Ching v. Salinas, Sr.

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.

Ruling:

(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 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 copyrightability. 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.

FERNANDO U. JUAN v. ROBERTO U. JUAN

Facts:

Respondent Roberto U. Juan claimed that he began using the name and mark "Lavandera
Ko" in his laundry business on July 4, 1994. He then opened his laundry store at No. 119 Alfaro St.,
Salcedo St., Makati City in 1995. Thereafter, on March 17, 1997, the National Library issued to him a
certificate of copyright over said name and mark.

Respondent Roberto then formed a corporation to handle the said business, hence, Laundromatic
Corporation (Laundromatic) was incorporated in 1997, while "Lavandera Ko" was registered as a
business name on November 13, 1998 with the Department of Trade and Industry (DTI). Thereafter,
respondent Roberto discovered that his brother, petitioner Fernando was able to register the name
and mark "Lavandera Ko" with the Intellectual Property Office (IPO) on October 18, 2001, the
registration of which was filed on June 5, 1995. Respondent Roberto also alleged that a certain
Juliano Nacino (Juliano) had been writing the franchisees of the former threatening them with
criminal and civil cases if they did not stop using the mark and name "Lavandera Ko." It was found
out by respondent Roberto that petitioner Fernando had been selling his own franchises.

Roberto filed a petition for injunction, unfair competition, infringement of copyright, cancellation of
trademark and name with/and prayer for TRO and Preliminary Injunction with the Regional Trial
Court

RTC issued a writ of preliminary injunction against petitioner Fernando

RTC rendered a Resolution dated September 23, 2013, dismissing the petition and ruling that neither
of the parties had a right to the exclusive use or appropriation of the mark "Lavandera Ko" because
the same was the original mark and work of a certain Santiago S. Suarez (Santiago). According to the
RTC, the mark in question was created by Suarez in 1942 in his musical composition called,
"Lavandera Ko" and both parties of the present case failed to prove that they were the originators of
the same mark.

National Library is hereby ordered to cancel the Certificate of Registration issued to Roberto U. Juan
on March 17, 1997 over the word "Lavandera Ko," under certificate no. 97-362. Moreover, the
Intellectual Property Office is also ordered to cancel Certificate of Registration No. 4-1995-102749,
Serial No. 100556, issued on October 18, 2001, covering the work LAVANDERA KO AND DESIGN, in
favor of Fernando U. Juan.

Petitioner elevated the case to the CA through a notice of appeal. In his appeal, petitioner
contended that a mark is different from a copyright and not interchangeable. Petitioner Fernando
insisted that he is the owner of the service mark in question as he was able to register the same with
the IPO pursuant to Section 122 of R.A. No. 8293. Furthermore, petitioner Fernando argued that the
RTC erred in giving credence to the article of information it obtained from the internet stating that
the Filipino folk song "Lavandera Ko" was a composition of Suarez in 1942 rather than the actual
pieces of evidence presented by the parties.
petitioner elevated the case to the CA through a notice of appeal. In his appeal, petitioner
contended that a mark is different from a copyright and not interchangeable. Petitioner Fernando
insisted that he is the owner of the service mark in question as he was able to register the same with
the IPO pursuant to Section 122 of R.A. No. 8293. Furthermore, petitioner Fernando argued that the
RTC erred in giving credence to the article of information it obtained from the internet stating that
the Filipino folk song "Lavandera Ko" was a composition of Suarez in 1942 rather than the actual
pieces of evidence presented by the parties.

Issues:

1. WHETHER OR NOT A MARK IS THE SAME AS A COPYRIGHT.

2. WHETHER OR NOT FERNANDO U. JUAN IS THE OWNER OF THE MARK "LAVANDERA KO." D.

Ruling:

"Lavandera Ko," the mark in question in this case is being used as a trade name or
specifically, a service name since the business in which it pertains involves the rendering of laundry
services. Under Section 121.1 of R.A. No. 8293, "mark" is defined as any visible sign capable of
distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a
stamped or marked container of goods. As such, the basic contention of the parties is, who has the
better right to use "Lavandera Ko" as a service name because Section 165.2[13] of the said law,
guarantees the protection of trade names and business names even prior to or without registration,
against any unlawful act committed by third parties. A cause of action arises when the subsequent
use of any third party of such trade name or business name would likely mislead the public as such
act is considered unlawful. Hence, the RTC erred in denying the parties the proper determination as
to who has the ultimate right to use the said trade name by ruling that neither of them has the right
or a cause of action since "Lavandera Ko" is protected by a copyright.

pyright and trade or service name are different. Copyright is the right of literary property as
recognized and sanctioned by positive law.[14] An intangible, incorporeal right granted by statute to
the author or originator of certain literary or artistic productions, whereby he is invested, for a
limited period, with the sole and exclusive privilege of multiplying copies of the same and publishing
and selling them.[15] Trade name, on the other hand, is any designation which (a) is adopted and
used by person to denominate goods which he markets, or services which he renders, or business
which he conducts, or has come to be so used by other, and (b) through its association with such
goods, services or business, has acquired a special significance as the name thereof, and (c) the use
of which for the purpose stated in (a) is prohibited neither by legislative enactment nor by otherwise
defined public policy.[

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

Considering, therefore, the above premise, this Court deems it proper to remand the case to the RTC
for its proper disposition since this Court cannot, based on the records and some of the issues raised
by both parties such as the cancellation of petitioner's certificate of registration issued by the
Intellectual Property Office, make a factual determination as to who has the better right to use the
trade/business/service name, "Lavandera Ko."
Pearl and Dean, Inc vs. Shoemart
DOCTRINE:

There can be no infringement of a patent until a patent has been issued, since whatever right one
has to the invention covered by the patent arises alone from the grant of patent. An inventor has no
common law right to a monopoly of his invention. He has the right to make use of and vend his
invention, but if he voluntarily discloses it, such as by offering it for sale, the world is free to copy
and use it with impunity. A patent, however, gives the inventor the right to exclude all others. As a
patentee, he has the exclusive right of making, selling or using the invention.

FACTS:

Pearl & Dean, Inc. is a corporation engaged in the manufacture of advertising display units simply
referred to as light boxes. These units utilize specially printed posters sandwiched between plastic
sheets and illuminated with backlights. Pearl and Dean was able to secure a Certificate of Copyright
Registration dated January 20, 1981 over these illuminated display units. The advertising light boxes
were marketed under the trademark “Poster Ads”. From 1981 to about 1988, Pearl and Dean
employed the services of Metro Industrial Services to manufacture its advertising displays.

Sometime in 1985, Pearl and Dean negotiated with defendant-appellant Shoemart, Inc. (SMI) for the
lease and installation of the light boxes in SM City North Edsa. Since SM City North Edsa was under
construction at that time, SMI offered as an alternative, SM Makati and SM Cubao, to which Pearl
and Dean agreed. Only the contract for SM Makati, however, was returned signed. SMI’s house
counsel informed Pearl and Dean that it was rescinding the contract for SM Makati due to non-
performance of the terms thereof.

Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean to
fabricate its display units, offered to construct light boxes for Shoemart’s chain of stores. SMI
approved the proposal and ten (10) light boxes were subsequently fabricated by Metro Industrial for
SMI.

Sometime in 1989, Pearl and Dean, received reports that exact copies of its light boxes were
installed at SM City and in the fastfood section of SM Cubao. Upon investigation, Pearl and Dean
found out that aside from the two (2) reported SM branches, light boxes similar to those it
manufactures were also installed in two (2) other SM stores. It further discovered that defendant-
appellant North Edsa Marketing Inc. (NEMI), through its marketing arm, Prime Spots Marketing
Services, was set up primarily to sell advertising space in lighted display units located in SMI’s
different branches.

In the light of its discoveries, Pearl and Dean sent a letter to both SMI and NEMI enjoining them to
cease using the subject light boxes and to remove the same from SMI’s establishments, demanded
the discontinued use of the trademark “Poster Ads,” and the payment to Pearl and Dean of
compensatory damages of Php2,000,000.00

Pearl and Dean filed a case for infringement of trademark and copyright, unfair competition and
damages against the respondents. RTC ruled in favor of Pearl & Dean, however, CA reversed the
decision.

ISSUE:

Whether there was a copyright, patent, and trademark infringement?

RULING:

None.

1. As to copyright- Copyright, in the strict sense of the term, is purely a statutory right. Being a
mere statutory grant, the rights are limited to what the statute confers. It may be obtained
and enjoyed only with respect to the subjects and by the persons, and on terms and
conditions specified in the statute. Accordingly, it can cover only the works falling within the
statutory enumeration or description.

 As to patent- For some reason or another, petitioner never secured a patent for the light
boxes. It therefore acquired no patent rights which could have protected its invention, if in
fact it really was. And because it had no patent, petitioner could not legally prevent anyone
from manufacturing or commercially using the contraption. In Creser Precision Systems, Inc.
vs. Court of Appeals, we held that “there can be no infringement of a patent until a patent
has been issued, since whatever right one has to the invention covered by the patent arises
alone from the grant of patent. An inventor has no common law right to a monopoly of his
invention. He has the right to make use of and vend his invention, but if he voluntarily
discloses it, such as by offering it for sale, the world is free to copy and use it with impunity.
A patent, however, gives the inventor the right to exclude all others. As a patentee, he has
the exclusive right of making, selling or using the invention.

  As to trademark- One who has adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark by others for products which are of a
different description.” Faberge, Inc. was correct and was in fact recently reiterated in Canon
Kabushiki Kaisha vs. Court of Appeals.

SISON OLANO v. LIM ENG CO

FACTS:

The petitioners are the officers and/or directors of Metrotech Steel Industries, Inc. Lim Eng
Co (respondent) is the Chairman of LEC Steel Manufacturing Corporation, a company which
specializes in architectural metal manufacturing.

In 2002, LEC was invited by the Manansala Projecta high-end residential building in Rockwell Center,
Makati, to submit design/drawings for interior and exterior hatch doors. LEC complied by submitting
shop plans/drawings embodying the designs and specifications required for the metal hatch doors.

