IPL CONSOLIDATED CASE DIGESTS

Wigberto e. Taada, et al. Vs. Edgardo angara, et al.

G.R. No. 118295
May 2, 1997

Facts

To hasten worldwide recovery from the devastation wrought by the Second World War, plans for
the establishment of three multilateral institutions inspired by that grand political body, the
UNITED NATIONS were discussed at Dumbarton Oaks and Bretton Woods.

1. The first was the World Bank (WB) which was to address the rehabilitation and
reconstruction of war-ravaged and later developing countries;
2. the second, the International Monetary Fund (IMF) which was to deal with currency
problems;
3. and the third, the International Trade Organization (ITO), which was to foster order and
predictability in world trade and to minimize unilateral protectionist policies that invite
challenge, even retaliation, from other states.

However, for a variety of reasons, including its non-ratification by the United States, the ITO,
unlike the IMF and WB, never took off. What remained was only GATT the General
Agreement on Tariffs and Trade. GATT was a collection of treaties governing access to the
economies of treaty adherents with no institutionalized body administering the agreements or
dependable system of dispute settlement. After half a century and several dizzying rounds of
negotiations, the world finally gave birth to that administering body the World Trade
Organization with the signing of the "Final Act" in Marrakesh, Morocco and the ratification
of the WTO Agreement by its members.

On April 15, 1994, Respondent Rizalino Navarro, then Secretary of The Department of Trade
and Industry, representing the Government of the Republic of the Philippines, signed in
Marrakesh, Morocco, the Final Act Embodying the Results of the Uruguay Round of Multilateral
Negotiations. On December 29, 1994, the present petition was filed.

Issues

Petitioners aver that sacred constitutional principles are desecrated by WTO provisions:

(a) In the area of investment measures related to trade in goods (TRIMS):

 (b) In the area of trade related aspects of intellectual property rights (TRIPS):
Each Member shall accord to the nationals of other Members treatment no less favourable
- than that it accords to its own nationals
- with regard to the protection of intellectual property. . .
(par. 1 Article 3, Agreement on Trade-Related Aspect of Intellectual Property rights, Vol. 31,
Uruguay Round, Legal Instruments, p. 25432 (emphasis supplied)
(c) In the area of the General Agreement on Trade in Services:

Held

Petitioners aver that paragraph 1, Article 34 of the General Provisions and Basic Principles of
the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) - intrudes on
the power of the Supreme Court to promulgate rules concerning pleading, practice and
procedures.

To understand the scope and meaning of Article 34, TRIPS, it will be fruitful to restate its full
text as follows:

Article 34

Process Patents: Burden of Proof

For the purposes of civil proceedings in respect of the infringement of the rights of the owner
referred to in paragraph 1 (b) of Article 28,if the subject matter of a patent is a process for
obtaining a product, the judicial authorities shall have the authority to order the defendant to
prove that the process to obtain an identical product is different from the patented process.

Therefore, Members shall provide, in at least one of the following circumstances, that any
identical product when produced without the consent of the patent owner shall, in the absence of
proof to the contrary, be deemed to have been obtained by the patented process:

(a) if the product obtained by the patented process is new;

(b) if there is a substantial likelihood that the identical product was made by the process and
the owner of the patent has been unable through reasonable efforts to determine the
process actually used.
Any Member shall be free to provide that the burden of proof indicated in paragraph 1 shall be
on the alleged infringer only if the condition referred to in subparagraph (a) is fulfilled or only if
the condition referred to in subparagraph (b) is fulfilled.

In the adduction of proof to the contrary, the legitimate interests of defendants in protecting their
manufacturing and business secrets shall be taken into account.

From the above, a WTO Member is required to provide a rule of disputable (not the words "in
the absence of proof to the contrary") presumption that a product shown to be identical to one
produced with the use of a patented process shall be deemed to have been obtained by the
(illegal) use of the said patented process, where such product obtained by the patented product is
new, or where there is "substantial likelihood" that the identical product was made with the use
of the said patented process but the owner of the patent could not determine the exact process
used in obtaining such identical product.

Hence, the "burden of proof" contemplated by Article 34 should actually be understood as the
duty of the alleged patent infringer to overthrow such presumption. Such burden, properly
understood, actually refers to the "burden of evidence" (burden of going forward) placed on the
producer of the identical (or fake) product to show that his product was produced without the use
of the patented process.

The foregoing notwithstanding, the patent owner still has the "burden of proof" since, regardless
of the presumption provided under paragraph 1 of Article 34, such owner still has to introduce
evidence of the existence of the alleged identical product, the fact that it is "identical" to the
genuine one produced by the patented process and the fact of "newness" of the genuine product
or the fact of "substantial likelihood" that the identical product was made by the patented
process.

The foregoing should really present no problem in changing the rules of evidence as the present
law on the subject, Republic Act No. 165, as amended, otherwise known as the Patent Law,
provides a similar presumption in cases of infringement of patented design or utility model, thus:

Sec. 60. Infringement. Infringement of a design patent or of a patent for utility model shall
consist in unauthorized copying of the patented design or utility model for the purpose of trade or
industry in the article or product and in the making, using or selling of the article or product
copying the patented design or utility model.

Moreover, it should be noted that the requirement of Article 34 to provide a disputable

presumption applies only if the product obtained by the patented process in NEW or there is a
substantial likelihood that the identical product was made by the process and the process owner
has not been able through reasonable effort to determine the process used.

Where either of these two provisos does not obtain, members shall be free to determine the
appropriate method of implementing the provisions of TRIPS within their own internal systems
and processes.

By and large, the arguments adduced in connection with our disposition of the third issue
derogation of legislative power will apply to this fourth issue also. Suffice it to say that the
RECIPROCITY CLAUSE more than justifies such intrusion, if any actually exists. Besides,
Article 34 does not contain an unreasonable burden, consistent as it is with due process and the
concept of adversarial dispute settlement inherent in our judicial system.

So too, since the Philippine is a signatory to most international conventions on patents,

trademarks and copyrights, the adjustment in legislation and rules of procedure will not be
substantial.
Mirpuri vs CA
GR No. 114508
November 19, 1999

Facts:

In 1970, Escobar filed an application with the Bureau of Patents for the registration of
the trademark Barbizon for use in horsiers and ladies undergarments (IPC No. 686). Private
respondent reported Barbizon Corporation, a corporation organized and doing business under the
laws of New York, USA, opposed the application. It was alleged that its trademark is
confusingly similar with that of Escobar and that the registration of the said trademark will cause
damage to its business reputation and goodwill. In 1974, the Director of Patents gave due course
to the application. Escobar later assigned all his rights and interest over the trademark to
petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of the
trademark required under the Philippine Trademark Law. Due to this failure, the Bureau
cancelled Escobars certificate of registration. In 1981, Escobar and petitioner separately filed
this application for registration of the same trademark. (IPC 2049). Private respondent opposed
again. This time it alleged (1) that the said trademark was registered with the US Patent Office;
(2) that it is entitled to protection as well-known mark under Article 6 bis of the Paris
Convention, EO 913 and the two Memoranda of the Minister of Trade and Industry and (3) that
its use on the same class of goods amounts to a violation of the Trademark Law and Art. 189 of
the RPC. Petitioner raised the defense of Res Judicata.

Issue:

Do IPC No. 686 and IPC No. 2049 involve the same cause of action?

Held:

No. The issue of ownership of the trademark was not raised in IPC 686. IPC 2049 raised
the issue of ownership, the first registration and use of the trademark in the US and other
countries, and the international recognition of the trademark established by extensive use and
advertisement of respondents products for over 40 years here and abroad. These are different
from the issues of confessing similarity and damage in IPC 686. The issue of prior use may have
been raised in IPC 686 but this claim was limited to prior use in the Philippines only. Prior use in
IPC 2049 stems from the respondents claims originator of the word and symbol Barbizon, as
the first and registered user of the mark attached to its products which have been sold and
advertised would arise for a considerable number of years prior to petitioners first application.
Indeed, these are substantial allegations that raised new issues and necessarily gave respondents
a new cause of action. Moreover, the cancellation of petitioners certificate registration for
failure to file the affidavit of use arose after IPC 686. This gave respondent another cause to
oppose the second application.

It is also to be noted that the oppositions in the first and second cases are based on
different laws. Causes of action which are distinct and independent from each other, although out
of the same contract, transaction, or state of facts, may be sued on separately, recovery on one
being no bar to subsequent actions on others. The mere fact that the same relief is sought in the
subsequent action will not render the judgment in the prior action operating as res judicata, such
as where the actions are based on different statutes.
Samson vs. Daway
G.R. Nos. 160054-55,
July 21, 2004

Facts:

Samson, owner/proprietor of ITTI Shoes/Mano Shoes Manufactuirng Corporation located

at Robinsons Galleria, EDSA corner Ortigas Avenue, Quezon City, did then and there willfully,
unlawfully and feloniously distribute, sell and/or offer for sale CATERPILLAR products such as
footwear, garments, clothing, bags, accessories and paraphernalia which are closely identical to
and/or colorable imitations of the authentic Caterpillar products and likewise using trademarks,
symbols and/or designs as would cause confusion, mistake or deception on the part of the buying
public to the damage and prejudice of CATERPILLAR, INC., the prior adopter, user and owner
of the following internationally: CATERPILLAR, CAT, CATERPILLAR & DESIGN,
CAT AND DESIGN, WALKING MACHINES and TRACK-TYPE TRACTOR &
DESIGN.

Caterpillar Inc. sued Samson for unfair competition in RTC. Samson filed a motion to for
the quashal of information for lack of jurisdiction. Samson contended that since under Section
170 of R.A. No. 8293, the penalty of imprisonment for unfair competition does not exceed six
years, the offense is cognizable by the Municipal Trial Courts and not by the Regional Trial
Court, per R.A. No. 7691.

