REPUBLIC ACT NO.
10372 Director of Copyright and Other Related Rights shall be appealable
AN ACT AMENDING CERTAIN PROVISIONS OF REPUBLIC ACT NO.
8293, OTHERWISE KNOWN AS THE "INTELLECTUAL PROPERTY CODE
OF THE PHILIPPINES", AND FOR OTHER PURPOSES
Be it enacted by the Senate and House of Representatives of the Philippines
in Congress assembled:
Section 1. Section 6 of Republic Act No. 8293, otherwise known as the
"Intellectual Property Code of the Philippines", is hereby amended to read as
follows:
"SEC. 6. The Organizational Structure of the IPO. – x x x
"6.2. the Office shall be divided into seven (7) Bureaus, each of which
shall be headed by a Director and assisted by an Assistant Director.
These Bureaus are:
"x x x
"(f) the Administrative, Financial and Personnel Services
Bureau; and
"(g) the Bureau of Copyright and Other Related Rights."
Section 2. Section 7 of Republic Act No. 8293 is hereby amended to read as
follows:
"SEC. 7. The Director General and Deputies Director General. –
"x x x
"(b) Exercise exclusive appellate jurisdiction over all decisions
rendered by the Director of Legal Affairs, the Director of Patents, the
Director of Trademarks, the Director of Copyright and Other Related
Rights, and the Director of the Documentation, Information and
Technology Transfer Bureau. the decisions of the Director General
in the exercise of his appellate jurisdiction in respect of the decisions
of the Director of Patents, the Director of Trademarks and the
to the Court of Appeals in accordance with the Rules of Court; and
those in respect of the decisions of the Director of the
Documentation, Information and Technology Transfer Bureau shall
be appealable to the Secretary of Trade and Industry;
"(c) Undertake enforcement functions supported by concerned
agencies such as the Philippine National Police, the National Bureau
of Investigation, the Bureau of Customs, the Optical Media Board,
and the local government units, among others;
"(d) Conduct visits during reasonable hours to establishments and
businesses engaging in activities violating intellectual property rights
and provisions of this Act based on report, information or complaint
received by the office; and
"(e) Such other functions in furtherance of protecting IP rights and
objectives of this Act."
Section 3. A new Section 9A is hereby inserted after Section 9 of Republic
Act No. 8293, to read as follows:
"SEC. 9A. The Bureau of Copyright and Other Related Rights. – the
Bureau of Copyright and Other Related Rights shall have the
following functions:
"9A.1. Exercise original jurisdiction to resolve disputes
relating to the terms of a license involving the author’s right
to public performance or other communication of his work;
"9A.2. Accept, review and decide on applications for the
accreditation of collective management organizations or
similar entities;
"9A.3. Conduct studies and researches in the field of
copyright and related rights; and
"9A.4. Provide other copyright and related rights service
and charge reasonable fees therefor."
Section 4. Section 171.3. of Republic Act No. 8293 is hereby amended to
read as follows:
"SEC. 171. Definitions. – x x x
"171.3. ‘Communication to the public’ or ‘communicate to the public’
means any communication to the public, including broadcasting,
rebroadcasting, retransmitting by cable, broadcasting and
retransmitting by satellite, and includes the making of a work
available to the public by wire or wireless means in such a way that
members of the public may access these works from a place and
time individually chosen by them;"
Section 5. Section 171.9. of Republic Act No. 8293 is hereby amended to
read as follows:
"171.9. ‘Reproduction’ is the making of one (1) or more copies,
temporary or permanent, in whole or in part, of a work or a sound
recording in any manner or form without prejudice to the provisions
of Section 185 of this Act (Sec. 41[E], P.D. No. 49a);"
Section 6. There shall be two new subsections to be added at the end of
Section 171.11. to be known as 171.12. and 171.13., both to read as follows:
"171.12. ‘Technological measure’ means any technology, device or
component that, in the normal course of its operation, restricts acts
in respect of a work, performance or sound recording, which are not
authorized by the authors, performers or producers of sound
recordings concerned or permitted by law;
"171.13. ‘Rights management information’ means information which
identifies the work, sound recording or performance; the author of
the work, producer of the sound recording or performer of the
performance; the owner of any right in the work, sound recording or
performance; or information about the terms and conditions of the
use of the work, sound recording or performance; and any number
or code that represent such information, when any of these items is
attached to a copy of the work, sound recording or fixation of
performance or appears in conjunction with the communication to the
public of a work, sound recording or performance."
Section 7. the Chapter Title of Chapter VII, Part IV, the Law on Copyright, is
hereby amended to read as follows:
"CHAPTER VII
TRANSFER, ASSIGNMENT AND LICENSING OF COPYRIGHT"
Section 8. Section 180 of Republic Act No. 8293 is hereby amended to read
as follows:
"SEC. 180. Rights of Assignee or Licensee. – 180.1. the copyright
may be assigned or licensed in whole or in part. Within the scope of
the assignment or license, the assignee or licensee is entitled to all
the rights and remedies which the assignor or licensor had with
respect to the copyright.
"180.2. the copyright is not deemed assigned or licensed inter
vivos, in whole or in part, unless there is a written indication of such
intention.
"x x x
"180.4. Any exclusivity in the economic rights in a work may be
exclusively licensed. Within the scope of the exclusive license, the
licensee is entitled to all the rights and remedies which the licensor
had with respect to the copyright.
"180.5. the copyright owner has the right to regular statements of
accounts from the assignee or the licensee with regard to assigned
or licensed work."
Section 9. Section 181 of Republic Act No. 8293 is hereby amended to read
as follows:
"SEC. 181. Copyright and Material Object. – the copyright is distinct
from the property in the material object subject to it. Consequently,
the transfer, assignment or licensing of the copyright shall not itself
constitute a transfer of the material object. Nor shall a transfer or
assignment of the sole copy or of one or several copies of the work
imply transfer, assignment or licensing of the copyright. (Sec. 16,
P.D. No. 49)"
Section 10. Section 183 of Republic Act No. 8293 is hereby amended to read
as follows:
"SEC. 183. Designation of Society. – the owners of copyright and
related rights or their heirs may designate a society of artists, writers,
composers and other right-holders to collectively manage their
economic or moral rights on their behalf. For the said societies to
enforce the rights of their members, they shall first secure the
necessary accreditation from the Intellectual Property Office. (Sec.
32, P.D. No. 49a)"
Section 11. Section 184.1. of Republic Act No. 8293 is hereby amended to
read as follows:
"SEC. 184. Limitations on Copyright. – x x x
"(1) the reproduction or distribution of published articles or materials
in a specialized format exclusively for the use of the blind, visually-
and reading-impaired persons: Provided, That such copies and
distribution shall be made on a nonprofit basis and shall indicate the
copyright owner and the date of the original publication."
Section 12. Section 185.1. of Republic Act No. 8293 is hereby amended to
read as follows:
"SEC. 185. Fair Use of a Copyrighted Work. – 185.1. the fair use of
a copyrighted work for criticism, comment, news reporting, teaching
including limited number of copies for classroom use, scholarship,
research, and similar purposes is not an infringement of copyright.
Decompilation, which is understood here to be the reproduction of
the code and translation of the forms of a computer program to
achieve the interoperability of an independently created computer
program with other programs may also constitute fair use under the
criteria established by this section, to the extent that such
decompilation is done for the purpose of obtaining the information
necessary to achieve such interoperability.
"x x x."
Section 13. Section 188.1. of Republic Act No. 8293 is hereby amended to
read as follows:
"SEC. 188. Reprographic Reproduction by Libraries. – 188.1.
Notwithstanding the provisions of Subsection 177.1., any library or
archive whose activities are not for profit may, without the
authorization of the author or copyright owner, make a limited
number of copies of the work, as may be necessary for such
institutions to fulfill their mandate, by reprographic reproduction:
"x x x
"(c) Where the making of such limited copies is in order to preserve
and, if necessary in the event that it is lost, destroyed or rendered
unusable, replace a copy, or to replace, in the permanent collection
of another similar library or archive, a copy which has been lost,
destroyed or rendered unusable and copies are not available with
the publisher."
Section 14. Sections 190.1. and 190.2. of Republic Act No. 8293 are deleted
in their entirety.
Section 15. Section 190.3. of Republic Act No. 8293 is hereby renumbered
and amended as the sole provision under Section 190 to read as follows:
"SEC 190. Importation and Exportation of Infringing Materials. –
Subject to the approval of the Secretary of Finance, the
Commissioner of Customs is hereby empowered to make rules and
regulations for preventing the importation or exportation of infringing
articles prohibited under Part IV of this Act and under relevant
treaties and conventions to which the Philippines may be a party and
for seizing and condemning and disposing of the same in case they
are discovered after they have been imported or before they are
exported. (Sec. 30, P.D. No. 49)"
Section 16. Section 191 of Republic Act No. 8293 is hereby amended to read
as follows:
"SEC 191. Deposit and Notice of Deposit with the National Library
and the Supreme Court Library. – At any time during the subsistence
of the copyright, the owner of the copyright or of any exclusive right
in the work may, for the purpose of completing the records of the
National Library and the Supreme Court Library, register and deposit
with them, by personal delivery or by registered mail, two (2)
complete copies or reproductions of the work in such form as the
 Directors of the said libraries may prescribe in accordance with
regulations: Provided, That only works in the field of law shall be
deposited with the Supreme Court Library. Such registration and
deposit is not a condition of copyright protection."
Section 17. Section 198 of Republic Act No. 8293 is hereby amended to read
as follows:
"SEC. 198. Term of Moral Rights. – 198.1. the right of an author
under Section 193.1. shall last during the lifetime of the author and
in perpetuity after his death while the rights under Sections 193.2.
193.3. and 193.4. shall be coterminous with the economic rights, the
moral rights shall not be assignable or subject to license. the person
or persons to be charged with the posthumous enforcement of these
rights shall be named in a written instrument which shall be filed with
the National Library. In default of such person or persons, such
enforcement shall devolve upon either the author’s heirs, and in
default of the heirs, the Director of the National Library."
Section 18. Section 203 of Republic Act No. 8293 is hereby amended to read
as follows;
"x x x
"203.2. the right of authorizing the direct or indirect reproduction of
their performances fixed in sound recordings or audiovisual works or
fixations in any manner or form;
"203.3. Subject to the provisions of Section 206, the right of
authorizing the first public distribution of the original and copies of
their performance fixed in sound recordings or audiovisual works or
fixations through sale or rental of other forms of transfer of
ownership;
"203.4. the right of authorizing the commercial rental to the public of
the original and copies of their performances fixed in sound
recordings or audiovisual works or fixations, even after distribution of
them by, or pursuant to the authorization by the performer; and
"203.5. the right of authorizing the making available to the public of
their performances fixed in sound recordings or audiovisual works or
fixations, by wire or wireless means, in such a way that members of
the public may access them from a place and time individually
chosen by them. (Sec. 42, P.D. No. 49A)."
Section 19. Section 204.1. of Republic Act No. 8293 is hereby amended to
read as follows;
"204.1. Independently of a performer’s economic rights, the
performer shall, as regards his live aural performances or
performances fixed in sound recordings or in audiovisual works or
fixations, have the right to claim to be identified as the performer of
his performances, except where the omission is dictated by the
manner of the use of the performance, and to object to any distortion,
mutilation or other modification of his performances that would be
prejudicial to his reputation."
Section 20. Section 208 of Republic Act No. 8293 is hereby amended to read
as follows:
"SEC. 208. Scope of Right. – x x x
"208.4. the right to authorize the making available to the public of
their sound recordings in such a way that members of the public may
access the sound recording from a place and at a time individually
chosen or selected by them, as well as other transmissions of a
sound recording with like effect."
Section 21. Section 212 of Republic Act No. 8293 is hereby amended to read
as follows:
"SEC. 212. Limitations on Rights. – the provisions of Chapter VIII
shall apply mutatis mutandis to the rights of performers, producers of
sound recordings and broadcasting organizations."
Section 22. Section 216 of Republic Act No. 8293 is hereby amended to read
as follows:
"SEC. 216. Infringement. – A person infringes a right protected under
this Act when one:
"(a) Directly commits an infringement;
 "(b) Benefits from the infringing activity of another person
who commits an infringement if the person benefiting has
been given notice of the infringing activity and has the right
and ability to control the activities of the other person;
"(c) With knowledge of infringing activity, induces, causes
or materially contributes to the infringing conduct of
another.
"216.1. Remedies for Infringement. – Any person infringing a right
protected under this law shall be liable:
"x x x
"(b) To pay to the copyright proprietor or his assigns or heirs
such actual damages, including legal costs and other
expenses, as he may have incurred due to the infringement
as well as the profits the infringer may have made due to
such infringement, and in proving profits the plaintiff shall
be required to prove sales only and the defendant shall be
required to prove every element of cost which he claims, or,
in lieu of actual damages and profits, such damages which
to the court shall appear to be just and shall not be regarded
as penalty: Provided, That the amount of damages to be
awarded shall be doubled against any person who:
"(i) Circumvents effective technological measures;
or
"(ii) Having reasonable grounds to know that it will
induce, enable, facilitate or conceal the
infringement, remove or alter any electronic rights
management information from a copy of a work,
sound recording, or fixation of a performance, or
distribute, import for distribution, broadcast, or
communicate to the public works or copies of
works without authority, knowing that electronic
rights management information has been removed
or altered without authority.
"x x x
"The copyright owner may elect, at any time before final judgment is
rendered, to recover instead of actual damages and profits, an award
of statutory damages for all infringements involved in an action in a
sum equivalent to the filing fee of the infringement action but not less
than Fifty thousand pesos (Php50,000.00). In awarding statutory
damages, the court may consider the following factors:
"(1) the nature and purpose of the infringing act;
"(2) the flagrancy of the infringement;
"(3) Whether the defendant acted in bad faith;
"(4) the need for deterrence;
"(5) Any loss that the plaintiff has suffered or is likely to
suffer by reason of the infringement; and
"(6) Any benefit shown to have accrued to the defendant by
reason of the infringement.
"In case the infringer was not aware and had no reason to believe
that his acts constitute an infringement of copyright, the court in its
discretion may reduce the award of statutory damages to a sum of
not more than Ten thousand pesos (Php10,000.00): Provided, That
the amount of damages to be awarded shall be doubled against any
person who:
"(i) Circumvents effective technological measures; or
"(ii) Having reasonable grounds to know that it will induce,
enable, facilitate or conceal the infringement, remove or
alter any electronic rights management information from a
copy of a work, sound recording, or fixation of a
performance, or distribute, import for distribution,
broadcast, or communicate to the public works or copies of
works without authority, knowing that electronic rights
management information has been removed or altered
without authority.
"x x x
 "216.2. In an infringement action, the court shall also have the power
to order the seizure and impounding of any article which may serve
as evidence in the court proceedings, in accordance with the rules
on search and seizure involving violations of intellectual property
rights issued by the Supreme Court. (Sec. 28, P.D. No. 49a)
"The foregoing shall not preclude an independent suit for relief by the
injured party by way of damages, injunction, accounts or otherwise."
Section 23. Section 217.2. of Republic Act No. 8293 hereby amended to read
as follows:
"217.2. In determining the number of years of imprisonment and the
amount of fine, the court shall consider the value of the infringing
materials that the defendant has produced or manufactured and the
damage that the copyright owner has suffered by reason of the
infringement: Provided, That the respective maximum penalty stated
in Section 217.1. (a), (b) and (c) herein for the first, second, third and
subsequent offense, shall be imposed when the infringement is
committed by:
"(a) the circumvention of effective technological measures;
"(b) the removal or alteration of any electronic rights
management information from a copy of a work, sound
recording, or fixation of a performance, by a person,
knowingly and without authority; or
"(c) the distribution, importation for distribution, broadcast,
or communication to the public of works or copies of works,
by a person without authority, knowing that electronic rights
management information has been removed or altered
without authority."
Section 24. Section 218.1. of Republic Act No. 8293 is hereby amended to
read as follows:
"SEC. 218. Affidavit Evidence. – x x x
"(c) the copy of the work or other subject matter annexed thereto is
a true copy thereof.
"The affidavit shall be admitted in evidence in any proceedings under
this Chapter and shall be prima facie proof of the matters therein
stated until the contrary is proved, and the court before which such
affidavit is produced shall assume that the affidavit was made by or
on behalf of the owner of the copyright."
Section 25. A new Section 220A shall be inserted after Section 220.2. of
Republic Act No. 8293 to read as follows:
"SEC. 220A. Disclosure of Information. – Where any article or its
packaging or an implement for making it is seized or detained under
a valid search and seizure under this Act is, or is reasonably
suspected to be, by an authorized enforcement officer, in violation of
this Act, the said officer, shall, wherever reasonably practicable,
notify the owner of the copyright in question or his authorized agent
of the seizure or detention, as the case may be."
Section 26. Section 226 of Republic Act No. 8293 is hereby amended to read
as follows:
"SEC. 226. Damages. – No damages may be recovered under this
Act after the lapse of four (4) years from the time the cause of action
arose. (Sec. 58, P.D. No. 49)."
Section 27. Chapter XX of Republic Act No. 8293 is hereby amended by
adding a new section at the end thereof to be denominated as Section 230, to
read as follows:
"SEC. 230. Adoption of Intellectual Property (IP) Policies. – Schools
and universities shall adopt intellectual property policies that would
govern the use and creation of intellectual property with the purpose
of safeguarding the intellectual creations of the learning institution
and its employees, and adopting locally-established industry practice
fair use guidelines. These policies may be developed in relation to
licensing agreements entered into by the learning institution with a
collective licensing organization."
Section 28. Section 230 of Republic Act No. 8293 is hereby renumbered as
Section 231, and all succeeding sections of the same Act are hereby
renumbered accordingly.
Section 29. Implementing Rules and Regulations. – Within one hundred
eighty (180) days from the effectivity of this Act, the Intellectual Property
Office, in consultation with the National Book Development Board, the
National Library, the Supreme Court Library and other relevant agencies, shall
promulgate the rules and regulations necessary to effectively implement the
provisions of this Act.

