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(1) AIR PHILIPPINES CORPORATION vs. PENNSWELL, INC.

G.R. No. 172835 December 13, 2007


FACTS:
Respondent delivered and sold to petitioner sundry goods in trade. Under the contracts,
petitioners total outstanding obligation amounted to P449,864.98 with interest at 14%
per annum until the amount would be fully paid. For failure of the petitioner to comply
with its obligation under said contracts, respondent filed a Complaint for a Sum of Money
with the RTC.
In its Answer, petitioner contended that its refusal to pay was not without valid and
justifiable reasons. Petitioner alleged that it was defrauded by respondent for its previous
sale of four items. Said items were misrepresented by respondent as belonging to a new
line, but were in truth and in fact, identical with products petitioner had previously
purchased from respondent. Petitioner asserts that it was deceived by respondent which
merely altered the names and labels of such goods.
During the pendency of the trial, petitioner filed a Motion to Compel respondent to give a
detailed list of the ingredients and chemical components of the products. The RTC
rendered an Order granting the petitioners motion and directed Pennswell, Inc. to
give Air Philippines Corporation, a detailed list of the ingredients or chemical components
of the chemical products.
Respondent sought reconsideration of the foregoing Order, contending that it cannot be
compelled to disclose the chemical components sought because the matter is
confidential. It argued that what petitioner endeavored to inquire upon constituted a
trade secret which respondent cannot be forced to divulge.
The RTC reversed itself and issued an Order, finding that the chemical components are
respondents trade secrets and are privileged in character. Alleging grave abuse of
discretion on the part of the RTC, petitioner filed a Petition for Certiorari under Rule 65 of
the Rules of Court with the CA, which denied the Petition and affirmed the Order of the
RTC.
ISSUE:
Whether or not respondent can be compelled to disclose its trade secrets?
RULING:

No. The products are covered by the exception of trade secrets being divulged in compulso
disclosure. The Court affirms the ruling of the Court of Appeals which upheld the finding of t
RTC that there is substantial basis for respondent to seek protection of the law for its proprieta
rights over the detailed chemical composition of its products.

The Supreme Court has declared that trade secrets and banking transactions a
among the recognized restrictions to the right of the people to information
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embodied in the Constitution. SC said that the drafters of the Constitution also unequivoca
affirmed that, aside from national security matters and intelligence information, trade or industr
secrets (pursuant to the Intellectual Property Code and other related laws) as well as banki
transactions (pursuant to the Secrecy of Bank Deposits Act), are also exempted from compulso
disclosure.

A trade secret is defined as a plan or process, tool, mechanism or compound known only to
owner and those of his employees to whom it is necessary to confide it. The definition a
extends to a secret formula or process not patented, but known only to certain individuals using
in compounding some article of trade having a commercial value.

In the case at bar, petitioner cannot rely on Section 77of Republic Act 7394, or the Consumer A
of the Philippines, in order to compel respondent to reveal the chemical components of
products. While it is true that all consumer products domestically sold, whether manufactur
locally or imported, shall indicate their general make or active ingredients in their respecti
labels of packaging, the law does not apply to respondent. Respondents specialized lubricants
namely, Contact Grease, Connector Grease, Thixohtropic Grease, Di-Electric Strength Protecti
Coating, Dry Lubricant and Anti-Seize Compound are not consumer products.

What is clear from the factual findings of the RTC and the Court of Appeals is that the chemic
formulation of respondents products is not known to the general public and is unique only to
Both courts uniformly ruled that these ingredients are not within the knowledge of the publi
Since such factual findings are generally not reviewable by this Court, it is not duty-bound
analyze and weigh all over again the evidence already considered in the proceedings below.

