IPL CASE 2ND HALF

E.Y. Industrial Sales, Inc. v. Shen Dar Electricity and Machinery Co., Ltd.

FACTS:

ISSUE:

Whether evidence presented before the BLA must be formally offered

Whether the IPO Director General can

validly cancel Shen Dars Certificate of Registration

Whether EYIS is the true owner of the mark VESPA

HELD:

The CA concluded that Shen Dar needed not formally offer its evidence but merely needed to attach
its evidence to its position paper with the proper markings,[26] which it did in this case.

The IP Code provides under its Sec. 10.3 that the Director General of the IPO shall establish the
procedure for the application for the registration of a trademark, as well as the opposition to it.

Thus, the Director General issued Office Order No. 79, Series of 2005 amending the regulations on
Inter Partes Proceedings, Sec. 12.1 of which provides:

Section 12. Evidence for the Parties

12.1. The verified petition or opposition, reply if any, duly marked affidavits of the witnesses, and the
documents submitted, shall constitute the entire evidence for the petitioner or opposer. The verified
answer, rejoinder if any, and the duly marked affidavits and documents submitted shall constitute the
evidence for the respondent. Affidavits, documents and other evidence not submitted and duly
marked in accordance with the preceding sections shall not be admitted as evidence.

The preceding sections referred to in the above provision refer to Secs. 7.1, 8.1 and 9 which, in turn,
provide:
Section 7. Filing of Petition or Opposition

7.1. The petition or opposition, together with the affidavits of witnesses and originals of the
documents and other requirements, shall be filed with the Bureau, provided, that in case of public
documents, certified copies shall be allowed in lieu of the originals. The Bureau shall check if the
petition or opposition is in due form as provided in the Regulations particularly Rule 3, Section 3; Rule
4, Section 2; Rule 5, Section 3; Rule 6, Section 9; Rule 7, Sections 3 and 5; Rule 8, Sections 3 and 4. For
petition for cancellation of layout design (topography) of integrated circuits, Rule 3, Section 3 applies
as to the form and requirements. The affidavits, documents and other evidence shall be marked
consecutively as Exhibits beginning with the letter A.

Section 8. Answer

8.1. Within three (3) working days from receipt of the petition or opposition, the Bureau shall issue an
order for the respondent to file an answer together with the affidavits of witnesses and originals of
documents, and at the same time shall notify all parties required to be notified in the IP Code and
these Regulations, provided, that in case of public documents, certified true copies may be submitted
in lieu of the originals. The affidavits and documents shall be marked consecutively as Exhibits
beginning with the number 1.
Section 9. Petition or Opposition and Answer must be verified Subject to Rules 7 and 8 of these
regulations, the petition or opposition and the answer must be verified. Otherwise, the same shall not
be considered as having been filed.

In other words, as long as the petition is verified and the pieces of evidence consisting of the
affidavits of the witnesses and the original of other documentary evidence are attached to the
petition and properly marked in accordance with Secs. 7.1 and 8.1 abovementioned, these shall be
considered as the evidence of the petitioner. There is no requirement under the abovementioned
rules that the evidence of the parties must be formally offered to the BLA.

In any case, as a quasi-judicial agency and as stated in Rule 2, Sec. 5 of the Regulations on Inter
Partes Proceedings, the BLA is not bound by technical rules of procedure. The evidence attached to
the petition may, therefore, be properly considered in the resolution of the case.

II.

in Lepanto Consolidated Mining Company v. Dumapis:[29]

While it is true that administrative or quasi-judicial bodies like the NLRC are not bound by the
technical rules of procedure in the adjudication of cases, this procedural rule should not be construed
as a license to disregard certain fundamental evidentiary rules. The evidence presented must at least
have a modicum of admissibility for it to have probative value. Not only must there be some evidence
to support a finding or conclusion, but the evidence must be substantial. Substantial evidence is more
than a mere scintilla. It means such relevant evidence as a reasonable mind might accept as adequate
to support a conclusion. Thus, even though technical rules of evidence are not strictly complied with
before the LA and the NLRC, their decision must be based on evidence that must, at the very least, be
substantial.