Section 30. Repealing Clause. – All laws, decrees, executive orders,

issuances or regulations inconsistent with the provisions of this Act are hereby
revised or amended accordingly.

Section 31. Separability Clause. – If any part of this Act is declared

unconstitutional or invalid, such parts or provisions thereof not so declared
shall remain valid and subsisting.

Section 32. Effectivity Clause. – This Act shall take effect fifteen (15) days
after its publication in at least two (2) newspapers of general circulation.
WILSON ONG CHING KIAN CHUAN, petitioner, vs. HON. COURT OF
APPEALS and LORENZO TAN, respondents.
DECISION
QUISUMBING, J.:
This petition for review[1]seeks to annul the decision[2] dated August 27, 1997
of the Court of Appeals which set aside the resolutions[3] dated October 13 and
December 15, 1993 as well as the order dated March 1, 1994 of the Regional Trial
Court of Quezon City, Branch 94.[4]
Petitioner Wilson Ong Ching Kian Chuan (Ong), imports vermicelli from China
National Cereals Oils and Foodstuffs Import and Export Corporation, based in
Beijing, China, under the firm name C.K.C. Trading. He repacks it in cellophane
wrappers with a design of two-dragons and the TOWER trademark on the uppermost
portion. Ong acquired a Certificate of Copyright Registration from the National
Library on June 9, 1993 on the said design.
Ong discovered that private respondent Lorenzo Tan repacked his vermicelli he
imports from the same company but based in Qingdao, China in a nearly identical
wrapper. On September 16, 1993, Ong filed against Tan a verified complaint for
infringement of copyright with damages and prayer for temporary restraining order or
writ of preliminary injunction with the Regional Trial Court in Quezon City. Ong
alleged that he was the holder of a Certificate of Copyright Registration over the
cellophane wrapper with the two-dragon design, and that Tan used an identical
wrapper in his business. In his prayer for a preliminary injunction in addition to
damages, he asked that Tan be restrained from using the wrapper. He said he would
post a bond to guarantee the payment of damages resulting from the issuance of the
writ of preliminary injunction.
The trial court issued a temporary restraining order on the same date the
complaint was filed. Tan filed an opposition to Ongs application for a writ of
preliminary injunction with counter-application for the issuance of a similar writ
against Ong. Tan alleged that Ong was not entitled to an injunction. According to Tan,
Ong did not have a clear right over the use of the trademark Pagoda and
Lungkow vermicelli as these were registered in the name of CHINA NATIONAL
CEREALS OIL AND FOODSTUFFS IMPORT AND EXPORT CORPORATION,
SHANDONG CEREALS AND OILS BRANCH (hereafter Ceroilfood Shandong),
based in Qingdao, China. Further, Tan averred that he was the exclusive distributor in
the Philippines of the Pagoda and Lungkow vermicelli and was solely authorized to
use said trademark. He added that Ong merely copied the two-dragon design from
Ceroilfood Shandong which had the Certificates of Registration issued by different
countries. He concluded that Ongs Certificate of Copyright Registration was not valid
for lack of originality.
On September 30, 1993, Ong countered Tans opposition to the issuance of the
writ of preliminary injunction.
On October 13, 1993, the court issued the writ in Ongs favor upon his filing
of a P100,000.00 bond.[5]
Tan filed a motion to dissolve the writ of preliminary injunction, but the trial
court denied it on December 15, 1993.[6] The motion for reconsideration was also
denied on March 1, 1994.
Tan elevated the case to the Court of Appeals via a special civil action
for certiorari with a prayer for the issuance of a TRO and/or writ of preliminary
injunction. Ong filed an opposition to Tans prayer for an issuance of TRO and/or writ
of preliminary injunction on the ground that the trial court did not commit a grave
abuse of discretion in issuing the writ in his favor.
After oral argument, the Court of Appeals rendered a decision on August 8,
1994, setting aside the trial courts order. It decreed:
WHEREFORE, the petition is GIVEN DUE COURSE, and GRANTED. The order
dated October 13, 1993 and related orders, as well as the writ of preliminary injunction
issued by the respondent court, are SET ASIDE as issued with grave abuse of
discretion. No costs.
SO ORDERED.[7]
Ong filed a motion for reconsideration and on January 3, 1995, the Court of
Appeals modified its August 8, 1994 order as follows:
WHEREFORE the phrase the order dated October 13, 1993 and related orders, as well
as the writ of preliminary injunction issued by the respondent court, are SET ASIDE
as issued with grave abuse of discretion is hereby deleted in our resolution dated 08
August 1994. In all other respects, said resolution must be maintained.
However, let a writ of preliminary injunction be issued enjoining the herein
respondents and any and all persons acting for and in their behalf from enforcing
and/or implementing the Writ of Preliminary Injunction issued on October 15, 1993
pursuant to the Resolution dated October 13, 1993 of the PUBLIC RESPONDENT in
Civil Case No. Q-93-17628 entitled WILSON ONG CHING KIAN CHUAN, ETC.
vs. LORENZO TAN, ETC. upon petitioners filing of a bond of P200,000.00.
The Branch Clerk of Court of the RTC, Branch 94, Quezon City is directed to elevate
the records of Civil Case No. 293-17128 within TEN (10) DAYS from notice.
The parties are given THIRTY (30) DAYS from notice to file their memorandum or
any pertinent manifestation on the matter, after which the case shall be considered
submitted for decision.
SO ORDERED.[8]
Pursuant to the Court of Appeals resolution on January 16, 1996, the parties
submitted their memoranda. On August 27, 1997, the appellate court promulgated its
decision, decreeing as follows:
WHEREFORE, the resolutions dated October 13, 1993 and December 15, 1993 as
well as the order dated March 1, 1994 - all in Civil Case No. Q-93-17628 are hereby
SET ASIDE and our injunction heretofore issued made permanent.
IT IS SO ORDERED.[9]
On October 17, 1997, Ong filed the instant petition for review, claiming that the
Court of Appeals committed grave and serious errors tantamount to acting with grave
abuse of discretion and/or acting without or in excess of its jurisdiction:
I. WHEN IT ISSUED A PERMANENT PRELIMINARY INJUNCTION
IN FAVOR OF THE PRIVATE RESPONDENT WHEN THE
LATTERS RIGHT TO SUCH A RELIEF IS NOT CLEAR,
DOUBTFUL AND HAS NO LEGAL OR FACTUAL BASIS.
A. CERTIFICATE OF COPYRIGHT REGISTRATION JUSTIFY
ISSUANCE OF WRIT OF PRELIMINARY INJUNCTION UNDER
P.D. NO. 49.
B. ISSUANCE OF PRELIMINARY INJUNCTION MUST BE BASED
ON CLEAR AND UNMISTAKABLE RIGHT WHICH PETITIONER
HAD AND WHICH RIGHT WAS INVADED BY THE PRIVATE
RESPONDENT.
C. COURT OF APPEALS DECISION OF AUGUST 8, 1994 AND ITS
RESOLUTION OF JANUARY 3, 1995 RESULTS IN CONFUSION.
II. BY INTERFERING WITH THE JUDICIAL DISCRETION OF THE
TRIAL COURT.
A. RESPONDENT COURT OF APPEALS INTERFERENCE WITH
THE DISCRETION OF TRIAL COURT CONSTITUTES GRAVE
ABUSE OF DISCRETION.
III. BY ISSUING A WRIT OF PRELIMINARY INJUNCTION IN
FAVOR OF THE PRIVATE RESPONDENT AND
DISREGARDING THE WRIT OF PRELIMINARY INJUNCTION
ISSUED BY THE TRIAL COURT WHOM (SIC), UNDER THE
JANUARY 13, 1995 RESOLUTION OF RESPONDENT COURT
OF APPEALS, WAS JUDICIALLY HELD NOT TO HAVE
COMMITTED ANY GRAVE ABUSE OF DISCRETION IN THE
ISSUANCE OF THE OCTOBER 13, 1993 AND RELATED
ORDERS.
A. ISSUANCE OF WRIT OF PRELIMINARY INJUNCTION
ADDRESSED TO THE SOUND DISCRETION OF THE TRIAL
COURT.
IV. WHEN IT MADE ITS OWN FINDINGS AND CONCLUSIONS,
PRE-EMPTING THE TRIAL COURT AND PRE-JUDGING THE
CASE, THUS LEAVING THE TRIAL COURT WITH NOTHING
TO RULE UPON.
A. COURT OF APPEALS PREJUDGED THE CASE REMANDED TO
THE TRIAL COURT
The issues for our determination are: Was the issuance of the writ of preliminary
injunction proper? Was there grave abuse of discretion committed by the Court of
Appeals when it set aside the order of the trial court, then issued a judgment touching
on the merits?
Petitioner avers that the CA erred in issuing a preliminary injunction in private
respondents favor. He says, firstly, that he is more entitled to it. He states that as
holder of the Certificate of Copyright Registration of the twin-dragon design, he has
the protection of P.D. No. 49.[10] Said law allows an injunction in case of infringement.
Petitioner asserts that private respondent has no registered copyright and merely relies
on the trademark of his principal abroad, which insofar as Philippine laws is
concerned, cannot prevail over the petitioners copyright.
Private respondent, for his part, avers that petitioner has no clear right over the
use of the copyrighted wrapper since the PAGODA trademark and label were first
adopted and used and have been duly registered by Ceroilfood Shandong not only in
China but in nearly 20 countries and regions worldwide. Petitioner was not the
original creator of the label, but merely copied the design of Ceroilfood
Shandong. Private respondent presented copies of the certificates of copyright
registration in the name of Ceroilfood Shandong issued by at least twenty countries
and regions worldwide which although unauthenticated are, according to him,
sufficient to provide a sampling of the evidence needed in the determination of the
grant of preliminary injunction.[11] Private respondent alleges, that the trademark
PAGODA BRAND was registered in China on October 31, 1979 [12] while the
trademark LUNGKOW VERMICELLI WITH TWO-DRAGON DEVICE was
registered on August 15, 1985.[13]
To resolve this controversy, we have to return to basics. A person to be entitled
to a copyright must be the original creator of the work. He must have created it by his
own skill, labor and judgment without directly copying or evasively imitating the
work of another.[14] The grant of preliminary injunction in a case rests on the sound
discretion of the court with the caveat that it should be made with extreme
caution.[15] Its grant depends chiefly on the extent of doubt on the validity of the
copyright, existence of infringement, and the damages sustained by such
infringement.[16] In our view, the copies of the certificates of copyright registered in
the name of Ceroilfood Shandong sufficiently raise reasonable doubt. With such a
doubt, the preliminary injunction is unavailing.[17] In Medina vs. City Sheriff, Manila,
276 SCRA 133, 139 (1997), where the complainants title was disputed, we held that
injunction was not proper.
Petitioner Ong argues that the Court of Appeals erred and contradicted itself in
its January 3, 1995 Resolution, where it deleted the phrase the order dated October
13, 1993 and related orders, as well as the writ of preliminary injunction issued by
the respondent court, are SET ASIDE as issued with grave abuse of discretion in its
August 8, 1994 decision, and at the same time issued a writ of preliminary injunction
in Tans favor.
of proof of a legal right and the injury sustained by the plaintiff, an order of the trial
court granting the issuance of an injunctive writ will be set aside, for having been
issued with grave abuse of discretion. Conformably, there was no abuse of discretion
by the Court of Appeals when it issued its own order to restrain the enforcement of
the preliminary injunction issued by the trial court.
Finally, we note that the complaint initially filed with the RTC was for
infringement of copyright. The trial courts resolution subject of Tans petition under
Rule 65 before the CA concerns the correctness of the grant of the writ of preliminary
injunction. The only issue brought before the CA involved the grave abuse of
discretion allegedly committed by the trial court in granting the writ of preliminary
injunction. The Court of Appeals in declaring that the wrapper of petitioner is a copy
of Ceroilfood Shandongs wrapper went beyond that issue and touched on the merits
of the infringement case, which remains to be decided by the trial court. [19] In our
view, it was premature for the Court of Appeals to declare that the design of petitioners
wrapper is a copy of the wrapper allegedly registered by Ceroilfood Shandong. That
matter remains for decision after appropriate proceedings at the trial court.
WHEREFORE, the instant petition is PARTIALLY GRANTED. The prayer
for a writ of preliminary injunction to prohibit Tan from using the cellophane wrapper
with two-dragon device is denied, but the finding of the respondent appellate court
that Ongs copyrighted wrapper is a copy of that of Ceroilfood Shandong is SET
ASIDE for being premature. The Regional Trial Court of Quezon City, Branch 94, is
directed to proceed with the trial to determine the merits of Civil Case No. 33779
expeditiously. Let the records of this case be REMANDED to said trial court
promptly.
No pronouncement as to costs.

