SERRANO vs.

PAGLINAWAN

Facts:

Pedro Serrano the author of “Diccionario Hispano-Tagalog” filed an action against

Paglinawan for violating Article 7 of Intellectual Property which prohibits the reproduction of
another person’s work without the owner’s consent even merely to annotate or add anything or
improve edition thereof. Serrano alleged that Paglinawan reproduced and improperly copied said
literary work and entitled the work “Diccionariong Kastila-Tagalog.”

Issue:

Whether or not there was a violation of Intellectual Property.

Held:

There was a violation of Intellectual Property. The Court ruled that a dictionary constitutes
property. Although words are not property of anybody, definition, explanation of the sense of the
author, and manner of expressing the meaning, may constitute a special work. Pedro Serrano cannot
be denied of the legal protection against Paglinawan for reproducing his work without his
permission.

Also, the Court ruled that although Spanish laws were superseded by US laws, rights to
literary, artistic, and industrial properties shall continue to be respected.
 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.
G.R. No. 161295 June 29, 2005

Facts:

Petitioner 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, for which he holds certificates of copyright registration.

Petitioner then 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 which led to the issuance of search warrants against respondents Salinas
who are alleged that they reproduced and distributed the said models penalized under IPL.

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

Petitioner insists that the Intellectual Property 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.

Issue:

WON the utility model "Leaf Spring Eye Bushing for Automobile” subject to copyright law.

Held:

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 is merely a utility
model.

Likewise, the Vehicle Bearing Cushion which is also manufactured by the petitioner is
illustrated as a bearing cushion. 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.
 The Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not copyrightable, being not
of the same kind and nature as the works enumerated in Section 172 of IPC. In Kho v. Court of
Appeals, the Court ruled that “these copyright and patent rights are completely distinct and separate
from one another, and the protection that was afforded cannot be used interchangeable to cover
items or works that exclusively pertain to others.
 MANLY vs. DADODETTE ENTERPRISES

Facts:

The NBI secured a search warrant from the RTC of QC to act upon the information that
respondents Dadodette Enterprises and/or Hermes Sports Center were in possession of goods
copyright of which belongs to the petitioner Manly Sportswear Mfg., Inc.. After finding reasonable
grounds in violation of Section 172 and 217 of RA 8293 ("Intellectual Property Code of the
Philippines) a search 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. Respondents insist
that the sporting goods manufactured and registered in the name MANLY is just ordinary and
common and not among the classes protected under RA 8293. The court granted the motion to
quash declaring the search warrant null and void because there were certificates of registrations
issued earlier than MANLY for the same sporting goods under various brands thereby negating the
fact that their products are copyrighted and original creations. Motion for reconsideration was
denied by the appellate court sustaining the lower court’s decision thus this instant petition for
review for certiorari.

Issue:

W/N the copyrighted products of MANLY are original creations subject to the protection
of RA 8293.

Ruling:

No. The court ruled that the petitioner is not protected by the copyright law despite the
issuance of the copyright certificate of registration as it merely gives prima facie evidence of the
validity and ownership. Therefore if there are sufficient evidence that the copyrighted 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 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.

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.
 FRANCISCO JOAQUIN AND BJ PRODUCTIONS INC., petitioners, vs. FRANKLIN
DRILON, GABRIEL ZOSA ET AL., respondents
GR No. 108946, January 28, 1999

Facts:

BJ Productions Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922 of

Rhoda and Me, a dating game show aired from 1970 to 1977.

In 1991, Francis Joaquin (Joaquin), president of BJPI, watched on RPN Channel 9 an

episode of It’s a Date produced by IXL Productions (IXL). Joaquin then wrote a letter to Gabriel
Zosa (Zosa), general manager of IXL, demanding the discontinuation of the show. Meanwhile, IXL
was able to register copyright to the first episode of It’s a Date.

Upon complaint of petitioners, an information for violation of PD No. 429 (Decree on

Intellectual Property) was filed against Zosa and some officers of RPN 9. The private respondents,
however, sought a review of the prosecutor’s resolution before the Department of Justice. The DOJ
Secretary, Franklin Drilon, reversed the prosecutor’s resolution and directed the latter to move for
the dismissal of the case.

The respondents maintain that petitioners failed to establish the existence of probable cause
due to their failure to present the copyrighted master videotape of Rhoda and Me. They contend that
BJPI’s copyright covers only a specific episode of Rhoda and Me and that the formats or concepts of
dating game shows are not covered by copyright protection under P. D. No. 49.

Issue:

Whether or not the formats or concepts of dating game shows are covered by copyright
protection

Held:

No. Sec. 2 of PD 429 enumerates the classes of work entitled to copyright protection. The
format or mechanics of a television show is not included in said enumeration. 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. For this reason, the protection afforded by the law
cannot be extended to cover format or mechanics of television show.

Sec. 2 of PD 429, 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. SC then is of the opinion that Certificate of Copyright M922
covers only audio-visual recordings of Rhoda and Me.
 VENANCIO SAMBAR, doing business under the name and style of CVS Garment Enterprises,
vs. LEVI STRAUSS & CO., and LEVI STRAUSS (PHIL.), INC.
G.R. No. 132604. March 6, 2002. Penned by J. Quisumbing

Facts:

Levi Strauss and Co. (LS&Co.), an internationally known clothing manufacturer, uses an
arcuate design (back pocket design) which has both U.S. and Philippine trademark registration.
LS&Co. granted Levi Strauss (Phil.) Inc. (LSPI) a non-exclusive license to use the arcuate trademark
in its manufacture and sale of Levi’s pants, jackets and shirts in the Philippines. LS&Co. also
appointed LSPI as its agent and attorney-in-fact to protect its trademark in the Philippines.

CVS Garment and Industrial Company (CVSGIC) and Sambar, on the other hand, 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,
infringement and unfair competition, prejudicial to private respondents’ goodwill and property right.

Thus private respondents filed a complaint against petitioner, also impleading the Director
of the National Library.

CVSGIC denied that there was infringement or unfair competition because the display
rooms of department stores where Levi’s and Europress jeans were sold were distinctively
segregated, Levi’s jeans had other marks not found in Europress jeans and Levi’s long history and
popularity made its trademark easily identifiable by the public. Also, CVSGIC claimed that it had
copyright on the design it was using.

The 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.
Eventually, it made the writ of preliminary injunction permanent and ordered the defendants
CVSGIC and Sambar to pay private respondents jointly and solidarily P50,000.00 as temperate and
nominal damages, P10,000.00 as exemplary damages, and P25,000.00 as attorney’s fees and litigation
expenses.

On private respondents’ motion for reconsideration, the trial court also ordered the Director
of the National Library to cancel the copyright registration issued in the name of Sambar.

The CA affirmed the trial court’s decision. Hence, petitioner brought this present petition
for review on certiorari.

Issues:

1. Did petitioner infringe on private respondents’ arcuate design?

2. Are private respondents entitled to nominal, temperate and exemplary damages and cancellation
of petitioner’s copyright?

Ruling:
1. Yes. The first issue raised by petitioner is factual. The basic rule is that factual questions are
beyond the province of this Court in a petition for review. Although there are exceptions to this
rule, this case is not one of them. Hence, we find no reason to disturb the findings of the CA
that Europress’ use of the arcuate design was an infringement of the Levi’s design. (In other
words, the locally copyrighted design sought to be cancelled lacks originality since it closely
resembles the Levi Strauss trademark)

2. Yes. Both the trial court and the CA 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.

However, we agree with petitioner that it was error for the CA to affirm the award of nominal
damages combined with temperate damages. What respondents are entitled to is an award for
temperate damages, not nominal damages. For although the exact amount of damage or loss
cannot be determined with reasonable certainty, the fact that there was infringement means they
suffered losses for which they are entitled to moderate damages.
 UNITED FEATURE SYNDICATE INC. vs. MUNSINGWEAR CREATION
MANUFACTURING COMPANY
G. R. No. 76193, November 09, 1989

Facts:

Petitioner filed for the cancellation of the registration of trademark CHARLIE BROWN in
the name of respondent MUNSINGWEAR with the Philippine Patent Office alleging that
petitioner is damaged by the registration of the trademark CHARLIE BROWN of T-Shirts under
Class 25 by respondent on the following grounds: (1) that respondent was not entitled to 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, the
copyright to which is exclusively owned worldwide by the petitioner; (3) that as the owner of the
pictorial illustration CHARLIE BROWN, petitioner has since 1950 and continuously up to the
present, 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 its application for
registration.