The fact that no petition for cancellation was filed against the COR issued to Shen Dar does not
preclude the cancellation of Shen Dars COR. It must be emphasized that, during the hearing for the
cancellation of EYIS COR before the BLA, Shen Dar tried to establish that it, not EYIS, was the true
owner of the mark VESPA and, thus, entitled to have it registered. Shen Dar had more than
sufficient opportunity to present its evidence and argue its case, and it did. It was given its day in
court and its right to due process was respected. The IPO Director Generals disregard of the
procedure for the cancellation of a registered mark was a valid exercise of his discretion.

III

In any event, given the length of time already invested by the parties in the instant case, this Court
must write finis to the instant controversy by determining, once and for all, the true owner of the
mark VESPA based on the evidence presented.
RA 8293 espouses the first-to-file rule as stated under Sec. 123.1(d) which states:

Section 123. Registrability. - 123.1. A mark cannot be registered if it:

xxxx

(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier
filing or priority date, in respect of:

(i) The same goods or services, or

(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion. (Emphasis
supplied.)

Under this provision, the registration of a mark is prevented with the filing of an earlier application
for registration. This must not, however, be interpreted to mean that ownership should be based
upon an earlier filing date. While RA 8293 removed the previous requirement of proof of actual use
prior to the filing of an application for registration of a mark, proof of prior and continuous use is
necessary to establish ownership of a mark. Such ownership constitutes sufficient evidence to
oppose the registration of a mark.

Sec. 134 of the IP Code provides that any person who believes that he would be damaged by the
registration of a mark x x x may file an opposition to the application. The term any person
encompasses the true owner of the markthe prior and continuous user.

Notably, the Court has ruled that the prior and continuous use of a mark may even overcome the
presumptive ownership of the registrant and be held as the owner of the mark. As aptly stated by the
Court in Shangri-la International Hotel Management, Ltd. v. Developers Group of Companies, Inc.:[37]

***Registration, without more, does not confer upon the registrant an absolute right to the
registered mark. The certificate of registration is merely a prima facie proof that the registrant is the
owner of the registered mark or trade name. Evidence of prior and continuous use of the mark or
trade name by another can overcome the presumptive ownership of the registrant and may very
well entitle the former to be declared owner in an appropriate case.

Ownership of a mark or trade name may be acquired not necessarily by registration but by adoption
and use in trade or commerce. As between actual use of a mark without registration, and
registration of the mark without actual use thereof, the former prevails over the latter. For a rule
widely accepted and firmly entrenched, because it has come down through the years, is that actual
use in commerce or business is a pre-requisite to the acquisition of the right of ownership.

By itself, registration is not a mode of acquiring ownership. When the applicant is not the owner of
the trademark being applied for, he has no right to apply for registration of the same. Registration
merely creates a prima facie presumption of the validity of the registration, of the registrants
ownership of the trademark and of the exclusive right to the use thereof. Such presumption, just
like the presumptive regularity in the performance of official functions, is rebuttable and must give
way to evidence to the contrary.

Here, the incontrovertible truth, as established by the evidence submitted by the parties, is that
EYIS is the prior user of the mark. The exhaustive discussion on the matter made by the BLA
sufficiently addresses the issue:

Based on the evidence, Respondent E.Y. Industrial is a legitimate corporation engaged in buying,
importing, selling, industrial machineries and tools, manufacturing, among others since its
incorporation in 1988. (Exhibit 1). Indeed private respondents have submitted photographs (Exhibit
376, 377, 378, 379) showing an assembly line of its manufacturing or assembly process.

