Columbia Pictures v.

Court of Appeals

Facts: Complainants lodged a complaint with the NBI for violation of PD No. 49 and sought its assistance in their
anti-film piracy drive. Agents of the NBI and private researchers made discreet surveillance on various video
establishments in Metro Manila including Sunshine. NBI Senior Agent Lauro C. Reyes applied for a search warrant
with the court a quo against Sunshine seeking the seizure, among others, of pirated video tapes of copyrighted films
and other machines and paraphernalia used or intended to be used in the unlawful exhibition, showing, reproduction,
sale, lease or disposition of videograms tapes in the premises above described.

The search warrant was served. The NBI Agents found and seized various video tapes of duly copyrighted motion
pictures/films owned or exclusively distributed by private complainants, and machines and equipments.

However, the RTC found that there was no probable cause for the issuance of the search warrants. The court
ordered the return of all the items seized by virtue of the warrants. On appeal, the Court of Appeals (“CA”) ruled that
the film companies were certain of their ownership over the titles and that they were still entitled to copyright
protection under Philippine laws despite their failure to deposit and register the titles with the National Library.
However, the CA sustained the quashal of the warrants on the ground that the film companies did not present the
master tapes during the application for search warrants, thus failing to establish the necessary linkage between the
copyrighted material and the allegedly copied films.

Issue:

Was the presentation of the master tapes during application necessary for the validity of the search warrants? YES

Ruling:

Citing 20th Century Fox v. Court of Appeals, the Court reiterated that a basic requirement for the validity of search
warrants, in cases of this nature, is the presentation of the master tapes of the copyrighted films from which pirated
films are supposed to have been copied. Quoting verbatim from that decision, the Court explained that 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.

The Court also agreed with the CA that what is punished under Section 56 of P.D. 49 is not just the “sale, lease, or
distribution of pirated video tapes of copyrighted films” but also the “transfer or causing to be transferred of any sound
recording or motion picture or other audiovisual work.” Even assuming, as argued by the film companies, that “the
basic fact” to be proved pertains only to the sale, lease, or distribution of pirated video tapes involved, the fact
remains that there is need to establish probable cause that the tapes being sold, leased, or distributed are pirated
tapes, returning us to the question of whether there was unauthorized transfer, directly or indirectly, of a sound
recording or motion picture or other audio visual work that has been recorded.
Ching v. Salinas, Sr. (G.R. No. 161295)

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.
Laktaw vs. Paglinawan

44 Phil. 855 (1918)

G.R. No. L-11937

Doctrine

Article 7 of the Law of January 10, 1879, on Intellectual Property:Nobody may reproduce another
person's work without the owner's consent, even merely to annotate or add anything to it, or improve
any edition thereof.

Facts

Laktaw is the registered owner and author of a literary work entitled Diccionario Hispano-Tagalog
(Spanish-Tagalog Dictionary) published in the City of Manila in 1889 by the printing establishment La
Opinion.Paglinawan without the consent of Laktaw, reproduced said literary work, improperly copied
the greater part thereof in the work published by him and entitled DiccionariongKastila-Tagalog
(Spanish-Tagalog Dictionary).

The act of Pagliwanan is a violation of article 7 of the Law of January 10, 1879, on Intellectual Property,
caused irreparable injuries to Laktaw who was surprised when, on publishing his new work entitled
Diccionario Tagalog-Hispano (Tagalog-Spanish Dictionary) he learned of the fact, and (4) that the
damages occasioned to him by the publication of Paglinawan's work amounted to $10,000. Laktaw
prayed the court to order the Paglinawan to withdraw from sale all stock of the work of Paglinawan to
pay him the sum of $10,000, with costs.

Paglinawan in his answer denied generally each and every allegation of the complaint and prayed the
court to absolve him from the complaint.

Issue

Whether or not Paglinawan violated Article 7 of the Intellectual Property Law (1879)?

Held

Yes, Paglinawan violated Article 7 of Intellectual Property Law.

