Random Copyright Digests

Copyright and Related Rights Atty.
Ferdinand Negre
I. INTRODUCTION
COPYRIGHT vis-a-vis OTHER INTELLECTUAL PROPERTY
1. Kho v. CA (2002)
Facts: Elidad Kho was engaged in the business of selling cosmetics under the name KEC
Cosmetics. Kho filed an action for injunction with damages against Summervile General
Merchandising for advertising and selling Kho’s alleged cream products under the CHIN CHUN
SU brand as well as using the same containers thereby misleading the public and resulted in
the decline of her business’ sales and income.
Kho showed that she is the registered owner of the copyrights CHIN CHUN SU and Oval
Facial Cream Container/Case by presenting Certificates of Copyright Registration. She also
has patent rights on CHIN CHUN SU & DEVICE after purchasing it from the registered owner
thereof in the Supplemental Register of the Phil. Pat. Off.
Summerville, on the other hand, claimed to be the exclusive and authorized importer, repacker,
and distributor of said products which were manufactured by a Taiwanese company who
allowed Summerville to register its trade name Chin Chun Su Medicated Cream with the Phil.
Patent Office & other agencies
Issue: Is Kho entitled to the use of the trademark on Chin Chun Su and its container based on
her copyright and patent over the same.
Held: NO. Kho has no right to support her claim for the exclusive use of the subject trade name
and its container. In order to be entitled to exclusively use the same in the sale of the beauty
cream product, the user must sufficiently prove that she registered or used it before anybody
else did. The petitioner’s copyright and patent registration of the name and container would not
guarantee her the right to the exclusive use of the same for the reason that they are not
appropriate subjects of the said intellectual rights.
The name and container of a beauty cream product are proper subjects of a trademark
inasmuch as the same falls squarely within its definition.
Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall include a stamped or
marked container of goods. In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual creations in the literary and artistic
domain protected from the moment of their creation. Patentable inventions, on the other hand,
refer to any technical solution of a problem in any field of human activity which is new, involves
an inventive step, and is industrially applicable.
PROTECTION of INTELLECTUAL PROPERTY and the CONSTITUTION

2. ABS-CBN v. PMSI (2009)
Facts: ABS-CBN is engaged in television and radio broadcasting through wireless and satellite
means while Philippine Multi-Media Systems Inc. (PMSI), the operator of Dream Broadcasting
System provides direct-to-home (DTH) television via satellite to its subscribers all over the
Philippines.
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Copyright and Related Rights Atty. Ferdinand Negre
PMSI was granted legislative franchise under RA 8630 to install, operate and maintain a
nationwide DTH satellite service and is obligated under by NTC Memo Circ., Section 6.2 of
which requires all cable television system operators operating within a certain community to
carry the television signals of the authorized television broadcast stations (MUST CARRY
RULE).
ABS-CBN filed a complaint with IPO for violation of laws involving property rights. It alleged
that PMSI’s unauthorized rebroadcasting of Channels 2 and 23 infringed on its broadcasting
rights and copyright and that the NTC circular only covers cable television system
operators and not DTH satellite television operators. Moreover, NTC Circular 4-08-88
violates Sec. 9 of Art. III of the Constitution because it allows the taking of property for public
use without payment of just compensation.
PMSI argued that its rebroadcasting of Channels 2 and 23 is sanctioned by the said NTC
Memo Circ.; that the must-carry rule under the Memorandum Circular is a valid exercise of
police power. IPO and Court of Appeals ruled in favor of PMSI.
Issue: (1) Whether PMSI infringed on ABS CBN’s broadcasting rights and copyright
(2) Whether PMSI is covered by the must carry rule
Held: (1) NO. PMSI does not infringe on ABS-CBN’s broadcasting rights under the IP Code as
PMSI is not engaged in rebroadcasting of Channels 2 and 23. Broadcasting is defined as
the transmission by wireless means for the public reception of sounds or of images or of
representations thereof; such transmission by satellite is also broadcasting where the means
for decrypting are provided to the public by the broadcasting organization or with its consent.
Rebroadcasting, which is prohibited by the IP Code, is “the simultaneous broadcasting by one
broadcasting organization of the broadcast of another broadcasting organization.”
Also, broadcasting organizations are defined as “entities that take the financial and editorial
responsibility for the selection and arrangement of, and investment in, the transmitted
content.” Evidently, PMSI would not qualify as a broadcasting organization because it does not
have the above responsibilities imposed upon broadcasting organizations, such as ABS-CBN.
Sec 202.7 of the IP Code provides 2 instances wherein there is broadcasting:

1. The transmission by wireless means for the public reception of sounds or of images or
of representations thereof.
2. The transmission by satellite for the public reception of sounds or of images or of
representations thereof where the means for decrypting are provided to the public by
the broadcasting organization or with its consent.
ABS-CBN creates and transmits its own signals; PMSI merely carries such signals which
the viewers receive in its unaltered form. PMSI does not produce, select, or determine
the programs to be shown in Channels 2 and 23. Likewise, it does not pass itself off as the
origin or author of such programs. Insofar as Channels 2 and 23 are concerned, PMSI
merely retransmits the same in accordance with NTC Memo Circ.
The retransmission of ABS-CBN’s signals by PMSI — which functions essentially as a cable

television — does not constitute rebroadcasting in violation of the former’s intellectual property
rights under the IP Code. It must be noted that the law on copyright is not absolute. Under
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Sec 184, the use made of a work by or under the direction or control of the Gov’t, by the
National Library, or by educational, scientific, or professional institutions where such use
is in the public interest and is compatible with fair use shall not constitute copyright
infringement.
PMSI was granted a legislative franchise under Republic Act No. 8630, Section 4 of which
similarly states that it “shall provide adequate public service to enable the government, through
the said broadcasting stations, to reach the population on important public issues; provide at
all times sound and balanced programming; promote public participation such as in
community programming; assist in the functions of public information and education.
The “Must-Carry Rule” favors both broadcasting organizations and the public. It prevents cable
television companies from excluding broadcasting organization especially in those places not
reached by signal. Also, the rule prevents cable television companies from depriving viewers in
far-flung areas the enjoyment of programs available to city viewers.
The carriage of ABS-CBN’s signals by virtue of the must-carry rule is under the direction and
control of the government though the NTC which is vested with exclusive jurisdiction to
supervise, regulate and control telecommunications and broadcast services/facilities in the
Philippines. The imposition of the must-carry rule is within the NTC’s power to promulgate
rules and regulations, as public safety and interest may require, to encourage a larger and
more effective use of communications, radio and television broadcasting facilities, and to
maintain effective competition among private entities.
(2) YES. “DTH satellite tv operators” is covered under the NTC Circular which “requires all
cable television system operators to carry the television signals of the authorized television
broadcast stations.” The Director-General of the IPO and the CA correctly found that PMSI’s
services are similar to a cable television system because the services it renders fall under
cable “retransmission.” Thus, PMSI, being a DTH Satellite TV operator is covered by the NTC
Circular.
II. SUBJECT MATTER of COPYRIGHT LAW

A. Prerequisites for & Elements of Copyrightable Subject Matter
ORIGINALITY
3. Burrow-Giles Lithographic Co. v. Sarony (1884)
Facts: Sarony, a photographer, sued Burrow-Giles Lithographic Co. for allegedly violating his
copyright in regard to a photograph, the title of which is Oscar Wilde, No. 18. Sarony had taken
all the steps required by the act of congress to obtain copyright of this photograph. However,
the lithographic company insists that a photograph, being a reproduction on paper of the exact
features of some natural object or of some person, is not a writing of which the producer is the
author; hence, not protected by copyright.
Issues: (1) Whether or not there exists a constitutional right to protect photographs and
negatives thereof by copyright.
(2) W/N the words ‘Copyright, 1882, by N. Sarony’ in the photographs, as a notice of
the copyright of Napoleon Sarony are sufficient.
Held: (1) Photographs are protected by copyright statutes. The Court held that Section 4952 of
the Revised Statutes places photographs in the same class as things which may be
copyrighted with ‘books, maps, charts, dramatic or musical compositions, engravings, cuts,
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prints, paintings, drawings, statues, statuary, and models or designs intended to be perfected
as works of the fine arts.’ Moreover, in an amending law, it states that he who shall invent
and design, engrave, etch, or work, or from his own works shall cause to be designed
and engraved, etched, or worked, any historical or other print or prints, shall have the
same exclusive right for the term of 14 years from recording the title thereof as prescribed by
law.
Where a photographer so contrives the pose, costume, and expression of his subject as to
produce an original and graceful effect, the picture is entitled to the benefit of the act providing
for copyright of photographs.
The only reason why photographs were not included in the extended list in the statute is,
probably “because they did not exist, as photography, as an art, was then unknown, and the
scientific principle on which it rests, and the chemicals and machinery by which it is operated,
have all been discovered long since that statute was enacted.”
Some argue that an engraving, a painting, a print embodies the intellectual conception of its
author, in which there is novelty, invention, originality, and therefore comes within the
protection of the law, while on the other hand, a photograph is the mere mechanical
reproduction of the physical features or outlines of some object and involves no originality of
thought or any novelty in the intellectual operation connected with its visible reproduction in
shape of a picture. It is argued that the remainder of the process is merely mechanical, with no
place for novelty, invention, or originality. It is simply the manual operation, by the use of these
instruments and preparations, of transferring to the plate the visible representation of some
existing object, the accuracy of this representation being its highest merit. The Court ruled that
this may be true in regard to the ordinary production of a photograph, and that in such case a
copyright is no protection.
It should be noted that patents cannot, by law, be issued to the inventor until the novelty, the
utility, and the actual discovery or invention by the claimant have been established by proof
before the commissioner of patents; and when he has secured such a patent, and undertakes
to obtain redress for a violation of his right in a court of law, the question of invention, of
novelty, of originality is always open to examination.
On the contrary, the copyright system has no such provision for previous examination by a
proper tribunal as to the originality of the book, map, or other matter offered for copyright. A
deposit of two copies of the article or work with the librarian of congress, with the name of the
author and its title page, is all that is necessary to secure a copyright. It is therefore much
more important that when the supposed author sues for a violation of his copyright, the
existence of those facts of originality, of intellectual production, of thought, and
conception on the part of the author should be proved than in the case of a patent right. We
think this has been done by Sarony.
The finding of facts stated, in regard to the photograph in question “that it is a ‘useful, new,
harmonious, characteristic, and graceful picture, and that plaintiff made the same entirely
from his own original mental conception, to which he gave visible form by posing the said
Oscar Wilde in front of the camera, selecting and arranging the costume, draperies, and
other various accessories in said photograph, arranging the subject so as to present
graceful outlines, arranging and disposing the light and shade, suggesting and evoking the
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desired expression, and from such disposition, arrangement, or representation, made entirely
by plaintiff, he produced the picture in suit.”
These findings show that the photograph was original work of art, the product of Sarony’s
intellectual invention, of which he is the author and for which he is secured the exclusive right
to use, publish, and sell, as mandated by section 4952 of the Revised Statutes. Ultimately, the
court held that the constitution is broad enough to cover an act authorizing copyright of
photographs, so far as they are representatives of original intellectual conceptions of the
author.
(2) YES. The object of the statute/law is to give notice of the copyright to the public by placing
upon each copy, in some visible shape, the name of the author, the existence of the claim of
exclusive right, and the date at which this right was obtained. Notice is sufficiently given by the
words ‘Copyright, 1882, by N. Sarony’ found on each copy of the photograph.
SOME NOTES: The Court clarified the proper definition of “author” to be he to whom anything
owes its orign; originator; maker; one who completes a work of science or literature and
“writing” is defined as the literary productions of those authors, and congress very properly has
declared these to include all forms of writing, printing, engravings, etchings, etc., by which the
ideas in the mind of the author are given visible expression.
Furthermore, to support it’s decision, the court gave other definitions of the word “Author”:
BRETT, M. R., said: “An author is the person who effectively is as near as he can be the cause
of the picture which is produced; that is, the person who has superintended the arrangement,
who has actually formed the picture by putting the persons in position, and arranging the place
where the people are to be---the man who is the effective cause of that.”
Lord Justice COTTON said: ‘In my opinion, ‘author’ involves originating, making, producing, as
the inventive or master mind, the thing which is to be protected, whether it be a drawing, or a
painting, or a photograph;'
Lord Justice BOWEN said that: “Photography is to be treated for the purposes of the act as an
art, and the author is the man who really represents, creates, or gives effect to the idea, fancy,
or imagination.”
4. Bleistein v. Donaldson Lithographing Co. (DLC) (1903)

Facts: Bleistein is an employee of Courier Lithographing Co. (CLC). CLC was hired by a certain
Wallace to create chromolithographs to advertise his circus. When Wallace ran out, he asked
DLC to copy in its reduced form 3 chromolithographs made by CLC. Before DLC published
said copies, CLC copyrighted its creations. As a result, CLC, through Bleistein, sued DLC for
copyright infringement.
In its defense, DLC contended that the advertisements do not fall under copyright laws
according it protection. Particularly, it does not fall under the clause of the US Constitution
giving Congress power to promote the progress of science and useful arts, by securing for
limited terms to authors and inventors the exclusive right to their respective works and
discoveries for the reason that it is not considered as a “USEFUL ART.” Also, it does not fall
under the provision of the Copyright Act which states that “in the construction of this act, the
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words ‘engraving,’ ‘cut,’ and ‘print’ shall be applied only to pictorial illustrations or works
connected with the fine arts.”
Issue: Whether or not chromolithographs used for advertisements are protected by the
copyright laws?
Held: YES. The Constitution does not limit the USEFUL to that which satisfies immediate bodily
needs.
Regarding the provision in the Copyright Act, the Court held that these chromolithographs are
“pictorial illustrations.” The word ‘illustrations' does not mean that they must illustrate the text
of a book, and that the etchings of Rembrandt or Müller's engraving of the Madonna di San
Sisto could not be protected today if any man were able to produce them. Again, the act,
however construed, does not mean that ordinary posters are not good enough to be
considered within its scope.
Certainly works are not the less connected with the fine arts because their pictorial quality
attracts the crowd, and therefore gives them a real use — if use means to increase trade and
to help to make money. A picture is nonetheless a picture, and none the less a subject of
copyright, that it is used for an advertisement. And if pictures may be used to advertise soap,
or the theatre, or monthly magazines, as they are, they may be used to advertise a circus.
Printing and engraving, though not for a mechanical end, are not excluded from the useful arts,
which congress is empowered by the constitution to promote by copyright laws.
Justice Harlan, dissent: If a mere label simply designating or describing an article to which it
is attached, and which has no value separated from the article, does not come within the
constitutional clause upon the subject of copyright, it must follow that a pictorial illustration
designed and useful only as an advertisement, and having no intrinsic value other than its
function as an advertisement, must be equally without the obvious meaning of the Constitution.
It must have some connection with the fine arts to give it intrinsic value.
5. Alfred Bell & Co. v. Catalda Fine Arts, Inc. (1951)

