Infringement

a. Definition
b. Remedies
Sections 221-224, IPC
Sec. 3, IPC
Sec. 10.2, IPC
Sections. 216-220, IPC
Sections 225-226, IPC
Sec. 231, IPC
Rule on Search and Seizure in Civil Actions for Infringement of
Intellectual Property Rights (A.M. No. 02-1-06-SC)
Rules of Procedure for Intellectual Property Rights Cases (A.M.
No. 10-3-10-SC) issued on 3 October 2011
20th Century Fox v. CA, 164 SCRA 655 (1988)
20th Century Fox v CA 164 SCRA 655 (1988)

F: Petitioner sought the help of the NBI in connection with its anti-piracy campaign alleging
that some videotape outlets are engaged in marketing copyrighted films in violation of PD 449
or Decree on the Protection of Intellectual Property. A search warrant was issued to the NBI
which was later withdrawn by the court upon motion to lift search warrant due to lack of
probable cause which was affirmed by the appellate court.

I: WON the court erred in lifting the search warrant due to lack of probable cause.

R: Article 3, section 2 of the Constitution provides that no search warrant shall be issued
without probable cause.

PROBABLE CAUSE is defined as a valid search as such facts and circumstances which
would lead a reasonably discreet and prudent man to believe that an offense has been
committed and that the objects sought in connection with the offense are in the place sought
to be searched. The constitutional provisions demand no less than personal knowledge by
the complainant or his witnesses of the facts upon which the issuance of the search warrant
may be justified to convince the judge, not the individual making the affidavit and seeking the
issuance of the search warrant.In the case at bar, the issuance of the warrant was due to the
misrepresentation of the NBI that copyright infringements were being committed. There was
no probable cause since the agents have no personal knowledge of such fact. Court ordered
that the master tapes be presented from which the copyrighted films were allegedly copied for
the validity of the issuance of the search warrant since the court could not afford to make any
presumption that duplicates were taken from the master copy of the petitioner

20th Century Fox Film v. Court of Appeals, G.R. Nos. 76649-51, August 19, 1988

DECISION
(3rd Division)

GUTIERREZ, JR., J.:

I. THE FACTS

Petitioner 20th Century Fox Film Corporation sought the assistance of the NBI in
conducting searches and seizures in connection with the NBIs anti-film piracy campaign.
Petitioner alleged that certain videotape outlets all over Metro Manila are engaged in the
unauthorized sale and renting out of copyrighted films in violation of PD No. 49 (the old
Intellectual Property Law).

The NBI conducted surveillance and investigation of the outlets pinpointed by the
petitioner and subsequently filed three (3) applications for search warrants against the video
outlets owned by the private respondents. The lower court issued the desired search
warrants. The NBI, accompanied by the petitioner's agents, raided the video outlets and
seized the items described in the three warrants.

Private respondents later filed a motion to lift the search warrants and release the
seized properties, which was granted by the lower court. Petitioners motion for
reconsideration was denied by the lower court. The CA affirmed the trial court.

II. THE ISSUE

Did the judge properly lift the search warrants he issued earlier?

III. THE RULING

[The Court DISMISSED the petition and AFFIRMED the questioned decision and
resolution of the CA.]

YES, the judge properly lifted the search warrants he issued earlier.

The lower court lifted the three (3) questioned search warrants in the absence of
probable cause that the private respondents violated P.D. 49. NBI agents who acted as
witnesses during the application for search warrant did not have personal knowledge of the
subject matter of their testimony, which was the alleged commission of the offense of piracy
by the private respondents. Only the petitioners counsel who was also a witness during the
application stated that he had personal knowledge that the confiscated tapes owned by the
private respondents were pirated tapes taken from master tapes belonging to the petitioner.
The lower court lifted the warrants, declaring that the testimony of petitioners counsel did not
have much credence because the master tapes of the allegedly pirated tapes were not shown
to the court during the application.

The presentation of the master tapes of the copyrighted films, from which the pirated
films were allegedly copied, was necessary for the validity of search warrants against those
who have in their possession the pirated films. The petitioner's argument to the effect that the
presentation of the master tapes at the time of application may not be necessary as these
would be merely evidentiary in nature and not determinative of whether or not a probable
cause exists to justify the issuance of the search warrants is not meritorious. The court cannot
presume that duplicate or copied tapes were necessarily reproduced from master tapes that it
owns.

