Case Digests for Technology and the Law
EXPERTRAVEL & TOURS, INC., petitioner,
vs.
COURT OF APPEALS and KOREAN AIRLINES, respondent.
vs.
COURT OF APPEALS and KOREAN AIRLINES, respondent.
G.R. No. 152392
May 26, 2005
Facts: The respondent posits that the
courts are aware of this development in technology; hence, may take judicial
notice thereof without need of hearings. Even if such hearing is required, the
requirement is nevertheless satisfied if a party is allowed to file pleadings
by way of comment or opposition thereto.
In its reply, the petitioner pointed out that there
are no rulings on the matter of teleconferencing as a means of conducting
meetings of board of directors for purposes of passing a resolution; until and
after teleconferencing is recognized as a legitimate means of gathering a
quorum of board of directors, such cannot be taken judicial notice of by the
court. It asserts that safeguards must first be set up to prevent any mischief
on the public or to protect the general public from any possible fraud. It
further proposes possible amendments to the Corporation Code to give
recognition to such manner of board meetings to transact business for the
corporation, or other related corporate matters; until then, the petitioner
asserts, teleconferencing cannot be the subject of judicial notice.
The petitioner further avers that the supposed
holding of a special meeting on June 25, 1999 through teleconferencing where
Atty. Aguinaldo was supposedly given such an authority is a farce, considering
that there was no mention of where it was held, whether in this country or
elsewhere. It insists that the Corporation Code requires board resolutions of
corporations to be submitted to the SEC. Even assuming that there was such a
teleconference, it would be against the provisions of the Corporation Code not
to have any record thereof.
Issue: Whether or not the resolution
made through teleconferencing may be admitted under the circumstances?
Held: Worse still, it appears
that as early as January 10, 1999,
Atty. Aguinaldo had signed a Secretary’s/Resident Agent’s Certificate alleging
that the board of directors held
a teleconference on June 25, 1999. No such certificate was appended to
the complaint, which was filed on September 6, 1999. More importantly, the
respondent did not explain why the said certificate was signed by Atty.
Aguinaldo as early as January 9, 1999, and yet was notarized one year later (on
January 10, 2000); it also did not explain its failure to append the said
certificate to the complaint, as well as to its Compliance dated March 6, 2000.
It was only on January 26, 2001 when the respondent filed its comment in the CA
that it submitted the Secretary’s/Resident Agent’s Certificate dated
January 10, 2000.
The Court is, thus, more inclined to believe that
the alleged teleconference on June 25, 1999 never took place, and that the
resolution allegedly approved by the respondent’s Board of Directors during the
said teleconference was a mere concoction purposefully foisted on the RTC, the
CA and this Court, to avert the dismissal of its complaint against the
petitioner.
MCC INDUSTRIAL SALES
CORPORATION, petitioner,
vs.
SSANGYONG CORPORATION, respondents.
vs.
SSANGYONG CORPORATION, respondents.
G.R. No. 170633
October 17, 2007
Facts: On August 17, 2000, MCC
finally opened an L/C with PCIBank for US$170,000.00 covering payment for 100MT
of stainless steel coil under Pro
Forma Invoice No. ST2-POSTS080-2. The goods covered by
the said invoice were then shipped to and received by MCC.
MCC then faxed to Ssangyong a letter dated August
22, 2000 signed by Chan, requesting for a price adjustment of the order stated
in Pro Forma Invoice
No. ST2-POSTS080-1, considering that the prevailing price of steel at that time
was US$1,500.00/MT, and that MCC lost a lot of money due to a recent strike.
Ssangyong rejected the request, and, on August 23,
2000, sent a demand letter to Chan for the opening of the second and last
L/C of US$170,000.00 with a warning that, if the said L/C was not opened by MCC
on August 26, 2000, Ssangyong would be constrained to cancel the contract and
hold MCC liable for US$64,066.99 (representing cost difference, warehousing
expenses, interests and charges as of August 15, 2000) and other damages for
breach. Chan failed to reply.