LEC was thereafter subcontracted by SKI-FB (the Manansala Project's contractor) 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.

LEC learned that Metrotech was also subcontracted to install interior and exterior hatch doors for
the Manansala 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.
On July 2, 2004, LEC deposited with the National Library the final designs and for the interior and
exterior hatch doors of the Project. On July 6, 2004, LEC was issued a Certificate of Copyright
Registration with Nos. 1-2004-13 and 1-2004-14 and Deposit showing that it is the registered owner
of plans/drawings for interior and exterior hatch doors. This copyright pertains to class work "I"
under Section 172 of RA. 8293, The Intellectual Property Code of the Philippines, which covers
"illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography,
topography, architecture or science."

On December 9, 2004, LEC was issued another Certificate of Copyright Registration and Deposit
showing that it is the registered owner of plans/drawings for interior and exterior hatch doors which
is classified under Section 172(h) of R.A. No. 8293 as "original ornamental designs or models for
articles of manufacture, whether or not registrable as an industrial design, and other works of
applied art."

The LEC requested for a search warrant in the premises of Metrotech but the RTC quashed the
warrant on the ground that copyright infringement was not established. However, the raid
conducted by the NBI on Metrotech's premises yielded no copies of LEC's copyrighted
sketches/drawings of hatch doors. What were discovered instead were finished and unfinished
hatch doors. Thus, the LEC filed a Complaint before the DOJ against the Metrotech for copyright
infringement.

The investigating prosecutor of the DOJ dismissed the LEC complaint based on inadequate evidence
showing that: (1) the petitioners committed the prohibited acts under Section 177 of R.A. No. 8293;
and (2) the interior and exterior hatch doors of the petitioners are among the classes of
copyrightable work enumerated in Sections 172 and 173 of the same law.

The respondent then sought recourse before the CA via a petition for certiorari ascribing grave
abuse of discretion on the part of the DOJ. The CA granted the petition finding that there is probable
cause for copyright infringement against the Metrotech. Hence, Metrotech appealed.

ISSUE:

Whether the manufacturing of hatch doors fall within the purview of copyright
infringement.

RULING:

NO. Absent originality and copyrightability as elements of a valid copyright ownership, no

infringement can subsist.

A copyright refers to "the right granted by a statute to the proprietor of an intellectual production to
its exclusive use and enjoyment to the extent specified in the statute." Under Section 177 of R.A. No.
8293, the Copyright or Economic Rights consist of the exclusive right to carry out, authorize or
prevent the following acts:

177.1 Reproduction of the work or substantial portion of the work;

177.2 Dramatization, translation, adaptation, abridgment, arrangement or other transformation of

the work;

177.3 The first public distribution of the original and each copy of the work by sale or other forms
of transfer of ownership;
177.4 Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied
in a sound recording, a computer program, a compilation of data and other materials or a musical
work in graphic form, irrespective of the ownership of the original or the copy which is the subject of
the rental;

177.5 Public display of the original or a copy of the work;

177.6 Public performance of the work; and

177.7 Other communication to the public of the work.

Copyright infringement is thus committed by any person who shall use original literary or artistic
works, or derivative works, without the copyright owner's consent in such a manner as to violate the
foregoing copy and economic rights. For a claim of copyright infringement to prevail, the evidence
on record must demonstrate: (1) ownership of a validly copyrighted material by the complainant;
and (2) infringement of the copyright by the respondent.

While both elements subsist in the records, they did not simultaneously concur so as to
substantiate infringement of LEC's two sets of copyright registrations.

Certificate of Registration Nos. 1-2004-13 and 1-2004-14 pertain to class work "I" under Section 172
of R.A. No. 8293 which covers "illustrations, maps, plans, sketches, charts and three-dimensional
works relative to geography, topography, architecture or science." As such, LEC's copyright
protection there under covered only the hatch door sketches/drawings and not the actual hatch
door they depict.

LEC failed to substantiate the alleged reproduction of the drawings/sketches of hatch doors
copyrighted under Certificate of Registration Nos. 1-2004-13 and 1-2004-14. There is no proof that
Metrotech reprinted the copyrighted sketches/drawings of LEC's hatch doors. What was found in
the raid conducted by the NBI where only finished and unfinished hatch doors not the no copies or
reproduction of LEC's copyrighted sketches/drawings of hatch doors.

As the Court held in Pearl and Dean (Philippines), Incorporated v. Shoemart, Incorporated:

Since the hatch doors cannot be considered as either illustrations, maps, plans, sketches, charts
and three-dimensional works relative to geography, topography, architecture or science, to be
properly classified as a copyrightable class "I" work, what was copyrighted were their
sketches/drawings only, and not the actual hatch doors themselves. To constitute infringement,
the usurper must have copied or appropriated the original work of an author or copyright
proprietor, absent copying, there can be no infringement of copyright.

"Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to
the expression of the idea not the idea itself."

With regard to LEC's Certificate of Registration Nos. H-2004-566 and H-2004-567, the Court finds
that the ownership thereof was not established by the evidence on record because the element of
copyrightability is absent. "Ownership of copyrighted material is shown by proof of originality and
copyrightability." While it is true that where the complainant presents a copyright certificate in
support of the claim of infringement, the validity and ownership of the copyright is presumed. This
presumption, however, is rebuttable and it cannot be sustained where other evidence in the record
casts doubt on the question of ownership, as in the instant case.
Moreover, "the presumption of validity to a certificate of copyright registration merely orders the
burden of proof. The applicant should not ordinarily be forced, in the first instance, to prove all the
multiple facts that underline the validity of the copyright unless the respondent, effectively
challenging them, shifts the burden of doing so to the applicant."

Here, evidence negating originality and copyrightability as elements of copyright ownership was
satisfactorily proffered against LEC's certificate of registration.

The following averments were not successfully rebuffed by LEC:

[T]he hinges on LEC's "hatch doors" have no ornamental or artistic value. In fact, they are just similar
to hinges found in truck doors that had been in common use since the 1960's. The gaskets on LEC's
"hatch doors", aside from not being ornamental or artistic, were merely procured from a company
named Pemko and are not original creations of LEC. The locking device in LEC's "hatch doors" are
ordinary drawer locks commonly used in furniture and office desks.

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.

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

A table lamp is not copyrightable because it is a functional object intended for the purpose of
providing illumination in a room. The general shape of a table lamp is likewise not copyrightable
because it contributes to the lamp's ability to illuminate the reaches of a room. But, a lamp base in
the form of a statue of male and female dancing figures made of semi vitreous china is copyrightable
as a work of art because it is unrelated to the lamp's utilitarian function as a device used to combat
darkness.

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.

More importantly, they are already existing articles of manufacture sourced from different suppliers.
Based on the records, it is unrebutted that: (a) the hinges are similar to those used in truck doors; (b)
the gaskets were procured from a company named Pemko and are not original creations of LEC; and
(c) the locking device are ordinary drawer locks commonly used in furniture and office desks.

Being articles of manufacture already in existence, they cannot be deemed as original creations. As
earlier stated, valid copyright ownership denotes originality of the copyrighted material. Originality
means that the material was not copied, evidences at least minimal creativity and was
independently created by the author. It connotes production as a result of independent labor. LEC
did not produce the door jambs and hinges; it bought or acquired them from suppliers and
thereafter affixed them to the hatch doors. No independent original creation can be deduced from
such acts.

LIPTON, Plaintiff-Counter-Defendant-Appellee, v. The NATURE COMPANY, dba The Nature Company

of California, Defendant-Cross-Claimant, Michael Wein, Defendant-Cross-Defendant-Appellant,
Animal Wisdom Enterprises, Inc., Defendant-Counter-Claimant-Appellant.

No. 1858, Docket 94-9123.

Decided: November 28, 1995

Before:  MINER, MAHONEY, and CABRANES, Circuit Judges. Nancy J. Felsten, New York City (Marcia
B. Paul, Kay Collyer & Boose, New York City, on the brief), for Plaintiff-Counter-Defendant-Appellee.
L. Donald Prutzman, New York City (Stecher Jaglom & Prutzman, New York City, John P. Sutton,
Haverstock, Medlen & Carroll, San Francisco, California, on the brief) for Defendants-Counter-
Claimants-Appellants.

This is an appeal from a final judgment of the United States District Court for the Southern District of
New York (Richard Owen, Judge ), granting plaintiff-appellee James Lipton's (“Lipton”) motion for
summary judgment on his copyright and Lanham Act claims against defendants Animal Wisdom
Enterprises, Inc. (“AWE”), its president and principal stockholder, Michael Wein (“Wein”), and The
Nature Company, (“Nature”).1  The district court's order and final judgment with respect to Wein
and AWE, entered on October 14, 1994, implemented various memorandum opinions and orders
previously issued by the court.   These included a finding that the plaintiff-appellee's work was
protectible under copyright law, Lipton v. The Nature Co., 781 F.Supp. 1032 (S.D.N.Y.1992), an award
of summary judgment to the plaintiff on his copyright and Lanham Act claims, and a finding that the
defendants were willful infringers.   The October 14 order awarded the plaintiff enhanced statutory
damages in the amount of $100,000, costs and attorneys' fees, and entered a permanent injunction
restraining the defendants from further infringement.   Wein and AWE appeal.

I. Background

At issue in this case is a compilation of “terms of venery”  2 -collective terms for identifying certain
animal groups-gathered and published by the author and etymologist James Lipton in his book, An
Exaltation of Larks.   The first edition of the book was published in 1968, and two subsequent
editions were published in 1977 and 1991;  Lipton holds a valid copyright to all three versions of the
book.   Lipton's complaint alleged that the defendants created various posters and other products
that infringed the copyright of the first and second editions of his book, in violation of 17 U.S.C. § 
501 et seq., and unfairly competed with Lipton, in violation of § 43(a) of the Lanham Trademark Act,
15 U.S.C. § 1125.

