Updates on Intellectual Property (Part III)

By Atty. Juris Bernadette M. Tomboc

This contribution contains updates on topics in Intellectual Property Law in a question and answer format. The author is grateful to Fr. Ranhilio C. Aquino, Ph.D., J.D., Dean of the San Beda Graduate School of Law, for providing the questions and hypothetical cases that serve as vehicle for the discussions.

1. Lex Mundi University purchased one computer software for computer-aided design. It installed this program in thirty-seven computer units in its College of Architecture. Students of the college have free access to the computers. So do the professors. Was there a violation of intellectual property rights?

ANSWER: Yes, there is a violation of intellectual property rights. Section 172.1 of Republic Act No. 8293 lists computer programs among the statutorily protected materials. Further, computer programs, whether in source or object code, are protected as literary works under Article 10, paragraph 1, of the Berne Convention (1971). (See the case of Apple Computer, Inc. v. Franklin Computer Corp. 714 F.2d 1240 [1983].)

Section 177.4 of Republic Act No. 8293 gives the copyright owner the exclusive right to carry out, authorize or prevent the rental of a computer program. Corollary thereto, Section 189.1 allows the reproduction by the owner of the program of only one (1) backup copy or adaptation without the authorization of the author, provided, that the copy or adaptation shall be necessary for: (a) the use of the computer program in conjunction with a computer for the purpose, and to the extent, for which the program has been obtained; and (b) archival purposes and for the replacement of the lawfully owned copy of the computer program in the event that the same is lost, destroyed or rendered unusable.

References:

Apple Computer, Inc. v. Franklin Computer Corp. 714 F.2d 1240 [1983]
http://www2.tltc.ttu.edu/Cochran/
Cases%20&%20Readings/
Copyright-UNT/Copy'ability/apple.htm

Republic Act No. 8293
http://www.chanrobles.com/legal7copyright.htm

2. An Internet website announced free MP3 downloads. Cris runs a computer shop. One of the services he offers is that of downloading MP3 files from the Internet to the customers' MP3 devices. For this service he charges a fee of PHP100.00 for every ten files downloaded. Does the site’s announcement of free downloads guarantee that no intellectual property rights will be violated? Did Cris’ business run afoul of intellectual property law or related laws?

ANSWER: The site’s announcement of free downloads is not a guarantee that no intellectual property rights will be violated. Cris’ business may run afoul of intellectual property and related laws if the files are protected works and downloading and distribution thereof conflicts with the normal exploitation of the work by the copyright owner and unreasonably prejudices the right holders legitimate interests.

Section 33 (b) of Republic Act No. 8792 otherwise known as the E-Commerce Act penalizes piracy or the unauthorized copying, reproduction, dissemination, distribution, importation, use, removal, alteration, substitution, modification, storage, uploading, downloading, communication, making available to the public, or broadcasting of protected material, electronic signature or copyrighted works including legally protected sound recordings or phonograms or information material on protected works, through the use of telecommunication networks, such as, but not limited to, the internet, in a manner that infringes intellectual property rights, with a minimum fine of P100,000.00 up to a maximum amount commensurate to the damage incurred and a mandatory imprisonment of six months to three years.

Section 184.2 of Republic Act No. 8293 on limitations of copyright “allow(s) the (copyrighted) work to be used in a manner which does not conflict with the normal exploitation of the work (by the copyright owner) and does not unreasonably prejudice the right holder’s legitimate interests.”

The term of copyright protection for sound or image and sound recordings and for performances incorporated therein is 50 years from the end of the year in which the recording took place (Section 215[b], RA 8293).

(See MGM v. Grokster USCA 04-480 Fed. Cir. [June 2005]. See also FILSCAP v. Tan, G.R. No. L-36402 [1987]; Bridgeport Music, Inc. v. Dimension Films, USCA 02-6521 (Fed. Cir. [Sept. 2004]; and Campbell v. Acuff-Rose Music USSC 92-1292 [1994].)

