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FERNANDO U. JUAN v. ROBERTO U. JUAN GR No. 221732, Aug 23, 2017

Facts:
Respondent Roberto U. Juan claimed that he began using the name and mark "Lavandera Ko" in his laundry business on July
4, 1994. He then opened his laundry store at No. 119 Alfaro St., Salcedo St., Makati City in 1995. Thereafter, on March 17, 1997, the
National Library issued to him a certificate of copyright over said name and mark. Over the years, the laundry business expanded
with numerous franchise outlets in Metro Manila and other provinces. Respondent Roberto then formed a corporation to handle the
said business, hence, Laundromatic Corporation (Laundromatic) was incorporated in 1997, while "Lavandera Ko" was registered as a
business name on November 13, 1998 with the Department of Trade and Industry (DTI). Thereafter, respondent Roberto discovered
that his brother, petitioner Fernando was able to register the name and mark "Lavandera Ko" with the Intellectual Property Office
(IPO) on October 18, 2001, the registration of which was filed on June 5, 1995. Respondent Roberto also alleged that a certain
Juliano Nacino (Juliano) had been writing the franchisees of the former threatening them with criminal and civil cases if they did not
stop using the mark and name "Lavandera Ko." It was found out by respondent Roberto that petitioner Fernando had been selling
his own franchises.
Thus, respondent Roberto filed a petition for injunction, unfair competition, infringement of copyright, cancellation of
trademark and name with/and prayer for TRO and Preliminary Injunction with the Regional Trial Court (RTC) and the case was raffled
off at Branch 149, Makati City. The RTC issued a writ of preliminary injunction against petitioner Fernando in Order dated June 10,
2004. On July 21, 2008, due to the death of respondent Roberto, the latter was substituted by his son, Christian Juan (Christian). Pre-
trial conference was concluded on July 13, 2010 and after the presentation of evidence of both parties, the RTC rendered a
Resolution dated September 23, 2013, dismissing the petition and ruling that neither of the parties had a right to the exclusive use
or appropriation of the mark "Lavandera Ko" because the same was the original mark and work of a certain Santiago S. Suarez
(Santiago). According to the RTC, the mark in question was created by Suarez in 1942 in his musical composition called, "Lavandera
Ko" and both parties of the present case failed to prove that they were the originators of the same mark.
Petitioner appealed to CA but CA dismissed due to technical grounds.
Petitioner files Certiorari under Rule 45 with the SC.

Issue:
WHETHER OR NOT A MARK IS THE SAME AS A COPYRIGHT.

Held:
No. The Ruling of RTC is erroneous.
The law on trademarks, service marks and trade names are found under Part III of Republic Act (R.A.) No. 8293, or the
Intellectual Code of the Philippines, while Part IV of the same law governs copyrights.
"Lavandera Ko," the mark in question in this case is being used as a trade name or specifically, a service name since the
business in which it pertains involves the rendering of laundry services. Under Section 121.1 of R.A. No. 8293, "mark" is defined as
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. As such, the basic contention of the parties is, who has the better right to use "Lavandera
Ko" as a service name because Section 165.2[13] of the said law, guarantees the protection of trade names and business names even
prior to or without registration, against any unlawful act committed by third parties. A cause of action arises when the subsequent
use of any third party of such trade name or business name would likely mislead the public as such act is considered unlawful.
Hence, the RTC erred in denying the parties the proper determination as to who has the ultimate right to use the said trade name by
ruling that neither of them has the right or a cause of action since "Lavandera Ko" is protected by a copyright.
By their very definitions, copyright and trade or service name are different. Copyright is the right of literary property as
recognized and sanctioned by positive law.[14] An intangible, incorporeal right granted by statute to the author or originator of
certain literary or artistic productions, whereby he is invested, for a limited period, with the sole and exclusive privilege of
multiplying copies of the same and publishing and selling them.[15] Trade name, on the other hand, is any designation which (a) is
adopted and used by person to denominate goods which he markets, or services which he renders, or business which he conducts,
or has come to be so used by other, and (b) through its association with such goods, services or business, has acquired a special
significance as the name thereof, and (c) the use of which for the purpose stated in (a) is prohibited neither by legislative enactment
nor by otherwise defined public policy.[16]
Section 172.1 of R.A. 8293 enumerates the following original intellectual creations in the literary and artistic domain that
are protected from the moment of their creation, thus:
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;
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(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows;
(f) Musical compositions, with or without words;
(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 audio-visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.

