LAW ON INTELLECTUAL PROPERTY
CASE DOCTRINES
V. COPYRIGHT
► COPYRIGHT DISTINGUISHED FROM TRADEMARK AND PATENTS
1. Pearl & Dean vs. Shoemart, Inc. [2003]
Factual milieu:
 Pearl & Dean is the owner of a trademark (‚Poster Ads‛) and copyrights
for the manufacture of advertising units simply referred to as light
boxes. These units utilize specially printed posters sandwiched between
plastic sheets and illuminated with back lights.
 Pearl & Dean sued Shoemart, Inc. for infringement of trademark and
copyright, unfair competition and damages for the unauthorized
manufacture of the said light boxes.
Legal issue: Distinctions between trademark, copyright and patent.
 Trademark, copyright and patents are different intellectual property rights
that cannot be interchanged with one another. A trademark is any visible
sign capable of distinguishing the goods (trademark) or services (service
mark) of an enterprise and shall include a stamped or marked container of
goods. In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise. Meanwhile, the scope of a
copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from the
moment of their creation. Patentable inventions, on the other hand, refer to
any technical solution of a problem in any field of human activity which is
new, involves an inventive step and is industrially applicable.
 In the case of Baker vs. Selden, the US Supreme Court held that only the
expression of an idea is protected by copyright, not the idea itself. To give
to the author of the book an exclusive property in the art described therein,
when no examination of its novelty has ever been officially made, would be
a surprise and a fraud upon the public. That is the province of letters
patent, not of copyright. The claim to an invention of discovery of an art or
manufacture must be subjected to the examination of the Patent Office
before an exclusive right therein can be obtained; and a patent from the
government can only secure it. The description of the art in a book, though
entitled to the benefit of copyright, lays no foundation for an exclusive
claim to the art itself. The object of the one is explanation; the object of the
other is use. The former may be secured by copyright. The latter can only
be secured, if it can be secured at all, by letters patent.
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Factual issue: Is SMI liable for copyright infringement? – NO.
 The copyright was limited to the drawings alone and not to the light
box itself.
 Copyright, in the strict sense of the term, is purely a statutory right.
Being a mere statutory grant, the rights are limited to what the statute
confers. It may be obtained and enjoyed only with respect to the
subjects and by the persons, and on terms and conditions specified in
the statute. P & D secured its copyright under the classification class
"O" work. This being so, petitioner’s copyright protection extended only
to the technical drawings and not to the light box itself because the
latter was not at all in the category of "prints, pictorial illustrations,
advertising copies, labels, tags and box wraps." Stated otherwise, even
as we find that P & D indeed owned a valid copyright, the same could
have referred only to the technical drawings within the category of
"pictorial illustrations." It could not have possibly stretched out to
include the underlying light box.
Another factual issue: Is SMI liable for patent infringement? – NO.
 No patent, no protection.
 The patent law has a three-fold purpose: "first, patent law seeks to
foster and reward invention; second, it promotes disclosures of
inventions to stimulate further innovation and to permit the public to
practice the invention once the patent expires; third, the stringent
requirements for patent protection seek to ensure that ideas in the
public domain remain there for the free use of the public."
 Not having gone through the arduous examination for patents, the
petitioner cannot exclude others from the manufacture, sale or
commercial use of the light boxes on the sole basis of its copyright
certificate over the technical drawings.
Another factual issue: Is SMI liable for trademark infringement? – NO.
 P & D was able to secure a trademark certificate for it, but one where
the goods specified were "stationeries such as letterheads, envelopes,
calling cards and newsletters." Petitioner admitted it did not
commercially engage in or market these goods. On the contrary, it
dealt in electrically operated backlit advertising units and the sale of
advertising spaces thereon, which, however, were not at all specified in
the trademark certificate. One who has adopted and used a trademark
LIP Case Doctrines – RG Alfaro 
 on his goods does not prevent the adoption and use of the same
trademark by others for products which are of a different description.
 The failure of P & D to secure a trademark registration for specific use
on the light boxes meant that there could not have been any trademark
infringement since registration was an essential element thereof.
Last factual issue: Is SMI liable for unfair competition? – NO.
 There was no evidence that P & D’s use of "Poster Ads" was distinctive
or well-known. Petitioner’s expert witnesses himself had testified that
‘Poster Ads’ was too generic a name. So it was difficult to identify it with
any company. This crucial admission by its own expert witness that
"Poster Ads" could not be associated with P & D showed that, in the
mind of the public, the goods and services carrying the tr ademark
"Poster Ads" could not be distinguished from the goods and services of
other entities.
 This fact also prevented the application of the doctrine of secondary
meaning. "Poster Ads" was generic and incapable of being used as a
trademark because it was used in the field of poster advertising, the
very business engaged in by petitioner. "Secondary meaning" means
that a word or phrase originally incapable of exclusive appropriation
with reference to an article in the market (because it is geographically
or otherwise descriptive) might nevertheless have been used for so
long and so exclusively by one producer with reference to his article
that, in the trade and to that branch of the purchasing public, the word
or phrase has come to mean that the article was his property. The
admission by petitioner’s own expert witness that he himself could not
associate "Poster Ads" with petitioner P & D because it was "too
generic" definitely precluded the application of this exception.
