Francisco Joaquin vs Franklin Drilon GR No.

108946, January 28, 1999

Facts:
BJ Productions, Inc (BJPI) is a holder of a Certificate of Copyright no. M922 issued on January 28, 1971 of
Rhoda and Me which is a dating show aired from 1970 to 1977. It submitted to the National Library an
addendum its certificate of copyright specifying the shows format and style of presentation. While watching the
television, its President, Francisco Joaquin saw on RPN Channel 9 the episode on Its a Date produced by IXL
Productions. He wrote a letter to IXLs president Gabriel Zosa informing him that BJPI has a copyright of the
same format as shown on their Its a Date show in their Rhoda and Me show. Zosa sought to register IXLs
copyright to their first episode of Its a Date to the National Library. Petitioner filed a complaint in violation of PD
No. 49 against the respondent before the RTC of Quezon City. Respondent sought a review of the resolution from
the Asst. City Prosecutor before the Department of Justice.

Sec. of Justice Franklin Drilon directed to move for dismissal of the case against the respondents and denied the
petitioners motion for reconsideration hence this petition before the Supreme Court.

Issue:
Whether or not the format or mechanics of the petitioners television show is entitled to a copyright protection.

Ruling:
The Supreme Court held that the format of a show is not copyrightable as provided by Section 2 of PD no. 49
otherwise known as the Decree on Intellectual Property which enumerates the classes of work that are covered
by the copyright protection. Similarly, RA 8293, the Intellectual Property Code of the Philippines provides that
format or mechanics of a television show is not included in the list of the protected work by the copyright law of
the Philippines. PD 49 enumerates the works subject to copyright protection which refers to finished works and
not on concepts. It does not extend to an idea, procedure, process, system, method or operation, concept,
principles or discovery regardless of the form to which it is described, explained, and illustrated or embodied in
the work.

Yes. The essence of copyright infringement is the copying, in whole or in part, of copyrightable materials as
defined and enumerated in Section 2 of PD. No. 49 (Copyright Law). Apart from the manner in which it is actually
expressed, however, the idea of a dating game show is a non-copyrightable material. Ideas, concepts, formats,
or schemes in their abstract form clearly do not fall within the class of works or materials susceptible of
copyright registration as provided in PD. No. 49. What is covered by BJPIs copyright is the specific episodes of
the show Rhoda and Me.

CHING V. SALINAS, SR. (G.R. NO. 161295)

Facts:
Petitioner Ching is a maker and manufacturer of a utility model, Leaf Spring Eye Bushing for Automobile, for which he
holds certificates of copyright registration. Petitioners request to the NBI to apprehend and prosecute illegal manufacturers
of his work led to the issuance of search warrants against respondent Salinas, alleged to be reproducing and distributing said
models in violation of the IP Code. Respondent moved to quash the warrants on the ground that petitioners work is not
artistic in nature and is a proper subject of a patent, not copyright. Petitioner insists that the IP Code protects a work from the
moment of its creation regardless of its nature or purpose. The trial court quashed the warrants. Petitioner argues that the
copyright certificates over the model are prima facie evidence of its validity. CA affirmed the trial courts decision.
Issues:
(1) Whether or not petitioners model is an artistic work subject to copyright protection.
(2) Whether or not petitioner is entitled to copyright protection on the basis of the certificates of registration issued to it.
Ruling:
(1) NO. As gleaned from the specifications appended to the application for a copyright certificate filed by the petitioner, the
said Leaf Spring Eye Bushing for Automobile and Vehicle Bearing Cushion are merely utility models. As gleaned from the
description of the models and their objectives, these articles are useful articles which are defined as one having an intrinsic
utilitarian function that is not merely to portray the appearance of the article or to convey information. Plainly, these are not
literary or artistic works. They are not intellectual creations in the literary and artistic domain, or works of applied art. They
are certainly not ornamental designs or one having decorative quality or value. Indeed, while works of applied art, original
intellectual, literary and artistic works are copyrightable, useful articles and works of industrial design are not. A useful
article may be copyrightable only if and only to the extent that such design incorporates pictorial, graphic, or sculptural
features that can be identified separately from, and are capable of existing independently of the utilitarian aspects of the
article. In this case, the bushing and cushion are not works of art. They are, as the petitioner himself admitted, utility models
which may be the subject of a patent.
(2) NO. No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the certificates of
copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion. Indeed, in Joaquin, Jr.
v.Drilon and Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated, the Court ruled that:
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted by the statute,
and not simply a pre-existing right regulated by it. Being a statutory grant, the rights are only such as the statute confers, and
may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms and conditions specified in
the statute. Accordingly, it can cover only the works falling within the statutory enumeration or description.
Ownership of copyrighted material is shown by proof of originality and copyrightability. To discharge his burden, the
applicant may present the certificate of registration covering the work or, in its absence, other evidence. A copyright
certificate provides prima facie evidence of originality which is one element of copyright validity. It constitutes prima
facie evidence of both validity and ownership and the validity of the facts stated in the certificate.

