ULS College of Law
INTELLECTUAL PROPERTY LAW
1st Semester, AY 2021-2022
JOSEPH JOHN S. RONQUILLO
Topic Case Case Title Relevant Facts
No.
COPYRIGHT 54 Juan v. Juan, GR The song entitled "Lavandera Ko"
221732, Aug 23,
2017
Copyright Respondent Roberto U. Juan
distinguished claimed that he began using the
from trademark name and mark "Lavandera Ko"
in his
laundry business on July 4, 1994.
He then opened his laundry store
at No. 119 Alfaro St., Salcedo St.,
Makati City in 1995. Thereafter,
on March 17, 1997, the National
Library issued to him a certificate
of copyright over said name and
mark. Over the years, the laundry
business expanded with numerous
franchise outlets in Metro Manila
and other provinces. Respondent
Roberto then formed a
corporation to handle the said
business, hence, Laundromatic
Corporation (Laundromatic) was
incorporated in 1997, while
Legal Concepts / Issues
1) Is the copyright the same as the
trade name?
2) What is a “mark”?
Ruling / Doctrine Reference
1) NO. The trial court’s ruling is erroneous https://
as it confused trade or business name with www.chanroble
copyright. s.com/cralaw/
2017augustdecis
The law on trademarks, service marks and
ions.php?id=607
trade names are found under Part III of
Republic Act (R.A.)
No. 8293 or the Intellectual Code of the
Philippines, while Part IV of the same law
governs copyrights.
2) "Lavandera Ko," the mark in question in
this case is being used as a trade name or
specifically, a service name since the
business in which it pertains involves the
rendering of laundry services. Under Section
121.1 of R.A. No. 8293, "mark" is defined as
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. As such, the
basic contention of the parties is who has the
better right to use "Lavandera Ko" as a
service name because Section 165.213 of the
said law, guarantees the protection of trade
names and business names even prior to or
"Lavandera Ko" was registered as without registration, against any unlawful act
a business name on November 13, committed by third parties. A cause of action
arises when the subsequent use of any third
1998 with the Department of
party of such trade name or business name
Trade and Industry (DTI).
would likely mislead the public as such act is
Thereafter, respondent Roberto
considered unlawful.
discovered

3) Hence, the RTC erred in denying the

that his brother, petitioner
parties the proper determination as to who
Fernando was able to register the
has the ultimate
name and mark "Lavandera Ko"
with right to use the said trade name by ruling that
neither of them has the right or a cause of
the Intellectual Property Office
action since "Lavandera Ko" is protected by
(IPO) on October 18, 2001, the
a copyright.
registration of which was filed on
June By their very definitions, copyright and trade
or service name are different. Copyright is
5, 1995. Respondent Roberto also
the right of
alleged that a certain Juliano
Nacino (Juliano) had been writing literary property as recognized and
the sanctioned by positive law. An intangible,
incorporeal right
franchisees of the former
threatening them with criminal granted by statute to the author or originator
and civil cases if they did not stop of certain literary or artistic productions,
using the whereby he
mark and name "Lavandera Ko." is invested, for a limited period, with the sole
It was found out by respondent and exclusive privilege of multiplying copies
3) What is a copy right?
Roberto that petitioner Fernando of the same
had been selling his own and publishing and selling them.
franchises.
Thus, respondent Roberto filed a
petition for injunction, unfair 4) Trade name, on the other hand, is any
competition, infringement of designation which (a) is adopted and used by
person to denominate goods which he
copyright, cancellation of
markets, or services which he renders, or
trademark and name with/and
business which he conducts, or has come to
prayer for TRO and Preliminary
be so used by other, and (b) through its
Injunction
association with such goods, services or
with the Regional Trial Court business, has acquired a special significance
(RTC) and the case was raffled as the name thereof, and (c) the use of which
off at Branch 149, Makati City. for the purpose stated in (a) is prohibited
neither by legislative enactment nor by
The RTC issued a writ of otherwise defined public policy.
preliminary injunction against
petitioner Fernando in Order
dated June 10,
5) As such, "Lavandera Ko," being a musical
2004. On July 21, 2008, due to composition with words is protected under
the death of respondent Roberto, the copyright law (Part IV, R.A. No. 8293)
the latter was substituted by his and not under the trademarks, service marks
son, and trade names law (Part III, R.A. No.
8293).
Christian Juan (Christian).
The RTC, in dismissing the
petition, ruled that neither of the 6) In connection therewith, the RTC's basis
parties are entitled to use the trade or source, an article appearing in a website,
name in ruling that the song entitled "Lavandera
Ko" is protected by a copyright, cannot be
"Lavandera Ko" because the considered a subject of judicial notice that
copyright of "Lavandera Ko", a does not need further authentication or
song composed in 1942 by verification. Judicial notice is the cognizance
4) What is a trade name?
Santiago S. of certain facts that judges may properly take
Suarez belongs to the latter. and act on without proof because these facts
are already known to them. Put differently, it
CA dismissed the appeal based on is the assumption by a court of a fact without
technical grounds

5) Is the song Lavender Ko protected
by a copy right?
6) What is a Judicial Notice?
need of further traditional evidentiary
support. The principle is based on
convenience and expediency in securing and
introducing evidence on matters which are
not ordinarily capable of dispute and are not
bona fide disputed.
7) NONE – The article in the website cited
by the RTC patently lacks a requisite for it to
be of judicial notice to the court because
such article is not well and authoritatively
settled and is doubtful or uncertain. It must
be remembered that some articles appearing
in the internet or on websites are easily
edited
and their sources are unverifiable, thus, sole
reliance on those articles is greatly
discouraged.
Considering, therefore, the above premise,
this Court deems it proper to remand the case
to the RTC
for its proper disposition since this Court
cannot, based on the records and some of the
issues raised
by both parties such as the cancellation of
petitioner's certificate of registration issued
by the
Intellectual Property Office, make a factual
determination as to who has the better right
to use the trade/business/service name,
 "Lavandera Ko.

Doctrine:
By their very definitions, copyright and trade
or service name are different.

Copyright is the right of literary property as

recognized and sanctioned by positive law.
An intangible, incorporeal right granted by
statute to the author or originator of certain
literary or artistic productions, whereby he is
invested, for a limited period, with the sole
and exclusive privilege of multiplying copies
of the same and publishing and selling them.

Trade name, on the other hand, is any

designation which
a) is adopted and used by person to
denominate goods which he
markets, or services which he
renders, or business which he
conducts, or has come to be so used
by other, and
b) through its association with such
7) Who has the better right to use goods, services or business, has
“Lavender Ko”? acquired a special significance as
the name thereof, and
c) the use of which for the purpose
stated in (a) is prohibited neither by
 legislative enactment nor by
otherwise defined public policy.

As such, "Lavandera Ko," being a musical

composition with words is protected under
the copyright law (Part IV, R.A. No. 8293)
and not under the trademarks, service marks
and trade names law (Part III, R.A. No.
8293).

Copyrights 55 Microsoft Petitioner Microsoft Corporation 1. What is Copyright 1. Accordingly, the commission of any of https://
Corporation vs. is the copyright and trademark Infringement? the acts mentioned in Section 5 of Presidential www.chanrobl
Manansala owner of all rights relating to all Decree No. 49 without the copyright owner’s es.com/
versions and editions of Microsoft consent constituted actionable copyright cralaw/
G.R. No. 166391. software (computer programs) such infringement. In Columbia Pictures, Inc. v.
2015octoberde
October 21, 2015 as, but not limited to, MS-DOS, Court of Appeals, the Court has emphatically
Microsoft Encarta, Microsoft declared: Infringement of a copyright is a
cisions.php?
Windows, Microsoft Word, trespass on a private domain owned and id=998
Microsoft Excel, Microsoft Access, occupied by the owner of the copyright, and,
Microsoft Works, Microsoft therefore, protected by law, and infringement of
Powerpoint, Microsoft Office, copyright, or piracy, which is a synonymous
Microsoft Flight Simulator and term in this connection, consists in the doing by
Microsoft FoxPro, among others, any person, without the consent of the owner of
and their user’s guide/manuals. the copyright, of anything the sole right to do
which is conferred by statute on the owner of the
Private Respondent-Rolando copyright.
Manansala is doing business under
the name of DATAMAN
TRADING COMPANY and/or
COMIC ALLEY. Private 2. Yes. Presidential Decree No. 49 thereby
Respondent Manansala, without already acknowledged the existence of computer
authority from petitioner, was programs as works or creations protected by
engaged in distributing and selling copyright. To hold, as the CA incorrectly did,
Microsoft computer software that the legislative intent was to require that the
programs. computer programs be first photographed,
photoengraved, or pictorially illustrated as a
Mr. John Benedict A. Sacriz, a condition for the commission of copyright

private investigator accompanied by
an agent from the NBI was able to
purchase six (6) CD-ROMs
containing various computer
programs to petitioner. As a result
of the test-purchase, the agent from
the NBI applied for a search warrant
to search the premises of the private
respondent. A Search Warrant was
issued against the premises of the
private respondent and was served
on the private respondent’s premises
and yielded several illegal copies of
Microsoft programs. Subsequently,
petitioner, through Atty. Teodoro
Kalaw IV filed an Affidavit-
Complaint in the DOJ based on the
results of the search and seizure
operation conducted on private
respondent’s premises.
The public respondent State
Prosecutor dismissed the charge
against private respondent stating
that ‘The evidence is extant in the
records to show that respondent is
selling Microsoft computer software
programs bearing the copyrights and
trademarks owned by Microsoft
Corporation. There is, however, no
proof that respondent was the one
who really printed or copied the
products of complainant for sale in
his store.” The CA rendered the
assailed decision affirming the
dismissal by the DOJ.
2. Does PD No. 49 acknowledge
the existence of computer programs
as works or creations protected by
copyright?
infringement invites ridicule. Such interpretation
of Section 5(a) of Presidential Decree No. 49
defied logic and common sense because it
focused on terms like “copy,” “multiply,” and
“sell,” but blatantly ignored terms like
“photographs,” “photo-engravings,” and
“pictorial illustrations.” Had the CA taken the
latter words into proper account, it would have
quickly seen the absurdity of its interpretation.
3. Yes. The mere sale of the illicit copies of
the software programs was enough by itself to
show the existence of probable cause for
copyright infringement. There was no need for
the petitioner to still prove who copied,
replicated or reproduced the software programs.
Indeed, the public prosecutor and the DOJ
gravely abused their discretion in dismissing the
petitioner’s charge for copyright infringement
against the respondents for lack of evidence.
There was grave abuse of discretion because the
public prosecutor and the DOJ acted
whimsically or arbitrarily in disregarding the
settled jurisprudential rules on finding the
existence of probable cause to charge the
offender in court. Accordingly, the CA erred in
upholding the dismissal by the DOJ of the
petitioner’s petition for review.
4. Section 5 of Presidential Decree No. 49
specifically defined copyright as an exclusive
right in the following manner:
Section 5. Copyright shall consist in the
 exclusive right:

(A) To print, reprint, publish, copy,

distribute, multiply, sell, and make
photographs, photo-engravings, and pictorial
illustrations of the works;

(B) To make any translation or other version

or extracts or arrangements or adaptations
thereof; to dramatize it if it be a nondramatic
work; to convert it into a nondramatic work
if it be a drama; to complete or execute if it
be a model or design;

3. Does the mere selling of pirated (C) To exhibit, perform, represent, produce,
computer software constituted or reproduce, the work in any manner or by
any method whatever for profit or otherwise;
copyright infringement.
it not reproduced in copies for sale, to sell
any manuscript or any record whatsoever
thereof;

(D) To make any other use or disposition of

the work consistent with the laws of the land.

5. Yes. The “gravamen of copyright

infringement,” according to NBI-Microsoft
Corporation v. Hwang: is not merely the
unauthorized manufacturing of intellectual
works but rather the unauthorized performance
of any of the acts covered by Section 5. Hence,
any person who performs any of the acts under
Section 5 without obtaining the copyright
owners prior consent renders himself civilly and
criminally liable for copyright infringement.
 4. What are the exclusive rights
of a copyright owner under PD No.
49?
 5. What is the gravamen of
copyright infringement?
Copyrightable 56 ABS-CBN Overseas Filipino worker Angelo 1. Whether there is probable cause to 1. Yes. Whether the alleged five-second https://
material CORPORATION,  dela Cruz was kidnapped by Iraqi charge respondents with infringement footage may be considered fair use is a lawphil.net/
Petitioner, militants and as a condition for under Republic Act No. 8293, matter of defense. We emphasize that the judjuris/
vs. his release, a demand was made otherwise known as the Intellectual case involves determination of probable juri2015/
Good faith FELIPE GOZON, for the withdrawal of Filipino Property Code. cause at the preliminary investigation stage. mar2015/
GILBERTO R. troops in Iraq. After negotiations, gr_195956_201
DUAVIT, JR., he was Raising the defense of fair use does not 5.html
“new coverage” MARISSA L. released by his captors and was automatically mean that no infringement was
subject to FLORES, scheduled to return to the country committed. The investigating prosecutor has
copyright JESSICA A. in the afternoon of 22 July 2004. full
SORO, GRACE Occasioned by said homecoming discretion to evaluate the facts, allegations,
DELA PENA- and the and evidence during preliminary
REYES, JOHN public interest it generated, both investigation. Defenses raised during
OLIVER T. GMA Network, Inc. and preliminary investigation are subject to
MANALASTAS, [petitioner] made their respective further proof and evaluation before the trial
JOHN DOES AND broadcasts and coverage of the court. Given the insufficiency of available
JANE live event. ABS-CBN “conducted evidence, determination of whether the
DOES, Respondent live audio-video coverage of and Angelo dela Cruz footage is subject to fair
s. broadcasted the arrival of Angelo use is better left to the trial court where the
dela Cruz at the Ninoy Aquino proceedings are currently pending. GMA-7’s
International Airport (NAIA) and rebroadcast of ABS-CBN’s news footage
the subsequent press conference.” without the latter’s consent is not an issue.
ABS-CBN allowed Reuters The mere act of rebroadcasting without
Television Service (Reuters) to air authority from the owner of the broadcast
the footages it had taken earlier gives rise to the probability that a crime was
under a special embargo committed under the Intellectual Property
agreement which states that any Code.
of the footages ABS-CBN took
would be for the “use of Reuter’s
international subscribers only,
and shall be considered and
treated by Reuters under
‘embargo’ against use by other
subscribers in the Philippines.
[N]o other Philippine subscriber
of Reuters would be allowed to
use ABS-CBN footage without
the latter’s consent.”
GMA-7, to which Gozon, Duavit,
Jr., Flores, Soho, Dela Peña-
Reyes, and Manalastas are
connected, “assigned and
stationed news reporters and
technical men at the NAIA for its
live broadcast and non-live news
coverage of the arrival of dela
Cruz.” GMA-7 subscribes to both
Reuters and Cable News Network
(CNN). It received a live video
feed
of the coverage of Angelo dela
Cruz’s arrival from Reuters.
GMA-7 immediately carried the
live news feed in its program
“Flash Report,” together with its
live broadcast. Allegedly, GMA-7
did not receive any notice or was
not aware that Reuters was airing
footages of ABS-CBN. GMA-7’s
news control room staff saw
2. NO.
Petitioners, being corporate officers and/or
directors, through whose act, default or
omission the corporation commits a crime,
may themselves be individually held
answerable for the crime. The
existence of the corporate entity does not
shield from prosecution the corporate agent
who knowingly and intentionally caused the
corporation to commit a crime. Thus,
petitioners cannot hide behind the cloak of
the separate corporate personality of the
corporation to escape criminal liability. A
corporate officer cannot protect himself
behind a corporation where he is the actual,
present and efficient actor.
2. Whether or not Corporate Officers
However, the criminal liability of a
of respondent may be held criminally
corporation’s officers or employees stems
liable.
from their active participation in the
commission of the wrongful act.
3. NO.
Infringement under the Intellectual Property
Code is malum prohibitum. The Intellectual
neither the “No Access Property Code is a special law. The general
Philippines” notice nor a notice rule is that acts punished under a special law
that the video feed was under are malum prohibitum. “An act which is
embargo in favor of ABS-CBN. declared malum prohibitum, malice or
criminal intent is completely immaterial.”
On August 13, 2004, ABS-CBN Unlike other jurisdictions that require intent
filed the Complaint for copyright for a criminal prosecution of copyright
infringement under Sections 177 infringement, the Philippines does not
and 211 of the Intellectual statutorily support good faith as a defense.
Property Code Other jurisdictions provide in their
intellectual property codes or relevant laws
that mens rea, whether express or implied, is
an element of criminal copyright
infringement.

The Intellectual Property Code requires strict

liability for copyright infringement whether
for a civil action or a criminal prosecution; it
does not require mens rea or culpa.
Respondents are involved and experienced in
the broadcasting
business. They knew that there would be
consequences in carrying ABS-CBN’s
footage in their broadcast. That is why
GMA-7 allegedly cut the feed from Reuters
upon seeing ABS-CBN’s ogo and reporter.

3. Whether criminal prosecution for

infringement of copyrightable 4. Yes. It is true that under Section 175 of the
material, such as live rebroadcast, can Intellectual Property Code, “news of the day
be negated by good faith. and other miscellaneous facts having the
character of mere items of press information”
are considered unprotected subject matter.
However, the Code does not state that
expression of the news
of the day, particularly when it underwent a
creative process, is not entitled to protection.

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.
News or the event itself is not copyrightable.

However, an event can be captured and

presented in a specific medium. As
recognized by this
court in Joaquin, television “involves a
whole spectrum of visuals and effects, video
and audio.” News coverage in television
involves framing shots, using images,
graphics, and sound effects. It involves
creative process and originality. Television
news footage is an expression of the news.

5. NO.
 This court defined fair use as “a privilege to
use the copyrighted material in a reasonable
manner without the consent of the copyright
owner or as copying the theme or ideas
rather than their
expression.” Fair use is an exception to the
copyright owner’s monopoly of the use of
the work to avoid stifling “the very creativity
which that law is designed to foster.”

Determining fair use requires application of

the four-factor test. Section 185 of the
Intellectual Property Code lists four (4)
4. Whether “news” coverage is factors to determine if there was fair use of a
copyrightable copyrighted work:

a. The purpose and character of the use,

including whether such use is of a
commercial nature or is for non-profit
educational purposes;
b. The nature of the copyrighted work;
c. The amount and substantiality of the
portion used in relation to the copyrighted
work as a whole; and
d. The effect of the use upon the potential
market for or value of the copyrighted work.
6. The “transformative test” is generally used
in reviewing the purpose and character of the
usage of the copyrighted work. This court
must look into whether the copy of the work
adds “new expression, meaning or message”
to transform it into something else. “Meta-
use” can also occur without necessarily
transforming the copyrighted work used.
5. Whether or not the news footage
falls under the rule on Fair Use.
6. What is the transformative test
Copyright 57 ESTRELLA M. The case traces its origins to a
DOMINGO, request by the Mayor of Bacoor,
PETITIONER, V. Cavite, inviting the National
Government’s CIVIL SERVICE Archives of the Philippines
copyfright COMMISSION (“NAP”) to provide resource
AND speakers for a seminar workshop.
VICTORINO When this did not push through,
MAPA MANALO, the said mayor instead personally
RESPONDENTS invited Estrella M. Domingo, the
Chief Archivist of the NAP
Archives Preservation Division
G.R. No. 236050, and a resident of Bacoor, Cavite,
June 17, 2020 to conduct the seminar in lieu of
the earlier request to the NAP.
The archivist conducted the
seminar during her leave of
absence.
The NAP issued a show cause
memorandum against the archivist
for conducting an unapproved
seminar and her unauthorized use
and dissemination of NAP
handouts. Contending that the
alleged acts were clear derogation
of office rules, the NAP later
found Domingo guilty of grave
misconduct and dismissed her
from service. This decision was
affirmed by both the Civil Service
Commission and the Court of
1. Whether the archivist should be
held liable for grave misconduct,
serious dishonesty, and conduct
prejudicial to the best interest of the
service
1. The Supreme Court, however, found the https://
archivist not liable as her actions did not sc.judiciary.gov.
violate or transgress any rule of conduct. The ph/14094/
Court ruled that Executive Order No. 77
(Series of 2019), Prescribing the Rules and
Regulations and Rates of Expenses and
Allowances for Official local and Foreign
Travels of Government Personnel, and its
implementing NAP office procedures require
office approval only for local travels that are
official in nature, which refer to travels
outside of official station on official time.
The archivist, in this case, was on official
leave of absence when she participated in the
seminar. Therefore, her participation did not
coincide with official work time with the
NAP.
2. Neither did the Supreme Court find
insubordination by the archivist as she had
no knowledge of the status of the first
request to serve as resource speaker. Her
taking advantage of the opportunity to give
the seminar did not prove that she was acting
defiantly against her superior. Further, there
was no law obligating the archivist to inform
the NAP about her activities or whereabouts
during her leave of absence. Her attendance
Appeals. as a resource speaker during her leave of
absence also did not create a rule of conduct
requiring her to obtain office approval.

2. Whether the archivist is guilty of

insubordination

3. As to the dissemination of NAP materials,

the Court found that the person who directed
the dissemination of the NAP materials at the
seminar was not confirmed. It also affirmed
that, under Section 176.1 of the Intellectual
Property Code, the government holds no
copyright to its materials and the NAP
materials were thus free to be disseminated
to the City of Bacoor’s stakeholders.
Presenting the NAP materials to the City of
Bacoor was not an exploitation of the NAP
materials for profit, but for the noble and
laudable cause of improving the basic
records management of this local
government unit.

