertising, music, and other industries which
commission their works.

FACTS:
 In the fall of 1985, petitioners -- the Community for Creative Non-Violence (CCNV), a non-profit unincorporated
organization in Washington DC is an organization dedicated to eliminating homelessness in America, One of its
trustees, Mitch Synder entered into an oral agreement with respondent James Earl Reid, a sculptor, to produce
a statue dramatizing the plight of the homeless for display at a 1985 Christmas pageant in Washington.

 Snyder and fellow CCNV members conceived the idea for the nature of the display: a sculpture of a modern
Nativity scene in which, in lieu of the traditional Holy Family, the two adult figures and the infant would appear
as contemporary homeless people huddled on a streetside steam grate. The family was to be black (most of
the homeless in Washington being black); the figures were to be life-sized, and the steam grate would be
positioned atop a platform 'pedestal,' or base, within which special effects equipment would be enclosed to
emit simulated 'steam' through the grid to swirl about the figures. They also settled upon a title for the work --
'Third World America' -- and a legend for the pedestal: 'and still there is no room at the inn.'"

 In the course of two telephone calls, Reid agreed to sculpt the three human figures. CCNV agreed to make the
 steam grate and pedestal for the statue. Reid proposed that the work be cast in bronze, at a total cost of
approximately $100,000 and taking six to eight months to complete. Snyder rejected that proposal because
CCNV did not have sufficient funds, and because the statue had to be completed by December 12 to be
included in the pageant. Reid then suggested, and Snyder agreed, that the sculpture would be made of a
material known as "Design Cast 62," a synthetic substance that could meet CCNV's monetary and time
constraints, could be tinted to resemble bronze, and could withstand the elements. The parties agreed that
the project would cost no more than $15,000. Reid offered to donate his services. The parties did not
sign a written agreement. Neither party mentioned copyright.

 Throughout November and the first two weeks of December, 1985, Reid worked exclusively on the statue in
his Baltimore, Md. Studio. CCNV members visited him on a number of occasions to check on his progress and
to coordinate CCNV's construction of the sculpture's base in accordance with the parties' agreement. Reid
accepted most of CCNV's suggestions and directions as to the sculpture's configuration and appearance.

 After the completed work was delivered to Washington, CCNV paid Reid the final installment of the agreed-
upon price, joined the sculpture to its base, and displayed it. The parties, who had never discussed copyright
in the sculpture, then filed competing copyright registration certificates.

 The District Court ruled for CCNV in its subsequent suit seeking, inter alia, a determination of copyright
ownership, holding that the statue was a "work made for hire" as defined in the Copyright Act of 1976, 17
U.S.C. § 101, and was therefore owned exclusively by CCNV under § 201(b), which vests copyright ownership
of works for hire in the employer or other person for whom the work is prepared, unless there is a written
agreement to the contrary.

 The Court of Appeals reversed, holding that the sculpture was not a "work made for hire" under the first
subsection of the § 101 definition (hereinafter § 101(1)), since it was not "prepared by an employee within the
scope of his or her employment" in light of Reid's status as an independent contractor under agency law. The
court also ruled that the statue did not satisfy the second subsection of the § 101 definition (hereinafter §
101(2)), since sculpture is not one of the nine categories of "specially ordered or commissioned" works
enumerated therein, and the parties had not agreed in writing that the sculpture would be a work for hire.
However, the court remanded for a determination whether the statue was jointly authored by CCNV and Reid,
such that they were co-owners of the copyright under § 201(a).

ISSUE(S):
WON the statue is a work made for hire? Who is the rightful owner of the copyright?

HELD:
No, the statue is not a work made for hire. As such the rightful copyright owner is the artist Reid. However,
 may claim joint author thus a co-owner of the copyright.

