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BRANDIR V CASCADE

Brandir International, Inc. v. Cascade Pacific Lumber Co.


Brief Fact Summary.Brandir International, Inc. (Plaintiff) sold a wire sculpture
as a bicycle rack that by was deemed not to be copyrightable because it was
an industrial design not subject to copyright protection.
This case shows how to distinguish if a work falls under protectable "work of
Synopsis of Rule of Law. Copyrightability ultimately depends on the extent to applied art" or unprotectable "industrial designs". In this case, the inventor of
which the work reflects artistic expression not restricted by functional the RIBBON Rack, Brandir International, Inc., alleged Cascade Pacific
considerations. Lumber Co. by manufacturing the RIBBON Rack and infringed the copyright
of the RIBBON Rack. In order to prove valid copyright owner of the RIBBON
Facts. After seeing undulating wire sculptures, a friend suggested to the Rack, Brandir claimed that the Rack was originally an artwork, basically
artist, the chief owner of Brandir International, Inc. (Brandir) (Plaintiff), that formed from one continuous undulating piece of wire, for display at Levin's
the sculptures would make excellent bicycle racks. Plaintiff then started to house, as it was an art work more than a piece of utility. "One aspect of the
manufacture and sell bike racks derived in part from one or more of the distinction that has drawn considerable attention is the reference in the
works of art. When Plaintiff discovered that Cascade Pacific Lumber House Report to 'Physically or conceptually' separable elements..."(Pg. 356)
(Defendant) was selling a similar product, it included a copyright notice with The original wire sculpture may be able to considered as a piece of work,
its products and applied to the Copyright Office for registration. The however, the manufacturer also made substantial amount of modifications
Copyright Office denied the applications for registration as the bicycle racks and adjustments to make the sculpture more useful and suitable for
did not include any element that was capable of independent existence as a securing bikes. Due to all the modifications, the artistic elements was totally
copyrightability, and the district court granted summary judgment on the stripped out of the work, and the RIBBON Rack becomes so simple that it no
copyright claim. Plaintiff appealed. longer contains any elements that was capable of independent existence as
a copyrightable work. As a result, Cascade Pacific Lumber Co. won the
Issue. Should copyrightability ultimately depend on the extent to which the case.
work reflects artistic expression not restricted by functional considerations?

