Lira Fuster: Speech Issue Because He Didn't Think CSS Should Be Legal

Copyright Digests Lira Fuster
Universal City Studios, Inc. v. Reimerdes 111 F.Supp.2d 294 (S.D.N.Y. 2000) aff'd 273 F.3d 429 (2d Cir. 2001) the link for the purpose of disseminating the technology. The Court issued a permanent injunction barring Corley from posting DeCSS or links to DeCSS. The Court found that damages would be difficult to calculate because who knows how many movies would be copied, and who knows how those copied movies would affect DVD sales. Corley argued that an injunction was silly because there was many places on the internet where you could get DeCSS, so it was too late to stop it. However, the Court found that an injunction was the best they could do to limit the damage. The Appellate Court affirmed. o The Appellate Court found that 1201(a)(2) was not a violation of st the 1 Amendment because it was content-neutral and furthered a substantial government interest unrelated to the suppression of free speech
Universal and other movies studios used an encryption system called CSS that made so that DVDs could only be played on licensed DVD players that wouldn't allow the user to copy the data. o CSS was shared with the companies that made the DVD players. Johansen was a hacker who reverse engineered a DVD player and developed a program called DeCSS that would let users copy the data DVDs. o Johansen was only 15 at the time! Universal started sending out cease and desist letter to all the web sites that allowed users to download the DeCSS code. Corley's website hosted the code, but deleted in when Universal threatened to sue. However, Corley provided links on their website to other websites that still had the code available. Universal sued Corley for copyright infringement. o Corley argued that this was a 1st Amendment freedom of speech issue because he didn't think CSS should be legal. o Universal argued that this was akin to publishing the combination to a bank vault to encourage people to rob the bank. The Trial Court found for Universal. o The Trial Court looked to the Digital Millennium Copyright Act (DMCA) (17 U.S.C. 1201(a)(2)) and found that DeCSS was a copyright violation because it's only purpose was to defeat copyright protection. Therefore offering to transfer the DeCSS code to a user was not legal. o The Court found that Corley engaged in the functional equivalent of transferring the DeCSS code to the user by linking to sites that hosted the code. Especially because many of the sites Corley linked to had nothing on them but the DeCSS code. The Court noted that if a site Corley linked to had the DeCSS code and also a lot of other content, then maybe that would be ok. o The Court addressed 1st Amendment concerns, and found that 101(a)(2) could not be used enforce an injunction against a linking site (like Corley's) absent clear and convincing evidence that the person responsible for the link: Knows that the relevant material is linked to the site, Knows that the material linked to the site is technology that may not lawfully be offered, and create or maintain
CHAMBERLAIN V. SKYLINK This case involves two competitors that produce universal garage door openers (GDOs). Universal garage door openers are used when people want to replace or purchase a spare transmitter to open their garage door. They are designed to interoperate with existing GDO systems, regardless of model. Chamberlain markets a "Security+" line of GDOs which includes rolling code software that actively alters the transmitted signal by cycling through a series of strings (of which only some are able to open the door). This rolling code is designed to protect against a potential "code grabbing" attack where a nearby burglar may try to record the garage door opening signal. Chamberlain claims that the rolling code system makes it unlikely for a burglar to send a valid signal by replaying the recorded one. With rolling code protection, a garage door will open if and only if the transmitted code is not among the last 1024 used codes and it is among the next 4096 codes. The Security+ has additional functionality that will cause the GDO to resynchronize when two signals out of the acceptable range are transmitted in rapid succession. This was added in the case that homeowners use the same transmitter on multiple garage doors. In 1992, Skylink produced a universal transmitter called Model 39 that was designed to work for both rolling code and non-rolling code GDOs. The Model 39 bypasses the Chamberlain's rolling code system by imitating Security+'s resynchronization feature.

The Model 39 transmitter sends three fixed codes in rapid succession; this either causes the door to open due to the first code or it causes the door to resynchronize and open due to the latter two codes Chamberlain sued Skylink in the United States District Court for the Northern District of Illinois in two cases. In the first case, Chamberlain I, Chamberlain alleged that Skylink's actions violated the anti-trafficking provisions of the DMCA and moved for summary judgment. The court denied Chamberlain's motion for summary judgment. In the second case, Chamberlain II, Chamberlain alleged that Skylink infringed their patents and violated the anti-trafficking provisions of the DMCA. With regards to the DMCA claim in Chamberlain II, Chamberlain contended that: 1. 2. 3. Model 39 was designed to circumvent the protection mechanism placed by Chamberlain's rolling code (infringing 1201(a)(2)(A)). It has limited commercial use other than to circumvent the rolling code (infringing 1201(a)(2)(B)). It was marketed to circumvent that technology (infringing 1201(a)(2)(C)). measure that controls access. As Chamberlain did not show that Skylink's access was unauthorized, the District Court granted the motion for summary judgment to Skylink and dismissed the patent claims. The Federal Circuit affirmed the District Court's ruling. The court explained that by explicitly stating that circumvention occurs "without the authority of the copyright owner," the DMCA requires the plaintiff alleging circumvention to show that the [1][2] defendant's access was unauthorized. The Federal Circuit went on to clarify the nature of the DMCA's anti-circumvention provisions. The DMCA established causes of action for liability and did not establish a [1] property right. Therefore circumvention is not infringement in itself. In response to Chamberlain's assertions that the DMCA "renders the pre-DMCA history in the GDO industry irrelevant," "fundamentally altered the legal landscape," and "overrode all pre-existing consumer expectations about the legitimate uses of products [1] containing copyrighted embedded software," the court disagreed. In Chamberlain's view, all use of products that contain copyrighted software and use protective technological measures would violate the DMCA and this would give companies a [1][3] loophole around antitrust laws as well as take away the fair use defense. By examining the structure and history of the statute and the intent of Congress, the court attempted to interpret the statutory language. The court found that the goals of the DMCA were to establish a balance between the competing interests of content owners [1] and information users and balance access control measures with fair use. Chamberlain had the burden to prove that (1) they had ownership of a copyrighted work, (2) it was controlled by a technological measure that was circumvented, (3) third parties can access it (4) without authorization in a way that (5) infringes rights protected by the Copyright Act due to a product created, advertised, or provided by the defendant Skylink. Once the plaintiff proves those five they must also prove that the defendant trafficked in a product which was (i) designed or produced primarily for circumvention; (ii) made available despite only limited commercial significance other than circumvention; or (iii) marketed for use in circumvention of the controlling technological measure. Chamberlain never claimed that Skylink infringed its copyrights or contributed to third-party infringement nor did it show that its users were unauthorized to use the product. As Chamberlain failed to show the fourth and fifth requirements to prove their claim, the Federal Circuit affirmed the District Court's grant of summary judgment to Skylink, writing,
In response, Skylink claimed that "consumers use the Model 39 transmitter to activate [1] the Security+ GDOs with Chamberlain's consent." 1201(a)(3)(A) states that to "circumvent a technological measure" means to "descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair [1][2] a technological measure, without the authority of the copyright owner." They also claimed that the Model 39 transmitter served a variety of functions that were unrelated to circumvention, that Chamberlain had failed to demonstrate that its GDOs contained a computer program protected by copyright, that Skylink had not violated the DMCA because its acts fell within a safe harbor provision per 1201(f), and that Chamberlain's rolling code computer program did not protect a copyrighted computer program, but instead protects an uncopyrightable process. Chamberlain claimed that (1) Skylink had the burden to prove that their use was authorized and (2) Chamberlain "never gave consumers explicit authorization to [1] program competing universal transmitters into its rolling code openers." The District Court agreed with Skylink and because Chamberlain did not explicitly restrict the consumer's use of alternate transmitters, this was deemed an unconditional sale that implicitly authorized customers to use other transmitters. The court also noted that Chamberlain's construction and interpretation of the DMCA would make its own consumers violate 1201(a)(1), which prohibits circumvention of a technological