RATIO:
 To determine whether a work is a "work made for hire" within the § 101 definition, a court should first apply
general common law of agency principles to ascertain whether the work was prepared by an employee or an
independent contractor, and, depending upon the outcome, should then apply either § 101(1) or § 101(2).
Although the Act nowhere defines "employee," "employment," or related terms, it must be inferred that
Congress meant them in their settled, common law sense, since nothing in the text of the work for hire
provisions indicates that those terms are used to describe anything other than the conventional relation of
employer and employee. On the contrary, Congress' intent to incorporate agency law definitions is suggested
by § 101(1)'s use of the term "scope of employment," a widely used agency law term of art.

 Moreover, the general common law of agency must be relied on, rather than the law of any particular State,
since the Act is expressly intended to create a federal law of uniform, nationwide application by broadly
preempting state statutory and common law copyright regulation. Petitioners' 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.

 The sculpture in question is not a "work made for hire" within the meaning of § 101. Reid was an
independent contractor, rather than a § 101(1) "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. Moreover, CCNV had no right to assign additional projects to Reid;
paid him in a manner in which independent contractors are often compensated; did not engage regularly in
the business of creating sculpture or, in fact, in any business; and did not pay payroll or Social Security taxes,
provide any employee benefits, or contribute to unemployment insurance or workers' compensation funds.

 Furthermore, as petitioners concede, the work in question does not satisfy the terms of § 101(2). Sculpture
does not fit within any of the nine categories of "specially ordered or commissioned" works enumerated in
that subsection, and no written agreement between the parties establishes "Third World America" as a work
for hire.
 However, CCNV nevertheless may be a joint author of the sculpture and, thus, a co-owner of the copyright
 under § 201(a), if, on remand, the District Court determines that the parties prepared the work with the
intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.

NOTES:
 Section 101 of the 1976 Act provides that a work is "for hire" under two sets of circumstances:
(1) a work prepared by an employee within the scope of his or her employment; or"
(2) a work specially ordered or commissioned for use as a contribution to a collective work,
as a part of a motion picture or other audiovisual work, as a translation, as a supplementary
work, as a compilation, as an instructional text, as a test, as answer material for a test, or
as 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. (this is where the claim hinges on)

DISSENTING/CONCURRING OPINION(S):

13 Aalmuhammed v Lee AUTHOR: Enriquez

202 F. 2d 1227 (2000) NOTES:

TOPIC: Who owns Copyright?

PONENTE: KLEINFELD
CASE LAW/ DOCTRINE: An author "superintends" the work by exercising control. This will likely be a person "who
has actually formed the picture by putting the persons in position, and arranging the place where the people are to be
- the man who is the effective cause of that," or "the inventive or master mind" who "creates, or gives effect to the
idea."

FACTS: Warner Brothers contracted with Spike Lee and his production companies to make the movie Malcolm X,
which starred Denzel Washington as Malcolm X. Washington asked Aalmuhammed to assist him in his preparation for
the starring role because Aalmuhammed knew a great deal about Malcolm X and Islam since he is a devout Muslim,
was particularly knowledgeable about the life of Malcolm X, having previously written, directed, and produced a
documentary film about Malcolm X.
Under the supervision of Lee, Aalmuhammed assisted with production of the movie, including helping Washington
with his role, directing Washington on set, suggesting script edits that were used in the final cut, ensuring historical
and religious accuracy, and editing some of the movie in post-production. However, Lee had the final say on all of
Aalmuhammed’s contributions.

Aalmuhammed did not have a written contract with Lee or Warner Brothers. Aalmuhammed requested but was denied
credit as a co-writer of the movie. Instead, he was in the credits as “Islamic Technical Consultant.”
This prompted Aalmuhammed to bring a suit against Lee, his production companies, and Warner Brothers, seeking a
declaratory ruling that Malcolm X was a joint work, and that Aalmuhammed was a co-author.

