IPL Finals Copyright and Patent (AY 09-10)

COPYRIGHT & PATENT FINAL EXAMS
IPL 134
PROF. VICENTE B. AMADOR
DATE RELEASED: MARCH 10, 2010
The Non-Graduating Students may have from March 15, 2010 to April 15, 2010 to
submit their Exam papers.
1. Which one of the following pairs of persons are joint authors? (20%)
A. A FACULTY MEMBER COMES UP WITH AN IDEA FOR A WEB PAGE
AND A GRADUATE STUDENT DESIGNS THE PAGE BASED ON THE
FACULTY MEMBER'S IDEA.
B. A FACULTY MEMBER AND ONE OF HER STUDENTS ORALLY AGREE
THAT THEY WILL COLLABORATE ON AN INTERACTIVE ONLINE
TUTORIAL. ONE AUTHORS A POWERPOINT PRESENTATION AND THE
OTHER WRITES THE CODE TO CONVERT THE POWERPOINT
PRESENTATION TO AN INTERACTIVE ONLINE TUTORIAL.
C. A FACULTY MEMBER AND A PHOTOGRAPHER DISCUSS
COLLABORATION, AGREEING ON WHAT EACH WILL CONTRIBUTE
(TEXTUAL CONTENT AND PHOTOGRAPHS, RESPECTIVELY) AND WHAT
RIGHTS EACH EXPECTS TO HAVE IN THE FINISHED WORK, EXPLICITLY
CONCLUDING THAT THEY BOTH INTEND TO BE JOINT AUTHORS OF THE
ENTIRE TUTORIAL WHEN IT IS FINISHED.
ANSWER: C
There are two tests to determine whether or not an author qualifies as a joint
author: the De Minimis Test and the “Copyrightable Matter” test. The Copyrightable
matter test, however, is favored more by the courts. According to the copyrightable
matter test, a person is a joint author if his contribution is not a mere idea and his
output is in itself copyrightable. The author must supply more than mere direction
or ideas. He must actually create the work, translate an idea into a fixed, tangible
expression entitled to copyright protection.1
To determine whether there is a joint work of joint authors, the US court in the
Erickson v. Trinity Theater Case2 imposed the following additional guidelines: (1)
each author must intend their respective contributions to be contribution to unitary
whole; and (2) collaborators are not joint authors unless they intended to be joint
authors when work was created. Collaboration alone is insufficient to create a joint
work.
In the situations given above, only letter c presents a case of joint authors. In the
first situation, only the student would be entitled to own the copyright of the web
page.
1
VICENTE AMADOR, INTELLECTUAL PROPERTY FUNDAMENTALS p.337
2
Erickson v. Trinity Theatre, Inc. 13 F.3d 1061 (1994), as cited in Amador, pp. 336-338
OIL SPILL RECOVERY SYSTEM (50%)2
The webpage may be considered a protected work under Section 172.1(n) as a

computer program. A computer program is a set of instructions expressed in words,
codes, schemes or in any other form, which is capable, when incorporated in a
medium that the computer can read, of causing the computer to perform a
particular task or result.3 A web page, on the other hand, is a document on the
world wide web written in HTML (hypertext markup language) translated by the web
browser of each computer4. As a web page can be read in a computer (through the
web Browser) and can cause the computer to perform a particular task or result, it
may be considered protected as an original intellectual creation protected from the
moment of their creation. However, the faculty member’s idea is not copyrightable
under Section 175 of the IP Code5. Copyright assures authors the right to their
original expression, but encourages others to build freely upon the ideas and
information conveyed by a work.6
As to letter B, individually, the faculty member and the student would be entitled
copyright protection for their work: The faculty member for her power point
presentation (protected under 172.1 (c)) and the student for the code to convert the
power point presentation into an interactive online tutorial (protected under Section
172.1(n)). However, as was mentioned above, mere collaboration is insufficient to
constitute a joint work, absent any showing that the faculty member and the
student intended the code and the power point presentation to be part of a unitary
whole and that they intended to be joint authors. There is no showing that their
agreement to collaborate on an interactive online tutorial would entail the creation
of the power point presentation and the code to convert the said presentation into
an interactive online tutorial.
Thus, only letter c presents a joint authorship situation. Both the textual content
and the photographs are independently protected under Section 172.1 (a) and (k)
respectively. Further, in this case, it has been established that the photographer
and the faculty member intended that they would both contribute to a unitary work
and that from the start, they had intended to be joint authors. Thus, both of them
would be considered joint authors.
2. Which of the following employers successfully acquire copyright from

the author of the described software? (20%)
A. THE AUTHOR IS AN EMPLOYEE WHOSE JOB RESPONSIBILITIES
INCLUDE COMPUTER PROGRAMMING. HE CREATES A PROGRAM TO
CONVERT POWER POINT PRESENTATIONS TO INTERACTIVE ONLINE
TUTORIALS.
B. THE AUTHOR IS HIRED TO WRITE A PROGRAM TO CONVERT POWER
POINT PRESENTATIONS TO INTERACTIVE ONLINE TUTORIALS. HE
3
INTELL. PROP. CODE, § 171.4
4
www.techterms.com, at http://www.techterms.com/definition/webpage (last visited at April 7, 2010)
5
INTELL. PROP. CODE, §175. Unprotected Subject Matter. Notwithstanding the provisions of sections 172 and 173,
no protection shall extend, under this law, to any idea, procedure, system, method or operation, concept, principle,
discovery or mere data as such, even if they are expressed, explained, illustrated or embodied in a work; news of
the day and other miscellaneous facts having the character of mere items of press information; or any official text
of a legislative, administrative or legal nature, as well as any official translation thereof (n)
6
AMADOR, supra note 1, at 235
Charisse Mae Villamejor Mendoza Copyright and Patent Final

Exam
SIGNS A CONTRACT, BUT IT DOES NOT MENTION COPYRIGHT OR

WORK-FOR-HIRE.
ANSWER: A
Both situations present works-for-hire relationships. However, only the first situation
confers copyright to the employer.
According to Section 178.3, if the employee creates an object of copyright which is

not part of his regular duties, even if he used the facilities and materials of the
employer the employee would own the copyright. If however, the work is a result of
the performance of his regularly-assigned duties, the employer would own the
copyright, unless there is an express or implied agreement to the contrary. In this
case, the author is an employee whose job responsibilities include computer
programming and he created a program to convert power point presentations to
interactive online tutorials. There is no showing that the employer and the author-
employee agreed that the author-employee would own the computer programs he
has created. Clearly, in this case, the employer of the author would own the
copyright.
The second situation, however, may fall under Section 178.4 wherein the author is
hired by a person other than his employer and is paid for a work made in pursuance
of the commission. In this case, the general rule is that the work would be owned by
the person who commissioned it but the copyright would remain with the creator
unless there is a stipulation to the contrary. The stipulation providing the
conferment of copyright to the person who commissioned the work must be made
before the work commissioned is made7. In this case, the contract entered by the
author and the person who hired him does not mention copyright or work-for-hire.
Therefore, the general rule would apply, i.e. the author would own the copyright and
thus, the “employer” would not be able to successfully acquire it.
3. If you want to make of another's original work and it is not covered by

any of the provisions of Section 184, may your action still be
considered a fair use and can it be analyzed using the Four Factor Fair
Use Test? (20%)
ANSWER: YES
Section 184 of the IP Code expressly provides instances which shall not constitute
copyright infringement. These instances are deemed to be statutory fair uses8 which
no longer need to be subjected to the analysis under the fair use factors in Section
185.
If an action, however, does not fall into any of the classification provided in Section
184, then Section 185 would apply. Section 185 provides the four factor fair use
test, which are as follows:
(a) The purpose and character of the use, including whether such use is of
a commercial nature or is for non-profit educational purposes;
7
See Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410 (7th Cir. 1992).
8

Exam
(b) The nature of the copyrighted work;

(c) The amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and
(d) The effect of the use upon the potential market for or value of the
copyrighted work.
The four fair use factors “are to be weighted together, in light of the purposes of
copyright”, and “the primary objective of copyright is not to reward the labor of
authors, but “to promote the progress of Science and Useful Arts.”9
Copyright protection has never accorded the copyright owner complete control over
all possible uses of his work.10 Once an act is considered to have passed the four
factor test, it is an excusable use of a copyrighted work under fair use and may not
be treated as copyright infringement.
4. True/False:
A FACULTY MEMBER CANNOT BE SUED INDIVIDUALLY EVEN IF HIS OR
HER ACTIONS IN USING SOMEONE ELSE'S WORK INFRINGE ANOTHER'S
RIGHTS BECAUSE THE FACULTY MEMBER IS JUST AN EMPLOYEE DOING
HIS OR HER JOB. (20%)
FALSE. THE FACULTY MEMBER CAN BE SUED INDIVIDUALLY.
As a faculty member, it is his or her job to teach and guide students, prepare
materials for his or her classes, and other duties that may come with being a faculty
member. Nowhere would it be one’s job to infringe on another’s rights. It can never
be his “regularly-assigned” duties.
The faculty member, as the natural person whose name would most likely be
indicated in the work which is allegedly infringing, would be presumed to be the
author of the work.11 It is he who directly infringed the rights of the copyright owner.
Direct infringement is committed by any person who himself carries out any of acts
in violation of the author’s economic rights under Section 177, their moral rights
and droit de suite under Chapters X and XI, as well as the rights of performers,
producers of sound recordings and broadcasting organizations under Chapters XII,
XIII and XIV.12
As a matter of defense, the faculty member may allege that he is merely an

employee of the university and as such, he does not own the copyright to the
infringing work. This proposition is based on Section 178 of the Intellectual Property
Code on Rules on Copyright Ownership. However, for this argument to be used, i.e.
9
AMADOR, supra note 1, at 402.
10
11
INTELL. PROP. CODE, § 219.1 provides: 219.1. The natural person whose name is indicated on a work in the usual
manner as the author shall, in the absence of proof to the contrary, be presumed to be the author of the work. This
provision shall be applicable even if the name is a pseudonym, where the pseudonym leaves no doubt as to the
identity of the author.
12

Exam
for the university (as his employer) to be the author or owner of the infringing work,
the said work must be part of the faculty member’s regularly assigned duties. Thus,
the faculty member must first show that it is within his duties as an employee of the
university to make the work which allegedly infringed the rights of a copyright
owner. This, however, does not affect the right of the plaintiff to sue solely the
faculty member.
If the university aided or abetted the infringement done by the faculty member, it
could be held liable for contributory infringement under Section 217.113. As a
contributory infringer, it must be shown that the university, while having knowledge
of the infringing activity, induced, caused or materially contributed to the infringing
conduct of the faculty member14, or authorized the faculty member, without the
copyright owner’s consent, to commit any violation of the owner’s exclusive rights.
However, even if it be successfully shown that the university is indeed a

contributory infringer, the action may still survive even if the faculty is the only one
sued because the university is merely a necessary party and not an indispensable
one. An indispensable party is a party in interest without whom no final
determination can be had of an action15 while a necessary party is one who ought to
be joined as a party if complete relief is to be accorded as to those already parties,
or for a complete determination or settlement of the claim subject of the action 16.
The non-inclusion of a necessary party does not prevent the court from proceeding
in the action, and the judgment rendered therein shall be without prejudice to the
rights of such necessary party17. Further, all persons subject to liability for copyright
infringement are jointly and severally liable. The plaintiff need only sue one such
infringer if the plaintiff deems it appropriate.18 Thus, even if the faculty member is
sued individually, the action may still be pursued by the injured party.
5. True/False:
A FACULTY MEMBER WHO FAILS TO FOLLOW UNIVERSITY POLICY ON
FAIR USE OF COPYRIGHTED MATERIALS UNDER SECTION 185 SHOULD
NEVERTHELESS BE FULLY INDEMNIFIED IF HIS OR HER ACTIONS
RESULT IN A LAWSUIT NAMING THE FACULTY MEMBER AS A
DEFENDANT. (20%)
FALSE.
The situation proposes the following:
a. That the faculty member is an employee of the university;
b. That part of the faculty member’s regularly assigned duties is to make
outputs which are entitled to copyright protection;
13
INTELL. PROP. CODE, § 217.1. Any person infringing any right secured by provisions of Part IV of this Act or aiding or
abetting such infringement shall be guilty of a crime…(emphasis provided)
14
Encyclopedia Britannica vs. Crooks 58 F.Supp.1247.
15
RULES OF COURT, Rule 3, § 7.
16
RULES OF COURT, Rule 3, §8.
17
Id., Rule 3, §9.
18
Columbia Broadcasting System, Inc. vs. Scorpio Music Distributors, Inc., 569 F. Supp. 47, (E.D. Pa. 1983).

Exam
c. That there is no agreement between the faculty member and the university
as to the ownership of the copyright of the works made by the faculty
member, and thus the copyright of the entire faculty member’s works belong
to the university;
d. That the university has a policy which is based on Section 185 of the IP Code;
e. That the faculty member did an act which should have been protected under
Section 185 of the IP Code;
f. That the said act, however, violated Section 185 of the IP Code;
g. That the faculty member is now being sued for the infringement; and
h. That the faculty member would want to be indemnified for any legal costs he
would undertake for the litigation of the copyright infringement
In this case, the infringing faculty member himself is being sued. The faculty
member may file a third-party claim against the university for indemnity of
whatever he has to pay to the victim of the infringement, and only if found by
the court to be entitled to such indemnity would the faculty member be
allowed to receive indemnity for the amount he has paid to the victim of
the infringement.
However, the faculty member may not, at all, be entitled to any indemnity in this
situation. First, it may be presumed that the university policy which is a mere
repetition of Section 185 of the IP Code was imposed as a guideline for the
copyrightable works that may be produced by the employees of the university.
Section 185 provides that a copyrightable work may be used for teaching including
multiple copies for classroom use, scholarship, research, and similar purposes, and
such use would be excused even if it would constitute a copyright infringement
provided it would qualify under the fair use test. The university may thus assert as
its defense the existence of the university policy to avoid any liability.
Second, although it may be within his assigned duties to make an output which is
copyrightable, it cannot be said that it is also within his assigned duties to make an
output which infringes on the copyright rights of another – an act which is
punishable by law. Contracting parties may only establish such stipulations that are
not contrary to law.19
ESSAY QUESTION(20%): Koko and Loco

PMI IS A NON-PROFIT ASSOCIATION FOR PROJECT MANAGEMENT PROFESSIONALS
(PMPS). PMI FIRST OFFERED A PMP CERTIFICATION EXAM IN 1984 AND FIRST
PUBLISHED A WORK ENTITLED PROJECT MANAGEMENT BODY OF KNOWLEDGE IN
1987. IN 1996, PMI PUBLISHED A SUPERSEDING COPYRIGHTED WORK ENTITLED
GUIDE TO THE PROJECT MANAGEMENT BODY OF KNOWLEDGE, REFERRED TO AS
THE PMBOK.
PMI'S PMP EXAM HAS BEEN “BASED UPON” THE PMBOK DURING THE PERIOD
RELEVANT TO THE DISPUTE. THE PMBOK’S INTRODUCTORY STATEMENT OF
PURPOSE SUGGESTS THAT IT SERVES AS A DESK REFERENCE WORK FOR
19
CIVIL CODE, art. 1306. The contracting parties may establish such stipulations, clauses, terms and conditions as
they may deem convenient, provided they are not contrary to law, morals, good customs, public order, or public
policy

Exam
PRACTICING PROJECT MANAGERS AS WELL AS A “CONSISTENT STRUCTURE” FOR

PMI'S CERTIFICATION OF PMPS.
PMI CERTIFICATION HAS COME TO BE VIEWED AS AN IMPORTANT CREDENTIAL,

CREATING A MARKET FOR TEXTBOOKS AND COURSES THAT PREPARE ASPIRING
PMPS TO PASS THE PMI EXAM. PMI WEBSITE MATERIALS SUGGEST THAT PMI,
COLLEGES AND UNIVERSITIES, AND NUMEROUS PRIVATE VENDORS HAVE
ENTERED THIS MARKET. BECAUSE PMI BASES THE PMP EXAM ON THE PMBOK, A
COMPREHENSIVE REFERENCE WORK, IT IS HARD TO IMAGINE THAT A VENDOR
COULD DEVISE A SUCCESSFUL COURSE TEACHING STUDENTS TO PASS THE PMP
EXAM WITHOUT USING-OR PLAGIARIZING-THE PMBOK. IN THIS REGARD, PMI'S
COPYRIGHT NOTICE IN THE FRONT OF THE PMBOK ADVISES:
ALL RIGHTS RESERVED. PERMISSION TO REPUBLISH IN FULL IS GRANTED FREELY.

