Intellectual Property Law – Case Digests

1. Dig

Tañada vs Angara

G.R. No. 118295, May 2, 1997

Facts:

In April 1994, the Philippine government signed the Final Act Embodying the
Results of the Uruguay Round of Multilateral Negotiations in Marrakesh, Morocco,
establishing the World Trade Organization (WTO). In December 1994, the Senate
concurred with the ratification made by president of the said agreement, and various
agreements and associated legal instruments.

Petitioners assail the constitutionality of the Philippines acceding to the

establishment of WTO for being violative of constitutional provisions to “develop a self-
reliant and independent national economy effectively controlled by Filipinos” (Art. II,
Sec. 19), “give preference to qualified Filipinos” (Art. XII, Sec. 10), and “promote the
preferential use of Filipino labor, domestic materials and locally produced goods” (Art.
XII, Sec. 12). The WTO, through its provisions on “most favored nation” and national
treatment, places nationals and products of member countries, including trade related
aspects of intellectual property rights, on the same footing as Filipinos and local
products,” in contravention of the “Filipino First” policy of the Constitution.

In relation to intellectual property rights, petitioners aver that Art. 34, para. 1 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.

Issue:

Does Art. 34., para. 1 of the TRIPS Agreement intrude on the power of the Supreme
Court to promulgate rules concerning pleading, practice and procedures?

Held:

No. The provision in Art. 34 of the WTO Agreement 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. Under the said Art. 34, a WTO member
is required to provide a rule of disputable 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, (1) where such product
obtained by the patented product is new, or (2) 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 Art. 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" on the
producer of the identical (or fake) product to show that his product was produced
without the use of the patented process.

However, the patent owner still has the "burden of proof" since, regardless of the
presumption provided under Art. 34, para. 1, 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

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or the fact of "substantial likelihood" that the identical product was made by the patented
process.

Moreover, it should be noted that the requirement of Art. 34 to provide a

disputable presumption applies only if (1) the product obtained by the patented process
in new or (2) 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.

2. Ceras

ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS
LABORATORY, petitioner vs. HON. COURT OF APPEALS, SUMMERVILLE
GENERAL MERCHANDISING and COMPANY, and ANG TIAM CHAY,
respondents.

G.R. No. 115758, March 19, 2002

DE LEON, JR., J:

Facts:

Petitioner Elidad C. Kho filed a complaint for injunction and damages against the
respondents Summerville General Merchandising and Company and Ang Tiam Chay.

The petitioner alleges that it is the registered owner of the copyrights Chin Chun Su and
Oval Facial Cream Container/Case as shown by Certificates of Copyright Registration.
Further, the petitioner alleges that she also has patent rights on Chin Chun Su & Device
and Chin Shun Su for medicated cream after purchasing the same from Quintin Cheng,
the registered owner thereof in the Supplemental Register of the Philippine Patent Office
on February 7, 1980 under Registration Certificate.

According to the petitioner, the respondent Summerville advertised and sold petitioner’s
cream products under the brand name Chin Chun Su, in similar containers that petitioner
uses, thereby misleading the public, and resulting in the decline in the petitioner’s
business sale and income; and that the respondents should be enjoined from allegedly
infringing on the copyrights and patents of the petitioner.

On the other hand, the respondents alleged that it is the exclusive and authorized
importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi
Factory of Taiwan; that the said Taiwanese manufacturing company authorized
Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine
Patent Office and other appropriate government agencies; that the petitioner obtained
the copyrights through misrepresentation and falsification; and that the authority of
Quintin Cheng, assignee of the patent registration certificate, to distribute and market
Chin Chun Su products in the Philippines had already been terminated by the Taiwanese
Manufacturing Company.

The trial court granted the petitioner’s application for preliminary injunction. The
respondents moved for reconsideration but their Motion for Reconsideration was denied
by the trial court.

The respondents filed a petition for certiorari with the Court of Appeals. The appellate
court granted the petition.

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The petitioner filed a Motion for Reconsideration.

The Court of Appeals promulgated a Resolution denying the petitioner’s Motion for
Reconsideration. Hence, this petition.

Issue:

Whether the copyright and patent over the name and container of a beauty cream product
would entitle the registrant to the use and ownership over the same to the exclusion of
others.

Held:

No. Trademark, copyright and patents are different intellectual property rights that
cannot be interchanged with one another.

A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service
mark) of an enterprise and shall include a stamped or marked container of goods. In relation
thereto, a trade name means the name or designation identifying or distinguishing an enterprise.

Meanwhile, the scope of a copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from the moment of their
creation.

Patentable inventions, on the other hand, refer to any technical solution of a problem in any field
of human activity which is new, involves an inventive step and is industrially applicable.

Petitioner 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 inasmuch as the same falls squarely within its definition. In order to be
entitled to exclusively used the same in the sale of the beauty cream product, the user
must sufficiently prove that she registered or used it before anybody else did. The
petitioner’s copyright and patent registration of the name and container would not
guarantee her the right to the exclusive use of the same for the reason that they are not
appropriate subjects of the said intellectual rights.

Jaranilla

Kho vs. Court of Appeals

G.R. NO. 115758 379 SCRA 410

Facts:

Petitioner Elidad C. Kho filed a complaint for injuction and damages with prayer
for the issuance of a writ of preliminary injunction against respondent Summerville
General Merchandising and Company. Petitioner alleges that doing business under the
KEC Cosmetics Laboratory, that KEC is the registered owner of the copyrights Chin Chun
Su and Oval Facial Cream Container/Case, as shown by Certificates of Copyright
Registration and that she also has patent rights on Chin Chun Su & Device and Chin
Chun Su for medicated creams after purchasing the same from Qiuntin Cheng the
registered owner in the Philippine Patent Office.

The respondent allege that Summerville is the exclusive and authorized importer,
repacker and distributor of Chin Chin Su products manufactured by Shun Yi Factory of
Taiwan and that KEC obtained their copyright and patent through misrepresentation and
falsification.

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 The trial court granted the preliminary injunction and the respondent moved for
reconsideration but it was denied. The respondents then filed a petition with the Court
of Appeals. The appellate court declared the writ of preliminary injunction null and void
stating that “the registration of the trademark or brand name Chin Chun Su by KEC with
the supplemental register of the Bureau of Patents, Trademarks and Technology Transfer
does cannot be equated with the registration in the principal register which is duly
protected by the Trademark Law.

The trial court went on to hear petitioner’s complaint for final injunction and
damages and the trial court rendered a decision barring the petitioner from using the
trademark Chin Chun Su and upholding the rights of the respondents to use the same
but recognizing the copyright of the petitioner over the oval shaped container of her
beauty cream.

Hence the petition.

Issue:

Whether or not the petitioner is entitled to the exclusive use of the trademark Chin
Chun Su based on her copyright and patent registration over the product.

Held:

No. Trademark, copyright and patents are different intellectual property rights
that cannot be interchanged with one another. A trademark is any visible sign capable of
distinguishing the goods (trademark) or service (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
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
industrially applicable.

In this case, petitioner has no right to support her claim for the exclusive use of the
subject trade name and its container. The name and the container of a beauty cream
product are proper subjects of a trademark inasmuch as the same falls squarely within its
definition. In order to be entitled to exclusively use the same in the sale of the beauty
cream product, the user must sufficiently prove that she registered or used it before
anybody else did. The petitioner’s copyright and patent registration of the name
container would not guarantee her right to the exclusive use of the same for the reason
that they are not appropriate subjects of the said intellectual right.

3. Gabyano

KHO vs LANZANAS

FACTS:

Shun Yih Chemistry Factory (SYCF), a business in Taiwan and engaged in the
manufacture and sale of Chin Chun Su Creams/Cosmetics, appointed Young Factor
Enterprises in the Philippines, owned and operated by Quintin Cheng also known as Kho
Seng Hiok, as its distributor of Chin Chun Su products in the Philippines for a term of
two years beginning 1978. Quintin Cheng sold all his right, title, interest and goodwill in
the trademark Chin Chun Su and device to petitioner Elidad Kho.

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 Later, animosity arose between SYCF and Quintin Cheng resulting in the
termination of their distributorship agreement on 30 October 1990. SYCF appointed
respondent Summerville General Merchandising, represented by Ang Tiam Chay and
Victor Chua, as its new exclusive importer, re-packer and distributor of Chin Chun Su
products in the Philippines for a period of five years.

Thereafter, Elidad Kho/KEC Laboratory filed a Complaint for Injunction and

Damages against Ang Tiam Chay and Summerville General Merchandising before the
RTC of Quezon City, Branch 90, docketed as Civil Case No. Q-91-10926. Plaintiff therein
Elidad Kho/KEC Laboratory sought to enjoin defendants Ang Tiam Chay and
Summerville General Merchandising from using the name Chin Chun Su in their cream
products.

The RTC and the CA both ruled that the Plaintiff is not legally authorized to use
the trademark CHIN CHUN SU and upholding the right of defendant Summerville
General Merchandising & Co. to use said trademark as authorized by Shun Yih
Chemistry Factory of Taiwan.

ISSUE: WON Elidad Kho has the better right to use the trademark Chin Chun Su on their
facial cream product?

HELD

No. The Court agree with both the Court of Appeals and the trial court that
Summerville General Merchandising and Company has the better right to use the
trademark Chin Chun Su on its facial cream product by virtue of the exclusive
importation and distribution rights given to it by Shun Yih Chemistry Factory of Taiwan
on November 20, 1990 after the latter cancelled and terminated on October 30, 1990 its
Sole Distributorship Agreement with one Quintin Cheng, who assigned and transferred
his rights under said agreement to petitioner Elidad C. Kho on January 31, 1990.

As correctly held by the Court of Appeals, petitioner Kho is not the author of the
trademark Chin Chun Su and his only claim to the use of the trademark is based on the
Deed of Agreement executed in his favor by Quintin Cheng. By virtue thereof, he
registered the trademark in his name. The registration was a patent nullity because
petitioner is not the creator of the trademark Chin Chun Su and, therefore, has no right
to register the same in his name. Furthermore, the authority of Quintin Cheng to be the
sole distributor of Chin Chun Su in the Philippines had already been terminated by Shun
Yih Chemistry of Taiwan. Withal, he had no right to assign or to transfer the same to
petitioner Kho.

4. Lacson

G.R. No. 130360 August 15, 2001

Wilson Ong Ching Kian Chuan vs CA
FACTS:
Petitioner Wilson Ong Ching Kian Chuan (Ong), imports vermicelli from China
National Cereals Oils and Foodstuffs Import and Export Corporation, based in Beijing,
China, under the firm name C.K.C. Trading. He repacks it in cellophane wrappers with
a design of two-dragons and the TOWER trademark on the uppermost portion. Ong
acquired a Certificate of Copyright Registration from the National Library on June 9, 1993
on the said design.
Ong discovered that private respondent Lorenzo Tan repacked his vermicelli he
imports from the same company but based in Qingdao, China in a nearly identical

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wrapper. On September 16, 1993, Ong filed against Tan a verified complaint for
infringement of copyright with damages and prayer for temporary restraining order or
writ of preliminary injunction with the Regional Trial Court in Quezon City. Ong alleged
that he was the holder of a Certificate of Copyright Registration over the cellophane
wrapper with the two-dragon design, and that Tan used an identical wrapper in his
business.
ISSUE:
Did Tan commit an infringement of copyright?
HELD:
This issue was not threshed out in the RTC as the issue settled therein was procedural.
However, the court ruled that person, to be entitled to a copyright, must be the original
creator of the work. He must have created it by his own skill, labor and judgment without
directly copying or evasively imitating the work of another.
Thus, the instant petition is PARTIALLY GRANTED. The prayer for a writ of preliminary
injunction to prohibit Tan from using the cellophane wrapper with two-dragon device is
denied, but the finding of the respondent appellate court that Ong’s copyrighted wrapper
is a copy of that of Ceroilfood Shandong is SET ASIDE for being premature. The Regional
Trial Court of Quezon City, Branch 94, is directed to proceed with the trial to determine
the merits of Civil Case No. 33779 expeditiously.
5. Lopez

Santos vs Mccullough Printing Company

GR No. L-19439 October 31, 1964

Facts:

The complaint alleges that plaintiff Mauro Malang Santos designed for former
Ambassador Felino Neri, for his personal Christmas Card greetings for the year 1959, the
artistic motif in question. The following year the defendant McCullough Printing
Company, without the knowledge and authority of plaintiff, displayed the very design
in its album of Christmas cards and offered it for sale, for a price.

Malang alleged that for such unauthorized act of the defendant, he suffered moral
damages because his professional integrity and ethics was placed in serious question and
caused him grave embarrassment before Ambassador Neri.

The lower court rendered a decision in favor of defendant and ruled that there can
be no dispute that the artist acquires ownership of the product of his art. At the time of
its creation, he has the absolute dominion over it. The trial court held that it is the second
right - the right to publish, republish, multiply and/or distribute copies of the intellectual
creation - which the state, through the enactment of the copyright law, seeks to protect.
The author or his assigns or heirs may have the work copyrighted and once this is legally
accomplished any infringement of the copyright will render the infringer liable to the
owner of the copyright. However, Malang did not choose to protect his intellectual
creation by a copyright.

Issue:

Whether or not Malang is entitled to a protection, notwithstanding the fact that he

has no copyright in his design

Ruling:

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 No. The Supreme Court ruled that it cannot accept Malang’s contention that the
publication of the design was a limited one since the same was not shown on the face of
the design. The Court explained that when the purpose is limited publication, but the
effect is general publication, irrevocable right 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, Malang lost control
of his design and the necessary implication was that there had been a general publication.
The SC also enunciated that the author of a literary composition has a right to the first
publication thereof. This is confined to its first publication. Once published, it is dedicated
to the public and the author loses the exclusive right to control subsequent publication
thereof, unless it is placed under the PROTECTION OF COPYRIGHT LAW.

6. Macatangay

FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC., plain

iff- appellant, vs. BENJAMIN TAN, defendant-appellee.

FACTS: Plaintiff-appellant is the owner of ceratin 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.”

Petitioner filed a complaint with the lower court for infringement of copyright against
defendant- appellee for allowing the playing in defendant- appellee’s restaurant of said
songs copyrighted in the name of the former. Defendant- appellee, countered that the
complaint states no cause of action. While not denying the playing of said copyrighted
compositions in his establishment, appellee maintains that the mere singing and playing
of songs and popular tunes even if they are copy righted do not constitute an
infringement under the provisions of Section 3 of the Copyright Law.

ISSUE: WON the playing and signing of musical compositions which have been
copyrighted under the provisions of the Copyright Law (Act 3134) inside the
establishment of the defendant-appellee constitute a public performance for profit within
the meaning and contemplation of the Copyright Law of the Philippines; and assuming
that there were indeed public performances for profit, whether or not appellee can be
held liable therefor.

RULING: NO. It has been held that "The playing of music in dine and dance
establishment which was paid for by the public in purchases of food and drink
constituted "performance for profit" within a Copyright Law." Thus, it has been explained
that while it is possible in such establishments for the patrons to purchase their food and
drinks and at the same time dance to the music of the orchestra, the music is furnished
and used by the orchestra for the purpose of inducing the public to patronize the
establishment and pay for the entertainment in the purchase of food and drinks. The
defendant conducts his place of business for profit, and it is public; and the music is
performed for profit. Nevertheless, appellee cannot be said to have infringed upon the
Copyright Law. Appellee's allegation that the composers of the contested musical
compositions waived their right in favor of the general public when they allowed their
intellectual creations to become property of the public domain before applying for the
corresponding copyrights for the same is correct. The Supreme Court has ruled that
"Paragraph 33 of Patent Office Administrative Order No. 3(as amended, dated September
18, 1947) entitled 'Rules of Practice in the Philippines Patent Office relating to the
Registration of Copyright Claims' promulgated pursuant to Republic Act165, provides
among other things that an intellectual creation should be copyrighted thirty (30)days
after its publication, if made in Manila, or within the (60) days if made elsewhere, failure

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of which renders such creation public property." Indeed, if the general public has made
use of the object sought to be copyrighted for thirty (30) days prior to the copyright
application the law deems the object to have been donated to the public domain and the
same can no longer be copyrighted. Under the circumstances, it is clear that the musical
compositions in question had long become public property, and are therefore beyond the
protection of the Copyright Law.

7. Mangawang

MANLY SPORTWEAR MANUFACTURING VS DADODETTE ENTERPRISES

GR NO. 165306 SEPT. 20, 2005

TAKE AWAY: NOT ORIGINAL, COMMON AND ORDINARY CREATIONS ARE

NOT COPYRIGHTABLE.

FACTS: A search warrant was issued against Dadodette Enterprises for having in their
possession goods, copyright of which allegedly belonged to Manly Sportwear.

Dadodette Enterprises moved to quash and annul the search warrant insisting that the
sporting goods manufactured by and/or registered in the name of MANLY are
ordinary and common hence, not among the classes of work protected under Section
172 of RA 8293.

Trial court granted the motion to quash. MR was denied. Petition for certiorari before
the CA was also denied as the CA found that the trial court correctly granted the
motion to quash and that its ruling in the ancillary proceeding did not preempt the
findings of the intellectual property court.

ISSUE: WON the CA erred in finding that the trial court did not gravely abuse its
discretion in declaring in the hearing for the quashal of the search warrant that the
copyrighted products of MANLY are not original creations subject to the protection of
RA 8293

RULING: NO, the CA did not err.

The trial court properly quashed the search warrant it earlier issued after finding upon
reevaluation of the evidence that no probable cause exists to justify its issuance in the
first place. As ruled by the trial court, the copyrighted products do not appear to be
original creations of MANLY and are not among the classes of work enumerated under
Section 172 of RA 8293. The trial court, thus, may not be faulted for overturning its
initial assessment.

Where there is sufficient proof that the copyrighted products are not original creations
but are readily available in market under various brands, as in this case, validity and
originality will not be presumed and the trial court may properly quash the issued
warrant for lack of probable cause.

Also, as correctly observed by the CA, the trial court's finding that the seized products
are not copyrightable was merely preliminary and MANLY could still file a separate
copyright infringement suit against Dadodette.

8. Marcelo

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FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., vs. HONORABLE
FRANKLIN DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR.,
and CASEY FRANCISCO.

G.R. No. 108946 January 28, 1999

FACTS:

Rhoda and Me is a dating show which was aired from 1970 to 1977. Petitioner BJ
Productions, Inc. (BJPI) is the holder/grantee of a certificate of copyright dated January
28, 1971 for the said dating show. In 1973, BJPI submitted to the National Library an
addendum to its certificate of copyright, specifying the show's format and style of
presentation. Sometime in 1991, Francisco Joaquin, Jr., President of BJPI, saw an episode
of It's a Date, also a dating show, aired over RPN Channel 9. He wrote a letter to private
respondent Gabriel M. Zosa, President and General Manager of IXL Productions, the
producer of It’s a Date, demanding that IXL stop the airing of It’s a Date because BJPI had
a copyright for Rhoda and Me. Respondent Zosa requested for a meeting and a possible
settlement. In the meantime, however, IXL continued airing It’s a Date. Respondent Zosa
also registered IXL’s copyright to the first episode of It’s a Date, for which it was issued a
certificate of copyright on August 14, 1991 by the National Library. Petitioner Joaquin,
after sending a second letter of demand, filed a complaint against respondent Zosa and
other officers of RPN 9 for violation of PD No. 49. An information was filed by the
Assistant City Prosecutor of Quezon City and assigned to RTC Quezon City Branch 104.
Respondent Zosa sought for a review of the resolution of the Assistant City Prosecutor
with the Department of Justice. Respondent Secretary of Justice Franklin Drilon reversed
the findings and directed the Assistant City Prosecutor to move for the dismissal of the
case. Petitioner Joaquin sought for a reconsideration but was denied by respondent
Secretary Drilon. Petitioner then filed a petition for certiorari with the Supreme Court,
alleging that the Secretary of Justice committed grave abuse of discretion amounting to
lack of jurisdiction when he considered petitioner’s failure to present the master tape as
being fatal to the existence of probable cause to prove infringement, even if the issue was
not raised by the respondents, and when he made a determination of what is
copyrightable - an issue which is exclusively within the jurisdiction of the RTC to assess
in a proper proceeding. Respondents maintain that petitioners failed to establish the
existence of probable cause due to their failure to present the copyrighted master
videotape of Rhoda and Me. They contend that petitioner BJPI's copyright covers only a
specific episode of Rhoda and Me and that the formats or concepts of dating game shows
are not covered by copyright protection under P.D. No. 49.

ISSUE:

Whether or not the format and style of presentation of petitioner’s dating show is
entitled to copyright protection.

HELD:

The Supreme Court held that the format of a show is not copyrightable.

Section 2 of P.D. No. 49, the Decree on Intellectual Property, enumerates those
which are entitled to copyright protection. This provision is substantially the same as
Section 172 of R.A. No. 8293, the Intellectual Property Code of the Philippines. The format
or mechanics of a television show is not included in the list of protected works in Section
2 of P.D. No. 49. Thus, the protection afforded by the law cannot be extended to cover
them. Copyright, in the strict sense of the term, is purely a statutory right. As such, the
rights are only those that the statute confers. Since a copyright in published works is

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purely a statutory creation, a copyright may be obtained only for a work falling within
the statutory enumeration or description. Section 2 of P.D. No. 49, 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. Section 175 of the Intellectual Property Code of
the Philippines further provides for unprotected subject matter. This includes 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.

Petitioner BJPI’s copyright does not extend to the general concept or format of its
dating game show. It only covers audio-visual recordings of each episode of Rhoda and
Me, as falling within the class of works mentioned in Section 2 (M) of P.D. 49, to wit:

“Cinematographic works and works produced by a process analogous to

cinematography or any process for making audio-visual recordings;”

According to the Supreme Court, because of the very nature of the subject of petitioner’s
copyright, the submission of the master tape was indispensable in order for the
investigating prosecutor to have the opportunity to compare the videotapes of the two
shows.

9. Mendigoria

United Feature Syndicate, Inc., vs.

Munsingwear Creation Manufacturing Company,

G.R. No. 76193 November 9, 1989

Facts:

This is a petition for review on certiorari filed by United Feature Syndicate Inc.,
seeking to set aside the Resolution of the Seventh Division of the Court of Appeals, dated
September 16, 1986 dismissing the appeal of petitioner-appellant for having been filed
out of time and denying its Motion for Reconsideration for lack of merit in its Resolution
dated October 14, 1986.

This case arose from petition filed by petitioner for the cancellation of the
registration of trademark CHARLIE BROWN (Registration No. SR. 4224) in the name of
respondent MUNSINGWEAR in Inter Partes Case No. 1350 entitled "United Feature
Syndicate, Inc. v. Munsingwear Creation Mfg. Co.", with the Philippine Patent Office
alleging that petitioner is damaged by the registration of the trademark CHARLIE
BROWN of T-Shirts under Class 25 with the Registration No. SR-4224 dated September
12, 1979 in the name of Munsingwear Creation Manufacturing Co., Inc., on the following
grounds: (1) that respondent was not entitled to the registration of the mark CHARLIE
BROWN, & DEVICE at the time of application for registration; (2) that CHARLIE
BROWN is a character creation or a pictorial illustration, the copyright to which is
exclusively owned worldwide by the petitioner; (3) that as the owner of the pictorial
illustration CHARLIE BROWN, petitioner has since 1950 and continuously up to the
present, used and reproduced the same to the exclusion of others; (4) that the respondent-
registrant has no bona fide use of the trademark in commerce in the Philippines prior to
its application for registration.

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 On October 2, 1984 the Director of the Philippine Patent Office rendered a decision
in this case holding that a copyright registration like that of the name and likeness of
CHARLIE BROWN may not provide a cause of action for the cancellation of a trademark
registration.

Petitioner filed a motion for reconsideration of the decision rendered by the

Philippine Patent Office which was denied by the Director of said office on the ground
that the Decision No. 84-83 was already final and from this decision, petitioner-appellant
appealed to the Court of Appeals and respondent court in its resolution dated September
16, 1986 denied the appeal. While the Motion for Reconsideration was filed on time, that
is, on the last day within which to appeal, still it is a mere scrap of paper because there
was no, date, of hearing stated therein.

Subsequently, petitioner-appellant filed a motion for reconsideration which public

respondent denied for lack of merit. Hence this petition for review on certiorari.

In the resolution of April 6, 1987, the petition was given due course.

Issue:

Whether or not the respondent Court of Appeals committed grave abuse of

discretion amounting to excess of jurisdiction when by dismissing the appeal to it from
the decision of the director of patents, it knowingly disregarded its own decision in AC-
GR. Sp. No 0342, which was affirmed by this honorable court to the effect that a
copyrighted character may not be appropriated as a trademark by another under
Presidential Decree No. 49.

Held:

In the case at bar, dispensing with such procedural steps would not anyway affect
substantially the merits of their respective claims, hence the need for this Court to
broaden its inquiry in this case land decide the same on the merits rather than merely
resolve the procedural question raised.

Petitioner contends that it will be damaged by the registration of the trademark

CHARLIE BROWN & DEVICE in favor of private respondent and that it has a better right
to CHARLIE BROWN & DEVICE since the likeness of CHARLIE BROWN appeared in
periodicals having worldwide distribution and covered by copyright registration in its
name which antedates the certificate of registration of respondent issued only on
September 12, 1979.

Petitioner further stresses that Decision No. 84-83 promulgated by the Philippine
Patent Office on October 2, 1984 which held that "the name likeness of CHARLIE BROWN
may not provide a cause of action for the cancellation of a trademark registration," was
based in the conclusion made in the case of "Children's Television Workshop v. touch of
Class" earlier decided by the Director of Patent Office on May 10, 1984. However, when
the latter case was appealed to the then Intermediate Appellate Court, docketed as A.C.
G.R. SP No. 03432, the appellate court reversed the decision of the Director holding said
appealed decision as illegal and contrary to law. this reversal was affirmed by this Court
on August 7, 1985 in G.R. No. 71210 by denying the petition of respondent Touch of Class.

The Court of Appeals in reversing the Director of Patent's decision in Touch of

Class, Inc. succinctly said that;

The Patents Office ruled that a trademark, unlike a label, cannot be copyrighted.
The "Cookie Monster" is not, however, a trademark. It is a character in a TV series

11
entitled "Sesame Street." It was respondent which appropriated the "Cookie Monster"
as a trademark, after it has been copyrighted. We hold that the exclusive right secured
by PD 49 to the petitioner precludes the appropriation of the "Cookie Monster" by the
respondent.

Pertinently, Section 2 of Presidential Decree No. 49, otherwise known as the

"Decree on Intellectual Property", provides:

Section 2. The rights granted by this Decree shall, from the moment of creation, subsist
with respect to any of the following classes of works:

(O) Prints, pictorial illustrations, advertising copies, labels, tags and box wraps…

Therefore, since the name "CHARLIE BROWN" and its pictorial representation were
covered by a copyright registration way back in 1950 the same are entitled to protection
under PD No. 49.

Aside from its copyright registration, petitioner is also the owner of several
trademark registrations and application for the name and likeness of "CHARLIE
BROWN" which is the duly registered trademark and copyright of petitioner United
Feature Syndicate Inc. as early as 1957 and additionally also as TV SPECIALS featuring
the "PEANUTS" characters "CHARLIE BROWN".

An examination of the records show that the only appreciable defense of

respondent-registrant is embodied in its answer, which reads:

It uses, the trademark "CHARLIE BROWN" & "DEVICE" on children's wear such
as T-shirts, undershirts, sweaters, brief and sandos, in class 25; whereas "CHARLIE
BROWN" is used only by petitioner as character, in a pictorial illustration used in a comic
strip appearing in newspapers and magazines. It has no trademark significance and
therefore respondent-registrant's use of "CHARLIE BROWN" & "DEVICE" is not in
conflict with the petitioner's use of "CHARLIE BROWN". It is undeniable from the
records that petitioner is the actual owner of said trademark due to its prior registration
with the Patent's Office.

In upholding the right of the petitioner to maintain the present suit before our
courts for unfair competition or infringement of trademarks of a foreign corporation, we
are moreover recognizing our duties and the rights of foregoing states under the Paris
Convention for the Protection of Industrial Property to which the Philippines and
(France) U.S. are parties. We are simply interpreting a solemn international commitment
of the Philippines embodied in a multilateral treaty to which we are a party and which
we entered into because it is in our national interest to do so.

PREMISES CONSIDERED, the Resolutions of the Court of Appeals dated

September 16, 1985 and October 14, 1986 dismissing petitioner's appeal are hereby SET
ASIDE and Certificate of Registration no. SR-424 issued to private respondent dated
September 12, 1979 is hereby CANCELLED. SO ORDERED.

10. Mendoza

Feist Publications, Inc. v. Rural Telephone Service Company, Inc.

499 U.S. 340, March 27, 1991

12
FACTS:

Respondent Rural Telephone Service Company is a certified public utility

providing telephone service to several communities in Kansas. Pursuant to state
regulation, Rural publishes a typical telephone directory, consisting of white pages and
yellow pages. It obtains data for the directory from subscribers, who must provide their
names and addresses to obtain telephone service.

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

wide telephone directories covering a much larger geographic range than directories such
as Rural's.

Feist is not a telephone company 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. However, of the 11 telephone
companies, only Rural refused to license its listings to Feist.

Unable to license Rural's white pages listings, Feist extracted the listings it needed
from Rural's directory without Rural's consent. Although Feist altered many of Rural's
listings, several were identical to listings in Rural's white pages.

Rural sued for copyright infringement in the District Court. It argued that Feist, in
compiling its own directory, could not use the information contained in Rural's white
pages. It also asserted that Feist's employees were obliged to travel door-to-door or
conduct a telephone survey to discover the same information for themselves.

Feist responded that such efforts were economically impractical and, in any event,
unnecessary, because the information copied was beyond the scope of copyright
protection.

ISSUE:

W/N the copyright in Rural's directory protects the names, towns, and telephone
numbers copied by Feist.

HELD:

No, Rural's white pages are not entitled to copyright, and therefore Feist's use of
them does not constitute infringement.

Facts cannot be copyrighted

To qualify for copyright protection, a work must be original to the author, which
means that the work was independently created by the author, and it possesses at least
some minimal degree of creativity. A work may be original even thought it closely
resembles other works so long as the similarity is fortuitous, not the result of copying.

Facts are not original. The first person to find and report a particular fact has not
created the fact; he has merely discovered its existence. Facts may not be copyrighted and
are part of the public domain available to every person.

Compilations of facts can generally be copyrighted.

Factual compilations may possess the requisite originality. The author chooses
what facts to include, in what order to place them, and how to arrange the collected date
so they may be effectively used by readers. Thus, even a directory that contains no written
expression that could be protected, only facts, meets the constitutional minimum for

13
copyright protection if it features an original selection or arrangement. But, even though
the format is original, the facts themselves do not become original through association.
The copyright on a factual compilation is limited to formatting. The copyright does not
extend to the facts themselves.

To establish copyright infringement, two elements must be proven: ownership of

a valid copyright and copying of constituent elements of the work that are original. The
first element is met in this case because the directory contains some forward text. As to
the second element, the information contains facts, which cannot be copyrighted. They
existed before being reported and would have continued to exist if a telephone directory
had never been published. There is no originality in the formatting, so there is no
copyrightable expression. Thus, there is no copyright infringement

11. Mojica

G.R. No. 161295. June 29, 2005

JESSIE G. CHING, petitioner, vs. WILLIAM M. SALINAS, SR., WILLIAM M.

SALINAS, JR., JOSEPHINE L. SALINAS, JENNIFER Y. SALINAS, ALONTO
SOLAIMAN SALLE, JOHN ERIC I. SALINAS, NOEL M. YABUT (Board of Directors
and Officers of WILAWARE PRODUCT CORPORATION),respondents.

The Facts:

Petitioner Ching is the owner and general manager of Jeshicris Manufacturing Co., the a
maker and manufacturer of a utility model, described as “Leaf Spring Eye Bushing for
Automobile”, made up of plastic, 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.

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

The Issues:

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

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

The Rulling:

(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

14
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.

12. Morfe

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

409 SCRA 231

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 an agreement with respondent
Shoemart Inc (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:

1. WON there is copyright infringement.

2. WON there is Patent infringement.

3. WON there is Trade infringement.

15
Ruling:

1. Petitioner’s 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. We agree 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. The strict application of the laws
enumeration in Section 2 prevents us from giving petitioner even a little leeway, that is,
even if its copyright certificate was entitled Advertising Display Units. What the law
does not include, it excludes, and for the good reason: the light box was not a literary or
artistic piece which could be copyrighted under the copyright law.

2. 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 one of the case, we 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. This issue concerns the use by respondents of the mark Poster Ads which
petitioner s 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. 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.

13. Domingo

ABS-CBN CORPORATION VS. FELIPE GOZON, GILBERTO DUAVIT, JR.,

MARISSA FLORES, JESSICA SOHO, GRACE DELA PEÑA-REYES, JOHN OLIVER
MANALASTAS, JOHN DOES and JANE DOES

G.R. NO. 195956 March 11, 2005 Leonen, J.

Facts: Petitioner allowed Reuters (Television Service) under Special Embargo

Agreement to use its footage on the occasion of the arrival of Angelo dela Cruz at the
Ninoy Aquino International Airport (NAIA) on July 22, 2004. Dela Cruz is an overseas
Filipino worker (OFW) kidnapped by Iraqi militants who was demanded to be released
only on condition that Filipino troops in Iraq be withdrawn.

The Agreement states that the said footage by petitioner is “for the use of Reuter’s
international subscribers only,” and “under ‘embargo’ against use by its (Reuters’)
Philippine subscribers.”

Respondents, on the other hand, subscribed to both Reuters and Cable News
Network (CNN). And being so, it received a live video feed of the said arrival coverage
from Reuters which it immediately aired on its program “Flash Report” for 5 seconds.

16
 Petitioner thereafter file a Complaint for Copyright Infringement under Secs. 177
(16) and 211 (17) of the Intellectual Property Code (IPC). Quezon City prosecutor indicted
Dela Peña-Reyes and Manalastas which was however overturned by (Department of)
Justice Sec. Gonzalez (via Gonzalez Resolution) on the ground of good faith as a valid
defense by the respondents.

The Gonzalez Resolution was however reversed by then Acting Justice Sec. Agra
(via Agra Resolution) who found probable cause in the prosecution of the case. Hence
respondents’ Petition for Certiorari filed with the Court of Appeals (CA).

The CA granted respondents’ petition and upheld the earlier issued Gonzalez
Resolution. The appellate court stressed that respondent was covered by “fair use”
principle under Sec. 185 of the IPC. Hence petitioner filed its Petition for Review before
the Supreme Court (SC).

Issue:

Whether or not there is probable cause to charge respondents with copyright

infringement under RA 8293(IPC).

Ruling:

The SC held that the news footage is copyrightable. It deemed that as the news or
event itself is not copyrightable, an event can be captured and presented in a specific
medium to which copyright attaches.

The mere act of rebroadcasting without authority (or consent) from the owner of
the broadcast gives rise to the probability that a crime was committed under the IPC
which is a special law and thus mallum prohibitum – no mens rea nor culpa is needed
for the prosecution of the criminal case for it to prosper.

14. Rabang

PHILIPPINE EDUCATION CO. VS. VICENTE SOTTO

[G.R. No. 30774] (January 29, 1929)

FACTS:

Plaintiff is a domestic corporation and proprietor and publisher of the monthly

magazine Philippine Education Magazine, which is published in the City of Manila and of
general circulation in the Philippine Islands.

Vicente Sotto, is the proprietor and publisher, and the defendant, V. R. Alindada, is the
editor of a weekly newspaper known as The Independent, which is also published in the
City of Manila.

Plaintiff contracted with Austin Craig for the preparation and publication of an original
article to be written by him concerning Mrs. Jose Rizal, to be published exclusively in
the Philippine Education Magazine, and that by virtue thereof, the said Craig prepared and
wrote an original article entitled "The True Story of Mrs. Rizal," and delivered it to the
plaintiff which paid him for it, and thereby became the exclusive owner of the article.

It printed and published the article in its issue of December, 1927 and as such owner the
plaintiff has the exclusive right to print and publish the article in its magazine, and that
it gave notice in that issue "that all rights thereto were reserved;"

17
That said article which was prepared by Mr. Austin Craig and published in the 'Philippine
Education Magazine' is not found registered in the Copyright Office, although in the same
magazine, under letter A, on the third page containing the index, there may be read a
note 'All Rights Reserved.

Defendants unlawfully and without the knowledge or consent of the plaintiff

appropriated, copied and reproduced and published the article in the weekly issues
of The Independent of December 24th and December 31, 1927, without citing the source of
its reproduction.

The defendants then answered and interposed the defense that the plaintiff is not the
owner of the article entitled 'The True Story of Mrs. Rizal,' because it is not registered in
its name in the proper registry under Act No. 3134 and the regulation concerning the
registration of intellectual property made by the Chief of the Philippine Library and
Museum and in belief that such an interesting historical passage of the Philippines was
published by the magazine Philippine Education Magazine for the information and
propaganda of the ideas and patriotic feelings of the wife of the apostle of our country's
liberties, without any intention to prejudice anybody in his property rights.

Lower court rendered judgment against defendant.

Hence, this appeal.

ISSUE:

Whether or not the defendant in publishing the “True Story of Mrs. Rizal” without the
authorization from the plaintiff infringed the plaintiff’s copyright.

RULING:

YES. The lower court’s judgment is affirmed.

Under the second paragraph of section 5, Act No. 3134, known as the Copyright Law,
where one periodical purchases, pays for and publishes an article with notice "that all
rights thereto were reserved" another periodical has no legal right to again publish the
article, without giving "the source of reproduction" or citing the original from which it
was reproduced.

As to the article in question, the provisions of that section do not require "notice of
copyright." It is sufficient that the original article contains a notice in substance "that their
publication is reserved.

This exception is confined and limited to "news items, editorial paragraphs, and articles
in periodicals," and does not apply to any other provisions of the Copyright Law.

It will also be noted that in the instant case, the defendant had the legal right to publish
the article in question by giving "the source of the reproduction." The plaintiff bought
and paid for the article and published it with a notice that "we reserve all rights," and the
defendant published the article in question without citing "the source of the
reproduction," and for aught that appeared in his paper, the article was purchased and
paid for by the defendant.

The purpose and intent of the Legislature was to protect an enterprising newspaper or
magazine that invests its money and pays for the right to publish an original article.

15. Regala

Sony Corp. v. Universal City Studios, Inc. and Walt Disney Production

18
464 U.S. 417 January 17, 1984

Facts:

Petitioner Sony Corporation of America manufactures and sells Betamax videotape

recorders (VTR's) to the general public. Some people use the videotape recorders sold by
Sony to record some television programs broadcasted in public airwaves, the copyright
of that some television programs were owned by the respondents Universal City Studios
Inc. and Walt Disney Production.

Respondents filed a copyright infringement action against Sony before the Central
District of California, alleging that the Betamax were used to record some of their
copyrighted works exhibited on commercially sponsored television, and contended that
these individuals had infringed their copyrights. Respondents contended that Sony must
be held liable for the copyright infringement committed by some of the general public
due to the latter’s marketing of their Betamax. It should be noted that no relief was sought
by the respondents to the consumers of the Betamax. What the reliefs sought were money
damages and an equitable accounting of profits of Sony, as well as an injunction against
the manufacture and marketing of Betamax.

The District Court dismissed the action. On appeal, the United States Court of Appeals
for the Ninth Circuit reversed the decision of District Court, and held that Sony was liable
on the ground of contributory infringement. The District Court was order by the CA to
fashion the appropriate relief.

Hence, this petition before the US Supreme Court.

Issue: Whether the sale of petitioners' copying equipment to the general public violates
any of the rights conferred upon respondents by the Copyright Act.

Held:

No. The US SC reversed the decision of the CA.

Through a reargument, it was found out that average member of the public uses a
Betamax principally to record a program he cannot view as it is being televised, and then
to watch it once at a later time. It is known as time-shifting. Respondents failed to prove
that such activity impaired neither the commercial value of their copyrights nor existence
of future harm. SC held that affirming the decision of CA is tantamount to control over
an article of commerce that is not the subject of copyright protection.

Further, SC found that respondents were also consumers of Betamax because of its many
uses. Both parties conducted surveys regarding the use of Betamax, and such survey
revealed that the majority of the general public uses the product for the purpose of time-
shifting. Respondents failed to show any evidence of decreased television viewing by
Betamax owners.

The SC also affirmed the decision of District Court that noncommercial home use
recording of material broadcast over the public airwaves was a fair use of copyrighted
works, and did not constitute copyright infringement. The television programs were
broadcasted to the public for free, and that the activity of recording the said programs
was conducted at home or done privately. There was no reduction in the market for the
respondent’s original work. SC also agreed with District Court that the purpose of this use
served the public interest in increasing access to television programming, an interest that
is consistent with the First Amendment policy of providing the fullest possible access to
information through the public airwaves.

19
Assuming that the use of Betamax by the general public constituted copyright
infringement, Sony cannot be held as contributory infringer because it has no
involvement with the recording made by the consumers of Betamax. The advertisement
did not mention anything related to the alleged copyright infringement and its
instruction booklet stated that

"Television programs, films, videotapes and other materials may be copyrighted.

Unauthorized recording of such material may be contrary to the provisions of the
United States copyright laws."

Further, unlike in Patent Act which states that active inducing of infringement of
a patent is considered as an infringer, the Copyright Act does not provide the
same. Sony did not supply the copyrighted materials to the public; it was the
public which selected what programs they will copy.

Although it can be alleged that Sony has constructive knowledge with the possibility of
using its product for the alleged copyright infringement, the Betamax itself has variety of
use, which only includes the alleged infringement. It is not specifically created for such
activity alone.

As to the prayer for injunction, it should be noted that Betamax may also be used for
recording non-copyrighted materials. To grant the injunction would deprive the
consumers the use Betamax in recording non-copyrighted materials as well as to its other
uses.

16. Saclay

HARPER & ROW v. NATION ENTERPRISES, 471 U.S. 539 (1985)

FACTS:

Former President Gerald Ford had written a memoir, A Time to Heal, including an
account of his decision to pardon Richard Nixon. Ford had licensed his publication rights
to Harper & Row, which had contracted for excerpts of the memoir to be printed
in Time magazine. Instead, The Nation magazine published 300 to 400 words of verbatim
quotes from the 500-page book without the permission of Ford, Harper & Row, or Time.
Based on this prior publication, Time withdrew from the contract (as it was permitted to
by a clause therein), and Harper & Row filed a lawsuit against The Nation for copyright
infringement. The Nation asserted as a defense that Ford was a public figure, and his
reasons for pardoning Nixon were of vital interest, and that appropriation in such
circumstances should qualify as a fair use.

The federal trial judge, Richard Owen, ruled in favor of Harper & Row and awarded
damages. The Second Circuit Court of Appeals reversed the ruling, finding that The
Nation's actions in quoting the memoirs were protected by fair use privilege. Harper &
Row appealed this ruling to the Supreme Court.

ISSUE:

The issue before the Court was whether a fair use existed where the purported
infringer published a public figure’s unpublished work on an important public event.

HELD:

The Court, in an opinion by Justice O'Connor noted that the right of first
publication is a particularly strong right, and held that there was no 'public figure'
exception to copyright protection, asserting that "the promise of copyright would be an

20
empty one if it could be avoided merely by dubbing the infringement a fair use 'news
report' of the book." The Court applied the statutory four factor test to determine if the
use was fair, and made the following findings:

1. The purpose or character of the use weighed against a finding of fair use because,
"The Nation's use had not merely the incidental effect but the intended purpose of
supplanting the copyright holder's commercially valuable right of first
publication." The Nation's intent to benefit by depriving the copyright holders of
their right to first publication suggest that this use was not "fair."

2. Although the nature of A Time to Heal was primarily informative or factual, and
thus deserving of less copyright protection, the work had substantial expressive
value. If The Nation had limited themselves to only reporting the factual
descriptions in the work, the second factor would have weighed in favor of
finding fair use. (Justice Brennan, dissenting, suggests that the Court does not take
enough account of how much of The Nation's report was factual.) However, The
Nation "did not stop at isolated phrases and instead excerpted subjective
descriptions and portraits of public figures whose power lies in the author's
individualized expression."

3. The amount and substantiality of the portion used in relation to the copyrighted
work as a whole weighed against a finding of fair use. Although the "amount" was
small, it constituted a "substantial" portion of the work because the excerpt was
the "heart of the work". The Court noted that an infringer could not defend
plagiarism by pointing to how much else they could have plagiarized but did not.

4. The effect of the use on the potential market for the value of the copyrighted work
also weighed against a finding of fair use. The Nation's infringement led to actual,
particular harm, Time's cancellation of their publishing contract.

Justice Brennan dissented, joined by Justices White and Marshall. Citing the text of the
law under which Harper's brought their lawsuit ("The enactment of copyright legislation
by Congress under the terms of the Constitution is not based upon any natural right that
the author has in his writings ... but upon the ground that the welfare of the public will
be served and progress of science and useful arts will be promoted by securing to authors
for limited periods the exclusive rights to their writings."), Brennan found that the
importance of "the robust debate of public issues" here outweighed the limited power of
copyright ownership. He stated that the descriptions of the work were non-
copyrightable, and the direct quotations were so few, compared to the size of the work
as a whole, that The Nation's article did not constitute an appropriation of Harper's
copyright. Brennan criticized the court for finding copyright infringement technically
based on the 300 words that were quoted in order to protect Harper's interest in being
the first to publish the non-copyrightable historical information in the work.

17. Torres, Ayenshe

Educational Fair Use in Copyright: Reclaiming the Right to Photocopy Freely – Ann
Bartow

Copyright owners or publishers attack educational fair use in several different

ways. First, they argue that the fair use reduces the profitability of their publications and
thereby reduces monetary incentives to undertake publication of new works. In this way,
they characterize educational fair use as a threat to the creation and dissemination of
future works of scholarship, rather than an escape valve through which current
knowledge embodied in prohibitively expensive books and periodicals can leak to the

21
impoverished. Publishers make this argument despite clear evidence that academic
writers do not require monetary incentives to produce scholarly works. In fact, many
academic writers prefer a broad definition of fair use to make other’s works available to
them even if it costs them royalty payments.

Second, publishers like to cloak their self-interest by regularly and hypocritically

raising the spectre of the impoverished author, starving because educational fair use
deprives him/her of the royalties he/she needs to live on. However, if authors are
underpaid, it is usually because publishers use their strong bargaining positions to
negotiate publishing contracts that are not favourable to authors.

Third, publishers claim that their profits are awards for risk taking which is
questionable since they are free to undertake only projects that are likely to be profitable.
They recruit name scholars to author or co-author textbooks; re-issue popular textbooks
in new edition formats to prevent competitions from used book sales. Books that sell a
lot of copies are the books that are most likely to generate significant permission fees,
unless a publisher chooses to deny permission to photocopy excerpts in order to
maximize the number of students who are required to purchase the entire book.

Over the past decade, judges ignore the external benefits of fair use, and respond
only to the lost dollars publishers ascribe to the doctrine. Publishers use favourable court
decisions and the threat of expensive litigation to coerce commercial photocopiers to pay
permission fees for the privilege of making any copies at all even when the work is not
eligible for copyright protection. Diminution of educational fair use renders educators
susceptible to liability for copyright infringement for engaging in unremarkable acts of
duplication and distribution of idea-bearing materials for educational purposes.

18. Torres, Isabelle

A.M. No. 10-7-17-SC February 8, 2011

IN THE MATTER OF THE CHARGES OF PLAGIARISM, ETC., AGAINST

ASSOCIATE JUSTICE MARIANO C. DEL CASTILLO.

Facts:

The Supreme Court rendered a decision in Vinuya v. Romulo dismissing petitioners’

action with Justice Mariano C. del Castillo as ponencia. Petitioners filed a motion for
reconsideration of the Court’s decision. More than a month later, counsel for petitioners,
Atty. Herminio Harry Roque, Jr., announced in his online blog that his clients would file
a supplemental petition “detailing plagiarism committed by the court”. The media gave
publicity to Atty. Roque’s announcement.

Petitioners later filed the supplemental motion for reconsideration that Atty. Roque
announced. It accused Justice Del Castillo of “manifest intellectual theft and outright
plagiarism” when he wrote the decision for the Court and of “twisting the true intents of
the plagiarized sources to suit the arguments of the assailed Judgment.”

Petitioners claim that the integrity of the Court’s deliberations in the case has been put
into question by Justice Del Castillo’s fraud. The Court should thus “address and disclose
to the public the truth about the manifest intellectual theft and outright plagiarism” that
resulted in gross prejudice to the petitioners,

Issue:

22
 Whether or not an incorrect/inappropriate referencing/citation automatically
constitutes plagiarism.

Ruling:

No. Plagiarism means the theft of another person’s language, thoughts, or ideas.
To plagiarize, as it is commonly understood according to Webster, is “to take (ideas,
writings, etc.) from (another) and pass them off as one’s own.” The passing off of the
work of another as one’s own is thus an indispensable element of plagiarism.

In this case, however, although Tams himself may have believed that the
footnoting in this case was not “an appropriate form of referencing,” he and petitioners
cannot deny that the decision did attribute the source or sources of such passages. Justice
Del Castillo did not pass off Tams’ work as his own. The Justice primarily attributed the
ideas embodied in the passages to Bruno Simma, whom Tams himself credited for them.
Still, Footnote 69 mentioned, apart from Simma, Tams’ article as another source of those
ideas. The statement “See Tams, Enforcing Obligations Erga Omnes in International Law
(2005)” in the Vinuya decision is an attribution no matter if Tams thought that it gave him
somewhat less credit than he deserved. If the Justice’s citations were imprecise, it would
just be a case of bad footnoting rather than one of theft or deceit.

Dissenting (Sereno)1:

The majority Decision will thus stand against the overwhelming conventions on
what constitutes plagiarism.

It has also undermined the protection of copyrighted work by making available to

plagiarists “lack of malicious intent” as a defense to a charge of violation of copy or
economic rights of the copyright owner committed through lack of attribution. Under
Section 184 of R.A. 8293 (“An Act Describing the Intellectual Property Code and
Establishing the Intellectual Property Office, Providing for Its Powers and Functions, and
for Other Purposes”), or the Intellectual Property Code of the Philippines, there is no
infringement of copyright in the use of another’s work in:

(b) 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. (Emphasis supplied)

Because the majority Decision has excused the lack of attribution to the complaining
authors in the Vinuya decision to editorial errors and lack of malicious intent to
appropriate—and that therefore there was no plagiarism—lack of intent to infringe
copyright in the case of lack of attribution may now also become a defense, rendering the
above legal provision meaningless.

19. Unas

A.M. No. 10-7-17-SC February 8, 2011

IN THE MATTER OF THE CHARGES OF PLAGIARISM, ETC., AGAINST

ASSOCIATE JUSTICE MARIANO C. DEL CASTILLO

1
I decided to include this simply as a reference to the IPC provision.

23
FACTS:

Petitioners Isabelita C. Vinuya, et al., all members of the Malaya Lolas Organization, seek
reconsideration of the decision of the Court dated October 12, 2010 that dismissed their
charges of plagiarism, twisting of cited materials, and gross neglect against Justice
Mariano Del Castillo. This is in connection with the decision he wrote for the Court in
G.R. No. 162230, entitled Vinuya v. Romulo where he drew materials from various
sources, including the three foreign authors cited in the charges against him. Mainly,
petitioners claim that the Court has by its decision legalized or approved of the
commission of plagiarism in the Philippines.

ISSUE:

Whether or not Justice Del Castillo committed plagiarism.

HELD:

No. A judge writing to resolve a dispute, whether trial or appellate, is exempted from a
charge of plagiarism even if ideas, words or phrases from a law review article, novel
thoughts published in a legal periodical or language from a party’s brief are used without
giving attribution. Thus, judges are free to use whatever sources they deem appropriate
to resolve the matter before them, without fear of reprisal. This exemption applies to
judicial writings intended to decide cases for two reasons: the judge is not writing a
literary work and, more importantly, the purpose of the writing is to resolve a dispute.
As a result, judges adjudicating cases are not subject to a claim of legal plagiarism.

This rule should apply to practicing lawyers as well. Counsels for the petitioners, like all
lawyers handling cases before courts and administrative tribunals, cannot object to this.
They should not be exposed to charges of plagiarism in what they write so long as they
do not depart, as officers of the court, from the objective of assisting the Court in the
administration of justice.

The Court denied the petitioners’ motion for reconsideration for lack of merit.

20. Uy

20TH CENTURY FOX FILM CORPORATION, petitioner, vs. COURT OF APPEALS,

EDUARDO M. BARRETO, RAUL SAGULLO and FORTUNE
LEDESMA, respondents.

G.R. Nos. 76649-51 August 19, 1988

GUTIERREZ, JR., J.:

FACTS:

On August 26, 1985 a letter-complaint by petitioner 20thCentury Fox Film Corporation

through counsel sought the National Bureau of Investigation's (NBI) assistance in the
conduct of searches and seizures in connection with the latter's anti-film piracy campaign.
Specifically, the letter-complaint alleged that certain videotape outlets all over Metro
Manila are engaged in the unauthorized sale and renting out of copyrighted films in
videotape form which constitute a flagrant violation of Presidential Decree No. 49
(otherwise known as the Decree on the Protection of Intellectual Property). Acting on the
letter-complaint, the NBI conducted surveillance and investigation of the outlets
pinpointed by the petitioner and subsequently filed three (3) applications for search
warrants.

24
On September 4, 1985 the lower court issued the desired search warrants. The NBI
accompanied by the petitioner's agents, raided the video outlets and seized the items
described therein. An inventory of the items seized was made and left with the private
respondents.

The lower court later on lifted the three (3) search warrants and ordered the NBI to return
the properties that were seized.

The petitioner filed a petition for certiorari with the Court of Appeals to annul the orders
of the lower court. The petition was dismissed. Hence, this petition.

ISSUE:

Whether or not there is grave abuse of discretion on the part of the lower court when it
lifted the search warrants it earlier issued against the private respondents.

HELD:

No. In the instant case, the lower court lifted the three questioned search warrants against
the private respondents on the ground that it acted on the application for the issuance of
the said search warrants and granted it on the misrepresentations of applicant NBI and
its witnesses that infringement of copyright or a piracy of a particular film have been
committed. As found out by the court, the NBI agents who acted as witnesses did not
have personal knowledge of the subject matter of their testimony which was the alleged
commission of the offense by the private respondents. Only the petitioner's counsel who
was also a witness during the application for the issuance of the search warrants stated
that he had personal knowledge that the confiscated tapes owned by the private
respondents were pirated tapes taken from master tapes belonging to the petitioner.
However, the lower court did not give much credence to his testimony in view of the fact
that the master tapes of the allegedly pirated tapes were not shown to the court during
the application.

The presentation of the master tapes of the copyrighted films from which the pirated
films were allegedly copied was necessary for the validity of search warrants against
those who have in their possession the pirated films. The petitioner’s argument to the
effect that the presentation of the master tapes at the time of application may not be
necessary as these would be merely evidentiary in nature and not determinative of
whether or not a probable cause exists to justify the issuance of the search warrants is not
meritorious. The court cannot presume that duplicate or copied tapes were necessarily
reproduced from master tapes that it owns.

The essence of a copyright infringement is the similarity or at least substantial

similarity of the purported pirated works to the copyrighted work. Hence, the applicant
must present to the court the copyrighted films to compare them with the purchased
evidence of the video tapes allegedly pirated to determine whether the latter is an
unauthorized reproduction of the former. This linkage of the copyrighted films to the
pirated films must be established to satisfy the requirements of probable cause. Mere
allegations as to the existence of the copyrighted films cannot serve as basis for the
issuance of a search warrant.

The proliferation of pirated tapes of films not only deprives the government of much
needed revenues but is also an indication of the widespread breakdown of national order
and discipline. Courts should not impose any unnecessary roadblocks in the way of the
anti-film piracy campaign. However, the campaign cannot ignore or violate
constitutional safeguards. To say that the problem of pirated films can be solved only by
the use of unconstitutional shortcuts is to denigrate the long history and experience

25
behind the searches and seizures clause of the Bill of Rights. The trial court did not
commit reversible error.

WHEREFORE, the instant petition is DISMISSED. The questioned decision and

resolution of the Court of Appeals are AFFIRMED.

21. Vasquez

G.R. No. 96597-99 October 6, 1994

Columbia Pictures, Inc, Orion Pictures Corp., Paramount Pictures Corp., Twentieth
Century Fox Film Corp., United Artists Corp., Universal City Studios, Inc., Walt Disney
Company And Warner Bros., Inc vs Court Of Appeals, TUBE VIDEO ENTERPRISES And
EDWARD CHAM, BLOOMING ROSE TAPE CENTER and MA. JAJORIE T. UY, and
VIDEO CHANNEL And LYDIA NABONG

FACTS:

On 07 April 1988, the "NBI", filed with the RTC of Pasig three (3) applications for
search warrant against private respondents Tube Video Enterprises and Edward C.
Cham (ASW No. 95), the Blooming Rose Tape Center and Ma. Jajorie T. Uy (ASW No.
96), and the Video Channel and Lydia Nabong (ASW No. 97), charging said respondents
with violation of Section 56 of Presidential Decree ("P.D.") No. 49, otherwise known as
the Decree on the Protection of Intellectual Property, as amended by P.D. No. 1988. The
search warrants stated that respondents had in their possession and control the following:

1. pirated video tapes of the copyrighted motion pictures/films;

2. posters, advertising leaflets, flyers, brochures, invoices, ledgers, and books of account
bearing and/or mentioned the pirated films;

3. television sets, video cassette and/or laser disc recorders, dubbing machines,
equipment and other machines and paraphernalia used or intended to be used in the
unlawful exhibition, reproduction, sale lease or disposition of videograms they are
keeping and concealing.

RTC Judge Austria found a just and probable cause for the issuance of the warrant.
Private respondents filed their respective motions to quash the three search warrants on
the ground that: the films in question were never registered in the National Library as a
condition precedent to the availment of the protection secured by that decree; the mere
publication of its alleged ownership over the films in question does not ipso facto vest in
the right to proceed under P.D. No. 49 as that law requires official registration. Moreover,
the said publication took place only after the application for the questioned search
warrant; and complainants have not proven nor established their ownership over the
films.

Judge Austria, nonetheless, reversed her former stand initially finding probable
cause for the issuance of the search warrants and ordered the quashal of the search
warrants and ordered the return of the seized items giving the following reasons:

1. Private complainants were uncertain of their ownership of the titles subject of

the seized video tapes;

2. Complainants did not comply with the requirement that the master tapes should
be presented during the application for search warrants; and

26
 3. Private complainants cannot seek the protection of Philippine laws as they failed
to comply with the deposit and registration requirements of P.D. No. 49 as amended by
P.D. No. 1988.

Petitioners appealed to the CA but the same was denied. Hence this petition.

ISSUE: Whether or not the master tapes of the copyrighted films from which pirated
films are supposed to have been copied should be presented for the validity of the search
warrant.

HELD: YES.

This Court, in 20th Century Fox Film Corp. vs. Court of Appeal has already laid
down the rule that:

The presentation of the master tapes of the copyrighted films from which the
pirated films were allegedly copied, was necessary for the validity of search warrants
against those who have in their possession the pirated films. The petitioner's argument
to the effect that the presentation of the master tapes at the time of application may not
be necessary as these would be merely evidentiary in nature and not determinative of
whether or not a probable cause exists to justify the issuance of the search warrants is not
meritorious. The court cannot presume that duplicate or copied tapes were necessarily
reproduced from master tapes that it owns.

The essence of a copyright infringement is the similarity or at least substantial

similarity of the purported pirated works to the copyrighted work. Hence, the applicant
must present to the court the copyrighted films to compare them with the purchased
evidence of the video tapes allegedly pirated to determine whether the latter is an
unauthorized reproduction of the former.

The Court of Appeals is also correct when it ruled that

Applying for the search warrants for the violation of Section 56 of P.D. No. 49 as
amended by P.D. No. 1988 includes not only the sale, lease or distribution of pirated tapes
but also the transfer or causing to be transferred of any sound recording or motion picture
or other audio visual work.

But even assuming, as appellants argue, that only the sale, lease, or distribution of
pirated video tapes is involved, the fact remains that there is need to establish probable
cause that the tapes being sold, leased or distributed are pirated tapes, hence the issue
reverts back to the question of whether there was unauthorized transfer, directly or
indirectly, of a sound recording or motion picture or other audio visual work that has
been recorded.

22. Villaruz

Columbia Pictures v. CA (1996) – Regalado, J.

Concept: Foreign Corporations

FACTS:

Columbia Pictures, et al. had lodged a formal complaint with the NBI, vis-à-vis their anti-
film piracy drive. Eventually, the NBI obtained a search warrant against Sunshine Video
seeking to seize pirated video tapes, among others. The NBI carried out the seizure, and
filed a return with the trial court. However, the trial court eventually granted a motion to
lift the order of search warrant appying the ruling in 20th Century Fox Film Corp. v. CA.

27
The trial court contended that the master tapes of the copyrighted films from which the
pirated films were allegedly copied were never presented in the proceedings for the
issuance of the search warrants. The CA dismissed the appeal brought before it. Hence,
Columbia Pictures, et al. brought the case before the SC. Sunshine Video contended that
Columbia Pictures, et al. (being foreign corporations doing business in the Philippines)
should have a license in order to maintain an action in Philippine courts – and without
such license, it had no right to ask for the issuance of a search warrant. Sunshine video
submitted that the fact that Columbia Pictures, et al. were copyright owners or owners of
exclusive rights of distribution in the Philippines of copyrighted motion pictures, AND
the fact that Att. Domingo had been appointed as their atty.-in-fact constituted “doing
business in the Philippines”, under the Rules of the Board of Investments.

ISSUE: W/N the respondent court erred in applying retroactively the case of 20th
Century Fox Film Corp. v. CA.

RULING:

YES. The trial courts finding that private respondents committed acts in blatant
transgression of Presidential Decree No. 49 all the more bolsters its findings of probable
cause, which determination can be reached even in the absence of master tapes by the
judge in the exercise of sound discretion. The essence of intellectual piracy should be
essayed in conceptual terms in order to underscore its gravity by an appropriate
understanding thereof. Infringement of a copyright is a trespass on a private domain
owned and occupied by the owner of the copyright, and, therefore, protected by law, and
infringement of copyright, or piracy, which is a synonymous term in this connection,
consists in the doing by any person, without the consent of the owner of the copyright,
of anything the sole right to do which is conferred by statute on the owner of the
copyright.

23. Acuna

PEOPLE vs. RAMOS

G.R. No. L-25644-65 May 9, 1978

FACTS:
On September 3, 1965, two criminal cases — No. 80006 of the Court of First Instance of
Manila, Branch III, and No. 80007 also of the same Court, Branch XIV— identical in every
respect, except for the fact that they pertain to different editions of the same textbook,
were filed against Socorro C. Ramos, for alleged violations of Act 3134, otherwise known
as the Copyright Law, as amended. The information in Criminal Case No. 80007 alleged
—
That on or about July to September, 1963, in the City of Manila and within
the jurisdiction of this Honorable Court, the said accused, as the proprietor
aid general manager of the National Book Store, as enterprise engaged in
the business of publishing, selling and distributing books, did then and
there, wilfully and illegaly sell and distribute spurious and pirated copies
of the high school textbook, entitled General Science Today for Philippine
School, First Year, by Gilam, Van Houten and Cornista, said accused
knowing that said book was duly copyrighted by the Phoenix Publishing
House, Inc., and was being distributed exclusively by its sister corporation,
Alemar's or Sibal and Sons, Inc.1

28
On September 7, 1965, identical motions to quash 2 were filed by accused Ramos on the
ground of prescription, alleging therein, inter alia, that:
xxx xxx xxx
Consequently, the delivery of the alleged offense was made as early as July 17, 1963
and all subsequent knowledge or discoveries of posterior sales and possession of
said books by the respondents, including that involved in the police search of
September 4, 1963 were only confirmatory of the first. Under 91 of the Revised
Penal Code and in the light of the afore-quoted ruling announced in the Pangasinan
Trans. Co. case, supra; the prescriptive period, therefore, commenced to run on the
day after such discovery on July 17, 1963 and, accordingly, the offense has long
since prescribed since under the Copyright Law, Act 3134:
Sec. 24. All actions, suits, or proceedings arising under this Act shall be
originally cognizable by the Court of First Instance of the Philippine Islands
and shall prescribe after two years from the time the cause of action arose.
Assuming arguendo, that the last actual sale should be the starting point of
computation, again the offense charged has prescribed, since, as already pointed
out, the documented evidence on this point shows that the last sale was made on
August 30, 1963.
Again, in both the accused filed a "Reply to Opposition to Motion to Quash." 4 She alleged
that even assuming that the crime is a continuing offense, the prescriptive period should
start from August 30, 1963, the date of the last invoiced sale, and not September 3, 1963,
as there was no indubitable proof that she had sold copies of the questioned book on that
date. Nonetheless, accused contended that even if the prescriptive period should start
from September 3, 1963, as proposed by the prosecution, the two-year period was tolled
on September 2, 1965. She pointed out that two years mean a period of 730 days in
accordance with Article 13 of the New Civil Code, and 1964, being a leap year consisting
of 366 days, the 730th day fell on September 2, 1965. Hence, "... . when the information
was filed on September 3, 1965, the offense, if any, had already prescribed. "
ISSUE:
Whether or not February 28, and 29 of a leap year should be counted as one day or
separate days in computing the period of prescription.
RULINGS:
The question to be resolved is the proper computation of the two-year period of
prescription from September 3, 1963. Resolution of this issue hinges, in turn, on whether
February 28, and 29 of a leap year, 1964, should be counted as one day, as proposed by
the prosecution; or as separate days, as alleged by the defense.
This issue which was in 1965 still undetermined is now a settled matter. It was held in
1969 in Namarco vs. Tuazon 27 that February 28 and 29 of a leap year should be counted
as separate days in computing periods of prescription. Thus, this Court, speaking thru
former Chief Justice Roberto Concepcion, held that where the prescriptive period was
supposed to commence on December 21, 1955, the filing of the action on December 21,
1965, was done after the ten-year period has lapsed — since 1960 and 1964 were both leap
years and the case was thus filed two (2) days too late. Since this case was filed on
September 3, 1965, it was filed one day too late; considering that the 730th day fell on
September 2, 1965 — the year 1964 being a leap year.
In explaining the rationale for its holding, the Court took pains to trace the antecedent
decisional and statutory bases for its conclusion, thus —
Prior to the approval of the Civil Code of Spain, the Supreme Court thereof held, on

