1. Kho vs.

CA
Proper Subjects of Copyright

Facts: Elidad Kho is the owner of KEC Cosmetics Laboratory and she was also the
holder of copyrights over Chin Chun Su and its Oval Facial Cream Container/Case. She
also bought the patent rights over the Chin Chun Su & Device and Chin Chun Su for
medicated cream from one Quintin Cheng, who was the assignee of Shun Yi Factory
a Taiwanese factory actually manufacturing Chin Chun Su products.
Kho filed a petition for injunction against Summerville General Merchandising and
Company to enjoin the latter from advertising and selling Chin Chun Su products, in
similar containers as that of Kho, for this is misleading the public and causing Kho to
lose income; the petition is also to enjoin Summerville from infringing upon Khos
copyrights.Summerville in their defense alleged that they are the exclusive and
authorized importer, re-packer and distributor of Chin Chun Su products; that Shun Yi
even authorized Summerville to register its trade name Chin Chun Su Medicated Cream
with the Philippine Patent Office; that Quintin Cheng, from home Kho acquired her
patent rights, had been terminated by Shun Yi.
ISSUE: Whether or not Kho has the exclusive right to use the trade name and
its container.
HELD: No. Kho has no right to support her claim for the exclusive use of the subject
trade name and itscontainer. The name and container of a beauty cream product are
proper subjects of a trademark (not copyright like what she registered for) 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. Khos copyright and patent registration of
the name and containerwould not guarantee her the right to the exclusive use of the
same for the reason that they are not appropriate subjects of the said intellectual rights.
Consequently, a preliminary injunction order cannot be issued for the reason that the
petitioner has not proven that she has a clear right over the said name and container to
the exclusion of others, not having proven that she has registered a trademark thereto
or used the same before anyone did.
2. Pearl & Dean vs. Shoemart Inc.
Facts: Pearl and Dean Inc. is a corporation engaged in the manufacture of advertising
display units called light boxes. In January 1981, Pearl and Dean was able to acquire
copyrights over the designs of the display units. In 1988, their trademark application for
Poster Ads was approved; they used the same trademark to advertise their light
boxes.

In 1985, Pearl and Dean negotiated with Shoemart Inc. (SM) so that the former may be
contracted to install light boxes in the ad spaces of SM. Eventually, SM rejected Pearl
and Deans proposal.
Two years later, Pear and Dean received report that light boxes exactly the same as
theirs are being used by SM in their ad spaces. They demanded SM to stop using the
light boxes and at the same time asked for damages amounting to P20 M. SM refused
to pay damages though they struck down the light boxes. Pearl and Dean eventually
sued SM. SM argued that it did not infringe on Pearl and Deans trademark because
Pearl and Deanstrademark is only applicable to envelopes and stationeries and not to
the type of ad spaces owned by SM. SM also averred that Poster Ads is a generic
term hence it is not subject to trademark registration. SM also averred that the actual
light boxes are not copyrightable. The RTC ruled in favor of Pearl and Dean. But the
Court of Appeals ruled in favor of SM.
ISSUE: Whether or not the Court of Appeals is correct.
HELD: Yes. The light boxes cannot, by any stretch of the imagination, be considered as
either prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to be
properly classified as a copyrightable; what was copyrighted were the technical
drawings only, and not the light boxes themselves. In other cases, it was held that there
is no copyright infringement when one who, without being authorized, uses a
copyrighted architectural plan to construct a structure. This is because the copyright
does not extend to the structures themselves.
On the trademark infringement allegation, the words Poster Ads are a simple
contraction of the generic term poster advertising. In the absence of any convincing
proof that Poster Ads has acquired a secondary meaning in this jurisdiction, Pearl and
Deans exclusive right to the use of Poster Ads is limited to what is written in its
certificate of registration, namely, stationeries.
3. Joaquin jr. vs. Drilon
Law on Copyright Game Show Ideas and Concepts Not Covered by Copyright
Facts: BJ Productions Inc. (BJPI) was the holder of copyright over the show Rhoda and
Me. It holds rights over the shows format and style of presentation. In 1991, BJPIs
president Francisco Joaquin saw on TV RPN 9s show Its a Date, which is basically the
same as Rhoda and Me. He eventually sued Gabriel Zosa, the manager of the showIts
a Date. Zosa later sought a review of the prosecutors resolution before the Secretary of
Justice (Drilon). Drilon reversed the findings of the fiscal and directed him to dismiss the
case against Zosa.
ISSUE: Whether or not the decision of Drilon is valid.
HELD: Yes. The essence of copyright infringement is the copying, in whole or in part, of
copyrightable materials as defined and enumerated in Section 2 of PD. No. 49

