LEX CERVUS NOTES 2020
Copyright – ATTY. PEREZ
A. Basic Principles (Sec. 171,172.2, 175 and 181)
Sec. 171. Definitions. - For the purpose of this Act, the following terms
have the following meaning:
171.1. "Author" is the natural person who has created the work;
171.2. A "collective work" is a work which has been created by two (2) or
more natural persons at the initiative and under the direction of another
with the understanding that it will be disclosed by the latter under his own
name and that contributing natural persons will not be identified;
171.3. "Communication to the public" or "communicate to the
public" means the making of a work available to the public by wire or
wireless means in such a way that members of the public may access
these works from a place and time individually chosen by them;
171.4. A "computer" is an electronic or similar device having information-
processing capabilities, and a "computer program" is a set of instructions
expressed in words, codes, schemes or in any other form, which is capable
when incorporated in a medium that the computer can read, or causing the
computer to perform or achieve a particular task or result;
171.5. "Public lending" is the transfer of possession of the original or a
copy of a work or sound recording for a limited period, for non-profit
purposes, by an institution the services of which are available to the public,
such as public library or archive;
171.6. "Public performance," in the case of a work other than an
audiovisual work, is the recitation, playing, dancing, acting or otherwise
performing the work, either directly or by means of any device or process;
in the case of an audiovisual work, the showing of its images in sequence
and the making of the sounds accompanying it audible; and, in the case of
a sound recording, making the recorded sounds audible at a place or at
places where persons outside the normal circle of a family and that family’s
closest social acquaintances are or can be present, irrespective of whether
they are or can be present at the same place and at the same time, or at
different places and/or at different times, and where the performance can
be perceived without the need for communication within the meaning of
Subsection 171.3;
171.7. "Published works" means works, which, with the consent of the
authors, are made available to the public by wire or wireless means in such
a way that members of the public may access these works from a place
and time individually chosen by them: Provided, That availability of such
copies has been such, as to satisfy the reasonable requirements of the
public, having regard to the nature of the work;
171.8. "Rental" is the transfer of the possession of the original or a copy of
a work or a sound recording for a limited period of time, for profit-making
purposes;
171.9. "Reproduction" is the making of one (1) or more copies of a work or
a sound recording in any manner or form (Sec. 41 [E], P.D. No. 49a);
171.10. A "work of applied art" is an artistic creation with utilitarian
functions or incorporated in a useful article, whether made by hand or
produced on an industrial scale;
171.11. A "work of the Government of the Philippines" is a work created by
an officer or employee of the Philippine Government or any of its
subdivisions and instrumentalities, including government-owned or
controlled corporations as part of his regularly prescribed official duties.
172.2. Works are protected by the sole fact of their creation, irrespective of
their mode or form of expression, as well as of their content, quality and
purpose.
Sec. 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. 
Sec. 181. Copyright and Material Object. - The copyright is distinct from the
property in the material object subject to it. Consequently, the transfer or
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assignment of the copyright shall not itself constitute a transfer of the
material object. Nor shall a transfer or assignment of the sole copy or of
one or several copies of the work imply transfer or assignment of the
copyright.
1. ABS-CBN v. Phil Multimedia
GR NO. 175769-70
 Basic principles, sec. 171,172.2, 175 and 181
FACTS: ABS-CBN is engaged in television and radio broadcasting through
wireless and satellite means while Philippine Multi-Media Systems Inc.
(“PMSI” for brevity), the operator of DreamBroadcasting System provides
direct-to-home (DTH) television viasatellite to its subscribers all over the
Philippines.
PMSI was granted legislative franchise under RA 8630 to install, operate
and maintain a nationwide DTH satellite service and is obligated under by
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 (“must-carry rule”).
ABS-CBN filed a complaint with Intellectual Property Office (IPO) for
violation of laws involving property rights. It alleged that PMSI’s
unauthorized rebroadcasting of Channels 2 and 23 infringed on its
broadcasting rights and copyright and that the NTC circular only covers
cable television system operators and not DTH satellitetelevision operators.
Moreover, NTC Circular 4-08-88 violates Sec. 9 of Art. III of the
Constitution because it allows the taking of property for public use without
payment of just compensation.
PMSI argued that its rebroadcasting of Channels 2 and 23 is sanctioned by
Memorandum Circular No. 04-08-88; that the must-carry rule under the
Memorandum Circular is a valid exercise of police power.
IPO and Court of Appeals ruled in favor of PMSI.
ISSUE: Whether or not petitioner’s broadcasting rights and copyright are
infringed.
HELD: No. The Director-General of the IPO correctly found that PMSI is
not engaged in rebroadcasting and thus cannot be considered to have
infringed ABS-CBN’s broadcasting rights and copyright.
Section 202.7 of the IP Code defines broadcasting as “the transmission by
wireless means for the public reception of sounds or of images or of
representations thereof; such transmission by satellite is also
‘broadcasting’ where the means for decrypting are provided to the public by
the broadcasting organization or with its consent.” On the other hand,
rebroadcasting as defined in Article 3(g) of the International Convention for
the Protection of Performers, Producers of Phonograms and Broadcasting
Organizations, otherwise known as the 1961 Rome Convention, of which
the Republic of the Philippines is a signatory, is “the simultaneous
broadcasting by one broadcasting organization of the broadcast of another
broadcasting organization.” 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.” Evidently, PMSI would not qualify as a broadcasting
organization because it does not have the aforementioned responsibilities
imposed upon broadcasting organizations, such as ABS-CBN.
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
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23. Likewise, it does not pass itself off as the origin or author of such
programs. Insofar as Channels 2 and 23 are concerned, PMSI merely
retransmits the same in accordance with Memorandum 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 Channels 2 and 23.
2. Star Athletica v. Varsity Brands
580 US ___(2017)
 Basic principles, sec. 171,172.2, 175 and 181
FACTS: The case stems to a copyright infringement action filed by Varsity
Brands against Star Athletica, charging Star with marketing cheerleading
uniforms substantially similar to designs copyrighted by Varsity. Star
argued that Varsity’s copyrights were invalid because the designs are for
non-copyrightable useful articles and the pictorial, graphic or sculptural
elements of Varsity’s designs were not physically or conceptually
separable from the uniforms. The district court entered a summary
judgment in favor of Star but this decision was vacated and remanded by
the U.S. Court of Appeals for the Sixth Circuit in August 2015. The opinion
handed down by the 6th Cir. entered a summary judgment victory in favor
of Varsity, finding that the graphic features of Varsity’s designs are more
like fabric designs than dress designs and are thus are protectable subject
matter under the Copyright Act.
In January 2016, Star Athletica petitioned the Supreme Court for a writ of
certiorari to appeal the case, reasoning that SCOTUS must grant an appeal
to resolve the conflict between Circuit Courts resulting in 10 different
separability tests and further arguing that the test developed by 6th Circuit
was inferior to other tests.
ISSUE: Whether or not a "pictorial, graphic, or sculptural feature"
incorporated into a useful article is eligible for copyright protection.
HELD: A feature incorporated into the design of a useful article is eligible
for copyright protection only if the feature (1) can be perceived as a two-
or three-dimensional work of art separate from the useful article, and (2)
would qualify as a protectable pictorial, graphic, or sculptural work—either
on its own or fixed in some other tangible medium of expression—if it
were imagined separately from the useful article into which it is
incorporated. That test is satisfied here.
“Pictorial” and “graphic” denote two-dimensional features such as pictures,
paintings, or drawings. Thus, by providing protection for “pictorial,
graphical, and sculptural works” incorporated into the “design of a useful
article,” necessarily contemplates that such a design can include two
dimensional features. This Court will not adjudicate in the first instance the
Government’s distinct argument against applying separability analysis,
which was neither raised below nor advanced here by any party.
Section 101’s separate-identification requirement is met if the decision
maker is able to look at the useful article and spot some two or three-
dimensional element that appears to have pictorial, graphic, or sculptural
qualities. To satisfy the independent-existence requirement, the feature
must be able to exist as its own pictorial, graphic, or sculptural work once
it is imagined apart from the useful article. If the feature could not exist as
a pictorial, graphic, or sculptural work on its own, it is simply one of the
article’s utilitarian aspects. And to qualify as a pictorial, graphic, or
sculptural work on its own, the feature cannot be a useful article or “an
article that is normally a part of a useful article,” Neither could one claim a
copyright in a useful article by creating a replica of it in another medium.
The statute as a whole confirms this interpretation. Section 101, which
protects art first fixed in the medium of a useful article, is essentially the
mirror image of (a), which protects art first fixed in a medium other than a
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useful article and subsequently applied to a useful article. Together, these
provisions make clear that copyright protection extends to pictorial,
graphic, and sculptural works regardless of whether they were created as
freestanding art or as features of useful articles.
