Copyright Law Midterms

Atty. Ferdinand Negre

SY 2017-2018
SYLLABUS Authorship and Originality

I. INTRODUCTION • Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884)
• 
Bleistein v. Donaldson Lithographing Co.188 U.S. 239
A. A. The Development of Philippine Copyright Law,
(1903)
Christopher Lim, 46 Ateneo L.J. 369 (2001)
• 
Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d
Cir. 1951)

• Kho v. Court of Appeals, 379 SCRA 410 (2002)
• Muller & Co. v. New York Arrows Soccer Team Inc., 802
B. Protection of Intellectual Property and the Constitution F.2d 989 (US: Court of Appeals, 8th Cir., 1986)
• Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc. 528 F.3d
Section 13, 15, 16 Article XIV 

1258 (10th Cir. 2008)

Section 6 & 19, Article XII • Mannion v. Coors Brewing Company, 377 F. Supp. 2d 444
(S.D.N.Y. 2006)

• ABS-CBN v. Phil. Multi-Media, G.R. 175769-70, Jan. 19,
2009 
 Creativity
C. Universal Declaration of Human Rights Articles 17, 19, 27 
 • 
Feist Publications, Inc. v. Rural Telephone Service Co., 499
U.S. 340 (1991)
D. Overview: Berne Convention for the Protection of Literary
and Artistic Works 
 C. When Copyright Vests
E. TRIPs Agreement/WTO Treaty • Santos v. McCullough Printing Co., 12 SCRA 321 (1964)

Overview 
 • Filipino Society of Composers v. Benjamin Tan, 148 SCRA
Fundamental Principles, e.g. National Treatment v. Most 461 (1987)
Favored Nation Principle [Articles 3 and 4] • Unilever Philippines (PRC) v. CA, GR No. 119280, 10
Exhaustion of intellectual property rights [Article 6]
 August 2006
Abuse of Intellectual Property Rights [Article 8, Paragraph 2]
 Section 2, PD 49
Accession to WTO and TRIPS Compliance [Article 2]

Article 5(2), Berne Convention for the Protection of Literacy and
II. THE SUBJECT MATTER OF COPYRIGHT LAW Artistic Works

A. Definitions Section 172 and 172.2, IPC

Section 177, Intellectual Property Code (IPC)
Rules 2,
11-12, Copyright Safeguards and Regulations (issued by the
National Library)
B. Prerequisites for and Elements of Copyrightable Subject
Matter
Section 172.1, 172.2, IPC
• Ching Kian Chuan v. CA, 363 SCRA 142 (2001)
• 
Sambar v. Levi Strauss, 378 SCRA 364 (2002)

Rule 7, Sections 2-4, Copyright Safeguards and Regulations
D. Scope of Copyright
1. Original works
Article 2, Berne Convention for the Protection of Literacy and
Artistic Works
Sections 172, 172.2, 173, 173.2, 174, 175, 176 IPC

• 
Joaquin v. Drilon, 302 SCRA 225 (1999)

 • United Feature Syndicate v. Munsingwear, 179 SCRA 260
(1989)
2. The "Idea/Expression" Distinction
• Baker v. Selden, 101 U.S. 99 (1879)
• 
A.A. Hoehling v. Universal City Studios, Inc., 618 F.2d 972
(2d Cir.), cert. denied, 449 U.S. 841 (1980)
• American Dental Association v. Delta Dental Plans
Association, 126 F.3d 977 (7th Cir. 1997)
Derivative Works and Compilations

• L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir.) (en
banc), cert. denied, 429 U.S. 857 (1976)
• Entertainment Research Group, Inc. v. Genesis Creative
Group, Inc., 122 F.3d 1211 (9th Cir. 1997), cert. denied, 523
U.S. 1021 (1998)
 •
• Pickett v. Prince, 207 F.3d 402 (7th Cir. 2000)
• 
Feist Publications, Inc. v. Rural Telephone Service Co., 499
U.S. 340 (1991)
 Useful Articles [works of applied art] and Doctrine of Separability
• Roth Greeting Cards v. United Card Co., 429 F.2d 110 (9th
Cir. 1970)
 (2d Cir. 1980)
• Mason v. Montgomery Data, Inc., 967 F.2d 135 (5th Cir.
1992)
E. Authorship
Section 174, 178, 179 IPC
Article 520, 722 and 723, Civil Code
1. Sole Authorship
• Lindsay v.The Wrecked and Abandoned Vessel R.M.S.
Titanic, 52 U.S.P.Q.2d 1609 (S.D.N.Y. 1999)
2. Joint Authorship
• Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994)
• Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 1999)
3. Works Made for Hire
• Community for Creative Non-Violence v. Reid, 490 U.S. 730
(1989)
• Aymes v. Bonelli, 980 F.2d 857 (2d. Cir. 1992)
 Inc., 49 F.3d 807 (1st Cir. 1995), affirmed by an equally
• Roeslin v. District of Columbia, 921 F. Supp. 793 (D.D.C.
1995)
4. Government Works
Section 176 IPC
F. Duration of Copyright
Articles 7 and 7bis, Berne Convention for the Protection of
Literary and Artistic Works
Section 213-214, IPC
III. PROTECTED WORKS AND BOUNDARY PROBLEMS
A. Useful Articles with Pictorial, Graphic, or Sculptural
Aspects
Mazer v. Stein, 347 U.S. 201 (1964)

• Lucasfilm v. Ainsworth, UKSC 39 (27 July 2011)



• Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989
• 
Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411
(2d Cir. 1985)
• 
Brandir International, Inc. v. Cascade Pacific Lumber Co.,
834 F.2d 1142 (2d Cir. 1987)
• Star Athletica vs Varsity Brands (580 US ___, March 22,
2017)
B. Computer Software
• Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d
1240 (3d Cir. 1983), cert. dismissed, 464 U.S. 1033 (1984)

Distinguishing Idea from Expression in Software

• Computer Associates International, Inc. v. Altai, Inc., 982
F.2d 693 (2d Cir. 1992)
• Softel, Inc. v. Dragon Medical and Scientific
Communications, Inc., 118 F.3d 955 (2d Cir. 1997), cert.
denied, 523 U.S. 1020 (1988)
• Lotus Development Corporation v. Borland International,
divided court, 516 U.S. 233 (1996)

FARADO 2
 
EU Software Directive, Directive on the Legal Protection of • 
Matthew Bender & Co. v. West Publishing Co., 158 F.3d 693
Computer Programs, 1991 O.J. (L-122) 42 (EU Software (2d. Cir. 1998), cert. denied, 526 U.S. 1154 (1999)
Directive) • Art. 17 of the Berne Convention
Attorney General v.
Guardian Newspapers Ltd., [1990] A.C. 109 (U.K., House of
C. Architectural Works
Lords)
Section 186, IPC
F. Literary works
• Nelson-Salabes, Inc. v. Morningside Holdings, 2001 WL
Short phrases
419002 (D. Md. 2001), affirmed in part, revised in part on
other grounds, 284 F.3d 505 (4th Cir. 2002)
 • Exxon Corp. v. Exxon Insurance Consultants Ltd, [1982] Ch.
• Intervest Construction, Inc. v. Canterbury Estate Homes, 119 (U.K.: High Court and Court of Appeal) 

Inc., 554 F.3d 914 (11th Cir. 2008
Speech and interviews

D. Characters
• Falwell v. Penthouse International Ltd, 215 U.S.P.Q. 975
1. Expression or Idea? (U.S.: District Court, West Virginia, 1981) 

• Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., Blank forms
900 F. Supp. 1287 (C.D. Cal. 1995)
• 
Bibbero Systems Inc. v. Colwell Systems, Inc., 893 F.2d
• Titan Sports, Inc. v. Turner Broadcasting Systems, Inc., 981
1104 (U.S. Court of Appeals, 9th Cir., 1989) 

F. Supp. 65 (D. Conn. 1997)
• Designers Guild Ltd. v. Russell Williams (Textiles) Ltd,
[2000] 1 W.L.R. 2416 (U.K.: House of Lords)
• Anderson v. Stallone, 11 U.S.P.Q.2d 1161
2. Rights of Publicity
• Wendt v. Host Int’l, Inc., 125 F.3d 806, 811 (9th Cir. 1997)

• White v. Samsung Elecs. Am., Inc., 971 F.2d 1395 (9th Cir.
1992)
3. Databases
a) Selection, Arrangement, and Utility
• Bellsouth Advertising & Publishing Corp. v. Donnelley
Information Publishing, Inc., 999 F.2d 1436 (11th Cir. 1993)
(en banc), cert. denied, 510 U.S. 1101 (1994)

• CCC Information Services, Inc. v. Maclean Hunter Market
Reports, Inc., 44 F.3d 61 (2d Cir. 1994), cert. denied, 516
U.S. 817 (1995)
b) What Is a "Fact"?
E. Works that violate the public order
• CDN Inc. v. Kapes, 197 F.3d 1256 (19th Cir. 1999)

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 I. INTRODUCTION
A. The Development of Philippine Copyright Law (ALJ Article); Kho
v. Court of Appeals, 379 SCRA 410 (2002)
[See ALJ Article]
B. Protection of Intellectual Property and the Constitution
: Section
13, 15, & 16 of Article XIV
; Section 6 & 19 of Article XII.
Article 14
SECTION 13. The State shall protect and secure the exclusive rights of
scientists, inventors, artists, and other gifted citizens to their intellectual
property and creations, particularly when beneficial to the people, for
such period as may be provided by law.
SECTION 15. Arts and letters shall enjoy the patronage of the State. The
State shall conserve, promote, and popularize the nation’s historical and
cultural heritage and resources, as well as artistic creations.
SECTION 16. All the country’s artistic and historic wealth constitutes the
cultural treasure of the nation and shall be under the protection of the
State which may regulate its disposition.
Article 12
SECTION 19. The State shall regulate or prohibit monopolies when the
public interest so requires. No combinations in restraint of trade or unfair
competition shall be allowed.
SECTION 6. The use of property bears a social function, and all
economic agents shall contribute to the common good. Individuals and
private groups, including corporations, cooperatives, and similar
collective organizations, shall have the right to own, establish, and
operate economic enterprises, subject to the duty of the State to promote
distributive justice and to intervene when the common good so demands.
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C. Universal Declaration of Human Rights
Articles 17, 19, 27
ARTICLE 17. (1) Everyone has the right to own property alone as well as
in association with others. (2) No one shall be arbitrarily deprived of his
property.
ARTICLE 19. Everyone has the right to freedom of opinion and
expression; this right includes freedom to hold opinions without
interference and to seek, receive and impart information and ideas
through any media and regardless of frontiers.
ARTICLE 27. (1) Everyone has the right freely to participate in the
cultural life of the community, to enjoy the arts and to share in scientific
advancement and its benefits. (2) Everyone has the right to the
protection of the moral and material interests resulting from any
scientific, literary or artistic production of which he is the author.
D. Overview: Berne Convention for the Protection of Literary and
Artistic Works
[See Berne Convention]
E. TRIPs Agreement/WTO Treaty: A. Overview
 B. Fundamental
Principles, e.g. National Treatment v. Most Favored Nation Principle
[Articles 3 and 4]
 C. Exhaustion of intellectual property rights
[Article 6]
 D. Abuse of Intellectual Property Rights [Article 8,
Paragraph 2]
 E. Accession to WTO and TRIPS Compliance [Article
2]
ARTICLE 3: National Treatment
.
1. Each Member shall accord to the nationals of other Members
treatment no less favorable than that it accords to its own nationals with
regard to the protection of intellectual property, subject to the exceptions
already provided in, respectively, the Paris Convention (1967), the Berne
Convention (1971), the Rome Convention or the Treaty on Intellectual
Property in Respect of Integrated Circuits. In respect of performers,
producers of phonograms and broadcasting organizations, this obligation
only applies in respect of the rights provided under this Agreement. Any
Member availing itself of the possibilities provided in Article 6 of the
Berne Convention (1971) or paragraph 1(b) of Article 16 of the Rome
4
Convention shall make a notification as foreseen in those provisions to
the Council for TRIPS.
2. Members may avail themselves of the exceptions permitted under
paragraph 1 in relation to judicial and administrative procedures,
including the designation of an address for service or the appointment of
an agent within the jurisdiction of a Member, only where such exceptions
are necessary to secure compliance with laws and regulations which are
not inconsistent with the provisions of this Agreement and where such
practices are not applied in a manner which would constitute a disguised
restriction on trade.
ARTICLE 4: Most-Favored-Nation Treatment
.
With regard to the protection of intellectual property, any advantage,
favor, privilege or immunity granted by a Member to the nationals of any
other country shall be accorded immediately and unconditionally to the
nationals of all other Members. Exempted from this obligation are any
advantage, favor, privilege or immunity accorded by a Member:
(a) Deriving from international agreements on judicial
assistance or law enforcement of a general nature and not
particularly confined to the protection of intellectual property;
(b) Granted in accordance with the provisions of the Berne
Convention (1971) or the Rome Convention authorizing that
the treatment accorded be a function not of national treatment
but of the treatment accorded in another country
(c) In respect of the rights of performers, producers of
phonograms and broadcasting organizations not provided
under this Agreement;
(d) Deriving from international agreements related to the
protection of intellectual property which entered into force prior
to the entry into force of the WTO Agreement, provided that
such agreements are notified to the Council for TRIPS and do
not constitute an arbitrary or unjustifiable discrimination against
nationals of other Members.
ARTICLE 6: Exhaustion
.
For the purposes of dispute settlement under this Agreement, subject to
the provisions of Articles 3 and 4 nothing in this Agreement shall be used
to address the issue of the exhaustion of intellectual property rights.
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ARTICLE 8: Principles
.
2. Appropriate measures, provided that they are consistent with the
provisions of this Agreement, may be needed to prevent the abuse of
intellectual property rights by right holders or the resort to practices
which unreasonably restrain trade or adversely affect the international
transfer of technology.
ARTCLE 2: Intellectual Property Conventions

1. In respect of Parts II, III and IV of this Agreement, Members shall
comply with Articles 1 through 12, and Article 19, of the Paris Convention
(1967).
2. Nothing in Parts I to IV of this Agreement shall derogate from existing
obligations that Members may have to each other under the Paris
Convention, the Berne Convention, the Rome Convention and the Treaty
on Intellectual Property in Respect of Integrated Circuits.
II. THE SUBJECT MATTER OF COPYRIGHT LAW
A. Definitions
Section 177, Intellectual Property Code (IPC)
Section 177. Copyright or Economic Rights. - Subject to the provisions of
Chapter VIII, copyright or economic rights shall consist of the exclusive
right to carry out, authorize or prevent the following acts:
177.1. Reproduction of the work or substantial portion of the work;
177.2. Dramatization, translation, adaptation, abridgment, arrangement
or other transformation of the work;
177.3. The first public distribution of the original and each copy of the
work by sale or other forms of transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or
cinematographic work, a work embodied in a sound recording, a
computer program, a compilation of data and other materials or a
musical work in graphic form, irrespective of the ownership of the original
or the copy which is the subject of the rental;
177.5. Public display of the original or a copy of the work;

5
177.6. Public performance of the work; and
 independently-created computer program with other programs;
177.7. Other communication to the public of the work.
Rules 2, 11-12, Copyright Safeguards and Regulations (issued by the
National Library)
Rule 2. Definition of Terms. 
For the purpose of these Copyright
Safeguards and Regulations, the following terms are herein defined:
Author is the natural person who has created the work;

Collective work is work which has been created by two (2) or more
natural persons at the initiative and under the direction of another with
the understanding that it will be disclosed by the latter under his own
name and that contributing natural persons will not be identified;
Communication to the public or communicate to the public means
the making of a work available to the public by wire or wireless means in
such a way that members of the public may access these works from a
place and time individually chosen by them;

Computer program is a set of instructions capable, when incorporated
in machine-readable medium, of causing a machine having information-
processing capabilities, to indicate, perform, or achieve a particular
function, task, or result;
Copyright is a right granted by statute to the author or originator of
literary, scholarly, scientific, or artistic productions, including computer
programs. A copyright gives him the legal right to determine how the
work is used and to obtain economic benefits from the work. For
example, the owner of a copyright for a book or a piece of software has
the exclusive rights to use, copy, distribute, and sell copies of the work,
including later editions or versions of the work. If another person
improperly uses material covered by a copyright, the copyright owner
can obtain legal relief;
Copyright Office refers to the Copyright Division of the National Library;
Copyright symbol is represented by ©;

Date of Publication is the earliest date when a copy of the first
authorized edition of the work was placed on sale, sold, distributed, or
otherwise made available to the public, by the copyright owner or his
representative;
Decompilation means the reproduction of the code and the translation
of the forms of a computer program to achieve the inter- operability of an
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Exhibition of an audiovisual work means any form of exploitation of a
work, including its distribution in copies, its public performance, and its
communication to the public, including broadcast or rebroadcast, cable
retransmission, or satellite broadcast or transmission;
Fee refers to the amount prescribed by The National Library for the
issuance of a Certificate of Registration and Deposit to claim
copyright or for the filing of assignment or license, or for such other
services or transactions as may be covered by these Copyright

Safeguards and Regulations; 

Performance symbol is represented by p; 

Public lending is the transfer of possession of the original or a copy 
of a
work or multimedia for a limited period, for non-profit purposes, by an
institution the services of which are available to the public, such as a
public library or archive; 

Public performance is the recitation, playing, dancing, acting or any
performance of the work, either directly or by means of any device or
process; in the case of an audiovisual work, the broadcast or showing of
its images in sequence and the making of the sounds accompanying it
audible; and in the case of a sound recording, the making of the
recorded sounds audible at a place or at places where persons outside
the normal circle of a family and that family’s closed social
acquaintances are or can be present, irrespective of whether they are or
can be present at the same place and at the same time, or at different
places and/or different times, and where the performance can be
perceived without the need for communication within the meaning of
“communication to the public” defined above; 

Published work means work which, with the consent of the author, is
made available to the public by wire or wireless means in such a way
that members of the public may access the work from a place and time
individually chosen by them: Provided, That availability of such copies
has been such as to satisfy the reasonable requirements of the public,
having regard to the nature of the work; Publisher is one who produces
and makes available for circulation or distribution the published work; 

Rental is the transfer of the possession of the original or a copy of a
work or multimedia for a limited period of time, for profit-making
purposes; 

6
Reproduction is the making of one (1) or more copies of a work,
including multimedia, in any manner or form. A reprographic
reproduction, as authorized under certain circumstances by the IPC,
does not include a digital or machine-readable copy, but is limited to
photography, xerography and similar processes, resulting in a paper or
microform copy; 

Reprographic right is one exercisable anywhere to reproduce or
authorize the reproduction of the work by means of any appliance or
process capable of producing multiple copies of the work in such a 
form
that the work may be perceived visually. Reprography and other forms of
reproduction require the permission of the copyright holder;
SAR shall refer to these Copyright Safeguards and Regulations issued
pursuant to the IPC;

SCL refers to the Library of the Supreme Court of the Republic of the
Philippines;

TNL refers to The National Library of the Republic of the Philippines;
TNL Director refers to the head of The National Library of the Republic
of the Philippines;

Unpublished work means work that has not been disseminated,
circulated or distributed to the public prior to its registration with the
Copyright Office;