It is not necessary that a work should be an improper copy of another work previously published. It is
enough that another's work has been reproduced without the consent of the owner, even though it be
only to annotate, add something to it, or improve any edition thereof.

As early as 1918, the Supreme Court enunciated that a person who published a Spanish-Tagalog
dictionary and copied the equivalents, definitions and different meanings given in another author’s
Spanish-Tagalog dictionary, although making some additions of his own and some unimportant changes
in the examples to illustrate the meanings of the words, has violated the intellectual property rights of
other author. The Supreme Court reasoned that 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 special work.
Joaquin, Jr. v. Drilon
FRANCISCO G. JOAQUIN, JR. and BJ PRODUCTIONS, INC. vs. HONORABLE RANKLIN M. DRILON, GABRIEL ZOSA, WILLIAM
ESPOSO, FELIPE MEDINA, JR., and CASEY FRANCISCO

FACTS:

Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of Certificate of Copyright No. M922, dated January 28, 1971, of
Rhoda and Me, a dating game show aired from 1970 to 1977.

On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate of copyright specifying the
show’s format and style of presentation.

Upon complaint of petitioners, information for violation of PD No. 49 was filed against private respondent Zosa together with
certain officers of RPN 9 for airing It’s a Date. It was assigned to Branch 104 of RTC Quezon City.

Zosa sought review of the resolution of the Assistant City Prosecutor before the Department of Justice.

On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the Assistant City Prosecutor’s findings and
directed him to move for the dismissal of the case against private respondents.

Petitioner Joaquin filed motion for reconsideration but such was denied.

ISSUE:

Whether the format or mechanics or petitioner’s television show is entitled to copyright protection.

HELD:

The Court ruled that the format of the show is not copyrightable. Sec. 2 of PD No. 49, otherwise known as the Decree on
Intellectual Property, enumerates the classes of work entitled to copyright protection. The provision is substantially the same as
Sec. 172 of the Intellectual Property Code of the Philippines (RA 8293). The format or mechanics of a television show is not
included in the list of protected works in Sec. 2 of PD 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 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 person and on terms and conditions specified in the
statute.

The 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 PD 49.

The copyright does not extend to the general concept or format of its dating game show.

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 a probable cause.

A television show includes more than mere words can describe because it involves a whole spectrum of visuals and effects,
video and audio, such that no similarity or dissimilarity may be found by merely describing the general copyright / format of
both dating game shows.
Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated, and North Edsa Marketing,
Incorporated (CASE DIGEST)
GR No. 148222
15 August 2003

FACTS:
Pearl and Dean (Phil.), Inc. (PDI) is engaged in the manufacture of advertising display units simply
referred to as light boxes. PDI was able to secure a Certificate of Copyright Registration, the advertising
light boxes were marketed under the trademark “Poster Ads”.
In 1985, PDI negotiated with defendant-appellant Shoemart, Inc. (SMI) for the lease and installation of
the light boxes in certain SM Makati and SM Cubao. PDI submitted for signature the contracts covering
both stores, but only the contract for SM Makati, however, was returned signed. Eventually, SMI’s
informed PDI that it was rescinding the contract for SM Makati due to non-performance of the terms
thereof.
Years later, PDI found out that exact copies of its light boxes were installed at different SM stores. It was
further discovered that SMI’s sister company North Edsa Marketing Inc. (NEMI), sells advertising space
in lighted display units located in SMI’s different branches.
PDI sent a letter to both SMI and NEMI enjoining them to cease using the subject light boxes, remove the
same from SMI’s establishments and to discontinue the use of the trademark “Poster Ads,” as well as the
payment of compensatory damages.
Claiming that both SMI and NEMI failed to meet all its demands, PDI filed this instant case for
infringement of trademark and copyright, unfair competition and damages.
SMI maintained that it independently developed its poster panels using commonly known techniques and
available technology, without notice of or reference to PDI’s copyright. SMI noted that the registration of
the mark “Poster Ads” was only for stationeries such as letterheads, envelopes, and the like. Besides,
according to SMI, the word “Poster Ads” is a generic term which cannot be appropriated as a trademark,
and, as such, registration of such mark is invalid. On this basis, SMI, aside from praying for the dismissal
of the case, also counterclaimed for moral, actual and exemplary damages and for the cancellation of
PDI’s Certification of Copyright Registration, and Certificate of Trademark Registration.
The RTC of Makati City decided in favour of PDI, finding SMI and NEMI jointly and severally liable for
infringement of copyright and infringement of trademark
On appeal, however, the Court of Appeals reversed the trial court.

