Intellectual Property Law – Case Doctrines
Kho v. CA:
Kho has no right to support her claim for the exclusive use of the subject trade name and its
container. 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. The petitioner’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.
The name and container of a beauty cream product are proper subjects of a trademark
inasmuch as the same falls squarely within its definition.
Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall include a stamped or
marked container of goods. In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual creations in the literary and artistic
domain protected from the moment of their creation. Patentable inventions, on the other
hand, refer to any technical solution of a problem in any field of human activity which is new,
involves an inventive step, and is industrially applicable.
Unilever v. CA
The intellectual creator's exercise and enjoyment of copyright for his work and the protection
given by law to him is not contingent or dependent on any formality or registration. P&GP is
entitled to the injunctive relief prayed for in its Complaint.
Section 2 of PD 49 stipulates that the copyright for a work or intellectual creation subsists
from the moment of its creation. Accordingly, the creator acquires copyright for his work right
upon its creation.
Morrissey v. P&G
A rule incidental to the operation of a noncopyrightable contest cannot itself be copyrighted if
the information it conveys is so simple that there are only a number of ways in which it can be
expressed.
Brandir International v. Cascade Pacific Lumber
Copyrightability ultimately depends on the extent to which the work reflects artistic expression
not restricted by functional considerations
Pearl & Dean v. Shoemart
Under Sec 2 (O) of PD 49, prints, pictorial illustrations, advertising copies, labels, tags, and box
wraps can be protected by copyright.
Although P&D’s copyright certificate was entitled “Advertising Display Units” (which
depicted the box-type electrical devices), its claim of copyright infringement cannot be
sustained. Copyright, in the strict sense of the term, is purely a statutory right. Being a mere
statutory grant, the rights are limited to what the statute confers. It may be obtained and
enjoyed only with respect to the subjects and by the persons, and on terms and conditions
specified in the statute. Accordingly, it can cover only the works falling within the statutory
enumeration or description.
P & D secured its copyright under the classification class “O” work. This being so, its copyright
protection extended only to the technical drawings and not to the light box itself because
the latter was not at all in the category of “prints, pictorial illustrations, advertising copies,
labels, tags and box wraps.” Stated otherwise, even as we find that P & D indeed owned a
valid copyright, the same could have referred only to the technical drawings within the
category of “pictorial illustrations.” It could not have possibly stretched out to include the
underlying light box.
Joaquin v. Drilon
The format of a show is not copyrightable. Section 2 of P.D. No. 49 enumerate the classes of
work entitled to copyright protection. The format or mechanics of a television show is not
included in the list of protected works in §2 of P.D. No. 49. For this reason, the protection
afforded by the law cannot be extended to cover them.
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent
right granted by the statute, and not simply a pre-existing right regulated by the statute. Being
a statutory grant, the rights are only such as the statute confers, and may be obtained and
enjoyed only with respect to the subjects and by the persons, and on terms and conditions
specified in the statute.
P.D. No. 49, §2, in enumerating what are subject to copyright, refers to FINISHED WORKS and
not to concepts. The copyright does not extend to an idea, procedure, process, system,
method of operation, concept, principle, or discovery, regardless of the form in which it is
described, explained, illustrated, or embodied in such work. Mere description by words of the
general format of the two dating game shows is insufficient; the presentation of the master
videotape in evidence was indispensable to the determination of the existence of probable
cause.
Sambar v. Levi Strauss
The mere fact that Sambar had a copyright over the design and allowed the use of it by CSVGE
makes him liable.
To be entitled to copyright, the thing being copyrighted must be original, created by the author
through his own skill, labor, and judgment, without directly copying or evasively imitating the
work of another.
Ching v. Salinas
Utility models are not copyrightable but may be subject to patent. The models (designs for
spare parts in a car) are not literary or artistic works. They are not intellectual creations in the
literary and artistic domain, or works of applied art. They are certainly not ornamental designs
or one having decorative quality or value.
The focus of copyright is the usefulness of the artistic design, and not its marketability. The
central inquiry is whether the article is a work of art. Works for applied art include all original
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. While works of applied art, original intellectual, literary, and artistic works
are copyrightable, useful articles and works of industrial design are not. A useful article may
be copyrightable if and only if 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.
There is no copyright protection for works of applied art or industrial design which have
aesthetic or artistic features that cannot be identified separately from the utilitarian aspects
of the article.
In this case, Ching’s models are not works of applied art nor artistic works. They are utility
models, useful articles, albeit with no artistic design or value. A utility model is a technical
solution to a problem in any field of human activity which is new and industrially applicable. It
may be, or may relate to, a product, a process, or an improvement of either. It is essentially an
invention in the mechanical field.
Being plain automotive spare parts that must conform to the original structural design of the
components they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are
not ornamental. They lack the decorative quality or value that must characterize authentic
works of applied art. They are not even artistic creations with incidental utilitarian functions
or works incorporated in a useful article.
Copyright and patent rights are completely distinct and separate from one another, and the
protection afforded by one cannot be used interchangeable to cover items or works that
exclusively pertain to the other. The dichotomy of protection for the aesthetic is not beauty
and utility but art for the copyright and the invention of original and ornamental design for
design patents. If the sole intrinsic function of an article is its utility, the fact that the work is
unique and attractively shaped will not qualify it as a work of art.
ABS-CBN v. Gozon
mere membership in GMA7's Board of Directors does not mean that they have knowledge,
approval, or participation in the criminal act of copyright infringement., as there is a need for
their direct/active participation in such act. Also, there was lack of proof that they
actively participated or exercised moral ascendancy over Manalastas and Dela Cruz-
Pena. Contrary to GMA’s contention, the Supreme Court deemed GMA's mere act of
rebroadcast of ABS-CBN’s news footage (arrival and homecoming of OFW Angelo dela Cruz at
NAIA from Iraq last 22 July 2004) for 2 mins and 40 secs. without the latter's authority creates
probable cause to find GMA's news personnel Manalastas and Dela Peña-Reyes criminally
liable for violating provisions of Intellectual Property Code ( Section 216217 of RA 8293, as
amended ) that imposes strict liability for copyright infringement, since they have not been
diligent in their functions to prevent that footage from being aired on television. They knew
that there would be consequences in carrying ABS-CBN’s footage in their broadcast – which is
why they allegedly cut the feed from Reuters upon seeing ABS-CBN’s logo and reporter.
Philippine laws on copyright infringement do not require criminal intent.
Fair Use Doctrine Sec 185 RA8293 - privilege to use the copyrighted material in a reasonable
manner without the copyright owner’s consent or by copying the material’s theme or idea
rather than its expression
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 copyright work
as a whole; and
The effect of the use upon the potential market for or value of the copyrighted work
Baker v. Selden
Blank account- books are not the subject of copyright; and that the mere copyright of Selden's
book did not confer upon him the exclusive right to make and use account-books, ruled and
