DAY 1

Kho v
CA

Ching
v
Salin
as

ISSUE: whether the copyright and patent over the name and container of a beauty cream product
would entitle the registrant to the use and ownership over the same to the exclusion of others.
HELD: NO.
Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. 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.12 In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise.13 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. 14 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.15
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. The petitioner'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.
ISSUE: whether or not the leaf spring bushings are protected by copyright
HELD: NO.
I.
- scope of copyright
Ownership of copyrighted material is shown by proof of originality and copyrightability. By
originality is meant that the material was not copied, and evidences at least minimal creativity;
that it was independently created by the author and that it possesses at least same minimal
degree of creativity.23 Copying is shown by proof of access to copyrighted material and substantial
similarity between the two works.24 The applicant must thus demonstrate the existence and the
validity of his copyright because in the absence of copyright protection, even original creation may
be freely copied.25
R.A. No. 8293, to wit:
SEC. 172. Literary and Artistic Works. 172.1. Literary and artistic works, hereinafter referred
to as "works," are original intellectual creations in the literary and artistic domain protected from
the moment of their creation and shall include in particular:
...(h) Original ornamental designs or models for articles of manufacture, whether or not registrable
as an industrial design, and other works of applied art.
Related to the provision is Section 171.10, which provides that a "work of applied art" is an
artistic creation with utilitarian functions or incorporated in a useful article, whether made by hand
or produced on an industrial scale.
The Leaf Spring Eye Bushing for Automobile is merely a utility model. 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.
II useful articles and copyright
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
The Leaf Spring Eye Bushing 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.
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
A utility model is a technical solution to a problem in any field of human activity which is new and
industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any
of the aforesaid.40Essentially, a utility model refers to an invention in the mechanical field. This is
the reason why its object is sometimes described as a device or useful object. 41 A utility model
varies from an invention, for which a patent for invention is, likewise, available, on at least three
aspects: first, the requisite of "inventive step"42 in a patent for invention is not required; second,
the maximum term of protection is only seven years 43 compared to a patent which is twenty
years,44 both reckoned from the date of the application; and third, the provisions on utility model
dispense with its substantive examination45 and prefer for a less complicated system.
Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. 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, a trade name means the name or designation
identifying or distinguishing an enterprise. 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. 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.
[I]f "the sole intrinsic function of an article is its utility, the fact that the work is unique
and attractively shaped will not qualify it as a work of art."
Joaqui
n
v
Drilon

ISSUE: whether or not similarities in the format of the 2 dating game shows constitute copyright
infringement
HELD: NO.
The format of a show is not copyrightable.
Section 2 of P.D. No. 49, 10 otherwise known as the DECREE ON INTELLECTUAL PROPERTY,
enumerates the classes of work entitled to copyright protection, to wit:
Sec. 2. The rights granted by this Decree shall, from the moment of creation, subsist with
respect to any of the following classes of works:
(A) Books, including composite and cyclopedic works, manuscripts, directories, and
gazetteers:
(B) Periodicals, including pamphlets and newspapers;
(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;
(D) Letters;
(E) Dramatic or dramatico-musical compositions; choreographic works and entertainments
in dumb shows, the acting form of which is fixed in writing or otherwise;
(F) Musical compositions, with or without words;
(G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and other
works of art; models or designs for works of art;
(H) Reproductions of a work of art;
(I) Original ornamental designs or models for articles of manufacture, whether or not
patentable, and other works of applied art;
(J) Maps, plans, sketches, and charts;
(K) Drawings or plastic works of a scientific or technical character;
(I) Photographic works and works produced by a process analogous to photography lantern
slides;
(M) Cinematographic works and works produced by a process analogous to cinematography

or any process for making audio-visual recordings;

(N) Computer programs;
(O) Prints, pictorial illustrations advertising copies, labels tags, and box wraps;
(P) Dramatizations, translations, adaptations, abridgements, arrangements and other
alterations of literary, musical or artistic works or of works of the Philippine government as
herein defined, which shall be protected as provided in Section 8 of this Decree.
(Q) Collections of literary, scholarly, or artistic works or of works referred to in Section 9 of
this Decree which by reason of the selection and arrangement of their contents constitute
intellectual creations, the same to be protected as such in accordance with Section 8 of this
Decree.
(R) Other literary, scholarly, scientific and artistic works.
This provision is substantially the same as 172 of the INTELLECTUAL PROPERTY CODE OF
PHILIPPINES (R.A. No. 8293). 11 The format or mechanics of a television show is not included in the
list of protected works in 2 of P.D. No. 49. For this reason, the protection afforded by the law
cannot be extended to cover them.
Since . . . copyright in published works is purely a statutory creation, a copyright may be obtained
only for a work falling within the statutory enumeration or description. 13
P.D. No. 49, 2, in enumerating what are subject to copyright, refers to finished works and not to
concepts. The copyright does not extend to an idea, procedure, process, system, method of
operation, concept, principle, or discovery, regardless of the form in which it is described,
explained, illustrated, or embodied in such work. 15 Thus, the new INTELLECTUAL PROPERTY CODE
OF THE PHILIPPINES provides:
Sec. 175. Unprotected Subject Matter. Notwithstanding the provisions of Sections
172 and 173, no protection shall extend, under this law, to any idea, procedure,
system, method or operation, concept, principle, discovery or mere data as such,
even if they are expressed, explained, illustrated or embodied in a work; news of the
day and other miscellaneous facts having the character of mere items of press
information; or any official text of a legislative, administrative or legal nature, as well
as any official translation thereof.
What then is the subject matter of petitioners' copyright? Petitioner BJPI's copyright covers audiovisual recordings of each episode of Rhoda and Me, as falling within the class of works mentioned
in P.D. 49, 2(M), to wit:
Cinematographic works and works produced by a process analogous to
cinematography or any process for making audio-visual recordings;
The copyright does not extend to the general concept or format of its dating game show
Filipin
o
Socie
ty of
Comp
osers
v Tan

