Part VI Search Warrants AND INTELLECTUAL Property RIGHTS One of the most horrifying and revoltiny sight for IPR owners to behold are counterfeit items openly sold in public. Had it been lega ly possible to just destroy the items and the culprits that sell them similar to the biblical account where Jesus drove out corrupt traders in the temple area and called them thieves,! many will no doubt do just the same. But our society is one that will not allow us to put the law in our ov hands. Everyane should follow the proper procedures in the confiscation and destructiori of the infringing merchandise including the apprehension of the offenders It is for this reasan that a discussion along this line is included in this work, The discussion however was kept at a minimum since this topic ig best dealt with in a remedial law text. For those who need actval legal representation, actual consultation with a lawyer is indispensable. Learning Objectives After studying this chapter, you should be atle to: + Determine jurisdiction over crimina: and civil cases for viola tion of intellectuat property rights + Understand the reasons behind creatioy of special courts for intellectual property rights violation * Have an overview on the nature and requisites of search war- rants 206PART VI 287 SEARCH WARRANTS AND INTELLECTUAL PROPERTY RIGHTS Jurispicrion Over Civi ano. Ceamat Cases ror IPR Vrovations. Jurisdiction is the power and authority of the court to hear and decide a particular case. A case filed in a court that has no jurisdiction over it will be dismissed no matter how meritorious the complaint may be, Tt is just like securirg a copy- right far a supposedly patentable invention, i.e., itis just a useless exercise. It has been well-settled that it is the Regional Tei al Court that has jurisdiction over civil and crimi- nal cases for IPR violations despite the increase in jurisdiction of Municipai Trial Courts brought about by BP Big. 129 and Rep. Act No. 7691, This is actually the issue in Samson ¥. Daway, G.R. Nos, 160054-55, July 21, 2004. In Samson, two information for urfair com- petition under Section 168.3(a), in relation to Sectior 170, of the Intellectual Property Code (Republic Act No. 8293), similarly worded save for the dates and places of commission, were filed on March 7, 2002 against petitioner Manolo P, Samson, the registered owner of ITTI Shoes. The court's (RTC) jurisdiction over the offense charged was challenged on the ground that since under Section 170 of Rep. Act No, 8293, the pen- alty of imprisonment for unfair commpetitinn does not exceed six (6) years, the offense is cogni- zaile by the Municipal Tria’ Courts and not by the Regional Trial Court per Rep, Act No. 7691. The Supreme Court in upholding R“C’s juris- dictior, said: “orollarily, Section 163 of the same Code states that actions (including criminal and civ- |l) under Sections 15D, 155, 164, 166, 167, 168 and 189 shail be brought before the prap- eF courts with appropriate jurisdiction under existing laws. thus — “SEC. 163. Jurisdiction of Court, -~ Al actions under Sections 150, 185, 164 and 166 to 16) shall be brought before the prope caurts with appropriate Jurisdiction under existing laws. “The existing lav referred to in tre foregoing, prcvision is Section 27 of RA, Ko. 166 (The Trademark Law} which provides that jurisdicESSENTIALS OF INTELLECTUAL. PR 2PERTY LAW. tion over cases for infrirgement of registered marks, unfair competition, false designation of origin and false description or representation, Is lodged with the Court of First Instance (now Regienal Trial Court) — °SEC. 27. Jurisdiction of Court of First Instance. ~ All actions under this Chapter [V-infringe ment] and Chapters. VI [Unfair Competition and VII [False Designation of Origin and Faise Description or Representation, liereof shall be brought before the Court of First Instance. "We find no merit in the claim of petitioner that R.A, No. 166 was expressly repealed by R.A, No. 8293. The repealing clause of R.A. Ne. 8293, reads — SEC. 239. Repeals, — 239.1, All Acts and parts of Acts inconsistent herewith, more par- cularly Republic