IPL
jurisdiction over the offense charged or the person of the accused. Petitioners
Ipap v ES et al
Mighty Corp
Sasot vs. People Case Digest
May a complaint affidavit notarized in a foreign jurisdiction be the basis
for a preliminary investigation?
Facts:
Upon complaint by NBA Properties, Inc., the NBI conducted an investigation
where it was discovered that petitioners were engaged in the manufacture,
printing, sale, and distribution of counterfeit NBA garment products. The NBI
recommended petitioners' prosecution for unfair competition under Article
189 of the Revised Penal Code.
In a Special Power of Attorney, Rick Welts, the President of NBA Properties,
Inc., constituted a local law firm as the companys attorney-in-fact, and to act
for and on behalf of the company, in the filing of criminal, civil and
administrative complaints, among others. The Special Power of Attorney was
notarized by a notary public of New York County and certified by the County
Clerk and Clerk of the Supreme Court of the State of New York. A Philippine
Consul of the Consulate General of the Philippines in New York, authenticated
the certification. The company president also executed a Complaint-Affidavit
before the same notary public of New York.
Petitioners filed a Motion to Quash the Information on the following grounds:
(1) the facts charged do not constitute an offense and (2) the court has no
argue that the fiscal should have dismissed Welts's complaint because under
the rules, the complaint must be sworn to before the prosecutor and the copy
on record appears to be only a fax transmittal.
The prosecutor filed his Comment/Opposition to the motion to quash, stating
that he has the original copy of the complaint, and that complainant has an
attorney-in-fact to represent it. The prosecutor also contended that the State
is entitled to prosecute the offense even without the participation of the
private offended party, as the crime charged is a public crime.
The trial court sustained the prosecutions arguments and denied petitioners
motion to quash.
Held:
Nowhere in the Rule 117 is there any mention of the defect in the complaint
filed before the fiscal and the complainants capacity to sue as grounds for a
motion to quash.
For another, under Section 3, Rule 112 of the 1985 Rules of Criminal Procedure,
a complaint is substantially sufficient if it states the known address of the
respondent, it is accompanied by complainant's affidavit and his witnesses and
supporting documents, and the affidavits are sworn to before any fiscal, state
prosecutor or government official authorized to administer oath, or in their
absence or unavailability, a notary public who must certify that he personally
examined the affiants and that he is satisfied that they voluntarily executed
and understood their affidavits. All these have been duly satisfied in the
complaint filed before Prosecution Attorney Aileen Marie S. Gutierrez. It must

be noted that even the absence of an oath in the complaint does not
necessarily render it invalid. Want of oath is a mere defect of form, which does
not affect the substantial rights of the defendant on the merits.
In this case, Welts's Complaint-Affidavit contains an acknowledgement by
Notary Public Nicole Brown of the State of New York that the same has been
subscribed and sworn to before her on February 12, 1998, duly authenticated
by the Philippine Consulate. While the copy on record of the complaint-
affidavit appears to be merely a photocopy thereof, Prosecution Attorney
Gutierrez stated that complainants representative will present the
authenticated notarized original in court, and Prosecutor Guray manifested
that the original copy is already on hand. It is apt to state at this point that the
prosecutor enjoys the legal presumption of regularity in the performance of
his duties and functions, which in turn gives his report the presumption of
accuracy.
Moreover, records show that there are other supporting documents from
which the prosecutor based his recommendation.
Consequently, if the information is valid on its face, and there is no showing of
manifest error, grave abuse of discretion and prejudice on the part of public
prosecutor, as in the present case, the trial court should respect such
determination.
More importantly, the crime of Unfair Competition punishable under Article
189 of the Revised Penal Code is a public crime. It is essentially an act against
the State and it is the latter which principally stands as the injured party. The
complainant's capacity to sue in such case becomes immaterial. (Sasot vs.
People, G.R. No. 143193. June 29, 2005)
KHO VS CA, GR 115758, MARCH 19, 2002
Facts:
The Elidad C. Kho (petitioner) , doing business under the name and
style of KEC Cosmetics Laboratory, is the registered owner of the copyrights
Chin Chun Su and Oval Facial Cream Container/Case and that she also has
patent rights on Chin Chun Su & Device and Chin Chun Su for medicated
cream after purchasing the same from Quintin Cheng, the registered owner in
the Supplemental Register of the Philippine Patent Office. Summerville
(respondent) advertised and sold petitioners cream products under the brand
name Chin Chun Su, in similar containers that Kho uses, thereby misleading
the public, and resulting in the decline in the business sales and income; and
that Summerville should be enjoined from allegedly infringing on the copyrights
and patents of the petitioner.
On the other hand, Summerville alleged as their defense that it is the
exclusive and authorized importer, re-packer and distributor of Chin Chun Su
products manufactured by Shun Yi Factory of Taiwan; that the said Taiwanese
manufacturing company authorized Summerville to register its trade name
Chin Chun Su Medicated Cream with the Philippine Patent Office and other
appropriate governmental agencies; that KEC Cosmetics Laboratory obtained
the copyrights through misrepresentation and falsification; and, that the
authority of Quintin Cheng, assignee of the patent registration certificate, to
distribute and market Chin Chun Su products in the Philippines had already
been terminated by the said Taiwanese Manufacturing Company.
Issue:
Whether the copyright and patent over the name and container of a
beauty cream product would entitle the registrant, Elidad Kho, to the use and
ownership over the same to the exclusion of others?
Ruling:
No. Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one another. A trademark is
any visible sign capable of distinguishing the goods (trademark) or services
(service mark) of an enterprise and shall include a stamped or marked
container of goods. In relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise. Meanwhile, the scope
of a copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from the
moment of their creation. Patentable inventions, on the other hand, refer to
any technical solution of a problem in any field of human activity which is new,
involves an inventive step and is industrially applicable.
Kho has no right to support her claim for the exclusive use of the
subject trade name and its container. The name and container of a beauty
cream product are proper subjects of a trademark inasmuch as the same falls
squarely within its definition. In order to be entitled to exclusively use the same
in the sale of the beauty cream product, the user must sufficiently prove that
she registered or used it before anybody else did. Kho’s copyright and patent
registration of the name and container would not guarantee her the right to the
exclusive use of the same for the reason that they are not appropriate subjects
of the said intellectual rights. Consequently, a preliminary injunction order
cannot be issued for the reason that the petitioner has not proven that she has
a clear right over the said name and container to the exclusion of others, not
having proven that she has registered a trademark thereto or used the same
before anyone did.
Pearl & Dean (Phil), Inc. vs. Shoemart, Inc. G.R. No. 148222, August 5,
2003
Facts: Pearl & Dean (Phil), Inc. is a corporation engaged in the manufacture
of advertising display units called light boxes. In January 1981, Pearl & Dean
was able to acquire copyrights over the designs of the display units. In 1988,
their trademark application for “Poster Ads” was approved; they used the same
trademark to advertise their light boxes.
In 1985, Pearl & Dean negotiated with Shoemart, Inc. (SM) so that the former
may be contracted to install light boxes in the ad spaces of SM. Eventually,
SM rejected Pearl & Dean’s proposal.
Two years later, Pearl & Dean received report that light boxes, exactly the
same as theirs, were being used by SM in their ad spaces. They demanded
SM to stop using the light boxes and at the same time asked for damages
amounting to P20 M. SM refused to pay damages though they removed the
light boxes. Pearl & Dean eventually sued SM. SM argued that it did not
infringe on Pearl & Dean’s trademark because Pearl & Dean’s trademark is
only applicable to envelopes and stationeries and not to the type of ad spaces
owned by SM. SM also averred that “Poster Ads” is a generic term hence it is
not subject to trademark registration. SM also averred that the actual light
boxes are not copyrightable. The RTC ruled in favor of Pearl & Dean. But the
Court of Appeals ruled in favor of SM.
Issue: Was there copyright infringement?
Ruling: None. Copyright is a statutory right, subject to the terms and conditions
specified in the statute. It can only cover the works falling within the statutory
enumeration or description. Petitioner’s application for a copyright certificate
was for a class “O” work under Section 2 (O) of PD 49 (The Intellectual
Property Decree) which was the statute then prevailing. Said section includes
"prints, pictorial illustrations, advertising copies, labels, tags and box
wraps". The light boxes cannot, by any stretch of the imagination, be
considered as either prints, pictorial illustrations, advertising copies, labels,
tags or box wraps, to be properly classified as copyrightable; what was
copyrighted were the technical drawings only, and not the light boxes
themselves.