Cases:

Bridgeport Music, Inc. v. Dimension Films (USCA 02-6521 Fed. Cir. [September 2004])
http://pacer.ca6.uscourts.gov/cgi-bin/
getopn.pl?OPINION=04a0297p.06

Campbell v. Acuff-Rose Music (USSC 92-1292 [1994])
http://www.negativland.com/opi-crew.html

FILSCAP v. Tan (G.R. No. L-36402 [1987])
http://www.lawphil.net/judjuris/juri1987/
mar1987/gr_l_36402_1987.html

MGM v. Grokster (USCA 04-480 Fed. Cir. [June 2005])
http://caselaw.lp.findlaw.com/scripts/
getcase.pl?court=US&vol=000&invol=04-480

References:

Republic Act No. 8293
http://www.chanrobles.com/legal7copyright.htm

Republic Act No. 8792 (E-Commerce Act)
http://www.chanrobles.com/republicactno8792.htm

3. Justice Oliver Magtanggol wrote a masterful treatise on the law on evidence. He entered into an agreement with Mindgate Books for the reproduction and distribution of his book which he entitled “Evidence Revisited.” Mindgate Books reproduced and sold his books throughout the country and Justice Magtanggol received royalties for the same. Subsequently, at the request of the Philippine Judicial Academy, he allowed the Supreme Court Press to produce over three thousand copies of his book for free distribution to all the judges in the Philippines. Did Justice Magtanggol violate any intellectual property right?

ANSWER: Yes, it is possible that Justice Magtanggol violated the intellectual property rights of his publisher, Mindgate Books, if they have entered into an exclusive agreement for the reproduction and distribution of his book. Section 177.1 of Republic Act No. 8293 vests the owner of the copyright with the exclusive right to carry out, authorize and prevent the reproduction of the work or a substantial portion thereof. However, Section 180 allows the assignment of a copyright in whole or in part so as to entitle the assignee to all of the copyright holder’s rights and remedies with respect to the copyright.

Thus, an author may transfer to his/her publisher the right to reproduce or replicate (publish) and the right to distribute or vend. The production of 3,000 copies of Justice Magtanggol’s book for free distribution to all judges of the Philippines may conflict with the normal exploitation thereof by the publisher and unreasonably prejudice the latter’s legitimate economic interests. As explained by Fr. Aquino in his book (Intellectual Property Law, 1998 ed.), viz.:

“xxx It is not the actual harm that the use of copyrighted material does but the potential for harm. It is then sufficient to prove that using the material in the way it is used will be potentially harmful to prove infringement. Use of work that tends to reduce the demand for that work, or that prejudices the potential sale or profits thereof, or substitutes for the original work, is not fair. xxx” (Emphasis supplied.)

(See Harper & Row v. Nation Enterprises 471 U.S. 539 [1985]. See also Arica v. Palmer 970 F.2d 106 USCA Fed Cir. [1992]; and Feist Publications, Inc. v. Rural Telephone Service Company, Inc. 49 US 340 [1991]; and Salinger v. Random House USCA 811 F.2d 90 [1987].)

Cases:

Arica v. Palmer (970 F.2d 106 USCA Fed Cir. [1992])
http://floridalawfirm.com/arica.html

Feist Publications, Inc. v. Rural Telephone Service Company, Inc. (49 US 340 [1991])
http://www.law.cornell.edu/
copyright/cases/499_US_340.htm

Harper & Row v. Nation Enterprises (471 U.S. 539 [1985])
http://caselaw.lp.findlaw.com/scripts/
getcase.pl?court=US&vol=471&invol=539

Salinger v. Random House (USCA 811 F.2d 90 [1987])
http://www.bc.edu/bc_org/avp/cas/
comm/free_speech/salinger.html

4. Discuss the twin concepts of “non-obviousness” and “inventive step”.

ANSWER: Section 5, paragraph 1 of Article 27 of the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights lays down the requirements for patent registration: “subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products of processes, in all fields of technology, provided that they are new, involve an inventive step, and are capable of industrial application” (Aquino 1998).

Novelty as a patentability test, means that an invention is patentable if it was not known before the date of filing, or before the date of priority if a priority is claimed, of the patent application. The novelty requirement is said to be "absolute" when prior publications anywhere in the world can be taken into account in the examination of this requirement (Wikipedia 2005).

