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IPL Cases Batch 1 - 1

Santos vs. McCullogh Printing Company


Section 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:
(a)

Books, pamphlets, articles and other writings;

(b)

Periodicals and newspapers;

(c)Lectures, sermons, addresses, dissertations prepared for oral delivery,


whether or not reduced in writing or other material form;
(d)

Letters;

astride a carabao, beside a tree, underneath which appears the plaintiff's


pen name, Malang."
The complaint alleges that plaintiff Mauro Malang Santos designed for
former Ambassador Felino Neri, for his personal Christmas Card greetings
for the year 1959, the artistic motif in question. The following year the
defendant McCullough Printing Company, without the knowledge and
authority of plaintiff, displayed the very design in its album of Christmas
cards and offered it for sale, for a price. For such unauthorized act of
defendant, plaintiff suffered moral damages to the tune of P16,000.00,
because it has placed plaintiff's professional integrity and ethics under
serious question and caused him grave embarrassment before
Ambassador Neri. He further prayed for the additional sum of P3,000.00 by
way of attorney's fee.

(e)
Dramatic or dramatico-musical compositions; choreographic
works or entertainment in dumb shows;

Defendant in answer to the complaint, after some denials and admissions,


moved for a dismissal of the action claiming that

(f) Musical compositions, with or without words;

(1)
The design claimed does not contain a clear notice that it
belonged to him and that he prohibited its use by others;

(g)
Works of drawing, painting, architecture, sculpture, engraving,
lithography or other works of art; models or designs for works of art;
(h)
Original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial design, and other
works of applied art;
(i) Illustrations, maps, plans, sketches, charts and three-dimensional works
relative to geography, topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k)
Photographic works including works produced by a process
analogous to photography; lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a
process analogous to cinematography or any process for making audiovisual recordings;
(m)
Pictorial illustrations and advertisements;
This is an action for damages based on the provisions of Articles 721 and
722 of the Civil Code of the Philippines, allegedly on the unauthorized use,
adoption and appropriation by the defendant company of plaintiff's
intellectual creation or artistic design for a Christmas Card. The design
depicts "a Philippine rural Christmas time scene consisting of a woman
and a child in a nipa hut adorned with a star-shaped lantern and a man

(2)
The design in question has been published but does not contain
a notice of copyright, as in fact it had never been copyrighted by the
plaintiff, for which reason this action is barred by the Copyright Law;
(3)

The complaint does not state a cause of action.

The documentary evidence submitted were the Christmas cards, as


originally designed by plaintiff, the design as printed for Ambassador Neri,
and the subsequent reprints ordered by other parties. The case was
submitted an a "Stipulation of Fact" the pertinent portions of which are
hereunder reproduced:
1. That the plaintiff was the artist who created the design shown in Exhibit
A, ...
2. That the design carries the pen name of plaintiff, MALANG, on its face ...
and indicated in Exhibit A, ...
3. That said design was created by plaintiff in the latter part of 1959 for
the personal use of former Ambassador Felino Neri; ...
4. That former Ambassador Neri had 800 such cards ... printed by the
defendant company in 1959, ... which he distributed to his friends in
December, 1959;

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5. That defendant company utilized plaintiff's design in the year 1960 in


its album of Christmas card samples displayed to its customers ... .
6. That the Sampaguita Pictures, Inc., placed an order with defendant
company for 700 of said cards ... while Raul Urra & Co. ordered 200 ...,
which cards were sent out by them to their respective correspondent,
clients and friends during the Christmas season of 1960;
7. That defendant company's use of plaintiff's design was without
knowledge, authority or consent of plaintiff;
8. That said design has not been copyrighted;
9. That plaintiff
reputation. ... .

is

an

artist

of

established

name,

good-will

and

As a general proposition, there can be no dispute that the artist acquires


ownership of the product of his art. At the time of its creation, he has the
absolute dominion over it. To help the author protect his rights the
copyright law was enacted.
In intellectual creations, a distinction must be made between two classes
of property rights; the fact of authorship and the right to publish and/or
distribute copies of the creation. With regard to the first, i.e. the fact of
authorship, the artist cannot be divested of the same. In other words, he
may sell the right to print hundred of his work yet the purchaser of said
right can never be the author of the creation.
It is the second right, i.e., the right to publish, republish, multiply and/or
distribute copies of the intellectual creation which the state, through the
enactment of the copyright law, seeks to protect. The author or his assigns
or heirs may have the work copyrighted and once this is legally
accomplished any infringement of the copyright will render the infringer
liable to the owner of the copyright.
xxx

Since the name of the author appears in each of the alleged infringing
copies of the intellectual creation, the defendant may not be said to have
pirated the work nor guilty of plagiarism Consequently, the complaint does
not state a cause of action against the defendant.
xxx

xxx

;xxx

WHEREFORE, the Court dismisses the complaint without pronouncement


as to costs.

Upon the basis of the facts stipulated, the lower court rendered judgment
on December 1, 1961, the pertinent portions of which are recited below:

xxx

Unless satisfactorily explained a delay in applying for a copyright, of more


than thirty days from the date of its publication, converts the property to
one of public domain.

xxx

The plaintiff in this case did not choose to protect his intellectual creation
by a copyright. The fact that the design was used in the Christmas card of
Ambassador Neri who distributed eight hundred copies thereof among his
friends during the Christmas season of 1959, shows that the, same was
published.

In his appeal to this Court, plaintiff-appellant pointed five (5) errors


allegedly committed by the trial court, all of which bring to the fore, the
following propositions: (1) whether plaintiff is entitled to protection,
notwithstanding the, fact that he has not copyrighted his design; (2)
whether the publication is limited, so as to prohibit its use by others, or it
is general publication, and (3) whether the provisions of the Civil Code or
the Copyright Law should apply in the case. We will undertake a collective
discussion of these propositions.
Under the established facts, We find that plaintiff is not entitled to a
protection, the provision of the Civil Code, notwithstanding. Paragraph 33
of Patent Office Administrative Order No. 3 (as amended dated September
18, 1947) entitled "Rules of Practice in the Philippines Patent Office
relating to the Registration of Copyright Claims" promulgated pursuant to
Republic Act 165, provides, among others, that an intellectual creation
should be copyrighted thirty (30) days after its publication, if made in
Manila, or within sixty (60) day's if made elsewhere, failure of which
renders such creation public property. In the case at bar, even as of this
moment, there is no copyright for the design in question. We are not also
prepared to accept the contention of appellant that the publication of the
design was a limited one, or that there was an understanding that only
Ambassador Neri should, have absolute right to use the same. In the first
place, if such were the condition then Ambassador Neri would be the
aggrieved party, and not the appellant. In the second place, if there was
such a limited publication or prohibition, the same was not shown on the
face of the design. When the purpose is a limited publication, but the
effect is general publication, irrevocable rights thereupon become vested
in the public, in consequence of which enforcement of the restriction
becomes impossible (Nutt vs. National Institute, 31 F [2d] 236). It has been
held that the effect of offering for sale a dress, for example manufactured
in accordance with an original design which is not protected by either a
copyright or a patent, is to divest the owner of his common law rights

