Francisco Joaquin, Jr.

vs Franklin Drilon
BJ Productions Inc. (BJPI) was the holder of copyright over the show Rhoda and Me. It
holds rights over the shows format and style of presentation. In 1991, BJPIs president
Francisco Joaquin saw on TV RPN 9s show Its a Date, a show which is basically the
same as Rhoda and Me. He eventually sued Gabriel Zosa, the manager of the show Its a
Date. The investigating prosecutor found probable cause against Zosa. Zosa later sought a
review of the prosecutors resolution before the Secretary of Justice (Franklin Drilon). Drilon
reversed the findings of the fiscal and directed him to dismiss the case against Zosa.
ISSUE: Whether or not the order of Drilon finding no probable cause is valid.
HELD: Yes. The 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 (Copyright
Law). Apart from the manner in which it is actually expressed, however, the idea of a dating
game show is 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. What is covered by
BJPIs copyright is the specific episodes of the show Rhoda and Me.
Further, BJPI should have presented the master videotape of the show in order to show the
linkage between the copyright show (Rhoda and Me) and the infringing show (Its a Date).
This is based on the ruling in 20thCentury Fox vs CA (though this has been qualified by
Columbia Pictures vs CA, this is still good law). Though BJPI did provide a lot of written
evidence and description to show the linkage between the shows, the same were not
enough. 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.

Pearl & Dean (Phil), Inc. vs Shoemart, Inc.

Pearl & Dean (Phil), Inc. is a corporation engaged in the manufacture of advertising display
units called light boxes. In January 1981, Pearl & Dean was able to acquire copyrights over
the designs of the display units. In 1988, their trademark application for Poster Ads was
approved; they used the same trademark to advertise their light boxes.
In 1985, Pearl & Dean negotiated with Shoemart, Inc. (SM) so that the former may be
contracted to install light boxes in the ad spaces of SM. Eventually, SM rejected Pearl
& Deans proposal.
Two years later, Pearl & Dean received report that light boxes, exactly the same as theirs,
were being used by SM in their ad spaces. They demanded SM to stop using the light
boxes and at the same time asked for damages amounting to P20 M. SM refused to pay
damages though they removed the light boxes. Pearl & Dean eventually sued SM. SM
argued that it did not infringe on Pearl & Deans trademark because Pearl & Deans
trademark is only applicable to envelopes and stationeries and not to the type of ad spaces
owned by SM. SM also averred that Poster Ads is a generic term hence it is not subject to
trademark registration. SM also averred that the actual light boxes are not copyrightable.
The RTC ruled in favor of Pearl & Dean. But the Court of Appeals ruled in favor of SM.
ISSUE: Whether or not the Court of Appeals is correct.
HELD: Yes. The light boxes cannot, by any stretch of the imagination, be considered as
either prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to be
properly classified as a copyrightable; what was copyrighted were the technical drawings
only, and not the light boxes themselves. In other cases, it was held that there is no
copyright infringement when one who, without being authorized, uses a copyrighted
architectural plan to construct a structure. This is because the copyright does not extend to
the structures themselves.
On the trademark infringement allegation, the words Poster Ads are a simple contraction
of the generic term poster advertising. In the absence of any convincing proof that Poster
Ads has acquired a secondary meaning in this jurisdiction, Pearl & Deans exclusive right
to the use of Poster Ads is limited to what is written in its certificate of registration, namely,
stationeries.

Pacita Habana vs Felicidad Robles

Pacita Habana and two others were the authors of College English for Today Series 1 and
2 (CET). While they were researching for books to assist them in updating their own book,
they chanced upon the book of Felicidad Robles entitled Developing English Proficiency
Books 1 and 2(DEP). They discovered further that the book of Robles was strikingly similar
to the contents, scheme of presentation, illustrations and illustrative examples of CET. They
then sued Robles and her publisher (Goodwill Trading Co.) for infringement and/or unfair
competition with damages.
Robles, in her defense, alleged that her sources were from foreign books; that in their field,
similarity in styles cannot be avoided since they come from the same background and
orientation. The trial court as well as the Court of Appeals ruled in favor of Robles.
ISSUE: Whether or not the Court of Appeals is correct.
HELD: No. A perusal of the records yields several pages of the book DEP that are similar if
not identical with the text of CET. In several other pages the treatment and manner of
presentation of the topics of DEP are similar if not a rehash of that contained in CET. The
similarities in examples and material contents are so obviously present in this case. How
can similar/identical examples not be considered as a mark of copying? Robles act of lifting
from the book of Habana et al substantial portions of discussions and examples, and her
failure to acknowledge the same in her book is an infringement of Habana et als copyrights.
The Supreme Court also elucidated that in determining the question of infringement, the
amount of matter copied from the copyrighted work is an important consideration. To
constitute infringement, it is not necessary that the whole or even a large portion of the work
shall have been copied. If so much is taken that the value of the original is sensibly
diminished, or the labors of the original author are substantially and to an injurious extent
appropriated by another, that is sufficient in point of law to constitute piracy.
Ana Ang vs. Toribio Teodoro
Facts:

Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a

trade-mark and as a trade-name, in the manufacture and sale of slippers,
shoes, and indoor baseballs since 1910. On September 29, 1915, he
formally registered it as trade-mark and as trade-name on January 3, 1933.

Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants
and shirts on April 11, 1932, and established a factory for the manufacture
of said articles in the year 1937.

