F Petitioners aver that paragraph 1, Article 34 of the General Provisions and
TAÑADA v. ANGARA, G.R. No. 118295. May 2, 1997; 272 SCRA
F Issue: WON the General Provisions and Basic Principles of the Agreement
on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
intrudes on the power of theSupreme Court to promulgate rules
concerning pleading, practice and procedures.
¾ Suffice it to say that the reciprocity clause more than justifies
such intrusion, if any actually exists. In the area of trade related
aspects of intellectual property rights (TRIPS, for brevity): Each
Member shall accord to the nationals of other Members treatment no
less favorable than that it accords to its own nationals with regard to
the protection of intellectual property:
¾ a WTO Member is required to provide a rule of disputable (not
the words "in the absence of proof to the contrary") presumption that a
product shown to be identical to one produced with the use of a
patented process shall be deemed to have been obtained by the
(illegal) use of the said patented process, (1) where such product
obtained by the patented product is new, or (2) where there is
"substantial likelihood “that the identical product was made with the
use of the said patented process but the owner of the patent could not
determine the exact process used in obtaining such identical product.
Hence, the "burden of proof" contemplated by Article 34 should
actually be understood as the duty of the alleged patent infringer to
overthrow such presumption. Such burden, properly understood,
actually refers to the "burden of evidence" (burden of going forward)
placed on the producer of the identical (or fake)product to show that
his product was produced without the use of the patented process. The
foregoing notwithstanding, the patent owner still has the "burden of
proof" since, regardless of the presumption provided under paragraph
1 of Article 34, such owner still has to introduce evidence of the
existence of the alleged identical product, the fact that it is "identical" to
the genuine one produced by the patented process and the fact of
"newness" of the genuine product or the fact of "substantial likelihood"
that the identical product was made by the patented process.
Moreover, it should be noted that the requirement of Article 34 to
provide a disputable presumption applies only if (1) the product
obtained by the patented process in NEW or (2) there is a substantial
likelihood that the identical product was made by the process and the
process owner has not been able through reasonable effort to
determine the process used. Where either of these two provisos does
not obtain, members shall be free to determine the appropriate method
of implementing the provisions of TRIPS within their own internal
systems and processes.
F While the Constitution indeed mandates a bias in favor of Filipino goods,
services, labor and enterprises, at the same time, it recognizes the
need for business exchange with the rest of the world on the bases of
equality and reciprocity and limits protection of Filipino enterprises only
against foreign competition and trade practices that are unfair. In other
words, the Constitution did not intend to pursue an isolationist policy. It
did not shut out foreign investments, goods and services in the
development of the Philippine economy. While the Constitution does
not encourage the unlimited entry of foreign goods, services and
investments into the country, it does not prohibit them either. In fact, it
allows an exchange on the basis of equality and reciprocity, frowning
only on foreign competition that is unfair.
F There is hardly therefore any basis for the statement that under the WTO,
local industries and enterprises will all be wiped out and that Filipinos
will be deprived of control of the economy. Quite the contrary, the
weaker situations of developing nations like the Philippines have been
taken into account; thus, there would be no basis to say that in joining
the WTO, the respondents have gravely abused their discretion. True,
they have made a bold decision to steer the ship of state into the yet
uncharted sea of economic liberalization. But such decision cannot be
set aside on the ground of grave abuse of discretion, simply because
we disagree with it or simply because we believe only in other
economic policies.
F Aside from envisioning a trade policy based on “equality and reciprocity,” the
fundamental law encourages industries that are “competitive in both
domestic and foreign markets,” thereby demonstrating a clear policy
against a sheltered domestic trade environment, but one in favor of the
gradual development of robust industries that can compete with the
best in the foreign markets. Indeed, Filipino managers and Filipino
enterprises have shown capability and tenacity to compete
internationally. And given a free trade environment, Filipino
entrepreneurs and managers in Hongkong have demonstrated the
Filipino capacity to grow and to prosper against the best offered under
a policy of laissez faire.
Basic Principles of the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS) intrudes on the power of the
Supreme Court to promulgate rules concerning pleading, practice and
procedures.xxx By and large, the arguments adduced in connection
with our disposition of the third issue -- derogation of legislative power -
will apply to this fourth issue also. Suffice it to say that the reciprocity
clause more than justifies such intrusion, if any actually
exists. Besides, Article 34 does not contain an unreasonable burden,
consistent as it is with due process and the concept of adversarial
dispute settlement inherent in our judicial system. So too, since the
Philippine is a signatory to most international conventions on patents,
trademarks and copyrights, the adjustment in legislation and rules of
procedure will not be substantial
F Hence, the “burden of proof” contemplated by Article 34 should actually be
understood as the duty of the alleged patent infringer to overthrow
such presumption. Such burden, properly understood, actually refers
to the “burden of evidence” (burden of going forward) placed on the
producer of the identical (or fake) product to show that his product was
produced without the use of the patented process. The foregoing
notwithstanding, the patent owner still has the “burden of proof” since,
regardless of the presumption provided under paragraph 1 of Article
34, such owner still has to introduce evidence of the existence of the
alleged identical product, the fact that it is “identical” to the genuine
one produced by the patented process and the fact of “newness” of the
genuine product or the fact of “substantial likelihood” that the identical
product was made by the patented process.
MIRPURI vs. COURT OF APPEALS; 318 SCRA
F Definition of Trademark: This definition has been simplified in R.A. No. 8293,
the Intellectual Property Code of the Philippines, which defines
a "trademark" as "any visible sign capable of distinguishing goods." In
Philippine jurisprudence, the function of a trademark is to point out
distinctly the origin or ownership of the goods to which it is affixed; to
secure to him, who has been instrumental in bringing into the market a
superior article of merchandise, the fruit of his industry and skill; to
assure the public that they are procuring the genuine article; to prevent
fraud and imposition; and to protect the manufacturer against
substitution and sale of an inferior and different article as his product
F THREE DISTINCT FUNCTIONS OF TRADEMARKS: Modern authorities on
trademark law view trademarks as performing three distinct
functions: (1) they indicate origin or ownership of the articles to which
they are attached; (2) theyguarantee that those articles come up to a
certain standard of quality; and (3) they advertise the articles they
symbolize.
F Today, the trademark is not merely a symbol of origin and goodwill; it is often
the most effective agent for the actual creation and protection of
goodwill. It imprints upon the public mind an anonymous and
impersonal guaranty of satisfaction, creating a desire for further
satisfaction. In other words, the mark actually sells the goods. The
mark has become the "silent salesman," the conduit through which
direct contact between the trademark owner and the consumer is
assured. It has invaded popular culture in ways never anticipated that
it has become a more convincing selling point than even the quality of
the article to which it refers
F The Convention of Paris for the Protection of Industrial Property, otherwise
known as the Paris Convention, is a multilateral treaty that seeks to
protect industrial property consisting of patents, utility models,
industrial designs, trademarks, service marks, trade names and
indications of source or appellations of origin, and at the same time
aims to repress unfair competition
F In short, foreign nationals are to be given the same treatment in each of the
member countries as that country makes available to its own citizens.
Nationals of the various member nations are thus assured of a certain
minimum of international protection of their industrial property.
F Article 6bis governs protection of well-known trademarks. Under the first
paragraph, each country of the Union bound itself to undertake to
refuse or cancel the registration, and prohibit the use of a trademark
which is a reproduction, imitation or translation, or any essential part of
which trademark constitutes a reproduction, liable to create confusion,
of a mark considered by the competent authority of the country where
protection is sought, to be well-known in the country as being already
the mark of a person entitled to the benefits of the Convention, and
used for identical or similar goods.
F Article 6bis of the Paris Convention is a self-executing provision and does not
require legislative enactment to give effect in the member country.
F The essential requirement under Article 6bis is that the trademark to be
protected must be "well-known" in the country where protection is
 sought. The power to determine whether a trademark is well-known
lies in the "competent authority of the country of registration or use."
This competent authority would be either the registering authority if it
has the power to decide this, or the courts of the country in question if
the issue comes before a court.
F Intellectual and industrial property rights cases are not simple property
cases. Trademarks deal with the psychological function of symbols
and the effect of these symbols on the public at large. Trademarks play
a significant role in communication, commerce and trade, and serve
valuable and interrelated business functions, both nationally and