Facts: Alfred sued Catalda for 8 separate copyright infringements for reproducing their
mezzotint engravings of paintings of old masters which Alfred made and copyrighted. It was
alleged that Catalda produced photo-lithographs of the mezzotint engravings made by Alfred.
Alfred had exclusive licensing agreements with various museums for famous artworks from the
18th and 19th century. Having sole access to the said artworks, Alfred created mezzotint
reproductions of the said paintings, one of which was Thomas Gainsborough’s Blue Boy which
became the subject of this case, for sale. Catalda on the other hand wanted to reproduce the
said artworks in their Fine Arts catalogue but having no access to the same, just opted to copy
Alfred’s copies thinking that since the originals were considered public domain artwork
there would be no harm in copying a copy of it.
In court, Catalda initially claimed that there was no copyright infringement since Alfred also
copied the same from old paintings and there is no distinct difference from the originals with
the mezzotint version that would warrant copyright protection. Then, when it was proven that
Alfred’s copyright was valid and thus there was indeed infringement on the part of Catalda,
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they put up the defense that Alfred was violating the anti-trust law since they were charging too
much for its reproduction. So the court weighed the enforcement of the anti-trust law against
prevention of infringement of copyright laws.
In the case, defendants Catalda also asserts the requirement for patents, which is very strict,
constitutionally governs copyright and they attack the constitutionality of the said sections of
the Copyright Act as setting the standards too low for something to be copyrighted. One of
their main contentions was on the use of the word “original” in granting copyright.
Issue: (1) Whether the mezzotint of Alfred is copyrightable

(2) Whether or not the low standard of procedure for copyrighting is constitutional
Held: (1) YES. The fact that mezzotints were sufficiently distinguishable from said paintings
warrant the granting of copyright protection. The mezzotint version had a richer color making it
distinct from the original though everything else remained the same. Copyrights of the said
mezzotints were valid and were infringed by Catalda’s photo-lithograph reproduction.
Despite statutory provisions declaring that no copyright shall exist in works in public domain, a
The Constitutional and statutory provisions relating to copyrights are satisfied if author
contributes something more than mere trivial variation in previous works and work may be
copyrighted if there is something recognizably the author’s own and not mere copying of
another. The Constitutional and statutory provisions relating to copyrights are satisfied if the
author contributes something more than mere trivial variation in previous works and the
work may be copyrighted if there is something recognizable in the author’s own and not
mere copying of another
(2) CONSTITUTIONAL. The imposition of far more exacting standards from inventors
registering patents than in copyrights are valid mainly due to the fact that patents and
copyrights are entirely distinct from each other.
For patent, original refers to startling, novel, or unusual. Whereas, for copyright, it simply
requires that the particular work owes its origin to the author. No large measure of novelty is
necessary.
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 described has nothing
to do with the validity of the copyright. A copyright of a book merely secures to author
exclusive right of printing and publishing book and does not give the author exclusive
property of art described therein, but if he desires to acquire exclusive right to art
recited, must attain patent therefore.
Copyright is only a negative right to prevent the appropriation of the labors of an author by
another. It could be shown that 2 similar works were in fact produced wholly independent of
one another, one published it first would have no right to restrain the publication of the other’s
independent and original work. A patentee has the right to prevent another from using his
invention if it in fact infringes the former’s patent, notwithstanding that the latter’s invention
was the subject of independent investigation.
6. Muller & Co. v. New York Arrows Soccer Team Inc. (1986)
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Facts: John Muller & Company, Inc. (Muller) entered into a contract with Dr. David
Schoenstadt, the owner of the New York Arrows Soccer Team, to create a logo to represent
the team. A dispute over the fee for the service arose, and as a consequence, Muller sought to
copyright the logo of the team.
The Register of Copyrights refused to register the logo, not once, but twice, citing a lack of
creativity. The logo consists of 4 angled lines which form an arrow and the word "Arrows" in
cursive script below the arrow. The parties agreed that the copyrightability of the logo may be
decided as a matter of law.
Issue: Whether or not the logo created by Muller for the New York Arrows may be considered
copyrightable.
Held: NO. The US Courts ruled that there are two elements to be considered in determining
whether a work is copyrightable, namely originality and minimal levels of creativity. In this
case, the Court declared that the issue revolved around creativity, and not originality. It should
be noted that Muller’s position on the matter had a tendency to confuse the two with one
another.
If, as here, the creator seeks to register the item 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.
7. Meshwerks Inc v. Toyota Motor Sales USA (2008)

Facts: For its advertising campaign, Toyota and its advertising agency Saatchi needed digital
3D models of its line of cars to appear in various media such as TVCs and websites.
Meshwerks was hired to digitize the cars by mapping data points in a computerized grid to
create a manipulatable “wire frame” of the car. Then, it fine-tuned the lines to make the digital
models closely resemble the cars. Upon completion, Meshwerks registered said work to be
copyrighted. After these models were made, Grace & Wild, Inc was hired to add necessary
details in the models (color, texture, lighting, animation). These were then sent to Toyota to be
used as advertisements.
Toyota then used these designs in various ads across various media. According to Meshwerks,
it should have only been for a single-use of its models as part of one Toyota TV commercial.
Thereafter, Mershwerks sued Toyota , Saatchi & GW.
Issue: Whether or not Toyota et al violated Meshwerk’s copyright over its 3D models.
Held: NO. To make a case for copyright infringement, plaintiff must show: (1) it owns a valid
copyright; and (2) defendants copied constituent elements of the work copyrighted by plaintiff.
While Meshwerks’ copyright registration creates a presumption of a valid copyright, this may
be overcome by presenting evidence and legal arguments to establish that the works were not
entitled to copyright protection. For a work to be copyrightable, it must contain a degree of
originality since a copyright protection only extends to original works of authorship.
Original works are (1) those independently created by the author; (2) not copied from other
works; and (3) the work must possess some minimal degree of creativity.
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In this case, Meshwerks’ models are not so much independent creations as very good copies
of Toyota’s vehicles, as seen both in an objective assessment of the models as well as
Meshwerks’ purpose and intent. Said models depict nothing more than UNADORNED Toyota
vehicles. Meshwerks did not make any decisions regarding the lighting, shading, background,
angle, etc. which would make depictions of things or facts in the world as a completely new
expression subject to copyright protection. As such, having been stripped of any ingredient
associated with an original expression, they have no copyrightable matter.
One possesses no copyright interest in 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.
8. Mannion v. Coors Brewing Company (2006)

Facts: Basketball magazine, SLAM, hired Mannion to photograph Kevin Garnett in relation to
an article that the magazine intends to publish. Said article (“Above the Clouds”) appeared in
its December 1999 issue and featured Mannion’s photo printed on 2-page spread. The Garnett
Photo is a ¾ length portrait of Garnett against a backdrop of clouds with some blue sky shining
through. The view is up and across the right side of Garnett's torso, so that he appears to be
towering above earth. He wears avwhite T-shirt, white athletic pants, a black closefitting cap,
and a large amount of “bling bling”, including several necklaces, a Rolex watch and bracelet on
his left wrist, bracelets on his right wrist, rings on one finger of each hand, and earrings. His
head is cocked, his eyes are closed, and his heavily-veined hands, nearly all of which are
visible, rest over his lower abdomen, with the thumbs hooked on the waistband of the trousers.
The light is from the viewer's left, so that Garnett's right shoulder is the brightest area of the
photograph and his hands cast slight shadows on his trousers.
In 2001, CHW Advertising proposed a design to Coors using a manipulated version of the
Garnett Photo superimposed with “Iced out” and a can of Coors Light. CHWA obtained
authorization from Mannion’s representative to use said photo in internal corporate
merchandising catalog.
This was chosen by Coors as its billboard photo. The Coors Billboard depicts, in black-and-
white, the torso of a muscular black man, albeit a model other than Garnett, shot against a
cloudy backdrop. The pose is similar to that in the Garnett Photograph, and the view also is up
and across the left side of the torso. The model in the billboard photograph also wears a white
T-shirt and white athletic pants. The model's bling-bling is prominently depicted. The light
comes from the viewer's right, so that the left shoulder is the brightest part of the photograph,
and the right arm and hand cast slight shadows on the trousers.
Mannion noticed said Coors Billboard at 2 locations in LA. He then applied for registration of
his copyright of the Garnett Photo in 2003 and brought an action for infringement on Feb 2004.
The registration was completed in Feb 2004.
Issue: Whether or not a photograph used in billboard ads for Coors infringes the
photographer’s copyright.
Held: YES. There can be no serious dispute that the Garnett Photograph is an original work
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To prove infringement, a plaintiff with a valid copyright must demonstrate that: (1) the
defendant has actually copied the plaintiff’s work; and (2) the copying is illegal because a
substantial similarity exists between the defendant’s work and the 10rotectable elements of
plaintiff’s.
It is well-established that the sine qua non of copyright is originality and, accordingly, that
copyright protection may extend only to those components of a work that are original to the
author. “Original” in the copyright context “means only that the work was independently
created by the author (as opposed to copied from other works), and that it possesses at least
some minimal degree of creativity.” If a photographer arranges or otherwise creates the subject
that his camera captures, he may have the right to prevent others from producing works that
depict that subject.
A photograph may be original in three respects. They are not mutually exclusive.
(a) RENDITION: There may be originality which does not depend on creation of the scene
or object to be photographed and which resides, instead, in such specialties as angle of
shot, light and shade, exposure, effects achieved by means of filters, developing
techniques etc. Thus, copyright protects not what is depicted but rather how it is
depicted.
(b) TIMING: A person may create a worthwhile photo by being at the right place at the right
time. Copyright based on originality in timing is limited, just like in rendition, by the
principle that copyright in a photograph ordinarily confers no rights over the subject
matter.
(c) CREATION OF SUBJECT: A photograph may be original to the extent that the
photographer created the scene or subject to be photographed. Here, unlike in the
previous 2, copyright extends to the subject matter.
As to the Garnett Photo, the photograph does not result from slavishly copying another work.
Moreover, its unusual angle and distinctive lighting support the fact that it is original in the
rendition. Furthermore, Mannion’s instructions to KG that he wear simple and plain clothing
and as much jewelry as possible gives it originality in the creation of the subject.
Both photos share a similar composition and angle. The lighting is similar, and both use a
cloudy sky as backdrop. The subjects are wearing similar clothing and similar jewelry arranged
in a similar way. Coors, in other words, appears to have recreated much of the subject that
Mannion had created and then, through imitation of angle and lighting, rendered it in a similar
way. The similarities here thus relate to the Garnett Photograph’s originality in the rendition and
the creation of the subject and therefore to its protected elements.
Though there are differences (ie. black & white, mirror image, unidentified man’s torso, different
jewelry, T-shirt fit, Iced Out), these are more in the nature of changes rather than additions. It
long has been the law that no plagiarist can excuse the wrong by showing how much of his
work he did not pirate.
9. Ching Kian Chuan v. CA (2001)

Facts: Ong imports vermicelli from a company based in Beijing and has a business 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 upper-most portion. Ong acquired a Certificate of
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Copyright Registration from the National Library on June 9, 1993 on the said design. She
discovered that Tan repacked the vermicelli he imports from the same company but based in
Qingdao in a “nearly” identical wrapper. Thus, Ong filed against Tan a complaint for
infringement of copyright with damages and prayer for TRO or writ of preliminary injunction.
Ong alleged that he was the holder of a Cert. of Copyright Registration over the cellophane
wrapper with the two-dragon design and that Tan used an identical wrapper.
Tan alleged that Ong was not entitled to an injunction because Ong did not have a clear right
over the use of the trademark Pagoda and Lungkow vermicelli as these were registered in the
name of Ceroilfood Shandong, based in Qingdao, China. Tan averred that he was the exclusive
distributor in the Philippines of the Pagoda and Lungkow vermicelli and was solely authorized
to use said trademark. He added that Ong merely copied the two-dragon design from
Ceroilfood Shandong which had the Certificates of Registration issued by different countries.
Tan concluded that Ong’s Certificate of Copyright Registration was not valid for lack of
originality. CA granted the injunction was granted against Ong and held that Ong’s wrapper is
a copy of Ceroilfood Shandong’s wrapper.
Issue: Whether or not Ong has a better right over Tan.
Held: NO. 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. A grant of preliminary injunction depends chiefly on
the extent of doubt on the validity of the copyright, existence of infringement, and the damages
sustained by such infringement.
In the court’s view, the copies of the certificates of copyright registered in the name of
Ceroilfood Shandong sufficiently raise reasonable doubt. With such a doubt, the preliminary
injunction is unavailing.
As for Ong, the Court noted that for him to be entitled to an injunctive writ, he must show the
existence of a clear and unmistakable right and an urgent and paramount necessity for the writ
to prevent serious damage. The court found that Ong’s right has not been clearly and
unmistakably demonstrated. That right is what is in dispute and has yet to be determined.
10. Sambar v. Levi Strauss (2002)

Facts: CVS Garment Enterprises (CVSGE) used an arcuate stitching design on the back
pockets of Europress jeans. As such, Levi’s demanded from CSVGE to desist from using said
design in the jeans they were selling. They also advertised via Manila Bulletin. Counsel of
CVSGE replied saying that the design in Europress jeans was different from that of Levi’s. It
was also added that CVGSE had a copyright on the design it was using. Thus, Levi’s sued
Sambar and CVSGE for infringement and unfair competition.
Levi’s indicated in their complaint that they are an internationally known clothing manufacturer
and owns the arcuate design trademark registered under US Trademark Registration dated
Nov. 16, 1943. Also, it was registered in the Principal Register of trademarks with the Phi
Patent Office dated Oct. 8, 1973.
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For CVSGE, while admitting that it was still manufacturing Europress jeans with the questioned
arcuate design, it denied that there was infringement because the public would not be
confused on the ownership of said trademark. Also, it claimed that it had its own arcuate
design as evidenced by their Copyright Registration.
Lower courts and the CA ruled that there was infringement, awarded damages to Levi’s and
ordered the Director of the National Library to cancel the Copyright Reg issued in Samar’s
name.
Issue: Whether or not Sambar and CVSGE are liable for copyright infringement?
Held: YES. Other than the fact that the issues raised are factual, and thus, not within the ambit
of the SC, the mere fact that Sambar had a copyright over the design and allowed the use of it
by CSVGE makes him liable.
Also, to be entitled to copyright, the thing being copyrighted must be original, created by the
author through his own skill, labor, and judgment, without directly copying or evasively
imitating the work of another. Regarding damages, the fact that there was infringement means
they suffered losses for which they are entitled to moderate damages.
CREATIVITY
11. Feist Publications, Inc. v. Rural Telephone Service Co. (1991)
Facts: Rural Telephone Service Company, Inc. (Rural) is a public utility providing telephone
services in several Kansas communities. State regulations mandates them to annually publish
an undated telephone directory — white & yellow pages. The white pages alphabetically listed
the subscribers’ names while the yellow pages though also alphabetically listed, consisted of
classified advertisements from which they earn revenue. Thus, they obtained information from
their subscribers, published a directory and copyrighted the same. This was given to
subscribers free of charge.
Feist Publications, Inc. (Feist) is a publishing company specializing in area-wide telephone

directories for much larger areas. They compete with Rural for yellow page advertising. Feist is
not a telephone provider, unlike Rural who monopolizes the area. So, they approach all 11
telephone providers and offer to pay for their white pages listing so they can compile and
publish the same. Rural refused to license its white pages listing to Feist for the project
directory covering 11 different service areas in 15 countries with 46,878 white pages listings
compared to Rural’s 7,700 listings. As a result, Feist extracted the listing from Rural’s directory
without consent.
It was later found out by the district court that this was Feist’s attempt to extend its monopoly
in the yellow pages advertising as well. Most of the contents of the listing from Rural were
altered since those not covered in Feist’s geographical area were deleted, they also added
specific street addresses not in Rural’s list, but several were identical including 4
fictitious entries which Rural specifically included to detect copying. Rural sued for
copyright infringement. The District Court granted summary judgment in favor of Rural holding
the directories as copyrightable, which the CA affirmed.
Issue: Whether the copyright in Rural’s directory protects the names, towns, and telephone
numbers copied by Feist
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Held: NO! The facts involved from Rural’s white pages were not proper subject matter of
copyright registration. Feist’s use of them does not constitute infringement. Rural concedes
that “No author may copyright his ideas or the facts he narrates.” But they claim that the
compilation of facts is copyrightable as expressly mentioned in Copyright Act of 1976 and
1909.
The US Constitution mandates originality as a prerequisite for copyright protection —

independent creation plus a modicum of creativity. Since the facts do not owe their origin to
an act of authorship, they are not original, and thus, not copyrightable.
Compilation of facts may possess the requisite originality if the author chooses which
facts to include, order of placing them, manner of arrangement, and the like. Copyright
protection only extends to these components original to the author and not to the facts
themselves. A compilation though copyrightable receives a limited protection and does not
extend to the facts.
The “sweat of the brow” or “industrious collection” test which gives credit to the effort of the
compiler so as to extend protection beyond the selection and arrangement to the facts
themselves as used by lower courts misconstrued the Copyright Act of 1909 and 1976. No
one may copyright facts or ideas.
Factual compilations (such as a telephone directory) may possess required originality to qualify
for copyright purposes; choices as to selection and arrangement, if independently made by
compiler and entailing minimal degree of creativity, are sufficiently original to be subject to
protection under copyright laws.
Work is “original” to author and qualifies for copyright protection if said work is independently
created by author and possesses some minimal degree of creativity. Both elements must
be present to be included under the protection of the law. A directory containing absolutely no
protectable written expression, only facts, meets constitutional minimum for copyright
protection if it features original selection and arrangement.
Rural’s white pages do not meet the constitutional or statutory requirements for copyright
protection. They have a valid copyright in the directory as a whole for the forward texts it
contains and original material in the yellow pages, but nothing in the white pages. Their
selection of listing-subscriber’s names, towns, telephone numbers lacks the necessary
creativity since they are just listed alphabetically. There was also obviously no selection done
since those were the exact information mandated by the state regulation to be contained in the
directory.
B. When Copyright Vests

