COMM EMERGENCY DIGESTS

 Varsity case
 Pearl and dean
 LEC case
 Kirtsaeng
 Gozon

Star Atletic v. Varsity

Varsity designs and manufactures clothing and accessories for athletes, some of these for cheerleading.
It uses shapes, colors, lines in its designs. Varsity received a copyright over a two-dimensional artwork of
its designs. Star was producing designs similar to that of Varsity’s so Varsity sued Star for violation of
copyright. Star argues that the design was not copyrightable because these were “useful articles”, and
the designs cannot be separated from the uniforms. Varsity argues that the designs on the uniforms are
separable, thus subject of copyright. W/N the design is copyrightable? Yes, the designs are
copyrightable if it can be separated and applied to another medium; it must be able to be identified
separately from the article and be capable of existing separately. Arrangement of colors, shapes, or
patterns on the surface of the uniform can be separated from the uniform and applied in another
medium (ex: canvass) and would qualify as a 2D work. The copyright is limited to the 2D art.

Justice RBG: Separability analysis was unnecessary in this case because the designs are
themselves copyrightable and are merely reproduced on useful articles. The designs are
clearly pictorial, graphical, or sculptural works, which are copyrightable. The copyright
for such a work includes the right to reproduce the work on a useful article and exclude
a would-be infringer from doing the same.

Pearl & Dean v. Shoemart

Pearl & Dean manufactures lightboxes. It was able to acquire copyright over the designs of the display
units. It was also able to obtain trademark over “Poster Ads”. P&D was negotiating with SM for the use
of these lightboxes; however, the contract did not materialize because SM rejected the offer of P&D.
P&D later on received reports that SM was using these lightboxes in their ad spaces. P&D demanded SM
to stop using it + claimed for around 20M in damages. SM Refused. P&D eventually sued SM for
infringement. W/N the lightboxes are copyrightable? NO. 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 a copyrightable; what was copyrighted were the technical drawings
only, and not the light boxes themselves. In other cases, it was held that there is no copyright
infringement when one who, without being authorized, uses a copyrighted architectural plan to
construct a structure. This is because the copyright does not extend to the structures themselves.


Olano v. Lim Eng Co

Lim Eng Co Steel Company [LEC] is a company which manufactures in architectural metal
manufacturing. LEC entered into a subcontracting agreement with Ski-First Balfour whereby LEC will
manufacture and install hatch doors for the Project’s 7-22nd floor. However, LEC learned that Ski-First
Balfour also subcontracted the installation of the Projects 23-41st floor to another company, Metrotech.
LEC claimed copyright over these hatch doors based on its Certificate of Copyright Registration covering
illustrations and sketches of the door. Metrotech argued that the manufacturing of hatch doors is NOT
copyright infringement because LEC’s copyright only extends to the illustrations and not the hatch doors
per se. Upon direction of the DOJ, an information for copyright infringement was filed against Metrotech.
ISSUE: W/N there is copyright infringement? NO. The SC ruled that LEC’s Certificate of Registration
Nos. I-2004-13 and I-2004-14 cover only the hatch door sketches/drawings and not the actual hatch door
they depict. The SC further ruled that the hatch door has no element of design which may be
separated from its utilitarian function. Therefore, the hatch door is an object of utility, and not an
artistic creation. It is not eligible for copyright. It is thus by nature, functional and utilitarian serving as
egress access during emergency. It is not primarily an artistic creation but rather an object of utility
designed to have aesthetic appeal. It is intrinsically a useful article, which, as a whole, is not eligible for
copyright.

A "useful article" defined as an article "having an intrinsic utilitarian function that is not merely to portray
the appearance of the article or to convey information" is excluded from copyright eligibility.

