Thesis 3rd Draft

1
CHAPTER ONE: INTRODUCTION
A. Background of the Study
“The Copyright Act did not anticipate this,” one Twitter user noted in connection
with the latest paparazzi vs. celebrity lawsuit.1
The relationship between the paparazzi and celebrities has not always been the best. It
has been said that the paparazzi are an occupational hazard for celebrities. Paparazzi are
photographers who follow famous people around, hoping to take interesting or shocking
photographs of them so that they can sell them to a newspaper.2 Historically, there have been
suits filed by famous celebrities against the paparazzi for their intrusion into the private lives
and properties of the celebrities.3 However, in recent years, due to the rise of social media
and the coming of the digital age, the tables have turned, it is now the paparazzi who are
filing suits against the celebrities.
In July 2021, Dua Lipa, the British singer known for global hit songs like Don’t Start
Now and New Rules, was sued for copyright infringement for posting a photograph of
herself on Instagram. The photograph in issue involved Dua Lipa queuing at an airport and
was taken on February 3, 2019 by a paparazzi of the company Integral Images. The same was
posted on Dua Lipa’s social media four days later but has now been deleted. Integral Images
had applied to register copyright for the images, and the request was granted on February 20,
1
The Fashion Law, As the Number of Paparazzi v. Celebrity Copyright Cases Grows, How Big of a Problem is
This Really?, available at https://www.thefashionlaw.com/as-the-number-of-paparazzi-v-celebrity-copyright-
cases-continues-to-grow-how-big-of-a-problem-is-this-really/ (last accessed Aug. 3, 2021).
2
Collins English Dictionary, Definition of ‘paparazzi’, available at
https://www.collinsdictionary.com/dictionary/english/paparazzi (last accessed August 3, 2021).
3
Carmen Ribecca, Celebs Who Sued The Paparazzi For Going Too Far, available at
https://www.nickiswift.com/78195/celebs-sued-paparazzi-going-far/ (last accessed August 3, 2021).
2
2021. The company claims Lipa "knowingly" posted the photo to social media without
permission and stood to make money from the shot.4
This is not the first time that a celebrity has been sued or threatened to be sued for
copyright infringement for posting paparazzi photographs of themselves on social media
without the photographer’s permission. From 2016 to 2019 other celebrities who were sued
by the paparazzi were reality star Khloe Kardashian,5 singer-actress Jennifer Lopez,6 model
Gigi Hadid,7 basketball player Lebron James8 and singer Justin Bieber.9 A common link
among these cases is that the paparazzi filed a copyright infringement lawsuit against the
celebrity after the latter posts on social media, usually Instagram, which constitutes
"unauthorized reproduction and public display" of the paparazzi’s photography without the
latter’s consent.
These are just a few of the growing number of paparazzi-initiated copyright
infringement suits. However, the celebrities have been fighting back. The pleadings of the
abovementioned celebrities included the defense of right of publicity which in essence, is the
4
Mark Savage, Dua Lipa sued for putting paparazzi photo of herself on Instagram, available at
https://www.forbes.com/sites/roberthart/2021/07/09/dua-lipa-the-latest-celeb-sued-for-posting-photo-of-herself-
on-social-media/?sh=e14074300cbf; https://www.bbc.com/news/entertainment-arts-57775670 (last accessed
Aug. 3, 2021).
5
Michelle Kaminsky, Gigi Hadid Sued Over Unauthorized Publication Of Paparazzi Photo On Instagram,
available at https://www.forbes.com/sites/michellekaminsky/2019/01/29/gigi-hadid-sued-over-unauthorized-
publication-of-paparazzi-photo-on-instagram/?sh=1bd55f6814e7 (last accessed Aug. 3, 2021).
6
Chelsea Ritschel, Jennifer Lopez Sued For $150k By Photographer Over Instagram Photo, available at
https://www.independent.co.uk/life-style/jennifer-lopez-sued-copyright-infringement-photographer-instagram-
lawsuit-a9477236.html (last accessed Aug. 3, 2021).
7
Id. at 5.
8
Jaron Schneider, Lebron James Settles with Photog in Lawsuit Over Misuse of Photo, available at
https://petapixel.com/2021/02/05/lebron-james-settles-with-photog-in-lawsuit-over-misuse-of-photo/ (last
accessed Aug. 3, 2021).
9
Olivia Petter, Justin Bieber ‘sued’ For Sharing Paparazzi Photo Of Himself On Instagram available at
https://www.independent.co.uk/life-style/justin-bieber-sued-instagram-photo-paparazzi-lawsuit-a9159596.html
(last accessed Aug. 3, 2021).
3
reaction of the public to name and likeness, which may be fortuitous or which may be
managed and planned, endows the name and likeness of the person involved with
commercially exploitable opportunities.10 Another defense that has been raised by the
celebrities is the Fair-Use Doctrine found in Section 107 of the Copyright Act states that “the
fair use of a copyrighted work,” and here that would be the plaintiff’s photograph of the
celebrity, “including such use by reproduction in copies or phonorecords or by any other
means specified by that section, for purposes such as criticism, comment, news, reporting,
teaching, scholarship, or research is not an infringement of copyright.” 11 Others even went as
far as getting around the photographer’s rights by claiming that the celebrity is a co-author of
the photographer’s work.12
As can be gleaned from the defenses brought forward by the celebrities, notions of
fairness, creativity, and profitability would seem to dictate that they, too, deserve some
leeway to use photographs featuring themselves.13 Neel Chatterjee, a lawyer in the United
States who specializes in high-profile intellectual property disputes, said “It's just one of
those things that offends common sense, if someone's harassing me and takes a photograph
of me and I happen to like the picture and want to make use of it, after they harassed me and
made money from me - now they can sue me for that?” He further states that these cases are
10
Wendt v. Host Int'l, Inc. (Wendt), 125 F.3d 806 (9th Cir. 1997) (U.S.).
11
Meredith Wallen, Celebrities and Paparazzi and Copyright Infringement Lawsuits, Oh My!, available at
https://jost.syr.edu/celebrities-and-paparazzi-and-copyright-infringement-lawsuits-oh-my/ (last accessed Aug. 3,
2021).
12
David H. Siegel, Careful of Who Owns Photographs of You, available at
https://www.natlawreview.com/article/careful-who-owns-photographs-you?amp (last accessed Aug. 3, 2021).
13
Kelley Bregenzer, Modifying Co-Authorship for the Digital Age: Paparazzi Photographs as Joint Works, 13
DREXEL L. REV. 449, 452 (2021).
4
becoming known within the industry as "copyright trolling". He believes photo agencies are
exploring it as a "new and incremental way" of increasing their revenue streams.14
Therefore these recent copyright cases highlight an intersection of two significant
tenets of law: a celebrity’s right of publicity in their own image and a photographer’s right to
copyright their artistic work. There has been a decades-long replete relationship existing
between celebrities and paparazzi, but the rise of social media as a ubiquitous part of how
celebrities interact with their fans places everyone involved in uncharted legal waters.
Unfortunately, despite the number of occasions on which this scenario has arisen, the cases
have been largely settled out of court or decided on a pleading deficiency. 15 So, instead of
getting answers, more questions are left unanswered.
As of now, there has been no legislation or even jurisprudence in the Philippines that
touches on the copyright claims of paparazzi and the right of publicity and right to privacy of
public figures including celebrities. This is a novel issue that has been arising only in the past
few years due to the more instrumental role social media has taken in society. Therefore,
there is plenty of room for future legislation in the Philippine context as the interplay
between celebrities and the media in the Philippines is an ever growing issue especially due
to the growing interest of the general public to the more personal lives of celebrities and
other public figures.
B. Statement of the Problem

14
Kelly-Leigh Cooper, Why celebrities are being sued over images of themselves, available at
https://www.bbc.com/news/world-us-canada-47128788 (last accessed Aug. 3, 2021).
15
Meaghan Kent, Katherine Dearing & Danae Tinelli, Keeping Up with Copyright Infringement: Copyright,
Celebrities, Paparazzi, and Social Media, available at https://www.ipwatchdog.com/2019/10/30/keeping-
copyright-infringement-copyright-celebrities-paparazzi-social-media/id=115456/ (last accessed Aug. 3, 2021).
5
In a situation where a celebrity shares on social media a photo of him/herself that was
taken by a paparazzi, the question arises as to whether or not a photographer may sue the
celebrity for copyright infringement in light of the latter’s right to privacy and right of
publicity?
The Intellectual Property Code of the Philippines provides that copyright shall belong
to the author of the work who is the natural person who has created the work. Therefore, by
that alone, it is the paparazzi who is the author of the photo and is entitled to copyright
protection. However, the right of publicity states that it is the right of a person to control the
commercial use of their identity, or in other words, the right to prevent others from using
their image, name or other aspects of their identity for commercial purposes without their
consent. Furthermore, the right to privacy otherwise known as “the right to be left alone” is
the right of a person to be protected from “unwarranted publicity.” Although the right of
ownership is given by the copyright law to the photographer, the right of publicity gives the
subject of the photograph control over its commercial exploitation. This implies that while a
paparazzi photographer owns copyright in the photographs taken by them, they cannot
commercially exploit the same without the authorization of the subject of the photograph.
The right of publicity also arises from the public figure’s right to privacy. Therefore, there
exists an intersection of three significant tenets of law: a celebrity’s right to privacy, a
celebrity’s right of publicity in his or her own image and a photographer’s right to copyright
their artistic work. This being the case, the concept of authorship and fair use in Philippine
Copyright Law must be examined and subjected to additional requirements and standards in
6
order to address this complex intersection of intellectual property, technology and privacy
law.
C. Definition of Terms
1. Paparazzi - photographers who follow famous people around, hoping to take
interesting or shocking photographs of them so that they can sell them to a
newspaper.16
2. Copyright - consisting of the exclusive right to carry out, authorize or prevent the
following acts with respect to a copyrightable subject matter.17
3. Right of Publicity - the reaction of the public to name and likeness, which may be
fortuitous or which may be managed and planned, endows the name and likeness of
the person involved with commercially exploitable opportunities.18
4. Right to Privacy - otherwise known as “the right to be left alone” is the right of a
person to be protected from “unwarranted publicity.”19
5. Public Figure - “a person who by his accomplishments, fame, or mode of living, or by
adopting a profession which gives the public a legitimate interest in his doings, his
affairs, and his character, has become a 'public personage.’”20
16
Collins English Dictionary, supra note 2.
17
An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing
for Its Powers and Functions, and for Other Purposes [INTELLECTUAL PROPERTY CODE] Republic Act No. 8293,
§ 177, (1997).
18
Wendt, 125 F.3d 806 at 10.
19
Law Offices of Stimmel, Stimmel & Smith, The Legal Right of Privacy, available at https://www.stimmel-
law.com/en/articles/legal-right-privacy (last accessed Aug. 3, 2021).
20
Ayer Productions Pty. Ltd. v. Capulong, 160 SCRA 861, (1988).
7
6. Social Media - These are forms of electronic communication, such as websites for
social networking and blogging through which users create online communities to
share information, ideas, personal messages, and other content such as photos and
videos.
7. Copyright trolling - practice by some plaintiff law firms of using algorithms or other
digital fingerprint technology to search or “troll” for copyright violations of music
and images on the Internet, including, for example, on websites like YouTube and
Facebook.21
D. Objective of the Study
This thesis aims to accomplish the following objectives:
1. To examine the provisions of the Intellectual Property Code of the Philippines,
particularly those relating to ownership of copyright and copyright infringement;
2. To establish the right of publicity and right to privacy of celebrities in the Philippines;
3. To provide for a recitation on how to find the balance in enforcing the photographer’s
right to copyright their artistic work without violating the public figure’s right of
publicity in their own image;
4. To provide guidelines for the courts in deciding whether there is copyright
infringement involved when the “celebrity-subject matter” of a photograph posts on
social media a paparazzi’s photo.
21
Heidi Crikelair & David Perry, Beware of the Trolls: Recent Uptick in Copyright Trolling and What You
Should Do, available at https://www.jdsupra.com/legalnews/beware-of-the-trolls-recent-uptick-in-63839/ (last
8
E. Significance of the Study
Just like in all things there must be balance. On the one hand, the right of the
paparazzi to do their job and own their work under copyright laws must be respected. On the
other hand, the public figure’s right to protect the value of his or her name, image, and
overall likeness and his or her privacy must also be given credence.
The Intellectual Property Code of the Philippines was passed in 1997, and took effect
on January 1, 1998.22 However, more than two decades have passed since then and the
current state of affairs have changed drastically. In the modern world we are living today
social media has become a staple in our everyday lives. The internet has brought this fast-
paced and ever growing interest of society in the personal lives of public figures. In effect,
the delineation of what remains private and what is up for public consumption is becoming
thinner and thinner to the detriment of the public figures. As aptly stated by Athul K.
Acharya, a public interest attorney at BraunHagey & Borden, told TFL The concept of
‘ownership’ of images and videos is shifting, and will shift further, as everyday people find
themselves in photos all the time, taken by people they know and don’t know, with and
without their permission.”23
The current imbalance that tilts towards the rights of the copyright holders without
taking much consideration to the right of publicity and right to privacy of the public figures is
somehow offensive to this modern reality. Therefore, this present study is undertaken to
22
INTELLECTUAL PROPERTY CODE, § 241.
23
The Fashion Law, supra note 1.
9
respond to a complex intersection of intellectual property, technology and privacy laws while
conceding to the realities of the modern days.
F. Scope and Limitation
This thesis will only be limited to one main branch of intellectual property law which
is copyright because the subject matter of this thesis involves photographs which are within
the scope of copyright law. This study shall not delve into the creation of its own penalties
that will be applied against individuals who commit the prohibited acts for regulation
proposed by this study.
The literature of laws that will assist in explaining the topic is limited because the
right of publicity is a fairly novel concept in our own jurisdiction. However, this study will
utilize the Philippine laws available such as Intellectual Property Code, the Civil Code and
other related laws to fulfill the study’s objectives. Furthermore, preponderance of this
research will be culled from foreign jurisprudence.
The work subject to copyright that this thesis will discuss will be limited to
photographic works including works produced by a process analogous to photography
wherein the subject matter of such photograph is considered a public figure.
It is important to emphasize that the main issue of the proponent’s study is the
interplay between the laws on copyright, right to privacy and right of publicity. While the
thesis may have other related issues under the Constitution like the freedom of speech, such
discussions will only be touched upon to entangle the main issues stated.
10
G. Methodology
The proponent shall first examine the paparazzi-initiated copyright infringement
cases filed against celebrities in the United States of America, looking at the pleadings and
defenses of the opposing parties. After which, the proponent will provide a general overview
of the laws on copyright in the Philippines with a review the Intellectual Property Code of the
Philippines and the jurisprudence in the Philippines relating to copyright and the history of
copyright in the Philippines. Then, the proponent will discuss the concept of the right to
privacy in the Philippines and how it affects public figures. Foreign jurisprudence on this
matter will also be discussed. Thereafter, the proponent will explain and describe the
literature concerning the right of publicity. Foreign jurisprudence on the right of publicity
will be discussed and journal articles shall also be relied on. The proponent will also discuss
the right of publicity in the Philippines. The relevant principles in copyright law which were
presented as defenses in some of the copyright trolling cases filed which will aid the
proponent in addressing the said conflicts will then be presented. The proponent will then
present the existing conflict between the photographer’s copyright and a public figure’s right
to privacy and right of publicity in their own image. Finally, the proponent will create a legal
framework to aid courts in addressing such issues in order to balance the said opposing
rights.
11
CHAPTER TWO
COPYRIGHT TROLLING: THE LEGAL SUITS BETWEEN PHOTOGRAPHERS
AND CELEBRITIES
"I don't think pictures have any value today: anyone can take them, cameras have
developed so much that you don't need to learn any technique, and that kills the value of a
picture. It's a new generation."24 The value of paparazzi has greatly diminished due to the rise
of social media and the Internet.25 Seeking to remain relevant and desirable, the paparazzi has
developed the infamous act of "copyright trolling" which is as a means to sustain their
monetary needs.26
In order to portray how the practice of copyright trolling came to be, this chapter of
the thesis will first elaborate on the relationship between the celebrities and paparazzi.
Thereafter, the gradual rise and development of social media in recent years will be discussed
which is the root of the said practice. Finally, there will be a brief discussion of copyright
trolling and a number of paparazzi-initiated copyright infringement US cases will be
narrated so the current state of copyright trolling can be presented.
A. Celebrities and the Paparazzi

