Kho vs.

Court of Appeals
G.R. No. 115758. March 19, 2002

FACTS:
• The petitioner’s complaint alleges that petitioner, doing business under the
name and style of KEC Cosmetics Laboratory, is the registered owner of the copyrights
Chin Chun Su and Oval Facial Cream Container/Case; that she also has patent rights on
Chin Chun Su & Device and Chin Chun Su for medicated cream after purchasing the
same from Quintin Cheng, the registered owner thereof in the Supplemental Register of
the Philippine Patent Office; that respondent Summerville advertised and sold petitioner’s
cream products under the brand name Chin Chun Su, in similar containers that petitioner
uses, thereby misleading the public, and resulting in the decline in the petitioner’s
business sales and income; and, that the respondents should be enjoined from allegedly
infringing on the copyrights and patents of the petitioner.
• The respondents, on the other hand, alleged as their defense that
Summerville is the exclusive and authorized importer, repacker and distributor of Chin
Chun Su products manufactured by Shun Yi Factory of Taiwan; that the said Taiwanese
manufacturing company authorized Summerville to register its trade name Chin Chun Su
Medicated Cream with the Philippine Patent Office and other appropriate governmental
agencies; that KEC Cosmetics Laboratory of the petitioner obtained the copyrights
through misrepresentation and falsification; and, that the authority of Quintin Cheng,
assignee of the patent registration certificate, to distribute and market Chin Chun Su
products in the Philippines had already been terminated by the said Taiwanese
Manufacturing Company.

ISSUE/RULING:

Whether or not 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 include a stamped or marked container of goods

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. 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.
Petitioner has no right to support her claim for the exclusive use of the subject trade name
and its container. 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.
Consequently, a preliminary injunction order cannot be issued for the reason that the petitioner
has not proven that she has a clear right over the said name and container to the exclusion of
others, not having proven that she has registered a trademark thereto or used the same before
anyone did.
Ching vs. Salinas, Sr.
G.R. No. 161295. June 29, 2005

FACTS:
• Jessie G. Ching is the owner and general manager of Jeshicris
Manufacturing Co., the maker and manufacturer of a Utility Model, described as “Leaf
Spring Eye Bushing for Automobile” made up of plastic and was issued by the National
Library Certificates of Copyright Registration and Deposit of the said work
• Ching requested the NBI for police/investigative assistance for the
apprehension of illegal manufacturers and/or distributors of the works.
• The NBI then filed applications for search warrants against William
Salinas, Sr. and the officers and members of the Board of Directors of Wilaware Product
Corporation alleging that respondents therein reproduced and distributed the said models
penalized under Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293.
• The respondents averred that the works covered by the certificates issued
by the National Library are not artistic in nature; they are considered automotive spare
parts and pertain to technology. They aver that the models are not original, and as such
are the proper subject of a patent, not copyright.
• The trial court quashed the search warrant on its finding that there was no
probable cause for its issuance. The court ruled that the work covered by the certificates
issued to the petitioner pertained to solutions to technical problems, not literary and
artistic as provided in Article 172 of the Intellectual Property Code.
• The petitioner insists, notwithstanding the classification of the works as
either literary and/or artistic, the said law, likewise, encompasses works which may have
a bearing on the utility aspect to which the petitioner’s utility designs were classified.
Moreover, according to the petitioner, what the Copyright Law protects is the author’s
intellectual creation, regardless of whether it is one with utilitarian functions or
incorporated in a useful article produced on an industrial scale.
• On the other hand, the respondents contend that the work of the petitioner
is essentially a technical solution to the problem of wear and tear in automobiles, the
substitution of materials. Such work, the respondents assert, is the subject of copyright
under Section 172.1 of R.A. No. 8293. The respondents posit that a technical solution in
any field of human activity which is novel may be the subject of a patent, and not of a
copyright.

ISSUE/RULING:

Whether or not industrial works or designs are copyrightable

NO. 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. 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.
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. 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.
That the works of the petitioner may be the proper subject of a patent does not entitle him
to the issuance of a search warrant for violation of copyright laws. In Kho v. Court of Appeals
and Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated, the Court ruled that “these
copyright and patent rights are completely distinct and separate from one another, and the
protection afforded by one cannot be used interchangeably to cover items or works that
exclusively pertain to the others.”