Exasperated, Ssangyong through counsel wrote a
letter to MCC, on September 11, 2000, canceling the sales contract under ST2-POSTS0401-1 /ST2-POSTS0401-2,
and demanding payment of US$97,317.37 representing losses, warehousing
expenses, interests and charges
Issues: Whether
the print-out and/or photocopies of facsimile transmissions are electronic
evidence and admissible as such? Whether there was a perfected contract of sale
between MCC and Ssangyong, and, if in the affirmative, whether MCC breached the
said contract?
Held: To be
admissible in evidence as an electronic data message or to be considered as the
functional equivalent of an original document under the Best Evidence Rule,
the writing must foremost be an
"electronic data message" or an "electronic document."We
conclude that the terms "electronic
data message" and "electronic document," as defined under the
Electronic Commerce Act of 2000, do not include a facsimile transmission.
Accordingly, a facsimile
transmissioncannot be considered as electronic evidence. It is not the functional equivalent of an
original under the Best Evidence Rule and is not admissible as electronic evidence.
Since a
facsimile transmission is not an "electronic data message" or an
"electronic document," and cannot be considered as electronic
evidence by the Court, with greater reason is a photocopy of such a fax
transmission not electronic evidence. In the present case, therefore, Pro Forma
Invoice Nos. ST2-POSTS0401-1 and ST2-POSTS0401-2 (Exhibits
"E" and "F"), which are mere photocopies of the original fax transmittals, are not
electronic evidence, contrary to the position of both the trial and the
appellate court.
Nevertheless,
despite the pro forma invoices
not being electronic evidence, this Court finds that respondent has proven by
preponderance of evidence the existence of a perfected contract of sale.
In an
action for damages due to a breach of a contract, it is essential that the
claimant proves (1) the existence of a perfected contract, (2) the breach
thereof by the other contracting party and (3) the damages which he/she
sustained due to such breach. Actori
incumbit onus probandi. The burden of proof rests on the party who
advances a proposition affirmatively. In other words, a plaintiff in a
civil action must establish his case by a preponderance of evidence, that is,
evidence that has greater weight, or is more convincing than that which is
offered in opposition to it.
In
general, contracts are perfected by mere consent, which is manifested by
the meeting of the offer and the acceptance upon the thing and the cause which
are to constitute the contract. The offer must be certain and the acceptance
absolute. They are, moreover, obligatory in whatever form they may have
been entered into, provided all the essential requisites for their validity are
present. Sale, being a consensual contract, follows the general rule that
it is perfected at the moment there is a meeting of the minds upon the thing
which is the object of the contract and upon the price. From that moment, the
parties may reciprocally demand performance, subject to the provisions of the
law governing the form of contracts.
The
essential elements of a contract of sale are (1) consent or meeting of the
minds, that is, to transfer ownership in exchange for the price, (2) object
certain which is the subject matter of the contract, and (3) cause of the
obligation which is established.
In this
case, to establish the existence of a perfected contract of sale between the
parties, respondent Ssangyong formally offered in evidence the testimonies of
its witnesses
ELLERY MARCH G. TORRES, Petitioner,
vs.
vs.
PHILIPPINE AMUSEMENT and GAMING CORPORATION,
represented by ATTY. CARLOS R. BAUTISTA, JR.,Respondent.
G.R. No. 193531
December 14, 2011
Facts: The CSC found that the issue
for resolution was whether petitioner's appeal had already prescribed which the
former answered in the positive. The CSC did not give credit to petitioner's
claim that he sent a facsimile transmission of his letter reconsideration
within the period prescribed by the Uniform Rules on Administrative Cases in
the Civil Service. It found PAGCOR's denial of having received petitioner's
letter more credible as it was supported by certifications issued by its
employees. It found that a verification of one of the telephone numbers where
petitioner allegedly sent his letter reconsideration disclosed that such number
did not belong to the PAGCOR's Office of the Board of Directors; and that
petitioner should have mentioned about the alleged facsimile transmission at
the first instance when he filed his complaint and not only when respondent PAGCOR
raised the issue of prescription in its Comment.