internationally. For this reason, all agreements concerning industrial
property, like those on trademarks and tradenames, are intimately
connected with economic development. Industrial property encourages
investments in new ideas and inventions and stimulates creative efforts
for the satisfaction of human needs. They speed up transfer of
technology and industrialization, and thereby bring about social and
economic progress. These advantages have been acknowledged by
the Philippine government itself.
F Res judicata therefore does not apply to the instant case and
respondent Court of Appeals did not err in so ruling. IPC No. 2049
raised the issue of ownership of the trademark, the first
registration and use of the trademark in the United States and
other countries, and the international recognition and reputation
of the trademark established by extensive use and advertisement
of private respondent's products for over forty years here and
abroad. These are different from the issues of confusing similarity and
damage in IPC No. 686. The issue of prior use may have been raised
in IPC No. 686 but this claim was limited to prior use in the Philippines
only. Prior use in IPC No. 2049 stems from private respondent's claim
as originator of the word and symbol "Barbizon," as the first and
registered user of the mark attached to its products which have been
sold and advertised worldwide for a considerable number of years prior
to petitioner's first application for registration of her trademark in the
Philippines. Indeed, these are substantial allegations that raised new
issues and necessarily gave private respondent a new cause of action.
Res judicata does not apply to rights, claims or demands, although
growing out of the same subject matter, which constitute separate or
distinct causes of action and were not put in issue in the former action.
F It is also noted that the oppositions in the first and second cases are
based on different laws. The opposition in IPC No. 686 was based on
specific provisions of the Trademark Law, i.e., Section 4 (d) on
confusing similarity of trademarks and Section 8 on the requisite
damage to file an opposition to a petition for registration. The
opposition in IPC No. 2049 invoked the Paris Convention, particularly
Article 6bis thereof, E.O. No. 913 and the two Memoranda of the
Minister of Trade and Industry. This opposition also invokedArticle
189 of the Revised Penal Code which is a statute totally different from
the Trademark Law.
SASOT v. PEOPLE
F A foreign corporation not engaged and licensed to do business in the
Philippines may maintain an action for unfair competition. Unfair
completion punishable under Art. 189 of the RPC is a public crime. F
PEARL & DEAN v. SHOEMART, 409 SCRA 231 F Patentable inventions, on the other hand, refer to any technical solution of a
F NO COPYRIGHT INFRINGEMENT: Copyright, in the strict sense of the term,
is purely a statutory right. Being a mere statutory grant, the rights are
limited to what the statute confers. It may be obtained and enjoyed F
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. P & D
secured its copyright under the classification class “O” work. This
being so, petitioner’s copyright protection extended only to the
technical drawings and not to the light box itself because the latter was
not at all in the category of “prints, pictorial illustrations, advertising
copies, labels, tags and box wraps.” Stated otherwise, even as we find
that P & D indeed owned a valid copyright, the same could have
referred only to the technical drawings within the category of “pictorial
illustrations.” It could not have possibly stretched out to include the
underlying light box.
F NO PATENT INFRINGEMENT: There can be no infringement of a patent
until a patent has been issued since whatever right one has to the
invention covered by the patent arises alone from the grant of
patent. An inventor has no common law right to a monopoly of his
invention. He has the right to make use of and vend his invention, but if
he voluntarily discloses it, such as by offering it for sale, the world is
free to copy and use it with impunity. A patent, however, gives the
inventor the right to exclude all others. As a patentee, he has the
exclusive right of making, selling or using the invention. On the
assumption that petitioner’s advertising units were patentable
inventions, petitioner revealed them fully to the public by submitting the
engineering drawings thereof to the National Library.
F 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
F The patent law has a three-fold purpose: “first, patent law seeks to foster and
reward invention; second, it promotes disclosures of inventions to
stimulate further innovation and to permit the public to practice the
invention once the patent expires; third, the stringent requirements for
patent protection seek to ensure that ideas in the public domain remain
there for the free use of the public
F One who has adopted and used a trademark on his goods does not prevent
the adoption and use of the same trademark by others for products
which are of a different description.” The certificate of registration
issued by the Director of Patents can confer the exclusive right to
use its own symbol only to those goods specified in the
certificate, subject to any conditions and limitations specified in the
certificate.
F By the nature of things, there can be no unfair competition under the law on
copyrights although it is applicable to disputes over the use of
trademarks. Even a name or phrase incapable of appropriation as a
trademark or tradename may, by long and exclusive use by a business
(such that the name or phrase becomes associated with the business
or product in the mind of the purchasing public), be entitled to
protection against unfair competition.[27] In this case, there was no
evidence that P & D’s use of “Poster Ads” was distinctive or well-
known. As noted by the Court of Appeals, petitioner’s expert witnesses
himself had testified that “ ‘Poster Ads’ was too generic a name. So it
was difficult to identify it with any company, honestly speaking.”[28]
This crucial admission by its own expert witness that “Poster Ads”
could not be associated with P & D showed that, in the mind of the
public, the goods and services carrying the trademark “Poster Ads”
could not be distinguished from the goods and services of other
entities.
KHO v. COURT OF APPEALS, GR NO. 11578, MARCH 19, 2002;
379 SCRA
F Trademark, copyright and patents are different intellectual property rights that
cannot be interchanged with one another.
F A trademark is any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall
include a stamped or marked container of goods. In relation thereto, a
trade name means the name or designation identifying or
distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to literary and artistic
works which are original intellectual creations in the literary and
artistic domain protected from the moment of their creation.
problem in any field of human activity which is new, involves an
inventive step and is industrially applicable
Issue: WON the copyright and patent over the name and container of a
beauty cream product would entitle the registrant to the use and
ownership over the same to the exclusion of others.
¾ No. Petitioner has no right to support her claim for the exclusive
use of the subject trade name and its container. The name and
container of a beauty cream product are proper subjects of a
trademark inasmuch as the same falls squarely within its
definition. In order to be entitled to exclusively use the same in
the sale of the beauty cream product, the user must sufficiently
prove that she registered or used it before anybody else did. The
petitioner’s copyright and patent registration of the name and container
would not guarantee her the right to the exclusive use of the same for
the reason that they are not appropriate subjects of the said intellectual
rights. Consequently, a preliminary injunction order cannot be issued
for the reason that the petitioner has not proven that she has a clear
right over the said name and container to the exclusion of others, not
having proven that she has registered a trademark thereto or used the
same before anyone did.
 ¾ The dispositive portion of said decision held that the petitioner
does not have trademark rights on the name and container of the
beauty cream product. The said decision on the merits of the trial court
rendered the issuance of the writ of a preliminary injunction moot and
academic notwithstanding the fact that the same has been appealed in
the Court of Appeals.
F Finally, we rule that the Court of Appeals correctly denied the petitioner ’s
several motions for contempt of court. There is nothing contemptuous
about the advertisements complained of which, as regards the
proceedings in CA-G.R. SP No. 27803 merely announced in plain and
straightforward language the promulgation of the assailed Decision of
the appellate court. Moreover, pursuant to Section 4 of Rule 39 of the
Revised Rules of Civil Procedure, the said decision nullifying the
injunctive writ was immediately executory.
FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE SERVICE CO
F Copyright treats facts and factual compilations in a wholly consistent manner.
Facts, whether alone or as part of a compilation, are not original and
therefore may not be copyrighted. A factual compilation is eligible for
copyright if it features an original selection or arrangement of facts, but
the copyright is limited to the particular selection or arrangement. In no
event may copyright extend to the facts themselves.
F To qualify for copyright protection, a work must be original to the
author, which means that the work was independently created by
the author, and it possesses at least some minimal degree of
creativity. A work may be original even thought it closely resembles
other works so long as the similarity is fortuitous, not the result of
copying.
F WON the names, addresses, and phone numbers in a telephone directory
able to be copyrighted.
¾ No. Facts cannot be copyrighted, however compilations of facts
can generally be copyrighted.
¾ To qualify for copyright protection, a work must be original to the F
author, which means that the work was independently created by the
author, and it possesses at least some minimal degree of creativity. A
work may be original even thought it closely resembles other works so
long as the similarity is fortuitous, not the result of copying.
¾ Facts are not original. The first person to find and report a
particular fact has not created the fact; he has merely discovered its
existence. Facts may not be copyrighted and are part of the public
domain available to every person.
