You are on page 1of 22

G.R. No.

130360

August 15, 2001

WILSON
ONG
CHING
KlAN
vs.
HON. COURT OF APPEALS and LORENZO TAN, respondents.

CHUAN, petitioner,

QUISUMBING, J.:
This petition for review1 seeks to annul the decision2 dated August 27, 1997 of the Court of Appeals
which set aside the resolutions3 dated October 13 and December 15, 1993 as well as the order
dated March 1, 1994 of the Regional Trial Court of Quezon City, Branch 94.4
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 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. In his prayer for a preliminary injunction in addition to damages, he asked that Tan be
restrained from using the wrapper. He said he would post a bond to guarantee the payment of
damages resulting from the issuance of the writ of preliminary injunction.1wphi1.nt
The trial court issued a temporary restraining order on the same date the complaint was filed. Tan
filed an opposition to Ong's application for a writ of preliminary injunction with counter-application for
the issuance of a similar writ against Ong. Tan alleged that Ong was not entitled to an injunction.
According to Tan, Ong did not have a clear right over the use of the trademark Pagoda and
Lungkow vermicelli as these were registered in the name of CHINA NATIONAL CEREALS OIL AND
FOODSTUFFS IMPORT AND EXPORT CORPORATION, SHANDONG CEREALS AND OILS
BRANCH (hereafter Ceroilfood Shandong), based in Qingdao, China. Further, Tan averred that he
was the exclusive distributor in the Philippines of the Pagoda and Lungkow vermicelli and was
solely authorized to use said trademark. He added that Ong merely copied the two-dragon design
from Ceroilfood Shandong which had the Certificates of Registration issued by different countries.
He concluded that Ong's Certificate of Copyright Registration was not valid for lack of originality.
On September 30, 1993, Ong countered Tan's opposition to the issuance of the writ of preliminary
injunction.
On October 13, 1993, the could issued the writ in Ong's favor upon his filing of a P100,000.00
bond.5
Tan filed a motion to dissolve the writ of preliminary injunction, but the trial court denied it on
December 15, 1993.6 The motion for reconsideration was also denied on March 1, 1994.

Tan elevated the case to the Court of Appeals via a special civil action for certiorari with a prayer for
the issuance of a TRO and/or writ of preliminary injunction. Ong filed an opposition to Tan's prayer
for an issuance of TRO and/or writ of preliminary injunction on the ground that the trial court did not
commit a grave abuse of discretion in issuing the writ in his favor.
After oral argument, the Court of Appeals rendered a decision on August 8, 1994, setting aside the
trial court's order. It decreed:
WHEREFORE, in the petition is GIVEN, DUE COURSE, and, GRANTED. The order
dated October 13, 1993 and related orders, as well as the writ of preliminary injunction
issued by the respondent court, are SET ASIDE as issued with grave abuse of discretion.
No costs.
SO ORDERED.7
Ong filed a motion for reconsideration and on January 3, 1995, the Court of Appeals modified its
August 8, 1994 order as follows:
WHEREFORE the phrase "the order dated October 13, 1993 and related orders, as well
as the writ of preliminary injunction issued by the respondent court, are SET ASIDE as
issued with grave abuse of discretion" is hereby deleted in our resolution dated 08 August
1994. In all other respects, said resolution must be maintained.
However, let a writ of preliminary injunction be issued enjoining the herein respondents
and any and all persons acting for and in their behalf from enforcing and/or implementing
the Writ of Preliminary Injunction issued on October 15, 1993 pursuant to the Resolution
dated October 13, 1993 of the PUBLIC RESPONDENT in Civil Case No. Q-93-17628
entitled "WILSON ONG CHING KIAN CHUAN, ETC. vs. LORENZO TAN, ETC." upon
petitioner's filing of a bond of P200,000.00.
The Branch Clerk of Court of the RTC, Branch 94, Quezon City is directed to elevate the
records of Civil Case No. 293-17128 within TEN (10) DAYS from notice.
The parties are given THIRTY (30) DAYS from notice to file their memorandum or any
pertinent manifestation on the matter, after which the case shall be considered submitted
for decision.
SO ORDERED.8
Pursuant to the Court of Appeals' resolution on January 16, 1996, the parties submitted their
memoranda. On August 27, 1997, the appellate court promulgated its decision, decreeing as
follows:
WHEREFORE, the resolutions dated October 13, 1993 and December 15, 1993 as well
as the order dated March 1, 1994 - all in Civil Case No. Q-93-17628 are hereby SET
ASIDE and our injunction heretofore issued made permanent.

IT IS SO ORDERED.9
On October 17, 1997, Ong filed the instant petition for review, claiming that the Court of Appeals
committed grave and serious errors tantamount to acting with grave abuse of discretion and/or
acting without or in excess of its jurisdiction:
I. ...WHEN IT ISSUED A PERMANENT PRELIMINARY INJUNCTION IN FAVOR OF THE
PRIVATE RESPONDENT WHEN THE LATTER'S RIGHT TO SUCH A RELIEF IS NOT
CLEAR, DOUBTFUL AND HAS NO LEGAL OR FACTUAL BASIS.
A. CERTIFICATE OF COPYRIGHT REGISTRATION JUSTIFY ISSUANCE OF
WRIT OF PRELIMINARY INJUNCTION UNDER P.D. NO. 49.
B. ISSUANCE OF PRELIMINARY INJUNCTION MUST BE BASED ON CLEAR
AND UNMISTAKABLE RIGHT WHICH PETITIONER HAD AND WHICH RIGHT
WAS INVADED BY THE PRIVATE RESPONDENT.
C. COURT OF APPEALS' DECISION OF AUGUST 8, 1994 AND ITS
RESOLUTION OF JANUARY 3, 1995 RESULTS IN CONFUSION.
II. ...BY 'INTERFERING' WITH THE JUDICIAL DISCRETION OF THE TRIAL COURT.
A. RESPONDENT COURT OF APPEALS' INTERFERENCE WITH THE
DISCRETION OF TRIAL COURT CONSTITUTES GRAVE ABUSE OF
DISCRETION.
III. ...BY ISSUING A WRIT OF PRELIMINARY INJUNCTION IN FAVOR OF THE
PRIVATE RESPONDENT AND DISREGARDING THE WRIT OF PRELIMINARY
INJUNCTION ISSUED BY THE TRIAL COURT WHOM (SIC), UNDER THE JANUARY
13, 1995 RESOLUTION OF RESPONDENT COURT OF APPEALS, WAS JUDICIALLY
HELD NOT TO HAVE COMMITTED ANY GRAVE ABUSE OF DISCRETION IN THE
ISSUANCE OF THE OCTOBER 13, 1993 AND 'RELATED ORDERS'.
A. ISSUANCE OF WRIT OF PRELIMINARY INJUNCTION ADDRESSED TO
THE SOUND DISCRETION OF THE TRIAL COURT.
IV. ...WHEN IT MADE ITS OWN FINDINGS AND CONCLUSIONS, PRE-EMPTING THE
TRIAL COURT AND PRE-JUDGING THE CASE, THUS LEAVING THE TRIAL COURT
WITH NOTHING TO RULE UPON.
"A. COURT OF APPEALS PREJUDGED THE CASE REMANDED TO THE
TRIAL COURT
The issues for our determination are: Was the issuance of the writ of preliminary injunction proper?
Was there grave abuse of discretion committed by the Court of Appeals when it set aside the order
of the trial court, then issued a judgment touching on the merits?

Petitioner avers that the CA erred in issuing a preliminary injunction in private respondent's favor.
He says, firstly, that he is more entitled to it. He states that as holder of the Certificate of Copyright
Registration of the twin-dragon design, he has the protection of P.D. No. 49. 10 Said law allows an
injunction in case of infringement. Petitioner asserts that private respondent has no registered
copyright and merely relies on the trademark of his principal abroad, which insofar as Philippine
laws is concerned, cannot prevail over petitioner's copyright.
Private respondent, for his part, avers that petitioner has no "clear right" over the use of the
copyrighted wrapper since the PAGODA trademark and label were first adopted and used and have
been duly registered by Ceroilfood Shandong not only in China but in nearly 20 countries and
regions worldwide. Petitioner was not the original creator of the label, but merely copied the design
of Ceroilfood Shandong. Private respondent presented copies of the certificates of copyright
registration in the name of Ceroilfood Shandong issued by at least twenty countries and regions
worldwide which although unauthenticated are, according to him, sufficient to provide a sampling of
the evidence needed in the determination of the grant of preliminary injunction. 11 Private respondent
alleges, that the trademark PAGODA BRAND was registered in China on October 31, 1979 12 while
the trademark LUNGKOW VERMICELLI WITH TWO-DRAGON DEVICE was registered on August
15, 1985.13
To resolve this controversy, we have to return to basics. A 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.14 The grant of preliminary
injunction in a case rests on the sound discretion of the court with the caveat that it should be made
with extreme caution.15 Its grant depends chiefly on the extent of doubt on the validity of the
copyright, existence of infringement, and the damages sustained by such infringement. 16 In our
view, the copies of the certificates of copyright registered in the name of Ceroilfood Shandong
sufficiently raise reasonable doubt. With such a doubt preliminary injunction is
unavailing.17 In Medina vs. City Sheriff, Manila, 276 SCRA 133, 139 (1997), where the complainant's
title was disputed, we held that injunction was not proper.
Petitioner Ong argues that the Court of Appeals erred and contradicted itself in its January 3, 1995
Resolution, where it deleted the phrase "the order dated October 13, 1993 and related orders, as
well as the writ of preliminary injunction issued by the respondent court, are SET ASIDE as issued
with grave abuse of discretion" in its August 8, 1994 decision, and at the same time issued a writ of
preliminary injunction in Tan's favor.
Ong's claim (that the Court of Appeals In deleting the aforequoted phrase in the August 8, 1994
decision abandoned its earlier finding of grave abuse of discretion on the part of the trial court),
however, is without logical basis. The appellate court merely restated In its own words the issue
raised in the petition: from a) whether the RTC committed grave abuse of discretion, to b) whether
Tan was entitled to an injunctive relief. Then it clarified that the relief sought is a prohibition against
Ong and his agents from enforcing the writ of preliminary injunction. Properly understood, an order
enjoining the enforcement of a writ of preliminary injunction issued by the RTC in a certiorari
proceeding under Rule 65 of the Rules of Court effectively, sets aside the RTC order for being
issued with grave abuse of discretion.
To be entitled to an injunctive writ, petitioner must show, inter alia, the existence of a clear and
unmistakable right and an urgent and paramount necessity for the writ to prevent serious
damage.18 From the above discussion, we find that petitioner's right has not been clearly and

