Andal, John Caleb C.
construction at that time, SMI offered as an alternative, SM Makati
LIP Case #1 – Copyright
[G.R. No. 148222. August 15, 2003]
PEARL & DEAN
(PHIL.), INCORPORATED, petitioner, vs. SHOEMART,
INCORPORATED, and NORTH EDSA
MARKETING, INCORPORATED, respondents.
Corona, J.:
Doctrine: Copyright, in the strict sense of the term, is purely a
statutory right. Being a mere statutory grant, the rights are limited to
what the statute confers. It may be obtained and enjoyed only with
respect to the subjects and by the persons, and on terms and
conditions specified in the statute. Accordingly, it can cover only the
works falling within the statutory enumeration or description.
Facts: Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation
engaged in the manufacture of advertising display units simply
referred to as light boxes. These units utilize specially printed posters
sandwiched between plastic sheets and illuminated with back
lights. Pearl and Dean was able to secure a Certificate of Copyright
Registration dated January 20, 1981 over these illuminated display
units. The advertising light boxes were marketed under the
trademark Poster Ads. The application for registration of the
trademark was filed with the Bureau of Patents, Trademarks and
Technology Transfer on June 20, 1983, but was approved only on
September 12, 1988, per Registration No. 41165. From 1981 to
about 1988, Pearl and Dean employed the services of Metro
Industrial Services to manufacture its advertising displays. Sometime
in 1985, Pearl and Dean negotiated with defendant-appellant
Shoemart, Inc. (SMI) for the lease and installation of the light boxes
in SM City North Edsa. Since SM City North Edsa was under
1|LIP_ COPYRIGHT CASES
and SM Cubao, to which Pearl and Dean agreed. On September 11,
1985, Pearl and Deans General Manager, Rodolfo Vergara,
submitted for signature the contracts covering SM Cubao and SM
Makati to SMIs Advertising Promotions and Publicity Division
Manager, Ramonlito Abano. Only the contract for SM Makati,
however, was returned signed. On October 4, 1985, Vergara wrote
Abano inquiring about the other contract and reminding him that their
agreement for installation of light boxes was not only for its SM
Makati branch, but also for SM Cubao. SMI did not bother to reply.
Instead, in a letter dated January 14, 1986, SMIs house counsel
informed Pearl and Dean that it was rescinding the contract for SM
Makati due to non-performance of the terms thereof. In his reply
dated February 17, 1986, Vergara protested the unilateral action of
SMI, saying it was without basis. In the same letter, he pushed for
the signing of the contract for SM Cubao. Two years later, Metro
Industrial Services, the company formerly contracted by Pearl and
Dean to fabricate its display units, offered to construct light boxes for
Shoemarts chain of stores. SMI approved the proposal and ten (10)
light boxes were subsequently fabricated by Metro Industrial for
SMI. After its contract with Metro Industrial was terminated, SMI
engaged the services of EYD Rainbow Advertising Corporation to
make the light boxes. Some 300 units were fabricated in
1991. These were delivered on a staggered basis and installed at
SM Megamall and SM City. Sometime in 1989, Pearl and Dean,
received reports that exact copies of its light boxes were installed at
SM City and in the fastfood section of SM Cubao. Upon
investigation, Pearl and Dean found out that aside from the two (2)
reported SM branches, light boxes similar to those it manufactures
were also installed in two (2) other SM stores. It further discovered
that defendant-appellant North Edsa Marketing Inc. (NEMI), through
its marketing arm, Prime Spots Marketing Services, was set up
primarily to sell advertising space in lighted display units located in
SMIs different branches. Pearl and Dean noted that NEMI is a sister
company of SMI.
In the light of its discoveries, Pearl and Dean sent a letter dated
December 11, 1991 to both SMI and NEMI enjoining them to cease
using the subject light boxes and to remove the same from SMIs
establishments. It also demanded the discontinued use of the
trademark Poster Ads, and the payment to Pearl and Dean of
compensatory damages in the amount of Twenty Million Pesos
(P20,000,000.00).
Upon receipt of the demand letter, SMI suspended the leasing of two
hundred twenty-four (224) light boxes and NEMI took down its
advertisements for Poster Ads from the lighted display units in SMIs
stores. Claiming that both SMI and NEMI failed to meet all its
demands, Pearl and Dean filed this instant case for infringement of
trademark and copyright, unfair competition and damages. In
denying the charges hurled against it, SMI maintained that it
independently developed its poster panels using commonly known
techniques and available technology, without notice of or reference
to Pearl and Deans copyright. SMI noted that the registration of the
mark Poster Ads was only for stationeries such as letterheads,
envelopes, and the like. Besides, according to SMI, the word Poster
Ads is a generic term which cannot be appropriated as a trademark,
and, as such, registration of such mark is invalid. It also stressed that
Pearl and Dean is not entitled to the reliefs prayed for in its complaint
since its advertising display units contained no copyright notice, in
violation of Section 27 of P.D. 49. SMI alleged that Pearl and Dean
had no cause of action against it and that the suit was purely
intended to malign SMIs good name. On this basis, SMI, aside from
praying for the dismissal of the case, also counterclaimed for moral,
actual and exemplary damages and for the cancellation of Pearl and
Deans Certification of Copyright Registration No. PD-R-2558 dated
January 20, 1981 and Certificate of Trademark Registration No.
4165 dated September 12, 1988. NEMI, for its part, denied having
2|LIP_ COPYRIGHT CASES
manufactured, installed or used any advertising display units, nor
having engaged in the business of advertising. It repleaded SMIs
averments, admissions and denials and prayed for similar reliefs and
counterclaims as SMI.
Issue: Whether or not SMI infringed the copyright of P&D’s light
boxes.
Held: NO. Although petitioners copyright certificate was entitled
Advertising Display Units (which depicted the box-type electrical
devices), its claim of copyright infringement cannot be sustained.
Copyright, in the strict sense of the term, is purely a statutory
right. Being a mere statutory grant, the rights are limited to what the
statute confers. It may be obtained and enjoyed only with respect to
the subjects and by the persons, and on terms and conditions
specified in the statute. Accordingly, it can cover only the works
falling within the statutory enumeration or description. P & D secured
its copyright under the classification class O work. This being so,
petitioners copyright protection extended only to the technical
drawings and not to the light box itself because the latter was not at
all in the category of prints, pictorial illustrations, advertising copies,
labels, tags and box wraps. Stated otherwise, even as we find that P
& D indeed owned a valid copyright, the same could have referred
only to the technical drawings within the category of pictorial
illustrations. It could not have possibly stretched out to include the
underlying light box. The strict application of the laws enumeration in
Section 2 prevents us from giving petitioner even a little leeway, that
is, even if its copyright certificate was entitled Advertising Display
Units. What the law does not include, it excludes, and for the good
reason: the light box was not a literary or artistic piece which could
be copyrighted under the copyright law. And no less clearly, neither
could the lack of statutory authority to make the light box
copyrightable be remedied by the simplistic act of entitling the
copyright certificate issued by the National Library as Advertising
Display Units.
In fine, if SMI and NEMI reprinted P & Ds technical drawings for sale
to the public without license from P & D, then no doubt they would
have been guilty of copyright infringement. But this was not the
case. SMIs and NEMIs acts complained of by P & D were to have
units similar or identical to the light box illustrated in the technical
drawings manufactured by Metro and EYD Rainbow Advertising, for
leasing out to different advertisers. Was this an infringement of
petitioner’s copyright over the technical drawings? We do not think
so.
*Might be asked*
ON THE ISSUE OF PATENT INFRINGEMENT
For some reason or another, petitioner never secured a patent for
the light boxes. It therefore acquired no patent rights which could
have protected its invention, if in fact it really was. And because it
had no patent, petitioner could not legally prevent anyone from
manufacturing or commercially using the contraption. In Creser
Precision Systems, Inc. vs. Court of Appeals, we held that there can
be no infringement of a patent until a patent has been issued, since
whatever right one has to the invention covered by the patent arises
alone from the grant of patent. x x x (A)n inventor has no common
law right to a monopoly of his invention. He has the right to make use
of and vend his invention, but if he voluntarily discloses it, such as by
offering it for sale, the world is free to copy and use it with
impunity. A patent, however, gives the inventor the right to exclude
all others. As a patentee, he has the exclusive right of making,
selling or using the invention. On the assumption that petitioners
3|LIP_ COPYRIGHT CASES
advertising units were patentable inventions, petitioner revealed
them fully to the public by submitting the engineering drawings
thereof to the National Library. To be able to effectively and legally
preclude others from copying and profiting from the invention, a
patent is a primordial requirement. No patent, no protection. The
ultimate goal of a patent system is to bring new designs and
technologies into the public domain through disclosure. Ideas, once
disclosed to the public without the protection of a valid patent, are
subject to appropriation without significant restraint.
ON THE ISSUE OF TRADEMARK INFRINGEMENT
Under the circumstances, the Court of Appeals correctly
cited Faberge Inc. vs. Intermediate Appellate Court, where we,
invoking Section 20 of the old Trademark Law, ruled that the
certificate of registration issued by the Director of Patents can confer
(upon petitioner) the exclusive right to use its own symbol only to
those goods specified in the certificate, subject to any conditions and
limitations specified in the certificate x x x. One who has adopted and
used a trademark on his goods does not prevent the adoption and
use of the same trademark by others for products which are of a
different description. Faberge, Inc. was correct and was in fact
recently reiterated in Canon Kabushiki Kaisha vs. Court of Appeals.
Assuming arguendo that Poster Ads could validly qualify as a
trademark, the failure of P & D to secure a trademark registration for
specific use on the light boxes meant that there could not have been
any trademark infringement since registration was an essential
element thereof.
ON THE ISSUE OF UNFAIR COMPETITION
By the nature of things, there can be no unfair competition under the
law on copyrights although it is applicable to disputes over the use of
trademarks. Even a name or phrase incapable of appropriation as a
trademark or tradename may, by long and exclusive use by a
business (such that the name or phrase becomes associated with
the business or product in the mind of the purchasing public), be
entitled to protection against unfair competition. In this case, there
was no evidence that P & Ds use of Poster Ads was distinctive or
well-known. As noted by the Court of Appeals, petitioner’s expert
witnesses himself had testified that Poster Ads was too generic a
name. So it was difficult to identify it with any company, honestly
speaking. This crucial admission by its own expert witness that
Poster Ads could not be associated with P & D showed that, in the
mind of the public, the goods and services carrying the trademark
Poster Ads could not be distinguished from the goods and services
of other entities. This fact also prevented the application of the
doctrine of secondary meaning. Poster Ads was generic and
incapable of being used as a trademark because it was used in the
field of poster advertising, the very business engaged in by
petitioner. Secondary meaning means that a word or phrase
originally incapable of exclusive appropriation with reference to an
article in the market (because it is geographically or otherwise
descriptive) might nevertheless have been used for so long and so
exclusively by one producer with reference to his article that, in the
trade and to that branch of the purchasing public, the word or phrase
has come to mean that the article was his property. The admission
by petitioners own expert witness that he himself could not associate
Poster Ads with petitioner P & D because it was too generic definitely
precluded the application of this exception.

