Works covered by Copyright law (Section 172, iIntellectual Property Law)

1. Literary and artistic works

a. Books, pamphlets, artistic and other writings
b. Periodicals and newspapers
c. Lectures, sermons, addresses, dissertation prepared for oral delivery, whether or not
reduced in writing or other material form
d. Letters
e. Dramatic or dramatic-musical compositions, choreographic works, or entertainment in
dumbshows
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 b y 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 advertisement
n. Computer programs; and
o. Other literary, scholarly, scientific, and artistic works.

Who may sue? (AM No. 10.-3-10-SC, Rule 3, Sec. 2)

a. Any intellectual property right owner

b. Any person who is a national or who is domiciled or has real and effective industrial
establishment in a country which is a party to any convention which the Philippine sis also a
party to.
c. Juridical persons who meets the test of recipriocity.

Defense of Good faith - (AM No. 10.-3-10-SC, Rule 16, Sec. 1)

In cases of patent infringement, trademark infringement, and copyright infringement, fraudulent intent
on the part of the defendant or the accused need not be established. Good faith is not a defense unless
the defendant or the accused claims to be a prior user under Sections 73 and 159 of the Intellectual
Property Code or when damages may be recovered under Sections 76, 156, and 216 of the Code.

A. Prior User – works in patent – Sec. 73

B. Prior User - works in trademark – Section 159

Mode or Form of Expressions

Section 172.2 (no requirement of registration)

  Works are protected by the sole fact of their creation.
o No need for registration.
o Good faith is not a defense.
 Irrespective of their mode of expression, content, quality, and purpose.
o

Basis: Berne Convention

- The enjoyment and the exercise of these rights shall not be subject to any formality

GR: The protection for copyrighted works will be for the lifetime of the author and 50 years thereafter

 In patent law, it will be 20 years from the date of filing. The patent prosecution (registration)
might take years

Deposit and Notice (Section 191)

- “Such registration and deposit are not a condition of copyright protection “

- Any copyrightable work can be deposited with the national library BUT it will not be tantamount
to registration. Deposit is only done for record.

2020 Revised Rules on Intellectual Property – Rule 19. Section 2

- Registration and deposit of a work with the National Library or the IPO shall not carry with it the
presumption of ownership of the copyright by the registrant or depositor, nor shall it be
considered a condition sine qua non to a claim or copyright infringement.

Notice of Copyright

- Name of the copyright owner

- Year of 1st publication
- After creator’s death: the year of death.

Principle of Aesthetic Non-discrimination

When determining whether a work contains sufficient originality, one is not supposed to inquire as to
the artistic merit of the work

NB: Whether the purpose and content of the copyrighted work is immoral, against public policy,
scandalous – all of those will still be protected by copyright.

 In patent law, trademark law, immorality of the work, warrants its unprotectedness

US Copyright Act. S102

 “Copyright protection subsists, in accordance with this title, in original works of authorship fixed
in any tangible medium of expression, now known, or later developed, from which they can be
perceived, reproduced, or otherwise communicated, either directly with the aid of a machine or
device.
 A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phone
record, by or under the authority of the author, is sufficiently permanent or stable to permit it to
 be perceived, reproduced, or otherwise communicated for a period of more then transitory
duration.

In Philippine Copyright law

 There is definition of “tangible medium”

 Our law says, “irrespective of their mode or form of expression.”
 The work is protected upon moment of its creation.

The problem with Choreography

 Choreographies can be protected by copyright

 Still covered by Section 172.2. There is no need for registration.

What are not protected by Copyright

Sections 175 – Unprotected Subject matter

1. Idea
2. Concept
3. Principle
4. Procedure – cannot be protected by copyright law BUT can be protected by patent law
5. System method of operation – cannot be protected by copyright law BUT can be protected by
patent law
6. Discovery or mere such data as such - not original, cannot be copyrightable
7. News of the day - not original, cannot be copyrightable
8. Mere items of press information, cannot be copyrightable
9. Official text of the Legislative, administrative, or legal nature
10. Official translation of official text
11. Works of the Government (Section 176)

Public domain vs. public use and public record

 Public domain in copyright law means that it is not protected by copyright law. Therefore, use of
these expressions will not be an infringing act.
o Examples:
 work of which its author died, and 50 years has already lapsed,
 permission from the author to use of his work,
 works of the government.

 Public Record may still be copyrightable, to a certain degree (i.e., pleadings of lawyers)

Idea, concept, principle

 Not expressed. Otherwise, that can be protected by copyright.

