1. FERNANDO U. JUAN v. ROBERTO U.

JUAN

[ GR No. 221732, Aug 23, 2017]

Facts:

Respondent Roberto U. Juan claimed that he began using the name and mark "Lavandera Ko" in his
laundry business on July 4, 1994. He then opened his laundry store at No. 119 Alfaro St., Salcedo St.,
Makati City in 1995. Thereafter, on March 17, 1997, the National Library issued to him a certificate of
copyright over said name and mark. Over the years, the laundry business expanded with numerous
franchise outlets in Metro Manila and other provinces. Respondent Roberto then formed a corporation
to handle the said business, hence, Laundromatic Corporation (Laundromatic) was incorporated in 1997,
while "Lavandera Ko" was registered as a business name on November 13, 1998 with the Department of
Trade and Industry (DTI). Thereafter, respondent Roberto discovered that his brother, petitioner
Fernando was able to register the name and mark "Lavandera Ko" with the Intellectual Property Office
(IPO) on October 18, 2001, the registration of which was filed on June 5, 1995. Respondent Roberto also
alleged that a certain Juliano Nacino (Juliano) had been writing the franchisees of the former
threatening them with criminal and civil cases if they did not stop using the mark and name "Lavandera
Ko." It was found out by respondent Roberto that petitioner Fernando had been selling his own
franchises.

Thus, respondent Roberto filed a petition for injunction, unfair competition, infringement of copyright,
cancellation of trademark and name with/and prayer for TRO and Preliminary Injunction with the
Regional Trial Court (RTC) and the case was raffled off at Branch 149, Makati City. The RTC issued a writ
of preliminary injunction against petitioner Fernando in Order dated June 10, 2004. On July 21, 2008,
due to the death of respondent Roberto, the latter was substituted by his son, Christian Juan (Christian).
Pre-trial conference was concluded on July 13, 2010 and after the presentation of evidence of both
parties, the RTC rendered a Resolution dated September 23, 2013, dismissing the petition and ruling
that neither of the parties had a right to the exclusive use or appropriation of the mark "Lavandera Ko"
because the same was the original mark and work of a certain Santiago S. Suarez (Santiago). According
to the RTC, the mark in question was created by Suarez in 1942 in his musical composition called,
"Lavandera Ko" and both parties of the present case failed to prove that they were the originators of the
same mark.

Petitioner appealed to CA but CA dismissed due to technical grounds.

Petitioner files Certiorari under Rule 45 with the SC.

Issue:

WHETHER OR NOT A MARK IS THE SAME AS A COPYRIGHT.

Held:

No. The Ruling of RTC is erroneous.

The law on trademarks, service marks and trade names are found under Part III of Republic Act (R.A.)
No. 8293, or the Intellectual Code of the Philippines, while Part IV of the same law governs copyrights.
"Lavandera Ko," the mark in question in this case is being used as a trade name or specifically, a service
name since the business in which it pertains involves the rendering of laundry services. Under Section
121.1 of R.A. No. 8293, "mark" is defined as 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. As such, the basic contention of the parties is, who has the better right to use "Lavandera Ko"
as a service name because Section 165.2[13] of the said law, guarantees the protection of trade names
and business names even prior to or without registration, against any unlawful act committed by third
parties. A cause of action arises when the subsequent use of any third party of such trade name or
business name would likely mislead the public as such act is considered unlawful. Hence, the RTC erred
in denying the parties the proper determination as to who has the ultimate right to use the said trade
name by ruling that neither of them has the right or a cause of action since "Lavandera Ko" is protected
by a copyright.

