IPL – DEAN VERA (MIDTERM REVIEWER by JMCRUZ)

CASES DOCTRINE
INTRODUCTION
SANTOS v. MCCULLOUGH The author of a literary composition has a light to the first
(cannot be applied in present, by virtue of IPL publication thereof. He has a right to determine whether it
amendment, copyright exists from the moment of shall be published at all, and if published, when, where, by
creation) whom, and in what form. This exclusive right is confined
to the first publication. When once published, it is dedicated
to the public, and the author loses the exclusive right to
control subsequent publication by others, unless the work
is placed under the protection of the copyright law.

FILIPINO SOCIETY OF COMPOSERS v. TAN If the general public has made use of the object sought to
(cannot be applied in present, by virtue of IPL be copyrighted prior to the copyright application the law
amendment, copyright exists from the moment of deems the object to have been donated to the public domain
creation) and the same can no longer be copyrighted.

BAYANIHAN v. BMG Republic Act No. 8293, otherwise known as

the Intellectual Property Code, Section 172.2 of which
reads: 172.2. Works are protected by the sole fact of their
creation, irrespective of their mode or form of expression,
as well as of their content, quality and purpose.

Composer/ author of the lyrics of a song is protected by the

mere fact alone that he is the creator thereof.

KHO v. CA Trademark, copyright and patents are different intellectual

property rights that cannot be interchanged with one
another.

1. 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.
2. 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.
3. 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.

UNILEVER v. P&G Copyright for a work or intellectual creation subsists from

the moment of its creation. Accordingly, the creator
acquires copyright for his work right upon its creation. The
intellectual creators exercise and enjoyment of copyright
IPL – DEAN VERA (MIDTERM REVIEWER by JMCRUZ)
IDEA EXPRESSION DICHOTOMY
BAKER v. SELDEN
FEIST PUBLICATION v. RURAL TELEPHONE
for his work and the protection given by law to him is not
contingent or dependent on any formality or registration.
The copyright of a book on perspective, no matter how
many drawings and illustrations it may contain, gives no
exclusive right to the modes of drawing described, though
they may never have been known or used before. By
publishing the book without getting a patent for the art, the
latter is given to the public. The fact that the art described
in the book by illustrations of lines and figures which are
reproduced in practice in the application of the art makes
no difference. Those illustrations are the mere language
employed by the author to convey his ideas more clearly.
Had he used words of description instead of diagrams
(which merely stand in the place of words), there could not
be the slightest doubt that others, applying the art to
practical use, might lawfully draw the lines and diagrams
which were in the author's mind, and which he thus
described by words in his book.
The very object of publishing a book on science or the
useful arts is to communicate to the world the useful
knowledge which it contains. But this object would be
frustrated if the knowledge could not be used without
incurring the guilt of piracy of the book."
HARPER & ROW PUBLISHER v. NATION
ENTERPRISE
Copyright assures authors the right to their original
expression, but encourages others to build freely upon the
ideas and information conveyed by a work.
No author may copyright facts or ideas. The copyright is
limited to those aspects of the work -- termed 'expression' -
- that display the stamp of the author's originality.
Copyright treats facts and factual compilations in a wholly
consistent manner. Facts, whether alone or as part of a
compilation, are not original and therefore may not be
copyrighted. A factual compilation is eligible for copyright
if it features an original selection or arrangement of facts,
but the copyright is limited to the particular selection or
arrangement. In no event may copyright extend to the facts
themselves.
It defines a “compilation” in the copyright sense as “a work
formed by the collection and assembly of preexisting
IPL – DEAN VERA (MIDTERM REVIEWER by JMCRUZ)
WORK NOT SUBJECT TO PROTECTION
MORRISSEY v. P&G
(merger doctrine)
BRANDIR INTL v. CASCADE PACIFIC LUMBER
PEARL & DEAN v. SHOEMART
(copyright protection extended only to the technical
drawings and not to the light box itself because the latter
was not at all in the category of prints, pictorial
illustrations, advertising copies, labels, tags and box
wraps.)
materials or of data that are selected, coordinated, or
arranged in such a way that the resulting work as a whole
constitutes an original work of authorship” Originality
requires only that the author make the selection or
arrangement independently (i. e., without copying that
selection or arrangement from another work), and that it
display some minimal level of creativity.
In sum, facts are never original, that the copyright in a
compilation does not extend to the facts it contains, and that
a compilation is copyrightable only to the extent that it
features an original selection, coordination, or arrangement.
When the uncopyrightable subject matter is very narrow, so
that the topic necessarily requires, if not only one form of
expression, at best only a limited number, to permit
copyrighting would mean that a party or parties, by
copyrighting a mere handful of forms, could exhaust all
possibilities of future use of the substance.
Copyright does not extend to the subject matter at all, and
person cannot complain even if his particular expression
was deliberately adopted.
Denicola Test: If design elements reflect a merger of
aesthetic and functional considerations, the artistic aspects
of a work cannot be said to be conceptually separable from
the utilitarian elements. Conversely, where design elements
can be identified as reflecting the designer's artistic
judgment exercised independently of functional influences,
conceptual separability exists.
Useful Article Doctrine: The design of a useful article shall
be considered a pictorial, graphic, or sculptural work only
if, and only to the extent that, such design incorporates
pictorial, graphic, or sculptural features that can be
identified separately from, and are capable of existing
independently of, the utilitarian aspects of the article.
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. What the
law does not include, it excludes.
IPL – DEAN VERA (MIDTERM REVIEWER by JMCRUZ)
JOAQUIN v. DRILON The law, in enumerating what are subject to copyright,
(The copyright does not extend to the general concept or refers to finished works and not to concepts. The copyright
format of its dating game show.) 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.