4. The Supreme Court noted that there was

3. Whether the government holds no finding of fact that the archivist
copyright over the disseminated NAP personally materially benefitted from her
materials attendance at the seminar, except possibly
for goodwill which nevertheless inured to the

4. Whether the archivist personally
benefit on the event and can goodwill
be a defense
benefit of the NAP. Except for the fact that
she could have created goodwill for her own
self, as she admitted to being a resident of
the City of Bacoor, there is nothing on record
that she obtained a monetary profit from it.
In any event, it is an established fact that the
goodwill created by petitioner extended to
the NAP as an institution as shown by the
City of Bacoor's letter dated June 26, 2014
thanking the NAP for its support to the City
of Bacoor's efforts at professionalizing its
basic records management.
5. under Section 176.1 of the Intellectual
Property Code, the government holds no
copyright to its materials:
No copyright shall subsist in any work of
the Government of the Philippines.
However, prior approval of the
government agency or office wherein the
work is created shall
be necessary for exploitation of such
work for profit. Such agency or office may,
among other things, impose as a condition
the payment of royalties. No prior approval
or conditions shall be required for the use
for any purpose of statutes, rules and
 regulations, and speeches, lectures, sermons,
addresses, and dissertations, pronounced,
read or rendered in courts of justice, before
administrative agencies, in deliberative
assemblies and in meetings of public
character.

5. Rule on copyright of government

works
COPYRIGHTS 58 Joaquin v Drilon, Petitioner BJ Productions, Inc.
GR 108946, January (BJPI) is the holder/grantee of
28, 1999 Certificate of Copyright No.
Subject matter M922, dated
of copyright
January 28, 1971, of Rhoda and
Me, a dating game show aired
from 1970 to 1977.
On June 28, 1973, petitioner BJPI
submitted to the National Library
an addendum to its certificate of
copyright specifying the show's
format and style of presentation.
On July 14, 1991, while watching
television, petitioner Francisco
Joaquin, Jr., president of BJPI,
saw
on RPN Channel 9 an episode of
It's a Date, which was produced
by IXL Productions, Inc. (IXL).
On
July 18, 1991, he wrote a letter to
private respondent Gabriel M.
Zosa, president and general
manager
1) What is a copyright?
2) What are subject to copyright?
1) Copyright, in the strict sense of the term, https://
is purely a statutory right. It is a new or www.chanroble
independent right s.com/cralaw/
1999januarydeci
granted by the statute, and not simply a pre-
sions.php?id=52
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.
2) Since . . . copyright in published works is
purely a statutory creation, a copyright may
be obtained
only for a work falling within the statutory
enumeration or description. Regardless of the
historical viewpoint, it is authoritatively
settled in the United States that there is no
copyright except that which is both created
and secured by act of Congress.
P.D. No. 49, §2, in enumerating what are
subject to copyright, refers to finished works
and not to
of IXL, informing Zosa that BJPI
had a copyright to Rhoda and Me
and demanding that IXL
discontinue
airing It's a Date.
Upon complaint of petitioners, an
information for violation of P.D.
No. 49 was filed against private
respondent Zosa together with
certain officers of RPN Channel
9, namely, William Esposo,
Felipe
Medina, and Casey Francisco, in
the Regional Trial Court
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.
Thus, the new INTELLECTUAL
PROPERTY CODE OF THE PHILIPPINES
provides:
Sec. 175. Unprotected Subject Matter. —
Notwithstanding the provisions of Sections
172 and 173, no protection shall extend,
under this law, to any idea, procedure,
system, method or operation, concept,
principle, discovery or mere data as such,
even if they are expressed, explained,
illustrated or
embodied in a work; news of the day and
other miscellaneous facts having the
character of mere
items of press information; or any official
text of a legislative, administrative or legal
nature, as well
 as any official translation thereof.

3) This Court is of the opinion that petitioner

BJPI's copyright covers audio-visual
recordings of each episode of Rhoda and Me,
as falling within the
class of works mentioned in P.D. 49, §2(M),
to wit:
Cinematographic works and works produced
by a process analogous to cinematography or
any
process for making audio-visual recordings;
The copyright does not extend to the general
concept or format of its dating game show.
Accordingly,
by the very nature of the subject of petitioner
BJPI's copyright, the investigating prosecutor
should
have the opportunity to compare the
3) What then is the subject matter of
videotapes of the two shows.
petitioners' copyright?

4) 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

4) Was the
presentation of the master videotape
dispensable to the determination of
the existence of probable cause in this
case?
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 may be
found by merely
describing the general copyright/format of
both dating game shows.
Doctrine:
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.
The copyright does not extend to the general
concept or format of its dating game show.
Accordingly,
by the very nature of the subject of petitioner
BJPI's copyright, the investigating prosecutor
should have
the opportunity to compare the videotapes of
 the two shows.

5. Non-copyrightable objects

Copyright 59 MAURO This is an action for damages based (1) whether plaintiff is entitled to 1. No. Plaintiff is not entitled to a protection, https://
MALANG on the provisions of Articles 721 and protection, notwithstanding the, fact the provision of the Civil Code, lawphil.net/
722 of the Civil Code of the
SANTOS, plaintiff- that he has not copyrighted his design; notwithstanding. Paragraph 33 of Patent judjuris/
Philippines, allegedly on the
Publication appellant, unauthorized use, adoption and Office Administrative Order No. 3 (as juri1964/
vs. appropriation by the defendant amended dated September 18, 1947) entitled oct1964/gr_l-
MCCULLOUGH company of plaintiff's intellectual "Rules of Practice in the Philippines Patent 19439_1964.ht
PRINTING creation or artistic design for a Office relating to the Registration of ml
Distinction Christmas Card. The design depicts
between the two COMPANY, defen Copyright Claims" promulgated pursuant to
"a Philippine rural Christmas time
classes of dant-appellee. scene consisting of a woman and a
Republic Act 165, provides, among others,
property right child in a nipa hut adorned with a that an intellectual creation should be
star-shaped lantern and a man astride copyrighted thirty (30) days after its
G.R. No. L-19439   a carabao, beside a tree, underneath publication, if made in Manila, or within
which appears the plaintiff's pen sixty (60) day's if made elsewhere, failure of
October 31, 1964
name, Malang."

The complaint alleges that plaintiff
Mauro Malang Santos designed for
former Ambassador Felino Neri, for
his personal Christmas Card
greetings for the year 1959, the
artistic motif in question. The
following year the defendant
McCullough Printing Company,
without the knowledge and authority
of plaintiff, displayed the very design
in its album of Christmas cards and
offered it for sale, for a price.
Defendant in answer to the
complaint, after some denials and
admissions, moved for a dismissal of
the action claiming that —
(1) The design claimed does
not contain a clear notice
that it belonged to him and
that he prohibited its use by
others;
(2) The design in question
has been published but does
not contain a notice of
copyright, as in fact it had
never been copyrighted by
the plaintiff, for which
reason this action is barred
by the Copyright Law;
(3) The complaint does not
state a cause of action.
Upon the basis of the facts stipulated,
the lower court rendered judgment on
(2) whether the publication is limited,
so as to prohibit its use by others, or it
is general publication
which renders such creation public property.
2. General. The SC did not accept the
contention of appellant that the publication
of the design was a limited one, or that there
was an understanding that only Ambassador
Neri should, have absolute right to use the
same. In the first place, if such were the
condition then Ambassador Neri would be
the aggrieved party, and not the appellant. In
the second place, if there was such a limited
publication or prohibition, the same was not
shown on the face of the design. When the
purpose is a limited publication, but the
effect is general publication, irrevocable
rights thereupon become vested in the public,
in consequence of which enforcement of the
restriction becomes impossible.  When
Ambassador Neri distributed 800 copies of
the design in controversy, 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.
December 1, 1961, the pertinent
portions of which are recited below:
3. An intellectual creation should be
As a general proposition,
there can be no dispute that copyrighted thirty (30) days after its
the artist acquires ownership publication, if made in Manila, or within
of the product of his art. At sixty (60) day's if made elsewhere, failure of
the time of its creation, he which renders such creation public property.
has the absolute dominion
over it. To help the author
protect his rights the
copyright law was enacted.

4. The author of a literary composition has a

(3) When should an intellectual
creation be copyrighted?
light 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.

5. In intellectual creations, a distinction must be

made between two classes of property rights; the
fact of authorship and the right to publish and/or

(4) Whether the author has the
exclusive right of publication
distribute copies of the creation. With regard to
the first, i.e. the fact of authorship, the artist
cannot be divested of the same. In other words,
he may sell the right to print hundred of his work
yet the purchaser of said right can never be the
author of the creation.
It is the second right, i.e., the right to publish,
republish, multiply and/or distribute copies of the
intellectual creation which the state, through the
enactment of the copyright law, seeks to protect.
The author or his assigns or heirs may have the
work copyrighted and once this is legally
accomplished any infringement of the copyright
will render the infringer liable to the owner of the
copyright.
 (5) Distinction between the two
classes of property right

Copyright 60 Chuan v CA, GR Wilson Ong Ching Kian Chuan, (1) Whether Ong has a clear right over the (1) NO. Finally, we note that the complaint https://
130360, August 15, imports vermicelli from China copyrighted wrapper. initially filed with the RTC was for www.chanrobl
2001 National Cereals Oils and Foodstuffs infringement of copyright. The trial court’s es.com/
Import and Export Corporation, cralaw/
resolution subject of Tan’s petition under
based in Beijing, China, under the 2001augustdeci
Rule 65 before the CA concerns the sions.php?
firm name C.K.C. Trading. He
correctness of the grant of the writ of id=806
repacks it in cellophane wrappers
with a design of two-dragons and the preliminary injunction. The only issue
TOWER trademark on the uppermost brought before the CA involved the grave
portion. Ong acquired a Certificate of abuse of discretion allegedly committed by
Copyright Registration from the the trial court in granting the writ of
National Library on June 9, 1993 on preliminary injunction. The Court of Appeals
the said design. in declaring that the wrapper of petitioner is a
copy of Ceroilfood Shandong’s wrapper went
Ong discovered that private beyond that issue and touched on the merits
respondent Lorenzo Tan repacked his of the infringement case, which remains to be
vermicelli he imports from the same
decided by the trial court. In our view, it was
company but based in Qingdao,
premature for the Court of Appeals to declare
China in a "nearly" identical wrapper.
On September 16, 1993, Ong filed
that the design of petitioner’s wrapper is a
against Tan a verified complaint for copy of the wrapper allegedly registered by
infringement of copyright with Ceroilfood Shandong.
damages and prayer for temporary
restraining order or writ of (2) A person to be entitled to a copyright must be
(2) How can one be entitled to copyright? the original creator of the work. He must have
preliminary injunction with the
Regional Trial Court in Quezon City. created it by his own skill, labor and judgment
Ong alleged that he was the holder of without directly copying or evasively imitating
a Certificate of Copyright the work of another. 
Registration over the cellophane
wrapper with the two-dragon design, The grant of preliminary injunction in a case rests
and that Tan used an identical on the sound discretion of the court with
wrapper in his business. In his prayer the caveat that it should be made with extreme
for a preliminary injunction in caution. Its grant depends chiefly on the extent of
addition to damages, he asked that doubt on the validity of the copyright, existence
Tan be restrained from using the of infringement, and the damages sustained by
wrapper. He said he would post a such infringement. In our view, the copies of the
bond to guarantee the payment of certificates of copyright registered in the name of
damages resulting from the issuance Ceroilfood Shandong sufficiently raise reasonable
of the writ of preliminary injunction. doubt. With such a doubt preliminary injunction
is unavailing. In Medina vs. City Sheriff, Manila,
where the complainant's title was disputed, we
held that injunction was not proper.

(3) To be entitled to an injunctive writ,

petitioner must show, inter alia, the
existence of a clear and unmistakable right
and an urgent and paramount necessity for
the writ to prevent serious damage. From the
above discussion, we find that petitioner’s
(3) How can one be entitled to an right has not been clearly and unmistakably
injunctive writ? demonstrated. That right is what is in dispute
and has yet to be determined. In Developers
Group of Companies, Inc. vs. Court of
Appeals, 219 SCRA 715, 722-723 (1993), we
held that in the absence of proof of a legal
right and the injury sustained by the plaintiff,
an order of the trial court granting the
issuance of an injunctive writ will be set
aside, for having been issued with grave
 abuse of discretion. Conformably, there was
no abuse of discretion by the Court of
Appeals when it issued its own order to
restrain the enforcement of the preliminary
injunction issued by the trial court.

(4) The grant of preliminary injunction in a

case rests on the sound discretion of the
Court with the caveat that it should be made
with extreme caution. Its grant depends
chiefly on the extent of doubt on the validity
of the copyright, existence of infringement,
and the damages sustained by such
(4) Was the issuance of preliminary
infringement. In our view, the copies of the
injunction proper?
certificates of copyright registered in the
name of Ceroilfood Shandong sufficiently
raise reasonable doubt. With such
a doubt, the preliminary
injunction is unavailing.

Copyright 61 Rappler, Inc. vs. Petitioner Rappler, Inc. filed a 1. What is “copyright 1. The “copyright conditions” refer to the https://
Bautista petition for certiorari and conditions”? limitations on copyright as provided under lawlibrary.chan
prohibition against Andres D. Section 184.1(c) of the Intellectual Property robles.com/
G.R. No. 222702. Bautista, in his capacity as Code (IPC). SEC. 184. Limitations on index.php?
April 5, 2016 Chairman of the Commission on Copyright.—184.1 Notwithstanding the
option=com_co
Elections (COMELEC). The provisions of Chapter V, the following acts shall
petition seeks to nullify Part VI(C), not constitute infringement of copyright: x x x x
ntent&view=ar
paragraph 19 and Part VI(D), (c) The reproduction or communication to the ticle&id=8547
paragraph 20 of the MOA on the public by mass media of articles on current 7:61758&catid
2016 presidential and vice political, social, economic, scientific or =1608&Itemid
presidential debates, for being religious topic, lectures, addresses and other =566
executed without or in excess of works of the same nature, which are
jurisdiction or with grave abuse of delivered in public if such use is for
discretion amounting to lack or information purposes and has not been
excess of jurisdiction and for
violating the fundamental rights of
petitioner protected under the
Constitution. The MOA was
executed by the COMELEC through
its Chairman, respondent Bautista,
and the Kapisanan ng mga
Brodkaster ng Pilipinas (KBP), and
the various media networks, namely:
ABS-CBN Corporation, GMA
Network, Inc., Nine Media
Corporation, TV5 Network, Inc.,
Philstar Daily, Inc., Philippine Daily
Inquirer, Inc., Manila Bulletin
Publishing Corporation, Philippine
Business Daily Mirror Publishing,
Inc., and petitioner.
Under the MOA, the KBP was
designated as Debate Coordinator
while ABS-CBN, GMA, Nine
Media, and TV5, together with their
respective print media partners were
designated as Lead Networks.
Petitioner alleged that respondent
called for a meeting with various
media outlets to discuss the
“PiliPinas 2016 Debates,” for
presidential and vice presidential
candidates, which the COMELEC
was organizing. Respondent showed
a presentation explaining the
framework of the debates, in which
there will be three presidential
debates and one vice presidential
debate. Respondent proposed that
petitioner and Google, Inc. be in
charge of online and social media
engagement. Respondent announced
during the meeting that KBP will
2. Does debates fall under the
Limitations on Copyright?
expressly reserved; Provided, That the source
is clearly indicated.
2. Yes. Under this provision, the debates fall
under “addresses and other works of the same
nature.” Thus, the copyright conditions for the
debates are: (1) the reproduction or
communication to the public by mass media of
the debates is for information purposes; (2) the
debates have not been expressly reserved by the
Lead Networks (copyright holders); and (3) the
source is clearly indicated.
3. Yes. Condition 1 is complied because the
live streaming by petitioner is obviously for
information purposes. Condition 2 is also
complied because Part VI(C), paragraph 19 of
the MOA expressly “allow[s] the debates x x x
to be shown or streamed on other websites,”
including petitioner’s website. This means that
the “reproduction or communication (of the
debates) to the public by mass media x x x has
not been expressly reserved” or withheld.
Condition 3 is complied by clearly indicating
and acknowledging that the source of the
debates is one or more of the Lead Networks.
Part VI(C), paragraph 19 of the MOA, which
expressly allows the debates produced by the
Lead Networks to be shown or streamed on
other websites, clearly means that the Lead
Networks have not “expressly reserved” or
withheld the use of the debate audio for online
streaming. In short, the MOA expressly allows
the live streaming of the debates subject only to
compliance with the “copyright conditions.”

coordinate with all media entities
regarding the organization and
conduct of the debates.
Petitioner sent a proposed draft
for broadcast pool guidelines to
COMELEC and the KBP. A
broadcast pool has a common audio
and video feed of the debates, and
the cost will be apportioned among
those needing access to the same.
KBP informed petitioner that the
proposal will be discussed in the
next meeting. In the draft MOA,
petitioner and Google’s participation
were dropped in favor of the online
outlets owned by the Lead
Networks. After the meeting, the
representatives of the Lead
Networks drew lots to determine
who will host each leg of the
debates. GMA and its partner
Philippine Daily Inquirer sponsored
the first presidential debate in
Mindanao; TV5, Philippine Star,
and Businessworld sponsored the
second phase of presidential debate
in the Visayas; ABS-CBN and
Manila Bulletin will sponsor the
presidential debate to be held in
Luzon; and the lone vice
presidential debate will be
sponsored by CNN, Business
Mirror, and petitioner. Petitioner
alleged that the draft MOA
permitted online streaming,
provided proper attribution is given
Once petitioner complies with the copyright
conditions, petitioner can exercise the right to
live stream the audio of the debates as expressly
allowed by the MOA.
3. Did petitioner comply with the
conditions?
4. No. Once the conditions imposed under
Section 184.1(c) of the IPC are complied with,
the information — in this case the live audio of
the debates — now forms part of the public
domain. There is now freedom of the press to
report or publicly disseminate the live audio of
the debates. In fact, the MOA recognizes the
right of other mass media entities, not parties to
the MOA, to reproduce the Debates subject only
to the same copyright conditions. The freedom
of the press to report and disseminate the live
audio of the debates, subject to compliance with
Section 184.1(c) of the IPC, can no longer be
infringed or subject to prior restraint. Such
freedom of the press to report and disseminate
the live audio of the debates is now protected
and guaranteed under Section 4, Article III of
the Constitution, which provides that “[N]o law
shall be passed abridging the freedom x x x of
the press.”
5. Yes. Once the conditions imposed under
Section 184.1(c) of the IPC are complied with,
the information — in this case the live audio of
the debates — now forms part of the public
domain. There is now freedom of the press to
report or publicly disseminate the live audio of
the debates. In fact, the MOA recognizes the
right of other mass media entities, not parties to
the MOA, to reproduce the debates subject only
 to the same copyright conditions. The freedom
the Lead Network. of the press to report and disseminate the live
audio of the debates, subject to compliance with
On 13 January 2016, petitioner, Section 184.1© of the IPC, can no longer be
along with other media networks infringed or subject to prior restraint. Such
and entities, executed the MOA with freedom of the press to report and disseminate
the KBP and the COMELEC for the the live audio of the debates is now protected
conduct of the three presidential and guaranteed under Section 4, Article III of
debates and one vice presidential the Constitution, which provides that “[N]o law
debate. Petitioner alleged that it shall be passed abridging the freedom x x x of
made several communications with the press.”
respondent and the COMELEC
Commissioners regarding its
concerns on some of the MOA
provisions, but petitioner received 6. Thus, the copyright conditions for the
no response. Hence, this petition. debates are: (1) the reproduction or
communication to the public by mass media of
the debates is for information purposes; (2) the
debates have not been expressly reserved by the
Lead Networks (copyright holders); and (3) the
source is clearly indicated.

