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Copyright Ownership

Sec. 178; 179; Art. 723 (NCC)


CHAPTER VI
OWNERSHIP OF COPYRIGHT
Section 178. Rules on Copyright Ownership. - Copyright ownership shall be governed
by the following rules:
178.1 Subject to the provisions of this section, in the case of original literary and
artistic works, copyright shall belong to the author of the work;
178.2. In the case of works of joint authorship, the co-authors shall be the original
owners of the copyright and in the absence of agreement, their rights shall be
governed by the rules on co-ownership. If, however, a work of joint authorship
consists of parts that can be used separately and the author of each part can be
identified, the author of each part shall be the original owner of the copyright in the
part that he has created;
178.3. In the case of work created by an author during and in the course of his
employment, the copyright shall belong to:
a The employee, if the creation of the object of copyright is not a part of his
regular duties even if the employee uses the time, facilities and materials of the
employer.
b The employer, if the work is the result of the performance of his regularlyassigned duties, unless there is an agreement, express or implied, to the
contrary.
4 In the case of a work commissioned by a person other than an employer of
the author and who pays for it and the work is made in pursuance of the
commission, the person who so commissioned the work shall have ownership of
the work, but the copyright thereto shall remain
with the creator, unless there is a written stipulation to the contrary;
5 In the case of audiovisual work, the copyright shall belong to the producer,
the author of the scenario, the composer of the music, the film director, and the
author of the work so adapted. However, subject to contrary or other stipulations
among the creators, the producer shall exercise the copyright to an extent
required for the exhibition of the work in any manner, except for the right to

collect performing license fees for the performance of musical compositions, with
or without words, which are incorporated into the work; and
6 In respect of letters, the copyright shall belong to the writer subject to the
provisions of Article 723 of the Civil Code. (Sec. 6, P.D.
No. 49a)
Section 179. Anonymous and Pseudonymous Works. - For purposes of this Act, the
publishers shall be deemed to represent the authors of articles and other writings
published without the names of the authors or under pseudonyms, unless the
contrary appears, or the pseudonyms or adopted name leaves no doubt as to the
author's identity, or if the
author of the anonymous works discloses his identity. (Sec. 7, P.D. 49) Civil Code:
Art. 723.
Letters and other private communications in writing are owned by the person to
whom they are addressed and delivered, but they cannot be published or
disseminated without the consent of the writer or his heirs. However, the court may
authorize their publication or dissemination if the public good or the interest of justice
so requires. (n)

Maglalang Santos vs., McCullough Printing, 12 SCRA 321 (1964)


Facts
Mauro Malalang Santos filed an action for damages for unauthorized use, adaptation
and appropriation by the MCCULLOUGH PRINTING COMPANY of the intellectual
creation or artistic design of a Christmas card by him (Mauro Maglalang Santos)
based on Article 721 and 722 of the Civil Code of the Philippines.
The Christmas card depicts a Philippine rural Christmas time scene consisting of a
woman and a child in a nipa hut adorned with a star-shaped lantern and a man
astride a carabao, beside a tree, underneath which appears the plaintiff's pen name,
Malang.
The 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. For such
unauthorized act of defendant, plaintiff suffered moral damages to the tune of

P16,000.00, because it has placed plaintiff's professional integrity and ethics under
serious question and caused him grave embarrassment before Ambassador Neri. He
further prayed for the additional sum of P3,000.00 by way of attorney's fee.
Issues
1 Whether plaintiff is entitled to protection, notwithstanding the, fact that he has
not copyrighted his design?
2 Whether the publication is limited, so as to prohibit its use by others, or it is
general publication?
3 Whether the provisions of the Civil Code or the Copyright Law should apply
in the case?
Law
Art. 721. By intellectual creation, the following persons acquire ownership:
(1) The author with regard to his literary, dramatic, historical, legal, philosophical,
scientific or other work; (2) The composer; as to his musical composition;
3

The painter, sculptor, or other artist, with respect to the product of his art;

4 The scientist or technologist or any other person with regard to his discovery
or invention. (n)
Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of the preceding
article, shall have the ownership of their creations even before the publication of the
same. Once their works are published, their rights are governed by the Copyright
laws.
The painter, sculptor or other artist shall have dominion over the product of his art
even before it is copyrighted.
The scientist or technologist has the ownership of his discovery or invention even
before it is patented. (n)
Held
1st issue:
The Supreme Court found that plaintiff is not entitled to a protection, the provision of
the Civil Code, notwithstanding. 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 Act 165, provides, among others, that an