ISSUE:
1. Whether the the light box depicted in such engineering drawings ipso facto also protected by such
copyright.
RULING:
The Court of Appeals correctly held that the copyright was limited to the drawings alone and not to the
light box itself.
Although petitioner’s copyright certificate was entitled “Advertising Display Units” (which depicted the
box-type electrical devices), its claim of copyright infringement cannot be sustained.
Copyright, in the strict sense of the term, is purely a statutory right. Accordingly, it can cover only the
works falling within the statutory enumeration or description.
Even as we find that P & D indeed owned a valid copyright, the same could have referred only to the
technical drawings within the category of “pictorial illustrations.” It could not have possibly stretched out
to include the underlying light box. The light box was not a literary or artistic piece which could be
copyrighted under the copyright law.
Filipino Society of Composers vs. Tan

FACTS:
Plaintiff-appellant is a non-profit association of authors, composers and publishers duly organized under
the Corporation Law of the Philippines and registered with the Securities and Exchange Commission.
Said association is the owner of certain musical compositions among which are the songs entitled: “Dahil
Sa Iyo”, “Sapagkat Ikaw Ay Akin,” “Sapagkat Kami Ay Tao Lamang” and “The Nearness Of You.”
On the other hand, defendant-appellee is the operator of a restaurant known as “Alex Soda Foundation
and Restaurant” where a combo with professional singers, hired to play and sing musical compositions to
entertain and amuse customers therein, were playing and singing the above-mentioned compositions
without any license or permission from the appellant to play or sing the same. Accordingly, appellant
demanded from the appellee payment of the necessary license fee for the playing and singing of aforesaid
compositions but the demand was ignored.
Hence, on November 7, 1967, appellant filed a complaint with the lower court for infringement of
copyright against defendant-appellee for allowing the playing in defendant-appellee’s restaurant of said
songs copyrighted in the name of the former.

ISSUE:
The principal issues in this case are whether or not the playing and signing of musical compositions
which have been copyrighted under the provisions of the Copyright Law (Act 3134) inside the
establishment of the defendant-appellee constitute a public performance for profit within the meaning and
contemplation of the Copyright Law of the Philippines

RULING:
Playing of music in dine and dance establishment which was paid for by the public in purchases of food
and constitutes “performance for profit” within the Copyright Law. Nevertheless, defendant cannot be
held to have violated the Copyright Law because the composers of the contested musical compositions
are deemed to have waived their rights in favor of the general public because they have failed to comply
with the regulation requiring an intellectual creation to be copyrighted within 30 days after publication.
Maglalang Santos vs., McCullough Printing, 12 SCRA 321 (1964)

Facts

Mauro Malalang Santos filed an action for damages for unauthorized use, adaptation and appropriation
by the MCCULLOUGH PRINTING COMPANY of the intellectual creation or artistic design of a Christmas
card by him (Mauro Maglalang Santos) based on Article 721 and 722 of the Civil Code of the Philippines.
The Christmas card depicts a Philippine rural Christmas time scene consisting of a woman and a child in
a nipa hut adorned with a star-shaped lantern and a man astride a carabao, beside a tree, underneath
which appears the plaintiff's pen name, Malang. The complaint alleges that plaintiff Mauro Malang
Santos designed for former Ambassador Felino Neri, for his personal Christmas Card greetings for the
year 1959, the artistic motif in question. The following year the defendant McCullough Printing
Company, without the knowledge and authority of plaintiff, displayed the very design in its album of
Christmas cards and offered it for sale, for a price. For such unauthorized act of defendant, plaintiff
suffered moral damages to the tune of P16,000.00, because it has placed plaintiff's professional integrity
and ethics under serious question and caused him grave embarrassment before Ambassador Neri. He
further prayed for the additional sum of P3,000.00 by way of attorney's fee.