More importantly, the private respondents prior adoption and continuous use of the mark VESPA on
air compressors is bolstered by numerous documentary evidence consisting of sales invoices issued
in the name of respondent EY Industrial and Bills of Lading. (Exhibits 4 to 375). Sales Invoice No.
12075 dated March 27, 1995 antedates petitioners date of first use in January 1, 1997 indicated in
its trademark application filed in June 9, 1997 as well as the date of first use in June of 1996 as
indicated in the Declaration of Actual Use submitted on December 3, 2001 (Exhibit 385). The use by
respondent-registrant in the concept of owner is shown by commercial documents, sales invoices
unambiguously describing the goods as VESPA air compressors. Private respondents have sold the
air compressors bearing the VESPA to various locations in the Philippines, as far as Mindanao and
the Visayas since the early 1990s. We carefully inspected the evidence consisting of three hundred
seventy one (371) invoices and shipment documents which show that VESPA air compressors were
sold not only in Manila, but to locations such as Iloilo City, Cebu City, Dumaguete City, Zamboanga
City, Cagayan de Oro City, Davao City to name a few. There is no doubt that it is through private
respondents efforts that the mark VESPA used on air compressors has gained business goodwill and
reputation in the Philippines for which it has validly acquired trademark rights. Respondent EY
Industrials right has been preserved until the passage of RA 8293 which entitles it to register the
same. x x x[38]

On the other hand, Shen Dar failed to refute the evidence cited by the BLA in its decision. More
importantly, Shen Dar failed to present sufficient evidence to prove its own prior use of the mark
VESPA. We cite with approval the ruling of the BLA:

[Shen Dar] avers that it is the true and rightful owner of the trademark VESPA used on air
compressors. The thrust of [Shen Dars] argument is that respondent E.Y. Industrial Sales, Inc. is a
mere distributor of the VESPA air compressors. We disagree.

This conclusion is belied by the evidence. We have gone over each and every document attached as
Annexes A, A 1-48 which consist of Bill of Lading and Packing Weight List. Not one of these
documents referred to a VESPA air compressor. Instead, it simply describes the goods plainly as air
compressors which is type SD and not VESPA. More importantly, the earliest date reflected on the
Bill of Lading was on May 5, 1997. (Annex A-1). [Shen Dar] also attached as Annex B a purported
Sales Contract with respondent EY Industrial Sales dated April 20, 2002. Surprisingly, nowhere in the
document does it state that respondent EY Industrial agreed to sell VESPA air compressors. The
document only mentions air compressors which if genuine merely bolsters respondent Engracio
Yaps contention that [Shen Dar] approached them if it could sell the Shen Dar or SD air compressor.
(Exhibit 386) In its position paper, [Shen Dar] merely mentions of Bill of Lading constituting
respondent as consignee in 1993 but never submitted the same for consideration of this Bureau.
The document is also not signed by [Shen Dar]. The agreement was not even drafted in the
letterhead of either [Shen Dar] nor [sic] respondent registrant. Our only conclusion is that [Shen
Dar] was not able to prove to be the owner of the VESPA mark by appropriation. Neither was it able
to prove actual commercial use in the Philippines of the mark VESPA prior to its filing of a trademark
application in 9 June 1997.[39]

As such, EYIS must be considered as the prior and continuous user of the mark VESPA and its true
owner. Hence, EYIS is entitled to the registration of the mark in its name.

UNILEVER VS TAN

FACTS:

ISSUE:

whether the CA committed a reversible error in upholding the Acting Secretary of Justice’s decision
dismissing the information against the respondent.