Issue: Whether or not the Civil
Service Commission erred in ruling that there was no valid letter/motion for
reconsideration submitted to reconsider petitioner's dismissal from the
service?
Held: Petitioner
received a copy of the letter/notice of dismissal on August 4, 2007; thus, the
motion for reconsideration should have been submitted either by mail or by
personal delivery on or before August 19, 2007. However, records do not show
that petitioner had filed his motion for reconsideration. In fact, the CSC
found that the non-receipt of petitioner's letter reconsideration was duly
supported by certifications issued by PAGCOR employees.
Even
assuming arguendo that petitioner indeed submitted a letter reconsideration
which he claims was sent through a facsimile transmission, such letter
reconsideration did not toll the period to appeal. The mode used by petitioner
in filing his reconsideration is not sanctioned by the Uniform Rules on
Administrative Cases in the Civil Service. As we stated earlier, the motion for
reconsideration may be filed only in two ways, either by mail or personal
delivery
We,
therefore, conclude that the terms "electronic data message" and
"electronic document," as defined under the Electronic Commerce Act
of 2000, do not include a facsimile transmission. Accordingly, a facsimile
transmission cannot be considered as electronic evidence. It is not the
functional equivalent of an original under the Best Evidence Rule and is not
admissible as electronic evidence.
NATIONAL POWER CORPORATION, Petitioner,
vs.
HON. RAMON G. CODILLA, JR., Presiding Judge, RTC of Cebu, Br. 19, BANGPAI SHIPPING COMPANY, and WALLEM SHIPPING, INCORPORATED, Respondents.
vs.
HON. RAMON G. CODILLA, JR., Presiding Judge, RTC of Cebu, Br. 19, BANGPAI SHIPPING COMPANY, and WALLEM SHIPPING, INCORPORATED, Respondents.
G.R. No. 170491
April 4, 2007
Facts: On 16 November 2004, public
respondent judge issued the assailed order denying the admission and excluding
from the records petitioner’s Exhibits "A", "C",
"D", "E", "H" and its sub-markings,
"I", "J" and its sub-markings, "K",
"L", "M" and its sub-markings, "N" and its sub-markings,
"O", "P" and its sub-markings, "Q" and its
sub-markings, "R" and "S" and its sub-markings. According
to the court a quo:
The Court finds merit in the objections raised and
the motion to strike out filed respectively by the defendants. The record shows
that the plaintiff has been given every opportunity to present the originals of
the Xerox or photocopies of the documents it offered. It never produced the
originals. The plaintiff attempted to justify the admission of the photocopies
by contending that "the photocopies offered are equivalent to the original
of the document" on the basis of the Electronic Evidence (Comment to
Defendant Wallem Philippines’ Objections and Motion to Strike). But as rightly
pointed out in defendant Wallem’s Reply to the Comment of Plaintiff, the Xerox
copies do not constitute the electronic evidence defined in Section 1 of Rule 2
of the Rules on Electronic Evidence as follows:
"(h) "Electronic document" refers to
information or the representation of information, data, figures, symbols or
other models of written expression, described or however represented, by which
a right is established or an obligation extinguished, or by which a fact may be
proved and affirmed, which is received, recorded, transmitted, stored,
processed, retrieved or produced electronically. It includes digitally signed
documents and any printout, readable by sight or other means which accurately
reflects the electronic data message or electronic document. For the purpose of
these Rules, the term "electronic document" may be used
interchangeably with "electronic data message".
The information in those Xerox or photocopies was
not received, recorded, retrieved or produced electronically. Moreover, such
electronic evidence must be authenticated (Sections 1 and 2, Rule 5, Rules on
Electronic Evidence), which the plaintiff failed to do. Finally, the required
Affidavit to prove the admissibility and evidentiary weight of the alleged
electronic evidence (Sec. 1, Rule 9, Ibid) was not executed, much less presented
in evidence.