Chamberlain, however, has failed to show not only the requisite lack of authorization, but also the necessary fifth element of its claim, the critical nexus between access and protection. Chamberlain neither alleged copyright infringement nor explained how the access provided by the Model 39 transmitter facilitates the infringement of any right that the Copyright Act protects. There can therefore be no reasonable relationship between the access that homeowners gain to Chamberlain's copyrighted software when using Skylink's Model 39 transmitter and the protections that the Copyright Act grants [1] to Chamberlain. calculations indicated that the original supply of Lexmark toner should be exhausted, [3] the printer would stop functioning, even if the cartridge had been refilled. In addition, if the chip did not perform an encrypted authentication sequence, or if the Toner Loading Program on the chip did not have a checksum matching exactly a value stored [4] elsewhere on the chip the printer would not use the cartridge. In 2002 SCC developed its own computer chip that would duplicate the 'handshake' used by the Lexmark chip. SCC's chip also included a verbatim copy of the Toner Loading Program, which SCC claimed was necessary to allow the printer to function. A Prebate cartridge could successfully be refilled if Lexmark's chip on the cartridge was replaced [3] with the SCC chip. SCC began selling its "Smartek" chips to toner cartridge rechargers. On December 30, 2002, Lexmark sued SCC in a federal court in Kentucky. The suit claimed that SCC had violated copyright law by copying the Toner Loading Program, and had violated the DMCA by circumventing the encrypted authentication sequence between the Lexmark cartridge chip and the printer.[4] On March 3, 2003,[5] Judge Karl S. Forester granted a preliminary injunction to Lexmark, blocking SCC from distributing its cartridge chips. On the copyright claim, the court found that the use of the Toner Loading Program was indeed a likely copyright violation,[6] because the Toner Loading Program was not a "lock-out code" that SCC was entitled to copy under the DMCA,[7][8] and because the Toner Loading Program could be rewritten in different ways (and therefore had enough creativity to qualify for copyright protection).[6][9] The court also found that the Copyright Office's decision to grant copyright registration to the two programs showed that the programs were probably copyrightable.[8][10] The court found that because of the complexity of the authentication system, SCC could not have known that it could bypass the authentication without using Lexmark's copyrighted program; but it held that this did not matter because "Innocent infringement, however, is still infringement."[11] The court also held that fair use did not apply.[12] On the DMCA claims, the court found that the SCC microchip circumvented Lexmark's authentication sequence,[13][14] and that the reverse engineering exception to the DMCA did not apply, because it only covers the independent creation of new programs that must interoperate with existing ones, and SCC did not create any new program.[15]
LEXMARK V. STATIC Lexmark is a large manufacturer of laser and inkjet printers.

[1]
Static Control Components (SCC) is a company that makes "a wide range of technology products, including microchips that it sells to third-party companies for use in [1] remanufactured toner cartridges." In an effort to control and reduce the refilling and redistribution of toner cartridges, Lexmark began distributing two distinct varieties of its toner cartridges. Under what was then known as the Prebate Program (now the Lexmark Return Program), Lexmark sold certain printer cartridges at a discount to customers who agreed to use the cartridge only once and return it only to Lexmark for remanufacturing or recycling. Lexmark's "Non-Prebate" cartridges could be refilled by the user without restrictions and were [2] sold without any discount. "Prebate" cartridges were as much as $50 cheaper, but the user agreed (through a shrinkwrap license) to use the cartridge only once and return it to Lexmark. Lexmark touted the Prebate Program as a benefit to the environment and to their customers, since it would allow customers to get cheaper cartridges. For Lexmark, the benefit of the Prebate Program was that they could keep empty cartridges out of the hands of competing rechargers. Many users agreed to Lexmark's condition against purchasing unauthorized refills of the prebate cartridges. To enforce this agreement, Lexmark cartridges included a computer chip that communicated with a "Printer Engine Program" built into the printer. The chips built into "Prebate" cartridges also included a 55-byte computer program, the "Toner Loading Program", that calculated the amount of toner used during printing. When the

SCC appealed the district court's ruling to the Sixth Circuit Court of Appeals. As is usual for federal appeals in the United States, three judgesGilbert S. Merritt, Jeffrey S. Sutton, and John Feikens (a district court judge temporarily assisting the appeals court)considered the case. On October 26, 2004, the judges issued their ruling. Somewhat unusually, all three judges wrote opinions. Majority opinion[edit source | editbeta] In the majority opinion, Judge Sutton (with Judge Merritt agreeing) reversed the lower court's ruling and vacated the temporary injunction, holding that Lexmark was unlikely to succeed in its case. On the copyright claim, the court noted that unlike patents, copyright protection cannot be applied to ideas, but only to particular, creative expressions of ideas.
[16]
On the DMCA claims, the majority opinion first considered Lexmark's claim that the SCC chip circumvented the access controls on the Printer Engine Program. It held that Lexmark's authentication sequence did not "control access" to the program; rather, the purchase of the printer itself allowed access to the program. "Anyone who buys a Lexmark printer may read the literal code of the Printer Engine Program directly from the printer memory, with or without the benefit of the authentication sequence[...]No security device, in other words, protects access to the Printer Engine Program[...]"
[21]
Likewise, the majority opinion held that anyone purchasing a printer and toner cartridge could read the Toner Loading Program from the printer; so SCC did not circumvent an access control on the Toner Loading Program either.
[22]
Distinguishing between an unprotectable idea and a protectable creative
The majority opinion also rejected the district court's conclusion that the interoperability defense did not apply. Since SCC had offered testimony that its chips did indeed contain independently-created programs in addition to Lexmark's Toner Loading Program, the Toner Loading Program could be seen as necessary to allow interoperation between SCC's own programs and the Lexmark printer. Concurring opinion[edit source | editbeta] In a concurring opinion, Judge Merritt agreed with Judge Sutton on the outcome of this particular case, but also indicated that he would go farther. I write separately to emphasize that our holding should not be limited to the narrow facts surrounding either the Toner Loading Program or the Printer Engine Program. We should make clear that in the future companies like Lexmark cannot use the DMCA in conjunction with copyright law to create monopolies of manufacturer goods for themselves[...] Judge Merritt opined that even if the programs involved were more complex (and thus more deserving of copyright protection), the key question would be the purpose of the circumvention technology. Under Judge Merritt's proposed framework, if a third party manufacturer's use of a circumvention technology was
[23]
expression is difficult in the context of computer programs; even though it may be possible to express the same idea in many different programs, "practical realities"hardware and software constraints, design standards, industry practices, etc.may make different expressions impractical.
[17]
"Lock-out" codes
codes that must be performed in a certain way in order to bypass a security systemare generally considered functional rather than creative, and thus unprotectable.
[17]
With these principles in mind, the majority opinion held that the district court had erred in three ways. First, it had held that the Toner Loading Program was copyrightable simply because it "could be written in a number of different ways", without considering the practical realities.
[18]
Second, because of this mistaken

