documentip

INTELLECTUAL PROPERTYBy: Jeffrey L. Santos

MIGHTY CORPORATION vs. ENJ GALLO WINERS (GR No 154342, July 14, 2004)

This is a petition for review on certiorari under Rule 45 seeking to annul, reverse, and set aside the decision of the Court of Appeals affirming the decision of the Regional Trial Court of Makati City which held petitioners liable for and permanently enjoined them from, committing trademark infringement and unfair competition, and the resolution denying their motion for reconsideration and the aforesaid RTC Makati decision itself.

Facts:

Respondent Gallo Winery is a foreign corporation not doing business in the Philippines but organized and existing under the laws of the State of California, United States of America (U.S.), which produces different kinds of wines and brandy products and sells them in many countries under different registered trademarks, including the GALLO and ERNEST & JULIO GALLO wine trademarks.

On the other hand, petitioners Mighty Corporation and La Campana and their sister company, Tobacco Industries of the Philippines (Tobacco Industries), are engaged in the cultivation, manufacture, distribution and sale of tobacco products for which they have been using the GALLO cigarette trademark since 1973.

Tobacco Industries assigned the GALLO cigarette trademark to La Campana which applied for trademark registration in the Philippine Patent Office. On July 17, 1985, the National Library issued Certificate of Copyright Registration No. 5834 for La Campana’s lifetime copyright claim over GALLO cigarette labels. Subsequently, La Campana authorized Mighty Corporation to manufacture and sell cigarettes bearing the GALLO trademark. Petitioners claim that GALLO cigarettes have been sold in the Philippines since 1973, initially by Tobacco Industries, then by La Campana and finally by Mighty Corporation.

On the other hand, although the GALLO wine trademark was registered in the Philippines in 1971, respondents claim that they first introduced and sold the GALLO and ERNEST & JULIO GALLO wines in the Philippines circa 1974 within the then U.S. military facilities only. By 1979, they had expanded their Philippine market through authorized distributors and independent outlets.

Respondents claim that they first learned about the existence of GALLO cigarettes in the latter part of 1992 when an Andresons employee saw such cigarettes on display with GALLO wines in a Davao supermarket wine cellar section.

Respondents sued petitioner in the Makati RTC for trademark and tradename infringement and unfair competition, with a prayer for damages and preliminary injunction. They claimed that petitioners adopted the GALLO trademark to ride on Gallo Winery's GALLO and ERNEST & JULIO GALLO trademarks' establihsed reputation and popularity, thus causing confusion, depection, and mistake on the part of the purchasing public who had always associated GALLO and ERNEST & JULIO GALLO trademarks with Gallo Winery's wine.

The Makati RTC denied respondent's prayer for the issuance of a writ of preliminary injunction holding that respondent's GALLO trademark registration


certificate covered wines only, that respondents' wines and petitioners' cigarettes were not related goods and respondents failed to prove material damage or great irreparable injury as required by Section 5, Rule 58 of the Rules of Court.

However, after trial on the merits, the Makati RTC held petitioners liable for and permanently enjoined them from, committing trademark infringement and unfair competition with respect to the GALLO trademark.

On appeal, the CA affirmed the Makati RTC decision and subsequently denied petitioner's motion for reconsideration. Hence, this case.

Issue:

Whether or not there is infringement.

Held:

At the time the cause of action accrued in this case, the IPC was not yet enacted so the relevant laws used were the Trademark Law and the Paris Convention.

The SC held that there was no infringement. The use of the respondent of the mark “Gallo” for its wine products was exclusive in nature. The court mentioned two types of confusion in Trademark Infringement:

Confusion of Goods – when an otherwise prudent purchaser is induced to purchase one product in the belief that he is purchasing another, in which case defendant’s goods are then brought as the plaintiff’s and its poor quality reflects badly on the plaintiff’s reputation.

Confusion of Business – wherein the goods of the parties are different but the defendant’s product can reasonably (though mistakenly) be assumed to originate from the plaintiff, thus deceiving the public into believing that there is some connection between the plaintiff and defendant which, in fact, does not exist.

In determining the likelihood of confusion, the Court must consider:

(a) the resemblance between the trademarks;

(b) the similarity of the goods to which the trademark is attached;

(c) the likely effect on the purchaser; and

(d) the registrant’s express or implied consent and other fair and equitable considerations.

In this case, the SC employing the dominancy test, concluded that there is no likelihood of confusion. They materially differ in color scheme, art works and markings. Further, the two goods are not closely related because he products belong to different classifications, form, composition and they have different intended markets or consumers.


ELIDAD C. KHO vs. COURT OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING COMPANY and ANG TIAM CHAY (G.R. No. 115758, March 19, 2002, 379 SCRA 410)

This is a petition for review on certiorari of the decision setting aside and declaring as null and void the Orders of the Regional Trial Court of Quezon City granting the issuance of a writ of preliminary injunction.

Facts: In the complaint, petitioner allegations are that they are doing business under the name and style of KEC Cosmetics Laboratory, registered owner of Chin Chun Su and oval facial cream container/case. Petitioner likewise alleged that she also has patent rights on Chin Chun Su and Device and Chin Chun Su Medicated Cream after purchasing the same from Quintin Cheng, the registered owner thereof in the supplemental register of the Philippine Patent Office and that Summerville advertised and sold petitioner’s 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 petitioner’s business sales and income; and, that the respondents should be enjoined from allegedly infringing on the copyrights and patents of the petitioner.

The respondents, on the other hand, alleged as their defense that (1) Summerville is the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi factory of Taiwan, (2) that the said Taiwanese manufacturing company authorized Summerville to register its trade name Chin Chun Cu Medicated Cream with the Philippine Patent office and Other appropriate governmental agencies; (3) that KEC Cosmetics Laboratory of the petitioner obtained the copyrights through misrepresentation and falsification; and, (4) that the authority of Quintin Cheng, assignee of the patent registration certificate, to distribute and market Chin Chun Su products in the Philippines had already terminated by the said Taiwanese manufacturing company.

Issue:

Whether or not petitioner Kho has the sole right using the package of Chin Chun Su products.

Held:

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 in as much 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 petitioner’s copyright and patent registration of the name and container would not guarantee her the right


to 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.


ELIDAD KHO and VIOLETA KHO vs. HON. ENRICO LANZANAS, Presiding Judge of the Regional Trial Court of Manila – Branch 7 and SUMMERVILLE GENERAL MERCHANDISING (GR No. 150877, May 4, 2006)

This is a petition praying that the decision of the Court of Appeals be reversed and set aside, and a new decision be issued granting the quashal of Search Warrant No. 99-1520 and ordering the return of the items unlawfully seized.

Facts:

Shun Yih Chemistry Factory (SYCF), a business existing and operating in Taiwan and engaged in the manufacture and sale of Chin Chun Su Creams/Cosmetics, appointed Young Factor Enterprises in the Philippines, owned and operated by Quintin Cheng also known as Kho Seng Hiok, as its distributor of Chin Chun Su products in the Philippines for a term of two years beginning 1978. Quintin Cheng registered with the Bureau of Food and Drugs (BFAD) as distributor of Chin Chun Su products. Quintin Cheng subsequently secured a supplemental registration for Chin Chun Su and device. This supplemental registration was ordered cancelled by the Bureau of Patents, Trademarks and Technology Transfer on the ground of failure of the registrant to file the required affidavit of non-use as required by Section 12 of Republic Act No. 166, as amended.

Notwithstanding this cancellation, Quintin Cheng executed on 30 January 1990 an Assignment of a Registered Trademark and a Supplementary Deed of Assignment dated 25 November 1991 wherein he sold all his right, title, interest and goodwill in the trademark Chin Chun Su and device to petitioner Elidad Kho.

In the meantime, animosity arose between SYCF and Quintin Cheng resulting in the termination of their distributorship agreement on 30 October 1990.

Consequently, on 30 November 1990, SYCF appointed respondent Summerville General Merchandising, represented by Ang Tiam Chay and Victor Chua, as its exclusive importer, re-packer and distributor of Chin Chun Su products in the Philippines for a period of five years or until May 2005.

SYCF further executed a Special Power of Attorney dated 11 September 1991 in favor of Summerville General Merchandising granting it the authority to file complaints against usurpers of Chin Chun Su trademarks/tradename.

From the foregoing incidents arose several judicial and quasi-judicial proceedings.

In the case pending before the Regional Trial Court of Manila, there were different ruling in this case until it boils down when the DOJ directed the City Prosecutor of Manila to continue with the criminal prosecution of the Khos for Unfair Competition.

The RTC of Manila held that whatever maybe the merits of the Motion for Reconsideration, revival of the case is now barred by the impregnable wall of double jeopardy. Accordingly, the MR is denied with finality.

Thus, Summerville General Merchandising raised its case to the Court of Appeals, and the Court denied due course to the petition of Summerville General Merchandising and affirmed the ruling of the trial court that, indeed, double jeopardy has set in.


In the case for Search Warrant before the RTC of Manila, a search warrant was issued against Elidad, Violeta and Roger Kho on the same day. Its enforcement led to the seizure of several Chin Chun Su products.

On 17 January 2000, Elidad, Violeta and Roger Kho filed before the RTC of Manila, Branch 7, a motion to quash the search warrant and for the return of the items unlawfully seized. The same was denied for lack of merit.