4. Can the reporting and

disseminating live audio of the
debates, subject to compliance with
Section 184.1(c) of the Intellectual
Property Code (IPC), be infringed?
 5. Can the live audio of debates
be part of public domain?
 6. What are the copyright
conditions for the debates?
COPYRIGHTS 62 Habana v Robles, Petitioners are authors and
GR 131522, July copyright owners of duly issued
19, 1999 certificates of copyright
registration
covering their published works,
produced through their combined
resources and efforts, entitled
COLLEGE ENGLISH FOR
TODAY (CET for brevity),
Books 1 and 2, and
2) When is there a substantial
WORKBOOK FOR COLLEGE
reproduction of a book?
FRESHMAN ENGLISH, Series
1.
Respondent Felicidad Robles and
Goodwill Trading Co., Inc. are
the author/publisher and
distributor/seller of another
published work entitled
"DEVELOPING ENGLISH
PROFICIENCY" (DEP
for brevity), Books 1 and 2 (1985
edition) which book was covered
by copyrights issued to them.
In the course of revising their
published works, petitioners
scouted and looked around
various
bookstores to check on other
1) Was there copyright infringement? 1) Yes. We believe that respondent Robles' https://
act of lifting from the book of petitioners www.chanroble
substantial portions of discussions and s.com/cralaw/
examples, and her failure to acknowledge the 1999januarydeci
same in her book is an infringement of sions.php?id=52
petitioners' copyrights.
2) It does not necessarily require that the
entire
copyrighted work, or even a large portion of
it, be copied. If so much is taken that the
value of the
original work is substantially diminished,
there is an infringement of copyright and to
an injurious
extent, the work is appropriated.
In determining the question of infringement,
the amount of matter copied from the
copyrighted work
is an important consideration. To constitute
infringement, it is not necessary that the
whole or even a large portion of the work
shall have been copied. If so much is taken
that the value of the original is sensibly
diminished, or the labors of the original
author are substantially and to an injurious
extent appropriated by another, that is
textbooks dealing with the same sufficient in point of law to constitute piracy.
subject matter. By chance they
came
3) The essence of intellectual piracy should
upon the book of respondent
be essayed in conceptual terms in order to
Robles and upon perusal of said
underscore its gravity by an appropriate
book they were surprised to see
understanding thereof. Infringement of a
that
copyright is a trespass on a
the book was strikingly similar to
private domain owned and occupied by the
the contents, scheme of
owner of the copyright, and, therefore,
presentation, illustrations and
protected by law,
illustrative
and infringement of copyright, or piracy,
examples in their own book, CET.
which is a synonymous term in this
After an itemized examination connection, consists in
and comparison of the two books
the doing by any person, without the consent
(CET and DEP), petitioners found
of the owner of the copyright, of anything
3) What is infringement in a copy
that several pages of the the sole right
right?
respondent's book are similar, if
to do which is conferred by statute on the
not all together a copy of
owner of the copyright.
petitioners' book,
which is a case of plagiarism and
copyright infringement. 4) The respondents' claim that the copied
portions of the book CET are also found in
Petitioners then made demands
foreign books and
for damages against respondents
and also demanded that they cease other grammar books, and that the similarity
between her style and that of petitioners can
and desist from further selling and
not be
distributing to the general public
the infringed copies of avoided since they come from the same
background and orientation may be true.
respondent Robles' works.
However, respondents ignored the
demands, hence, on July 7, 1988;
petitioners filed with RTC
complaint for "Infringement
and/or unfair competition with
damages" against private
respondents.
Respondent Robles was
impleaded in the suit because she
authored and directly committed
the acts
of infringement complained of,
while respondent Goodwill
Trading Co., Inc. was impleaded
as the
publisher and joint co-owner of
the copyright certificates of
registration covering the two
books
authored and caused to be
published by respondent Robles
with obvious connivance with one
another.
The trial court dismissed the
complaint. CA affirmed. It ruled
similarity of the allegedly
infringed
work to the author's or
proprietor's copyrighted work
4) What are limitations of a copyright
pursuant to RA 8293?
However, in this
jurisdiction under Sec 184 of Republic Act
8293 it is provided that:
Limitations on Copyright. Notwithstanding
the provisions of Chapter V, the following
shall not
constitute infringement of copyright:
xxx
(c) The making of quotations from a
published work if they are compatible with
fair use and only to
the extent justified for the purpose, including
quotations from newspaper articles and
periodicals in the form of press summaries:
Provided, That the source and the name of
the author, if appearing on the work, are
mentioned.
A copy of a piracy is an infringement of the
original, and it is no defense that the pirate,
in such cases, did not know whether or not
he was infringing any copyright; he at least
knew that what he was copying was not his,
and he copied at his peril.
does not of itself establish
copyright
infringement, especially if the
similarity results from the fact
that both works deal with the
same
subject or have the same common
source, as in this case.
5) In the case at bar, there is no question that
petitioners presented several pages of the
books CET and DEP that more or less had
the same contents. It may be correct that the
books being grammar books
may contain materials similar as to some
technical contents with other grammar
books, such as the
segment about the "Author Card". However,
the numerous pages that the petitioners
presented
showing similarity in the style and the
manner the books were presented and the
identical examples
can not pass as similarities merely because of
technical consideration.
The respondents claim that their similarity in
style can be attributed to the fact that both of
them
were exposed to the APCAS syllabus and
their respective academic experience,
teaching approach
and methodology are almost identical
because they were of the same background.
However, we believe that even if petitioners
and respondent Robles were of the same

5) What extent can copying be
injurious to the author of the book
being copied. Is it enough that there
are similarities in some sections of the
books or large segments of the books
are the same?
background in
terms of teaching experience and orientation,
it is not an excuse for them to be identical
even in examples contained in their books.
The similarities in examples and material
contents are so obviously present in this case.
6) We consider as an indicia of guilt or
wrongdoing the act of respondent Robles of
pulling out from
Goodwill bookstores the book DEP upon
learning of petitioners' complaint while
pharisaically denying petitioners' demand. It
was further noted that when the book DEP
was re-issued as a revised version, all the
pages cited by petitioners to contain portion
of their book College English for Today
were eliminated.
7) In cases of infringement, copying alone
is not what is prohibited. The copying
must produce an
"injurious effect". Here, the injury consists
in that respondent Robles lifted from
petitioners' book
materials that were the result of the latter's
research work and compilation and
misrepresented them
as her own. She circulated the book DEP for

6) How can similar/identical examples
not be considered as a mark of
copying?
commercial use did not acknowledge
petitioners as her source.
Hence, there is a clear case of appropriation
of copyrighted work for her benefit that
respondent
Robles committed. Petitioners' work as
authors is the product of their long and
assiduous research
and for another to represent it as her own is
injury enough. In copyrighting books the
purpose is to
give protection to the intellectual product of
an author. This is precisely what the law on
copyright
protected, under Section 184.1 (b).
Quotations from a published work if they are
compatible with fair
use and only to the extent justified by the
purpose, including quotations from
newspaper articles and
periodicals in the form of press summaries
are allowed provided that the source and the
name of the
author, if appearing on the work, are
mentioned.
In the case at bar, the least that respondent
Robles could have done was to acknowledge

7) What is prohibited in a copyright
infringement?
petitioners
Habana et. al. as the source of the portions of
DEP. The final product of an author's toil is
her book.
To allow another to copy the book without
appropriate acknowledgment is injury
enough.
Doctrine:
In cases of infringement, copying alone is
not what is prohibited. The copying must
produce an "injurious
effect". Here, the injury consists in that
respondent Robles lifted from petitioners'
book materials that
were the result of the latter's research work
and compilation and misrepresented them as
her own. She circulated the book DEP for
commercial use did not acknowledged
petitioners as her source.
Hence, there is a clear case of appropriation
of copyrighted work for her benefit that
respondent Robles committed. Petitioners'
work as authors is the product of their long
and assiduous research and for
another to represent it as her own is injury
enough. In copyrighting books the purpose is
to give

COPYRIGHTS 63 Columbia Pictures v Complainants thru counsel lodged
CA, GR 110318, a formal complaint with the
Aug 28, 1996 - National Bureau of Investigation
for violation of PD No. 49, as
amended, and sought its
assistance in their anti-film piracy
drive. Agents of the NBI and
private researchers made discreet
surveillance on various video
establishments in Metro Manila
including Sunshine Home Video
Inc. (Sunshine for brevity), owned
and operated by Danilo A.
Pelindario with address at No. 6
Mayfair Center, Magallanes,
Makati, Metro Manila.
1) Was there a copyright infringement
in this case?
protection to the intellectual product of an
author. This is precisely what the law on
copyright protected,
under Section 184.1 (b). Quotations from a
published work if they are compatible with
fair use and only
to the extent justified by the purpose,
including quotations from newspaper articles
and periodicals in the form of press
summaries are allowed provided that the
source and the name of the author, if
appearing on the work, are mentioned.
1) YES. As earlier discussed, PD 49 as https://
amended, does not require registration and www.chanroble
deposit for a creator to be able to file an s.com/cralaw/
action for infringement of his rights. These 1996augustdecis
conditions are merely pre-requisites to an ions.php?id=514
action for damages. So, as long as the
proscribed acts are shown to exist, an action
for infringement
may be initiated.
Accordingly, the certifications from the
Copyright Section of the National Library,
presented as
evidence by private respondents to show
non-registration of some of the films of
On November 14, 1987, NBI
Senior Agent Lauro C. Reyes
applied for a search warrant with
the court
a quo against Sunshine seeking
the seizure, among others, of
pirated video tapes of copyrighted
films
all of which were enumerated in a
list attached to the application;
and, television sets, video
cassettes
and/or laser disc recordings
equipment and other machines
and paraphernalia used or
intended to
be used in the unlawful
exhibition, showing, reproduction,
sale, lease or disposition of
videogramsv tapes in the premises
above described. In the hearing of
the application, NBI Senior Agent
Lauro C. Reyes, upon questions
by the court a quo, reiterated in
substance his averments in his
affidavit. His testimony was
corroborated by another witness,
Mr. Rene C. Baltazar. Atty. Rico
V. Domingo’s deposition was also
taken. On the basis of the
affidavits depositions of NBI
2) Is the failure to comply with said
requirements deprive the copyright
owner of the right to sue for
infringement?
petitioners, assume no evidentiary weight or
significance, whatsoever.
2) Furthermore, a closer review of
Presidential Decree No. 49 reveals that even
with respect to works
which are required under Section 26 thereof
to be registered and with copies to deposited
with the
National Library, such as books, including
composite and cyclopedic works,
manuscripts, directories
and gazetteers; and periodicals, including
pamphlets and newspapers; lectures,
sermons, addresses, dissertations prepared
for oral delivery; and letters, the failure to
comply with said requirements does not
deprive the copyright owner of the right to
sue for infringement. Such non-compliance
merely limits the remedies available to him
and subjects him to the corresponding
sanction.
The reason for this is expressed in Section 2
of the decree which prefaces its enumeration
of
copyrightable works with the explicit
statement that "the rights granted under this
Senior Agent Lauro C. Reyes,
Rene C. Baltazar and Atty. Rico
V. Domingo, Search Warrant No
87-053 for violation of Section 56
of PD No. 9, as amended, was
issued by the court a quo.
In the course of the search of the
premises indicated in the search
warrant, the NBI Agents found
and seized various video tapes of
duly copyrighted motion
pictures/films owned or
exclusively distributed by private
complainants, and machines,
equipment, television sets,
paraphernalia, materials,
accessories all of which were
included in the receipt for
properties accomplished by the
raiding team. Copy of the receipt
was furnished and/or tendered to
Mr. Danilo A. Pelindario,
registered owner-proprietor of
Sunshine Home Video.
3) Is the copyright for a work acquired
by an intellectual creator
from the moment of creation even in
the absence of registration and deposit
correct?
Decree shall, from
the moment of creation, subsist with respect
to any of the following classes of works."
This means
that under the present state of the law, the
copyright for a work is acquired by an
intellectual creator
from the moment of creation even in the
absence of registration and deposit. As has
been
authoritatively clarified:
The registration and deposit of two complete
copies or reproductions of the work with the
National
library within three weeks after the first
public dissemination or performance of the
work, as
provided for in Section 26 (P.D. No. 49, as
amended), is not for the purpose of securing
a copyright of
the work, but rather to avoid the penalty for
non-compliance of the deposit of said two
copies and in

On December 16, 1987, a "Return order to recover damages in an infringement

of Search Warrant" was filed with suit.
the Court.
A "Motion To Lift the Order of
Doctrine:
Search Warrant" was filed but
was later denied for lack of merit 4) The registration and deposit of two
complete copies or reproductions of the work
A Motion for reconsideration of
with the National
the Order of denial was filed. The
court a quo granted the said library within three weeks after the first
motion public dissemination or performance of the
work, as provided for in Section 26 (P.D. No.
for reconsideration and justified it
49, as amended), is not for the purpose of
in this manner:
securing a copyright of the work, but rather
Petitioners thereafter appealed the to avoid the penalty for non-compliance of
order of the trial, court granting the deposit of said two copies and in order to
private respondents’ motion for recover damages in an infringement suit.

reconsideration, thus lifting the

search warrant which it had
therefore issued, to the Court of
Appeals.

As stated at the outset, said appeal

was dismissed and the motion for
reconsideration thereof was
denied. Hence, this petition was
brought to this Court particularly
challenging the validity of
respondent court’s retroactive
application of the ruling in 20th
Century Fox Film Corporation v.
Court of Appeals, Et Al., in 4) What is the purpose of securing a
dismissing petitioners’ appeal and copyright of the work?
upholding the quashal of the
search warrant by the trial court.
COPYRIGHTS 64 20th Century Fox v Petitioner 20th Century Fox Film
CA, GR 76649-51, Corporation through counsel
Aug 19, 1988 sought the National Bureau of
Investigation's (NBI) assistance in
the conduct of searches and
seizures in connection with the
latter's anti-film piracy campaign.
The letter-complaint alleged that
certain videotape outlets all over
Metro Manila are engaged in the
unauthorized sale and renting out
of copyrighted films in videotape
form which constitute a flagrant
violation of Presidential Decree
No. 49 (otherwise known as the
Decree on the Protection of
Intellectual Property).
NBI conducted surveillance and
investigation of the outlets
pinpointed by the petitioner and
subsequently filed three (3)
applications for search warrants
against the video outlets owned
by the private respondents.
Lower court issued the desired
1) Whether the judge properly lifted
the search warrants he issued earlier
upon the application of the NBI on the
basis of the complaint filed by the
petitioner.
1) YES. In the instant case, the lower court https://
lifted the three questioned search warrants lawphil.net/
against the private respondents on the ground judjuris/
that it acted on the application for the juri1988/
issuance of the said search warrants and aug1988/
granted it on the misrepresentations of gr_76649_51_1
applicant NBI and its witnesses that 988.html
infringement of copyright or a piracy of a
particular film have been committed.
The lower court, therefore, lifted the three
(3) questioned search warrants in the absence
of probable cause that the private
respondents violated P.D. 49.
As found out by the court, the NBI agents
who acted as witnesses did not have personal
knowledge of the subject matter of their
testimony which was the alleged commission
of the offense by the private respondents.
Only the petitioner's counsel who was also a
witness during the application for the
issuance of the search warrants stated that he
had personal knowledge that the confiscated
tapes owned by the private respondents were
pirated tapes taken from master tapes
belonging to the petitioner. However, the
lower court did not give much credence to
search warrants. his testimony in view of the fact that the
master tapes of the allegedly pirated tapes
were not shown to the court during the
Armed with the search warrants, application.
the NBI accompanied by the
petitioner's agents, raided the
video outlets and seized the items 2) NO. All these factors were taken into
described therein. An inventory of consideration by the lower court when it
the items seized was made and lifted the three questioned search warrants.
left with the private respondents. There is no truth, therefore, to the petitioner's
allegation that the lower court based its
l Private respondents filed a
January 2, 1986, order only "on the fact that
motion to lift search warrants and
the original or master copies of the
release seized properties which
copyrighted films were not presented during
the lower court granted.
the application for search warrants, thus
leading it to conclude that it had been
"misled by the applicant and his witnesses."
MR by petitioner denied.

3) YES. The presentation of the master tapes

Hence, this petition for certiorari.
2) Is petitioner's allegation that the
lower court based its Order only "on
the fact that the original or master
copies of the copyrighted films were
not presented during the application
for search warrants correct?
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.
4) No. The petitioner's argument to the effect
that the presentation of the master tapes at
the time of application may not be necessary
as these would be merely evidentiary in
nature and not determinative of whether or
not a probable cause exists to justify the

3) Was the presentation of the
copyrighted files necessary in the
issuance of the Warrants?
4) Is petitioner’s argument that the
presentation of the master tapes which
are evidentiary in nature and not
determinative of whether probable
cause exist is meritorious?
issuance of the search warrants is not
meritorious. The court cannot presume that
duplicate or copied tapes were necessarily
reproduced from master tapes that it owns.
The proliferation of pirated tapes of films not
only deprives the government of much-
needed revenues but is also an indication of
the widespread breakdown of national order
and discipline. Courts should not impose any
unnecessary roadblocks in the way of the
anti-film piracy campaign. However, the
campaign cannot ignore or violate
constitutional safeguards. To say that the
problem of pirated films can be solved only
by the use of unconstitutional shortcuts is to
denigrate the long history and experience
behind the searches and seizures clause of
the Bill of Rights.
Petition dismissed. The trial court did not
commit reversible error.
Doctrine:
The court cannot presume that duplicate or
copied tapes were necessarily reproduced
from master tapes that it owns.
5) 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.
 5) What is the essence of a copyright
in in infringement case?

Determination 65 PEOPLE OF THE On April 27, 1999, Mario P. Nieto, 1.Whether the CA erred in applying 1. Yes, as correctly pointed out by https://
of probable PHILIPPINES, Intelligence Operative of the the doctrine in 20th Century Fox Film petitioners, 20th Century Fox Film Corporation, www.chanroble
Economic Intelligence and insofar as it required the presentation of the
cause HON. LOURDES Corporation since it had already been s.com/cralaw/
Investigation Bureau, Department of master tapes for comparison with the pirated
F. GATBALITE, Finance, applied for a search warrant superseded by Columbia Pictures, copies for a search warrant to issue, had already 2006augustdecis
Presiding Judge, with the Regional Trial Court (RTC) Inc. v. Court of Appeals been superseded by Columbia Pictures, Inc. v. ions.php?
Branch 56, of Angeles City, Pampanga, Branch Court of Appeals: id=1030
Regional Trial 56, against respondent Christopher
Court, Angeles Choi for violation of Section 168,
paragraphs 2 and 3 (a) and (c), in
City and ATTY. relation to Section 169 of RA
BENNIE 2. No. It is evidently incorrect to suggest, as the
8293, also known as the Intellectual ruling in 20th Century Fox may appear to do,
NICDAO, Special Property Code. A search warrant was that in copyright infringement cases, the
Prosecutor, Special issued. presentation of master tapes of the
Operative Group, copyrighted films is always necessary to meet
Economic the requirement of probable cause and that, in
Intelligence & the absence thereof, there can be no finding of
Investigation On May 12, 1999, respondent filed a probable cause for the issuance of a search
2. Whether the presentation of master
"motion to quash search warrant" and warrant. It is true that such master tapes are
Bureau, Petitioners a "supplemental motion to quash" on tapes of the copyrighted films is object evidence, with the merit that in this class
, v. CHRISTOPHE June 22, 1999. Both were denied by always necessary to meet the of evidence the ascertainment of the controverted
R Judge Gatbalite in an order dated requirement of probable cause and in fact is made through demonstrations involving
CHOI, Respondent. November 29, 1999. Reconsideration the absence thereof, there can be no the direct use of the senses of the presiding
was likewise denied. finding of probable cause for the magistrate. Such auxiliary procedure, however,
does not rule out the use of testimonial or
issuance of search warrant. documentary evidence, depositions, admissions
According to the CA, in determining
whether there was probable cause to or other classes of evidence tending to prove
G.R. NO. 152950 :
August 3, 2006 believe that the cigarettes purchased
by Nieto were fake and in violation
of RA 8293, Judge Gatbalite failed to
ask searching and probing questions
of witness David Lee Sealey. In
addition, the CA ruled that Judge
Gatbalite committed grave abuse of
discretion when she merely relied on
the conclusion of Sealey that the
cigarettes he received from Nieto
were fake. She should have at least
required Sealey to present the alleged
fake Marlboro cigarettes and the
genuine ones for comparison, instead
of relying on his testimony alone.
The CA reasoned that this was an
absolute requirement under the
Supreme Court ruling in 20th
Century Fox Film Corporation v.
Court of Appeals.
the factum probandum, especially where the
production in court of object evidence would
result in delay, inconvenience or expenses out of
proportion to its evidentiary value.
3. No. Given the foregoing testimonies and
applying the established standards in determining
probable cause, we cannot say that Judge
Gatbalite committed grave abuse of discretion in
issuing the search warrant. Her questions were
sufficiently probing, not at all superficial and
perfunctory. The testimonies were consistent with
each other and the narration of facts was credible.
The testimonies and other evidence on record
constituted adequate bases to establish probable
cause that the alleged offense had been
committed.
Since probable cause is dependent largely on the
opinion and findings of the judge who conducted
the examination and who had the opportunity to
question the applicant and his witnesses, the
findings of the judge deserve great weight. The
reviewing court can overturn such findings only
upon proof that the judge disregarded the facts
before him or ignored the clear dictates of reason.
4. No. Unfair competition only. It is obvious
that 20th Century Fox Film Corporation should
not be applied to the present case since this
involves the offense of unfair competition and not
copyright infringement. More importantly, as
pronounced by the Court in Columbia

3. Whether Judge Gatbalite
purportedly did not comply strictly
with the requirement to determine the
existence of probable cause by
personally examining the applicant
and his witnesses through searching
questions and answers and issuance of
search warrant.
Pictures, Inc., the judge's exercise of discretion
should not be unduly restricted by adding a
requirement that is not sanctioned by law.
5. 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. Judicial dicta
should always be construed within the factual
matrix of their parturition, otherwise a careless
interpretation thereof could unfairly fault the
writer with the vice of overstatement and the
reader with the fallacy of undue generalization.
 4. Whether the case involves a
copyright infringement