Industrial applicability as a patentability requirement means that a patent can only be granted for an invention which which can be made or used in some kind of industry. In this context, the concept of "industry" is far-reaching: it includes indeed agriculture for instance. The industrial application requirement is closely related to the requirement of sufficiency of disclosure.

Sufficiency of disclosure is an important requirement before a patent may be validly granted. An invention must be described in the application or patent in a sufficiently clear and complete manner to enable the person skilled in the art to carry out the invention. The government grants an inventor a monopoly over his invention for a period of time in exchange for the inventor disclosing to the public how to make or practice her invention. Thus, if a patent fails to contain such information, then the bargain is violated, and the patent is unenforceable (Wikipedia 2005).

The sufficiency of disclosure requirement is complemented by the "best mode” requirement. According to the requirement, the disclosure must also contain the inventor's best mode of making or practicing the invention. The "best mode requirement" only applies to what the inventor knows at the time the application was filed, not as to what was subsequently discovered (Wikipedia 2005).

In the U.S. case of In re: Dow Chem. Co., (837 F.2d 469) cited in 2 Rosenberg, 9.02, the court explained that the inventor must only describe the “best mode” in arriving at the invention, not necessarily the actual steps that the invention took. Likewise in the case of SRI International v. Matsushita Electric Corporation of America (227 U.S. P.Q. 577 [Fed. Cir. 1985]; cited in Aquino [1998] and in the United States case of Polaroid Corp. v. Eastman Kodak Co., 789 F. 2d 1556 [1986]), the court ruled that:

“The law does not require that an applicant describe in his specification every conceivable and possible future embodiment of his invention. The law recognizes that patent specifications are written for those skilled in the art, and requires only that the inventor describe the “best mode” of making and using the invention known to him at the time.”

Thus, there will be obviousness and, thus, no eligibility for patent of a subsequent work, even if the prior art specified only the “best mode” but not the actual steps that the subsequent work took. The defense that the invention was not actually mentioned or specified by the prior art will not succeed (Aquino, 1998).

Concerning the “inventive step’ or “inventiveness” requirement for patent registration, Section 26 (RA 8293) defines “inventive step”, thus: “An invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention.” In other words, a thing or process will be considered as an invention only if the same was not obvious, in relation to prior art, to a person skilled in the art.

A person skilled in the art is defined as one who is assumed to think along the lines of conventional wisdom (cf. 60 Am Jur 2d. Patents, Sec. 196). While courts have been noted to frame analysis in terms of someone with a very high degree of skill in the art (cf. Specialty Composites v. Cabot Corp., 6 U.S.P.Q. 2d 1601 [1988]. See also Rhine v. Casio USCA 98-1432 [Fed. Cir. 1999]; Texas Digital Systems, Inc. v. Telegenix, Inc. USCA 02-1032 [Fed. Cir. 2002]; Electro Medical Systems v. Cooper Life Sciences 34 F.3d 1048 [1994]; and Modine Manufacturing Company v. United States International Trade Commission USCA 93-1513 [Fed. Cir. 1996]), it is generally held that what the court is called upon to do is “to protect the act of discovery against a hypothetical average practitioner, acquainted with all that has been published and all that has been publicly sold (60 Am Jur 2d, Patents, Sec. 196).” (Aquino 1998)

The United States Supreme Court in 1850 in the case of Hotchkiss v. Greenwood, 11 How. 248, described the requirement, as follows:

“[U]nless more ingenuity and skill … were required than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of a skilled mechanic, not that of the inventor.”

Several basic factual inquiries are suggested in testing for patent validity, as follows: (a) the scope and content of the prior art; (b) the differences between the prior art and the claims at issue; (c) the level of ordinary skill in the pertinent art. Against this background, the obviousness or non-obviousness of the subject matter is ascertained (Graham v. John Deere, Co., 383 U.S. 1 148 USPQ 459 [1966]).

Whether or not a thing or process is obvious from prior art and, therefore, may be considered as an invention, can sometimes be difficult to determine since a genius, scholar, or creative person may have a different evaluation of obviousness, remoteness or opaqueness of the thing or process as compared to a less talented individual (Graham v. John Deere, Co. (383 U.S. 1 148 USPQ 459 [1966] cited in Aquino, 1998).