24
Austin Joseph, Feeling Cute, Might [Have to] Delete Later: Defending against The Modern Day Copyright
Troll, 27 J. INTELL. PROP. L. 329 (2020) citing Clement Cheroux, Camille Lenglois, Vera Leon & Max
Bonhomme, Hazards Of The Trade: Interviews With Paparazzi, reprinted in Paparazzi! Photographers, Stars,
And Artists 39 (Clement Chdroux ed., 2014).
25
Id at 331 citing Michael Guerrin, The Market For Paparazzi Pictures, Reprinted In Paparazzi! Photographers,
Stars, And Artists 57 (Clement Cheroux ed., 2014).
26
Id at 331 citing Kelly-Leigh Cooper, Why Celebritiesare Being Sued OverImages of Themselves, BBC
NEWS (Feb. 6, 2019), https://www.bbc.com/news/world-us-canada-47128788 ("Mr. Chatterjee says
these are becoming known within the industry as 'copyright trolling.").
12
Celebrities
The historian Daniel Boorstin defined modern fame, to wit: "The hero was
distinguished by his achievement, the celebrity by his image. The celebrity is a person well
known for his well-knownness. We risk being the first people in history to have been able to
make their illusions so vivid, so persuasive, so realistic that we can live in them."27
The concept of ‘celebrities’ is nothing new, it has entered the public eye way back in
the eighteenth century due to the ascent in mass media distribution through newspapers in the
early 1800s.28 What started off as newspapers tackling wartime heroes and commendable
inventions soon shifted to discussions about entertainers.29
The definition of being a celebrity is ever-changing due to the media and global
communication constantly defining and redefining the ambit of celebrity status. Originally,
acquisition of celebrity status could be by birth or by skill as in the case of sportspersons,
political leaders, actors and members of royal families. However, due to the changes in the
modern world, such celebrity status has extended even to a reality show participant
performing histrionics in front of the cameras or an unsuccessful actor trying to be in the
limelight through controversial statements. Today, celebrity status can be acquired by almost
27
Jill Neimark, The Culture of Celebrity, available at
https://www.psychologytoday.com/intl/articles/199505/the-culture-celebrity (last accessed Aug. 15, 2021).
28
Joseph, supra note 24 at 333.
29
Id.
13
anyone. At the same time with media's accentuated support, celebrity influence has pervaded
popular culture.30
There are many causes to the human desire to know more about celebrities. There is
an idea that by doing so, one may also become as famous or as highly sought after. 31 Also, by
“knowing what is going on with high-status individuals, you'd be better able to navigate the
social scene."32 Further, part of this curiosity is a way of learning what makes the great in our
own search for knowledge, fame and fortune and in an effort to emulate, and in some rare
cases to surpass such fame and fortune.33
What this long history of celebrity culture proves is that society is very much invested
in the lives of famous figures and today is somehow already part of human nature. 34 As such,
this fascination will likely continue because of the low probability that an average person
would encounter any celebrity in their everyday life so viewers rely solely on photographs or
other sources of media to see celebrities35. In recent years, this desire has been fulfilled by the
paparazzi.36
The Rise of Paparazzi
30
Garima Budhiraja, Publicity Rights of Celebrities: An Analysis under the Intellectual Property Regime, 6
NALSAR Stud. L. REV. 85, 86 (2011) citing Michael Madow, Private Ownership of Public Image: Popular
Culture and Publicity Rights, 81 CAL. LAW. REV. 125, 128 (1993).
31
Stephanie Pappas, Oscar Psychology: Why Celebrities Fascinate Us, available at
https://www.livescience.com/18649-oscar-psychology-celebrity-worship.html (last accessed Aug. 15, 2021).
32
Id.
33
Sheila Kohler, Why Are We Fascinated By Celebrities?, available at
https://www.psychologytoday.com/us/blog/dreaming-freud/201408/why-are-we-fascinated-celebrities (last
34
Joseph, supra note 24, at 333.
35
Id.
36
Id.
14
Today, the word “paparazzi” and “photographer” are somehow synonymous. The
term “paparazzi'' may trace its roots from the film La Doce Vita where the character,
Paparazzo, collected pictures of celebrities. 37 Thereafter, this behavior was replicated outside
the cinema as the profession quickly took shape. 38 The world of cinema was fast developing
so people became more infatuated with the glamorous Hollywood actors and actresses. As
the public’s interest towards the lives of the celebrities outside of films heightened, so did
their desire to see pictures and news of celebrities’ normal lives which led to the covers of
several papers being plastered with impromptu pictures of celebrities. 39 Such desire is rooted
from the “uncontrollable voyeurism" which created a "visual form of gossip." 40 Readers were
craving more than just text so the rise in consumerism and star culture gave the paparazzi a
lucrative position.
Paparazzi are often described as morally dubious people who make the lives of others
miserable, but, in fact, they are part of a complex web of obsession for celebrity images
which also includes the mass media market, consumers, and celebrities and their publicists.41
The irony was that the paparazzi were taking photos of the glamorous life of
celebrities, but the celebrities would likely argue that paparazzi were anything but glamorous
because they see them as cowardly and willing to do anything to "earn money off celebrities'
37
AnOther, The History of Paparazzi Photographs, Beginning on the Streets of 50s Rome, available at
https://www.anothermag.com/art-photography/11348/history-of-paparazzi-photography-1950s-rome-streets-
exhibition-sophia-loren (last accessed Aug. 6, 2021).
38
Id.
39
Daniel Ganninger, The Origin of the Paparazzi, available at https://medium.com/knowledge-stew/the-origin-
of-the-paparazzi-9ac131d2b740 (last accessed Aug. 5, 2021).
40
41
Elena Martinique, Paparazzi Photography, From Dolce Vita to Today, available at
https://www.widewalls.ch/magazine/paparazzi-photography-exhibition-vicenza (last accessed Aug. 5, 2021).
15
backs."42 Indeed the paparazzi were reporters but instead of receiving awards for their work
what they were gaining were provocateur recognition such as snapping the most scandalous
shots.43
B. Rise of Social Media
Courts around the world have noted the phenomenon of the rise of social media in
providing immediate, easy access, and widespread dissemination of digitalized content
online.44 In the Philippines, social media has been defined by the Supreme Court as web-
based platforms that enable online interaction and facilitate users to generate and share
content.45 There are various classifications of social media platforms and one can be
classified under the (1) "social networking sites" such as Facebook, (2) blog and microblog
sites (Twitter, Tumblr); (3) content communities sites (YouTube, Instagram); (4)
collaborative projects (Wikipedia); (5) Virtual social worlds (Farmville); and (6) Virtual
game-world (World of Warcraft).46
The beginnings of social media dates back to 1997 when Six Degrees, the first
official social media networking website was launched. 47 The users of the site were able to
42
43
Id.
44
Leow Wei Xiang Joel, Fair Use on Instagram: Transformative Self-Expressions Or Copyright Infringing
Reproductions, 31 SAcLJ 125 (2019).
45
Belo-Henares V. Guevarra, A.C. No. 11394, (2016) citing Government Social Research, Using social media
for Social research: An introduction, May 2016, available at
<https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/524750/
GSR_Social_Media_Research_Guidance_-_Using_social_media_for_social_ research.pdf>
46
Id.
47
Kent Anderson, Six Degrees of Facebook, MEDIUM, available at
https://medium.com/@kentanderson_17716/six-degrees-of-facebook-285adb9cdfd2 (last accessed Aug. 15,
16
upload pictures and connect with other users, but it was limited to that alone, so, by 2001 the
site came to an end. However, this led to the birth of other social media platforms such as
Myspace and Friendster and eventually to today’s most popular social media platforms:
Facebook, Twitter, YouTube and Instagram.
Ten years ago, social media didn’t play a strong role in anyone’s life. Now, we are a
generation of likes, shares and comments. 48 In each social media platform, users are driven
by the sense of affirmation given by interactions with their posts. 49 The uses of Facebook and
Twitter started off fairly simple: to connect and stay up to date on what your friends are
doing. Today, due to the fast paced technological advancements, these social media platforms
can broadcast live sporting events where users can discuss in real time, users can even post
live videos of what they’re doing in real-time. In the digital age we live in, social media has
become the king of connecting friends, strangers, old colleagues and companies. The chances
of a person or brand being on at least one form of social media is huge.50
The presence and impact of social media in the Philippines today is also undeniable.
In 2020, the Philippines topped the world ranking for time spent using social media for the
sixth year in a row with Filipinos spending an average of 4 hours and 15 minutes each day on
social media which is 22 minutes higher than the previous year’s average of 3 hours and 53
minutes, and 3 minutes higher than 2019’s average of 4 hours and 12 minutes. 51 So, not only
2021).
48
Bridget Meyers, social media: then vs. now, available at https://tcapushnpull.com/social-media-vs-now/ (last
49
Id.
50
Id.
51
Kyle Chua, PH remains top in social media, internet usage worldwide – report, available at
https://www.rappler.com/technology/internet-culture/hootsuite-we-are-social-2021-philippines-top-social-
media-internet-usage (last accessed Aug. 15, 2021).
17
is the Philippines the top country in terms of social media usage, it appears that there is
reason to expect that such numbers would just keep growing.
There is a rise in participative technology epitomized by the outbreak of social media.
There is a striking difference in the internet landscape ten years ago to the collaborative
content sharing that is encouraged by these platforms today. There is a dramatic shift from
primarily user-generated content to user-found content. Before, the content uploaded online
consisted of independently created photographs and videos. Today, social media sites involve
the process called “linking” which is a way to "encourage users to post content that is not
their own.” Based on these separate user behaviors, scholars conceptualized two different
generations: “user-generated content” (first generation of social media) and “user-found
content” (second generation of social media). Unlike user-generated content, the primary
intention of user-found content-such as resharing of photographs found on the Internet-is to
achieve a cultural flow or start a social conversation. This behavior of copying has been
equated by some scholars to an extension of free speech due to the inherent conversational
nature of content sharing.
C. Social Media and the Celebrity-Paparazzi Relationship
In little more than a decade, the impact of social media has gone from being an
entertaining extra to a fully integrated part of nearly every aspect of daily life for many. 52
This phenomenon gave birth to many developments across different fields. In the realm of
52
Wharton University of Pennsylvania, The Impact of Social Media: Is it Irreplaceable?, available at
https://knowledge.wharton.upenn.edu/article/impact-of-social-media/ (last accessed Aug. 5, 2021).
18
the symbiotic relationship between celebrities and paparazzi, there arose two changes that
have been closely impacted by the rise of social media: citizen paparazzi and copyright
trolling.
Citizen Paparazzi
The collection, dissemination and way of sharing information has drastically changed
due to the onset of the internet, new technologies, social platforms and grass-roots media 53
and this has brought about the concept of citizen journalism which has been defined as the
“journalism that is conducted by people who are not professional journalists but who
disseminate information using Web sites, blogs, and social media.” 54 This is an alternative
form of news gathering and reporting, taking place outside of the traditional media structures
and which can involve anyone.55
What may be considered as a close relative of citizen journalism is what has been
coined as citizen paparazzi. Technological advancements like smartphones and the internet
have made it easier for ordinary people to pick up a camera, stand outside a celebrity’s home
or a place they’re eating at, snap pictures and give it to an agency. 56 Therefore, ordinary
people are now becoming paparazzi.57 Ordinary people, who were at the right place at the
53
Micha Barban Dangerfield, Power to the People: The rise and rise of Citizen Journalism, available at
https://www.tate.org.uk/art/art-terms/p/photojournalism/power-people (last accessed Aug. 13, 2021).
54
Sonny Albarado, Citizen Journalism, available at https://www.britannica.com/topic/citizen-journalism (last
55
Id.
56
Zorianna Kit, "$ellebrity" explores paparazzi influence in fame game, available at
https://www.reuters.com/article/us-ellebrity-idUKBRE90A0YK20130111 (last accessed Aug. 13, 2021).
57
Id.
19
right time holding a camera or a smart phone, are part of the changing face of the paparazzi
trade, an Internet-fueled industry that feeds on the public’s seemingly insatiable interest in
entertainment news.58 Photo agencies are increasingly relying on submissions from regular
folk who either happen to bump into celebrities while carrying digital cameras, or who have
injected themselves into the cat-and-mouse game of celebrity snapshots, despite any formal
training.
Copyright Trolling
The dramatic shift from user-generated content to user-found content, as discussed in
the previous section, wherein the practice of “linking” which is a way to "encourage users to
post content that is not their own” is becoming more and more normalized, is making a great
impact on the celebrity-paparazzi relationship and intellectual property law. The second
generation of social media’s ease of accessing and sharing content on the internet collides
with the traditional notions of copyright protection and this gives rise to a majority of the
problems of content users. Consequently, today, there is an emerging trend of copyright
trolling.
“Copyright trolling” takes place when a suit is brought by a paparazzi or
photographer against celebrities who post a paparazzi's picture in social media without first
paying to license the photo.59 It usually involves a photographer who will take a photograph
58
Andrew Lavallee, The Rise Of The Citizen Paparazzi, available at huffpost.com/entry/the-rise-of-the-citizen-
p_n_88537 (last accessed Aug 13, 2021).
59
20
of a celebrity in a candid moment, such as coming out from a restaurant in New York City,
and such photo will be posted online. The celebrity will then see the photo online and post it
on his or her social media account without asking for the photographer’s permission or
paying for licensing fee first (likely without knowing that he or she needed to do so since it is
a photo of him or her). Upon seeing this, the photographer will file a copyright infringement
suit against the celebrity. Wanting to avoid the time and expense of litigation, most
celebrities then settle with the photographer- sometimes to the tune of several tens, if not
hundreds, of thousands of dollars.60
In order to better illustrate the practice of copyright trolling and the defenses raised by
the opposing parties, a few examples of cases that were previously filed by paparazzi against
celebrities are narrated below.
Odell Beckham Jr.
In October 2017, New York Giants wide receiver Odell Beckham Jr. re-posted two of
the paparazzi photos surreptitiously taken of him returning home with crutches and a walking
boot.61 The photos’ owner, Splash News and Picture Agency, LLC demanded a $40,000
payment for Beckham’s alleged copyright infringement.62
Beckham fought back by filing a complaint for declaratory relief and damages against
Splash News wherein he sought declaratory judgment of non-infringement of Splash's

60
Id.
61
Trevor Maxim, Odell Beckham Jr.’s Copyright Fight with the Paparazzi, available at
https://www.gerardfoxlaw.com/news/thought-leadership/odell-beckham-jrs-copyright-fight-with-the-paparazzi
62
Id.
21
purported copyrights, and seeks monetary relief and other damages from Defendants for their
violations of Beckham's right of publicity and right of privacy. 63 He claimed that the
photographer violated his right of publicity and right of privacy by taking photos of him in
his driveway and subsequently selling them to the photo agency without Beckham’s
knowledge or consent.64 He also claimed that the agency’s act of licensing the unauthorized
photos to other websites is in violation of his right of publicity. 65 After a year of back and
forth, the parties settled out of court.
Emily Ratajkowski
In October 2019, Robert O’Neil filed a suit for copyright infringement in New York
Federal Court against model Emily Ratajkowski and her corporate entity Emrata Holdings,
LLC for damages up to $150,000, for all the profits which have been earned by Ratajkowski
by the photographer's work and other unspecified monetary damages.66 In O’Neil’s complaint
he claims that Ratajkowski posted a photograph he took to her Instagram story and that she
had no right to do so. The picture shows Ratajkowski holding a floral bouquet in front of her
face as she walks down a city street.
In her answer, Ratajkowski raised many affirmative defenses. Among them, first, she
claimed invalidity or unenforceability of copyright because the alleged copyrights are invalid
63
Beckham V. Splash News and Picture Agency, LLC et al., 2:18-cv-01001-JTM-JCW (E.D. La. 2018) (US).
64
Id.
65
Id.
66
O'Neil v. Ratajkowski et al, 1:19-cv-9769 available at https://cases.justia.com/federal/district-courts/new-
york/nysdce/1:2019cv09769/525048/1/0.pdf?ts=1571974207 (last accessed Aug. 15, 2021).
22
and/or unenforceable, including by reason of lack of originality and lack of copyrightable
subject matter.67 Second, she also raised the Fair-Use doctrine. Third, she also raised the
doctrine of implied consent as a defense wherein she stated that O’Neil impliedly or
explicitly, directly, or indirectly, authorized, licensed, consented to, or acquiesced to
Ratajkowski allegedly infringing use of O’Neil’s copyright. 68 She also raised the affirmative
defense of bad faith on the part of O’Neil because the latter’s counsel is known as a
“Copyright Troll” and have instituted this action in bad faith and to harass her.69
In Ratajkowski’s opposition to O’Neil's cross-motion for summary judgment and
reply in support of Ratajkowski's motion for summary judgment and attorney's fees, she
expounded on the affirmative defenses she raised in her answer. As to the first affirmative
defense, Ratajkowski claimed that the photograph does not have the required “spark of
creativity” required to qualify for copyright protection because O’Neil merely took the
photograph when and where he happened to allegedly inadvertently cross paths with
Ratajkowski, rather than choosing the timing or location of the photograph based on any sort
of creative vision.70
For her second affirmative defense, she said that the use was transformative by
putting a caption “Mood Forever” is clearly a comment on how inappropriate it was for
O'Neil to photograph her (and attempt to license the resulting photograph) when she had
covered her face as a signal that she did not consent to being photographed. As for O’Neil’s
67
O'Neil v. Ratajkowski et al, 1:19-cv-9769-AT available at
https://storage.courtlistener.com/recap/gov.uscourts.nysd.525048/gov.uscourts.nysd.525048.17.0.pdf (last
68
Id.
69
Id.
70
O'Neil v. Ratajkowski et al, 1:19-cv-9769-AT available at https://f.datasrvr.com/fr1/220/85610/rat_opp.pdf
23
claim that such was for commercial use, Ratajkowski said that she did not receive any
compensation in connection with the Instagram Stories. Ratajkowski also argued that O'Neil
photograph is subject to only minimal protection, if any, because the Court has explicitly
held that paparazzi images “do not reflect substantial creative expression” and are “further
from the core of copyright protections than creative or fictional works would be”. 71 This is
especially true where, as here “the photographer predominantly captured his subjects in
public, as they naturally appeared.”72 As of date of writing, this case has not been decided
upon nor have the parties settled the case.
Gigi Hadid
Jelena Noura “Gigi” Hadid, an American fashion model, is also no stranger to these
paparazzi-initiated copyright infringement suits.
First, on September 5, 2017, Peter Cepeda, a freelance photographer, filed a
complaint for copyright infringement in the United States District Court for the Eastern
District of Virginia against IMG Worldwide, Inc, and Hadid. 73 In his complaint, Cepeda
alleges that in July 2016 he captured a photograph of Hadid in New York then licensed the
copyright photograph to Instar Images for use on The Daily Mail who in turn posted the
photograph on the internet giving credit to Peter Cepeda as the copyright owner.74
Subsequently, Hadid posted this photograph to her Instagram page and posted a link of that
71
Id citing Barcroft, 297 F. Supp. 3d at 354.
72
Id.
73
Cepeda v. Hadid, 1:17-cv-00989-LMB-MSN (E.D. Va. 2017) (US).
74
Id.
24
photograph from her Instagram page and posted it to her Twitter page.75 Several other media
sources copied the photograph from Hadid’s post and credit either her or Instagram for the
photograph. The complaint further alleges that Hadid refused to remove the photographs
even after numerous attempts made by Cepeda asking to remove them. Cepeda alleges he did
not give permission or consent to Hadid to copy or use the photograph. This case was
dismissed.
Second, on January 28, 2019, Xclusive-Lee, Inc., a photographer, also filed a
complaint in the United States District Court for the Eastern District of New York for
copyright infringement and contributory infringement against Hadid.76 Xclusive-Lee, Inc.
alleges that they were the copyright holder of a photograph he took of Hadid and that Hadid
did not have a license or permission to post a cropped version of Xclusive-Lee, Inc’s
photograph to her Instagram account.77
In the Motion to Dismiss filed by Hadid, she used a fair use argument and an implied
license argument. As to the first argument, Hadid argued that “according to Xclusive-Lee’s
complaint, Ms. Hadid merely reposted the photograph to her Instagram page and made no
effort to commercially exploit it. Her reposting thus reflected a personal purpose different
than the photographer’s purpose in taking the photograph, which was to commercially
exploit Ms. Hadid’s popularity.”78 Moreover, the motion read, the shot was nothing but a
friendly photo taken on a city sidewalk – “a factual work, not a creative one, thus favoring a
75
Id.
76
Xclusive-Lee, Inc. v. Hadid, No. 19-CV-520 (PKC) (CLP), 2019 U.S. Dist. LEXIS 119868 (E.D.N.Y. 2019)
(US).
77
Id.
78
Baker & Hostetler LLP, Gigi Hadid “Obliterates” copyrights with fair-use bazooka, available at
https://www.lexology.com/library/detail.aspx?g=e162b58c-9e96-4857-8505-5b58042af129 (last accessed Aug.
15, 2021).
25
determination of fair use.”79 As to her second argument, Hadid claimed that when she
voluntarily stopped and posed she enhanced the value of the photo in exchange for
permission to use the image in a manner that does not interfere with the photographer’s
ability to profit from it.80Legally, Hadid was alleging an “implied license,” or an unwritten
contract based on objective conduct, an agreement that would permit a reasonable person to
conclude that a deal had been struck between her and the photographer. 81 To this argument
Xclusive-Lee responds, “Ms. Hadid is as much a joint copyright holder in the Photograph as
the subject of a biography is joint copyright holder to the words used by the author to
describe her life.”82
Unfortunately, this case was dismissed on technical grounds and therefore such
contentions made by Hadid were not decided upon by the court. The court dismissed
Xclusive-Lee, Inc’s complaint for failure to meet the registration requirements established by
the Supreme Court, that copyright registration must be obtained in the work prior to filing a
lawsuit.83 Here, Xclusive-Lee, Inc concedes that an application for copyright was submitted
but had not yet been approved.84 This case was dismissed with prejudice.85
Third, in September 2019, Robert O’Neil, a photographer, filed a complaint in the
United States District Court for the Southern District of New York against Hadid. 86 O’Neil
79
Id.
80
James Sammataro, Gigi Hadid, Heroine of the Copyright Revolution? (Guest Column), available at
https://www.hollywoodreporter.com/business/business-news/gigi-hadid-heroine-copyright-revolution-guest-
column-1226378/ (last accessed Aug. 15, 2021).
81
Id.
82
Sammatro, supra note 80.
83
Xclusive-Lee, No. 19-CV-520 (US).
84
Id.
85
Id.
86
O’Neil v. Hadid, 1:19-cv-8522 (S.D.N.Y. 2019) (US)
26
alleges he is the copyright holder of a photograph taken of English singer and songwriter,
Zayn Malik.87 Hadid posted this photograph, of her then boyfriend, on her Instagram page. 88
O’Neil asserts he did not give Hadid permission to use the said photograph. This case was
dismissed due to the parties reaching a settlement agreement.89
The above-mentioned cases are only a few of the growing number of paparazzi-
initiated copyright infringement cases against celebrities. It has become so frequent that it has
already been given a name. Unsurprisingly, these cases arose during the years when social
media started to make a greater impact globally, given the fact that the celebrity’s alleged
infringing act is through sharing in social media. In these cases, the plaintiff-photographers
would always bring forth the same case of copyright infringement. While the defendant-
celebrities have put forward different defenses such as: right to privacy, right of publicity,
implied license and fair use. Unfortunately, the courts have dismissed these cases on
procedural grounds without going into the merits, therefore, the questions that arose from the
defenses of both sides are left unanswered.
87
Id.
88
Id.
89
Id.
27
CHAPTER THREE
COPYRIGHT LAWS IN THE PHILIPPINES
In the previous chapter the proponent showed the emerging practice of copyright
trolling wherein the paparazzi would file a copyright infringement suit against the celebrity
who posted in social media a photo of the celebrity taken by the said paparazzi. The main
cause of action involved in copyright trolling is copyright infringement. Therefore, in order
to establish the inherent conflict that is brought about by the cases narrated in the previous
chapter, this chapter will discuss the prevailing laws of copyright in the Philippines.
The 1987 Constitution contains a specific provision that supports the protection of
intellectual property, which provides: “The State shall protect and secure the exclusive rights
of scientists, inventors, artists, and other gifted citizens to their intellectual property and
creations, particularly when beneficial to the people, for such period as may be provided by
law.”90 This particular provision still serves as the backbone for subsequent laws passed by
Congress with regard to intellectual property, particularly our current Intellectual Property
Code. With respect to this provision, as well as Sections 10 to 12 which deals with Science
and Technology, Fr. Joaquin G. Bernas, S.J. has this to say:
While these provisions on science and technology are of little significance

