FRANCISCO G. JOAQUIN, JR. and BJ PRODUCTIONS, INC. vs. show is not included in the list of protected works in Sec.

rotected works in Sec. 2 of PD No. 49. For

HONORABLE RANKLIN M. DRILON, GABRIEL ZOSA, WILLIAM this reason, the protection afforded by the law cannot be extended to cover
ESPOSO, FELIPE MEDINA, JR., and CASEY FRANCISCO them.

FACTS:
Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of
Certificate of Copyright No. M922, dated January 28, 1971, of Rhoda and
Me, a dating game show aired from 1970 to 1977.
On June 28, 1973, petitioner BJPI submitted to the National Library
an addendum to its certificate of copyright specifying the show’s format and
style of presentation.
Upon complaint of petitioners, information for violation of PD No. 49
was filed against private respondent Zosa together with certain officers of
RPN 9 for airing It’s a Date. It was assigned to Branch 104 of RTC Quezon
City.
Zosa sought review of the resolution of the Assistant City Prosecutor
before the Department of Justice.
Copyright, in the strict sense of the term, is purely a statutory right. It is a
new 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 subjects and by the person and on terms and conditions specified in
the statute.
The 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 PD 49.
The copyright does not extend to the general concept or format of its dating
game show.
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 a probable cause.

On August 12, 1992, respondent Secretary of Justice Franklin M.
Drilon reversed the Assistant City Prosecutor’s findings and directed him to
move for the dismissal of the case against private respondents.
Petitioner Joaquin filed motion for reconsideration but such was
denied.
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.

ISSUE:

Whether the format or mechanics or petitioner’s television show is

entitled to copyright protection.

HELD:

The Court ruled that the format of the show is not copyrightable. Sec.
2 of PD No. 49, otherwise known as the Decree on Intellectual Property,
enumerates the classes of work entitled to copyright protection. The
provision is substantially the same as Sec. 172 of the Intellectual Property
Code of the Philippines (RA 8293). The format or mechanics of a television
 BAKER v. SELDEN

Brief Fact Summary. Baker (Defendant) sold forms similar to forms

contained in a bookkeeping system within Selden’s (Plaintiff) copyrighted
book.

Synopsis of Rule of Law. The copyright protection for a book explaining an

art or system extends only to the author’s unique explanation of it and does
not prevent others from using the system or the forms incidentally used.

Facts. Selden (Plaintiff) copyrighted a book in which he used in introductory

essay explaining his system of bookkeeping followed by forms to put the
system to use. He had arranged the columns and headings so that the entire
operation of a day, week or month was on a single page or on two pages
facing each other. Baker (Defendant) then began selling forms with columns
and headings arranged differently to achieve the same result. When Plaintiff
successfully sued for copyright infringement, Defendant appealed. He
argued that the forms were non-copyrightable.

Issue. Does copyright protection for a book explaining an art or system

prevent others from using the system or the forms incidentally used?