Kirtsaeng v. John Wiley Sons

Kirtsaeng is a Thai national who came to the US. He was accepted into a PhD program at the University
of Southern California (USC). In order to subsidize his education, he asked his relatives in Thailand to ship
certain textbooks so he could sell them on Ebay for a profit. Among these textbooks were printed by
John Wiley & Sons. Upon discovery, Wiley & Sons sued Kirtsaeng for copyright infringment because
Kirtsaeng imported the books without its consent. As a defense, Kirtsaeng argued that Section 109(a) of
the Copyright Act allows the owner of a copy "lawfully made under this title" to sell or otherwise dispose
of the copy without the copyright owner's permission. The district court rejected Kirtsaeng's argument,
and held that the doctrine was inapplicable to goods manufactured in a foreign country. ISSUE: W/N
goods acquired abroad and subsequently imported into the US can be resold without the owner’s
permission? YES. The "first sale" doctrine states that the copyright owner maintains control of the first
sale only. This doctrine applies without geographical restriction. The language and common-law history
of the Copyright Act support a non-geographic reading of the Act that allows for unrestricted resale of
copyrighted goods regardless of the location of their manufacture. The Court also held that a geography-
based reading of the "first sale" doctrine would drastically harm the used-book business as it would force
book sellers to be subject to the whim of foreign copyright holders.

ABS-CBN v. Gozon
ABS-CBN and REUTERS entered into a special embargo agreement which allowed REUTERS to air ABS-
CBN’s footages. On the other hand, GMA was also subscribed to REUTER’s footages. On one instance,
Angelo Dela Cruz (an OFW who was kidnapped in Iraq) arrived in the Phils. GMA aired this footage, but
was not aware that it was airing ABS-CBN’s footage. They claimed that they did not see the “No Acess
Philippines” sign when they aired the footage. ABS-CBN sued for copyright infringement. W/N there
was copyright infringement? YES. The news footage is copyrightable. News or the event itself is not
copyrightable. However, an event can be captured and presented in a specific medium. As recognized by
this court in Joaquin, television "involves a whole spectrum of visuals and effects, video and audio. "News
coverage in television involves framing shots, using images, graphics, and sound effects. It involves
creative process and originality. Television news footage is an expression of the news.” W/N lack of
knowledge is a defense in infringement? No. Mere fact of rebroadcasting without consent constitutes
infringement. W/N good faith is a defense? NO.

 News of the day is unprotected under Section 175. 


 News itself is not copyrighted. But the creative process is an expression. The angle, the lighting,
the frame 
are all expression. 

 Idea/expression dichotomy. 

 Fair use as a defense – matter of right 

 Criminal in nature 

 Burden on the claimant to prove that it is not fair use 


Determining fair use requires application of the four-factor test. Section 185 of the Intellectual Property
Code lists four (4) factors to determine if there was fair use of a copyrighted work:

 The purpose and character of the use, including whether such use is of a commercial nature or
is for non-profit educational purposes; 

 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 or value of the copyrighted work. 


Feist v. Rural
Rural is a public utility that provides telephone service to several communities in Kansas. It publishes
directories in white & yellow pages. On the other hand, Feist is a publishing company that also publishes
directories. Feist tried to get hold of a license to publish Rural’s white directory page listings, but Rural
refused. So, Feist extracted these listing without Rural’s Consent. The listings were identical. Rural sued
Feist for copyright infringement. W/N Rural’s copyright over its directory protects the names, towns,
telephone numbers copied by another telephone company? NO. These are NOT Original. Facts may
not be copyrighted because they are not original and are part of the public domain.

 Facts are not subject to copyright. 


 Sweat of the brow doctrine (pinaghirapan ko yan oh!) is not the test of copyright qualification.


 There has to be at least a modicum level of creativity. 

 Artistic or Literary Work = Expression — Artistic or literary work, it’s the expression that’s
protected, not the 
idea. 

 Not original / no creativity because they were just listed in alphabetical order

Baker v. Selden
Selden wrote a book explaining his system of bookkeeping. In his book, there were forms to use. He had
arranged the columns and headings so that the entire operation of a day, week or
month was on a single page or on two pages facing each other. Baker began selling these
forms which were similar to the forms in Selden’s book he re arranged it but it achieves the same effect.
Selden sued Baker for copyright infringement. ISSUE: Does copyright protection for a book explaining
an art or system prevent others from using the system or the forms incidentally used? NO. The
copyright protection for a book explaining an art or system extends only to the author’s unique
explanation of it and does not prevent others from using the system or the forms incidentally used.
Copyright is based on originality, not novelty, and protects the explanation of the system and not the use
of the system. In this case, therefore, the copyright Selden (Plaintiff) obtained could not give him the
exclusive right to use the bookkeeping system or the forms necessary to such

use.