¾ Factual compilations may possess the requisite originality. The
author chooses what facts to include, in what order to place them, and
how to arrange the collected date so they may be effectively used by
readers. Thus, even a directory that contains no written expression that
could be protected, only facts, meets the constitutional minimum for
copyright protection if it features an original selection or arrangement. F
But, even though the format is original, the facts themselves do not
become original through association. The copyright on a factual
compilation is limited to formatting. The copyright does not extend to
the facts themselves.
¾ To establish copyright infringement, two elements must be
proven: ownership of a valid copyright and copying of constituent
elements of the work that are original. The first element is met in
this case because the directory contains some forward text. As to the
second element, the information contains facts, which cannot be
copyrighted. They existed before being reported and would have
continued to exist if a telephone directory had never been published.
There is no originality in the formatting, so there is no copyrightable
expression. Thus, there is no copyright infringement.
F The primary objective of copyright is not to reward the labor of authors, but
"to promote the Progress of Science and useful Arts."
Joaquin v. Drilon G.R No. 108946, 28 Jan 1999), 302 SCRA 225
F The format of a show is not a copyrightable under Section 2 of P.D. 49--- To
begin with, the format of a show is not copyrightable. Section 2 of P.D.
No. 49,[10] otherwise known as the DECREE ON INTELLECTUAL
PROPERTY, enumerates the classes of work entitled to copyright
protection, to wit: Section 2. The rights granted by this Decree shall,
from the moment of creation, subsist with respect to any of the
following classes of works:
(A) Books, including composite and cyclopedic works, manuscripts, F
directories, and gazetteers;
(B) Periodicals, including pamphlets and newspapers;
(C) Lectures, sermons, addresses, dissertations prepared for oral
delivery;
(D) Letters;
(E) Dramatic or dramatico-musical compositions; choreographic works
and entertainments in dumb shows, the acting form of which is fixed in
writing or otherwise;
(F) Musical compositions, with or without words;
(G) Works of drawing, painting, architecture, sculpture, engraving,
lithography, and other works of art; models or designs for works of art;
(H) Reproductions of a work of art;
(I) Original ornamental designs or models for articles of manufacture,
whether or not patentable, and other works of applied art;
(J) Maps, plans, sketches, and charts;
(K) Drawings or plastic works of a scientific or technical character;
(L) Photographic works and works produced by a process analogous
to photography; lantern slides;
(M) Cinematographic works and works produced by a process
analogous to cinematography or any process for making audio-visual
recordings;
(N) Computer programs;
(O) Prints, pictorial illustrations advertising copies, labels, tags, and
box wraps;
(P) Dramatizations, translations, adaptations, abridgements,
arrangements and other alterations of literary, musical or artistic works
or of works of the Philippine government as herein defined, which shall
be protected as provided in Section 8 of this Decree.
(Q) Collections of literary, scholarly, or artistic works or of works
referred to in Section 9 of this Decree which by reason of the selection
and arrangement of their contents constitute intellectual creations, the
same to be protected as such in accordance with Section 8 of this
Decree.
(R) Other literary, scholarly, scientific and artistic works.
This provision is substantially the same as §172 of the
INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES (R.A. No.
8293)
The format or mechanics of a television show is not included in the list of
protected works in §2 of P.D. No. 49. For this reason, the protection
afforded by the law cannot be extended to cover them. 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 the statute. 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. Since . . . copyright in published
works is purely a statutory creation, a copyright may be obtained only
for a work falling within the statutory enumeration or description.
Regardless of the historical viewpoint, it is authoritatively settled in the
United States that there is no copyright except that which is both
created and secured by act of Congress.
Copyright, in a strict sense, is purely a statutory right. P.D. No. 49, §2, in
enumerating what are subject to copyright, refers to finished works and
not to concepts. The copyright does not extend to an idea, procedure,
process, system, method of operation, concept, principle, or discovery,
regardless of the form in which it is described, explained, illustrated, or
embodied in such work. Thus, the new INTELLECTUAL PROPERTY
CODE OF THE PHILIPPINES provides: Sec. 175. Unprotected
Subject Matter. - Notwithstanding the provisions of Sections 172 and
173, no protection shall extend, under this law, to any idea, procedure,
system, method or operation, concept, principle, discovery or mere
data as such, even if they are expressed, explained, illustrated or
embodied in a work; news of the day and other miscellaneous facts
having the character of mere items of press information; or any official
text of a legislative, administrative or legal nature, as well as any
official translation thereof.
F The copyright does not extend to the general concept or format of its dating
game show. What then is the subject matter of petitioners’ copyright?
This Court is of the opinion that petitioner BJPI’s copyright covers
audio-visual recordings of each episode of Rhoda and Me, as falling
within the class of works mentioned in P.D. 49, §2(M), to wit:
Cinematographic works and works produced by a process analogous
to cinematography or any process for making audio-visual recordings;
The copyright does not extend to the general concept or format of its
dating game show. Accordingly, by the very nature of the subject of
petitioner BJPI’s copyright, the investigating prosecutor should have
the opportunity to compare the videotapes of the two shows.
Mere description by words of the general format of the two dating game
shows is insufficient; the presentation of the master videotape in
 evidence was indispensable to the determination of the existence of long become public property, and are therefore beyond the protection
probable cause. As aptly observed by respondent Secretary of of the Copyright Law.
Justice: 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 no similarity or dissimilarity may be found Ching vs. Salinas, GR No. 161295, June 29, 2005, 462 SCRA 241
by merely describing the general copyright/format of both dating game F The RTC had jurisdiction to delve into and resolve the issue whether the
shows. petitioner ’s utility models are copyrightable and, if so, whether he is
the owner of a copyright over the said models.
F For the RTC to determine whether the crime for infringement under R.A. No.
8293 as alleged in an application is committed, the petitioner-applicant
Santos vs. McCullough Printing Co., GR No. 19439, October 31, was burdened to prove that (a) respondents Jessie Ching and Joseph
1964, 12 SCRA 321 Yu were the owners of copyrighted material; and (b) the copyrighted
F An intellectual creation should be copyrighted within the periods provided material was being copied and distributed by the respondents. Thus,
by law, failure of which renders such creation public property. the ownership of a valid copyright is essential.
F For there to be a limited publications or prohibition, such fact must appear on F Ownership of copyrighted material is shown by proof of originality and
the face of the design. When the purpose is a limited publication, but copyrightability. By originality is meant that the material was not
the effect is a general publication, irrevocable rights thereon copied, and evidence s at least minimal creativity; that it was
become vested in the general public. Exclusive right of owner to independently created by the author and that it possesses at least
publish limited to first publication unless copyrighted.-- The author of a same minimal degree of creativity.
literary composition has a right to the first publication thereof. He has a F Copying is shown by proof of access to copyrighted material and substantial
right to determine whether it shall be published at all, and if similarity between the two works.
published, when, where, by whom, and in what form. This exclusive F It bears stressing that the focus of copyright is the usefulness of the artistic
right is confined to the first publication. Once published, it is dedicated design, and not its marketability. The central inquiry is whether the
to the public, and the author loses, the exclusive right to control article is a work of art.] Works for applied art include all original
subsequent publication by others, unless the work is placed under pictorials, graphics, and sculptural works that are intended to be or
the protection of the copyright law. have been embodied in useful article regardless of factors such as
mass production, commercial exploitation, and the potential availability
of design patent protection.
F As gleaned from the description of the models and their objectives, these
articles are useful articles which are defined as one having an intrinsic
Filipino Society of Composers v. Tan, G.R. No. L-36402, March 16, utilitarian function that is not merely to portray the appearance of the
1987, 148 SCRA 461 article or to convey information. Indeed, while works of applied art,
F Music provided by a combo in a restaurant constitutes public performance for original intellectual, literary and artistic works are copyrightable, useful
profit within the meaning of the Copyright Law. In the case at bar, it is articles and works of industrial design are not. A useful article may be
admitted that the patrons of the restaurant in question pay only for the copyrightable only if and only to the extent that such design
food and drinks and apparently not for listening to the music. As found incorporates pictorial, graphic, or sculptural features that can be
by the trial court, the music provided is for the purpose of entertaining identified separately from, and are capable of existing independently of
and amusing the customers in order to make the establishment more the utilitarian aspects of the article.
attractive and desirable. It will be noted that for the playing and singing F In this case, the petitioner’s models are not works of applied art, nor artistic
