1. [G.R. No. 110318. August 28, 1996.

]
COLUMBIA PICTURES, INC., ORION PICTURES CORPORATION, PARAMOUNT PICTURES CORPORATION, TWENTIETH
CENTURY FOX FILM CORPORATION, UNITED ARTISTS CORPORATION, UNIVERSAL CITY STUDIOS, INC., THE WALT DISNEY
COMPANY, and WARNER BROTHERS, INC., petitioners, vs. COURT OF APPEALS, SUNSHINE HOME VIDEO, INC. and DANILO
A. PELINDARIO, respondents.
Petitioners claim:
-Petitioners, thru counsel lodged a formal complaint with the National Bureau of Investigation for violation of PD No. 49, as amended,
and sought its assistance in their anti-film piracy drive. Acting on such request, NBI Senior Agent Lauro C. Reyes applied for a search
warrant with the court a quo against Sunshine seeking the seizure, among others, of pirated video tapes of copyrighted films all of
which were enumerated in a list attached to the application; and, television sets, video cassettes and/or laser disc recordings
equipment and other machines and paraphernalia used or intended to be used in the unlawful exhibition, showing, reproduction, sale,
lease or disposition of videograms tapes in the premises.
-According to petitioners, after complying with what the law then required, the lower court determined that there was probable cause for
the issuance of a search warrant. It is further argued that any search warrant so issued in accordance with all applicable legal
requirements is valid, for the lower court could not possibly have been expected to apply, as the basis for a finding of probable cause
for the issuance of a search warrant in copyright infringement cases involving videograms, a pronouncement which was not existent at
the time of such determination.
Respondents claim:
Private respondents predictably argue in support of the ruling of the Court of Appeals sustaining the quashal of the search warrant by
the lower court on the strength of that 20th Century Fox ruling which, they claim, goes into the very essence of probable cause. At the
time of the issuance of the search warrant involved here, although the 20th Century Fox case had not yet been decided, Section 2,
Article III of the Constitution and Section 3, Rule 126 of the 1985 Rules on Criminal Procedure embodied the prevailing and governing
law on the matter. The ruling in 20th Century Fox was merely an application of the law on probable cause. Hence, they posit that there
was no law that was retrospectively applied, since the law had been there all along. To refrain from applying the 20th Century Fox
ruling, which had supervened as a doctrine promulgated at the time of the resolution of private respondents' motion for reconsideration
seeking the quashal of the search warrant for failure of the trial court to require presentation of the master tapes prior to the issuance of
the search warrant, would have constituted grave abuse of discretion.
S.C. Ruling:
There is merit in petitioners' impassioned and well-founded argumentation. In fine, the supposed pronunciamento in said case
regarding the necessity for the presentation of the master tapes of the copyrighted films for the validity of search warrants should at
most be understood to merely serve as a guidepost in determining the existence of probable cause in copyright infringement cases
where there is doubt as to the true nexus between the master tape and the pirated copies. 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. Judicial dicta should always be construed within the factual matrix of their
parturition, otherwise a careless interpretation thereof could unfairly fault the writer with the vice of overstatement and the reader with
the fallacy of undue generalization.
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 copyrighted films is always necessary to meet the requirement of probable cause and that, in the
absence thereof, there can be no finding of probable cause for the issuance of a search warrant.

CHING VS SALINAS
G.R. No. 161295
June 29, 2005
FACTS:
Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and manufacturer of a Utility
Model, described as "Leaf Spring Eye Bushing for Automobile" made up of plastic.
On September 4, 2001, Ching and Joseph Yu were issued by the National Library Certificates of Copyright Registration and Deposit of
the said work described therein as "Leaf Spring Eye Bushing for Automobile."4
After due investigation, the NBI filed applications for search warrants in the RTC of Manila against William Salinas, Sr. and the
officers and members of the Board of Directors of Wilaware Product Corporation. It was alleged that the respondents therein
reproduced and distributed the said models penalized under Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293.

The respondents averred that the works covered by the certificates issued by the National Library are not artistic in nature;
they are considered automotive spare parts and pertain to technology. They aver that the models are not original, and as such are the
proper subject of a patent, not copyright.
ISSUE: WON the Leaf Spring Eye Bushing for Automobile is a work of art
HELD: No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the certificates of copyright
registration and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion.
RATIO RECIDENDI:
We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that the authors intellectual creation,
regardless of whether it is a creation with utilitarian functions or incorporated in a useful article produced on an industrial scale, is
protected by copyright law. However, the law refers to a "work of applied art which is an artistic creation." It bears stressing that there is
no copyright protection for works of applied art or industrial design which have aesthetic or artistic features that cannot be identified
separately from the utilitarian aspects of the article.36 Functional components of useful articles, no matter how artistically designed, have
generally been denied copyright protection unless they are separable from the useful article.37
In this case, the petitioners models are not works of applied art, nor artistic works. They are utility models, useful articles,
albeit with no artistic design or value.
A utility model is a technical solution to a problem in any field of human activity which is new and industrially applicable. It may
be, or may relate to, a product, or process, or an improvement of any of the aforesaid. Essentially, a utility model refers to an invention
in the mechanical field. This is the reason why its object is sometimes described as a device or useful object. A utility model varies from
an invention, for which a patent for invention is, likewise, available, on at least three aspects: first, the requisite of "inventive step" in a
patent for invention is not required; second, the maximum term of protection is only seven years compared to a patent which is twenty
years, both reckoned from the date of the application; and third, the provisions on utility model dispense with its substantive
examination and prefer for a less complicated system.
Being plain automotive spare parts that must conform to the original structural design of the components they seek to replace,
the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not ornamental. They lack the decorative quality or value that must
characterize authentic works of applied art. They are not even artistic creations with incidental utilitarian functions or works incorporated
in a useful article. In actuality, the personal properties described in the search warrants are mechanical works, the principal function of
which is utility sans any aesthetic embellishment.