As such, "Lavandera Ko," being a musical composition with words is protected under the copyright law (Part IV, R.A. No.
8293) and not under the trademarks, service marks and trade names law (Part III, R.A. No. 8293).
Considering, therefore, the above premise, this Court deems it proper to remand the case to the RTC for its proper
disposition since this Court cannot, based on the records and some of the issues raised by both parties such as the cancellation of
petitioner's certificate of registration issued by the Intellectual Property Office, make a factual determination as to who has the
better right to use the trade/business/service name, "Lavandera Ko."

UNILEVER vs. CA & P&G


Shorter summary:
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. . The “tac-tac” was used in the same year in an advertisement entitled “All aperto” to demonstrate
the effect on fabrics of one of P&GP's products, a liquid bleach called “Ace.” . 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". P&G has used the same distinctive “tac-tac” key visual to local consumers in the
Philippines.
Unilever started airing a 60 second television commercial “TVC” 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&GP's “tac-tac” key visual.
Unilever filed a Complaint with the Advertising Board of the Philippines to prevent P&GP from airing the “Kite”
television advertisement.
W/N CA acted in GADLEJ in granting the WPI against Unilever -- NO. 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 petitioner's contention, the intellectual creator's 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. P&GP is entitled to the injunctive relief prayed for in its Complaint.

Doctrine:
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.
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Facts:
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. 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 year in an advertisement entitled “All aperto” to demonstrate
the effect on fabrics of one of P&GP's products, a liquid bleach called “Ace.” . 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". P&G has used the same distinctive “tac-tac” key visual to local consumers in the
Philippines.
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&GP's “tac-tac” key visual. 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 Philippines.
Unilever filed a Complaint with the Advertising Board of the Philippines to prevent P&GP from airing the “Kite”
television advertisement.
A writ of preliminary injunctions was issued against Unilever by the CA, enjoining it from using and airing tv
commercials for its laundry products claimed to be identical or similar to P&Gs "double tug" or "tactac" key visual.

Issue:
W/N CA acted in GADLEJ in granting the WPI against Unilever -- NO

Held:
Unilever does not deny that the questioned TV advertisements are substantially similar to P&GP's “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 “tac-tac” key visual. In other words, it is
petitioner's 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. 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 petitioner's contention, the intellectual
creator's 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. P&GP is entitled to the injunctive relief prayed for in its Complaint.

In the m, atter of the charges of plagiarism, etc., against Associate Justice Mariano C. Del Castillo. [A.M. No. 10-7-17-
SC,
February 08, 2011

FACTS:
On April 28, 2010, the Supreme Court issued a decision which dismissed a petition filed by the Malaya Lolas Organization in
the case of Vinuya vs Romulo. Atty. Herminio Harry Roque Jr., counsel for Vinuya et al, questioned the said decision. He raised,
among others, that the ponente in said case, Justice Mariano del Castillo, plagiarized three books when the honorable Justice
“twisted the true intents” of these books to support the assailed decision. These books were: a. A Fiduciary Theory of Jus Cogens by
Evan J. Criddle and Evan Fox-Descent, Yale Journal of International Law (2009); b. Breaking the Silence: Rape as an International
Crime by Mark Ellis, Case Western Reserve Journal of International Law (2006); and c. Enforcing Erga Omnes Obligations by Christian
J. Tams, Cambridge University Press (2005).
As such, Justice del Castillo is guilty of plagiarism, misconduct, and at least inexcusable negligence. Interestingly, even the
three foreign authors mentioned above, stated that their works were used inappropriately by Justice Del Castillo and that the
assailed decision is different from what their works advocated.
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ISSUE: Whether or not there is plagiarism in the case at bar.