Elidad and Violeta Kho filed a Petition for Certiorari and Preliminary Mandatory Injunction before the Court of Appeals questioning the aforementioned Orders of the RTC of Manila, Branch 7. A decision was rendered by the Court of Appeals denying the petition. Hence, this case.

Issue:

Whether or not the Court of Appeals erred in upholding the RTC of Manila, Branch 7, in its findings of probable cause to issue a search warrant.

Held:

No.

The court cannot find any irregularity or abuse of discretion on the part of Judge Lanzanas for issuing the assailed search warrant. On the contrary, the court find that he had complied with the procedural and substantive requirements for issuing a search warrant. The court, therefore, bound to respect his finding of probable cause for issuing Search Warrant No. 99-1520.

SECTION 1. Search warrant defined. – A search warrant is an order in writing issued in the name of the People of the Philippines, signed by a judge and directed to a peace officer, commanding him to search for personal property described therein and bring it before the court.SEC. 6. Issuance and form of search warrant. – If the judge is satisfied of the existence of facts upon which the application is based or that there is probable cause to believe that they exist, he shall issue the warrant, which must be substantially in the form prescribed by these Rules.

What constitutes "probable cause" is well settled. In Microsoft Corporation v. Maxicorp, Inc.,

Probable cause means "such reasons, supported by facts and circumstances as will warrant a cautious man in the belief that his action and the means taken in prosecuting it are legally just and proper." Thus, probable cause for a search warrant requires such facts and circumstances that would lead a reasonably prudent man to believe that an offense has been committed and the objects sought in connection with that offense are in the place to be searched.

x x x x

The determination of probable cause does not call for the application of rules and standards of proof that a judgment of conviction requires after trial on the merits. As implied by the words themselves, "probable cause" is concerned with probability, not absolute or even moral certainty. The prosecution need not present at this stage proof beyond reasonable doubt. The standards of judgment are those of a reasonably prudent man, not the exacting calibrations of a judge after a full-blown trial.


No law or rule states that probable cause requires a specific kind of evidence. No formula or fixed rule for its determination exists. Probable cause is determined in the light of conditions obtaining in a given situation. xxx

Clearly, probable cause existed for the issuance of the warrant as shown by the affidavits of the above affiants who had personal knowledge of facts indicating that an offense involving violation of intellectual property rights was being committed and that the objects sought in connection with the offense are in the place sought to be searched. The surveillance conducted by SPO4 Nedita Balagbis on the basis of reliable information that Elidad, Violeta and Roger Kho were engaged in the illegal manufacture and sale of fake Chin Chun Su products enabled her to gain personal knowledge of the illegal activities of the Khos. This fact was sufficient justification for the examining judge, in this case Judge Lanzanas, to conclude that there was probable cause for the issuance of the search warrant.


UNITED FEATURE SYNDICATE, INC. vs. MUNSINGWEAR CREATION MANUFACTURING COMPANY (GR No. 76193, November 9, 1989)

This is a petition for review on certiorari seeking to set aside the Resolution of the Court of Appeals dismissing the appeal of petitioner-appellant for having been filed out of time and denying its Motion for Reconsideration for lack of merit.

Facts:

A Petition for review on certiorari filed by United Feature Syndicate Inc., seeking to set aside the Resolution dismissing the appeal of petitioner-appellant for having been filed out of time and denying its Motion for Reconsideration for lack of merit.

The case arose from a petition for cancellation of the registration of trademark of Charlie Brown filed by petitioner alleging that they are damaged by the registration of trademark Charlie Brown on T-shirts on the ground that (1) Munsingwear is not entitled to the registration of the mark Charlie Brown and Device at the time of application of registration; (2) Charlie Brown is a character creation or a pictorial illustration, the copyright to w/c is exclusively owned by United Feature Syndicate; (3) as the owner of the pictorial illustration, petitioner has since 1950 used and reproduced the same to the exclusion of others.

Issue:

Whether or not a copyrighted character may not be appropriated as a trademark by another under PD 49.

Held:

Yes. Section 2. The right granted by this decree shall, from the moment of creation, subsist with respect to any classes of work.xxx

(o) prints, pictorial illustrations, advertising copies, labels, tags, and box wraps.

Since Charlie Brown and its pictorial representation were covered by a copyright registration way back 1950, the same are entitled to protection under PD 49.

Aside from its copyright registration, petitioner is also the owner of several trademark registration and application for the name and likeness “CHARLIE BROWN”, which is the duly registered trademark and copyright as early as 1957 and additionally also a TV special the “PEANUTS” character “CHARLIE BROWN”.


MICROSOFT CORP & LOTUS DEV. CORP. vs. MACXICORP, INC., (GR 140946, September 13, 2004)

This is a petition for review on certiorari seeking to reverse the Decision of the Court of Appeals reversing the Order of the lower court denying respondent Maxicorp, Inc., motion to quash the search warrant that the RTC issued against Maxicorp.

Facts:

The antecedent facts are as follow: NBI Agent Samiano filed several application for search warrant against Maxicorp for Violation of Section 29 of PD 49 and Article 189 of the RPC.

After conducting preliminary examination of the applicant and his witnesses, the RTC issued a search warrant against Maxicorp.

Armed with a search warrant, NBI agents conducted a search on Maxicorp premises and seized properties fitting the description in the search warrant.

Maxicorp filed a motion to quash search warrants alleging there was no probable cause for their issuance and the search warrant is a general warrant. RTC denied the Motion as well as the MR.

CA reversed the lower court ruling. It ruled that NBI Samiano failed to present during preliminary examination that Maxicorp produced and sold the counterfeit products and that the receipt presented as evidence that he bought the products from Maxicorp was in the name of a certain Joel Diaz. Hence, this case.

Issues:

Whether or not the Petition is defective because it failed to raise question of law.Whether or not petitioner has legal personality to file this petition as it is the OSG as representative of the People of the Philippines is the proper party in a criminal case.Whether or not there is probable cause to issue search warrant.Whether or not the search warrant is in a form of a general warrant.

Held:

A petition for review under Rule 45 should cover question of laws. Question of facts is not reviewable. As a rule, finding of facts of the CA are final and conclusive and this court will not review them on appeal subject on the exception when the finding of the CA conflicts with the trial court.

In this case, it falls under one of the exceptions, the finding of the CA conflicts with the trial court.

In Columbia Pictures Entertainment vs. CA, it ruled that the petitioner could argue the case in lieu of OSG if there is grave error committed by the lower court or lack of due process (to avoid a situation where the complainant find itself powerless to pursue a remedy due to circumstances beyond its control.


Probable cause – reasonable belief that an offense has been committed. The testimonies of the two witnesses and the object and documentary evidence are sufficient to establish the existence of probable cause.

The court finds for Maxicorp. A search warrant must state particularly the place to be search and the object to be seized.

Paragraph c of the search warrant is lacking in particularity. The scope of this description is all-embracing since it covers property used for personal and other purposes not related to copyright infringement or unfair competition.

No provision of law exists w/c requires that the warrant partially defective should be nullified as a whole. All items seized under paragraph c, should be returned to Maxicorp.


MICROSOFT CORPORATION et al. vs. JUDY C. HWANG/BELTRON COMPUTER PHILS., INC. et al.

A petition for certiorari of the Resolution of the DOJ dismissing for lack of merit and insufficiency of evidence petitioner Microsof complaint against respondents for copyright infringement and unfair competition.

Facts:

Microsoft and Beltron entered into a Licensing Agreement authorizing Beltron, FOR A FEE, to reproduce and install no more than 1 copy of Microsoft Software on each customer system hard disk or read only memory and distribute directly or indirectly and license copies of the product.

Microsoft terminated the Agreement for Beltron's non-payment of royalties.

Microsoft learned the respondents were illegally copying and selling Microsoft software. Microsoft hired a private investigative firm and sought assistant of the NBI wherein NBI Agent Samiano and and Sacriz posing as representative of computer shop, bought computer hardware and software from respondents. The CPU contained pre-installed Microsoft Window and MS-DOS software but they were not given end user license agreements, user's manual, certificates of authenticity of the articles they purchased.

Microsoft Applied for search warrant against respondents. The TRC granted the application and the NBI searched the premises of Beltron and TMTC and seized several computer related hardware, software, accessories, and paraphernalia. Among these were 2831 pieces of CD ROMs containing Microsoft software.

Microsoft and Lotus charged respondents for copyright infringement and unfair competition.

DOJ ruled that the liability of the respondents is civil in nature because of the license agreement and to pressure Beltron to pay its obligation under the Agreement and Microsoft failed to show evidence that respondents were engaged in sale of counterfeit softwares of Microsoft. Hence this case.

Issue:

Whether or not there is probable cause to charge respondents for copyright infringement and unfair competition.

Held:

Section 5 of PD 49 enumerates the rights vested exclusively on the copyright owner ( copy, distribute, multiply, and sell his intellectual property). Contrary to the DOJ's ruling, the gravamen of copyright infringement is not merely the unauthorized manufacturing of intellectual works but rather the unauthorized performance of any of the acts covered by Section 5. Hence, any person who performs any of the acts under Section 5 w/o obtaining the copyright owner's prior consent render himself civilly and criminally liable for copyright infringement.


The circumstances give rise to the reasonable inference that respondents mass-produced the DC ROMs in question w/o securing Microsoft's prior authorization.

