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[G.R. No. 148222. August 15, 2003]




In the instant petition for review on certiorari under Rule 45 of the Rules of Court, petitioner
Pearl & Dean (Phil.) Inc. (P & D) assails the May 22, 2001 decision1[1] of the Court of Appeals
reversing the October 31, 1996 decision2[2] of the Regional Trial Court of Makati, Branch 133, in
Civil Case No. 92-516 which declared private respondents Shoemart Inc. (SMI) and North Edsa
Marketing Inc. (NEMI) liable for infringement of trademark and copyright, and unfair


The May 22, 2001 decision of the Court of Appeals3[3] contained a summary of this dispute:

Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of
advertising display units simply referred to as light boxes. These units utilize specially printed
posters sandwiched between plastic sheets and illuminated with back lights. Pearl and Dean was
able to secure a Certificate of Copyright Registration dated January 20, 1981 over these
illuminated display units. The advertising light boxes were marketed under the trademark Poster
Ads. The application for registration of the trademark was filed with the Bureau of Patents,
Trademarks and Technology Transfer on June 20, 1983, but was approved only on September
12, 1988, per Registration No. 41165. From 1981 to about 1988, Pearl and Dean employed the
services of Metro Industrial Services to manufacture its advertising displays.

Sometime in 1985, Pearl and Dean negotiated with defendant-appellant Shoemart, Inc. (SMI) for
the lease and installation of the light boxes in SM City North Edsa. Since SM City North Edsa
was under construction at that time, SMI offered as an alternative, SM Makati and SM Cubao, to
which Pearl and Dean agreed. On September 11, 1985, Pearl and Deans General Manager,
Rodolfo Vergara, submitted for signature the contracts covering SM Cubao and SM Makati to
SMIs Advertising Promotions and Publicity Division Manager, Ramonlito Abano. Only the

Penned by Associate Justice Salvador J. Valdez, Jr. and concurred in by Associate Justices
Wenceslao L. Agnir and Juan Q. Enriquez Jr.

2[2] Penned by Judge Napoleon E. Inoturan.

3[3] Seventeenth Division; CA G.R. 55303.

contract for SM Makati, however, was returned signed. On October 4, 1985, Vergara wrote
Abano inquiring about the other contract and reminding him that their agreement for installation
of light boxes was not only for its SM Makati branch, but also for SM Cubao. SMI did not bother
to reply.

Instead, in a letter dated January 14, 1986, SMIs house counsel informed Pearl and Dean that it
was rescinding the contract for SM Makati due to non-performance of the terms thereof. In his
reply dated February 17, 1986, Vergara protested the unilateral action of SMI, saying it was
without basis. In the same letter, he pushed for the signing of the contract for SM Cubao.

Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean
to fabricate its display units, offered to construct light boxes for Shoemarts chain of stores. SMI
approved the proposal and ten (10) light boxes were subsequently fabricated by Metro Industrial
for SMI. After its contract with Metro Industrial was terminated, SMI engaged the services of
EYD Rainbow Advertising Corporation to make the light boxes. Some 300 units were fabricated
in 1991. These were delivered on a staggered basis and installed at SM Megamall and SM City.

Sometime in 1989, Pearl and Dean, received reports that exact copies of its light boxes were
installed at SM City and in the fastfood section of SM Cubao. Upon investigation, Pearl and
Dean found out that aside from the two (2) reported SM branches, light boxes similar to those it
manufactures were also installed in two (2) other SM stores. It further discovered that defendant-
appellant North Edsa Marketing Inc. (NEMI), through its marketing arm, Prime Spots Marketing
Services, was set up primarily to sell advertising space in lighted display units located in SMIs
different branches. Pearl and Dean noted that NEMI is a sister company of SMI.

In the light of its discoveries, Pearl and Dean sent a letter dated December 11, 1991 to both SMI
and NEMI enjoining them to cease using the subject light boxes and to remove the same from
SMIs establishments. It also demanded the discontinued use of the trademark Poster Ads, and the
payment to Pearl and Dean of compensatory damages in the amount of Twenty Million Pesos

Upon receipt of the demand letter, SMI suspended the leasing of two hundred twenty-four (224)
light boxes and NEMI took down its advertisements for Poster Ads from the lighted display units
in SMIs stores. Claiming that both SMI and NEMI failed to meet all its demands, Pearl and Dean
filed this instant case for infringement of trademark and copyright, unfair competition and

In denying the charges hurled against it, SMI maintained that it independently developed its
poster panels using commonly known techniques and available technology, without notice of or
reference to Pearl and Deans copyright. SMI noted that the registration of the mark Poster Ads
was only for stationeries such as letterheads, envelopes, and the like. Besides, according to SMI,
the word Poster Ads is a generic term which cannot be appropriated as a trademark, and, as such,
registration of such mark is invalid. It also stressed that Pearl and Dean is not entitled to the
reliefs prayed for in its complaint since its advertising display units contained no copyright
notice, in violation of Section 27 of P.D. 49. SMI alleged that Pearl and Dean had no cause of
action against it and that the suit was purely intended to malign SMIs good name. On this basis,

SMI, aside from praying for the dismissal of the case, also counterclaimed for moral, actual and
exemplary damages and for the cancellation of Pearl and Deans Certification of Copyright
Registration No. PD-R-2558 dated January 20, 1981 and Certificate of Trademark Registration
No. 4165 dated September 12, 1988.

NEMI, for its part, denied having manufactured, installed or used any advertising display units,
nor having engaged in the business of advertising. It repleaded SMIs averments, admissions and
denials and prayed for similar reliefs and counterclaims as SMI.

The RTC of Makati City decided in favor of P & D:

Wherefore, defendants SMI and NEMI are found jointly and severally liable for infringement of
copyright under Section 2 of PD 49, as amended, and infringement of trademark under Section
22 of RA No. 166, as amended, and are hereby penalized under Section 28 of PD 49, as
amended, and Sections 23 and 24 of RA 166, as amended. Accordingly, defendants are hereby

(1) to pay plaintiff the following damages:

(a) actual damages - P16,600,000.00,
representing profits
derived by defendants
as a result of infringe-
ment of plaintiffs copyright
from 1991 to 1992

(b) moral damages - P1,000.000.00

(c) exemplary damages - P1,000,000.00

(d) attorneys fees - P1,000,000.00

(e) costs of suit;

(2) to deliver, under oath, for impounding in the National Library, all light boxes of
SMI which were fabricated by Metro Industrial Services and EYD Rainbow
Advertising Corporation;

(3) to deliver, under oath, to the National Library, all filler-posters using the
trademark Poster Ads, for destruction; and

(4) to permanently refrain from infringing the copyright on plaintiffs light boxes and
its trademark Poster Ads.

