KHO VS CA, GR 115758, MARCH 19, 2002 CASE 1

Facts:
The Elidad C. Kho (petitioner) , doing business under the name and style of KEC Cosmetics
Laboratory, is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream
Container/Case and that she also has patent rights on Chin Chun Su & Device and Chin Chun Su for
medicated cream after purchasing the same from Quintin Cheng, the registered owner in the
Supplemental Register of the Philippine Patent Office. Summerville (respondent) advertised and sold
petitioners cream products under the brand name Chin Chun Su, in similar containers that Kho uses,
thereby misleading the public, and resulting in the decline in the business sales and income; and that
Summerville should be enjoined from allegedly infringing on the copyrights and patents of the
petitioner.
On the other hand, Summerville alleged as their defense that it is the exclusive and
authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi
Factory of Taiwan; that the said Taiwanese manufacturing company authorized Summerville to
register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other
appropriate governmental agencies; that KEC Cosmetics Laboratory obtained the copyrights through
misrepresentation and falsification; and, that the authority of Quintin Cheng, assignee of the patent
registration certificate, to distribute and market Chin Chun Su products in the Philippines had already
been terminated by the said Taiwanese Manufacturing Company.
Issue:
Whether the copyright and patent over the name and container of a beauty cream product
would entitle the registrant, Elidad Kho, to the use and ownership over the same to the exclusion of
others?
Ruling:
No. Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a stamped or marked
container of goods. In relation thereto, a trade name means the name or designation identifying or Commented [1]: Memorize
distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic
works which are original intellectual creations in the literary and artistic domain protected from the
moment of their creation. Patentable inventions, on the other hand, refer to any technical solution of a
problem in any field of human activity which is new, involves an inventive step and is industrially
applicable.
Kho has no right to support her claim for the exclusive use of the subject trade name and its
container. The name and container of a beauty cream product are proper subjects of a trademark
inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use the
same in the sale of the beauty cream product, the user must sufficiently prove that she registered or
used it before anybody else did. Kho’s copyright and patent registration of the name and container
would not guarantee her the right to the exclusive use of the same for the reason that they are not
appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot
be issued for the reason that the petitioner has not proven that she has a clear right over the said
name and container to the exclusion of others, not having proven that she has registered a trademark
thereto or used the same before anyone did.
Pearl & Dean (Phil), Inc. vs. Shoemart, Inc. G.R. No. 148222, August 5, 2003 CASE 2

Facts: 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 & Dean’s 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 & Dean’s
trademark because Pearl & Dean’s 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: Was there copyright infringement?

Ruling: None. Copyright is a statutory right, subject to the terms and conditions specified in the
statute. It can only cover the works falling within the statutory enumeration or description. Petitioner’s
application for a copyright certificate was for a class “O” work under Section 2 (O) of PD 49 (The
Intellectual Property Decree) which was the statute then prevailing. Said section includes "prints,
pictorial illustrations, advertising copies, labels, tags and box wraps". 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 copyrightable; what was copyrighted were the
technical drawings only, and not the light boxes themselves.

In fine, if SMI reprinted P&D’s technical drawings for sale to the public without license from P&D, then
no doubt they would have been guilty of copyright infringement. But this was not the case. SMI’s acts
complained of by P&D were to have units similar or identical to their light box. In such case, there was
no copyright infringement.

Moreover, during the trial, the president of P&D himself admitted that the light box was neither a
literary nor an artistic work but an engineering or marketing invention. Obviously, there appeared to
be some confusion regarding what ought or ought not to be the proper subjects of copyrights, patents
and trademarks. In the leading case of Kho vs. Court of Appeals we ruled that these three legal 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.

Related Issues:
Issue: Was there patent infringement?
Ruling: None. P&D never secured a patent for the light boxes. It therefore acquired no patent rights which
could have protected its invention, if in fact it really was. And because it had no patent, P&D could not legally
prevent anyone from manufacturing or commercially using the contraption. To be able to effectively and legally
preclude others from copying and profiting from the invention, a patent is a primordial requirement. No patent,
no protection.
Issue: Was there trademark infringement?

Ruling: None. The failure of P&D to secure a trademark registration for specific use on the light boxes meant
that there could not have been any trademark infringement since registration was an essential element thereof.
 CASE 3
FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., petitioners, vs. FRANKLIN DRILON
GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and CASEY
FRANCISCO, respondents.

[G.R. No. 108946. January 28, 1999]

FACTS:
Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright dated
January 28, 1971 of Rhoda and Me, a dating game show. Petitioner BJPI submitted to the National
Library an addendum to its certificate of copyright specifying the shows format and style presentation.
In 1991, petitioner Francisco Joaquin, Jr., president of BJPI, protested the airing of the show It’s a
Date through a letter sent to Grabriel M. Zosa, president and general manager of IXL Productions,
Inc., the producer of It’s a Date. Petitioner Joaquin informed respondent Zosa of a copyright to Rhoda
and Me and demanded that IXL discontinue airing It’s a Date. Respondent Zosa apologized to
Joaquin, but continued airing the show. Zosa also sought to register IXLs copyright to the first
episode of It’s a Date for which a certificate of copyright was issued by the National Library on August
14, 1991.
With these developments, petitioners herein filed a complaint, as a result of which an information
for violation of P.D. No. 49 were filed.

ISSUE: Whether or not respondent committed copyright infringement, against petitioners’ dating
game show, “Rhoda and Me”?