4|LIP_ COPYRIGHT CASES

Case 2- Boss
NBI MICROSOFT CORPORATION & LOTUS DEVELOPMENT
CORP., petitioners, vs. JUDY C. HWANG, BENITO KEH &
YVONNE K. CHUA/BELTRON COMPUTER PHILIPPINES INC.,
JONATHAN K. CHUA, EMILY K. CHUA, BENITO T. SANCHEZ,
NANCY I. VELASCO, ALFONSO CHUA, ALBERTO CHUA,
SOPHIA ONG, DEANNA CHUA/TAIWAN MACHINERY DISPLAY
& TRADE CENTER, INC., and THE SECRETARY OF
JUSTICE, respondents.
Doctrine: Infringement of a copyright is a trespass on a private
domain owned and occupied by the owner of the copyright, and,
therefore, protected by law, and infringement of copyright, or piracy,
which is a synonymous term in this connection, consists in the doing
by any person, without the consent of the owner of the copyright, of
anything the sole right to do which is conferred by statute on the
owner of the copyright.
FACTS: Petitioner Microsoft Corporation owns the copyright
and trademark to several computer software. Respondents Benito
Keh and Yvonne Keh are the President/Managing Director and
General Manager, respectively, of respondent Beltron Computer
Philippines. In May 1993, Microsoft and Beltron entered into a
Licensing Agreement (Agreement). Under Section 2(a) of the
Agreement, as amended in January 1994, Microsoft authorized
Beltron, for a fee, to:
(i) xxx reproduce and install no more than one (1) copy of
[Microsoft] software on each Customer System hard disk
or Read Only Memory (ROM);
(ii) (ii) xxx distribute directly or indirectly and license copies
of the Product (reproduced as per Section 2(a)(i) and/or
acquired from Authorized Replicator or Authorized
Distributor) in object code form to end users.
5|LIP_ COPYRIGHT CASES
Afterwards, Microsoft learned that respondents were illegally copying
and selling Microsoft software. Microsoft, through its Philippine
agent, hired the services of Pinkerton Consulting Services (PCS), a
private investigative firm and also sought the assistance of the
National Bureau of Investigation (NBI) to investigate the matter.
On 10 November 1995, PCS employee John Benedic [8] Sacriz
(Sacriz) and NBI agent Dominador Samiano, Jr. (Samiano), posing
as representatives of a computer shop,[9] bought computer hardware
(central processing unit (CPU) and computer monitor) and software
(12 computer disks (CDs) in read-only memory (ROM) format) from
respondents. The CPU contained pre-installed[10] Microsoft Windows
3.1 and MS-DOS software. The 12 CD-ROMs, encased in plastic
containers with Microsoft packaging, also contained Microsoft
software.[11] At least two of the CD-ROMs were installers, so-called
because they contain several software
On 17 November 1995, Microsoft applied for search warrants
against respondents in the Regional Trial Court, Branch 23, Manila
(RTC).The RTC granted Microsofts application and issued two
search warrants (Search Warrant Nos. 95-684 and 95-685). Using
Search Warrant Nos. 95-684 and 95-685, the NBI searched the
premises of Beltron and TMTC and seized several computer-related
hardware, software, accessories, and paraphernalia. Among these
were 2,831 pieces of CD-ROMs containing Microsoft software.
Respondents denied the charges alleging that alleged that: (1)
Microsofts real intention in filing the complaint under I.S. No. 96-193
was to pressure Beltron to pay its alleged unpaid royalties, thus
Microsoft should have filed a collection suit instead of a criminal
complaint; (2) TMTC bought the confiscated 59 boxes of MS-DOS
CDs from a Microsoft dealer in Singapore (R.R. Donnelly); (3)
respondents are not the source of the Microsoft Windows 3.1
software pre-installed in the CPU.
Before the DOJ, State Prosecutor Jocelyn A. Ong (State Prosecutor
Ong) recommended the dismissal of Microsofts complaint for lack of
merit and insufficiency of evidence.
It appears that prior to the issuance of the subject search warrants,
complainant had some business transactions with the respondent
[Beltron] along the same line of products. Complainant failed to
reveal the true circumstances existing between the two of them as it
now appears, indeed the search warrant[s] xxx [are] being used as a
leverage to secure collection of the money obligation which the Court
cannot allow.
Ong stated that, absent a resolution from the proper court of (sic)
whether or not the contract is still binding between the parties at the
time of the execution of the search warrants, this office cannot pass
upon the issue of whether respondent/s is or are liable for the
offense charged.
Also, Ong noted that there exists Official Receipts from the Bureau of
Customs; and Import Entry Declaration of the Bureau of Customs to
prove that indeed the Microsoft software in their possession were
bought from Singapore. Thus, respondent/s in this case has/have no
intent to defraud the public, as provided under Article 189 of the
Revised Penal Code, for they bought said Microsoft MS-DOS 6.0
from an alleged licensee of Microsoft in Singapore, with all the
necessary papers. In their opinion, what they have are genuine
Microsoft software, therefore no unfair competition exist.
ISSUES: Whether the DOJ acted with grave abuse of discretion in
not finding probable cause to charge respondents with copyright
infringement and unfair competition.
HELD: YES. Contrary to the DOJs ruling, the gravamen of copyright
infringement is not merely the unauthorized manufacturing of
intellectual works but rather the unauthorized performance of any of
6|LIP_ COPYRIGHT CASES
the acts covered by Section 5. Hence, any person who performs any
of the acts under Section 5 without obtaining the copyright owners
prior consent renders himself civilly[40] and criminally[41] liable for
copyright infringement.
Infringement of a copyright is a trespass on a private domain
owned and occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or piracy, which is a
synonymous term in this connection, consists in the doing by any
person, without the consent of the owner of the copyright, of anything
the sole right to do which is conferred by statute on the owner of the
copyright.Significantly, under Section 5(A), a copyright owner is
vested with the exclusive right to copy, distribute, multiply, [and] sell
his intellectual works.
The Court in ruling that DOJ committed grave abuse of
discretion reasoned out the following;
1. Being the copyright and trademark owner of Microsoft
software, Microsoft acted well within its rights in filing the
complaint under I.S. No. 96-193 based on the
incriminating evidence obtained from respondents.
Hence, it was highly irregular for the DOJ to hold, based
on the RTC Order of 19 July 1996, that Microsoft sought
the issuance of Search Warrant Nos. 95-684 and 95-
685, and by inference, the filing of the complaint under
I.S. No. 96-193, merely to pressure Beltron to pay its
overdue royalties to Microsoft. Significantly, in its
Decision in CA-G.R. CV No. 54600 dated 29 November
2001, the Court of Appeals set aside the RTC Order of
19 July 1996. Respondents no longer contested that
ruling which became final on 27 December 2001.
2. The Court finds that the 12 CD-ROMs (installer and non-
installer) and the CPU with pre-installed Microsoft
 software Sacriz and Samiano bought from respondents
and the 2,831 Microsoft CD-ROMs seized from
respondents suffice to support a finding of probable
cause to indict respondents for copyright infringement
under Section 5(A) in relation to Section 29 of PD 49 for
unauthorized copying and selling of protected intellectual
works.