This interpretation is also consistent with the Copyright Act’s history. In
Mazer, a case decided under the 1909 Copyright Act, the Court held that
respondents owned a copyright in a statuette created for use as a lamp
base. In so holding, the Court approved a Copyright Office regulation
extending protection to works of art that might also serve a useful purpose
and held that it was irrelevant to the copyright inquiry whether the
statuette was initially created as a freestanding sculpture or as a lamp
base. Soon after, the Copyright Office enacted a regulation implementing
Mazer’s holding that anticipated the language of section101, thereby
introducing the modern separability test to copyright law. Congress
essentially lifted the language from those post-Mazer regulations and
placed it in §101 of the 1976
Applying the proper test here, the surface decorations on
the cheerleading uniforms are separable and therefore eligible for
copyright protection. First, the decorations can be identified as
features having pictorial, graphic, or sculptural qualities. Second, if
those decorations were separated from the uniforms and applied in
another medium, they would qualify as two-dimensional works of art
under sec.101. Imaginatively removing the decorations from the
uniforms and applying them in another medium also would not
replicate the uniform itself.
B. Copyrightable Works
1. Original works
Sec. 172. Literary and Artistic Works. -
172.1 Literary and artistic works, hereinafter referred to as "works", are
original intellectual creations in the literary and artistic domain protected
from the moment of their creation and shall include in particular:
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery,
whether or not reduced in writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or
entertainment in dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving,
lithography or other works of art; models or designs for works of art;
(h) Original ornamental designs or models for articles of manufacture,
whether or not registrable as an industrial design, and other works of
applied art;
(i) Illustrations, maps, plans, sketches, charts and three-dimensional works
relative to geography, topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous
to photography; lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a
process analogous to cinematography or any process for making audio-
visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.
Sec. 218. Affidavit Evidence. -
218.1. In an action under this Chapter, an affidavit made before a notary
public by or on behalf of the owner of the copyright in any work or other
subject matter and stating that:
(a) At the time specified therein, copyright subsisted in the work or other
subject matter;
(b) He or the person named therein is the owner of the copyright; and
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(c) The copy of the work or other subject matter annexed thereto is a true
copy thereof, shall be admitted in evidence in any proceedings for an
offense under this Chapter and shall be prima facie proof of the matters
therein stated until the contrary is proved, and the court before which such
affidavit is produced shall assume that the affidavit was made by or on
behalf of the owner of the copyright.
218.2. In an action under this Chapter.
(a) Copyright shall be presumed to subsist in the work or other subject
matter to which the action relates if the defendant does not put in issue the
question whether copyright subsists in the work or other subject matter;
and
(b) Where the subsistence of the copyright is established, the plaintiff shall
be presumed to be the owner of the copyright if he claims to be the owner
of the copyright and the defendant does not put in issue the question of his
ownership.
(c) Where the defendant, without good faith, puts in issue the questions of
whether copyright subsists in a work or other subject matter to which the
action relates, or the ownership of copyright in such work or subject matter,
thereby occasioning unnecessary costs or delay in the proceedings, the
court may direct that any costs to the defendant in respect of the action
shall not be allowed by him and that any costs occasioned by the
defendant to other parties shall be paid by him to such other parties.  listings.
Feist Publications v. Rural Telephone Services (2 issues)
499 US 340 (1991)
 Copyrightable Works (Original Works-Sec. 172 and 218 of
IP Code)
 Non-Copyrightable Works (Sec. 175 of IP Code)
*Lengthy but worth reading. 
FACTS: Rural Telephone Service Company(Rural) is a certified public
utility that provides telephone service to several communities in northwest
Kansas. Accordingly, as a condition of its monopoly franchise, Rural
publishes a typical telephone directory, consisting of white pages and
yellow pages. The white pages list in alphabetical order the names of
Rural's subscribers, together with their towns and telephone numbers. The
yellow pages list Rural's business subscribers alphabetically by category
and feature classified advertisement. Rural distributes its directory free of
charge to its subscribers, but earns revenue by selling yellow pages
advertisements.
Feist Publications, Inc.,(Fiest) is a publishing company that specializes in
area-wide telephone directories. The Feist directory that is the subject of
this litigation covers 11 different telephone service. Like Rural's directory,
Feist's is distributed free of charge and includes both white pages and
yellow pages.
As the sole provider of telephone service in its service area, Rural obtains
subscriber information quite easily. Feist is not a telephone company, and
therefore lacks independent access to any subscriber information. To
obtain white pages listings, Feist approached each of the telephone
companies operating and offered to pay for the right to use its white pages
Rural refused to license its listings to Feist. Unable to license Rural's white
pages listings, Feist used them without Rural's consent. There were
fictitious listings that Rural had inserted into its directory to detect copying.
Rural sued for copyright infringement taking the position that Feist, in
compiling its own directory, could not use the information contained in
Rural's white pages. Rural asserted that Feist's employees were obliged to
travel door-to-door or conduct a telephone survey to discover the same
information for themselves. Feist responded that such efforts were
economically impractical and, in any event, unnecessary because the
information copied was beyond the scope of copyright protection. The
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District Court granted summary judgment to Rural, explaining that "courts
have consistently held that telephone directories are copyrightable"
Rural wisely concedes this point, that "facts and discoveries, of course, are
not themselves subject to copyright protection. At the same time, however,
alleged that it is beyond dispute that compilations of facts are within the
subject matter of copyright.
ISSUE: Whether or not telephone directory white pages is covered by the
copy right protection?
HELD: The key to resolving the tension lies in understanding why facts are
not copyrightable. The sine qua non of copyright is originality. To qualify for
copyright protection, a work must be original to the author. Originality does
not signify novelty; a work may be original even though it closely resembles
other works so long as the similarity is fortuitous, not the result of copying.
To illustrate, assume that two poets, each ignorant of the other, compose
identical poems. Neither work is novel, yet both are original and, hence,
copyrightable.
It is this bedrock principle of copyright that mandates the law's seemingly
disparate treatment of facts and factual compilations. "No one may claim
originality as to facts." This is because facts do not owe their origin to an
act of authorship. The distinction is one between creation and discovery:
the first person to find and report a particular fact has not created the fact;
he or she has merely discovered its existence. To borrow from Burrow-
Giles, one who discovers a fact is not its "maker" or "originator." "The
discoverer merely finds and records." Census-takers, for example, do not
"create" the population figures that emerge from their efforts; in a sense,
they copy these figures from the world around them. Census data therefore
do not trigger copyright because these data are not "original" in the
constitutional sense. The same is true of all facts -- scientific, historical,
biographical, and news of the day. "They may not be copyrighted and are
part of the public domain available to every person."
This protection is subject to an important limitation. The mere fact that a
work is copyrighted does not mean that every element of the work may be
protected. Originality remains the sine qua non of copyright; accordingly,
copyright protection may extend only to those components of a work that
are original to the author. Thus, if the compilation author clothes facts with
an original collocation of words, he or she may be able to claim a copyright
in this written expression. Others may copy the underlying facts from the
publication, but not the precise words used to present them. Where the
compilation author adds no written expression but rather lets the facts
speak for themselves, the expressive element is more elusive. The only
conceivable expression is the manner in which the compiler has selected
and arranged the facts. Thus, if the selection and arrangement are original,
these elements of the work are eligible for copyright protection. No matter
how original the format, however, the facts themselves do not become
original through association.
Most courts construed the 1909 Act correctly, But some courts
misunderstood the statute and developed the theory known as “sweat of
the brow.”
The “sweat of the brow” doctrine had numerous flaws, the most glaring
being that it extended copyright protection in a compilation beyond
selection and arrangement -- the compiler's original contributions -- to the
facts themselves. Under the doctrine, the only defense to infringement was
independent creation. A subsequent compiler was “not entitled to take one
word of information previously published,” but rather had to “independently
work out the matter for himself, so as to arrive at the same result from the
same common sources of information.” “Sweat of the brow” courts thereby
eschewed the most fundamental axiom of copyright law -- that no one may
copyright facts or ideas.
“The two fundamental criteria of copyright protection [are] originality and
fixation in tangible form. The Congress enacted law to ensure that the
mistake “sweat of the brow” will never repeat, thus determined that,
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collections of facts are not copyrightable per se. The statute identifies three
distinct elements and requires each to be met for a work to qualify as a
copyrightable compilation: (1) the collection and assembly of pre-
existing material, facts, or data; (2) the selection, coordination, or
arrangement of those materials; and (3) the creation, by virtue of the
particular selection, coordination, or arrangement, of an “original”
work of authorship. “This tripartite conjunctive structure is self-evident,
and should be assumed to 'accurately express the legislative purpose.'”
There is no doubt that Feist took from the white pages of Rural's directory a
substantial amount of factual information. At a minimum, Feist copied the
names, towns, and telephone numbers of 1,309 of Rural's subscribers. Not
all copying, however, is copyright infringement. To establish infringement,
two elements must be proven: (1) ownership of a valid copyright, and (2)
copying of constituent elements of the work that are original.