arranged as designated by him and described and illustrated in said book. He may copyright
his book, if he pleases; but that only secures to him the exclusive right of printing and
publishing his book.
By publishing the book, without getting a patent for the art, the latter is given to the public
The copyright of a book on bookkeeping cannot secure the exclusive right to make, sell, and
use account-books prepared upon the plan set forth in such book. The system was not
patented, and is open and free to the use of the public. And, of course, in using the art, the
ruled lines and headings of accounts must necessarily be used as incident to it. The description
of the art in a book, though entitled to the benefit of copyright, lays no foundation for an
exclusive claim to the art itself.
The object of the one (publication of book) is explanation; the object of the other (art/system)
is use. The former may be secured by copyright. The latter can only be secured, if it can be
secured at all, by letters-patent.
Feist Publishing v. Rural Telephone
The facts involved from Rural’s white pages were not proper subject matter of copyright
registration. Feist’s use of them does not constitute infringement. Rural concedes that “No
author may copyright his ideas or the facts he narrates.” Compilation of facts may possess the
requisite originality if the author chooses which facts to include, order of placing them,
manner of arrangement, and the like. Copyright protection only extends to these components
original to the author and not to the facts themselves. A compilation though copyrightable
receives a limited protection and does not extend to the facts
Community v. Reid
SUMMARY:
The Community for Creative Non-Violence (CCNV) conceived of a crèche-style structure
depicting a homeless family huddled on the street. CCNV hired Reid to create the
sculpture, and the parties engaged in preliminary discussions concerning the sculpture’s
basic design and the material from which it would be made. While Reid was creating the
sculpture, he employed assistants, who were paid by CCNV. A dispute then arose as to
whether the sculpture should be taken on a touring exhibit. The parties disagreed as to who
retained the final say over the disposition of the sculpture. CCNV contended that the
sculpture was a work for hire, and Reid claimed the contrary. The court observed since
sculpture does not fit within any of the 9 categories of “specially ordered or
commissioned works” enumerated in the law and there was no written agreement
between the parties as to Reid’s status, “[t]he dispositive inquiry in this case [ ] is whether
[the sculpture] is ‘a work prepared by an employee within the scope of his or her
employment.’ After reviewing the factors tending to establish an employer–employee
relationship, the court found that Reid was not an employee of CCNV. The sculpture was
therefore not a work for hire made for CCNV, though the court observed that CCNV might
qualify as a co-author.
DOCTRINE:
In deciding whether a particular work was made for hire, the reviewing court should first
determine whether the creator of the work was an employee of the hiring party under
common-law principles of agency. Once this determination has been made, the reviewing
court should then analyze the work’s authorship under the appropriate paragraph of §
101.
FACTS:
 CCNV decided to participate in the annual Christmas time Pageant of Peace in
Washington, D.C., by sponsoring a display to dramatize the plight of the homeless.
Snyder (a CCNV trustee) and fellow CCNV members conceived the idea for the nature
of the display: a sculpture of a modern nativity scene. They also settled upon a title
for the work—‘Third World America’—and a legend for the pedestal: ‘and still there
is no room at the inn.’
 Snyder was referred to James Earl Reid, a sculptor. Both parties agreed that the
project would cost no more than $15,000, not including Reid's services, which he
offered to donate. The parties did not sign a written agreement. Neither party
mentioned copyright. At Snyder's request, Reid sent CCNV a sketch of a proposed
sculpture. Reid testified that Snyder asked for the sketch to use in raising funds for
the sculpture. Snyder testified that it was also for his approval.
 Reid worked exclusively on the statue, assisted at various times by a dozen different
people who were paid with funds provided in installments by CCNV. On a number of
occasions, CCNV members visited Reid to check on his progress and to coordinate
CCNV's construction of the base. Days after the agreed upon date, Reid delivered the
completed statue to Washington. The statue remained on display for a month.
 In late January 1986, CCNV members returned it to Reid's studio for minor repairs.
Several weeks later, Snyder began making plans to take the statue on a tour of
several cities to raise money for the homeless.
 Reid objected, contending that the material was not strong enough to withstand the
ambitious itinerary. He urged CCNV to cast the statue in bronze or to create a master
mold. Snyder declined to spend more of CCNV's money on the project.
 In March 1986, Snyder asked Reid to return the sculpture. Reid refused. He then filed
a certificate of copyright registration for the sculpture in his name and announced
plans to take the sculpture on a more modest tour than the one CCNV had proposed.
 Snyder, acting in his capacity as CCNV's trustee, immediately filed a competing
certificate of copyright registration. Snyder and CCNV then commenced this action
against Reid and his photographer for determination of copyright ownership. District
Court declared that it was a “work made for hire” under § 101 of the Copyright Act
and that Snyder, as trustee for CCNV, was the exclusive owner of the copyright in the
sculpture. CA reversed.
ISSUE: Whether the work falls under “work-for-hire” such that CCNV can be deemed the
author of the work for copyright purposes.
HELD:
 NO. The sculpture was not a work made for hire. CCNV was not the author of the
sculpture. Therefore, CCNV is not entitled to the copyright. In cases of works made
for hire, “the employer or other person for whom the work was prepared is
considered the author” and owns the copyright, unless there is a written
agreement to the contrary.
 Classifying a work as “made for hire” determines not only the initial ownership of its
copyright, but also the copyright's duration, and the owners' renewal rights,
termination rights, and right to import certain goods bearing the copyright.
 Under the law, a work is “for hire” under any of the ff: (1) work prepared by an
employee within the scope of employment; or (2) a work specially ordered or
commissioned.
 To determine whether a work is for hire under the Act, a court first should ascertain,
using principles of general common law of agency, whether the work was prepared
 by an employee or an independent contractor. After making this determination, the
court can apply the appropriate subsection.
 The hiring party's right to control the product simply is not determinative. In
determining whether a hired party is an employee under the general common law
of agency, we consider the hiring party's right to control the manner and means by
which the product is accomplished. Factors relevant to this inquiry are:
o (1) the skill required;
o (2) source of the instrumentalities and tools;
o (3) the location of the work;
o (4) the duration of the relationship between parties;
o (5) whether the hiring party has the right to assign additional projects to
the hired party;
o (6) the extent of the hired party’s discretion over when and how long to
work;
o (7) the method of payment;
o (8) the hired party’s role in hiring and paying assistants;
o (9) whether the work is part of the regular business of the hiring party;
o (10) whether the hiring party is in business;
o (11) the provision of employee benefits; and
o (12) the tax treatment of the hired party.
COPYRIGHT OR ECONOMIC RIGHTS
Sec. 180 to 183, 200 & 201
TRANSFER OR ASSIGNMENT OF COPYRIGHT (CHECK CODAL!)
RIGHTS TO PROCEEDS IN SUBSEQUENT TRANSFERS
Sec. 200. Sale or Lease of Work. - In every sale or lease of an original work of painting or
sculpture or of the original manuscript of a writer or composer, subsequent to the first
disposition thereof by the author, the author or his heirs shall have an inalienable right to
participate in the gross proceeds of the sale or lease to the extent of five percent (5%). This
right shall exist during the lifetime of the author and for fifty (50) years after his death. (Sec.
31, P. D. No. 49)
Sec. 201. Works Not Covered. - The provisions of this Chapter shall not apply to prints, etchings,
engravings, works of applied art, or works of similar kind wherein the author primarily derives
gain from the proceeds of reproductions.(Sec. 33, P. D. No. 49)
First Sale Doctrine –