The counterfeit non-installer CD-ROMs Sacriz and Samiano bought

from respondents also suffice to support a finding of probable cause
to indict respondents for unfair competition under Article 189(1) of
the Revised Penal Code for passing off Microsoft products. From the
pictures of the CD-ROMs packaging,[55] one cannot distinguish them
from the packaging of CD-ROMs containing genuine Microsoft
software. Such replication, coupled with the similarity of content of
these fake CD-ROMs and the CD-ROMs with genuine Microsoft
software, implies intent to deceive.

Respondents contention that the 12 CD-ROMs Sacriz and Samiano

purchased cannot be traced to them because the receipt for these
articles does not indicate its source is unavailing. The receipt in
question should be taken together with Microsofts claim that Sacriz
and Samiano bought the CD-ROMs from respondents.[56] Together,
these considerations point to respondents as the vendor of the
counterfeit CD-ROMs.

7|LIP_ COPYRIGHT CASES

Case 3- Rina
Copyright Is Distinct From Trademark And Patents
Doctrine: 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.
JESSIE G. CHING, 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),
G.R. No. 161295. June 29, 2005
CALLEJO, SR., J.:
Facts: 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. 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.
8|LIP_ COPYRIGHT CASES
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.
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 RTC granted the
application and issued a search warrant for the seizure of the
aforecited articles.
The respondents filed a motion to quash the search warrants
alleging 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.
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 in Malaloan v. Court of Appeals,
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.
TRIAL COURT: quashed the search warrant finding that there
was no probable cause, 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.
 COURT OF APPEALS: 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
The petitioner posits that 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, 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. 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.
Issues:
1. Whether or not the RTC had jurisdiction to resolve the issue
whether the utility models of petitioner are copyrightable
2. Whether or not the Leaf Spring Eye Bushing for Automobile
and the Vehicle Bearing Cushion are copyrightable
Held:
1. Yes. 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
9|LIP_ COPYRIGHT CASES
whether probable cause existed, in accordance with Section 4, Rule
126 of the Rules of Criminal Procedure.
In Solid Triangle Sales Corporation v. The Sheriff of RTC QC,
Br. 93, 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.
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 was being copied and
distributed by the respondents. Thus, the ownership of a valid
copyright is essential.
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
2. No. 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.
 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. 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.
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. 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.
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. 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. Functional components of useful articles, no matter
how artistically designed, have generally been denied copyright
protection unless they are separable from the useful article.
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
10 | L I P _ C O P Y R I G H T C A S E S
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, unless
there be something in the context of the state which would repel
such inference, 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.
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
Appeals] 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:
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.
PETITION DENIED.
Case no. 4 – Mel
DOCTRINE: Work or intellectual creation subsists from the
moment of its creation.
UNILEVER PHILIPPINES (PRC), INC.
vs.
THE HONORABLE COURT OF APPEALS and PROCTER AND
GAMBLE PHILIPPINES, INC.
G.R. No. 119280 August 10, 2006 ; CORONA, J.
FACTS:
On August 24, 1994 Procter and Gamble Phils., Inc. (P&G) 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&GP’s products, a liquid
bleach called "Ace."
1.10. Substantially and materially imitating the aforesaid "tac-tac" key
visual of P&GP and in blatant disregard of P&GP’s 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
11 | L I P _ C O P Y R I G H T C A S E S
presentation and sound effects almost [identical] or substantially
similar to P&GP’s "tac-tac" key visual.
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.
Judge Gorospe issued an order granting a temporary restraining
order and set a hearing for Unilever to show cause why the writ of
preliminary injunction should not issue which the latter filed an
answer with opposition to preliminary injunction.
Unilever 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.
ISSUE: Does the right to copyright vest upon the moment of
creation?
HELD: Yes.
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 petitioner’s contention, the intellectual
creator’s 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&GP’s 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.
SIDE ISSUE:
 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.
WHEREFORE, the petition is hereby DENIED.
Certainly, the court’s 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….
o There was of course extreme urgency for the court a
quo to act on plaintiff’s 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.

 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).

 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.

12 | L I P _ C O P Y R I G H T C A S E S
CASE #5 – CRUZ, YRAH MICARLA M.
Works Protected by Copyright
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.
VENANCIO SAMBAR vs. LEVI STRAUSS & CO., and LEVI
STRAUSS (PHIL.), INC.
G.R. No. 132604. March 6, 2002
QUISUMBING, J.:
FACTS: Levi Strauss & Co., (LS&Co.) and Levi Strauss Phil,
Inc., (LSPI) 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.
Private respondents filed a complaint against Sambar, doing
business under the name and style of CVSGE alleging that LS&Co.,
an internationally known clothing manufacturer, owns the arcuate
design trademark which was registered under U.S. Trademark
Registration and in the Principal Register of trademarks with the
Philippine Patent; that through a Trademark Technical Data and
Technical Assistance Agreement with LSPI, LS&Co. granted LSPI a
non-exclusive license to use the arcuate trademark in its
manufacture and sale of Levis pants, jackets and shirts in the
Philippines; that LS&Co. also appointed LSPI as its agent and
attorney-in-fact to protect its trademark in the Philippines; and that
CVSGIC and Venancio Sambar, without the consent and authority of
private respondents and in infringement and unfair competition, sold
13 | L I P _ C O P Y R I G H T C A S E S
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. 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.
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.
RTC ruled in favor of Private Respondents and issued a writ of
preliminary injunction enjoining CVSGIC and petitioner from
manufacturing, advertising and selling pants with the arcuate design
on their back pockets and ordered CVS Garment and Industrial
Company (CVSGIC) and petitioner Venancio Sambar to pay private
respondents solidarily. RTC also granted private respondents prayer
for the cancellation of petitioner’s copyright registration. CA
affirmed.
ISSUES: 1. Did petitioner infringe on private respondents arcuate
design? (in case tanungin ni sir)
 2. Is petitioner solidarily liable with CVS Garments 3) Both the trial court and the Court of Appeals found that there was
Industrial Corporation? infringement. Thus, the award of damages (except nominal) and
3. Are private respondents entitled to nominal, temperate cancellation of petitioner’s copyright are appropriate. The
and exemplary damages and cancellation of petitioners copyright? cancellation of petitioner’s copyright was justified because
petitioner’s copyright cannot prevail over respondents’ registration in
HELD: 1) YES. The backpocket design of Europress jeans, a the Principal Register of Bureau of Patents, Trademarks, and
double arc intersecting in the middle was the same as Levi’s’ mark, Technology Transfer. According to private respondents, the essence
also a double arc intersecting at the center. Although the trial court of copyright registration is originality and a copied design is
found differences in the two designs, these differences were not inherently non-copyrightable. They insist that registration does not
noticeable. Further, private respondents said, infringement of confer originality upon a copycat version of a prior design.
trademark did not require exact similarity. Colorable imitation enough
Award of damages is clearly provided in Section 23 of the Trademark
to cause confusion among the public, was sufficient for a trademark
Law, while cancellation of petitioner’s copyright finds basis on the
to be infringed. Private respondents explained that in a market
fact that the design was a mere copy of that of private respondents’
research they conducted with 600 respondents, the result showed
trademark.
that the public was confused by Europress trademark vis the Levi’s
trademark. To be entitled to copyright, the thing being copyrighted must be
original, created by the author through his own skill, labor and
2) YES. Both the courts below found that petitioner had a copyright judgment, without directly copying or evasively imitating the
over Europress arcuate design and that he consented to the use of work of another
said design by CVSGIC. SC was bound by this finding, especially in
the absence of a showing that it was tainted with arbitrariness or
palpable error. 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’s defense in
this case was an affirmative defense. 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.