Lipton compiled his terms of venery through research of various fifteenth-century texts and
manuscripts.   According to Lipton, he translated the terms from Middle English to modern English
and arranged them based on their “lyrical and poetic potential.”   The first and second editions of
the book, which include scattered illustrations and explanatory text, were a considerable success
and have sold over 150,000 copies to date.   In 1990, in an attempt to further capitalize on the
success of his book, Lipton sought to license his compilation for use on various products.   In the
course of doing so, he discovered that Nature had already licensed the rights to a virtually identical
compilation of terms of venery from the defendant, Wein.

In 1988, Wein, doing business as “Animal Wisdom,”  3 filed for copyright registration of a compilation
of animal terms, representing that the work was original to him.   Wein manufactured and sold
posters (“the Wein posters”) of the compilation to various zoos, libraries, and other entities.   In
1988, he approached Nature, a retailer specializing in products about the environment, to market his
compilation.   Between 1989 and 1990, Nature and Wein entered into a series of licensing
agreements by which Nature acquired the right to use Wein's compilation of animal terms on a
series of posters, t-shirts, and other products, which came to be known as the “Multitudes”
products.   Nature sold these products both in its stores and through its catalogs.   The catalog copy
accompanying the Multitudes poster stated, “Michael Wein has surveyed the English language back
to its earliest roots to compile a list of the most remarkable ․ names of animal multitudes ever
assembled.”   The Multitudes poster, as well as a note cube marketed by Nature, included copyright
notices in the names of Wein and Nature.

Simultaneously, Wein continued to market and sell various adaptations of the initial Wein poster.  
In 1991, Wein incorporated Animal Wisdom Enterprises to market and distribute these products as
the “Animal Congregations” line of merchandise.   In its promotional brochure, AWE stated that it
had “thoroughly researched dozens and dozens of animals, fish and birds to uncover correct
terminology.”

Upon learning of Nature's and Wein's actions, Lipton sent a letter demanding that they stop and
requesting compensation for the alleged infringement.   When they refused, Lipton brought the
present suit alleging copyright infringement and unfair competition.

Wein denies copying any edition of Lipton's book and claims that the terms used on the Wein poster
and the Multitudes products were copied from a banner or scarf (“the scarf”) that he received in the
late 1960's while working as an advertising executive in New York City.   According to Wein, this
scarf, which listed 73 animal terms and one cryptic term-“a synoptic of SCI”-was an unsolicited
promotional item from an unidentified source.   This scarf was marked as an exhibit during Wein's
deposition and was available to the district court.   Both Wein and his art director, Michael English,
testified that the scarf was the sole source of the compilation featured on the initial poster that
Wein marketed to libraries and museums.   According to Wein, he decided to market the terms on
the scarf as a poster in 1988.   Both he and English inspected the scarf, and finding no copyright
notice, typeset the terms listed on it.   Wein and English contend that the order of the terms on the
scarf was “shuffled” on the poster to place some of the more common, recognizable terms at the
beginning of the poster and “to make [the terms] flow around the pieces of artwork inserted.”

Wein's testimony about the scarf is contradicted by the fact that prior to the filing of Lipton's
complaint, he represented to Nature and to Lipton's attorney that he had compiled the list himself
from terms that he had written on slips of paper over the years.   However, since the filing of this
action, Wein has consistently stated that the scarf was the source of the compilation.   Wein
contends that after approaching Nature in the summer of 1988, he consulted another source, John
Train's Remarkable Words with Astonishing Origins, but only used the Train book to check the
accuracy of the terms in the compilation that he had given to Nature.   Wein claims that it was not
until several years later, in connection with AWE's “Animal Congregations” line, that he conducted
further research and incorporated additional terms of venery that did not appear on the scarf.

On January 16, 1992, the district court denied the defendants' motion to dismiss, finding that
Lipton's compilation of terms was original to him and therefore protectible under copyright law.  
Lipton v. The Nature Co., 781 F.Supp. 1032 (S.D.N.Y.1992).   By opinion dated September 23, 1993
and order and judgment entered October 14, 1994, the district court granted summary judgment in
favor of the plaintiff on all counts against defendants Wein and AWE.   The court found Wein and
AWE liable for copyright infringement and, citing Wein's “contradictory explanations” for the source
of his compilation, found their infringement to be willful pursuant to 17 U.S.C. § 504(c)(2).   The
court also found Wein and AWE liable for violation of the Lanham Act, noting:

Nature featured two separate copyright notices on its poster, in Wein's name for the compilation,
and in Nature's name.   These copyright notices ․ are false designations of origin, and constitute
actionable false claims of originality under § 43(a).

․ Plaintiff's proof ․ gives rise to a rebuttable presumption of consumer confusion, which in turn
entitles plaintiff to damages under the Lanham Act.

Opinion of Sept. 23, 1993, at 12, 14.   Accordingly, the district court enjoined the defendants from
use of any terms that, together or separately, are substantially similar to those found in Lipton's
book and awarded Lipton costs, attorneys' fees, and enhanced statutory damages in the amount of
$100,000.

II. Discussion

A. The Summary Judgment Standard

 We review a district court's grant of summary judgment de novo to determine whether there is a
genuine issue of material fact and whether the moving party is entitled to judgment as a matter of
law.   Healy v. Rich Prods. Corp., 981 F.2d 68, 72 (2d Cir.1992).   Summary judgment shall be
granted “if the pleadings, depositions, answers to interrogatories, and admissions on file, together
with the affidavits ․ show that there is no genuine issue as to any material fact and that the moving
party is entitled to a judgment as a matter of law.”  Fed.R.Civ.P. 56(c).  “[T]he mere existence of
some alleged factual dispute between the parties will not defeat an otherwise properly supported
motion for summary judgment;  the requirement is that there be no genuine issue of material fact.”
 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986)
(emphasis in original).   While the court must view the inferences to be drawn from the facts in the
light most favorable to the party opposing the motion, Matsushita Elec. Indus. Co. v. Zenith Radio
Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986), a party may not “rely on mere
speculation or conjecture as to the true nature of the facts to overcome a motion for summary
judgment.”  Knight v. U.S. Fire Ins. Co., 804 F.2d 9, 12 (2d Cir.1986), cert. denied, 480 U.S. 932, 107
S.Ct. 1570, 94 L.Ed.2d 762 (1987).   The non-moving party may defeat the summary judgment
motion by producing sufficient specific facts to establish that there is a genuine issue of material fact
for trial.  Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 2552-53, 91 L.Ed.2d 265
(1986).   Finally, “ ‘mere conclusory allegations or denials' ” in legal memoranda or oral argument
are not evidence and cannot by themselves create a genuine issue of material fact where none
would otherwise exist.  Quinn v. Syracuse Model Neighborhood Corp., 613 F.2d 438, 445 (2d
Cir.1980) (quoting SEC v. Research Automation Corp., 585 F.2d 31, 33 (2d Cir.1978)).
B. The Copyright Claim

 A successful claim of copyright infringement pursuant to the Copyright Act, 17 U.S.C. § 501 et
seq., requires proof that (1) the plaintiff had a valid copyright in the work allegedly infringed and (2)
the defendant infringed the plaintiff's copyright by copying protected elements of the plaintiff's
work.  Key Publications v. Chinatown Today Publishing Enters., 945 F.2d 509, 514 (2d Cir.1991).  
Under 17 U.S.C. § 504(c)(2) a plaintiff is entitled to enhanced statutory damages of up to $100,000
upon proof that a defendant's infringement was willful.   Wein and AWE challenge the district
court's holding that they engaged in copyright infringement of Lipton's book and that their asserted
infringement was willful.

1. Protectibility

It is undisputed that Lipton has a valid copyright in the first and second editions of his book, An
Exaltation of Larks.   The defendants argue that while Lipton's book itself is protected, the mere
compilation of the collective nouns-without the accompanying artwork and explanatory text-is not
protectible because the terms are facts, and not the original work of Lipton.

 Although facts are considered to be in the public domain and therefore not protectible under
copyright law, see Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 347, 111 S.Ct. 1282,
1288-89, 113 L.Ed.2d 358 (1991), a compilation of facts may be protectible in certain instances. 4  
Three requirements must be met for a compilation to qualify as protectible:  “(1) the collection and
assembly of preexisting data;  (2) the selection, coordination, or arrangement of that data;  and (3) a
resulting work that is original, by virtue of the selection, coordination, or arrangement of the data
contained in the work.”  Key, 945 F.2d at 512 (citing Feist, 499 U.S. at 357, 111 S.Ct. at 1293-94).

The district court held that the compilation of terms in Lipton's book was protectible:  “[Lipton] used
his knowledge and familiarity with the culture of Middle English, as well as his own creativity, in
selecting the terms of venery that appear in An Exaltation of Larks.   Lipton's arrangement of the
terms was original to him;  he did not follow any sort of alphabetical, chronological, or other
system.”  781 F.Supp. at 1034.   The defendants dispute this finding, arguing that Lipton's selection
and arrangement do not demonstrate the requisite originality.

 The amount of creativity required for copyright protection of a compilation is decidedly small.
 “Original, as the term is used in copyright, means only that the work was independently created by
the author ․ and that it possesses at least some minimal degree of creativity.”  Feist, 499 U.S. at 345,
111 S.Ct. at 1287.   Although the defendants correctly assert that the terms themselves are not
original, the uncontradicted evidence is that Lipton's selection and arrangement of the terms were
original.   In compiling his work, Lipton assembled terms from various fifteenth century texts and
manuscripts.   They were selected from numerous variations of hundreds of available terms.  
Furthermore, the defendants offer nothing to contradict Lipton's assertion that he selected the
terms “based on [his] subjective, informed and creative judgment.”