G.R. No. L-11937

April 1, 1918

PEDRO SERRANO LAKTAW, plaintiff-appellant,

vs.
MAMERTO PAGLINAWAN, defendant-appellee.
Perfecto Gabriel for appellant.
Felix Ferrer and Crossfield and O'Brien for appellee.
ARAULLO, J.:
In the complaint presented in the Court of First Instance of the City of Manila on February 20, 1915, it was alleged: (1) 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, and a copy of which was attached to the complaint, as Exhibit A; (2) that the defendant, without the
consent of the plaintiff, reproduced said literary work, improperly copied the greater part thereof in the work published by him
and entitled Diccionariong Kastila-Tagalog (Spanish-Tagalog Dictionary), a copy of which was also attached to the complaint as
Exhibit B; (3) that 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, and (4) that the damages occasioned to the plaintiff by the
publication of defendant's work amounted to $10,000. The plaintiff therefore prayed the court to order the defendant to withdraw
from sale all stock of the work herein identified as Exhibit B and to pay the plaintiff the sum of $10,000, with costs.
The defendant in his answer denied generally each and every allegation of the complaint and prayed the court to absolve him
from the complaint. After trial and the introduction of evidence by both parties, the court on August 20, 1915, 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.
The appellant contends that 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.
Said article 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.
Upon making a careful and minute comparison of Exhibit A, the dictionary written and published by the plaintiff, and Exhibit B,
written and published by the defendant, and, taking into account the memorandum (fols. 55 to 59) presented by the defendant,
in which he enumerates the words and terms which, according to him, are in his dictionary but not in that of that of the plaintiff,
and viceversa, and the equivalents or definitions given by the plaintiff, as well as the new Tagalog words which are in the
dictionary of the defendant but not in that of the plaintiff; and considering the notes, Exhibit C, first series, presented by the
plaintiff, in which the terms copied by the defendant from the plaintiff's dictionary are enumerated in detail and in relation to each
letter of the alphabet and which the plaintiff's own words and terms are set forth, with a summary, at the foot of each group of
letters, which shows the number of initial Spanish words contained in the defendant's dictionary, the words that are his own and
the fact that the remaining ones are truly copied from the plaintiff's dictionary considering all of these facts, we come to a
conclusion completely different and contrary to that of the trial court, for said evidence clearly shows:
1. That, of the Spanish words in the defendant's dictionary, Exhibit B, which correspond to each letter of the alphabet, those that
are enumerated below have been copied and reproduced from the plaintiff's dictionary, with the exception of those that are
stated to be defendant's own.
Letter

Words

Defendant's own

"A"

1,184

231

"B"

364

28

"C"

660

261

"CH"

76

10

"D"

874

231

"E"

880

301

"F"

383

152

"G"

302

111

"H"

57

64

"I"

814

328

"J"

113

25

"K"

11

11

"L"

502

94

"LL"

36

"M"

994

225

"N"

259

53

""

"O"

317

67

"P"

803

358

"Q"

84

11

"R"

847

140

"S"

746

118

"T"

591

147

"U"

107

15

"V"

342

96

"X"

"Y"

24

"Z"