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therein by virtue of the publication of a 'copy' and thereafter anyone is


free to copy the design or the dress (Fashion Originators Guild of America
v. Federal Trade Commission, 114 F [2d] 80). When Ambassador Neri
distributed 800 copies of the design in controversy, the plaintiff lost
control of his design and the necessary implication was that there had
been a general publication, there having been no showing of a clear
indication that a limited publication was intended. The author of a literary
composition has a light to the first publication thereof. He has a right to
determine whether it shall be published at all, and if published, when,
where, by whom, and in what form. This exclusive right is confined to the
first publication. When once published, it is dedicated to the public, and
the author loses the exclusive right to control subsequent publication by
others, unless the work is placed under the protection of the copyright law.
(See II Tolentino's Comments on the Civil Code, p. 433, citing Wright v.
Eisle 83 N.Y. Supp. 887.)
CONFORMABLY WITH ALL THE FOREGOING, We find that the errors
assigned have not been committed by the lower court. The decision
appealed from, therefore, should be, as it is hereby affirmed. Costs taxed
against plaintiff-appellant.
(n)
Computer programs; and
(o)

Other literary, scholarly, scientific and artistic works.

172.2.
Works are protected by the sole fact of their creation,
irrespective of their mode or form of expression, as well as of their
content, quality and purpose. (Sec. 2, P.D. No. 49a)
Filipino Society of Composers vs. Tan
An appeal was made to the Court of Appeals docketed as CA-G.R. No.
46373-R * entitled Filipino Society of Composers, Authors, Publishers, Inc.,
Plaintiff-Appellant v. Benjamin Tan, Defendant-Appellee, from the decision
of the Court of First Instance of Manila, Branch VII in Civil Case No. 71222
** "Filipino Society of Composers, Authors and Publishers, Inc., Plaintiff v.
Benjamin Tan, Defendant," which had dismissed plaintiffs' complaint
without special pronouncement as to costs.
The Court of Appeals, finding that the case involves pure questions of law,
certified the same to the Supreme Court for final determination
(Resolution, CA-G.R. No. 46373-R, Rollo, p. 36; Resolution of the Supreme
Court of February 16, 1973 in L-36402, Rollo, p. 38).
The undisputed facts of this case are as follows:
Plaintiff-appellant is a non-profit association of authors, composers and
publishers duly organized under the Corporation Law of the Philippines and
registered with the Securities and Exchange Commission. Said association

is the owner of certain musical compositions among which are the songs
entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao
Lamang" and "The Nearness Of You."
On the other hand, defendant-appellee is the operator of a restaurant
known as "Alex Soda Foundation and Restaurant" where a combo with
professional singers, hired to play and sing musical compositions to
entertain and amuse customers therein, were playing and singing the
above-mentioned compositions without any license or permission from the
appellant to play or sing the same. Accordingly, appellant demanded from
the appellee payment of the necessary license fee for the playing and
singing of aforesaid compositions but the demand was ignored.
Hence, on November 7, 1967, appellant filed a complaint with the lower
court for infringement of copyright against defendant-appellee for allowing
the playing in defendant-appellee's restaurant of said songs copyrighted in
the name of the former.
Defendant-appellee, in his answer, countered that the complaint states no
cause of action. While not denying the playing of said copyrighted
compositions in his establishment, appellee maintains that the mere
singing and playing of songs and popular tunes even if they are
copyrighted do not constitute an infringement (Record on Appeal, p. 11;
Resolution, CA-G.R. NO. 46373-R, Rollo, pp. 32-36) under the provisions of
Section 3 of the Copyright Law (Act 3134 of the Philippine Legislature).
The lower court, finding for the defendant, dismissed the complaint
(Record on Appeal, p. 25).
Plaintiff appealed to the Court of Appeals which as already stated certified
the case to the Supreme Court for adjudication on the legal question
involved. (Resolution, Court of Appeals, Rollo, p. 36; Resolution of the
Supreme Court of February 18, 1973, Rollo, p. 38).
In its brief in the Court of Appeals, appellant raised the following
Assignment of Errors:
I
THE LOWER COURT ERRED IN HOLDING THAT THE MUSICAL
COMPOSITIONS OF THE APPELLANT WERE IN THE NATURE OF PUBLIC
PROPERTY WHEN THEY WERE COPYRIGHTED OR REGISTERED.
II

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THE LOWER COURT ERRED IN HOLDING THAT THE MUSICAL


COMPOSITIONS OF THE APPELLANT WERE PLAYED AND SUNG IN THE SODA
FOUNTAIN AND RESTAURANT OF THE APPELLEE BY INDEPENDENT
CONTRACTORS AND ONLY UPON THE REQUEST OF CUSTOMERS.

singing of copyrighted music in the soda fountain and restaurant of the


appellee for the entertainment of the customers although the latter do not
pay for the music but only for the food and drink constitute performance
for profit under the Copyright Law (Brief for the Appellant, pp. 19-25).

III

We concede that indeed there were "public performances for profit. "

THE LOWER COURT ERRED IN HOLDING THAT THE PLAYING AND SINGING
OF COPYRIGHTED MUSICAL COMPOSITIONS IN THE SODA FOUNTAIN AND
RESTAURANT OF THE APPELLEE ARE NOT PUBLIC PERFORMANCES FOR
PROFIT OF THE SAID COMPOSITIONS WITHIN THE MEANING AND
CONTEMPLATION OF THE COPYRIGHT LAW.

The word "perform" as used in the Act has been applied to "One who plays
a musical composition on a piano, thereby producing in the air sound
waves which are heard as music ... and if the instrument he plays on is a
piano plus a broadcasting apparatus, so that waves are thrown out, not
only upon the air, but upon the other, then also he is performing the
musical composition." (Buck, et al. v. Duncan, et al.; Same Jewell La Salle
Realty Co., 32F. 2d. Series 367).

