PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs.

FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC.

G.R. No. 131522 July 19, 1999
FACTS:
Petitioners are authors and copyright owners of duly issued certificates of
copyright registration covering their published works, produced through their
combined resources and efforts, entitled COLLEGE ENGLISH FOR TODAY (CET),
Books 1 and 2, and WORKBOOK FOR COLLEGE FRESHMAN ENGLISH, Series 1.
Respondent Felicidad Robles and Goodwill Trading Co., Inc. are the author/publisher
and distributor/seller of another published work entitled DEVELOPING ENGLISH
PROFICIENCY (DEP), Books 1 and 2 which book was covered by copyrights issued to
them.
By chance petitioners came upon the book of respondent Robles and upon
perusal of said book they were surprised to see that the book was strikingly similar
to the contents, scheme of presentation, illustrations and illustrative examples in
their own book, CET. After an itemized examination and comparison of the two
books (CET and DEP), petitioners found that several pages of the respondents book
are similar, if not all together a copy of petitioners book, which is a case of
plagiarism and copyright infringement.
Petitioners then made demands for damages against respondents and also
demanded that they cease and desist from further selling and distributing to the
general public the infringed copies of respondent Robles works. However,
respondents ignored the demands, hence, petitioners filed with the Regional Trial
Court, Makati, a complaint for Infringement and/or unfair competition with
damages against private respondents.
ISSUE:
Whether or not respondents committed copyright infringement
HELD:
Yes. Work has reference to literary and artistic creations and this includes
books and other literary, scholarly and scientific works. A perusal of the records
yields several pages of the book DEP that are similar if not identical with the text of
CET. In several other pages the treatment and manner of presentation of the topics
of DEP are similar if not a rehash of that contained in CET. We believe 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.
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.

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.
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 latters
research work and compilation and misrepresented them as her own.
She
circulated the book DEP for commercial use and did not acknowledge petitioners as
her source.

JAMES HOWARD BOOTHE and JOHN MORTON vs. THE DIRECTOR OF

PATENTS
G.R. L-24919January 28, 1980
FACTS:
Petitioners James Howard Boothe and John Morton II, chemists, citizens and
residents of the United States, claim to be the inventors of a new antibiotic
designated as "tetracycline", a new derivative of chlortetracycline (popularly known
as "aureomycin"). On February 19, 1954, petitioners applied for Letters Patent
covering said invention to respondent Director of Patents claiming the right of
priority granted to foreign applicants under section 15 of the Patent Law (RA 165).
Receipt of petitioners' application was acknowledged by respondent Director on
March 6, 1954. On April 14, 1954, petitioners filed with respondent Director a
legalized copy of their Application for Letters Patent in the United States for the
same invention (U.S. Serial No. 342556). Said legalized copy indicated that the
application in the United States was filed on March 16, 1963. Petitioner claims to
benefit from Section 15 of the Patent Law. Petitioners claim that it would be entitled
to the priority date of March 16, 1953 if their application is considered filed in the
Philippines as of March 5, 1954, since the latter date would fall within the one-year
period prior to March 5, 1954.
Respondent uphold the "Philippine Patent No. 254 November 29, 1956",
which refers to a local Patent obtained by Pfizer and Co., presumably covering the
same invention.
Also, respondent claims that the "Specification" petitioner
submitted in their application was "incomplete".
Respondent Director opined that the portions subsequently supplied in the
local application are not new matter a comparison between the foreign and local
applications showed that the foreign application included the missing portions of the
local one. However, respondent Direct qualified that petitioners' application may be
considered complete only on April 14, 1954 when the certified copy of the foreign
application was submitted. Consequently, the instant application is to be considered
an ordinary application, not entitled to the right of priority granted by section 15 of
the Patent Law, inasmuch as said application was not complete within the meaning
of Rules 47 and 48 of the Revised Rules of Practice in Patent Case when first filed on
March 5, 1954.
ISSUE:
Whether respondent director of patents erred in holding that petitioners'
application, may not be treated as filed under section 15 as amended, of republic
act no. 165 known as the patent law.
HELD:
NO. It is imperative that the application be complete in order that it may be
accepted. It is essential to the validity of Letters Patent that the specifications be
full, definite, and specific. The purpose of requiring a definite and accurate

description of the process is to apprise the public of what the patentee claims as his
invention, to inform the Courts as to what they are called upon to construe, and to
convey to competing manufacturers and dealers information of exactly what they
are bound to avoid.
The specification which petitioners submitted on March 5, 1954 was far from
complete. That defect was one of substance and not merely one of form. What
petitioners claimed as their invention was not completely determinable therefrom.
Petitioners' application could be deemed as complete only on July 2, 1963 when
they submitted the additional pages on the Specifications and Claims. Respondent
Director, therefore, did not err in converting petitioners' application into an ordinary
application filed on April 14, 1954, not only for their having failed to complete their
application within the four-month period provided for by Rules 47 and 48, Revised
Rules of Practice in Patent Cases, and as required of them by Paper No. 6, but also
for their having failed to file a complete application within twelve months from
March 16, 1953, the date of the foreign application For, to be entitled to the filing
date of the patent application, an invention disclosed in a previously filed
application must be described within the instant application in such a manner as to
enable one skilled in the art to use the same for a legally adequate utility.