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    !!! DEADLINE: EVERY TUESDAY, 10PM !!!

    2. COPYRIGHT AND RELATED RIGHTS

    2.1 Subject Matter

    Section 241, Intellectual property Code (IPC)

    SECTION 241. Effectivity. This Act shall take effect on 1 January 1998. (n)

    Section 239.3, IPC

    239.3. The provisions of this Act shall apply to works in which copyright

    protection obtained prior to the effectivity of this Act is subsisting:

    Provided, That the application of this Act shall not result in the

    diminution of such protection. (n)

    Section 236, IPC

    SECTION 236. Preservation of Existing Rights. Nothing herein shall

    adversely affect the rights on the enforcement of rights in patents, utility

    models, industrial designs, marks and works, acquired in good faith prior to

    the effective date of this Act. (n)

    2.2 Definition of Copyright

    Section 177, IPC

    SECTION 177. Copyright or Economic Rights. Subject to the provisions of

    Chapter VIII, copyright or economic rights shall consist of the exclusive right

    to carry out, authorize or prevent the following acts:

    177.1. Reproduction of the work or substantial portion of the work; 177.2. Dramatization,

    translation, adaptation, abridgment, arrangement or

    other transformation of the work; aisadc

    177.3. The first public distribution of the original and each copy of the work

    by sale or other forms of transfer of ownership;

    177.4. Rental of the original or a copy of an audiovisual or cinematographic

    work, a work embodied in a sound recording, a computer program, a

    compilation of data and other materials or a musical work in graphic

    form, irrespective of the ownership of the original or the copy which

    is the subject of the rental; (n)

    177.5. Public display of the original or a copy of the work;

    177.6. Public performance of the work; and

    177.7. Other communication to the public of the work. (Sec. 5, P. D. No.

    49a)

    Rule 2, Copyright Safeguards and Regulations

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    Rule 2

    Definition of Terms

    For the purpose of these Copyright Safeguards and Regulations, the following

    terms are herein defined:

    Copyright is a right granted by statute to the author or originator of literary,

    scholarly, scientific, or artistic productions, including computer programs. A

    copyright gives him the legal right to determine how the work is used and to

    obtain economic benefits from the work. For example, the owner of a copyright

    for a book or a piece of software has the exclusive rights to use, copy, distribute,

    and sell copies of the work, including later editions or versions of the work. If

    another person improperly uses material covered by a copyright, the copyright

    owner can obtain legal relief;

    Rules 11-12, Copyright Safeguards and Regulations

    Rule 11

    Communication to the Public of Copyrighted Works

    SECTION 1. Communication to the Public of Copyrighted Work.

    Communication to the public or communicateto the public, also includes

    point-to-point transmission of a work, including video on demand, and providing

    access to an electronic retrieval system, such as computer databases, servers, or

    similar electronic storage devices. Broadcasting, rebroadcasting, retransmission

    by cable, and broadcast and retransmission by satellite are all acts of

    communication to the public within the meaning of the IPC.

    Rule 12

    First Public Distribution of Work

    SECTION 1. First Public Distribution of Work. An exclusive right of first

    distribution of work includes all acts involving distribution, specifically including

    the first importation of an original and each copy of the work into the jurisdiction

    of the Republic of the Philippines.

    2.3 Standard for Copyright Protection

    Section 172.1, IPC

    Section 172.2, IPC

    SECTION 172. Literary and Artistic Works.

    172.1. Literary and artistic works, hereinafter referred to as "works", are

    original intellectual creations in the literary and artistic domain

    protected from the moment of their creation and shall include in

    particular:

    a. Books, pamphlets, articles and other writings;

    b. Periodicals and newspapers;

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    c. Lectures, sermons, addresses, dissertations prepared for oral

    delivery, whether or not reduced in writing or other material

    form;

    d. Letters;

    e. Dramatic or dramatico-musical compositions; choreographic

    works or entertainment in dumb shows;

    f. Musical compositions, with or without words;

    g. Works of drawing, painting, architecture, sculpture, engraving,

    lithography or other works of art; models or designs for works of

    art;

    h. Original ornamental designs or models for articles of manufacture,

    whether or not registrable as an industrial design, and other

    works of applied art;

    i. Illustrations, maps, plans, sketches, charts and three-dimensional

    works relative to geography, topography, architecture or science;

    j. Drawings or plastic works of a scientific or technical character;

    k. Photographic works including works produced by a process

    analogous to photography; lantern slides;

    l. Audiovisual works and cinematographic works and works

    produced by a process analogous to cinematography or any

    process for making audio-visual recordings;

    m. Pictorial illustrations and advertisements;

    n. Computer programs; and

    o. Other literary, scholarly, scientific and artistic works.

    172.2. Works are protected by the sole fact of their creation, irrespective of

    their mode or form of expression, as well as of their content, quality

    and purpose. (Sec. 2, P.D. No. 49a)

    Ching Kian Chuan v. CA, 363 SCRA 142 (2001) EM

    DOCTRINE: A person to be entitled to a copyright must be the original creator of the work. He must have

    created it by his own skill, labor and judgment without directly copying or evasively imitating the work of

    another.

    The grant of preliminary injunction depends chiefly on the extent of doubt on the validity of the copyright,existence of infringement, and the damages sustained by such infringement.

    FACTS:

    Petitioner Wilson Ong Ching Kian Chuan ("Ong"), imports vermicelli from China National Cereals Oils and

    Foodstuffs Import and Export Corporation, based in Beijing, China.

    He repacks it in cellophane wrappers with a design of two-dragons and the TOWER trademark on the

    uppermost portion.

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    Ong acquired a Certificate of Copyright Registration from the National Library on June 9, 1993 on the said

    design.

    Ong discovered that private respondent Lorenzo Tan repacked his vermicelli he imports from the same

    company but based in Qingdao, China in a "nearly" identical wrapper.

    Ong filed against Tan a verified complaint for infringement of copyright with damages and prayer for

    temporary restraining order or writ of preliminary injunction with the Regional Trial Court. He asked thatTan be restrained from using the wrapper

    Trial Court: issued a temporary restraining order.

    Tan filed an opposition to Ong's application for a writ of preliminary injunction but was denied.

    Tan elevated the case to the Court of Appeals with a prayer for the issuance of a TRO and/or writ of

    preliminary injunction.

    Court of Appeals (August 8, 1994 order):the writ of preliminary injunction issued by the lower court, are

    SET ASIDE.; issued preliminary injunction enjoining Ong from enforcing and/or implementing the Writ of

    Preliminary Injunction issued by the lower court.

    Court of Appeals(January 3, 1995 Resolution)modified its August 8, 1994 order as follows: WHEREFORE

    the phrase "the order dated October 13, 1993 and related orders, as well as the writ of preliminary

    injunction issued by the respondent court, are SET ASIDE as issued with grave abuse of discretion" ishereby deleted in our resolution dated 08 August 1994. In all other respects, said resolution must be

    maintained.

    Court of Appealspromulgated its decision, decreeing as follows: Resolution and orders all in Civil Case

    No. Q-93 17628 are hereby SET ASIDE and our injunction against Ong heretofore issued made

    permanent.

    Ong filed the instant petition for review, claiming that the Court of Appeals committed grave and serious

    errors tantamount to acting with grave abuse of discretion and/or acting without or in excess of its

    jurisdiction WHEN IT ISSUED A PERMANENT PRELIMINARY INJUNCTION IN FAVOR OF THE PRIVATE

    RESPONDENT WHEN THE LATTER'S RIGHT TO SUCH A RELIEF IS NOT CLEAR, DOUBTFUL AND HAS NO

    LEGAL OR FACTUAL BASIS and BY 'INTERFERING' WITH THE JUDICIAL DISCRETION OF THE TRIAL COURTWHEN IT MADE ITS OWN FINDINGS AND CONCLUSIONS, PRE-EMPTING THE TRIAL COURT AND

    PREJUDGING THE CASE, THUS LEAVING THE TRIAL COURT WITH NOTHING TO RULE UPON.

    Petitioner Ongs Contention:

    The CA erred in issuing a preliminary injunction in private respondent's favour since he is more entitled to

    it. He states that as holder of the Certificate of Copyright Registration of the twindragon design, he has

    the protection of P.D. No. 49. Said law allows an injunction in case of infringement.

    He asserts that private respondent has no registered copyright and merely relies on the trademark of his

    principal abroad, which insofar as Philippine laws is concerned, cannot prevail over petitioner's copyright.