Ongs claim (that the Court of Appeals in deleting the aforequoted phrase in the SO ORDERED.
August 8, 1994 decision abandoned its earlier finding of grave abuse of discretion on
the part of the trial court), however, is without logical basis. The appellate court
merely restated in its own words the issue raised in the petition: from a) whether the
RTC committed grave abuse of discretion, to b) whether Tan was entitled to an
injunctive relief. Then it clarified that the relief sought is a prohibition against Ong
and his agents from enforcing the writ of preliminary injunction. Properly understood,
an order enjoining the enforcement of a writ of preliminary injunction issued by the
RTC in a certiorari proceeding under Rule 65 of the Rules of Court effectively sets
aside the RTC order for being issued with grave abuse of discretion.
To be entitled to an injunctive writ, petitioner must show, inter alia, the
existence of a clear and unmistakable right and an urgent and paramount necessity for
the writ to prevent serious damage.[18] From the above discussion, we find that
petitioners right has not been clearly and unmistakably demonstrated. That right is
what is in dispute and has yet to be determined. In Developers Group of Companies,
Inc. vs. Court of Appeals, 219 SCRA 715, 722-723 (1993), we held that in the absence
VENANCIO SAMBAR, doing business under the name and style of CVS
Garment Enterprises, petitioner, vs. LEVI STRAUSS & CO., and
LEVI STRAUSS (PHIL.), INC., respondents.
DECISION
QUISUMBING, J.:
This petition for review on certiorari prays for the reversal of the decision dated
January 30, 1998, of the Court of Appeals in CA-G.R. CV No. 51553. That decision
affirmed the decision in Civil Case No. 88-2220 of the Regional Trial Court, Branch
66, Makati City, making permanent the writ of preliminary injunction, ordering CVS
Garment and Industrial Company (CVSGIC) and petitioner Venancio Sambar to pay
private respondents jointly and solidarily the sum of P50,000 as temperate and
nominal damages, P10,000 as exemplary damages, and P25,000 as attorneys fees and
litigation costs, and ordering the Director of the National Library to cancel Copyright
Registration No. 1-1998 in the name of Venancio Sambar.
The facts are as follows:
On September 28, 1987, private respondents, through a letter from their legal
officer, demanded that CVS Garment Enterprises (CVSGE) desist from using their
stitched arcuate design on the Europress jeans which CVSGE advertised in the Manila
Bulletin.
Atty. Benjamin 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.
Thereafter, private respondents filed a complaint against Sambar, doing
business under the name and style of CVSGE. Private respondents also impleaded the
Director of the National Library. Summons was sent to Sambar in his business address
at 161-B Iriga corner Retiro, La Loma, Quezon City.
Atty. Gruba claimed that he erroneously received the original summons as he
mistook it as addressed to his client, CVSGIC. He returned the summons and the
pleadings and manifested in court that CVSGE, which was formerly doing business
in the premises, already stopped operation and CVSGIC took over CVSGEs
occupation of the premises. He also claimed he did not know the whereabouts of
Sambar, the alleged owner of CVSGE.
Thereafter, private respondents amended their complaint to include
CVSGIC. When private respondents learned the whereabouts of Sambar and CVSGE,
the case was revived.
Private respondents alleged in their complaint that Levi Strauss and Co.
(LS&Co.), an internationally known clothing manufacturer, owns the arcuate design
trademark which was registered under U.S. Trademark Registration No. 404, 248 on
November 16, 1943, and in the Principal Register of trademarks with the Philippine
Patent Office under Certificate of Registration No. 20240 issued on October 8, 1973;
that through a Trademark Technical Data and Technical Assistance Agreement with
Levi Strauss (Phil.) Inc. (LSPI) in 1972, LS&Co. granted LSPI a non-exclusive
license to use the arcuate trademark in its manufacture and sale of Levis pants, jackets
and shirts in the Philippines; that in 1983, LS&Co. also appointed LSPI as its agent
and attorney-in-fact to protect its trademark in the Philippines; and that sometime in
1987, CVSGIC and Venancio Sambar, without the consent and authority of private
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 back pockets bearing a design
similar to the arcuate trademark of private respondents, thereby causing confusion on
the buying public, prejudicial to private respondents goodwill and property right.
In its answer, CVSGIC admitted it manufactured, sold and advertised and was
still manufacturing and selling denim pants under the brand name of Europress,
bearing a back pocket design of two double arcs meeting in the middle. However, it
denied that there was infringement or unfair competition because the display rooms
of department stores where Levis and Europress jeans were sold, were distinctively
segregated by billboards and other modes of advertisement. CVSGIC avers that the
public would not be confused on the ownership of such known trademark as Levis,
Jag, Europress, etc.. Also, CVSGIC claimed that it had its own original arcuate design,
as evidenced by Copyright Registration No. 1-1998, which was very different and
distinct from Levis design. CVSGIC prayed for actual, moral and exemplary damages
by way of counterclaim.
Petitioner Venancio Sambar filed a separate answer. He denied he was
connected with CVSGIC. He admitted that Copyright Registration No. 1-1998 was
issued to him, but he denied using it. He also said he did not authorize anyone to use
the copyrighted design. He counterclaimed for moral and exemplary damages and
payment of attorneys fees.
After hearing, the trial court issued a writ of preliminary injunction enjoining
CVSGIC and petitioner from manufacturing, advertising and selling pants with the
arcuate design on their back pockets.CVSGIC and petitioner did not appear during the
October 13 and 27, 1993 hearings, when they were to present evidence. Consequently,
the trial court ruled that they waived their right to present evidence.
On May 3, 1995, the trial court rendered its decision. The dispositive portion
reads:
IN VIEW OF THE FOREGOING, judgment is hereby rendered:
a) making the writ of preliminary injunction permanent;
b) ordering the defendants CVS Garment and Industrial Company and Venancio
Sambar to pay the plaintiffs jointly and solidarily the sum of P50,000.00 as temperate
and nominal damages, the sum of P10,000.00 as exemplary damages, and the sum of
P25,000.00 as attorneys fees and litigation expenses and to pay the costs.
SO ORDERED.[1]
Private respondents moved for a reconsideration praying for the cancellation of
petitioners copyright registration. The trial court granted reconsideration in its July
14, 1995 order, thus:
IN VIEW OF THE FOREGOING, judgment is hereby rendered:
a) making the writ of preliminary injunction permanent;
b) ordering the defendants CVS Garment and Industrial Company and Venancio
Sambar to pay the plaintiffs jointly and solidarily the sum of P50,000.00 as temperate
and nominal damages, the sum of P10,000.00 as exemplary damages, and the sum of
P25,000.00 as attorneys fees and litigation expenses and to pay the costs;
c) ordering the Director of the National Library to cancel the Copyright Registration
No. 1-1998 issued in the name of Venancio Sambar.[2]
Petitioner appealed to the Court of Appeals which on January 30, 1998 decided
in favor of private respondents as follows:
WHEREFORE, the judgment appealed from is AFFIRMED in toto.
SO ORDERED.[3]
In this instant petition, petitioner avers that the Court of Appeals erred in:
I. ...RULING THAT THERE WAS AN INFRINGEMENT OF
RESPONDENTS ARCUATE MARK.
II. ...RULING THAT PETITIONER IS JOINTLY AND SOLIDARILY
LIABLE WITH CVS GARMENTS INDUSTRIAL
CORPORATION FOR INFRINGEMENT OF RESPONDENTS
ARCUATE MARK.
III. ...IN ORDERING, THERE BEING NO INFRINGEMENT OR
UNFAIR COMPETITION, THE AWARD OF DAMAGES AND
CANCELLATION OF COPYRIGHT REGISTRATION NO. 1-1998
ISSUED IN THE NAME OF PETITIONER.[4]
Briefly, we are asked to resolve the following issues:
1. Did petitioner infringe on private respondents arcuate design?
2. Must we hold petitioner solidarily liable with CVS Garments Industrial
Corporation?
3. Are private respondents entitled to nominal, temperate and exemplary
damages and cancellation of petitioners copyright?
On the first issue, petitioner claims that he did not infringe on private
respondents arcuate design because there was no colorable imitation which deceived
or confused the public. He cites Emerald Garment Manufacturing Corporation vs.
Court of Appeals, G.R. No. 100098, 251 SCRA 600 (1995), as authority. He disagreed
with the Court of Appeals that there were confusing similarities between Levis and
Europress arcuate designs, despite the trial courts observation of differences in
them. Petitioner maintains that although the backpocket designs had similarities, the
public was not confused because Levis jeans had other marks not found in Europress
jeans. Further, he says Levis long history and popularity made its trademark easily
identifiable by the public.
In its comment, private respondents aver that the Court of Appeals did not err
in ruling that there was infringement in this case. The backpocket design of Europress
jeans, a double arc intersecting in the middle was the same as Levis mark, also a
double arc intersecting at the center. Although the trial court found differences in the
two designs, these differences were not noticeable. Further, private respondents said,
infringement of trademark did not require exact similarity. Colorable imitation
enough to cause confusion among the public, was sufficient for a trademark to be
infringed. Private respondents explained that in a market research they conducted with
600 respondents, the result showed that the public was confused by Europress
trademark vis the Levis trademark.
We find that the first issue raised by petitioner is factual. The basic rule is that
factual questions are beyond the province of this Court in a petition for
review. Although there are exceptions to this rule, this case is not one of
them.[5] Hence, we find no reason to disturb the findings of the Court of Appeals that
Europress use of the arcuate design was an infringement of the Levis design.
On the second issue, petitioner claims that private respondents did not show that
he was connected with CVSGIC, nor did they prove his specific acts of infringement
to make him liable for damages.Again, this is a factual matter and factual findings of
the trial court, concurred in by the Court of Appeals, are final and binding on this
Court.[6] Both the courts below found that petitioner had a copyright over Europress
arcuate design and that he consented to the use of said design by CVSGIC. We are
bound by this finding, especially in the absence of a showing that it was tainted with
arbitrariness or palpable error.[7] It must be stressed that it was immaterial whether or
not petitioner was connected with CVSGIC. What is relevant is that petitioner had a
copyright over the design and that he allowed the use of the same by CVSGIC.
Petitioner also contends that the Court of Appeals erred when it said that he had
the burden to prove that he was not connected with CVSGIC and that he did not
authorize anyone to use his copyrighted design. According to petitioner, these are
important elements of private respondents cause of action against him, hence, private
respondents had the ultimate burden of proof.
Pertinent is Section 1, Rule 131 of the Rules of Court[8] which provides that the
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 cases, 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.[9]
Petitioners defense in this case was an affirmative defense. He did not deny that
private respondents owned the arcuate trademark nor that CVSGIC used on its
products a similar arcuate design. What he averred was that although he owned the
copyright on the Europress arcuate design, he did not allow CVSGIC to use it. He also
said he was not connected with CVSGIC. These were not alleged by private
respondents in their pleadings, and petitioner therefore had the burden to prove these.
Lastly, are private respondents entitled to nominal, temperate and exemplary
damages and cancellation of petitioners copyright?
Petitioner insists that he had not infringed on the arcuate trademark, hence, there
was no basis for nominal and temperate damages. Also, an award of nominal damages
precludes an award of temperate damages. He cites Ventanilla vs. Centeno, G.R. No.
L-14333, 1 SCRA 215 (1961) on this. Thus, he contends, assuming arguendo that
there was infringement, the Court of Appeals still erred in awarding both nominal and
temperate damages.
Petitioner likewise said that the grant of exemplary damages was inconsistent
with the trial courts finding that the design of Europress jeans was not similar to Levis
design and that no pecuniary loss was suffered by respondents to entitle them to such
damages.
Lastly, petitioner maintains that as Europress arcuate design is not a copy of that
of Levis, citing the trial courts findings that although there are similarities, there are
also differences in the two designs, cancellation of his copyright was not justified.
On this matter, private respondents assert that the lower courts found that there
was infringement and Levis was entitled to damages based on Sections 22 and 23 of
RA No. 166 otherwise known as the Trade Mark Law,[10] as amended, which was the
law then governing. Said sections define infringement and prescribe the remedies
therefor. Further, private respondents aver it was misleading for petitioner to claim
that the trial court ruled that private respondents did not suffer pecuniary loss,
suggesting that the award of damages was improper. According to the private
respondents, the trial court did not make any such ruling. It simply stated that there
was no evidence that Levis had suffered decline in its sales because of the use of the
arcuate design by Europress jeans. They offer that while there may be no direct proof
that they suffered a decline in sales, damages may still be measured based on a
reasonable percentage of the gross sales of the respondents, pursuant to Section 23 of
the Trademark law.[11]
Finally, regarding the cancellation of petitioners copyright, private respondents
deny that the trial court ruled that the arcuate design of Europress jeans was not the
same as Levis arcuate design jeans. On the contrary, the trial court expressly ruled
that there was similarity. The cancellation of petitioners copyright was justified
because petitioners copyright can not prevail over respondents registration in the
Principal Register of Bureau of Patents, Trademarks, and Technology
Transfer. According to private respondents, the essence of copyright registration is
originality and a copied design is inherently non-copyrightable. They insist that
registration does not confer originality upon a copycat version of a prior design.
From the foregoing discussion, it is clear that the matters raised by petitioner in
relation to the last issue are purely factual, except the matter of nominal and temperate
damages. Petitioner claims that damages are not due private respondents and his
copyright should not be cancelled because he had not infringed on Levis
trademark. Both the trial court and the Court of Appeals found there was
infringement. Thus, the award of damages and cancellation of petitioners copyright
are appropriate.[12] Award of damages is clearly provided in Section 23,[13] while
cancellation of petitioners copyright finds basis on the fact that the design was a mere
copy of that of private 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.[14]
However, we agree with petitioner that it was error for the Court of Appeals to
affirm the award of nominal damages combined with temperate damages[15] by the
Regional Trial Court of Makati. 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.[16] We find that the award of P50,000.00 as temperate damages fair and
reasonable, considering the circumstances herein as well as the global coverage and
reputation of private respondents Levi Strauss & Company and Levi Strauss (Phil.),
Inc.
 WHEREFORE, the decision dated January 30, 1998, of the Court of Appeals, UNILEVER PHILIPPINES G.R. No. 119280
in CA-G.R. CV No. 51553 AFFIRMING the judgment of the Regional Trial Court of (PRC), INC.,
Makati, Branch 66, dated July 14, 1995, is hereby MODIFIED so that nominal Petitioner, Present:
damages are deleted but the amount of P50,000 is hereby awarded only as
TEMPERATE DAMAGES. In all other respects, said judgment is hereby PUNO, J., Chairperson,
AFFIRMED, to wit: SANDOVAL-GUTIERREZ,
- v e r s u s - CORONA,
a) the writ of preliminary injunction is made permanent;
AZCUNA and GARCIA,* JJ.
b) the defendants CVS Garment and Industrial Company and Venancio
Sambar are ordered also to pay the plaintiffs jointly and solidarily the THE HONORABLE COURT
sum of P10,000.00 as exemplary damages, and the sum of P25,000.00 OF APPEALS and PROCTER
as attorneys fees and litigation expenses, and to pay the costs; and AND GAMBLE PHILIPPINES,
INC.,
c) the Director of the National Library is ordered to cancel the Copyright Respondents. Promulgated:
Registration No. 1-1998 issued in the name of Venancio Sambar.
August 10,
SO ORDERED.
2006