SAMBAR v. LEVI STRAUSS The essence of copyright registration is originality and a

copied design is inherently non-copyrightable. To be
entitled to copyright, the thing being copyrighted must be
original, created by the author through his own skill, labor
and judgment, without directly copying or evasively
imitating the work of another.

CHING v. SALINAS While works of applied art, original intellectual, literary

and artistic works are copyrightable, useful articles and
works of industrial design are not. A useful article may be
copyrightable only if and only to the extent that such design
incorporates pictorial, graphic, or sculptural features that
can be identified separately from, and are capable of
existing independently of the utilitarian aspects of the
article.

Utility models lack the decorative quality or value that must

characterize authentic works of applied art. They are not
even artistic creations with incidental utilitarian functions
or works incorporated in a useful article. A utility model is
a technical solution to a problem in any field of human
activity which is new and industrially applicable. It may be,
or may relate to, a product, or process, or an improvement
of any of the aforesaid. (a subject of patent)

OWNERSHIP
COMMUNITY v. REID A work for hire can arise through one of two mutually
(subj to Philippine Law and Jurisprudence on exclusive means, one for employees and one for
Emplover-Employee Relationship) independent contractors, and ordinary canons of statutory
interpretation indicate that the classification of a particular
hired party should be made with reference to agency law.
In using the term "employee," the parties and Congress
meant to refer to a hired party in a conventional
employment relationship.
IPL – DEAN VERA (MIDTERM REVIEWER by JMCRUZ)
TRANSFER OF OWNERSHIP
FIRST SALE DOCTRINE
BOBBS-MERILL v. STRAUSS One who has sold a copyrighted article, without restriction,
(copyright is separate from the material object itself) has parted with all right to control the sale of it. The
purchaser of a book, once sold by authority of the owner of
the copyright, may sell it again, although he could not
publish a new edition of it.

Exclusive right of the copyright owner to publish, print and

distribute is limited to the first sale and does not extend to
the future/ subsequent sales.

LIMITATION
PARODY AND FREE SPEECH
CAMPBELL v. ACUFF-ROSE MUSIC, INC. Parody, like other comment and criticism, may claim fair
(subject to Section 185 of IP Code) use. The inquiry focuses on whether the new work merely
supersedes the objects of the original creation, or whether
and to what extent it is "transformative," altering the
original with new expression, meaning, or message. The
more transformative the new work, the less will be the
significance of other factors, like commercialism, that may
weigh against a finding of fair use.

FAIR USE DOCTRINE

HABANA v. ROBLES To constitute infringement, it is not necessary that the
whole or even a large portion of the work shall have been
copied. If so much is taken that the value of the original is
sensibly diminished, or the labors of the original author are
substantially and to an injurious extent appropriated by
another, that is sufficient in point of law to constitute
piracy.

In cases of infringement, copying alone is not what is

prohibited. The copying must produce an injurious
effect. Here, the injury when a person lifted from author’s
book materials that were the result of the latter’s research
work and compilation and misrepresented them as her own
by not acknowledging the author as the source.

Sec. 184 - The making of quotations from a published work

if they are compatible with fair use and only to the extent
justified for the purpose, including quotations from
newspaper articles and periodicals in the form of press
summaries: Provided, That the source and the name of the
author, if appearing on the work, are mentioned.
IPL – DEAN VERA (MIDTERM REVIEWER by JMCRUZ)
HARPER & ROW PUBLISHER v. NATION ENT. In determining whether the use was fair, the factors to be
considered shall include: (1) the purpose and character of
the use; (2) the nature of the copyrighted work; (3) the
substantiality of the portion used in relation to the
copyrighted work as a whole; and (4) the effect on the
potential market for or value of the copyrighted work.

