1 - Joaquin v. Drilon (1999) P.D. No.

49, 2, in enumerating what are subject to copyright, refers to

finished works and not to concepts. The copyright does not extend to an idea,
Facts: procedure, process, system, method of operation, concept, principle, or
BJ Productions, Inc. (BJPI) is the holder of a Certificate of Copyright of discovery, regardless of the form in which it is described, explained, illustrated,
a dating game show named Rhoda and Me. BJPI submitted to the National or embodied in such work.
Library an addendum to its certificate of copyright specifying the shows format Mere description by words of the general format of the two dating
and style of presentation. While watching tv, Joaquin (President of BJPI) saw on game shows is insufficient; the presentation of the master videotape in evidence
RPN Channel 9 an episode of Its a Date! which is produced by IXL Productions was indispensable to the determination of the existence of probable cause.
(IXL). He wrote a letter to the President of IXL, Zosa, informing him that BJPI had a As aptly observed by respondent Secretary of Justice:
copyright to Rhoda and Me and demanding that Its a Date be discontinued. A television show includes more than mere words can describe because it
Both shows have the same substance because two matches are made between involves a whole spectrum of visuals and effects, video and audio, such that
a male and a female, both single, and the two couples are treated to a night or two of no similarity or dissimilarity may be found by merely describing the
dining and/or dancing at the expense of the show. So, the major concepts are the general copyright/format of both dating game shows.
same.
Zosa apologized and wanted to settle but IXL didnt stop airing the show. 2. YES present the master tape!
Joaquin sent a second letter in which he reiterated his demand to discontinue Its a REMEDIES PART:
Date. Meanwhile, Zosa registered IXLs copyright to the first episode of Its a Petitioners claim that their failure to submit the copyrighted master
Date and he was given a certificate of Copyright by the National Library. videotape of the television show Rhoda and Me was not raised in issue during the
So naturally, Joaquin sued Zosa. Sec. of Justice Drilon moved for the preliminary investigation and, therefore, it was error for the Secretary of Justice to
dismissal of the case. Joaquin is contending that BJPIs copyright covers only a reverse the investigating prosecutors finding of probable cause on this ground.
specific episode of Rhoda and Me and that the formats or concepts of dating A preliminary investigation falls under the authority of the state
game shows are NOT covered by copyright protection. prosecutor who is given by law the power to direct and control criminal actions.
He is, however, subject to the control of the Secretary of Justice. In reviewing
Note: Joaquin claims that (just in case he asks for specifics) resolutions of prosecutors, the Secretary of Justice is not precluded from considering
1. Determination of the question whether the format or mechanics of a show errors, although unassigned, for the purpose of determining whether there is probable
is entitled to copyright protection is for the court, and not the Secretary of cause for filing cases in court. He must make his own finding of probable cause
Justice, to make. and is not confined to the issues raised by the parties during preliminary
2. Secretary of Justice gravely abused his discretion in ruling that the master investigation. Moreover, his findings are not subject to review unless shown to have
videotape should have been presented in order to determine whether been made with grave abuse.'
there was probable cause for copyright infringement.
Issue: Presentation of Master Tape
1. W/N the format or mechanics of a show is entitled to copyright protection Petitioners claim that Drilon gravely abused his discretion in ruling that the
2. W/N there is a need to present master tapes master videotape should have been presented in order to determine whether there
was probable cause for copyright infringement.
Held/Ratio:
1. NO. The format of a show is not copyrightable. Section 2 of P.D. No. 49 Discussion of 20th Century Case vis--vis Columbia Pictures
(Decree on Intellectual Property), enumerate the classes of work entitled to In the 20th Century Fox Film Corp vs. CA, it involved raids conducted on
copyright protection. The format or mechanics of a television show is not various videotape outlets allegedly selling or renting out pirated videotapes.
included in the list of protected works in 2 of P.D. No. 49. For this reason, The trial court found that the affidavits of NBI agents, given in support of the
the protection afforded by the law cannot be extended to cover them. application for the search warrant, were insufficient without the master tape. The
Copyright, in the strict sense of the term, is purely a statutory right. It presentation of the master tapes of the copyrighted films, from which the pirated
is a new or independent right granted by the statute, and not simply a pre- films were allegedly copied, was necessary for the validity of search warrants against
existing right regulated by the statute. Being a statutory grant, the rights are those who have in their possession the pirated films. The essence of a copyright
only such as the statute confers, and may be obtained and enjoyed only with infringement is the similarity or at least substantial similarity of the purported
respect to the subjects and by the persons, and on terms and conditions pirated works to the copyrighted work. Hence, the applicant must present to the
specified in the statute. court the copyrighted films to compare them with the purchased evidence of the
video tapes allegedly pirated to determine whether the latter is an unauthorized Respondents claim:
reproduction of the former. This linkage of the copyrighted films to the pirated It uses, the trademark "CHARLIE BROWN" & "DEVICE" on children's
films must be established to satisfy the requirements of probable cause. Mere wear such as T-shirts, undershirts, sweaters, brief and sandos, in class 25; whereas
allegations as to the existence of the copyrighted films cannot serve as basis for the "CHARLIE BROWN" is used only by petitioner as character, in a pictorial
issuance of a search warrant. illustration used in a comic strip appearing in newspapers and magazines. It has no
This ruling was qualified in Columbia Pictures vs. CA: trademark significance and therefore respondent-registrant's use of "CHARLIE
In fine, the supposed pronunciamento in said case regarding the necessity BROWN" & "DEVICE" is not in conflict with the petitioner's use of "CHARLIE
for the presentation of the master tapes of the copyrighted films for the validity of BROWN"
search warrants should at most be understood to merely serve as a guidepost in Relied on the ruling on October 2, 1984 in which the Director of the
determining the existence of probable cause in copyright infringement cases where Philippine Patent Office rendered a decision in this case holding that a copyright
there is doubt as to the true nexus between the master tape and the pirated copies. registration like that of the name and likeness of CHARLIE BROWN may not
An objective and careful reading of the decision in said case could lead to no other provide a cause of action for the cancellation of a trademark registration.
conclusion than that said directive was hardly intended to be a sweeping and
inflexible requirement in all or similar copyright infringement cases. Issue: WHETHER A COPYRIGHTED CHARACTER MAY NOT BE
APPROPRIATED AS A TRADEMARK BY ANOTHER UNDER PRESIDENTIAL
In the case at bar, during the preliminary investigation, petitioners and DECREE NO. 49.
private respondents presented written descriptions of the formats of their
respective televisions shows, on the basis of which the investigating prosecutor S.C. Ruling:
ruled: The petitioner is impressed with merit.
The copyright does not extend to the general concept or format of its Since the name "CHARLIE BROWN" and its pictorial representation were
dating game show. Accordingly, by the very nature of BJPIs copyright, the covered by a copyright registration way back in 1950 the same are entitled to
investigating prosecutor should have the opportunity to compare the videotapes protection under PD No. 49, otherwise known as the "Decree on Intellectual
of the two shows. Property".
Aside from its copyright registration, petitioner is also the owner of several
trademark registrations and application for the name and likeness of "CHARLIE
2. United Feature Syndicate, Inc., vs. Munsingwear Creation Manufacturing BROWN" which is the duly registered trademark and copyright of petitioner United
Company. Feature Syndicate Inc. as early as 1957 and additionally also as TV SPECIALS
featuring the "PEANUTS" characters "CHARLIE BROWN.
Petitioners claim: It is undeniable from the records that petitioner is the actual owner of said
Petitioner is asking for the cancellation of the registration of trademark trademark due to its prior registration with the Patent's Office.
CHARLIE BROWN (Registration No. SR. 4224) in the name of respondent
MUNSINGWEAR, alleging that petitioner is damaged by the registration of the 3 - Baker v. Selden (1879)
trademark CHARLIE BROWN of T-Shirts under Class 25 with the Registration No. The copyright of a book on bookkeeping cannot secure the exclusive right to make,
SR-4224 dated September 12, 1979 in the name of Munsingwear Creation sell, and use account books prepared upon the system set forth in such book.
Manufacturing Co., Inc., on the following grounds:
(1) that respondent was not entitled to the registration of the mark CHARLIE Facts: In 1859, Charles Selden took the requisite steps for obtaining the copyright of
BROWN, & DEVICE at the time of application for registration; a book, entitled Seldens Condensed Ledger, or Bookkeeping Simplified, which
(2) that CHARLIE BROWN is a character creation or a pictorial illustration, the explained and described a peculiar system of bookkeeping, and illustrated his method
copyright to which is exclusively owned worldwide by the petitioner; by means of ruled lines and blank columns, with proper headings on a page or on
(3) that as the owner of the pictorial illustration CHARLIE BROWN, petitioner has successive pages.
since 1950 and continuously up to the present, used and reproduced the same to In 1867, W.C.M. Baker produced a book that uses a similar system as that
the exclusion of others; of Seldens so far as results are concerned, but makes a different arrangement of the
(4) that the respondent-registrant has no bona fide use of the trademark in commerce columns, and uses different headings.