14 | L I P _ C O P Y R I G H T C A S E S
Case 6 – COPYRIGHT
G.R. No. 168662 February 19, 2008
SANRIO COMPANY LIMITED v EDGAR C. LIM, doing business
as ORIGNAMURA TRADING
Facts:
Sanrio Company Limited, a Japanese corp., owns the copyright of
various animated characters such as "Hello Kitty," "Little Twin Stars,"
"My Melody," "Tuxedo Sam" and "Zashikibuta" among others. While
it is not engaged in business in the Philippines, its products are sold
locally by its exclusive distributor, Gift Gate Incorporated (GGI). GGI
entered into licensing agreements with JC Lucas Creative Products,
Inc., Paper Line Graphics, Inc. and Melawares Manufacturing
Corporation. These local entities were allowed to manufacture
certain products bearing the animated characters for the local
market.
Sometime in 2001, due to the deluge of counterfeit Sanrio products,
GGI asked IP Manila Associates (IPMA) to conduct a market
research to identify those factories, department stores and retail
outlets manufacturing and/or selling fake Sanrio items. After
conducting several test-buys, IPMA confirmed that respondent's
Orignamura Trading in Tutuban Center, Manila was selling
imitations.
IPMA agents Lea Carmona and Arnel Dausan executed a joint
affidavit. IPMA forwarded the affidavit to the NBI which filed an
application for the issuance of a search warrant in the RTC of
Manila. After conducting the requisite searching inquiry, the
executive judge issued a search warrant on May 30, 2000. On the
same day, agents of the NBI searched the premises of Orignamura
Trading, they were able to seize various Sanrio products.
15 | L I P _ C O P Y R I G H T C A S E S
On April 4, 2002, petitioner, through its attorney-in-fact Teodoro Y.
Kalaw IV of the Quisumbing Torres law firm, filed a complaint-
affidavit with the Task-Force on Anti-Intellectual Property Piracy
(TAPP) of the Department of Justice (DOJ) against respondent for
violation of Section 217 Criminal Penalties (in relation to Sections
177 and 178) of the Intellectual Property Code (IPC). (SEE
Provisions)
Respondent asserted that he committed no violation of the
provisions of the IPC because he was only a retailer. Respondent
neither reproduced nor manufactured any of petitioner's copyrighted
item; thus, he did not transgress the economic rights of petitioner.
Moreover, he obtained his merchandise from authorized
manufacturers of petitioner's products. The TAPP evidence to
support the respondents claim that the merchandise were obtained
from authorized manufacturers.
Thus, in a resolution it dismissed the complaint due to insufficiency
of evidence. Petitioner moved for reconsideration but it was denied.
It filed a petition for review in the Office of the Chief State Prosecutor
of the DOJ. In a resolution, the Office of the Chief State Prosecutor
affirmed the TAPP resolution.
Aggrieved, petitioner filed a petition for certiorari in the CA. On May
3, 2005, the CA dismissed the petition on the ground of prescription.
It based its action on Act 3326. Because no complaint was filed in
court within two years after the commission of the alleged violation,
the offense had already prescribed. The CA concluded that the DOJ
did not commit grave abuse of discretion in dismissing the petition for
review. To be criminally liable for violation of Section 217.3 of the
IPC, the following requisites must be present:
1. possession of the infringing copy and
 2. knowledge or suspicion that the copy is an infringement of
the genuine article.
The CA agreed with the DOJ that petitioner failed to prove that
respondent knew that the merchandise he sold was counterfeit.
Respondent, on the other hand, was able to show that he obtained
these goods from legitimate sources. Petitioner moved for
reconsideration but it was denied.
Issue: Whether or not the CA erred in concluding that the alleged
violations of the IPC had prescribed.
reason, courts generally do not interfere with the results of such
proceedings. A prosecutor alone determines the sufficiency of
evidence that will establish probable cause justifying the filing of a
criminal information against the respondent. By way of exception,
however, judicial review is allowed where respondent has clearly
established that the prosecutor committed grave abuse of discretion.
Otherwise stated, such review is appropriate only when the
prosecutor has exercised his discretion in an arbitrary, capricious,
whimsical or despotic manner by reason of passion or personal
hostility, patent and gross enough to amount to an evasion of a
positive duty or virtual refusal to perform a duty enjoined by law.

Held: The prosecutors in this case consistently found that no probable

No, it has not prescribed. Section 2 of Act 3326 provides that the
prescriptive period for violation of special laws starts on the day such
offense was committed and is interrupted by the institution of
proceedings against respondent (i.e., the accused). Petitioner in this
instance filed its complaint-affidavit on April 4, 2002 or one year, ten
months and four days after the NBI searched respondent's premises
and seized Sanrio merchandise therefrom. Although no information
was immediately filed in court, respondent's alleged violation had not
yet prescribed.
cause existed against respondent for violation of the IPC. They were
in the best position to determine whether or not there was probable
cause. We find that they arrived at their findings after carefully
evaluating the respective evidence of petitioner and respondent.
Their conclusion was not tainted with grave abuse of discretion.
WHEREFORE, the petition is hereby DENIED.

The filing of the complaint for purposes of preliminary investigation

interrupts the period of prescription of criminal responsibility. Thus,
the prescriptive period for the prosecution of the alleged violation of
the IPC was tolled by petitioner's timely filing of the complaint-
affidavit before the TAPP.

However, The Factual Findings Of The DOJ In Preliminary

Investigations Will Not Be Disturbed

As a general rule, a public prosecutor is afforded a wide latitude of

discretion in the conduct of a preliminary investigation. For this

16 | L I P _ C O P Y R I G H T C A S E S
Case no. 7 - Icaro prevent abuses which might result from the exercise of the exclusive
rights conferred by the patent,or on the ground of failure to work or
SMITH KLINE & FRENCH LABORATORIES, LTD. vs. COURT OF
insufficient working of the patented product, within four years from
APPEALS
the date of filing of the patent application or three years from the date
G.R. No. 121267. October 23, 2001
of grant of the patent, whichever expires last.
Ponente: J. Kapunan

DOCTRINE: The Paris Convention unequivocally and explicitly ISSUE:

respects the right of member countries to adopt legislative measures
to provide for the grant of compulsory licenses to prevent abuses
which might result from the exercise of the exclusive rights conferred
by the patent.
1. Won the petitioner’s application be granted?
2.Whether the provisions of Patent Law contravenes the
Paris Convention?