By their very definitions, copyright and trade or service name are different. Copyright is the right of
literary property as recognized and sanctioned by positive law.[14] An intangible, incorporeal right
granted by statute to the author or originator of certain literary or artistic productions, whereby he is
invested, for a limited period, with the sole and exclusive privilege of multiplying copies of the same and
publishing and selling them.[15] Trade name, on the other hand, is any designation which (a) is adopted
and used by person to denominate goods which he markets, or services which he renders, or business
which he conducts, or has come to be so used by other, and (b) through its association with such goods,
services or business, has acquired a special significance as the name thereof, and (c) the use of which for
the purpose stated in (a) is prohibited neither by legislative enactment nor by otherwise defined public
policy.[16]

As such, "Lavandera Ko," being a musical composition with words is protected under the copyright law
(Part IV, R.A. No. 8293) and not under the trademarks, service marks and trade names law (Part III, R.A.
No. 8293).

Considering, therefore, the above premise, this Court deems it proper to remand the case to the RTC for
its proper disposition since this Court cannot, based on the records and some of the issues raised by
both parties such as the cancellation of petitioner's certificate of registration issued by the Intellectual
Property Office, make a factual determination as to who has the better right to use the
trade/business/service name, "Lavandera Ko."

2. Sambar vs. Levi Strauss & Co./, GR No. 132604, ( March 6, 2002), 378 SCRA 364

F Did petitioner infringe on private respondents’ arcuate design?

¾ We find no reason to disturb the findings of the Court of Appeals that Europress’
use of the arcuate design was an infringement of the Levi’s design.

F Must we hold petitioner solidarily liable with CVS Garments Industrial Corporation? Both the courts
below found that petitioner had a copyright over Europress’ arcuate design and that he consented to
the use of said design by CVSGIC. We are bound by this finding, especially in the absence of a showing
that it was tainted with arbitrariness or palpable error.[7] It must be stressed that it was immaterial
whether or not petitioner was connected with CVSGIC. What is relevant is that petitioner had a
copyright over the design and that he allowed the use of the same by CVSGIC.
 F 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. From the foregoing discussion, it is clear that the matters raised by petitioner in relation to the
last issue are purely factual, except the matter of nominal and temperate damages. Petitioner claims
that damages are not due private respondents and his copyright should not be cancelled because he had
not infringed on Levi’s trademark. Both the trial court and the Court of Appeals found there was
infringement. Thus, the award of damages and cancellation of petitioner’s copyright are appropriate.
Award of damages is clearly provided in Section 23 of the Trademark law, while cancellation of
petitioner’s copyright finds basis on the fact that the design was a mere copy of that of private
respondents’ trademark. 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

F However, we agree with petitioner that it was error for the Court of Appeals to affirm the award of
nominal damages combined with temperate damages by the Regional Trial Court of Makati. What
respondents are entitled to is an award for temperate damages, not nominal damages. For although the
exact amount of damage or loss can not be determined with reasonable certainty, the fact that there
was infringement means they suffered losses for which they are entitled to moderate damages. We find
that the award of P50,000.00 as temperate damages fair and reasonable, considering the circumstances
herein as well as the global coverage and reputation of private respondents Levi Strauss & Company and
Levi Strauss (Phil.), Inc.

3 Bayanihan Music vs. BMG, Jose Mari Chan, GR No. 166337, March 7, 2005, 452 scra

F A court should, as much as possible, avoid issuing the writ which would effectively dispose of the
main case without trial.

F (1) there must be a right in esse or the existence of a right to be protected; and (2) the act against
which the injunction is to be directed is a violation of such right,[5]cralaw the trial court threaded the
correct path in denying petitioner's prayer therefor. For, such a writ should only be granted if a party is
clearly entitled thereto.

F Of course, while a clear showing of the right to an injunctive writ is necessary albeit its existence
need not be conclusively established,[7]cralaw as the evidence required therefor need not be conclusive
or complete, still, for an applicant, like petitioner Bayanihan, to be entitled to the writ, he is required to
show that he has the ostensible right to the final relief prayed for in its complaint.[8]cralaw Here, the
trial court did not find ample justifications for the issuance of the writ prayed for by petitioner.