Defendants counterclaims are hereby ordered dismissed for lack of merit.

pictorial illustrations. Imperial Homes Corp. 620-621. to be properly classified as a copyrightable class O work. 2d 84. When a drawing is technical and depicts a utilitarian object. It does not prevent one from using the drawings to construct the object portrayed in the drawing. Muller had obtained a copyright over an unpublished drawing entitled Bridge Approach the drawing showed a novel bridge approach to unsnarl traffic congestion. This is because the copyright does not extend to the structures themselves. 458 F. or on two pages following each other. Maddox. These forms showed the entire operation of a day or a week or a month on a single page. v.Y. of which the leading case is Baker vs. by any stretch of the imagination. without being authorized. Included as part of the book were blank forms and illustrations consisting of ruled lines and headings. the Court of Appeals reversed the trial court: Since the light boxes cannot. a copyright over the drawings like plaintiff-appellants will not extend to the actual object. Selden had obtained a copyright protection for a book entitled Seldens Condensed Ledger or Bookkeeping Simplified which purported to explain a new system of bookkeeping. uses a copyrighted architectural plan to construct a structure. The reason was that to grant a monopoly in the underlying art when no examination of its novelty has ever been made would be a surprise and a fraud upon the public. In this case. it was held that there is no copyright infringement when one who. Inc. Selden was likewise applied in Muller vs. In two other cases.N. . that is the province of letters patent. 841 (1879). however. 4[4] Records. The Court held that exclusivity to the actual forms is not extended by a copyright. No doubt aware that its alleged original design would never pass the rigorous examination of a patent application. v. SO ORDERED.S. tags or box wraps. Triborough Bridge Authority [43 F. specially designed for use in connection with the system explained in the work. 2d 895 and Scholtz Homes. thus: 42.4[4] On appeal. pp. Lamont. and not the light boxes themselves. The defendant constructed a bridge approach which was alleged to be an infringement of the new design illustrated in plaintiffs drawings. we have to agree with SMI when it posited that what was copyrighted were the technical drawings only. advertising copies. Selden (101 U. 1942)]. 379 F.D. In that case. Supp. not of copyright. The defendant Baker then produced forms which were similar to the forms illustrated in Seldens copyrighted books. The principle in Baker vs. It has so been held under jurisprudence. 298 (S. be considered as either prints. plaintiff-appellant fought to foist a fraudulent monopoly on the public by conveniently resorting to a copyright registration which merely employs a recordal system without the benefit of an in-depth examination of novelty. And that is precisely the point. In this case it was held that protection of the drawing does not extend to the unauthorized duplication of the object drawn because copyright extends only to the description or expression of the object and not to the object itself. labels.

then a situation may arise whereby an applicant may be tempted to register a trademark on any and all goods which his mind may conceive even if he had never intended to use the trademark for the said goods. through Justice Conrado V. Trademarks. having already done so. Why Pearl and Dean limited the use of its trademark to stationeries is simply beyond us.. in the advertising display units in suit. We believe that such omnibus registration is not contemplated by our Trademark Law. Certification of registration prima facie evidence of validity. Sanchez. as well as the parallel use by which said words were used in the parties respective advertising copies. we cannot find defendants-appellants liable for infringement of trademark. if the certificate of registration were to be deemed as including goods not specified therein. Pearl and Dean applied for the registration of the trademark Poster Ads with the Bureau of Patents. it must stand by the consequence of the registration which it had caused. as amended. With this as factual backdrop. subject to any conditions and limitations stated therein. Jurisprudence has interpreted Section 20 of the Trademark Law as an implicit permission to a manufacturer to venture into the production of goods and allow that producer to appropriate the brand name of the senior registrant on goods other than those stated in the certificate of registration. But. business or services specified in the certificate. 1988 under Registration No. The Supreme Court further emphasized the restrictive meaning of Section 20 when it stated. Incorporated vs. Poster Ads was registered by Pearl and Dean for specific use in its stationeries. 1983. that: Really. xxx xxx xxx . we see no legal basis to the finding of liability on the part of the defendants-appellants for their use of the words Poster Ads. 41165 covering the following products: stationeries such as letterheads. otherwise known as the Trademark Law.In fine. envelopes and calling cards and newsletters. and of the registrants exclusive right to use the same in connection with the goods. Said trademark was recorded in the Principal Register on September 12. we cannot find SMI liable for infringing Pearl and Deans copyright over the technical drawings of the latters advertising display units.A certificate of registration of a mark or trade-name shall be prima facie evidence of the validity of the registration. 20. following the clear mandate conveyed by Section 20 of Republic Act 166. in contrast to defendants-appellants who used the same words in their advertising display units. Intermediate Appellate Court that the protective mantle of the Trademark Law extends only to the goods used by the first user as specified in the certificate of registration. While we do not discount the striking similarity between Pearl and Deans registered trademark and defendants-appellants Poster Ads design. the registrants ownership of the mark or trade-name. xxx xxx xxx The Supreme Court trenchantly held in Faberge. and Technology Transfer. (underscoring supplied) The records show that on June 20. which reads: SEC.

C. and another is rendered DISMISSING the complaint and counterclaims in the above-entitled case for lack of merit. In the absence of any convincing proof that Poster Ads has acquired a secondary meaning in this jurisdiction. 26. THAT SM WAS GUILTY OF BAD FAITH IN ITS NEGOTIATION OF ADVERTISING CONTRACTS WITH PEARL & DEAN. pp. B. THE HONORABLE COURT OF APPEALS ERRED IN DISMISSING THE AWARD OF THE TRIAL COURT. namely. There being no finding of either copyright or trademark infringement on the part of SMI and NEMI. the monetary award granted by the lower court to Pearl and Dean has no leg to stand on. Defendants-appellants cannot thus be held liable for infringement of the trademark Poster Ads. we find that Pearl and Deans exclusive right to the use of Poster Ads is limited to what is written in its certificate of registration. 17-19. 6[6] Rollo. DESPITE THE LATTERS FINDING. NOT DISPUTED BY THE HONORABLE COURT OF APPEALS. ATTORNEYS FEES AND COSTS OF SUIT. 21-22. 23-24. p. stationeries. MORAL & EXEMPLARY DAMAGES.We are constrained to adopt the view of defendants-appellants that the words Poster Ads are a simple contraction of the generic term poster advertising. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO INFRINGEMENT OF PEARL & DEANS TRADEMARK POSTER ADS WAS COMMITTED BY RESPONDENTS SM AND NEMI. xxx xxx xxx WHEREFORE. the assailed decision is REVERSED and SET ASIDE.5[5] Dissatisfied with the above decision. . petitioner P & D filed the instant petition assigning the following errors for the Courts consideration: A. premises considered. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO COPYRIGHT INFRINGEMENT WAS COMMITTED BY RESPONDENTS SM AND NEMI.6[6] ISSUES 5[5] Rollo. D. THE HONORABLE COURT OF APPEALS ERRED IN NOT HOLDING RESPONDENTS SM AND NEMI LIABLE TO PEARL & DEAN FOR ACTUAL. 34.

In ruling that there was no copyright infringement. from the moment of creation. We shall focus then on the following issues: (1) if the engineering or technical drawings of an advertising display unit (light box) are granted copyright protection (copyright certificate of registration) by the National Library. 1981 clearly stated that it was for a class O work under Section 2 (O) of PD 49 (The Intellectual Property Decree) which was the statute then prevailing. is purely a statutory right. Being a mere statutory grant. copyrights. its claim of copyright infringement cannot be sustained. First. is the light box depicted in such engineering drawings ipso facto also protected by such copyright? (2) or should the light box be registered separately and protected by a patent issued by the Bureau of Patents Trademarks and Technology Transfer (now Intellectual Property Office) in addition to the copyright of the engineering drawings? (3) can the owner of a registered trademark legally prevent others from using such trademark if it is a mere abbreviation of a term descriptive of his goods. pictorial illustrations. xxx xxx xxx Although petitioners copyright certificate was entitled Advertising Display Units (which depicted the box-type electrical devices). 2. Copyright. PD- R2588 issued by the National Library on January 20.In resolving this very interesting case. in the strict sense of the term. and box wraps. Obviously. petitioners application for a copyright certificate as well as Copyright Certificate No. services or business? ON THE ISSUE OF COPYRIGHT INFRINGEMENT Petitioner P & Ds complaint was that SMI infringed on its copyright over the light boxes when SMI had the units manufactured by Metro and EYD Rainbow Advertising for its own account. The rights granted by this Decree shall. the rights are limited to what the statute confers. advertising copies. petitioners position was premised on its belief that its copyright over the engineering drawings extended ipso facto to the light boxes depicted or illustrated in said drawings. trademarks and unfair competition arising from infringement of any of the first three. subsist with respect to any of the following works: xxx xxx xxx (O) Prints. tags. We agree with the appellate court. we are challenged once again to put into proper perspective four main concerns of intellectual property law patents. labels. It may be obtained and enjoyed only with . Said Section 2 expressly enumerated the works subject to copyright: SEC. the Court of Appeals held that the copyright was limited to the drawings alone and not to the light box itself.