Work refers to any original work, derivative work, performance of
producers, sound recording, or recording of broadcasting organizations.
Derivative work is work that is derived from another work;
Work of Applied Art is an artistic creation with utilitarian functions, or
incorporated in a useful article, whether made by hand or produced on
an industrial scale;
Work of the Government of the Philippines is work created by an
officer or employee of the Philippine Government or any of its
subdivisions and instrumentalities, including government-owned or
controlled corporations, as part of his regularly prescribed official duties.
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B. Prerequisites for and Elements of Copyrightable Subject Matter
Section 172.1, 172.2, IPC
Section 171. Definitions. - For the purpose of this Act, the following terms
have the following meaning:
171.1. "Author" is the natural person who has created the work;
Section 172. Literary and Artistic Works. -
172.1. Literary and artistic works, hereinafter referred to as "works", are
original intellectual creations in the literary and artistic domain protected
from the moment of their creation and shall include in particular:
(a) Books, pamphlets, articles and other writings; (b) Periodicals and
newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral
delivery, whether or not reduced in writing or other material form;
(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;
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(n) Computer programs; and original work of art is a question to be determined by proof of the
facts of originality, of intellectual production, and of thought and
(o) Other literary, scholarly, scientific and artistic works.
conception on the part of the author, and when the copyright is
172.2. Works are protected by the sole fact of their creation, irrespective disputed, it is important to establish those facts.
of their mode or form of expression, as well as of their content, quality
and purpose. (Sec. 2, P.D. No. 49a)
Bleistein v. Donaldson Lithographing Co.188 U.S. 239 (1903)C
• This is a case in which the United States Supreme Court found
Ching Kian Chuan v. CA, 363 SCRA 142 (2001) that chromolithographs used in advertisements (of circus
performance) were protected by copyright. The case is now cited
• A person to be entitled to a copyright must be the original creator
for the proposition that commercial speech can be protected by
of the work. He must have created it by his own skill, labor and
copyright.
judgment without directly copying or evasively imitating the work
• Chromolithographs representing actual groups of persons and
of another.
things, which have been designed from hints or descriptions of
• The grant of preliminary injunction in a case rests on the sound
the scenes represented, and which are to be used as
discretion of the court with the caveat that it should be made with
advertisements for a circus are “pictorial illustrations” within the
extreme caution. Its grant depends chiefly on the extent of doubt
meaning of Rev. Stat. Sec. 4962, allowing a copyright to the
on the validity of the copyright, existence of infringement, and the
“author, designer, or proprietor of any engraving, cut, print or
damages sustained by such infringement. 

chromo”. And on complying with all the statutory requirements,
the proprietors are entitled to the protection of the copyright laws.
Sambar v. Levi Strauss, 378 SCRA 364 (2002) • Advertisements are protected by copyright laws.
• The essence of copyright registration is originality and a copied
design is inherently non-copyrightable. Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951)
• Mezzotint engravings of old masters are copyrightable. These
Authorship and Originality are considered as translations.
• Not only does the Act include "Reproductions of a work of art",
but, while prohibiting a copyright of "the original text of any work
Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884) in the public domain", it explicitly provides for the copyrighting
of "translations, or other versions of works in the public
• It is within the constitutional power of Congress to confer upon
domain". The mezzotints were such "versions."
the author, inventor, designer, or proprietor of a photograph the
• They "originated" with those who made them, and — on the trial
rights conferred by Rev.Stat. § 4952, so far as the photograph is
judge's findings well supported by the evidence — amply met the
a representation of original intellectual conceptions.
standards imposed by the Constitution and the statute. There is
• The object of the requirement in the Act of June 18, 1874, 18
evidence that they were not intended to, and did not, imitate the
Stat. 78, that notice of a copyright in a photograph shall be given
paintings they reproduced
by inscribing upon some visible portion of it the words Copyright,
• It is clear, then, that nothing in the Constitution commands that
the date, and the name of the proprietor, is to give notice of the
copyrighted matter be strikingly unique or novel. A “copy of
copyright to the public, and a notice which gives his surname
something in the public domain” will support a copyright if it is a
and the initial letter of his given name is sufficient inscription of
“distinguishable variation.”
the name.
• All that is needed to satisfy both the Constitution and the statute
• Whether a photograph is a mere mechanical reproduction or an

FARADO 8
 is that the ‘author’ contributed something more than a ‘merely
trivial’ variation, something recognizably ‘his own.’
• Originality in this context ‘means little more than a prohibition of
actual copying. No matter how poor artistically the ‘author’s’
addition, it is enough if it be his own.
Muller & Co. v. New York Arrows Soccer Team Inc., 802 F.2d 989
(US: Court of Appeals, 8th Cir., 1986)
• In order to be copyrightable, a work must show certain minimal
levels of creativity and originality. Work must embody some
creative authorship in its delineation or form.
Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc. 528 F.3d 1258
(10th Cir. 2008)
• In order for a work to be copyrightable, it must contain a degree
of originality, as copyright protection only extends to “original
works of authorship.” Not every work of authorship, let alone
every aspect of every work of authorship, is protectable by
copyright; only original expressions are protected.
Mannion v. Coors Brewing Company, 377 F. Supp. 2d 444 (S.D.N.Y.
2006)
• The operative distinction is between ideas or facts in the world,
which cannot be copyrighted, and a particular expression of that
idea or fact, which can be copyrighted. Assuming the absence of
original written expression, only the compiler’s selection and
arrangement may be protected; the raw facts may be copied at
will.
• Facts and ideas are the public’s domain and open to exploitation
to ensure the progress of science and the useful arts. Only
original expressions of those facts or ideas are copyrightable. To
the extent that Meshwerks’ digital wire fram models depict only
unadorned vehicles, having stripped away all the lighting, angle,
perspective, and other ingredients associated with an original
expression, they have no copyrightable matter. How the models
Meshwerks created were to be deployed in advertising, including
the backgrounds, lighting, angles, and colors, were all matters
left to G&W & Saatchi. One possesses no copyright interest in
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reproductions, when these reproductions do nothing more than
accurately convey the underlying image. The fact that intensive,
skillfull, and even creative labor is invested in the process of
creating a product does not guarantee its copyrightability.
Creativity
Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340
(1991)
• The court stated that no one may claim originality as to facts.
This is because facts do not owe their origin to an act of
authorship. The distinction lies between creation and discovery
and that the first person to find and report a particular fact has
not created the fact; he or she has merely discovered its
existence. Thus, all facts may not be copyrighted and are part of
the public domain available to every person.
• Factual compilations, on the other hand, may possess the
requisite originality. The compilation author typically chooses
which facts to include, in what order to place them, and how to
arrange the collected data so that they may be used effectively
by readers. So long as choices as to selection and
arrangement are made independently by the compiler and
entail a minimal degree of creativity, sufficiently complies
with originality. Thus, if the selection and arrangement are
original, these elements of the work are eligible for copyright
protection.
C. When Copyright Vests
Santos v. McCullough Printing Co., 12 SCRA 321 (1964)
• 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.
• As a general proposition, there can be no dispute that the artist
9
 acquires ownership of the product of his art. At the time of its
creation, he has the absolute dominion over it. To help the
author protect his rights the copyright law was enacted.
• Paragraph 33 of Patent Office Administrative Order No. 3 was
promulgated pursuant to Republic Act 165, provides, among
others, that an intellectual creation should be copyrighted thirty
(30) days after its publication, if made in Manila, or within sixty
(60) day's if made elsewhere, failure of which renders such
creation public property. In this case, no copyright was secured. 

Filipino Society of Composers v. Benjamin Tan, 148 SCRA 461
(1987)
• There is no infringement because the composers 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.
• 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.
Unilever Philippines (PRC) v. CA, GR No. 119280, 10 August 2006
• The copyright for a work or intellectual creation subsists from the
moment of its creation.
• Section 2 of PD 49 stipulates that the copyright for a work or
intellectual creation subsists from the moment of its creation. The
creator acquires copyright for his work upon its creation, not from
registration with the National Library.
• In other words, protection of the creator’s copyright is not
contingent or dependent on any formality or registration.
Section 2, PD 49
Section 2. The Rights granted by this Decree shall, from the moment of
creation, subsist with respect to any of the following classes of works:
(A) Books, including composite and encyclopedic works, manuscripts,
directories, and gazetteers;
(B) Periodicals, including pamphlets and newspapers;

FARADO
(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.
10
Article 5(2), Berne Convention for the Protection of Literacy and Artistic
Works
Article 5(2). The enjoyment and the exercise of these rights shall not be
subject to any formality; such enjoyment and such exercise shall be
independent of the existence of protection in the country of origin of the
work. Consequently, apart from the provisions of this Convention, the
extent of protection, as well as the means of redress afforded to the
author to protect his rights, shall be governed exclusively by the laws
of the country where protection is claimed.
Section 172 and 172.2, IPC
172. Supra
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.
Rule 7, Sections 2-4, Copyright Safeguards and Regulations
SECTION 2. Effects of Registration and Deposit of Work. — The
registration and deposit of the work is purely for recording the date of
registration and deposit of the work and shall not be conclusive as
to copyright ownership or the term of copyrights or the rights of the
copyright owner, including neighboring rights.
D. Scope of Copyright
1. Original works
Article 2, Berne Convention for the Protection of Literacy and Artistic
Works
Protected Works:
1. “Literary and artistic works”. The expression “literary and artistic
works” shall include every production in the literary, scientific and artistic
domain, whatever may be the mode or form of its expression, such as
books, pamphlets and other writings; lectures, addresses, sermons and
other works of the same nature; dramatic or dramatico-musical works;
choreographic works and entertainments in dumb show; musical
FARADO
compositions with or without words; cinematographic works to which are
assimilated works expressed by a process analogous to
cinematography; works of drawing, painting, architecture, sculpture,
engraving and lithography; photographic works to which are assimilated
works expressed by a process analogous to photography; works of
applied art; illustrations, maps, plans, sketches and three-dimensional
works relative to geography, topography, architecture or science.
2. Possible requirement of fixation; OI shall, however, be a matter for
legislation in the countries of the Union to prescribe that works in general
or any specified categories of works shall not be protected unless they
have been fixed in some material form.
3. Derivative works;
 Translations, adaptations, arrangements of music
and other alterations of a literary or artistic work shall be protected as
original works without prejudice to the copyright in the original
work.
4. Official texts; It shall be a matter for legislation in the countries of the
Union to determine the protection to be granted to official texts of a
legislative, administrative and legal nature, and to official translations of
such texts.
5. Collections; Collections of literary or artistic works such as
encyclopaedias and anthologies which, by reason of the selection and
arrangement of their contents, constitute intellectual creations shall be
protected as such, without prejudice to the copyright in each of the works
forming part of such collections.
6. Obligation to protect; beneficiaries of protection; The works mentioned
in this Article shall enjoy protection in all countries of the Union. This
protection shall operate for the benefit of the author and his
successors in title.

7. Works of applied art and industrial designs; Subject to the provisions
11
of Article 7(4) of this Convention, it shall be a matter for legislation in the
countries of the Union to determine the extent of the application of their
laws to works of applied art and industrial designs and models, as well
as the conditions under which such works, designs and models shall be
protected. Works protected in the country of origin solely as designs and
models shall be entitled in another country of the Union only to such
special protection as is granted in that country to designs and models;
however, if no such special protection is granted in that country, such
works shall be protected as artistic works.
8. News; The protection of this Convention shall not apply to news of the
day or to miscellaneous facts having the character of mere items of
press information.
Article 2bis
Possible Limitation of Protection of Certain Works:

1. Certain speeches; (1) It shall be a matter for legislation in the
countries of the Union to exclude, wholly or in part, from the protection
provided by the preceding Article political speeches and speeches
delivered in the course of legal proceedings.
2. Certain uses of lectures and addresses; (2) It shall also be a matter
for legislation in the countries of the Union to determine the conditions
under which lectures, addresses and other works of the same nature
which are delivered in public may be reproduced by the press,
broadcast, communicated to the public by wire and made the
subject of public communication as envisaged in Article 11bis(1) of
this Convention, when such use is justified by the informatory purpose.
3. Right to make collections of such works (3) Nevertheless, the
author shall enjoy the exclusive right of making a collection of his
works mentioned in the preceding paragraphs.
Sections 172, 172.2, 173, 173.2, 174, IPC
Sec. 172. Literary 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.
FARADO
Sec. 173. Derivative Works. –
173.1. The following derivative works shall also be protected by
copyright:
(a) Dramatizations, translations, adaptations, abridgments,
arrangements, and other alterations of literary or artistic works; and
(b)
Collections of literary, scholarly or artistic works, and compilations of
data and other materials which are original by reason of the selection or
coordination or arrangement of their contents.
173.2. The works referred to in paragraphs (a) and (b) of Subsection
173.1 shall be protected as a new works: Provided however, That such
new work shall not affect the force of any subsisting copyright upon
the original works employed or any part thereof, or be construed to
imply any right to such use of the original works, or to secure or extend
copyright in such original works.
Sec. 174. Published Edition of Work. - In addition to the right to publish
granted by the author, his heirs or assigns, the publisher shall have a
copy right consisting merely of the right of reproduction of the
typographical arrangement of the published edition of the work.
Section 175, IPC
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.
Section 176, IPC
176.1. No copyright shall subsist in any work of the Government of the
Philippines. However, prior approval of the government agency or
office wherein the work is created shall be necessary for exploitation of
such work for profit. Such agency or office may, among other things,
impose as a condition the payment of royalties. No prior approval or
conditions shall be required for the use of any purpose of statutes, rules
and regulations, and speeches, lectures, sermons, addresses, and
dissertations, pronounced, read or rendered in courts of justice, before
12
administrative agencies, in deliberative assemblies and in meetings of
public character. (Sec. 9, First Par., P. D. No. 49) 176.2. The Author of
speeches, lectures, sermons, addresses, and dissertations mentioned in
the preceding paragraphs shall have the exclusive right of making a
collection of his works. (n) 176.3. Notwithstanding the foregoing
provisions, the Government is not precluded from receiving and holding
copyrights transferred to it by assignment, bequest or otherwise; nor
shall publication or republication by the government in a public document
of any work in which copy right is subsisting be taken to cause any
abridgment or annulment of the copyright or to authorize any use or
appropriation of such work without the consent of the copyright owners.
Joaquin v. Drilon, 302 SCRA 225 (1999)
• The format of a show is not copyrightable. Section 2 of P.D. No.
49 (Decree on Intellectual Property), enumerate the classes of
work entitled to copyright protection. 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.
• The essence of a copyright infringement is the similarity or at
least substantial similarity of the purported pirated works to the
copyrighted work. Hence, the applicant must present to the court
the copyrighted films to compare them with the purchased
evidence of the video tapes allegedly pirated to determine
whether the latter is an unauthorized reproduction of the former.
United Feature Syndicate v. Munsingwear, 179 SCRA 260 (1989)
• Pertinenetly, 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,
form the moment of creation, subsist with respect to any of the
FARADO
following classes of works: "(O) Prints, pictorial illustrations,
advertising copies, labels, tags and box wraps. x x x"
2. The "Idea/Expression" Distinction
Baker v. Selden, 101 U.S. 99 (1879)
• Blank account books are not the subject of copyright, and that
the mere copyright of Selden’s book did not confer upon him the
exclusive right to make and use account books, ruled and
arranged as designated by him and described and illustrated in
said book.
• The copyright of his book only secures to him the exclusive right
of printing and publishing his book. While no one has a right to
print or publish his book, or any material part thereof, as a book
intended to convey instruction in the art, any person may
practice and use the art itself which he has described and
illustrated therein.
• The copyright of the book, if not pirated from other works, would
be valid without regard to the novelty, or want of novelty, of its
subject matter. The novelty of the art or thing described or
explained is the province of letters patent, not of copyright.
A.A. Hoehling v. Universal City Studios, Inc., 618 F.2d 972 (2d Cir.),
cert. denied, 449 U.S. 841 (1980)
• The idea at issue is an interpretation of an historical event and
thus is not copyrightable. Although the plots of the two works
were necessarily similar, there could be no infringement because
of the public benefit in encouraging the development of historical
and biographical works and their public distribution. To avoid a
chilling effect on authors who contemplate tackling an historical
issue or event, broad latitude must be granted to subsequent
authors who make use of historical subject matter, including
theories or plots. Furthermore, the court said that there cannot
be any such thing as copyright in the order of presentation of the
facts, nor, indeed, in their selection.
• In distinguishing between themes, facts, and scenes a faire on
the one hand, and copyrightable expression on the other, courts
may lose sight of the forest for the trees. By factoring out
similarities based on non-copyrightable elements, a court runs
the risk of overlooking wholesale usurpation of a prior author’s
expression. A verbatim reproduction of another work, of course,
13
 even in the realm of nonfiction, is actionable as copyright
infringement. Thus, in granting or reviewing a grant of summary
judgment, courts should assure themselves that the works
before them are not virtually identical.
• In works devoted to historical subjects, it is our view that a
second author may make significant use of prior work, so long as
he does not bodily appropriate the expression of another. In this
case, it is clear that all three authors relate the story of the
Hindenburg differently.
American Dental Association v. Delta Dental Plans Association, 126
Entertainment Research Group, Inc. v. Genesis Creative Group, Inc.,
F.3d 977 (7th Cir. 1997)
122 F.3d 1211 (9th Cir. 1997), cert. denied, 523 U.S. 1021 (1998)
• Any original literary work may be copyrighted. The necessary
degree of originality is low, and the work need not be
aesthetically pleasing to be literary. A taxonomy is a way of
describing items in a body of knowledge or practice; it is not a
collection or compilation of bits and pieces of reality
• Delta argues that the Code is not copyrightable because it is a
“system”. Section 102 (b) states that a copyright protection even
of an original work does not cover “any idea, procedure, process,
DORAN TEST v. DURNHAM TEST:
system, method of operation, concept, principle, or discovery,
regardless of the form in which it is described, explained,
illustrated, or embodied in such work. The court ruled that the
Code is not a system. The Code is a taxonomy, which may be
put to many uses. These uses may be or include systems; the
Code is not.
Derivative Works and Compilations
L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir.) (en banc), cert.
denied, 429 U.S. 857 (1976)
• BANKS case: The test of originality is concededly one with a low
threshold in that “all that is needed is that the ‘author’ contributed
something more than a ‘merely trivial’ variation, something
recognizably ‘his own.’
• There were no elements of difference that amounted to
significant alteration or that had any purpose other than the
functional one of making a more suitable (and probably less
expensive) figure in the plastic medium.
• The reproduction must contain “an original contribution not
FARADO
present in the underlying work of art” and be “more than a mere
copy.” The mere reproduction of a work of art in a different
medium should not constitute the required originality for the
reason that no one can claim to have independently evolved any
particular medium.” Nor can the requirement of originality be
satisfied simply by the demonstration of “physical skill” or
“special training.”
• To extend copyrightability to minute variations would simply put a
weapon for harassment in the hands of mischievous copiers
intent on appropriating and monopolizing public domain work.
• Nevertheless, the copyright protection afforded to derivative
works is more limited than it is for original works of authorship.
Specifically, Section 103(b) provides that the copyright in a
derivative work “extends only to the material contributed by the
author of such work, as distinguished from the preexisting
material employed in the work.”
• DORAN TEST REQUISITES:
o “Test of copyrightability must be the form which the
author has used to express the figure, idea, or theme.”
o If the form of the derivative work and the form of the
underlying work (3-dimensional, 2-dimensional, plastic,
etc.) are sufficiently different, then the derivative work is
original enough to be copyrightable.
• DURNHAM TEST REQUISITES:
o The original aspects of a derivative work must be more
than trivial.
o The original aspects of a derivative work must reflect the
degree to which it relies on preexisting material and
must not in any way affect the scope of any copyright
protection in that preexisting material.
• According to the Court, the DORAN TEST completely fails to
take into account the rights of the holder of the copyright for the
underlying work. Thus, the Doran test should not be applied to
determine the copyrightability of a derivative work that is based
on a preexisting work that is itself copyrighted. This was
14
 addressed by the second requisite of the Durnham test, which is
designed to ensure that copyright protection is not given to a
derivative work if doing so would necessarily affect the scope of
any copyright protection in the preexisting material.
• The DURNHAM TEST is more applicable; If copyright
protection were given to derivative works that are virtually
identical to the underlying works, then the owner of the
underlying copyrighted work would effectively be prevented from
permitting others to copy her work since the original derivative
copyright holder would have a de facto monopoly due to her
“considerable power to interfere with the creation of subsequent
derivative works from the same underlying work.”
Pickett v. Prince, 207 F.3d 402 (7th Cir. 2000)
• Picket could not copyright his guitar, as his guitar infringed on
Prince’s copyright. Picket cannot make a derivative work based
on the Prince symbol without Prince’s authorization, even if there
was any semblance of originality.
• Picket relies on Section 103(A) of the copyright act which
provides that copyright can be obtained in derivative works
“protection for a work employing material pre-existing material in
which copyright subsists does not extend to any part of the work
in which such material has been used unlawfully. However,
103(A) means only that the right to make a derivative work does
not authorize the maker to incorporate material that infringes
someone else’s copyright
• Picket had the burden to show that his derivative work had
enough originality to entitle him to copyright. He was not able to
show enough originality. The difference in appearance was “due
to nothing more than the functional difference between a two-
dimensional symbol and a guitar in the shape of that symbol.”
Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340
(1991) [supra]
Roth Greeting Cards v. United Card Co., 429 F.2d 110 (9th Cir. 1970)
• The test of infringement is whether the work is recognizable by
an ordinary observer as having been taken from the copyrighted
source.
• Since direct evidence of copying is rarely available, copying may
FARADO
be established by proof of access and substantial similarity.
• To constitute an infringement, there must be a substantial
similarity between the infringing work and the work copyrighted.
The test of infringement is whether the work is recognizable by
an ordinary observer as having been taken from the copyrighted
source. The question which remains is whether United did in fact
copy the cards. Since direct evidence of copying is rarely
available, copying may be established by proof of access and
substantial similarity. In this case, there was a testimony
establishing that United had access to the cards (it sent
employees to stores where the Roth cards were on display to
observe “what the competition was doing”). Also, there was
testimony almost compelling the inference that United always
looks at the cards produced by other companies and make
similar cards under its label.
Mason v. Montgomery Data, Inc., 967 F.2d 135 (5th Cir. 1992)
• The plaintiffs’ principal contention is that the defendants made an
unauthorized use of its copyrighted maps to create certain
reorganized map sets, overlays and computer databases.
• The Copyright Act provides that factual “Compilations” can be
copyrighted, however, “the copyright in a compilation or
derivative work extends only to the material contributed by the
author of such work, as distinguished from the pre-existing
material employed in the work, and does not imply any exclusive
right in the pre-existing material.”
• In other words, when the copyright lies in the arrangement of
facts, only the arrangement is protected by the copyright.
Obviously, the plaintiffs could not copyright the information in the
public records but they do purport to have copyrighted the
arrangement of the information on the maps.
• It is well settled in Copyright Law that a copyright protects only
an author’s expression of an idea and not the idea itself. If,
however, the expression of an idea is inseparable from the idea
itself, the expression and idea merge.
• The “Merger” doctrine was developed to deal with the difficulty
in determining the difference between an idea and the
expression of that idea.
• “When the idea and its expression are thus inseparable, copying
the expression will not be barred, since protecting the expression
in such circumstances would confer a monopoly of the idea upon
15
 the copyright owner free of the conditions and limitations
imposed by the patent law.”
E. Authorship
Section 178, Section 179, Section 174, IPC
Sec. 178. Rules on Copyright Ownership. - Copyright ownership shall be
governed by the following rules: 