Lipton's arrangement of the terms is similarly protectible.   The defendants do not challenge
Lipton's statement that his compilation does not replicate the sequence of terms in any of the
fifteenth century sources that he consulted, nor do they contradict his assertion that he repeatedly
rearranged the terms based upon his own aesthetic judgment.   Instead, they argue that because
Lipton's arrangement does “not follow any sort of alphabetical, chronological, or other system,” it is
inherently unprotectible under copyright law.   This argument misconstrues governing case law.  
We have held that while “mechanical” arrangements, such as alphabetical or chronological order, do
not display the requisite originality, any minimal level of creativity is sufficient to render an
arrangement protectible.  Key, 945 F.2d at 514 (finding arrangement of businesses in directory to be
protectible where “[t]he arrangement is in no sense mechanical” and “entailed the de minimis
thought needed to withstand the originality requirement”);  cf. Feist, 499 U.S. at 363, 111 S.Ct. at
1296-97 (no copyright protection where names arranged alphabetically in white pages directory;
 “[t]he selection and arrangement of facts cannot be so mechanical or routine as to require no
creativity whatsoever.”).   Because the defendants have offered nothing-apart from their conjecture
that the list was random-to contradict Lipton's assertions that his arrangement was the product of
his creative and aesthetic judgment, there is no material factual dispute.   The district court
correctly found Lipton's compilation to be protectible.

2. Infringement

 The second prong of a successful copyright action requires proof that the defendant copied
protected elements of the plaintiff's work.   Since direct evidence of copying is seldom available,
“[c]opying may be inferred where a plaintiff establishes that the defendant had access to the
copyrighted work and that substantial similarities exist as to protectible material in the two works.”
 Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir.), cert. denied, 476 U.S. 1159, 106 S.Ct. 2278,
90 L.Ed.2d 721 (1986).   In the alternative, “[i]f the two works are so strikingly similar as to preclude
the possibility of independent creation, ‘copying’ may be proved without a showing of access.”  
Ferguson v. NBC, Inc., 584 F.2d 111, 113 (5th Cir.1978);  Gaste v. Kaiserman, 863 F.2d 1061, 1067-68
(2d Cir.1988) (same).

 The court found Wein and AWE liable for copyright infringement as a matter of law based on the
“overwhelming similarity of Wein's ‘product’ to Lipton's work.”   In so doing, the district court
rejected Wein's explanation that he copied his list of terms from the scarf as “contradictory” and
“inherently incredible.”   While it is true that Wein initially gave Nature and Lipton's attorney a
different explanation for the origin of his list of terms, since the inception of the suit, Wein has
consistently maintained that he copied the terms directly from the scarf.   This is corroborated by
the deposition testimony of his art director, Michael English, and the fact that Wein produced the
scarf during discovery.   For the purposes of a summary judgment motion, courts are required to
view the facts in the light most favorable to the parties opposing the motion and to suspend
judgments on credibility.   Thus, Wein's pre-litigation statements about the origin of his list did not
permit the court to disregard his explanation that he copied the terms from the scarf.

 Wein's copying of the scarf is in any event no defense to a claim of infringement.   As a matter of
law, “innocent infringement,” or copying from a third source wrongfully copied from the plaintiff,
without knowledge that the third source was infringing, does not absolve a defendant of liability for
copyright infringement.   See D.C. Comics Inc. v. Mini Gift Shop, 912 F.2d 29, 35 (2d Cir.1990);  3
Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.08, at 13-289 (1995);  Dolori
Fabrics, Inc. v. The Limited, Inc., 662 F.Supp. 1347, 1354-55 (S.D.N.Y.1987) (Lumbard, J., sitting by
designation) (finding clothing retailer liable for infringement based on retailer's sale of dresses made
from fabric that, unbeknownst to retailer, infringed textile converter's copyright);  see also Fitzgerald
Publishing Co. v. Baylor Publishing Co., 807 F.2d 1110, 1113 (2d Cir.1986) (“[I]ntent or knowledge is
not an element of infringement.”).   If Wein and AWE did copy the list of terms from the scarf, that
defense is unavailing if the scarf itself was an unauthorized copy of Lipton's protected compilation.  
The inquiry then becomes whether the scarf itself was infringing-that is, whether its manufacturer
had access to Lipton's work and substantial similarities exist between the scarf and Lipton's
compilation, or whether the two works are so strikingly similar as to preclude the possibility of
independent creation.
 A comparison between the selection and arrangement of terms in Lipton's book and the selection
and arrangement of those on the scarf leads us to conclude that the two are “strikingly similar.”  
Accordingly, we find that scarf infringed on Lipton's copyright.   First, the scarf includes essentially
the same selection of animal-related terms as Lipton's book.   In principle, the scarf could have
included any of the hundreds of animal terms listed in various fifteenth century texts and other
resources, but in fact, it mimics the list in Lipton's book almost exactly.   Out of the 77 different
animal terms of venery that appear in the first edition of An Exaltation of Larks, 72 of them are listed
on the scarf.   Indeed, the scarf includes only one animal term-“covey of quail”-that does not appear
in the Lipton compilation.   Furthermore, the scarf contains at least six translation errors that
existed in Lipton's first two editions.   Although some of those errors do exist in other sources, they
further support our conclusion that the scarf could not have selected the same terms independent
of Lipton's book.   See Eckes v. Card Prices Update, 736 F.2d 859, 863 (2d Cir.1984) (“[C]ourts have
regarded the existence of common errors in two similar works as the strongest evidence of piracy.”)
(internal quotation marks omitted).

Second, the arrangement of terms on the scarf is also so strikingly similar to the arrangement in
Lipton's book as to preclude an inference of independent creation.   Of the first twenty-five terms
on the scarf, twenty-four are listed in Lipton's book, and all but four of them are listed in the same
order.   In fact, the thirteenth through the twenty-fifth terms on the scarf are listed in precisely the
same order as in the first edition of An Exaltation of Larks. 5  In at least four other places on the scarf
a string of four or more terms appears in the same order as in Lipton's book.   In light of the millions
upon millions of possible arrangements, 6 the scarf's close mimicking of Lipton's arrangement leads
inevitably to a finding of improper copying.

Wein fully acknowledged that he copied the scarf for use on the original Wein products, Nature's
Multitudes products, and the Animal Congregations line currently being distributed by Wein through
AWE.   By copying the scarf-an unauthorized copy that infringed on Lipton's protected compilation-
Wein and AWE also infringed.   We therefore affirm the district court's order of summary judgment
to Lipton on its copyright claim against Wein and AWE.

3. Willfulness

The defendants also challenge the district court's finding that their infringement of Lipton's
copyright was willful.   Under 17 U.S.C. § 504(c), a copyright owner may elect to recover statutory
damages in lieu of actual damages.   When an owner establishes that the defendant's infringement
was “willful,” the statute permits the court, at its discretion, to increase its award of damages to a
maximum of $100,000.  17 U.S.C. § 504(c)(2).   We have previously held that a defendant's
copyright infringement will be found willful pursuant to § 504(c)(2) where the defendant had
knowledge that its conduct constituted infringement or showed reckless disregard for the copyright
holder's rights.  N.A.S. Import Corp. v. Chenson Enters., Inc., 968 F.2d 250, 252 (2d Cir.1992).

On Lipton's motion for summary judgment, the district court found Wein and AWE to be willful
infringers, basing its determination on the fact that Wein “continually changed his story as to the
origin of his terms such that any good faith protestations on his part are inherently incredible.”   The
defendants argue that (1) the issue of their willful infringement was an inquiry into their state of
mind that must be decided by a jury-not by the court on summary judgment, and (2) even if
willfulness could be decided on summary judgment, the district court's ruling was in error because it
ignored Wein's claim that he copied the terms from the scarf.
 Although courts are generally reluctant to dispose of a case on summary judgment when mental
state is at issue, it is permissible to do so where there are sufficient undisputed material facts on the
record to make the question appropriate for summary judgment.   See Resource Developers, Inc. v.
Statue of Liberty-Ellis Island Found., Inc., 926 F.2d 134, 141 (2d Cir.1991).   However, this is not such
a case.   Wein disputes the assertion that he willfully copied from An Exaltation of Larks, arguing
that he innocently copied from the scarf what he believed to be an unprotectable compilation.  
Determinations of credibility are within the province of the jury and may not be resolved on
summary judgment.  United States v. Rem, 38 F.3d 634, 643-44 (2d Cir.1994).   The district court
erred in concluding, on a summary judgment motion, that Wein willfully infringed Lipton's copyright
based on its determination that Wein's story about the scarf was “inherently incredible.”  
Accordingly, we reverse the district court's award of summary judgment to Lipton on the question of
willful infringement and its award of enhanced damages pursuant to 17 U.S.C. § 504(c)(2).   We
remand for trial on the question of Wein's willfulness or reckless disregard of Lipton's copyright.

C. Unfair Competition Claims under the Lanham Act

The defendants also challenge the district court's award of summary judgment to Lipton on his
unfair competition claim under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).   Subsection (A) of
15 U.S.C. § 1125(a)(1) 7 prohibits any misrepresentation likely to cause confusion as to the source or
the manufacturer of a product.   Lipton alleges that the defendants engaged in the prohibited
practice of “reverse passing off”-that is, he claims that Wein and AWE attempted to sell Lipton's
original compilation under Wein's own name, in violation of the Lanham Act.

 A successful claim for “reverse passing off” under the Lanham Act requires that the plaintiff prove
(1) that the work at issue originated with the plaintiff;  (2) that origin of the work was falsely
designated by the defendant;  (3) that the false designation of origin was likely to cause consumer
confusion;  and (4) that the plaintiff was harmed by the defendant's false designation of origin.  
Waldman Publishing Corp. v. Landoll, Inc., 43 F.3d 775, 781-85 (2d Cir.1994).

 In the instant case, the district court based its finding of a Lanham Act violation on the fact that
the copyright notices on the infringing products were false designations of origin.   We find that, as
a matter of law, a false copyright notice alone cannot constitute a false designation of origin within
the meaning of § 43(a) of the Lanham Act.