The Xerox or photocopies offered should, therefore,
be stricken off the record. Aside from their being not properly identified by
any competent witness, the loss of the principals thereof was not established
by any competent proof.
Issues: Whether
or not the photocopies are indeed electronic documents as contemplated in
Republic Act No. 8792 or the Implementing Rules and Regulations of the
Electronic Commerce Act, as well as the Rules on Electronic Evidence?
Held: A
perusal of the information contained in the photocopies submitted by petitioner
will reveal that not all of the contents therein, such as the signatures of the
persons who purportedly signed the documents, may be recorded or produced
electronically. By no stretch of the imagination can a person’s signature
affixed manually be considered as information electronically received,
recorded, transmitted, stored, processed, retrieved or produced. Hence, the
argument of petitioner that since these paper printouts were produced through
an electronic process, then these photocopies are electronic documents as
defined in the Rules on Electronic Evidence is obviously an erroneous, if not
preposterous, interpretation of the law. Having thus declared that the offered
photocopies are not tantamount to electronic documents, it is consequential
that the same may not be considered as the functional equivalent of their original
as decreed in the law.
When
the original document has been lost or destroyed, or cannot be produced in
court, the offeror, upon proof of its execution or existence and the cause of
its unavailability without bad faith on his part, may prove its contents by a
copy, or by a recital of its contents in some authentic document, or by the
testimony of witnesses in the order stated. The offeror of secondary
evidence is burdened to prove the predicates thereof: (a) the loss or
destruction of the original without bad faith on the part of the
proponent/offeror which can be shown by circumstantial evidence of routine
practices of destruction of documents; (b) the proponent must prove by a
fair preponderance of evidence as to raise a reasonable inference of the loss
or destruction of the original copy; and (c) it must be shown that a diligent
and bona fide but unsuccessful search has been made for the document in the
proper place or places. However, in the case at bar, though
petitioner insisted in offering the photocopies as documentary evidence, it
failed to establish that such offer was made in accordance with the exceptions
as enumerated under the abovequoted rule. Accordingly, we find no error in the
Order of the court a quo denying admissibility of the photocopies offered by
petitioner as documentary evidence.
Finally,
it perplexes this Court why petitioner continued to obdurately disregard the
opportunities given by the trial court for it to present the originals of the
photocopies it presented yet comes before us now praying that it be allowed to
present the originals of the exhibits that were denied admission or in case the
same are lost, to lay the predicate for the admission of secondary evidence.
Had petitioner presented the originals of the documents to the court instead of
the photocopies it obstinately offered as evidence, or at the very least laid
the predicate for the admission of said photocopies, this controversy would not
have unnecessarily been brought before the appellate court and finally to this
Court for adjudication. Had it not been for petitioner’s intransigence, the
merits of petitioner’s complaint for damages would have been decided upon by the
trial court long ago. As aptly articulated by the Court of Appeals, petitioner
has only itself to blame for the respondent judge’s denial of admission of its
aforementioned documentary evidence and consequently, the denial of its prayer
to be given another opportunity to present the originals of the documents that
were denied admission nor to lay the predicate for the admission of secondary
evidence in case the same has been lost.
DIAMOND,
COMMISSIONER OF PATENTS AND TRADEMARKS
v.
DIEHR ET AL.
v.
DIEHR ET AL.
450 U.S. 175 (1981)
Decided March 3, 1981.