Under Section 170 of R.A. No. 8293, which took effect on January 1, 1998, the criminal
penalty for infringement of registered marks, unfair competition, false designation of origin and
false description or representation, is imprisonment from 2 to 5 years and a fine ranging from
Fifty Thousand Pesos to Two Hundred Thousand Pesos. (jurisdiction of Municipal Trial Courts)

Under Section 27 of of R.A. No. 166 (The Trademark Law)

SEC. 27.Jurisdiction of Court of First Instance. All actions under this Chapter [V
Infringement] and Chapters VI [Unfair Competition] and VII [False Designation of Origin and
False Description or Representation], hereof shall be brought before the Court of First Instance.

Issues:

Whether or not R.A. No. 166 was expressly repealed by R.A. No. 8293?

Held:
 No, R.A. No. 8293 does not expressly repealed R.A. 166.

SEC. 239.Repeals. 239.1. All Acts and parts of Acts inconsistent herewith, more
particularly Republic Act No. 165, as amended; Republic Act No. 166, as amended; and Articles
188 and 189 of the Revised Penal Code; Presidential Decree No. 49, including Presidential
Decree No. 285, as amended, are hereby repealed. Notably, the aforequoted clause did not
expressly repeal R.A. No. 166 in its entirety, otherwise, it would not have used the phrases parts
of Acts and inconsistent herewith; and it would have simply stated Republic Act No. 165, as
amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal
Code; Presidential Decree No. 49, including Presidential Decree No. 285, as amended are hereby
repealed. It would have removed all doubts that said specific laws had been rendered without
force and effect. The use of the phrases parts of Acts and inconsistent herewith only means
that the repeal pertains only to provisions which are repugnant or not susceptible of
harmonization with R.A. No. 8293.7 Section 27 of R.A. No. 166, however, is consistent and in
harmony with Section 163 of R.A. No. 8293. Had R.A. No. 8293 intended to vest jurisdiction
over violations of intellectual property rights with the Metropolitan Trial Courts, it would have
expressly stated so under Section 163 thereof.
Twentieth Century Music Corp. vs. Aiken
422 U.S. 151

Facts

The respondent George Aiken owns and operates a small fast-service food shop in
downtown Pittsburgh, Pa., known as "George Aiken's Chicken." Some customers carry out the
food they purchase, while others remain and eat at counters or booths. Usually the "carry-out"
customers are in the restaurant for less than five minutes, and those who eat there seldom remain
longer than 10 or 15 minutes.

A radio with outlets to four speakers in the ceiling receives broadcasts of music and other
normal radio programing at the restaurant. Aiken usually turns on the radio each morning at the
start of business. Music, news, entertainment, and commercial advertising broadcast by radio
stations are thus heard by Aiken, his employees, and his customers during the hours that the
establishment is open for business.

On March 11, 1972, broadcasts of two copyrighted musical compositions were received
on the radio from a [422 U.S. 151, 153] local station while several customers were in Aiken's
establishment. Petitioner Twentieth Century Music Corp. owns the copyright on one of these
songs, "The More I See You"; petitioner Mary Bourne the copyright on the other, "Me and My
Shadow." Petitioners are members of the American Society of Composers, Authors and
Publishers (ASCAP), an association that licenses the performing rights of its members to their
copyrighted works. The station that broadcast the petitioners' songs was licensed by ASCAP to
broadcast them. 1 Aiken, however, did not hold a license from ASCAP. ASCAP then sued
Aiken for copyright infringment for the radio reception of their songs were equivalent to a
perforamce thereby infringing their exclusive right to perform.

Issue

Whether the reception of a radio broadcast of a copyrighted musical composition can

constitute copyright infringement when the copyright owner has licensed the broadcaster to
perform the composition publicly for profit?

Held

Aiken did not infringe upon 20th Century exclusive right, under the Copyright Act, "to
perform the copyrighted work publicly for profit," since the radio reception did not constitute a
"performance" of the copyrighted songs. To hold that Aiken "performed" the copyrighted works
would obviously result in a wholly unenforceable regime of copyright law, and would also be
highly inequitable, since (short of keeping his radio turned off) one in Aiken's position would be
unable to protect himself from infringement liability. Such a ruling, moreover, would authorize
the sale of an untold number of licenses for what is basically a single rendition of a copyrighted
work, thus conflicting with the balanced purpose of the Copyright Act of assuring the composer
an adequate return for the value of his composition while, at the same time, protecting the public
from oppressive monopolies.
The limited scope of the copyright holder's statutory monopoly, like the limited copyright
duration required by the Constitution, reflects a balance of competing claims upon the public
interest: creative work is to be encouraged and rewarded, but private motivation must ultimately
serve the cause of promoting broad public availability of literature, music, and the other arts. The
immediate effect of our copyright law is to secure a fair return for an "author's" creative labor.
But the ultimate aimis, by this incentive, to stimulate artistic creativity for the general public
good. "The sole interest of the United States and the primary object in conferring the monopoly,
this Court has said, lies in the general benefits derived by the public from the labors of authors."
When technological change has rendered its literal terms ambiguous, the Copyright Act must be
construed in light of this basic purpose.
Feist Publications, Inc. vs. Rural Television Services Company
499 U.S. 340, 1991

Facts:

Rural Telephone Service Company is a certified public utility that provides telephone
service to several communities in northwest Kansas. It is subject to a state regulation that
requires all telephone companies operating in Kansas to issue annually an updated telephone
directory. Accordingly, as a condition of its monopoly franchise, Rural publishes a typical
telephone directory, consisting of white pages and yellow pages. The white pages list in
alphabetical order the names of Rural's subscribers, together with their towns and telephone
numbers. The yellow pages list Rural's business subscribers alphabetically by category and
feature classified advertisements of various sizes. Rural distributes its directory free of charge to
its subscribers, but earns revenue by selling yellow pages advertisements.

Feist Publications, Inc., is a publishing company that specializes in area-wide telephone

directories. Unlike a typical directory, which covers only a particular calling area, Feist's area-
wide directories cover a much larger geographical range, reducing the need to call directory
assistance or consult multiple directories. The Feist directory that is the subject of this litigation
covers 11 different telephone service areas in 15 counties and contains 46,878 white pages
listings -- compared to Rural's approximately 7,700 listings. Like Rural's directory, Feist's is
distributed free of charge and includes both white pages and yellow pages. Feist and Rural
compete vigorously for yellow pages advertising. As the sole provider of telephone service in its
service area, Rural obtains subscriber information quite easily. Persons desiring telephone
service must apply to Rural and provide their names and addresses; Rural then assigns them a
telephone number.

Feist is not a telephone company, let alone one with monopoly status, and therefore lacks
independent access to any subscriber information. To obtain white pages listings for its area-
wide directory, Feist approached each of the 11 telephone companies operating in northwest
Kansas and offered to pay for the right to use its white pages listings. Of the 11 telephone
companies, only Rural refused to license its listings to Feist. Rural's refusal created a problem for
Feist, as omitting these listings would have left a gaping hole in its area-wide directory,
rendering it less attractive to potential yellow pages advertisers. Unable to license Rural's white
pages listings, Feist used them without Rural's consent. Feist began by removing several
thousand listings that fell outside the geographic range of its area-wide directory, then hired
personnel to investigate the 4,935 that remained. These employees verified [p*344] the data
reported by Rural and sought to obtain additional information.
 As a result, a typical Feist listing includes the individual's street address; most of Rural's
listings do not. Notwithstanding these additions, however, 1,309 of the 46,878 listings in Feist's
1983 directory were identical to listings in Rural's 1982-1983 white pages. Four of these were
fictitious listings that Rural had inserted into its directory to detect copying.

Rural sued for copyright infringement in the District Court for the District of Kansas
taking the position that Feist, in compiling its own directory, could not use the information
contained in Rural's white pages. Rural asserted that Feist's employees were obliged to travel
door-to-door or conduct a telephone survey to discover the same information for them. Feist
responded that such efforts were economically impractical and, in any event, unnecessary
because the information copied was beyond the scope of copyright protection.

Issues:

Whether or not Telephone directories are copyrightable or not?

Held:

This case concerns the interaction of two well-established propositions. The first is that
facts are not copyrightable; the other, that compilations of facts generally are. Each of these
propositions possesses an impeccable pedigree. That there can be no valid copyright in facts is
universally understood. The most fundamental axiom of copyright law is thatno author may
copyright his ideas or the facts he narrates."

There is an undeniable tension between these two propositions. Many compilations

consist of nothing but raw data -- i.e., wholly factual information not accompanied by any
original written expression. On what basis may one claim a copyright in such a work?

Factual compilations, on the other hand, may possess the requisite originality. The
compilation author typically chooses which facts to include, in what order to place them, and
how to arrange the collected data so that they may be used effectively by readers. These choices
as to selection and arrangement, so long as they are made independently by the compiler and
entail a minimal degree of creativity, are sufficiently original that Congress may protect such
compilations through the copyright laws. Thus, even a directory that contains absolutely no
protectible written expression, only facts, meets the constitutional minimum for copyright
protection if it features an original selection or arrangement.

This protection is subject to an important limitation. The mere fact that a work is
copyrighted does not mean that every element of the work may be protected. Originality remains
the sine qua non of copyright; accordingly, copyright protection may extend only to those
components of a work that are original to the author. Thus, if the compilation author clothes facts
with an original collocation of words, he or she may be able to claim a copyright in this written
expression. Others may copy the underlying facts from the publication, but not the precise words
used to present them. If the selection and arrangement are original, these elements of the work
are eligible for copyright protection.

The court ruled that facts are not copyrightable, while the other compilations of facts
generallyare otherwise copyrightable. There can be no valid copyright in facts is universally
understood. The most fundamental axiom of copyright law is that "no author may copyright his
ideas or the facts he narrates." Rural wisely concedes this point, noting in its brief that "facts and
discoveries, of course, are not themselves subject to copyright protection." However, it is beyond
dispute that compilations of facts are within the subject matter of copyright. Compilations were
expressly mentioned in the Copyright Act of 1909, and again in the Copyright Act of 1976.