12. Santos v. McCullough Printing (1964)
Facts: Mauro Malang Santos (Santos) was commissioned by Ambassador Neri to create a
Christmas card design for 1959. The design consisted of a holiday scene in the province,
complete with token carabao, mango tree, and parol. Santos penned the work with his pen
name “Malang”, visible on the design. It should be noted that Santos never had the design
copyrighted. Ambassador Neri distributed the card to over 800 people.
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In 1960, the McCullough Printing Co. (McCullough) displayed the same design in its album of
Christmas cards which were offered for sale. McCullough received order for over 900 copies of
the design. Santos claims damages for the unauthorized use of his design by McCullough, as
he claimed that the said design was made specifically for Ambassador Neri and was intended
for limited use only.
Issue: Whether or not copyright is vested in Santos, as the undisputed creator of the design.
Held: NO. The law states that, in order for an intellectual creation to be protected, it must be
registered within 30 days from its creation if made in Manila, or within 60 is made
elsewhere. The design of Santos was never registered for copyright. There being no
registration, the protection of the laws cannot be afforded to Santos. In addition, the fact that
Santos signed the design with his pen name works against him. While such a signature
indicates that he is the creator of the work, it does not bar McCullough from using the design.
In fact, it protects McCullough, as it gives credit to Santos, and therefore does not constitute
piracy nor plagiarism.
As to the contention of Santos that his work was intended to be limited in nature, the
Court held that the facts work against him. First, there was no publication whatsoever that
the design was meant to be limited. If such limited nature was indeed present, Ambassador
Neri should be the complainant, as he was the person who commissioned the design with the
intention to be limited and one of a kind. Second, the design was distributed to over 800
people. Such a mass distribution negated the limited edition nature of the design, as
explained by the Court :
“When the purpose is a limited publication, but the effect is general publication, irrevocable
rights thereupon become vested in the public, in consequence of which enforcement of the
restriction becomes impossible. When Ambassador Neri distributed 800 copies of the design in
controversy, the plaintiff lost control of his design and the necessary implication was that there
had been a general publication, there having been no showing of a clear indication that a
limited publication was intended. The author of a literary composition has a right to the first
publication thereof. He has a right to determine whether it shall be published at all, and if
published, when, where, by whom, and in what form. This exclusive right is confined to the first
publication. When once published, it is dedicated to the public, and the author loses the
exclusive right to control subsequent publication by others, unless the work is placed
under the protection of the copyright law.”
There is no disputing that Santos is the owner of the design, as he created it, and at the time of
creation, he has absolute dominion over it. However, once it had undergone general
publication, he lost the right to control subsequent publication over it. Unfortunately for
Santos, since there was no registration for copyright whatsoever in reference to the design.
Therefore, he cannot be protected by the laws and the copyright was never vested to him.
13. Filipino Society of Composers v. Benjamin Tan (1987)

Facts: Petitioners is an association of authors, composers, and publishers. It owns musical
compositions like “Dahil Sa Iyo,” Sapagkat Ikaw Ay Akin,” “Sapagkat Kami Ay Tao Lamang,”
and “The Nearness of You.” All of which have been copyrighted. On the other hand, Tan
operates Alex Soda Foundation and Restaurant.
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In 1967, a band was hired to amuse customers therein and played the above compositions
without any license or permission from Petitioners. Accordingly, they demanded from Tan to
pay license fees for playing said compositions in the restaurant. The later refused. Thus,
Petitioner filed a complaint for infringement.
Issue: (1) Whether or not the playing/singing of copyrighted musical compositions inside a
restaurant constitute a public performance for profit within the meaning and contemplation of
Copyright Law (Act 3134)
(2) Assuming that it was indeed a public performance for profit, whether or not restaurant can
be held liable.
Held: (1) YES. It is beyond question that the playing and singing of the combo Tan’s restaurant
constituted performance for profit contemplated by the Copyright Law. The music provided is
for the purpose of entertaining the customers to make the establishment more desirable.
(2) NO. The composers of the musical compositions waived their right in favor of the general
public when they allowed their intellectual creations to become property of the public domain
before applying for the corresponding copyrights forthe same.
Pursuant to the law, an intellectual creation should be copyrighted 30 days after its publication,
if made in Manila, or within 60 days if made elsewhere, failure of which renders such creation
public property. It was shown that the compositions became popular in radios, juke boxes, etc
long before they were registered. Thus, these compositions had long become public property
and beyond the protection of the Copyright Law.
14. Unilever Phils. v. CA (2006)

Facts: As early as 1982, a P&G Italy used a key visual in the advertisement of its laundry
detergent and bleaching products. This key visual known as the “double-tug” or “tac-tac”
demonstration shows the fabric being held by both hands and stretched sideways. The “tac-
tac” was conceptualized for P&G by the advertising agency Milano and Gray in 1982. The “tac-
tac” was used in the same year in an advertisement to demonstrate the effect on fabrics of one
of P&GP's products, a liquid bleach called “Ace.”
Since then, P&G has used the “tac-tac” key visual in the advertisement of its products. In fact,
in 1986, in Italy, the “tac-tac” key visual was used in the television commercial for “Ace”
entitled “Kite.” P&G has used the same distinctive “tac-tac” key visual to local consumers in
the Philippines.
Unilever, on July 1993 aired a TVC of its “Breeze Powerwhite” laundry product called “Porky.”
The said TVC included a stretching visual presentation and sound effects almost identical or
substantially similar to P&GP's “tac-tac” key visual. On July 1994, P&GP aired in the
Philippines, the same “Kite” television advertisement it used in Italy in 1986, merely dubbing
the Italian language with Filipino for the same product “Ace” bleaching liquid which P&GP now
markets in Philippines.
Unilever filed a Complaint with the Advertising Board of the Philippines to prevent P&GP from
airing the “Kite” television advertisement. A writ of preliminary injunction was issued against
Unilever by the CA, enjoining it from using and airing TVCs for its laundry products claimed to
be identical or similar to P&Gs key visual.
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Issue: Whether the issuance of preliminary injunction against Unilever was proper
Held: NO. Unilever does not deny that the questioned TV advertisements are substantially
similar to P&GP's “double tug” or “tac-tac” key visual. However, it submits that P&GP is not
entitled to the relief demanded for the reason that Unilever has Certificates of Copyright
Registration for its advertisements while P&GP has none with respect to its “double-tug”
or “tac-tac” key visual. In other words, it is Unilever’s contention that P&GP is not entitled to
any protection because it has not registered with the National Library the very TV commercials
which it claims have been infringed by petitioner.
Contrary to Unilever’s contention, the intellectual creator's exercise and enjoyment of

copyright for his work and the protection given by law to him is not contingent or
dependent on any formality or registration. P&GP is entitled to the injunctive relief prayed
for in its Complaint.
Section 2 of PD 49 stipulates that the copyright for a work or intellectual creation subsists
from the moment of its creation. Accordingly, the creator acquires copyright for his work
right upon its creation.
C. Scope of Copyright
THE “IDEA/EXPRESSION” DICHOTOMY
15. Baker v. Selden (1879)
Facts: Charles Selden obtained a copyright of a book, entitled ‘Selden's Condensed Ledger, or
Bookkeeping Simplified,’ the object of which was to exhibit and explain a peculiar system of
bookkeeping. He took the copyright of several other books, containing additions to and
improvements upon the said system.
Complaint was filed against Baker for an alleged infringement of these copyrights. Baker
denied that Selden was the author or designer of the books, and denied the infringement
charged, and contends that the matter alleged to be infringed is not a lawful subject of
copyright.
The book or series of books of which the complainant claims the copyright consists of an
introductory essay explaining the system of bookkeeping referred to, to which are annexed
certain forms or banks, consisting of ruled lines, and headings, illustrating the system and
showing how it is to be used and carried out in practice. The system effects the same results
as bookkeeping by double entry; but, by a peculiar arrangement of columns and headings,
presents the entire operation, of a day, a week, or a month, on a single page, or on two
pages facing each other, in an account book.
Baker uses a similar plan so far as results are concerned; but makes a different
arrangement of the columns, and uses different headings. Baker used the same system
as that which is explained and illustrated in Selden's books.
Selden contended that the ruled lines and headings, given to illustrate the system, are a part of
the book, and, as such, are secured by the copyright; and that no one can make or use similar
ruled lines and headings, or ruled lines and headings made and arranged on substantially the
same system, without violating the copyright.
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Issue: Whether the exclusive property in a system of bookkeeping can be claimed, under the
law or copyright, by means of a book in which that system is explained.
Held: NO. The system of Selden was not entitled to copyright protection. 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.
As an author, Selden explained the system in a particular way. It may be conceded that Baker
makes and uses account-books arranged on substantially the same system; but the proof fails
to show that he violated the copyright of Selden's book, regarding the latter merely as an
explanatory work; or that he has infringed Selden's right in any way, unless the latter became
entitled to an exclusive right in the system.
There is a clear distinction between the book, as such, and the art which it is intended to
illustrate. 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 has nothing to do with the validity of the copyright. To give to the
author of the book an exclusive property in the art described therein, when no examination of
its novelty has ever been officially made, would be a surprise and a fraud upon the public. That
is the province of letters patent, not of copyright.
The claim to an invention or discovery of an art or manufacture must be subjected to the

examination of the Patent Office before an exclusive right therein can be obtained; and it can
only be secured by a patent from the government.
Take the case of medicines. Certain mixtures are found to be of great value in the healing art.
If the discoverer writes and publishes a book on the subject (as regular physicians
generally do), he gains no exclusive right to the manufacture and sale of the medicine; he
gives that to the public. If he desires to acquire such exclusive right, he must obtain a patent
for the mixture as a new art, manufacture, or composition of matter. He may copyright his
book, if he pleases; but that only secures to him the exclusive right of printing and publishing
his book.
By publishing the book, without getting a patent for the art, the latter is given to the
public. The fact that the art described in the book by illustrations of lines and figures, which
are reproduced in practice in the application of the art, makes no difference.
The very object of publishing a book on science or the useful arts is to communicate to the
world the useful knowledge which it contains. But this object would be frustrated if the
knowledge could not be used without incurring the guilt of piracy of the book. Of course, these
observations are not intended to apply to ornamental designs, or pictorial illustrations
addressed to the taste. Of these it may be said, that their form is their essence, and their
object, the production of pleasure in their contemplation. This is their final end.
On the other hand, the teachings of science and the rules and methods of useful art have their
final end in application and use. This application and use are what the public derives from the
publication of a book, which teaches them.
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Charles Selden, by his books, explained and described a peculiar system of book-
keeping, and illustrated his method by means of ruled lines and blank columns, with proper
headings on a page, or on successive pages. Now, whilst 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 use of the art is a totally different thing from a publication of the book explaining it.
The copyright of a book on bookkeeping cannot secure the exclusive right to make, sell,
and use account-books prepared upon the plan set forth in such book. The system was
not patented, and is open and free to the use of the public. And, of course, in using the art, the
ruled lines and headings of accounts must necessarily be used as incident to it. The
description of the art in a book, though entitled to the benefit of copyright, lays no foundation
for an exclusive claim to the art itself.
The object of the one (publication of book) is explanation; the object of the other (art/system) is
use. The former may be secured by copyright. The latter can only be secured, if it can be
secured at all, by letters-patent.
16. A.A. Hoehling v. Universal City Studios (1980)