A new device is not patentable if it is simply a rearrangement of old elements with each performing the same function it had been known to perform, although probably in a more striking result than in previous combinations. Exploitation of the principle of gravity adds nothing to the sum of useful knowledge where there is no change in the respective functions of the elements of the combination. This particular use of the assembly of old elements would be obvious to any person skilled in the art of mechanical application. (Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S. ct. 1532 [1976] cited in Aquino, 1998).

Goldstein (1981) suggests inferential proofs for non-obviousness, as follows:

(a) Long-felt demand. A product that answers a long-felt demand is in all likelihood non-obvious in relation to prior art, for if it were obvious, the producers of the prior art would have devised it to boost marketability and to satisfy a demand.

(b) Commercial acquiescence in it patentability. Competitors are the parties expected to contest a patent application, but when they secure licenses under the patent or engage in research to duplicate its advantages without infringing it, their conduct expresses their concurrence in the finding of patentability.

(c) Commercial success. Consumer judgment expressed in patronage of the product has been taken to be an indication of a patentable invention, probably because prior anticipating art, if it did exist, would satisfy consumer demand. Furthermore, commercial success is the goal of enterprise, and if the new product were in fact obvious, competing enterprises would have drawn the obvious consequences before allowing the applicant to produce the first (Aquino, 1998).

The World Intellectual Property Organization deals with the notion of non-obviousness with the following concepts: (a) The step must be inventive and, therefore, creative; it must be a step, and must, therefore, be noticeable; (b) The advance of the progress must be significant or essential. This is a useful notion since it precludes the patenting of trivial improvements, no matter how surprising or unexpected; and (c) What separates the claimed invention from the state of the art must be a creative idea, and even if that which is made is constituted of already known or already used elements, the result must be unexpected.

Rosenberg (1993) collated thirteen clues, which he termed “negative rules of invention”, from precedents, thus: (a) The exercise of ordinary mechanical skill does not amount to invention; (b) Mere perfection of workmanship does not amount to invention; (c) That which is logically deducible from the teachings of prior art does not amount to invention; (d) The mere carrying forward of an old idea does not amount to invention; (e) That which would have been obvious to persons skilled in the art to which the subject matter relates does not amount to invention; (f) The substitution of a known equivalent for one of the elements of an old structure does not amount to invention; (g) Mere enlargement or change in size, degree or form does not amount to invention; (h) Unification or multiplication of parts does not amount to invention; (i) Omission of an element and its attendant function, unless the omission produces a new result, does not amount to invention; (j) The application of an old process or machine to an analogous subject, with no change in the manner of application, and no result, does not amount to invention; (k) Merely carrying out a prior art process in a continuous manner is not an invention; (l) Absent a new or different result, a combination of old elements is not an invention; and (m) The mere substitution of one material for another is not an invention (Aquino 1998).

The law does not specify the “manner” by which the inventor should have arrived at his invention. Section 26 of Republic Act No. 8293 makes the prior art the point of reference with respect to the obviousness or non-obviousness of the invention in relation thereto. There is no requirement that the discovery resulted from a “stroke of genius” or a “flash of insight.” Such a requirement would require the courts to read the minds of inventors. In other words, an invention entitled to patent may or may not be the result of chance, carelessness or accident. Thus, a U.S. Federal Circuit Court of Appeals ruled, viz.:

“Invention is not always the offspring of genius; for frequently, it is the product of plain hard work; not infrequently, it arises from accident or carelessness; occasionally, it is the happy thought of an ordinary mind; and there have been instances where it is the result of sheer stupidity. It is with the inventive concept, the thing achieved, not the manner of its achievement or the quality of the mind which gave it birth that the patent law concerns itself.” (Aquino 1998)

Further, in the U.S. case of In re: Dow Chem. Co., (837 F.2d 469) cited in 2 Rosenberg, 9.02, the court had occasion to say that the mental state of the inventor, as well as his intention with respect to the use of his invention, is immaterial in determining inventiveness and, thus, whether an invention is eligible for patent:

“The mental state therefore of the inventor is of no relevance at all towards the resolution of the issue of “inventiveness,” and it can very well be the case that that for which the patent is sought was never that which the inventor endeavored to bring about. Thomas Edison would therefore have been eligible for a patent for his telephone even if this was not the device he had originally planned to produce.” (Aquino 1998)

There will be infringement when the material features of a patent have been appropriated, even when those features have been patently improved (Aquino 1998 citing the case of Texas Instruments v. United States International Trade Commission, 231 U.S.P.Q. 833[1986]. See also Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. USCA 01-1198 [Fed. Cir. 2002] and Kinik Company v. International Trade Commission USCA 02-1550 [Fed. Cir. 2004]).