In fine, if SMI reprinted P&D’s technical drawings for sale to the public without
license from P&D, then no doubt they would have been guilty of copyright
infringement. But this was not the case. SMI’s acts complained of by P&D were
to have units similar or identical to their light box. In such case, there was no
copyright infringement.
Moreover, during the trial, the president of P&D himself admitted that the light
box was neither a literary nor an artistic work but an engineering or marketing
invention. Obviously, there appeared to be some confusion regarding what
ought or ought not to be the proper subjects of copyrights, patents and
trademarks. In the leading case of Kho vs. Court of Appeals we ruled that
these three legal rights are completely distinct and separate from one another,
and the protection afforded by one cannot be used interchangeably to cover
items or works that exclusively pertain to the others.
Related Issues:
Issue: Was there patent infringement?
Ruling: None. P&D never secured a patent for the light boxes. It therefore
acquired no patent rights which could have protected its invention, if in fact it
really was. And because it had no patent, P&D could not legally prevent
anyone from manufacturing or commercially using the contraption. To be able
to effectively and legally preclude others from copying and profiting from the
invention, a patent is a primordial requirement. No patent, no protection.
Issue: Was there trademark infringement?
Ruling: None. The failure of P&D to secure a trademark registration for specific
use on the light boxes meant that there could not have been any trademark
infringement since registration was an essential element thereof.
Case Digest: Pharmawealth vs. Pfizer (Patent Infringement)
December 19, 2010
Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc. G.R. No.
167715, 17 November 2010
by: Alpheus D. Macalalad
Facts: Pfizer is the registered owner of a patent pertaining to Sulbactam
Ampicillin. It is marketed under the brand name “Unasyn.” Sometime in
January and February 2003, Pfizer discovered that Pharmawealth submitted
bids for the supply of Sulbactam Ampicillin to several hospitals without the
Pfizer’s consent. Pfizer then demanded that the hospitals cease and desist
from accepting such bids. Pfizer also demanded that Pharmawealth
immediately withdraw its bids to supply Sulbactam Ampicillin. Pharmawealth
and the hospitals ignored the demands.
Pfizer then filed a complaint for patent infringement with a prayer for
permanent injunction and forfeiture of the infringing products. A preliminary
injunction effective for 90 days was granted by the IPO’s Bureau of Legal
Affairs (IPO-BLA). Upon expiration, a motion for extension filed by Pfizer was
denied. Pfizer filed a Special Civil Action for Certiorari in the Court of Appeals
(CA) assailing the denial.
While the case was pending in the CA, Pfizer filed with the Regional Trial
Court of Makati (RTC) a complaint for infringement and unfair competition,
with a prayer for injunction. The RTC issued a temporary restraining order,
and then a preliminary injunction.
Pharmawealth filed a motion to dismiss the case in the CA, on the ground of
forum shopping. Nevertheless, the CA issued a temporary restraining order.
Pharmawealth again filed a motion to dismiss, alleging that the patent, the
main basis of the case, had already lapsed, thus making the case moot, and
that the CA had no jurisdiction to review the order of the IPO-BLA because
this was granted to the Director General. The CA denied all the motions.
Pharmawealth filed a petition for review on Certiorari with the Supreme
Court.
Issues:
a) Can an injunctive relief be issued based on an action of patent
infringement when the patent allegedly infringed has already lapsed?
b) What tribunal has jurisdiction to review the decisions of the Director of
Legal Affairs of the Intellectual Property Office?
c) Is there forum shopping when a party files two actions with two seemingly
different causes of action and yet pray for the same relief?
Held:
a) No. The provision of R.A. 165, from which the Pfizer’s patent was based,
clearly states that "[the] patentee shall have the exclusive right to make, use
and sell the patented machine, article or product, and to use the patented
process for the purpose of industry or commerce, throughout the territory of
the Philippines for the term of the patent; and such making, using, or selling
by any person without the authorization of the patentee constitutes
infringement of the patent."
Clearly, the patentee’s exclusive rights exist only during the term of the
patent. Since the patent was registered on 16 July 1987, it expired, in
accordance with the provisions of R.A. 165, after 17 years, or 16 July 2004.
Thus, after 16 July 2004, Pfizer no longer possessed the exclusive right to
make, use, and sell the products covered by their patent. The CA was wrong
in issuing a temporary restraining order after the cut-off date.
b) According to IP Code, the Director General of the IPO exercises exclusive
jurisdiction over decisions of the IPO-BLA. The question in the CA concerns
an interlocutory order, and not a decision. Since the IP Code and the Rules
and Regulations are bereft of any remedy regarding interlocutory orders of
the IPO-BLA, the only remedy available to Pfizer is to apply the Rules and
Regulations suppletorily. Under the Rules, a petition for certiorari to the CA is
the proper remedy. This is consistent with the Rules of Court. Thus, the CA
had jurisdiction.
c) Yes. Forum shopping is defined as the act of a party against whom an
adverse judgment has been rendered in one forum, of seeking another (and
possibly favorable) opinion in another forum (other than by appeal or the
special civil action of certiorari), or the institution of two (2) or more actions or
proceedings grounded on the same cause on the supposition that one or the
other court would make a favorable disposition.
The elements of forum shopping are: (a) identity of parties, or at least such
parties that represent the same interests in both actions; (b) identity of rights
asserted and reliefs prayed for, the reliefs being founded on the same facts;
(c) identity of the two preceding particulars, such that any judgment rendered
in the other action will, regardless of which party is successful, amount to res
judicata in the action under consideration. This instance meets these
elements.
The parties are clearly identical. In both the complaints in the BLA-IPO and
RTC, the rights allegedly violated and the acts allegedly violative of such
rights are identical, regardless of whether the patents on which the
complaints were based are different. In both cases, the ultimate objective of
Pfizer was to ask for damages and to permanently prevent Pharmawealth
from selling the contested products. Relevantly, the Supreme Court has
decided that the filing of two actions with the same objective, as in this
instance, constitutes forum shopping.

Owing to the substantial identity of parties, reliefs and issues in the IPO and
RTC cases, a decision in one case will necessarily amount to res judicata in
the other action.
In-and-out Burger
Joaquin v Drilon
FACTS:
Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate
of Copyright dated January 28, 1971 of Rhoda and Me, a dating game show.
Petitioner BJPI submitted to the National Library an addendum to its certificate
of copyright specifying the shows format and style presentation.
In 1991, petitioner Francisco Joaquin, Jr., president of BJPI, protested the
airing of the show It’s a Date through a letter sent to Grabriel M. Zosa,
president and general manager of IXL Productions, Inc., the producer of It’s a
Date. Petitioner Joaquin informed respondent Zosa of a copyright to Rhoda
and Me and demanded that IXL discontinue airing It’s a Date. Respondent
Zosa apologized to Joaquin, but continued airing the show. Zosa also sought
to register IXLs copyright to the first episode of It’s a Date for which a certificate
of copyright was issued by the National Library on August 14, 1991.
With these developments, petitioners herein filed a complaint, as a result
of which an information for violation of P.D. No. 49 were filed.
ISSUE: Whether or not respondent committed copyright infringement, against
petitioners’ dating game show, “Rhoda and Me”?
RULING: NO
PD. No. 49 (Decree On Intellectual Property), Section 2 - in
enumerating what are subject to copyright, refers to finished works, and not to
concepts. The copyright does not extend to an idea, procedure, process,
system, method of operation, concept, principle, or discovery, regardless of
the form in which it is described, explained, illustrated, or embodied in such
work. Thus, the new Intellectual Property Code of the Philippines provides:
SEC. 175. Unprotected Subject Matter. - Notwithstanding the
provisions of Sections 172 and 173, no protection shall
extend, under this law, to any idea, procedure, system,
method or operation, concept, principle, discovery or mere
data as such, even if they are expressed, explained,
illustrated or embodied in a work; news of the day and other
miscellaneous facts having the character of mere items of
press information; or any official text of a legislative,
administrative or legal nature, as well as any official
translation thereof.
Furthermore, to begin with, the format of a show is not copyrightable.
Section 2 of P.D. No. 49, enumerates the classes of work entitled to copyright
protection (this provision is substantially the same as Section 172 of the
Intellectual Property Code of the Philippines -R.A. No. 8293). The format or
mechanics of a television show is not included in the list of protected works in
Section 2 of P.D. No. 49. For this reason, the protection afforded by the law
cannot be extended to cover them.
ABS-CBN BROADCASTING CORP. vs PHILIPPINE MULTI-MEDIA SYSEM
INC. (PMSI)
GR No. 175769-70
Facts:
ABS-CBN is licensed to engage in tv and radio broadcasting. It broadcasts tv
programs through wireless means to Metro Manila and by satellite to provincial
stations. The programs aired over Channel 2 and Channel 23 are either
produced by or purchased from other producers by ABS-CBN. It also owns
regional stations which pattern their programming in accordance with the
demands of the region thus, tv programs shown in Metro Manila are not
necessarily shown in other provinces.