The essence of a copyright infringement is the similarity or at least substantial

similarity of the purported pirated works to the copyrighted work. Hence, the applicant must
present to the court the copyrighted films to compare them with the purchased evidence of
the video tapes allegedly pirated to determine whether the latter is an unauthorized
reproduction of the former. This linkage of the copyrighted films to the pirated films must be
established to satisfy the requirements of probable cause. Mere allegations as to the
existence of the copyrighted films cannot serve as basis for the issuance of a search warrant.

Columbia Pictures, Inc. v. Court of Appeals, 237 SCRA 367

(1994)
COLUMBIA PICTURES INC. v CA [237 SCRA 367 (1994)]
Nature: Petitions for review on certiorari of the decision of the CA.
Ponente: J. Vitug
Facts:
07 April 1998: NBI filed with the RTC of Pasig 3 applications for SW against
private respondent (Tube Video Enterprises Edward C. Cham; Blooming
Rose Tape Center Ma. Jajorie T. Uy; Video Channel Lydia Nabong)
charging them with violations of Sec. 56 of PD 49 (Decree on the Protection
of Intellectual Property) as amended by PD 1988.
RTC Judge Austria consolidated the 3 applications and conducted a joint
hearing where she made a personal examination of the applicant (NBI
Agent Reyes) and his witnesses.
 Finding just and probable cause, Judge Austria issued the search warrants.
Private Respondents filed their Motion to Quash the SW citing as grounds
that there was no probable cause; the films in question are not protected
by PD 1988 in that they were never registered in the National Library as a
condition precedent to the availment of the protection; the Motion Picture
Association of America have not proven nor established their ownership
over the films; etc.
Judge Austria reversed her former stand initially finding probable cause for
the issuance of the search warrants and ordered their quashal:
o Private complainants uncertain of their ownership over the titles;
o Complainants did not comply with the requirement that master
tapes should be presented during the application for search
warrants;
o Complainants failed to comply with the deposit and registration
requirements of PD 49 as amended by PD 1988.
Judge Austria also ordered the return of the items seized by virtue of the
warrants.
CA affirmed the quashal of the SWs.

Issue: WON the SWs were issued with probable cause. NO

Ratio:
BASIC REQUIREMENT for the validity of search warrants (in cases of this nature) is
the presentation of the master tapes of the copyrighted films from which
the pirated films are supposed to have been copied (20th Century Fox Film
Corp. vs. CA, 164 SCRA 655).

The essence of a copyright infringement is the similarity or at least substantial

similarity of the purported pirated works to the copyrighted work. Hence, the
applicant must present to the court the copyrighted films to compare them with
the purchased evidence of the video tapes allegedly pirated to determine whether
the latter is an unauthorized reproduction of the former. This linkage of the
copyrighted films to the pirated films must be established to satisfy the
requirements of probable cause. Mere allegations as to the existence of the
copyrighted films cannot serve as basis for the issuance of a search warrant.

According to the CA, in which the SC concurs:

It is not correct to say that "the basic fact" to be proven to establish

probable cause in the instant cases is not the "unauthorized
transfer" of a motion picture that has been recorded but the "sale,
lease, or distribution of pirated video tapes of copyrighted films."

In applying for the search warrants the NBI charged violation of the
entire provisions of Section 56 of P.D. No. 49 as amended by P.D.No.
1988. This included not only the sale, lease or distribution of pirated
tapes but also the transfer or causing to be transferred of any
sound recording or motion picture or other audio visual work.

But even assuming, as appellants argue, that only the sale, lease,
or distribution of pirated video tapes is involved, the fact remains
that there is need to establish probable cause that the tapes being
sold, leased or distributed are pirated tapes, hence the issue
reverts back to the question of whether there was unauthorized
 transfer, directly or indirectly, of a sound recording or motion
picture or other audio visual work that has been recorded

Petitions denied

Columbia Pictures v. Court of Appeals, 261 SCRA 144 (1996)

Columbia Pictures v CA 261 SCRA 144 (1996)

F: Acting upon a formal complaint by the petitioner on violation of PD 449, NBI agents
surveillance different video establishments in Metro Manila including the private respondent. A
search warrant was secured with affidavits and depositions of the NBI with 2 witnesses.
Search and seizure of copyrighted materials were taken by the NBI and a motion to lift search
warrant was filed and was denied by the court. On motion for reconsideration, the court
upholds the motion to lift on grounds that no original copy of the films were presented when
securing the warrant citing the case of 20th Century Fox vs CA. On appeal, the CA sustained
the ruling of the trial court.

