TOPIC: ORIGINALITY

1. Burrow-Giles Lithographic Co. vs Sarony, 111 U.S. 53 (1984)

Facts:

Sarony, a photographer, charged Burrow-Giles Lithographic Co. of violating his copyright with regards
to a photograph titled “Oscar Wilde No.18”. Saraony argued that he is under an agreement with Oscar
Wilde, made him pose in front of a camera for a photo , selected & arranged his costume & arranged the
background, making him the author , designer, inventor and proprietor of the photograph and that
photo is a useful, new, harmonious, characteristic & graceful picture & he made the photo in his place of
business9.

Burrow-Giles Lithographic Co. argued that a photograph is a reproduction on paper of a natural object
and is not a writing produced by an author & therefore cannot be granted a copyright.

ISSUE:

WON the Congress Has a constitutional right to protect photographs & negatives by copyright.

RULING:

Yes. Sec 4952 of the Revised Statutes of 1802 places photographs in the same class as things which
may be copyrighted with books, maps, charts & others & the second section of an act to amend this
statute states that he who shall invent and design from his own works shall cause to be designed &
engraved, etched or worked any historical or other prints shall have the exclusive right for 14 years from
recording the title. In 1831 the protection is extended to 28 years

The statute answers the objection that only books or writing produced by an author are within the
constitutional provision. The only reason why photographs were not included in the act of 1802 is
probably because photography as an art is unknown at that time.

The court finds the photograph to be an original work of art, the product of plaintiff’s own invention
which the plaintiff is an author & which the constitution intended that congress should secure him the
exclusive right to us, publish & sell.

2. BLEISTEIN V. DONALDSON LITHOGRAPHING CO. 188 U.S. 239 (1903)

(Wiki: is a case in which the United States Supreme Court found that advertisements were protected by
copyright. The case is now cited for the proposition that commercial speech can be protected by
copyright.)

Syllabus
Chromolithographs representing actual groups of persons and things, which have been designed from
hints or descriptions of the scenes represented, and which are to be used as advertisements for a circus
are "pictorial illustrations" within the meaning … allowing a copyright to the "author, designer, or
proprietor . . . of any engraving, cut, print, . . . or chromo". And on complying with all the statutory
requirements, the proprietors are entitled to the protection of the copyright laws.

FACTS:

-Traveling circus ‘The Great Wallace Show’ hired the Courier Lithographing Company to design and
produce chromolithographs (posters printed from stone ‘tablets’) for printing posters for advertisements
of the circus. Plaintiff Bleistein made the lithographs based on scenes from the circus, Courier provided
the posters to Wallace.

-When the posters ran out, Wallace did not order from Courier again, but instead asked a rival company
Donaldson Lithographing Co. to reproduce three of the posters

-Defendants argue that advertisements are not copyrightable as they are not “art”

ISSUE:

-Whether advertisements are copyrightable

RULING:

-The posters are copyrightable as they were envisioned and designed by Bleistein. They are covered by
copyright, their purpose notwithstanding.

-As Justice Holmes put it, “It would be a dangerous undertaking for persons trained only to the law to
constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and
most obvious limits. At the one extreme, some works of genius would be sure to miss appreciation.”

3. ALFRED BELL CO vs, CATALDA FINE ARTS

FACTS: Alfred Bell Co. is a British print producer and dealer of the Fine Arts Trade Guild. It has produced
8 mezzotint engraving of old masters produced at its order by 3 mezzotint engravers.
Herein defendants, Catalda Fine Arts is a color lithographer who produced and solid color lithographs of
the 8 mezzotints produced by Alfred Bell Co.

Defendants could have gone directly to the old masters and photographed the printed lithographs but
was impossible from their end due to the processes involved.

On being sued by the plaintiff, the defendants argued that it was a work of public domain and that
mezzotints are not an original given that such process reproduces the same image as the medium.

ISSUE: Whether the defendants' reproduction of the plaintiff's mezzotints constitutes copyright
infringement?

HELD: The defendants' contention apparently results from the ambiguity of the word "original." It may
mean startling, novel or unusual, a marked departure from the past. Obviously this is not what is meant
when one speaks of "the original package," or the "original bill," or (in connection with the "best
evidence" rule) an "original" document; none of those things is highly unusual in creativeness. "Original"
in reference to a copyrighted work means that the particular work "owes its origin" to the "author."
NO LARGE MEASURE OF NOVELTY IS

NECESSARY
 4. Mannion v Coors Brewing Company (SNDY 2006)

FACTS

Photographer Mannion photographed basketball star Kevin Garnett for the Dec 1999 issue of SLAM
magazine

Photo:

1. Garment: against a cloudy sky _____with pcs of jewelries

2. white shirt , shot in right side

3. lighting from left, closed eyes, _____tilted head

2001 Williams proposed a billboard design for Coors Brewing Company

Same concept, different model, photo in black and white, model face not seen, mirrored, same pose

ISSUE

WON there is copyright infringement?

RULING
No. Although existence and and arrangement in the photograph is indisputably contribute to the
Mannio's originality, existence of cloudy skies, Garnett's pose, his white shirt and jewelry are not
copyrightable by themselves

5. Ching Kian V. CA

FACTS OF THE CASE: Petitioner imports vermicelli from China National Cereals Oils and Foodstuffs, based
in Beijing, China, under the firm name C.K.C. Trading. He repacks it in cellophane wrappers with a design
of two-dragons and the TOWER trademark on the uppermost portion.

Ong acquired a Certificate of Copyright Registration from the National Library on June 9, 1993 on the
said design.

Ong filed against Tan a verified complaint for infringement of copyright with damages and prayer for
temporary restraining order or writ of preliminary injunction with the RTC-QC

Ong alleged that he was the holder of a Certificate of Copyright Registration over the cellophane
wrapper with the two-dragon design, and that Tan used an identical wrapper in his business. In his
prayer for a preliminary injunction in addition to damages, he asked that Tan be restrained from using
the wrapper.

Tan filed an opposition alleging that Ong was not entitled to an injunction.

According to Tan, Ong did not have a clear right over the use of the trademark Pagoda and Longkou
vermicelli as these were registered in the name of Ceroilfood Shandong, based in Qingdao, China.
Further, Tan averred that he was the exclusive distributor in the Philippines of the Pagoda and Long Kou
vermicelli and was solely authorized to use said trademark. He added that Ong merely copied the two-
dragon design from Ceroilfood Shandong which had the Certificates of Registration issued by different
countries. Private respondent alleges that the trademark PAGODA BRAND was registered in China on
October 31, 1979 while the trademark LUNGKOW VERMICELLI WITH TWO-DRAGON DEVICE was
registered on August 15, 1985.

Trial Court issued a temporary restraining order on the same date the complaint was filed. It likewise
issued the writ in Ong’s favor upon his filing of a P100,000.00 bond.

CA gave due course and granted the petition. The lower court’s orders, as well as the writ of preliminary
injunction, were set aside. Ong filed a MR from which CA modified its decision and made the injunction
permanent.

ISSUE: Whether the issuance of writ of injunction was proper

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

A person to be entitled to a copyright must be the original creator of the work. He must have created it
by his own skill, labor and judgment without directly copying or evasively imitating the work of another.
The copies of the certificates of copyright registered in the name of Ceroilfood Shandong sufficiently
raise reasonable doubt. With such a doubt, the preliminary injunction asked by Ong against Tan is
unavailing.

To be entitled to an injunctive writ, petitioner must show, inter alia, the existence of a clear and
unmistakable right and an urgent and paramount necessity for the writ to prevent serious damage. In
this case, the Court found that petitioner’s right has not been clearly and unmistakably demonstrated.

The Court added it was premature for the CA to declare that the design of petitioner’s wrapper is a copy
of the wrapper allegedly registered by Ceroilfood Shandong. The only issue brought before the CA
involved the grave abuse of discretion allegedly committed by the trial court in granting the writ of
preliminary injunction, and not on the merits of the infringement case. That matter remains for decision
after appropriate proceedings at the trial court.

