INTELLECTUAL PROPERTY LAW

I. CONSTITUTIONAL PROVISIONS
Tanada v. Angara, 272 SCRA 18
Facts:
This is a petition seeking to nullify the Philippine ratification of the World Trade Organization (WTO)
Agreement. Petitioners question the concurrence of herein respondents acting in their capacities
as Senators via signing the said agreement.

The WTO opens access to foreign markets, especially its major trading partners, through the
reduction of tariffs on its exports, particularly agricultural and industrial products. Thus, provides
new opportunities for the service sector cost and uncertainty associated with exporting and more
investment in the country. These are the predicted benefits as reflected in the agreement and as
viewed by the signatory Senators, a “free market” espoused by WTO.

Petitioners on the other hand viewed the WTO agreement as one that limits, restricts and impair
Philippine economic sovereignty and legislative power. That the Filipino First policy of the
Constitution was taken for granted as it gives foreign trading intervention.

Issue :
Has there has been a grave abuse of discretion amounting to lack or excess of jurisdiction on the
part of the Senate in giving its concurrence of the said WTO agreement?

Held:
NO, In its Declaration of Principles and state policies, the Constitution “adopts the generally
accepted principles of international law as part of the law of the land, and adheres to the policy of
peace, equality, justice, freedom, cooperation and amity , with all nations. By the doctrine of
incorporation, the country is bound by generally accepted principles of international law, which are
considered automatically part of our own laws. Pacta sunt servanda – international agreements
must be performed in good faith. A treaty is not a mere moral obligation but creates a legally
binding obligation on the parties.

Through WTO the sovereignty of the state cannot in fact and reality be considered as absolute
because it is a regulation of commercial relations among nations. Such as when Philippines joined
the United Nations (UN) it consented to restrict its sovereignty right under the “concept of
sovereignty as autolimitation.” What Senate did was a valid exercise of authority. As to determine
whether such exercise is wise, beneficial or viable is outside the realm of judicial inquiry and
review. The act of signing the said agreement is not a legislative restriction as WTO allows
withdrawal of membership should this be the political desire of a member. Also, it should not be
viewed as a limitation of economic sovereignty. WTO remains as the only viable structure for
multilateral trading and the veritable forum for the development of international trade law. Its
alternative is isolation, stagnation if not economic self-destruction. Thus, the people be allowed,
through their duly elected officers, make their free choice.
Petition is DISMISSED for lack of merit.

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II. CIVIL CODE
Kho v. Court of Appeals, 379 SCRA 410 (2002)
Facts:
Petitioner Elidad C. Kho filed a complaint with a prayer for the issuance of a writ of preliminary
injunction against the respondents Summerville General Merchandising and Company
(Summerville, for brevity) and Ang Tiam Chay. In her complaints, she alleged that she is doing
business under the name and style of KEC Cosmetics Laboratory and the registered owner of the
copyrights Chin Chun Su and Oval Facial Cream Container/Case as shown by certificates of
copyright registrations and patent rights on Chun Chun Su & Device and Chin Chun Su (for
medicated cream) after she purchased it from Quintin Cheng.

Meanwhile, respondent Summerville advertised and sold petitioners cream products under the
brand name Chin Chun Su, in similar containers that petitioner uses, thereby misleading the public,
and resulting in the decline in the petitioners business sales and income. According to respondent
Summerville, they are the exclusive and authorized importer, re-packer and distributor of Chin
Chun Su products manufactured by Shun Yi Factory of Taiwan and that said company authorized
them to register its trade name “Chin Chun Su Mediated Cream” with the Philippine Patent Office.

The trial court granted the preliminary injunction. Hence, respondents moved for reconsideration,
but were denied. The respondents then moved for nullification of said preliminary injunction with
the CA. The latter granted its petition. The CA rules that the registration of the trademark or brand
name Chin Chun Su by KEC with the supplemental register of the Bureau of Patents, Trademarks
and Technology Transfer cannot be equated with registration in the principal register, which is duly
protected by the Trademark Law.

Issue:
Whether or not the copyright and patent over the name and container of a beauty cream product
would entitle the registrant to the use and ownership over the same to the exclusion of others.

Held:
The copyright and patent over the name and container of a beauty cream product would not
entitle the registrant to its exclusive use and ownership.

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.

Petitioner has no right to support her claim for the exclusive use of the subject trade name and its
container. The name and container of a beauty cream product are proper subjects of a trademark

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inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use
the same in the sale of the beauty cream product, the user must sufficiently prove that she
registered or used it before anybody else did. The petitioners’ copyright and patent registration of
the name and container would not guarantee her right to the exclusive use of the same for the
reason that they are not appropriate subjects of the said intellectual rights. Consequently, a
preliminary injunction order cannot be issued for the reason that the petitioner has not proven
that she has a clear right over the said name and container to the exclusion of others, not having
proven that she has registered a trademark thereto or used the same before anyone did.

III. COPYRIGHT AND RELATED RIGHTS

Ching Kian Chuan v. CA, 363 SCRA 142 (2001)
Facts:
Petitioner Wilson Ong Ching Kian Chuan (Ong) filed a complaint for infringement of copyright
against private respondent Lorenzo Tan with the Regional Trial Court in Quezon City. He alleged
that he imports vermicelli from China National Cereals Oils and Foodstuffs Import and Export
Corporation, based in Beijing, China under the firm name C.K.C. Trading and he repacks it in
cellophane wrappers with a design of two-dragons and the TOWER trademark on the uppermost
portion, in which he acquired a Certificate of Copyright Registration from the National Library on
June 9, 1993 on the said design. He discovered that private respondent repacked his vermicelli he
imports from the same company but based in Qingdao, China in a nearly identical wrapper.

The trial court issued a temporary restraining order against private respondent. Private respondent
filed a motion to dissolve the writ of preliminary injunction, but the trial court denied it. He
elevated the case to the CA alleging that Ong did not have a clear right over the use of the
trademark Pagoda and Lungkow vermicelli as these were registered in the name of CHINA
NATIONAL CEREALS OIL AND FOODSTUFFS IMPORT AND EXPORT CORPORATION, SHANDONG
CEREALS AND OILS BRANCH (hereafter Ceroilfood Shandong), based in Qingdao, China. Further, he
averred that he was the exclusive distributor in the Philippines of the Pagoda and Lungkow
vermicelli and was solely authorized to use said trademark. He added that Ong merely copied the
two-dragon design from Ceroilfood Shandong which had the Certificates of Registration issued by
different countries. He concluded that Ongs Certificate of Copyright Registration was not valid for
lack of originality.

After oral argument, the Court of Appeals rendered a decision on August 8, 1994, setting aside the
trial courts order. Hence, this appeal.

Issue:
Was the issuance of the writ of preliminary injunction proper?

Held:
The issuance of the writ of preliminary injunction was not proper. A person to be entitled to a
copyright must be the original creator of the work. He must have created it by his own skill, labor

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and judgment without directly copying or evasively imitating the work of another. The grant of
preliminary injunction in a case rests on the sound discretion of the court with the caveat that it
should be made with extreme caution. Its grant depends chiefly on the extent of doubt on the
validity of the copyright, existence of infringement, and the damages sustained by such
infringement. In our view, the copies of the certificates of copyright registered in the name of
Ceroilfood Shandong sufficiently raise reasonable doubt. With such a doubt, the preliminary
injunction is unavailing.

To be entitled to an injunctive writ, petitioner must show, inter alia, the existence of a clear and
unmistakable right and an urgent and paramount necessity for the writ to prevent serious damage.
From the above discussion, we find that petitioners’ right has not been clearly and unmistakably
demonstrated. That right is what is in dispute and has yet to be determined.