I: WON the ruling on the cited case applicable in the case at bar.

R: No because rules and decisions must be applied prospectively. The ruling in the cited case
is not applicable since the ruling in the case at bar happened before such ruling was ever
upheld. The ruling in the 20th Century Fox only serves as a guidepost and not absolute since
it is not always necessary to present the original tapes before ascertaining probable cause.

Columbia Pictures v. CA (1996) Regalado, J.

Concept: Foreign Corporations

FACTS:
Columbia Pictures, et al. had lodged a formal complaint with the NBI, vis--vis
their anti-film piracy drive. Eventually, the NBI obtained a search warrant against
Sunshine Video seeking to seize pirated video tapes, among others. The NBI
carried out the seizure, and filed a return with the trial court. However, the trial
court eventually granted a motion to lift the order of search warrant the
contention was that the master tapes of the copyrighted films from which the
pirated films were allegedly copied were never presented in the proceedings for
the issuance of the search warrants. The CA dismissed the appeal brought before
it. Hence, Columbia Pictures, et al. brought the case before the SC.Sunshine
Video contended that Columbia Pictures, et al. (being foreign
corporations doing business in the Philippines) should have a license in
order to maintain an action in Philippine courts and without such
license, it had no right to ask for the issuance of a search warrant.
Sunshine video submitted that the fact that Columbia Pictures, et al. were
copyright owners or owners of exclusive rights of distribution in the Philippines of
copyrighted motion pictures, AND the fact that Att. Domingo had been appointed
as their atty.-in-fact constituted doing business in the Philippines, under the
Rules of the Board of Investments.

ISSUE:
Do Colombia Pictures, et al. have legal personality to sue in the Philippines?

HELD:
YES. Under the Sec. 133 of the Corp. Code, no foreign corporation shall be
permitted to transact business in the Philippines, as this phrase is understood
under the Corporation Code, unless it shall have the license required by law, and
until it complies with the law in transacting business here, it shall not be
permitted to maintain any suit in local courts. However, such license is not
necessary if it is not engaged in business in the Philippines. Any foreign
corporation not doing business in the Philippines may maintain an action in our
courts upon any cause of action, provided that the subject matter and the
defendant are within the jurisdiction of the court.

No general rule or governing principles can be laid down as to what constitutes

"doing" or "engaging in" or "transacting" business.The true tests, however, seem
to be whether the foreign corporation is continuingthe body or substance of the
business or enterprise for which it was organized (as distinguished from merely
casual, sporadic, or occasional transactions and isolated acts) or whether it has
substantially retired from it and turned it over to another.Based on Article 133
of the Corporation Code and gauged by statutory standards, petitioners
are not barred from maintaining the present action. There is no showing
that, under our statutory or case law, petitioners are doing, transacting, engaging
in or carrying on business in the Philippines as would require obtention of a
license before they can seek redress from our courts.

As a general rule, a foreign corporation will not be regarded as doing business in

the State simply because it enters into contracts with residents of the State,
where such contracts are consummated outside the State.It has moreover been
held that the act of a foreign corporation in engaging an attorney to represent it in
a Federal court sitting in a particular State is not doing business within the scope
of the minimum contact test. The mere institution and prosecution or defense of a
suit, particularly if the transaction which is the basis of the suit took place out of
the State, do not amount to the doing of business in the State.

Columbia Pictures vs. Court of Appeals 261 SCRA 144 (1996)

Facts:

Complainants COLUMBIA PICTURES, INC., ORION PICTURES CORPORATION,

PARAMOUNT PICTURES CORPORATION, TWENTIETH CENTURY FOX FILM
CORPORATION, UNITED ARTISTS CORPORATION, UNIVERSAL CITY STUDIOS,
INC., THE WALT DISNEY COMPANY, and WARNER BROTHERS, INC., thru counsel
lodged a formal complaint with the National Bureau of Investigation for violation
of PD No. 49, (otherwise known as the Decree on the Protection of Intellectual
Property) as amended, and sought its assistance in their anti-film piracy drive.
Agents of the NBI and private researchers made discreet surveillance on various
video establishments in Metro Manila including Sunshine Home Video Inc.
(Sunshine for brevity), owned and operated by Danilo A. Pelindario with address
at No. 6 Mayfair Center, Magallanes, Makati, Metro Manila.