IV
THE LOWER COURT ERRED IN NOT HOLDING THAT THE APPELLEE IS LIABLE
TO THE APPELLANT FOR FOUR (4) SEPARATE INFRINGEMENTS. (Brief for
Appellant, pp. A and B).
The petition is devoid of merit.
The principal issues in this case are whether or not the playing and signing
of musical compositions which have been copyrighted under the provisions
of the Copyright Law (Act 3134) inside the establishment of the defendantappellee constitute a public performance for profit within the meaning and
contemplation of the Copyright Law of the Philippines; and assuming that
there were indeed public performances for profit, whether or not appellee
can be held liable therefor.
Appellant anchors its claim on Section 3(c) of the Copyright Law which
provides:
SEC. 3. The proprietor of a copyright or his heirs or assigns shall have the
exclusive right:
xxx

xxx

xxx

(c)To exhibit, perform, represent, produce, or reproduce the copyrighted


work in any manner or by any method whatever for profit or otherwise; if
not reproduced in copies for sale, to sell any manuscripts or any record
whatsoever thereof;
xxx

xxx

xxx

It maintains that playing or singing a musical composition is universally


accepted as performing the musical composition and that playing and

In relation thereto, it has been held that "The playing of music in dine and
dance establishment which was paid for by the public in purchases of food
and drink constituted "performance for profit" within a Copyright Law."
(Buck, et al. v. Russon No. 4489 25 F. Supp. 317). Thus, it has been
explained that while it is possible in such establishments for the patrons to
purchase their food and drinks and at the same time dance to the music of
the orchestra, the music is furnished and used by the orchestra for the
purpose of inducing the public to patronize the establishment and pay for
the entertainment in the purchase of food and drinks. The defendant
conducts his place of business for profit, and it is public; and the music is
performed for profit (Ibid, p. 319). In a similar case, the Court ruled that
"The Performance in a restaurant or hotel dining room, by persons
employed by the proprietor, of a copyrighted musical composition, for the
entertainment of patrons, without charge for admission to hear it, infringes
the exclusive right of the owner of the copyright." (Herbert v. Shanley Co.;
John Church Co. v. Hillard Hotel Co., et al., 242 U.S. 590-591). In delivering
the opinion of the Court in said two cases, Justice Holmes elaborated thus:
If the rights under the copyright are infringed only by a performance where
money is taken at the door, they are very imperfectly protected.
Performances not different in kind from those of the defendants could be
given that might compete with and even destroy the success of the
monopoly that the law intends the plaintiffs to have. It is enough to say
that there is no need to construe the statute so narrowly. The defendants'
performances are not eleemosynary. They are part of a total for which the
public pays, and the fact that the price of the whole is attributed to a
particular item which those present are expected to order is not important.
It is true that the music is not the sole object, but neither is the food,
which probably could be got cheaper elsewhere. The object is a repast in
surroundings that to people having limited power of conversation or
disliking the rival noise, give a luxurious pleasure not to be had from

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eating a silent meal. If music did not pay, it would be given up. If it pays, it
pays out of the public's pocket. Whether it pays or not, the purpose of
employing it is profit, and that is enough. (Ibid., p. 594).
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 (Record on Appeal, p. 21). It
will be noted that for the playing and singing the musical compositions
involved, the combo was paid as independent contractors by the appellant
(Record on Appeal, p. 24). 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. (Act 3134 amended by P.D. No.
49, as amended).
Nevertheless, appellee cannot be said to have infringed upon the
Copyright Law. Appellee's allegation that the composers of the contested
musical compositions waived their right in favor of the general public when
they allowed their intellectual creations to become property of the public
domain before applying for the corresponding copyrights for the same
(Brief for Defendant-Appellee, pp. 14-15) is correct.
The Supreme Court has ruled that "Paragraph 33 of Patent Office
Administrative Order No. 3 (as amended, dated September 18, 1947)
entitled 'Rules of Practice in the Philippines Patent Office relating to the
Registration of Copyright Claims' promulgated pursuant to Republic Act
165, provides among other things 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." (Santos v. McCullough Printing Company, 12
SCRA 324-325 [1964]. 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.
A careful study of the records reveals that the song "Dahil Sa Iyo" which
was registered on April 20, 1956 (Brief for Appellant, p. 10) became
popular in radios, juke boxes, etc. long before registration (TSN, May 28,
1968, pp. 3-5; 25) while the song "The Nearness Of You" registered on
January 14, 1955 (Brief for Appellant, p. 10) had become popular twenty

five (25) years prior to 1968, (the year of the hearing) or from 1943 (TSN,
May 28, 1968, p. 27) 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 three
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.
(Ibid, pp. 28; 29 and 30).
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.
PREMISES CONSIDERED, the appealed decision of the Court of First
Instance of Manila in Civil Case No. 71222 is hereby AFFIRMED.
Bayanihan vs. BMG
Gentlemen:
Quoted hereunder, for your information, is a resolution of this Court dated
MAR 7 2005.
G.R. No. 166337 (Bayanihan Music Philippines, Inc. vs. BMG Records
(Pilipinas) and Jose Mari Chan, et al.)
Subject of this petition for review on certiorari is the Decision dated
December 14, 2004[1] of the Court of Appeals in CA-G.R. SP No. 69626,
upholding the Order dated August 24, 2001 of the Regional Trial Court at
Quezon City, Branch 90, which found no merit in petitioner's application
for the issuance of a writ of preliminary injunction, along with the Order
dated January 10, 2002, which denied petitioner's motion for
reconsideration.
On July 16, 1973, private respondent Jose Mari Chan (Chan) entered into a
contract with petitioner Bayanihan Music Philippines, Inc. (Bayanihan),
whereunder the former assigned to the latter all his rights, interests and
participation over his musical composition "Can We Just Stop and Talk A
While". On March 11, 1976, the parties entered into a similar contract over
Chan's other musical composition entitled "Afraid For Love To Fade".
On the strength of the abovementioned contracts, Bayanihan applied for
and was granted by the National Library a Certificate of Copyright
Registration for each of the two musical compositions, thus: November 19,
1973, for the song "Can We Just Stop and Talk A While" and on May 21,
1980, for the song "Afraid for Love To Fade."