[19]
standard, it had refused to consider whether or not the alternative Toner Loading Programs proposed by Lexmark were practical. Third, it had concluded that the Toner Loading Program was not a "lock-out code", because it had not sufficiently considered how difficult it would be for SCCwithout Lexmark's knowledge of the code's structure and purposeto alter the code and still pass the printer's authentication mechanisms.
[20]

intended only to allow its products to interoperate with another manufacturer's and not to gain any independent benefit from the functionality of the code being copiedthen that circumvention would be permissible. Concurring/dissenting opinion[edit source | editbeta] Judge Feikens also wrote an opinion, agreeing with many of the majority opinion's results (though sometimes for different reasons), but disagreeing with its conclusion on the Toner Loading Program.
[25] [24]
Lexmark filed a request for the full Sixth Circuit to hear the case en banc. The Sixth Circuit rejected this request in February 2005. Rule 13 of the United States Supreme Court Rules of Procedure requires the losing party in a case before a court of appeals to file a petition for a writ of certiorari within 90 days from the date the court of appeals enters its judgment, or from the date of the denial of a petition for rehearing in the court of appeals. The Sixth Circuit's judgment became final for all purposes when the 90-day period expired without Lexmark filing a cert petition. SCC hailed the finality of its victory by issuing a press release. Although SCC's press release suggested that the Supreme Court had actually refused to hear Lexmark's case, in fact no petition for certiorari had ever been filed.
[citation needed]
Concerning the copyrightability of the Toner Loading Program, Judge Feikens found that the record supported Lexmark's claim that the program could have been implemented in any number of ways, and therefore Lexmark's implementation was creative and copyrightable.
[25]
Judge Feikens agreed that the record was The Sixth Circuit's decision is noteworthy for at least two reasons. First, all three judges took pains to emphasize in their opinions that the DMCA must be interpreted consistently with the broader public purposes of the copyright statute, rather than as a grant of new powers to makers of technology products to impose additional restrictions not contemplated by copyright. Second, the case represents a rare defeat for large printer manufacturers like Lexmark, HewlettPackard and Epson in their ongoing battle with third-party ink sellers.
inadequate for the district court to conclude that the Toner Loading Program was a "lock-out code". But he noted that Lexmark's expert had testified that the entire Toner Loading Program process could be turned off by flipping a single bit in the chip's code, and that it should have been possible for SCC to discover this; so copying the program may not have been practically necessary to.
[26]
On the DMCA counts, Judge Feikens agreed that Lexmark had not established a violation with regards to the Toner Loading Program, but for a very different reason than that found by the majority opinion. Judge Feikens noted that SCC had testified that it had not even been aware that the Toner Loading Program existed; it had copied the data on the Lexmark printer chip (including the Toner Loading Program) purely in an attempt to bypass the protection on the Printer Engine Program. Since the DMCA requires that an infringer knowingly circumvent access controls on the protected program, SCC could not have knowingly circumvented protections on a program it did not know existed.
[27]
IQ Group V. Weisner DIGITAL MILLENNIUM COPYRIGHT ACT The Digital Millennium Copyright Act does not protect service marks because service marks do not come within the protections offered a copyright owner under the Act and to allow otherwise would blur the boundaries between trademark law and copyright law. A company provided advertising services for insurance companies by sending out advertisements to insurance agents by e-mail. A particular insurance company retained the advertising agency to send out e-mail advertisements to insurance agents. The agency prepared an ad which displayed the insurance companys logo and a hyperlink which, when clicked, directed the user to a page of the ad agencys website that contained copyrighted information.
With regards to the Printer Loading Program,
Judge Feikens agreed with the majority opinion, but also noted his belief that the consumer had acquired the rights to access this program by purchasing the printer, and therefore the DMCA would not apply to attempts to access it. Request for a rehearing
[28]

The agency sent out the ads on behalf of the insurance company. Later, the insurance company retained a different supplier to send out e-mail advertisements on its behalf. The insurance company sent the competitor the advertisement distributed by the original advertising agency. The competitor copied the ad, removed the logo and hyperlink, inserted new information, and e-mailed the ads to insurance agents. The ad agency then registered its copyright for the ad, and filed suit against the insurance company and the competitor, claiming that they violated the Digital Millennium Copyright Act (DMCA) by removing the ad agencys logo and hyperlink from the ad. The insurance company and competitor moved for summary judgment, arguing that the logo did not fall within the protections afforded under the DMCA. The Court agreed. It noted that the logo was a service mark, and held that allowing a service mark to come within the protections offered a copyright owner under the DMCA would blur the boundaries between trademark law and copyright law and would change the DMCA into a hybrid trademark/copyright law. The Court noted that there was no evidence that Congress intended such an extreme outcome when it enacted the DMCA. On that basis, it dismissed the ad agencys claim. The Court also rejected the ad agencys argument that its competitor violated Section 1202 of the DMCA by removing the logo and hyperlink. It noted that the DMCA does not directly protect copyrighted materials, but rather, it protects the technological processes that protect copyrighted materials. The Court found that there was no evidence that the ad agency intended to use the logo to manage its copyrights or that the logo was part of an automated copyright protection system. Therefore, the original ad agencys claim under Section 1202 of the DMCA was dismissed as well. Arriba Soft altered its display format several times. In response to a search query, the search engine produced a Results page, which displayed a number of reduced, thumbnail images. When a user would double-click these images, a fullsized version of the image would be displayed. From January 1999 to June 1999, the full-sized images were produced by in-line linking, a process that retrieved the full-sized image from the original website and displayed it on the Arriba Soft Web page. From July 1999 until sometime after August 2000, the results page contained thumbnails accompanied by a Source link and a Details link. The Details link produced a separate screen containing the thumbnail image and a link to the originating site. Clicking the Source link would produce two new windows on top of the Arriba Soft page. The window in the forefront contained the full-sized image, imported directly from the originating website. Underneath that was another window displaying the originating Web page. This technique is known as framing, where an image from a second website is viewed within a frame that is pulled into the primary sites web page. Later, when a user clicked on the thumbnail, the user was sent to the originating website via a hyperlink.[1] Arriba Softs crawler copied 35 of Kellys copyrighted photographs into the Arriba Soft database. Kelly sued Arriba Soft for copyright infringement, complaining of Arriba Softs thumbnails, as well as its in-line link and framing. The district court ruled that Arriba Soft's use of both the thumbnails and the fullsized images was a fair use.[2] Kelly appealed to the Ninth Circuit Court of Appeals. On appeal, the Ninth Circuit affirmed the district courts finding that the reproduction of images to create the thumbnails and their display by Arriba Softs search engine was a fair use. But it reversed the lower court holding that Arribas in-line display of the full-sized image was a fair use as well.[3] An owner of a copyright has the exclusive right to reproduce copies of the work.[4] To establish a claim of copyright infringement by reproduction, the plaintiff must show ownership of the copyright and copying by the defendant. There was no dispute that Kelly owned the copyright to the images and that Arriba Soft copied those images. Therefore, the court ruled, Kelly established a prima facie case of copyright infringement.*5+ However, a claim of copyright infringement is subject to certain statutory exceptions, including the fair use exception.*6+ This exception permits courts to
Kelly v. Arriba The defendant Arriba Soft operated a visual search engine t hat allowed users to search for and retrieve images from the Internet. To provide this functionality, Arriba Soft developed a computer program that would crawl the Internet searching for images to index. It would then download full-sized copies of those images onto Arriba Softs server and generate lower resolution thumbnail-sized copies of the images. Once the thumbnails were created, the program deleted the full-sized originals from the server.

avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that statute is designed to foster.*7+ To determine whether Arriba Softs use of Kellys images was a fair use, the court weighed four statutorily-prescribed factors. (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;[8] (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 Purpose and Character of the Use Edit Applying the first factor, the court noted that the more transformative the new work, the less important the other factors, including commercialism, become*10+ and held that the thumbnails were transformative because they were much smaller, lower-resolution images that served an entirely different function than Kellys original images.*11+ Furthermore, it would be unlikely that anyone would use Arribas thumbnails for illustrative or aesthetic purposes because enlarging them sacrifices their clarity, the court found.*12+ Thus, the first fair use factor weighed in favor of Arriba Soft. Nature of the Copyrighted Work Edit The court held that the second factor, the nature of the copyrighted work, weighed slightly in favor of Kelly because the photographs were creative in nature.[13] Amount and Substantiality of the Portion Used Edit The third factor, the amount and substantiality of the portion used, was deemed not to weigh in either partys favor, even though Arriba Soft copied the entire image.[14] Effect of the Use on the Potential Market Edit Finally, the court held that the fourth factor, the effect of the use on the potential market for or value of the copyrighted work, weighed in favor of Arriba Soft. The fourth factor required the court to consider not only the extent of market harm caused by the particular actions of the alleged infringer, but also whether unrestricted and widespread conduct of the sort engaged in by the defendant . . . would result in a substantially adverse impact on the potential market for the original.*15+ The court found that Arriba Softs creation and use of the thumbnails The NBI conducted surveillance and investigation of the outlets pinpointed by the petitioner and subsequently filed three (3) applications for search warrants against the video outlets owned by the private respondents. The lower court issued the desired search warrants. The NBI, accompanied by the petitioner's agents, raided the video outlets and seized the items described in the three warrants. Private respondents later filed a motion to lift the search warrants and release the seized properties, which was granted by the lower court. Petitioners motion for reconsideration was denied by the lower court. The CA affirmed the trial court. II. THE ISSUE Did the judge properly lift the search warrants he issued earlier? III. THE RULING [The Court DISMISSED the petition and AFFIRMED the questioned decision and resolution of the CA.] YES, the judge properly lifted the search warrants he issued earlier. The lower court lifted the three (3) questioned search warrants in the absence of probable cause that the private respondents violated P.D. 49. NBI agents who acted as witnesses during the application for search warrant did not have personal knowledge of the subject matter of their testimony, which was the alleged commission of the offense of piracy by the private respondents. Only the petitioners counsel who was also a witness during the application stated that he would not harm the market for or value of Kellys images.*16+ Accordingly, on balance, the court found that the display of the thumbnails was a fair use.
20 century fox v. CA I. THE FACTS
th
Petitioner 20th Century Fox Film Corporation sought the assistance of the NBI in conducting searches and seizures in connection with the NBIs anti -film piracy campaign. Petitioner alleged that certain videotape outlets all over Metro Manila are engaged in the unauthorized sale and renting out of copyrighted films in violation of PD No. 49 (the old Intellectual Property Law).

had personal knowledge that the confiscated tapes owned by the private respondents were pirated tapes taken from master tapes belonging to the petitioner. The lower court lifted the warrants, declaring that the testimony of petitioners counsel did not have much credence because the master tapes of the allegedly pirated tapes were not shown to the court during the application. The presentation of the master tapes of the copyrighted films, from which the pirated films were allegedly copied, was necessary for the validity of search warrants against those who have in their possession the pirated films. The petitioner's argument to the effect that the presentation of the master tapes at the time of application may not be necessary as these would be merely evidentiary in nature and not determinative of whether or not a probable cause exists to justify the issuance of the search warrants is not meritorious. The court cannot presume that duplicate or copied tapes were necessarily reproduced from master tapes that it owns. The essence of a copyright infringement is the similarity or at least substantial similarity of the purported pirated works to the copyrighted work. Hence, the applicant must present to the court the copyrighted films to compare them with the purchased evidence of the video tapes allegedly pirated to determine whether the latter is an unauthorized reproduction of the former. This linkage of the copyrighted films to the pirated films must be established to satisfy the requirements of probable cause. Mere allegations as to the existence of the copyrighted films cannot serve as basis for the issuance of a search warrant. 62 - Columbia Pictures v. Court of Appeals (1996) Facts: Columbia Pictures, together with other movie studios, filed a complaint with the NBI for investigation of copyright violations. The NBI conducted surveillance on various video establishments, including Sunshine Home Video (private respondent). On the basis of these investigations, the NBI applied for a search warrant against Sunshine, seeking seizure of various pirated films and other paraphernalia connected to piracy. The search warrant was issued on Nov. 14, 1987 on the basis of affidavits and depositions of NBI officers. After the search warrant was issued, Sunshine moved for the quashal of the warrant, but this was initially denied. However, upon motion for reconsideration, the warrant was quashed. The court used the 20th Century Fox case to rule that the master tapes need to be presented in order for a finding of probable cause to th issue. 20 Century Fox was issued on Aug. 19, 1988. Columbia now claims that 20th Century Fox was erroneously applied retroactively, and that judicial decisions have prospective application. Sunshine claims that Columbia has no legal personality to sue, and that the master tapes need to be presented in order for probable cause to be present, in connection with the issuance of a warrant. Issue: 1. Can Columbia properly bring suit against Sunshine for copyright infringement? 2. Is the presentation of the master tapes required before a finding of probable cause for the issuance of a warrant may prosper? Held/Ratio: 1. YES, Columbia has legal capacity to sue, is the real party-in-interest, and does not require a license because it is not doing business in the Philippines. Sunshine claims that since Columbia is not licensed to do business in the Philippines, but is engaged in business, it has no legal capacity to sue. However, no evidence was presented to support their argument. The fact that Columbia, et al. are copyright owners or owners of exclusive distribution rights in the Philippines of motion pictures or films does not convert such ownership into an indicium of doing business which would require them to obtain a license before they can sue upon a cause of action in local courts. Neither is the appointment of an Attorney-in-fact tantamount to doing business in the Philippines (long discussion, but not important for copyright). 2. NO, the court may issue a warrant on the basis of probable cause even without the presentation of the master tapes. 20th Century Fox held that [t]he presentation of master tapes of copyrighted films from which the pirated films were allegedly copied, was necessary for the validity of search warrants against those who have in their possession the pirated films. ... The essence of a copyright infringement is the similarity or at least substantial similarity of the purported pirated works to the copyrighted work. Hence, the applicant must present to the court the copyrighted films to compare them with the purchased evidence of the video tapes allegedly pirated to determine whether the latter is an unauthorized reproduction of the former. This linkage of the copyrighted films to the pirated films must be established to satisfy the requirements of probable cause. Mere allegations as to the existence of the copyrighted films cannot serve as basis for the issuance of a search warrant. However, upon perusal of the previous case (quoted heavily in the decision), the Court found that the rationale behind the 20th Century Fox doctrine is that the pirated copies as well as the master tapes were available for presentation to the court at the time of the application for a search warrant to determine the existence of the