 Since these factors were absent, the Court held that Reid was NOT an employee of
CCNV but an independent contractor. True, CCNV members directed enough of
Reid's work to ensure that he produced a sculpture that met their specifications. But
the extent of control the hiring party exercises over the details of the product is not
dispositive.

 All the other circumstances weigh heavily against finding an employment

relationship. Reid is a sculptor, a skilled occupation. Reid supplied his own tools. He
worked in his own studio in Baltimore, making daily supervision of his activities from
Washington practicably impossible. Reid was retained for less than 2 months, a
relatively short period of time. During and after this time, CCNV had no right to assign
additional projects to Reid. Apart from the deadline for completing the sculpture,
Reid had absolute freedom to decide when and how long to work. CCNV paid Reid
$15,000, a sum dependent on completion of a specific job, a method by which
independent contractors are often compensated.
 Also, under the law, “Sculpture” does not fit within any of the categories of “specially
ordered or commissioned” works.

 CCNV nevertheless may be a joint author of the sculpture if, on remand, the District
Court determines that CCNV and Reid prepared the work “with the intention that
their contributions be merged into inseparable or interdependent parts of a
unitary whole.” In that case, CCNV and Reid would be co-owners of the copyright in
the work.

Economic Rights of Copyright (CHECK CODAL)