Sambar v. Levi Strauss, 378 SCRA 364 (2002)

FACTS:
Private respondents filed a complaint against Sambar, doing business under the name and style of
CVS Garment Enterprises (CVSGE). It was alleged in their complaint that Levi Strauss and Co.
(LS&Co.), an internationally known clothing manufacturer, owns the arcuate design trademark
which was registered under U.S. Trademark Registration No. 404, 248 on November 16, 1943, and
in the Principal Register of trademarks with the Philippine Patent Office under Certificate of
Registration No. 20240 issued on October 8, 1973; that through a Trademark Technical Data and
Technical Assistance Agreement with Levi Strauss (Phil.) Inc. (LSPI) in 1972, LS&Co. granted LSPI a
non-exclusive license to use the arcuate trademark in its manufacture and sale of Levis pants,
jackets and shirts in the Philippines; that in 1983, LS&Co. also appointed LSPI as its agent and
attorney-in-fact to protect its trademark in the Philippines; and that sometime in 1987, CVS
Garment and Industrial Company (CVSGIC) and Venancio Sambar, without the consent and
authority of private respondents and in infringement and unfair competition, sold and advertised,
and despite demands to cease and desist, continued to manufacture, sell and advertise denim
pants under the brand name Europress with back pockets bearing a design similar to the arcuate
trademark of private respondents, thereby causing confusion on the buying public, prejudicial to
private respondents goodwill and property right.

In its answer, CVSGIC admitted it manufactured, sold and advertised and was still manufacturing
and selling denim pants under the brand name of Europress, bearing a back pocket design of two
double arcs meeting in the middle. However, it denied that there was infringement or unfair
competition because the display rooms of department stores where Levis and Europress jeans
were sold, were distinctively segregated by billboards and other modes of advertisement. CVSGIC
avers that the public would not be confused on the ownership of such known trademark as Levis,
Jag, Europress, etc. Also, CVSGIC claimed that it had its own original arcuate design, as evidenced
by Copyright Registration No. 1-1998, which was very different and distinct from Levis design.

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.

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The trial court issued a writ of preliminary injunction enjoining CVSGIC and petitioner from
manufacturing, advertising and selling pants with the arcuate design on their back pockets. The
private respondents moved for reconsideration praying for the cancellation of petitioner’s copyright
registration. The trial court granted the prayer. Petitioner appealed to the Court of Appeals and the
latter affirmed the ruling of the trial court.

ISSUE:
Did petitioner infringe on private respondents’ arcuate design?

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

Santos v. McCullough Printing Co., 12 SCRA 321 (1964)

Facts:
This is an action for damages based on the provisions of Articles 721 and 722 of the Civil Code of
the Philippines, allegedly on the unauthorized use, adoption and appropriation by the defendant
company of plaintiff's intellectual creation or artistic design for a Christmas Card. The design
depicts "a Philippine rural Christmas time scene consisting of a woman and a child in a nipa hut
adorned with a star-shaped lantern and a man astride a carabao, beside a tree, underneath which
appears the plaintiff's pen name, Malang."

The complaint alleges that plaintiff Mauro Malang Santos designed for former Ambassador Felino
Neri, for his personal Christmas Card greetings for the year 1959, the artistic motif in question. The

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following year the defendant McCullough Printing Company, without the knowledge and authority
of plaintiff, displayed the very design in its album of Christmas cards and offered it for sale, for a
price. For such unauthorized act of defendant, plaintiff suffered moral damages to the tune of
P16,000.00, because it has placed plaintiff's professional integrity and ethics under serious
question and caused him grave embarrassment before Ambassador Neri. He further prayed for the
additional sum of P3,000.00 by way of attorney's fee.

Issue:
Whether Santos is entitled for protection, notwithstanding the fact that he has not copyrighted his
design.

Ruling:
No. The lower court dismisses the complaint which the Supreme Court affirmed. Santos did not
choose to protect his intellectual creation by a copyright. The fact that the design was used in the
Christmas card of Ambassador Neri who distributed 800 copies thereof among his friends during
the Christmas season of 1959, shows the same was published.

Unless satisfactory explained a delay in applying for a copyright, of more than 30 days from the
date of its publication, converts the property to one of public domain.

Since the name of the author appears in each of the alleged infringing copies of intellectual
creation, the defendant may not be said to have pirated the work nor guilty of plagiarism.
Consequently, the complaint does not state a cause of action against the defendant.

The Supreme Court held that Santos is not entitled to a protection. Rules of Practice in the
Philippine Patent Office relating to the Registration of Copyright Claims.

“An intellectual creation should be copyrighted 30 days after its publication, if made in Manila, or
within 60 days if made elsewhere, failure of which renders such creation public property.”

When the purpose is limited publication, but the effect is general publication, irrevocable rights
thereupon become vested in the public, in consequence of which enforcement of the restriction
becomes impossible.

Filipino Society of Composers v. Benjamin Tan, 148 SCRA 461 (1987)

FACTS:
The FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS (FILSCAP) is a non-profit
association of authors, composers and publishers duly organized under the Corporation Law of the
Philippines and registered with the Securities and Exchange Commission. Said association is the
owner of certain musical compositions among which are the songs entitled: "Dahil Sa Iyo",
"Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness Of You."

Defendant, on the other hand, is the operator of a restaurant known as "Alex Soda Foundation and
Restaurant". He hired a combo with professional singers to play and sing musical compositions to

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entertain and amuse customers therein. Among these were the above-mentioned compositions
without any license or permission from the appellant to play or sing the same.

Accordingly, FILSCAP demanded from defendant the payment of the necessary license fee for the
playing and singing of aforesaid compositions but the demand was ignored. Hence FILSCAP filed a
complaint with the lower court for infringement of copyright against defendant for allowing the
playing in the latter’s restaurant of said songs copyrighted in the name of the former.

Defendant in his answer, countered that the complaint states no cause of action. While not denying
the playing of said copyrighted compositions in his establishment, he maintains that the mere
singing and playing of songs and popular tunes even if they are copyrighted do not constitute an
infringement.

ISSUES:
1. Whether or not the playing and signing of musical compositions which have been
copyrighted under the provisions of the Copyright Law (Act 3134) inside the
establishment of the defendant constitute a public performance for profit within the
meaning and contemplation of the Copyright Law of the Philippines.

2. Assuming that there were indeed public performances for profit, whether or not
defendant can be held liable therefor.

HELD:
1. Indeed there were "public performances for profit”. The word "perform" as used in the
Act has been applied to "One who plays a musical composition on a piano, thereby
producing in the air sound waves which are heard as music ... and if the instrument he
plays on is a piano plus a broadcasting apparatus, so that waves are thrown out, not
only upon the air, but upon the other, then also he is performing the musical
composition." it has been held that "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. 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’s restaurant constituted performance for profit contemplated by the
Copyright Law.

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 2. Defendant cannot be held liable. 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. The Supreme Court has ruled that "Paragraph
33 of Patent Office Administrative Order No. 3, provides among other things that an
intellectual creation should be copyrighted thirty (30) days after its publication, if made
in Manila, or within the (60) days if made elsewhere, failure of which renders such
creation public property." 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. The above-mentioned compositions had long become popular in
radios, juke boxes, etc. prior to their registration.

Joaquin v. Drilon, 302 SCRA 225 (1999)

FACTS:
Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of Certificate of Copyright No. M922,
dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977.

On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate
of copyright specifying the show’s format and style of presentation.

Upon complaint of petitioners, information for violation of PD No. 49 was filed against private
respondent Zosa together with certain officers of RPN 9 for airing It’s a Date. It was assigned to
Branch 104 of RTC Quezon City.

Zosa sought review of the resolution of the Assistant City Prosecutor before the Department of
Justice.

On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the Assistant City
Prosecutor’s findings and directed him to move for the dismissal of the case against private
respondents.

Petitioner Joaquin filed motion for reconsideration but such was denied.

ISSUE:
Whether the format or mechanics or petitioner’s television show is entitled to copyright protection.