178.1. Subject to the provisions of this section, in the case of original
literary and artistic works, copyright shall belong to the author of the
work;
178.2. In the case of works of joint authorship, the co-authors shall be
the original owners of the copyright and in the absence of agreement,
their rights shall be governed by the rules on co-ownership. If, however,
a work of joint authorship consists of parts that can be used separately
and the author of each part can be identified, the author of each part
shall be the original owner of the copyright in the part that he has
created;
178.3. In the case of work created by an author during and in the course
of his employment, the copyright shall belong to: (a) The employee, if the
creation of the object of copyright is not a part of his regular duties even
if the employee uses the time, facilities and materials of the employer. (b)
The employer, if the work is the result of the performance of his
regularly-assigned duties, unless there is an agreement, express or
implied, to the contrary.
178.4. In the case of a work-commissioned by a person other than an
employer of the author and who pays for it and the work is made in
pursuance of the commission, the person who so commissioned the
work shall have ownership of work, but the copyright thereto shall remain
with the creator, unless there is a written stipulation to the contrary;
178.5. In the case of audiovisual work, the copyright shall belong to the
producer, the author of the scenario, the composer of the music, the film
director, and the author of the work so adapted. However, subject to
contrary or other stipulations among the creators, the producers shall
exercise the copyright to an extent required for the exhibition of the work
in any manner, except for the right to collect performing license fees for
the performance of musical compositions, with or without words, which
FARADO
are incorporated into the work; and
178.6. In respect of letters, the copyright shall belong to the writer
subject to the provisions of Article 723 of the Civil Code. (Sec. 6, P. D.
No. 49a)
Sec. 179. Anonymous and Pseudonymous Works. - For purposes of this
Act, the publishers shall be deemed to represent the authors of
articles and other writings published without the names of the
authors or under pseudonyms, unless the contrary appears, or the
pseudonyms or adopted name leaves no doubts as to the author’s
identity, or if the author of the anonymous works discloses his identity.
Sec. 174. Published Edition of Work. - In addition to the right to publish
granted by the author, his heirs or assigns, the publisher shall have a
copy right consisting merely of the right of reproduction of the
typographical arrangement of the published edition of the work.
Article 722 and 723, Civil Code
Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of
the preceding article, shall have the ownership of their creations even
before the publication of the same. Once their works are published,
their rights are governed by the Copyright laws.
The painter, sculptor or other artist shall have dominion over the
product of his art even before it is copyrighted.
The scientist or technologist has the ownership of his discovery or
invention even before it is patented. (n)
Art. 723. Letters and other private communications in writing are
owned by the person to whom they are addressed and delivered, but
they cannot be published or disseminated without the consent of
the writer or his heirs. However, the court may authorize their
publication or dissemination if the public good or the interest of justice
so requires.
Article 520 of the Civil Code
Art. 520. A trade-mark or trade-name duly registered in the proper
government bureau or office is owned by and pertains to the person,
corporation, or firm registering the same, subject to the provisions of
special laws.
16
 author must be copyrightable and (2) the parties must have
intended to be joint authors.
1. Sole Authorship
• Section 101 of the Copyright Act defines a “joint work” as a
Lindsay v. The Wrecked and Abandoned Vessel R.M.S. Titanic, 52 work prepared by two or more authors with the intention that
U.S.P.Q.2d 1609 (S.D.N.Y. 1999) their contributions be merged into inseparable or interdependent
parts of a unitary whole.
• The Copyright Act of 1976 provides that copyright ownership
• In a joint work, the joint authors hold undivided interests in a
vests initially in the author or authors of the work. Generally
work, despite any differences in each author’s contribution. Each
speaking, the author of a work is the person who actually
author as co-owner has the right to use or to license the use of
creates the work, that is, the person who translates an idea
the work, subject to an accounting to the other co-owners for any
into a fixed, tangible expression entitled to copyright
profits. Thus, even a person whose contribution is relatively
protection
minor, if accorded joint authorship status, enjoys a significant
• Thus in the case of Lindsay, the storyboards and the
benefit.
specific directions he provided to the film crew regarding
• [A] work is “joint” if the authors collaborated with each other, or if
the use of the light towers and the angles from which to
each of the authors prepared his or her contribution with the
shoot the wreck all indicate that the final footage would
knowledge and intention that it would be merged with the
indeed be the product of his original intellectual
contributions of other authors as “inseparable or interdependent
conceptions. The fact that Lindsay did not literally perform the
parts of a unitary whole.” The touchstone here is the intention,
filming, (by diving to the wreck and operating the cameras) will
at the time the writing is done, that the parts be absorbed or
not defeat his claims of having authored the illuminated footage.
combined into an integrated unit.
• A person who exercised such a high degree of control over
• DE MINIMIS TEST by PROF. NIMMER (which was rejected by
a film operation (including the type and amount of lighting
the Court): Professor Nimmer distinguishes his de minimis
used, the specific camera angles to be employed, and other
standard from the standard for copyrightability. As an example,
detail-intensive artistic elements of a film) such that the final
Professor Nimmer asserts that if two authors collaborate, with
product duplicates his conceptions and visions of what the
one contributing only uncopyrightable plot ideas and another
film should look like, that person is said to be an author
incorporating those ideas into a completed literary expression,
within the meaning of the Copyright Act. Minimal
the two authors should be regarded as joint authors of the
contributions and inclusion of suggestions in the final product will
resulting work.
not merit one as an author
• COPYRIGHTABILITY TEST by PROF. GOLDSTEIN: “[a]
• To prove co-authorship status, it must be shown by the
collaborative contribution will not produce a joint work, and a
individual claiming co-authorship status that each of the
contributor will not obtain a co- ownership interest, unless the
putative co-authors fully intended to be co-authors, and
contribution represents original expression that could stand on its
made independently copyrightable contributions to the work
own as the subject matter of copyright.” The copyrightability
test advances creativity in science and art by allowing for
2. Joint Authorship
the unhindered exchange of ideas, and protects authorship
Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994) rights in a consistent and predictable manner. The
copyrightability standard allows contributors to avoid post-
• “[a] determination as to joint authorship involves an
contribution disputes concerning authorship, and to protect
examination of the putative authors’ intent at the time the
themselves by contract if it appears that they would not
work is produced.” The magistrate judge followed primarily the
enjoy the benefits accorded to authors of joint works under
Second Circuit’s test in Childress v. Taylor, which identified two
the Act.
elements of joint ownership: (1) the contribution of each joint

FARADO 17
Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 1999) considered a work made for hire. For the purpose of the
foregoing sentence, a “supplementary work” is a work
• The Copyright Act does not define “Author,” but defines “joint
prepared for publication as a secondary adjunct to a
work” as “a work prepared by two or more authors with the
work by another author for the purpose of introducing,
intention that their contributions be merged into inseparable or
concluding, illustrating, explaining, revising, commenting
interdependent parts of a unitary whole.” The statutory language
upon, or assisting in the use of the other work, such as
establishes that for a work to be considered joint, there must be
forewords, afterwords, pictorial illustrations, maps,
(1) a copyrightable work, (2) two or more authors, and (3) the
charts, tables, editorial notes, musical arrangements,
authors must intend their contributions be merged into
answer material for tests, bibliographies, appendixes,
inseparable or interdependent parts of a unitary whole. A joint
and indexes, and an “instructional text” is a literary,
work, moreover, requires each author to make an independently
pictorial, or graphic work prepared for publication and
copyrightable contribution to the disputed work.
with the purpose of use in systematic instructional
• a creative contribution does not suffice to establish authorship of
activities. 

the movie, as a contribution of independently copyrightable
• In this case, it was found that Reid was hired as an independent
material to a work intended to be an inseparable whole does
contractor, and this status was evident because he supplied his
not suffice to establish authorship of a joint work
own tools, worked in his own studio, in another city, was retained
• A person claiming to be an author of a joint work must prove that
for less than two months, decided his own work schedule,
both parties intended each other to be joint authors. In the
received salary that was contingent on the sculpture’s
absence of contract, several factors may be considered,
completion, had sole discretion over hiring and paying
including who “superintends” the work by exercising control or
assistants, and he was not paid of any employee benefits.
the “inventive or master mind” who gives effect to the idea, the
• REID TEST: According to the Reid test, the factors that are to be
objective manifestations of shared intent to be co-authors, and
considered are the following, in order to determine the nature of
the fact that the share of each in the work’s success cannot be
the one doing the work, whether he was an employee or anb
appraised. Control in many cases will be the most important
independent contractor: (1) skill (2) source of the tools (3)
factor. Aalmuhammed lacked control of the work, and absence
location of the work (4) duration of the relationship (5) whether
of control is strong evidence of the absence of co-
the hiring party has the right to assign additional projects to the
authorship.
hired party (6) extent of the hired party’s discretion over when
and how long to work (7) method of payment (8) hired party’s
3. Works Made for Hire
role in hiring and paying assistants (9) whether the work is part
Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989) of the regular business (10) whether the hiring party in in
business (11) provision of employee benefits and (12) tax
• Section 101 of the Copyright Act of 1976: A “work made for hire”
treatment of the hired party. 

is –
o A work prepared by an employee within the scope of his
Aymes v. Bonelli, 980 F.2d 857 (2d. Cir. 1992)
or her employment; or
o A work specially ordered or commissioned for use as a • The trial court applied the Reid test. According to the Reid
contribution to a collective work, as a part of a motion test, the factors that are to be considered are the following: (1)
picture or other audiovisual work, as a translation, as a skill (2) source of the tools (3) location of the work (4) duration of
supplementary work, as a compilation, as an the relationship (5) whether the hiring party has the right to
instructional text, as a test, as answer material for a test, assign additional projects to the hired party (6) extent of the hired
or as an atlas, if the parties expressly agree in a written party’s discretion over when and how long to work (7) method of
instrument signed by them that the work shall be payment (8) hired party’s role in hiring and paying assistants (9)

FARADO 18
 whether the work is part of the regular business (10) whether the 176.3. Notwithstanding the foregoing provisions, the Government is not
hiring party in in business (11) provision of employee benefits precluded from receiving and holding copyrights transferred to it by
and (12) tax treatment of the hired party. Court ruled that no assignment, bequest or otherwise; nor shall publication or republication
single factor is determinative. 
 by the government in a public document of any work in which copy right
is subsisting be taken to cause any abridgment or annulment of the
Roeslin v. District of Columbia, 921 F. Supp. 793 (D.D.C. 1995) copyright or to authorize any use or appropriation of such work without
the consent of the copyright owners.
• The Supreme Court has held that to determine whether an
individual was an employee, and whether he created a work
within the scope of his employment, courts should look to the
F. Duration of Copyright
general common law of agency: Conduct of a servant is within
the scope of employment if, but only if: (a) it is within the kind he Articles 7 and 7bis, Berne Convention for the Protection of Literary and
is employed to perform; (b) it occurs substantially within the Artistic Works
authorized time and space limits; and (c) it is actuated, at least in
Term of Protection:

part, by a purpose to serve the master. The court held that the
creation of the system was not a work created for hire since 1. Generally; The term of protection granted by this Convention shall be
developing the computer software is not the kind of work plaintiff the life of the author and fifty years after his death.
was employed to perform. Plaintiff was hired as a labor
2. For cinematographic works; However, in the case of
economist, not as a computer programmer To be sure, work that
cinematographic works, the countries of the Union may provide that the
is incidental to the conduct authorized by the employer, even if it
term of protection shall expire fifty years after the work has been made
is not central to the employee’s job duties, also falls within the
available to the public with the consent of the author, or, failing such an
scope of employment.
event within fifty years from the making of such a work, fifty years after
the making.
4. Government Works
3. For anonymous and pseudonymous works; In the case of
Section 176 IPC anonymous or pseudonymous works, the term of protection granted by
this Convention shall expire fifty years after the work has been lawfully
Sec. 176. Works of the Government. -
176.1. No copyright shall subsist in
made available to the public. However, when the pseudonym adopted by
any work of the Government of the Philippines. However, prior approval
the author leaves no doubt as to his identity, the term of protection shall
of the government agency or office wherein the work is created shall be
be that provided in paragraph (1). If the author of an anonymous or
necessary for exploitation of such work for profit. Such agency or office
pseudonymous work discloses his identity during the above-mentioned
may, among other things, impose as a condition the payment of
period, the term of protection applicable shall be that provided in
royalties. No prior approval or conditions shall be required for the use of
paragraph (1). The countries of the Union shall not be required to protect
any purpose of statutes, rules and regulations, and speeches, lectures,
anonymous or pseudonymous works in respect of which it is reasonable
sermons, addresses, and dissertations, pronounced, read or rendered in
to presume that their author has been dead for fifty years.
courts of justice, before administrative agencies, in deliberative
assemblies and in meetings of public character. (Sec. 9, First Par., P. D. 
4. For photographic works and works of applied art; It shall be a
No. 49) matter for legislation in the countries of the Union to determine the term
of protection of photographic works and that of works of applied art in so
176.2. The Author of speeches, lectures, sermons, addresses, and
far as they are protected as artistic works; however, this term shall last at
dissertations mentioned in the preceding paragraphs shall have the
least until the end of a period of twenty-five years from the making of
exclusive right of making a collection of his works. (n)
such a work.

FARADO 19
5. Starting date of computation; The term of protection subsequent to
the death of the author and the terms provided by paragraphs (2), (3)
and (4) shall run from the date of death or of the event referred to in
those paragraphs, but such terms shall always be deemed to begin on
the first of January of the year following the death or such event.