as constitutional law, they are important as an expression of national policy
and concern. They are an admission of the sad state of science and
technology in the country, lagging as the nation is behind other ASEAN
countries, and at the same time an exhortation to the government and to the
nation as a whole to give to science and technology the attention they
deserve.91
90
1987 PHILIPPINE CONSTITUTION, art. XIV, § 13.
91
JOAQUIN G. BERNAS, S.J., THE 1987 CONSTITUTION OF THE REPUBLIC OF THE PHILIPPINES: A COMMENTARY,
1310 (2009 ed.).
28
The Intellectual Property Code is the law that further realized the enunciated policy in
the 1987 Constitution. In the very policy of the law itself, the State recognizes that an
effective intellectual and industrial property system is vital to the development of domestic
and creative activity, facilitates transfer of technology, attracts foreign investments, and
ensures market access for our products.92 To this end, the State shall, through the Intellectual
Property Code, “protect and secure the exclusive rights of scientists, inventors, artists and
other gifted citizens to their intellectual property and creations, particularly when beneficial
to the people, for such periods as provided.”93 The social function of intellectual property was
also recognized therein, consequently, “the State shall promote the diffusion of knowledge
and information for the promotion of national development and progress and the common
good.”94
Being one of the primary sources for this thesis, a complete understanding of the
relevant provisions of this law will be critical to realizing the objectives of this thesis. This
law not only established the Intellectual Property Office but also provided for the regulation
of several intellectual property rights including but not limited to copyright, patent, and
trademark. With respect to copyright, which is the relevant intellectual property right under
consideration, the law provides for a long list of literary and artistic works, which are
“original intellectual creations in the literary and artistic domain protected from the moment
of their creation.”95
92
93
94
95
29
Copyright is one of the several intellectual property rights recognized and protected
under the Philippine jurisdiction.96 The goal of copyright law is to balance the interests of
artists, while ensuring that the public has the widest possible access to a diverse variety of
content.97 Copyright encourages artistic creation by ensuring that free-riders do not copy the
authors’ works by providing authors with a limited monopoly over their works since copying
tends to diminish the original author’s potential profit. 98 At the same time, other artists are
encouraged to utilize their own creative efforts rather than resort to copying when creating
their own artistic works.99 Therefore, the ultimate purpose of copyright law is the promotion
of the arts and for public benefit through the widespread dissemination of works.100
Copyright is a right granted by statute to the author of literary, scholarly, or artistic
productions. A non-exhaustive list of subject matter which are commonly made the subject of
copyright law is provided for in Section 172 of the Intellectual Property Code. 101 All such
works are protected by the mere fact of their creation.102
Under the system, protection also extends to derivative works or works which are
dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of
literary or artistic works; or those which serve as mere collections or compilations of literary
96
Barton Keyes, Alive and Well: The (Still) Ongoing Debate Surrounding Conceptual Separability in American
Copyright Law, 69 Ohio State Law Journal 109, at 145 (2008).
97
Id.
98
Id.
99
Id.
100
Id.
101
INTELLECTUAL PROPERTY CODE, §172.
102
Id.
30
or artistic works.103 Such works are treated and protected as new works provided that such
new works do not affect the force of any subsisting copyright upon the original works.104
The rights afforded under the copyright system as provided for in the Intellectual
Property Code may be divided into two classes: economic rights and moral rights. Economic
rights enable creators to obtain remuneration or derive a profit from the use or exploitation of
their works by third parties. In effect, these rights protect the economic investment of the
author in creating the work as well as the fruits of his or her labor. These economic rights
include:
“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; (n)
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and”
177.7. Other communication to the public of the work.105”
On the other hand, what is protected under moral rights is the author’s right to be
attributed to his or her own work and the preservation of the work in all its integrity in a way
that he or she intended the work to be. These rights concern the capability of authors to be
attributed to their works rather than the capability of a creator to derive any pecuniary or
103
104
Id.
105
31
economic benefit from the use by others of his creation. Ultimately, they pertain to the
personal connection between creators and their works. These include the following rights:
“193.1. To require that the authorship of the works be attributed to him, in

particular, the right that his name, as far as practicable, be indicated
in a prominent way on the copies, and in connection with the public
use of his work;
193.2. To make any alterations of his work prior to, or to withhold it from
publication;
193.3. To object to any distortion, mutilation or other modification of, or
other derogatory action in relation to, his work which would be
prejudicial to his honor or reputation; and
193.4. To restrain the use of his name with respect to any work not of his
own creation or in a distorted version of his work.106”
Under Philippine law, when there is a violation of any of the aforesaid exclusive
economic or moral rights granted to the copyright owner, copyright infringement occurs. 107 In
Columbia Pictures, Inc. v. Court of Appeals, the Court has emphatically declared:
Infringement of a copyright is a trespass on a private domain owned and occupied by

the owner of the copyright, and, therefore, protected by law, and infringement of
copyright, or piracy, which is a synonymous term in this connection, consists in the
doing by any person, without the consent of the owner of the copyright, of anything
the sole right to do which is conferred by statute on the owner of the copyright.108
Furthermore, aside from the person who directly commits an infringement, others who may
also be liable for copyright infringement are those who benefit from the infringing activity of
another person who commits an infringement if the person benefiting has been given notice
of the infringing activity and has the right and ability to control the activities of the other
106
107
INTELLECTUAL PROPERTY CODE, § 216
108
Columbia Pictures, Inc. v. Court of Appeals, G.R. No. 110318, [August 28, 1996], 329 PHIL 875-932
32
person and those with knowledge of infringing activity, induce, cause or materially
contribute to the infringing conduct of another.109
Copyright law encourages creativity by assuring creators the opportunity to obtain
financial rewards for their works.110 This is achieved by granting individuals exclusive
economic and moral rights from the moment of creation and generally for a period of 50
years from the individual’s death.111 These exclusive rights afford them protection against
unauthorized use of their creative works. Any violation of the aforesaid rights would
constitute copyright infringement.112
109
INTELLECTUAL PROPERTY CODE, § 216
110
Id.
111
Id.
112
Id.
33
CHAPTER FOUR
RIGHT TO PRIVACY OF PUBLIC FIGURES
In order to establish the conflict between copyright laws, which were thoroughly
discussed in the previous chapter, and the right to privacy of public figures, the latter shall be
explained below, with a discussion on the recognition of the said right in the Philippine
jurisdiction, what constitutes a public figure and the recent developments on the right to
privacy of public figures in foreign jurisdictions.
Right to Privacy
The right to privacy is the “general right to be left alone and to define one’s circle of
intimacy; to shield intimate and personal characteristics and activities from public gaze.” 113 It
is an individual’s right to have his private affairs, which are not of legitimate public concern,
free from unwarranted publication.114
In the Philippines, the 1987 Constitution provides no explicit mention of the right of
privacy, but certain penumbras in the Bill of Rights have allowed for such a right to be
implied by the Supreme Court. In Ople v Torres,115 the Supreme Court presented the
constitutional provisions that recognize the right of privacy, stating that such is expressly
recognized in section 3 (1) of the Bill of Rights: “The privacy of communication and
113
Galella v. Onassis, 353 F. Supp. 196 (S.D.N.Y. 1972), aff'd inpart, rev'd in part,487 F.2d 986 (2nd Cir. 1973)
(US).
114
Ayer, G.R. No. 82380, 82398.
115
Ople v. Torres, 293 SCRA 141, (1998).
34
correspondence shall be inviolable except upon lawful order of the court, or when public
safety or order requires otherwise as prescribed by law.” 116 It was also ruled that the right to
privacy is “accorded recognition independently of its identification with liberty; in itself, it is
fully deserving of constitutional protection.” 117 The Supreme Court also stated that various
provisions of the Bill of Rights also protect the other fronts of the right to privacy, to wit:
Sec. 1. No person shall be deprived of life, liberty, or property without due

process of law, nor shall any person be denied the equal protection of the
laws.
Sec.2. The right of the people to be secure in their persons, houses papers,
and effects against unreasonable searches and seizures of whatever nature
and for any purpose shall be inviolable, and no search warrant or warrant of
arrest shall issue except upon probable cause to be determined personally by
the judge after examination under oath or affirmation of the complainant
and the witnesses he may produce, and particularly describing the place to
be searched and the persons or things to be seized.
xxx xxx xxx
Sec. 6. The liberty of abode and of changing the same within the limits
prescribed by law shall not be impaired except upon lawful order of the
court. Neither shall the right to travel be impaired except in the interest of
national security, public safety, or public health as may be provided by law.
xxx xxx xxx
Sec. 8. The right of the people, including those employed in the public and
private sectors, to form unions, associations, or societies for purposes not
contrary to law shall not be abridged.
Sec. 17. No person shall be compelled to be a witness against himself.118
In fact, the presence of the right of privacy in the Philippines has been recognized as
early as 1968 in the case of Morfe v. Mutuc119 where the Supreme Court stated:
116
Ople, 293 SCRA at 156 citing PHIL. CONST. art. III § 3 (1).
117
Id citing Morfe v. Mutuc, 22 SCRA 424, 444 (1968).
118
Id at 156-157 citing PHIL. CONST. art. III § 1, 2, 6, 8, 17).
119
Morfe v. Mutuc, G.R. No. 22 SCRA 424, (1968).
35
The right to privacy as such is accorded recognition independently of its

identification with liberty; in itself, it is fully deserving of constitutional protection.
The language of Prof. Emerson is particularly apt: "The concept of limited
government has always included the idea that governmental powers stop short of
certain intrusions into the personal life of the citizen. This is indeed one of the basic
distinctions between absolute and limited government. Ultimate and pervasive
control of the individual, in all aspects of his life, is the hallmark of the absolute
state. In contrast, a system of limited government safeguards a private sector, which
belongs to the individual, firmly distinguishing it from the public sector, which the
state can control. Protection of this private sector — protection, in other words, of
the dignity and integrity of the individual — has become increasingly important as
modern society has developed. All the forces of a technological age —
industrialization, urbanization, and organization — operate to narrow the area of
privacy and facilitate intrusion into it. In modern terms, the capacity to maintain and
support this enclave of private life marks the difference between a democratic and a
totalitarian society."120
Zones of privacy are likewise recognized and protected in our laws. 121 Under the Civil
Code, invasion of privacy may also be a ground for torts that may produce a cause of action
for damages under Article 26 which states that “Every person shall respect the dignity,
personality, privacy and peace of mind of his neighbors and other persons.” 122 Article 32 of
the Civil Code also holds a public officer or employee or any private individual who directly
or indirectly obstructs, defeats, violates or in any manner impedes or impairs any of the
enumerated rights and liberties of another person shall be liable to the latter for damages. 123
Further, Article 723 recognizes the privacy of letters and other private communications.124
Penal sanctions may also be imposed upon violation of privacy as provided in the
Revised Penal Code. The Code criminalizes the revelation of secrets by an officer, 125 the
120
Id.
121
Ople, G.R. No. 293 SCRA at 157.
122
Id.
123
Id.
124
Id.
125
An Act Revising the Penal Code and Other Penal Laws [REVISED PENAL CODE], Act No. 3815, art. 229
(1932).
36
revelation of trade and industrial secrets,126 and trespass to dwelling. 127 The following special
penal laws also criminalizes violation of privacy: Anti-Wiretapping Law,128 the Secrecy of
Bank Deposits Act129 and the Intellectual Property Code.130 The Rules of Court on privileged
communication likewise recognize the privacy of certain information.131
Indeed, there is protection provided to the right to privacy by the Philippine laws and
jurisprudence. Therefore, there is strict scrutiny upon actions that may appear legitimate by a
worthy purpose, but which may impair this right.
Public Figure Doctrine in the Philippines
The entitlement of the right to privacy is not equal between private and public
individuals. In the Philippines, celebrities qualify as what has been called by courts as
“public figures”. In Ayer, the Supreme Court adopted the definition of a public figure in an
American textbook on torts. A public figure is someone who has become a public personage
due to his accomplishments, fame, mode of living or profession which gives the public a
legitimate interest in his doings.132 To quote,
A public figure has been defined as a person who, by his accomplishments,

fame, or mode of living, or by adopting a profession or calling which gives the
public a legitimate interest in his doings, his affairs, and his character, has
become a 'public personage.' He is, in other words, a celebrity. Obviously to be
126
REVISED PENAL CODE, art. 290-292.
127
REVISED PENAL CODE, art. 28.
128
An Act To Prohibit And Penalize Wire Tapping And Other Related Violations Of The Privacy Of
Communication, And For Other Purposes [Anti-Wire Tapping Law], Republic Act No. 4200, (1965).
129
An Act Prohibiting Disclosure Of Or Inquiry Into, Deposits With Any Banking Institution And Providing
Penalty Therefor [Secrecy of Bank Deposits Act], Republic Act No. 1405, (1955).
130
INTELLECTUAL PROPERTY CODE
131
Revised Rules on Evidence (Rules 128-134), Bar Matter No. 411, Section 24 Rule 130(C) (1989)
132
Ayer, 160 SCRA at 874.
37
included in this category are those who have achieved some degree of reputation by
appearing before the public, as in the case of an actor, a professional baseball player,
a pugilist, or any other entertainer. The list is, however, broader than this. It includes
public officers, famous inventors and explorers, war heroes and even ordinary
soldiers, an infant prodigy, and no less a personage than the Grand Exalted Ruler of a
lodge. It includes, in short, anyone who has arrived at a position where public
attention is focused upon him as a person.133 Emphasis supplied.
The Supreme Court in Guingguing v. Court of Appeals134 pointed out one prominent
American legal commentator, Cass Sunstein who explained that a person counts as a public
figure “1) if he is a “public official” in the sense that he works for the government, (2) if,
while not employed by government, he otherwise has pervasive fame or notoriety in the
community, or (3) if he has thrust himself into some particular controversy in order to
influence its resolution.”135 Celebrities may come under the second and third categories.
In connection with these, the Supreme Court in Ayer recognized set a limitation on
the right to privacy of public figures, which has now been coined as the public figure
doctrine, to wit:
[a] limited intrusion into a person’s privacy [is] permissible where that person is
a public figure and the information sought to be elicited from him or to be
published about him constitute matters of a public character ...[as] [t]he interest
sought to be protected by the right of privacy is the right to be free from
“unwarranted publicity, from the wrongful publicizing of the private affairs and
activities of an individual which are outside the realm of legitimate public concern.
xxx
Such public figures were held to have lost, to some extent at least, their right to
privacy. Three reasons were given, more or less indiscriminately, in the decisions
that they had sought publicity and consented to it, and so could not complaint when
they received it; that their personalities and their affairs has already public, and could
no longer be regarded as their own private business; and that the press had a
privilege, under the Constitution, to inform the public about those who have become
legitimate matters of public interest. On one or another of these grounds, and
133
Id.
134
Guingguing v. Court of Appeals, 471 SCRA 196, (2005) citing Cass Sunstein, Democracy and the Problem
of Free Speech 9-10 (1995 ed.).
135
Id.
38
sometimes all, it was held that there was no liability when they were given additional
publicity, as to matters legitimately within the scope of the public interest they had
aroused.136
Right to Privacy of Public Figures in Foreign Jurisdictions
Although getting much publicity and an intrusion into their privacy is somehow
expected in the lives of celebrities and other public figure as it comes with the territory of
fame and notoriety, as is implied from the established public figure doctrine, there are still
many public figures who file suits questioning the limits and extent of their right to privacy.
In the US, a notable case of a celebrity successfully restricting the techniques of the
paparazzi through the use of the United States legal system was Galella v Onasis.137 In this
case, an action against Ron Galella was brought by Jacqueline Kennedy Onassis for the
former’s continuous surveillance and intrusion into the lives of the latter and her children. 138
In ruling in favor of Onassis, the court developed the rule that interference by the press in the
privacy of the individual can "be no greater than necessary to protect the overriding public
interest."139 Nordhaus states that the rule stated in Galella can be broken down into a three-
part balancing test that considers the propriety of granting an injunction against the obtrusive
presence of the press.140 First, the court should consider the legitimate public interest in the
information sought.141 Second, the court should consider the individual's right to be let alone-
136
Ayer, G.R. No. 82380, 82398.
137
Galella, 487 F.2d 986.
138
Id.
139
Id.
140
Jamie E. Nordhaus, Celebrities' Rights to Privacy: How Far Should the Paparazzi be Allowed to Go, 18
REV. LITIG. 285 (1999) citing Id at 310-311.
141
Id.
39
the right of privacy.142 Finally, the court should consider the likelihood of continued
surveillance absent court intervention.143 In this case, the court stated that the need to know
the daily habits of Onassis and her family was not essential to the public’s well-being. Also,
Galella’s constant presence and aggressive techniques interfered with the family’s daily
activities and were endangering them. Finally, it was without question that Galella intended
to continue his pursuit of Onassis which is evidenced by Onassis later filing a suit to enforce
the injunction against Galella's continued violations.
In Europe, one of the prominent cases concerning the privacy of a public person was
the case of Von Hannover v. Germany (No 2).144 From 1993 to 1997, Princess Caroline Von
Hannover, the eldest daughter of Prince Rainier III of Monaco, filed three proceedings in the
Hamburg Regional Court to prevent the republication of three series of photographs which
had been published in various magazines published by two German media companies. The
said photographs were taken without her knowledge and depicted Caroline horseback riding,
having a private dinner with her children or acquaintances, shopping and doing sports.
According to the German courts, Caroline had to accept the consequences of being a part of
the royal family because she was a figure of contemporary society par excellence and a
daughter of a monarch.
Caroline submitted this case to the European Court of Human Rights (ECHR) where
she claimed that the German law infringed on her right to respect for her private and family
life guaranteed by Article 8 of the European Convention. The ECHR ruled that the German
142
Id.
143
Id.
144
Von Hannover v. Germany (no. 2), no. 40660/08, ECHR (2012) (EU).
40
courts had breached the law as Caroline had not been awarded a sufficient level of protection
to the right of privacy, which is guaranteed to every person. They stated the need for an
examination of the fair balance that has to be struck between the applicants’ right to respect
for their private life and the right of the publishing company to freedom of expression
guaranteed under Article 10 of the Convention. In light of these factors, the ECHR derived
five criteria for balancing private life and freedom of expression in its landmark decision:
1. There needs to be consideration of the degree to which the publication (be it a photo
or an article) contributes to a debate of general interest, which is to be judged on a
case-by-case basis.
2. The status of the person concerned as a private individual or a public figure is also
determinative, since reporting on details of the lives of private individuals is less
likely to contribute to “a debate in a democratic society,” and thus, the press’ role as a
“public watchdog” also diminishes in this case. Even though in certain cases the
public has the right to be informed of “aspects of the private life of public figures,”
the reason for this must be more than mere “public curiosity.”
3. Prior conduct of the person with the press needs to be taken into account.
4. The way of publication of the photo or report as well as the manner of representation
of the person concerned need to form part of the consideration.
5. Whether the photo was taken with the consent of the persons concerned or was done
“without their knowledge or by subterfuge or other illicit means” is to be weighed.

41
The Court reiterated that, in certain circumstances, even where a person is known to
the general public, he or she may rely on a “legitimate expectation” of protection of and
respect for his or her private life. The ECHR further ruled that the publication of a photo may
thus intrude upon a person’s private life even where that person is a public figure. Regarding
photos, citing Reklos and Davourlis v. Greece,145 the Court stated that a person’s image
constitutes one of the chief attributes of his or her personality, as it reveals the person’s
unique characteristics and distinguishes the person from his or her peers. The right to the
protection of one’s image is thus one of the essential components of personal development. It
mainly presupposes the individual’s right to control the use of that image, including the right
to refuse publication thereof and the individual’s right to object to the recording,
conservation and reproduction of the image by another person. As a person’s image is one of
the characteristics attached to his or her personality, its effective protection presupposes
obtaining the consent of the person concerned at the time the picture is taken and not simply
if and when it is published. Otherwise an essential attribute of personality would be retained
in the hands of a third party and the person concerned would have no control over any
subsequent use of the image.
In Campmany Y Diez De Revenga and Lopez-Galiacho Perona v. Spain, 146 the Court
also ruled that the publication of articles and photographs concentrated on the purely private
aspects of the life of those concerned and even though those persons were known to the
public, the reports in issue cannot be regarded as having contributed to a debate on a matter
of general interest to society.

