Santos vs. McCullough Printing Comp.

Re: Unauthorized use, adoption and appropriation by the company of Santos intellectual creation/artistic
design for a Christmas Card.

Santos/Malang designed a Christmas Card for the exclusive use of Ambassador Neri.

Such card carries Santos pen name MALANG

The following year, the company which was the publisher of the Christmas Card, displayed the design
and offered the same for sale, without the consent of Santos, their contention are as follows:
(1) the design does not contain clear notice that it belonged to Santos; and
(2) the design has been published but does not contain a notice of copyright.

The TC rendered a decision against Santos.

Ruling: Malang is not entitled to protection.

Ratio:

No registration has been made. An intellectual creation should be copyrighted 30 days after its
publication, if made in Manila, or within 60 days if made elsewhere, otherwise, the same shall become
public property; and

Creation was not a limited one. For there to be a limited publication/prohibition, such fact must appear
on the face of the design. When the purpose is a limited publication, but the effect is a general publication,
irrevocable rights thereon become vested in the general public.
Francisco Joaquin, Jr. vs Franklin Drilon
BJ Productions Inc. (BJPI) was the holder of copyright over the show Rhoda and Me. It holds rights over the
shows format and style of presentation. In 1991, BJPIs president Francisco Joaquin saw on TV RPN 9s
show Its a Date, a show which is basically the same as Rhoda and Me. He eventually sued Gabriel Zosa, the
manager of the show Its a Date. The investigating prosecutor found probable cause against Zosa. Zosa later
sought a review of the prosecutors resolution before the Secretary of Justice (Franklin Drilon). Drilon
reversed the findings of the fiscal and directed him to dismiss the case against Zosa.
ISSUE: Whether or not the order of Drilon finding no probable cause is valid.

HELD:
Yes. The essence of copyright infringement is the copying, in whole or in part, of copyrightable materials as
defined and enumerated in Section 2 of PD. No. 49 (Copyright Law). Apart from the manner in which it is
actually expressed, however, the idea of a dating game show is a non-copyrightable material. Ideas,
concepts, formats, or schemes in their abstract form clearly do not fall within the class of works or materials
susceptible of copyright registration as provided in PD. No. 49. What is covered by BJPIs copyright is the
specific episodes of the show Rhoda and Me.

Further, BJPI should have presented the master videotape of the show in order to show the linkage between
the copyright show (Rhoda and Me) and the infringing show (Its a Date). This is based on the ruling in 20th
Century Fox vs CA (though this has been qualified by Columbia Pictures vs CA, this is still good law).
Though BJPI did provide a lot of written evidence and description to show the linkage between the shows,
the same were not enough. A television show includes more than mere words can describe because it
involves a whole spectrum of visuals and effects, video and audio, such that no similarity or dissimilarity
may be found by merely describing the general copyright/format of both dating game shows.
BAKER V SELDEN
Facts. Selden (Plaintiff) copyrighted a book in which he used in introductory essay explaining his system of
bookkeeping followed by forms to put the system to use. He had arranged the columns and headings so that
the entire operation of a day, week or month was on a single page or on two pages facing each other. Baker
(Defendant) then began selling forms with columns and headings arranged differently to achieve the same
result. When Plaintiff successfully sued for copyright infringement, Defendant appealed. He argued that the
forms were non-copyrightable.
Issue. Does copyright protection for a book explaining an art or system prevent others from using the system
or the forms.
Held: No. The copyright protection for a book explaining an art or system extends only to the authors
unique explanation of it and does not prevent others from using the system or the forms incidentally used.
To find that a copyright protected against use of the system itself or the forms necessary to such use would
be to grant protection similar to a patent without requiring a showing of novelty. Copyright is based on
originality, not novelty, and protects the explanation of the system and not the use of the system. In this
case, therefore, the copyright Selden (Plaintiff) obtained could not give him the exclusive right to use the
bookkeeping system or the forms necessary to such use. Reversed and remanded.

Pearl & Dean (Phil), Inc. vs Shoemart, Inc.

Pearl & Dean (Phil), Inc. is a corporation engaged in the manufacture of advertising display units called
light boxes. In January 1981, Pearl & Dean was able to acquire copyrights over the designs of the display
units. In 1988, their trademark application for Poster Ads was approved; they used the same trademark to
advertise their light boxes.
In 1985, Pearl & Dean negotiated with Shoemart, Inc. (SM) so that the former may be contracted to install
light boxes in the ad spaces of SM. Eventually, SM rejected Pearl & Deans proposal.
Two years later, Pearl & Dean received report that light boxes, exactly the same as theirs, were being used
by SM in their ad spaces. They demanded SM to stop using the light boxes and at the same time asked for
damages amounting to P20 M. SM refused to pay damages though they removed the light boxes. Pearl &
Dean eventually sued SM. SM argued that it did not infringe on Pearl & Deans trademark because Pearl &
Deans trademark is only applicable to envelopes and stationeries and not to the type of ad spaces owned by
SM. SM also averred that Poster Ads is a generic term hence it is not subject to trademark registration. SM
also averred that the actual light boxes are not copyrightable. The RTC ruled in favor of Pearl & Dean. But
the Court of Appeals ruled in favor of SM.
ISSUE: Whether or not the Court of Appeals is correct.