Facts: Hoehling published a book entitled “Who Destroyed the Hindenburg?” The book was
based on the Hindenberg, a luxury airship (zeppelin) created by Germany during Hitler’s time.
On May 6, 1937, the Hindenburg hovered over Lakehurst, New Jersey from its voyage from
Germany. At 7:25 pm, it exploded into flames and disintegrated in 35 seconds. 36 people were
killed. As a result, investigations from American and German authorities ensued but they could
not ascertain the definite cause of the tragedy. Throughout the entire investigation, the
authorities never ruled out sabotage as the cause for said tragedy. The incident sparked a lot
of journalists and columnists to write about the incident using the reports from the investigation
as basis. Hoehling was no different.
He studied investigative reports, consulted previously published articles and books, and
conducted interviews with survivors of the crash as well as others who possessed information
about the Hindenburg. His book is presented as a factual account, written in an objective,
reportorial style. In the final chapter, spanning 11 pages, Hoehling suggests that all proffered
explanations of the explosion, save deliberate destruction, are unconvincing. He concludes
that the most likely saboteur is one Eric Spehl, a “rigger” on the Hindenburg crew who was
killed at Lakehurst. Hoehling opined that Spehl destroyed the airship by placing a bomb its gas
cell to please his ladyfriend who was dedicated to disproving Nazi invincibility.
Ten years later, Mooney published his book “The Hindenberg.” His endeavor might be
characterized as more literary than historical in its attempt to weave a number of symbolic
themes through the actual events surrounding the tragedy. The destruction is depicted as the
ultimate triumph of nature over technology, as Spehl plants the bomb that ignites the
hydrogen. Developing this theme from the outset, Mooney begins with an extended review of
man's efforts to defy nature through flight, focusing on the evolution of the zeppelin. This story
culminates in the construction of the Hindenburg, and the Nazis' claims of indestructibility.
Mooney then traces the fateful voyage, advising the reader almost immediately of Spehl's
scheme. The book concludes with the airship's explosion.
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Mooney acknowledges, in this case, that he consulted Hoehling's book, and that he relied on it
for some details. He asserts that he first discovered the “Spehl-as-saboteur” theory when he
read Titler's “Wings of Mystery.” Indeed, Titler concludes that Spehl was the saboteur, for
essentially the reasons stated by Hoehling. He also claims to have studied the complete
National Archives and New York Times files concerning the Hindenburg, as well as all
previously published material. Moreover, he traveled to Germany, visited Spehl's birthplace,
and conducted a number of interviews with survivors.
After Mooney prepared an outline of his anticipated book, his publisher succeeded in
negotiations to sell the motion picture rights to appellee Universal City Studios. A certain
Gidding was asked to write the screenplay. Said screenplay included other fictional characters
and subplots. In the film, which was released in late 1975, a rigger named “Boerth,” who has
an anti-Nazi ladyfriend, plans to destroy the airship in an effort to embarrass the Nazis.
Upon learning of Universal's plans to release the film, Hoehling instituted this action against
Universal for copyright infringement and common law unfair competition. He also impleaded
Mooney.
Hoehling's principal claim is that both Mooney and Universal copied the essential plot of his
book i. e., Eric Spehl, influenced by his girlfriend, sabotaged the Hindenburg.
Issue: Whether or not Universal is liable to Hoehling for copyright infringement.
Held: NO. 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.
It is undisputed that Hoehling has a valid copyright in his book. To prove infringement,
however, he must demonstrate that Universal “copied” his work and that they “improperly
appropriated” his “expression.” Ordinarily, wrongful appropriation is shown by proving a
“substantial similarity” of copyrightable expression.
While Hoehling's Spehl destroys the airship to please his communist girlfriend, Mooney's
character is motivated by an aversion to the technological age. Universal's Boerth, on the
other hand, is a fervent anti-fascist who enlists the support of a Luftwaffe colonel who, in turn,
unsuccessfully attempts to defuse the bomb at the crucial moment.
Hoehling, correctly rejoins that while ideas themselves are not subject to copyright, his
“expression” of his idea is copyrightable. However, the idea at issue is an interpretation of
an historical event, and based on case law, such interpretations are not copyrightable as a
matter of law. Although the plots of the 2 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.”
The hypothesis that Eric Spehl destroyed the Hindenburg is based entirely on the interpretation
of historical facts. Such an historical interpretation, whether or not it originated with Mr.
Hoehling, is not protected by his copyright and can be freely used by subsequent authors.
Factual information is part of the public domain.
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The similar elements in Hoehling’s, Mooney, & Universal’s work are merely scenes a faire, that
is, “incidents, characters or settings which are as a practical matter indispensable, or at
least standard, in the treatment of a given topic.” Because it is virtually impossible to write
about a particular historical era or fictional theme without employing certain “stock” or
standard literary devices, we have held that scenes a faire are not copyrightable as a matter of
law.
A verbatim reproduction of another work, of course, even in the realm of nonfiction, is

actionable as copyright infringement. Courts should assure themselves that the works before
them are not virtually identical. In this case, it is clear that all three authors relate the story
of the Hindenburg differently. 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.
17. American Dental Association v. Delta Dental (1997)

CASE BRIEF: A system of identification codes for dental procedures is copyrightable. ADA
developed a system that assigned a numerical code to each dental procedure. Under the
system, each procedure was assigned a numerical code, a
“short description,” and a “long description.” The court found that Delta had infringed ADA’s
copyright to the system by copying the codes and the descriptions. According to the court,
ADA’s system exhibited originality because dental procedures could be classified by
complexity, or by the tools necessary to perform them, or in any of a dozen different
ways.
Facts: ADA created the Code on Dental Procedures and Nomenclature which it published
in 1969 on the Journal of the American Dental Association covered by a general copyright
notice. It was revised frequently to adapt to changes and its 1991 & 1994 versions were also
copyright registered. All dental procedures were classified into groups: each procedure
receives a number, short description, and long description.
Dental published a work entitled Universal Coding and Nomenclature including most of the
numbering and short description from ADA’s code. They claimed that they were entitled
to reprint modified versions under an express or implied license, since they participated
in the groups that drafted the Code, and fair use. It further claimed that since ADA
distributed pamphlets containing the order versions without copyright notices it made the
Code public domain forfeiting its copyright and that the subject matter was not copyrightable.
District court ruled in favor of Delta saying that the taxonomy is not a copyrightable subject
matter because it catalogs a field of knowledge. A comprehensive treatment cannot be
selective in scope or arrangement and therefore cannot be original. Taxonomies are designed
to be useful and if “nothing remains after the useful is taken away – if the primary function is
removed from the form – the work is devoid of even that modicum of creativity required. The
Code is merely designed and used for business as nobody would read it for pleasure or
aesthetic purposes. Plus, the fact that it was made by a committee makes it an oxymoron and
can never be original.
Issue: Whether taxonomy is copyrightable.
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Held: YES. 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. The 1991 and 1994 versions of the Code may be recompilations
of earlier editions, but the original Code is covered by Section 102 (a) as an original work of
authorship, and its amendments by Section 106 (2) as derivative works.
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, 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. (No other explanation
was given) The Code was a “how-to” for dentists. So far as the ADA is concerned, any
dentist, any insurer, anyone at all, may devise and use forms into which the Code’s
descriptions may be entered.
Section 102 (b) precludes ADA from suing, for copyright infringement, a dentist whose office
files record treatments using the Code’s nomenclature. No field of practice has been or can be
monopolized, given this constraint. Section 102 (b) permits Delta Dental to disseminate forms
inviting dentists to use the ADA’s Code when submitting bills to insurers.
But it does not permit Delta to copy the Code itself, or make and distribute a derivative
work based on the Code.
(Ganito, parang cook book, di mo pwedeng kasuhan ung taong magluluto based on your book,
pero pwede mong
kasuhan ung taong gagaya nung book mo mismo).
18. Joaquin v. Drilon (1999)

Facts: BJ Productions, Inc. (BJPI) is the holder of a Certificate of Copyright of a dating
game show named “Rhoda and Me.” BJPI submitted to the National Library an addendum to
its certificate of copyright specifying the show’s format and style of presentation. While
watching TV, Joaquin (President of BJPI) saw on RPN 9 an episode of “It’s a Date!” which is
produced by IXL Productions (IXL). He wrote a letter to the President of IXL, Zosa, informing
him that BJPI had a copyright to “Rhoda and Me” and demanding that “It’s a Date” be
discontinued.
Both shows have the same substance because 2 matches are made between a male and a
female, both single, and the 2 couples are treated to a night or two of dining and/or dancing at
the expense of the show. So, the major concepts are the same.
Zosa apologized and wanted to settle but IXL did not stop airing the show. Joaquin sent a
second letter in which he
reiterated his demand to discontinue “It’s a Date.” Meanwhile, Zosa registered IXL’s
copyright to the first episode of
“It’s a Date” and he was given a certificate of Copyright by the National Library.
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Consequently, Joaquin sued Zosa. Sec. of Justice Drilon moved for the dismissal of the case.
Zosa is contending that BJPI’s copyright covers only a specific episode of Rhoda and Me
and that the formats or concepts of dating game shows are NOT covered by copyright
protection.
Issue: (1) Whether format/mechanics of a show is entitled to copyright protection.

(2) Whether master tapes need be presented.
Held: (1) NO. The format of a show is not copyrightable. Section 2 of P.D. No. 49 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.
As aptly observed by respondent Secretary of Justice: 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.
(2) YES. Joaquin claim that Drilon gravely abused his discretion in ruling that the master
videotape should have been presented in order to determine whether there was probable
cause for copyright infringement.
In the 20th Century Fox Film Corp vs. 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.
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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 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.
In the case at bar, during the preliminary investigation, Joaquin and Zosa presented written
descriptions of the formats of their respective televisions shows, on the basis of which the
investigating prosecutor ruled that the copyright does not extend to the general concept or
format of its dating game show. Accordingly, by the very nature of BJPI’s copyright, the
investigating prosecutor should have the opportunity to compare the videotapes of the
two shows.
19. Pearl & Dean v. Shoemart (2003)

Facts: Pearl & Dean Philippines (P&D), a below the line advertising company, entered into a
contract with Shoemart (SM) to lease and install light boxes for advertising in their malls.
Such light boxes were marketed under the trademarked name “Poster Ads.” Through their
General Manager Rodolfo Z. Vergara, P&D entered into contracts covering SM Makati and SM
Cubao, due to the fact that the original site of SM North EDSA had yet to be completed. SM
signed the contract for SM Makati, but took action for the contract covering SM Cubao. Upon
follow up on the SM Cubao contract, Vergara was informed that even the SM Makati contract
was being rescinded.
Metro Industrial Services (Metro) was the company that undertook to manufacture the light
boxes for P&D. Metro, by themselves, later entered into a contract with SM. After this contract
was done, SM engaged the services of EYD Rainbow Advertising Corporation for the same
service.
P&D caught wind of these transactions, and sued SM for copyright and trademark
infringement, as well as unfair competition and damages. RTC ruled for P&D but CA reversed.
Issue: Whether or not SM can be held liable for copyright, trademark and (by extension) patent
infringement against P&D.
Held: NO. P&D had a copyright certificate covering the light boxes under the name “Advertising
Display Units.” However, such copyright was to protect only the technical drawings of the
boxes, and not the actual boxes themselves.
Under Sec 2 (O) of PD 49, prints, pictorial illustrations, advertising copies, labels, tags, and box
wraps can be protected by copyright.
Although P&D’s copyright certificate was entitled “Advertising Display Units” (which
depicted the box-type electrical devices), its claim of copyright infringement cannot be
sustained. Copyright, in the strict sense of the term, is purely a statutory right. Being a mere
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statutory grant, the rights are limited to what the statute confers. It may be obtained and
enjoyed only with respect to the subjects and by the persons, and on terms and conditions
specified in the statute. Accordingly, it can cover only the works falling within the statutory
enumeration or description.
P & D secured its copyright under the classification class “O” work. This being so, its
copyright protection extended only to the technical drawings and not to the light box
itself because the latter was not at all in the category of “prints, pictorial illustrations,
advertising copies, labels, tags and box wraps.” Stated otherwise, even as we find that P
& D indeed owned a valid copyright, the same could have referred only to the technical
drawings within the category of “pictorial illustrations.” It could not have possibly
stretched out to include the underlying light box.
The strict application of the law’s enumeration in Section 2 prevents us from giving P&D even a
little leeway, that is, even if its copyright certificate was entitled “Advertising Display Units.”
What the law does not include, it excludes, and for the good reason: the light box was not a
literary or artistic piece which could be copyrighted under the copyright law. And no less
clearly, neither could the lack of statutory authority to make the light box copyrightable be
remedied by the simplistic act of entitling the copyright certificate issued by the National
Library as “Advertising Display Units.”
The copyright extended to the technical drawings only, and the reproduction of the plans
in the drawing would fall under patent infringement. It was admitted that the “light box was
neither a literary nor artistic work, but an ‘engineering or marketing invention’.
P&D had no patent registration. However, the Court discussed the implications of having a
patent registration arguendo.
“It is only after an exhaustive examination by the patent office that a patent is issued. Such an
In-depth investigation is required because “in rewarding a useful invention, the rights and
welfare of the community must be fairly dealt with and effectively guarded. To that end, the
prerequisites to obtaining a patent are strictly observed and when a patent is issued, the
limitations on its exercise are equally strictly enforced. To begin with, a genuine invention or
discovery must be demonstrated lest in the constant demand for new appliances, the heavy
hand of tribute be laid on each slight technological advance in art.”
There is no such scrutiny in the case of copyrights nor any notice published before its
grant to the effect that a person is claiming the creation of a work. The law confers the
copyright from the moment of creation and the copyright certificate is issued upon registration
with the National Library of a sworn ex-parte claim of creation.
Therefore, not having gone through the arduous examination for patents, the P&D cannot
exclude others from the manufacture, sale or commercial use of the light boxes on the
sole basis of its copyright certificate over the technical drawings.
Stated otherwise, what P&D seeks is exclusivity without any opportunity for the patent office
(IPO) to scrutinize the light box’s eligibility as a patentable invention. The irony here is that, had
P&D secured a patent instead, its exclusivity would have been for 17 years only. But
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through the simplified procedure of copyright-registration with the National Library — without
undergoing the rigor of defending the patentability of its invention before the IPO and the
public — the P&D would be protected for 50 years. This situation could not have been the
intention of the law.
In the oft-cited case of Baker vs. Selden, the United States Supreme Court held that only the
expression of an idea is protected by copyright, not the idea itself.” In short, P&D opted for
Copyright registration and not Patent registration. Therefore, the copyright protected the
drawings or blueprints of the light boxes (expression) and not the actual construction of the
boxes (idea). If a patent registration had been acquired, it would have been a different story
altogether.
20. Ching v. Salinas (2005)

Facts: Ching is the owner of Jeshicris Manufacturing Co., the maker and manufacturer of a
Utility Model, described as
“Leaf Spring Eye Bushing for Automobile.” Ching was issued a copyright registration and
deposit for such product. Later,
Ching asked help from the NBI for apprehension and prosecution of illegal manufacturers. The
NBI was able to obtain search warrants from the RTC of Manila against Salinas Sr. and other
officers of Wilaware Product Corporation, who
were alleged of reproducing and distributing the models.
Upon seizure of the goods, Salinas et al. moved to quash the warrants, saying that the models
were not artistic or literary and that the models are spare parts of automobiles, which
necessarily means they are not original; therefore, they are not copyrightable, but
subject to patent.
Ching opposed by saying that in the determination of probable cause in the issuance of a
search warrant, the court cannot decide on the merits of copyrightability; furthermore,
copyright registration has the presumption of validity.
The RTC quashed the warrants, saying that a preliminary finding that a specific offense has
been committed is needed to justify the issuance of a search warrant and therefore it can delve
into the validity of the copyright. It then ruled that the registered models are not copyrightable.
CA agreed, hence the petition to the SC.
Issue: Whether the Utility Models are copyrightable
Held: NO but they may be the subject of patent. The models (designs for spare parts in a car)
are not literary or artistic works. They are not intellectual creations in the literary and
artistic domain, or works of applied art. They are certainly not ornamental designs or one
having decorative quality or value.
The focus of copyright is the usefulness of the artistic design, and not its marketability.
The central inquiry is whether the article is a work of art. Works for applied art include all
original works that are intended to be or have been embodied in useful article regardless of
factors such as mass production, commercial exploitation, and the potential availability of
design patent protection. While works of applied art, original intellectual, literary, and artistic
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works are copyrightable, useful articles and works of industrial design are not. A useful article
may be copyrightable if and only if 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.
There is no copyright protection for works of applied art or industrial design which have
aesthetic or artistic features that cannot be identified separately from the utilitarian aspects
of the article.
In this case, Ching’s models are not works of applied art nor artistic works. They are utility
models, useful articles, albeit with no artistic design or value. A utility model is a technical
solution to a problem in any field of human activity which is new and industrially applicable. It
may be, or may relate to, a product, a process, or an improvement of either. It is essentially an
invention in the mechanical field.
Being plain automotive spare parts that must conform to the original structural design of the
components they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion
are not ornamental. They lack the decorative quality or value that must characterize authentic
works of applied art. They are not even artistic creations with incidental utilitarian
functions or works incorporated in a useful article.
In actuality, the personal properties described in the search warrants are mechanical works,
the principal function of which is utility sans any aesthetic embellishment. That the models may
be the proper subject of a patent does not entitle Ching to the issuance of a search warrant for
violation of copyright laws.
Copyright and patent rights are completely distinct and separate from one another, and
the protection afforded by one cannot be used interchangeable to cover items or works
that exclusively pertain to the other. The dichotomy of protection for the aesthetic is not
beauty and utility but art for the copyright and the invention of original and ornamental
design for design patents. If the sole intrinsic function of an article is its utility, the fact
that the work is unique and attractively shaped will not qualify it as a work of art.
DERIVATIVE WORKS and COMPILATIONS

