The functional components of useful articles, no matter how
COPYRIGHT - CASE SUMMARIES
Copyrightable works
Pearl and Dean v SMI
1. A trademark is 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. In relation
thereto,
2. a trade name means the name or designation
identifying or distinguishing an enterprise.
3. 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 moment of their
creation.
4. Patentable inventions, on the other hand, refer to
any technical solution of a problem in any field of
human activity which is new, involves an inventive
step and is industrially applicable.
Here the court held that the copyright protection extended
only to the technical drawings within the category of "pictorial
illustrations." The light box itself was neither a literary not an
artistic work but an "engineering or marketing invention."
Kho v CA
Kho has no right to support her claim for the exclusive use of
the subject trade name and container of Chin Chun Su. The
name and container of a beauty cream product are proper
subjects of a trademark inasmuch as the same falls squarely
within its definition. In order to be entitled to exclusively use
the same in the sale of the beauty cream product, the user
must sufficiently prove that she registered or used it before
anybody else did.
Kho’s copyright and patent registration of the name and
container would not guarantee her the right to the exclusive
use of the same for the reason that they are not appropriate
subjects of the said intellectual rights.
Unilever v CA
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
Unilever’s contention, the intellectual creator’s 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.
Doctrine of Conceptual Separability
(Denicola Test)
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artistically designed, is denied copyright protection unless they
are separable from the useful article.
Ching v Salinas
The Leaf Spring Eye Bushing was held to be a utility model. 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. 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.
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. 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.
Functional components of useful articles, no matter how
artistically designed, have generally been denied copyright
protection unless they are separable from the useful article.
In this case, the petitioner’s models are not works of applied
art, nor artistic works. They are utility models, useful articles,
albeit with no artistic design or value.
Laktaw v Paglinawan
The copying of another’s meanings in their dictionary
constitutes copyright infringement. The protection of the law
cannot be denied to the author of a dictionary, for although
words are not the property of anybody, their definitions, the
example that explain their sense, and the manner of
expressing their different meanings, may constitute a special
work.
A dictionary constitutes property, although some of the words
therein are explained by mere definitions expressed in a few
lines and sanctioned by usage, provided that the greater part
of the other words contain new meanings; new meanings
which evidently may only belonged to the first person who
published them.
Non-Copyrightable works
Joaquin et al v Hon Drilon
The format or mechanics of a television show is not
copyrightable. The format or mechanics of a television show is
not included in the list of protected works.
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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.
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. 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.
Doctrine of Fair Use
ABS-CBN v Phil Multi-Media System
There is no rebroadcasting of ABSCBNs programs. Court cited
Sec 184 of the IPC;
Sec. 184. Limitations on Copyright. -
184.1. Notwithstanding the provisions of Chapter V, the
following acts shall not constitute infringement of copyright:
xxxx
(h) The use made of a work by or under the direction or control
of the Government, by the National Library or by educational,
scientific or professional institutions where such use is in the
public interest and is compatible with fair use;
The carriage of ABS-CBN’s signals by virtue of the must-carry
rule in Memorandum Circular No. 04-08-88 is under the
direction and control of the government though the NTC which
is vested with exclusive jurisdiction to supervise, regulate and
control telecommunications and broadcast services/facilities
in the Philippines. The imposition of the must-carry rule is
within the NTC’s power to promulgate rules and regulations,
as public safety and interest may require, to encourage a larger
and more effective use of communications, radio and
television broadcasting facilities, and to maintain effective
competition among private entities in these activities
whenever the Commission finds it reasonably feasible.
Must Carry Rule
It is limitation on copyright which obligates operators to carry
the signals of local channels within their respective systems.
This is to give the people wider access to more sources of
news, information, education, sports event and entertainment
programs other than those provided for by mass media and
afforded television programs to attain a well-informed, well-
versed and culturally refined citizenry and enhance their socio-
economic growth.
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Filipino Society of Composers v Tan
It is therefore obvious that the expenses entailed thereby are
added to the overhead of the restaurant which are either
eventually charged in the price of the food and drinks or to the
overall total of additional income produced by the bigger
volume of business which the entertainment was programmed
to attract. Consequently, it is beyond question that the playing