HELD: Yes. The light boxes cannot, by any stretch of the imagination, be considered as either prints,
pictorial illustrations, advertising copies, labels, tags or box wraps, to be properly classified as a
copyrightable; what was copyrighted were the technical drawings only, and not the light boxes themselves.
In other cases, it was held that there is no copyright infringement when one who, without being authorized,
uses a copyrighted architectural plan to construct a structure. This is because the copyright does not extend
to the structures themselves.
On the trademark infringement allegation, the words Poster Ads are a simple contraction of the generic
term poster advertising. In the absence of any convincing proof that Poster Ads has acquired a secondary
meaning in this jurisdiction, Pearl & Deans exclusive right to the use of Poster Ads is limited to what is
written in its certificate of registration, namely, stationeries.

ABS CBN VS FELIPE GOZON ET.AL

Mazer v. Stein
347 U.S. 201 (1954)
FACTS
Stein created and registered for copyright a Grecian-style sculpture of a woman, which was then
manufactured into a mass-produced lamp base. Mazer subsequently manufactured similar lamp bases. Stein
filed action for copyright infringement. The trial court found for Mazer on the grounds that copyrights are

not intended to protect utilitarian items such as lamps, resulting in an appeal by Stein. The appellate court
reversed, finding that a subsequent utilization of a work of art in an article of manufacture does not preclude
the copyright owner to be protected from the infringement of the work itself. Mazer appeals.
ISSUE
Whether Stein is entitled to copyright protection from Mazers copy of the lamp base because the lamp
statute qualifies as a work of art under U.S Copyright Law?
HELD:
Yes. Upon reviewing the history of the successive Copyright Acts and the legislative history, the Court found
that a work of art has a broader specification than just a work of fine art. A work that is the result of the
original, tangible ideas of the creator is subject to copyright protection. Thus, the Court finds that the lamp
base satisfies the requisite originality needed for protection.
The Court also reasons that the lamp base, fitted as lamps or unfitted, may be granted a deign patent but
patentability does not bar the lamp bases from being copyrighted as a work of art. Furthermore, the Court
found that the intended or actual use in industry of an article eligible for copyright does not bar or invalidate
its registration. As a result, Steins lamp base is entitled to copyright protection. An original idea,
incorporated into an utilitarian object, may be protected as a work of art under U.S. Copyright Law.
The Court based its decision on the policy reasoning that copyrights are granted (1) to encourage individual
effort by personal gain and (2) to promote advancement of public welfare through talents of authors and
inventors in science and art. Copyright protection granted to Stein.

Mason v. Montgomery Data, Inc.

Mason did a lot of research on real estate data, and compiled all of the research into a map, which he sold.
Montgomery Data took Mason's map, traced Mason's map and turned it into their own map, which they sold.
Mason sued Montgomery Data for copyright infringement. Montgomery Data argued that all of the
information contained on the map was publicly available. There was nothing in the map that was created by
Mason, or represented any originality on his part. Therefore the map was not copyrightable.
The Trial Court found for Montgomery Data. Mason appealed.
The Trial Court found that since a map was based on factual data, there was only one possible way to draw
it, so it did not embody the creativity required for a copyright.
The Appellate Court reversed.
The Appellate Court found that maps can be drawn in a variety of ways, and can contain various levels of
data. Therefore they are a creative expression worthy of copyright.
ISSUE:
Whether the maps were copyrihtable.
HELD:

The maps are copyrightable. The district court's judgment was reversed and the case remanded. The merger
doctrine was inappropriately applied here. The maps are original. Originality does not require novelty,
ingenuity, or aesthetic merit.
The plaintiff's maps possess sufficient creativity in both the selection, coordination, and arrangement of the
facts that they depict.
The Court looked to Feist Publications, Inc. v. Rural Telephone Service Co., Inc. (499 U.S. 340 (1991)), and
found that compilations of factual data are copyrightable if the author's selection, coordination, and
arrangement of the information depicted are sufficiently creative to qualify as a creative expression.
BURROW-GILES LITOGRAPHIC CO. V. SARONY
Famed photographer Napoleon Sarony filed a copyright infringement suit against the Burrow-Giles
Lithographic Company, which had marketed unauthorized lithographs of Sarony's photograph of writer
Oscar Wilde, entitled "Oscar Wilde No. 18." The company argued that photographs could not qualify as
"writings" or as the production of an "author", in the language of the grant of power to Congress under
article I, section 8, clause 8 of the United States Constitution to protect copyrights, and so 4952 of the
Copyright Act of 1865, which explicitly extended protection to photographs, was unconstitutional. The
federal trial court for the Southern District of New York, though expressing some doubt over the
constitutionality of 4952, declined to invalidate it and awarded a $610 judgment to Sarony. The judgment
was affirmed by the U.S. Circuit Court for the Southern District of New York.
HELD:
Regarding the interpretation of "writings" in the Constitution, Justice Miller's unanimous opinion for the
Supreme Court wrote that Congress has "properly declared these to include all forms of writing, printing,
engraving, etching, &c., by which the ideas in the mind of the author are given visible expression." The
Court noted that "maps and charts" were among the subjects of the first Copyright Act of 1790, and that
etchings and engravings were added when it was first amended in 1802. The members of Congress that
passed these first copyright acts were contemporaries of the Framers of the Constitution, and many of them
attended the Constitutional Convention itself. As such, their interpretation of the Constitution, Justice Miller
wrote, "is of itself entitled to very great weight, and when it is remembered that the rights thus established
have not been disputed during a period of nearly a century, it is almost conclusive."
Even if other visual works could be copyrighted, Burrow-Giles argued, photography was merely a
mechanical process rather than an art, and could not embody an author's "idea". The Court accepted that this
may be true of "ordinary" photographs, but this was not in the case of Sarony's image of Wilde. The trial
court had found that Sarony had posed Wilde in front of the camera and suggested his expression, and
selected his costume, the background and accessories to create a particular composition of line and light.
This control that Sarony exercised over the subject matter, in the view of the Court, showed that he was the
"author" of "an original work of art" over which the Constitution intended Congress to grant him exclusive
rights.

Los Angeles News Service v. Tullo

WHELAN ASSOCIATES V. JASLOW DENTAL LABORATORY

In 1978 Rand Jaslow tried to build a computer program to handle customer management, billing,
accounting, inventory management and other functions for Jaslow Dental Laboratories. He gave up after a
few months and hired Strohl Systems to do the job. The software was built by the half-owner of Strohl,
Elaine Whelan, and delivered in March 1979. It was written in the EDL language and ran on an IBM
Series/1 minicomputer. Strohl kept ownership of the software, which was branded Dentalab, and could
license it to other companies in exchange for a 10% commission to Jaslow. In November 1979 Whelan left
Strohl and set up her own business, acquiring the right to the software.
Later, Jaslow became engaged in selling the Dentalab software in exchange for a percentage of the gross
sales. He formed a company named Dentcom which in late 1982 began to develop a program in a different
computer language (BASIC) but with very similar functionality called Dentlab, marketed as a Dentalab
successor. The new software could run on IBM Personal Computers, giving access to a broader market. On
30 June 1983 Jaslow's company filed a suit in Pennsylvania state court alleging that Whelan had
misappropriated its trade secrets. Whelan filed a countersuit in federal court in Pennsylvania alleging that
the Dentlab software violated Whelan's copyrights in the Dentalab software. The district court ruled that
Dentlab was substantially similar to Dentalab because its structure and overall organization were
substantially similar. Jaslow appealed the decision to the U.S. Third Circuit Court of Appeals.
HELD:
The Court of Appeals for the Third Circuit noted that computer programs are literary works under U.S. law.
The court drew an analogy with a concept defined by Judge Learned Hand who noted, talking about a play,

that the exact wording was certainly protected, and then there were a series of layers of increasing
abstraction before the high-level plot outline is reached, which is not protected. An ad hoc judgement based
on careful comparison of the works would be needed to determine where in this spectrum any alleged
copying lay, and to decide whether it was at a sufficiently specific level to be a violation rather than a
different expression of the same idea. But "careful comparison" in the case of software works might involve
checking millions of lines of code.
The court rejected the "extrinsic-intrinsic" test that had commonly been used until then, where an expert and
a lay observer are asked to independently determine whether the works are substantially similar.The court
reasoned that with literary works a non-literal element is protected to the extent that it is an expression of an
idea rather than the idea itself. By analogy, the purpose or function of a software work would be the work's
"idea", while everything not necessary to that purpose or function would be part of the expression of the
idea. The expression would be protected, but the basic purpose or function would not. On this basis the
Court of Appeals upheld the district court's ruling of copyright violation due to similarity of SSO. The court
found that the Copyright Act of 1976 supported its view of a software work as a compilation, saying:
Although the Code does not use the terms "sequence," "order," or "structure," it is clear from the definition
of compilations and derivative works, and the protection afforded them, that Congress was aware of the fact
that the sequencing and ordering of materials could be copyrighted, i.e. that the sequence and order could be
parts of the expression, not the idea, of a work.