J. . 9[9] Ibid. there appeared to be some confusion regarding what ought or ought not to be the proper subjects of copyrights. then no doubt they would have been guilty of copyright infringement. During the trial. labels. even as we find that P & D indeed owned a valid copyright. And no less clearly. petitioners copyright protection extended only to the technical drawings and not to the light box itself because the latter was not at all in the category of prints.11[11] we ruled that these three legal rights are completely distinct and separate from one another. copyright and patents are different intellectual property rights that cannot be interchanged with one another. This being so. A trademark is any visible sign capable of distinguishing the 7[7] 18 C.8[8] P & D secured its copyright under the classification class O work. the president of P & D himself admitted that the light box was neither a literary not an artistic work but an engineering or marketing invention. TSN. It could not have possibly stretched out to include the underlying light box. if SMI and NEMI reprinted P & Ds technical drawings for sale to the public without license from P & D. But this was not the case.respect to the subjects and by the persons. March 19. 302 SCRA 225 [1999]. The strict application9[9] of the laws enumeration in Section 2 prevents us from giving petitioner even a little leeway. 10[10] Pp. and the protection afforded by one cannot be used interchangeably to cover items or works that exclusively pertain to the others: Trademark. SMIs and NEMIs acts complained of by P & D were to have units similar or identical to the light box illustrated in the technical drawings manufactured by Metro and EYD Rainbow Advertising. Court of Appeals. What the law does not include. even if its copyright certificate was entitled Advertising Display Units. Stated otherwise. 1993. 11-13. and on terms and conditions specified in the statute. 11[11] G. it can cover only the works falling within the statutory enumeration or description. 2002. pictorial illustrations. 8[8] Joaquin vs.R.7[7] Accordingly. Was this an infringement of petitioners copyright over the technical drawings? We do not think so. 161. In the leading case of Kho vs. neither could the lack of statutory authority to make the light box copyrightable be remedied by the simplistic act of entitling the copyright certificate issued by the National Library as Advertising Display Units. for leasing out to different advertisers. Drilon. and for the good reason: the light box was not a literary or artistic piece which could be copyrighted under the copyright law. February 3.10[10] Obviously. 115758. tags and box wraps. that is. patents and trademarks. No. it excludes. the same could have referred only to the technical drawings within the category of pictorial illustrations.S. In fine. advertising copies.

however. Inc. . vs. at p. A patent. 229 US 1. 21. ODonnel.. In relation thereto. selling or using the invention. petitioner never secured a patent for the light boxes. 156. 489 US 141 [1989]. For some reason or another. and 13[13] Bauer & Cie vs.14[14] Ideas. once disclosed to the public without the protection of a valid patent. if in fact it really was. x x x (A)n inventor has no common law right to a monopoly of his invention. He has the right to make use of and vend his invention.15[15] 12[12] 286 SCRA 13 [1998]. but if he voluntarily discloses it. vs. To be able to effectively and legally preclude others from copying and profiting from the invention. private respondents cannot be held legally liable for infringement of P & Ds copyright over its technical drawings of the said light boxes. he has the exclusive right of making. should they be liable instead for infringement of patent? We do not think so either. no protection. It therefore acquired no patent rights which could have protected its invention. 14[14] Bonito Boats. Thunder Craft Boats. such as by offering it for sale.. petitioner could not legally prevent anyone from manufacturing or commercially using the contraption. petitioner revealed them fully to the public by submitting the engineering drawings thereof to the National Library. involves an inventive step and is industrially applicable. White Cap Co. are subject to appropriation without significant restraint. ON THE ISSUE OF PATENT INFRINGEMENT This brings us to the next point: if. at p. Supp. A 451. a patent is a primordial requirement. the world is free to copy and use it with impunity. Inc. Patentable inventions. citing Anchor Hocking Glass Corp. And because it had no patent. 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. Court of Appeals. refer to any technical solution of a problem in any field of human activity which is new. vs. In Creser Precision Systems. No patent. 47 F. since whatever right one has to the invention covered by the patent arises alone from the grant of patent.13[13] On the assumption that petitioners advertising units were patentable inventions. Id. on the other hand. 15[15] Id. The ultimate goal of a patent system is to bring new designs and technologies into the public domain through disclosure. gives the inventor the right to exclude all others.12[12] we held that there can be no infringement of a patent until a patent has been issued. Meanwhile. a trade name means the name or designation identifying or distinguishing an enterprise. despite its manufacture and commercial use of the light boxes without license from petitioner. As a patentee.goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods.. Inc..

. To begin with. Quick Point Pencil Co.. 289 U. Thunder Craft Boats. Inc.17[17] The patent law has a three-fold purpose: first. 10. a genuine invention or discovery must be demonstrated lest in the constant demand for new appliances. and was intended to secure to the public.19[19] There is no such scrutiny in the case of copyrights nor any notice published before its grant to the effect that a person is claiming the creation of a work. Such an in- depth investigation is required because in rewarding a useful invention. 178.S. Bonito Boats. 496. cited Amador. and consequently to prevent others from exercising like privileges without the consent of the patentee.S. the heavy hand of tribute be laid on each slight technological advance in art.. vs. 19[19] Sears Roebuck vs. The inventor may keep his invention secret and reap its fruits indefinitely. To that end. The law confers the copyright from the 16[16] Ibid.. ibid. 229 [1964].. 416 U. the patent is granted. on the other are the inventors who must be protected. 257. the limitations on its exercise are equally strictly enforced. it promotes disclosures of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires. 440 U. An exclusive enjoyment is guaranteed him for 17 years. As held in Bauer & Cie vs. 150. and vend the thing patented.S. 470 [1994].16[16] The act secured to the inventor the exclusive right to make use. vs. the prerequisites to obtaining a patent are strictly observed and when a patent is issued. third. vs. Stiffel. citing U. It was passed for the purpose of encouraging useful invention and promoting new and useful inventions by the protection and stimulation given to inventive genius. at p. . 262 [1979]. 18[18] Bicron Corp. Inc. citing Kewanee Oil Co.. in return for the exclusive right to practice the invention for a number of years.On one side of the coin is the public which will benefit from new ideas. second.18[18] It is only after an exhaustive examination by the patent office that a patent is issued. The law attempts to strike an ideal balance between the two interests: (The p)atent system thus embodies a carefully crafted bargain for encouraging the creation and disclosure of new useful and non-obvious advances in technology and design.S. Dubilier 17[17] Condenser Corp. patent law seeks to foster and reward invention. the rights and welfare of the community must be fairly dealt with and effectively guarded. the stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the free use of the public. p. but upon the expiration of that period. p. ODonnel. Aronson vs. patents. 376 US 225. In consideration of its disclosure and the consequent benefit to the community. who are thus enabled to practice it and profit by its use. after the lapse of the exclusive privileges granted the benefit of such inventions and improvements. the knowledge of the invention inures to the people.