unmistakably demonstrated. That right is what is in dispute and has yet to be determined.
In Developers Group of Companies, Inc. vs. Court of Appeals, 219 SCRA 715, 722-723 (1993), we
held that in the absence of proof of a legal right and the injury sustained by the plaintiff, an order of
the trial court granting the issuance of an injunctive writ will be set aside, for having been issued
with grave abuse of discretion. Conformably, there was no abuse of discretion by the Court of
Appeals when it issued its own order to restrain the enforcement of the preliminary injunction issued
by the trial court.
Finally, we note that the complaint initially filed with the RTC was for infringement of copyright. The
trial court's resolution subject of Tan's petition under Rule 65 before the CA concerns the
correctness of the grant of the writ of preliminary injunction. The only issue brought before the CA
involved the grave abuse of discretion allegedly committed by the trial court in granting the writ of
preliminary injunction. The Court of Appeals in declaring that the wrapper of petitioner is a copy of
Ceroilfood Shandong's wrapper went beyond that issue touched on the merits of the infringement
case, which remains to be decided by the trial court. 19 In our view, it was premature for the Court of
Appeals to declare that the design of petitioner's wrapper is a copy of the wrapper allegedly
registered by Ceroilfood Shandong. That matter remains for decision after appropriate proceedings
at the trial court.
WHEREFORE, 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. Let the records of this case be REMANDED to said trial court promptly.
No pronouncement as to costs.
SO ORDERED
G.R. No. 132604

March 6, 2002

VENANCIO SAMBAR, doing business under the name and style of CVS Garment
Enterprises, petitioner,
vs.
LEVI STRAUSS & CO., and LEVI STRAUSS (PHIL.), INC., respondents.
DECISION
QUISUMBING, J.:
This petition for review on certiorari prays for the reversal of the decision dated January 30, 1998, of
the Court of Appeals in CA-G.R. CV No. 51553. That decision affirmed the decision in Civil Case
No. 88-2220 of the Regional Trial Court, Branch 66, Makati City, making permanent the writ of
preliminary injunction, ordering CVS Garment and Industrial Company (CVSGIC) and petitioner
Venancio Sambar to pay private respondents jointly and solidarily the sum of P50,000 as temperate
and nominal damages, P10,000 as exemplary damages, and P25,000 as attorneys fees and
litigation costs, and ordering the Director of the National Library to cancel Copyright Registration
No. 1-1998 in the name of Venancio Sambar.

The facts are as follows:


On September 28, 1987, private respondents, through a letter from their legal officer, demanded
that CVS Garment Enterprises (CVSGE) desist from using their stitched arcuate design on the
Europress jeans which CVSGE advertised in the Manila Bulletin.
Atty. Benjamin Gruba, counsel of CVSGE, replied that the arcuate design on the back pockets of
Europress jeans was different from the design on the back pockets of Levis jeans. He further
asserted that his client had a copyright on the design it was using.
Thereafter, private respondents filed a complaint against Sambar, doing business under the name
and style of CVSGE. Private respondents also impleaded the Director of the National Library.
Summons was sent to Sambar in his business address at 161-B Iriga corner Retiro, La Loma,
Quezon City.
Atty. Gruba claimed that he erroneously received the original summons as he mistook it as
addressed to his client, CVSGIC. He returned the summons and the pleadings and manifested in
court that CVSGE, which was formerly doing business in the premises, already stopped operation
and CVSGIC took over CVSGEs occupation of the premises. He also claimed he did not know the
whereabouts of Sambar, the alleged owner of CVSGE.
Thereafter, private respondents amended their complaint to include CVSGIC. When private
respondents learned the whereabouts of Sambar and CVSGE, the case was revived.
Private respondents alleged in their complaint that Levi Strauss and Co. (LS&Co.), an
internationally known clothing manufacturer, owns the arcuate design trademark which was
registered under U.S. Trademark Registration No. 404, 248 on November 16, 1943, and in the
Principal Register of trademarks with the Philippine Patent Office under Certificate of Registration
No. 20240 issued on October 8, 1973; that through a Trademark Technical Data and Technical
Assistance Agreement with Levi Strauss (Phil.) Inc. (LSPI) in 1972, LS&Co. granted LSPI a nonexclusive license to use the arcuate trademark in its manufacture and sale of Levis pants, jackets
and shirts in the Philippines; that in 1983, LS&Co. also appointed LSPI as its agent and attorney-infact to protect its trademark in the Philippines; and that sometime in 1987, CVSGIC and Venancio
Sambar, without the consent and authority of private respondents and in infringement and unfair
competition, sold and advertised, and despite demands to cease and desist, continued to
manufacture, sell and advertise denim pants under the brand name "Europress" with back pockets
bearing a design similar to the arcuate trademark of private respondents, thereby causing confusion
on the buying public, prejudicial to private respondents goodwill and property right.
In its answer, CVSGIC admitted it manufactured, sold and advertised and was still manufacturing
and selling denim pants under the brand name of "Europress", bearing a back pocket design of two
double arcs meeting in the middle. However, it denied that there was infringement or unfair
competition because the display rooms of department stores where Levis and Europress jeans
were sold, were distinctively segregated by billboards and other modes of advertisement. CVSGIC
avers that the public would not be confused on the ownership of such known trademark as Levis,
Jag, Europress, etc.. Also, CVSGIC claimed that it had its own original arcuate design, as
evidenced by Copyright Registration No. 1-1998, which was very different and distinct from Levis
design. CVSGIC prayed for actual, moral and exemplary damages by way of counterclaim.

Petitioner Venancio Sambar filed a separate answer. He denied he was connected with CVSGIC.
He admitted that Copyright Registration No. 1-1998 was issued to him, but he denied using it. He
also said he did not authorize anyone to use the copyrighted design. He counterclaimed for moral
and exemplary damages and payment of attorneys fees.
After hearing, the trial court issued a writ of preliminary injunction enjoining CVSGIC and petitioner
from manufacturing, advertising and selling pants with the arcuate design on their back pockets.
CVSGIC and petitioner did not appear during the October 13 and 27, 1993 hearings, when they
were to present evidence. Consequently, the trial court ruled that they waived their right to present
evidence.
On May 3, 1995, the trial court rendered its decision. The dispositive portion reads:
IN VIEW OF THE FOREGOING, judgment is hereby rendered:
a) making the writ of preliminary injunction permanent;
b) ordering the defendants CVS Garment and Industrial Company and Venancio Sambar
to pay the plaintiffs jointly and solidarily the sum of P50,000.00 as temperate and nominal
damages, the sum of P10,000.00 as exemplary damages, and the sum of P25,000.00 as
attorneys fees and litigation expenses and to pay the costs.
SO ORDERED.1
Private respondents moved for a reconsideration praying for the cancellation of petitioners
copyright registration. The trial court granted reconsideration in its July 14, 1995 order, thus:
IN VIEW OF THE FOREGOING, judgment is hereby rendered:
a) making the writ of preliminary injunction permanent;
b) ordering the defendants CVS Garment and Industrial Company and Venancio Sambar
to pay the plaintiffs jointly and solidarily the sum of P50,000.00 as temperate and nominal
damages, the sum of P10,000.00 as exemplary damages, and the sum of P25,000.00 as
attorneys fees and litigation expenses and to pay the costs;
c) ordering the Director of the National Library to cancel the Copyright Registration No. 11998 issued in the name of Venancio Sambar.2
Petitioner appealed to the Court of Appeals which on January 30, 1998 decided in favor of private
respondents as follows:
WHEREFORE, the judgment appealed from is AFFIRMED in toto.
SO ORDERED.3

In this instant petition, petitioner avers that the Court of Appeals erred in:
I. ...RULING THAT THERE WAS AN INFRINGEMENT OF RESPONDENTS ARCUATE
MARK.
II. ...RULING THAT PETITIONER IS JOINTLY AND SOLIDARILY LIABLE WITH CVS
GARMENTS INDUSTRIAL CORPORATION FOR INFRINGEMENT OF RESPONDENTS
ARCUATE MARK.
III. ...IN ORDERING, THERE BEING NO INFRINGEMENT OR UNFAIR COMPETITION,
THE AWARD OF DAMAGES AND CANCELLATION OF COPYRIGHT REGISTRATION
NO. 1-1998 ISSUED IN THE NAME OF PETITIONER.4

On the second issue, petitioner claims that private respondents did not show that he was connected
with CVSGIC, nor did they prove his specific acts of infringement to make him liable for damages.
Again, this is a factual matter and factual findings of the trial court, concurred in by the Court of
Appeals, are final and binding on this Court. 6Both the courts below found that petitioner had a
copyright over Europress arcuate design and that he consented to the use of said design by
CVSGIC. We are bound by this finding, especially in the absence of a showing that it was tainted
with arbitrariness or palpable error.7 It must be stressed that it was immaterial whether or not
petitioner was connected with CVSGIC. What is relevant is that petitioner had a copyright over the
design and that he allowed the use of the same by CVSGIC.
Petitioner also contends that the Court of Appeals erred when it said that he had the burden to
prove that he was not connected with CVSGIC and that he did not authorize anyone to use his
copyrighted design. According to petitioner, these are important elements of private respondents
cause of action against him, hence, private respondents had the ultimate burden of proof.