UNITED FEATURE SYNDICATE, INC., petitioner,

vs.
MUNSINGWEAR CREATION MANUFACTURING COMPANY, 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.

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 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.

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.

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).

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:

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.

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

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.

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).

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.

Feist Publications v. Rural Telephone 499 US 340 (1991)

Brief Fact Summary. A publishing company used information from a telephone directory to publish its own
directory.

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

Facts. Rural Telephone Service Company, Inc. (Plaintiff) provides telephone service to several communities. Due
to a state regulation, it must issue an annual telephone directory, so it published a directory consisting of white
and yellow pages. The yellow pages have advertisements that generate revenue. Feist Publications, Inc.
(Defendant) is a publishing company whose directory covers a larger range than a typical directory. Defendant
distributes their telephone books free of charge, and they also generate revenue through the advertising in the
yellow pages. Plaintiff refused to give a license to Defendant for the phone numbers in the area, so Defendant
used them without Plaintiffs consent. Rural sued for copyright infringement.

Issue. Are the names, addresses, and phone numbers in a telephone directory able to be copyrighted?

Held. No.
Facts cannot be copyrighted, however compilations of facts can generally be copyrighted.
To qualify for copyright protection, a work must be original to the author, which means that the work was
independently created by the author, and it possesses at least some minimal degree of creativity. A work may be
original even thought it closely resembles other works so long as the similarity is fortuitous, not the result of
copying.
Facts are not original. The first person to find and report a particular fact has not created the fact; he has merely
discovered its existence. Facts may not be copyrighted and are part of the public domain available to every
 person.
Factual compilations may possess the requisite originality. The author chooses what facts to include, in what
order to place them, and how to arrange the collected date so they may be effectively used by readers. Thus,
even a directory that contains no written expression that could be protected, only facts, meets the constitutional
minimum for copyright protection if it features an original selection or arrangement. But, even though the format is
original, the facts themselves do not become original through association. The copyright on a factual compilation
is limited to formatting. The copyright does not extend to the facts themselves.
To establish copyright infringement, two elements must be proven: ownership of a valid copyright and copying of
constituent elements of the work that are original. The first element is met in this case because the directory
contains some forward text. As to the second element, the information contains facts, which cannot be
copyrighted. They existed before being reported and would have continued to exist if a telephone directory had
never been published. There is no originality in the formatting, so there is no copyrightable expression. Thus,
there is no copyright infringement.

Discussion. Facts cannot be subject to copyright laws; otherwise there would be no spreading of information or
learning. Subjecting facts to copyright laws would mean that any time a person used a fact found in a book, be it
in a school paper, newspaper, or another book, that person would be guilty of piracy.