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Apparently, without the knowledge and consent of petitioner Bayanihan,


Chan authorized his co-respondent BMG Records (Pilipinas) [BMG] to
record and distribute the aforementioned musical compositions in a then
recently released album of singer Lea Salonga.
In separate letters both dated December 7, 1999, petitioner Bayanihan
informed respondents Chan and BMG of its existing copyrights over the
subject musical compositions and the alleged violation of such right by the
two. Demands were made on both to settle the matter with Bayanihan.
However no settlement was reached by the parties.
Hence, on August 8, 2000, Bayanihan filed with the Regional Trial Court at
Quezon City a complaint against Chan and BMG for violation of Section
216 of Republic Act No. 8293, otherwise known as the Intellectual Property
Code of the Philippines, with a prayer for the issuance of Temporary
Restraining Order (TRO) and/or writ of preliminary injunction, enjoining
respondent BMG from further recording and distributing the subject
musical compositions in whatever form of musical products, and Chan
from further granting any authority to record and distribute the same
musical compositions.
In its answer, BMG contended, among others, that: (1) the acts of
recording and publication sought to be enjoined had already been
consummated, thereby rendering moot Bayanihan's prayer for TRO and/or
preliminary injunction; and (2) there is no clear showing that petitioner
Bayanihan would be greatly damaged by the refusal of the prayed for TRO
and/or preliminary injunction. BMG also pleaded a cross-claim against its
co-respondent Chan for violation of his warranty that his musical
compositions are free from claims of third persons, and a counterclaim for
damages against petitioner Bayanihan.
Chan, for his part, filed his own answer to the complaint, thereunder
alleging that: (1) it was never his intention to divest himself of all his rights
and interest over the musical compositions in question; (2) the contracts
he entered into with Bayanihan are mere music publication agreements
giving Bayanihan, as assignee, the power to administer his copyright over
his two songs and to act as the exclusive publisher thereof; (3) he was not
cognizant of the application made by and the subsequent grant of
copyrights to Bayanihan; and (4) Bayanihan was remissed in its obligations
under the contracts because it failed to effectively advertise his musical
compositions for almost twenty (20) years, hence, he caused the
rescission of said contracts in 1997. Chan also included in his answer a
counterclaim for damages against Bayanihan.
After hearing the parties, the lower court came out with an order denying
Bayanihan's prayer for TRO, saying, thus:

After carefully considering the arguments and evaluating the evidence


presented by counsels, this Court finds that the plaintiff has not been able
to show its entitlement to the relief of TRO as prayed for in its verified
complaint (see Section 4, Rule 58 of the 1997 Rules of Civil Procedure, as
amended), hence, this Court is of the considered and humble view that the
ends of justice shall be served better if the aforecited application is
denied.
IN VIEW OF THE FOREGOING, the aforecited application or prayer for the
issuance of a TRO is denied.
SO ORDERED.
Thereafter, the same court, in its subsequent Order dated August 24,
2001,[2] likewise denied Bayanihan's prayer for a writ of preliminary
injunction, to wit:
After carefully going over the pleadings and the pertinent portions of the
records insofar as they are pertinent to the issue under consideration, this
Court finds that the plaintiff has not been able to show its entitlement to
the relief of preliminary injunction as prayed for in its verified complaint
(see Section 4, Rule 58 of the 1997 Rules of Civil Procedure, as amended),
hence, this Court is of the considered and humble view that the ends of
justice shall be served better if the aforecited application is denied, (see
also Order dated July 16, 2001).
IN VIEW OF THE FOREGOING, the application or prayer for the issuance of
a writ of preliminary injunction is denied.
SO ORDERED.
Its motion for a reconsideration of the same order having been likewise
denied by the trial court in its next Order of January 10, 2002,[3] petitioner
Bayanihan then went to the Court of Appeals on a petition for certiorari,
thereat docketed as CA-G.R. SP No. 69626, imputing grave abuse of
discretion on the part of the trial court in issuing the Orders of August 24,
2001 and January 10, 2001, denying its prayers for a writ of preliminary
injunction and motion for reconsideration, respectively.
In the herein assailed Decision dated December 14, 2004, the Court of
Appeals upheld the challenged orders of the trial court and accordingly
dismissed Bayanihan petition, thus:
WHEREFORE, finding neither flaw of jurisdiction nor taint of grave abuse of
discretion in the issuance of the assailed Orders of the respondent court

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dated August 24, 2001 and January 10, 2002, the instant petition is
DISMISSED. No costs.
SO ORDERED.[4]
Hence, Bayanihan's present recourse.
It is petitioner's submission that the appellate court committed reversible
error when it dismissed its petition for certiorari and upheld the trial
court's denial of its application for a writ of preliminary injunction.
Petitioner insists that as assignee of the copyrights over the musical
compositions in question, it has a clear legal right to a writ of preliminary
injunction; that respondents BMG and Chan violated its copyrights over the
same musical compositions; that despite knowledge by respondent BMG of
petitioner's copyrights over the said musical compositions, BMG continues
to record and distribute the same, to petitioner's great and irreparable
injury.
We DENY.
We have constantly reminded courts that there is no power, the exercise of
which is more delicate and requires greater caution, deliberation and
sound discretion, or which is more dangerous in a doubtful case, than the
issuance of an injunction. A court should, as much as possible, avoid
issuing the writ which would effectively dispose of the main case without
trial.
Here, nothing is more evident than the trial court's abiding awareness of
the extremely difficult balancing act it had to perform in dealing with
petitioner's prayer for injunctive reliefs. Conscious, as evidently it is, of the
fact that there is manifest abuse of discretion in the issuance of an
injunctive writ if the following requisites provided for by law are not
present: (1) there must be a right in esse or the existence of a right to be
protected; and (2) the act against which the injunction is to be directed is
a violation of such right,[5] the trial court threaded the correct path in
denying petitioner's prayer therefor. For, such a writ should only be
granted if a party is clearly entitled thereto.[6]
Of course, while a clear showing of the right to an injunctive writ is
necessary albeit its existence need not be conclusively established,[7] as
the evidence required therefor need not be conclusive or complete, still,
for an applicant, like petitioner Bayanihan, to be entitled to the writ, he is
required to show that he has the ostensible right to the final relief prayed
for in its complaint.[8] Here, the trial court did not find ample justifications
for the issuance of the writ prayed for by petitioner.

