COLUMBIA PICTURES V CA
PREREQUISITE ONLY TO A SUIT FOR DAMAGES.
18. COMMERCIAL LAW; P.D. 49 (DECREE ON
THE PROTECTION OF INTELLECTUAL PROPERTY);
INFRINGEMENT OF COPYRIGHT, CONSTRUED.
— 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.
19. ID.; ID.; INFRINGEMENT; COPY OF A PIRACY
IS AN INFRINGEMENT OF THE ORIGINAL. — 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 what works he was
indirectly copying, or 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 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 a piracy.
21. COMMERCIAL LAW; P.D. 49 (DECREE ON
PROTECTION OF INTELLECTUAL PROPERTY);
REGISTRATION AND DEPOSIT REQUIREMENT,
— It is pointless for private respondents to
insist on compliance with the registration and
deposit requirements under Presidential Decree
No. 49 as prerequisites for invoking the court’s
protective mantle in copyright infringement
cases. As explained by the court below: As
correctly pointed out by private complainants-
oppositors, the Department of Justice has
resolved this legal question as far back as
December 12, 1978 in its Opinion No. 191 of the
then Secretary of Justice Vicente Abad Santos
which stated that Sections 26 and 50 do not
apply to cinematographic works and PD No. 49
"had done away with the registration and
deposit of cinematographic works" and that
"even without prior registration and deposit of
a work which may be entitled to protection
under the Decree, the creator can file action for
infringement of its rights." He cannot demand,
however, payment of damages arising from
infringement. The same opinion stressed that
"the requirements of registration and deposit
are thus retained under the Decree, not as
conditions for the acquisition of copyright and
other rights, but as prerequisites to a suit for
damages." The statutory interpretation of the
Executive Branch being correct, is entitled (to)
weight and respect.
22. ID.; ID.; RIGHTS THEREUNDER SUBSISTS
FROM MOMENT OF CREATION. — Section 2 of
the decree prefaces its enumeration of
copyrightable works with the explicit statement
that "the rights granted under this Decree shall,
from the moment of creation, subsist with
respect to any of the following classes of
works." This means that under the present state
of the law, the copyright for a work is acquired
by an intellectual creator from the moment of
creation even in the absence of registration and
deposit.
23. ID.; ID.; ABSENCE OF AUTHORITY OR
CONSENT TO SELL, LEASE, DISTRIBUTE OR
CIRCULATE COPYRIGHTED FILMS CONSTITUTES
FILM PIRACY; LICENSE FROM THE VIDEOGRAM
REGULATORY BOARD, NOT A BAR TO CIVIL AND
CRIMINAL PROSECUTION. — This case has been
fought on the basis of, and its resolution long
delayed by resort to, technicalities to a virtually
abusive extent by private respondents, without
so much as an attempt to adduce any credible
evidence showing that they conduct their
business legitimately and fairly. The fact that
private respondents could not show proof of
their authority or that there was consent from
the copyright owners for them to sell, lease,
distribute or circulate petitioners’ copyrighted
films immeasurably bolsters the lower courts
initial finding of probable cause. That private
respondents are licensed by the Videogram
Regulatory Board does not insulate from
criminal and civil liability for their unlawful
business practices.
CHING V SALINAS
But, as gleaned from the specifications
appended to the application for a copyright
certificate filed by the petitioner, the said Leaf
Spring Eye Bushing for Automobile is merely a
utility model described as comprising a
generally cylindrical body having a co-axial bore
that is centrally located and provided with a
perpendicular flange on one of its ends and a
cylindrical metal jacket surrounding the
peripheral walls of said body, with the bushing
made of plastic that is either polyvinyl chloride
or polypropylene.31 Likewise, the Vehicle
Bearing Cushion is illustrated as a bearing
cushion comprising a generally semi-circular
body having a central hole to secure a
conventional bearing and a plurality of ridges
provided therefore, with said cushion bearing
being made of the same plastic
materials.32 Plainly, these are not literary or
artistic works. They are not intellectual
creations in the literary and artistic domain, or
works of applied art. They are certainly not
ornamental designs or one having decorative
quality or value.