The counterfeit CD ROMs Samiano and Sacriz bought from respondents also suffice to support finding of probable cause to indict respondents for unfair competition for passing off MS products. From the pictures of the CDE ROM packaging, one cannot distinguish genuine MS software. Such replication implies intent to deceive.


PEARL & DEAN (PHIL), INC., vs. SHOEMART, INC., and NORTH EDSA MARKETING, INC., (GR 148222, August 15, 2003)

This is a petition for review on certiorari under rule 45 of the Rules of Court assailing the decision of the Court of Appeals reversing the decision of Regional Trial court of Makati declaring private respondents Shoemart, Inc., and North EDSA Marketing Inc., liable for infringement of trademark and copyright, and unfair competition.

Facts:

Pearl & Dean (Phil), Inc., (P&D) is engaged in the manufacture of advertising display units referred to as light boxes. P&D was able to secure a Certificate of Copyright Registration over these illuminated display units. The advertising light boxes were marketed under the trademark “Poster Ads”, also applied for registration on the trademark.

P&D negotiated w/ SMI for the lease and installation of the light boxes in North EDSA. Since North EDSA was under construction at that time, SMI offered as an alternative, Makati and Cubao, w/c P&D agreed. However, the contract for SM Makati wa returned signed. P&D inquire about the other contract but SMI did not bother to reply.

SMI informed P&D that it was revoking the contract for Makati due to non-performance of terms.

Two years later, Metro Industrial Services the company formerly contracted by P&D to fabricate its display units, offered to construct light boxes for SM stores. Several light boxes were fabricated by Metro Industrial for SMI. After its contract w/ Metro Industrial was terminated, SMI engaged the services of EYD Rainbow Advertising Corp to make the light boxes. Some 300 units were fabricated.

P&D received reports that exact copies of its light boxes were installed at SM stores. P&D filed a case for infringement of trademark and copyright, unfair competition and damages.

RTC ruled in favor of P&D. However, CA reversed said ruling in favor of SMI. Hence, this case.

Issues:Whether or not SMI committed infringement of copyright, patent and unfair labor practice.

Held:

ON THE ISSUE OF COPYRIGHT INFRINGEMENTP&D secured its copyright under classification class “o” work. This being so, P&D's copyright protection extended only on the technical drawing not to the light box itself because the latter was not at all in the category of print, pictorial illustrations, advertising copies, labels, tags, and box wraps.

P&D owned a valid copyright only to technical drawings within the category of pictorial illustrations. Light box is not a literary or artistic piece which could be


copyrighted under the copyright law.

ON THE ISSUE OF PATENT INFRINGEMENTP&D never secured a patent for the light boxes. Because it had not patent, P&D could not legally prevent anyone from manufacturing or commercially using the device. To be able to legally preclude others from copying and profiting from the invention, patent is a primordial requirement.

ON THE ISSUE OF UNFAIR COMPETITIONP&D did not appeal this particular pint, hence, it cannot now revive its claim for unfair competition. “POSTER ADS” was too generic a name. There was no evidence that P&D's use of POSTER ADS was distinctive or well-known.


WILSON ONG CHING KIAN HUAN vs. CA & LORENZO TAN (G.R. No. 130360, August 15, 2001)

This is a petition for review seeking to annul the decision of the Court of Appeals which set aside the resolution as well as the order of the Regional Trial Court of Quezon City.

Facts:

Petitioner imports vermicelli from China National Cereals Oils and Food stuffs Import and Export Corp. based in Beijing China under the firm name CKC Trading. He repacks it in cellophane wrappers w/ a design of two dragons and TOWER trademark on the uppermost portion. He acquired copyright registration on said design.

Ong discovered that Lorenzo Tan repacked his vermicelli he imports from the same company but based on Qingdao, China in a nearly identical wrappers.

Ong filed a complaint for infringement of copyright and damages alleging he was the holder of a certificate of copyright registration over cellophane wrapper w/ 2 dragon design w/c Tan used an identical wrappers

A TRO was issued but Tan alleged that Ong did not have a clear right over the sue of the trademark Pagoda& Lungkow vermicelli as these were registered in the name of Ceroilfood Shandong and he was the exclusive distributor in the Philippines and finally, Ong's Cer of Copyright Registration was no valid for lack of originality because the two dragon design was from Ceroilfood Shandong w/c had Cert of Registration issued by different countries.

Issue:

Whether or not the issuance of WPI proper.Whether or not the CA erred in setting aside the order of the trial court, then issued a judgment touching on the merits.

Held:

A person to be entitled to a copyright must be the original creator of the work. He must have crated it by his own skills, labor, and judgment without directly copying or evasively imitating the work of others.

In this case, copies of the certificates of copyright registered in the name of the Cereoil Shandong raised reasonable doubt. With such doubt, preliminary injunction is useless ( where the complainant title was disputed, WPI is not proper).

To be entitled to an injunctive relief, petitioner must show the existence of a clear and unmistakable right and an urgent necessity for the writ to prevent serious damage.


In this case, Ong's right has not been clearly demonstrated. That right is what is in dispute and has yet to be determined. (in the absence of legal right and the injury sustained by the plaintiff, an order granting the issuance of an injunctive relive will be set aside, for having been issued with grave abuse of confidence). Therefore, there was no grave abuse of confidence on the part of CA.

It was premature for CA to declare that the design of pet's wrapper is a copy of the wrapper allegedly registered by Deroilfood Shandong. That matter remains for decision after appropriate proceedings at the trial court.

Partially granted WPI to prohibit Tan from using cellophane denied, finding of CA on Ong's copyright wrapper is set aside for being premature. Remanded to the trial court.


VENANCIO SAMBAR, doing business under the name and style of CVS Garment Enterprises vs. LEVI STRAUSS & CO., and LEVI STRAUSS (PHIL.), INC., (GR N. 132604, March 6, 2002)

This is a petition for review on certiorari seeking the reversal of the decision dated January 30, 1998, of the Court of Appeals affirming the decision of the Regional Trial Court of Makati City, making permanent the writ of preliminary injunction, ordering the Director of the National Library to cancel Copyright Registration No. 1-1998 in the name of Venancio Sambar.

Facts:

On September 28, 1987, private respondents, through a letter from their legal officer, demanded that CVS Garment Enterprises (CVSGE) desist from using their stitched arcuate design on the Europress jeans which CVSGE advertised in the Manila Bulletin.

Respondent CVSGE, through counsel, replied that the arcuate design on the back pockets of Europress is different from Levi's and theirs had a copyright.

Thereafter, private respondents filed a complaint against Sambar, doing business under the name and style of CVSGE. Private respondents also impleaded the Director of the National Library.

The counsel of CVSGIC manifested that CVSGE, which was formerly doing business in the premises, already stopped operation and CVSGIC took over CVSGE’s occupation of the premises. He also claimed he did not know the whereabouts of Sambar, the alleged owner of CVSGE.

Thereafter, private respondents amended their complaint to include CVSGIC. When private respondents learned the whereabouts of Sambar and CVSGE, the case was revived.

In their complaint, Levi's alleged that they own the arcuate design trademark registered in the US and in the Philippines which granted Levi Strauss Phils. Inc. (LSPI) non-exclusive license to use the arcuate design in its sale of Levi's pants, etc., in the Philippines. In 1987, CVSGIC and Sambar, without consent of Levi's, sold and advertised, despite demand to cease, continued to manufacture and sell Europress bearing a design similar to the Levi's to the confusion of the public, prejudicial to Levi's property right.

CVSGIC denied that there was infringement or unfair competition because the display rooms of department stores where Levi's and Europress were sold were segregated by billboards and other modes of advertisement to avoid confusion of the buying public. CVSGIC further averred that their arcuate design is very different from Levi's/ Sambar denied connection with CVSGIC and denied using the said design and did not authorized anyone to use the copyrighted design.

After hearing, the trial court issued a writ of preliminary injunction enjoining CVSGIC to manufacture and sell pants with arcuate design on the back pockets.


CVSGIC did not present any evidence. Thus, the trial court rendered decision in favor of Levi's.Petitioner appealed to the Court of Appeals which decided in favor of private respondents. Hence, this case.

Issue:

Whether or not petition infringe on private respondent's arcuate design.

Whether or not petitioner is solidarily liable with CVS Garments Industrial Corporation.

Held:

The Supreme Court ruled that the first issue raised by petitioner is factual. The basic rule is that factual questions are beyond the province of this Court in a petition for review. Although there are exceptions to this rule, this case is not one of them. Hence, the SC 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.

On the second issue, petitioner claims that private respondents did not show that he was connected with CVSGIC, nor did they prove his specific acts of infringement to make him liable for damages. Again, this is a factual matter and factual findings of the trial court, concurred in by the Court of Appeals, are final and binding on this Court. 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. It must be stressed that it was immaterial whether or not petitioner was connected with CVSGIC. What is relevant is that petitioner had a copyright over the design and that he allowed the use of the same by CVSGIC.

Petitioner maintains that as Europress’ arcuate design is not a copy of that of Levi’s, citing the trial court’s findings that although there are similarities, there are also differences in the two designs, cancellation of his copyright was not justified.