Respondent claim that 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 only by petitioner as character, in a pictorial illustration used in a
comic strip appearing in newspapers 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"

PPO Director ruled in favor of respondent and held that a copyright registration like that of
the name and likeness of CHARLIE BROWN may not provide a cause of action for the
cancellation of a trademark registration. CA affirmed the decision of the PPO Director. Hence, the
petition of petitioner United Feature Syndicate to the SC.

Issue:

Whether or not a copyrighted character may be appropriated as a trademark by another under P.D.
49.

Held:

No, a copyrighted character may not be appropriated as a trademark by another under P.D.
49.

"Decree on Intellectual Property", provides:

"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:

"(O) Prints, pictorial illustrations, advertising copies, labels, tags and box wraps. . . ."
 Therefore, since the name "CHARLIE BROWN" and its pictorial representation were
covered by a copyright registration way back in 1950 the same are entitled to protection under PD
No. 49. Aside from its copyright registration, petitioner is also the owner of several trademark
registrations and application for the name and likeness of "CHARLIE BROWN" which is the duly
registered trademark and copyright of petitioner United Feature Syndicate Inc. as early as 1957 and
additionally also as TV SPECIALS featuring the "PEANUTS" characters and "CHARLIE
BROWN".

In upholding the right of the petitioner to maintain the present suit before our courts for
unfair competition or infringement of trademarks of a foreign corporation, we are moreover
recognizing our duties and the rights of foregoing states under the Paris Convention for the
Protection of Industrial Property to which the Philippines is a party. We are simply interpreting a
solemn international commitment of the Philippines embodied in a multilateral treaty to which we
are a party and which we entered into because it is in our national interest to do so.
 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., petitioners, vs. COURT OF
APPEALS, SUNSHINE HOME VIDEO, INC. and DANILO A. PELINDARIO,
respondents.
G.R. No. 110318. August 28, 1996

Facts:

In 1986, the Videogram Regulatory Board (VRB) applied for a warrant against Jose Jinco
(Jingco), owner of Showtime Enterprises for allegedly pirating movies produced and owned by
Columbia Pictures and other motion picture companies. Jingco filed a motion to quash the search
warrant but the same was denied in 1987. Subsequently, Jinco filed an Urgent Motion to Lift the
Search Warrant and Return the Articles Seized. In 1989, the RTC judge granted the motion. The
judge ruled that based on the ruling in the 1988 case of 20th Century Fox Film Corporation vs CA,
before a search warrant could be issued in copyright cases, the master copy of the films alleged to be
pirated must be attached in the application for warrant.

Issue: Whether or not the 20th Century Fox ruling may be applied retroactively in this case.

Held:

No. In 1986, obviously the 1988 case of 20th Century Fox was not yet promulgated. The
lower court could not possibly have expected more evidence from the VRB and Columbia Pictures
in their application for a search warrant other than what the law and jurisprudence, then existing and
judicially accepted, required with respect to the finding of probable cause.

The Supreme Court also revisited and clarified the ruling in the 20th Century Fox Case. It is
evidently incorrect to suggest, as the ruling in 20th Century Fox may appear to do, that in copyright
infringement cases, the presentation of master tapes of the copyright films is always necessary to
meet the requirement of probable cause for the issuance of a search warrant. It is true that such
master tapes are object evidence, with the merit that in this class of evidence the ascertainment of
the controverted fact is made through demonstration involving the direct use of the senses of the
presiding magistrate. Such auxiliary procedure, however, does not rule out the use of testimonial or
documentary evidence, depositions, admissions or other classes of evidence tending to prove the
factum probandum, especially where the production in court of object evidence would result in
delay, inconvenience or expenses out of proportion to is evidentiary value.

In fine, the supposed pronouncement in said case regarding the necessity for the
presentation of the master tapes of the copy-righted films for the validity of search warrants should
at most be understood to merely serve as a guidepost in determining the existence of probable cause
in copy-right infringement cases where there is doubt as to the true nexus between the master tape
and the pirated copies. An objective and careful reading of the decision in said case could lead to no
other conclusion than that said directive was hardly intended to be a sweeping and inflexible
requirement in all or similar copyright infringement cases.
 HABANA vs. ROBLES

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 respondent’s 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.
UNILEVER PHILIPPINES (PRC), INC., petitioner, vs. THE HONORABLE COURTOF
APPEALS and PROCTER AND GAMBLE PHILIPPINES, INC.,
respondents.
G.R. No. 119280, August 10, 2006. CORONA, J.

Facts:

As early as 1982, a P&G subsidiary in Italy used a key visual known as the double-tug or tac-
tac demonstration in the advertisement of its laundry detergent and bleaching products. It was
conceptualized for P&G by the advertising agency Milano and Gray of Italy in 1982. Since then,
P&G has used the tac-tac key visual in the advertisement of its products. In fact, in 1986, in Italy,
the tac-tac key visual was used in the television commercial for Ace entitled Kite. P&G has used the
same key visual to local consumers in the Philippines.

Substantially and materially imitating the aforesaid tac-tac key visual of P&GP and in blatant
disregard of P&GPs intellectual property rights, Unilever on 24 July 1993 started airing a 60
second television commercial TVC of its Breeze Powerwhite laundry product called Porky. It
included a stretching visual presentation and sound effects almost [identical] or substantially similar
to P&GPs tac-tac key visual.

On July 15, 1994, P&GP aired in the Philippines, the same Kite television advertisement it
used in Italy in 1986, merely dubbing the Italian language with Filipino for the same produce Ace
bleaching liquid which P&GP now markets in the Philippines.

On August 1, 1994, Unilever filed a Complaint with the Advertising Board of the Philippines
to prevent P&GP from airing the Kite television advertisement.

The trial court issued a writ of preliminary injunction enjoining petitioner from using and
airing, until further orders of the court, certain television commercials for its laundry products
claimed to be identical or similar to its double tug or tac-tac key visual. Petitioner appealed to the
CA alleging that it was issued without any evidence of private respondents clear and unmistakable
right to the writ. The CA rendered its decision finding that Judge Gorospe did not act with grave
abuse of discretion in issuing the disputed order.

Petitioner does not deny that the questioned TV advertisements are substantially similar
to P&GPs double tug or tac-tac key visual. However, it submits that P&GP is not entitled to the
relief demanded, which is to enjoin petitioner from airing said TV advertisements, for the reason
that petitioner has Certificates of Copyright Registration for which advertisements while P&GP has
none with respect to its double-tug or tac-tac key visual.

Issue:

Whether or not P&GP is not entitled to any protection because it has not registered with the
National Library the very TV commercials which it claims have been infringed by petitioner.

Held:
 We disagree. Section 2 of PD 49 stipulates that the copyright for a work or intellectual
creation subsists from the moment of its creation. Accordingly, the creator acquires copyright
for his work right upon its creation. Contrary to petitioners contention, the intellectual creators
exercise and enjoyment of copyright for his work and the protection given by law to him is not
contingent or dependent on any formality or registration.

As alleged in the Complaint P&GP is a subsidiary of Procter and Gamble Company (P&G)
for which the double tug or tac-tackey visual was conceptualized or created. In that capacity, P&GP
used the said TV advertisement in the Philippines to promote its products. As such subsidiary,
P&GP is definitely within the protective mantle of the statute (Sec. 6, PD 49).

