ABS CBN vs. Phil.

Multimedia

Facts:

Petitioner ABS-CBN, a broadcasting corporation, filed a complaint against respondent PMSI alleging that
the latter’s unauthorized rebroadcasting of Channels 2 and 23 infringed on its broadcasting rights and
copyright. PMSI posits that it was granted a franchise to operate a digital direct-to-home satellite service
and that the rebroadcasting was in accordance with the NTC memo to carry television signals of
authorized television broadcast stations, which includes petitioner’s programs. The IPO Bureau of Legal
Affairs found PMSI to have infringed petitioner’s broadcasting rights and ordered it to permanently desist
from rebroadcasting. On appeal, the IPO Director General found for PMSI. CA affirmed.

Issue:

Whether or not petitioner’s broadcasting rights and copyright are infringed.

Ruling: NO.

The Director-General of the IPO correctly found that PMSI is not engaged in rebroadcasting and thus
cannot be considered to have infringed ABS-CBN’s broadcasting rights and copyright.

Section 202.7 of the IP Code defines broadcasting as “the transmission by wireless means for the public
reception of sounds or of images or of representations thereof; such transmission by satellite is also
‘broadcasting’ where the means for decrypting are provided to the public by the broadcasting
organization or with its consent.” On the other hand, rebroadcasting as defined in Article 3(g) of the
International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting
Organizations, otherwise known as the 1961 Rome Convention, of which the Republic of the Philippines
is a signatory, is “the simultaneous broadcasting by one broadcasting organization of the broadcast of
another broadcasting organization.” The Working Paper prepared by the Secretariat of the Standing
Committee on Copyright and Related Rights defines broadcasting organizations as “entities that take the
financial and editorial responsibility for the selection and arrangement of, and investment in, the
transmitted content.” Evidently, PMSI would not qualify as a broadcasting organization because it does
not have the aforementioned responsibilities imposed upon broadcasting organizations, such as ABS-
CBN.

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

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Ching vs Salinas

Facts:

Petitioner Ching is a maker and manufacturer of a utility model, Leaf Spring Eye Bushing for Automobile,
for which he holds certificates of copyright registration. Petitioner’s request to the NBI to apprehend and
prosecute illegal manufacturers of his work led to the issuance of search warrants against respondent
Salinas, alleged to be reproducing and distributing said models in violation of the IP Code. Respondent
moved to quash the warrants on the ground that petitioner’s work is not artistic in nature and is a
proper subject of a patent, not copyright. Petitioner insists that the IP Code protects a work from the
moment of its creation regardless of its nature or purpose. The trial court quashed the warrants.
Petitioner argues that the copyright certificates over the model are prima facie evidence of its validity.
CA affirmed the trial court’s decision.

Issues:

(1) Whether or not petitioner’s model is an artistic work subject to copyright protection.

(2) Whether or not petitioner is entitled to copyright protection on the basis of the certificates of
registration issued to it.

Ruling:

(1) NO. 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 and Vehicle Bearing Cushion are merely
utility models. 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. 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. Indeed, while works of
applied art, original intellectual, literary and artistic works are copyrightable, useful articles and works of
industrial design are not. 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. In this case, the bushing
and cushion are not works of art. They are, as the petitioner himself admitted, utility models which may
be the subject of a patent.

(2) NO. 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 and Pearl & Dean (Phil.), Incorporated v. Shoemart,
Incorporated, 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.

Ownership of copyrighted material is shown by proof of originality and copyrightability. To discharge his
burden, the applicant may present the certificate of registration covering the work or, in its absence,
other evidence. A copyright certificate provides prima facie evidence of originality which is one element
of copyright validity. It constitutes prima facie evidence of both validity and ownership and the validity of
the facts stated in the certificate.

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ROBERTO CO vs. KENG HUAN JERRY YEUNG AND EMMA YEUNG G.R. No. 212705, 10 September 2014

FACTS:

Ruivivar bought a bottle of Greenstone from Royal Chinese Drug Store in Binondo, Manila, owned by Ling
Na Lau. However, he doubted its authenticity because it had a different smell, and the heat it produced
was not as strong as the original Greenstone he frequently used. He then informed his brother-in-law
Yeung, the owner of Greenstone Pharmaceutical. The latter went to Royal and found 7 bottles of
counterfeit Greenstone on display for sale. He was told by Pinky Lau – the store’s proprietor – that the
items came from Co of KiaoAn Chinese Drug Store. According to Pinky, Co offered the products as
“Tienchi Fong Sap Oil Greenstone” (Tienchi) which she eventually availed from him.