Rural essentially concedes the point by referring to the names, towns, and telephone
numbers as "preexisting material." The copyright in a compilation does not extend to "the
preexisting material employed in the work." The question that remains is whether Rural selected,
coordinated, or arranged these uncopyrightable facts in an original way.

The selection, coordination, and arrangement of Rural's white pages do not satisfy the
minimum constitutional standards for copyright protection. Rural's selection of listings could not
be more obvious: it publishes the most basic information -- name, town, and telephone number --
about each person who applies to it for telephone service. This is "selection" of a sort, but it lacks
the modicum of creativity necessary to transform mere selection into copyrightable expression.
Rural expended sufficient effort to make the white pages directory useful, but insufficient
creativity to make it original.
KHO vs. C.A.
379 SCRA 410 Mercantile Law Intellectual Property Law on Copyright 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 whom Kho acquired her patent rights, had been terminated (her services)
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 its container. 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 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. 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.
PEARL AND DEAN vs. SHOEMART INC.

FACTS:

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

ISSUES:
a. Whether there was a copyright infringement
b. Whether there was a patent infringement
c. Whether there was a trademark infringement
d. Whether there was unfair competition

RULING:
No to all.

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

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

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

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

FACTS:

On November 5, 2002, the RTC dismissed the petition for declaratory relief for lack of
merit. The RTC held that the FPA did not exceed the limits of its delegated authority in issuing
the aforecited Section 3.12 of the Guidelines granting protection to proprietary data
x x x because the issuance of the aforecited Section was a valid exercise of its power to regulate,
control and develop the pesticide industry under P.D. 1144 and the assailed provision does not
encroach on one of the functions of the Intellectual Properly Office (IPO).

Respondents, on the other hand, maintain that the provision on the protection of
proprietary data in the FPA's Pesticide Regulatory Policies and Implementing Guidelines is valid
and legal as it does not violate the objectives of P.D. No. 1144; the proprietary data are a
substantial asset which must be protected; the protection for a limited number of years does not
constitute unlawful restraint of free trade; and such provision does not encroach upon the
jurisdiction of the Intellectual Property Office.

Respondents expound that since under P.D. No. 1144, the FPA is mandated to regulate,
control and develop the pesticide industry, it was necessary to provide for such protection of
proprietary data, otherwise, pesticide handlers will proliferate to the the detriment of the industry
and the public since the inherent toxicity of pesticides are hazardous and are potential
environmental contaminants.

They also pointed out that the protection under the assailed Pesticide Regulatory Policies
and Implementing Guidelines is warranted, considering that the development of proprietary data
involves an investment of many years and large sums of money, thus, the data generated by an
applicant in support of his application for registration are owned and proprietary to
him. Moreover, since the protection accorded to the proprietary data is limited in time, then such
protection is reasonable and does not constitute unlawful restraint of trade.

Lastly, respondents emphasize that the provision on protection of proprietary data does
not usurp the functions of the Intellectual Property Office (IPO) since a patent and data
protection are two different matters. A patent prohibits all unlicensed making, using and selling
of a particular product, while data protection accorded by the FPA merely prevents copying or
unauthorized use of an applicant's data, but any other party may independently generate and use
his own data. It is further argued that under Republic Act No. 8293 (R.A. No. 8293), the grant of
power to the IPO to administer and implement State policies on intellectual property is not
exclusionary as the IPO is even allowed to coordinate with other government agencies to
formulate and implement plans and policies to strengthen the protection of intellectual property
rights.

ISSUE

Whether or not respondent fpa has acted beyond the scope of its delegated power when it
granted a seven-year proprietary protection to data submitted to support the first full or
conditional registration of a pesticide ingredient in the philippines;

Whether or not respondent fpa is encroaching on the exclusive jurisdiction of the

intellectual property office (ipo) when it included in its pesticide regulatory policies and
implementing guidelines the subject seven-year proprietary data protection;

Whether or not said proprietary data protection is an unlawful restraint of free trade;

Whether or not said proprietary data protection runs counter to the objectives of p.d. no.
1144;

Whether or not the regional trial court of quezon city, branch 90, committed a reversible
error when it upheld the validity of section 3.12 of the pesticide regulatory policies and
implementing guidelines issued by respondent fpa.

HELD:

The petition is devoid of merit. The law being implemented by the assailed Pesticide
Regulatory Policies and Implementing Guidelines is P.D. No. 1144, entitled Creating the
Fertilizer and Pesticide Authority and Abolishing the Fertilizer Industry Authority. As stated in
the Preamble of said decree, there is an urgent need to create a technically-oriented government
authority equipped with the required expertise to regulate, control and develop both the fertilizer
and the pesticide industries. (Underscoring supplied) The decree further provided as follows:

Section 6. Powers and Functions. The FPA shall have jurisdiction, over all existing handlers of
pesticides, fertilizers and other agricultural chemical inputs. The FPA shall have the following
powers and functions:

I. Common to Fertilizers, Pesticides and other Agricultural Chemicals

To promulgate rules and regulations for the registration and licensing of handlers of these
products, collect fees pertaining thereto, as well as the renewal, suspension, revocation, or
cancellation of such registration or licenses and such other rules and regulations as may be
necessary to implement this Decree;

Section 7. Power to Issue Rules and Regulations to Implement Decree. The FPA is
hereby authorized to issue or promulgate rules and regulations to implement, and carry out the
purposes and provisions of this Decree.

Did the FPA go beyond its delegated power and undermine the objectives of P.D. No.
1144 by issuing regulations that provide for protection of proprietary data? The answer is in the
negative.

Under P.D. No. 1144, the FPA is given the broad power to issue rules and regulations to
implement and carry out the purposes and provisions of said decree, i.e., to regulate, control and
develop the pesticide industry. In furtherance of such ends, the FPA sees the protection of
proprietary data as one way of fulfilling its mandate. In Republic v. Sandiganbayan ,the Court
emphasized that:

x x x [t]he interpretation of an administrative government agency, which is tasked to

implement a statute is generally accorded great respect and ordinarily controls the construction
of the courts. The reason behind this rule was explained in Nestle Philippines, Inc. vs. Court of
Appeals in this wise:

The rationale for this rule relates not only to the emergence of the multifarious needs of a
modern or modernizing society and the establishment of diverse administrative agencies for
addressing and satisfying those needs; it also relates to the accumulation of experience and
growth of specialized capabilities by the administrative agency charged with implementing a
particular statute. In Asturias Sugar Central, Inc. vs. Commissioner of Customs, the Court
stressed that executive officials are presumed to have familiarized themselves with all the
considerations pertinent to the meaning and purpose of the law, and to have formed an
independent, conscientious and competent expert opinion thereon. The courts give much weight
to the government agency officials charged with the implementation of the law, their
competence, expertness, experience and informed judgment, and the fact that they frequently are
the drafters of the law they interpret. Verily, in this case, the Court acknowledges the experience
and expertise of FPA officials who are best qualified to formulate ways and means of ensuring
the quality and quantity of pesticides and handlers thereof that should enter the Philippine
market, such as giving limited protection to proprietary data submitted by applicants for
registration. The Court ascribes great value and will not disturb the FPA's determination that one
way of attaining the purposes of its charter is by granting such protection, specially where there
is nothing on record which shows that said administrative agency went beyond its delegated
powers.
 Moreover, petitioner has not succeeded in convincing the Court that the provision in
question has legal infirmities.

There is no encroachment upon the powers of the IPO granted under R.A. No. 8293,
otherwise known as the Intellectual Property Code of the Philippines. Section 5 thereof
enumerates the functions of the IPO. Nowhere in said provision does it state nor can it be
inferred that the law intended the IPO to have the exclusive authority to protect or promote
intellectual property rights in the Philippines. On the contrary, paragraph (g) of said Section even
provides that the IPO shall coordinate with other government agencies and the private sector
efforts to formulate and implement plans and policies to strengthen the protection of intellectual
property rights in the country. Clearly, R.A. No. 8293 recognizes that efforts to fully protect
intellectual property rights cannot be undertaken by the IPO alone. Other agencies dealing with
intellectual property rights are, therefore, not precluded from issuing policies, guidelines and
regulations to give protection to such rights.

There is also no evidence whatsoever to support petitioner's allegation that the grant of
protection to proprietary data would result in restraining free trade. Petitioner did not adduce any
reliable data to prove its bare allegation that the protection of proprietary data would unduly
restrict trade on pesticides. Furthermore, as held in Association of Philippine Coconut
Desiccators v. Philippine Coconut Authority, despite the fact that our present Constitution
enshrines free enterprise as a policy, it nonetheless reserves to the government the power to
intervene whenever necessary to promote the general welfare. There can be no question that the
unregulated use or proliferation of pesticides would be hazardous to our environment. Thus, in
the aforecited case, the Court declared that free enterprise does not call for removal of protective
regulations. More recently, in Coconut Oil Refiners Association, Inc. v. Torres, the Court held
that the mere fact that incentives and privileges are granted to certain enterprises to the exclusion
of others does not render the issuance unconstitutional for espousing unfair competition. It must
be clearly explained and proven by competent evidence just exactly how such protective
regulation would result in the restraint of trade.

In sum, the assailed provision in the 1987 Pesticide Regulatory Policies and
Implementing Guidelines granting protection to proprietary data is well within the authority of
the FPA to issue so as to carry out its purpose of controlling, regulating and developing the
pesticide industry.

WHEREFORE, the petition is DENIED. The Decision of the Regional Trial Court
of QuezonCity, Branch 90, in SP. Civil Case No. Q-01-42790 is AFFIRMED.
SO ORDERED.
In-N-Out Burger, Inc. vs. Sehwani Inc., et. Al

Facts:
Petitioner IN-N-OUT BURGER, INC. is a business entity incorporated under the laws of
California. It is a signatory to the Convention of Paris on Protection of Industrial Property and
the TRIPS Agreement. It is engaged mainly in the restaurant business, but it has never engaged
in business in the Philippines.

Respondents Sehwani, Incorporated and Benita Frites, Inc. are corporations organized in
the Philippines. Sometime in 1991, Sehwani filed with the BPTTT an application for the
registration of the mark IN N OUT (the inside of the letter O formed like a star). Its
application was approved and a certificate of registration was issued in its name on 1993. In
2000, Sehwani, Incorporated and Benita Frites, Inc. entered into a Licensing Agreement, wherein
the former entitled the latter to use its registered mark, IN N OUT.

Sometime in 1997, In-N-Out Burger filed trademark and service mark applications with
the Bureau of Trademarks for the IN-N-OUT and IN-N-OUT Burger & Arrow Design. In
2000, In-N-Out Burger found out that Sehwani, Incorporated had already obtained Trademark
Registration for the mark IN N OUT (the inside of the letter O formed like a star). Also in
2000, In-N-Out Burger sent a demand letter directing Sehwani, Inc. to cease and desist from
claiming ownership of the mark IN-N-OUT and to voluntarily cancel its trademark
registration. Sehwani Inc. did not accede to In-N-Out Burgers demand but it expressed its
willingness to surrender its registration for a consideration.

In 2001 In-N-Out Burger filed before the Bureau of Legal Affairs an administrative
complaint against the Sehwani, Inc. and Benita Frites, Inc. for unfair competition and
cancellation of trademark registration.

Issues:
Whether or not the Intellectual Property Office (an administrative body) have jurisdiction
of cases involving provisions of the IPC (e.g. unfair competition).

Whether or not there was unfair competition.

Held:

FIRST ISSUE: Yes, the IPO (an administrative body) has jurisdiction in cases involving
provisions of the IPC (e.g. unfair competition) due to the following reasons:
Section 10 of the Intellectual Property Code specifically identifies the functions of the Bureau of
Legal Affairs, thus:
Section 10. The Bureau of Legal Affairs. The Bureau of Legal Affairs shall have the following
functions:

10.1 Hear and decide opposition to the application for registration of marks; cancellation
of trademarks; subject to the provisions of Section 64, cancellation of patents and utility models,
and industrial designs; and petitions for compulsory licensing of patents;

10.2 (a) Exercise original jurisdiction in administrative complaints for violations of laws
involving intellectual property rights; Provided, That its jurisdiction is limited to complaints
where the total damages claimed are not less than Two hundred thousand pesos
(P200,000): Provided, further, That availment of the provisional remedies may be granted in
accordance with the Rules of Court.

(vi) The cancellation of any permit, license, authority, or registration which may have been
granted by the Office, or the suspension of the validity thereof for such period of time as the
Director of Legal Affairs may deem reasonable which shall not exceed one (1) year;
(viii) The assessment of damages;

Unquestionably, petitioners complaint, which seeks the cancellation of the disputed

mark in the name of respondent Sehwani, Incorporated, and damages for violation of petitioners
intellectual property rights, falls within the jurisdiction of the IPO Director of Legal Affairs.

While Section 163 thereof vests in civil courts jurisdiction over cases of unfair
competition, nothing in the said section states that the regular courts have sole jurisdiction over
unfair competition cases, to the exclusion of administrative bodies.
Sections 160 and 170, which are also found under Part III of the Intellectual Property
Code, recognize the concurrent jurisdiction of civil courts and the IPO over unfair competition
cases.

These two provisions read:

Section 160. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement
Action. Any foreign national or juridical person who meets the requirements of Section 3 of this
Act and does not engage in business in the Philippines may bring a civil or administrative
action hereunder for opposition, cancellation, infringement, unfair competition, or false
designation of origin and false description, whether or not it is licensed to do business in the
Philippines under existing laws.

Section 170. Penalties. Independent of the civil and administrative sanctions imposed by law, a
criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging from
Fifty thousand pesos (P50,000) to Two hundred thousand pesos (P200,000), shall be imposed on
any person who is found guilty of committing any of the acts mentioned in Section 155,
Section168, and Subsection169.1.

Based on the foregoing discussion, the IPO Director of Legal Affairs had jurisdiction to
decide the petitioners administrative case against respondents and the IPO Director General had
exclusive jurisdiction over the appeal of the judgment of the IPO Director of Legal Affairs.

SECOND ISSUE: Yes. The evidence on record shows that Sehwani Inc. and Benita
Frites were not using their registered trademark but that of In-n-Out Burger. Sehwani and Benita
Frites are also giving their products the general appearance that would likely influence the
purchasers to believe that their products are that of In-N-Out Burger. The intention to deceive
may be inferred from the similarity of the goods as packed and offered for sale, and, thus, an
action will lie to restrain unfair competition. The respondents fraudulent intention to deceive
purchasers is also apparent in their use of the In-N-Out Burger in business signage.

The essential elements of an action for unfair competition are (1) confusing similarity in
the general appearance of the goods and (2) intent to deceive the public and defraud a
competitor. The confusing similarity may or may not result from similarity in the marks, but may
result from other external factors in the packaging or presentation of the goods. The intent to
deceive and defraud may be inferred from the similarity of the appearance of the goods as
offered for sale to the public. Actual fraudulent intent need not be shown.
Phil. Pharmahealth Inc. vs. Pfizer (Phil.) Inc.

Facts:
Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is
marketed under the brand name Unasyn. Sometime in January and February 2003, Pfizer
discovered that Pharmawealth submitted bids for the supply of Sulbactam Ampicillin to several
hospitals without the Pfizers consent. Pfizer then demanded that the hospitals cease and desist
from accepting such bids. Pfizer also demanded that Pharmawealth immediately withdraw its
bids to supply Sulbactam Ampicillin. Pharmawealth and the hospitals ignored the demands.

Pfizer then filed a complaint for patent infringement with a prayer for permanent
injunction and forfeiture of the infringing products. A preliminary injunction effective for 90
days was granted by the IPOs Bureau of Legal Affairs (IPO-BLA). Upon expiration, a motion
for extension filed by Pfizer was denied. Pfizer filed a Special Civil Action for Certiorari in the
Court of Appeals (CA) assailing the denial.

While the case was pending in the CA, Pfizer filed with the Regional Trial Court of
Makati (RTC) a complaint for infringement and unfair competition, with a prayer for injunction.
The RTC issued a temporary restraining order, and then a preliminary injunction.

Pharmawealth filed a motion to dismiss the case in the CA, on the ground of forum
shopping. Nevertheless, the CA issued a temporary restraining order. Pharmawealth again filed a
motion to dismiss, alleging that the patent, the main basis of the case, had already lapsed, thus
making the case moot, and that the CA had no jurisdiction to review the order of the IPO-BLA
because this was granted to the Director General. The CA denied all the motions. Pharmawealth
filed a petition for review on Certiorari with the Supreme Court.

Issues:

a. Can an injunctive relief be issued based on an action of patent infringement when the
patent allegedly infringed has already lapsed?
b. What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of
the Intellectual Property Office?
c. Is there forum shopping when a party files two actions with two seemingly different
causes of action and yet pray for the same relief?
Held:

No. The provision of R.A. 165, from which the Pfizers patent was based, clearly states
that "[the] patentee shall have the exclusive right to make, use and sell the patented machine,
article or product, and to use the patented process for the purpose of industry or commerce,
throughout the territory of the Philippines for the term of the patent; and such making, using, or
selling by any person without the authorization of the patentee constitutes infringement of the
patent."

Clearly, the patentees exclusive rights exist only during the term of the patent. Since the
patent was registered on 16 July 1987, it expired, in accordance with the provisions of R.A. 165,
after 17 years, or 16 July 2004. Thus, after 16 July 2004, Pfizer no longer possessed the
exclusive right to make, use, and sell the products covered by their patent. The CA was wrong in
issuing a temporary restraining order after the cut-off date.

According to IP Code, the Director General of the IPO exercises exclusive jurisdiction
over decisions of the IPO-BLA. The question in the CA concerns an interlocutory order, and not
a decision. Since the IP Code and the Rules and Regulations are bereft of any remedy regarding
interlocutory orders of the IPO-BLA, the only remedy available to Pfizer is to apply the Rules
and Regulations suppletorily. Under the Rules, a petition for certiorari to the CA is the proper
remedy. This is consistent with the Rules of Court. Thus, the CA had jurisdiction.

Yes. Forum shopping is defined as the act of a party against whom an adverse judgment
has been rendered in one forum, of seeking another (and possibly favourable) opinion in another
forum (other than by appeal or the special civil action of certiorari), or the institution of two (2)
or more actions or proceedings grounded on the same cause on the supposition that one or the
other court would make a favourable disposition.

The elements of forum shopping are: (a) identity of parties, or at least such parties that
represent the same interests in both actions; (b) identity of rights asserted and reliefs prayed for,
the reliefs being founded on the same facts; (c) identity of the two preceding particulars, such
that any judgment rendered in the other action will, regardless of which party is successful,
amount to res judicata in the action under consideration. This instance meets these elements.

The parties are clearly identical. In both the complaints in the BLA-IPO and RTC, the
rights allegedly violated and the acts allegedly violative of such rights are identical, regardless of
whether the patents on which the complaints were based are different. In both cases, the ultimate
objective of Pfizer was to ask for damages and to permanently prevent Pharmawealth from
selling the contested products. Relevantly, the Supreme Court has decided that the filing of two
actions with the same objective, as in this instance, constitutes forum shopping.

Owing to the substantial identity of parties, reliefs and issues in the IPO and RTC cases, a
decision in one case will necessarily amount to res judicata in the other action.
Topic: Works Protected
Title: Columbia Pictures Entertainment, Inc. vs Court of Appeals
Reference: 262 SCRA 219

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?

RULINGS

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 20thCentury 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.

Topic: Works Protected

Topic: Ching vs. Salinas
Reference: G.R. No. 161295 June 29, 2005

FACTS

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. On September 4, 2001, Ching and Joseph Yu were issued by
the National Library Certificates of Copyright Registration and Deposit of the said work
described therein as "Leaf Spring Eye Bushing for Automobile."4
 After due investigation, the NBI filed applications for search warrants in the RTC of
Manila against William Salinas, Sr. and the officers and members of the Board of Directors of
Wilaware Product Corporation. It was alleged that the respondents therein reproduced and
distributed the said models penalized under Sections 177.1 and 177.3 of Republic Act (R.A.) No.
8293.

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.

ISSUES

1. Whether or not petitioners 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?

RULINGS

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.

Topic: Works Protected

Title: Pedro Serrano Laktaw vs. Mamerto Paglinawan
Reference: G.R. No. L-11937 April 1, 1918

FACTS

It was alleged: (1) That the plaintiff was, according to the laws regulating literary
properties, the registered owner and author of a literary work entitled Diccionario Hispano-
Tagalog (Spanish-Tagalog Dictionary) published in the City of Manila in 1889 by the printing
establishment La Opinion, and a copy of which was attached to the complaint; (2) that the
defendant, without the consent of the plaintiff, reproduced said literary work, improperly copied
the greater part thereof in the work published by him and entitled Diccionariong Kastila-Tagalog
(Spanish-Tagalog Dictionary); (3) that said act of the defendant, which is a violation of article 7
of the Law on Intellectual Property, caused irreparable injuries to the plaintiff, who was surprised
when, on publishing his new work entitled Diccionario Tagalog-Hispano (Tagalog-Spanish
Dictionary) he learned of the fact, and (4) that the damages occasioned to the plaintiff by the
publication of defendant's work amounted to $10,000. The plaintiff therefore prayed the court to
order the defendant to withdraw from sale all stock of the work and to pay the plaintiff the sum
of $10,000, with costs.

The defendant denied each and every allegation of the complaint and prayed the court to
absolve him from the complaint. The court rendered judgment, absolving the defendant from the
complaint, but without making any special pronouncement as to costs. The plaintiff moved for a
new trial on the ground that the judgment was against the law and the weight of the evidence.
Said motion having been overruled, plaintiff excepted to the order overruling it, and appealed the
case to the Supreme Court upon a bill of exceptions.

The ground of the decision appealed from is that a comparison of the plaintiff's dictionary
with that of the defendant does not show that the latter is an improper copy of the former, which
has been published and offered for sale by the plaintiff for about twenty-five years or more. The
court held that the plaintiff had no right of action and that the remedy sought by him could not be
granted.

The appellant contends that court below erred in not declaring that the defendant had
reproduced the plaintiff's work and that the defendant had violated article 7 of the Law of
January 10, 1879, on Intellectual Property.

ISSUES

Whether or not defendant violated article 7 of the Law n Intellectual Property?

RULINGS

Yes.

There exists the exclusive right of the author, who is the absolute owner of his own work,
to produce it, according to article 2 of the Law of January 10, 1879, and consequently, nobody
may reproduce it, without his permission, not even to annotate or add something to it, or to
improve any edition thereof, according to article 7 of said law.

Indeed the property right recognized and protected by the Law of January 10, 1879, on
Intellectual Property, would be illusory if, by reason of the fact that said law is no longer in force
as a consequence of the change of sovereignty in these Islands, the author of a work, who has the
exclusive right to reproduce it, could not prevent another person from so doing without his
consent, and could not enforce this right through the courts of justice in order to prosecute the
violator of this legal provision and the defrauder or usurper of his right, for he could not obtain
the full enjoyment of the book or other work, and his property right thereto, which is recognized
by law, would be reduced, as Manresa says, to an insignificant thing, if he should have no more
right than that of selling his work.

Even considering that said Law of January 10, 1879, ceased to operate in these Islands,
upon the termination of Spanish sovereignty and the substitution thereof by that of the United
States of America, the right of the plaintiff to invoke said law in support of the action instituted
by him in the present case cannot be disputed. His property right to the work Diccionario
Hispano-Tagalog (Spanish-Tagalog Dictionary), published by him and edited in 1889, is
recognized and sanctioned by said law, and by virtue thereof, he had acquired a right of which he
cannot be deprived merely because the law is not in force now or is of no actual application. This
conclusion is necessary to protect intellectual property rights vested after the sovereignty of
Spain was superseded by that of the United States. It was so held superseded by that of the
United States. It was so held in the Treaty of Paris of December 10, 1898, between Spain and the
United States, when it declared in article 13 thereof that the rights to literary, artistic, and
industrial properties acquired by the subject of Spain in the Island of Cuba and in Puerto Rico
and the Philippines and other ceded territories, at the time of the exchange of the ratification of
said Treaty, shall continue to be respect.

Topic: Works not Protected

Title: Joaquin vs Drilon
Reference: G.R. No. 108946 January 28, 1999

FACTS

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

No. M922, dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to
1977.On June 28, 1973, it submitted to the National Library an addendum to its certificate of
copyright specifying the show's format and style of presentation.
 On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr., president
of BJPI, saw on RPN Channel 9 an episode of It's a Date, which was produced by IXL
Productions, Inc. (IXL). On July 18, 1991, he wrote a letter to private respondent Gabriel M.
Zosa, president and general manager of IXL, informing Zosa that BJPI had a copyright to Rhoda
and Me and demanding that IXL discontinue airing It's a Date. Meanwhile, private respondent
Zosa sought to register IXL's copyright to the first episode of It's a Date for which it was issued
by the National Library a certificate of copyright August 14, 1991.

Upon complaint of petitioners, information for violation of P.D. No. 49 was filed against
private respondent Zosa together with certain officers of RPN Channel 9. However, private
respondent Zosa sought a review of the resolution of the Assistant City Prosecutor before the
Department of Justice.

On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the
Assistant City Prosecutor's findings and directed him to move for the dismissal of the case
against private respondents. Petitioner Joaquin filed a motion for reconsideration, but his motion
denied by respondent Secretary of Justice on December 3, 1992. Hence, this petition.

ISSUES

Whether or not petitioners TV show is entitled to copyright protection

RULINGS

No.

Petitioners assert that the format of Rhoda and Me is a product of ingenuity and skill and
is thus entitled to copyright protection. It is their position that the presentation of a point-by-point
comparison of the formats of the two shows clearly demonstrates the nexus between the shows
and hence establishes the existence of probable cause for copyright infringement. Such being the
case, they did not have to produce the master tape.

To begin with the format of a show is not copyrightable. Section 2 of P.D. No.
49, otherwise known as the DECREE ON INTELLECTUAL PROPERTY, enumerates the
classes of work entitled to copyright protection.

This provision is substantially the same as 172 of the INTELLECTUAL PROPERTY

CODE OF PHILIPPINES (R.A. No. 8293). The format or mechanics of a television show is not
included in the list of protected works in 2 of P.D. No. 49. For this reason, the protection
afforded by the law cannot be extended to cover them.
 P.D. No. 49, 2, 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.

The new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES provides:

Sec. 175. Unprotected Subject Matter. Notwithstanding the provisions of

Sections 172 and 173, no protection shall extend, under this law, to any idea,
procedure, system, method or operation, concept, principle, discovery or mere
data as such, even if they are expressed, explained, illustrated or embodied in a
work; news of the day and other miscellaneous facts having the character of mere
items of press information; or any official text of a legislative, administrative or
legal nature, as well as any official translation thereof.

What then is the subject matter of petitioners' copyright? This Court is of the opinion that
petitioner BJPI's copyright covers audio-visual recordings of each episode of Rhoda and Me, as
falling within the class of works mentioned in P.D. 49, 2(M), to wit:

Cinematographic works and works produced by a process analogous to cinematography

or any process for making audio-visual recordings;

The copyright does not extend to the general concept or format of its dating game show.
Accordingly, by the very nature of the subject of petitioner BJPI's copyright, the
investigating prosecutor should have the opportunity to compare the videotapes of the
two shows.

Mere description by words of the general format of the two dating game shows is insufficient;
the presentation of the master videotape in evidence was indispensable to the determination of
the existence of probable cause.

Topic: Copyright or Economic rights

Title: Pearl & Dean (Phil.), Incorporated, vs. Shoemart, Incorporated
Reference: G.R. No. 148222 August 15, 2003

FACTS

Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation engaged in the

manufacture of advertising display units simply referred to as light boxes. These units utilize
specially printed posters sandwiched between plastic sheets and illuminated with back
lights. Pearl and Dean was able to secure a Certificate of Copyright Registration dated January
20, 1981 over these illuminated display units. The advertising light boxes were marketed under
the trademark Poster Ads. The application for registration of the trademark was filed with the
Bureau of Patents, Trademarks and Technology Transfer on June 20, 1983.

Sometime in 1985, Pearl and Dean negotiated with defendant-appellant Shoemart, Inc.
(SMI) for the lease and installation of the light boxes in SM City North Edsa. Since SM City
North Edsa was under construction at that time, SMI offered as an alternative, SM Makati and
SM Cubao, to which Pearl and Dean agreed. Only the contract for SM Makati, however, was
returned signed. On October 4, 1985, Vergara wrote Abano inquiring about the other contract
and reminding him that their agreement for installation of light boxes was not only for its SM
Makati branch, but also for SM Cubao. SMI did not bother to reply.

Instead, in a letter dated January 14, 1986, SMIs house counsel informed Pearl and Dean
that it was rescinding the contract for SM Makati due to non-performance of the terms thereof.

Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean
to fabricate its display units, offered to construct light boxes for Shoemarts chain of stores. SMI
approved the proposal and ten (10) light boxes were subsequently fabricated by Metro Industrial
for SMI. After its contract with Metro Industrial was terminated, SMI engaged the services of
EYD Rainbow Advertising Corporation to make the light boxes.