the musical compositions involved, the combo was paid as works. They are utility models, useful articles, albeit with no artistic
independent contractors by the appellant . It is therefore obvious that design or value.
the expenses entailed thereby are added to the overhead of the F A utility model is a technical solution to a problem in any field of human
restaurant which are either eventually charged in the price of the food activity which is new and industrially applicable. It may be, or may
and drinks or to the overall total of additional income produced by the relate to, a product, or process, or an improvement of any of the
bigger volume of business which the entertainment was programmed aforesaid. Essentially, a utility model refers to an invention in the
to attract. Consequently, it is beyond question that the playing and mechanical field. This is the reason why its object is sometimes
singing of the combo in defendant-appellee's restaurant described as a device or useful object.
constituted performance for profit contemplated by the Copyright F UTILITY MODEL v. INVENTION: first, the requisite of “inventive step” in a
Law. (Act 3134 amended by P.D. No. 49, as amended). patent for invention is not required; second, the maximum term of
F If the general public has made use of the object sought to be copyrighted protection is only seven years compared to a patent which is twenty
within 30 days prior to the copyright application, the law deems the years, in a patent for both reckoned from the date of the application;
object to have been donated to the public domain and can no longer and third, the provisions on utility model dispense with its substantive
be copyrighted as in the case of the songs at bar. The Supreme Court examination and prefer for a less complicated system.
has ruled that "Paragraph 33 of Patent Office Administrative Order No. F No copyright granted by law can be said to arise in favor of the petitioner
3 (as amended, dated September 18, 1947) entitled 'Rules of Practice despite the issuance of the certificates of copyright registration and the
in the Philippines Patent Office relating to the Registration of Copyright deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion.
Claims' promulgated pursuant to Republic Act 165, provides among F That the works of the petitioner may be the proper subject of a patent does
other things that an intellectual creation should be copyrighted thirty not entitle him to the issuance of a search warrant for violation of
(30) days after its publication, if made in Manila, or within the (60) days copyright laws. In Kho v. Court of Appeals[49] and Pearl & Dean
if made elsewhere, failure of which renders such creation public (Phil.), Incorporated v. Shoemart, Incorporated,[50] the Court ruled that
property." (Santos v. McCullough Printing Company, 12 SCRA 324- “these copyright and patent rights are completely distinct and separate
325 [1964]. Indeed, if the general public has made use of the object from one another, and the protection afforded by one cannot be used
sought to be copyrighted for thirty (30) days prior to the copyright interchangeably to cover items or works that exclusively pertain to the
application the law deems the object to have been donated to the others.
public domain and the same can no longer be copyrighted. F In this case, the bushing and cushion are not works of art. They are, as the
F A careful study of the records reveals that the song "Dahil Sa Iyo" which was petitioner himself admitted, utility models which may be the subject of a
registered on April 20, 1956 (Brief for Appellant, p. 10) became popular patent.
in radios, juke boxes, etc. long before registration (TSN, May 28, 1968,
pp. 3-5; 25) while the song "The Nearness Of You" registered on Manly Sportwear Manufacturing Inc.vs. Dadodette, GR No.
January 14, 1955 (Brief for Appellant, p. 10) had become popular 165306, September 20, 2005, 470 SCRA 384
twenty five (25) years prior to 1968, (the year of the hearing) or from F Where the copyrighted products do not appear to be original creations and
1943 (TSN, May 28, 1968, p. 27) and the songs "Sapagkat Ikaw Ay are not among the classes of work enumerated under Section 172 of
Akin" and "Sapagkat Kami Ay Tao Lamang" both registered on July 10, RA 8293, trial court may not be faulted for overturning its initial
1966, appear to have been known and sang by the witnesses as early assessment that there was probable cause in view of its inherent
as 1965 or three years before the hearing in 1968. The testimonies of power to issue search warrants and to quash the same. In the instant
the witnesses at the hearing of this case on this subject were case, we find that the trial court did not abuse its discretion when it
unrebutted by the appellant. (Ibid, pp. 28; 29 and 30). Under the entertained the motion to quash considering that no criminal action has
circumstances, it is clear that the musical compositions in question had yet been instituted when it was filed. The trial court also properly
 quashed the search warrant it earlier issued after finding upon
reevaluation of the evidence that no probable cause exists to justify its
issuance in the first place. As ruled by the trial court, the copyrighted
products do not appear to be original creations of MANLY and are not
among the classes of work enumerated under Section 172 of RA
8293. The trial court, thus, may not be faulted for overturning its initial
assessment that there was probable cause in view of its inherent
power to issue search warrants and to quash the same. No objection
may be validly posed to an order quashing a warrant already issued as
the court must be provided with the opportunity to correct itself of an
error unwittingly committed, or, with like effect, to allow the aggrieved
party the chance to convince the court that its ruling is erroneous.
F The order quashing a search warrant is not res judicata on the issue of
copyright infringement- the applicant for a search warrant could still file
a separate copyright infringement suit against the respondents. As
correctly observed by the Court of Appeals, the trial court’s finding that
the seized products are not copyrightable was merely preliminary as it
did not finally and permanently adjudicate on the status and character
of the seized items. MANLY could still file a separate copyright
infringement suit against the respondents because the order for the
issuance or quashal of a warrant is not res judicata. Thus, in Vlasons
Enterprises Corporation v. Court of Appeals[14] we held that: The
proceeding for the seizure of property in virtue of a search warrant
does not end with the actual taking of the property by the proper
officers and its delivery, usually constructive, to the court. The order
for the issuance of the warrant is not a final one and cannot constitute
res judicata. Such an order does not ascertain and adjudicate the
permanent status or character of the seized property. By its very
nature, it is provisional, interlocutory. It is merely the first step in the
process to determine the character and title of the property. That
determination is done in the criminal action involving the crime or
crimes in connection with which the search warrant was issued.
Hence, such a criminal action should be prosecuted, or commenced if
not yet instituted, and prosecuted. The outcome of the criminal action
will dictate the disposition of the seized property…
F Further, the copyright certificates issued in favor of MANLY constitute merely
prima facie evidence of validity and ownership. However, no
presumption of validity is created where other evidence exist that may
cast doubt on the copyright validity. Hence, where there is sufficient
proof that the copyrighted products are not original creations but are
readily available in the market under various brands, as in this case,
validity and originality will not be presumed and the trial court may
properly quash the issued warrant for lack of probable cause.
F At most, the certificates of registration and deposit issued by the
National Library and the Supreme Court Library serve merely as a
notice of recording and registration of the work but do not confer
any right or title upon the registered copyright owner or
automatically put his work under the protective mantle of the
copyright law. It is not a conclusive proof of copyright
ownership. As it is, non-registration and deposit of the work within the
prescribed period only makes the copyright owner liable to pay a fine.
UNILEVER Philippines vs. CA and Procter and Gamble, Phils Inc.,
G.R. No. 119280, (August 10, 2006), 498 SCRA 334 F respondent Chan, being undeniably the composer and author of the lyrics of
F Injunction is resorted to only when there is a pressing necessity to avoid
injurious consequences which cannot be remedied under any standard
compensation.[7] As correctly ruled by the CA, there was an extreme F
urgency to grant the preliminary injunction prayed for by P&GP
considering that TV commercials are aired for a limited period of time
only. In fact, this Court takes note of the fact that the TV commercial in
issue ― the Kite TV advertisement ― is no longer aired today, more
than 10 years after the injunction was granted on September 16, 1994.
F Anent the copyrights obtained by petitioner on the basis of the selfsame two
Sambar vs. Levi Strauss & Co./, GR No. 132604, ( March 6, 2002),
378 SCRA 364
F Did petitioner infringe on private respondents’ arcuate design?
¾ We find no reason to disturb the findings of the Court of Appeals
that Europress’ use of the arcuate design was an infringement of the F
Levi’s design.
F Must we hold petitioner solidarily liable with CVS Garments Industrial
Corporation? Both the courts below found that petitioner had a
copyright over Europress’ arcuate design and that he consented to the
use of said design by CVSGIC. We are bound by this finding,
especially in the absence of a showing that it was tainted with
arbitrariness or palpable error.[7] It must be stressed that it was
immaterial whether or not petitioner was connected with CVSGIC.
What is relevant is that petitioner had a copyright over the design and
that he allowed the use of the same by CVSGIC.
F To be entitled to copyright, the thing being copyrighted must be original,
created by the author through his own skill, labor and judgment,
without directly copying or evasively imitating the work of
another. From the foregoing discussion, it is clear that the matters
raised by petitioner in relation to the last issue are purely factual,
except the matter of nominal and temperate damages. Petitioner
claims that damages are not due private respondents and his copyright
should not be cancelled because he had not infringed on Levi’s