F respondent Chan, being undeniably the composer and author of the lyrics of the two (2) songs, is
protected by the mere fact alone that he is the creator thereof

F An examination of petitioner's verified complaint in light of the two (2) contracts sued upon and the
evidence it adduced during the hearing on the application for preliminary injunction, yields not the
existence of the requisite right protectable by the provisional relief but rather a lingering doubt on
whether there is or there is no such right. xxx It would thus appear that the two (2) contracts expired on
October 1, 1975 and March 11, 1978, respectively, there being neither an allegation, much less proof,
that petitioner Bayanihan ever made use of the compositions within the two-year period agreed upon
by the parties

F Anent the copyrights obtained by petitioner on the basis of the selfsame two (2) contracts, suffice it
to say 'that such purported copyrights are not presumed to subsist in accordance with Section 218[a]
and [b], of the Intellectual Property Code,[10]cralaw because respondent Chan had put in issue the
existence thereof.

F It is noted that Chan revoked and terminated said contracts, along with others, on July 30, 1997, or
almost two years before petitioner Bayanihan wrote its sort of complaint/demand letter dated
December 7, 1999 regarding the recent "use/recording of the songs 'Can We Just Stop and Talk A While'
and 'Afraid for Love to Fade,'" or almost three (3) years before petitioner filed its complaint on August 8,
2000, therein praying, inter alia, for injunctive relief.

4 Habana vs. Robles GR No. 131522, July 19, 1999, 310 SCRA 511

F 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.

F In determining the question of infringement, the amount of matter copied from the copyrighted
work is an important consideration. To constitute infringement, it is not necessary that the whole or
even a large portion of the work shall have been copied. 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. The essence of
intellectual piracy should be essayed in conceptual terms in order to underscore its gravity by an
appropriate understanding thereof. 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.

F Even if two authors 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 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?
 F 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 latter’s 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.

F Hence, there is a clear case of appropriation of copyrighted work for her benefit that respondent
Robles committed. Petitioners’ work as authors is the product of their long and assiduous research and
for another to represent it as her own is injury enough. In copyrighting books the purpose is to give
protection to the intellectual product of an author. This is precisely what the law on copyright
protected, under Section 184.1 (b). Quotations from a published work if they are compatible with fair
use and only to the extent justified by the purpose, including quotations from newspaper articles and
periodicals in the form of press summaries are allowed provided that the source and the name of the
author, if appearing on the work, are mentioned.

F In the case at bar, the least that respondent Robles could have done was to acknowledge petitioners
Habana et. al. as the source of the portions of DEP. The final product of an author’s toil is her book. To
allow another to copy the book without appropriate acknowledgment is injury enough.

5 Microsoft Corp.vs. Maxicorp Inc.,GR No. 140946, Sept. 13, 2004

F WHETHER THE PETITION RAISES QUESTIONS OF LAW; Indeed, this case falls under one of the
exceptions because the findings of the Court of Appeals conflict with the findings of the RTC.[16] Since
petitioners properly raised the conflicting findings of the lower courts, it is proper for this Court to
resolve such contradiction.

F WHETHER PETITIONERS HAVE LEGAL PERSONALITY TO FILE THE PETITION: We ruled in Columbia
Pictures Entertainment, Inc. v. Court of Appeals[18] that the petitioner-complainant in a petition for
review under Rule 45 could argue its case before this Court in lieu of the Solicitor General if there is
grave error committed by the lower court or lack of due process. This avoids a situation where a
complainant who actively participated in the prosecution of a case would suddenly find itself powerless
to pursue a remedy due to circumstances beyond its control. The circumstances in Columbia Pictures
Entertainment are sufficiently similar to the present case to warrant the application of this doctrine.

F WHETHER THERE WAS PROBABLE CAUSE TO ISSUE THE SEARCH WARRANTS: The Court of Appeals
based its reversal on two factual findings of the RTC. First, the fact that the sales receipt presented by
NBI Agent Samiano as proof that he bought counterfeit goods from Maxicorp was in the name of a
certain “Joel Diaz.” Second, the fact that petitioners’ other witness, John Benedict Sacriz, admitted that
he did not buy counterfeit goods from Maxicorp. We rule that the Court of Appeals erred in reversing
the RTC’s findings.
 F The offense charged against Maxicorp is copyright infringement under Section 29 of PD 49 and unfair
competition under Article 189 of the RPC. To support these charges, petitioners presented the
testimonies of NBI Agent Samiano, computer technician Pante, and Sacriz, a civilian. The offenses that
petitioners charged Maxicorp contemplate several overt acts. The sale of counterfeit products is but one
of these acts. Both NBI Agent Samiano and Sacriz related to the RTC how they personally saw Maxicorp
commit acts of infringement and unfair competition.