Briefly, we are asked to resolve the following issues:


1. Did petitioner infringe on private respondents arcuate design?
2. Must we hold petitioner solidarily liable with CVS Garments Industrial Corporation?
3. Are private respondents entitled to nominal, temperate and exemplary damages and
cancellation of petitioners copyright?
On the first issue, petitioner claims that he did not infringe on private respondents arcuate design
because there was no colorable imitation which deceived or confused the public. He cites Emerald
Garment Manufacturing Corporation vs. Court of Appeals, G.R. No. 100098, 251 SCRA 600 (1995),
as authority. He disagreed with the Court of Appeals that there were confusing similarities between
Levis and Europress arcuate designs, despite the trial courts observation of differences in them.
Petitioner maintains that although the backpocket designs had similarities, the public was not
confused because Levis jeans had other marks not found in Europress jeans. Further, he says
Levis long history and popularity made its trademark easily identifiable by the public.
In its comment, private respondents aver that the Court of Appeals did not err in ruling that there
was infringement in this case. The backpocket design of Europress jeans, a double arc intersecting
in the middle was the same as Levis mark, also a double arc intersecting at the center. Although
the trial court found differences in the two designs, these differences were not noticeable. Further,
private respondents said, infringement of trademark did not require exact similarity. Colorable
imitation enough to cause confusion among the public, was sufficient for a trademark to be
infringed. Private respondents explained that in a market research they conducted with 600
respondents, the result showed that the public was confused by Europress trademark vis the Levis
trademark.
We find that the first issue raised by petitioner is factual. The basic rule is that factual questions are
beyond the province of this Court in a petition for review. Although there are exceptions to this rule,
this case is not one of them.5 Hence, we find no reason to disturb the findings of the Court of
Appeals that Europress use of the arcuate design was an infringement of the Levis design.

Pertinent is Section 1, Rule 131 of the Rules of Court 8 which provides that the burden of proof is the
duty of a party to prove the truth of his claim or defense, or any fact in issue by the amount of
evidence required by law. In civil cases, the burden of proof may be on either the plaintiff or the
defendant. It is on the latter, if in his answer he alleges an affirmative defense, which is not a denial
of an essential ingredient in the plaintiffs cause of action, but is one which, if established, will be a
good defense i.e., an "avoidance" of the claim, which prima facie, the plaintiff already has
because of the defendants own admissions in the pleadings. 9
Petitioners defense in this case was an affirmative defense.1wphi1 He did not deny that private
respondents owned the arcuate trademark nor that CVSGIC used on its products a similar arcuate
design. What he averred was that although he owned the copyright on the Europress arcuate
design, he did not allow CVSGIC to use it. He also said he was not connected with CVSGIC. These
were not alleged by private respondents in their pleadings, and petitioner therefore had the burden
to prove these.
Lastly, are private respondents entitled to nominal, temperate and exemplary damages and
cancellation of petitioners copyright?
Petitioner insists that he had not infringed on the arcuate trademark, hence, there was no basis for
nominal and temperate damages. Also, an award of nominal damages precludes an award of
temperate damages. He citesVentanilla vs. Centeno, G.R. No. L-14333, 1 SCRA 215 (1961) on this.
Thus, he contends, assuming arguendothat there was infringement, the Court of Appeals still erred
in awarding both nominal and temperate damages.
Petitioner likewise said that the grant of exemplary damages was inconsistent with the trial courts
finding that the design of Europress jeans was not similar to Levis design and that no pecuniary
loss was suffered by respondents to entitle them to such damages.
Lastly, petitioner maintains that as Europress arcuate design is not a copy of that of Levis, citing
the trial courts findings that although there are similarities, there are also differences in the two
designs, cancellation of his copyright was not justified.

On this matter, private respondents assert that the lower courts found that there was infringement
and Levis was entitled to damages based on Sections 22 and 23 of RA No. 166 otherwise known
as the Trade Mark Law,10 as amended, which was the law then governing. Said sections define
infringement and prescribe the remedies therefor. Further, private respondents aver it was
misleading for petitioner to claim that the trial court ruled that private respondents did not suffer
pecuniary loss, suggesting that the award of damages was improper. According to the private
respondents, the trial court did not make any such ruling. It simply stated that there was no
evidence that Levis had suffered decline in its sales because of the use of the arcuate design by
Europress jeans. They offer that while there may be no direct proof that they suffered a decline in
sales, damages may still be measured based on a reasonable percentage of the gross sales of the
respondents, pursuant to Section 23 of the Trademark law.11
Finally, regarding the cancellation of petitioners copyright, private respondents deny that the trial
court ruled that the arcuate design of Europress jeans was not the same as Levis arcuate design
jeans. On the contrary, the trial court expressly ruled that there was similarity. The cancellation of
petitioners copyright was justified because petitioners copyright can not prevail over respondents
registration in the Principal Register of Bureau of Patents, Trademarks, and Technology Transfer.
According to private respondents, the essence of copyright registration is originality and a copied
design is inherently non-copyrightable. They insist that registration does not confer originality upon
a copycat version of a prior design.
From the foregoing discussion, it is clear that the matters raised by petitioner in relation to the last
issue are purely factual, except the matter of nominal and temperate damages. Petitioner claims
that damages are not due private respondents and his copyright should not be cancelled because
he had not infringed on Levis trademark. Both the trial court and the Court of Appeals found there
was infringement. Thus, the award of damages and cancellation of petitioners copyright are
appropriate.12 Award of damages is clearly provided in Section 23, 13while cancellation of petitioners
copyright finds basis on the fact that the design was a mere copy of that of private respondents
trademark.1wphi1 To be entitled to copyright, the thing being copyrighted must be original, created
by the author through his own skill, labor and judgment, without directly copying or evasively
imitating the work of another.14
However, we agree with petitioner that it was error for the Court of Appeals to affirm the award of
nominal damages combined with temperate damages 15 by the Regional Trial Court of Makati. What
respondents are entitled to is an award for temperate damages, not nominal damages. For although
the exact amount of damage or loss can not be determined with reasonable certainty, the fact that
there was infringement means they suffered losses for which they are entitled to moderate
damages.16 We find that the award of P50,000.00 as temperate damages fair and reasonable,
considering the circumstances herein as well as the global coverage and reputation of private
respondents Levi Strauss & Company and Levi Strauss (Phil.), Inc.
WHEREFORE, the decision dated January 30, 1998, of the Court of Appeals, in CA-G.R. CV No.
51553 AFFIRMING the judgment of the Regional Trial Court of Makati, Branch 66, dated July 14,
1995, is hereby MODIFIED so that nominal damages are deleted but the amount of P50,000 is
hereby awarded only as TEMPERATE DAMAGES. In all other respects, said judgment is hereby
AFFIRMED, to wit:
a) the writ of preliminary injunction is made permanent;

b) the defendants CVS Garment and Industrial Company and Venancio Sambar are
ordered also to pay the plaintiffs jointly and solidarily the sum of P10,000.00 as exemplary
damages, and the sum of P25,000.00 as attorneys fees and litigation expenses, and to
pay the costs; and
c) the Director of the National Library is ordered to cancel the Copyright Registration No.
1-1998 issued in the name of Venancio Sambar.
SO ORDERED.

G.R. No. 119280 August 10, 2006


UNILEVER
PHILIPPINES
(PRC),
INC., Petitioner,
vs.
THE HONORABLE COURT OF APPEALS and PROCTER AND GAMBLE PHILIPPINES,
INC., Respondents.
DECISION
CORONA, J.:
In this petition for review under Rule 45 of the Rules of Court, petitioner assails the February 24,
1995 decision 1of the Court of Appeals (CA) in CA-G.R. SP No. 35242 entitled "Unilever Philippines
(PRC), Inc. v. Honorable Fernando V. Gorospe, Jr. and Procter and Gamble Philippines, Inc.
(P&GP)" which affirmed the issuance by the court a quo of a writ of preliminary injunction against it.
The writ enjoined petitioner from using and airing, until further orders of the court, certain television
commercials for its laundry products claimed to be identical or similar to its "double tug" or "tac-tac"
key visual. 2
Petitioner alleges that the writ of preliminary injunction was issued by the trial court (and affirmed by
the CA) without any evidence of private respondents clear and unmistakable right to the writ.
Petitioner further contends that the preliminary injunction issued against it already disposed of the
main case without trial, thus denying petitioner of any opportunity to present evidence on its behalf.
The antecedents show that 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:
1.5. 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.
1.6. 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."

xxxxxxxxx
1.7. 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."
1.8. P&G has used the same distinctive "tac-tac" key visual to local consumers in the Philippines.
xxxxxxxxx
1.10. 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.

PUBLIC RESPONDENT IN ISSUING THE VOID ORDER DATED SEPTEMBER 16, 1994, HAD, IN
EFFECT, ALREADY PREJUDGED THE MERITS OF THE MAIN CASE.
PUBLIC RESPONDENT HAD ISSUED THE VOID ORDER ACCORDING RELIEF TO A NONPARTY IN CIVIL CASE NO. 94-2434 WITHOUT JURISDICTION.
PUBLIC RESPONDENT IN ISSUING THE VOID ORDER HAD DEPRIVED PETITIONER OF
SUBSTANTIVE AND PROCEDURAL DUE PROCESS; PUBLIC RESPONDENT HAD
FORECLOSED PETITIONERS RIGHT AND THE OPPORTUNITY TO CROSS-EXAMINE
PROCTERS WITNESSES ABAD AND HERBOSA. 4
On February 24, 1995, 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.
After a careful perusal of the records, we agree with the CA and affirm its decision in toto:

xxxxxxxxx
1.14. 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.
1.15. 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. 3
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.
During the hearing on September 9, 1994, Judge Gorospe ordered petitioner to submit a surrejoinder. P&GP received Unilevers rejoinder to reply on September 13, 1994. The following day,
on September 14, 1994, P&GP filed its sur-reply to Unilevers rejoinder.
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.
On September 21, 1994, petitioner appealed to the CA assigning the following errors allegedly
committed by the court a quo, to wit:
PUBLIC RESPONDENT HAD ACTED WITHOUT OR IN EXCESS OF JURISDICTION AND WITH
GRAVE ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN ISSUING THE
WRIT OF PRELIMINARY INJUNCTION IN VIOLATION OF THE RULES ON EVIDENCE AND
PROCEDURE, PARTICULARLY OF SEC. 3 (a), RULE 58 OF THE REVISED RULES OF COURT
AND OF THE PREVAILING JURISPRUDENCE.