The revelation of respondents trade secrets serves no better purpose to the disposition of t
main case pending with the RTC, which is on the collection of a sum of money. As can be glean
from the facts, petitioner received respondents goods in trade in the normal course of busines
To be sure, there are defenses under the laws of contracts and sales available to petitioner.
the other hand, the greater interest of justice ought to favor respondent as the holder of tra
secrets. Weighing the conflicting interests between the parties, SC rules in favor of the grea
interest of respondent. Trade secrets should receive greater protection from discove
because they derive economic value from being generally unknown and not read
ascertainable by the public.
(2) ELIDAD KHO vs. COURT OF APPEALS
G.R. No. 115758
March 19, 2002
FACTS:
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Elidad Kho is the owner of KEC Cosmetics Laboratory and she was also the holder
of copyrights over Chin Chun Su and its Oval Facial Cream Container/Case. She also
bought the patent rights over theChin Chun Su & Device and Chin Chun Su for medicated
cream from one Quintin Cheng, who was the assignee of Shun Yi Factory a Taiwanese
factory actually manufacturing Chin Chun Su products.
Kho filed a petition for injunction against Summerville General Merchandising and
Company to enjoin the latter from advertising and selling Chin Chun Su products, in
similar containers as that of Kho, for this is misleading the public and causing Kho to lose
income; the petition is also to enjoin Summerville from infringing upon Khos copyrights.
Summerville in their defense alleged that they are the exclusive and authorized
importer, re-packer and distributor of Chin Chun Su products; that Shun Yi even
authorized Summerville to register its trade name Chin Chun Su Medicated Cream with
the Philippine Patent Office; that Quintin Cheng, from whom Kho acquired her patent
rights, had been terminated (her services) by Shun Yi.
ISSUE:
Whether or not Kho has the exclusive right to use the trade name and its container?
HELD:
No. Kho has no right to support her claim for the exclusive use of the subject trade name
and its container. The name andcontainer of a beauty cream product are
proper subjects of a trademark (not copyright like what she registered for) 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. Khos 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.
(3) GODINES vs. COURT OF APPEALS
G.R. No. 97343
September 13, 1993
FACTS:
The patent involved in this case is Letters Patent No. UM-2236 issued by the Philippine
Patent Office to one Magdalena S. Villaruz on July 15, 1976. It covers a utility model for a
hand tractor or power tiller. The said patent was acquired by SV-Agro Industries
Enterprises, Inc., herein private respondent, from Magdalena Villaruz, its chairman and
president, by virtue of a Deed of Assignment executed by the latter in its favor. On
October 31, 1979, SV-Agro Industries caused the publication of the patent in Bulletin
Today, a newspaper of general circulation. In accordance with the patent, private
respondent manufactured and sold the patented power tillers with the patent imprinted
on them.
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In 1979, SV-Agro Industries suffered a decline of more than 50% in sales in its Molave,
Zamboanga del Sur branch. Upon investigation, it discovered that power tillers similar to
those patented by private respondent were being manufactured and sold by petitioner
herein. Consequently, private respondent notified Pascual Godines about the existing
patent and demanded that the latter stop selling and manufacturing similar power tillers.
Upon petitioner's failure to comply with the demand, SV-Agro Industries filed before the
Regional Trial Court a complaint for infringement of patent and unfair competition.
Petitioner maintains the defenses which he raised before the trial and appellate courts,
to wit: that he was not engaged in the manufacture and sale of the power tillers as he
made them only upon the special order of his customers who gave their own
specifications; hence, he could not be liable for infringement of patent and unfair
competition; and that those made by him were different from those being manufactured
and sold by private respondent.
ISSUE:
Whether or not petitioner's product infringe upon the patent of private respondent?
HELD:
The Court held in the affirmative. Recognizing that the logical fallback position of one in
the place of defendant is to aver that his product is different from the patented one,
courts have adopted the doctrine of equivalents which recognizes that minor
modifications in a patented invention are sufficient to put the item beyond the scope of
literal infringement. Thus, according to this doctrine, "(a)n infringement also occurs when
a device appropriates a prior invention by incorporating its innovative concept and,
albeit with some modification and change, performs substantially the same function in
substantially the same way to achieve substantially the same result." The reason for the
doctrine of equivalents is that to permit the imitation of a patented invention which does
not copy any literal detail would be to convert the protection of the patent grant into a
hollow and useless thing. Such imitation would leave room for -- indeed encourage -- the
unscrupulous copyist to make unimportant and insubstantial changes and substitutions
in the patent which, though adding nothing, would be enough to take the copied matter
outside the claim, and hence outside the reach of the law.
To establish an infringement, it is not essential to show that the defendant adopted the
device or process in every particular; Proof of an adoption of the substance of the thing
will be sufficient. 'In one sense,' said Justice Brown, 'it may be said that no device can be
adjudged an infringement that does not substantially correspond with the patent. But
another construction, which would limit these words to exact mechanism described in
the patent, would be so obviously unjust that no court be expected to adopt it.
(4) SMITH KLINE BECKMAN vs. COURT OF APPEALS
G.R. No. 126627
August 14, 2003
FACTS:
Smith Kline is a US corporation licensed to do business in the Philippines. In 1981, a