WHEREFORE, the petition is hereby DENIED. Costs against petitioner. SO

ORDERED.
 OLANO vs. LIM ENG CO

Facts:

Petitioners of the case are officers of Metrotech Steel Industries (Metrotech). Respondent
Lim Eng Co is the Chairman of LEC Steel Manufacturing Corporation (LEC), a company which
specializes in architectural metal manufacturing.

LEC was invited by the architects responsible for the construction of the Manansala
Project, a high-rise residential building, to submit designs and specifications for metal hatch doors.
LEC accepted the offer and submitted its designs to Manansala Project. The designs were then
transferred to a contractor responsible for the construction of the building - Ski-First Balfour Joint
Venture (SKI-FB).

SKI-FB then subcontracted LEC to manufacture the metal hatch doors. Metrotech Steel
Industries was also subcontracted to manufacture the metal hatch doors based on the designs and
specifications of LEC submitted by Manansala Project to SKI-FB.

LEC then demanded Metrotech to stop manufacturing the metal hatch doors since LEC
alleged copyright infringement on Metrotech's acts. LEC also alleged that Metrotech was
reproducing the illustrations and plans originally made by LEC for the manufacturing of metal
hatches. LEC states that it has procured certificates of registration, from the national library, for the
illustrations contained in the design and specification documents under section 172 (i) of the
Intellectual Property Code (Certificate of Registration Nos. I-2004-13 and I-2004-14 ). In addition,
LEC avers that the metal hatches it produced had ornamental and artistic designs blending in with
the interior surroundings of the high-rise building the doors having a distinct set of hinges and
distinct jamb, and therefore are copyrightable material, according to section 172 (h) of the
Intellectual Property Code ( Certificate of Registration Nos. H-2004-566 and H-2004-567 ). These
certificates of registration, LEC avers, confers the protective mantle of the copyright law upon both
the illustrations/designs of the metal hatch doors in the documents, and the manufactured metal
hatch doors themselves.

Metrotech opposes LEC's arguments stating that it did not in any way reproduce the
documents and illustrations; that the finished hatches/doors themselves were not copyrightable
material, as the only subject of the copyright contemplated under section 172 i and h are the
illustrations and designs; that the certificates of registration themselves are not conclusive proof of
having copyright rights over the illustrations - that they are rebuttable, and that they are issued by
the national library which only performs ministerial duties.

From the above arguments, LEC filed a complaint with the prosecutor's office to which the
prosecutor found no probable cause. LEC then appealed to the Secretary of Justice in the DOJ. The
DOJ found probable cause. Metrotech then prayed for a review of the DOJ's resolution. The DOJ
reveresed its own decision and stated that there was no probable cause. LEC then appealed to the
CA, stating that there was grave abuse of discretion on the part of the DOJ for vacillating in its
resolutions. The CA ruled in favor of LEC and determined that the DOJ's second resolution was
tainted with grave abuse of discretion. Metrotech thus appeals to the Supreme Court, on the finding
of the CA that there should be probable cause as per the first resolution of the DOJ, and that the
DOJ's findings are tainted with grave abuse of discretion.
Issues:

1) Whether or not Metrotech committed copyright infringement on the designs and

manufactured metal hatches of LEC.

2) Whether or not there was grave abuse of discretion on the part of the DOJ.

Ruling:

First Issue:

Metrotech did not commit copyright infringement on the designs and the manufactured
metal hatches of LEC.

The coverage of the copyright protection granted by Certificate of Registration Nos. I-2004-
13 and I-2004-14 only pertains to the illustrations/designs of the metal hatch doors. As such,
reproduction of the illustrations and designs of the metal hatch doors are prohibited. However,
there was no evidence that Metrotech reproduced the designs and illustrations since the NBI raid on
Metrotech's premises did not find anything incriminating.

As for Certificate of Registration Nos. H-2004-566 and H-2004-567, which allegedly confers
copyright protection on the manufactured doors, the contents of the certification was rebutted by
evidence showing that the certificate confers no copyright ownership to LEC with regard to the
finished metal hatches/doors.

In order for the hatches/doors themselves to be subjected to copyright protection, they have
to be 1) original works - originality means that the material was not copied, evidences at least
minimal creativity and was independently created by the author 2) possess independent artistic
design features -design elements that are physically and conceptually separable, independent and
distinguishable from the hatch door itself.

In the case, the hatch doors' components were made from other companies' designs (a) the
hinges are similar to those used in truck doors; (b) the gaskets were procured from a company
named Pemko and are not original creations of LEC; and (c) the locking device are ordinary drawer
locks commonly used in furniture and office desks. Therefore, the metal hatches can't be considered
original works. The metal hatches/doors also do not possess any independent artistic design
features. The hinges and distinct jamb of the doors which LEC purportedly states are artistic, are
necessary design elements which are NOT independent from the hatch door itself. They are not
independent since the features are necessary for the hatch door to function. The alleged artistic
designs of the door need to be independent from the utility and function of the door/hatch.

Second Issue:

SC ruled that there was no grave abuse of discretion on the part of the DOJ. Mere vacillating
resolutions are not evidence of grave abuse of discretion. “[I]t is elementary that not every erroneous
conclusion of law or fact is an abuse of discretion.” The DOJ's situation does not amount to grave
abuse of discretion but rather a mere manifestation of the intricate issues involved in the case which
thus resulted in varying conclusions of law.
 In addition, there can be no grave abuse of discretion in the DOJ's opposition of its
previous resolution, since as gleaned from the first issue of the case, there was no probable cause for
the filing of information on the claim that Metrotech infringed on LEC's copyright ownership.
 RAPPLER, INC. vs. BAUTISTA
G.R. 222702, 5 April 2016, Carpio, J.

Facts:

A memorandum of agreement (MOA) was executed between COMELEC Chairman Andres

Bautista, the Kapisanan ng mga Brodkaster ng Pilipinas (KBP), and various media networks.
Together, they will organize the “PiliPinas 2017 Debates” for candidates running for the posts for
President and Vice President.

Respondent Bautista proposed that petitioner Rappler and Google take charge of the
internet and social media coverage for the said debates. Petitioner was instructed by respondent to
coordinate with the other media networks regarding the broadcast. A meeting was set by Bautista
with the KBP and other networks, wherein petitioner was informed that it has been dropped and
replaced by the online and social media arms of the lead networks.

Petitioner, wanting to take part in the broadcast, opted to cover the debates through online
streaming, which was allowed in the draft of the MOA. Rappler expressed its concern regarding the
two-minute streaming limit for debate footage, and sought clarification from respondent Bautista.
Bautista, however, responded by telling petitioner to sign the MOA because time was of the essence.
Any clarifications will be entertained later. Petitioner, KBP, the lead networks, and the COMELEC
executed the MOA on 13 January 2016. After that, respondent no longer replied to any
communication sent by the petitioner.

Petitioner then filed a petition for certiorari and prohibition.

Issue:

Whether or not Rappler can live stream the debates on its online outlets without violating
copyright.

Ruling:

Petitioner's demand to exercise the right to live stream the debates is a contractual right of
petitioner under the MOA. Under Part VI (C), paragraph 19 of the MOA, the Lead Networks are
expressly mandated to "allow the debates they have produced to be shown or streamed on other
websites," but "subject to copyright conditions or separate negotiations with the Lead Networks."

The use of the word "or" means that compliance with the "copyright conditions" is
sufficient for petitioner to exercise its right to live stream the debates in its website. The "copyright
conditions" refer to the limitations on copyright as provided under Section 184.1 (c) of the
Intellectual Property Code (IPC), thus:

SEC. 184. Limitations on Copyright. - 184. l Notwithstanding the provisions of

Chapter V, the following acts shall not constitute infringement of copyright:

xx xx
 (c) The reproduction or communication to the public by mass media of articles on
current political, social, economic, scientific or religious topic, lectures, addresses and
other works of the same nature, which are delivered in public if such use is for
information purposes and has not been expressly reserved; Provided, That the
source is clearly indicated; (Sec. 11, P.D. No. 49) (Boldfacing and underscoring
supplied)

Under this provision, the debates fall under "addresses and other works of the same nature."
Thus, the copyright conditions for the debates are: (1) the reproduction or communication to the
public by mass media of the debates is for information purposes; (2) the debates have not been
expressly reserved by the Lead Networks (copyright holders); and (3) the source is clearly indicated.