Joaquin, Jr. vs. Drilon

G.R. No. 108946. January 28, 1999

FACTS:
• Petitioner BJ Productions, Inc. (BJPI) is the holder of Certificate of
Copyright of Rhoda and Me, a dating game show.
• While watching television, petitioner Francisco Joaquin, Jr., president of
BJPI, saw on RPN Channel 9 an episode of It’s a Date, which was produced by IXL
Productions, Inc. (IXL). He wrote a letter to private respondent Gabriel M. Zosa,
president of IXL, informing Zosa that BJPI had a copyright to Rhoda and Me and
demanding that IXL discontinue airing It’s a Date.
• Zosa apologized to petitioner Joaquin and requested a meeting to discuss a
possible settlement. IXL, however, continued airing It’s a Date. Meanwhile, private
respondent Zosa sought to register IXL’s copyright to the first episode of It’s a Date for
which it was issued by the National Library a certificate of copyright
• Upon complaint of petitioners, an information for violation of P.D. No. 49
was filed against private respondent Zosa but respondent Secretary of Justice Franklin M.
Drilon dismissed the case on the ground that the petitioners failed to present the master
tape and such non-presentation is fatal to the existence of probable cause to prove
infringement
• Petitioners assert that the format of Rhoda and Me is a product of
ingenuity and skill and is thus entitled to copyright protection. It is their position that the
presentation of a point-by-point comparison of the formats of the two shows clearly
demonstrates the nexus between the shows and hence establishes the existence of
probable cause for copyright infringement. Such being the case, they did not have to
produce the master tape.
• Both public and private respondents maintain that petitioners failed to
establish the existence of probable cause due to their failure to present the copyrighted
master videotape of Rhoda and Me. They contend that petitioner BJPI’s copyright covers
only a specific episode of Rhoda and Me and that the formats or concepts of dating game
shows are not covered by copyright protection under P.D. No. 49.

ISSUE/RULING:

Whether or not the format or mechanics of a television show is entitled to copyright

 NO. To begin with, the format of a show is not copyrightable. Section 2 of P.D. No. 49,
otherwise known as the DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of
work entitled to copyright protection. The format or mechanics of a television show is not
included in the list. 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 or
independent right granted by the statute, and not simply a preexisting right regulated by the
statute. Being a statutory grant, the rights are only such as the statute confers, and may be
obtained and enjoyed only with respect to the subjects and by the persons, and on terms and
conditions specified in the statute. 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. Regardless of the historical viewpoint, it is authoritatively settled in the United
States that there is no copyright except that which is both created and secured by act of Congress.
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.
What then is the subject matter of petitioners’ copyright? Petitioner BJPI’s copyright
covers audio-visual 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. Accordingly,
by the very nature of the subject of petitioner BJPI’s copyright, the investigating prosecutor
should have the opportunity to compare the videotapes of the two shows.
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 probable cause. As aptly observed by respondent Secretary of
Justice: 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.

Filipino Society of Composers, Authors and Publishers, Inc. vs. Tan

G.R. No. L-36402. March 16,1987

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 lyo," "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.
• Appellant demanded from the appellee payment of the necessary license
fee for the playing and singing of aforesaid compositions but the demand was ignored.
• 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.
 • Appellee maintains that the mere singing and playing of songs and popular
tunes even if they are copyrighted do not constitute an infringement under the provisions
of Section 3 of the Copyright Law

ISSUES/RULING:

1. Whether or not the playing and singing of musical compositions which have been
copyrighted under the provisions of the Copyright Law (Act 3134) inside an establishment
constitute a public performance for profit within the meaning and contemplation of the
Copyright Law of the Philippine

YES. In the case at bar, it is admitted that the patrons of the restaurant in question pay
only for the food and drinks and apparently not for listening to the music. As found by the trial
court, the music provided is for the purpose of entertaining and amusing the customers in order
to make the establishment more attractive and desirable. It will be noted that for the playing and
singing the musical compositions involved, the combo was paid as independent contractors by
the appellant. It is therefore obvious that the expenses entailed thereby are added to the overhead
of the restaurant which are either eventually charged in the price of the food and drinks or to the
overall total of additional income produced by the bigger volume of business which the
entertainment was programmed to attract. Consequently, it is beyond question that the playing
and singing of the combo in defendant-appellee's restaurant constituted performance for profit
contemplated by the Copyright Law.

2. Assuming that there were indeed public performances for profit, whether or not
appellee can be held liable therefor.

NO. The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative
Order No. 3 entitled 'Rules of Practice in the Philippines Patent Office relating to the
Registration of Copyright Claims' promulgated pursuant to Republic Act 165, provides among
other things that an intellectual creation should be copyrighted 30 days after its publication, if
made in Manila, or within 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 30 days prior to the copyright application the law deems the object to have been
donated to the public domain and the same can no longer be copyrighted.
A careful study of the records reveals that the song "Dahil Sa lyo" which was registered
on April 20, 1956 became popular in radios, juke boxes, etc. long before registration while the
song 'The Nearness Of You" registered on January 14, 1955 had become popular 25 years prior
to 1968, (the year of the hearing) or from 1943 and the songs "Sapagkat Ikaw Ay Akin" and
"Sapagkat Kami Ay Tao Lamang" both registered on July 10, 1966, appear to have been known
and sang by the witnesses as early as 1965 or 3 years before the hearing in 1968. The testimonies
of the witnesses at the hearing of this case on this subject were unrebutted by the appellant.
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.