21. L. Batlin & Son, Inc. v. Snyder (1976)
Facts: Uncle Sam mechanical banks (banks) have been on the American scene since 1886.
This basic delightful design has long been in the public domain. These banks are found in
collector’s books and known to the average person.
Snyder doing business as “J.S.N.Y,” obtained a registration of copyright on a plastic

“Uncle Sam bank” in the category of “Works of Art” as “sculpture.” In his affidavit, Snyder
said that he obtained a cast metal antique Uncle Sam Bank then he flew to Hong Kong to
manufacture replicas as Bicentennial items. Snyder wanted his bank to be made of plastic
and to be shorter than the case metal sample (11 inches to 9 inches). He also changed
the shape of the bag and to include the umbrella in a one-piece mold. The plastic bank
carried the legend “CR Copyright J.S.N.Y.”
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Batlin is also in the novelty business. He ordered 30 cartons of cast iron Uncle Sam mechanical
banks from Taiwan. When he became aware of the existence of a plastic bank, which he
considered “an almost identical copy” of the cast iron bank, Batlin’s trading company in
Hong Kong procured a manufacturer and the president of Batlin ordered plastic copies
also.
Batlin was notified by the US Customs that the plastic banks were covered by Snyder’s
copyright. The customs refused entry. So Batlin is instituting this case to declare Snyder’s
copyright void and for damages for unfair competition and restraint of trade. The lower
court granted Batlin a preliminary injunction.
Snyder notes that there are differences between his copyrighted plastic model and the iron
cast model. As for the bag’s shape, the latter’s was rough & fat while the former’s was
smooth & slim. Also, the eagle in the latter was holding arrows while the former was holding
leaves. Essentially, there were differences in shape and texture which were not perceptible to
the casual observer.
Issue: Whether there was copyright infringement.
Held: NO. The court examined the copyrighted plastic model and the uncopyrighted model
cast iron model. The Snyder bank is “extremely similar to the cast iron bank, save in size
and material” with the only other differences, such as the shape of the satchel and the leaves
in the eagle’s talons being “by all appearances, minor.”
Similarities include, more importantly, the appearance and number of stripes on the
trousers, buttons on the coat,
and stars on the vest and hat, the attire and pose of Uncle Sam, the decor on his base and
bag, the overall color scheme, the method of carpetbag opening, to name but a few.
The plastic version “reproduces” the cast iron bank “except that it proportionately reduces the
height from approximately 11 inches to approximately 9 inches with trivial variations.” There
was no “level of input” which means that there was no great skill and originality. The test
of originality is concededly one with a low threshold in that “(a)ll 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 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.”
Originality means that the work owes its creation to the author and this in turn means that the
work must not consist of actual copying. The only case that appears to be an exception to this
rule is the “Hand of God” case — exact scale artistic reproduction of highly complicated statue
made with great precision was “original” as requiring great skill and originality.
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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, to be sure, Judge Metzner found 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.
Nor can the requirement of originality be satisfied simply by the demonstration of

“physical skill” or “special training.” (remember Toyota case?) 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.
DISSENT: In the instant case the author has contributed substantially more than a merely
trivial variation. “Any ‘distinguishable variation’ of a prior work will constitute sufficient
originality to support a copyright if such variation is the product of the author's independent
efforts, and is more than merely trivial.”
In accord with the purposes of the copyright law to promote progress by encouraging
individual effort through copyright protection, we should require only minimal variations to find
copyrightability. The independent sculpting of the mold for the plastic bank and the aggregated
differences in size and conformation of the figurine should satisfy this standard. It is hornbook
that a new and original plan or combination of existing materials in the public domain is
sufficiently original to come within the copyright protection. Originality sufficient for copyright
protection exists if the ‘author’ has introduced any element of novelty as contrasted with the
material previously known to him.
The most obvious differences between the two exhibits in this case are size and medium.
While these factors alone may not be sufficient to render a work copyrightable, they surely may
be considered along with the other variations. On the other hand, the author's reasons for
making changes should be irrelevant to a determination of whether the differences are trivial.
22. Entertainment Research Group Inc. v. Genesis Creative Group, Inc. (1997)
Facts: ERG designs and manufactures 3D inflatable costumes that are used in publicity events,
such as shopping mall openings. The costumes are approximately 8ft tall and are worn by a
person who remains inside the costume. Various companies purchase and use these costumes
to promote their products. The costumes are based upon these companies' cartoon
characters.(e.g. Pillsbury Doughboy, Geoffrey the Giraffe, Cap’n’Crunch). ERG has
manufactured and sold these walk-around inflatable costumes for the past 16 years. Over this
time, 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.
Genesis is in the business of marketing promotional and advertising devices to various

companies. Aerostar is a manufacturer of hot air balloons, cold air inflatable products and cold
air walk-around costumes.
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In 1989, ERG and Genesis began a business relationship. ERG's inflatable costumes were
being sold to Genesis's customers. On September 18, 1990, ERG and Genesis entered into
and signed a “Confidential Disclosure Agreement.” This agreement states that Genesis shall
not disclose “valuable and proprietary technical information” and that Genesis shall not
duplicate any of ERG's costumes. In August 1991, Genesis gave ERG written notice of the
termination of all future business relations. Shortly thereafter, Genesis apparently entered into a
formal business relationship with Aerostar to sell inflatable walk-around costumes
manufactured by Aerostar to Genesis's customers.
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.
Thereafter, ERG sued Genesis and Aerostar for copyright infringement for the infringement of
certain costumes. ERG alleges that Aerostar copied and infringed ERG's copyrights in the
inflatable costumes that ERG designed and manufactured based on the underlying copyrighted
characters.
Issue: Whether Genesis is liable for copyright infringement of ERG’s derivative works.
Held: NO. To establish copyright infringement, the holder of the copyright must prove both
valid ownership of the copyright and infringement of that copyright by the alleged infringer. It is
undisputed that ERG's costumes are based upon 2D characters that are copyrighted and
owned by the purchasers of the costumes.
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. A work consisting of editorial revisions, annotations,
elaborations, or other modifications which, as a whole, represent an original work of
authorship is a “derivative work.” Given this definition, it is clear that ERG's costumes are
derivative works for purposes of the Copyright Act.
Nevertheless, the copyright protection afforded to derivative works is more limited than it is
for original works of authorship. Copyright in a 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.
To determine if said derivative work is copyrightable, ERG contends that the district court
should have applied the Doran test. In Doran, a 3D inflatable representation of Santa Claus was
original and copyrightable. Under said test, if the form of the derivative work and the form
of the underlying work-3D, 2D, plastic, etc.-are sufficiently different, then the derivative
work is original enough to be copyrightable. However, Doran is not applicable because it
involved the copyrightability of a derivative work where the pre-existing work was taken from
the public domain and not copyrighted itself.
Here, ERG's costumes were based on pre-existing works that were copyrighted and
owned by the ultimate purchasers. This difference is critical because in deciding whether to
29 Roco 2013
grant copyright protection to a derivative 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.
What must be applied is the DURHAM test. This test is 2-pronged: FIRST, to support a
copyright, the original aspects of a derivative work must be more than trivial (originality).
SECOND, the original aspects of a derivative work must reflect the degree to which it
relies on pre-existing material and must not in any way affect the scope of any copyright
protection in that pre-existing material. In other words, the copyright in such work is
independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence
of, any copyright protection in the pre-existing material.
Applying the first prong of Durham to the case, originality “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. Any aspect of ERG's costumes that are purely functional, utilitarian
or mechanical, will not be given any copyright protection. Moreover, any artistic aspects of
ERG's costumes will also not receive copyright protection unless they can be identified
separately from, and are capable of existing independently of, the utilitarian purpose of
the costumes. Viewing the 3D costumes and the 2D drawings upon which they are based, it is
immediately apparent that the costumes are not exact replicas of the 2D drawings. However,
the 3D costumes were not considered as original because the added features were merely for
utilitarian purposes.
As for the second prong, ERG also failed to satisfy said element because, if ERG had
copyrights for its costumes, any future licensee who was hired to manufacture costumes
depicting these characters would likely face a strong copyright infringement suit from ERG. In
other words, the rights of the holder of the underlying copyrighted characters would be
affected.
23. Pickett v. Prince (2000) (Sequence: Prince’s symbol, Picket’s guitar, Prince’s guitar)
Facts: Prince Rogers Nelson (Prince) is a well-known singer who since 1992 referred to himself
by an unpronounceable symbol serving as his trademark & a copyrighted work of visual art that
licensees of Prince have embodied in various forms. He only registered the said symbol for
copyright in 1997 but we know that copyright is obtained at the moment of creation and
entitles the owner to protection, but registration is for purpose of instituting a suit for
copyright infringement. Prince did not obtain the original copyright but he was the assignee
that expressly granted him the right to sue even those infringement prior to the assignment.
Pickett made a guitar in 1993 based from said symbol & allegedly showed it to Prince. He
concedes that it is a derivative work within the contemplation of the law (derivative work is
work based upon one or more preexisting works… or any other form in which a work may be
recast, transformed, or adapted.. representing an original work of authorship.) Shortly after
that, Prince showed up in public playing a similar guitar.
Suit was instituted in 1994 and in 1997. Prince filed a counterclaim for infringement of his
symbol. During this time Prince had not yet copyrighted the symbol nor had it assigned in his
favor. He anchored his claim on Warner Bros copyright when they produced his record and
30 Roco 2013
used the symbol in his album. The court ruled that WB’s copyright was on the music not the
symbol & even if they did, Prince had no standing to enforce someone else’s copyright.
Pickett claimed the right to copyright a work derivative from another person’s copyright
without permission and to sue that person for infringement by the person’s own derivative
work. He claimed his work had enough originality to entitle him to a copyright limited to
the features that the derivative work adds.
Issue: Whether or not Picket’s suit for copyright infringement of his derivative work against
Prince will prosper
Held: NO. Although Pickett’s guitar is identical to Prince Symbol, the difference in appearance
may well be due to nothing more than the functional difference because it is a musical
instrument having strings, frets, etc. whereas the copyrighted symbol is a 2-d shape.
Copyright grants the owner of a copyright exclusive right to prepare derivative works based
upon the copyrighted work. Pickett could not make a derivative work based on Prince’s
symbol w/o authorization even if the guitar had a smidgeon of originality. A derivative
work is bound to be very similar to the original and the law grants the right to make derivative
works in the owner of the original to prevent endless series of infringement suits.
Whether Prince’s guitar is a copy of his symbol or that of Pickett’s guitar is not a question to be
answered in this litigation because if anyone can just make derivative works based from
copyrighted symbols there would be hundreds similar to Pickett charging others
infringement.
The right to make a derivative work does not authorize the maker to incorporate into it
material that infringes someone else’s copyright. By the definition of derivative it is difficult
to see how a derivative work not made by the owner of the original could fail to infringe it.
There can be no infringement by the owner because the law grants him exclusive right to
make derivatives based on his copyrighted work. The only copyright that Pickett claims
Prince infringed is a copyright that Pickett had no right to obtain since he did not have
authority to make a derivative based on Prince’s symbol. Pickett could not copyright his
guitar and his guitar infringes Prince’s copyright.
24. Feist Publications v. Rural Telephone (1991)
25. Tele-Direct Publications v. American Business Information (1997)

Facts: This case was an appeal from the Trial Judge’s finding that copyright did not exist in
the compilation of
information contained in Yellow Pages directories.
• It was conceded that the Yellow Pages, taken as a whole and given the visual aspects
of the pages and their arrangement, are protected by copyright.
• Teledirect Publications claimed copyright in the organization of the subscriber
information (sub-directories) and in respect of the collection of additional data, such
as facsimile numbers, trademarks and number of years in operation.
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• The Trial Judge concluded that the appellant exercised only a minimal degree of skill,
judgment or labor in its overall arrangement which was insufficient to support a claim of
originality in the compilations so as to warrant copyright protection.
Prior to the 1993 North American Free Trade Agreement Implementation Act, compilations
were protected only in so far as they could be characterized as “literary works”. In order
to implement the North American Free Trade Agreement (NAFTA), the Copyright Act was
substantially amended so that artistic, dramatic, literary and musical works included
compilations thereof. Also, a definition of "compilation" was added to section 2 of
the Copyright Act . The chain of events giving rise to the present claim both pre-dated and
post-dated the amendments.
Issues: (1) Whether the amendment modified the state of the law.
(2) What was the correct approach for assessing the originality of the compilation
(3) What role does skill, judgment, or labor play for qualification of copyright protection.
Held: (1) NO. It only reinforced the law with respect to the fact that selection or arrangement of
data results in a protected compilation only if the end result qualifies as an original
intellectual creation.
(2) The more correct approach to assessing the originality of a compilation where the work
sought to be protected by copyright is a compilation of data which appears within a larger
compilation of data is to begin the analysis with the fragment. The compilation at issue before
the Trial Judge was not the directory as a whole (the main compilation), but fragments of
that directory i.e. the in-column listings (the sub-compilation).
(3) Essentially, for a compilation of data to be original, it must be a work that was
independently created by the author and which displays at least a minimal degree of skill,
judgment and labour in its overall selection or arrangement. The threshold is low, but it
does exist. If it were otherwise, all types of selections or arrangements would automatically
qualify, for they all imply some degree of intellectual effort.
Only those works which are original are protected. For compilation of data to be original, it
must be a work that was independently created by the author, and display at least a
minimal degree of skill, judgment and labor in its overall selection or arrangement. It is
doubtful that considerable labour combined with a negligible degree of skill and judgment will
be sufficient in most situations to make a compilation of data original. One of the purposes of
the copyright legislation, historically, has been "to protect and reward the intellectual effort of
the author in the work. The word “author” conveys a sense of creativity and ingenuity. The
amount of labor is not a determinative source of originality. The Trial Judge correctly found that
there was not a sufficient degree of originality in the sub-compilation. Intellectual property law
must strike a balance between protecting the new products of inventive labour and allowing
these to be freely available so as to form the basis for future progress.
In the case at bar, it can hardly be said that the sub-compilation was a "new product of
inventive labour" or that it amounted to an "intellectual creation" within the meaning of Article
1705 of NAFTA. The compilation of the in-column listings is of such an obvious and
32 Roco 2013
commonplace character as to be unworthy of copyright protection. Certain compilations

of routine data are so mechanical as to be devoid of a creative element.
26. Desktop Marketing Systems v. Telstra (2002)