NO PART OF THIS WORK MAY BE REPRODUCED OR TRANSMITTED IN ANY FORM
WITHOUT PRIOR WRITTEN PERMISSION OF THE PUBLISHER.
KOKO IS AN EXPERT IN THE FIELD OF PROJECT MANAGEMENT WHO OFFERS TEST

PREPARATION COURSES AND MATERIALS TO TEACH STUDENTS TO PASS THE
PMP EXAM. KOKO WROTE AND COPYRIGHTED PMP EXAM PREP. THE BOOK
BEGINS WITH MATERIALS SPECIFICALLY FOCUSED ON PASSING THE PMP EXAM
THAT HAVE NO COUNTERPARTS IN THE PMBOK. SUBSEQUENT SECTIONS, WHICH
ARE ENTITLED “THE MATERIALS” AND TAKE UP 150 OF THE WORK'S 165 PAGES,
TRACK THE PMBOK 'S ORGANIZATION OF THE PROJECT MANAGEMENT
“KNOWLEDGE AREAS” AND REPRODUCE OR CONDENSE THE MATERIALS
PRESENTED IN THE PMBOK.
LOCO OFFERS A VARIETY OF EXAM PREPARATION AND PROFESSIONAL TRAINING

COURSES. LOCO RETAINED ERIC NIELSEN TO DEVELOP THE SUBSTANTIVE
CONTENT FOR A PMP EXAM PREPARATION COURSE. LOCO BEGAN OFFERING THE
FOUR-DAY COURSE IN SEPTEMBER 2001, USING THE PMBOK AS THE “PRIMARY
REFERENCE” AND ALSO DISTRIBUTING TO STUDENTS LOOSE-LEAF MATERIALS
CALLED THE CANDIDATE NOTETAKER. KOKO SOON LEARNED OF THE
SIGNIFICANT SIMILARITIES BETWEEN LOCO’S CANDIDATE NOTETAKER AND
KOKO’S PMP EXAM PREP. KOKO COMPARED THE TWO WORKS AND INFORMED
LOCO THAT HE HAD REVISED KOKO’S COURSE MATERIALS TO REMOVE WHAT
KOKO BELIEVED TO BE THE INFRINGING CONTENT. KOKO FILED THIS LAWSUIT.
NIELSEN TESTIFIED THAT HE USED KOKO’S PMP EXAM PREP AND OTHER
REFERENCE WORKS IN PREPARING THE LOCO COURSE MATERIALS AND SAMPLE
TEST QUESTIONS.
1. WHAT ARE THE ESSENTIAL ELEMENTS OF A COPYRIGHT

INFRINGEMENT CLAIM? DEFINE AND EXPLAIN THE EXCLUSIVE RIGHTS
OF AN AUTHOR UNDER THE IP CODE.
FOR THEIR TO BE AN INFRINGEMENT, THE PLAINTIFF SHOULD BE ENTITLED

TO COPYRIGHT PROTECTION AND THAT HIS RIGHT UNDER THE IP
CODE HAS BEEN VIOLATED.

Exam
Infringement of a copyright is a trespass on a private domain owned and occupied

by the owner of the copyright, and, therefore, protected by law, and infringement of
copyright, or piracy, which is a synonymous term in this connection, consists in the
doing by any person, without the consent of the owner of the copyright, of anything
the sole right to do which is conferred by statute on the owner of the copyright.20
Thus, it may be said that for there to be a copyright infringement, the following
should be present:
(1) There should be a work protected under the IP Code;
(2) That the plaintiff is the owner of the copyright; and
(3) The defendant has exercised the rights exclusive to the copyright owner,
without the copyright owner’s consent or authorization.
Discussion of the Elements of Copyright Infringement
As for the first element, works eligible for copyright protection are, as a rule, all
original intellectual creations. To be protected by copyright law, an author’s work
must be original. This means that the works must originate from him; they must
have their origins in the labor of the author.21 This would include original works and
derivative works.
As for the second element, the IP Code provides for rules on ownership of copyright.
Thus, the plaintiff may be the author of the work, a co-owner, an employer, a
producer, or any other person as provided in the Code. Further, the author of the
work is presumed to be the owner of the work.22 The author must supply more than
mere direction or ideas. He must actually create the work, translate an idea into a
fixed, tangible expression entitled to copyright protection.23
For the last element, the IP Code provides that for a person to be liable for the
remedies provided and for criminal actions for copyright infringement, there should
be an infringement of a right protected under the code. These rights would include
exclusive rights and moral rights. Each right requires particular facts to be
established before a cause of action may arise.
Exclusive Rights
There are five exclusive rights attached to copyrighted works as contained in

various acts under Section 17724. These are termed “exclusive” rights because it
20
NBI-Microsoft Corporation & Lotus Development Corp. vs. Hwang, et al. G.R. No. 147043 June 21, 2005
21
22
23
24
INTELL. PROP. CODE, § 177. Copyright or Economic Rights
Subject to the provisions of Chapter VIII, copyright or economic rights shall consist of the exclusive right to carry
out, authorize or prevent the following acts:
177.1. Reproduction of the work or substantial portion of the work;
177.2. Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;
177.3. The first public distribution of the original and each copy of the work by sale or other forms of transfer of
ownership;

Exam
requires the authorization of the copyright owner before the said rights may be
exercised by any other individual.25 These rights are as follows:
(1) The right to reproduce;
(2) The right to prepare derivative works based upon the copyrighted works;
(3) The right to distribute;
(4) The right to perform; and
(5) The right to display26
The right of reproduction is seen as the bedrock of copyright and is

fundamental to the concept of ownership of a copyright.27 Its essence is creating
any tangible object which duplicates or embodies the work.28"Reproduction" is
defined as the making of one (1) or more copies of a work or a sound recording in
any manner or form.29 ‘Copies’ are material objects, other than phonerecords, in
which a work is fixed by any method now known or later developed, and from which
the work can be perceived, reproduced, or otherwise communicated, either directly
or with the aid of a machine or device. A phone record, on the other hand, includes
the material object in which sounds, other than those accompanying the motion
picture or other audiovisual work, are first fixed. The reproduction of a work in a
copy or phonerecord need not be an exact replica of the original in order to infringe
the reproduction right. Substantial similarity is all that is required.30 For this right to
be infringed, the plaintiff must show that he owns the valid copyright of the
allegedly infringed work and that the accused infringer copied the claimant’s work 31.
These elements may also be proved for the infringement of the other exclusive
rights, the right of reproduction being the bedrock of copyright.
The right to derivation, also termed the right of adaptation, is the right to
alter the original work and thereby create a new work with sufficient originality to
qualify for separate copyright protection. Under this right, the author has the right
to prevent unauthorized translations, musical arrangements, dramatizations,
177.4. Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound
recording, a computer program, a compilation of data and other materials or a musical work in graphic form,
irrespective of the ownership of the original or the copy which is the subject of the rental; (n)
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the work.
25
26
27
28
29
30
31
Dan Brown and Random House, Inc. et al. v. Lewis Perdue, No. 05-4840-CV, U.S.C.A., 2nd Circuit, 2006

Exam
fictionalizations, motion picture versions, sound recordings, art reproductions, and

other similar transformations.32
The right of distribution is the right to distribute copies or phonerecords of

the copyrighted work to the public by sale or other transfer of ownership, or by
rental, lease, or lending. 33 The right is limited to distributions to the public. This
occurs when the distribution is to more than a selected group of people or the
distribution is for more than a limited purpose, without prohibition on further
reproduction, distribution or sale.34 Unlike the other exclusive rights, distribution
right is infringed merely by a transfer of copies of the work, whether those copies
are lawfully or unlawfully made. Note, however, that the said right only pertains to
the first public distribution of the original and each copy of the work. This right is
exhausted after such first sale or transfer of ownership, provided the possessor
lawfully acquired the original or copies of the work.35
The right of public performance inheres in works of authorship other than

pictorial, graphic and sculptural works and architectural works.36 There are several
types of public performances. In the case of a work other than an audiovisual work,
it is the recitation, playing, dancing, acting or otherwise performing the work, either
directly or by means of any device or process. In the case of an audiovisual work, it
is the showing of its images in sequence and the making of the sounds
accompanying it audible. In the case of a sound recording, it is the making the
recorded sounds audible at a place or at places where persons outside the normal
circle of a family and that family's closest social acquaintances are or can be
present, irrespective of whether they are or can be present at the same place and
at the same time, or at different places and/or at different times, and where the
performance can be perceived without the need for communication.37 To
communicate the work to the public means to make it available to the public by
wire or wireless means in such a way that members of the public may access these
works from a place and time individually chosen by them.38
Lastly, the right of public display involves two aspects: the display of the
copy of the work and its display made to the public. To display a work means to
show a tangible work or copy of it, either directly or by means of a film, slide,
television image, or any other device or process or, in the case of a motion picture
or other audiovisual work, to show individual images consequently. To display
publicly is similar to the performance of a copyrighted work publicly.39 A public
32
AMADOR, supra note 1, at 448-449.
33
National Car Rental Sys., Inc. v. Computer Assocs. Int’l, Inc., 991 F.2d 426 (8th Cir. Minn.1993) as cited in AMADOR,
supra note 1, at 449
34
35
AMADOR, supra note 1, at 360-61.
36
37
38
Id., §171.3
39

Exam
display is generally accepted to mean a display at a place open to the public or

where a substantial number of persons outside the normal circle of the family and
its social acquaintances is gathered.40 Given the nature of the right, the work
protected must be of a type that can be visually perceived, or in the case of
audiovisual works, viewed and heard.41
2. WHAT ARE THE TWO BASIC CATEGORIES OF COPYRIGHT-

PROTECTED WORKS AND HOW ARE THEY DIFFERENTIATED FROM EACH
OTHER?
THE TWO BASIC CATEGORIES OF COPYRIGHT-PROTECTED WORK ARE

ORIGINAL AND DERIVATIVE WORKS.
Original works are the items enumerated in Section 172 of the IP Code, although the
list is not exclusive but merely illustrative.42 For a work to be original, it should be
independently created by the author and possesses some minimal degree of
creativity.43 The author must contribute something more than a “merely trivial
variation, something recognizably “his own.”44
Derivative works, on the other hand, are enumerated in Section 173 of the IP Code.
These are works based on another pre-existing work. These include dramatizations,
translations, adaptations, abridgments, arrangements, and other alterations of
literary or artistic works and collections of literary, scholarly or artistic works, and
compilations of data and other materials which are original by reason of the
selection or coordination or arrangement of their contents.45These works are
entitled to protection as original works since their creation calls for intellectual
effort.46 Note, however, that the copyright extends only to the material contributed
by the author of the derivative work, as distinguished from the pre-existing material
employed in the work, and does not imply any exclusive right in the pre-existing
material. The copyright in such work is independent of and does not affect or
enlarge the scope, duration, ownership or substance of, any copyright protection in
the pre-existing material.47
Compared to original works, derivative works borrow original and expressive

content from another work and the newer work recasts, transforms or adapts – and
not simply copy – the work upon which it is based. 48 There must be at least some
substantial variation from the underlying work and not merely a trivial variation.49
However, since a derivative work is by definition substantially similar to the
underlying work and would be a copyright infringement in the absence of a license,
40
41
42
AMADOR, supra a note 1, at 244.
43
Feist Publications v. Rural Tel. Serv. Co., 499 U.S. 340 (1991)
44
45
INTELL. PROP. CODE, § 173.1, Intellectual Property Code.
46
47
48
49
David Woods, et al. v. Bourne Co., (2nd Cir. 1995)

Exam
one who wishes to exploit the derivative work needs a copyright license from the
owner of the copyright of the underlying work or works.50
3. IF YOU ARE THE COUNSEL OF KOKO, HOW WILL YOU PROVE THE
CHARGE OF COPYRIGHT INFRINGEMENT AGAINST LOCO?
FOR THERE TO BE A COPYRIGHT INFRINGEMENT, IT SHOULD FIRST BE

ESTABLISHED THAT THE KOKO IS THE OWNER OF THE PMP EXAM
PREP, THAT THE SAID WORK IS PROTECTED UNDER THE IP CODE,
AND THAT LOCO VIOLATED KOKO’S EXCLUSIVE RIGHTS AS THE
COPYRIGHT OWNER.
There is no contest that Koko acquired copyright for the PMP Exam prep. He wrote
the said work and acquired copyright for it.
PMP Exam Prep is protected under the Intellectual Property

Code
The PMP Exam Prep is protected under the IP Code as a derivative work. A
derivative work is one based on one or more pre-existing works in any form in which
the work may be recast, transformed, or adapted.51 It includes collections of
scholarly works and compilations of data and other materials which are original by
reason of the selection or coordination or arrangement of their contents.52
Koko’s PMP Exam Prep may be said to be based on PMBOK, an already pre-existing
work. It consists of two parts, both of which are entitled to copyright protection. The
first part begins with materials specifically focused on passing the PMP Exam which
have no counterparts in the PMBOK. As the copyright protects the original elements
contributed by the author of the derivative work, the first part is an original work of
Koko which is definitely entitled to copyright protection.
The second part, “The Materials”, tracks the PMBOK’s organization of the project
management “knowledge areas” and reproduces or condenses the materials
presented in the PMBOK. The “condensing” of the PMBOK materials may constitute
an abridgement of PMBOK, the result of which is a derivative work protected under
the IP Code. The reproduction of materials of the PMBOK, if not condensed, may
constitute a compilation of data which is protected as a derivative work under the IP
Code because of the labor and skill employed in selecting and arranging the
existing parts of PMBOK to constitute the newer work – the PMP Exam Prep.
Loco infringed Koko’s exclusive rights by copying the latter’s

PMP Exam Prep
50
Stewart v. Abend, 495 U.S. 207(1990).
51
52
INTELL. PROP. CODE, § 173.1(b)