145
Reklos and Davourlis v. Greece, no. 1234/05, (2009) (EU).
146
Campmany Y Diez De Revenga and Lopez-Galiacho Perona v. Spain, no. 54224/00, ECHR (2000) (EU).
42
The right to privacy is the “general right to be left alone”. Although there is no
explicit mention of the right to privacy in the Philippine Constitution, the Supreme Court
recognized it as a constitutional right because it is found in certain penumbras in the Bill of
Rights and is also found in several zones of privacy within different laws including among
others the Civil Code and the Revised Penal Code. The entitlement of the right to privacy is
not equal between private and public individuals. In the Philippines, celebrities qualify as
‘public figures’ within the definition adopted by the Supreme Court. As such, the Public
Figure Doctrine which states that “a limited intrusion into a person’s privacy is permissible
where that person is a public figure and the information sought to be elicited from him or to
be published about him constitute matters of a public character” is applicable to them.
However, the limits and extent of the Public Figure Doctrine has been tested in courts in
different countries. A notable case is that in Europe wherein the right to privacy of public
figures and the freedom of expression of the press have been balanced and resulted in the
Van Hannover criteria.

43
CHAPTER FIVE
RIGHT OF PUBLICITY OF PUBLIC FIGURES
In the last chapter, right to privacy, one of the rights that conflict with copyright laws
in cases of copyright trolling was discussed. In this chapter, another right that is also in
conflict with copyright laws will be thoroughly discussed. In order to establish the conflict
between copyright laws and the right of publicity, the latter shall be explained below, its
history and its presence in the Philippines.
A. Origin, Evolution and Development of the Right of Publicity in the US
The right of publicity is the right of an individual to prevent others from using his
name, likeness, photograph or image for commercial purposes without obtaining consent. 147
In other words, it prohibits the unauthorized use of elements or indicia that uniquely identify
a person.148 Most of the time, it is characterized as the right to control and profit from the
value of one's own identity or persona.149 The extent of the interest in a celebrity’s public
persona encompasses the "natural copyright" interest in their physical appearance and the
fictitious persona that they may have developed. 150 Therefore, the issue of the right of
publicity is not whether the individual has been unfairly exposed to public view, but rather
147
Stacy Allen, Emilio B. Nicolas & Megan Honey, Non Human Persons and the Right of Publicity, available
at https://www.jw.com/wp-content/uploads/2019/08/1185.pdf (last accessed Aug. 5, 2021).
148
Id.
149
Nordhaus, supra note 140, at 304.
150
Id.
44
who will profit from the sale. 151 “When a celebrity is involved, the value of that sale can be
quite substantial. If celebrities' rights are not protected, their private and commercial lives are
effectively forced into the public domain, and they lose the right to exercise control over who
profits from the use of their persona.”152
Right of Publicity: Rooted from Right of Privacy
“The principal historical antecedent of the right of publicity is the right of privacy.” 153
The right of publicity is commonly regarded as protection to "injuries to the pocketbook",
whilst the right of privacy protects "injuries to the psyche". 154 The concept of 'right to
privacy' was introduced for the first time by Warren and Brandeis in their essay entitled
“Right to Privacy” which legal scholars hail to be the foundation of privacy law especially in
the U.S.155 In the said essay, privacy was defined as 'right to be let alone', a phrase adopted
from JUDGE COOLEY's famous treatise on torts in 1880.156
Over the next seven decades, William Prosser laid out the four torts that encompassed
the right of privacy: "unreasonable intrusions upon another's seclusion, public disclosure of
private facts, publicity placing another in a false light, and the appropriation for the
151
Id.
152
Id at 304-305 citing D. Scott Gurney, Note, Celebrities and the First Amendment: Broader
Protection Against the UnauthorizedPublicationofPhotographs,61 IND. L.J. 697, 709 (1985/1986).
153
Daniel Gervais & Martin L. Holmes, Fame, Property, and Identity: The Scope and Purpose of the Right of
Publicity, 25 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 181 (2014) citing RESTATEMENT (THIRD)
OF UNFAIR COMPETITION § 46 cmt. b (1995).
154
Arvin Kristopher A. Razon, The Celebrity's Right to Autonomous Self-Definition and False Endorsements:
Arguing the Case for a Right of Publicity in the Philippines, 26 CANTERBURY L. REV. 65, 72 (2020).
155
Budhiraja, supra note 30 at 90.
156
Id.
45
defendant's advantage of the plaintiff's name or likeness." 157 The modern day right of
publicity grew out of Prosser's appropriation tort.158
The need for a cause of action that would protect the right of individuals to control
publicity about themselves drove the adoption by courts in the United States of the right to
privacy.159 However, the privacy roots of the early identity appropriation claim had several
implications for celebrities, to wit:
1. The mere publication of their photographs or images was typically not viewed by
courts as an invasion of any privacy interest, because the celebrities had actively
sought out their fame and could not be offended by its furtherance.
2. Second, while a celebrity could sometimes prevail on a theory that the defendant had
falsely suggested her endorsement of its product, courts generally held that the mere
use of the celebrity's image, even in advertising, did not suggest such endorsement.
3. Third, even when celebrities prevailed in privacy cases, their damages were limited
to the personal injury that they suffered, rather than the economic value that the use
brought to the advertiser.
4. Since the right of privacy was a personal right, it ran with the person and could not
be transferred or survive the death of the celebrity.39 These limitations led
celebrities and their advocates to push for a different, more economically oriented
right in their personas.160
Therefore, in 1953, Judge Jerome Frank of the United States Court of Appeals for the
Second Circuit in New York explicitly recognized for the first time the right of publicity in
Haelan Laboratories Inc. v. Topps Chewing Gum, Inc.161 In the said case, the court ruled:
157
Gervais & Holmes, supra note 153 at 186 citing RESTATEMENT (THIRD) OF UNFAIR COMPETITION
§ 46 (1995). See William Prosser, Priva, 48 CALIF. L. REV. 383, 389 (1960).
158
Id citing 1J. THOMAS MCCARTHY, RIGHTS OF PUBLICITY AND PRIVACY § 1:25 (2d ed. 2014).
159
Kateryna Moskalenko, The Right of Publicity in the USA, the EU, and Ukraine, 1 International Comparative
Jurisprudence 113 at 240 (2015).
160
Stacey L. Dogan & Mark A. Lemley, What the Right of Publicity Can Learn from Trademark Law, 58 Stan.
L. REV. 1161 (2006) citing O'Brien v. Pabst Sales Co., 124 F.2d 167, 170 (5th Cir. 1941); Smith v. Suratt, 7
Alaska 416, 423 (1926); Corliss, 64 F. at 282; Lane v. F.W. Woolworth Co., 11 N.Y.S.2d 199, 200 (Sup. Ct.
1939); Hanna Mfg. Co. v. Hillerich & Bradsby Co., 78 F.2d 763 (5th Cir. 1935); Martin v. F.I.Y. Theatre Co., 1
Ohio Supp. 19, 23 (Com. Pl. 1938); Cf Pavesich, 50 S.E. at 73; Melvin v. Reid, 297 P. 91, 93 (Cal. App. 1931);
Atkinson v. Doherty & Co., 80 N.W. 285 (Mich. 1899); Schuyler v. Curtis, 42 N.E. 22, 25 (N.Y. 1895).
161
Howard I. Berkman, The Right of Publicity--Protection for Public Figures and Celebrities, 42 BROOK. L.
REV. 527 (1976) citing 202 F.2d 866 (2d Cir.), cert. denied, 346 U.S. 816 (1953).
46
[i]n addition to and independent of that right of privacy....a man has a right in the
publicity value of his photograph, i.e., the right to grant the exclusive privilege of
publishing his picture, and that such a grant may validly be made "in gross," i.e.,
without an accompanying transfer of a business or of anything else.162
Judge Frank coined this right to be "right of publicity" and stated the practical
necessity for its existence:
[I]t is common knowledge that many prominent persons (especially actors and ball-
players), far from having their feelings bruised through public exposure of their
likenesses, would feel sorely deprived if they no longer received money for
authorizing advertisements, popularizing their countenances, displayed in
newspapers, magazines, busses, trains and subways. This right of publicity would
usually yield them no money unless it could be made the subject of an exclusive
grant which barred any other advertiser from using their pictures.163
This ruling recognized that the distinguishing factor of the right of publicity, as opposed to
the right of privacy, is the pecuniary interest protected by it. 164 Haelan Laboratories Inc.
served as a foundation for later cases in which the right of a public figure in the use of his or
her name or likeness was deemed worthy of protection as a property.165 Other states followed
the lead of New York and Judge Frank, recognizing a similar right in the common law or
statutorily. Today, at least thirty-one states recognize the right of publicity in some form.166
Right of Publicity: Placement in the Intellectual Property Law
162
Id.
163
Id.
164
Id.
165
Id.
166
Gervais & Holmes, supra note 153 at 188.
47
The decision made in the 1977 case of Zacchini v Scripps-Howard Broadcasting167 is
considered to have "cemented the right of publicity's break from the right of privacy and its
placement into the intellectual property framework".168
In this case, Zacchini’s 15-second "human cannonball" act, in which he is shot from a
cannon into a net some 200 feet away, was, without his consent, videotaped in its entirety at a
county fair in Ohio by a reporter for respondent broadcasting company and shown on a
television news program later the same day.169 Zacchini then brought a damages action in
state court against respondent, alleging an "unlawful appropriation" of his "professional
property."170 The trial court's summary judgment for respondent was reversed by the Ohio
Court of Appeals on the ground that the complaint stated a cause of action. 171 The Ohio
Supreme Court, while recognizing that petitioner had a cause of action under state law on his
"right to the publicity value of his performance," nevertheless, relying on Time, Inc. v. Hill,
385 U. S. 374, rendered judgment for respondent on the ground that it is constitutionally
privileged to include in its newscasts matters of public interest that would otherwise be
protected by the right of publicity, absent an intent to injure or to appropriate for some
nonprivileged purpose.172
The Supreme Court of the United States in this case turned the right of publicity into
a form of intellectual property, under a distinct moniker, establishing the right of publicity
with a particular view that at that time had not yet been widely considered: that the "State's
167
Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977) (U.S.).
168
Razon, supra note 154 at 83 citing id.
169
Zacchini, 433 U.S. 562.
170
Id.
171
Id.
172
Id.
48
interest in permitting a right of publicity is in protecting the proprietary interest of the
individual in his act in part to encourage such entertainment". 173 The Court explicitly
analogized the right of publicity to patent and copyright laws, and imported the justifications
used for these IP laws, particularly the incentive rationale and the labor-reward rubric, to
justify the state law.174 Instead of focusing on the mental distress that Zacchini might have
suffered, the Court considered the State's interest as analogous to patent and copyright law,
focusing on Zacchini's right to reap the rewards from his economic endeavors. 175 In this
context and, as applied in succeeding cases, the independent right of publicity assures that the
commercial exploitation of an individual's fame properly belongs to the famous individual
concerned.176
The marked shift of the publicity right from its roots in privacy torts to an intellectual
property right can be attributed to the American veneration of intellectual property to foster
innovation and enterprise, extending this idea to the commercialization of a celebrity's
personal attributes.177 The said shift justified a far more expansive right -- one that could
survive death, that was broader in scope, encompassing even the mere evocation of a
person’s identity, and that started from a presumption that uses should be paid for.178
Right of Publicity: A Common Law and Civil Law Concept
173
Jennifer E. Rothman, The Right of Publicity's Intellectual Property Turn, 42 COLUM. J.L. & Arts 277
(2019) citing id.
174
Id.
175
Id.
176
Id.
177
Id.
178
id.
49
After years of development as can be gleaned from the above laid history of right of
publicity, in the United States today, the right of publicity has now become both a civil law
and common law concept. To this end, the 1992 case of White v Samsung Electronics
America, Inc.179 is instructive.180 In this case, the plaintiff Vanna White is the hostess of
"Wheel of Fortune," one of the most popular game shows in television history. 181 The dispute
in this case arose out of a series of advertisements prepared for Samsung by Deutsch. 182 The
advertisement which prompted the current dispute was for Samsung videocassette recorders
(VCRs).183 The ad depicted a robot, dressed in a wig, gown, and jewelry which Deutsch
consciously selected to resemble White's hair and dress.184 Unlike the other celebrities used in
the campaign, White neither consented to the ads nor was she paid. 185 So, White sued
Samsung and Deutsch in federal district court for infringement of various intellectual
property rights under: (1) California Civil Code § 3344; (2) the California common law right
of publicity; and (3) § 43(a) of the Lanham Act.186
As to White’s first basis, Section 3344(a) of the California Civil Code provides, in
pertinent part, that "[a]ny person who knowingly uses another's name, voice, signature,
photograph, or likeness, in any manner, ... for purposes of advertising or selling, ... without
such person's prior consent ... shall be liable for any damages sustained by the person or
persons injured as a result thereof." In this case, Samsung and Deutsch used a robot with
179
White v Samsung Electronics America, Inc., 971 F.2d 1395, 1396 (9th Cir. 1992) (US).
180
Lolibeth R. Medrano & John Paulo S. Vicencio, Under the Shadows of Trademark: The Current State of
Publicity Rights in the Philippines, 63 ATENEO L.J. 751, 760 (2019).
181
White, 971 F.2d
182
Id.
183
Id.
184
Id.
185
Id.
186
Id.
50
mechanical features, and not, for example, a manikin molded to White's precise features. 187
Without deciding for all purposes when a caricature or impressionistic resemblance might
become a "likeness," the court agreed with the district court that the robot at issue here was
not White's "likeness" within the meaning of section 3344. 188 Accordingly, White's claim
under Section 3344(a) of the California Civil Code was dismissed.189
As to White’s second basis, the court cited the case of Eastwood v. Superior Court,
where the California court of appeal stated that the common law right of publicity cause of
action "may be pleaded by alleging (1) the defendant's use of the plaintiff's identity; (2) the
appropriation of plaintiff's name or likeness to defendant's advantage, commercially or
otherwise; (3) lack of consent; and (4) resulting injury."190 The court in Eastwood did not
hold that the right of publicity cause of action could be pleaded only by alleging an
appropriation of name or likeness.191 That court held only that the right of publicity cause of
action "may be" pleaded by alleging, inter alia, appropriation of name or likeness, not that the
action may be pleaded only in those terms.192 In Prosser, the court recognized that right of
publicity cases involved one of two basic factual scenarios: name appropriation, and picture
or other likeness appropriation. Since Prosser's early formulation, the case law has borne out
his insight that the right of publicity is not limited to the appropriation of name or likeness. 193
The specific means of appropriation are relevant only for determining whether the defendant
187
Id.
188
Id.
189
Id.
190
Id.
191
Id.
192
Id.
193
Id.
51
has in fact appropriated the plaintiff's identity. 194 The right of publicity does not require that
appropriations of identity be accomplished through particular means to be actionable.195
Although the defendants in these cases avoided the most obvious means of
appropriating the plaintiffs' identities, each of their actions directly implicated the
commercial interests which the right of publicity is designed to protect. 196 Viewed separately,
the individual aspects of the advertisement in the present case say little but viewed together,
they leave little doubt about the celebrity the ad is meant to depict. 197 The female-shaped
robot is wearing a long gown, blond wig, and large jewelry. 198 Vanna White dresses exactly
like this at times, but so do many other women. 199 The robot is in the process of turning a
block letter on a game-board.200 Vanna White dresses like this while turning letters on a
game-board but perhaps similarly attired Scrabble-playing women do this as well. 201 The
robot is standing on what looks to be the Wheel of Fortune game show set. Vanna White
dresses like this, turns letters, and does this on the Wheel of Fortune game show. 202 She is the
only one. Indeed, defendants themselves referred to their ad as the "Vanna White" ad.
Because White has alleged facts showing that Samsung and Deutsch had appropriated her
identity, the district court erred by rejecting, on summary judgment, White's common law
right of publicity claim.203
194
Id,
195
Id.
196
Id.
197
Id.
198
Id.
199
Id.
200
Id.
201
Id.
202
Id.
203
Id.
52
As to White’s third basis, Section 43(a) of the Lanham Act is applicable to this case
which provides, in pertinent part, that “[a]ny person who shall ... use, in connection with any
goods or services ... any false description or representation ... shall be liable to a civil action
… by any person who believes that he is or is likely to be damaged by the use of any such
false description or designation.”204 To prevail on her Lanham Act claim, White is required to
show that in running the robot ad, Samsung and Deutsch created a likelihood of confusion
over whether White was endorsing Samsung's VCRs. In the case of AMF, Inc. v Sleekcraft,
the factors relevant to a likelihood of confusion include: 1) strength of the plaintiff's mark; 2)
relatedness of the goods; 3) similarity of the marks; 4) evidence of actual confusion; 5)
marketing channels used; 6) likely degree of purchaser care; 7) defendant's intent in selecting
the mark; and 8) likelihood of expansion of the product lines. 205
After measuring White’s claims under each of the factors stated above, the court ruled
that White has raised a genuine issue of material fact concerning a likelihood of confusion as
to her endorsement.206 However, whether White's Lanham Act claim should succeed is a
matter for the jury.207
The above case is only one among a plethora of publicity-related cases in US
jurisprudence.208 This case illustrates the fact that if a publicity right of a plaintiff is violated,
several causes of action are available to him or her. In the US, the plaintiff can file for
infringement of various intellectual property rights and the legal action/s can be based on
204
Id.
205
Id.
206
Id.
207
Id.
208
Medrano & Vicencio, supra note 180, at 762-763.
53
Section 3344 of the California Civil Code, the California common law right of publicity, or
Section 43(a) of the Lanham Act.209
B. Right of Publicity in the Philippines
There is no law in the Philippines explicitly recognizing the right of publicity. The
development of privacy law, consumer law and intellectual property law in the Philippines
has left out any explicit reference to a right of publicity. However, several legal scholars
contend that indeed the right of privacy is present and recognized in the Philippines.
Medrano & Vicencio in their article “Under the Shadows of Trademark: The Current
State of Publicity Rights in the Philippines” 210 stated that it is safe to conclude that the right
of publicity exists in the country because of the direct recognition of the courts, through their
constant correlation of the right of publicity to the laws and jurisprudence of the U.S. from
which Philippine I.P. laws were adopted.211 Further, it has already been invoked by select
celebrities and institutions to protect their name, image, and likeness from commercial
appropriation without their consent and permission.212 To illustrate, Medrano & Vicencio
cited the case of Fredco Manufacturing Corporation v President and Fellows of Harvard
College (Harvard University).213
209
Id.
210
Id.
211
Id at 775.
212
Id.
213
Fredco Manufacturing Corp. v. President and Fellows of Harvard College, 650 SCRA 232, (2011).
54
In the said case, Fredco Manufacturing Corporation (Fredco) filed before the Bureau
of Legal Affairs (BLA) of the Philippine Intellectual Property Office a Petition for
Cancellation of the Registration issued to Harvard University for the mark “Harvard Veritas
Shield Symbol”. Fredco claimed that Harvard University had no right to register the mark
since its Philippine registration was based on a foreign registration thus, Harvard University
could not have been considered as a prior adopter and user of the mark in the Philippines. 214
Fredco explained that the mark was first used in the Philippines by its predecessor-in-interest
New York Garments as early as 1982, and a certificate of registration was issued in 1988 for
goods.215 Although the registration was cancelled for the non-filing of an affidavit of use, the
fact remained that the registration preceded Harvard University’s use of the subject mark in
the Philippines.216 Harvard University, on the other hand claimed that the name and mark
“Harvard” was adopted in 1639 as the name of Harvard College of Cambridge,
Massachusetts, USA. The marks “Harvard” and “Harvard Veritas Shield Symbol,” had been
used in commerce since 1872, and was registered in more than 50 countries. 217
The BLA ruled in favor of Fredco and ordered the cancellation of Registration No.
56561.218 It found Fredco to be the prior user and adopter of the mark “Harvard” in the
Philippines.219 On appeal, the Office of the Director General of the Intellectual Property
Office reversed the BLA ruling on the ground that more than the use of the trademark in the
Philippines, the applicant must be the owner of the mark sought to be registered. 220 Fredco,
214
Fredco, 650 SCRA at 235.
215
216
Id.
217
218
219
Id.
220
Id.
55
not being the owner of the mark, had no right to register it. The Court Appeals affirmed the
decision of the Office of the Director General.221 Fredco appealed the decision with the
Supreme Court. In its appeal, Fredco insisted that the date of actual use in the Philippines
should prevail on the issue of who had a better right to the mark.222
The Supreme Court in this case ruled in favor of Harvard University stating that
under Philippine law, a trade name of a national of a State that is a party to the Paris
Convention, whether or not the trade name forms part of a trademark, is protected “without
the obligation of filing or registration.”223 “Harvard” is the trade name of the world famous
Harvard University, and it is also a trademark of Harvard University. 224 Under Article 8 of
the Paris Convention, as well as Section 37 of R.A. No. 166, Harvard University is entitled to
protection in the Philippines of its trade name “Harvard” even without registration of such
trade name in the Philippines.225
More significant to the topic of this thesis is the ruling of the Supreme Court
recognizing the existence of the right of publicity in the Philippines, to wit:
Section 4 (a) of R.A. No. 166 is identical to Section 2 (a) of the Lanham Act, the
trademark law of the United States. These provisions are intended to protect the
right of publicity of famous individuals and institutions from commercial
exploitation of their goodwill by others. What Fredco has done in using the mark
"Harvard" and the words "Cambridge, Massachusetts," "USA" to evoke a "desirable
aura" to its products is precisely to exploit commercially the goodwill of Harvard
University without the latter's consent. This is a clear violation of Section 4 (a) of
R.A. No. 166. Under Section 17 (c) 22 of R.A. No. 166, such violation is a ground
for cancellation of Fredco's registration of the mark "Harvard" because the
registration was obtained in violation of Section 4 of R.A. No. 166. 226 Emphasis
supplied.
221
Id.
222
Id.
223
224
Id.
225
Id.
226
56
Section 4(a) of R.A. No. 166 has since been amended by Section 123 of the
Intellectual Property Code which is only a verbatim reproduction of the older law.
Comparing the aforesaid laws under the Lanham Act and the Intellectual Property Code
would show that the Philippine law is an exact copy of the US Law:
Lanham Act Intellectual Property Code
15 U.S. Code § 1125 Sec. 169. False Designations of Origin;
(a) Civil action False Description or Representation. -
(1) Any person who, on or in connection 169.1. Any person who, on or in
with any goods or services, or any container connection with any goods or services, or
for goods, uses in commerce any word, term, any container for goods, uses in
name, symbol, or device, or any combination commerce any word, term, name,
thereof, or any false designation of origin, symbol, or device, or any combination
false or misleading description of fact, or thereof, or any false designation of origin,
false or misleading representation of fact, false or misleading description of fact, or
which— false or misleading representation of fact,
which:
(A) is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation, (a) is likely to cause confusion, or to
connection, or association of such person cause mistake, or to deceive as to the