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.
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.
The second ground is likewise not well-taken. As adverted to earlier, the provisional remedy of
preliminary injunction will not issue unless it is shown in the verified complaint that plaintiff is
probably entitled to the relief demanded, which consists in whole or in part in restraining the
commission or continuance of the acts complained of. In view of such requirement, the court has to
make a tentative determination if the right sought to be protected exists and whether the act against
which the writ is to be directed is violative of such right. Certainly, the courts determination as to the
propriety of issuing the writ cannot be taken as a prejudgment of the merits of the case because it is
tentative in nature and the writ may be dissolved during or after the trial if the court finds that plaintiff
was not entitled to it.
xxxxxxxxx

Obviously, the determination made by the court a quo was only for purposes of preliminary
injunction, without passing upon the merits of the case, which cannot be done until after a full-blown
hearing is conducted.
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).
Finally, We find the procedure adopted by the court a quo to be in order.
The record clearly shows that respondent Judge followed the (procedure provided for in Section 5,
Rule 58, as amended by BP 224, and Paragraph A(8) of the Interim Rules). In fact, the court a
quo set the incident for hearing on September 2, 1994, at which date petitioner was ordered to
show cause why the writ should not be issued. Petitioner filed an Opposition to the application for
preliminary injunction. The same incident was again set for hearing on September 9, 1994, during
which the parties made some manifestations in support of their respective positions. Subsequent to
such hearing petitioner filed a Reply to P&GPs Rejoinder to its Opposition. Under the foregoing
circumstances, it is absurd to even suggest that petitioner was not given its day in court in the
matter of the issuance of the preliminary injunctive relief.
xxxxxxxxx
There was of course extreme urgency for the court a quo to act on plaintiffs application for
preliminary injunction. The airing of TV commercials is necessarily of limited duration only. Without
such temporary relief, any permanent injunction against the infringing TV advertisements of which
P&GP may possibly succeed in getting after the main case is finally adjudicated could be illusory if
by then such advertisements are no longer used or aired by petitioner. It is therefore not difficult to
perceive the possible irreparable damage which P&GP may suffer if respondent Judge did not act
promptly on its application for preliminary injunction. 5
Preliminary injunction is a provisional remedy intended to provide protection to parties for the
preservation of their rights or interests during the pendency of the principal action. 6 Thus, Section1,
Rule 58 of the Rules of Court provides:
Section 1. Preliminary injunction defined; classes. A preliminary injunction is an order granted at
any stage of an action or proceeding prior to the judgment or final order, requiring a party or a court,
agency or a person to refrain from a particular act or acts. It may also require the performance of a
particular act or acts, in which case it shall be known as a preliminary mandatory injunction.
Injunction is resorted to only when there is a pressing necessity to avoid injurious consequences
which cannot be remedied under any standard compensation. 7 As correctly ruled by the CA, there
was an extreme urgency to grant the preliminary injunction prayed for by P&GP considering that TV
commercials are aired for a limited period of time only. In fact, this Court takes note of the fact that
the TV commercial in issue the Kite TV advertisement is no longer aired today, more than 10
years after the injunction was granted on September 16, 1994.

The sole objective of a writ of preliminary injunction is to preserve the status quo until the merits of
the case can be heard fully. 8 A writ of preliminary injunction is generally based solely on initial and
incomplete evidence. 9Thus, it was impossible for the court a quo to fully dispose of the case, as
claimed by petitioner, without all the evidence needed for the full resolution of the same. To date,
the main case still has to be resolved by the trial court.
The issuance of a preliminary injunction rests entirely on the discretion of the court and is generally
not interfered with except in cases of manifest abuse. 10 There was no such abuse in the case at
bar, especially because petitioner was given all the opportunity to oppose the application for
injunction. The fact was, it failed to convince the court why the injunction should not be issued.
Thus, in Santos v. Court of Appeals, 11 we held that no grave abuse of discretion can be attributed to
a judge or body issuing a writ of preliminary injunction where a party has not been deprived of its
day in court as it was heard and it exhaustively presented all its arguments and defenses
WHEREFORE, the petition is hereby DENIED.
Costs against petitioner.
SO ORDERED.

MENDOZA, J.:
This is a petition for certiorari. Petitioners seek to annul the resolution of the Department of Justice,
dated August 12, 1992, in Criminal Case No. Q-92-27854, entitled "Gabriel Zosa, et al. v. City
Prosecutor of Quezon City and Francisco Joaquin, Jr.," and its resolution, dated December 3, 1992,
denying petitioner Joaquin's motion for reconsideration.
Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922,
dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977.
On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate of
copyright specifying the show's format and style of presentation.
On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr., president of BJPI,
saw on RPN Channel 9 an episode of It's a Date, which was produced by IXL Productions, Inc.
(IXL). On July 18, 1991, he wrote a letter to private respondent Gabriel M. Zosa, president and
general manager of IXL, informing Zosa that BJPI had a copyright to Rhoda and Me and demanding
that IXL discontinue airing It's a Date.
In a letter, dated July 19, 1991, private respondent Zosa apologized to petitioner Joaquin and
requested a meeting to discuss a possible settlement. IXL, however, continued airing It's a Date,
prompting petitioner Joaquin to send a second letter on July 25, 1991 in which he reiterated his
demand and warned that, if IXL did not comply, he would endorse the matter to his attorneys for
proper legal action.
Meanwhile, private respondent Zosa sought to register IXL's copyright to the first episode of It's a
Date for which it was issued by the National Library a certificate of copyright August 14, 1991.
Upon complaint of petitioners, an information for violation of P.D. No. 49 was filed against private
respondent Zosa together with certain officers of RPN Channel 9, namely, William Esposo, Felipe
Medina, and Casey Francisco, in the Regional Trial Court of Quezon City where it was docketed as
Criminal Case No. 92-27854 and assigned to Branch 104 thereof. However, private respondent
Zosa sought a review of the resolution of the Assistant City Prosecutor before the Department of
Justice.
On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the Assistant City
Prosecutor's findings and directed him to move for the dismissal of the case against private
respondents. 1
Petitioner Joaquin filed a motion for reconsideration, but his motion denied by respondent Secretary
of Justice on December 3, 1992. Hence, this petition. Petitioners contend that:

G.R. No. 108946 January 28, 1999


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

1. The public respondent gravely abused his discretion


amounting to lack of jurisdiction when he invoked nonpresentation of the master tape as being fatal to the
existence of probable cause to prove infringement, despite
the fact that private respondents never raised the same as
a controverted issue.

2. The public respondent gravely abused his discretion


amounting to lack of jurisdiction when he arrogated unto
himself the determination of what is copyrightable an
issue which is exclusively within the jurisdiction of the
regional trial court to assess in a proper proceeding.
Both public and private 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.
Non-Assignment of Error.
Petitioners claim that their failure to submit the copyrighted master videotape of the television show
Rhoda and Me was not raised in issue by private respondents during the preliminary investigation
and, therefore, it was error for the Secretary of Justice to reverse the investigating prosecutor's
finding of probable cause on this ground.
A preliminary investigation falls under the authority of the state prosecutor who is given by law the
power
to
direct
and
control
criminal
actions. 2 He is, however, subject to the control of the Secretary of Justice. Thus, Rule 112, 4 of the
Revised Rules of Criminal Procedure, provides:
Sec. 4. Duty of investigating fiscal. If the investigating fiscal finds cause to
hold the respondent for trial, he shall prepare the resolution and corresponding
information. He shall certify under oath that he, or as shown by the record, an
authorized officer, has personally examined the complainant and his witnesses,
that there is reasonable ground to believe that a crime has been committed and
that the accused is probably guilty thereof, that the accused was informed of
the complaint and of the evidence submitted against him and that he was given
an opportunity to submit controverting evidence. Otherwise, he shall
recommend dismissal of the complaint.
In either case, he shall forward the records of the case to the provincial or city
fiscal or chief state prosecutor within five (5) days from his resolution. The latter
shall take appropriate action thereon ten (10) days from receipt thereof,
immediately informing the parties of said action.
No complaint or information may be filed or dismissed by an investigating fiscal
without the prior written authority or approval of the provincial or city fiscal or
chief state prosecutor.
Where the investigating assistant fiscal recommends the dismissal of the case
but his findings are reversed by the provincial or city fiscal or chief state
prosecutor on the ground that a probable cause exists, the latter may, by
himself, file the corresponding information against the respondent or direct any
other assistant fiscal or state prosecutor to do so, without conducting another
preliminary investigation.
If upon petition by a proper party, the Secretary of Justice reverses the
resolution of the provincial or city fiscal or chief state prosecutor, he shall direct
the fiscal concerned to file the corresponding information without conducting

another preliminary investigation or to dismiss or move for dismissal of the


complaint or information.
In reviewing resolutions of prosecutors, the Secretary of Justice is not precluded from considering
errors, although unassigned, for the purpose of determining whether there is probable cause for
filing cases in court. He must make his own finding, of probable cause and is not confined to the
issues raised by the parties during preliminary investigation. Moreover, his findings are not subject
to review unless shown to have been made with grave abuse.
Opinion of the Secretary of Justice
Petitioners contend, however, that the determination of the question whether the format or
mechanics of a show is entitled to copyright protection is for the court, and not the Secretary of
Justice, to make. They assail the following portion of the resolution of the respondent Secretary of
Justice:
[T]he essence of copyright infringement is the copying, in whole or in part, of
copyrightable materials as defined and enumerated in Section 2 of PD. No.
49. Apart from the manner in which it is actually expressed, however, the idea
of a dating game show is, in the opinion of this Office, a non-copyrightable
material. Ideas, concepts, formats, or schemes in their abstract form clearly do
not fall within the class of works or materials susceptible of copyright
registration as provided in PD. No. 49.3 (Emphasis added.)
It is indeed true that the question whether the format or mechanics of petitioners television show is
entitled to copyright protection is a legal question for the court to make. This does not, however,
preclude respondent Secretary of Justice from making a preliminary determination of this question
in resolving whether there is probable cause for filing the case in court. In doing so in this case, he
did not commit any grave error.
Presentation of Master Tape
Petitioners claim that respondent Secretary of Justice gravely abused his discretion in ruling that the
master videotape should have been predented in order to determine whether there was probable
cause for copyright infringement. They contend that 20th Century Fox Film Corporation v. Court of
Appeals, 4 on which respondent Secretary of Justice relied in reversing the resolution of the
investigating prosecutor, is inapplicable to the case at bar because in the present case, the parties
presented sufficient evidence which clearly establish "linkage between the copyright show "Rhoda
and Me" and the infringing TV show "It's a Date." 5
The case of 20th Century Fox Film Corporation involved raids conducted on various videotape
outlets allegedlly selling or renting out "pirated" videotapes. The trial court found that the affidavits of
NBI agents, given in support of the application for the search warrant, were insufficient without the
master tape. Accordingly, the trial court lifted the search warrants it had previously issued against
the defendants. On petition for review, this Court sustained the action of the trial court and ruled: 6
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.
a. Unmarried participant of one gender (searcher) appears on one side of a divider, a. same
while three (3) unmarried participants of the other gender are on the other side of the
The application for search warrants was directed against video tape outlets
divider. This arrangement is done to ensure that the searcher does not see the
which allegedly were engaged in the unauthorized sale and renting out
of
searchees.
copyrighted films belonging to the petitioner pursuant to P.D. 49.
The essence of a copyright infringement is the similarity or at least substantial
similarity of the purported pirated works to the copyrighted work. Hence,b.the
Searcher asks a question to be answered by each of the searchees. The purpose is b. same
applicant must present to the court the copyrighted films to compare them to
with
determine who among the searchees is the most compatible with the searcher.
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 ofc.the
Searcher speculates on the match to the searchee.
c. same
copyrighted films cannot serve as basis for the issuance of a search warrant.