6. Sambar vs. Levi Strauss, 378 SCRA 364 (2002)

SUMMARY:

Levi Straus filed a complaint against CVS Garment for allegedly using the design of the former which is
the stitched arcuate design on the Europress jeans which CVS advertised in Manila Bulletin.

FACTS:

Venancio Sambar is doing business under the name and style of CVS Garment Enterprises.

Private respondents Levi Strauss demanded that CVS Garment Enterprises desist from using their
stitched arcuate design on the Europress designs with CVS advertised in the Manila Bulletin. Private
respondent alleged in their complaint that Levi Strauss and Co. an internationally known clothing
manufacturer, owns the arcuate design trademark. CVS and Sambar, without the consent and authority
of private respondents Levi Strauss and in infringement and unfair competition, sold and advertised, and
despite demands to cease and desist, continued to manufacture, sell and advertise denim, pants under
the brand name “Europress” with back pockets bearing the design similar to the arcuate trademark of
private respondents, thereby causing confusion on the buying public, prejudiced to private respondent’s
goodwill and property right. CVS denied that there was infringement or unfair competition because the
display rooms on department stores where Levi’s and Europress jeans were sold, were distinctively
segregated by billboards and other modes of advertisement. It maintains that the Europress arcuate
design is not a copy of that of Levi’s that although there are similarities, there are also differences in the
two designs, cancellation of his copyright was not justified.

ISSUE: Whether petitioner infringe on private respondent’s Levi arcuate designed.

HELD: Yes. Both the trial court and the CA found theres was infringement. Thus, the award of damages
and cancellation of petitioner’s copyright are appropriate. The cancellation of petitioner’s copyright finds
basis on the fact that the design was a mere copy of that private respondent’s trademark. To be entitled
to a copyright, the thing being copyrighted must be original, created by the author through his own skill,
labor and judgment, without directly copying or evasively imitating the work of another. Both the trial
court and the Court of Appeals found there was infringement.

TOPIC: CREATIVITY

7. FEIST PUBLICATIONS INC V. RURAL TELEPHONE SERVICES 499 US 340 (1991)

FACTS: Respondent Rural Telephone Service Company is a certified public utility providing telephone
service to several communities in Kansas. Pursuant to state regulation, Rural publishes a typical
telephone directory, consisting of white pages and yellow pages. It obtains data for the directory from
subscribers, who must provide their names and addresses to obtain telephone service. Petitioner Feist
Publications, Inc., is a publishing company that specializes in area-wide telephone directories covering a
much larger geographic range than directories such as Rural's. When Rural refused to license its white
pages listings to Feist for a directory covering 11 different telephone service areas, Feist extracted the
listings it needed from Rural's directory without Rural's consent. Although Feist altered many of Rural's
listings, several were identical to listings in Rural's white pages. The District Court granted summary
judgment to Rural in its copyright infringement suit, holding that telephone directories are
copyrightable. The Court of Appeals affirmed.

ISSUE: W/N Rural’s white pages are entitled to copyright.

RULING: Rural's white pages are not entitled to copyright, and therefore Feist's use of them does not
constitute infringement. Article I, § 8, cl. 8, of the Constitution mandates originality as a prerequisite for
copyright protection. The constitutional requirement necessitates independent creation plus a modicum
of creativity. Since facts do not owe their origin to an act of authorship, they are not original and thus are
not copyrightable. Although a compilation of facts may possess the requisite originality because the
author typically chooses which facts to include, in what order to place them, and how to arrange the
data so that readers may use them effectively, copyright protection extends only to those components of
the work that are original to the author, not to the facts themselves. This fact/expression dichotomy
severely limits the scope of protection in fact-based works.
8. MULLER & CO. v. NEW YORK ARROWS SOCCER TEAM, INC.

FACTS:

John Muller & Company, Inc. contracted with Dr. David Schoenstadt, owner of New York Arrows soccer
team to do advertising work, including the design of a logo for the team. A dispute of fees arose and
Muller, attempted to copyright the team logo. The Register of Copyrights twice refused to register the
logo, saying that it lacked the minimal creativity necessary to support a copyright. Muller sued
Schoendstadt in the district court on grounds of copyright infringement, breach of contract, and other
state claims. The Register of Copyrights was served notice of the suit and chose to intervene to support
its position that the logo is not copyrightable. The logo consists of four angled lines which form an arrow
and the word

"Arrows" in cursive script below the arrow. The parties agree that there are no disputed issues of
material fact, and that the copyrightability of the logo may be decided as a matter of law.

ISSUE: WON the design logo of New York Arrows soccer team is copyrightable- NO

RULING:

-In order to be copyrightable, a work must show certain minimal levels of creativity and originality

-The district court correctly noted that the issue here is creativity, not originality, although appellant's
argument tends to confuse the two -If the creator seeks to register the tem as a "work of art" or
"pictorial, graphic, or sculptural work, the work must embody some creative authorship in its delineation
or form" -There is no simple way to draw the line between "some creative authorship" and not enough
creative authorship, and there are no cases involving "works" exactly like this one The district court
considered the cases cited by appellant, but distinguished them and held that the Register had not
abused his discretion in finding that appellant's logo lacked the level of creativity needed for
copyrightability. The Register's decisions are subject to judicial review, but only on an abuse of discretion
standard.

9. MESHWERKS, INC. v. TOYOTA MOTORS SALES, INC. 17 June 2008 | Judge Gorsuch | Subject Matter:
Originality

PETITIONER/S: Meshwerks, Inc. RESPONDENT/S: Toyota Motors Sales U.S., Inc.

SUMMARY: For its advertising campaign, Toyota & Saatchi (its advertising agency) needed digital models
of its cars to appear in various media, including television commercials and websites. To supply these
digital models, Toyota & Saatchi hired Grace & Wild, Inc (G&W), which in turn hired Meshwerks.
Meshwerks was in charge of digitizing the cars by mapping out data points in a computerized grid to
create a manipulatable “wire frame” of the car.
The dispute arose because, according to Meshwerks, it contracted with G&W for only a single-use of its
models — as part of one Toyota television commercial — and neither Toyota nor anyone else was
allowed to use the digital models created from Meshwerks’ wire frames in other advertisements. The
appellate court ruled in favor of Toyota Motors Sales, Inc.

DOCTRINE: 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.” 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. In this case, Meshwerks’ models depict nothing more than
unadorned Toyota vehicles — the car as a car.

A person’s intent to copy should be considered strong evidence that what that person has produced is
not copyrightable. Authorial intent sometimes can shed light on the question of whether a particular
work qualifies as an independent creation or only a copy. The undisputed evidence leaves no

question that Meshwerks set out to copy Toyota’s vehicles rather than to create, or even to add, any
original expression.

FACTS:

1. For its 2004 advertising campaign, Toyota & Saatchi (its advertising agency) needed digital
models of its cars to appear in various media, including television commercials and websites.

2. To supply these digital models, Toyota & Saatchi hired Grace & Wild, Inc (G&W), which in turn
hired Meshwerks. Meshwerks was in charge of digitizing the cars by mapping out data points in a
computerized grid to create a manipulatable “wire frame” of the car. a. It then fine-tuned, or “sculpted”,
the lines to make the models resemble the cars as closely as possible. With these wire frame models,
G&W then added the necessary details in the car models, including color, texture, lighting, and
animation. b. These were then sent to Saatchi and Toyota for use in the advertisements.

3. The dispute arose because, according to Meshwerks, it contracted with G&W for only a single-
use of its models — as part of one Toyota television commercial — and neither Toyota nor anyone else
was allowed to use the digital models created from Meshwerks’ wire frames in other advertisements. a.
Thus, Meshwerks claims Toyota improperly reused and redistributed the models created by Meshwerks
in a host of other media, in violation of copyright laws as well as the parties’ agreement. b. In support of
this contention, Meshwerks points to the fact that it sought and received copyright registration on its
wire frame models.

4. Toyota, Saatchi, and G&W moved for summary judgment and won in the district court. a. The
district court pointed out that Meshwerks’ models lacked sufficient originality to warrant copyright
protection, stressing

that Meshwerks’ intent was to replicate as closely as possible the image of Toyota’s cars. b. The original
expression was thus attributable to Toyota’s designers who conceived of the vehicle designs.