RULING: NO
PD. No. 49 (Decree On Intellectual Property), Section 2 - in enumerating what are subject to
copyright, refers to finished works, and not to concepts. The copyright does not extend to an idea,
procedure, process, system, method of operation, concept, principle, or discovery, regardless of the
form in which it is described, explained, illustrated, or embodied in such work. Thus, the new
Intellectual Property Code of the Philippines provides:
SEC. 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.
Furthermore, to begin with, the format of a show is not copyrightable. Section 2 of P.D. No.
49, enumerates the classes of work entitled to copyright protection (this provision is substantially the
same as Section 172 of the Intellectual Property Code of the Philippines -R.A. No. 8293). The format
or mechanics of a television show is not included in the list of protected works in Section 2 of P.D.
No. 49. For this reason, the protection afforded by the law cannot be extended to cover them.
 CASE 4
ABS-CBN BROADCASTING CORP. vs PHILIPPINE MULTI-MEDIA SYSEM INC. (PMSI)
GR No. 175769-70

Facts:
ABS-CBN is licensed to engage in tv and radio broadcasting. It broadcasts tv programs through
wireless means to Metro Manila and by satellite to provincial stations. The programs aired over
Channel 2 and Channel 23 are either produced by or purchased from other producers by ABS-CBN.
It also owns regional stations which pattern their programming in accordance with the demands of the
region thus, tv programs shown in Metro Manila are not necessarily shown in other provinces.
PMSI is the operator of Dream Broadcasting System. It delivers direct-to-home (DTH) television via
satellite to its subscriber. It was granted a legislative franchise and was given a Provisional Authority
by NTC to operate nationwide DTH satellite service. Part of the program it offered are ABS-CBN
Channel 2 and 23.
ABS-CBN demanded PMSI to cease and desist from rebroadcasting their channels, PMSI replied that
the rebroadcasting was in accordance with the obligation under a memorandum (MC No. 4-08-88)
which reguires all cable tv operators to carry the television signals of the authorized tv broadcast
stations.
ABS-CBN filed with the IPO a complaint for Violation of Laws involving Property Rights with
TRO/injunction alleging that PMSI’s unathorized rebroadcasting infringed their broadcasting rights
and copyright. The Bureau of Legal Affairs of IPO rendered a decision ordering PMSI to permanently
cease and desist from rebroadcasting. PMSI filed an appeal with the Director General of IPO and it
rendered a decision in favor of PMSI. CA affirmed the decision of the Director General.
Issues:
1. Did PMSI infringe ABS-CBN’s broadcasting rights and copyright under the Intellectual
Property Code?
2. Does Memorandum Circular exclude DTH satellite television operators?
Ruling:
(1) PMSI does not perform the function of a broadcasting organization.
Broadcasting is the transmission by wireless means for the public reception of sounds or of images or
of representations thereof; such transmission by satellite is also broadcasting where the means for
decrypting are provided to the public by the broadcasting organization or with its consent. (Section
202.7 of the IP Code)
Two instances where there is broadcasting:
1. The transmission by wireless means for the public reception of sounds or of images or of
representations thereof; and
2. The transmission by satellite for the public reception of sounds or of images or of
representations thereof where the means for decrypting are provided to the public by the
broadcasting organization or with its consent.
DTH is a satellite-based so it shall fall under the second category. The elements of such
category are as follows:
1. There is transmission of sounds or images or of representations thereof;
2. The transmission is through satellite;
3. The transmission is for public reception; and
4. The means for decrypting are provided to the public by the broadcasting organization or with its
consent.
Section 202.7 of the IP Code presupposes that the origin of the signals is the broadcaster. PMSI is
not the origin nor does it claim to be the origin of the programs broadcasted by ABS-CBN. PMSI
merely carried the existing signals of ABS-CBN and when subscribers view programs of Channel 2
and 23, they know that the origin was ABS-CBN.
When a broadcaster transmits, such as ABS-CBN, the signals are dispersed in the air and anybody
may receive the signal and is not required to subscribe or to pay. The dispersal of signals in the air is
possible only through wireless means while in wire-based transmissions, such as cable television, the
use of wire in transmitting signals limits the recipients to those who are connected and the service
provider, may choose its subscribers. Hence, PMSI transmission of signal via satellite service cannot
be considered as broadcasting
Rebroadcasting is the simultaneous broadcasting by one broadcasting organization of the broadcast
of another broadcasting organization. (Article 3(g) of the International Convention for the Protection of
Performers, Producers of Phonograms and Broadcasting Organizations)

ABS-CBN creates and transmits its own signals; PMSI merely carries such signals which the viewers
receive in its unaltered form. PMSI does not produce, select, or determine the programs to be shown
in Channel 2 and 23. It merely retransmits the same in accordance with memorandum. Clearly, PMSI
does not perform the functions of a broadcasting organization; thus, it cannot be said that it is
engaged in rebroadcasting Channels 2 and 23.

(2) Memorandum Circular include Direct-to-home satellite television operators.

Director General correctly found that PMSI’s services are similar to a cable television system because
the services it renders fall under the cable retransmission. Cable retransmission can either be
simultaneous or a reproduction, they might be unaltered or altered through replacement of
commercials. In general, the term retransmission seems to be reserved for such transmissions which
are both simultaneous and unaltered.

While, the Rome Convention gives broadcasting organizations the right to authorize or prohibit the
rebroadcasting of its broadcast, however, this protection does not extend to cable
retransmission. The retransmission of ABS-CBNs signals by PMSI which functions essentially as a
cable television does not therefore constitute rebroadcasting in violation of the former’s intellectual
property rights under the IP Code.
 CASE 5
FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC. vs. BENJAMIN TAN,
G.R. No. L-36402, March 16, 1987