On November 14, 1987, NBI Senior Agent Lauro C. Reyes applied for a search
warrant with the court a quo against Sunshine seeking the seizure, among others,
of pirated video tapes of copyrighted films all of which were enumerated in a list
attached to the application; and, television sets, video cassettes and/or laser disc
recordings equipment and other machines and paraphernalia used or intended to
be used in the unlawful exhibition, showing, reproduction, sale, lease or
disposition of videograms tapes in the premises above described. In the hearing
of the application, NBI Senior Agent Lauro C. Reyes, upon questions by the court
a quo, reiterated in substance his averments in his affidavit. His testimony was
corroborated by another witness, Mr. Rene C. Baltazar. Atty. Rico V. Domingos
deposition was also taken. On the basis of the affidavits and depositions of NBI
Senior Agent Lauro C. Reyes, Rene C. Baltazar and Atty. Rico V. Domingo, Search
Warrant No 87-053 for violation of Section 56 of PD No. 49, as amended, was
issued by the court a quo.

The search warrant was served at about 1:45 p.m. on December 14, 1987 to
Sunshine and/or their representatives. In the course of the search of the
premises indicated in the search warrant, the NBI Agents found and seized
various video tapes of duly copyrighted motion pictures/films owned or
exclusively distributed by private complainants, and machines, equipment,
television sets, paraphernalia, materials, accessories all of which were included in
the receipt for properties accomplished by the raiding team. Copy of the receipt
was furnished and/or tendered to Mr. Danilo A. Pelindario, registered owner-
proprietor of Sunshine Home Video.

On December 16, 1987, a Return of Search Warrant was filed with the Court.

A Motion To Lift the Order of Search Warrant was filed but was later denied for
lack of merit.

A Motion for reconsideration of the Order of denial was filed. The court a quo
granted the said motion for reconsideration and justified it in this manner:

It is undisputed that the master tapes of the copyrighted films from which the
pirated films were allegedly copies (sic), were never presented in the proceedings
for the issuance of the search warrants in question. The orders of the Court
granting the search warrants and denying the urgent motion to lift order of search
warrants were, therefore, issued in error. Consequently, they must be set aside.

Petitioners thereafter appealed the order of the trial court granting private
respondents motion for reconsideration, thus lifting the search warrant which it
had therefore issued, to the Court of Appeals. As stated at the outset, said appeal
was dismissed and the motion for reconsideration thereof was denied. Hence, this
petition was brought to this Court particularly challenging the validity of
respondent courts retroactive application of the ruling in 20th Century Fox Film
Corporation vs. Court of Appeals, et al., in dismissing petitioners appeal and
upholding the quashal of the search warrant by the trial court.

Issue:

Whether or not the films in question which were never registered in the National
Library are protected by PD 49

Ruling:

Yes. PD 49 as amended, does not require registration and deposit for a creator to
be able to file an action for infringement of his rights. These conditions are merely
pre-requisites to an action for damages. So, as long as the proscribed acts are
shown to exist, an action for infringement may be initiated.

Accordingly, the certifications from the Copyright Section of the National Library,
presented as evidence by private respondents to show non-registration of some
of the films of petitioners, assume no evidentiary weight or significance,
whatsoever.

Furthermore, a closer review of Presidential Decree No. 49 reveals that even with
respect to works which are required under Section 26 thereof to be registered
and with copies to be deposited with the National Library, such as books,
including composite and cyclopedic works, manuscripts, directories and
gazetteers; and periodicals, including pamphlets and newspapers; lectures,
sermons, addresses, dissertations prepared for oral delivery; and letters, the
failure to comply with said requirements does not deprive the copyright owner of
the right to sue for infringement. Such non-compliance merely limits the
remedies available to him and subjects him to the corresponding sanction.
The reason for this is expressed in Section 2 of the decree which prefaces its
enumeration of copyrightable works with the explicit statement that the rights
granted under this Decree shall, from the moment of creation, subsist with
respect to any of the following classes of works. This means that under the
present state of the law, the copyright for a work is acquired by an intellectual
creator from the moment of creation even in the absence of registration and
deposit. As has been authoritatively clarified:

The registration and deposit of two complete copies or reproductions of the work
with the National Library within three weeks after the first public dissemination or
performance of the work, as provided for in Section 26 (P.D. No. 49, as
amended), is not for the purpose of securing a copyright of the work, but rather
to avoid the penalty for non-compliance of the deposit of said two copies and in
order to recover damages in an infringement suit

People v. Ramos, 83 SCRA 1 (1978)