ISSUE/S: Did Toyota, Saatchi, and G&W violate Meshwerks’ copyright over its wire frame models? NO.

RATIO: 1. Meshwerks’ models are not protected by copyright. To make a case for copyright infringement,
Meshwerks must show that: a. it owns a valid copyright; and b. defendants copied constituent elements
of the work that are original to Meshwerks. 2. Meshwerks’ copyright registration merely creates a
presumption of a valid copyright, but this may be overcome by presenting evidence proving otherwise.
3. 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. 4. Original
works are those independently created by the author, as opposed to copied from other works. The work
must possess at least some minimal degree of creativity. Both independent creation and a minimal
degree of creativity are required, though this is not to say that to count as containing a minimal degree
of creativity a work must have aesthetic merit in the minds of judges. a. Photography was initially met by
critics with a degree of skepticism. Photographs may well sometimes lack originality and are thus not per
se copyrightable; however, the extent that a photograph reflects the photographer’s decisions regarding
pose, positioning, background, lighting, shading, etc. makes the photograph copyrightable to a certain
extent.

b. On the other hand, digital modeling, such as in this case, can be, surely is being, and no doubt
increasingly will be used to create copyrightable expressions. Yet, just as photographs can be, but are not
per se, copyrightable, the same holds true for digital models. 5. In this case, Meshwerks’ models depict
nothing more than unadorned Toyota vehicles — the car as a car. Meshwerks did not make any decisions
regarding lighting, shading, background, angle, etc. which decisions would make depictions of things or
facts in the world as completely new expression subject to copyright protection. 6. 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. a. To the extent that Meshwerks’ digital
wire frame 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. b. The fact that intensive, skillful, and even creative labor is invested in the process of creating a
product does not guarantee its copyrightability. 7. Finally, Meshwerks’ intent in making its wire frame
models provides additional support. Authorial intent sometimes can shed light on the question of
whether a particular work qualifies as an independent creation or only a copy. The undisputed evidence
leaves no question that Meshwerks set out to copy Toyota’s vehicles rather than to create, or even to
add, any original expression. 8. Originality is the sine qua non requirement of copyright. If the basic
design reflected in a work or art does not owe its origin to the putative copyright holder, then that
person must add something original to that design, and then only the original addition may be
copyrighted.

RULING:

The judgment of the District Court AFFIRMED

TOPIC IDEA/EXPRESSION:

10. Baker v. Selden

Facts:

Selden was the author of a book called “Selden's Condensed Ledger, or Book-keeping Simplified”. It was
published in 1859 and rightful copyrights were registered for the same. This work contained a new
system of book-keeping. Selden also held the copyrights for future improvements made to this system. In
total, Selden had authored 6 such books. These books explained the system and the reasoning behind it.
Baker had used a similar system in his books, but the tables used had different headings and column
arrangements.

Issues:

Whether Baker had infringed copyrights held by Selden?

Ruling :

The court looked at the evidence presented by both sides and decided in favor of Baker. They did not
find Baker's usage to be violative of copyright held by Selden.

This judgment established an important principle of the present copyright law. The aspect of the “idea-
expression dichotomy” was fortified through this case law. Copyright protection is provided only to the
expression of an idea and not the idea itself. Therefore, in this case, protection was awarded to the
expression made by Selden in his 6 books and not the system of book-keeping mentioned in his books.

11. A.A. Hoehling v. Universal City Studios, Inc., 618 F.2d 972 (2d Cir.), cert. denied, 449 U.S. 841 (1980)

Facts: Hoehling (plaintiff) published a book in 1962 about the Hindenburg dirigible. The book postulated
that the Hindenburg’s explosion was the result of sabotage, rather than an accident.Ten years later,
Michael MacDonald Mooney (defendant) published a book of historical fiction, and the original outline
for the book was sold as movie rights to Universal City Studios, Inc. (Universal) (defendant). Mooney
acknowledged that he consulted Hoehling’s book and that he relied on it for some details but also
asserts that he studied other sources, traveled to Germany and conducted his own interviews. Hoehling
filed a copyright-infringement suit against Universal and Mooney. The district court granted the
defendants’ motion for summary judgment. Hoehling appealed.

Issue: Whether or not Mooney committed copyright infringement.

Ruling: No, there was no copyright infringement. It is undisputed that Hoehling has a valid copyright in
his book and his expression of the idea of the Hindenburg. However, the idea of why the Hindenburg
exploded is not copyrightable and can freely be used by other authors. Also, historical facts, themes, and
research have been deliberately exempted from the scope of copyright protection to vindicate the
overriding goal of encouraging contributions to recorded knowledge, the states are pre-empted from
removing such material from the public domain.

12. American Dental Association vs. Delta Dental Plans Association (1997)

Facts

The American Dental Association has created the Code on Dental Procedures and Nomenclature. The
first edition was published in 1969; the Code has been revised frequently since, in response to changes
in dental knowledge and technology.All dental procedures are classified into groups;each procedure
receives a number, a short description, and a long description. For example, number 04267 has been
assigned to the short description “guided tissue regeneration-nonresorbable barrier, per site, per tooth
(includes membrane removal)”, which is classified with other surgical periodontic services.

The Code made its first appearance in the Journal of the American Dental Association, covered by a
general copyright notice; the 1991 and 1994 versions were submitted for copyright registration, which
was granted by the Register of Copyrights.

Delta Dental Association has published a work entitled Universal Coding and Nomenclature that includes
most of the numbering system and short descriptions from the ada's Code. In this suit for copyright
infringement, Delta contends that it is entitled to reprint modified versions of the Code under an express
or implied license, as a joint author (Delta participated in the groups that drafted the Code), and as fair
use. It contends that by distributing pamphlets containing some of the Code's older versions without
copyright notices the ada has forfeited its copyright.

Delta also argues that the Code is not copyrightable subject matter, and the district court granted
summary judgment in its favor on this ground without reaching Delta's other arguments.

Issue

Whether the ADA's Code on Dental Procedures and Nomenclature is eligible for copyright protection.

RULING

The district court held that the ADA's Code cannot be copyrighted because it catalogs a field of
knowledge and is the work of a committee, making it lacking in originality.

The court acknowledged that taxonomies, such as the ADA's Code, are designed to be useful and are not
eligible for copyright pro-tection. However, it noted that similar items are routinely copyrighted and
challenges to their validity are routinely rejected. The court also referenced the Copyright Act of 1790,
which specifies that any original literary work may be copyrighted.

The court further argued that the Code's descriptions do not "merge with the facts" and are separate
from the dental procedures them-selves. It concluded that the long descriptions in the Code are part of
the copyrighted work and contribute to its copyrightability.

In response to the argument that the Code should not be copyrightable because it is a
"system," the court held that copyright law covers only expression and not functional as-pects. It
determined that the Code's utilitarian aspects were inseparable from its expression, rendering it
ineligible for copyright protection.

The court vacated the judgment and remanded the case for further proceedings. It stated that any award
of attorneys' fees would depend on the final decision in the litigation.

13. FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC vs HONORABLE FRANKLIN DRILON,
GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and CASEY FRANCISCO (GR No. 108946,
JANUARY 28, 1999)

FACTS: Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of Certificate of Copyright No. M922,
dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977. On June 28,
1973, petitioner BJPI submitted to the National Library an addendum to its certificate of copyright
specifying the show’s format and style of presentation. Upon complaint of petitioners, information for
violation of PD No. 49 was filed against private respondent Zosa together with certain officers of RPN 9
for airing It’s a Date. It was assigned to Branch 104 of RTC Quezon City. Zosa sought review of the
resolution of the Assistant City Prosecutor before the Department of Justice. On August 12, 1992,
respondent Secretary of Justice Franklin M. Drilon reversed the Assistant City Prosecutor’s findings and
directed him to move for the dismissal of the case against private respondents. Petitioner Joaquin filed
motion for reconsideration but such was denied.

ISSUE: Whether or not the format or mechanics or petitioner’s television show is entitled to copyright
protection?

