Jessie Ching v.

Salinas

Facts:

Petitioner Ching is a maker and manufacturer of a utility model, Leaf Spring Eye Bushing for Automobile, for which he
holds certificates of copyright registration. Petitioner’s request to the NBI to apprehend and prosecute illegal
manufacturers of his work led to the issuance of search warrants against respondent Salinas, alleged to be
reproducing and distributing said models in violation of the IP Code. Respondent moved to quash the warrants on the
ground that petitioner’s work is not artistic in nature and is a proper subject of a patent, not copyright. Petitioner
insists that the IP Code protects a work from the moment of its creation regardless of its nature or purpose. The trial
court quashed the warrants. Petitioner argues that the copyright certificates over the model are prima facie evidence
of its validity. CA affirmed the trial court’s decision.

Issues:

(1) Whether or not petitioner’s model is an artistic work subject to copyright protection.

(2) Whether or not petitioner is entitled to copyright protection on the basis of the certificates of registration issued to
it.

Ruling:

(1) NO. As gleaned from the specifications appended to the application for a copyright certificate filed by the
petitioner, the said Leaf Spring Eye Bushing for Automobile and Vehicle Bearing Cushion are merely utility models.
As gleaned from the description of the models and their objectives, these articles are useful articles which are defined
as one having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey
information. Plainly, these are not literary or artistic works. They are not intellectual creations in the literary and artistic
domain, or works of applied art. They are certainly not ornamental designs or one having decorative quality or value.
Indeed, while works of applied art, original intellectual, literary and artistic works are copyrightable, useful articles and
works of industrial design are not. A useful article may be copyrightable only if and only to the extent that such design
incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of
existing independently of the utilitarian aspects of the article. In this case, the bushing and cushion are not works of
art. They are, as the petitioner himself admitted, utility models which may be the subject of a patent.

(2) NO. No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the
certificates of copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion.
Indeed, in Joaquin, Jr. v. Drilon and Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated, the Court ruled
that:

Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted by the
statute, and not simply a pre-existing right regulated by it. Being a statutory grant, the rights are only such as the
statute confers, and may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms
and conditions specified in the statute. Accordingly, it can cover only the works falling within the statutory
enumeration or description.

Ownership of copyrighted material is shown by proof of originality and copyrightability. To discharge his burden, the
applicant may present the certificate of registration covering the work or, in its absence, other evidence. A copyright
certificate provides prima facie evidence of originality which is one element of copyright validity. It constitutes prima
facie evidence of both validity and ownership and the validity of the facts stated in the certificate.

Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated,

and North Edsa Marketing, Incorporated (CASE DIGEST)
GR No. 148222

15 August 2003
TOPICS: Intellectual Property Law, Copyright, Infringement,
Patents
FACTS:
Pearl and Dean (Phil.), Inc. (PDI) is engaged in the manufacture
of advertising display units simply referred to as light boxes. PDI
was able to secure a Certificate of Copyright Registration, the
advertising light boxes were marketed under the trademark
“Poster Ads”.

In 1985, PDI negotiated with defendant-appellant Shoemart,

Inc. (SMI) for the lease and installation of the light boxes in
certain SM Makati and SM Cubao. PDI submitted for signature
the contracts covering both stores, but only the contract for SM
Makati, however, was returned signed. Eventually, SMI’s
informed PDI that it was rescinding the contract for SM Makati
due to non-performance of the terms thereof.

Years later, PDI found out that exact copies of its light boxes
were installed at different SM stores. It was further discovered
that SMI’s sister company North Edsa Marketing Inc. (NEMI),
sells advertising space in lighted display units located in SMI’s
different branches.

PDI sent a letter to both SMI and NEMI enjoining them to cease
using the subject light boxes, remove the same from SMI’s
establishments and to discontinue the use of the trademark
“Poster Ads,” as well as the payment of compensatory
damages.

Claiming that both SMI and NEMI failed to meet all its demands,
PDI filed this instant case for infringement of trademark and
copyright, unfair competition and damages.

SMI maintained that it independently developed its poster

panels using commonly known techniques and available
 technology, without notice of or reference to PDI’s copyright.
SMI noted that the registration of the mark “Poster Ads” was
only for stationeries such as letterheads, envelopes, and the
like. Besides, according to SMI, the word “Poster Ads” is a
generic term which cannot be appropriated as a trademark,
and, as such, registration of such mark is invalid. On this basis,
SMI, aside from praying for the dismissal of the case, also
counterclaimed for moral, actual and exemplary damages and
for the cancellation of PDI’s Certification of Copyright
Registration, and Certificate of Trademark Registration.

The RTC of Makati City decided in favour of PDI, finding SMI

and NEMI jointly and severally liable for infringement of
copyright and infringement of trademark

On appeal, however, the Court of Appeals reversed the trial

court.

ISSUES:
1. Whether the the light box depicted in such engineering drawings ipso
facto also protected by such copyright.
2. Whether there was a patent infringement.
3. Whether the owner of a registered trademark legally prevent others
from using such trademark if it is a mere abbreviation of a term
descriptive of his goods, services or business?
RULING:
ON THE ISSUE OF COPYRIGHT INFRINGEMENT
The Court of Appeals correctly held that the copyright was
limited to the drawings alone and not to the light box itself.

Although petitioner’s copyright certificate was entitled

“Advertising Display Units” (which depicted the box-type
electrical devices), its claim of copyright infringement cannot be
sustained.
Copyright, in the strict sense of the term, is purely a statutory
right. Accordingly, it can cover only the works falling within the
statutory enumeration or description.
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. The light box
was not a literary or artistic piece which could be copyrighted
under the copyright law.

The Court reiterated the ruling in the case of Kho vs. Court of
Appeals, differentiating patents, copyrights and trademarks,
namely:

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.
ON THE ISSUE OF PATENT INFRINGEMENT
Petitioner never secured a patent for the light boxes. It therefore
acquired no patent rights which and could not legally prevent
anyone from manufacturing or commercially using the
contraption. To be able to effectively and legally preclude others
from copying and profiting from the invention, a patent is a
primordial requirement. No patent, no protection.

ON THE ISSUE OF TRADEMARK INFRINGEMENT

On the issue of trademark infringement, the petitioner’s
president said “Poster Ads” was a contraction of “poster
advertising.” 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 which, however, were not at
all specified in the trademark certificate.

Assuming arguendo that “Poster Ads” could validly qualify as a

trademark, 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.
ON THE ISSUE OF UNFAIR COMPETITION
There was no evidence that P & D’s use of “Poster Ads” was
distinctive or well-known. As noted by the Court of Appeals,
petitioner’s expert witnesses himself had testified that ” ‘Poster
Ads’ was too generic a name. So it was difficult to identify it with
any company, honestly speaking.”This crucial admission that
“Poster Ads” could not be associated with P & D showed that, in
the mind of the public, the goods and services carrying the
trademark “Poster Ads” could not be distinguished from the
goods and services of other entities.

“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
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 petition is DENIED