    Respondent Tans Contention:

    The petitioner has no "clear right" over the use of the copyrighted wrapper since the PAGODA trademark

    and label were first adopted and used and have been duly registered by CeroilfoodShandong not only in China but in nearly 20 countries and regions worldwide.

    Petitioner was not the original creator of the label, but merely copied the design of Ceroilfood Shandong.

    Private respondent presented copies of the certificates of copyright registration in the name of Ceroilfood

    Shandong issued by at least twenty countries and regions worldwide which although unauthenticated are,

    according to him, sufficient to provide a sampling of the evidence needed in the determination of the

    grant of preliminary injunction.

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    The trademark PAGODA BRAND was registered in China on October 31, 1979 while the trademark

    LUNGKOW VERMICELLI WITH TWO-DRAGON DEVICE was registered on August 15, 1985.

    ISSUES:

    1. Whether or not the issuance of the writ of preliminary injunction proper? NO

    2. Whether or not there was grave abuse of discretion committed by the Court of Appeals when it set

    aside the order of the trial court, then issued a judgment touching on the merits? YESHELD:

    1. A person to be entitled to a copyright must be the original creator of the work. He must have created it

    by his own skill, labor and judgment without directly copying or evasively imitating the work of another.

    The grant of preliminary injunction depends chiefly on the extent of doubt on the validity of the copyright,

    existence of infringement, and the damages sustained by such infringement.

    The copies of the certificates of copyright registered in the name of Ceroilfood Shandong sufficiently raise

    reasonable doubt. With such a doubt preliminary injunction is unavailing.

    To be entitled to an injunctive writ, petitioner must show, inter alia, the existence of a clear and

    unmistakable right and an urgent and paramount necessity for the writ to prevent serious damage.

    The petitioner's right has not been clearly and unmistakably demonstrated. That right is what is in dispute

    and has yet to be determined.Developers Group of Companies, Inc. vs. Court of Appeals: in the absence of proof of a legal right and the

    injury sustained by the plaintiff, an order of the trial court granting the issuance of an injunctive writ will

    be set aside, for having been issued with grave abuse of discretion.

    Conformably, there was no abuse of discretion by the Court of Appeals when it issued its own order to

    restrain the enforcement of the preliminary injunction issued by the trial court.

    2. Petitioner Ong argues that the Court of Appealserred and contradicted itself in its January 3, 1995

    Resolution, where it deleted the phrase "the order dated October 13, 1993 and related orders, as well as

    the writ of preliminary injunction issued by the respondent court, are SET ASIDE as issued with grave

    abuse of discretion" in its August 8, 1994 decision, and at the same time issued a writ of preliminaryinjunction in Tan's favor.

    Ong's claim that the Court of Appeals In deleting the aforequoted phrase in the August 8, 1994 decision

    abandoned its earlier finding of grave abuse of discretion on the part of the trial court.

    Petitioner Ong is wrong. The appellate court merely restated In its own words the issue raised in the

    petition: from a) whether the RTC committed grave abuse of discretion, to b) whether Tan was entitled to

    an injunctive relief.

    Then it clarified that the relief sought is a prohibition against Ong and his agents from enforcing the writ

    of preliminary injunction.

    An order enjoining the enforcement of a writ of preliminary injunction issued by the RTC in a certiorari

    proceeding under Rule 65 of the Rules of Court effectively, sets aside the RTC order for being issued with

    grave abuse of discretion.

    The complaint initially filed with the RTC was for infringement of copyright. The trial court's resolution

    subject of Tan's petition under Rule 65 before the CA concerns the correctness of the grant of the writ of

    preliminary injunction.

    The only issue brought before the CA involved the grave abuse of discretion allegedly committed by the

    trial court in granting the writ of preliminary injunction.

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    The Court of Appeals in declaring that the wrapper of petitioner is a copy of Ceroilfood Shandong's

    wrapper went beyond that issue touched on the merits of the infringement case, which remains to be

    decided by the trial court.

    It was premature for the Court of Appeals to declare that the design of petitioner's wrapper is a copy of

    the wrapper allegedly registered by Ceroilfood Shandong. That matter remains for decision after

    appropriate proceedings at the trial court.DISPOSITIVE PORTION: The prayer for a writ of preliminary injunction to prohibit Tan is denied, but the

    finding of the respondent appellate court that Ong's copyrighted wrapper is a copy of that of Ceroilfood

    Shandong is SET ASIDE for being premature. RTC is directed to proceed with the trial to determine the

    merits of Civil Case No. 33779.

    Sambar v. Levi Strauss, 378 SCRA 364 (2002) EUNICE

    VENANCIO SAMBAR, doing business under the name and style of CVS Garment Enterprises

    vs. LEVI STRAUSS & CO., LEVI STRAUSS (PHIL.), INC.

    DOCTRINE: To be entitled to a copyright, the thing being copyrighted must be original, created

    by the author through his own skill, labor and judgment, without directly copying or evasivelyimitating the work of another.FACTS:

    Private respondents alleged in their complaint that Levi Strauss and Co. (LS&Co.), an

    internationally known clothing manufacturer, own the arcuate design trademark which was

    registered under US Trademark Registration No. 404,248 on November 16, 1943. That sometime

    in 1987, CVSGIC and Venancio Sambar, without the consent and authority of private

    respondents and in infringement and unfair competition, sold and advertised, and despite

    demands to cease and desist, continued to manufacture, sell and advertise denim, pants under

    the brand name Europress with back pockets bearing a design similar to the arcuate trademark

    of private respondents, thereby causing confusion on the buying public, prejudiced to private

    respondents goodwill and property right.

    Sambar filed a separate answer. He admitted that copyright Registration No. 1-1998 was issued

    to him, but he denied using it. He said he did not authorize anyone to use the copyrighted design.

    Trial court issued a writ of preliminary injunction enjoining CVSGIC and petitioner from

    manufacturing, advertising and selling pants with the arcuate design on their back pockets.

    Private respondents moved for reconsideration praying for the cancellation of petitioners

    copyright registration.

    Trial court granted the prayer.

    Petitioner appealed to the Court of Appeals which affirmed the ruling of the trial court.

    ISSUE:

    1. W/N petitioner infringe on private respondents arcuate design.

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    2. W/N the court was correct in granting the cancellation of the copyright registration of petitioner

    in the National Library?3. W/N petitioner Sambar can be held solidarily liable with the company CVSGIC?

    HELD:1.FACTUAL ISSUE. not reviewable by the SC. BUT, Both the trial court and the Court of Appeals

    found there was infringement. Although the trial court found differences in the two designs, these

    differences were not noticeable. Further, private respondents said, infringement of trademark did

    not require exact similarity. Colorable imitation enough to cause confusion among the public, was

    sufficient for a trademark to be infringed. Private respondents explained that in a market

    research they conducted with 600 respondents, the result showed that the public was confused

    by Europress trademark vis the Levis trademark.

    2. YES. cancellation of petitioners copyright finds basis on the fact that the design was a mere

    copy of that of private respondents trademark. The cancellation of petitioners copyright was

    justified because petitioners copyright can not prevail over respondents registration in the

    Principal Register of Bureau of Patents, Trademarks, and Technology Transfer. According to

    private respondents, the essence of copyright registration is originality and a copied design isinherently non-copyrightable. They insist that registration does not confer originality upon a

    copycat version of a prior design.To be entitled to a 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.

    3. FACTUAL ISSUE. Both the courts below found that petitioner had a copyright over Europress

    arcuate design and that he consented to the use of said design by CVSGIC. The SC is bound by

    this finding, especially in the absence of a showing that it was tainted with arbitrariness or

    palpable error. It must be stressed that it was immaterial whether or not petitioner was connected

    with CVSGIC. What is relevant is that petitioner had a copyright over the design and that he

    allowed the use of the same by CVSGIC.

    2.4 When does Copyright vest?

    Santos v. McCullough Printing Co., 12 SCRA 321 (1964) JR

    DOCTRINE: The author of a literary composition has a light to the first publication thereof.

    However, this exclusive right is confined to the first publication. Once published, it is

    dedicated to the public, and the author loses the exclusive right to control subsequent

    publication by others, unless the work is placed under the protection of the copyright law

    FACTS:

    A complaint for damages was filed by Plaintiff, Mauro Santos, against Defendant,

    McCullough Printing Company for allegedly using without authority Plaintiffs design for a

    Christmas card, depicting: a Philippine rural Christmas time scene consisting of a woman and a

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    child in a nipa hut adorned with a star-shaped lantern and a man astride a carabao, beside a

    tree, underneath which appears the plaintiff's pen name, Malang.