Sps. Yeung filed a civil complaint for trademark infringement and unfair competition before the RTC
against Ling Na Lau, her sister Pinky Lau, and Co for allegedly conspiring in the sale of counterfeit
Greenstone products to the public.

The RTC ruled in favor of Sps. Yeung. It found that the Sps. Yeung had proven by preponderance of
evidence that the Laus and Co committed unfair competition through their conspiracy to sell counterfeit
Greenstone products that resulted in confusion and deception not only to the ordinary purchaser, like
Ruivivar, but also to the public. It, however, did not find the Laus and Co liable for trademark
infringement as there was no showing that the trademark “Greenstone” was registered at the time the
acts complained of occurred. CA affirmed the RTC Decision.

ISSUE:

Whether or not only suit for unfair competition will prosper considering the trademark was not
registered.

HELD:

Yes, the defendants cannot be liable for trademark infringement. In the case at bar, the Court defined
unfair competition as the passing off (or palming off) or attempting to pass off upon the public of the
goods or business of one person as the goods or business of another with the end and probable effect of
deceiving the public. This takes place where the defendant gives his goods the general appearance of the
goods of his competitor with the intention of deceiving the public that the goods are those of his
competitor.

Here, it has been established that Co conspired with the Laus in the sale/distribution of counterfeit
Greenstone products to the public, which were even packaged in bottles identical to that of the original,
thereby giving rise to the presumption of fraudulent intent.

Although liable for unfair competition, the Court deems it apt to clarify that Co was properly exculpated
from the charge of trademark infringement considering that the registration of the trademark
“Greenstone”– essential as it is in a trademark infringement case – was not proven to have existed
during the time the acts complained of were committed. In this relation, the distinctions between suits
for trademark infringement and unfair competition prove useful: (a) the former is the unauthorized use
of a trademark, whereas the latter is the passing off of one’s goods as those of another; (b) fraudulent
intent is unnecessary in the former, while it is essential in the latter; and (c) in the former, prior
registration of the trademark is a pre-requisite to the action, while it is not necessary in the latter.

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SHANG PROPERTIES REALTY CORPORATION v. ST. FRANCIS DEVELOPMENT CORPORATION, GR No.

190706, 2014-07-21

Facts:
Respondent a domestic corporation engaged in the real estate business and the developer of the St.
Francis Square Commercial Center, built sometime in 1992, located at Ortigas Center, Mandaluyong City,
Metro Manila (Ortigas Center)[4] filed separate... complaints against petitioners before the IPO - Bureau
of Legal Affairs (BLA), namely: (a) an intellectual property violation case for unfair competition, false or
fraudulent declaration, and damages arising from petitioners' use and filing of applications... for the
registration of the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE,"
docketed as IPV Case No. 10-2005-00030 (IPV Case); and (b) an inter partes case opposing the
petitioners' application for registration of the... mark "THE ST. FRANCIS TOWERS" for use relative to the
latter's business, particularly the construction of permanent buildings or structures for residential and
office purposes, docketed as Inter Partes Case No. 14-2006-00098 (St. Francis Towers IP Case); and

(c) an inter partes case opposing the petitioners' application for registration of the mark "THE ST.
FRANCIS SHANGRI-LA PLACE," docketed as IPC No. 14-2007-00218 (St. Francis Shangri-La IP Case).

Issues:

the sole issue thus left for the Court's resolution is whether or not petitioners are guilty of unfair
competition in using the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE."

Ruling:

The "true test" of unfair competition has thus been "whether the acts of the defendant have the intent
of deceiving or are... calculated to deceive the ordinary buyer making his purchases under the ordinary
conditions of the particular trade to which the controversy relates."

Here, the Court finds the element of fraud to be wanting; hence, there can be no unfair competition.

The CA's contrary conclusion was faultily premised on its impression that respondent had the right to the
exclusive use of the mark "ST. FRANCIS," for which the latter had... purportedly established considerable
goodwill. What the CA appears to have disregarded or been mistaken in its disquisition, however, is the
geographically-descriptive nature of the mark "ST. FRANCIS" which thus bars its exclusive appropriability,
unless a secondary meaning is... acquired.