patent was issued to it for its invention entitled Methods and Compositions for
Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
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Carbamate. The invention is a means to fight off gastrointestinal parasites from various
cattles and pet animals.
Tryco Pharma is a local corporation engaged in the same business as Smith Kline.
Smith Kline sued Tryco Pharma because the latter was selling a veterinary product called
Impregon which contains a drug called Albendazole which fights off gastro-intestinal
roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and goats.
Smith Kline is claiming that Albendazole is covered in their patent because it is
substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered by its
patent since both of them are meant to combat worm or parasite infestation in animals.
And that Albendazole is actually patented under Smith Kline in the US.
Tryco Pharma averred that nowhere in Smith Klines patent does it mention that
Albendazole is present but even if it were, the same is unpatentable.
Smith Kline thus invoked the doctrine of equivalents, which implies that the two
substances substantially do the same function in substantially the same way to achieve
the same results, thereby making them truly identical for in spite of the fact that the
word Albendazole does not appear in Tryco Paharmas letters of patent, it has ably shown
by evidence its sameness with methyl 5 propylthio-2-benzimidazole carbamate.
ISSUE:
Whether or not there is patent infringement in this case?
HELD:
No. Smith Kline failed to prove that Albendazole is a compound inherent in the patented
invention. Nowhere in the patent is the word Albendazole found. When the language of
its claims is clear and distinct, the patentee is bound thereby and may not claim
anything beyond them. Further, there was a separate patent for Albendazole given by
the US which implies that Albendazole is indeed separate and distinct from the patented
compound here.
A scrutiny of Smith Klines evidence fails to prove the substantial sameness of the
patented compound and Albendazole. While both compounds have the effect of
neutralizing parasites in animals, identity of result does not amount to infringement of
patent unless Albendazole operates in substantially the same way or by substantially the
same means as the patented compound, even though it performs the same function and
achieves the same result. In other words, the principle or mode of operation must be the
same or substantially the same.
The doctrine of equivalents thus requires satisfaction of the function-means-and-result
test, the patentee having the burden to show that all three components of such
equivalency test are met.
(5) CRESER PRECISION SYSTEMS, INC. vs. CA and FLORO INTERNATIONAL CO.
G.R. No. 118708
February 2, 1998
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FACTS:
Respondent was granted by the Bureau of Patents, Trademarks and Technology Transfer
(BPTTT) a Letter of patent for its aerial fuze on January 23, 1990. Sometime in 1993,
respondent discovered that the petitioner submitted samples of its patented aerial fuze
to the AFP for testing claiming to be his own. To protect its right, respondent
sent letter of warning to petitioner on a possible court action should it proceed its testing
by the AFP. In response the petitioner filed a complaint for injunction and damages
arising from alleged infringement before the RTC asserting that it is the true and actual
inventor of the aerial fuze which it developed on 1981 under the Self Reliance Defense
Posture Program of the AFP. It has been supplying the military of the aerial fuze since
then and that the fuze of the respondent is similar as that of the petitioner. Petitioner
prayed for restraining order and injunction from marketing, manufacturing and profiting
from the said invention by the respondent. The trial court ruled in favor of the petitioner
citing the fact that it was the first to develop the aerial fuze since 1981 thus it concludes
that it is the petitioners aerial fuze that was copied by the respondent. Moreover, the
claim of respondent is solely based on its letter of patent which validity is being
questioned. On appeal, respondent argued that the petitioner has no cause of action
since he has no right to assert there being no patent issued to his aerial fuze. The Court
of Appeals reversed the decision of the trial court dismissing the complaint of the
petitioner. It was the contention of the petitioner that it can file under Section 42 of the
Patent Law an action for infringement not as a patentee but as an entity in possession of
a right, title or interest to the patented invention. It theorizes that while the absence of a
patent prevents one from lawfully suing another for infringement of said patent, such
absence does not bar the true and actual inventor of the patented invention from suing
another in the same nature as a civil action for infringement.
ISSUE:
Whether or not the petitioner has the right to assail the validity of the patented work of
the
respondent?
HELD:
The court finds the argument of the petitioner untenable. Section 42 of the Law on
Patent (RA 165) provides that only the patentee or his successors-in-interest may file an
action against infringement. What the law contemplates in the phrase anyone
possessing any right, title or interest in and to the patented invention refers only to the
patentees successors-in-interest, assignees or grantees since the action on patent
infringement may be brought only in the name of the person granted with the patent.
There can be no infringement of a patent until a patent has been issued since the right
one has over the invention covered by the patent arises from the grant of the patent
alone. Therefore, a person who has not been granted letter of patent over an invention
has not acquired right or title over the invention and thus has no cause of action for
infringement. Petitioner admitted to have no patent over his invention. Respondents
aerial fuze is covered by letter of patent issued by the Bureau of Patents thus it has in his
favor not only the presumption of validity of its patent but that of a legal and factual first
and true inventor of the invention.
(6) JOAQUIN vs. DRILON
G.R. No. 108946,
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January 28, 1999