Under the MOA, the Lead Networks are mandated to promote the debates for maximum
audience. The MOA recognizes the public function of the debates and the need for the widest
possible dissemination of the debates. The MOA has not reserved or withheld the reproduction of
the debates to the public but has in fact expressly allowed the reproduction of the debates "subject
to copyright conditions." Thus, petitioner may livestream the debate in its entirety by complying
with the "copyright conditions," including the condition that "the source is clearly indicated" and
that there will be no alteration, which means that the streaming will include the proprietary graphics
used by the Lead Networks. If petitioner opts for a clean feed without the proprietary graphics used
by the Lead Networks, in order for petitioner to layer its own proprietary graphics and text on the
same, then petitioner will have to negotiate separately with the Lead Networks. Similarly, if
petitioner wants to alter the debate audio by deleting the advertisements, petitioner will also have to
negotiate with the Lead Networks.

Once the conditions imposed under Section 184.1 ( c) of the IPC are complied with, the
information - in this case the live audio of the debates - now forms part of the public domain. There
is now freedom of the press to report or publicly disseminate the live audio of the debates. In fact,
the MOA recognizes the right of other mass media entities, not parties to the MOA, to reproduce
the debates subject only to the same copyright conditions. The freedom of the press to report and
disseminate the live audio of the debates, subject to compliance with Section 184.1 ( c) of the IPC,
can no longer be infringed or subject to prior restraint. Such freedom of the press to report and
disseminate the live audio of the debates is now protected and guaranteed under Section 4, Article
III of the Constitution, which provides that "[N]o law shall be passed abridging the freedom xx x of
the press."

Petition is PARTIALLY GRANTED.

 KHO vs. CA, SUMMERVILLE GENERAL MERCHANDISING

Facts:

Petitioner alleges that KEC Cosmetics Laboratory is the registered owner of the copyrights Chin
Chun Su and Oval Facial Cram Container case. She also claims that she has patent rights on Chin
Chun Su products after purchasing it from Quintin Cheng. The petitioner alleges that the
Respondent Summerville misleads the public by advertising and selling the KEC products under the
brand name Chin Chan Su, in similar containers that KEC uses. She prays that the respondent
should be enjoined from infringing on the copyrights and patents of the petitioner.

Respondents’ defended that they are the exclusive and authorized importer, repacker and
distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan. The
respondents alleged that the Taiwan Company authorized them to register Chin Chan Su with the
Philippine Patent Office and that the KEC obtained the copyrights of the products through
misrepresentation and falsification of the said Quintin Cheng.

Issues:

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.

Ruling:

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 good or
services 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. The
scope of copyright is confined in literary and artistic works which are original intellectual creations in
the literary and artistic domain protected from the moment of creation. 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.

Petitioner has no right for the exclusive use of the subject trade name and its container. The
name and container of beauty cream products are proper subjects of a trademark inasmuch as the
same falls squarely within its definition. In order to be entitled to exclusively use of 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 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. Chin Chan Su which constitutes a trademark of a face cream
cannot be copyrighted. Therefore, Kho cannot invoke her copyright in order to have exclusive use
of the name.
 BAYANIHAN MUSIC vs. BMG

Facts:

On July 16, 1973, private respondent Jose Mari Chan (Chan) entered into a contract with
petitioner Bayanihan Music Philippines, Inc. (Bayanihan), whereunder the former assigned to the
latter all his rights, interests and participation over his musical composition "Can We Just Stop and
Talk A While” and subsequently "Afraid For Love To Fade". Bayanihan thereafter applied for and
was granted by the National Library a Certificate of Copyright Registration for each of the two
musical compositions.

Chan without the knowledge of Bayanihan authorized his co-respondent BMG Records
(Pilipinas) [BMG] to record and distribute the aforementioned musical compositions.

On August 8, 2000, Bayanihan filed with the Regional Trial Court at Quezon City a
complaint against Chan and BMG for violation of Section 216 of Republic Act No. 8293, otherwise
known as the Intellectual Property Code of the Philippines, with a prayer for the issuance of
Temporary Restraining Order (TRO) and/or writ of preliminary injunction, enjoining respondent
BMG from further recording and distributing the subject musical compositions in whatever form of
musical products, and Chan from further granting any authority to record and distribute the same
musical compositions.

Lower court came out with an order denying Bayanihan's prayer for TRO stating that
plaintiff has not been able to show its entitlement to the relief of TRO. The same court, in its
subsequent likewise denied Bayanihan's prayer for a writ of preliminary injunction. Its motion for a
reconsideration of the same order was likewise denied by the trial court. The Court of Appeals on a
petition for certiorari denied its prayers for a writ of preliminary injunction and motion for
reconsideration and upheld the challenged orders of the trial court on the groud that Bayanihan
failed to present that he has existing rights over the creation and which right should be protected.

Issue:

Whether or not the CA erred in upholding the decision of the trial court finding no merit in
petitioner's application for the issuance of a writ of preliminary injunction on the ground that the
petitioner has no right over the creation of Chan.

Ruling:

The court upholds the decision of the CA.

Respondent Chan, being undeniably the composer and author of the lyrics of the two (2)
songs, is protected by the mere fact alone that he is the creator thereof, conformably with Republic
Act No. 8293, otherwise known as the Intellectual Property Code, Section 172.2 of which reads:

172.2. Works are protected by the sole fact of their creation, irrespective of their
mode or form of expression, as well as of their content, quality and purpose.
 An examination of petitioner's verified complaint in light of the two (2) contracts, 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.

The two contracts between petitioner and Chan relative to the musical compositions subject
of the suit contain stipulations stating that in the event the PUBLISHER fails to use in any manner
whatsoever within two (2) years any of the compositions covered by this contract, then such
composition may be

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.

Anent the copyrights obtained by petitioner on the basis of the selfsame two (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, because respondent Chan had put in issue
the existence thereof.
 VENUS LUBRIN vs. GLENN “COCO” DELA CRUZ

Facts:

Sometime in October of 2006, Defendant, together with Ihman Esturco, convinced Lubrin
via telephone to be the producer of their film project TROIKA (Threesome), with their offer that,
upon completion of said film project, they would sell to her the film and all rights thereto, and in
effect, Lubrin would be the sole owner of the film.

A Memorandum of Agreement dated November 6, 2006, containing relevant clause/s

demonstrating the agreement that Lubrin would be sole owner of said film.

Later on, defendants convinced Lubrin to finance and set up a film production company,
DAVEN FILM PRODUCTIONS INTERNATIONAL (Daven Productions), with the
understanding that the Company would receive Production credits for the film Troika, with Lubrin
as Executive Producer. The Company was set up under the name of Eric Dela Cruz Datu, (a
dummy person) since Lubrin was still in U.S.with Defendant installed as Operations Manager. One
of Defendant’s important tasks, both under his agreement with Lubrin and as an employee of
Daven Productions, was to secure copyright for the film Troika under her name and/or the name of
Daven Productions.

Lubrin discovered that the defendant was using the funds for their personal use so she
caused the termination of the defendant and Ihman Esturco. Furthermore Lubrin found out that
defendant had copyrighted the film Troika with the National Library under his own name of ‘Glenn
Coco Dela Cruz’, applied for on April 5, 2007, and awarded on April 23, 2007.

Furthermore the Troika Coffee Table Book(a promotional material for the movie) which
was supposed to be copyrighted under the name of Daven Productions,was copyrighted instead
under Defendant’s name.