(See also the article on Assessment of Inventive Step or Obviousness in the United States, Europe and Japan by Salto and Sweeney.)

Cases:

Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. USCA 01-1198 [Fed. Cir. 2002]
http://caselaw.lp.findlaw.com/cgi-bin/
getcase.pl?court=Fed&navby=case&no=011198

Electro Medical Systems v. Cooper Life Sciences 34 F.3d 1048 [1994]
http://www.mofo.com/mofo_dev/
decisions/34f3d1048.html

Graham v. John Deere, Co., 383 U.S. 1 148 USPQ 459 [1966]
http://digital-law-online.info/
cases/148PQ459.htm

Kinik Company v. International Trade Commission USCA 02-1550 [Fed. Cir. 2004])
http://www.ll.georgetown.edu/federal/
judicial/fed/opinions/02opinions/02-1550.html

Modine Manufacturing Company v. United States International Trade Commission USCA 93-1513 [Fed. Cir. 1996]
http://www.ll.georgetown.edu/federal/
judicial/fed/opinions/93opinions/93-1513.html

Polaroid Corp. v. Eastman Kodak Co., 789 F. 2d 1556 [1986]

Rhine v. Casio USCA 98-1432 [Fed. Cir. 1999]
http://caselaw.lp.findlaw.com/cgi-bin/
getcase.pl?court=fed&navby=case&no=981432

Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S. ct. 1532 [1976]
http://www.oscn.net/applications/oscn/
deliverdocument.asp?citeid=430321

SRI International v. Matsushita Electric Corporation of America (227 U.S. P.Q. 577 [Fed. Cir. 1985]

Texas Digital Systems, Inc. v. Telegenix, Inc. USCA 02-1032 [Fed. Cir. 2002]
http://caselaw.lp.findlaw.com/scripts/
getcase.pl?court=fed&navby=case&no=021032

References:

Minerals, Metals and Materials Society (1994). Best Mode Disclosure-Comply or Invalidate Your Patent.
http://www.tms.org/pubs/journals/
JOM/matters/matters-9412.html

Salto and Sweeney. Assessment of Inventive Step or Obviousness in the United States, Europe and Japan.

United States Patent and Trademark Office (2005). The Best Mode Requirement-Patentability.
http://www.uspto.gov/web/offices/
pac/mpep/documents/2100_2165.htm

United States Patent and Trademark Office (2005). Considerations Relevant to Best Mode-Patentability.
http://www.uspto.gov/web/offices/
pac/mpep/documents/2100_2165_01.htm

Wikipedia (2005).
http://en.wikipedia.org/wiki/Novelty_%28patent%29

5. Masigasig, Inc. produced a garbage-disposal device that not only shreds paper but recycles them producing fresh sheets of recycled paper. Masigasig, Inc. then caused the diagrams and sketches of the device printed in major dailies while announcing that the copyright belongs to Masigasig, Inc. Discuss the extent of the protection extended by copyright. Would it be considered as a violation of Masigasig, Inc.'s intellectual property rights supposing that a certain Godofredo, will produce the device basing on the diagrams and distribute the same to his friends?

ANSWER: The copyright protection of a drawing, sketch or diagram of a useful item will not protect the copyright holder from the unauthorized manufacture of the item depicted in the drawing, sketch or diagram. What would effectively bar an unauthorized person from manufacturing or fabricating the item so depicted, sketched or drawn would be patent registration. Copyrights and patents have different offices and one cannot be used as a substitute for the other. In sum, the only protection copyright would extend would be to the drawing, sketch or diagram itself, not to the item or object drawn, sketched or diagrammed (Aquino 1998).