RULING: The Court ruled that the format of the show is not copyrightable. Sec. 2 of PD No. 49, otherwise
known as the Decree on Intellectual Property, enumerates the classes of work entitled to copyright
protection. The provision is substantially the same as Sec. 172 of the Intellectual Property Code of the
Philippines (RA 8293). The format or mechanics of a television show is not included in the list of
protected works in Sec. 2 of PD 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
independent right granted by the statute and not simply a preexisting 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 person and on terms and conditions specified in the statute.
The Court is of the opinion that petitioner BJPI’s copyright covers audio-visual recordings of each episode
of Rhoda and Me, as falling within the class of works mentioned in PD 49. The copyright does not extend
to the general concept or format of its dating game show. 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 a probable cause. A television show
includes more than mere words can describe because it involves a whole spectrum of visuals and effects,
video and audio, such that no similarity or dissimilarity may be found by merely describing the general
copyright / format of both dating game shows.

14. Pearl & Dean vs. Shoemart

SHOEMART, INCORPORATED, and NORTH EDSA MARKETING, INCORPORATED

FACTS: Plaintiff Appellant Pearl and Dean secured a copyright registration for their manufactured
advertising display units, which are simply referred to as Light Boxes. For context These "light boxes"
were basically specially printed posters that were sandwiched between glass sheets and illuminated by
backlights. In 1985 Pearl and Dean negotiated with Shoe Mart Incorporated for the installation of these
Light Boxes at SM North Edsa. SMI offered their SM Makati and SM Cubao Branches instead. Pearl and
Dean submitted contracts for the SM Cubao and SM Makati Branches for signing but only SM Makati's
came back signed. A letter was sent reminding SMI regarding the contracts for SMI Cubao but no reply
was given and in 1866 SMI's counsel informed Pearl and Dean that it was rescinding it's contract for SM
Makati due to Non-Performance. The action was protested by Pearl and Dean (Vergara General
Manager) and pushed for the signing of the contract for SM Cubao.

Two Years later Pearl and Dean found out that exact copies of its light boxes were installed as "poster
ads" at SM City and in the fastfood section of SM Cubao and two other SM Stores.

It further discovered that defendant-appellant North Edsa Marketing Inc. (NEMI), through its marketing
arm, Prime Spots Marketing Services, was set up primarily to sell advertising space in lighted display
units located in SMI’s different branches. Pearl and Dean noted that NEMI is a sister company of SMI.

Pearl and Dean sent a letter dated December 11, 1991 to both SMI and NEMI enjoining them to cease
using the subject light boxes and to remove the same from SMI's establishments.

It also demanded the discontinued use of the trademark "Poster Ads,"

Pearl and Dean filed this instant case for infringement of trademark and copyright, unfair competition
and damages. SMI maintained that it independently developed its poster panels using commonly known
techniques and available technology and they also claimed "Poster Ads" was a general term.

Whereas NEMI denied having manufactured, installed or used any advertising display units, nor having
engaged in the business of advertising.

The RTC of Makati City decided in favor of P D. On appeal, however, the Court of Appeals reversed the
trial court.

Ruling: The Court of Appeals held that the copyright was limited to the technical drawings alone and not
to the light box itself. The protection of the drawing does not extend to the unauthorized duplication of
the object drawn because copyright extends only to the description or expression of the object and not
to the object itself. It does not prevent one from using the drawings to construct the object portrayed in
the drawing. Copyright only applies to the technical drawing and not the structure itself.

Also in the case of the infringement of the Trademark of "Poster Ads.' the Trademark that Pearl and Dean
has for the term "Poster ads" covers stationaries. There is no legal basis to the finding of liability on the
part of the SMI and Nemi for their use of the words "Poster Ads" because "Poster Ads" was used on the
display units. The term "Poster ads" is also TOO generic because it was used in the field of poster
advertising

15. JESSIE CHING v. WILLIAM SALINAS et. Al

G.R. No. 161295 June 29, 2005

FACTS: Petitioner Ching is a maker and manufacturer of a utility model, Leaf Spring Eye Bushing for
Automobile, for which he holds certificates of copyright registration. Petitioner's request to the NBI to
apprehend and prosecute illegal manufacturers of his work led to the issuance of search warrants
against respondent Salinas, alleged to be reproducing and distributing said models in violation of the IP
Code. Respondent moved to quash the warrants on the ground that petitioner's work is not artistic in
nature and is a proper subject of a patent, not copyright. Petitioner insists that the IP Code protects a
work from the moment of its creation regardless of its nature or purpose. The trial court quashed the
warrants. Petitioner argues that the copyright certificates over the model are prima facie evidence of its
validity. CA affirmed the trial court's decision.

ISSUE: Whether or not petitioner's model is an artistic work subject to copyright protection.

RULING: NO.

As gleaned from the specifications appended to the application for a copyright certificate filed by the
petitioner, the said Leaf Spring Eye Bushing for Automobile and Vehicle Bearing Cushion are merely
utility models. From the description of the models and their objectives, these articles are useful articles
which are defined as one having an intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey information. Plainly, these are not literary or artistic works. They
are not intellectual creations in the literary and artistic domain, or works of applied art. They are
certainly not ornamental designs or one having decorative quality or value. Indeed, while works of
applied art, original intellectual, literary and artistic works are copyrightable, useful articles and works of
industrial design are not. A useful article may be copyrightable only if and only to the extent that such
design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and
are capable of existing independently of the utilitarian aspects of the article. In this case, the bushing
and cushion are not works of art. They are, as the petitioner himself admitted, utility models which may
be the subject of a patent.
Topic: Derivative Works and Compilations

16. L. Batlin Son, Inc. v. Snyder 536 F.2d 486, 487-94 (2d Cir. 1976)

FACTS OF THE CASE: Uncle Sam mechanical banks have a basic delightful design and have long since
been in the public domain. The banks are well documented in collectors' books and known to the
average person interested in Americana.

A description of the bank is that Uncle Sam, dressed in his usual stove pipe hat, blue full dress coat,
starred vest and red and white striped trousers, and leaning on his umbrella, stands on a four- or five-
inch wide base, on which sits his carpetbag. A coin may be placed in Uncle Sam's extended hand. When a
lever is pressed, the arm lowers, and the coin falls into the bag.

Appellant Jeffrey Snyder obtained a registration of copyright on a plastic "Uncle Sam bank". According to
his affidavit, he had seen a cast metal antique Uncle Sam bank with an overall height of the figure and
base of 11 inches.

In April, 1974, he flew to Hong Kong to arrange for the design and eventual manufacture of replicas of
the bank as Bicentennial items, taking the cast metal Uncle Sam bank with him. His Hong Kong buying
agent selected a firm, "Unitoy," to make the plastic "prototype". Snyder wanted his bank to be made of
plastic and to be shorter than the cast metal sample "in order to fit into the required price range and
quality and quantity of material to be used."

A competitor business called L. Batlin and Son tried to import its own plastic version of the bank, but the
United States Customs Service blocked its shipments because of Snyder’s copyright. Thus, Batlin
instituted suit for a judgment declaring appellants' copyright void and for damages for unfair
competition and restraint of trade.

ISSUE: Whether copyright protection can be applied to appellant’s “Uncle Sam banks” despite being
mere copies or having insignificant differences to a public domain material.

RULING OF THE COURT: No, copyright protection only applies to works with sufficient originality rather
than mere copies or insignificant differences of public domain material.

The Court held that the banks have 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. What the leading authority has called "the one pervading
element prerequisite to copyright protection regardless of the form of the work" is the requirement of
originality — that the work be the original product of the claimant. This derives from the fact that
copyright protection may be claimed only by "authors." Thus, "one who has slavishly or mechanically
copied from others may not claim to be an author."

To support a copyright there must be at least some substantial variation, not merely a trivial variation
such as might occur in the translation to a different medium. Nor can the requirement of originality be
satisfied simply by the demonstration of "physical skill" or "special training" which was required for the
production of the plastic molds that furnished the basis for appellants' plastic bank. A considerably
higher degree of skill is required, true artistic skill, to make the reproduction copyrightable.