in the Philippines prior to its application for registration. Selden sued Baker for an alleged copyright infringement, contending 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
lines and headings, or ruled lines and headings made and arranged on substantially said event. One of these was Hoehlings Who Destroyed the Hindenburg? which
the same system, without violating the copyright. Baker argues that the matter was based on his extensive research (read investigative reports, consulted previously
alleged to be infringed is not a lawful subject of copyright. published articles and books, and conducted interviews with survivors of the crash as
well as others who possessed information about the Hindenburg ). In his book, he
Issue: Whether Selden, in obtaining the copyright of his book, secured the exclusive talked about Spehl a crew member who according to the author was most likely the
right to the use of the system or method of bookkeeping which the book intended to saboteur of the airship so as to please his ladyfriend, who wanted to prove that the
illustrate and explain. Nazis were not invincible. Ten years later Mooney published his book, The
Hindenburg. Mooneys work was said to be more literary than historical in its
Held/Ratio: attempt to weave a number of symbolic themes through the actual events
1. No. The copyright of his book only secures to him the exclusive right of printing surrounding the tragedy. Furthermore, Mooney acknowledges, that he consulted
and publishing his book. While no one has a right to print or publish his book, or Hoehlings book, and that he relied on it for some details. He asserts that he first
any material part thereof, as a book intended to convey instruction in the art, any discovered the Spehl-as-saboteur theory when he read Titlers Wings of
person may practice and use the art itself which he has described and illustrated Mystery. Mooneys motion picture rights were sold to Universal Studios. Initially,
therein. his work was suppoed to be used for a television show, but it was later on used for a
The description of the art in a book, though entitled to the benefit of final screenplay. In the movie, a certain Boerth was the one who planned to sabotage
copyright, lays no foundation for an exclusive claim to the art itself. The object of the plane so as to embarrass the Reich and that a Luftwaffe intelligence officer
the one is explanation; the object of the other is use. The former may be secured by aboard the plane discovers the plan who was later on convinced that the airship
copyright. The latter can only be secured, if it can be secured at all, by letters patent. should be destroyed after the carrier has landed but due to a storm that delayed the
(Patents are used to protect ideas and methods / useful arts. Copyrights can only be plane and their failure to diffuse the bomb, Hidenburg was destroyed with people
used to protect expressions.) still in it.
The use of the art is a totally different thing from a publication of the book Upon hearing of the release of the film, Hoehling filed a suit for copyright
explaining it. By publishing the book without getting a patent for the art, the latter is infringement and common law unfair competition against Universal. Mooney was
given to the public. Seldens system was not patented, and is therefore open and free later on included as a defendant in the case.
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. Issue: Whether Mooney and Universal committed copyright infringement
The copyright of the book, if not pirated from other works, would be valid
without regard to the novelty, or want of novelty, of its subject matter. The novelty Held/Ratio: NO. It is undisputed that Hoehling has a valid copyright for his book.
of the art or thing described or explained is the province of letters patent, not of However, his claim that Mooney and Universal copied the plot of his book is
copyright. The claim to an invention or discovery of an art or manufacture must be untenable because the said plot is an idea and ideas are not copyrightable. Although
subjected to the examination of the Patent Office before an exclusive right therein Hoehling admits this, he further contends that his expression of his idea is
can be obtained, and it can only be secured by a patent from the government. copyrightable and in support of such, points to Sheldon case (Letty Lynton infringed
Blank account books are not the subject of copyright, and that the mere Dishonored Lady by copying its story of a woman who poisons her lover) and
copyright of Seldens book did not confer upon him the exclusive right to make Detective Comics case (exploits of Wonderman infringed the copyright held by the
and use account books, ruled and arranged as designated by him and described creators of Superman, the original indestructible man). The court said that the
and illustrated in said book. cases mentioned were about works of fiction where the distinction between idea and
expression is elusive. But in the present case, the idea at issue is an interpretation
4. - Hoehling v. Universal City Studios Inc. (1980) of an historical event and thus is not copyrightable. Although the plots of the
two works were necessarily similar, there could be no infringement because of
Facts: the public benefit in encouraging the development of historical and biographical
The case arises from the three separate accounts of the triumphant works and their public distribution. To avoid a chilling effect on authors who
introduction, last voyage, and tragic destruction of the Hindenburg (a large German contemplate tackling an historical issue or event, broad latitude must be granted to
passenger airship). The Hindenburg was built during the reign of Hitler and was said subsequent authors who make use of historical subject matter, including theories or
to be an indestructible carrier. However in 1937, the airship exploded in New Jersey plots. Furthermore, the court said that there cannot be any such thing as copyright
and 36 passengers were killed. Both American and German authorities were not able in the order of presentation of the facts, nor, indeed, in their selection.
to identify the cause of the explosion but were adamant at ruling out sabotage. Hoehling also claimed that a number of things that he found out through his personal
Throughout the years several news reports, articles and books were written about the research were copied by Mooney and Universal. To answer this, the court made it
clear that factual information is in the public domain. And lastly, Hoehling claimed original Code is covered by Section 102 (a) as an original work of authorship, and its
similarities in relation to random duplications of phrases and sequences of events (all amendments by Section 106 (2) as derivative works.
three works contain a scene in a German beer hall, in which the airships crew Delta argues that the Code is not copyrightable because it is a system. Section 102
engages in revelry prior to the voyage, common German greetings of the period, (b) states that a copyright protection even of an original work does not cover any
such as Heil Hitler, or songs, such as the German National anthem). These idea, procedure, process, system, method of operation, concept, principle, or
elements, the court said, are merely scenes a faire, that is, incidents, characters or discovery, regardless of the form in which it is described, explained, illustrated, or
settings which are as a practical matter indispensable, or at least standard, in the embodied in such work. The court ruled that the Code is not a system. The Code is a
treatment of a given topic and that it is virtually impossible to write about a taxonomy, which may be put to many uses. These uses may be or include systems;
particular historical era or fictional theme without employing certain stock or the Code is not. (No other explanation was given)
standard literary devices and so, scenes a faire are not copyrightable as a matter of The Code was a how-to for dentists. So far as the ADA is concerned, any
law. dentist, any insurer, anyone at all, may devise and use forms into which the Codes
The court further said that in distinguishing between themes, facts, and descriptions may be entered. Section 102 (b) precludes ADA from suing, for
scenes a faire on the one hand, and copyrightable expression on the other, copyright infringement, a dentist whose office files record treatments using the
courts may lose sight of the forest for the trees. By factoring out similarities based Codes nomenclature. No fields of practice has been or can be monopolized, given
on non-copyrightable elements, a court runs the risk of overlooking wholesale this constraint. Section 102 (b) permits Delta Dental to disseminate forms inviting
usurpation of a prior authors expression. A verbatim reproduction of another dentists to use the ADAs Code when submitting bills to insurers. But it does not
work, of course, even in the realm of nonfiction, is actionable as copyright permit Delta to copy the Code itself, or make and distribute a derivative work based
infringement. Thus, in granting or reviewing a grant of summary judgment, courts on the Code. (Ganito, parang cook book, di mo pwedeng kasuhan ung taong
should assure themselves that the works before them are not virtually identical. In magluluto based on your book, pero pwede mong kasuhan ung taong gagaya nung
works devoted to historical subjects, it is our view that a second author may book mo mismo).
make significant use of prior work, so long as he does not bodily appropriate the NOT REALLY IMPORTANT, pero baka lang itanong ni sir. The district
expression of another. In this case, it is clear that all three authors relate the court compared the Code to a lamp (or any sculpture) wherein you must first
story of the Hindenburg differently. determine whether its artistic and utilitarian aspects are separable before you can
copyright it (But the appellate court ruled that, obviously, the Code is not a form of
sculpture so this rule does not apply).
5. American Delta Association v. Delta Dental Plans Association (1997) The court then continues the explanation by comparing the taxonomy to a
lamp. Congress permits works of art to be copyrighted, but does not extend the
Facts: copyright to industrial design, which in the main falls into the province of patent,
The American Delta Association (ADA) published a book entitled Code on Dental trademark, or trade dress law. When the maker of a lamp seeks to obtain a copyright
Procedures and Nomenclature (1969). It contained a taxonomy of different dental for the item as a sculpture, it is necessary to determine whether its artistic and
procedures. The 1991 and 1994 versions were submitted for copyright registration, utilitarian aspects are separable. If yes, the artistic elements of the design may be
which was granted by the Register of Copyrights. copyrighted; if no, the designer must look outside copyright law for protection from
Delta then published a book entitled Universal Coding and Nomenclature, which imitation. The district court judge applied to the ADAs Code the same approach
contained blank forms dentists could use for their records, as well as most of the court use for three-dimensional articles, and found that the Code has no expression
Code that the ADA first created. The ADA sued Delta for copyright infringement. separable from its utilitarian aspects, and held that it therefore may not be
Delta argued that taxonomy and nomenclature were not copyrightable. copyrighted.
DISTRICT COURT: The Code cannot be copyrighted because it catalogs a field of
knowledge in other words, that no taxonomy may be copyrighted. ADA appealed. 6. L. Batlin & Son v. Snyder (1976)

Issue: W/N the taxonomy may be copyrighted Facts:

Uncle Sam mechanical banks (banks) have been on the American scene since
Held/Ratio: YES. Any original literary work may be copyrighted. The necessary 1886. This basic delightful design has long been in the public domain. These
degree of originality is low, and the work need not be aesthetically pleasing to be banks are found in collectors books and known to the average person.
literary. A taxonomy is a way of describing items in a body of knowledge or Uncle Sams description: wears a pipe hat, blue full dress coat, vest with stars and
practice; it is not a collection or compilation of bits and pieces of reality. The 1991 red and white striped trousers, and leaning on his umbrella. The base is 4-5 inches
and 1994 versions of the Code may be recompilations of earlier editions, but the wide and his bag is placed in the base. A coin may be placed in Uncle Sams hand.