On this matter, private respondents assert that the lower courts found that there was infringement and Levi’s was entitled to damages based on Sections 22 and 23 of RA No. 166 otherwise known as the Trade Mark Law, as amended, which was the law then governing. Said sections define infringement and prescribe the remedies therefor. Further, private respondents aver it was misleading for petitioner to claim that the trial court ruled that private respondents did not suffer pecuniary loss, suggesting that the award of damages was improper. According to the private respondents, the trial court did not make any such ruling. It simply stated that there was no evidence that Levi’s had suffered decline in its sales because of the use of the arcuate design by Europress jeans. They offer that while there may be no direct proof that they suffered a decline in sales, damages may still be measured based on a reasonable percentage of the gross sales of the respondents, pursuant to Section 23 of the Trademark law.

With regards to the cancellation of petitioner’s copyright, private respondents deny that the trial court ruled that the arcuate design of Europress jeans was not


the same as Levi’s arcuate design jeans. On the contrary, the trial court expressly ruled that there was similarity. The cancellation of petitioner’s copyright was justified because petitioner’s copyright can not prevail over respondents’ registration in the Principal Register of Bureau of Patents, Trademarks, and Technology Transfer. According to private respondents, the essence of copyright registration is originality and a copied design is inherently non-copyrightable. They insist that registration does not confer originality upon a copycat version of a prior design.

Petition is denied.

LEVI STRAUSS (PHILS.), INC., vs. VOGUE TRADERS CLOTHING COMPANY (GR No. 132993, June 29, 2005)

This is a petition for review on certiorari seeking to annul the decision of the Court of Appeals which annulled and set aside the orders issued by the Regional Trial Court of Manila and which directed the trial court to desist from proceeding with the said case until the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) has finally resolved Inter Partes Cases Nos. 4216 and 4217, and the resolution of the Court of Appeals denying petitioner’s motion for reconsideration.

Facts:

In 1972, per "Trademark, Technical Data, and Technical Assistance Agreement," Levi Strauss & Co., the principal based in Delaware, United States of America, granted petitioner Levi Strauss (Phils.) a non-exclusive license to use LEVI’S trademark, design, and name in the manufacturing, marketing, distribution, and sale of its clothing and other goods. The licensing agreement was renewed several times, the recent one being under Certificate of Registration No. 1379-A.

Petitioner discovered the existence of some trademark registrations belonging to respondent which, in its view, were confusingly similar to its trademarks. Thus, it instituted two cases before the BPTTT for the cancellation of respondent’s trademark registrations, to wit: Inter Partes Case No. 4216, a petition for cancellation of Certificate of Registration No. 53918 (for "LIVE’S") and Inter Partes Case No. 4217, a petition for cancellation of Certificate of Registration No. 8868 (for "LIVE’S" Label Mark).

Petitioner then applied for the issuance of a search warrant on the premises of respondent Vogue Traders Clothing Company, owned by one Tony Lim, with the Regional Trial Court of Manila which subsequently issued the subject search warrants. These search warrants commanded the seizure of certain goods bearing copies or imitations of the trademarks which belonged to petitioner. The search warrants were enforced and several goods belonging to respondent were seized. Meanwhile, it appears that criminal charges were filed against Tony Lim of respondent company in the Department of Justice, but the same were eventually dismissed and the search warrants were quashed.

Consequently, respondent filed a complaint for damages in the Regional Trial Court of Manila, against petitioner. The complaint alleged that since January 1, 1988, respondent, through Antonio Sevilla, with business address at 1082 Carmen Planas Street, Tondo, Manila, had been a lawful assignee and authorized user of: (a) the trademark "LIVE’S" under Certificate of Registration No. 53918 issued by the BPTTT, (b) the trademark "LIVE’S LABEL MARK" under Certificate of


Registration No. SR 8868 issued by the BPTTT, and (c) the copyright registrations of "LIVE’S ORIGINAL JEANS," its pocket design, and hand tag; that the goods, articles, and effects seized from respondent’s establishment were manufactured and used in its legitimate business of manufacturing and selling of the duly registered trademark "LIVE’S" and "LIVE’S ORIGINAL JEANS;" and that the trademarks of respondent did not have any deceptive resemblance with the trademarks of petitioner. Respondent sought to recover the seized assorted sewing materials, equipment, and finished products or the value thereof, in case the same had been destroyed or impaired as a result of the seizure.

In an order dated December 10, 1996, the trial court found that the respondent intended to appropriate, copy, and slavishly imitate the genuine appearance of authentic LEVI’s jeans and pass off its LIVE’s jeans as genuine LEVI’s jeans. Respondent filed a Motion for Reconsideration, however, the same was denied.

Respondent took the matter to the Court of Appeals which rendered a decision in favor of the respondent, enjoining the trial court from further proceeding with the case. Hence, this case.

Issues:

Whether or not the CA committed reversible error in holding that the Doctrine of Primary Jurisdiction operates to suspend any and all proceedings, particularly the ability of the trial court to issue preliminary injunctive relief.

Whether or not the CA erred in failing to hold that the certification against forum-shopping attached by respondent is fatally defective.

Whether or not the CA erred in holding the trial court committed grave abuse of discretion in declaring respondent to have waived its right to adduce evidence to counter petitioner's evidence in support of its application for preliminary injunction.

Whether or not the CA erred in holding that the preliminary injunctive order issued prejudges the case.

Held:

1. Petitioner is a holder of Certificate of Registration No. 1379-A for its Levi’s trademarks. The registration gives rise to a presumption of its validity and the right to the exclusive use of the same. As set forth in Section 17 of Republic Act (R.A.) No. 166 or "The Trademark Law," an entity having a duly registered trademark can file a suit against another entity for the protection of its right.

It bears stressing that an action for infringement or unfair competition, including the available remedies of injunction and damages, in the regular courts can proceed independently or simultaneously with an action for the administrative cancellation of a registered trademark in the BPTTT. As applied to the present case, petitioner’s prior filing of two inter partes cases against the respondent before the BPTTT for the cancellation of the latter’s trademark registrations, namely, "LIVE’S" and "LIVE’S Label Mark," does not preclude petitioner’s right (as a defendant) to include in its answer (to respondent’s complaint for damages in Civil Case No. No. 96-76944) a counterclaim for infringement with a prayer for the issuance of a writ of preliminary injunction.

2. Section 5, Rule 7 of the Rules of Civil Procedure incorporating Administrative


Circular Nos. 28-91 (effective January 1, 1992) and 04-94 (effective April 1, 1994) states the requirement of a plaintiff or petitioner to include in his initiatory pleading or petition a certification of non-forum shopping. Thus,

Sec. 5. Certification against forum shopping. — The plaintiff or principal party shall certify under oath in the complaint or other initiatory pleading asserting a claim for relief, or in a sworn certification annexed thereto and simultaneously filed therewith: (a) that he has not theretofore commenced any action or filed any claim involving the same issues in any court, tribunal or quasi-judicial agency and, to the best of his knowledge, no such other action or claim is pending therein; (b) if there is such other pending action or claim, a complete statement of the present status thereof; and (c) if he should thereafter learn that the same or similar action or claim has been filed or is pending, he shall report that fact within five (5) days therefrom to the court wherein his aforesaid complaint or initiatory pleading has been filed.

The requirement of certification against forum shopping under the Rules is to be executed by the petitioner, or in the case of a corporation, its duly authorized director or officer, but not petitioner’s counsel whose professional services have been engaged to handle the subject case. The reason is that it is the petitioner who has personal knowledge whether there are cases of similar nature pending with the other courts, tribunals, or agencies. Thus, in the present case, the Court of Appeals should have outrightly dismissed the petition for certiorari filed by the respondent (as therein petitioner in the appeals court) due to the defective certification of non-forum shopping. The certification made by Atty. Soriano, counsel for the respondent, who is not one of its duly authorized directors or officers, is defective. Even if Atty. Soriano was the "in-house counsel," the fact remains that no board resolution, or even a Secretary’s Certificate containing the board resolution, was submitted to show that he was indeed authorized to file the said petition in the Court of Appeals.

3. Respondent explained to the trial court that its former counsel, Atty. Yatco, had honestly thought that the December 4, 1996 hearing had been rescheduled to December 11, 1996 per agreement with the petitioner’s counsel. This is not a sufficient ground. It was correct for the trial court, upon motion of petitioner, to consider the matter submitted for resolution on the basis of petitioner’s evidence. Respondent cannot find solace in its lame excuse of honest mistake which was, in fact, negligence and lack of vigilance.

4. A writ of preliminary injunction is generally based solely on initial and incomplete evidence adduced by the applicant (herein petitioner). The evidence submitted during the hearing of the incident is not conclusive, for only a "sampling" is needed to give the trial court an idea of the justification for its issuance pending the decision of the case on the merits. As such, the findings of fact and opinion of a court when issuing the writ of preliminary injunction are interlocutory in nature. Moreover, the sole object of a preliminary injunction is to preserve the status quo until the merits of the case can be heard. Since Section 4 of Rule 58 of the Rules of Civil Procedure gives the trial courts sufficient discretion to evaluate the conflicting claims in an application for a provisional writ which often involves a factual determination, the appellate courts generally will not interfere in the absence of manifest abuse of such discretion. A writ of preliminary injunction would become a prejudgment of a case only when it grants the main prayer in the complaint or responsive pleading, so much so that there is nothing left for the trial court to try except merely incidental matters. Such fact does not obtain in the present case.

The petition is granted.


FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., vs. HONORABLE FRANKLIN DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and CASEY FRANCISCO (GR No. 108946, January 28, 1999)

This is a petition for certiorari seeking to annul the resolution of the Department of Justice, entitled "Gabriel Zosa, et al. v. City Prosecutor of Quezon City and Francisco Joaquin, Jr.," and its resolution denying petitioner Joaquin's motion for reconsideration.

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 It's a Date, which was produced by IXL Productions, Inc. (IXL). On July 18, 1991, 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 It's 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 It's 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 IXL's copyright to the first episode of It's a Date for which it was issued by the National Library a certificate of copyright 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 where it was docketed as Criminal Case No. 92-27854 and assigned to Branch 104 thereof. However, private 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. 1

Petitioner Joaquin filed a motion for reconsideration, but his motion denied by respondent Secretary of Justice on December 3, 1992. Hence, this petition.

Issues:

Whether or not the format of the show Rhoda and me is copyrightable.

Held:

The format of a show is not copyrightable. Section 2 of P.D. No. 49, 10 otherwise known as the DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of work entitled to copyright protection, to wit:

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

(A) Books, including composite and cyclopedic works, manuscripts, directories, and gazetteers:

(B) Periodicals, including pamphlets and newspapers;

(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;

(D) Letters;

(E) Dramatic or dramatico-musical compositions; choreographic works and entertainments in dumb shows, the acting form of which is fixed in writing or otherwise;

(F) Musical compositions, with or without words;

(G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and other works of art; models or designs for works of art;

(H) Reproductions of a work of art;

(I) Original ornamental designs or models for articles of manufacture, whether or not patentable, and other works of applied art;

(J) Maps, plans, sketches, and charts;


(K) Drawings or plastic works of a scientific or technical character;

(L) Photographic works and works produced by a process analogous to photography lantern slides;

(M) Cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings;

(N) Computer programs;

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

(P) Dramatizations, translations, adaptations, abridgements, arrangements and other alterations of literary, musical or artistic works or of works of the Philippine government as herein defined, which shall be protected as provided in Section 8 of this Decree.

(Q) Collections of literary, scholarly, or artistic works or of works referred to in Section 9 of this Decree which by reason of the selection and arrangement of their contents constitute intellectual creations, the same to be protected as such in accordance with Section 8 of this Decree.

(R) Other literary, scholarly, scientific and artistic works.

This provision is substantially the same as §172 of the INTELLECTUAL PROPERTY CODE OF PHILIPPINES (R.A. No. 8293). The format or mechanics of a television show is not included in the list of protected works in §2 of P.D. No. 49. For this reason, the protection afforded by the law cannot be extended to cover them.

P.D. No. 49, §2, in enumerating what are subject to copyright, refers to finished works and not to concepts. The copyright does not extend to an idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. 15 Thus, the new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES provides:

Sec. 175. Unprotected Subject Matter. — Notwithstanding the provisions of Sections 172 and 173, no protection shall extend, under this law, to any idea, procedure, system, method or operation, concept, principle, discovery or mere data as such, even if they are expressed, explained, illustrated or embodied in a work; news of the day and other miscellaneous facts having the character of mere items of press information; or any official text of a legislative, administrative or legal nature, as well as any official translation thereof.

This 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 P.D. 49, §2(M), to wit:

Cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings;


The copyright does not extend to the general concept or format of its dating game show. Accordingly, by the very nature of the subject of petitioner BJPI's copyright, the investigating prosecutor should have the opportunity to compare the videotapes of the two shows.

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 probable cause. As aptly observed by respondent Secretary of Justice:

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.

The petition is DISMISSED.

GMA NETWORK, INC, vs. ABS-CBN BROADCASTING CORPORATION, CENTRAL CATV, INC., PILIPINO CABLE CORPORATION and PHILIPPINE HOME CABLE HOLDINGS, INC. (GR No. 160703, September 23, 2005)

This is a Petition under Rule 41 in relation to Rule 45 of the Rules of Court.

Facts:

Petitioner GMA Network, Inc. (“GMA”) filed before the Regional Trial Court of Quezon City a complaint for damages against respondents ABS-CBN Broadcasting Corporation (“ABS-CBN”), Central CATV, Inc. (“SkyCable”), Philippine Home Cable Holdings, Inc. (“Home Cable”) and Pilipino Cable Corporation (“Sun Cable”).

In its complaint, GMA alleged that respondents engaged in unfair competition when the cable companies arbitrarily re-channeled petitioner’s cable television broadcast on February 1, 2003, in order to arrest and destroy its upswing performance in the television industry.

GMA argued that respondents were able to perpetrate such unfair business practice through a common ownership and interlocking businesses. SkyCable and Sun Cable are wholly-owned subsidiaries of Sky Vision Corporation (“Sky Vision”) which is allegedly controlled by Lopez, Inc. On the other hand, Home Cable is a wholly-owned subsidiary of Unilink Communications Corporation (“Unilink”), which is owned by Mediaquest Holdings, Inc., a company controlled by the Pension Trust Fund of the PLDT Employees (“PLDT Group”).

SkyCable and Sun Cable moved for dismissal of the complaint on the grounds of litis pendentia and forum-shopping since there was a similar case pending before the National Telecommunications Commission (NTC) entitled “GMA Network, Inc. v. Central CATV, Inc., Philippine Home Cable Holdings, Inc., and Pilipino Cable


Corporation”. The case allegedly involved the same cause of action and the same parties, except for ABS-CBN. SkyCable and Sun Cable also asserted that it is the NTC that has primary jurisdiction over the issues raised in the complaint. Moreover, GMA had no cause of action against the two entities and failed to exhaust administrative remedies.

In due course, the trial court issued the assailed resolution dismissing the complaint. The trial court held that the resolution of the legal issues raised in the complaint required the determination of highly technical, factual issues over which the NTC had primary jurisdiction. Additionally, it held that GMA had no cause of action against ABS-CBN. Hence, this petition.

Issue:

Whether or not the trial court erred in ruling that the NTC has primary jurisdiction over petitioner's complaint for damages and dismissing the case for lack of jurisdiction.

Held:

In the case at bar, before the trial court can resolve the issue of whether GMA is entitled to an award of damages, it would have to initially ascertain whether there was arbitrary re-channeling which distorted and downgraded GMA’s signal. The ascertainment of these facts, which relate to the operations of the cable companies, would require the application of technical standards imposed by the NTC as well as determination of signal quality “within the limitations imposed by the technical state of the art”. These factual questions would necessarily entail specialized knowledge in the fields of communications technology and engineering which the courts do not possess. It is the NTC which has the expertise and skills to deal with such matters.

The regulation of ownership of television and cable television companies is likewise within the exclusive concern of the NTC, pursuant to its broader regulatory power of ensuring and promoting a “larger and more effective use of communications, radio and television broadcasting facilities” in order that the public interest may well be served. The NTC is mandated to maintain effective competition among private entities engaged in the operation of public service communications. It is also the agency tasked to grant certificates of authority to cable television operators, provided that the same “does not infringe on the television and broadcast markets.”

While it is true that the regular courts are possessed of general jurisdiction over actions for damages, it would nonetheless be proper for the courts to yield its jurisdiction in favor of an administrative body when the determination of underlying factual issues requires the special competence or knowledge of the latter.

The petition is DENIED.


FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC., vs. BENJAMIN TAN (GR No. L-36402, March 16, 1987)

Facts:

Plaintiff-appellant 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."

On the other hand, defendant-appellee is the operator of a restaurant known as "Alex Soda Foundation and Restaurant" where a combo with professional singers, hired to play and sing musical compositions to entertain and amuse customers therein, were playing and singing the above-mentioned compositions without any license or permission from the appellant to play or sing the same. Accordingly, appellant demanded from the appellee payment of the necessary license fee for the playing and singing of aforesaid compositions but the demand was ignored.

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.

Defendant-appellee, in his answer, countered that the complaint states no cause of action. While not denying the playing of said copyrighted compositions in his


establishment, appellee maintains that the mere singing and playing of songs and popular tunes even if they are copyrighted do not constitute an infringement.

The lower court, finding for the defendant, dismissed the complaint.Plaintiff appealed to the Court of Appeals which as already stated certified the case to the Supreme Court for adjudication on the legal question involved.

Issue:

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-appellee constitute a public performance for profit within the meaning and contemplation of the Copyright Law of the Philippines; and assuming that there were indeed public performances for profit, whether or not appellee can be held liable therefor.

Held:

SEC. 3. The proprietor of a copyright or his heirs or assigns shall have the exclusive right:

xxx xxx xxx

(c) To exhibit, perform, represent, produce, or reproduce the copyrighted work in any manner or by any method whatever for profit or otherwise; if not reproduced in copies for sale, to sell any manuscripts or any record whatsoever thereof;

xxx xxx xxx

In the case at bar, it is admitted that the patrons of the restaurant in question pay only for the food and drinks and apparently not for listening to the music. As found by the trial court, the music provided is for the purpose of entertaining and amusing the customers in order to make the establishment more attractive and desirable. It will be noted that for the playing and singing the musical compositions involved, the combo was paid as independent contractors by the appellant. It is therefore obvious that the expenses entailed thereby are added to the overhead of the restaurant which are either eventually charged in the price of the food and drinks or to the overall total of additional income produced by the bigger volume of business which the entertainment was programmed to attract. Consequently, it is beyond question that the playing and singing of the combo in defendant-appellee's restaurant constituted performance for profit contemplated by the Copyright Law. (Act 3134 amended by P.D. No. 49, as amended).