The defendant denied all the allegations claimed by Lubrin which prompted the
Plaintiff(Lubrin) to file a case against defendant.

Issues:

i. Whether or not the Plaintiff owns the copyright over the film TROIKA and derivative
works;
ii. Whether or not respondent is guilty of copyright infringement.

Held:

i. Yes.

Sec. 178 of Rep. Act No. 8293, also known as the Intellectual Property Code of the
Philippines (IP Code”), states:
 Sec. 178. Rules of Copyright Ownership. - Copyright ownership shall be governed by the
following rules:

178.1 Subject to the provisions of this Section, in the case of original literary arid artistic
words, copyright shall belong to the author of the work; x (Emphasis Supplied’

It is undisputed that the Respondent initiated the film project TROIKA and the one who
was in charge of the film’s conceptualization and production. In essence, the Respondent is deemed
the author and the copyright owner of the film.

The Complainant’s case, however, is anchored on her claim that the ownership and
copyright over the film have already been passed on to her. She submitted as evidence the
Memorandum of Agreement (MOA) she executed with the Respondent on 06 November 2006

The rights that were transferred to the Complainant when she complied wither commitment
under the MOA are the ones or similar to those enumerated in Sec. 177 of the IP Code, to Wit:

Sec. 177. Copyright or Economic Rights. - Subject to the provisions of Chapter VIII,
copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent
the following acts:

177.1. Reproduction of the work or substantial portion of the work;

177.2. Dramatization, translation, adaptation, abridgment, arrangement or other
transformation of the work;
177.3. The first public distribution of the original and each copy of the work by sale or other
forms of transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or cinematographic work, a work
embodied in a sound recording, a computer program, a compilation of data and other
materials or a musical work in graphic form, irrespective of the ownership of the original or
the copy which is the subject of the rental;
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the work.

Thus, it is obvious that the rights transferred to the Complainant are copyright or economic
rights over the film TROIKA. Sec. 180 of the IP Code provides:

Sec. 180. Right of Assignee. - 180.1 The copyright may be assigned in whole or in part.
Within the scope of the assignment, the assignee is entitled to all rights and remedies which the
assignor had with respect to the copyright.

Accordingly, under the law, the assignee of a copyrighted work acquires the very same
economic rights that the original owner had under Sec. 177 of the IP Code. In this regard, this
Bureau finds untenable the Respondent’s argument that when the Complainant obtained ownership
of the film, it did not include all other rights appended to it because the latter’s acquisition of the
film product TROIKA only included the right to exhibit it to theaters within the Philippines. ‘The
second paragraph of Item III of the MOA is not a continuation of the first paragraph. It is the right
of the Complainant under the MOA.

It is emphasized that the MOA is a contract which is a meeting of minds between two
persons whereby one binds himself, with respect to the other, to give something or to render some
service. It went through the stages of a valid contract: negotiation perfection and consummation.
The last stage is the consummation of the contract wherein the parties fulfill or perform the terms
agreed upon in the contract, culminating in the extinguishment thereof.Therefore, the MOA in the
instant case is a perfected contract which contains the intent and consent of the parties. It is binding
and obligatory.

Accordingly, the MOA has to be interpreted from its own language and according to its
plain and ordinary meaning. The cardinal rule in the interpretation of contracts is embodied in the
first paragraph of Art. 1370 of the Civil Code which states that if the terms of a contract are clear
and leave no doubt upon the intention of the contracting parties, the literal meaning of its
stipulations shall control. This provision is akin to the “plain meaning rule”, which assumes that the
intent of the parties to an instrument is embodied in the writing itself, and when the words are clear
and unambiguous the intent is to be discovered only from the express language of the agreement.

What was transferred to the Complainant is the ownership of an intangible right involving
an intellectual property. The Bureau finds the MOA not ambiguous, thus, there is no reason to
come up with a different interpretation.

Considering that the copyright on the film project Troika was transferred or assigned to the
Complainant, she acquired the economic rights over the work, among other things. Consequently,
any person including the transfer or the assignor original owner, is liable for acts that infringe the
assignee’s economic rights.

ii. Yes.

The respondent continuously represented himself as the owner of the work when he
registered and filed an application for copyright ownership of the film Troika and its derivative work
in the National Library7 on April 2007, when in fact, the same work was already transferred and
assigned to the Complainant on 06 November 2006. Moreover, the Respondent caused the
reproduction of the work, the public distribution of the original and the public performance of the
work, and other communication to the public of the work8 when it submitted the subject work to
Locarno Film Festival under his name9. These are acts which constitute infringement of copyright.

The Supreme Court held that :

“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.”
 The Respondent has no more right or legal basis to obtain “copyright registration” on April
2007 over the original work’’ of the film project Troika (Threesome) and to claim the ownership on
derivative works’ which consists of associated promotional materials including Troika Coffee Table
Book. A derivative work is defined as a work based upon one or more existing works, such as a
translation, musical arrangement, dramatization, fictionalization, motion picture version, sound
recording, art reproduction, abridgment, condensation or any other form in which a word may be
recast, transformed or adapted)5 Thus, what is protected in the derivative work is the original idea
set in and reformed by the person who derived it from such original work.
 ISLE ORIGINALS, INC., ET AL., vs. SOSAN INDUSTRIES, INC., ET AL.,
(1995) 95 O.G. 3479, 3487

Facts:

Plaintiff Isle is engaged in the business of designing, manufacturing, distribution, and

exportation of all kinds of baskets and similar containers. One of its products is the Wicker
Flowershop Basket No. S206 which has a house shaped design which was issued a copyright
certificate of registration from the National Library, as well as a US Copyright Registration
certificate. Said ornamental design was created by Mrs. Joyce Martin. As a result of Isle’s extensive
sales and advertising of the “flowershop” basket design and the widespread marketing of said
product here and abroad, the same has come to be and is now well known to the public as plaintiff’s
product.

However, subsequent to plaintiff’s creation, registration and use of said product, defendant
Sosan manufactured, distributed, and sold a basket design which is confusingly similar or a deceptive
copy to that of plaintiff’s. This prompted plaintiff Isle to file a Complaint for Infringement of
Copyright with Preliminary Injunction against defendant Sosan before the RTC of Quezon City.

Sosan denied the allegations of Isle. It argued that plaintiff is not entitled to the alleged
copyright because said product is not an original ornamental design. Sosan claimed that Mrs. Joyce
Martin was the creator of the basket design, then it should follow that the copyright registration
should have been issued in the name of Mrs. Martin and not Isle as mandated by Section 6 of PD
49. Sosan emphasized that Isle has no legal personality to pursue an action against them. The court
then issued a temporary restraining order and after due hearing, the corresponding writ of
preliminary injunction was issued.

Defendant Sosan then filed a Motion to Lift Injunction which was denied by the trial court.
Their subsequent motion for reconsideration was also denied. Defendant then filed a Motion to
Suspend Proceedings in view of the filing of a complaint by a certain Stephen Bunyi praying for the
cancellation of copyright registration issued to Isle. Said motion was likewise denied by the trial
court.

Defendant Sosan then brought the issue before the Court of Appeals alleging grave abuse of
discretion on the part of the trial court in issuing the injunction. They also filed numerous motions
to suspend proceedings but which were denied by the appellate court.

Issue:

Whether or not Isle has a legal personality to pursue the action against Sosan.

Ruling:

Yes, Isle has a legal personality to pursue the action against Sosan.

The Court explained that the fact that the copyright registration issued in favor of Isle has
not yet been annulled, Isle has the right to file and pursue a case for infringement of copyright to
whoever use or copy its house basket design. Considering that there was no declaration of its
invalidity, the same is valid and subsisting.