Here on the basis of appellants' own expert's testimony it took the Unitoy representative "[a]bout a day
and a half, two days work" to produce the plastic mold sculpture from the metal Uncle Sam bank. If
there be a point in the copyright law pertaining to reproductions at which sheer artistic skill and effort
can act as a substitute for the requirement of substantial variation, it was not reached here.

To extend copyrightability to minuscule variations would simply put a weapon for harassment in the
hands of mischievous copiers intent on appropriating and monopolizing public domain work.

17. ENTERTAINMENT RESEARCH GROUP vs. GENESIS CREATIVE

122 F.3D 1211 | AUGUST 18, 1997 | J.

FACTS: The Entertainment Research Group (ERG) designs and manufactures inflatable costumes based
on cartoon characters used for advertising and promotional purposes. (e.g. Pillsbury - “Pillsbury Dough
Boy” costume, Toys-R- Us - “Geoffrey the Giraffe” costume, Quaker Oats - “Cap’N Crunch” costume).

ERG has developed techniques and designs that have resulted in high-quality, attractive, durable and
comfortable inflatable costumes. Up until the Spring of 1991, ERG was allegedly the only manufacturer
utilizing these techniques. ERG is owned by Allen Edward “Ed” Breed. Mr. Breed is also ERG's president
and sole shareholder.

Genesis is in the business of marketing promotional and advertising devices to various companies and it
was to sell exclusively ERG’s products on a commission basis, while Aerostar is a manufacturer of hot air
balloons, cold air inflatable products and cold air walk- around costumes.

ERG and Genesis began a business relationship-a relationship that has evolved into this lawsuit.

*Genesis describes the relationship as that of manufacturer (ERG) and wholesaler (Genesis). ERG
describes it as a principal (ERG)-agent (Genesis) relationship that was created by an oral contract under
which Genesis was to sell exclusively ERG's products and related repair and maintenance services on a
commission basis.

ERG claims that Genesis secretly entered into an agreement with Aerostar while the ERG-Genesis
relationship was still alive and that Genesis supplied Aerostar with ERG-made costumes and ERG’s
proprietary information so that Aerostar could enter into the inflatable costume industry and so that
Genesis could get itself a better deal through Aerostar. ERG further claims that Genesis provided
Aerostar with examples of ERG-manufactured costumes so that Aerostar could learn how to
manufacture the complicated and intricate costumes and so that Aerostar could copy the costumes.

ERG did not possess valid copyrights in its three- dimensional inflatable costumes but there was a
preexisting copyright on the two-dimensional cartoon characters.

ISSUE: Whether the ERG’s costumes are copyrightable as derivative works?

RULING: No. The Copyright Act defines a derivative work as a work based upon one or more pre-existing
works, such as an art reproduction or any other form in which a work may be recast, transformed, or
adapted.

Indeed, the body of law regarding derivative copyrights is designed to strike a balance between the
holder of a copyrightp in the underlying work and the creator of a work that is made by copying that
underlying work. Courts must be concerned about the impact such a derivative copyright will have on
the copyright privileges and rights of the owner of the underlying work. of preexisting two- dimensional
works.

Durham Test:

This test contains two prongs: First, to support a copyright the original aspects of a derivative work must
be more than trivial. Second, 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.

The Durham test is the proper approach.

18. PICKETT vs. PRINCE

19. Feist Publications, Inc. vs. Rural Telephone Service Company

No. 89-1999 January 9, 1991

Page 499 US 340 (1991)

KEY TAKEAWAY: (1) Facts are not copyrightable; and (2) Compilation of facts generally are
copyrightable.

FACTS:

Rural Telephone Service Company provides telephone service to several communities in Kansas.
They publish telephone directories with white and yellow pages as part of its monopoly franchise, by
obtaining data from subscribers, who must provide their names and addresses to obtain telephone
service. Feist Publications, Inc., is a publishing company that specializes in area-wide telephone
directories covering a much larger geographic range than directories such as Rural's.

Feist and Rural compete vigorously for yellow pages advertising. To obtain white pages listings
for its area-wide directory, Feist approached 11 telephone companies operating in Kansas and offered to
pay for the right to use its white pages listings. When Rural refused to license its white pages listings,
Feist extracted the listings it needed from Rural's directory without Rural's consent.

ISSUE: Whether or not Feist infringed Rural’s copyright over its white pages.

RULING: No.

No one may claim originality as to facts because facts do not owe their origin to an act of
authorship. Census-takers, for example, do not “create” the population figures that emerge from their
efforts; in sense, they copy these figures from the world around them. Census data therefore do not
trigger copyright, because the data are not original in the constitutional sense.

Factual compilations, on the other hand, may possess the required 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. Such compilations may be protected by copyright
laws.
No author may copyright facts or ideas. The copyright is limited to those aspects of the work termed
“expression” that display the stamp of the author’s originality.

In the present case, there is no doubt that Feist took from Rural’s white pages a substantial amount of
factual information. To establish copyright infringement, two elements must be proven: (1) ownership of
a valid copyright and (2) copying of the constituent elements of the work that are original. What Rural
did was gather information from its subscribers and listed it alphabetically in its white pages. Rural did
not truly “select” to publish the names and telephone numbers of its subscribers, it was required to do
so by law as part of its monopoly franchise. There is nothing remotely creative about it.

Because Rural’s white pages lack the requisite of originality, Feist’s use of the listings cannot constitute
infringement. Copyright rewards originality, not effort.

20. Tele-Direct (Publications) Inc. (appellant/plaintiff) v. American Business Information Inc.

(respondent/defendant)

(A-553-96)

Facts:

In the case of Tele-Direct (Publications) Inc. v. American Business Information, Inc., the appellant, Tele-
Direct (Publications) Inc., sought copyright protection for the organization of subscriber information and
additional data collected for Yellow Pages directories, arguing that it displayed sufficient originality and
creativity to warrant copyright protection. The respondent, American Business Information, Inc.,
conceded that Yellow Pages as a whole were protected by copyright but contested the copyright claim
for the compilation of information within them. The Trial Judge ruled that the appellant's arrangement of
data lacked the requisite level of skill, judgment, and labor to qualify for copyright protection. The Court
of Appeal affirmed this decision, emphasizing that while labor alone is not determinative of originality, a
compilation must demonstrate a minimal degree of originality and creativity to be eligible for copyright
protection, which the appellant's compilation did not achieve. Additionally, the Court clarified that the
amendments to the Copyright Act in 1993, implemented to align with NAFTA, did not substantially alter
the state of copyright law regarding compilations of data.

Issue:
whether copyright subsisted in the compilation of information in the "Yellow Pages".

Held:

Court of Appeal upheld the Trial Judge's decision that copyright did not subsist in the compilation of
information within Yellow Pages directories. Despite acknowledging that Yellow Pages, as a whole, were
protected by copyright due to their visual aspects and arrangement, the Court ruled against the
appellant's claim for copyright in the organization of subscriber information and additional data
collection. The Court emphasized that for a compilation to be eligible for copyright protection, it must
display a minimal degree of skill, judgment, and labor, along with originality. The Court found that the
appellant's compilation lacked sufficient originality and creativity, and thus did not meet the threshold
for copyright protection under the Copyright Act. Furthermore, the Court clarified the interpretation of
the Act in light of the 1993 amendments aimed at implementing NAFTA, emphasizing the need for
compilations to embody original expression and intellectual creation, aligning with both Canadian and
American legal standards.

In essence, the Court's decision underscored the importance of originality and creativity in determining
copyright protection for compilations of data. It clarified the interpretation of the Copyright Act in light
of international agreements like NAFTA, emphasizing the need for compilations to meet standards of
intellect and creativity. The ruling highlighted that mere labor alone is not sufficient for copyright
protection, and that a compilation must display a degree of skill, judgment, and labor, alongside
originality, to warrant copyright protection.