57
with another person, or as to the origin, affiliation, connection, or association of
sponsorship, or approval of his or her goods, such person with another person, or as to
services, or commercial activities by another the origin, sponsorship, or approval of his
person, or or her goods, services, or commercial
activities by another person; or
(B) in commercial advertising or promotion,
misrepresents the nature, characteristics, (b) in commercial advertising or
qualities, or geographic origin of his or her promotion, misrepresents the nature,
or another person’s goods, services, or characteristics, qualities, or geographic
commercial activities, shall be liable in a origin of his or her or another person’s
civil action by any person who believes that goods, services, or commercial activities,
he or she is or is likely to be damaged by shall be liable to a civil action for
such act. damages and injunction provided in
Sections 156 and 157 of this Act by any
x x x x227 person who believes that he or she is or
likely to be damaged by such act.
xxxx228
(Sec. 30, R. A. No. 166a)229
227
Lanham Act, 15 U.S.C. § 1125 (1946).
228
INTELLECTUAL PROPERTY CODE, §169.1.
229
58
Furthermore, Medrano & Vicencio concluded that between the intellectual property
rights of copyright and trademark in the Philippines, the right of publicity has more in
common with the latter.230 They said that the nature and purpose of the right of publicity is
more in line with the nature and objectives of trademark, as opposed to copyright, because
both encompass a certain level of legal protection over the name, image, likeness or mark of
an individual or an institution from unauthorized use and exploitation by third persons.231
They further stated that “In the realm of publicity rights therefore, public figures can be
considered as “brands” in trademark in a way that they embody certain ideals and standards
such that unauthorized use of their names or pictures can affect the way the public perceives
goods, services and themselves.”232
Razon, in his paper entitled “The Celebrity's Right to Autonomous Self-Definition
and False Endorsements: Arguing the Case for a Right of Publicity in the Philippines” argues
that Philippine law offers its own version of the right of publicity: one that may be developed
from privacy tort and intellectual property law.233
As to the Philippines’ version of right of publicity developed from privacy tort, Razon
states that there is an opportunity to argue in the Philippine context that the right to privacy
can protect against false endorsements involving celebrities by going back to the original
conceptualization of privacy that protects all persons without distinguishing whether that
person is a celebrity or actively courts publicity in other ways, and by emphasizing the
230
Medrano & Vicencio, supra note 180, at 771.
231
Id at 772.
232
Id at 774.
233
Razon, supra note 154 at 66.
59
relationship between privacy, liberty and autonomous self-definition, contrary to the various
paths.234
Further, Razon avers that privacy torts may not be the Filipino celebrity's only
remedy in cases of false endorsements, as in other jurisdictions, unfair competition laws are
also a source of remedy.235 In the US, the “"so-called right of publicity is often protected by
less controversial doctrines of false endorsement and unfair competition".236 Razon states that
because of such observation, another remedy a celebrity may avail of to protect his or her
property right in false endorsement cases is unfair competition. He notes the verbatim
identity between Sec. 43(a) of the Lanham Act in the US and Sec. 169.1 of the Intellectual
Property Code in the Philippines. Although the Philippine Supreme Court has not applied Sec
169.1 of the Intellectual Property Code in the context of false endorsement, Razon notes, this
has already reached the Philippine Court of Appeals and has considered a passing off claim
in the context of a false endorsement in the case of Andres Sanchez v Honorable Judge
Ramon Paul Hernando.237 In this case, world-renowned Filipino boxer Emmanuel Pacquiao
initiated a criminal suit for violation of Section 169.1 of the Intellectual Property Code of the
Philippines.238
Pacquiao claimed that two entities, G2K Corporation owned by the petitioners,
publicly misrepresented and unlawfully used his name, image and goodwill without his prior
permission, with the intention of conveying his personal endorsement of the entities’ product
234
Id at 82-83
235
Id.
236
Id at 86-87.
237
Andres Sanchez v. Hon. Ramon Paul L. Hernando, Emmanuel Pacquiao, et al., G.R. S.P. No. 104070, July
7, 2009, available at http://services.ca.judiciary.gov.ph (The case may be downloaded from the Court of
Appeals Case Status Inquiry System) (last accessed Aug. 16, 2021).
238
Id.
60
called the ‘Wow Magic Sing microphone’. G2K and IAJ purchased 3,125 copies of
Pacquiao’s CD album with the plan of giving Pacquiao’s CD album free to customers who
would buy a Wow Magic Sing package as part of its promotion. The trial court denied the
move of Sanchez to quash the case and ruled:
In this Court’s fair and objective opinion, the image rights that pertain to a public
figure are protected in Sec. 169.1 of the Intellectual Property Code. In the United
States of America, the so-called ‘right of publicity’ has been recognized as early as
1953. Under this concept, the utilization of a private person’s name or likeness in
order to advertise a commercial product would be a ground for the issuance of an
injunction and the award of appropriate damages for the invasion of the private
person’s right to be let alone. This resulted in the passage of the Lanham Act
adverted to by the private complainant. Sec. 169.1 of the Intellectual Property
Code mirrors this Lanham Act and thus, as aptly noted by the prosecution,
should apply in our jurisdiction on the basis of the statutory construction
principle of ‘adopted statutes.’ In this light then, the facts charged in the Amended
Information sufficiently allege the offense of violation of Sec. 169.1 of the
Intellectual Property Code.239 Emphasis supplied.
Furthermore, the registration of Pacquiao’s ‘image rights’ as a trademark is not
mandatory as claimed by Sanchez, since Pacquiao is a high-profile celebrity. As his name is
at stake, he has a right to be protected from any unauthorized product endorsement which
would falsely imply that he endorsed or approved certain goods and services.
Among other grounds, the petitioners contended that the trial court gravely abused its
discretion in finding that the private respondent possesses ‘image rights’ which are entitled to
protection under the law on trademarks. The Court of Appeals affirmed the said ruling and
stated that there was no grave abuse of discretion on the part of the trial court.
239
Id citing Joyce, C., Patry, W., Leaffer, M., Jaszi, P., Copyright Law, 5 th Edition, at 12-13.
61
However, there has been no update on the progress of the case nor on whether the
false endorsement claim under Sec. 169.1 of the IP Code succeeded. 240 But still, despite the
non-precedential nature of its ruling, it provides a glimpse into the national appellate court's
tolerance for recognizing the existence of this right.241
To reiterate, the right of publicity is the right of an individual to prevent others from
using his name, likeness, photograph or image for commercial purposes without obtaining
consent.242 It has its roots from the right of privacy and has evolved to have found itself in the
intellectual property law. Today, it is both a civil law and common law concept in the US. In
the Philippines, the right of publicity has been recognized by the courts and it has been
theorized by legal scholars that it may be found in our intellectual property laws and privacy
laws as well. The right of publicity gives individuals the opportunity to obtain financial
rewards for fame and encourages creative efforts in the pursuit of fame. 243 This is achieved
by granting the individual the right to prevent others from using his name, likeness,
photograph or image for commercial purposes without obtaining consent. 244
240
Razon, supra note 154 at 87.
241
Id.
242
Allen, Nicolas & Honey, supra note 164.
243
Id.
244
Id.
62
CHAPTER SIX
RELEVANT PRINCIPLES IN COPYRIGHT
In the last three chapters, the concepts of copyright, right to privacy of public figures
and right of publicity have already been discussed in order to establish the conflict between
them later in the analysis. In this chapter, the principles that will be used to address the
emerging conflict between these aforesaid rights will be discussed thoroughly.
A. Who owns the copyright
In the case of original literary and artistic works, copyright shall belong to the author
of the work.245 The author of a work is the natural person who has created the work. 246 As can
be gleaned from the definition of an author under the Intellectual Property Code, the law does
not specify what is necessary to be considered to have “created” the work.
There may be more than one author, and such will result in joint authorship. In the
Philippines, the governing law for joint authorship is found in the Intellectual Property Code,
to wit:
178.2. In the case of works of joint authorship, the co-authors shall be the original
owners of the copyright and in the absence of agreement, their rights shall be
governed by the rules on co-ownership. If, however, a work of joint authorship
consists of parts that can be used separately and the author of each part can be
identified, the author of each part shall be the original owner of the copyright in the
part that he has created;247
245
INTELLECTUAL PROPERTY CODE, §178.1.
246
247
f, §178.2
63
However, the Intellectual Property Code does not provide for any definition of works
of joint authorship. The Berne Convention provides little guidance on this matter as well.
While the notion of a “work of joint authorship” is recognized, this is only concerned with
the question of duration of protection when it stated that the provisions of Article 7 of the
same “ shall also apply in the case of a work of joint authorship, provided that the terms
measured from the death of the author shall be calculated from the death of the last surviving
author.”248 Due to the lack of a definition and further jurisprudence surrounding joint
authorship beyond Section 178.2 of the Intellectual Property Code, this thesis will now
present relevant foreign laws , jurisprudence and journals on the topic of joint authorship.
Joint Authorship in the US
In the US, where the Copyright Law of the Philippines is heavily based on, the
concept of joint authorship is an issue of contention among the courts and scholars. The U.S.
Copyright Act states “A "joint work" is a work prepared by two or more authors with the
intention that their contributions be merged into inseparable or interdependent parts of a
unitary whole."249
Even after the passage of the Copyright Act in the US, the concept of joint authorship
remained vague and consequently there arose differences of interpretation among the federal
appellate courts resulting to a development of a substantial split between the courts of
appeals of the United States and substantial confusion among the district courts with respect
248
Berne Convention, art. 7bis.
249
US Copyright Act §101.
64
to the test for determining "joint works" or "coauthorship" under the Copyright Act of
1976.250 The Supreme Court has not directly addressed the question of the appropriate test for
joint authorship.251
In Childress v. Taylor252 the Second Circuit came up with two requirements for joint
ownership: (1) that each of the parties contribute an independently copyrightable contribution
and (2) that the parties intended to be joint authors when they were working on their
respective contributions.253
The first requirement is the independently copyrightable element: that each of the
parties contribute an independently copyrightable contribution. In Erickson v. Trinity Theatre
the Second Circuit followed the lead articulated by Professor Paul Goldstein (The Goldstein
Test), to wit: “a collaborative contribution will not produce a joint work, and a contributor
will not obtain a co-ownership interest, unless the contribution represents original expression
that could stand on its own as the subject matter of copyright.” 254 The court further stated that
the reason why they used this test was because it advances creativity in science and art by
allowing for the unhindered exchange of ideas, and protects authorship rights in a consistent
and predictable manner.255 The copyrightability standard allows contributors to avoid post-
contribution disputes concerning authorship, and to protect themselves by contract if it
250
Michael Landau, Joint Works under United States Copyright Law: Judicial Legislation through Statutory
Misinterpretation, 54 IDEA 157 (2014).
251
Seth F. Gorman, Who Owns The Movies? Joint Authorship under the Copyright Act of 1976 after Childress
v. Taylor and Thomson v. Larson, UCLA Entertainment Law Review, 7(1) (1999).
252
Childress v. Taylor, 945 F.2d 500 (1991) (US).
253
Id.
254
Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994) (US).
255
Id.
65
appears that they would not enjoy the benefits accorded to authors of joint works under the
Act.256
In Erickson, the court also discussed the lead articulated by the late professor Melville
Nimmer (The Nimmer Test) that each contributor must make more than a de minimis
contribution and requires that only the combined product of joint efforts must be
copyrightable as opposed to Professor Goldstein's copyrightability test which requires that
each author's contribution be copyrightable.257 The Nimmer Test was rejected in Erickson
because, according to the court, it is not consistent with one of the Copyright Act's premises:
ideas and concepts standing alone should not receive protection. Because the creative process
necessarily involves the development of existing concepts into new forms, any restriction on
the free exchange of ideas stifles creativity to some extent.
However, such rejection of the Nimmer Test has been heavily criticized by
commentators due to the fact that a numerous amount of authorship is essentially
collaborative therefore commentators are questioning whether any individual deserves
monopoly rights in a work that draws its inspiration from many sources. 258 Furthemore, it has
been argued that Nimmer’s view is more aligned with both the purposes of the Copyright Act
and the Congress’s legislative intent. 259 Looking at the House Report on revisions to the
256
Id.
257
Id.
258
Mary LaFrance, Authorship, Dominance, and the Captive Collaborator: Preserving the Rights of Joint
Authors, 50 EMORY L. J. 193 (2001) citing Margaret Chon, Symposium Innovation and the Information
Environment: New Wine Bursting From Old Bottles: Collaborative Internet Art,Joint Works, and
Entrepreneurship,75 OR. L. REV. 257,264-72 (1996); Wendy J. Gordon, Toward a Jurisprudence Of Benefits:
The Norms of Copyright And The ProblemofPrivateCensorship,57 U. CHmL.. REV. 1009, 1028-32 (1990);
Jaszi, supra note 14, at 295; Jessica Litman, The PublicDomain,39 EMORY L.J. 965,1007-11 (1990); Martha
voodmansee, On theAuthorEffect: Recovering Collectivity, 10 CARDOZO ARTS & ENT. L.J. 279, 289-91
(1992).
259
Id at 210.
66
Copyright Act, different definitions for “joint work” and “collective work.” were purposely
provided by Congress.260 Section 101 defines “collective work” as one “in which a number of
contributions, constituting separate and independent works in themselves, are assembled into
a collective whole.”261 The House Report states:
A work is “joint” if the authors collaborated with each other, or if each of the authors
prepared his or her contribution with the knowledge and intention that it would be
merged with the contributions of other authors as “inseparable or interdependent
parts of a unitary whole.” The touchstone here is the intention, at the time the
writing is done, that the parts be absorbed or combined into an integrated unit,
although the parts themselves may be either “inseparable” (as the case of a
novel or painting) or “interdependent” (as in the case of a motion picture,
opera, or the words and music of a song). The definition of “joint work” is to be
contrasted with the definition of “collective work,” also in section 101, in which the
elements of merger and unity are lacking; there the key elements are assemblage or
gathering of “separate and independent works . . . into a collective whole. 262
Emphasis supplied
Therefore, it appears that Congress intended for the analysis of joint authorship to
focus primarily on the process and intent of the work and was not particularly concerned with
the ability of each contribution to be independently copyrightable. 263 There were even
attempts in 1987 and 1989 to amend the "joint work" provision in Section 101 of the
Copyright Act to include the requirement of "independent copyrightability" for each author's
contribution. However, the bill never passed, therefore the Congress, through the language of
the statute, is telling us that "independent copyrightability" is not the standard.264
In fact, in Gaiman v McFarlane the Seventh Circuit ruled, contrary to precedent and
consistent with the Nimmer Test, that even if the portion provided by the contributor would
260
Id.
261
The Copyright Act of 1976, 17 U.S.C. § 101
262
Bregenzer, supra note 13, 469-470 citing H.R. REP. NO. 94-1476, at 120 (1976).
263
Id.
264
Landau, supra note 250 at 213.
67
not be independently copyrightable he or she can still be considered a joint author. 265
According to Judge Posner, if at least two people labored to create a single, copyrightable
work, then it would be “paradoxical” if no one can claim copyright in a situation where
though the result of their joint labors had more than enough originality and creativity to be
copyrightable.266 He further stated that the decisions that ruled that the independently
copyrightable contribution is necessary to a joint work “weren't thinking of the case in which
it couldn't stand alone because of the nature of the particular creative process that had
produced it.”267
The second requirement in the Childress case is the intent element: that the parties
intended to be joint authors when they were working on their respective contributions. In
addition to the intent to create a unitary, inseparable whole, in order for a work to obtain joint
ownership status, each contributor must also intend to be a joint author. To satisfy the
definition, both putative co-authors must have possessed the requisite intent to merge their
contributions at the time they created those contributions. 268 This timing factor distinguishes
joint works from derivative works, in which one contributor incorporates some or all of
another's pre-existing work into a new and different work. 269 In addition to the intent to create
a unitary, inseparable whole, in order for a work to obtain joint ownership status, each
contributor must also intend to be a joint author.270
265
Teresa Huang, Gaiman v. McFarlane: The Right Step in Determining Joint Authorship for Copyrighted
Material, 20 BERKELEY TECH. L.J. 673 (2005) citing Gaiman v. McFarlane - 360 F.3d 644 (7th Cir. 2004)
266
Id.
267
Id.
268
Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 266, 267 (2d Cir. 1944), modified, 140
F.2d 268 (2d Cir. 1944); Eckert v. Hurley Chicago Co., 638 F. Supp 699, 702 (N.D. il1986) (US).
269
Gilliam v. American Broad. Cos., 538 F.2d 14, 21-22 (2d Cir. 1976) (US).
270
Childress
68
In Aalmuhammed v. Lee271 the Ninth Circuit embraced an even more stringent
analysis for joint authorship. Here, the court stated that a person claiming to be an author of a
joint work must prove that both parties intended each other to be joint authors and therefore
necessitating mutual intent to be joint authors.272 In the absence of contract, several factors
may be considered, including who “superintends” the work by exercising control or the
“inventive or master mind” who gives effect to the idea, the objective manifestations of
shared intent to be co-authors, and the fact that the share of each in the work’s success cannot
be appraised. Control in many cases will be the most important factor. 273 Authorship,
according to the court in this case, is not the same thing as making a valuable and
copyrightable contribution.274
Same as the first element, the strict application of the intent element, that is
necessitating mutual intent to be joint authors as opposed to just an intent to merge their
contributions at the time they created those contributions, has also been heavily criticized in
the context of contemporary media. 275 It has been argued by some commentators that the
criticized approach is unrealistic and not aligned with the Congress’s determination that the
economic incentives created by copyright law encourage creativity and innovation. 276 Mary
LaFrance in her journal “Authorship, Dominance, and the Captive Collaborator: Preserving
the Rights of Joint Authors” argues that neither the text nor the legislative history requires
that contributors must have mutual intent to be joint authors. 277 Congress intended to limit
271
Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 1999) (US).
272
Id.
273
Id.
274
Id.
275
Bregenzer, supra note 13 at 466.
276
Id.
277
LaFrance, supra note 258g
69
“joint work” to works where the contributor’s desire to have his or her efforts contribute to a
single end could be evidenced at the time of the creation. 278 The House Report attempted to
add some further clarity to the timeliness of the intent element:
Although a novelist, playwright, or songwriter may write a work with the hope or
expectation that it will be used in a motion picture, this is clearly a case of separate
or independent authorship rather than one where the basic intention was behind the
writing of the work for motion picture use.279
LaFrance argued that the courts deviated from the objective of the 1976 joint work
provisions to “encourage creation and dissemination of original expression that will
ultimately enrich the public domain” when they adopted a test of joint work intent which
instead of focusing on “each party's intent with respect to the creative work itself” focused
more on “the intended or perceived relationship between putative co-authors.” 280 The strict
application of the intent element deprives persons who make significant creative
contributions to a work of authorship rights and consequently, absent authorship rights, or the
potential for economic gain, the Act deprives these artists with either monetary or legal
incentive to continue making creative contributions.281 Also, this is difficult to apply in
practice because the necessity to assess the subjective intent of the putative joint authors
would significantly increase the trial court’s fact-finding burden.282 Finally LaFrance states
that “Greater complexity in the definition of authorship reduces rather than enhances the
economic incentive to produce works of authorship.”283
at 166-167.
278
Id.
279
Id citing H.R. REP. NO. 1476, at 120.
280
Id at 255.
281
Id.
282
Id.
283
Id at 262.
70
Furthermore, Michael Landau in his note “Joint Works under United States Copyright
Law: Judicial Legislation through Statutory Misinterpretation” argues that the courts in
ruling for the necessity of “mutual intent to the joint authors” failed to address the rights of
collaborators who make copyrightable contributions in the absence of intent. 284 Same as
LaFrance, he states that it fosters additional litigation in order to determine exactly what the
copyrightable contributions are.285
To summarize the current landscape of joint authorship in the US courts, there are
two elements that the US courts look at in order to determine the presence of joint
authorship: contribution and intent. Under the first element of contribution, two tests are
being used by different courts: the Nimmer Test and the Goldstein Test. The Nimmer Test
states that each contributor must make more than a de minimis contribution and requires that
only the combined product of joint efforts must be copyrightable as opposed to the Goldstein
Test which requires that each author's contribution be independently copyrightable. Majority
of the courts use the Goldstein Test while there have been examples of courts that have
recently used the Nimmer Test. Furthermore, scholars have argued that the Goldstein Test is
inconsistent with the legislative intent and the purpose of the Copyright Act and is therefore
judicial legislation. Under the second element of intent, the courts have developed a rigid test
in which putative co-authors must have possessed the requisite mutual intent to be joint
authors at the time they created those contributions. However, this has also been criticized by
scholars because it is unrealistic, it discourages collaborations which is contrary to the
284
Landau, supra note 250 at 218.
285
Id.
71
Copyright Act’s purpose, and it finds no legal basis in the text of the provision nor its
legislative history.
Joint Authorship in the UK
In the United Kingdom, the Copyright, Designs and Patents Act 1988 states that “a
"work of joint authorship" means a work produced by the collaboration of two or more
authors in which the contribution of each author is not distinct from that of the other author
or authors.”286 This has been called the joint authorship test. The case law on this matter has
been vague and tended to “employ brief, opaque or superficial reasoning.” 287 However, the
recent landmark case of Kogan v Martin has provided some clarity to the uncertainties
surrounding joint authorship in the UK.288
In Kogan, an Intellectual Property Enterprise Court (IPEC) decision was overturned
by the UK Court of Appeals wherein the latter identified a new test for determination of the
sufficiency of contribution in order to be considered a joint author of a copyright work. What
is involved in this case is a dispute over the screenplay authorship for the film “Florence
Foster Jenkins” wherein Mr. Martin, a screenwriter, brought proceedings against his former
partner, Ms. Kogan, in order to obtain a declaration that he was the sole author of the
Florence Foster Jenkins screenplay. Ms. Kogan claimed that she contributed to the main
character development and to the work as a whole through editing, criticism and support and
therefore must be considered a joint author. The IPEC held that Mr. Martin was the “ultimate
286
Copyright, Designs and Patents Act 1988
287
Daniela Simone, Kogan v Martin: A New Framework for Joint Authorship in Copyright Law, 83 Mod. L.
Rev. 877 (2020).
288
https://www.bailii.org/ew/cases/EWCA/Civ/2019/1645.html
72
arbiter” and the sole author of the work while Ms. Kogan’s contribution was not decisive to
the screenplay.
However, the Court of Appeals, using a new joint authorship framework it has
identified, overturned the IPEC decision and stated that Ms. Kogan’s work on the screenplay
could be sufficient to fulfil all the joint ownership elements, to wit: collaboration, authorship,
contribution and non-distinctness contribution.
According to the framework, the starting point for the application of the joint
authorship test is the requirement for collaboration. In order to meet this requirement, the
work must be created by a collaboration of all the people who created it. Collaboration is
only possible for work with a common design as to its general outline, where collaborators
share the labour of working it out. However, collaboration must be more than editorial
corrections, critique or ad hoc suggestions of phrases or ideas. In order to determine whether
there is collaboration present one must look beyond asking "who did the writing?" because
authors can collaborate to create a work in many different ways. According to the Court of
Appeal, the requirement of collaboration’s main purpose is to distinguish a joint work from a
derivative work. In instances involving derivative works, a secondary author adapts a pre-
existing work in the absence of collaboration with the first author, thus, if there is evidence
showing that such derivative work has sufficient originality it may be separately protected if
the changes evidence sufficient originality. In contrast, in instances where collaboration is
present, the resulting work is jointly authored and copyright in it shared.
The second element is joint authorship wherein joint authors must have contributed a
significant amount of the skill and contributions must be “authorial”, which depends on the
73
nature of the copyright work in question. The focus should be shifted away from who pushed
the pen otherwise it will detract attention from what it is that is protected, and thus from who
the authors are. The court further stated that “we do not think that an inquiry into who
accepts responsibility for the form of expression in the work is a helpful concept, particularly
in a collaborative work.” The statutory test does not go any further than asking who
contributed to the creation of the work. The statutory concept of an author includes all those
who created, selected or gathered together the detailed concepts or emotions which the words
have fixed in writing.
As to the third element of contribution, in order to determine what is enough of a
contribution, the Infopaq test shall be applied: whether the putative joint author has
contributed elements which expressed that person's own intellectual creation. The crux of the
matter is that the putative author must have exercised free and expressive choices that reflect
his or her personality and imprint in the work his or her ‘personal touch’. The more
restrictive the choices the less likely it will be that they satisfy the test. A test that does not
coincide with the IPEC distinction between primary and secondary skills, which, according
to the Court of Appeal, has no basis either in the law or in the jurisprudence and implies that
less weight is to be given to conceptual contribution than to written words, when both are
essential components of a work.
The last element is the non-distinctness contribution which means that the
contribution must not be capable of being separated. The Court of Appeal stated that joint
authorship should not be prevented just because one contributor has the final say but it may
74
affect the proportion of ownership. Therefore, it is not necessary that the shares of the joint
authors be equal.
The Court of Appeal stated that there is no further requirement that the authors must
have subjectively intended to create a work of joint authorship. Citing the case of
Beckingham v Hodgens, the court in Kogan stated that such an element, as used in other
jurisdictions, is “policy driven, and was arrived at despite and not because of the language of
the US statute.”
To summarize, the joint authorship test in the UK has four elements: collaboration,
authorship, contribution and non-distinctiveness. In order to meet this requirement, the work
must be created by a collaboration of all the people who created a work with a common
design as to its general outline, where collaborators share the labor of working it out.
However, collaboration must be more than editorial corrections, critique or ad hoc
suggestions of phrases or ideas. The second element is joint authorship wherein joint authors
must have contributed a significant amount of the skill and contributions must be “authorial”,
which depends on the nature of the copyright work in question. The third element is
contribution, wherein the Infopaq test shall be applied: whether the putative joint author has
contributed elements which expressed that person's own intellectual creation. The last
element is the non-distinctness contribution which means that the contribution must not be
capable of being separated. Finally, there is no further requirement that the authors must have
subjectively intended to create a work of joint authorship.
B. Fair Use Doctrine