Unquestionably, respondent Chan, being undeniably the composer and


author of the lyrics of the two (2) songs, is protected by the mere fact
alone that he is the creator thereof, conformably with Republic Act No.
8293, otherwise known as the Intellectual Property Code, Section 172.2 of
which reads:
172.2. Works are protected by the sole fact of their creation, irrespective
of their mode or form of expression, as well as of their content, quality and
purpose.
An examination of petitioner's verified complaint in light of the two (2)
contracts sued upon and the evidence it adduced during the hearing on
the application for preliminary injunction, yields not the existence of the
requisite right protectable by the provisional relief but rather a lingering
doubt on whether there is or there is no such right. The two contracts
between petitioner and Chan relative to the musical compositions subject
of the suit contain the following identical stipulations:
7.
It is also hereby agreed to by the parties herein that in the event the
PUBLISHER [petitioner herein] fails to use in any manner whatsoever
within two (2) years any of the compositions covered by this contract, then
such composition may be released in favor of the WRITER and excluded
from this contract and the PUBLISHER shall execute the necessary release
in writing in favor of the WRITER upon request of the WRITER;
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9.
This contract may be renewed for a period of two-and-one-half (2
1/2) years at the option of the PUBLISHER. Renewal may be made by the
PUBLISHER by advising the WRITER of such renewal in writing at least five
(5) days before the expiration of this contract.[9]
It would thus appear that the two (2) contracts expired on October 1, 1975
and March 11, 1978, respectively, there being neither an allegation, much
less proof, that petitioner Bayanihan ever made use of the compositions
within the two-year period agreed upon by the parties.
Anent the copyrights obtained by petitioner on the basis of the selfsame
two (2) contracts, suffice it to say 'that such purported copyrights are not
presumed to subsist in accordance with Section 218[a] and [b], of the
Intellectual Property Code,[10] because respondent Chan had put in issue
the existence thereof.
It is noted that Chan revoked and terminated said contracts, along with
others, on July 30, 1997, or almost two years before petitioner Bayanihan
wrote its sort of complaint/demand letter dated December 7, 1999

IPL Cases Batch 1 - 8

regarding the recent "use/recording of the songs 'Can We Just Stop and
Talk A While' and 'Afraid for Love to Fade,'" or almost three (3) years before
petitioner filed its complaint on August 8, 2000, therein praying, inter alia,
for injunctive relief. By then, it would appear that petitioner had no more
right that is protectable by injunction.
Lastly, petitioner's insinuation that the trial court indulged in
generalizations and was rather skimpy in dishing out its reasons for
denying its prayer for provisional injunctive relief, the same deserves
scant consideration. For sure, the manner by which the trial court crafted
its challenged orders is quite understandable, lest it be subjected to a
plausible suspicion of having prejudged the merits of the main case.
WHEREFORE, petition is hereby DENIED.
Kho vs. CA
Before us is a petition for review on certiorari of the Decision[1] dated May
24, 1993 of the Court of Appeals setting aside and declaring as null and
void the Orders[2] dated February 10, 1992 and March 19, 1992 of the
Regional Trial Court, Branch 90, of Quezon City granting the issuance of a
writ of preliminary injunction.
The facts of the case are as follows:
On December 20, 1991, petitioner Elidad C. Kho filed a complaint for
injunction and damages with a prayer for the issuance of a writ of
preliminary injunction, docketed as Civil Case No. Q-91-10926, against the
respondents Summerville General Merchandising and Company
(Summerville, for brevity) and Ang Tiam Chay.
The petitioners 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, as
shown by Certificates of Copyright Registration No. 0-1358 and No. 03678; 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 on February 7, 1980 under Registration Certificate
No. 4529; that respondent Summerville advertised and sold petitioners
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 petitioners 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, re-packer 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.
After due hearing on the application for preliminary injunction, the trial
court granted the same in an Order dated February 10, 1992, the
dispositive portion of which reads:
ACCORDINGLY, the application of plaintiff Elidad C. Kho, doing business
under the style of KEC Cosmetic Laboratory, for preliminary injunction, is
hereby granted. Consequentially, plaintiff is required to file with the Court
a bond executed to defendants in the amount of five hundred thousand
pesos (P500,000.00) to the effect that plaintiff will pay to defendants all
damages which defendants may sustain by reason of the injunction if the
Court should finally decide that plaintiff is not entitled thereto.
SO ORDERED.[3]
The respondents moved for reconsideration but their motion for
reconsideration was denied by the trial court in an Order dated March 19,
1992.[4]
On April 24, 1992, the respondents filed a petition for certiorari with the
Court of Appeals, docketed as CA-G.R. SP No. 27803, praying for the
nullification of the said writ of preliminary injunction issued by the trial
court. After the respondents filed their reply and almost a month after
petitioner submitted her comment, or on August 14 1992, the latter
moved to dismiss the petition for violation of Supreme Court Circular No.
28-91, a circular prohibiting forum shopping. According to the petitioner,
the respondents did not state the docket number of the civil case in the
caption of their petition and, more significantly, they did not include
therein a certificate of non-forum shopping. The respondents opposed the
petition and submitted to the appellate court a certificate of non-forum
shopping for their petition.
On May 24, 1993, the appellate court rendered a Decision in CA-G.R. SP
No. 27803 ruling in favor of the respondents, the dispositive portion of
which reads:

IPL Cases Batch 1 - 9

WHEREFORE, the petition is hereby given due course and the orders of
respondent court dated February 10, 1992 and March 19, 1992 granting
the writ of preliminary injunction and denying petitioners motion for
reconsideration are hereby set aside and declared null and void.
Respondent court is directed to forthwith proceed with the trial of Civil
Case No. Q-91-10926 and resolve the issue raised by the parties on the
merits.
SO ORDERED.[5]
In granting the petition, the appellate court ruled that:
The registration of the trademark or brandname Chin Chun Su by KEC with
the supplemental register of the Bureau of Patents, Trademarks and
Technology Transfer cannot be equated with registration in the principal
register, which is duly protected by the Trademark Law.
xxx xxx xxx
As ratiocinated in La Chemise Lacoste, S.S. vs. Fernandez, 129 SCRA 373,
393:
Registration in the Supplemental Register, therefore, serves as notice that
the registrant is using or has appropriated the trademark. By the very fact
that the trademark cannot as yet be on guard and there are certain
defects, some obstacles which the use must still overcome before he can
claim legal ownership of the mark or ask the courts to vindicate his claims
of an exclusive right to the use of the same. It would be deceptive for a
party with nothing more than a registration in the Supplemental Register
to posture before courts of justice as if the registration is in the Principal
Register.
The reliance of the private respondent on the last sentence of the Patent
office action on application Serial No. 30954 that registrants is presumed
to be the owner of the mark until after the registration is declared
cancelled is, therefore, misplaced and grounded on shaky foundation. The
supposed presumption not only runs counter to the precept embodied in
Rule 124 of the Revised Rules of Practice before the Philippine Patent
Office in Trademark Cases but considering all the facts ventilated before us
in the four interrelated petitions involving the petitioner and the
respondent, it is devoid of factual basis. As even in cases where
presumption and precept may factually be reconciled, we have held that
the presumption is rebuttable, not conclusive, (People v. Lim Hoa, G.R. No.
L-10612, May 30, 1958, Unreported). One may be declared an unfair
competitor even if his competing trademark is registered (Parke, Davis &