Pearl
and
Dean v
Shoem
art

ISSUE: Whether or not petitioners compositions are protected by copyright.

HELD: NO.
Paragraph 33 of Patent Office Administrative Order No. 3 provides that an intellectual creation
should be copyrighted thirty (30) days after its publication, if made in Manila, or within the (60)
days if made elsewhere, failure of which renders such creation public property
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.
DAY2
ISSUE: whether or not the light boxes are protected by copyright; poster ads acquired
secondary meaning
HELD: NO.
I.
Extent of Petitioners Copyright
Petitioners application for a copyright certificate clearly stated that it was for a class "O" work
under Section 2 (O) of PD 49 (The Intellectual Property Decree). Said Section 2 expressly
enumerated the works subject to copyright:
SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist with

respect to any of the following works: (O) Prints, pictorial illustrations, advertising copies, labels,
tags, and box wraps;
Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory
grant, the rights are limited to what the statute confers. It may be obtained and enjoyed only
with respect to the subjects and by the persons, and on terms and conditions specified in the
statute.
P & D secured its copyright under the classification class "O" work. This being so, petitioners
copyright protection extended only to the technical drawings and not to the light box
itself because the latter was not at all in the category of "prints, pictorial illustrations,
advertising copies, labels, tags and box wraps." The strict application 9 of the laws enumeration
in Section 2 prevents us from giving petitioner even a little leeway, that is, even if its copyright
certificate was entitled "Advertising Display Units." What the law does not include, it excludes,
and for the good reason: the light box was not a literary or artistic piece which could be
copyrighted under the copyright law.
Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. 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, a trade name means the name or designation
identifying or distinguishing an enterprise. 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. 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.
II.
Patent
To be able to effectively and legally preclude others from copying and profiting from the
invention, a patent is a primordial requirement. No patent, no protection. The ultimate goal
of a patent system is to bring new designs and technologies into the public domain through
disclosure.14 Ideas, once disclosed to the public without the protection of a valid patent, are
subject to appropriation without significant restraint.15
The patent law has a three-fold purpose: "first, patent law seeks to foster and reward
invention; second, it promotes disclosures of inventions to stimulate further innovation and to
permit the public to practice the invention once the patent expires; third, the stringent
requirements for patent protection seek to ensure that ideas in the public domain remain there
for the free use of the public."18
III.
Trademark
"Secondary meaning" means that a word or phrase originally incapable of exclusive
appropriation with reference to an article in the market (because it is geographically or
otherwise descriptive) might nevertheless have been used for so long and so exclusively by one
producer with reference to his article that, in the trade and to that branch of the purchasing
public, the word or phrase has come to mean that the article was his property
Habana
v
Robles

Republic Act No. 8293

Sec. 177. Copy or Economic rights. Subject to the provisions of chapter VIII, copyright or
economic rights shall consist of the exclusive right to carry out, authorize or prevent the
following acts:
177.1 Reproduction of the work or substantial portion of the work;
177.2 Dramatization, translation, adaptation, abridgement, arrangement or other
transformation of the work;
177.3 The first public distribution of the original and each copy of the work by sale
or other forms of transfer of ownership;
177.4 Rental of the original or a copy of an audiovisual or cinematographic work,
a work embodied in a sound recording, a computer program, a compilation of data
and other materials or a musical work in graphic form, irrespective of the
ownership of the original or the copy which is the subject of the rental; (n)
177.5 Public display of the original or copy of the work;