Sosan contested the “Pre-Incorporation Papers” presented by Isle as evidence. It argued that
these were only introduced to give an impression of assignment in order to give legal personality to
the plaintiff to pursue an action for infringement when there was no perfected transfer, in
accordance with Sec. 19 of PD 49. It further argued that there was no evidence presented as proof
of recording of such assignment in the copyright office or publication in the official Gazette.
However, the Court disagree.

The Court explained that a failure of recording such assignment of Mrs. Joyce Martin in
favor of Isle does not affect the validity thereof as elucidated in the Law on Intellectual and
Industrial Property of the UP Law Center. A failure to record an assignment of the copyright as
provided in Sec. 19 of PD 49 does not defeat the assignee’s right to pursue infringers, since the
purpose of the recording provision of that section is to protect subsequent purchasers or
mortgagees for value and without notice, the section being similar in principle to the filing and
recording statute relating to chattel mortgages.
 MARY JO EDUCATIONAL SUPPLY AND PUBLISHER v. ROMCO PUBLISHING
HOUSE
CA-G.R. C.V. No. 76996, May 31, 2006, SPECIAL FIRST DIVISION (Santiago-Lagman, J.)

If the author of a book assigned his copyright twice to different persons, the first assignee has a better right to
it even if the second assignee was able to register the assignment with the National Library first, if he actually knew of
the first assignment.

Facts:

Mary Jo Publisher entered into a contract of sale of rights with defendant-appellant Pascual
F. Jardiniano, author of the book entitled Philippine Barangay Justice System and registered owner
of the copyright thereof. Under the contract, Jardiniano sold, transferred and conveyed his copyright
unto Mary Jo Publisher for a consideration of P 80,000.00. It was also stipulated that said copyright
of the book shall belong to both Mary Jo Publisher and Jardiniano, and that the latter is
“prohibited/inhibited in the preparation/publication of any manuscript/books or the like which in
one way of the other is similar to or related to the subject matter of the book.” A Certification was
likewise issued by Jaridiniano and notarized to the effect that Mary Jo Publisher is the exclusive
publisher and distributor of the newly released book.

ROMCO, through its representatives met with the representatives of Mary Jo Publisher.
The former proposed to buy Mary Jo’s right over the book Philippine Barangay Justice System, but
said proposal was turned down. Notwithstanding this, ROMCO secured a Certificate of Copyright
Registration from the National Library, Department of Education and Culture over a book entitled
Katarungang Pambarangay (KP) Training Manual. It was likewise authored by Jardiniano, and is
basically a substantial reproduction of the Philippine Barangay Justice System, the right over which
was earlier sold by Jardiniano to its first publisher.

Later on, Mary Jo Publisher also secured a Certificate from the National Library over the
book Brangay Justice System, and filed a complaint for damages with a prayer for the issuance of a
temporary restraining order or injunction against ROMCO before the court a quo.

The trial court rendered a decision in favor of Mary Jo. Hence, this appeal by ROMCO.

Issue:

Whether or not ROMCO and Jariniano are liable to Mary Jo Publisher for damages and
attorney’s fees on account of their publication of the book KP Training Manual.

Held:
 YES. The facts borne out by the records do not agree with ROMCO’s conclusion that Mary
Jo Publisher is a mere assignee or proprietor of the book authored by Jadiniano. The Deed of Sale
of Rights between Jardiniano and Mary Jo Publisher clearly stipulated that the former had
transferred and conveyed unto the latter his copyright over the book Philippine Barangay Justice
System. The Deed categorically stated that the copyright of the book shall belong to both Mary Jo
Publisher and Jardiniano, and that the latter is prohibited/inhibited in the preparation/publication of
any manuscript/books or the like which in one way or the other is similar to or related to the subject
matter of the book. What is more, a Certification was likewise issued by Jardiniano explicitly
declaring Mary Jo Publisher is the exclusive publisher and distributor of the newly released book.

While it is true that ROMCO had complied with the requirements of deposit and notice and
had secured a Certificate of Registration ahead of Mary Jo Publisher, the Court is more inclined to
give weight to Mary Jo Publisher’s Certificate. ROMCO’s act of securing said Certificate was
obviously a mere afterthought to give its publication of the KP Training Manual a semblance of
legality, having realized that Mary Jo Publisher had beforehand already the right of Jardiniano to the
book Philippine Barangay Justice System.

Also, although obtained later, the Certificate itself states that its effectivity retroacts to and
commences from the date of creation of the work it covers.
Version 1

FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC., plaintiff-

appellant, vs. BENJAMIN TAN, defendant-appellee.
G.R. No. L-36402 March 16, 1987

If the general public has made use of the object sought to be copyrighted for thirty (30) days prior to the copyright
application the law deems the object to have been donated to the public domain and the same can no longer be
copyrighted.

Facts:

Benjamin Tan owns Alex Soda Foundation and Restaurant where a combo of professional
singers was hired to play and sing musical compositions owned by FILSCAP to entertain and amuse
the customers.

Now comes FILSCAP demanding Tan of the necessary fee for the playing and singing of
the former’s compositions but this demand was ignored.

Plaintiff filed a complaint against Tan for infringement of copyright for allowing the playing
in defendant-appellee's restaurant of said songs copyrighted in the name of FILSCAP.

Defendant-appellee, in his answer, countered that the complaint states no cause of action.
While not denying the playing of said copyrighted compositions in his establishment, appellee
maintains that the mere singing and playing of songs and popular tunes even if they are copyrighted
do not constitute an infringement.

The lower court dismissed the complaint.

The appellate court certified the case to the Supreme Court for adjudication on the legal
question involved.

Issue:

1. Whether or not the playing and signing of musical compositions which have been
copyrighted under the provisions of the Copyright Law (Act 3134) inside the establishment
of the defendant-appellee constitute a public performance for profit within the meaning and
contemplation of the Copyright Law of the Philippines

2. Assuming that there were indeed public performances for profit, whether or not appellee
can be held liable therefor

Held:

1. YES. There were public performances for profit. It is admitted that the patrons of the
restaurant in question pay only for the food and drinks and apparently not for listening to
the music. The music provided is for the purpose of entertaining and amusing the customers
 in order to make the establishment more attractive and desirable. It will be noted that for the
playing and singing the musical compositions involved, the combo was paid as independent
contractors by the appellant. It is therefore obvious that the expenses entailed thereby are
added to the overhead of the restaurant which are either eventually charged in the price of
the food and drinks or to the overall total of additional income produced by the bigger
volume of business which the entertainment was programmed to attract. Consequently, it is
beyond question that the playing and singing of the combo in defendant-appellee's
restaurant constituted performance for profit contemplated by the Copyright Law.

2. NO. The appellee cannot be held liable for infringement of copyright of FILSCAP’s
compositions. The Supreme Court has ruled that "Paragraph 33 of Patent Office
Administrative Order No. 3 (as amended, dated September 18, 1947) an intellectual creation
should be copyrighted thirty (30) days after its publication, if made in Manila, or within the
(60) days if made elsewhere, failure of which renders such creation public property1. If the
general public has made use of the object sought to be copyrighted for thirty (30) days prior
to the copyright application the law deems the object to have been donated to the public
domain and the same can no longer be copyrighted.

Premises considered, the Supreme Court affirmed the appealed decision.

1A careful study of the records reveals that the song "Dahil Sa Iyo" which was registered on April 20, 1956 (Brief for Appellant, p. 10) became
popular 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
January 14, 1955 (Brief for Appellant, p. 10) had become popular twenty five (25) years prior to 1968, (the year of the hearing) or from 1943
(TSN, May 28, 1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao Lamang" both registered on July 10, 1966, appear
to have been known and sang by the witnesses as early as 1965 or three years before the hearing in 1968. The testimonies of the witnesses at
the hearing of this case on this subject were unrebutted by the appellant. (Ibid, pp. 28; 29 and 30).
Version 2

FILIPINO SOCIETY OF COMPOSERS v TAN

G.R. No. L-36402 | March 16, 1987

Facts:

Plaintiff-appellant is a non-profit association of authors, composers and publishers. Said

association is the owner of certain musical compositions among which are the songs entitled: "Dahil
Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness Of You."