Serrano Laktaw v. Paglinawan, 44 Phil. 855

Laktaw vs. Paglinawan, 44 Phil. 855 (1918)
Facts
Laktaw is the registered owner and author of a literary work entitled Diccionario
Hispano-Tagalog (Spanish-Tagalog Dictionary) published in the City of Manila in
1889 by the printing establishment La Opinion.
Paglinawan without the consent of Laktaw, reproduced said literary work,
improperly copied the greater part thereof in the work published by him and
entitled Diccionariong Kastila-Tagalog (Spanish-Tagalog Dictionary).
The act of Pagliwanan is a violation of article 7 of the Law of January 10, 1879, on
Intellectual Property, caused irreparable injuries to Laktaw who was surprised
when, on publishing his new work entitled Diccionario Tagalog-Hispano (Tagalog-
Spanish Dictionary) he learned of the fact, and (4) that the damages occasioned
to him by the publication of Paglinawan's work amounted to $10,000. Laktaw
prayed the court to order the Paglinawan to withdraw from sale all stock of the
work of Paglinawan to pay him the sum of $10,000, with costs.
Paglinawan in his answer denied generally each and every allegation of the
complaint and prayed the court to absolve him from the complaint.
Law
Article 7 of the Law of January 10, 1879, on Intellectual Property:
Nobody may reproduce another person's work without the owner's consent, even
merely to annotate or add anything to it, or improve any edition thereof.
Issue
Whether or not Paglinawan violated Article 7 of the Intellectual Property Law
(1879)?
Held
Yes, Paglinawan violated Article 7 of Intellectual Property Law.
It is not necessary that a work should be an improper copy of another
work previously published. It is enough that another's work has been
reproduced without the consent of the owner, even though it be only
to annotate, add something to it, or improve any edition thereof

Habana v. Robles, 310 SCRA 511 (1999)

PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs. FELICIDAD C.

ROBLES and GOODWILL TRADING CO., INC.
G.R. No. 131522, July 19, 1999

FACTS: Pacita Habana et al., are authors and copyright owners of duly issued of the book,
College English For Today (CET). Respondent Felicidad Robles was the author of the book
Developing English Proficiency (DEP). Petitioners found that several pages of the
respondent's book are similar, if not all together a copy of petitioners' book. Habana et al. filed
an action for damages and injunction, alleging respondents infringement of copyrights, in
violation of P.D. 49. They allege respondent Felicidad C. Robles being substantially familiar
with the contents of petitioners' works, and without securing their permission, lifted, copied,
plagiarized and/or transposed certain portions of their book CET.

On the other hand, Robles contends that the book DEP is the product of her own intellectual
creation, and was not a copy of any existing valid copyrighted book and that the similarities
may be due to the authors' exercise of the "right to fair use of copyrighted materials, as
guides."

The trial court ruled in favor of the respondents, absolving them of any liability. Later, the
Court of Appeals rendered judgment in favor of respondents Robles and Goodwill Trading
Co., Inc. In this appeal, petitioners submit that the appellate court erred in affirming the trial
court's decision.

ISSUE: Whether Robles committed infringement in the production of DEP.

HELD: A perusal of the records yields several pages of the book DEP that are similar if not
identical with the text of CET. The court finds that respondent Robles' act of lifting from the
book of petitioners substantial portions of discussions and examples, and her failure to
acknowledge the same in her book is an infringement of petitioners' copyrights.

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.

Pacita I. Habana, et al. vs. Felicidad Robles and Goodwill Trading, G.R.
No. 131522, July 19, 1999

Facts:
Habana is the author of the copyrighted book entitled College English for Today
(CET). Robles and GoodWill is the author and publisher of the book entitled
Developing English Proficiency (DEP).

When Habana et al. try to revise their work they encountered by chance that the
work of Robles (DEP) is similar of the contents, scheme of presentation,
illustrations and illustrative examples in their own book.

After an itemized examination and comparison of the two books (CET and DEP),
Habana found that several pages of the Robles book are similar, if not all
together a copy of Habanas book, which is a case of plagiarism and copyright
infringement.

Habana then made demands for damages against respondents and also
demanded that they cease and desist from further selling and distributing to the
general public the infringed copies of Robles works.

However, Robles ignored the demands, hence, Habana et al. filed with the
Regional Trial Court, Makati, a complaint for Infringement and/or unfair
competition with damages against private respondents.