and singing of the combo in defendant-appellee's restaurant
constituted performance for profit contemplated by the
Copyright Law. Nevertheless, appellee cannot be said to have
infringed upon the Copyright Law.
Indeed, if the general public has made use of the object sought
to be copyrighted for thirty (30) days prior to the copyright
application the law deems the object to have been donated to
the public domain and the same can no longer be copyrighted.
A careful study of the records reveals that the song "Dahil Sa
Iyo" which was registered on April 20, 1956 became popular in
radios, juke boxes, etc. long before registration; Under the
circumstances, it is clear that the musical compositions in
question had long become public property, and are therefore
beyond the protection of the Copyright Law.
Rappler v Bautista
Rappler may livestream the presidential and vice presidential
debates in its entirety after complying with the copyright
conditions including the condition that "the source is clearly
indicated" and that there will be no alteration, which means
that the streaming will include the proprietary graphics used
by the Lead Networks. If Rappler opts for a clean feed without
the proprietary graphics used by the Lead Networks, in order
for Rappler to layer its own proprietary graphics and text on
the same, then Rappler will have to negotiate separately with
the Lead Networks. Similarly, if Rappler wants to alter the
debate audio by deleting the advertisements, Rappler will also
have to negotiate with the Lead Networks.
Copyright Infringement
ABS-CBN v Gozon
The news footage of ABSCBN is subject to copyright and
prohibited use of such is punishable. News or the event itself
is not copyrightable. However, an event can be captured and
presented in a specific medium. It is the event itself or the
arrival of Angelo dela Cruz which is not copyrightable because
that is the newsworthy event. However, any footage created
from the event itself, in this case the arrival of Angelo dela
Cruz, are intellectual creations which are copyrightable. Thus,
the footage created by ABS-CBN during the arrival of Angelo
dela Cruz, which includes the statements of Dindo Amparo, are
copyrightable and protected by the laws on copyright.
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The IPC affords protection for "[a]udiovisual works and
cinematographic works and works produced by a process
analogous to cinematography or any process for making
audiovisual recordings."
Further, the footage of Angelo de La Cruz does not constitute
Fair use and regardless: Raising the defense of fair use does
not automatically mean that no infringement was committed.
The investigating prosecutor has full discretion to evaluate the
facts, allegations, and evidence during preliminary
investigation.
Further in this case the Court held that Infringement under the
Intellectual Property Code is malum prohibitum. The
Intellectual Property Code requires strict liability for copyright
infringement whether for a civil action or a criminal
prosecution; it does not require mens rea or culpa
Columbia Pictures v CA
Challenged Jurisprudence here: ruling in 20th Century Fox Film
Corporation vs. Court of Appeals, et al., promulgated on
August 19, 1988, that for the determination of probable cause
to support the issuance of a search warrant in copyright
infringement cases involving videograms, the production of
the master tape for comparison with the allegedly pirate
copies is necessary.
There is no need to produce the master tapes in copyright
infringement cases, hence the issuance of the search warrrant
here was proper.
A blind espousal of the requisite of presentation of the master
tapes in copyright infringement cases, as the prime
determinant of probable cause, is too exacting and
impracticable a requirement to be complied with in a search
warrant application which, it must not be overlooked, is only
an ancillary proceeding. Further, on realistic considerations, a
strict application of said requirement militates against the
elements of secrecy and speed which underlie covert
investigative and surveillance operations in police
enforcement campaigns against all forms of criminality,
considering that the master tapes of a motion picture required
to be presented before the court consists of several reels
contained in circular steel casings which, because of their bulk,
will definitely draw attention, unlike diminutive objects like
video tapes which can be easily concealed. With hundreds of
titles being pirated, this onerous and tedious imposition would
be multiplied a hundredfold by judicial fiat, discouraging and
preventing legal recourses in foreign jurisdictions.
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.
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.
Robles claims that the copied portions of the book CET are also
found in foreign books and other grammar books, and that the
similarity between her style and that of petitioners can not be
avoided since they come from the same background and
orientation may be true. However, 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.
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 latter's
research work and compilation and misrepresented them as
her own. She circulated the book DEP for commercial use did
not acknowledged petitioners as her source. Hence, there is a
clear case of appropriation of copyrighted work for her benefit
that respondent Robles committed.
NBI v Hwang
The Court held that there was copyright infringement when
Beltron computer Philippines was illegally copying and selling
Microsoft software despite their agreement that Beltron for a
fee may reproduce and install no more than 1 copy of the
software on each customer system hard disk.