trademark. Both the trial court and the Court of Appeals found
there was infringement. Thus, the award of damages and
cancellation of petitioner’s copyright are appropriate. Award of
damages is clearly provided in Section 23 of the Trademark law,
while cancellation of petitioner’s copyright finds basis on the fact
that the design was a mere copy of that of private respondents’
trademark. To be entitled to copyright, the thing being copyrighted
must be original, created by the author through his own skill, labor and
judgment, without directly copying or evasively imitating the work of
another
F However, we agree with petitioner that it was error for the Court of Appeals to
affirm the award of nominal damages combined with temperate
damages by the Regional Trial Court of Makati. What respondents are
entitled to is an award for temperate damages, not nominal damages.
For although the exact amount of damage or loss can not be
determined with reasonable certainty, the fact that there was
infringement means they suffered losses for which they are entitled to
moderate damages. We find that the award of P50,000.00 as
temperate damages fair and reasonable, considering the
circumstances herein as well as the global coverage and reputation of
private respondents Levi Strauss & Company and Levi Strauss (Phil.),
Inc.
Bayanihan Music vs. BMG, Jose Mari Chan, GR No. 166337, March
7, 2005, 452 scra
F A court should, as much as possible, avoid issuing the writ which would
effectively dispose of the main case without trial.
F (1) there must be a right in esse or the existence of a right to be protected;
and (2) the act against which the injunction is to be directed is a
violation of such right,[5]cralaw the trial court threaded the correct path
in denying petitioner's prayer therefor. For, such a writ should only be
granted if a party is clearly entitled thereto.
F Of course, while a clear showing of the right to an injunctive writ is necessary
albeit its existence need not be conclusively established,[7]cralaw as
the evidence required therefor need not be conclusive or complete,
still, for an applicant, like petitioner Bayanihan, to be entitled to the writ,
he is required to show that he has the ostensible right to the final relief
prayed for in its complaint.[8]cralaw Here, the trial court did not find
ample justifications for the issuance of the writ prayed for by petitioner.
the two (2) songs, is protected by the mere fact alone that he is the
creator thereof
An examination of petitioner's verified complaint in light of the two (2)
contracts sued upon and the evidence it adduced during the hearing
on the application for preliminary injunction, yields not the existence of
the requisite right protectable by the provisional relief but rather a
lingering doubt on whether there is or there is no such right. xxx It
would thus appear that the two (2) contracts expired on October 1,
1975 and March 11, 1978, respectively, there being neither an
allegation, much less proof, that petitioner Bayanihan ever made use
of the compositions within the two-year period agreed upon by the
parties
(2) contracts, suffice it to say 'that such purported copyrights are not
presumed to subsist in accordance with Section 218[a] and [b], of the
Intellectual Property Code,[10]cralaw because respondent Chan had
put in issue the existence thereof.
It is noted that Chan revoked and terminated said contracts, along with
others, on July 30, 1997, or almost two years before petitioner
Bayanihan wrote its sort of complaint/demand letter dated December
7, 1999 regarding the recent "use/recording of the songs 'Can We Just
Stop and Talk A While' and 'Afraid for Love to Fade,'" or almost three
 (3) years before petitioner filed its complaint on August 8, 2000, therein
praying, inter alia, for injunctive relief.
Habana vs. Robles GR No. 131522, July 19, 1999, 310 SCRA 511
F We believe that respondent Robles’ act of lifting from the book of
petitionerssubstantial portions of discussions and examples, and her
failure to acknowledge the same in her book is an infringement of
petitioners’ copyrights. When is there a substantial reproduction of a
book? It does not necessarily require that the entire copyrighted work,
or even a large portion of it, be copied. If so much is taken that the
value of the original work is substantially diminished, there is an
infringement of copyright and to an injurious extent, the work is
appropriated.
F In determining the question of infringement, the amount of matter copied from
the copyrighted work is an important consideration. To constitute
infringement, it is not necessary that the whole or even a large portion
of the work shall have been copied. If so much is taken that the value
of the original is sensibly diminished, or the labors of the original author
are substantially and to an injurious extent appropriated by another,
that is sufficient in point of law to constitute piracy. The essence of
intellectual piracy should be essayed in conceptual terms in order to
underscore its gravity by an appropriate understanding
thereof. Infringement of a copyright is a trespass on a private domain
owned and occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or piracy, which is a
synonymous term in this connection, consists in the doing by any
person, without the consent of the owner of the copyright, of anything
the sole right to do which is conferred by statute on the owner of the
copyright.
F Even if two authors were of the same background in terms of teaching
experience and orientation, it is not an excuse for them to be identical
even in examples contained in their books. The respondents claim that
their similarity in style can be attributed to the fact that both of them
were exposed to the APCAS syllabus and their respective academic
experience, teaching approach and methodology are almost identical
because they were of the same background. However, we believe that
even if petitioners and respondent Robles were of the same
background in terms of teaching experience and orientation, it is not an
excuse for them to be identical even in examples contained in their
books. The similarities in examples and material contents are so
obviously present in this case. How can similar/identical examples not
be considered as a mark of copying?
F In cases of infringement, copying alone is not what is prohibited. The
copying must produce an “injurious effect”. Here, the injury
consists in that respondent Robles lifted from petitioners’ book
materials that were the result of the latter’s research work and
compilation and misrepresented them as her own. She circulated the
book DEP for commercial use and did not acknowledge petitioners as
her source.
F Hence, there is a clear case of appropriation of copyrighted work for her
benefit that respondent Robles committed. Petitioners’ work as
authors is the product of their long and assiduous research and for
another to represent it as her own is injury enough. In copyrighting
books the purpose is to give protection to the intellectual product of an
author. This is precisely what the law on copyright protected, under
Section 184.1 (b). Quotations from a published work if they are
compatible with fair use and only to the extent justified by the purpose,
including quotations from newspaper articles and periodicals in the
form of press summaries are allowed provided that the source and the
name of the author, if appearing on the work, are mentioned.
F In the case at bar, the least that respondent Robles could have done was to
acknowledge petitioners Habana et. al. as the source of the portions of
DEP. The final product of an author’s toil is her book. To allow
another to copy the book without appropriate acknowledgment is
injury enough.
Microsoft Corp.vs. Maxicorp Inc.,GR No. 140946, Sept. 13, 2004
F WHETHER THE PETITION RAISES QUESTIONS OF LAW; Indeed, this
case falls under one of the exceptions because the findings of the
Court of Appeals conflict with the findings of the RTC.[16] Since F
petitioners properly raised the conflicting findings of the lower courts, it
is proper for this Court to resolve such contradiction.
F WHETHER PETITIONERS HAVE LEGAL PERSONALITY TO FILE THE
PETITION: We ruled in Columbia Pictures Entertainment, Inc. v. Court
of Appeals[18] that the petitioner-complainant in a petition for review
under Rule 45 could argue its case before this Court in lieu of the
Solicitor General if there is grave error committed by the lower court or
lack of due process. This avoids a situation where a complainant who
actively participated in the prosecution of a case would suddenly find
itself powerless to pursue a remedy due to circumstances beyond its
control. The circumstances in Columbia Pictures Entertainment are
sufficiently similar to the present case to warrant the application of this
doctrine.
F WHETHER THERE WAS PROBABLE CAUSE TO ISSUE THE SEARCH
WARRANTS: The Court of Appeals based its reversal on two factual
findings of the RTC. First, the fact that the sales receipt presented by
NBI Agent Samiano as proof that he bought counterfeit goods from
Maxicorp was in the name of a certain “Joel Diaz.” Second, the fact
that petitioners’ other witness, John Benedict Sacriz, admitted that he
did not buy counterfeit goods from Maxicorp. We rule that the Court of
Appeals erred in reversing the RTC’s findings.
F The offense charged against Maxicorp is copyright infringement under
Section 29 of PD 49 and unfair competition under Article 189 of the
RPC. To support these charges, petitioners presented the testimonies
of NBI Agent Samiano, computer technician Pante, and Sacriz, a
civilian. The offenses that petitioners charged Maxicorp contemplate
several overt acts. The sale of counterfeit products is but one of these
acts. Both NBI Agent Samiano and Sacriz related to the RTC how they
personally saw Maxicorp commit acts of infringement and unfair
competition.
F During the preliminary examination, the RTC subjected the testimonies of the
witnesses to the requisite examination. NBI Agent Samiano testified
that he saw Maxicorp display and offer for sale counterfeit software in
its premises. He also saw how the counterfeit software were produced
and packaged within Maxicorp’s premises. NBI Agent Samiano
categorically stated that he was certain the products were counterfeit
because Maxicorp sold them to its customers without giving the
accompanying ownership manuals, license agreements and
certificates of authenticity.
F Sacriz testified that during his visits to Maxicorp, he witnessed several
instances when Maxicorp installed petitioners’ software into computers
it had assembled. Sacriz also testified that he saw the sale of
petitioners’ software within Maxicorp’s premises. Petitioners never