it is claimed only as a book. sale or commercial use of the light boxes on the sole basis of its copyright certificate over the technical drawings. 20[20] Section 2. be they old or new. In that case. The same distinction may be predicated of every other art as well as that of bookkeeping. The US Supreme Court ruled that: There is no doubt that a work on the subject of book-keeping. though only explanatory of well known systems. when no examination of its novelty has ever been officially made. The mere statement of the proposition is so evident that it requires hardly any argument to support it. had petitioner secured a patent instead. A treatise on the composition and use of medicines. and a patent from the government can only secure it. This situation could not have been the intention of the law. what petitioner seeks is exclusivity without any opportunity for the patent office (IPO) to scrutinize the light boxs eligibility as a patentable invention. The copyright of the book. To give to the author of the book an exclusive property in the art described therein. on the construction and use of ploughs or watches or churns. PD 49 (The Intellectual Property Decree). or on the mixture and application of colors for painting or dyeing. which it is. and the art. may be the subject of a copyright. The publication illustrated blank forms of ledgers utilized in such a system. or on the mode of drawing lines to produce the effect of perspective. the plaintiff held the copyright of a book which expounded on a new accounting system he had developed. the petitioner cannot exclude others from the manufacture. but no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein. The claim to an invention of discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained. But through the simplified procedure of copyright-registration with the National Library without undergoing the rigor of defending the patentability of its invention before the IPO and the public the petitioner would be protected for 50 years. not of copyright. But there is a clear distinction between the books. Selden21[21]. Stated otherwise. as such. but. The novelty of the art or thing described or explained has nothing to do with the validity of the copyright. In the oft-cited case of Baker vs.moment of creation20[20] and the copyright certificate is issued upon registration with the National Library of a sworn ex-parte claim of creation. its exclusivity would have been for 17 years only. then. The irony here is that. The defendant reproduced forms similar to those illustrated in the plaintiffs copyrighted book. 21[21] 101 US 102-105 [1879]. That is the province of letters patent. would be valid without regard to the novelty or want of novelty of its subject matter. not having gone through the arduous examination for patents. would be a surprise and a fraud upon the public. Therefore. x x x. if not pirated from other works. . the United States Supreme Court held that only the expression of an idea is protected by copyright. not the idea itself. intended to illustrate. would be the subject of copyright.

xxx Now. Original Records. but one where the goods specified were stationeries such as letterheads. by letters patent.22[22] Petitioner admitted it did not commercially engage in or market these 22[22] Exhibit B. Whether the art might or might not have been patented. or any material part thereof. The object of the one is explanation. the ruled lines and headings of accounts must necessarily be used as incident to it. may be illustrated by reference to the subjects just enumerated. whilst no one has a right to print or publish his book. gives no exclusive right to the modes of drawing described. By publishing the book without getting a patent for the art. if he pleases. It was not patented. in using the art. In describing the art. 63. and is open and free to the use of the public. he gains no exclusive right to the manufacture and sale of the medicine. calling cards and newsletters. manufacture or composition of matter. The use of the art is a totally different thing from a publication of the book explaining it. Certain mixtures are found to be of great value in the healing art. So of all other inventions or discoveries. P & D was able to secure a trademark certificate for it. sell and use account books prepared upon the plan set forth in such book. of course. Take the case of medicines.The difference between the two things. he must obtain a patent for the mixture as a new art. The latter can only be secured. any person may practice and use the art itself which he has described and illustrated therein. He may copyright his book. The former may be secured by copyright. he gives that to the public. The copyright of a book on perspective. the illustrations and diagrams employed happened to correspond more closely than usual with the actual work performed by the operator who uses the art. (underscoring supplied) ON THE ISSUE OF TRADEMARK INFRINGEMENT This issue concerns the use by respondents of the mark Poster Ads which petitioners president said was a contraction of poster advertising. which have been made the subject of copyright. if it can be secured at all. but that only secures to him the exclusive right of printing and publishing his book. The copyright of a book on bookkeeping cannot secure the exclusive right to make. If the discoverer writes and publishes a book on the subject (as regular physicians generally do). though they may never have been known or used before. is a question. x x x The description of the art in a book. though entitled to the benefit of copyright. And. envelopes. the latter is given to the public. as a book intended to convey instruction in the art. the object of the other is use. which is not before us. If he desires to acquire such exclusive right. The plausibility of the claim put forward by the complainant in this case arises from a confusion of ideas produced by the peculiar nature of the art described in the books. letters patent and copyright. no matter how many drawings and illustrations it may contain. p. lays no foundation for an exclusive claim to the art itself. .

27[27] In this case.23[23] where we. however. 24[24] Id. subject to any conditions and limitations specified in the certificate x x x. ON THE ISSUE OF UNFAIR COMPETITION If at all. 471. were not at all specified in the trademark certificate. As noted by the Court of Appeals. petitioners expert witnesses himself had testified that Poster Ads was too 23[23] 215 SCRA 316 [1992]. By the nature of things.24[24] Faberge. while the petitioners complaint in the RTC also cited unfair competition. by long and exclusive use by a business (such that the name or phrase becomes associated with the business or product in the mind of the purchasing public). Inc. Under the circumstances. One who has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others for products which are of a different description. 185. hence. it cannot now revive its claim of unfair competition. 326. at p. On the contrary. The Law on Trademark Infringement and Unfair Competition. 25[25] 336 SCRA 266 [2000]. ruled that the certificate of registration issued by the Director of Patents can confer (upon petitioner) the exclusive right to use its own symbol only to those goods specified in the certificate. which. there was no evidence that P & Ds use of Poster Ads was distinctive or well-known. invoking Section 20 of the old Trademark Law. there can be no unfair competition under the law on copyrights although it is applicable to disputes over the use of trademarks. the Court of Appeals correctly cited Faberge Inc. we nevertheless cannot hold respondents guilty of unfair competition. 59 Phil. p. 27[27] Sapalo. 2000 ed. the cause of action should have been for unfair competition. vs.. . Chua. But even disregarding procedural issues.25[25] Assuming arguendo that Poster Ads could validly qualify as a trademark. Even a name or phrase incapable of appropriation as a trademark or tradename may. a situation which was possible even if P & D had no registration. 26[26] Ogura vs. Intermediate Appellate Court. Court of Appeals. it dealt in electrically operated backlit advertising units and the sale of advertising spaces thereon. Petitioner did not appeal this particular point. the failure of P & D to secure a trademark registration for specific use on the light boxes meant that there could not have been any trademark infringement since registration was an essential element thereof. was correct and was in fact recently reiterated in Canon Kabushiki Kaisha vs. the trial court did not find private respondents liable therefor. be entitled to protection against unfair competition.26[26] However.goods..

pp. citing TSN. So it was difficult to identify it with any company. SO ORDERED. 19-20. (Chairman). . 2001 is AFFIRMED in toto. JJ. WHEREFORE. Having discussed the most important and critical issues.generic a name. 16. we see no need to belabor the rest.29[29] The admission by petitioners own expert witness that he himself could not associate Poster Ads with petitioner P & D because it was too generic definitely precluded the application of this exception. in the trade and to that branch of the purchasing public. in the mind of the public.. Sandoval-Gutierrez. at p. p. the word or phrase has come to mean that the article was his property. and Carpio-Morales. honestly speaking. 28[28] Decision. 1992. the Court finds no reversible error committed by the Court of Appeals when it reversed the Regional Trial Court of Makati City. Puno. the very business engaged in by petitioner. Poster Ads was generic and incapable of being used as a trademark because it was used in the field of poster advertising. concur. This fact also prevented the application of the doctrine of secondary meaning. 29[29] Sapalo. Secondary meaning means that a word or phrase originally incapable of exclusive appropriation with reference to an article in the market (because it is geographically or otherwise descriptive) might nevertheless have been used for so long and so exclusively by one producer with reference to his article that. the goods and services carrying the trademark Poster Ads could not be distinguished from the goods and services of other entities.28[28] This crucial admission by its own expert witness that Poster Ads could not be associated with P & D showed that. the petition is hereby DENIED and the decision of the Court of Appeals dated May 22. All told. Panganiban. December 3. 92.