The district court granted Lee summary judgment. Hence, this appeal. (Hindi nabanggit kung bakit yung ang decision
ng district court)
ISSUE(S): Whether Aalmuhammed can be considered a co-author

HELD: No.
RATIO:
Criteria for joint authorship: (Sa case na to yung first criteria yung ginamit so kung mag recite kayo kay Papa P wag
niyo na lang banggitin yung dalawa pa kasi hindi na discuss sa case yung 2, unless tanungin niya)
 An author "superintends" the work by exercising control. This will likely be a person "who has actually formed
the picture by putting the persons in position, and arranging the place where the people are to be - the man
who is the effective cause of that," or "the inventive or master mind" who "creates, or gives effect to the idea."
 Putative coauthors make objective manifestations of a shared intent to be coauthors
 The audience appeal of the work turns on both contributions and the share of each in its success cannot be
appraised

In this case, Aalmuhammed did not at any time have superintendence of the work. Warner Brothers and Spike Lee
controlled it. Aalmuhammed was not the person "who has actually formed the picture by putting the persons in
position, and arranging the place. Spike Lee was, so far as we can tell from the record. Aalmuhammed could make
extremely helpful recommendations, but Spike Lee was not bound to accept any of them, and the work would not
benefit in the slightest unless Spike Lee chose to accept them. Aalmuhammed lacked control over the work, and
absence of control is strong evidence of the absence of co-authorship.

Also, neither Aalmuhammed, nor Spike Lee, nor Warner Brothers, made any objective manifestations of an intent to
be coauthors. Warner Brothers required Spike Lee to sign a "work for hire" agreement, so that even Lee would not be
a co-author and co-owner with Warner Brothers. It would be illogical to conclude that Warner Brothers, while not
wanting to permit Lee to own the copyright, intended to share ownership with individuals like Aalmuhammed who
worked under Lee's control, especially ones who at the time had made known no claim to the role of co-author. No
one, including Aalmuhammed, made any indication to anyone prior to litigation that Aalmuhammed was intended to
be a co-author and co-owner.

Aalmuhammed offered no evidence that he was the "inventive or master mind" of the movie. He was the author of
another less widely known documentary about Malcolm X, but was not the master of this one. What Aalmuhammed's
evidence showed, and all it showed, was that, subject to Spike Lee's authority to accept them, he made very valuable
contributions to the movie. That is not enough for co-authorship of a joint work.
DISSENTING/CONCURRING OPINION(S):

14 Arnstein v. Porter AUTHOR: Garcia

[154 F.2d 464 1946] NOTES:
TOPIC: Who owns copyright I tried 
PONENTE: Frank, Circuit Judge Wala talagang facts sa fulltext pero music yung subject ng case.
Also, di ko alam bakit under the topic ng ownership yung case eh wala
naming question about sa ownership sa case.
CASE LAW/ DOCTRINE:
 Two essential elements of copyright infringement:
o The defendant copied from plaintiff’s copyrighted work
o The copying went so far as to constitute improper appropriation
FACTS:
 Arnstein filed a copyright infringement action against Porter (musical compositions).
 Arnstein with his complaint filed a jury demand which Porter moved to strike out. Porter urges that the relief prayed in the complaint renders
a jury trial inappropriate.
 The court decided by summary judgment.
ISSUE(S):
Whether the lower court, under Rule 56, propertly deprived Arnstein of a trial of his copyright infringement action.
HELD:
No. Summary judgment was, then proper if indubitably defendant did not have access to plaintiff’s composition.
RATIO:
 Two essential elements of copyright infringement:
o The defendant copied from plaintiff’s copyrighted work
o The copying went so far as to constitute improper appropriation
With regard to copying
 The evidence as to copying may consist:
o Of defendant’s admission that he copied
o Of circumstantial evidence (evidence of access) – if there are no similarities, no amount of evidence of access will suffice to prove
copying. If there is evidence of access and similarities exist, then the trier of the facts must determine whether the similarities are
sufficient to prove copying.
 If evidence of access is absent, the similarities must be so striking as to preclude the possibility that plaintiff and defendant independently
arrived at the same result.
 After listening to the compositions as played in the phonograph, the Court finds similarities; but it holds that it did not compel the
conclusion, or permit the inference, that Porter copied. The similarities, however, are sufficient so that, if there is enough evidence of
 access to permit the case to go to the jury, the jury may properly infer that the similarities did not result from coincidence.
 Assuming that adequate proof is made of copying, that is not enough; for there can be “permissible copying,” copying which is not illicit.
With regard to the unlawful appropriation
 The plaintiff’s legally protected interest is not, as such, his reputation as a musician but his interest in the potential financial returns from
his compositions which derive from the lay public’s approbation of his efforts. The question, therefore, is whether defendant took from
plaintiff’s work so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is
composed, that the defendant wrongfully appropriated something which belongs to the plaintiff.
 The court was unable to conclude that the likenesses are so trifling that, on the issue of misappropriation, a trial judge could legitimately
direct a verdict for defendant.
DISSENTING/CONCURRING OPINION(S):