PMSI is the operator of Dream Broadcasting System. It delivers direct-to-home
(DTH) television via satellite to its subscriber. It was granted a legislative
franchise and was given a Provisional Authority by NTC to operate nationwide
DTH satellite service. Part of the program it offered are ABS-CBN Channel 2
and 23.
ABS-CBN demanded PMSI to cease and desist from rebroadcasting their
channels, PMSI replied that the rebroadcasting was in accordance with the
obligation under a memorandum (MC No. 4-08-88) which reguires all cable tv
operators to carry the television signals of the authorized tv broadcast stations.
ABS-CBN filed with the IPO a complaint for Violation of Laws involving
Property Rights with TRO/injunction alleging that PMSI’s unathorized
rebroadcasting infringed their broadcasting rights and copyright. The Bureau
of Legal Affairs of IPO rendered a decision ordering PMSI to permanently
cease and desist from rebroadcasting. PMSI filed an appeal with the Director
General of IPO and it rendered a decision in favor of PMSI. CA affirmed the
decision of the Director General.
Issues:
1. Did PMSI infringe ABS-CBN’s broadcasting rights and copyright under the
Intellectual Property Code?
2. Does Memorandum Circular exclude DTH satellite television operators?
Ruling:
(1) PMSI does not perform the function of a broadcasting organization.
Broadcasting is the transmission by wireless means for the public reception of
sounds or of images or of representations thereof; such transmission by
satellite is also broadcasting where the means for decrypting are provided to
the public by the broadcasting organization or with its consent. (Section 202.7
of the IP Code)
Two instances where there is broadcasting:
1. The transmission by wireless means for the public reception of sounds or
of images or of representations thereof; and
2. The transmission by satellite for the public reception of sounds or of
images or of representations thereof where the means for decrypting are
provided to the public by the broadcasting organization or with its consent.
DTH is a satellite-based so it shall fall under the second category. The
elements of such category are as follows:
1. There is transmission of sounds or images or of representations thereof;
2. The transmission is through satellite;
3. The transmission is for public reception; and
4. The means for decrypting are provided to the public by the broadcasting
organization or with its consent.
Section 202.7 of the IP Code presupposes that the origin of the signals is the
broadcaster. PMSI is not the origin nor does it claim to be the origin of the
programs broadcasted by ABS-CBN. PMSI merely carried the existing signals
of ABS-CBN and when subscribers view programs of Channel 2 and 23, they
know that the origin was ABS-CBN.
When a broadcaster transmits, such as ABS-CBN, the signals are dispersed
in the air and anybody may receive the signal and is not required to subscribe
or to pay. The dispersal of signals in the air is possible only through wireless
means while in wire-based transmissions, such as cable television, the use of
wire in transmitting signals limits the recipients to those who are connected
and the service provider, may choose its subscribers. Hence, PMSI
transmission of signal via satellite service cannot be considered as
broadcasting
Rebroadcasting is the simultaneous broadcasting by one broadcasting
organization of the broadcast of another broadcasting organization. (Article
3(g) of the International Convention for the Protection of Performers,
Producers of Phonograms and Broadcasting Organizations)
ABS-CBN creates and transmits its own signals; PMSI merely carries such
signals which the viewers receive in its unaltered form. PMSI does not
produce, select, or determine the programs to be shown in Channel 2 and 23.
It merely retransmits the same in accordance with memorandum. Clearly,
PMSI does not perform the functions of a broadcasting organization; thus, it
cannot be said that it is engaged in rebroadcasting Channels 2 and 23.
(2) Memorandum Circular include Direct-to-home satellite television
operators.
Director General correctly found that PMSI’s services are similar to a cable
television system because the services it renders fall under the cable
retransmission. Cable retransmission can either be simultaneous or a
reproduction, they might be unaltered or altered through replacement of
commercials. In general, the term retransmission seems to be reserved for
such transmissions which are both simultaneous and unaltered.
While, the Rome Convention gives broadcasting organizations the right to
authorize or prohibit the rebroadcasting of its broadcast, however, this
protection does not extend to cable retransmission. The retransmission of
ABS-CBNs signals by PMSI which functions essentially as a cable television
does not therefore constitute rebroadcasting in violation of the former’s
intellectual property rights under the IP Code.
FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC. vs.
BENJAMIN TAN, G.R. No. L-36402, March 16, 1987
Facts: Plaintiff-appellant is the owner of certain musical compositions among which are
the songs entitled: "Dahil SaIyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang"
and "The Nearness Of You." It filed a complaint with the lower court for infringement of
copyright against defendant - allowing the playing in defendant-appellee's restaurant of said
songs copyrighted in the name of the former. Defendant-appellee countered that the
complaint states no cause of action. While not denying the playing of said
copyrighted compositions in his establishment, appellee maintains that the mere singing and
playing of songs and popular tunes even if they are copyrighted do not constitute an
infringement under the provisions of Section 3 of the Copyright Law.
Issue:
1. Whether or not the playing and signing of musical compositions which have been
copyrighted under the provisions of the Copyright Law (Act 3134) inside the
establishment of the defendant-appellee constitute a public performance for profit
within the meaning and contemplation of the Copyright Law of the Philippines
2. Whether or not appellee can be held liable assuming that there were indeed public
performances for profit
Ruling: No. It has been held that "The playing of music in dine and dance establishment which
was paid for by the public in purchases of food and drink constituted "performance for profit
“within a Copyright Law." Thus, it has been explained that while it is possible
in such establishments for the patrons to purchase their food and drinks and
at the same time dance to the music of the orchestra, the music is furnished and used
by the orchestra for the purpose of inducing the public to patronize the establishment
and pay for the entertainment in the purchase of food and drinks. The defendant
conducts his place of business for profit, and it is public; and the music is performed for
profit. Nevertheless, appellee cannot be said to have infringed upon the
Copyright Law.
Appellee's allegation that the composers of the contested musical compositions waived their
right in favor of the general public when they allowed their intellectual creations to become
property of the public domain before applying for the corresponding copyrights for the same is
correct. The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative
Order No. 3 (as amended, dated September 18, 1947) entitled 'Rules of Practice in the
Philippines Patent Office relating to the Registration of Copyright Claims' promulgated
pursuant to Republic Act165, provides among other things that an intellectual creation should
be copyrighted thirty (30) days after its publication, if made in Manila, or within the
(60) days if made elsewhere, failure of which renders such creation public property."
Indeed, if the general public has made use of the object sought to be copyrighted for thirty (30)
days prior to the copyright application the law deems the object to have been donated to the
public domain and the same can no longer be copyrighted. Under the circumstances, it is clear
that the musical compositions in question had long become public property, and are therefore
beyond the protection of the Copyright Law.
Filscap v Tan
PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs.
FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC.
G.R. No. 131522, July 19, 1999
FACTS: Pacita Habana et al., are authors and copyright owners of duly issued
of the book, College English For Today (CET). Respondent Felicidad Robles
was the author of the book Developing English Proficiency (DEP). Petitioners
found that several pages of the respondent's book are similar, if not all together
a copy of petitioners' book. Habana et al. filed an action for damages and
injunction, alleging respondent’s infringement of copyrights, in violation of P.D.
49. They allege respondent Felicidad C. Robles being substantially familiar
with the contents of petitioners' works, and without securing their permission,
lifted, copied, plagiarized and/or transposed certain portions of their book CET.
On the other hand, Robles contends that the book DEP is the product of her
own intellectual creation, and was not a copy of any existing valid copyrighted
book and that the similarities may be due to the authors' exercise of the "right
to fair use of copyrighted materials, as guides."
The trial court ruled in favor of the respondents, absolving them of any
liability. Later, the Court of Appeals rendered judgment in favor of respondents
Robles and Goodwill Trading Co., Inc. In this appeal, petitioners submit that
the appellate court erred in affirming the trial court's decision.
ISSUE: Whether Robles committed infringement in the production of DEP.
HELD: A perusal of the records yields several pages of the book DEP that are
similar if not identical with the text of CET. The court finds that respondent
Robles' act of lifting from the book of petitioners substantial portions of
discussions and examples, and her failure to acknowledge the same in her
book is an infringement of petitioners' copyrights.
In the case at bar, the least that respondent Robles could have done was to
acknowledge petitioners Habana et. al. as the source of the portions of DEP.