This ruling was qualified in the later case of Columbia Pictures, Inc. v. Court of
Appeals 7 in which it was held:
d. Selection is made by the use of compute (sic) methods, or by the way questions are d. Selection is based on the a
answered, or similar methods.
In fine, the supposed pronunciamento in said case regarding the necessity for
the presentation of the master tapes of the copyrighted films for the validity of
search warrants should at most be understood to merely serve as a guidepost
in determining the existence of probable cause in copyright infringement
Set 2
Set 2
cases where there is doubt as to the true nexus between the master tape and
the printed copies. An objective and careful reading of the decision in said case
could lead to no other conclusion than that said directive was hardly intended to
be a sweeping and inflexible requirement in all or similar copyright infringement
Same as above with the genders of the searcher and searchees interchanged. 9
same
cases. . . 8
In the case at bar during the preliminary investigation, petitioners and private respondents
presented written descriptions of the formats of their respective televisions shows, on the basis of
which the investigating prosecutor ruled:
As may [be] gleaned from the evidence on record, the substance of the television productions
complainant's "RHODA AND ME" and Zosa's "IT'S A DATE" is that two matches are made between
a male and a female, both single, and the two couples are treated to a night or two of dining and/or
dancing at the expense of the show. The major concepts of both shows is the same. Any difference
appear mere variations of the major concepts.
That there is an infringement on the copyright of the show "RHODA AND ME" both in content and in
the execution of the video presentation are established because respondent's "IT'S A DATE" is
practically an exact copy of complainant's "RHODA AND ME" because of substantial similarities as
follows, to wit:

Petitioners assert that the format of Rhoda and Me is a product of ingenuity and skill and is thus
entitled to copyright protection. It is their position that the presentation of a point-by-point
comparison of the formats of the two shows clearly demonstrates the nexus between the shows and
hence establishes the existence of probable cause for copyright infringement. Such being the case,
they did not have to produce the master tape.
To begin with the format of a show is not copyrightable. Section 2 of P.D. No. 49, 10 otherwise known
as the DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of work entitled to
copyright protection, to wit:
Sec. 2. The rights granted by this Decree shall, from the moment of creation,
subsist with respect to any of the following classes of works:
(A) Books, including composite and cyclopedic works, manuscripts, directories,
and gazetteers:

RHODA AND ME

"IT'S A DATE"

Set 1

Set 1

(B) Periodicals, including pamphlets and newspapers;


(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;
(D) Letters;

(E) Dramatic or dramatico-musical compositions; choreographic works and


entertainments in dumb shows, the acting form of which is fixed in writing or
otherwise;

subjects and by the persons and on terms and conditions specified in the
statute. 12
Since . . . copyright in published works is purely a statutory creation, a
copyright may be obtained only for a work falling within the statutory
enumeration or description. 13

(F) Musical compositions, with or without words;


(G) Works of drawing, painting, architecture, sculpture, engraving, lithography,
and other works of art; models or designs for works of art;

Regardless of the historical viewpoint, it is authoritatively settled in the United


States that there is no copyright except that which is both created and secured
by act of Congress . . . . . 14

(H) Reproductions of a work of art;


(I) Original ornamental designs or models for articles of manufacture, whether
or not patentable, and other works of applied art;
(J) Maps, plans, sketches, and charts;

P.D. No. 49, 2, in enumerating what are subject to copyright, refers to finished works and not to
concepts. The copyright does not extend to an idea, procedure, process, system, method of
operation, concept, principle, or discovery, regardless of the form in which it is described, explained,
illustrated, or embodied in such work. 15 Thus, the new INTELLECTUAL PROPERTY CODE OF
THE PHILIPPINES provides:
Sec. 175. Unprotected Subject Matter. Notwithstanding the provisions of
Sections 172 and 173, no protection shall extend, under this law, to any idea,
procedure, system, method or operation, concept, principle, discovery or mere
data as such, even if they are expressed, explained, illustrated or embodied in
a work; news of the day and other miscellaneous facts having the character of
mere items of press information; or any official text of a legislative,
administrative or legal nature, as well as any official translation thereof.

(K) Drawings or plastic works of a scientific or technical character;


(I) Photographic works and works produced by a process analogous to
photography lantern slides;
(M) Cinematographic works and works produced by a process analogous to
cinematography or any process for making audio-visual recordings;
(N) Computer programs;

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

(O) Prints, pictorial illustrations advertising copies, labels tags, and box wraps;
(P) Dramatizations, translations, adaptations, abridgements, arrangements and
other alterations of literary, musical or artistic works or of works of the Philippine
government as herein defined, which shall be protected as provided in Section
8 of this Decree.
(Q) Collections of literary, scholarly, or artistic works or of works referred to in
Section 9 of this Decree which by reason of the selection and arrangement of
their contents constitute intellectual creations, the same to be protected as
such in accordance with Section 8 of this Decree.

Cinematographic works and works produced by a process analogous to


cinematography or any process for making audio-visual recordings;
The copyright does not extend to the general concept or format of its dating game show.
Accordingly, by the very nature of the subject of petitioner BJPI's copyright, the
investigating prosecutor should have the opportunity to compare the videotapes of the
two shows.
Mere description by words of the general format of the two dating game shows is insufficient; the
presentation of the master videotape in evidence was indispensable to the determination of the
existence of probable cause. As aptly observed by respondent Secretary of Justice:

(R) Other literary, scholarly, scientific and artistic works.


This provision is substantially the same as 172 of the INTELLECTUAL PROPERTY CODE OF
PHILIPPINES (R.A. No. 8293). 11 The format or mechanics of a television show is not included in
the list of protected works in 2 of P.D. No. 49. For this reason, the protection afforded by the law
cannot be extended to cover them.
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 the statute. Being a statutory grant, the rights are only such as the
statute confers, and may be obtained and enjoyed only with respect to the

A television show includes more than mere words can describe because it
involves a whole spectrum of visuals and effects, video and audio, such that no
similarity or dissimilarity may be found by merely describing the general
copyright/format of both dating game shows.
WHEREFORE, the petition is hereby DISMISSED
SO ORDERED.

decision was received on October 4, 1984 (p. 80, Original


Record).
b) On October 18, 1984 as shown in the stamp mark of
the Philippine Patent Office (p. 80, Original Record) or on
the 15th and last day either for appealing or for moving for
reconsideration, petitioner-appellant filed a motion for
reconsideration.
G.R. No. 76193 November 9, 1989
UNITED
FEATURE
SYNDICATE,
vs.
MUNSINGWEAR CREATION MANUFACTURING COMPANY, respondent.

INC., petitioner,

Quasha, Asperilla, Ancheta, Pena and Nolasco for petitioner.


Jaime G. Manzano for private respondent.

PARAS, J.:
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.
The Resolution dismissing the appeal, reads as follows:
We agree with the Philippine Patent Office and respondent appellee that the
decision of the aforementioned office dated October 2, 1984 had already
become final and executory at the time the Notice of Appeal was filed.

Sadly and unexplainably for a veteran law office, said motion did not contain or
incorporate a notice of hearing.
c) Possibly realizing the fatal defect in its motion for
reconsideration, petitioner-appellant subsequently filed a
motion to set for hearing its motion for reconsideration.
This was done, however, only on October 31, 1984 (p. 162,
Original Record).
The motion for reconsideration filed on the last day, fatally failing as it did to
contain a notice of hearing, said pleading did not interrupt the period for
appealing, for the motion was nothing but a piece of scrap paper (Agricultural
and Industrial Marketing, Inc. v. Court of Appeals, 118 SCRA [1982]
492; Republic Planters Bank v. Intermediate Appellate Court, 13 SCRA [1984]
631).
This deadly and moral deficiency in the motion for reconsideration, therefore,
resulted in the decision of the Philippine Patent Office being final and executory
on October 19, 1984, the day after the motion for reconsideration was filed,
said motion having been filed on the 15th and last day for appealing.
WHEREFORE, the motion of respondent appellee is hereby granted and the
appeal dismissed.
SO ORDERED. (Rollo 42-43)

Our reasons for this conclusions are borne out by the following facts:
a) On October 2, 1984, the decision sought to be appealed
was rendered by the Philippine Patent Office and a copy
thereof was received by counsel for petitioner-appellant
on October 3, 1984 not October 9, 1984 as stated in the
Notice of Appeal. There can be no doubt about the
decision having been received by petitioner-appellant's
counsel on October 3, 1984 for this is clearly written in the
Notice of Decision (p. 61, Original Record), and in point of
fact the date of receipt cannot be October 9, 1984, as
declared in the Notice of Appeal (p. 1, Rollo), because in
the motion for reconsideration subsequently filed by
petitioner-appellant it was stated that a copy of the

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. (Petition, p. 2, Rollo, p. 8)

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, (Petition, p. 4; Rollo, p.
10 )
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 executory (Petition, Rollo, pp. 11-12).