authorized Maxicorp to install or sell their software.
F The testimonies of these two witnesses, coupled with the object and
documentary evidence they presented, are sufficient to establish the
existence of probable cause. From what they have witnessed, there is
reason to believe that Maxicorp engaged in copyright infringement and
unfair competition to the prejudice of petitioners. Both NBI Agent
Samiano and Sacriz were clear and insistent that the counterfeit
software were not only displayed and sold within Maxicorp’s premises,
they were also produced, packaged and in some cases, installed there.
F For purposes of determining probable cause, the sales receipt is not the only
proof that the sale of petitioners’ software occurred. During the
search warrant application proceedings, NBI Agent Samiano
presented to the judge the computer unit that he purchased from
Maxicorp, in which computer unit Maxicorp had pre-installed
petitioners’ software.[27] Sacriz, who was present when NBI
Agent Samiano purchased the computer unit, affirmed that NBI
Agent Samiano purchased the computer unit.[28] Pante, the
computer technician, demonstrated to the judge the presence of
petitioners’ software on the same computer unit.[29] There was a
comparison between petitioners’ genuine software and
Maxicorp’s software pre-installed in the computer unit that NBI
Agent Sambiano purchased.[30] Even if we disregard the sales
receipt issued in the name of “Joel Diaz,” which petitioners explained
was the alias NBI Agent Samiano used in the operation, there still
remains more than sufficient evidence to establish probable cause for
the issuance of the search warrants.
F The fact that Sacriz did not actually purchase counterfeit software from
Maxicorp does not eliminate the existence of probable cause.
Copyright infringement and unfair competition are not limited to the act
of selling counterfeit goods. They cover a whole range of acts, from
copying, assembling, packaging to marketing, including the mere
offering for sale of the counterfeit goods. The clear and firm
testimonies of petitioners’ witnesses on such other acts stand
untarnished
WHETHER THE SEARCH WARRANTS ARE “GENERAL WARRANTS.”:
However, we find paragraph (c) of the search warrants lacking in
particularity. Paragraph (c) states: c) Sundry items such as labels,
boxes, prints, packages, wrappers, receptacles, advertisements and
 other paraphernalia bearing the copyrights and/or trademarks owned
by MICROSOFT CORPORATION;
F The scope of this description is all-embracing since it covers property used
for personal or other purposes not related to copyright infringement or
unfair competition. Moreover, the description covers property that
Maxicorp may have bought legitimately from Microsoft or its licensed
distributors. Paragraph (c) simply calls for the seizure of all items
bearing the Microsoft logo, whether legitimately possessed or not.
Neither does it limit the seizure to products used in copyright
infringement or unfair competition.
F All articles seized under paragraph (c) of the search warrants, not falling
under paragraphs a, b, d, e or f, are ordered returned to Maxicorp, Inc.
immediately.
Joaquin v drillon
302 SCRA 225 – Mercantile Law – Intellectual Property – Law on
Copyright – Game Show – Ideas and Concepts Not Covered by
Copyright – Presentation of the Master Tape
BJ Productions Inc. (BJPI) was the holder of copyright over the
show Rhoda and Me. It holds rights over the show’s format and style of
presentation. In 1991, BJPI’s president Francisco Joaquin saw on TV
– RPN 9’s show It’s a Date, a show which is basically the same
as Rhoda and Me. He eventually sued Gabriel Zosa, the manager of
the show It’s a Date. The investigating prosecutor found probable
cause against Zosa. Zosa later sought a review of the prosecutor’s
resolution before the Secretary of Justice (Franklin Drilon). Drilon
reversed the findings of the fiscal and directed him to dismiss the case
against Zosa.
ISSUE: Whether or not the order of Drilon finding no probable cause is
valid.
HELD: Yes. The essence of copyright infringement is the copying, in
whole or in part, of copyrightable materials as defined and enumerated
in Section 2 of PD. No. 49 (Copyright Law). Apart from the manner in
which it is actually expressed, however, the idea of a dating game
show is a non-copyrightable material. Ideas, concepts, formats, or
schemes in their abstract form clearly do not fall within the class
of works or materials susceptible of copyright registration as
provided in PD. No. 49. What is covered by BJPI’s copyright is the
specific episodes of the show Rhoda and Me.
Further, BJPI should have presented the master videotape of the show
in order to show the linkage between the copyright show (Rhoda
and Me) and the infringing show (It’s a Date). This is based on the
ruling in 20th Century Fox vs CA (though this has been qualified by
Columbia Pictures vs CA, this is still good law). Though BJPI did
provide a lot of written evidence and description to show the linkage
between the shows, the same were not enough. 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 no
similarity or dissimilarity may be found by merely describing the
general copyright/format of both dating game shows.
Xxxxxxxxxxxxxxxxxxxxxxxx
CHING V. SALINAS, SR. (G.R. NO. 161295)
Facts:
Petitioner Ching is a maker and manufacturer of a utility model, Leaf
Spring Eye Bushing for Automobile, for which he holds certificates of
copyright registration. Petitioner’s request to the NBI to apprehend and
prosecute illegal manufacturers of his work led to the issuance of
search warrants against respondent Salinas, alleged to be reproducing
and distributing said models in violation of the IP Code. Respondent
moved to quash the warrants on the ground that petitioner’s work is not
artistic in nature and is a proper subject of a patent, not copyright.
Petitioner insists that the IP Code protects a work from the moment of
its creation regardless of its nature or purpose. The trial court quashed
the warrants. Petitioner argues that the copyright certificates over the
model are prima facie evidence of its validity. CA affirmed the trial
court’s decision.
Issues:
(1) Whether or not petitioner’s model is an artistic work subject to
copyright protection.
(2) Whether or not petitioner is entitled to copyright protection on the
basis of the certificates of registration issued to it.
Ruling:
(1) NO. As gleaned from the specifications appended to the application
for a copyright certificate filed by the petitioner, the said Leaf Spring
Eye Bushing for Automobile and Vehicle Bearing Cushion are merely
utility models. As gleaned from the description of the models and their
objectives, these articles are useful articles which are defined as one
having an intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey information. Plainly, these are
not literary or artistic works. They are not intellectual creations in the
literary and artistic domain, or works of applied art. They are certainly
not ornamental designs or one having decorative quality or value.
Indeed, while works of applied art, original intellectual, literary and
artistic works are copyrightable, useful articles and works of industrial
design are not. 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. In this
case, the bushing and cushion are not works of art. They are, as the
petitioner himself admitted, utility models which may be the subject of a
patent.
(2) NO. 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 and Pearl &
Dean (Phil.), Incorporated v. Shoemart, Incorporated, 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.
Ownership of copyrighted material is shown by proof of originality and
copyrightability. 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 the certificate.
Xxxx
[G.R. No. 161295. June 29, 2005]
JESSIE G. CHING, petitioner, vs. WILLIAM M. SALINAS, SR.,
WILLIAM M. SALINAS, JR., JOSEPHINE L. SALINAS, JENNIFER Y.
SALINAS, ALONTO SOLAIMAN SALLE, JOHN ERIC I. SALINAS,
NOEL M. YABUT (Board of Directors and Officers of WILAWARE
PRODUCT CORPORATION), respondents.
FACTS
- Jessie G. Ching is the owner and general manager of Jeshicris
Manufacturing Co., the maker and manufacturer of a Utility
Model, described as Leaf Spring Eye Bushing for Automobile
made up of plastic.
- On September 4, 2001, Ching and Joseph Yu were issued by the
National Library Certificates of Copyright Registration and
Deposit of the said work described therein as Leaf Spring Eye
Bushing for Automobile.[4]
- On September 20, 2001, Ching requested the National Bureau of
Investigation (NBI) for police/investigative assistance for the
apprehension and prosecution of illegal manufacturers,
producers and/or distributors of the works.[5]
- After due investigation, the NBI filed applications for search
warrants in the RTC of Manila against William Salinas, Sr. and
the officers and members of the Board of Directors of Wilaware
Product Corporation. It was alleged that the respondents therein
reproduced and distributed the said models penalized under
Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293.
- RTC granted the application and issued Search Warrants.
- Respondents filed a motion to quash on the ground that the
subject matter are not artistic in nature; they are automotive parts
and pertain to technology.
- RTC granted the motion and quashed the warrants on the
ground of no probable cause.
- Petitioner filed MR, denied. Filed Petition for Certiorari on the
ground that RTC has no jurisdiction to delve into and resolve the
validity of the copyright certificates issued to him covered by the
Intellectual Property Code.
ISSUE
(1) Whether or not the RTC has jurisdiction to determine validity.
(2) Whether or not the utility models can be considered literary and
artistic works.
(3) Whether or not Ching’s copyright registration is valid.
RULING
(1) Yes. The RTC had jurisdiction to delve into and resolve the issue
whether the petitioners utility models are copyrightable and, if so,
whether he is the owner of a copyright over the said models. It bears
stressing that upon the filing of the application for search warrant, the
RTC was duty-bound to determine whether probable cause existed.
For the RTC to determine whether the crime for infringement under
R.A. No. 8293 as alleged in an application is committed, the petitioner-
applicant was burdened to prove that (a) respondents Jessie Ching
and Joseph Yu were the owners of copyrighted material; and (b) the
copyrighted material was being copied and distributed by the
respondents. Thus, the ownership of a valid copyright is essential.
(2) No. But, as gleaned from the specifications appended to the
application for a copyright certificate filed by the petitioner, the said