Sec. 177. Transfer of Copyright Ownership
Bobbs-Merill vs. Strauss, 210 U.S. 339 – First sale doctrine
DOCTRINE:
• Copyright property under the federal law is wholly statutory, and
depends upon the rights created under acts of Congress. The sole
right to vend granted by Sec. 4958, Rev. Stat., does not secure to
the owner of the copyright to qualify future sales by his vendee or
to limit or restrict such future sales at a specified price, and a
notice in the book that a sale at a different price will be treated as
an infringement is ineffectual as against one not bound by contract
or license agreement
FACTS:
 Bobbs-Merrill Company (BMC) is the owner of the copyright upon the novel, The
Castaway by Hallie Erminie Rives. Printed in the book is a notice that: “The price of
this book at retail is one dollar net. No dealer is licensed to sell it a less price, and
a sale at a less price will be treated as an infringement of the copyright.”
 R.H. Macy & Company (Macy’s) then purchase copies of the book for the purpose of
selling them at retail. 90% of such copies were purchased by them at wholesale at a
price below the retail price by about 40%, and 10% of the books purchased by them
were purchased at retail, and the full price therefor.
 Macy’s, at the time of their purchase, knew of the copyright and notice. However, at
the time of the sale, the wholesale dealers were under no agreement or obligation
to enforce the observance of the terms of the notice by retail dealers, or to restrict
their sales to retail dealers who would agree to observe the terms stated in the
notice. They sold copies of the book at retail at the uniform price of 89 cents a copy,
without the consent of BMC.
 BMC contends that a number of cases decided by SC upheld this restriction, with
reference to sales of patented articles (sabi lang nila since pwede un sa patents, why
not apply it sa copyright). Circuit Court dismissed their case.
ISSUES:
Whether the sole right to vend secure to the owner of the copyright the right, after a sale of
the book to a purchaser, to restrict future sales of the book at retail, to the right to sell it at a
certain price per copy, because of a notice in the book that a sale at a different price will be
treated as an infringement
HELD:
 NO. In the case of Park & Sons Co. v. Hartman, Judge Lurton held that “there are such
wide differences between the right of multiplying and vending copies of a production
protected by the copyright statute and the rights secured to an inventor under the
patent statutes that the cases which relate to the one subject are not altogether
controlling as to the other.” With that, the Court explained the right to “vend” in the
light of the Copyright Act.
 Sections 4952, 4965, and 4970 of the Revised Statutes of US states that the authors
of books, their executors, administrators, or assigns, shall have the sole right and
liberty of printing, reprinting, publishing and vending such book for a term of years,
upon complying with the statutory conditions set forth in the act as essential to the
acquiring of a valid copyright. Each and all of these statutory rights should be given
such protection as the act of Congress requires, in order to secure the rights
conferred upon authors and others entitled to the benefit of the act.
 BMC now contends that the circuit court, in dismissing their complaint, erred in
failing to give effect to the provision of Section 4952, protecting the owners of the
copyright in the sole right of vending the copyrighted book or other article, and the
argument is that the statute vested the whole field of the right of exclusive sale in
the copyright owner; that he can part with it to another to the extent that he sees
fit, and may withhold to himself, by proper reservations, so much of the right as he
pleases.
 So, what does the statute mean in granting “the sole right of vending the same”? The
copyright statutes, while protecting the owner of the copyright in his right to multiply
and sell his production, do not create the right to impose, by notice a limitation at
which the book shall be sold at retail by future purchasers, with whom there is no
privity of contract.
 The statute also secures, to make this right of multiplication effectual the sole right
to vend copies of the book, the production of the author’s thought and conception.
BMC did sell copies of the book in quantities and at a price satisfactory to it, with this
it has exercised the right to vend.
 But, in this case, it also wants to include the right to qualify the title of a future
purchaser by the reservation of the right to have the remedies of the statute against
an infringer because of the printed notice of its purpose so to do unless the purchaser
sells at a price fixed in the notice. To add this right which is not found in the statute
will go beyond the legislative intent.
*In case sir asks, the ruling in this case established what came to be known as the “first sale
doctrine”, which was later codified as Section 109(a) of the Copyright Act of 1976. — wiki
SECTION 184. Limitations on Copyright. — 184.1. Notwithstanding the provisions of Chapter
V, the following acts shall NOT constitute infringement of copyright: (Check Codal)
Campbell v. Acuff-Rose Music, Inc. (1994)
SUMMARY:
Orbison & Dees assigned their rights from their rock ballad “Oh Pretty Woman” to Acuff-Rose
Music, which registered the song for copyright protection. The petitioners, the 2 Live Crew
wrote “Pretty Woman”, a parody of the song. They were giving credit to Acuff, Dees, and
Orbison, and even offered to pay for their use. However, their agent refused. Despite this,
they released their albums that included Pretty Woman in it while identifying the
respondents as authors. Acuff sued 2 Live Crew and its record company for copyright
infringement. The DC granted summary judgment holding that the parody was of fair use.
The CA reversed holding that the commercial nature made it unfair, since it was taken from
the heart of the song and made it a heart of a new one, causing market harm. It was held
that the parody was fair use.
DOCTRINE:
The fair use doctrine permits and requires courts to avoid rigid application of the copyright
statute when, on occasion, it would stifle the very creativity which that law is designed to
foster.
Four Factors of the Fair Use Doctrine:
1. the purpose and character of the use, including whether such use is of a commercial
nature or is for non-profit educational purposes
- non-profit transformative!
2. the nature of the copyrighted work
- publicly known
3. whether "the amount and substantiality of the portion used in relation to the
copyrighted work as a whole" are reasonable in relation to the copying's purpose
- needs enough of the original. Copying does not become excessive if for
parodic purpose because the heart is what conjures up the song for parody,
and it is the heart at which the parody takes arim.
4. the effect of the use upon the potential market for or value of the copyrighted work
- serves different market functions. Unlikely that the work will substitute.
FACTS:
 Orbison and Dees wrote a rock ballad called "Oh, Pretty Woman" and assigned their
rights in it to respondent Acuff-Rose Music, Inc., which registered the song for
copyright protection.
 Petitioners Campbell, Wongwon, Ross, and Hobbs are collectively known as 2 Live
Crew, a popular rap music group. The group’s manager informed Acuff-Rose that 2
Live Crew had written a song entitled "Pretty Woman," a parody of "Oh, Pretty
Woman", that they would afford all credit for ownership and authorship of the
original song to Acuff-Rose, Dees, and Orbison, and that they were willing to pay a
fee for the use they wished to make of it. Enclosed with the letter were a copy of the
lyrics and a recording of 2 Live Crew's song.
 Acuff-Rose's agent refused permission. Nonetheless, 2 Live Crew released albums of
"Pretty Woman" in a collection of songs entitled "As Clean As They Wanna Be", which
identify the authors of "Pretty Woman" as Orbison and Dees and its publisher as
Acuff-Rose.
 Acuff-Rose sued 2 Live Crew and its record company, Luke Skyywalker Records, for
copyright infringement. The District Court granted summary judgment for 2 Live
Crew, holding that its song was a parody that made fair use of the original song.
 The Court of Appeals reversed and remanded, holding that the commercial nature
of the parody rendered it presumptively unfair under the first factor of fair use; that,
by taking the "heart" of the original and making it the "heart" of a new work, 2 Live
Crew had taken too much under the third factor; and that market harm for purposes
of the fourth factor had been established by a presumption attaching to commercial
uses.
ISSUES: WN 2 Live Crew's commercial parody of "Oh, Pretty Woman," may be a fair use.
HELD:
 YES. The fair use doctrine permits and requires courts to avoid rigid application of
the copyright statute when, on occasion, it would stifle the very creativity which
that law is designed to foster.
 The task is not to be simplified with bright-line rules, for the statute, like the doctrine
it recognizes, calls for case-by-case analysis.
 The statutory examples of permissible uses provide only general guidance. The four
statutory factors are to be explored and weighed together in light of copyright's
purpose of promoting science and the arts.
1. Under the first factor (the purpose and character of the use, including whether such use
is of a commercial nature or is for non-profit educational purposes)
 the enquiry looks into whether the use is for criticism, or comment, or news
reporting, and focuses 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 original with new expression, meaning, or message,