HELD:

The term "grave abuse of discretion" means such capricious or whimsical exercise of judgment which
is equivalent to lack of jurisdiction. To justify judicial intervention, the abuse of discretion must be so
patent and gross as to amount to an evasion of a positive duty or to a virtual refusal to perform a duty
enjoined by law or to act at all in contemplation of law, as where the power is exercised in an arbitrary
and despotic manner by reason of passion or hostility.15 In Elma v. Jacobi,16 we said that:
This error or abuse alone, however, does not render his act amenable to correction and annulment by
the extraordinary remedy of certiorari. To justify judicial intrusion into what is fundamentally the
domain of the Executive, the petitioner must clearly show that the prosecutor gravely abused his
discretion amounting to lack or excess of jurisdiction in making his determination and in arriving at the
conclusion he reached. This requires the petitioner to establish that the prosecutor exercised his
power in an arbitrary and despotic manner by reason of passion or personal hostility; and it must be
so patent and gross as to amount to an evasion or to a unilateral refusal to perform the duty enjoined
or to act in contemplation of law, before judicial relief from a discretionary prosecutorial action may
be obtained. [emphasis supplied]

An examination of the decisions of the State Prosecutor and of the DOJ shows that the complaint’s
dismissal was anchored on the insufficiency of evidence to establish the respondent’s direct, personal
or actual participation in the offense charged. As the State Prosecutor found (and affirmed by the
DOJ), the petitioner failed to prove the ownership of the warehouse where counterfeit shampoo
products were found. This finding led to the conclusion that there was insufficient basis for an
indictment for unfair competition as the petitioner failed to sufficiently prove that the respondent was
the owner or manufacturer of the counterfeit shampoo products found in the warehouse.

***A careful analysis of the lower courts’ rulings and the records, however, reveals that substantial
facts and circumstances that could affect the result of the case have been overlooked. While the
ownership of the warehouse on Camia Street, Marikina City, was not proven, sufficient evidence to
prove the existence of probable cause nevertheless exists. These pieces of evidence consist of: (1)
the result of the NBI agents’ search of the office and of the warehouse; (2) Elmer Cadano’s
complaint-affidavit; (3) Rene Baltazar’s affidavit; (4) Unilever’s representatives’ claim that all the
laborers present at the warehouse confirmed that it was operated by Probest International Trading;
(5) other object evidence found and seized at the respondent’s office and warehouse; (6) the NBI
operatives’ Joint Affidavit; (7) the subsequent seizure of counterfeit Unilever products from the
respondent’s warehouse in Antipolo City; and (8) other photographs and documents relative to the
counterfeit products.

These pieces of evidence, to our mind, are sufficient to form a reasonable ground to believe that the
crime of unfair competition was committed and that the respondent was its author.

First, a total of 1,238 assorted counterfeit Unilever products were found at, and seized from, the
respondent’s office located on the 3rd floor of Probest International Trading Building, Katipunan
Street, Concepcion, Marikina City. The huge volume and the location where these shampoos were
found (inside a box under a pile of other boxes located inside the respondent’s office) belie the
respondent’s claim of personal consumption. Human experience and common sense dictate that
shampoo products (intended for personal consumption) will ordinarily and logically be found inside
the house, specifically, inside the bathroom or in a private room, not in the consumer’s office.

Second, the failure to prove that the respondent is the owner of the warehouse located on Camia
St., Marikina City, does not automatically free him from liability. Proof of the warehouse’s
ownership is not crucial to the finding of probable cause. In fact, ownership of the establishment
where the counterfeit products were found is not even an element of unfair competition. While the
respondent may not be its owner, this does not foreclose the possibility that he was the manufacturer
or distributor of the counterfeit shampoo products. Needless to say, what is material to a finding of
probable cause is the commission of acts constituting unfair competition, the presence of all its
elements and the reasonable belief, based on evidence, that the respondent had committed it.

Third, the result of the NBI’s search conducted on January 17, 2002 (yielding to several boxes of
counterfeit shampoo sachets) and the NBI’s Joint Affidavits in support of the application for search
warrants serve as corroborating evidence. The striking similarities17 between the genuine Unilever
shampoo sachets and the counterfeit sachets seized by the NBI support the belief that the
respondent had been engaged in dealing, manufacturing, selling and distributing counterfeit
Unilever shampoo products.
Fourth, there were also allegations that the respondent’s laborers and warehousemen who were
present during the search had confirmed that the warehouse was being maintained and operated
by Probest International Trading. The NBI investigators who served the search warrant also claimed
that several persons, introducing themselves as the respondent’s relatives and friends, had
requested them to seize only a portion of the counterfeit shampoo products. Whether these claims
are admissible in evidence or whether they should be excluded as hearsay are matters that should
be determined not in a preliminary investigation, but in a full-blown trial.