Facts: Respondents
claim that their process ensures the production of molded articles which are
properly cured. Achieving the perfect cure depends upon several factors
including the thickness of the article to be molded, the temperature of the
molding process, and the amount of time that the article is allowed to remain
in the press. It is possible using well-known time, temperature, and cure
relationships to calculate by means of the Arrhenius equation when to open
the press 178*178 and remove the cured product. Nonetheless,
according to the respondents, the industry has not been able to obtain
uniformly accurate cures because the temperature of the molding press could not
be precisely measured, thus making it difficult to do the necessary
computations to determine cure time. Because the temperature inside the
press has heretofore been viewed as an uncontrollable variable, the
conventional industry practice has been to calculate the cure time as the
shortest time in which all parts of the product will definitely be cured,
assuming a reasonable amount of mold-opening time during loading and unloading.
But the shortcoming of this practice is that operating with an uncontrollable
variable inevitably led in some instances to overestimating the mold-opening
time and overcuring the rubber, and in other instances to underestimating that
time and undercuring the product.
Respondents
characterize their contribution to the art to reside in the process of
constantly measuring the actual temperature inside the mold. These temperature
measurements are then automatically fed into a computer which repeatedly
recalculates the cure time by use of the Arrhenius equation. 179*179 When
the recalculated time equals the actual time that has elapsed since the press
was closed, the computer signals a device to open the press. According to the
respondents, the continuous measuring of the temperature inside the mold
cavity, the feeding of this information to a digital computer which constantly
recalculates the cure time, and the signaling by the computer to open the
press, are all new in the art.
Issue: Whether
a process for curing synthetic rubber which includes in several of its steps
the use of a mathematical formula and a programmed digital computer is
patentable subject matter?
Held: In
determining the eligibility of respondents' claimed process for patent
protection under § 101, their claims must be considered as a whole. It is
inappropriate to dissect the claims into old and new elements and then to
ignore the presence of the old elements in the analysis. This is particularly
true in a process claim because a new combination of steps in a process may be
patentable even though all the constituents of the combination were well known
and in common use before the combination was made. The "novelty" of
any element or steps in a process, or even of the189*189 process itself,
is of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.
It has
been urged that novelty is an appropriate consideration under § 101.
Presumably, this argument results from the language in § 101 referring to any
"new and useful" process, machine, etc. Section 101, however, is a
general statement of the type of subject matter that is eligible for patent
protection "subject to the conditions and requirements of this
title." Specific conditions for patentability follow and § 102 covers in
detail the conditions relating to novelty. 190*190 The question
therefore of whether a particular invention is novel is "wholly apart from
whether the invention falls into a category of statutory subject matter." In
re Bergy, 596 F. 2d 952, 961 (CCPA 1979)(emphasis deleted). See
also Nickola v. Peterson, 580
F. 2d 898 (CA6 1978)
We have
before us today only
the question of whether respondents' claims fall within the § 101 categories of
possibly patentable subject matter. We view respondents' claims as nothing more
than a process for molding rubber products and not as an attempt to patent a
mathematical formula. We recognize, of course, that when a claim recites a
mathematical formula (or scientific principle or phenomenon of nature), an
inquiry must be made into whether the claim is seeking patent protection for
that formula in the abstract. A mathematical formula as such is not accorded
the protection of our patent laws, Gottschalk v. Benson, 409 U. S. 63 (1972), and
this principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment. Parker v. Flook, 437 U. S.584 (1978). Similarly,
insignificant postsolution activity will not transform 192*192 an
unpatentable principle into a patentable process. Ibid. To
hold otherwise would allow a competent draftsman to evade the recognized
limitations on the type of subject matter eligible for patent protection. On
the other hand, when a claim containing a mathematical formula implements or
applies that formula in a structure or process which, when considered as a
whole, is performing a function which the patent laws were designed to protect
(e. g., transforming or reducing an article to a different state or
thing), then the claim satisfies the requirements of § 101. Because we do not
view respondents' claims as an attempt to patent a mathematical formula, but
rather to be drawn to an industrial process193*193 for the molding of
rubber products, we affirm the judgment of the Court of Customs and Patent
Appeals.
It is
so ordered.
State Street Bank and Trust Company
Vs. Signature Financial Group, Inc.