The final product of an author's toil is her book. To allow another to copy the
book without appropriate acknowledgment is injury enough.
G.R. No. 147043. June 21, 2005
NBI MICROSOFT CORPORATION et al v HWANG
FACTS:In May 1993, Microsoft Corporation and Beltron Computer Philippines,
Inc. entered into a Licensing Agreement. Under Section 2(a) of the Agreement,
Microsoft authorized Beltron, for a fee, to:
1. Reproduce and install no more than one copy of Windows on each
Customer System hard disk;
2. Distribute directly or indirectly and license copies of Windows (reproduced
as per Section 2 of the Agreement and/or acquired from an Authorized
Replicator or Authorized Distributor.
Their agreement allowed either party to terminate if one fails to comply with
their respective obligations. Microsoft terminated the Agreement in June 1995
by reason of Beltron’s non-payment of royalties. Later, Microsoft learned that
Beltron was illegally copying and selling copies of Windows. Microsoft then
sought the assistance of the National Bureau of Investigation. NBI agents
made some purchase from Beltron where they acquired a computer unit pre-
installed with Windows, 12 windows installer CDs packed as Microsoft
products. The agents were not given the end-user license agreements, user
manuals, and certificates of authenticity for the products purchased. They
were given a receipt which has a header of “T.M.T.C. (Phils) Inc. BELTRON
COMPUTER”. TMTC stands for Taiwan Machinery Display and Trade Center.
A search warrant was subsequently issued where 2,831 CDs of Windows
installers, among others, were seized. Based on the items seized from Beltron,
Microsoft filed a case of copyright infringement against Beltron and TMTC as
well as their officers (Judy Hwang et al) before the Department of Justice
(DOJ). Beltron, in its counter-affidavit, argued the following:
1. That Microsoft’s issue with Beltron was really just to have leverage in forcing
Beltron to pay the unpaid royalties; and that Microsoft should have filed a
collection suit.
2. That the computer unit allegedly purchased by the NBI agents from them
cannot be decisively traced as coming from Beltron because the receipt issued
to the agents did not list the computer unit as one of the items bought.
3. That the 12 installers purchased by the agents which are actually listed in
the receipt were not manufactured by Beltron but rather they were genuine
copies purchased by TMTC from an authorized Microsoft seller in Singapore.
4. That the 2,831 installers seized from them were not a property of Beltron
but rather they were left to them by someone for safekeeping.
The DOJ secretary agreed with Beltron and dismissed the case. The Secretary
ruled that the issue of the authority of Beltron to copy and sell Microsoft
products should first be resolved in a civil suit. Microsoft appealed the decision
of the DOJ secretary before the Supreme Court. Meanwhile, Beltron filed a
motion to quash the search warrant before the RTC that issued the same. The
RTC partially granted the quashal. The Court of Appeals reversed the RTC.
Hwang et al did not appeal the CA decision.
ISSUE: Whether the DOJ acted with grave abuse of discretion in not finding
probable cause to charge respondents with copyright infringement and unfair
competition.
HELD:
YES. Under section 5 of PD 49 enumerates the rights vested exclusively on
the copyright owner. The gravamen of copyright infringement is not merely the
unauthorized manufacturing of intellectual works but rather the unauthorized
performance of any of the acts covered by Section 5. Hence, any person who
performs any of the acts under Section 5 without obtaining the copyright
owners prior consent renders himself civilly and criminally liable for copyright
infringement.
The DOJ committed grave abuse of discretion when it refused to pass upon
the relevance of the pieces of evidence because it contended that: (1) the
obligations between the parties is civil and not criminal considering that
Microsoft merely sought the issuance of Search Warrant Nos. 95-684 and 95-
685 to pressure Beltron to pay its obligation under the Agreement, and (2) the
validity of Microsofts termination of the Agreement must first be resolved by
the proper court. Also, the DOJ ruled that Microsoft failed to present evidence
proving that what were obtained from respondents were counterfeit Microsoft
products.
First. Being the copyright and trademark owner of Microsoft software,
Microsoft acted well within its rights in filing the complaint under I.S. No. 96-
193 based on the incriminating evidence obtained from respondents. Hence,
it was highly irregular for the DOJ to hold, based on the RTC Order of 19 July
1996, that Microsoft sought the issuance of Search Warrant Nos. 95-684 and
95-685, and by inference, the filing of the complaint under I.S. No. 96-193,
merely to pressure Beltron to pay its overdue royalties to Microsoft.
Significantly, in its Decision in CA-G.R. CV No. 54600 dated 29 November
2001, the Court of Appeals set aside the RTC Order of 19 July 1996.
Second. There is no basis for the DOJ to rule that Microsoft must await a prior
resolution from the proper court of (sic) whether or not the [Agreement] is still
binding between the parties. Beltron has not filed any suit to question
Microsofts termination of the Agreement.
Third. The Court finds that the 12 CD-ROMs (installer and non-installer) and
the CPU with pre-installed Microsoft software Sacriz and Samiano bought from
respondents and the 2,831 Microsoft CD-ROMs seized from respondents
suffice to support a finding of probable cause to indict respondents for
copyright infringement under Section 5(A) in relation to Section 29 of PD 49
for unauthorized copying and selling of protected intellectual works. The
illegality of the non-installer CD-ROMs purchased from respondents and of the
Microsoft software pre-installed in the CPU is shown by the absence of the
standard features accompanying authentic Microsoft products, namely, the
Microsoft end-user license agreements, user’s manuals, registration cards or
certificates of authenticity.
From the foregoing evidences, it clearly suffices to support a finding of
probable cause to indict respondents for violation of copyright infringement
and unfair competition.
Thus, the petition for certiorari of the Resolutions of the Department of Justice
dismissing for lack of merit and insufficiency of evidence petitioner Microsoft
Corporations complaint against respondents for copyright infringement and
unfair competition is granted.
Manly Sportswear v. dadodette, GR 165306, Sepy. 20, 2001
Facts:
On the basis of information that respondent Dadodette Enterprises were in
possession of sporting goods or articles, the copyright of which belonged to
petitioner Manly, the NBI applied for search warrant before the trial court which
ruled on its issuance. Thereafter, respondent moved to quash the warrant on
the ground that petitioner’s goods are ordinary and not among the works
protected under the IP Code. The trial court annulled the warrant holding that
there were certificates of registration over the same goods issued earlier than
that of petitioner negating its claim that the goods were original works entitled
to copyright protection. CA affirmed.
Issue:
Whether or not the certificates of registration issued to petitioner is proof of its
ownership.
Ruling: NO.
Besides, no copyright accrues in favor of MANLY despite issuance of the
certificates of registration and deposit pursuant to Section 2, Rule 7 of the
Copyrights Safeguards and Regulations which states:
Sec. 2 Effects of Registration and Deposit of Work. The registration and
deposit of the work is purely for recording the date of registration and deposit
of the work and shall not be conclusive as to copyright ownership or the term
of the copyrights or the rights of the copyright owner, including neighboring
rights.
At most, the certificates of registration and deposit issued by the National
Library and the Supreme Court Library serve merely as a notice of recording
and registration of the work but do not confer any right or title upon the
registered copyright owner or automatically put his work under the protective
mantle of the copyright law. It is not a conclusive proof of copyright ownership.
As it is, non-registration and deposit of the work within the prescribed period
only makes the copyright owner liable to pay a fine.
Campbell v. Acuff-Rose Music, Inc.
Brief Fact Summary. 2 Live Crew (Defendant) argued that its parody of Roy
Orbison’s song, “Oh, Pretty Woman,” was a fair use within the meaning of the
Copyright Act of 1976. The appellate court, however, concluded the parody
was presumptively unfair because of its commercial nature.
Facts. 2 Live Crew (Defendant) recorded a rap parody of the hit by Roy
Orbison, “Oh, Pretty Woman.” Acuff-Rose (Plaintiff), the copyright holder of the
original song, brought suit against 2 Live Crew (Defendant) for copyright
infringement. The district court granted summary judgment for 2 Live Crew
(Defendant), concluding that its song made fair use of Orbison’s original. The
appeals court reversed and remanded. It concluded that every commercial use
is presumptively unfair and the blatantly commercial purpose of 2 Live Crew’s
(Defendant) version prevented it from constituting fair use. Defendant
appealed.
Issue. For fair use purposes, is the commercial purpose of a work the decisive
element of the inquiry into the purpose and character of the work?
Held. (Souter, J.) No. For fair use purposes, the commercial purpose of a work
is only one element of the inquiry into the purpose and character of the work.