HELD:
The Court ruled that the format of the show is not copyrightable. Sec. 2 of PD No. 49, otherwise
known as the Decree on Intellectual Property, enumerates the classes of work entitled to copyright
protection. The provision is substantially the same as Sec. 172 of the Intellectual Property Code of
the Philippines (RA 8293). The format or mechanics of a television show is not included in the list of
protected works in Sec. 2 of PD No. 49. For this reason, the protection afforded by the law cannot
be extended to cover them. Copyright, in the strict sense of the term, is purely a statutory right. It

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is a new independent right granted by the statute and not simply a pre-existing right regulated by
the statute. Being a statutory grant, the rights are only such as the statute confers, and may be
obtained and enjoyed only with respect to the subjects and by the person and on terms and
conditions specified in the statute.

The Court is of the opinion that petitioner BJPI’s copyright covers audio-visual recordings of each
episode of Rhoda and Me, as falling within the class of works mentioned in PD 49.

The copyright does not extend to the general concept or format of its dating game show.

Mere description by words of the general format of the two dating game shows is insufficient; the
presentation of the master videotape in evidence was indispensable to the determination of the
existence of a probable cause.
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.

United Feature Syndicate v. Munsingwear, 179 SCRA 260 (1989)

Facts:
This case arose from petition filed by petitioner for the cancellation of the registration of trademark
CHARLIE BROWN in the name of respondent MUNSINGWEAR with the Philippine Patent Office
alleging that petitioner is damaged by the registration of the trademark CHARLIE BROWN of T-
Shirts under Class 25 with the Registration No. SR-4224 dated September 12, 1979 in the name of
Munsingwear Creation Manufacturing Co., Inc., on the following grounds: (1) that respondent was
not entitled to the registration of the mark CHARLIE BROWN, & DEVICE at the time of application
for registration; (2) that CHARLIE BROWN is a character creation or a pictorial illustration, the
copyright to which is exclusively owned worldwide by the petitioner; (3) that as the owner of the
pictorial illustration CHARLIE BROWN, petitioner has since 1950 and continuously up to the
present, used and reproduced the same to the exclusion of others; (4) that the respondent-
registrant has no bona fide use of the trademark in commerce in the Philippines prior to its
application for registration.

Issue:
Who is the rightful owner of the trademark?

Held:
United Feature Syndicate, Inc.
Pertinently, Section 2 of Presidential Decree No. 49, otherwise known as the “Decree on
Intellectual Property,” provides:

Section 2. The rights granted by this Decree shall, from the moment of creation, subsist
with respect to any of the following classes of works:

xxx xxx xxx

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 (O) Prints, pictorial illustrations, advertising copies, labels, tags and box wraps. ...

Therefore, since the name “CHARLIE BROWN” and its pictorial representation were covered by a
copyright registration way back in 1950 the same are entitled to protection under PD No. 49.

It is undeniable from the records that petitioner is the actual owner of said trademark due to its
prior registration with the Patent's Office.

Feist Publications, Inc. v. Rural Tel. Service Co., 499 U.S. 340
FACTS:
Rural Telephone Service Company is a certified public utility providing telephone service to
several communities in Kansas. Rural publishes a typical telephone directory, consisting of white
pages and yellow pages. It obtains data for the directory from subscribers who must provide their
names and addresses to obtain telephone service.
Feist Publications, Inc., is a publishing company that specializes in area-wide telephone
directories covering a much larger geographic range than directories such as Rural's. When Rural
refused to license its white pages listings to Feist for a directory covering 11 different telephone
service areas, Feist extracted the listings it needed from Rural's directory without Rural's consent.
Although Feist altered many of Rural's listings, several were identical to listings in Rural's white
pages. The District Court granted summary judgment to Rural in its copyright infringement suit,
holding that telephone directories are copyrightable. The Court of Appeals affirmed.

ISSUE:
Are Rural’s white pages entitled to copyright?

DECISION:
NO, Rural's white pages are not entitled to copyright. Therefore, Feist's use of them does not
constitute infringement.
(a) Article I, 8, cl. 8, of the Constitution mandates originality as a prerequisite for copyright
protection. The constitutional requirement necessitates independent creation plus a modicum of
creativity. Since facts do not owe their origin to an act of authorship, they are not original, and thus
are not copyrightable. Although a compilation of facts may possess the requisite originality
because the author typically chooses which facts to include, in what order to place them, and how
to arrange the data so that readers may use them effectively, copyright protection extends only to
those components of the work that are original to the author, not to the facts themselves.
(b) A compilation is not copyrightable per se, but is copyrightable only if its facts have been
"selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an
original work of authorship."

While Rural has a valid copyright in the directory as a whole because it contains some forward text
and some original material in the yellow pages, there is nothing original in Rural's white pages. The
raw data are uncopyrightable facts, and the way in which Rural selected, coordinated, and arranged
those facts is not original in any way. Rural's selection of listings - subscribers' names, towns, and
telephone numbers - could not be more obvious, and lacks the modicum of creativity necessary to
transform mere selection into copyrightable expression. Moreover, there is nothing remotely

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creative about arranging names alphabetically in a white pages directory. It is an age-old practice,
firmly rooted in tradition and so commonplace that it has come to be expected as a matter of
course.

Filipino Society of Composers v. Benjamin Tan, 148 SCRA 461 (1987)

Facts:
Plaintiff-appellant is the owner of certain musical compositions among which are the songs
entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The
Nearness Of You."
On the other hand, defendant-appellee is the operator of a restaurant where a combo with
professional singers were playing and singing the above-mentioned compositions without any
license or permission from the appellant to play or sing the same.
Appellant filed a complaint with the lower court for infringement of copyright against defendant-
appellee for allowing the playing in defendant-appellee's restaurant of said songs copyrighted in
the name of the former.
Appellee maintains that the mere singing and playing of songs and popular tunes even if they are
copyrighted do not constitute an infringement.
Issue:
Whether or not the playing and singing of musical compositions which have been copyrighted
under the provisions of the Copyright Law constitute an infringement.
Ruling:
Appellee cannot be said to have infringed upon the Copyright Law. The Supreme Court has ruled
that an intellectual creation should be copyrighted thirty (30) days after its publication, if made in
Manila, or within the (60) days if made elsewhere, failure of which renders such creation public
property." 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 became popular in radios, juke boxes, etc. long before registration while the song "The
Nearness Of You" registered on January 14, 1955 had become popular twenty five (25) years prior
to 1968, (the year of the hearing) or from 1943 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 musical compositions in question had long become public property, and are therefore beyond
the protection of the Copyright Law.

Philippine Education Co. v. Sotto, 52 Phil. 580

Facts:
Philippine Education Company, Inc. (PECI, for brevity) is a domestic corporation; it is the proprietor
and publisher of the monthly magazine Philippine Education Magazine published in the City of
Manila.

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In December 1927, PECI contracted with Austin Craig for the preparation and publication of an
original article to be written by him concerning Mrs. Jose Rizal, to be published in the Philippine
Education Magazine. Craig then prepared and wrote an original article entitled “The True Story of
Mrs. Rizal” and delivered it to PECI which paid him for it. The same was printed and published in
the December 1927 issue then put in market for sale. In every issue, it gave a notice that all rights
thereto were reserved.

Later on, Sotto, the proprietor and publisher of a weekly newspaper known as The Independent
and Alindada, the editor, allegedly appropriated, copied and published the article unlawfully and
without the knowledge and consent of PECI in The Independent of December 24th and 31st, 1927,
without citing the PECI as source.

Upon discovery, PECI requested thru a letter that on the former’s next issue, they cite it as the
source of the article in some prominent place. However, notwithstanding the letter, the publication
of the article was continued.

Alindada advised PECI in substance that it had not registered such right under the Copyright Law.
Consequently, PECI sued Sotto and Alindada for damages.

Sotto and Alindada demurred to the evidence and alleged as a special defense that PECI is not the
owner of the article because it had not registered it in its name in the proper registry under Act
3134 and the regulation concerning the registration of intellectual property made by the Chief of
the Philippine Library and Museum, also, they had published the same without any intention to
prejudice anybody in his property right but in good faith. Trial court ruled in favor of PECI, hence,
the present appeal.

Issue:
Can the article be reproduced considering that PECI has not registered the same in its name and
merely served a notice that it reserved the rights to publication?