In Kregos v. Associated Press, 937 F.2d 700, 710-11 (2d Cir.1991), we rejected a plaintiff's attempt to
turn its successful copyright claim into a Lanham Act claim for false designation of origin.   That case
involved a dispute over a form used to display baseball pitching statistics created and distributed by
the plaintiff, Kregos, and copied and published by the defendants, Sports Features Syndicate, Inc.
(“Sports Features”) and the Associated Press (“AP”).   AP published the copied form with Sports
Features' copyright, in violation of Kregos' protected interest in his original form.   Although we
found a copyright violation, we rejected Kregos' Lanham Act claim, holding that “[i]f Kregos is simply
saying that the notice is false in claiming creation by Sports Features in that the form is, under the
copyright law, an infringement of Kregos' form, we reject his attempt to convert all copyright claims
into Lanham Act violations.”  Id. at 711.   Because the district court based its finding of a false
designation of origin solely on the presence of Wein's false copyright notice, we reverse the award
of summary judgment to Lipton on its Lanham Act claim.

In doing so, we offer no opinion as to whether or not there might be other grounds to support a
Lanham Act claim based on false designation of origin.   We merely hold that the existence of a false
copyright notice alone is insufficient.   In Waldman, we found that the “reproduction of a work with
a false representation as to its creator” could support a finding of false designation origin where the
defendant failed to credit the original creator.   Waldman, 43 F.3d at 781.   Indeed, this possibility is
left open by Kregos itself, in which Chief Judge Newman noted that, although a false copyright alone
would be insufficient as a false designation of origin, “Kregos could complain ․ if Sports Features
unfairly competed with him by falsely claiming that its form was originated by some well-known
baseball player.”   Kregos, 937 F.2d at 710;  see also Eden Toys, Inc. v. Florelee Undergarment Co.,
697 F.2d 27, 37 (2d Cir.1982) (finding § 43(a) liability where copyright notice on infringing product
was not merely false, but also made the additional representation that the product was “original”);  
Cognotec Services Ltd. v. Morgan Guaranty Trust Co., 862 F.Supp. 45, 51 (S.D.N.Y.1994) (finding no
§ 43(a) liability based on copyright infringement alone:  “[t]here must exist some affirmative act
whereby [the defendant] falsely represented itself as the owner ․”).

 Lipton counters that even if his false designation of origin claim fails, he is entitled to summary
judgment on his claim for false advertising pursuant to 15 U.S.C. § 1125(a)(1)(B). 8  He argues that
the statements made in the Nature catalog copy (that Wein researched the English language to its
earliest roots), and in AWE's Animal Congregations promotional brochure (that he “thoroughly
researched dozens and dozens of animals”) were false, material, and misleading.   We find that
neither statement supports a false advertising claim against Wein or AWE.   First, the statements in
Nature's catalog are irrelevant, inasmuch as Lipton offers no evidence that these statements
originated with Wein and Nature is not a party to this appeal.   Second, Wein's general assertions
that he conducted thorough research in compiling his list of terms is mere “puffing” and does not
constitute false advertising.   See Castrol Inc. v. Pennzoil Co., 987 F.2d 939, 945 (3d Cir.1993).

 To establish a false advertising claim pursuant to § 43(a) the plaintiff must demonstrate that the
message in the challenged advertisement is false.   Falsity may be established by proving that (1) the
advertising is literally false as a factual matter, or (2) although the advertisement is literally true, it is
likely to deceive or confuse consumers.  McNeil-P.C.C., Inc. v. Bristol-Myers Squibb Co., 938 F.2d
1544, 1549 (2d Cir.1991).   Lipton has offered nothing to contradict Wein's assertion that he
conducted independent research at the New York Public Library prior to advertising the Animal
Congregations line.   Furthermore, Wein's general assertion that the research he conducted was
“thorough[ ]” is mere “puffing” and therefore, not actionable.  “Subjective claims about products,
which cannot be proven either true or false, are not actionable under the Lanham Act.”   Groden v.
Random House, Inc., No. 94 Civ. 1074, 1994 WL 455555, at *5 (S.D.N.Y. Aug. 23, 1994), aff'd, 61 F.3d
1045 (2d Cir.1995);  see Bose Corp. v. Linear Design Labs, Inc., 467 F.2d 304, 310-11 (2d Cir.1972)
(finding defendant's claim that its “countless hours of research” led to the superior quality of its
stereo speakers to be largely puffing).   Thus, we reverse the district court's summary judgment on
Lipton's Lanham Act claims.

D. The Injunction

 As part of its order and judgment entered October 14, 1994, the district court issued a permanent
injunction prohibiting Wein and AWE from copying, producing, or selling any infringing products or
“any other products substantially similar to the said infringing products and/or incorporating, in
whole or in part, plaintiff's copyrighted and inherently distinctive compilation.”   As part of an
accompanying memorandum-intended as an amendment to the order and judgment-the district
court expounded upon the scope of the injunction:

In this case, we have a defendant who ․ was wrongfully copying virtually plaintiff's entire
compilation, [and] is now currently marketing T-shirts and other products using but single terms
copied from [plaintiff's book]․  Wein can hardly be permitted to market the parts, having been
found to have misappropriated the whole.   Therefore, I find that defendant Wein and [AWE] should
be enjoined from any use of plaintiff's terms, together or separately․

Pursuant to 17 U.S.C. § 502, a permanent injunction may issue on such terms as the court deems
“reasonable to prevent or restrain infringement of a copyright.”   This phrase has been interpreted
to mean that a court's authority to issue an injunction in a copyright case should be limited in scope
to that part of the work that is protectible.   3 Nimmer & Nimmer, Nimmer on Copyright § 14.06[C],
at 14-109 (“The scope of the injunction therefore, should generally be no broader than the
infringement, and because facts ․ are never copyrightable, no injunction should extend to forbid
reproduction of those facts․” (citing James L. Oakes, Copyrights and Copyremedies:  Unfair Use and
Injunctions, 38 J. Copyright Soc'y 63, 71-81 (1990)));  see Kepner-Tregoe, Inc. v. Leadership Software,
Inc., 12 F.3d 527, 538 (5th Cir.) (where district court found defendant liable for copyright
infringement of computer program, it lacked the authority to generically enjoin the defendant from
all future modifications of the program at issue), cert. denied, 513 U.S. 820, 115 S.Ct. 82, 130 L.Ed.2d
35 (1994).   Because summary judgment was proper solely on the plaintiff's copyright cause of
action, we find the district court's injunction to be excessively broad.   In the instant case, it is the
compilation-i.e., the selection and arrangement-of the terms that is protectible, not the individual
terms themselves.   Thus, the district court erred in enjoining Wein from producing and marketing a
line of six different T-shirts and mugs, each displaying a different animal term of venery.   By so
holding, however, we do not foreclose the possibility that an injunction might be appropriate to
prohibit Wein from producing or marketing a more extensive line of products that infringes Lipton's
selection of terms.   Accordingly, we remand with instructions to amend the injunction, and for such
further proceedings as may be appropriate in the circumstances, including the award of costs and
attorneys' fees with respect to the copyright claim.

III. Conclusion

To summarize:

1. We affirm the district court's finding that plaintiff's collection of animal terms was a protectible
compilation by virtue of its original selection and arrangement of those terms.

2. We affirm the grant of summary judgment on the plaintiff's copyright claim based on the
defendants' admitted copying from an unauthorized and infringing source.

3. We reverse the award by summary judgment of enhanced statutory damages pursuant to 17
U.S.C. § 504(c)(2).

4. We reverse the grant of summary judgment on the plaintiff's Lanham Act claims on the grounds
that (a) a claim for false designation of origin pursuant to 15 U.S.C. § 1125 may not be based solely
on the presence of a false copyright notice, and (b) the defendants' representations about the extent
of their research were merely “puffing” and did not constitute false advertising within the meaning
of the Lanham Act.

5. We remand the cause to the district court for an appropriate amendment of the overbroad
injunction, for trial on the question of the defendants' willfulness or reckless disregard of Lipton's
copyright, and for such further proceedings as may be deemed appropriate in light of this opinion.

FOOTNOTES

1.  Lipton has since settled his claims against Nature, which is not a party to this appeal.
2.  The phrase “terms of venery” is Lipton's.  “Venery” is defined by Webster's Third New
International Dictionary as “game” or “animals that are hunted.”   Examples of such terms include
“a pride of lions,” “a rafter of turkeys,” “a gaggle of geese,” “a shrewdness of apes,” “a murder of
crows,” and “a parliament of owls.”   Lipton's third edition includes “human” terms of venery
including “a bench of judges,” “a college of cardinals,” and “a board of trustees.”

3.  Wein did business as “Animal Wisdom” as early as 1988-three years before the official
incorporation of “Animal Wisdom Enterprises.”

4.  A “compilation” is defined by 17 U.S.C. § 101 as “a work formed by the collection and

assembling of pre-existing materials or of data that are selected, coordinated, or arranged in such a
way that the resulting work as a whole constitutes an original work of authorship.”

5.  The following terms are listed in the same order on the scarf and in the first edition of An
Exaltation of Larks:  leap of leopards, pod of seals, sloth of bears, rafter of turkeys, pace of asses,
walk of snipe, gam of whales, nest of rabbits, gang of elk, fall of woodcocks, dule of doves, skulk of
foxes, dissimulation of birds.

6.  Taking the 72 terms that appear both on the scarf and in Lipton's book, the number of possible
orderings would be 72 factorial (72*71*70 ․ *3*2*1), or 6.12*10103.

7.  Section 1125(a)(1)(A), as amended, states:Any person who, on or in connection with any goods
or services, ․ uses in commerce ․ any false designation of origin ․ which-is likely to cause confusion,
or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with
another person, or as to the origin ․ of his or her goods, services, or commercial activities by another
person ․ shall be liable in a civil action․

8.  Section 1125(a)(1)(B), as amended, states:Any person who, on or in connection with any goods
or services, ․ uses in commerce ․ any ․ false or misleading representation of fact, which-in
commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or
geographic origin of his or her or another person's goods, services, or commercial activities, shall be
liable in a civil action․

Waldman Publishing vs. Landoll, Inc.