(Copyright Law). Apart from the manner in which it is actually expressed, however, the
idea of a dating game show is a non-copyrightable material. Ideas, concepts, formats,
or schemes in their abstract form clearly do not fall within the class of works or materials
susceptible of copyright registration as provided in PD. No. 49. What is covered by
BJPIs copyright is the specific episodes of the show Rhoda and Me.
Further, BJPI should have presented the master videotape of the show in order to show
the linkage between the copyright show (Rhoda and Me) and the infringing show (Its a
Date). This is based on the ruling in 20th Century Fox vs CA (though this has been
qualified by Columbia Pictures vs CA, this is still good law). Though BJPI did provide a
lot of written evidence and description to show the linkage between the shows, the
same were not enough. A television show includes more than mere words can describe
because it involves a whole spectrum of visuals and effects, video and audio, such that
no
similarity
or
dissimilarity
may
be
found
by
merely
describing
the general copyright/format of both dating game shows.

4. Habana vs. Robles

Intellectual Property Law on Copyright Infringement
Facts: Pacita Habana and two others were the authors of College English for
Today Series 1 and 2 (CET). While they were researching for books to assist them in
updating their own book, they chanced upon the book of Felicidad Robles entitled
Developing English Proficiency Books 1 and 2 (DEP). They discovered further that the
book of Robles was strikingly similar to the contents, scheme of
presentation, illustrations and illustrative examples of CET. They then sued Robles and
her publisher (Goodwill Trading Co.) for infringement and/or unfair competition with
damages.
Robles, in her defense, alleged that her sources were from foreign books; that in their
field similarity in styles cannot be avoided since they come from the same background
and orientation. The trial court as well as the Court of Appeals ruled in favor of Robles.
ISSUE: Whether or not the Court of Appeals is correct.
HELD: No. A perusal of the records yields several pages of the book DEP that are
similar if not identical with the text of CET. In several other pages the treatment and
manner of presentation of the topics of DEP are similar if not a rehash of that contained
in CET. The similarities in examples and material contents are so obviously present in
this case. How can similar/identical examples not be considered as a mark of copying?
Robles act of lifting from the book of Habana et al substantial portions of discussions
and examples, and her failure to acknowledge the same in her book is an infringement
of Habana et als copyrights.

The Supreme Court also elucidated that in determining the question of infringement, the
amount of matter copied from the copyrighted work is an important consideration. To
constitute infringement, it is not necessary that the whole or even a large portion of the
work shall have been copied. If so much is taken that the value of the original is sensibly
diminished, or the labors of the original author are substantially and to an injurious
extent appropriated by another, that is sufficient in point of law to constitute piracy.

5. 20th Century Fox vs CA

-no digest

6. Columbia Picture vs. CA

Law on Copyright Requirements Before a Search Warrant May Be Issued in Copyright
Cases Piracy
Facts: In 1986, the Video 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
7. NBI-Microsoft vs. Hwang
Intellectual Property Law on Copyright Copyright Infringement
In May 1993, Microsoft and Beltron Computer Philippines, Inc. entered into a Licensing
Agreement. Under Section 2(a) of the Agreement Microsoft authorized Beltron, for a
fee, to:
1. Reproduce and install no more than one copy of Windows on each Customer System
hard disk;
2. Distribute directly or indirectly and license copies of Windows (reproduced as per
Section 2 of the Agreement and/or acquired from an Authorized Replicator or
Authorized Distributor.
Their agreement allowed either party to terminate if one fails to comply with their
respective obligations. Microsoft terminated the Agreement in June 1995 by reason of
Beltrons non-payment of royalties. Later, Microsoft learned that Beltron was illegally
copying and selling copies of Windows. Microsoft then sought the assistance of the
National Bureau of Investigation. NBI agents made some purchase from Beltron where
they acquired a computer unit pre-installed with Windows, 12 windows installer CDs
packed as Microsoft products. The agents were not given the end-user license
agreements, user manuals, and certificates of authenticity for the products purchased.
They were given a receipt which has a header of T.M.T.C. (Phils) Inc. BELTRON
COMPUTER. TMTC stands for Taiwan Machinery Display and Trade Center.
A search warrant was subsequently issued where 2,831 CDs of Windows installers,
among others, were seized. Based on the items seized from Beltron, Microsoft filed a
case of copyright infringement against Beltron and TMTC as well as their officers
(Hwang et al) before the Department of Justice (DOJ). Beltron, in its counter-affidavit,
argued the following:
1. That Microsofts issue with Beltron was really just to have leverage in forcing Beltron to
pay the unpaid royalties; and that Microsoft should have filed a collection suit.