When a lever is pressed, the arm lowers, and the coin falls into the bag, while Uncle testimony today is that if you give a man a seven-inch model and you say I want
Sams whiskers move up and down. The base has an embossed American Eagle with this to come out in a five-inch model, and he copies it, the fact that he has to
the words Uncle Sam and Bank on each side. have some artistic ability to make a model by reducing the seven to the five adds
Snyder doing business as J.S.N.Y, obtained a registration of copyright on a something to it. That is the only issue in this case.
plastic Uncle Sam bank in the category of Works of Art as sculpture. In his The plastic version reproduces the cast iron bank except that it
affidavit, Snyder said that he obtained a cast metal antique Uncle Sam Bank then he proportionately reduces the height from approximately eleven inches to
flew to Hong Kong to manufacture replicas as Bicentennial items. Snyder wanted approximately nine inches with trivial variations. There was no level of input
his bank to be made of plastic and to be shorter than the case metal sample (11 which means that there was no great skill and originality.
inches to 9 inches). He also changed the shape of the bag and to include the The test of originality is concededly one with a low threshold in that (a)ll
umbrella in a one-piece mold. The plastic bank carried the legend CR Copyright that is needed . . . is that the author contributed something more than a
J.S.N.Y. merely trivial variation, something recognizably his own.
Batlin is also in the novelty business. He ordered 30 cartons of cast iron Uncle Sam There were no elements of difference that amounted to significant
mechanical banks from Taiwan. When he became aware of the existence of a plastic alteration or that had any purpose other than the functional one of making a
bank, which he considered an almost identical copy of the cast iron bank, Batlins more suitable (and probably less expensive) figure in the plastic medium.
trading company in Hong Kong procured a manufacturer and the president of The reproduction must contain an original contribution not present in the
Batlin ordered plastic copies also. underlying work of art and be more than a mere copy. The mere reproduction of
Batlin was notified by the US Customs that the plastic banks were covered by a work of art in a different medium should not constitute the required
Snyders copyright. The customs refused entry. So Batlin is instituting this case to originality for the reason that no one can claim to have independently evolved any
declare Snyders copyright void and for damages for unfair competition and particular medium. Nor can the requirement of originality be satisfied simply by
restraint of trade. The lower court granted Batlin a preliminary injunction. the demonstration of physical skill or special training. (remember Toyota
Snyder claims differences not only of size but also in other very minute details. case?)
To extend copyrightability to minuscule variations would simply put a
Uncopyrighted Model Cast Iron Mechanical Bank Copyrighted Plastic Model weapon for harassment in the hands of mischievous copiers intent on appropriating
and monopolizing public domain work.
1. Shape of the bag: Rough Smooth Slimmer
2. Bag is fatter Eagle holding leaves
3. Eagle is holding arrows

Different also as to texture of the clothing, the hairline, shape of the bow ties and the
shirt collars. Basta mostly about shape and texture. Many of these ARE NOT
perceptible to the casual observer.

Issues: W/N there is copyright infringement

Held/Ratio:
1. NO. The court examined the copyrighted plastic model and the uncopyrighted
model cast iron model. The Snyder bank is extremely similar to the cast iron
bank, save in size and material with the only other differences, such as the shape
of the satchel and the leaves in the eagles talons being by all appearances, minor.
Similarities include, more importantly, the appearance and number of stripes on the
trousers, buttons on the coat, and stars on the vest and hat, the attire and pose of
Uncle Sam, the decor on his base and bag, the overall color scheme, the method of
carpetbag opening, to name but a few.
The judge said: I am making a finding of fact that as far as Im concerned, it
is practically an exact copy and whatever you point to in this (sic) differences
are so infinitesimal they make no difference. All you have proved here by the
 b. if the form of the derivative work and the form of the underlying work
7. Entertainment Research Group, Inc. v. Genesis Creative Group, Inc. (1998) (three-dimensional, two- dimensional, plastic, etc.) are sufficiently
different, then the derivative work is original enough to be
Facts: copyrightable.
Entertainment Research Group (ERG) designs and manufactures three- According to the Court, this test completely fails to take into account the
dimensional inflatable costumes based upon the cartoon characters of the companies rights of the holder of the copyright for the underlying work, the Doran test should
which use them for advertising and promotional services. (e.g. Pillsbury - Pillsbury not be applied to determine the copyrightability of a derivative work that is based on
Dough Boy costume, Toys-R- Us - Geoffrey the Giraffe costume, Quaker Oats - a preexisting work that is itself copyrighted.
CapN Crunch costume). ERG was allegedly the only manufacturer utilizing these Indeed, the body of law regarding derivative copyrights is designed to strike
techniques. a balance between the holder of a copyright in the underlying work and the creator of
Genesis is in the business of marketing promotional and advertising devices a work that is made by copying that underlying work. Courts must be concerned
to various companies and it was to sell exclusively ERGs products on a commission about the impact such a derivative copyright will have on the copyright privileges
basis, while Aerostar is a manufacturer of hot air balloons, cold air inflatable and rights of the owner of the underlying work. of preexisting two-dimensional
products and cold air walk-around costumes. works.
ERG claims that Genesis secretly entered into an agreement with Aerostar
while the ERG-Genesis relationship was still alive and that Genesis supplied Durham Test:
Aerostar with ERG-made costumes and ERGs proprietary information so that This test contains two prongs: First, to support a copyright the original
Aerostar could enter into the inflatable costume industry and so that Genesis could aspects of a derivative work must be more than trivial. Second, the original aspects
get itself a better deal through Aerostar. ERG further claims that Genesis provided of a derivative work must reflect the degree to which it relies on preexisting material
Aerostar with examples of ERG-manufactured costumes so that Aerostar could learn and must not in any way affect the scope of any copyright protection in that
how to manufacture the complicated and intricate costumes and so that Aerostar preexisting material.
could copy the costumes. The first prong of the Durham test is in harmony with numerous decisions
ERG did not possess valid copyrights in its three-dimensional inflatable of this Circuit which establish that the original aspects of a work must be more than
costumes but there was a preexisting copyright on the two-dimensional cartoon trivial to warrant copyright protection (holding that [o]riginality is the sine qua non
characters. ERG alleges that Aerostar copied and infringed ERGs copyrights in the of copyrightability).
inflatable costumes that ERG designed and manufactured based on the underlying The second prong is completely consistent with Section 103(b) of the
copyrighted characters. Copyright Act and is, in fact, necessary because of Section 103(b), which provides
that:
Issue: Whether ERGs costumes are copyrightable as derivative works. The copyright in a compilation or derivative work extends only to the
material contributed by the author of such work, as distinguished from the
Held/Ratio: preexisting material employed in the work, and does not imply any exclusive right in
1. YES. The Copyright Act defines a derivative work as a work based upon one or the preexisting material. The copyright in such work is independent of, and does not
more pre-existing works, such as an art reproduction or any other form in which affect or enlarge the scope, duration, ownership, or subsistence of, any copyright
a work may be recast, transformed, or adapted. A work consisting of editorial protection in the preexisting material.
revisions, annotations, adapted elaborations, or other modifications which, as a The second prong of the Durham test is designed to ensure that copyright
whole, represent an original work of authorship, is a derivative work. Given protection is not given to a derivative work if doing so would necessarily affect the
this definition, it is clear that ERGs costumes are derivative works. scope of any copyright protection in the preexisting material.
Nevertheless, the copyright protection afforded to derivative works is more limited This is so because if copyright protection were given to derivative works
than it is for original works of authorship. Specifically, Section 103(b) provides that that are virtually identical to the underlying works, then the owner of the underlying
the copyright in a derivative work extends only to the material contributed by the copyrighted work would effectively be prevented from permitting others to copy her
author of such work, as distinguished from the preexisting material employed in the work since the original derivative copyright holder would have a de facto monopoly
work. due to her considerable power to interfere with the creation of subsequent derivative
According to the Doran test (which ruled that a three-dimensional, inflatable works from the same underlying work.
representation of Santa Claus was original and copyrightable): The Durham test is the proper approach
a. test of copyrightability must be the form which the author has used to
express the figure, idea, or theme.
8. Pickett v. Prince (2000) picture in his own guitar without Pickett's consent, Pickett would have a claim of
infringement. But the only copyright that Pickett claims Prince infringed is a
Facts: copyright that Pickett had no right to obtain, namely a copyright on a derivative work
Prince (the artist formerly known as) Rogers Nelson started calling himself an based on Prince's copyrighted symbol.
unpronounceable symbol which looks a lot like an Egyptian hieroglyph ankh. The Picket could not copyright his guitar, as his guitar infringed on Princes
symbol is his trademark but it is also a copyrighted work of visual art that licensees copyright.
of Prince have embodied in various forms, including jewelry, clothing, and musical
instruments. Prince did not register a copyright of the symbol until 1997, but Picket
admits that Prince obtained it as early as 1992 because registration is not a condition 9 - Feist Publications Inc. v Rural Telephone Service Co., Inc. (1991)
of copyright protection.