In the case of Pearl and Dean v. Shoemart (GR 148222, August 15, 2003), the Philippine Supreme Court cited the case of Baker v. Selden (101 US 102–105 [1879]), where the United States Supreme Court held that only the expression of an idea is protected by copyright, not the idea itself. In that case, the plaintiff held the copyright of a book expounding on a new accounting system he had developed. The publication illustrated blank forms of ledgers utilized in such a system. The defendant reproduced forms similar to those illustrated in the plaintiff’s copyrighted book. The United States Supreme Court ruled that:

"There is no doubt that a work on the subject of book-keeping, though only explanatory of well known systems, may be the subject of a copyright; but, then, it is claimed only as a book… But there is a clear distinction between the books, as such, and the art, which it is, intended to illustrate. The mere statement of the proposition is so evident that it requires hardly any argument to support it. The same distinction may be predicated of every other art as well as that of bookkeeping. A treatise on the composition and use of medicines, be they old or new; on the construction and use of ploughs or watches or churns; or on the mixture and application of colors for painting or dyeing; or on the mode of drawing lines to produce the effect of perspective, would be the subject of copyright; but no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein. The 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 of the art or thing described or explained has nothing to do with the validity of the copyright. To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters patent, not of copyright. The claim to an invention of discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained; and a patent from the government can only secure it. (Emphasis supplied)

The difference between the two things, letters patent and copyright, may be illustrated by reference to the subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great value in the healing art. If the discoverer writes and publishes a book on the subject (as regular physicians generally do), he gains no exclusive right to the manufacture and sale of the medicine; he gives that to the public. If he desires to acquire such exclusive right, he must obtain a patent for the mixture as a new art, manufacture or composition of matter. He may copyright his book, if he pleases; but that only secures to him the exclusive right of printing and publishing his book. So of all other inventions or discoveries. xxx

Now, whilst no one has a right to print or publish his book, or any material part thereof, as a book intended to convey instruction in the art, any person may practice and use the art itself which he has described and illustrated therein. The use of the art is a totally different thing from a publication of the book explaining it. The copyright of a book on bookkeeping cannot secure the exclusive right to make, sell and use account books prepared upon the plan set forth in such book. Whether the art might or might not have been patented, is a question, which is not before us. It was not patented, and is open and free to the use of the public. And, of course, in using the art, the ruled lines and headings of accounts must necessarily be used as incident to it. (Emphasis supplied)

The plausibility of the claim put forward by the complainant in this case arises from a confusion of ideas produced by the peculiar nature of the art described in the books, which have been made the subject of copyright. In describing the art, the illustrations and diagrams employed happened to correspond more closely than usual with the actual work performed by the operator who uses the art… The description of the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art itself. The object of the one is explanation; the object of the other is use. The former may be secured by copyright. The latter can only be secured, if it can be secured at all, by letters patent."

The Supreme Court, in the case of Pearl and Dean v. Shoemart (GR 148222, August 15, 2003), likewise reiterated the ruling of the Court of Appeals viz.:

“xxx The principle in Baker v. Selden was likewise applied in Muller v. Triborough Bridge Authority [43 F. Supp. 298 (S.D.N.Y. 1942)]. In this case, Muller had obtained a copyright over an unpublished drawing entitled "Bridge Approach – the drawing showed a novel bridge approach to unsnarl traffic congestion". The defendant constructed a bridge approach which was alleged to be an infringement of the new design illustrated in plaintiff's drawings. In this case it was held that protection of the drawing does not extend to the unauthorized duplication of the object drawn because copyright extends only to the description or expression of the object and not to the object itself. It does not prevent one from using the drawings to construct the object portrayed in the drawing.

In two other cases, Imperial Homes Corp. v. Lamont, 458 (F. 2d 895) and Scholtz Homes, Inc. v. Maddox, 379 (F. 2d 84), it was held that there is no copyright infringement when one who, without being authorized, uses a copyrighted architectural plan to construct a structure. This is because the copyright does not extend to the structures themselves.”

Thus, the Supreme Court further elucidated n the case of Pearl and Dean v. Shoemart (GR 148222, August 15, 2003), viz.:

“To be able to effectively and legally preclude others from copying and profiting from the invention, a patent is a primordial requirement. No patent, no protection. The ultimate goal of a patent system is to bring new designs and technologies into the public domain through disclosure. Ideas, once disclosed to the public without the protection of a valid patent, are subject to appropriation without significant restraint.” (Emphasis supplied.)