73

17

______

_____

23,560

3,108

Therefore, of the 23,560 Spanish words in the defendant's dictionary, after deducting 17 words corresponding to the letters K
and X (for the plaintiff has no words corresponding to them), only 3,108 words are the defendant's own, or, what is the same
thing, the defendant has added only this number of words to those that are in the plaintiff's dictionary, he having reproduced or
copied the remaining 20,452 words.
2. That the defendant also literally reproduced and copied for the Spanish words in his dictionary, the equivalents, definitions and
different meanings in Tagalog, given in plaintiff's dictionary, having reproduced, as to some words, everything that appears in the
plaintiff's dictionary for similar Spanish words, although as to some he made some additions of his own. Said copies and
reproductions are numerous as may be seen, by comparing both dictionaries and using as a guide or index the defendant's
memorandum and notes, first series, Exhibit C, in which, as to each word, the similarities and differences between them are set
forth in detail.
3. That the printer's errors in the plaintiff's dictionary as to the expression of some words in Spanish as well as their equivalents
in Tagalog are also reproduced, a fact which shows that the defendant, in preparing his dictionary, literally copied those Spanish
words and their meanings and equivalents in Tagalog from the plaintiff's dictionary.
The trial court has chosen at random, as is stated in the judgment appealed from, some words from said dictionaries in making
the comparison on which its conclusion is based, and consequently the conclusion reached by it must be inaccurate and not well
founded, because said comparison was not complete.
In said judgment some words of the defendant's dictionary are transcribed, the equivalents and meanings of which in Tagalog
are exactly the same as those that are given in the plaintiff's dictionary, with the exception, as to some of them, of only one
acceptation, which is the defendant's own production. And with respect to the examples used by the defendant in his dictionary,
which, according to the judgment, are not copied from the plaintiff's the judgment referring to the preposition a (to), in
Tagalog sa it must be noted that the defendant, in giving in his dictionary an example of said preposition, uses the expression
"voy a Tayabas" (I am going to Tayabas) instead of "voy a Bulacan" (I am going to Bulacan), as the plaintiff does in his
dictionary, or what is the same thing, that one speaks of Bulacan while the other speaks of Tayabas. This does not show that
there was no reproduction or copying by the defendant of the plaintiffs work, but just the opposite, for he who intends to imitate
the work of another, tries to make it appear in some manner that there is some difference between the original and the imitation;
and in the example referred to, with respect to the preposition a (to), that dissimilarity as to the province designated seems to
effect the same purpose.

In the judgment appealed from, the court gives one to understand that the reproduction of another's dictionary without the
owner's consent does not constitute a violation of the Law of Intellectual Property for the court's idea of a dictionary is stated in
the decision itself, as follows:
Dictionaries have to be made with the aid of others, and they are improved by the increase of words. What may be said
of a pasture ground may be said also of a dictionary, i. e., that it should be common property for all who may desire to
write a new dictionary, and the defendant has come to this pasture ground and taken whatever he needed from it in the
exercise of a perfect right.
Such idea is very erroneous, especially in relation to the Law of Intellectual Property. Danvilla y Collado the author of the Law of
January 10, 1879, on Intellectual Property, which was discussed and approved in the Spanish Cortes, in his work entitled La
Propiedad Intelectual (page 362, 1st ed.) states with respect to dictionaries and in relation to article 7 of said law:
The protection of the law cannot be denied to the author of a dictionary, for although words are not the property of
anybody, their definitions, the example that explain their sense, and the manner of expressing their different meanings,
may constitute a special work. On this point, the correctional court of the Seine held, on August 16, 1864, that a
dictionary constitutes property, although some of the words therein are explained by mere definitions expressed in a few
lines and sanctioned by usage, provided that the greater part of the other words contain new meanings; new meanings
which evidently may only belonged to the first person who published them.
Therefore, the plaintiff, Pedro Serrano, cannot be denied the legal protection which he seeks, and which is based on the fact that
the dictionary published by him in 1889 is his property said property right being recognized and having been granted by
article 7, in connection with article 2, of said law and on the further fact that said work was reproduced by the defendant
without his permission.
This law was published in the Gaceta de Madrid on January 12, 1879. It took effect in these Islands six months after its
promulgation or publication, as provided in article 56 thereof. The body of rules for the execution of said law having been
approved by royal decree of September 3, 1880, and published in the Gaceta de Madrid on September 6, 1880 and extended to
the Philippine Islands by royal decree of May 5, 1887, it was in turn published in the Gaceta de Manila, with the approval of the
Governor-General of the Islands, on June 15, 1887. Said law of January 10, 1879, and the rules for its application, were
therefore in force in these Islands when the plaintiff's dictionary was edited and published in 1889.
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. His property right to the work Diccionario
Hispano-Tagalog (Spanish-Tagalog Dictionary), published by him and edited in 1889, is recognized and sanctioned by said law,
and by virtue thereof, he had acquired a right of which he cannot be deprived merely because the law is not in force now or is of
no actual application. This conclusion is necessary to protect intellectual property rights vested after the sovereignty of Spain
was superseded by that of the United States. 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.
In addition to what has been said, 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. Manresa, in his commentaries on article 429 of the Civil Code (vol. 3, p. 633, 3d ed.) says that
the concrete statement of the right to literary properties is found in the legal doctrine according to which nobody may reproduce
another person's work, without the consent of his owner, or even to annotate or add something to it or to improve any edition
thereof. And on page 616 of said volume, Manresa says the following:

He who writes a book, or carves a statue, or makes an invention, has the absolute right to reproduce or sell it, just as
the owner of land has the absolute right to sell it or its fruits. But while the owner of land, by selling it and its fruits,
perhaps fully realizes all its economic value, by receiving its benefits and utilities, which are presented, for example, by
the price, on the other hand the author of a book, statue or invention, does not reap all the benefits and advantages of
his own property by disposing of it, for the most important form of realizing the economic advantages of a book, statue
or invention, consists in the right to reproduce it in similar or like copies, everyone of which serves to give to the person
reproducing them all the conditions which the original requires in order to give the author the full enjoyment thereof. If
the author of a book, after its publication, cannot prevent its reproduction by any person who may want to reproduce it,
then the property right granted him is reduced to a very insignificant thing and the effort made in the production of the
book is no way rewarded.
Indeed the property right recognized and protected by the Law of January 10, 1879, on Intellectual Property, would be illusory if,
by reason of the fact that said law is no longer in force as a consequence of the change of sovereignty in these Islands, the
author of a work, who has the exclusive right to reproduce it, could not prevent another person from so doing without his
consent, and could not enforce this right through the courts of justice in order to prosecute the violator of this legal provision and
the defrauder or usurper of his right, for he could not obtain the full enjoyment of the book or other work, and his property right
thereto, which is recognized by law, would be reduced, as Manresa says, to an insignificant thing, if he should have no more
right than that of selling his work.
The reproduction by the defendant without the plaintiff's consent of the Diccionario Hispano-Tagalog (Spanish-Tagalog
Dictionary), published and edited in the City of Manila in 1889, by the publication of the Diccionariong Kastila-Tagalog (SpanishTagalog Dictionary), published in the same city and edited in the press El Progreso in 1913, as appears from Exhibit B, which is
attached to the complaint, has caused the plaintiff, according to the latter, damages in the sum of $10,000. It is true that it cannot
be denied that the reproduction of the plaintiff's book by the defendant has caused damages to the former, but the amount
thereof has not been determined at the trial, for the statement of the plaintiff as to the proceeds he would have realized if he had
printed in 1913 the number of copies of his work which he stated in his declaration a fact which he did not do because the
defendant had reproduced it was not corroborated in any way at the trial and is based upon mere calculations made by the
plaintiff himself; for which reason no pronouncement can be made in this decision as to the indemnification for damages which
the plaintiff seeks to recover.
The plaintiff having prayed, not for a permanent injunction against the defendant, as the plaintiff himself in his brief erroneously
states, but for a judgment ordering the defendant to withdraw from sale all stock of his workDiccionariong KastilaTagalog (Spanish-Tagalog Dictionary), of which Exhibit B is a copy, and the suit instituted by said plaintiff being proper, we
reverse the judgment appealed from 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. We make no special pronouncement as to the costs of this
instance. So ordered.

2. G.R. No. 108946. January 28, 1999.]

FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., petitioners, vs. HONORABLE FRANKLIN
DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and CASEY FRANCISCO,
respondents.

Petitioners Claim:
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 claims that there is an infringement on the copyright of
the show "RHODA AND ME" both in content and in the execution of the video presentation are established because
respondent's "IT'S A DATE" is practically an exact copy of complainant's "RHODA AND ME" because of substantial
similarities. As may [be] gleaned from the evidence on record, the substance of the television productions complainant's
"RHODA AND ME" and Zosa's "IT'S A DATE" is that two matches are made between a male and a female, both single,
and the two couples are treated to a night or two of dining and/or dancing at the expense of the show. The major concepts
of both shows is the same. Any difference appear mere variations of the minor concepts.
Respondents Claim:
Both public and private respondents maintain that petitioners failed to establish the existence of probable cause due to
their failure to present the copyrighted master videotape of Rhoda and Me. They contend that petitioner BJPI's copyright
covers only a specific episode of Rhoda and Me and that the formats or concepts of dating game shows are not covered by
copyright protection under P.D. No. 49.

Issue: Whether the format and mechanics of a TV show may be subject of a copyright.
S.C. Ruling:
To begin with the format of a show is not copyrightable. Section 2 of P.D. No. 49, otherwise known as the DECREE ON
INTELLECTUAL PROPERTY, enumerates the classes of work entitled to copyright protection, does not include the
format or mechanics of a television show. For this reason, the protection afforded by the law cannot be extended to cover
them. 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.

3. G.R. No. 148222. August 15, 2003.]

PEARL & DEAN (PHIL.), INCORPORATED, petitioner, vs. SHOEMART, INCORPORATED, and NORTH
EDSA MARKETING, INCORPORATED, respondents.
Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of advertising display units simply
referred to as light boxes. These units utilize specially printed posters sandwiched between plastic sheets
and illuminated with back lights. Pearl and Dean was able to secure a Certificate of Copyright Registration
over these illuminated display units. The advertising light boxes were marketed under the trademark
Poster Ads. From 1981 to about 1988, Pearl and Dean employed the services of Metro Industrial
Services to manufacture its advertising displays.
Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean to
fabricate its display units, offered to construct light boxes for Shoemarts chain of stores. SMI approved
the proposal and ten (10) light boxes were subsequently fabricated by Metro Industrial for SMI. After,
Pearl and Dean, received reports that exact copies of its light boxes were installed at SM malls.
In the light of its discoveries, Pearl and Dean sent a letter to both SMI and NEMI enjoining them to cease
using the subject light boxes and to remove the same from SMIs establishments. It also demanded the
discontinued use of the trademark Poster Ads, and the payment to Pearl and Dean of compensatory
damages in the amount of P20million.
Upon receipt of the demand letter, SMI suspended the leasing of light boxes and NEMI took down its
advertisements for Poster Ads from the lighted display units in SMIs stores. Claiming that both SMI and
NEMI failed to meet all its demands, Pearl and Dean filed this instant case for infringement of trademark
and copyright, unfair competition and damages.