Leaf Spring Eye Bushing for Automobile is merely a utility model.
Plainly, these are not literary or artistic works.
It bears stressing that the focus of copyright is the usefulness of
the artistic design, and its marketability. The central inquiry is whether
the article is a work of art. Works for applied art include all original
pictorials, graphics, and sculptural works that are intended to be or
have been embodied in useful article regardless of factors such as
mass production, commercial exploitation, and the potential availability
of design patent protection.
As gleaned from the description of the models and their
objectives, these articles are useful articles which are defined as one
having an intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey information. Indeed, while works
of applied art, original intellectual, literary and artistic works are
copyrightable, useful articles and works of industrial design are not. 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.
We agree with the contention of the petitioner (citing Section
171.10 of R.A. No. 8293), that the authors 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.[36] Functional
components of useful articles, no matter how artistically designed,
have generally been denied copyright protection unless they are
separable from the useful article.
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 value.
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.[40] 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.[41] 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[42] in a patent
for invention is not required; second, the maximum term of protection is
only seven years[43] compared to a patent which is twenty
years,[44] both reckoned from the date of the application; and third, the
provisions on utility model dispense with its substantive
examination[45] and prefer for a less complicated system.
Being automotive parts they are not ornamental nor artistic
creations with incidental utilitarian functions or works incorporated in a
useful article.
(3) No. 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[47] and Pearl
& Dean (Phil.), Incorporated v. Shoemart, Incorporated,[48] 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.
That the works of the petitioner may be the proper subject of a
patent does not entitle him to the issuance of a search warrant for
violation of copyright laws. In Kho v. Court of Appeals[49] and Pearl &
Dean (Phil.), Incorporated v. Shoemart, Incorporated,[50] the Court
ruled that these copyright and patent rights are completely distinct and
separate from one another, and the protection afforded by one cannot
be used interchangeably to cover items or works
that exclusively pertain to the others. The Court expounded further,
thus:
Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one another. A
trademark is any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall
include a stamped or marked container of goods. In relation thereto,
a trade name means the name or designation identifying or
distinguishing an enterprise. Meanwhile, the scope of a copyright is
confined to literary and artistic works which are original intellectual
creations in the literary and artistic domain protected from the
moment of their creation. Patentable inventions, on the other hand,
refer to any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is industrially
applicable.
IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby
DENIED for lack of merit. The assailed Decision and Resolution of the
Court of Appeals in CA-G.R. SP No. 70411 are AFFIRMED. Search
Warrant Nos. 01-2401 and 01-2402 issued on October 15, 2001 are
ANNULLED AND SET ASIDE. Costs against the petitioner.
SO ORDERED.
Xxx
3. [G.R. No. 76193. November 9, 1989.] UNITED FEATURE
SYNDICATE, INC., petitioner, vs. MUNSINGWEAR CREATION
MANUFACTURING COMPANY, respondent.
Petitioner¶s claim:
Petitioner is asking for the cancellation of the registration of trademark
CHARLIE BROWN(Registration No. SR. 4224) in the name of
respondent MUNSINGWEAR, alleging that petitioner is damaged by
the registration of the trademark CHARLIE BROWN of T-Shirts under
Class 25with the Registration No. SR-4224 dated September 12, 1979
in the name of Munsingwear Creation Manufacturing Co., Inc., on the
following grounds: (1) that respondent was not entitledto the
registration of the mark CHARLIE BROWN, & DEVICE at the time of
application for registration; (2) that CHARLIE BROWN is a character
creation or a pictorial illustration, thecopyright to which is exclusively
owned worldwide by the petitioner; (3) that as the owner of thepictorial
illustration CHARLIE BROWN, petitioner has since 1950 and
continuously up to thepresent, used and reproduced the same to the
exclusion of others; (4) that the respondent-registrant has no bona fide
use of the trademark in commerce in the Philippines prior to
itsapplication for registration.
Respondent¶s claim:
-It uses, the trademark "CHARLIE BROWN"&"DEVICE" on children's
wear such as T-shirts,undershirts, sweaters, brief and sandos, in class
25; whereas "CHARLIE BROWN" is used onlyby petitioner as
character, in a pictorial illustration used in a comic strip appearing
innewspapers and magazines. It has no trademark significance and
therefore respondent-registrant's use of "CHARLIE
BROWN"&"DEVICE" is not in conflict with the petitioner's use of
"CHARLIE BROWN"-Relied on the ruling on October 2, 1984 in which
the Director of the Philippine Patent Officerendered a decision in this
case holding that a copyright registration like that of the name
andlikeness of CHARLIE BROWN may not provide a cause of action
for the cancellation of atrademark registration.
Issue:
WHETHER THE RESPONDENT COURT OF APPEALS COMMITTED
GRAVE ABUSEOF DISCRETION AMOUNTING TO EXCESS OF
JURISDICTION WHEN BY DISMISSINGTHE APPEAL TO IT FROM
THE DECISION OF THE DIRECTOR OF PATENTS, ITKNOWINGLY
DISREGARDED ITS OWN DECISION IN AC-GR. SP. NO. 0342,
WHICH WAS AFFIRMED BY THIS HONORABLE SUPREME COURT
TO THE EFFECT THAT ACOPYRIGHTED CHARACTER MAY NOT
BE APPROPRIATED AS A TRADEMARK BY ANOTHER UNDER
PRESIDENTIAL DECREE NO. 49.
S.C.Ruling:
The petitioner is impressed with merit.Since the name "CHARLIE
BROWN" and its pictorial representation were covered by acopyright
registration way back in 1950 the same are entitled to protection under
PD No. 49,otherwise known as the "Decree on Intellectual Property".
Aside from its copyright registration, petitioner is also the owner of
several trademarkregistrations and application for the name and
likeness of "CHARLIE BROWN" which is the dulyregistered trademark
and copyright of petitioner United Feature Syndicate Inc. as early as
1957and additionally also as TV SPECIALS featuring the "PEANUTS"
characters "CHARLIEBROWN´.It is undeniable from the records that
petitioner is the actual owner of said trademark due to itsprior
registration with the Patent's Office.
Feist Publications v. Rural Telephone - 499 US 340 (1991)
Brief Fact Summary. A publishing company used information from a
telephone directory to publish its own directory.
Synopsis of Rule of Law. To qualify for copyright protection, a work
must be original to the author, which means that the work was
independently created by the author, and it possesses at least some
minimal degree of creativity. A work may be original even thought it
closely resembles other works so long as the similarity is fortuitous, not
the result of copying.
Facts. Rural Telephone Service Company, Inc. (Plaintiff) provides
telephone service to several communities. Due to a state regulation, it
must issue an annual telephone directory, so it published a directory
consisting of white and yellow pages. The yellow pages have
advertisements that generate revenue. Feist Publications, Inc.
(Defendant) is a publishing company whose directory covers a larger
range than a typical directory. Defendant distributes their telephone
books free of charge, and they also generate revenue through the
advertising in the yellow pages. Plaintiff refused to give a license to
Defendant for the phone numbers in the area, so Defendant used them
without Plaintiff’s consent. Rural sued for copyright infringement.
Issue. Are the names, addresses, and phone numbers in a telephone
directory able to be copyrighted?
Held. No.
Facts cannot be copyrighted, however compilations of facts can
generally be copyrighted.
To qualify for copyright protection, a work must be original to the
author, which means that the work was independently created by the
author, and it possesses at least some minimal degree of creativity. A
work may be original even thought it closely resembles other works so
long as the similarity is fortuitous, not the result of copying.
Facts are not original. The first person to find and report a particular
fact has not created the fact; he has merely discovered its existence.
Facts may not be copyrighted and are part of the public domain
available to every person.
Factual compilations may possess the requisite originality. The author
chooses what facts to include, in what order to place them, and how to
arrange the collected date so they may be effectively used by readers.
Thus, even a directory that contains no written expression that could
be protected, only facts, meets the constitutional minimum for
copyright protection if it features an original selection or arrangement.
But, even though the format is original, the facts themselves do not
become original through association. The copyright on a factual
compilation is limited to formatting. The copyright does not extend to
the facts themselves.
To establish copyright infringement, two elements must be proven:
ownership of a valid copyright and copying of constituent elements of
the work that are original. The first element is met in this case because
the directory contains some forward text. As to the second element,
the information contains facts, which cannot be copyrighted. They
existed before being reported and would have continued to exist if a
telephone directory had never been published. There is no originality in
the formatting, so there is no copyrightable expression. Thus, there is
no copyright infringement.
Discussion. Facts cannot be subject to copyright laws; otherwise
there would be no spreading of information or learning. Subjecting
facts to copyright laws would mean that any time a person used a fact
found in a book, be it in a school paper, newspaper, or another book,
that person would be guilty of piracy
On June 10, 2003 the trial court granted the motion to quash and
declared the search warrant issued as null and void. MANLY filed a
motion for reconsideration on August 11, 2003, but was later on denied
for lack of merit.