2. Kho vs. CA [2002]
Factual milieu:
 Kho is the registered owner of copyrights Chin Chun Su and Oval Facial
Cream Container/Case. She also has patent rights on Chin Chun Su &
Device and Chin Chun Su for meditated cream after purchasing the
same from Quintin Cheng, the registered owner thereof in the
Supplemental Register of the Philippine Patent Office.
 Summerville General Merchandising is the exclusive and authorized
importer, re-packer and distributor of Chin Chun Su products
manufactured by Shun Yi Factory of Taiwan.
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 Kho sued Summerville for copyrights and patents infringement, and
filed a complaint for injunction and damages with a prayer for the
issuance of a writ of preliminary injunction.
 Summerville contends that Kho obtained the copyrights through
misrepresentation and falsification; and, that the authority of Quintin
Cheng, assignee of the patent registration certificate, to distribute and
market Chin Chun Su products in the Philippines had already been
terminated by the said Taiwanese Manufacturing Company.
 The RTC granted the injunction. CA reversed.
 Hence, this petition for certiorari.
Legal issue: Whether 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. – NO.
 Trademark, copyright and patents are different intellectual property
rights that cannot be interchanged with one another. A trademark is
any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or
marked container of goods. In relation thereto, a trade name means the
name or designation identifying or distinguishing an
enterprise. Meanwhile, the scope of a copyright is confined to literary
and artistic works which are original intellectual creations in the literary
and artistic domain protected from the moment of their
creation. Patentable inventions, on the other hand, refer to any
technical solution of a problem in any field of human activity which is
new, involves an inventive step and is industrially applicable.
 The name and container of a beauty cream product are proper subjects
of a trademark inasmuch as the same falls squarely within its definition.
In order to be entitled to exclusively use the same in the sale of the
beauty cream product, the user must sufficiently prove that she
registered or used it before anybody else did. The petitioner's copyright
and patent registration of the name and container would not guarantee
her the right to the exclusive use of the same for the reason that they
are not appropriate subjects of the said intellectual rights.
 Petition is DENIED.
LIP Case Doctrines – RG Alfaro 
3. Ching vs. Salinas [2005]
Factual milieu:
 Jessie Ching and Joseph Yu are the owners of certificates of copyright
of a utility model described as ‚Leaf Spring Eye Bushing for
Automobile.‛
 Ching requested the NBI to file application for search warrants against
Salinas, alleging the unauthorized reproduction and distribution of said
models in violation of Sections 177.1 and 177.3 of RA 8293.
 RTC issued the search warrants.
 Salinas filed a motion to quash on the ground that the subject matter
of the copyright registrations are not artistic or literary, they are
considered automotive spare parts and pertain to technology, hence,
are the proper subject of a patent, not copyright.
 RTC granted the motion.
 Ching filed a petition for certiorari with the CA. Dismissed.
 Hence, this case.
Legal issue: Does the RTC have jurisdiction to delve into and resolve the
validity of the copyright certificates in a proceeding for the issuance of a
search warrant? – YES.
 It bears stressing that upon the filing of the application for search
warrant, the RTC was duty-bound to determine whether probable cause
existed. For the RTC to determine whether the crime for infringement
under R.A. No. 8293 as alleged in an application is committed, the
petitioner-applicant was burdened to prove that
(a) respondents Jessie Ching and Joseph Yu were the owners of
copyrighted material; and
(b) the copyrighted material was being copied and distributed by the
respondents. Thus, the ownership of a valid copyright is essential.
 To determine whether or not the copyright is valid, it is indispensable
to determine if the subject matter of the copyright registration is
copyrightable. This is what the RTC correctly did.
Another legal issue: Is a utility model copyrightable? – NO.
 A utility model is a technical solution to a problem in any field of
human activity which is new and industrially applicable. It may be, or
may relate to, a product, or process, or an improvement of any of the
aforesaid. Essentially, a utility model refers to an invention in the
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mechanical field. This is the reason why its object is sometimes
described as a device or useful object. A utility model varies from an
invention, for which a patent for invention is, likewise, available, on at
least three aspects:
first, the requisite of "inventive step" in a patent for invention is not
required;
second, the maximum term of protection is only seven years compared
to a patent which is twenty years, both reckoned from the date of the
application; and
third, the provisions on utility model dispense with its substantive
examination and prefer for a less complicated system.
 To discharge his burden of probable cause for the issuance of a search
warrant for violation of R.A. No. 8293, the petitioner-applicant
submitted to the RTC Certificate of Copyright Registration, issued by
the National Library covering work identified as Leaf Spring Eye Bushing
for Automobile and Vehicle Bearing Cushion both classified under
Section 172.1(h) of R.A. No. 8293.
 SEC. 172. Literary and Artistic Works.