    Defendants argue that the design does not contain a clear notice that it belonged to him

    and that he prohibited its use by others; nor does it contain a notice of copyright, as in fact it

    had never been copyrighted by the plaintiff, for which reason this action is barred by the

    Copyright Law

    The case was submitted an a "Stipulation of Fact" the pertinent portions of which are

    hereunder reproduced:

    o 1. That the plaintiff was the artist who created the design shown in Exhibit A

    o 2. That the design carries the pen name of plaintiff, MALANG, on its face ... and

    indicated in Exhibit A, ...

    o 3. That said design was created by plaintiff in the latter part of 1959 for the personal

    use of former Ambassador Felino Neri; ...

    o 4. That former Ambassador Neri had 800 such cards ... printed by the defendant

    company in 1959, ... which he distributed to his friends in December, 1959;

    o 5. That defendant company utilized plaintiff's design in the year 1960 in its album of

    Christmas card samples displayed to its customers ... .

    o 6. That the Sampaguita Pictures, Inc., placed an order with defendant company for

    700 of said cards ... while Raul Urra & Co. ordered 200 ..., which cards were sent out by

    them to their respective correspondent, clients and friends during the Christmas season

    of 1960;

    o 7. That defendant company's use of plaintiff's design was without knowledge,

    authority or consent of plaintiff;

    o 8. That said design has not been copyrighted;

    o 9. That plaintiff is an artist of established name, good-will and reputation

    The trial court dismissed the case, stating thus:

    o In intellectual creations, a distinction must be made between two classes of property

    rights; the fact of authorship and the right to publish and/or distribute copies of the

    creation. With regard to the first, i.e. the fact of authorship, the artist cannot be

    divested of the same. In other words, he may sell the right to print hundred of his work

    yet the purchaser of said right can never be the author of the creation.

    o It is the second right, i.e., the right to publish, republish, multiply and/or distribute

    copies of the intellectual creation which the state, through the enactment of the

    copyright law, seeks to protect. The author or his assigns or heirs may have the work

    copyrighted and once this is legally accomplished any infringement of the copyright willrender the infringer liable to the owner of the copyright.

    o The plaintiff in this case did not choose to protect his intellectual creation by a

    copyright. The fact that the design was used in the Christmas card of Ambassador Neri

    who distributed eight hundred copies thereof among his friends during the Christmas

    season of 1959, shows that the, same was published.

    ISSUE: W/N the Plaintiff is entitled to protection under Copyright Law

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    HELD: No, Plaintiff is not entitled and the lower court decision AFFIRMED

    RATIO:

    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" provides:

    o An intellectual creation should be copyrighted thirty (30) days after its publication, if made

    in Manila, or within sixty (60) day's if made elsewhere, failure of which renders such creation

    public property.

    In the case at bar, even as of this moment, there is no copyright for the design in question

    The contention of appellant that the publication of the design was supposed to be limited,

    or that only Ambassador Neri should have absolute right to use the same, is without merit.

    In the first place, if such were the condition then Ambassador Neri would be the aggrieved

    party, and not the appellant.

    In the second place, if there was such a limited publication or prohibition, the same was not

    shown on the face of the design.

    When the purpose is a limited publication, but the effect is general publication, irrevocable

    rights thereupon become vested in the public, in consequence of which enforcement of the

    restriction becomes impossible

    The effect of offering for sale a dress, for example, manufactured in accordance with an

    original design which is not protected by either a copyright or a patent, is to divest the owner of

    his common law rights therein by virtue of the publication of a 'copy' and thereafter anyone is

    free to copy the design or the dress

    When Ambassador Neri distributed 800 copies of the design in controversy, the plaintiff lost

    control of his design and the necessary implication was that there had been a general

    publication, there having been no showing of a clear indication that a limited publication was

    intended.

    The author of a literary composition has a light to the first publication thereof. He has a

    right to determine whether it shall be published at all, and if published, when, where, by whom,

    and in what form. This exclusive right is confined to the first publication. When once published,

    it is dedicated to the public, and the author loses the exclusive right to control subsequent

    publication by others, unless the work is placed under the protection of the copyright law

    Filipino Society of Composers v. Benjamin Tan, 148 SCRA 461 (1987) RIKKI

    Doctrine: 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.

    SINGING/PERFORMING copyrighted songs in an establishment for profit (i.e. a restaurant) without

    the permission of the copyright holders constitute infringement. Note that this doesnt apply if the

    rule stated above ^^^ is not followed because, in a sense, the songs had already become part of

    public domain.

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    Facts: Plaintiff-appellant is a non-profit association of authors, composers and publishers duly organized

    under the Corporation Law of the Philippines and registered with the Securities and Exchange

    Commission. Said association is the owner of certain musical compositions among which are the songs

    entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness

    Of You." Defendant-appellee is the operator of a restaurant known as "Alex Soda Foundation and Restaurant"

    where a combo with professional singers, hired to play and sing musical compositions to entertain and

    amuse customers therein, were playing and singing the above-mentioned compositions without any

    license or permission from the appellant to play or sing the same. Plaintiff demanded payment of

    license fees, but these were ignored by the defendant. Plaintiff filed a complaint for infringement of copyright. Defendant answered that while not denying the

    playing of said copyrighted compositions in his establishment, it maintains that the mere singing and

    playing of songs and popular tunes even if they are copyrighted do not constitute an infringement. Trial Court dismissed the complaint.

    Issues:

    Whether or not the playing and signing of musical compositions which have been copyrighted underthe 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 (YES); and assuming that there were indeed public performances for profit, whether or not

    appellee can be held liable therefor (NO).

    Held: There was indeed there were "public performances for profit. " BUT the songs ARE NOT

    PROTECTED BY COPYRIGHT. Defendant-appelle wins. "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." (Buck, et al. v. Russon No.

    4489 25 F. Supp. 317). Thus, it has been explained that while it is possible in such establishments for thepatrons 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. It is therefore obvious that the expenses entailed thereby are added to the overhead of the restaurant

    which are either eventually charged in the price of the food and drinks or to the overall total of additional

    income produced by the bigger volume of business which the entertainment was programmed to attract. Consequently, it is beyond question that the playing and singing of the combo in defendant-

    appellee's restaurant constituted performance for profit contemplated by the Copyright Law. (Act 3134

    amended by P.D. No. 49, as amended). IMPORTANT: 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. 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."(Santos v. McCullough Printing Company, 12 SCRA 324-325 [1964]. 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.

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    o A careful study of the records reveals that the song "Dahil Sa Iyo" which was registered on

    April 20, 1956 (Brief for Appellant, p. 10) became popular in radios, juke boxes, etc. long before

    registration (TSN, May 28, 1968, pp. 3-5; 25) whileo the song "The Nearness Of You" registered on January 14, 1955 (Brief for Appellant, p. 10)

    had become popular twenty five (25) years prior to 1968, (the year of the hearing) or from 1943

    (TSN, May 28, 1968, p. 27) ando the songs "Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao Lamang" both registered on

    July 10, 1966, appear to have been known and sang by the witnesses as early as 1965 or three

    years before the hearing in 1968. The testimonies of the witnesses at the hearing of this case on

    this subject were unrebutted by the appellant. (Ibid, pp. 28; 29 and 30).

    Dispositive: PREMISES CONSIDERED, the appealed decision of the Court of First Instance of

    Manila in Civil Case No. 71222 is hereby AFFIRMED.

    ***

    Sec. 2, PD 49

    Section 2.The Rights granted by this Decree shall, from the moment of creation,subsist with respect to any of the following classes of works:

    (A) Books, including composite and encyclopedic works, manuscripts,

    directories, and gazetteers;

    (B) Periodicals, including pamphlets and newspapers;

    (C) Lectures, sermons, addresses, dissertations prepared for oral delivery;

    (D) Letters;

    (E) Dramatic or dramatico-musical compositions; choreographic works and

    entertainments in dumb shows, the acting form of which is fixed in writing or otherwise;

    (F) Musical compositions, with or without words;

    (G) Works of drawing, painting, architecture, sculpture, engraving, lithography,

    and other works of art; models or designs for works of art;(H) Reproductions of a work of art;

    (I) Original ornamental designs or models for articles of manufacture, whether or

    not patentable, and other works of applied art;

    (J) Maps, plans, sketches, and charts;

    (K) Drawings, or plastic works of a scientific or technical character;

    (L) Photographic works and works produced by a process analogous to

    photography; lantern slides;

    (M) Cinematographic works and works produced by a process analogous to

    cinematography or any process for making audio-visual recordings;

    (N) Computer programs;(O) Prints, pictorial, illustration, advertising copies, labels, tags, and box wraps;

    (P) Dramatization, translations, adaptations, abridgements, arrangements and

    other alterations of literary, musical or artistic works or of works of the Philippine

    Government as herein defined, which shall be protected as provided in Section 8 of this

    Decree.