149 F.3d 1368 (Fed. Cir. 1998)
Facts: On
March 9, 1993, Signature Financial Group, Inc. was granted U.S. Patent
5,193,056 entitled "Data Processing System for Hub and Spoke
Financial Services Configuration". The "spokes" were mutual funds that pool their assets in a central
"hub". It has been pointed out that the patent claim comprises means
for performing steps that are the requirements specified in an Internal Revenue Service regulation
for avoiding taxes on a partnership. That the invention described and
claimed in the patent constituted protectable subject matter was affirmed by
the Federal Circuit in
July 1998. The court held that: (http://en.wikipedia.org/wiki/State_Street_Bank_v._Signature_Financial_Group)
(...)
the transformation of data, representing discrete dollar amounts, by a machine
through a series of mathematical calculations into a final share price, constitutes
a practical application of a mathematical algorithm, formula, or calculation,
because it produces 'a useful, concrete and tangible result' -- a final share
price momentarily fixed for recording and reporting purposes and even accepted
and relied upon by regulatory authorities and in subsequent trades.
This is
considered by many to be significant because previously "methods of doing
business" had been widely speculated to be an excluded class of patentable subject matter, although some point out that
the issue was never directly addressed by the courts until the State Street decision.
The
Federal Circuit in this opinion observed that: (http://en.wikipedia.org/wiki/State_Street_Bank_v._Signature_Financial_Group)
Issues:
Whether or not an invention was eligible for protection
by a patent in the United States if it involved some practical application and
if "it produces a useful, concrete and tangible result."?
Held: The business method exception has
never been invoked by this court, or the CCPA, to deem an invention unpatentable. Application of this
particular exception has always been preceded by a ruling based on some clearer
concept of Title 35 or, more commonly, application of the abstract
idea exception based on finding a mathematical algorithm. Illustrative is the
CCPA's analysis in In re Howard, 394 F.2d 869, 157 USPQ 615 (CCPA 1968),
wherein the court affirmed the Board of Appeals' rejection of the claims for
lack of novelty and found it unnecessary to reach the Board's section 101 ground that a method of doing business is
"inherently unpatentable."
Id. at
872, 157 USPQ at 617. (http://en.wikipedia.org/wiki/State_Street_Bank_v._Signature_Financial_Group)
The
Federal Circuit found it unnecessary to carve out a new exception to the
principle that "anything under the sun made by man is patentable" (a
phrase from the U.S. Supreme Court ruling
in the Chakrabarty decision based
on a 1952 report from the Congress). Accordingly, that principle is equally applicable
to any business method that produces a useful, concrete and tangible result. (http://en.wikipedia.org/wiki/State_Street_Bank_v._Signature_Financial_Group)
In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008)
Facts: This
was an en banc decision of the United States Court of Appeals for the Federal Circuit (CAFC)
on the patenting of method claims, particularly business methods. The
Federal Circuit court affirmed the rejection of the patent claims involving a
method of hedging risks in
commodities trading. The court also reiterated the machine-or-transformation test as the applicable test for patent-eligible subject matter,
and stated that the test in State Street
Bank v. Signature Financial Group should no longer be
relied upon. (http://en.wikipedia.org/wiki/In_re_Bilski)
The
applicants (Bernard L. Bilski and Rand Warsaw) filed a patent application (on
10 April 1997) for a method of hedging risks in commodities trading. Such
patent claims are often termed business method claims. (http://en.wikipedia.org/wiki/In_re_Bilski)
The
serial number for the patent application is 08/833,892. The text is available
on the USPTO web site. The patent application describes a method for
providing a fixed bill energy contract to
consumers. Under fixed bill energy contracts, consumers pay monthly prices for
their future energy consumption in advance of winter based on their past energy
use. The monthly prices remain the same no matter how much energy they then
use. Thus, consumers save money relative to others if, for example, a given
winter is unusually cold and they use an unusually large amount of energy for
heating. On the other hand, consumers pay more than others if a winter is
unusually warm and their energy use is lower than average. (http://en.wikipedia.org/wiki/In_re_Bilski)
Method
claim 1 of the patent application claims a three-step method for a broker to
hedge risks for purchaser-users of an input of a product or service (termed a
commodity). For example, an electric power plant might be a purchaser and user
of coal, which it purchases from coal-mining companies (producer-sellers) and
uses to make electricity. The power plant might seek to insulate itself from
upward changes in the price of coal by engaging in "hedging"
transactions. The risk can be quantified in terms of dollars (termed a "risk
position"). Thus, if the purchaser-user uses 1000 tons of coal in a given
period, and the potential price spike is $10 per ton, the purchaser-user's
total risk position for that period is 1000 × $10, or $10,000. (http://en.wikipedia.org/wiki/In_re_Bilski)
Held: The en banc Federal Circuit upheld
the rejection, 9–3. The majority opinion by Chief Judge Paul Redmond Michel characterized
the issue as whether the claimed method is a patent-eligible
"process," as the patent statute (35 U.S.C. § 101) uses that term.