A 'geographically descriptive term' is any noun or adjective that designates geographical location and
would tend to be regarded by buyers as descriptive of the geographic location of origin of the goods or
services.

secondary meaning is established when a descriptive mark no longer causes the public to associate the
goods with a particular place, but to associate the... goods with a particular source.
Under Section 123.2[34] of the IP Code, specific requirements have to be met in order to conclude that a
geographically-descriptive mark has acquired secondary meaning, to wit: (a) the secondary meaning
must have arisen as a result of... substantial commercial use of a mark in the Philippines; (b) such use
must result in the distinctiveness of the mark insofar as the goods or the products are concerned; and (c)
proof of substantially exclusive and continuous commercial... use in the Philippines for five (5) years
before the date on which the claim of distinctiveness is made.

In fact, even on the assumption that secondary meaning had been acquired, said finding only accords
respondents protectional qualification under Section 168.1 of the IP Code as above quoted. Again, this
does not automatically trigger the concurrence of the fraud element required... under Section 168.2 of
the IP Code,... Hence, for all the reasons above-discussed, the Court hereby grants the instant petition,
and, thus, exonerates petitioners from the charge of unfair competition in the IPV Case.

Principles:

In order to determine whether or not the... geographic term in question is descriptively used, the
following question is relevant: (1) Is the mark the name of the place or region from which the goods
actually come? If the answer is yes, then the geographic term is probably used in a descriptive sense,
and secondary... meaning is required for protection.

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GR NO. 221732, August 23, 2017

FERNANDO U. JUAN v. ROBERTO U. JUAN (SUBSTITUTED BY HIS SON JEFFREY C. JUAN) AND
LAUNDROMATIC CORPORATION

Facts:

Respondent Roberto U. Juan claimed that he began using the name and mark "Lavandera Ko" in his
laundry business on July 4, 1994. He then opened his laundry store at No. 119 Alfaro St., Salcedo St.,
Makati City in 1995. Thereafter, on March 17, 1997, the National Library issued to him a certificate of
copyright over said name and mark. Over the years, the laundry business expanded with numerous
franchise outlets in Metro Manila and other provinces. Respondent Roberto then formed a corporation
to handle the said business, hence, Laundromatic Corporation

(Laundromatic)

was incorporated in 1997, while "Lavandera Ko" was registered as a business name on November 13,
1998 with the Department of Trade and Industry

(DTI)
. Thereafter, respondent Roberto discovered that his brother, petitioner Fernando was able to register
the name and mark "Lavandera Ko" with the Intellectual Property Office

(IPO)

on October 18, 2001, the registration of which was filed on June 5, 1995. Respondent Roberto also
alleged that a certain Juliano Nacino

(Juliano)

had been writing the franchisees of the former threatening them with criminal and civil cases if they did
not stop using the mark and name "Lavandera Ko." It was found out by respondent Roberto that
petitioner Fernando had been selling his own franchises. Thus, respondent Roberto filed a petition for
injunction, unfair competition, infringement of copyright, cancellation of trademark and name with/and
prayer for TRO and Preliminary Injunction with the Regional Trial Court (RTC) and the case was raffled off
at Branch 149, Makati City. The RTC issued a writ of preliminary injunction against petitioner Fernando in
Order dated June 10, 2004. On July 21, 2008, due to the death of respondent Roberto, the latter was
substituted by his son, Christian Juan

(Christian)

. Pre-trial conference was concluded on July 13, 2010 and after the presentation of evidence of both
parties, the RTC rendered a Resolution dated September 23, 2013, dismissing the petition and ruling
that neither of the parties had a right to the exclusive use or appropriation of the mark "Lavandera Ko"
because the same was the original mark and work of a certain Santiago S. Suarez

(Santiago)

. According to the RTC, the mark in question was created by Suarez in 1942 in his musical composition
called, "Lavandera Ko" and both parties of the present case failed to prove that they were the originators
of the same mark. Herein petitioner elevated the case to the CA through a notice of appeal. In his
appeal, petitioner contended that a mark is different from a copyright and not interchangeable. The CA,
in its Decision dated May 7, 2015, dismissed the petitioner's appeal based on technical grounds. Issues:
1. WHETHER OR NOT THE DISMISSAL OF THE APPEAL BY THE COURT OF APPEALS ON PURELY TECHNICAL
GROUNDS WAS PROPER CONSIDERING THAT THE CASE BEFORE IT CAN BE RESOLVED BASED ON THE
BRIEF ITSELF. No. The petition is meritorious. Rules of procedure must be used to achieve speedy and
efficient administration of justice and not derail it. Technicality should not be allowed to stand in the way
of equitably and completely resolving the rights and obligations of the parties. It is, settled that liberal
construction of the rules may be invoked in

situations where there may be some excusable formal deficiency or error in a pleading, provided that the
same does not subvert the essence of the proceeding and it at least connotes a reasonable attempt at
compliance with the rules. In