5. Ruling in the 20th Century Fox

COPYRIGHTS 66 ABS-CBN v Phil. PMSI was granted a legislative (1) Whether PMSI is guilty of (1) NO. The Director-General of the IPO https://
Multi-Media franchise and was given a Provisional infringement in view of the alleged correctly found that PMSI is not engaged in lawphil.net/
System, G.R. No. Authority by the NTC to install, rebroadcasting. rebroadcasting and thus cannot be considered to judjuris/
175769-70, January operate and maintain a nationwide have infringed ABS-CBN’s broadcasting rights juri2009/
19, 2009 DTH satellite service. When it
commenced operations, it offered as
part of its program line-up ABS-CBN
Channels 2 and 23, NBN, Channel 4,
ABC Channel 5, GMA Channel 7,
RPN Channel 9, and IBC Channel
13, together with other paid premium
program channels.
ABS-CBN demanded for PMSI to
cease and desist from rebroadcasting
Channels 2 and 23.PMSI replied that
the rebroadcasting was in accordance
with the authority granted it by NTC
and its obligation under NTC
Memorandum Circular No. 4-08-
88, Section 6.2 of which requires all
cable television system operators
operating in a community within
Grade “A” or “B” contours to carry
the television signals of the
authorized television broadcast
stations. ABS-CBN contends that
PMSI’s unauthorized rebroadcasting
of Channels 2 and 23 is an
infringement of its broadcasting
rights and copyright under the IP
Code; that Memorandum Circular
No. 04-08-88 excludes DTH satellite
television operators; that the Court of
Appeals’ interpretation of the must-
carry rule violates Section 9 of
Article III of the Constitution because
it allows the taking of property for
public use without payment of just
and copyright. Evidently, PMSI would not jan2009/
qualify as a broadcasting organization because it gr_175769_200
does not have the aforementioned responsibilities 9.html
imposed upon broadcasting organizations, such as
ABS-CBN.
(2) Under the Rome Convention, rebroadcasting
is “the simultaneous broadcasting by one
broadcasting organization of the broadcast of
(2) What is rebroadcasting? another broadcasting organization.”
(3) The Working Paper prepared by the
Secretariat of the Standing Committee on
Copyright and Related Rights defines
broadcasting organizations as “entities that take
the financial and editorial responsibility for the
selection and arrangement of, and investment in,
the transmitted content.” 
(3) What are broadcasting organizations?
(4) 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
(4) What are the distinctions or
and 23 are concerned, PMSI merely retransmits
differences between ABS-CBN and
the same in accordance with Memorandum
PMSI?
Circular 04-08-88. With regard to its premium
channels, it buys the channels from content
providers and transmits on an as-is basis to its
viewers. Clearly, PMSI does not perform the
functions of a broadcasting organization; thus, it
cannot be said that it is engaged in rebroadcasting
 compensation. Respondents, on the Channels 2 and 23.
other hand, argue that PMSI’s
rebroadcasting of Channels 2 and 23
is sanctioned by Memorandum
Circular No. 04-08-88; that the must-
carry rule under the Memorandum
Circular is a valid exercise of police
power.
COPYRIGHTS 67 GMA v Central Sometime in February 2000, the 1) Whether the respondent, as a 1) Yes. Firstly, EO No. 205 is a law while https://
CATV, G.R. No. petitioner, together with the CATV operator, could show EO No. 436 is an executive issuance. For www.chanroble
176694, July 18, Kapisanan ng mga Brodkaster ng commercial advertisements in its one, we agree with the petitioner that the s.com/cralaw/
2014 CATV NTC and the CA proceeded from the wrong 2014julydecisio
Pilipinas, Audiovisual
premise that both EO No. 205 and EO No. ns.php?id=551
Communicators, Incorporated, Networks.
436 are statutes. This is a critical point to
Filipinas Broadcasting Network
consider since the NTC and the CA rulings
and Rajah Broadcasting Network,
on the merits would have no leg to stand on
Inc. (complainants), filed with the
had they properly appreciated the nature of
NTC a complaint against the
these two executive issuances.
respondent to stop it from
soliciting and showing
advertisements in its cable
EO No. 205 was issued by President Corazon
television (CATV)system,
Aquino on June 30, 1987. Under Section 6,
pursuant to Section 2 of Executive
Article 18 of the 1987 Constitution, the
Order (EO) No. 205. Under this
incumbent President shall continue to
provision, a grantee’s authority to
exercise legislative powers until
operate a CATV system shall not
infringe on the television and the first Congress is convened. The Congress
broadcast markets. The petitioner was convened only on July 27, 1987.
alleged that the phrase "television Therefore, at the
and broadcast markets" includes
the commercial or advertising time of the issuance of EO No. 205,
market. President Aquino was still exercising
legislative powers. In fact,
 the intent to regard EO No. 205 as a law is
clear under Section 7 thereof which provides
In its answer, the respondent
for the repeal
admitted the airing of commercial
advertisement on its CATV or modification of all inconsistent laws,
network orders, issuances and rules and regulations,
or parts thereof.
but alleged that Section 3 of EO
No. 436, which was issued by EO No. 436, on the other hand, is an
former President Fidel V. Ramos executive order which was issued by
on President Ramos in the
September 9, 1997, expressly exercise purely of his executive power. In
allowed CATVproviders to carry short, it is not a law.
advertisements and other similar
paid segments provided there is
consent from their program 2) The NTC and the CA, however, failed to
providers. consider the distinction between the two
executive orders. In
considering EO No. 436 as a law, the NTC
After the petitioner presented and
and the CA hastily concluded that it has
offered its evidence, the
validly qualified
respondent filed a motion to
dismiss by demurrer toevidence Section 2 of EO No. 205 and has amended
claiming that the evidence the provisions of MC 4-08-88. Following
presented by the complainants this wrong premise, the NTC and the CA
failed toshow how ruled that the respondent has a right to show
advertisements under Section 3 of EO No.
the respondent’s acts of soliciting
436.
and/or showing advertisements
infringed upon the television and
broadcast market. The incorrect interpretation by the NTC and
the CA led to the erroneous resolution of the
2) Was the interpretation of the NTC
petitioner’s complaint and appeal. While the
NTC granted the demurrer. It respondent indeed has the right to solicit and
ruled that since EO No. 205 does
not define "infringement," EO
No. 436
merely clarified or filled-in the
details of the term to mean that
the CATV operatorsmay show
advertisements, provided that they
secure the consent of their
program providers.
CA upheld NTC’s ruling.
correct? show advertisements, as will be discussed
below, the NTC and the CA incorrectly
interpreted and appreciated the relevant
provisions of the law and rules. We seek to
correct this error in the present case by ruling
that MC 4- 08-88 alone sufficiently resolves
the issue on whether the respondent could
show advertisements in its CATV networks.
In other words, EONo. 436 is not material in
resolving the substantive issue
before us.
3) Lastly, the CATV operators are not
prohibited from showing advertisements
under EO No. 205 and
its implementing rules and regulations, MC
4-08-88.
Section 6 of EO No. 205 expressly and
unequivocally vests with the NTC the
delegated legislative
authority to issue its implementing rules and
regulations.
Following this authority, the NTC has issued
the implementing rules and regulations of
EO No. 205
through MC 4-08-88. Its whereas clause
provides that it was issued pursuant to Act
No. 3846 and EO
No. 205 which granted the NTC the authority

3) Are the CATV operators prohibited
from showing advertisements under
EO No. 205 and
its implementing rules and
regulations, MC 4-08-88?
to set down rules and regulations on CATV
systems.
MC 4-08-88 has sufficiently filled-inthe
details of Section 2 of EO No. 205,
specifically the contentious
provisothat "the authority to operate [CATV]
shall not infringe on the television and
broadcast
markets."
4) An understanding of the "must-carry rule"
would show how it carries out the directive
of Section 2 of
EONo. 205 that the CATV operation must
not infringe upon the broadcast television
markets,
specifically the audience market. In ABS-
CBN Broadcasting Corporation v. Philippine
Multi-Media
System, Inc., the Court clarified the "must-
carry rule" and its interplay in the free-signal
TV, such as
the petitioner, and the CATV operators, such
as the respondent, and to quote:
Anyone in the country who owns a television
set and antenna can receive ABS-CBN’s
signals for free.

4) What is the must “carry rule”?
Other broadcasting organizations with free-
to-air signals such as GMA-7, RPN-9, ABC-
5, and IBC-13
can likewise be accessed for free. No
payment is required to view the said
channels because these
broadcasting networks do not generate
revenue from subscription from their viewers
but from
airtime revenue from contracts with
commercial advertisers and producers, as
well as from direct
sales.
5) In contrast, cable and DTH television earn
revenues from viewer subscription. In the
case of PMSI, it offers its customers
premium paid channels from content
providers like Star Movies, Star World, Jack
TV, and AXN, among others, thus allowing
its customers to go beyond the limits of "Free
TV and Cable TV." It does not advertise
itself as a local channel carrier because these
local channels can be viewed with or without
DTH television.
Relevantly, PMSI’s carriage of Channels 2
and 23 is material in arriving at the ratings
and audience
share of ABS-CBN and its programs. These
ratings help commercial advertisers and
producers decide
whether to buy airtime from the network.
Thus, the must-carry rule is actually
advantageous to the
broadcasting networks because it provides
them with increased viewership which
attracts commercial advertisers and
producers.

6) On the other hand, the carriage of free-to-

air signals imposes a burden to cable and
DTH television providers such as PMSI.
PMSI uses none of ABS-CBN’s resources or
equipment and carries the signals and
shoulders the costs without any recourse of
charging. Moreover, such carriage of signals
takes up channel space which can otherwise
be utilized for other premium paid channels.

Contrary to the petitioner’s claim, EO No.

205 was not issued solely for the benefit of
the free-signal
TV networks. In fact, it was issued to end the
monopoly of Sining Makulay, Inc. which
was granted by then President Ferdinand
Marcos an exclusive franchise, through
Presidential Decree (PD) No. 1512,
to operate CATV system anywhere within
the Philippines. EO No. 205 encouraged the

5) Is the must-carry rule is
advantageous to the
broadcasting networks?
growth of
CATV operation when it expressly repealed
PD No. 1512 thus encouraging competition
in the CATV industry. As stated in the
whereas clause of EO No. 205, the primary
purpose of the law in regulating
the CATV operations was for the protection
of the public and the promotion of the
general welfare.
MC 4-08-88 mirrored the legislative intent of
EO No. 205 and acknowledged the
importance of the
CATV operations in the promotion of the
general welfare. The circular provides in its
whereas clause
that the CATV has the ability to offer
additional programming and to carry much
improved broadcast
signals in the remote areas, thereby enriching
the lives of the rest of the population through
the dissemination of social, economic and
educational information, and cultural
programs.
7) Unavoidably, however, the improved
broadcast signals that CATV offers may
infringe or encroach
upon the audience or viewer market of the
free-signal TV. This is so because the latter’s

6) Did the carriage of free-to-air
signals imposes a burden to cable and
DTH television providers such as
PMSI?
signal may
not reach the remote areas or reach them
with poor signal quality. To foreclose this
possibility and
protect the free-TV market (audience
market), the must-carry rule was adopted to
level the playing
field. With the must-carry rule in place, the
CATV networks are required to carry and
show in full the
free local TV’s programs, including
advertisements, without alteration or
deletion. This, in turn,
benefits the public who would have a wide-
range of choices of programs or broadcast to
watch. This
also benefits the free-TV signal as their
broadcasts are carried under the CATV’s
much-improved
broadcast signals thus expanding their
viewer’s share.
8) In view of the discussion above, the Court
finds that the quoted sections of MC 4-08-88,
i.e., 6.2, 6.2.1, 6.4(a)(1) and 6.4(b) which
embody the "must-carry rule," are the
governing rules in the present case. These
provisions sufficiently and fairly implement
the intent of Section 2 of EO No. 205 to
protect the broadcast television market vis-à-
visthe CATV system. For emphasis, under
these rules, the phrase "television and
broadcast markets" means viewers or
audience market and not commercial
advertisement market as claimed bythe
petitioner. Therefore, the respondent’s act of
showing
advertisements does not constitute an
infringement of the "television and broadcast
markets" under
Section 2 of EO No. 205.

The implementing rules and regulations

embodied in this circular, whose validity is
undisputed by
the parties, "partake of the nature of a statute
and are just as binding as if they have been
written in
the statute itself. As such, they have the force
and effect of law and enjoy the presumption
of
constitutionality and legality until they are
set aside with finality in an appropriate case
by a
competent court."

7) Did the improved broadcast signals
that CATV offers may infringe or
encroach
upon the audience or viewer market of
the free-signal TV.
Doctrine:
In view of the discussion above, the Court
finds that the quoted sections of MC 4-08-88,
i.e., 6.2, 6.2.1,
6.4(a)(1) and 6.4(b) which embody the
"must-carry rule," are the governing rules in
the present case.
These provisions sufficiently and fairly
implement the intent of Section 2 of EO No.
205 to protect the
broadcast television market vis-à-visthe
CATV system. For emphasis, under these
rules, the phrase
"television and broadcast markets" means
viewers or audience market and not
commercial
advertisement market as claimed bythe
petitioner. Therefore, the respondent’s act of
showing
advertisements does not constitute an
infringement of the "television and broadcast
markets" under
Section 2 of EO No. 205.
8) Are sections of MC 4-08-88, i.e.,
6.2, 6.2.1, 6.4(a)(1) and 6.4(b) which

Plagiarism 68 A.M NO. 10-7-SC, In the landmark decision of
distinguished OCTOBER 15, Vinuya v. Executive Secretar,
from copyright 2010, In the matter G.R No. 162230, promulgated last
of charges of April 28, 2010, the SC dismissed
PLAGIARISM the petition filed by a group of
against Justice Del Filipino ‘’comfort women’’
Castillo during the Japanese military
occupation of the Phil. the Court,
speaking through Justice Del
Castillo, held that the petition
seeking to compel the Executive
Department to espouse the
petitioner’s claims for official
apology and other forms of
reparations against Japan before
the ICJ and other international
tribunals has no merit because: (1)
the prerogative to determine
whether to espouse petitioner’s
claims against Japan belongs
exclusively to the Executive
department; and (2) the Phil. is
not under any international
obligation to espouse the
petitioners claims. Discontented
with the foregoing decision, the
petitioners in Vinuya filed a
motion for reconsideration.
Subsequently, they also filed a
supplemental motion for
embody the "must-carry rule," are the
governing rules in the present case?
1.)WON Justice Del Castillo, in
writing the opinion for the court in the
Vinuya case, plagiarize the published
works of authors Tams, Criddle-
Descent, and Ellis.
1.) NO. At its most basic, plagiarism means https://
the theft of another person’s language, lawphil.net/
thoughts, or ideas. To plagiarize, as it is judjuris/
commonly understood according to Webster, juri2010/
is ‘’to take (ideas, writings, etc.) from oct2010/am_10-
another and pass them off as one’s own’’. 7-17-
The passing off of the work of another as sc_2010.html
one’s own is thus an indispensable element
of plagiarism. As regards that one passage
from prof. Tams, the Court believes that
whether or not the footnote is sufficient
detailed, so as to satisfy the footnoting
standards of counsel for petitioners is not an
ethical matter but one concerning clarity of
writing. The statement ‘’See Tams,
enforcing Obligations Erga Omnes in
International Law (2005)’’ in the Vinuya
decision is an attribution no matter if
Tams thought that it gave him somewhat
less credit than he deserved. Such
attribution altogether negates the idea that
Justice Del Castillo passed off the challenged
passages as his own.
That it would have been better had Justice
Del Castillo used the introductory phrase
‘’cited in’’ rather than the phrase ‘’See’’
would make a case of mere inadvertent slip
in attribution rather than a case of ‘’manifest
intellectual theft and outright plagiarism’’. If
reconsideration, this time
accusing the Justice Del Castillo
of plagiarizing (copying without
attribution) and twisting passages
from three foreign legal articles to
support the court’s position in the
Vinuya decision.
The court then referred the
charges against Justice Del
Castillo to its committee on ethics
and Ethical Standards, chaired by
Chief Justice Renato Corona, for
investigation and
recommendation. After the
proceedings before it, the
committee submitted its findings
and recommendations to the court
en banc, which treated and
decided the controversy as an
administrative matter.
the Justice’s citations were imprecise, it
would just be a case of bad footnoting rather
than one of the theft or deceit. If were
otherwise, many would be target of abuse for
every editorial error, for every mistake in
citing pagination, and for every technical
detail of form.
As regards the passage from Ellis, the court
notes that the lengthy passages in footnotes
65 of Vinuya came almost verbatim from
Ellis’ article but did not contain an
acknowledgement or introduction that they
are from that article. Moreover, as regards
the passages from the work of prof. Criddle
and Descent, it was also observed that the
Vinuya decision lifted the portions, including
their footnotes, from Criddle-Descent’s
article, A Fudiciary Theory of Jus Cogens as
footnotes in the Vinuya decision without any
attribution made to the teo authors. Unless
amply explained. These unattributed lifting
from the works f Ellis and Criddle-Descent
could be construed as plagiarism. The
explanation came from one of Justice Del
Castillo’s researchers, a court-employed
attorney. She explained how she accidentally
deleted the attributions, originally planted in
the beginning of the drafts of her report to
him, which report eventually became the
working draft of the decision. She said that
for most parts, she did her research
electronically. For international materials,
she sourced these mainly from Westlaw, an
online research service for legal and law-
related material to which the court
subscribes. The researcher showed the
committee the early drafts of her report in the
Vinuya case and these included the passages
lifted from the separate articles of Criddle-
descent and of Ellis with proper attributions
to these authors. But, as it happened, in the
course of editing and cleaning up her draft,
the researcher accidentally deleted the
attributions.

2.) NO. The decision in Vinuya did not twist

the passages from Tams, Criddle-Descent,
and Ellis. To twist means ‘’to distort or
pervert the meaning of’’. For example, if one
lifts the lyrics of the Nat’l Anthem, uses it in
his work, and declares that Jose Palma who
wrote it ‘’did not love his country’’, then
there is ‘’twisting’’ or misrepresentation of
what the anthem’s lyrics said. Here,
nothing in the Vinuya decision said or
implied that, based on the lifted passages,
authors Tams, Criddle-Descent, and Ellis
supported the Court’s conclusion that the
Phil. is not under any obligation in the
Int’l law to espuse Vinuya et al.’s claims.

3.) At its most basic, plagiarism means the

theft of another person’s language, thoughts,

2.) WON Justice Del Castillo twist the
works of these authors to make it
appear that such works supported the
Court’s position in the Vinuya
decision.
or ideas. To plagiarize, as it is commonly
understood according to Webster, is “to take
(ideas, writings, etc.) from (another) and pass
them off as one’s own.” The passing off of
the work of another as one’s own is thus an
indispensable element of plagiarism.
4.) YES. The Court adopts the Committee’s
finding that the researcher’s explanation
regarding the accidental removal of proper
attributions to the three authors is credible.
Given the operational properties of the
Microsoft program in use by the Court,
the accidental decapitation of attributions
to sources of research materials is not
remote.
5.) YES. But petitioners’ theory ignores the
fact that plagiarism is essentially a form of
fraud where intent to deceive is inherent.
Their theory provides no room for errors in
research, an unrealistic position considering
that there is hardly any substantial written
work in any field of discipline that is free of
any mistake. The theory places an automatic
universal curse even on errors that, as in this
case, have reasonable and logical
explanations. Indeed, the 8th edition of
Black’s Law Dictionary defines plagiarism
as the “deliberate and knowing presentation
of another person’s original ideas or creative
 expressions as one’s own.” Thus,
plagiarism presupposes intent and a
deliberate, conscious effort to steal
another’s work and pass it off as one’s
own.

3.) What is plagiarism?

 4.) WON Court adopts the
Committee’s finding that the
researcher’s explanation regarding the
accidental removal of proper
attributions to the three authors is
credible.

5.) WON plagiarism is essentially a

form of fraud where intent to deceive
is inherent; Plagiarism presupposes
intent and a deliberate, conscious
effort to steal another’s work and pass
it off as one’s own.

COPYRIGHTS 69 Olano v Co, G.R. Sometime in 2002, LEC was
No. 195835, March invited by the architects of the
14, 2016 Manansala Project (Project), a
high-end residential building in
Rockwell Center, Makati City, to
submit design/drawings and
specifications for interior and
exterior hatch doors. LEC
1) Whether there was copyright
infringement.
1) No. The respondent failed to substantiate https://
the alleged reproduction of the www.chanroble
drawings/sketches of hatch doors s.com/cralaw/
copyrighted under Certificate of Registration 2016marchdecis
Nos. 1-2004-13 and 1-2004-14. There is no ions.php?id=244
proof that the respondents reprinted the
copyrighted sketches/drawings of LEC's
hatch doors. The raid conducted by the NBI
complied by submitting on July
16, 2002, shop plans/drawings,
including the diskette therefor,
embodying the designs and
specifications required for the
metal hatch doors.
After a series of consultations and
revisions, the final shop
plans/drawings were submitted by
LEC
on January 15, 2004 and
thereafter copied and transferred
to the title block of Ski-First
Balfour Joint Venture (SKI-FB),
the Project's contractor, and then
stamped approved for
construction on February 3, 2004.
LEC was thereafter subcontracted
by SKI-FB, to manufacture and
install interior and exterior hatch
doors for the 7th to 22nd floors of
the Project based on the final shop
plans/drawings.
Sometime thereafter, LEC learned
that Metrotech was also
subcontracted to install interior
on Metrotech's premises yielded no copies or
reproduction of LEC's
copyrighted sketches/drawings of hatch
doors. What were discovered instead were
finished and
unfinished hatch doors.
Certificate of Registration Nos. 1-2004-13
and 1-2004-14 pertain to class work "I"
under Section 172
of R.A. No. 8293 which covers "illustrations,
maps, plans, sketches, charts and three-
dimensional
works relative to geography, topography,
architecture or science." As such, LEC's
copyright protection there under covered
only the hatch door sketches/drawings and
not the actual hatch door
they depict.
2) As the Court held in Pearl and Dean
(Philippines), Incorporated v. Shoemart,
Incorporated:
Copyright, in the strict sense of the term, is
purely a statutory right. Being a mere
statutory grant, the
rights are limited to what the statute confers.
and
exterior hatch doors for the
Project's 23rd to 41st floors.
On July 2, 2004, LEC deposited
with the National Library the final
shop plans/drawings of the
designs and specifications for the
interior and exterior hatch doors
of the Project. On July 6, 2004,
LEC was issued a Certificate of
Copyright Registration and
Deposit showing that it is the
registered owner of
plans/drawings for interior and
exterior hatch doors under
Registration Nos. 1-2004-13 and
1-2004- 14, respectively.14 This
copyright pertains to class work
"I" under Section 172 of Republic
Act (R.A.)
No. 8293, The Intellectual
Property Code of the Philippines,
which covers "illustrations, maps,
plans, sketches, charts and three-
dimensional works relative to
geography, topography,
architecture or science."
On December 9, 2004, LEC was
2) Is Copy right a purely statutory
right?
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.
3) Since the hatch doors cannot be
considered as either illustrations, maps,
plans, sketches, charts and three-dimensional
works relative to geography, topography,
architecture or science, to be properly
classified as a copyrightable class "I" work,
what was copyrighted were their
sketches/drawings only,
and not the actual hatch doors themselves.
To constitute infringement, the usurper must
have copied or appropriated the original
work of an author or copyright proprietor,
absent copying, there can be
no infringement of copyright.
4) "Unlike a patent, a copyright gives no
exclusive right to the art disclosed;
protection is given only to the expression of
the idea — not the idea itself."
The respondent claimed that the petitioners
issued another Certificate of
Copyright Registration and
Deposit
showing that it is the registered
owner of plans/drawings for
interior and exterior hatch doors
under Registration Nos. H-2004-
566 and H-2004-56715 which is
classified under Section 172(h) of
R.A. No. 8293 as "original
ornamental designs or models for
articles of manufacture, whether
or not registrable as an industrial
design, and other works of
applied art."
When Metrotech still refused to
stop fabricating hatch doors based
on LEC's shop plans/drawings,
the latter sought the assistance of
the National Bureau of
Investigation (NBI) which in turn
applied
for a search warrant before the
Regional Trial Court (RTC) of
Quezon City, Branch 24. The
application
was granted on August 13, 2004
thus resulting in the confiscation
of finished and unfinished metal
3) What constitute infringement?
4) Was respondent’s claim that
petitioners committed copyright
infringement when they
fabricated/ manufactured hatch doors
identical to those installed by LEC
committed copyright infringement when they
fabricated/manufactured hatch doors
identical to those installed by LEC. The
petitioners could not
have manufactured such hatch doors in
substantial quantities had they not
reproduced the
copyrighted plans/drawings submitted by
LEC to SK1-FB. This insinuation, without
more, does not
suffice to establish probable cause for
infringement against the petitioners.
"[Although the
determination of probable cause requires less
than evidence which would justify
conviction, it should
at least be more than mere suspicion."
Anent, LEC's Certificate of Registration Nos.
H-2004-566 and H-2004-567, the Court finds
that the
ownership thereof was not established by the
evidence on record because the element of
copyrightability is absent.
5) Yes. "Ownership of copyrighted material
is shown by proof of originality and
copyrightability." While
hatch doors as well as machines
used in fabricating and
manufacturing hatch doors from
the
premises of Metrotech.
On August 13, 2004, the
respondent filed a Complaint-
Affidavit17 before the DOJ
against the
petitioners for copyright
infringement. In the meantime or
on September 8, 2004, the RTC
quashed the search warrant on the
ground that copyright
infringement was not established.
correct/ it is true that where the complainant presents
a copyright certificate in support of the claim
of
Infringement, the validity and ownership of
the copyright is presumed. This presumption,
however,
is rebuttable and it cannot be sustained where
other evidence in the record casts doubt on
the
question of ownership, as in the instant case.
Moreover, "[t]he presumption of validity to a
certificate of copyright registration merely
orders the
burden of proof. The applicant should not
ordinarily be forced, in the first instance, to
prove all the
multiple facts that underline the validity of
the copyright unless the respondent,
effectively
challenging them, shifts the burden of doing
so to the applicant."
Here, evidence negating originality and
copyrightability as elements of copyright
ownership was satisfactorily proffered
against LEC's certificate of registration. The
following averments were not successfully
rebuffed by LEC:
 The hinges on LEC's "hatch doors" have no
ornamental or artistic value. In fact, they are
just similar to hinges found in truck doors
that had been in common use since the
1960's. The gaskets on LEC's "hatch doors",
aside from not being ornamental or artistic,
were merely procured from a company
named Pemko and are not original creations
of LEC. The locking device in LEC's "hatch
doors" are ordinary drawer locks commonly
5) Can "Ownership of copyrighted
used in furniture and office desks.
material by shown by proof of
originality and copyrightability?