The selection, coordination, and arrangement of Rural's white pages do not
satisfy the minimum constitutional standards for copyright protection.
Rural's white pages are entirely typical. Persons desiring telephone service
in Rural's service area fill out an application and Rural issues them a
telephone number. In preparing its white pages, Rural simply takes the
data provided by its subscribers and lists it alphabetically by surname. The
end product is a garden-variety white pages directory, devoid of even the
slightest trace of creativity.
We conclude that the names, towns, and telephone numbers copied by
Feist were not original to Rural and therefore were not protected by the
copyright in Rural's combined white and yellow pages directory. Rural's
white pages, limited to basic subscriber information and arranged
alphabetically, fall short of the mark.
3. Filipino Society of Composers v. Benjamin Tan
148 SCRA 461
 Copyrightable Works (Original Works-Sec. 172 and 218 of
IP Code)
Nature of the case: It is an appeal assailing the decision of Court of First
Instance (CFI) of Manila that dismissed plaintiff’s complaint. CA finds the
complaint as a pure question of law and certified the same to the Supreme
Court.
FACTS:
 Plaintiff-appellant, FSCAPI, is a non-profit association of authors,
composers and publishers duly organized under the Corporation
Law of the Philippines and registered with the Securities and
Exchange Commission.
 FSCAPI owns "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat
Kami Ay Tao Lamang" and "The Nearness Of You."
 Benjamin Tan, defendant-appellee is the operator of a restaurant
known as "Alex Soda Foundation and Restaurant".
 Tan hired professional singers to play the earlier said compositions
while customers dine in his restaurant.
 Plaintiff FSCAPI demanded payment of license fee from Tan for
playing the said songs/compositions.
 November 7, 1967, appellant filed a complaint for INFRINGEMENT
OF COPYRIGHT to CFI Manila when Benjamin Tan ignored the
demand for fees.
 CFI (RTC) Ruling
o DISMISSED THE COMPLAINT
 CA
o Found the complaint as pure question of law
ISSUE:
1. Whether or not (WON) the playing and signing of musical
compositions which have been copyrighted under the provisions of
the Copyright Law (Act 3134) inside the establishment of the
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defendant-appellee constitute a public performance for profit;
and
2. WON Benjamin Tan can be held liable if public performance for
profit exists therefor.
HELD:
1. No. The customers only pay for food and drinks and the music
is only used to induce customers to dine.
Appellant FSCAPI using Sec. 3 does NOT hold water.
Section 3(c) of the Copyright Law which provides: The proprietor of
a copyright or his heirs or assigns shall have the exclusive right:
xxx xxx xxx
(c) To exhibit, perform, represent, produce, or reproduce the
copyrighted work in any manner or by any method whatever for
profit or otherwise; if not reproduced in copies for sale, to sell any
manuscripts or any record whatsoever thereof;
xxx xxx xxx
2. No. The compositions are deemed donated to the public.
The Supreme Court has ruled that "Paragraph 33 of Patent Office
Administrative Order No. 3 (as amended, dated September 18,
1947) entitled 'Rules of Practice in the Philippines Patent Office
relating to the Registration of Copyright Claims' promulgated
pursuant to Republic Act 165, provides among other things that an
intellectual creation should be copyrighted thirty (30) days
after its publication, if made in Manila, or within the (60) days if
made elsewhere, failure of which renders such creation public
property." (Santos v. McCullough Printing Company, 12 SCRA
324-325 [1964]. Indeed, if the general public has made use of the
object sought to be copyrighted for thirty (30) days prior to the
copyright application the law deems the object to have been
donated to the public domain and the same can no longer be
copyrighted.
4. Filipino Society of Composers v. Benjamin Tan
148 SCRA 461
 Copyrightable Works (Original Works-Sec. 172 and 218 of
IP Code)
Nature of the case: It is an appeal assailing the decision of Court of First
Instance (CFI) of Manila that dismissed plaintiff’s complaint. CA finds the
complaint as a pure question of law and certified the same to the Supreme
Court.
FACTS:
 Plaintiff-appellant, FSCAPI, is a non-profit association of authors,
composers and publishers duly organized under the Corporation
Law of the Philippines and registered with the Securities and
Exchange Commission.
 FSCAPI owns "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat
Kami Ay Tao Lamang" and "The Nearness Of You."
 Benjamin Tan, defendant-appellee is the operator of a restaurant
known as "Alex Soda Foundation and Restaurant".
 Tan hired professional singers to play the earlier said compositions
while customers dine in his restaurant.
 Plaintiff FSCAPI demanded payment of license fee from Tan for
playing the said songs/compositions.
 November 7, 1967, appellant filed a complaint for INFRINGEMENT
OF COPYRIGHT to CFI Manila when Benjamin Tan ignored the
demand for fees.
 CFI (RTC) Ruling
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LEX CERVUS NOTES 2020
o DISMISSED THE COMPLAINT
 CA
o Found the complaint as pure question of law
ISSUE:
3. Whether or not (WON) the playing and signing of musical
compositions which have been copyrighted under the provisions of
the Copyright Law (Act 3134) inside the establishment of the
defendant-appellee constitute a public performance for profit;
and
4. WON Benjamin Tan can be held liable if public performance for
profit exists therefor.
HELD:
3. No. The customers only pay for food and drinks and the music
is only used to induce customers to dine.
Appellant FSCAPI using Sec. 3 does NOT hold water.
Section 3(c) of the Copyright Law which provides: The proprietor of
a copyright or his heirs or assigns shall have the exclusive right:
xxx xxx xxx
(c) To exhibit, perform, represent, produce, or reproduce the
copyrighted work in any manner or by any method whatever for
profit or otherwise; if not reproduced in copies for sale, to sell any
manuscripts or any record whatsoever thereof;
xxx xxx xxx
4. No. The compositions are deemed donated to the public.
The Supreme Court has ruled that "Paragraph 33 of Patent Office
Administrative Order No. 3 (as amended, dated September 18,
1947) entitled 'Rules of Practice in the Philippines Patent Office
relating to the Registration of Copyright Claims' promulgated
pursuant to Republic Act 165, provides among other things that an
intellectual creation should be copyrighted thirty (30) days
after its publication, if made in Manila, or within the (60) days if
made elsewhere, failure of which renders such creation public
property." (Santos v. McCullough Printing Company, 12 SCRA
324-325 [1964]. Indeed, if the general public has made use of the
object sought to be copyrighted for thirty (30) days prior to the
copyright application the law deems the object to have been
donated to the public domain and the same can no longer be
copyrighted.
UNILEVER PHILIPPINES VS CA G.R. No. 119280
August 10, 2006
Facts:
-In this petition for review under Rule 45 of the Rules of Court, petitioner
assails the February 24, 1995 decision[1] of the Court of Appeals (CA) in
CA-G.R. SP No. 35242 entitled Unilever Philippines (PRC), Inc. v.
Honorable Fernando V. Gorospe, Jr. and Procter and Gamble Philippines,
Inc. (P&GP) which affirmed the issuance by the court a quo of a writ of
preliminary injunction against it. The writ enjoined petitioner from using and
airing, until further orders of the court, certain television commercials for its
laundry products claimed to be identical or similar to its double tug or tac-
tac key visual.
-Petitioner alleges that the writ of preliminary injunction was issued by the
trial court (and affirmed by the CA) without any evidence of private
respondents clear and unmistakable right to the writ. Petitioner further
contends that the preliminary injunction issued against it already disposed
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of the main case without trial, thus denying petitioner of any opportunity to
present evidence on its behalf.
-On August 24, 1994, private respondent Procter and Gamble Phils., Inc.
filed a complaint for injunction with damages and a prayer for temporary
restraining order and/or writ of preliminary injunction against petitioner
Unilever, alleging that:
1. As early as 1982, a P&G subsidiary in Italy used a key visual in the
advertisement of its laundry detergent and bleaching products. This key
visual known as the double-tug or tac-tac demonstration shows the fabric
being held by both hands and stretched sideways.
2. The tac-tac was conceptualized for P&G by the advertising agency
Milano and Gray of Italy in 1982. The tac-tac was used in the same year in
an advertisement entitled All aperto to demonstrate the effect on fabrics of
one of P&GPs products, a liquid bleach called Ace.
3. Since then, P&G has used the tac-tac key visual in the advertisement of
its products. In fact, in 1986, in Italy, the tac-tac key visual was used in the
television commercial for Ace entitled Kite.
4.P&G has used the same distinctive tac-tac key visual to local consumers
in the Philippines.
5.Imitating the aforesaid tac-tac key visual of P&GP and in blatant
disregard of P&GPs intellectual property rights, Unilever on 24 July 1993
started airing a 60 second television commercial TVC of its Breeze
Powerwhite laundry product called Porky. The said TVC included a
stretching visual presentation and sound effects almost [identical] or
substantially similar to P&GPs tac-tac key visual.