Exam
After establishing that the PMP Exam Prep is a work protected under the IP Code, it
is now necessary to establish that Loco infringed Koko’s exclusive rights, specifically
that of derivation or adaption. To prove copyright infringement, Koko has to show
that his work was actually copied, either through direct evidence of copying or by
proving access and substantial similarity between the works, and that the copying
made by Loco amounts to improper appropriation by demonstrating that the
substantial similarities relate to protectable material. 53
In this case, Loco hired Eric Nielsen to develop the substantive content for a PMP
Exam Preparation Course. When Koko compared his PMP Exam Prep and Loco’s
Candidate Notetaker which Nielsen helped prepare, significant similarities were
found. Nielsen testified that he used Koko’s PMP Exam Prep in preparing Loco’s
course materials and sample test questions. Thus, Nielsen’s admission that the PMP
Exam Prep was used in preparing the Candidate Notetaker is direct evidence of
Loco’s copying Koko’s PMP Exam Prep.
Granted Nielsen’s admission is not enough to constitute direct evidence to establish

that Loco copied the PMP Exam Prep of Koko, Koko could resort to proving access
and substantial similarity. Loco has “access” to Koko’s PMP Exam Prep if he had
reasonable opportunity to view or to copy the said work. This could be established
by proving a particular chain of events to establish a link between the Koko’s work
and Loco’s access to that work, or by proving that Koko’s PMP Exam Prep has been
widely disseminated.54
As was said in the PMI website, the PMI Certification exam was viewed as an
important credential in the field of project management which created a market for
textbooks and courses that prepare aspiring PMPs to pass the PMI Exam. Among
these materials is Koko’s Exam Prep, thus, it can be said that the plaintiff’s material
is widely disseminated. Loco has reasonable opportunity to access the PMP Exam
Prep, it being easily available to him.
If this be not enough, it can be established through a particular chain of events that
Loco had access to copy the contents of the PMP Exam Prep made by Koko. First,
the PMP Exam Prep is made available to people in the field of project management.
Second, Nielsen was hired by Loco to make the Candidate Notetaker. Third, Nielsen
admitted that he had possession of the PMP Exam Prep on which he based the
substantial content of the infringing material. Lastly, when the Candidate Notetaker
and PMP Exam Prep were compared, there were significant similarities. Through this
chain of events, it can be established that Loco did have reasonable access to
Koko’s PMP Exam Prep.
53
Aaron Basha Corp. vs. Four Seasons Greetings, LLC, 403 F.3d 958 (S.D.N.Y.2000), as cited in AMADOR, supra
note 1, at 455
54
See 4 MELVILLE NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT, § 13.02[A], at 13-20-13-21; 2 Paul Goldstein, Copyright:
Principles, Law,
and Practice § 8.3.1.1., at 90-91 (1989).

Exam
As to the second element of substantial similarity, the ultimate test is the “ordinary
observer test” which determines whether an ordinary lay observer would consider
the works substantially similar,55 or to rephrase, whether the similarity in works
would lead the average observer to recognize the alleged copy as having been
appropriated from plaintiff’s work.56 In cases where the work is directed to a
particular audience, the test is whether an observer within this intended audience
would recognize the appropriation57. In this case, the PMP Exam Prep and the
Candidate Notetaker are both intended to cater to the field of project management.
When Koko compared the two works, significant similarities were found. Thus, it
may be said that the Candidate Notetaker is substantially similar to the PMP Exam
Prep and thus, the Candidate Notetaker is an infringing work which violates the
exclusive right of Koko as to his PMP Exam Prep.
4. IF YOU ARE THE COUNSEL OF LOCO, HOW WILL YOU DEFEND HIM
AGAINST THE CLAIM OF COPYRIGHT INFRINGEMENT?
TO DEFEND AGAINST THE CLAIM OF COPYRIGHT INFRINGEMENT, LOCO

COULD ASSERT THE FOLLOWING DEFENSES: (1) THAT THE PMP EXAM
PREP WAS NOT ENTITLED TO COPYRIGHT PROTECTION; AND (2)
THERE IS NO INFRINGEMENT OF KOKO’S COPYRIGHT, SPECIFICALLY
THROUGH COPYING.
PMP Exam Prep is not protected under the Intellectual

Property Code
As to the first defense, PMP Exam Prep is not entitled to copyright protection since it
is neither an original work nor an authorized derivative work. Neither is it protected
under Fair Use and even if it is protected, the protection extended to the PMP Exam
Prep is limited.
For a work to be original, the work must originate from the author and must have
their origins in the labor of the author. 58 The work must not be copied from a prior
work but is rather the product of an independent effort by the author 59. In this case,
the PMP Exam Prep is substantially copied from the Guide to the Project
Management Body of Knowledge (referred to as PMBOK), the official guidebook of
the PMI. Out of the 165 pages of the PMP Exam Prep, 150 pages were taken from
the PMBOK. As PMBOK is easily accessible to Koko, it can be said that it is Koko in
fact who is the infringer in this case, and thus he cannot go to court to pray for a
relief with unclean hands.
55
56
M. ELAINE BUCCIERI, Cause of Action for Copyright Infringement Under The Federal Copyright Act of 1976, CAUSES OF
ACTION SECOND SERIES, DATABASE updated October 2005, as cited in AMADOR, supra note 1, at 447.
57
United States v. Norquay, 905 F2d1157 (CA8 Minn 1990).
58
59
NIMMER, supra note 54, Sec. 2.01[A] (citing Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090 (2d
Cir.1977))

Exam
Further, Koko cannot claim that his PMP Exam Prep is a derivative work entitled to
protection under the IP Code. PMI’s copyright notice stated that although the work
could be republished freely, written permission should first be acquired from PMI.
Thus, it is essential for Koko to sufficiently prove that he had acquired the written
permission of PMI before he used parts of it for his PMP Exam Pep. A derivative work
is by definition substantially similar to the underlying work and would be a copyright
infringement in the absence of a license. Thus, if the underlying work is in
copyright, one who wishes to exploit the derivative work needs a copyright license
from the owner of copyright in the underlying work or works.60
Granted that the PMP Exam Pep contains parts which are products of Koko’s
independent effort, only these parts and not those derived from the PMBOK –
without PMI’s consent – would be entitled to protection. The aspects of a derivative
work added by the derivative authors are that author’s property, but the elements
drawn from the pre-existing work remains on grant from the owner of the pre-
existing work.61 Thus, only when Koko is able to prove that Loco copied the parts of
the PMP Exam Prep that were not taken from PMBOK would Loco be liable for
copyright infringement.
Koko failed to prove that Loco copied his work
As to the second defense, Koko failed to prove that Loco copied parts of PMP Exam
Prep. Firstly, as was argued earlier, the PMP Exam Pep was not entitled to protection
as it was an infringement of an earlier pre-existing work – the PMBOK. Thus, the
only parts that may be infringed by Loco are those which Koko did not infringe from
PMBOK. Since Koko failed to show such copying, his action for infringement must
fail.
Second, granting for the sake of argument that PMP Exam is a protected work under
the IP Code, Koko also failed to show that Loco copied parts of the PMP Exam Prep
in his Candidate Notetaker. To prove that there was infringement through copying,
Koko should present direct evidence or in its absence, circumstantial evidence, to
show that there was copying.
As for direct evidence, Koko was presenting the testimony of Nielsen as an

admission that Loco copied his PMP Exam Prep. However, Nielsen only testified that
he used Koko’s PMP Exam Prep and other reference works in preparing Loco’s
course materials and sample test questions. He did not specify which parts he
copied from the PMP Exam Prep and from the other materials. Considering that the
PMP Exam Prep was also taken from the PMBOK, it is also possible that whatever
parts Loco allegedly copied may be actually from the PMBOK and not from the PMP
Exam Prep. Thus, the testimony of Nielsen may only be used as a circumstantial
evidence but not a direct evidence of the fact of copying.
60
AMADOR, supra note 1 at 298-299.
61
MCCARTHY, DESK ENCLYCLOPEDIA OF INTELLECTUAL PROPERTY 92, (1991), citing Stewart vs. Abend, 14 USPQ (2d.1614), as cited
in AMADOR, supra note 1, at 299.

Exam
As for the circumstantial evidence, the commonly used test is the reasonable
access and substantial similarity test. For Koko to prove access, he must prove that
Loco had a reasonable opportunity to view or to copy plaintiff’s work. Access to
copyrighted work may not be inferred through mere speculation or conjecture;
plaintiff must present evidence establishing that it was reasonably possible for the
defendant to view plaintiff’s work. 62 To prove substantial similarity on the other
hand, Koko must prove that an ordinary lay person would consider the Candidate
Notetaker as having been copied from the PMP Exam Prep. However, in this case,
although it may be said that Loco had access to the PMP Exam Prep through
Nielsen, Koko did not show an ordinary lay person’s perspective as to whether the
Candidate Notetaker was sufficiently copied from the PMP Exam Prep. It only
presented Koko’s own testimony stating that he compared the works and found
significant similarities. No other proof was given to the courts as to which parts
were taken from the PMP Exam Prep, no other testimonial evidence were presented.
The mere self-serving testimony of Koko is not enough to prove that Loco copied
PMP Exam Prep’s work.
As the PMP Exam Prep is not a protected work under our intellectual rights law and
since Koko failed to sufficiently prove that Loco copied from Koko’s PMP Exam Prep
to prepare its Candidate Notetaker, then Koko’s action must necessarily fail.
5. IF YOU ARE THE JUDGE ASSIGNED TO THE CASE, HOW WILL YOU
DECIDE IT?
I WOULD DECIDE IN FAVOR OF LOCO AND DISMISS THE CASE.
First, Koko did not sufficiently prove that its PMP Exam Prep was a work entitled to
copyright protection. Koko admitted that parts of the PMP Exam Prep were copied
from the PMBOK and not a result of his independent labor, and thus, is not an
original work as protected under the IP Code. Although it may qualify as a derivative
work, Koko failed to show that he acquired written permission from the PMI to
reproduce parts of it so it is an infringement of a pre-existing copyrighted work, and
thus is not entitled to any protection.
It may be argued by Koko that his use of the PMBOK would be justified through the
defense of fair use. However, nowhere under Section 184 of the IP Code would this
situation be classified under fair use. So is the case under Section 185, as the use of
Koko of the PMBOK fails to qualify as fair use under the four factor test. Under the
four factor test, the use made of PMBOK should be tested based on the following:
1. The purpose and character of the use
2. The nature of the copyrighted work
62
Murray Hill Publications, Inc. vs. Twentieth Century Fox Film Corp., 361 F.3d 312 (6th Cir.2004), as cited in

Exam
3. The amount and substantiality of the portion used in relation to the

4. The effect of the use upon the potential market for or value of the
copyrighted work
The fourth factor, though not conclusive, is the single most important element of
fair use. This is generally demonstrated by a showing that the purpose or character
of the use was commercial. 63 Koko would only succeed in this argument when the
use of PMBOK “filled a market niche that the copyright owner simply had no interest
in occupying” and when Koko could prove that PMI cannot profit from the said
market.64 This is not the case in this situation, with Koko and PMI both in the market
niche of potential project management professionals who would want to pass the
PMI Exam. Thus, there is cognizable harm to PMI’s economic interests when Koko’s
PMP Exam Prep could serve as a market substitute for PMI’s PMBOK.
Second, Koko failed to prove that there was copying on the part of Loco. He failed to
present sufficient evidence to establish his claim. His mere self-serving assertions
that after comparing the PMP Exam Prep with the Candidate Notetaker he noted
significant similarities is not enough to meet the substantial similarity test which
requires that he presents an average observer to recognize that the Candidate
Notetaker was appropriated from the PMP Exam Prep. The testimony of Nielsen only
proves that Loco had access to the PMP Exam Prep but without proving the fact of
copying, Koko would not have any cause of action against Loco.
Lastly, as Koko’s claim should fail because even if there was indeed copying, he
failed to prove that the parts copied were those which he did not derive without
authority from PMI. Copyright infringement occurs only if one copies protected
elements of a copyrighted work; in other works, the portion of the copyrighted work
that is copied must satisfy the requirement of originality.65
ESSAY QUESTION ( 20%): Copying of Industrial Design

WANG DO MOTOR COMPANY OF SOUTH KOREA MANUFACTURES GENERAL
PURPOSE DIESEL ENGINES THAT IT EXPORTS TO THE PHILIPPINES. ITS LOCAL
DISTRIBUTOR DISCOVERED THAT A LOCAL COMPANY ANG TIBAY ENGINES CORP.
COPIED THE APPEARANCE OF THE WANG DO GENERAL PURPOSE ENGINES AND
SOLD THEM TO INDUSTRIAL COMPANIES.
WANG DO INFORMED ITS PHILIPPINE COUNSEL OF THIS FACT AND ASKED HIM TO
PROSECUTE ANG TIBAY ENGINES CORP. FOR COPYRIGHT INFRINGEMENT. ITS
COUNSEL DECIDED TO FILE A NOTICE OF COPYRIGHT IN THE NAME OF WANG DO
WITH THE NATIONAL LIBRARY AND FILLED UP ALL THE DETAILS REQUIRED IN
THE FORM. HE SUBMITTED AND ATTACHED TO THE COPYRIGHT FORM THE
PROMOTIONAL MATERIALS AND LEAFLETS THAT CARRY IMAGES OF THE WANG
63
64
American Geophysical Union vs. Texaco Inc., U.S.C.A. (2nd Cir.1994).
65
Mitek Holdings, Inc., vs. Arce Engineering Company, U.S.C.A. (11th Cir. 1996).

Exam
DO GENERAL ENGINES. HE SUBSEQUENTLY FILED A COPYRIGHT INFRINGEMENT

COMPLAINT BASED ON ANG TIBAY ENGINE CORP.’S COPYRIGHT OF THE ENGINES
DEPICTED IN THE LEAFLETS.
DID ANG TIBAY ENGINE CORP. COMMIT COPYRIGHT INFRINGEMENT

WHEN IT MANUFACTURED AND SOLD GENERAL PURPOSE ENGINES
THAT LOOK LIKE WANG DO’S GENERAL PURPOSE ENGINES? JUSTIFY
YOUR ANSWER ON THE BASIS OF LEGAL PRINCIPLES AND/OR
STATUTORY PROVISIONS.
ANSWER: NO
To establish copyright infringement, a party must show (1) that he holds a valid
copyright, and (2) that the other party has engaged in unauthorized copying. 66 Thus
it is essential to first determine whether the design of Wang Do’s General Purpose
Engine is entitled to copyright protection and then determine if Wang Do could
acquire copyright protection for the same. If that is the case, then the determination
of whether Ang Tibay infringed on Wang Do's rights should ensue.
Wang Do’s General Purpose Engine is not entitled to

Copyright
The IP Code provides under Section 172.1(h) that it protects original ornamental
designs or models for articles of manufacture, whether or not registrable as an
industrial design, and other works of applied art. This provision protects works of
applied art. At first glance, the design of the general purpose engine seems to be
protected under this provision of law. The ornamental or aesthetic appearance of an
article, in this case, the general purpose engine, is supposed to be protected and
not the utilitarian function of the article which is not subject to copyright. The fact
alone that a work is a ‘useful article’ does not disqualify it from copyright
protection.67
However, a “work of applied art” is defined as an artistic creation with utilitarian

functions or incorporated in a useful article, whether made by hand or produced on
an industrial scale.68 The central inquiry is whether the article is a work of art.69
Works for applied art include all original pictorials, graphics, and sculptural works
that are intended to be or have been embodied in useful article regardless of
factors such as mass production, commercial exploitation, and the potential
availability of design patent protection.70 Wang Do failed to show how the
appearance of its general purpose engine is a work of art which was merely
embodied in the same engine which primarily serves industrial purposes.
66
Bateman v. Mnemonics, Inc., 79 F.3d 1532
67
68
69
Pivot Port International, Inc. v. Charlene Products, Inc., 372 F.2d 913 (2004).
70
Gay Toys, Inc. v. Buddy L. Corporation, 703 F.2d 970 (1983).