or whether and to what extent it is "transformative".
 The more transformative the new work, the less will be the significance of other
factors, like commercialism, that may weigh against a finding of fair use.
 2 Live Crew's "Pretty Woman" contains parody (Parody is a "literary or artistic work
that imitates the characteristic style of an author or a work for comic effect or
ridicule," or as a "composition in prose or verse in which the characteristic turns of
thought and phrase in an author or class of authors are imitated in such a way as to
make them appear ridiculous."), commenting on and criticizing the original work,
whatever it may have to say about society at large.
 As the District Court remarked, the words of 2 Live Crew's song copy the original's
first line, but then "quickly degenerate into a play on words, substituting predictable
lyrics with shocking ones . . . [that] derisively demonstrate how bland and banal the
Orbison song seems to them."
  Suffice it to say now that parody has an obvious claim to transformative value, as
Acuff-Rose itself does not deny. Like less ostensibly humorous forms of criticism, it
can provide social benefit, by shedding light on an earlier work, and, in the process,
creating a new one. We thus line up with the courts that have held that parody, like
other comment or criticism, may claim fair use.
 The heart of any parodist's claim to quote from existing material is the use of some
elements of a prior author's composition to create a new one that, at least in part,
comments on that author's work. But that tells courts little about where to draw the
line.
 Thus, like other uses, parody has to work its way through the relevant factors. The
Court of Appeals properly assumed that 2 Live Crew's song contains parody
commenting on and criticizing the original work, but erred in giving virtually
dispositive weight to the commercial nature of that parody by way of a presumption,
ostensibly culled from Sony Corp. of America v. Universal City Studios, Inc., that
"every commercial use of copyrighted material is presumptively unfair . . . ."
 The statute makes clear that a work's commercial nature is only one element of the
first factor enquiry into its purpose and character, and Sony itself called for no hard
evidentiary presumption. The Court of Appeals's rule runs counter to Sony and to the
long common law tradition of fair use adjudication.
2. The second factor (the nature of the copyrighted work), is not much help in resolving this
and other parody cases, since parodies almost invariably copy publicly known, expressive
works, like the Orbison song here.
3. The Court of Appeals erred in holding that, as a matter of law, 2 Live Crew copied
excessively from the Orbison original under the third factor, which asks whether "the
amount and substantiality of the portion used in relation to the copyrighted work as a
whole" are reasonable in relation to the copying's purpose. Parody's humor, or in any
event its comment, necessarily springs from recognizable allusion to its object through
distorted imitation.
 Its art lies in the tension between a known original and its parodic twin. When parody
takes aim at a particular original work, the parody must be able to "conjure up" at
least enough of that original to make the object of its critical wit recognizable.
 What makes for this recognition is quotation of the original's most distinctive or
memorable features, which the parodist can be sure the audience will know.
 Once enough has been taken to assure identification, how much more is reasonable
will depend, say, on the extent to which the song's overriding purpose and character
is to parody the original or, in contrast, the likelihood that the parody may serve as
a market substitute for the original. But using some characteristic features cannot be
avoided.
 Even if 2 Live Crew's copying of the original's first line of lyrics and characteristic
opening bass riff may be said to go to the original's "heart," that heart is what most
readily conjures up the song for parody, and it is the heart at which parody takes
aim. Copying does not become excessive in relation to parodic purpose merely
because the portion taken was the original's heart.
 If 2 Live Crew had copied a significantly less memorable part of the original, it is
difficult to see how its parodic character would have come through.
 Moreover, 2 Live Crew thereafter departed markedly from the Orbison lyrics and
produced otherwise distinctive sounds, interposing "scraper" noise, over-laying the
music with solos in different keys, and altering the drum beat.
 As to the lyrics, the copying was not excessive in relation to the song's parodic
purpose.
 As to the music, this Court expresses no opinion whether repetition of the bass riff
is excessive copying, but remands to permit evaluation of the amount taken, in light
of the song's parodic purpose and character, its transformative elements, and
considerations of the potential for market substitution.
4. The Court of Appeals erred in resolving the fourth factor (the effect of the use upon the
potential market for or value of the copyrighted work) by presuming, in reliance on Sony,
the likelihood of significant market harm based on 2 Live Crew's use for commercial gain.
 No "presumption" or inference of market harm that might find support in Sony is
applicable to a case involving something beyond mere duplication for commercial
purposes. The cognizable harm is market substitution, not any harm from criticism.
 As to parody pure and simple, it is unlikely that the work will act as a substitute for
the original, since the two works usually serve different market functions. The fourth
factor requires courts also to consider the potential market for derivative works.
 If the later work has cognizable substitution effects in protectable markets for
derivative works, the law will look beyond the criticism to the work's other elements.
 Since fair use is an affirmative defense, its proponent would have difficulty carrying
the burden of demonstrating fair use without favorable evidence about relevant
markets.
 In moving for summary judgment, 2 Live Crew left themselves at just such a
disadvantage when they failed to address the effect on the market for rap
derivatives, and confined themselves to uncontroverted submissions that there was
no likely effect on the market for the original.
 They did not, however, thereby subject themselves to the evidentiary presumption
applied by the Court of Appeals.
 It was error for the Court of Appeals to conclude that the commercial nature of 2
Live Crew's parody of "Oh, Pretty Woman" rendered it presumptively unfair.
 No such evidentiary presumption is available to address either the first factor, the
character and purpose of the use, or the fourth, market harm, in determining
whether a transformative use, such as parody, is a fair one.
  The court also erred in holding that 2 Live Crew had necessarily copied excessively
from the Orbison original, considering the parodic purpose of the use. We therefore
reverse the judgment of the Court of Appeals and remand the case for further
proceedings consistent with this opinion.
Section. 185 – 190 Fair Use Doctrine (CODAL!!  )
Habana v. Robles (1999)
SUMMARY:
Petitioners were authors and copyright owners of College English For Today Books 1 &2 and
Workbook for College Freshman English Series 1. Respondents are authors, copyright
owners, and distributors of Developing English Proficiency Books 1&2. While revising their
books, petitioners looked around to check other textbooks of the same subject. They came
upon Robles’ book that had similar contents, illustrations, and examples. They did an
itemized examination and comparison and found that they copied several pages of the
book. They demanded that Robles’ stop selling the books but they ignored it, which led to
filing a case for copyright infringement and unfair competition. Respondents were
impleaded. Robles contended that her book was a result of her own research and not a
copy, that the scope and sequence is common to all English grammar writers, and the
similarities may be due to exercise of fair use of copyrighted materials as guides.
It was held that respondents are guilty. Respondent's 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. Numerous
pages that the petitioners presented showing similarity in the style and the manner the
books were presented and identical examples cannot pass as similarities merely because of
technical consideration.
In cases of infringement, copying alone is not what is prohibited. The copying must produce
an injurious effect. Here, the injury consists in that respondent Robles lifted from
petitioners' book materials that were the result of the latter's research work and
compilation and misrepresented them as her own. She circulated the book DEP for
commercial use and did not acknowledge petitioners as her source. Hence, there is a clear
case of appropriation of copyrighted work for her benefit that respondent Robles
committed.
DOCTRINE:
In cases of infringement, copying alone is not what is prohibited. The copying must produce
an injurious effect. To use for commercial use and not acknowledge the source also falls
within it.
FACTS:
 Petitioners are authors and copyright owners of duly issued certificates of copyright
registration covering their published works, produced through their combined
resources and efforts, entitled COLLEGE ENGLISH FORTODAY (CET), Books 1 and 2,
and WORKBOOK FOR COLLEGE FRESHMAN ENGLISH, Series 1.
 Respondents Robles and Goodwill Trading are the authors/publisher and
distributors/seller of another published work entitled "DEVELOPING ENGLISH
PROFICIENCY"(DEP), Books 1 and 2, 1985 edition which book was covered by