intellectual creation should be copyrighted thirty (30) days after its publication, if
made in Manila, or within sixty (60) day's if made elsewhere, failure of which renders
such creation public property. In the case at bar, even as of this moment, there is no
copyright for the design in question.
2nd issue:
We are not also prepared to accept the contention of appellant that the publication of
the design was a limited one, or that there was an understanding that only
Ambassador Neri should, have absolute right to use the same. In the first place, if
such were the condition then Ambassador Neri would be the aggrieved party, and not
the appellant. In the second place, if there was such a limited publication or
prohibition, the same was not shown on the face of the design. When the purpose is
a limited publication, but the effect is general publication, irrevocable rights thereupon
become vested in the public, in consequence of which enforcement of the restriction
becomes impossible (Nutt vs. National Institute, 31 F [2d] 236). It has been held that
the effect of offering for sale a dress, for example manufactured in accordance with
an original design which is not protected by either a copyright or a patent, is to divest
the owner of his common law rights therein by virtue of the publication of a 'copy' and
thereafter anyone is free to copy the design or the dress (Fashion Originators Guild
of America v. Federal Trade Commission, 114 F [2d] 80). When Ambassador Neri
distributed 800 copies of the design in controversy, the plaintiff lost control of his
design and the necessary implication was that there had been a general publication,
there having been no showing of a clear indication that a limited publication was
intended. The author of a literary composition has a light to the first publication
thereof. He has a right to determine whether it shall be published at all, and if
published, when, where, by whom, and in what form. This exclusive right is confined
to the first publication. When once published, it is dedicated to the public, and the
author loses the exclusive right to control subsequent publication by others, unless
the work is placed under the protection of the copyright law. (See II Tolentino's
Comments on the Civil Code, p. 433, citing
Wright v. Eisle 83 N.Y. Supp. 887.)
3rd issue:
Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of the preceding
article, shall have the ownership of their creations even before the publication of the
same. Once their works are published, their rights are governed by the Copyright
laws.
The painter, sculptor or other artist shall have dominion over the product of his art
even before it is copyrighted.

The scientist or technologist has the ownership of his discovery or invention even
before it is patented. (n)

Bayanihan Music Phils., Inc. vs. BMG Records


G.R. No. 166337, March 7, 2005
Facts
Jose Mari Chan (Chan) entered into a contract with Bayanihan Music Philippines,
Inc. (Bayanihan), whereunder the former assigned to the latter all his rights, interests
and participation over his musical composition "Can We Just Stop and Talk A While".
Three years after the parties entered into a similar contract over Chan's other musical
composition entitled "Afraid For Love To Fade".
On the strength of the abovementioned contracts, Bayanihan applied for and was
granted by the National Library a Certificate of
Copyright Registration for each of the two musical compositions.Apparently, without
the knowledge and consent of petitioner Bayanihan, Chan authorized BMG Records
(BMG) to record and distribute the aforementioned musical compositions in a then
recently released album of singer Lea Salonga.
Bayanihan informed Chan and BMG of its existing copyrights over the subject
musical compositions and the alleged violation of such right by the two. Demands
were made on both to settle the matter with Bayanihan. However no settlement was
reached by the parties.
Hence, Bayanihan filed a against Chan and BMG for violation of Section 216 of
Republic Act No. 8293, otherwise known as the Intellectual Property Code of the
Philippines, with a prayer for the issuance of Temporary Restraining Order (TRO)
and/or writ of preliminary injunction, enjoining respondent BMG from further recording
and distributing the subject musical compositions in whatever form of musical
products, and Chan from further granting any authority to record and distribute the
same musical compositions.
BMG Arguments:
1 the acts of recording and publication sought to be enjoined had already been
consummated, thereby rendering moot Bayanihan's prayer for TRO and/or
preliminary injunction;
2 there is no clear showing that petitioner Bayanihan would be greatly
damaged by the refusal of the prayed for TRO and/or preliminary injunction.
Chan Arguments:

1 it was never his intention to divest himself of all his rights and interest over
the musical compositions in question;
2 the contracts he entered into with Bayanihan are mere music publication
agreements giving Bayanihan, as assignee, the power to administer his
copyright over his two songs and to act as the exclusive publisher thereof;
3 he was not cognizant of the application made by and the subsequent grant of
copyrights to Bayanihan;
4 Bayanihan was remissed in its obligations under the contracts because it
failed to effectively advertise his musical compositions for almost twenty (20)
years, hence, he caused the rescission of said contracts in 1997.
Issues
Whether or not Bayanihan as assignee of the copyrights over the musical
compositions in question has a clear legal right to a writ of preliminary injunction?
Held
No, Bayanihan has no right for right for injunction over the subject musical
compositions.
The issuance of an injunctive writ if the following requisites provided for by law are:
1 there must be a right in esse or the existence of a right to be protected;
2 the act against which the injunction is to be directed is a violation of such
right, the trial court threaded the correct path in denying petitioner's prayer
therefor.
Chan, the composer and author of the lyrics of the two (2) songs, is protected by the
mere fact alone that he is the creator thereof, conformably with Republic Act No.
8293, otherwise known as the Intellectual Property Code, Section 172.2 of which
reads:
172.2. Works are protected by the sole fact of their creation, irrespective of their
mode or form of expression, as well as of their content, quality and purpose.
The copyrights obtained by Bayanihan on the basis of the selfsame two (2) contracts,
suffice it to say 'that such purported copyrights are not presumed to subsist in
accordance with Section 218[a] and [b], of the Intellectual Property Code, because
respondent Chan had put in issue the existence thereof.