In Lee v. KBC Bank N.V.,18 citing Andres v. Justice Secretary Cuevas,19 we held that:

[A preliminary investigation] is not the occasion for the full and exhaustive display of [the
prosecution’s] evidence.1âwphi1 The presence or absence of the elements of the crime is evidentiary
in nature and is a matter of defense that may be passed upon after a full-blown trial on the merits.

We also emphasized in that case that:

In fine, the validity and merits of a party’s defense or accusation, as well as the admissibility of
testimonies and evidence, are better ventilated during trial proper than at the preliminary
investigation level.20

Finally, the subsequent events that occurred – after the filing of the petitioner’s complaint and the
institution of its appeal to the CA – are too significant to be ignored.

In its motion to reconsider the CA’s decision,21 the petitioner pointed to the reports it received
sometime in October 2005 that the respondent had resumed its operations involving counterfeit
Unilever products. Notably, these significant reports, albeit supported by the subsequent seizure of
large quantity of counterfeit Unilever shampoos22 in the respondent’s warehouse23 (located at No.
13 First Street Corner Sevilla Avenue, Virginia Summerville Subdivision, Barangay Mambugan, Antipolo
City), were ignored by the CA. We, however, find that this development is significant, although they
were not part of the mass of evidence considered below. Even without them and based solely on the
evidentiary materials available below, we conclude that sufficient grounds exist to indict the
respondent for unfair competition.

UYCO VS LO

FACTS:

ISSUE:

WON there is a grave abuse of discretion

HELD:

When the petitioners filed their petition before us, we denied the petition for failure to sufficiently
show any reversible error in the assailed judgment to warrant the exercise of the Court’s discretionary
power.

We find no reversible error on the part of the CA and the DOJ to merit reconsideration. The petitioners
reiterate their argument that the products bought during the test buy bearing the trademarks in
question were not manufactured by, or in any way connected with, the petitioners and/or Wintrade.
They also allege that the words "Made in Portugal" and "Original Portugal" refer to the origin of the
design and not to the origin of the goods.

The petitioners again try to convince the Court that they have not manufactured the products bearing
the marks "Made in Portugal" and "Original Portugal" that were bought during the test buy. However,
their own admission and the statement given by Chua bear considerable weight.
The admission in the petitioners’ Joint Affidavit is not in any way hypothetical, as they would have us
believe. They narrate incidents that have happened. They refer to Wintrade’s former association with
Casa Hipolito S.A. Portugal; to their decision to produce the burners in the Philippines; to their use of
the disputed marks; and to their justification for their use. It reads as follows:

24. As earlier mentioned, the predecessor-in-interest of Wintrade was the former exclusive licensee of
Casa Hipolito SA of Portugal since the 1970’s, and that Wintrade purchased all the rights on the said
trademarks prior to the closure of said company. Indeed, the burners sold by Wintrade used to be
imported from Portugal, but Wintrade later on discovered the possibility of obtaining these burners
from other sources or of manufacturing the same in the Philippines.