6. On July 15, 1994, P&GP aired in the Philippines, the same Kite
television advertisement it used in Italy in 1986, merely dubbing the Italian
language with Filipino for the same produce Ace bleaching liquid which
P&GP now markets in the Philippines.
7. On August 1, 1994, Unilever filed a Complaint with the Advertising
Board of the Philippines to prevent P&GP from airing the Kite television
advertisement.[3]
-On August 26, 1994, Judge Gorospe issued an order granting a temporary
restraining order and a hearing so that Unilever to show cause why the writ
of preliminary injunction should not issue and later issuead a writ of
preliminary injunction. Petitioner appealed to the CA, but was denied.
Issue: Whether or not the CA erred in issuing the writ of injunction
Ruling: No, the CA did not erred in its ruling.
In the records, it shows that:
Petitioner does not deny that the questioned TV advertisements are
substantially similar to P&GPs double tug or tac-tac key visual. However, it
submits that P&GP is not entitled to the relief demanded, which is to enjoin
petitioner from airing said TV advertisements, for the reason that petitioner
has Certificates of Copyright Registration for which advertisements while
P&GP has none with respect to its double-tug or tac-tac key visual. In other
words, it is petitioners contention that P&GP is not entitled to any protection
because it has not registered with the National Library the very TV
commercials which it claims have been infringed by petitioner.
The courts decision:
We disagree. Section 2 of PD 49 stipulates that the copyright for a work or
intellectual creation subsists from the moment of its creation. Accordingly,
the creator acquires copyright for his work right upon its creation. Contrary
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to petitioners contention, the intellectual creators exercise and enjoyment
of copyright for his work and the protection given by law to him is not
contingent or dependent on any formality or registration. Therefore, taking
the material allegations of paragraphs 1.3 to 1.5 of P&GPs verified
Complaint in the context of PD 49, it cannot be seriously doubted that at
least, for purposes of determining whether preliminary injunction should
issue during the pendency of the case, P&GP is entitled to the injunctive
relief prayed for in its Complaint
Preliminary injunction is a provisional remedy intended to provide
protection to parties for the preservation of their rights or interests during
the pendency of the principal action.[6] Thus, Section1, Rule 58 of the
Rules of Court provides:
Section 1. Preliminary injunction defined; classes. A preliminary injunction
is an order granted at any stage of an action or proceeding prior to the
judgment or final order, requiring a party or a court, agency or a person to
refrain from a particular act or acts. It may also require the performance of
a particular act or acts, in which case it shall be known as a preliminary
mandatory injunction.
Injunction is resorted to only when there is a pressing necessity to avoid
injurious consequences which cannot be remedied under any standard
compensation.As correctly ruled by the CA, there was an extreme urgency
to grant the preliminary injunction prayed for by P&GP considering that TV
commercials are aired for a limited period of time only. In fact, this Court
takes note of the fact that the TV commercial in issue ― the Kite TV
advertisement ― is no longer aired today, more than 10 years after the
injunction was granted on September 16, 1994.
The sole objective of a writ of preliminary injunction is to preserve the
status quo until the merits of the case can be heard fully.[The issuance of a
preliminary injunction rests entirely on the discretion of the court and is
generally not interfered with except in cases of manifest abuse. There was
no such abuse in the case at bar, especially because petitioner was given
all the opportunity to oppose the application for injunction. The fact was, it
failed to convince the court why the injunction should not be issued. Thus,
in Santos v. Court of Appeals,we held that no grave abuse of discretion can
be attributed to a judge or body issuing a writ of preliminary injunction
where a party has not been deprived of its day in court as it was heard and
it exhaustively presented all its arguments and defenses.
WHEREFORE, the petition is hereby DENIED
1. Manly v. Dadodette
GR No. 165306 (Sep. 20, 2006)
 Copyrightable Works (Original Works-Sec. 172 and 218 of
IP Code)
FACTS:On March 17, 2003 a search warrant was issued by the RTC of
Quezon City against Dadodette Enterprises for possession of goods which
copyright belonged to Manly Sportswear. Dadodette thereafter moved to
quash and annul the search warrant contending that the same was invalid
since the requisites for its issuance have not been complied with. They
insisted that the sporting goods manufactured by and/or registered in the
name of Manly Sportswear are ordinary and common hence, not among
the classes of work protected under Section 172 of RA 8293. On June 10,
2003, the trial court granted the motion to quash and declared the search
warrant null and void based on its finding that the copyrighted products of
Manly do not appear to be original creations and were being manufactured
and distributed by different companies locally and abroad under various
brands, and therefore unqualified for protection under Section 172 of RA
8293. An appeal was filed with the CA but it affirmed the RTC’s quashal of
the search warrant.
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ISSUE:WON the certificate of registration issued to Manly Sportswear
carries with it the presumption of validity and originality hence, protected
under Sec. 172 of RA 8293.
HELD: The copyright certificates issued in favor of Manly Sportswear
constitute merely prima facie evidence of validity and ownership. However,
no presumption of validity is created where other evidence exist that may
cast doubt on the copyright validity. Hence, where there is sufficient proof
that the copyrighted products are not original creations but are readily
available in the market under various brands, as in this case, validity and
originality will not be presumed and the trial court may properly quash the
issued warrant for lack of probable cause.
Besides, no copyright accrues in favor of Manly Sportswear despite
issuance of the certificates of registration and deposit, pursuant to Section
2, Rule 7 of the Copyrights Safeguards and Regulations which states,
“Sec. 2 Effects of Registration and Deposit of Work. The registration and
deposit of the work is purely for recording the date of registration and
deposit of the work and shall not be conclusive as to copyright ownership
or the term of the copyrights or the rights of the copyright owner, including
neighboring rights.”
At most, the certificates of registration and deposit issued by the National
Library and the Supreme Court Library serve merely as a notice of
recording and registration of the work but do not confer any right or title
upon the registered copyright owner or automatically put his work under the
protective mantle of the copyright law. It is not a conclusive proof of
copyright ownership. As it is, non-registration and deposit of the work within
the prescribed period only makes the copyright owner liable to pay a fine.
The petition was denied.
2. Derivative Works
Sec. 173. Derivative Works. -
173.1. The following derivative works shall also be protected by copyright:
(a) Dramatizations, translations, adaptations, abridgments, arrangements,
and other alterations of literary or artistic works; and
(b) Collections of literary, scholarly or artistic works, and compilations of
data and other materials which are original by reason of the selection or
coordination or arrangement of their contents. (Sec. 2, [P] and [Q], P. D.
No. 49)
173.2. The works referred to in paragraphs (a) and (b) of Subsection 173.1
shall be protected as a new works: Provided however, That such new work
shall not affect the force of any subsisting copyright upon the original works
employed or any part thereof, or be construed to imply any right to such
use of the original works, or to secure or extend copyright in such original
works.
C. Non-Copyrightable Works
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.
Baker v. Selden
101 U.S. 99 (1879)
Non-Copyrightable Works (Sec. 175 of IP Code)
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Facts. Selden (Plaintiff) copyrighted a book in which he used in
introductory essay explaining his system of bookkeeping followed by forms
to put the system to use.  He had arranged the columns and headings so
that the entire operation of a day, week or month was on a single page or
on two pages facing each other.  Baker (Defendant) then began selling
forms with columns and headings arranged differently to achieve the same
result.  When Plaintiff successfully sued for copyright infringement,
Defendant appealed.  He argued that the forms were non-copyrightable.
Issue. Does copyright protection for a book explaining an art or system
prevent others from using the system or the forms incidentally used?
Held. (Bradley, J.)  No.  The copyright protection for a book explaining an
art or system extends only to the author’s unique explanation of it and does
not prevent others from using the system or the forms incidentally used.
To find that a copyright protected against use of the system itself or the
forms necessary to such use would be to grant protection similar to a
patent without requiring a showing of novelty.  Copyright is based on
originality, not novelty, and protects the explanation of the system and not
the use of the system.  In this case, therefore, the copyright Selden
(Plaintiff) obtained could not give him the exclusive right to use the
bookkeeping system or the forms necessary to such use.  Reversed and
remanded.
Discussion. This case has been interpreted by many as allowing copying
for use as opposed to copying for the purpose of explanation.  However, in
applying this rule, some courts have gone rather far and have allowed
something to pass as copying for use when there were alternate ways to
arrange the words that could have easily been chosen to communicate the
non-copyrightable system or art.  This has provoked much criticism of the
interpretation previously mentioned regarding the rule of this case.
5. Joaquin v. Drilon
302 SCRA 225 (1999)
 Non-Copyrightable Works (Sec. 175 of IP Code)
FACTS:On June 28, 1973, petitioner BJPI submitted to the National Library
an addendum to its certificate of copyright specifying the shows 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 Its 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 of IXL, informing Zosa that BJPI had a copyright to Rhoda and
Me and demanding that IXL discontinue airing Its a Date.