177.6 Public performance of the work; and

177.7 Other communication to the public of the work 19
The law also provided for the limitations on copyright, thus:
Sec. 184.1 Limitations on copyright. Notwithstanding the provisions of Chapter
V, the following acts shall not constitute infringement of copyright:
(a) the recitation or performance of a work, once it has been
lawfully made accessible to the public, if done privately and free of
charge or if made strictly for a charitable or religious institution or
society; [Sec. 10(1), P.D. No. 49]
(b) The making of quotations from a published work if they are
compatible with fair use and only to the extent justified for the
purpose, including quotations from newspaper articles and
periodicals in the form of press summaries; Provided, that the
source and the name of the author, if appearing on the work are
mentioned; (Sec. 11 third par. P.D. 49)
xxx xxx xxx
(e) The inclusion of a work in a publication, broadcast, or other communication to
the public, sound recording of film, if such inclusion is made by way of illustration
for teaching purposes and is compatible with fair use: Provided, That the source
and the name of the author, if appearing in the work is mentioned; 20
Respondent Robles' act of lifting from the book of petitioners substantial portions of discussions
and examples, and her failure to acknowledge the same in her book is an infringement of
petitioners' copyrights.
When is there a substantial reproduction of a book? It does not necessarily require that the
entire copyrighted work, or even a large portion of it, be copied. If so much is taken that the
value of the original work is substantially diminished, there is an infringement of copyright and
to an injurious extent, the work is appropriated. 27
In determining the question of infringement, the amount of matter copied from the copyrighted
work is an important consideration. To constitute infringement, it is not necessary that the whole
or even a large portion of the work shall have been copied. If so much is taken that the value of
the original is sensibly diminished, or the labors of the original author are substantially and to an
injurious extent appropriated by another, that is sufficient in point of law to constitute piracy. 28
The essence of intellectual piracy should be essayed in conceptual terms in order to underscore
its gravity by an appropriate understanding thereof. Infringement of a copyright is a
trespass on a private domain owned and occupied by the owner of the copyright, and,
therefore, protected by law. Infringement of copyright, or piracy consists in the doing by any
person, without the consent of the owner of the copyright, of anything the sole right to do which
is conferred by statute on the owner of the copyright.
A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such
cases, did not know whether or not he was infringing any copyright; he at least knew that what
he was copying was not his, and he copied at his peril.
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.
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.
20th
Centur
y Fox v
CA

Section 2, Article III of the present Constitution :

The right of the people to be secure in their persons, houses, papers, and effects against
unreasonable searches and seizures of whatever nature and for any purpose shall be inviolable,
and no search warrant or warrant of arrest shall issue except upon probable cause to be
determined personally by the judge after examination under oath or affirmation of the
complainant and the witnesses he may produce, and particularly describing the place to be

searched and the persons or things to be seized.

The presentation of the master tapes of the copyrighted films from which the pirated films were
allegedly copied, was necessary (to determine existence of probable cause) for the validity of
search warrants against those who have in their possession the pirated films. The court cannot
presume that duplicate or copied tapes were necessarily reproduced from master tapes that it
owns.
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.
Columb
ia
Picture
s v CA

In fine, the supposed pronunciamento in the 20th Century Fox v CA case regarding the necessity
for the presentation of the master tapes of the copyrighted films for the validity of search
warrants should at most be understood to merely serve as a guidepost in determining the
existence of probable cause in copyright infringement cases where there is doubt as to the true
nexus between the master tape and the pirated copies. Said directive was hardly intended to
be a sweeping and inflexible requirement in all or similar copyright infringement cases.
It is evidently incorrect to suggest, as the ruling in 20th Century Fox may appear to do, that in
copyright infringement cases, the presentation of master tapes of the copyrighted films is
always necessary to meet the requirement of probable cause and that, in the absence thereof,
there can be no finding of probable cause for the issuance of a search warrant. It is true that
such master tapes are object evidence, with the merit that in this class of evidence the
ascertainment of the controverted fact is made through demonstrations involving the direct use
of the senses of the presiding magistrate. 57 Such auxiliary procedure, however, does not
rule out the use of testimonial or documentary evidence, depositions, admissions or
other classes of evidence tending to prove the factum probandum, 58 especially where
the production in court of object evidence would result in delay, inconvenience or
expenses out of proportion to its evidentiary value. 59
Accordingly, to restrict the exercise of discretion by a judge by adding a particular requirement
(the presentation of master tapes, as intimated by 20th Century Fox) not provided nor implied in
the law for a finding of probable cause is beyond the realm of judicial competence or
statesmanship. It serves no purpose but to stultify and constrict the judicious exercise of a
court's prerogatives and to denigrate the judicial duty of determining the existence of probable
cause to a mere ministerial or mechanical function. There is, to repeat, no law or rule which
requires that the existence of probable cause is or should be determined solely by a specific
kind of evidence. Surely, this could not have been contemplated by the framers of the
Constitution, and we do not believe that the Court intended the statement in 20th Century
Fox regarding master tapes as the dictum for all seasons and reasons in infringement cases.
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. 78
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.

Sony
Music v
Espanol

This is not to say that the master tapes should have been presented in evidence during the
application hearing, as private respondents, obviously having in mind the holding in 20th
Century Fox Film Corp. vs. Court of Appeals,42 would have this Court believe. It is true that the
Court, in 20th Century Fox, underscored the necessity, in determining the existence of probable
cause in copyright infringement cases, of presenting the master tapes of the copyrighted work.
But, as emphatically clarified in Columbia "such auxiliary procedure, however, does not rule out
the use of testimonial or documentary evidence, depositions, admissions or other classes of
evidence xxx especially where the production in court of object evidence would result in delay,
inconvenience or expenses out of proportion to its evidentiary value.43
What this Court is saying is that any evidence presented in lieu of the master tapes, if not
readily available, in similar application proceedings must be reliable, and, if testimonial, it must,
at the very least, be based on the witness personal knowledge.