Issues

Whether plaintiff is entitled to protection, notwithstanding the, fact that he has not copyrighted his
(1)
design?

Held

The Supreme Court found that plaintiff is not entitled to a protection, the provision of the Civil Code,
notwithstanding. Paragraph 33 of Patent Office Administrative Order No. 3 (as amended dated
September 18, 1947) entitled "Rules of Practice in the Philippines Patent Office relating to the
Registration of Copyright Claims" promulgated pursuant to Republic Act 165, provides, among others,
that an intellectual creation should be copyrighted thirty (30) days after its publication, if made in
Manila, or within sixty (60) day's if made elsewhere, failure of which renders such creation public
property. In the case at bar, even as of this moment, there is no copyright for the design in question.
Habana v.Robles

FACTS: Pacita Habana et al., are authors and copyright owners of duly
issued of the book, College English For Today (CET). Respondent
Felicidad Robles was the author of the book Developing English
Proficiency (DEP). Petitioners found that several pages of the respondent's
book are similar, if not all together a copy of petitioners' book. Habana et al.
filed an action for damages and injunction, alleging respondent’s
infringement of copyrights, in violation of P.D. 49. They allege respondent
Felicidad C. Robles being substantially familiar with the contents of
petitioners' works, and without securing their permission, lifted, copied,
plagiarized and/or transposed certain portions of their book CET.
On the other hand, Robles contends that the book DEP is the product of
her own intellectual creation, and was not a copy of any existing valid
copyrighted book and that the similarities may be due to the authors'
exercise of the "right to fair use of copyrighted materials, as guides."
The trial court ruled in favor of the respondents, absolving them of any
liability. Later, the Court of Appeals rendered judgment in favor of
respondents Robles and Goodwill Trading Co., Inc. In this appeal,
petitioners submit that the appellate court erred in affirming the trial court's
decision.

ISSUE: Whether Robles committed infringement in the production of DEP.

HELD: A perusal of the records yields several pages of the book DEP that
are similar if not identical with the text of CET. The court finds 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.
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 author's toil is her book. To allow another to
copy the book without appropriate acknowledgment is injury enough.
ABS-CBN v. Philippine Multi-Media System (G.R. No. 175769-70)
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.
UNITED FEATURE SYNDICATE, INC., petitioner, vs. MUNSINGWEAR
CREATION MANUFACTURING COMPANY, respondent.

Petitioner’s claim:
Petitioner is asking for the cancellation of the registration of trademark CHARLIE
BROWN (Registration No. SR. 4224) in the name of respondent MUNSINGWEAR,
alleging that petitioner is damaged by the registration of the trademark CHARLIE
BROWN of T-Shirts under Class 25 with the Registration No. SR-4224 dated
September 12, 1979 in the name of Munsingwear Creation Manufacturing Co., Inc.,
on the following grounds:
(1) that respondent was not entitled to the registration of the mark CHARLIE
BROWN, & DEVICE at the time of application for registration;
(2) that CHARLIE BROWN is a character creation or a pictorial illustration, the
copyright to which is exclusively owned worldwide by the petitioner;
(3) that as the owner of the pictorial illustration CHARLIE BROWN, petitioner has
since 1950 and continuously up to the present, used and reproduced the same to
the exclusion of others;
(4) that the respondent-registrant has no bona fide use of the trademark in
commerce in the Philippines prior to its application for registration.

Respondent’s claim:
-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"

Relied on the ruling on October 2, 1984 in which the Director of the Philippine Patent
Office rendered a decision in this case holding that a copyright registration like that
of the name and likeness of CHARLIE BROWN may not provide a cause of action
for the cancellation of a trademark registration.