Nevertheless, appellee cannot be said to have infringed upon the Copyright Law. Appellee's allegation that the composers of the contested musical compositions waived their right in favor of the general public when they allowed their intellectual creations to become property of the public domain before applying for the corresponding copyrights for the same is correct.

Indeed, if the general public has made use of the object sought to be copyrighted for thirty (30) days prior to the copyright application the law deems the object to have been donated to the public domain and the same can no longer be copyrighted.


A careful study of the records reveals that the song "Dahil Sa Iyo" which was registered on April 20, 1956 (Brief for Appellant, p. 10) became popular in radios, juke boxes, etc. long before registration while the song "The Nearness Of You" registered on January 14, 1955 had become popular twenty five (25) years prior to 1968, 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 testimonies of the witnesses at the hearing of this case on this subject were unrebutted by the appellant.

Under the circumstances, it is clear that the musical compositions in question had long become public property, and are therefore beyond the protection of the Copyright Law.

The appealed decision of the Court of First Instance of Manila is AFFIRMED.

PHILIPPINE EDUCATION COMPANY, INC., vs. VICENTE SOTTO and V. R. ALINDADA (GR No. L-30774, January 29, 1929)

Facts:

Plaintiff alleges that it is a domestic corporation and the proprietor and publisher of the monthly magazine Philippine Education Magazine, which is published in the City of Manila and of general circulation in the Philippine Islands. Defendant Vicente Sotto, is the proprietor and publisher, and the defendant, V. R. Alindada, is the editor of a weekly newspaper known as The Independent, which is also published in the City of Manila and also of such general circulation.

In December, 1927, plaintiff 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 exclusively in the Philippine Education Magazine, and that by virtue thereof, the said Craig prepared and wrote an original article entitled "The True Story of Mrs. Rizal," and delivered it to the plaintiff which paid him for it, and thereby became the exclusive owner of the article. Plaintiff printed and published the article in its issue of December, 1927, and that it was on the market for sale in the early part of that month, as such owner the plaintiff has the exclusive right to print and publish the article in its magazine, and that it


gave notice in that issue "that all rights thereto were reserved".

Plaintiff further alleged that defendants unlawfully and without the knowledge or consent of the plaintiff appropriated, copied and reproduced and published the article in the weekly issues of The Independent of December 24th and December 31, 1927, without citing the source of its defendants. Upon discovery, the plaintiff requested that in their next issue, defendants should state that the subject article was taken from plaintiff’s magazine and to refrain from similar thefts in the future.

The article was again published in the next issue of The Independent. Plaintiff alleges that they were damaged by reason of defendants' acts, that the defendants threaten to, and will continue appropriating and reproducing the article owned by the plaintiff, in violation of its rights, and that they be perpetually enjoined from the publication of any further articles without the knowledge or consent of the plaintiff, and for such other and further relief as the court may deem just and equitable.

Before ruling on the case, the complaint against Vicente Sotto was dismissed. However, the lower court rendered judgment against defendant V. R. Alindala.

Issue:

Whether or not the judgment of the lower court is correct.

Held:

The question presented involves the legal construction of Act No. 3134 of the Philippine Legislature, which is entitled "An Act to protect intellectual property," and which is known as the Copyright Law of the Philippine Islands.

Section 2 of the Act defines and enumerates what may be copyrighted which, among other things, includes books, composite and cyclopedic works, manuscripts, commentaries and critical studies.

Section 4 provides:

For the purpose of this Act articles and other writings published without the names of the authors or under pseudonyms are considered as the property of the publishers.

And section 5 says:

Lines, passages, or paragraphs in a book or other copyrighted works may be qouted or cited or reproduced for comment, dissertation, or criticism.

News items, editorial paragraphs, and articles in periodicals may also be reproduced unless they contain a notice that their publication is reserved or a notice of copyright, but the source of the reproduction or original reproduced shall be cited. In case of musical works part of little extent may also be reproduced.

Hence, the real question involved is the construction which should be placed upon the second paragraph of section 5.


It is admitted that the plaintiff notified the defendant "that we reserve all rights and you infringe on them at your peril," and that after receipt of the notice, the defendant published the article in question, without giving "the source of the reproduction."

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

Analyzing the language used, it says, first, that such news items, editorial paragraphs, and articles in periodicals may be reproduced, unless they contain a notice that their publication is reserved, or, second, that may also be reproduced, unless they contain a notice of copyright. But in either event, the law specifically provides that "the source of the reproduction or original reproduced shall be cited," and is not confined or limited to case in which there is "a notice of copyright," and specifically says that in either event "the source of the reproduction or original reproduced shall be cited."

The court construed the language found in the act. The language is plain, clear, define and certain, and this court has no legal right to say that the Legislature did not mean what it said when it used those words, which is all the more apparent by the use of the word "or" after the word "reserved." In the instant case, the plaintiff did not give notice of its copyright, for the simple reason that it did not have a copyright, but it did notify the defendant that in the publication of the article "we reserved all rights," which was legally equivalent to a notice "that their publication is reserved." To give that paragraph any other construction would eliminate, take from it, and wipe out, the words "that their publication is reserved," and this court has no legal right to do that.

It will also be noted that in the instant case, the defendant had the legal right to publish the article in question by giving "the source of the reproduction." The plaintiff bought and paid for the article and published it with the notice that "we reserve all rights," and the defendant published the article in question without citing "the source of the reproduction".

Judgment of the lower court is affirmed.

PEDRO SERRANO LAKTAW vs. AMERTO PAGLINAWAN (GR No. L-11937, April 1, 1918)

Facts:

The complaint alleged that the plaintiff was, according to the laws regulating literary properties, 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 establishment La Opinion. Without the consent of the plaintiff, defendant 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 said act of the defendant, which is a violation of article 7 of the Law of January 10, 1879, on Intellectual Property, caused irreparable injuries to the plaintiff, who was surprised when, on publishing his new work entitled Diccionario Tagalog-Hispano (Tagalog-Spanish Dictionary) he learned of the fact.


The defendant denied generally each and every allegation of the complaint and prayed the court to absolve him from the complaint.

After trial, the court rendered judgment, absolving the defendant from the complaint, but without making any special pronouncement as to costs. The plaintiff moved for a new trial on the ground that the judgment was against the law and the weight of the evidence. Said motion having been overruled, plaintiff excepted to the order overruling it, and appealed the case to the Supreme Court upon a bill of exceptions.

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 court below erred in not declaring that the defendant had reproduced the plaintiff's work and that the defendant had violated article 7 of the Law of January 10, 1879, on Intellectual Property.

Held:

Article 7 provides:

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.

Therefore, in order that said article may be violated, it is not necessary, as the court below seems to have understood, that a work should be an improper copy of another work previously published. It is enough that another's work has been reproduced without the consent of the owner, even though it be only to annotate, add something to it, or improve any edition thereof.

It appears from the evidence that although the plaintiff did not introduce at the trial the certificate of registration of his property rights to said work which, according to said rules, was kept in the Central Government of these Islands, and was issued to him in 1890, the same having been lost during the revolution against Spain, and no trace relative to the issuance of said certificate being obtainable in the Division of Archives of the Executive Bureau on account of the loss of the corresponding records, yet as in the first page of said dictionary the property right of the plaintiff was reserved by means of the words "Es propiedad del autor" (All rights reserved), taken in connection with the permission granted him by the Governor-General on November 24, 1889, to print and publish said dictionary, after an examination thereof by the permanent committee of censors, which examination was made, and the necessary license granted to him, these facts constitute sufficient proof, under the circumstances of the case, as they have not been overcome by any evidence on the part of the defendant, showing that said plaintiff did not comply with the requirements of article 36 of said law, which was the prerequisite to the enjoyment of the benefits thereof according to the preceding articles, among which is article 7, which is alleged in the complaint to have been violated by the defendant.


Even considering that said Law of January 10, 1879, ceased to operate in these Islands, upon the termination of Spanish sovereignty and the substitution thereof by that of the United States of America, the right of the plaintiff to invoke said law in support of the action instituted by him in the present case cannot be disputed. It was so held superseded by that of the United States. It was so held in the Treaty of Paris of December 10, 1898, between Spain and the United States, when it declared in article 13 thereof that the rights to literary, artistic, and industrial properties acquired by the subject of Spain in the Island of Cuba and in Puerto Rico and the Philippines and other ceded territories, at the time of the exchange of the ratification of said Treaty, shall continue to be respect.

According to article 428 of the Civil Code, the author of a literary, scientific, or artistic work, has the right to exploit it and dispose thereof at will. In relation to this right, there exists the exclusive right of the author, who is the absolute owner of his own work, to produce it, according to article 2 of the Law of January 10, 1879, and consequently, nobody may reproduce it, without his permission, not even to annotate or add something to it, or to improve any edition thereof, according to article 7 of said law.

Judgment of the lower court is reversed and order the defendant to withdraw from sale, as prayed for in the complaint, all stock of his work above-mentioned, and to pay the costs of first instance.