copyrights issued to them.
 In the course of revising their published works, petitioners scouted and looked
around various bookstores to check on other textbooks dealing with the same
subject matter.
 By chance they came upon the book of respondent Robles and upon perusal of said
book they were surprised to see that the book was strikingly similar to the contents,
scheme of presentation, illustrations and illustrative examples in their own book
CET.
 After an itemized examination and comparison of the two books, petitioners found
that several pages of the respondent's book are similar, if not all together a copy
of petitioners' book, which is a case of plagiarism and copyright infringement.
 Petitioners them made demands for damages against respondents and also
demanded that they cease and desist from further selling and distributing to the
general public the infringed copies of respondent Robles' works. However,
respondents ignored the demands, hence, petitioners filed with the RTC a complaint
for "infringement and/or unfair competition with damages" against private
respondent.
 In the complaint, petitioners alleged that 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.
 Despite the demands of the petitioners for respondents to desist from committing
further acts of infringement and for respondent to recall DEP from the market,
respondents refused.
 Respondent Robles was impleaded in the suit because she authored and directly
committed the acts of infringement complained of, while Goodwill Trading was
impleaded as the publisher and joint co-owner of the copyright certificates of
registration covering that two books authored and caused to be published by
respondent Robles with obvious connivance with one another.
 Respondent Robles filed her answer, and denied allegations of plagiarism and
copying that petitioners claimed. Robles stressed that:
o The book DEP is the product of her independent researches, studies and
experiences, and was not a copy of any existing valid copyrighted book;
o DEP followed the scope and sequence or syllabus which are common to all
English grammar writers as recommended by the Association of Philippine
Colleges of Arts and Sciences (APCAS), so any similarity between the
respondents book and that of the petitioners was due to the orientation
 of the authors to both works and standards and syllabus;
o the similarities may be due to the authors' exercise of the "right to fair use
of copyrighted materials, as guides".
 Both the trial court and the CA ruled in favor of respondents, hence this petition.
Harper & Row, Publishers v. Nation Enterprises (1985)
ISSUE: WN there is copyright infringement considering the textual, thematic and sequential
similarity between the CET and DEP
Held/Ratio:
 The Supreme Court held that there is copyright infringement.
 Respondent's 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.
 The measure of substantial reproduction of a book does not necessarily require that
the entire copyrighted work, or even a large portion of it be copied. If so much is
taken that the value of the original work is sensibly diminished and to an injurious
extent appropriated by another, that is sufficient in point of law to constitute piracy.
 In the case at bar, there is no question that petitioners presented several pages of
the books CET and DEP that more or less had the same contents.
FACTS:
 It may be correct, that the books being grammar books may contain materials similar
as to some technical contents with other grammar books, such as the segment about
the "author card".
 However, the numerous pages that the petitioners presented showing similarity in
the style and the manner the books were presented and identical examples cannot
pass as similarities merely because of technical consideration.
 In cases of infringement, copying alone is not what is prohibited. The copying must
produce an injurious effect. Here, the injury consists in that respondent Robles lifted
from petitioners' book materials that were the result of the latter's research work
and compilation and misrepresented them as her own. She circulated the book DEP
for commercial use and did not acknowledge petitioners as her source.
 Hence, there is a clear case of appropriation of copyrighted work for her benefit
that respondent Robles committed.
 Petitioners’ work as authors is the product of their long and assiduous research and
for another to represent it as her own is injury enough.
 In copyrighting books the purpose is to give protection to the intellectual product of
an author. This is precisely what the law on copyright protected, under Section 184.1
(b). Quotations from a published work if they are compatible with fair use and only
to the extent justified by the purpose, including quotations from newspaper articles
and periodicals in the form of press summaries are allowed provided that the source
and the name of the author, if appearing on the work, are mentioned.
 In the case at bar, the least that respondent Robles could have done was to
acknowledge petitioners 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.
SUMMARY:
Former President Ford contracted with H&R and Reader’s Digest for exclusive right to
publish his memoir “A Time to Heal: The Autobiorgraphy of Gerald Ford”. Right to publish
also had prepublication rights. Weeks before release, The Nation, with intent to scoop its
rivals, prepared a story based on the manuscript and lifted 300 words of the copyrighted
manuscript. Time cancelled its contract with H&R then H&R sued The Nation for
infringement. DC ruled that the article was for profit and copied the heart for the work,
and that despite it not being copyrihtable, the facts and expression were. CA reversed and
admitted that Ford’s expressions were protected. Copyright merely attaches to the
expression such as the ordering and choice of words but not to the ideas. It ruled in favor
of the nation.
DOCTRINE: (Read the majority and dissents below)
 Former president Ford contracted with Harper & Row and Readers’ Digest for the
exclusive right to publish his memoir, titled “A Time to Heal: The Autobiography of
Gerald Ford.” The right to publish the memoir included the right to grant
prepublication rights. Harper & Row, subsequently, granted prepublication rights
(“first serial rights”) to Time magazine, in exchange for a significant sum of money,
to publish excerpts from the book a week before the memoir hits the market.
 However, two to three weeks before release of the book, and before Time could
publish the excerpts, an unknown source brought a copy of the manuscript to the
editor of The Nation, a political commentary magazine. The Nation, with an admitted
intent to scoop its rivals, prepared a story based on the manuscript and lifted 300
words constituting copyrighted expression in the manuscript. These words were
verbatim quotations scattered all throughout the Nation’s article.
 Time cancelled its contract with Harper & Row. Harper & Row sued The Nation for
infringement.
 The Second District Court found for Harper, and ruled that the magazine had
published the article for profit, had copied the “heart” of the original work, and had
aborted the Time agreement and diminished the value of the manuscript’s
copyright. It held that while facts in the manuscript were not copyrightable, the
totality of the facts and expression were.
 Court of Appeals reversed. Preliminarily, it admitted that President Ford’s
expressions (through the verbatim quotations) were protected expression.
  It corrected the District Court’s view, however, regarding the protection of the
“totality” of facts and expression, and reiterated that copyright merely attached to
expression (the ordering and choice of the words) and not ideas.
 It then proceeded to rule in favor of The Nation based on the four-point test to
determine fair use:
o a) purpose of the use
o b) nature of the work,
o c) substantiality of the work used in relation to the whole of the
copyrighted work, and
o d) effect of the use on the market. The CA was specifically influenced by
the “political significance” of the work as an autobiography of a public
figure, ruled that the use was for mere “news reporting,” and also decided
that the expression lifted (300 words) and effect on the market caused
minimal harm to Harper.
ISSUE: Was The Nation’s use of material from the original manuscript fair use that would
preclude a finding for infringement?
Held/Ratio:
create or profit in financing such memoirs, and the public would be denied an
important source of significant historical information. The promise of copyright
would be an empty one if it could be avoided merely by dubbing the
infringement a fair use "news report" of the book.
 Court then proceeded to apply the four-point test, and noted that that these factors
are not exclusive and must be appreciated based on the individual facts of each case
I. On purpose of the use:
- Court agreed with CA that the purpose was news reporting, one of the
purposes "The issue is not what constitutes `news,' but whether a claim of
newsreporting is a valid fair use defense to an infringement of copyrightable
expression." The Nation has every right to seek to be the first to publish
information. But The Nation went beyond simply reporting uncopyrightable
information and actively sought to exploit the headline value of its
infringement, making a "news event" out of its unauthorized first publication
of a noted figure's copyrighted expression.” The Court added that the use, in
addition, was for profit: “The Nation's use had not merely the incidental effect
but the intended purpose of supplanting the copyright holder's commercially
valuable right of first publication.”