CASE TITLE Computer Associates v. Altai AUTHOR: LAST NAME

[G.R. No. Date] 982 F.2d. 693 (1992) NOTES:
TOPIC:
PONENTE: Walker
CASE LAW/ DOCTRINE:
For a finding of copyright infringement, the protectable, nonliteral elements of one computer program must be very similar to the same elements
in a second computer program.

The court discussed the doctrine of merger. The doctrine’s underlying principle is that when there is basically only one way to express an idea, the
idea and its expression are inseparable and copyright is no bar to copying that expression. In the computer context, this means that when specific
instructions even though previously copyrighted are the only and necessary means of completing an assigned task, their later use by another will
not amount to infringement.
FACTS:
Computer Associates (CA) International designed, developed, and marketed numerous types of computer programs, including “CA-Scheduler,” a
job-scheduling program containing a subprogram named “Adapter.” Adapter was a wholly integrated component of CA-Scheduler with no capacity
for independent use. In 1982, Altai, Inc. (Defendant) started to market its own job-scheduling program named “Zeke.”

Then, Defendant decided to rewrite Zeke to run in conjunction with a different operating system, and Altai’s (Defendant) president, Williams,
approached Arney, a computer programmer who work for Plaintiff, about working for Defendant. When Arney left Plaintiff to work for Defendant,
he took copies with him of the source code for two versions of Adapter and used them to design Altai’s (Defendant) new component-program,
“Oscar” (Version 3.4). Arney copied approximately 30% of Oscar’s code from Plaintiff’s Adapter program. When Plaintiff discovered that
Defendant may have appropriated parts of Adapter, it brought this copyright and trade secret misappropriation action against Altai (Defendant). A
rewrite of Oscar began, named Oscar 3.5.
The district court awarded Plaintiff $364,444 in actual damages and apportioned profits for copyright infringement regarding Oscar 3.4. However,
the court denied relief on Plaintiff’s second claim, finding that Oscar 3.5 was not substantially similar to Adapter. In addition, the court concluded
that Plaintiff’s state law trade secret misappropriation claim against Defendant was preempted by the federal copyright act. On appeal, Altai
(Defendant) conceded liability for the copying of Adapter into Oscar 3.4 and raised no challenge to the award of damages. Therefore, only CA’s
(Plaintiff) second and third claims were addressed on appeal.
ISSUE(S):
Whether or not a finding of copyright infringement, must the protectable, nonliteral elements of one computer program
be very similar to the same elements in a second computer program.
HELD:
Yes. It must be very similar to the same elements in the second program.
RATIO:
 It is now well settled that the literal elements of computer programs, i.e., their source and object codes, are the subject of copyright
protection. Altai made sure that the literal elements of its revamped Oscar program were no longer substantially similar to the literal
elements of CA’s Adapter. If the nonliteral structures of literary works are protected by copyright (and by law computer programs are
literary works), then the nonliteral structures of computer programs are also protected by copyright. It is a fundamental principle of
copyright law that a copyright does not protect an idea, but only the expression of the idea.