(See the case of Apple Computer, Inc. v. Franklin Computer Corp. 714 F.2d 1240 [1983] for the exception with respect to computer processes and programs.)

There is likewise a question of whether a garbage disposal machine may be the subject of copyright, instead of patent protection either as a utility model or as an invention. In the recent case of Ching v. Salinas (GR 161295, June 29, 2005), the Philippine Supreme Court held that “[a] useful article may be copyrightable only if and only to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of the utilitarian aspects of the article.” Thus, “while works of applied art, original intellectual, literary and artistic works are copyrightable, useful articles and works of industrial design are not.” Further:

“….[T]he author’s intellectual creation, regardless of whether it is a creation with utilitarian functions or incorporated in a useful article produced on an industrial scale, is protected by copyright law. However, the law refers to a “work of applied art which is an artistic creation.” It bears stressing that there is no copyright protection for works of applied art or industrial design which have aesthetic or artistic features that cannot be identified separately from the utilitarian aspects of the article. Functional components of useful articles, no matter how artistically designed, have generally been denied copyright protection unless they are separable from the useful article. (Emphasis supplied.)

…. A utility model is a technical solution to a problem in any field of human activity which is new and industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of the aforesaid. Essentially, a utility model refers to an invention in the mechanical field. This is the reason why its object is sometimes described as a device or useful object. A utility model varies from an invention, for which a patent for invention is, likewise, available, on at least three aspects: first, the requisite of “inventive step” in a patent for invention is not required; second, the maximum term of protection is only seven years compared to a patent which is twenty years, both reckoned from the date of the application; and third, the provisions on utility model dispense with its substantive examination and prefer for a less complicated system.

Being plain automotive spare parts that must conform to the original structural design of the components they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not ornamental. They lack the decorative quality or value that must characterize authentic works of applied art. They are not even artistic creations with incidental utilitarian functions or works incorporated in a useful article. In actuality, the personal properties described in the search warrants are mechanical works, the principal function of which is utility sans any aesthetic embellishment.

Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included in the catch-all phrase “other literary, scholarly, scientific and artistic works” in Section 172.1(a) of R.A. No. 8293. Applying the principle of ejusdem generis which states that “where a statute describes things of a particular class or kind accompanied by words of a generic character, the generic word will usually be limited to things of a similar nature with those particularly enumerated, unless there be something in the context of the state which would repel such inference,” the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not copyrightable, being not of the same kind and nature as the works enumerated in Section 172 of R.A. No. 8293.

No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the certificates of copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion. Indeed, in Joaquin, Jr. v. Drilon (GR 108946, January 28, 1999) and Pearl and Dean v. Shoemart (GR 148222, August 15, 2003), the Court ruled that:

“Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted by the statute, and not simply a pre-existing right regulated by it. Being a statutory grant, the rights are only such as the statute confers, and may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms and conditions specified in the statute. Accordingly, it can cover only the works falling within the statutory enumeration or description.” (Ching v. Salinas, GR 16129, [2005]) (Emphasis supplied.)

Cases:

Apple Computer, Inc. v. Franklin Computer Corp. 714 F.2d 1240 [1983]
http://www2.tltc.ttu.edu/Cochran/
Cases%20&%20Readings/
Copyright-UNT/Copy'ability/apple.htm

Baker v. Selden (101 US 102–105 [1879])
http://caselaw.lp.findlaw.com/
cgi-bin/getcase.pl?court=us&vol=101&invol=99

Ching v. Salinas (GR 161295, June 29, 2005)
http://www.supremecourt.gov.ph/
jurisprudence/2005/jun2005/161295.htm

Joaquin, Jr. v. Drilon (GR 108946, January 28, 1999)
http://www.supremecourt.gov.ph/
jurisprudence/1999/jan99/108946.htm

Pearl and Dean v. Shoemart (GR 148222, August 15, 2003)
http://www.supremecourt.gov.ph/
jurisprudence/2003/aug2003/148222.htm