Defendant-appellee is the operator of a restaurant known as "Alex Soda Foundation and

Restaurant" where a combo with professional singers, hired to play and sing musical compositions
to entertain and amuse customers therein, were playing and singing the above-mentioned
compositions without any license or permission from the appellant to play or sing the same.
Appellant demanded from the appellee payment of the necessary license fee for the playing and
singing of the said compositions but such was ignored. Appellant filed a complaint with the lower
court for infringement of copyright against defendant-appellee for allowing the playing in defendant-
appellee's restaurant of said songs copyrighted in the name of the former. Defendant countered
saying that mere singing and playing of songs and popular tunes even if they are copyrighted do not
constitute an infringement. The lower court ruled in favor of the defendant but the CA reversed the
same.

Issue:

WON the playing and singing of musical compositions which have been copyrighted inside
the establishment of the defendant-appellee constitute a public performance for profit within the
meaning and contemplation of the Copyright Law of the Philippines.

Ruling:

No. It has been held that "The playing of music in dine and dance establishment which was
paid for by the public in purchases of food and drink constituted "performance for profit" within a
Copyright Law." Thus, it has been explained that while it is possible in such establishments for the
patrons to purchase their food and drinks and at the same time dance to the music of the orchestra,
the music is furnished and used by the orchestra for the purpose of inducing the public to patronize
the establishment and pay for the entertainment in the purchase of food and drinks. The defendant
conducts his place of business for profit, and it is public; and the music is performed for profit.

Nevertheless, appellee cannot be said to have infringed upon the Copyright Law. Appellee's
allegation that the composers of the contested musical compositions waived their right in favor of the
general public when they allowed their intellectual creations to become property of the public
domain before applying for the corresponding copyrights for the same (Brief for Defendant-
Appellee, pp. 14-15) is correct.

The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative Order No.
3 (as amended, dated September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office
relating to the Registration of Copyright Claims' promulgated pursuant to Republic Act 165,
provides among other things that an intellectual creation should be copyrighted thirty (30) days after
its publication, if made in Manila, or within the (60) days if made elsewhere, failure of which renders
such creation public property.". Indeed, if the general public has made use of the object sought to be
copyrighted for thirty (30) days prior to the copyright application the law deems the object to have
been donated to the public domain and the same can no longer be copyrighted.

Under the circumstances, it is clear that the musical compositions in question had long
become public property, and are therefore beyond the protection of the Copyright Law.
 PHILIPPINE EDUCATION COMPANY, INC. v. VICENTE SOTTO and V.R.
ALINDADA
52 Phil. 580, January 29, 1929, Ponente: J. Johns

Facts:

Philippine Education Company, Inc. (PECI), a proprietor of the monthly magazine

Philippine Education Magazine, contracted with Austin Craig for the preparation and publication of
an original article to be written by him concerning Mrs. Jose Rizal, to be published in the Philippine
Education Magazine. Craig then prepared and wrote an original article entitled “The True Story of
Mrs. Rizal” and delivered it to PECI which paid him for it. The same was printed and published in
the December 1927 issue then put in market for sale. In every issue, it gave a notice that all rights
thereto were reserved.

Later on, Sotto, the proprietor and publisher of a weekly newspaper known as The
Independent and Alindada, the editor, allegedly appropriated, copied and published the article
unlawfully and without the knowledge and consent of PECI in The Independent of December 24th
and 31st, 1927, without citing the PECI as source. Upon discovery, PECI requested thru a letter that
on the former’s next issue, they cite it as the source of the article in some prominent place.
However, notwithstanding the letter, the publication of the article was continued.

Alindada advised PECI in substance that it had not registered such right under the
Copyright Law. Consequently, PECI sued Sotto and Alindada for damages.

Issue: WON the article may be reproduced considering that PECI has not registered the same in its
name and merely served a notice that it reserved the rights to publication

Held:

No, not without giving the source of the reproduction.

The present case calls for the interpretation of Section 5 of Copyright Law.

Analyzing the language used, such editorial paragraphs and articles in periodicals may be
reproduced unless they contain a notice that their publication is reserved or unless they contain a
notice of copyright. In either event, the law specifically provides that the source of the reproduction
or original reproduced shall be cited. To give the Section another construction would be to nullify,
eliminate and take from the paragraph the works “they contain a notice that their publication is
reserved. The words are plain and clear, it should be applied.

In the case at bar, PECI did not give notice of its copyright for the simple reason that it did
not have one but it did notify Sotto and Alindada that in the publication of the article “we reserved
all right,” which was legally equivalent to a notice of copyright. Furthermore, the latter would have
had the legal right to publish the article by giving the source of the reproduction to which it failed
to. Above and beyond all this, it would seem that upon the undisputed facts in this case, common
courtesy among newspaper men would suggest that the defendant would give "the source of the
reproduction." It would have been a very simple and an easy thing to do.
 GMA NETWORK, INC., FELIPE L. GOZON, GILBERTO R. DUAVIT, JR., MARISSA
L. FLORES, JESSICA A. SOHO, GRACE DE LA PEÑA-REYES AND JOHN OLIVER T.
MANALASTAS VS. SECRETARY OF THE DEPARTMENT OF JUSTICE, AND ABS-
CBN BROADCASTING CORPORATION
CA-G.R. SP No. 115751, November 9, 2010, GUEVARA-SALONGA, J.

Facts:

Overseas Filipino worker Angelo dela Cruz was kidnapped by Iraqi militants and as a
condition for his release, a demand was made for the withdrawal of Filipino troops in Iraq. After
negotiations, he was released by his captors and was scheduled to return to the country. Occasioned
by said homecoming and the public interest it generated, both petitioner GMA Network, Inc and
private respondent had made their respective broadcasts and coverage of the live event.

On its part, private respondent conducted a live audio-video coverage of and broadcasted
the arrival of dela Cruz at NAIA and the subsequent press conference. On account of their existing
agreement, private respondent’s subject news coverage was also carried by Reuters Television
Service. As stipulated under their agreement, any footage coming from private respondent would be
considered and treated by Reuters under “embargo” against use by its other subscribers in the
Philippines.

Petitioner GMA, on the other hand, assigned and stationed news reporters and technical
men at the NAIA for its live broadcast and non-live news coverage of the arrival of dela Cruz. Being
a subscriber of both Reuters and CNN, it received the live video feed of the coverage of said arrival
that was beamed by Reuters from the NAIA. Immediately, petitioner GMA carried the Reuters feed
in its news bulletin “Flash Report” simultaneously with its own live broadcast. Allegedly, at that
time, petitioner GMA did not have any notice of the fact that what Reuters was airing had been
footages of private respondent and that said live video feed was under embargo in favor of the
latter.

Private respondent a complaint against petitioners for violation of the provisions of Section
177 and 211 of the Intellectual Property Code.

Issue:

Whether or not petitioners can be held liable for the violation of the provisions of Section
177 and 211 of the Intellectual Property Code

Ruling:

Petitioners cannot be held legally liable for copyright infringement.

The act of petitioners in airing the five second footage was undeniably attended by good
faith and it thus serves to exculpate them from criminal liability under the Code. While the
Intellectual Property Code is a special law, and thus generally categorized as malum prohibitum, it
bears to stress that the provisions of the Code itself do not ipso facto penalize a person or entity for
copyright infringement by the mere fact that one had used a copyrighted work or material.
 Petitioner GMA did not have notice of the embargo. In fact, immediately upon realizing that
it was actually the private respondent, and not Reuters or CNN, that was covering said news
coverage, petitioners dela Peña and Manalastas stopped using the video footage. Immediately, they
called the representative of Reuters to verify the embargo. All these bespeak of petitioners’ good
faith. True, petitioners committed the alleged infringement by airing a portion of the subject news
coverage. However, they did not have notice or knowledge that the video feed that they had actually
received from Reuters and CNN exclusively belongs to private respondent. Neither did they
intentionally cause injury to the private respondent with the airing of the questioned five second
footage.