tags or box wraps. without being authorized. The RTC ruled in favor of Pearl & Dean. uses a copyrighted architectural plan to construct a structure. their trademark application for “Poster Ads” was approved. advertising copies. Pearl & Dean eventually sued SM. Two years later. exactly the same as theirs. Pearl & Dean negotiated with Shoemart. In 1988. SM refused to pay damages though they removed the light boxes. Eventually. In January 1981. In 1985. SM rejected Pearl & Dean’s proposal. namely. Pearl & Dean was able to acquire copyrights over the designs of the display units. (SM) so that the former may be contracted to install light boxes in the ad spaces of SM. Pearl & Dean received report that light boxes. it was held that there is no copyright infringement when one who. and not the light boxes themselves. In the absence of any convincing proof that “Poster Ads” has acquired a secondary meaning in this jurisdiction. Inc. pictorial illustrations. by any stretch of the imagination. SM also averred that “Poster Ads” is a generic term hence it is not subject to trademark registration. be considered as either prints. Pearl & Dean’s exclusive right to the use of “Poster Ads” is limited to what is written in its certificate of registration. SM also averred that the actual light boxes are not copyrightable. is a corporation engaged in the manufacture of advertising display units called light boxes. stationeries. what was copyrighted were the technical drawings only. HELD: Yes. . In other cases. On the trademark infringement allegation. This is because the copyright does not extend to the structures themselves. ISSUE: Whether or not the Court of Appeals is correct. to be properly classified as a copyrightable. They demanded SM to stop using the light boxes and at the same time asked for damages amounting to P20 M. labels.Pearl & Dean (Phil). But the Court of Appeals ruled in favor of SM. the words “Poster Ads” are a simple contraction of the generic term poster advertising. they used the same trademark to advertise their light boxes. SM argued that it did not infringe on Pearl & Dean’s trademark because Pearl & Dean’s trademark is only applicable to envelopes and stationeries and not to the type of ad spaces owned by SM. were being used by SM in their ad spaces. Inc. The light boxes cannot.

and BJ PRODUCTIONS. Q-92-27854. No. vs. petitioner BJPI submitted to the National Library an addendum to its certificate of copyright specifying the shows format and style of presentation. and CASEY FRANCISCO. 1992. informing Zosa that BJPI had a copyright to Rhoda and Me and demanding that IXL discontinue airing Its a Date. IXL. a dating game show aired from 1970 to 1977. 1971. 1991. However. dated August 12. William Esposo. v.. City Prosecutor of Quezon City and Francisco Joaquin. (IXL). DECISION MENDOZA. In a letter. 1973. and Casey Francisco. denying petitioner Joaquins motion for reconsideration. No. private respondent Zosa sought to register IXLs copyright to the first episode of Its a Date for which it was issued by the National Library a certificate of copyright on August 14. JOAQUIN. president of BJPI. dated December 3. On July 14. saw on RPN Channel 9 an episode of Its a Date. Jr. On June 28. president and general manager of IXL. he wrote a letter to private respondent Gabriel M. 1991. Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. while watching television. Inc. 1992. 1999] FRANCISCO G. private respondent Zosa apologized to petitioner Joaquin and requested a meeting to discuss a possible settlement. FRANKLIN DRILON GABRIEL ZOSA. respondents. dated July 19. 1991.D. Upon complaint of petitioners. 108946. an information for violation of P.SYLLABI/SYNOPSIS SECOND DIVISION [G. On July 18.. January 28.R. et al. . continued airing Its a Date. if IXL did not comply. JR. INC. namely. however.: This is a petition for certiorari. Jr. which was produced by IXL Productions. of Rhoda and Me. prompting petitioner Joaquin to send a second letter on July 25. M922.. 1991. petitioner Francisco Joaquin.. he would endorse the matter to his attorneys for proper legal action.. dated January 28. Zosa. J. Petitioner BJ Productions. Petitioners seek to annul the resolution of the Department of Justice. Meanwhile. WILLIAM ESPOSO. entitled Gabriel Zosa. 1991 in which he reiterated his demand and warned that. in Criminal Case No. FELIPE MEDINA. Felipe Medina. and its resolution. in the Regional Trial Court of Quezon City where it was docketed as Criminal Case No. petitioners. JR. 49 was filed against private respondent Zosa together with certain officers of RPN Channel 9. 92-27854 and assigned to Branch 104 thereof.

that there is reasonable ground to believe that a crime has been committed and that the accused is probably guilty thereof. an authorized officer. Duty of investigating fiscal. He shall certify under oath that he. The public respondent gravely abused his discretion amounting to lack of jurisdiction when he arrogated unto himself the determination of what is copyrightable . therefore. Both public and private respondents maintain that petitioners failed to establish the existence of probable cause due to their failure to present the copyrighted master videotape of Rhoda and Me. i[1] Petitioner Joaquin filed a motion for reconsideration. but his motion was denied by respondent Secretary of Justice on December 3. provides: SEC. he shall prepare the resolution and corresponding information. despite the fact that private respondents never raised the same as a controverted issue.If the investigating fiscal finds cause to hold the respondent for trial. 4 of the Revised Rules of Criminal Procedure. The public respondent gravely abused his discretion amounting to lack of jurisdiction when he invoked non-presentation of the master tape as being fatal to the existence of probable cause to prove infringement. has personally examined the complainant and his witnesses. D. A preliminary investigation falls under the authority of the state prosecutor who is given by law the power to direct and control criminal actions. or as shown by the record. Hence. Drilon reversed the Assistant City Prosecutors findings and directed him to move for the dismissal of the case against private respondents. Rule 112. They contend that petitioner BJPIs copyright covers only a specific episode of Rhoda and Me and that the formats or concepts of dating game shows are not covered by copyright protection under P. Non-Assignment of Error Petitioners claim that their failure to submit the copyrighted master videotape of the television show Rhoda and Me was not raised in issue by private respondents during the preliminary investigation and.ii[2] He is. 4. 1992. Petitioners contend that: 1. On August 12. respondent Secretary of Justice Franklin M. this issue which is exclusively within the jurisdiction of the regional trial court to assess in a proper proceeding. 49. . that the accused was informed of the complaint and of the evidence submitted against him and that he was given an opportunity to submit controverting evidence. 2. Thus. however. he shall recommend dismissal of the complaint.private respondent Zosa sought a review of the resolution of the Assistant City Prosecutor before the Department of Justice. . it was error for the Secretary of Justice to reverse the investigating prosecutors finding of probable cause on this ground. 1992. No. Otherwise. subject to the control of the Secretary of Justice.