Held:
NO, not without giving the source of the reproduction. The present case calls for the interpretation
of Section 5 of Act 3134 i.e. An Act to Protect Intellectual Property which is known as the Copyright
Law of the Philippine Islands.

Analyzing the language used, such news items, editorial paragraphs and articles in periodicals may
be reproduced unless they contain a notice that their publication is reserved or unless they contain
a notice of copyright. In either event, the law specifically provides that the source of the
reproduction or original reproduced shall be cited. To give the Section another construction would
be to nullify, eliminate and take from the paragraph the works “they contain a notice that their
publication is reserved. The words are plain and clear, it should be applied.

12
In the case at bar, PECI did not give notice of its copyright for the simple reason that it did not have
one but it did notify Sotto and Alindada that in the publication of the article “we reserved all right,”
which was legally equivalent to a notice of copyright. Furthermore, the latter would have had the
legal right to publish the article by giving the source of the reproduction to which it failed to.

If it had been the purpose of and intent of the Legislature to limit the reproduction of news items,
editorial paragraphs and articles in periodicals to those which have a notice of copyright only, it
never would have said if “they contain a notice that their publication is reserved.”

In The Matter Of The Charges Of Plagiarism, Etc., Against Associate Justice Mariano C. Del
Castillo, A.M. No. 10-7-17-SC. October 12, 2010.
FACTS:
On April 28, 2010, the Supreme Court dismissed the petition (entitled, Vinuya vs. Executive
Secretary, G.R. No. 162230), filed by a group of Filipino “comfort women” during the Japanese
military occupation of the Philippines. The Court, speaking through Justice Mariano C. del Castillo,
held that the petition seeking to compel the Executive Department to espouse the petitioners’
claims for official apology and other forms of reparations against Japan before the International
Court of Justice and other international tribunals has no merit because: (1) the prerogative to
determine whether to espouse petitioners’ claims against Japan belongs exclusively to the
Executive Department; and (2) the Philippines is not under any international obligation to espouse
the petitioners’ claims.

Discontented with the foregoing decision, the petitioners in Vinuya filed a motion for
reconsideration. Subsequently, they also filed a supplemental motion for reconsideration. It
accused Justice Del Castillo of manifest intellectual theft and outright plagiarism when he wrote
the decision for the Court and of twisting the true intents of the plagiarized sources to suit the
arguments of the assailed Judgment. They charged Justice Del Castillo of copying without
acknowledgement certain passages from three foreign articles to support the Court’s position in
the Vinuya decision:
(1) A Fiduciary Theory of Jus Cogens by Professors Evan J. Criddle (Associate Professor of
Syracuse University College of Law) and Evan Fox-Descent (Assistant Professor of McGill
University Faculty of Law) published in the Yale Journal of International Law in 2009;
(2) Breaking the Silence: Rape as an International Crime by Mark Ellis (Executive Director of
the International Bar Association), published in the Case Western Reserve Journal of
International Law in 2006; and
(3) Enforcing Erga Omnes Obligations in International Law by Professor Christian J. Tams
(Chair of International Law of University of Glasgow School of Law), published in Cambridge
University Press (2005).

The Court then referred the charges against Justice Del Castillo to its Committee on Ethics and
Ethical Standards, chaired by Chief Justice Renato Corona, for investigation and recommendation.
After the proceedings before it, the Committee submitted its findings and recommendations to the
Court en banc, which then treated and decided the controversy as an administrative matter.

ISSUES:

13
1. Did Justice Del Castillo, in writing the opinion for the Court in the Vinuya case, plagiarize the
published works of authors Tams, Criddle-Descent, and Ellis?
2. Did Justice Del Castillo twist the works of these authors to make it appear that such works
supported the Court’s position in the Vinuya decision?

HELD:
1. No, Justice Del Castillo, in writing the opinion for the Court in the Vinuya case, did not plagiarize
the published works of authors Tams, Criddle-Descent, and Ellis.

Plagiarism means the theft of another person’s language, thoughts, or ideas. To plagiarize, as it is
commonly understood according to Webster, is “to take (ideas, writings, etc.) from (another) and
pass them off as one’s own.” The passing off of the work of another as one’s own is thus an
indispensable element of plagiarism.

As regards that one passage from Professor Tams, the Court believes that whether or not the
footnote is sufficiently detailed, so as to satisfy the footnoting standards of counsel for petitioners
is not an ethical matter but one concerning clarity of writing. The statement “See Tams, Enforcing
Obligations Erga Omnes in International Law (2005)” in the Vinuya decision is an attribution no
matter if Tams thought that it gave him somewhat less credit than he deserved. Such attribution
altogether negates the idea that Justice Del Castillo passed off the challenged passages as his
own. That it would have been better had Justice Del Castillo used the introductory phrase “cited
in” rather than the phrase “See” would make a case of mere inadvertent slip in attribution rather
than a case of “manifest intellectual theft and outright plagiarism.” If the Justice’s citations were
imprecise, it would just be a case of bad footnoting rather than one of theft or deceit. If it were
otherwise, many would be target of abuse for every editorial error, for every mistake in citing
pagination, and for every technical detail of form. As regards the passages from Ellis, the Court
notes that the lengthy passages in Footnote 65 of Vinuya came almost verbatim from Ellis’ article
but did not contain an acknowledgment or introduction that they are from that article. Moreover,
as regards the passages from the work of Professors Criddle and Descent, it was also observed that
the Vinuya decision lifted the portions, including their footnotes, from Criddle-Descent’s article, A
Fiduciary Theory of Jus Cogens as footnotes in the Vinuya decision without any attributions made
to the two authors. Unless amply explained, these unattributed lifting from the works of Ellis and
Criddle-Descent could be construed as plagiarism.

The explanation came from one of Justice Del Castillo’s researchers, a court-employed attorney. She
explained how she accidentally deleted the attributions, originally planted in the beginning drafts
of her report to him, which report eventually became the working draft of the decision. She said
that, for most parts, she did her research electronically. For international materials, she sourced
these mainly from Westlaw, an online research service for legal and law-related materials to which
the Court subscribes. The researcher showed the Committee the early drafts of her report in
the Vinuya case and these included the passages lifted from the separate articles of Criddle-
Descent and of Ellis with proper attributions to these authors. But, as it happened, in the course of
editing and cleaning up her draft, the researcher accidentally deleted the attributions.

14
It was notable that neither Justice Del Castillo nor his researcher had a motive or reason for
omitting attribution for the lifted passages to Criddle-Descent or to Ellis. The latter authors are
highly respected professors of international law. The law journals that published their works have
exceptional reputations. It did not make sense to intentionally omit attribution to these authors
when the decision cites an abundance of other sources. Citing these authors as the sources of the
lifted passages would enhance rather than diminish their informative value. Both Justice Del
Castillo and his researcher gain nothing from the omission. Thus, the failure to mention the works
of Criddle-Decent and Ellis was unquestionably due to inadvertence or pure oversight.

2. No, Justice Del Castillo did NOT twist the works of authors Tams, Criddle-Descent, and Ellis to
make it appear that such works supported the Court’s position in the Vinuya decision.
To twist means “to distort or pervert the meaning of.” For example, if one lifts the lyrics of the
National Anthem, uses it in his work, and declares that Jose Palma who wrote it “did not love his
country,” then there is “twisting” or misrepresentation of what the anthem’s lyrics said. Here,
nothing in the Vinuya decision said or implied that, based on the lifted passages, authors Tams,
Criddle-Descent, and Ellis supported the Court’s conclusion that the Philippines is not under any
obligation in international law to espouse Vinuya et al.’s claims.

In The Matter Of The Charges Of Plagiarism, Etc., Against Associate Justice Mariano C. Del
Castillo, A.M. No. 10-7-17-SC. February 8, 2011.
FACTS:
The Malaya Lolas received an adverse decision in the case Vinuya vs Romulo decided by the
Supreme Court on April 28, 2010. The Malaya Lolas sought the annulment of said decision due to
the alleged irregularity in the writing of the text of the decision. Allegedly, the ponente of said case,
Justice Mariano del Castillo copied verbatim portions of the decision laid down in said case from
three works by three foreign authors without acknowledging said authors hence an overt act of
plagiarism which is highly reprehensible.

