FRANCISCO G. JOAQUIN, JR. and BJ PRODUCTIONS, INC. vs. HONORABLE RANKLIN M. DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR.,

and CASEY FRANCISCO

FACTS: Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of Certificate of Copyright No. M922, dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977. On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate of copyright specifying the show’s format and style of presentation. Upon complaint of petitioners, information for violation of PD No. 49 was filed against private respondent Zosa together with certain officers of RPN 9 for airing It’s a Date. It was assigned to Branch 104 of RTC Quezon City. Zosa sought review of the resolution of the Assistant City Prosecutor before the Department of Justice. On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the Assistant City Prosecutor’s findings and directed him to move for the dismissal of the case against private respondents. Petitioner Joaquin filed motion for reconsideration but such was denied. ISSUE: Whether the format or mechanics or petitioner’s television show is entitled to copyright protection. HELD: The Court ruled that the format of the show is not copyrightable. Sec. 2 of PD No. 49, otherwise known as the Decree on Intellectual Property, enumerates the classes of work entitled to copyright protection. The provision is substantially the same as Sec. 172 of the Intellectual Property Code of the Philippines (RA 8293). The format or mechanics of a television show is not included in the list of protected works in Sec. 2 of PD No. 49. For this reason, the protection afforded by the law cannot be extended to cover them. Copyright, in the strict sense of the term, is purely a statutory right. It is a new independent right granted by the statute and not simply a pre-existing right regulated by the statute. Being a statutory grant, the rights are only such as the statute confers, and

may be obtained and enjoyed only with respect to the subjects and by the person and on terms and conditions specified in the statute. The Court is of the opinion that petitioner BJPI’s copyright covers audio-visual recordings of each episode of Rhoda and Me, as falling within the class of works mentioned in PD 49. The copyright does not extend to the general concept or format of its dating game show. Mere description by words of the general format of the two dating game shows is insufficient; the presentation of the master videotape in evidence was indispensable to the determination of the existence of a probable cause. A television show includes more than mere words can describe because it involves a whole spectrum of visuals and effects, video and audio, such that no similarity or dissimilarity may be found by merely describing the general copyright / format of both dating game shows.

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)

FACTS: Petitioner‘s 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, and alleges 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 Kho has the sole right using the package of Chin Chun Su products

RULING: 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. NOTE: Trademark, copyright, and patents are different intellectual property rights that cannot be interchanged with one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container goods. In relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise. Meanwhile, the scope of copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrial applicable. Pearl & Dean v. Shoemart GR 148222, 15 August 2003; Third division, Corona (J) Facts: Pearl & Dean is a corporation engaged in the manufacture of advertising display units (Poster Ads) referred as light boxes. It acquired a Certificate of Copyright Registration over the illuminated display units, and acquired trademark for “Poster Ads”. Pearl & Dean negotiated with Shoemart for the lease and installation of the light boxes in Shoemart Malls. After Pearl & Bean’s contract was rescinded, exact copies of its light b oxes were installed in various SM malls (fabricated by Metro Industrial Services, and later EYD Rainbow Advertising Corp.) Pearl & Dean sent a letter to Shoemart and it sister company. North EDSA Marketing, to cease using the light boxes and to remove them from the malls, and demanded the discontinued use of the trade mark “Poster Ads.” Unsatisfied with the compliance of its demands, Pearl & Dean sued. The trial court ruled in favor of Pearl & Dean, while the appellate court reversed the decision of the trial court. Issue: Whether pearl & Dean’s copyright registration for its light boxes and the trademark registration of “Poster Ads” preclude Shoemart and North Edsa Marketing from using the same.

Held: No. Pearl & Dean secured its copyright under the classification class “o” work. This being so, its protection extended only to the technical drawings and not to the light box itself. Pearl & Dean cannot exclude others from the manufacture, sale and/or commercial use over the light boxes on the sole basis of its copyright, certificate over the technical drawings. It cannot be the intention of the law that the right of exclusivity would be granted for a longer time (so years in copyright, and 17 years in patent) through the simplified procedure of copyright registration with the National Library, without the rigor of defending the patentability of its “invention” before the IPO and the public. On the other hand, there has been no evidence that Pearl & Dean’s use of “Poster Ads” was distinctive or well known. “Poster Ads” was too generic a name to identify it to a specific company or entity. “Poster Ads” was generic and incapable of being used as a trademark because it was used in the field of poster advertising, the very business engaged by earl & Dean. Furthermore, Pearl & Dean’s exclusive right to the use of “Poster Ads” is limited to what is written in its certificate of registration. Shoemart, et. al. cannot be held liable for the infringement of the trademark.

PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs. FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC.

G.R. No. 131522, July 19, 1999 FACTS: Pacita Habana et al., are authors and copyright owners of duly issued of the book, College English For Today (CET). Respondent Felicidad Robles was the author of the book Developing English Proficiency (DEP). Petitioners found that several pages of the respondent's book are similar, if not all together a copy of petitioners' book. Habana et al. filed an action for damages and injunction, alleging respondent’s infringement of copyrights, in violation of P.D. 49. They allege respondent Felicidad C. Robles being substantially familiar with the contents of petitioners' works, and without securing their permission, lifted, copied, plagiarized and/or transposed certain portions of their book CET. On the other hand, Robles contends that the book DEP is the product of her own intellectual creation, and was not a copy of any existing valid copyrighted book and that the similarities may be due to the authors' exercise of the "right to fair use of copyrighted materials, as guides." The trial court ruled in favor of the respondents, absolving them of any liability. Later, the Court of Appeals rendered judgment in favor of respondents Robles and Goodwill Trading Co., Inc. In this appeal, petitioners submit that the appellate court erred in affirming the trial court's decision.

ISSUE: Whether Robles committed infringement in the production of DEP. HELD: A perusal of the records yields several pages of the book DEP that are similar if not identical with the text of CET. The court finds that respondent Robles' act of lifting from the book of petitioners substantial portions of discussions and examples, and her failure to acknowledge the same in her book is an infringement of petitioners' copyrights. In the case at bar, the least that respondent Robles could have done was to acknowledge petitioners Habana et. al. as the source of the portions of DEP. The final product of an author's toil is her book. To allow another to copy the book without appropriate acknowledgment is injury enough.

G.R. No. 111267 September 20, 1996

COLUMBIA PICTURES ENTERTAINMENT, INC., MGM ENTERTAINMENT CO., ORION PICTURES CORPORATION, PARAMOUNT PICTURES CORP., UNIVERSAL CITY STUDIOS, INC., THE WALT DISNEY COMPANY and WARNER BROTHERS, INC., petitioners, vs. HONORABLE COURT OF APPEALS, 14TH DIVISION and JOSE B. JINGCO of SHOWTIME ENTERPRISES, INC., respondents.

In 1986, the Videogram Regulatory Board (VRB) applied for a warrant against Jose Jinco (Jingco), owner of Showtime Enterprises for allegedly pirating movies produced and owned by Columbia Pictures and other motion picture companies. Jingco filed a motion to quash the search warrant but the same was denied in 1987. Subsequently, Jinco filed an Urgent Motion to Lift the Search Warrant and Return the Articles Seized. In 1989, the RTC judge granted the motion. The judge ruled that based on the ruling in the 1988 case of 20th Century Fox Film Corporation vs CA, before a search warrant could be issued in copyright cases, the master copy of the films alleged to be pirated must be attached in the application for warrant.

ISSUE: Whether or not the 20th Century Fox ruling may be applied retroactively in this case.

HELD: No. In 1986, obviously the 1988 case of 20th Century Fox was not yet promulgated. The lower court could not possibly have expected more evidence from the VRB and Columbia Pictures in their application for a search warrant other than what the law and jurisprudence, then existing and judicially accepted, required with respect to the finding of probable cause.

The Supreme Court also revisited and clarified the ruling in the 20th Century Fox Case. It is evidently incorrect to suggest, as the ruling in 20th Century Fox may appear to do, that in copyright infringement cases, the presentation of master tapes of the copyright films is always necessary to meet the requirement of probable cause for the issuance of a search warrant. It is true that such master tapes are object evidence, with the merit that in this class of evidence the ascertainment of the controverted fact is made through demonstration involving the direct use of the senses of the presiding magistrate. Such auxiliary procedure, however, does not rule out the

use of testimonial or documentary evidence, depositions, admissions or other classes of evidence tending to prove the factum probandum, especially where the production in court of object evidence would result in delay, inconvenience or expenses out of proportion to is evidentiary value.

In fine, the supposed pronouncement in said case regarding the necessity for the presentation of the master tapes of the copy-righted films for the validity of search warrants should at most be understood to merely serve as a guidepost in determining the existence of probable cause in copy-right infringement cases where there is doubt as to the true nexus between the master tape and the pirated copies. An objective and careful reading of the decision in said case could lead to no other conclusion than that said directive was hardly intended to be a sweeping and inflexible requirement in all or similar copyright infringement cases.