his findings are not subject to review unless shown to have been made with grave abuse. immediately informing the parties of said action. the Secretary of Justice is not precluded from considering errors. and not the Secretary of Justice. in the opinion of this Office. In doing so in this case. No. by himself. . however. Where the investigating assistant fiscal recommends the dismissal of the case but his findings are reversed by the provincial or city fiscal or chief state prosecutor on the ground that a probable cause exists. 49. No complaint or information may be filed or dismissed by an investigating fiscal without the prior written authority or approval of the provincial or city fiscal or chief state prosecutor.iii[3] (Emphasis added. however. Moreover. preclude respondent Secretary of Justice from making a preliminary determination of this question in resolving whether there is probable cause for filing the case in court.) It is indeed true that the question whether the format or mechanics of petitioners television show is entitled to copyright protection is a legal question for the court to make. he shall forward the records of the case to the provincial or city fiscal or chief state prosecutor within five (5) days from his resolution. although unassigned. to make. He must make his own finding of probable cause and is not confined to the issues raised by the parties during preliminary investigation. They assail the following portion of the resolution of the respondent Secretary of Justice: [T]he essence of copyright infringement is the copying. In either case. Opinion of the Secretary of Justice Petitioners contend. the latter may. he shall direct the fiscal concerned to file the corresponding information without conducting another preliminary investigation or to dismiss or move for dismissal of the complaint or information. Apart from the manner in which it is actually expressed. formats. No. he did not commit any grave error. a non-copyrightable material. without conducting another preliminary investigation. If upon petition by a proper party. This does not. The latter shall take appropriate action thereon within ten (10) days from receipt thereof. In reviewing resolutions of prosecutors. in whole or in part. concepts. or schemes in their abstract form clearly do not fall within the class of works or materials susceptible of copyright registration as provided in PD. 49. file the corresponding information against the respondent or direct any other assistant fiscal or state prosecutor to do so. that the determination of the question whether the format or mechanics of a show is entitled to copyright protection is for the court. of copyrightable materials as defined and enumerated in Section 2 of PD. Ideas. the Secretary of Justice reverses the resolution of the provincial or city fiscal or chief state prosecutor. for the purpose of determining whether there is probable cause for filing cases in court. the idea of a dating game show is. however.

Court of Appeals. the trial court lifted the search warrants it had previously issued against the defendants. the parties presented sufficient evidence which clearly establish linkages between the copyrighted show Rhoda and Me and the infringing TV show Its a Date. this Court sustained the action of the trial court and ruled:vi[6] The presentation of the master tapes of the copyrighted films from which the pirated films were allegedly copied. given in support of the application for the search warrant. Hence.Presentation of Master Tape Petitioners claim that respondent Secretary of Justice gravely abused his discretion in ruling that the master videotape should have been presented in order to determine whether there was probable cause for copyright infringement. The trial court found that the affidavits of NBI agents. Mere allegations as to the existence of the copyrighted films cannot serve as basis for the issuance of a search warrant. the supposed pronunciamento in said case regarding the necessity for the presentation of the master tapes of the copyrighted films for the validity of search warrants should at most be understood to merely serve as a guidepost in determining the existence of probable cause in copyright infringement cases where there is doubt as to the true nexus between the master tape and the pirated copies.iv[4] on which respondent Secretary of Justice relied in reversing the resolution of the investigating prosecutor. Accordingly. The application for search warrants was directed against video tape outlets which allegedly were engaged in the unauthorized sale and renting out of copyrighted films belonging to the petitioner pursuant to P. the applicant must present to the court the copyrighted films to compare them with the purchased evidence of the video tapes allegedly pirated to determine whether the latter is an unauthorized reproduction of the former. is inapplicable to the case at bar because in the present case.D. 49. They contend that 20th Century Fox Film Corporation v. An objective and careful reading of the decision in said case could lead to . Inc. Court of Appealsvii[7] in which it was held: In fine. On petition for review. The essence of a copyright infringement is the similarity or at least substantial similarity of the purported pirated works to the copyrighted work. was necessary for the validity of search warrants against those who have in their possession the pirated films.v[5] The case of 20th Century Fox Film Corporation involved raids conducted on various videotape outlets allegedly selling or renting out pirated videotapes. The petitioners argument to the effect that the presentation of the master tapes at the time of application may not be necessary as these would be merely evidentiary in nature and not determinative of whether or not a probable cause exists to justify the issuance of the search warrants is not meritorious. The court cannot presume that duplicate or copied tapes were necessarily reproduced from master tapes that it owns. v. This linkage of the copyrighted films to the pirated films must be established to satisfy the requirements of probable cause. This ruling was qualified in the later case of Columbia Pictures. were insufficient without the master tape.

viii[8] In the case at bar. The purpose is to determine who among the searchees is the most compatible with the searcher. or similar methods. and the two couples are treated to a night or two of dining and/or dancing at the expense of the show. Set 2 Set 2 . Selection is use of compute (sic) methods. while three (3) unmarried participants of the other gender are on the other side of the divider. c. both single. b. petitioners and private respondents presented written descriptions of the formats of their respective televisions other conclusion than that said directive was hardly intended to be a sweeping and inflexible requirement in all or similar copyright infringement cases. That there is an infringement on the copyright of the show RHODA AND ME both in content and in the execution of the video presentation are established because respondents ITS A DATE is practically an exact copy of complainants RHODA AND ME because of substantial similarities as follows. the substance of the television productions complainants RHODA AND ME and Zosas ITS A DATE is that two matches are made between a male and a female. Searcher asks a question b. . Any difference appear mere variations of the major concepts. same to be answered by each of the searchees. Unmarried participant a. This arrangement is done to ensure that the searcher does not see the searchees. Selection is made by the d. during the preliminary investigation. same match to the searchee. . The major concepts of both shows is the same. Searchees. Searcher speculates on the c. . on the basis of which the investigating prosecutor ruled: As may [be] gleaned from the evidence on record. same of one gender (searcher) appears on one side of a divider. d. to wit: RHODA AND ME ITS A DATE Set I Set I a. based on the or by the way questions are answer of the answered.

Such being the case. directories. enumerates the classes of work entitled to copyright protection. dissertations prepared for oral delivery. To begin with. (K) Drawings or plastic works of a scientific or technical character. No. including composite and cyclopedic works. engraving. choreographic works and entertainments in dumb shows. Same as above with the genders same of the searcher and searchees interchanged. painting. and other works of applied art. architecture. It is their position that the presentation of a point-by-point comparison of the formats of the two shows clearly demonstrates the nexus between the shows and hence establishes the existence of probable cause for copyright infringement. subsist with respect to any of the following classes of works: (A) Books. the acting form of which is fixed in writing or otherwise. sculpture. with or without words. (J) Maps. lithography. sermons. whether or not patentable. they did not have to produce the master tape.ix[9] Petitioners assert that the format of Rhoda and Me is a product of ingenuity and skill and is thus entitled to copyright protection. from the moment of creation. (E) Dramatic or dramatico-musical compositions. (D) Letters. the format of a show is not copyrightable. and other works of art. (I) Original ornamental designs or models for articles of manufacture. plans. to wit: Section 2. 49. (C) Lectures. (F) Musical compositions. models or designs for works of art. (G) Works of drawing.D. Section 2 of P. (B) Periodicals. and gazetteers.x[10] otherwise known as the DECREE ON INTELLECTUAL PROPERTY. The rights granted by this Decree shall. including pamphlets and newspapers. and charts. (L) Photographic works and works produced by a process analogous to photography. sketches. addresses. lantern slides. (H) Reproductions of a work of art. . manuscripts.