linkage of the copyrighted films with the pirated ones, thus there was no reason not to present them. The pronouncement in 20th Century Fox regarding the necessity of the presentation of the master tapes of the copyrighted films for the validity of search warrant should at most be understood to merely serve as a guidepost in determining the existence of probable cause in copyright infringement cases where there is doubt as to the true nexus between the master tape and the pirated copies. An objective and careful reading of the decision in the said case could lead to no other conclusion than that said directive was hardly intended to be a sweeping and inflexible requirement in all or similary copyright infringement cases. In this case, the affidavits and depositions clearly reflected that the matters contained therein were within their personal knowledge. They displayed none of the ambivalence and uncertainty that the witnesses in 20th Century Fox exhibited. It is evidently incorrect to suggest, as the ruling in 20th Century Fox may appear to do, that in copyright infringement cases, the presentation of master tapes of the copyrighted films is always necessary to meet the requirement of probable cause and that, in the absence thereof, there can be no finding of probable cause for the issuance of a search warrant. It is true that such master tapes are object evidence, with the merit that in this class of evidence the ascertainment of the controverted fact is made through demonstrations involving the direct use of the senses of the presiding magistrate. Such auxiliary procedure, however, does not rule out the use of testimonial or documentary evidence, depositions, admissions or other classes of evidence tending to prove the factum probandum, especially where the production in court of object evidence would result in delay, inconvenience, or expenses out of proportion to its evidentiary value. Although the Constitution prohibits the issuance of a search warrant in the absence of probable cause, such constitutional inhibition does not command the legislature to establish a definition or formula for determining what shall constitute probable cause. Accordingly, to restrict the exercise of discretion by a judge by adding a particular requirement the presentation of master tapes, as intimated by 20th Century Fox not provided nor implied in the law for a finding of probable cause is beyond the realm of judicial competence or statesmanship. There is no law or rule which requires that the existence of probable cause is or should be determined solely by a specific kind of evidence. Surely, this could not have been contemplated by the framers of the Constitution, and the Court does not believe that the statement in 20th Century Fox regarding master tapes was intended as the dictum for all seasons and reasons in infringement cases. A blind espousal of the requisite of presentation of the master tapes in copyright infringement cases, as the prime determinant of probable cause, is too exacting and impracticable a requirement to be complied with in a search warrant application which, it must not be overlooked, is only an ancillary proceeding. The quashal of the warrant being based solely on an unjustifiable and improper retroactive application of the master tape requirement generated by 20th Century Fox upon a factual situation completely different from that in the case at bar, and without anything more, this later order clearly defies elemental fair play and is a gross reversible error. On retroactivity of judicial decisions [just in case sir asks] Decisions of this Court, although in themselves not laws, are nevertheless evidence of what the laws mean, and this is the reason why under Article 8 of the New Civil Code, Judicial decisions applying or interpreting the laws or the Constitution shall form part of the legal system. The interpretation upon a law by this Court constitutes, in a way, a part of the law as of the date that the law was originally passed, since this Courts construction merely establishes the contemporaneous legislative intent that the law thus construed intends to effectuate. But when a doctrine of the Court is overruled and a different view is adopted, the new doctrine should be applied prospectively, and should not apply to parties who had relied on the old doctrine and acted on the faith thereof. Judicial interpretation of a statute constitutes part of the law as of the date it was originally passed because the courts construction merely establishes the contemporaneous legislative intent that the interpreted law carried into effect. Such judicial doctrine does not amount to the passage of a new law but consists merely in the construction or interpretation of a pre-existing one, which is the situation in the case at bar.
88 - Columbia Pictures Industries, Inc. v. Aveco, Inc. (1986) Facts: Columbia Pictures Industries are producers of motion pictures. They brought this copyright infringement action against Aveco, Inc. because Columbia alleges that Avecos business of renting video cassettes of motion pictures and renting rooms in which the videos may be viewed, violates their exclusive rights under the Copyright Act of 1976. The district court agreed with Columbia and held that Aveco had infringed Columbias exclusive rights to publicly perform and authorize public performances of their copyrighted works. It also permanently enjoined Aveco from