    (Q) Collection of literary, scholarly, or artistic works or of works referred to in

    Section 9 of this Decree which by reason of the selection and arrangement of their

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    contents constitute intellectual creations, the same to be protected as such in

    accordance with Section 8 of this Decree.

    (R) Other literary, scholarly, scientific and artistic works.

    Article 5(2), Berne convention for the Protection of Literacy and Artistic Works

    Article 5Rights Guaranteed:

    1. and 2. Outside the country of origin; 3. In the country of origin; 4. Country of origin(2) The enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such

    exercise shall be independent of the existence of protection in the country of origin of the work. Consequently, apart

    from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author

    to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed.

    Section 172 and 172.2, IPC

    Rule 7, Sections 2-4, Copyright Safeguards and Regulations

    Rule 7

    Effectivity and Effects of Registration and Deposit

    SECTION 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

    copyrights or the rights of the copyright owner, including neighboring rights.

    SECTION 3. Effect of Non-Registration and Deposit. If, within three (3) weeks

    after receipt by the copyright owner of a written demand from TNL and/or SCL

    for the deposit of a work listed in Rule 5 Sec. 4 of this SAR, the required copies are

    not delivered and the fee for registration and deposit is not paid, the copyrightowner, his assignee, or his agent shall be liable to pay a fine equivalent to the

    required fee per month of delay and to pay to TNL and SCL the amount of the

    retail price of the best edition of the work.

    SECTION 4. Other Laws. Upon issuance of a certificate of deposit, the

    copyright owner shall be exempt from making additional deposits of the work

    with TNL or the SCL under other laws.

    Baker v. Selden 101 U.S. 99 (1978) DJ

    Doctrine:

    1. Where the truths of a science or the methods of an art are the common property of the

    whole world, any author has the right to express the one, or explain and use the other, in his

    own way.

    2. Patent: science/art; copyright: publication

    Facts:

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    1. Charles Selden wrote a book "Selden's Condensed Ledger, or Bookkeeping Simplified,"

    the object of which was to exhibit and explain a peculiar system of bookkeeping.

    2. The book or series of books of which the complainant claims the copyright consists of an

    introductory essay explaining the system of bookkeeping referred to, to which are

    annexed certain forms or banks, consisting of ruled lines, and headings, illustrating the

    system and showing how it is to be used and carried out in practice. This system effects

    the same results as bookkeeping by double entry, but, by a peculiar arrangement of

    columns and headings, presents the entire operation, of a day, a week, or a month on a

    single page or on two pages facing each other, in an account book.

    3. Baker uses a similar plan so far as results are concerned, but makes a different

    arrangement of the columns, and uses different headings. (IN SHORT YUNG LIBRO NA

    SINULAT NITONG SI BAKER MAS MABENTA/BUMENTA)

    4. Selden sued Beker--------> he died --------> his wife inherited the case

    5. It is contended that he has secured such exclusive right because no one can use the

    system without using substantially the same ruled lines and headings which he was

    appended to his books in illustration of it. In other words, it is contended that the ruled

    lines and headings, given to illustrate the system, are a part of the book, and as such are

    secured by the copyright, and that no one can make or use similar ruled linesand

    headings, or ruled lines and headings made and arranged on substantially the same

    system, without violating the copyright.

    6. Defense of Baker: The system (and not the book itself) if copyrightable

    ISSUE: WON the system developed by Selden is copyrightable? WON exclusive property in a

    system of bookkeeping can be claimed under the law or copyright by means of a book in which

    that system is explained?

    Held:

    It cannot be pretended, and indeed it is not seriously urged, that the ruled lines of the

    complainant's account book can be claimed under any special class of objects, other than books,

    named in the law of copyright existing in 1859. The law then in force was that of 1831, and

    specified only books, maps, charts, musical compositions, prints, and engravings. An account

    book, consisting of ruled lines and blank columns, cannot be called by any of these names unless

    by that of a book.

    There is no doubt that a work on the subject of bookkeeping, though only explanatory of well

    known systems, may be the subject of a copyright, but then it is claimed only as a book. Such a

    book may be explanatory either of old systems or of an entirely new system, and, considered as

    a book, as the work of an author, conveying information on the subject of bookkeeping, and

    containing detailed explanations of the art, it may be a very valuable acquisition to the practical

    knowledge of the community. But there is a clear distinction between the book as such and the

    art which it is intended to illustrate.The mere statement of the proposition is so evident that it

    requires hardly any argument to support it. The same distinction may be predicated of every

    other art as well as that of bookkeeping. A treatise on the composition and use of medicines, be

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    they old or new; on the construction and use of ploughs, or watches, or churns; or on the

    mixture and application of colors for painting or dyeing; or on the mode of drawing lines to

    produce the effect of perspective -- would be the subject of copyright; but no one would

    contend that the copyright of the treatise would give the exclusive right to the art or

    manufacture described therein.

    The novelty of the art or thing described or explained has nothing to do with the validityof the copyright.

    That is the province of letters patent, not of copyright. The claim to an invention or

    discovery of an art or manufacture must be subjected to the examination of the Patent

    Office before an exclusive right therein can be obtained, and it can only be secured by a

    patent from the government.

    The difference between the two things, letters patent and copyright, may be illustrated by

    reference to the subjects just enumerated. Take the case of medicines. Certain mixtures

    are found to be of great value in the healing art. If the discoverer writes and publishes a

    book on the subject (as regular physicians generally do), he gains no exclusive right to

    the manufacture and sale of the medicine; he gives that to the public. If he desires toacquire such exclusive right, he must obtain a patent for the mixture as a new art,

    manufacture, or composition of matter. He may copyright his book if he pleases,

    but that only secures to him the exclusive right of printing and publishing his

    book.So of all other inventions or discoveries.

    By publishing the book without getting a patent for the art, the latter is given to the

    public. The fact that the art described in the book by illustrations of lines and figures

    which are reproduced in practice in the application of the art makes no difference. Those

    illustrations are the mere language employed by the author to convey his ideas

    more clearly.Had he used words of description instead of diagrams (which merely

    stand in the place of words), there could not be the slightest doubt that others, applying

    the art to practical use, might lawfully draw the lines and diagrams which were in theauthor's mind, and which he thus described by words in his book.

    The very object of publishing a book on science or the useful arts is to communicate to

    the world the useful knowledge which it contains. But this object would be frustrated if

    the knowledge could not be used without incurring the guilt of piracy of the book. And

    where the art it teaches cannot be used without employing the methods and diagrams

    used to illustrate the book, or such as are similar to them, such methods and diagrams

    are to be considered as necessary incidents to the art, and given therewith to the public -

    - not given for the purpose of publication in other works explanatory of the art, but for the

    purpose of practical application.

    Recurring to the case before us, we observe that Charles Selden, by his books,explained and described a peculiar system of bookkeeping, and illustrated his method by

    means of ruled lines and blank columns, with proper headings on a page or on

    successive pages. Now whilst no one has a right to print or publish his book, or any

    material part thereof, as a book intended to convey instruction in the art, any person may

    practice and use the art itself which he has described and illustrated therein. The use of

    the art is a totally different thing from a publication of the book explaining it. The

    copyright of a book on bookkeeping cannot secure the exclusive right to make,

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    sell, and use account books prepared upon the plan set forth in such book.

    Whether the art might or might not have been patented is a question which is not before

    us. It 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 is

    explanation; the object of the other 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.

    Lotus Development Corp. v. Borland International 526 U.S. 233 (1996) KLAIRE

    BACKGROUND:

    Lotus 1-2-3 is a spreadsheet program that enables users to perform accounting functions

    electronically on a computer. Users manipulate and control the program via a series of menu

    commands, such as "Copy," "Print," and "Quit." Users choose commands either by highlighting

    them on the screen or by typing their first letter. In all, Lotus 1-2-3 has 469 commands arranged

    into more than 50 menus and submenus.

    Lotus 1-2-3, like many computer programs, allows users to write what are called "macros." By

    writing a macro, a user can designate a series of command choices with a single macro

    keystroke. Then, to execute that series of commands in multiple parts of the spreadsheet, rather

    than typing the whole series each time, the user only needs to type the single pre-programmed

    macro keystroke, causing the program to recall and perform the designated series of commands

    automatically. Thus, Lotus 1-2-3 macros shorten the time needed to set up and operate the

    program.