SONY CORP. OF AMER. v. UNIVERSAL CITY STUDIOS, INC., 464 U.S. 417 (1984)

Facts:

Petitioners manufacture and sell home video tape recorders. Respondents own the copyrights on some of the television programs that are broadcast on the public airwaves. Some members of the general public use video tape recorders sold by petitioners to record some of these broadcasts, as well as a large number of other broadcasts. The question presented is whether the sale of petitioners' copying equipment to the general public violates any of the rights conferred upon respondents by the Copyright Act.

Respondents commenced this copyright infringement action against petitioners


in the United States District Court for the Central District of California in 1976. Respondents alleged that some individuals had used Betamax video tape recorders (VTR's) to record some of respondents' copyrighted works which had been exhibited on commercially sponsored television and contended that these individuals had thereby infringed respondents' copyrights. Respondents further maintained that petitioners were liable for the copyright infringement allegedly committed by Betamax consumers because of petitioners' marketing of the Betamax VTR's. Respondents sought no relief against any Betamax consumer. Instead, they sought money damages and an equitable accounting of profits from petitioners, as well as an injunction against the manufacture and marketing of Betamax VTR's.

After a lengthy trial, the District Court denied respondents all the relief they sought and entered judgment for petitioners. The United States Court of Appeals for the Ninth Circuit reversed the District Court's judgment on respondents' copyright claim, holding petitioners liable for contributory infringement and ordering the District Court to fashion appropriate relief.

Issue:

Whether or not Sony is liable for contributory infringement.

Held:

No.

The majority of the court riled to reverse the Ninth Circuit in favor of Sony hingied on the possibility that the technology in question had significant non-infringing uses, and that the plaintiffs were unable to prove otherwise.

An explanation of the rejection of respondents' unprecedented attempt to impose copyright liability upon the distributors of copying equipment requires a quite detailed recitation of the findings of the District Court. In summary, those findings reveal that the average member of the public uses a VTR principally to record a program he cannot view as it is being televised and then to watch it once at a later time. This practice, known as "time-shifting," enlarges the television viewing audience. For that reason, a significant amount of television programming may be used in this manner without objection from the owners of the copyrights on the programs. For the same reason, even the two respondents in this case, who do assert objections to time-shifting in this litigation, were unable to prove that the practice has impaired the commercial value of their copyrights or has created any likelihood of future harm. Given these findings, there is no basis in the Copyright Act upon which respondents can hold petitioners liable for distributing VTR,s to the general public. The Court of Appeals, holding that respondents are entitled to enjoin the distribution of VTR's, to collect royalties on the sale of such equipment, or to obtain other relief, if affirmed, would enlarge the scope of respondents' statutory monopolies to encompass control over an article of commerce that is not the subject of copyright protection. Such an expansion of the copyright privilege is beyond the limits of the grants authorized by Congress.

The court further ruled that the sale of sale of copying equipment, like the sale of other articles of commerce, does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes. Indeed, it need merely be capable of substantial noninfringing uses.


The question is thus whether the Betamax is capable of commercially significant noninfringing uses. In order to resolve that question, the court need not explore all the different potential uses of the machine and determine whether or not they would constitute infringement. Rather, they need only consider whether on the basis of the facts as found by the District Court a significant number of them would be noninfringing. Moreover, in order to resolve this case, the court need not give precise content to the question of how much use is commercially significant. For one potential use of the Betamax plainly satisfies this standard, however it is understood: private, noncommercial time-shifting in the home. It does so both (A) because respondents have no right to prevent other copyright holders from authorizing it for their programs, and (B) because the District Court's factual findings reveal that even the unauthorized home time-shifting of respondents' programs is legitimate fair use.

PHOENIX PUBLISHING HOUSE, INC vs. JOSE T. RAMOS AND SOCORRO C. RAMOS, doing business as National Book Store, and COURT OF APPEALS (GR No. L-32339, March 29, 1988)

This is a petition for review assigning several errors to have been allegedly committed by respondent court in affirming the decision of the lower court dismissing the plaintiff’s action and rendering judgment in favor of herein respondents.


Facts:

This petition originated in an action for damages arising from an alleged infringement of petitioner's copyright for two books entitled "General Science Today for Philippine Schools, First Year" and "General Science Today for Philippine Schools, Second Year," both authored by Gilman, Van Houten and Cornista and first published in 1961. Named plaintiffs as "copyright proprietors of said books" were Phoenix Publishing House, Inc., Purita Dancel-Cornista, Phil N. Gilman, and L.F. Van Houten. The complaint charged that defendants, now herein private respondents 'reprinted, published, distributed and sold said books in gross violation of the Copyright Law and of plaintiffs' rights to their damage and prejudice" and prayed for actual, moral and exemplary damages as well as for attorney's fees and expenses of litigation. After trial, judgment was rendered in favor of the defendants and against the plaintiff. From the aforesaid judgment, petitioner Phoenix Publishing House, Inc. appealed to the Court of Appeals. However, the appellate court affirmed the decision of the lower court. Hence, this case.

Issue:

Whether or not the CA erred in awarding attorney’s fees against petitioner.

Held:

The petition was given due course "but only insofar as the award of attorney's fees is concerned."

On this issue, petitioner contends that respondent court erred in assigning attorney's fees against petitioner for no other apparent reason than for losing its case, contrary to the fundamental rules settled by jurisprudence that a penalty should not be set on the right to litigate (Tan Ti v. Alvear, 26 Phil. 566) nor should counsel's fees be awarded everytime a party wins a lawsuit (Jimenez v. Bucoy, 103 Phil. 40) unless it appears, which does not in petitioner's case, that the suit instituted by the losing party was clearly unfounded (Peralta et al. v. Alipio, 97 Phil. 719) and, at all events, the court must state the reason for the award of attorney's fees (Buan v. Camaganacan, 16 SCRA 321) which reason the decision in question does not indicate (pp. 11-12, Rollo).

The law limits the instances in which attomey's fees may be recovered under Article 2208 of the Civil Code.

The evidence on record however, shows that petitioner secured the corresponding copyrights for its books. These copyrights were found to be all right by the Copyright Office and petitioner was always conceded to be the real owner thereof. It was on the strength of these facts that petitioner filed the complaint against respondents. Through a proper search warrant obtained after petitioner was convinced that respondents were selling spurious copies of its copyrighted books, the books were seized from respondents and were Identified to be spurious. In the face of these facts, it cannot be said that the case is clearly an unfounded civil action or proceeding.

The decision of respondent Court of Appeals is MODIFIED by deleting therefrom the award of attorney's fees against petitioner.


COLUMBIA PICTURES, INC., ORION PICTURES CORP., PARAMOUNT PICTURES CORP., TWENTIETH CENTURY FOX FILM CORP., UNITED ARTISTS CORP., UNIVERSAL CITY STUDIOS, INC., THE WALT DISNEY COMPANY, and WARNER BROS., INC. vs. HON. JUDGE ALFREDO C. FLORES, FGT VIDEO NETWORK, INC., MANUEL MENDOZA, ALFREDO C. ONGYANCO, ERIC APOLONIO, SUSAN YANG and EDUARDO A. YOTOKO (GR No. 78631, June 29, 1993)

This is a petition for certiorari seeking to set aside the order of the Regional Trial Court of Pasig City directing the immediate release and return of television sets,


video cassette recorders, rewinders, tape head cleaners, accessories, equipment, and other paraphernalia or pieces of machinery which had been seized by operatives of the National Bureau of Investigation by virtue of a search warrant.

Facts:

Petitioners herein are all foreign corporations organized and existing under the laws of the United States of America and represented in the Philippines by their attorney-in-fact, Rebecca Benitez-Cruz of the Motion Picture Association of America, Inc. Private respondent FGT Video Network, Inc. is a merger of Fox, Galactic, and Technica Video.

In a letter, the MPAA, lodged a complaint before then Director Antonio Carpio of the National Bureau of Investigation (NBI) against certain video establishments for violation of Presidential Decree No. 49 (Protection of Intellectual Property), as amended by Presidential Decree No. 1988, in connection with its anti-piracy campaign. Specifically complaining of the "unauthorized sale, rental, reproduction and/or disposition of copyrighted film", the MPAA sought the NBI's "urgent assistance in the conduct of search and seizure operations in Metro Manila and elsewhere".

On the basis of said letter, NBI and private agents conducted discreet surveillance operations on certain video establishments, among them private respondent FGT Video Network, Inc. (FGT). Danilo Manalang, a.k.a. Ronaldo Lim, allegedly an NBI agent, went to the office of FGT to have the copyrighted motion pictures "Cleopatra" owned by Twentieth Century Fox Film Corp. and "The Ten Commandments" owned by Paramount Pictures, Inc. reproduced or retaped in video format. Manalang also had MGM's copyrighted film "Walk Like a Man" reproduced or retaped by FGT.

Based on the pieces of evidence gathered, NBI Agent III Lauro C. Reyes, with Manalang and Rebecca Benitez-Cruz as witnesses, applied for a search warrant with the Regional Trial Court in Pasig which was subsequently granted.

Agents from the NBI, led by Lauro C. Reyes and Mamerto Espartero, with the assistance of the personnel of the Videogram Regulatory Board headed by Elmer San Pascual, duly served Search Warrant No. 45 on the operators or representatives of FGT. In the course of the search of the premises of FGT, the NBI agents found and seized various video tapes of duly copyrighted motion pictures or films owned and exclusively distributed by petitioners. Also seized were machines and equipment, television sets, paraphernalia, materials, accessories, rewinders, tape head cleaners, statements of order, return slips, video prints, flyers, production orders, and posters. Inventories of these seized articles were then prepared and copies thereof were furnished Jess Ayson, production manager of FGT.