performing or authorizing others to perform copyrighted motion pictures owned by Columbia at any place open to the public without authority or permission of Columbia Issue: 1. Whether the district court was right in holding that renting of rooms for video cassettes viewing by public was public performance by Aveco Held/Ratio: 1. YES. Customers of Aveco may: (1) rent a room and also rent a video cassette for viewing in that room, (2) rent a room and bring a video cassette obtained elsewhere to play in the room, or (3) rent a video cassette for out-ofstore viewing. As the owners of copyrights in motion pictures, Columbia possesses statutory rights under the Copyright Act of 1976. Among these are the exclusive rights set out in Section 1061. Columbia do not allege infringement of their exclusive rights to do and authorize the distribution of copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending. Therefore, Avecos rental of video cassettes for at-home viewing is not challenged. In the present case, Columbia alleged infringement of their exclusive right to perform the copyrighted work publicly and to authorize such performances. To perform a work is defined in the Act as, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible. Columbia acknowledges that Avecos customers are the ones performing the works, for it is they who actually place the video cassette in the video cassette player and operate the controls. However, if there is a public performance, Aveco may still be responsible as an infringer even though it does not actually operate the video cassette players. The court explained that by enabling its customers to perform the video cassettes in the viewing rooms, authorizes the performances. The performances of Columbias motion pictures at Aveco's stores infringe their copyrights only if they are "public." The copyright owners' rights do not extend to control over private performances. To perform a work publicly means: (1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances are gathered; or (2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same or at different times. 1. Subject to Sections 107 through 118, the owner of copyright under this title has the exclusive rights to do and authorize any of the following: 1. to reproduce the copyrighted work in copies or phonorecords; 2. to prepare derivative works based upon the copyrighted work; 1. to reproduce the copyrighted work in copies or phonorecords; 2. to prepare derivative works based upon the copyrighted work; 3. to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; 4. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; and 5. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly. People v. Ramos On September 3, 1965, two criminal cases identical in every respect, except for the fact that they pertain to different editions of the same textbook, were filed against Ramos, for alleged violations Copyright Law, as amended. The information alleged That on or about July to September, 1963 accused, as the proprietor aid general manager of the National Book Store, as enterprise engaged in the business of publishing, selling and distributing books, did then and there, willfully and illegally sell and distribute spurious and pirated copies of the high school textbook, entitled General Science Today for Philippine School, First Year, by Gilam, Van Houten and Cornista knowing that said book was duly copyrighted by the Phoenix Publishing House, Inc., and was being distributed exclusively by its sister corporation, Alemar's or Sibal and Sons, Inc. On September 7, 1965, identical motions to quash 2 were filed by accused Ramos on the ground of prescription, the delivery of the alleged offense was made as early as July 17, 1963 and all subsequent knowledge or discoveries of posterior sales and possession of said books by the respondents, including that involved in the police search of September 4, 1963 were only confirmatory of the first. Under
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91 of the Revised Penal Code; the prescriptive period, therefore, commenced to run on the day after such discovery on July 17, 1963 and, accordingly, the offense has long since prescribed since under the Copyright Law, Act 3134: Sec. 24. All actions, suits, or proceedings arising under this Act shall be originally cognizable by the Court of First Instance of the Philippine Islands and shall prescribe after two years from the time the cause of action arose. Assuming arguendo, that the last actual sale should be the starting point of computation, again the offense charged has prescribed, since, as already pointed out, the documented evidence on this point shows that the last sale was made on August 30, 1963. The prosecution, also in both cases, filed its Opposition to the Motion to Quash 3 raising two issues, to 1. That the issue of prescription in this case can be resolved only after the presentation of evidence and hence, it is premature to raise that issue before trial 2. That, as the violation committed by the defendant was a continuing offense, the two-year prescriptive period may be counted from September 3, 1963, or one day before the search in defendants' premises , which confirmed her possession of spurious and pirated copies of the textbook in question. The prosecution's theory is that "(T)he crime being a continuing offense, the statute of limitations begins to run from the completion of the last act or series of acts which constitute the offense, " and this last act was committed on September 3, 1963. Therefore when the information was filed on September 3, 1965, it was filed within the two-year period, albeit the last day of the prescriptive period. In Criminal Case No. 80007, Hon. Jesus De Veyra granted the motion to quash by an order dated October 7, 1965. . . . . And now to the main issue - whether the crime has prescribed. In the Opposition to the Motion to Quash, the Prosecution, in its insistence on the theory of a continuing crime, admits that the two-year prescriptive period should run from September 3, 1963. This case was filed on September 3, 1965 - one day too late. Article 13, CCP provides that year shall mean a period of 365 days. This had been applied to criminal cases. 1964 was a leap year so that when this case was filed, it was filed one day too late. Meanwhile, in Criminal Case No. 80006, the motion to quash was not resolved until December 23, 1965. On this date, Hon. Placido Ramos denied the motion to quash,finding the information to have been filed well within the statutory period of two years from the date of the last offense committed by the accused the Court denies the motion to quash. The trial court refused to accept the prosecution's view that the prescriptive period should run from September 3, held instead, that the same should commence on September 4, 1963.The evidence shows that on September 4, 1963, the Manila Police by virtue of a search warrant procured by the offended party, seized, among other articles, 69 copies of General Science Today for Philippine Schools, First Year, by Gilman, Van Houten and Cornista and one copy of the same textbook for Second Year (Exhibit 5). The evidence shows thon at September 3, the National Book Store, run and managed by the accused, sold one said textbook, Exhibit 'D' and Exhibit '2'. Even if the last sale of said textbook could be considered to have taken place on September 3, 1963, Exhibits 'D' and '2', the Court is also of the opinion that the two-year period would expire September 3, 1965. In the computation of the period of prescription, a year should be construed as the calendar year comprising the whole period from January 1 to December 31, regardless of the number of days it contains. Consequently, in this particular case, if it is considered that the last sale took place on September 3, 1963, the two-year period, following the rule exclude the- first-and-include-the-last, will expire on September 3, 1965. The accused filed a Motion for Reconsideration. the trial court finally denied. The accused thus filed with this Court this petition for certiorari, mandamus and prohibition. This Court on issued a writ of preliminary injunction restraining the trial Court from further proceedings in Criminal Case No. 80006. 14 Also on the same date, the two cases were consolidated. On the applicability of the four-year prescriptive period provided in Act No. 3326. The same is not applicable. Said Act provides: Section 1. Violations penalized by special acts shall unless otherwise provided in such acts, prescribe in accordance with the following rules: (a)........... (b) after four years for those punished by imprisonment for more than one month, but less than two years; ...
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Act No. 3326 applies only if the special act does not provide for its own prescriptive period. It has no application here, where the Copyright Law provides for its own prescriptive period, viz: Section 24. All actions, suits, or proceedings arising under this Act shall be originally cognizable by the Courts of First Instance of the Philippines and shall prescribe after two years from the time the cause of action arose. Now on the main issue of prescription. The question to be resolved is the proper computation of the two-year period of prescription from September 3, 1963. Resolution of this issue hinges, in turn, on whether February 28, and 29 of a leap year, 1964, should be counted as one day, as proposed by the prosecution; or as separate days, as alleged by the defense. This issue which was in 1965 still undetermined is now a settled matter. It was held in 1969 in Namarco vs. Tuazon 27 that February 28 and 29 of a leap year should be counted as separate days in computing periods of prescription. Thus, this Court, speaking thru former Chief Justice Roberto Concepcion, held that where the prescriptive period was supposed to commence on December 21, 1955, the filing of the action on December 21, 1965, was done after the ten-year period has lapsed since 1960 and 1964 were both leap years and the case was thus filed two (2) days too late. Since this case was filed on September 3, 1965, it was filed one day too late; considering that the 730th day fell on September 2, 1965 the year 1964 being a leap year. Prior to the approval of the Civil Code of Spain, the Supreme Court thereof held, on March 30, 1887, that, when the law spoke of months, it meant a 'natural' month or 'solar' month, in the absence of express provision to the contrary. Such provision was incorporated into the Civil Code of Spain, subsequently promulgated. Hence, the same Supreme Court declared that, pursuant to Article 7 of said Code, 'whenever months are referred to in the law. it shall be understood that months are of 30 days,' not the 'natural', 'solar' or 'calendar' months, unless they are 'designated by name,' in which case, 'they shall be computed by the actual number of days they have.' This concept was, later, modified in the Philippines, by Section 13 of the Revised Administrative Code, pursuant to which 'month shall be understood to refer to a calendar month.' With the approval of the Civil Code of the Philippines (RA 386) we have reverted to the provisions of the Spanish Civil Code in accordance with which a month is to be considered as the regular 30month and not the solar or civil month with the particularity that, whereas the Spanish Civil Code merely mentioned 'months, days or nights,' ours has added thereto the term 'years' and explicitly ordains in Article 13 that it shall be understood that years are of three hundred sixty-five days. 28 Finally, there is no merit in the allegation that the reckoning of the prescriptive period should start from September 4, 1963. This was the date when the police authorities discovered several pirated books in accused's store. But the accused was charged, in both Criminal Cases Nos. 80006 and 80007, with having allegedly sold and distributed spurious and pirated copies of the textbook in question, not of illegal possession of the same. The prosecution's claim that the preliminary investigation proceedings in the Manila City Fiscal's Office and in the prosecution Division of the Department of Justice interrupted the running of the prescriptive period, is also without merit. We held in People vs. Tayco 30 that the running of the period of prescription is interrupted not by the act of the offended party in reporting the offense to the final but the filing of the complaint or information in court. Court of First Instance of Manila Branch XIV in Criminal Case No. 80007 dismissing the case on the ground of prescription, is AFFIRMED. The order dated December 23, 1965 of the same court, Branch III, in Criminal Case No. 80006, is REVERSED and SET ASIDE, and the case is DISMISSED, on the ground that the crime charged therein had already prescribed. Without pronouncement as to costs. 63 - Serrano Laktaw v. Paglinawan (1918) Facts: Pedro Serrano Laktaw is the registered owner and author of a literary work entitled Diccionario Hispano-Tagalog (Spanish-Tagalog Dictionary) published in the City of Manila in 1889 by the printing establishment La Opinion. Mamerto Paglinawan, without the consent of the plaintiff, reproduced said literary work by improperly copying the greater part of the work and publishing it as Diccionariong KastilaTagalog (Spanish-Tagalog Dictionary). Plaintiff thus allege that this was a violation of Article 7 of the Law of January 10, 1879, on Intellectual Property, and that it caused irreparable injuries to the him amounting to $10,000. The trial court held that that a comparison of the plaintiff's dictionary with that of the defendant does not show that the latter is an improper copy of the former, which has been published and offered for sale by the plaintiff
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for about twenty-five years or more. For this reason the court held that the plaintiff had no right of action and that the remedy sought by him could not be granted. Issue: 1. Whether the trial court was correct in holding that there was no violation of the Law of January 10, 1879, on Intellectual Property Held/Ratio: 1. NO. Article 7 of the said Law states that: Nobody may reproduce another person's work without the owner's consent, even merely to annotate or add anything to it, or improve any edition thereof. A careful and minute comparison the dictionary written and published by the plaintiff and that by the defendant along with the memorandum presented by the defendant, and the notes presented by the plaintiff showing the terms copied by the defendant from the plaintiff's dictionary, would show that indeed the defendant copied from the plaintiff. Out of the 23,560 Spanish words in the defendant's dictionary, after deducting 17 words corresponding to the letters K and X (for the plaintiff has no words corresponding to them), only 3,108 words are the defendant's own. Furthermore, defendant also literally reproduced and copied for the Spanish words in his dictionary, the equivalents, definitions and different meanings in Tagalog and it was also found that the printer's errors in the plaintiff's dictionary as to the expression of some words in Spanish as well as their equivalents in Tagalog are also reproduced in defendants dictionary. The statement of the Trial Court that dictionaries have to be made with the aid of others, and they are improved by the increase of words was held to be very erroneous. The protection of the law cannot be denied to the author of a dictionary, for although words are not the property of anybody, their definitions, the example that explain their sense, and the manner of expressing their different meanings, may constitute a special work. The court citing the correctional court of the Seine, held that a dictionary constitutes property, although some of the words therein are explained by mere definitions expressed in a few lines and sanctioned by usage, provided that the greater part of the other words contain new meanings; new meanings which evidently may only belonged to the first person who published them. Also, the law of January 10, 1879, and the rules for its application, were found to be in force in the country when the plaintiff's dictionary was edited and published in 1889. And although the plaintiff did not present the certificate of registration of his property rights, the first page of said dictionary the property right of the plaintiff was reserved by means of the words "Es propiedad del autor" (All rights reserved) taken in connection with the permission granted him by the GovernorGeneral on November 24, 1889 to print and publish said dictionary, constitute sufficient proof of plaintiffs compliance with the requirements of Article 36 of said Law. In addition, according to Article 428 of the Civil Code, the author of a literary, scientific, or artistic work has the right to exploit it and dispose thereof at will. In relation to this right, there exists the exclusive right of the author, who is the absolute owner of his own work, to produce it, according to Article 2 of the Law, and consequently, nobody may reproduce it, without his permission, not even to annotate or add something to it, or to improve any edition thereof, according to Article 7 of the Law. The court thus ordered the defendant to withdraw from sale all stock of his work Diccionariong Kastila-Tagalog (since plaintiff prayed for this and not for a permanent injunction against the defendant) and to pay the costs of first instance. As to the damages prayed for in the sum of $10,000, no pronouncement can be made in this decision. It is true that it cannot be denied that the reproduction of the plaintiff's book by the defendant has caused damages to the former, but the amount thereof has not been determined at the trial, for the statement of the plaintiff as to the proceeds he would have realized if he had printed in 1913 the number of copies of his work which he stated in his declaration (a fact which he did not do because the defendant had reproduced it) was not corroborated in any way at the trial and is based upon mere calculations made by the plaintiff himself.