FACTS: Petitioner is the assignee of Letters Patent No. 12207

covering the pharmaceutical product Cimetidine, issued by the
BPTTT to Graham John Durant, John Collin Emmett and Robin
Genellin on 1978. On 1989, private respondent filed with the BPTTT
a petition for compulsory license to manufacture and produce its own
brand of medicines using Cimetidine. Private respondent invoked
Section 34 of Republic Act No. 165, the law then governing patents,
which states that an application for the grant of a compulsory license
under a particular patent may be filed with the BPTTT at any time
after the lapse of two (2) years from the date of grant of such patent,
if the patented invention or article relates to food or medicine, or
manufactured substances which can be used as food or medicine, or
is necessary for public health or public safety
Also, according to petitioner, the grant of a compulsory license
to private respondent is an invalid exercise of police power since it
was not shown that there is an overwhelming public necessity for
such grant, considering that petitioner is able to provide an adequate
supply of Cimetidine to satisfy the needs of the Philippine market. It
argues further that the provisions of the Patent Law on compulsory
licensing contravene the Convention of Paris for the Protection of
Industrial Property (Paris Convention), which allegedly permits the
granting of a compulsory license over a patented product only to
Held: No. Under the Sec 34 of the Patent Law ,grounds for
Compulsory Licensing. (1) Any person may apply to the Director for
the grant of a license under a particular patent at any time after the
expiration of two years from the date of the grant of the patent, under
any of the following circumstances:
(e) If the patented invention or article relates to food or medicine or
manufactured substances which can be used as food or medicine, or
is necessary for public health or public safety.
More than ten years have passed since the patent
for Cimetidine was issued to petitioner and its predecessors-in-
interest, and the compulsory license applied for by private
respondent is for the use, manufacture and sale of a medicinal
product. Furthermore, both the appellate court and the BPTTT found
that private respondent had the capability to work Cimetidine or to
make use thereof in the manufacture of a useful product.
2. No. It is clear that Section A(2) of Article 5 of the Paris
Convention unequivocally and explicitly respects the right of member
countries to adopt legislative measures to provide for the grant of
compulsory licenses to prevent abuses which might result from the

17 | L I P _ C O P Y R I G H T C A S E S
exercise of the exclusive rights conferred by the patent. An example
provided of possible abuses is failure to work; however, as such, is
merely supplied by way of an example, it is plain that the treaty does
not preclude the inclusion of other forms of categories of abuses.

Section 34 of R.A. No. 165, even if the Act was enacted prior to the
Philippines adhesion to the Convention, fits well within the
aforequoted provisions of Article 5 of the Paris Convention. In the
explanatory note of Bill No. 1156 which eventually became R.A. No.
165, the legislative intent in the grant of a compulsory license was
not only to afford others an opportunity to provide the public with the
quantity of the patented product, but also to prevent the growth of
monopolies. ]. Certainly, the growth of monopolies was among the
abuses which Section A, Article 5 of the Convention foresaw, and
which our Congress likewise wished to prevent in enacting R.A. No.
165.

18 | L I P _ C O P Y R I G H T C A S E S
Case no. 8_LALA
Patents: who may sue infringement
CRESER PRECISION SYSTEMS, INC. vs. COURT OF APPEALS
AND FLORO INTERNATIONAL CORP.
G.R. No. 118708 February 2, 1998
MARTINEZ, J.
CASE DOCTRINE: The phrase anyone possessing any right, title or
interest in and to the patented invention upon which petitioner
maintains its present suit, refers only to the patentees successors-in-
interest, assignees or grantees since actions for infringement of
patent may be brought in the name of the person or persons
interested, whether as patentee, assignees or grantees, of the
exclusive right. (SEE SECTION 42, R.A. 165 below)
FACTS: Private respondent is a domestic corporation engaged in
the manufacture, production, distribution and sale of military
armaments, munitions, airmunitions and other similar materials.
On January 23, 1990, private respondent was granted by the Bureau
of Patents, Trademarks and Technology Transfer (BPTTT), a Letters
Patent No. UM-6938 covering an aerial fuze which was published in
the September-October 1990, Vol. III, No. 5 issue of the Bureau of
Patents Official Gazette.
Sometime in November 1993, private respondent, through its
president, Mr. Gregory Floro, Jr., discovered that petitioner submitted
samples of its patented aerial fuze to the Armed Forces of the
Philippines (AFP) for testing. He learned that petitioner was claiming
the aforesaid aerial fuze as its own and planning to bid and
manufacture the same commercially without license or authority from
private respondent.
To protect its right, private respondent on December 3, 1993, sent a
letterto petitioner advising it fro its existing patent and its rights
19 | L I P _ C O P Y R I G H T C A S E S
thereunder, warning petitioner of a possible court action and/or
application for injunction, should it proceed with the scheduled
testing by the military on December 7, 1993.
In response to private respondent's demand, petitioner filed a
complaint for injunction and damages Allegations in the complaint of
petitioner:
1. that petitioner is the first, true and actual inventor of an aerial fuze
denominated as "Fuze, PDR 77 CB4 "which it developed as early as
December 1981 under the Self-Reliance Defense Posture Program
(SRDP) of the AFP;
2. that sometime in 1986, petitioner began supplying the AFP with
the said aerial fuze;
3. that private respondent's aerial fuze is identical in every respect to
the petitioner's fuze; and
4. that the only difference between the two fuzes are miniscule and
merely cosmetic in nature.
On June 27, 199, private respondent filed a petition forcertiorari,
mandamus and prohibition before respondent Court
of Appeals.Grounds:
a. Petitioner has no cause of action for infringement against private
respondent, the latter not having any patentfor the aerial fuze which it
claims to have invented and developed and allegedly infringed by
private respondent;
b. the case being an action for cancellation or invalidation of private
respondent's Letters Patent over itsown aerial fuze, the proper venue
is the Office of the Director of Patents;
c. The trial court acted in grave abuse of discretion and/or in excess
of jurisdiction in finding that petitioner hasfully established its clear
title or right to preliminary injunction;
d. The trial court acted in grave abuse of discretion and/or in excess
of jurisdiction in granting the preliminaryinjunction, it being disruptive
of the status quo; ande. The trial court acted in grave abuse of
discretion and/or in excess of jurisdiction in granting the
preliminaryinjunction thereby depriving private respondent of its
property rights over the patented aerial fuze and cause itirreparable
damages.
no infringement of a patent until a patent has been issued, since
whatever right one has to the invention covered by the patent arises
alone from the grant of patent. In short, a person or entity who has
not been granted letters patent over an invention and has not
acquired any right or title thereto either as assignee or as licensee,
has no cause of action for infringement because the right to maintain
an infringement suit depends on the existence of the patent.

On November 9, 1994, the respondent court reversed the Trial
Court's Order and dismissd the complaint filed by petitioner.
On January 17, 1995, petitioner’s motion for reconsideration was also
denied.
Hence, this present petition.
ISSUE: Whether or not the petitioner has the right to assail the
validity of the patented work of the respondent.
Thus, as correctly ruled by the respondent Court of Appeals in its
assailed decision: since the petitioner (private respondent herein) is
the patentee of the disputed invention embraced by letters of patent
UM No. 6938 issued to it on January 23, 1990 by the Bureau of
Patents, it has in its favor not only the presumption of validity of its
patent, but that of a legal and factual first and true inventor of the
invention.

HELD: The court finds the argument of the petitioner untenable.

Section 42 of R.A. 165, otherwise known as the Patent Law,

explicitly provides:

SECTION. 42. Civil action for infringement. Any patentee, or anyone

possessing any right, title or interest in and to the patented invention,
whose rights have been infringed, may bring a civil action before the
proper Court of First Instance (now Regional Trial court), to recover
from the infringer damages sustained by reason of the infringement
and to secure an injunction for the protection of his right. x x x

The phrase anyone possessing any right, title or interest in and to

the patented invention upon which petitioner maintains its present
suit, refers only to the patentees successors-in-interest, assignees or
grantees since actions for infringement of patent may be brought in
the name of the person or persons interested, whether as patentee,
assignees or grantees, of the exclusive right. Moreover, there can be