21. TELSTRA V. PHONE DIRECTORIES COMPANY

FACTS: Telstra and its wholly owned directories and advertising arm Sensis publish their White Pages and
the Yellow Pages directories (Directories) throughout many regions in each of the States and Territories
of Australia. In the 2006 financial year, the Directories generated more than 80% of Sensis' profits, which
translates into revenue of more than $1 billion for the Yellow Pages and $300 million for the White
Pages. In 2007, Telstra and Sensis (collectively the Applicants) commenced proceedings against a
competitor, Phone Directories Company. They alleged, among other things, that copyright in each of the
Directories had been infringed. The Court hived off the issue of subsistence of copyright in the
Directories to be determined first.

The Applicants adduced a mammoth 91 affidavits from witnesses in support of their claim that copyright
subsisted in the Directories. While the Applicants submitted that they were not required to identify a
particular 'author' in order to prove subsistence, they said that if this was required then these 91
individuals were the authors.
ISSUE: W/N Copyright subsisted in White Pages and Yellow Pages directories as original literary works.

RULING: This case has confirmed the centrality of authorship in determining whether copyright subsists
in a work. Indeed, the Copyright Act 1968 fixes on the author(s). If an author(s) cannot be identified at all
copyright cannot subsist.

The Court held that none of the 91 people identified by the Applicants were the authors of the
Directories. The evidence did not cover all of the Directories (it only related to a sample). Further, many
of the individuals who could be considered as joint authors had a limited role in contributing to the
Directories. When they did contribute then such contributions were dictated by computer systems and
the Rules. Also, many of the workers that were involved with the creation of the Directories were not
Sensis employees but were contractors. The Applicants failed to identify or adduce any evidence for any
of these contractors.

Even if the Applicants could have pointed to 'authors' of the Directories, those people did not exercise
independent intellectual effort as the creation process was heavily automated. Human intervention in
that process was limited and if it occurred it was controlled through the Rules.

Therefore, as the Applicants discovered, it can be very difficult to identify an author in a computer
database. Indeed, it is difficult to imagine who such an author could be. Possibly a claim of authorship
may arise where a person determines how a database will function and be expressed. The intellectual
effort expended in making those determinations might go to the originality of the particular form of
expression of the work and satisfy the requirements under the Act.

22. Roth Greeting Cards v. United Card Co.

Facts: Roth Greeting Cards (Roth) and United Card Company (United), both corporations, are engaged in
the greeting card business. Roth brought this suit against United to recover damages and obtain
injunctive relief for copyright infringement of seven studio greeting cards. Roth Greeting Cards (plaintiff)
sued United Card Company (defendant) for producing seven greeting cards closely resembling Roth’s
copyrighted cards. For example, one Roth card showed a cartoon drawing of a sad boy crying on the
front with the caption, “I miss you already,” and inside read, “and You Haven’t even Left.” United’s card
bore a cartoon drawing of a sad man crying, the identical caption and inside message, with only minor
variations in color and style.

Issue: Whether or not United did in fact copy the Roth cards.

Held: The trial court found Roth’s artwork copyrightable but found that United’s cards were not
infringing even though United had copied the wording of Roth’s cards. The court reasoned that the
wording used common, ordinary English words and phrases already in the public domain before Roth
copyrighted its cards.

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 be
established by proof of access and substantial similarity.

Judgment is therefore reversed and the cause is remanded for further proceedings consistent with this
opinion.

Finding of the lower court that the words on the cards are not the subject of copyright. By strong
implication, it likewise accepts the finding of the trial court that the art work on the cards, although
subject to copyright, was not infringed.

23. Mason v. Montgomery Data, Inc., 967 F.2d 135 (5th Cir. 1992)

Mason v. Montgomery Data, Inc.

967 F.2d 135 (5th Cir. 1992)

Mason did a lot of research on real estate data, and compiled all of the research into a map, which he
sold. Montgomery Data took Mason's map, traced Mason's map and turned it into their own map, which
they sold.

Mason sued Montgomery Data for copyright infringement.

Montgomery Data argued that all of the information contained on the map was publicly available. There
was nothing in the map that was created by Mason, or represented any originality on his part. Therefore
the map was not copyrightable.

The Trial Court ruled in favor for Montgomery Data. Mason appealed.

The Trial Court found that since a map was based on factual data, there was only one possible way to
draw it, so it did not embody the creativity required for a copyright.

The Appellate Court reversed.

The Appellate Court found that maps can be drawn in a variety of ways, and can contain various levels of
data. Therefore they are a creative expression worthy of copyright.

The Court looked to Feist Publications, Inc. v. Rural Telephone Service Co., Inc. (499 U.S. 340 (1991)), and
found that compilations of factual data are copyrightable if the author's selection, coordination, and
arrangement of the information depicted are sufficiently creative to qualify as a creative expression.
TOPIC: SOLE AUTHORSHIP

24. Lindsay v.The Wrecked and Abandoned Vessel R.M.S. Titanic, 52 U.S.P.Q.2d 1609 (S.D.N.Y. 1999)

FACTS

The plaintiff, is an independent documentary film maker engaged in the business of creating, producing,
directing, and filming documentaries. Defendant R.M.S. Titanic, Inc. ("RMST") was awarded exclusive
status as salvor-in-possession of the Titanic wreck site and is therefore authorized to carry on salvage
operations at the vessel's wreck site. In 1994, the plaintiff, under contract with a British television
company, filmed and directed the British documentary film, "Explorers of the Titanic," a chronicle of
RMST's third salvage expedition of the Titanic. The plaintiff conceived a new film project for the Titanic
wreck using high illumination lighting equipment. The new film project entitled, "Titanic: A Memorial
Tribute." The plaintiff now alleges that he was never fully compensated for his services and that, inter
alia, the defendants are now "unlawfully profiting from the exploitation of the" film project at issue. The
defendants first argue that the plaintiff cannot have any protectable right in the illuminated footage
since he did not dive to the ship and thus did not himself actually photograph the wreckage. This
argument, does not hold water.

ISSUE: W/N Lindsay can claim any protectable right in the illuminated footage even if he did not dive in
to the ship and did no himself actually photograph the wreckage.

RULING: Yes. An individual claiming to be an author for copyright purposes must show "the existence of
those facts of originality, of intellectual production, of thought, and conception."Some elements of
originality in a photograph includes "posing the subjects, lighting, angle, selection of film and camera,
evoking the desired expression, and almost any variant involved." Taken as true, the plaintiff's allegations
meet this standard. Lindsay's alleged storyboards and the specific directions he provided to the film crew
regarding the use of the lightowers and the angles from which to shoot the wreck all indicate that the
final footage would indeed be the product of Lindsay's "original intellectual conceptions." All else being
equal, where a plaintiff alleges that he exercised such a high degree of control over a film operation --
including the type and amount of lighting used, the specific camera angles to be employed, and other
detail-intensive artistic elements of a film -- such that the final product duplicates his conceptions and
visions of what the film should look like, the plaintiff may be said to be an "author" within the meaning
of the Copyright Act.
TOPIC: Joint Authorship

25. Childress Vs. Taylor

Facts: In 1985, actress Clarice Taylor approached playwright Alice Childress with the idea of writing a play
about the life of comedienne Moms Mabley. Taylor provided research material and collaborated with
Childress on various aspects of the play, including general scenes and characters. Childress wrote the
play titled "Moms: A Praise Play for a Black Comedienne," which Taylor produced and starred in during
the summer of 1986. Despite Taylor paying Childress $2,500, there was no firm agreement between the
two artists. Draft contracts were exchanged, but no agreement on co-authorship was reached. The
relationship between Childress and Taylor deteriorated, leading Taylor to mount another production of
the play without Childress. She hired Ben Caldwell to write a new play featuring Moms Mabley, providing
him with a copy of Childress's script and advising on changes. Childress sued Taylor for violation of her
rights under the Copyright Act and other statutes.

Issues: 1. Whether Taylor can be considered a joint author of the play, thereby sharing in the rights to
the Childress play.