Facts: Plaintiff-appellant is the owner of certain musical compositions among which are the songs
entitled: "Dahil SaIyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The
Nearness Of You." It filed a complaint with the lower court for infringement of copyright against
defendant - allowing the playing in defendant-appellee's restaurant of said songs copyrighted in the
name of the former. Defendant-appellee countered that the complaint states no cause of action.
While not denying the playing of said copyrighted compositions in his establishment, appellee
maintains that the mere singing and playing of songs and popular tunes even if they are copyrighted
do not constitute an infringement under the provisions of Section 3 of the Copyright Law.
Issue:
1. Whether or not the playing and signing of musical compositions which have been copyrighted
under the provisions of the Copyright Law (Act 3134) inside the establishment of the defendant-
appellee constitute a public performance for profit within the meaning and contemplation of the
Copyright Law of the Philippines
2. Whether or not appellee can be held liable assuming that there were indeed public performances
for profit

Ruling: No. It has been held that "The playing of music in dine and dance establishment which was
paid for by the public in purchases of food and drink constituted "performance for profit “within a
Copyright Law." Thus, it has been explained that while it is possible in such establishments for the
patrons to purchase their food and drinks and at the same time dance to the music of the orchestra,
the music is furnished and used by the orchestra for the purpose of inducing the public to patronize
the establishment and pay for the entertainment in the purchase of food and drinks. The defendant
conducts his place of business for profit, and it is public; and the music is performed for profit.
Nevertheless, appellee cannot be said to have infringed upon the Copyright Law.

Appellee's allegation that the composers of the contested musical compositions waived their right in
favor of the general public when they allowed their intellectual creations to become property of the
public domain before applying for the corresponding copyrights for the same is correct. The Supreme
Court has ruled that "Paragraph 33 of Patent Office Administrative Order No. 3 (as amended, dated
September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office relating to the
Registration of Copyright Claims' promulgated pursuant to Republic Act165, provides among other
things that an intellectual creation should be copyrighted thirty (30) days after its publication, if made
in Manila, or within the (60) days if made elsewhere, failure of which renders such creation public
property." Indeed, if the general public has made use of the object sought to be copyrighted for thirty
(30) days prior to the copyright application the law deems the object to have been donated to the
public domain and the same can no longer be copyrighted. Under the circumstances, it is clear that
the musical compositions in question had long become public property, and are therefore beyond the
protection of the Copyright Law.
 CASE 6
PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs. FELICIDAD C. ROBLES and
GOODWILL TRADING CO., INC.
G.R. No. 131522, July 19, 1999

FACTS: Pacita Habana et al., are authors and copyright owners of duly issued of the book, College
English For Today (CET). Respondent Felicidad Robles was the author of the book Developing
English Proficiency (DEP). Petitioners found that several pages of the respondent's book are similar,
if not all together a copy of petitioners' book. Habana et al. filed an action for damages and injunction,
alleging respondent’s infringement of copyrights, in violation of P.D. 49. They allege respondent
Felicidad C. Robles being substantially familiar with the contents of petitioners' works, and without
securing their permission, lifted, copied, plagiarized and/or transposed certain portions of their book
CET.

On the other hand, Robles contends that the book DEP is the product of her own intellectual creation,
and was not a copy of any existing valid copyrighted book and that the similarities may be due to the
authors' exercise of the "right to fair use of copyrighted materials, as guides."

The trial court ruled in favor of the respondents, absolving them of any liability. Later, the Court of
Appeals rendered judgment in favor of respondents Robles and Goodwill Trading Co., Inc. In this
appeal, petitioners submit that the appellate court erred in affirming the trial court's decision.

ISSUE: Whether Robles committed infringement in the production of DEP.

HELD: A perusal of the records yields several pages of the book DEP that are similar if not identical
with the text of CET. The court finds that respondent Robles' act of lifting from the book of petitioners
substantial portions of discussions and examples, and her failure to acknowledge the same in her
book is an infringement of petitioners' copyrights.