Pickett made a guitar in the shale of Princes symbol. He admits that this is a Facts:
derivative work within the meaning of 17 USC 101 as [a] work based upon one or Rural Telephone is a public utility that provides telephone service in several
more pre-existing works, such as a translation, musical arrangement, dramatization, parts of Kansas. It is subject to state regulation that mandates telephone companies to
fictionalization, motion picuture or any other form in which a work may be recast, annually issue an updated telephone directory. Accordingly, it publishes both white
transformed, or adapted. Picket claims that he had shown the guitar to Prince. (name, town and telephone number of the subscriber) and yellow (business
Prince appeared in public playing a guitar similar to Pickets shortly after. A suit was subscriber, category and featured classified ads) pages where the names of subscriber
brought by Picket, but Prince counter claimed. and business subscriber are arranged alphabetically. Feist on the other hand publishes
Picket argued that it wasnt Prince that owned the copyright but that it was an area-wide telephone directory covering a bigger geographical range. Since it is
Warner Brothers, and that therefore Prince had no standing to enforce the copyright. not a service provider, who obtains information directly from the subscribers, Feist
It is Picketts position that one can copyright a work derivative from another asked 11 telephone companies for license to use their white page listings and only
work when the original work is copyrighted by someone else who hasnt authorized Rural refused. Nevertheless, Feist still used the white page listing but in doing so,
the maker of the derivative work to copyright it? removed those outside of their geographical range and conducted a survey on the
others; thus, some of Feists listing included street address. Still 1,309 of Feists
Issue: Does Picket own a copyright over the guitar, a derivative work? listing are identical with Rurals, 4 of which were fictitious to detect copying and this
prompted Rural to sue for copyright infringement stating that Feist, in compiling
Held/Ratio: NO. its own directory, could not use the information contained in Rurals white pages.
Picket had the burden to show that his derivative work had enough District court ruled in favor of Rural stating that telephone directories are
originality to entitle him to copyright. He was not able to show enough originality. copyrightable which was affirmed in the Court of Appeals (10th Circuit).
The difference in appearance was due to nothing more than the functional
difference between a two-dimensional symbol and a guitar in the shape of that Issue: Whether Feist committed copyright infringement (were names, town and
symbol. telephone numbers in telephone directory protected by copyright)
Picket cannot make a derivative work based on the Prince symbol without
Princes authorization, even if there was any semblance of originality. A derivative Held/Ratio:
result is bound to be very similar to the original. The court made use of the analogy NO. The case distinguishes 2 things: facts and factual compilations. The
of a book being translated into English from French, the two translations might be court stated that no one may claim originality as to facts. This is because facts do not
similar and difficult to establish whether one is a copy of the other or because both owe their origin to an act of authorship. The distinction lies between creation and
are copies of the same foreign language original. discovery and that the first person to find and report a particular fact has not created
Picket relies on Section 103(A) of the copyright act which provides that the fact; he or she has merely discovered its existence. Thus, all facts may not be
copyright can be obtained in derivative works protection for a work employing copyrighted and are part of the public domain available to every person.
material pre-existing material in which copyright subsists does not extend to any part Factual compilations, on the other hand, may possess the requisite
of the work in which such material has been used unlawfully. It is Pickets originality. The compilation author typically chooses which facts to include, in what
interpretation that this authoirzes a person other than the owner of the original work order to place them, and how to arrange the collected data so that they may be used
to make a derivative work, but forbidding him from infringing upon the original. effectively by readers. So long as choices as to selection and arrangement are
However, 103(A) means only that the right to make a derivative work does not made independently by the compiler and entail a minimal degree of creativity,
authorize the maker to incorporate material that infringes someone elses copyright. sufficiently complies with originality. Thus, if the selection and arrangement are
So if Pickett owned a copyright of, say, a picture of Prince, and Prince used that original, these elements of the work are eligible for copyright protection.
 The court also discussed the 1909 Act which contained a provision stating Facts:
that a person seeking to register a work should indicate on the application the type of Roth Greeting Cards was engaged in the greeting card business. Roth employed a
work, and it listed 14 categories under which the work might fall. One of these writer to develop the textual
categories was books, including composite and cyclopdic works, directories, material for its cards, which will be reviewed by the company president. When
gazetteers, and other compilations. This led some courts to believe that directories accepted, the artist would integrate the text into a rough layout of a greeting card,
and all other compilations are copyrightable per se even without satisfying the which when approved will be developed until the card is ready to be printed and
creativity and originality requisites. Worse, some of the said courts developed a new distributed to stores. United Card Co. was also engaged in the same business. But
theory to justify the protection of factual compilations. Known alternatively as sweat unlike Roth, its source of art and text were unclear. United did not have any writers
of the brow or industrious collection, the underlying notion was that copyright was a on its payroll and the texts were said to be products of the minds of the president and
reward for the hard work that went into compiling facts. Under this doctrine, the only vice-president, and that the VP made the pictures.
defense to infringement was independent creation and a subsequent compiler was not Roths claim involves the production and distribution by United of seven greeting
entitled to take one word of information previously published, but rather had to cards which bear a remarkable resemblance to seven of Roths cards on which
independently work out the matter for himself, so as to arrive at the same result from copyrights had been granted. Roth sued United to recover damages and obtain
the same common sources of information. Thus in the Copyright Act of 1976, injunctive relief for copyright infringement.
changes were made so as to clear up the confusion with regard to compilations. Sec (It should be noted that the VP admitted that he had seen the cards of Roth while he
101 of the said act defined compilation in the copyright sense as a work formed was brainstorming and that he may have copied some parts of it. Also, if sir asks,
by the collection and assembling of preexisting materials or of data that are two titles of the copied cards were mentioned in the case: I WUV YOU card and I
selected, coordinated, or arranged in such a way that the resulting work as a MISS YOU ALREADY card with an inside message reading AND YOU HAVENT
whole constitutes an original work of authorship. EVEN LEFT)
There are three distinct elements and requires each to be met for a work to DISTRICT COURT DECISION: In favor of United for 2 reasons
qualify as a copyrightable compilation: First, the court found that Roth had not completed its registration of copyright
(1) the collection and assembly of pre-existing material, facts, or data; ownership at the time the case was filed, and therefore the court did not have
(2) the selection, coordination, or arrangement of those materials; and jurisdiction. According to 17 USC Sec. 13, no action for infringement of copyright
(3) the creation, by virtue of the particular selection, coordination, or shall be maintained until the provisions of Title 17 of the United States Code with
arrangement, of an original work of authorship. respect to the deposit of copies and registration of such work shall have been
The originality requirement can be gleaned on how the facts are presented- complied with. The court found that Roth filed this action two days before the
whether the selection, coordination and arrangement of the facts are original to application for copyright registration was received by the copyright office. It held
merit protection. The copyright in a compilation extends only to the material that an action is maintained within the meaning of that statute when it is instituted.
contributed by the author of such work, as distinguished from the preexisting Second, it found that while pictures could be subject to copyright, the pictures on the
material employed in the work, and does not imply any exclusive right in the cards distributed by United did not infringe on the copyright of the pictures on the
preexisting material. Roth cards. It ruled that although it was copied by United, the wording or textual
In this case, the directory was in alphabetical order, which the court points as neither matter of each of the Roths cards consists of common and ordinary English words
creative nor original and in fact is an age old practice. It cannot be said that the and phrases which are not original with Roth and were in the public domain prior to
selection, coordination and arrangement of facts is original, thus Feist did not first use by it.
commit copyright infringement.
Issues:
10. Roth Greeting Cards v. United Card Co, (1970) 1. W/N the court has jurisdiction
2. W/N the cards created by Roth are protected by copyright
Doctrines: 3. W/N there has been an infringement
The test of infringement is whether the work is recognizable by an
ordinary observer as having been taken from the copyrighted source. Held/Ratio:
Since direct evidence of copying is rarely available, copying may be 1. YES. CA ruled that although there had been some delays in completing the
established by proof of access and substantial similarity. process, Roth had initiated filing for copyright well before the case was filed, so
the delays are not relevant
2. YES. CA agreed with the district court when it ruled that the words could not be
protected since they were too ordinary. However, proper analysis of the problem
 requires that all elements of each card, including text, arrangement of text, art 11. Mason v. Montgomery Data Inc. (1992)
work, and association between art work and text be considered as a whole. In
this regard, the court concluded that Roths cards are both original and Facts:
copyrightable since the cards, as a whole, are representation of a tangible In 1967, the plaintiffs began creating land ownership maps for Montgomery
expression of an idea and that such expression was, in totality, created by Roth. County, Texas based upon United States Geological Survey maps using title data
3. YES. To constitute an infringement, there must be a substantial similarity obtained from public records as well as data supplied by an agreement with Conroe
between the infringing work and the work copyrighted. The test of infringement Title & Abstract Co., Inc., a defendant herein. By July 1969, 118 individual map
is whether the work is recognizable by an ordinary observer as having been sheets were created and published with copyright notices. The map sheets contain
taken from the copyrighted source. The question which remains is whether identification, location and relative position, size and shape of land grants and real
United did in fact copy the cards. Since direct evidence of copying is rarely property in Montgomery County and representations of survey lines, tract
available, copying may be established by proof of access and substantial boundaries, identification of deeds, abstract numbers, and other information that the
similarity. In this case, there was a testimony establishing that United had access plaintiffs claim as original work. The plaintiffs made revisions to the original map
to the cards (it sent employees to stores where the Roth cards were on display to sheets, and 115 revised map sheets were published with copyright notices during the
observe what the competition was doing). Also, there was testimony almost period from 1970 to 1980.
compelling the inference that United always looks at the cards produced by The plaintiffs contend that the defendants made an unauthorized derivative
other companies and make similar cards under its label. These circumstances, edition of the original maps by cutting and pasting the plaintiffs copyrighted map
together with the marked similarity between the cards, convinced the court that sheets into new configurations. It is also alleged that the defendants then copied the
each if Uniteds cards in question, considered as combined compositions of art surveys, tract boundaries, topography, and other features from the plaintiffs
and text, were in fact copied from the Roth cards. copyrighted maps on transparent overlays.