It bears stressing that the focus of copyright is
the usefulness of the artistic design, and not its
marketability. The central inquiry is whether the
article is a work of art.33 Works for applied art
include all original pictorials, graphics, and
sculptural works that are intended to be or have
been embodied in useful article regardless of
factors such as mass production, commercial
exploitation, and the potential availability of
design patent protection.34
As gleaned from the description of the models
and their objectives, these articles are useful
articles which are defined as one having an
intrinsic utilitarian function that is not merely to
portray the appearance of the article or to
convey information. Indeed, while works of
applied art, original intellectual, literary and
artistic works are copyrightable, useful articles
and works of industrial design are not.35 A
useful article may be copyrightable only if and
only to the extent that such design incorporates
pictorial, graphic, or sculptural features that can
be identified separately from, and are capable
of existing independently of the utilitarian
aspects of the article.
We agree with the contention of the petitioner
(citing Section 171.10 of R.A. No. 8293), that the
author's intellectual creation, regardless of
whether it is a creation with utilitarian functions
or incorporated in a useful article produced on
an industrial scale, is protected by copyright
law. However, the law refers to a "work of
applied art which is an artistic creation." It bears
stressing that there is no copyright protection
for works of applied art or industrial design
which have aesthetic or artistic features that
cannot be identified separately from the
utilitarian aspects of the article.36 Functional
components of useful articles, no matter how
artistically designed, have generally been
denied copyright protection unless they are
separable from the useful article.37
In this case, the 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
He who writes a book, or carves a statue, or
makes an invention, has the absolute right to
reproduce or sell it, just as the owner of land
has the absolute right to sell it or its fruits. But
while the owner of land, by selling it and its
fruits, perhaps fully realizes all its economic
value, by receiving its benefits and utilities,
which are presented, for example, by the price,
on the other hand the author of a book, statue
or invention, does not reap all the benefits and
advantages of his own property by disposing of
it, for the most important form of realizing the
economic advantages of a book, statue or
invention, consists in the right to reproduce it in
similar or like copies, everyone of which serves
to give to the person reproducing them all the
conditions which the original requires in order
to give the author the full enjoyment thereof. If
the author of a book, after its publication,
cannot prevent its reproduction by any person
who may want to reproduce it, then the
property right granted him is reduced to a very
insignificant thing and the effort made in the
production of the book is no way rewarded.
FILSCAP v. Tan. (1987)
Nevertheless, appellee cannot be said to have
infringed upon the Copyright Law. Appellee's
allegation that the composers of the contested
musical compositions waived their right in favor
of the general public when they allowed their
intellectual creations to become property of the
public domain before applying for the
corresponding copyrights for the same (Brief for
Defendant-Appellee, pp. 14-15) is correct.
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.
SANTOS V MCCULLOUGH (OLD IPL CASE)
As a general proposition, there can be no
dispute that the artist acquires ownership of
the product of his art. At the time of its
creation, he has the absolute dominion over it.
To help the author protect his rights the
copyright law was enacted. In intellectual
creations, a distinction must be made between
two classes of property rights; the fact of
authorship and the right to publish and/or
distribute copies of the creation. With regard to
the first, i.e. the fact of authorship, the artist
cannot be divested of the same. In other words,
he may sell the right to print hundred of his
work yet the purchaser of said right can never
be the author of the creation. It is the second
right, i.e., the right to publish, republish,
multiply and/or distribute copies of the
intellectual creation which the state, through
the enactment of the copyright law, seeks to
protect. The author or his assigns or heirs may
have the work copyrighted and once this is
legally accomplished any infringement of the
copyright will render the infringer liable to the
owner of the copyright. xxx xxx xxx The plaintiff
in this case did not choose to protect his
intellectual creation by a copyright. The fact
that the design was used in the Christmas card
of Ambassador Neri who distributed eight
hundred copies thereof among his friends
during the Christmas season of 1959, shows
that the, same was published. Unless
satisfactorily explained a delay in applying for a
copyright, of more than thirty days from the
date of its publication, converts the property to
one of public domain. Since the name of the
author appears in each of the alleged infringing
copies of the intellectual creation, the
defendant may not be said to have pirated the
work nor guilty of plagiarism Consequently, the
complaint does not state a cause of action
against the defendant.
ABS CBN V PHIL MULTI MEDIA
75769-70)
Date: June 9, 2016Author: jaicdn0 Comments
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.