Held. (Bradley, J.) No. The copyright protection for a book explaining an
art or system extends only to the author’s unique explanation of it and does
not prevent others from using the system or the forms incidentally
used. To find that a copyright protected against use of the system itself or
the forms necessary to such use would be to grant protection similar to a
patent without requiring a showing of novelty. Copyright is based on
originality, not novelty, and protects the explanation of the system and not
the use of the system. In this case, therefore, the copyright Selden
(Plaintiff) obtained could not give him the exclusive right to use the
bookkeeping system or the forms necessary to such use. Reversed and
remanded.
 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. Petitioner’s request to the NBI to apprehend and prosecute
illegal manufacturers of his work led to the issuance of search warrants
against respondent Salinas, alleged to be reproducing and distributing said
models in violation of the IP Code. Respondent moved to quash the
warrants on the ground that petitioner’s work is not artistic in nature and is
a proper subject of a patent, not copyright. Petitioner insists that the IP
Code protects a work from the moment of its creation regardless of its
nature or purpose. The trial court quashed the warrants. Petitioner argues
that the copyright certificates over the model are prima facie evidence of its
validity. CA affirmed the trial court’s decision.
Issues:
(1) Whether or not petitioner’s model is an artistic work subject to copyright
protection.
(2) Whether or not petitioner is entitled to copyright protection on the basis
of the certificates of registration issued to it.
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.
PEARL & DEAN PHIL INC. VS. SHOEMART- Trademark, Copyright and
Patents
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 or services of an enterprise and
shall include a stamped or marked container of goods. The scope of a
copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain. Patentable
inventions 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.
FACTS:
Pearl and Dean is a corporation in the manufacture of advertising display
units also known as light boxes, which were manufactured by Metro
Industrial Services. A copyright Registration was obtained in 1981. These
were marketed in the name of "Poster Ads". They also applied for a
registration of trademark with the Bureau of Patents in 1983, but was only
approved in 19988. In 1985, petitioner had n agreement with respondent
Shoemart Inc (SMI) to install these light boxes in their Makati and Cubao
branch, Only the Makati branch was able to sigh the agreement. In 1986,
the contract was rescinded unilaterally by SMI, and instead contracted with
Metro Industrial Services. They installed these lightboxes in different SM
city branches, including Cubao and Makati, with association with North
Edsa Marketing Inc (NEMI), SMI's sister company. Petitioner requested
SMI and NEMI to put down their installations of the light boxes, and
payment of compensatory damages worth P20M. Claiming that
respondents failed to comply, they filed a case for infringement of
trademark and copyright, unfair competition and damages. RTC ruled in
favor of petitioner, but CA reversed.
ISSUES:
(1) Whether there was a copyright infringement
(2) Whether there was a patent infringement
(3) Whether there was a trademark infringement
(4) Whether there was unfair competition
RULING: No to all.
(1) Copyright is a statutory right, subject to the terms and conditions
specified in the statute. Therefore, it can only cover the works falling within
the statutory enumeration or description. Since the copyright was classified
under class "O" works, which includes "prints, pictorial illustrations,
advertising copies, labels, tags and box wraps," and does not include the
light box itself. A lightbox, even admitted by the president of petitioner
company, was neither a literary nor an artistic work but an engineering or
marketing invention, thus not included under a copyright.
(2) Petitioner was not able to secure a patent for its lightboxes, and cannot
legally prevent anyone from manufacturing or commercially using the
same. Patent has a three-fold purpose: a) to foster and reward invention; b)
promotes disclosures of invention and permit public to use the same upon
expiration; c) stringent requirements for patent protection to ensure in the
public domain remain there for free use of the public. Since petitioner was
not able to go through such examination, it cannot exclude others from
manufacturing, or selling such lightboxes. No patent, no protection.
(3) The certificate of registration issued by the Director of Patents gives
exclusive right to use its own symbol only to the description specified in the
certificate. It cannot prevent others to use the same trademark with a
different description.
(4) "Poster Ads" is a general term that cannot be associated specifically to
Pearl and Dean, thus it cannot be considered to use such term to be unfair
competition against the petitioner.
ABS-CBN V. PHILIPPINE MULTI-MEDIA SYSTEM (G.R. NO. 175769-70)
Facts:
Petitioner ABS-CBN, a broadcasting corporation, filed a complaint against
respondent PMSI alleging that the latter’s unauthorized rebroadcasting of
Channels 2 and 23 infringed on its broadcasting rights and copyright. PMSI
posits that it was granted a franchise to operate a digital direct-to-home
satellite service and that the rebroadcasting was in accordance with the NTC
memo to carry television signals of authorized television broadcast stations,
which includes petitioner’s programs. The IPO Bureau of Legal Affairs found
PMSI to have infringed petitioner’s broadcasting rights and ordered it to
permanently desist from rebroadcasting. On appeal, the IPO Director
General found for PMSI. CA affirmed.
responsibilities imposed upon broadcasting organizations, such as ABS-
CBN.
ABS-CBN creates and transmits its own signals; PMSI merely carries such
signals which the viewers receive in its unaltered form. PMSI does not
produce, select, or determine the programs to be shown in Channels 2 and
23. Likewise, it does not pass itself off as the origin or author of such
programs. Insofar as Channels 2 and 23 are concerned, PMSI merely
retransmits the same in accordance with Memorandum Circular 04-08-88.
With regard to its premium channels, it buys the channels from content
providers and transmits on an as-is basis to its viewers. Clearly, PMSI does
not perform the functions of a broadcasting organization; thus, it cannot be
said that it is engaged in rebroadcasting Channels 2 and 23.

Issue:
Whether or not petitioner’s broadcasting rights and copyright are infringed.

Ruling:

NO.

The Director-General of the IPO correctly found that PMSI is not engaged in
rebroadcasting and thus cannot be considered to have infringed ABS-CBN’s
broadcasting rights and copyright.