x-----------------------------------------x

DECISION

CORONA, J.:

In this petition for review under Rule 45 of the Rules of Court,

petitioner assails the February 24, 1995 decision[1] of the Court of
Appeals (CA) in CA-G.R. SP No. 35242 entitled Unilever Philippines
(PRC), Inc. v. Honorable Fernando V. Gorospe, Jr. and Procter and
Gamble Philippines, Inc. (P&GP) which affirmed the issuance by the
court a quo of a writ of preliminary injunction against it. The writ
enjoined petitioner from using and airing, until further orders of the
court, certain television commercials for its laundry products claimed
to be identical or similar to its double tug or tac-tac key visual.[2]

Petitioner alleges that the writ of preliminary injunction was

issued by the trial court (and affirmed by the CA) without any evidence
of private respondents clear and unmistakable right to the
writ. Petitioner further contends that the preliminary injunction
issued against it already disposed of the main case without trial, thus
denying petitioner of any opportunity to present evidence on its behalf.
The antecedents show that on August 24, 1994, private respondent
Procter and Gamble Phils., Inc. filed a complaint for injunction with
damages and a prayer for temporary restraining order and/or writ of
preliminary injunction against petitioner Unilever, alleging that:
1.5. As early as 1982, a P&G subsidiary in Italy used
a key visual in the advertisement of its laundry
detergent and bleaching products. This key visual
known as the double-tug or tac-tac demonstration
shows the fabric being held by both hands and
stretched sideways.
1.6. The tac-tac was conceptualized for P&G by the
advertising agency Milano and Gray of Italy in
1982. The tac-tac was used in the same year in an
advertisement entitled All aperto to demonstrate
the effect on fabrics of one of P&GPs products, a
liquid bleach called Ace.
xxxxxxxxx
1.7. Since then, P&G has used the tac-tac key visual
in the advertisement of its products. In fact, in
1986, in Italy, the tac-tac key visual was used in
the television commercial for Ace entitled Kite.
1.8. P&G has used the same distinctive tac-tac key
visual to local consumers in the Philippines.
xxxxxxxxx
1.10. Substantially and materially imitating the
aforesaid tac-tac key visual of P&GP and in
blatant disregard of P&GPs intellectual property
rights, Unilever on 24 July 1993 started airing a 60
second television commercial TVC of its
Breeze Powerwhite laundry product called
Porky. The said TVC included a stretching visual
presentation and sound effects almost [identical]
or substantially similar to P&GPs tac-
tac key visual.
xxxxxxxxx
1.14. On July 15, 1994, P&GP aired in the Philippines,
the same Kite television advertisement it used in
Italy in 1986, merely dubbing the Italian language
with Filipino for the same produce Ace bleaching
liquid which P&GP now markets in the Philippines.
1.15. On August 1, 1994, Unilever filed a Complaint with
the Advertising Board of the Philippines to prevent
P&GP from airing the Kite television
advertisement.[3]
On August 26, 1994, Judge Gorospe issued an order granting
a temporary restraining order and setting it for hearing on September
2, 1994 for Unilever to show cause why the writ of preliminary
injunction should not issue. During the hearing on September 2,
1994, P&GP received Unilevers answer with opposition to preliminary
injunction. P&GP filed its reply to Unilevers opposition to a
preliminary injunction on September 6, 1994.
During the hearing on September 9, 1994,
Judge Gorospe ordered petitioner to submit a sur-rejoinder. P&GP
received Unilevers rejoinder to reply on September 13, 1994. The
following day, on September 14, 1994, P&GP filed its sur-reply to
Unilevers rejoinder.
On September 19, 1994, P&GP received a copy of the order
dated September 16, 1994 ordering the issuance of a writ of
preliminary injunction and fixing a bond of P100,000. On the same
date, P&GP filed the required bond issued by Prudential Guarantee
and Assurance, Inc.
On September 21, 1994, petitioner appealed to the CA
assigning the following errors allegedly committed by the court a
quo, to wit:
PUBLIC RESPONDENT HAD ACTED WITHOUT
OR IN EXCESS OF JURISDICTION AND WITH GRAVE
ABUSE OF DISCRETION AMOUNTING TO LACK OF
JURISDICTION IN ISSUING THE WRIT OF
PRELIMINARY INJUNCTION IN VIOLATION OF THE
RULES ON EVIDENCE AND PROCEDURE,
PARTICULARLY OF SEC. 3 (a), RULE 58 OF THE
 REVISED RULES OF COURT AND OF THE PREVAILING
JURISPRUDENCE.
PUBLIC RESPONDENT IN ISSUING THE VOID
ORDER DATED SEPTEMBER 16, 1994, HAD, IN
EFFECT, ALREADY PREJUDGED THE MERITS OF THE
MAIN CASE.
PUBLIC RESPONDENT HAD ISSUED THE VOID
ORDER ACCORDING RELIEF TO A NON-PARTY IN
CIVIL CASE NO. 94-2434 WITHOUT JURISDICTION.
PUBLIC RESPONDENT IN ISSUING THE VOID
ORDER HAD DEPRIVED PETITIONER OF
SUBSTANTIVE AND PROCEDURAL DUE PROCESS;
PUBLIC RESPONDENT HAD FORECLOSED
PETITIONERS RIGHT AND THE OPPORTUNITY TO
CROSS-EXAMINE PROCTERS WITNESSES ABAD AND
HERBOSA.[4]
On February 24, 1995, the CA rendered its decision finding
that Judge Gorospe did not act with grave abuse of discretion in
issuing the disputed order. The petition for certiorari was thus
dismissed for lack of merit.
After a careful perusal of the records, we agree with the CA
and affirm its decision in toto:
Petitioner does not deny that the questioned TV
advertisements are substantially similar to P&GPs double
tug or tac-tac key visual. However, it submits that P&GP is
not entitled to the relief demanded, which is to enjoin
petitioner from airing said TV advertisements, for the
reason that petitioner has Certificates of Copyright
Registration for which advertisements while P&GP has
none with respect to its double-tug or tac-tac key visual. In
other words, it is petitioners contention that P&GP is not
entitled to any protection because it has not registered with
the National Library the very TV commercials which it
claims have been infringed by petitioner.
We disagree. Section 2 of PD 49 stipulates that
the copyright for a work or intellectual creation subsists from
the moment of its creation. Accordingly, the creator
acquires copyright for his work right upon its creation.
Contrary to petitioners contention, the intellectual creators
exercise and enjoyment of copyright for his work and the
protection given by law to him is not contingent or
dependent on any formality or registration. Therefore,
taking the material allegations of paragraphs 1.3 to 1.5
of P&GPsverified Complaint in the context of PD 49, it
cannot be seriously doubted that at least, for purposes of
determining whether preliminary injunction should issue
during the pendency of the case, P&GP is entitled to the
injunctive relief prayed for in its Complaint.
The second ground is likewise not well-taken. As
adverted to earlier, the provisional remedy of preliminary
injunction will not issue unless it is shown in the verified
complaint that plaintiff is probably entitled to the relief
demanded, which consists in whole or in part in restraining
the commission or continuance of the acts complained
of. In view of such requirement, the court has to make a
tentative determination if the right sought to be protected
exists and whether the act against which the writ is to be
directed is violative of such right. Certainly, the courts
determination as to the propriety of issuing the writ cannot
be taken as a prejudgment of the merits of the case
because it is tentative in nature and the writ may be
dissolved during or after the trial if the court finds that
plaintiff was not entitled to it.
xxxxxxxxx
Obviously, the determination made by the court a
quo was only for purposes of preliminary injunction, without
passing upon the merits of the case, which cannot be done
until after a full-blown hearing is conducted.
The third ground is patently unmeritorious. As
alleged in the Complaint P&GP is a subsidiary of Procter
 and Gamble Company (P&G) for which the double tug
or tac-tackey visual was conceptualized or created. In that
capacity, P&GP used the said TV advertisement in the
Philippines to promote its products. As such subsidiary,
P&GP is definitely within the protective mantle of the statute
(Sec. 6, PD 49).
Finally, We find the procedure adopted by the
court a quo to be in order.
The record clearly shows that respondent Judge
followed the (procedure provided for in Section 5, Rule 58,
as amended by BP 224, and Paragraph A(8) of the Interim
Rules). In fact, the court a quo set the incident for hearing
on September 2, 1994, at which date petitioner was ordered
to show cause why the writ should not be issued. Petitioner
filed an Opposition to the application for preliminary
injunction. The same incident was again set for hearing on
September 9, 1994, during which the parties made some
manifestations in support of their respective
positions. Subsequent to such hearing petitioner filed a
Reply to P&GPs Rejoinder to its Opposition. Under the
foregoing circumstances, it is absurd to even suggest that
petitioner was not given its day in court in the matter of the
issuance of the preliminary injunctive relief.
xxxxxxxxx
There was of course extreme urgency for the
court a quo to act on plaintiffs application for preliminary
injunction. The airing of TV commercials is necessarily of
limited duration only. Without such temporary relief, any
permanent injunction against the infringing TV
advertisements of which P&GP may possibly succeed in
getting after the main case is finally adjudicated could be
illusory if by then such advertisements are no longer used
or aired by petitioner. It is therefore not difficult to perceive
the possible irreparable damage which P&GP may suffer if
respondent Judge did not act promptly on its application for
preliminary injunction.[5]
Preliminary injunction is a provisional remedy intended to
provide protection to parties for the preservation of their rights or
interests during the pendency of the principal action.[6] Thus,
Section1, Rule 58 of the Rules of Court provides:
Section 1. Preliminary injunction defined; classes.
A preliminary injunction is an order granted at any stage of
an action or proceeding prior to the judgment or final order,
requiring a party or a court, agency or a person to refrain
from a particular act or acts. It may also require the
performance of a particular act or acts, in which case it shall
be known as a preliminary mandatory injunction.
Injunction is resorted to only when there is a pressing
necessity to avoid injurious consequences which cannot be remedied
under any standard compensation.[7] As correctly ruled by the CA,
there was an extreme urgency to grant the preliminary injunction
prayed for by P&GP considering that TV commercials are aired for a
limited period of time only. In fact, this Court takes note of the fact
that the TV commercial in issue ― the Kite TV advertisement ― is no
longer aired today, more than 10 years after the injunction was
granted on September 16, 1994.
The sole objective of a writ of preliminary injunction is to
preserve the status quo until the merits of the case can be heard
fully.[8] A writ of preliminary injunction is generally based solely on
initial and incomplete evidence.[9] Thus, it was impossible for the
court a quo to fully dispose of the case, as claimed by petitioner,
without all the evidence needed for the full resolution of the same. To
date, the main case still has to be resolved by the trial court.
The issuance of a preliminary injunction rests entirely on the
discretion of the court and is generally not interfered with except in
cases of manifest abuse.[10] There was no such abuse in the case at
bar, especially because petitioner was given all the opportunity to
oppose the application for injunction. The fact was, it failed to
convince the court why the injunction should not be issued. Thus,
in Santos v. Court of Appeals,[11] we held that no grave abuse of
discretion can be attributed to a judge or body issuing a writ of
preliminary injunction where a party has not been deprived of its day
in court as it was heard and it exhaustively presented all its arguments
and defenses.
WHEREFORE, the petition is hereby DENIED.
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.
Upon complaint of petitioners, an information for violation of P.D. No. 49 was
filed against private respondent Zosa together with certain officers of RPN
Channel 9, namely, William Esposo, Felipe Medina, and Casey Francisco, in
the Regional Trial Court of Quezon City where it was docketed as Criminal
Case No. 92-27854 and assigned to Branch 104 thereof. However, private
respondent Zosa sought a review of the resolution of the Assistant City
Prosecutor before the Department of Justice.