In the case at bar, the least that respondent Robles could have done was to acknowledge petitioners
Habana et. al. as the source of the portions of DEP. The final product of an author's toil is her book.
To allow another to copy the book without appropriate acknowledgment is injury enough.
G.R. No. 147043. June 21, 2005 CASE 7
NBI MICROSOFT CORPORATION & LOTUS DEVELOPMENT CORP., petitioners, vs. JUDY C.
HWANG, BENITO KEH & YVONNE K. CHUA/BELTRON COMPUTER PHILIPPINES INC.,
JONATHAN K. CHUA, EMILY K. CHUA, BENITO T. SANCHEZ, NANCY I. VELASCO, ALFONSO
CHUA, ALBERTO CHUA, SOPHIA ONG, DEANNA CHUA/TAIWAN MACHINERY DISPLAY &
TRADE CENTER, INC., and THE SECRETARY OF JUSTICE, respondents.
FACTS:In May 1993, Microsoft Corporation and Beltron Computer Philippines, Inc. entered into a
Licensing Agreement. Under Section 2(a) of the Agreement, Microsoft authorized Beltron, for a fee,
to:
1. Reproduce and install no more than one copy of Windows on each Customer System hard disk;
2. Distribute directly or indirectly and license copies of Windows (reproduced as per Section 2 of the
Agreement and/or acquired from an Authorized Replicator or Authorized Distributor.
Their agreement allowed either party to terminate if one fails to comply with their respective
obligations. Microsoft terminated the Agreement in June 1995 by reason of Beltron’s non-payment of
royalties. Later, Microsoft learned that Beltron was illegally copying and selling copies of Windows.
Microsoft then sought the assistance of the National Bureau of Investigation. NBI agents made some
purchase from Beltron where they acquired a computer unit pre-installed with Windows, 12 windows
installer CDs packed as Microsoft products. The agents were not given the end-user license
agreements, user manuals, and certificates of authenticity for the products purchased. They were
given a receipt which has a header of “T.M.T.C. (Phils) Inc. BELTRON COMPUTER”. TMTC stands
for Taiwan Machinery Display and Trade Center.
A search warrant was subsequently issued where 2,831 CDs of Windows installers, among others,
were seized. Based on the items seized from Beltron, Microsoft filed a case of copyright infringement
against Beltron and TMTC as well as their officers (Judy Hwang et al) before the Department of
Justice (DOJ). Beltron, in its counter-affidavit, argued the following:
1. That Microsoft’s issue with Beltron was really just to have leverage in forcing Beltron to pay the
unpaid royalties; and that Microsoft should have filed a collection suit.
2. That the computer unit allegedly purchased by the NBI agents from them cannot be decisively
traced as coming from Beltron because the receipt issued to the agents did not list the computer unit
as one of the items bought.
3. That the 12 installers purchased by the agents which are actually listed in the receipt were not
manufactured by Beltron but rather they were genuine copies purchased by TMTC from an
authorized Microsoft seller in Singapore.
4. That the 2,831 installers seized from them were not a property of Beltron but rather they were left
to them by someone for safekeeping.
The DOJ secretary agreed with Beltron and dismissed the case. The Secretary ruled that the issue of
the authority of Beltron to copy and sell Microsoft products should first be resolved in a civil suit.
Microsoft appealed the decision of the DOJ secretary before the Supreme Court. Meanwhile, Beltron
filed a motion to quash the search warrant before the RTC that issued the same. The RTC partially
granted the quashal. The Court of Appeals reversed the RTC. Hwang et al did not appeal the CA
decision.
ISSUE: Whether the DOJ acted with grave abuse of discretion in not finding probable cause to
charge respondents with copyright infringement and unfair competition.
HELD:
YES. Under section 5 of PD 49 enumerates the rights vested exclusively on the copyright owner. The
gravamen of copyright infringement is not merely the unauthorized manufacturing of intellectual works
but rather the unauthorized performance of any of the acts covered by Section 5. Hence, any person
who performs any of the acts under Section 5 without obtaining the copyright owners prior consent
renders himself civilly and criminally liable for copyright infringement.
The DOJ committed grave abuse of discretion when it refused to pass upon the relevance of the
pieces of evidence because it contended that: (1) the obligations between the parties is civil and not
criminal considering that Microsoft merely sought the issuance of Search Warrant Nos. 95-684 and
95-685 to pressure Beltron to pay its obligation under the Agreement, and (2) the validity of
Microsofts termination of the Agreement must first be resolved by the proper court. Also, the DOJ
ruled that Microsoft failed to present evidence proving that what were obtained from respondents
were counterfeit Microsoft products.
First. Being the copyright and trademark owner of Microsoft software, Microsoft acted well within its
rights in filing the complaint under I.S. No. 96-193 based on the incriminating evidence obtained from
respondents. Hence, it was highly irregular for the DOJ to hold, based on the RTC Order of 19 July
1996, that Microsoft sought the issuance of Search Warrant Nos. 95-684 and 95-685, and by
inference, the filing of the complaint under I.S. No. 96-193, merely to pressure Beltron to pay its
overdue royalties to Microsoft. Significantly, in its Decision in CA-G.R. CV No. 54600 dated 29
November 2001, the Court of Appeals set aside the RTC Order of 19 July 1996.
Second. There is no basis for the DOJ to rule that Microsoft must await a prior resolution from the
proper court of (sic) whether or not the [Agreement] is still binding between the parties. Beltron has
not filed any suit to question Microsofts termination of the Agreement.
Third. The Court finds that the 12 CD-ROMs (installer and non-installer) and the CPU with pre-
installed Microsoft software Sacriz and Samiano bought from respondents and the 2,831 Microsoft
CD-ROMs seized from respondents suffice to support a finding of probable cause to indict
respondents for copyright infringement under Section 5(A) in relation to Section 29 of PD 49 for
unauthorized copying and selling of protected intellectual works. The illegality of the non-installer CD-
ROMs purchased from respondents and of the Microsoft software pre-installed in the CPU is shown
by the absence of the standard features accompanying authentic Microsoft products, namely, the
Microsoft end-user license agreements, user’s manuals, registration cards or certificates of
authenticity.
From the foregoing evidences, it clearly suffices to support a finding of probable cause to indict
respondents for violation of copyright infringement and unfair competition.
Thus, the petition for certiorari of the Resolutions of the Department of Justice dismissing for lack of
merit and insufficiency of evidence petitioner Microsoft Corporations complaint against respondents
for copyright infringement and unfair competition is granted.

Manly Sportswear v. dadodette, GR 165306, Sepy. 20, 2001 CASE 8

Facts:
On the basis of information that respondent Dadodette Enterprises were in possession of sporting
goods or articles, the copyright of which belonged to petitioner Manly, the NBI applied for search
warrant before the trial court which ruled on its issuance. Thereafter, respondent moved to quash the
warrant on the ground that petitioner’s goods are ordinary and not among the works protected under
the IP Code. The trial court annulled the warrant holding that there were certificates of registration
over the same goods issued earlier than that of petitioner negating its claim that the goods were
original works entitled to copyright protection. CA affirmed.
Issue:
Whether or not the certificates of registration issued to petitioner is proof of its ownership.

Ruling: NO.

Besides, no copyright accrues in favor of MANLY despite issuance of the certificates of registration
and deposit pursuant to Section 2, Rule 7 of the Copyrights Safeguards and Regulations which
states:
Sec. 2 Effects of Registration and Deposit of Work. The registration and deposit of the work is purely
for recording the date of registration and deposit of the work and shall not be conclusive as to
copyright ownership or the term of the copyrights or the rights of the copyright owner, including
neighboring rights.