Wintrade’s decision to procure these burners from sources other than Portugal is certainly its
management prerogative. The presence of the words "made in Portugal" and "original Portugal" on
the wrappings of the burners and on the burners themselves which are manufactured by Wintrade is
an allusion to the fact that the origin of the design of said burners can be traced back to Casa Hipolito
SA of Portugal, and that the history of the manufacture of said burners are rooted in Portugal. These
words were not intended to deceive or cause mistake and confusion in the minds of the buying
public.9

Chua, the owner of National Hardware — the place where the test buy was conducted — admits that
Wintrade has been furnishing it with kerosene burners with the markings "Made in Portugal" for the
past 20 years, to wit:

5. I hereby manifests (sic) that I had been dealing with Wintrade Industrial Sales Corporation
(WINTRADE for brevity) for around 20 years now by buying products from it. I am not however aware
that WINTRADE was no longer authorized to deal, distribute or sell kerosene burner bearing the mark
HIPOLITO and SEA HORSE Device, with markings "Made in Portugal" on the wrapper as I was never
informed of such by WINTRADE nor was ever made aware of any notices posted in the newspapers
informing me of such fact. Had I been informed, I would have surely stopped dealing with
WINTRADE.101âwphi1

Thus, the evidence shows that petitioners, who are officers of Wintrade, placed the words "Made in
Portugal" and "Original Portugal" with the disputed marks knowing fully well — because of their
previous dealings with the Portuguese company — that these were the marks used in the products
of Casa Hipolito S.A. Portugal. More importantly, the products that Wintrade sold were admittedly
produced in the Philippines, with no authority from Casa Hipolito S.A. Portugal. The law on
trademarks and trade names precisely precludes a person from profiting from the business
reputation built by another and from deceiving the public as to the origins of products. These facts
support the consistent findings of the State Prosecutor, the DOJ and the CA that probable cause
exists to charge the petitioners with false designation of origin. The fact that the evidence did not
come from Lo, but had been given by the petitioners, is of no significance.

The argument that the words "Made in Portugal" and "Original Portugal" refer to the origin of the
design and not to the origin of the goods does not negate the finding of probable cause; at the same
time, it is an argument that the petitioners are not barred by this Resolution from raising as a
defense during the hearing of the case.

WHEREFORE, premises considered, we hereby DENY the motion for reconsideration for lack of
merit.

JOAQUIN VS DRILON

FACTS:
ISSUE:

WON THEERE IS COPYRIGHT I NFRINGEMENT

HELD:

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

Petitioners assert that the format of Rhoda and Me is a product of ingenuity 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 clearly demonstrates the nexus between the shows
and hence establishes the existence of probable cause for copyright infringement. Such being the
case, they did not have to produce the master tape.

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, enumerates the classes of work entitled to
copyright protection

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.

HABANA vs ROBLES

FACTS:

ISSUE:

whether or not, despite the apparent textual, thematic and sequential similarity between DEP and
CET, respondents committed no copyright infringement; (2) whether or not there was animus furandi
on the part of respondent when they refused to withdraw the copies of CET from the market despite
notice to withdraw the same; and (3) whether or not respondent Robles abused a writers right to fair
use, in violation of Section 11 of Presidential Decree No. 49

HELD:

We find the petition impressed with merit.

The complaint for copyright infringement was filed at the time that Presidential Decree No. 49 was in
force. At present, all laws dealing with the protection of intellectual property rights have been
consolidated and as the law now stands, the protection of copyrights is governed by Republic Act No.
8293. Notwithstanding the change in the law, the same principles are reiterated in the new law
under Section 177. It provides for the copy or economic rights of an owner of a copyright as follows

The law also provided for the limitations on copyright, thus:

Sec. 184.1 Limitations on copyright.-- Notwithstanding the provisions of Chapter V, the following acts
shall not constitute infringement of copyright:

(a) the recitation or performance of a work, once it has been lawfully made accessible to the public,
if done privately and free of charge or if made strictly for a charitable or religious institution or
society; [Sec. 10(1), P.D. No. 49]

(b) The making of quotations from a published work if they are compatible with fair use and only to
the extent justified for the purpose, including quotations from newspaper articles and periodicals in
the form of press summaries; Provided, that the source and the name of the author, if appearing on
the work are mentioned; (Sec. 11 third par. P.D.49)

xxxxxxxxxxxx

(e) The inclusion of a work in a publication, broadcast, or other communication to the public, sound
recording of film, if such inclusion is made by way of illustration for teaching purposes and is
compatible with fair use: Provided, That the source and the name of the author, if appearing in the
work is mentioned;

On page 100 of the book DEP[25], also in the topic of parallel structure and repetition, the same
example is found in toto. The only difference is that petitioners acknowledged the author Edmund
Burke, and respondents did not.