FGT filed an urgent motion for the immediate release of equipment and accessories "not covered" by the search warrant, without prejudice to the filing of a motion to quash the said search warrant.

The lower court granted FGT's motion and ordered the immediate release and return of the "television sets, video cassette recorders, rewinders, tape head cleaners, accessories, equipment and other machines or paraphernalias to the defendants, excluding video cassette tapes. Respondent court also ordered the inventory of all articles returned with individual descriptions "to evidence their existence" copies of which inventory should be furnished the NBI and the court.


Hence, this case.

Issue:

Whether or not the lower court acted with grave abuse of discretion amounting to lack of jurisdiction in ordering the immediate release and return of some of the items seized by virtue of the search warrant.

Held:

The right to security against unreasonable searches and seizures is guaranteed under Section 2, Article III of the 1987 Constitution which provides:

Sec. 2. The right of the people to be secure in their persons, houses, papers and effects against unreasonable searches and seizures of whatever nature and for any purpose shall be inviolable, and no search warrant or warrant of arrest shall issue except upon probable cause to be determined by the judge after examination under oath or affirmation of the complainant and the witnesses he may produce, and particularly describing the place to be searched and the persons or things to be seized.

Thus, Sections 3 and 4 of Rule 126 of the Rules of Court provide for the requisites in the issuance of search warrants:

Sec. 3. Requisites for issuing search warrant. — A search warrant shall not issue but upon probable cause in connection with one specific offense to be determined personally by the judge after examination under oath or affirmation of the complainant and the witnesses he may produce, and particularly describing the place to be searched and the things to be seized.

Sec. 4. Examination of complainant; record. — The judge must, before issuing the warrant, personally examine in the form of searching questions and answers, in writing and under oath the complainant and the witnesses he may produce on facts personally known to them and attach to the record their sworn statements together with any affidavits submitted.

Withal, measured by the aforegoing constitutional and legal provisions as well as the existing jurisprudence on the matter, we find that Search Warrant No. 45 fails to satisfy the test of legality. More so because the Court has previously decided a case dealing with virtually the same search warrant.

In 20th Century Fox Film Corp. vs. Court of Appeals (164 SCRA 655 [1988]), wherein therein petitioner is also one of the petitioners herein, we upheld the legality of the order of the lower court lifting the search warrant issued under circumstances similar to those obtaining in the case at bar.

A striking similarity between the case at bar and 20th Century Fox is the fact that Search Warrant No. 45, specifically paragraph (c) thereof describing the articles to be seized, contains an almost identical description as the warrant issued in the 20th Century Fox case, to wit:

(c) Television sets, Video Cassettes Recorders, rewinders, tape


head cleaners, accessories, equipments and other machines used or intended to be used in the unlawful reproduction, sale, rental/lease, distribution of the above-mentioned video tapes which she is keeping and concealing in the premises above-described.

On the propriety of the seizure of the articles above-described, we held in said case:Television sets, video cassette recorders, rewinders and tape cleaners are articles which can be found in a video tape store engaged in the legitimate business of lending or renting out betamax tapes. In short, these articles and appliances are generally connected with, or related to a legitimate business not necessarily involving piracy of intellectual property or infringement of copyright laws. Hence, including these articles without specification and/or particularity that they were really instruments in violating an Anti-Piracy law makes the search warrant too general which could result in the confiscation of all items found in any video store.

The language used in paragraph (c) of Search Warrant No. 45 is thus too all-embracing as to include all the paraphernalia of FGT in the operation of its business. As the search warrant is in the nature of a general one, it is constitutionally objectionable.

In consequence, respondent court was merely correcting its own erroneous conclusions in issuing Search Warrant No. 45 when it ordered the return of the seized television sets and other paraphernalia specified in the motion filed by FGT. Far from being despotic or arbitrary, respondent judge must be commended for rectifying his error when he found that his initial conclusions were inaccurate and erroneous, colliding as they did with the constitutional rights of private respondent.

The petition is DISMISSED.

SONY COMPUTER ENTERTAINMENT, INC. vs. BRIGHT FUTURE TECHNOLOGIES, INC. (GR No. 169156, February 15, 2007)


This is a petition for review on certiorari under Rule 45 which assails the Orders of the court a quo.

Facts:

On application of Inspector Rommel G. Macatlang of the Philippine National Police, after a complaint was received from petitioner, Sony Computer Entertainment, Inc. (SCEI), eight search warrants for copyright and trademark infringement, of which Search Warrant Nos. 05-6336 and 05-6337 are relevant to the present case, were issued by the Manila Regional Trial Court (RTC) Executive Judge Antonio M. Eugenio, Jr. following which a raid was conducted on the premises of respondent, Bright Future Technologies, Inc. (BFTI) wherein they seized various items.

BFTI subsequently filed an Urgent Motion to Quash and/or to Exclude or Suppress Evidence and Return Seized Articles.

The RTC denied BFTI’s motion to quash the warrants, it finding that they were regularly issued and implemented, and that a bond is not required in the application for their issuance. BFTI filed a Motion for Reconsideration of the denial of its motion to quash.

The RTC, however, found that the two-witness rule under Section 8 of Rule 126 was violated and that the searching team’s use of a bolt cutter to open the searched premises was unnecessary, hence, it granted BFTI’s Motion for Reconsideration of its April 18, 2005 Order by Order of August 8, 2005.

Issue:

Whether or not a private complainant, like SCEI, has the right to participate in search warrant proceedings.

Held:

Yes.

When SCEI then opposed BFTI’s Urgent Motion to Quash and/or to Suppress or Exclude Evidence and Return Seized Articles, the RTC correctly recognized the participation of SCEI in the proceedings.

The RTC’s finding that the two-witness rule governing the execution of search warrant was not complied with, which rule is mandatory to ensure regularity in the execution of the search warrant, is in order, however.

The RTC did not thus err in ordering the quashal of the search warrants.

As the two-witness rule was not complied with, the objects seized during the April 1, 2005 search are inadmissible in evidence. Their return, on motion of BFTI, was thus in order.

The petition is denied.

PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs. FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC. (GR No.


131522, July 19, 1999)

This is a petition for review on certiorari seeking to set aside the (a) decision of the Court of Appeals, and (b) the resolution denying petitioners’ motion for reconsideration, in which the appellate court affirmed the trial court’s dismissal of the complaint for infringement and/or unfair competition and damages but deleted the award for attorney’s fees.

Facts:

Petitioners are authors and copyright owners of duly issued certificates of copyright registration covering their published works, produced through their combined resources and efforts, entitled COLLEGE ENGLISH FOR TODAY (CET for brevity), Books 1 and 2, and WORKBOOK FOR COLLEGE FRESHMAN ENGLISH, Series 1.

Respondent Felicidad Robles and Goodwill Trading Co., Inc. are the author/publisher and distributor/seller of another published work entitled “DEVELOPING ENGLISH PROFICIENCY” (DEP for brevity), Books 1 and 2 (1985 edition) which book was covered by copyrights issued to them.

In the course of revising their published works, petitioners scouted and looked around various bookstores to check on other textbooks dealing with the same subject matter. By chance they came upon the book of respondent Robles and upon perusal of said book they were surprised to see that the book was strikingly similar to the contents, scheme of presentation, illustrations and illustrative examples in their own book, CET.

After an itemized examination and comparison of the two books (CET and DEP), petitioners found that several pages of the respondent’s book are similar, if not all together a copy of petitioners’ book, which is a case of plagiarism and copyright infringement.

Petitioners then made demands for damages against respondents and also demanded that they cease and desist from further selling and distributing to the general public the infringed copies of respondent Robles’ works.

However, respondents ignored the demands, hence, on July 7, 1988, petitioners filed with the Regional Trial Court, Makati, a complaint for “Infringement and/or unfair competition with damages” against private respondents.

After the trial on the merits, the trial court rendered its judgment dismissing the complaint. Petitioners subsequently filed their notice of appeal with the trial court. However, the Court of Appeals rendered judgment in favor of respondents Robles and Goodwill Trading Co., Inc.

Hence, this petition.

Issue:

Whether or not, despite the apparent textual, thematic and sequential similarity between DEP and CET, respondents committed no copyright infringement.

Whether or not respondent Robles abused a writer’s right to fair use, in violation of Section 11 of Presidential Decree No. 49.


Held:

SC finds the petition impressed with merit.

The complaint for copyright infringement was filed at the time that Presidential Decree No. 49 was in force. At present, all laws dealing with the protection of intellectual property rights have been consolidated and as the law now stands, the protection of copyrights is governed by Republic Act No. 8293.

A perusal of the records yields several pages of the book DEP that are similar if not identical with the text of CET.

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 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.

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.

In the case at bar, there is no question that petitioners presented several pages of the books CET and DEP that more or less had the same contents. It may be correct that the books being grammar books may contain materials similar as to some technical contents with other grammar books, such as the segment about the “Author Card”. However, the numerous pages that the petitioners presented showing similarity in the style and the manner the books were presented and the identical examples can not pass as similarities merely because of technical consideration.

SC 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.

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.

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.

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.

The petition is hereby GRANTED.

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