ISSUE: Whether the engineering or technical drawings of an advertising display unit (light box) are
granted copyright protection (copyright certificate of registration), is the light box depicted in such
engineering drawings ipso facto also protected by such copyright?
HELD: NO. Petitioner P & Ds complaint was that SMI infringed on its copyright over the light boxes when SMI
had the units manufactured by Metro and EYD Rainbow Advertising for its own account. Obviously, petitioners
position was premised on its belief that its copyright over the engineering drawings extended ipso facto to the
light boxes depicted or illustrated in said drawings
First, petitioners application for a copyright certificate clearly stated that it was for a class O work under
Section 2 (O) of PD 49 (The Intellectual Property Decree) which was the statute then prevailing. Said Section
2 expressly enumerated the works subject to copyright:
SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist with
respect to any of the following works:
xxx xxx

xxx

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

xxx

Although petitioners copyright certificate was entitled Advertising Display Units (which depicted the boxtype electrical devices), its claim of copyright infringement cannot be sustained.
Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant, the
rights are limited to what the statute confers. It may be obtained and enjoyed only with respect to the subjects
and by the persons, and on terms and conditions specified in the statute. Accordingly, it can cover only the
works falling within the statutory enumeration or description.
P & D secured its copyright under the classification class O work. This being so, petitioners copyright
protection extended only to the technical drawings and not to the light box itself because the latter was not at
all in the category of prints, pictorial illustrations, advertising copies, labels, tags and box wraps. Stated
otherwise, even as we find that P & D indeed owned a valid copyright, the same could have referred only to the
technical drawings within the category of pictorial illustrations. It could not have possibly stretched out to
include the underlying light box. The strict application1[9] of the laws enumeration in Section 2 prevents us from
giving petitioner even a little leeway, that is, even if its copyright certificate was entitled Advertising Display
Units. What the law does not include, it excludes, and for the good reason: the light box was not a literary or
artistic piece which could be copyrighted under the copyright law. And no less clearly, neither could the lack of
statutory authority to make the light box copyrightable be remedied by the simplistic act of entitling the
copyright certificate issued by the National Library as Advertising Display Units.
In fine, if SMI and NEMI reprinted P & Ds technical drawings for sale to the public without license from P &
D, then no doubt they would have been guilty of copyright infringement. But this was not the case. SMIs and
NEMIs acts complained of by P & D were to have units similar or identical to the light box illustrated in the
technical drawings manufactured by Metro and EYD Rainbow Advertising, for leasing out to different
advertisers. Was this an infringement of petitioners copyright over the technical drawings? We do not think
so.

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

FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC., plaintiff-appellant, vs.
BENJAMIN TAN, defendant-appellee.
Plaintiff-appellant:
*is the owner of certain musical compositions among which are the songs entitled: "Dahil Sa Iyo", "Sapagkat
Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness Of You."
*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,
*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 under the provisions of Section 3 of the
Copyright Law.
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: NO. It has been held that "The playing of music in dine and dance establishment which was paid for by
the public in purchases of food and drink constituted "performance for profit" within a Copyright Law." Thus, it
has been explained that while it is possible in such establishments for the patrons to purchase their food and
drinks and at the same time dance to the music of the orchestra, the music is furnished and used by the
orchestra for the purpose of inducing the public to patronize the establishment and pay for the entertainment in

the purchase of food and drinks. The defendant conducts his place of business for profit, and it is public; and
the music is performed for profit.
Nevertheless, appellee cannot be said to have infringed upon the Copyright Law. Appellee's allegation that the
composers of the contested musical compositions waived their right in favor of the general public when they
allowed their intellectual creations to become property of the public domain before applying for the
corresponding copyrights for the same is correct.
The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative Order No. 3 (as amended,
dated September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office relating to the
Registration of Copyright Claims' promulgated pursuant to Republic Act 165, provides among other things that
an intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila, or within
the (60) days if made elsewhere, failure of which renders such creation public property." Indeed, if the general
public has made use of the object sought to be copyrighted for thirty (30) days prior to the copyright application
the law deems the object to have been donated to the public domain and the same can no longer be
copyrighted.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.