Between 1980 and 1982 defendant, Landata, Inc. of Houston (Landata),
DISSENT, Kilkenny, Circuit Judge bought a set of the plaintiffs previously registered map sheets in a public store.
I cannot, however, follow the logic of the majority in holding that the Landata then developed its own updated map sheets for distribution by the
uncopyrightable words and the imitated, but not copied art work, constitutes defendant, Montgomery Data, Inc. (MDI), to its subscribers. The plaintiffs learned
such total composition as to be subject to protection under the copyright laws. of this activity in September 1985, when Landata sought permission to use the
The majority concludes that in the overall arrangement of the text, the art work copyrighted map sheets in a computer title plant to be made available to other title
and the association of the art work to the text, the cards were copyrightable and companies. The plaintiffs denied Landata this use.
the copyright infringed. This conclusion, as I view it, results in the whole Registration of the plaintiffs copyright in one original map sheet was filed
becoming substantially greater than the sum total of its parts. With this in October 1968 and October 1987 while those of the revised ones were registered in
conclusion, of course, I cannot agree. December 1987.
The District court held the maps not copyrightable under the idea/expression
Cited case: Detective Comics, Inc. v. Bruns Publications, Inc. merger doctrine and that the plaintiffs maps were not original that would grant
This case involved the intimation of the Superman image by a rival company. statutory damages for infringement.
In finding infringement, the court emphasized that so far as the pictorial
representations and verbal descriptions of Superman are not a mere delineation Issues: W/N the District court was correct in holding that the maps were not
of a benevolent Hercules, but embody an arrangement of incidents and literary copyrightable under the idea/expression merger doctrine and that the plaintiffs maps
expressions original with the author, they are proper subjects of copyright and were not original that would grant statutory damages for infringement .
susceptible of infringement because of the monopoly afforded by the Act. The
district court in this case found that both the art work and the text materials were Held/Ratio:
copyrightable and that each was infringed. No. The District court was not correct on both points. The Appellate court
(The judge compared the Superman case with the Roth case. In the Roth case, held that a map can be drawn in a variety of ways and can contain various levels of
though the art work and the text are not copyrightable, but when taken as a data. Therefore they are a creative expression worthy of copyright.
whole it becomes a tangible expression of the author and it becomes It based its decision on Feist Publications Inc. v. Rural Telephone Service Inc.
copyrightable. However, in the Superman case, the court ruled that there was an and found that compilations of factual data are copyrightable if the authors
infringement not because of the finished product but because both the art work selection, coordination and arrangement of the information depicted are sufficiently
and the text, when taken separately, are copyrightable). creative to qualify as a creative expression.
Ruling of the District court (in case he asks about the Merger Doctrine)
 The plaintiffs principal contention is that the defendants made an
unauthorized use of its copyrighted maps to create certain reorganized map sets, 12. Lindsay v. The Wrecked and Abandoned Vessel R.M.S. TITANIC (1999)
overlays and computer databases.
The Copyright Act provides that factual Compilations can be copyrighted, Facts:
however, the copyright in a compilation or derivative work extends only to the Lindsay is an independent documentary film maker engaged in the business
material contributed by the author of such work, as distinguished from the pre- of creating, producing, directing, and filming documentaries. R.M.S. Titanic, Inc.
existing material employed in the work, and does not imply any exclusive right in the (RMST) is a publicly traded U.S. corporation that was awarded exclusive status as
pre-existing material. salvor-in-possession of the Titanic wreck site and is authorized to carry on salvage
In other words, when the copyright lies in the arrangement of facts, only the operations at the vessel's wreck site. As a condition of obtaining these rights, RMST
arrangement is protected by the copyright. Obviously, the plaintiffs could not allegedly agreed to maintain all the artifacts it recovered during the salvage
copyright the information in the public records but they do purport to have operations for historical verification, scientific education, and public awareness. In
copyrighted the arrangement of the information on the maps. 1994, Lindsay, under contract with a British television company, filmed and directed
To establish a prima facie case of copyright infringement, the plaintiff must the British documentary film, Explorers of the Titanic, a chronicle of RMST's third
prove ownership of copyrighted material, that the defendant had access to the salvage expedition of the Titanic. To film this documentary, Lindsay sailed with
copyrighted material and that there is a substantial similarity between the authors RMST and the salvage expedition crew to the wreck site and remained at sea for
and the defendants expression of the idea in the material. approximately 1 month. He alleges that during and after filming this documentary, he
A plaintiff may establish ownership by showing that the material is conceived a new film project for the Titanic wreck using high illumination lighting
copyrightable and that he complied with the statutory requirements in securing the equipment. He discussed his idea with Tulloch (shareholder, president and member
copyright. of the board of directors of RMST) and, later on agreed to work together on the
In this case, it is undisputed that the plaintiffs obtained copyright certificates venture. Lindsay developed a comprehensive business plan for the new film project
for the maps in question and that the defendants had access to them. Therefore, the Titanic: A Memorial Tribute. Tulloch allegedly informed the plaintiff that he would
resolution of this case depends upon the copyrightability of the maps. agree to the plan but that Tulloch would have to obtain approval from the RMST
It is well settled in Copyright Law that a copyright protects only an authors Board of Directors. The contract (terms of Lindsay's compensation, including sharing
expression of an idea and not the idea itself. If, however, the expression of an idea is in the profits derived from any film, video and still photographs obtained from the
inseparable from the idea itself, the expression and idea merge. 1996 salvage operation) between them was never executed.
The Merger doctrine was developed to deal with the difficulty in Part of his pre-production efforts, the plaintiff created various storyboards for
determining the difference between an idea and the expression of that idea. the film, a series of drawings which incorporated images of the Titanic by identifying
When the idea and its expression are thus inseparable, copying the specific camera angles and shooting sequences that reflected his creative inspiration
expression will not be barred, since protecting the expression in such circumstances and force behind his concept for shooting the subject work. He and his film team
would confer a monopoly of the idea upon the copyright owner free of the conditions designed the huge underwater light towers that were later used to make the film.
and limitations imposed by the patent law. Lindsay also personally constructed the light towers and thereafter directed,
Similarly, the instant case which deals with factual matters such as drawing produced, and acted as the cinematographer of the underwater video taping of the
the abstract, tract boundaries and the ownership name and tract size, the facts Titanic wreck site. He directed the filming of the wreck site from on board the
themselves are not copyrightable but the expression of the facts and their salvage vessel Ocean Voyager. Plaintiff now alleges that he was never fully
arrangement may in some instances be copyrightable. compensated for his services, that the defendants are unlawfully profiting from the
However, the problem with the Hodge Mason maps is not a lack of exploitation his film project and that they are guilty of copyright infringement.
originality, but rather that the maps express the only pictorial presentation that could
result from a correct interpretation of the legal description and other factual Issue: Whether Lindsay and RMST are both authors of the work Held/Ratio:
information relied upon by the plaintiffs in producing the maps. NO. Defendants argue that the plaintiff cannot have any protectable right in
To take the plaintiffs argument to its logical conclusion would mean that the illuminated footage since he did not dive to the ship and thus did not himself
anyone who desired to make a map of Montgomery County would have to dig actually photograph the wreckage, and that Lindsay and RMST (through the main
through and interpret the pertinent public records and transform the metes and photographer Petron with whom they have a work for hire agreement) are joint
bounds of the legal descriptions into a pictorial presentation that, if done correctly, authors of the work, thus there was no copyright infringement. However, court held
would be substantially the same as the plaintiffs. Clearly, this would contradict the that this does not hold water. The Copyright Act of 1976 provides that copyright
policy of copyright law that allows a subsequent author to build upon and add to ownership vests initially in the author or authors of the work. Generally speaking, the
prior accomplishment without unnecessary duplication of effort. author of a work is the person who actually creates the work, that is, the person
who translates an idea into a fixed, tangible expression entitled to copyright Facts:
protection. Although in the context of film footage and photography, the author of a Ms. Erickson was one of the founders of the trinity theatre and served it in
work is often the individual or individuals who took the pictures, the SC has also several capacities, as playwright, artistic director, actress, play director, business
recognized that photographs may receive copyright protection in so far as they are manager, and member of the board of directors. The case however, stems from her
representatives of original intellectual conceptions of the author. An individual being its playwright.
claiming to be an author for copyright purposes must show the existence of those Three of her plays are at issue here: Much Ado, Time Machine, and
facts of originality, of intellectual production, of thought, and conception. Some Prairie Voices. The first play is a compilation of different scenes and sonnets from
elements of originality in a photograph includes posing the subjects, lighting, angle, the works of Shakespeare and as testified by Actor Micheal Osbourne, although he,
selection of film and camera, evoking the desired expression, and almost any variant and other actors suggested parts to be included in it, it was still Ms. Erickson who
involved. Thus in the case of Lindsay, the storyboards and the specific directions had the final decision of whether or not to include such suggestions.
he provided to the film crew regarding the use of the lightowers and the angles The second play, Time Machine was a work in progress of Ms. Erickson
from which to shoot the wreck all indicate that the final footage would indeed be from the time she was still in school, when she taught high school drama and until
the product of his original intellectual conceptions. The fact that Lindsay did not the time she was already a playwright. However, such play involved the development
literally perform the filming, (by diving to the wreck and operating the cameras) will of melodrama and improvisational scenes, the latter meaning there was no exact
not defeat his claims of having authored the illuminated footage. During the script. Instead, the actors were given a theme in which they would work on with their
expedition itself, Lindsay has been the director, producer and cinematographer of the own interpretation. Their interpretations however, were taken note of by Ms.