Facts:

Waldman publishes and Playmore sells and distributes a series of books called "Great
Illustrated Classics." These are retold and abbreviated versions of literary works printed in hard
cover format, 5 5/8 inches by 8 inches, each 240 pages in length, with a color illustration on the
cover and black-and-white illustrations opposite each page of text.

Plaintiffs began selling the soft cover series in 1979 and the hard cover series in 1990. There are 36
titles currently in print in the soft cover series and 35 in the hard cover series, with another eight
titles in production.

Plaintiffs sell these products to retail outlets such as K-Mart, Wal-Mart, toy stores, drug stores, and
book stores. They have been highly successful. Plaintiffs sell between 4 million and 6 million copies a
year, divided equally between hard and soft covers.
The adaptation of books such as these into versions for children comprising 120 pages of text and
120 illustrations requires a number of steps. Some parts of the narrative are retained; others are
discarded. The text is revised to be more comprehensible to children. Decisions must be made as to
what the illustrations will show. Waldman contracted with writers to adapt the text and artists to do
the illustrations. These individuals are identified at the beginning of the books. Each book also
contains a printed notice of copyright on behalf of Playmore and Waldman for the cover, and on
behalf of Waldman for the text. However, plaintiffs have not as yet registered the works with the
Copyright Office.

In December 1993 Landoll published and offered for sale soft cover illustrated adaptations of these
six books in a series called "First Illustrated Classics." In January 1994 Landoll published and offered
for sale the same six adaptations in hard cover, in a series called "Illustrated Classics." At a book fair
in May 1993 Landoll had displayed prototypes of these series, but the display was limited to the
illustrated covers, enfolding blank paper. Plaintiffs' witnesses testified that plaintiffs did not become
aware of the inner texts and illustrations of defendant's books until February 1994. They filed suit in
March.

Landoll's president Marty Meyers testified that Landoll obtained the texts and illustrations for these
six adaptations from one Peter Haddock, an English publisher. While on a business trip to London in
March 1983, Meyers agreed to purchase the adaptations from Haddock on a "camera ready" basis.
That means Haddock sent the texts and the illustrations (cover and internal) to Landoll, which used
its own facilities to print them in salable form as finished books. Meyers testified that no one at
Landoll had any input with respect to the contents of the books. Landoll is obligated to pay Haddock
a royalty of one cent per book sold.

In the case at bar, the evidence demonstrates the likelihood of plaintiffs' success on their claim that
Landoll has committed the Lanham Act tort of reverse passing off, basing upon the similarities
between the structure, texts and illustrations of the competing adaptations: similarities that are too
striking to ascribe to coincidence. The arrangements of chapters mirror each other in each pair of
books. In addition, the Landoll texts closely follow the Waldman texts.

Landoll’s defense lies in the contention that reverse passing off occurs only "if you take the physical
product of another" and "sell it as your own." On that theory, counsel for Landoll argued, ripping the
cover off a Waldman book and replacing it with a Landoll cover would constitute reverse passing off
"because then you're taking the actual product; and, that one is not allowed to do."

Issue:

Whether Landoll’s Contention is correct

Ruling:

No. One of the deceptive practices actionable under section 43(a) of the Lanham Act is that
form of false designation of origin known as "reverse palming off" or "reverse passing off." In reverse
passing off, the wrongdoer sells plaintiffs products as its own. It contrasts with passing off, where the
wrongdoer sells its products as the plaintiffs. A phonograph record album creating the false
impression that defendant rather than plaintiff was the principal performer constitutes reverse
passing off, actionable under section 43(a).

That narrow construction is inconsistent with the Lanham Act's broad remedial purpose, and
contrary to the weight of authority, in th[e] [US Supreme] Court and elsewhere, defining and
condemning reverse passing off as a form of false designation of origin. The Landoll books falsely fail
to designate the Waldman books as the origin of the adaptations Landoll is selling in its own name.
Such conduct is actionable under section 43(a). Landoll is not selling its own product under a
trademark or trade name or trade dress confusingly similar to that of the plaintiffs. Landoll has
simply misappropriated Waldman's product and is selling it as its own, without any attribution of
credit to the true sources. The Lanham Act condemns conduct which is likely to cause consumers to
be confused, mistaken or deceived as to a product's origin.

David D. WOODS v. BOURNE CO

Facts:

Harry Woods is the sole author of the words and music on copyright certificates for both the
lead sheet and the piano-vocal arrangement that Berlin obtained in 1926 for the song “when the red
red robin comes bob bob bobbing along”. No one else is listed as the arranger of either of these
works. In 1940 the Bourne Company succeeded to Berlin's interests in the Song.

In the Copyright Act of 1909, in effect at the time of Woods's grant to Berlin, the original term of a
copyright was 28 years, followed by a renewal term of another 28 years. Thus, the grant from Woods
to Berlin in the Songwriter's Agreement, which included renewal rights, was to endure for up to 56
years, ending in 1982.

When the renewal term for Bourne's copyright in the song came to an end, Callicoon Music
terminated Bourne's rights immediately thereafter and began to commercially exploit the Song.
Since Callicoon exercised its termination right in April 1982, Callicoon has continued to receive from
ASCAP (American Society of Composers, Authors and Publishers -a performing rights society to
monitor and enforce the owner’s right to perform a work publicly, established by authors and
publishers early of this century) the author's 50% share of performance royalties.

Issue:

WON Callicoon is entitled to the publisher's royalties withheld by ASCAP.

Held:

Yes. Callicoon was entitled to all of the royalties generated by post-termination

performances of the Song, including performances contained in pre-termination derivative
audiovisual works. Since Bourne claimed an exception to the general rule in the 1976 Act permitting
termination of the publisher's rights, the court placed the burden on Bourne to identify
performances of derivative arrangements. Since Bourne offered no evidence of performances of the
Fred Waring arrangement, the court held that all of the withheld ASCAP royalties should be paid to
Callicoon.

Whether the underlying arrangement of the Song itself is a derivative work is the controlling issue
that will determine if the performance royalties continue to go to Bourne during the extended
renewal term. Whether the arrangement of the Song is itself a derivative work is not relevant to this
category of royalties. The derivative work status of an arrangement of the Song, however, is relevant
to several other kinds of royalties at issue in this suit. These include royalties from performances of
pre-termination sound recordings, performances of post-termination audiovisual works and sales of
sheet music reprints. The Derivative Works Exception preserves the right of owners of derivative
works to continue to exploit their works during the extended renewal term under previously
negotiated terms. Without such an exception, authors might use their reversion rights to extract
prohibitive fees from owners of successful derivative works or to bring infringement actions against
them.

In Mills Music case, the phrase “terminated grant,” the last two words in the Derivative Works
Exception, must refer to the original grant from author to publisher.   The Court reasoned that the
other two uses of the word “grant” in the single sentence of the Derivative Works Exception must
logically refer to the same grant. The derivative works involved in Mills Music were sound
recordings, and the use there was the sale of copies. The concededly derivative works we now
address are audiovisual works and the use in question is public performance.

The reasoning of Mills Music also applies in this situation. The purpose of the Exception was ‘to
preserve the right of the owner of a derivative work to exploit it, notwithstanding reversion. Thus,
the Exception protects only authorized uses made by derivative work copyright owners, or their
licensees.

Not every musical arrangement is entitled to derivative work status. The arrangement must be an
original work of authorship. In order for a work to qualify as a derivative work it must be
independently copyrightable. The basis for copyright protection contained in both the constitution
and the Copyright Act is originality of authorship. The standard of originality in a derivative work in
Batlin case was held that “there must be at least some substantial variation [from the underlying
work], not merely a trivial variation.

To determine whether a work is sufficiently original to be a derivative work, the findings of fact must
be based upon a comparison of two works. In addition to finding that the piano-vocal arrangement
essentially represents the composition granted from Woods to Berlin, the district court found that
the piano-vocal arrangement is not sufficiently original compared with the lead sheet to be
considered a derivative work.

Bourne would not be entitled to royalties generated by post-termination radio performances of pre-
termination sound recordings unless the arrangements in those recordings were themselves Bourne-
authorized derivative works.

Because, as the parties stipulated, the “source materials” for these performances were unidentified,
it is impossible to determine from the record whether the works performed were created before or
after termination. As to the unidentified television performances, Bourne has introduced no
evidence that any of these disputed performances were of pre-termination audiovisual works, which
would entitle it to royalties under the analysis of the above. None of the Bourne-authorized
arrangements are derivative works, it is not more likely than not that unidentified performances are
performances of Bourne-authorized derivative works. Thus, the district court did not err in finding
that Bourne had failed to satisfy its burden of proof. Accordingly, the judgment to the extent that it
awarded Callicoon approximately $18,000 attributable to post-termination performances of
unidentified material is affirmed.

Kirtsaeng v. John Wiley & Sons

RULE:

Section 106 of the Copyright Act grants the owner of copyright under the Copyright Act
certain “exclusive rights,” including the right to distribute copies of the copyrighted work to the
public by sale or other transfer of ownership. 17 U.S.C.S. § 106(3). These rights are qualified,
however, by the application of various limitations set forth in the next several sections of the Act,  17
U.S.C.S. §§ 107-122. Those sections, typically entitled “Limitations on exclusive rights,” include, for
example, the principle of “fair use” (§ 107), permission for limited library archival reproduction, (17
U.S.C.S. § 108), and the “first sale” doctrine (17 U.S.C.S. § 109).

FACTS:

Respondent, John Wiley & Sons, Inc., an academic textbook publisher, often assigned 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 bookshops, 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 against Kirtsaeng, 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, the “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 the “first sale”
doctrine does not apply to copies of American copyrighted works manufactured abroad.

ISSUE:

Does the “first sale” doctrine apply to copies of American copyrighted works manufactured
abroad?

RULING:

Yes. The language of § 109(a) read literally favored a nongeographical interpretation, that
“lawfully made under this title” meant made “in accordance with” or “in compliance with” the
Copyright Act. Section 109(a) said nothing about geography. 17 U.S.C.S. § 104 said that works
“subject to protection under this title” included unpublished works “without regard to the
nationality or domicile of the author,” and works “first published” in any nation that had signed a
copyright treaty with the U.S. Copyright-related consequences, along with language, context, and
interpretive canons argued strongly against a geographical interpretation of § 109(a). History
reiterated the importance of the “first sale” doctrine. The “first sale” doctrine applied to copies of a
copyrighted work lawfully made abroad.