Filipino Society of Composers vs. Tan, 148 SCRA 461 (1987)


Facts
Filipino Society of Composers, Authors and Publishers Inc. is organization under the
Corporation Law of the Philippines and registered with the Securities and Exchange
Commission. The association is the owner of certain musical compositions among
which are the songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat
Kami Ay
Tao Lamang" and "The Nearness Of You."
Benjamin Tan on the other hand is the operator of a restaurant known as "Alex Soda
Foundation and Restaurant" where a combo with professional singers, hired to play
and sing musical compositions to entertain and amuse customers therein, were
playing and singing the above-mentioned compositions without any license or
permission from the appellant to play or sing the same. Accordingly, appellant
demanded from the appellee payment of the necessary license fee for the playing
and singing of aforesaid compositions but the demand was ignored.
Tans Argument: That the mere singing and playing of songs and popular tunes even
if they are copyrighted do not constitute an infringement (Record on Appeal, p. 11;
Resolution, CA-G.R. NO. 46373R, Rollo, pp. 32-36) under the provisions of Section 3
of the Copyright Law (Act 3134 of the Philippine Legislature).
Issues
1 Whether or not the playing and singing of musical compositions which have
been copyrighted under the provisions of the Copyright Law (Act 3134) inside
the establishment of Benjamin Tan constitute a public performance for profit
within the meaning and contemplation of the
Copyright
Law
of
the
Philippines?
2 Assuming that there were indeed public performances for profit, whether or
not Benjamin Tan can be held liable therefore.
Held
1st issue:
Yes.
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 (Buck, et al. v. Russon No. 4489 25 F. Supp. 317).

2nd issue:
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 Act 165, 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 of which renders
such creation public property." (Santos v. McCullough Printing Company, 12 SCRA
324-325 [1964]. 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.
A careful study of the records reveals that the song "Dahil Sa Iyo" which was
registered on April 20, 1956 (Brief for Appellant, p. 10) became popular in radios, juke
boxes, etc. long before registration (TSN, May 28, 1968, pp. 3-5; 25) while the song
"The Nearness Of You" registered on January 14, 1955 (Brief for Appellant, p. 10)
had become popular twenty five (25) years prior to 1968, (the year of the hearing) or
from 1943 (TSN, May 28, 1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin" and
"Sapagkat Kami Ay Tao Lamang" both registered on July 10, 1966, appear to have
been known and sang by the witnesses as early as 1965 or three years before the
hearing in 1968. The testimonies of the witnesses at the hearing of this case on this
subject were unrebutted by the appellant. (Ibid, pp. 28; 29 and 30).
Manly Sportswear Manufacturing v. Dadodette Enterprises and/or Hermes
Sports Center
G.R. No. 165306
FACTS: Petition for review on certiorari under Rule 45
(NBI applied for a search warrant before the Regional Trial Court (RTC) of
Quezon City, based on the information that Dadodette Enterprises and/or
Hermes Sports Center were in possession of copyrighted goods of Manly
Sportswear Mfg., Inc. (MANLY).
On March 17, 2003, RTC issued a search warrant against Dadodette
Enterprises and/or Hermes Sports Center after finding reasonable grounds that
respondents violated Sections 172 and 217 of Republic Act (RA) No. 8293

Respondents moved to quash the search warrant claiming that the sporting
goods are ordinary hence, not among the classes protected under Sec. 172 of
RA 8293.
Trial court granted the motion to quash based on its finding that the
copyrighted products of MANLY do not appear to be original creations and were
being manufactured and distributed by different companies locally and abroad
under various brands.
MANLY filed a motion for reconsideration but was denied. MANLY filed a
petition for review of certiorari in the Court of Appeals but was also denied.
ISSUE:
Whether 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.
HELD:
The power to issue search warrants comes with the power to quash the same if
it finds upon reevaluation of evidence that no probable cause exists.
Upon trial courts reevaluation, 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 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
Further, the copyright certificates by MANLY constitute merely prima
facie evidence of validity and ownership.
However, when other evidence exist that may cast doubt on the
copyright validity, the presumption will not exist. Hence, where there is sufficient
proof that the copyrighted products are not original creations but are readily
available in the market under various brands, the presumption will not arise and
the trial court may properly quash the issued warrant for lack of probable cause.