underwater footage since he provided the film crew with detailed instructions for Erickson and compiled them into a script. In this play however, it was still Ms.
positioning and utilizing the light towers and screened the footage at the end of each Erickson who exercised the final decision as regards the inclusion of the actors
day to confirm that he had obtained the images he wanted. All else being equal, interpretations in the script. This play was produced independently by Ms. Erickson
where a person exercised such a high degree of control over a film operation in 1984 together with two actors, namely, Paddy Lynn and Will Clinger. At the
(including the type and amount of lighting used, the specific camera angles to be outset, Ms. Lynn was credited as co-author in publicity materials, however Ms.
employed, and other detail-intensive artistic elements of a film) such that the Erickson later on denied this claiming that she did not approve such credit of Ms.
final product duplicates his conceptions and visions of what the film should look Lynn and denies that Ms. Lynn is a joint author of such play.
like, that person is said to be an author within the meaning of the Copyright The third play, Prairie Voices was intended by Ms. Erickson to be developed
Act. Minimal contributions and inclusion of suggestions in the final product will not as a Trinity Production. She originally intended to launch it as a collaborative effort
merit one as an author. A joint work is prepared by two or more authors with the in which the actors would contribute a story to the play. However, none of the actors
intention that their contributions be merged into inseparable or independent parts of a contributed and in the end it was entirely based on tales provided by Ms. Erickson.
unitary whole. To prove co-authorship status, it must be shown by the individual In 1987, Ms. Erickson was paid by Trinity royalties for the performances of
claiming co-authorship status that each of the putative co-authors fully intended her plays, in 1988 she entered into a two-year license agreement with Trinity as
to be co-authors, and made independently copyrightable contributions to the playwright and included the payment of royalties for the performance of her plays.
work. In other words, where one contributor retains a veto authority over what is After the expiration of the licensing agreement, Trinity stopped paying Ms. Erickson
included in a work, such control is a strong indicator that he or she does not intend to royalties for the performance of her plays.
be co-authors with the other contributor. And this cannot be said in this case between When Erickson left trinity in 1991 she obtained copyright registration for her
Lindsay and RMST since Lindsay exercised virtually total control over the content of plays and its videotapes.
the film as the director, producer and cinematographer of the production.
Issue: Whether or not there was likelihood of success in Ericksons case for
13 - Erickson v. Trinity Theatre (1994) obtaining a preliminary injunction. (the case was not yet for copyright infringement
This case is about the copyright infringement by Trinity Theatre of three plays but for preliminary injunction pending the filing of a case for copyright
and two video tapes owned by Ms. Karen Erickson, a former playwright of said infringement)
theatre.The case filed by Erickson seeks a preliminary and permanent injunction
to prevent trinity theatre from performing the three plays and from using the Held/Ratio:
two videotapes. (not yet a case for copyright infringement) The district court YES, the court found the magistrate judges findings correct and that Ms.
sustained Ms. Ericksons claims and enjoined trinity. Hence, the case. Ericksons case is likely to succeed based on its merits.
The magistrate judge explained the different schools of thought in interpreting
what is joint-work within the meaning of 101 of the Copyright Act of 1976. (see
notes below for definitions and the discussion). Briefly, it stated that between Trinity
Theatres claim that joint work is collaboration alone based on Professor single work; an example of interdependent parts are the lyrics and music for a song.
Nimmers de minimis standard and Ms. Ericksons claim that joint work should be Apart from these examples, the reports do little to clarify the criteria for determining
subject to the copyrightable subject matter test, it is the latter which should prevail. joint authorship. Indeed, they increase the ambiguity. The committee reports state:
[A] work is joint if the authors collaborated with each other, or if each of the
Discussion: authors prepared his or her contribution with the knowledge and intention that it
The magistrate judge briefly reviewed the elements of copyright infringement. would be merged with the contributions of other authors as inseparable or
Because a valid copyright registration had been made within the requisite time, the interdependent parts of a unitary whole. The touchstone here is the intention, at
burden would be on Trinity to show the invalidity of the registration. It could either the time the writing is done, that the parts be absorbed or combined into an
demonstrate that the material was copied from another source or dispute the integrated unit.
authorship of the material itself. In this case, continued the magistrate judge, Trinity This ambiguity presents analytical problems in cases such as this one, in which the
challenged the authorship itself. Trinity claimed that several of its members were parties have collaborated in some sense but dispute whether there was a mutual
joint authors of the three plays with Ms. Erickson, that these joint authors gave intent to create a joint work. In resolving this ambiguity, we believe that it is
Trinity the right to produce the plays, and therefore that Trinity and its important to note, at the outset, that the statute itself requires that there be an
member joint authors share rights to the plays and videotapes. intent to create a joint work. Therefore, reliance on collaboration alone, as Trinity
The magistrate judges report and recommendation concluded that the district court suggests, would be incompatible with the clear statutory mandate.
should enter a preliminary injunction in favor of Ms. Erickson concerning the plays.
The magistrate judge stated that [a] determination as to joint authorship involves Professor Nimmers de minimis standard
an examination of the putative authors intent at the time the work is Professor Nimmer, the late scholar on copyright, took the position that all that should
produced. The magistrate judge followed primarily the Second Circuits test in be required to achieve joint author status is more than a de minimis contribution by
Childress v. Taylor, which identified two elements of joint ownership: (1) the each author. De minimis requires that more than a word or line must be added by
contribution of each joint author must be copyrightable and one who claims to be a joint author.
(2) the parties must have intended to be joint authors. Professor Nimmer distinguishes his de minimis standard from the standard for
With regard to the second element, the Childress court stated that the putative joint copyrightability. As an example, Professor Nimmer asserts that if two authors
authors must entertain in their minds the concept of joint authorship. Using this collaborate, with one contributing only uncopyrightable plot ideas and another
analysis, the magistrate judge determined that Ms. Erickson was likely to prevail on incorporating those ideas into a completed literary expression, the two authors should
her claims regarding the three plays. With regard to Prairie Voices, the evidence was be regarded as joint authors of the resulting work.
clear that Ms. Erickson controlled the script and that the contributions of the actors This position has not found support in the courts. The lack of support in all
were not copyrightable. Even if it was not necessary to show that a contribution was likelihood stems from one of several weaknesses in Professor Nimmers approach.
independently copyrightable in order to establish joint ownership, the actors First, Professor Nimmers test is not consistent with one of the Acts premises:
inability to specify any particular contribution was strong evidence that they were not ideas and concepts standing alone should not receive protection. Because the creative
authors of the play. Furthermore, Ms. Erickson never intended to share authorship process necessarily involves the development of existing concepts into new forms,
with any of the actors. any restriction on the free exchange of ideas stifles creativity to some extent.
Meaning of Joint Work Restrictions on an authors use of existing ideas in a work, such as the threat that
In a joint work, the joint authors hold undivided interests in a work, despite any accepting suggestions from another party might jeopardize the authors sole
differences in each authors contribution. Each author as co-owner has the right to entitlement to a copyright, would hinder creativity. Second, contribution of an idea
use or to license the use of the work, subject to an accounting to the other co-owners is an exceedingly ambiguous concept. Professor Nimmer provides little guidance to
for any profits. Thus, even a person whose contribution is relatively minor, if courts or parties regarding when a contribution rises to the level of joint authorship
accorded joint authorship status, enjoys a significant benefit. except to state that the contribution must be more than a word or a line.
In determining whether any of the works at issue in this case may be classified as a Professor Nimmers approach is of little pragmatic use in resolving actual cases.
joint work, our starting point must be the language of the statute. Section 101 of Rarely will minor contributors have the presumption to claim authorship status. In
the Copyright Act defines a joint work as a work prepared by two or more authors such easy cases, the parties intent as to authorship status likely will be apparent
with the intention that their contributions be merged into inseparable or without resort to any formal test evaluating the parties respective contributions to
interdependent parts of a unitary whole. discern intent. In the more complex situations, such as the case before us, in which
Neither the Act nor its legislative history defines inseparable or interdependent. the improvisational process undoubtedly yielded valuable insights to the primary
The legislative history states that examples of inseparable parts are the joint author, the test gives no guidance on how we are to assess the respective
contributions of two authors to a single novel or the contributions of two painters to a contributions of the parties to distinguish the author from the critic or advisor. For
these reasons, we, as the majority of the other courts, cannot accept Professor Before the movies release, Aalmuhammed asked for a writing credit as a co-
Nimmers test as an adequate judicial tool to ascertain joint authorship. writer of the film, but was turned down. Instead, upon the films release, he was
Professor Goldsteins copyrightability test credited only as an Islamic Technical Consultant. A few years later,
The copyrightable subject matter test was formulated by Professor Paul Goldstein Aalmuhammed applied for a copyright with the US Copyright Office, which was
and has been adopted, in some form, by a majority of courts that have considered the granted but with a reservation because it was in conflict with previous registrations.
issue. According to Professor Goldstein, After the grant of copyright registration, Aalmuhammed filed a complaint against all
[a] collaborative contribution will not produce a joint work, and a contributor will involved in the movie for declaratory relief and accounting under the Copyright Act
not obtain a co- ownership interest, unless the contribution represents original (and other actions for breach of contract, quantum meruit, unjust enrichment, and
expression that could stand on its own as the subject matter of copyright. unfair competition). Aalmuhammed claimed that the movie was a joint work of
Furthermore, the parties must have intended to be joint authors at the time the work which he was an author, thus making him a co-owner of the copyright of the entire
was created. Professor Goldstein and the courts adopting his test justify this position movie.
by noting that 101s and 302(b)s use of the word authors suggests that each
collaborators contribution must be a copyrightable work of authorship within the Issue: Can Aalmuhammed be considered as a co-author of Malcolm X?
meaning of 102(a).