Issue:

Whether or not, despite the apparent textual, thematic and sequential similarity
between DEP and CET, Robles committed no copyright infringement
Ruling:

No, Robles still committed copyright infringement.

Robles act of lifting from the book of petitioners substantial portions of

discussions and examples, and her failure to acknowledge the same in her book is
an infringement of petitioners copyrights.

In cases of infringement, copying alone is not what is prohibited. The copying

must produce an injurious effect. Here, the injury consists in that Robles lifted
from Habanas book materials that were the result of the latters research work
and compilation and misrepresented them as her own. She circulated the book
DEP for commercial use and did not acknowledge Habana as her source.

Hence, there is a clear case of appropriation of copyrighted work for her benefit
that Robles committed. Habanas 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.

Joaquin v. Drilon, 302 SCRA 225 (1999)

Joaquin Jr. vs. Drilon, 302 SCRA 225 (1999)/G.R. No. 108946, January
28, 1999

Facts:

Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of Certificate of

Copyright No. M922, dated January 28, 1971, of Rhoda and Me, a dating game
show aired from 1970 to 1977.

On June 28, 1973, petitioner BJPI submitted to the National Library an addendum
to its certificate of copyright specifying the shows format and style of
presentation.

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

against private respondent FRANKLIN DRILON GABRIEL ZOSAtogether with
certain officers of RPN 9 for airing Its a Date. It was assigned to Branch 104 of
RTC Quezon City.

Zosa sought review of the resolution of the Assistant City Prosecutor before the
Department of Justice.

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

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

Petitioner Joaquin filed motion for reconsideration but such was denied.

Issue:
Whether or not the format or mechanics or petitioners television show is entitled
to copyright protection.

Ruling:

No. The format of the show is not copyrightable. Sec. 2 of PD No. 49, otherwise
known as the Decree on Intellectual Property, enumerates the classes of work
entitled to copyright protection. The provision is substantially the same as Sec.
172 of the Intellectual Property Code of the Philippines (RA 8293). The format or
mechanics of a television show is not included in the list of protected works in
Sec. 2 of PD No. 49. For this reason, the protection afforded by the law cannot be
extended to cover them.

Copyright, in the strict sense of the term, is purely a statutory right. It is a new
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 person and on terms and conditions specified in the statute.

The Court is of the opinion that petitioner BJPIs copyright covers audio-visual
recordings of each episode of Rhoda and Me, as falling within the class of works
mentioned in PD 49.

The copyright does not extend to the general concept or format of its dating
game show.

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 a probable cause.

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.

Joaquin v. Drilon

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 shows format and style of presentation. In 1991, BJPIs president Francisco
Joaquin saw on TV RPN 9s show Its a Date, a show which is basically the same
as Rhoda and Me. He eventually sued Gabriel Zosa, the manager of the show Its a
Date. The investigating prosecutor found probable cause against Zosa. Zosa later sought a
review of the prosecutors 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 BJPIs 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 (Its a Date).
This is based on the ruling in 20 th 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

Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)

409 SCRA 231 Mercantile Law Intellectual Property Law on Copyright Copyrightable
Subject

Pearl & Dean (Phil), Inc. is a corporation engaged in the manufacture of advertising display
units called light boxes. In January 1981, Pearl & Dean was able to acquire copyrights over
the designs of the display units. In 1988, their trademark application for Poster Ads was
approved; they used the same trademark to advertise their light boxes.

In 1985, Pearl & Dean negotiated with Shoemart, Inc. (SM) so that the former may be
contracted to install light boxes in the ad spaces of SM. Eventually, SM rejected Pearl
& Deans proposal.

Two years later, Pearl & Dean received report that light boxes, exactly the same as theirs,
were being used by SM in their ad spaces. They demanded SM to stop using the light boxes
and at the same time asked for damages amounting to P20 M. SM refused to pay damages
though they removed the light boxes. Pearl & Dean eventually sued SM. SM argued that it did
not infringe on Pearl & Deans trademark because Pearl & Deans trademark is only
applicable to envelopes and stationeries and not to the type of ad spaces owned by SM. SM
also averred that Poster Ads is a generic term hence it is not subject to trademark
registration. SM also averred that the actual light boxes are not copyrightable. The RTC ruled
in favor of Pearl & Dean. But the Court of Appeals ruled in favor of SM.

ISSUE: Whether or not the Court of Appeals is correct.