At most, the certificates of registration and deposit issued by the


National Library and the Supreme Court Library serve merely as a notice of
recording and registration of the work but do not confer any right or title upon the
registered copyright owner or automatically put his work under the protective
mantle of the copyright law. It is not a conclusive proof of copyright ownership.
G.R. No. 119280 August 10, 2006 UNILEVER PHILIPPINES (PRC), INC. vs.
THE HONORABLE COURT OF APPEALS and PROCTER AND GAMBLE
PHILIPPINES, INC.
FACTS: on August 24, 1994, private respondent Procter and Gamble Phils., Inc.
filed a complaint for injunction with damages and a prayer for temporary
restraining order and/or writ of preliminary injunction against petitioner Unilever,
alleging that:
As early as 1982, a P&G subsidiary in Italy used a key visual in the
advertisement of its laundry detergent and bleaching products. This key visual
known as the "double-tug" or "tac-tac" demonstration shows the fabric being
held by both hands and stretched sideways.
The "tac-tac" was conceptualized for P&G by the advertising agency Milano and
Gray of Italy in 1982. The "tac-tac" was used in the same year in an
advertisement entitled "All aperto" to demonstrate the effect on fabrics of one of
P&GPs products, a liquid bleach called "Ace."
Since then, P&G has used the "tac-tac" key visual in the advertisement of its
products. In fact, in 1986, in Italy, the "tac-tac" key visual was used in the
television commercial for "Ace" entitled "Kite."
P&G has used the same distinctive "tac-tac" key visual to local consumers in the
Philippines.
Substantially and materially imitating the aforesaid "tac-tac" key visual of P&GP
and in blatant disregard of P&GPs intellectual property rights, Unilever on 24
July 1993 started airing a 60 second television commercial "TVC" of its "Breeze
Powerwhite" laundry product called "Porky." The said TVC included a stretching

visual presentation and sound effects almost [identical] or substantially similar to


P&GPs "tac-tac" key visual.

On August 1, 1994, Unilever filed a Complaint with the Advertising Board of the
Philippines to prevent P&GP from airing the "Kite" television advertisement.

We disagree. Section 2 of PD 49 stipulates that the copyright for a work or


intellectual creation subsists from the moment of its creation. Accordingly, the
creator acquires copyright for his work right upon its creation. Contrary to
petitioners contention, the intellectual creators exercise and enjoyment of
copyright for his work and the protection given by law to him is not contingent or
dependent on any formality or registration. Therefore, taking the material
allegations of paragraphs 1.3 to 1.5 of P&GPs verified Complaint in the context
of PD 49, it cannot be seriously doubted that at least, for purposes of
determining whether preliminary injunction should issue during the pendency of
the case, P&GP is entitled to the injunctive relief prayed for in its Complaint.

On August 26, 1994, Judge Gorospe issued an order granting a temporary


restraining order and setting it for hearing on September 2, 1994 for Unilever to
show cause why the writ of preliminary injunction should not issue. During the
hearing on September 2, 1994, P&GP received Unilevers answer with
opposition to preliminary injunction. P&GP filed its reply to Unilevers opposition
to a preliminary injunction on September 6, 1994.

The third ground is patently unmeritorious. As alleged in the Complaint P&GP is


a subsidiary of Procter and Gamble Company (P&G) for which the "double tug"
or "tac-tac" key visual was conceptualized or created. In that capacity, P&GP
used the said TV advertisement in the Philippines to promote its products. As
such subsidiary, P&GP is definitely within the protective mantle of the statute
(Sec. 6, PD 49).

On July 15, 1994, P&GP aired in the Philippines, the same "Kite" television
advertisement it used in Italy in 1986, merely dubbing the Italian language with
Filipino for the same produce "Ace" bleaching liquid which P&GPnow markets in
the Philippines.

On September 19, 1994, P&GP received a copy of the order dated September
16, 1994 ordering the issuance of a writ of preliminary injunction and fixing a
bond of P100,000. On the same date, P&GP filed the required bond issued by
Prudential Guarantee and Assurance, Inc. Petitioner appealed to the CA. the CA
rendered its decision finding that Judge Gorospe did not act with grave abuse of
discretion in issuing the disputed order. The petition for certiorari was thus
dismissed for lack of merit.
HELD: After a careful perusal of the records, we agree with the CA and affirm its
decision in toto:
Petitioner does not deny that the questioned TV advertisements are substantially
similar to P&GPs "double tug" or "tac-tac" key visual. However, it submits that
P&GP is not entitled to the relief demanded, which is to enjoin petitioner from
airing said TV advertisements, for the reason that petitioner has Certificates of
Copyright Registration for which advertisements while P&GP has none with
respect to its "double-tug" or "tac-tac" key visual. In other words, it is petitioners
contention that P&GP is not entitled to any protection because it has not
registered with the National Library the very TV commercials which it claims
have been infringed by petitioner.