Maglalang Santos vs., McCullough Printing, 12 SCRA 321 (1964)

Facts
Mauro Malalang Santos filed an action for damages for unauthorized use, adaptation and appropriation by the MCCULLOUGH
PRINTING COMPANY of the intellectual creation or artistic design of a Christmas card by him (Mauro Maglalang Santos) based on
Article 721 and 722 of the Civil Code of the Philippines.
The Christmas card depicts a Philippine rural Christmas time scene consisting of a woman and a child in a nipa hut adorned
with a star-shaped lantern and a man astride a carabao, beside a tree, underneath which appears the plaintiff's pen name, Malang.
The complaint alleges that plaintiff Mauro Malang Santos designed for former Ambassador Felino Neri, for his personal
Christmas Card greetings for the year 1959, the artistic motif in question. The following year the defendant McCullough Printing
Company, without the knowledge and authority of plaintiff, displayed the very design in its album of Christmas cards and offered it for
sale, for a price. For such unauthorized act of defendant, plaintiff suffered moral damages to the tune of P16,000.00, because it has
placed plaintiff's professional integrity and ethics under serious question and caused him grave embarrassment before Ambassador
Neri. He further prayed for the additional sum of P3,000.00 by way of attorney's fee.
Issues
(1) Whether plaintiff is entitled to protection, notwithstanding the, fact that he has not copyrighted his design?
(2) Whether the publication is limited, so as to prohibit its use by others, or it is general publication?
(3) Whether the provisions of the Civil Code or the Copyright Law should apply in the case?

Law
Art. 721. By intellectual creation, the following persons acquire ownership:
(1) The author with regard to his literary, dramatic, historical, legal, philosophical, scientific or other work;
(2) The composer; as to his musical composition;
(3) The painter, sculptor, or other artist, with respect to the product of his art;
(4) The scientist or technologist or any other person with regard to his discovery or invention. (n)
Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of the preceding article, shall have the ownership of their
creations even before the publication of the same. Once their works are published, their rights are governed by the Copyright laws.
The painter, sculptor or other artist shall have dominion over the product of his art even before it is copyrighted.
The scientist or technologist has the ownership of his discovery or invention even before it is patented. (n)
Held
1st issue:
The Supreme Court found that plaintiff is not entitled to a protection, the provision of the Civil Code, notwithstanding.
Paragraph 33 of Patent Office Administrative Order No. 3 (as amended dated September 18, 1947) entitled "Rules of Practice in the
Philippines Patent Office relating to the Registration of Copyright Claims" promulgated pursuant to Republic Act 165, provides, among
others, that an intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila, or within sixty (60)
day's if made elsewhere, failure of which renders such creation public property. In the case at bar, even as of this moment, there is no
copyright for the design in question.
2nd issue:
We are not also prepared to accept the contention of appellant that the publication of the design was a limited one, or that
there was an understanding that only Ambassador Neri should, have absolute right to use the same. In the first place, if such were the
condition then Ambassador Neri would be the aggrieved party, and not the appellant. In the second place, if there was such a limited
publication or prohibition, the same was not shown on the face of the design. When the purpose is a limited publication, but the effect is
general publication, irrevocable rights thereupon become vested in the public, in consequence of which enforcement of the restriction
becomes impossible (Nutt vs. National Institute, 31 F [2d] 236). It has been held that the effect of offering for sale a dress, for example
manufactured in accordance with an original design which is not protected by either a copyright or a patent, is to divest the owner of his
common law rights therein by virtue of the publication of a 'copy' and thereafter anyone is free to copy the design or the dress (Fashion
Originators Guild of America v. Federal Trade Commission, 114 F [2d] 80). When Ambassador Neri distributed 800 copies of the design
in controversy, the plaintiff lost control of his design and the necessary implication was that there had been a general publication, there
having been no showing of a clear indication that a limited publication was intended. The author of a literary composition has a light to
the first publication thereof. He has a right to determine whether it shall be published at all, and if published, when, where, by whom,
and in what form. This exclusive right is confined to the first publication. When once published, it is dedicated to the public, and the
author loses the exclusive right to control subsequent publication by others, unless the work is placed under the protection of the
copyright law. (See II Tolentino's Comments on the Civil Code, p. 433, citing Wright v. Eisle 83 N.Y. Supp. 887.)
3rd issue:
Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of the preceding article, shall have the ownership of their
creations even before the publication of the same. Once their works are published, their rights are governed by the Copyright laws.
The painter, sculptor or other artist shall have dominion over the product of his art even before it is copyrighted.
The scientist or technologist has the ownership of his discovery or invention even before it is patented. (n)