Issue:
WHETHER THE RESPONDENT COURT OF APPEALS COMMITTED GRAVE
ABUSE OF DISCRETION AMOUNTING TO EXCESS OF JURISDICTION WHEN
BY DISMISSING THE APPEAL TO IT FROM THE DECISION OF THE DIRECTOR
OF PATENTS, IT KNOWINGLY DISREGARDED ITS OWN DECISION IN AC-GR.
SP. NO. 0342, WHICH WAS AFFIRMED BY THIS HONORABLE SUPREME
COURT TO THE EFFECT THAT A COPYRIGHTED CHARACTER MAY NOT BE
APPROPRIATED AS A TRADEMARK BY ANOTHER UNDER PRESIDENTIAL
DECREE NO. 49. S.C.

Ruling:
The petitioner is impressed with merit. 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, otherwise known as the
"Decree on Intellectual Property". 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”. 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.
NBI MICROSOFT CORPORATION & LOTUS DEVELOPMENT CORP. vs. JUDY C. HWANG, BENITO KEH
&YVONNE K. CHUA/BELTRON COMPUTER PHILIPPINES INC., et.al

G.R. No. 147043. June 21, 2005

FACTS:

Petitioner Microsoft Corporations, a corporation based in the United States, owns the copyright and
trademark to several software. The respondents are the officials of a domestic corporation Beltron
Computer Philippines, Inc. The two entered into a Licensing Agreement that Beltron, for a fee, to
reproduce and install no more than one copy of software on each Customer System hard disk in object
code form to end users. However, Microsoft terminated the agreement for non-payment of royalties.
Afterwards, Microsoft learned that respondents were illegally copying and selling Microsoft software.
For this reason, Microsoft hired a private investigator with the assistance of NBI. Two persons pose as
representatives of a computer shop, bought computer hardware and software from respondents. The
CPU contained pre-installed Microsoft Windows 3.1 and MS-DOS software. Sacriz and Samiano were not
given the Microsoft end-user license agreements, users manuals, registration cards or certificates of
authenticity for the articles they purchased. On Nov. 17 1995, Microsoft applied for search warrants
against respondents. After approval, the NBI searched the premises of Beltron and TMTC and seized
several computer-related hardware, software, accessories, and paraphernalia. Among these were 2,831
pieces of CD-ROMs containing Microsoft software. The respondents Keh and Chua denied the charges
against them. Nevertheless, DOJ Ong recommended the dismissal of the complaint for lack of merit and
insufficiency of evidence. Microsoft filed a petition for certiorari for the resolution of Department of
Justice, dismissing the case for lack of merit against respondents for copyright infringement and unfair
competition.

ISSUE:

Whether or not the respondents are liable for copyright infringement and unfair competition

RULING:

Yes, sect. 5 of PD 49 enumerates the rights vested exclusively on the copyright owner. Contrary to the
DOJ’s ruling, copyright infringement is not merely the unauthorized manufacturing of intellectual works
but rather the unauthorized performance of any of the acts covered by sect 5. Therefore, any person
who performs any of the acts under sect. 5 without obtaining the copyright owners prior consent
renders himself civilly and criminally liable for copyright infringement. Being the copyright and
trademark owner of Microsoft software, Microsoft acted well within its rights in filing the complaint
based on the evidence obtained from respondents. Furthermore, some of the counterfeit CD-ROMs
bought from respondents were installer CD-ROM containing Microsoft software only or both Microsoft
and non-Microsoft software. These articles are counterfeit per se because Microsoft does not (and could
not have authorized anyone to) produce such CD-ROMs. The copying of the genuine Microsoft software
to produce these fake CD-ROMs and their distribution are illegal even if the copier or distributor is a
Microsoft licensee. The Court finds that the 12CD-ROMs (installer and non-installer) and the CPU with
pre-installed Microsoft software Sacriz andSamiano bought from respondents and the 2,831 Microsoft
CD-ROMs seized is enough to support a finding of probable cause to indict respondents for copyright
infringement. On the other hand, the illegality of the non-installer CD-ROMs purchased from
respondents and of the Microsoft software pre-installed in the CPU is shown by the absence of the
standard features accompanying authentic
Microsoft Corporation vs Maxicorp, Inc. 438 SCRA 224