WHETHER, ASSUMING ARGUENDO, BUT ONLY ASSUMING, THAT THE


DECISION OF THE DIRECTOR OF PATENTS IN THE CASE AT BAR HAD
ALREADY BECOME FINAL WHEN IT WAS APPEALED TO THE COURT OF
APPEALS, THE LATTER, BY REASON OF THE SUPERVENING FACTS
AFTER THE DECISION APPEALED FROM WAS RENDERED, SHOULD
HAVE HARMONIZED THE DECISION WITH LAW, THE DEMANDS OF
JUSTICE AND EQUITY.
The petitioner is impressed with merit.

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( Annex "B", Rollo p. 45)..
Hence this petition for review on certiorari.
In the resolution of April 6, 1987, the petition was given due course.
In its petition (Rollo, p. 10) and in its memorandum (Rollo, p. 97), petitioner-appellant raised the
following legal issues:
I
WHETHER THE RESPONDENT COURT OF APPEALS ACTED IN EXCESS
OF JURISDICTION AND/OR COMMITTED GRAVE ABUSE OF DISCRETION
WHEN IT BASED ITS RESOLUTION IN DISMISSING ITS APPEAL ON
STRICT TECHNICAL RULES OF PROCEDURE AS ENUNCIATED IN RULE
15 OF THE RULES OF COURT INSTEAD OF RELYING ON THE POLICY OF
THE PHILIPPINE PATENT OFFICE AS STRESSED IN RULE 169, AS
AMENDED, OF THE RULES OF PRACTICE IN TRADEMARK CASES.

Petitioner's contention that the purpose of a notice of hearing to the adverse party is to afford him
an opportunity to resist the motion, more particularly the motion for reconsideration filed by its
company is well taken. Said purpose was served when Munsingwear filed its opposition thereto on
November 20, 1984 and cured the technical defect of lack of notice of hearing complained of (Rollo,
p. 52). Otherwise stated such shortcomings of petitioner as to compliance with procedural
requirements in taking its appeal cannot be deemed sufficient to deprive it of a chance to secure a
review by this court in order to obtain substantial justice; more so where liverality accorded to the
petitioner becomes compelling because of the ostensible merit of petitioner's case (Olango v. Court
of First Instance of Misamis Oriental, 121 SCRA 338 [1983]).
Moreover, in Siguenza v. Court of Appeals, (137 SCRA 570 [1985]) the Court stressed that the right
to appeal should not be lightly disregarded by a stringent application of rules of procedure
especially where the appeal is on its face meritorious and the interest of substantial justice would be
served by permitting the appeal.
As enunciated in the case of Castro v. Court of Appeals (123 SCRA 782, [1983]) the importance and
real purpose of the remedy of appeal was stressed as follows:
An appeal is an essential part of oar judicial system. We have advised the
courts to proceed with caution so as not to deprive a party of the right to
appeal. (National Waterworks and Sewerage Authority v. Municipality of
Libmanan, 97 SCRA 138) and instructed that every party-litigant should
beafforded the amplest opportunity for the proper and just disposition of his
cause, freed from the constraints of technicalities. (A-One Feeds, Inc. v. Court
of Appeals, 100 SCRA 590).

II
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.
III

The rules of procedure are not to be applied in a very rigid and technical
sense. The rules of procedure are used only to help secure not override
substantial justice. (Gregorio v. Court of Appeals, 72 SCRA 120), therefore, we
ruled in Republic v. Court of Appeals (83 SCRA 453) that a six day delay in the
perfection of the appeal does not warrant its dismissal. And again in Ramos v.
Bagaso, 96 SCRA 395, this Court held that the delay of four (4) days in filing a
notice of appeal and a motion for extension of time to file a record on appeal
can be excused on the basis of equity.
It was further emphasized that we allowed the filing of an appeal in some cases where a stringent
application of the rules would have denied it, or when to do so would serve the demands
of substantial justice and in the exercise of our equity jurisdiction (Serrano v. Court of Appeals, 139
SCRA 179 [1085].)

In the case at bar, the petitioner's delay in filing their record on appeal should not be strictly
construed as to deprive them of the right to appeal especially since on its face the appeal appears
to be impressed with merit. (Emphasis supplied). All aforementioned cases are cited in G.R. No.
76595, Pacific Asia Overseas Shipping Corporation v. NLRC, et al., May 6, 1988.
Procedural technicality should not prevail over substantive rights of a party to appeal (NEA v. CA,
126 SCRA 394).
Moreover, a judgment of the Court of Appeals that become final by reason of the mistake of the
herein petitioner's lawyer may still be reviewed on appeal by the Supreme Court particularly where
the Supreme Court already gave due course to the petition for review (Ernesto v. Court of Appeals,
116 SCRA 755 [1982]).
Where strong considerations of substantial justice are manifest in the petition, this Court may relax
the stringent application of technical rules in the exercise of equity jurisdiction. In addition to the
basic merits of the main case, such petition usually embodies justifying circumstances which
warrant our heeding the petitioner's cry for justice, inspite of the earlier negligence of counsel
(Serrano v. Court of Appeals et al., 139 SCRA 179 [1985]).
In a number of cases, this Court in the exercise of equity jurisdiction decided to disregard
technicalities in order to resolve the case on its merits based on the evidence (St. Peter Memorial
Park, Inc. et al. v. Cleofas, 121 SCRA 287, [1983]; Helmuth, Jr. v. People of the Philippines, 112
SCRA 573 [1983]).
This case was brought before this Court for the resolution of the dismissal of the appeal filed by
petitioner-appellant from the decision of the Director of the Philippines Patent Office for being filed
out of time. The normal action to take thereafter, would be to remand this case to the Court of
Appeals for further proceedings. However, in line with jurisprudence, such time consuming
procedure may be properly dispensed with to resolve the issue (Quisumbing v. Court of Appeals,
122 SCRA 709 [1983]) where there is enough basis to end the basic controversy between the
parties here and now. In the case at bar dispensing with such procedural steps would not anyway
affect substantially the merits of their respective claims as held in Velasco v. Court of Appeals, (95
SCRA 621 [1980] cited in Ortigas & Co. Ltd. v. Ruiz, 148 SCRA [1987] 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 (Dorado v. Court of Appeals, 153 SCRA 420 [1987]; De Lima v. Laguna
Tayabas Co., 160 SCRA 70 [1988]).
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. (Petition, Rollo, p. 21).
Petitioner further stresses that Decision No. 84-83 (TM) 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. succintly
said:
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 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:
xxx xxx xxx
(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"
(Memorandum, Rollo p. 97 [211]).
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" (Rollo, p. 97 [21]).
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.

Finally, in La Chemise Lacoste S.A. v. Hon. Oscar Fernandez & Gobindram Hemandas Sujanani v.
Hon. Roberto V. Ongpin, et al. 129 SCRA 373 [1984]), the Court declared.
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.

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.
DECISION

CALLEJO, SR., J.:

- C190 27 }

This petition for review on certiorari assails the Decision1 and Resolution2 of the Court of Appeals
(CA) in CA-G.R. SP No. 70411 affirming the January 3, 2002 and February 14, 2002 Orders 3 of the
Regional Trial Court (RTC) of Manila, Branch 1, which quashed and set aside Search Warrant Nos.
01-2401 and 01-2402 granted in favor of petitioner Jessie G. Ching.

- C240 rear 40 }

Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and
manufacturer of a Utility Model, described as "Leaf Spring Eye Bushing for Automobile" made up of
plastic.
On September 4, 2001, Ching and Joseph Yu were issued by the National Library Certificates of
Copyright Registration and Deposit of the said work described therein as "Leaf Spring Eye Bushing
for Automobile."4
On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) for
police/investigative assistance for the apprehension and prosecution of illegal manufacturers,
producers and/or distributors of the works.5
After due investigation, the NBI filed applications for search warrants in the RTC of Manila against
William Salinas, Sr. and the officers and members of the Board of Directors of Wilaware Product
Corporation. It was alleged that the respondents therein reproduced and distributed the said models
penalized under Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293. The applications sought
the seizure of the following:

- C240 front 41 } BAG 1


b) Polyvinyl Chloride Plastic
- C190 13 }
c) Vehicle bearing cushion
- center bearing cushion 11 }
Budder for C190 mold 8 }
Diesel Mold
a) Mold for spring eye bushing rear 1 set
b) Mold for spring eye bushing front 1 set
c) Mold for spring eye bushing for C190 1 set

a.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of
plastic polypropylene;
b.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of
polyvinyl chloride plastic;

d) Mold for C240 rear 1 piece of the set


e) Mold for spring eye bushing for L300 2 sets
f) Mold for leaf spring eye bushing C190 with metal 1 set

c.) Undetermined quantity of Vehicle bearing cushion that is made up of polyvinyl chloride
plastic;

g) Mold for vehicle bearing cushion 1 set8

d.) Undetermined quantity of Dies and jigs, patterns and flasks used in the
manufacture/fabrication of items a to d;

The respondents filed a motion to quash the search warrants on the following grounds:

e.) Evidences of sale which include delivery receipts, invoices and official receipts.6

2. The copyright registrations were issued in violation of the Intellectual Property Code on the
ground that:

The RTC granted the application and issued Search Warrant Nos. 01-2401 and 01-2402 for the
seizure of the aforecited articles. 7 In the inventory submitted by the NBI agent, it appears that the
following articles/items were seized based on the search warrants:
Leaf Spring eye bushing
a) Plastic Polypropylene

a) the subject matter of the registrations are not artistic or literary;


b) the subject matter of the registrations are spare parts of automobiles meaning there
(sic) are original parts that they are designed to replace. Hence, they are not original.9
The respondents averred that the works covered by the certificates issued by the National Library
are not artistic in nature; they are considered automotive spare parts and pertain to technology.

They aver that the models are not original, and as such are the proper subject of a patent, not
copyright.10

Bearing Cushion fall on neither classification. Accordingly, if, in the first place, the item subject of the
petition is not entitled to be protected by the law on copyright, how can there be any violation? 14

In opposing the motion, the petitioner averred that the court which issued the search warrants was
not the proper forum in which to articulate the issue of the validity of the copyrights issued to him.
Citing the ruling of the Court inMalaloan v. Court of Appeals,11 the petitioner stated that a search
warrant is merely a judicial process designed by the Rules of Court in anticipation of a criminal
case. Until his copyright was nullified in a proper proceeding, he enjoys rights of a registered
owner/holder thereof.