29
 March 30, 1887, that, when the law spoke of months, it meant a 'natural' month or
'solar' month, in the absence of express provision to the contrary. Such provision was
incorporated into the Civil Code of Spain, subsequently promulgated. Hence, the
same Supreme Court declared that, pursuant to Article 7 of said Code, 'whenever
months are referred to in the law. it shall be understood that months are of 30 days,'
not the 'natural', 'solar' or 'calendar' months, unless they are 'designated by name,' in
which case, 'they shall be computed by the actual number of days they have.' This
concept was, later, modified in the Philippines, by Section 13 of the Revised
Administrative Code, pursuant to which 'month shall be understood to refer to a
calendar month.' With the approval of the Civil Code of the Philippines (RA 386) we
have reverted to the provisions of the Spanish Civil Code in accordance with which
a month is to be considered as the regular 30-month and not the solar or civil month
with the particularity that, whereas the Spanish Civil Code merely mentioned
'months, days or nights,' ours has added thereto the term 'years' and explicitly
ordains in Article 13 that it shall be understood that years are of three hundred sixty-
five days. 28
With respect to the opinion of some members of the Court that Article 13 of the Civil
Code is unrealistic, the Court adverted to the proper remedy thus —
Although some justices of the Supreme Court are inclined to think that Article 13 of
the Civil Code defining 'years' to mean 365 days is not realistic, the remedy is not
judicial legislation. If public interest demands a reversion to the policy embodied in
the Revised Administrative Code, this may be done through legislative process, not
by judicial decree. 29
Finally, there is no merit in the allegation that the reckoning of the prescriptive period
should start from September 4, 1963. This was the date when the police authorities
discovered several pirated books in accused's store. But the accused was charged, in both
Criminal Cases Nos. 80006 and 80007, with having allegedly sold and distributed spurious
and pirated copies of the textbook in question, not of illegal possession of the same. The
prosecution's claim that the preliminary investigation proceedings in the Manila City
Fiscal's Office and in the prosecution Division of the Department of Justice interrupted
the running of the prescriptive period, is also without merit. We held in People vs. Tayco
30 that the running of the period of prescription is interrupted not by the act of the
offended party in reporting the offense to the final but the filing of the complaint or
information in court.
24. Afos

Serrano Laktaw vs Paglinawan

April 1, 1918

Facts

Pedro Serrano Laktaw (Pedro) was the registered owner and author of a literary work
called Diccionario HispanoTagalog which was a Spanish-Tagalog dictionary. It was
published in the City of Manila in the year 1889.

The dilemma arose when Mamerto Paglinawan (Mamerto) allegedly reproduced the
said literary work and improperly most part thereof in the work published by him which
was entitled Diccionariong KastilaTagalog which was another Spanish -Tagalog
dictionary.

30
Pedro contends that the said reproduction his work constitutes a violation of article 7 of
the Law on Intellectual Property which caused irreparable injuries to Pedro in the amount
of $10,000 thus Pedro filed a complaint with the CFI.

Mamerto denied such allegation and prayed for the dismissal of the case which the lower
court granted.

Thw CFI in its decision stated that the comparison of Pedro's dictionary with that of
Mamerto does not show that the latter is an improper copy of the former, which has been
published and offered for sale by Pedro for more than twenty-five years.

Issue

WON Mamerto is guilty of violating article 7 of the Law of January 10, 1879 on Intellectual
Property

Held

Yes. The CFI’s decision was reversed and the SC ordered Mamerto to withdraw from the
sale and reproduction of the work.

The rule applicable here is Article 7 of the Law of Jan. 10, 1879 which provides that
nobody may reproduce another person's work without the owner's consent, even merely
to annotate or add anything to it, or improve any edition thereof.

The court interpreted the above-mentioned rule to mean that in order that said article
may be violated, it is not necessary that a work should be an improper copy of another
work previously published. It is enough that another's work has been reproduced
without the consent of the owner, even though it be only to annotate, add something
to it, or improve any edition thereof.

In the case at bar, 20,452 out of 23,560 Spanish words in Mamerto's dictionary were copied
from Pedro's. Mamerto also literally reproduced and copied for the Spanish words in his
dictionary, the equivalents, definitions and different meanings in Tagalog, given in
Pedro's dictionary, having reproduced, as to some words, everything that appears in the
latter's dictionary for similar Spanish words, although as to some he made some
additions of his own.

The printer's errors in Pedro's dictionary as to the expression of some words in Spanish
as well as their equivalents in Tagalog are also reproduced in Mamerto's.

Based on the facts given, the SC ruled that the protection of the law cannot be denied to
the author of a dictionary, for although words are not the property of anybody, their
definitions, the example that explain their sense, and the manner of expressing their
different meanings, may constitute a special work.

Ergo, Pedro cannot be denied the legal protection which he seeks, and which is based on
the fact that the dictionary published by him in 1889 is his property — said property right
being recognized and having been granted by article 7, in connection with article 2, of
said law. Hence The decision of the CFI is reversed.

25. Alipio

PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs. FELICIDAD

C. ROBLES and GOODWILL TRADING CO., INC.

G.R. No. 131522, July 19, 1999

31
FACTS: Pacita Habana et al., are authors and copyright owners of duly issued of the
book, College English For Today (CET). Respondent Felicidad Robles was the author of
the book Developing English Proficiency (DEP). Petitioners found that several pages of
the respondent's book are similar, if not all together a copy of petitioners' book. Habana
et al. filed an action for damages and injunction, alleging respondent’s infringement of
copyrights, in violation of P.D. 49. They allege respondent Felicidad C. Robles being
substantially familiar with the contents of petitioners' works, and without securing their
permission, lifted, copied, plagiarized and/or transposed certain portions of their book
CET.

On the other hand, Robles contends that the book DEP is the product of her own
intellectual creation, and was not a copy of any existing valid copyrighted book and that
the similarities may be due to the authors' exercise of the "right to fair use of copyrighted
materials, as guides."

The trial court ruled in favor of the respondents, absolving them of any liability. Later,
the Court of Appeals rendered judgment in favor of respondents Robles and Goodwill
Trading Co., Inc. In this appeal, petitioners submit that the appellate court erred in
affirming the trial court's decision.

ISSUE: Whether Robles committed infringement in the production of DEP.

HELD: A perusal of the records yields several pages of the book DEP that are similar if
not identical with the text of CET. The court finds that respondent Robles' act of lifting
from the book of petitioners substantial portions of discussions and examples, and her
failure to acknowledge the same in her book is an infringement of petitioners' copyrights.

In the case at bar, the least that respondent Robles could have done was to acknowledge
petitioners Habana et. al. as the source of the portions of DEP. The final product of an
author's toil is her book. To allow another to copy the book without appropriate
acknowledgment is injury enough.

26. Arteche

G.R. Nos. 175769-70 January 19, 2009

ABS-CBN BROADCASTING CORPORATION vs. PHILIPPINE MULTI-MEDIA

SYSTEM, INC., et al.

FACTS:

Respondent Philippine Multi-Media System, Inc. (PMSI) is the operator of Dream

Broadcasting System that delivers digital direct-to-home (DTH) television via satellite to
its subscribers all over the Philippines. It 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. Included in its program line-up is ABS-CBN Channels 2 and 23.

The programs aired over Channels 2 and 23 are either produced by ABS-CBN or
purchased from or licensed by other producers. ABS-CBN demanded for PMSI to cease
and desist from rebroadcasting Channels 2 and 23. However, PMSI argued that the
rebroadcasting of Channels 2 and 23 is sanctioned by Memorandum Circular No. 04-08-
88 issued by NTC.

ABS-CBN filed with the Intellectual Property Office (IPO) a complaint for Violation of
Laws Involving Property Rights. It contends that PMSI’s unauthorized rebroadcasting of

32
Channels 2 and 23 is an infringement of its broadcasting rights and copyright under the
Intellectual Property Code (IP Code).

The Bureau of Legal Affairs (BLA) of the IPO ruled that PMSI infringed the broadcasting
rights and copyright of ABS-CBN and ordering it to permanently cease and desist from
rebroadcasting Channels 2 and 23.

PMSI filed an appeal with the Office of the Director-General of the IPO, which reversed
the decision of BLA. The Court of Appeals, likewise, sustained the findings of the Director
General of the IPO. Hence, this petition.

ISSUE: Whether or not PMSI infringed the broadcasting rights and copyright of ABS-
CBN Broadcasting Corporation?

HELD/RULING: No. PMSI did not infringed the broadcasting rights and copyright of
ABS-CBN Broadcasting Corporation.

Section 177 of the IP Code states that copyright or economic rights shall consist of the
exclusive right to carry out, authorize or prevent the public performance of the work
(Section 177.6), and other communication to the public of the work (Section 177.7). Section
202.7 of the IP Code defines broadcasting as the transmission by wireless means for the
public reception of sounds or of images or of representations thereof; such transmission
by satellite is also broadcasting where the means for decrypting are provided to the public
by the broadcasting organization or with its consent. Section 211 of the IP Code provides
that broadcasting organizations shall enjoy the exclusive right to carry out, authorize or
prevent the rebroadcasting of their broadcasts.

Under the Rome Convention, rebroadcasting is “the simultaneous broadcasting by one

broadcasting organization of the broadcast of another broadcasting organization.” The
Working Paper prepared by the Secretariat of the Standing Committee on Copyright and
Related Rights defines broadcasting organizations as “entities that take the financial and
editorial responsibility for the selection and arrangement of, and investment in, the
transmitted content.” In addition, the Rome Convention also vested broadcasting
organizations the right to authorize or prohibit the rebroadcasting of its broadcast,
however, this does not extend to cable transmission.

Evidently, PMSI would not qualify as a broadcasting organization because it does not
have the aforementioned responsibilities imposed upon broadcasting organizations, such
as ABS-CBN. It functions essentially as a cable television that merely retransmits ABS-
CBN’s signals in its unaltered form. It does not produce, select, or determine the
programs to be shown in Channels 2 and 23. Moreover, PSMI did not represent itself to
the public as the author or origin of the programs shown in Channels 2 and 23.

The Supreme Court sustained the findings of the Director General of IPO.

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