Plagiarism as defined by Black’s Law Dictionary is the “deliberate and knowing presentation of
another person’s original ideas or creative expressions as one’s own.”

ISSUE: Whether or not plagiarism is applicable to decisions promulgated by the Supreme Court.

HELD:
No. It has been a long standing practice in this jurisdiction not to cite or acknowledge the
originators of passages and views found in the Supreme Court’s decisions. These omissions are true
for many of the decisions that have been penned and are being penned daily by magistrates from
the Court of Appeals, the Sandiganbayan, the Court of Tax Appeals, the Regional Trial Courts
nationwide and with them, the municipal trial courts and other first level courts. Never in the
judiciary’s more than 100 years of history has the lack of attribution been regarded and demeaned
as plagiarism.

As put by one author (this time acknowledged by the Court), Joyce C. George from her Judicial
Opinion Writing Handbook:

15
A judge writing to resolve a dispute, whether trial or appellate, is exempted from a charge of
plagiarism even if ideas, words or phrases from a law review article, novel thoughts published in
a legal periodical or language from a party’s brief are used without giving attribution. Thus
judges are free to use whatever sources they deem appropriate to resolve the matter before
them, without fear of reprisal. This exemption applies to judicial writings intended to decide
cases for two reasons: the judge is not writing a literary work and, more importantly, the
purpose of the writing is to resolve a dispute. As a result, judges adjudicating cases are not
subject to a claim of legal plagiarism.

Further, as found by the Supreme Court, the omission of the acknowledgment by Justice del
Castillo of the three foreign authors arose from a clerical error. It was shown before the Supreme
Court that the researcher who finalized the draft written by Justice del Castillo accidentally deleted
the citations/acknowledgements; that in all, there is still an intent to acknowledge and not take
such passages as that of Justice del Castillo’s own.

20th Century Fox v. CA, 164 SCRA 655 (1988)

FACTS:
Petitioner 20th Century Fox Film Corporation sought the assistance of the NBI in conducting
searches and seizures in connection with the NBI’s anti-film piracy campaign. Petitioner alleged
that certain videotape outlets all over Metro Manila are engaged in the unauthorized sale and
renting out of copyrighted films in violation of PD No. 49 (the old Intellectual Property Law).

The NBI conducted surveillance and investigation of the outlets pinpointed by the petitioner and
subsequently filed three (3) applications for search warrants against the video outlets owned by
the private respondents. The lower court issued the desired search warrants. The NBI,
accompanied by the petitioner's agents, raided the video outlets and seized the items described in
the three warrants.

Private respondents later filed a motion to lift the search warrants and release the seized
properties, which was granted by the lower court. Petitioner’s motion for reconsideration was
denied by the lower court. The CA affirmed the trial court.

ISSUE:
Did the judge properly lift the search warrants he issued earlier?

HELD:
YES, the judge properly lifted the search warrants he issued earlier.

The lower court lifted the three (3) questioned search warrants in the absence of probable cause
that the private respondents violated P.D. 49. NBI agents who acted as witnesses during the
application for search warrant did not have personal knowledge of the subject matter of their
testimony, which was the alleged commission of the offense of piracy by the private respondents.
Only the petitioner’s counsel who was also a witness during the application stated that he had
personal knowledge that the confiscated tapes owned by the private respondents were pirated
tapes taken from master tapes belonging to the petitioner. The lower court lifted the warrants,

16
declaring that the testimony of petitioner’s counsel did not have much credence because the
master tapes of the allegedly pirated tapes were not shown to the court during the application.

The presentation of the master tapes of the copyrighted films, from which the pirated films were
allegedly copied, was necessary for the validity of search warrants against those who have in their
possession the pirated films. The petitioner's argument to the effect that the presentation of the
master tapes at the time of application may not be necessary as these would be merely evidentiary
in nature and not determinative of whether or not a probable cause exists to justify the issuance of
the search warrants is not meritorious. The court cannot presume that duplicate or copied tapes
were necessarily reproduced from master tapes that it owns.

The essence of a copyright infringement is the similarity or at least substantial similarity of the
purported pirated works to the copyrighted work. Hence, the applicant must present to the court
the copyrighted films to compare them with the purchased evidence of the video tapes allegedly
pirated to determine whether the latter is an unauthorized reproduction of the former. This linkage
of the copyrighted films to the pirated films must be established to satisfy the requirements of
probable cause. Mere allegations as to the existence of the copyrighted films cannot serve as basis
for the issuance of a search warrant.

Columbia Pictures, Inc. v. Court of Appeals, 237 SCRA 367 (1994)

FACTS:
On 07 April 1998: NBI filed with the RTC of Pasig 3 applications for SW against private respondent
(Tube Video Enterprises – Edward C. Cham; Blooming Rose Tape Center – Ma. Jajorie T. Uy; Video
Channel – Lydia Nabong) charging them with violations of Sec. 56 of PD 49 (Decree on the
Protection of Intellectual Property) as amended by PD 1988. The RTC Judge Austria consolidated
the 3 applications and conducted a joint hearing where she made a personal examination of the
applicant (NBI Agent Reyes) and his witnesses. Finding just and probable cause, Judge Austria
issued the search warrants.

Private Respondents filed their “Motion to Quash” the SW citing as grounds that there was no
probable cause; the films in question are not protected by PD 1988 in that they were never
registered in the National Library as a condition precedent to the availment of the protection; the
Motion Picture Association of America have not proven nor established their ownership over the
films; etc. Judge Austria reversed her former stand initially finding probable cause for the issuance
of the search warrants and ordered their quashal of the search warrants giving the following
reasons:

1. Private complainants uncertain of their ownership over the titles;

2. Complainants did not comply with the requirement that master tapes should be
presented during the application for search warrants;
3. Complainants failed to comply with the deposit and registration requirements of PD 49
as amended by PD 1988.

Judge Austria also ordered the return of the items seized by virtue of the warrants. CA affirmed the
quashal of the SWs.

17
ISSUE:
WON the SWs were issued with probable cause.

HELD:
NO. The basic requirement for the validity of search warrants (in cases of this nature) is the
presentation of the master tapes of the copyrighted films from which the pirated films are
supposed to have been copied (20th Century Fox Film Corp. vs. CA, 164 SCRA 655).
The essence of a copyright infringement is the similarity or at least substantial similarity of
the purported pirated works to the copyrighted work. Hence, the applicant must present to the
court the copyrighted films to compare them with the purchased evidence of the video tapes
allegedly pirated to determine whether the latter is an unauthorized reproduction of the former.
This linkage of the copyrighted films to the pirated films must be established to satisfy the
requirements of probable cause. Mere allegations as to the existence of the copyrighted films
cannot serve as basis for the issuance of a search warrant. According to the CA, in which the SC
concurs:

It is not correct to say that "the basic fact" to be proven to establish probable cause in the
instant cases is not the "unauthorized transfer" of a motion picture that has been recorded
but the "sale, lease, or distribution of pirated video tapes of copyrighted films."

In applying for the search warrants the NBI charged violation of the entire provisions of Section 56
of P.D. No. 49 as amended by P.D.No.1988. This included not only the sale, lease or distribution of
pirated tapes but also the transfer or causing to be transferred of any sound recording or motion
picture or other audio visual work. But even assuming, as appellants argue, that only the sale,
lease, or distribution of pirated video tapes is involved, the fact remains that there is need to
establish probable cause that the tapes being sold, leased or distributed are pirated tapes, hence
the issue reverts back to the question of whether there was unauthorized transfer, directly or
indirectly, of a sound recording or motion picture or other audio visual work that has been
recorded.

Columbia Pictures v. Court of Appeals, 261 SCRA 144 (1996)

Facts:
Complainants thru counsel lodged a formal complaint with the National Bureau of Investigation for
violation of PD No. 49, as amended, and sought its assistance in their anti-film piracy drive. Agents
of the NBI and private researchers made discreet surveillance on various video establishments in
Metro Manila including Sunshine Home Video Inc. (Sunshine for brevity), owned and operated by
Danilo A. Pelindario.