abridgements. 2. No. administrative or legal nature. scholarly. . news of the day and other miscellaneous facts having the character of mere items of press information. translations. method of operation.D. (R) Other literary. (N) Computer programs. even if they are expressed. procedure.xv[15] Thus. Being a statutory grant. a copyright may be obtained only for a work falling within the statutory enumeration or description. pictorial illustrations advertising copies. system. or discovery. in enumerating what are subject to copyright. . labels. tags. illustrated. For this reason. and box wraps. The copyright does not extend to an idea. principle. or any official text of a legislative. explained. and not simply a pre-existing right regulated by the statute. or embodied in such work.xi[11] The format or mechanics of a television show is not included in the list of protected works in 2 of P.D. procedure. . in the strict sense of the term.Notwithstanding the provisions of Sections 172 and 173. adaptations. the new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES provides: Sec. Copyright. . or artistic works or of works referred to in Section 9 of this Decree which by reason of the selection and arrangement of their contents constitute intellectual creations. scholarly. arrangements and other alterations of literary.xiii[13] Regardless of the historical viewpoint. discovery or mere data as such. system. is purely a statutory right.xii[12] Since . and may be obtained and enjoyed only with respect to the subjects and by the persons. (P) Dramatizations. concept. no protection shall extend. illustrated or embodied in a work. No. regardless of the form in which it is described. It is a new or independent right granted by the statute. . copyright in published works is purely a statutory creation. . the rights are only such as the statute confers. (Q) Collections of literary. Unprotected Subject Matter. xiv[14] P. (O) Prints. 49. method or operation. which shall be protected as provided in Section 8 of this Decree. to any idea. refers to finished works and not to concepts. under this law. explained. 8293). process. and on terms and conditions specified in the statute. concept. musical or artistic works or of works of the Philippine government as herein defined. as well as any official translation thereof. it is authoritatively settled in the United States that there is no copyright except that which is both created and secured by act of Congress . . No. scientific and artistic works.A. principle. the protection afforded by the law cannot be extended to cover them.(M) Cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings. the same to be protected as such in accordance with Section 8 of this Decree. 49. 175. This provision is substantially the same as 172 of the INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES (R.

28-29. . iv[4] 164 SCRA 655 (1988). 2(M). Quisumbing. Annex A. Bellosillo.. vii[7] 261 SCRA 144 (1996). Rollo. as falling within the class of works mentioned in P. Rollo. the investigating prosecutor should have the opportunity to compare the videotapes of the two shows. the petition is hereby DISMISSED.. vi[6] Id. p. v[5] Petition. ii[2] Sangguniang Bayan of Batac. 4. p. Puno.D. p.What then is the subject matter of petitioners copyright? This Court is of the opinion that petitioner BJPIs copyright covers audio-visual recordings of each episode of Rhoda and Me. video and audio.. p. JJ. SO ORDERED. pp. such that no similarity or dissimilarity may be found by merely describing the general copyright/format of both dating game shows. at 663-664. 27. iii[3] Petition. Albano. 1-2. J. no part due to relation to one of the parties. Rollo. by the very nature of the subject of petitioner BJPIs copyright. As aptly observed by respondent Secretary of Justice: A television show includes more than mere words can describe because it involves a whole spectrum of visuals and effects. and Buena. Mere description by words of the general format of the two dating game shows is insufficient. Annex B. The copyright does not extend to the general concept or format of its dating game show. Accordingly.xvi[16] WHEREFORE. the presentation of the master videotape in evidence was indispensable to the determination of the existence of probable cause. (Chairman). concur. 18. pp. 49. i[1] Petition. to wit: Cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings. 260 SCRA 561 (1996). Ilocos Norte v. 17.

lithography or other works of art. (e) Dramatic or dramatico-musical compositions. (i) Illustrations. choreographic works or entertainment in dumb shows. Literary and artistic works. . with or without words. architecture or science. charts and three-dimensional works relative to geography. Rollo. painting. x[10] Promulgated on November 14. sketches. sermons. (h) Original ornamental designs or models for articles of manufacture. plans. pp. whether or not registrable as an industrial design and other works of applied art. (g) Works of drawing. pamphlets. are original intellectual creations in the literary and artistic domain protected from the moment of their creation and shall include in particular: (a) Books.172. (k) Photographic works including works produced by a process analogous to photography. maps. xi[11] Effective on January 1. 172. (l) Audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings. addresses. lantern slides. (j) Drawings or plastic works of a scientific or technical character.. (f) Musical compositions. topography. (n) Computer programs. SEC. 1972. (c) Lectures. and . architecture. 44-45. sculpture. ix[9] Petition Annex G. dissertations prepared for oral delivery whether or not reduced in writing or other material form.1. models or designs for works of art.viii[8] Id. Literary and Artistic Works. 173. hereinafter referred to as works. (d) Letters. articles and other writings. (m) Pictorial illustrations and advertisements. engraving. (b) Periodicals and newspapers. 1998.

(o) Other literary.J. xii[12] 18 C. 161. xv[15] NEIL BOORSTYN. scientific and artistic works. at 165. xvi[16] Comment of Public Respondent. p.. 9. COPYRIGHT LAW 25 (1981).S. xiv[14] HORACE G. BALL. xiii[13] Id. LAW OF COPYRIGHT AND LITERARY PROPERTY. scholarly. 152. 45 (1944). p. . Rollo.

Ideas. video and audio. Though BJPI did provide a lot of written evidence and description to show the linkage between the shows. such that no similarity or dissimilarity may be found by merely describing the general copyright/format of both dating game shows. a show which is basically the same as Rhoda and Me. in whole or in part. 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 (It’s a Date). ISSUE: Whether or not the order of Drilon finding no probable cause is valid. No. 49. It holds rights over the show’s format and style of presentation. The investigating prosecutor found probable cause against Zosa. No. A television show includes more than mere words can describe because it involves a whole spectrum of visuals and effects. this is still good law).BJ Productions Inc. the same were not enough. (BJPI) was the holder of copyright over the show Rhoda and Me. concepts. Zosa later sought a review of the prosecutor’s resolution before the Secretary of Justice (Franklin Drilon). however. The essence of copyright infringement is the copying. Apart from the manner in which it is actually expressed. In 1991. . He eventually sued Gabriel Zosa. the idea of a dating game show is a non-copyrightable material. the manager of the show It’s a Date. or schemes in their abstract form clearly do not fall within the class of works or materials susceptible of copyright registration as provided in PD. What is covered by BJPI’s copyright is the specific episodes of the show Rhoda and Me. This is based on the ruling in 20th Century Fox vs CA (though this has been qualified by Columbia Pictures vs CA. 49 (Copyright Law). formats. BJPI’s president Francisco Joaquin saw on TV – RPN 9’s show It’s a Date. HELD: Yes. of copyrightable materials as defined and enumerated in Section 2 of PD. Drilon reversed the findings of the fiscal and directed him to dismiss the case against Zosa.

However. Sony Corp. finding. and. In this case. Movie studios (Plaintiff) that owned copyrights in movies and other television programming argued that Sony (Defendant) contributed to copyright infringement of their copyrighted works by marketing videocassette recorders (VCRs or VTRs) that enabled users to record the programs. The United States Supreme Court granted certeriori. Facts. J. In proceeding. The sale of copying equipment.Brief Fact Summary. This case does not fall in the category of those in which it is manifestly just to impose vicarious liability because the “contributory” infringer was in a position to control the use of copyrighted works by others and had authorized the use without permission from the copyright owner.) No. there is no precedent for imposing vicarious liability on the theory that Sony (Defendant) sold the VTR’s with constructive knowledge that its customers might use the equipment to make unauthorized copies of copyrighted material. and that there was no evidence that any of the copies made by individuals were influenced or encouraged by Defendant’s advertisements. inter alia. The court of appeals reversed. holders of copyrights on televised movies and other televised programs.(Stevens. in a case like this. held that Defendant was not liable for direct or contributory copyright infringement. that no Sony (Defendant) employee had either direct involvement with the allegedly infringing activity or direct contact with purchasers of Betamax who recorded copyrighted works off-the-air. in which Congress has not plainly marked the course to be followed by the judiciary. which allowed home recording of televised programs. The district court. brought an action for contributory copyright infringement on the theory that Defendant was contributorily liable for infringement by consumers of VTRs of the studios’ (Plaintiff) copyrighted works on the basis of Sony’s (Defendant) marketing and distribution of the VTRs. the Court must balance the encouraging and rewarding of authors to create new works with the public good. Several movie studios (Plaintiff). One who supplies the way to accomplish an infringing activity and encourages that activity through advertisement is not liable for copyright infringement. . the Court must be circumspect in construing the scope of rights created by a statute that never contemplated such a calculus of interests based on technological advances. the only contact between Defendant and the users of the VTR’s occurred at the moment of sale. The protection given to copyrights is wholly statutory. Issue. Synopsis of Rule of Law. (Sony) (Defendant) marketed Betamax videocassette recorders (VCRs or VTRs). One who supplies the way to accomplish an infringing activity and encourages that activity through advertisement is not liable for copyright infringement. Is one who supplies the way to accomplish an infringing activity and encourages that activity through advertisement liable for copyright infringement? Held.