2. That the computer unit allegedly purchased by the NBI agents from them cannot be
decisively traced as coming from Beltron because the receipt issued to the agents did
not list the computer unit as one of the items bought.
3. That the 12 installers purchased by the agents which are actually listed in the receipt
were not manufactured by Beltron but rather they were genuine copies purchased by
TMTC from an authorized Microsoft seller in Singapore.
4. That the 2,831 installers seized from them were not a property of Beltron but rather they
were left to them by someone for safekeeping.
The DOJ secretary agreed with Beltron and dismissed the case. The Secretary ruled
that the issue of the authority of Beltron to copy and sell Microsoft products should first
be resolved in a civil suit. Microsoft appealed the decision of the DOJ secretary before
the Supreme Court. Meanwhile, Beltron filed a motion to quash the search warrant
before the RTC that issued the same. The RTC partially granted the quashal. The Court
of Appeals reversed the RTC. Hwang et al did not appeal the CA decision.
ISSUE: Whether or not the DOJ Secretary is correct.
HELD: No. Section 5 of Presidential Decree 49 enumerates the rights vested
exclusively on the copyright owner. Contrary to the DOJs ruling, the gravamen of
copyright infringement is not merely the unauthorized manufacturing of intellectual
works but rather the unauthorized performance of any of the acts covered by Section 5.
Hence, any person who performs any of the acts under Section 5 without obtaining the
copyright owners prior consent renders himself civilly and criminally liable for copyright
infringement.
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.
Being the copyright and trademark owner of Microsoft software, Microsoft acted well
within its rights in filing the complaint before DOJ on the incriminating evidence obtained
from Beltron. Hence, it was highly irregular for the DOJ to hold that Microsoft sought
the issuance of the search warrants and the filing of the complaint merely to pressure
Beltron to pay its overdue royalties to Microsoft.
There is no basis for the DOJ to rule that Microsoft must await a prior resolution from
the proper court of whether or not the Agreement is still binding between the parties.
Beltron has not filed any suit to question Microsofts termination of the Agreement.
Microsoft can neither be expected nor compelled to wait until Beltron decides to sue
before Microsoft can seek remedies for violation of its intellectual property rights.
Furthermore, the articles seized from Beltron are counterfeit per se because Microsoft
does not (and could not have authorized anyone to) produce such CD installers The

copying of the genuine Microsoft software to produce these fake CDs and their
distribution are illegal even if the copier or distributor is a Microsoft licensee. As far as
these installer CD-ROMs are concerned, the Agreement (and the alleged question on
the validity of its termination) is immaterial to the determination of Beltrons liability for
copyright infringement and unfair competition. Beltrons defense that the box of CD
installers found in their possession was only left to them for safekeeping is not tenable.
8. Ching vs. Salinas
Facts: Petitioners claim: Ching and Joseph Yu were issued by the National Library
Certificates of Copyright Registration and Deposit of the work described therein as Leaf
Spring Eye Bushing for Automobile. Ching requested the National Bureau of
Investigation (NBI) for police/investigative assistance for the apprehension and
prosecution of illegal manufacturers, producers and/or distributors of the works. As
such, inventory items were seized from Salinas for violating the provisions of ra
8293.He claims that R.A. No. 8293, otherwise known as the Intellectual Property Code
of the Philippines provides in no uncertain terms that copyright protection automatically
attaches to a work by the sole fact of its creation, irrespective of its mode or form of
expression, as well as of its content, quality or purpose. The law gives a non-inclusive
definition of work as referring to original intellectual creations in the literary and artistic
domain protected from the moment of their creation; and includes original ornamental
designs or models for articles of manufacture, whether or not registrable as an industrial
design and other works of applied art under Section 172.1(h) of R.A.No. 8293.
As such, the petitioner insists, notwithstanding the classification of the works as either
literary and/or artistic, the said law, likewise, encompasses works which may have a
bearing on the utility aspect to which the petitioners utility designs were classified.
Moreover, according to the petitioner, what the Copyright Law protects is the authors
intellectual creation, regardless of whether it is one with utilitarian functions or
incorporated in a useful article produced on an industrial scale.
The petitioner also maintains that the law does not provide that the intended use or use
in industry of an article eligible for patent bars or invalidates its registration under the
Law on Copyright. The test of protection for the aesthetic is not beauty and utility, but art
for the copyright and invention of original and ornamental design for design patents.[16]
In like manner, the fact that his utility designs or models for articles of manufacture have
been expressed in the field of automotive parts, or based on something already in the
public domain does not automatically remove them from the protection of the Law on
Copyright.