HELD: Yes. The light boxes cannot, by any stretch of the imagination, be considered as either
prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to be properly
classified as a copyrightable; what was copyrighted were the technical drawings only, and not
the light boxes themselves. In other cases, it was held that there is no copyright infringement
when one who, without being authorized, uses a copyrighted architectural plan to construct a
structure. This is because the copyright does not extend to the structures themselves.

On the trademark infringement allegation, the words Poster Ads are a simple contraction of
the generic term poster advertising. In the absence of any convincing proof that Poster Ads
has acquired a secondary meaning in this jurisdiction, Pearl & Deans exclusive right to the
use of Poster Ads is limited to what is written in its certificate of registration, namely,
stationeries.

PEARL & DEAN PHIL INC. VS. SHOEMART- Trademark, Copyright and Patents

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 or services of an enterprise and shall include a stamped or marked container of goods.
The scope of a copyright is confined to literary and artistic works which are original intellectual
creations in the literary and artistic domain. Patentable inventions 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.

FACTS:

Pearl and Dean is a corporation in the manufacture of advertising display units also known as
light boxes, which were manufactured by Metro Industrial Services. A copyright Registration
was obtained in 1981. These were marketed in the name of "Poster Ads". They also applied
for a registration of trademark with the Bureau of Patents in 1983, but was only approved in
19988. In 1985, petitioner had n agreement with respondent Shoemart Inc (SMI) to install
these light boxes in their Makati and Cubao branch, Only the Makati branch was able to sigh
the agreement. In 1986, the contract was rescinded unilaterally by SMI, and instead
contracted with Metro Industrial Services. They installed these lightboxes in different SM city
branches, including Cubao and Makati, with association with North Edsa Marketing Inc
(NEMI), SMI's sister company. Petitioner requested SMI and NEMI to put down their
installations of the light boxes, and payment of compensatory damages worth P20M. Claiming
that respondents failed to comply, they filed a case for infringement of trademark and
copyright, unfair competition and damages. RTC ruled in favor of petitioner, but CA reversed.

ISSUES:

(1) Whether there was a copyright infringement

(2) Whether there was a patent infringement
(3) Whether there was a trademark infringement
(4) Whether there was unfair competition

RULING: No to all.

(1) Copyright is a statutory right, subject to the terms and conditions specified in the statute.
Therefore, it can only cover the works falling within the statutory enumeration or description.
Since the copyright was classified under class "O" works, which includes "prints, pictorial
illustrations, advertising copies, labels, tags and box wraps," and does not include the light
box itself. A lightbox, even admitted by the president of petitioner company, was neither a
literary nor an artistic work but an engineering or marketing invention, thus not included under
a copyright.

(2) Petitioner was not able to secure a patent for its lightboxes, and cannot legally prevent
anyone from manufacturing or commercially using the same. Patent has a three-fold purpose:
a) to foster and reward invention; b) promotes disclosures of invention and permit public to
use the same upon expiration; c) stringent requirements for patent protection to ensure in the
public domain remain there for free use of the public. Since petitioner was not able to go
through such examination, it cannot exclude others from manufacturing, or selling such
lightboxes. No patent, no protection.

(3) The certificate of registration issued by the Director of Patents gives exclusive right to use
its own symbol only to the description specified in the certificate. It cannot prevent others to
use the same trademark with a different description.

(4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and Dean,
thus it cannot be considered to use such term to be unfair competition against the petitioner.

E. Other Related Rights

1. Moral Rights
Article 6bis, Berne Convention for the Protection of Literary and
Artistic Works
Sections 193-199, IPC

2. Right to Proceeds in Subsequent Transfers (Droit De Suite or Follow

Up Rights)
Sections 200-201, IPC

3 Neighboring Rights(entrepreneurial rights?)

Sec. 202, IPC
Sec. 212, IPC
a. Rights of Performers
Sections 203-207, IPC
Sec. 215, IPC

b. Rights of Producers of Sound Recording

Sections 208-210, IPC
Sec. 215, IPC

c.
Rights of Broadcasting Organizations
Sections 211, IPC
Sec. 215.2, IPC
ABS-CBN Broadcasting vs. Philippine Multi-Media
System, G.R. Nos. 175769-70, January 19, 2009.
ABS-CBN Broadcasting Corp. vs. Philippines Multi-Media System Inc., et
al., G.R. No. 175769, January 19, 2009

Facts:

ABS-CBN Broadcasting Corporation (ABS-CBN) is licensed under the laws of the

Republic of the Philippines to engage in television and radio broadcasting. It
broadcasts television programs by wireless means to Metro Manila and nearby
provinces, and by satellite to provincial stations through Channel 2 on Very High
Frequency (VHF) and Channel 23 on Ultra High Frequency (UHF). The programs
aired over Channels 2 and 23 are either produced by ABS-CBN or purchased from
or licensed by other producers.
ABS-CBN also owns regional television stations which pattern their programming
in accordance with perceived demands of the region. Thus, television programs
shown in Metro Manila and nearby provinces are not necessarily shown in other
provinces.