6. Longer terms; The countries of the Union may grant a term of
protection in excess of those provided by the preceding paragraphs.
7. Shorter terms; Those countries of the Union bound by the Rome Act
of this Convention which grant, in their national legislation in force at the
time of signature of the present Act, shorter terms of protection than
those provided for in the preceding paragraphs shall have the right to
maintain such terms when ratifying or acceding to the present Act.
8. Applicable law; “comparison” of terms. (8) In any case, the term
shall be governed by the legislation of the country where protection is
claimed; however, unless the legislation of that country otherwise
provides, the term shall not exceed the term fixed in the country of origin
of the work.
Article 7bis
Term of Protection for Works of Joint Authorship
The provisions of the preceding Article shall also apply in the case of a
work of joint authorship, provided that the terms measured from the
death of the author shall be calculated from the death of the last
surviving author.
Section 213, Section 214, IPC
Sec. 213. Term of Protection. - 213.1. Subject to the provisions of
Subsections 213.2 to 213.5, the copyright in works under Sections 172
and 173 shall be protected during the life of the author and for fifty (50
years) after his death. This rule also applies to posthumous works.
(Sec. 21, First Sentence, P. D. No. 49a)
213.2. In case of works of joint authorship, the economic rights shall be
protected during the life of the last surviving author and for fifty (50)
years after his death. (Sec. 21, Second Sentence, P.D. No. 49)
213.3. In case of anonymous or pseudonymous works, the copyright
shall be protected for fifty (50) years from the date on which the work
was first lawfully published: Provided, That where, before the
expiration of the said period, the author's identity is revealed or is
FARADO
no longer in doubt, the provisions of Subsections 213.1 and 213.2
shall apply, as the case may be: Provided, further, That such works
if not published before shall be protected for fifty (50) years
counted from the making of the work. (Sec. 23, P. D. No. 49)
213.4. In case of works of applied art the protection shall be for a
period of twenty-five (25) years from the date of making. (Sec. 24(B),
P. D. No. 49a)
213.5. In case of photographic works, the protection shall be for
fifty (50) years from publication of the work and, if unpublished, fifty
(50) years from the making. (Sec. 24(C), P. D. 49a)
213.6. In case of audio-visual works including those produced by
process analogous to photography or any process for making
audio-visual recordings, the term shall be fifty (50) years from date
of publication and, if unpublished, from the date of making. (Sec.
24(C), P. D. No. 49a)
Sec. 214. Calculation of Term. - The term of protection subsequent
to the death of the author provided in the preceding Section shall
run from the date of his death or of publication, but such terms
shall always be deemed to begin on the first day of January of the
year following the event which gave rise to them.
III. PROTECTED WORKS AND BOUNDARY PROBLEMS
A. Useful Articles with Pictorial, Graphic, or Sculptural Aspects
Mazer v. Stein, 347 U.S. 201 (1964)
• There is no distinction between purely aesthetic articles and
useful works of art. The law provides that works of art
includes works of artistic craftsmanship, in so far as their
form but not their mechanical or utilitarian aspects are
concerned, such as artistic jewelry, enamels, glassware,
and tapestries, as well as all works belonging to the fine
arts, such as paintings, drawings and sculpture. An artist's
decision to put his art work to commercial use does not negate
its status as an art work.
• The copyright protects originality rather than novelty or
invention—conferring only the sole right of multiplying copies.
20
 Absent copying there can be no infringement of copyright.
Thus, respondents may not exclude others from using
statuettes of human figures in table lamps but may only
prevent use of copies of their statuettes as such or as
incorporated in some other article. Artistic articles are
protected in form but not their mechanical or utilitarian
aspects.
Lucasfilm v. Ainsworth, UKSC 39 (27 July 2011)
• Section 51 CDPA provides that it will not be an infringement of
any copyright in a design document or model recording or
embodying a design for anything other than an artistic work or
typeface to make an article to the design or to copy an article
made to the design.
• To avail himself of the section 51 defence, Mr Ainsworth required
the court to decide that:
o The drawings provided to him constituted design
documents; and
o His 3D reproductions were not in themselves an artistic
work in the form of a sculpture or comprised a work of
artistic craftsmanship.
o Regarding the first element, a design document is
defined as a record of a design and includes a drawing.
It was held at first instance that the drawings provided to
Mr Ainsworth, although not definitive of the ultimate
product, were indeed in a real sense a design document
for the costume/prop that was to be used in the film.
Regarding the second element, the judge reasoned that
the helmets and armour fell within neither of these
categories of an artistic work and therefore Mr
Ainsworth’s reproductions did not infringe the copyright
in the design document. He further held that the clay
model provided to Mr Ainsworth was a “model” falling
within the definition of a design document.
Consequently, both elements of the section 51 defence
were satisfied with regard to the clay model as well.
• The clay model was an object with a functional purpose, not an
artistic one. As such it was not a “sculpture” within s. 4
Copyright, Designs and Patents Act 1988. Since it was not a
sculpture, copyright did not subsist, and the issues on the
FARADO
availability of defences to copyright infringement under ss. 51—
52 CDPA fell away.
Useful Articles [works of applied art] and Doctrine of Separability
Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir.
1980)
• The primary ornamental aspect of the Vaquero and
Winchester buckles is conceptually separable from their
subsidiary utilitarian function. Pieces of applied art, these
buckles may be considered jewelry, the form of which is subject
to copyright protection. As mentioned earlier, the buckles were
sometimes used as jewelry and not just belt buckles.
• The designs are NOT mere variations of the “well-known
western buckle.” The buckles rise to the level of creative art.
Body ornamentation is an art form. The basic requirements of
originality and creativity, which the two buckles satisfy and which
all works of art must meet to be copyrighted, would take the vast
majority of belt buckles wholly out of copyrightability.
• Separability may occur either “physically or conceptually.”
There are instances where the aesthetic element is
inextricably interwoven with the utilitarian aspect of the article
and where the aesthetic element is conceptually severable. In
this case, the design was CONCEPTUALLY SEPARABLE from
the utilitarian function of the belt buckles.
Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.
1985)
• A useful article shall be considered a pictorial, graphic, or
sculptural work only if, and only to the extent that, such design
incorporated pictorial, graphic or sculptural features that can be
identified separately from, and are capable of existing
independently of the utilitarian aspects of the article
• while copyright protection has increasingly been extended to
cover articles having a utilitarian dimension, Congress has
explicitly refused copyright protection for works of applied art or
industrial design which have aesthetic or artistic features that
cannot be identified separately from the useful article. Such
works are not copyrightable regardless of the fact that they may
be aesthetically satisfying and valuable.
21
 • The Court distinguished Kieselstein-Cord v. Accessories by by the Court)
Pearl, Inc. from the present case. In that case, the issue was • DENICOLA TEST: “If design elements reflect a merger of
whether two belt buckles bearing sculptured designs cast in aesthetic and functional considerations, the artistic aspects of a
precious metals and principally used for decoration were work cannot be said to be conceptually separable from the
copyrightable. The Court held that a fancy belt buckle was utilitarian elements. Conversely, where design elements can be
copyrightable, by saying that the belt buckle had features which identified as reflecting the designer's artistic judgment exercised
were not necessary for it to be useful as a belt buckle. In the independently of functional influences, conceptual separability
present case, the features claimed to be aesthetic or artistic are exists.” (This was applied by the Court)
inextricably intertwined with the utilitarian feature, the display of • Applying DENICOLA to the case, the Court said that while the
clothes. rack may have been derived in part from one of more "works of
art," it is in its final form essentially a product of industrial design.
Brandir International, Inc. v. Cascade Pacific Lumber Co., 834 F.2d In creating the RIBBON Rack, the designer has clearly adapted
1142 (2d Cir. 1987) the original aesthetic elements to accommodate and further a
utilitarian purpose. While the RIBBON Rack may be worthy of
• Carol Barnhart Inc decision: The "works of art" classification of
admiration for its aesthetic qualities alone, it remains
the Copyright Act of 1909 was omitted and replaced by reference
nonetheless the product of industrial design. Form and function
to "pictorial, graphic, and sculptural works." According to the
are inextricably intertwined in the rack, its ultimate design being
House Report, the new category was intended to supply "as
as much the result of utilitarian pressures as aesthetic choices.
clear a line as possible between copyrightable works of applied
Thus there remains no artistic element of the RIBBON Rack that
art and uncopyrighted works of industrial design."
can be identified as separate and "capable of existing
The statutory definition of "pictorial, graphic, and sculptural
independently, of, the utilitarian aspects of the article."
works" states that "the design of a useful article, as defined in
this section, shall be considered a pictorial, graphic, or sculptural
work only if, and only to the extent that, such design incorporates Star Athletica vs Varsity Brands (580 US ___, March 22, 2017)
pictorial, graphic, or sculptural features that can be identified
• "[A] feature incorporated into the design of a useful article is
separately from, and are capable of existing independently of,
eligible for copyright protection only if the feature (1) can be
the utilitarian aspects of the article." Legislative history added
perceived as a two- or three-dimensional work of art separate
gloss on the criteria of separate identity and independent
from the useful article and (2) would qualify as a protectable
existence in saying:
pictorial, graphic, or sculptural work—either on its own or fixed in
• Kieselstein-Cord decision: Accepted the idea that
some other tangible medium of expression—if it were imagined
copyrightability can adhere in the "conceptual" separation of an
separately from the useful article into which it is incorporated."
artistic element.
• Applying this test to the cheerleading uniforms was
• Harmonizing both decisions, the distinction made was that the
"straightforward," with the Court saying that, "first, one can
ornamented surfaces of the Kieselstein-Cord belt buckles "were
identify the decorations as features having pictorial, graphic, or
not in any respect required by their utilitarian functions," but the
sculptural qualities. Second, if the arrangement of colors,
features claimed to be aesthetic or artistic in the Carol Barnhart
shapes, stripes, and chevrons on the surface of the cheerleading
forms were "inextricably intertwined with the utilitarian feature,
uniforms were separated from the uniform and applied in another
the display of clothes.
medium—for example, on a painter’s canvas—they would qualify
• TEMPORAL DISPLACEMENT TEST: Aesthetic features are
as 'two-dimensional . . . works of . . . art,' §101. And
conceptually separable if "the article ... stimulate[s] in the mind of
imaginatively removing the surface decorations from the
the beholder a concept that is separate from the concept evoked
uniforms and applying them in another medium would not
by its utilitarian function." (But this was held to be not sufficient

FARADO 22
 replicate the uniform itself. Indeed, respondents have applied the computer to do something. Since it is only the instructions which
designs in this case to other media of expression—different are protected, a “process” is no more involved because the
types of clothing—without replicating the uniform. The instructions in an OS may be used to activate the operation of
decorations are therefore separable from the uniforms and the computer than it would be if instructions were written in
eligible for copyright protection.” ordinary English in a manual which described the necessary
• The Copyright Act of 1976 makes ‘pictorial, graphic, or sculptural steps to activate an intricate machine. Therefore, there is no
features’ of the ‘design of a useful article’ eligible for copyright reason to afford any less copyright protection to the instructions
protection as artistic works if those features ‘can be identified in an OS than those in an application program.
separately from, and are capable of existing independently of,
the utilitarian aspects of the article.’
Distinguishing Idea from Expression in Software
B. Computer Software Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693
(2d Cir. 1992)
Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d
Cir. 1983), cert. dismissed, 464 U.S. 1033 (1984) • The literal elements of computer programs, i.e., their source and
object codes, are the subject of copyright protection. Copyright
• SOFTWARE PROGRAMS ARE COPYRIGHTABLE. In order to
protection extends beyond a literary work’s strictly textual form to
be copyrightable under the law, a work must be (1) an original
its non-literal components. a program’s structure includes its
work of authorship and (2) fixed in a tangible medium of
non-literal components such as general flow charts as well as
expression. A work is fixed in a tangible medium of expression
the more specific organization of inter-modular relationships,
when its embodiment in a copy or phonorecord, by or under the
parameter lists, and macros.
authority of the author, is sufficiently permanent or stable to
• THE COURT ACCEPTED ITS OWN REASONING IN BAKER V.
permit it to be perceived, reproduced, or otherwise
SELDEN IN THIS CASE; Selden’s ledger sheets enjoyed no
communicated for a period of more than transitory duration.
copyright protection because they were “necessary incidents to”
Literary works are works, other than audiovisual works,
the system of accounting that he described. From this reasoning,
expressed in words, numbers, or other verbal or numerical
we conclude that those elements of a computer program that are
symbols or indicia, regardless of the nature of the material
necessarily incidental to its function are similarly unprotectable.
objects, such as books, periodicals, manuscripts, phonorecords,
While Baker v. Selden provides a sound analytical foundation, it
film, tapes, disks, or cards, in which they are embodied.
offers scant guidance on how to separate idea or process from
• the definition of literary works in the law includes expression not
expression, and moreover, on how to further distinguish
only in words but also numbers or other numerical symbols or
protectable expression from that expression which “must
indicia, which expand the common usage of “literary works.”
necessarily be used as incident to” the work’s underlying
Thus, a computer program, whether in object or source code, is
concept.
a “literary work” and is protected from unauthorized copying.
• Substantial Similarity Test for Computer Program Structure:
• he statutory requirement of “fixation,” the manner in which the
Abstraction-Filtration-Comparison
issue arises, is satisfied through the embodiment of the
o In ascertaining substantial similarity under this approach,
expression in the ROM. A computer program in object code
a court would first break down the allegedly
embedded in a ROM chip is an appropriate subject of copyright.
infringed program into its constituent structural
The mere fact that the OS may be etched on a ROM does not
parts.
make the program either a machine, part of a machine, or its
o Then, by examining each of these parts for such things
equivalent.
as incorporated ideas, expression that is necessarily
• Both types of programs (OS and application) instruct the
incidental to those ideas, and elements that are taken

FARADO 23
 from the public domain, a court would then be able to
sift out all non-protectable material. entails examining
the structural components at each level of abstraction to
determine whether their particular inclusion at that level
was “idea” or was dictated by considerations of
efficiency, so as to be necessarily incidental to that idea;
required by factors external to the program itself; or
taken from the public domain and hence is non-
protectable expression.
o After following this process of elimination, the court’s last
step would be to compare this material with the
structure of an allegedly infringing program. The
result of this comparison will determine whether the
protectable elements of the programs at issue are
substantially similar so as to warrant a finding of
infringement.
o APPLYING THIS TO THE CASE, the court found that
with respect to code, after the rewrite of OSCAR 3.4 to
OSCAR 3.5, there remained virtually no lines of code
that were identical to ADAPTER; and that there is no
similarity at all. On the issue of similarity between the
two programs' parameter lists and macros, it was
concluded that, only a few of the lists and macros were
similar to protected elements in ADAPTER; the others
were either in the public domain or dictated by the
functional demands of the program (as such is not
copyrightable). With respect to the few remaining
parameter lists and macros, it was reasonably concluded
that they did not warrant a finding of infringement given
their relative contribution to the overall program. Lastly,
on the programs' organizational charts, it was said to be
simple and obvious to anyone exposed to the operation
of the programs, thus the allegation on the similarities on
this aspect has no merit.
Softel, Inc. v. Dragon Medical and Scientific Communications, Inc.,
118 F.3d 955 (2d Cir. 1997), cert. denied, 523 U.S. 1020 (1988)
• APPLIED ALTAI SUBSTATIAL SIMILARITY TEST; the
application of Altai in this case demonstrates that an allegation of
infringement based on similarities in architecture cannot be
ignored because many or all of the design elements are not
FARADO
protectable when considered at a lower level of abstraction.
However, at a higher level of abstraction, there may be
infringement based on claims that there is similarity between the
organizational charts of programs. This is similar to the ruling in
Feist, which stated that compilation of non-protectable elements
can enjoy copyright protection even though constituent elements
do not.
• The district court had considered the program’s elements
individually but not in relation to one another. The four elements
were 1) external file structure 2) English language commands 3)
functional modules specifically including those to operate
hardware and 4) hierarchical series of menus with a
touchscreen. These plus the allegation that Dragon used nearly
identical commands establish a colorable claim that there was a
modicum of expression in the design and that Dragon infringed.
Even if there are more than a few ways to design a program, it
would not have been likely that Dragon would use an identical
structure and copy approximately 15/15 commands
Lotus Development Corporation v. Borland International, Inc., 49
F.3d 807 (1st Cir. 1995), affirmed by an equally divided court, 516
U.S. 233 (1996)
• A computer menu command hierarchy is not copyrightable
subject matter. A menu command hierarchy is an
uncopyrightable “method of operation” as that term is used in S
102(b) of the Copyright Act. It provides the means by which
users control and operate a program’s functional
capabilities. Just as it would be impossible to operate a VCR
without buttons, it would be impossible to operate Lotus 1-2-3
with using its menu command hierarchy. Therefore, the Lotus
(Plaintiff) command terms are equivalent to the buttons
themselves, which are an uncopyrightable method of operating
the VCR. Therefore, Defendant did not infringe Plaintiff’s
copyright when it copied its menu command
hierarchy. Reversed.
• 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.
24
 • 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.”
• This decision establishes a distinction in copyright law between
the interface of a software product and its implementation. The
implementation is subject to copyright. The public interface may
also be subject to copyright to the extent that it contains
expression (for example, the appearance of an icon). However,
the set of available operations and the mechanics of how they
are activated are not copyrightable. This standard allows
software developers to create original clones of copyrighted
software products without infringing the copyright.
EU Software Directive, Directive on the Legal Protection of Computer
Programs, 1991 O.J. (L-122) 42 (EU Software Directive)
C. Architectural Works
Section 186, IPC
Section 186. Work of Architecture. - Copyright in a work of architecture
shall include the right to control the erection of any building which
reproduces the whole or a substantial part of the work either in its
original form or in any form recognizably derived from the original:
Provided, That the copyright in any such work shall not include the right
to control the reconstruction or rehabilitation in the same style as the
original of a building to which that copyright relates. (n)
Nelson-Salabes, Inc. v. Morningside Holdings, 2001 WL 419002 (D.
Md. 2001), affirmed in part, revised in part on other grounds, 284
F.3d 505 (4th Cir. 2002)
• In order to prove copyright infringement, a plaintiff must show
that it owns a valid copyright, and it must establish that the
defendant engaged in unauthorized copying of the work
protected by the copyright. In this case, it is undisputed that NSI
owns a valid copyright for the NSI Drawings. Furthermore, the
Defendants have not appealed the court's determination that
Morningside Development and Turner engaged in unauthorized
copying of the NSI Drawings. At issue, therefore, is the court's
FARADO
conclusion that Morningside Holdings, the owner of the Project,
is liable for copyright infringement with respect to the NSI
Drawings.
• In order to establish vicarious liability, a copyright owner must
demonstrate that the entity to be held so liable: (1) possessed
the right and ability to supervise the infringing activity; and (2)
possessed an obvious and direct financial interest in the
exploited copyrighted materials. Applying these legal principles
to this case, and to the findings made by the district court in its
Opinion, Morningside Holdings was properly held liable for the
infringement of NSI's copyright.
• In analyzing whether such an implied license had been created,
the court concluded that an implied license is created when three
conditions are met, including “(1) a person (licensee) requests
the creation of a work, (2) the creator (licensor) makes that
particular work and delivers it to the licensee who requested it,
and (3) the licensor intended that the licensee copy and
distribute the work.” 

• The third element of this test was not met in this case, said the
court, because NSI did not intend that its copyrighted
drawings be used on the project for which they were created
independent of NSI’s continued involvement. Nothing about
NSI’s representations or conduct suggested that it intended
either the original developer or Morningside to use its plans
without NSI’s future involvement or express consent. In fact, NSI
specifically advised Strutt to the contrary. The court made
particular note of the fact that NSI submitted an AIA agreement
to Strutt that stated NSI’s intention that its drawings not be
further used without its express consent. For these reasons, the
court held that NSI did not grant a implied license to the
defendants to use its drawings. 

Intervest Construction, Inc. v. Canterbury Estate Homes, Inc., 554
F.3d 914 (11th Cir. 2008)
• Under the Copyright Act, a copyrightable “architectural work” is
the design of a building as embodied in any tangible medium of
expression, including a building, architectural plans or
drawings, and includes the overall form as well as the
arrangement and composition of spaces and elements in the
design but not “individual standard features”.
• “Creativity in architecture frequently takes the form of a selection,
25
 coordination, or arrangement of unprotectible elements into
an original, protectible whole.”
• While individual standard features and architectural elements
classifiable as ideas or concepts are not themselves
copyrightable, an architect's original combination or arrangement
of such elements may be.
D. Characters
1. Expression or Idea?
Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., 900 F.
Supp. 1287 (C.D. Cal. 1995)

• it is conceivable that the character really constitutes the story
Titan Sports, Inc. v. Turner Broadcasting Systems, Inc., 981 F.
being told, but if the character is only the chessman in the game
Supp. 65 (D. Conn. 1997)
of telling the story he is not within the area of the protection
afforded by the copyright. However later cases decided by the
same court (Ninth circuit) have allowed copyright protection for
characters who are especially distinctive. Thus we have 2 tests:
the Story Being Told Test and Character Delineation Test.
o In the Story Being Told Test if a character has changed
enormously from film to film, from actor to actor, and
from year to year, then the character is not the story
being told and is not copyrightable. There is no character
infringement unless plaintiff’s original conception
sufficiently developed the character, and defendants
have copied this development and not merely the
broader outlines.
o In the Character Delineation Test, the character must be
unique to deserve copyright protection.
o The court stated that the James Bond character is
copyrightable as viewed under both tests.
• James Bond has certain character traits that have been
developed over time through the sixteen films in which he
appears. Because many actors can play Bond, this becomes
a testament to the fact that Bond is a unique character
whose specific qualities remain constant despite the change
in actors. Indeed, audiences do not watch James Bond for
the story, they watch these films to see the hero at work. A
James Bond film without James Bond is not a James Bond
film.
• The Court also used the the Substantial Similarity Test
FARADO
(Krofft Test) where a finding of infringement is only to be made if
a plaintiff proves both substantial similarity of general ideas
under the extrinsic test and substantial similarity of the
protectable expression of those ideas under the intrinsic test.
o The extrinsic test compares specific, objective criteria of
two works on the basis of an analytic dissection of the
following elements of each work — plot, theme,
dialogue, mood, setting, pace, characters, and sequence
of events.
o The intrinsic test asks whether the total concept and feel
of the two works is also substantially similar.


• Only uniquely developed characters with some degree of novelty
can be copyrighted. The less developed the characters, the less
they can be copyrighted. 

• In the present case, Titan does not have a registered copyright in
the character Diesel, but it has obtained copyright registration in
numerous broadcasts, videos, and magazines in which its Diesel
character has appeared. The court ruled in favour of Titan by
stating that the registration of the appearances of Diesel and the
three page long Amended Complaint by Titan explaining the
character development of Diesel and its story lines is enough to
grant the relief to it. 