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

Campbell v. Acuff-Rose Music, Inc. CASE 9

Brief Fact Summary. 2 Live Crew (Defendant) argued that its parody of Roy Orbison’s song, “Oh,
Pretty Woman,” was a fair use within the meaning of the Copyright Act of 1976. The appellate court,
however, concluded the parody was presumptively unfair because of its commercial nature.
Facts. 2 Live Crew (Defendant) recorded a rap parody of the hit by Roy Orbison, “Oh, Pretty Woman.”
Acuff-Rose (Plaintiff), the copyright holder of the original song, brought suit against 2 Live Crew
(Defendant) for copyright infringement. The district court granted summary judgment for 2 Live Crew
(Defendant), concluding that its song made fair use of Orbison’s original. The appeals court reversed
and remanded. It concluded that every commercial use is presumptively unfair and the blatantly
commercial purpose of 2 Live Crew’s (Defendant) version prevented it from constituting fair use.
Defendant appealed.

Issue. For fair use purposes, is the commercial purpose of a work the decisive element of the inquiry
into the purpose and character of the work?

Held. (Souter, J.) No. For fair use purposes, the commercial purpose of a work is only one element of
the inquiry into the purpose and character of the work. The other elements to be considered are the
nature of the copyrighted work, the amount and substantiality of the portion used in relation to the
copyrighted work as a whole, and the effect of the use upon the potential market for the copyrighted
work. In this case, it was error for the court of appeals to conclude that the commercial nature of 2
Live Crew’s (Defendant) parody rendered it presumptively unfair. No such evidentiary presumption
exists for either the first factor (the character and purpose of the use) or the fourth factor (market
harm). The court also erred in holding that 2 Live Crew (Defendant) had copied excessively from the
Orbison original, considering the satiric purpose of their version. Reversed and remanded to evaluate
the amount taken from the original, its transformative elements, and potential for market harm.

Universal City Studios v. Sony, 464 US 417 (1984) CASE 10

Facts. Sony Corp. (Sony) (Defendant) marketed Betamax videocassette recorders (VCRs or VTRs),
which allowed home recording of televised programs. Several movie studios (Plaintiff), holders of
copyrights on televised movies and other televised programs, brought an action for contributory
copyright infringement on the theory that Defendant was contributorily liable for infringement by
consumers of VTRs of the studios’ (Plaintiff) copyrighted works on the basis of Sony’s (Defendant)
marketing and distribution of the VTRs. The district court, finding, inter alia, that no Sony (Defendant)
employee had either direct involvement with the allegedly infringing activity or direct contact with
purchasers of Betamax who recorded copyrighted works off-the-air, and that there was no evidence
that any of the copies made by individuals were influenced or encouraged by Defendant’s
advertisements, held that Defendant was not liable for direct or contributory copyright
infringement. The court of appeals reversed. The United States Supreme Court granted certeriori.

Issue. Is one who supplies the way to accomplish an infringing activity and encourages that activity
through advertisement liable for copyright infringement?

Held.(Stevens, J.) No. One who supplies the way to accomplish an infringing activity and
encourages that activity through advertisement is not liable for copyright infringement. The protection
given to copyrights is wholly statutory, and, in a case like this, in which Congress has not plainly
marked the course to be followed by the judiciary, the Court must be circumspect in construing the
scope of rights created by a statute that never contemplated such a calculus of interests based on
technological advances. In proceeding, the Court must balance the encouraging and rewarding of
authors to create new works with the public good. This case does not fall in the category of those in
which it is manifestly just to impose vicarious liability because the “contributory infringer was in a
position to control the use of copyrighted works by others and had authorized the use without
permission from the copyright owner. In this case, the only contact between Defendant and the users
of the VTR’s occurred at the moment of sale. However, there is no precedent for imposing vicarious
liability on the theory that Sony (Defendant) sold the VTR’s with constructive knowledge that its
customers might use the equipment to make unauthorized copies of copyrighted material. The sale
of copying equipment, like the sale of other articles of commerce, does not constitute contributory
infringement if the product is widely used for legitimate, unobjectionable purposes, or actually, is
merely capable of substantial noninfringing uses. In this case, a large portion of the public’s use of
VTRs does not implicate copyright at all, and also time-shifting, the most common use for the
Betama, constitutes a fair use. Reversed.

CASE 11
DR. SEUSS ENTERPRISES, L.P., Plaintiff-Appellee, v. PENGUIN BOOKS USA, INC., a corporation;
 Dove Audio, Inc., a corporation, Defendants-Appellants. No. 96-55619 Decided: March 27, 1997
Facts:
 Defendants, Penguin Books and Dove Audio, Inc., were book publishers who sought to publish
and distribute a book titled The Cat NOT in the Hat! A Parody by Dr. Juice, a rhyming summary of the
O.J. Simpson trial. Plaintiff Dr. Seuss Enterprises, LP owned most of the copyright and trademark
rights for the children’s books written and illustrated by Theodor S. Geisel under the pseudonym “Dr.
Seuss,” including The Cat in the Hat. Defendants were not authorized to use any element of plaintiff’s
original books and did not attempt to obtain permission. Defendants’ book had many similarities to the
original work, including rhyme scheme, thematic and narrative elements, and certain chief character
identifiers, such as the distinctive red and white striped hat. Plaintiff filed suit, and the district court
granted a preliminary injunction. Defendants filed an interlocutory appeal.
Issue:
Whether unauthorized copying of an original work’s artistic style, plot, themes, and certain key
character elements qualified as fair use.
Ruling:
No. The Ninth Circuit concluded that the district court’s finding that plaintiff had shown a
likelihood of success on the merits was not clearly erroneous, in light of fair use analysis of
defendants’ work, and affirmed the preliminary injunction. First, the court found that the use was not
transformative. The work was not a parody, because it did not hold up Dr. Seuss’s style, but merely
mimicked it to attract attention or avoid the difficult work of developing original material. Furthermore,
according to the court there was “no effort to create a transformative work with ‘new expression,
meaning, or message.’” Second, the court found that the creative, imaginative and original nature of
plaintiff’s work weighed against fair use. Third, the court found that defendant had copied substantial
portions, because the character of the cat, used in both works, was the “highly expressive core” of
plaintiff’s work. Other principal thematic and narrative elements were also copied. Finally, because
the use was commercial and non-transformative, harm to the market for the original work could be
more readily inferred. Further, because fair use is an affirmative defense, and defendants failed to
submit evidence on the fourth factor, this disentitled defendants from relief from the preliminary
injunction.