Limitations of Copyright
(a) Limitations On Copyright
Sec. 184
CHAPTER VIII
LIMITATIONS ON COPYRIGHT
Section 184. Limitations on Copyright. - 184.1. Notwithstanding the provisions of
Chapter V, the following acts shall not constitute infringement of copyright:
a The recitation or performance of a work, once it has been lawfully made
accessible to the public, if done privately and free of charge or if made strictly for
a charitable or religious institution or society; (Sec.
10(1), P.D. No. 49)
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; (Sec. 11, third par.,
P.D. No. 49)

c The reproduction or communication to the public by mass media of articles on


current political, social, economic, scientific or religious topic, lectures,
addresses and other works of the same nature, which are delivered in public if
such use is for information purposes and has not been expressly reserved:
Provided, That the source is clearly indicated;
(Sec. 11, P.D. No. 49)
d The reproduction and communication to the public of literary, scientific or artistic
works as part of reports of current events by means of photography,
cinematography or broadcasting to the extent necessary for the purpose; (Sec.
12, P.D. No. 49)
e The inclusion of a work in a publication, broadcast, or other communication to
the public, sound recording or film, if such inclusion is made by way of illustration
for teaching purposes and is compatible with fair use: Provided, That the source
and of the name of the author, if appearing in the work, are mentioned;
f

The recording made in schools, universities, or educational institutions of a work


included in a broadcast for the use of such schools, universities or educational
institutions: Provided, That such recording must be deleted within a reasonable
period after they were first broadcast: Provided, further, That such recording may
not be made from audiovisual works which are part of the general cinema
repertoire of feature films except for brief excerpts of the work;

g The making of ephemeral recordings by a broadcasting organization


by means of its own facilities and for use in its own broadcast;
h The use made of a work by or under the direction or control of the Government,
by the National Library or by educational, scientific or professional institutions
where such use is in the public interest and is compatible with fair use;
i

The public performance or the communication to the public of a work, in a place


where no admission fee is charged in respect of such public performance or
communication, by a club or institution for charitable or educational purpose
only, whose aim is not profit making, subject to such other limitations as may be
provided in the Regulations; (n)
Public display of the original or a copy of the work not made by means of a film,
slide, television image or otherwise on screen or by means of any other device
or process: Provided, That either the work has been published, or, that the

original or the copy displayed has been sold, given away or otherwise
transferred to another person by the author or his successor in title; and
k Any use made of a work for the purpose of any judicial proceedings or for the
giving of professional advice by a legal practitioner.
184.2. The provisions of this section shall be interpreted in such a way as to allow the
work to be used in a manner which does not conflict with the normal exploitation of
the work and does not unreasonably prejudice the right holder's legitimate interests.
(b) Fair Use of Work
Sec. 185
Section 185. Fair Use of a Copyrighted Work. - 185.1. The fair use of a copyrighted
work for criticism, comment, news reporting, teaching including multiple copies for
classroom use, scholarship, research, and similar purposes is not an infringement of
copyright. Decompilation, which is understood here to be the reproduction of the
code and translation of the forms of the computer program to achieve the
interoperability of an independently created computer program with other programs
may also constitute fair use. In determining whether the use made of a work in any
particular case is fair use, the factors to be considered shall include:
a The purpose and character of the use, including whether such use is
of a commercial nature or is for non-profit educational purposes;
b The nature of the copyrighted work;
c The amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
d The effect of the use upon the potential market for or value of the copyrighted
work.
185.2. The fact that a work is unpublished shall not by itself bar a finding of fair
use if such finding is made upon consideration of all the above factors.
Case: PHILIPPINE EDUCATION COMPANY, INC. v. VICENTE SOTTO and
V.R. ALINDADA (52 Phil. 580)
Date: January 29, 1929
Ponente: J. Johns
Facts:

Philippine Education Company, Inc. (PECI, for brevity) is a domestic


corporation; it is the proprietor and publisher of the monthly magazine Philippine
Education Magazine published in the City of Manila.
In December 1927, PECI 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 in the Philippine Education Magazine. Craig then prepared
and wrote an original article entitled The True Story of Mrs. Rizal and delivered
it to PECI which paid him for it. The same was printed and published in the
December 1927 issue then put in market for sale. In every issue, it gave a notice
that all rights thereto were reserved.
Later on, Sotto, the proprietor and publisher of a weekly newspaper
known as The Independent and Alindada, the editor, allegedly appropriated,
copied and published the article unlawfully and without the knowledge and
consent of PECI in The Independent of December 24th and 31st, 1927, without
citing the PECI as source.
Upon discovery, PECI requested thru a letter that on the formers next issue,
they cite it as the source of the article in some prominent place. However,
notwithstanding the letter, the publication of the article was continued.
Alindada advised PECI in substance that it had not registered such right
under the Copyright Law. Consequently, PECI sued Sotto and Alindada for
damages.