Sometime in 1989, Pearl and Dean, received reports that exact copies of its light boxes
were installed at SM City and in the fastfood section of SM Cubao. Upon investigation, Pearl
and Dean found out that aside from the two (2) reported SM branches, light boxes similar to
those it manufactures were also installed in two (2) other SM stores. It further discovered that
defendant-appellant North Edsa Marketing Inc. (NEMI), through its marketing arm, Prime Spots
Marketing Services, was set up primarily to sell advertising space in lighted display units located
in SMIs different branches. It therefore filed a 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 Pearl and Deans
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.

The RTC of Makati City decided in favor of P & D. On appeal, however, the Court of
Appeals reversed the trial courts ruling. Hence, this petition.

ISSUES
 1. Whether or not the light box depicted in such engineering drawings is also protected
by such copyright if the engineering or technical drawings of an advertising display
unit (light box) are granted copyright protection (copyright certificate of registration)
by the National Library;
2. Whether or not light box should be registered separately and protected by a patent
issued by the Bureau of Patents Trademarks and Technology Transfer (now
Intellectual Property Office) in addition to the copyright of the engineering
drawings;
3. Whether or not 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;

RULINGS

1. No.

Petitioner P & Ds complaint was that SMI infringed on its copyright over the light boxes
when SMI had the units manufactured by Metro and EYD Rainbow Advertising for its own
account. Obviously, petitioners position was premised on its belief that its copyright over the
engineering drawings extended ipso facto to the light boxes depicted or illustrated in said
drawings. In ruling that there was no copyright infringement, the Court of Appeals held that the
copyright was limited to the drawings alone and not to the light box itself. The Court agrees
with the appellate court.

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. Accordingly, it can cover only the works falling within the statutory enumeration or
description.

P & D secured its copyright under the classification class O work. This being so,
petitioners 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.

During the trial, the president of P & D himself admitted that the light box was neither a
literary not an artistic work but an engineering or marketing invention.

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.

2. Yes.

Petitioner never secured a patent for the light boxes. It therefore acquired no patent rights
which could have protected its invention, if in fact it really was. And because it had no patent,
petitioner could not legally prevent anyone from manufacturing or commercially using the
contraption. In Creser Precision Systems, Inc. vs. Court of Appeals, the Court held that there
can be no infringement of a patent until a patent has been issued, since whatever right one has to
the invention covered by the patent arises alone from the grant of patent.

3. No.

This issue concerns the use by respondents of the mark Poster Ads which petitioners
president said 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
and the sale of advertising spaces thereon, which, however, were not at all specified in the
trademark certificate.

Under the circumstances, the Court of Appeals correctly cited Faberge Inc. vs.
Intermediate Appellate Court where the Court, invoking Section 20 of the old Trademark Law,
ruled that the certificate of registration issued by the Director of Patents can confer (upon
petitioner) the exclusive right to use its own symbol only to those goods specified in the
certificate, subject to any conditions and limitations specified in the certificate x x x. One who
has adopted and used a trademark on his goods does not prevent the adoption and use of the
same trademark by others for products which are of a different description.

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.
TOPIC: Copyright or Economic Rights
TITLE: Filipino Society of Composers, Authors and Publishers, Inc. vs. Benjamin Tan
CITATION: G.R. No. L-36402. March 16, 1987.

FACTS:
Plaintiff-appellant 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."

Benjamin Tan is the operator of a restaurant where a combo with professional singers,
hired to play and sing musical compositions to entertain and amuse customers, were playing and
singing the above-mentioned compositions without any license or permission from the appellant.
Accordingly, appellant demanded from the appellee payment of the necessary license fee
compositions but the demand 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.

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 under the provisions of Section 3 of the Copyright
Law.

Lower court dismissed the complaint. Plaintiff appealed to the Court of Appeals which
certified the case to the Supreme Court for adjudication on the legal question involved.

ISSUE:
Whether or not the playing and signing of musical compositions which have been
copyrighted under the provisions of the Copyright Law inside the establishment of the
defendant-appellee constitute as infringement of copyright

RULING:
No, it doesnt constitute as infringement.

Section 3(c) of the Copyright Law provides:

"SEC. 3. The proprietor of a copyright or his heirs or assigns shall have the exclusive
right:
xxx xxx xxx
 (c) To exhibit, perform, represent, produce, or reproduce the copyrighted work in any
manner or by any method whatever for profit or otherwise; if not reproduced in copies for
sale, to sell any manuscripts or any record whatsoever thereof;
xxx xxx xxx"

In the case at bar,the Supreme Court held that there was indeed a performance for profit.
Also, the combo was paid as independent contractors by the appellant which means that the
expense were 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.

However, Paragraph 33 of Patent Office Administrative Order No. 3 provides among

other things that an intellectual creation should be copyrighted thirty (30) days after its
publication, if made in Manila, or within sixty (60) days if made elsewhere, failure of which
renders such creation public property.

A careful study of the records reveals that the song "Dahil Sa Iyo" which was registered
on April 20, 1956 became popular in radios, juke boxes, etc. long before registration while the
song "The Nearness Of You" registered on January 14, 1955 had become popular twenty five
(25) years prior to 1968 (the year of the hearing) or from 1943 (the year of registration) 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.

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.
TOPIC: Copyright or Economic Rights
TITLE: Mauro Malang Santos vs. McCullough Printing Company
CITATION: G.R. No. L-19439. October 31, 1964.

FACTS:
It was alleged that plaintiff Mauro Malang Santos, designed for former Ambassador
Felino Neri, for his personal Christmas card greetings for the year 1959, the artistic motif that
depicts "a Philippine rural Christmas time scene consisting of a woman and a child in nipa hut
adorned with a star shaped lantern and a man astride a carabao beside a tree, underneath which
appears the plaintiff's pen name, Malang."

The following year the defendant McCullough Printing Company, without the knowledge
and authority of plaintiff, displayed the very design in its album of Christmas card and offered it
for sale, for a price.

The lower court dismissed the complaint. He appealed the decision to the Supreme Court.

ISSUES:
1. Whether or not plaintiff is entitled to protection, notwithstanding the fact that he has
not copyrighted his design
2. Whether or not the publication is limited, so as to prohibit its use of by others, or it is
general publication

RULINGS:

1. No.

Paragraph 33 of Patent Office Administrative Order No. 3, as amended, provides, among

others, that an intellectual creation should be copyrighted thirty (30) days after its publication, if
made in Manila, or within sixty (60) days if made elsewhere, failure of which renders such
creation public property.

In the case at bar, there is no copyright for the design in question. Hence, it has already
become a public property. Consequently, no protection may be granted to the creator of the
design.

2. No.

The Court did not accept the contention of appellant that the publication of the design was a
limited one, or that there was an understanding that only Ambassador Neri should have absolute
right to use the same. In the first place if such were the condition, then Ambassador Neri would
be the aggrieved party, and not the appellant. In the second place, if there was such a limited
publication or prohibition, the same was not shown on the face of the design. When the purpose
is a limited publication, but the effect is general publication, irrevocable rights thereupon become
vested in the public, in consequence of which enforcement of the restriction becomes impossible.

When Ambassador Neri distributed 800 copies of the design in controversy, the plaintiff lost
control of his design and the necessary implication was that there had been a general publication,
there having been no showing of a clear indication that a limited publication was intended.
TOPIC: Copyright or Economic Rights
TITLE: Mauro Malang Santos vs. McCullough Printing Company
CITATION: G.R. No. L-19439. October 31, 1964.

FACTS:

It was alleged that plaintiff Mauro Malang Santos, designed for former Ambassador
Felino Neri, for his personal Christmas card greetings for the year 1959, the artistic motif that
depicts "a Philippine rural Christmas time scene consisting of a woman and a child in nipa hut
adorned with a star shaped lantern and a man astride a carabao beside a tree, underneath which
appears the plaintiff's pen name, Malang."

The following year the defendant McCullough Printing Company, without the knowledge
and authority of plaintiff, displayed the very design in its album of Christmas card and offered it
for sale, for a price.

The lower court dismissed the complaint. He appealed the decision to the Supreme Court.

ISSUES:

Whether or not plaintiff is entitled to protection, notwithstanding the fact that he has not
copyrighted his design

Whether or not the publication is limited, so as to prohibit its use of by others, or it is general
publication

RULINGS:

No. Paragraph 33 of Patent Office Administrative Order No. 3, as amended, provides, among
others, that an intellectual creation should be copyrighted thirty (30) days after its publication, if
made in Manila, or within sixty (60) days if made elsewhere, failure of which renders such
creation public property.

In the case at bar, there is no copyright for the design in question. Hence, it has already become a
public property. Consequently, no protection may be granted to the creator of the design.

No.The Court did not accept the contention of appellant that the publication of the design was a
limited one, or that there was an understanding that only Ambassador Neri should have absolute
right to use the same. In the first place if such were the condition, then Ambassador Neri would
be the aggrieved party, and not the appellant. In the second place, if there was such a limited
publication or prohibition, the same was not shown on the face of the design. When the purpose
is a limited publication, but the effect is general publication, irrevocable rights thereupon become
vested in the public, in consequence of which enforcement of the restriction becomes impossible.

When Ambassador Neri distributed 800 copies of the design in controversy, the plaintiff lost
control of his design and the necessary implication was that there had been a general publication,
there having been no showing of a clear indication that a limited publication was intended.
TOPIC: Fair Use of Copyright Work
TITLE: Pacita I. Habana, Alicia L. Cinco and Jovita N. Fernando vs. Felicidad C. Robles
and Goodwill Trading Co., Inc.
CITATION: G.R. No. 131522. July 19, 1999.

FACTS:

Petitioners are authors and copyright owners of their published books while respondents
Robles and Goodwill Trading Co., Inc. are authors and publishers, respectively, of another
published work that was also covered by copyrights issued to them.