1. Majority: No, it was not fair use.
Before going into the four-point test, the Court found it necessary to discuss two things:
A. Fair use has been defined as “a privilege in others than the owner of the
copyright to use the copyrighted material in a reasonable manner
without his consent.”
- Fair use therefore has always been based on consent of the author, whether
implied or express, to authorize the publication of the work.
- Such consent has been the basis for the progress of literary, scientific, and
intellectual work, among others.
- Therefore, fair use has traditionally justified copying, even from unpublished
work.
- Yet such a rule, the Court said, has been tempered by the equitable nature of
the fair use doctrine.
- Specifically: “Publication of an author's expression before he has authorized its
dissemination seriously infringes the author's right to decide when and whether
it will be made public, a factor not present in fair use of published works.”
- The Court states that the drafters of the Copyright Act did not intend works for
prepublication not to be included within the scope of protected work.
- The fair use doctrine cannot be expanded to justify infringement of expression
relating to public figures or news reports.
2.
- Specifically: “Absent copyright protection, there would be little incentive to
II. On the nature of the work:
- The law grants fair use for factual works that need further dissemination.
- Here, the Court ruled “A Time to Heal” was a factual narrative, and that The
Nation went beyond the facts in writing its article.
- More importantly, the Court considered the true nature of the work as an
unpublished, confidential manuscript and deemed this as a justification for a
narrower, stricter application of this requisite: “In the case of Mr. Ford's
manuscript, the copyright holders' interest in confidentiality is irrefutable; the
copyright holders had entered into a contractual undertaking to "keep the
manuscript confidential" and required that all those to whom the manuscript
was shown also "sign an agreement to keep the manuscript confidential.”
III. On substantiality of the use in relation to the copyrighted whole: The Court
ruled that even though only 300-400 words were lifted, such will not preclude
against a finding of fair use. It agreed with the Second District Court that the
lifts were “dramatic focal points” at the heart of the work, and therefore
substantial
IV. On the effect on the market: Court considered this the most important
element. The Court found that there is a prima facie finding of actual damage
on the part of Harper that The Nation failed to rebut. The contract between
Harper and Time specifically states that any prepublication would permit time
to renegotiate its payment. Time eventually based its nonperformance of the
contract with Harper on The Nation’s infringing work.
Minority (Dissent): Yes, it was fair use.
A. Mainly, the dissenters state that the majority failed to differentiate
between a taking of literary form as opposed to ideas or information in a
 copyrighted work. They recognize the difficulty in distinguishing the two,
and therefore propose that infringement, in this case, be decided based
on:
i. how closely the second author has tracked the first author’s language
ii. how much the first author’s language and structure has the second
author appropriated.
I. On language: The language of the The Nation’s article was not a paraphrase, but
a mere synopsis. Furthermore, it recognized that there was a limited number of
ways that the words supposedly copied may be expressed; that the words
copied are nto protected by copyright; and that The Nation paraphrased words
and sentences in isolation. Therefore, in terms of language, the two are
dissimilar.
II. On structure: Court stated that The Nation had no choice but to state the facts
chronologically, similar to the original work, as this was an historical piece. It
also discounted the possibility of condensing a book into a short article. Based
on this, it ruled that the structure was not closely appropriated.
 The dissenters also employed the four-point test, but based on the arguments above,
differ on their interpretation.
 Specifically, In my judgment, the Court's fair use analysis has fallen to the temptation
to find copyright violation based on a minimal use of literary form in order to provide
compensation for the appropriation of information from a work of history. The
failure to distinguish between information and literary form permeates every aspect
of the Court's fair use analysis and leads the Court to the wrong result in this case.
Application of the statutorily prescribed analysis with attention to the distinction
between
 information and literary form leads to a straightforward finding of fair use within the
meaning of § 107.”
1. On purpose: For the dissenters, the Court misunderstood the nature of newsreporting,
and failed to recognize that “scooping” others and being the first on the news is the
industry’s imprimatur in producing news. Therefore, there could be no bad faith on The
Nation when it sought to publish the manuscript ahead of Time. Moreso, it was not
proven that it secured the manuscript through illegal means. It reiterated that the The
Nation merely used facts and information from the manuscript.
2. On nature: Pre-publication, the work is not confidential: “The quotation of 300 words
from the manuscript infringed no privacy interest of Mr. Ford. This author intended the
words in the manuscript to be a public statement about his Presidency.
3. On substantiality:
- Here, the dissenters concede that what was copied may have been expression.
- However, they say “I do not agree, however, that the substantiality of the
expression taken was clearly excessive or inappropriate to The Nation's news
reporting purpose...Had these quotations been used in the context of a critical
book review of the Ford work, there is little question that such a use would be
fair use within the meaning of § 107 of the Act. The amount and substantiality
of the use — in both quantitative and qualitative terms — would have certainly
been appropriate to the purpose of such a use. It is difficult to see how the use
of these quoted words in a news report is less appropriate.”
- The dissenters opine that the majority frame this requisite with regard to the
copyrighted work’s nature as a “prepublication,” and state that this factor
should be rightly assessed with regard to the last requisite, the effect on the
market, and not here.
4. On market effect:
- The dissenters argue, finally, that the effect of the use on the market was the
result of a legitimate activity: “Because The Nation was the first to convey the
information in this case, it did perhaps take from Harper & Row some of the
value that publisher sought to garner for itself through the contractual
arrangement with Ford and the license to Time. Harper & Row had every right
to seek to monopolize revenue from that potential market through contractual
arrangements but it has no right to set up copyright as a shield from competition
in that market because copyright does not protect information. The Nation had
every right to seek to be the first to publish that information.
Deposit and registration (CODAL!)
Section 191 - 192
Manly Sportwear Mfg. Inc. v. Dadotte Ent., et al. (2005)
DOCTRINE:
The court’s pronouncement on copyrightability does not affect the prosecutor’s own
investigation and discovery of probable cause, which may be made basis for the filing of
an information later on. Neither does this pronouncement affect the trial in the merits.
Copyright certificates are mere prima facie evidence of validity of ownership. According
to the Copyright Safeguards and Regulations, these certificates are mere proofs of
registration and deposit, and do not confer title upon the registered copyright owner;
nor do they afford the protection of copyright law. As it is, non-registration is merely
punishable by a fine.
FACTS:
- The NBI filed an application for a search warrant against Dadotte Enterprises,
acting on the information that the
- latter possessed goods whose copyright belonged to Manly Enterprises. The
search warrant was issued by the RTC of Quezon City, but was subsequently
quashed by the same court upon Dadotte’s motion to quash. The RTC, in
quashing the warrant, found that:
- Manly’s products were not entitled to copyright protection for not being
original creations, for they were distributed locally and internationally under
other brands, and
 - Manly’s copyright certificates of registration were only issued on 2002, where registration is merely punishable by a fine.
other certificates for the same sports articles have been issued for other
companies years earlier. Moral Rights Sections 193-199 (CODAL)
- Manly’s motions for reconsiderations and appeals were denied. Thus, this
petition to the Supreme Court, where it alleges, solely, that the RTC abused its
discretion, when it declared that Manly’s sports articles were not copyrightable.