FACTS:
BJ Productions Inc. (BJPI) was the holder of copyright over the showRhoda and Me. It
holds rights over the shows format and style of presentation. In 1991, BJPIs president
Francisco Joaquin saw on TV RPN 9s show Its a Date, which is basically the same
as Rhoda and Me. He eventually sued Gabriel Zosa, the manager of the show Its a
Date. Zosa later sought a review of the prosecutors resolution before the Secretary of
Justice (Franklin Drilon). Drilon reversed the findings of the fiscal and directed him to
dismiss the case against Zosa.
ISSUE:
Whether or not the decision of Drilon is valid?
HELD:
Yes. The essence of copyright infringement is the copying, in whole or in part, of
copyrightable materials as defined and enumerated in Section 2 of PD. No. 49 (Copyright
Law). Apart from the manner in which it is actually expressed, however, the idea of a
dating game show is a non-copyrightable material. Ideas, concepts, formats, or schemes
in their abstract form clearly do not fall within the class of works or materials susceptible
of copyright registrationas provided in PD. No. 49. What is covered by BJPIs copyright is
the specific episodes of the show Rhoda and Me.
Further, BJPI should have presented the master videotape of the show in order to show
the linkage between the copyright show (Rhoda and Me) and the infringing show (Its a
Date). This is based on the ruling in 20th Century Fox vs CA (though this has been
qualified by Columbia Pictures vs CA, this is still good law). Though BJPI did provide a lot
of written evidence and description to show the linkage between the shows, the same
were not enough. 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 gameshows.
(7) ABS-CBN BROADCASTING vs. PHIL. MULTI-MEDIA
G.R. No. 175769-70
January, 19, 2009
FACTS:
Philippine Multi-Media System, Inc. (PMSI) is a signal provider which has cable and
satellite services. It is providing its satelliteservices through Dream Broadcasting System.
PMSI has its Free TV and Premium Channels. The Free TV includes ABS-CBN, GMA-7,
and other local networks. The premium channels include AXN, Jack TV, etc which were
paid by subscribers before such channels can be transmitted as feeds to a subscribers
TV set which has been installed with a Dream satellite.
ABS-CBN is a television and broadcasting corporation. It broadcasts television programs
by wireless means to Metro Manila and nearby provinces, and by satellite to provincial
stations through Channel 2 and Channel 23. The programs aired over Channels 2 and 23
are either produced by ABS-CBN or purchased from or licensed by other producers. ABS7