In a letter, dated July 19, 1991, private respondent Zosa apologized to
petitioner Joaquin and requested a meeting to discuss a possible
settlement. IXL, however, continued airing Its a Date, prompting petitioner
Joaquin to send a second letter on July 25, 1991 in which he reiterated his
demand and warned that, if IXL did not comply, he would endorse the
matter to his attorneys for proper legal action.
Meanwhile, private respondent Zosa sought to register IXLs copyright to
the first episode of Its a Date for which it was issued by the National Library
a certificate of copyright on August 14, 1991.
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 of Quezon City where it was
docketed as Criminal Case No. 92-27854 and assigned to Branch 104
thereof. However, private respondent Zosa sought a review of the
resolution of the Assistant City Prosecutor before the Department of
Justice.
On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon
reversed the Assistant City Prosecutors findings and directed him to move
for the dismissal of the case against private respondents.
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LEX CERVUS NOTES 2020
Petitioners claim that their failure to submit the copyrighted master
videotape of the television show Rhoda and Me was not raised in issue by
private respondents during the preliminary investigation and, therefore, it
was error for the Secretary of Justice to reverse the investigating
prosecutors finding of probable cause on this ground.
ISSUE:WHETHER THE FORMAT OR MECHANICS OF A SHOW IS
ENTITLED TO COPYRIGHT PROTECTION.
RULING: To begin with, the format of a show is not copyrightable. Section
2 of P.D. No. 49, otherwise known as the DECREE ON INTELLECTUAL
PROPERTY, enumerates the classes of work entitled to copyright
protection, to wit:
Section 2. The rights granted by this Decree shall, from the moment of
creation, subsist with respect to any of the following classes of works:
(A) Books, including composite and cyclopedic works, manuscripts,
directories, and gazetteers;
(B) Periodicals, including pamphlets and newspapers;
(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;
(D) Letters;
(E) Dramatic or dramatico-musical compositions; choreographic works and
entertainments in dumb shows, the acting form of which is fixed in writing
or otherwise;
(F) Musical compositions, with or without words;
(G) Works of drawing, painting, architecture, sculpture, engraving,
lithography, and other works of art; models or designs for works of art;
(H) Reproductions of a work of art;
(I) Original ornamental designs or models for articles of manufacture,
whether or not patentable, and other works of applied art;
(J) Maps, plans, sketches, and charts;
(K) Drawings or plastic works of a scientific or technical character;
(L) Photographic works and works produced by a process analogous to
photography; lantern slides;
(M) Cinematographic works and works produced by a process analogous
to cinematography or any process for making audio-visual recordings;
(N) Computer programs;
(O) Prints, pictorial illustrations advertising copies, labels, tags, and box
wraps;
(P) Dramatizations, translations, adaptations, abridgements, arrangements
and other alterations of literary, musical or artistic works or of works of the
Philippine government as herein defined, which shall be protected as
provided in Section 8 of this Decree.
(Q) Collections of literary, scholarly, or artistic works or of works referred to
in Section 9 of this Decree which by reason of the selection and
arrangement of their contents constitute intellectual creations, the same to
be protected as such in accordance with Section 8 of this Decree.
(R) Other literary, scholarly, scientific and artistic works.
This provision is substantially the same as 172 of the INTELLECTUAL
PROPERTY CODE OF THE PHILIPPINES (R.A. No. 8293). The format or
mechanics of a television show is not included in the list of protected works
in 2 of P.D. No. 49. For this reason, the protection afforded by the law
cannot be extended to cover them.
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LEX CERVUS NOTES 2020
Copyright, in the strict sense of the term, is purely a statutory right. It is a
new or independent right granted by the statute, and not simply a pre-
existing right regulated by the statute. Being a statutory grant, the rights are
only such as the statute confers, and may be obtained and enjoyed only
with respect to the subjects and by the persons, and on terms and
conditions specified in the statute.
Since copyright in published works is purely a statutory creation, a
copyright may be obtained only for a work falling within the statutory
enumeration or description.
Regardless of the historical viewpoint, it is authoritatively settled in the
United States that there is no copyright
except that which is both created and secured by act of Congress.
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.
What then is the subject matter of petitioners copyright? This Court is
of the opinion that petitioner BJPIs 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
BJPIs copyright, the investigating prosecutor should have the opportunity
to compare the videotapes of the two shows
6. Ching v. Salinas
G.R. No. 161295 (June 29 2005) 462 SCRA 241
 Non-Copyrightable Works (Sec. 175 of IP Code)
FACTS: Petitioner Ching is a maker and manufacturer of a utility model,
Leaf Spring Eye Bushing for Automobile, for which he holds certificates of
copyright registration. Petitioner’s request to the NBI to apprehend and
prosecute illegal manufacturers of his work led to the issuance of search
warrants against respondent Salinas, alleged to be reproducing and
distributing said models in violation of the IP Code. Respondent moved to
quash the warrants on the ground that petitioner’s work is not artistic in
nature and is a proper subject of a patent, not copyright. Petitioner insists
that the IP Code protects a work from the moment of its creation regardless
of its nature or purpose. The trial court quashed the warrants. Petitioner
argues that the copyright certificates over the model are prima facie
evidence of its validity. CA affirmed the trial court’s decision.
ISSUES: (1) Whether or not petitioner’s model is an artistic work subject to
copyright protection.
(2) Whether or not petitioner is entitled to copyright protection on the basis
of the certificates of registration issued to it.
HELD: (1) NO. As gleaned from the specifications appended to the
application for a copyright certificate filed by the petitioner, the said Leaf
Spring Eye Bushing for Automobile and Vehicle Bearing Cushion are
merely utility models. As gleaned from the description of the models and
their objectives, these articles are useful articles which are defined as one
having an intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey information. Plainly, these are not
COPYRIGHT-BRAVOLEX | 15
LEX CERVUS NOTES 2020
literary or artistic works. They are not intellectual creations in the literary
and artistic domain, or works of applied art. They are certainly not
ornamental designs or one having decorative quality or value. Indeed,
while works of applied art, original intellectual, literary and artistic works are
copyrightable, useful articles and works of industrial design are not. A
useful article may be copyrightable only if and only to the extent that such
design incorporates pictorial, graphic, or sculptural features that can be
identified separately from, and are capable of existing independently of the
utilitarian aspects of the article. In this case, the bushing and cushion are
not works of art. They are, as the petitioner himself admitted, utility models
which may be the subject of a patent.
(2) NO. No copyright granted by law can be said to arise in favor of the
petitioner despite the issuance of the certificates of copyright registration
and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing
Cushion. Indeed, in Joaquin, Jr. v.Drilon and Pearl & Dean (Phil.),
Incorporated v. Shoemart, Incorporated, the Court ruled that:
Copyright, in the strict sense of the term, is purely a statutory right. It is a
new or independent right granted by the statute, and not simply a pre-
existing right regulated by it. 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. Accordingly, it can cover only the works falling
within the statutory enumeration or description.
Ownership of copyrighted material is shown by proof of originality and
copyright ability. To discharge his burden, the applicant may present the
certificate of registration covering the work or, in its absence, other
evidence. A copyright certificate provides prima facie evidence of originality
which is one element of copyright validity. It constitutes prima facie
evidence of both validity and ownership and the validity of the facts stated
in the certificate.
SISON OLAÑO v. LIM ENG CO
FACTS:Sometime in 2002, LECSteel Manufacturing Corporation was
invited by the architects of the Manansala Project, a high-end residential
building in Rockwell Center, Makati City, to submit design/drawings and
specifications for interior and exterior hatch doors. LEC 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. 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 and exterior hatch doors for the
Project's 23rd to 41st floors.On June 24, 2004, LEC demanded Metrotech
to cease from infringing its intellectual property rights. Metrotech, however,
insisted that no copyright infringement was committed because the hatch
doors it manufactured were patterned in accordance with the drawings
provided by SKI-FB.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. LEC was issued a Certificate of
Copyright Registration and Deposit that it is the registered owner of
plans/drawings for interior and exterior hatch doors. On December 9, 2004,
LEC was issued another Certificate of Copyright Registration and Deposit
WhenMetrotech still refused to stop fabricating, the latter sought the
assistance of the National Bureau of Investigation (NBI) which in turn
applied for a search warrant before RTC of Quezon City. The application
was granted on August 13, 2004 thus resulting in the confiscation of
finished and unfinished metal hatch doors as well as machines used in
fabricating and manufacturing hatch doors from the premises of
Metrotech.Traversing the complaint, the petitioners admitted manufacturing
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LEX CERVUS NOTES 2020
hatch doors for the Project. They denied, however, that they committed
copyright infringement and averred that the hatch doors they manufactured
were functional inventions that are proper subjects of patents and that the
records of the Intellectual Property Office reveal that there is no patent,
industrial design or utility model registration on LEC's hatch doors.