On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon

reversed the Assistant City Prosecutor's findings and directed him to move for
MENDOZA, J.: the dismissal of the case against private respondents. 1

This is a petition for certiorari. Petitioners seek to annul the resolution of the Petitioner Joaquin filed a motion for reconsideration, but his motion denied by
Department of Justice, dated August 12, 1992, in Criminal Case No. Q-92- respondent Secretary of Justice on December 3, 1992. Hence, this petition.
27854, entitled "Gabriel Zosa, et al. v. City Prosecutor of Quezon City and Petitioners contend that:
Francisco Joaquin, Jr.," and its resolution, dated December 3, 1992, denying
petitioner Joaquin's motion for reconsideration.
1. The public respondent gravely abused
his discretion amounting to lack of
Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of jurisdiction — when he invoked non-
Copyright No. M922, dated January 28, 1971, of Rhoda and Me, a dating presentation of the master tape as being
game show aired from 1970 to 1977. fatal to the existence of probable cause
to prove infringement, despite the fact
On June 28, 1973, petitioner BJPI submitted to the National Library an that private respondents never raised the
addendum to its certificate of copyright specifying the show's format and style same as a controverted issue.
of presentation.
2. The public respondent gravely abused
On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr., his discretion amounting to lack of
president of BJPI, saw on RPN Channel 9 an episode of It's a Date, which jurisdiction when he arrogated unto
was produced by IXL Productions, Inc. (IXL). On July 18, 1991, he wrote a himself the determination of what is
letter to private respondent Gabriel M. Zosa, president and general manager copyrightable — an issue which is
of IXL, informing Zosa that BJPI had a copyright to Rhoda and Me and exclusively within the jurisdiction of the
demanding that IXL discontinue airing It's a Date. regional trial court to assess in a proper
proceeding.
In a letter, dated July 19, 1991, private respondent Zosa apologized to
petitioner Joaquin and requested a meeting to discuss a possible settlement. Both public and private respondents maintain that petitioners failed to
IXL, however, continued airing It's a Date, prompting petitioner Joaquin to establish the existence of probable cause due to their failure to present the
send a second letter on July 25, 1991 in which he reiterated his demand and copyrighted master videotape of Rhoda and Me. They contend that petitioner
warned that, if IXL did not comply, he would endorse the matter to his BJPI's copyright covers only a specific episode of Rhoda and Me and that the
attorneys for proper legal action. formats or concepts of dating game shows are not covered by copyright
protection under P.D. No. 49.
Meanwhile, private respondent Zosa sought to register IXL's copyright to the
first episode of It's a Date for which it was issued by the National Library a Non-Assignment of Error.
certificate of copyright August 14, 1991.
Petitioners claim that their failure to submit the copyrighted master videotape
of the television show Rhoda and Me was not raised in issue by private
respondents during the preliminary investigation and, therefore, it was error
for the Secretary of Justice to reverse the investigating prosecutor's finding of
probable cause on this ground.
A preliminary investigation falls under the authority of the state prosecutor who
is given by law the power to direct and control criminal
actions. 2 He is, however, subject to the control of the Secretary of Justice.
Thus, Rule 112, §4 of the Revised Rules of Criminal Procedure, provides:
Sec. 4. Duty of investigating fiscal. — If the investigating
fiscal finds cause to hold the respondent for trial, he shall
prepare the resolution and corresponding information. He
shall certify under oath that he, or as shown by the record,
an authorized officer, has personally examined the
complainant and his witnesses, that there is reasonable
ground to believe that a crime has been committed and that
the accused is probably guilty thereof, that the accused was
informed of the complaint and of the evidence submitted
against him and that he was given an opportunity to submit
controverting evidence. Otherwise, he shall recommend
dismissal of the complaint.
In either case, he shall forward the records of the case to
the provincial or city fiscal or chief state prosecutor within
five (5) days from his resolution. The latter shall take
appropriate action thereon ten (10) days from receipt
thereof, immediately informing the parties of said action.
No complaint or information may be filed or dismissed by
an investigating fiscal without the prior written authority or
approval of the provincial or city fiscal or chief state
prosecutor.
Where the investigating assistant fiscal recommends the
dismissal of the case but his findings are reversed by the
provincial or city fiscal or chief state prosecutor on the
ground that a probable cause exists, the latter may, by
himself, file the corresponding information against the
respondent or direct any other assistant fiscal or state
prosecutor to do so, without conducting another preliminary
investigation.
If upon petition by a proper party, the Secretary of Justice
reverses the resolution of the provincial or city fiscal or chief
state prosecutor, he shall direct the fiscal concerned to file
the corresponding information without conducting another
preliminary investigation or to dismiss or move for dismissal
of the complaint or information.
In reviewing resolutions of prosecutors, the Secretary of Justice is not
precluded from considering errors, although unassigned, for the purpose of
determining whether there is probable cause for filing cases in court. He must
make his own finding, of probable cause and is not confined to the issues
raised by the parties during preliminary investigation. Moreover, his findings
are not subject to review unless shown to have been made with grave abuse.
Opinion of the Secretary of Justice
Petitioners contend, however, that the determination of the question whether
the format or mechanics of a show is entitled to copyright protection is for the
court, and not the Secretary of Justice, to make. They assail the following
portion of the resolution of the respondent Secretary of Justice:
[T]he essence of copyright infringement is the copying, in
whole or in part, of copyrightable materials as defined and
enumerated in Section 2 of PD. No. 49. Apart from the
manner in which it is actually expressed, however, the idea
of a dating game show is, in the opinion of this Office, a non-
copyrightable material. Ideas, concepts, formats, or
schemes in their abstract form clearly do not fall within the
class of works or materials susceptible of copyright
registration as provided in PD. No. 49. 3(Emphasis added.)
It is indeed true that the question whether the format or mechanics of
petitioners television show is entitled to copyright protection is a legal question
for the court to make. This does not, however, preclude respondent Secretary
of Justice from making a preliminary determination of this question in resolving
whether there is probable cause for filing the case in court. In doing so in this
case, he did not commit any grave error.
Presentation of Master Tape
Petitioners claim that respondent Secretary of Justice gravely abused his
discretion in ruling that the master videotape should have been predented in
order to determine whether there was probable cause for copyright
infringement. They contend that 20th Century Fox Film Corporation v. Court
of Appeals, 4 on which respondent Secretary of Justice relied in reversing the
resolution of the investigating prosecutor, is inapplicable to the case at bar
because in the present case, the parties presented sufficient evidence which
clearly establish "linkage between the copyright show "Rhoda and Me" and
the infringing TV show "It's a Date." 5
The case of 20th Century Fox Film Corporation involved raids conducted on
various videotape outlets allegedlly selling or renting out "pirated" videotapes.
The trial court found that the affidavits of NBI agents, given in support of the
application for the search warrant, were insufficient without the master tape.
Accordingly, the trial court lifted the search warrants it had previously issued
against the defendants. On petition for review, this Court sustained the action
of the trial court and ruled: 6
The presentation of the master tapes of the copyrighted
films from which the pirated films were allegedly copied,
was necessary for the validity of search warrants against
those who have in their possession the pirated films. The
petitioner's argument to the effect that the presentation of
the master tapes at the time of application may not be
necessary as these would be merely evidentiary in nature
and not determinative of whether or not a probable cause
exists to justify the issuance of the search warrants is not
meritorious. The court cannot presume that duplicate or
copied tapes were necessarily reproduced from master
tapes that it owns.
The application for search warrants was directed against
video tape outlets which allegedly were engaged in the
unauthorized sale and renting out of copyrighted films
belonging to the petitioner pursuant to P.D. 49.
The essence of a copyright infringement is the similarity or
at least substantial similarity of the purported pirated works
to the copyrighted work. Hence, the applicant must present
to the court the copyrighted films to compare them with the
purchased evidence of the video tapes allegedly pirated to
determine whether the latter is an unauthorized
reproduction of the former. This linkage of the copyrighted
films to the pirated films must be established to satisfy the
requirements of probable cause. Mere allegations as to the
existence of the copyrighted films cannot serve as basis for
the issuance of a search warrant.
This ruling was qualified in the later case of Columbia Pictures, Inc.
v. Court of Appeals 7 in which it was held:
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 printed
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. . . 8
In the case at bar during the preliminary investigation, petitioners and private
respondents presented written descriptions of the formats of their respective
televisions shows, on the basis of which the investigating prosecutor ruled:
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 major concepts.
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 follows, to wit:
RHODA AND ME "IT'S A DATE" (D) Letters;
Set 1 Set 1
(E) Dramatic or dramatico-musical compositions;
a. Unmarried participant of one gender (searcher) appears on a. same choreographic works and entertainments in dumb shows,
one side of a divider, while three (3) unmarried participants of the acting form of which is fixed in writing or otherwise;
the other gender are on the other side of the divider. This
arrangement is done to ensure that the searcher does not see
the searchees. (F) Musical compositions, with or without words;
b. Searcher asks a question to be answered by each of the b. same
searchees. The purpose is to determine who among the (G) Works of drawing, painting, architecture, sculpture,
searchees is the most compatible with the searcher. engraving, lithography, and other works of art; models or
designs for works of art;
c. Searcher speculates on the match to the searchee. c. same
d. Selection is made by the use of compute (sic) methods, or d. Selection is based on the answer of the Searchees.
(H) Reproductions of a work of art;
by the way questions are answered, or similar methods.
Set 2 Set 2 (I) Original ornamental designs or models for articles of
Same as above with the genders of the searcher and same manufacture, whether or not patentable, and other works of
searchees interchanged. 9 applied art;

Petitioners assert that the format of Rhoda and Me is a product of ingenuity (J) Maps, plans, sketches, and charts;
and skill and is thus entitled to copyright protection. It is their position that the
presentation of a point-by-point comparison of the formats of the two shows (K) Drawings or plastic works of a scientific or technical
clearly demonstrates the nexus between the shows and hence establishes the character;
existence of probable cause for copyright infringement. Such being the case,
they did not have to produce the master tape.
(I) Photographic works and works produced by a process
analogous to photography lantern slides;
To begin with the format of a show is not copyrightable. Section 2 of P.D. No.
49, 10 otherwise known as the DECREE ON INTELLECTUAL PROPERTY,
(M) Cinematographic works and works produced by a
enumerates the classes of work entitled to copyright protection, to wit:
process analogous to cinematography or any process for
making audio-visual recordings;
Sec. 2. The rights granted by this Decree shall, from the
moment of creation, subsist with respect to any of the
(N) Computer programs;
following classes of works:

(O) Prints, pictorial illustrations advertising copies, labels

(A) Books, including composite and cyclopedic works,
tags, and box wraps;
manuscripts, directories, and gazetteers:

(P) Dramatizations, translations, adaptations,

(B) Periodicals, including pamphlets and newspapers;
(C) Lectures, sermons, addresses, dissertations prepared
for oral delivery;
abridgements, arrangements and other alterations of
literary, musical or artistic works or of works of the
Philippine government as herein defined, which shall be
protected as provided in Section 8 of this Decree.
 (Q) Collections of literary, scholarly, or artistic works or of
works referred to in Section 9 of this Decree which by
reason of the selection and arrangement of their contents
constitute intellectual creations, the same to be protected
as such in accordance with Section 8 of this Decree.
(R) Other literary, scholarly, scientific and artistic works.
This provision is substantially the same as §172 of the INTELLECTUAL
PROPERTY CODE OF PHILIPPINES (R.A. No. 8293). 11 The format or
mechanics of a television show is not included in the list of protected works in
§2 of P.D. No. 49. For this reason, the protection afforded by the law cannot
be extended to cover them.
Copyright, in the strict sense of the term, is purely a
statutory right. It is a new or independent right granted by
the statute, and not simply a pre-existing right regulated by
the statute. Being a statutory grant, the rights are only such
as the statute confers, and may be obtained and enjoyed
only with respect to the subjects and by the persons and on
terms and conditions specified in the statute. 12
Since . . . copyright in published works is purely a statutory
creation, a copyright may be obtained only for a work falling
within the statutory enumeration or description. 13
Regardless of the historical viewpoint, it is authoritatively
settled in the United States that there is no copyright except
that which is both created and secured by act of Congress
. . . . . 14
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.
What then is the subject matter of petitioners' copyright? This Court is of the
opinion that petitioner BJPI's copyright covers audio-visual recordings of each
episode of Rhoda and Me, as falling within the class of works mentioned in
P.D. 49, §2(M), to wit:
Cinematographic works and works produced by a process
analogous to cinematography or any process for making
audio-visual recordings;
The copyright does not extend to the general concept or format of its
dating game show. Accordingly, by the very nature of the subject of
petitioner BJPI's copyright, the investigating prosecutor should have
the opportunity to compare the videotapes of the two shows.
Mere description by words of the general format of the two dating game shows
is insufficient; the presentation of the master videotape in evidence was
indispensable to the determination of the existence of probable cause. As
aptly observed by respondent Secretary of Justice:
A television show includes more than mere words can
describe because it involves a whole spectrum of visuals
and effects, video and audio, such that no similarity or
dissimilarity may be found by merely describing the general
copyright/format of both dating game shows.
WHEREFORE, the petition is hereby DISMISSED
SO ORDERED.1âwphi1.nêt
G.R. No. 76193 November 9, 1989
UNITED FEATURE SYNDICATE, INC., petitioner,
vs.
MUNSINGWEAR CREATION MANUFACTURING COMPANY, respondent.
Quasha, Asperilla, Ancheta, Pena and Nolasco for petitioner.
Jaime G. Manzano for private respondent.
PARAS, J.:
This is a petition for review on certiorari filed by United Feature Syndicate Inc.,
seeking to set aside the Resolution of the Seventh Division of the Court of
Appeals * dated September 16, 1986 dismissing the appeal of petitioner-
appellant for having been filed out of time and denying its Motion for
Reconsideration for lack of merit in its Resolution dated October 14, 1986.
The Resolution dismissing the appeal, reads as follows:
We agree with the Philippine Patent Office and respondent
appellee that the decision of the aforementioned office
dated October 2, 1984 had already become final and
executory at the time the Notice of Appeal was filed.
Our reasons for this conclusions are borne out by the
following facts:
a) On October 2, 1984, the decision
sought to be appealed was rendered by
the Philippine Patent Office and a copy
thereof was received by counsel for
petitioner-appellant on October 3, 1984
— not October 9, 1984 as stated in the
Notice of Appeal. There can be no doubt
about the decision having been received
by petitioner-appellant's counsel
on October 3, 1984 for this is clearly
written in the Notice of Decision (p. 61,
Original Record), and in point of fact the
date of receipt cannot be October 9,
1984, as declared in the Notice of Appeal
(p. 1, Rollo), because in the motion for
reconsideration subsequently filed by
petitioner-appellant it was stated that a
copy of the decision was received
on October 4, 1984 (p. 80, Original
Record).
b) On October 18, 1984 — as shown in
the stamp mark of the Philippine Patent
Office (p. 80, Original Record) or on the
15th and last day either for appealing or
for moving for reconsideration, petitioner-
appellant filed a motion for
reconsideration.
Sadly and unexplainably for a veteran law office, said
motion did not contain or incorporate a notice of hearing.
c) Possibly realizing the fatal defect in its
motion for reconsideration, petitioner-
appellant subsequently filed a motion to
set for hearing its motion for
reconsideration. This was done,
however, only on October 31, 1984 (p.
162, Original Record).
The motion for reconsideration filed on the last day, fatally
failing as it did to contain a notice of hearing, said pleading
did not interrupt the period for appealing, for the motion was
nothing but a piece of scrap paper (Agricultural and
Industrial Marketing, Inc. v. Court of Appeals, 118 SCRA
[1982] 492; Republic Planters Bank v. Intermediate
Appellate Court, 13 SCRA [1984] 631).
This deadly and moral deficiency in the motion for
reconsideration, therefore, resulted in the decision of the
Philippine Patent Office being final and executory
on October 19, 1984, the day after the motion for
reconsideration was filed, said motion having been filed on
the 15th and last day for appealing.
 WHEREFORE, the motion of respondent appellee is
hereby granted and the appeal dismissed.
SO ORDERED. (Rollo 42-43)
This case arose from petition filed by petitioner for the cancellation of the
registration of trademark CHARLIE BROWN (Registration No. SR. 4224) in
the name of respondent MUNSINGWEAR in Inter Partes Case No. 1350
entitled "United Feature Syndicate, Inc. v. Munsingwear Creation Mfg. Co.",
with the Philippine Patent Office alleging that petitioner is damaged by the
registration of the trademark CHARLIE BROWN of T-Shirts under Class 25
with the Registration No. SR-4224 dated September 12, 1979 in the name of
Munsingwear Creation Manufacturing Co., Inc., on the following grounds: (1)
that respondent was not entitled to the registration of the mark CHARLIE
BROWN, & DEVICE at the time of application for registration; (2) that
CHARLIE BROWN is a character creation or a pictorial illustration, the
copyright to which is exclusively owned worldwide by the petitioner; (3) that
as the owner of the pictorial illustration CHARLIE BROWN, petitioner has
since 1950 and continuously up to the present, used and reproduced the same
to the exclusion of others; (4) that the respondent-registrant has no bona fide
use of the trademark in commerce in the Philippines prior to its application for
registration. (Petition, p. 2, Rollo, p. 8)
Hence this petition for review on certiorari.
In the resolution of April 6, 1987, the petition was given due course.
In its petition (Rollo, p. 10) and in its memorandum (Rollo, p. 97), petitioner-
appellant raised the following legal issues:
I
WHETHER THE RESPONDENT COURT OF APPEALS
ACTED IN EXCESS OF JURISDICTION AND/OR
COMMITTED GRAVE ABUSE OF DISCRETION WHEN IT
BASED ITS RESOLUTION IN DISMISSING ITS APPEAL
ON STRICT TECHNICAL RULES OF PROCEDURE AS
ENUNCIATED IN RULE 15 OF THE RULES OF COURT
INSTEAD OF RELYING ON THE POLICY OF THE
PHILIPPINE PATENT OFFICE AS STRESSED IN RULE
169, AS AMENDED, OF THE RULES OF PRACTICE IN
TRADEMARK CASES.
II