HELD: No. There is no plagiarism. Even if there is (as emphasized by the Supreme Court in its ruling on the Motion for
Reconsideration filed by Vinuya et al in 2011), the rule on plagiarism cannot be applied to judicial bodies.

No Plagiarism
At its most basic, plagiarism means the theft of another persons language, thoughts, or ideas. To plagiarize, as it is
commonly understood according to Webster, is to take (ideas, writings, etc.) from (another) and pass them off as ones own.The
passing off of the work of another as ones own is thus an indispensable element of plagiarism.
According to Black’s Law Dictionary: Plagiarism is the “deliberate and knowing presentation of another person’s original
ideas or creative expressions as one’s own.”
This cannot be the case here because as proved by evidence, in the original drafts of the assailed decision, there was
attribution to the three authors but due to errors made by Justice del Castillo’s researcher, the attributions were inadvertently
deleted. There is therefore no intent by Justice del Castillo to take these foreign works as his own.

But in plagiarism, intent is immaterial.


On this note, the Supreme Court stated that in its past decisions, (i.e. U.P Board of Regents vs CA, 313 SCRA 404), the
Supreme Court never indicated that intent is not material in plagiarism. To adopt a strict rule in applying plagiarism in all cases
leaves no room for errors. This would be very disadvantageous in cases, like this, where there are reasonable and logical
explanations.

On the foreign authors’ claim that their works were used inappropriately
According to the Supreme Court, the passages lifted from their works were merely used as background facts in establishing
the state on international law at various stages of its development. The Supreme Court went on to state that the foreign authors’
works can support conflicting theories. The Supreme Court also stated that since the attributions to said authors were accidentally
deleted, it is impossible to conclude that Justice del Castillo twisted the advocacies that the works espouse.

No Misconduct
Justice del Castillo is not guilty of misconduct. The error here is in good faith. There was no malice, fraud or corruption.

No Inexcusable Negligence (explanation of Justice Del Castillo)


The error of Justice del Castillo’s researcher is not reflective of his gross negligence. The researcher is a highly competent
one. The researcher earned scholarly degrees here and abroad from reputable educational institutions. The researcher finished third
in her class and 4th in the bar examinations. Her error was merely due to the fact that the software she used, Microsoft Word,
lacked features to apprise her that certain important portions of her drafts are being deleted inadvertently. Such error on her part
cannot be said to be constitutive of gross negligence nor can it be said that Justice del Castillo was grossly negligent when he
assigned the case to her. Further, assigning cases to researchers has been a long standing practice to assist justices in drafting
decisions. It must be emphasized though that prior to assignment, the justice has already spelled out his position to the researcher
and in every sense, the justice is in control in the writing of the draft.
With the advent of computers, however, as Justice Del Castillos researcher also explained, most legal references, including
the collection of decisions of the Court, are found in electronic diskettes or in internet websites that offer virtual libraries of books
and articles. Here, as the researcher found items that were relevant to her assignment, she downloaded or copied them into her
main manuscript, a smorgasbord plate of materials that she thought she might need.
She electronically cut relevant materials from books and journals in the Westlaw website and pasted these to a main
manuscript in her computer that contained the issues for discussion in her proposed report to the Justice. She used the Microsoft
Word program. Later, after she decided on the general shape that her report would take, she began pruning from that manuscript
those materials that did not fit, changing the positions in the general scheme of those that remained, and adding and deleting
paragraphs, sentences, and words as her continuing discussions with Justice Del Castillo, her chief editor, demanded.
Parenthetically, this is the standard scheme that computer-literate court researchers use everyday in their work.