Co. v. Kiu Foo & Co., et al., 60 Phil 928; La Yebana Co. v. chua Seco & Co.,
14 Phil 534).[6]
The petitioner filed a motion for reconsideration. This she followed with
several motions to declare respondents in contempt of court for publishing
advertisements notifying the public of the promulgation of the assailed
decision of the appellate court and stating that genuine Chin Chun Su
products could be obtained only from Summerville General Merchandising
and Co.
In the meantime, the trial court went on to hear petitioners complaint for
final injunction and damages. On October 22, 1993, the trial court
rendered a Decision[7] barring the petitioner from using the trademark
Chin Chun Su and upholding the right of the respondents to use the same,
but recognizing the copyright of the petitioner over the oval shaped
container of her beauty cream. The trial court did not award damages and
costs to any of the parties but to their respective counsels were awarded
Seventy-Five Thousand Pesos (P75,000.00) each as attorneys fees. The
petitioner duly appealed the said decision to the Court of Appeals.
On June 3, 1994, the Court of Appeals promulgated a Resolution[8]
denying the petitioners motions for reconsideration and for contempt of
court in CA-G.R. SP No. 27803.
Hence, this petition anchored on the following assignment of errors:
I
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE
OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING TO
RULE ON PETITIONERS MOTION TO DISMISS.
II
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE
OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN REFUSING TO
PROMPTLY RESOLVE PETITIONERS MOTION FOR RECONSIDERATION.
III
IN DELAYING THE RESOLUTION OF PETITIONERS MOTION FOR
RECONSIDERATION, THE HONORABLE COURT OF APPEALS DENIED
PETITIONERS RIGHT TO SEEK TIMELY APPELLATE RELIEF AND VIOLATED
PETITIONERS RIGHT TO DUE PROCESS.
IV

IPL Cases Batch 1 - 10

RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE


OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING TO CITE
THE PRIVATE RESPONDENTS IN CONTEMPT.[9]
The petitioner faults the appellate court for not dismissing the petition on
the ground of violation of Supreme Court Circular No. 28-91. Also, the
petitioner contends that the appellate court violated Section 6, Rule 9 of
the Revised Internal Rules of the Court of Appeals when it failed to rule on
her motion for reconsideration within ninety (90) days from the time it is
submitted for resolution. The appellate court ruled only after the lapse of
three hundred fifty-four (354) days, or on June 3, 1994. In delaying the
resolution thereof, the appellate court denied the petitioners right to seek
the timely appellate relief. Finally, petitioner describes as arbitrary the
denial of her motions for contempt of court against the respondents.
We rule in favor of the respondents.
Pursuant to Section 1, Rule 58 of the Revised Rules of Civil Procedure, one
of the grounds for the issuance of a writ of preliminary injunction is a proof
that the applicant is entitled to the relief demanded, and the whole or part
of such relief consists in restraining the commission or continuance of the
act or acts complained of, either for a limited period or perpetually. Thus, a
preliminary injunction order may be granted only when the application for
the issuance of the same shows facts entitling the applicant to the relief
demanded.[10] This is the reason why we have ruled that it must be
shown that the invasion of the right sought to be protected is material and
substantial, that the right of complainant is clear and unmistakable, and,
that there is an urgent and paramount necessity for the writ to prevent
serious damage.[11]
In the case at bar, the petitioner applied for the issuance of a preliminary
injunctive order on the ground that she is entitled to the use of the
trademark on Chin Chun Su and its container based on her copyright and
patent over the same. We first find it appropriate to rule on 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.
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]
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 petitioners 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.
We cannot likewise overlook the decision of the trial court in the case for
final injunction and damages. The dispositive portion of said decision held
that the petitioner does not have trademark rights on the name and
container of the beauty cream product. The said decision on the merits of
the trial court rendered the issuance of the writ of a preliminary injunction
moot and academic notwithstanding the fact that the same has been
appealed in the Court of Appeals. This is supported by our ruling in La
Vista Association, Inc. v. Court of Appeals[16], to wit:
Considering that preliminary injunction is a provisional remedy which may
be granted at any time after the commencement of the action and before
judgment when it is established that the plaintiff is entitled to the relief
demanded and only when his complaint shows facts entitling such reliefs
xxx and it appearing that the trial court had already granted the issuance
of a final injunction in favor of petitioner in its decision rendered after trial
on the merits xxx the Court resolved to Dismiss the instant petition having
been rendered moot and academic. An injunction issued by the trial court
after it has already made a clear pronouncement as to the plaintiffs right
thereto, that is, after the same issue has been decided on the merits, the
trial court having appreciated the evidence presented, is proper,
notwithstanding the fact that the decision rendered is not yet final xxx.
Being an ancillary remedy, the proceedings for preliminary injunction
cannot stand separately or proceed independently of the decision
rendered on the merit of the main case for injunction. The merit of the
main case having been already determined in favor of the applicant, the

IPL Cases Batch 1 - 11

preliminary determination of its non-existence ceases to have any force


and effect. (italics supplied)

the trademark and, consequently, to the issuance of a writ of preliminary


injunction.

La Vista categorically pronounced that the issuance of a final injunction


renders any question on the preliminary injunctive order moot and
academic despite the fact that the decision granting a final injunction is
pending appeal. Conversely, a decision denying the applicant-plaintiffs
right to a final injunction, although appealed, renders moot and academic
any objection to the prior dissolution of a writ of preliminary injunction.

Finally, we rule that the Court of Appeals correctly denied the petitioners
several motions for contempt of court. There is nothing contemptuous
about the advertisements complained of which, as regards the
proceedings in CA-G.R. SP No. 27803 merely announced in plain and
straightforward language the promulgation of the assailed Decision of the
appellate court. Moreover, pursuant to Section 4 of Rule 39 of the Revised
Rules of Civil Procedure, the said decision nullifying the injunctive writ was
immediately executory.