Idea-expression dichotomy

 Copyrights protects only the expression NOT THE IDEA

 Ideas are protected, if not in a patentable object, cannot be protected by patent law.
Baker vs. Selden (1879)

 Selden made an Essay explaining system of bookkeeping

 Baker used the same forms but made different arrangements and different headings
 Selden alleged that the rules lines and headings given to illustrate the system, are a part of the
book, and as such, are secured by copyright. Hence, Baker cannot use the same without his
consent.

Decision by the US SC

 The system maybe a part of practical knowledge and should be protected by a letter of patent
not copyright. To give it directly to the author, without checking its novelty, would be a surprise
and a fraud upon the public.

Merger Doctrine (in relation to idea-expression dichotomy)

How to determine if there is a merger

- If the idea can only be expressed in one way, then it cannot be protected
- The merger doctrine will not protect a copyrightable expression because it is intertwined, or
interwoven with protecting the idea.
- Copyright law ONLY protects the expression not the idea.

Morissey v. Procter and Gamble (US Case)

 Morissey has been engaged in devising games or contests

 Tide (respondent) made used of a similar procedure.

Held

 Plaintiff has no exclusive right in the idea or concept of conducting a sweepstakes or game.
 There is no other way of expressing that idea except through Morissey’s way.

 “When the uncopyrightable subject matter is very narrow, so that “the topic necessarily
requires, “ if not only one form of expression, at best only a limited number, to permit
copyrighting would mean that a party or parties, by copyrighting a mere handful of forms, could
exhaust all possibilities of future use of the substance.

Joaquin vs. Drilon, GR NO. 108946, 1999

 There were two shows (blind-dating game) on two different channels that had the same format
 Producers of Roda and Me says that there was infringement by the producers of It’s a date
 SC held that this cannot be a basis for copyright infringement because there can be no copyright
protection
o The format being used in both game shows cannot be the basis for copyright protection
as it is not one of those listed under the law protected by copyright.
o To write it in a piece of paper and call it a literary work will not be sufficient because the
TV show includes more than the mere words that can describe as it involves a whole
spectrum of visuals and effects, video, and audio.
o You cannot protect an “idea”. You can only protect the idea if it so merged with the
expression. Protecting the format of the show will afford exclusivity to the idea.
Scene-a-faire principle

 Those sequences of events necessarily resulting from the choice of setting or situation, or
incidents, characters, or settings that are indispensable in the treatment of a given topic.

ETS-Hokin vs. Skyy Spirits Inc, (US Case)

 Courts will not protect a copyrighted work from infringement if the expression embodied in the
work necessarily flows from a commonplace idea.

Walker vs. Time Life Films, Inc. (1985)

 Petitioner sued respondent alleging that it made use of certain elements from his book of which
they had access to.
 Petitioner is a police captain of a precinct of a place full of criminality and poverty. He wrote his
stories based on what he experienced as a police captain (Fort Apache) and was featured in the
New York Magazine.
 Prior to the publication of the book, Heywood Gould entered into a contract with defendants to
write a screenplay “Fort Apache, The Bronx”

Movie Book
Dramatic fictional account of a police officer’s Chapters center on youth gang violence, poor
romantic involvement with a drug-addicted nurse officer morale and attacks on officers
and the search for the killer of two 41 st precinct
police
More like a journal.

Is it protected?

 NO. In any account based on experiences in a poverty stricken, crime-ridden environment,

depictions of bribery, prostitution, purse-snatching, and neighborhood hostility to law enforcers
are inevitable. These incidents are stock material for most police stories.

Summary

Idea expression dichotomy Protect only the expression

Merger Doctrine Do not protect the expression because to do so
would unfairly protect the idea
Scene-a-faire Do not protect the expression because it flows
from a common place.

Discoveries

- There is no creation involved even if it was an expression as the maker is not the original maker.
- The discoverer merely finds and records.

News of the day

- Not protected by copyright

- Exclusivity to a fact would be difficult.
Facts vs. News

Facts Not original

No one can claim authorship of facts
News Reports of matters that are ordinarily publici
juris; it is the history of the day

i.e., “UP Basketball team is a champion”

The mere fact is not copyrightable but the way how the news was reported is copyrightable.

Facts. Vs Factual Compilation

 Facts cannot be protected by copyright.

 Complication of facts (i.e., newspapers, etc.) are original and discernment as what fact to
include, how to show it, what is emphasized are copyrighted.

Laktaw vs. Paglinawan – G.R. NO. L-11937, 1918

 Can a dictionary be subject of a copyright?

 Petitioner is the author of “dictionario hispano-tagalog” and was copied respondent who made
a dictionary entitled “diksyonary kastila-tagalog”

Findings (There is substantial similarity. Hence, there Is copying that took place)

 Therefore, of the 23,560 Spanish words in the defendant’s dictionary, after deducting 17 words
corresponding to the letters K and X (For the plaintiff has no words corresponding to them,) only
3,108 words are the defendant’s own, or what is the same thing, the defendant has added only
this number of words to those that re in the plaintiff’s dictionary, he having reproduced or
copied the remaining 20,452 words.
 At the printer’s errors in the plaintiff’s dictionary as to the expression of some words in Spanish
as well as their equivalents in Tagalog are also reproduced.