Facts: Desktop Marketing (Desktop) took the whole of the Telstra white and yellow pages
telephone directories including the classification headings, then rearranged and added
information to the date recorded.
Telstra sued for copyright infringement. The directories covered 55 geographic zones and the
headings were an alphabetical list of cross-referenced category headings. The alleged
infringing works comprise 3 CD-rom computer software products (“Marketing Pro”, “Australian
Phone Disk”, and “CD Phone Directory”) produced by Desktop.
Each CD-rom stores the Yellow and White pages listing data. There are marketing tools which
enable the user to search the respective database in a variety of ways and to reproduce the
results of searches. Telstra pleaded that Desktop produced 3 CD-rom products and that each
of the products contained a reproduction of the whole or substantial part of the white pages,
the yellow pages, and the headings.
Desktop denied infringement on the ground that there was insufficient resemblance between
the respective products. The Telstra products were alphabetical lists of subscribers. In effect,
Desktop argued that it had taken fact not form. Telstra’s products were in column form, whilst
the Desktop directories were in CD-rom form.
Issue: (1) Whether Telstra is entitled to copyright in its White & Yellow Pages
(2) Whether Desktop infringed Telstra’s copyright.
Held: (1) YES. Compilation of “raw” facts may be a literary work. So far as compilations
that consist entirely of existing material, that is, material not created by the compiler, are
concerned, there is authority that originality may be found, and a claim of copyright may
therefore subsist, by virtue of selection alone. Court also said that copyright can exist
because the skill, judgment, and labour involved in putting that selection into written
form, determines whether the compilation has sufficient “originality” to attract copyright.
In considering whether a compilation that wholly consists of or that includes existing material is
itself an original work, the question is whether the compilation, looked at as an entity, is
original: it is not proper to dissect the work into its parts, and by determining that the
individual parts lack originality, to deny originality to the whole work.
The court held that copyright can be claimed in a compilation which: (1) has been produced
as a result of the exercise of skill, judgment or knowledge in the selection, presentation or
arrangement of the materials; or (2) has required the investment of a substantial amount of
labour or expense to generate or collect the material included in it (the so-called “sweat of the
brow” approach).
“Literary Work” includes a “compilation.” It is noteworthy that the noun “work” has been
defined to mean, “A thing, structure or result produced by the operation, action, or labor of a
person or other agent” and as a “product of exertion, labor, or activity.” In determining
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whether a work is original, that is, it originates from the author and is not copied, originality
(like authorship), does not need to be novel, inventive or creative, whether of thought or in
the expression. In a purely factual compilation, such as the white pages, the compiler must
show that there was labour and expense required to collect the information and such
labour and expense exceeded a minimum threshold.
It is not the law that where there is only one way of expressing and arranging a factual
compilation, the compilation cannot attract copyright protection. Note the important factor
where one expression is inevitable, is whether the second expression was created
independently of the first. Did the second author expend time and money to compile the
data in the expression or did he or she merely utilise the first person’s endeavour and
labours to produce their own directory. Telstra had expended sufficient expense and labor
to warrant the definition of originality. So Telstra had copyright.
(2) YES. It was an infringement to reproduce, in whatever form, the details of all subscribers.
Desktop had taken, not only quantitatively many pieces of factual information, it also
took Telstra’s whole of universe certification. This term carries the meaning that there is no
selection of the subscribers to be included. The universe of each regional directory is all the
subscribers in the directory, except those with private numbers.
What is the whole-of-universe certification? It is the assurance that the universe has been
thoroughly explored and that all members of it have been captured. It gives value to the list. A
compilation that does not capture all the members is not as valuable as one that can claim to
have captured them all. The making of accessible whole-of-universe compilations is arguably
to be encouraged by the giving of copyright protection on account of the industrious collection,
verification, recording and assembly necessarily undertaken for the purpose. But the universe
which Telstra identified was the names, addresses and telephone numbers (except private
numbers) of all telephone subscribers within defined geographical regions.
Telstra expended substantial labour in collecting, verifying, recording and assembling (albeit
alphabetically) all this data so that it could issue a whole- of-universe listing. In one sense,
Desktop did take Telstra’s form: it accurately reproduced all the individual names, addresses,
telephone numbers and business descriptions, more or less as they individually appeared in
the Directories. In another sense it did not do so: it did not reproduce Telstra’s alphabetical
arrangement. Moreover, in one sense Desktop took ideas: it took the ideas denoted by names,
addresses, telephone numbers and business descriptions. In another sense it did not do so: it
did not take the idea of alphabetical arrangement.
In the case of a factual compilation intended to be a work of utility, infringement must be tested
by reference to the interest which copyright is intended to protect in the particular case. In the
present case, that interest was the labour and expense of gathering together in the one
place the details of all the members of a given universe - all the telephone subscribers in a
region.
What is the notion of substantial? It should not be understood as referring simply to quantity:
it refers to the quality of the part taken. The most important indication of whether a part of a
work is substantial is the originality of the part. It is important to inquire into the “importance
which the taken portion bears in relation to the work as a whole” and to ask whether it was an
“essential or material part of the work.”
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In this case, the substance of the information that has been taken from Telstra’s works (the
directory portion of the directories and the headings that appear in the yellow pages directories
and heading books) has been reproduced in the CD-ROMs. It must be remembered that
copyright is not claimed for each particular entry, because copyright does not subsist in
each individual recorded fact. It is claimed in the whole of the collected data, ordered in a
particular way.
As regards the directories, the significant recorded facts (name, address, telephone number,
and the relevant type of business) are the same, or substantially the same, as they appear in
Telstra’s works. While there are differences, they are in the detail. For example, when displayed
on a screen, the information from the CD-ROM does not appear as columns on a page. But the
information can be retrieved in alphabetical order (by postcode rather than region) and can be
examined in much the same way as one would read a column on a page. The fact that the
alphabetical listings are by postcode and not region, is not a material difference. Nor is the fact
that portions of the advertisements are not reproduced.
As regards the headings, it is true that they appear once only in each yellow pages directory
and that the heading appears with each business entry in the CD-ROMs. This difference is
immaterial. All the headings have been taken, as have all the listings beneath those headings.
The appearance of the headings and the listings in the CD- ROMs is sufficiently similar to
constitute a reproduction. The result is, and I so find, that Telstra has copyright in the white
pages directories, yellow pages directories and headings books, the subject of this
action, and Desktop has infringed that copyright.
27. Roth Greeting Cards v. United Card Co. (1970)

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 7 studio greeting cards.
Roth's claim involves the production and distribution by United of 7 greeting cards which
bear a remarkable resemblance to 7 of Roth's cards on which copyrights had been
granted.
Roth employed a writer to develop the textual material for its cards. On the other hand, during
the period prior to the alleged infringements, United did not have any writers on its
payroll. Most of its greeting cards came into fruition primarily through the activities of United's
president, Mr. Koenig, and its VP, Edward Letwenko.
Letwenko was unable to recall the origin of the ideas for most of United's cards. He
speculated that the gags used may have come from plant personnel, persons in bars, friends
at a party, Koenig, or someone else. He also stated that he visited greeting card stores and gift
shows in order to observe what was going on in the greeting card business. Letwenko
admitted that he may have seen the Roth cards during these visits or that the Roth cards
may have been in his office prior to the time that he did his art work on the United cards.
Issue: Whether there was copyright infringement of the greeting cards.
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Held: YES. In order to be copyrightable, the work must be the original work of the copyright
claimant or of his predecessor in interest. But the originality necessary to support a copyright
merely calls for independent creation, not novelty.
United argues, and we agree, that there was substantial evidence that the textual matter of
each card, considered apart from its arrangement on the cards and its association with
artistic representations, was not original to Roth and therefore not copyrightable.
However, proper analysis of the problem requires that all elements of each card, including
text, arrangement of text, art work, and association between art work and text, be
CONSIDERED AS A WHOLE. Thus, if United had copied only the textual materials, which
were not independently copyrightable, United might have been able to do so with impunity.
The Court held that the Roth cards are both original and copyrightable. Each of Roth's cards,
considered as a whole, represents a tangible expression of an idea and that such
expression was, in totality, created by Roth. As proper subjects of copyright, they are
susceptible to infringement in violation of the Act.
To constitute an infringement under the Act there must be substantial similarity, which
must have been caused by defendant having copied the copyright holder's creation. It appears
to us that in total concept and feel, the cards of United are the same as the copyrighted
cards of Roth.
With the possible exception of one United card, the characters depicted in the art work, the
mood they portrayed, the combination of art work conveying a particular mood with a
particular message, and the arrangement of the words on the greeting card are substantially
the same as in Roth's cards. In several instances the lettering is also very similar.
It is true that each of United's cards employed artwork somewhat different from that used
in the corresponding Roth cards. However, ‘The test of infringement is whether the work is
recognizable by an ordinary observer as having been taken from the copyrighted source.’
The remarkable similarity between the Roth and United cards in issue is apparent to even a
casual observer.
One Roth card has, on its front, a colored drawing of a cute moppet suppressing a smile and,
on the inside, the words ‘i wuv you.’ With the exception of minor variations in color and style,
defendant's card is identical. Likewise, Roth's card entitled ‘I miss you already,’ depicts a
forlorn boy sitting on a curb weeping, with an inside message reading ‘* * * and You Haven't
even Left * * *’ is closely paralleled by United's card with the same caption, showing a forlorn
and weeping man, and with the identical inside message.
Since direct evidence of copying is rarely available, copying may be established by proof
of access and substantial similarity. In the present case there was clear and uncontradicted
testimony establishing United's access to the Roth cards. United brought Roth cards to its
offices. It sent its employees out to gift shows and retail stores where the Roth cards were on
display to observe ‘what the competition was doing.’ These acts result to an inference that it
was United's practice to look at the cards produced by other companies and make similar
cards for sale under the United label.
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These circumstances, together with the marked similarity between the cards on which this suit
was brought, with the possible exception of one card, convince us that each of United's cards
in question, considered as combined compositions of art and text, were in fact copied from the
Roth cards.
DISSENT: I cannot, however, follow the logic of the majority in holding that the
uncopyrightable words and the “imitated but not copied art work” constitutes such total
composition as to be subject to protection under the copyright laws. The majority concludes
that in the overall arrangement of the text, the art work and the association of the art work to
the text, the cards were copyrightable and the copyright infringed.
This conclusion, results in the whole becoming substantially greater than the sum total of its
parts.
The majority relied on Detective Comics, Inc. v. Bruns Publications, Inc. This case, as I read it,
does not even intimate that the whole can exceed the sum total of its parts. It involved an
intimation of the ‘Superman’ image by a rival company. In finding infringement, the ‘Superman’
court emphasized that ‘So far as the pictorial representations and verbal descriptions of
‘Superman’ are not a mere delineation of a benevolent Hercules, but embody an arrangement
of incidents and literary expressions original with the author, they are proper subjects of
copyright and susceptible of infringement because of the monopoly afforded by the Act.'
Moreover, the ‘Superman’case involved the creation of a character, a written dialogue and
description which were clearly protected by copyright law in much the same way that a
dialogue and description found in a novel is protected. The district court in the"‘Superman’ case
found that both the art work and the text materials were copyrightable and that each was
infringed. In the case before us the text taken individually is not copyrightable and the images
used were not copied.
28. Mason v. Montgomery Data, Inc. (MDI) (1992)

Facts: Mason created and published 118 real estate ownership maps that cover all of
Montgomery County. The maps, which display copyright notices, pictorially portray the
location, size, and shape of surveys, land grants, tracts, and various topographical features
within the county. Numbers and words on the maps identify deeds, abstract numbers,
acreage, and owners of the tracts of land. He obtained the information from various sources
like the US Geological Survey (USGS). Mason traced the survey and tract lines onto
transparent overlays, enlarged clean USGS maps and the overlays, added names and other
information to the overlays, and combined the maps and overlays to print the final maps.
Mason registered the copyright for one of the original 118 maps in October 1968. From
1970 to 1980, Mason revised the original maps and eventually published 115 new maps with
copyright notices, for a total of 233 maps.
Landata purchased a set of Mason's maps and reorganized them by cutting and pasting them
into 72 map sheets. This was for the purpose of creating a geographical indexing system
for defendant MDI. On September 17, 1985, Landata asked Mason for permission to use his
maps as part of its system, but Mason denied the request because Landata refused to pay a
licensing fee. Landata then provided its products to MDI without Mason's permission. Using
this system that Landata created, MDI was able to retrieve current ownership and other
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information on any tract. Annually from 1982 to1986, and again in 1989, Landata or MDI
produced new, updated editions of the maps.
Mason filed this suit in September 1988, claiming infringement of his copyrighted maps.
Unfortunately, the court dismissed the case. The court claimed that to extend copyright
protection to the Mason maps, which resulted from facts essentially in the public domain,
would give the plaintiffs a monopoly over the facts. Essentially, the court used the MERGER
DOCTRINE (merging of idea & expression) to rule against Mason.
Issue: Whether Mason’s maps are protected by copyright.
Held: YES. The Copyright Act extends copyright protection to “original works of authorship
fixed in any tangible medium of expression.” The scope of that protection, however, is not
unlimited. “In no case does copyright protection for an original work of authorship extend
to any idea, regardless of the form in which it is described, explained, illustrated, or embodied
in such work.” Thus, while a copyright bars others from copying an author's original
expression of an idea, it does not bar them from using the idea itself. “Others are free to
utilize the ‘idea’ so long as they do not plagiarize its ‘expression.’ ”
In some cases, however, it is so difficult to distinguish between an idea and its expression that
the 2 are said to merge. Thus, when there is essentially only ONE WAY to express an idea,
“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.” By denying protection to an
expression that is merged with its underlying idea, we “prevent an author from monopolizing an
idea merely by copyrighting a few expressions of it.”
To determine whether the MERGER DOCTRINE is applicable in any case, the court must
focus on whether the idea is capable of various modes of expression. The court must first
identify the idea that the work expresses, and then attempt to distinguish that idea from the
author's expression of it. If found that the idea and its expression are inseparable, then the
doctrine applies and the expression will not be protected. In all cases, the guiding
consideration in drawing the line is the preservation of the balance between competition
and protection reflected in the patent and copyright laws.
Here, the record of the case contains copies of maps created by Mason's competitors that
prove beyond dispute that the idea embodied in Mason's maps is capable of a variety of
expressions. Although the competitors' maps and Mason's maps embody the same idea,
they differ in the placement, size, and dimensions of numerous surveys, tracts, and other
features. The record also contains affidavits in which licensed surveyors and experienced
mapmakers explain that the differences between Mason's maps and those of his
competitors are the natural result of each mapmaker's selection of sources, interpretation
of those sources, discretion in reconciling inconsistencies among the sources, and skill and
judgment in depicting the information.
MDI argues that the merger doctrine applies in this case because drawing lines on a public
map is the only way to depict the locations of surveys and boundary lines in Montgomery
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County. But, in this case, it is not in the methods available for depicting an object's
location on a map, but in the ideas that the maps in the two cases embody.
The IDEA here was to bring together the available information on boundaries, landmarks,
and ownership, and to choose locations and an effective pictorial expression of those
locations. That idea and its final expression are separated by Mason's efforts and creativity
that are entitled to protection from competitors. The evidence in this case demonstrates that a
mapmaker who desires to express the idea of depicting the location and ownership of
property in Montgomery County in map form must select information from numerous
sources, reconcile inconsistencies among those sources, and depict the information
according to the mapmaker's skill and judgment. Extending protection to that expression
will not grant Mason a monopoly over the idea, because other mapmakers can express the
same idea differently. The protection that each map receives extends only to its original
expression, and neither the facts nor the idea embodied in the maps is protected.
Originality does not require “novelty, ingenuity, or aesthetic merit.” Instead, originality “means
only that the work was independently created by the author (as opposed to copied from
other works), and that it possesses at least some minimal degree of creativity.” Mason's
maps pass muster under Feist because Masons' selection, coordination, and arrangement of
the information that he depicted are sufficiently creative to qualify his maps as original
“compilations” of facts.
D. Authorship
SOLE AUTHORSHIP
29. Lindsay v. The Wrecked and Abandoned Vessel R.M.S Titanic (1999)
BRIEFS: A person may be the author of a work even if he or she did not physically
participate in the production of that work. Titanic had hired Lindsay to produce
documentary footage detailing the salvaging of artifacts from the wreck of the Titanic. The
filming was done by remote-controlled submarines. When a dispute arose as to Lindsay’s
compensation for directing the filming, Titanic argued that Lindsay owned no copyright to the
footage because he did not personally dive to the wreck to create it. Finding that Lindsay did
own the copyright to the work, the court noted that the author of a work need not create that
work in a literal, physical sense. Rather, Lindsay was the author because he exercised a
high degree of control during the creative process such that the final product duplicates
his conceptions and visions of what the film should look like.
Facts: Lindsay is an independent documentary film maker. RMS Titanic, Inc (RMST) is a US
Corp., Tullock their stockholder, president, and other companies including Discovery Channel
(Discovery).
RMST was awarded exclusive status as salvor-in-possession of the Titanic wreck site
authorizing him to carry salvage operations but with the agreement that all artifacts recovered
during said operations shall be maintained for historical verification, scientific education and
public awareness.
Lindsay had a contract with a British television company which filmed and directed
Explorer’s of the Titanic, a chronicle of RMST’s 3rd salvage operation wherein Lindsay sailed
with RMST for a month to make the documentary. During and after filming, he conceived a
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new film project using high illuminating lighting equipments. He discussed the idea with Tulloch
wherein they both agreed to work together on the venture. Lindsay developed a
comprehensive business plan for “Titanic: A memorial tribute” for approval of RMST’s board of
directors. Lindsay even moved in to RMST’s office for said project wherein he was promised
compensation, profit sharing, etc but the said contract was never executed.
The problem here was that pre-production efforts such as creation of storyboards, drawings,
specific camera angles, shooting sequences, etc reflecting Lindsay’s creative inspiration
and force behind the concept for shooting had already been taught to RMST’s personnel
and discussed. Huge underwater light towers were designed and personally constructed by
Lindsay which was used for the film. 3-4 weeks serving as cinematographer, underwater
videotaping, instructing the photographers for positioning and utilizing the light towers had also
been done by Lindsay, all of which were later used in the film. He was never fully
compensated for his services and RMST et al are now unlawfully profiting from the
exploitation of the film project. Discovery Channel incorporated portions of Lindsay’s footage
into different documentaries it aired.
13 causes of action were raised, 1 is copyright infringement. RMST claim that Lindsay cannot
have copyright over said footage since he did not dive to the ship and did not himself actually
photograph the wreckage.
Issue: Whether or not Lindsay’s copyright over his video/photo compositions of the Titanic
salvage operation was infringed.
Held: YES. The law provides that copyright ownership vests initially in the author of the
work. The AUTHOR is the person who actually creates the work or the person who
translates an idea into a fixed, tangible expression entitled to copyright protection.
For purposes of film and photography, the author is the person who took the pictures but
SC recognized that it may receive copyright protection when they represent original
intellectual conceptions of the author – such as in this case the storyboard, design,
illuminating through the towers, angles of light and shoot, briefing with the cameramen on how
to do it, daily review of the footage to weed out which will be included in the film all done by
Lindsay – existence of those facts of originality, intellectual production, thoughts and
conception make them the proper subject of copyright protection.
The fact that Lindsay did not literally shoot underwater does not defeat his claims of
having authored the illuminated footage. He exercised a high degree of control over the
film operation.
JOINT AUTHORSHIP
30. Erickson v. Trinity Theatre Inc. (1994)
Facts: Ms. Erickson was one of the founders of the trinity theatre and served it in several
capacities, as playwright, artistic director, actress, play director, business manager, and
member of the board of directors Ms. Erickson was paid by Trinity royalties for the
performances of her plays. In 1988 she entered into a 2-year license agreement with Trinity as
playwright and included the payment of royalties for the performance of her plays. As a
playwright she prepared three plays for the company, namely: “Much Ado,” “Time Machine,”
and “Prairie Voices.”
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(Much Ado: a compilation of different scenes and sonnets from the works of Shakespeare;
other actors suggested parts to be included in it; Erickson who had the final decision of
whether or not to include such suggestions.
Time Machine: work began from the time Erickson was still teaching high school drama; such
play involved the development of melodrama and improvisational scenes (ergo, no script);
actors were given a theme which they would interpret themselves; said interpretations were
compiled by Erickson into a script.
Prairie Voices: intended by Ms. Erickson to be developed as a Trinity Production; originally