Exam
Instead of being a work of applied art, Wang Do’s general purpose engine may
instead be classified as merely a useful article. A useful article is one which has an
intrinsic utilitarian function that is not merely to portray the appearance of the
article or to convey information. It is copyrightable only if it would pass the
conceptual separability test, that is, a useful article is protected 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.71
Wang Do did not attempt to show how the appearance of its general purpose
engine can be separated as a work of art, instead of merely serving a functional
purpose. If the aesthetic or artistic features of Wang Do’s general purpose engine
cannot be separated from its utilitarian aspect, then it cannot be entitled to
copyright protection. Functional components of useful articles, no matter how
artistically designed, have generally been denied copyright protection unless they
are separable from the useful article.72
There is no copyright infringement
As Wang Do’s general purpose engine is not entitled to copyright protection, he

may not now invoke that he has exclusive rights as a copyright holder – rights which
stems from the ownership of a valid copyright.
Granting, for the sake of argument, that Wang Do was able to prove that the
aesthetic aspects of its general purpose engine can stand on its own and is entirely
separable from its function as an engine, did Wang Do sufficiently establish that
Ang Tibay copied the designs of their general purpose engines to warrant a finding
of copyright infringement?
To prove infringement through copying, Wang Do should present direct evidence. In

the absence of direct evidence, Wang Do should show circumstantial evidence
establishing that Ang Tibay had access to the designs of the general purpose
engines and that the designs of the engines sold by Ang Tibay are substantially
similar to that of Wang Do.73
ACCESS
For Wang Do to prove access, it must prove that Ang Tibay had a reasonable
opportunity to view or to copy the plaintiff’s work. Access to copyrighted work may
not be inferred through mere speculation or conjecture; plaintiff must present
evidence establishing that it was reasonably possible for the defendant to view
plaintiff’s work. 74 In this case, Wang Do merely relied on the finding of its local
71
Pivot Port International, Inc. v. Charlene Products, Inc., supra.
72
Norris Industries, Inc. v. ITT Corporation, 696 F.2d 918 (1983)
73
Aaron Basha Corp. vs. Four Seasons Greetings as cited in Amador, supra
74
Murray Hill Publications, Inc. vs. Twentieth Century Fox Film Corp., as cited in Amador, supra.

Exam
distributor that Ang Tibay manufactured engines which looked like Wang Do’s
engines. Wang Do, however, did not attempt to show evidence establishing how
Ang Tibay had access to the said design.
Wang Do may argue that Ang Tibay had access to its designs through the notice of
copyright made by its counsel before the National Library. The counsel filled up all
the details required in the form and submitted and attached to the copyright form
the promotional materials and leaflets that carry images of the Wang Do general
purpose engines.
The IP Code75 provides that copies of works under the subsections in Section 172, or
reproductions of the said works as may be prescribed, may be registered and
deposited with the National Library and the Supreme Court Library. After the
prescribed fee shall be paid and collected, a certificate of deposit shall be issued.
The IP Code amends the old Copyright Act when it makes the deposit and
registration with the National Library and the Supreme Court Library merely
permissive, and as such, is not a prerequisite to the grant of exclusive rights. This is
in accordance with the Berne Convention, as adopted in Section 172.1 of the IP
Code, which requires that literary and artistic works be protected from the moment
of their creation. The deposit and registration requirement is merely for the purpose
of completing the records of the National Library and the Supreme Court Library.76
With that said, Wang Do’s argument must fail. First, Ang Tibay had already
manufactured its own engines allegedly copied from Wang Do’s even before the
said deposit was made. Second, the purpose of that deposit was merely for the
completion of the records of the National Library and the Supreme Court Library.
There was even no showing that Wang Do completed the said requirement, as no
certificate of deposit was said to be issued. Granting that Wang Do did indeed
acquire the said certificate, the said certificate would only evidence compliance with
the deposit requirement which would exempt Wang Do from making additional
deposit of works under other laws.77 Wang Do could have at least attempted to
acquire a certificate of registration from the Intellectual Property Office, which is
admissible in an infringement action as prima facie evidence of the validity of the
copyright and of the acts stated in the certificate78.
SUBSTANTIAL SIMILARITY
As for substantial similarity, Wang Do must prove that an ordinary lay person would
consider the general purpose engines of Ang Tibay to be copied from Wang Do’s
engine. Possibly, when the local distributors of Wang Do reported to it that the
design of its engines was copied, they had a glance of Ang Tibay’s allegedly copied
engine. However, no point of similarity was pointed out by Wang Do to show that
75
INTELL. PROP. CODE, § 191
76
77
78
Durnham Industries, Inc. v. Tomy Corporation, 630 F.2d 905 (1980).

Exam
indeed, Ang Tibay copied their engine design. No other evidence was shown to
establish that Ang Tibay’s engines were substantially similar, if not entirely the
same, as Wang Do’s engines. Hence, Wang Do’s action must fail.
Wang Do may attempt to sue based on patent infringement
Although the design of Wang Do’s general purpose engine is not entitled to
copyright protection, it may however be a patentable under industrial designs.
However, copyright and patent rights are completely distinct and separate from one
another, and the protection afforded by one cannot be used interchangeably to
cover items or works that exclusively pertain to the others. 79 Thus, Wang Do may
opt to instead file an action for patent infringement and not one for copyright
infringement.
ASSUME THAT INSTEAD OF LEAFLETS DEPICTING THE WANG DO

GENERAL PURPOSE ENGINES, ITS COUNSEL INSTEAD FILED TECHNICAL
DRAWINGS OF THE ENGINES AND ATTACHED THEM TO THE COPYRIGHT
FORM, AND PROVED THAT THAT ANG TIBAY ENGINE CORP.
PHOTOCOPIED THE DRAWINGS FROM THE RECORDS OF THE NATIONAL
LIBRARY, WOULD THERE BE A BASIS TO CLAIM THAT THERE IS
COPYRIGHT INFRINGEMENT OF THE DRAWINGS BY USING THEM TO
MANUFACTURE IDENTICAL-LOOKING GENERAL PURPOSE ENGINES?
NO.
It must be noted that Ang Tibay manufactured its own engines BEFORE Wang Do’s
counsel deposited and registered the design of its general purpose engine with the
National Library. The access test to determine whether the defendant copied the
design of the plaintiff must necessarily refer to access before the act of copying, not
after the act of the alleged copying. Thus, even if Wang Do would be able to prove
that Ang Tibay did photocopy the technical drawings of the engines from the
National Library, this would have no bearing since Ang Tibay already had an engine
which they released to the public. How could an alleged infringer copy a design and
make an item out of that design if he has not even seen it yet?
Assuming that Wang Do’s counsel deposited the said drawings with the National
Library even before Ang Tibay manufactured its own line of machines, and Wang Do
is able to establish that Ang Tibay photocopied the said drawings from which it
reproduced a substantially similar engine, would Wang Do’s claim succeed?
The answer is still no. For a copyright claim to succeed, the plaintiff must be able to
establish ownership of a valid copyright.80 A valid copyright would entitle the
determination of whether the work sought to be protected is so protected under the
state’s copyright laws.
79
Kho vs. Court of Appeals, G.R. No. 115758, 19 March 2002, 379 SCRA 410.
80
Feist Publications, Inc. v. Rural Telephone Service Company, supra

Exam
Technical drawings may be argued as protected as an original ornamental design

for articles of manufacture and other applied art under Section 172.1(h). However,
as was said earlier, the cemtral inquiry is whether the article is a work of art. The
technical drawing may be copyrightable only if it would pass the conceptual
separability test, that is, 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.81
Absent a showing that the technical drawings incorporates parts which can exist
independently as art from the utilitarian functions of the engine, the said technical
drawing is not entitled to copyright protection.
The technical drawings may also be argued to be protected under Section 172.1(j)
as drawings of a technical character but is there infringement on the part of Ang
Tibay when it manufactured engines allegedly copying the design of Wang Do?
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.82 Accordingly, it can cover only the
works falling within the statutory enumeration or description.83
Nowhere in the enumeration of economic rights nor in the enumeration of moral

rights would Wang Do have a claim to limit the manufacturing of Ang Tibay of an
engine based on the copyrighted technical design. When a drawing is technical and
depicts a utilitarian object, a copyright over the drawings like will not extend to the
actual object.84 As was held in Pearl & Dean, Inc. vs. Shoemart, Inc. 85, the copyright
protection would extend only to the technical drawings under Setion 172.1(j) but
not to the actual article that may be produced from the said technical drawing, as a
general purpose engine is not a literary or artistic piece which could be copyrighted
under the copyright law. Also, the copyright is distinct from the property in the
material object subject to it86. Thus, even if Ang Tibay manufactured an engine
based on the design created by Wang Do, Wang Do’s protection would be limited
only to the protection of that technical design but not to the creation of an engine
based on the specifications of that work.
x---------------------------------------------------------------------------------------------x
ESSAY QUESTION ( 20%):QUESTION 3: “Get Off” vs. “100 Miles”

BRIDGEPORT MUSIC, INC., WESTBOUND RECORDS, INC., ET. AL. VS. DIMENSION
FILMS ET. AL INVOLVED A COPYRIGHT INFRINGEMENT COMPLAINT ARISING OUT
81
Pivot Port International, Inc. v. Charlene Products, Inc., supra
82
18 C.J.S. 161.
83
Joaquin vs. Drilon, 302 SCRA 225 [1999].
84
See Baker vs. Selden (101 U.S. 841 (1879); Muller vs. Triborough Bridge Authority [43 F. Supp. 298 (S.D.N.Y.
1942)];Imperial Homes Corp. v. Lamont, 458 F. 2d 895 and Scholtz Homes, Inc. v. Maddox, 379 F. 2d 84
85
Supra.
86
INTELL. PROP. CODE, § 181.

Exam
OF THE USE OF A SAMPLE FROM THE COMPOSITION AND SOUND RECORDING

"GET OFF YOUR ASS AND JAM" ("GET OFF") IN THE RAP SONG "100 MILES AND
RUNNIN' " ("100 MILES"), WHICH WAS INCLUDED IN THE SOUND TRACK OF THE
MOVIE I GOT THE HOOK UP (HOOK UP ).
THE RECORDING "GET OFF" OPENS WITH A THREE-NOTE COMBINATION SOLO

GUITAR "RIFF" THAT LASTS FOUR SECONDS. ACCORDING TO ONE OF PLAINTIFFS'
EXPERTS, RANDY KLING, THE RECORDING "100 MILES" CONTAINS A SAMPLE
FROM THAT GUITAR SOLO. SPECIFICALLY, A TWO-SECOND SAMPLE FROM THE
GUITAR SOLO WAS COPIED, THE PITCH WAS LOWERED, AND THE COPIED PIECE
WAS "LOOPED" AND EXTENDED TO 16 BEATS. KLING STATES THAT THIS SAMPLE
APPEARS IN THE SOUND RECORDING "100 MILES" IN FIVE PLACES; SPECIFICALLY,
AT 0:49, 1:52, 2:29, 3:20 AND 3:46. BY THE DISTRICT COURT'S ESTIMATION,
EACH LOOPED SEGMENT LASTED APPROXIMATELY 7 SECONDS. AS FOR THE
SEGMENT COPIED FROM "GET OFF," THE DISTRICT COURT DESCRIBED IT AS
FOLLOWS:
THE PORTION OF THE SONG AT ISSUE HERE IS AN ARPEGGIATED CHORD--THAT

IS, THREE NOTES THAT, IF STRUCK TOGETHER, COMPRISE A CHORD BUT
INSTEAD ARE PLAYED ONE AT A TIME IN VERY QUICK SUCCESSION--THAT IS
REPEATED SEVERAL TIMES AT THE OPENING OF "GET OFF." THE ARPEGGIATED
CHORD IS PLAYED ON AN UNACCOMPANIED ELECTRIC GUITAR. THE RAPIDITY OF
THE NOTES AND THE WAY THEY ARE PLAYED PRODUCE A HIGH-PITCHED,
WHIRLING SOUND THAT CAPTURES THE LISTENER'S ATTENTION AND CREATES
ANTICIPATION OF WHAT IS TO FOLLOW.
1. WHAT ARE THE ELEMENTS OF ORIGINALITY IN A MUSICAL

COMPOSITION?
A MUSICAL COMPOSITION IS MADE UP OF RHYTHM, HARMONY AND

MELODY. THUS, ORIGINALITY IN A WORK MAY EXIST IF FOUND IN ONE
OF THESE ELEMENTS.
Nimmer provides a helpful discussion on the said topic based on various cases
decided in the United States.
Rhythm has been defined as the aspect of music comprising all the elements (as
accent, meter, and tempo) that relate to forward movement87. The courts are not
consistent in finding originality based on rhythm alone. “Originality of rhythm is a
rarity, if not an impossibility”. However, some courts found copyrightable originality
in rhythmic annotations, fingering, dynamic marks, tempo indications, slurs and
phrasing.
87
Meriam-Webster Dictionary, available at http://www.merriam-webster.com/dictionary/rhythm (Last visited April
14, 2010).

Exam
Harmony, on the other hand, refers to the structure of music with respect to the
composition and progression of chords.88 It is the blending of tones89. Courts have
hesitated to find the necessary originality in harmony and most have found that, in
itself, harmony cannot be the subject of copyright.
Finally, melody is the arrangement of notes and tones. It is in this arrangement or

succession of musical notes which serves as the fingerprints of composition and
which establishes the composition’s identity90. Melody is thus the usual source of
originality in musical compositions.91
However, as music is not capable of ready classification into only five or six
constituent elements, and is comprised of a large array of elements, some
combinations are held protectable by copyright. Some courts upheld the finding of
substantial similarity based on the combination of five otherwise uprotectable
elements: (1) the title hook phrase (including the lyric, rhythm, and pitch); (2) the
shifted cadence; (3) the instrumental figures; (4) the verse/chorus relationship; and
(5) the fade ending. Other courts have taken account of additional components of
musical compositions, including melody, harmony, rhythm, pitch, tempo, phrasing,
structure, chord progressions, and lyrics. In addition, commentators have opined
that timbre, tone, spatial organization, consonance, dissonance, accents, note
choice, combinations, interplay of instruments, basslines, and new technological
sounds can all be elements of a musical composition.92
2. IS THERE ACTIONABLE COPYRIGHT INFRINGEMENT COMPLAINT

FROM THE USE OF A SAMPLE FROM THE COMPOSITION AND SOUND
RECORDING "GET OFF YOUR ASS AND JAM" ("GET OFF") IN THE RAP
SONG "100 MILES AND RUNNIN' " ("100 MILES")?
YES. THE RAP SONG “100 MILES AND RUNNIN’” VIOLATED THE RIGHT OF
THE PRODUCER TO REPRODUCTION OF THE SOUND RECORDING.
Sound recordings and their underlying musical compositions are separate works
with their own distinct copyrights.93 Musical compositions are protected under
Section 172.1(f), with or without words. On the other hand, the rights of the
producers to the sound recordings are found in Section 208. It is thus necessary to
distinguish the rights of the composer of the song and the producer and qualify the
act of infringement present in this situation.
The work involved here is an arpeggiated chord: three notes that, if struck together,
comprise a chord but instead are played one at a time in very quick succession. The
said chord is repeated several times at the opening of "Get Off" and played on an
88
Merriam-Webster Dictionary, available at http://www.merriam-webster.com/dictionary/harmony (Last visited April
14, 2010).
89
Northern Music Corp. v. King Record Distributing Co., 105 F. Supp. 393, 399 (S.D.N.Y. 1952)
90
Northern Music Corp. v. King Record Distributing Co., supra.
91
NIMMER, supra note 54, at 2-57, 2-58
92
Swirstky vs. Carrey, 376 F.3d 841, CA.9 (Cal.), 2004, July 12, 2004, as cited in AMADOR, supra note 1, at 261
93
Bridgeport Music, Inc. vs. Still N The Water Publ’g , 540 U.S. 948 (2003).