Section 202.7 of the IP Code defines broadcasting as “the transmission by

wireless means for the public reception of sounds or of images or of
representations thereof; such transmission by satellite is also ‘broadcasting’
where the means for decrypting are provided to the public by the
broadcasting organization or with its consent.” On the other
hand, rebroadcasting as defined in Article 3(g) of the International
Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations, otherwise known as the 1961 Rome
Convention, of which the Republic of the Philippines is a signatory, is “the
simultaneous broadcasting by one broadcasting organization of the
broadcast of another broadcasting organization.” The Working Paper
prepared by the Secretariat of the Standing Committee on Copyright and
Related Rights defines broadcasting organizations as “entities that take the
financial and editorial responsibility for the selection and arrangement of, and
investment in, the transmitted content.” Evidently, PMSI would not qualify as
a broadcasting organization because it does not have the aforementioned
 be capable of existing separately from the article. The separate
Star Athletica v. Varsity Brands identification prong of this test requires only that the decisionmaker be able
to distinguish a two- or three-dimensional element that has pictorial,
Facts of the case graphical, or sculptural qualities. To satisfy the independent-existence
requirement, the decisionmaker must determine that the element can exist
as its own pictorial, graphical, or sculptural work and not merely as a part of
Varsity Brands, Inc. (Varsity) designs and manufactures clothing and
a replica of the useful article in a different medium. This interpretation is
accessories for use in various athletic activities, including cheerleading.
consistent not only with the text of the Copyright Act but also with its
Design concepts for the clothing incorporate elements such as colors,
history. In this case, the decoration designs of cheerleading uniforms
shapes, lines, etc., and do not consider the functionality of the final
satisfy both prongs of the test because the decorations can be identified as
clothing. Varsity received copyright registration for the two-dimensional
having their own pictorial, graphical, or sculptural qualities, and they would
artwork of the designs at issue in this case, which were very similar to ones
be copyrightable on their own if separated from the uniforms. The Court
that Star Athletica, LLC (Star) was advertising. Varsity sued Star and
determined that the fact that the designs on their own still retained the
alleged, among other claims, that Star violated the Copyright Act. Star
outline of the cheerleading uniforms did not prevent them from being
asserted counterclaims, including one that alleged that Varsity had made
copyrightable because artwork designed to fit a particular space or object
fraudulent representations to the Copyright Office because the designs at
does not replicate that object or space when applied to a different medium.
issue were not copyrightable. Both parties filed motions for summary
The Court rejected alternative tests for separability as ungrounded in the
judgment. Star argued that Varsity did not have valid copyrights because
text of the statute.
the designs were for “useful articles,” which cannot be copyrighted, and the
designs cannot be separated from the uniforms themselves, which also
In her opinion concurring in the judgment, Justice Ruth Bader Ginsburg
makes the designs impossible to copyright. Varsity argued that the designs
wrote that separability analysis was unnecessary in this case because the
were separable and non-functional, and therefore that the copyrights were
designs are themselves copyrightable and are merely reproduced on useful
valid and had been infringed. The district court granted summary judgment
articles. The designs are clearly pictorial, graphical, or sculptural works,
for Star and held that the designs were integral to the functionality of the
which are copyrightable. The copyright for such a work includes the right to
uniform. The U.S. Court of Appeals for the Sixth Circuit reversed and held
reproduce the work on a useful article and exclude a would-be infringer
that the Copyright Act allows graphic features of a design to be copyrighted
from doing the same.
even when those designs are not separable from a “useful article.”
Justice Stephen G. Breyer wrote a dissent in which he argued that,
although he agreed with the majority opinion’s analysis of the test that the
Question statute required, the designs at issue in this case failed the test. A feature
is not separable from the useful article if it cannot be extracted without
What is the appropriate test to determine whether a feature of a “useful necessarily replicating the useful article in another medium. Because the
article” is copyrightable under the Copyright Act? designs in this case could only be represented as pictures, and therefore
replicas, of the uniforms, they were not capable of existing independently of
A feature of a useful article is copyrightable if it can be perceived as a two- the useful article. Based on the statutory text and relevant case law, the
or three-dimensional artwork that is separable from the useful article and if designs fail the second prong of separability test. Justice Anthony M.
it would be a protectable pictorial, graphical, or sculptural work on its own Kennedy joined in the dissent.
(or if applied to another medium, such as a canvas). Justice Clarence
Thomas delivered the opinion of the 6-2 majority. The Court held that the
Copyright Act clearly requires that, to be copyrightable, a design element of
a useful article must be able to be identified separately from the article and