The other elements to be considered are the nature of the copyrighted work,
the amount and substantiality of the portion used in relation to the copyrighted
work as a whole, and the effect of the use upon the potential market for the
copyrighted work. In this case, it was error for the court of appeals to conclude
that the commercial nature of 2 Live Crew’s (Defendant) parody rendered it
presumptively unfair. No such evidentiary presumption exists for either the first
factor (the character and purpose of the use) or the fourth factor (market harm).
The court also erred in holding that 2 Live Crew (Defendant) had copied
excessively from the Orbison original, considering the satiric purpose of their
version. Reversed and remanded to evaluate the amount taken from the
original, its transformative elements, and potential for market harm.
Universal City Studios v. Sony, 464 US 417 (1984)
Facts. Sony Corp. (Sony) (Defendant) marketed Betamax videocassette
recorders (VCRs or VTRs), which allowed home recording of televised
programs. Several movie studios (Plaintiff), holders of copyrights on televised
movies and other televised programs, brought an action for contributory
copyright infringement on the theory that Defendant was contributorily liable
for infringement by consumers of VTRs of the studios’ (Plaintiff) copyrighted
works on the basis of Sony’s (Defendant) marketing and distribution of the
VTRs. The district court, finding, inter alia, that no Sony (Defendant) employee
had either direct involvement with the allegedly infringing activity or direct
contact with purchasers of Betamax who recorded copyrighted works off-the-
air, and that there was no evidence that any of the copies made by individuals
were influenced or encouraged by Defendant’s advertisements, held that
Defendant was not liable for direct or contributory copyright infringement. The
court of appeals reversed. The United States Supreme Court granted
certeriori.
Issue. Is one who supplies the way to accomplish an infringing activity and
encourages that activity through advertisement liable for copyright
infringement?
Held.(Stevens, J.) No. One who supplies the way to accomplish an infringing
activity and encourages that activity through advertisement is not liable for
copyright infringement. The protection given to copyrights is wholly statutory,
and, in a case like this, in which Congress has not plainly marked the course
to be followed by the judiciary, the Court must be circumspect in construing
the scope of rights created by a statute that never contemplated such a
calculus of interests based on technological advances. In proceeding, the
Court must balance the encouraging and rewarding of authors to create new
works with the public good. This case does not fall in the category of those in
which it is manifestly just to impose vicarious liability because the “contributory
infringer was in a position to control the use of copyrighted works by others
and had authorized the use without permission from the copyright owner. In
this case, the only contact between Defendant and the users of the VTR’s
occurred at the moment of sale. However, there is no precedent for imposing
vicarious liability on the theory that Sony (Defendant) sold the VTR’s with
constructive knowledge that its customers might use the equipment to make
unauthorized copies of copyrighted material. The sale of copying equipment,
like the sale of other articles of commerce, does not constitute contributory
infringement if the product is widely used for legitimate, unobjectionable
purposes, or actually, is merely capable of substantial noninfringing uses. In
this case, a large portion of the public’s use of VTRs does not implicate
copyright at all, and also time-shifting, the most common use for the Betama,
constitutes a fair use. Reversed.
DR. SEUSS ENTERPRISES V Penguin Books
Facts:
Defendants, Penguin Books and Dove Audio, Inc., were book
publishers who sought to publish and distribute a book titled The Cat NOT in
the Hat! A Parody by Dr. Juice, a rhyming summary of the O.J. Simpson trial.
Plaintiff Dr. Seuss Enterprises, LP owned most of the copyright and trademark
rights for the children’s books written and illustrated by Theodor S. Geisel
under the pseudonym “Dr. Seuss,” including The Cat in the Hat. Defendants
were not authorized to use any element of plaintiff’s original books and did not
attempt to obtain permission. Defendants’ book had many similarities to the
original work, including rhyme scheme, thematic and narrative elements, and
certain chief character identifiers, such as the distinctive red and white striped
hat. Plaintiff filed suit, and the district court granted a preliminary injunction.
Defendants filed an interlocutory appeal.
Issue:
Whether unauthorized copying of an original work’s artistic style, plot,
themes, and certain key character elements qualified as fair use.
Ruling:
No. The Ninth Circuit concluded that the district court’s finding that
plaintiff had shown a likelihood of success on the merits was not clearly
erroneous, in light of fair use analysis of defendants’ work, and affirmed the
preliminary injunction. First, the court found that the use was not
transformative. The work was not a parody, because it did not hold up Dr.
Seuss’s style, but merely mimicked it to attract attention or avoid the difficult
work of developing original material. Furthermore, according to the court there
was “no effort to create a transformative work with ‘new expression, meaning,
or message.’” Second, the court found that the creative, imaginative and
original nature of plaintiff’s work weighed against fair use. Third, the court
found that defendant had copied substantial portions, because the character
of the cat, used in both works, was the “highly expressive core” of plaintiff’s
work. Other principal thematic and narrative elements were also copied.
Finally, because the use was commercial and non-transformative, harm to the
market for the original work could be more readily inferred. Further, because
fair use is an affirmative defense, and defendants failed to submit evidence on
the fourth factor, this disentitled defendants from relief from the preliminary
injunction.
Castle Rock Entertainment vs. Carol Publishing
Facts: Plaintiff Castle Rock is the producer and copyright owner of the Seinfeld
televisions series. Defendant Carol Publishing is the publisher of The Seinfeld
Aptitude Test (The SAT), a book containing trivia questions and answers about
Seinfeld. Every question and correct answer has its source from a fictional
moment in the show. The name “Seinfeld” appears on the front and back
covers of The SAT, and pictures of the principal characters are on the cover
and within the book. The writer of The SAT created the book by taking notes
while watching Seinfeld at the time it was aired, and as recorded by her or her
friends. Castle Rock has been selective in marketing products associated with
the show, rejecting numerous proposals from publishers seeking approval for
varying products related to the show. Castle Rock has licensed one Seinfeld
book and one CD-ROM, the CD-ROM allegedly might include a trivia bank.
The United States District Court for the Southern District of New York granted
plaintiff’s motion for summary judgment, denied defendant’s cross motion for
summary judgment, and awarded Castle Rock $403,000 for copyright
infringement. The district court also enjoined the defendants from publishing
The SAT.
Issues: 1. Whether The SAT takes sufficient protected expression from the
original such that in the absence of any defenses the book would
infringe the copyright in Seinfeld.
2. Whether The SAT constitutes fair use of the Seinfeld television
series.
Ruling: The SAT unlawfully copies form Seinfeld and that its copying does not
constitute fair use. The judgment of the district court is affirmed. The court
begins by deciding if there’s copyright infringement by laying out the two part
test used in analyzing copyright infringement. First, a plaintiff must show that
his work was actually copied, and next he must show that the copying amounts
to an improper or unlawful appropriation. The court points out that it’s
undisputed the work was copied because the writer of The SAT admitted she
copied from the show. Next as to deciding whether the copying is unlawful
appropriation, the court looks to see if the copying is quantitatively and
qualitatively sufficient to support infringement occurred. As to the quantitative
element, the court concludes that The SAT crossed the de minimis threshold
by copying not a few but 643 fragments from the television series. For the
qualitative element the court finds that The SAT copies creative expressions,
and the alleged “facts” that are coped are really fictitious expressions created
by the Seinfeld authors.
The defendants claim that even if copying Seinfeld constitutes copyright
infringement, The SAT is still a fair use of the show. The court says to
determine whether the use made of a work is fair use, four factors must be
considered: 1) the purpose and character of the use, 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. First, the court finds
that The SAT’s use is commercial and this weighs against a finding of fair use.
Also The SAT’s transformative purpose is too slight and non-existent. Next,
the fictional nature of the copyrighted work remains significant, where the
secondary use is at best minimally transformative thus the second factors
favors the plaintiff. Thirdly, in deciding about the amount and substantiality of
the portion of the copyrighted work used, the question must focus on whether
the extent of the copying is consistent with or more than necessary to further
the purpose and character of the use. The court finds that The SAT does not
serve a critical or otherwise transformative purpose. Finally, as to the effect of
the use upon the potential market, Seinfeld’s audience grew after the
publication of The SAT, and Castle Rock has evidenced no interest in
publishing Seinfeld trivia quiz books and only minimal interest in publishing
Seinfeld related books, thus the fourth factor also falls to the plaintiff.
Monster Communications, Inc. v. Turner Broad. System., Inc.,
935 F. Supp. 490 (S.D.N.Y. 1996)
FACTS:
Plaintiff Monster Communications, Inc. owned the film rights for the
movie “When We Were Kings” (Kings,) that contained historic footage
documenting the 1974 title boxing match, often called the “Rumble in the
Jungle,” between Mohammed Ali and George Foreman.