Exam
unaccompanied electric guitar. The rapidity of the notes and the way they are
played produce a high-pitched, whirling sound that captures the listener's attention
and creates anticipation of what is to follow.
For there to be copyright infringement of the said sample, initial determination of

ownership of a valid copyright and the infringement of the copyright owner’s
protected rights should be made. In this case, the musical composer and the
producer of the sound record are each presumed to be have validly acquired
copyright for the musical composition and the sound recording, respectively, as
each are entitled to protection under the IP Code.
With regards the rights violated, the composer may argue that his right to
derivation or reproduction was violated. The producer, on the other hand, would
argue that his right to authorize reproduction of the sound recording was violated.
The determination of whether there was a violation of the rights of each would
require a separate discussion for each rights.
There is no violation of the composer’s right to derivation or

reproduction
In the field of popular songs, many, if not most compositions bear some similarity to
prior songs. However, apart from and in addition to the fact that originality merely
requires independent effort and novelty, it has been held that although a musical
theme may be suggestive of prior works, it will still be deemed original if the overall
impression is of a new work.94
To determine if the composers of “100 Miles and Running” (“100 Miles”) did infringe
portion of “Get Off”, the same test of access and substantial similarity could be
applied.
With regards access, “Get Off” was already released to the market and may be
argued to be reasonably accessible to the composers of “100 miles”. As for
substantial similarity however, evidence of similarity may be found through proof of
identical or similar: (1) patterns and grouping of notes and musical phrases, (2)
melodies, (3) metric structure, (4) harmony, (5) unexpected departures from the
normal metric structure, and (6) particularly intricate measures or sections.
Compositions should be examined for similarities in both musical and lyrical
structure. 95
To determine substantial similarity, similarity of ideas must first be analyzed

extrinsically, focusing on the objective similarities in the details of the works. If
there is substantial similarity in ideas, similarity of expression is evaluated using an
intrinsic test depending on the response of the ordinary reasonable person to the
forms of expression.96 Two works are substantially similar where `the ordinary
observer, unless he set out to detect the disparities, would be disposed to overlook
94
NIMMER, supra note 54, §2.05[D], pp.2-57, 2-58, as cited in AMADOR, supra note 1, at 258.
95
96
Derrick D. Moore vs. Columbia Pictures Industries, Inc. 972 F.2d 939 (8th Cir.1992), as cited in AMADOR, supra
note 1, at 259.

Exam
them, and regard [the] aesthetic appeal [of the two works] as the same. 97 This
should be related to the de minimis infringement which provides that a use is de
minimis only if the average audience would not recognize the appropriation.98 Such
kind of infringement is not actionable, as an unauthorized use of a copyrighted work
must be significant enough to constitute infringement.99 Even where the fact of
copying is conceded, no legal consequences will follow from that fact unless the
copying is substantial.100
Here, the sample allegedly taken was a two-second sample, with pitch lowered,
then looped and extended to 16 beats. However, if both songs are played and
compared before an average audience, an entirely different and distinguishable
sound would be heard. The alleged appropriation by “100 Miles” is not at all
recognizable. The “overall impression” of audience to “100 Miles” is that of a new
work, and thus, it would be deemed an original creation of its composers.
The vocabulary available for musical composition is far less rich and enables far less
invention than do the sources of literature, drama and the visual arts. Melodic
invention is confined not only to the number of notes in the musical scale, but also
by the need to create the graceful, memorable tune and, if the melody is to be
sung, by the range of the human voice. One consequence of these limitations is that
the originality requirement will bar protection for musical works more commonly
than it does other classes of works.101 Thus, the action of the musical composers for
copyright infringement must necessarily fail.
There is, however, a violation of the rights of the producer of

the sound recording.
Sound recording is defined as the fixation of the sounds of a performance or of

other sounds, or representation of sound, other than in the form of a fixation
incorporated in a cinematographic or other audiovisual work.102 Fixation, on the
other hand, means the means the fixation of the sounds of a performance or of
other sounds, or representation of sound, other than in the form of a fixation
incorporated in a cinematographic or other audiovisual work.103
The producers of sound recordings, subject to fair use, are granted the right to
authorize the direct or indirect reproduction of their sound recordings, in any
manner or form, and in placing these reproductions in the market.104 In determining
whether the right of the producer to reproduction of the sound recordings was
breached, the only issue is whether the actual sound recording has been used
without authorization. Substantial similarity is not an issue.105
97
Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960)
98
Fisher v. Dees, 794 F.2d 432 (9th Cir.1986)
99
See Ringgold v. Black Entm't Television, Inc., 126 F.3d 70, 74-75 (2d Cir.1997).
100
See Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir.1992); NIMMER, supra note 54,
§ 13.03[A], at 13-30.2.
101
102
INTELL. PROP. CODE, § 202.2,.
103
Id., § 202.4.
104
Id., §s 208.1 and 210

Exam
In this situation, the mere use of the composers of “100 Miles” of the sound
recording, without proof of authorization from the producer of “Get Off”, constitutes
an infringement of the right of the producer. The alteration made by the composers
of “100 Miles” to the sound recording is of no matter, as the law clearly provides
that reproduction in any manner or form requires authorization from the producer.
3. SINCE THE SAMPLE WAS ALSO USED IN THE SOUNDTRACK OF THE

MOVIE I GOT THE HOOK UP (HOOK UP), IS THE MOVIE EQUALLY
INFRINGING?
YES. THE MOVIE ALSO INFRINGED THE PRODUCER’S RIGHT TO THE SOUND
RECORDING UNDER SECTION 208 OF THE IP CODE.
The infringing song “100 Miles” was included in the sound track of the movie “I Got
the Hook Up” (“Hook Up”). Similarly, there is no proof that the producers of the
movie acquired authorization from the producer of the sound recording of “Get Off”
to reproduce the sound in the movie. As the only issue in infringement of rights of
producers of sound recordings is whether the actual sound recording has been used
without authorization, and there being no showing that the producers acquired such
authorization, the producers are deemed to have infringed the rights of the
producers and are thus liable for copyright infringement.
x----------------------------------------------------------------------------------------------x
Essay Question ( 20%): Courseware materials

A FACULTY MEMBER HAS BEGUN WORK ON MULTI-MEDIA COURSEWARE
MATERIALS SHE PLANS TO USE WITH HER STUDENTS FOR GEOLOGY 401. SHE
MADE ARRANGEMENTS WITH THE TECHNICAL SUPPORT TEAM AND OBTAINED A
PHP50, 000 GRANT FROM THE UNIVERSITY TO HELP FUND HER PROJECT. SHE
PLANS TO HIRE A GRADUATE STUDENT TO DO PROGRAMMING FOR HER. HER
BROTHER-IN-LAW A COMMERCIAL ARTIST HAS AGREED TO DO 11 GRAPHIC
ILLUSTRATIONS FOR HER.
1. WHO AMONG THE PERSONS MENTIONED ABOVE WILL OWN THE

COURSEWARE MATERIALS AND WHY?
THE MULTI-MEDIA COURSEWARE MATERIAL ITSELF IS OWNED BY THE

FACULTY MEMBER. (DISCUSSION AS TO THE OWNERSHIP OF THE
COPYRIGHT TO THIS WORK IS MADE IN THE NEXT QUESTION)
With the advent technological advances, distance education has grown dramatically
in volume and importance.106 This led to the development of multi-media
105
Bradley C. Rosen, Esq., 22 Causes of Action § 12 (2d ed. 2003), as cited in Bridgeport Music, Inc. v. Dimension
Films, 383 F.3d 390 (6th Cir. 2004) in fn 6.
106
JEREMY ROWE, Who Owns Multimedia Courseware - Faculty or the Institution?: A Critical Issue in Development and
Delivery of Technology-Based Education, available at http://74.125.153.132/search?
q=cache:KU82AVHde5YJ:www.public.asu.edu/~jeremy/jxrownershipcause.html+copyright+fair+use+multi-
media+courseware&hl=tl&gl=ph&strip=1 (last visited April 14, 2010).

Exam
courseware which incorporates several copyrightable materials into one package.

Thus, the question arises as to who owns the courseware materials.
In this situation, several persons have made the courseware material possible. The
faculty member would contribute the textual content, the graduate student would
develop the courseware, the brother-in-law would do graphic illustrations for the
faculty member, the university given the faculty member funds to do the same, and
arrangements were already made with a technical support team. However, only the
faculty member would own the materials.
The materials constituting the courseware material may be divided into two parts:
those which he contributes himself and those which he asks other persons to do. As
to the parts which the faculty member contributes to the courseware, it may be
safely presumed that it would be her original creations, and thus these contributions
belong to the faculty member as author of the same.
As to the second classification, it may be considered a commissioned work under

Section 178.4. The faculty member is not the employer of either the graduate
student or the brother-in-law, and the faculty member may be presumed to be
paying for the services of the two. In instances of commissioned work, the person
who commissioned the work shall have ownership of the work, but the copyright
thereto shall remain with the creator, unless there is a written stipulation to the
contrary. Thus, it may be apparent that the faculty member would have ownership
over the work (the multi-media courseware) but the ownership as to the copyright
of the said work is a different matter, and such discussion is more proper under the
succeeding question.
2. WILL THEY BE CONSIDERED AUTHORS ONLY OF THEIR RESPECTIVE

CONTRIBUTIONS OR CO-AUTHORS OF THE COURSEWARE ON GEOLOGY
301?
Only with their respective contributions.
The Copyrightable matter test, favored more by the courts, could be used to
determine whether the contributors to the courseware are joint authors. A person is
a joint author if his contribution is not a mere idea and his output is in itself
copyrightable.107
Who would be considered the joint authors here? The faculty member is potentially
a joint author, as the textual content that he would be contributing may be
protected as pamphlets, articles and other writings108 or as oral works which were
merely reduced to writing109. The graduate student who made the courseware could
have the courseware protected as a computer program 110. The brother in law could
be considered a joint author for the graphic illustrations which are protected under
107
108
INTELL. PROP. CODE, § 172.1(a)
109
Id., § 172.1 (c)
110
INTELL. PROP. CODE, § 172.1(n).

Exam
the classification of works of drawing, painting, architecture, sculpture, engraving,

lithography or other works of art.111
The university is not an author as the mere provision of funds for the multi-media
courseware is not in itself copyrightable. It may be an author, provided that the
other authors were under its employment or were commissioned to do the
courseware materials for its own benefit with corresponding assignment of
copyright but absent a showing that the university did these, it is not, at all,
considered an author. The technical support team also does not contribute anything
copyrightable as they would only maintain the courseware site once it has been put
up.
To determine whether there is a joint work of joint authors, the following must
concur: (1) each author must intend their respective contributions to be contribution
to unitary whole; and (2) collaborators are not joint authors unless they intended to
be joint authors when work was created. Collaboration alone is insufficient to create
a joint work.112
The situation given presents the multimedia courseware at its inception. However,
there is no showing that each contributor intended to be joint authors and that their
respective contributions be part of one courseware material. Absent the requisites
given above, the contributors would be considered authors only of their respective
contributions.
3. DOES THE UNIVERSITY QUALIFY AS A CO-AUTHOR/OWNER BY

REASON OF ITS FINANCIAL GRANT FOR THE PROJECT? IF IT DOES NOT
SO QUALIFY, PLEASE EXPLAIN UNDER WHAT CIRCUMSTANCES, IF ANY,
IT WOULD ACHIEVE SUCH OBJECTIVE?
NO.
The fact that the university gave the faculty member a financial grant, instead of
merely paying him his salary as a faculty member, indicates that the creation of the
multi-media courseware is outside the regularly-assigned duties.
Further, the mere act of financing the creation of a copyrightable work does not
entitle the university to become an author. An “author” of a work for copyright
purposes is the person who first translates the idea into fixed, tangible expression
entitled to copyright protection.113 The said act does not entitle the university to any
copyright protection.
Under what circumstances could the university be an author?
The university has two options: either to hire the authors of the works involved and
make the multi-media courseware part of their regularly-assigned duties, or to
111
Id., § 172.1(g)
112
Erickson vs. Trinity Theater, Supra.
113
TMTV, Corp. vs. Mass Productions, Inc. 345 F.Supp.2d 196, D. Puerto Rico, 2004. Nov. 24, 2004.