20 | L I P _ C O P Y R I G H T C A S E S
Case No. 9
PACITA I. HABANA, ALICIA L. CINCO and JOVITA N.
FERNANDO, petitioners, vs. FELICIDAD C. ROBLES and
GOODWILL TRADING CO., INC., respondents.
Facts: Petitioners are authors and copyright owners of duly
issued certificates of copyright registration covering their published
works, produced through their combined resources and efforts,
entitled COLLEGE ENGLISH FOR TODAY (CET for brevity), Books
1 and 2, and WORKBOOK FOR COLLEGE FRESHMAN ENGLISH,
Series 1.
Respondent Felicidad Robles and Goodwill Trading Co., Inc.
are the author/publisher and distributor/seller of another published
work entitled DEVELOPING ENGLISH PROFICIENCY (DEP for
brevity), Books 1 and 2 (1985 edition) which book was covered by
copyrights issued to them.
In the course of revising their published works, petitioners
scouted and looked around various bookstores to check on other
textbooks dealing with the same subject matter. By chance they
came upon the book of respondent Robles and upon perusal of said
book they were surprised to see that the book was strikingly similar
to the contents, scheme of presentation, illustrations and illustrative
examples in their own book, CET.
petitioners found that several pages of the respondents book
are similar, if not all together a copy of petitioners book, which is a
case of plagiarism and copyright infringement.
Petitioners then made demands for damages against
respondents and also demanded that they cease and desist from
further selling and distributing to the general public the infringed
copies of respondent Robles works.
However, respondents ignored the demands, hence, on July 7,
1988, petitioners filed with the Regional Trial Court, Makati, a
21 | L I P _ C O P Y R I G H T C A S E S
complaint for Infringement and/or unfair competition with
damages[4]against private respondents.[5]
petitioners alleged that in 1985, respondent Felicidad C. Robles
being substantially familiar with the contents of petitioners works,
and without securing their permission, lifted, copied, plagiarized
and/or transposed certain portions of their book CET. The textual
contents and illustrations of CET were literally reproduced in the
book DEP. The plagiarism, incorporation and reproduction of
particular portions of the book CET in the book DEP, without the
authority or consent of petitioners, and the misrepresentations of
respondent Robles that the same was her original work and concept
adversely affected and substantially diminished the sale of the
petitioners book and caused them actual damages by way of
unrealized income.
Respondent Robles was impleaded in the suit because she
authored and directly committed the acts of infringement complained
of, while respondent Goodwill Trading Co., Inc. was impleaded as
the publisher and joint co-owner of the copyright certificates of
registration covering the two books authored and caused to be
published by respondent Robles with obvious connivance with one
another.
respondent Robles filed a motion for a bill of particulars[6] which
the trial court approved on August 17, 1988. Petitioners complied
with the desired particularization, and furnished respondent Robles
the specific portions, inclusive of pages and lines, of the published
and copyrighted books of the petitioners which were transposed,
lifted, copied and plagiarized and/or otherwise found their way into
respondents book.
On August 1, 1988, respondent Goodwill Trading Co., Inc. filed
its answer to the complaint[7] and alleged that petitioners had no
cause of action against Goodwill Trading Co., Inc. since it was not
privy to the misrepresentation, plagiarism, incorporation and
reproduction of the portions of the book of petitioners; that there was
an agreement between Goodwill and the respondent Robles that
Robles guaranteed Goodwill that the materials utilized in the
manuscript were her own or that she had secured the necessary
permission from contributors and sources; that the author assumed
sole responsibility and held the publisher without any liability.
On November 28, 1988, respondent Robles filed her answer[8],
and denied the allegations of plagiarism and copying that petitioners
claimed. Respondent stressed that (1) the book DEP is the product
of her independent researches, studies and experiences, and was
not a copy of any existing valid copyrighted book; (2) DEP followed
the scope and sequence or syllabus which are common to all English
grammar writers as recommended by the Association of Philippine
Colleges of Arts and Sciences (APCAS), so any similarity between
the respondents book and that of the petitioners was due to the
orientation of the authors to both works and standards and syllabus;
and (3) the similarities may be due to the authors exercise of the
right to fair use of copyrigthed materials, as guides.
trial court rendered its judgment finding thus:
WHEREFORE, premises considered, the court hereby orders that
the complaint filed against defendants Felicidad Robles and Goodwill
Trading Co., Inc. shall be DISMISSED; that said plaintiffs solidarily
reimburse defendant Robles for P20,000.00 attorneys fees and
defendant Goodwill for P5,000.00 attorneys fees. Plaintiffs are liable
for cost of suit.
In the appeal, petitioners argued that the trial court completely
disregarded their evidence and fully subscribed to the arguments of
respondent Robles that the books in issue were purely the product of
her researches and studies and that the copied portions were
inspired by foreign authors and as such not subject to
copyright. Petitioners also assailed the findings of the trial court that
they were animated by bad faith in instituting the complaint.[14]
On June 27, 1997, the Court of Appeals rendered judgment in
favor of respondents Robles and Goodwill Trading Co., Inc. The
relevant portions of the decision state:
It must be noted, however, that similarity of the allegedly infringed
work to the authors or proprietors copyrighted work does not of itself
establish copyright infringement, especially if the similarity results
from the fact that both works deal with the same subject or have the
same common source, as in this case.
Issues: Petitioners raised the following issues: (1) whether or not,
despite the apparent textual, thematic and sequential similarity
between DEP and CET, respondents committed no copyright
infringement; (2) whether or not there was animus furandi on the part
of respondent when they refused to withdraw the copies of CET from
the market despite notice to withdraw the same; and (3) whether or
not respondent Robles abused a writers right to fair use, in violation
of Section 11 of Presidential Decree No. 49.[18]
Held: We find the petition impressed with merit.
Relevant laws:
177.1 Reproduction of the work or substantial portion of the
work;
184. 1 (e) The inclusion of a work in a publication,
broadcast, or other communication to the public, sound
recording of film, if such inclusion is made by way of illustration
for teaching purposes and is compatible with fair use: Provided,
That the source and the name of the author, if appearing in
the work is mentioned;[20]
In the above quoted provisions, work has reference to literary
and artistic creations and this includes books and other literary,
scholarly and scientific works.[21]

22 | L I P _ C O P Y R I G H T C A S E S
 A perusal of the records yields several pages of the book DEP
that are similar if not identical with the text of CET.
On page 404 of petitioners Book 1 of College English for Today,
the authors wrote:
Items in dates and addresses:
He died on Monday, April 15, 1975.
Miss Reyes lives in 214 Taft Avenue,
Manila[22]
On page 73 of respondents Book 1 Developing English Today,
they wrote:
He died on Monday, April 25, 1975.
Miss Reyes address is 214 Taft Avenue Manila[23]
On Page 250 of CET, there is this example on parallelism or
repetition of sentence structures
On page 100 of the book DEP[25], also in the topic of parallel
structure and repetition, the same example is found in toto. The only
difference is that petitioners acknowledged the author Edmund
Burke, and respondents did not.
In several other pages[26] the treatment and manner of
presentation of the topics of DEP are similar if not a rehash of that
contained in CET.
We believe that respondent Robles act of lifting from the book of
petitioners substantial portions of discussions and examples, and her
failure to acknowledge the same in her book is an infringement of
petitioners copyrights.
When is there a substantial reproduction of a book? It does not
necessarily require that the entire copyrighted work, or even a large
portion of it, be copied. If so much is taken that the value of the
original work is substantially diminished, there is an infringement of
copyright and to an injurious extent, the work is appropriated.[27]
23 | L I P _ C O P Y R I G H T C A S E S
If so much is taken that the value of the original is sensibly
diminished, or the labors of the original author are substantially and
to an injurious extent appropriated by another, that is sufficient in
point of law to constitute piracy.[28]
A copy of a piracy is an infringement of the original, and it is no
defense that the pirate, in such cases, did not know whether or not
he was infringing any copyright; he at least knew that what he was
copying was not his, and he copied at his peril.[30]
The next question to resolve is to what extent can copying be
injurious to the author of the book being copied. Is it enough that
there are similarities in some sections of the books or large
segments of the books are the same?
However, the numerous pages that the petitioners presented
showing similarity in the style and the manner the books were
presented and the identical examples can not pass as similarities
merely because of technical consideration.
The respondents claim that their similarity in style can be
attributed to the fact that both of them were exposed to the APCAS
syllabus and their respective academic experience, teaching
approach and methodology are almost identical because they were
of the same background.
However, we believe that even if petitioners and respondent
Robles were of the same background in terms of teaching
experience and orientation, it is not an excuse for them to be
identical even in examples contained in their books. The similarities
in examples and material contents are so obviously present in this
case. How can similar/identical examples not be considered as a
mark of copying?
We consider as an indicia of guilt or wrongdoing the act of
respondent Robles of pulling out from Goodwill bookstores the book
DEP upon learning of petitioners complaint while pharisaically
denying petitioners demand. It was further noted that when the book
DEP was re-issued as a revised version, all the pages cited by
petitioners to contain portion of their book College English for Today
were eliminated.
In cases of infringement, copying alone is not what is
prohibited. The copying must produce an injurious effect. Here, the
injury consists in that respondent Robles lifted from petitioners book
materials that were the result of the latters research work and
compilation and misrepresented them as her own. She circulated the
book DEP for commercial use and did not acknowledge petitioners
as her source.
Case no. 10 - Copyright Infringement; ADGMarmol
FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC.,
petitioners, vs. FRANKLIN DRILON GABRIEL ZOSA, WILLIAM
ESPOSO, FELIPE MEDINA, JR., and CASEY FRANCISCO,
respondents.
G.R. No. 108946. January 28, 1999, MENDOZA, J.
DOCTRINE: 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 BJPI’s
copyright is the specific episodes of the show Rhoda and Me.
FACTS: BJ Productions Inc. (BJPI) was 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. In 1991,
BJPI’s president Francisco Joaquin saw on TV – RPN 9’s show It’s
24 | L I P _ C O P Y R I G H T C A S E S
a Date, a show which is basically the same as Rhoda and Me. He
eventually sued Gabriel Zosa, the manager of the show It’s a Date.
The investigating prosecutor found probable cause against Zosa,
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 of respondent’s ITS A DATE. The substantial
similarities are as follows, to wit:
a. Unmarried participant of one gender (searcher) appears
on one side of a divider, while three (3) unmarried participants of the
other gender are on the other side of the divider. This arrangement is
done to ensure that the searcher does not see the searchees.
b. Searcher asks a question to be answered by each
of the searchees. The purpose is to determine who among
the searchees is the most compatible with the searcher.
c. Searcher speculates on the match to the searchee.
d. Selection is made by the use of compute (sic) methods, or
by the way questions are answered, or similar methods.
Zosa later sought a review of the prosecutor’s resolution before the
Secretary of Justice (Franklin Drilon). Drilon reversed the findings of
the fiscal and directed him to dismiss the case against Zosa.
ISSUE: Whether or not there was copyright infringement.
HELD: No, copyright infringement is not present. 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 BJPI’s copyright is the
specific episodes of the show Rhoda and Me.