Defendant Turner Broadcasting System, Inc. made the documentary
“Ali—The Whole Story” (Story), which contained “a number of film clips,
aggregating approximately between forty-one seconds and two minutes, that
appear in Kings and allegedly are owned by Monster.”
 Plaintiff sued Turner for infringing its copyright in the historic film
footage, seeking to enjoin the company from exhibiting the documentary.
ISSUE:
Whether defendant would be likely to establish that its use of plaintiff’s historic
film footage in a documentary constituted fair use?
RULING: YES.
The court denied plaintiff’s motion for injunctive relief because it
concluded that defendant was likely to prevail on its argument that use of the
historic footage in its documentary was a fair use.
In reaching that conclusion, the court found that defendant’s work,
while commercial in nature, “undeniably constituted a combination of
comment, criticism, scholarship and research.” The court also determined that
the amount used weighed in favor of finding fair use because the footage used
was not the focus of defendant’s documentary.
Additionally, the court found that defendant’s use of the footage was
unlikely to harm the market for plaintiff’s work because the use was “too few,
too short, and too small in relation to the whole. If the broadcast of [Story]
impacts [Kings’] reception, it almost surely will be as a result of their common
subject, not the minute or so of common footage.”
Finally, the historic nature of the allegedly infringed films clips also
supported a finding of fair use
Kelly vs Arriba soft
Facts: Arriba Soft Corporation (defendant), operated a search engine for
images. The Arriba search returned results as thumbnail versions of relevant
images from websites across the Internet. If a user clicked on a thumbnail, a
webpage would open showing the full-size photograph from the website,
absent the surrounding website content. The result page showing the full-size
image would also show the link to the website where the image was found and
a notice that users should check for use restrictions on the original website
before copying. Arriba’s search engine indexed 35 images published by Kelly
(plaintiff) on his websites. Kelly objected to Arriba’s thumbnail display of his
images, and Arriba removed the images from its index. Kelly then sued
Arribasoft, alleging copyright infringement and violation of 17 U.S.C. § 1202(b)
for removal of the images’ copyright-management information (CMI).
Arribasoft moved for summary judgment. The District Court found that Kelly
had established a prima facie case of copyright infringement based on Arriba’s
unauthorized reproduction and display of Kelly’s works, but that this
reproduction and display constituted“fair use” under Section 107 of the
Copyright Act. Kelly appealed that decision, and the Ninth Circuit Court of
Appeal affirmed the decision.
Issue: Was there a copyright infringement?
Ruling: None. The creation and use of the thumbnails in the search engine
constitutes “fair use”.
To bring a lawsuit for copyright infringement, individuals must first show that
they hold a copyright on works which were copied by another party. The
Photographer met this requirement, and so the court had to determine if the
"fair use" exception found in the federal Copyright Act permitted the Website's
copying of the Photographer's works. The Copyright Act sets forth four factors
to evaluate in determining whether a copying constitutes "fair use:"
1. the purpose and character of the use, including whether the use is for
commercial purposes or is for nonprofit educational purposes;
2. the nature of the copyrighted work
3. the amount and substantiality of the portion used in relation to the
copyrighted work as a whole;
4. the effect of the use upon the potential market for, or value of, the
copyrighted work.
Applying the first factor, the court found that the use of the images by the
Website had very limited commercial purpose, since the Website was not
trying to profit from the use of the images. The court also found that the
creation of thumbnail shots was transformative, because it was using the
smaller images for purposes of displaying search results. This reduction made
it unlikely that anyone would use the thumbnail images for any other purpose,
since enlargement of the thumbnail images would cause the image to become
distorted. Therefore, anyone who was interested in the full-size image would
still need to download the original. Thus, the court found that the first factor
favored the Website.
The court found that the second factor, which considers the nature of the work,
favored the Photographer, since photographs are the type of creative works
that the Copyright Act is designed to protect. Looking the third factor (amount
of copyrighted work used), the court found that the Website's copying of the
work did not favor either party because, even though the Website did copy the
entire image, it used the image in a manner which still required the user to
seek out the original image. Finally, the transforming of the images into
thumbnail shots did not harm the market for the Photographer's works and so
favored the Website. The court found that two of the four factors favored the
Website, one favored the Photographers, and one factor was neutral.
Therefore, the court ruled that the Website's creation of thumbnail shots
constituted a fair use
Kienitz v. Sconnie Nation, LLC
766 F.3d 756 (7th Cir. 2014)
Cert. denied 135 S. Ct. 1555 (2015)
Facts: Plaintiff photographer Michael Kienitz owned the copyright to a 2011
photo
of Madison, Wisconsin Mayor Paul Soglin. Defendant Sconnie Nation, LLC
reproduced aspects of plaintiff’s photo on a small batch of t-shirts and tank
tops and sold them in connection with a Madison, Wisconsin block party event.
The design that appeared on the t-shirts and tank tops included a “posterized”
version of plaintiff’s photograph with the background removed and the mayor’s
face turned lime green. Plaintiff filed suit, claiming defendants’ unauthorized
use of the photograph violated his copyright.
Issue: Whether defendants’ unauthorized reproduction of aspects of plaintiff’s
photograph on a small batch of t-shirts and tank tops was fair use.
Ruling: The court found that defendants’ use was fair use. In reaching its
conclusion, the court emphasized its findings that defendants’ use did not
reduce the demand for plaintiff’s photograph and served as a permissible
compliment, rather than a prohibited substitute, to the photograph. The court
also found that the extent of defendants’ copying in relation to the whole of the
copyrighted work was minimal, amounting to “a hint of [the mayor’s] smile” and
“the outline of his face.”
Patrick CARIOU v. Richard PRINCE
United States Court of Appeals, Second Circuit.
FACTS: Plaintiff Patrick Cariou is a professional photographer who, over
the course of six years in the mid-1990s, lived and worked among
Rastafarians in Jamaica. The relationships that Cariou developed with
them and allowed him to take a series of portraits and landscape photographs
that Cariou published in 2000 in a book titled Yes Rasta.
Meanwhile, defendant Richard Prince is a well-known appropriation artist. The
Tate Gallery has defined appropriation art as "the more or less direct
taking over into a work of art a real object or even an existing work of
art." Defendant Prince used the photos of Plaintiff Cariou from his Yes Rasta
book. Plaintiff altered and incorporated several of plaintiff’s photograph into
series of paintings called Canal Zone that was exhibited at a gallery and in the
gallery’s exhibition catalogue.
On December 30, 2008, he sued Prince, the Gagosian Gallery, and
Lawrence Gagosian, raising claims of copyright infringement. The
defendants asserted a fair use defense, arguing that Prince's artworks
are transformative of Cariou's photographs and, accordingly, do not violate
Cariou's copyrights. Ruling on the parties' subsequently filed cross motions
for summary judgment, the district court (Batts, J.) "impose[d] a requirement
that the new work in some way comment on, relate to the historical
context of, or critically refer back to the original works" in order to be qualify as
fair use, and stated that "Prince's Paintings are transformative only to the
extent that they comment on the Photos." The court concluded that "Prince
did not intend to comment on Cariou, on Cariou's Photos, or on aspects
of popular culture closely associated with Cariou or the Photos when he
appropriated the Photos," and for that reason rejected the defendants' fair use
defense and granted summary judgment to Cariou. The district court also
granted sweeping injunctive relief, ordering the defendants to "deliver up
for impounding, destruction, or other disposition, as [Cariou] determines, all
infringing copies of the Photographs, including the Paintings and unsold
copies of the Canal Zone exhibition book, in their possession.
ISSUE: Whether defendant’s appropriation artwork, which incorporated
plaintiff’s photographs, must comment on, relate to the historical context of, or
critically refer back to the plaintiff’s original work to qualify for a fair use
defense.
HELD: The doctrine was codified in the Copyright Act of 1976, which
lists four non-exclusive factors that must be considered in determining fair
use. Under the statute, The fair use of a copyrighted work for purposes
such as criticism, comment, news reporting, teaching (including multiple songs that “often are sold per song as well as per album.” The court then
copies for classroom use), scholarship, or research, is not an infringement focused on the negative effect of the use on the potential market, finding that
of copyright. In determining whether the use made of a work in any particular “[m]usic downloaded for free from the Internet is a close substitute for
case is a fair use the factors to be considered shall include — purchased music.” The court discounted defendant’s assertion that she was
trying music before buying by pointing out that the market for methods of
(1) the purpose and character of the use, including whether such use introducing potential consumers to music, for example radio, was negatively
is of a commercial nature or is for non-profit educational purposes; impacted by competition from peer-to-peer networks. Finally, the court noted
(2) the nature of the copyrighted work; that there existed myriad authorized means for customers to listen to music
before purchasing, and concluded that defendant’s downloading was not a fair
(3) the amount and substantiality of the portion used in relation to the use.
copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the
copyrighted work.