Exam
merely commission the faculty member to facilitate the creation of the multimedia
courseware, with a corresponding assignment of the copyright to the university.
Under Section 178.3, the university would be entitled to the work created by an
author in the course of the latter’s employment if the work is a result of the
performance of the author of his regularly-assigned duties. The only exception to
this situation is when the university and the author agree that the author would,
instead, own the copyright. Thus, the university could hire the faculty member and
the other persons involved in the creation of the multi-media courseware, then in
the terms of reference of each, specify that part of their regularly-assigned duties is
as follows:
• For the faculty member, to develop and facilitate a multi-media courseware
for the classes he would handle;
• For the graduate student, to develop a courseware specifically for the use of
the university and its faculty members;
• For the brother-in-law, to create graphic illustrations for the multi-media
courseware.
Only when the creation of the copyrightable work is part of the employee’s
regularly-assigned duties would the employer, in this case the university, have any
right to the work created.
If, however, the faculty member has already been an employee of the university,
and the creation and development of a multi-media courseware for classroom use is
not part of his regularly-assigned duties, the university may enter into a written
contract with the faculty member to have the copyright of the multi-media
courseware assigned wholly to the university. This may be done as a condition of
the grant to the faculty member. Such assignment would entitle the university to all
the rights and remedies which the author had with respect to the copyright.
On the other hand, Section 178.4 provides the university a second option to acquire
status of an author under the IP Code. This the university may do by hiring the
authors of the constituting copyrightable works for commission to develop and
provide contents for the multi-media courseware and then enter a written
agreement with each author to have them assign to the university the copyright of
their commissioned works. This, however, would not work for the faculty member as
the university is already an employer of the faculty member and thus, the
university’s only remedy is to enter a written agreement of assignment with the
faculty member.
4. PLEASE EXPLAIN, WITH RESPECT TO EACH OF THE COPYRIGHT

WORKS ABOVE, WHETHER THE INTENDED USE WILL BE CONSIDERED
FAIR OR WHETHER THERE ARE LEGAL LIMITS THAT THE FACULTY
MEMBER MUST OBSERVE?
YES, THE INTENDED USE MAY BE CONSIDERED FAIR PROVIDED EACH OF

THE AUTHOR WOULD OBSERVE THE LEGAL LIMITS IMPOSED BY LAW.
What are the copyright works involved in a multi-media courseware? A multimedia

courseware would consist of the computer program on which it runs, and the

Exam
graphic illustrations that would be made by the brother in law, and the various
contents that may be used by the faculty member, such as articles, lectures, and
other writings, pictures, illustrations, videos, sound clips, and other works which
may each be entitled to copyright protection. There is only a necessity of
determining whether the use of these works fall under fair use when these works
does not belong to the authors who contributed it as part of the multimedia
courseware.
Copyright protection has never accorded the copyright owner complete control over
all possible uses of his work. Rather, he is only entitled to the exclusive rights
provided by law. All reproduction of his work, however, are not within the exclusive
domain of the copyright owner; some are in the public domain. Any individual may
reproduce a copyrighted work for a”fair use”; the copyright owner does not possess
the exclusive right to such a use.114
The “fair use” concept may be understood generally to permit a secondary use that
“serves the copyright objective of stimulating productive thought and public
institution without excessively diminishing the incentives for creativity.”115
Granted that the authors above used works of other authors in the multi-media
courseware, the authors may assert that such use is fair as it is for educational
purposes. However, the mere fact that a use is educational and not for profit does
not insulate the authors above from a finding of infringement. Thus, the use must
be examined under all four factors as must any other allegedly infringing work.116
Before the author subject the use to the four factor test, the author may opt to refer
to the statutory fair use provided under Section 184 of the IP Code. Under this
section117, the most common guideline to allow a use as fair is that the author and
114
Sony Corp. vs. Universal City Studios, Inc., U.S. Supreme Court, 464 U.S. 417 (1984), as cited in AMADOR, supra
note 1, at 401.
115
116
Princeton University Press, Macmilan, Inc. & St. Martin’s Press, Inc. vs. Michigan Document Services, Inc. &
James M. Smith, U.S.CA(6th Cir.1996).
117
INTELL. PROP. CODE, § 184. Limitations on Copyright
184.1. Notwithstanding the provisions of Chapter V, the following acts shall not constitute infringement of
copyright:
(a) The recitation or performance of a work, once it has been lawfully made accessible to the public, if done
privately and free of charge or if made strictly for a charitable or religious institution or society; (Sec. 10(1), P.D. No.
49)
(b) 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; (Sec.
11, third par., P.D. No. 49)
(c) The reproduction or communication to the public by mass media of articles on current political, social, economic,
scientific or religious topic, lectures, addresses and other works of the same nature, which are delivered in public if
such use is for information purposes and has not been expressly reserved: Provided, That the source is clearly
indicated; (Sec. 11, P.D. No. 49)
(d) The reproduction and communication to the public of literary, scientific or artistic works as part of reports of
current events by means of photography, cinematography or broadcasting to the extent necessary for the purpose;
(Sec. 12, P.D. No. 49)
(e) The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or
film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use: Provided,
That the source and of the name of the author, if appearing in the work, are mentioned;
(f) The recording made in schools, universities, or educational institutions of a work included in a broadcast for the
use of such schools, universities or educational institutions: Provided, That such recording must be deleted within a
reasonable period after they were first broadcast: Provided, further, That such recording may not be made from
audiovisual works which are part of the general cinema repertoire of feature films except for brief excerpts of the

Exam
source of the work be attributed, aside from the use being educational and non-
profit. If the use of the authors above would not fall under any of the enumerations
in the said section, the four factor test may thus be resorted to.
The four factor test, as contained in Section 185 of the IP Code, provides that the
following factors should be considered:
(a) The purpose and character of the use, including whether such use
is of a commercial nature or is for non-profit educational purposes;
(b) The nature of the copyrighted work;
(c) The amount and substantiality of the portion used in relation to the
(d) The effect of the use upon the potential market for or value of the
copyrighted work.
Though not conclusive, the fourth factor relating to the effect on the potential
market of the copyrighted work is the single most important element of fair use.118
As for the first factor, its analysis centers on whether the new work merely
supersedes the objects of the original creation or instead adds something new, with
a further purpose or different character, altering the first with new expression,
meaning, or message.119 The law assigns a higher value to a use that serves
“nonprofit educational purposes” than to one of a “commercial nature.”120 If the
authors above would not profit from the multi-media courseware, their use would be
permissible even if no authorization was given by the copyright owner.
As for the second factor generally refers to the type of material used and whether
the distribution would serve the public interest121. This factor calls for recognition
that some works are closer to the core of intended copyright protection than others,
with the consequence that fair use is more difficult to establish when the former
works are copied122. This calls for a determination of the degree of creativity and
originality of the copied work. The more creative and original a work, the more it
work;
(g) The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in
its own broadcast;
(h) The use made of a work by or under the direction or control of the Government, by the National Library or by
educational, scientific or professional institutions where such use is in the public interest and is compatible with fair
use;
(i) The public performance or the communication to the public of a work, in a place where no admission fee is
charged in respect of such public performance or communication, by a club or institution for charitable or
educational purpose only, whose aim is not profit making, subject to such other limitations as may be provided in
the Regulations; (n)
(j) Public display of the original or a copy of the work not made by means of a film, slide, television image or
otherwise on screen or by means of any other device or process: Provided, That either the work has been
published, or, that the original or the copy displayed has been sold, given away or otherwise transferred to another
person by the author or his successor in title; and
(k) Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a
legal practitioner.
184.2. The provisions of this section shall be interpreted in such a way as to allow the work to be used in a manner
which does not conflict with the normal exploitation of the work and does not unreasonably prejudice the right
holder's legitimate interests.
118
Harper & Row Publishers, Inc. vs. National Enterprise, 471 US. 539.
119
Princeton University Press, Inc. vs. Michigan Document Services, supra.
120
121
Encyclopedia Britannica Educational Corporation, et al. vs. C.N. Crooks, U.S.D.C. (W.D.N.Y.1963).
122
Campbell vs. Acuff-Rose Music, Inc., 10 US 569 (1994).

Exam
falls within the core of intended copyright protection. If it is an idea, procedure,

system, method or operation, concept, principle, discovery or mere data and other
unprotected works, the use of the copied material would more probably be deemed
fair. In this case, if the materials used by the faculty member as content for the
multi-media courseware, the program which was decompiled to create the multi-
media courseware, and the graphic illustrations which was used as basis for the 11
graphic illustrations by the brother in law are all original and creative, it would be
subjected to a stricter degree of protection and the burden of proving fair use would
be greater on the authors in this case.
The third factor inquires whether the quantity and value of the materials used were
reasonable in relation to the purpose of the copying, noting that the extent of
permissible copying varies with the purpose and character of the use.123 Thus, the
extent that the authors used copyrighted materials for the creation of their
respective works in this case would be subjected to this case, with a caveat that
even copying of a small portion may exceed the boundaries of fair use if the
material taken is the “heart” of the work124.
The last factor is generally demonstrated by a showing that the purpose or

character of the use was commercial. If the use is noncommercial, proof of harm or
adverse effect to the potential market for the copyrightable work must be
demonstrated by the copyright owner.125 Here, if proven by the holders of the
copyright of the materials from which the contributions to the courseware were
taken or based could prove that the existence of the multi-media courseware would
cause harm to their economic interests, fair use may not be upheld. The cognizable
harm is market substitution, not any harm from criticism.126
If, however, such use does not fall under either Section 184 or 185, it does not
mean that the authors above cannot use the materials for the multi-media
courseware. The authors above may opt to obtain license from the copyright owner
in able for them to use the same.
5. IF THE PARTICIPANTS IN THIS PROJECT GO BEYOND THE LEGAL

LIMITS OF FAIR USE, WHO SHOULD BE HELD RESPONSIBLE FOR
COPYRIGHT INFRINGEMENT? CAN THE WEBSITE OPERATOR BE HELD
LIABLE FOR COPYRIGHT INFRINGEMENT?
ALL THOSE WHO CARRIED OUT THE INFRINGING ACTS, DIRECTLY OR

INDIRECTLY, WOULD BE LIABLE FOR COPYRIGHT INFRINGEMENT. THIS
WOULD INCLUDE THE WEBSITE OPERATOR IF A FINDING OF ACTUAL
KNOWLEDGE OF THE NATURE OF THE INFRINGING ACTIVITY WOULD
BE SUFFICIENTLY SHOWN.
Direct infringement is committed by any person who himself carries out any of acts
in violation of the author’s economic rights under Section 177, their moral rights
123
Princeton University Press, Inc. vs. Michigan Document Services, supra.
124
American Goephysical Union vs. Texaco, Inc., U.S.C.A. 2d. (1994), as cited in AMADOR, supra note 1, at 415.
125
National Rifle Assn. of America vs. Handgun Control Fed of Ohio, 15 F.3d 559 (6thCir.1994)
126
Campbell vs. Acuff-Rose Music Inc, supra.

Exam
and droit de suite under Chapters X and XI, as well as the rights of performers,
producers of sound recordings and broadcasting organizations under Chapters XII,
XIII and XIV.127
Thus, the faculty member who uses other works as content of the multi-media
courseware, the graduate student who uses another computer program as basis of
the courseware, and the brother in law who makes the graphical illustrations, if their
use of other copyrighted works exceed the legal limits of fair use, would each be
liable for each violation they make.
The university, as the provider of the funds used to finance the multi-media
courseware; the technical support team who would maintain the courseware; and
the website operator, who provides the website on which the courseware is hosted
and displayed, all may be considered liable for contributory infringement as all of
them may be considered to have aided or abetted the infringement done by the
authors of the multimedia courseware128. However, the university, technical support
team and the website operator would only be treated as contributory infringer if,
while having knowledge of the infringing activity, they induced, caused or materially
contributed to the infringing conduct of the authors in this case129, or authorized the
authors, without the copyright owner’s consent, to commit any violation of the
owner’s exclusive rights. This would entail a determination of whether the said
actors had knowledge of the infringing activity and they materially contributed to
the said activity.
Contributory Liability of the Website Operator
As mentioned earlier, to make the website operator liable, he or it must have

knowledge of the infringing activity and that it materially contributed to the said
activity.
In an online context, evidence of actual knowledge of specific acts of infringement is

required to hold a computer system operator liable for contributory copyright
infringement.130 If a computer system operator learns of specific infringing material
available on his system and fails to purge such material from the system, the
operator knows of and contributes to direct infringement.131 Conversely, absent any
specific information which identifies infringing activity, a computer system operator
cannot be liable for contributory infringement merely because the structure of the
system allows for the exchange of copyrighted material.132
127
128
INTELL. PROP. CODE, § 217.1.
129
Encyclopedia Britannica vs. Crooks 58 F.Supp.1247.
130
Religious Technology Center v. Netcom On-Line Communication Services, Inc.,907 F. Supp. at 1371
131
See Religious Technology Center vs. Netcom, supra, at 1374.
132
Universal City Studios, Inc. v. Sony Corp., 464 U.S. at 436, 442-43.

Exam
Thus, for the website operator to be liable as a contributory infringer, the copyright
owner must prove that the website operator knew that the materials in the multi-
media courseware infringed the rights of the copyright owner, and even with this
knowledge, the website operator still displayed the said materials, violating the
right of the copyright owner of public display.
Vicarious Liability of the Website Operator
Vicarious infringement extends to anyone with authority to control the infringing

activities who also has a financial interest in the activities. The following are the
elements of vicarious infringement: (a) the defendant has the right and ability to
control the infringer's acts and (2) receives a direct financial benefit from the
infringement133. The website operator may be found to be vicariously liable in this
case.
The website operator can control the acts of the authors. The website operator
could have put up a screening process to determine whether the materials to be
displayed on the site infringes existing copyrights. That would be easy in the advent
of the internet, with almost all copyrightable materials available online and with the
invention of search engines. If ever the authors of the mutli-media courseware
found out about the infringement, it could prevent the authors from displaying the
same on the courseware site. As courseware sites are also available to students and
third persons, the website operator could have adopted terms of use for the
courseware site to ban users who upload infringing materials on the website.
Also, website operators usually operate a website for a fee. Thus, the operation of
the courseware site would grant him financial benefit from whatever is posted on
the site.
With these two elements concurring, the website operator may be found to be also
vicariously liable.
x----------------------------------------------------------------------------------------------x
PATENT ESSAY
HEMP STRIPPING MACHINE (50%)
PLAINTIFFS ALLEGE THAT THEY ARE THE OWNERS OF A PATENT COVERING

HEMP-STRIPPING MACHINE NO. 1519579 ISSUED TO THEM BY THE BUREAU OF
PATENTS AND TRADEMARKS. THE IMPORTANT FEATURE OF THE MACHINE "IS A
SPINDLE UPON WHICH THE HEMP TO BE STRIPPED IS WOUND IN THE PROCESS
OF STRIPPING." PLAINTIFFS HAVE FOR SOME TIME BEEN MANUFACTURING THE
MACHINE UNDER THE PATENT.
133
Religious Technology Center v. Netcom On-Line Communication Services, Inc., supra.

Exam
PLAINTIFFS ALLEGE THAT DEFENDANT MANUFACTURED A HEMP-STRIPPING

MACHINE IN WHICH, WITHOUT AUTHORITY FROM THE PLAINTIFFS, HE HAS
EMBODIED AND USED SUCH SPINDLES AND THEIR METHOD OF APPLICATION AND
USE, AND IS EXHIBITING HIS MACHINE TO THE PUBLIC FOR THE PURPOSE OF
INDUCING ITS PURCHASE. PLAINTIFFS CLAIM THAT THE USE BY THE DEFENDANT
OF SUCH SPINDLES AND THE PRINCIPLE OF THEIR APPLICATION TO THE
STRIPPING OF HEMP IS IN VIOLATION OF, AND IN CONFLICT WITH, PLAINTIFFS'
PATENT, TOGETHER WITH ITS CONDITIONS AND SPECIFICATIONS. THE
DEFENDANT'S MACHINE IS ALLEGEDLY AN INFRINGEMENT UPON THE PATENT
GRANTED THE PLAINTIFFS, AND PLAINTIFFS PRAY FOR AN INJUNCTION THAT THE
DEFENDANT BE REQUIRED TO ACCOUNT TO PLAINTIFFS FOR ANY PROFITS HE
MAY HAVE MADE BY REASON OF SUCH INFRINGEMENT.
THE PLANS AND SPECIFICATIONS UPON WHICH THE PATENT WAS ISSUED RECITE:
"OUR INVENTION RELATES TO HEMP STRIPPING MACHINES AND IT CONSISTS IN

THE COMBINATIONS, CONSTRUCTIONS AND ARRANGEMENTS HEREIN DESCRIBED
AND CLAIMED.
"AN OBJECT OF OUR INVENTION IS TO PROVIDE A MACHINE AFFORDING
FACILITIES WHEREBY THE OPERATION OF STRIPPING HEMP LEAVES MAY BE
ACCOMPLISHED MECHANICALLY, THEREBY OBVIATING THE STRAIN INCIDENT TO
THE PERFORMANCE OF HEMP STRIPPING OPERATIONS MANUALLY."
AND ON PAGE 3 OF THE APPLICATION FOR PATENT, IT IS SAID:
"OBVIOUSLY, OUR INVENTION IS SUSCEPTIBLE OF EMBODIMENT IN FORMS
OTHER THAN THAT ILLUSTRATED HEREIN AND WE THEREFORE CONSIDER AS
OUR OWN ALL MODIFICATIONS OF THE FORM OF DEVICE HEREIN DISCLOSED
WHICH FAIRLY FALL WITHIN THE SPIRIT AND SCOPE OF OUR INVENTION AS
CLAIMED.
"WE CLAIM:
"1. IN A HEMP STRIPPING MACHINE, A STRIPPING HEAD HAVING A

SUPPORTING PORTION ON WHICH THE HEMP LEAVES MAY REST AND HAVING
ALSO AN UPRIGHT BRACKET PORTION, A LEVER OF ANGULAR FORMATION
PIVOTALLY ATTACHED SUBSTANTIALLY AT THE JUNCTURE OF THE ARMS
THEREOF TO THE BRACKET PORTION OF THE STRIPPING HEAD, WHEREBY ONE
ARM OF THE LEVER OVERLIES THE SUPPORTING PORTION OF THE STRIPPING
HEAD, A BLADE CARRIED BY SAID ONE ARM OF THE LEVER FOR COOPERATING
WITH SAID SUPPORTING PORTION, MEANS CONNECTED WITH THE OTHER ARM
OF THE LEVER AND ACTUATING THE LATTER TO CONTINUOUSLY URGE THE
BLADE TOWARD SAID SUPPORTING PORTION OF THE STRIPPING HEAD, AND A
ROTATABLE SPINDLE POSITIONED ADJACENT TO SAID STRIPPING HEAD, SAID
SPINDLE BEING ADAPTED TO BE ENGAGED BY HEMP LEAVES EXTENDING ACROSS
SAID SUPPORTING PORTION OF THE STRIPPING HEAD UNDERNEATH SAID BLADE
AND BEING OPERABLE TO DRAW SAID HEMP LEAVES IN THE DIRECTION OF THEIR
LENGTH BETWEEN SAID SUPPORTING PORTION OF THE STRIPPING HEAD AND
SAID BLADE.