The copyrightable subject matter test does not suffer from the same infirmities as Held/Ratio: NO, Aalmuhammed cannot be considered as a co-author.
Professor Nimmers de minimis test. The copyrightability test advances creativity The Copyright Act does not define Author, but defines joint work as a work
in science and art by allowing for the unhindered exchange of ideas, and prepared by two or more authors with the intention that their contributions be merged
protects authorship rights in a consistent and predictable manner. It excludes into inseparable or interdependent parts of a unitary whole. The statutory language
contributions such as ideas which are not protected under the Copyright Act. 102(b) establishes that for a work to be considered joint, there must be (1) a copyrightable
(In no case does copyright protection for an original work of authorship extend to work, (2) two or more authors, and (3) the authors must intend their contributions be
any idea ... embodied in such work.). This test also enables parties to predict merged into inseparable or interdependent parts of a unitary whole. A joint work,
whether their contributions to a work will entitle them to copyright protection as a moreover, requires each author to make an independently copyrightable contribution
joint author. Compared to the uncertain exercise of divining whether a contribution is to the disputed work.
more than de minimis, reliance on the copyrightability of an authors proposed Aalmuhammed was able to establish all of the elements except that he was one of
contribution yields relatively certain answers. See Feist Publications. The the authors. Authorship is not the same thing as making a valuable and
copyrightability standard allows contributors to avoid post-contribution copyrightable contribution. A contributor may be deemed the author of that
disputes concerning authorship, and to protect themselves by contract if it expression, but only for the purpose of determining whether it is independently
appears that they would not enjoy the benefits accorded to authors of joint copyrightable or not.
works under the Act. The word author is taken from the traditional activity of one person sitting at a
desk with a pen and writing something for publication, which makes the application
14 - Aalmuhammed v. Lee (2000) (Malcolm X; co-authorship) of the term author easy for one writing a novel. Who, in the absence of contract,
can be considereed an author of a movie? The word is traditionally used to mean
Facts: the originator or the person who causes something to come into being. It can
In 1991, Warner Brothers contracted with Spike Lee and others to make the movie refer to the producer (who raises the money), the editor, the director (under the
Malcolm X, based on a book. Lee co-wrote the screenplay, directed, and co- auteur theory), the screenplay writer, the star, or the cinematographer.
produced the movie, which starred Denzel Washington as Malcolm X. Denzel asked In Burrow-Giles, the problem of defining author in new media was tackled. It was
Aalmuhammed to assist him in his preparations, as Aalmuhammed was a Malcolm X stated that author involves originating, making, producing, as the inventive or master
expert, haing written, directed, and produced a Malcolm X documentary prior to the mind, the thing which is to be protected; the man who really represents, creates, or
movie. gives effect to the idea, fancy, or imagination; he to whom anything owes its origin,
Aalmuhammeds contributions include: reviewed the script, suggested revisions and originator, maker, one who completes a work of science or literature. Author
additions of entire scenes and dialogue, made sure the religious and historical aspects requires more than a minimal creative or original contribution to the work. He is the
of Islam were portrayed accurately, acted as a translator (they worked in Egypt and person to whom the work owes its origin and who superintended the whole work, the
he was the only one who knew Arabic), and edited parts of the movie. master mind.
Aalmuhammed never had a written contract with Warner Bros., Spike Lee, or Many people might qualify as an author if the question were limited to whether
Lees production companies, but he expected to be paid for his services. He they made a substantial creative contribution that the test would not distinguish one
ultimately received $25,000 from Lee and $100,000 from Denzel. from another. Everyone from the producer, director, or casting director to the
costumer, hairstylist, and best boy gets listed in the movie credits because all of afterwords, pictorial illustrations, maps, charts, tables, editorial notes,
their creative contributions really do matter. However, a creative contribution does musical arrangements, answer material for tests, bibliographies, appendixes,
not suffice to establish authorship of the movie, as a contribution of independently and indexes, and an instructional text is a literary, pictorial, or graphic
copyrightable material to a work intended to be an inseparable whole does not work prepared for publication and with the purpose of use in systematic
suffice to establish authorship of a joint work. The Burrow-Giles definition of instructional activities.
author, in the absence of a contract to the contrary, would generally limit authoship
to someone at the top of the credits, sometimes the producer, director, star, or Facts:
screenwriter someone who has artistic control. The Community for Creative Non-Violence (CCNV) was a non-profit
A person claiming to be an author of a joint work must prove that both parties organization that wanted to bring attention to the problem of homelessness. They
intended each other to be joint authors. In the absence of contract, several factors made an oral agreement with James Reid, a sculptor, to produce a statue that depicts
may be considered, including who superintends the work by exercising control or homeless people in a nativity set-up with specific wording on the sculpture. This
the inventive or master mind who gives effect to the idea, the objective sculpture was to be displayed at a 1985 Washington D.C. Christmas Pageant. CCNV
manifestations of shared intent to be co-authors, and the fact that the share of each in agreed to make the base, suggested people to use as models and suggested changes
the works success cannot be appraised. Control in many cases will be the most throughout the process. Upon completion, delivery, and joining of the work to the
important factor. The factors listed cannot be reduced to a rigid formula, base, CCNV paid Reid the final installment of the agreed-upon price. Neither party
because the creative relationships to which they apply vary too much. raised the issue of copyright, nor did the parties put anything about it in writing.
In this case, Aalmuhammed did not at any time have superintendence of the work; Thereafter, the parties filed competing copyright claims over the sculptures
Warner Bros. and Spike Lee controlled it. Aalmuhammed lacked control of the work, DISTRICT COURT: ruled in favor of CCNV (basis: under the Copyright
and absence of control is strong evidence of the absence of co-authorship. Act of 1976, the statue was a work made for hire
Neither Aalmuhammed, Spike Lee, nor Warner Bros. made any objective COURT OF APPEALS: reversed
manifestations of an intent to be co-authors (Warner Bros. required Spike Lee to sign
a work for hire agreement, so Lee is not even a co-author or co-owner with Issue: Whether the work falls under the work-for-hire doctrine such that CCNV
Warner Bros.). No one, including Aalmuhammed, made any indication to anyone can be deemed the author of the work for copyright purposes?
prior to litigation that Aalmuhammed was intended to be a co-author and co- owner.
Aalmuhammed also did not offer any evidence that he was the inventive or master Held/Ratio: NO. There are two distinct categories of persons to whom the work-for-
mind of the movie. All that Aalmuhammed was able to show was that he made very hire doctrine applies: employees, or contractor for nine specific types of work, with
valuable contributions to the movie, which is not enough for co-authorship of a joint written acknowledgment. Nowhere in the act was the word employee defined,
work. therefore the court ruled that it should be understood to be the common law master-
and- servant definition. The court then looked to traditional factual determinations
15 - Community for Creative Non-Violence v. Reid (1989) (sculpture, work-for- about the relationship between the parties. It was found that Reid was hired as an
hire) independent contractor, and this status was evident because he supplied his own
tools, worked in his own studio, in another city, was retained for less than two
Doctrines: months, decided his own work schedule, received salary that was contingent on the
Section 101 of the Copyright Act of 1976: A work made for hire is sculptures completion, had sole discretion over hiring and paying assistants, and he
a. A work prepared by an employee within the scope of his or her was not paid of any employee benefits.
employment; or With these findings, the sculpture in question is not a work made for hire within
b. A work specially ordered or commissioned for use as a contribution to a the meaning of the act. However, CCNV nevertheless may be a joint author of the
collective work, as a part of a motion picture or other audiovisual work, as a sculpture and, thus, a co-owner of the copyright under Section 201 (a)
translation, as a supplementary work, as a compilation, as an instructional (The case was remanded to the District Court to determine if it is a joint work.)
text, as a test, as answer material for a test, or as an atlas, if the parties
expressly agree in a written instrument signed by them that the work shall
be considered a work made for hire. For the purpose of the foregoing
sentence, a supplementary work is a work prepared for publication as a
secondary adjunct to a work by another author for the purpose of
introducing, concluding, illustrating, explaining, revising, commenting
upon, or assisting in the use of the other work, such as forewords,
16 - Aymes v. Bonelli (1992) A work made for hire as (1) a work prepared by an employee within the scope
of the employment OR (2) a work specially ordered or commissioned for useif
Facts: the parties expressly agree in a written instrument signed by them that the work
Aymes was hired by Bonelli, the president and CEO of Island, to work as a shall be considered a work made for hire.
computer programmer. Island operated a chain of retail stores selling swimming
pools. Aymes is a graduate from Cornell Universitys school of engineering and 2. YES. The court took into consideration Islands right to control the manner and
worked with Island for 1980 to 1982. means by which the product is accomplished.