Held. (Oakes, J.) Yes. Copyrightability ultimately should depend on the


extent to which the work reflects artistic expression not restricted by
functional considerations. If design elements reflect a merger of aesthetic
and functional considerations, the artistic aspects of a work cannot be said to
be conceptually separable from the utilitarian elements. The final form of the
bicycle rack sold by Brandir (Plaintiff) is basically a product of industrial
design. Form and function are inextricably intertwined in the rack, its
ultimate design being as much the result of utilitarian pressures as aesthetic
choices. The original aesthetic elements have clearly been adapted to
accommodate and further a utilitarian purpose. Affirmed.
Case Title: PEARL & DEAN (PHIL.), INCORPORATED vs. SHOEMART, 3) can the owner of a registered trademark legally prevent others from using
such trademark if it is a mere abbreviation of a term descriptive of his goods,
Petitioners Claim: Petitioner Pearl and Dean, Inc. was able to secure a services orbusiness?
copyright registration on advertising units referred to as light boxes and was
also able to secure the trademark of Poster Ads. Sometime in 1989, Pearl Ruling: 1) No. P & D secured its copyright under the classification class O
and Dean, received reports that exact copies of its light boxes were installed work. This being so, petitioners copyright protection extended only to the
at SM City and in the fast food section of SM Cubao. Upon investigation, technical drawings and not to the light box itself because the latter was not at
Pearl and Dean found out that aside from the two (2) reported SM branches, all in the category of prints, pictorial illustrations, advertising copies, labels,
light boxes similar to those it manufactures were also installed in two (2) tags and box wraps. Stated otherwise, even as we find that P & D indeed
other SM stores. It further discovered that defendant-appellant North Edsa owned a valid copyright, the same could have referred only to the technical
Marketing Inc. (NEMI), through its marketing arm, Prime Spots Marketing drawings within the category of pictorial illustrations. It could not
Services, was set up primarily to sell advertising space in lighted display have possibly stretched out to include the underlying light box. The strict
units located in SMIs different branches. Pearl and Dean noted that NEMI is application] of the laws enumeration in Section 2 prevents us from giving
a sister company of SMI. In the light of its discoveries, Pearl and Dean sent petitioner even a little leeway, that is, even if its copyright certificate was
a letter dated December 11, 1991 to both SMI and NEMI enjoining them to entitled Advertising Display Units. What the law does not include, it
cease using the subject light boxes and to remove the same from SMIs excludes, and for the good reason: the light box was not a literary or artistic
establishments. It also demanded the discontinued use of the trademark piece which could be copyrighted under the copyright law. And no less
Poster Ads, and the payment to Pearl and Dean of compensatory damages clearly, neither could the lack of statutory authority to make the light box
in the amount of Twenty Million Pesos (P20,000,000.00). copyrightable be remedied by the simplistic act of entitling the copyright
certificate issued by the National Library as Advertising Display Units.
Respondents Claim: SMI maintained that it independently developed its
poster panels using commonly known techniques and available technology, 2) Yes Petitioner never secured a patent for the light boxes. It therefore
without notice of or reference to Pearl and Deans copyright. SMI noted acquired no patent rights which could have protected its invention, if in fact it
that the registration of the mark Poster Ads was only for stationeries such really was. And because it had no patent, petitioner could not legally prevent
as letterheads, envelopes, and the like. Besides, according to SMI, the word anyone from manufacturing or commercially using the contraption. To
Poster Ads is a generic term which cannot be appropriated as a trademark, be able to effectively and legally preclude others from copying and profiting
and, as such, registration of such mark is invalid. It also stressed that Pearl from the invention, a patent is a primordial requirement. No patent, no
and Dean is not entitled to the reliefs prayed for in its complaint since its protection. The ultimate goal of a patent system is to bring new designs and
advertising display units contained no copyright notice, in violation of Section technologies into the public through disclosure. Ideas, once, disclosed to the
27 of P.D. 49. public without protection of a valid patent, are subject to appropriation
without significant restraint. The Patent Law has a three-fold purpose: first,
Issue/s: 1) if the engineering or technical drawings of an advertising display patent law seeks to foster and reward invention; second, it promotes
unit (light box) are granted copyright protection (copyright certificate of disclosures of inventions to stimulate further innovation and to permit the
registration) by the National Library, is the light box depicted in such public to practice the invention once the patent expires; third, the stringent
engineering drawings ipso facto also protected by such copyright? requirements for patent protection seek to ensure that ideas in the public
domain remain there for the free use of the public. It is only after an
2) should the light box be registered separately and protected by a exhaustive examination by the patent office that patent is issued. Therefore,
patent issued by the Bureau of Patents Trademarks and Technology Transfer not having gone through the arduous examination for patents, petitioner
(now Intellectual Property Office) in addition to the copyright of the cannot exclude others from the manufacture, sale or commercial use of the
engineering drawings?
light boxes on the sole basis of its copyright certificate over the technical
drawings.

3) No. Poster Ads was generic and incapable of being used as a trademark
because it was used in the field of poster advertising, the very business
engaged in by petitioner. Secondary meaning means that a word or phrase
originally incapable of exclusive appropriation with reference to an article in
the market (because it is geographically or otherwise descriptive) might
nevertheless have been used for so long and so exclusively by one producer
with reference to his article that, in the trade and to that branch of the
purchasing public, the word or phrase has come to mean that the article was
his property.[29]The admission by petitioners own expert witness that he
himself could not associate Poster Ads with petitioner P & D because it was
too generic definitely precluded the application of this exception.
Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of
Certificate of Copyright No. M922, dated January 28, 1971, of Rhoda and
Me, a dating game show aired from 1970 to 1977.

On June 28, 1973, petitioner BJPI submitted to the National Library


an addendum to its certificate of copyright specifying the shows format and
style of presentation.

Upon complaint of petitioners, information for violation of PD No. 49


was filed against private respondent Zosa together with certain officers of
RPN 9 for airing Its a Date. It was assigned to Branch 104 of RTC Quezon
City.

Zosa sought review of the resolution of the Assistant City Prosecutor


before the Department of Justice.

On August 12, 1992, respondent Secretary of Justice Franklin M.


Drilon reversed the Assistant City Prosecutors findings and directed him to
move for the dismissal of the case against private respondents.

Petitioner Joaquin filed motion for reconsideration but such was


denied.

Defendants answer: Respondent maintain that petitioners failed to


establish the existence of probable cause due to their failure to present the
copyrighted master videotape of Rhoda and me. The further contend that
petitioners copyright covers only a specific episode of Rhoda and me, and
the formats or concepts of dating game shows are not covered by copyright
protection under pd 49.