FACTS:
In 1996, Dominador Samiano, Jr., an agent of the National Bureau of Investigation (NBI)
conducted a surveillance against Maxicorp, Inc. He observed that Microsoft Softwares
(Windows Operating Systems) were being produced and packaged within the premises of
Maxicorp. Samiano, together with a civilian witness (John Benedict Sacriz) then bought a
computer unit from Maxicorp. The unit was pre-installed with a pirated copy of Windows. For
their purchase, they were issued a receipt, however, the receipt was in the name of a certain
“Joel Diaz”. Subsequently, Samiano applied for a search warrant before the RTC. He brought
with him Sacriz as witness. He also brought the computer unit they bought as evidence as well
as the receipt. He even added an additional witness (Felixberto Pante), a computer technician,
who showed the judge that the software in the computer unit bought by Samiano from
Maxicorp was pirated. The RTC judge, convinced that there is a probable cause for a case of
copyright infringement and unfair competition committed by Maxicorp, issued the
corresponding warrant. Maxicorp assailed the legality of the warrant before the Court of
Appeals. The Court of Appeals ruled in favor of Maxicorp and in its decision it highlighted the
fact that the receipt issued was not in Samiano’s or Sacriz’ name hence the proceeding in the
trial court was infirm from the onset.

ISSUE:
Whether or not the Court of Appeals is correct.

HELD:
No. The testimonies of the 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 Microsoft. 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.
The fact that the receipt issued was not in Samiano’s name nor was it in Sacriz’ name does not
render the issuance of the warrant void. No law or rule states that probable cause requires a
specific kind of evidence. No formula or fixed rule for its determination exists. Probable cause is
determined in the light of conditions obtaining in a given situation.Thus, it was improper for the
Court of Appeals to reverse the RTC’s findings simply because the sales receipt evidencing NBI
Agent Samiano’s purchase of counterfeit goods is not in his name.
20th Century Fox vs CA

Facts:
Petitioner 20th Century Fox Film Corporation through counsel sought the NBI assistance in the
conduct of searches and seizures in connection with the latter's anti-film piracy campaign. The letter-
complaint alleged that certain videotape outlets all over Metro Manila are engaged in the unauthorized
sale and renting out of copyrighted films in videotape form which constitute a flagrant violation of
Presidential Decree No. 49 (otherwise known as the Decree on the Protection of Intellectual Property).
NBI conducted surveillance and investigation of the outlets pinpointed by the petitioner and
subsequently filed three (3) applications for search warrants against the video outlets owned by the
private respondents. The applications were consolidated and heard by the Regional Trial Court of
Makati.

Private respondents filed a motion to lift search warrants and release seized properties which
the lower court granted.

ISSUE:

WON the judge properly lifted the search warrants he issued earlier upon the application of the NBI on the basis of the
complaint filed by the petitioner.

HELD:

YES. In the instant case, the lower court lifted the three questioned search warrants against the private respondents on
the ground that it acted on the application for the issuance of the said search warrants and granted it on the
misrepresentations of applicant NBI and its witnesses that infringement of copyright or a piracy of a particular film have
been committed.

The lower court, therefore, lifted the three (3) questioned search warrants in the absence of probable cause that the
private respondents violated P.D. 49.

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.
Bayanihan Music vs. BMG and Jose Mari Chan