64 - Habana v. Robles (1999) Facts: Petitioners are authors and copyright owners of the published works, produced through their combined resources and efforts, entitled COLLEGE ENGLISH FOR TODAY (CET for brevity), Books 1 and 2, and WORKBOOK FOR COLLEGE FRESHMAN ENGLISH, Series 1. Respondent Felicidad Robles and Goodwill Trading Co., Inc. are the author/publisher and distributor/seller of another published work entitled DEVELOPING ENGLISH PROFICIENCY (DEP for brevity), Books 1 and 2 which book was covered by copyrights issued to them. In the course of revising their published works, petitioners, by chance, came upon the book of respondent Robles and upon perusal of said book they were surprised to see that the book was strikingly similar to the contents, scheme of presentation, illustrations and illustrative examples in their own book, CET. After an itemized examination and comparison of the two books (CET and DEP), petitioners found that several pages of the respondents book are similar, if not all
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together a copy of petitioners book, which is a case of plagiarism and copyright infringement. Petitioners demanded respondents to refrain from publishing and to withdraw the DEP from the market, but this demand remained unheeded. Petitioners filed with the RTC-Makati, a complaint for Infringement and/or unfair competition with damages against private respondents. Goodwill Trading Co., Inc. filed its answer and alleged that petitioners had no cause of action against it since it was not privy to the misrepresentation, plagiarism, incorporation and reproduction of the portions of the book of petitioners. Robles filed her answer, and denied the allegations of plagiarism and copying. Respondent stressed that (1) the book DEP is the product of her independent researches, studies and experiences, and was not a copy of any existing valid copyrighted book; (2) DEP followed the scope and sequence or syllabus which are common to all English grammar writers as recommended by the Association of Philippine Colleges of Arts and Sciences (APCAS); and (3) the similarities may be due to the authors exercise of the right to fair use of copyrigthed materials, as guides. The trial court dismissed the complaint against Robles and Goodwill Trading. On appeal, CA upheld the RTCs judgment. Issue: 1. W/N respondents committed copyright infringement 2. W/N similar or identical examples should not be considered as a mark of copying Held/Ratio: 1. YES. A perusal of the records yields several pages of the book DEP that are similar if not identical with the text of CET. We believe 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. When is there a substantial reproduction of a book? It does not necessarily require that the entire copyrighted work, or even a large portion of it, be copied. If so much is taken that the value of the original work is substantially diminished, there is an infringement of copyright and to an injurious extent, the work is The respondents claim that the copied portions of the book CET are also found in foreign books and other grammar books, and that the similarity between her style and that of petitioners cannot be avoided since they come from the same background and orientation may be true. However, in this jurisdiction under Sec 184 of RA 8293 it is required that the source and the name of the author, if appearing on the work, are mentioned. A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such cases, did not know whether or not he was infringing any copyright; he at least knew that what he was copying was not his, and he copied at his peril. 2. We consider as an indicia of guilt or wrongdoing the act of respondent Robles of pulling out from Goodwill bookstores the book DEP upon learning of petitioners complaint while pharisaically denying petitioners demand. It was further noted that when the book DEP was re-issued as a revised version, all the pages cited by petitioners to contain portion of their book College English for Today were eliminated. In cases of infringement, copying alone is not what is prohibited. The copying must produce an injurious effect. Here, the injury consists in that respondent Robles lifted from petitioners book materials that were the result of the latters research work and compilation and misrepresented them as her own. She circulated the book DEP for commercial use and did not acknowledge petitioners as her source. Hence, there is a clear case of appropriation of copyrighted work for her benefit that respondent Robles committed. Quotations from a published work if they are compatible with fair use and only to the extent justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries are allowed provided that the source and the name of the author, if appearing on the work, are mentioned.
16 - Joaquin v. Drilon (1999) Facts: BJ Productions, Inc. (BJPI) is the holder of a Certificate of Copyright of a dating game show named Rhoda and Me. BJPI submitted to the National Library an addendum to its certificate of copyright specifying the shows format and style of presentation. While watching tv, Joaquin (President of BJPI) saw on RPN Channel 9 an episode of Its a Date! which is produced by IXL Productions (IXL). He wrote a letter to the President of IXL, Zosa, informing him that BJPI had a copyright to Rhoda and Me and demanding that Its a Date be discontinued. Both shows have the same substance because two matches are made between a male and a female, both single, and the two couples are treated to a night or two
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of dining and/or dancing at the expense of the show. So, the major concepts are the same. Zosa apologized and wanted to settle but IXL didnt stop airing the show. Joaquin sent a second letter in which he reiterated his demand to discontinue Its a Date. Meanwhile, Zosa registered IXLs copyright to the first episode of Its a Date and he was given a certificate of Copyright by the National Library. So naturally, Joaquin sued Zosa. Sec. of Justice Drilon moved for the dismissal of the case. Joaquin is contending that BJPIs copyright covers only a specific episode of Rhoda and Me and that the formats or concepts of dating game shows are NOT covered by copyright protection. Note: Joaquin claims that (just in case he asks for specifics) 1. Determination of the question whether the format or mechanics of a show is entitled to copyright protection is for the court, and not the Secretary of Justice, to make. 2. Secretary of Justice gravely abused his discretion in ruling that the master videotape should have been presented in order to determine whether there was probable cause for copyright infringement. Issue: 1. W/N the format or mechanics of a show is entitled to copyright protection 2. W/N there is a need to present master tapes Held/Ratio: 1. NO. The format of a show is not copyrightable. Section 2 of P.D. No. 49 (Decree on Intellectual Property), enumerate the classes of work entitled to copyright protection. The format or mechanics of a television show is not included in the list of protected works in 2 of P.D. No. 49. For this reason, the protection afforded by the law cannot be extended to cover them. Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted by the statute, and not simply a pre-existing right regulated by the statute. Being a statutory grant, the rights are only such as the statute confers, and may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms and conditions specified in the statute. P.D. No. 49, 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. Mere description by words of the general format of the two dating game shows is insufficient; the presentation of the master videotape in evidence was indispensable to the determination of the existence of probable cause. aptly observed by respondent Secretary of Justice: A television show includes more than mere words can describe because it involves a whole spectrum of visuals and effects, video and audio, such that no similarity or dissimilarity may be found by merely describing the general copyright/format of both dating game shows. 2. YES present the master tape! REMEDIES PART: Petitioners claim that their failure to submit the copyrighted master videotape of the television show Rhoda and Me was not raised in issue during the preliminary investigation and, therefore, it was error for the Secretary of Justice to reverse the investigating prosecutors finding of probable cause on this ground. A preliminary investigation falls under the authority of the state prosecutor who is given by law the power to direct and control criminal actions. He is, however, subject to the control of the Secretary of Justice. In reviewing resolutions of prosecutors, the Secretary of Justice is not precluded from considering errors, although unassigned, for the purpose of determining whether there is probable cause for filing cases in court. He must make his own finding of probable cause and is not confined to the issues raised by the parties during preliminary investigation. Moreover, his findings are not subject to review unless shown to have been made with grave abuse. Presentation of Master Tape Petitioners claim that Drilon gravely abused his discretion in ruling that the master videotape should have been presented in order to determine whether there was probable cause for copyright infringement. Discussion of 20th Century Case vis--vis Columbia Pictures In the 20th Century Fox Film Corp vs. CA, it involved raids conducted on various videotape outlets allegedly selling or renting out pirated videotapes. The trial court found that the affidavits of NBI agents, given in support of the application for the search warrant, were insufficient without the master tape. The presentation of the master tapes of the copyrighted films, from which the pirated films were allegedly copied, was necessary for the validity of search warrants against those who have in their possession the pirated films. The essence of a copyright infringement is the similarity or at least substantial similarity of the purported pirated works to the copyrighted work. Hence, the applicant must present to the court the copyrighted films to compare them with the purchased evidence of the video tapes allegedly pirated to determine whether the latter is an unauthorized reproduction of the former. This linkage of the copyrighted films to the pirated films must be
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established to satisfy the requirements of probable cause. Mere allegations as to the existence of the copyrighted films cannot serve as basis for the issuance of a search warrant. This ruling was qualified in Columbia Pictures vs. CA: In fine, the supposed pronunciamento in said case regarding the necessity for the presentation of the master tapes of the copyrighted films for the validity of search warrants should at most be understood to merely serve as a guidepost in determining the existence of probable cause in copyright infringement cases where there is doubt as to the true nexus between the master tape and the pirated copies. An objective and careful reading of the decision in said case could lead to no other conclusion than that said directive was hardly intended to be a sweeping and inflexible requirement in all or similar copyright infringement cases. In the case at bar, during the preliminary investigation, petitioners and private respondents presented written descriptions of the formats of their respective televisions shows, on the basis of which the investigating prosecutor ruled: The copyright does not extend to the general concept or format of its dating game show. Accordingly, by the very nature of BJPIs copyright, the investigating prosecutor should have the opportunity to compare the videotapes of the two shows. claiming it had no basis and reiterated the signing of the contract for SM Cubao. Two years later, Metro industrial Services offered to construct light boxes for SMIs chain of stores. SMI approved the proposal and asked for the fabrication of 10 light boxes. After this contract with Metro Industrial services, SMI hired another contractor to fabricate such light boxes, EYD Rainbow Corporation. 300 units were fabricated and delivered on staggered basis and installed in SM Megamall and SM City. In 1986, P&D learned about these light boxes in the different SM branches and that defendant-appellant North Edsa Marketing Inc. (NEMI), through its marketing arm Prime Sports Marketing Services sold advertising display in these light boxes in the different SM branches. NEMI is a sister company of SMI. P&D enjoined SMI and NEMI from using these light boxes and to remove them from the SM branches. It also demanded the discontinued use of the trademark Poster Ads and the payment of 20M as compensatory damages. SMI suspended the leasing of said light boxes and NEMI took down the advertisements for Poster Ads. P&D filed a case for infringement of trademark and copyright, and unfair competition plus damages. RTC upheld P&D but CA denied hence this appeal. 3. 17 - Pearl and Dean Inc. v. Shoemart Inc. and North Edsa Marketing Inc. (2003) Facts: Pearl and Dean (P&D) is a corporation that manufactures advertising display units referred to as light boxes (the ones used in movie houses and in malls where posters are inserted). P&D secured a Certificate of Copyright Registration dated Jan. 20, 1981. It registered the same under the trademark Poster Ads but the trademark application was only approved on September 12, 1988. Metro Industrial Services is the company contracted by P&D to fabricate these light boxes. (they will be important later) P&D negotiated with SMI for the lease and installation of the light boxes in SM North Edsa, however since at that time SM North Edsa was still under construction, SMI offered SM Makati and Cubao instead. P&D agreed, its Manager, Vergara, submitted to SMI the contract for SM Makati and Cubao, however SM only signed and returned the contract for SM Makati. Vergara updated SM with the other contract but it never replied. In 1986 SMIs counsel informed P&D that it was rescinding the contract of SM Makati due to P&Ds nonperformance. Vergara protested SMIs unilateral action Issues: 1. If the engineering or technical drawings of an advertising display unit (light box) are granted copyright protection (copyright certificate of registration) by the National Library, is the light box depicted in such engineering drawings ipso facto also protected by such copyright? 2. Should the light box be registered separately and protected by a patent issued by the Bureau of Patents Trademarks and Technology Transfer (now Intellectual Property Office) in addition to the copyright of the engineering drawings? 3. Can the owner of a registered trademark legally prevent others from using such trademark if it is a mere abbreviation of a term descriptive of his goods, services or business? Held/Ratio: 1. No. it is not protected by Copyright. In upholding the CA, the SC held that, Petitioner P & Ds complaint was that SMI infringed on its copyright over the light boxes when SMI had the units manufactured by Metro and EYD Rainbow Advertising for its own account. Obviously, petitioners position was premised on its belief that its copyright over the engineering drawings extended ipso facto to
16