 A three-step procedure, based on the abstractions test the district court utilized, should be used to determine whether the nonliteral
elements of two or more computer programs are very similar. As applied to computer programs, the abstractions test will include the first
step in the examination for substantial similarity inquiry focuses on whether Defendant copied any aspect of this protected expression,
along with an assessment of the copied portion’s relative importance regarding Plaintiff’s overall program. After reviewing the record in
this case, this court can discern no error on the part of the district court judge.
DISSENTING/CONCURRING OPINION(S):

17. TIMOTHY BURTON ANDERSON v. SYLVESTER STALLONE, FREDDIE AUTHOR: LAURETA

FIELDS, DEAN STOLBER, FRANK YABLANS Individually, and MGM/UA, a NOTES: Rocky case
Corporation
11 U.S.P.Q.2D (BNA) 1161 April 25, 1989,
TOPIC: Who owns Copyright?
PONENTE: WILLIAM D. KELLER
CASE LAW/ DOCTRINE:
The Krofft Test is a two-part test for determining whether an allegedly infringing work is substantially similar to the
copyright holder's work. The first prong is referred to as the extrinsic test. Under the extrinsic test, analytic dissection
and expert testimony are employed to determine whether there is substantial similarity of ideas between the two works
in question. Application of the extrinsic test to analyze whether a movie is substantially similar to a script requires a
court to compare the plot, theme, dialogue, mood, setting, pace, sequence of events, and characters of the two works.
Since the extrinsic test relies on objective analytical criterion, this question may often be decided as a matter of law. The
second prong is referred to as the intrinsic test. Under the intrinsic test, the plaintiff must show that there is substantial
similarity of expression between the two works in question. The intrinsic test is subjective and is based on the response of the audience to the
look and feel of the two works.
FACTS:

The movies Rocky I, II, and III were extremely successful motion pictures. Sylvester Stallone wrote each script and played the role of Rocky Balboa,
the dominant character in each of the movies. In May of 1982, while on a promotional tour for the movie Rocky III, Stallone informed members of
the press of his ideas for Rocky IV. Although Stallone's description of his ideas would vary slightly in each of the press conferences, he would
generally describe his ideas as Rocky fighting with Russia in a giant stadium in Moscow a fight of astounding proportions.

In June of 1982, after viewing the movie Rocky III, Timothy Anderson wrote a thirty-one page treatment entitled "Rocky IV" that he hoped would
be used by Stallone and MGM Registered TM UA Communications Co. (hereinafter "MGM" ) as a sequel to Rocky III. The treatment incorporated
the characters created by Stallone in his prior movies and cited Stallone as a co-author.

In October of 1982, Mr. Anderson met with Art Linkletter, who was a member of MGM's board of directors. Mr. Linkletter set up a meeting,
between Mr. Anderson and Mr. Fields, who was president of MGM at the time. During the meeting, the parties discussed the possibility that
plaintiff's treatment would be used by defendants as the script or Rocky IV. At the suggestion of Mr. Fields, the plaintiff, who is a lawyer and was
accompanied by a lawyer at the meeting, signed a release that purported to relieve MGM from liability stemming from use of the treatment.
Plaintiff alleges that Mr. Fields told him and his attorney that "if they [MGM & Stallone] use his stuff [Anderson's treatment] it will be big money,
big bucks for Tim."

Stallone completed his Rocky IV script in October of 1984. Rocky IV was released in November of 1985. The complaint in this action was filed on
January 29, 1987.

Anderson brought the suit for copyright infringement, unfair competition, unjust enrichment, and breach of confidence against Stallone, MGM,
and other parties. Stallone et al. filed a motion for summary judgment which was granted in part and denied in part. Anderson appealed. The case
was thereafter resolved in a confidential out-of-court settlement.

ISSUE(S): W/N Rocky IV infringed upon Anderson’s work? No

HELD: The Court finds that Anderson's treatment is not entitled to copyright protection. This finding is based upon the following determinations
that will be delineated further below: (a) the Rocky characters developed in Rocky I, [*16] II and III constitute expression protected by copyright
independent from the story in which they are contained; (b) Anderson's treatment appropriated these characters and created a derivative work
based upon these characters without Stallone's permission in violation of Section 106(2); (c) no part of Anderson's treatment is entitled to
copyright protection as his work is pervaded by the characters of the first three Rocky movies that are afforded copyright protection.