On October 2, 1984 the Director of the Philippine Patent Office rendered a WHETHER THE RESPONDENT COURT OF APPEALS
decision in this case holding that a copyright registration like that of the name COMMITTED GRAVE ABUSE OF DISCRETION
and likeness of CHARLIE BROWN may not provide a cause of action for the AMOUNTING TO EXCESS OF JURISDICTION WHEN BY
cancellation of a trademark registration, (Petition, p. 4; Rollo, p. 10 ) DISMISSING THE APPEAL TO IT FROM THE DECISION
OF THE DIRECTOR OF PATENTS, IT KNOWINGLY
Petitioner filed a motion for reconsideration of the decision rendered by the DISREGARDED ITS OWN DECISION IN AC-GR. SP. NO.
Philippine Patent Office which was denied by the Director of said office on the 0342, WHICH WAS AFFIRMED BY THIS HONORABLE
ground that the Decision No. 84-83 was already final and executory (Petition, SUPREME COURT TO THE EFFECT THAT A
Rollo, pp. 11-12). COPYRIGHTED CHARACTER MAY NOT BE
APPROPRIATED AS A TRADEMARK BY ANOTHER
UNDER PRESIDENTIAL DECREE NO. 49.
From this decision, petitioner-appellant appealed to the Court of Appeals and
respondent court in its resolution dated September 16, 1986 denied the
appeal. While the Motion for Reconsideration was filed on time, that is, on the III
last day within which to appeal, still it is a mere scrap of paper because there
was no, date, of hearing stated therein. WHETHER, ASSUMING ARGUENDO, BUT ONLY
ASSUMING, THAT THE DECISION OF THE DIRECTOR
Subsequently, petitioner-appellant filed a motion for reconsideration which OF PATENTS IN THE CASE AT BAR HAD ALREADY
public respondent denied for lack of merit( Annex "B", Rollo p. 45).. BECOME FINAL WHEN IT WAS APPEALED TO THE
COURT OF APPEALS, THE LATTER, BY REASON OF
THE SUPERVENING FACTS AFTER THE DECISION
 APPEALED FROM WAS RENDERED, SHOULD HAVE
HARMONIZED THE DECISION WITH LAW, THE
DEMANDS OF JUSTICE AND EQUITY.
The petitioner is impressed with merit.
Petitioner's contention that the purpose of a notice of hearing to the adverse
party is to afford him an opportunity to resist the motion, more particularly the
motion for reconsideration filed by its company is well taken. Said purpose
was served when Munsingwear filed its opposition thereto on November 20,
1984 and cured the technical defect of lack of notice of hearing complained of
(Rollo, p. 52). Otherwise stated such shortcomings of petitioner as to
compliance with procedural requirements in taking its appeal cannot be
deemed sufficient to deprive it of a chance to secure a review by this court in
order to obtain substantial justice; more so where liverality accorded to the
petitioner becomes compelling because of the ostensible merit of petitioner's
case (Olango v. Court of First Instance of Misamis Oriental, 121 SCRA 338
[1983]).
Moreover, in Siguenza v. Court of Appeals, (137 SCRA 570 [1985]) the Court
stressed that the right to appeal should not be lightly disregarded by a
stringent application of rules of procedure especially where the appeal is on
its face meritorious and the interest of substantial justice would be served by
permitting the appeal.
As enunciated in the case of Castro v. Court of Appeals (123 SCRA 782,
[1983]) the importance and real purpose of the remedy of appeal was stressed
as follows:
An appeal is an essential part of oar judicial system. We
have advised the courts to proceed with caution so as not
to deprive a party of the right to appeal. (National
Waterworks and Sewerage Authority v. Municipality of
Libmanan, 97 SCRA 138) and instructed that every party-
litigant should beafforded the amplest opportunity for the
proper and just disposition of his cause, freed from the
constraints of technicalities. (A-One Feeds, Inc. v. Court of
Appeals, 100 SCRA 590).
The rules of procedure are not to be applied in a very rigid
and technical sense. The rules of procedure are used only
to help secure not override substantial justice. (Gregorio v.
Court of Appeals, 72 SCRA 120), therefore, we ruled in
Republic v. Court of Appeals (83 SCRA 453) that a six day
delay in the perfection of the appeal does not warrant its
dismissal. And again in Ramos v. Bagaso, 96 SCRA 395,
this Court held that the delay of four (4) days in filing a
notice of appeal and a motion for extension of time to file a
record on appeal can be excused on the basis of equity.
It was further emphasized that we allowed the filing of an appeal in some
cases where a stringent application of the rules would have denied it, or when
to do so would serve the demands of substantial justice and in the exercise of
our equity jurisdiction (Serrano v. Court of Appeals, 139 SCRA 179 [1085].)
In the case at bar, the petitioner's delay in filing their record on appeal should
not be strictly construed as to deprive them of the right to appeal especially
since on its face the appeal appears to be impressed with merit. (Emphasis
supplied). All aforementioned cases are cited in G.R. No. 76595, Pacific Asia
Overseas Shipping Corporation v. NLRC, et al., May 6, 1988.
Procedural technicality should not prevail over substantive rights of a party to
appeal (NEA v. CA, 126 SCRA 394).
Moreover, a judgment of the Court of Appeals that become final by reason of
the mistake of the herein petitioner's lawyer may still be reviewed on appeal
by the Supreme Court particularly where the Supreme Court already gave due
course to the petition for review (Ernesto v. Court of Appeals, 116 SCRA 755
[1982]).
Where strong considerations of substantial justice are manifest in the petition,
this Court may relax the stringent application of technical rules in the exercise
of equity jurisdiction. In addition to the basic merits of the main case, such
petition usually embodies justifying circumstances which warrant our heeding
the petitioner's cry for justice, inspite of the earlier negligence of counsel
(Serrano v. Court of Appeals et al., 139 SCRA 179 [1985]).
In a number of cases, this Court in the exercise of equity jurisdiction decided
to disregard technicalities in order to resolve the case on its merits based on
the evidence (St. Peter Memorial Park, Inc. et al. v. Cleofas, 121 SCRA 287,
[1983]; Helmuth, Jr. v. People of the Philippines, 112 SCRA 573 [1983]).
This case was brought before this Court for the resolution of the dismissal of
the appeal filed by petitioner-appellant from the decision of the Director of the
Philippines Patent Office for being filed out of time. The normal action to take
thereafter, would be to remand this case to the Court of Appeals for further
proceedings. However, in line with jurisprudence, such time consuming
procedure may be properly dispensed with to resolve the issue (Quisumbing
v. Court of Appeals, 122 SCRA 709 [1983]) where there is enough basis to
end the basic controversy between the parties here and now. In the case at
bar dispensing with such procedural steps would not anyway affect
substantially the merits of their respective claims as held in Velasco v. Court
of Appeals, (95 SCRA 621 [1980] cited in Ortigas & Co. Ltd. v. Ruiz, 148
SCRA [1987] hence the need for this Court to broaden its inquiry in this case
land decide the same on the merits rather than merely resolve the procedural
question raised (Dorado v. Court of Appeals, 153 SCRA 420 [1987]; De Lima
v. Laguna Tayabas Co., 160 SCRA 70 [1988]).
Petitioner contends that it will be damaged by the registration of the trademark
CHARLIE BROWN & DEVICE in favor of private respondent and that it has a
better right to CHARLIE BROWN & DEVICE since the likeness of CHARLIE
BROWN appeared in periodicals having worldwide distribution and covered
by copyright registration in its name which antedates the certificate of
registration of respondent issued only on September 12, 1979. (Petition, Rollo,
p. 21).
Petitioner further stresses that Decision No. 84-83 (TM) promulgated by the
Philippine Patent Office on October 2, 1984 which held that "the name
likeness of CHARLIE BROWN may not provide a cause of action for the
cancellation of a trademark registration," was based in the conclusion made
in the case of "Children's Television Workshop v. touch of Class" earlier
decided by the Director of Patent Office on May 10, 1984. However, when the
latter case was appealed to the then Intermediate Appellate Court, docketed
as A.C. G.R. SP No. 03432, the appellate court reversed the decision of the
Director holding said appealed decision as illegal and contrary to law. this
reversal was affirmed by this Court on August 7, 1985 in G.R. No. 71210 by
denying the petition of respondent Touch of Class.
The Court of Appeals in reversing the Director of Patent's decision in Touch
of Class, Inc. succintly said:
The Patents Office ruled that a trademark, unlike a label,
cannot be copyrighted. The "Cookie Monster" is not,
however, a trademark. It is a character in a TV series
entitled "Sesame Street." It was respondent which
appropriated the "Cookie Monster" as a trademark, after it
has been copyrighted. We hold that the exclusive right
secured by PD 49 to the petitioner precludes the
appropriation of the "Cookie Monster" by the respondent.
Pertinently, Section 2 of Presidential Decree No. 49, otherwise known as the
"Decree on Intellectual Property", provides:
Section 2. The rights granted by this Decree shall, from the
moment of creation, subsist with respect to any of the
following classes of works:
xxx xxx xxx
(O) Prints, pictorial illustrations, advertising copies, labels,
tags and box wraps. ...
Therefore, since the name "CHARLIE BROWN" and its pictorial
representation were covered by a copyright registration way back in 1950 the
same are entitled to protection under PD No. 49.
Aside from its copyright registration, petitioner is also the owner of several
trademark registrations and application for the name and likeness of
"CHARLIE BROWN" which is the duly registered trademark and copyright of
petitioner United Feature Syndicate Inc. as early as 1957 and additionally also
as TV SPECIALS featuring the "PEANUTS" characters "CHARLIE BROWN"
(Memorandum, Rollo p. 97 [211]).
An examination of the records show that the only appreciable defense of
respondent-registrant is embodied in its answer, which reads:
It uses, the trademark "CHARLIE BROWN" & "DEVICE" on
children's wear such as T-shirts, undershirts, sweaters,
brief and sandos, in class 25; whereas "CHARLIE BROWN"
is used only by petitioner as character, in a pictorial
illustration used in a comic strip appearing in newspapers
and magazines. It has no trademark significance and
therefore respondent-registrant's use of "CHARLIE
BROWN" & "DEVICE" is not in conflict with the petitioner's
use of "CHARLIE BROWN" (Rollo, p. 97 [21]).
It is undeniable from the records that petitioner is the actual owner of said
trademark due to its prior registration with the Patent's Office.
Finally, in La Chemise Lacoste S.A. v. Hon. Oscar Fernandez &
Gobindram Hemandas Sujanani v. Hon. Roberto V. Ongpin, et al. 129 SCRA
373 [1984]), the Court declared.
In upholding the right of the petitioner to maintain the
present suit before our courts for unfair competition or
infringement of trademarks of a foreign corporation, we are
moreover recognizing our duties and the rights of foregoing
states under the Paris Convention for the Protection of
Industrial Property to which the Philippines and (France)
U.S. are parties. We are simply interpreting a solemn
international commitment of the Philippines embodied in a
multilateral treaty to which we are a party and which we
entered into because it is in our national interest to do so.
PREMISES CONSIDERED, the Resolutions of the Court of Appeals dated
September 16, 1985 and October 14, 1986 dismissing petitioner's appeal are
hereby SET ASIDE and Certificate of Registration no. SR-424 issued to
private respondent dated September 12, 1979 is hereby CANCELLED.
SO ORDERED.
JESSIE G. CHING, petitioner, vs. WILLIAM M. SALINAS, SR., WILLIAM M.
SALINAS, JR., JOSEPHINE L. SALINAS, JENNIFER Y. SALINAS,
ALONTO SOLAIMAN SALLE, JOHN ERIC I. SALINAS, NOEL M.
YABUT (Board of Directors and Officers of WILAWARE
PRODUCT CORPORATION), respondents.
DECISION
CALLEJO, SR., J.:
This petition for review on certiorari assails the Decision[1] and
Resolution[2] of the Court of Appeals (CA) in CA-G.R. SP No. 70411 affirming
the January 3, 2002 and February 14, 2002 Orders [3] of the Regional Trial
Court (RTC) of Manila, Branch 1, which quashed and set aside Search
Warrant Nos. 01-2401 and 01-2402 granted in favor of petitioner Jessie G.
Ching.
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]
On September 20, 2001, Ching requested the National Bureau of
Investigation (NBI) for police/investigative assistance for the apprehension
and prosecution of illegal manufacturers, producers and/or distributors of the
works.[5]
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
applications sought the seizure of the following:
a.) Undetermined quantity of Leaf spring eye bushing for
automobile that are made up of plastic polypropylene;
b.) Undetermined quantity of Leaf spring eye bushing for
automobile that are made up of polyvinyl chloride plastic;
c.) Undetermined quantity of Vehicle bearing cushion that is made
up of polyvinyl chloride plastic;
 d.) Undetermined quantity of Dies and jigs, patterns and flasks b) the subject matter of the registrations are spare parts of
used in the manufacture/fabrication of items a to d; automobiles meaning there (sic) are original parts that they
are designed to replace. Hence, they are not original.[9]
e.) Evidences of sale which include delivery receipts, invoices and
official receipts.[6]
The respondents averred that the works covered by the certificates
The RTC granted the application and issued Search Warrant Nos. 01- issued by the National Library are not artistic in nature; they are considered
2401 and 01-2402 for the seizure of the aforecited articles.[7] In the inventory automotive spare parts and pertain to technology. They aver that the models
submitted by the NBI agent, it appears that the following articles/items were are not original, and as such are the proper subject of a patent, not
seized based on the search warrants: copyright.[10]
In opposing the motion, the petitioner averred that the court which issued
Leaf Spring eye bushing the search warrants was not the proper forum in which to articulate the issue
of the validity of the copyrights issued to him. Citing the ruling of the Court
a) Plastic Polypropylene in Malaloan v. Court of Appeals,[11] the petitioner stated that a search warrant
- C190 27 } is merely a judicial process designed by the Rules of Court in anticipation of
- C240 rear 40 } a criminal case. Until his copyright was nullified in a proper proceeding, he
- C240 front 41 } BAG 1 enjoys rights of a registered owner/holder thereof.
b) Polyvinyl Chloride Plastic
- C190 13 } On January 3, 2002, the trial court issued an Order [12] granting the
c) Vehicle bearing cushion motion, and quashed the search warrant on its finding that there was no
- center bearing cushion 11 } probable cause for its issuance. The court ruled that the work covered by the
Budder for C190 mold 8 } certificates issued to the petitioner pertained to solutions to technical
Diesel Mold problems, not literary and artistic as provided in Article 172 of the Intellectual
a) Mold for spring eye bushing rear 1 set Property Code.
b) Mold for spring eye bushing front 1 set His motion for reconsideration of the order having been denied by the
c) Mold for spring eye bushing for C190 1 set trial courts Order of February 14, 2002, the petitioner filed a petition
d) Mold for C240 rear 1 piece of the for certiorari in the CA, contending that the RTC had no jurisdiction to delve
s into and resolve the validity of the copyright certificates issued to him by the
et National Library. He insisted that his works are covered by Sections 172.1 and
e) Mold for spring eye bushing for L300 2 sets 172.2 of the Intellectual Property Code. The petitioner averred that the
f) Mold for leaf spring eye bushing C190 copyright certificates are prima facie evidence of its validity, citing the ruling
with metal 1 set of the United States Court of Appeals in Wildlife Express Corporation v. Carol
g) Mold for vehicle bearing cushion 1 set[8] Wright Sales, Inc.[13] The petitioner asserted that the respondents failed to
The respondents filed a motion to quash the search warrants on the adduce evidence to support their motion to quash the search warrants. The
following grounds: petitioner noted that respondent William Salinas, Jr. was not being honest, as
he was able to secure a similar copyright registration of a similar product from
the National Library on January 14, 2002.
2. The copyright registrations were issued in violation of the Intellectual Property
Code on the ground that: On September 26, 2003, the CA rendered judgment dismissing the
petition on its finding that the RTC did not commit any grave abuse of its
a) the subject matter of the registrations are not artistic or literary; discretion in issuing the assailed order, to wit:
It is settled that preliminarily, there must be a finding that a specific offense must have
been committed to justify the issuance of a search warrant. In a number of cases
decided by the Supreme Court, the same is explicitly provided, thus:
The probable cause must be in connection with one specific offense, and the judge
must, before issuing the warrant, personally examine in the form of searching
questions and answers, in writing and under oath, the complainant and any witness he
may produce, on facts personally known to them and attach to the record their sworn
statements together with any affidavit submitted.
In the determination of probable cause, the court must necessarily resolve whether or
not an offense exists to justify the issuance or quashal of the search warrant.
In the instant case, the petitioner is praying for the reinstatement of the search warrants
issued, but subsequently quashed, for the offense of Violation of Class Designation of
Copyrightable Works under Section 177.1 in relation to Section 177.3 of Republic Act
8293, when the objects subject of the same, are patently not copyrightable.
It is worthy to state that the works protected under the Law on Copyright are: literary
or artistic works (Sec. 172) and derivative works (Sec. 173). The Leaf Spring Eye
Bushing and Vehicle Bearing Cushion fall on neither classification. Accordingly, if,
in the first place, the item subject of the petition is not entitled to be protected by the
law on copyright, how can there be any violation?[14]
The petitioners motion for reconsideration of the said decision suffered
the same fate. The petitioner forthwith filed the present petition for review
on certiorari, contending that the revocation of his copyright certificates should
be raised in a direct action and not in a search warrant proceeding.
The petitioner posits that even assuming ex argumenti that the trial court
may resolve the validity of his copyright in a proceeding to quash a search
warrant for allegedly infringing items, the RTC committed a grave abuse of its
discretion when it declared that his works are not copyrightable in the first
place. He claims that R.A. No. 8293, otherwise known as the Intellectual
Property Code of the Philippines, which took effect on January 1, 1998,
provides in no uncertain terms that copyright protection automatically attaches
to a work by the sole fact of its creation, irrespective of its mode or form of
expression, as well as of its content, quality or purpose. [15] The law gives a
non-inclusive definition of work as referring to original intellectual creations in
the literary and artistic domain protected from the moment of their creation;
and includes original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial design and other
works of applied art under Section 172.1(h) of R.A. No. 8293.
As such, the petitioner insists, notwithstanding the classification of the
works as either literary and/or artistic, the said law, likewise, encompasses
works which may have a bearing on the utility aspect to which the petitioners
utility designs were classified. Moreover, according to the petitioner, what the
Copyright Law protects is the authors intellectual creation, regardless of
whether it is one with utilitarian functions or incorporated in a useful article
produced on an industrial scale.
The petitioner also maintains that the law does not provide that the
intended use or use in industry of an article eligible for patent bars or
invalidates its registration under the Law on Copyright. The test of protection
for the aesthetic is not beauty and utility, but art for the copyright and invention
of original and ornamental design for design patents. [16] In like manner, the
fact that his utility designs or models for articles of manufacture have been
expressed in the field of automotive parts, or based on something already in
the public domain does not automatically remove them from the protection of
the Law on Copyright.[17]
The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293
which gives the same presumption to an affidavit executed by an author who
claims copyright ownership of his work.
The petitioner adds that a finding of probable cause to justify the
issuance of a search warrant means merely a reasonable suspicion of the
commission of the offense. It is not equivalent to absolute certainty or a finding
of actual and positive cause.[18] He assists that the determination of probable
cause does not concern the issue of whether or not the alleged work is
copyrightable. He maintains that to justify a finding of probable cause in the
issuance of a search warrant, it is enough that there exists a reasonable
suspicion of the commission of the offense.
The petitioner contends that he has in his favor the benefit of the
presumption that his copyright is valid; hence, the burden of overturning this