While any series of actions or operations is a process in the dictionary sense
of that term, the court explained, the Supreme Court has held that the
statutory meaning is narrower than the dictionary meaning which
"forecloses a purely literal reading." Patent-eligible processes do
not include "laws of nature, natural phenomena, [or] abstract ideas."
The limiting legal principle applies not just to processes, but to anything on
which a patent is sought. As a trilogy of Supreme Court decisions on patent-eligibility
from approximately three decades ago had taught, "Phenomena of nature,
though just discovered, mental processes, and abstract intellectual concepts
are not patentable, as they are the basic tools of scientific and technological
work." Therefore, the question was whether Bilski's process fell within
any of the prohibited categories (that is, was a claim to a
"principle"), and the underlying legal question was what legal tests or
criteria should govern that determination when a claim is directed to a
principle. (http://en.wikipedia.org/wiki/In_re_Bilski)
The
court concluded that prior decisions of the Supreme Court were of limited
usefulness as guides because they represented polar cases on the abstraction
and concreteness spectrum. Nonetheless, a legal test could be distilled from
them: "A claimed process is surely patent-eligible under § 101 if: (1) it
is tied to a particular machine or apparatus, or (2) it transforms a particular
article into a different state or thing." Not only did the
patent-eligibility trilogy (Benson, Flook, and Diehr) support this test, the court explained, but so
too did earlier Supreme Court precedents dating back well into the 19th
century. (http://en.wikipedia.org/wiki/In_re_Bilski)
The
court then considered whether this two-branch test should be considered
all-inclusive, that is, as stating indispensable conditions of
patent-eligibility. It concluded that the answer was affirmative, even though
much of the language in the Supreme Court's patent-eligibility trilogy was more
reserved. The Federal Circuit placed great weight on the use of the definite
article in several Supreme Court statements that transformation and use of a
particular machine provided "the clue
to the patentability of a process claim." At the same time the court
placed no weight on the fact that the Benson Court had not accepted the Government's argument
that the case law "cannot be rationalized otherwise." (http://en.wikipedia.org/wiki/In_re_Bilski)
BRANDIR INTERNATIONAL, INC., Plaintiff-Appellant,
v.
CASCADE PACIFIC LUMBER CO., d/b/a Columbia Cascade Co.,
Defendant-Appellee,
and
David L. Ladd, Register of Copyrights, United States
Copyright Office, Third-Party Defendant.
v.
CASCADE PACIFIC LUMBER CO., d/b/a Columbia Cascade Co.,
Defendant-Appellee,
and
David L. Ladd, Register of Copyrights, United States
Copyright Office, Third-Party Defendant.