CBN also owns regional television stations which pattern their programming in
accordance with perceived demands of the region. Thus, television programs shown in
Metro Manila and nearby provinces are not necessarily shown in other provinces.
In May 2002, ABS-CBN sued PMSI for allegedly engaging inrebroadcasting and thereby
infringing on ABS-CBNs copyrights; that the transmission of Channels 2 and 23 to the
provinces where these two channels are not usually shown altered ABS-CBNs
programming for the said provinces. PMSI argued that it is not infringing upon ABS-CBNs
copyrights because it is operating under the Must-Carry Rule outlined in NTC (National
Telecommunications Commission) Circular No. 4-08-88.
ISSUE:
Whether or not PMSI infringed upon the copyrights of ABS-CBN?
HELD:
No. The Must-Carry Rule under NTC Circular No. 4-08-88 falls under the limitations on
copyright. The Filipino people must be given wider access to more sources of news,
information, education, sports event and entertainment programs other than those
provided for by mass media and afforded television programs to attain a well informed,
well-versed and culturally refined citizenry and enhance their socio-economic growth.
The very intent and spirit of the NTC Circular will prevent a situation whereby station
owners and a few networks would have unfettered power to make time available only to
the highest bidders, to communicate only their own views on public issues, people, and
to permit on the air only those with whom they agreed contrary to the state policy that
the (franchise) grantee like ABS-CBN, and other TV station owners and even the likes of
PMSI, shall provide at all times sound and balanced programming and assist in the
functions of public information and education.
PMSI was likewise granted a legislative franchise under Republic Act No. 8630, Section 4
of which similarly states that it shall provide adequate public service time to enable the
government, through the said broadcasting stations, to reach the population on
important public issues; provide at all times sound and balanced programming; promote
public participation such as in community programming; assist in the functions of public
information and education.
The Must-Carry Rule favors both broadcasting organizations and the public. It prevents cable
television companies from excluding broadcasting organization especially in those places not
reached by signal. Also, the rule prevents cable television companies from depriving viewers in
far-flung areas the enjoyment of programs available to city viewers.
(8) COLUMBIA PICTURES vs. COURT OF APPEALS
G.R. No. 110318
August 28, 1996
FACTS:
In 1986, the Videogram Regulatory Board (VRB) applied for a warrant against Jose Jinco
(Jingco), owner of Showtime Enterprises for allegedly pirating movies produced and
owned by ColumbiaPictures and other motion picture companies. Jingco filed a motion to
quash the search warrant but the same was denied in 1987. Subsequently, Jinco filed an
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Urgent Motion to Lift the Search Warrant and Return the Articles Seized. In 1989, the RTC
judge granted the motion. The judge ruled that based on the ruling in the 1988 case
of 20th Century Fox Film Corporation vs CA, before a search warrant could be issued in
copyright cases, the master copy of the films alleged to be pirated must be attached in
the application for warrant.
ISSUE:
Whether or not the 20th Century Fox ruling may be applied retroactively in this case.
HELD:
No. In 1986, obviously the 1988 case of 20th Century Fox was not yet promulgated. The
lower court could not possibly have expected more evidence from the VRB and
Columbia Pictures in their application for a search warrant other than what the law and
jurisprudence, then existing and judicially accepted, required with respect to the finding
of probable cause.
The Supreme Court also revisited and clarified the ruling in the 20thCentury Fox Case. 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 copyright
films is always necessary to meet the requirement 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
demonstration involving the direct use of the senses of the presiding magistrate. 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, especially where the production in court of object evidence
would result in delay, inconvenience or expenses out of proportion to is evidentiary
value.