DOCTRINE: The composer/author’s copyright over his musical composition is

protected by the mere fact alone that he is the creator thereof.
FACTS: Private Respondent Jose Mari Chan (“Chan”) entered into contracts with
Petitioner Bayanihan Music (“Bayanihan”) whereunder Chan assigned all his rights,
interests and participation to Bayanihan over his musical compositions entitled “Can
We Just Stop and Talk a While” and “Afraid for Love to Fade” on 1973 and 1976,
respectively.
On the strength of the abovementioned contracts, Bayanihan applied for and was
granted by the National Library a Certificate of Copyright Registration for each of the
two musical compositions.
Thereafter, without the knowledge and consent of Bayanihan, Chan authorized his co-
respondent BMG Records (Pilipinas) (“BMG”) to record and distribute the
aforementioned musical compositions in a then recently released album of singer Lea
Salonga.
In separate letters, Bayanihan alleged that Chan and BMG committed violation of its
existing copyrights over the subject musical compositions. Demands were made on both
to settle the matter. However, no settlement was reached.
Hence, Bayanihan filed a complaint before the Regional Trial Court of Quezon City
(“RTC QC”) a Complaint for copyright infringement, particularly citing Section 216 of
Republic Act No. 8293, otherwise known as the Intellectual Property Code of the
Philippines, with a prayer for the issuance of Temporary Restraining Order (“TRO”)
and/or writ of preliminary injunction.

ISSUE:
Whether or not Chan and BMG violated Bayanihan’s copyrights over the subject musical
compositions.

RULING:
NO, Chan and BMG did not violate Bayanihan’s copyrights over the subject
musical compositions.
Unquestionably, Chan, being undeniably the composer and author of the lyrics of the
subject musical compositions, is protected by the mere fact alone that he is the creator
thereof, conformably with the Intellectual Property Code.
The two contracts entered into by Bayanihan and Chan, transferring the latter’s rights
over the songs to the former, expressly provided for the condition that in the event that
Bayanihan fails to use the compositions for a period of two (2) years from the date of the
contract, the copyright assigned to Bayanihan should revert back to the author, Chan.
Since it appeared that the two (2) contracts expired on October 1, 1975 and March 11,
1978, respectively, there being neither an allegation, much less proof, that Bayanihan
ever made use of the compositions within the two-year period agreed upon by the
parties, the above mentioned provision applied and the copyright assigned to Bayanihan
hereby reverted back to the author, Chan.
Finally, evidence also showed that Chan revoked and terminated the contracts on July
30, 199, Bayanihan only wrote the letter to Chan and BMG on December 7, 1999, and
the Complaint was only filed on August 8, 2000. Clearly, Bayanihan no longer had any
right over the two musical compositions.
Thus, Chan and BMG’s act of reproducing and distributing the songs did not, in any
way, constitute copyright infringement as alleged by Bayanihan.
MANLY SPORTWEAR MANUFACTURING VS DADODETTE
ENTERPRISES

GR NO. 165306, SEPT. 20, 2005

TAKE AWAY: NOT ORIGINAL, COMMON AND ORDINARY CREATIONS

ARE NOT COPYRIGHTABLE.

FACTS: A search warrant was issued against Dadodette Enterprises for

having in their possession goods, copyright of which allegedly belonged
to Manly Sportwear.

Dadodette Enterprises moved to quash and annul the search warrant

insisting that the sporting goods manufactured by and/or registered in
the name of MANLY are ordinary and common hence, not among the
classes of work protected under Section 172 of RA 8293.

Trial court granted the motion to quash. MR was denied. Petition for
certiorari before the CA was also denied as the CA found that the trial
court correctly granted the motion to quash and that its ruling in the
ancillary proceeding did not preempt the findings of the intellectual
property court.

ISSUE: WON the CA erred in finding that the trial court did not gravely
abuse its discretion in declaring in the hearing for the quashal of the
search warrant that the copyrighted products of MANLY are not original
creations subject to the protection of RA 8293

RULING: NO, the CA did not err.

The trial court properly quashed the search warrant it earlier issued
after finding upon reevaluation of the evidence that no probable cause
exists to justify its issuance in the first place. As ruled by the trial court,
the copyrighted products do not appear to be original creations of
MANLY and are not among the classes of work enumerated under
Section 172 of RA 8293. The trial court, thus, may not be faulted for
overturning its initial assessment.

Where there is sufficient proof that the copyrighted products are not
original creations but are readily available in market under various
brands, as in this case, validity and originality will not be presumed and
the trial court may properly quash the issued warrant for lack of
probable cause.

Also, as correctly observed by the CA, the trial court’s finding that the
seized products are not copyrightable was merely preliminary and
MANLY could still file a separate copyright infringement suit against
Dadodette.