Ip+Reviewer+Complete

Intellectual Property Law

RA 8293

-

for the protection of creative works/intangible goods (goods that are expressions of the mind)

-

framework: “What are they really protecting?”

Tangibles Inventions

Property Patents

Utility

Models

Industrial

Industrial Designs

Property Trade

Secrets

Intangibles

Trade Marks

Creative

Copyrights

Rights

Neighboring Rights

Patents – grants by the State given to someone so he will have monopoly right over his property

-

in exchange for you revealing something 1)new, 2) useful, and 3) has an inventive step, state

gives you protection

-

Utility Model – no inventive step so lesser right and protection but it is still useful

-

Industrial Design – has an artistic/aesthetic appeal

Trade Secrets – anything that will provide business with competitive advantage,

e.g. list of customers of marketing company

-

not protected under the IP Code, but governed by contracts

e.g. employee contracts

Trademarks – don’t protect innovation, protects goodwill

-

specific mark on goods – trademarks, servicemarks, certification marks, geographic indicators,

trade names, trade dress

-

even if not registered, as long as there is goodwill, you can sue

-

a “business identification system”

-

before Jan. 1, 1998, RP used first to use system (whoever uses first has the trademark) with an

exception to internationally known marks (e.g. Lacoste case)

-

now, RP is a first to file jurisdiction

Q. Before Jan. 1, 1998, an RP company registered Lacoste trademark, used it. It was first to use. Lacoste

filed trademark infringement suit. It was proven that the brand was already known in RP by people who had

travelled to Europe. Since RP is first to use jurisdiction, RP company has trademark?

Q. McDo came to RP in 1970. In 1980s, they had huge marketing campaign so they became known in RP. Big

Mack was a large hamburger chain in the provinces. In 1980, McDo filed trademark infringement case. It was

proven that some people actually think Big Mack is affiliated with McDo and was creating confusion.

A. Big Mack wins. Trademark protects goodwill. McDo’s goodwill was established in 1980. It was proven here

that Big Mack was already established in RP before McDo became known because of the mktg campaign.

Q. You have carinderia, “Cooking Ina Mo”. Neighbor sets up “Cooking ng Ina Mo Rin.” Trademark infringement?

A. Maybe not. It does not cause/create confusion.

Creative Rights – protect unique expression of an idea

1. copyright – moral right

- what is protected is unique expression of an idea. So Einstein’s e=mc

2

_{is not}

protected, but the dissertation where he explained the idea is protected.

2. neighboring rights – performer’s rights

-

what is protected is not idea but distinct/unique expression

Technology Transfer Agreements – e.g. licensing.

Aside from patents, copyrights, there are other means of protecting property in other nations

Q. Do intangibles have to be registered to enjoy protection?

A. Generally, industrial property must be registered. No need to register in creative rights – the moment you

create it, it’s yours. Registration of books in the National Library is only proof of copyright

US – computer programs are protected by patents. In RP, only copyright.

International Treaties Protecting Copyrights

1. Berne Convention – for protection of literary works, established in Aug. 1, 1951.

Core Principles:

1. national treatment – nationals from different states should have protection of their own works

2. principle of automatic protection – no need to register copyrights

3. principle of independence of protection – treat foreigners the way you protect nationals

2. TRIPS Agreement – Trade Related Aspects of IP Rights, a sub-agreement of the GATT,

Principles:

1. Establishment of minimum standards of protection as to enforcement of IPR transnationally

2. National treatment – of the IP owner

3. Most favored nation principle – treat all signatories similarly, no special treatment should be given

to any nation

Q. When can you not invoke copyright?

A. When there is:

1. Conflict with normal exploitation of work

2. When it prejudices the right of legitimate owner of right of work

Issues:

copyright protection like Mickey Mouse are gradually entering public domain (since copyright lasts until 50

years after the death of creator) so there are moves to extend the term protection

but Shakespeare works are public domain – so is extending term a good thing?

-

US passed the Sonny Bono copyright extension act

-

new technologies include internet and digital works

-

now, temporary copies are protected (temporary – something you download from internet)

-

new rights are created:

1. right to distribution

2. rental right – right of author to rent out cinematic works, phonograms, computer programs

- you can’t rent out your copy of Windows 2002 CD. But if your Palm Pilot breaks

down and you rent a Palm with Windows, it’s okay, since computer program isn’t the

“thing of rent”

3. right of communication to public – wire/wireless means

Principles:

1. circumvention of technology measures – e.g. DVD contents handling system

2. concealment of infringement – search and seizure is given in civil cases

-

before, state files for search warrant, now, since civil case, private party can file for search

warrant and get injunction

3. protection is granted from the time of creation

NOTE: WIPO treaty is already ratified but still need enabling legislation, either in the form of new law of

amendment of the IP Code

PART IV

THE LAW ON COPYRIGHT

Copyright

–

is a bundle of rights e.g. JKR can sell various rights like right to publish (Scholastic), right to make a movie

from her story (Warner), right to make toys from characters (e.g., Mattel)

–

a “negative right” since it prevents you from enjoying, deriving benefit

–

property protected is “intellectual”

–

use consists of derivative rights, e.g. reproduction, translation, dramatization

Q. Database, is this protected?

A. Facts alone are not protected (same for multimedia). But if you do some arrangement on the information,

that is protected.

Q. Creativity = Originality?

A. No. In copyright, what is important is originality. As long as it is yours, it is protected.

List of Ateneo Grads – public domain

List of Ateneo Grades who worked in Judiciary – protected

if someone else rearranges your list and does your list in alphabetical order – you can sue

if there is distinction in the way the facts were selected, coordinated, arranged and presented,

copyrightable

Novelty – an essential element in patentability

-

means that no one else in the world has come up with the same invention anywhere, anytime

-

not the same with originality, although in both, you come up with a new idea

-

if you develop it without outside influence, you can copyright. Several people can own the

copyright but only one person can hold the patent

S

EC

. 171.

D

EFINITIONS

.

- F

OR THE PURPOSE OF THIS

A

CT

,

THE FOLLOWING TERMS HAVE THE FOLLOWING MEANING

:

171.2. A

COLLECTIVE WORK

"

IS A WORK WHICH HAS BEEN CREATED BY TWO

(2)

OR MORE NATURAL PERSONS AT THE INITIATIVE AND UNDER THE DIRECTION OF ANOTHER WITH THE UNDERSTANDING THAT IT WILL BE DISCLOSED BY THE LATTER UNDER HIS OWN NAME AND THAT CONTRIBUTING NATURAL PERSONS WILL NOT BE IDENTIFIED

;

"

"

"

171.3.

"C

OMMUNICATION TO THE PUBLIC

"

OR

"

COMMUNICATE TO THE PUBLIC

"

MEANS THE MAKING OF A WORK AVAILABLE TO THE PUBLIC BY WIRE OR WIRELESS MEANS IN SUCH A WAY THAT MEMBERS OF THE PUBLIC MAY ACCESS THESE WORKS FROM A PLACE AND TIME INDIVIDUALLY CHOSEN BY THEM

;

171.4. A

COMPUTER

"

IS AN ELECTRONIC OR SIMILAR DEVICE HAVING INFORMATION

-

PROCESSING CAPABILITIES

,

AND A

"

COMPUTER PROGRAM

"

IS A SET OF INSTRUCTIONS EXPRESSED IN WORDS

,

CODES

,

SCHEMES OR IN ANY OTHER FORM

,

WHICH IS CAPABLE WHEN INCORPORATED IN A MEDIUM THAT THE COMPUTER CAN READ

,

OR CAUSING THE COMPUTER TO PERFORM OR ACHIEVE A PARTICULAR TASK OR RESULT

;

171.5.

"P

UBLIC LENDING

"

IS THE TRANSFER OF POSSESSION OF THE ORIGINAL OR A COPY OF A WORK OR SOUND RECORDING FOR A LIMITED PERIOD

,

FOR NON

-

PROFIT PURPOSES

,

BY AN INSTITUTION THE SERVICES OF WHICH ARE AVAILABLE TO THE PUBLIC

,

SUCH AS PUBLIC LIBRARY OR ARCHIVE

;

171.6.