Considering that the Second Circuit's finding that the first sale doctrine did not apply was reversed,
and the case was remanded for further proceedings.

JOAQUIN, JR. V. DRILON

FACTS:
 Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No.
M922 dated January 28, 1971 of Rhoda and Me, a dating game show aired from 1970 to 1977. In
1973, petitioner BJPI submitted to the National Library an addendum to its certificate of copyright
specifying the show’s format and style presentation. In 1991, petitioner Francisco Joaquin, Jr.,
president of BJPI, saw on RPN 9 an episode of It’s a Date. He immediately protested the airing of the
show through a letter sent to Grabriel M. Zosa, president and general manager of IXL Productions,
Inc., the producer of It’s a Date. Petitioner Joaquin informed respondent, Zosa of a copyright
toRhoda and Me and demanded that IXL discontinue airing It’s a Date. Respondent Zosa apologized
to Joaquin, but continued airing the show. Zosa also sought to register IXL’s copyright to the first
episode of It’s a Date for which a certificate of copyright was issued by the National Library on
August 14, 1991. With these developments, petitioners herein filed a complaint against Zosa and
other RPN Channel 9 officers as a result of which an information for violation of P.D. No. 49 was filed
before the Regional Trial Court of Quezon City. Zosa appealed to the Department of Justice. The
Secretary of Justice reversed the prosecutor’s findings and directed the dismissal of the case.
Petitioner Joaquin filed a motion for reconsideration, but it was denied by the Secretary of Justice.
Hence, this petition. Both public and private respondents maintained that petitioners failed to
establish the existence of probable cause due to their failure to present the copyrighted master
videotape of Rhoda and Me. They contended that BJPl’s copyright covers only a specific episode of
Rhosa and Me and that the formats or concepts of dating game shows were not covered by the
copyright protection under P.D. No. 49.

ISSUE:

WON THE FORMAT OR MECHANICS OF A TELEVISION SHOW IS COPYRIGHTABLE AND HENCE

THERE’S NO NEED OF PRESENTING THE ACTUAL VIDEO FOOTAGE TO COMPARE IN DETERMINING
WHETHER OR NOT INFRINGEMENT HAD BEEN COMMITTED.

HELD:

NO. 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. . . . P.D. No. 49,
Section 2, in enumerating what are subject to copyright, refers to finished works and not to
concepts. The copyright does not extend to an idea, procedure, process, system, method of
operation, concept, principle, or discovery, regardless of the form in which it is described, explained,
illustrated, or embodied in such work. Thus, the new INTELLECTUAL PROPERTY CODE OF THE
PHILIPPINES provides: SEC. 175. Unprotected Subject Matter. — Notwithstanding the provisions of
Sections 172 and 173, no protection shall extend, under this law, to any idea, procedure, system,
method or operation, concept, principle, discovery or mere data as such, even if they are expressed,
explained, illustrated or embodied in a work; news of the day and other miscellaneous facts having
the character of mere items of press information; or any official text of a legislative, administrative
or legal nature, as well as any official translation thereof.
 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 newspaper. (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 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, adaptions, 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 Section 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 Section 2 of P.D. No. 49. For this reason, the protection afforded by the law
cannot be extended to cover them.

FILIPINO SOCIETY OF COMPOSERS vs. BENJAMIN TAN

FACTS:

Filipino Society of Composters, Authors and Publishers, Inc. 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. It owns certain musical compositions
among which are the songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao
Lamang" and "The Nearness Of You."

On the other hand, Benjamin Tan is the operator of a restaurant known as "Alex Soda Foundation
and Restaurant" where a combo of professional singers were hired to play and sing musical
compositions to entertain and amuse customers therein, playing and singing the above-mentioned
compositions without any license or permission from Filipino Society to play or sing the same.
Filipino Society demanded from Tan payment of the necessary license fee for the playing and singing
of the compositions but the demand was ignored.

Hence, a case for infringement of copyright against Tan was filed. Filipino Society contends (based
on Sec 3(c) of the Copyright Law)

SEC. 3. 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

that the playing and singing of copyrighted music in Tan’s restaurant, for the entertainment of the
customers although the latter do not pay for the music but only for the food and drink constitute
performance for profit under the Copyright Law.

Tan, while not denying the playing of said copyrighted compositions in his establishment, maintains
that the mere singing and playing of songs even if they are copyrighted do not constitute an
infringement under the Copyright Law.

ISSUES:

1. Whether or not the playing and signing of musical compositions which have been
copyrighted under the provisions of the Copyright Law (Act 3134) inside the establishment of Tan
constitute a public performance for profit (within the meaning and contemplation of the Copyright
Law of the Philippines); and

2. Assuming that there were indeed public performances for profit, whether or not Tan can
be held liable therefor.

HELD:

Yes, they were "public performances for profit” but there was no infringement of copyright.

FIRST: Yes, they were "public performances for profit”.

The word "perform" as used in the Act has been applied to "One who plays a musical composition on
a piano, thereby producing in the air sound waves which are heard as music ... and if the instrument
he plays on is a piano plus a broadcasting apparatus, so that waves are thrown out, not only upon
the air, but upon the other, then also he is performing the musical composition."

In relation thereto, the playing of music in a restaurant which was paid for by the public in purchases
of food and drink constituted "performance for profit" within the Copyright Law.

The patrons of Tan’s restaurant pay only for the food and drinks and apparently not for listening to
the music. The music provided is for the purpose of entertaining and amusing the customers in order
to make the establishment more attractive and desirable.

SECOND: No. Tan cannot be said to have infringed upon the Copyright Law. The composers of the
contested musical compositions waived their right in favor of the general public when they allowed
their intellectual creations to become property of the public domain before applying for the
corresponding copyrights for the same.

The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative Order No. 3 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.”
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.

A careful study of the records reveals that the song:

 "Dahil Sa Iyo" which was registered on April 20, 1956 became popular in radios, juke boxes, etc.
long before registration;

 "The Nearness Of You" registered on January 14, 1955 had become popular twenty five (25)
years prior to 1968, (the year of the hearing) or from 1943;

 "Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao Lamang" both registered on July 10, 1966,
appear to have been known and sang as early as 1965 or three years before the hearing in 1968.

Thus, even if said performance was for profit under the Copyright Law, still there was no
infringement as the songs were already public property.

ABS-CBN v. Philippine Multi-Media System

Facts:

Petitioner ABS-CBN, a broadcasting corporation, filed a complaint against respondent PMSI

alleging that the latter’s unauthorized rebroadcasting of Channels 2 and 23 infringed on its
broadcasting rights and copyright. PMSI posits that it was granted a franchise to operate a digital
direct-to-home satellite service and that the rebroadcasting was in accordance with the NTC memo
to carry television signals of authorized television broadcast stations, which includes petitioner’s
programs. The IPO Bureau of Legal Affairs found PMSI to have infringed petitioner’s broadcasting
rights and ordered it to permanently desist from rebroadcasting. On appeal, the IPO Director
General found for PMSI. CA affirmed.

Issue:

Whether or not petitioner’s broadcasting rights and copyright are infringed.

Ruling:

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 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.

Williams & Wilkins Co. v. United States

Facts:

Plaintiff Williams & Wilkins Co. was a major publisher of medical journals and books.
Defendants National Institutes of Health and National Library of Medicine would, upon request,
photocopy articles in medical journals published by plaintiff and distribute them to researchers.
Defendants did not monitor the reason for the copy requests, and the requesting researcher could
retain the copy permanently. Plaintiff sued for copyright infringement, and defendants raised the
fair use defense.

Issue:

Whether the defendants’ unauthorized photocopying of plaintiff’s articles for use by medical
researchers constituted fair use.

Ruling:

The court held that defendants’ unauthorized photocopying of plaintiff’s articles was fair use
because the copies were made for the researchers’ own professional use and not for profit or other
gain. Defendants also placed strict limitations on photocopying, which kept “the duplication within
appropriate confines.” The court based its fair use decision on three main determinations. First, the
court noted that plaintiff did not prove that it had been or would be harmed substantially by
defendants’ practices. Second, the court was convinced that holding defendants’ practices to be
copyright infringement would “no doubt” harm medicine and medical research. Third, the court held
that balancing the interests of science with those of publishers required a legislative solution.

Nat'l Rifle Ass’n of Am. v. Handgun Control Fed’n of Ohio

Facts:

Plaintiff the National Rifle Association of America (NRA), which lobbies officials and educates
the public in support of the ownership of firearms, mailed two letters to its membership urging them
to oppose bills pending in the Ohio state legislature. Accompanying each letter was a three-page list
of all Ohio state legislators and their corresponding contact information. The list included asterisks
next to the names of members of legislative committees relevant to the pending bills. A short
paragraph explaining why certain names had been marked with asterisks was at the bottom of the
list. In response, defendant Handgun Control Federation of Ohio, which advocated gun control,
mailed a letter to its members urging them to support the bills plaintiff opposed. Attached to
defendant’s letter was the photocopied, though slightly modified, listing of Ohio State legislators
that plaintiff used in its mailing. Defendant appealed the district court’s ruling in plaintiff’s favor.

Issue:

Whether defendant’s unauthorized duplication and use of plaintiff’s list of state legislators
constitutes fair use.

Ruling:

The court held that the defendant’s use of the list of legislators was fair. The court found
that the first and fourth factors weighed in favor of finding fair use, reasoning that defendant, a non-
profit organization, had made a non-commercial use of the legislator list with no attempt to sell it.
Further, the court noted that the list contained information so readily attainable that no market
likely existed for it and found that the distribution—to only 200 people—was not particularly
damaging. The court also found that the document was used primarily to exercise defendant’s First
Amendment speech rights to comment on public issues and to petition the government regarding
pending legislation. Indicating that the scope of the fair use doctrine is wider when the use relates to
issues of public concern, the court found that this factor weighed in defendant’s favor. Finally, for
the second and third factors, the court found that the list at issue was entirely factual, and that
defendant copied only the list and not the copyrighted NRA letters, weighing in favor of fair use.