On November 14, 1987, NBI Senior Agent Lauro C. Reyes applied for a search warrant with the
court a quo against Sunshine seeking the seizure, among others, of pirated video tapes of
copyrighted films all of which were enumerated in a list attached to the application; and, television
sets, video cassettes and/or laser disc recordings equipment and other machines and
paraphernalia used or intended to be used in the unlawful exhibition, showing, reproduction, sale,
lease or disposition of videograms tapes in the premises above described.

18
The search warrant was served at about 1:45 p.m. on December 14, 1987 to Sunshine and/or their
representatives. In the course of the search of the premises indicated in the search warrant, the
NBI Agents found and seized various video tapes of duly copyrighted motion pictures/films owned
or exclusively distributed by private complainants, and machines, equipment, television sets,
paraphernalia, materials, accessories all of which were included in the receipt for properties
accomplished by the raiding team. Copy of the receipt was furnished and/or tendered to Mr. Danilo
A. Pelindario, registered owner-proprietor of Sunshine Home Video.

During trial, private respondents, Sunshine and Pelindario, aver that being foreign corporations,
petitioners should have such license to be able to maintain an action in Philippine courts.
Petitioners are the copyright owners or owners of exclusive rights of distribution in the Philippines
of copyrighted motion pictures or films.

Issue:
Whether or not petitioners can sue

Held:

Petitioners can sue. The obtainment of a license prescribed by Section 125 of the Corporation Code
is not a condition precedent to the maintenance of any kind of action in Philippine courts by a
foreign corporation. However, under the aforequoted provision, no foreign corporation shall be
permitted to transact business in the Philippines, as this phrase is understood under the
Corporation Code, unless it shall have the license required by law, and until it complies with the law
in transacting business here, it shall not be permitted to maintain any suit in local courts. As thus
interpreted, any foreign corporation not doing business in the Philippines may maintain an action in
our courts upon any cause of action, provided that the subject matter and the defendant are within
the jurisdiction of the court. It is not the absence of the prescribed license but doing business in
the Philippines without such license which debars the foreign corporation from access to our
courts. In other words, although a foreign corporation is without license to transact business in the
Philippines, it does not follow that it has no capacity to bring an action. Such license is not
necessary if it is not engaged in business in the Philippines.

People v. Ramos, 83 SCRA 1 (1978)

FACTS:
On September 3, 1965, two criminal cases for violation of Act 3134 otherwise known as the
Copyright Law were filed against accused Socorro Ramos, the proprietor and general manager of
National Book Store, for allegedly selling and distributing spurious and pirated copies of the high
school textbook entitled General Science Today for Philippine School, said accused knowing that
said book was duly copyrighted by the Phoenix Publishing House, Inc. and was being distributed
exclusively by its sister corporation Alemar’s or Sibal and Sons, Inc.

Accused Ramos filed motion to quash on the ground of prescription, alleging that the alleged
offense was made as early as July 17, 1963 and all subsequent discoveries of sales and possession
of said books were only confirmatory of the first. Accused added that under Art. 91 of the Revised

19
Penal Code, the prescriptive period commenced to run on the day after such discovery on July 17,
1963, and hence, the offense has prescribed since under the Copyright Law, Act 3134:
“Sec. 24. All actions, suits, or proceedings arising under this Act shall be
originally cognizable by the Court of First Instance of the Philippine Islands and
shall prescribe after two years from the time the cause of action arose.”

The prosecution contended that "(T)he crime being a continuing offense, prescription begins to run
from the completion of the last act or series of acts which constitute the offense, " and this last act
was committed on September 3, 1963. Therefore when the information was filed on September 3,
1965, it was filed within the two-year prescriptive period.

The trial court ruled that the prescriptive period should run from September 4, 1963 because the
mere possession by the accused on September 4, 1963 of several copies of said textbook alleged to
be spurious and pirated indicates that accused was distributing or selling said textbook on said
date.

ISSUE:
Has the crime prescribed?

DECISION:
YES, the crime has already prescribed. The question to be resolved is the proper computation of
the two-year period of prescription from September 3, 1963 and whether February 28, and 29 of a
leap year, 1964, should be counted as one day, as proposed by the prosecution; or as separate
days, as alleged by the defense.
It was held in 1969 in Namarco vs. Tuazon that “February 28 and 29 of a leap year should be
counted as separate days in computing periods of prescription.” The Court held that “where the
prescriptive period was supposed to commence on December 21, 1955, the filing of the action on
December 21, 1965, was done after the ten-year period has lapsed—since 1960 and 1964 were
both leap years and the case was thus filed two (2) days too late.”

Since this case was filed on September 3, 1965, it was filed one day too late; considering that the
730th day fell on September 2, 1965—the year 1964 being a leap year. The New Civil Code explicitly
ordains in Article 13 that it shall be understood that years are of three hundred sixty-five days.

There is no merit in the allegation that the reckoning of the prescriptive period should start from
September 4, 1963—the date when the police authorities discovered several pirated books in
accused's store—because the accused was charged in both Criminal Cases with having
allegedly sold and distributed spurious and pirated copies of the textbook in question, not of illegal
possession of the same.

Serrano Laktaw v. Paglinawan, 44 Phil. 855

Facts:
The plaintiff was the registered owner and author of a literary work entitled Diccionario Hispano-
Tagalog (Spanish-Tagalog Dictionary) published in the City of Manila in 1889 by the printing

20
establishment La Opinion. The defendant, without the consent of the plaintiff, reproduced said
literary work, improperly copied the greater part thereof in the work published by him and
entitled Diccionariong Kastila-Tagalog (Spanish-Tagalog Dictionary). The plaintiff on publishing his
new work entitled Diccionario Tagalog-Hispano (Tagalog-Spanish Dictionary) was surprised when
he learned of the fact. The plaintiff then presented a complaint before the CFI for violation of
Intellectual Property Law.
The defendant in his answer denied every allegation of the complaint. The court rendered
judgment absolving the defendant from the complaint. The ground of the decision appealed from
is that a comparison of the plaintiff's dictionary with that of the defendant does not show that the
latter is an improper copy of the former, which has been published and offered for sale by the
plaintiff for about twenty-five years or more. For this reason the court held that the plaintiff had no
right of action and that the remedy sought by him could not be granted.

Issue:
Whether or not the defendant had violated Intellectual Property Law when he reproduced the
plaintiff's work.

Ruling:
Plaintiff, Pedro Serrano, cannot be denied the legal protection he seeks.
Nobody may reproduce another person's work without the owner's consent, even merely to
annotate or add anything to it, or improve any edition thereof. The protection of the law cannot be
denied to the author of a dictionary, for although words are not the property of anybody, their
definitions, the example that explain their sense, and the manner of expressing their different
meanings, may constitute a special work. On this point, a dictionary constitutes property, although
some of the words therein are explained by mere definitions expressed in a few lines and
sanctioned by usage, provided that the greater part of the other words contain new meanings; new
meanings which evidently may only belonged to the first person who published them.

Habana v. Robles, 310 SCRA 511 (1999)

FACTS:
Pacita Habana et al., are authors and copyright owners of duly issued of the book, College English
For Today (CET). Respondent Felicidad Robles was the author of the book Developing English
Proficiency (DEP). Petitioners found that several pages of the respondent's book are similar, if not
all together a copy of petitioners' book. Habana et al. filed an action for damages and injunction,
alleging respondent’s infringement of copyrights, in violation of P.D. 49. They allege 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.

21
On the other hand, Robles contends that the book DEP is the product of her own intellectual
creation, and was not a copy of any existing valid copyrighted book and that the similarities may be
due to the authors' exercise of the "right to fair use of copyrighted materials, as guides."

The trial court ruled in favor of the respondents, absolving them of any liability. Later, the Court of
Appeals rendered judgment in favor of respondents Robles and Goodwill Trading Co., Inc. In this
appeal, petitioners submit that the appellate court erred in affirming the trial court's decision.