Metrotech further argued that the manufacturing of hatch doors per se is
not copyright infringement because copyright protection does not extend to
the objects depicted in the illustrations and plans. Moreover, there is no
artistic or ornamental expression embodied in the subject hatch doors that
would subject them to copyright protection.
ISSUE:Whether or not the hatch doors are copy copyrightable to constitute
infringement.
RULING:In defending the copyrightability 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.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. 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.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
D. Rights of Copyright Owner
Sec. 177. Copy or Economic Rights. - Subject to the provisions of Chapter
VIII, copyright or economic rights shall consist of the exclusive right to carry
out, authorize or prevent the following acts:
177.1. Reproduction of the work or substantial portion of the work;
177.2 Dramatization, translation, adaptation, abridgment, arrangement or
other transformation of the work;
177.3. The first public distribution of the original and each copy of the work
by sale or other forms of transfer of ownership;
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LEX CERVUS NOTES 2020
177.4. Rental of the original or a copy of an audiovisual or cinematographic
work, a work embodied in a sound recording, a computer program, a
compilation of data and other materials or a musical work in graphic form,
irrespective of the ownership of the original or the copy which is the subject
of the rental; (n)
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the work
7. Kirtsaeng v. John Wiley & Sons
568 US (No. 11-697, March 19,2013)
 Rights of Copy Owner (177 of IP Code)
FACTS:The “exclusive rights” that a copyright owner has “to distribute
copies . . . of [a] copyrighted work,” are qualified by the application of
several limitations, including the “first sale” doctrine, which provides that
“the owner of a particular copy or phonorecord lawfully made under this title
. . . is entitled, without the authority of the copyright owner, to sell or
otherwise dispose of the possession of that copy or phonorecord,”
Importing a copy made abroad without the copyright owner’s permission is
an infringement. In Quality King Distributors, Inc. v. L’anza Research Int’l,
Inc., 523 U. S. 135, 145, this Court held that §602(a)(1)’s reference to
§106(3) incorporates the §§107 through 122 limitations, including §109’s
“first sale” doctrine. However, the copy in Quality King was initially
manufactured in the United States and then sent abroad and sold.
Respondent, John Wiley & Sons, Inc., an academic textbook publisher,
often assigns to its wholly owned foreign subsidiary (Wiley Asia) rights to
publish, print, and sell foreign editions of Wiley’s English language
textbooks abroad. Wiley Asia’s books state that they are not to be taken
(without permission) into the United States. When petitioner Kirtsaeng
moved from Thailand to the United States to study mathematics, he asked
friends and family to buy foreign edition English-language textbooks in Thai
book shops, where they sold at low prices, and to mail them to him in the
United States. He then sold the books, reimbursed his family and friends,
and kept the profit. Wiley filed suit, claiming that Kirtsaeng’s unauthorized
importation and resale of its books was an infringement of Wiley’s
exclusive right to distribute and import prohibition. Kirtsaeng replied that
because his books were “lawfully made” and acquired legitimately, “first
sale” doctrine permitted importation and resale without Wiley’s further
permission. The District Court held that Kirtsaeng could not assert this
defense because the doctrine does not apply to goods manufactured
abroad. The jury then found that Kirtsaeng had willfully infringed Wiley’s
American copyrights and assessed damages. The Second Circuit affirmed,
concluding that it was “lawfully made under this title” language indicated
that the “first sale” doctrine does not apply to copies of American
copyrighted works manufactured abroad.
ISSUE: Whether or not the “First Sale” doctrine applies to copies of a
copyrighted work lawfully made abroad?
HELD: YES! (a) Wiley reads “lawfully made under this title” to impose a
geographical limitation that prevents doctrine from applying to Wiley Asia’s
books. Kirtsaeng, however, reads the phrase as imposing the non-
geographical limitation made “in accordance with” or “in compliance with”
the Copyright Act, which would permit the doctrine to apply to copies
manufactured abroad with the copyright owner’s permission. Section
109(a)’s language, its context, and the “first sale” doctrine’s common-law
history favor Kirtsaeng’s reading.
(1) Section 109(a) says nothing about geography. “Under” can logically
mean “in accordance with.” And a nongeographical interpretation
provides each word in the phrase “lawfully made under this title”
with a distinct purpose: “lawfully made” suggests an effort to
distinguish copies that were made lawfully from those that were not,
and “under this title” sets forth the standard of “lawful[ness]” (i.e.,
the U. S. Copyright Act). This simple reading promotes the
traditional copyright objective of combatting piracy and makes word-
byword linguistic sense. In contrast, the geographical interpretation
COPYRIGHT-BRAVOLEX | 18
LEX CERVUS NOTES 2020
bristles with linguistic difficulties. Wiley first reads “under” to mean
“in conformance with the Copyright Act where the Copyright Act is
applicable.” Wiley then argues that the Act “is applicable” only in the
United States. However, neither “under” nor any other word in
“lawfully made under this title” means “where.” Nor can a
geographical limitation be read into the word “applicable.” The fact
that the Act does not instantly protect an American copyright holder
from unauthorized piracy taking place abroad does not mean the
Act is inapplicable to copies made abroad. Indeed, §602(a)(2)
makes foreign-printed pirated copies subject to the Copyright Act.
And §104 says that works “subject to protection” include
unpublished works “without regard to the [author’s] nationality or
domicile,” and works “first published” in any of thenearly 180
nations that have signed a copyright treaty with the United States.
(2) Both historical and contemporary statutory context indicate that
Congress did not have geography in mind when writing the present
version of §109(a). xxx
(3) xxx The common-law “first sale” doctrine, which has an impeccable
historic pedigree, makes no geographical distinctions.xxx
(4) xxx Reliance on the “first sale” doctrine is also deeply embedded in
the practices of booksellers, libraries, museums, and retailers, who
have long relied on its protection. And the fact that harm has proved
limited so far may simply reflect the reluctance of copyright holders
to assert geographically based resale rights. Thus, the practical
problems described by petitioner and his amici are too serious,
extensive, and likely to come about to be dismissed as insignificant
— particularly in light of the ever-growing importance of foreign
trade to America. Several additional arguments that Wiley and the
dissent make in support of a geographical interpretation are
unpersuasive.
E. Rules on Ownership of Copyright
Sec. 178. Rules on Copyright Ownership. - Copyright ownership shall be
governed by the following rules:
178.1. Subject to the provisions of this section, in the case of original
literary and artistic works, copyright shall belong to the author of the work;
178.2. In the case of works of joint authorship, the co-authors shall be the
original owners of the copyright and in the absence of agreement, their
rights shall be governed by the rules on co-ownership. If, however, a work
of joint authorship consists of parts that can be used separately and the
author of each part can be identified, the author of each part shall be the
original owner of the copyright in the part that he has created;
178.3. In the case of work created by an author during and in the course of
his employment, the copyright shall belong to:
(a) The employee, if the creation of the object of copyright is not a part of
his regular duties even if the employee uses the time, facilities and
materials of the employer.
(b) The employer, if the work is the result of the performance of his
regularly-assigned duties, unless there is an agreement, express or
implied, to the contrary.
178.4. In the case of a work-commissioned by a person other than an
employer of the author and who pays for it and the work is made in
pursuance of the commission, the person who so commissioned the work
shall have ownership of work, but the copyright thereto shall remain with
the creator, unless there is a written stipulation to the contrary;
178.5. In the case of audiovisual work, the copyright shall belong to the
producer, the author of the scenario, the composer of the music, the film
director, and the author of the work so adapted. However, subject to
contrary or other stipulations among the creators, the producers shall
exercise the copyright to an extent required for the exhibition of the work in
any manner, except for the right to collect performing license fees for the
performance of musical compositions, with or without words, which are
incorporated into the work; and
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LEX CERVUS NOTES 2020
178.6. In respect of letters, the copyright shall belong to the writer subject
to the provisions of Article 723 of the Civil Code.
F. Limitations on Copyright
Sec. 184. Limitations on Copyright. -
184.1. Notwithstanding the provisions of Chapter V, the following acts shall
not constitute infringement of copyright:
(a) the recitation or performance of a work, once it has been lawfully made
accessible to the public, if done privately and free of charge or if made
strictly for a charitable or religious institution or society; (Sec. 10(1), P. D.
No. 49)
(b) 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; (Sec. 11, Third Par., P. D. No. 49)
(c) The reproduction or communication to the public by mass media of
articles on current political, social, economic, scientific or religious topic,
lectures, addresses and other works of the same nature, which are
delivered in public if such use is for information purposes and has not been
expressly reserved: Provided, That the source is clearly indicated; (Sec.