"P

UBLIC PERFORMANCE

,"

IN THE CASE OF A WORK OTHER THAN AN AUDIOVISUAL WORK

,

IS THE RECITATION

,

PLAYING

,

DANCING

,

ACTING OR OTHERWISE PERFORMING THE WORK

,

EITHER DIRECTLY OR BY MEANS OF ANY DEVICE OR PROCESS

;

IN THE CASE OF AN AUDIOVISUAL WORK

,

THE SHOWING OF ITS IMAGES IN SEQUENCE AND THE MAKING OF THE SOUNDS ACCOMPANYING IT AUDIBLE

;

AND

,

IN THE CASE OF A SOUND RECORDING

,

MAKING THE RECORDED SOUNDS AUDIBLE AT A PLACE OR AT PLACES WHERE PERSONS OUTSIDE THE NORMAL CIRCLE OF A FAMILY AND THAT FAMILY

’

S CLOSEST SOCIAL ACQUAINTANCES ARE OR CAN BE PRESENT

,

IRRESPECTIVE OF WHETHER THEY ARE OR CAN BE PRESENT AT THE SAME PLACE AND AT THE SAME TIME

,

OR AT DIFFERENT PLACES AND

/

OR AT DIFFERENT TIMES

,

AND WHERE THE PERFORMANCE CAN BE PERCEIVED WITHOUT THE NEED FOR COMMUNICATION WITHIN THE MEANING OF

S

UBSECTION

171.3;

171.7.

"P

UBLISHED WORKS

"

MEANS WORKS

,

WHICH

,

WITH THE CONSENT OF THE AUTHORS

,

ARE MADE AVAILABLE TO THE PUBLIC BY WIRE OR WIRELESS MEANS IN SUCH A WAY THAT MEMBERS OF THE PUBLIC MAY ACCESS THESE WORKS FROM A PLACE AND TIME INDIVIDUALLY CHOSEN BY THEM

:

P

ROVIDED

,

T

HAT AVAILABILITY OF SUCH COPIES HAS BEEN SUCH

,

AS TO SATISFY THE REASONABLE REQUIREMENTS OF THE PUBLIC

,

HAVING REGARD TO THE NATURE OF THE WORK

;

171.8.

"R

ENTAL

"

IS THE TRANSFER OF THE POSSESSION OF THE ORIGINAL OR A COPY OF A WORK OR A SOUND RECORDING FOR A LIMITED PERIOD OF TIME

,

FOR PROFIT

-

MAKING PURPOSES

;

171.9.

"R

EPRODUCTION

"

IS THE MAKING OF ONE

(1)

OR MORE COPIES OF A WORK OR A SOUND RECORDING IN ANY MANNER OR FORM

;

171.10. A

WORK OF APPLIED ART

"

IS AN ARTISTIC CREATION WITH UTILITARIAN FUNCTIONS OR INCORPORATED IN A USEFUL ARTICLE

,

WHETHER MADE BY HAND OR PRODUCED ON AN INDUSTRIAL SCALE

;

171.11. A

"

WORK OF THE

G

OVERNMENT OF THE

P

HILIPPINES

"

IS A WORK CREATED BY AN OFFICER OR EMPLOYEE OF THE

P

HILIPPINE

G

OVERNMENT OR ANY OF ITS SUBDIVISIONS AND INSTRUMENTALITIES

,

INCLUDING GOVERNMENT

-

OWNED OR CONTROLLED CORPORATIONS AS PART OF HIS REGULARLY PRESCRIBED OFFICIAL DUTIES

.

CHAPTER II

ORIGINAL WORKS

S

EC

. 172.

L

ITERARY AND

A

RTISTIC

W

ORKS

.

- 172.1 L

ITERARY 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

) B

OOKS

,

PAMPHLETS

,

ARTICLES AND OTHER WRITINGS

;

(

B

) P

ERIODICALS AND NEWSPAPERS

;

(

C

) L

ECTURES

,

SERMONS

,

ADDRESSES

,

DISSERTATIONS PREPARED FOR ORAL DELIVERY

,

WHETHER OR NOT REDUCED IN WRITING OR OTHER MATERIAL FORM

;

(

D

) L

ETTERS

;

(

E

) D

RAMATIC OR DRAMATICO

-

MUSICAL COMPOSITIONS

;

CHOREOGRAPHIC WORKS OR ENTERTAINMENT IN DUMB SHOWS

;

(

F

) M

USICAL COMPOSITIONS

,

WITH OR WITHOUT WORDS

;

(

G

) W

ORKS OF DRAWING

,

PAINTING

,

ARCHITECTURE

,

SCULPTURE

,

ENGRAVING

,

LITHOGRAPHY OR OTHER WORKS OF ART

;

MODELS OR DESIGNS FOR WORKS OF ART

;

(

H

) O

RIGINAL ORNAMENTAL DESIGNS OR MODELS FOR ARTICLES OF MANUFACTURE

,

WHETHER OR NOT REGISTRABLE AS AN INDUSTRIAL DESIGN

,

AND OTHER WORKS OF APPLIED ART

;

(

I

) I

LLUSTRATIONS

,

MAPS

,

PLANS

,

SKETCHES

,

CHARTS AND THREE

-

DIMENSIONAL WORKS RELATIVE TO GEOGRAPHY

,

TOPOGRAPHY

,

ARCHITECTURE OR SCIENCE

;

(

J

) D

RAWINGS OR PLASTIC WORKS OF A SCIENTIFIC OR TECHNICAL CHARACTER

;

(

K

) P

HOTOGRAPHIC WORKS INCLUDING WORKS PRODUCED BY A PROCESS ANALOGOUS TO PHOTOGRAPHY

;

LANTERN SLIDES

;

(

L

) A

UDIOVISUAL WORKS AND CINEMATOGRAPHIC WORKS AND WORKS PRODUCED BY A PROCESS ANALOGOUS TO CINEMATOGRAPHY OR ANY PROCESS FOR MAKING AUDIO

-

VISUAL RECORDINGS

;

(

M

) P

ICTORIAL ILLUSTRATIONS AND ADVERTISEMENTS

;

(

N

) C

OMPUTER PROGRAMS

;

AND

(

O

) O

THER LITERARY

,

SCHOLARLY

,

SCIENTIFIC AND ARTISTIC WORKS

.

172.2. W

ORKS 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

.

The thing should be “tangible” for it to come under copyright protection. (Hence, mere idea like e=mc

2

_is

not copyrightable.)

- if written, if recorded, then copyrightable. If not recorded, there is no protection because it is not in a

tangible form.

Q. Are functional objects copyrightable? E.g. Figurine Lamps

A. Test is if thing is more artistic than functional. Here, figurine lamp is more artistic so it is

copyrightable. But Magwheels would not be copyrightable because it is more functional. Cause of action is

violation of a design patent. There is no need to test the gray line since there is another source of

protection.

Q. Since only tangible things are protected, are architectural plans copyrightable?

A. Yes. This is an exception to the rule that only designs are copyrightable since architectural plans are

nothing without execution.

NOTE: There is a different rule with regard to design of chips, e.g. if design is obtained from reverse

engineering. Only plan of chip is protected so reverse engineered chip is not an infringement of copyright.

NOTE: One of the defenses to copyright infringement is absence of access. If there is no access, there

is no infringement.

C

HAPTER

III

DERIVATIVE WORKS

S

EC

. 173.

D

ERIVATIVE

W

ORKS

.

-

173.1. T

HE FOLLOWING DERIVATIVE WORKS SHALL ALSO BE PROTECTED BY COPYRIGHT

:

(

A

) D

RAMATIZATIONS

,

TRANSLATIONS

,

ADAPTATIONS

,

ABRIDGMENTS

,

ARRANGEMENTS

,

AND OTHER ALTERATIONS OF LITERARY OR ARTISTIC WORKS

;

AND

(

B

) C

OLLECTIONS OF LITERARY

,

SCHOLARLY OR ARTISTIC WORKS

,

AND COMPILATIONS OF DATA AND OTHER MATERIALS WHICH ARE ORIGINAL BY REASON OF THE SELECTION OR COORDINATION OR ARRANGEMENT OF THEIR CONTENTS

.