NEGRE: This case has been interpreted by many as allowing copying for use as opposed to copying for
the purpose of explanation.

Ching v. Salinas
Ching is the maker and manufacturer of a utility model, Leaf Spring Eye Bushing. He holds a certificate
of copyright registration over it. Ching filed reports with the NBI regarding Salinas’ unlawful reproduction
and distribution of these models. Salinas argues that Ching’s models are not artistic in nature and is not a
proper subject of a COPYRIGHT. Salinas argues that the models are subject of a PATENT. W/N the Leaf
Spring Models are subject to copyright protection? NO. The said Leaf Spring Eye Bushing for
Automobile and Vehicle Bearing Cushion are merely utility models. As gleaned from the description of
the models and their objectives, these articles are useful articles which are defined as one having an
intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey
information. These are not literary or artistic works. They are not intellectual creations in the literary and
artistic domain, or works of applied art. A useful article may be copyrightable only if and only to the
extent that such design incorporates pictorial, graphic, or sculptural features that can be identified
separately from, and are capable of existing

Sony Corp v. Universal Studios

Sony sells, markets and distributes the Betamax Video recorders (also called VTR/VCR). This allows users
to RECORD the cassette tapes. 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 Sony was contributorily liable for infringement, because consumers of the VTRs that Sony
distributed infringed certain copyrighted works of the plaintiffs. The district court held that Sony did not
have 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. CA – said that
Sony is guilty. ISSUE: W/N there is infringement? NO. First, Sony demonstrated a significant likelihood
that substantial numbers of copyright holders who license their works for broadcast on free television
would not object to having their broadcasts time-shifted by private viewers. Second, respondents failed
to demonstrate that timeshifting would cause any likelihood of nonminimal harm to the potential market
for, or the value of, their copyrighted works. The Betamax is, therefore, capable of substantial
noninfringing uses. Sony's sale of such equipment to the general public does not constitute contributory
infringement of respondents' copyrights. 


FAIR USE: What is necessary is a showing by a preponderance of the evidence that some meaningful
likelihood of future harm exists. If the intended use is for commercial gain, that likelihood may be
presumed. But if it is for a noncommercial purpose, the likelihood must be demonstrated.

VICARIOUS LIABILITY: One who supplies the way to accomplish an infringing activity and encourages
that activity through advertisement is not liable for copyright infringement.

*****In Sony: the purpose of the VCR is time framing

*****Non-commercial purpose

Harper & Row v. National Enters

Harper & Row Publishers, Inc. (Harper) (Plaintiff) obtained the rights to publish President Ford’s
memoirs, A Time to Heal. Time magazine contracted for the rights to preview the work immediately
before publication. Before the publication of the article by Time magazine, Nation Enterprises
(Defendant), publisher of The Nation magazine, got a copy of the Ford manuscript. The Nation
published an article that quoted the manuscript about the Nixon pardon. Time then chose not to use the
article as planned and canceled its contract with Harper. Harper sued Nation Enterprises for copyright
infringement. The district court awarded damages for infringement. The Second Circuit reversed,
holding Nation Enterprises’ use to be a “fair use”.

ISSUE: W/N Publication of a work soon to be published constitutes copyright infringement? YES. In
this case, there is no “fair use”. The idea behind the fair use doctrine was that one using a copyrighted
work should not have to get a copyright holder’s permission to use the copyrighted work in a case where
a reasonable copyright holder would in fact grant permission. Here, the effect on the market of such a
use is shown by what happened here: it greatly decreases the market value of the copyrighted work.
Therefore, the conclusion in this case, and in almost all cases, is that prior publication of a work pending
publication will not be a fair use.