75
The fair-use doctrine is a defense that allows a court to steer clear from the stringent
application of the Copyright Act when such application would stifle the very creativity the
law was designed to foster.289 “In effect, the doctrine creates a limited privilege for those
other than the owner of a copyright to use the copyrighted material in a reasonable manner
without the owner’s consent.”290 The fair use doctrine is “intended to further copyright’s
utilitarian goals of encouraging creative acts by letting third parties make use of copyrighted
works in limited circumstances.”291
In the Philippines, there is fair use and therefore no copyright infringement if the
copyrighted work is used for criticism, comment, news reporting, teaching including limited
number of copies for classroom use, scholarship, research, and similar purposes. 292 In
determining whether the use made of a work in any particular case is fair use, four factors
shall be taken into consideration: a) The purpose and character of the use, including whether
such use is of a commercial nature or is for non-profit educational purposes; b) The nature of
the copyrighted work; c) The amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and d) The effect of the use upon the potential market for or
value of the copyrighted work.293 Due to the consideration of the aforesaid four factors, the
application of the fair use doctrine is on a case-to-case basis and fact-specific. 294 There is no
289
Rivera v. Mendez & Compania, 988 F.Supp.2d 159, 169 (D.P.R. 2013) (US).
290
Id.
291
Iowa State Univ. Research Found., Inc. v. Am. Broad. Cos., 621 F.2d 57, 60 (2d Cir. 1980) (US).
292
INTELLECTUAL PROPERTY CODE, §185
293
294
Blanch v. Koons, 467 F.3d 244, 251 (2nd Cir. 2006) (US).
76
black or white test for its application. Each case is to be assessed on its peculiarities because
protected works may take on various forms.
The first factor scrutinizes the purpose and character of the use, and specifically
points at the presence of any monetary gain. 295 The overall purpose of the first factor is to
determine if the new work was “transformative” meaning whether it adds something new to
the original piece.296 Further, the statute states that a court may look at the commercial or
educational use of the recreation to determine what the character and purpose of the new
work entails.297 It must be noted that the statute used the word “including”, which implies that
the commercial or educational use of the recreation is not dispositive in nature, instead, it is
only meant to aid a court's understanding of the purpose.298
The second factor analyzes "the nature of the copyrighted work." 299 The courts have
stated that "the scope of fair use is greater with respect to factual than non-factual works." 300
This is most likely due to the fact that more creativity is being used to design non-factual
works as opposed to factual based works because an author may be able to better signify
emotional or artistic elements in a non-factual piece owing to the fact that an author may be
able to better signify emotional or artistic elements in a non-factual piece. 301 Courts have
steered away from copyrighting facts because copyright is meant to protect creativity and
innovation.302 For those involving unpublished work, the scope of fair use is also narrower,
295
296
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994) (US).
297
298
299
300
Swatch Grp. Mgmt. Servs. v. Bloomberg, 756 F.3d 73, 89 (2nd Cir. 2014) (US).
301
302
Feist Publications v. Rural Telephone Service, 111 S.Ct. 1282, 1290 (1991) (US).
77
therefore, works that have already been published, and thus where the "first appearance" of
the artist's expression has already occurred, are more likely to qualify as fair use.303
The third factor examines "the amount and substantiality" of the original copyrighted
work compared to the user's recreation of the work. For this factor, "the question is whether
‘the quantity and value of the materials used,' are reasonable in relation to the purpose of the
copying."'304 The copying may be more likely to be excused as fair use if the alleged infringer
takes less. But, if the junior user took “the heart” of the original work, the copying may not
be excused as fair use.305 However, this rule—less is more—is not necessarily true in parody
cases.306 A parodist is permitted to borrow quite a bit, even the heart of the original work, in
order to conjure up the original work. That’s because, as the Supreme Court has
acknowledged, “the heart is also what most readily conjures up the [original] for parody, and
it is the heart at which parody takes aim.” 307 Furthermore, it has been argued that in the
context of works of visual arts, like photographs, the third factor should not be taken into
consideration due to the required greater “amount and substantiality” from its use because
unlike other works, photographs cannot be summarized, paraphrased, described or quoted
from.308 Therefore, much weight should be placed on the other factors when analyzing
photographs, Stephen Weil argues.309
303
Kelly v. Arriba Soft Corp., 336 F.3d 811, 820 (9th Cir. 2003) (US).
304
Blanch v. Koons, 467 F.3d 244, 257 (2nd Cir. 2006) (US).
305
Measuring Fair Use: The Four Factors, STANFORD UNIVERSITY LIBRARIES, available at
https://fairuse.stanford.edu/overview/fair-use/four-factors/#the_nature_of_the_copyrighted_work (last accessed
Aug. 5, 2021).
306
Id.
307
Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994) (US).
308
Philip Ewing, “Influencing” Copyright Law: “Re-Evaluating the RIghts of Photographic Subjects in the
Instagram Age, 17 OHIO St. TECH. L. J. 321, 350 (2021).
309
Id.
78
Finally, a court will determine the effect of the use on the market. Here, the court
essentially measures the competition between the new work and the original work. Further, a
court compares "the benefit that the public will derive if the use is permitted and the personal
gain that the copyright owner will receive if the use is denied." 310 The ultimate question is
whether the infringer's conduct will harm the original copyright holder, thus, a copyright
owner has the ability to prove this factor by showing he received some form of economic
harm.311
In applying the four-factor test, the U.S. Supreme Court has explained that “the fourth
consideration which is the effect of the use upon the potential market for or value of the
copyrighted work represents fair use’s most important element.” 312 As explained by Schuster
II, this fourth element is one of the primary considerations because “it touches most closely
upon the author’s ability to capture the fruits of his labor and hence his incentive to create.”313
In some cases, the fair use analysis is dispensed with when the amount of material
copied is so small (or “de minimis”). 314 For example, in the motion picture Seven, several
copyrighted photographs appeared in the film, prompting the copyright owner of the
photographs to sue the producer of the movie.315 The court held that the photos “appear
fleetingly and are obscured, severely out of focus, and virtually unidentifiable.” The court
excused the use of the photographs as “de minimis” and didn’t require a fair use analysis.316
310
Richard Stim, Fair use: The Four Factors Courts Consider in a Copyright Infringement Case, NOLO,
available at https://www.nolo.com/legal-encyclopedia/fair-use-the-four-factors.html (last accessed Aug. 5,
2021).
311
Id.
312
Id (citing Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 566 (1985) (U.S.)).
313
Id (citing Bond v. Blum, 317 F.3d 385, 396 (4th Cir. 2003) (U.S.)).
314
Supra at xxx
315
Sandoval v. New Line Cinema Corp., 147 F.3d 215 (2d Cir. 1998) (US).
316
Id.
79
In the Philippine context, our very own Intellectual Property Code has patterned its
provisions after that of the U.S. and the fair use doctrine was one of these provisions. Thus, it
may be safe to say that the application of the fair use doctrine must still be on a case-to-case
basis if a copyright infringement claim is brought under our jurisdiction.
Under Copyright Laws, the owner of a copyright is the author: the natural person who
has created the work.317 Due to the lack of any parameters as to who may constitute as an
author in the Intellectual Property Code and the Philippine jurisprudence, much weight is
given to US jurisprudence from which the Philippine Copyright laws is heavily based on.
Ultimately, there are two requirements for joint ownership: the contribution and the intent.
However, a substantial split between the courts of appeals of the United States and
substantial confusion among the district courts has developed with respect to the test for
determining "joint works" or "coauthorship" and the Supreme Court has not directly
addressed the question of the appropriate test for joint authorship.318
On the other hand, there is fair use if the copyrighted work is used for criticism,
comment, news reporting, teaching including limited number of copies for classroom use,
scholarship, research, and similar purposes.319 In determining whether the use made of a work
in any particular case is fair use, four factors shall be taken into consideration: a) The
purpose and character of the use, including whether such use is of a commercial nature or is
for non-profit educational purposes; b) The nature of the copyrighted work; c) The amount
317
318
Gorman, supra note 251.
319
80
and substantiality of the portion used in relation to the copyrighted work as a whole; and d)
The effect of the use upon the potential market for or value of the copyrighted work.320
320
81
CHAPTER SEVEN
LEGAL ANALYSIS
This Thesis began by painting a picture of the emerging practice of copyright trolling
with a narration of some notable cases that have been filed by paparazzi in the US and the
defenses used by the celebrities. To reiterate, copyright trolling takes place when a suit is
brought by a paparazzi or photographer against celebrities who post a paparazzi's picture in
social media without first paying to license the photo or without the paparazzi’s consent. 321
The numerous paparazzi-initiated copyright infringement suits against celebrities have
brought forth the dilemma of opposing rights: the photographer’s copyright vis-a-vis the
celebrity’s right to privacy and the photographer’s copyright vis-a-vis the celebrity’s right of
publicity. The proponent will now examine these opposing rights based on the information
laid down in the previous chapters.
Philippine Context
In the Philippines, there has not been a known case of copyright trolling nor has such
a case reached the Supreme Court. Also, there are no rules set out in any law squarely
addressing the said matter. Therefore, much reliance has been placed on foreign
jurisprudence and journals.
321
Joseph, supra note at xxx, at 331
82
However, this lack of Philippine jurisprudence does not mean that there is no problem
to be addressed. In the country whose people have the highest social media usage in the
world and where the culture of “chismis” or gossip is prevalent, it is safe to assume that such
practice or something similar will find its way to Philippine soil. This issue has also become
more pressing considering the rise of the citizen paparazzi, wherein the term paparazzi is no
longer limited to the traditional notions of being just photographers who follow famous
people around, hoping to take interesting or shocking photographs of them so that they can
sell them to a newspaper. Today, due to technological advancements and social media almost
anyone who has a smartphone, or any type of camera can become paparazzi. For instance,
there was the infamous incident when Ellen Adarna took a photo of a normal citizen who was
allegedly taking a photo of Adarna using her smartphone, to which Adarna stated “When you
PAP us, we PAP you.”
The concept of celebrities and the way they interact with their fans in the Philippines
is also in line with the current practice in the US where copyright trolling is prevalent and is
also a reflection of the social media age. Today, celebrities are not confined to those who are
only seen in television and movies, famous personalities that came about online like in
youtube, twitter, tiktok or instagram are also deemed celebrities. Furthermore, these
celebrities, just like in the US, also heavily rely on social media in order to interact with their
fans and to build their image, likeness and fame in general. Therefore, a careful examination
of the conflicting rights of the photographer and the celebrity must now be analyzed.
No Copyright Protection if Right to Privacy is Violated

83
The right to privacy, although absent explicit provision in the Bill of Rights in the
1987 Constitution has been recognized by the Supreme Court to be present in the Philippine
jurisdiction as found in various sections in the Constitution, Civil Code of the Philippines and
the Revised Penal Code. There has been a line that was drawn as to the entitlement to such
right between private individuals and public figures, as evinced in the Public Figure
Doctrine. Under the definition of public figures adopted by the Supreme Court, celebrities
are considered to be public figures. As such, and in accordance with the Public Figure
Doctrine, limited intrusion into the private lives of celebrities is permissible as long as the
information sought to be elicited from him or to be published about him constitute matters of
a public character.
However, this does not equate to the public having unlimited access to the lives of
public figures. The Public Figure Doctrine is not a wielding sword that can be cast
unwittingly by any person, including the paparazzi, to invade the privacy of public figures
without limitations. In this regard, the criteria set forth in Van Hannover balancing the right
of privacy of public figures and the freedom of expression of the paparazzi (the “Van
Hannover Criteria”) is instructive, to wit:
case-by-case basis.