• Licensing is the means to protect derivative works. In licensing, JKR allows you to make movie.

Agreement should be clear: you pay for the right to make the movie, and that is all you have if you

do not stipulate on who retains copyright to the movie. Default rule is, she retains right to the

movie.

• Licensing also includes rights like coming up with the movie in DVD format.

Q. If there is copyright violation, what kind of action will you bring – criminal, civil,

administrative?

A. Criminal. So that issues like standing to sue (if you are doing business in RP) and copyright

ownership (whether Warner owns the copyright or JKR) will not come up since the State is the

offended party.

173.2. T

HE WORKS REFERRED TO IN PARAGRAPHS

(

A

)

AND

(

B

)

OF

S

UBSECTION

173.1

SHALL BE PROTECTED AS A NEW WORKS

: P

ROVIDED HOWEVER

, T

HAT 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

.

S

EC

. 174.

P

UBLISHED

E

DITION OF

W

ORK

.

- I

N ADDITION TO THE RIGHT TO PUBLISH GRANTED BY THE AUTHOR

,

HIS HEIRS OR ASSIGNS

,

THE PUBLISHER SHALL HAVE A COPY RIGHT CONSISTING MERELY OF THE RIGHT OF REPRODUCTION OF THE TYPOGRAPHICAL ARRANGEMENT OF THE PUBLISHED EDITION OF THE WORK

. (

N

)

C

HAPTER

IV

WORKS NOT PROTECTED

S

EC

. 175.

U

NPROTECTED

S

UBJECT

M

ATTER

.

- N

OTWITHSTANDING THE PROVISIONS OF

S

ECTIONS

172

AND

173,

NO PROTECTION SHALL EXTEND

,

UNDER THIS LAW

,

TO

:

(1)

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

;

(2)

NEWS OF THE DAY AND OTHER MISCELLANEOUS FACTS HAVING THE CHARACTER OF MERE ITEMS OF PRESS

INFORMATION

;

(3)

OR ANY OFFICIAL TEXT OF A LEGISLATIVE

,

ADMINISTRATIVE OR LEGAL NATURE

,

AS WELL AS ANY OFFICIAL TRANSLATION THEREOF

. (

N

)

S

EC

. 176.

W

ORKS OF THE

G

OVERNMENT

.

-

176.1. N

O COPYRIGHT SHALL SUBSIST IN ANY WORK OF THE

G

OVERNMENT OF THE

P

HILIPPINES

. H

OWEVER

,

PRIOR APPROVAL OF THE GOVERNMENT AGENCY OR OFFICE WHEREIN THE WORK IS CREATED SHALL BE NECESSARY FOR

EXPLOITATION OF SUCH WORK FOR PROFIT

. S

UCH AGENCY OR OFFICE MAY

,

AMONG OTHER THINGS

,

IMPOSE AS A CONDITION THE PAYMENT OF ROYALTIES

. N

O PRIOR APPROVAL OR CONDITIONS SHALL BE REQUIRED FOR THE USE OF 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

.

176.2. T

HE

A

UTHOR OF SPEECHES

,

LECTURES

,

SERMONS

,

ADDRESSES

,

AND DISSERTATIONS MENTIONED IN THE PRECEDING PARAGRAPHS SHALL HAVE THE EXCLUSIVE RIGHT OF MAKING A COLLECTION OF HIS WORKS

.

176.3. N

OTWITHSTANDING THE FOREGOING PROVISIONS

,

THE

G

OVERNMENT 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 COPY RIGHT 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 OWNERS

.

CHAPTER V

COPYRIGHT OR ECONOMIC RIGHTS

S

EC

. 177.

C

OPY OR

E

CONOMIC

R

IGHTS

.

- S

UBJECT TO THE PROVISIONS OF

C

HAPTER

VIII,

COPYRIGHT OR ECONOMIC RIGHTS SHALL CONSIST OF THE EXCLUSIVE RIGHT TO CARRY OUT

,

AUTHORIZE OR PREVENT THE FOLLOWING ACTS

:

177.1. R

EPRODUCTION OF THE WORK OR SUBSTANTIAL PORTION OF THE WORK

;

-

reproduction must be commercial, public and substantial

-

“substantial” is vague; it should be a case to case basis. Factors to be considered are length

copied and importance of a portion copied. You may copy only one paragraph but it could be the

essence of the entire thing

177.2 D

RAMATIZATION

,

TRANSLATION

,

ADAPTATION

,

ABRIDGMENT

,

ARRANGEMENT OR OTHER TRANSFORMATION OF THE WORK

;

177.3. T

HE FIRST PUBLIC DISTRIBUTION OF THE ORIGINAL AND EACH COPY OF THE WORK BY SALE OR OTHER FORMS OF TRANSFER OF OWNERSHIP

;

-

right to determined 1) whether or not to sell, and 2) when to sell

Q. If you buy a book then after reading it, you sell it to another, infringement?

A. No. The moment it is sold, copyright protection as to public distribution is over.

NOTE: There is a difference between copyrighted work and the medium where it is contained. So you

can sell your book, unless it is provided in the copyright agreement

Quaerendum: Does this apply to digital works? Because under the first sale doctrine, you can sell your

copy. First sale doctrine assumes there is a tangible thing. The “paper” suggests that the doctrine

should not apply to internet.

177.4. R

ENTAL 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

;

-

This has been made part of the WTO via the TRIPS agreement

-

So if someone borrows VHS from an unlicensed store, there is also a criminal violation on his part.

177.5. P

UBLIC DISPLAY OF THE ORIGINAL OR A COPY OF THE WORK

;

177.6. P

UBLIC PERFORMANCE OF THE WORK

;

AND

NOTE: Public Performance was defined earlier as:

171.6.

"Public performance,"

in the case of a work other than an audiovisual work, is the recitation,

playing, dancing, acting or otherwise performing the work, either directly or by means of any device

or process; in the case of an audiovisual work, the showing of its images in sequence and the making

of the sounds accompanying it audible; and, in the case of a sound recording, making the recorded

sounds audible at a place or at places where persons outside the normal circle of a family and that

family’s closest social acquaintances are or can be present, irrespective of whether they are or can

be present at the same place and at the same time, or at different places and/or at different

times, and where the performance can be perceived without the need for communication within the

meaning of Subsection 171.3;

Q. No TV in barrio, you buy TV, subscribe from Home and charge people to watch it. Violation?

A. Yes, It falls under public performance, same rule for broadcast.

TV – point to multipoint

-

point to point (since only subscriber can receive)

Q. Is there broadcast?

A. Yes, there is broadcast. Public performance and communication to the public is included. There is no

distinction as to TV or cable.

• Website with copyrighted material – point to point, protection includes broadcast and communicating to

the public so you have protection

• Internet – there is assumed right to transmit material in internet unless made very clear that there are

restrictions

• E-Commerce Act – you can enter into internet contract by clicking “I agree” in buttons

Therefore: if you click “I agree that I will not violate copyright” and still violate copyright, two causes of

action against you: 1) breach of contract and 2) copyright infringement

177.7. O

THER COMMUNICATION TO THE PUBLIC OF THE WORK

Q. Is copyright owner given right to prevent importation of the article?

A. Parallel import – in patent, the right to limit importation is clearly given. But it is not clear in copyright law.

IP Code provides in Sec. 190.

the importation of a copy of a work by an individual for his personal purposes shall be permitted without

the authorization of the author of, or other owner of copyright in, the work under the following

circumstances:

(a) When copies of the work are not available in the Philippines and:

(i)

Not more than one (1) copy at one time is imported for strictly individual use only; or

(ii)

The importation is by authority of and for the use of the Philippine Government; or

(iii)

The importation, consisting of not more than three (3) such copies or likenesses in any one invoice, is

not for sale but for the use only of any religious, charitable, or educational society or institution duly

incorporated or registered, or is for the encouragement of the fine arts, or for any state school,

college, university, or free public library in the Philippines.