6) In defending the copyright ability of its

hatch doors' design, LEC merely claimed:
LEC's Hatch Doors were particularly
designed to blend in with the floor of the
units in which they are
installed and, therefore, appeal to the
aesthetic sense of the owner of units or any
visitors thereto[;]
LEC's Hatch Doors have a distinct set of
hinges, a distinct door a distinct jamb, all of
which are both
functional or utilitarian and artistic or
ornamental at the same time; and Moreover,
the Project is a high-end residential building
located in the Rockwell Center, a very prime
area in Metro Manila. As such, the owner of
the Project is not expected to settle for Hatch
Doors that simply live up to their function as
such. The owner would require, as is the case
for the Project, Hatch Doors that not only
fulfill their utilitarian purposes but also
appeal to the artistic or ornamental sense of
their beholders.

7) From the foregoing description, it is clear

that the hatch doors were not artistic works
within the
meaning of copyright laws. A copyrightable
work refers to literary and artistic works
defined as
original intellectual creations in the literary
and artistic domain.

A hatch door, by its nature is an object of

utility. It is defined as a small door, small
gate or an opening
that resembles a window equipped with an
escape for use in case of fire or emergency. It
is thus
by nature, functional and utilitarian serving
as egress access during emergency. It is not
primarily an artistic creation but rather an
object of utility designed to have aesthetic
appeal. It is intrinsically a
useful article, which, as a whole, is not
eligible for copyright.

6) What did the SC said about the
Project, Hatch Doors?
8) A "useful article" defined as an article
"having an intrinsic utilitarian function that is
not merely to
portray the appearance of the article or to
convey information" is excluded from
copyright eligibility.
The only instance when a useful article may
be the subject of copyright protection is
when it
incorporates a design element that is
physically or conceptually separable from
the underlying
product. This means that the utilitarian
article can function without the design
element. In such an
instance, the design element is eligible for
copyright protection.
The design of a useful article shall be
considered a pictorial, graphic, or sculptural
work only if, and
only to the extent that, such design
incorporates pictorial, graphic, or sculptural
features that can be
identified separately from, and are capable of
existing independently of, the utilitarian
aspects of the
 article.

9) A belt, being an object utility with the

function of preventing one's pants from
falling down, is in itself
not copyrightable. However, an ornately
designed belt buckle which is irrelevant to or
did not
enhance the belt's function hence,
conceptually separable from the belt, is
eligible for copyright. It is
copyrightable as a sculptural work with
independent aesthetic value, and not as an
integral element
of the belt's functionality.

10) A table lamp is not copyrightable

because it is a functional object intended for
7) Is the hatch doors were artistic
the purpose of
works within the
providing illumination in a room. The
meaning of copyright laws?
general shape of a table lamp is likewise not
copyrightable
because it contributes to the lamp's ability to
illuminate the reaches of a room. But, a lamp
base in
the form of a statue of male and female
dancing figures made of semi vitreous china

8) What does it mean by “useful
article?”
is copyrightable
as a work of art because it is unrelated to the
lamp's utilitarian function as a device used to
combat
darkness.
11) In the present case, LEC's hatch doors
bore no design elements that are physically
and conceptually
separable, independent and distinguishable
from the hatch door itself. The allegedly
distinct set of
hinges and distinct jamb, were related and
necessary hence, not physically or
conceptually separable
from the hatch door's utilitarian function as
an apparatus for emergency egress. Without
them, the
hatch door will not function.
More importantly, they are already existing
articles of manufacture sourced from
different suppliers.
Based on the records, it is unrebutted that:
(a) the hinges are similar to those used in
truck doors; (b)
the gaskets were procured from a company
named Pemko and are not original creations
of LEC; and
(c) the locking device are ordinary drawer
locks commonly used in furniture and office
desks.
Being articles of manufacture already in
existence, they cannot be deemed as original
creations. As
earlier stated, valid copyright ownership
denotes originality of the copyrighted
material. Originality
means that the material was not copied,
evidences at least minimal creativity and was
independently
created by the author. It connotes production
as a result of independent labor. LEC did not
produce
the door jambs and hinges; it bought or
acquired them from suppliers and thereafter
affixed them to
the hatch doors. No independent original
creation can be deduced from such acts.

12) NO. The same is true with respect to the

design on the door's panel. As LEC has
stated, the panels were "designed to blend in
with the floor of the units in which they
[were] installed. "Photos of the panels

9) Can a “belt” copyrightable?
10) Is a “table lamp” copyrightable?
indeed show that their color and pattern
design were similar to the wooden floor
parquet of the
condominium units. This means that the
design on the hatch door panel was not a
product of LEC's
independent artistic judgment and discretion
but rather a mere reproduction of an already
existing
design.
Verily then, the CA erred in holding that a
probable cause for copyright infringement is
imputable
against the petitioners. Absent originality and
copyrightability as elements of a valid
copyright
ownership, no infringement can
subsist.chanroblesles
Doctrine:
Since the hatch doors cannot be considered
as either illustrations, maps, plans, sketches,
charts and
three-dimensional works relative to
geography, topography, architecture or
 science, to be properly
classified as a copyrightable class "I" work,
what was copyrighted were their
sketches/drawings only,
and not the actual hatch doors themselves.
To constitute infringement, the usurper must
have copied or appropriated the original
work of an author or copyright proprietor,
absent copying, there can be no infringement
of copyright.

"Unlike a patent, a copyright gives no

exclusive right to the art disclosed;
protection is given only to the
expression of the idea — not the idea itself."
A copyrightable work refers to literary and
artistic works defined as original intellectual
creations in
the literary and artistic domain.

11) Is the hatch doors subject of this

case copyrightable?
A hatch door, by its nature is an object of
utility. It is defined as a small door, small
gate or an opening
that resembles a window equipped with an
escape for use in case of fire or
emergency.64 It is thus by
nature, functional and utilitarian serving as
egress access during emergency. It is not
primarily an
artistic creation but rather an object of utility
designed to have aesthetic appeal. It is
intrinsically a
useful article, which, as a whole, is not
eligible for copyright.
12) Was the design on the hatch door
panel a product of LEC's
independent artistic judgment and

Fair Use 70 Harper & Row, In 1977, former President Ford
Publishers v. Nation contracted with petitioners to
Enterprises, 471 publish his as yet unwritten
U.S. 539 (1985) - memoirs. The agreement gave
petitioners the exclusive first
serial right to license
prepublication excerpts. Two
years later, as the memoirs were
nearing completion, petitioners, as
the copyright holders, negotiated
a prepublication licensing
agreement with Time Magazine
under which Time agreed to pay
$25,000 ($12,500 in advance and
the balance at publication) in
exchange for the right to excerpt
7,500 words from Mr. Ford's
account of his pardon of former
President Nixon. Shortly before
the Time article's scheduled
release, an unauthorized source
provided The Nation Magazine
with the unpublished Ford
manuscript. Working directly
from this manuscript, an editor of
The Nation produced a 2,250-
word article, at least 300 to 400
words of which consisted of
verbatim quotes of copyrighted
expression taken from the
manuscript. It was timed to
discretion?
1) Does publication of parts of a work
soon to be published qualify as fair
use?
1) NO. The Nation's article was not a "fair use" https://
(a) In using generous verbatim excerpts of Mr. supreme.justia.c
Ford's unpublished expression to lend om/cases/
authenticity to its account of the forthcoming federal/us/
memoirs, The Nation effectively arrogated to 471/539/
itself the right of first publication, an important
marketable subsidiary right.
(b) Though the right of first publication, like
other rights enumerated in § 106, is expressly
made subject to the fair use provisions of § 107,
fair use analysis must always be tailored to the
individual case. The nature of the interest at stake
is highly relevant to whether a given use is fair.
The unpublished nature of a work is a key,
though nparodot necessarily determinative, factor
tending to negate a defense of fair use. And under
ordinary circumstances, the author's right to
control the first public appearance of his
undisseminated expression will outweigh a claim
of fair use.
(c) In view of the First Amendment's protections
embodied in the Act's distinction between
copyrightable expression and uncopyrightable
facts and ideas, and the latitude for scholarship
and comment traditionally afforded by fair use,
there is no warrant for expanding, as respondents
contend should be done, the fair use doctrine to
what amounts to a public figure exception to
copyright. Whether verbatim copying from a
public figure's manuscript in a given case is or is
not fair must be judged according to the
traditional equities of fair use.
(d) Taking into account the four factors
enumerated in § 107 as especially relevant in
"scoop" the Time article. As a
result of the publication of The
Nation's article, Time canceled its
article and refused to pay the
remaining $12,500 to petitioners.
Petitioners then brought suit in
Federal District Court against
respondent publishers of The
Nation, alleging, inter alia,
violations of the Copyright Act
(Act). The District Court held that
the Ford memoirs were protected
by copyright at the time of The
Nation publication and that
respondents' use of the
copyrighted material constituted
an infringement under the Act,
and the court awarded actual
damages of $12,500. The Court of
Appeals reversed, holding that
The Nation's publication of the
300 to 400 words it identified as
copyrightable expression was
sanctioned as a "fair use" of the
copyrighted material under § 107
of the Act. Section 107 provides
that notwithstanding the
provisions of § 106 giving a
copyright owner the exclusive
right to reproduce the copyrighted
work and to prepare derivative
works based on the copyrighted
work, the fair use of a copyrighted
work for purposes such as
determining fair use, leads to the conclusion that
the use in question here was not fair. (i) The fact
that news reporting was the general purpose of
The Nation's use is simply one factor. While The
Nation had every right to be the first to publish
the information, it went beyond simply reporting
uncopyrightable information and actively sought
to exploit the headline value of its infringement,
making a "news event" out of its unauthorized
first publication. The fact that the publication was
commercial as opposed to nonprofit is a separate
factor tending to weigh against a finding of fair
use. Fair use presupposes good faith. The
Nation's unauthorized use of the undisseminated
manuscript had not merely the incidental effect
but the intended purpose of supplanting the
copyright holders' commercially valuable right of
first publication. (ii) While there may be a greater
need to disseminate works of fact than works of
fiction, The Nation's taking of copyrighted
expression exceeded that necessary to
disseminate the facts and infringed the copyright
holders' interests in confidentiality and creative
control over the first public appearance of the
work. (iii) Although the verbatim quotes in
question were an insubstantial portion of the Ford
manuscript, they qualitatively embodied Mr.
Ford's distinctive expression and played a key
role in the infringing article. (iv) As to the effect
of The Nation's article on the market for the
copyrighted work, Time's cancellation of its
projected article and its refusal to pay $12,500
were the direct effect of the infringing
publication. Once a copyright holder establishes a
causal connection between the infringement and
loss of revenue, the burden shifts to the infringer
to show that the damage would have occurred had
there been no taking of copyrighted expression.
Petitioners established a prima facie case of
actual damage that respondents failed to rebut.
comment and news reporting is
not an infringement of copyright.
Section 107 further provides that
in determining whether the use
was fair the factors to be
considered shall include: (1) the
purpose and character of the use;
(2) the nature of the copyrighted
work; (3) the substantiality of the
portion used in relation to the
copyrighted work as a whole; and
(4) the effect on the potential
market for or value of the
copyrighted work.
More important, to negate a claim of fair use it
need only be shown that if the challenged use
should become widespread, it would adversely
affect the potential market for the copyrighted
work. Here, The Nation's liberal use of verbatim
excerpts posed substantial potential for damage to
the marketability of first serialization rights in the
copyrighted work.
2) No. Respondents failed to establish that their
unauthorized use of quotations from a public
figure's unpublished manuscript was sanctioned
by the fair use doctrine. Respondents admitted to
lifting verbatim quotes. The unpublished nature
of book was a key factor that negated the defense
of fair use. The four statutory factors relevant to
determining whether the use was fair were not
satisfied. Respondents use had the intended
purpose of supplanting copyright holder's
commercially valuable right of first publication.
The use infringed upon the copyright holder's
interest in confidentiality and creative control.
Respondents took what was essentially the heart
of the book and copied much of it verbatim.
Finally, the use of copyrighted material had an
actual effect on the market for first rights to
publish excerpts from the book.
Doctrine:
The fact that a publication was commercial as
opposed to nonprofit is a separate factor that
tends to weigh against a finding of fair use. Every
commercial use of copyrighted material is
presumptively an unfair exploitation of the
monopoly privilege that belongs to the owner of
the copyright.
 2) Does lifting excerpts on the
unpublished memoirs of the President
amount to fair use?

Is parody 71 CAMPBELL, AKA Acuff-Rose Music, Inc. brought a suit 1. Whether there was a copyright 1. No copyright infringement. The Supreme https://
equivalent to SKYYWALKER, against Luther R. Campbell, infringement Court reversed the circuit court ruling. The supreme.justia.c
Christopher Wongwon, Mark Ross, Court’s opinion, written by Justice David H.
copyright ET om/cases/
and David Hobbs — collectively Souter, stated that the rap song would have
infringement AL. V. ACUFFROS known as 2 Live Crew. infringed on copyright were it not “for a finding federal/us/
E MUSIC, INC. of fair use through parody.” 510/569/
The sometimes-raunchy rap group
Substantial produced a parody of “Oh, Pretty 2. It further noted that the doctrine of fair use had
copying Woman” that began with the been “judge-made doctrine” until the Copyright
CERTIORARI TO original’s opening line and then Act of 1976.
THE UNITED substituted plays on words for the
STATES COURT OF other lyrics; the music was obviously That law established four criteria for fair use
APPEALS FOR THE identifiable as derived from the based on the purpose and character of the use,
SIXTH CIRCUIT original. including:
2. Doctrine of fair use
No. 92-1292. Argued A federal district court in Nashville,  whether use is of a commercial nature or
November 9, 1993- Tennessee, ruled that 2 Live Crew’s for nonprofit educational purposes;
Decided March song had made “fair use” of the  the nature of the copyrighted work;
7,1994 original, but the Sixth Circuit Court  the amount and substantiality of the
of Appeals reversed on the basis of portion used in relation to the
the copyright act. copyrighted work as a whole; and
 the effect of the use upon the potential
market for or value of the copyrighted
work.

Souter noted that these four criteria could not “be

treated in isolation, one from another,” but were
to “be explored and the results weighed together,
in light of the purposes of copyright.”

Souter thought that the circuit court had unduly

focused on the first factor without acknowledging
that parody, by its nature, transforms an original.

3. “Parody needs to mimic an original to make its

point, and so has some claim to use the creation
of its victim’s (or collective victims’)
imagination, whereas satire can stand on its own
two feet and so requires justification for the very
act of borrowing.”

That parody may not be in good taste “does not

and should not matter to fair use.”

4. The Court of Appeals erred in resolving the

fourth §107 factor, "the effect of the use upon the
potential market for or value of the copyrighted
work," by presuming, in reliance on Sony,
supra, at 451, the likelihood of significant market
harm based on 2 Live Crew's use for commercial
gain. No "presumption" or inference of market
harm that might find support in Sony is applicable
to a case involving something beyond mere
duplication for commercial purposes. The
cognizable harm is market substitution, not any
harm from criticism. As to parody pure and
simple, it is unlikely that the work will act as a
substitute for the original, since the two works
usually serve different market functions. The
fourth factor requires courts also to consider the

3. Nature of Parody in relation to
copyright infringement
potential market for derivative works.
If the later work has cognizable substitution
effects in protectable markets for derivative
works, the law will look beyond the criticism to
the work's other elements. 2 Live Crew's song
comprises not only parody but also rap music.
The absence of evidence or affidavits addressing
the effect of 2 Live Crew's song on the derivative
market for a non-parody, rap version of "Oh,
Pretty Woman" disentitled 2 Live Crew, as the
proponent of the affirmative defense of fair use,
to summary judgment.
5. Yes. The Court of Appeals erred in holding
that, as a matter of law, 2 Live Crew copied
excessively from the Orbison original under the
third §107 factor, which asks whether "the
amount and substantiality of the portion used in
relation to the copyrighted work as a whole" are
reasonable in relation to the copying's purpose.
Even if 2 Live Crew's copying of the original's
first line of lyrics and characteristic opening bass
riff may be said to go to the original's "heart,"
that heart is what most readily conjures up the
song for parody, and it is the heart at which
parody takes aim. Moreover, 2 Live Crew
thereafter departed markedly from the Orbison
lyrics and produced otherwise distinctive music.
As to the lyrics, the copying was not excessive
in relation to the song's parodic purpose. As to
the music, this Court expresses no opinion
whether repetition of the bass riff is excessive
copying, but remands to permit evaluation of the
amount taken, in light of the song's parodic
purpose and character, its transformative
 elements, and considerations of the potential
for market substitution
4. Whether the Court of Appeals erred
in resolving the fourth §107 factor,
"the effect of the use upon the
potential market for or value of the
copyrighted work," by presuming, in
reliance on Sony, supra, at 451, the
likelihood of significant market harm
based on 2 Live Crew's use for
commercial gain.
5. Whether the Court of Appeals
erred in holding that, as a matter of
law, 2 Live Crew copied excessively
from the Orbison original under the
third §107 factor, which asks whether
"the amount and substantiality of the
portion used in relation to the
copyrighted work as a whole" are
reasonable in relation to the copying's
purpose.
Fair use 72 New Era Plaintiff New Era Publications (1) Whether the unauthorized (1) YES. The court found that defendant’s https://
Publications Int'l v. International, ApS (New Era) was quotation of published works in a use of Hubbard’s works was fair use. The h2o.law.harvar
Carol Publishing the exclusive licensee of all biography constitutes fair use. court first found that defendant’s unfavorable d.edu/cases/
5174
Group, 904 F.2d Church of Scientology founder L. biography fit comfortably within the
152 (2d Cir.), cert. Ron Hubbard’s writings. categories of uses that could be fair –namely
denied, 498 U.S. Defendant Carol Publishing criticism, scholarship, and research– because
921 (1990) Group intended to publish an A Piece of Blue Sky was designed “to
approximately 527-page educate the public about Hubbard, a public
manuscript titled A Piece of Blue figure who sought public attention,” and
Sky: Scientology, Dianetics and used quotes to further that purpose rather
L. Ron Hubbard Exposed (A than to unnecessarily appropriate Hubbard’s
Piece of Blue Sky), “an literary expression. The court also found that
unfavorable biography of defendant’s book quoted from a small
Hubbard and a strong attack on portion of plaintiff’s writings and did not
Scientology,” written by a former take the heart of the works. Further, the
member of the Church. In both quoted works were all published, which the
the text and at the beginning of court pointed out allows for a “greater
many chapters, the author quoted amount of copying.” Even though plaintiff
widely from Hubbard’s argued that defendant’s biography harmed
substantial body of published any future biography they may authorize, the
works. Defendant publisher court concluded that there was not a negative
appealed the district court’s ruling effect on plaintiff’s market because potential
that the author’s use of Hubbard’s customers for an authorized favorable
writing was not a fair use. biography would likely not be deterred from
buying it on the basis that an unfavorable
biography used the same sources.
Furthermore, the court found that even if A
Piece of Blue Sky’s negative critique did
dissuade customers from purchasing an
authorized biography, such harm “would not

(2)  Does the book's use of Hubbard's
works serve any fair use purpose?
(3) Is there a valid copyright?
result from unfair infringement forbidden by
the copyright laws, but rather from a
convincing work that effectively criticizes
Hubbard, the very type of work that the
Copyright Act was designed to protect and
encourage.”
(2) The author uses the quotations in part to
convey the facts contained therein, and not for
their expression. More importantly, even
passages used for their expression are intended to
convey the author's perception of Hubbard's
hypocrisy and pomposity, qualities that may best
(or only) be revealed through direct quotation.
The book "is not merely the product of `the facile
use of the scissors.'" 
(3) New Era states that the copyright has not
expired because, the copyright notice
notwithstanding, the Manual is unpublished.
Under section 26 of the 1909 Act, the date of
publication is the date when copies are "placed on
sale, sold, or publicly distributed." New Era notes
that there is a blank in its copyright application in
the space provided for the date of publication and
the registration form states that the date of
publication is to be included "ONLY if this work
has been published."
However, New Era had previously asserted
that the work is published. New Era fails to
offer an explanation for the date on the
copyright notice or its earlier assertion that
the Manual is published. Because
 the Manual was published with a copyright
notice in 1959, its copyright expired in 1987.
Accordingly, that work is no longer entitled
to copyright protection and the passages
from it contained in the book will not be
considered in determining New Era's claim
of infringement. 