United Features Syndicate v. Munsingwear
(1989)
Petitioner contends that it will be damaged by
the registration of the trademark CHARLIE
BROWN & DEVICE in favor of private
respondent and that it has a better right to
CHARLIE BROWN & DEVICE since the likeness of
CHARLIE BROWN appeared in periodicals having
worldwide distribution and covered by
copyright registration in its name which
antedates the certificate of registration of
respondent issued only on September 12, 1979.
(Petition, Rollo, p. 21).
Petitioner further stresses that Decision No. 84-
83 (TM) promulgated by the Philippine Patent
Office on October 2, 1984 which held that "the
name likeness of CHARLIE BROWN may not
provide a cause of action for the cancellation of
a trademark registration," was based in the
conclusion made in the case of "Children's
Television Workshop v. touch of Class" earlier
decided by the Director of Patent Office on May
10, 1984. However, when the latter case was
appealed to the then Intermediate Appellate
Court, docketed as A.C. G.R. SP No. 03432, the
appellate court reversed the decision of the
Director holding said appealed decision as
illegal and contrary to law. this reversal was
affirmed by this Court on August 7, 1985 in G.R.
No. 71210 by denying the petition of
respondent Touch of Class.
The Court of Appeals in reversing the Director
of Patent's decision in Touch of Class, Inc.
succintly said:
The Patents Office ruled that a trademark,
unlike a label, cannot be copyrighted. The
"Cookie Monster" is not, however, a trademark.
It is a character in a TV series entitled "Sesame
Street." It was respondent which appropriated
the "Cookie Monster" as a trademark, after it
has been copyrighted. We hold that the
exclusive right secured by PD 49 to the
petitioner precludes the appropriation of the
"Cookie Monster" by the respondent.
Pertinently, Section 2 of Presidential Decree No.
49, otherwise known as the "Decree on
Intellectual Property", provides:
Section 2. The rights granted by this Decree
shall, from the moment of creation, subsist with
respect to any of the following classes of works:
xxx xxx xxx
(O) Prints, pictorial illustrations, advertising
copies, labels, tags and box wraps. ...
Therefore, since the name "CHARLIE BROWN"
and its pictorial representation were covered by
a copyright registration way back in 1950 the
same are entitled to protection under PD No.
49.
Aside from its copyright registration, petitioner
is also the owner of several trademark
registrations and application for the name and
likeness of "CHARLIE BROWN" which is the duly
registered trademark and copyright of
petitioner United Feature Syndicate Inc. as early
as 1957 and additionally also as TV SPECIALS
featuring the "PEANUTS" characters "CHARLIE
BROWN" (Memorandum, Rollo p. 97 [211]).
An examination of the records show that the
only appreciable defense of respondent-
registrant is embodied in its answer, which
reads:
It uses, the trademark "CHARLIE BROWN" &
"DEVICE" on children's wear such as T-shirts,
undershirts, sweaters, brief and sandos, in class
25; whereas "CHARLIE BROWN" is used only by
petitioner as character, in a pictorial illustration
used in a comic strip appearing in newspapers
and magazines. It has no trademark significance
and therefore respondent-registrant's use of
"CHARLIE BROWN" & "DEVICE" is not in conflict
with the petitioner's use of "CHARLIE BROWN"
(Rollo, p. 97 [21]).
It is undeniable from the records that petitioner
is the actual owner of said trademark due to its
prior registration with the Patent's Office.
Finally, in La Chemise Lacoste S.A. v. Hon. Oscar
Fernandez & Gobindram Hemandas Sujanani v.
Hon. Roberto V. Ongpin, et al. 129 SCRA 373
[1984]), the Court declared.
In upholding the right of the petitioner to
maintain the present suit before our courts for
unfair competition or infringement of
trademarks of a foreign corporation, we are
moreover recognizing our duties and the rights
of foregoing states under the Paris Convention
for the Protection of Industrial Property to
which the Philippines and (France) U.S. are
parties. We are simply interpreting a solemn
international commitment of the Philippines
embodied in a multilateral treaty to which we
are a party and which we entered into because
it is in our national interest to do so.
20TH CENTURY FOX
This doctrine has never been overturned, and as
a matter of fact it had been enshrined in the Bill
of Rights in our 1973 Constitution.