The petitioners motion for reconsideration of the said decision suffered the same fate. The
petitioner forthwith filed the present petition for review on certiorari, contending that the revocation
of his copyright certificates should be raised in a direct action and not in a search warrant
proceeding.

On January 3, 2002, the trial court issued an Order12 granting the motion, and quashed the search
warrant on its finding that there was no probable cause for its issuance. The court ruled that the
work covered by the certificates issued to the petitioner pertained to solutions to technical problems,
not literary and artistic as provided in Article 172 of the Intellectual Property Code.
His motion for reconsideration of the order having been denied by the trial courts Order of February
14, 2002, the petitioner filed a petition for certiorari in the CA, contending that the RTC had no
jurisdiction to delve into and resolve the validity of the copyright certificates issued to him by the
National Library. He insisted that his works are covered by Sections 172.1 and 172.2 of the
Intellectual Property Code. The petitioner averred that the copyright certificates are prima
facie evidence of its validity, citing the ruling of the United States Court of Appeals in Wildlife
Express Corporation v. Carol Wright Sales, Inc. 13 The petitioner asserted that the respondents failed
to adduce evidence to support their motion to quash the search warrants. The petitioner noted that
respondent William Salinas, Jr. was not being honest, as he was able to secure a similar copyright
registration of a similar product from the National Library on January 14, 2002.
On September 26, 2003, the CA rendered judgment dismissing the petition on its finding that the
RTC did not commit any grave abuse of its discretion in issuing the assailed order, to wit:
It is settled that preliminarily, there must be a finding that a specific offense must have been
committed to justify the issuance of a search warrant. In a number of cases decided by the
Supreme Court, the same is explicitly provided, thus:
"The probable cause must be in connection with one specific offense, and the judge must, before
issuing the warrant, personally examine in the form of searching questions and answers, in writing
and under oath, the complainant and any witness he may produce, on facts personally known to
them and attach to the record their sworn statements together with any affidavit submitted.
"In the determination of probable cause, the court must necessarily resolve whether or not an
offense exists to justify the issuance or quashal of the search warrant."
In the instant case, the petitioner is praying for the reinstatement of the search warrants issued, but
subsequently quashed, for the offense of Violation of Class Designation of Copyrightable Works
under Section 177.1 in relation to Section 177.3 of Republic Act 8293, when the objects subject of
the same, are patently not copyrightable.
It is worthy to state that the works protected under the Law on Copyright are: literary or artistic
works (Sec. 172) and derivative works (Sec. 173). The Leaf Spring Eye Bushing and Vehicle

The petitioner posits that even assuming ex argumenti that the trial court may resolve the validity of
his copyright in a proceeding to quash a search warrant for allegedly infringing items, the RTC
committed a grave abuse of its discretion when it declared that his works are not copyrightable in
the first place. He claims that R.A. No. 8293, otherwise known as the Intellectual Property Code of
the Philippines, which took effect on January 1, 1998, provides in no uncertain terms that copyright
protection automatically attaches to a work by the sole fact of its creation, irrespective of its mode or
form of expression, as well as of its content, quality or purpose.15 The law gives a non-inclusive
definition of "work" as referring to original intellectual creations in the literary and artistic domain
protected from the moment of their creation; and includes original ornamental designs or models for
articles of manufacture, whether or not registrable as an industrial design and other works of
applied art under Section 172.1(h) of R.A. No. 8293.lawphil.net
As such, the petitioner insists, notwithstanding the classification of the works as either literary
and/or artistic, the said law, likewise, encompasses works which may have a bearing on the utility
aspect to which the petitioners utility designs were classified. Moreover, according to the petitioner,
what the Copyright Law protects is the authors intellectual creation, regardless of whether it is one
with utilitarian functions or incorporated in a useful article produced on an industrial scale.
The petitioner also maintains that the law does not provide that the intended use or use in industry
of an article eligible for patent bars or invalidates its registration under the Law on Copyright. The
test of protection for the aesthetic is not beauty and utility, but art for the copyright and invention of
original and ornamental design for design patents.16 In like manner, the fact that his utility designs or
models for articles of manufacture have been expressed in the field of automotive parts, or based
on something already in the public domain does not automatically remove them from the protection
of the Law on Copyright.17
The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293 which gives the same
presumption to an affidavit executed by an author who claims copyright ownership of his work.
The petitioner adds that a finding of probable cause to justify the issuance of a search warrant
means merely a reasonable suspicion of the commission of the offense. It is not equivalent to
absolute certainty or a finding of actual and positive cause. 18 He assists that the determination of
probable cause does not concern the issue of whether or not the alleged work is copyrightable. He
maintains that to justify a finding of probable cause in the issuance of a search warrant, it is enough
that there exists a reasonable suspicion of the commission of the offense.
The petitioner contends that he has in his favor the benefit of the presumption that his copyright is
valid; hence, the burden of overturning this presumption is on the alleged infringers, the
respondents herein. But this burden cannot be carried in a hearing on a proceeding to quash the
search warrants, as the issue therein is whether there was probable cause for the issuance of the

search warrant. The petitioner concludes that the issue of probable cause should be resolved
without invalidating his copyright.

was being copied and distributed by the respondents. Thus, the ownership of a valid copyright is
essential.22

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

Ownership of copyrighted material is shown by proof of originality and copyrightability. By originality


is meant that the material was not copied, and evidences at least minimal creativity; that it was
independently created by the author and that it possesses at least same minimal degree of
creativity.23 Copying is shown by proof of access to copyrighted material and substantial similarity
between the two works.24 The applicant must thus demonstrate the existence and the validity of his
copyright because in the absence of copyright protection, even original creation may be freely
copied.25
By requesting the NBI to investigate and, if feasible, file an application for a search warrant for
infringement under R.A. No. 8293 against the respondents, the petitioner thereby authorized the
RTC (in resolving the application), to delve into and determine the validity of the copyright which he
claimed he had over the utility models. The petitioner cannot seek relief from the RTC based on his
claim that he was the copyright owner over the utility models and, at the same time, repudiate the
courts jurisdiction to ascertain the validity of his claim without running afoul to the doctrine of
estoppel.

The petition has no merit.


The RTC had jurisdiction to delve into and resolve the issue whether the petitioners utility models
are copyrightable and, if so, whether he is the owner of a copyright over the said models. It bears
stressing that upon the filing of the application for search warrant, the RTC was duty-bound to
determine whether probable cause existed, in accordance with Section 4, Rule 126 of the Rules of
Criminal Procedure:
SEC. 4. Requisite for issuing search warrant. A search warrant shall not issue but upon probable
cause in connection with one specific offense to be determined personally by the judge after
examination under oath or affirmation of the complainant and the witnesses he may produce, and,
particularly, describing the place to be searched and the things to be seized.
In Solid Triangle Sales Corporation v. The Sheriff of RTC QC, Br. 93,19 the Court held that in the
determination of probable cause, the court must necessarily resolve whether or not an offense
exists to justify the issuance of a search warrant or the quashal of one already issued by the court.
Indeed, probable cause is deemed to exist only where facts and circumstances exist which could
lead a reasonably cautious and prudent man to believe that an offense has been committed or is
being committed. Besides, in Section 3, Rule 126 of the Rules of Criminal Procedure, a search
warrant may be issued for the search and seizure of personal property (a) subject of the offense; (b)
stolen or embezzled and other proceeds or fruits of the offense; or (c) used or intended to be used
as the means of committing an offense.
The RTC is mandated under the Constitution and Rules of Criminal Procedure to determine
probable cause. The court cannot abdicate its constitutional obligation by refusing to determine
whether an offense has been committed. 20 The absence of probable cause will cause the outright
nullification of the search warrant.21
For the RTC to determine whether the crime for infringement under R.A. No. 8293 as alleged in an
application is committed, the petitioner-applicant was burdened to prove that (a) respondents Jessie
Ching and Joseph Yu were the owners of copyrighted material; and (b) the copyrighted material

To discharge his burden, the applicant may present the certificate of registration covering the work
or, in its absence, other evidence.26 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 ownership27 and the validity of the facts stated in the certificate. 28 The presumption of
validity to a certificate of copyright registration merely orders the burden of proof. The applicant
should not ordinarily be forced, in the first instance, to prove all the multiple facts that underline the
validity of the copyright unless the respondent, effectively challenging them, shifts the burden of
doing so to the applicant.29 Indeed, Section 218.2 of R.A. No. 8293 provides:
218.2. In an action under this Chapter:
(a) Copyright shall be presumed to subsist in the work or other subject matter to which
the action relates if the defendant does not put in issue the question whether copyright
subsists in the work or other subject matter; and
(b) Where the subsistence of the copyright is established, the plaintiff shall be presumed
to be the owner of the copyright if he claims to be the owner of the copyright and the
defendant does not put in issue the question of his ownership.
A certificate of registration creates no rebuttable presumption of copyright validity where other
evidence in the record casts doubt on the question. In such a case, validity will not be presumed.30
To discharge his burden of probable cause for the issuance of a search warrant for violation of R.A.
No. 8293, the petitioner-applicant submitted to the RTC Certificate of Copyright Registration Nos.
2001-197 and 2001-204 dated September 3, 2001 and September 4, 2001, respectively, issued by
the National Library covering work identified as Leaf Spring Eye Bushing for Automobile and Vehicle
Bearing Cushion both classified under Section 172.1(h) of R.A. No. 8293, to wit:

SEC. 172. Literary and Artistic Works. 172.1. Literary and artistic works, hereinafter referred to as
"works," are original intellectual creations in the literary and artistic domain protected from the
moment of their creation and shall include in particular:

In this case, the petitioners models are not works of applied art, nor artistic works. They are utility
models, useful articles, albeit with no artistic design or value. Thus, the petitioner described the
utility model as follows:

...

LEAF SPRING EYE BUSHING FOR AUTOMOBILE

(h) Original ornamental designs or models for articles of manufacture, whether or not registrable as
an industrial design, and other works of applied art.

Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile are made of hard
rubber. These rubber bushings after a time, upon subjecting them to so much or intermittent
pressure would eventually wore (sic) out that would cause the wobbling of the leaf spring.

Related to the provision is Section 171.10, which provides that a "work of applied art" is an artistic
creation with utilitarian functions or incorporated in a useful article, whether made by hand or
produced on an industrial scale.