(4) The privilege of fair use, a common-law

doctrine codified in section 107 of the 1976 Act,
allows a reasonable use of copyrighted materials
without the consent of the owner. 

(4) What is the privilege of fair use?

Fair use 73 CASTLE ROCK Plaintiff Castle Rock is the 1. What it the right of a copyright 1. The Copyright Act of 1976 https://
ENTERTAINMEN producer and copyright owner of owner? ("Copyright Act"), 17 U.S.C. §§ 101-803, law.justia.com/
T, Plaintiff, each episode of the Seinfeld grants copyright owners a bundle of cases/federal/
television series. The series exclusive rights, including the rights to district-
v. revolves around the petty "reproduce the copyrighted work in copies" courts/FSupp/
CAROL tribulations in the lives of four and "to prepare derivative works based upon 955/260/15161
PUBLISHING single, adult friends in New the copyrighted work." Id. § 106. 24/
GROUP, INC., and York: Jerry Seinfeld, George
Beth B. Golub, Costanza, Elaine Benes, and
Defendants. Cosmo Kramer. Defendants are 2. "Copyright infringement is established
Beth Golub, the author, and when the owner of a valid copyright
No. 95 CIV. Carol Publishing Group, Inc., the demonstrates unauthorized copying."
0775(SS). publisher, of The SAT, a 132-
page book containing 643 trivia
United States
questions and answers about the 2. What is copyright
District Court, S.D. events and characters depicted in
New York. Seinfeld. These include 211
multiple choice questions, in
February 27, which only one out of three to
1997.955 F. Supp. five answers is correct; 93
260 (1997) matching questions; and a
number of short-answer
questions. The questions are
divided into five levels of
difficulty, labeled (in increasing
order of difficulty) "Wuss
Questions," "This, That, and the
Other Questions," "Tough
Monkey Questions," "Atomic
Wedgie Questions," and "Master
of Your Domain Questions."
The book drew from the
majority of television episodes.
The name of the television series
appeared prominently on the
book's front and back covers and
pictures of the principal
television actors appeared on the
cover and within the book.
However, the back cover
contained a disclaimer stating
that the book was not approved
or licensed by any entity
involved in creating or producing
the television show. Castle Rock
filed an action against defendants
alleging federal copyright and
trademark infringement and state
law unfair competition.
Both parties moved for
infringement?
3. There are two main components of
this prima facie case of infringement: "a
plaintiff must first show that his work was
actually copied . . . . [and] then must show
that the copying amounts to an improper or
unlawful appropriation."
3. What are the component of this Actual copying may be established
prima facie case of infringement? "either by direct evidence of copying or
by indirect evidence, including access to
the copyrighted work, similarities that
are probative of copying between the
works, and expert testimony." As we
have noted
before, "probative," rather than
"substantial" similarity is the correct
term in referring to the plaintiff's initial
burden of proving actual copying by
indirect evidence. It is only after actual
copying is established that one claiming
infringement" then proceeds to
demonstrate that the copying was
improper
or unlawful by showing that the second
work bears "substantial similarity" to
protected expression in the earlier work.
4. Yes. In the instant case, no one
disputes that Castle Rock owns valid
copyrights in the Seinfeld television
programs and that defendants actually
copied from those programs in creating The
SAT. Golub freely admitted that she created
summary judgment. The trial The SAT by taking notes from Seinfeld
court granted summary judgment programs at the time they were aired on
to plaintiff on the copyright television and subsequently reviewing
claim and defendants were videotapes of several of the episodes that
permanently enjoined from she or her friends recorded. Since the fact of
publishing book. It held that copying is acknowledged and undisputed,
defendants had violated the critical question for decision is whether
plaintiff's copyrights in Seinfeld the copying was unlawful or improper in
and that such copying did not that it took a sufficient amount of protected
constitute fair use. Parties expression from Seinfeld as evidenced by
stipulated to dismissal of its substantial similarity to such expression.
remaining claims. Defendants
now appeal.
4. Whether Castle Rock owns 5. Under the "ordinary observer" test, for
valid copyrights in the Seinfeld TV example, "two works are substantially
program. similar where 'the ordinary observer, unless
he set out to detect the disparities, would be
disposed to overlook them, and regard [the]
aesthetic appeal [of the two works] as the
same.'

6. Under the "total concept and feel" test,

urged by defendants, we analyze "the
similarities in such aspects as the total
concept and feel, theme, characters, plot,
sequence, pace, and setting" of the original
and the allegedly infringing works.

7. The "fragmented literal similarity"

test, which focuses upon copying of direct
quotations or close paraphrasing, or the
"comprehensive nonliteral similarity" test,
which examines whether "the fundamental
essence or structure of one work is

5. What is the "ordinary observer"
test?
6. What is the "total concept and
feel" test?
7. What is the "fragmented literal
similarity" test?
duplicated in another."
8. In the Copyright Act, Congress
restated the common law tradition of fair
use:
The fair use of a copyrighted work . . .
for purposes such as criticism, comment,
news reporting, teaching (including
multiple copies for classroom use),
scholarship, or research,
is not an infringement of copyright. In
determining whether the use made of a
work in any particular case is a fair use
the factors to be considered shall
include--
(1) the purpose and character of the use,
including whether such use is of a
commercial nature or is for nonprofit
educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the
portion used in relation [**26] to the
copyrighted work as a whole; and
(4) the effect of the use upon the
potential market for or value of the
copyrighted work.
9. The first fair use factor to consider is
"the purpose and character of the [allegedly
infringing] use, including whether such use

8. What is the common law
tradition of fair use under the
Copyright Act?
is of a commercial nature or is for nonprofit
educational purposes." That The SAT's use
is commercial, at most, "tends to weigh
against a finding of fair use." But we do not
make too much of this point. As noted in
Campbell, "nearly all of the illustrative uses
listed in the preamble paragraph of § 107,
including news reporting, comment,
criticism, teaching, scholarship, and
research . . . are generally conducted for
profit in this country," and "no man but a
blockhead ever wrote, except for money,"
We therefore do not give much weight to
the fact that the secondary use was for
commercial gain. In short, "the goal of
copyright, to promote science and the arts,
is generally furthered by the creation of
transformative works."
Second, defendants style The SAT as a
work "decoding the obsession with . . .
and mystique that surrounds 'Seinfeld,'"
by "critically restructuring [Seinfeld's
mystique] into a system complete with
varying levels of 'mastery' that relate the
reader's control of the show's trivia to
knowledge of and identification with
their hero, Jerry Seinfeld." Citing one of
their own experts for the proposition that
"the television environment cannot speak
for itself but must be spoken for and
about," defendants argue that "The SAT
is a quintessential example of critical
text of the TV environment . . . .
exposing all of the show's nothingness to
articulate its true motive forces and its
social and moral dimensions." Castle

9. What are the purpose and
character of fair use?
Rock dismisses these arguments as post
hoc rationalizations, claiming that had
defendants been half as creative in
creating The SAT as were their lawyers
in crafting these arguments about
transformation, defendants might have a
colorable fair use claim.
10. No. Although a secondary work need
not necessarily transform the original work's
expression to have a transformative
purpose, (discussing reproduction of entire
works in judicial proceedings), the fact that
The SAT so minimally alters Seinfeld's
original expression in this case is further
evidence of The SAT's lack of
transformative purpose. To be sure, the act
of testing trivia about a creative work, in
question and answer form, involves some
creative expression. While still minimal, it
does require posing the questions and hiding
the correct answer among three or four
incorrect ones.6 Also, dividing the trivia
questions into increasing levels of difficulty
is somewhat more original than arranging
names in a telephone book in alphabetical
order. The SAT's incorrect multiple choice
answers are also original. However, the
work as a whole, drawn directly from the
Seinfeld episodes without substantial
alteration, is far less transformative than
other works we have held not to constitute
fair use.
 11. A "derivative work," over which a
copyright owner has exclusive control, is
defined as a work based upon one or more
preexisting works, such as a translation,
musical arrangement, dramatization,
fictionalization, motion picture version,
sound recording, art reproduction,
abridgment, condensation, or any other
form in which a work may be recast,
transformed, or adapted.

12. The second statutory factor, "the

nature of the copyrighted work, calls for
recognition that some works are closer to
the core of intended copyright protection
than others, with the consequence that fair
use is more difficult to establish when the
former works are copied." De fendants
concede that the scope of fair use is
somewhat narrower with respect to fictional
works, such as Seinfeld, than to factual
works. Although this factor may be of less
(or even of no) importance when assessed in
the context of certain transformative uses,
the fictional nature of the copyrighted work
remains significant in the instant case,
where the secondary use is at best
minimally transformative. Thus, the second
statutory factor favors the plaintiff.

13. No. Considering all of the factors

discussed above, we conclude that the
copyright law's objective "to promote the
Progress of Science and useful Arts" would
 be undermined by permitting The SAT's
copying of Seinfeld, and we therefore reject
defendants' fair use defense. Finally, we
note that defendants do not assert that
Castle Rock abandoned, forfeited, or
misused copyrights in Seinfeld, and that
defendants have asserted no defense on
appeal other than that of fair use.
Undoubtedly, innumerable books could
"expose" the "nothingness" or otherwise
comment upon, criticize, educate the public
about, or research Seinfeld and
contemporary television culture. The SAT,
however, is not such a book. For the reasons
set forth above, the judgment of the district
court is affirmed.

10. Is The SAT covered by fair

use?
11. What is derivative work?
 12. What is the nature of the
copyrighted work?
 13. Can The Sat be permitted to
copy Seinfeld by virtue of fair use?

Fair use 74 Sixto NÚÑEZ, Appellant Núñez, a professional 1. Whether the reproduction of 1. Yes. The court affirmed the decision. https://
Plaintiff, Appellant, photographer, took several independently newsworthy Three of the four factors in the fair use caselaw.findlaw.
v. CARIBBEAN photographs of Joyce Giraud photographs without permission a inquiry favored a finding of fair use, and the com/us-1st-
INTERNATIONAL (Miss Puerto Rico Universe 1997) "fair use" pursuant to 17 U.S.C. § remaining factor was not relevant. A fair use circuit/
NEWS CORP. (El for use in Giraud's modeling 107 when those photographs were existed because the photographs were 1286688.html
Vocero De Puerto portfolio.   Núñez then acquired and reproduced in good faith particularly newsworthy, defendant acquired
the photographs in good faith, and the
Rico), Defendant, distributed the photographs to and the work had already been
photographs had already been disseminated.
Appellee. various members of the Puerto distributed on a limited basis
Rico modeling community in
No. 99-2266. accordance with normal practice.
  After the photographs had been
Decided: December
taken, some controversy arose
21, 2000
over whether they were
appropriate for a Miss Puerto
Rico Universe, based on the fact
that Giraud was naked or nearly
naked in at least one of the
photos.   A local television
program displayed the
photographs on screen and asked
random citizens whether they
believed the photographs were
“pornographic.”   Giraud was
interviewed by two local
television stations as to her fitness
to retain the Miss Universe Puerto
Rico crown.   El Vocero then
obtained several of the
photographs through various
means.   Over the next week,
without Núñez's permission, three
of his photographs appeared in El
Vocero, along with several
articles about the controversy.
Núñez claimed that the reprint of
his photographs in El Vocero
without his permission violated
the Copyright Act of 1976.   The
district court applied the fair use
test of 17 U.S.C. § 107.1   believed in good faith that the photographs
Focusing on the “newsworthy”
nature of the photographs, the
2. Whether fair use is a question of
law or a fact
3. Whether good faith can be raised a
defense
2. Fair use is a mixed question of law and
fact. When a district court has found
sufficient facts to evaluate each of the
statutory factors, the appellate court need not
remand but may determine fair use as a
matter of law. Although the factors
enumerated by Congress in 17 U.S.C.S. §
107 are not meant to be exclusive, they are
especially relevant to the overall fair use
inquiry. The appellate court thus examines
each factor in turn. The ultimate
determination of whether a use is fair
requires a case-by-case analysis in which the
four factors are to be weighed together in
light of the purposes of copyright.
3. Yes. Appellee's good faith also weighs in
its favor on this prong of the fair use test.
First, El Vocero attributed the photographs to
Núñez.   Although acknowledgment does
not excuse infringement, the failure to
acknowledge counts against the
infringer.  Second, El Vocero obtained each
of the photographs lawfully.   An unlawful
acquisition of the copyrighted work
generally weighs against a finding of fair
use; no such theft occurred here. Third, as
the district court explicitly found, El Vocero
did not aim to use the photographs to
compete with Núñez, nor to supplement his
right of first production, as the photographs
had already been distributed to the modeling
community. Finally, appellee asserts that it
were available for general, unrestricted
circulation and redistribution, and appellant
difficulty of presenting the story
without the photographs, and the
minimal effect on Núñez's
photography business, the court
concluded that El Vocero had met
the requirements of § 107 and
dismissed the complaint with
prejudice.
offers little evidence to rebut this assertion.
In sum, the highlighting of the photograph on
the front cover of El Vocero exposes the
commercial aspect of the infringing use, and
counts against the appellee.   However, the
informative nature of the use, appellee's good
faith, and the fact that it would have been
difficult to report the news without reprinting
the photograph suggest that on the whole,
this factor is either neutral or favors a finding
of fair use.
4. Yes. The fourth statutory factor requires
us to consider “the effect of the use upon the
potential market for or value of the
copyrighted work.” It is true that El Vocero's
use of the photograph without permission
essentially destroys this market.   There is
no evidence, however, that such a market
ever existed in this case.   Núñez does not
suggest that he ever tried to sell portfolio
photographs to newspapers, or even that he
had the right to do so under the contract with
Giraud. Although it is more likely that other
photographers do engage in such sales, and
thus that widespread conduct of the type
committed by El Vocero could destroy the
newspaper sale market as a whole, we note
again the context of this case.   Surely the
market for professional photographs of
models publishable only due to the
controversy of the photograph itself is small
or nonexistent.  Because the only discernible
effect of the publication in El Vocero was to
increase demand for the photograph, and
 because any potential market for resale
directly to the newspaper was unlikely to be
developed, this factor favors a finding of fair
use.

5.  In determining whether the use made of a

work in any particular case is a fair use, the
factors to be considered shall include-(1) the
purpose and character of the use, including
whether such use is of a commercial nature
or is for nonprofit educational purposes;(2) 
the nature of the copyrighted work;(3) the
amount and substantiality of the portion used
in relation to the copyrighted work as a
whole;  and(4) the effect of the use upon the
potential market for or value of the
copyrighted work.The fact that a work is
unpublished shall not itself bar a finding of
fair use if such finding is made upon
consideration of all of the above factors.

4. Whether the fourth statutory factor

of fair use on the effect on market was
appreciated on the case
 5. Factors to be considered in fair use

Fair use 75 Video Pipeline, Inc. Defendant Buena Vista Home 1. Whether plaintiff’s creation, 2. No. The court found that the district court https://
v. Buena Vista Entertainment, Inc., a wholly distribution and online display of clip correctly held that plaintiff failed to show law.justia.com/
Home Entm’t, Inc., owned subsidiary of The Walt previews constituted fair use. that it was likely to prevail on its defense that cases/federal/
342 F.3d 191 (3d Disney Pictures and Television its online display of the clip previews appellate-
Cir. 2003) Co., held an exclusive license to constituted fair use. Regarding the purpose courts/
and character of the use, the court found that
distribute Disney products in the plaintiff’s use did not add new expression, F3/342/191/515
home video market. In 1988, meaning, or message to the original works 519/
defendant authorized plaintiff and thus lacked transformative quality.
Video Pipeline to create Regarding the nature of the works, the court
compilations of its video trailers characterized defendant’s works as “creative,
and distribute the trailers to non-factual expression” and weighed the
factor against a finding of fair use. Regarding
traditional home video retail
the amount and substantiality of the work
outlets. In 1997, when the video
copied, the court found that plaintiff only
retail market shifted to an internet copied a small amount of defendant’s works
distribution model, plaintiff began (full-length films) and that the copied
distributing the trailers over the segments did not go to the “heart” of the
internet, via digital streams, and films, which weighed in favor of fair use.
charging internet video retailers Finally, regarding the potential market effect,
for the right to access the trailers. the court held that plaintiff’s streaming of
In 2000, defendant advised segments of defendant’s works over the
plaintiff that it did not have internet could cause cognizable harm to the
permission to distribute its trailers market for defendant to license authorized
on the internet. In response, trailers for its works.
plaintiff filed suit seeking a
declaratory judgment that its
online use of the trailers was legal
pursuant to a previous licensing
agreement. Defendant
subsequently terminated the
licensing agreement. After the
licensing agreement was
cancelled, plaintiff began using
short segments from defendant’s
films to create its own movie
trailers and stream them over the
internet. Plaintiff then sought a
declaratory judgment that its use
of the segments was permissible.
Defendant claimed plaintiff’s use
 of the segments or “clip
previews” infringed its copyrights
in the films. Plaintiff argued that
its use was protected by the first
sale and fair use doctrines. The
district court granted a
preliminary injunction in favor of
defendant.
Fair Use 76 Bill Graham Plaintiff Bill Graham Archives
Archives v. Dorling owned copyrights in artistic
Kindersley Ltd., 448 images originally used on concert
F.3d 605 (2d Cir. posters and tickets to promote
2006) events for the rock band the
Grateful Dead. Defendant Dorling
Kindersley Publishing (DK)
sought permission from plaintiff
to reproduce images of seven such
posters and
tickets in a 480-page cultural
history of the group titled Grateful
Dead: The Illustrated Trip. After
the parties failed to reach an
agreement, DK
nevertheless reproduced and
displayed the posters and tickets.
When DK refused to pay license
fees for use of the posters and
tickets after publishing
the book, plaintiff sued for
1) Is DK's reproduction of 1) Yes. As a general matter, a copyright https://
BGA's images protected by holder is entitled to demand a royalty for casetext.com/
the fair use exception to licensing others to use its copyrighted work, case/bill-
copyright infringement? and that the impact on potential licensing graham-
revenues is a proper subject for consideration archives-v-
in assessing the fourth factor.". dorling-
kindersley
We have noted, however, that "were a court
automatically to conclude in every case that
potential licensing revenues were
impermissibly impaired simply because the
secondary user did not pay a fee for the right
to engage in the use, the fourth fair use factor
would always favor the copyright holder."
2) Thus, the court holds that DK's use of
BGA's images is transformatively different
from their original expressive purpose.  In a
case such as this, a copyright holder cannot
prevent others from entering fair use markets
merely "by developing or licensing a market
for parody, news reporting, educational or
other transformativeuses of its own creative
work.". "[C]opyright owners may not
preempt exploitation of transformative
infringement. Plaintiff appealed
the district court’s ruling that
DK’s reproduction of the images
in the book was fair use.
His appeal concerns the scope of
copyright protection afforded
artistic concert posters reproduced
in reduced size in a biography of
the musical group the Grateful
Dead. Asserted copyright holder
Bill Graham Archives, LLC
("BGA" or "Appellant") appeals
from a judgment of the District
Court for the Southern District of
New York dismissing, on motion
for summary judgment, its
copyright infringement action
against Dorling Kindersley
Limited, Dorling Kindersley
Publishing, Inc., and R.R.
Donnelley & Sons Company
(collectively "DK" or
"Appellees"). On appeal, the court
concluded that the fair use factors
set forth in 17 U.S.C.S. § 107(1)
to (4) weighed in favor of the
publishers' use.
2) Can a copyright holder prevent
others from entering fair use markets
merely "by developing or licensing a
market for parody, news reporting,
educational or other transformative
uses of its own creative work?
markets . . . ." Id. Moreover,  a publisher's
willingness to pay license fees for
reproduction of images does not establish
that the publisher may not, in the alternative,
make fair use of those images. Campbell,
510 U.S. at 585 n.18 (stating that "being
denied permission to use [or pay license fees
for] a work does not weigh against a finding
of fair use"). 
Since DK's use of BGA's images falls within
a transformative market, BGA does not
suffer market harm due to the loss of license
fees.
3) Yes. Under the copyright law, a book
publisher’s appropriation of copyrighted
poster and ticket images in a biographical
book in reduced-size format is a protected
fair use, where the balance of the statutory
fair use factors favors the publisher. Under
17 U.S.C. Â 107(1), the first factor is the
purpose and character of the use, including
whether such use is of a commercial nature
or is for nonprofit educational purposes.
Most important is whether the nature of the
work is transformative, that is, whether the
new work merely supersede[s] the objects of
the original creation, or instead adds
something new, with a further purpose or
different character, altering the first with new
expression, meaning, or message. BGA
(Plaintiff) argues that as a matter of law
merely placing poster images along a
timeline is not a transformative use, contrary
to the district court’s finding. Plaintiff’s
argument must be rejected because here,

3) Under the copyright law, is a book
publisher’s appropriation of
copyrighted poster and ticket images
in a biographical book in reduced-size
format a protected fair use, where the
balance of the statutory fair use
factors favors the publisher?
Illustrated Trip is a biographical work
documenting and commemorating the band’s
30-year history, and courts have frequently
afforded fair use protection to the use of
copyrighted material in biographies,
recognizing such works as forms of historic
scholarship, criticism, and comment that
require incorporation of original source
material for optimum treatment of their
subject. Moreover, DK’s (Defendant)
purpose in using the images at issue is
obviously different from the original purpose
they were created for. Originally, the images
fulfilled the dual purposes of artistic
expression and promotion, as the posters
were distributed to generate public interest in
the Grateful Dead and to convey information
to a large number of people regarding the
upcoming concerts.
4) In contrast, Defendant used each of
Plaintiff’s images as historical artifacts to
document and represent the actual
occurrence of Grateful Dead concerts
featured on Illustrated Trip’s timeline. The
images, in some instances, help the reader’s
understanding of the biographical text by
marking important concerts.
Basically, Defendant’s use of the disputed
images is transformative both when
accompanied by commentary and when used
on its own. This conclusion is made stronger
by the manner in which they significantly
reduce the size of the reproductions, which
allows readers to recognize the historical
significance of the posters, but is not
adequate to offer more than a glimpse of
their expressive value. The expressive value
of the original images was additionally
minimized by combining them with a
timeline, textual material, and original
graphical artwork to create a collage that
makes sure all images at issue are employed
only to enrich the presentation of the cultural
history of the Grateful Dead, not to exploit
copyrighted artwork for commercial gain.
Yet another factor that supports the
conclusion that the use was transformative is
that the images make up an inconsequential
(less than one-fifth of one percent) portion of
the book. Also, no Plaintiff image takes up
more than one-eighth of a page in a book or
is given more prominence than any other
image on the page.