Leibovitz v. Paramount Pictures Corp.,
137 F.3d 109 (2d Cir. 1998)
Circuit; Internet/Digitization; Music Outcome Fair use not found Source: U.S.
Copyright Office Fair Use Index.
The appellate court held that the law imposes no requirement that a work
comment on the original or its author in order to be considered transformative.
It concluded that the 25 of the 30 works at issue constituted fair use. The court
also found the plaintiff’s works transformative because the defendant’s Facts:
composition, presentation, scale, colour palette, and media are fundamentally In 1991, Annie Leibovitz, a professional photographer, took a photograph of
different and new compared to the photographs, as is the expressive nature of actress Demi Moore seven months pregnant, which was published on the
his work. The court also found no evidence that defendant’s work usurped cover of Vanity Fair Magazine. The photo received significant attention and
either the primary or derivative market for plaintiff’s photographs. As to the notoriety. In 1993, Paramount Pictures decided to take a similar photograph of
other five works, the court remanded to the district for further consideration a pregnant model, but superimposed the face of Leslie Nielson onto the model
under the proper standard. as part of an advertising campaign for the film Naked Gun 33 1/3: The Final
Insult. The advertisement was shot using a similar pose and under similar
BMG Music v. Gonzalez, 430 F.3d 888 (7th Cir. 2005) Year 2005 Court
lighting. The composite photograph depicting Nielsen as the pregnant Moore
United States Court of Appeals for the Seventh Circuit Key
proclaimed, “DUE THIS MARCH.” The advertisement ran nationally and
Leibovitz sued for copyright infringement.
Facts. Plaintiffs, recording companies including BMG Music, alleged that
defendant Gonzalez infringed their copyrights in several audio recordings
Procedure:
when she used a “file-sharing network” to download and retain unauthorized
The Southern District of New York found the use to be fair, and dismissed the
copies on her home computer. Defendant asserted a fair use defense,
claim for copyright infringement, granting summary judgment for the
claiming she intended to sample the works on a “try-before-you-buy basis.”
defendant. Plaintiff appeals the decision before the United States Court of
Defendant appealed the district court’s ruling in plaintiffs’ favor.
Appeals, Second circuit.
Issue. Whether defendant’s unauthorized downloading and retention of
Issue:
plaintiffs’ copyright-protected works to purportedly sample the works before
Whether the fair use defense to copyright infringement applies in the context
buying was fair use.
of an advertisement claimed to be a parody of a copyrighted photograph.
Holding. The court held that defendant’s unauthorized downloading and
Holding:
retention of copyright protected works was not fair use. In reaching its
Yes. Decision of district court is affirmed.
conclusion, the court first determined that defendant was not engaged in a
nonprofit use due to her downloading and retention of whole copyrighted
Analysis:
Examining the four fair use factors, under section 107, the court found that
although Paramount's photographer drew heavily from Leibovitz' composition,
in light of Paramount's parodic purpose and absence of market harm the use
of the photograph was a fair use. The court acknowledges that the statute does
not specifically list “parodies” among the categories of potentially “fair” uses,
but courts have long afforded such works some measure of protection under
this doctrine. The factors are (1) the purpose and character of the use, (2) the
nature of the copyrighted work, (3) the amount and substantiality of the work
used, and (4) the effect of the use on the market for the original.
The court weighed the four factors together. As to the first factor, the court
found that defendant’s ad adds something new and qualifies as a
“transformative” work, and that it “comments” on the original based on the
smirking face of Nielsen contrasting so strikingly with the serious expression
on the face of Moore. “The ad may reasonably be perceived as commenting
on the seriousness, even the pretentiousness, of the original.” The contrast
achieves the effect of ridicule and serves as a sufficient “comment” to tip the
first factor in defendant’s favor. As to the second factor there is significant
creative expression in plaintiff’s photograph (the pose, lighting, etc.), so the
court found this factor in favor of Leibovitz. As to the third factor, the amount
and substantiality of the portion used, the court found Leibovitz is entitled to
no protection for the appearance in her photograph of the body of a nude,
pregnant female. Only the photographer's particular expression of such a body
is entitled to protection. And as to the fourth factor, the court found that the
Paramount photograph did not interfere with any potential market for her
photograph or for derivative works based upon it. The court looks to the
aggregate assessment for an ultimate decision, and found the balance
markedly favors the defendant. Therefore fair use as a parody in light of the
four factors under §107, is a valid defense to copyright infringement.
Sony Music Entertainment (Phils.), Inc. vs Judge Dolores Español
453 SCRA 360 – Mercantile Law – Intellectual Property – Law on Copyright –
Probable Cause
In 2000, Sony Music Entertainment (Phils.), Inc. sought the assistance of the
National Bureau of Investigation (NBI) agent Lavin as they complained that
Solid Laguna Corporation, together with its officers were engaged in the
replication, reproduction and distribution of Sony videograms without license
and authority from the Video Regulatory Board (violation of P.D. 1987); that
Solid Laguna was manufacturing, selling, and distributing various titles of CDs
in violation of Sony Music’s copyrights (and a violation of RA 8293). Agent
Lavin, in applying for a search warrant, stated before Judge Dolores Español
that an unnamed person provided them information as to the presence of
pirated CDs in the premises of Solid Laguna; that Lavin and other witnesses
were accompanied by unnamed persons to enter the premise and conduct
further investigation. The judge then issued two corresponding search
warrants; one for probable violation of PD 1987 and the other for probable
violation of RA 8293.
The search warrants were subsequently enforced and items were seized from
Solid Laguna on the strength of the two warrants.
Solid Laguna thereafter presented a certification that they are actually
authorized to manufacture and sell CDs by the VRB at the same time it asked
the court to quash the search warrants and return the items seized. Judge
Español then quashed the search warrant issued for probable violation of PD
1987.
Judge Español later quashed the other warrant because of the fact that the
items seized as a result of the two warrants were commingled hence they
cannot be examined properly. Judge Español also ruled that the issuance of
the warrant stemmed from the intimation made by petitioners that Solid Laguna
was not authorized to manufacture and sell CDs but in fact they were
authorized by the VRB. This being, the warrants are of no force and effect
because of the lack of probable cause.
ISSUE: Whether or not Judge Español is correct.
HELD: Yes. The issuance of the search warrant in question did not meet the
requirements of probable cause. Judge Español did not accordingly err in
quashing the same, let alone gravely abuse her discretion. It is also within
her authority to quash the said warrants based on her findings which were
found to be valid by the Supreme Court. Further, it cannot be overemphasized
that not one of the applicants of the warrants testified seeing the pirated discs
being manufactured at Solid Laguna’s premises, they merely relied on
unnamed persons which is at best are hearsays.
The Supreme Court also noted that the lack of supporting evidence and
documents in applying for the search warrants on this infringement case does
not mean that the master tapes of the alleged copies being pirated should have
been produced. It is true that the Supreme Court, in 20th Century Fox
Case, underscored the necessity, in determining the existence of probable
cause in copyright infringement cases, of presenting the master tapes of the
copyrighted work. But, as emphatically clarified in Columbia Pictures vs
CA “such auxiliary procedure, however, does not rule out the use of testimonial
or documentary evidence, depositions, admissions or other classes of
evidence xxx especially where the production in court of object evidence would
result in delay, inconvenience or expenses out of proportion to its evidentiary
value. What the Supreme Court is saying is that any evidence presented in
lieu of the master tapes, if not readily available, in similar application
proceedings must be reliable, and, if testimonial, it must, at the very least, be
based on the witness’ personal knowledge.
People v Christopher Choi
ABS-CBN V. GOZON
G.R. No. 195956, March 11, 2015
CASE DIGEST
Facts:
On August 13, 2004, petitioner ABS-CBN filed a criminal complaint
against respondent GMA for (alleged) act of copyright infringement
under Sections 177 and
211 of the Intellectual Property Code (RA 8293, as amended),
because the respondent aired footage of the arrival and homecoming
of OFW Angelo dela Cruz at NAIA from Iraq without the petitioner's
consent. ABS-CBN stated that it has an agreement with Reuter's that the
petition will contribute news and content that it owns and makes to
Reuters in exchange of the latter's news and video material, and
Reuters will ensure that ABS-CBN's materials cannot be aired in the
country.