ISSUE:
Did Robles commit infringement in the production of DEP?

HELD:
Yes, a perusal of the records yields several pages of the book DEP that are similar if not identical
with the text of CET. The court finds 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.

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.

Joaquin v. Drilon, 302 SCRA 225 (1999)

FACTS:
Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922,
dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977. On June
28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate of
copyright specifying the show’s format and style of presentation. On July 14, 1991, while watching
television, petitioner Francisco Joaquin, Jr., president of BJPI, saw on RPN Channel 9 an episode of
Its a Date, which was produced by IXL Productions, Inc. (IXL). Thereafter, he wrote a letter to
private respondent Gabriel M. Zosa, president and general manager of IXL, informing Zosa that BJPI
had a copyright to Rhoda and Me and demanding that IXL discontinue airing Its a Date.

In a letter, dated July 19, 1991, private respondent Zosa apologized to petitioner Joaquin and
requested a meeting to discuss a possible settlement. IXL, however, continued airing Its a Date,
prompting petitioner Joaquin to send a second letter on July 25, 1991 in which he reiterated his
demand and warned that, if IXL did not comply, he would endorse the matter to his attorneys for
proper legal action.

Meanwhile, private respondent Zosa sought to register IXLs copyright to the first episode of Its a
Date for which it was issued by the National Library a certificate of copyright on August 14, 1991.

Upon complaint of petitioners, an information for violation of P.D. No. 49 was filed against private
respondent Zosa together with certain officers of RPN Channel 9, namely, William Esposo, Felipe
Medina, and Casey Francisco, in the Regional Trial Court of Quezon City. However, private

22
respondent Zosa sought a review of the resolution of the Assistant City Prosecutor before the
Department of Justice.

On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the Assistant City
Prosecutor’s findings and directed him to move for the dismissal of the case against private
respondents.

Petitioner Joaquin filed motion for reconsideration but such was denied.

ISSUE:
Whether or not the format or mechanics or petitioner’s television show is entitled to copyright
protection.

HELD:
The format or mechanics of petitioner’s television show is not entitled to copyright protection. Sec.
2 of PD No. 49, otherwise known as the Decree on Intellectual Property, enumerates the classes of
work entitled to copyright protection. The provision is substantially the same as Sec. 172 of the
Intellectual Property Code of the Philippines (RA 8293). The format or mechanics of a television
show is not included in the list of protected works in Sec. 2 of PD No. 49. For this reason, the
protection afforded by the law cannot be extended to cover them.

Copyright, in the strict sense of the term, is purely a statutory right. It is a new independent right
granted by the statute and not simply a pre-existing right regulated by the statute. Being a
statutory grant, the rights are only such as the statute confers, and may be obtained and enjoyed
only with respect to the subjects and by the person and on terms and conditions specified in the
statute.

Meanwhile, the Court is of the opinion that petitioner BJPI’s copyright covers audio-visual
recordings of each episode of Rhoda and Me, as falling within the class of works mentioned in PD
49. However, the copyright does not extend to the general concept or format of its dating game
show. Mere description by words of the general format of the two dating game shows is
insufficient; the presentation of the master videotape in evidence was indispensable to the
determination of the existence of a probable cause. 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.

Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)

Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the goods
or services of an enterprise and shall include a stamped or marked container of goods. The scope
of a copyright is confined to literary and artistic works which are original intellectual creations in
the literary and artistic domain. Patentable inventions refer to any technical solution of a problem
in any field of human activity which is new, involves an inventive step and is industrially applicable.

23
FACTS:
Pearl and Dean is a corporation in the manufacture of advertising display units also known as light
boxes, which were manufactured by Metro Industrial Services. A copyright Registration was
obtained in 1981. These were marketed in the name of "Poster Ads". They also applied for a
registration of trademark with the Bureau of Patents in 1983, but was only approved in 19988. In
1985, petitioner had n agreement with respondent Shoemart Inc (SMI) to install these light boxes
in their Makati and Cubao branch, Only the Makati branch was able to sigh the agreement. In 1986,
the contract was rescinded unilaterally by SMI, and instead contracted with Metro Industrial
Services. They installed these lightboxes in different SM city branches, including Cubao and Makati,
with association with North Edsa Marketing Inc (NEMI), SMI's sister company. Petitioner requested
SMI and NEMI to put down their installations of the light boxes, and payment of compensatory
damages worth P20M. Claiming that respondents failed to comply, they filed a case for
infringement of trademark and copyright, unfair competition and damages. RTC ruled in favor of
petitioner, but CA reversed.

ISSUES:
(1) Whether there was a copyright infringement
(2) Whether there was a patent infringement
(3) Whether there was a trademark infringement
(4) Whether there was unfair competition

RULING:
No to all.
(1) Copyright is a statutory right, subject to the terms and conditions specified in the statute.
Therefore, it can only cover the works falling within the statutory enumeration or description. Since
the copyright was classified under class "O" works, which includes "prints, pictorial illustrations,
advertising copies, labels, tags and box wraps," and does not include the light box itself. A lightbox,
even admitted by the president of petitioner company, was neither a literary nor an artistic work
but an engineering or marketing invention, thus not included under a copyright.

(2) Petitioner was not able to secure a patent for its lightboxes, and cannot legally prevent anyone
from manufacturing or commercially using the same. Patent has a three-fold purpose: a) to foster
and reward invention; b) promotes disclosures of invention and permit public to use the same upon
expiration; c) stringent requirements for patent protection to ensure in the public domain remain
there for free use of the public. Since petitioner was not able to go through such examination, it
cannot exclude others from manufacturing, or selling such lightboxes. No patent, no protection.

(3) The certificate of registration issued by the Director of Patents gives exclusive right to use its
own symbol only to the description specified in the certificate. It cannot prevent others to use the
same trademark with a different description.

(4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and Dean, thus it
cannot be considered to use such term to be unfair competition against the petitioner.

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Microsoft Corporation and Adobe Systems Inc. vs. Samir Farajallah, et al., G.R. No. 205800,
September 10, 2014
Facts:
Microsoft Corporation and Adobe Systems Incorporated (petitioners) are corporations organized
and existing under the laws of the United States. Microsoft is the owner of all rights including
copyright relating to all versions and editions of Microsoft software, and the registered owner of
the “Microsoft” “MS DOS” trademarks in the Philippines. Adobe is the owner of all rights including
copyright of Adobe Software.

On the other hand, respondents are the directors and officers of New Fields (Asia Pacific), Inc., a
domestic corporation with principal office at Unit 1603, East Tower, Philippine Stock Exchange
Center, Exchange Road, Ortigas Center, Pasig City.

Petitioners claim that they were informed that New Fields was unlawfully reproducing and using
unlicensed versions of their software. So, they engaged the services of Orion Support, Inc. (OSI) to
assist in the verification of this information. Serrano and Moradoz (OSI Market Researchers) were
assigned to confirm the informant's tip. They also filed a letter-complaint Chief of the Philippine
National Police Criminal Investigation and Detection Group and the case was assigned to Police
Senior Inspector Padilla.

On March 26 2010, Padilla, Serrano, and Moradoz went to the office of respondents. Using a
legitimate business pretext, they were able to use two computers owned by New Fields and they
confirmed in their joint affidavit that there are at least two (2) computers using common product
identification and/or serial numbers of MICROSOFT and ADOBE software. This is one indication that
the software being used is unlicensed or was illegally reproduced or copied. After being informed
of the results of the investigation, petitioners issued certifications that they have not authorized
New Fields to “copy, print, reproduce and/or publish unauthorized copies of Microsoft and Adobe
software products.”

A search warrant was then issued by Judge Amor Reyes and said warrants were served on
respondents on May 24 2010. New Fields then filed a motion seeking to quash one of the two
warrants served. Petitioner alleged that the said motion failed to comply with the mandatory 3-day
notice rule under the Rules of Court. Hence it is nothing but a worthless piece of paper. However,
the RTC issued an order quashing both warrant and directing that all items seized be returned to
the respondents. Petitioner then filed a motion for reconsideration but was denied. Hence, this
appeal.