5) Lastly, the commercial nature of the use

also supports a finding that the use was
transformative, since the book does not
exploit the use of BGA’s (Plaintiff) images
as such for commercial gain, i.e., they are not
used in commercial advertising or in any
other way to promote the sale of the book.
Their use is only incidental to the
commercial biographical value of the book.

The first factor weighs in favor of Defendant.

The second fair use factor, under 17 U.S.C.
107(2), is the nature of the copyrighted work.
In assessing this factor, the court considers
the protection of the reasonable expectations
of one who engages in the kinds of

4) Was the nature of the work is
transformative which supersedes the
objects of the original creation?
creation/authorship that the copyright seeks
to encourage. In this case, the images are
creative artworks, which traditionally are the
core of intended copyright protection. The
district court found this factor weighed in
favor of Plaintiff, but limited the eight it
gave to it because the posters were published
extensively. The district court was correct
that creative works of art are the kind of
works that weigh in favor of the copyright
holder.
However, the second fair use factor may be
of limited usefulness where the creative work
of art is being used for a transformative
purpose, as here, where the images were
used for their historical, rather than creative
qualities.
The third fair use factor, under 17 U.S.C.
107(3), is the amount and substantiality of
the portion used in relation to the
copyrighted work as a whole. Although each
image was reproduced in its entirety, courts
have held that such copying does not
necessarily weigh against fair use because
copying the entirety of a work is sometimes
necessary to make a fair use of the image.
Because this reasoning is sound, the third-
factor inquiry must take into account that the
extent of permissible copying varies with the
purpose and character of the use. Applying
this reasoning in the present case, even
though the copyrighted images are copied in
their entirety, the visual impact of their
artistic expression is limited significantly due
to their reduced size. Therefore, such use by
DK (Defendant) was crafted to further its
transformative purpose by making sure the
reader’s recognition of the images as
historical artifacts of Grateful Dead concert
events. Accordingly, the third fair use factor
does not weigh against fair use. Lastly, the
fourth fair use factor, under 17 U.S.C.
107(4), is the effect of the use upon the
potential market for or value of the
copyrighted work. Here, it is undisputed that
Defendant’s use of the images did not impact
Plaintiff’s primary market for the sale of the
poster images. Instead, the inquiry is whether
DK’s use impacted Plaintiff’s potential to
develop a derivative market” in this case, the
market for licensing Plaintiff’s images for
use in books. Although Plaintiff lost royalty
revenues from Defendant, and there is no
question that, as a general matter, a copyright
holder is entitled to demand a royalty for
licensing others to use its copyrighted work,
and that the impact on potential licensing
revenues is a proper subject for consideration
in assessing the fourth factor, if the
secondary user’s failure to pay royalties was
automatically held to constitute market harm,
the fourth fair use factor would always favor
the copyright holder. By definition, every
fair use involves some loss of royalty
revenue because the secondary user has not
paid royalties. It cannot be said, therefore,
that Plaintiff suffered market harm just
because Defendant did not get and pay for a
license to use the images. Instead, the inquiry
focuses on the impact on potential licensing

5) What are the factors that give
weight in favor of Defendant?
revenues for traditional, reasonable, or likely
to be developed markets. Even though
Defendant paid other copyright owners to
reproduce their copyrighted works, and even
though Plaintiff licensed its images to others
and was willing to license images to
Defendant (however for a fee that was not
acceptable to Defendant), neither of these
arguments demonstrates impairment to a
traditional, as opposed to a transformative
market. The market at issue is the
transformative one of using the images for
their historical significance, and because
copyright owners may not preempt
exploitation of transformative, fair use,
markets, BGA (Plaintiff) did not suffer
market harm because of lost license fees. The
balance of the fair use factors weighs in
DK’s (Defendant) favor, so its use was a fair
use and did not infringe Plaintiff’s
copyrights. Affirmed.
Doctrine:
The fair use doctrine is a statutory exception
to copyright infringement. Section 107 of the
Copyright Act of 1976, 17 U.S.C.S. § 101 et
seq., permits the unauthorized use or
reproduction of copyrighted work if it is for
purposes such as criticism, comment, news
reporting, teaching, scholarship, or
research. . Whether such fair use exists
involves a case-by-case determination using
four non-exclusive, statutorily provided
factors in light of the purposes of copyright.
The factors are (1) the purpose and character
of the use; (2) the nature of the copyrighted

Fair use in 77 Sega Enters. Ltd. v. Plaintiff Sega Enterprises, Inc.
relation to Accolade, Inc., 977 (Sega) manufactured video game
reverse F.2d 1510 (9th Cir. consoles and games. Defendant
engineering 1992) Accolade, Inc., one of plaintiff’s
competitors, developed its own
computer games to be played on
Copyright and the Sega consoles. To make its
trademark game software compatible with
Infringement plaintiff’s game consoles,
defendant copied object code
from plaintiff’s games and
False converted it to source code,
designation of known as “reverse engineering.”
origin Defendant used what it learned
from reverse engineering to write
its own computer code to make its
games compatible with Sega
consoles. In 1989, Accolade
1. Whether defendant’s “reverse
engineering,” which involved
copying, of a copyrighted computer
program in order to gain an
understanding of the unprotected
functional elements of the program
constituted fair use.
work; (3) the amount and substantiality of
the portion used in relation to the
copyrighted work as a whole; and (4) the
effect of the use upon the potential market
for or value of the copyrighted work. The
ultimate test of fair use is whether the
copyright law's goal of promoting the
progress of science and useful arts would be
better served by allowing the use than by
preventing it.
Under the copyright law, a book publisher’s
appropriation of copyrighted poster and
ticket images in a biographical book in
reduced-size format is a protected fair use,
where the balance of the statutory fair use
factors favors the publisher.
1. The court held that defendant’s “reverse https://
engineering” of plaintiff’s computer program law.justia.com/
qualified as fair use, and ruled that cases/federal/
disassembly of a copyrighted computer district-courts/
program for a legitimate reason and lack of FSupp/
other means to access the elements not 785/1392/21448
protected by copyright constituted fair use. 79/
Although defendant commercially sold video
games, the court found that defendant’s
copying was for a legitimate, essentially non-
exploitative purpose—that is deciphering the
non-copyrightable functions for game
console compatibility. Any commercial
exploitation of the functional code was
indirect and of minimal significance.
2. The court found that defendant did not
"reverse engineered" the video
display microprocessor in the
Genesis console by disassembling
the code in SEL's game cartridges
so that it could develop and
market Genesis-compatible video
games. In June 1990, Accolade
announced that it was releasing a
new game for the Genesis
console, "Ishido," and began
shipping in December 1990. SEL
filed this suit against Accolade on
October 31, 1991 alleging
copyright infringement, trademark
infringement, and unfair
competition. Accolade filed a
counterclaim against SEL and
SOA alleging false designation of
origin and unfair competition.
Accolade's claims are centered on
allegations that SEL and SOA
falsely attributed the source of
Accolade's products to
themselves, thereby injuring
Accolade's reputation as an
independent producer of video
game products.
Defendant appealed the district
court’s ruling in plaintiff’s favor.
2. Whether the defendant committed
usurpation on the Sega’s market
usurp plaintiff’s market because defendant
served as a market competitor and created its
own independent, creative video games.
Noting that computer programs contain a
mix of creative and functional elements, the
court pointed out that defendant would have
been unable to access the functional,
unprotected aspects without “reverse
engineering” and copying. The court stressed
that without a fair use exception for
disassembling object code, the owner of the
work would have a de facto monopoly over
the functional aspects of the work.
3. Yes. The defense of copyright misuse is a
form of unclean hands, which prevents the
copyright owner from obtaining relief "when
the infringement occurred by his dereliction
of duty."  Accolade's copyright misuse
defense is based upon antitrust tying
allegations, which the court ordered stricken
from Accolade's counterclaim. No antitrust
violation is alleged, nor is there proof of
fraud or other clear violation of a legal duty.
Thus, Accolade has failed to establish a
copyright misuse defense.

3. Whether the defendant committed
copyright infringement
4. Whether the defendant committed
trademark infringement
4. Yes. A federal trademark infringement
claim may be brought against any person
who, without consent of the holder of the
registered trademark, use[s] in commerce
any reproduction, counterfeit, copy, or
colorable imitation of a registered mark in
connection with the sale, offering for sale,
distribution, or advertising of any goods or
services on or in connection with which such
use is likely to cause confusion, or to cause
mistake, or to deceive....
Even if it were not possible to engineer
around the TMSS and prevent the false Sega
Message, Accolade could have taken other
steps to avoid confusion. The functionality
defense is not available unless Accolade used
the "most effective method reasonably
available for eliminating the likelihood of
confusion consistent with the functional use
of the mark". For example, Accolade could
have followed the false Sega Message with a
full disclaimer or placed a disclaimer on the
game cartridges themselves. Thus, it appears
unlikely that Accolade can prevail on its
functionality defense.
5. The criteria to be considered in
determining whether a particular use is fair
use include:
 
1. the purpose and character of the use,
including whether such use is of a
commercial nature or is for nonprofit
educational purposes;
 
2. the nature of the copyrighted work;
 
3. the amount and substantially of the portion
used in relation to the copyrighted work as a
whole; and
 
4. the effect of the use upon the potential
market for or value of the copyrighted work.
17 U.S.C. § 107.

6. No. Accolade has not satisfied its burden

of demonstrating serious questions going to
the merits much less a likelihood of success
on the merits. The evidence presented
indicates that the TMSS searches a game
cartridge for the "SEGA" trademark which is

5. Criteria in determining whether a
particular use is fair use
in the object code; if the code is found the
Sega message is displayed on the monitor.
Accolade admits that it copied the code and
inserted it into its game cartridges, thinking
such code was functional. Thus, it is
Accolade's actions that are responsible for
the displaying of the false Sega Message
when its game cartridges are played on the
Genesis III.
 6. Whether Accolade’s claim for false
designation of origin against SEL and
SOA will prosper

Fair Use 78 Sony Computer In July 1998, Connectix started the

Entertainment, Inc. development of the Virtual Game
v. Connectix Corp. Station (VGS) as
203 F.3d 596 (9th a Macintosh software application that
Cir.), cert. denied, emulates Sony's popular PlayStation
531 U.S. 871 (2000) video games console's hardware
and firmware. This would make it
possible for VGS users to play games
developed for the PlayStation on
Macintosh hardware, with plans to
release a Windows PC compatible
version at a later date. Connectix's
development strategy was based
upon reverse engineering the
(1) Whether Connectix’s intermediate
copying of a copyright protected
computer program for reverse
engineering purposes qualified as fair
use.
(1) YES. The circuit court reversed the
district court’s ruling and remanded the case
with instructions to dissolve the injunction
against Connectix. The court concluded that
the intermediate copies Connectix made and
used during the course of its reverse
engineering of the BIOS program were
protected fair use, necessary to permit
Connectix to make its non-infringing Virtual
Game Station function with PlayStation
games. In reaching its conclusion, the court
found that three of four fair use factors—the
purpose and character of the use the nature of
PlayStation's BIOS firmware, first by
using the unchanged BIOS to develop
emulation for the hardware, and then
by developing a BIOS of their own
using the original firmware as an aid
for debugging. During the
development work, Connectix
contacted Sony, requesting "technical
assistance" for completing the VGS,
but this request was eventually
declined in September 1998.
The Virtual Game Station
development reached completion in
December 1998, with the software
being commercially released in the
following month, January 1999. Sony
perceived the VGS as a threat to its
video game business, and filed a
complaint alleging copyright
infringement as well as violations of
intellectual property against
Connectix on January 27, 1999.
[1]
 Sony drew support from fellow
video game hardware manufacturers
Nintendo, Sega, and 3dfx Interactive,
while Connectix was backed by
fellow software firms and trade
associations.[2]
The district court awarded Sony an
injunction blocking Connectix
1. from copying or
using the Sony
the copyrighted work, and the effect of the
use upon the potential market for the work—
all weighed in favor of fair use. Although
the court found that Connectix copied the
entire BIOS program, it concluded that this
factor warranted “very little weight” in cases
of “intermediate infringement” where “the
final product does not itself contain
infringing material.”
(2) PlayStation firmware fell under a lowered
(2) whether or not Connectix's copying of
degree of copyright protection because it
the PlayStation firmware
contained unprotected parts (functional elements)
that could not be examined without copying. The
court also rejected the semantic distinction
between "studying" and "use" made by the
district court, finding it to be artificial. The court
case states, "[T]hey disassembled Sony's code not
just to study the concepts. They actually used that
code in the development of [their] product.
(3) Sony had argued that Connectix infringed
Sony's copyright by making numerous
intermediate copies (that is, copies of copyrighted
(3) Did Connectix infringed Sony's computer code created to aid the development of
copyright by making numerous a non-infringing product. of the PlayStation BIOS
intermediate copies? during the reverse engineering process. The court
rejected this notion, ruling that such a copy-
grounded basis for what qualified as fair use
would result in software engineers choosing
inefficient engineering methods that minimized
the number of intermediate copies. Preventing
such "wasted effort", they argued, was the very
purpose of fair use. In addition, the court found
 BIOS code in the that the ultimate purpose and character of
development of Connectix's use of Sony's BIOS - in that it created
the Virtual Game a new platform for Sony PlayStation games -
Station for qualified as "modestly transformative." This
factor of fair use, therefore, lay in Connectix's
Windows; and
favor.
2. from selling the
Virtual Game (4) The court held in favor of Connectix on this
Station for point as well. While the Virtual Game Station
Macintosh or the might very well lower Sony's PlayStation console
Virtual Game sales, its transformative status- allowing
Station for PlayStation games to be played on Mac -
Windows. rendered it a legitimate competitor in the market
for Sony and Sony-licensed games: "For this
The district court also impounded all reason, some economic loss by Sony as a result of
of Connectix's copies of the Sony
this competition does not compel a finding of no
BIOS and all copies of works based fair use. Sony understandably seeks control over
upon or incorporating Sony BIOS. (4) What is the effect of the use upon the
the market for devices that play games Sony
Connectix then successfully appealed potential market?
produces or licenses. The copyright law,
the ruling, with the United States
however, does not confer such a monopoly." The
Courts of Appeals for the Ninth court also took the opinion that the provided
Circuit reversing the earlier decision.
studies were lacking sufficient evidence of
diluting the PlayStation trademark: "The evidence
here fails to show or suggest that Sony's mark or
product was regarded or was likely to be regarded
negatively because of its performance on
Connectix's Virtual Game Station. The evidence
is not even substantial on the quality of that
performance. … Sony's tarnishment claim cannot
support the injunction."
Fair use 79 PERFECT 10 v. Perfect 10 markets and sells 1. What are the two 1. “Plaintiffs must satisfy two https://
AMAZON.COM copyrighted images of nude requirements to constitute direct requirements to present a prima facie case law.justia.com/
infringement? of direct infringement: (1) they must show cases/federal/
models, and operates a
ownership of the allegedly infringed appellate-
subscription website on the
Internet accessible to subscribers
who pay a monthly fee.
Members may view images of
Perfect 10 in a “member’s only”
area of the site by using a
personal password required to
log-in. Plaintiff has also licensed
copyrighted images in a reduced
size for download and use on cell
phones. Defendant Google, Inc.
operates a search engine, a
software program that
automatically accesses thousands
of websites (collections of web
pages) on the Internet and
indexes them within a database
stored on Defendant’s
computers. When a Google user
accesses Defendant’s website
and types in a search query,
Defendant’s software searches its
database for websites that
respond to the particular search
query. Defendant then sends
relevant information from its
index of websites to the user’s
computer. Defendant’s search
engines can provide results in the
form of text, images, or videos.
The Google search engine that
provides responses in the form of
2. Is the “display right”
exclusive?
3. Define ‘display’ and ‘copies’
under the Copyright Act.
4. Does a computer owner that
stores an image as electronic
information and provides that
electronic information directly to a
user violates the copyright holder’s
exclusive right to display the image?
material and (2) they must demonstrate that courts/ca9/06-
the alleged infringers violate at least one 55405/0655405
exclusive right granted to copyright holders -2011-02-
under 17 U.S.C. § 106.” 26.html
2. Yes. Section 106(5) states that a
copyright owner has the exclusive right “to
display the copyrighted work publicly.”
3. The Copyright Act explains that
“display” means “to show a copy of it,
either directly or by means of a film, slide,
television image, or any other device or
process .” 17 U.S.C. § 101. Section 101
defines “copies” as “material objects, other
than phonorecords, in which a work is fixed
by any method now known or later
developed, and from which the work can be
perceived, reproduced, or otherwise
communicated, either directly or with the
aid of a machine or device.”
4. Yes. A computer owner that stores an
image as electronic information and
provides that electronic information directly
to a user violates the copyright holder’s
exclusive right to display the image. The
district court’s reasoning and “server test”
comport with the language in the Copyright
Act, and, therefore, its ruling is correct as
far as Perfect 10’s (Plaintiff) display rights.
Based on the plain language of the statute, a
person displays a photographic image by
using a computer to fill a computer screen
with a copy of the photographic image fixed
images is called Google Image
Search. Google Image Search
identifies text in its database
responsive to the query and then
communicates to users the
images associated with the
relevant text. Defendant’s
software cannot identify and
index the images themselves.
Google Image Search provides
search results as a web page of
small images called
“thumbails,” which are stored in
Google’s (Defendant) servers.
The thumbnail images are
reduced, lower-resolution
versions of full-sized images
stored on third-party computers.
When a user clicks on a
thumbnail image, Defendant’s
software directs the user’s
browser to create on the user’s
computer screen a small
rectangular box that contains the
Google (Defendant) thumbnail
and a larger box that contains the
full-size image, which the user’s
computer has been instructed to
access from the third-party site
that houses that image.
Defendant does not store the
images that fill this larger box
in the memory of the computer. Google’s
(Defendant) computers store thumbnail
versions of Plaintiff’s copyrighted images
and communicate copies of those
thumbnails to Defendant’s users. Therefore,
Plaintiff has made a prima facie case that
Defendant’s communication of its stored
thumbnail images directly infringes
Plaintiff’s display right. Conversely,
Defendant’s computers do not store the
full0siuze photographic images, but merely
in-line links to, and frames, those images.
Therefore, Google (Defendant) does not
have a copy of the images for purposes of
the Copyright Act, i.e., it does not have any
material objects . . . in which a work is fixed
. . . and from which the work can be
perceived, reproduced, or otherwise
communicated and therefore Google
(Defendant) cannot communicate a copy as
defined under 17 U.S.C. § 101. While
Google (Defendant) may facilitate access to
infringing copies, such assistance only
implicates contributory liability for
copyright infringement, not direct liability.
Even if such in-line linking and framing
may cause some computer users to believe
they are viewing a single Google
(Defendant) web page, the Copyright Act,
unlike the Trademark Act, does not protect
a copyright holder against acts that cause
consumer confusion. Finally, the same
analysis is applicable to Defendant’s cache.
5. No. A computer owner that in-line
links to or frames a full-size image does not
and does not communicate the
images to the user. The two
boxes together appear to be
coming from the same source,
since they are in the same frame,
but they actually come from two
sources Google and the third-
party website. The process the
web pages use to direct a user’s
browser to incorporate content
from different computers into a
single window is referred to as
“in-line linking.” The term
“framing” refers to the process
by which information from one
computer appears to frame and
annotate the in-line linked
content from another computer.
Defendant also stores web page
content in its cache, which
ultimately means that
Defendant’s cache copy can
provide a user’s browser with
valid directions to an infringing
image even though the updated
web page no longer includes that
infringing image. Google
(Defendant) also generates
revenue through a business
program called an AdSense.
Under this program, a website
owner can register with Google
5. Does a computer owner that
in-line links to or frames a full-size
image does not infringe the
distribution right of the image’s
copyright owner when the image is
displayed on the computer screen of
a user?
infringe the distribution right of the image’s
copyright owner when the image is
displayed on the computer screen of a user.
Again, the district court’s ruling is
consistent with the language of the
Copyright Act. Under §106(3), a copyright
owner has the exclusive right to distribute
copies. Copies means material objects . . . in
which a work is fixed, and the Supreme
Court has indicated that in the electronic
context, copies may be distributed
electronically. Because the full-size images
are not on Defendant’s computers, it cannot
distribute them. It is the third-party website
publisher’s computer that distributes copies
of the images by transmitting the
photographic image electronically to the
user’s computer. Plus, Plaintiff’s argument
that merely making the images available
constitutes distribution is not supported. A
deemed distribution rule that is applicable in
other contexts is inapplicable to Defendant
because Defendant does not own a
collection of Plaintiff’s full-size images and
does not communicate these images to the
computers of people using Defendant’s
search engine; it only indexes the images
Google (Defendant) therefore cannot be
deemed to distribute copies of these images.
6. Yes. A search engine’s owner’s
appropriation of a copyrighted image for
use as an indexed thumbnail picture is a
protected “fair use” under the copyright law
where the balance of the statutory fair use
factors favors the owner of the search
(Defendant) to become an
AdSense “partner.” The owner
then places HTML instructions
on its web pages that signal
Google’s server to place
advertising on the web pages that
is relevant to the web pages’
content Google’s computer
program picks the advertising
automatically by using an
algorithm, and the AdSense
participants share the revenues
that result from such
advertisement.
Google also generated
revenues through an agreement
with Amazon.com that allowed
Amazon.com to in-line link to
Google’s search results.
Amazon.com gave its users the
impression that Amazon.com
was providing search results, but
Google communicated the search
results directly to Amazon.com’s
users. Amazon.com routed users’
search queries to Google and
automatically transmitted
Google’s responses (i.e., HTML
instructions for linking to
Google’s search results) back to
its users.
Perfect 10 began notifying
6. Is a search engine’s owner’s
appropriation of a copyrighted image
for use as an indexed thumbnail
picture considered as protected “fair
use”?
engine. Although Perfect 10 would likely
prevail in its prima facie case that Google’s
thumbnail images infringe its display rights,
Perfect 10 has the burden to show a
likelihood that it will prevail against an
affirmative fair use defense by Defendant.
The first fair use factor, 17 U.S.C. 107(1),
requires a court to consider the purpose and
character of the use, including whether such
use is of a commercial nature or is for
nonprofit educational purposes. A
“transformative work” is one that alters the
original work “with new expression,
meaning, or message.”
We conclude that the significantly
transformative nature of Google’s search
engine, particularly in light of its public
benefit, outweighs Google’s superseding
and commercial uses of the thumbnails in
this case. In reaching this conclusion, we
note the importance of analyzing fair use
flexibly in light of new circumstances. Sony
endorses the purpose and general scope of
the judicial doctrine of fair use, but there is
no disposition to freeze the doctrine in the
statute, especially during a period of rapid
technological change.’ We are also mindful
of the Supreme Court’s direction that “the
more transformative the new work, the less
will be the significance of other factors, like
commercialism, that may weigh against a
finding of fair use.” Accordingly, we
disagree with the district court’s conclusion
that because Google’s use of the thumbnails
could supersede Perfect 10’s cell phone
download use and because the use was more
Google that its thumbnail images
and in-line linking to the full-size
images infringed Perfect 10’s
copyright. On November 19,
2004, Perfect 10 filed an action
against Google that included
copyright infringement claims.
This was followed by a similar
action against Amazon.com,
Perfect 10 sought a preliminary
injunction to prevent
Amazon.com and Google,
respectively, from “copying,
reproducing, distributing,
publicly displaying, adapting or
otherwise infringing, or
contributing to the infringement”
of Perfect 10’s photographs;
linking to websites that provide
full-size infringing versions of
Perfect 10’s photographs; and
infringing Perfect 10’s
username/password
combinations.
The district court granted the
preliminary injunction, finding
harm to the derivative market for
Plaintiff’s reduced-size images.
The court also ruled that
Defendant’s search engine likely
infringed Plaintiff’s display right
with regards to the infringing
7. What is the nature of the
copyrighted work?
commercial than Arriba’s, this fair use
factor weighed “slightly” in favor of Perfect
10. Instead, we conclude that the
transformative nature of Google’s use is
more significant than any incidental
superseding use or the minor commercial
aspects of Google’s search engine and
website. Therefore, this factor weighs
heavily in favor of Google.
7. The nature of the copyrighted work.
With respect to the second factor, “the
nature of the copyrighted work,” our
decision in Kelly is directly on point. There
we held that the photographer’s images
were “creative in nature” and thus “closer to
the core of intended copyright protection
than are more fact-based works.” However,
because the photos appeared on the Internet
before Arriba used thumbnail versions in its
search engine results, this factor weighed
only slightly in favor of the photographer.
8. No. Here, the district court found that
Perfect 10’s images were creative but also
previously published.The right of first
publication is “the author’s right to control
the first public appearance of his
expression.” Because this right
encompasses “the choices of when, where,
and in what form first to publish a work,”
id., an author exercises and exhausts this
one-time right by publishing the work in
any medium. Once Perfect 10 has exploited
this commercially valuable right of first
publication by putting its images on the
thumbnails, but that Plaintiff was
not likely to succeed on its claim
that defendant Google violated
Perfect 10’s display or
distribution right regarding its
full-size infringing images.
Defendant raised the affirmative
defense that its use was a fair
use, but the district court rejected
this defense. The court of
appeals granted review.
8. Is Perfect 10 is entitled to the
enhanced protection available for an
unpublished work?
9. Whether the amount and
substantiality of the portion used in
relation to the copyrighted work as a
whole are reasonable in relation to
the purpose of the copying.
Internet for paid subscribers, Perfect 10 is
no longer entitled to the enhanced
protection available for an unpublished
work. Accordingly the district court did not
err in holding that this factor weighed only
slightly in favor of Perfect 10.
9. In Kelly, we held Arriba’s use of the
entire photographic image was reasonable
in light of the purpose of a search engine.
Specifically, we noted, “[i]t was necessary
for Arriba to copy the entire image to allow
users to recognize the image and decide
whether to pursue more information about
the image or the originating [website]. If
Arriba only copied part of the image, it
would be more difficult to identify it,
thereby reducing the usefulness of the visual
search engine.” Accordingly, we
concluded that this factor did not weigh
in favor of either party. Because the same
analysis applies to Google’s use of Perfect
10’s image, the district court did not err
in finding that this factor favored neither
party.
10. No. In Kelly, we concluded that
Arriba’s use of the thumbnail images did
not harm the market for the photographer’s
full-size images. We reasoned that because
thumbnails were not a substitute for the full-
sized images, they did not harm the
photographer’s ability to sell or license his
full-sized images. The district court here
followed Kelly’s reasoning, holding that
Google’s use of thumbnails did not hurt
Perfect 10’s market for full-size images.