Further, BJPI should have presented the master videotape of the

show in order to show the linkage between the copyright show
(Rhoda and Me) and the infringing show (It’s a Date). This is based
on the ruling in 20th Century Fox vs CA. (This is still good law though
qualified by Columbia Pictures vs CA, “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 cases where there is doubt as to the true nexus
between the master tape and the pirated copies.”)

Though BJPI did provide a lot of written evidence and description to

show the linkage between the shows, the same were not enough. 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.

25 | L I P _ C O P Y R I G H T C A S E S
Case No. 11 Mich Padayao Thus, appellant filed a complaint with the lower court for infringement
of copyright against defendant-appellee for allowing the playing in
Doctrine: The playing of music in dine and dance establishment
defendant-appellee's restaurant of said songs copyrighted in the
which was paid for by the public in purchases of food and drink
name of the former.
constituted "performance for profit" within a Copyright Law. In
this case however, the composers of the contested musical
Defendant-appellee, in his answer, countered that the complaint
compositions waived their right in favor of the general public
states no cause of action. While not denying the playing of said
when they allowed their intellectual creations to become
copyrighted compositions in his establishment, appellee maintains
property of the public domain before applying for the
that the mere singing and playing of songs and popular tunes even if
corresponding copyrights for the same is correct.
they are copyrighted do not constitute an infringement under the
provisions of Section 3 of the Copyright Law (Act 3134 of the
FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND
Philippine Legislature).
PUBLISHERS, INC.,
vs.
The lower court, finding for the defendant, dismissed the complaint.
BENJAMIN TAN,
CA reversed the same.

G.R. No. L-36402 March 16, 1987

Issue: Whether or not the playing and signing of musical
compositions which have been copyrighted under the provisions of
Facts: Filipino Society of Composers, Authors and Publishers, Inc. is
the Copyright Law (Act 3134) inside the establishment of the
a non-profit association of authors, composers and publishers duly
defendant-appellee constitute a public performance for profit within
organized under the Corporation Law of the Philippines and
the meaning and contemplation of the Copyright Law of the
registered with the Securities and Exchange Commission. Said
Philippines.
association is the owner of certain musical compositions among
which are the songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay
Held: No. Appellant anchors its claim on Section 3(c) of the
Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness Of You."
Copyright Law which provides:

On the other hand, Benjamin Tan is the operator of a restaurant

SEC. 3. The proprietor of a copyright or his heirs or assigns shall
known as "Alex Soda Foundation and Restaurant" where a combo
have the exclusive right:
with professional singers, hired to play and sing musical
compositions to entertain and amuse customers therein, were
(c) To exhibit, perform, represent, produce, or reproduce the
playing and singing the above-mentioned compositions without any
copyrighted work in any manner or by any method whatever for profit
license or permission from the appellant to play or sing the same.
or otherwise; if not reproduced in copies for sale, to sell any
Accordingly, appellant demanded from the appellee payment of the
manuscripts or any record whatsoever thereof;
necessary license fee for the playing and singing of aforesaid
compositions but the demand was ignored.

26 | L I P _ C O P Y R I G H T C A S E S
"The playing of music in dine and dance establishment which
was paid for by the public in purchases of food and drink
constituted "performance for profit "within a Copyright Law."
In the case at bar, it is admitted that the patrons of the restaurant in
question pay only for the food and drinks and apparently not for
listening to the music. As found by the trial court, the music provided
is for the purpose of entertaining and amusing the customers in order
to make the establishment more attractive and desirable. It will be
noted that for the playing and singing the musical compositions
involved, the combo was paid as independent contractors by the
appellant. It is therefore obvious that the expenses entailed thereby
are added to the overhead of the restaurant which are either
eventually charged in the price of the food and drinks or to the
overall total of additional income produced by the bigger volume of
business which the entertainment was programmed to attract.
Consequently, it is beyond question that the playing and singing
of the combo in defendant-appellee's restaurant constituted
performance for profit contemplated by the Copyright Law. (Act
3134 amended by P.D. No. 49, as amended).
publication, if made in Manila, or within the (60) days if made
elsewhere, failure of which renders such creation public property."
(Santos v. McCullough Printing Company, 12 SCRA 324-325 [1964].
Indeed, if the general public has made use of the object sought to be
copyrighted for thirty (30) days prior to the copyright application the
law deems the object to have been donated to the public domain and
the same can no longer be copyrighted.
A careful study of the records reveals that the song "Dahil Sa Iyo"
which was registered on April 20, 1956 (Brief for Appellant, p. 10)
became popular in radios, juke boxes, etc. long before registration
(TSN, May 28, 1968, pp. 3-5; 25) while the song "The Nearness Of
You" registered on January 14, 1955 (Brief for Appellant, p. 10) had
become popular twenty five (25) years prior to 1968, (the year of the
hearing) or from 1943 (TSN, May 28, 1968, p. 27) and the songs
"Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao Lamang" both
registered on July 10, 1966, appear to have been known and sang
by the witnesses as early as 1965 or three years before the hearing
in 1968. The testimonies of the witnesses at the hearing of this case
on this subject were unrebutted by the appellant.

Nevertheless, appellee cannot be said to have infringed upon

the Copyright Law. Appellee's allegation that the composers of
the contested musical compositions waived their right in favor
of the general public when they allowed their intellectual
creations to become property of the public domain before
applying for the corresponding copyrights for the same is
correct.