ISSUE:

Whether the format or mechanics or petitioners television show is


entitled to copyright protection.

HELD:

The Court ruled that the format of the show is not copyrightable. Sec.
2 of PD No. 49, otherwise known as the Decree on Intellectual Property,
enumerates the classes of work entitled to copyright protection. The
JOAQUIN V DRILON provision is substantially the same as Sec. 172 of the Intellectual Property
Code of the Philippines (RA 8293). The format or mechanics of a television
FACTS: show is not included in the list of protected works in Sec. 2 of PD No. 49. For
this reason, the protection afforded by the law cannot be extended to cover
them.
Private respondents alleged in their complaint that Levi Strauss and Co.
Copyright, in the strict sense of the term, is purely a statutory right. It is a (LS&Co.), an internationally known clothing manufacturer, own the arcuate
new independent right granted by the statute and not simply a pre-existing design trademark which was registered under US Trademark Registration
right regulated by the statute. Being a statutory grant, the rights are only No. 404,248 on November 16, 1943. That sometime in 1987, CVSGIC and
such as the statute confers, and may be obtained and enjoyed only with Venancio Sambar, without the consent and authority of private respondents
respect to the subjects and by the person and on terms and conditions and in infringement and unfair competition, sold and advertised, and despite
specified in the statute. demands to cease and desist, continued to manufacture, sell and advertise
denim, pants under the brand name Europress with back pockets bearing a
The Court is of the opinion that petitioner BJPIs copyright covers audio- design similar to the arcuate trademark of private respondents, thereby
visual recordings of each episode of Rhoda and Me, as falling within the causing confusion on the buying public, prejudiced to private respondents
class of works mentioned in PD 49. goodwill and property right.

The copyright does not extend to the general concept or format of its dating Sambar filed a separate answer. He admitted that copyright Registration No.
game show. 1-1998 was issued to him, but he denied using it. He said he did not
authorize anyone to use the copyrighted design.
Mere description by words of the general format of the two dating game
shows is insufficient; the presentation of the master videotape in evidence Trial court issued a writ of preliminary injunction enjoining CVSGIC and
was indispensable to the determination of the existence of a probable cause. petitioner from manufacturing, advertising and selling pants with the arcuate
design on their back pockets.
A television show includes more than mere words can describe because it
involves a whole spectrum of visuals and effects, video and audio, such that Private respondents moved for reconsideration praying for the cancellation
no similarity or dissimilarity may be found by merely describing the general of petitioners copyright registration.
copyright / format of both dating game shows.
Trial court granted the prayer.

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

DEFENDANTSANSWER:

CVSGIC claimed that it has its own original arcuate design, as evidence by
copyright registration, which was very distinct and different from levis
design. That there was no colourable imitation which confused or deceived
the public.

ISSUE:

Whether petitioner infringe on private respondents arcuate design.

HELD:

SAMBAR V LEVI STRAUSS To be entitled to a copyright, the thing being copyrighted must be original,
created by the author through his own skill, labor and judgment, without
FACTS: directly copying or evasively imitating the work of another.
The backpocket design of Europress jeans, a double arc intersecting in the P is the owner and general manager of Jeshicris Manufacturing Co., the
middle was the same as Levis mark, also a double arc intersecting in the maker and manufacturer of a Utility Model, described as Leaf Spring Eye
center. Although the trial court found differences in these designs, these Bushing for Automobile made up of plastic, which was issued by the
differences were not noticeable.
National Library Certificates of Copyright Registration and Deposit.

Both the trail court and the Court of Appeals found there was infringement. P requested the NBI for police/investigative assistance for the apprehension
and prosecution of illegal manufacturers, producers and/or distributors of the
works. After due investigation, the NBI filed applications for SWs against R
alleging that the latter therein reproduced and distributed the said models
penalized under R.A. No. 8293. RTC granted the application and issued
SWs for the seizure of the aforecited articles.

R filed a motion to quash the search warrants averring that the works
covered by the certificates issued by the National Library are not artistic in
nature; they are considered automotive spare parts and pertain to
technology. They aver that the models are not original, and as such are the
proper subject of a patent, not copyright.

RTC quashed the SW. Ps MR having been denied; he filed a petition for
certiorari in the CA. The petition was dismissed.

Issues:

(1) Whether or not Ps certificate of copyright registration over said utility


models are valid; and

(2) Whether or not Ps utility models can be considered literary and artistic
works subject to copyright protection.