The primary object of this utility model, therefore, is to provide a leaf-spring eye bushing for
automobile that is made up of plastic.

But, as gleaned from the specifications appended to the application for a copyright certificate filed
by the petitioner, the said Leaf Spring Eye Bushing for Automobile is merely a utility model
described as comprising a generally cylindrical body having a co-axial bore that is centrally located
and provided with a perpendicular flange on one of its ends and a cylindrical metal jacket
surrounding the peripheral walls of said body, with the bushing made of plastic that is either
polyvinyl chloride or polypropylene.31 Likewise, the Vehicle Bearing Cushion is illustrated as a
bearing cushion comprising a generally semi-circular body having a central hole to secure a
conventional bearing and a plurality of ridges provided therefore, with said cushion bearing being
made of the same plastic materials. 32 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.

Another object of this utility model is to provide a leaf-spring eye bushing for automobiles made of
polyvinyl chloride, an oil resistant soft texture plastic or polypropylene, a hard plastic, yet both
causes cushion to the leaf spring, yet strong enough to endure pressure brought about by the up
and down movement of said leaf spring.

It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its
marketability. The central inquiry is whether the article is a work of art. 33 Works for applied art
include all original pictorials, graphics, and sculptural works that are intended to be or have been
embodied in useful article regardless of factors such as mass production, commercial exploitation,
and the potential availability of design patent protection.34

A further object of this utility model is to provide a leaf-spring eye bushing for automobile that is
supplied with a metal jacket to reinforce the plastic eye bushing when in engaged with the steel
material of the leaf spring.

As gleaned from the description of the models and their objectives, these articles are useful articles
which are defined as one having an intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey information. Indeed, while works of applied art, original
intellectual, literary and artistic works are copyrightable, useful articles and works of industrial
design are not.35 A useful article may be copyrightable only if and only to the extent that such design
incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are
capable of existing independently of the utilitarian aspects of the article.
We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that the
authors intellectual creation, regardless of whether it is a creation with utilitarian functions or
incorporated in a useful article produced on an industrial scale, is protected by copyright law.
However, the law refers to a "work of applied art which is an artistic creation." It bears stressing that
there is no copyright protection for works of applied art or industrial design which have aesthetic or
artistic features that cannot be identified separately from the utilitarian aspects of the
article.36 Functional components of useful articles, no matter how artistically designed, have
generally been denied copyright protection unless they are separable from the useful article.37

Yet, an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a
much longer life span than the rubber bushings.
Still an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a
very simple construction and can be made using simple and ordinary molding equipment.

These and other objects and advantages will come to view and be understood upon a reading of
the detailed description when taken in conjunction with the accompanying drawings.
Figure 1 is an exploded perspective of a leaf-spring eye bushing according to the present utility
model;
Figure 2 is a sectional view taken along line 2-2 of Fig. 1;
Figure 3 is a longitudinal sectional view of another embodiment of this utility model;
Figure 4 is a perspective view of a third embodiment; and
Figure 5 is a sectional view thereof.
Referring now to the several views of the drawings wherein like reference numerals designated
same parts throughout, there is shown a utility model for a leaf-spring eye bushing for automobile
generally designated as reference numeral 10.

Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a co-axial bore 12
centrally provided thereof.
As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is provided with a perpendicular flange
13 on one of its ends and a cylindrical metal jacket 14 surrounding the peripheral walls 15 of said
body 11. When said leaf-spring bushing 10 is installed, the metal jacket 14 acts with the leaf-spring
eye (not shown), which is also made of steel or cast steel. In effect, the bushing 10 will not be
directly in contact with steel, but rather the metal jacket, making the life of the bushing 10 longer
than those without the metal jacket.

Figure 2 is a sectional view thereof.


Referring now to the several views of the drawing, wherein like reference numeral designate same
parts throughout, there is shown a utility model for a vehicle-bearing cushion generally designated
as reference numeral 10.
Said bearing cushion 10 comprises of a generally semi-circular body 11, having central hole 12 to
house a conventional bearing (not shown). As shown in Figure 1, said body 11 is provided with a
plurality of ridges 13 which serves reinforcing means thereof.

In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl chloride, an oil
resistant soft texture plastic or a hard polypropylene plastic, both are capable to endure the
pressure applied thereto, and, in effect, would lengthen the life and replacement therefor.

The subject bearing cushion 10 is made of polyvinyl chloride, a soft texture oil and chemical
resistant plastic material which is strong, durable and capable of enduring severe pressure from the
center bearing brought about by the rotating movement of the propeller shaft of the vehicle. 39

Figure 3, on the other hand, shows the walls 16 of the co-axial bore 12 of said bushing 10 is
insertably provided with a steel tube 17 to reinforce the inner portion thereof. This steel tube 17
accommodates or engages with the leaf-spring bolt (not shown) connecting the leaf spring and the
automobiles chassis.

A utility model is a technical solution to a problem in any field of human activity which is new and
industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any
of the aforesaid.40Essentially, a utility model refers to an invention in the mechanical field. This is the
reason why its object is sometimes described as a device or useful object. 41 A utility model varies
from an invention, for which a patent for invention is, likewise, available, on at least three aspects:
first, the requisite of "inventive step" 42 in a patent for invention is not required; second, the maximum
term of protection is only seven years43 compared to a patent which is twenty years, 44 both reckoned
from the date of the application; and third, the provisions on utility model dispense with its
substantive examination45 and prefer for a less complicated system.

Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is elongated and
cylindrical as to its construction. Said another embodiment is also made of polypropylene or
polyvinyl chloride plastic material. The steel tube 17 and metal jacket 14 may also be applied to this
embodiment as an option thereof.38
VEHICLE BEARING CUSHION
Known bearing cushions inserted to bearing housings for vehicle propeller shafts are made of hard
rubber. These rubber bushings after a time, upon subjecting them to so much or intermittent
pressure would eventually be worn out that would cause the wobbling of the center bearing.
The primary object of this utility model therefore is to provide a vehicle-bearing cushion that is made
up of plastic.
Another object of this utility model is to provide a vehicle bearing cushion made of polyvinyl
chloride, an oil resistant soft texture plastic material which causes cushion to the propellers center
bearing, yet strong enough to endure pressure brought about by the vibration of the center bearing.
Yet, an object of this utility model is to provide a vehicle-bearing cushion that has a much longer life
span than rubber bushings.
Still an object of this utility model is to provide a vehicle bearing cushion that has a very simple
construction and can be made using simple and ordinary molding equipment.
These and other objects and advantages will come to view and be understood upon a reading of
the detailed description when taken in conjunction with the accompanying drawings.
Figure 1 is a perspective view of the present utility model for a vehicle-bearing cushion; and

Being plain automotive spare parts that must conform to the original structural design of the
components they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are
not ornamental. They lack the decorative quality or value that must characterize authentic works of
applied art. They are not even artistic creations with incidental utilitarian functions or works
incorporated in a useful article. In actuality, the personal properties described in the search warrants
are mechanical works, the principal function of which is utility sansany aesthetic embellishment.
Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included in
the catch-all phrase "other literary, scholarly, scientific and artistic works" in Section 172.1(a) of R.A.
No. 8293. Applying the principle of ejusdem generis which states that "where a statute describes
things of a particular class or kind accompanied by words of a generic character, the generic word
will usually be limited to things of a similar nature with those particularly enumerated, unless there
be something in the context of the state which would repel such inference," 46 the Leaf Spring Eye
Bushing and Vehicle Bearing Cushion are not copyrightable, being not of the same kind and nature
as the works enumerated in Section 172 of R.A. No. 8293.
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, inJoaquin, Jr. v. Drilon47 and Pearl & Dean (Phil.), Incorporated v.
Shoemart, Incorporated,48 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.

statuettes were held copyrightable works of art or models or designs for works of art. The High
Court ruled that:

That the works of the petitioner may be the proper subject of a patent does not entitle him to the
issuance of a search warrant for violation of copyright laws. In Kho v. Court of Appeals49 and Pearl
& Dean (Phil.), Incorporated v. Shoemart, Incorporated,50 the Court ruled that "these copyright and
patent rights are completely distinct and separate from one another, and the protection afforded by
one cannot be used interchangeably to cover items or works that exclusively pertain to the others."
The Court expounded further, thus:

"Works of art (Class G) (a) In General. This class includes works of artistic craftsmanship, in so
far as their form but not their mechanical or utilitarian aspects are concerned, such as artistic
jewelry, enamels, glassware, and tapestries, as well as all works belonging to the fine arts, such as
paintings, drawings and sculpture. "

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.
The petitioner cannot find solace in the ruling of the United States Supreme Court in Mazer v.
Stein51 to buttress his petition. In that case, the artifacts involved in that case were statuettes of
dancing male and female figures made of semi-vitreous china. The controversy therein centered on
the fact that although copyrighted as "works of art," the statuettes were intended for use and used
as bases for table lamps, with electric wiring, sockets and lampshades attached. The issue raised
was whether the statuettes were copyright protected in the United States, considering that the
copyright applicant intended primarily to use them as lamp bases to be made and sold in quantity,
and carried such intentions into effect. At that time, the Copyright Office interpreted the 1909
Copyright Act to cover works of artistic craftsmanship insofar as their form, but not the utilitarian
aspects, were concerned. After reviewing the history and intent of the US Congress on its copyright
legislation and the interpretation of the copyright office, the US Supreme Court declared that the

So we have a contemporaneous and long-continued construction of the statutes by the agency


charged to administer them that would allow the registration of such a statuette as is in question
here.52
The High Court went on to state that "[t]he dichotomy of protection for the aesthetic is not beauty
and utility but art for the copyright and the invention of original and ornamental design for design
patents." Significantly, the copyright office promulgated a rule to implement Mazer to wit:
[I]f "the sole intrinsic function of an article is its utility, the fact that the work is unique and
attractively shaped will not qualify it as a work of art."
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.
IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED for lack of merit. The
assailed Decision and Resolution of the Court of Appeals in CA-G.R. SP No. 70411 are AFFIRMED.
Search Warrant Nos. 01-2401 and 01-2402 issued on October 15, 2001 are ANNULLED AND SET
ASIDE. Costs against the petitioner.
SO ORDERED.