• It is not disputed that Titan has a service mark registration for the
character Razor Ramon. Also, after Hall had allegedly signed on
with WCW, WCW used Titan’s trademark on its 900 hotline in
discussing whether “Razor Ramon” was leaving WWF and
whether he would join WCW. Standing alone, WCW’s alleged
use of the mark may be insufficient to establish trademark
infringement. However, Titan alleged that WCW’s use of its mark
was part of their overall scheme to defraud the public into
believing that an "inter- promotional" warfare was going to take
place and that the WWF had challenged WCW wrestlers to
matches on TNT, thus capitalizing on their goodwill.
• In ruling for Titan, the court held that although Titan does allege
the unauthorized use of its "personas" as a violation of CUTPA,
the claim is not based solely on the alleged unauthorized use of
its intellectual property rights. Instead, Titan is claiming an unfair
26
 and deceptive scheme by WCW and that in carrying out this constitute expression protected by copyright
deceptive scheme, Defendants infringed Plaintiff's copyright and independent from the story in which they are contained;

trademark rights. 
 o Anderson’s treatment appropriated these characters and
created a derivative work based upon these characters
Designers Guild Ltd. v. Russell Williams (Textiles) Ltd, [2000] 1 without Stallone’s permission in violation of Section
W.L.R. 2416 (U.K.: House of Lords)
 106(2);
o no part of Anderson’s treatment is entitled to copyright
• Every element in the expression of an artistic work (unless it
protection as his work is pervaded by the characters of
got there by accident or compulsion) is the expression of an
the first three Rocky movies that are afforded copyright
idea on the part of the author. It represents her choice to paint
protection.
stripes rather than polka dots, flowers rather than tadpoles, use
• In citing the opinion of Justice Learnhand the simple test to
one colour and brush technique rather than another, and so on.
determine whether a character should be granted copyright
The expression of these ideas is protected, both as a cumulative
protection would be if a character is developed with enough
whole and also to the extent to which they form a “substantial
specificity so as to constitute protectable expression.
part” of the work.
• In support of this the court cited the case of Warner Brothers v.
• Although the term “substantial part” might suggest a quantitative
Columbia Broadcasting System, known as the Sam Spade
test, or at least the ability to identify some discrete part which, on
Opinion, where it was held that the literary character Sam
quantitative or qualitative grounds, can be regarded as
Spade was not copyrightable, opining that a character could not
substantial, it is clear upon the authorities that neither is the
be granted copyright protection unless it “constituted the story
correct test. Ladbroke (Football) Ltd. v. William Hill
being told.” (as compared to Walt Disney case, where the
establishes that substantiality depends upon quality rather
court held that several Disney comic characters were protected
than quantity. And there are numerous authorities which
by copyright, thus casting some cloud on the Sam Spade opinion
show that the “part” which is regarded as substantial can be
because in effect when the court said that “comic book
a feature or combination of features of the work, abstracted
characters . . . are distinguishable from literary characters, the
from it rather than forming a discrete part.
Warner Bros language does not preclude protection of Disney’s
• Generally speaking, in cases of artistic copyright, the more
characters.”
abstract and simple the copied idea, the less likely it is to
• As to the script, the court used the Kroff Substantial Similarity
constitute a substantial part. Originality, in the sense of the
test which constitutes two prongs:
contribution of the author’s skill and labour, tends to lie in the
o 1. The extrinsic test which consists analytic dissection
detail with which the basic idea is presented.
and expert testimony are employed to determine
• A copyright work may express certain ideas which are not
whether there is substantial similarity of ideas between
protected 
because they have no connection with the literary,
the two works in question.

dramatic, musical 
or artistic nature of the work. 

o 2. The intrinsic test which requires the plaintiff must
• Certain ideas expressed by a copyright work may not be
show that there is substantial similarity of expression
protected 
because, although they are ideas of a literary, dramatic
between the two works in question. The intrinsic test is
or artistic nature, they are not original, or so commonplace as not
subjective and is based on the response of the audience
to form a substantial part of the work.
to the look and feel of the two works.


o But, the court found that there was no substantial
Anderson v. Stallone, 11 U.S.P.Q.2d 1161
similarity between the two and that if there were they
• Anderson’s treatment is not entitled copyright protection
constituted “scenes a fair” that were not protected by
because: 
 copyright.
o the Rocky characters developed in Rocky I, II and III

FARADO 27
 identity; (2) the appropriation of plaintiff’s name or likeness to
defendant’s advantage, commercially or otherwise; (3) lack of
2. Rights of Publicity
consent; and (4) resulting injury.
Wendt v. Host Int’l, Inc., 125 F.3d 806, 811 (9th Cir. 1997)
 • Dean Prosser: It is not impossible that there might be
appropriation of the plaintiff’s identity, as by impersonation,
• The California Civil Code § 3344 (otherwise called the “statutory”
without the use of either his name or his likeness, and that
right of publicity) provides in part: [a]ny person who knowingly
this would be an invasion of his right of privacy. The
uses another’s name, voice, signature, photograph, or
common law right of publicity reaches means of
likeness, in any manner ... for purposes of advertising or
appropriation other than name or likeness, but that the
selling ... without such person’s prior consent ... shall be
specific means of appropriation are relevant only for
liable for any damages sustained by the person or persons
determining whether the defendant has in fact appropriated
injured as a result thereof.
the plaintiff’s identity. The right of publicity has developed to
• There is likewise a common-law right of publicity, which includes
protect the commercial interest of celebrities in their identities.
protection against appropriation for the defendant’s advantage of
• The theory of the right is that a celebrity’s identity can be
the plaintiff’s name or likeness. A common law cause of action
valuable in the promotion of products, and the celebrity has
for appropriation of name or likeness may be pleaded by
an interest that may be protected from the unauthorized
alleging 1) the defendant’s use of the plaintiff’s identity, 2)
commercial exploitation of that identity. If the celebrity’s
the appropriation of plaintiff’s name or likeness to
identity is commercially exploited, there has been an invasion of
defendant’s advantage, commercially or otherwise, 3) lack
his right whether or not his “name or likeness” is used.
of consent, and 4) resulting injury. The so-called right of
• If the celebrity’s identity is commercially exploited, there has
publicity means in essence that the reaction of the public to
been an invasion of his right whether or not his “name or
name and likeness, which may be fortuitous or which may
likeness” is used. Advertisers use celebrities to promote their
be managed and planned, endows the name and likeness of
products. The more popular the celebrity, the greater the number
the person involved with commercially exploitable
of people who recognize her, and the greater the visibility for the
opportunities. The protection of name and likeness from
product.
unwarranted intrusion or exploitation is the heart of the law of
• The identities of the most popular celebrities are not only the
privacy.
most attractive for advertisers, but also the easiest to evoke
• While it is true that Wendt’s fame arose in large part through
without resorting to obvious means such as name, likeness, or
their participation in Cheers, an actor or actress does not lose
voice.
the right to control the commercial exploitation of his or her
• LANHAM ACT “EIGHT-FACTOR” TEST for false representation
likeness by portraying a fictional character.
of goods was used.
• In this case, the district court was wrong in finding that the robots
are not “similar in any manner whatsoever to Plaintiffs,” as there
is reason to believe that a jury could find such robots to be 3. Databases
sufficiently “like” the plaintiffs.
a. Selection, Arrangement, and Utility
• LANHAM ACT “EIGHT-FACTOR” TEST for false representation
of goods was not considered. It should be. Bellsouth Advertising & Publishing Corp. v. Donnelley Information
Publishing, Inc., 999 F.2d 1436 (11th Cir. 1993) (en banc), cert.
denied, 510 U.S. 1101 (1994)

White v. Samsung Elecs. Am., Inc., 971 F.2d 1395 (9th Cir. 1992)
• According to the Feist Publications case, the sine qua non of
• The common law right of publicity cause of action may be
copyright is originality. Facts, whether alone or as a part of a
pleaded by alleging (1) the defendant’s use of the plaintiff’s

FARADO 28
 compilation, are not original and therefore may not be
copyrighted. It further held that a “compilation” which is protected
under the Copyright Act pertains to the compiler's selection,
arrangement and coordination, if original.
• The Copyright Act protects "original works of authorship."
BAPCO's arrangement and coordination is "entirely typical" for a
business directory. With respect to business telephone
directories, the court held that such an arrangement is not only
unoriginal, it is practically inevitable.
• BAPCO's claim of copyright in the arrangement of its directory
also does not survive application of the "merger" doctrine.
• MERGER DOCTRINE: "expression is not protected in those
instances where there is only one or so few ways of expressing
an idea that protection of the expression would effectively accord
protection to the idea itself."
o Because this is the one way to construct a useful
business directory, the arrangement has "merged" with
the idea of a business directory, and thus is
uncopyrightable.
• In the case of a factual compilation, a comparison of the
copyright holder's work with that of the alleged infringer must
distinguish similarities attributable to ideas, which are
unprotected per se, or to expression not owned by the copyright
holder, from those similarities resulting from the copying of the
compiler's original elements.
CCC Information Services, Inc. v. Maclean Hunter Market Reports,
Inc., 44 F.3d 61 (2d Cir. 1994), cert. denied, 516 U.S. 817 (1995)
• The Copyright Act of 1976 explicitly confers limited protection
on compilations. Section 103(a) specifies that “[t]he subject
matter of copyright ... includes compilations,” which are defined
by Section 101 as assemblies of data “selected, coordinated,
or arranged in such a way that the resulting work as a whole
constitutes an original work of authorship”; Section 103(b)
makes clear that the protection in a compilation “extends
only to the material contributed by the author of such work
... and does not imply any exclusive right in the preexisting
material.”
• In Feist, the Supreme Court ruled that originality is an essential
element of copyright protection, and that toil, or “sweat of the
brow,” expended in collecting information does not justify
FARADO
conferring copyright protection on a compilation of facts; rather,
protection attaches only if the selection, coordination, or
arrangement exhibit originality, so that “the resulting work as a
whole constitutes an original work of authorship.”
• The Court repeatedly stressed that the required level of
originality is minimal, and that most compilations, merely by
exercising some independent choice in the coordination,
selection, or arrangement of data, will pass the test.
Compilations that devise new and useful selections and
arrangements of information unquestionably contribute to public
knowledge by providing cheaper, easier, and better organized
access to information. Without financial incentives, creators of
such useful compilations might direct their energies elsewhere,
depriving the public of their creations and impeding the advance
of learning.
• The fact that an arrangement of data responds logically to
the needs of the market for which the compilation was
prepared does not negate originality. To the contrary, the
use of logic to solve the problems of how best to present
the information being compiled is independent creation.
• It is also well established that, in order to protect the
immunity of ideas from private ownership, when the
expression is essential to the statement of the idea, the
expression also will be unprotected, so as to insure free
public access to the discussion of the idea. (“When the ‘idea’
and its ‘expression’ are ... inseparable, copying the ‘expression’
will not be barred, since protecting the ‘expression’ in such
circumstances would confer a monopoly of the ‘idea’ upon the
copyright owner free of the conditions and limitations imposed by
the patent law.”)
• Given the nature of compilations, it is almost inevitable that
the original contributions of the compilers will consist of
ideas. In other compilations, the original contribution of the
compiler will relate to ideas for the coordination, or
arrangement of the data. Such ideas for arrangement are
generally designed to serve the consumers’ needs, making
the data more useful by increasing the ease of access to
those data that answer the needs of the targeted customers,
or dividing the data in ways that will efficiently serve the
needs of more diverse groups of customers
29
b. What Is a "Fact"?
CDN Inc. v. Kapes, 197 F.3d 1256 (19th Cir. 1999)

• The copyright in a compilation “extends only to the material
contributed by the author of such work, as distinguished from the
preexisting material employed in the work “
• Discoverable facts, like ideas, are not copyrightable. But
compilations of facts are copyrightable even where the
underlying facts are not. The distinction between facts and non-
facts, and between discovery and creation, lies at the heart of
this case. The essential ingredient present in creations, but
absent in facts, is originality, “the sine qua non of
copyright.” Subject matter created by and original to the author
merits copyright protection. Items not original to the author, i.e.,
not the product of his creativity, are facts and not copyrightable
• Here, the district court, explicitly referencing Feist, held that
the prices in CDN’s guides are not facts, they are “wholly
the product of [CDN’s] creativity. The evidence indicates that
the plaintiff uses its considerable expertise and judgment to
determine how a multitude of variable factors impact upon
available bid and ask price data. And it is this creative process
which ultimately gives rise to the Plaintiff’s `best guess’ as to
what the current `bid’ and `ask’ prices should be. As such, the
Court finds that these prices were created, not discovered.”
• When the `idea’ and its `expression’ are thus inseparable,
copying the `expression’ will not be barred, since protecting the
`expression’ in such circumstances would confer a monopoly of
the `idea’ upon the copyright owner free of the conditions and
limitations imposed by the patent law,” Accepting the principle in
all cases, including on these facts, would eviscerate the
protection of the copyright law.
• The difference between idea and expression is one of degree.
This circuit has held that “the guiding consideration in drawing
the line is the preservation of the balance between competition
and protection reflected in the patent and copyright laws.”
Matthew Bender & Co. v. West Publishing Co., 158 F.3d 693 (2d. Cir.
1998), cert. denied, 526 U.S. 1154 (1999)
• Neither novelty nor invention is a requisite for copyright
protection, but minimal creativity is required
FARADO
• Works of the Federal Government are not subject to copyright
protection, judicial decisions may be copied at will. Federal
judicial opinions may however form a part of a compilation. A
compilation is a work formed by the collection and assembling of
pre existing materials or of data that are selected coordinated or
arranged in usch a way that the resulting work as a whole
constitutes an original work of authorship.
• Creativity is a function of 1) total number of options available 2)
external factors limiting the viability of certain options and
renders other non creative 3) prior uses that render certain
selections “garden variety.
• The creative spark is missing where 1) industry conventions or
other external factors so dictate selection that any person
composing a compilation of that type would necessarily select
the same categories of information or 2) the author made
obvious garden variety or routine selections.
E. Works that violate the public order
Art. 17 of the Berne Convention

Article 17. The provisions of this Convention cannot in any way affect the
right of the Government of each country of the Union to permit, to
control, or to prohibit, by legislation or regulation, the circulation,
presentation, or exhibition of any work or production in regard to which
the competent authority may find it necessary to exercise that right.
Attorney General v. Guardian Newspapers Ltd., [1990] A.C. 109
(U.K., House of Lords)
• A government is not in a position to win the assistance of the
court in restraining the publication of information imparted in
confidence by it or its predecessors unless it can show that
publication would be harmful to the public interest where
national security, relations with foreign countries or the
ordinary business of government will be prejudiced.
• The general rule is that anyone is entitled to communicate
anything he pleases to anyone else, by speech or in writing or
in any other way. 

• That rule is limited by the law of defamation and other
restrictions similar to these mentioned in article 10 of the
30
 Convention for the Protection of Human Rights and Fundamental Speech and interviews

Freedoms. 

Falwell v. Penthouse International Ltd, 215 U.S.P.Q. 975 (U.S.:
• All those restrictions are imposed in the light of considerations
District Court, West Virginia, 1981)
of public interest such as to countervail the public interest in
freedom of expression. A communication about some aspect of • From time to time, the courts have entertained actions based on
government activity which does no harm to the interests of the a claim of common law copyright in which the medium of
nation cannot, even where the original disclosure has been expression was the spoken word, but in each instance the courts
made in breach of confidence, be restrained on the ground of a have never recognized a proprietary interest where there was no
nebulous equitable duty of conscience serving no useful practical tangible embodiment of the expression of an idea
purpose. 
 • Such a result was never contemplated by the development of the
• Unless disclosure is likely to injure the public interest, it will law regarding common law copyright, and such a result would
not be protected. 
 run counter to the firmly established constitutional guarantees of
• In all circumstances where the original disclosure had been freedom of speech and of the press.
made by a Crown servant in breach of his obligation of • However different or unique plaintiff's thoughts or opinions
confidence, any person to whose knowledge the information may be, the expression of those opinions or thoughts is too
comes and who is aware of the breach comes under an general and abstract to rise to the level of a literary or
equitable duty binding his conscience not to communicate intellectual creation that may enjoy the protection of
the information to anyone else irrespective of the copyright. Although the general subject matter of the interview
circumstances under which he acquired the knowledge. may have been outlined in the reporters' minds prior to their
meeting with plaintiff, the actual dialogue, including the
unprepared responses of plaintiff, was spontaneous and
F. Literary works
proceeded in a question and answer format. There is no defined
Short phrases
 segregation, either by design or by implication of any of plaintiff's
expressions of his thoughts and opinions on the subjects
Exxon Corp. v. Exxon Insurance Consultants Ltd, [1982] Ch. 119
discussed which would aid in identifying plaintiff's purported
(U.K.: High Court and Court of Appeal)
copyrighted material.
• “Exxon” is a word which, though invented and therefore original,
has no meaning and suggests nothing in itself. To give it
Blank forms
substance and meaning, it must be accompanied by other words
or used in a particular context or juxtaposition. A WORD would 
Bibbero Systems Inc. v. Colwell Systems, Inc., 893 F.2d 1104 (U.S.
have to have qualities or characteristics in itself, if such a thing is Court of Appeals, 9th Cir., 1989)
possible, which would justify its recognition as an original literary
• As a general rule, blank forms, such as time cards, graph paper,
work rather than merely as an invented word.
account books, diaries, bank checks, scorecards, address
• A literary work is intended to afford either information or
books, report forms, order forms and the like, which are
instruction, or pleasure, in the form of literary enjoyment.
designed for recording information and do not in themselves
• original literary work” is a composite expression, and it is not
convey information are not copyrightable.
correct to ascertain whether particular subject matters fall within
• There is, however, a well-established exception where text is
the meaning of each of the constitutent parts, and then say that
integrated with blank forms.
the whole expression is merely the sum total of the constitutent
parts. A literary work is intended to afford either information
or instruction, or pleasure, in the form of literary enjoyment.

FARADO 31
 POST – MIDTERMS
IV. Acquiring and Transferring Copyright
A. Deposit and Notice
Section 191, 192, IPC; Section 227-229, IPC; Rule 5, Copyright
Safeguards and Regulations
What Is Publication?
B. Transfer of Copyright
Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 194 F.3d 1211
(11th Cir. 1999)
Sections 180, 181, 182, 183, IPC; Section 4.2 in relation to Sections 87
and 88, IPC Section 92, IPC; Section 237, IPC
Asset Marketing Systems, Inc. v. Gagnon, 542 F.3d 748 (9th Cir.
2008), cert. denied, 129 S. Ct. 2442 (2009)
• Though exclusive licenses must be in writing, grants of
nonexclusive licenses need not be in writing, and may be
granted orally or by implication. (There’s also grant of an implied
license in the context of movie footage and architectural
drawings)
o EFFECTS TEST - An implied license is granted when:
(1) a person (the licensee) requests creation of a work;
and (2) the creator (the licensor) makes that particular
work and delivers it to the licensee who requested it, and
(3) the licensor intends that the licensee-requestor copy
and distribute his work.
• The relevant intent is the licensor's objective intent at the time of
the creation and delivery of the software as manifested by the
parties' conduct. These are the following factors to determine
such an intent:
o whether the parties were engaged in a short-term
discrete transaction as opposed to an ongoing
relationship
o whether the creator utilized written contracts providing
that copyrighted materials could only be used with the
creator's future involvement or express permission
o whether the creator's conduct during the creation or
delivery of the copyrighted material indicated that use of
FARADO
the material without the creator's involvement or consent
was permissible.
New York Times Company v. Tasini, 533 U.S. 483 (2001)
• Does the Copyright Act authorize publishers to republish
individual articles without the consent of the authors?
o No. When a freelance author has contributed an
article to a “collective work” such as a newspaper or
magazine, the Copyright Act recognizes two distinct
copyrighted works ‘copyright in each separate
contribution to a collective work and copyright in the
collective work as a whole.’”
o Copyright in individual works vests in the author of the
contribution (the freelancer) and the collective work
vests in the collective author and extends only to the
creative material contributed by that author not to the
preexisting material.
• A publisher is only privileged to reproduce or distribute an article
contributed by a freelance author, absent a contract otherwise
providing, only “as part of” any (or all) of three categories of
collective works (a) the “collective work (b) any revision of the
“collective work” (c) any “collective work in the same series.” A
publishing company could reprint a contribution from one issue in
a later issue of its magazine, and it could reprint an article from a
1980 edition of an encyclopedia in a 1990 revision of it.
• Revision denotes a new version, distinct form of something
regarded by its creators or others as one work. The
databases unlike microforms do not perceptibly reproduce
articles as part of the collective work to which the author
contributed or as any part of revision.
• Therefore, there was infringement because the publishers
reproduced and distributed the articles in a manner not
authorized by the authors or privileged by the copyright act.
Boosey & Hawkes Music Publishers, Ltd. v. The Walt Disney
Company, 145 F.3d 481 (2d Cir. 1998)
Random House v. Rosetta Books, LLC, 150 F. Supp. 2d 613
(S.D.N.Y. 2001)
32
 1
Vernor v. Autodesk, Inc., 621 F.3d 1102 (9th Cir., 2010 )
C. Open source software and creative commons
F. Open source licenses, see http://www.fsf.org/ 
 allegations as to the existence of the copyrighted films cannot
G. Creative commons licenses, see http://creativecommons.org/ 
 serve as basis for the issuance of a search warrant."
V. Copyright Scope and Enforcement
A. Infringement of Economic Rights
Remedies
Sections 177; 221-224, IPC; Section 3, IPC; Section 10.2, IPC; Sections
216-220, IPC; Sections 225-226, IPC; Section 231, IPC; Rule on Search
and Seizure in Civil Actions for Infringement of Intellectual Property
Rights (A.M. No. 02-1-06-SC)
20th Century Fox v. CA, 164 SCRA 655 (1988)
 the sale, lease or distribution of pirated tapes but also the
• The rule that a basic requirement for the validity of search
warrants, in cases of this nature, is the presentation of the
master tapes of the copyrighted films from which pirated films
are supposed to have been copied, was laid down in this case.
• "The presentation of the master tapes of the copyrighted films
from which the pirated films were allegedly copied, was
necessary for the validity of search warrants against those who
have in their possession the pirated films. The petitioner's
argument to the effect that the presentation of the master tapes
at the time of application may not be necessary as these would
be merely evidentiary in nature and not determinative of whether
or not a probable cause exists to justify the issuance of the
search warrants is not meritorious. The court cannot presume
that duplicate or copied tapes were necessarily reproduced from
master tapes that it owns.
• "The application for search warrants was directed against video
tape outlets which allegedly were engaged in the unauthorized
sale and renting out of copyrighted films belonging to the
petitioner pursuant to P.D. 49.
• "The essence of a copyright infringement is the similarity or at
least substantial similarity of the purported pirated works to the
copyrighted work. Hence., the applicant must present to the
court the copyrighted films to compare them with the purchased
evidence of the video tapes allegedly pirated to determine
1
Did not discuss in class, right?
FARADO
whether the latter is an unauthorized reproduction of the former.
This linkage of the copyrighted films to the pirated films must be
established to satisfy the requirements of probable cause. Mere
Columbia Pictures, Inc. v. Court of Appeals, 237 SCRA 367 (1994)
• It is not correct to say that "the basic fact" to be proven to
establish probable cause in the instant cases is not the
"unauthorized transfer" of a motion picture that has been
recorded but the "sale, lease, or distribution of pirated video
tapes of copyrighted films. "In applying for the search warrants
the NBI charged violation of the entire provisions of Section 56 of
P.D. No. 49 as amended by P.D.No.1988. This included not only
transfer or causing to be transferred of any sound recording or
motion picture or other audio-visual work. But even assuming, as
appellants argue, that only the sale, lease, or distribution of
pirated video tapes is involved, the fact remains that there is
need to establish probable cause that the tapes being sold,
leased or distributed are pirated tapes, hence the issue reverts
back to the question of whether there was unauthorized transfer,
directly or indirectly, of a sound recording or motion picture or
other audio-visual work that has been recorded.
Columbia Pictures v. Court of Appeals, 261 SCRA 144 (1996)
th
• Citing 20 Century Fox -- 20th Century Fox held that the
presentation of master tapes of copyrighted films from which the
pirated films were allegedly copied, was necessary for the
validity of search warrants against those who have in their
possession the pirated films. ... The essence of a copyright
infringement is the similarity or at least substantial similarity of
the purported pirated works to the copyrighted work. Hence, the
applicant must present to the court the copyrighted films to
compare them with the purchased evidence of the video tapes
allegedly pirated to determine whether the latter is an
unauthorized reproduction of the former. This linkage of the
copyrighted films to the pirated films must be established to
satisfy the requirements of probable cause 