In the course of revising their published works, petitioners chanced upon the book of
Robles. After an itemized examination and comparison of the books, petitioners found that
several pages of the respondents' book are similar, if not altogether a copy from the petitioners'
book. When respondents ignored demands of petitioners for damages, the latter filed a complaint
for infringement and/or unfair competition with damages.

The trial court dismissed the complaint of the petitioners.

Petitioners appealed their case to the Court of Appeals (CA), which affirmed the
judgment of the trial court. The CA also deleted the award of attorneys' fees, since its view was
that there was no bad faith on the part of the petitioners in instituting the action. The petitioners
filed a motion for reconsideration, but, the CA denied the same, hence, this petition for review on
certiorari.

ISSUE:

Whether or not respondent Robles abused a writer's right to fair use

RULING:

Yes.

Under Sec. 184 of Republic Act 8293 it is provided that:

Limitations on Copyright. Notwithstanding the provisions of Chapter V, the following

shall not constitute infringement of copyright:

xxx xxx xxx

 (c) The making of quotations from a published work if they are compatible with fair use
and only to the extent justified for the purpose, including quotations from newspaper articles and
periodicals in the form of press summaries: Provided, That the source and the name of the
author, if appearing on the work, are mentioned.

In the case at bar, there is no question that petitioners presented several pages of the
books that more or less had the same contents. It may be correct that the books being grammar
books may contain materials similar as to some technical contents with other grammar books.

Even if petitioners and respondent Robles were of the same background in terms of
teaching experience and orientation, it is not an excuse for them to be identical even in examples
contained in their books. The similarities in examples and material contents are so obviously
present in this case.

Quotations from a published work if they are compatible with fair use and only to the
extent justified by the purpose, including quotations from newspaper articles and periodicals in
the form of press summaries are allowed provided that the source and the name of the author, if
appearing on the work, are mentioned.

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 the book. The final product of an
author's toil is her book. To allow another to copy the book without appropriate acknowledgment
is injury enough.
TOPIC: Limitations on Rights
TITLE: ABS-CBN Broadcasting Corporation vs. Philippine Multi-Media System, Inc., et
al.
CITATION: G.R. Nos. 175769-70. January 19, 2009.

FACTS:

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

the Republic of the Philippines to engage in television and radio broadcasting. Respondent
Philippine Multi-Media System, Inc. (PMSI) is the operator of Dream Broadcasting System.

PMSI was granted a legislative franchise under Republic Act No. 8630 and was given a
Provisional Authority by the National Telecommunications Commission (NTC) to install,
operate and maintain a nationwide DTH satellite service. When it commenced operations, it
offered as part of its program line-up ABS-CBN Channels 2 and 23, among others.

However, ABS-CBN demanded for PMSI to cease and desist from rebroadcasting
Channels 2 and 23. PMSI replied that the rebroadcasting was in accordance with the authority
granted it by NTC and its obligation under a certain NTC Memorandum Circular.

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

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

ABS-CBN filed with the IPO a complaint alleging that PMSI's unauthorized
rebroadcasting of Channels 2 and 23 infringed on its broadcasting rights and copyright.

ISSUE:

Whether or not PMSI committed an infringement on ABS-CBNs copyright

RULING:

No.

According to Sec. 184 (Limitations on Copyright) of the Intellectual Property Code

 184.1. Notwithstanding the provisions of Chapter V, the following acts shall not
constitute infringement of copyright:

xxx xxx xxx

(h) The use made of a work by or under the direction or control of the Government, by
the National Library or by educational, scientific or professional institutions where such
use is in the public interest and is compatible with fair use.

The carriage of ABS-CBN's signals by virtue of the must-carry rule in Memorandum

Circular No. 04-08-88 is under the direction and control of the government through the NTC
which is vested with exclusive jurisdiction to supervise, regulate and control telecommunications
and broadcast services/facilities in the Philippines.

ABS-CBN presented no substantial evidence to prove that PMSI carried its signals for
profit; or that such carriage adversely affected the business operations of its regional stations.
Except for the testimonies of its witnesses, no studies, statistical data or information have been
submitted in evidence.
Topic: Infringement
Microsoft Corp. vs. Hwang
Citation: G.R. No. 147043, June 21, 2005

Facts:

Microsoft Corporation ("Microsoft"), a Delaware, United States corporation, owns the

copyright and trademark to several computer software. Beltron Computer Philippines, Inc.
("Beltron") and Taiwan Machinery Display & Trade Center, Inc. ("TMTC") are domestic
corporations. In May 1993, Microsoft and Beltron entered into a Licensing Agreement
("Agreement"). Under Section 2(a) of the Agreement, as amended in January 1994, Microsoft
authorized Beltron, for a fee, to:

(1) reproduce and install no more than one (1) copy of Microsoft software on each
Customer System hard disk or Read Only Memory ("ROM")

(2) distribute directly or indirectly and license copies of the Product in object code form
to end users

The Agreement also authorized Microsoft and Beltron to terminate the contract if the
other fails to comply with any of the Agreements provisions. Microsoft terminated the
Agreement effective 22 June 1995 for Beltrons non-payment of royalties.

Afterwards, Microsoft learned that Beltron were illegally copying and selling Microsoft
software. Consequently, Microsoft, through its Philippine agent, hired the services of Pinkerton
Consulting Services ("PCS"), a private investigative firm. Microsoft also sought the assistance of
the National Bureau of Investigation ("NBI").

On 10 November 1995, a PCS employee and an NBI agent posing as representatives of a

computer shop, bought computer hardware (central processing unit ("CPU") and computer
monitor) and software (12 computer disks ("CDs") in read-only memory ("ROM") format) from
Beltron. The CPU contained pre-installed Microsoft Windows 3.1 and MS-DOS software. The
12 CD-ROMs, encased in plastic containers with Microsoft packaging, also contained Microsoft
software. At least two of the CD-ROMs were "installers," so-called because they contain several
software (Microsoft only or both Microsoft and non- Microsoft). The PCS employee and the NBI
agent were not given the Microsoft end-user license agreements, users manuals, registration
cards or certificates of authenticity for the articles they purchased. The receipt issued to them for
the CPU and monitor bore the heading "T.M.T.C. (PHILS.) INC. BELTRON COMPUTER."
 The NBI searched the premises of Beltron and TMTC and seized several computer-
related hardware, software, accessories, and paraphernalia based on the search warrant applied
by Microsoft.

Based on the articles obtained from Beltron and TMC, Microsoft and a certain Lotus
Development Corporation ("Lotus Corporation") charged Beltron and TMC before the
Department of Justice ("DOJ") with copyright infringement under Section 5(A) in relation to
Section 29 of Presidential Decree No. 49, as amended, ("PD 49") and with unfair competition
under Article 189(1) of the Revised Penal Code. Microsoft alleged that respondents illegally
copied and sold Microsoft software.

Issues:

Whether or not Beltron and TMC are liable for copyright infringement and unfair
competition?

Held :

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.

Significantly, under Section 5(A), a copyright owner is vested with the exclusive right to
"copy, distribute, multiply, [and] sell" his intellectual works.

The elements of unfair competition under Article 189(1)43 of the Revised Penal Code are:

(a) That the offender gives his goods the general appearance of the goods of another
manufacturer or dealer;

(b) That the general appearance is shown in the

(1) goods themselves, or in the

 (2) wrapping of their packages, or in the
(3) device or words therein, or in
(4) any other feature of their appearance

(c) That the offender offers to sell or sells those goods or gives other persons a chance or
opportunity to do the same with a like purpose [; and]

(d) That there is actual intent to deceive the public or defraud a competitor.

The element of intent to deceive may be inferred from the similarity of the goods or their
appearance.
Microsoft Corp. vs. Maxicorp Inc
Citation : 438 SCRA 224

Facts :

Microsoft sued Maxicorp for copyright infringement and unfair competition for
production, installing and selling of counterfeit Microsofts products. Microsoft alleged that they
did not authorize Maxicorp for production or selling of their products.

On 25 July 1996, National Bureau of Investigation (NBI) Agent Dominador Samiano, Jr.
(NBI Agent Samiano) filed several applications for search warrants in the RTC against Maxicorp
for alleged violation of Section 29 of PD 49 and Article 189 of the RPC. After conducting a
preliminary examination of the applicant and his witnesses, Judge William M. Bayhon issued
Search Warrants Nos. 96-451, 96-452, 96-453 and 96-454, all dated 25 July 1996, against
Maxicorp.Armed with the search warrants, NBI agents conducted on 25 July 1996 a search of
Maxicorps premises and seized property fitting the description stated in the search warrants.

On 2 September 1996, Maxicorp filed a motion to quash the search warrants alleging that
there was no probable cause for their issuance and that the warrants are in the form of general
warrants. The RTC denied Maxicorps motion on 22 January 1997. The RTC also denied
Maxicorps motion for reconsideration. The RTC found probable cause to issue the search
warrants after examining NBI Agent Samiano, John Benedict Sacriz (Sacriz), and computer
technician Felixberto Pante (Pante). The three testified on what they discovered during their
respective visits to Maxicorp. NBI Agent Samiano also presented certifications from petitioners
that they have not authorized Maxicorp to perform the witnessed activities using petitioners
products.

On 24 July 1997, Maxicorp filed a petition for certiorari with the Court of Appeals
seeking to set aside the RTCs order. On 23 December 1998, the Court of Appeals reversed the
RTCs order denying Maxicorps motion to quash the search warrants. Petitioners moved for
reconsideration. The Court of Appeals denied petitioners motion on 29 November 1999.
The Court of Appeals held that NBI Agent Samiano failed to present during the preliminary
examination conclusive evidence that Maxicorp produced or sold the counterfeit products. The
Court of Appeals pointed out that the sales receipt NBI Agent Samiano presented as evidence
that he bought the products from Maxicorp was in the name of a certain Joel Diaz.