CHAPTER VI

OWNERSHIP OF COPYRIGHT

S

EC

. 178.

R

ULES ON

C

OPYRIGHT

O

WNERSHIP

.

- C

OPYRIGHT OWNERSHIP SHALL BE GOVERNED BY THE FOLLOWING RULES

:

178.1. S

UBJECT TO THE PROVISIONS OF THIS SECTION

,

IN THE CASE OF ORIGINAL LITERARY AND ARTISTIC WORKS

,

COPYRIGHT SHALL BELONG TO THE AUTHOR OF THE WORK

;

178.2. I

N THE CASE OF WORKS OF JOINT AUTHORSHIP

,

THE CO

-

AUTHORS SHALL BE THE ORIGINAL OWNERS OF THE COPYRIGHT AND IN THE ABSENCE OF AGREEMENT

,

THEIR RIGHTS SHALL BE GOVERNED BY THE RULES ON CO

-

OWNERSHIP

.

I

F

,

HOWEVER

,

A WORK OF JOINT AUTHORSHIP CONSISTS OF PARTS THAT CAN BE USED SEPARATELY AND THE AUTHOR OF EACH PART CAN BE IDENTIFIED

,

THE AUTHOR OF EACH PART SHALL BE THE ORIGINAL OWNER OF THE COPYRIGHT IN THE PART THAT HE HAS CREATED

;

General rule: Creator has copyright. It can be co-owned.

Copyright protection lasts until 50 years after death of author. If there are two authors, it is after the

second death. So include your son for the extra 30-40 years of protection.

178.3. I

N THE CASE OF WORK CREATED BY AN AUTHOR DURING AND IN THE COURSE OF HIS EMPLOYMENT

,

THE COPYRIGHT SHALL BELONG TO

:

(

A

) T

HE EMPLOYEE

,

IF THE CREATION OF THE OBJECT OF COPYRIGHT IS NOT A PART OF HIS REGULAR DUTIES EVEN IF THE EMPLOYEE USES THE TIME

,

FACILITIES AND MATERIALS OF THE EMPLOYER

.

(

B

) T

HE EMPLOYER

,

IF THE WORK IS THE RESULT OF THE PERFORMANCE OF HIS REGULARLY

-

ASSIGNED DUTIES

,

UNLESS THERE IS AN AGREEMENT

,

EXPRESS OR IMPLIED

,

TO THE CONTRARY

.

Q. Software programmer working in a company has access to information to create accounting computer

programs. During his lunch break, he uses the equipment to create computer games. Is there copyright

infringement?

A. No. Employee has the copyright. But the ee-er contract may stipulate that employee may assign

copyright. Outright ownership is not allowed as to objects created outside the scope. By requiring the

assignment of the copyright, this is made a condition for getting the job from day one. If employee

violates the contract, the employee can be sued for 2 causes of action – breach of contract and

infringement.

178.4. I

N THE CASE OF A WORK

-

COMMISSIONED BY A PERSON OTHER THAN AN EMPLOYER OF THE AUTHOR AND WHO PAYS FOR IT AND THE WORK IS MADE IN PURSUANCE OF THE COMMISSION

,

THE PERSON WHO SO COMMISSIONED THE WORK SHALL HAVE OWNERSHIP OF WORK

,

BUT THE COPYRIGHT THERETO SHALL REMAIN WITH THE CREATOR

,

UNLESS THERE IS A WRITTEN STIPULATION TO THE CONTRARY

;

General rule: copyright remains with author. If commissioned work is photographed and published,

infringement of right of painter.

Contract has to be IN WRITING. If it is not in writing, artist/creator retains copyright.

178.5. I

N THE CASE OF AUDIOVISUAL WORK

,

THE COPYRIGHT SHALL BELONG TO THE PRODUCER

,

THE AUTHOR OF THE SCENARIO

,

THE COMPOSER OF THE MUSIC

,

THE FILM DIRECTOR

,

AND THE AUTHOR OF THE WORK SO ADAPTED

. H

OWEVER

,

SUBJECT TO CONTRARY OR OTHER STIPULATIONS AMONG THE CREATORS

,

THE PRODUCERS SHALL EXERCISE THE

COPYRIGHT TO AN EXTENT REQUIRED FOR THE EXHIBITION OF THE WORK IN ANY MANNER

,

EXCEPT FOR THE RIGHT TO COLLECT PERFORMING LICENSE FEES FOR THE PERFORMANCE OF MUSICAL COMPOSITIONS

,

WITH OR WITHOUT WORDS

,

WHICH ARE INCORPORATED INTO THE WORK

;

AND

Q. If you want to produce DVD, who do you talk to?

A. The producer. But for infringement case, who has cause of action?

178.6. I

N RESPECT OF LETTERS

,

THE COPYRIGHT SHALL BELONG TO THE WRITER SUBJECT TO THE PROVISIONS OF

A

RTICLE

723

OF THE

C

IVIL

C

ODE

.

Art. 723 – Letters and other private communications in writing are owned by the person to whom they are

addressed and delivered, but they cannot be published or disseminated without the consent of the writer

or his heirs. However, the court may authorize their publication or dissemination if the public good or the

interest of justice so requires.

Not yet sent – copyright belongs to writer

Sent – belongs to person to whom it is addressed

If not received, copyright isn’t transferred.

S

EC

. 179.

A

NONYMOUS AND

P

SEUDONYMOUS

W

ORKS

.

- F

OR PURPOSES OF THIS

A

CT

,

THE PUBLISHERS SHALL BE DEEMED TO REPRESENT THE AUTHORS OF ARTICLES AND OTHER WRITINGS PUBLISHED WITHOUT THE NAMES OF THE AUTHORS OR UNDER PSEUDONYMS

,

UNLESS THE CONTRARY APPEARS

,

OR THE PSEUDONYMS OR ADOPTED NAME LEAVES NO DOUBTS AS TO THE AUTHOR

’

S IDENTITY

,

OR IF THE AUTHOR OF THE ANONYMOUS WORKS DISCLOSES HIS IDENTITY

.

CHAPTER VII

TRANSFER OR ASSIGNMENT OF COPYRIGHT

S

EC

. 180.

R

IGHTS OF

A

SSIGNEE

.

-180.1. T

HE COPYRIGHT MAY BE ASSIGNED IN WHOLE OR IN PART

. W

ITHIN THE SCOPE OF THE ASSIGNMENT

,

THE ASSIGNEE IS ENTITLED TO ALL THE RIGHTS AND REMEDIES WHICH THE ASSIGNOR HAD WITH RESPECT TO THE COPYRIGHT

.

180.2. T

HE COPYRIGHT IS NOT DEEMED ASSIGNED INTER VIVOS IN WHOLE OR IN PART UNLESS THERE IS A WRITTEN INDICATION OF SUCH INTENTION

.

180.3. T

HE SUBMISSION OF A LITERARY

,

PHOTOGRAPHIC OR ARTISTIC WORK TO A NEWSPAPER

,

MAGAZINE OR PERIODICAL FOR PUBLICATION SHALL CONSTITUTE ONLY A LICENSE TO MAKE A SINGLE PUBLICATION UNLESS A GREATER RIGHT IS EXPRESSLY GRANTED

. I

F TWO

(2)

OR MORE PERSONS JOINTLY OWN A COPYRIGHT OR ANY PART THEREOF

,

NEITHER OF THE OWNERS SHALL BE ENTITLED TO GRANT LICENSES WITHOUT THE PRIOR WRITTEN CONSENT OF THE OTHER OWNER OR OWNERS

.

S

EC

. 181.

C

OPYRIGHT AND

M

ATERIAL

O

BJECT

.