834 F.2d 1142 Decided Dec. 2, 1987.
Facts: Against
the history of copyright protection well set out in the majority opinion in
Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 415-18 (2d Cir.1985),
and in Denicola, Applied Art and Industrial Design: A Suggested Approach to
Copyright in Useful Articles, 67 Minn.L.Rev. 707, 709-17 (1983), Congress
adopted the Copyright Act of 1976. The "works of art" classification
of the Copyright Act of 1909 was omitted and replaced by reference to
"pictorial, graphic, and sculptural works," 17 U.S.C. Sec. 102(a)(5).
According to the House Report, the new category was intended to supply "as
clear a line as possible between copyrightable works of applied art and
uncopyrighted works of industrial design." H.R.Rep. No. 1476, at 55,
U.S.Code Cong. & Admin.News 1976, p. 5668. The statutory definition of
"pictorial, graphic, and sculptural works" states that "the
design of a useful article, as defined in this section, shall be considered a
pictorial, graphic, or sculptural work 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." 17 U.S.C. Sec. 101. The
legislative history added gloss on the criteria of separate identity and
independent existence in saying: (http://bulk.resource.org/courts.gov/c/F2/834/834.F2d.1142.86-6260.828.html)
On the
other hand, although the shape of an industrial product may be aesthetically
satisfying and valuable, the Committee's intention is not to offer it copyright
protection under the bill. Unless the shape of an automobile, airplane, ladies'
dress, food processor, television set, or any other industrial product contains
some element that, physically or conceptually, can be identified as separable
from the utilitarian aspects of that article, the design would not be
copyrighted under the bill. (http://bulk.resource.org/courts.gov/c/F2/834/834.F2d.1142.86-6260.828.html)
Issue: Whether the configuration of Brandir's bicycle rack can
be protected?
Held: It is
unnecessary to determine whether to the art world the RIBBON Rack properly
would be considered an example of minimalist sculpture. The result under the
copyright statute is not changed. Using the test we have adopted, it is not
enough that, to paraphrase Judge Newman, the rack may stimulate in the mind of
the reasonable observer a concept separate from the bicycle rack concept. While
the RIBBON Rack may be worthy of admiration for its aesthetic qualities alone,
it remains nonetheless the 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. Indeed, the visually
pleasing proportions and symmetricality of the rack represent design changes
made in response to functional concerns. Judging from the awards the rack has
received, it would seem in fact that Brandir has achieved with the RIBBON Rack
the highest goal of modern industrial design, that is, the harmonious fusion of
function and aesthetics. Thus there remains no artistic element of the RIBBON
Rack that can be identified as separate and "capable of existing
independently, of, the utilitarian aspects of the article." Accordingly,
we must affirm on the copyright claim. (http://bulk.resource.org/courts.gov/c/F2/834/834.F2d.1142.86-6260.828.html)
We are
reminded that the design of a product itself may function as its packaging or
protectable trade dress. See LeSportsac, Inc. v. K mart Corp., 754 F.2d 71, 75
(2d Cir.1985). The district court dismissed Brandir's claims, saying that its
analysis of the copyright issue was sufficient to dispose of the Lanham Act and
common law claims. The court stated "the design feature of the Ribbon
Racks is clearly dictated by the function to be performed, namely, holding up
bicycles. If the steam pipes were not bent into the design, but instead
remained flat, the bicycles would not stand up, they would fall down." But
as Judge Newman noted in his dissent in Carol Barnhart, 773 F.2d at 420 n. 1,
the principle of conceptual separability of functional design elements in
copyright law is different from the somewhat similar principle of functionality
as developed in trademark law. For trademark purposes, he pointed out, a design
feature "has been said to be functional if it is 'essential to the use or
purpose of the article' or 'affects the cost or quality of the article.' "
Id. (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S.
844, 850 n. 10, 102 S.Ct. 2182, 2187 n. 10, 72 L.Ed.2d 606 (1982)); see
LeSportsac, Inc. v. K mart Corp., 754 F.2d at 75-76 (trade dress of a product
is eligible for protection if it has acquired a secondary meaning and is
nonfunctional). (http://bulk.resource.org/courts.gov/c/F2/834/834.F2d.1142.86-6260.828.html)