RATIO:
1. Visually Depicted Characters Can Be Granted Copyright Protection
One test: Judge Hand set forth a test, simple in theory but elusive in application, to determine when a character should be granted copyright
protection. Essentially, under this test, copyright protection is granted to a character if it is developed with enough specificity so as to
constitute protectable expression.
Another test: A more rigorous test for granting copyright protection to character could not be granted copyright protection unless it
"constituted the story being told". (It was not clear how this is done)
Held: Rocky passed both tests
The Rocky Characters Are Entitled To Copyright Protection As A Matter Of Law - The Rocky characters are one of the most highly delineated
group of characters in modern American cinema. The physical and emotional characteristics of Rocky Balboa and the other characters were
set forth in tremendous detail in the three Rocky movies before Anderson appropriated the characters for his treatment. The
interrelationships and development of Rocky, Adrian, Apollo Creed, Clubber Lang, and Paulie are central to all three movies. Rocky Balboa is
such a highly delineated character that his name is the title of all four of the Rocky movies and his character has become identified with
specific character traits ranging from his speaking mannerisms to his physical characteristics. This Court has no difficulty ruling as a matter
of law that the Rocky characters are delineated so extensively that they are protected from bodily appropriation when taken as a group and
transposed into a sequel by another author.
This Court also finds that the Rocky characters were so highly developed and central to the three movies made before Anderson's treatment
that they "constituted the story being told". All three Rocky movies focused on the development and relationships of the various characters.
The movies did not revolve around intricate plots or story lines. Instead, the focus of these movies was the development of the Rocky
characters.
2. Anderson's Work is An Unauthorized Derivative Work
Under 17 U.S.C. section 106(2), the holder of a copyright has he exclusive right to prepare derivative works based upon his copyrighted
work. In this circuit a work is derivative "only if it would be considered an infringing work if the material which it had derived from a prior
work had been taken without the consent of the copyright proprietor of the prior work.
Usually a court would be required to undertake the extensive comparisons under the Krofft substantial similarity test to determine whether
Anderson's work is a derivative work. However, in this case, Anderson has bodily appropriated the Rocky characters in his treatment. This
Court need not determine whether the characters in Anderson's treatment are substantially similar to Stallone's characters, as it is
uncontroverted that the characters were lifted lock, stock, and barrel from the prior Rocky movies.
3. Since Anderson's Work Is An Unauthorized Derivative Work, No Part Of The Treatment Can Be Granted Copyright Protection
Stallone owns the copyrights for the first three Rocky movies. Under 17 U.S.C. section 106(2), he has the exclusive right to prepare
derivative works based on these copyrighted works. This Court has determined that Anderson's treatment is an unauthorized derivative
work. Thus, Anderson has infringed upon Stallone's copyright.
Nevertheless, plaintiff contends that his infringing work is entitled to copyright protection and he can sue Stallone for infringing upon his
treatment. Plaintiff relies upon 17 U.S.C. section 103(a) as support for his position that he is entitled to copyright protection for the non-
infringing portions of his treatment.
Held: He has not and cannot provide this Court with a single case that has held that an infringer of a copyright is entitled to sue a third party
for infringing the original portions of his work. Nor can he provide a single case that stands for the extraordinary proposition he proposes
here, namely, allowing a plaintiff to sue the party whose work he has infringed upon for infringement of his infringing derivative work.
4. Summary Judgment Is Appropriate On The Copyright Claims Because Rocky IV Is Not Substantially Similar To Anderson's Treatment
The Krofft Test - Two part test for determining whether an allegedly infringing work is substantially similar to the copyright holder's work.
(check full text for the comparison of the 2 stories)
 Under the extrinsic test, analytic dissection and expert testimony are employed to determine whether there is substantial similarity
of ideas between the two works in question. Application of the extrinsic test to analyze whether a movie is substantially similar to a
script requires a court to compare the plot, theme, dialogue, mood, setting, pace, sequence of events, and characters of the two
works. z\
 Under the intrinsic test, the plaintiff must show that there is substantial similarity of expression between the two works in
question. The intrinsic test is subjective and is based on the response of the audience to the look and feel of the two works. In this
case, the intrinsic test requires a determination of whether the ordinary reasonable audience could recognize the movie Rocky IV as
a dramatization or picturization of Mr. Anderson's work.