intended to launch it as a collaborative effort in which the actors would contribute a story to
the play)
After the expiration of the licensing agreement, Trinity stopped paying Ms. Erickson royalties
for the performance of her plays. They had a falling out. When Erickson left trinity in 1991 she
obtained copyright registration for her plays and its videotapes.
When Trinity continued to perform the plays, Erickson sued for copyright infringement.
Erickson argued that she was the author, and therefore controlled the rights to the plays. Trinity
argued that, since the actors made suggestions about the play to Erickson during production
and rehearsals, Trinity was a co-author. The Court describes the setup Erickson had with
the actors/ alleged “co-authors” during her stay as playwright.
Issue: Whether Trinity, as joint author, can be liable to Erickson for copyright infringement.
Held: YES. Trinity is not a joint author. Under copyright law, a joint work (aka one with
multiple authors) can be licensed by any one of the authors, even over the objections of
the others. Each author as co-owner has the right to use or to license the use of the work,
subject to an accounting to the other co-owners for any profits.
Copyright Act defines a “joint work” as a work prepared by 2 or more authors with the
intention that their contributions be merged into inseparable or interdependent parts of a
unitary whole. The problem with this definition is that neither the Act nor legislative history
defines “inseparable or “interdependent.” The touchstone here is the intention, at the time
the writing is done, that the parts be absorbed or combined into an integrated unit.
This ambiguity presents analytical problems in cases such as this one, in which the parties
have collaborated in some sense but dispute whether there was a mutual intent to create a
joint work. In resolving this ambiguity, we believe that it is important to note, at the outset, that
the statute itself requires that there be an intent to create a joint work. Therefore, reliance
on collaboration alone, as Trinity suggests, would be incompatible with the clear statutory
mandate.
The Appellate Court considered two approaches for determining if someone was a co-
author:
The de minimis test, where everyone who contributed even a tiny bit to the whole is
considered a co-author. (Nimmer)
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Here, for example, if 2 authors collaborate, with one contributing only uncopyrightable plot
ideas and another incorporating those ideas into a completed literary expression, the 2 authors
should be regarded as joint authors of the resulting work.
This position is not supported because it is inconsistent with the fact that ideas and concepts,
standing alone, should not be copyrightable.
The copyrightable subject matter test, which says that a contributor is only a co-author if
that person's contribution would be theoretically copyrightable by itself (Goldstein).
Furthermore, the parties must have intended to be joint authors at the time the work was
created. The Court found that the copyrightable subject matter test was the proper test to use.
The Court found that the contributions of the actors was not enough to be independently
copyrightable, therefore they could not be considered co-authors of the plays. Judgment
of the district court is affirmed.
31. Aalmuhammed v. Lee (1999)

BRIEFS: Where many individuals contribute creative elements to a work, the author of that
work is the individual who superintends the creation of the work. Lee was the co-writer,
co-producer, and director of a movie on the life of Malcolm X. While producing the movie, Lee
hired Aalmuhammed as a consultant on the subject of Malcolm X. Aalmuhammed’s made
“extensive script revision,” “directed actors on the set,” “created some new scenes with new
characters,” and “edited parts of the film during post-production.” While acknowledging that
Aalmuhammed’s contributions were “extremely helpful,” the court found that Aalmuhammed
was not a coauthor of the movie because Lee retained “artistic control.”
Facts: In 1991, Warner Brothers contracted with Spike Lee and others to make the movie
Malcolm X, based on a book. Lee co-wrote the screenplay, directed, and co-produced the
movie, which starred Denzel Washington as Malcolm X. Denzel asked Aalmuhammed to
assist him in his preparations, as Aalmuhammed was a Malcolm X expert, having written,
directed, and produced a Malcolm X documentary prior to the movie.
Aalmuhammed’s contributions: reviewed the script, suggested revisions and additions of

entire scenes and dialogue, made sure the religious and historical aspects of Islam were
portrayed accurately, acted as a translator (they worked in Egypt and he was the only one who
knew Arabic), and edited parts of the movie. Aalmuhammed never had a written contract with
Warner Bros., Spike Lee, or Lee’s production companies, but he expected to be paid for his
services. He ultimately received $25,000 from Lee and $100,000 from Denzel.
Before the movie’s release, Aalmuhammed asked for a writing credit as a co-writer of the film,
but was turned down. Instead, upon the film’s release, he was credited only as an “Islamic
Technical Consultant.” A few years later, Aalmuhammed applied for a copyright with the US
Copyright Office, which was granted but with a reservation because it was in conflict with
previous registrations.
After the grant of copyright registration, Aalmuhammed filed a complaint against all involved in
the movie for declaratory relief and accounting under the Copyright Act (and other actions for
breach of contract, quantum meruit, unjust enrichment, and unfair competition).
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Aalmuhammed claimed that the movie was a “joint work” of which he was an author,
thus making him a co-owner of the copyright of the entire movie.
Issue: Whether Aalmuhammed is to be considered as co-author of Malcom X.
Held: NO. Copyright Act does not define “Author,” but defines “joint work” as “a work
prepared by two or more authors with the intention that their contributions be merged
into inseparable or interdependent parts of a unitary whole.” The statutory language
establishes that for a work to be considered joint, there must be (1) a copyrightable work, (2)
two or more authors, and (3) the authors must intend their contributions be merged into
inseparable or interdependent parts of a unitary whole. A joint work, moreover, requires
each author to make an independently copyrightable contribution to the disputed work
.
All persons involved intended that Aalmuhammed's contributions would be merged into
interdependent parts of the movie as a unitary whole. Aalmuhammed maintains that he has
shown a genuine issue of fact for each element of a “joint work.” But there is another element
to a “joint work.” A “joint work” includes “two or more authors.” Aalmuhammed established
that he contributed substantially to the film, but not that he was one of its “authors.”
Authorship is required under the statutory definition of a joint work, and that authorship is not
the same thing as making a valuable and copyrightable contribution. A contributor may be
deemed the “author” of that expression, but only for the purpose of determining whether it is
independently copyrightable or not. The word “author” is taken from the traditional activity of
one person sitting at a desk with a pen and writing something for publication, which makes the
application of the term “author” easy for one writing a novel. Who, in the absence of contract,
can be considered an author of a movie? The word is traditionally used to mean the originator
or the person who causes something to come into being. It can refer to the producer (who
raises the money), the editor, the director (under the “auteur” theory), the screenplay writer, the
star, or the cinematographer. In Burrow-Giles, the problem of defining “author” in new media
was tackled. It was stated that author involves originating, making, producing, as the inventive
or master mind, the thing which is to be protected; the man who really represents, creates, or
gives effect to the idea, fancy, or imagination; he to whom anything owes its origin, originator,
maker, one who completes a work of science or literature. “Author” requires more than a
minimal creative or original contribution to the work. He is the person to whom the work
owes its origin and who superintended the whole work, the “master mind.”
A creative contribution does not suffice to establish authorship of the movie, as a

contribution of independently copyrightable material to a work intended to be an
inseparable whole does not suffice to establish authorship of a joint work. The Burrow-
Giles definition of “author,” in the absence of a contract to the contrary, would generally limit
authorship to someone at the top of the credits, sometimes the producer, director, star, or
screenwriter — someone who has artistic control. A person claiming to be an author of a
joint work must prove that both parties intended each other to be joint authors. In the
absence of contract, several factors may be considered, including who “superintends”
the work by exercising control or the “inventive or master mind” who gives effect to the
idea, the objective manifestations of shared intent to be co-authors, and the fact that the
share of each in the work’s success cannot be appraised.
43 Roco 2013
Control in many cases will be the most important factor. The factors listed cannot be reduced
to a rigid formula, because the creative relationships to which they apply vary too much. In this
case, Aalmuhammed did not at any time have superintendence of the work; Warner Bros.
and Spike Lee controlled it. Aalmuhammed lacked control of the work, and absence of
control is strong evidence of the absence of co-authorship.
WORKS MADE FOR HIRE

32. Community for Creative Non-Violence v. Reid (1989)
BRIEFS: In deciding whether a particular work was made for hire, the reviewing court should
first determine whether the creator of the work was an employee of the hiring party under
common-law principles of agency. Once this determination has been made, the reviewing
court should then analyze the work’s authorship under the appropriate paragraph of § 101.
The Community for Creative Non-Violence (CCNV) conceived of a crèche-style structure