84
3. Prior conduct of the person with the press needs to be taken into account.
Furthermore, photographs concentrated on the purely private aspects of the life of public
figures cannot be regarded as having contributed to a debate on a matter of general interest to
society. It has also been recognized that a person’s image is one of the characteristics
attached to his or her personality, its effective protection presupposes obtaining the consent
of the person concerned at the time the picture is taken otherwise an essential attribute of
personality would be retained in the hands of a third party and the person concerned would
have no control over any subsequent use of the image.
Under the Van Hannover criteria the freedom of expression has already been
balanced and considered, therefore, what is left to be tested is the celebrity’s right to privacy
and the photographer’s copyright. In Ople, the Supreme Court ruled that the right of privacy
is a constitutional right found in various provisions in the Bill of Rights. 322 On the other hand,
copyright is granted to the author of a work by the Intellectual Property Code. In this regard,
322
Ople
85
a right granted by a statute must yield if it is found that it does not pass constitutional muster
for violating a constitutional right to privacy.
Article 17 of the Berne Convention provides that Berne’s provisions do not affect
members’ rights “to control, or to prohibit, by legislation or regulation, the circulation,
presentation, or exhibition of any work or production in regard to which the competent
authority may find it necessary to exercise that right.” 323 Therefore, Article 17 allows
governments to take steps to prevent the circulation or exhibition of works that are
considered, for example, offensive to national standards of public policy or morality.324
In the case of Attorney General v. Guardian Newspapers Ltd,325 Wright, who was
previously a British intelligence officer, wrote and published worldwide a book called
Spycatcher about the secret workings of British intelligence agencies, consequently, breaking
Wright’s contractual obligation of loyalty to the U.K. Government and the Official Secrets
Act 1911 (U.K.). An injunction was sought by the U.K. Government against some British
newspapers for participating in Wright’s breach of confidence by publishing, or threatening
to publish, extracts from the book. Due to the fact that the injunction could no longer avert
the publication of secrets that had by then spread widely around the globe, this order was
refused. However, a suggestion made by the judges hearing the case is that if Wright did
retain his copyright, neither he nor anybody claiming under it could enforce the copyright in
a U.K. court because of his illegal acts. Lord Jauncey stated “The publication of Spycatcher
was against the public interest and was in breach of the duty of confidence which Peter
323
Berne Convention
324
https://www.wipo.int/edocs/pubdocs/en/copyright/844/wipo_pub_844.pdf
325
Attorney General v. Guardian Newspapers Ltd [1990] A.C. 109 (U.K., House of Lords)
86
Wright owed to the Crown. His action reeked of turpitude. It is in these circumstances
inconceivable that a United Kingdom court would afford to him or his publishers any
protection in relation to any copyright which either of them may possess in the book.”
Furthermore, in the case of Hyde Park Residence Ltd v. Yelland, 326 Lord Justice
Aldous stated that in his view, a court would be entitled to refuse to enforce copyright if the
work is: “(i) immoral, scandalous or contrary to family life; (ii) injurious to public life, public
health and safety or the administration of justice; (iii) incites or encourages others to act in a
way referred to in (ii).”
Therefore, if the photographs of the public figures taken by the paparazzi have not
passed the Van Hannover criteria, in light of the celebrity’s right to privacy being violated,
the photographs should not be given copyright protection. It is within the powers of the
government, including the courts, granted by the Berne Convention to withhold such
copyright protection due to the violation of the celebrity’s constitutional right of privacy
which is against public policy. Thus, the privacy rights of the said photographs remains with
its subject which means its dissemination and reproduction is also within the control of the
subject. Consequently, the posting of the said photograph on social media is within the rights
of the subject and no copyright infringement could occur if in the first place there is no valid
copyright to infringe.
The Conflict Between Copyright Laws and Right of Publicity
326
Hyde Park Residence Ltd v. Yelland [2000] 3 W.L.R. 215 (U.K.: High Court and Court of Appeal)
87
Copyright and right of publicity currently both exist and subsist within the
jurisdictions of the US and the Philippines as was illustrated in Chapters 3 and 5 of this
Thesis. While both copyright and the right of publicity concern intellectual, literary and
artistic creativity, there arises a conflict between the two.
On the one hand, copyright law encourages creativity by assuring creators the
opportunity to obtain financial rewards for their works.327 This is achieved by granting
individuals exclusive economic and moral rights from the moment of creation and generally
for a period of 50 years from the individual’s death. 328 These exclusive rights afford them
protection against unauthorized use of their creative works.329 On the other hand, the right of
publicity gives individuals the opportunity to obtain financial rewards for fame and
encourages creative efforts in the pursuit of fame. 330 This is achieved by granting the
individual the right to prevent others from using his name, likeness, photograph or image for
commercial purposes without obtaining consent. 331
Therefore, although the aim of both copyright and the right of publicity is to
encourage creative activity for the enrichment of society, they seem to employ clashing
incentives towards the same end. There is an inconsistency with copyright's limited
protection of expression and the right of publicity's broad protection of subject matter. The
clashing incentives arise in a situation when creative individuals use the personal attributes of
others in their works, as is in the case of paparazzi taking photographs of celebrities.
327
Id.
328
Id.
329
Id.
330
Id.
331
Id.
88
According to the laws on copyright, the author of the work can control such work. However,
following the doctrine of the right of publicity, it is the subject of the work, not the author,
who can control such. Therefore, under the laws of copyright, a book about a person belongs
to its author, a sculpture of a person belongs to its sculptor, and a photograph of a person
belongs to its photographer.332 However, taking into consideration the right of publicity, there
is reason to argue that such works may also belong to the subject of such a book, sculpture
and photograph.
In fact, there have been cases in the US that have ruled in favor of the right of
publicity over copyright. For example, in Factors Etc., Inc. v. Pro Arts, Inc. 333 the court ruled
that the poster of defendants that depicts the late Elvis Presley infringed the assigned
publicity rights of the plaintiff in the Presley persona. 334 According to the court, pursuant to
the assignment of the right of publicity, the plaintiffs had "the exclusive authority to print,
publish and distribute [Presley's] name and likeness."335 The court enjoined the defendants,
who had a valid copyright in the poster depicting Presley, from further sales of the poster
and awarded the plaintiffs damages equal to the defendants' profits from prior sales. 336
Therefore, effectively, the defendant’s copyright was abrogated by the court's enforcement of
the plaintiff’s right of publicity by divesting the former of their exclusive rights to reproduce
and distribute their work.337
332
Id.
333
Factors Etc., Inc. v. Pro Arts, Inc., 444 F. Supp. 288, 289 (S.D.N.Y. 1977)
334
Id.
335
Id.
336
Id.
337
Id.
89
However, in Jackson v Roberts338 the US Court of Appeals for the Second Circuit
found that the federal Copyright Act preempts a state right of publicity claim when the latter
is merely “a thinly disguised effort to exert control over an unauthorized [use of a
copyrighted] work.”339 Both parties in this case are famous hip-hop artists. In 2015, defendant
Rick Ross released a free mixtape that included samples from many famous songs, including
50 Cents’s hit “In Da Club.”340 50 Cent sued Rick Ross, claiming that the unauthorized use of
his name and voice violated his right of publicity under Connecticut common law. Pursuant
to a recording agreement with his former record label, Shady Records/Aftermath Records, 50
Cent did not own a copyright interest in the “In Da Club” recording and therefore could not
sue for copyright infringement.341 The district court granted Roberts’s motion for summary
judgment, finding that Jackson had surrendered his publicity rights via the recording
agreement and that the right of publicity claim was preempted. 342 Finding that Jackson’s right
of publicity claim was preempted via the doctrine of implied preemption or under the express
terms of the Copyright Act, the Second Circuit affirmed the district court’s grant of summary
judgment for Roberts.343
Such conflict between copyright and the right of publicity has further evolved due to
the rise of social media in recent years. There has been a transformation in the way
individuals consume, distribute and produce content due to the internet and social media. In
particular, social media has transformed the day-to-day lives of individuals and how they
338
Jackson v. Roberts, Case No. 19-480 (2d Cir. Aug. 19, 2020)
339
Id.
340
Id.
341
Id.
342
Id.
343
Id.
90
interact with others. Today, social media is often used by celebrities to engage with their fan
base and build their personal following. On social media, users are expected to engage with
content shared by others and have become accustomed to a culture of collaboration with
massive numbers of images shared and re-shared every day. 344 This newfound ability to
distribute content to the world at large with the tap of a finger has created many problems for
creators of copyrighted works that may have their work shared online without their
permission. The dramatic shift from user-generated content to user-found content resulting in
the ease of accessing and sharing content on the internet, especially in social media, has
emanated unique legal challenges that necessitate consideration of how the law can adapt to
the digital age.
The evolution of the copyright and right of publicity conundrum in this social media
age is best exemplified in the paparazzi-initiated copyright infringement suits against
celebrities. In these cases, there is a need to find a balance between the copyright of the
paparazzi who took the photo and is therefore the author of the photograph under copyright
laws on one hand, and the right of publicity of the celebrity who is the subject of the said
photo on the other hand. In connection with this, the existing copyright laws and
jurisprudence presented are insufficient to address them. Unfortunately, such suits have been
dismissed based on procedural grounds without going into the merits of the cases. Therefore,
the confusion as to how these conflicting rights should be addressed remain unanswered.
It is important to note that the principle of preemption of laws in the US as illustrated
in Jackson v Roberts is not applicable in this Philippine setting. Preemption is the rule of law
344
Lauren Levinson, Adapting Fair Use to Reflect Social Media Norms: A Joint Proposal, 64 UCLA L. REV.
1038, 1040–41 (2017).
91
in the US that if the federal government through Congress has enacted legislation on a
subject matter it shall be controlling over state laws and/or preclude the state from enacting
laws on the same subject if Congress has specifically declared it has "occupied the field." 345
Applying similar circumstances in the Philippines, there is no conflict between a national law
and a local law. Therefore, what must prevail is the principle that when Courts are confronted
with apparently conflicting statutes, they should not declare outright the invalidity of one
against the other, but should endeavor to reconcile them. 346 Thus, rather than ruling that the
laws on copyright should prevail over the right of publicity or the other way around, this
Thesis posits that they should instead be reconciled and harmonized.
Furthermore, to reward full copyright protection alone to the photographer without
taking into consideration the celebrity’s right to publicity would amount to unjust
enrichment. Unjust enrichment is found in Article 22 of the Civil Code, which states that
“Every person who through an act of performance by another, or any other means, acquires
or comes into possession of something at the expense of the latter without just or legal
ground, shall return the same to him.”347 “The prevention of unjust enrichment is a
recognized public policy of the State.”348 There is unjust enrichment when “a person retains
money or property of another against the fundamental principles of justice, equity and good
conscience.”349 The elements of unjust enrichment are as follows: “(1) a person is unjustly
benefited, and (2) such benefit is derived at the expense of or with damages to another.”350
345
https://definitions.uslegal.com/p/preemption
346
Gordon v. Veridiano, G.R. No. L-55230, [November 8, 1988], 249 PHIL 49-63
347
CIVIL CODE, art. 22.
348
Gonzalo v. Tarnate, Jr., G.R. No. 160600, [January 15, 2014], 724 PHIL 198-209
349
Id.
350
Filinvest Land, Inc. v. Ngilay, G.R. No. 174715, [October 11, 2012], 697 PHIL 403-413
92
Applying the elements in this case, first, the photographer or paparazzi may gain
money from licensing the photograph he or she took of the celebrity and second, such profit
is at the expense of the celebrity’s image or likeness, depriving the celebrity of his or her
property rights from the use of the celebrity’s persona, and diminishing their marketability.
Therefore, there exists unjust enrichment if no balance is found between the photographer’s
copyright and the celebrity’s right of publicity.
Based on everything that has since been tackled, this Thesis will now endeavor to
create the parameters that may guide the courts in addressing such copyright and right of
publicity issues considering the defenses raised by the celebrity-defendants in the paparazzi-
initiated copyright infringement suits. This Thesis posits that there is a need to redevelop the
concept of joint authorship and fair use in order to adapt to the realities brought by the
modern age.
Joint Authorship
Given the premise that this Thesis aims to address, in order to harmonize both the
copyright of the paparazzi and the right of publicity of the celebrity, the proponent posits that
the latter is entitled to co-authorship rights with the former.
In the Philippines, there is no provision in the law that provides the parameters nor
definition as to what constitutes works of joint authorship and who may be considered as
joint authors. The Intellectual Property Code merely provides the nature of the ownership
rights of each joint author. Neither does the Berne Convention provide for any definition
93
because it merely made mention of joint authorship. Therefore, the proponent looked towards
foreign laws and jurisdictions, specifically the US and UK, which are jurisdictions that the
Supreme Court heavily relies upon when it comes to Intellectual Property laws.
Upon review of the laws and jurisprudence, there is a divergence between the tests
applied in the US and the UK for the purpose of determining joint authorship. To compare,
below are the applicable laws and tests for joint authorship in US and UK laws:
US UK
Laws A "joint work" is a work “a "work of joint authorship"
prepared by two or more means a work produced by
authors with the intention that the collaboration of two or
their contributions be merged more authors in which the
into inseparable or contribution of each author is
interdependent parts of a not distinct from that of the
unitary whole."351 other author or authors.”352
Jurisprudential 1. Contribution 1. Collaboration
Joint Authorship 2. Intent 2. Authorship
Test 3. Contribution
4. Non-distinctiveness of
351
US Copyright Act §101.
352
Copyright, Designs and Patents Act 1988
94
contribution
Upon comparison, the following observations were made by the proponent:
The contribution and intent requirements followed by the majority of the US courts
are a stark contrast to the UK’s collaboration, authorship and contribution elements.
In the US, the contribution of the putative co-authors must be independently
copyrightable in accordance with the Goldstein Test and as to intent the US courts developed
a test wherein putative co-authors must have possessed the requisite mutual intent to be joint
authors at the time, they created those contributions in order to be considered as joint authors.
On the other hand, the three elements of collaboration, authorship and contribution in the UK
obviate from the necessity of an independently copyrightable contribution. Under the UK
test, instead of seeking for the contribution to be “copyrightable” in itself, it seeks that such
contribution be “authorial” and therefore leans towards an approach that recognizes
collaborations. The UK test in seeking the contribution to be “authorial” puts more emphasis
on the amount of skill and labor that the putative co-author contributed to the work
considering the nature of the work. It is a question beyond who pushed the pen or who is the
mastermind, stating that authors can collaborate to create a work in many different ways. In
this regard, the UK test is more akin to the Nimmer Test in the US which states that each
contributor must make more than a de minimis contribution and requires that only the
combined product of joint efforts must be copyrightable.
In fact, the application of the intent requirement followed by the US courts has been
denounced by the UK courts in their joint authorship test. The UK courts expressly stated
95
that there is no further requirement that the authors must have subjectively intended to create
a work of joint authorship. The reasoning behind such outright rejection by the UK Courts is
analogous to the criticisms of the said requirement made by scholars in the US, in that, such
intent requirement is inconsistent with the letter and legislative intent of the law. However, it
is important to note that in the US, such showing of intent has been rendered important in
order to distinguish a joint work from a derivative work. But scholars in the US have stated
that instead of the restrictive mutual intent to be joint authors, what is merely necessary is to
limit “joint work” to works where the contributor’s desire to have his or her efforts contribute
to a single end could be evidenced at the time of the creation.
In the Philippines, high regard is placed on intellectual property, including copyright.
The 1987 Constitution itself recognizes the State’s policy to protect and secure the exclusive
rights of artists, and other gifted citizens to their intellectual property and creations,
particularly when beneficial to the people.353 The social function of intellectual property was
also recognized in the Intellectual Property Code, consequently, “the State shall promote the
diffusion of knowledge and information for the promotion of national development and
progress and the common good.”354 Therefore, evidently, both the Constitution and the law,
similar to the US and the UK, give due importance to artists and creators, whatever form
their contributions and creations may be, as long as the resulting work is copyrightable.
These state policies highlight the purpose of intellectual property laws in the Philippines in
giving incentives to creators: to encourage creativity and innovation. However, the strict
application of the contribution and intent elements deprives persons who make significant
353
1987 PHILIPPINE CONSTITUTION, art. XIV, § 13.
354
96
creative contributions to a work of authorship rights and consequently, absent authorship
rights, or the potential for economic gain, deprives these artists with either monetary or legal
incentive to continue making creative contributions, which is against the very purpose of the
law.
Historically, the Philippine legal system is adaptive to the changes brought by
technology. In fact, Senator Raul Roco in his Sponsorship Speech for the Bill of the
Intellectual Property Code stated, “With the advances in technology, the country must have
the necessary legal infrastructure to anticipate the growth and expansion ushered in by these
advances.”355 Therefore, instead of turning a blind eye on the realities brought by the modern
age, the laws should embrace these realities. One of these realities is that technology has
made the creation of literary and artistic works less as an individual endeavor and more of a
collaborative effort which stems from the fact that art has expanded and has evolved in
numerous forms.
As to the “non-distinctiveness of contribution” element of the joint authorship test in
the UK, it is not found in the US joint authorship test. However, such an element may be
found in the US law itself where it stated that “their contributions be merged into inseparable
or interdependent parts of a unitary whole.” In the Philippines, this element is also implied in
Section 178.2 of the Intellectual Property Code when it stated that “If, however, a work of
joint authorship consists of parts that can be used separately and the author of each part can
355
Sponsorship Speech of Senator Roco, Bill on Second Reading, S. No. 1719-Intellectual Property Rights
October 8, 1996 p 23
97
be identified, the author of each part shall be the original owner of the copyright in the part
that he has created.”356
Based on the aforesaid observations, the proponent posits that although the rules on
joint authorship that have been developed in the two jurisdictions are different, the letters of
the law are not too distant from each other. The contribution requirement in the US based on
the Nimmer Test, and not on the Goldstein Test, is in the same spirit as the collaboration,
authorship and contribution elements in the UK. As to the intent requirement, the proponent
leans towards the reasoning of the UK courts and scholars in the US that such a requirement
of mutual intent to be joint authors is policy-driven and cannot be gleaned from the letter of
the law nor its legislative history. However, the intent to merge their contributions at the time
they created those contributions is still important because it is this time element that
differentiates a joint work from a derivative work. Finally, the non-distinctiveness of
contribution requirement is without question in the US law, UK law and more importantly, in
the Philippine law.
Therefore, the proponent posits the following guidelines to be followed in
determining joint authorship in the Philippines, which are more in line with the objectives of
the 1987 Philippine Constitution and the Intellectual Property Code, specifically laws on
copyright, and more adaptive to the current realities of social media and the collaborative
environment we are in today based on the joint authorship rules in the US and the UK, as
heavily discussed above and in the previous chapter:
356
98
1. Contribution: Each contributor must make more than a de minimis contribution and
such contribution must be “authorial” which depends on the nature of the copyright
work in question. The question that must be answered is whether the putative joint
author has contributed elements which expressed that person's own intellectual
creation.
2. Intent: Putative co-authors must have possessed the requisite intent to merge their
contributions at the time they created those contributions. In other words, there must
be a showing of the contributor’s desire to have his or her efforts contribute to a
single end at the time of the creation.
3. Non-distinctiveness of contribution: The contribution must not be capable of being
separated.
With that said, the proponent will now test the elements in the setting of copyright
trolling. As to the first element of contribution, needless to say that the contribution of the
photographer is the taking of the photograph itself, what is in contention is the contribution
of the celebrity. It must be emphasized that the artistic and commercial value of the
photograph lies in the celebrity’s fame which constitutes the celebrity’s efforts-- stylistic
choices concerning wardrobe, hair, makeup, and posing. Indeed, there is creativity involved
in the celebrity’s creation of his or her image, managing all aspects of his or her fame and
directing a team around her, which in itself is an artform hence an expression of the
celebrity’s own intellectual creation. This same fame or celebrity factor is what the right of
publicity seeks to protect. Therefore, such image, likeness and fame is the celebrity’s
99
contribution that is “authorial” given the nature of the photograph. It must be emphasized
that although it wasn’t the celebrity who took the photo, it is the celebrity’s essence, his or
her image and likeness, which made the photo what it was, hence, such contribution cannot
be considered as merely a minimum contribution but is more than a de minimis contribution
to the said photograph.
As to the second requirement of intent, both putative co-authors must have possessed
the requisite intent to merge their contributions at the time they created those contributions.
Therefore, in order to establish joint-authorship two things must be proven: intent of the
celebrity and intent of the photographer. As to the intent of the celebrity, two scenarios may
arise: that the celebrity deliberately posed in the photo, or such celebrity did not deliberately
pose in the photo. In the first scenario, the deliberate posing is equivalent to showing that the
celebrity indeed had the intent to be a joint author. In the second scenario, although there is
no upfront showing of such intent as in the first scenario, there may be prima facie evidence
of such by the fact that the celebrity later shared the said photo. As to the intent of the
photographer to co-author the photo, it must be noted that the surrounding circumstances
show that the photographer knew that the essence of the photo is the fame of the celebrity,
the main reason the paparazzi was taking the said photo was because he or she was banking
on the image and likeness of the said celebrity. Therefore, it can be gleaned by the
photographer’s act of taking the photo alone that he or she had the intent to merge the
celebrity’s contribution, the fame and image, and his or her contribution, the taking of the
said photo.
100
As to the third requirement, the contribution must not be capable of being separated.
The work in issue is the photograph wherein the image and likeness of the celebrity, which is
protected by his or her right of publicity, is incorporated into. There is no way of separating
one from the other.
Therefore, given the general premise of copyright trolling, there is a basis to argue
that indeed the paparazzi and celebrity are joint authors of the photograph. As such, the
celebrity's subsequent posting of the photograph in social media does not constitute copyright
infringement.
Fair Use
Absent any of the circumstances stated above to constitute joint authorship, the
celebrity may still be held not liable of copyright infringement under the doctrine of fair use.
To reiterate, there is fair use if the copyrighted work is used for criticism, comment,
news reporting, teaching including limited number of copies for classroom use, scholarship,
research, and similar purposes.357 In determining whether the use made of a work in any
particular case is fair use, four factors shall be taken into consideration: a) The purpose and
character of the use, including whether such use is of a commercial nature or is for non-profit
educational purposes; b) The nature of the copyrighted work; c) The amount and
substantiality of the portion used in relation to the copyrighted work as a whole; and d) The
effect of the use upon the potential market for or value of the copyrighted work.358
357
358
101
Due to the consideration of the aforesaid four factors, the application of the fair use
doctrine is on a case-to-case basis and fact-specific. 359 However, some general guidelines
may be followed given the peculiarities that arose from the intersection of copyright laws,
right of publicity and the rise of social media.
As to the first factor, it must be noted that transformative use is not necessary.
However, if the celebrity shares the photograph with a caption this may constitute “criticism”
or “comment” so as to fall within the ambit of fair use. 360 Absent any of these, the
commercialization of the work becomes more relevant. It has been argued by some of the
counsels for the paparazzi in the cases narrated in Chapter 2 of this thesis that through the
posting by celebrities of themselves in social media they are maintaining their personal brand
which constitutes commercialization. However, it has been ruled in Sega Enterprises Ltd. v
Accolade, Inc.361 that the commercial use factor of fair use where a company copied
computer code from a competitor to study it for the purposes of producing a competing
product. The court found that any commercial "exploitation" was indirect or derivative and
found the first factor in favor of the alleged infringer. Therefore, the celebrity’s indirect gains
from posting in social media, absent any explicit promotions from which the celebrity can
directly have monetary gain, does not constitute commercialization which may remove it
from the ambit of fair use.
As to the second factor, the scope of fair use is wider for factual and published works,
which is exactly the case in point. It has been repeatedly held that paparazzi photographs are
359
Blanch v. Koons, 467 F.3d 244, 251 (2nd Cir. 2006) (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S.
569 (1994)).
360
361
Sega Enterprises Ltd. v. Accolade, Inc. 977 F.2d 1510, 1523 (9th Cir. 1992), as amended (Jan. 6, 1993).
102
primarily factual works despite the involvement of some creative choices on the part of the
photographer.362 Also, it must be noted that the photos that are being reposted by celebrities
on social media have been searched online, therefore, they have already been published so
they are more likely to qualify as fair use.
As to the third factor, this has not much weight in photographs because unlike other
works that may be granted copyright protection, a photograph cannot be summarized,
paraphrased, described, or quoted from. Unless the photograph was cropped, this factor has
not much bearing.
As to the fourth factor, it must be noted that due to the rise of social media and the
internet, the posting done by the celebrity for personal use has not much of an impact on the
market because even before the time the photo reached the radar of the celebrity the original
photographer and agency has likely already made the money they will make from that
photograph through the sale of the exclusive license. So, it would be a stretch to say that the
reposting of the photograph will deprive the original purveyor of the photograph of
"significant revenues," and cause harm by not paying a licensing fee, as a license would
likely not be available due to exclusivity, and there would probably not be a future market for
the photograph given the ephemeral nature of the paparazzi news cycle.
Indeed, this approach may not be in keeping with the strict and traditional laws of
copyright that have been observed since its inception. However, the Supreme Court of the US
itself has outlined the importance of shifting copyright law to align with new developments:
“From its beginning, the law of copyright has developed in response to significant changes in
362
103
technology.”363 Given the fact that the Copyright laws in the Philippines is heavily based on
and relies on US laws and jurisprudence the same principle must also be adopted in the
Philippine legal landscape. Therefore, this approach would effectively reconcile the
photographer’s copyright and the celebrity’s right of publicity that has evolved due to the
presence of social media.
363
Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 430 (1984).
104
CHAPTER EIGHT
CONCLUSION AND RECOMMENDATION
A. Conclusion
When reports of Dua Lipa being sued for posting a photo of herself started to
circulate, there was a collective confusion among laymen. There have been a lot of similar
cases filed years before under similar factual milieu with the same set of parties involved: the
paparazzi and celebrities. It has become so frequent that it has already been given a name:
copyright trolling. Unsurprisingly, these cases arose during the years when social media
started to make a greater impact globally, given the fact that the celebrity’s alleged infringing
act is through sharing in social media. In these cases, the plaintiff-photographers would
always bring forth the same case of copyright infringement. While the defendant-celebrities
have put forward different defenses such as right to privacy, right of publicity and fair use.
Unfortunately, the courts have dismissed these cases on procedural grounds without going
into the merits, therefore, the questions that arose from the defenses of both sides are left
unanswered.
Copyright trolling is somehow the love child of intellectual property law, privacy law
and technology and highlights the interplay between these opposing spectrums. This issue
has also become more pressing considering the rise of the citizen paparazzi, wherein the term
paparazzi is no longer limited to the traditional notions of being just photographers who
follow famous people around, hoping to take interesting or shocking photographs of them so
105
that they can sell them to a newspaper. Today, due to technological advancements and social
media almost anyone who has a smartphone, or any type of camera can become paparazzi.
This research aimed to determine the extent of a photographer’s copyright in a
situation where a celebrity shares on social media a photo of him/herself that was taken by
the said photographer, in light of the celebrity’s right to privacy and right of publicity. The
Intellectual Property Code of the Philippines provides that copyright shall belong to the
author of the work who is the natural person who has created the work, therefore, the
unauthorized use of paparazzi photos on social media is not permitted under current
copyright law. However, the problem lies when the celebrity’s right to privacy and right of
publicity are brought forward as defenses by the celebrity who posted on social media the
photographs of which they are subject.
Upon an in-depth analysis of the resources used, may it be case law or journal
articles, this thesis has shown that indeed there exists a conflict between the paparazzi’s
copyright and the celebrity’s right to privacy when the former takes the latter’s photographs
outside the limits that are protected by the Public Figure Doctrine as set out in Philippine and
foreign jurisprudence. In such cases, the proponent posits, the right to privacy of the celebrity
shall take precedence over the paparazzi’s copyright in light of the principle that a right based
on the constitution shall take precedence over a right granted by a statute, which in this case,
is the Intellectual Property Code. Furthermore, by virtue of the Berne Convention, it is within
the powers of the government, including the courts, to withhold such copyright protection
due to the violation of the celebrity’s constitutional right of privacy which is against public
policy.
106
This thesis has also shown that there is an inconsistency with copyright's limited
protection of expression and the right of publicity's broad protection of subject matter and
this conflict has further evolved due to the changes brought by social media’s dramatic shift
from user-generated content to user-found content. According to the laws on copyright, the
author of the work can control such work. However, following the doctrine of the right of
publicity, it is the subject of the work, not the author, who can control such. The proponent
posits that there is a need to find a balance between these two rights because to lean towards
copyright protection in favor of the photographer without taking into consideration the public
figure’s right of publicity would constitute unjust enrichment which is against public policy.
Jurisprudence and laws in the Philippines and in foreign jurisdictions do not squarely
address these arising conflicts and complexities therefore no clear-cut rules can be followed,
just like in many copyright infringement cases. The proponent posits that a public figure
should possess legal rights to use a paparazzi image. It would be inequitable if the subject of
a commercially valuable photograph, who provides the entirety of that commercial value,
would have no ability to enjoy personal use of the said photograph especially considering the
exploitative nature of paparazzi photography. Therefore, in order to balance these conflicting
interests a redevelopment of the concept of joint authorship and the fair use doctrine in the
Philippines is proposed.
Although the determination of the existence of copyright infringement usually
depends on the factual milieu of a given case, it is important to lay down a general
framework to set certain parameters that would guide the courts and provide the factors that
need to be considered in each case. These parameters have been well-thought out and
107
provided in the Recommendation which mainly considered Philippine laws and foreign
jurisprudence considering the current landscape brought by major technological shifts such
as smartphones and the age of social media.
B. Recommendation
First, the proponent recommends the express recognition of the right of publicity in
our law through a Supreme Court case when such an issue arises. In doing so, the requisites
under the common law right of publicity is suggested to be adopted. In order to have a cause
of action for appropriation, a plaintiff must allege that:
a. That the defendant used the identity of the plaintiff;
b. That the appropriation of the plaintiff’s name or likeness was for the advantage of the
defendant whether commercially or otherwise
c. There was lack of consent on the part of the plaintiff
d. There was injury.
Second, this thesis recommends the amendment of the Intellectual Property Code to
reflect more clearly the concept of joint authorship in Copyright laws. In order to achieve
this, it is recommended that Section 171 of the Intellectual Property Code be amended to add
a definition for “work of joint authorship”. The suggested definition, based on the US and
UK definition of the same, is as follows:

108
A "work of joint authorship" is a work prepared by the collaboration
of two or more authors with the intent that their contributions will be
merged into inseparable or interdependent parts of a unitary whole.
(See Annex A)
Furthermore, it is recommended to amend Section 178.2 to read as follows:
In the case of works of joint authorship, the co-authors shall be the
original owners of the copyright and in the absence of agreement, their
rights shall be governed by the rules on co-ownership. In determining
if an individual is a joint author of a work, the following factors
should be considered:
(a) The joint author must make an authorial contribution meaning
it is more than a de minimis contribution which depends on the
nature of the copyright work in question. The joint author must
contribute elements which express his or her own intellectual
creation.
(b) The joint authors must have possessed the requisite intent to
merge their contributions at the time they created those
contributions or the joint author’s desire to have his or her
efforts contribute to a single end at the time of the creation.
(c) The contribution must not be capable of being separated.

109
If, however, a work of joint authorship consists of parts that can be
used separately and the author of each part can be identified, the
author of each part shall be the original owner of the copyright in the
part that he has created. (See Annex A)
Finally, through a thorough study of the case and journal articles, this set of
guidelines is proposed in addressing a dispute involving copyright trolling, which is a
scenario wherein a suit is brought by a paparazzi or photographer against celebrities who post
a paparazzi's picture in social media without first paying to license the photo or without the
paparazzi’s consent. This set of guidelines can be seen as a three-tier test that may be used by
the courts in deciding whether the celebrity may be liable for copyright infringement:
TIER 1: First, there is a need to examine whether the photograph involved violates
the celebrity’s right to privacy. In order to do such, the Van Hannover Criteria must be
followed, to wit:
case-by-case basis.
110
3. Prior conduct of the person with the press needs to be considered.
If the celebrity’s right to privacy is violated, the photographer is not entitled to copyright
protection therefore, the celebrity’s sharing of the photograph in social media does not
constitute copyright infringement. On the other hand, if the celebrity’s right to privacy is not
violated, proceed to the second tier.
TIER 2: There is a need to examine whether the celebrity may be considered as a
joint author of the photograph involved. In determining such, the following factors must be
considered:
1. Contribution: Each contributor must make more than a de minimis contribution and
such contribution must be “authorial” which depends on the nature of the copyright
work in question. The question that must be answered is whether the putative joint
author has contributed elements which expressed that person's own intellectual
creation.
2. Intent: Putative co-authors must have possessed the requisite intent to merge their
contributions at the time they created those contributions. In other words, there must
111
be a showing of the contributor’s desire to have his or her efforts contribute to a
single end at the time of the creation.
3. Non-distinctiveness of contribution: The contribution must not be capable of being
separated.
In this regard, the following must be taken special consideration, considering the
circumstances surrounding the case:
a. For the element of contribution, the celebrity’s fame, image and likeness which is
protected by his or her right of publicity is the essence of the photograph, therefore,
although on its own is not copyrightable meets the de minimis contribution required.
b. For the element of intent, the intent to be joint authors when they were working on
their respective contributions of both the celebrity and the photographer must be
examined. For the celebrity’s intent, if he or she posed in the photograph the intent to
co-author is unequivocal, on the other hand, if he or she did not pose in the
photograph there still arises a prima facie evidence of his or her intent to co-author by
the fact that the celebrity later shared the said photo in social media. For the
photographer’s intent, the photographer’s act of taking the photograph is prima facie
evidence of such intent because the photographer knew that the essence of the photo
is the fame, image or likeness of the celebrity therefore there was intent to merge the
celebrity’s contribution, the fame and image, and his or her contribution, the taking of
the said photo.
If the court is presented with evidence that may rebut the presence of any of three factors
enumerated, proceed to the third tier.

112
TIER 3: There is a need to examine whether the celebrity’s posting of the photograph
in social media constitutes fair use. The fair use doctrine may be invoked both as a matter of
right and as a defense in copyright infringement cases, as in this case. To reiterate, there is
fair use if the copyrighted work is used for criticism, comment, news reporting, teaching
including limited number of copies for classroom use, scholarship, research, and similar
purposes.364 In determining whether the use made of a work in any particular case is fair use,
four factors shall be taken into consideration:
1. The purpose and character of the use, including whether such use is of a commercial
nature or is for non-profit educational purposes;
2. The nature of the copyrighted work;
3. The amount and substantiality of the portion used in relation to the copyrighted work
as a whole; and
4. The effect of the use upon the potential market for or value of the copyrighted work.
In this regard, the following must be taken special consideration, in light of the circumstances
surrounding the case:
a. As to the first factor, taking into consideration the social media age and the shift to
user-found content, if the celebrity shares the photograph with a caption this may
constitute “criticism” or “comment” and is therefore transformative. However, absent
any of these, the commercialization of the work becomes more relevant and, in this
regard, the celebrity’s indirect gains from posting in social media, absent any explicit
promotions from which the celebrity can directly have monetary gain, is indirect and
364
113
derivative thus, does not constitute commercialization which may remove it from the
ambit of fair use.
b. As to the fourth factor, the fact that the celebrity was able to search the photograph
involved in the internet and repost it would mean that any semblance of economic
harm on the part of the photographer is out of the question. It means that at that
juncture the photographer and agency has likely already made the money they will
make from that particular photograph through the sale of the exclusive license. This is
a recognition of the fast paced culture in social media and the ephemeral nature of the
paparazzi news cycle.
C. Recommendation for further study
In view of all the foregoing, it is the recommendation of the proponent that this set of
guidelines be used by the courts in deciding a case of copyright infringement dealing with
copyright trolling. While it is a possibility that some celebrities who are sued by paparazzi
for copyright infringement opt not to litigate and just settle, this set of guidelines allows said
celebrities to know their rights within and that they are not at a disadvantage just because a
license is not obtained. With this set of guidelines, the interests of the celebrity and the
paparazzi in light of the various technological advancements are all taken into consideration.
In addition, it is the recommendation of the proponent to future researchers who are
interested in tackling this issue to widen the scope and consider the latest changes in
technology. In particular, it is recommended to test similar circumstances, that is the

114
copyright of photographs but in light of a private individual’s right to privacy and right of
publicity as it has already been previously argued in other journals that both rights extend
even to private individuals.
Copyright must evolve to recognize contemporary notions of authorship, creative
possibilities and a 21st-century reality of online social networking that is fast becoming the
new norm. With the dramatically increased scale and distributive scope of works in this
digital era, copyright should encourage a potential golden age of cultural creativity rather
than constrain those possibilities.365
365
Fair Use citing Steve Collins & Sherman Young, "Fair Enough? How Technology and the Law Shape
Creative Mashups" (2017) 30(3) Australian Intellectual Property Law Bulletin 46 at 49; Debora J Halbert, The
State of Copyright: The Complex Relationship of Cultural Creation in a Globalised World (Oxford: Routledge,
2014) at p 197.
115
ANNEX A
Republic of the Philippines

HOUSE OF REPRESENTATIVES
Quezon City, Metro Manila
Seventh Congress
Second Regular Session
HOUSE BILL NO. _____
Introduced by STEFI MONIKA S. SUERO
AN ACT FURTHER AMENDING CERTAIN PROVISIONS OF REPUBLIC ACT

NO. 8293, OTHERWISE KNOWN AS THE “INTELLECTUAL PROPERTY CODE
OF THE PHILIPPINES,” AS AMENDED, AND FOR OTHER PURPOSES
Be it enacted by the Senate and House of Representatives of the Philippines in Congress

assembled:
SECTION 1. Section 171 of Republic Act No. 8293, otherwise known as the Intellectual
Property Code of the Philippines, is hereby amended to read as follows:
“ Sec. 171. Definitions. – For the purpose of this Act, the following terms have the
following meaning:
“171.14 A "work of joint authorship" is a work prepared by the collaboration

of two or more authors with the intent that their contributions will be merged
into inseparable or interdependent parts of a unitary whole.
SEC. 2. Section 178 of Republic Act No. 8293, otherwise known as the Intellectual Property
Code of the Philippines, is hereby amended to read as follows:
“ Sec. 178. Rules on Copyright Ownership. - Copyright ownership shall be governed

by the following rules:
116
“178.2. In the case of works of joint authorship, the co-authors shall be the
original owners of the copyright and in the absence of agreement, their rights
shall be governed by the rules on co-ownership. In determining if an
individual is a joint author of a work, the following factors should be
considered:
(a) The joint author must make an authorial contribution meaning it is
more than a de minimis contribution which depends on the nature of
the copyright work in question. The joint author must contribute
elements which express his or her own intellectual creation.
(b) The joint authors must have possessed the requisite intent to merge
their contributions at the time they created those contributions or the
joint author’s desire to have his or her efforts contribute to a single end
at the time of the creation.
(c) The contribution must not be capable of being separated.
If, however, a work of joint authorship consists of parts that can be used
separately and the author of each part can be identified, the author of each part
shall be the original owner of the copyright in the part that he has created.”
SEC. 3. Separability Clause. – If any provision of this Act or the application of such
provision to any person or circumstance is declared invalid, the remainder of this Act or the
application of such provision to any other person or circumstances shall not be affected by
such declaration.
SEC. 4. Repealing Clause. – All laws, decrees, ordinances, rules and regulations, executive
or administrative orders and other presidential issuances inconsistent with this Act, are
hereby repealed, amended or modified accordingly.
SEC. 5. Effectivity. – This Act shall take effect after fifteen (15) days from publication in two
(2) national newspapers of general circulation.
Approved,

Thesis 3rd Draft

Uploaded by

Copyright:

Available Formats

You might also like

Thesis 3rd Draft

Uploaded by

Document Information

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Thesis 3rd Draft

Uploaded by

Copyright:

Available Formats

1

CHAPTER ONE: INTRODUCTION

A. Background of the Study

with the latest paparazzi vs. celebrity lawsuit.1

filing suits against the celebrities.

permission and stood to make money from the shot.4

copyright infringement for posting paparazzi photographs of themselves on social media

These are just a few of the growing number of paparazzi-initiated copyright

celebrity, “including such use by reproduction in copies or phonorecords or by any other

teaching, scholarship, or research is not an infringement of copyright.” 11 Others even went as

the photographer’s work.12

exploring it as a "new and incremental way" of increasing their revenue streams.14

Therefore these recent copyright cases highlight an intersection of two significant

getting answers, more questions are left unanswered.

other public figures.

B. Statement of the Problem

exists an intersection of three significant tenets of law: a celebrity’s right to privacy, a

1. Paparazzi - photographers who follow famous people around, hoping to take

interesting or shocking photographs of them so that they can sell them to a

following acts with respect to a copyrightable subject matter.17

the person involved with commercially exploitable opportunities.18

person to be protected from “unwarranted publicity.”19

5. Public Figure - “a person who by his accomplishments, fame, or mode of living, or by

affairs, and his character, has become a 'public personage.’”20

digital fingerprint technology to search or “troll” for copyright violations of music

D. Objective of the Study

This thesis aims to accomplish the following objectives:

1. To examine the provisions of the Intellectual Property Code of the Philippines,

particularly those relating to ownership of copyright and copyright infringement;

publicity in their own image;

4. To provide guidelines for the courts in deciding whether there is copyright

infringement involved when the “celebrity-subject matter” of a photograph posts on

social media a paparazzi’s photo.

E. Significance of the Study

without their permission.”23

conceding to the realities of the modern days.

F. Scope and Limitation

proposed by this study.

research will be culled from foreign jurisprudence.

photographic works including works produced by a process analogous to photography

wherein the subject matter of such photograph is considered a public figure.

The proponent shall first examine the paparazzi-initiated copyright infringement

COPYRIGHT TROLLING: THE LEGAL SUITS BETWEEN PHOTOGRAPHERS

trolling and a number of paparazzi-initiated copyright infringement US cases will be

narrated so the current state of copyright trolling can be presented.

A. Celebrities and the Paparazzi

inventions soon shifted to discussions about entertainers.29

acquisition of celebrity status could be by birth or by skill as in the case of sportspersons,

performing histrionics in front of the cameras or an unsuccessful actor trying to be in the

cases to surpass such fame and fortune.33

The Rise of Paparazzi

B. Rise of Social Media

providing immediate, easy access, and widespread dissemination of digitalized content

game-world (World of Warcraft).46

Facebook, Twitter, YouTube and Instagram.

of a person or brand being on at least one form of social media is huge.50

reason to expect that such numbers would just keep growing.

There is a rise in participative technology epitomized by the outbreak of social media.

generations: “user-generated content” (first generation of social media) and “user-found