Habana v Robles
Lifting of substantial portions of discussions and examples, and
failure to acknowledge the source in Robles’ book is an
infringement of Habana’s copyright.

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 Rules of Procedure
UFC v Barrio Fiesta
The Court held that the CA erred in reversing the decision of
the IPO and using the “dominancy test” instead of the “holistic
test” to determine the likelihood of confusion between the
two marks. The findings of fact of the highly technical agency,
the Intellectual Property Office, which has the expertise in this
field, should have been given great weight by the Court of
Appeals.
On this matter of particular concern, administrative agencies,
such as the IPO, by reason of their special knowledge and
expertise over matters falling under their jurisdiction, are in a
better position to pass judgment thereon. Thus, their findings
of fact in that regard are generally accorded great respect, if
not finality by the courts, as long as they are supported by
substantial evidence, even if such evidence might not be
overwhelming or even preponderant. It is not the task of the
appellate court to weigh once more the evidence submitted
before the administrative body and to substitute its own
judgment for that of the administrative agency in respect to
sufficiency of evidence.
IN-N-OUT Burger v Sehwani
The Director of Legal affairs has jurisdiction to rule on the issue
of unfair competition.
PhilPharmawealth Inc v Phizer
The Director General of the IPO had no jurisdiction to review
an interlocutory order of the director of the BLA. The remedy
availed of here, which was to file before the CA a special civil
action on certiorari to question the assailed orders of the BLA-
IPO, was proper.
for infringement or unfair competition, including the available
remedies of injunction and damages, in the regular courts can
proceed independently or simultaneously with an action for
the administrative cancellation of a registered trademark in
the BPTTT. As applied to the present case, petitioners prior
filing of two inter partes cases against the respondent before
the BPTTT for the cancellation of the latters trademark
registrations, namely, LIVES and LIVES Label Mark, does not
preclude petitioners right (as a defendant) to include in its
answer (to respondents complaint for damages in Civil Case
No. No. 96-76944) a counterclaim for infringement with a
prayer for the issuance of a writ of preliminary injunction.
EY Industrial Sales v Shen Dar Electricity
there was no justifiable reason for the CA to disregard the
factual findings of the IPO. The rulings of the IPO Director
General and the BLA Director were supported by clear and
convincing evidence. The facts cited by the CA and Shen Dar do
not justify a different conclusion from that of the IPO. Hence,
the findings of the BLA Director and the IPO Director General
must be deemed as conclusive on the CA.
Further it was held that evidence presented before the BLA
need not be formally offered 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.

Samson v Daway
The contention here was that the criminal case on unfair
competition should have been lodged before the MTC and not
the RTC as the penalty is less than 6 year; The Court held that -END-
in the case at bar, R.A. No. 8293 (IP Code) and R.A. No.
166(Law on Trademarks) are special laws conferring
jurisdiction over violations of intellectual property rights to the
Regional Trial Court. They should therefore prevail over R.A.
No. 7691(Act expanding MTC Jurisdiction), which is a general
law. Hence, jurisdiction over the instant criminal case for unfair
competition is properly lodged with the Regional Trial Court
even if the penalty therefor is imprisonment of less than 6
years, or from 2 to 5 years and a fine ranging from P50,000.00
to P200,000.00.

Levis Strauss v Vogue Traders

Levis did not commit Forum Shopping when it filed its
counterclaim for infringement. It bears stressing that an action

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