So that lacking in persuasive effect, the
allegation that master tapes were viewed by
the NBI and were compared to the purchased
and seized video tapes from the respondents'
establishments, it should be dismissed as not
supported by competent evidence and for that
matter the probable cause hovers in that grey
debatable twilight zone between black and
white resolvable in favor of respondents herein.
But the glaring fact is that 'Cocoon,' the first
video tape mentioned in the search warrant,
was not even duly registered or copyrighted in
the Philippines. (Annex C of Opposition p. 152
record). So, that lacking in the requisite
presentation to the Court of an alleged master
tape for purposes of comparison with the
purchased evidence of the video tapes allegedly
pirated and those seized from respondents,
there was no way to determine whether there
really was piracy, or copying of the film of the
complainant Twentieth Century Fox." (pp. 37-
39, Rollo)
The presentation of the master tapes of the
copyrighted films from which the pirated films
were allegedly copied, was necessary for the
validity of search warrants against those who
have in their possession the pirated films. The
petitioner's argument to the effect that the
presentation of the master tapes at the time of
application may not be necessary as these
would be merely evidentiary in nature and not
determinative of whether or not a probable
cause exists to justify the issuance of the search
warrants is not meritorious. The court cannot
presume that duplicate or copied tapes were
necessarily reproduced from master tapes that
it owns.
The application for search warrants was
directed against video tape outlets which
allegedly were engaged in the unauthorized
sale and renting out of copyrighted films
belonging to the petitioner pursuant to P.D. 49.
The essence of a copyright infringement is the
similarity or at least substantial similarity of the
purported pirated works to the copyrighted
work. Hence, the applicant must present to the
court the copyrighted films to compare them
with the purchased evidence of the video tapes
allegedly pirated to determine whether the
latter is an unauthorized reproduction of the
former. This linkage of the copyrighted films to
the pirated films must be established to satisfy
the requirements of probable cause. Mere
allegations as to the existence of the
copyrighted films cannot serve as basis for the
issuance of a search warrant.
MICROSOFT V HWANG
PD 49 and Article 189(1)
Section 539 of PD 49 ("Section 5") enumerates
the rights vested exclusively on the copyright
owner. Contrary to the DOJ’s ruling, the
gravamen of copyright infringement is not
merely the unauthorized "manufacturing" of
intellectual works but rather the unauthorized
performance of any of the acts covered by
Section 5. Hence, any person who performs any
of the acts under Section 5 without obtaining
the copyright owner’s prior consent renders
himself civilly40 and criminally41 liable for
copyright infringement. We held in Columbia
Pictures, Inc. v. Court of Appeals:42
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. (Emphasis supplied)
Significantly, under Section 5(A), a copyright
owner is vested with the exclusive right to
"copy, distribute, multiply, [and] sell" his
intellectual works.
On the other hand, the elements of unfair
competition under Article 189(1)43 of the
Revised Penal Code are:
(a) That the offender gives his goods the general
appearance of the goods of another
manufacturer or dealer;
(b) That the general appearance is shown in the
(1) goods themselves, or in the (2) wrapping of
their packages, or in the (3) device or
words therein, or in (4) any other feature of
their appearance[;]
(c) That the offender offers to sell or sells those
goods or gives other persons a chance or
opportunity to do the same with a like
purpose[; and]
(d) That there is actual intent to deceive the
public or defraud a competitor.44
The element of intent to deceive may be
inferred from the similarity of the goods or their
appearance.
On the 2,831 Microsoft CD-ROMs49 seized from
respondents, respondent Beltron, the only
respondent who was party to the Agreement,
could not have reproduced them under the
Agreement as the Solicitor General50 and
respondents contend. Beltron’s rights51 under
the Agreement were limited to:
(1) the "reproduc[tion] and install[ation of] no
more than one copy of [Microsoft] software on
each Customer System hard disk or Read Only
Memory ("ROM")"; and
(2) the "distribut[ion] xxx and licens[ing of]
copies of the [Microsoft] Product [as
reproduced above] and/or acquired from
Authorized Replicator or Authorized Distributor)
in object code form to end users."