Castle Rock Entertainment vs. Carol Publishing CASE 12

Facts: Plaintiff Castle Rock is the producer and copyright owner of the Seinfeld televisions series.
Defendant Carol Publishing is the publisher of The Seinfeld Aptitude Test (The SAT), a book
containing trivia questions and answers about Seinfeld. Every question and correct answer has its
source from a fictional moment in the show. The name “Seinfeld” appears on the front and back
covers of The SAT, and pictures of the principal characters are on the cover and within the book. The
writer of The SAT created the book by taking notes while watching Seinfeld at the time it was aired,
and as recorded by her or her friends. Castle Rock has been selective in marketing products
associated with the show, rejecting numerous proposals from publishers seeking approval for varying
products related to the show. Castle Rock has licensed one Seinfeld book and one CD-ROM, the CD-
ROM allegedly might include a trivia bank.

The United States District Court for the Southern District of New York granted plaintiff’s motion for
summary judgment, denied defendant’s cross motion for summary judgment, and awarded Castle
Rock $403,000 for copyright infringement. The district court also enjoined the defendants from
publishing The SAT.

Issues: 1. Whether The SAT takes sufficient protected expression from the original such that in the
absence of any defenses the book would infringe the copyright in Seinfeld.
2. Whether The SAT constitutes fair use of the Seinfeld television series.

Ruling: The SAT unlawfully copies form Seinfeld and that its copying does not constitute fair use. The
judgment of the district court is affirmed. The court begins by deciding if there’s copyright infringement
by laying out the two part test used in analyzing copyright infringement. First, a plaintiff must show
that his work was actually copied, and next he must show that the copying amounts to an improper or
unlawful appropriation. The court points out that it’s undisputed the work was copied because the
writer of The SAT admitted she copied from the show. Next as to deciding whether the copying is
unlawful appropriation, the court looks to see if the copying is quantitatively and qualitatively sufficient
to support infringement occurred. As to the quantitative element, the court concludes that The SAT
crossed the de minimis threshold by copying not a few but 643 fragments from the television series.
For the qualitative element the court finds that The SAT copies creative expressions, and the alleged
“facts” that are coped are really fictitious expressions created by the Seinfeld authors.
The defendants claim that even if copying Seinfeld constitutes copyright infringement, The SAT is still
a fair use of the show. The court says to determine whether the use made of a work is fair use, four
factors must be considered: 1) the purpose and character of the use, 2) the nature of the copyrighted
work, 3) the amount and substantiality of the portion used in relation to the copyrighted work as a
whole, and 4) the effect of the use upon the potential market for or value of the copyrighted work.
First, the court finds that The SAT’s use is commercial and this weighs against a finding of fair use.
Also The SAT’s transformative purpose is too slight and non-existent. Next, the fictional nature of the
copyrighted work remains significant, where the secondary use is at best minimally transformative
thus the second factors favors the plaintiff. Thirdly, in deciding about the amount and substantiality of
the portion of the copyrighted work used, the question must focus on whether the extent of the
copying is consistent with or more than necessary to further the purpose and character of the use.
The court finds that The SAT does not serve a critical or otherwise transformative purpose. Finally, as
to the effect of the use upon the potential market, Seinfeld’s audience grew after the publication of
The SAT, and Castle Rock has evidenced no interest in publishing Seinfeld trivia quiz books and only
minimal interest in publishing Seinfeld related books, thus the fourth factor also falls to the plaintiff.
Monster Communications, Inc. v. Turner Broad. System., Inc., CASE 13
935 F. Supp. 490 (S.D.N.Y. 1996)
FACTS:
Plaintiff Monster Communications, Inc. owned the film rights for the movie “When We Were
Kings” (Kings,) that contained historic footage documenting the 1974 title boxing match, often called
the “Rumble in the Jungle,” between Mohammed Ali and George Foreman.
Defendant Turner Broadcasting System, Inc. made the documentary “Ali—The Whole Story”
(Story), which contained “a number of film clips, aggregating approximately between forty-one
seconds and two minutes, that appear in Kings and allegedly are owned by Monster.”
Plaintiff sued Turner for infringing its copyright in the historic film footage, seeking to enjoin the
company from exhibiting the documentary.

ISSUE:
Whether defendant would be likely to establish that its use of plaintiff’s historic film footage in a
documentary constituted fair use?

RULING: YES.
The court denied plaintiff’s motion for injunctive relief because it concluded that defendant was
likely to prevail on its argument that use of the historic footage in its documentary was a fair use.
In reaching that conclusion, the court found that defendant’s work, while commercial in nature,
“undeniably constituted a combination of comment, criticism, scholarship and research.” The court
also determined that the amount used weighed in favor of finding fair use because the footage used
was not the focus of defendant’s documentary.
Additionally, the court found that defendant’s use of the footage was unlikely to harm the
market for plaintiff’s work because the use was “too few, too short, and too small in relation to the
whole. If the broadcast of [Story] impacts [Kings’] reception, it almost surely will be as a result of their
common subject, not the minute or so of common footage.”
Finally, the historic nature of the allegedly infringed films clips also supported a finding of fair
use