The Court of First Instance of Manila absolved the defendant (Ms. Ang) on
the grounds that the two trademarks are dissimilar and are used on
different and non-competing goods; that there had been no exclusive use
of the trade-mark by the plaintiff; and that there had been no fraud in the
use of the said trade-mark by the defendant because the goods on which it
is used are essentially different from those of the plaintiff.

The Court of Appeals reversed said judgment, directing the Director of

Commerce to cancel the registration of the trade-mark "Ang Tibay" in favor
of petitioner, and perpetually enjoining the latter from using said trade-mark
on goods manufactured and sold by her.

Thus, this case, a petition for certiorari.

Issue:

Are the goods or articles or which the two trademarks are used similar or belong to the
same class of merchandise?

Ruling:

Yes, pants and shirts are goods closely similar to shoes and slippers. They belong to
the same class of merchandise as shoes and slippers. They are closely related goods.
The Supreme Court affirmed the judgment of the Court of Appeals and added that
although two non-competing articles may be classified under to different classes by the
Patent Office because they are deemed not to possess the same descriptive properties,
they would, nevertheless, be held by the courts to belong to the same class if the
simultaneous use on them of identical or closely similar trademarks would be likely to
cause confusion as to the origin, or personal source, of the second users goods. They
would be considered as not falling under the same class only if they are so dissimilar or
so foreign to each other as to make it unlikely that the purchaser would think that the
first user made the second users goods.

Philip Morris Inc vs Court of Appeals

Facts:
This is a petition for review under Rule 45 of the Rules of Court, to seek the reversal and setting aside of
the following issuances of the Court of Appeals (CA).

Philip Morris, Inc. and two other petitioners are ascribing whimsical exercise of the faculty conferred
upon magistrates by Section 6, Rule 58 of the Revised Rules of Court when respondent Court of Appeals
lifted the writ of preliminary injunction it earlier had issued against Fortune Tobacco Corporation, from
manufacturing and selling MARK cigarettes in the local market. Banking on the thesis that petitioners
respective symbols MARK VII, MARK TEN, and MARK, also for cigarettes, must be protected against
unauthorized appropriation.

All petitioners are not doing business in the Philippines but are suing on an isolated transaction, They
Invoked provisions of the Paris Convention for the Protection of Industrial and Intellectual Property. As
corporate nationals of member-countries of the Paris Union, they can sue before Philippine courts for
infringement of trademarks, or for unfair competition, without need of obtaining registration or a
license to do business in the Philippines, and without necessity of actually doing business in the
Philippines.

Philip Morris and its subsidiaries filed the complaint for infringement and damages against Fortune
Tobacco before the Pasig Regional Trial Court (RTC) for manufacturing and selling cigarettes bearing the
trademark Mark which is identical and confusingly similar to Philip Morris trademarks. The said act
was dismissed. Hence, this petition at bar.
Issue/s:
Whether or not there has been an invasion of plaintiffs right of property to such trademark or trade
name.

Discussions:
Following universal acquiescence and comity, our municipal law on trademarks regarding the
requirement of actual use in the Philippines must subordinate an international agreement inasmuch as
the apparent clash is being decided by a municipal tribunal. Withal, the fact that international law has
been made part of the law of the land does not by any means imply the primacy of international law
over national law in the municipal sphere. Under the doctrine of incorporation as applied in most
countries, rules of international law are given a standing equal, not superior, to national legislative
enactments
Ruling/s:

No. There is no proof that any of petitioners products which they seek to protect from any adverse
effect of the trademark applied for by defendant, is in actual use and available for commercial purposes
anywhere in the Philippines.

A fundamental principle of Philippine Trademark Law is that actual use in commerce in the Philippines is
a pre-requisite to the acquisition of ownership over a trademark or a trade name.

In view of the explicit representation of petitioners in the complaint that they are not engaged in
business in the Philippines, it inevitably follows that no conceivable damage can be suffered by them not
to mention the foremost consideration heretofore discussed on the absence of their right to be
protected

Esso Standard v CA Digest

Facts of the Case:

The petitioner Esso Standard is a foreign corporation duly licensed to do business in the philippines.
it is engaged in the sale of petroleum products which are identified by the trademarl 'Esso'. Esso is a
successor of Standard Vacuum Oil Co, it registered as a business name with the Bureau of
Commerce in 1962. United Cigarette is a domestic corporation engaged in the manufacture and sale
of cigarettes. it acquired the business from La Oriental Tobacco Corp including patent rights, once of
which is the use of 'Esso' on its cigarettes.

The petitioner filed a trademark infringement case alleging that it acquired goodwill to such an extent
that the buying public would be deceived as ti the quality and origin of the said products to the
detriment and disadvantage of its own products. The lower court found United Cigarette guilty of
infringement. Upon appeal, the Court of Appeals ruled that there was no infringment in this case.

Issue: Is there infringement committed?

Ruling: NONE. Infringement is defined by law as the use without the consent of the trademark owner
of any reproduction, counterfeit, copy or colorable imitation of any registered mark or tradename
which would likely cause confusion or mistake or deceive purchasers or others as to the source or
origin of such goods.

The products of both parties (Petroleum and cigarettes) are non-competing. But as to whether
trademark infringement exists depend on whether or not the goods are so related that the public may
be or is actually deceived and misled that they come from the same maker. Under the Related
Goods Theory, goods are related when they belong to the same class or have the same descriptive
properties or when they have same physical attributes. In these case, the goods are absolutely
different and are so foreign from each other it would be unlikely for purchasers to think that they
came from the same source. Moreover, the goods flow from different channels of trade and are
evidently different in kind and nature.