The Supreme Court has ruled that "Paragraph 33 of Patent Office

Administrative Order No. 3 (as amended, dated September 18,
1947) entitled 'Rules of Practice in the Philippines Patent Office
relating to the Registration of Copyright Claims' promulgated
pursuant to Republic Act 165, provides among other things that an
intellectual creation should be copyrighted thirty (30) days after its

27 | L I P _ C O P Y R I G H T C A S E S
Case #12 – (Velasco, Divina G.)
COPYRIGHT
ABS-CBN BROADCASTING CORPORATION, petitioner, vs.
PHILIPPINE MULTI-MEDIA SYSTEM, INC., CESAR G. REYES,
FRANCIS CHUA (ANG BIAO), MANUEL F. ABELLADA, RAUL B.
DE MESA, AND ALOYSIUS M. COLAYCO, respondents.
G.R. Nos. 175769-70 ; January 19, 2009
Ynares-Santiago, J.
FACTS:
PMSI was granted a legislative franchise under Republic Act No.
8630 and was given a Provisional Authority by the National
Telecommunications Commission (NTC) to install, operate and
maintain a nationwide DTH satellite service. When it commenced
operations, it offered as part of its program line-up ABS-CBN
Channels 2 and 23, NBN, Channel 4, ABC Channel 5, GMA Channel
7, RPN Channel 9, and IBC Channel 13, together with other paid
premium program channels.
ABS-CBN demanded for PMSI to cease and desist from
rebroadcasting Channels 2 and 23. PMSI replied that the
rebroadcasting was in accordance with the authority granted it by
NTC and its obligation under NTC Memorandum Circular No. 4-08-
88, Section 6.2 of which requires all cable television system
operators operating in a community within Grade A or B contours to
carry the television signals of the authorized television broadcast
28 | L I P _ C O P Y R I G H T C A S E S
stations. Negotiations ensued between the parties but were
terminated allegedly due to PMSIs inability to ensure the prevention
of illegal retransmission and further rebroadcast of its signals, as well
as the adverse effect of the rebroadcasts on the business operations
of ABSCBNs regional television stations.
ABS-CBN filed with the IPO a complaint for Violation of Laws
Involving Property Rights, with Prayer for the Issuance of a
Temporary Restraining Order and/or Writ of Preliminary Injunction. It
alleged that PMSIs unauthorized rebroadcasting of Channels 2 and
23 infringed on its broadcasting rights and copyright. Bureau of Legal
Affairs (BLA) of the IPO granted ABS-CBNs application for a
temporary restraining order. PMSI suspended its retransmission of
Channels 2 and 23.
PMSI filed a petition for certiorari with the Court of Appeals.
Subsequently, PMSI filed with the BLA a Manifestation reiterating
that it is subject to the must-carry rule under Memorandum Circular
No. 04-08-88. It also submitted a letter of NTC Commissioner Armi
Jane R. Borje to PMSI stating that:
The DTH pay television services of PMSI is equipped to
provide nationwide DTH satellite services. Concededly,
PMSIs DTH pay television services covers very much wider
areas in terms of carriage of broadcast signals, including
areas not reachable by cable television services thereby
providing a better medium of dissemination of information to
the public.
In view of the foregoing and the spirit and intent of NTC
memorandum Circular No. 4-08-88, particularly section 6
thereof, on mandatory carriage of television broadcast
 signals, DTH pay television services should be deemed
covered.
The NTC issued Memorandum Circular No. 10-10-2003, entitled
Implementing Rules and Regulations Governing Community
Antenna/Cable Television (CATV) and Direct Broadcast Satellite
(DBS) Services to Promote Competition in the Sector. Article 6,
Section 8 thereof states:
As a general rule, the reception, distribution and/or
transmission by any CATV/DBS operator of any television
signals without any agreement with or authorization from
program/content providers are prohibited.
The Commission maintained that, MC 4-08-88 remains valid,
subsisting and enforceable. (This Memorandum Circular is the
exception.)
The BLA rendered a decision finding that PMSI infringed the
broadcasting rights and copyright of ABS-CBN and ordering it to
permanently cease and desist from rebroadcasting Channels 2 and
23.
PMSI filed an appeal with the Office of the Director-General of the
IPO. Also filed with the Court of Appeals a Motion to Withdraw
Petition for Certiorari in CA – granted.
29 | L I P _ C O P Y R I G H T C A S E S
Director-General of the IPO rendered a decision in favor of PMSI –
(Decision of Director of Bureau of Legal Affairs is hereby
REVERSED and SET ASIDE.)
ABS-CBN filed a petition for review with prayer for issuance of a
temporary restraining order and writ of preliminary injunction with the
Court of Appeals. The Court of Appeals issued a temporary
restraining order.
ABS-CBN filed a petition for contempt against PMSI for continuing to
rebroadcast Channels 2 and 23 despite the restraining order. CA
ordered the consolidation. CA affirmed Director-General and
dismissed both petition. MR – denied. Filed instant case with SC.
ABS-CBN contends that PMSIs unauthorized rebroadcasting of
Channels 2 and 23 is an infringement of its broadcasting rights and
copyright under the Intellectual Property Code (IP Code).
ISSUE:
Whether there was violation of the IP Code and infringement of ABS-
CBNs broadcasting rights and copyright.
RULING:
NO. PMSI did NOT violate ABSCBNs broadcasters rights under
Section 211 of the IP Code, which provides that broadcasting
organizations shall enjoy the exclusive right to carry out, authorize or
prevent the rebroadcasting of their broadcasts.
 in Channels 2 and 23, they know that the origin thereof was the
ABSCBN.
NEITHER is PMSI guilty of infringement of ABS-CBNs copyright
under Section 177 of the IP Code, which states that copyright or
economic rights shall consist of the exclusive right to carry out,
ABS-CBN creates and transmits its own signals; PMSI merely
authorize or prevent the public performance of the work and other
carries such signals, which the viewers receive in its unaltered form.
communication to the public of the work.
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
Section 202.7 of the IP Code defines broadcasting as: (1) the
are concerned, PMSI merely retransmits the same in accordance
transmission by wireless means for the public reception of sounds or
with Memorandum Circular 04-08-88. With regard to its premium
of images or of representations thereof; and (2) such transmission by
channels, it buys the channels from content providers and transmits
satellite is also broadcasting where the means for decrypting are
on an as-is basis to its viewers. Clearly, PMSI does not perform the
provided to the public by the broadcasting organization or with its
functions of a broadcasting organization; thus, it cannot be said that
consent.
it is engaged in rebroadcasting Channels 2 and 23.

On the other hand, rebroadcasting, as defined by the 1961 Rome

PMSIs services are similar to a cable television system because the
Convention, of which the Republic of the Philippines is a signatory, is
services it renders fall under cable retransmission, as described in
the simultaneous broadcasting by one broadcasting organization of
the Working Paper, to wit:
the broadcast of another broadcasting organization.

47. xxx In the early days of cable television, it was mainly

Accordingly, this Office is of the view that the transmission
used to improve signal reception, particularly in so-called
contemplated under Section 202.7 of the IP Code presupposes that
shadow zones, or to distribute the signals in large buildings
the origin of the signals is the broadcaster. Hence, a program that is
or building complexes.
broadcasted is attributed to the broadcaster. In the same manner,
the rebroadcasted program is attributed to the rebroadcaster. xxx

49. The Rome Convention does not grant rights against

unauthorized cable retransmission. Without such a right,
In the case at hand, PMSI is not the origin nor does it claim to be the
cable operators can retransmit both domestic and foreign
origin of the programs broadcasted by the ABSCBN. PMSI did not
over the air broadcasts simultaneously to their subscribers
make and transmit on its own but merely carried the existing signals
without permission from the broadcasting organizations or
of the ABSCBN. When PMSI’s subscribers view ABSCBNs programs

30 | L I P _ C O P Y R I G H T C A S E S
 other rightholders and without obligation to pay maintain effective competition among private entities in these
remuneration. activities whenever the Commission finds it reasonably feasible.

The retransmission of ABS-CBNs signals by PMSI which functions

essentially as a cable television does not therefore constitute
rebroadcasting in violation of the formers intellectual property rights
under the IP Code.

It must be emphasized that the law on copyright is not absolute. The

IP Code provides that:

Sec. 184. Limitations on Copyright. – the following acts shall not

constitute infringement of copyright:

(h) The use made of a work by or under the direction or control of the
Government, by the National Library or by educational, scientific or
professional institutions where such use is in the public interest and
is compatible with fair use;

The carriage of ABS-CBNs signals by virtue of the must-carry rule in

Memorandum Circular No. 04-08-88 is under the direction and
control of the government though the NTC which is vested with
exclusive jurisdiction to supervise, regulate and control
telecommunications and broadcast services/facilities in the
Philippines. The imposition of the must-carry rule is within the NTCs
power to promulgate rules and regulations, as public safety and
interest may require, to encourage a larger and more effective use of
communications, radio and television broadcasting facilities, and to

31 | L I P _ C O P Y R I G H T C A S E S