Respondents claim: The respondents 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. They aver that the models are not original, and
as such are the proper subject of a patent, not copyright. Respondents aver that the
work of the petitioner is essentially a technical solution to the problem of wear and tear
in automobiles, the substitution of materials ,i.e., from rubber to plastic matter of
polyvinyl chloride, an oil resistant soft texture plastic material strong enough to endure
pressure brought about by the vibration of the counter bearing and thus brings
bushings. Such work, the respondents assert, is the subject of copyright under Section
172.1 of R.A. No. 8293. The respondents posit that a technical solution in any field of
human activity which is novel may be the subject of a patent, and not of a copyright.
They insist that the certificates issued by the National Library are only certifications that,
at a point in time, a certain work was deposited in the said office. Furthermore, the
registration of copyrights does not provide for automatic protection. Citing Section
218.2(b) of R.A. No. 8293, the respondents aver that no copyright is said to exist if a
party categorically question sits existence and legality. Moreover, under Section 2, Rule
7 of the Implementing Rules of R.A. No. 8293, the registration and deposit of work is not
conclusive as to copyright outlay or the time of copyright or the right of the copyright
owner. The respondents maintain that a copyright exists only when the work is covered
by the protection of R.A. No. 8293.
Issue/s: Whether or not 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

Ruling: 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. 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. It bears
stressing that the focus of copyright is the usefulness of the artistic design, and not its
marketability. The central inquiry is whether the article is a work of art.[33] Works for
applied art include all original pictorials, graphics, and sculptural works that are intended
to be or have been embodied in useful article regardless of factors such as mass
production, commercial exploitation, and the potential availability of design patent
protection.

As gleaned from the description of the models and their objectives, these articles are
useful articles which are defined as one having an intrinsic utilitarian function that is not
merely to portray the appearance of the article or to convey information. Indeed, while
works of applied art, original intellectual, literary and artistic works are copyrightable,
useful articles and works of industrial design are not.[35] A useful article may be
copyrightable only if and only to the extent that such design incorporates pictorial,
graphic, or sculptural features that can be identified separately from, and are capable of
existing independently of the utilitarian aspects of the article.
We agree with the contention of the petitioner (citing Section 171.10 of R.A. No.8293),
that the authors intellectual creation, regardless of whether it is a creation with utilitarian
functions or incorporated in a useful article produced on an industrial scale, is protected
by copyright law. However, the law refers to a work of applied art which is an artistic
creation. It bears stressing that there is no copyright protection for works of applied art
or industrial design which have aesthetic or artistic features that cannot be identified
separately from the utilitarian aspects of the article.
Functional components of useful articles, no matter how artistically designed, have
generally been denied copyright protection unless they are separable from the useful
article. In this case, the petitioners models are not works of applied art, nor artistic
works. They are utility models, useful articles, albeit with no artistic design or value.

9. Manly Sportswear Manufacturing, Inc vs. Dadodette Enterprise

FACTS:
On March 17, 2003, RTC- Quezon City, Branch 83 issued a search warrant against
Dadodette Enterprises and/or Hermes Sports Center after finding reasonable grounds
that respondents violated Sections 172 and 217 of Republic Act (RA) No. 8293.
Respondents then moved to quash and annul the search warrant claiming that the
sporting goods manufactured by and/or registered in the name MANLY are ordinary
hence, not among the classes protected under Sec. 172 of RA 8293.
On June 10, 2003 the trial court granted the motion to quash and declared the search
warrant issued as null and void. MANLY filed a motion for reconsideration on August 11,
2003, but was later on denied for lack of merit.
After denial of the motion for reconsideration, MANLY filed a petition for review of
certiorari in the Court of Appeals but was later on denied.

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

No. The copyright certificates issued in favor of MANLY constitute a prima

facie evidence of validity and ownership. However, presumption of validity is not created
when a sufficient proof or evidence exist that may cast a doubt on the copyright validity.
In the case at bar, validity and originality will not be presumed since the copyrighted
products of MANLY are not original creations considering that these products are
readily available in the market under various brands. Moreover, no copyright accrues in
favor of MANLY despite the issuance of the copyright certificate this purely serves as a
notice of recording and registration of the work and is not a conclusive proof of copyright
ownership as provided in Sec. 2, Rule 7 of the Copyrights Safeguards and Regulations.