Manly Sportswear Manufacturing Inc. v Dadodette Enterprises

and/or Hermes Sports Center GR No. 165306, September 20, 2005 After denial of the motion for reconsideration, MANLY filed a petition
Facts: for review of certiorari in the Court of Appeals but was later on denied.

The NBI secured a search warrant on March 14, 2003 from the RTC to
act upon the information that respondents were in possession of goods
copyright of which belongs to the petitioner. Finding reasonable ISSUE/S: W/N the copyrighted products of MANLY are original
grounds in violation of Section 172 and 217 of RA 8293 a search creations subject to the protection of RA 8293.
warrant was issued. Respondents move to quash and annul the search
warrant contending it is invalid and the requisites for its issuance are
not complied with. They insist that the sporting goods manufactured
and registered in the name MANLY is just ordinary and common and RULING:
not among the classes protected under RA 8293. The court granted
the motion to quash declaring the search warrant null and void
No. The copyright certificates issued in favor of MANLY constitute a
because there were certificates of registrations issued earlier than
prima facie evidence of validity and ownership. However, presumption
MANLY for the same sporting goods under various brands thereby
of validity is not created when a sufficient proof or evidence exist that
negating the fact that their products are copyrighted and original
may cast a doubt on the copyright validity. In the case at bar, validity
creations. Motion for reconsideration was denied by the appellate court
and originality will not be presumed since the copyrighted products of
sustaining the lower court’s decision thus this instant petition for review
MANLY are not original creations considering that these products are
for certiorari.
readily available in the market under various brands. Moreover, no
copyright accrues in favor of MANLY despite the issuance of the
copyright certificate this purely serves as a notice of recording and
registration of the work and is not a conclusive proof of copyright
ssue: ownership as provided in Sec. 2, Rule 7 of the Copyrights Safeguards
and Regulations.
Whether or not the certificate of registration in favor of MANLY
sustains the action against the respondents.
At most, the certificates of registration and deposit issued by the
Ruling:
National Library and the Supreme Court Library serve merely as a
notice of recording and registration of the work but do not confer any
right or title upon the registered copyright owner or automatically put
The court ruled that the petitioner is not protected by the copyright law
his work under the protective mantle of the copyright law. It is not a
despite the issuance of the copyright certificate of registration as it
conclusive proof of copyright ownership. As it is, non-registration and
merely gives prima facie evidence of the validity and ownership.
deposit of the work within the prescribed period only makes the
Therefore if the there are sufficient evidence that the copyrighted
copyright owner liable to pay a fine.
products are not original creations and are readily available in the
market under various brands, validity and originality will not be
presumed therefore the trial court has the right to quash the issued Xxxxxxxxxxxxxx
warrant for lack of probable cause. Moreover no copyright accrues to
the petitioner since Sec. 2, Rule 7 of the Copyrights Safeguards and
Regulations provides that the registration and deposit of work is purely
for recording the date of registration and is not conclusive as to the
copyright ownership. It is not a proof of copyright ownership and non-
VENANCIO SAMBAR, doing business
payment for registration within the prescribed period shall only make under the name and style of CVS
the copyright owner liable to pay a fine.
Garment Enterprises vs. LEVI
Xxx
STRAUSS & CO., LEVI STRAUSS
MANLY SPORTWEAR v. DADOTTE ENTERPRISES
MANLY SPORTWEAR v. DADOTTE ENTERPRISES
(PHIL.), INC.
G.R. No. 165306
FACTS:
DATE September 20, 2005.

PONENTE YNARES-SANTIAGO; J. Private respondents alleged in their

complaint that Levi Strauss and Co.
FACTS:
(LS&Co.), an internationally known
clothing manufacturer, own the arcuate
On March 17, 2003, RTC- Quezon City, Branch 83 issued a search
warrant against Dadodette Enterprises and/or Hermes Sports Center design trademark which was registered
after finding reasonable grounds that respondents violated Sections
172 and 217 of Republic Act (RA) No. 8293. Respondents then moved
under US Trademark Registration No.
to quash and annul the search warrant claiming that the sporting goods 404,248 on November 16, 1943. That
manufactured by and/or registered in the name MANLY are ordinary
hence, not among the classes protected under Sec. 172 of RA 8293. sometime in 1987, CVSGIC and
Venancio Sambar, without the consent
and authority of private respondents and
in infringement and unfair competition,
sold and advertised, and despite
demands to cease and desist, continued
to manufacture, sell and advertise
denim, pants under the brand name
“Europress” with back pockets bearing a
design similar to the arcuate trademark
of private respondents, thereby causing
confusion on the buying public,
prejudiced to private respondent’s
goodwill and property right.
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 directly
copying or evasively imitating the work
of another.
Both the trail court and the Court of
Appeals found there was infringement.

Sambar filed a separate answer. He

admitted that copyright Registration No.
1-1998 was issued to him, but he denied
using it. He said he did not authorize
anyone to use the copyrighted design.

Trial court issued a writ of preliminary

injunction enjoining CVSGIC and
petitioner from manufacturing,
advertising and selling pants with the
arcuate design on their back pockets.

Private respondents moved for

reconsideration praying for the
cancellation of petitioner’s copyright
registration.

Trial court granted the prayer.

Petitioner appealed to the Court of

Appeals which affirmed the ruling of the
trial court.

ISSUE:

Whether petitioner infringe on private

respondent’s arcuate design.

HELD: