TAADA VS ANGARA

Facts:
This is a petition seeking to nullify the Philippine ratification of the World Trade
Organization (WTO) Agreement. Petitioners question the concurrence of herein
respondents acting in their capacities as Senators via signing the said agreement.
The WTO opens access to foreign markets, especially its major trading partners,
through the reduction of tariffs on its exports, particularly agricultural and industrial
products. Thus, provides new opportunities for the service sector cost and
uncertainty associated with exporting and more investment in the country. These
are the predicted benefits as reflected in the agreement and as viewed by the
signatory Senators, a free market espoused by WTO.
Petitioners aver that paragraph 1, Article 34 of the General Provisions and Basic
Principles of the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) intrudes on the power of the Supreme Court to promulgate rules
concerning pleading, practice and procedures and is a derogation of legislative
power.
ISSUES:
Whether the provisions of the Agreement Establishing the World Trade Organization
contravene the Philippine Constitution.
HELD:
NO. Suffice it to say that the reciprocity clause of WTO more than justifies such
intrusion, if any actually exists. Besides, Article 34 does not contain an unreasonable
burden, consistent as it is with due process and the concept of adversarial dispute
settlement inherent in our judicial system. So too, since the Philippines is a signatory to
most international conventions on patents, trademarks and copyrights, the adjustment in
legislation and rules of procedure will not be substantial.
A WTO Member is required to provide a rule of disputable (note the words in the
absence of proof to the contrary) presumption that a product shown to be identical to one
produced with the use of a patented process shall be deemed to have been obtained by
the (illegal) use of the said patented process, (1) where such product obtained by the
patented product is new, or (2) where there is substantial likelihood that the identical
product was made with the use of the said patented process but the owner of the patent
could not determine the exact process used in obtaining such identical product. Hence,
the burden of proof contemplated by Article 34 should actually be understood as the
duty of the alleged patent infringer to overthrow such presumption. Such burden, properly
understood, actually refers to the burden of evidence (burden of going forward) placed
on the producer of the identical (or fake) product to show that his product was produced
without the use of the patented process.
 The Senate Act, after deliberation and voting, of voluntarily and overwhelmingly
giving its consent to the WTO Agreement thereby making it a part of the law of the land,
is a legitimate exercise of its sovereign duty and power. By the doctrine of incorporation,
the country is bound by generally accepted principles of international law, which are
considered to be autom atically part of our own laws. One of the oldest and most
fundamental rules in international law is pacta sunt servandainternational agreements
must be performed in good faith. A treaty engagement is not a mere moral obligation but
creates a legally binding obligation on the parties.
Lastly, notwithstanding objections against possible limitations on national
sovereignty, the WTO remains as the only viable structure for multilateral trading and the
veritable forum for the development of international trade law.
 Mirpuri vs CA
Facts:
On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of petitioner
Pribhdas J. Mirpuri, filed an application with the Bureau of Patents for the
registration of the trademark "Barbizon" for use in brassieres and ladies
undergarments.
Escobar alleged that she had been manufacturing and selling these products
under the firm name "L & BM Commercial" since March 3, 1970. Private
respondent Barbizon Corporation, a corporation organized and doing business
under the laws of New York, U.S.A., opposed the application. This decision
became final and on September 11, 1974, Lolita Escobar was issued a certificate
of registration for the trademark "Barbizon." The trademark was "for use in
"brassieres and lady's underwear garments like panties."
In 1979, however, Escobar failed to file with the Bureau of Patents the Affidavit of
Use of the trademark required under Section 12 of Republic Act (R.A.) No. 166,
the Philippine Trademark Law. Due to this failure, the Bureau of Patents
cancelled Escobar's certificate of registration. On May 27, 1981, Escobar
reapplied for registration of the cancelled trademark. Mirpuri filed his own
application for registration of Escobar's trademark.
Escobar later assigned her application to herein petitioner and this application
was opposed by private respondent. CA Resolutions GRANTED the petition and
petitioner is declared the owner and prior user of the business name "BARBIZON
INTERNATIONAL" dated March 10, 1987 and issued in the name of respondent,
is hereby ordered revoked and cancelled.

Issue:
Whether or not the treaty affords protection to a foreign corporation against a Philippine
applicant for the registration of a similar trademark.

Ruling:
Yes. The Convention of Paris for the Protection of Industrial Property, otherwise known
as the Paris Convention, is a multilateral treaty that seeks to protect industrial property
consisting of patents, utility models, industrial designs, trademarks, service marks, trade
names and indications of source or appellations of origin, and at the same time aims to
repress unfair competition.
The Convention is essentially a compact among various countries which, as members
of the Union, have pledged to accord to citizens of the other member countries
trademark and other rights comparable to those accorded their own citizens by their
domestic laws for an effective protection against unfair competition.
In short, foreign nationals are to be given the same treatment in each of the member
countries as that country makes available to its own citizens. Nationals of the various
member nations are thus assured of a certain minimum of international protection of
their industrial property.
The Philippines and the United States of America have acceded to the WTO
Agreement. This Agreement has revolutionized international business and economic
relations among states, and has propelled the world towards trade liberalization and
economic globalization. Protectionism and isolationism belong to the past. Trade is no
longer confined to a bilateral system.
 Samson vs. Daway

Facts:

Samson, 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. Caterpillar Inc. sued
Samson for unfair competition in RTC. Samson filed a motion to for the quashal of
information for lack of jurisdiction.
Samson contended that since under Section 170 of R.A. No. 8293, the penalty of
imprisonment for unfair competition does not exceed six years, the offense is
cognizable by the Municipal Trial Courts and not by the Regional Trial Court, per
R.A. No. 7691.
xxx
Under Section 170 of R.A. No. 8293, which took effect on January 1, 1998,
the criminal penalty for infringement of registered marks, unfair competition, false
designation of origin and false description or representation, is imprisonment from
2 to 5 years and a fine ranging from Fifty Thousand Pesos to Two Hundred
Thousand Pesos. (jurisdiction of Municipal Trial Courts)
xxx
Under Section 27 of of R.A. No. 166 (The Trademark Law)
SEC. 27. Jurisdiction of Court of First Instance. All actions under this
Chapter [V Infringement] and Chapters VI [Unfair Competition] and VII [False
Designation of Origin and False Description or Representation], hereof shall be
brought before the Court of First Instance.

Issues:

Whether or not R.A. No. 166 was expressly repealed by R.A. No. 8293.

RULING:

No, R.A. No. 8293 does not expressly repealed R.A. 166.

SEC. 239. Repeals. 239.1. All Acts and parts of Acts inconsistent herewith, more
particularly Republic Act No. 165, as amended; Republic Act No. 166, as amended; and
Articles 188 and 189 of the Revised Penal Code; Presidential Decree No. 49, including
Presidential Decree No. 285, as amended, are hereby repealed.

Notably, the aforequoted clause did not expressly repeal R.A. No. 166 in its entirety,
otherwise, it would not have used the phrases parts of Acts and inconsistent
herewith; and it would have simply stated Republic Act No. 165, as amended;
Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal
Code; Presidential Decree No. 49, including Presidential Decree No. 285, as amended
are hereby repealed. It would have removed all doubts that said specific laws had been
rendered without force and effect. The use of the phrases parts of Acts and
inconsistent herewith only means that the repeal pertains only to provisions which are
repugnant or not susceptible of harmonization with R.A. No. 8293.7 Section 27 of R.A.
No. 166, however, is consistent and in harmony with Section 163 of R.A. No. 8293. Had
R.A. No. 8293 intended to vest jurisdiction over violations of intellectual property rights
with the Metropolitan Trial Courts, it would have expressly stated so under Section 163
thereof.
 TWENTIETH CENTURY MUSIC CORP. VS AIKEN
Facts:
George Aiken's Chicken" is fast food restaurant in Pittsburgh, Pennsylvania,
owned and operated by George Aiken. Food can be purchased and consumed
inside of the store or ordered and taken out. Inside the store, radio station
broadcasts are played over loud speakers that are audible to anyone in the
restaurant. On March 11, 1972, two songs copyrighted by Twentieth Century
Music Corp. were played over the radio and heard by customers in the
restaurant. While the radio station broadcasting the songs was licensed by the
American Society of Composers, Authors and Publishers (ASCAP) to play them,
Aiken's establishment was not.
ISSUES:
Whether or not Aiken infringed on petitioners exclusive right.
HELD:
NO. Respondent did not infringe upon petitioners' exclusive right, under the
Copyright Act, "[t]o perform the copyrighted work publicly for profit," since the radio
reception did not constitute a "performance" of the copyrighted songs.
FEIST PUBLICATIONS, INC. VS. RURAL TELEPHONE SERVS. CO.

Facts:
Rural Telephone Service Company, Inc. (Plaintiff) provides telephone service to
several communities. Due to a state regulation, it must issue an annual telephone
directory, so it published a directory consisting of white and yellow pages. The
yellow pages have advertisements that generate revenue.
Feist Publications, Inc. (Defendant) is a publishing company whose directory
covers a larger range than a typical directory.
Defendant distributes their telephone books free of charge, and they also generate
revenue through the advertising in the yellow pages.
Plaintiff refused to give a license to Defendant for the phone numbers in the area,
so Defendant used them without Plaintiffs consent. Rural sued for copyright
infringement.
Issue:
Are the names, addresses, and phone numbers in a telephone directory able to be
copyrighted?

Held.:

No. Facts cannot be copyrighted, however compilations of facts can generally be

copyrighted.

To qualify for copyright protection, a work must be original to the author, which means
that the work was independently created by the author, and it possesses at least some
minimal degree of creativity. A work may be original even thought it closely resembles
other works so long as the similarity is fortuitous, not the result of copying.

Facts are not original. The first person to find and report a particular fact has not created
the fact; he has merely discovered its existence. Facts may not be copyrighted and are
part of the public domain available to every person.

Factual compilations may possess the requisite originality. The author chooses what facts
to include, in what order to place them, and how to arrange the collected date so they
may be effectively used by readers. Thus, even a directory that contains no written
expression that could be protected, only facts, meets the constitutional minimum for
copyright protection if it features an original selection or arrangement. But, even though
the format is original, the facts themselves do not become original through association.
The copyright on a factual compilation is limited to formatting. The copyright does not
extend to the facts themselves.
To establish copyright infringement, two elements must be proven: ownership of a valid
copyright and copying of constituent elements of the work that are original. The first
element is met in this case because the directory contains some forward text. As to the
second element, the information contains facts, which cannot be copyrighted. They
existed before being reported and would have continued to exist if a telephone directory
had never been published. There is no originality in the formatting, so there is no
copyrightable expression. Thus, there is no copyright infringement.
 Kho vs CA
Facts:
On December 20, 1991, petitioner Elidad C. Kho filed a complaint for injunction
and damages with a prayer for the issuance of a writ of preliminary injunction,
against the respondents Summerville General Merchandising and Company
(Summerville, for brevity) and Ang Tiam Chay.
The petitioners complaint alleges that petitioner, doing business under the name
and style of KEC Cosmetics Laboratory, is the registered owner of the copyrights
Chin Chun Su and Oval Facial Cream Container/Case; that she also has patent
rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after
purchasing the same from Quintin Cheng, the registered owner thereof in the
Supplemental Register of the Philippine Patent Office on February 7, 1980; that
respondent Summerville advertised and sold petitioners cream products under
the brand name Chin Chun Su, in similar containers that petitioner uses, thereby
misleading the public, and resulting in the decline in the petitioners business
sales and income; and, that the respondents should be enjoined from allegedly
infringing on the copyrights and patents of the petitioner.
Issue:
W/N petitioner has right to exclusive use of the subject trade name and its container.
Ruling:
No. 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 inasmuch as the same falls squarely within its definition. In
order to be entitled to exclusively use the same in the sale of the beauty cream product,
the user must sufficiently prove that she registered or used it before anybody else did.
The petitioners copyright and patent registration of the name and container would not
guarantee her the right to the exclusive use of the same for the reason that they are not
appropriate subjects of the said intellectual rights. Consequently, a preliminary
injunction order cannot be issued for the reason that the petitioner has not proven that
she has a clear right over the said name and container to the exclusion of others, not
having proven that she has registered a trademark thereto or used the same before
anyone did.
 PEARL & DEAN (PHIL.), INCORPORATED, vs. SHOEMART, INCORPORATED
Facts:
Pearl and Dean is a corporation in the manufacture of advertising display units
also known as light boxes, which were manufactured by Metro Industrial Services.
A copyright Registration was obtained in 1981. These were marketed in the name
of "Poster Ads". They also applied for a registration of trademark with the Bureau
of Patents in 1983, but was only approved in 19988.
In 1985, petitioner had an agreement with respondent Shoemart Inc (SMI) to
install these light boxes in their Makati and Cubao branch, Only the Makati branch
was able to sigh the agreement.
In 1986, the contract was rescinded unilaterally by SMI, and instead contracted
with Metro Industrial Services. They installed these lightboxes in different SM city
branches, including Cubao and Makati, with association with North Edsa Marketing
Inc (NEMI), SMI's sister company. Petitioner requested SMI and NEMI to put down
their installations of the light boxes, and payment of compensatory damages worth
P20M. Claiming that respondents failed to comply, they filed a case for
infringement of trademark and copyright, unfair competition and damages. RTC
ruled in favor of petitioner, but CA reversed.
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 its contract with
Metro Industrial was terminated, SMI engaged the services of EYD Rainbow
Advertising Corporation to make the light boxes.
Sometime in 1989, Pearl and Dean, received reports that exact copies of its light
boxes were installed at SM City and in the fastfood section of SM Cubao. Upon
investigation, Pearl and Dean found out that aside from the two (2) reported SM
branches, light boxes similar to those it manufactures were also installed in two (2)
other SM stores. It further discovered that defendant-appellant North Edsa
Marketing Inc. (NEMI), through its marketing arm, Prime Spots Marketing Services,
was set up primarily to sell advertising space in lighted display units located in
SMIs different branches. It therefore filed a case for infringement of trademark and
copyright, unfair competition and damages.
SMI maintained that it independently developed its poster panels using commonly
known techniques and available technology, without notice of or reference to Pearl
and Deans copyright. SMI noted that the registration of the mark Poster Ads was
only for stationeries such as letterheads, envelopes, and the like. Besides,
according to SMI, the word Poster Ads is a generic term which cannot be
appropriated as a trademark.
The RTC of Makati City decided in favor of P & D. On appeal, however, the Court
of Appeals reversed the trial courts ruling. Hence, this petition.
ISSUES:
(1) Whether there was a copyright infringement
(2) Whether there was a patent infringement
(3) Whether there was a trademark infringement
(4) Whether there was unfair competition
HELD:
NO TO ALL.
(1) Copyright is a statutory right, subject to the terms and conditions specified in
the statute. Therefore, it can only cover the works falling within the statutory enumeration
or description. Since the copyright was classified under class "O" works, which includes
"prints, pictorial illustrations, advertising copies, labels, tags and box wraps," and does
not include the light box itself. A lightbox, even admitted by the president of petitioner
company, was neither a literary nor an artistic work but an engineering or marketing
invention, thus not included under a copyright.
(2) Petitioner was not able to secure a patent for its lightboxes, and cannot legally
prevent anyone from manufacturing or commercially using the same. Patent has a three-
fold purpose: a) to foster and reward invention; b) promotes disclosures of invention and
permit public to use the same upon expiration; c) stringent requirements for patent
protection to ensure in the public domain remain there for free use of the public. Since
petitioner was not able to go through such examination, it cannot exclude others from
manufacturing, or selling such lightboxes. No patent, no protection.
(3) The certificate of registration issued by the Director of Patents gives exclusive
right to use its own symbol only to the description specified in the certificate. It cannot
prevent others to use the same trademark with a different description.
(4) "Poster Ads" is a general term that cannot be associated specifically to Pearl
and Dean, thus it cannot be considered to use such term to be unfair competition against
the petitioner.
 Pest Management Association of the Philippines (PMAP) vs. Fertilizer and
Pesticide Authority (FPA), 516 SCRA 360, February 21, 2007
FACTS:
Petitioner, a non-stock corporation duly organized and existing under the laws of
the Philippines, is an association of pesticide handlers duly licensed by
respondent Fertilizer and Pesticide Authority (FPA). It questioned the validity of
Section 3.12 of the 1987 Pesticide Regulatory Policies and Implementing
Guidelines.
Petitioner argued that the specific provision on the protection of the proprietary
data in FPAs Pesticide Regulatory Policies and Implementing Guidelines is
unlawful for going counter to the objectives of Presidential Decree No. 1144 (P.D.
No. 1144); for exceeding the limits of delegated authority; and for encroaching on
the exclusive jurisdiction of the Intellectual Property Office.
RTC dismissed the petition, hence the petition for review on certiorari.
ISSUE:
Whether or not respondent FPA is encroaching on the exclusive jurisdiction of the
intellectual property office when it included in its pesticide regulatory and implementing
guidelines the subject seven-year proprietary data protection.
RULING:
No. There is no encroachment upon the powers of the IPO granted under R.A. No.
8293, otherwise known as the Intellectual Property Code of the Philippines. Section 5
thereof enumerates the functions of the IPO. Nowhere in said provision does it state nor
can it be inferred that the law intended the IPO to have the exclusive authority to protect
or promote intellectual property rights in the Philippines. On the contrary, paragraph (g)
of said Section even provides that the IPO shall coordinate with other government
agencies and the private sector efforts to formulate and implement plans and policies to
strengthen the protection of intellectual property rights in the country.
Coverage:
Sec. 5. Functions of the Intellectual Property Office (IPO) provides that.
5.1. To administer and implement the State policies declared in this Act, there is hereby
created the Intellectual Property Office (IPO) which shall have the following functions:
[a] Examine applications for grant of letters patent for inventions and register utility
models and industrial designs;
[b] Examine applications for the registration of marks, geographic indication, integrated
circuits;
[c] Register technology transfer arrangements and settle disputes involving technology
transfer payments covered by the provisions of Part II, Chapter IX on Voluntary
Licensing and develop and implement strategies to promote and facilitate technology
transfer;
[d] Promote the use of patent information as a tool for technology development;
[e] Publish regularly in its own publication the patents, marks, utility models and
industrial designs, issued and approved, and the technology transfer arrangements
registered;
[f] Administratively adjudicate contested proceedings affecting intellectual property
rights; and
[g] Coordinate with other government agencies and the private sector efforts to
formulate and implement plans and policies to strengthen the protection of intellectual
property rights in the country.
 IN-N-OUT BURGER, INC. vs. SEHWANI, INCORPORATED AND/OR BENITAS
FRITES, INC.

Facts:
The petitioner was a business entity engaged in restaurant industry and
incorporated in the US which is a signatory to the Convention of Paris and the
Agreement on Trade Related Aspects of the Intellectual Property Rights. The
respondents were corporation organized in the Philippines.
The petitioner filed a trademark and service mark applications with the Bureau of
Trademarks (BOT) of the IPO for In-N-Out and In-n-Out Burger & Arrow Design. It
was later found out by the petitioner that respondent SEHWANI had already
obtained Trademark Registration for the mark IN N OUT (Inside of letter O formed
like a star). By virtue of licensing agreement, Benita Fries was able to use the
registered mark of SEHWANI.
Petitioner filed an administrative complaint before the Bureau of Legal Affairs
against the respondents for unfair competition and cancellation of trademark
registration. According to the petitioner, the trademarks IN-N-OUT, IN-N-OUT
Burger and Arrow Design, and IN-N-OUT Burger were registered with the
Trademark Office of the US and in various parts in the world, are internationally
well-known and have become distinctive of its business and goods through its long
and exclusive commercial use.
On the other hand, the respondents averred that they had been using the mark IN
N OUT since 1982. In 1991, SEHWANI INC filed with the Bureau of Patents,
Trademarks, and Technology Transfer an application for the registration of the
disputed mark. Later on, Benita Fries entered into a Licensing Agreement with
SEHWANI, wherein the former entitled to use its registered mark.
The IPO Director of Legal Affairs rendered a decision in favor of the petitioner.
Based on the decision, petitioner had the legal capacity to sue in the Philippines,
since its country of origin or domicile was a member of and a signatory to the
Convention of Paris on Protection of Industrial Property. And although petitioner
had never done business in the Philippines, it was widely known in this country
through the use herein of products bearing its corporate and trade name. Thus,
the respondents registration of the mark was cancelled. Hence, two cases arose
from this petition.
GR No. 171053
In this case, the respondents appealed the decision to the IPO Director General but it was
dismissed for failure to file within the 15-day reglementary period to appeal. They
appealed it further to the Court of Appeals, challenging the dismissal of their appeal by
the IPO Director General and affirmed the decision of the IPO Director of Legal Affairs.

The appellate court dismissed the respondents petition and affirmed the decision of the
IPO Director General and IPO Director of Legal Affairs. It confirmed that respondents
appeal before the IPO Director General was filed out of time and that it was only proper
to cancel the registration of the disputed trademark in the name of respondent Sehwani,
Incorporated and to permanently enjoin respondents from using the same.

The Supreme Court promulgated a decision in GR. No. 171053, finding that herein
respondents failed to file their Appeal Memorandum before the IPO Director General
within the period prescribed by law and, consequently, they lost their right to appeal. The
Court further affirmed the decision of the IPO Director of Legal Affairs holding that herein
petitioner had the legal capacity to sue for the protection of its trademarks, even though
it was not doing business in the Philippines, and ordering the cancellation of the
registration obtained by herein respondent Sehwani.
GR. No. 179127
The respondents were able to file a timely appeal before the IPO Director General. During
the pendency of the appeal, the Court of Appeals rendered a decision dismissing the
respondents petition. Later on, the IPO Director General rendered a decision and found
the respondents guilty of unfair competition. Aggrieved of the decision, they appealed to
the Court of Appeals.
Ruling of the CA:
The Court of Appeals reversed the decision of the Court of Appeals on the grounds that
the IPO Director General had no jurisdiction over the case. The appellate court declared
that Section 163 of the Intellectual Property Code specifically confers upon the regular
courts, and not the BLA-IPO, sole jurisdiction to hear and decide cases involving
provisions of the Intellectual Property Code, particularly trademarks. Consequently, the
IPO Director General had no jurisdiction to rule in its Decision dated 23 December 2005
on supposed violations of these provisions of the Intellectual Property Code.
Hence, the present petition.

Issue/s:
Whether or not the Intellectual Property Office has jurisdiction over administrative cases
for intellectual property rights violation.

Ruling:
The Supreme Court did not agree with the decision of the Court of Appeals. Under Section
10 of the Intellectual Property Code, it specifically identifies the functions of the Bureau
of Legal Affairs, to wit:
Hear and decide opposition to the application for registration of marks;
cancellation of trademarks;
Exercise original jurisdiction in administrative complaints for violations of
laws involving intellectual property rights; Provided, That its jurisdiction is
 limited to complaints where the total damages claimed are not less than Two
hundred thousand pesos (P200,000): Provided, futher, That availment of the
provisional remedies may be granted in accordance with the Rules of Court;
The cancellation of any permit, license, authority, or registration which may
have been granted by the Office;
The assessment of damages

While Section 163 thereof vests in civil courts jurisdiction over cases of unfair competition,
nothing in the said section states that the regular courts have sole jurisdiction over unfair
competition cases, to the exclusion of administrative bodies. On the contrary, Sections
160 and 170, which are also found under Part III of the Intellectual Property Code,
recognize the concurrent jurisdiction of civil courts and the IPO over unfair competition
cases.

Based on the foregoing discussion, the IPO Director of Legal Affairs had jurisdiction to
decide the petitioners administrative case against respondents and the IPO Director
General had exclusive jurisdiction over the appeal of the judgment of the IPO Director of
Legal Affairs.
 Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc

Facts:
Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is
marketed under the brand name Unasyn. Sometime in January and February
2003, Pfizer discovered that Pharmawealth submitted bids for the supply of
Sulbactam Ampicillin to several hospitals without the Pfizers consent. Pfizer then
demanded that the hospitals cease and desist from accepting such bids. Pfizer
also demanded that Pharmawealth immediately withdraw its bids to supply
Sulbactam Ampicillin. Pharmawealth and the hospitals ignored the demands.
Pfizer then filed a complaint for patent infringement with a prayer for permanent
injunction and forfeiture of the infringing products. A preliminary injunction
effective for 90 days was granted by the IPOs Bureau of Legal Affairs (IPO-
BLA). Upon expiration, a motion for extension filed by Pfizer was denied. Pfizer
filed a Special Civil Action for Certiorari in the Court of Appeals (CA) assailing the
denial.
While the case was pending in the CA, Pfizer filed with the Regional Trial Court
of Makati (RTC) a complaint for infringement and unfair competition, with a
prayer for injunction. The RTC issued a temporary restraining order, and then a
preliminary injunction.
Pharmawealth filed a motion to dismiss the case in the CA, on the ground of
forum shopping. Nevertheless, the CA issued a temporary restraining order.
Pharmawealth again filed a motion to dismiss, alleging that the patent, the main
basis of the case, had already lapsed, thus making the case moot, and that the
CA had no jurisdiction to review the order of the IPO-BLA because this was
granted to the Director General. The CA denied all the motions.
Pharmawealth filed a petition for review on Certiorari with the Supreme Court.

ISSUE:
What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of
the Intellectual Property Office?

RULING:
According to IP Code, the Director General of the IPO exercises exclusive jurisdiction
over decisions of the IPO-BLA. The question in the CA concerns an interlocutory order,
and not a decision. Since the IP Code and the Rules and Regulations are bereft of any
remedy regarding interlocutory orders of the IPO-BLA, the only remedy available to
Pfizer is to apply the Rules and Regulations suppletorily. Under the Rules, a petition for
certiorari to the CA is the proper remedy. This is consistent with the Rules of Court.
Thus, the CA had jurisdiction.
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.

Facts:
The respondent, Sunshine Home Video Inc, a video establishment, owned and
operated by Pelindario in Makati, Metro Manila. The petitioner sought the
assistance of the NBI for violation of PD 49, as amended.
The NBI made discreet surveillance on various video establishments in Metro
Manila including the respondent. The NBI Senior Agent applied for a search
warrant against Sunshine seeking the seizure, among others, of pirated video
tapes of copyrighted films all of which were enumerated in a list attached to the
application; and, television sets, video cassettes and/or laser disc recordings
equipment and other machines and paraphernalia used or intended to be used in
the unlawful exhibition, showing, reproduction, sale, lease or disposition of
videograms tapes in the premises above described.
After the queries made by the court a quo, a search warrant was issued. On
December 16, 1987, a Return of Search Warrant was filed with the Court. A Motion
To Lift the Order of Search Warrant was filed but was later denied for lack of merit.
A Motion for reconsideration of the Order of denial was filed. The court a quo
granted the said motion for reconsideration and justified it in this manner:
It is undisputed that the master tapes of the copyrighted films from which
the pirated films were allegedly copies, were never presented in the proceedings
for the issuance of the search warrants in question. The orders of the Court
granting the search warrants and denying the urgent motion to lift order of search
warrants were, therefore, issued in error. Consequently, they must be set aside.
The Petitioner appealed the decision to the Court of Appeals. However, the court
appeals affirmed the decision of the lower court, quashing the search warrant for
violation of the Presidential Decree 49.
Hence this petition.

Issue:
Whether or not absence such registration, as in this case, there was no right created,
hence, no infringement under PD 49 as amended?

Ruling:
As correctly pointed out by private complainants-oppositors, the Department of Justice
has resolved this legal question as far back as December 12, 1978 in its Opinion No. 191
of the then Secretary of Justice Vicente Abad Santos which stated that Sections 26 and
50 do not apply to cinematographic works and PD No. 49 had done away with the
registration and deposit of cinematographic works and that even without prior
registration and deposit of a work which may be entitled to protection under the Decree,
the creator can file action for infringement of its rights. He cannot demand, however,
payment of damages arising from infringement. The same opinion stressed that the
requirements of registration and deposit are thus retained under the Decree, not as
conditions for the acquisition of copyright and other rights, but as prerequisites to a suit
for damages. The statutory interpretation of the Executive Branch being correct, is
entitled (to) weight and respect.

Furthermore, a closer review of Presidential Decree No. 49 reveals that even with respect
to works which are required under Section 26 thereof to be registered and with copies to
be deposited with the National Library, such as books, including composite and
cyclopedic works, manuscripts, directories and gazetteers; and periodicals, including
pamphlets and newspapers; lectures, sermons, addresses, dissertations prepared for
oral delivery; and letters, the failure to comply with said requirements does not deprive
the copyright owner of the right to sue for infringement. Such non-compliance merely
limits the remedies available to him and subjects him to the corresponding sanction.

The reason for this is expressed in Section 2 of the decree which prefaces its enumeration
of copyrightable works with the explicit statement that the rights granted under this
Decree shall, from the moment of creation, subsist with respect to any of the following
classes of works. This means that under the present state of the law, the copyright for a
work is acquired by an intellectual creator from the moment of creation even in the
absence of registration and deposit. As has been authoritatively clarified:
The registration and deposit of two complete copies or reproductions of the work
with the National Library within three weeks after the first public dissemination or
performance of the work, as provided for in Section 26 (P.D. No. 49, as amended),
is not for the purpose of securing a copyright of the work, but rather to avoid the
penalty for non-compliance of the deposit of said two copies and in order to recover
damages in an infringement suit.
 CHING VS SALINAS
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."
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.
ISSUES:
WON the Leaf Spring Eye Bushing for Automobile is a work of art.
HELD:
NO. 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. Functional components of useful
articles, no matter how artistically designed, have generally been denied copyright
protection unless they are separable from the useful article
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 yearscompared 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.
 Laktaw vs. Paglinawan, 44 Phil. 855 (1918)

Facts
Laktaw is 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.
Paglinawan without the consent of Laktaw, 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 act of Pagliwanan is a violation of article 7 of the Law of January 10, 1879, on
Intellectual Property, caused irreparable injuries to Laktaw 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 him by the publication of Paglinawan's work amounted to $10,000. Laktaw
prayed the court to order the Paglinawan to withdraw from sale all stock of the
work of Paglinawan to pay him the sum of $10,000, with costs.
Paglinawan in his answer denied generally each and every allegation of the
complaint and prayed the court to absolve him from the complaint.
Law
Article 7 of the Law of January 10, 1879, on Intellectual Property:
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.

Issue:
Whether or not Paglinawan violated Article 7 of the Intellectual Property Law (1879)?

Ruling:
Yes, Paglinawan violated Article 7 of Intellectual Property Law.
It is not necessary 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.
FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., petitioners, vs.
FRANKLIN DRILON GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and
CASEY FRANCISCO, respondents.

Facts:
BJ Productions was the holder of Certificate of Copyright of Rhoda and Me, a
dating game show aired from 1970 to 1977. While watching television, the
petitioner, president of the BJPI, saw on RP Channel 9 an episode of Its a Date,
produced by IXL Productions Inc,. So, 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 the IXL to discontinue airing
Its a Date.
Zosa apologized to Joaquin thru a letter and requested a meeting to discuss a
possible settlement. However, IXL continued to air Its a Date, prompting the
petitioner to send a second letter wherein he demanded and warned that if IXL did
not comply, he would endorse the matter to his attorneys for proper legal action.
An information for violation of P.D. No. 49 was filed against the private respondent
and several officers of RP Channel 9 in the RTC. However, private respondent
Zosa sought a review of the resolution of the Assistant City Prosecutor before the
Department of Justice.
The Secretary of Justice (Franklin Drilon) reversed the findings of the Assistant
Prosecutor and directed him to move for the dismissal of the case against private
respondents. Petitioner filed for a motion for reconsideration but it was denied.
Hence this petition.

Issue/s:
Whether or not the audio-visual recordings of each episode of Rhoda and Me, fall within
the class of work mentioned in P.D. 49 , Section 2 (m).

Ruling:
The Court dismissed the case.

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.

According to the court, petitioner BJPIs 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 BJPIs 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.
 FILIPINO SOCIETY OF COMPOSERS VS. TAN

Facts:
Filipino Society of Composers, Authors and Publishers Inc. is organization under
the Corporation Law of the Philippines and registered with the Securities and
Exchange Commission. The 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."
Benjamin Tan on the other hand 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.
Tans Argument: That the mere singing and playing of songs and popular tunes
even if they are copyrighted do not constitute an infringement (Record on Appeal,
p. 11; Resolution, CA-G.R. NO. 46373-R, Rollo, pp. 32-36) under the provisions of
Section 3 of the Copyright Law (Act 3134 of the Philippine Legislature).

Issues:
1. Whether or not the playing and singing of musical compositions which have been
copyrighted under the provisions of the Copyright Law (Act 3134) inside the establishment
of Benjamin Tan constitute a public performance for profit within the meaning and
contemplation of the Copyright Law of the Philippines?
2. Assuming that there were indeed public performances for profit, whether or not
Benjamin Tan can be held liable therefore.

Ruling:
On the first issue:
Yes. 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 (Buck, et al. v. Russon No. 4489 25 F. Supp. 317).

On the second issue:

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." (Santos v. McCullough Printing
Company, 12 SCRA 324-325 [1964]. 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) becamepopular in radios, juke boxes, etc .
long before registration (TSN, May 28, 1968, pp. 3-5; 25) while the song "The Nearness
Of You" registered on January 14, 1955 (Brief for Appellant, p. 10) had become popular
twenty five (25) years prior to 1968, (the year of the hearing) or from 1943 (TSN, May 28,
1968, p. 27) 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.
(Ibid, pp. 28; 29 and 30).
 Malalang 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 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.
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.
The lower court dismissed the complaint. Hence, this petition.
ISSUES:
Whether or not the plaintiff is entitled to protection, notwithstanding the, fact that
he has not copyrighted his design?
HELD:
NO. 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.
 A&M Records Inc. vs. Napster Inc. No. 00-16401 (U.S. Court Decision)

Facts :
Napster was a web-based company for the purpose of providing a platform for
users to exchange digital music with other users. A&M saw the potential negative
impact of this service to their sales, and thus filed copyright suit against Napster.
A&M alleged that Napster was a contributor to the copyright infringements against
their company. Napsters defense was such that in order for their company to be
liable for contributory infringement, their users had to be directly infringing on
A&Ms copyrights.
Napster claimed that this was not the case, but their users were instead engaging
in three types of fair use: sampling, space-shifting, and permissive distribution.
Napster also provided a solution to the alleged infringement in the form of a
compulsory license, in which the government would force the copyright holders to
grant use to Napster potentially in exchange for royalties. The U.S. District Court
ruled in favor of A&M and issued an injunction by which Napster should further
refrain from providing their service.
The 9th Circuit Federal Court of Appeals found that it was clear the defendants
violated at least one of the copyright holders five exclusive rights: the right to
reproduce, prepare derivative work, distribute, perform, and display. The appellate
court found that Napster users infringe at least two of the copyright holders
exclusive rights: the rights of reproduction, 106(1); and distribution, 106(3).
The courts deduced that by uploading files to the Napster search index, users were
violating the plaintiffs right to reproduction and by downloading files containing
copyrighted music were violating their right to distribution. The court decided that
the defendants had the ability to prevent infringement from taking place, and thus
has the duty to do so.

Issues :

Whether or not Napster violated one of the exclusive copyright of A&M?

Whether or not it constitutes fair use?

Ruling:
The court also examined Napsters fair use claims using the four fair use factors:
purpose and character of the use, nature of the use, portion used, effect of use on the
market. The court decided that Napsters argument for sampling did not hold, because
the samples were in fact permanent and complete files on the users hard drives. Also,
Napsters space-shifting argument did not hold, because the users were not just simply
converting their media between formats for storage, but were sharing the files as well.
No decision was made on the argument of permissive reproduction, because the
plaintiffs did not challenge this use. Finally, the court rejected Napsters request for a
compulsory license, citing that such a device would provide Napster with an easy out
while seemingly punishing the copyright holders.
PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO, petitioners, vs.
FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC., respondents.

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.
The petitioners came upon the book of Respondent Robles when they scouted
and looked around different bookstores to check on textbooks dealing with the
same subject matter. After itemized and closer examination, they found out that
several pages of book were similar to the contents, illustration, and illustrative
examples in their book, CET. According to the petitioners, it constituted plagiarism
and copyright infringement.
Petitioners made demands for damages against the 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, the
respondents ignored the demands. Thus, the petitioner filed a complaint to the
Regional Trial Court. The trial court dismissed the case based on the merits. The
petitioners filed their notice of appeal but the court directed its secretary to forward
all the records to the Court of Appeals.
On appeal, petitioners argued that the trial court completely disregarded their
evidence and fully subscribed to the arguments of respondent Robles that the
books in issue were purely the product of her researches and studies and that the
copied portions were inspired by foreign authors and as such not subject to
copyright. Petitioners also assailed the findings of the trial court that they were
animated by bad faith in instituting the complaint.
The Court of Appeals affirmed the ruling of the trial court. According also to the
appellate court, that similarity of the allegedly infringed work to the authors or
proprietors copyrighted work does not of itself establish copyright infringement,
especially if the similarity results from the fact that both works deal with the same
subject or have the same common source, as in this case. Hence, this petition.

Issue/s:
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 respondent Robles abused a writers right to fair use, in violation
of Section 11 of Presidential Decree No. 49.

Ruling:
The Court granted the petition.
On the first issue, the court answered it in affirmative that respondents indeed had
committed infringement. Upon looking at the examination of the evidence, the court
believed 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 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.

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 latters 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.

On the second issue, the court found that the respondent really abused the writers right
to fair use under Sec. 11 of PD. 45. Since, the complaint was filed at the time Presidential
Decree No. 49 was in force. At present, all laws dealing with the protection of intellectual
property rights have been consolidated under RA 8293, in which, the same rule would
apply. According to the court, the law provides that:
The inclusion of a work in a publication, broadcast, or other communication to the
public, sound recording of film, if such inclusion is made by way of illustration for
teaching purposes and is compatible with fair use: Provided, That the source and
the name of the author, if appearing in the work is mentioned.

Therefore, respondent Robles should be made liable for infringement.

 ABS-CBN BROADCASTING CORPORATION VS PHILIPPINE MULTI-MEDIA
SYSTEM, INC.

Facts:
ABS-CBN Broadcasting Corporation (ABS-CBN) is licensed under the laws of the
Republic of the Philippines to engage in television and radio broadcasting. It
broadcasts television programs by wireless means to Metro Manila and nearby
provinces, and by satellite to provincial stations through Channel 2 on Very High
Frequency (VHF) and Channel 23 on Ultra High Frequency (UHF). 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. Philippine Multi-Media System, Inc. (PMSI) is the operator of Dream
Broadcasting System. It delivers digital direct-to-home (DTH) television via satellite
to its subscribers all over the Philippines.
PMSI was granted a legislative franchise under Republic Act No. 86305 on May 7,
1998 and was given a Provisional Authority by the National Telecommunications
Commission (NTC) on February 1, 2000 to install, operate and maintain a
nationwide DTH satellite service. When it commenced operations, it offered as part
of its program line-up ABS-CBN Channels 2 and 23, NBN, Channel 4, ABC
Channel 5, GMA Channel 7, RPN Channel 9, and IBC Channel 13, together with
other paid premium program channels.
However, on April 25, 2001, ABS-CBN demanded for PMSI to cease and desist
from rebroadcasting Channels 2 and 23. On April 27, 2001, PMSI replied that the
rebroadcasting was in accordance with the authority granted it by NTC and its
obligation under NTC Memorandum Circular No. 4-08-88, Section 6.2 of which
requires all cable television system operators operating in a community within
Grade A or B contours to carry the television signals of the authorized television
broadcast stations.
Thereafter, negotiations ensued between the parties in an effort to reach a
settlement; however, the negotiations were terminated on April 4, 2002 by ABS-
CBN allegedly due to PMSIs inability to ensure the prevention of illegal
retransmission and further rebroadcast of its signals, as well as the adverse effect
of the rebroadcasts on the business operations of its regional television stations.
On May 13, 2002, ABS-CBN filed with the IPO a complaint for Violation of Laws
Involving Property Rights, with Prayer for the Issuance of a Temporary Restraining
Order and/or Writ of Preliminary Injunction,. It alleged that PMSIs unauthorized
rebroadcasting of Channels 2 and 23 infringed on its broadcasting rights and
copyright. On July 2, 2002, the Bureau of Legal Affairs (BLA) of the IPO granted
 ABS-CBNs application for a temporary restraining order. On July 12, 2002, PMSI
suspended its retransmission of Channels 2 and 23.
PMSI Argument Broadcasting Channels 1 & 23 is subject to the must-carry rule
under Memorandum Circular No. 04-08-88.

Issues:
(1) Whether or not PMSIs unauthorized rebroadcasting of Channels 2 and 23 is an
infringement of its broadcasting rights and copyright under the Intellectual Property Code?
(2) Whether or not Memorandum Circular No. 04-08-88 excludes DTH satellite television
operators?

Ruling:
PMSI did not infringe on ABS-CBNs intellectual property rights under the IP Code.

Section 202.7 of the IP Code defines broadcasting as 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.

On the other hand, rebroadcasting as defined in Article 3(g) of the International

Convention for the Protection of Performers, Producers of Phonograms and Broadcasting
Organizations, otherwise known as the 1961 Rome Convention, of which the Republic of
the Philippines is a signatory, is the simultaneous broadcasting by one broadcasting
organization of the broadcast of another broadcasting organization.

PMSI would not qualify as a broadcasting organization because it does not have the
aforementioned responsibilities imposed upon broadcasting organizations, such as ABS-
CBN. ABS-CBN creates and transmits its own signals; PMSI merely carries such signals
which the viewers receive in its unaltered form. PMSI does not produce, select, or
determine the programs to be shown in Channels 2 and 23. Likewise, it does not pass
itself off as the origin or author of such programs. Insofar as Channels 2 and 23 are
concerned, PMSI merely retransmits the same in accordance with Memorandum Circular
04-08-88. With regard to its premium channels, it buys the channels from content
providers and transmits on an as-is basis to its viewers. Clearly, PMSI does not perform
the functions of a broadcasting organization; thus, it cannot be said that it is engaged in
rebroadcasting Channels 2 and 23.

The retransmission of ABS-CBNs signals by PMSI which functions essentially as a

cable television does not therefore constitute rebroadcasting in violation of the formers
intellectual property right under the IP Code.
 MICROSOFT VS HWANG
Facts:
Microsoft Corporation ("Microsoft"), a Delaware, United States corporation, owns
the copyright and trademark to several computer software. Beltron Computer
Philippines, Inc. ("Beltron") and Taiwan Machinery Display & Trade Center, Inc.
("TMTC") are domestic corporations.
In May 1993, Microsoft and Beltron entered into a Licensing Agreement
("Agreement"). Under Section 2(a) of the Agreement, as amended in January
1994, Microsoft authorized Beltron, for a fee, to:
(1) reproduce and install no more than one (1) copy of Microsoft software on
each Customer System hard disk or Read Only Memory ("ROM")
(2) distribute directly or indirectly and license copies of the Product in object
code form to end users
The Agreement also authorized Microsoft and Beltron to terminate the contract if
the other fails to comply with any of the Agreements provisions. Microsoft
terminated the Agreement effective 22 June 1995 for Beltrons non-payment of
royalties.
Afterwards, Microsoft learned that Beltron were illegally copying and selling
Microsoft software. Consequently, Microsoft, through its Philippine agent, hired
the services of Pinkerton Consulting Services ("PCS"), a private investigative
firm. Microsoft also sought the assistance of the National Bureau of Investigation
("NBI").
On 10 November 1995, a PCS employee and an NBI agent posing as
representatives of a computer shop, bought computer hardware (central
processing unit ("CPU") and computer monitor) and software (12 computer disks
("CDs") in read-only memory ("ROM") format) from Beltron. The CPU contained
pre-installed Microsoft Windows 3.1 and MS-DOS software. The 12 CD-ROMs,
encased in plastic containers with Microsoft packaging, also contained Microsoft
software. At least two of the CD-ROMs were "installers," so-called because they
contain several software (Microsoft only or both Microsoft and non-Microsoft).
The PCS employee and the NBI agent were not given the Microsoft end-user
license agreements, users manuals, registration cards or certificates of
authenticity for the articles they purchased. The receipt issued to them for the
CPU and monitor bore the heading "T.M.T.C. (PHILS.) INC. BELTRON
COMPUTER."
The NBI searched the premises of Beltron and TMTC and seized several
computer-related hardware, software, accessories, and paraphernalia based on
the search warrant applied by Microsoft.
Based on the articles obtained from Beltron and TMC, Microsoft and a certain
Lotus Development Corporation ("Lotus Corporation") charged Beltron and TMC
before the Department of Justice ("DOJ") with copyright infringement under
 Section 5(A) in relation to Section 29 of Presidential Decree No. 49, as amended,
("PD 49") and with unfair competition under Article 189(1) of the Revised Penal
Code. Microsoft alleged that respondents illegally copied and sold Microsoft
software.
ISSUES:
Whether or not Beltron and TMC are liable for copyright infringement and unfair
competition?
HELD:
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 without obtaining the copyright owners prior consent renders himself civilly and
criminally liable for copyright infringement.
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.
Significantly, under Section 5(A), a copyright owner is vested with the exclusive
right to "copy, distribute, multiply, [and] sell" his intellectual works.
The elements of unfair competition under Article 189(1)43 of the Revised Penal
Code are:
(a) That the offender gives his goods the general appearance of the goods of
another manufacturer or dealer;
(b) That the general appearance is shown in the
(1) goods themselves, or in the
(2) wrapping of their packages, or in the
(3) device or words therein, or in
(4) any other feature of their appearance
(c) That the offender offers to sell or sells those goods or gives other persons a
chance or opportunity to do the same with a like purpose[; and]
(d) That there is actual intent to deceive the public or defraud a competitor.
 Microsoft Corp. vs. Maxicorp Inc

Facts:
Microsoft sued Maxicorp for copyright infringement and unfair competition for
production, installing and selling of counterfeit Microsofts products.
Microsoft alleged that they did not authorize Maxicorp for production or selling of
their products.

Issue:
Whether or not Maxicorp committed copyright infringement and unfair competition?

RULING:
Copyright infringement and unfair competition are not limited to the act of selling
counterfeit goods. They cover a whole range of acts, from copying, assembling,
packaging to marketing, including the mere offering for sale of the counterfeit goods.
 BAYANIHAN MUSIC PHILS. VS. BMG RECORDS

Facts:
Jose Mari Chan (Chan) entered into a contract with Bayanihan Music Philippines,
Inc. (Bayanihan), whereunder the former assigned to the latter all his rights,
interests and participation over his musical composition "Can We Just Stop and
Talk A While". Three years after the parties entered into a similar contract over
Chan's other musical composition entitled "Afraid For Love To Fade".
On the strength of the abovementioned contracts, Bayanihan applied for and was
granted by the National Library a Certificate of Copyright Registration for each of
the two musical compositions.Apparently, without the knowledge and consent of
petitioner Bayanihan, Chan authorized BMG Records (BMG) to record and
distribute the aforementioned musical compositions in a then recently released
album of singer Lea Salonga.
Bayanihan informed Chan and BMG of its existing copyrights over the subject
musical compositions and the alleged violation of such right by the two. Demands
were made on both to settle the matter with Bayanihan. However no settlement
was reached by the parties.
Hence, Bayanihan filed a against Chan and BMG for violation of Section 216 of
Republic Act No. 8293, otherwise known as the Intellectual Property Code of the
Philippines, with a prayer for the issuance of Temporary Restraining Order (TRO)
and/or writ of preliminary injunction, enjoining respondent BMG from further
recording and distributing the subject musical compositions in whatever form of
musical products, and Chan from further granting any authority to record and
distribute the same musical compositions.
BMG Arguments:
(1) the acts of recording and publication sought to be enjoined had already
been consummated, thereby rendering moot Bayanihan's prayer for TRO and/or
preliminary injunction;
(2) there is no clear showing that petitioner Bayanihan would be greatly
damaged by the refusal of the prayed for TRO and/or preliminary injunction.
Chan Arguments:
(1) it was never his intention to divest himself of all his rights and interest over
the musical compositions in question;
(2) the contracts he entered into with Bayanihan are mere music publication
agreements giving Bayanihan, as assignee, the power to administer his copyright over
his two songs and to act as the exclusive publisher thereof;
(3) he was not cognizant of the application made by and the subsequent grant
of copyrights to Bayanihan;
 (4) Bayanihan was remissed in its obligations under the contracts because it
failed to effectively advertise his musical compositions for almost twenty (20) years,
hence, he caused the rescission of said
contracts in 1997.

Issues:
Whether or not Bayanihan as assignee of the copyrights over the musical compositions
in question has a clear legal right to a writ of preliminary injunction?

Ruling:
No, Bayanihan has no right for right for injunction over the subject musical compositions.

The issuance of an injunctive writ if the following requisites provided for by law are:
(1) there must be a right in esse or the existence of a right to be protected;
(2) the act against which the injunction is to be directed is a violation of such right, the
trial court threaded the correct path in denying petitioner's prayer therefor.

Chan, the composer and author of the lyrics of the two (2) songs, is protected by the mere
fact alone that he is the creator thereof, conformably with Republic Act No. 8293,
otherwise known as the Intellectual Property Code, Section 172.2 of which reads:
172.2. Works are protected by the sole fact of their creation, irrespective of their
mode or form of expression, as well as of their content, quality and purpose.

The copyrights obtained by Bayanihan on the basis of the selfsame two (2) contracts,
suffice it to say 'that such purported copyrights are not presumed to subsist in accordance
with Section 218[a] and [b], of the Intellectual Property Code, because respondent Chan
had put in issue the existence thereof.