APPLICATION OF FOUR-FOLD TEST

1. Purpose

 Nation, a political commentary magazine, had every right to be the first to publish information,
but it went beyond simply reporting the work and actively sought to exploit the headline value
of its infringement, making a news event out of its unauthorized first publication of a noted
figure’s copyrighted expression.
 Nation’s use had not merely the incidental effect, but the intended purpose of supplanting the
copyright holder’s commercially valuable right of first publication.
 For profit

2. Nature of copyrighted work


 Confidential interest in the manuscript is irrefutable.

 Unuopblished,
 Nation’s publication afforded no opportunity for creative or quality control as it was hastily
patched together and contained a number of inaccuracies.

3. Amount and substantiality


 Substantial portion of the work was copied in verbatim

 300-400 words

4. Effect on the market


 Cancellation of contract between Time and Reader’s Digest resulted in losses for Reader’s
Digest

Habana v. Robles
Pacita Habana et al., are authors and copyright owners of duly issued of the book, College English For
Today (CET). On the other hand, Felicidad Robles was the author of the book Developing English
Proficiency (DEP). Habana found that several pages of the Robles’ book are similar, if not all together a
copy of his book. Thus, Habana filed an action for damages and injunction against Robles, alleging that
the latter’s book is substantially familiar with Habana’s. 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." W/N there is infringement? YES. 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. There is
plagiarism resulting to copyright infringement. If so much is taken that the value of the original work is
substantially diminished or the labors of the original author are substantially and to an injurious extent
appropriated, there is infringement. In this case, not only the discussions were lifted, but also the
examples. And this was done without due acknowledgement to Petitioners. Fair Use cannot be a defense
in this case.

• Volition vs. Criminal Intent

o Volition/Voluntariness – is the knowledge of the act being done


o Criminal Intent – moving power for the commission of the crime; state of mind

beyond voluntariness

MGM Studios v. Grokster

The defendants Grokster and Streamcast distributed free software that allowed private individuals to
share copyrighted electronic files without authorization. Some of those files shared are movies and songs
that MGM hold copyrights to. MGM was able to show that some 90 percent of the files being shared
where copyrighted files. Also there is no evidence that either company tried to filter or stop copyright
infringement. District Court ruled in favor of defendands because although users of the software did
infringe MGM’s there was no proof there that they had actual knowledge of specific acts of infringement.
ISSUE: Whether a distributor of a product that is capable of lawful and unlawful use is liable for
copyright infringement by a 3rd party using that product? YES. When a distributor promotes using its
device to infringe copyright material, shown by affirmative steps to foster infringement this is
inducement and the distributor will be liable for 3rd party infringement. Grokster's inducement of its
customers to use the product illegally still made them contributory copyright infringers. When a
distributor takes affirmative steps to foster infringement through the use of its product, the distributor
rd
will be liable for that infringement conducted by 3 parties.

****Majority of the users is Napster users.

****Purpose is commercial

ABS-CBN v. Phil-Multi Media:

PMSI delivers a digital “Direct to Home” satellite service to its subscribers in the Philippines. It was given
authority by the NTC to install, operate and maintain this satellite service. Among the channels it offered
was ABS-CBN Channel 2 and Channel 23. ABS-CBN demanded PMSI to stop rebroadcasting Channel 2 &
23. They entered into negotiations but the settlement was not reached. Thus, ABSCBN filed a complaint
for violation of intellectual property rights. ISSUE: W/N there is a violation of intellectual property
rights? No. PMSI was only engaged in the carrying of signals. Rebroadcasting is defined as “the
simultaneous broadcasting of the broadcast of another company”. Here, ABS-CBN is still the source of
the signal; PMSI is merely carrying the signals. When people watch Channel 2 & 23, they know that ABS-
CBN’s is still the source. Thus, there was no rebroadcasting. Also, the “must carry rule” is still also a valid
exercise of police power. It favors both broadcasting organizations and the public. It prevents cable
television companies from excluding broadcasting organization especially in those places not reached by
signal.