Aguam v. CA
, this Court ruled that: x x x Technicalities, however, must be avoided. The law abhors technicalities that
impede the cause of justice. The court's primary duty is to render or dispense justice. "A litigation is not
a game of technicalities." "Law suits, unlike duels, are not to be won by a rapier's thrust. Technicality,
when it deserts its proper office as an aid to justice and becomes its great hindrance and chief enemy,
deserves scant consideration from courts." Litigations must be decided on their merits and not on
technicality. Every party litigant must be afforded the amplest opportunity for the proper and just
determination of his cause, free from the unacceptable plea of technicalities. Thus, dismissal of appeals
purely on technical grounds is frowned upon where the policy of the court is to encourage hearings of
appeals on their merits and the rules of procedure ought not to be applied in a very rigid, technical
sense; rules of procedure are used only to help secure, not override substantial justice. It is a far better
and more prudent course of action for the court to excuse a technical lapse and afford the parties a
review of the case on appeal to attain the ends of justice rather than dispose of the case on technicality
and cause a grave injustice to the parties, giving a false impression of speedy disposal of cases while
actually resulting in more delay, if not a miscarriage of justice. In this case, this Court finds that a liberal
construction of the rules is needed due to the novelty of the issues presented. Besides, petitioner had a
reasonable attempt at complying with the rules. After all, the ends of justice are better served when
cases are determined on the merits, not on mere technicality. 2. WHETHER OR NOT A MARK IS THE
SAME AS A COPYRIGHT. No. The law on trademarks, service marks and trade names are found under
Part III of Republic Act (R.A.) No. 8293, or the

Intellectual Code of the Philippines

, while Part IV of the same law governs copyrights. "Lavandera Ko," the mark in question in this case is
being used as a trade name or specifically, a service name since the business in which it pertains involves
the rendering of laundry services. Under Section 121.1 of R.A. No. 8293, "mark" is defined as any visible
sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall
include a stamped or marked container of goods. As such, the basic contention of the parties is, who has
the better right to use "Lavandera Ko" as a service name because Section 165.2

13

of the said law, guarantees the protection of trade names and business names even prior to or without
registration, against any unlawful act committed by third parties. A cause of action arises when the
subsequent use of any third party of such trade name or business name would likely mislead the public
as such act is considered unlawful. Hence, the RTC erred in denying the parties the proper
determination as to who has the ultimate right to use the said trade name by ruling that neither of them
has the right or a cause of action since "Lavandera Ko" is protected by a copyright. By their very
definitions, copyright and trade or service name are different. Copyright is the right of literary property
as recognized and sanctioned by positive law.

14
An intangible, incorporeal right granted by statute to the author or originator of certain literary or
artistic productions, whereby he is invested, for a limited period, with the sole and exclusive privilege of
multiplying copies of the same and publishing and selling them.

15

Trade name, on the other hand, is any designation which (a) is adopted and used by person to
denominate goods which he markets, or services which he renders, or business which he conducts, or
has come to be so used by other, and (b) through its association with such goods, services or business,
has acquired a special significance as the name thereof, and (c) the use of which for the purpose stated
in (a) is prohibited neither by legislative enactment nor by otherwise defined public policy.

As such, "Lavandera Ko," being a musical composition with words is protected under the copyright law
(Part IV, R.A. No. 8293) and not under the trademarks, service marks and trade names law (Part III, R.A.
No. 8293). In connection therewith, the RTC's basis or source, an article appearing in a website,

17

in ruling that the song entitled "Lavandera Ko" is protected by a copyright, cannot be considered a
subject of judicial notice that does not need further authentication or verification. Judicial notice is the
cognizance of certain facts that judges may properly take and act on without proof because these facts
are already known to them.

18

Put differently, it is the assumption by a court of a fact without need of further traditional evidentiary
support. The principle is based on convenience and expediency in securing and introducing evidence on
matters which are not ordinarily capable of dispute and are not bona fide disputed.

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UNILEVER Philippines vs. CA and Procter and Gamble, Phils Inc., G.R. No. 119280, (August 10, 2006), 498
SCRA 334

Ruling:

F 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