Kelly vs Arriba soft CASE 14

Facts: Arriba Soft Corporation (defendant), operated a search engine for images. The Arriba search
returned results as thumbnail versions of relevant images from websites across the Internet. If a user
clicked on a thumbnail, a webpage would open showing the full-size photograph from the website,
absent the surrounding website content. The result page showing the full-size image would also show
the link to the website where the image was found and a notice that users should check for use
restrictions on the original website before copying. Arriba’s search engine indexed 35 images
published by Kelly (plaintiff) on his websites. Kelly objected to Arriba’s thumbnail display of his
images, and Arriba removed the images from its index. Kelly then sued Arribasoft, alleging copyright
infringement and violation of 17 U.S.C. § 1202(b) for removal of the images’ copyright-management
information (CMI). Arribasoft moved for summary judgment. The District Court found that Kelly had
established a prima facie case of copyright infringement based on Arriba’s unauthorized reproduction
and display of Kelly’s works, but that this reproduction and display constituted“fair use” under Section
107 of the Copyright Act. Kelly appealed that decision, and the Ninth Circuit Court of Appeal affirmed
the decision.
Issue: Was there a copyright infringement?
Ruling: None. The creation and use of the thumbnails in the search engine constitutes “fair use”.
To bring a lawsuit for copyright infringement, individuals must first show that they hold a copyright on
works which were copied by another party. The Photographer met this requirement, and so the court
had to determine if the "fair use" exception found in the federal Copyright Act permitted the Website's
copying of the Photographer's works. The Copyright Act sets forth four factors to evaluate in
determining whether a copying constitutes "fair use:"
1. the purpose and character of the use, including whether the use is for commercial purposes or
is for nonprofit educational purposes;
2. the nature of the copyrighted work
3. the amount and substantiality of the portion used in relation to the copyrighted work as a
whole;
4. the effect of the use upon the potential market for, or value of, the copyrighted work.
Applying the first factor, the court found that the use of the images by the Website had very limited
commercial purpose, since the Website was not trying to profit from the use of the images. The court
also found that the creation of thumbnail shots was transformative, because it was using the smaller
images for purposes of displaying search results. This reduction made it unlikely that anyone would
use the thumbnail images for any other purpose, since enlargement of the thumbnail images would
cause the image to become distorted. Therefore, anyone who was interested in the full-size image
would still need to download the original. Thus, the court found that the first factor favored the
Website.
The court found that the second factor, which considers the nature of the work, favored the
Photographer, since photographs are the type of creative works that the Copyright Act is designed to
protect. Looking the third factor (amount of copyrighted work used), the court found that the Website's
copying of the work did not favor either party because, even though the Website did copy the entire
image, it used the image in a manner which still required the user to seek out the original image.
Finally, the transforming of the images into thumbnail shots did not harm the market for the
Photographer's works and so favored the Website. The court found that two of the four factors
favored the Website, one favored the Photographers, and one factor was neutral. Therefore, the court
ruled that the Website's creation of thumbnail shots constituted a fair use
Kienitz v. Sconnie Nation, LLC, CASE15
766 F.3d 756 (7th Cir. 2014)
Cert. denied 135 S. Ct. 1555 (2015)

Facts: Plaintiff photographer Michael Kienitz owned the copyright to a 2011 photo
of Madison, Wisconsin Mayor Paul Soglin. Defendant Sconnie Nation, LLC reproduced aspects of
plaintiff’s photo on a small batch of t-shirts and tank tops and sold them in connection with a Madison,
Wisconsin block party event. The design that appeared on the t-shirts and tank tops included a
“posterized” version of plaintiff’s photograph with the background removed and the mayor’s face
turned lime green. Plaintiff filed suit, claiming defendants’ unauthorized use of the photograph
violated his copyright.

Issue: Whether defendants’ unauthorized reproduction of aspects of plaintiff’s photograph on a small

batch of t-shirts and tank tops was fair use.

Ruling: The court found that defendants’ use was fair use. In reaching its conclusion, the court
emphasized its findings that defendants’ use did not reduce the demand for plaintiff’s photograph and
served as a permissible compliment, rather than a prohibited substitute, to the photograph. The court
also found that the extent of defendants’ copying in relation to the whole of the copyrighted work was
minimal, amounting to “a hint of [the mayor’s] smile” and “the outline of his face.”

Patrick CARIOU v. Richard PRINCE CASE 16

United States Court of Appeals, Second Circuit.
FACTS: Plaintiff Patrick Cariou is a professional photographer who, over the course of six years
in the mid-1990s, lived and worked among Rastafarians in Jamaica. The relationships that
Cariou developed with them and allowed him to take a series of portraits and landscape
photographs that Cariou published in 2000 in a book titled Yes Rasta.
Meanwhile, defendant Richard Prince is a well-known appropriation artist. The Tate Gallery has
defined appropriation art as "the more or less direct taking over into a work of art a real
object or even an existing work of art." Defendant Prince used the photos of Plaintiff Cariou from his
Yes Rasta book. Plaintiff altered and incorporated several of plaintiff’s photograph into series of
paintings called Canal Zone that was exhibited at a gallery and in the gallery’s exhibition catalogue.
On December 30, 2008, he sued Prince, the Gagosian Gallery, and Lawrence Gagosian,
raising claims of copyright infringement. The defendants asserted a fair use defense, arguing
that Prince's artworks are transformative of Cariou's photographs and, accordingly, do not
violate Cariou's copyrights. Ruling on the parties' subsequently filed cross motions for summary
judgment, the district court (Batts, J.) "impose[d] a requirement that the new work in some way
comment on, relate to the historical context of, or critically refer back to the original works" in order
to be qualify as fair use, and stated that "Prince's Paintings are transformative only to the extent that
they comment on the Photos." The court concluded that "Prince did not intend to comment on
Cariou, on Cariou's Photos, or on aspects of popular culture closely associated with Cariou or
the Photos when he appropriated the Photos," and for that reason rejected the defendants' fair use
defense and granted summary judgment to Cariou. The district court also granted sweeping
injunctive relief, ordering the defendants to "deliver up for impounding, destruction, or other
disposition, as [Cariou] determines, all infringing copies of the Photographs, including the
Paintings and unsold copies of the Canal Zone exhibition book, in their possession.
ISSUE: Whether defendant’s appropriation artwork, which incorporated plaintiff’s photographs, must
comment on, relate to the historical context of, or critically refer back to the plaintiff’s original work to
qualify for a fair use defense.
HELD: The doctrine was codified in the Copyright Act of 1976, which lists four non-exclusive
factors that must be considered in determining fair use. Under the statute, The fair use of a
copyrighted work for purposes such as criticism, comment, news reporting, teaching (including
multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.
In determining whether the use made of a work in any particular case is a fair use the factors to be
considered shall include —
(1) the purpose and character of the use, including whether such use is of a commercial
nature or is for non-profit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole;
and
(4) the effect of the use upon the potential market for or value of the copyrighted work.