- T

HE COPYRIGHT IS DISTINCT FROM THE PROPERTY IN THE MATERIAL OBJECT SUBJECT TO IT

. C

ONSEQUENTLY

,

THE TRANSFER OR ASSIGNMENT OF THE COPYRIGHT SHALL NOT ITSELF CONSTITUTE A TRANSFER OF THE MATERIAL OBJECT

. N

OR SHALL A TRANSFER OR ASSIGNMENT OF THE SOLE COPY OR OF ONE OR SEVERAL COPIES OF THE WORK IMPLY TRANSFER OR ASSIGNMENT OF THE COPYRIGHT

.

S

EC

. 182.

F

ILING OF

A

SSIGNMENT OF

L

ICENSE

.

- A

N ASSIGNMENT OR EXCLUSIVE LICENSE MAY BE FILED IN DUPLICATE WITH THE

N

ATIONAL

L

IBRARY UPON PAYMENT OF THE PRESCRIBED FEE FOR REGISTRATION IN BOOKS AND RECORDS KEPT FOR THE PURPOSE

. U

PON RECORDING

,

A COPY OF THE INSTRUMENT SHALL BE

,

RETURNED TO THE SENDER WITH A NOTATION OF THE FACT OF RECORD

. N

OTICE OF THE RECORD SHALL BE PUBLISHED IN THE

IPO G

AZETTE

.

A

SSIGNMENT AND

L

ICENSE

Possible defenses to infringement are:

1.) you acquired copyright already – copyright was assigned

2.) you were allowed to do the stuff you did – you have a license

A

SSIGNMENT

Copyright – a body of rights so you can assign some of these rights to other people (note, only Economic Rights

are assignable. Moral Rights are not assignable/alienable.)

Assignment has to be in writing.

NOTE: When I give a copy to a publication for publication, when there is no agreement between the parties, I

retain the copyright and it extends only to one publication.

• Second reprints are not allowed, without permission.

License

-

can be free or for a fee

-

Trivia: A portion of costs of CD are paid to the artist as royalty.

C

OPYRIGHT

L

ICENSE

Transfer of Ownership?

Yes

No. This involves only permission

from the author/creator. He

retains ownership of the copyright.

Standing to sue for infringement? Yes. Here, you own copyright, so

you can sue.

No. You can’t sue because only the

copyright owner can do that.

However, you can stipulate on this.

Even to bring criminal actions?

Yes. But usually, only licensor can

sue because it is his property and

he wants to control it.

Kinds/Additional Info

• Joint ownership of copyright (e.g.

two authors) – ask permission from

both

• Film – all (writer/producer/song

writer) own the copyright. But the

producer represents them

• Exclusive – you can license the

same right to somebody else and

not be in breach (for instance, Neil

Gaiman licensed movie rights of

“Neverwhere” to BBC, Miramax,

etc.)

• Non-Exclusive – if JKR licenses

Viva Films to make Harry Potter,

guess who will come with a lawsuit

faster than you can say

“Wingardium Leviosa?” ☺

S

EC

. 183.

D

ESIGNATION OF

S

OCIETY

.

- T

HE COPYRIGHT OWNERS OR THEIR HEIRS MAY DESIGNATE A SOCIETY OF ARTISTS

,

WRITERS OR COMPOSERS TO ENFORCE THEIR ECONOMIC RIGHTS AND MORAL RIGHTS ON THEIR BEHALF

.

This is also known as collective administration of copyright. There is an organization called “Philippine Society

of Songwriters and Recording Artists” which is designated by all its members to take charge of the collection

of annual royalty fees from broadcast companies to broadcast their songs, then you split it among all the

artists. This does away with the need of collecting royalty fees everytime a BSB song is played. But if you’re

not a member, you can’t avail of their collection services. Gotta collect on your own.

CHAPTER VIII

LIMITATIONS ON COPYRIGHT

S

EC

. 184.

L

IMITATIONS ON

C

OPYRIGHT

.

-184.1. N

OTWITHSTANDING THE PROVISIONS OF

C

HAPTER

V,

THE FOLLOWING ACTS SHALL NOT CONSTITUTE INFRINGEMENT OF COPYRIGHT

:

(

A

)

THE RECITATION OR PERFORMANCE OF A WORK

,

ONCE IT HAS BEEN LAWFULLY MADE ACCESSIBLE TO THE PUBLIC

,

IF DONE PRIVATELY AND FREE OF CHARGE OR IF MADE STRICTLY FOR A CHARITABLE OR RELIGIOUS INSTITUTION OR SOCIETY

;

(

B

) T

HE MAKING OF QUOTATIONS FROM A PUBLISHED WORK IF THEY ARE COMPATIBLE WITH FAIR USE AND ONLY TO THE EXTENT JUSTIFIED FOR THE PURPOSE

,

INCLUDING QUOTATIONS FROM NEWSPAPER ARTICLES AND PERIODICALS IN THE FORM OF PRESS SUMMARIES

:

P

ROVIDED

, T

HAT THE SOURCE AND THE NAME OF THE AUTHOR

,

IF APPEARING ON THE WORK

,

ARE MENTIONED

;

(

C

) T

HE REPRODUCTION OR COMMUNICATION TO THE PUBLIC BY MASS MEDIA OF ARTICLES ON CURRENT POLITICAL

,

SOCIAL

,

ECONOMIC

,

SCIENTIFIC OR RELIGIOUS TOPIC

,

LECTURES

,

ADDRESSES AND OTHER WORKS OF THE SAME NATURE

,

WHICH ARE DELIVERED IN PUBLIC IF SUCH USE IS FOR INFORMATION PURPOSES AND HAS NOT BEEN EXPRESSLY RESERVED

:

P

ROVIDED

, T

HAT THE SOURCE IS CLEARLY INDICATED

;

(

D

) T

HE REPRODUCTION AND COMMUNICATION TO THE PUBLIC OF LITERARY

,

SCIENTIFIC OR ARTISTIC WORKS AS PART OF REPORTS OF CURRENT EVENTS BY MEANS OF PHOTOGRAPHY

,

CINEMATOGRAPHY OR BROADCASTING TO THE EXTENT NECESSARY FOR THE PURPOSE

;

(

E

) T

HE INCLUSION OF A WORK IN A PUBLICATION

,

BROADCAST

,

OR OTHER COMMUNICATION TO THE PUBLIC

,

SOUND RECORDING OR FILM

,

IF SUCH INCLUSION IS MADE BY WAY OF ILLUSTRATION FOR TEACHING PURPOSES AND IS COMPATIBLE WITH FAIR USE

:

P

ROVIDED

, T

HAT THE SOURCE AND OF THE NAME OF THE AUTHOR

,

IF APPEARING IN THE WORK

,

ARE MENTIONED

;

(

F

) T

HE RECORDING MADE IN SCHOOLS

,

UNIVERSITIES

,

OR EDUCATIONAL INSTITUTIONS OF A WORK INCLUDED IN A BROADCAST FOR THE USE OF SUCH SCHOOLS

,

UNIVERSITIES OR EDUCATIONAL INSTITUTIONS

:

P

ROVIDED

, T

HAT SUCH RECORDING MUST BE DELETED WITHIN A REASONABLE PERIOD AFTER THEY WERE FIRST BROADCAST

:

P

ROVIDED

,

FURTHER

, T

HAT SUCH RECORDING MAY NOT BE MADE FROM AUDIOVISUAL WORKS WHICH ARE PART OF THE GENERAL CINEMA REPERTOIRE OF FEATURE FILMS EXCEPT FOR BRIEF EXCERPTS OF THE WORK

;

(

G

) T

HE MAKING OF EPHEMERAL RECORDINGS BY A BROADCASTING ORGANIZATION BY MEANS OF ITS OWN FACILITIES AND FOR USE IN ITS OWN BROADCAST

;