• However, the Court refused to apply fully the said ruling. The
Court in this case found that the rationale behind the 20th
33
 Century Fox doctrine is that the pirated copies as well as the
master tapes were available for presentation to the court at
the time of the application for a search warrant to determine
the existence of the linkage of the copyrighted films with the
pirated ones, thus there was no reason not to present them. 
 them.
• It is evidently incorrect to suggest, as the ruling in 20th Century
Fox may appear to do, that in copyright infringement cases, the
presentation of master tapes of the copyrighted films is always
necessary to meet the requirement of probable cause and that,
in the absence thereof, there can be no finding of probable
cause for the issuance of a search warrant.
• To restrict the exercise of discretion by a judge by adding a
particular requirement — the presentation of master tapes, as
intimated by 20th Century Fox — not provided nor implied in the
law for a finding of probable cause is beyond the realm of judicial
competence or statesmanship. There is no law or rule which
requires that the existence of probable cause is or should be
determined solely by a specific kind of evidence.
• A blind espousal of the requisite of presentation of the
master tapes in copyright infringement cases, as the prime
determinant of probable cause, is too exacting and
impracticable a requirement to be complied with in a search
warrant application which, it must not be overlooked, is only
an ancillary proceeding.
People v. Ramos, 83 SCRA 1 (1978)
 [issue on prescription; whether
February 28, and 29 of a leap year, 1964, should be counted as one day
or as separate days]
• It was held in 1969 in Namarco vs. Tuazon that February 28 and
29 of a leap year should be counted as separate days in
computing periods of prescription.
• Running of the period of prescription is interrupted not by the act
of the offended party in reporting the offense to the final but the
filing of the complaint or information in court.
Serrano Laktaw v. Paglinawan, 44 Phil. 855
• The protection of the law cannot be denied to the author of a
dictionary, for although words are not the property of anybody,
their definitions, the example that explain their sense, and the
manner of expressing their different meanings, may constitute a
special work. The court citing the correctional court of the Seine,
held that a dictionary constitutes property, although some of the
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words therein are explained by mere definitions expressed in a
few lines and sanctioned by usage, provided that the greater part
of the other words contain new meanings; new meanings which
evidently may only belonged to the first person who published
• In addition, according to Article 428 of the Civil Code, the author
of a literary, scientific, or artistic work has the right to exploit it
and dispose thereof at will. In relation to this right, there exists
the exclusive right of the author, who is the absolute owner of his
own work, to produce it, according to Article 2 of the Law, and
consequently, nobody may reproduce it, without his permission,
not even to annotate or add something to it, or to improve any
edition thereof, according to Article 7 of the Law.
• It is true that it cannot be denied that the reproduction of the
plaintiff's book by the defendant has caused damages to the
former, but the amount thereof has not been determined at
the trial, for the statement of the plaintiff as to the proceeds he
would have realized if he had printed in 1913 the number of
copies of his work which he stated in his declaration (a fact
which he did not do because the defendant had reproduced it)
was not corroborated in any way at the trial and is based
upon mere calculations made by the plaintiff himself.
Habana v. Robles, 310 SCRA 511 (1999)

• When is there a substantial reproduction of a book? It does not
necessarily require that the entire copyrighted work, or even a
large portion of it, be copied. If so much is taken that the value of
the original work is substantially diminished, there is an
infringement of copyright and to an injurious extent, the work is
appropriated.
• The respondents’ claim that the copied portions of the book CET
are also found in foreign books and other grammar books, and
that the similarity between her style and that of petitioners cannot
be avoided since they come from the same background and
orientation may be true. However, in this jurisdiction under Sec
184 of RA 8293 it is required that “the source and the name of
the author, if appearing on the work, are mentioned.”
• A copy of a piracy is an infringement of the original, and it is no
defense that the pirate, in such cases, did not know whether or
not he was infringing any copyright; he at least knew that what
he was copying was not his, and he copied at his peril.
34
 • In cases of infringement, copying alone is not what is prohibited.
The copying must produce an “injurious effect”. Here, the injury
consists in that respondent Robles lifted from petitioners’ book
materials that were the result of the latter’s research work and
compilation and misrepresented them as her own. She circulated
the book DEP for commercial use and did not acknowledge
petitioners as her source. Hence, there is a clear case of
appropriation of copyrighted work for her benefit that respondent
Robles committed.
• Quotations from a published work if they are compatible with fair
use and only to the extent justified by the purpose, including
quotations from newspaper articles and periodicals in the form of
press summaries are allowed provided that the source and the
name of the author, if appearing on the work, are mentioned.
Joaquin v. Drilon, 302 SCRA 225 (1999)
• The format of a show is not copyrightable. Section 2 of P.D.
No. 49 (Decree on Intellectual Property), enumerate the classes
of work entitled to copyright protection. 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.
• 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.
• 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.
• The copyright does not extend to the general concept or
format of its dating game show. Accordingly, by the very
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nature of BJPI’s copyright, the investigating prosecutor
should have the opportunity to compare the videotapes of
the two shows.
• A preliminary investigation falls under the authority of the
state prosecutor who is given by law the power to direct and
control criminal actions. He is, however, subject to the
control of the Secretary of Justice. 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. He must make his own finding of probable cause and
is not confined to the issues raised by the parties during
preliminary investigation. Moreover, his findings are not
subject to review unless shown to have been made with grave
abuse.
th
• COMPARISON OF THE CASES OF 20 Century Fox Film Corp
th
vs. CA and COLUMBIA PICTURES: In 20 Century v. CA, it
involved raids conducted on various videotape outlets
allegedly selling or renting out “pirated” videotapes. The trial
court found that the affidavits of NBI agents, given in support of
the application for the search warrant, were insufficient without
the master tape. The presentation of the master tapes of the
copyrighted films, from which the pirated films were allegedly
copied, was necessary for the validity of search warrants against
those who have in their possession the pirated films. The
essence of a copyright infringement is the similarity or at
least substantial similarity of the purported pirated works to
the copyrighted work. Hence, the applicant must present to
the court the copyrighted films to compare them with the
purchased evidence of the video tapes allegedly pirated to
determine whether the latter is an unauthorized
reproduction of the former. This linkage of the copyrighted
films to the pirated films must be established to satisfy the
requirements of probable cause. Mere allegations as to the
existence of the copyrighted films cannot serve as basis for the
issuance of a search warrant.
• This ruling was qualified in Columbia Pictures vs. CA:
• In fine, the supposed pronunciamento in said case regarding the
necessity for the presentation of the master tapes of the
copyrighted films for the validity of search warrants should at
most be understood to merely serve as a guidepost in
35
 determining the existence of probable cause in copyright
infringement cases where there is doubt as to the true nexus
between the master tape and the pirated copies. An objective
and careful reading of the decision in said case could lead to no
other conclusion than that said directive was hardly intended
to be a sweeping and inflexible requirement in all or similar
copyright infringement cases.
• VI. [No heading]
Sec. 177
• The Distribution Right
 the copyright owner the right to restrict others from making their
Capitol Records, Inc. v. Thomas, 579 F.Supp. 2d 1210 (D. Minn.
2008)
• Jury Instruction No. 15 stated: “the act of making copyrighted
sound recordings available for electronic distribution on a peer-
to-peer network without license from the copyright owners,
violates the copyright owners’ exclusive right of distribution,
regardless of whether actual distribution has been shown.” The
Court ordered the parties to re-brief the issue, permitted a myriad
of amicus briefs, and conducted a hearing.
• After the hearing, the Court held that liability for a violation of the
exclusive distribution right in §106(3) requires actual
dissemination. Here, the only evidence of actual dissemination of
the copyrighted songs was to MediaSentry, Capitol’s investigator
which downloaded the songs while acting as an agent for
Capitol. Thomas argued that the lawful owner of a copyright
cannot infringe its own copyright.
• However, the Court concluded that if Thomas placed the
copyrighted works on a network designed for easy, unauthorized
copying, that was sufficient participation in the infringement to
hold her liable. A new trial was warranted, however, because
Jury Instruction No. 15 still did not adequately define “actual
distribution.”
• The Court noted that the Circuits are split on the definition of
“actual distribution,” and that there is no uniform definition of
the term “distribution” throughout copyright law. Although
Capitol advocated that the term “distribution” was synonymous
with the term “publication,” the two are distinct concepts. Under
the language of the Copyright Act, all distributions to the public
FARADO
are publications, but not all publications are distributions to the
public.
• In this case, the individuals who infringe by downloading songs
gain only access to free music, not “hundreds of thousands – or
even millions-of dollars in profits.” The damages award was
unprecedented and oppressive and, in this case, did not
accomplish Congress’s goal of deterrence. The improper
instruction substantially prejudiced Thomas.
Bobbs-Merrill Company v. Straus, 210 U.S. 339 (1908)

• The US Supreme Court basically found that copyright law gave
own copies of a work. However, it did not give them any rights to
control what happened to books after they sold them.
• This case described what is now knows as the first sale doctrine,
and is codified in 17 U.S.C. §109(a). The first sale
doctrine basically says that once someone buys a legitimate
copy of a work, they can do whatever they want with it,
including sell it to others, or lend it out, or whatever. They
just cannot make extra copies of it.
• The court held first that the copyright statutes protect an owner's
right to "multiply and sell" the work on their own terms.
The statutory right to sell, however, did not also create a right to
limit resale.
• The court did not hold that a contract or license imposed on the
first sale could not create an obligation. In this case, there was
no contract between the owner and the original purchaser, and
there was not privity of contract between the owner and any third
party.
• The first sale doctrine is what prevents used bookstores and
libraries from being copyright infringers. The first sale doctrine is
sometimes known as the doctrine of exhaustion.
Quality King Distributors, Inc. v. L'anza Research International, Inc.,
523 U.S. 135 (1998)
• “The whole point of the first sale doctrine is that once the
copyright owner places a copyrighted item in the stream of
commerce by selling it, he has exhausted his exclusive statutory
right to control its distribution.”
• Supreme Court reversed the rulings and stated that Article 602’s
exceptions, as embodied in Article 109 (the first sale doctrine)
36
 would not be rendered superfluous if exceptions were admitted.
First, the protection under Article 602 does not apply only to
pirated copies. It also applies to lawfully made copies. Second,
since the first sale doctrine only applies to an owner, it would not
provide a defense for a bailee of a copy, for example.
• The Supreme Court found that the copyright holder could not
prevent re-importation of the products it had authorized for
export from the United States.
• This case did not address the importation of products made
outside the United States under authority of the copyright holder.
The Court addressed that issue in Kirtsaeng v. John Wiley &
Sons, Inc., 568 U.S. ___ (2013), holding that those sales were
also qualifying "first sales", and that copyright holders could not
restrict trafficking of those works after those sales.
Kirtsaeng v. John Wiley & Sons, 568 U.S. __ (No. 11-697, March 19,
2013)
• Kirtsaeng’s actions did not constitute copyright infringement
because Wiley’s exclusive rights in the textbooks that Kirtsaeng
obtained abroad were exhausted under the “first sale” doctrine.
• The “first sale” doctrine applies to copies of a copyrighted work
lawfully made abroad. Section 109(a) says nothing about
geography. A geographical interpretation of the first-sale doctrine
could require libraries to obtain permission before circulating the
many books in their collections that were printed overseas;
potential practical problems are too serious, extensive, and likely
to come about to be dismissed as insignificant—particularly in
light of the ever-growing importance of foreign trade to America
• The Court held that the first sale doctrine applies to goods
manufactured outside of the United States, and the protections
and exceptions offered by the Copyright Act to works "lawfully
made under this title" is not limited by geography. Rather, it
applies to all copies legally made anywhere, not just in the
United States, in accordance with U.S. copyright law. So,
wherever a copy of a book is first made and sold, it can be
resold in the U.S. without permission from the publisher.
• Public Performance
Columbia Pictures Indus. v. Redd Horne, Inc., 749 F.2d 154 (3d. Cir.
1984)
• It is undisputed that the defendants were licensed to exercise the
FARADO
right of distribution, however a copyright owner may dispose of a
copy of his work while retaining all underlying copyrights not
expressly or impliedly disposed of with that copy. It is clear that
the plaintiffs have retained their interest in the other rights.
This is because the grant of one of the rights under Section
106 is not a waiver of any of the other exclusive rights.
• The sales of the video cassette copies of their copyirhgted
motion pictures did not result in waiver of any of the other
exclusive rights, including the exclusive right to perform the
motion pictures publicly.
• Is the showcase of movies in the booths a public performance
constituting an infringement? Yes. To perform a work means,
in a motion picture, to show its images in any sequence or
to make sounds accompanying it audible. Playing a video
cassette results in sequential showing of a motion picture’s
images and in making sounds accompanying it audible.
Thus it is a performance.
• Is it public? Public means to perform it at a place open to the
public or ant any place where a substantial number of
persons outside of a normal circle of a family and its social
acquaintances is gathered. Here Maxwell’s was open to the
public. The showcasing operation is not distinguishable
from that of a conventional movie theater. A performance is
public even though the recipients are not gathered in a single
place, or where the potential recipients of the transmission
represent a limited segment of the public, such as occupants of
hotel rooms. The transmission to members of the public even in
hotel rooms of the booths in this case is a public performance.
• The first sale doctrine prevents the copyright owner from
controlling the future transfer of a particular copy once its
material ownership has been transferred. The transfer of the
video cassettes did not result in waiver of all of the rights under
106. The exclusive right to perform was unaffected. For the
defendant’s argument to succeed it would have to be accepted
that the showcase was a “in-store Rental” which cannot be
countenanced, as from the record it is clear that the transaction
is significantly different from the lease of a tape for home use.
Maxwell never lost physical dominion and control over the tapes.
Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir.
2008)
37
 • In contrast to the District Court, which held that the determination
of a transmission being made to the public should be made on
the grounds of the audience of the underlying work, the Circuit
Court held such a determination should be made considering
only on the potential audience for the particular copy of a work.
As Cablevision transmitted only the copy requested and
recorded "by" a particular user to that user on that receiver used
to request the copy, the transmission was not "to the public."
• The Circuit Court held that Cablevision's proposed DVR system
did not directly infringe Cartoon Network, et al.'s rights of
reproduction and public performance on any of the three claimed
grounds. It is also perceived to be especially important with
respect to establishing copyright liability protection for cloud-
computing and remote-storage providers.
• In order to determine if a transmission was “to the public” a court
must analyze the potential audience of the transmission.
Because the Cablevision system only transmits a performance to
a single subscriber, using a copy made by that subscriber, the
transmission is not “to the public” as required by the copyright
act.
• Public Performance, Public Display, and the Internet
 whether it is de minimis, a distinction must be made between
Perfect 10, Inc. v. Amacon.com, Inc., 508 F.3d 1146 (9th Cir. 2007)
 whether there is a high enough degree of similarity between the
• The Ninth Circuit holds that Google’s creation and display in
search results of lower resolution ‘thumbnail’ copies of
infringing images found on third party websites for the
purpose of aiding the public in locating such images is a fair
use that does not infringe the rights of the holder of the copyright
therein.
• For the purpose of direct infringement, the Ninth Circuit
endorsed the “server test” applied by the District Court.
Under this test, a party infringes the display rights of a
copyright holder in an image when it stores a copy of that
image on its own server, and delivers it to a third party.
When a party merely provides a link to a third party website
on which such infringing material can be found, it is that
third party web site, and not the party providing the link,
that directly infringes the display rights of the copyright
holder by causing that infringing image to be displayed on a
user’s computer screen. Applying this test, Google did not
directly infringe by providing “in-line links” to third party
FARADO
websites that themselves contained infringing images.
• Under § 106(3), a copyright owner has the exclusive right “to
distribute copies. . . .” “Copies” means “material objects . . . in
which a work is fixed,” and the Supreme Court has indicated that
in the electronic context, copies may be distributed electronically.
Because the full-size images are not on Defendant’s computers,
it cannot “distribute” them. It is the third-party website publisher’s
computer that distributes copies of the images by transmitting
the photographic image electronically to the user’s computer.
The Music Industry

Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2004)
• The court held that Beastie Boys' use of a brief segment of that
composition, consisting of three notes separated by a half-step
over a background C note, is not sufficient to sustain a claim for
infringement of Newton's copyright in the composition Choir.
Assuming that the sampled segment of the composition was
sufficiently original to merit copyright protection, it was
nevertheless held that Beastie Boys' use was de minimis and
therefore not actionable. A use is de minimis only if the average
audience would not recognize the appropriation. To know
works to establish copying, and whether that copying is
substantial enough to constitute infringement. The practice of
music sampling will often present cases where the degree of
similarity is high. Indeed, unless the sample has been altered or
digitally manipulated, it will be identical to the sampled portion of
the original recording. Yet as Nimmer explains, if the similarity is
only as to nonessential matters, then a finding of no substantial
similarity should result.
• This, as Nimmer suggests, is a case of a fragmented literal
similarity which exists where the defendant copies a portion of
the plaintiff's work exactly or nearly exactly, without appropriating
the work's overall essence or structure. The fact that Beastie
Boys looped the sample throughout "Pass the Mic" is irrelevant
in weighing the sample's qualitative and quantitative significance.
Quantitatively, the three-note sequence appears only once in
Newton's composition. It is difficult to measure the precise
relationship between this segment and the composition as a
whole. Qualitatively, this section of the composition is no more
38
 significant than any other section.
Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir.
2005)
 need to purchase music.
• de minimis doctrine can never act as a defense to the sampling
of a copyrighted sound recording. As many samples contain only
a small portion of the original work, artists have long relied on the
de minimis doctrine to sustain this creative process. However,
the court found that Section 114(b) of the Copyright Act (which
concerns copyrights of sound recordings) grants sound recording
owners the exclusive right to sample their own recordings.
Because one may not pirate the whole sound recording, the
court reasoned, one may likewise not lift or sample something
less than the whole. In the court's own words, either [g]et a
license or do not sample--anything less would constitute per se
infringement.
• The exclusive rights of reproduction and of the preparation of
derivative works do not extend to the making or duplication of
another sound recording that consists entirely of an independent
fixation of other sounds, even though such sounds imitate or
simulate those in the copyrighted sound recording. The
significance of this provision is amplified by the fact that the
Copyright Act added the word "entirely" to this language. In other
words, a sound recording owner has the exclusive right to
"sample" his own recording.
• GET A LICENSE OR DO NOT SAMPLE. Sampling is the
process by which the artist uses a segment of another’s musical
recording as part of a new work. Sampling is never accidental.
When you sample a sound recording you know you are taking
another's work product.
• Get a license or do not sample. Sampling is the process by
which the artist uses a segment of another’s musical recording
as part of a new work. Sampling is never accidental. When you
sample a sound recording you know you are taking another's
work product.
Arista Records, LLC v. Launch Media, Inc., 578 F.3d 148 (2d Cir.
2009), cert. denied, 130 S.Ct. 1290 (2010) 
 occurred.
• §114 (j)(7) of the DMCA – To be punishable, it expands the
definition of an “interactive service” to include “those that are
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specially created for a particular individual.” Section 114 (j)(7)
was aimed at preventing the loss of record sales resulting from
the availability of interactive digital media that would provide
consumers with a degree of control which would reduce their
• A webcasting service such as LAUNCHcast is interactive under
the statute if a user can either (1) request— and have played— a
particular sound recording, or (2) receive a transmission of a
program ‘‘specially created’’ for the user. A LAUNCHCAST user
cannot request and expect to hear a particular song on demand;
therefore, LAUNCHcast does not meet the first definition of
interactive.
• It appears the only thing a user can predict with certainty — the
only thing the user can control — is that by rating a song at zero
the user will not hear that song on that station again. But the
ability not to listen to a particular song is certainly not a violation
of a copyright holder’s right to be compensated when the sound
recording is played.
• Therefore, we cannot say LAUNCHcast falls within the scope of
the DMCA’s definition of an interactive service created for
individual users, thus not liable under the DMCA.
• The Right to Prepare Derivative Works
Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc., 150
F.3d 132 (2d Cir. 1998)

• Citing Ringgold, "Substantial similarity" requires that the
copying be quantitatively (the amount of the copyrighted work
that is copied, which must be more than "de minimis".
• Because in the instant case the original and secondary works
are of different genres and to a lesser extent because they are in
different media (television series and trivia quiz book), only the
QUALI-QUANTI test is applicable. For the purposes of the
quantitative copying analysis, the secondary work, which focuses
on an entire continuous television series, must be treated as a
single work and not separately from each individually
copyrighted episode) and qualitatively (the copying of
expression, rather than ideas) sufficient to support the legal
conclusion that infringement (actionable copying) has
• Other tests mentioned in the case but were not applied because
they were of different genres:
39
 o ordinary observer test - two works are substantially
similar where `the ordinary observer, unless he set out to
detect the disparities, would be disposed to overlook
them, and regard the aesthetic appeal of the two works
as the same 
 opposed to unprotected ideas or facts.
o total concept and feel test - the similarities in such
aspects as the total concept and feel, theme, characters,
plot, sequence, pace, and setting" of the original and the
allegedly infringing works (This is where Carol
Publishing based its defense - contended that The SAT
and the Seinfeld programs are incomparable in
conventional terms such as plot, sequence, themes,
pace, and setting. For example, The SAT has no plot;
"[t]he notion of pace cannot be said even to exist in the
book") 
 support a finding of substantial similarity.
o (Nimmer test) fragmented literal similarity test - copying
of direct quotations or close paraphrasing /
comprehensive nonliteral similarity test - whether the
fundamental essence or structure of one work is
duplicated in another 
 legal right to control public evaluation of the copyrighted work.”
• Discussed the concept of fair use (but not under the topic
header); Requisites of fair use –
o the purpose and character of the use
o the nature of the copyrighted work 
 •
o the amount and substantiality of the portion used in
relation to the copyrighted work as a whole
o the effect of the use upon the potential market for or
value of the copyrighted work 

Warner Bros. Entertainment, Inc. v. RDR Books, 75 F.Supp. 2d 513
(S.D.N.Y. 2008)
• To establish a case of copyright infringement a plaintiff must
demonstrate 1) ownership of a valid copyright 2) and copying of
constituent elements of the original. Copying has two
components 1) establish actual copying 2) the copying amounts
to an improper or unlawful appropriation. Copying is actionable
when the second work is demonstrated to bear a substantial
similarity to protected expression in the earlier work.
• Appropriate test of substantial similarity is whether “the
copying is quantitatively and qualitatively sufficient to
support the conclusion that infringement has occurred.”
FARADO
(Ringgold)
o Quantitative component addresses the amount of
the copyrighted work copied and qualitative
addresses the copying of protected expression as
o Quantitative considers the amount of copying not
only of direct quotations and close paraphrasing,
but also of all other protectable expression.
o “It is not possible to determine infringement through
a simple word count.” “The quantitative analysis
must always occur in the shadow of their qualitative
nature. Here the copyrighted work is “wholly
original” rather than mixed with unprotected
elements, thus a lower quantity of copying will
• Derivative works discussion: a work is not derivative simply
because it is based upon the preexisting works. If that were the
standard then parodies and book reviews would fall under the
definition and certainly “ownership of copyright does not confer
Statutory language seeks to protect works that are “recast,
transformed, or adapted” into another medium mode language or
revised version while sill representing original authorship.
In this case, it was condensed, synthesized and reorganized
into an A-to-Z reference guide. The lexicon does not re cast
the story into another medium to retell the story of Harry
Potter but instead gives the material another purpose.
Mirage Editions, Inc. v. Albuquerque A.R.T. Company, 856 F.2d 1341
(9th Cir. 1988), cert. denied, 489 U.S. 1018 (1989)

• The Copyright Act confers upon the copyright holder exclusive
rights to make several uses of his copyright. Among those rights
are:
a. The right to reproduce the copyrighted works in
copies;
b. The right to prepare derivative works based upon the
copyrighted work;
c. The right to distribute copies of the copyrighted work
to the public by sale or other transfer of ownership, or by
rental, lease, or lending; and
d. In case of literary, pictoral, graphic, and sculptural
40
 works, including individual images, the right to display
the copyrighted work publicly.
• According to Nimmer, a work will be considered a derivative
work only if it would be considered an infringing work if the
material which it has derived from a preexisting work had
been taken without the consent of a copyright proprietor of
such preexisting work.
• The language “recast, transformed, or adapted” seems to
encompass other alternatives besides simple art reproduction.
By removing the individual images from the book and placing
them on tiles, perhaps ART has not accomplished reproduction
but has certainly recast or transformed the individual images by
incorporating them into its tile- preparing process.
Lee v. A.R.T. Company, 125 F.3d 580 (7th Cir. 1997)
• Originality is essential in derivative work. 
 §
• Aside from the court ruling that the card-on-a-tile is not a
derivative work, it also held that Section 106A(a)(3)(A) which
gives an artist the right to prevent any intentional distortion,
mutilation, or other modification of that work which would be
prejudicial to his or her honor or reputation, was not violated. The
sale of the works on tile has not damaged Lee’s honor or
reputation.
• What is more, § 106A applies only to a work of visual art [defined
in § 101 to mean either a unique work or part of a limited edition
(200 copies or fewer) that has been signed and consecutively
numbered by the author]. Lee's note cards and lithographs are
not works of visual art under this definition, so she could not
invoke § 106A even if A.R.T.'s use of her works to produce
kitsch had damaged her reputation. 
 is satisfied, the factfinder applies the
• Copying in Fact
 subjective and asks "whether the
Three Boys Music Corp. v. Michael Bolton, 212 F.3d 477 (9th Cir.
2000), cert. denied, 531 U.S. 1126 (2001)
 the total concept and feel of the works to
• A copyright plaintiff must prove (1) ownership of the copyright;
and (2) infringement — that the defendant copied protected
elements of the plaintiff's work.
o Absent the second requisite or direct evidence of
copying, proof of infringement involves fact-based
showings that:
§ (1) the defendant had "access" (when there is
FARADO
"an opportunity to view or to copy plaintiff's
work") to the plaintiff's work through:
• “(1) a particular chain of events is
established between the plaintiff's work
and the defendant's access to that work
(such as through dealings with a
publisher or record company), or
• (2) the plaintiff's work has been widely
disseminated”;
o Proof of widespread
dissemination is sometimes
accompanied by a theory that
copyright infringement of a
popular song was
subconscious.
(2) the two works are "substantially similar."
• The courts "require a lower standard of
proof of substantial similarity when a
high degree of access is shown."
[Inverse-Ratio Rule]
• Proof of the substantial similarity is
satisfied by a two-part test of
extrinsic similarity and intrinsic
similarity. Initially, the extrinsic test
requires that the plaintiff identify
concrete elements based on objective
criteria. The extrinsic test often requires
analytical dissection of a work and
expert testimony. Once the extrinsic test
intrinsic test. The intrinsic test is
ordinary, reasonable person would find
Comment [FARR1]: Not sure but this might be the latest
be substantially similar." jurisprudence on copying.
• By establishing reasonable access and substantial
similarity, a copyright plaintiff creates a presumption of
copying.
Selle v. Gibb, 741 F.2d 896 (7th Cir. 1984)

• No direct evidence of access = no copyright infringement;
41
 not even by being substantially similar that access may be
inferred.
• Striking similarity is just one piece of circumstantial evidence
tending to show access and must not be considered in isolation;
it must be considered together with other types of circumstantial
evidence relating to access.
• The judicially formulated definition of "striking similarity" states
that "plaintiffs must demonstrate that `such similarities are of a
kind that can only be explained by copying, rather than by
coincidence, independent creation, or prior common source. The
similarities must be "so striking and of such nature as to
preclude the possibility of coincidence, accident or
independent creation. Also, the similarities should appear in a
sufficiently unique or complex context as to make it unlikely that
both pieces were copied from a prior common source or that the
defendant was able to compose the accused work as a matter of
independent creation.
Ty, Inc. v. GMA Accessories, Inc., 132 F.3d 1167 (7th Cir. 1997)
 (evidence may consist of:
• If two works are so similar as to make it highly probable that the
later one is a copy of the earlier one, the issue of access need
not be addresses separately, since if the later work was a copy
its creator must have had access to the original. However, this is
only a rebuttable presumption which may be overturned by proof
that the creator of the later work could not have seen the earlier
one or a copy of the earlier one. (Gaste)
• Two works may be strikingly similar not because one copied it
from the other but because both are copies of the same thing in
the public domain. (Selle)
• Access does not entail copying, but copying entails access.
Bauman v. Fussell, [1978] R.P.C. 485 (U.K.: County Court & Court of
Appeal, 1953) 
 Here, dissection and expert testimony are irrelevant.
• "Substantially Similar" Copy
 Steinberg v. Columbia Pictures Industries, Inc., 663 F. Supp. 706
Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930), cert.
denied, 282 U.S. 902 (1931)
• For infringement to exist, a) the appropriation cannot be limited
to “literal appropriation,” or appropriation of the text. Indeed,
infringement may occur with regard to the plot or the characters.
Additionally, for infringement to exist, b) the copying must be
FARADO
substantial, and therefore not a “fair use” of the copyrighted
work.
• As a general rule, the “idea/expression dichotomy” holds that
ideas are never copyrightable, though the expression of those
ideas may be subject to copyright protection. While a plot is
more of an idea, the court recognizes that in some cases the
play may nonetheless be copyrightable, though not in this case.
• The plaintiff’s copyright did not cover all that might be drawn
from her play; its content went to some extent into the public
domain. The theme was basically an idea and the characters
were mainly stock figures, which have been used for many
decades.
Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946), cert. denied, 330 U.S.
851 (1947)
• Two-pronged test of infringement [but Three Boys might be more
recent]:
o that defendant copied from plaintiff's copyrighted work:
§ defendant's admission that he copied
§ circumstantial evidence — usually evidence of
access — from which the trier of the facts may
reasonably infer copying.
o that the copying (assuming it to be proved) went so far
as to constitute improper appropriation.
• 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. Comment [FARR3]: But according to Gibb, no talaga eh.
o The test in this requisite is the response of the ordinary
lay hearer – if the intended audience for plaintiff’s work
find substantial similarity between the protected
elements of both the plaintiff’s and defendant’s works.
Comment [FARR2]: No digest, even online. Sowee.
(S.D.N.Y. 1987)
• The court states the test for copyright infringement as copying an
item that is the subject of a valid copyright, making no mention of
improper appropriation of protectible elements. This is in contrast
to the 2nd Circuit's prior opinion in Nichols v. Universal Pictures
Corp.., that infringement occurs only when there is copying and
42
 improper appropriation. The Nichols court held that appropriation
was not improper when the alleged infringer copied only
unprotectible elements of the original work. While it is
appropriate to look at both protectible and unprotectible elements
of a work to determine whether copying has occurred, only the
protectible elements are relevant when it comes to determining
improper appropriation. The Steinberg court made no attempt to
separate the protectable and unprotectable elements of
Steinberg's drawing.
• The court cited the angle, layout, and details of the four city
blocks depicted; the use of color on the horizon and sky; the
distinctive lettering used in both for place names as well as the
title at the top; and the overall stylistic impression of the two
works. The court rejected the argument that any similarity
between the works involved unprotectable scènes à faire, or
standard themes common to any depiction of New York.
Boisson v. Banian, Ltd., 273 F.3d 262 (2d. Cir. 2001)
• The alphabet belongs to the public domain, there is no
copyright protection for “familiar symbols or designs” or
“mere variations of lettering.” The alphabetical
arrangement, however, is copyrightable because the
arrangement of the letters in a five by six block format
required some minimum degree of creativity, which is all
that is required for copyrightability.
• Color by itself is not subject to copyright protection. However “an
original combination or arrangement of colors, should be
regarded as an artistic creation capable of copyright protection.”
The author’s choice in incorporating color with other elements
may be copyrighted. Thus Boissons creative choices as to color
is protectable.
• The use of the alphabet may not be the basis for infringement
alone, but comparing the quilts on the basis of arrangement and
shapes of letters, the colors chosen to represent the letters and
other parts of the quilts, the quilting patterns, the particular icons
chosen and their placement, will determine infringement. 
 • For the purposes of summary judgment, ONLY the extrinsic test
Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693
(2d Cir. 1992) [supra]
• (Abstraction-Filtration-Comparison) In ascertaining substantial
similarity under this approach, a court would first break down
FARADO
the allegedly infringed program into its constituent
structural parts. Then, by examining each of these parts for
such things as incorporated ideas, expression that is necessarily
incidental to those ideas, and elements that are taken from the
public domain, a court would then be able to sift out all non-
protectable material. After following this process of elimination,
the court’s last step would be to compare this material with the
structure of an allegedly infringing program. The result of this
comparison will determine whether the protectable elements of
the programs at issue are substantially similar so as to warrant a
finding of infringement.
Cavalier v. Random House, Inc., 297 F.3d 815 (9th Cir. 2002)
• The "extrinsic test" is an objective comparison of specific
expressive elements. "The test focuses on articulable similarities
between the plot, themes, dialogue, mood, setting, pace,
characters, and sequence of events in two works." When
applying the extrinsic test, a court must filter out and disregard
the non-protectible elements in making its substantial similarity
determination.
• The "intrinsic test" is a subjective comparison that focuses on
"whether the ordinary, reasonable audience" would find the
works substantially similar in the "total concept and feel of the
works."
• The themes of teaching children to have confidence, to
overcome their fears, and to try are not only too general to be
protected but are also standard topics in children's literature. Nor
is the use of "magical adventures," a stock plot device,
protectible.
• Consideration of the total concept and feel of a work, rather than
specific inquiry into plot and character development, is especially
appropriate in an infringement action involving children's works.
Swirsky v. Carey, 376 F.3d 841 (9th Cir. 2004)

• Used the extrinsic test.
is important because the subjective questions must be left to the
jury.
• The extrinsic test requires “analytical dissection of a work
and expert testimony.” “Analytical dissection” requires
breaking the works “down into their constituent elements,
43
 and comparing those elements for proof of copying as
measured by ‘substantial similarity.’
• So long as the plaintiff can demonstrate, through expert
testimony that addresses some or all of these elements and
supports its employment of them, that the similarity was
“substantial” and to “protected elements” of the copyrighted
work, the extrinsic test is satisfied.
• Same rule on copying; Requisites:
o Ownership of copyright
o Copying of the alleged infringer
§ Access, through:
• Admission
• Widespread dissemination
• Through particular chain of events
(Bauman)
§ Substantial Similarity using:
• Extrinsic – on specific expressive and
protected elements, dissecting protected
and unprotected
• Intrinsic – “total concept and feel”
Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp.,
62 F.2d 1157 (9th Cir. 1977)
• Used te intrinsic test.
• The present case demands an even more intrinsic determination
because both plaintiffs' and defendants' works are directed to an
audience of children.
• The Court did not believe that the ordinary reasonable person,
let alone a child, viewing these works will even notice that
Pufnstuf is wearing a cummerbund while Mayor McCheese is
wearing a diplomat's sash. [Attires of the main characters]
The Direct Infringer
 • On contributory infringement, Google could be held
Religious Technology Center v. Netcom On-Line Communication
Services, Inc., 907 F. Supp. 1361 (N.D. Cal. 1995)
• Direct infringement does not require intent or any particular state
of mind, although willfulness is relevant to the award of statutory
damages.
• The court is not persuaded by plaintiffs' argument that Netcom is
directly liable for the copies that are made and stored on its
computer. Where the infringing subscriber is clearly directly liable
FARADO
for the same act, it does not make sense to adopt a rule that
could lead to the liability of countless parties whose role in the
infringement is nothing more than setting up and operating a
system that is necessary for the functioning of the Internet. Such
a result is unnecessary as there is already a party directly liable
for causing the copies to be made. 

Vicarious and Contributory Infringement

Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996)
[Greenhills case]

• Cherry Auction (Cherry) operates a “swap meet” where
independent vendors set up booths that sell Latin music
tapes, among other things. Fonovisa alleges that many of
these tapes are counterfeits of phonorecordings to which it has
copyright and trademark rights.
• Contributory liability for copyright infringement requires two
elements: (1) knowledge of the copyright infringing activity,
and (2) substantial participation, i.e., inducement, cause, or
material contribution, to the infringing conduct of another.
• Merely renting booth space is not "substantial participation"
in the vendors' infringement activities. Cherry was not in the
business of directing vendors' actions by telling them, or
even suggesting to them, what and when and how and to whom
to sell.
• Vicarious liability springs from the agency rule of respondeat
superior, holding an employer liable for infringement by a servant
within his scope of employment. Vicarious liability depends on
two things: (1) a financial interest in the infringing entity and
(2) the extent of one's right and ability to supervise the
infringing activity.
Perfect 10, Inc. v. Amazon.com, Inc., supra
[in-line links case]
contributorily liable if it had knowledge that infringing
Perfect 10 images were available using its search engine,
could take simple measures to prevent further damage to
Perfect 10’s copyrighted works, and failed to take such
steps. In addition to this, the Court said that, “a computer
system operator can be held contributorily liable if it ‘has actual
knowledge that specific infringing material is available using its
system,’ and can ‘take simple measures to prevent further
44
 damage’ to copyrights works yet continued to provide access to
infringing works.”
• On vicarious infringement, it would most likely fail, with the Court
stating that, to prevail on a claim of vicarious copyright
infringement, “a plaintiff must establish that the defendant
exercises the requisite control over the direct infringer and that
the defendant derives a direct financial benefit from the direct
infringement.” The Ninth Circuit held the Perfect 10 had not
shown that Google has the right and ability to stop or limit the
infringing activities of the third party websites improperly
displaying Perfect 10’s images. While Google can terminate
such sites’ participation in its Ad-Sense program, the third party
is still able to display the infringing images should it so choose.
• [Not discussed in class but, hey, might be relevant]
Extinguishment of liability may be evident as the DMCA
immunizes Service Providers such as Google from liability “for
infringement [including contributory infringement] of copyright by
reason of the provider referring or linking users to an online
location containing infringing material or infringing activity, by
using information location tools, including a directory, index,
reference, pointer or hypertext link,” if the service provider meets
certain specified criteria.
Perfect 10, Inc. v. Visa International Service Association, 494 F.3d
788 (9th Cir. 2007), cert. denied, 128 S. Ct. 2871 (2008)
 product be used to infringe, and overcomes the law’s reluctance
• Contributory copyright infringement is a form of secondary
liability with roots in the tort-law concepts of enterprise liability
and imputed intent. We have found that a defendant is a
contributory infringer if it (1) has knowledge of a third party's
infringing activity, and (2) “induces, causes, or materially
contributes to the infringing conduct.” In an Internet context, we
have found contributory liability when the defendant “engages in
personal conduct that encourages or assists the infringement.” 