Aymes created a series of programs called CSALIB under the general The trial court applied the Reid test. According to the Reid test, the factors
direction of Bonelli, who was not a professional programmer. CSALIB was used by that are to be considered are the ff: (1) skill (2) source of the tools (3) location
Island to maintain records of cash receipts, inventory, sales figures, merchandise of the work (4) duration of the relationship (5) whether the hiring party has the
transfers, etc. There was no written agreement between Bonelli and Aymes assigning right to assign additional projects to the hired party (6) extent of the hired
ownership or copyright of CSALIB. Aymes contends that Bonelli made an oral partys discretion over when and how long to work (7) method of payment (8)
promise that CSALIB would only be used at one computer in one island office. hired partys role in hiring and paying assistants (9) whether the work is part of
Aymes did most of his programming at the Island office. He worked alone the regular business (10) whether the hiring party in in business (11) provision
and enjoyed autonomy in creating CSALIB. This autonomy was restricted only by of employee benefits and (12) tax treatment of the hired party. Court ruled
Bonelli who directed and instructed Aymes on what he wanted from the program. that no single factor is determinative.
Remember Bonelli was not skilled to write the program himself.
Aymes was not always paid by the hour and he woked semi-regular hours. At Application of the Reid
times, Aymes would be paid by the project and given bonuses for finishing the Court said the Reid test can be easily misapplied since it consists merely of a list
project on time. Aymes never received and health or other insurance benefits of possible considerations that may or may not be relevant in a given case. Reid
from Island. Island never paid an employers percentage of Aymess payroll established that no one factor was dispositive, but gave no direction concerning how
taxes and never withheld any of his salary for federal or state taxes. In fact, the factors were to be weighed. It does not necessarily follow that because no one
Aymes was given an IRS-NONEMPLOYEE Compensation form instead of the factor is dispositive all factors are equally important, or in deed that all factors will
standard employee W-2 form. have relevance in every case. The factors should not merely be tallied but should be
Aymes left Island when Bonelli cut down his hours. Island owed him $14.5k weighed according to their significance in the case.
in wages. Aymes also requested payment for multi-site used of CSALIB. Bonelli Some factors will often have little or no significance in determining whether a party
said that he would only pay him if he sign a release for his rights to CSALIB. Aymes is an independent contractor or an employee. In contrast, there are some factors that
refused to sign. will he significant in virtually every situation. These include: (1) the hiring partys
Aymes then registered CSALIB in his own name with the US Copyright right to control the manner and means of creation; (2) the skill required; (3) the
office. Then he filed a complaint against Bonelli and Island for copyright provision of employee benefits; (4) the tax treatment of the hired party; and (5)
infringement. Trial court held that Aymes had no copyright over CSALIB because whether the hiring party has the right to assign additional projects to the hired
the program was a work for hire which meant that the authorship belonged to party. These factors will almost always be relevant and should be given more weight
Island. in the analysis, because they will usually be highly probative of the true nature of the
employment relationship.
Issues: The trial court gave each factor equal weight and simply counted the number of
1. W/N Aymes is entitled to copyright CSALIB - YES factors for each side in determining that Aymes was an employee. The trial court
2. W/N Aymes is considered an employee of Island NO. he is an independent over-emphasized indeterminate and irrelevant factors having little or no bearing on
contractor. Aymes case.
Let us go over the factors one by one.
Held/Ratio: (1) The right to control - Bonelli and Island had the right to control the manner
1. NO. Copyright ownership vests initially in the author or authors of the work. in which CSALIB was created. Aymes disputed Bonellis purported skill at
However the Act provides that in the case of a work made for hire, the programming, but even without such knowledge Bonelli was capable of
employer or other person for whom the work was prepared is considered directing Aymes on CSALIBs necessary function. Aymes was not working
the authorunless the parties have expressly agreed otherwise in a entirely alone. He received significant input from Bonelli. (EMPLOYEE)
written instrument signed by them. (2) Level of Skill - Aymess work required far more than merely transcribing
Bonellis instructions. Rather, his programming demanded that he use skills
 developed while a graduate student at Cornell and through his experience 17 - Roeslin v. District of Columbia (1995)
working at a family run company. (CONTRACTOR)
(3) Facts:
(4) Employee Benefits and Tax Treatment - The failure of Island to extend D.O.E.S. is responsible for collecting and tabulating employment statistics
Aymes any employment benefits or to pay any of his payroll taxes is highly for the District of Columbia and the D.C. metropolitan area. It collects the statistics
indicative that Aymes was considered an outside independent contractor by by mailing the Current Employment Service (CES) survey to area employers, and
Island. Island benefitted from treating Aymes like an independent contractor tabulating their responses. DOES transmits these statistics and estimates based
when it came to providing Benefits and paying a percentage of his payroll thereon to the Federal Bureau of Labor Statistics (BLS) for its use in computing
taxes. Island should NOT in one context be able to claim that Aymes was an national labor statistics. Employees manually collected the information from returned
independent contractor and 10 years later deny this. (CONTRACTOR) CES surveys and recorded the information on office record cards. A data processing
Factors C/D (Employee benefits and tax treatment) are given greater weight staff would enter this data into the mainframe system. The estimates derived from
because they are undisputed. this data were computed manually with the aid of a computer.
(5) Right to Assign other projects Bonelli DID assign Aymes other projects in Roeslin is a Labor Economist for DOES and was tasked to improve
addition to the creation of CSALIB. However this factor carries LESS weight employer response rate to the CES survey, to expand the CES sample size and to
than those evaluated above. (EMPLOYEE) develop industry and occupational employment projections. At the time plaintiff was
(6) Remaining Factors insignificant or negligible in weight. (but lets still hired, he had no computer programming skills. However, after attending a CES
discuss cause the court discussed) conference Roeslin was motivated to create the DC-790 system. Upon returning from
a. Method of Payment indeterminate because there is evidence to the conference, plaintiff informed his supervisor, Mr. Groner, that he believed a PC
support both sides. Sometimes Aymes was paid by the hour and at other based system could be created for the Districts CES surveys but was told by the
times he was paid a flat fee. (EMPLOYEE) supervisor that it was neither feasible nor desirable and not to pursue the idea. And
b. Whether the work is Islands regular business Island swimming is thus plaintiff was now motivated to create the program to prove that it could be done
in the business of selling swimming pools BUT Aymes programming and to develop job opportunities for himself. He worked on creating the program at
was not done in the companys regular business (CONTRACTOR) home (bought own PC and books about computer programming) spending around
c. Whether Island is in business indicates nothing about Aymess 30,000 hours on it and the testing and debugging of the modules were made in the
status office using actual data. Once each module worked properly, he incorporated the
d. The discretion over when and how long to work balanced for both modules into the PC system operating at DOES. Shortly after the DC-790 system
parties became operational, workers ceased using office record cards. He also created an
e. Duration of the relationship Even though Aymes worked for Island operating manual for the DC-790 system in response to a request by an employee of
for 2 years, Aymes did occasional work for others at the same time. the BLS Regional Office. Relying on Mr. Groners statement that the program would
f. Location of the work Aymed worked at Island but only so that he be in the public domain, which he took to mean that the system would not be
could use the computer owned by anybody, he did not assert any proprietary interest. But after learning that
the District is asserting proprietary interest, plaintiff filed for copyright registration
g. Source of the equipment programming by necessity had to be
and placed copyright notice on the initial screen of the program.
performed on Islands machines
h. Authority to hire assistants Aymes did not need assistants.
Issue: Whether Roeslin is the author of the DC 790 system
Examining the factors:
Held/Ratio: YES. Districts contention that the system was created under a work
Island directed the creation of the program
made for hire, must fail. In the work made for hire, the owner of the copyright is the
Aymes Skill, tax and benefit factors (AYMES WIN)
entity for whom the work was prepared. The copyright statute defines a work made
On balance, application of the Reid test requires that we find Aymes to be an
for hire as a work prepared by an employee within the scope of his or her
independent contractor when he was creating CSALIB for Island. Consequently, we
employment. Because plaintiff has received a copyright registration for the DC-790
hold that CSALIB is not a work for hire. Aymes therefore owns the copyright as
system, the presumption is that plaintiff owns the copyright. Furthermore, the
author of the program.
Supreme Court has held that to determine whether an individual was an employee,
Case remanded to the trial court for further proceedings to determine if there was
and whether he created a work within the scope of his employment, courts should
infringement.
look to the general common law of agency: Conduct of a servant is within the scope
of employment if, but only if: (a) it is within the kind he is employed to perform; (b)
it occurs substantially within the authorized time and space limits; and (c) it is
actuated, at least in part, by a purpose to serve the master. The court held that the
creation of the system was not a work created for hire since developing the computer
software is not the kind of work plaintiff was employed to perform. Plaintiff was
hired as a labor economist, not as a computer programmer To be sure, work that is
incidental to the conduct authorized by the employer, even if it is not central to the
employees job duties, also falls within the scope of employment. The Court finds
that while developing the DC-790 system did help the functioning of the work place,
it was not the type of activity in which plaintiff would be reasonable expected to
engage. The court also discussed whether the development of the system occurred
substantially within the authorized time and space limits. The Court finds that it did
not because he spent 3,000 hours outside of normal working hours creating the
modules of the DC-790 system. And lastly, the program was created for two
reasons: (1) to create job opportunities for himself, and (2) to prove it could be done.
Furthermore, the court held that the District infringed his copyright. The placement
of a copyrighted program into a computer, or the loading of a copyrighted program
into a computer (which occurs every time an employee uses the program), constitutes
copying the program for purposes of the Copyright Act. Thus, every time a DOES
employee used the DC-790 system, which the employees did up until January, 1993,
the District infringed plaintiffs copyright.