Fair Use 80 Sony Corp. v. Petitioner Sony Corp.
Universal City manufactures home videotape
Studios, 464 U.S. recorders (VTR's), and markets
417 (1984) them through retail
establishments, some of which are
also petitioners. Respondents own
the copyrights on some of the
television programs that are
broadcast on the public airwaves.
Respondents brought an action
against petitioners in Federal
District Court, alleging that VTR
consumers had been recording
some of respondents' copyrighted
works that had been exhibited on
commercially sponsored
television, and thereby infringed
respondents' copyrights, and
further that petitioners were liable
for such copyright infringement
because of their marketing of the
VTR's. Respondents sought
money damages, an equitable
accounting of profits, and an
injunction against the
10. Does Google’s use of
thumbnails hurt Perfect 10’s market
for full-size images?
1. Whether the sale of petitioners'
copying equipment to the general
public violative of the rights conferred
upon respondents by the Copyright
Act?
We agree.
1. The U.S. Supreme Court held that the sale https://
of home video tape recorders to the general supreme.justia.c
public did not constitute contributory om/cases/
infringement of copyrights on television federal/us/
programs because there was a significant 464/417/
likelihood that substantial numbers of
copyright holders who license their works for
broadcast on free television would not object
to having their broadcasts time-shifted by
private viewers, and the plaintiff copyright
holders did not demonstrate that time-
shifting would cause any likelihood of non-
minimal harm to the potential market for, or
the value of, their copyrighted works.
2. Copyright protection "subsists . . . in
original works of authorship fixed in any
tangible medium of expression." 17 U.S.C. §
102(a) (1982 ed.). This protection has never
accorded the copyright owner complete
control over all possible uses of his work.]
Rather, the Copyright Act grants the
manufacture and marketing of the copyright holder "exclusive" rights to use
VTR's. The District Court denied and to authorize the use of his work in five
2. Exclusive rights of the copyright
respondents all relief, holding that qualified ways, including reproduction of the
holder
noncommercial home use copyrighted work in copies. § 106. All
recording of material broadcast reproductions of the work, however, are not
over the public airwaves was a within the exclusive domain of the copyright
fair use of copyrighted works, and owner; some are in the public domain. Any
did not constitute copyright individual may reproduce a copyrighted
infringement, and that petitioners work for a "fair use"; the copyright owner
could not be held liable as does not possess the exclusive right to such a
contributory infringers even if the use.
home use of a VTR was
considered an infringing use. The
Court of Appeals reversed, 3. The Copyright Act provides the owner of
holding petitioners liable for a copyright with a potent arsenal of remedies
contributory infringement and against an infringer of his work, including an
ordering the District Court to injunction to restrain the infringer from
fashion appropriate relief violating his rights, the impoundment and
destruction of all reproductions of his work
made in violation of his rights, a recovery of
his actual damages and any additional profits
realized by the infringer or a recovery of
statutory damages, and attorney's fees.

4. Yes. In summary, the record and findings

of the District Court lead us to two
conclusions. First, Sony demonstrated a
significant likelihood that substantial

3. Remedies of the copyright owner
against an infringer
4. Whether home time-shifting is fair
use
numbers of copyright holders who license
their works for broadcast on free television
would not object to having their broadcasts
time-shifted by private viewers. And second,
respondents failed to demonstrate that time-
shifting would cause any likelihood of
nonminimal harm to the potential market for,
or the value of, their copyrighted works. The
Betamax is, therefore, capable of substantial
noninfringing uses. Sony's sale of such
equipment to the general public does not
constitute contributory infringement of
respondents' copyrights.
5. The court recognizes there are substantial
differences between the patent and copyright
laws. But in both areas, the contributory
infringement doctrine is grounded on the
recognition that adequate protection of a
monopoly may require the courts to look
beyond actual duplication of a device or
publication to the products or activities that
make such duplication possible. The staple
article of commerce doctrine must strike a
balance between a copyright holder's
legitimate demand for effective -- not merely
symbolic -- protection of the statutory
monopoly, and the rights of others freely to
engage in substantially unrelated areas of
commerce. Accordingly, the sale of copying
equipment, like the sale of other articles of
commerce, does not constitute contributory
infringement if the product is widely used for
 legitimate, unobjectionable purposes. Indeed,
it need merely be capable of substantial
noninfringing uses.

5. Difference between copyright and

patent laws

Fair Use 81 A&M Records, Napster was an early peer-to-peer 1. Whether or not there was fair use 1. No. Fair use is a defense to infringement https://
Inc. v. Napster, file sharing network which could codified at 17 U.S.C. § 107, which states that copyrightallianc
Inc. be used for transmitting various otherwise infringing activities are permitted e.org/wp-
files, but which attained massive
popularity as a way to share
music through .mp3s.
Unsurprisingly, major record
companies took issue with large-
scale distribution of their music
for free, and sued Napster for
direct, contributory, and vicarious
infringement of copyright in order
to protect their intellectual
property.
if pursued, “[F]or purposes such as criticism, content/
comment, news reporting, teaching … uploads/
scholarship, or research.” In Napster’s case, 2016/09/AM-
their platform allowed for “repeated and Records-v.-
exploitative” copying, which met the Napster.pdf
meaning of the first factor, even though no
sales were taking place. In addition, songs
were found to be “close to the core” of the
types of creative works intended to be
protected by copyright, and entire songs
were downloaded, setting the second and
third factors against Napster. Finally, the
effect of the downloads was found to harm
possible album sales, which was the final
nail in the coffin of Napster’s argument in
favor of a fair use defense.
2. In order to determine whether the defense
is met in a particular case, the statute directs
Courts to consider the following four factors:
1. The purpose and character of the use,
including whether such use is of a
commercial nature or is for nonprofit
educational purposes;
2. The nature of the copyrighted work;
3. The amount and substantiality of the
 portion used in relation to the
copyrighted work as a whole; and
4. The effect of the use upon the
potential market for or value of the
2. Four factors in determining fair use copyrighted work.

3. As for the contributory infringement

claim, Napster knew of widespread
infringement taking place on its system, and
its policing efforts were quite thin.
Moreover, Napster materially contributed to
the infringement, making success on this
claim likely for the appellants. Similarly, the
court found that Napster’s lack of effort to
reduce infringement, combined with the fact
that the company financially benefited
therefrom, made success on the vicarious
infringement claim likely as well.

4. The Court of Appeals for the Ninth Circuit

held that a peer-to-peer file sharing service
could indeed be held liable for contributory
and vicarious infringement of copyright. This
landmark intellectual property case put an
end to any speculation that such services
could facilitate copyright infringement, but
still shield themselves from any liability due
to the fact that it was the users that chose to
 share illegal copies of protected works.
3. Whether there is contributory
infringement claim
5. Yes. Our review of the record requires us
to accept the district court’s conclusion that
plaintiffs have demonstrated a likelihood of
success on the merits of the vicarious
copyright infringement claim. Napster’s
failure to police the system’s “premises,”
combined with a showing that Napster
financially benefits from the continuing
availability of infringing files on its system,
leads to the imposition of vicarious liability.

4. Whether there is a peer-to-peer

sharing

Fair Use 82 American Plaintiffs, including American
Geophysical Union Geophysical Union and eighty-
v. Texaco, Inc., 60 two other publishers, sold
F.3d 913 (2d Cir. scientific journal subscriptions to
1995) - LLOPIS defendant Texaco, Inc.
They alleged that Texaco’s four to
five hundred employees infringed
their copyrights by repeatedly
photocopying individual journal
articles without
permission and distributing them
widely. The district court allowed
this interlocutory appeal after
5. Whether Napster engages in
vicarious copyright infringement.
1) Fair Use and Photocopying
1) We consider initially the doctrine of fair http://
use and its application to photocopying of euro.ecom.cmu.
documents. Seeking "to motivate the creative edu/program/
activity of authors . . . by the provision of a law/08-732/
special reward," copyright law grants certain Copyright/
exclusive rights in original works to authors. AGUvTexaco.p
However, the fair use doctrine "tempers the df
protection of copyright by allowing . . . [the]
use [of] a limited amount of copyrighted
material under some circumstances."
Traditionally conceived as based on authors'
implied consent to reasonable uses of their
ruling it was not fair use for
employees to copy
plaintiffs’ journal articles.
works, or on an exception to authors'
monopoly privileges needed in order to
fulfill copyright's purpose to promote the arts
and sciences, the fair use doctrine has a
lengthy and rich common-law history, and is
now codified in section 107 of the Copyright
Act.
As with the development of other easy and
accessible means of mechanical reproduction
of
documents, the invention and widespread
availability of photocopying technology
threatens to
disrupt the delicate balances established by
the Copyright Act. See 3 Melville B.
Nimmer & David
Nimmer, Nimmer on Copyright § 13.05[E]
[1], at 13-225 to 13-226 (1994) [hereinafter
Nimmer on
Copyright] (noting that "unrestricted
photocopying practices could largely
undercut the entire law
of copyright"); see also Sony, 464 U.S. at
467-68 n. 16, 104 S.Ct. at 801-02 n. 16
(Blackmun, J.,
dissenting) (recognizing that the "advent of
inexpensive and readily available copying
machines . .
. has changed the dimensions" of the legal
issues concerning the practice of making
personal
copies of copyrighted materials). As a
leading commentator astutely notes, the
advent of modern
photocopying technology creates a pressing
need for the law "to strike an appropriate
balance
between the authors' interest in preserving
the integrity of copyright, and the public's
right to enjoy
the benefits that photocopying technology
offers." 3 Nimmer on Copyright § 13.05[E]
[1], at 13-
226.

Indeed, if the issue were open, we would

seriously question whether the fair use
analysis that
has developed with respect to works of
authorship alleged to use portions of
copyrighted material is precisely applicable
to copies produced by mechanical means.
The traditional fair use analysis, now
codified in section 107, developed in an
effort to adjust the competing interests of
authors - the author of the original
copyrighted work and the author of the
secondary work that "copies" a portion of the
original work in the course of producing
what is claimed to be a new work.

Mechanical "copying" of an entire document,

made readily feasible and economical by the
advent of xerography, is obviously an
activity entirely different from creating a
work of authorship. Whatever social utility
copying of this sort achieves, it is not
concerned with creative authorship.

Though we have been instructed to defer to

Congress "when major technological
innovations
alter the market for copyrighted materials,"
Sony, 464 U.S. at 431, 104 S.Ct. at 783,
Congress has
thus far provided scant guidance for
resolving fair use issues involving
photocopying, legislating
specifically only as to library copying, see 17
U.S.C. § 108, and providing indirect advice
concerning classroom copying.[n3] See
generally 3 Nimmer on Copyright §
13.05[E]. However,
we learn from the Supreme Court's
consideration of copying achieved by use of
a videotape
recorder that mechanical copying is to be
assessed for fair use purposes under the
traditional mode
of analysis, including the four statutory
factors of section 107. See Sony, 464 U.S. at
447-56, 104
S.Ct. at 791-96. We therefore are obliged to
apply that analysis to the photocopying that
occurred
in this case.

2) We must first identify precisely the

copyrighted works alleged to be infringed,
since certain arguments made on appeal
seem to focus on different works. The
publishers typically hold two separate sets of
copyrights in their journal publications. As a
consequence of the publishers'
requirement that authors transfer their
copyrights when their articles are accepted
for publication, the publishers usually
possess the copyrights that subsist in each
individual article appearing within their
journals.[n4] Moreover, to the extent that the
compilation of a journal issue involves an
original work of authorship, the publishers
possess a distinct copyright in each journal
issue as a collective work, see 17 U.S.C. §
103; see also 17 U.S.C. § 101 (defining
"compilation" and "collective work"). See
generally Feist Publications, Inc. v. Rural
Telephone Service Co., 499 U.S. 340, 356-1,
111 S.Ct. 1282, 1293-96, 113 L.Ed.2d 358
(1991) (discussing extent of copyright
protection in compilations and collective
works).

From the outset, this lawsuit concerned

alleged infringement of the copyrights in
individual journal articles, copyrights
assigned by the authors to the publishers.
More specifically, by virtue of the parties'
stipulation, this case now concerns the
copyrights in the eight articles from Catalysis
found in Chickering's files, copyrights now
owned by Academic Press. There are no
allegations that raise questions concerning
Academic Press's potential copyrights in
whole issues or annual volumes of Catalysis
as collective works.

3) Fair use serves as an affirmative defense

to a claim of copyright infringement, and
thus the
party claiming that its secondary use of the
original copyrighted work constitutes a fair
use
typically carries the burden of proof as to all

2) The Precise Copyrights at Issue
issues in the dispute. See Campbell, ___ U.S.
at ___,
114 S.Ct. at 1177. Moreover, since fair use is
a "mixed question of law and fact," Harper &
Row,
471 U.S. at 560, 105 S.Ct. at 2230, we
review the District Court's conclusions on
this issue de
novo, though we accept its subsidiary
findings of fact unless clearly erroneous, see
Twin Peaks,
996 F.2d at 1374
 3) Burdens of Proof and Standard of
Review

Fair use 83 PRINCETON The corporate defendant, Michigan 1.Did the Michigan Document 1. No. The Court held that the Michigan https://
determination UNIVERSITY Document Services, Inc., is a Services, Inc.’s act of reproducing Document Services, Inc.’s use of the works was a www.bitlaw.co
commercial copyshop that commercial use, in that it sought to profit from its
PRESS, copyrighted works of scholarship m/source/
reproduced substantial segments of sales to the students. According to the Court,
MACMILLAN, copyrighted works of scholarship, without obtaining permission from the because Michigan Document Services, Inc. did cases/
Most important INC., AND ST. bound the copies into "coursepacks," copyright holders for students’ use not pay license fees to the copyright holders, its copyright/
factor in fair use MARTIN'S and sold the coursepacks to students constitute fair use under 17 U.S.C.S. § use was an unfair exploitation of the monopoly pup.html
determination PRESS, INC., for use in fulfilling reading 107? privilege that belonged to the owners of the
PLAINTIFFS- assignments given by professors at copyright.
the University of Michigan. The
APPELLEES, copyshop acted without permission
V. from the copyright holders.
Consequently, Princeton University 2. In determining whether the use made of a work
MICHIGAN Press, Macmillan, Inc., and St. in any particular case is a fair use the factors to be
Martin’s Press, Inc., collectively, the
DOCUMENT considered shall include-
plaintiffs, brought a copyright
SERVICES, INC., infringement claim against defendant
AND for unfair use under 17 U.S.C.S. § (1) the purpose and character of the use,
JAMES M. 107. Finding that the fair use doctrine including whether such use is of a commercial
did not obviate the need to obtain nature or is for nonprofit educational purposes;
SMITH,
DEFENDANTS- permission to reproduce the works
and that the infringement was willful, (2) the nature of the copyrighted work;
APPELLANTS. the trial court granted appellees
summary judgment. (3) the amount and substantiality of the portion
2. Factors to be considered in fair use used in relation to the copyrighted work as a
No. 94-1778 whole;  and
ON APPEAL from
the United States
District Court for (4) the effect of the use upon the potential market
the Eastern District for or value of the copyrighted work.
of Michigan
Decided and Filed
November 8, 1996
3. The first factor that courts must evaluate in a
fair use determination is “the purpose and
character of the use, including whether such use
is of a commercial nature or is for nonprofit
educational purposes.

There are two parts to this test:  

(1) the degree to which the challenged use has

transformed the original, and

(2) the profit or nonprofit character of the use.  

Ordinarily, analysis under the first factor centers

on “whether the new work merely ‘supersede[s]
the objects' of the original creation ․ or instead
adds something new, with a further purpose or
different character, altering the first with new
expression, meaning, or message;  it asks, in other
words, whether and to what extent the new work
is ‘transformative.’ ” Because works that are
transformative are more likely to promote science
and the arts, transformative works are likely to be
found to be fair uses, whereas works that merely
copy the original are likely to be found to be
infringements of the copyrighted work.  
However, the Supreme Court has noted in dictum
that “[t]he obvious statutory exception to this
focus on transformative uses is the straight
reproduction of multiple copies for classroom
distribution.”  Thus, although the transformative
value of the coursepacks is slight, the fact that the
 coursepacks are “multiple copies for classroom
3. What is the first factor that courts use” preserves MDS's claim of “fair use.”
must evaluate in a fair use
determination

4. The fourth fair use factor and the most

important one is “the effect of the use upon the
potential market for or value of the copyrighted
work.”  17 U.S.C. § 107(4)

It is true that the use to which the materials are

put by the students who purchase the coursepacks
is noncommercial in nature.   But the use of the
materials by the students is not the use that the
plaintiff publishers are challenging.   What the
publishers are challenging is the duplication of
copyrighted materials for sale by a for-profit
corporation that has decided to maximize its
profits-and give itself a competitive edge over
other copy shops-by declining to pay licensing
fees to the holders of the copyrights.

5. The burden of proof as to market effect rests

with the copyright holder if the challenged use is
of a “noncommercial” nature.   The burden rests
with the alleged infringer, on the other hand, if
the challenged use is “commercial” in nature.  
Sony Corp. v. Universal City Studios, Inc., 464
U.S. 417, 451, 104 S.Ct. 774, 793, 78 L.Ed.2d
574 (1984).
4. What is the most important factor
5. Who has burden of proof if the
challenged use is of a
“noncommercial” nature.