the light boxes depicted or illustrated in said drawings. In ruling that there was no copyright infringement, the Court of Appeals held that the copyright was limited to the drawings alone and not to the light box itself. We agree with the appellate court. First, petitioners application for a copyright certificate as well as Copyright Certificate No. PD-R2588 issued by the National Library on January 20, 1981 clearly stated that it 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 2 expressly enumerated the works subject to copyright: SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any of the following works: xxxxxxxxx (O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps; xxxxxxxxx Although petitioners copyright certificate was entitled Advertising Display Units (which depicted the box-type electrical devices), its claim of copyright infringement cannot be sustained. Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant, the rights are limited to what the statute confers. It may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms and conditions specified in the statute. Accordingly, it can cover only the works falling within the statutory enumeration or description. P & D secured its copyright under the classification class O work. This being so, petitioners copyright protection extended only to the technical drawings and not to the light box itself because the latter was not at all in category of prints, pictorial illustrations, advertising copies, labels, tags and box wraps. Stated otherwise, even as we find that P & D indeed owned a valid copyright, the same could have referred only to the technical drawings within the category of pictorial illustrations. It could not have possibly stretched out to include the underlying light box. The strict application of the laws enumeratio n in Section 2 prevents us from petitioner even a little leeway, that is, even if its copyright certificate was entitled Advertising Display UNITs. What the law does not include, it excludes, and for the good reason: the light box was not a literary or artistic piece which could be copyrighted under the copyright law. 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. 2. In case he asks, petitioner also did not have a right under the patents law because it never applied for a patent. 3. As for Trademark, the court ruled that the term Poster Ads P & D was able to secure a trademark certificate for it, but one where the goods specified were stationeries such as letterheads, envelopes, calling cards and newsletters. Petitioner admitted it did not commercially engage in or market these goods. On the contrary, it dealt in electrically operated backlit advertising units and the sale of advertising spaces thereon, which, however, were not at all specified in the trademark certificate.
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Lira Fuster: Speech Issue Because He Didn't Think CSS Should Be Legal

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Lira Fuster: Speech Issue Because He Didn't Think CSS Should Be Legal

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LEXMARK V. STATIC Lexmark is a large manufacturer of laser and inkjet printers.

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Distinguishing between an unprotectable idea and a protectable creative

Second, because of this mistaken

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With regards to the Printer Loading Program,

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20 century fox v. CA I. THE FACTS

Copyright Digests Lira Fuster

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