Issue:
Whether or not there was probable cause for issuance of a warrant

Held:
In Microsoft Corporation v. Maxicorp, Inc., we ruled that the existence of probable cause is a
question of fact. In the same case, we also stated that:
“Probable cause is dependent largely on the opinion and findings of the judge
who conducted the examination and who had the opportunity to question the

25
 applicant and his witnesses. For this reason, the findings of the judge deserve
great weight. The reviewing court should overturn such findings only upon proof
that the judge disregarded the facts before him or ignored the clear dictates of
reason.”

This Court is not a trier of facts. As a general rule, we defer to the lower courts’ appreciation and
evaluation of evidence. This general rule, however, is not absolute. We will review the factual
findings of the CA in any of the following instances:
(1) when the factual findings of the Court of Appeals and the trial court are contradictory;
2) when the conclusion is a finding grounded entirely on speculation, surmises, or
conjectures;
(3) when the inference made by the Court of Appeals from its findings of fact is manifestly
mistaken, absurd, or impossible;
4) when there is a grave abuse of discretion in the appreciation of facts;
(5) when the Appellate Court, in making its findings, went beyond the issues of the case
and such findings are contrary to the admissions of both appellant and appellee;
(6) when the judgment of the Court of Appeals is premised on a misapprehension of facts;
(7) when the Court of Appeals failed to notice certain relevant facts which, if properly
considered, would justify a different conclusion;
(8) when the findings of fact are themselves conflicting;
(9) when the findings of fact are conclusions without citation of the specific evidence on
which they are based; and
(10) when the findings of fact of the Court of Appeals are premised on the absence of
evidence but such findings are contradicted by the evidence on record.

In this case, we find reason to overturn the rulings of the RTC and CA, since there was grave abuse
of discretion in the appreciation of facts. Initial hearsay information or tips from confidential
informants could very well serve as basis for the issuance of a search warrant, if followed up
personally by the recipient and validated.

The evidence on record clearly shows that the applicant and witnesses were able to verify the
information obtained from their confidential source. The evidence likewise shows that there was
probable cause for the issuance of a search warrant. Thus, the requirement of personal knowledge
of the applicant and witnesses was clearly satisfied in this case.

ABS-CBN Broadcasting vs. Philippine Multi-Media System, G.R. Nos. 175769-70, January 19, 2009.
FACTS:
Philippine Multi-Media System, Inc. (PMSI), operator of Dream Broadcsating System, delivers a
digital direct-to-home (DTH) television satellite to its subscribers all over the Philippines. It was
granted a legislative franchise 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, together with
other paid premium program channels, ABS-CBN Channels 2 and 23, NBN, Channel 4, ABC, Channel
5, GMA, Channel 7, RPN, Channel 9, and IBC, Channel 13, pursuant to Memorandum Circular 4-08-

26
88 which mandated all cable television system operators, operating within the Grade “A” and “B”
CONTOURS to carry out the television signals of the authorized television broadcast stations.

ABS-CBN Broadcasting Corporation (ABS-CBN), a licensed television and radio broadcasting

network, demanded PMSI to cease and desist from “rebroadcasting” Channels 2 and 23. In its
reply, PMSI contended that the “rebroadcasting” was in accordance with the authority granted by
NTC under its obligations under NTC MC 4-08-88.

Negotiations were ensued between the parties in an effort to reach a settlement; however, the
same was terminated by ABS-CBN allegedly due to PMSI’s 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 its regional television stations.

ABS-CBN filed with the Intellectual Property Rights Office (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” alleging that PMSI’s unauthorized rebroadcasting of Channels 2 and
23 infringed on its broadcasting rights and copyright. The TRO was granted by the Bureau of Legal
Affairs (BLA) of IPO. PMSI, pursuant to the TRO, suspended the retransmission of PMSI of Channels
2 and 23 and likewise filed a petition for certiorari with the Court of Appeals. The Court of Appeals
granted the petition of PMSI and reversed the decision of the BLA. ABS-CBN filed its appeal
however it was dismissed by the Court of Appeals. Furthermore, ABS-CBN’s motion for
reconsideration was denied.

Issues:
1. Whether or not PMSI violated the Laws on Property Rights.
2. Whether or not the issuance MC 4-08-88 by the NTC is a valid exercise of the police power of the
State.

Held:
1. NO. PMSI did not violate the Laws on Property Rights because it is not engaged in
rebroadcasting Channels 2 and 23. Rebroadcasting has been defined as “the simultaneous
broadcasting by one broadcasting organization of the broadcast of another broadcasting
organization.” It is also “the transmission by wireless means for the public reception of sounds or of
images or of representations thereof; such transmission by satellite is also ‘broadcasting’ where
the means for decrypting are provided to the public by the broadcasting organization or with its
consent.” PMSI is only engaged in the carrying of signals of ABS-CBN coming from ABS-CBN and
transmitting signals. PMSI is not the origin nor does it claim to be the origin of the programs
broadcasted by the ABS-CBN. PMSI did not make and transmit on its own but merely carried the
existing signals of the ABS-CBN. When PMSI subscribers view ABS-CBN’s programs in Channels 2
and 23, they know that the origin thereof was the ABS-CBN.

The nature of broadcasting is to scatter the signals in its widest area of coverage as possible. On
this score, it may be said that making public means that accessibility is undiscriminating as long as
it is within the range of the transmitter and equipment of the broadcaster. That the medium

27
through which the PMSI carries the ABS-CBN’s signal, that is via satellite, does not diminish the fact
that it operates and functions as a cable television. It remains that the PMSI’s transmission of
signals via its DTH satellite television service cannot be considered within the purview of
broadcasting.

Furthermore, there is no rebroadcasting on the part of the PMSI of the ABS-CBM’s programs on
Channels 2 and 23, as defined under the Rome Convention, which defines rebroadcasting as “the
simultaneous broadcasting by one broadcasting organization of the broadcast of another
broadcasting organization.” ABS-CBN creates and transmits its own signals; PMSI merely carries
such signals which the viewers receive in its unaltered form. PMSI does not produce, select, or
determine the programs to be shown in Channels 2 and 23. Likewise, it does not pass itself off as
the origin or author of such programs. Insofar as Channels 2 and 23 are concerned, PMSI merely
retransmits the same in accordance with Memorandum Circular 04-08-88. With regard to its
premium channels, it buys the channels from content providers and transmits on an as-is basis to
its viewers. Clearly, PMSI does not perform the functions of a broadcasting organization; thus, it
cannot be said that it is engaged in rebroadcasting Channels 2 and 23.

Therefore, the retransmission of ABS-CBN’s signals by PMSI – which functions essentially as a cable
television – does not constitute rebroadcasting in violation of the former’s intellectual property
rights under the IP Code.

2. YES. The law on copyright is not absolute. The carriage of ABS-CBN’s 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 NTC’s 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 maintain effective competition among private entities
in these activities whenever the Commission finds it reasonably feasible. The “Must-Carry Rule” is
in consonance with the principles and objectives underlying Executive Order No. 436, to wit:
“The Filipino people must be given wider access to more sources of news, information,
education, sports event and entertainment programs other than those provided for by
mass media and afforded television programs to attain a well informed, well-versed and
culturally refined citizenry and enhance their socio-economic growth.”

Moreover, radio and television waves are mere franchised which may be reasonably burdened with
some form of public service. It is a privilege subject, among other things, to amendment by
Congress in accordance with the constitutional provision that “any such franchise or right
granted . . . shall be subject to amendment, alteration or repeal by the Congress when the common
good so requires.”

The must carry rule is a valid exercise of the police power of the State. It favors both broadcasting
organizations and the public. It prevents cable television companies from excluding broadcasting
organization especially in those places not reached by signal. Also, the rule prevents cable

28
television companies from depriving viewers in far-flung areas the enjoyment of programs available
to city viewers.

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