Issues

Whether or not Maxicorp committed copyright infringement and unfair competition?

Held
 Copyright infringement and unfair competition are not limited to the act of selling
counterfeit goods. They cover a whole range of acts, from copying, assembling, packaging to
marketing, including the mere offering for sale of the counterfeit goods. The fact that Sacriz did
not actually purchase counterfeit software from Maxicorp does not eliminate the existence of
probable cause. Copyright infringement and unfair competition are not limited to the act of
selling counterfeit goods. They cover a whole range of acts, from copying, assembling,
packaging to marketing, including the mere offering for sale of the counterfeit goods. The clear
and firm testimonies of petitioners witnesses on such other acts stand untarnished. The
Constitution and the Rules of Court only require that the judge examine personally and
thoroughly the applicant for the warrant and his witnesses to determine probable cause. The RTC
complied adequately with the requirement of the Constitution and the Rules of Court.
Bayanihan Music Phils., Inc. vs. BMG Records
Citation: G.R. No. 166337, March 7, 2005

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". On March 11, 1976, the parties entered into a similar contract over Chan's
other musical composition entitled "Afraid For Love To Fade".

Jose Mari Chan (Chan) entered into a contract with 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". Three years
after the parties entered into a similar contract over Chan's other musical composition entitled
"Afraid For Love To Fade".

On the strength of the abovementioned contracts, Bayanihan applied for and was granted
by the National Library a Certificate of Copyright Registration for each of the two musical
compositions.Apparently, without the knowledge and consent of petitioner Bayanihan, Chan
authorized BMG Records (BMG) to record and distribute the aforementioned musical
compositions in a then recently released album of singer Lea Salonga.

Bayanihan informed Chan and BMG of its existing copyrights over the subject musical
compositions and the alleged violation of such right by the two. Demands were made on both to
settle the matter with Bayanihan. However no settlement was reached by the parties.

Hence, Bayanihan filed a 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.

BMG Arguments:

(1) the acts of recording and publication sought to be enjoined had already been consummated,
thereby rendering moot Bayanihan's prayer for TRO and/or preliminary injunction;

(2) there is no clear showing that petitioner Bayanihan would be greatly damaged by the refusal
of the prayed for TRO and/or preliminary injunction.
Chan Arguments:

(1) it was never his intention to divest himself of all his rights and interest over the musical
compositions in question;

(2) the contracts he entered into with Bayanihan are mere music publication agreements giving
Bayanihan, as assignee, the power to administer his copyright over his two songs and to act as
the exclusive publisher thereof;

(3) he was not cognizant of the application made by and the subsequent grant of copyrights to
Bayanihan;

(4) Bayanihan was remissed in its obligations under the contracts because it failed to effectively
advertise his musical compositions for almost twenty (20) years, hence, he caused the rescission
of said contracts in 1997.

Issues

Whether or not Bayanihan as assignee of the copyrights over the musical compositions in
question has a clear legal right to a writ of preliminary injunction?

Held

No, Bayanihan has no right for right for injunction over the subject musical
compositions.

The issuance of an injunctive writ if the following requisites provided for by law are:
(1) there must be a right in esse or the existence of a right to be protected;

(2) the act against which the injunction is to be directed is a violation of such right, the trial court
threaded the correct path in denying petitioner's prayer therefor.

Chan, 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.

The copyrights obtained by Bayanihan 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. `
Philip Morris, Inc., Benson & Hedges (Canada), Inc., and Fabriques De Tabac Reunies,
S.A., (Now Known As Philip Morris Products S.A.) vs. Fortune Tobacco Corporation

Citation : G.R. No. 158589 June 27, 2006

Facts:

Petitioner Philip Morris, Inc., a corporation organized under the laws of the State of
Virginia, United States of America, is, per Certificate of Registration No. 18723 issued on April
26, 1973 by the Philippine Patents Office (PPO), the registered owner of the trademark "MARK
VII" for cigarettes. Similarly, petitioner Benson & Hedges (Canada), Inc., a subsidiary of Philip
Morris, Inc., is the registered owner of the trademark "MARK TEN" for cigarettes as evidenced
by PPO Certificate of Registration No. 11147. And as can be seen in Trademark Certificate of
Registration No. 19053, another subsidiary of Philip Morris, Inc., the Swiss company Fabriques
de Tabac Reunies, S.A., is the assignee of the trademark "LARK," which was originally
registered in 1964 by Ligget and Myers Tobacco Company. On the other hand, respondent
Fortune Tobacco Corporation, a company organized in the Philippines, manufactures and sells
cigarettes using the trademark "MARK."

The legal dispute between the parties started when the herein petitioners, on the claim
that an infringement of their respective trademarks had been committed, filed, on August 18,
1982, a Complaint for Infringement of Trademark and Damages against respondent Fortune
Tobacco Corporation, docketed as Civil Case No. 47374 of the Regional Trial Court of Pasig,
Branch 166.

Issue:

(1) whether or not petitioners, as Philippine registrants of trademarks, are entitled to enforce
trademark rights in this country; and

(2) whether or not respondent has committed trademark infringement against petitioners by its
use of the mark "MARK" for its cigarettes, hence liable for damages.

Held:

1. No. registrants or ordinary users, like respondent. But while petitioners enjoy the
statutory presumptions arising from such registration, i.e., as to the validity of the registration,
ownership and the exclusive right to use the registered marks, they may not successfully sue on
the basis alone of their respective certificates of registration of trademarks. For, petitioners are
still foreign corporations. As such, they ought, as a condition to availment of the rights and
privileges vis--vis their trademarks in this country, to show proof that, on top of Philippine
registration, their country grants substantially similar rights and privileges to Filipino citizens
pursuant to Section 21-Aof R.A. No. 166.

In Leviton Industries v. Salvador, the Court further held that the aforementioned
reciprocity requirement is a condition sine qua non to filing a suit by a foreign corporation
which, unless alleged in the complaint, would justify dismissal thereof, a mere allegation that the
suit is being pursued under Section 21-A of R.A. No. 166 not being sufficient. In a subsequent
case, however, the Court held that where the complainant is a national of a Paris Convention-
adhering country, its allegation that it is suing under said Section 21-A would suffice, because
the reciprocal agreement between the two countries is embodied and supplied by the Paris
Convention which, being considered part of Philippine municipal laws, can be taken judicial
notice of in infringement suits.

2. NO . The "likelihood of confusion" is the gravamen of trademark infringement.But

likelihood of confusion is a relative concept, the particular, and sometimes peculiar,
circumstances of each case being determinative of its existence. Thus, in trademark infringement
cases, more than in other kinds of litigation, precedents must be evaluated in thelight of each
particular case.

Since the word "MARK," be it alone or in combination with the word "TEN" and the
Roman numeral "VII," does not point to the origin or ownership of the cigarettes to which they
apply, the local buying public could not possibly be confused or deceived that respondents
"MARK" is the product of petitioners and/or originated from the U.S.A., Canada or Switzerland.
And lest it be overlooked, no actual commercial use of petitioners marks in local commerce was
proven. There can thus be no occasion for the public in this country, unfamiliar in the first place
with petitioners marks, to be confused.
Canon Kabushiki Kaisha vs. Court of Appeals
Citation: G.R. No. 120900, July 20, 2000

Facts:

On January 15, 1985, private respondent NSR Rubber Corporation filed an application
for registration of the mark CANON for sandals in the Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT). Canon Kabushiki Kaisha filed a Verified Notice of Opposition
alleging that it will be damaged by the registration of the trademark CANON in the name of
private respondent since they were using the same trademark for their footwear line of products.
The private respondent will also use the name Canon for its footwear products.

Based on the records, the evidence presented by petitioner consisted of its certificates of
registration for the mark CANON in various countries covering goods belonging to class 2,
paints, chemical products, toner, and dye stuff. Petitioner also submitted in evidence its
Philippine Trademark Registration No. 39398, showing its ownership over the trademark
CANON.

The BPTTT, on November 10, 1992, issued its decision dismissing the opposition of
petitioner and giving due course to NSR's application for the registration of the trademark
CANON. Canon Kabushiki Kaisha filed an appeal with the Court of Appeals that eventually
affirmed the decision of the BPTTT.

Issue:

Is the use of trademark, CANON, by the private respondent affects the business of Canon
Kabushiki Kaisha who has an existing ownership of a trademark also known as CANON?

Held:

The Supreme Court says that ordinarily, the ownership of a trademark or tradename is a
property right that the owner is entitled to protect as mandated by the Trademark Law. However,
when a trademark is used by a party for a product in which the other party does not deal, the use
of the same trademark on the latter's product cannot be validly objected to.

The BPTTT correctly ruled that since the certificate of registration of petitioner for the
trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private
respondent can use the trademark CANON for its goods classified as class 25 (sandals). Clearly,
there is a world of difference between the paints, chemical products, toner, and dyestuff of
petitioner and the sandals of private respondent.

The Convention of Paris for the Protection of Industrial Property, otherwise known as the
Paris Convention, of which both the Philippines and Japan, the country of petitioner, are
signatories, is a multilateral treaty that seeks to protect industrial property consisting of patents,
utility models, industrial designs, trademarks, service marks, trade names and indications of
source or appellations of origin, and at the same time aims to repress unfair competition. We
agree with public respondents that the controlling doctrine with respect to the applicability of
Article 8 of the Paris Convention is that established in Kabushi Kaisha Isetan vs. IAC. As
pointed out by the BPTTT: Regarding the applicability of Article 8 of the Paris Convention, this
Office believes that there is no automatic protection afforded an entity whose tradename is
alleged to have been infringed through the use of that name as a trademark by a local entity. To
illustrate if a taxicab or bus company in a town in the United Kingdom or India happens to use
the tradename Rapid Transportation, it does not necessarily follow that Rapid can no longer
be registered in Uganda, Fiji, or the Philippines.