The petitioner argues that the appellate court erred in not dismissing the
petition for certiorari for non-compliance with the rule on forum shopping.
We disagree. First, the petitioner improperly raised the technical objection
of non-compliance with Supreme Court Circular No. 28-91 by filing a
motion to dismiss the petition for certiorari filed in the appellate court.
This is prohibited by Section 6, Rule 66 of the Revised Rules of Civil
Procedure which provides that (I)n petitions for certiorari before the
Supreme Court and the Court of Appeals, the provisions of Section 2, Rule
56, shall be observed. Before giving due course thereto, the court may
require the respondents to file their comment to, and not a motion to
dismiss, the petition xxx (italics supplied). Secondly, the issue was raised
one month after petitioner had filed her answer/comment and after private
respondent had replied thereto. Under Section 1, Rule 16 of the Revised
Rules of Civil Procedure, a motion to dismiss shall be filed within the time
for but before filing the answer to the complaint or pleading asserting a
claim. She therefore could no longer submit a motion to dismiss nor raise
defenses and objections not included in the answer/comment she had
earlier tendered. Thirdly, substantial justice and equity require this Court
not to revive a dissolved writ of injunction in favor of a party without any
legal right thereto merely on a technical infirmity. The granting of an
injunctive writ based on a technical ground rather than compliance with
the requisites for the issuance of the same is contrary to the primary
objective of legal procedure which is to serve as a means to dispense
justice to the deserving party.
The petitioner likewise contends that the appellate court unduly delayed
the resolution of her motion for reconsideration. But we find that petitioner
contributed to this delay when she filed successive contentious motions in
the same proceeding, the last of which was on October 27, 1993,
necessitating counter-manifestations from private respondents with the
last one being filed on November 9, 1993. Nonetheless, it is well-settled
that non-observance of the period for deciding cases or their incidents
does not render such judgments ineffective or void.[17] With respect to
the purported damages she suffered due to the alleged delay in resolving
her motion for reconsideration, we find that the said issue has likewise
been rendered moot and academic by our ruling that she has no right over

WHEREFORE, the petition is DENIED. The Decision and Resolution of the


Court of Appeals dated May 24, 1993 and June 3, 1994, respectively, are
hereby AFFIRMED. With costs against the petitioner.
Unilever vs. P&G
In this petition for review under Rule 45 of the Rules of Court, petitioner
assails the February 24, 1995 decision[1] of the Court of Appeals (CA) in
CA-G.R. SP No. 35242 entitled Unilever Philippines (PRC), Inc. v. Honorable
Fernando V. Gorospe, Jr. and Procter and Gamble Philippines, Inc. (P&GP)
which affirmed the issuance by the court a quo of a writ of preliminary
injunction against it. The writ enjoined petitioner from using and airing,
until further orders of the court, certain television commercials for its
laundry products claimed to be identical or similar to its double tug or tactac key visual.[2]
Petitioner alleges that the writ of preliminary injunction was issued by the
trial court (and affirmed by the CA) without any evidence of private
respondents clear and unmistakable right to the writ. Petitioner further
contends that the preliminary injunction issued against it already disposed
of the main case without trial, thus denying petitioner of any opportunity
to present evidence on its behalf.
The antecedents show that on August 24, 1994, private respondent
Procter and Gamble Phils., Inc. filed a complaint for injunction with
damages and a prayer for temporary restraining order and/or writ of
preliminary injunction against petitioner Unilever, alleging that:
1.5.
As early as 1982, a P&G subsidiary in Italy used a key visual in
the advertisement of its laundry detergent and bleaching products. This
key visual known as the double-tug or tac-tac demonstration shows the
fabric being held by both hands and stretched sideways.
1.6.
The tac-tac was conceptualized for P&G by the advertising
agency Milano and Gray of Italy in 1982. The tac-tac was used in the same

IPL Cases Batch 1 - 12

year in an advertisement entitled All aperto to demonstrate the effect on


fabrics of one of P&GPs products, a liquid bleach called Ace.
xxxxxxxxx
1.7.
Since then, P&G has used the tac-tac key visual in the
advertisement of its products. In fact, in 1986, in Italy, the tac-tac key
visual was used in the television commercial for Ace entitled Kite.
1.8.
P&G has used the same distinctive tac-tac key visual to local
consumers in the Philippines.
xxxxxxxxx
1.10.
Substantially and materially imitating the aforesaid tac-tac key
visual of P&GP and in blatant disregard of P&GPs intellectual property
rights, Unilever on 24 July 1993 started airing a 60 second television
commercial TVC of its Breeze Powerwhite laundry product called Porky. The
said TVC included a stretching visual presentation and sound effects
almost [identical] or substantially similar to P&GPs tac-tac key visual.
xxxxxxxxx
1.14.
On July 15, 1994, P&GP aired in the Philippines, the same Kite
television advertisement it used in Italy in 1986, merely dubbing the
Italian language with Filipino for the same produce Ace bleaching liquid
which P&GP now markets in the Philippines.
1.15.
On August 1, 1994, Unilever filed a Complaint with the
Advertising Board of the Philippines to prevent P&GP from airing the Kite
television advertisement.[3]
On August 26, 1994, Judge Gorospe issued an order granting a temporary
restraining order and setting it for hearing on September 2, 1994 for
Unilever to show cause why the writ of preliminary injunction should not
issue. During the hearing on September 2, 1994, P&GP received Unilevers
answer with opposition to preliminary injunction. P&GP filed its reply to
Unilevers opposition to a preliminary injunction on September 6, 1994.
During the hearing on September 9, 1994, Judge Gorospe ordered
petitioner to submit a sur-rejoinder. P&GP received Unilevers rejoinder to
reply on September 13, 1994. The following day, on September 14, 1994,
P&GP filed its sur-reply to Unilevers rejoinder.

On September 19, 1994, P&GP received a copy of the order dated


September 16, 1994 ordering the issuance of a writ of preliminary
injunction and fixing a bond of P100,000. On the same date, P&GP filed the
required bond issued by Prudential Guarantee and Assurance, Inc.
On September 21, 1994, petitioner appealed to the CA assigning the
following errors allegedly committed by the court a quo, to wit:
PUBLIC RESPONDENT HAD ACTED WITHOUT OR IN EXCESS OF
JURISDICTION AND WITH GRAVE ABUSE OF DISCRETION AMOUNTING TO
LACK OF JURISDICTION IN ISSUING THE WRIT OF PRELIMINARY INJUNCTION
IN VIOLATION OF THE RULES ON EVIDENCE AND PROCEDURE,
PARTICULARLY OF SEC. 3 (a), RULE 58 OF THE REVISED RULES OF COURT
AND OF THE PREVAILING JURISPRUDENCE.
PUBLIC RESPONDENT IN ISSUING THE VOID ORDER DATED SEPTEMBER 16,
1994, HAD, IN EFFECT, ALREADY PREJUDGED THE MERITS OF THE MAIN
CASE.
PUBLIC RESPONDENT HAD ISSUED THE VOID ORDER ACCORDING RELIEF
TO A NON-PARTY IN CIVIL CASE NO. 94-2434 WITHOUT JURISDICTION.
PUBLIC RESPONDENT IN ISSUING THE VOID ORDER HAD DEPRIVED
PETITIONER OF SUBSTANTIVE AND PROCEDURAL DUE PROCESS; PUBLIC
RESPONDENT HAD FORECLOSED PETITIONERS RIGHT AND THE
OPPORTUNITY TO CROSS-EXAMINE PROCTERS WITNESSES ABAD AND
HERBOSA.[4]