5. G.R. No. 131522. July 19, 1999.]

PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO, petitioners, vs. FELICIDAD C.
ROBLES and GOODWILL TRADING CO., INC., respondents.
Petitioners contention: In the complaint, petitioners alleged that in 1985, respondent Felicidad C. Robles
being substantially familiar with the contents of petitioners' works, and without securing their permission, lifted,
copied, plagiarized and/or transposed certain portions of their book CET. The textual contents and illustrations
of CET were literally reproduced in the book DEP. The plagiarism, incorporation and reproduction of particular
portions of the book CET in the book DEP, without the authority or consent of petitioners, and the
misrepresentations of respondent Robles that the same was her original work and concept adversely affected
and substantially diminished the sale of the petitioners' book and caused them actual damages by way of
unrealized income.
Respondents Contention: On November 28, 1988, respondent Robles filed her answer , and denied the allegations of
plagiarism and copying that petitioners claimed. Respondent stressed that (1) the book DEP is the product of her
independent researches, studies and experiences, and was not a copy of any existing valid copyrighted book; (2) DEP
followed the scope and sequence or syllabus which are common to all English grammar writers as recommended by the
Association of Philippine Colleges of Arts and Sciences (APCAS), so any similarity between the respondents book and
that of the petitioners was due to the orientation of the authors to both works and standards and syllabus; and (3) the
similarities may be due to the authors' exercise of the "right to fair use of copyrigthed materials, as guides."
Respondent interposed a counterclaim for damages on the ground that bad faith and malice attended the filing of the
complaint, because petitioner Habana was professionally jealous and the book DEP replaced CET as the official textbook
of the graduate studies department of the Far Eastern University.
ISSUE:

(1) whether or not, despite the apparent textual, thematic and sequential similarity between DEP and CET,
respondents committed no copyright infringement; (2) whether or not there was animus furandi on the part of respondent

when they refused to withdraw the copies of CET from the market despite notice to withdraw the same; and (3) whether
or not respondent Robles abused a writer's right to fair use, in violation of Section 11 of Presidential Decree No. 49
RULING:
We believe that respondent Robles' act of lifting from the book of petitioners substantial portions of discussions and
examples, and her failure to acknowledge the same in her book is an infringement of petitioners' copyrights.
When is there a substantial reproduction of a book? It does not necessarily require that the entire copyrighted work, or
even a large portion of it, be copied. If so much is taken that the value of the original work is substantially diminished,
there is an infringement of copyright and to an injurious extent, the work is appropriated.
In determining the question of infringement, the amount of matter copied from the copyrighted work is an important
consideration. To constitute infringement, it is not necessary that the whole or even a large portion of the work shall have
been copied. If so much is taken that the value of the original is sensibly diminished, or the labors of the original author
are substantially and to an injurious extent appropriated by another, that is sufficient in point of law to constitute piracy.
The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its gravity by an
appropriate understanding thereof. Infringement of a copyright is a trespass on a private domain owned and occupied by
the owner of the copyright, and, therefore, protected by law, and infringement of copyright, or piracy, which is a
synonymous term in this connection, consists in the doing by any person, without the consent of the owner of the
copyright, of anything the sole right to do which is conferred by statute on the owner of the copyright.
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.
The respondents claim that their similarity in style can be attributed to the fact that both of them were exposed to the
APCAS syllabus and their respective academic experience, teaching approach and methodology are almost identical
because they were of the same background.
However, we believe that even if petitioners and respondent Robles were of the same background in terms of teaching
experience and orientation, it is not an excuse for them to be identical even in examples contained in their books. The
similarities in examples and material contents are so obviously present in this case. How can similar/identical examples
not be considered as a mark of copying?
We consider as an indicia of guilt or wrongdoing the act of respondent Robles of pulling out from Goodwill bookstores
the book DEP upon learning of petitioners' complaint while pharisaically denying petitioners' demand. It was further noted
that when the book DEP was re-issued as a revised version, all the pages cited by petitioners to contain portion of their
book College English for Today were eliminated.
In cases of infringement, copying alone is not what is prohibited. The copying must produce an "injurious effect". Here,
the injury consists in that respondent Robles lifted from petitioners' book materials that were the result of the latter's
research work and compilation and misrepresented them as her own. She circulated the book DEP for commercial use did
not acknowledged 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.

ABS-CBN Broadcasting Corporation vs. Philippine Multi-Media System, Inc.

G.R. Nos. 175769-70, January 19, 2009
Facts:
Philippine Multi-Media System Inc (PMSI) is a signal provider which has cable and satellite services. It is
providing its satellite services through Dream Broadcasting System. PMSI has its Free TV and Premium
Channels.
The
Free
TV
includes
ABS-CBN,
GMA-7
and
other
local networks. The premium channels include AXN, Jack TV, etc which are paid by subscribers before such
channels can be transmitted as feeds to a subscribers TV set which has been installed with a Dream
satellite.
ABS-CBN is a television and broadcasting corporation. It broadcasts television programs by wireless
means to Metro Manila and nearby provinces, and by satellite to provincial stations through Channel 2 and
Channel 23. The programs aired over Channels 2 and 23 are either produced by ABS-CBN or purchased
from or licensed by other producers. ABS-CBN also owns regional television stations which pattern their
programming in accordance with perceived demands of the region. Thus, television programs shown in
Metro
Manila
and
nearby
provinces
are
not
necessarily
shown
in
other
provinces.
In May 2002, ABS-CBN sued PMSI for allegedly engaging in rebroadcasting and thereby infringing on ABSCBNs copyrights; that the transmission of Channels 2 and 23 to the provinces where these two channels
are not usually shown altered ABS-CBNs programming for the said provinces. PMSI argued that it is not
infringing upon ABS-CBNs copyrights because it is operating under the Must-Carry Rule outlined in NTC
(National
Telecommunications
Commission)
Circular
No.
4-08-88.
Issue:
1.
Whether
or
not
PMSI
violated
the
Laws
on
Property
Rights.
2. Whether or not the issuance MC 4-08-88 by the NTC is a valid exercise of the police power of the State.