The respondent was a subscriber of Reuter's and CNN live feeds. After it
received the live feed of Angelo Dela Cruz's arrival and homecoming
from Reuter's, it immediately aired the video from that news feed. The
respondent alleged that its news staff was not aware that there was (a
news embargo) agreement between ABSCBN and Reuters.
Respondent alleged that it was not also aware that it aired petitioner's
footage.
Assistant City Prosecutor Dindo Venturanza issued resolution on 3
December 2004 which found probable cause to indict Dela Peña-
Reyes and Manalastas. The respondents appealed the Prosccutor's
resolution before DOJ. DOJ Secretary Raul
M. Gonzalez ruled in favor of respondents in his resolution dated 1
August 2005 and held that good faith may be raised as a defense in
the case.
Meanwhile, DOJ Acting Secretary Alberto C. Agra issued a resolution
on 29 June
2010 which reversed Sec. Gonzalez's resolution and found probable
cause to charge Dela Peña-Reyes, Manalastas, as well as to indict
Gozon, Duavit, Jr., Flores, and Soho for violation of the Intellectual
Property Code (due to copyright infringement).
The Court of Appeals rendered a decision on 9 November 2010, which
granted the
Petition for Certiorari to reverse and set aside DOJ Sec. Alberto Agra's
resolution and a prayer for issuance of a temporary restraining order
and/or Writ of
Preliminary Injunction.
The appellate court stated that the petitioner has copyright of its news
coverage, but respondents’ act of airing five (5) seconds of the
homecoming footage without notice of the “No Access Philippines”
restriction of the live Reuter's video feed, was undeniably attended by
good faith and thus, serves to exculpate from criminal liability under the
Intellectual Property Code.
ISSUES
W/N there is probable cause to find respondents to be held liable
criminally for the case of copyright infringement under the Intellectual
Property Law (RA 8293, as amended)?
HELD
The Supreme Court PARTIALLY GRANTED ABS-CBN’s petition and
ordered RTC Q.C. Branch 93 to continue with the criminal proceedings
against Grace Dela PeñaReyes and John Oliver Manalastas due to
copyright infringement. The other respondents, Atty. Felipe Gozon,
Gilberto Duavit Jr., Marissa L. Flores, and Jessica A. Soho were held not
liable for the (criminal) act of copyright infringement. The Court held
that their mere membership in GMA7's Board of Directors does not
mean that they have knowledge, approval, or participation in the
criminal act of copyright infringement as there is a need for their
direct/active participation in such act. Also, there was lack of proof that
they actively participated or exercised moral ascendancy over
Manalastas and Dela Cruz-Pena. Contrary to GMA’s contention, the
Supreme Court deemed GMA's mere act of rebroadcast of ABS-CBN’s
news footage (arrival and homecoming of OFW Angelo dela Cruz at
NAIA from Iraq last 22 July 2004) for 2 mins and 40 secs.without the
latter's authority creates probable cause to find GMA's news personnel
Manalastas and Dela Peña-Reyes criminally liable for violating
provisions of Intellectual Property Code (Section 216¬217 of RA 8293,
as amended) that imposes strict liability for copyright infringement,
since they have not been diligent in their functions to prevent that
footage from being aired on television. They knew that there would be
consequences in carrying ABS-CBN’s footage in their broadcast – which
is why they allegedly cut the feed from Reuters upon seeing ABS-CBN’s
logo and reporter. The difference of an act mala in se and mala
prohibita was stated in the present case. Acts mala in se requires
presence of criminal intent and the person's knowledge of the nature
of his/her act, while in acts mala prohibita, presence of criminal intent
and the person's knowledge is not necessary. The Court also stated that
Philippine laws on copyright infringement does not require criminal
intent (mens rea) and does not support good faith as a defense. Thus,
the act of infringement and not the intent is the one that causes the
damage. It held that ABS-CBN's video footage is copyrightable
because it is under “audiovisual works and cinematographic works and
works produced by a process analogous to cinematography or any
process for making audiovisual recordings.” It also stated that news or
the event itself is not copyrightable. The Court differentiated idea and
expression – idea meant as “a form, the look or appearance of a thing”
while expression is its reality or the “external, perceptible world of
articulate sounds and visible written symbols that others can
understand.” Thus, the Supreme Court stated that “only the expression
of an idea is protected by copyright, not the idea itself”, citing the US
Supreme Court's decision in Baker vs Selden (101 U.S. 99). In the present
case, expression applies to the event captured and presented in a
specific medium via cinematography or processes analogous to it. The
Court also gave the four-fold test under the Fair Use Doctrine (stated in
section 185 of RA 8293 or the Intellectual Property Code, as amended)
to determine fair use: 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. Fair use, which is
an exception to copyright owner’s monopoly of the work's usage, was
defined by the Supreme Court as privilege to use the copyrighted
material in a reasonable manner without the copyright owner's consent
or by copying the material's theme or idea rather than its expression. It
also said that determination of whether the Angelo dela Cruz footage
is subject to fair use is better left to the trial court where the proceedings
are currently pending.
Naruto V Peta
Ninth Circuit affirms dismissal of copyright infringement action over
“monkey selfies,” ruling that animals do not have statutory standing
under the Copyright Act.
Plaintiff Naruto, a macaque monkey living on an island in
Indonesia, took a number of selfies with a camera that wildlife
photographer David Slater left unattended on a wildlife reserve.
Slater and co-defendants Wildlife Personalities, Ltd. and Blurb, Inc.
produced a book featuring Naruto’s photos. In the book, Slater and
Wildlife claimed copyright ownership of Naruto’s works, despite
captions that stated that Naruto had taken the photos.
People for the Ethical Treatment of Animals and Dr. Antje
Englehardt, who has studied the macaque monkeys on Naruto’s
reserve, and has known and monitored Naruto since birth, initiated
suit as “next friends” of Naruto, asserting claims for copyright
infringement on Naruto’s behalf against Slater, Wildlife and Blurb.
Defendants moved to dismiss on the basis that Naruto lacked both
Article III standing and statutory standing under the Copyright Act.
The district court held that Naruto, as an animal and not a human,
could not establish statutory standing under the Copyright Act, and
determined that it was unnecessary to reach the question of Article
III standing. PETA and Englehardt appealed, although Dr.
Englehardt subsequently withdrew from the litigation.
The parties subsequently settled the case, with Slater agreeing to
donate 25 percent of his gross proceeds from the pictures to
charities working to protect monkeys, and moved jointly to dismiss infringement actions, the majority held that Naruto lacked statutory
the appeal. The Ninth Circuit rejected the request, noting that standing to do so.
considerable resources had already been expended by the court,
and further, that Naruto was not a party to the settlement In a concurring opinion, one judge on the panel disagreed with the
agreement. majority’s conclusion that Naturo’s Article III standing could be
resolved independently of PETA’s next friend status. The
Ruling on the merits of the appeal, a majority of the panel affirmed concurrence explained that, under that view, next friend standing is
the district court’s dismissal on the grounds that Naruto, as an an Article III jurisdictional issue and that, broadly, next friend
animal, lacked statutory standing to sue under the Copyright Act. standing cannot be asserted in behalf of animals
As an initial matter, however, the majority held that PETA did not
establish next friend status to Naruto. First, PETA had failed to
establish any “significant relationship” with Naruto, which is the
touchstone of the next friend doctrine. Second, the court explained
that, under Supreme Court precedent, the scope of the next friend
doctrine is no broader than what is permitted by statute, and that
no such express authorization was provided in the Copyright Act.
The majority opinion explained that PETA’s lack of next friend
standing did not resolve the question of Naruto’s independent
standing to assert a copyright claim. In considering Naruto’s Article
III standing — a jurisdictional requirement — the majority decision
explained that it was bound by the Ninth Circuit’s 2004 decision
in Cetacean Community v. Bush, which, as the majority
characterized it, held that “non-human animals enjoy constitutional
standing to pursue claims in federal court.” Because the complaint
alleged that Naruto was the owner of the photos in the Monkey
Selfie book, and had suffered harm as a result of defendants’
conduct that could be redressed by the court, he had fairly stated a
“case or controversy” and thus had sufficiently alleged standing
under Article III. While bound by the decision in Cetacean, the
majority expressed strong disagreement with its holding, calling on
the Ninth Circuit to re-examine its holding.
Despite Naruto’s Article III standing, however, the court held that
the monkey lacked statutory standing to sue under the Copyright
Act. As the majority explained, Cetacean set forth a bright line rule
for statutory standing of animals: “If an Act of Congress plainly
states that animals have statutory standing, then animals have
statutory standing. If the statute does not so plainly state, then
animals do not have statutory standing.” Because the Copyright
Act does not expressly authorize animals to file copyright