    Borland released its first Quattro program to the public in 1987, after Borland's engineers had

    labored over its development for nearly three years. Borland's objective was to develop a

    spreadsheet program far superior to existing programs, including Lotus 1-2-3. In Borland's

    words, "from the time of its initial release . . . Quattro included enormous innovations over

    competing spreadsheet products."

    Borland does not contest that it included in its Quattro and Quattro Pro version 1.0 programs "a

    virtually identical copy of the entire 1-2-3 menu tree." In so doing, Borland did not copy any of

    Lotus's underlying computer code; it copied only the words and structure of Lotus's menu

    command hierarchy. Borland included the Lotus menu command hierarchy in its programs to

    make them compatible with Lotus 1-2-3 so that spreadsheet users who were already familiar

    with Lotus 1-2-3 would be able to switch to the Borland programs without having to learn new

    commands or rewrite their Lotus macros.

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    In its Quattro and Quattro Pro version 1.0 programs, Borland achieved compatibility with Lotus

    1-2-3 by offering its users an alternate user interface, the "Lotus Emulation Interface." By

    activating the Emulation Interface, Borland users would see the Lotus menu commands on their

    screens and could interact with Quattro or Quattro Pro as if using Lotus 1-2-3, albeit with a

    slightly different looking screen and with many Borland options not available on Lotus 1-2-3. In

    effect, Borland allowed users to choose how they wanted to communicate with Borland's

    spreadsheet programs: either by using menu commands designed by Borland, or by using the

    commands and command structure used in Lotus 1-2-3 augmented by Borland-added

    commands.

    PROCEDURAL:

    1. a.Lotus filed this action against Borland in the District of Massachusetts on July 2, 1990, four

    days after a district court held that the Lotus 1-2-3 "menu structure, taken as a whole --

    including the choice of command terms [and] the structure and order of those terms," was

    protected expression covered by Lotus's copyrights(Lotus vs Paperback Software case)

    1.b.Morning after the Paperback decision, Borland had filed a declaratory judgment action

    against Lotus in the Northern District of California, seeking a declaration of non-infringement.

    On September 10, 1990, the district court in California dismissed Borland's declaratory judgment

    action.

    1.c.Lotus and Borland filed cross motions for summary judgment; the district court denied both

    motions on March 20, 1992, concluding that "neither party's motion is supported by the record.

    The district court invited the parties to file renewed summary judgment motions that would

    "focus their arguments more precisely" in light of rulings it had made in conjunction with its

    denial of their summary judgment motions.

    1.d.In its motion, Borland contended that the Lotus 1-2-3 menus were not copyrightable as a

    matter of law and that no reasonable trier of fact could find that the similarity between its

    products and Lotus 1-2-3 was sufficient to sustain a determination of infringement. Lotus

    contended in its motion that Borland had copied Lotus 1-2-3's entire user interface and had

    thereby infringed Lotus's copyrights.

    On July 31, 1992, the district court denied Borland's motion and PARTIALLY granted Lotus's

    motion in part. The district court ruled that the Lotus menu command hierarchy was

    copyrightable expression because a very satisfactory spreadsheet menu tree can be constructed

    using different commands and a different command structure from those of Lotus 1-2-3.

    Because so many variations were possible, the district court concluded that the Lotus

    developers' choice and arrangement of command terms, reflected in the Lotus menu command

    hierarchy, constituted copyrightable expression. Additionally, the district court granted Lotus

    summary judgment on Borland's affirmative defense of waiver, but not on its affirmative

    defenses of laches and estoppel.

    xxx As a matter of law, Borland's Quattro products infringe the Lotus 1-2-3 copyright because of

    (1) the extent of copying of the "menu commands" and "menu structure" that is not genuinely

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    disputed in this case, (2) the extent to which the copied elements of the "menu commands" and

    "menu structure" contain expressive aspects separable from the functions of the "menu

    commands" and "menu structure," and (3) the scope of those copied expressive aspects as an

    integral part of Lotus 1-2-3. Xxx

    Immediately following the district court's summary judgment decision, Borland removed the

    Lotus Emulation Interface from its products. Nonetheless, Borland's programs continued to be

    partially compatible with Lotus 1-2-3, for Borland retained what it called the "Key Reader" in its

    Quattro Pro programs. Once turned on, the Key Reader allowed Borland's programs to

    understand and perform some Lotus 1-2-3 macros.

    2.a.The parties agreed to try the remaining liability issues without a jury. The district court held

    two trials, the Phase I trial covering all remaining issues raised in the original complaint (relating

    to the Emulation Interface)and the Phase II trial covering all issues raised in the supplemental

    complaint (relating to the Key Reader).

    In its Phase I-trial decision, the district court found that "each of the Borland emulation

    interfaces contains a virtually identical copy of the 1-2-3 menu tree and that the 1-2-3 menu

    tree is capable of a wide variety of expression." The district court held that Borland had failed to

    show that its use of the Lotus 1-2-3 menu command hierarchy in its Emulation Interface was a

    fair use.

    In its Phase II-trial decision, the district court found that Borland's Key Reader file included "a

    virtually identical copy of the Lotus menu tree structure, but represented in a different form and

    with first letters of menu command names in place of the full menu command names."

    Accordingly, the district court held that with its Key Reader, Borland had infringed Lotus's

    copyright. The district court also rejected Borland's affirmative defenses of waiver, laches,

    estoppel, and fair use. The district court then entered a permanent injunction against Borland,

    from which Borland appeals.

    3.a. APPEAL

    This appeal concerns only Borland's copying of the Lotus menu command hierarchy into its

    Quattro programs and Borland's affirmative defenses to such copying. Lotus has not cross-

    appealed; meaning, it does not contend on appeal that the district court erred in finding that

    Borland had not copied other elements of Lotus 1-2-3, such as its screen displays.

    On appeal, Borland does not dispute that it factually copied the words and arrangement of the

    Lotus menu command hierarchy. Rather, Borland argues that it "lawfully copied the

    unprotectable menus of Lotus 1-2-3." Borland contends that the Lotus menu command

    hierarchy is not copyrightable because it is a system, method of operation, process, or

    procedure foreclosed from protection by 17 U.S.C. 102(b). Borland also raises a number of

    affirmative defenses.

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    ISSUE:Whether or not the Lotus menu command hierarchy is copyrightable subject matter?

    (case of first impression)

    HELD:

    No. Judgment of District Court is reversed.

    Accepting the district court's finding that the Lotus developers made some expressive choices in

    choosing and arranging the Lotus command terms, we nonetheless hold that that expression is

    not copyrightablebecause it is part of Lotus 1-2-3's "method of operation." We do not think

    that "methods of operation" are limited to abstractions; rather, they are the means by which a

    user operates something. If specific words are essential to operating something, then they are

    part of a "method of operation" and, as such, are unprotectable. This is so whether they must

    be highlighted, typed in, or even spoken, as computer programs no doubt will soon be

    controlled by spoken words.

    Our holding that "methods of operation" are not limited to mere abstractions is bolstered by

    Baker v. Selden. In Baker, the Supreme Court explained that the teachings of science and the

    rules and methods of useful art have their final end in application and use; and this application

    and use are what the public derive from the publication of a book which teaches them. . . . 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 is explanation; the object of the

    other 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.

    Baker v. Selden, 101 U.S. at 104-05. Lotus wrote its menu command hierarchy so that people

    could learn it and use it. Accordingly, it falls squarely within the prohibition on copyright

    protection established in Baker v. Selden and codified by Congress in 102(b).

    Morrissey v. Procter & Gamble 379 F.2d 675 (1967) KIKOY

    Morrissey v. Procter & Gamble Co., 379 F.2d 675, 154 U.S.P.Q. (BNA) 193 (1st Cir. 1967)

    Doctrine: The court established the principle that where a work was so simple and so straightforward as

    to leave available only a limited number of forms of expression of the substance of the subject matter, the

    expression would be uncopyrightable.

    Facts: The plaintiff, Morrissey, is the copyright owner of a set of rules for a sales promotional contest ofthe "sweepstakes" type involving the social security numbers of the participants. Plaintiff alleges that the

    defendant, Procter & Gamble Company, infringed, by copying, almost precisely, Rule 1. In its motion for

    summary judgment, based upon affidavits and depositions, defendant denies that plaintiffs Rule 1 is

    copyrightable material, and denies access. The district court held for the defendant on both grounds.