On February 24, 1995, the CA rendered its decision finding that Judge
Gorospe did not act with grave abuse of discretion in issuing the disputed
order. The petition for certiorari was thus dismissed for lack of merit.
After a careful perusal of the records, we agree with the CA and affirm its
decision in toto:
Petitioner does not deny that the questioned TV advertisements are
substantially similar to P&GPs double tug or tac-tac key visual. However, it
submits that P&GP is not entitled to the relief demanded, which is to enjoin
petitioner from airing said TV advertisements, for the reason that
petitioner has Certificates of Copyright Registration for which
advertisements while P&GP has none with respect to its double-tug or tactac key visual. In other words, it is petitioners contention that P&GP is not
entitled to any protection because it has not registered with the National
Library the very TV commercials which it claims have been infringed by
petitioner.

IPL Cases Batch 1 - 13

We disagree. Section 2 of PD 49 stipulates that the copyright for a work or


intellectual creation subsists from the moment of its creation. Accordingly,
the creator acquires copyright for his work right upon its creation. Contrary
to petitioners contention, the intellectual creators exercise and enjoyment
of copyright for his work and the protection given by law to him is not
contingent or dependent on any formality or registration. Therefore, taking
the material allegations of paragraphs 1.3 to 1.5 of P&GPs verified
Complaint in the context of PD 49, it cannot be seriously doubted that at
least, for purposes of determining whether preliminary injunction should
issue during the pendency of the case, P&GP is entitled to the injunctive
relief prayed for in its Complaint.
The second ground is likewise not well-taken. As adverted to earlier, the
provisional remedy of preliminary injunction will not issue unless it is
shown in the verified complaint that plaintiff is probably entitled to the
relief demanded, which consists in whole or in part in restraining the
commission or continuance of the acts complained of. In view of such
requirement, the court has to make a tentative determination if the right
sought to be protected exists and whether the act against which the writ is
to be directed is violative of such right. Certainly, the courts determination
as to the propriety of issuing the writ cannot be taken as a prejudgment of
the merits of the case because it is tentative in nature and the writ may be
dissolved during or after the trial if the court finds that plaintiff was not
entitled to it.
xxxxxxxxx
Obviously, the determination made by the court a quo was only for
purposes of preliminary injunction, without passing upon the merits of the
case, which cannot be done until after a full-blown hearing is conducted.
The third ground is patently unmeritorious. As alleged in the Complaint
P&GP is a subsidiary of Procter and Gamble Company (P&G) for which the
double tug or tac-tac key visual was conceptualized or created. In that
capacity, P&GP used the said TV advertisement in the Philippines to
promote its products. As such subsidiary, P&GP is definitely within the
protective mantle of the statute (Sec. 6, PD 49).
Finally, We find the procedure adopted by the court a quo to be in order.
The record clearly shows that respondent Judge followed the (procedure
provided for in Section 5, Rule 58, as amended by BP 224, and Paragraph
A(8) of the Interim Rules). In fact, the court a quo set the incident for
hearing on September 2, 1994, at which date petitioner was ordered to
show cause why the writ should not be issued. Petitioner filed an

Opposition to the application for preliminary injunction. The same incident


was again set for hearing on September 9, 1994, during which the parties
made some manifestations in support of their respective positions.
Subsequent to such hearing petitioner filed a Reply to P&GPs Rejoinder to
its Opposition. Under the foregoing circumstances, it is absurd to even
suggest that petitioner was not given its day in court in the matter of the
issuance of the preliminary injunctive relief.
xxxxxxxxx
There was of course extreme urgency for the court a quo to act on
plaintiffs application for preliminary injunction. The airing of TV
commercials is necessarily of limited duration only. Without such
temporary relief, any permanent injunction against the infringing TV
advertisements of which P&GP may possibly succeed in getting after the
main case is finally adjudicated could be illusory if by then such
advertisements are no longer used or aired by petitioner. It is therefore not
difficult to perceive the possible irreparable damage which P&GP may
suffer if respondent Judge did not act promptly on its application for
preliminary injunction.[5]

Preliminary injunction is a provisional remedy intended to provide


protection to parties for the preservation of their rights or interests during
the pendency of the principal action.[6] Thus, Section1, Rule 58 of the
Rules of Court provides:
Section 1. Preliminary injunction defined; classes. A preliminary injunction
is an order granted at any stage of an action or proceeding prior to the
judgment or final order, requiring a party or a court, agency or a person to
refrain from a particular act or acts. It may also require the performance of
a particular act or acts, in which case it shall be known as a preliminary
mandatory injunction.
Injunction is resorted to only when there is a pressing necessity to avoid
injurious consequences which cannot be remedied under any standard
compensation.[7] As correctly ruled by the CA, there was an extreme
urgency to grant the preliminary injunction prayed for by P&GP
considering that TV commercials are aired for a limited period of time only.
In fact, this Court takes note of the fact that the TV commercial in issue
the Kite TV advertisement is no longer aired today, more than 10 years
after the injunction was granted on September 16, 1994.
The sole objective of a writ of preliminary injunction is to preserve the
status quo until the merits of the case can be heard fully.[8] A writ of

IPL Cases Batch 1 - 14

preliminary injunction is generally based solely on initial and incomplete


evidence.[9] Thus, it was impossible for the court a quo to fully dispose of
the case, as claimed by petitioner, without all the evidence needed for the
full resolution of the same. To date, the main case still has to be resolved
by the trial court.
The issuance of a preliminary injunction rests entirely on the discretion of
the court and is generally not interfered with except in cases of manifest
abuse.[10] There was no such abuse in the case at bar, especially because
petitioner was given all the opportunity to oppose the application for

injunction. The fact was, it failed to convince the court why the injunction
should not be issued. Thus, in Santos v. Court of Appeals,[11] we held that
no grave abuse of discretion can be attributed to a judge or body issuing a
writ of preliminary injunction where a party has not been deprived of its
day in court as it was heard and it exhaustively presented all its
arguments and defenses.
WHEREFORE, the petition is hereby DENIED.