Case Digest: Manly Sportswear Manufacturing, Inc vs. Dadodette Enterprise

Manly Sportswear Manufacturing, Inc vs. Dadodette Enterprise
G.R. No. 165306
September 20, 2005

FACTS:

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

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

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

Wilson Ong Ching Kian Chuan v CA

[G.R. No. 130360. August 15, 2001]
QUISUMBING, J.
FACTS:
Petitioner imports vermicelli from China National Cereals Oils and Foodstuffs, 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 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 RTC-QC.
o 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.
Tan filed an opposition alleging that Ong was not entitled to an injunction.
o 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 Ceroilfood Shandong, based in Qingdao, China.
o 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.
o He added that Ong merely copied the two-dragon design from Ceroilfood Shandong which had the Certificates of
Registration issued by different countries.
o Private respondent alleges that the trademark PAGODA BRAND was registered in China on October 31, 1979
while the trademark LUNGKOW VERMICELLI WITH TWO-DRAGON DEVICE was registered on August 15,
1985.
Trial Court issued a temporary restraining order on the same date the complaint was filed. It likewise issued the
writ in Ongs favor upon his filing of a P100,000.00 bond.
CA gave due course and granted the petition. The lower courts orders, as well as the writ of preliminary
injunction, were set aside. Ong filed a MR from which CA modified its decision and made the injunction
permanent.

ISSUE:
W/N the issuance of the writ of preliminary injunction in favor of private respondent was proper?

HELD: 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 Ongs
copyrighted wrapper is a copy of that of Ceroilfood Shandong is SET ASIDE for being premature. Case was
remanded to RTC.

RATIO:
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. The copies of the certificates of copyright registered in the name of Ceroilfood Shandong sufficiently
raise reasonable doubt. With such a doubt, the preliminary injunction asked by Ong against Tan is unavailing.
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. In this case, the Court found
that petitioners right has not been clearly and unmistakably demonstrated.
The Court added it was premature for the CA to declare that the design of petitioners wrapper is a copy of the
wrapper allegedly registered by Ceroilfood Shandong. 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, and not on
the merits of the infringement case. That matter remains for decision after appropriate proceedings at the trial
court.

G.R. No. L-19439 October 31, 1964 MAURO MALANG SANTOS, plaintiff-appellant, vs. MCCULLOUGH PRINTING
COMPANY, defendant-appellee. Taada Teehankee & Carreon for plaintiff-appellant. Esposo & Usison for defendant-
appellee.

PAREDES, J.: This is an action for damages based on the provisions of Articles 721 and 722 of the Civil Code of the
Philippines, allegedly on the unauthorized use, adoption and appropriation by the defendant company of plaintiff's
intellectual creation or artistic design for a Christmas Card.

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

The following year the defendant McCullough Printing Company, without the knowledge and authority of plaintiff,
displayed the very design in its album of Christmas cards and offered it for sale, for a price. For such unauthorized act of
defendant, plaintiff suffered moral damages to the tune of P16, 000.00, because it has placed plaintiff's professional
integrity and ethics under serious question and caused him grave embarrassment before Ambassador Neri.

He further prayed for the additional sum of P3, 000.00 by way of attorney's fee. Defendant in answer to the
complaint, after some denials and admissions, moved for a dismissal of the action claiming that (1) The design claimed
does not contain a clear notice that it belonged to him and that he prohibited its use by others; (2) The design in question
has been published but does not contain a notice of copyright, as in fact it had never been copyrighted by the plaintiff, for
which reason this action is barred by the Copyright Law; (3) The complaint does not state a cause of action.
 The documentary evidence submitted were the Christmas cards, as originally designed by plaintiff, the design as
printed for Ambassador Neri, and the subsequent reprints ordered by other parties. The case was submitted a "Stipulation
of Fact" the pertinent portions of which are hereunder reproduced:

1. That the plaintiff was the artist who created the design shown in Exhibit A,

2. That the design carries the pen name of plaintiff, MALANG, on its face... and indicated in Exhibit A,...

3. That said design was created by plaintiff in the latter part of 1959 for the personal use of former Ambassador
Felino Neri; ...