Philippine Multi-Media System, Inc. (PMSI) is the operator of Dream Broadcasting

System. It delivers digital direct-to-home (DTH) television via satellite to its
subscribers all over the Philippines.

PMSI was granted a legislative franchise under Republic Act No. 86305 on May 7,
1998 and was given a Provisional Authority by the National Telecommunications
Commission (NTC) on February 1, 2000 to install, operate and maintain a
nationwide DTH satellite service. When it commenced operations, it offered as
part of its program line-up ABS-CBN Channels 2 and 23, NBN, Channel 4, ABC
Channel 5, GMA Channel 7, RPN Channel 9, and IBC Channel 13, together with
other paid premium program channels.

However, on April 25, 2001, ABS-CBN demanded for PMSI to cease and desist
from rebroadcasting Channels 2 and 23. On April 27, 2001, PMSI replied that the
rebroadcasting was in accordance with the authority granted it by NTC and its
obligation under NTC Memorandum Circular No. 4-08-88, Section 6.2 of which
requires all cable television system operators operating in a community within
Grade A or B contours to carry the television signals of the authorized
television broadcast stations.

Thereafter, negotiations ensued between the parties in an effort to reach a

settlement; however, the negotiations were terminated on April 4, 2002 by ABS-
CBN allegedly due to PMSIs inability to ensure the prevention of illegal
retransmission and further rebroadcast of its signals, as well as the adverse effect
of the rebroadcasts on the business operations of its regional television stations.

On May 13, 2002, ABS-CBN filed with the Intellectual Property Office (IPO) a
complaint for Violation of Laws Involving Property Rights, with Prayer for the
Issuance of a Temporary Restraining Order and/or Writ of Preliminary Injunction,.
It alleged that PMSIs unauthorized rebroadcasting of Channels 2 and 23 infringed
on its broadcasting rights and copyright. On July 2, 2002, the Bureau of Legal
Affairs (BLA) of the IPO granted ABS-CBNs application for a temporary
restraining order. On July 12, 2002, PMSI suspended its retransmission of
Channels 2 and 23.

Issue:

Whether or not PMSIs unauthorized rebroadcasting of Channels 2 and 23 is an

infringement of its broadcasting rights and copyright under the Intellectual
Property Code

Ruling:

PMSI did not infringe on ABS-CBNs intellectual property rights under the IP Code.

Section 202.7 of the IP Code defines broadcasting as the transmission by

wireless means for the public reception of sounds or of images or of
representations thereof; such transmission by satellite is also broadcasting
where the means for decrypting are provided to the public by the broadcasting
organization or with its consent.
On the other hand, rebroadcasting as defined in Article 3(g) of the International
Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations, otherwise known as the 1961 Rome Convention, of
which the Republic of the Philippines is a signatory, is the simultaneous
broadcasting by one broadcasting organization of the broadcast of another
broadcasting organization.

PMSI would not qualify as a broadcasting organization because it does not have
the aforementioned responsibilities imposed upon broadcasting organizations,
such as ABS-CBN.

ABS-CBN creates and transmits its own signals; PMSI merely carries such signals
which the viewers receive in its unaltered form. PMSI does not produce, select, or
determine the programs to be shown in Channels 2 and 23. Likewise, it does not
pass itself off as the origin or author of such programs. Insofar as Channels 2 and
23 are concerned, PMSI merely retransmits the same in accordance with
Memorandum Circular 04-08-88. With regard to its premium channels, it buys the
channels from content providers and transmits on an as-is basis to its viewers.
Clearly, PMSI does not perform the functions of a broadcasting organization; thus,
it cannot be said that it is engaged in rebroadcasting Channels 2 and 23.

The retransmission of ABS-CBNs signals by PMSI which functions essentially as

a cable television does not therefore constitute rebroadcasting in violation of
the formers intellectual property rights under the IP Code

See also P.D. No. 285

Sec. 239, IPC