In the matter of the charges of plagiarism, etc., against

Associate Justice Mariano C. Del Castillo
FACTS:

On April 28, 2010, the Supreme Court issued a decision which dismissed a petition filed by
the Malaya Lolas Organization in the case of Vinuya vs Romulo. Atty. Herminio Harry Roque Jr.,
counsel for Vinuya et al, questioned the said decision. He raised, among others, that the ponente in
said case, Justice Mariano del Castillo, plagiarized three books when the honorable Justice “twisted
the true intents” of these books to support the assailed decision. These books were: a. A Fiduciary
Theory of Jus Cogens by Evan J. Criddle and Evan Fox-Descent, Yale Journal of International Law
(2009); b. Breaking the Silence: Rape as an International Crime by Mark Ellis, Case Western Reserve
Journal of International Law (2006); and c. Enforcing Erga Omnes Obligations by Christian J. Tams,
Cambridge University Press (2005).

As such, Justice del Castillo is guilty of plagiarism, misconduct, and at least inexcusable
negligence. Interestingly, even the three foreign authors mentioned above, stated that their works
were used inappropriately by Justice Del Castillo and that the assailed decision is different from what
their works advocated.

ISSUE:

Whether or not there is plagiarism in the case at bar.

HELD:
 No. There is no plagiarism. Even if there is (as emphasized by the Supreme Court in its ruling
on the Motion for Reconsideration filed by Vinuya et al in 2011), the rule on plagiarism cannot be
applied to judicial bodies.

No Plagiarism

At its most basic, plagiarism means the theft of another persons language, thoughts, or ideas. To
plagiarize, as it is commonly understood according to Webster, is to take (ideas, writings, etc.) from
(another) and pass them off as ones own. The passing off of the work of another as ones own is thus
an indispensable element of plagiarism.

According to Black’s Law Dictionary: Plagiarism is the “deliberate and knowing presentation of
another person’s original ideas or creative expressions as one’s own.”

This cannot be the case here because as proved by evidence, in the original drafts of the assailed
decision, there was attribution to the three authors but due to errors made by Justice del Castillo’s
researcher, the attributions were inadvertently deleted. There is therefore no intent by Justice del
Castillo to take these foreign works as his own.

But in plagiarism, intent is immaterial.

On this note, the Supreme Court stated that in its past decisions, (i.e. U.P Board of Regents vs CA,
313 SCRA 404), the Supreme Court never indicated that intent is not material in plagiarism. To adopt
a strict rule in applying plagiarism in all cases leaves no room for errors. This would be very
disadvantageous in cases, like this, where there are reasonable and logical explanations.

On the foreign authors’ claim that their works were used inappropriately

According to the Supreme Court, the passages lifted from their works were merely used as
background facts in establishing the state on international law at various stages of its development.
The Supreme Court went on to state that the foreign authors’ works can support conflicting theories.
The Supreme Court also stated that since the attributions to said authors were accidentally deleted,
it is impossible to conclude that Justice del Castillo twisted the advocacies that the works espouse.

No Misconduct

Justice del Castillo is not guilty of misconduct. The error here is in good faith. There was no malice,
fraud or corruption.

No Inexcusable Negligence (explanation of Justice Del Castillo)

The error of Justice del Castillo’s researcher is not reflective of his gross negligence. The researcher is
a highly competent one. The researcher earned scholarly degrees here and abroad from reputable
educational institutions. The researcher finished third in her class and 4th in the bar examinations.
Her error was merely due to the fact that the software she used, Microsoft Word, lacked features to
apprise her that certain important portions of her drafts are being deleted inadvertently. Such error
on her part cannot be said to be constitutive of gross negligence nor can it be said that Justice del
Castillo was grossly negligent when he assigned the case to her. Further, assigning cases to
researchers has been a long standing practice to assist justices in drafting decisions. It must be
emphasized though that prior to assignment, the justice has already spelled out his position to the
researcher and in every sense, the justice is in control in the writing of the draft.

With the advent of computers, however, as Justice Del Castillos researcher also explained, most legal
references, including the collection of decisions of the Court, are found in electronic diskettes or in
internet websites that offer virtual libraries of books and articles. Here, as the researcher found
items that were relevant to her assignment, she downloaded or copied them into her main
manuscript, a smorgasbord plate of materials that she thought she might need.

She electronically cut relevant materials from books and journals in the Westlaw website and pasted
these to a main manuscript in her computer that contained the issues for discussion in her proposed
report to the Justice. She used the Microsoft Word program. Later, after she decided on the general
shape that her report would take, she began pruning from that manuscript those materials that did
not fit, changing the positions in the general scheme of those that remained, and adding and
deleting paragraphs, sentences, and words as her continuing discussions with Justice Del Castillo, her
chief editor, demanded. Parenthetically, this is the standard scheme that computer-literate court
researchers use everyday in their work.

Habana vs. Robles

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.

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
petitioner’s 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.
NBI-Microsoft Corp. vs. Judy Hwang
FACTS:

Petitioner Microsoft Corp. owns the copyright and trademark to several computer software,
while Private Respondents are President/Managing Director, Gen. Manager, and Director of Beltron
Computer Philippines, Inc. (Beltron) and Taiwan Machinery Display & Trade Center, Inc. (TMTC),
both domestic corporations.

Microsoft and Beltron entered into a Licensing Agreement, authorizing Beltron to reproduce and
install no more than one copy of Microsoft software on each Customer System hard disk or Read
Only Memory (ROM) and distribute directly or indirectly and license copies of the Product. Microsoft
terminated the Agreement for Beltron’s non-payment of royalties. Afterwards, Microsoft learned
that respondents were illegally copying and selling Microsoft software. Hence, Microsoft hired the
services of Pinkerton Consulting Services (PCS), a private investigative firm and sought the assistance
of the National Bureau of Investigation (NBI). The investigating agents, posing as representatives of a
computer shop, bought computer hardware and software from Respondents. The items contain
Microsoft Software, and the ROMs are encased in containers with Microsoft packaging. The Agents
were not given the Microsoft end-user license agreements, user’s manuals, registration cards or
certificates of authenticity for the articles they purchased. Based on articles obtained, Petitioner
charged Respondents before the DOJ with Copyright Infringement and Unfair Competition. DOJ
dismissed Microsoft’s complaint for lack of merit and insufficiency of evidence. Hence, this petition.

ISSUE:

Whether Private Respondents are liable for Copyright Infringement and Unfair Competition.

DECISION:

YES. Section 5 of PD 49 enumerates the rights vested exclusively on the copyright owner.
Contrary to the DOJ’s ruling, the gravamen of copyright infringement is not merely the unauthorized
manufacturing of intellectual works but rather the unauthorized performance of any of the acts
covered by Section 5. Hence, any person who performs any of the acts under Section 5 without
obtaining the copyright owners prior consent renders himself civilly and criminally liable for
copyright infringement.

Some of the counterfeit CD-ROMs bought from respondents were installer CD-ROMs containing
Microsoft software only or both Microsoft and non-Microsoft software. These articles are counterfeit
per se because Microsoft does not (and could not have authorized anyone to) produce such CD-
ROMs. The copying of the genuine Microsoft software to produce these fake CD-ROMs and their
distribution are illegal even if the copier or distributor is a Microsoft licensee. The illegality of the
non-installer CD-ROMs purchased from respondents and of the Microsoft software pre-installed in
the CPU is shown by the absence of the standard features accompanying authentic Microsoft
products, namely, the Microsoft end-user license agreements, user’s manuals, registration cards or
certificates of authenticity.

The counterfeit non-installer CD-ROMs that the Agents bought from respondents also suffice to
support a finding of probable cause to indict respondents for unfair competition under Article 189(1)
of the Revised Penal Code for passing off Microsoft products. From the pictures of the CD-ROMs
packaging, one cannot distinguish them from the packaging of CD-ROMs containing genuine
Microsoft software. Such replication, coupled with the similarity of content of these fake CD-ROMs
and the CD-ROMs with genuine Microsoft software, implies intent to deceive.

MANLY SPORTWEAR vs DADODETTE ENTERPRISE

TAKE AWAY: NOT ORIGINAL, COMMON AND ORDINARY CREATIONS ARE NOT COPYRIGHTABLE.

FACTS:

A search warrant was issued against Dadodette Enterprises for having in their possession
goods, copyright of which allegedly belonged to Manly Sportwear.

Dadodette Enterprises moved to quash and annul the search warrant insisting that the sporting
goods manufactured by and/or registered in the name of MANLY are ordinary and common hence,
not among the classes of work protected under Section 172 of RA 8293.

Trial court granted the motion to quash. MR was denied. Petition for certiorari before the CA was
also denied as the CA found that the trial court correctly granted the motion to quash and that its
ruling in the ancillary proceeding did not pre-empt the findings of the intellectual property court.

ISSUE:

WON the CA erred in finding that the trial court did not gravely abuse its discretion in
declaring in the hearing for the quashal of the search warrant that the copyrighted products of
MANLY are not original creations subject to the protection of RA 8293

RULING:

NO, the CA did not err. The trial court properly quashed the search warrant it earlier issued after
finding upon re-evaluation of the evidence that no probable cause exists to justify its issuance in the
first place. As ruled by the trial court, the copyrighted products do not appear to be original
creations of MANLY and are not among the classes of work enumerated under Section 172 of RA
8293. The trial court, thus, may not be faulted for overturning its initial assessment.

Where there is sufficient proof that the copyrighted products are not original creations but are
readily available in 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.

Also, as correctly observed by the CA, the trial court’s finding that the seized products are not
copyrightable was merely preliminary and MANLY could still file a separate copyright infringement
suit against Dadodette.