presumption is on the alleged infringers, the respondents herein. But this
burden cannot be carried in a hearing on a proceeding to quash the search
warrants, as the issue therein is whether there was probable cause for the
issuance of the search warrant. The petitioner concludes that the issue of
probable cause should be resolved without invalidating his copyright.
In their comment on the petition, the respondents aver that the work of
the petitioner is essentially a technical solution to the problem of wear and tear
in automobiles, the substitution of materials, i.e., from rubber to plastic matter
of polyvinyl chloride, an oil resistant soft texture plastic material strong enough
to endure pressure brought about by the vibration of the counter bearing and
thus brings bushings. Such work, the respondents assert, is the subject of
copyright under Section 172.1 of R.A. No. 8293. The respondents posit that a
technical solution in any field of human activity which is novel may be the
subject of a patent, and not of a copyright. They insist that the certificates
issued by the National Library are only certifications that, at a point in time, a
certain work was deposited in the said office. Furthermore, the registration of
copyrights does not provide for automatic protection. Citing Section 218.2(b)
of R.A. No. 8293, the respondents aver that no copyright is said to exist if a
party categorically questions its existence and legality. Moreover, under
Section 2, Rule 7 of the Implementing Rules of R.A. No. 8293, the registration
and deposit of work is not conclusive as to copyright outlay or the time of
copyright or the right of the copyright owner. The respondents maintain that a
copyright exists only when the work is covered by the protection of R.A. No.
8293.
The petition has no merit.
The RTC had jurisdiction to delve into and resolve the issue whether the
petitioners utility models are copyrightable and, if so, whether he is the owner
of a copyright over the said models. It bears stressing that upon the filing of
the application for search warrant, the RTC was duty-bound to determine
whether probable cause existed, in accordance with Section 4, Rule 126 of
the Rules of Criminal Procedure:
SEC. 4. Requisite for issuing search warrant. A search warrant shall not issue but
upon probable cause in connection with one specific offense to be determined
personally by the judge after examination under oath or affirmation of the complainant
and the witnesses he may produce, and, particularly, describing the place to be
searched and the things to be seized.
In Solid Triangle Sales Corporation v. The Sheriff of RTC QC, Br.
93,[19]the Court held that in the determination of probable cause, the court
must necessarily resolve whether or not an offense exists to justify the
issuance of a search warrant or the quashal of one already issued by the court.
Indeed, probable cause is deemed to exist only where facts and
circumstances exist which could lead a reasonably cautious and prudent man
to believe that an offense has been committed or is being committed. Besides,
in Section 3, Rule 126 of the Rules of Criminal Procedure, a search warrant
may be issued for the search and seizure of personal property (a) subject of
the offense; (b) stolen or embezzled and other proceeds or fruits of the
offense; or (c) used or intended to be used as the means of committing an
offense.
The RTC is mandated under the Constitution and Rules of Criminal
Procedure to determine probable cause. The court cannot abdicate its
constitutional obligation by refusing to determine whether an offense has been
committed.[20] The absence of probable cause will cause the outright
nullification of the search warrant.[21]
For the RTC to determine whether the crime for infringement under R.A.
No. 8293 as alleged in an application is committed, the petitioner-applicant
was burdened to prove that (a) respondents Jessie Ching and Joseph Yu were
the owners of copyrighted material; and (b) the copyrighted material was being
copied and distributed by the respondents. Thus, the ownership of a valid
copyright is essential.[22]
Ownership of copyrighted material is shown by proof of originality and
copyrightability. By originality is meant that the material was not copied, and
evidences at least minimal creativity; that it was independently created by the
author and that it possesses at least same minimal degree of
creativity.[23] Copying is shown by proof of access to copyrighted material and
substantial similarity between the two works.[24] The applicant must thus
demonstrate the existence and the validity of his copyright because in the
absence of copyright protection, even original creation may be freely
copied.[25]
By requesting the NBI to investigate and, if feasible, file an application
for a search warrant for infringement under R.A. No. 8293 against the
respondents, the petitioner thereby authorized the RTC (in resolving the
application), to delve into and determine the validity of the copyright which he
claimed he had over the utility models. The petitioner cannot seek relief from
the RTC based on his claim that he was the copyright owner over the utility
models and, at the same time, repudiate the courts jurisdiction to ascertain
the validity of his claim without running afoul to the doctrine of estoppel.
To discharge his burden, the applicant may present the certificate of
registration covering the work or, in its absence, other evidence. [26] A copyright
certificate provides prima facieevidence of originality which is one element of
copyright validity. It constitutes prima facie evidence of both validity and
ownership[27] and the validity of the facts stated in the certificate. [28]The
presumption of validity to a certificate of copyright registration merely orders
the burden of proof. The applicant should not ordinarily be forced, in the first
instance, to prove all the multiple facts that underline the validity of the
copyright unless the respondent, effectively challenging them, shifts the
burden of doing so to the applicant.[29] Indeed, Section 218.2 of R.A. No. 8293
provides:
218.2. In an action under this Chapter:
(a) Copyright shall be presumed to subsist in the work or other subject matter to which
the action relates if the defendant does not put in issue the question whether copyright
subsists in the work or other subject matter; and
(b) Where the subsistence of the copyright is established, the plaintiff shall be
presumed to be the owner of the copyright if he claims to be the owner of the copyright
and the defendant does not put in issue the question of his ownership.
A certificate of registration creates no rebuttable presumption of
copyright validity where other evidence in the record casts doubt on the
question. In such a case, validity will not be presumed. [30]
To discharge his burden of probable cause for the issuance of a search
warrant for violation of R.A. No. 8293, the petitioner-applicant submitted to the
RTC Certificate of Copyright Registration Nos. 2001-197 and 2001-204 dated
September 3, 2001 and September 4, 2001, respectively, issued by the
National Library covering work identified as Leaf Spring Eye Bushing for
Automobile and Vehicle Bearing Cushion both classified under Section
172.1(h) of R.A. No. 8293, to wit:
SEC. 172. Literary and Artistic Works. 172.1. Literary and artistic works, hereinafter
referred to as works, are original intellectual creations in the literary and artistic
domain protected from the moment of their creation and shall include in particular:
...
(h) Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art.
Related to the provision is Section 171.10, which provides that a work of
applied art is an artistic creation with utilitarian functions or incorporated in a
useful article, whether made by hand or produced on an industrial scale.
But, as gleaned from the specifications appended to the application for
a copyright certificate filed by the petitioner, the said Leaf Spring Eye Bushing
for Automobile is merely a utility model described as comprising a generally
cylindrical body having a co-axial bore that is centrally located and provided
with a perpendicular flange on one of its ends and a cylindrical metal jacket
surrounding the peripheral walls of said body, with the bushing made of plastic
that is either polyvinyl chloride or polypropylene. [31] Likewise, the Vehicle
Bearing Cushion is illustrated as a bearing cushion comprising a generally
semi-circular body having a central hole to secure a conventional bearing and
a plurality of ridges provided therefore, with said cushion bearing being made
of the same plastic materials.[32] Plainly, these are not literary or artistic works.
They are not intellectual creations in the literary and artistic domain, or works
of applied art. They are certainly not ornamental designs or one having
decorative quality or value.
It bears stressing that the focus of copyright is the usefulness of the
artistic design, and not its marketability. The central inquiry is whether the
article is a work of art.[33] Works for applied art include all original pictorials,
graphics, and sculptural works that are intended to be or have been embodied
in useful article regardless of factors such as mass production, commercial
exploitation, and the potential availability of design patent protection.[34]
As gleaned from the description of the models and their objectives, these
articles are useful articles which are defined as one having an intrinsic
utilitarian function that is not merely to portray the appearance of the article or
to convey information. Indeed, while works of applied art, original intellectual,
literary and artistic works are copyrightable, useful articles and works of
industrial design are not.[35] A useful article may be copyrightable only if and
only to the extent that such design incorporates pictorial, graphic, or sculptural
features that can be identified separately from, and are capable of existing
independently of the utilitarian aspects of the article.
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. Thus, the petitioner described the utility model as follows:
LEAF SPRING EYE BUSHING FOR AUTOMOBILE
Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile are
made of hard rubber. These rubber bushings after a time, upon subjecting them to so
much or intermittent pressure would eventually wore (sic) out that would cause the
wobbling of the leaf spring.
The primary object of this utility model, therefore, is to provide a leaf-spring eye
bushing for automobile that is made up of plastic.
Another object of this utility model is to provide a leaf-spring eye bushing for
automobiles made of polyvinyl chloride, an oil resistant soft texture plastic or
polypropylene, a hard plastic, yet both causes cushion to the leaf spring, yet strong
enough to endure pressure brought about by the up and down movement of said leaf
spring.
Yet, an object of this utility model is to provide a leaf-spring eye bushing for
automobiles that has a much longer life span than the rubber bushings.
Still an object of this utility model is to provide a leaf-spring eye bushing for
automobiles that has a very simple construction and can be made using simple and
ordinary molding equipment.
A further object of this utility model is to provide a leaf-spring eye bushing for
automobile that is supplied with a metal jacket to reinforce the plastic eye bushing
when in engaged with the steel material of the leaf spring.
These and other objects and advantages will come to view and be understood upon a
reading of the detailed description when taken in conjunction with the accompanying
drawings.
Figure 1 is an exploded perspective of a leaf-spring eye bushing according to the
present utility model;
Figure 2 is a sectional view taken along line 2-2 of Fig. 1;
Figure 3 is a longitudinal sectional view of another embodiment of this utility model;
Figure 4 is a perspective view of a third embodiment; and
Figure 5 is a sectional view thereof.
Referring now to the several views of the drawings wherein like reference numerals
designated same parts throughout, there is shown a utility model for a leaf-spring eye
bushing for automobile generally designated as reference numeral 10.
Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a
co-axial bore 12 centrally provided thereof.
As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is provided with a
perpendicular flange 13 on one of its ends and a cylindrical metal jacket 14
surrounding the peripheral walls 15 of said body 11. When said leaf-spring bushing
10 is installed, the metal jacket 14 acts with the leaf-spring eye (not shown), which is
also made of steel or cast steel. In effect, the bushing 10 will not be directly in contact
with steel, but rather the metal jacket, making the life of the bushing 10 longer than
those without the metal jacket.
In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl chloride,
an oil resistant soft texture plastic or a hard polypropylene plastic, both are capable to
endure the pressure applied thereto, and, in effect, would lengthen the life and
replacement therefor.
Figure 3, on the other hand, shows the walls 16 of the co-axial bore 12 of said bushing
10 is insertably provided with a steel tube 17 to reinforce the inner portion thereof.
This steel tube 17 accommodates or engages with the leaf-spring bolt (not shown)
connecting the leaf spring and the automobiles chassis.
Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is
elongated and cylindrical as to its construction. Said another embodiment is also made
of polypropylene or polyvinyl chloride plastic material. The steel tube 17 and metal
jacket 14 may also be applied to this embodiment as an option thereof.[38]
VEHICLE BEARING CUSHION
Known bearing cushions inserted to bearing housings for vehicle propeller shafts are
made of hard rubber. These rubber bushings after a time, upon subjecting them to so
much or intermittent pressure would eventually be worn out that would cause the
wobbling of the center bearing.
The primary object of this utility model therefore is to provide a vehicle-bearing
cushion that is made up of plastic.
Another object of this utility model is to provide a vehicle bearing cushion made of
polyvinyl chloride, an oil resistant soft texture plastic material which causes cushion
to the propellers center bearing, yet strong enough to endure pressure brought about
by the vibration of the center bearing.
Yet, an object of this utility model is to provide a vehicle-bearing cushion that has a
much longer life span than rubber bushings.
Still an object of this utility model is to provide a vehicle bearing cushion that has a
very simple construction and can be made using simple and ordinary molding
equipment.
These and other objects and advantages will come to view and be understood upon a
reading of the detailed description when taken in conjunction with the accompanying
drawings.
Figure 1 is a perspective view of the present utility model for a vehicle-bearing
cushion; and
Figure 2 is a sectional view thereof.
Referring now to the several views of the drawing, wherein like reference numeral
designate same parts throughout, there is shown a utility model for a vehicle-bearing
cushion generally designated as reference numeral 10.
Said bearing cushion 10 comprises of a generally semi-circular body 11, having
central hole 12 to house a conventional bearing (not shown). As shown in Figure 1,
said body 11 is provided with a plurality of ridges 13 which serves reinforcing means
thereof.
The subject bearing cushion 10 is made of polyvinyl chloride, a soft texture oil and
chemical resistant plastic material which is strong, durable and capable of enduring
severe pressure from the center bearing brought about by the rotating movement of
the propeller shaft of the vehicle.[39]
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.[40] 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.[41] 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[42] in a
patent for invention is not required; second, the maximum term of protection
is only seven years[43] compared to a patent which is twenty years, [44] both
reckoned from the date of the application; and third, the provisions on utility
model dispense with its substantive examination[45] 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 sansany aesthetic embellishment.
Neither are we to regard the Leaf Spring Eye Bushing and Vehicle
Bearing Cushion as included in the catch-all phrase other literary, scholarly,
scientific and artistic works in Section 172.1(a) of R.A. No. 8293. Applying the
principle of ejusdem generis which states that where a statute describes
things of a particular class or kind accompanied by words of a generic
character, the generic word will usually be limited to things of a similar nature
with those particularly enumerated, unless there be something in the context
of the state which would repel such inference,[46] the Leaf Spring Eye Bushing
and Vehicle Bearing Cushion are not copyrightable, being not of the same
kind and nature as the works enumerated in Section 172 of R.A. No. 8293.
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. Indeed,
in Joaquin, Jr. v. Drilon[47] and Pearl & Dean (Phil.), Incorporated v. Shoemart,
Incorporated,[48] the Court ruled that:
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or
independent right granted by the statute, and not simply a pre-existing right regulated
by it. Being a statutory grant, the rights are only such as the statute confers, and may
be obtained and enjoyed only with respect to the subjects and by the persons, and on
terms and conditions specified in the statute. Accordingly, it can cover only the works
falling within the statutory enumeration or description.
That the works of the petitioner may be the proper subject of a patent
does not entitle him to the issuance of a search warrant for violation of
copyright laws. In Kho v. Court of Appeals[49] and Pearl & Dean (Phil.),
Incorporated v. Shoemart, Incorporated,[50] the Court ruled that these
copyright and patent rights are completely distinct and separate from one
another, and the protection afforded by one cannot be used interchangeably
to cover items or works that exclusively pertain to the others. The Court
expounded further, thus:
Trademark, copyright and patents are different intellectual property rights that cannot
be interchanged with one another. A trademark is any visible sign capable of
distinguishing the goods (trademark) or services (service mark) of an enterprise and In this case, the bushing and cushion are not works of art. They are, as
shall include a stamped or marked container of goods. In relation thereto, a trade name the petitioner himself admitted, utility models which may be the subject of a
means the name or designation identifying or distinguishing an enterprise. patent.
Meanwhile, the scope of a copyright is confined to literary and artistic works which
are original intellectual creations in the literary and artistic domain protected from the IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby
moment of their creation. Patentable inventions, on the other hand, refer to any DENIED for lack of merit. The assailed Decision and Resolution of the Court
technical solution of a problem in any field of human activity which is new, involves of Appeals in CA-G.R. SP No. 70411 are AFFIRMED. Search Warrant Nos.
an inventive step and is industrially applicable. 01-2401 and 01-2402 issued on October 15, 2001 are ANNULLED AND SET
ASIDE. Costs against the petitioner.
The petitioner cannot find solace in the ruling of the United States SO ORDERED.
Supreme Court in Mazer v. Stein[51] to buttress his petition. In that case, the
artifacts involved in that case were statuettes of dancing male and female
figures made of semi-vitreous china. The controversy therein centered on the
fact that although copyrighted as works of art, the statuettes were intended for
use and used as bases for table lamps, with electric wiring, sockets and
lampshades attached. The issue raised was whether the statuettes were
copyright protected in the United States, considering that the copyright
applicant intended primarily to use them as lamp bases to be made and sold
in quantity, and carried such intentions into effect. At that time, the Copyright
Office interpreted the 1909 Copyright Act to cover works of artistic
craftsmanship insofar as their form, but not the utilitarian aspects, were
concerned. After reviewing the history and intent of the US Congress on its
copyright legislation and the interpretation of the copyright office, the US
Supreme Court declared that the statuettes were held copyrightable works of
art or models or designs for works of art. The High Court ruled that:

Works of art (Class G) (a) In General. This class includes works of artistic
craftsmanship, in so far as their form but not their mechanical or utilitarian aspects
are concerned, such as artistic jewelry, enamels, glassware, and tapestries, as well as
all works belonging to the fine arts, such as paintings, drawings and sculpture.

So we have a contemporaneous and long-continued construction of the statutes by the

agency charged to administer them that would allow the registration of such a statuette
as is in question here.[52]

The High Court went on to state that [t]he dichotomy of protection for the
aesthetic is not beauty and utility but art for the copyright and the invention of
original and ornamental design for design patents. Significantly, the copyright
office promulgated a rule to implement Mazer to wit:

[I]f the sole intrinsic function of an article is its utility, the fact that the work is unique
and attractively shaped will not qualify it as a work of art.