ISSUES:

1. Does a trial court, in hearing an application or quashal of a search warrant, have

discretion to decide on the copyrightability of an article?
2. Are copyright certificates conclusive of ownership? (This is the relevant issue in the
outline, albeit is treated as obiter in this case.)

HELD:

1. Yes. Preliminarily, the power to issue search warrants is within judicial discretion.
- A judge who issues a warrant is not precluded in later quashing the same. The
motion to quash should be filed in the same court that granted the warrant,
unless a criminal action had already been instituted somewhere else—then the
motion to quash should be filed in the latter (Rules of Court).

- Here, the RTC properly found, first, that no criminal action had been instituted,
and therefore the quashal was filed in the proper court.

- Second, pursuant to its discretion, the RTC properly found that the articles were
not under those protected under the list of copyrightable work in the
Intellectual Property Code, and were not original creations.

- Such a pronouncement can be made in an ancillary proceeding, such as a

hearing for quashal, even while preliminary investigation is going on. Inevitably,
the trial court has to make this pronouncement as it determines if probable
cause exists for the issuance of a warrant on the basis of copyright infringement.

- The court’s pronouncement on copyrightability does not affect the

prosecutor’s own investigation and discovery of probable cause, which may
be made basis for the filing of an information later on. Neither does this
pronouncement affect the trial in the merits.

- In Vlasons v. CA, the Court declared that a hearing for quashal is a mere
interlocutory proceeding. Findings therein are preliminary. Manly could still file
a copyright infringement suit against Dadotte, since the findings are not res
judicata.

2) No. Manly’s copyright certificates are mere prima facie evidence of validity of
ownership. According to the Copyright Safeguards and Regulations, these certificates
are mere proofs of registration and deposit, and do not confer title upon the registered
copyright owner; nor do they afford the protection of copyright law. As it is, non-