Furthermore, the inadvertent airing of the five second footage squarely falls within the scope
of Section 212 of the Code 16 considering that said footage constitutes a mere short excerpt
compared to the entirety of the subject news footage. After receiving the live video feed that Reuters
and CNN had beamed to their subscribers, petitioners re-broadcasted it without knowledge that
there was an embargo in favor of private respondent.

Perforce, since the nature of said news footage is undeniably newsworthy being a current
event, that the amount and substantiality of the portion used in relation to the copyrighted work as a
whole is minimal and that the same had been used for news reporting, the airing of the five second
footage constitutes fair use under Section 185.1 in relation to Section 212.4 of the Intellectual
Property Code and thus cannot be considered as a copyright infringement.
 WILTON DY vs. KONINKLIJKE PHILIPS ELECTRONICS

Facts:

On 12 April 2000, petitioner PHILITES filed a trademark application covering its

fluorescent bulb, incandescent light, starter and ballast. After publication, respondent Koninklijke
Philips Electronics, N.V. ("PHILIPS") filed a Verified Notice of Opposition on 17 March 2006 on
the following grounds that it is contrary to the provisions of RA 8293 or the Intellectual Property
Code, it will cause grave and irreparable damage and injury to Philips, registration of the Petitioner
will cause confusion and mislead the public.

On 8 August 2006, petitioner filed a Verified Answer, stating that its PHILITES &
LETTER P DEVICE trademark and respondent's PHILIPS have vast dissimilarities in terms of
spelling, sound and meaning.

After series of hearings, a Decision was rendered in favor of Petitioner PHILITES, denying
the Opposition of Philips, thus, granting the approval of petitioner’s trademark application.

In upholding petitioner's trademark application, the Intellectual Property Philippines Bureau

of Legal Affairs (IPP-BLA) stated that assuming respondent's mark was well-known in the
Philippines, there should have been prior determination of whether or not the mark under
application for registration was "identical with, or confusingly similar to, or constitutes a translation
of such well-known mark in order that the owner of the well-known mark can prevent its
registration." From the evidence presented, the IPP-BLA concluded that the PHILIPS and
PHILITES marks were so unlike, both visually and aurally. It held that no confusion was likely to
occur, despite their contemporaneous use, based on the following observations:

The Philips shield mark has four stars in different sizes located at the north east and south
west portions inside a circle within the shield. There are three wavy lines dissecting the middle of the
circle. None of these appear in the respondent's mark. Moreover, by mere pronouncing the two
marks, the phonetic sounds produced when each mark is uttered are not the same. The last syllable
of respondent's mark is uttered in a long vowel sound, while the last vowel of the opposer's mark is
not. Also, there appears to be other advertising slogans that appear in respondent's package such as
the words, "new", "prolong lite life", "E-coat finished" and "with additional 35% more than
ordinary". These phrases are absent in opposer's package. These phrases can be considered in the
nature of descriptive terms that can be appropriated by anyone.

Upon appeal, the IPP Office of the Director General (IPP-DG) rendered a Decision on 16
April 2008, affirming the ruling of the IPP-BLA.
Philips elevated the matter to the Court of Appeals through Petition for Review where a
Decision was rendered in their favor, granting said Petition and reversing and setting aside the
Decision of IPP-DG and dismissing the application for trademark of Philites.

On 25 October 2008, Philites filed a Motion for Reconsideration, which was denied in a
Resolution issued by the CA on 18 December 2008.

Issues:
1. (1) Whether or not respondent's mark is a registered and well-known mark in the
Philippines. YES!

2. (2) Whether or not the mark applied for by petitioner is identical or confusingly similar with
that of respondent. YES!

Ruling:

The Supreme Court affirmed the status of the trademark “PHILIPS” as a well-known mark,
internationally and in the Philippines, as held in an earlier decision in Philips Export B.V. v Court of
Appeals.

In resolving the issue of confusing similarity in respondent’s favor, the Supreme Court
applied both the dominancy and holistic tests. The dominancy test focuses on “the similarity of the
prevalent or dominant features of the competing trademarks that might cause confusion, mistake,
and deception in the mind of the purchasing public” and emphasis is made on “the aural and visual
impressions created by the marks on the buyers of goods, giving little weight to factors like prices,
quality, sales, outlets and market segments”. On the other hand, the holistic test requires a
consideration of the entirety of the marks as applied to the products, including the labels and
packaging”.

The Supreme Court, applying the dominancy test, observed that the dominant feature is the
five-letter component of the competing marks,“P” “H” “I” “L” “I”, which is “PHILIPS” for
respondent and “PHILITES” for the petitioner. The Supreme Court said that this dominant feature
visually catches the attention of the consuming public who does not have the luxury of time to
“ruminate the phonetic sounds of the trademarks to find out which one has a short or long vowel
sound” . The Supreme Court further pointed out that petitioner and respondent are engaged in the
same line of business and that both marks are used on the same goods, which are light bulbs.

Further applying the holistic test, the Supreme Court examined the entirety of the marks as
applied on the products including the way the goods are packaged. The Supreme Court noted that
the ”PHILITES” trademark that petitioner actually seeks to register is vastly different from the
trademark that it actually uses on the container and packaging of its light bulb products. The
Supreme Court compared petitioner’s “PHILITES” trademark shown on the container and
packaging of its light bulb products with the respondent’s “PHILIPS” trademark as used in the
wrapper or packaging of its products, and thus concluded that there is “a strong similitude and
likeness between the two trademarks”. The Supreme Court, affirmed the Court of Appeals’ decision,
and similarly set aside negligible differences in the use of a slightly different font and hue of the
color yellow in the parties’ respective packaging of the goods. The Supreme Court concluded that
the use of “PHILITES” will “likely cause confusion or deception to the ordinary purchaser with a
modicum of intelligence”.

This case is of special significance because the Supreme Court used both the dominancy and
holistic tests in determining the likelihood of confusion between the competing marks.
 RAYMUND CATABIJAN, doing business under the name and style St. Matthew’s
Publishing v. La Concepcion College Inc.
IPV No. 10-2009-00009, February 28, 2013

Facts:

Mr. Catabijan is the owner of copyrights over certain nursery, kinder, and preschool books
through St. Matthew’s Publishing. Mr. Catabijan came to know that La Concepcion College is selling
books almost entirely the same as his through Jocelyn Cariño. Ms. Cariño, whose son is a student in
La Concepcion College, noticed that the books she bought were made of poor quality paper and
that the books were exactly the same as that of the books his other son in another school is using.
She contacted the publisher of Mr. Catabijan and made purchases of the other books sold in La
Concepcion College to compare it to Mr. Catabijan’s works. It was seen from the comparison that
the books were reproduced without consent nor acknowledgement of the owner. This prompted
Mr. Catabijan to demand from the respondent, among others, to cease and desist from from further
infringing his copyrights but to no avail. Mr. Catabijan was then forced to hire a legal counsel for the
filing of copyright infringement case against La Concepcion College. During trial, it was only
thecomplainant and his counsel who were present thereby declaring the respondent in default.

Issue:

WON La Concepcion College is guilty of copyright infringement.

Held:

YES. The complainant was able to prove through substantial evidence that the books sold
by La Concepcion College were indeed the same as his published works and these are registered
copyrights with the National Library. From the scrutiny of the books, the books sold by the
respondent was shown to be mere replication of the complainant’s books and even the table of
contents, graphics, and exercises were copied by the respondent. It is also shown through the
demand to cease and desist of the complainant that the reproduction of the books were done
without his consent nor was there any acknowledgement of his ownership. The respondent is
thereby ordered to pay actual damages of 8,450, attorney’s fees of 400,000 and exemplary damages
of 500,000.