172.1. Literary and artistic works, hereinafter referred to as "works," are
original intellectual creations in the literary and artistic domain
protected from the moment of their creation and shall include in
particular:
(h) Original ornamental designs or models for articles of manufacture,
whether or not registrable as an industrial design, and other works of
applied art.
 Related to the provision is Section 171.10, which provides that a "work
of applied art" is an artistic creation with utilitarian functions or
incorporated in a useful article, whether made by hand or produced on
an industrial scale.
 The central inquiry is whether the article is a work of art. Works for
applied art include all original pictorials, graphics, and sculptural works
that are intended to be or have been embodied in useful article
regardless of factors such as mass production, commercial exploitation,
and the potential availability of design patent protection.
 As gleaned from the description of the models and their objectives,
these articles are useful articles which are defined as one having an
intrinsic utilitarian function that is not merely to portray the appearance
of the article or to convey information. Indeed, while works of applied
LIP Case Doctrines – RG Alfaro 
 art, original intellectual, literary and artistic works are copyrightable,  Private respondent Procter and Gamble Phils., Inc. filed a complaint for
useful articles and works of industrial design are not. A useful article injunction with damages and a prayer for temporary restraining order
may be copyrightable only if and only to the extent that such design and/or writ of preliminary injunction against petitioner to enjoin it from
incorporates pictorial, graphic, or sculptural features that can be airing the disputed TV commercial.
identified separately from, and are capable of existing independently of  Judge Gorospe granted the injunction.
the utilitarian aspects of the article.  Petitioner filed with CA a petition for certiorari, alleging grave abuse of
 In this case, the petitioner’s models are not works of applied art, nor discretion. Dismissed.
artistic works. They are utility models, useful articles, albeit with no
artistic design or value. Legal issue: Is registration required before the creator may be entitled to
protection from copyright infringement? – NO.
 Instant petition DENIED. CA decision AFFIRMED. Search warrants  Section 2 of PD 49 stipulates that the copyright for a work or
ANNULLED AND SET ASIDE. intellectual creation subsists from the moment of its creation.
Accordingly, the creator acquires copyright for his work right upon its
► COPYRIGHT OVER LITERARY AND WORKS IS VESTED FROM THE creation.
MOMENT OF CREATION  Contrary to petitioner’s contention, the intellectual creator’s exercise
and enjoyment of copyright for his work and the protection given by
1. Unilever PH vs. CA [2006]
Factual milieu: law to him is not contingent or dependent on any formality or
 As early as 1982, a Procter & Gamble subsidiary in Italy used a key registration.
visual in the advertisement of its laundry detergent and bleaching
products. This key visual known as the "double-tug" or "tac-tac"  Petition is DENIED.
demonstration shows the fabric being held by both hands and
stretched sideways.
 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 distinctive "tac-tac" key visual to local
consumers in the Philippines.
 1993 - Substantially and materially imitating the aforesaid "tac-tac" key
visual of P&GP and in blatant disregard of P&GP’s intellectual property
rights, Unilever started airing a 60 second television commercial "TVC"
of its "Breeze Powerwhite" laundry product called "Porky." The said TVC
included a stretching visual presentation and sound effects almost
identical or substantially similar to P&GP’s "tac-tac" key visual.
 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.

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► WORKS PROTECTED BY COPYRIGHT must be original, created by the author through his own skill, labor and
judgment, without directly copying or evasively imitating the work of
1. Sambas vs. Levi Strauss [2002]
another.
Factual milieu:
 Levi Strauss is an internationally known clothing manufacturer, owns
 Petition is DENIED.
the arcuate design trademark which was registered (in the US and in
the PH).
 Sometime in 1987, CVSGIC and Venancio Sambar, without the consent
and authority of Levi’s, 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.
 Levi’s sued Sambar and CVSGIC for infringement and unfair
competition with writ of preliminary injunction.
 CVSGIC claimed that it had its own original arcuate design, as
evidenced by a copyright registration, which was very different and
distinct from Levi’s design.
 Trial court and CA found that there is infringement, and ordered the
making of the writ of preliminary injunction permanent. It also ordered
defendants to pay damages to Levi’s, and the cancellation of the
copyright registration of Sambar.

Issue: Is Levi’s entitled to damages and cancellation of petitioner’s copyright? –

YES.
 Note: The SC found no reason to disturb the findings of the Court of
Appeals that Europress’ use of the arcuate design was an infringement
of the Levi’s design.
 The cancellation of petitioner’s copyright was justified because
petitioner’s copyright cannot prevail over respondents’ registration in
the Principal Register of Bureau of Patents, Trademarks, and
Technology Transfer. According to private respondents, the essence of
copyright registration is originality and a copied design is inherently
non-copyrightable. They insist that registration does not confer
originality upon a copycat version of a prior design.
 Thus, the award of damages and cancellation of petitioner’s copyright
are appropriate. Award of damages is clearly provided in Section 23 of
RA 166, 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
Page 5 of 5 LIP Case Doctrines – RG Alfaro 