Ruling:

(1) The petition has no merit. To discharge his burden, the applicant may
present the certificate of registration covering the work or, in its absence,
other evidence. A copyright certificate provides prima facie evidence of
originality which is one element of copyright validity. It constitutes prima facie
evidence of both validity and ownership and the validity of the facts stated in
Ching v. Salinas, Sr. (G.R. No. 161295)
the certificate. The presumption of validity to a certificate of copyright
registration merely orders the burden of proof. The applicant should not
Facts:
ordinarily be forced, in the first instance, to prove all the multiple facts that
underline the validity of the copyright unless the respondent, effectively Bobbs-Merrill was a book publisher and a copyright
challenging them, shifts the burden of doing so to the applicant. owner of a book called The Castaway. Inside the book
A certificate of registration creates no rebuttable presumption of copyright cover, they wrote a notice saying that the minimum
validity where other evidence in the record casts doubt on the question. In retail sale price of the book was $1, and if a retailer
such a case, validity will not be presumed. No copyright granted by law can sells it for less than that they are infringing the
be said to arise in favor of the petitioner despite the issuance of the
copyright.
certificates of copyright registration and the deposit of the Leaf Spring Eye
Bushing and Vehicle Bearing Cushion.
Straus was a retailer who bought copies of the book
(2) We agree with the contention of the petitioner (citing Section 171.10 of from a wholesaler and started selling them for 89.
R.A. No. 8293), that the authors intellectual creation, regardless of whether Bobbs-Merrill sued for copyright infringement.
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 Bobbs-Merrill argued their ownership of the copyright
law refers to a work of applied art which is an artistic creation. It bears
gave them the exclusive right to distribute, and that
stressing that there is no copyright protection for works of applied art or
industrial design which have aesthetic or artistic features that cannot be meant that they could revoke Straus' right to sell the
identified separately from the utilitarian aspects of the article. Functional books at any time. They contended that this power to
components of useful articles, no matter how artistically designed, have control further sales is given by statute to the owner of
generally been denied copyright protection unless they are separable from
such a copyright in conferring the sole right to vend a
the useful article.
copyrighted book.
In this case, the petitioners models are not works of applied art, nor artistic
works. They are utility models, useful articles, albeit with no artistic design or Straus argued that they didn't buy the book from
value. Being plain automotive spare parts that must conform to the original Bobbs-Merrill, they bought it from a wholesaler.
structural design of the components they seek to replace, the Leaf Spring Whatever deal Bobbs-Merrill might have made with the
Eye Bushing and Vehicle Bearing Cushion are not ornamental. They lack the
decorative quality or value that must characterize authentic works of applied
wholesaler didn't affect them because they were not in
art. They are not even artistic creations with incidental utilitarian functions or privity with any contract between Bobbs-Merrill and
works incorporated in a useful article. In actuality, the personal properties the wholesaler.
described in the search warrants are mechanical works, the principal
function of which is utility sans any aesthetic embellishment. Decision:
In this case, the bushing and cushion are not works of art. They are, as the
The US Supreme Court found for Straus.
petitioner himself admitted, utility models which may be the subject of a
patent.
The US Supreme Court basically found that copyright
AFFIRMED law gave the copyright owner the right to restrict
others from making their own copies of a work.
BOBBS MERILL V STRAUSS
However, it did not give them any rights to control The purchaser of a book, once sold by authority of the
what happened to books after they sold them. owner of the copyright, may sell it again, although he
could not publish a new edition of it.
This case described what is now knows as the first sale
doctrine, and is codified in 17 U.S.C. 109(a). The first The copyright statutes, while protecting the owner of
sale doctrine basically says that once someone buys a the copyright in his right to multiply and sell his
legitimate copy of a work, they can do whatever they production, do not create the right to impose, by
want with it, including sell it to others, or lend it out, or notice, such as disclosed in this case, a limitation at
whatever. They just can't make extra copies of it. which the book shall be sold at retail by future
purchasers, with whom there is privity of contract.
The first sale doctrine is what prevents used
bookstores and libraries from being copyright To add to the right of exclusive sale the authority to
infringers. control all figure retail sales by a notice that such sales
must be at a fixed sum would give a right not included
The first sale doctrine is sometimes known as the in the terms of the statute, and, in our view, extend its
doctrine of exhaustion. operation, by construction, beyond its meaning, when
When a work is published in print, the owners interpreted with a view to ascertaining the legislative
common law rights are lost, and, unless the publication intent in its enactment.
be in accordance with the requirements of the statute,
the statutory right is not secured.

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