Ratio:
The present case calls for the interpretation of Section 5 of Act 3134 i.e.
An Act to Protect Intellectual Property which is known as the Copyright Law of
the Philippine Islands.
Analyzing the language used, such news items, editorial paragraphs and
articles in periodicals may be reproduced unless they contain a notice that their
publication is reserved or unless they contain a notice of copyright. In either
event, the law specifically provides that the source of the reproduction or original
reproduced shall be cited. To give the Section another construction would be to
nullify, eliminate and take from the paragraph the works they contain a notice
that their publication is reserved. The words are plain and clear, it should be
applied.
In the case at bar, PECI did not give notice of its copyright for the simple
reason that it did not have one but it did notify Sotto and Alindada that in the
publication of the article we reserved all right, which was legally equivalent to a
notice of copyright. Furthermore, the latter would have had the legal right to
publish the article by giving the source of the reproduction to which it failed to.
If it had been the purpose of and intent of the Legislature to limit the
reproduction of news items, editorial paragraphs and articles in periodicals to
those which have a notice of copyright only, it never would have said if they
contain a notice that their publication is reserved.

Sotto and Alindada demurred to the evidence and alleged as a special


defense that PECI is not the owner of the article because it had not registered it
in its name in the proper registry under Act 3134 and the regulation concerning
the registration of intellectual property made by the Chief of the Philippine Library
and Museum, also, they had published the same without any intention to
prejudice anybody in his property right but in good faith. Trial court ruled in favor
of PECI, hence, the present appeal.
Issue: WON the article may be reproduced considering that PECI has not
registered the same in its name and merely served a notice that it reserved the
rights to publication

ABS-CBN vs. Phil. Multi-Media System Inc.


G.R. No. 175769-70, Jan. 19, 2009

Held: No, not without giving the source of the reproduction.

Facts

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


Republic of the Philippines to engage in television and radio broadcasting. It
broadcasts television programs by wireless means to Metro Manila and nearby
provinces, and by satellite to provincial stations through Channel 2 on Very High
Frequency (VHF) and Channel 23 on Ultra High Frequency (UHF). The programs
aired over Channels 2 and 23 are either produced by ABS-CBN or purchased from or
licensed by other producers.
ABS-CBN also owns regional television stations which pattern their programming in
accordance with perceived demands of the region. Thus, television programs shown
in Metro Manila and nearby provinces are not necessarily shown in other provinces.
Philippine Multi-Media System, Inc. (PMSI) is the operator of Dream Broadcasting
System. It delivers digital direct-to-home (DTH) television via satellite to its
subscribers all over the Philippines.
PMSI was granted a legislative franchise under Republic Act No. 86305 on May 7,
1998 and was given a Provisional Authority by the National Telecommunications
Commission (NTC) on February 1, 2000 to install, operate and maintain a nationwide
DTH satellite service. When it commenced operations, it offered as part of its
program line-up ABS-CBN Channels 2 and 23, NBN, Channel 4, ABC Channel 5,
GMA Channel 7, RPN Channel 9, and IBC Channel 13, together with other paid
premium program channels.
However, on April 25, 2001, ABS-CBN demanded for PMSI to cease and desist from
rebroadcasting Channels 2 and 23. On April 27, 2001, PMSI replied that the
rebroadcasting was in accordance with the authority granted it by NTC and its
obligation under NTC Memorandum Circular No. 4-08-88, Section 6.2 of which
requires all cable television system operators operating in a community within Grade
A or B contours to carry the television signals of the authorized television
broadcast stations.
Thereafter, negotiations ensued between the parties in an effort to reach a
settlement; however, the negotiations were terminated on April 4, 2002 by ABS-CBN
allegedly due to PMSIs inability to ensure the prevention of illegal retransmission and
further rebroadcast of its signals, as well as the adverse effect of the rebroadcasts on
the business operations of its regional television stations.
On May 13, 2002, ABS-CBN filed with the IPO a complaint for Violation of Laws
Involving Property Rights, with Prayer for the Issuance of a Temporary Restraining
Order and/or Writ of Preliminary Injunction,. It alleged that PMSIs unauthorized
rebroadcasting of Channels 2 and 23 infringed on its broadcasting rights and
copyright. On July 2, 2002, the Bureau of Legal Affairs (BLA) of the IPO granted ABSCBNs application for a temporary restraining order. On July 12, 2002, PMSI
suspended its retransmission of Channels 2 and 23.

PMSI Argument
Broadcasting Channels 1 & 23 is subject to the must-carry rule under Memorandum
Circular No. 04-08-88.
Issues
1 Whether or not PMSIs unauthorized rebroadcasting of Channels 2 and 23 is
an infringement of its broadcasting rights and copyright under the Intellectual
Property Code?
2 Whether or not Memorandum Circular No. 04-08-88 excludes DTH satellite
television operators?
Held
PMSI did not infringe on ABS-CBNs intellectual property rights under the IP Code.
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.
On the other hand, rebroadcasting as defined in Article 3(g) of the International
Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations, otherwise known as the 1961 Rome Convention, of
which the Republic of the Philippines is a signatory, is the simultaneous broadcasting
by one broadcasting organization of the broadcast of another broadcasting
organization. PMSI would not qualify as a broadcasting organization because it
does not have the aforementioned responsibilities imposed upon broadcasting
organizations, such as ABS-CBN.
ABS-CBN creates and transmits its own signals; PMSI merely carries such signals
which the viewers receive in its unaltered form. PMSI does not produce, select, or
determine the programs to be shown in Channels 2 and 23. Likewise, it does not
pass itself off as the origin or author of such programs. Insofar as Channels 2 and 23
are concerned, PMSI merely retransmits the same in accordance with Memorandum
Circular 04-08-88. With regard to its premium channels, it buys the channels from
content providers and transmits on an as-is basis to its viewers. Clearly, PMSI does
not perform the functions of a broadcasting organization; thus, it cannot be said that it
is engaged in rebroadcasting Channels 2 and 23.
The retransmission of ABS-CBNs signals by PMSI which functions essentially
as a cable television does not therefore constitute rebroadcasting in violation of
the formers intellectual property rights under the IP Code.

