2. SAMBAR vs.

LEVI STRAUSS AUTHOR: SOLIS

[G.R. No. 132604. March 6, 2002] NOTES:
TOPIC: Standard for Copyright Protection - Sambar is the owner of CVSGE
PONENTE: Quisumbing, J. - Levi Strauss & Co. is an internationally known clothing manufacturer
CASE LAW/ DOCTRINE:

FACTS:
 Respondents Levi Strauss & Co. (LS&Co.), and Levi Strauss (Phil.), Inc. (LSPI), through a letter from the legal officer, demanded that CVS Garment
Enterprises (CVSGE) to desist from using their stitched arcuate design on the Europress jeans which CVSGE advertised in the Manila Bulletin.
 Atty. Gruba, counsel of CVSGE, replied that the arcuate design on the back pockets of Europress jeans was different from the design on the back pockets of
Levis jeans. He further asserted that his client had a copyright on the design it was using.
 Respondents filed a complaint against Sambar, doing business under the name and style of CVSGE. Later on amended their complaint to include CVSGIC—
the company that took over CVSGE, because the latter stopped its operation. However, Sambar’s whereabouts were not known. When respondents
learned about the whereabouts of Sambar and CVSGE, the case was revived.
 In their complaint, respondents alleged that LS&Co. owns the arcuate design trademark which was registered under U.S. Trademark and in the Principal
Register of Trademarks with the Philippine Patent Office; that through a Trademark Technical Data and Technical Assistance Agreement with LSPI as its
agent to protect its trademark in the Philippines, and that sometime in 1987, CVSGIC and Sambar, without the consent and authority of respondents and in
infringement and unfair competition, sold and advertised, and despite demands to cease and desist continued to manufacture, sell and advertise denim
pants under the brand name Europress with the back pockets bearing a design similar to the arcuate trademark of respondents, thereby causing confusion
on the buying public, prejudicial to respondents good will and property right.
 In CVSGIC’s answer, it admitted it manufactured, sold and advertised and was still manufacturing and selling denim parts under the brand name of
Europress, bearing a back pocket design two double arcs meeting in the middle. However, it denied that it infringed respondent’s arcuate for the following
reasons: (1) the public would not be confused because the department stores where both jeans were sold were, distinctively segregated by billboards and
other modes of advertisement; (2) they were properly labeled as Europress; and (3) CVSGUC had its own original arcuate design, as evidence by a
Copyright Registration which was different and distinct from Levis design.
 Sambar filed a separate answer, denying that he was connected with CVSGI, but admitted that the said Copyright Registration over arcuate design of
CVSGIC was issued to him, but denied using it, nor authorized anyone to use it.
 Trial court issued a writ of preliminary injunction enjoining CVSCGIC and Sambar from manufacturing, advertising and selling pants with the accurate
design on their back pockets.
 Respondents moved for reconsideration for the cancellation of Sambar’s copyright registration which the trial court granted.
 Sambar appealed to the CA which decided in favor of respondents.
ISSUE(S):
(1) Did petitioner infringe on respondents arcuate design?
(2) Must we hold Sambar liable with CVS Garments Industrial Corporation?
(3) Are respondents entitled to nominal, temperate and exemplary damages and cancellation of petitioner’s copyright?

HELD:
(1) We find that the first issue raised by petitioner is factual.
(2) Yes, Sambar is liable.
(3) Respondents are entitled to cancellation of petitioner’s copyright and is entitled to temperate damages only.

RATIO:

First Issue
 The basic rule is that factual questions are beyond the province of the SC in a petition for review. Although there are exceptions to this rule, this case is
not one of them. Hence, we find no reason to disturb the findings of the CA that Europress use of the arcuate design was an infringement of the Levis
design.

Second Issue
 Pertinent is Section 1, Rule 131 of the RoC which provides that burden of proof is the duty of a party to prove the truth of his claim or defense, or any
fact in issue by the amount of evidence required by law. In civil case, the burden of proof may be on either the plaintiff or the defendant. It is on the
latter, if in his answer he alleges an affirmative defense, which is not a denial of an essential ingredient in the plaintiffs cause of action, but is one which,
if established, will be a good defense i.e., an avoidance of the claim, which prima facie, the plaintiff already has because of the defendants own
admissions in the pleadings.
 Petitioner’s defense in this case was an affirmative defense. He did not deny that respondents owned the arcuate trademark nor that CVSGIC used on it
products to use it. He also said he was not connected with CVSGUC. These were not alleged by respondents in their pleadings, and petitioner therefore
had the burden to prove these.

Third Issue
 The cancellation of petitioner’s copyright was justified because petitioner’s copyright cannot prevail over respondents’ registration in the Principal
Register of Bureau of Patents, Trademarks, and Technology Transfer. The essence of copyright registration is originality and a copied design is inherently
non-copyrightable. Registration does not confer originality upon a copycat version of a prior design.
 Award of damages is clearly provided in Section 23, while cancellation of petitioner’s copyright finds basis on the fact that the design was a mere copy
of that of respondents trademark. To be entitled to copyright, the thing being copyrighted must be original, created by the author through his own skill,
labor and judgment, without directly copying or evasively imitating the work of another.
 However, what respondents are entitled to is an award for temperate damages, not nominal damages. For although the exact amount of damage or loss
can not be determined with reasonable certainty, the fact that there was infringement means they suffered losses for which they are entitled to
moderate damages. We find the award of P50,000.00 as temperate damages fair and reasonable, considering the circumstance herein as well as the
global coverage and reputation of respondents LS&Co. and LSPI.
DISSENTING/CONCURRING OPINION(S):