a large portion of the public’s use of VTRs does not implicate copyright at all. and also time-shifting.” He proposed instead a test for indirect liability for copyright infringement based on whether the primary use of technology is infringing. faulted the majority for deferring to congressional action in the face of major technological advancements. In this case. Sony (Defendant) would have prevailed given the determination of the majority that the predominant use of VTRs (time-shifting) constituted fair the sale of other articles of commerce. Justice Blackmun. unobjectionable purposes. the most common use for the Betama. Even under this test. Reversed. is merely capable of substantial noninfringing uses. saying that the Court was thereby “evad[ing] the hard issues when they arise in the area of copyright law. in a dissent. constitutes a fair use. or actually. . does not constitute contributory infringement if the product is widely used for legitimate. Discussion. however.

Here the software companies were liable for encouraging and profiting from direct infringement. the Court held that companies that distributed software.Mgm v. secondary liability doctrines applied here. . In such networks. The "only practical alternative" was to go against the software distributor for secondary liability. and encouraged and profited from direct copyright infringement using such software. A group of movie studios and other copyright holders sued and alleged that Grokster and the other companies violated the Copyright Act by intentionally distributing software to enable users to infringe copyrighted works. were liable for the resulting acts of infringement. The companies profited from advertising revenue. reasoning that the software distribution companies were not liable for copyright violations stemming from their software. without the use of a central server. and promoted that software to infringe copyrights. Question Were companies that distributed file-sharing software. since they streamed ads to the software users. Grokster and other companies distributed free software that allowed computer users to share electronic files through peer-to-peer networks. The Ninth Circuit affirmed. In a unanimous opinion delivered by Justice David Souter. Users employed the software primarily to download copyrighted files. which could have been used lawfully. liable for the infringement? Conclusion Yes. The Court argued that although the Copyright Act did not expressly make anyone liable for another's infringement. Grokster Ltd. The software in this case was used so widely to infringe copyrights that it would have been immensely difficult to deal with each individual infringer. The district court ruled for Grokster. users can share digital files directly between their computers. file-sharing which the software companies knew about and encouraged.

) Because computer programs. It did not copy any of the Plaintiff’s underlying computer code. Is a computer menu command hierarchy copyrightable subject matter? Held. While the incentive for the creator remains the same through the grant of a limited monopoly. While utility does not bar copyrightability. process. Facts. Borland (Defendant) included a virtually identical copy of the whole 1-2-3 menu tree in its Quattro programs. which are an uncopyrightable method of operating the VCR. Reversed.LOTUS VS BORLAND Brief Fact Summary. Therefore. but it did copy the words and structures of Lotus’s (Plaintiff) menu command hierarchy so that consumers who used Borland’s (Defendant) programs would not have to relearn any commands or rewrite their Lotus (Plaintiff) macros. A computer menu command hierarchy is not copyrightable subject matter. Therefore. The program also enabled the user to write macros that would designate a series of commands with a single macro keystroke. (Boudin. to assume a computer program is just another form of expression. the Lotus (Plaintiff) command terms are equivalent to the buttons themselves. Defendant did not infringe Plaintiff’s copyright when it copied its menu command hierarchy. which may be a creative work. Just as it would be impossible to operate a VCR without buttons.” etc. Borland International (Borland) (Defendant) then released two versions of its own spreadsheet programs. Where protection is sought for a computer menu. Borland International (Borland) (Defendant) included in its own spreadsheet programs the commands used by the computer program Lotus 1-2-3 so that spreadsheet users who were already familiar with 1-2-3 could easily switch to the Defendant programs without learning new commands.” “Print. unlike literary works or works of art. method of operation. so there is not much precedent to go by. it changes the calculus. granting copyright protection to such programs can have the same effect that granting a patent would have. J. or procedure excluded from protection by the Copyright Act. such as “Copy. it would be impossible to operate Lotus 1-2-3 with using its menu command hierarchy. the importance of the menu over time may reside more in the investment that users have made in learning the menu and building macros based on it. like a film. It provides the means by which users control and operate a program’s functional capabilities. Plaintiff sued for copyright infringement and received a judgment in its favor. limiting the ability of users to perform a task in the most efficient way. J. (Stahl. Concurrence. While the expression of the computer program may look or feel . Synopsis of Rule of Law. Defendant appealed. may be incorrect. A computer menu command hierarchy is not copyrightable subject matter. (Lotus) (Plaintiff) marketed a computer spreadsheet program. Lotus 1-2-3. are utilitarian. A menu command hierarchy is an uncopyrightable “method of operation” as that term is used in S 102(b) of the Copyright Act. that is. called Quattro and Quattro Pro.) No. the cost to users is great where the creation is the most efficient way to accomplish a particular task. Lotus Development Corp. The program incorporated 469 menu commands. Copyright law has not extensively addressed utility. arguing that the Lotus (Plaintiff) menu command hierarchy was not copyrightable because it was a system. Issue. Therefore.

. who would have then already reaped the rewards of being first. Discussion. Borland’s rationale for wanting to incorporate the Lotus (Plaintiff) menus rings true. In any event. he also admitted that a privileged use doctrine would cause a host of administrative problems and would also reduce the ability of the industry to predict outcomes. The choice seems to be between finding the menus not copyrightable or devising a new doctrine that renders Borland’s (Defendant) use privileged. its substance may be more suited to protection by patent law. Granting Lotus (Plaintiff) copyright on this pattern of commands would lock users into using Lotus (Plaintiff). Accordingly. The issue remains whether it should be awarded such protection. Judge Boudin suggested that an alternate analysis would be to say that Borland’s (Defendant) use of the Lotus (Plaintiff) menu was privileged as it was simply trying to assist former Plaintiff customers. to give Plaintiff users who have invested time learning the Lotus (Plaintiff) menu hierarchy a fallback option when they use Borland’s (Defendant) product. The issue is not whether Lotus (Plaintiff) would lose money if its menu hierarchy were awarded copyright protection. not attract them. copyrightability does not seem warranted. If a better spreadsheet were developed. Each approach has its pros and cons. Defendant should prevail. but the question remains on what basis. the majority’s approach is satisfactory. Given that the menu commands are largely for standard procedures that Lotus (Plaintiff) did not invent and are common words that Plaintiff cannot monopolize. even for just the particular combination and subgrouping of the commands. there is no reason why those customers who have learned the Lotus (Plaintiff) menu and devised macros for it should be forced to remain captive to Plaintiff simply because of an investment in learning made by them and not by Lotus (Plaintiff). The application of copyright law to computer programs does not quite “fit. that is. However. The closest analogy to that approach would be the fair use doctrine employed in conventional copyright the familiar subject matter of copyright.” In this case.