CHAPTER IX

DEPOSIT AND NOTICE


Section 191. Registration and Deposit with National Library and the Supreme Court
Library. - After the first public dissemination of performance by authority of the
copyright owner of a work falling under Subsections 172.1, 172.2 and 172.3 of this
Act, there shall, for the purpose of completing the records of the National Library and
the Supreme Court Library, within three (3) weeks, be registered and deposited with
it, by personal delivery or by registered mail two (2) complete copies or reproductions
of the work in such form as the directors of said libraries may prescribe. A certificate
of deposit shall be issued for which the prescribed fee shall be collected and the
copyright owner shall be exempt from making additional deposit of the works with the
National Library and the Supreme Court Library under other laws. If, within three (3)
weeks after receipt by the copyright owner of a written demand from the directors for
such deposit, the required copies or reproductions are not delivered and the fee is
not paid, the copyright owner shall be liable to pay a fine equivalent to the required
fee per month of delay and to pay to the National Library and the Supreme Court
Library the amount of the retail price of the best edition of the work. Only the above
mentioned classes of work shall be accepted for deposit by the
National Library and the Supreme Court Library. (Sec. 26, P.D. No. 49a)
Section 192. Notice of Copyright. - Each copy of a work published or offered for sale
may contain a notice bearing the name of the copyright owner, and the year of its first
publication, and, in copies produced after the creator's death, the year of such death.
(Sec. 27, P.D. No. 49a)
Note: The value of the notice of copyright is enforcing your copyright in infringement
case
CHAPTER XX
MISCELLANEOUS PROVISIONS
Section 227. Ownership of Deposit and Instruments. - All copies deposited and
instruments in writing filed with the National Library and the Supreme Court Library in
accordance with the provisions of this Act sha
ll become the property of the Government. (Sec. 60, P.D. No. 49)
Section 228. Public Records. - The section or division of the National Library and the
Supreme Court Library charged with receiving copies and instruments deposited and
with keeping records required under this Act and everything in it shall be opened to
public inspection. The Director of the National Library is empowered to issue such

safeguards and regulations as may be necessary to implement this Section and other
provisions of this Act. (Sec. 61, P.D. No. 49)
Section 229. Copyright Division; Fees. - The Copyright Section of the National Library
shall be classified as a Division upon the effectivity of this Act. The National Library
shall have the power to collect, for the discharge of its services under this Act, such
fees as may be promulgated by it from time to time subject to the approval of the
Department Head.
(Sec. 62, P.D. 49a)

Malang Santos v. McCullough Printing Company, G.R. No. L-19439, October


31, 1964
United Features Syndicate, Inc., v. Munsingwear Creation Manufacturing
Company, G.R. No. 76193, November 9, 1989
1 [G.R. No. 76193. November 9, 1989.]
UNITED FEATURE SYNDICATE, INC., petitioner, vs. MUNSINGWEAR
CREATION MANUFACTURING COMPANY, respondent.
Petitioners claim:
Petitioner is asking for the cancellation of the registration of trademark CHARLIE
BROWN (Registration No. SR. 4224) in the name of respondent
MUNSINGWEAR, 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 respondentregistrant has no bona fide use of the trademark in commerce in the Philippines
prior to its application for registration.
Respondents claim:

-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"
-Relied on the ruling on October 2, 1984 in which 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.
Issue: WHETHER 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 SUPREME COURT TO THE EFFECT THAT
A COPYRIGHTED CHARACTER MAY NOT BE APPROPRIATED AS A
TRADEMARK BY ANOTHER UNDER PRESIDENTIAL DECREE NO. 49.
S.C. Ruling:
The petitioner is impressed with merit.
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, otherwise known as the "Decree on Intellectual
Property".
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.
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.

MUNSINGWEAR obtained a trademark registration for CHARLIE BROWN for


T-shirts. United Feature Syndicate filed a case for the cancelation of the said
trademark registration arguing that: 1) Munsingwear was not entitled to the
registration of the mark CHARLIE BROWN; 2) that CHARLIE BROWN is a
character creation or a pictorial illustration, the copyright to which is exclusively
owned worldwide by United Feature Syndicate; and 3) that as the owner of the
pictorial illustration CHARLIE BROWN, it has since 1950 and continuously up
to the present, used and reproduced the same to the exclusion of others. The
Supreme Court ruled that the name CHARLIE BROWN and its pictorial
representation were covered by a copyright registration in favor of United
Features Syndicate way back in 1950 and the same are entitled to protection
under PD No. 49 (the Copyright Law then). Aside from its copyright registration,
United Features Syndicate 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 United Feature Syndicate as early as
1957 and additionally also as TV SPECIALS featuring the PEANUTS character
CHARLIE BROWN.