(

H

) T

HE USE MADE OF A WORK BY OR UNDER THE DIRECTION OR CONTROL OF THE

G

OVERNMENT

,

BY THE

N

ATIONAL

L

IBRARY OR BY EDUCATIONAL

,

SCIENTIFIC OR PROFESSIONAL INSTITUTIONS WHERE SUCH USE IS IN THE PUBLIC INTEREST AND IS COMPATIBLE WITH FAIR USE

;

(

I

) T

HE PUBLIC PERFORMANCE OR THE COMMUNICATION TO THE PUBLIC OF A WORK

,

IN A PLACE WHERE NO ADMISSION FEE IS CHARGED IN RESPECT OF SUCH PUBLIC PERFORMANCE OR COMMUNICATION

,

BY A CLUB OR INSTITUTION FOR CHARITABLE OR EDUCATIONAL PURPOSE ONLY

,

WHOSE AIM IS NOT PROFIT MAKING

,

SUBJECT TO SUCH OTHER LIMITATIONS AS MAY BE PROVIDED IN THE

R

EGULATIONS

; (

N

)

(

J

) P

UBLIC DISPLAY OF THE ORIGINAL OR A COPY OF THE WORK NOT MADE BY MEANS OF A FILM

,

SLIDE

,

TELEVISION IMAGE OR OTHERWISE ON SCREEN OR BY MEANS OF ANY OTHER DEVICE OR PROCESS

: P

ROVIDED

,

T

HAT EITHER THE WORK HAS BEEN PUBLISHED

,

OR

,

THAT ORIGINAL OR THE COPY DISPLAYED HAS BEEN SOLD

,

GIVEN AWAY OR OTHERWISE TRANSFERRED TO ANOTHER PERSON BY THE AUTHOR OR HIS SUCCESSOR IN TITLE

;

AND

(

K

) A

NY USE MADE OF A WORK FOR THE PURPOSE OF ANY JUDICIAL PROCEEDINGS OR FOR THE GIVING OF PROFESSIONAL ADVICE BY A LEGAL PRACTITIONER

.

184.2. T

HE PROVISIONS OF THIS SECTION SHALL BE INTERPRETED IN SUCH A WAY AS TO ALLOW THE WORK TO BE USED IN A MANNER WHICH DOES NOT CONFLICT WITH THE NORMAL EXPLOITATION OF THE WORK AND DOES NOT UNREASONABLY PREJUDICE THE RIGHT HOLDER

'

S LEGITIMATE INTEREST

.

S

EC

. 185.

F

AIR

U

SE OF A

C

OPYRIGHTED

W

ORK

.

-185.1. T

HE FAIR USE OF A COPYRIGHTED WORK FOR CRITICISM

,

COMMENT

,

NEWS REPORTING

,

TEACHING INCLUDING MULTIPLE COPIES FOR CLASSROOM USE

,

SCHOLARSHIP

,

RESEARCH

,

AND SIMILAR PURPOSES IS NOT AN INFRINGEMENT OF COPYRIGHT

. D

ECOMPILATION

,

WHICH IS UNDERSTOOD HERE TO BE THE REPRODUCTION OF THE CODE AND TRANSLATION

OF THE FORMS OF THE COMPUTER PROGRAM TO ACHIEVE THE INTER

-

OPERABILITY OF AN INDEPENDENTLY CREATED COMPUTER PROGRAM WITH OTHER PROGRAMS MAY ALSO CONSTITUTE FAIR USE

. I

N DETERMINING WHETHER THE USE MADE OF A WORK IN ANY PARTICULAR CASE IS FAIR USE

,

THE FACTORS TO BE CONSIDERED SHALL INCLUDE

:

(A) T

HE PURPOSE AND CHARACTER OF THE USE

,

INCLUDING WHETHER SUCH USE IS OF A COMMERCIAL NATURE OR IS FOR NON

-

PROFIT EDUCATION PURPOSES

;

(

B

) T

HE NATURE OF THE COPYRIGHTED WORK

;

published/unpublished

factual/fictional

- Defense of fair use has more chance in unpublished work than a published work. However, there

is little chance for the defense of an unpublished creative work to hold since in fictional work,

there is more creative input than factual work

(

C

) T

HE AMOUNT AND SUBSTANTIALITY OF THE PORTION USED IN RELATION TO THE COPYRIGHTED WORK AS A WHOLE

;

AND

-if portion copied is “heart” of the work

(

D

) T

HE EFFECT OF THE USE UPON THE POTENTIAL MARKET FOR OR VALUE OF THE COPYRIGHTED WORK

.

-

test is both the present and future market

NOTE: Each Fair Use case is treated differently. The most important test in each case differs.

185.2 T

HE FACT THAT A WORK IS UNPUBLISHED SHALL NOT BY ITSELF BAR A FINDING OF FAIR USE IF SUCH FINDING IS MADE UPON CONSIDERATION OF ALL THE ABOVE FACTORS

.

Fair Use – always involves a balancing of interests of the copyright owner and the public.

• The copyright owner has the right to exploit his work;

• The public has the right to information and the right to share this information.

When you cross the line, it is considered copyright infringement.

At this point, Atty. Lim discussed the Napster case (unassigned). Here is a Q&A.

Q: Napster itself does not copy or distribute music files. So, why are the record companies suing Napster?

A: It was the end users who were allegedly committing the direct infringement by making music files available and downloading files

without authorization. For several reasons, such as the problem of end-users being judgment-proof, or the need to bring thousands, if not millions, of lawsuits to stop the infringement, the record companies initiated the action against the company, which in their eyes facilitated the infringement.

It was alleged that Napster should be liable under a theory of either contributory infringement or vicarious liability One may be liable for contributory infringement if one "with knowledge of the infringing activity, induces, causes, or materially contributes to the infringing conduct of another." In the Napster case, the plaintiffs alleged that Napster's facilitation of the identifying and downloading of files constituted contributory infringement. In the Napster case, the plaintiffs claimed that Napster had the ability to control the activity, by allowing or filtering out the music files. Because Napster could get advertising revenue based upon the number of "hits," it, too, was alleged that Napster had a financial interest in the infringement.

Q: Isn't this a "fair use"?

A: The fair use doctrine, sometimes called "an equitable rule of reason," was initially judicially created to allow the use of portions of

a work for purposes of criticism and comment, news reporting, scholarship, teaching, etc. The fair use doctrine is now part of the current Copyright Act.

Merely uploading and downloading copies of the music files -- was not transformative. The court then proceeded to look to the commercial or non-commercial nature of the work. The more commercial the use, the less latitude for the unauthorized user. In the Napster case, the court found the use to be commercial. Although there was no exchange of money or sale of the files, the court nonetheless found the use to be commercial, affirming the district court's findings that (1) "a host user sending a file cannot be said to engage in personal use when distributing that file to an anonymous requester" and (2) "Napster users get for free something they would ordinarily have to buy." The court continued, "Commercial use is demonstrated by a showing that repeated and exploitative unauthorized copies of copyrighted works were made to save the expense of purchasing copies." The court also noted that for purposes of criminal law, the definition of "financial gain" also includes "the receipt of other copyrighted works."

(2) The Nature of the Copyrighted Work

In the Napster case, the works being copied are creative works -- music. The creative nature of the musical compositions and sound recordings "cut against" a finding of fair use. The Ninth Circuit again agreed with the lower court's determination.

(3) The Amount And Substantiality Of The Portion Used In Relation To The Copyrighted Work As A Whole

In the Napster case, the determination was easy. The end-users who were doing the downloading were taking copies of the entire song. The taking was therefore both quantitatively and qualitatively substantial. Therefore, this factor also favored the plaintiff record companies.

(4) The Effect on the Potential Market or Value for the Work

The Ninth Circuit court in the Napster case affirmed the lower court's finding that Napster harmed the market for the works in "at least" two ways: (1) "it reduces audio CD sales among college students" and 2) "it raises barriers to plaintiffs' entry into the market for the digital downloading of music." In reaching its decision, the court paid particular attention to the expert's report showing that on college campuses, there was evidence of lost retail sales of CDs on college campuses. Such lost sales were taken to be sufficient to support the finding of "irreparable harm" needed for an injunction. The court did not place very much credence in the report by Napster's expert that the sharing of files stimulates demand for sales of CDs.