4. That former Ambassador Neri had 800 such cards ... printed by the defendant company in 1959, ... which he
distributed to his friends in December, 1959;

5. That defendant company utilized plaintiff's design in the year 1960 in its album of Christmas card samples
displayed to its customers ... .

6. That the Sampaguita Pictures, Inc., placed an order with defendant company for 700 of said cards ... while Raul
Urra & Co. ordered 200 ..., which cards were sent out by them to their respective correspondent, clients and friends during
the Christmas season of 1960;

7. That defendant company's use of plaintiff's design was without knowledge, authority or consent of plaintiff;

8. That said design has not been copyrighted; 9. That plaintiff is an artist of established name, good-will and
reputation. ... . Upon the basis of the facts stipulated, the lower court rendered judgment on December 1, 1961, the
pertinent portions of which are recited below: As a general proposition, there can be no dispute that the artist acquires
ownership of the product of his art. At the time of its creation, he has the absolute dominion over it.

To help the author protect his rights the copyright law was enacted. In intellectual creations, a distinction must be
made between two classes of property rights; the fact of authorship and the right to publish and/or distribute copies of the
creation. With regard to the first, i.e. the fact of authorship, the artist cannot be divested of the same. In other words, he
may sell the right to print hundred of his work yet the purchaser of said right can never be the author of the creation. It is
the second right, i.e., the right to publish, republish, multiply and/or distribute copies of the intellectual creation which the
state, through the enactment of the copyright law, seeks to protect.

The author or his assigns or heirs may have the work copyrighted and once this is legally accomplished any
infringement of the copyright will render the infringer liable to the owner of the copyright. xxx xxx xxx The plaintiff in this
case did not choose to protect his intellectual creation by a copyright. The fact that the design was used in the Christmas
card of Ambassador Neri who distributed eight hundred copies thereof among his friends during the Christmas season of
1959, shows that the, same was published.

Unless satisfactorily explained a delay in applying for a copyright, of more than thirty days from the date of its
publication, converts the property to one of public domain. Since the name of the author appears in each of the alleged
infringing copies of the intellectual creation, the defendant may not be said to have pirated the work nor guilty of
plagiarism Consequently, the complaint does not state a cause of action against the defendant. xxx xxx xxx

WHEREFORE, the Court dismisses the complaint without pronouncement as to costs. In his appeal to this Court,
plaintiff-appellant pointed five (5) errors allegedly committed by the trial court, all of which bring to the fore, the following
propositions: (1) whether plaintiff is entitled to protection, notwithstanding the, fact that he has not copyrighted his design;
(2) whether the publication is limited, so as to prohibit its use by others, or it is general publication, and (3) whether the
provisions of the Civil Code or the Copyright Law should apply in the case.

We will undertake a collective discussion of these propositions. Under the established facts, We find that plaintiff is
not entitled to a protection, the provision of the Civil Code, notwithstanding. Paragraph 33 of Patent Office Administrative
Order No. 3 (as amended dated September 18, 1947) entitled "Rules of Practice in the Philippines Patent Office relating to
the Registration of Copyright Claims" promulgated pursuant to Republic Act 165, provides, among others, that an
intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila, or within sixty (60) day's
if made elsewhere, failure of which renders such creation public property. In the case at bar, even as of this moment, there
is no copyright for the design in question.