HORIZONTAL TABLE PORTION, A REST SUPPORTED UPON SAID TABLE PORTION,
A STRIPPING KNIFE SUPPORTED UPON THE TABLE FOR MOVEMENT INTO AND

Exam
OUT OF POSITION TO COOPERATE WITH THE REST TO STRIP HEMP LEAVES

DRAWN BETWEEN THE KNIFE AND THE REST, AND POWER DRIVEN MEANS
ADAPTED TO BE ENGAGED WITH SAID HEMP LEAVES AND TO PULL THE LATTER
BETWEEN THE KNIFE AND REST, SAID POWER DRIVEN MEANS INCLUDING A
ROTATING SPINDLE, SAID SPINDLE BEING FREE AT ONE END AND TAPERING
REGULARLY TOWARD ITS FREE END.

HORIZONTAL TABLE PORTION AND AN UPRIGHT BRACKET PORTION, A REST
HOLDER ADJUSTABLY SECURED ON THE TABLE PORTION, A REST RESILIENTLY
SUPPORTED BY THE HOLDER, A KNIFE CARRYING LEVER OF ANGULAR
FORMATION AND BEING PIVOTALLY ATTACHED SUBSTANTIALLY AT THE
JUNCTURE OF THE ARMS THEREOF TO THE BRACKET PORTION OF THE STRIPPING
HEAD, WHEREBY ONE ARM OF THE LEVER OVERLIES THE REST, A BLADE
ADJUSTABLY SUPPORTED ON SAID ONE ARM, FOR COOPERATING WITH SAID
REST AND GRAVITY MEANS CONNECTED WITH THE OTHER ARM OF THE LEVER
AND ACTUATING THE LATTER TO CONTINUOUSLY URGE THE BLADE TOWARD THE
REST."
THE SPINDLE UPON WHICH THE PATENT WAS OBTAINED, TOGETHER WITH THE
SPINDLE UPON WHICH THE DEFENDANT RELIES ARE EXHIBITS IN THE RECORD
AND WERE BEFORE THE COURT AT THE TIME THIS CASE WAS ARGUED. THE
SPINDLE OF THE PLAINTIFFS WAS MADE OF WOOD, CONICAL IN SHAPE AND WITH
A SMOOTH SURFACE. THAT OF THE DEFENDANT WAS SOMEWHAT SIMILAR IN
SHAPE, BUT WAS MADE OF METAL WITH A ROUGH SURFACE, AND THE
DEFENDANT CLAIMS THAT HIS SPINDLE WAS MORE EFFECTIVE AND WOULD DO
BETTER WORK THAN THAT OF THE PLAINTIFFS.
QUESTIONS:
DO THE PLAINTIFFS HAVE A VALID CAUSE OF ACTION AGAINST THE

DEFENDANT FOR PATENT INFRINGEMENT?
YES.
Patent infringement is defined as the making, using, offering for sale, selling, or
importing a patented product or a product obtained directly or indirectly from a
patented process, or the use of a patented process without the authorization of the
patentee constitutes patent infringement134. For there to be patent infringement,
there must be the act of making, using, selling or importing of the product itself or
obtained directly or indirectly form a patented process and that the act must be in
relation to a product or process falling within the scope of protection of the
patent.135
The scope of protection of the patent is determined by the claims, which are to be
interpreted in the light of the description and drawings. For the purpose of
determining the extent of protection conferred by the patent, due account shall be
taken of elements which are equivalent to the elements expressed in the claims, so
134
135

Exam
that a claim shall be considered to cover not only the elements as expressed
therein, but also equivalents136. The latter provides for the doctrine of equivalents.
The essence of the doctrine is that one may not practice a fraud on a patent. The
theory on which it is founded is that “if two devices do the same work in
substantially the same way, and accomplish substantially the same result, they are
the same, even though they differ in name, form, or shape.137
In this case, the plaintiff’s hemp-stripping machine and that of the defendant’s are
the same, and the method of application and use is also the same. The only
difference between the two is the material and texture of the spindle used. The
plaintiff’s spindle was made of wood, conical in shape and with a smooth surface.
The spindle of the defendant, on the other hand, is similar in shape, but was made
with metal and had a rough surface. Although the claim of the defendant may not
be an imitation of the claim of the plaintiff, the two devices perform the same work
substantially in the same way. Thus, although the spindles of the two parties differ
in the material and the texture, the two hemp-stripping machines are equivalents
and thus, the defendant clearly infringed on the right of the plaintiff protected by its
patent when it exhibited the machine to the public for the purpose of offering it for
sale.
The defendant argues that its metal spindle with a rough surface was more effective
and would do better work than that of the plaintiffs. The probable basis of this
argument is Section 21, which recognizes the patentability of improvement
patents.138 However, the act of improving the patented product or process is still
covered under Section 76 and would still require authorization from the patent-
holder. An improver who appropriates, without license, the basic patent of another,
is an infringer and liable as such.139
Even if defendant acquired authorization from the plaintiff to improve the patent, a
change only in form, proportions, or degree, doing the same thing in the same way,
by substantially the same means, with better results does not entitle the defendant
to copyright protection, as there is want of patentable novelty.140
IS THERE A WAY BY WHICH THE DEFENDANT COULD HAVE AVOIDED

THE CHARGE OF PATENT INFRINGEMENT?
DEFENDANT COULD HAVE OBTAINED AUTHORIZATION FROM THE PLAINTIFF

TO MAKE, USE, OFFER FOR SELLING, SELL, OR IMPORT THE
PATENTED HEMP-STRIPPING MACHINE. BUT FAILING TO DO SO, HE
MAY AVAIL OF THE DEFENSES IN SECTION 81 AND SECTION 61.
Section 76.1 provides that it the acts enumerated there would constitute patent
infringement if it were done without authorization from the patent-holder. Thus, the
136
137
138
INTELL. PROP. CODE, § 21. Patentable Inventions. Any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is industrially applicable shall be Patentable. It may be, or may
relate to, a product, or process, or an improvement of any of the foregoing. (Emphasis supplied)
139
Vargas vs. F. M. Yaptico & Co., 40 Phil., 195.
140
Belding Mfg. Co. vs. Challenge Corn-Planter CO., 152 U.S. 100

Exam
easiest way the defendant could have avoided the charge was for him to acquire
authorization from the plaintiff.
However, there is no showing in this case that the defendant did acquire
authorization from the plaintiff before it manufactured a similar hemp-stripping
machine. Hence, other defenses should be resorted to.
In an action for infringement, the defendant, in addition to other defenses available

to him, may show the invalidity of the patent, or any claim thereof, on any of the
grounds on which a petition of cancellation can be brought.141 A patent may be
cancelled when the claimed object of the patent is not new or not patentable, when
the patent does not disclose the invention in a manner sufficiently clear and
compete for it to be carried out by any person skilled in the art, or when the patent
is contrary to the public order or morality.142
One of the defense that the defendant could assert is the lack of novelty of the
hemp-stripping machine, particularly that of the spindle. One of the elements of
patentability is that the subject-matter should display “invention”. Some substantial
innovation is necessary, an innovation for which society is truly indebted to the
efforts of the patentee.143 An invention shall not be considered new if it forms part of
a prior art.144 Prior art is defined as consisting of everything which has been made
available to the public anywhere in the world, before the filing date or the priority
date of the application claiming the invention; and the whole contents of an
application for a patent, utility model, or industrial design registration, published in
accordance with this Act, filed or effective in the Philippines, with a filing or priority
date that is earlier than the filing or priority date of the application.145 The spindle,
which is the bone of contention between the parties, is prior art. It is already made
available in the world even before the filing date of the application of the plaintiff.
The defendant may also claim that the process of stripping hemp protected under
the patent claim of the plaintiff does not involve an inventive step. An invention
involves an inventive step if, having regard to prior art, it is not obvious to a person
skilled in the art at the time of the filing date or priority date of the application
claiming the invention.146 The defendant may show that the process patented by the
plaintiff is not an unusual way of stripping hemp, particularly as among persons
skilled in the trade involving hemps.
The defendant may also claim that the patent does not disclose the invention in a
manner sufficiently clear and compete for it to be carried out by any person skilled
in the art. The claim of the plaintiff includes in page 3 the following: "Obviously, our
invention is susceptible of embodiment in forms other than that illustrated herein
and we therefore consider as our own all modifications of the form of device herein
disclosed which fairly fall within the spirit and scope of our invention as claimed.”
This statement, thus, would enable the plaintiff to prohibit any modification of the
141
142
Id., § 61.
143
Sinclair & Carroll Co., Inc. vs. Interchemical Corporation, 325 U.S. 327 (May 21, 1945).
144
Id., § 23.
145
Id., § 24.
146
Id., § 26.

Exam
hemp-stripping machine, even if the said modification is patentable. A patent

monopoly would thus be extended beyond the patented work, and would
discourage rather than promote invention. It is well understood that the patentee
may not by claiming a patent on the result or function of a machine extend his
patent on the result or function of a machine extend his patent to devices or
mechanisms not described in the patent.147
As these defenses are also grounds for cancellation of the patent, the defendant
may further file a counterclaim for the cancellation of the patent awarded to the
plaintiff.
OIL SPILL RECOVERY SYSTEM (50%)
THE SOLAR 1 OIL SPILL AT GUIMARAS ISLAND IN ILOILO LED TO A PATENT

DISPUTE BETWEEN A FILIPINO INVENTOR AND AN ITALIAN COMPANY THAT HAS
BEEN SELECTED BY THE INSURERS TO UNDERTAKE THE SUB SEA CLEAN UP OF
THE OIL SPILL.
THE FILIPINO INVENTOR IS THE REGISTERED OWNER OF A UTILITY MODEL

PATENT IN THE PHILIPPINES WHOSE SPECIFICATIONS AND CLAIMS CORRESPOND
TO A COUNTERPART US PATENT NO. 5795103 FOR AN OIL RECOVERY SYSTEM
ISSUED ON AUGUST 18, 1998. THE FILIPINO INVENTOR DID NOT OBTAIN A
COUNTERPART OF US PATENT NO. 5795103 FROM THE PHILIPPINE INTELLECTUAL
PROPERTY OFFICE.
THE FILIPINO INVENTOR SUBMITTED A BID FOR THE SOLAR OIL RECOVERY
PROJECT BUT THE INSURER WHO WAS PAYING FOR THE CLEAN UP COSTS
RETAINED THE SERVICES OF THE ITALIAN COMPANY. UNDETERRED AND
DETERMINED, THE FILIPINO INVENTOR PUBLISHED A WARNING ADVERTISEMENT
IN A NEWSPAPER OF GENERAL CIRCULATION IN SUBSTANTIALLY THE FOLLOWING
LANGUAGE:
THE SOLAR OIL TANKER CONTAINING 1,700,000 LITERS OF OIL AT A DEPTH OF

640 METERS CANNOT BE RECOVERED BY THE SYSTEM OF THE ITALIAN
COMPANY, WHICH IS ALSO PATENTED UNDER AN EUROPEAN PATENT EUROPEAN
PATENT 1 449 763. NO SUCTION PUMP HAS THE CAPACITY TO SIPHON THE OIL
AT A DEPTH OF 640 METERS. THE DISPLACEMENT METHOD UNDER THE
PHILIPPINE UTILITY MODEL PATENT AND THE US PATENT 5795103 IS THE
SAFEST, EASIEST AND CHEAPEST WAY OF RECOVERING OIL FROM SOLAR 1.
THE DISPLACEMENT METHOD IS UNDERTAKEN BY PUMPING OIL INTO THE

COMPARTMENT OF THE OIL TANKER THROUGH THE INTAKE LINE AND THE OIL
AUTOMATICALLY WILL EXIT THROUGH A SECOND LINE LEADING TO THE OIL
RECOVERY VESSEL AT THE WATER SURFACE.
THE PAID ADVERTISEMENT IS PUBLISHED FOR THE SAKE OF NATIONAL INTEREST

AND WAS ADDRESSED TO THE GOVERNMENT AGENCIES PARTICIPATING IN THE
147
Holland Furniture Co. vs. Perkins Glue Co., 277 US 245 (1928), as cited in Amador, pp. 608-609.