The court did not accept that argument. The court also found Napster interfered with the record companies' efforts to

legitimately license their sound recordings and musical compositions for Internet-related downloads themselves. If it is easy to get the music files for free, why would one go to the authorized site and pay for them? This, of course, assumes that the end-users have a sense of not being in any danger whatsoever for doing the uploading and downloading.

Q: Isn't this like the Universal City Studios v. Sony case? If it was OK to videotape television shows for personal use in Sony, why isn't it acceptable to copy music from the Internet for personal use?

A: At the time the Sony case was brought in district court, more than 20 years ago, the record showed that most people merely

"time-shifted" the television shows. They recorded shows that were on the air at inconvenient times or when they were not home. Most importantly, Universal was not able to show that the users were archiving or "librarying" the tapes. The situation in the Napster case is completely different. First, there is no precedent in Napster's favor for "space shifting". In Texaco, in-house researchers at Texaco copied and kept articles from scientific journals. The Second Circuit emphasized that copies of the articles were in the files.

Q: Isn't this really the same as just swapping some CDs or music files with your friends?

A: All of the files are compressed and converted to MP3 or an analogous technology to facilitate the fast copying of the CDs. During

the "marathon," thousands and thousands of CDs are copied. At the end of the marathon, each person who entered leaves with the CDs he or she arrived with, as well as at least another 100.

Essentially, this is what's going on in the Napster case. It is hard to imagine that this would not be infringement! It would be difficult to argue that this was "non-commercial copying for personal use."

Q: Will Napster be shut down?

A: The court's injunction does not require Napster to shut down. It does, however, require Napster to filter out the files that have

been identified by the plaintiff record companies. It remains to be seen whether Napster will be able to comply with the terms of the injunction, and if not, what will happen next.

In the meanwhile, as mentioned above, the record companies are entering into agreements with various companies for the distribution of music. I would not be surprised if, in the not-too-distant future, we see several "reasonably priced" subscription based online services providing downloadable music files.

IMPT NOTE: When you raise fair use as a defense, you admit the facts in the complaint. Therefore:

1.) Plaintiff will no longer have to prove the facts, the trial now centers on whether or not there was fair

use.

2.) It would be an inconsistent defense if you allege fair use and you allege that you were not the one

doing the infringing.

Q. Chris Lim copies substantial portions of a book of a UP professor on IP, then he gives it out to students and

anyone who wants a copy. Infringement?

A. Yes. The fact that it is for free does not necessarily mean it is fair use.

Q. If the IP Code were amended to read, “So long as copyrighted material is used in school, it is fair use.”

Would this be constitutional?

A. Maybe not. It would be undue deprivation of property. It would also remove all incentive to create, write

law books for instance (YEHEY!!) or develop computer programs for school usage.

Q. When Chris Lim says, “I copied large portions of Atty. X’s work,” is this a valid defense?

A. No. It may serve to limit liability, but if substantial portions of the work is copied, attribution will not

protect you. Protection only exists when excerpts are used.

Note: Traditional copyright is easier to protect than digital copyright.

SONY CORP. v. UNIVERSAL CITY STUDIOS, INC.,

464 U.S. 417 (1984)

Petitioners manufacture and sell home video tape recorders. Respondents own the copyrights on some of the television programs that are broadcast on the public airwaves. Some members of the general public use video tape recorders sold by petitioners to record some of these broadcasts, as well as a large number of other broadcasts. Respondents commenced this copyright infringement action against petitioners in the United States District Court for the Central District of California in 1976. Respondents alleged that some individuals had used Betamax video tape recorders (VTR's) to record some of respondents' copyrighted works which had been exhibited on commercially sponsored television and contended that these individuals had thereby infringed respondents' copyrights. Respondents further maintained that petitioners were liable for the copyright infringement allegedly committed by Betamax consumers because of petitioners' marketing of the Betamax VTR's. Respondents sought no relief against any Betamax consumer. Instead, they sought money damages and an equitable accounting of profits from petitioners, as well as an injunction against the manufacture and marketing of Betamax VTR's. An explanation of our rejection of respondents' unprecedented attempt to impose copyright liability upon the distributors of copying equipment requires a quite detailed recitation of the findings of the District Court. In summary, those findings reveal that the average member of the public uses a VTR principally to record a program he cannot view as it is being televised and then to watch it once at a later time. This practice, known as "time-shifting," enlarges the television viewing audience. For that reason, a significant amount of television programming may be used in this manner without objection from the owners of the copyrights on the programs. For the same reason, even the two respondents in this case, who do assert objections to time-shifting in this litigation, were unable to prove that the practice has impaired the commercial value of their copyrights or has created any likelihood of future harm.

Held:

Given these findings, there is no basis in the Copyright Act upon which respondents can hold petitioners

liable for distributing VTR's to the general public. Each of the respondents owns a large inventory of valuable

copyrights, but in the total spectrum of television programming their combined market share is small. The

exact percentage is not specified, but it is well below 10%. If they were to prevail, the outcome of this

litigation would have a significant impact on both the producers and the viewers of the remaining 90% of the

programming in the Nation. No doubt, many other producers share respondents' concern about the possible

consequences of unrestricted copying. Nevertheless the findings of the District Court make it clear that

shifting may enlarge the total viewing audience and that many producers are willing to allow private

time-shifting to continue, at least for an experimental time period.

Die Another Day

I'm gonna wake up, yes and no

I'm gonna kiss some part of I'm gonna keep this secret I'm gonna close my body now

I guess, die another day I guess, die another day I guess, die another day I guess, die another day I guess I'll die another day

(Another day) I guess I'll die another day

(Another day) I guess I'll die another day

(Another day) I guess I'll die another day

Sigmund Freud Analyze this Analyze this Analyze this I'm gonna break the cycle I'm gonna shake up the system

I'm gonna destroy my ego I'm gonna close my body now

Uh, uh I think I'll find another way There's so much more to know

I guess I'll die another day It's not my time to go For every sin, I'll have to pay I've come to work, I've come to play

I think I'll find another way It's not my time to go I'm gonna avoid the cliche I'm gonna suspend my senses

I'm gonna delay my pleasure I'm gonna close my body now I guess, die another day I guess I'll die another day

I guess, die another day I guess I'll die another day

2

I think I'll find another way There's so much more to know

I guess I'll die another day It's not my time to go

Uh, uh I guess, die another day I guess I'll die another day

I guess, die another day I guess I'll die another day

Another day [x6]

If there are millions of owners of VTR's who make copies of televised sports

events, religious broadcasts, and educational programs such as Mister

Rogers' Neighborhood, and if the proprietors of those programs welcome

the practice, the business of supplying the equipment that makes such

copying feasible should not be stifled simply because the equipment is used

by some individuals to make unauthorized reproductions of respondents'

works. The respondents do not represent a class composed of all copyright

holders. Yet a finding of contributory infringement would inevitably

frustrate the interests of broadcasters in reaching the portion of their

audience that is available only through time-shifting.

Of course, the fact that other copyright holders may welcome the practice

of time-shifting does not mean that respondents should be deemed to have

granted a license to copy their programs. Third-party conduct would be

wholly irrelevant in an action for direct infringement of respondents'

copyrights. But in an action for contributory infringement against the seller

of copying equipment, the copyright holder may not prevail unless the relief

that he seeks affects only his programs, or unless he speaks for virtually all

copyright holders with an interest in the outcome. In this case, the record

makes it perfectly clear that there are many important producers of

national and local television programs who find nothing objectionable about

the enlargement in the size of the television audience that results from the

practice of time-shifting for private home use. The seller of the equipment

that expands those producers' audiences cannot be a contributory infringer

if, as is true in this case, it has had no direct involvement with any infringing

activity.

Even unauthorized uses of a copyrighted work are not necessarily infringing.

An unlicensed use of the copyright is not an infringement unless it conflicts

with one of the specific exclusive rights conferred by the copyright statute.