COUNTRY KIDS 'N CITY SLICKS, INC V SHEEN

Plaintiff, who does business under the name Crayon Kids, is a wholesale doll manufacturer that sells
wooden dolls created by Country Kids 'N Slicks, Inc.'s President, Pam Laughlin (Laughlin). Plaintiff
holds copyrights on the various dolls it produces. Laughlin conceived of the concept of the wooden doll
when she noticed that her five-year-old daughter had difficulty keeping the clothing on paper Barbie dolls.
Based on this concept, Laughlin founded Country Kids, and began producing a line of wooden dolls.
Plaintiff's wooden dolls all employ a similar size and shape to the traditional paper dolls.
In mid-1993, Plaintiff discovered that Vickie Sheen, a former employee of Country Kids, had begun
marketing her own models of wooden dolls. Ms. Sheen's husband, Bill Sheen, Mr. Sheen's sister, LaDawn
Bragg, and Mr. Flake Wells III all assisted her in this effort. Defendants, who marketed their dolls under
the name Carousel Kids, did not obtain a license to use Plaintiff's copyright and clearly had access to the
design of Plaintiff's dolls. While employing the basic concept of Plaintiff's dolls, Defendants claimed that
their dolls had distinctly different features (e.g., hair, eyes, nose, mouth, cheeks, etc.).
After learning of Defendants' dolls, Plaintiff filed suit and requested a preliminary injunction to prevent
Defendants from marketing their Carousel Kids dolls. At a hearing, Plaintiff presented evidence that
Defendants lured away some of Plaintiff's sales representatives, sold their dolls at lower prices, and that
some customers could not differentiate between the two brands of dolls. Defendants, however, dispute the
extent of any such confusion. Plaintiff also suggested that the competition of Defendants' dolls would
force both companies into bankruptcy. The district court denied the motion for a preliminary injunction on
the grounds that Plaintiff could not demonstrate either a likelihood of success on the merits or a threat of
irreparable harm.
HELD:
The Court of Appeals affirmed the district court's holding that the medium, size and shape of the dolls were
not copyrightable features. The court concluded that the district court correctly characterized the wooden

form of the traditional paper doll as an idea rather than a protected expression. However, the court could not
"discern whether the district court utilized the correct legal standard for copyright infringement or properly
determined that Plaintiff was entitled to a presumption of irreparable harm in the event of copyright
infringement" and remanded back on those isses.

PLAYBOY ENTERPRISES VS GEORGE FRENA

Defendant George Frena operated a subscription computer bulletin board service, Techs Warehouse BBS
(BBS). Photographs copyrighted by Plaintiff Playboy Entertainment, Inc.'s (PEI) were uploaded onto
BBS without permission. Subscribers of BBS were allowed to browse and download the photographs in high
quality computerized images which were then stored on the subscribers home computer. One hundred and
seventy of the images that were available on BBS were copies of photographs taken from PEI's copyrighted
materials.
Defendant Frena claimed to never have uploaded any of PEI's photographs onto BBS and that subscribers to
BBS uploaded the photographs. Defendant Frena states that as soon as he was served with a summons and
made aware of this matter, he removed the photographs and has since that time monitored BBS to prevent
additional photographs of PEI from being uploaded.
HELD:
Public distribution of a copyrighted work is a right reserved to the copyright owner, and seizure of that right
constitutes infringement. The Court held that PEI's right to distribute copies to the public was violated by
Defendant Frena. Exclusive rights in copyrighted works[6] grants PEI the exclusive rights to sell, give away,
rent or lend any material embodiment of his work.
In addressing Defendant Frenas argument that he did not make the unauthorized copies but that subscribers
to BBS uploaded the photographs, the Court ruled that it did not matter that Frena was not the originator of
the authorized copies. Frena supplied a product containing unauthorized copies. Therefore, he violated PEIs
exclusive rights.
The Court also held that Defendant Frena had infringed upon the display rights of PEI. The concept of
"display" covers the projection of an image on a screen or other surface by any method and the transmission
of an image by electronic or other means. The display right precludes unauthorized transmission of the
display from one place to another, for example, by a computer system.
In order for copyright infringement to occur, the display must be public. A public display is a display at a
place open to the public or where a substantial number of persons outside of a normal circle of family and its
social acquaintances are gathered. A place is open to the public in this sense even if access is limited to
paying customers.
In the case at bar, Defendant Frenas transmitted the copyrighted material electronically and displayed them
public to its subscriber. BBS subscribers consisted of a substantial number of persons outside of a normal
circle of family and its social acquaintances.