The appellate court held that the law imposes no requirement that a work comment on the original or
its author in order to be considered transformative. It concluded that the 25 of the 30 works at issue
constituted fair use. The court also found the plaintiff’s works transformative because the defendant’s
composition, presentation, scale, colour palette, and media are fundamentally different and new
compared to the photographs, as is the expressive nature of his work. The court also found no
evidence that defendant’s work usurped either the primary or derivative market for plaintiff’s
photographs. As to the other five works, the court remanded to the district for further consideration
under the proper standard.

CASE 17

BMG Music v. Gonzalez, 430 F.3d 888 (7th Cir. 2005) Year 2005 Court United States Court of
Appeals for the Seventh Circuit Key
Facts. Plaintiffs, recording companies including BMG Music, alleged that defendant Gonzalez
infringed their copyrights in several audio recordings when she used a “file-sharing network” to
download and retain unauthorized copies on her home computer. Defendant asserted a fair use
defense, claiming she intended to sample the works on a “try-before-you-buy basis.” Defendant
appealed the district court’s ruling in plaintiffs’ favor.

Issue. Whether defendant’s unauthorized downloading and retention of plaintiffs’ copyright-protected

works to purportedly sample the works before buying was fair use.

Holding. The court held that defendant’s unauthorized downloading and retention of copyright
protected works was not fair use. In reaching its conclusion, the court first determined that defendant
was not engaged in a nonprofit use due to her downloading and retention of whole copyrighted songs
that “often are sold per song as well as per album.” The court then focused on the negative effect of
the use on the potential market, finding that “[m]usic downloaded for free from the Internet is a close
substitute for purchased music.” The court discounted defendant’s assertion that she was trying
music before buying by pointing out that the market for methods of introducing potential consumers to
music, for example radio, was negatively impacted by competition from peer-to-peer networks.
Finally, the court noted that there existed myriad authorized means for customers to listen to music
before purchasing, and concluded that defendant’s downloading was not a fair use.

CASE 18
Circuit; Internet/Digitization; Music Outcome Fair use not found Source: U.S. Copyright Office Fair
Use Index.
Leibovitz v. Paramount Pictures Corp.,
137 F.3d 109 (2d Cir. 1998)

Facts:
In 1991, Annie Leibovitz, a professional photographer, took a photograph of actress Demi Moore
seven months pregnant, which was published on the cover of Vanity Fair Magazine. The photo
received significant attention and notoriety. In 1993, Paramount Pictures decided to take a similar
photograph of a pregnant model, but superimposed the face of Leslie Nielson onto the model as part
of an advertising campaign for the film Naked Gun 33 1/3: The Final Insult. The advertisement was
shot using a similar pose and under similar lighting. The composite photograph depicting Nielsen as
the pregnant Moore proclaimed, “DUE THIS MARCH.” The advertisement ran nationally and Leibovitz
sued for copyright infringement.

Procedure:
The Southern District of New York found the use to be fair, and dismissed the claim for copyright
infringement, granting summary judgment for the defendant. Plaintiff appeals the decision before the
United States Court of Appeals, Second circuit.

Issue:
Whether the fair use defense to copyright infringement applies in the context of an advertisement
claimed to be a parody of a copyrighted photograph.

Holding:
Yes. Decision of district court is affirmed.

Analysis:
Examining the four fair use factors, under section 107, the court found that although Paramount's
photographer drew heavily from Leibovitz' composition, in light of Paramount's parodic purpose and
absence of market harm the use of the photograph was a fair use. The court acknowledges that the
statute does not specifically list “parodies” among the categories of potentially “fair” uses, but courts
have long afforded such works some measure of protection under this doctrine. The factors are (1)
the purpose and character of the use, (2) the nature of the copyrighted work, (3) the amount and
substantiality of the work used, and (4) the effect of the use on the market for the original.
The court weighed the four factors together. As to the first factor, the court found that defendant’s ad
adds something new and qualifies as a “transformative” work, and that it “comments” on the original
based on the smirking face of Nielsen contrasting so strikingly with the serious expression on the face
of Moore. “The ad may reasonably be perceived as commenting on the seriousness, even the
pretentiousness, of the original.” The contrast achieves the effect of ridicule and serves as a
sufficient “comment” to tip the first factor in defendant’s favor. As to the second factor there is
significant creative expression in plaintiff’s photograph (the pose, lighting, etc.), so the court found this
factor in favor of Leibovitz. As to the third factor, the amount and substantiality of the portion used, the
court found Leibovitz is entitled to no protection for the appearance in her photograph of the body of a
nude, pregnant female. Only the photographer's particular expression of such a body is entitled to
protection. And as to the fourth factor, the court found that the Paramount photograph did not
interfere with any potential market for her photograph or for derivative works based upon it. The court
looks to the aggregate assessment for an ultimate decision, and found the balance markedly favors
the defendant. Therefore fair use as a parody in light of the four factors under §107, is a valid defense
to copyright infringement.