In fine, the supposed pronouncement in said case regarding the necessity for the presentation o
the master tapes of the copy-righted 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
copy-right infringement cases where there is doubt as to the true nexus between the master tap
and the pirated copies. An objective and careful reading of the decision in said case could lead t
no other conclusion than that said directive was hardly intended to be a sweeping and inflexible
requirement in all or similar copyright infringement cases.
(9) HABANA vs. ROBLES
G.R. No. 131522,
July 19, 1999
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 respondents 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
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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 to
is her book. To allow another to copy the book without appropriate acknowledgment is injury
enough.
(10) JESSIE G. CHING vs. WILLIAM M. SALINAS, SR., et.al.
G.R. No. 161295
June 2005
FACTS:
Ching and Joseph Yu were issued by the National Library Certificates of Copyright
Registration and Deposit of the work described therein as Leaf Spring Eye Bushing for
Automobile.
Ching requested the National Bureau of Investigation (NBI) for police/investigative
assistance for the apprehension and prosecution of illegal manufacturers, producers
and/or distributors of the works. As such, inventory items were seized from Salinas for
violating the provisions of R.A. 8293. He claims that R.A. No. 8293, otherwise known as
the Intellectual Property Code of the Philippines provides in no uncertain terms that
copyright protection automatically attaches to a work by the sole fact of its creation,
irrespective of its mode or form of expression, as well as of its content, quality or
purpose. The law gives a non-inclusive definition of work as referring to original
intellectual creations in the literary and artistic domain protected from the moment of
their creation; and includes original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial design and other works of
applied art under Section 172.1(h) of R.A. No. 8293.
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As such, 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 petitioners utility designs were
classified. Moreover, according to the petitioner, what the Copyright Law protects is the
authors intellectual creation, regardless of whether it is one with utilitarian functions or
incorporated in a useful article produced on an industrial scale. The petitioner also
maintains that the law does not provide that the intended use or use in industry of an
article eligible for patent bars or invalidates its registration under the Law on
Copyright. The test of protection for the aesthetic is not beauty and utility, but art for the
copyright and invention of original and ornamental design for design patents. In like
manner, the fact that his utility designs or models for articles of manufacture have been
expressed in the field of automotive parts, or based on something already in the public
domain does not automatically remove them from the protection of the Law on
Copyright.
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. Respondents aver that the work of the
petitioner is essentially a technical solution to the problem of wear and tear in
automobiles, the substitution of materials, i.e., from rubber to plastic matter of polyvinyl
chloride, an oil resistant soft texture plastic material strong enough to endure pressure
brought about by the vibration of the counter bearing and thus brings bushings. 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. They insist that the
certificates issued by the National Library are only certifications that, at a point in time, a
certain work was deposited in the said office. Furthermore, the registration of copyrights
does not provide for automatic protection. Citing Section 218.2(b) of R.A. No. 8293, the
respondents aver that no copyright is said to exist if a party categorically question sits
existence and legality. Moreover, under Section 2, Rule 7 of the Implementing Rules of
R.A. No. 8293, the registration and deposit of work is not conclusive as to copyright
outlay or the time of copyright or the right of the copyright owner. The respondents
maintain that a copyright exists only when the work is covered by the protection of R.A.
No. 8293.
ISSUE:
Whether or not 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?
HELD:
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 is
merely a utility model. 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. Works for applied
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art include all original pictorials, graphics, and sculptural works that are intended to be
or have been embodied in useful article regardless of factor as 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. We agree with the contention of
the petitioner (citing Section 171.10 of R.A. No.8293), that the authors 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. Functional components of useful articles, no matter how artistically
designed, have generally been denied copyright protection unless they are separable
from the useful article. In this case, the petitioners models are not works of applied art,
nor artistic works. They are utility models, useful articles, albeit with no artistic design or
value
(11) PEARL & DEAN vs. SHOEMART
G.R. No. 148222
August 15, 2003
FACTS:
Pearl & Dean (Phil), Inc. is a corporation engaged in the manufacture of advertising
display units called light boxes. In January 1981, Pearl & Dean was able to acquire
copyrights over the designs of the display units. In 1988, their trademark application for
Poster Ads was approved; they used the same trademark to advertise their light boxes.
In 1985, Pearl & Dean negotiated with Shoemart, Inc. (SM) so that the former may be
contracted to install light boxes in the ad spaces of SM. Eventually, SM rejected Pearl
& Deans proposal.
Two years later, Pearl & Dean received report that light boxes, exactly the same as
theirs, were being used by SM in their ad spaces. They demanded SM to stop using the
light boxes and at the same time asked for damages amounting to P20 M. SM refused to
pay damages though they removed the light boxes. Pearl & Dean eventually sued SM.
SM argued that it did not infringe on Pearl & Deans trademark because Pearl & Deans
trademark is only applicable to envelopes and stationeries and not to the type of ad
spaces owned by SM. SM also averred that Poster Ads is a generic term hence it is not
subject to trademark registration. SM also averred that the actual light boxes are not
copyrightable. The RTC ruled in favor of Pearl & Dean. But the Court of Appeals ruled in
favor of SM.
ISSUE:
12