F During the preliminary examination, the RTC subjected the testimonies of the witnesses to the
requisite examination. NBI Agent Samiano testified that he saw Maxicorp display and offer for sale
counterfeit software in its premises. He also saw how the counterfeit software were produced and
packaged within Maxicorp’s premises. NBI Agent Samiano categorically stated that he was certain the
products were counterfeit because Maxicorp sold them to its customers without giving the
accompanying ownership manuals, license agreements and certificates of authenticity.

F Sacriz testified that during his visits to Maxicorp, he witnessed several instances when Maxicorp
installed petitioners’ software into computers it had assembled. Sacriz also testified that he saw the
sale of petitioners’ software within Maxicorp’s premises. Petitioners never authorized Maxicorp to
install or sell their software.

F The testimonies of these two witnesses, coupled with the object and documentary evidence they
presented, are sufficient to establish the existence of probable cause. From what they have witnessed,
there is reason to believe that Maxicorp engaged in copyright infringement and unfair competition to
the prejudice of petitioners. Both NBI Agent Samiano and Sacriz were clear and insistent that the
counterfeit software were not only displayed and sold within Maxicorp’s premises, they were also
produced, packaged and in some cases, installed there.

F For purposes of determining probable cause, the sales receipt is not the only proof that the sale of
petitioners’ software occurred. During the search warrant application proceedings, NBI Agent Samiano
presented to the judge the computer unit that he purchased from Maxicorp, in which computer unit
Maxicorp had pre-installed petitioners’ software.[27] Sacriz, who was present when NBI Agent Samiano
purchased the computer unit, affirmed that NBI Agent Samiano purchased the computer unit.[28]
Pante, the computer technician, demonstrated to the judge the presence of petitioners’ software on the
same computer unit.[29] There was a comparison between petitioners’ genuine software and
Maxicorp’s software pre-installed in the computer unit that NBI Agent Sambiano purchased.[30] Even if
we disregard the sales receipt issued in the name of “Joel Diaz,” which petitioners explained was the
alias NBI Agent Samiano used in the operation, there still remains more than sufficient evidence to
establish probable cause for the issuance of the search warrants.

F The fact that Sacriz did not actually purchase counterfeit software from Maxicorp does not eliminate
the existence of probable cause. Copyright infringement and unfair competition are not limited to the
act of selling counterfeit goods. They cover a whole range of acts, from copying, assembling, packaging
to marketing, including the mere offering for sale of the counterfeit goods. The clear and firm
testimonies of petitioners’ witnesses on such other acts stand untarnished

F WHETHER THE SEARCH WARRANTS ARE “GENERAL WARRANTS.”: However, we find paragraph (c) of
the search warrants lacking in particularity. Paragraph (c) states: c) Sundry items such as labels, boxes,
prints, packages, wrappers, receptacles, advertisements and other paraphernalia bearing the copyrights
and/or trademarks owned by MICROSOFT CORPORATION;

F The scope of this description is all-embracing since it covers property used for personal or other
purposes not related to copyright infringement or unfair competition. Moreover, the description covers
property that Maxicorp may have bought legitimately from Microsoft or its licensed distributors.
Paragraph (c) simply calls for the seizure of all items bearing the Microsoft logo, whether legitimately
possessed or not. Neither does it limit the seizure to products used in copyright infringement or unfair
competition.

F All articles seized under paragraph (c) of the search warrants, not falling under paragraphs a, b, d, e
or f, are ordered returned to Maxicorp, Inc. immediately.