The Agreement defines an authorized replicator
as "a third party approved by [Microsoft] which
may reproduce and manufacture [Microsoft]
Product[s] for [Beltron] xxx."52 An authorized
distributor, on the other hand, is a "third party
approved by [Microsoft] from which [Beltron]
may purchase MED53 Product."54 Being a mere
reproducer/installer of one Microsoft software
copy on each customer’s hard disk or ROM,
Beltron could only have acquired the hundreds
of Microsoft CD-ROMs found in respondents’
possession from Microsoft distributors or
replicators.
However, respondents makes no such claim.
What respondents contend is that these CD-
ROMs were left to them for safekeeping. But
neither is this claim tenable for lack of
substantiation. Indeed, respondents Keh and
Chua, the only respondents who filed counter-
affidavits, did not make this claim in the DOJ.
These circumstances give rise to the reasonable
inference that respondents mass-produced the
CD-ROMs in question without securing
Microsoft’s prior authorization.
The counterfeit "non-installer" CD-ROMs Sacriz
and Samiano bought from respondents also
suffice to support a finding of probable cause to
indict respondents for unfair competition under
Article 189(1) of the Revised Penal Code for
passing off Microsoft products. From the
pictures of the CD-ROMs’ packaging,55 one
cannot distinguish them from the packaging of
CD-ROMs containing genuine Microsoft
software. Such replication, coupled with the
similarity of content of these fake CD-ROMs and
the CD-ROMs with genuine Microsoft software,
implies intent to deceive.
Respondents’ contention that the 12 CD-ROMs
Sacriz and Samiano purchased cannot be traced
to them because the receipt for these articles
does not indicate its source is unavailing. The
receipt in question should be taken together
with Microsoft’s claim that Sacriz and Samiano
bought the CD-ROMs from
respondents.56 Together, these considerations
point to respondents as the vendor of the
counterfeit CD-ROMs. Respondents do not give
any reason why the Court should not give
credence to Microsoft’s claim. For the same
reason, the fact that the receipt for the CPU
does not indicate "[s]oftware hard disk" does
not mean that the CPU had no pre-installed
Microsoft software. Respondents Keh and Chua
admit in their counter-affidavit that
respondents are the "source" of the pre-
installed MS-DOS software.
MICROSOFT V MAXICORP
The offense charged against Maxicorp is
copyright infringement under Section 29 of PD
49 and unfair competition under Article 189 of
the RPC. To support these charges, petitioners
presented the testimonies of NBI Agent
Samiano, computer technician Pante, and
Sacriz, a civilian. The offenses that petitioners
charged Maxicorp contemplate several overt
acts. The sale of counterfeit products is but one
of these acts. Both NBI Agent Samiano and
Sacriz related to the RTC how they personally
saw Maxicorp commit acts of infringement and
unfair competition.
During the preliminary examination, the RTC
subjected the testimonies of the witnesses to
the requisite examination. NBI Agent Samiano
testified that he saw Maxicorp display and offer
for sale counterfeit software in its premises. He
also saw how the counterfeit software were
produced and packaged within Maxicorp’s
premises. NBI Agent Samiano categorically
stated that he was certain the products were
counterfeit because Maxicorp sold them to its
customers without giving the accompanying
ownership manuals, license agreements and
certificates of authenticity.
Sacriz testified that during his visits to
Maxicorp, he witnessed several instances when
Maxicorp installed petitioners’ software into
computers it had assembled. Sacriz also
testified that he saw the sale of petitioners’
software within Maxicorp’s premises.
Petitioners never authorized Maxicorp to install
or sell their software.

The testimonies of these two witnesses,

coupled with the object and documentary
evidence they presented, are sufficient to
establish the existence of probable cause. From
what they have witnessed, there is reason to
believe that Maxicorp engaged in copyright
infringement and unfair competition to the
prejudice of petitioners. Both NBI Agent
Samiano and Sacriz were clear and insistent
that the counterfeit software were not only
displayed and sold within Maxicorp’s premises,
they were also produced, packaged and in some
cases, installed there.

BAYANIHAN MUSIC V BMG

Unquestionably, respondent Chan, being

undeniably the composer and author of the
lyrics of the two (2) songs, is protected by the
mere fact alone that he is the creator thereof,
conformably with Republic Act No. 8293,
otherwise known as the Intellectual Property
Code, Section 172.2 of which reads:

172.2. Works are protected by the sole fact of

their creation, irrespective of their mode or
form of expression, as well as of their content,
quality and purpose.