    Issue/s: Are sweepstakes rules copyrightable subject matter?

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    In the subsequent suit brought in the United States District Court for the Southern

    District of New York, Charles S. Haight, Jr., Judge, the district court granted summary

    judgment on both the copyright and trademark claims to defendant Cascade Pacific

    Lumber Co., d/b/a Columbia Cascade Co., manufacturer of a similar bicycle rack.

    The argument used by Cascade in the trial court is that Brandir could not

    copyright the bike racks because they weren't works of art, they were

    utilitarian, and utilitarian items (aka useful articles) are not copyrightable

    ISSUE: WON Red Rack is copyrightable? NO

    HELD:

    US COURT OF APPEALS - affirm as to the copyright claim, but reverse and remand as to

    the trademark claim.

    Applying Professor Denicola's test to the RIBBON Rack, we find that the rack is not

    copyrightable. It seems clear that the form of the rack is influenced in significant

    measure by utilitarian concerns and thus any aesthetic elements cannot be said to be

    conceptually separable from the utilitarian elements. This is true even though the

    sculptures which inspired the RIBBON Rack may well have been--the issue of originality

    aside--copyrightable.

    Had Brandir merely adopted one of the existing sculptures as a bicycle rack, neither the

    application to a utilitarian end nor commercialization of that use would have caused the

    object to forfeit its copyrighted status. Comparison of the RIBBON Rack with the earlier

    sculptures, however, reveals that while the rack may have been derived in part from

    one of more "works of art," it is in its final form essentially a product of industrial

    design. In creating the RIBBON Rack, the designer has clearly adapted the original

    aesthetic elements to accommodate and further a utilitarian purpose. These altered

    design features of the RIBBON Rack, including the spacesaving, open design achieved by

    widening the upper loops to permit parking under as well as over the rack's curves, the

    straightened vertical elements that allow in and above-ground installation of the rack,

    the ability to fit all types of bicycles and mopeds, and the heavy-gauged tubular

    construction of rustproof galvanized steel, are all features that combine to make for a

    safe, secure, and maintenance-free system of parking bicycles and mopeds. Its

    undulating shape is said in Progressive Architecture, January 1982, to permit double the

    storage of conventional bicycle racks. Moreover, the rack is manufactured from 2 3/8-

    inch standard steam pipe that is bent into form, the six-inch radius of the bends

    evidently resulting from bending the pipe according to a standard formula that yields

    bends having a radius equal to three times the nominal internal diameter of the pipe.

    Brandir argues that its RIBBON Rack can and should be characterized as a sculptural

    work of art within the minimalist art movement. Minimalist sculpture's most

    outstanding feature is said to be its clarity and simplicity, in that it often takes the form

    of geometric shapes, lines, and forms that are pure and free of ornamentation and void

    of association. . . .

    It is unnecessary to determine whether to the art world the RIBBON Rack properly

    would be considered an example of minimalist sculpture. The result under the

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    copyright statute is not changed. Using the test we have adopted, it is not enough that,

    to paraphrase Judge Newman, the rack may stimulate in the mind of the reasonable

    observer a concept separate from the bicycle rack concept. While the RIBBON Rack may

    be worthy of admiration for its aesthetic qualities alone, it remains nonetheless the

    product of industrial design. Form and function are inextricably intertwined in the rack,

    its ultimate design being as much the result of utilitarian pressures as aesthetic choices.

    Indeed, the visually pleasing proportions and symetricality of the rack represent design

    changes made in response to functional concerns. Judging from the awards the rack has

    received, it would seem in fact that Brandir has achieved with the RIBBON Rack the

    highest goal of modern industrial design, that is, the harmonious fusion of function and

    aesthetics. Thus there remains no artistic element of the RIBBON Rack that can be

    identified as separate and "capable of existing independently of, the utilitarian aspects

    of the article."

    CONCUR & DISSENT : WINTER. J.,

    WINTER. J., concurring in part and dissenting in part: Although I concur in the reversal of

    the district court's grant of summary judgment on the trademark and unfair competition

    claims, I respectfully dissent from the majority's discussion and disposition of the

    copyright claim.

    . . . The grounds of my disagreement are that: (1) my colleagues' adaptation of

    Professor Denicola's test diminishes the statutory concept of "conceptual separability"

    to the vanishing point; and (2) their focus on the process or sequence followed by the

    particular designer makes copyright protection depend upon largely fortuitous

    circumstances concerning the creation of the design in issue.

    With regard to "conceptual separability," my colleagues deserve considerable credit for

    their efforts to reconcile Carol Barnhart, Inc. v. Economy Cover Corp.. . . with Kieselstein-

    Cord v. Accessories by Pearl, Inc.. . . . In my view, these cases are not reconcilable. Carol

    Bamhart paid only lip service to the fact that the "conceptual separability" of an article's

    aesthetic utilitarian aspects may render the design of a "useful article" a copyrightable

    "sculptural work." 17 U.S.C. ' 101 (1982). Actually, the Carol Barnhart majority applied a

    test of physical separability. . . .

    My colleagues' adaptation of the Denicola test tracks the Carol Barnhartapproach,

    whereas I would adopt that taken in Kieselstein-Cord, which allows for the

    copyrightability of the aesthetic elements of useful articles even if those elements

    simultaneously perform utilitarian functions. The latter approach received its fullest

    elaboration in Judge Newman's dissent in Carol Barnhart. . . .

    In other words, the relevant question is whether the design of a useful article, however

    intertwined with the article's utilitarian aspects, causes an ordinary reasonable observer

    to perceive an aesthetic concept not related to the article's use. The answer to this

    question is clear in the instant case because any reasonable observer would easily view

    the Ribbon Rack as an ornamental sculpture. Indeed, there is evidence of actual

    confusion over whether it is strictly ornamental in the refusal of a building manager to

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    accept delivery until assured by the buyer that the Ribbon Rack was in fact a bicycle

    rack. Moreover, Brandir has received a request to use the Ribbon Rack as

    environmental sculpture, and has offered testimony of art experts who claim that the

    Ribbon Rack may be valued solely for its artistic features. As one of those experts

    observed: "If one were to place a Ribbon Rack on an island without access, or in a park

    and surround the work with a barrier, . . . its status as a work of art would be beyond

    dispute."

    My colleagues also allow too much to turn upon the process or sequence of design

    followed by the designer of the Ribbon Rack. . . . I cannot agree that copyright

    protection for the Ribbon Rack turns on whether Levine serendipitously chose the final

    design of the Ribbon Rack during his initial sculptural musings or whether the original

    design had to be slightly modified to accommodate bicycles. Copyright protection,

    which is intended to generate incentives for designers by according property rights in

    their creations, should not turn on purely fortuitous events. For that reason, the

    Copyright Act expressly states that the legal test is how the final article is perceived, not

    how it was developed through various stages.

    2.5 Scope of Copyright

    Article 2, Berne convention for the Protection of Literacy and Artistic and Artistic Works

    Article 2Protected Works:

    1. Literary and artistic works; 2. Possible requirement of fixation; 3. Derivative works;4. Off ic ia l texts; 5. Col lect ions; 6. Obl igat ion to protect ; benef ic iar ies of pro tect ion;

    7. Works of appl ied art and indu str ia l designs; 8. News

    (1) The expression literary and artistic works shall include every production in the literary, scientific and artistic

    domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures,addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic worksand entertainments in dumb show; musical compositions with or without words; cinematographic works to which areassimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture,sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a processanalogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional worksrelative to geography, topography, architecture or science.

    (2) It shall, however, be a matter for legislation in the countries of the Union to prescribe that works in general or anyspecified categories of works shall not be protected unless they have been fixed in some material form.

    (3) Translations, adaptations, arrangements of music and other alterations of a literary or artistic work shall beprotected as original works without prejudice to the copyright in the original work.

    (4) It shall be a matter for legislation in the countries of the Union to determine the protection to be granted to officialtexts of a legislative, administrative and legal nature, and to official translations of such texts.

    (5) Collections of literary or artistic works such as encyclopaedias and anthologies which, by reason of the selectionand arrangement of their contents, constitute intellectual creations shall be protected as such, without prejudice to thecopyright in each of the works forming part of such collections.

    (6) The works mentioned in this Article shall enjoy protection in all countries of the Union. This protection shalloperate for the benefit of the author and his successors in title.