11, P. D. No. 49)
(d) The reproduction and communication to the public of literary, scientific
or artistic works as part of reports of current events by means of
photography, cinematography or broadcasting to the extent necessary for
the purpose; (Sec. 12, P. D. No. 49)
(e) The inclusion of a work in a publication, broadcast, or other
communication to the public, sound recording or film, if such inclusion is
made by way of illustration for teaching purposes and is compatible with
fair use: Provided, That the source and of the name of the author, if
appearing in the work, are mentioned;
(f) The recording made in schools, universities, or educational institutions
of a work included in a broadcast for the use of such schools, universities
or educational institutions: Provided, That such recording must be deleted
within a reasonable period after they were first broadcast: Provided, further,
That such recording may not be made from audiovisual works which are
part of the general cinema repertoire of feature films except for brief
excerpts of the work;
(g) The making of ephemeral recordings by a broadcasting organization by
means of its own facilities and for use in its own broadcast;
(h) The use made of a work by or under the direction or control of the
Government, by the National Library or by educational, scientific or
professional institutions where such use is in the public interest and is
compatible with fair use;
(i) The public performance or the communication to the public of a work, in
a place where no admission fee is charged in respect of such public
performance or communication, by a club or institution for charitable or
educational purpose only, whose aim is not profit making, subject to such
other limitations as may be provided in the Regulations; (n)
(j) Public display of the original or a copy of the work not made by means of
a film, slide, television image or otherwise on screen or by means of any
other device or process: Provided, That either the work has been
published, or, that original or the copy displayed has been sold, given away
or otherwise transferred to another person by the author or his successor in
title; and
(k) Any use made of a work for the purpose of any judicial proceedings or
for the giving of professional advice by a legal practitioner.
184.2. The provisions of this section shall be interpreted in such a way as
to allow the work to be used in a manner which does not conflict with the
normal exploitation of the work and does not unreasonably prejudice the
right holder's legitimate interest.
1. Doctrine of Fairuse
Sec. 185. Fair Use of a Copyrighted Work. -
185.1. The fair use of a copyrighted work for criticism, comment, news
reporting, teaching including multiple copies for classroom use,
scholarship, research, and similar purposes is not an infringement of
copyright. Decompilation, which is understood here to be the reproduction
of the code and translation of the forms of the computer program to
achieve the inter-operability of an independently created computer program
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with other programs may also constitute fair use. In determining whether
the use made of a work in any particular case is fair use, the factors to be
considered shall include:
(a) The purpose and character of the use, including whether such use is of
a commercial nature or is for non-profit education 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.
185.2 The fact that a work is unpublished shall not by itself bar a finding of
fair use if such finding is made upon consideration of all the above factors.
Sony Corp. of America v. Universal Studios
484 US 417
Facts. Sony Corp. (Sony) (Defendant) marketed Betamax videocassette
recorders (VCRs or VTRs), which allowed home recording of televised
programs.  Several movie studios (Plaintiff), holders of copyrights on
televised movies and other televised programs, brought an action for
contributory copyright infringement on the theory that Defendant was
contributorily liable for infringement by consumers of VTRs of the studios’
(Plaintiff) copyrighted works on the basis of Sony’s (Defendant) marketing
and distribution of the VTRs.  The district court, finding, inter alia, that no
Sony (Defendant) employee had either direct involvement with the
allegedly infringing activity or direct contact with purchasers of Betamax
who recorded copyrighted works off-the-air, and that there was no
evidence that any of the copies made by individuals were influenced or
encouraged by Defendant’s advertisements, held that Defendant was not
liable for direct or contributory copyright infringement.  The court of appeals
reversed.  The United States Supreme Court granted certeriori.
Issue. Is one who supplies the way to accomplish an infringing activity and
encourages that activity through advertisement liable for copyright
infringement?
Held.(Stevens, J.)  No.  One who supplies the way to accomplish an
infringing activity and encourages that activity through advertisement is not
liable for copyright infringement.  The protection given to copyrights is
wholly statutory, and, in a case like this, in which Congress has not plainly
marked the course to be followed by the judiciary, the Court must be
circumspect in construing the scope of rights created by a statute that
never contemplated such a calculus of interests based on technological
advances.  In proceeding, the Court must balance the encouraging and
rewarding of authors to create new works with the public good.  This case
does not fall in the category of those in which it is manifestly just to impose
vicarious liability because the “contributory” infringer was in a position to
control the use of copyrighted works by others and had authorized the use
without permission from the copyright owner.  In this case, the only contact
between Defendant and the users of the VTR’s occurred at the moment of
sale.  However, there is no precedent for imposing vicarious liability on the
theory that Sony (Defendant) sold the VTR’s with constructive knowledge
that its customers might use the equipment to make unauthorized copies of
copyrighted material.  The sale of copying equipment, like the sale of other
articles of commerce, does not constitute contributory infringement if the
product is widely used for legitimate, unobjectionable purposes, or actually,
is merely capable of substantial noninfringing uses.  In this case, a large
portion of the public’s use of VTRs does not implicate copyright at all, and
also time-shifting, the most common use for the Betama, constitutes a fair
use.  Reversed.
8. Harper & Row v. Nation Enters
471 U.S. 539 (1985)
 Doctrine of Fair Use (Sec. 185 of IP Code)
Nature of the case:
A certiorari on the decision of the Second Circuit holding that the Nation’s
act was sanctioned as a “fair use”.
FACTS:
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 February 1977, former President Gerald R. Ford contracted with
petitioners to publish his yet unwritten memoirs.
 The memoirs included significant hitherto unpublished material re:
o the Watergate crisis
o pardon of President Nixon
o reflections on the said period of history
o the morality and personalities involved
 Two years later, upon nearing completion of the said project,
petitioners negotiated a prepublication agreement with Time in
exchange for the right to excerpt 7, 500 words of the NIXON
PARDON.
o Time agreed to pay $12, 500 in advance
o Another $12, 500 at publication
 The consideration in the agreement is EXCLUSIVITY.
 2 to 3 weeks before the Time article’s scheduled release, an
UNIDENTIFIED person brought a copy of the Ford manuscript to
Victor Navasky, editor of THE NATION.
o It is a political commentary magazine
o Mr. Navasky knew that his possession of the manuscript
was unauthorized
o Navasky made news and in advance of the publication of
the Ford book composed of 2, 250-word article released in
April 3, 1979
 Time cancelled its product and refused to pay the remaining $12,
500.
 Petitioners brought suit in the District Court of New York alleging
o Conversion
o Tortious interference with contract
o Violations of the Copyright Act
 Lower Court decision
o Rejected the argument of The Nation on Fair Use since the
“A Time to Heal” was already protected by copyright
o Awarded actual damages of $12, 500
 Court of Appeals for the Second Circuit REVERSED the lower
court.
o The copyright attaches to expression
o Copyright not attached to FACTS or ideas
ISSUE: Whether or not (WON) The Nation was entitled to Fair Use hence
did not violate Copyrights
HELD: No. The Supreme Court agreed with CA that copyright is intended
to increase and not to impede the harvest of knowledge BUT
 Copyright Act also fosters original works that provide the seed and
substance of this harvest.
 The rights conferred by copyright are designed to assure
contributors to the store of knowledge a fair return of their labours.
 To determine Fair Use, Section 107 provides:
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
4. The effect on the potential market for or value of the
copyrighted work
 The purpose of The Nation intervened on the Right of First
Publication.
 It damaged the marketability of the copyrighted work.
G. Copyright Infringement
Sec. 216. Remedies for Infringement. -
216.1. Any person infringing a right protected under this law shall be liable:
(a) To an injunction restraining such infringement. The court may also order
the defendant to desist from an infringement, among others, to prevent the
entry into the channels of commerce of imported goods that involve an
infringement, immediately after customs clearance of such goods.
(b) Pay to the copyright proprietor or his assigns or heirs such actual
damages, including legal costs and other expenses, as he may have
incurred due to the infringement as well as the profits the infringer may
have made due to such infringement, and in proving profits the plaintiff
shall be required to prove sales only and the defendant shall be required to
prove every element of cost which he claims, or, in lieu of actual damages
COPYRIGHT-BRAVOLEX | 22
LEX CERVUS NOTES 2020
and profits, such damages which to the court shall appear to be just and
shall not be regarded as penalty.
(c) Deliver under oath, for impounding during the pendency of the action,
upon such terms and conditions as the court may prescribe, sales invoices
and other documents evidencing sales, all articles and their packaging
alleged to infringe a copyright and implements for making them.
(d) Deliver under oath for destruction without any compensation all
infringing copies or devices, as well as all plates, molds, or other means for
making such infringing copies as the court may order.
(e) Such other terms and conditions, including the payment of moral and
exemplary damages, which the court may deem proper, wise and equitable
and the destruction of infringing copies of the work even in the event of
acquittal in a criminal case.