Ruling:
1. NO. PMSI did not violate the Laws on Property Rights because it is not engaged in rebroadcasting
Channels 2 and 23. Rebroadcasting has been defined as the simultaneous broadcasting by one
broadcasting organization of the broadcast of another broadcasting organization. It is also the
transmission by wireless means for the public reception of sounds or of images or of representations
thereof; such transmission by satellite is also broadcasting where the means for decrypting are provided
to the public by the broadcasting organization or with its consent. PMSI is only engaged in the carrying of
signals of ABS-CBN coming from ABS-CBN and transmitting signals. PMSI is not the origin nor does it
claim to be the origin of the programs broadcasted by the ABS-CBN. PMSI did not make and transmit on
its own but merely carried the existing signals of the ABS-CBN. When PMSI subscribers view ABS-CBNs
programs in Channels 2 and 23, they know that the origin thereof was the ABS-CBN.
Therefore, the retransmission of ABS-CBNs signals by PMSI which functions essentially as a cable
television does not constitute rebroadcasting in violation of the formers intellectual property rights
under
the
IP
Code.
2. YES. The law on copyright is not absolute. The carriage of ABS-CBNs signals by virtue of the mustcarry rule in Memorandum Circular No. 04-08-88 is under the direction and control of the government
though the NTC which is vested with exclusive jurisdiction to supervise, regulate and control
telecommunications and broadcast services/facilities in the Philippines. The imposition of the must-carry
rule is within the NTCs power to promulgate rules and regulations, as public safety and interest may
require, to encourage a larger and more effective use of communications, radio and television
broadcasting facilities, and to maintain effective competition among private entities in these activities
whenever
the
Commission
finds
it
reasonably
feasible.
Moreover, radio and television waves are mere franchised which may be reasonably burdened with some
form of public service. It is a privilege subject, among other things, to amendment by Congress in
accordance with the constitutional provision that any such franchise or right granted shall be subject to
amendment, alteration or repeal by the Congress when the common good so requires.

SAMSON VS DAWAY
G.R. Nos. 160054-55
July 21, 2004
FACTS:
The undisputed facts show that on March 7, 2002, two informations for unfair
competition under Section 168.3 (a), in relation to Section 170, of the Intellectual
Property Code (Republic Act No. 8293), similarly worded save for the dates and places of
commission, were filed against petitioner Manolo P. Samson, the registered owner of ITTI
Shoes. The accusatory portion of said informations read:
That on or about the first week of November 1999 and sometime prior or
subsequent thereto, in Quezon City, Philippines, and within the jurisdiction of this
Honorable Court, above-named accused, owner/proprietor of ITTI Shoes/Mano Shoes
Manufactuirng Corporation located at Robinsons Galleria, EDSA corner Ortigas Avenue,
Quezon City, did then and there willfully, unlawfully and feloniously distribute, sell and/or
offer for sale CATERPILLAR products such as footwear, garments, clothing, bags,
accessories and paraphernalia which are closely identical to and/or colorable imitations
of the authentic Caterpillar products and likewise using trademarks, symbols and/or
designs as would cause confusion, mistake or deception on the part of the buying public
to the damage and prejudice of CATERPILLAR, INC., the prior adopter, user and owner of
the following internationally: "CATERPILLAR", "CAT", "CATERPILLAR & DESIGN", "CAT AND
DESIGN", "WALKING MACHINES" and "TRACK-TYPE TRACTOR & DESIGN."
ISSUE: Which court has jurisdiction over criminal and civil cases for violation of
intellectual property rights?
HELD: Regional Trial Court
RATIO RECIDENDI:

In the case at bar, R.A. No. 8293 and R.A. No. 166 are special laws8 conferring
jurisdiction over violations of intellectual property rights to the Regional Trial Court. They
should therefore prevail over R.A. No. 7691, which is a general law.9 Hence, jurisdiction
over the instant criminal case for unfair competition is properly lodged with the Regional
Trial Court even if the penalty therefor is imprisonment of less than 6 years, or from 2 to
5 years and a fine ranging from P50,000.00 to P200,000.00.
In fact, to implement and ensure the speedy disposition of cases involving
violations of intellectual property rights under R.A. No. 8293, the Court issued A.M. No.
02-1-11-SC dated February 19, 2002 designating certain Regional Trial Courts as
Intellectual Property Courts. On June 17, 2003, the Court further issued a Resolution
consolidating jurisdiction to hear and decide Intellectual Property Code and Securities
and Exchange Commission cases in specific Regional Trial Courts designated as Special
Commercial Courts.