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    (7) Subject to the provisions ofArticle 7(4) of this Convention, it shall be a matter for legislation in the countries of theUnion to determine the extent of the application of their laws to works of applied art and industrial designs andmodels, as well as the conditions under which such works, designs and models shall be protected. Works protectedin the country of origin solely as designs and models shall be entitled in another country of the Union only to suchspecial protection as is granted in that country to designs and models; however, if no such special protection isgranted in that country, such works shall be protected as artistic works.

    (8) The protection of this Convention shall not apply to news of the day or to miscellaneous facts having the characterof mere items of press information.

    Sections 172, 172.2, 173.2, 174, IPC

    172.2. Works are protected by the sole fact of their creation, irrespective of

    their mode or form of expression, as well as of their content, quality

    and purpose. (Sec. 2, P.D. No. 49a)

    SECTION 173. Derivative Works.

    173.2. The works referred to in paragraphs (a) and (b) of Subsection 173.1

    shall be protected as new works: Provided however, That such new

    work shall not affect the force of any subsisting copyright upon the

    original works employed or any part thereof, or be construed to imply

    any right to such use of the original works, or to secure or extend

    copyright in such original works. (Sec. 8, P.D. 49; Art. 10, TRIPS)

    SECTION 174. Published Edition of Work. In addition to the right to

    publish granted by the author, his heirs, or assigns, the publisher shall have

    a copyright consisting merely of the right of reproduction of the typographical

    arrangement of the published edition of the work. (n)

    Section 175, IPC

    SECTION 175. Unprotected Subject Matter. Notwithstanding the

    provisions of Sections 172 and 173, no protection shall extend, under this

    law, to any idea, procedure, system, method or operation, concept, principle,

    discovery or mere data as such, even if they are expressed, explained,

    illustrated or embodied in a work; news of the day and other miscellaneous

    facts having the character of mere items of press information; or any official

    text of a legislative, administrative or legal nature, as well as any official

    translation thereof. (n)

    Section 176, IPC

    SECTION 176. Works of the Government.

    176.1. No copyright shall subsist in any work of the Government of the

    Philippines. However, prior approval of the government agency or

    http://www.wipo.int/treaties/en/text.jsp?file_id=283698#P131_23443http://www.wipo.int/treaties/en/text.jsp?file_id=283698#P131_23443
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    office wherein the work is created shall be necessary for exploitation

    of such work for profit. Such agency or office may, among other

    things, impose as a condition the payment of royalties. No prior

    approval or conditions shall be required for the use for any purpose

    of statutes, rules and regulations, and speeches, lectures, sermons,

    addresses, and dissertations, pronounced, read or rendered in courts

    of justice, before administrative agencies, in deliberative assemblies

    and in meetings of public character. (Sec. 9, first par., P.D. No. 49)

    176.2. The author of speeches, lectures, sermons, addresses, and

    dissertations mentioned in the preceding paragraphs shall have the

    exclusive right of making a collection of his works. (n)

    176.3. Notwithstanding the foregoing provisions, the Government is not

    precluded from receiving and holding copyrights transferred to it by

    assignment, bequest or otherwise; nor shall publication or

    republication by the Government in a public document of any work in

    which copyright is subsisting be taken to cause any abridgment or

    annulment of the copyright or to authorize any use or appropriation

    of such work without the consent of the copyright owner. (Sec. 9,

    third par., P.D. No. 49)

    Joaquin v. Drilon,302 SCRA 225 (1999) YSA

    Doctrine: The format of a show is not copyrightable.

    Facts: Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright of

    Rhoda and Me, a dating game show aired from 1970 to 1977. Petitioner BJPI submitted to the

    National Library an addendum to its certificate of copyright specifying the shows format and style

    of presentation.

    While watching TV, petitioner Francisco Joaquin, Jr., president of BJPI, saw on RPN Channel 9

    an episode of Its a Date, which was produced by IXL Productions, Inc. (IXL). He wrote 2 letters to

    private respondent Gabriel M. Zosa, president and general manager of IXL, informing Zosa that

    BJPI had a copyright to Rhoda and Meand demanding that IXL discontinue airing Its a Date.

    However, IXL continued airing Its a Date. Meanwhile, the National Library issued a certificate of

    copyright for the first episode ofIts a Date.

    Upon complaint of petitioners, an information for violation of P.D. No. 49 was filed against private

    respondent Zosa together with certain officers of RPN Channel 9, namely, William Esposo,

    Felipe Medina, and Casey Francisco, in the RTC of QC. Zosa sought a review of the resolution of

    the Assistant City Prosecutor before the Department of Justice.

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    Respondent Secretary of Justice Franklin M. Drilon reversed the Assistant City Prosecutors

    findings and directed him to move for the dismissal of the case against private respondents.

    Petitioner Joaquin filed a MR but was denied. Hence, this petition.

    Petitioners assert that the format of Rhoda and Meis a product of ingenuity and skill and is thus

    entitled to copyright protection. It is their position that the presentation of a point-by-point

    comparison of the formats of the two shows clearly demonstrates the nexus between the shows

    and hence establishes the existence of probable cause for copyright infringement. Such being

    the case, they did not have to produce the master tape.

    Both public and private respondents maintain that petitioners failed to establish the existence of

    probable cause due to their failure to present the copyrighted master videotape of Rhoda and Me.

    They contend that petitioner BJPIscopyright covers only a specific episode of Rhoda and Me

    and that the formats or concepts of dating game shows are not covered by copyright protection

    under P. D. No. 49.

    Issue: WON a format of a show is copyrightable.

    Held: NO. The format of a show is not copyrightable. Section 2 of P.D. No. 49, otherwise known

    as the DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of work entitled to

    copyright protection.This provision is substantially the same as 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 2 of P.D. No. 49. For this reason,

    the protection afforded by the law cannot be extended to cover them. Since copyright in published

    works is purely a statutory creation, a copyright may be obtained only for a work falling within the

    statutory enumeration or description.

    P.D. No. 49, 2, in enumerating what are subject to copyright, refers to finished works and not to

    concepts. Further, 175 of R.A. No. 8293 provides that 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.

    Petitioner BJPIs copyright covers audio-visual recordings of each episode of Rhoda and Me, as

    falling within the class of works mentioned in P.D. 49, 2(M), to wit: Cinematographic works and

    works produced by a process analogous to cinematography or any process for making audio-

    visual recordings.

    The copyright does not extend to the general concept or format of its dating game show.

    Accordingly, by the very nature of the subject of petitioner BJPIs copyright, the investigating

    prosecutor should have the opportunity to compare the videotapes of the two shows. 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. As aptly observed by respondent Secretary of Justice: A television

    show includes more than mere words can describe because it involves a whole spectrum of

    visuals and effects, video and audio, such that no similarity or dissimilarity may be found by

    merely describing the general copyright/format of both dating game shows. PETITION

    DISMISSED.

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    Provisions:

    PD 49, Section 2.The rights granted by this Decree shall, f rom the moment of creation, subsist with respect to any of the

    following classes of works:(A) Books, including composite and cyclopedic works, manuscripts, directories, and gazetteers;(B) Periodicals, including pamphlets and newspapers;(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;(D) Letters;(E) Dramatic or dramatico-musical compositions; choreographic works and entertainments in dumb shows, the acting

    form of which is fixed in writing or otherwise;(F) Musical compositions, with or without words;(G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and other works of art; models or designs

    for works of art;(H) Reproductions of a work of art;(I) Original ornamental designs or models for articles of manufacture, whether or not patentable, and other works of

    applied art;(J) Maps, plans, sketches, and charts;(K) Drawings or plastic works of a scientific or technical character;(L) Photographic works and works produced by a process analogous to photography; lantern slides;(M) Cinematographic works and works produced by a process analogous to cinematography or any process for making

    audio-visual recordings;

    (N) Computer programs;(O) Prints, pictorial illustrations advertising copies, labels, tags, and box wraps;(P) Dramatizations, translations, adaptations, abridgements, arrangements and other alterations of literary, musical or

    artistic works or of works of the Philippine government as herein defined, which shall be protected as provided in Section

    8 of this Decree.(Q) Collections of literary, scholarly, or artistic works or of works referred to in Section 9 of this Decree which by reason of

    the selection and arrangement of their contents constitute intellectual creations, the same to be protected as such in

    accordance with Section 8 of this Decree.(R) Other literary, scholarly, scientific and artistic works.

    RA 8293, 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.