Columbia Pictures, Inc., et.al. v. Court of Appeals, et.al., G.R. No. 110318,
August 28, 1996 (En Banc)
Columbia Pictures vs. CA, 261 SCRA 144 (1996)
Facts
Columbia Pictures lodged a formal complaint with the National Bureau of
Investigation for violation of PD No. 49, as amended, and sought its assistance in
their anti-film piracy drive. Agents of the NBI and private researchers made discreet
surveillance on various video establishments in Metro Manila including Sunshine
Home Video Inc. owned and operated by Danilo A. Pelindario.

On November 14, 1987, NBI Senior Agent Lauro C. Reyes applied for a search
warrant with the court a quo against Sunshine seeking the seizure, among others, of
pirated video tapes of copyrighted films all of which were enumerated in a list
attached to the application; and, television sets, video cassettes and/or laser disc
recordings equipment and other machines and paraphernalia used or intended to be
used in the unlawful exhibition, showing, reproduction, sale, lease or disposition of
videograms tapes in the premises above described. In the hearing of the application,
NBI Senior Agent Lauro C. Reyes, upon questions by the court a quo, reiterated in
substance his averments in his affidavit. His testimony was corroborated by another
witness, Mr. Rene C. Baltazar. Atty. Rico V. Domingos deposition was also taken.
On the basis of the affidavits and depositions of NBI Senior Agent Lauro C. Reyes,
Rene C. Baltazar and Atty. Rico V. Domingo, Search Warrant No 87-053 for violation
of Section 56 of PD No. 49, as amended, was issued by the court a quo.
NBI Agents found and seized various video tapes of duly copyrighted motion
pictures/films owned or exclusively distributed by private complainants, and
machines, equipment, television sets, paraphernalia, materials, accessories all of
which were included in the receipt for properties accomplished by the raiding team.
Copy of the receipt was furnished and/or tendered to Mr. Danilo A. Pelindario,
registered owner-proprietor of Sunshine Home Video.
Issues
Whether or not absence such registration, as in this case, there was no right
created, hence, no infringement under PD 49 as amended?
Held
As correctly pointed out by private complainants-oppositors, the Department of
Justice has resolved this legal question as far back as December 12, 1978 in its
Opinion No. 191 of the then Secretary of Justice Vicente Abad Santos which stated
that Sections 26 and 50 do not apply to cinematographic works and PD No. 49 had
done away with the registration and deposit of cinematographic works and that
even without prior registration and deposit of a work which may be entitled to
protection under the Decree, the creator can file action for infringement of its rights.
He cannot demand, however, payment of damages arising from infringement. The
same opinion stressed that the requirements of registration and deposit are thus
retained under the Decree, not as conditions for the acquisition of copyright and other

rights, but as prerequisites to a suit for damages. The statutory interpretation of the
Executive Branch being correct, is entitled (to) weight and respect.
Furthermore, a closer review of Presidential Decree No. 49 reveals that even with
respect to works which are required under Section 26 thereof to be registered and
with copies to be deposited with the National Library, such as books, including
composite and cyclopedic works, manuscripts, directories and gazetteers; and
periodicals, including pamphlets and newspapers; lectures, sermons, addresses,
dissertations prepared for oral delivery; and letters, the failure to comply with said
requirements does not deprive the copyright owner of the right to sue for
infringement. Such non-compliance merely limits the remedies available to him and
subjects him to the corresponding sanction.
The reason for this is expressed in Section 2 of the decree which prefaces its
enumeration of copyrightable works with the explicit statement that the rights
granted under this Decree shall, from the moment of creation, subsist with respect to
any of the following classes of works. This means that under the present state of the
law, the copyright for a work is acquired by an intellectual creator from the moment of
creation even in the absence of registration and deposit. As has been authoritatively
clarified:
The registration and deposit of two complete copies or reproductions of the work with
the National Library within three weeks after the first public dissemination or
performance of the work, as provided for in Section 26 (P.D. No. 49, as amended), is
not for the purpose of securing a copyright of the work, but rather to avoid the penalty
for non-compliance of the deposit of said two copies and in order to recover damages
in an infringement suit.

Manly Sportwear Manufacturing, Inc., v. Dadodette Enterprises and/or Hermes


Sports Center, G.R. No. 165306, September 20, 2005
Unilever Philippines (PRC), Inc., v, The Honorable Court of Appeals and
Procter and Gamble Philippines, Inc. G.R. No. 119280, August 10, 2006

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