Whether or not the Court of Appeals is correct?


HELD:
Yes. The light boxes cannot, by any stretch of the imagination, be considered as either
prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to be properly
classified as a copyrightable; what was copyrighted were the technical drawings only,
and not the light boxes themselves. In other cases, it was held that there is no copyright
infringement when one who, without being authorized, uses a copyrighted architectural
plan to construct a structure. This is because the copyright does not extend to the
structures themselves.
On the trademark infringement allegation, the words Poster Ads are a simple
contraction of the generic term poster advertising. In the absence of any convincing
proof that Poster Ads has acquired a secondary meaning in this jurisdiction, Pearl
& Deans exclusive right to the use of Poster Ads is limited to what is written in its
certificate of registration, namely, stationeries.
(12) METRO GOLDWYN MAYER vs. GROKSTER
545 U.S. 913 (2005)
FACTS:
Grokster, LTD and StreamCast Network distributed free software that allowed the sharing
of files in a peer to peer network. This avoided the need for central servers and costly
server storage and works faster. Since files can go from computer to computer and not
through the server it is safer and cost efficient. This program was used by universities,
government agencies, corporations, libraries and then private users. Private users began
sharing copyrighted music and video files without authorization. Grokster used
technology called FastTrack and Stream Cast used Gnutella. The files shared do not go to
a central location so Grokster and StreamCast did not know when the files were being
copied but if they had searched there software they would see the type of files being
shared. It was shown that StreamCast gave software called OpenNap labeled the best
alternative to Napster in the hopes to take all the Napster users that had to stop using
that software after Napster was sued. Grokster had a program called OpenNap that
allowed users to search for Napster files. Grokster and StreamCast received revenues
from posting advertising all over its program software. MGM was able to show that some
90 percent of the files being shared where copyrighted files. Also there is no evidence
that either company tried to filter or stop copyright infringement. The district court
granted summary judgment in favor of Grokster and Stream Case because although
users of the software did infringe MGMs property there was no proof there the
distributors had actual knowledge of specific acts of infringement. MGM appealed.
ISSUE:
Whether a distributor of a product that is capable of lawful and unlawful use is liable for
copyright infringement by a 3rd party using that product?
HELD:
Yes. The appeals court stated that since these distributors did not have actual
knowledge, did not partake in, or monitor the file sharing they are not directly liable for
the infringement. However the court erred in finding they were not secondarily liable for
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the actions of the users of its products. There is a balance between growing technologies
and copyright protection, but to not make distributors liable will make copyright
protections meaningless. The lower court looked to the commerce doctrine now codified
which states that a product must be capable of commercially significant noninfridging
uses and if so, no secondary liability would follow. This court finds that interpretation too
narrow. Here this court considers the doctrine of inducement to also be relevant. When a
distributor promotes using its device to infringe copyright material, shown by affirmative
steps to foster infringement this is inducement and the distributor will be liable for 3rd
party infringement. All the actions of the companies is enough to show a genuine issue
of material fact, thus the court reversed the summary judgment ruling and remanded the
case upon those findings.
(13) SONY CORP vs. UNIVERSAL CITY STUDIOS
464 U.S. 417 (1984)
FACTS:
Sony Corporation of America manufactured and sold the "Betamax" home video tape
recorder (VTR). Universal City Studios owned the copyrights to television programs
broadcast on public airwaves. Universal sued Sony for copyright infringement, alleging
that because consumers used Sony's Betamax to record Universal's copyrighted works,
Sony was liable for the copyright infringement allegedly committed by those consumers
in violation of the Copyright Act. Universal sought monetary damages, an equitable
accounting of profits, and an injunction against the manufacturing and marketing of the
VTR's. The District Court denied all relief, holding that the noncommercial home use
recording of material broadcast over the public airwaves was a fair use of copyrighted
works and did not constitute copyright infringement. Moreover, the court concluded that
Sony could not be held liable as contributory infringers even if the home use of a VTR
was considered an infringing use. In reversing, the Court of Appeals held Sony liable for
contributory infringement.
ISSUE:
Whether or not Sony's sale of "Betamax" video tape recorders to the general public
constitute contributory infringement of copyrighted public broadcasts under the
Copyright Act?
HELD:
No. In a 5-4 opinion delivered by Justice John Paul Stevens, the Court held that "[t]he sale
of the VTR's to the general public does not constitute contributory infringement of
[Universal's] copyrights." The Court concluded that there was a significant likelihood that
a substantial number of copyright holders who license their works for free public
broadcasts would not object to having their broadcasts time-shifted by private viewers
and that Universal failed to show that time-shifting would cause non-minimal harm to the
potential market for, or the value of, their copyrighted works. Justice Stevens wrote for
the Court that "[t]he sale of copying equipment...does not constitute contributory
infringement if the product is widely used for legitimate, unobjectionable purposes, or,
indeed, is merely capable of substantial noninfringing uses." For the dissenting minority,
Justice Blackmun expressed the views that taping a copyrighted television program is
infringement and that the recorder manufacturers were guilty of inducing and materially
contributing to the infringement.
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(14) FRANK AND GOHN vs. BENITO