216. 2. In an infringement action, the court shall also have the power to
order the seizure and impounding of any article which may serve as
evidence in the court proceedings. (Sec. 28, P. D. No. 49a)
Sec. 217. Criminal Penalties. -
217.1. Any person infringing any right secured by provisions of Part IV of
this Act or aiding or abetting such infringement shall be guilty of a crime
punishable by:
(a) Imprisonment of one (1) year to three (3) years plus a fine ranging from
Fifty thousand pesos (P50,000) to One hundred fifty thousand pesos
(P150,000) for the first offense.
(b) Imprisonment of three (3) years and one (1) day to six (6) years plus a
fine ranging from One hundred fifty thousand pesos (P150,000) to Five
hundred thousand pesos (P500,000) for the second offense.
(c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a
fine ranging from Five hundred thousand pesos (P500,000) to One million
five hundred thousand pesos (P1,500,000) for the third and subsequent
offenses.
(d) In all cases, subsidiary imprisonment in cases of insolvency.
217.2. In determining the number of years of imprisonment and the amount
of fine, the court shall consider the value of the infringing materials that the
defendant has produced or manufactured and the damage that the
copyright owner has suffered by reason of the infringement.
217.3. Any person who at the time when copyright subsists in a work has in
his possession an article which he knows, or ought to know, to be an
infringing copy of the work for the purpose of:
(a) Selling, letting for hire, or by way of trade offering or exposing for sale,
or hire, the article;
(b) Distributing the article for purpose of trade, or for any other purpose to
an extent that will prejudice the rights of the copyright owner in the work; or
(c) Trade exhibit of the article in public, shall be guilty of an offense and
shall be liable on conviction to imprisonment and fine as above mentioned. 
1. Direct Infringement – it is an infringement by a person who,
without the consent of the owner of the copyright, does anything the sole
right to do which is by law conferred on the owner of the copyright.
Vicarious Liability
2. Technological Protection Measures
. PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs.
FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC.
G.R. No. 131522, July 19, 1999
FACTS: Pacita Habana et al., are authors and copyright owners of duly
issued of the book, College English For Today (CET). Respondent
Felicidad Robles was the author of the book Developing English
Proficiency (DEP). Petitioners found that several pages of the respondent's
book are similar, if not all together a copy of petitioners' book. Habana et
al. filed an action for damages and injunction, alleging respondent’s
infringement of copyrights, in violation of P.D. 49. They allege respondent
Felicidad C. Robles being substantially familiar with the contents of
petitioners' works, and without securing their permission, lifted, copied,
plagiarized and/or transposed certain portions of their book CET.
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LEX CERVUS NOTES 2020
On the other hand, Robles contends that the book DEP is the product of
her own intellectual creation, and was not a copy of any existing valid
copyrighted book and that the similarities may be due to the authors'
exercise of the "right to fair use of copyrighted materials, as guides."
The trial court ruled in favor of the respondents, absolving them of any
liability. Later, the Court of Appeals rendered judgment in favor of
respondents Robles and Goodwill Trading Co., Inc. In this appeal,
petitioners submit that the appellate court erred in affirming the trial court's
decision.
ISSUE: Whether Robles committed infringement in the production of DEP.
HELD: A perusal of the records yields several pages of the book DEP that
are similar if not identical with the text of CET. The court finds that
respondent Robles' act of lifting from the book of petitioners substantial
portions of discussions and examples, and her failure to acknowledge the
same in her book is an infringement of petitioners' copyrights.
In the case at bar, the least that respondent Robles could have done was
to acknowledge 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.
MGM Studios, Inc. vs. Grokster, Ltd.
545 U.S. 913
Facts:
Grokster, Ltd. and other companies distributed free software that
allowed computer users to share electronic files through peer-to-peer
networks. In such networks, users can share digital files directly between
their computers, without the use of a central server. Users employed the
software primarily to download copyrighted files. The software companies
knew about this file-sharing and encouraged it. The companies profited
from advertising revenue, since they streamed advertisements to the
software users.
A group of movie studios and other copyright holders sued and
alleged that Grokster, Ltd. and the other companies violated the Copyright
Act by intentionally distributing software to enable users to infringe
copyrighted works. The district court ruled for Grokster, Ltd., reasoning that
the software distribution companies were not liable for copyright violations
stemming from their software, which could have been used lawfully.
Issue:
Are companies that distributed the file-sharing software, and
encouraged and profited from direct copyright infringement using such
software, liable for the infringement?
Ruling:
Yes. In a unanimous opinion delivered by Justice David Souter, the
Court held that companies that distributed the file-sharing software, and
promoted such software to infringe copyrights, are liable for the resulting
acts of infringement. The Court argued that although the Copyright Act did
not expressly make anyone liable for another's infringement, the
Secondary Liability Doctrine is applied here. The software in this case was
used so widely to infringe copyrights that it would have been immensely
COPYRIGHT-BRAVOLEX | 24
LEX CERVUS NOTES 2020
difficult to deal with each individual infringer. The "only practical alternative" decision to deny summary judgement. 
was to go against the software distributor for secondary liability. Here, the
software companies were liable for encouraging and profiting from direct Held:
infringement.
DMCA notice and takedown 
Lenz v. Universal Music Corp., The case involved section 512(c) of the DMCA, which sets out notice and
takedown procedures that provide service providers with ‘safe harbour’
801 F. 3d 1126 (2015) from liability in relation to their user’s copyright infringements, provided the
service provider follows procedures set out in the statute. Section 512(c)(3)
Technological Protection Measures (See sec 216-217 of
(A) sets out the various elements for a notice to be sent to a service
IPC)
provider, and includes a requirement to include a statement that the
Facts :On 14 September 2015, the Court of Appeals for the Ninth Circuit copyright owner has a good faith belief that use of the material in the
affirmed the District Court’s decision in Lenz v Universal Music Corp.[1] manner complained of is not authorised by the copyright owner, its agent,
The case involved Digital Millennium Copyright Act (DMCA) notice and or the law.[3] 
takedown procedures in relation to a 29 second video that was uploaded to
YouTube in February 2007. The video, titled “‘Let’s Go Crazy’ #1.”, The Court’s decision 
featured a baby dancing to Prince’s song ‘Let's Go Crazy’, which can be The Court of Appeals held that copyright owners are required to consider
heard playing in the background.[2]     fair use before sending a takedown notice. One of the key considerations
before the Court of Appeals was whether fair use was authorised by the
The YouTube video was identified by Universal, the copyright owner of law. In coming to its decision, the Court of Appeals differentiated fair use
Prince’s song, which included it in a list of more than 200 videos in a from affirmative defences. They concluded that as fair use is non-infringing
takedown notice sent to YouTube. After receiving Universal’s takedown use it is authorised by the law. 
notice, YouTube removed the video from its website in June 2007. Lenz
responded to the notice by sending a counter-notice to YouTube, claiming The Court of Appeals held that the copyright owner must form a subjective
that the video constituted fair use of Prince’s song. In July 2007, YouTube good faith belief that the use does not constitute fair use prior to sending a
reinstated the video to its website.  takedown notice. The fact that Universal knew that it had failed to consider
fair use meant that it was liable for damages for knowing misrepresentation
In July 2007, Lenz initiated proceedings against Universal under 17 U.S.C. under section 512(f), and the Court of Appeals held that Lens could seek
§ 512(f) for misrepresentation, alleging that the takedown notice recovery for nominal damages for Universal’s actions. 
misrepresented that the video had infringed Universal’s copyright. The
parties both moved for summary judgement in relation to the claim, which The Court of Appeals also held that a party can rely on the willful blindness
were respectively denied by the District Court. The parties appealed to doctrine in relation to a claim under section 512(f) where a copyright owner
Court of Appeals for the Ninth Circuit, which affirmed the District Court’s knowingly misrepresents that it holds a good faith belief that a use does not
COPYRIGHT-BRAVOLEX | 25
LEX CERVUS NOTES 2020
constitute fair use, yet subjectively believes there to be a strong probability
that it is fair use. However, this was not applicable in the current case as
Lenz did not demonstrate that Universal had a subjective belief that the use
of Prince’s song had a high probability of constituting fair use.      

Comment 
The Court of Appeals decision continues the Ninth Circuit’s expansive
reading of the fair use doctrine in recent years, which has now become a
positive user’s right, rather than an exception to a right of a copyright
owner, a defence to infringement. As a result of this decision, copyright
owners will now have to consider fair use prior to issuing a DMCA
takedown notice. Interestingly, the decision seems to indicate that a
potential infringement identified by a copyright owner using automated
computer programs will satisfy the requirement that the copyright holder
form a good faith belief, despite the inability of automated programs to
c onsider fair use. This brings into question DMCA takedown notices that
have been issued without the assistance of automated infringement-
detection software, where there has been no consideration of fair use. The
decision also makes it more difficult for copyright owners based overseas,
who are unlikely to be sufficiently familiar with fair use, to rely on the DMCA
notice and takedown scheme.

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