2. Whether the parties intended to combine their works into a "unitary whole."

3. Whether Taylor's contributions to the play went beyond the level of helpful advice and suggestions.

Ruling: The Second Circuit Court of Appeals found that Clarice Taylor could not be considered a joint
author of the play. The court considered the level of intent to create a "unitary whole" insufficient by
itself. It emphasized that the mere provision of useful revisions or assistance does not grant co-author
status. The court looked at whether the parties intended to be joint authors and cautioned against
denying sole authorship status to the primary creator due to the assistance provided by another person.

In this case, the court concluded that Taylor's contributions were largely in the form of research and
suggestions about the presentation of the play's subject. While she may have made some minor
contributions, these did not evolve into more than the helpful advice one might expect from cast,
directors, or producers of any play. The court held that Childress, as the playwright, did not easily acquire
a co-author, and Taylor failed to demonstrate joint authorship.

Conclusion:

The court ruled in favor of Alice Childress, affirming her exclusive authorship status and dismissing
Clarice Taylor's claim of being a joint author. The case serves as a cautionary tale for playwrights,
highlighting the importance of clear agreements before collaboration and emphasizing that not all
contributors to a creative work become co-authors with equal rights. The legacy of this case is seen in its
citation by other courts, contributing to legal precedents in similar disputes over authorship rights.

26. ERICKSON v. TRINITY THEATRE, INC., 13 F.3d 1061 (7th Cir. 1994)

FACTS: The case involves a dispute over whether the works in question were created collaboratively,
leading to joint authorship status. Trinity claimed that several of its members were joint authors of the
plays in question, asserting that these members contributed significantly to the creative process. Trinity
challenged the authorship of the plays, arguing that its members, in collaboration with Ms. Erickson,
were joint authors, granting Trinity the right to produce the plays. The parties presented different tests
for determining joint authorship. Trinity argued for a "collaboration alone" standard, while Ms. Erickson
contended for the "copyrightable subject matter" test. The magistrate judge applied the "copyrightable
subject matter" test, emphasizing the need for each joint author's contribution to be independently
copyrightable and the parties' intent to be joint authors. The magistrate judge considered evidence
regarding the intent of the parties and the nature of their contributions to determine joint authorship.
Specific plays, such as "Much Ado" and "Prairie Voices," were analyzed to assess whether Trinity's
contributions met the requirements for joint authorship.

ISSUE: Whether the works in question qualify as joint works under the Copyright Act of 1976

RULING: No. Trinity cannot establish joint authorship to the plays at issue. The court applied the
copyrightability test, which requires both the intent to be joint authors and independently copyrightable
contributions. The court found that Trinity failed to clear the first hurdle, as it could not establish the
requisite intent for joint authorship in some of the works. Specifically, for the plays "Much Ado" and
"Prairie Voices," Trinity could not demonstrate the necessary intent, as Ms. Erickson had largely
completed these works before Trinity actors provided improvised contributions. For "Time Machine,"
while Trinity produced some evidence of the requisite intent, it failed to show that the actors'
contributions could have been independently copyrighted. The court concluded that Trinity's claims of
joint authorship could not overcome the presumption in favor of the validity of Ms. Erickson's copyrights.
Therefore, Ms. Erickson was deemed very likely to succeed on the merits of her claims for copyright
infringement. As a result, the judgment of the district court was affirmed.

27. Aalmuhammed v. Lee

TOPIC: WORKS MADE FOR HIRE

28. Community for Creative Non-Violence v. Reid

490 U.S. 730 (1989)

FACTS: The Community for Creative Non-Violence (CCNV) (Plaintiff) was a nonprofit organization
dedicated to advocacy for the cause of the homeless in the United States. It negotiated with Reid
(Defendant), a sculptor, to create a variation on the classic nativity scene, depicting homeless persons.
Agreement was finally reached and Defendant made the sculpture out of a bronze-like material.
Defendant worked in his studio with little direction from CCNV (Plaintiff). Following the unveiling,
Defendant registered a copyright on the work. Subsequent to this, a disagreement arose between
Plaintiff and Defendant who had taken custody of the sculpture, over future exhibition thereof. Plaintiff
filed an action seeking to obtain possession of the work. The District Court held that CCNV had the
copyright, as it was a ‘work made for hire’ under the Copyright Act of 1976, owned exclusively by CCNV.
This vests copyright ownership of works for hire in the employer or other person for whom the work is
prepared, unless there is a written agreement to the contrary.

ISSUE: Whether or not one who creates an artwork at the directive of another retains copyright upon it
unless that other had employed the artist?

RULING: The Supreme Court held Reid was an independent contractor, not an employee, so the work
was not "made for hire", and the copyright belonged to Reid, at least in part. The Court determined that
Reid's commission was not "specially ordered or commissioned" under paragraph 2 of 17 USC 101's
"work made for hire" definition. It then considered whether Reid was an "employee" preparing the
sculpture "within the scope of his employment", whose work fell within "work made for hire", or an
independent contract whose work did not fall within "work made for hire". In determining whether a
hired party is an employee under the general common law of agency, the court consider the hiring
party's right to control the manner and means by which the product is accomplished. Based on these
factors, the Court held Reid was an independent contractor. Reid supplied his own tools, was without
any extensive supervision and was free in the way he met his deadlines. CCNV could not assign more
projects to Reid, and paid him in the normal manner independent contractors are done.

29. AYMES V. BONELLI (1992) ; Clifford Scott Aymes vs Jonathan Bonelli

United States Court of Appeals for the Second Circuit

980 F.rd 857

FACTS: Aymes was hired to work as a computer programmer for Island which operates a chain of retail
stores selling swimming pools and related supplies, wherein Bonelli is the President and Chief Executive.
During his time in the company, Aymes created series of programs called “CSALIB” under the general
direction of Bonelli, a system used by Island to maintain records of cash receipts, physical inventory, sales
figures, purchase orders, merchandise transfers, and price changes. There was no written agreement
between Aymes and Bonelli as to the ownership or copyright of CSALIB. Aymes worked alone with no
assistants or co-workers, which he did most of his programming at the Island Office. He is not paid
regularly by the hour, where at times he is paid for the project and given bonuses for finishing the
project on time.

In 1982, Aymes left when Bonelli unilaterally decided to cut his hours. He then registered CASLIB in his
own name with the US Copyright Office. He filed a complaint against Bonelli and Island alleging
Copyright Infringement. The District Court held that Aymes had no copyright over CSALIB because the
program was a “work made for hire” which meant that ownership belonged to the Island. Aymes filed
for a Motion for Reconsideration but the court concluded that he was an employee. Hence, this petition.

ISSUE: Whether or not Aymes owns the copyright of CASLIB.

RULING: Yes. Application of the Reid Test requires that the Court find Aymes to be an independent
contractor when he was creating CSALIB for Island. Consequently, the Court held that CSALIB is not a
work for hire. Aymes therefore owns the copyright as author of the program.

30. Roeslin vs. District of Columbia

TOPIC: KITSCH or PROGRESS

31.MAZER VS. STEIN 347 U.S. 201 (1954)

FACTS: This case involves the validity of copyrights obtained by the respondents, Stein, et al. They are
engaged in the manufacture and sale of electric lamps. One of the respondents created statuettes of
male and female dancing figures made of semi vitreous China. The statuettes were used as bases for
fully equipped electric lamps, which respondents sold. Respondents submitted the statuettes, without
lamp components added, for registration under the copyright law as “work of art” or reproduction
thereof. Certificates were issued. Thereafter, the statuettes were sold in quantity, both as lamp bases and
as statuettes. Petitioners, like the respondents, make and sell lamps and sell them. Without
authorization, they copied the statuettes, embodied them in lamps, and sold them. Thus, respondents
sued the petitioners for copyright infringement. The court dismissed the complaint. The Court of Appeals
reversed the complaint and granted Certiorari.