G.R. No. 27793
March 16,1928
FACTS:
Plaintiffs are the owners of a patent covering hemp-stripping machine No. 1519579
issued to them by the United States Patent Office and duly registered in the Bureau of
Commerce and Industry of the Philippine Islands under the provisions of Act No. 2235
Plaintiffs allege that the defendant manufactured a hemp-stripping machine in which,
without authority from the plaintiffs, and has embodied and used such spindles and their
method of application and use, and is exhibiting his machine to the public for the
purpose of inducing its purchase. Frank and Gohn stress that use by the Benito of such
spindles and the principle of their application to the stripping of hemp is in violation of,
and in conflict with, plaintiffs' patent, together with its conditions and specifications.
Plaintiffs assert the violation of infringement upon the patent granted to Frank & Gohn,
and requested that an action for injunction and damages be instituted against Benito.
Respondent on the other hand contends that it had no prior knowledge of the prior
existence of the hemp-stripping invention of the plaintiffs nor had any intent to imitate
the Franks product. Likewise, the defendant contended that the facts alleged therein do
not constitute a cause of action, that it is ambiguous and vague. The lower court
rendered judgment in favor of the plaintiffs, to which was later affirmed by the appellate
court.
HELD:
As a rule, the burden of proof to substantiate a charge of infringement is with the
plaintiff. Where, however, the plaintiff introduces the patent in evidence, if it is in due
form, it affords a prima facie presumption of its correctness and validity. The decision of
the Commissioner of Patents in granting the patent is always presumed to be correct.
The burden the shifts to the defendant to overcome by competent evidence this legal
presumption.
The patent in the case at bar, having been introduced in evidence, affords a prima facie
presumption of its correctness and validity. Hence, this is not a case of a conflict between
two different patents. In the recent of Temco Electric Motor Co. vs. Apco Mfg. Co.,
decided by the Supreme Court of the United States ruled an improper cannot
appropriate the basic patent of another, and if he does so without license is an infringer,
and may be used as such. It is well established that an improver cannot appropriate the
basic patent of another and that the improver without a license is an infringer and may
be sued as such.
(15) DEL ROSARIO vs. CA
G.R. No. 115106
March 15, 1996

15

FACTS:

Roberto Del Rosario was granted a patent for his innovation called the Minus One karaoke. T
patent was issued in June 1988 for five years and was renewed in November 1991 for another fi
years as there were improvement introduced to his minus one karaoke. In 1993, while t
patent was still effective, Del Rosario sued Janito Corporation, a Japanese company owned
Janito Cua, for allegedly infringing upon the patent ofDel Rosario. Del Rosario alleged that Jan
was manufacturing a sing-along system under the brand miyata karaoke which is substantial
if not identical, the same to his minus one karaoke. The lower court ruled in favor of D
Rosario but the Court of Appeals ruled that there was no infringement because the karao
system was a universal product manufactured, advertised, and marketed all over the world lo
beforeDel Rosario was issued his patents.

ISSUE:
Whether or not the Court of Appeals erred in its ruling?

HELD:

Yes. The Patent Law expressly acknowledges that any new modelof implements or tools of a
industrial product even if not possessed of the quality of invention but which is of practical util
is entitled to a patent for utility model. Here, there is no dispute that the letters patent issu
to Del Rosario are for utility models of audio equipment. It iselementary that a patent may
infringed where the essential or substantial features of the patented invention are taken
appropriated, or the device, machine or other subject matter alleged to infringe is substantia
identical with the patented invention. In order to infringe a patent, a machine or device mu
perform the same function, or accomplish the same result by identical or substantially identi
means and the principle or mode of operation must be substantially the same. In the case at b
miyata karaoke was proven to have substantial if not identical functionality as that of the min
one karaoke which was covered by the second patent issued to Del Rosario. Further, Janito fail
to present competent evidence that will show that Del Rosarios innovation is not new.
(16) GSELL vs. YAP-JUE
G.R. No. 1816
April 17, 1906

(17) WILSON ONG CHING KlAN CHUAN vs. HON. COURT OF APPEALS and LORENZO TAN
G.R. No. 130360
August 15, 2001

16

(18) SAMBAR vs. LEVI STRAUSS & CO.


G.R. No. 132604
March 6, 2002
(19) MALANG SANTOS vs. MCCULLOUGH
G.R. No. L-19439
October 31, 1946
(20) FILIPINO SOCIETY vs. BENJAMIN TAN
G.R. No. L-36402
March 16, 1987
(21) UNITED FEATURE SYNDICATE vs. MUSINGWEAR CREATION
G.R. No. 76193
November 9, 1989
(22) VARGAS vs. YAPTICO & CO
G.R. No. 14101
September 24, 1919
(23) MANZANO vs. CA
G.R. No. 113388
September 5, 1997
(24) MAGUAN vs. CA
G.R. No. L-45101
November 28, 1986
(25) VARGAS vs. CHUA
G.R. No. L-36650
January 27, 1933
(26) AGUAS vs. DE LEON and CA
G.R. No. L-32160
January 30, 1982

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