    Other issues not related to topic:Petitioners claim that their failure to submit the copyrighted master videotape of the television show Rhoda and Mewas

    not raised in issue by private respondents during the preliminary investigation and, therefore, it was error for the Secretary

    of Justice to reverse the investigating prosecutors finding of probable cause on this ground. SC: In reviewing resolutions

    of prosecutors, the Secretary of Justice is not precluded from considering errors, although unassigned, for the purpose of

    determining whether there is probable cause for filing cases in court. He must make his own finding of probable cause

    and is not confined to the issues raised by the parties during preliminary investigation. Moreover, his findings are not

    subject to review unless shown to have been made with grave abuse.

    Petitioners contend, however, that the determination of the question whether the format or mechanics of a show is entitled

    to copyright protection is for the court, and not the Secretary of Justice, to make. SC: It is indeed true that the question

    whether the format or mechanics of petitioners television show is entitled to copyright protection is a legal question for the

    court to make. This does not, however, preclude respondent Secretary of Justice from making a preliminary determinationof this question in resolving whether there is probable cause for filing the case in court. In doing so in this case, he did not

    commit any grave error.

    United Features Syndicate v. Munsingwear, 179 SCRA 260 (1989) EUMIR- Republic of

    the PhilippinesSUPREME COURT

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    ManilaSECOND DIVISION

    G.R. No. 76193 November 9, 1989UNITED FEATURE SYNDICATE, INC.,petitioner,vs.MUNSINGWEAR CREATION MANUFACTURING COMPANY, respondent.Quasha, Asperilla, Ancheta, Pena and Nolasco for petitioner.Jaime G. Manzano for private respondent.

    PARAS, J.:

    DOCTRINE: In upholding the right of the petitioner to maintain the present suit before our courts for

    unfair competition or infringement of trademarks of a foreign corporation, we are moreover recognizing

    our duties and the rights of foregoing states under the Paris Convention for the Protection of Industrial

    Property to which the Philippines and (France) U.S. are parties. We are simply interpreting a solemn

    international commitment of the Philippines embodied in a multilateral treaty to which we are a party and

    which we entered into because it is in our national interest to do so.[E1]

    FACTS: This case arose from petition filed by petitioner for the cancellation of the registration of

    trademark CHARLIE BROWN (Registration No. SR. 4224) in the name of respondent MUNSINGWEAR

    in Inter Partes Case No. 1350 entitled "United Feature Syndicate, Inc. v. Munsingwear Creation Mfg. Co.",

    with the Philippine Patent Office alleging that petitioner is damaged by the registration of the trademark

    CHARLIE BROWN of T-Shirts under Class 25 with the Registration No. SR-4224 dated September 12,

    1979 in the name of Munsingwear Creation Manufacturing Co., Inc., on the following grounds: (1) that

    respondent was not entitled to the registration of the mark CHARLIE BROWN, & DEVICE at the time of

    application for registration; (2) that CHARLIE BROWN is a character creation or a pictorial illustration,

    the copyright to which is exclusively owned worldwide by the petitioner; (3) that as the owner of the

    pictorial illustration CHARLIE BROWN, petitioner has since 1950 and continuously up to the present,

    used and reproduced the same to the exclusion of others; (4) that the respondent-registrant has no bona fide

    use of the trademark in commerce in the Philippines prior to its application for registration. (Petition, p. 2,

    Rollo, p. 8)On October 2, 1984 the Director of the Philippine Patent Office rendered a decision in this case holding

    that a copyright registration like that of the name and likeness of CHARLIE BROWN may not provide a

    cause of action for the cancellation of a trademark registrationFrom this decision, petitioner-appellant appealed to the Court of Appeals and respondent court in its

    resolution dated September 16, 1986 denied the appeal. While the Motion for Reconsideration was filed on

    time, that is, on the last day within which to appeal, still it is a mere scrap of paper because there was no,

    date, of hearing stated therein

    Issue: Should the appeal be allowed? Is petitioner entitled to protection of its copyright?

    Held: Petitioner's contention that the purpose of a notice of hearing to the adverse party is to afford him an

    opportunity to resist the motion, more particularly the motion for reconsideration filed by its company is

    well taken. Said purpose was served when Munsingwear filed its opposition thereto on November 20, 1984

    and cured the technical defect of lack of notice of hearing complained of (Rollo, p. 52). Otherwise stated

    such shortcomings of petitioner as to compliance with procedural requirements in taking its appeal cannot

    be deemed sufficient to deprive it of a chance to secure a review by this court in order to obtain substantial

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    justice; more so where liverality accorded to the petitioner becomes compelling because of the ostensible

    merit of petitioner's case.

    Petitioner further stresses that Decision No. 84-83 (TM) promulgated by the Philippine Patent Office on

    October 2, 1984 which held that "the name likeness of CHARLIE BROWN may not provide a cause of

    action for the cancellation of a trademark registration," was based in the conclusion made in the case of

    "Children's Television Workshop v. touch of Class" earlier decided by the Director of Patent Office on May

    10, 1984. However, when the latter case was appealed to the then Intermediate Appellate Court, docketed

    as A.C. G.R. SP No. 03432, the appellate court reversed the decision of the Director holding said appealed

    decision as illegal and contrary to law. this reversal was affirmed by this Court on August 7, 1985 in G.R.

    No. 71210 by denying the petition of respondent Touch of Class.The Court of Appeals in reversing the Director of Patent's decision in Touch of Class, Inc. succintly said:The Patents Office ruled that a trademark, unlike a label, cannot be copyrighted. The "Cookie Monster" is

    not, however, a trademark. It is a character in a TV series entitled "Sesame Street." It was respondent which

    appropriated the "Cookie Monster" as a trademark, after it has been copyrighted. We hold that the exclusive

    right secured by PD 49 to the petitioner precludes the appropriation of the "Cookie Monster" by the

    respondent.

    Pertinently, Section 2 of Presidential Decree No. 49, otherwise known as the "Decree on Intellectual

    Property", provides:Section 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any

    of the following classes of works:xxx xxx xxx(O) Prints, pictorial illustrations, advertising copies, labels, tags and box wraps. ...

    Therefore, since the name "CHARLIE BROWN" and its pictorial representation were covered by a

    copyright registration way back in 1950 the same are entitled to protection under PD No. 49.Aside from its copyright registration, petitioner is also the owner of several trademark registrations and

    application for the name and likeness of "CHARLIE BROWN" which is the duly registered trademark and

    copyright of petitioner United Feature Syndicate Inc. as early as 1957 and additionally also as TV

    SPECIALS featuring the "PEANUTS" characters "CHARLIE BROWN" (Memorandum, Rollo p. 97

    [211]).An examination of the records show that the only appreciable defense of respondent-registrant is embodied

    in its answer, which reads:

    It uses, the trademark "CHARLIE BROWN" & "DEVICE" on children's wear such as T-shirts, undershirts,

    sweaters, brief and sandos, in class 25; whereas "CHARLIE BROWN" is used only by petitioner as

    character, in a pictorial illustration used in a comic strip appearing in newspapers and magazines. It has no

    trademark significance and therefore respondent-registrant's use of "CHARLIE BROWN" & "DEVICE" is

    not in conflict with the petitioner's use of "CHARLIE BROWN" (Rollo, p. 97 [21]).

    It is undeniable from the records that petitioner is the actual owner of said trademark due to its prior

    registration with the Patent's Office.

    Finally, inLa Chemise Lacoste S.A. v. Hon. Oscar Fernandez & GobindramHemandas Sujanani v. Hon.

    Roberto V. Ongpin, et al. 129 SCRA 373 [1984]), the Court declared.In upholding the right of the petitioner to maintain the present suit before our courts for unfair competition

    or infringement of trademarks of a foreign corporation, we are moreover recognizing our duties and the

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    rights of foregoing states under the Paris Convention for the Protection of Industrial Property to which the

    Philippines and (France) U.S. are parties. We are simply interpreting a solemn international commitment of

    the Philippines embodied in a multilateral treaty to which we are a party and which we entered into because

    it is in our national interest to do so.

    PREMISES CONSIDERED, the Resolutions of the Court of Appeals dated September 16, 1985 and

    October 14, 1986 dismissing petitioner's appeal are hereby SET ASIDE and Certificate of Registration no.

    SR-424 issued to private respondent dated September 12, 1979 is hereby CANCELLED.

    Feist Publications, Inc. v. Rural Tel. Service Co., 499 U.S. 340 LOREN

    FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE SERVICE CO., 499 U.S. 340 (1991)

    O'CONNOR, J., (9votes in favor of Feist0 vote against)

    DOCTRINE:

    - To qualify for copyright protection, a work must be original to the author, which means

    that the work was independently created by the author, a