depicting a homeless family huddled on the street. CCNV hired Reid to create the sculpture,
and the parties engaged in preliminary discussions concerning the sculpture’s basic design
and the material from which it would be made. While Reid was creating the sculpture, he
employed assistants, who were paid by CCNV. A dispute then arose as to whether the
sculpture should be taken on a touring exhibit. The parties disagreed as to who retained the
final say over the disposition of the sculpture. CCNV contended that the sculpture was a work
for hire, and Reid claimed the contrary. The court observed since sculpture does not fit
within any of the 9 categories of “specially ordered or commissioned works” enumerated
in the law and there was no written agreement between the parties as to Reid’s status, “[t]he
dispositive inquiry in this case [ ] is whether [the sculpture] is ‘a work prepared by an employee
within the scope of his or her employment.’ After reviewing the factors tending to establish an
employer–employee relationship, the court found that Reid was not an employee of CCNV.
The sculpture was therefore not a work for hire made for CCNV, though the court observed
that CCNV might qualify as a co-author.
Facts: CCNV decided to participate in the annual Christmas time Pageant of Peace in
Washington, D.C., by sponsoring a display to dramatize the plight of the homeless. Snyder (a
CCNV trustee) and fellow CCNV members conceived the idea for the nature of the display: a
sculpture of a modern nativity scene. They also settled upon a title for the work—‘Third World
America’—and a legend for the pedestal: ‘and still there is no room at the inn.’
Snyder was referred to James Earl Reid, a sculptor. Both parties agreed that the project would
cost no more than $15,000, not including Reid's services, which he offered to donate. The
parties did not sign a written agreement. Neither party mentioned copyright. At Snyder's
request, Reid sent CCNV a sketch of a proposed sculpture. Reid testified that Snyder asked for
the sketch to use in raising funds for the sculpture. Snyder testified that it was also for his
approval.
Reid worked exclusively on the statue, assisted at various times by a dozen different people
who were paid with funds provided in installments by CCNV. On a number of occasions, CCNV
members visited Reid to check on his progress and to coordinate CCNV's construction of the
base. Days after the agreed upon date, Reid delivered the completed statue to Washington.
The statue remained on display for a month.
44 Roco 2013
In late January 1986, CCNV members returned it to Reid's studio for minor repairs. Several
weeks later, Snyder began making plans to take the statue on a tour of several cities to
raise money for the homeless. Reid objected, contending that the material was not strong
enough to withstand the ambitious itinerary. He urged CCNV to cast the statue in bronze or to
create a master mold. Snyder declined to spend more of CCNV's money on the project.
In March 1986, Snyder asked Reid to return the sculpture. Reid refused. He then filed a
certificate of copyright registration for the sculpture in his name and announced plans to take
the sculpture on a more modest tour than the one CCNV had proposed. Snyder, acting in his
capacity as CCNV's trustee, immediately filed a competing certificate of copyright registration.
Snyder and CCNV then commenced this action against Reid and his photographer for
determination of copyright ownership. District Court declared that it was a “work made for
hire” under § 101 of the Copyright Act and that Snyder, as trustee for CCNV, was the exclusive
owner of the copyright in the sculpture. CA reversed.
Issue: Whether the work falls under “work-for-hire” such that CCNV can be deemed the author
of the work for copyright purposes.
Held: NO. The sculpture was not a work made for hire. CCNV was not the author of the
sculpture. Therefore, CCNV is not entitled to the copyright. In cases of works made for hire,
“the employer or other person for whom the work was prepared is considered the
author” and owns the copyright, unless there is a written agreement to the contrary.
Classifying a work as “made for hire” determines not only the initial ownership of its copyright,
but also the copyright's duration, and the owners' renewal rights, termination rights, and right
to import certain goods bearing the copyright.
Under the law, a work is “for hire” under any of the ff: (1) work prepared by an employee within
the scope of employment; or (2) a work specially ordered or commissioned.
To determine whether a work is for hire under the Act, a court first should ascertain, using
principles of general common law of agency, whether the work was prepared by an
employee or an independent contractor. After making this determination, the court can
apply the appropriate subsection.
The hiring party's right to control the product simply is not determinative. In determining
whether a hired party is an employee under the general common law of agency, we consider
the hiring party's right to control the manner and means by which the product is accomplished.
Factors relevant to this inquiry are: (1) the skill required; (2) source of the instrumentalities
and tools; (3) the location of the work; (4) the duration of the relationship between parties;
(5) whether the hiring party has the right to assign additional projects to the hired party; (6)
the extent of the hired party’s discretion over when and how long to work; (7) the method
of payment; (8) the hired party’s role in hiring and paying assistants; (9) whether the work
is part of the regular business of the hiring party; (10) whether the hiring party is in
business; (11) the provision of employee benefits; and (12) the tax treatment of the hired
party.
Since these factors were absent, the Court held that Reid was not an employee of CCNV but
an independent contractor. True, CCNV members directed enough of Reid's work to ensure
45 Roco 2013
that he produced a sculpture that met their specifications. But the extent of control the hiring
party exercises over the details of the product is not dispositive.
All the other circumstances weigh heavily against finding an employment relationship. Reid
is a sculptor, a skilled occupation. Reid supplied his own tools. He worked in his own studio in
Baltimore, making daily supervision of his activities from Washington practicably impossible.
Reid was retained for less than 2 months, a relatively short period of time. During and after this
time, CCNV had no right to assign additional projects to Reid. Apart from the deadline for
completing the sculpture, Reid had absolute freedom to decide when and how long to work.
CCNV paid Reid $15,000, a sum dependent on completion of a specific job, a method by
which independent contractors are often compensated.
Also, under the law, “Sculpture” does not fit within any of the categories of “specially ordered
or commissioned” works.
CCNV nevertheless may be a joint author of the sculpture if, on remand, the District
Court determines that CCNV and Reid prepared the work “with the intention that their
contributions be merged into inseparable or interdependent parts of a unitary whole.” In
that case, CCNV and Reid would be co-owners of the copyright in the work.
33. Aymes v. Bonelli (1992)

Facts: Bonelli is the president and CEO of Island. Island operated a chain of retail stores selling
swimming pools and related supplies. In May 1980, Aymes, a Cornell graduate, was hired by
Bonelli to work as a computer programmer where he worked until 1982. During that period,
Aymes created a series of programs called “CSALIB” under the general direction of Bonelli
who was not a programmer. The program was 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 Bonelli and Aymes assigning ownership
or copyright of CSALIB. Aymes does contend, however, that Bonelli made him an oral
promise that CSALIB would only be used at one computer in one Island office.
Aymes did most of his programming at the Island office, where he had access to Island's
computer hardware. He generally worked alone, without assistants or co-workers, and enjoyed
considerable autonomy in creating CSALIB. This autonomy was restricted only by Bonelli who
directed and instructed Aymes on what he wanted from the program.
Although Aymes worked semi-regular hours, he was not always paid by the hour and on
occasion presented his bills to Bonelli as invoices. At times, Aymes would be paid by the
project and given bonuses for finishing the project on time. He never received any health or
other insurance benefits from Island. Also, Island never paid an employer's percentage of
Aymes's payroll taxes and never withheld any of his salary for federal or state taxes. In fact,
Aymes was given an Internal Revenue Service Non-Employee Compensation form instead of
the standard employee.
Aymes left Island in September 1982 when Bonelli unilaterally decided to cut Aymes's hours.
At the time Aymes left, Island owed him $14,560 in wages. Aymes also requested payment for
multisite use of CSALIB. When he became persistent in his demands for compensation,
however, Bonelli insisted that he sign a release for his rights to CSALIB in order to receive the
back earnings. Aymes refused to sign and was not paid. As such, he registered CSALIB in his
46 Roco 2013
own name with the US Copyright Office. Then, he filed a complaint against Bonelli for
copyright infringement.
Issue: Whether Bonelli infringed on Aymes’ copyright over the program.
Held: YES. The Act defines a work made for hire as: “(1) a work prepared by an employee
within the scope of his or her employment; or (2) a work specially ordered or commissioned
for use if the parties expressly agree in a written instrument signed by them that the work
shall be considered a work made for hire.”
Aymes and Bonelli never signed a written agreement assigning ownership rights in
CSALIB. We must therefore consider whether the program was a work prepared by Aymes as
an employee within the scope of his employment. In determining whether a hired party is an
employee under the general common law of agency, we consider the hiring party's right to
control the manner and means by which the product is accomplished. Among the other
factors relevant to this inquiry are the skills required, the source of the instrumentalities and
tools, the location of the work; the duration of the relationship between the parties, whether
the hiring party has the right to assign additional projects to the hired party; the extent of the
hired party's discretion over when and how long to work; the method of payment; the hired
party's role in hiring and paying assistants; whether the work is part of the regular
business of the hiring party; whether the hiring party is in business; the provision of employee
benefits, and the tax treatment of the hired party.
RIGHT TO CONTROL: It is clear from the record that Bonelli and Island had the right to control
the manner in which CSALIB was created. Aymes disputed Bonelli's purported skill at
programming, but even without such knowledge Bonelli was capable of directing Aymes on
CSALIB's necessary function. Aymes was not working entirely alone. He received
significant input from Bonelli in programming CSALIB, and worked under programming
limitations placed by Bonelli. Consequently, this factor weighs heavily in favor of finding that
Aymes was an employee.
LEVEL of SKILL: Aymes's work required far more than merely transcribing Bonelli's
instructions. Rather, his programming demanded that he use skills developed while a
graduate student at Cornell and through his experience working at a family run company. Other
courts that have addressed the level of skill necessary to indicate that a party is an
independent contractor have held architects, photographers, graphic artists, drafters, and
indeed computer programmers to be highly-skilled independent contractors. As such, this
weighs heavily in Aymes’ favor.
EMPLOYEE BENEFITS & TAX TREATMENT: Aymes was not provided with health,
unemployment, or life insurance benefits. Similarly, Island did not pay a share of Aymes's
social security taxes and did not withhold federal or state income taxes. The failure of Island
to extend Aymes any employment benefits or to pay any of his payroll taxes is highly
indicative that Aymes was considered an outside independent contractor by Island. These
two factors are given even greater weight because they are undisputed in this case. During the
ten years in which this case has been litigated, all the other issues have been hotly contested.
But for purposes of benefits and taxes, Island definitely and unequivocably chose not to treat
Aymes as an employee.
47 Roco 2013
RIGHT TO ASSIGN OTHER PROJECTS: Bonelli had the right to and did assign Aymes other
projects in addition to the creation of CSALIB. This is fairly strong evidence that Aymes was an
employee, since independent contractors are typically hired only for particular projects.
However, this factor carries less weight than those evaluated above, because the
delegation of additional projects to Aymes is not inconsistent with the idea that he was Island's
independent trouble shooter who might be asked to intervene as computer problems arose.
Examining the factors for each side in terms of their importance, we conclude that the only
major factor strongly supporting Island is that it directed the creation of the program.
Supporting Aymes's argument that he was an independent contractor, however, are several
important factors — his skill, and the tax and benefit factors — that outweigh the elements
supporting Island.
On balance, application of the Reid test requires that we find Aymes to be an independent
contractor when he was creating CSALIB for Island. Consequently, we hold that CSALIB is not
a work for hire. Aymes therefore owns the copyright as author of the program.
34. Roeslin v. District of Columbia (1995)

Facts: Roeslin was employed by Department of Employment Services of District of Columbia
as a labor economist. He had no programming skills at that time nor was he hired for such
skill. His tasks involved: (1) Improve employer response rate to CES survey; (2) Expand CES
sample size; (3) Develop industry and occupational employment projections.
DOES used a manual system in collating these data wherein employees collect information
from returned CES survey and records them in office record cards. District anticipated future
development of the Automated Current Employment Statistics (ACES). Roeslin used
computers to do his work but it did not involve programming and he assisted also in
transferring data through the use of computer software applications existing.
During a CES conference, Roeslin was motivated to create the DC-790 and he informed his
supervisor that this is possible using a PC based system to create the surveys. His supervisor
discouraged him saying it’s not feasible nor desirable and he would be too busy with other
duties and they would eventually transition to ACES. Roeslin still decided to pursue this
project on his own time, buying his own PC, softwares and books to learn how to create the
system.
He wanted to prove it could be done and create job opportunities for himself but his
supervisor told him that this program would become “public domain” which he meant as
something that would belong to District but Roeslin interpreted as something not owned by
anybody and free for all. During the entire development no supervision, assistance,
compensation was offered by District to Roeslin. He did it all on his own.
He was eventually able to create it and tried it in their office. It was a success and everybody
wanted to use it so he made a manual and conducted demos to promote the said
program. He received good feedback and was up for promotion. All the while he relied on his
supervisor’s statement that it was public domain, but later on found out that District is
claiming proprietary interest over his program which prompted him to confront his
48 Roco 2013
supervisor saying that he should be given credit and if he be promoted and recognized
he would allow District to use it freely.
He registered DC-790 and a copyright notice was placed on the initial screen of the said
program. He informed District and the Mayor’s office of his claim and demanded that they
stop using it. He was just ignored by district who continued to use it, installed it in many
computers and never applied for copyright under its name. He informed District that he will not
render any modification and programming connected to his copyright claim, he was transferred
to a computer programmer analyst but never worked in connection with DC-790 even when it
became operational due to employee error. Eventually ACES was implemented and paid
system cost composed of programmer’s salaries and processing charges which an employee
of DOES admitted not being paid for the use of DC-790.
Issue: Whether or not Roeslin is the author of DC-790.
Held: YES. Roeslin is the owner because the program was not made for hire.
When a plaintiff has a copyright registration, burden is on defendant to prove that the
work is a work made for hire. To prove copyrighted work is a work made for hire, employer
must prove that employee’s conduct in making work is within scope of employment, occurs
substantially within authorized time and space limits, actuated for purpose of serving the
employer.
Developing computer software was not the kind of work that labor economist was
employed to perform, for purpose of determining whether program written by employee to
receive, process, and transmit survey results was a work made for hire; there was no
reference in his job description to computer programming and he was not hired for that
skill.
The court held that to determine whether a particular conduct was incidental to employee’s
employment, they may consider factors as whether activity was the type of activities commonly
done by persons employed in the same position. It was shown that labor economist have
nothing to do with software programming. Further, the entire system was developed
using Roeslin’s own resources and funds and during his own time outside work (3000
hrs). He was never motivated to create computer program for purpose of serving his employer
but to create for himself a job opportunity and prove it could be done.
His failure to assert a proprietary interest in the computer program did not defeat his action for
copyright infringement against employer where his failure was due to employer’s
representation that employee would have no proprietary interest in the program.
49 Roco 2013

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Copyright and Related Rights Atty.

PROTECTION of INTELLECTUAL PROPERTY and the CONSTITUTION

Sec 202.7 of the IP Code provides 2 instances wherein there is broadcasting:

The retransmission of ABS-CBN’s signals by PMSI — which functions essentially as a cable

II. SUBJECT MATTER of COPYRIGHT LAW

4. Bleistein v. Donaldson Lithographing Co. (DLC) (1903)

5. Alfred Bell & Co. v. Catalda Fine Arts, Inc. (1951)

Issue: (1) Whether the mezzotint of Alfred is copyrightable

7. Meshwerks Inc v. Toyota Motor Sales USA (2008)

One possesses no copyright interest in reproductions, when these reproductions do nothing

8. Mannion v. Coors Brewing Company (2006)

9. Ching Kian Chuan v. CA (2001)

Issue: Whether or not Ong has a better right over Tan.

10. Sambar v. Levi Strauss (2002)

Feist Publications, Inc. (Feist) is a publishing company specializing in area-wide telephone

The US Constitution mandates originality as a prerequisite for copyright protection —

B. When Copyright Vests

13. Filipino Society of Composers v. Benjamin Tan (1987)

14. Unilever Phils. v. CA (2006)

Contrary to Unilever’s contention, the intellectual creator's exercise and enjoyment of

The claim to an invention or discovery of an art or manufacture must be subjected to the

16. A.A. Hoehling v. Universal City Studios (1980)

Issue: Whether or not Universal is liable to Hoehling for copyright infringement.

A verbatim reproduction of another work, of course, even in the realm of nonfiction, is

17. American Dental Association v. Delta Dental (1997)

Issue: Whether taxonomy is copyrightable.

18. Joaquin v. Drilon (1999)

Issue: (1) Whether format/mechanics of a show is entitled to copyright protection.

19. Pearl & Dean v. Shoemart (2003)

20. Ching v. Salinas (2005)

Issue: Whether the Utility Models are copyrightable

DERIVATIVE WORKS and COMPILATIONS

Snyder doing business as “J.S.N.Y,” obtained a registration of copyright on a plastic

Issue: Whether there was copyright infringement.

Nor can the requirement of originality be satisfied simply by the demonstration of

Genesis is in the business of marketing promotional and advertising devices to various

24. Feist Publications v. Rural Telephone (1991)

25. Tele-Direct Publications v. American Business Information (1997)

commonplace character as to be unworthy of copyright protection. Certain compilations

26. Desktop Marketing Systems v. Telstra (2002)

27. Roth Greeting Cards v. United Card Co. (1970)

Issue: Whether there was copyright infringement of the greeting cards.

28. Mason v. Montgomery Data, Inc. (MDI) (1992)

Issue: Whether Mason’s maps are protected by copyright.

Prairie Voices: intended by Ms. Erickson to be developed as a Trinity Production; originally

31. Aalmuhammed v. Lee (1999)

Aalmuhammed’s contributions: reviewed the script, suggested revisions and additions of

Issue: Whether Aalmuhammed is to be considered as co-author of Malcom X.

A creative contribution does not suffice to establish authorship of the movie, as a

WORKS MADE FOR HIRE

The Community for Creative Non-Violence (CCNV) conceived of a crèche-style structure

33. Aymes v. Bonelli (1992)

Issue: Whether Bonelli infringed on Aymes’ copyright over the program.

34. Roeslin v. District of Columbia (1995)

Issue: Whether or not Roeslin is the author of DC-790.

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