In several other pages[26] the treatment and manner of presentation of the topics of DEP are similar
if not a rehash of that contained in CET.

We believe that respondent Robles act of lifting from the book of petitioners substantial portions of
discussions and examples, and her failure to acknowledge the same in her book is an infringement
of petitioners copyrights.

When is there a substantial reproduction of a book? It does not necessarily require that the entire
copyrighted work, or even a large portion of it, be copied. If so much is taken that the value of the
original work is substantially diminished, there is an infringement of copyright and to an injurious
extent, the work is appropriated.[27]

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.[28]

The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its
gravity by an appropriate understanding thereof. Infringement of a copyright is a trespass on a
private domain owned and occupied by the owner of the copyright, and, therefore, protected by
law, and infringement of copyright, or piracy, which is a synonymous term in this connection,
consists in the doing by any person, without the consent of the owner of the copyright, of anything
the sole right to do which is conferred by statute on the owner of the copyright.[
A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such
cases, did not know whether or not he was infringing any copyright; he at least knew that what he
was copying was not his, and he copied at his peril.[30]

The next question to resolve is to what extent can copying be injurious to the author of the book
being copied. Is it enough that there are similarities in some sections of the books or large segments
of the books are the same?

In the case at bar, there is no question that petitioners presented several pages of the books CET
and DEP that more or less had the same contents. It may be correct that the books being grammar
books may contain materials similar as to some technical contents with other grammar books, such
as the segment about the Author Card. However, the numerous pages that the petitioners
presented showing similarity in the style and the manner the books were presented and the
identical examples can not pass as similarities merely because of technical consideration.

The respondents claim that their similarity in style can be attributed to the fact that both of them
were exposed to the APCAS syllabus and their respective academic experience, teaching approach
and methodology are almost identical because they were of the same background.

However, we believe that even if petitioners and respondent Robles were of the same background
in terms of teaching experience and orientation, it is not an excuse for them to be identical even in
examples contained in their books. The similarities in examples and material contents are so
obviously present in this case. How can similar/identical examples not be considered as a mark of
copying?

We consider as an indicia of guilt or wrongdoing the act of respondent Robles of pulling out from
Goodwill bookstores the book DEP upon learning of petitioners complaint while pharisaically
denying petitioners demand. It was further noted that when the book DEP was re-issued as a
revised version, all the pages cited by petitioners to contain portion of their book College English for
Today were eliminated.

In cases of infringement, copying alone is not what is prohibited. The copying must produce an
injurious effect. Here, the injury consists in that respondent Robles lifted from petitioners book
materials that were the result of the latters research work and compilation and misrepresented
them as her own. She circulated the book DEP for commercial use and did not acknowledge
petitioners as her source.

Hence, there is a clear case of appropriation of copyrighted work for her benefit that respondent
Robles committed. Petitioners work as authors is the product of their long and assiduous research
and for another to represent it as her own is injury enough. In copyrighting books the purpose is to
give protection to the intellectual product of an author. This is precisely what the law on copyright
protected, under Section 184.1 (b). Quotations from a published work if they are compatible with
fair use and only to the extent justified by the purpose, including quotations from newspaper
articles and periodicals in the form of press summaries are allowed provided that the source and
the name of the author, if appearing on the work, are mentioned.

In the case at bar, the least that respondent Robles could have done was to acknowledge petitioners
Habana et. al. as the source of the portions of DEP. The final product of an authors toil is her book.
To allow another to copy the book without appropriate acknowledgment is injury enough.