Held

 The protection of the law cannot be denied to the author of a dictionary, for although words
are not the property of anybody, their definitions, the example that explain their sense, and
the manner of expressing their different meanings, may constitute a special work.
 On this point, the correctional court of the Seine, held on August 16, 1864, that a dictionary
constitutes property, although some of the words therein are explained by mere definitions
expressed in a few lines and sanctioned by usage provided that greater part of the other words
contains new meanings; new meaning which evidently may only belonged to the first person
who published them.

Allowances for Works of Government

Section 176.1 – Government of the Philippines does not have copyright.

Official texts
  Laws
 Belonging to public domain

Official Translations of official texts

 Because official texts are not copyrightable

Works of Government – Section 171.11

- Works created by an officer or employee of the Philippine Government, or any of its subdivisions
and instrumentalities including GOCCs as part of his regularly prescribed official duties.

Use of works of government

- No need for prior approval of the use is necessary if used in deliberative assemblies and in
meetings of public character.

BUT

- Approval is necessary for exploitation of this work for profit and may require payment of
royalties.

Authors of speeches, lectures, sermons, and dissertations (176.2) – included in the works of the
government

 Has the exclusive rights of making collections of his work.

Publication by Government in a public document – i.e., usage of photos belonging to a private person in
a complaint by a prosecutor.

 Does not abridge copyright

 Does not annul copyright
 Does not mean appropriation of work without consent of copyright owner.

Works of applied art and separability doctrine – quasi-protected

 A part will be protected, and a part will not protected or if they cannot be separated, will not be
protected at all.

Works of Applied Art (Sec. 171.10)

- Artistic creation with utilitarian functions or incorporated in a useful article, whether by hand or
produced in industrial scale.

Difference of Works of Applied Art

 Works protected under Section 172 and 173 are protected for a lifetime and 50 years after
death of the author.
 Term of protection is shorter (25 years)
 Not entitled to share in gross proceeds from sale or lease of property.
What is copyrightable in Works of Applied art?

 Only the artistic creation NOT the utilitarian functions.

In the US Separability Doctrine - Denicola Test

 The design of a useful article is copyrightable, if and only to that extent that, such design
incorporates pictorial, graphic, or sculptural features that can be identified separately from,
and are capable of exiting independently of the utilitarian aspects of the article.

“Separated” definition

- Must be able to exist as its own pictorial, graphic, or sculptural work once imagined apart from
the useful article.

Checking if it can exist independently

- It would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in
some other tangible medium.

Star Athletica LLC vs. Varsity Brands – US Case

 Respondent sued petitioner for infringement for its use of its cheerleader uniforms design.
 Varsity Brands alleges that if the chevrons and lines can be transferred without replicating its
form, it is copyrightable.
 US SC said that they are copyrightable and what was done was copyright infringement using the
separability test
  It can be imagined separately.
 Can they exist independently? The US SC said yes they can be protected because the drawing
will be similar to the design.

Olano et. al. vs. Lim Eng Co, GR No. 195835, 2016

Facts of the case

 Petitioners are officers of Metrotech; respondent is the chairman of LEC Steel, architectural and
metal manufacturing hatch doors
 2002: LEC was invited by architects of Project to submit designs and drawings for doors which
was approved construction.
 LEC: subcontract for 7 – 22nd floor; Metrotech: 23rd and 41st floor – for the construction of
hatchdoors
 LEC wants Metrotech to stop infringing its for the designs of the floors. Metrotech said it only
relied on the plans provided by the project developer.
 July 2, 2004: Deposited with National Library
 December 9, 2004: certificate of copyright was issued for original ornamental designs or models
for articles manufactured

Is there copyright infringement?

 Not artistic.
 Ownership of copyrighted material is shown by proof of originality and copyrightability.
 The hinges on LEC’s “hatch doors” have no ornamental or artistic value. In fact, they are just
similar to hinges found in truck doors that had been in common use since the 1960’s

 The locking device in LEC’s “hatch doors” are ordinary drawer locks commonly used in furniture
and office desks.

Held: Utilitarian function

 In the present case, LEC’s hatch doors bore no design elements that are physically conceptually
separable, independent, and distinguishable from the hatch door itself.

 The allegedly distinct set of hinges and distinct jamb were related and necessary hence, not
physically or conceptually separable from the hatch door’s utilitarian function as an apparatus
for emergency egress. Without them, the hatch doors will not function.