DEPOSIT AND REGISTRATION

MANLY SPORTSWEAR v. DADODETTE ENT.
The certificates of registration and deposit issued by the
National Library and the Supreme Court Library serve
merely as a notice of recording and registration of the work
but do not confer any right or title upon the registered
copyright owner or automatically put his work under the
protective mantle of the copyright law. It is not a conclusive
proof of copyright ownership. As it is, non-registration and
deposit of the work within the prescribed period only makes
the copyright owner liable to pay a fine.

SUBSIDIARY FORMS OF CREATION AND

OWNERSHIP
BROADCASTING ORGANIZATIONS
ABS-CBN v. PMSI
The must-carry rule as well as the legislative franchises
granted to both ABS-CBN and PMSI are in consonance
with state policies enshrined in the Constitution,
specifically Sections 9, 17, and 24 of Article II on the
Declaration of Principles and State Policies.[35]
Sec. 211. Scope of Right. - Subject to the provisions of
Section 212, broadcasting organizations shall enjoy the
exclusive right to carry out, authorize or prevent any of
the following acts: 211.1. The rebroadcasting of their
broadcasts;
EXCEPTION: Broadcast orgs are franchise grantee. More
so, a franchise is a mere privilege which may be reasonably
burdened with some form of public service.

All broadcasting, whether by radio or by television stations,

is licensed by the government. Airwave frequencies have to
be allocated as there are more individuals who want to
broadcast than there are frequencies to assign. A franchise
is thus a privilege subject, among other things, to
amendment by Congress in accordance with the
constitutional provision that any such franchise or right
granted . . . shall be subject to amendment, alteration or
repeal by the Congress when the common good so requires.
IPL – DEAN VERA (MIDTERM REVIEWER by JMCRUZ)
PHOENIX PUBLISHING HOUSE v. RAMOS
COLUMBIA PICTURES v. CA
NBI-MICROSOFT v. HWANG
ART. 2208. In the absence of stipulation, attorney's fees
and expenses of litigation, other than judicial costs,
cannot be recovered, except:
(1) When exemplary damages are awarded;
(2) When the defendant's act or omission has compelled the
plaintiff to litigate with third persons or to incur expenses
to protect his interest;
(3) In criminal cases of malicious prosecution against the
plaintiff;
(4) In case of a clearly unfounded civil action or
proceeding against the plaintiff;
(5) Where the defendant acted in gross and evident bad faith
in refusing to satisfy the plaintiff's plainly valid, just and
demandable claim;
(6) In actions for legal support;
(7) In actions for the recovery of wages of household
helpers laborers and skilled workers;
(8) In actions for indemnity under workmen's
compensation and employer's liability laws;
(9) In a separate civil action to recover civil liability arising
from a crime;
(10) In any other case where the court deems it just and
equitable that attorney's fees and expenses of litigation
should be recovered;
In all cases, the attorney's fees and expenses of litigation
must be reasonable.
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.
Article III of our Constitution mandates in Sec. 2 thereof
that no search warrant shall issue except upon probable
cause to be determined personally by the judge after
examination under oath or affirmation of the complainant
and the witnesses he may produce, and particularly
describing the place to be searched and the things to be
seized.
- PERSONAL KNOWLEDGE
- ACT OF INFRINGEMENT
The gravamen of copyright infringement is not merely the
unauthorized manufacturing of intellectual works but rather
the unauthorized performance of any of the acts covered by
Section 5. Hence, any person who performs any of the acts
under Section 5 without obtaining the copyright owners
prior consent renders himself civilly and criminally liable
for copyright infringement.
IPL – DEAN VERA (MIDTERM REVIEWER by JMCRUZ)
IN THE MATTER OF CHARGES OF Plagiarism means the theft of another persons language,
PLAGIARISM: AJ DEL CASTILLO thoughts, or ideas. To plagiarize, as it is commonly
understood according to Webster, is to take (ideas, writings,
etc.) from (another) and pass them off as ones own. The
passing off of the work of another as ones own is thus an
indispensable element of plagiarism. It presupposes intent
and a deliberate, conscious effort to steal another’s work
and pass it off as ones own.

While the academic publishing model is based on the

originality of the writers thesis, the judicial system is based
on the doctrine of stare decisis, which encourages courts to
cite historical legal data, precedents, and related studies in
their decisions. The judge is not expected to produce
original scholarship in every respect. The strength of a
decision lies in the soundness and general acceptance of the
precedents and long held legal opinions it draws from.