We are not also prepared to accept the contention of appellant that the publication of the design was a limited
one, or that there was an understanding that only Ambassador Neri should, have absolute right to use the same. In the first
place, if such were the condition then Ambassador Neri would be the aggrieved party, and not the appellant. In the second
place, if there was such a limited publication or prohibition, the same was not shown on the face of the design.
 When the purpose is a limited publication, but the effect is general publication, irrevocable rights thereupon
become vested in the public, in consequence of which enforcement of the restriction becomes impossible (Nutt vs.
National Institute, 31 F [2d] 236). It has been held that the effect of offering for sale a dress, for example manufactured in
accordance with an original design which is not protected by either a copyright or a patent, is to divest the owner of his
common law rights therein by virtue of the publication of a 'copy' and thereafter anyone is free to copy the design or the
dress (Fashion Originators Guild of America v. Federal Trade Commission, 114 F [2d] 80). When Ambassador Neri
distributed 800 copies of the design in controversy, the plaintiff lost control of his design and the necessary implication was
that there had been a general publication, there having been no showing of a clear indication that a limited publication was
intended. The author of a literary composition has a light to the first publication thereof. He has a right to determine
whether it shall be published at all, and if published, when, where, by whom, and in what form. This exclusive right is
confined to the first publication.

When once published, it is dedicated to the public, and the author loses the exclusive right to control subsequent
publication by others, unless the work is placed under the protection of the copyright law. (See II Tolentino's Comments on
the Civil Code, p. 433, citing Wright v. Eisle 83 N.Y. Supp. 887.) CONFORMABLY WITH ALL THE FOREGOING, We find that the
errors assigned have not been committed by the lower court. The decision appealed from, therefore, should be, as it is,
hereby affirmed. Costs taxed against plaintiff-appellant. Bengzon, C.J., Bautista Angelo, Concepcion, Reyes, J.B.L., Barrera,
Dizon, Makalintal, Bengzon, J. P., and Zaldivar JJ., concur. Regala, J., took no part

Brandir Int'l Inc., vs. Cascade Pacific Lumber Company,

Brief Fact Summary.Brandir International, Inc. (Plaintiff) sold a wire sculpture as a bicycle rack that by was
deemed not to be copyrightable because it was an industrial design not subject to copyright protection.

Synopsis of Rule of Law. Copyrightability ultimately depends on the extent to which the work reflects artistic
expression not restricted by functional considerations.

Facts. After seeing undulating wire sculptures, a friend suggested to the artist, the chief owner of Brandir
International, Inc. (Brandir) (Plaintiff), that the sculptures would make excellent bicycle racks. Plaintiff then started
to manufacture and sell bike racks derived in part from one or more of the works of art. When Plaintiff discovered
that Cascade Pacific Lumber (Defendant) was selling a similar product, it included a copyright notice with its
products and applied to the Copyright Office for registration. The Copyright Office denied the applications for
registration as the bicycle racks did not include any element that was capable of independent existence as a
copyrightability, and the district court granted summary judgment on the copyright claim. Plaintiff appealed.

Issue. Should copyrightability ultimately depend on the extent to which the work reflects artistic expression not
restricted by functional considerations?

Held. (Oakes, J.) Yes. Copyrightability ultimately should depend on the extent to which the work reflects artistic
expression not restricted by functional considerations. If design elements reflect a merger of aesthetic and
functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the
utilitarian elements. The final form of the bicycle rack sold by Brandir (Plaintiff) is basically a product of industrial
design. Form and function are inextricably intertwined in the rack, its ultimate design being as much the result of
utilitarian pressures as aesthetic choices. The original aesthetic elements have clearly been adapted to
accommodate and further a utilitarian purpose. Affirmed.

Concurrence. (Winter, J.) The relevant question should be whether the design of a useful article, however
intertwined with the articles utilitarian aspects, causes an ordinary reasonable observer to perceive an aesthetic
concept not related to the articles use. The answer to this question is clear in this case since any reasonable
observer would easily see the bicycle rack as an ornamental sculpture. The Copyright Act expressly states that
the legal test is how the final article is perceived, not how it was developed at various stages along the way.

Discussion. The majority in this case adopted a test suggested by Professor Denicola in his article Applied Art
and Industrial Design, 67 Min. L. Rev. 707 (1983). The Winter dissent suggested applying a different test and
another dissent suggested using a temporal displacement test. In general, if a work is a useful article, the artistic
elements have to be separate in order for the work to be copyrightable.[