Exam
OIL RECOVERY EFFORT TO DISSUADE THEM FROM AVAILING OF THE

“UNRELIABLE SYSTEM” OF THE ITALIAN COMPANY.
`UNDER THE UTILITY MODEL PATENT, THE ELEMENTS OF THE PHILIPPINE

INVENTION COVERING AN OIL TANKER FOR RECOVERING OIL FROM A
SUBMERGED OIL TANKER OR VESSEL ARE:
1. A HULL WITH AT LEAST ONE OIL-CONTAINING COMPARTMENT;

2. AN INLET COMMUNICATING WITH SAID OIL-CONTAINING COMPARTMENT SAID
INLET HAVING A FLEXIBLE INLET LINE WITH ONE END ATTACHED TO THE INLET
AND A FREE END WITH FLOATING MEANS ATTACHED TO THE EXTERIOR OF THE
COMPARTMENT
3. MEANS FOR MAINTAINING THE INLET LINE, DISCHARGE LINE AND FLOATING
MEANS EXTERIOR OF THE SAID ONE COMPARTMENT WHEREBY SAID LINE AND
DISCHARGE LINES WILL BE CAUSED TO BE DEPLOYED TO RISE TO THE SURFACE
UPON SAID VESSEL BEING SUBMERGED.
IN CONTRAST, ITALIAN COMPANY’S TECHNOLOGY DESCRIBED IN ITS EUROPEAN

PATENT NO. 1 449 763 EMPLOYS THE FOLLOWING ELEMENTS AND/OR STEPS:
1. AN EFFLUENT EVACUATION DEVICE WITH AT LEAST ONE PIPE AND A FIRST

VALVE INSTALLED TO WORK WITH AN OPENING IN THE HULL OR TANK OF A
SUNKEN SHIP TO RECOVER THE POLLUTING EFFLUENT FLOWING THROUGH THE
OPENING RISING TO THE EVACUATION DEVICE;
2. RECOVERY OF THE EFFLUENT FROM THE OPENING IN THE HULL OR TANK;
WHERE THE EFFLUENT IS RECOVERED USING A SHUTTLE RESERVOIR WITH AT
LEAST ONE BOTTOM ORIFICE WORKING WITH THE EVACUATION DEVICE FOR THE
PERFORMANCE OF THE FOLLOWING STEPS:
(I) LOWERING THE SHUTTLE RESERVOIR FROM THE SURFACE TO THE SEA BED
WHILE CAUSING THE BOTTOM ORIFICE OF THE SHUTTLE RESERVOIR TO
COOPERATE WITH THE EVACUATION DEVICE;
(II) FILLING THE SHUTTLE RESERVOIR WITH THE EFFLUENT AND CLOSING IT
WHEN FILLED TO MAKE IT LEAK TIGHT.
(III) ALLOWING THE SHUTTLE RESERVOIR TO RISE TO THE SURFACE ONCE FULL
AND EQUIPPED WITH BUOYANCY ELEMENTS
(IV) STORING THE SHUTTLE RESERVOIR FILLED WITH EFFLUENT IN A SHIP ON
THE SURFACE AND EMPLOYING SAID RESERVOIR ON THE SHIP FOR EMPTYING TO
ANOTHER SITE
(V) REPEATING STEPS (I) TO (IV) WITH THE SAME ELEMENTS UNTIL THE DESIRED
QUANTITY OF EFFLUENT HAS BEEN RECOVERED.
THE FILIPINO INVENTOR CLAIMED THAT THE SYSTEM OF THE ITALIAN COMPANY
INFRINGES THE CLAIMS UNDER HIS PHILIPPINE UTILITY MODEL PATENT AND HIS
US PATENT.
Question:
CAN THE FILIPINO INVENTOR, WHO HAS A PHILIPPINE UTILITY MODEL

PATENT AND A SEPARATE US PATENT WITH BROADER CLAIMS THAN
THE PHILIPPINE UM PATENT RELY NOT ONLY UPON HIS PHILIPPINE UM
PATENT BUT ALSO UPON THE CLAIMS OF US PATENT?

Exam
NO.
The Philippines is a signatory to the Paris Convention on the Protection of Industrial

Property. This convention provides the principle of independence of patents, which
provides that the grant of a patent for invention in one country for a given invention
does not oblige any other member country to grant a patent for invention for the
same invention. The underlying reason and main argument in favor of this principle
is that the national laws and administrative practices are usually quite different
from country to country.148 Thus, the Filipino inventor cannot oblige Philippine courts
to recognize the validity of the broader US Patent in the Philippines, as the said
patent may have been granted under different administrative practices.
Further, Section 111 of the IP Code expressly prohibits the acquisition of the Filipino
inventor of a utility model patent and another patent for the same oil recovery
system, regardless is simultaneously or consecutively. Thus, the Filipino inventor
may only rely on his utility model patent which he acquired in the Philippines.
IF YOU ARE THE PATENT COUNSEL OF THE FILIPINO INVENTOR, HOW

WILL YOU ARGUE HIS CASE FOR PATENT INFRINGEMENT BASED ON
THE LANGUAGE OF THE CLAIMS IN THE PHILIPPINE AND US PATENTS?
TO ARGUE THE CASE FOR THE FILIPINO INVENTOR, I WOULD USE THE
DOCTRINE OF EQUIVALENTS.
Once any of the acts enumerated in Section 76.1 are made without the
authorization of the patent holder, it would be deemed a patent infringement. A
patent may be infringed where the essential or substantial features of the patented
invention are taken or appropriated, or the device, machine or other subject matter
alleged to infringe is substantially identical with the patented invention.149 Thus, to
determine what specifically is protected, it is necessary to refer to the claims which
define the matter for which protection is sought.150 The claim must be properly
construed to determine the scope of protection and then compared to the accused
device or process.151
There are two ways of infringing patent rights. The first is literal infringement which
exists when every limitation recited in the claim is found in the accused device, i.e.
when the properly construed claim reads on the accused device exactly. 152
The second type of infringement is infringement under the doctrine of equivalents.

In applying the doctrine of equivalents, it is often enough to assess whether the
claimed and accused products or processes include substantially the same function,
way, and result.153 This is found in Section 75.2.
148
149
Del Rosario vs. CA and Janito Corp., G.R. No. 115106 (1996)
150
151
Jack Ekchian vs. The Home Depot, Inc., et al., USCA (F.C.1997);
152
153
Engel Industries, Inc. vs. The Lockformer Company, et. Al, USCA (F.C.1996).

Exam
The claim of the Filipino inventor may fall under the second type of infringement, as
the elements in the claims of the Filipino and the Italian inventor are not exactly
read the same. However, comparing the elements of the two claims, one could find
substantial similarities with the parts of each’s patented process and the function
for which the said parts are intended to perform. The Italian Company’s “effluent
evacuation device”, “hull”, “opening in the hull or tank” and the “shuttle reservoir”
corresponds to the Filipino inventor’s “flexible inlet”, “discharge line”, “inlet” and
“compartment” in terms of purpose and function. Thus, under the doctrine of
equivalents, the Italian company’s patent infringes on the Filipino inventor’s patent
so the Filipino could bring an action against the former for patent infringement.
IF YOU ARE THE PATENT COUNSEL OF THE ITALIAN COMPANY, HOW

WILL YOU DEFEND IT AGAINST THE CHARGE OF PATENT
INFRINGEMENT?
As counsel for the italian company, i would argue that there is no

infringement, as the comparison of the two claims would show that
the patents are not the same, and that in any case, the use of the
italian invention is excused under the IP Code.
To prove infringement, the plaintiff must show that the accused device includes
every limitation of the claim or an equivalent of each limitation not literally met.154
Thus, it is necessary to refer to the language of the claims.
Comparing the Italian claim from the Filipino claim, the two refer to different
patents. First, the Filipino patent – the only one which the Filipino could use to base
his cause of action – covers a utility model for an oil tanker while the Italian claim is
for patent of a technology. A utility model is merely a name given to certain
inventions in the mechanical field, the object of which are sometimes devices or
useful objects. It differs from inventions because the technological progress or
inventive step required for a utility model is less and the maximum term of
protection provided by law is usually shorter.155
Second, the Filipino claim is narrower as compared to the Italian patent. As the
Filipino claim involves an oil tanker for recovering oil from a submerged oil tanker or
vessel, it merely describes the parts of the said tanker. The Italian claim, however,
describes the process through which the oil may be recovered, although through
the use of devices which may be found similar to that of the Filipino device.
As the use of either the literal infringement test or the doctrine of equivalents would
not result in a finding of substantial similarity between the two patents, there is no
infringement on the part of the Italian company.
154
155

Exam
Granting that there was indeed infringement in the claims of the Filipino inventor,
the Italian company may further argue that its use is justifiable under Section 74.1
of the IP Code. The said section provides that a Government agency or third person
authorized by the Government may exploit the invention even without agreement
of the patent owner where: (a) the public interest, in particular, national security,
nutrition, health or the development of other sectors, as determined by the
appropriate agency of the government, so requires; or (b) A judicial or
administrative body has determined that the manner of exploitation, by the owner
of the patent or his licensee, is anti-competitive.
In this case, the Italian oil recovery system which allegedly is similar to the
displacement method under the Filipino inventor’s utility model was used to clean
up the oil spill in Guimaras. It clearly involves public interest, particularly as to the
nearby residents’ nutrition and health. The insurer who was paying for the cleanup
costs of the oil spill may be deemed to have been authorized by the Government to
exploit the Filipino inventor’s utility model, as other government agencies were said
to be also participating in the oil recovery effort.
BASED ON THE FACTS OF THE CASE, WHAT CAUSE OF ACTION MAY

THE ITALIAN COMPANY HAVE AGAINST THE FILIPINO INVENTOR?
THE ITALIAN COMPANY MAY OPT TO FILE A PETITION FOR CANCELLATION

OF THE FILIPINO INVENTOR’S PATENT OR A CRIMINAL ACTION FOR
LIBEL.
Petition for cancellation of the Filipino Inventor’s patent
The Italian Company may opt to file a petition for cancellation of the Filipino
inventor’s patent, alleging that the Filipino inventor’s invention is not new or
patentable, or that the patent does not disclose the invention in a manner
sufficiently clear and complete for it to be carried out by any person skilled in the
art; or that the patent is contrary to public order or morality.156
For this cause of action, the Italian Company may argue that there is no inventive
step at all, no novelty involved, in the Oil Tanker protected under the Filipino
inventor’s utility model patent. The Italian company acquired an European patent
for the oil recovery system long before the Filipino Inventor had his oil tanker
registered for patent.
Moreover, the Italian company may also assert the simultaneous or consecutive
application and subsequent grant of patent to the Filipino as a ground for cancelling
the latter’s utility model patent, as the Filipino has both a Filipino utility model
156

Exam
patent and a US Patent on the same subject matter. This is prohibited expressly
under Section 111 of the IP Code.
Criminal Action for Libel
For an action for libel to succeed, the following elements must be proven to exist:
(a) There must be an imputation of a crime, or of a vice or defect, real or imaginary,
or any act, omission, condition, status, or circumstance; (b) The imputation must be
made publicly; (c) It must be malicious; (d) The imputation must be directed at a
natural or juridical person, or one who is dead; and (e) The imputation must tend to
cause the dishonor.
After losing his bid for the Solar oil recovery project to the Italian company, the
Filipino inventor published a “warning advertisement” in a newspaper of general
circulation, accusing the Italian company’s oil recovery system as “unreliable”.
Thus, the Italian company may show that the Filipino inventor imputed some defect
with regard the system utilized by the Italian company; that the imputation was
made publicly through the publication of the “warning advertisement” in a
newspaper of general circulation; that the imputation was maliciously made, the
Filipino inventor maliciously made the said imputation, it being made right after
losing in the bid for the Solar oil recovery project and for the purpose of dissuading
the government agencies participating in the oil recovery program from availing of
the Italian Company’s patented procedure; that the imputation is directed to the
Italian Company, with the “warning advertisement” even mentioning the European
Patent number of the Italian Company; and that the imputation tends to cause
dishonor to the Italian Company.

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COPYRIGHT & PATENT FINAL EXAMS

The webpage may be considered a protected work under Section 172.1(n) as a

2. Which of the following employers successfully acquire copyright from

Charisse Mae Villamejor Mendoza Copyright and Patent Final

SIGNS A CONTRACT, BUT IT DOES NOT MENTION COPYRIGHT OR

According to Section 178.3, if the employee creates an object of copyright which is

3. If you want to make of another's original work and it is not covered by

Charisse Mae Villamejor Mendoza Copyright and Patent Final

(b) The nature of the copyrighted work;

FALSE. THE FACULTY MEMBER CAN BE SUED INDIVIDUALLY.

As a matter of defense, the faculty member may allege that he is merely an

Charisse Mae Villamejor Mendoza Copyright and Patent Final

However, even if it be successfully shown that the university is indeed a

Charisse Mae Villamejor Mendoza Copyright and Patent Final

ESSAY QUESTION(20%): Koko and Loco

Charisse Mae Villamejor Mendoza Copyright and Patent Final

PRACTICING PROJECT MANAGERS AS WELL AS A “CONSISTENT STRUCTURE” FOR

PMI CERTIFICATION HAS COME TO BE VIEWED AS AN IMPORTANT CREDENTIAL,

ALL RIGHTS RESERVED. PERMISSION TO REPUBLISH IN FULL IS GRANTED FREELY.

KOKO IS AN EXPERT IN THE FIELD OF PROJECT MANAGEMENT WHO OFFERS TEST

LOCO OFFERS A VARIETY OF EXAM PREPARATION AND PROFESSIONAL TRAINING

1. WHAT ARE THE ESSENTIAL ELEMENTS OF A COPYRIGHT

FOR THEIR TO BE AN INFRINGEMENT, THE PLAINTIFF SHOULD BE ENTITLED

Charisse Mae Villamejor Mendoza Copyright and Patent Final

Infringement of a copyright is a trespass on a private domain owned and occupied

Discussion of the Elements of Copyright Infringement

There are five exclusive rights attached to copyrighted works as contained in

Charisse Mae Villamejor Mendoza Copyright and Patent Final

(1) The right to reproduce;

(3) The right to distribute;

(4) The right to perform; and

(5) The right to display26

The right of reproduction is seen as the bedrock of copyright and is

Charisse Mae Villamejor Mendoza Copyright and Patent Final

fictionalizations, motion picture versions, sound recordings, art reproductions, and

The right of distribution is the right to distribute copies or phonerecords of

The right of public performance inheres in works of authorship other than

Charisse Mae Villamejor Mendoza Copyright and Patent Final

display is generally accepted to mean a display at a place open to the public or

2. WHAT ARE THE TWO BASIC CATEGORIES OF COPYRIGHT-

THE TWO BASIC CATEGORIES OF COPYRIGHT-PROTECTED WORK ARE

Compared to original works, derivative works borrow original and expressive

Charisse Mae Villamejor Mendoza Copyright and Patent Final

FOR THERE TO BE A COPYRIGHT INFRINGEMENT, IT SHOULD FIRST BE

PMP Exam Prep is protected under the Intellectual Property

Loco infringed Koko’s exclusive rights by copying the latter’s

Charisse Mae Villamejor Mendoza Copyright and Patent Final

Granted Nielsen’s admission is not enough to constitute direct evidence to establish

Charisse Mae Villamejor Mendoza Copyright and Patent Final

TO DEFEND AGAINST THE CLAIM OF COPYRIGHT INFRINGEMENT, LOCO

PMP Exam Prep is not protected under the Intellectual

Charisse Mae Villamejor Mendoza Copyright and Patent Final

Koko failed to prove that Loco copied his work

As for direct evidence, Koko was presenting the testimony of Nielsen as an

Charisse Mae Villamejor Mendoza Copyright and Patent Final

I WOULD DECIDE IN FAVOR OF LOCO AND DISMISS THE CASE.

1. The purpose and character of the use

2. The nature of the copyrighted work

Charisse Mae Villamejor Mendoza Copyright and Patent Final

3. The amount and substantiality of the portion used in relation to the

ESSAY QUESTION ( 20%): Copying of Industrial Design

Charisse Mae Villamejor Mendoza Copyright and Patent Final

DO GENERAL ENGINES. HE SUBSEQUENTLY FILED A COPYRIGHT INFRINGEMENT

DID ANG TIBAY ENGINE CORP. COMMIT COPYRIGHT INFRINGEMENT