The unusual circumstances of this case also distinguish it from other infringement cases and make a finding of non-infringement
appropriate. The first three Rocky movies were made before Anderson wrote his treatment. Plaintiff concedes that he wrote his sequel after
viewing the movies. Thus, Anderson is precluded from basing any inference of copying by Stallone in Rocky IV from similarities that flow
naturally from the fact that both works are sequels to the first three movies. Second, it is uncontroverted that Stallone had already
developed the idea that Rocky IV would center around a symbolic boxing confrontation between the United States and Russia before he
knew that plaintiff's treatment existed. Thus, any similarity in the two works based on this symbolic confrontation cannot give rise to an
inference that Stallone appropriated this idea from Anderson. Third, it is uncontroverted that it was the defendant, not the plaintiff, who
developed the majority of characters in plaintiff's work. Even if a court were to find that these characters were not copyrightable, the fact
that they originated with the defendant precludes any finding of similarity based on this common element of the two works.

DISSENTING/CONCURRING OPINION(S):

18 SONY CORPORATION OF AMERICA V UNIVERSAL AUTHOR: PAGCALIWAGAN

STUDIOS, INC NOTES:
464 US 417 January 17, 1984
TOPIC: Who owns copyright?
PONENTE: Justice Stevens
CASE LAW/ DOCTRINE:

FACTS:
 Sony Corporation manufactures home videotape recorders (VCR or VTR) and markets them through retail
establishments
 Members of general public use VTRs sold by Sony to record some of respondents’ broadcasts, as well as a
large number of other broadcasts
 Universal Studios and Disney Productions are holders of copyrights on televised movies and other televised
programs. They brought an action for contributory copyright infringement, alleging that:
 VTR consumers had been recording some of Universal Studios’ copyrighted works that had been exhibited
on commercially sponsored television and thereby infringed respondents’ copyrights;
 Sony Corporation are liable for copyright infringement because of their marketing of the VTR’s
 Sought money damages, an equitable accounting of profits and an injunction against the manufacture and
marketing of the VTR’s

District Court: Denied petition. Ruled that non-commercial home use recording of material broadcast over the public
airwaves was a fair use of copyrighted works, and did not constitute copyright infringement, and petitioners could not
be held liable as contributory infringers even if the home use of a VTR was considered an infringing use.
Court of Appeals: Reversed the decision. Petitioners are liable for contributory infringement and.
ISSUE(S): WON the sale of VTRs to general public constitutes contributory infringement of respondents’ copyrights.

HELD: NO.

RATIO:
The average member of the public uses a VTR principally to record a program he cannot view as it is being televised,
and then to watch it once at a later time. This practice, known as "time-shifting," enlarges the television viewing
audience. For that reason, a significant amount of television programming may be used in this manner without
objection from the owners of the copyrights on the programs. Respondents were not able to prove that the practice
has impaired the commercial value of their copyrights or has created any likelihood of future harm.

Any individual may reproduce a copyrighted work for a “fair use,” the copyright owner does not possess the exclusive
right to such use.

Kalem Co. v. Harper Brothers, does not support respondents' novel theory that supplying the "means" to accomplish
an infringing activity and encouraging that activity through advertisement are sufficient to establish liability for
copyright infringement. This case does not fall in the category of those in which it is manifestly just to impose
vicarious liability because the "contributory" infringer was in a position to control the use of copyrighted works by
others and had authorized the use without permission from the copyright owner. Here, the only contact between
petitioners and the users of the VTR's occurred at the moment of sale. And there is no precedent for imposing
vicarious liability on the theory that petitioners sold the VTR's with constructive knowledge that their customers
might use the equipment to make unauthorized copies of copyrighted material. The sale of copying equipment, like
the sale of other articles of commerce, does not constitute contributory infringement if the product is widely used for
legitimate, unobjectionable purposes, or, indeed, is merely capable of substantial noninfringing uses.

DISSENTING/CONCURRING OPINION(S):