ISSUE: Whether or not the lamp statuettes can be copyrighted even if they are intended to be lamp
bases.
HELD: Yes. Lamp statuettes can be copyrighted. The case requires an answer not as to a manufacturer’s
right to register a lamp base, but as to an artist’s right to copyright a work of art intended to be
reproduced for lamp bases. Petitioners question the validity of a copyright of a work of art for "mass
production”. "Reproduction of a work of art " does not mean to them unlimited reproduction. Their
position is that a copyright does not cover industrial reproduction of the protected article. Petitioner
urges that overlapping of patent and copyright legislation to give an author or inventor a choice between
patents and copyrights should not be permitted. We do hold that the patentability of the statuettes,
fitted as lamps or unfitted, does not bar copyright as work of art. Neither the Copyright Statute nor any
other says that because a thing is patentable, it may not be copyrighted. We should not hold. Unlike a
patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression
of the idea -- not the idea itself. The copyright protects originality,

rather than novelty or invention -- conferring only "the sole right of multiplying copies." Absent copying,
there can be no infringement of copyright. Thus, respondents may not exclude others from using
statuettes of human figures in table lamps; they may only prevent use of copies of their statuettes as
such or as incorporated in some other article.

The dichotomy of protection for the aesthetic is not beauty and utility, but art for the copyright and the
invention of original and ornamental design for design patents. We find nothing in the copyright statute
to support the argument that the intended use or use in industry of an article eligible for copyright bars
or invalidates its registration. We do not read such a limitation into the copyright law. Nor do we think
the subsequent registration of a work of art published as an element in a manufactured article, is a
misuse of the copyright. This is not different from the registration of a statuette and its later
embodiment in an industrial article.

TOPIC: USEFUL ARTICLES (WORKS OF APPLIED ART) AND DOCTRINE OF SEPARABILITY

32. Kielsestein-Cord v. Accessories by Pearl, Inc. (Doctrine of Separability)

Facts: Plaintiff Barry Kieselstein-Cord is the designer of two belt buckles called the Winchester Buckle
and the Vaquero Buckle, copies of which he alleges defendant Accessories By Pearl, Inc. has made, sold,
distributed, and/or advertised. Plaintiff's buckles are both made of silver, or other precious metal. The
Vaquero Buckle is roughly rectangular, with rounded corners, a sculpted surface, and a rectangular cut-
out at one end for the belt attachment. It has several surface levels, giving the appearance of two
grooves cut across one corner and another at the diagonally opposite corner. The Winchester Buckle is
somewhat more irregularly shaped, also with a rectangular cut-out for the belt attachment. There is a
tapered, wavy groove cut where the tongue of the buckle would fit and a smaller (almost imperceptible)
separate level at a corner near the belt. Defendant's buckles appear to be line-for-line copies, but are
made of common metal rather than silver. Plaintiff has registered a claim to copyright for each buckle:
for the Winchester, Registration No. GP-119073, effective August 22, 1977; for the Vaquero, Registration
No. VA-43-985, effective March 3, 1980 (after the commencement of this action). Defendant admits to
copying and selling its copies of the Vaquero and to selling copies of the Winchester.

Issue: Whether the belt buckles are copyrightable.

Ruling: NO.

Although plaintiff asserts that the buckles are jewelry or sculpture, they appear to be primarily
belt buckles. Belt buckles are utilitarian objects designed to fasten belts and thus hold up or hold in a
dress, skirt, or pants. Like most utilitarian objects, particularly those worn or carried on the person or
used in the home, belt buckles may also be decorative. The regulations adopted by the Copyright Office
in the mid-1950's and modified in 1959 were an attempt to retain and refine the Mazer distinction
between the work of art and its incorporation in a useful object such as a lamp. H.R.Rep. No. 1476, 94th
Cong., 2d Sess. 54-55 (1976), reprinted in [1976] U.S.Code Cong. & Admin.News, pp. *735 5659, 5668.
The regulations on works of art[2] permitted the copyrighting of "works of artistic craftsmanship"
regardless of the "intention of the author as to the use of the work." 37 C.F.R. § 202.10(a), (b). The
regulations required, however, that the artistic features incorporated in the utilitarian object be
separately identifiable and "capable of existing independently as a work of art." Id. § 202.10(c).

Both buckles are uncopyrightable subject matter under either statute because they fail to
satisfy the test of separability and independent existence of the artistic features, which is required
under both statutes. The Court does not see in these buckles "pictorial, graphic, or sculptural features
that can be identified separately from, and are capable of existing independently of, the utilitarian
aspects of" the buckles. 17 U.S.C. § 101 (Supp. I 1977); see 37 C.F.R. § 202.10(c) (1977). Nor does plaintiff
identify such features. Instead, the simple, sculptural form of the buckles seems to be very similar to the
"overall design or configuration of a utilitarian object" that the Esquire court found uncopyrightable. 591
F.2d at 804Here, each of the buckles is all one form, which, although pleasing, serves a utilitarian
purpose. One cannot imagine the buckles or any part of them existing independently as sculpture.

33. Carol Barnhart Inc. v. Economy Cover Corp.

773 F.2d 411 (2d Cir. 1985)

FACTS:Carol Barnhart Inc. filed a lawsuit against Economy Cover Corp, alleging copyright infringement.
Barnhart claimed that Economy had copied and sold display forms that were similar to those designed
and manufactured by Barnhart, thereby infringing on their copyrights. Economy moved for summary
judgment on the issue of whether the forms where copyrightable works. The district court granted the
motion, finding the forms to be utilitarian articles incapable of copyright protection. However, Barnhart
appealed and argued that the design elements of their display forms were eligible for copyright
protection as they were separate artistic works, independent of the functional aspects of the forms.

ISSUE: Whether or not the design elements of the display forms were eligible for copyright protection.
RULING: No. The Court applied the principle of separability in copyright law, which states that if the
design elements of a useful article are not separable from its utilitarian function they are not eligible
for copyright protection. In this case, the Court found that the design elements of the display forms
were not objectively separable which were necessary for their utilitarian function and were not capable
of existing independently as standalone works of art.

However, it’s important to note that copyright law can be complex and specific to each case. The
determination of whether an object is eligible for copyright protection depends on various factors,
including the level of creativity and originality in the design, and the functionality of the object. In this
particular case, the court concluded that the design elements of the display forms were not eligible for
copyright protection because they were deemed inseparable from their utilitarian function.

34. BRANDIR INTERNATIONAL vs. CASCADE PACIFIC LUMBER Co.

FACTS: A wire sculpture was created by the owner Lavine, Brandir International, Inc. Brandir created the
Ribbon Rack, a bike rack consisting of looped, bent tubing. Brandir made minor adjustments to the
original sculpture for functional purposes, such as widening the upper loops so that bikes could park
below as well as above the loops. The US Copyright Office denied Brandir a copyright for the ribbon
Rack. Cascade Pacific sold similar bike racks. Brandir brought suit for copyright infringement. Court
granted Cascade Pacific summary judgment.

ISSUE: Whether Ribbon Rack is copyrightable.

RULING: NEGATIVE.

Not copyrightable precisely because the form of the rack is influenced in significant measure by
utilitarian concerns and thus any aesthetic elements cannot be said to be conceptually separable from
the utilitarian element.
The original wire sculpture may be considered as a piece of work, however, the manufacturer also made
a substantial amount of modifications and adjustments to make the “sculpture” more useful and suitable
for securing bikes. Due to all modifications, the artistic elements were totally stripped out of the work,
and the Ribbon Rack becomes so simple that it no longer contains any elements that was capable of
independent existence as a copyrightable work.

Topic: COMPUTER SOFTWARE

TEXT OR MACHINE?

35. Apple vs Franklin Computers 714 F.2d 1240

FACTS: Franklin copied 14 of Apple’s operating programs on ROM and on floppy disks and had used the
programs in its ACE 100 microcomputers. This allowed Franklin to manufacture and sell its ACE 100 with
the capabilities of running Apple’s application software.

ISSUE: whether or not the programs in ROM are copyrightable?

RULING: Yes, A Computer Program expressed in Object Code is Copyrightable. The 3rd circuit stated: A
program expressed inn object code was viewed as copyrightable for it was considered to meet section
102’s requirement that a copyrightable work be an “original work of authorship” and “fixed in (a)
tangible medium of expression.”

A program in object code is a work of authorship because in passing the 1976 act the legislature
considered it within the category of “literary works”. A literary work was defined in sec 101 as a work
than can be expressed not only in words, but in “numbers or other… numerical symbols or indica.”