• Whereas contributory infringement is based on tort-law principles
of enterprise liability and imputed intent, vicarious infringement's
roots lie in the agency principles of respondeat superior. To state
a claim for vicarious copyright infringement, a plaintiff must
allege that the defendant has (1) the right and ability to supervise
the infringing conduct and (2) a direct financial interest in the
infringing activity. One infringes vicariously by profiting from
direct infringement while declining to exercise a right to stop or
FARADO
limit it. 

Liability of Device Manufacturers

Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 125 S. Ct. 2764
(2005)
• Producers of technology who promote the ease of infringing on
copyrights can be sued for inducing copyright infringement
committed by their users.
• One who distributes a device with the object of promoting its use
to infringe copyright, as shown by clear expression or other
affirmative steps taken to foster infringement, is liable for the
resulting acts of infringement by third parties.
• When a widely shared product is used to commit infringement, it
may be impossible to enforce rights in the protected work
effectively against all direct infringers, so that the only practical
alternative is to go against the device’s distributor for secondary
liability on a theory of contributory or vicarious infringement. One
infringes contributorily by intentionally inducing or encouraging
direct infringement, and infringes vicariously by profiting from
direct infringement while declining to exercise the right to stop or
limit it.
• Evidence of active steps taken to encourage direct infringement,
such as advertising an infringing use or instructing how to
engage in an infringing use, shows an affirmative intent that the
to find liability when a defendant merely sells a commercial
product suitable for some lawful use. [The more Sony’s software
is used, the more ads are sent out and the greater the
advertising revenue. Since the extent of the software’s use
determines the gain to the distributors, the commercial sense of
their enterprise turns on high-volume use, which the record
shows is infringing.]
Express limitations under the IPC

Sections 176, 171.11, 184, 186, 187, 188, IPC; Section 189, IPC;
Section 190, IPC Rule 14, Copyright Safeguards and Regulations
VIII. Limitations on Copyright
Express limitations under the IPC
Sections 176, 171.11, 184, 186, 187, 188, IPC; Section 189, IPC;
Section 190, IPC Rule 14, Copyright Safeguards and Regulations
45

Filipino Society of Composers v. Benjamin Tan, 148 SCRA 461
(1987)
• The playing of music in a “dine and dance establishment” which
was paid by the public in purchases of food and drink has been
held to constitute performance of profit.
• HOWEVER, there is no infringement because the composers
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.
o Former rule for registration: An intellectual creation must
be copyrighted within 30 days from publication (if made
in manila, 60 days if made elsewhere) failure to do so
will result in the creation being public property. The
subject songs all became popular in radios, jukeboxes,
etc. long before their registration, one song having been
popular 25 years prior to the hearing in 1968.
Philippine Education Co. v. Sotto, 52 Phil. 580
 Section 185, IPC
• Sec. 5 of old Copyright Law: “such news items, editorial
paragraphs and articles in periodicals may be reproduced unless
they contain a notice that their publication is reserved or unless
they contain a notice of copyright.” In either event, the law
specifically provides that the source of the reproduction or
original reproduced shall be cited. To give the Section another
construction would be to nullify, eliminate and take from the
paragraph the works “they contain a notice that their publication
is reserved. The words are plain and clear, it should be applied.
Lenz v. Universal Music Corp., 801 F.3d 1126 (2015) [Dancing Baby
case]
• Prior to sending a takedown notice under the Digital Millennium
Copyright Act (“DMCA”), a copyright owner must make
a subjective good faith determination that the matter
complained of is not a protected fair use of the copyrighted work.
If a copyright owner does not make such a determination prior to
sending a DMCA takedown letter, then it may be liable for
nominal damages (which may consist of costs and attorneys’
fees).
FARADO
• The Ninth Circuit held that fair use is “authorized by law” under
the U.S. Copyright Act, 17 U.S.C. § 107 and that fair use is
therefore a defense to an allegation of copyright infringement. In
determining fair use, courts will consider the following:
o the purpose and character of the use (including whether
such use is of a commercial nature or is for nonprofit
educational purposes);
o the nature of the copyrighted work;
o the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
o the effect of the use upon the potential market for or
value of the copyrighted work
• Lenz makes clear that while a copyright owner has a duty to
consider the fair use factors, it is not required to engage in a
“searching or intensive” examination.
• To be liable for failure to make a good faith determination, the
copyright owner must have “knowingly misrepresented” that it
had a subjective good faith belief the work was infringing.
Fair use

Harper & Row, Publishers v. Nation Enterprises, 471 U.S. 539 (1985)

• Fair use has been defined as “a privilege in others than the
owner of the copyright to use the copyrighted material in a
reasonable manner without his consent.” Fair use therefore has
always been based on consent of the author, whether implied or
express, to authorize the publication of the work.
• The fair use doctrine cannot be expanded to justify infringement
of expression relating to public figures or news reports.
• Fair use is therefore a defense to an allegation of copyright
infringement. In determining fair use, courts will consider the
following:
o the purpose and character of the use (including whether
such use is of a commercial nature or is for nonprofit
educational purposes);
o the nature of the copyrighted work;
o the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
o the effect of the use upon the potential market for or
value of the copyrighted work
46

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) [Parodies]
• The four statutory factors are to be explored and weighed
together in light of copyright's purpose of promoting science and
the arts.
• Suffice it to say now that parody has an obvious claim to
transformative value, as Acuff-Rose itself does not deny. Like
less ostensibly humorous forms of criticism, it can provide social
benefit, by shedding light on an earlier work, and, in the process,
creating a new one. We thus line up with the courts that have
held that parody, like other comment or criticism, may claim
fair use.
• Purpose and character of the use - the enquiry looks into
whether the use is for criticism, or comment, or news reporting,
and focuses on whether the new work merely supersedes the
objects of the original creation, or instead adds something new,
with a further purpose or different character, altering the original
with new expression, meaning, or message, or whether and to
what extent it is "transformative". The more transformative the
new work, the less will be the significance of other factors, like
commercialism, that may weigh against a finding of fair use.
• Amount of portion used - When parody takes aim at a particular
original work, the parody must be able to "conjure up" at least
enough of that original to make the object of its critical wit
recognizable. What makes for this recognition is quotation of the
original's most distinctive or memorable features, which the
parodist can be sure the audience will know.
• Market effect - As to parody pure and simple, it is unlikely that
the work will act as a substitute for the original, since the two
works usually serve different market functions. The fourth factor
requires courts also to consider the potential market for
derivative works. If the later work has cognizable substitution
effects in protectable markets for derivative works, the law will
look beyond the criticism to the work's other elements
New Era Publications Int'l v. Carol Publishing Group, 904 F.2d 152
(2d Cir.), cert. denied, 498 U.S. 921 (1990)
 • The court further stated that the newspaper did not threaten
• Biographies in general and particularly critical biographies
(as is the case here) fit comfortably within these statutory
categories of illustrative uses that can be fair.
FARADO
• The quotations are used in part to convey facts and ot for
their expression, further the passages used for their
expression are intedend to convey the author’s perception
of Hubbard’s hypocrisy and pomposity which are best
revealed or only revealed through direct quotation.
• The scope of fair use is narrower with respect to
unpublished works.
• There are no absolute rules as to how much of a
copyrighted work may be copied and still be considered a
fair use. This has both a quantitative and qualitative
component
• The “effect on the market” requisite, which concerns the
use upon potential market for or value of copyrighted work,
is “undoubtedly the single most important element of fair
use.”
Castle Rock Entertainment v. Carol Publishing Group, Inc., 150 F.3d
132 (2d Cir. 1998) [Seinfeld]
• The more critical inquiry under the first factor and in fair use
analysis generally is whether the allegedly infringing work
"merely supersedes" the original work or instead adds something
new, with a further purpose or different character, altering the
first with new, whether and to what extent the new work is
transformative.
• In deciding about the amount and substantiality of the portion of
the copyrighted work used, the question must focus on whether
the extent of the copying is consistent with or more than
necessary to further the purpose and character of the use.


Nuñez v. Caribbean International News Corp. (El Vocero de Puerto
Rico), 235 F.3d 18 (1st Cir. 2000)
• Although the photos were placed on the newspaper’s cover in an
attempt to increase sales, the court found that the purpose and
character of use still favored fair use: the photos were
informative and illustrative of the story; the purpose of the use
was transformative from the original intended use as a modeling
portfolio; and defendant used the photos in good faith.
plaintiff’s right of first publication because he had previously
distributed them, they were shown on the television before the
47
 newspaper printed them, and they were intended for public
dissemination.
• The court also found that the market was not negatively affected
because plaintiff used the photos for publicity purposes, not to
make money, by distributing them to the modeling community for
free.


Video Pipeline, Inc. v. Buena Vista Home Entertainment, Inc., 42
F.3d 191 (3rd Cir. 2003) [movie previews/trailers]
• Video Pipeline's clip previews do not add significantly to Disney's
original expression. It adds no "new expression, message, or
meaning" to render the use fair. Here, a substantial portion
of the infringing work was copied verbatim from the
copyrighted work with no additional creative activity reveals
a dearth of transformative character or purpose.
• We have no reason to believe that the two-minute clips manage
in so brief a time, or even intend, to appropriate the "heart" of the
movies.
Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d
Cir. 2006)
[historical events]
• Must be “transformative”; Illustrated Trip is a biographical
work. DK’s use of images placed in chronological order on a
timeline is transformatively different from the mere
expressive use of images on concert posters or tickets.
• Gave importance to history than on creativity.
• Even though the copyrighted images are copied in their
entirety, the visual impact of their artistic expression is
significantly limited because of their reduced size.
Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992)
 • Creative work is to be encouraged and rewarded, but private
• The disassembly of copyrighted object code is, as a matter
of law, a fair use of the copyrighted work if such
disassembly provides the only means of access to those
elements of the code that are not protected by copyright
and the copier has a legitimate reason for seeking such
access.
o Where there is good reason for studying or examining
the unprotected aspects of a copyrighted computer
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program, disassembly, as the only means available, for
purposes of such study or examination constitutes a fair
use.
Sony Computer Entertainment, Inc. v. Connectix Corp. 203 F.3d 596
(9th Cir.), cert. denied, 531 U.S. 871 (2000) [Connectix's copying of the
PlayStation firmware while reverse engineering it; emulation]
• The court found that three of four fair use factors—the purpose
and character of the use the nature of the copyrighted work, and
the effect of the use upon the potential market for the work—all
weighed in favor of fair use. Although the court found that
Connectix copied the entire BIOS program, it concluded that this
factor warranted “very little weight” in cases of “intermediate
infringement” where “the final product does not itself contain
infringing material.”
• Although Connectix's ultimate purpose was selling things, the
direct purpose in copying Sony's code was just to understand
how they worked. Thus not affecting its right over such chip. The
chip contained elements that were not protected by patent, thus,
Connectix may use it.
Perfect 10, Inc. v. Amazon, Inc., supra

Sony Corporation of America v. Universal City Studios, Inc., 464
U.S. 417 (1984)

• The purpose of this use served the public interest in increasing
access to television programming, an interest that is consisted
with the First Amendment policy of providing the fullest possible
access to information through the public airwaves. Even when an
entire copyrighted work was recorded, it is considered fair use
because there is no accompanying reduction in the market
for Respondents’ original work.
motivation must ultimately serve the cause of promoting broad
public availability of literature, music, and the other arts
• An unlicensed use of the copyright is not an infringement
unless it conflicts with one of the specific exclusive rights
conferred by the copyright statute.
A&M Records, Inc. v. Napster, Inc., 2000 WL 573136 (N.D. Cal.
2000)

48
 • Downloading an MP3 is not transformative under the purpose
and character of use factor, and that even though Napster didn't
directly benefit financially from users' downloads (i.e., charge for Princeton University Press v. Michigan Document Services, Inc., 99
the service), "repeated and exploitative copying of F.3d 1381 (6th Cir. 1996) (en banc), cert. denied, 520 U.S. 1156
copyrighted works, even if the copies are not offered for (1997)
sale" could be considered a commercial use. Also, the creative • The Court said that the burden of proof as to market effect rests
works, such as the songs in question, are "closer to the core “of with the copyright holder if the challenged use is of a
intended copyright protection" than non-creative works, thus "noncommercial" nature. The alleged infringer has the burden,
favoring the plaintiffs on the second factor. on the other hand, if the challenged use is "commercial" in
• Widespread wholesale transfer of plaintiff's music negatively nature.
affected the market for CD sales and that it also jeopardizes the
• Please add if ever you know more about this case. Pudpod na
record industry's future in digital markets
o Sampling, where users make temporary copies of a work ako.
to sample it before purchase, was deemed to not be a
fair use, because the "samples" were in fact permanent • Moral Rights

and complete copies of the desired media. Article 6bis, Berne Convention for the Protection of Literary and
o Space-shifting, where users access a sound recording Artistic Works Sections 193-199, IPC 

through the Napster system that they already own in
audio CD format, did not succeed because, while the • Right to Proceeds in Subsequent Transfers (Droit De Suite or Follow
shift to a digital format may have been a personal Up Rights)
storage use, it was accompanied by making the file Sections 200-201, IPC 

available to the rest of the system's users.
o However, permissive distribution of recordings by both • Neighboring Rights
new and established artists who have authorized their Section 202, IPC Section 212, IPC 

music to be disseminated in the Napster system was not 1. Rights of Performers
an infringing use and could continue, along with chat Sections 203-207, IPC 

rooms and other non-distributory features of Napster. Section 215, IPC 

2. Rights of Producers of Sound Recording
American Geophysical Union v. Texaco, Inc., 60 F.3d 913 (2d Cir. Sections 208-210, IPC
1995) Section 215, IPC

• The fair use defense to copyright infringement applies to the 3. Rights of Broadcasting Organizations
systematic photocopying of articles in a scientific journal is not Sections 211, IPC;
applicable in this case. Section 215.2, IPC;
• The "transformative use" concept assesses the value generated P.D. No. 285; Section 239, IPC
by the secondary use and the means by which such value is
generated. If the secondary use involves a mere untransformed D. Moral Rights under US Law

duplication, the value generated by the secondary use is little or
nothing more than the value of the original. In contrast, if the Gilliam v. American Broadcasting Companies, Inc., 538 F.2d 14 (2d
secondary use "adds something new, with a further purpose or Cir. 1976) [False attribution case under the Lanham Act]
different character," the value generated goes beyond the value • One who obtains permission to use a copyrighted script in the
that inheres in the original and "the goal of copyright, to promote production of a derivative work, however, may not exceed the
science and the arts, is generally furthered." specific purpose for which permission was granted. Most of the

FARADO 49
 decisions that have reached this conclusion have dealt with the
improper extension of the underlying work into media or time, i.
e., duration of the license, not covered by the grant of permission
to the derivative work proprietor.
• The rationale for finding infringement when a licensee exceeds
time or media restrictions on his license the need to allow the
proprietor of the underlying copyright to control the method in
which his work is presented to the public applies equally to the
situation in which a licensee makes an unauthorized use of the
underlying work by publishing it in a truncated version.
• Whether intended to allow greater economic exploitation of the
work, as in the media and time cases, or to ensure that the
copyright proprietor retains a veto power over revisions desired
for the derivative work, the ability of the copyright holder to
control his work remains paramount in our copyright law
• Noting that United States law did not include the European
concept of "droit moral", or moral right, the court also noted that
artists had the right of protection against misrepresentation that
would damage their ability to earn money, and that courts had
therefore used laws related to contracts or unfair competition to
provide such protection.
The Visual Artists Rights Act
 Symphony # 1 and Martin's work. These statements are offered
Lilly v. Stout, 384 F.Supp. 2d 83 (D.D.C. 2005)
• The VARA seeks to protect the artist’s individual rights of
“attribution” and “integrity”, known collectively as “moral rights”.
o The right of attribution ensures that artists are correctly
identified with the works of art they create, and that they
are not identified with works created by others;
o The right of integrity allows artists to protect their works
against modifications and destructions that are
prejudicial to their honors or reputations.
• For a photographic work to qualify for protection as a “work of
visual art” under VARA, it must meet the statutory definition: “a
still photographic image produced for exhibition purposes only,
existing in a single copy that is signed by the author, or in a
limited edition of 200 copies or fewer that are signed and
consecutively number by the author.” The term “still photographic
image” includes both photographic prints and negatives,
o Sidenote: Under VARA (unlike copyright infringement),
an artist has a cause of action in a federal court even if
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his artwork is not registered with the Copyright Office.
Because the burden of proof on the artist diminishes and
the amount of monetary damages could increase if an
artwork is registered before an infringement, an
artist should register his copyright as soon as possible.
• While actual photographic negative might be protected under
VARA, its status is irrelevant to prints subsequently produced
from it; existence of rights under VARA depends on precisely
these distinctions between an original artwork and various
reproductions of it. It is the original or limited edition still
photographic image, whether in print or negative form, that
garners the rights the VARA bestows.
Martin v. City of Indianapolis, 192 F.3d 608 (7th Cir. 1999)
[evidence of news articles and clippings to prove that it is a
“recognized stature”]
• The statements contained within the proffered newspaper and
magazine articles and letters are offered by Martin to show that
respected members of the art community and members of the
public at large consider Martin's work to be socially valuable and
to have artistic merit, and to show the newsworthiness of
by Martin to show that the declarants said them, not that the
statements are, in fact, true.
• DISSENT: Construed in the light most favorable to the
defendant, they cannot demonstrate by a preponderance of
the evidence that the plaintiff's art was of a recognized
stature, and that no reasonable jury could find otherwise.
Experts need to weigh in here, and the trial court and
perhaps this court need to come up with a clearer definition
of when works of art achieve "recognized stature."
The Right of Attribution

Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003)
• The right to copy, and to copy without attribution, once a
copyright has expired x x x passes to the public." The rights
of a patentee or copyright holder are part of a "carefully crafted
bargain," under which, once the patent or copyright monopoly
has expired, the public may use the invention or work at will and
without attribution.
50
 • The Court here defined the phrase
“origin of goods” to be the “producer of the tangible goods
that are offered for sale, and not to the author of any idea,
concept, or communication embodied in those goods.”

E. Copyright vs. Plagiarism

In re J. Del Castillo
• plagiarism means the theft of another person’s language,
thoughts, or ideas. To plagiarize, as it is commonly understood
according to Webster, is “to take (ideas, writings, etc.) from
(another) and pass them off as one’s own.” The passing off of
the work of another as one’s own is thus an indispensable
element of plagiarism.
• There is a basic reason for individual judges of whatever level of
courts, including the Supreme Court, not to use original or
unique language when reinstating the laws involved in the cases
they decide. Their duty is to apply the laws as these are written.
But laws include, under the doctrine of stare decisis, judicial
interpretations of such laws as are applied to specific situations.

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