Moreover, the definition of exclusive rights in 106 of the present Act is

prefaced by the words "subject to sections 107 through 118." Those sections

describe a variety of uses of copyrighted material that "are not

infringements of copyright" "notwithstanding the provisions of section 106."

The most pertinent in this case is 107, the legislative endorsement of the

doctrine of "fair use."

That section identifies various factors that enable a court to apply an "equitable rule of reason" analysis to

particular claims of infringement. Although not conclusive, the first factor requires that "the commercial or

nonprofit character of an activity" be weighed in any fair use decision. If the Betamax were used to make

copies for a commercial or profitmaking purpose, such use would presumptively be unfair. The contrary

presumption is appropriate here, however, because the District Court's findings plainly establish that

time-shifting for private home use must be characterized as a noncommercial, nonprofit activity. Moreover, when

one considers the nature of a televised copyrighted audiovisual work, and that time-shifting merely enables a

viewer to see such a work which he had been invited to witness in its entirety free of charge, the fact that

the entire work is reproduced, see 107(3), does not have its ordinary effect of militating against a finding of

fair use.

This is not, however, the end of the inquiry because Congress has also directed us to consider "the effect of

the use upon the potential market for or value of the copyrighted work." 107(4). The purpose of copyright is to

create incentives for creative effort. Even copying for noncommercial purposes may impair the copyright

holder's ability to obtain the rewards that Congress intended him to have. But a use that has no demonstrable

effect upon the potential market for, or the value of, the copyrighted work need not be prohibited in order to

protect the author's incentive to create. The prohibition of such noncommercial uses would merely inhibit

access to ideas without any countervailing benefit.

Thus, although every commercial use of copyrighted material is presumptively an unfair exploitation of the

monopoly privilege that belongs to the owner of the copyright, noncommercial uses are a different matter. A

challenge to a noncommercial use of a copyrighted work requires proof either that the particular use is

harmful, or that if it should become widespread, it would adversely affect the potential market for the

copyrighted work. Actual present harm need not be shown; such a requirement would leave the copyright

holder with no defense against predictable damage. Nor is it necessary to show with certainty that future

harm will result. What is necessary is a showing by a preponderance of the evidence that some meaningful

likelihood of future harm exists. If the intended use is for commercial gain, that likelihood may be presumed.

But if it is for a noncommercial purpose, the likelihood must be demonstrated.

When these factors are all weighed in the "equitable rule of reason" balance, we must conclude that this

record amply supports the District Court's conclusion that home time-shifting is fair use. In light of the

findings of the District Court regarding the state of the empirical data, it is clear that the Court of Appeals

erred in holding that the statute as presently written bars such conduct.

In summary, the record and findings of the District Court lead us to two conclusions. First, Sony demonstrated

a significant likelihood that substantial numbers of copyright holders who license their works for broadcast on

free television would not object to having their broadcasts time-shifted by private viewers. And second,

respondents failed to demonstrate that time-shifting would cause any likelihood of nonminimal harm to the

potential market for, or the value of, their copyrighted works. The Betamax is, therefore, capable of

substantial noninfringing uses. Sony's sale of such equipment to the general public does not constitute

contributory infringement of respondents' copyrights.

STEWART v. ABEND, 495 U.S. 207 (1990)

495 U.S. 207

Cornell Woolrich authored the story "It Had to Be Murder," which was first published in February 1942 in Dime Detective Magazine. The magazine's publisher, Popular Publications, Inc., obtained the rights to magazine publication of the story and Woolrich retained all other rights. Popular Publications obtained a blanket copyright for the issue of Dime Detective Magazine in which "It Had to Be Murder" was published.

The Copyright Act of 1909 provided authors a 28-year initial term of copyright protection plus a 28-year renewal term. In 1945, Woolrich agreed to assign the rights to make motion picture versions of six of his stories, including "It Had to Be Murder," to B. G. De Sylva Productions for $9,250. He also agreed to renew the copyrights in the stories at the appropriate time and to assign the same motion picture rights to De Sylva Productions for the 28-year renewal term. In 1953, actor Jimmy Stewart and director Alfred Hitchcock formed a production company, Patron, Inc., which obtained the motion picture rights in "It Had to Be Murder" from De Sylva's successors in interest for $10,000.

In 1954, Patron, Inc., along with Paramount Pictures, produced and distributed "Rear Window," the motion picture version of Woolrich's story "It Had to Be Murder." Woolrich died in 1968 before he could obtain the rights in the renewal term for petitioners as promised and without a surviving spouse or child. He left his property to a trust administered by his executor, Chase Manhattan Bank, for the benefit of Columbia University. On December 29, 1969, Chase Manhattan Bank renewed the copyright in the "It Had to Be Murder" story. Chase Manhattan assigned the renewal rights to respondent Abend for $650 plus 10% of all proceeds from exploitation of the story.

"Rear Window" was broadcast on the ABC television network in 1971. Respondent then notified petitioners Hitchcock (now represented by cotrustees of his will), Stewart, and MCA Inc., the owners of the "Rear Window" motion picture and renewal rights in the motion picture, that he owned the renewal rights in the copyright and that their distribution of the motion picture without his permission infringed his copyright in the story. Hitchcock, Stewart, and MCA nonetheless entered into a second license with ABC to rebroadcast

Petitioners assert that even if their use of "It Had to Be Murder" is unauthorized, it is a fair use and, therefore, not infringing. At common law, "the property of the author . . . in his intellectual creation [was] absolute until he voluntarily part[ed] with the same. The fair use doctrine, which is incorporated into the 1976 Act, evolved in response to this absolute rule.

Held:

The Court of Appeals determined that the use of Woolrich's story in petitioners' motion picture was

not fair use. We agree. The motion picture neither falls into any of the categories enumerated in 107 nor

meets the four criteria set forth in 107. "[E]very [unauthorized] commercial use of copyrighted material is

presumptively an unfair exploitation of the monopoly privilege that belongs to the owner of the copyright."

Petitioners received $12 million from the re-release of the motion picture during the renewal term. Petitioners

asserted before the Court of Appeals that their use was educational rather than commercial. The Court of

Appeals found nothing in the record to support this assertion, nor do we.

Applying the second factor, the Court of Appeals pointed out that "[a] use is less likely to be deemed fair when

the copyrighted work is a creative product." In general, fair use is more likely to be found in factual works

than in fictional works. The law generally recognizes a greater need to disseminate factual works than works of

fiction or fantasy. A motion picture based on a fictional short story obviously falls into the latter category.

Examining the third factor, the Court of Appeals determined that the story was a substantial portion of the

motion picture. The motion picture expressly uses the story's unique setting, characters, plot, and sequence of

events. Petitioners argue that the story constituted only 20% of the motion picture's story line, but that does

not mean that a substantial portion of the story was not used in the motion picture. "[A] taking may not be

excused merely because it is insubstantial with respect to the infringing work."

The fourth factor is the "most important, and indeed, central fair use factor." The record supports the Court

of Appeals' conclusion that re-release of the film impinged on the ability to market new versions of the story.

Common sense would yield the same conclusion. Thus, all four factors point to unfair use. "This case presents a

classic example of an unfair use: a commercial use of a fictional story that adversely affects the story owner's

adaptation rights."

PLAYBOY ENTERPRISES, INC., Plaintiff, v. George FRENA

George Frena operates a subscription computer bulletin board service, Techs Warehouse BBS ("BBS"), that distributed unauthorized copies of Plaintiff Playboy Enterprises, Inc.'s copyrighted photographs. BBS is accessible via telephone modem to customers. For a fee, or to those who purchase certain products from Defendant Frena, anyone with an appropriately equipped computer can log onto BBS. Once logged on subscribers may browse through different BBS directories to look at the pictures and customers may also download the high quality computerized copies of the photographs and then store the copied image from Frena's computer onto their home computer. Many of the images found on BBS include adult subject matter. One hundred and seventy of the images that were available on BBS were copies of photographs taken from PEI's copyrighted materials.