Act No, 165, as amended; Republic Act No. 1€5, es amended; and Ar ticles 188 and 189 of the Revised Penal Coae; Presidential Decree No. 49, inchiding Presiden tial Decree No. 285, as amended, are hereby repealed. ‘Notably, the afore-quoted clause did not ex pressly repeal B.A, No. 166 in its entirety, otherwise, it would ot rave used the phras es ‘patts of Acts’ and ‘inconsistent herewith; and it would have simply stated “Republic Act No. 165, a5 amended; Republic Act No. 166, as amended; and Articles 188 and 199 of the Revised Penal Corle; Presidential Decree No. 49, including Presidentie! Decree No. 235, as, amended are hereby repealed.’ It would have removed all doubts that said specific laws had been rendered without force and effect. The use of the phrases ‘parts of Acts’ arid “inconsis- tent herewith’ only rears that the repeal per: tains only to provisions whieh are repugnant or not susceptible cf harmonization with R.A, No. 8293. Section 27 of R.A. No, 166, however, is consistent and in harmony witty Section 163, OF R.A. No. 8293. Had RA. No, 8293 intended to vest jurisdiction aver violations of intellec- tual property rights with the Metropolitan Trial Courts, it would have expressly stated so un der Section 163 thereof. "Moreover, the settled rule In statutory con struction is that in case of conflict between a general law and a special law, the latter must,PART VI 285; SEARCH WARRANTS ANiO INTELLECTUAL PROPERTY RIGHTS orevail. Jurisdiction conferred by a special law ‘0 Regional Trial Courts must prevail over that granted by a general law to Municipal Trial Pourts. In the case at bar, RA. No. 8293 and R.A, Jo. 166 are special laws conferring jurisdiction over violations of intellectual property rights to he Regional Trial Court. Trey should therefore orevail over R.A. No. 7631, which is a gen- eral law. Hence, jurisdiction over the instant siminal case for unfair competition Is preperly ociged with the Regional Trial Court even if che senailty therefor is imprisonment of less tran 6 years, or from 2 to 5 years and a fre ranging rom P50,000.00 to P200,0100.00," SrectaL Commerciat One of the challenges faced by our courts is their Courts clogged dockets. This Is seen firsthand by both litigators tike myself and our clien:s every time we appear in courts that has too many cases scheduled for hearing in any given day. “he situ- ation 's aggravated by the lack of space in most courtrooms that results in SRO (s:anding room only), @ phenomenon na longer seen in cur mov- ie hous2s since the proliferation of piraced CO's and DVD's ‘aturaily, the problem of clogged dockets also gives the litigants their fair share of stress attacks sue to the very long time they have te endure waiting for the result of their cases. Thee has been to2 many jokes told along this line such that fting something new is a task near impossible already. Remedies to address the protilem includes the creation of administrative agencies vested witty authority te hear cases of peculiar nature. ‘The Intellectual Property Office Is one of these agencies, Other well-known examples are the National Labor Relations Commission (NLRC), the Housing and Land Use Regulatory Bard (HLURB) and the Insurance Commission. Anocher remedy is the creation of special courts to hear specific cases assigned to it, We therefore have the so-called Family Courts to hea family related cases.290 ESSENTIALS OF (NTELLECTUEL PROPERTY LAW This is the philosophy behind the design of certain Regional Tral Courts as Specie Commercial Courts. Thus, not too long ago, the Supreme Court promaiigated A.M. No. 00-11-03: SC (effective December 15, 2000) designatine certain branches of the Regional Trial Courts to try and decide cases formerly cognizable by the Securities and Exchange Commissian. Subsequently, the Court promulgated A.M. No 03-03-03-SC, effective July 1, 2003, which provices in part that: "2. The designation of Intellectual Property Courts under Adininistrative Order No. 113-98 dated 2 October 1935, as amended by Admin: istrative Order No. 104-96 dated 21 October 1996 and Resolution deted 19 February 2002 in AM. No, 02-1-11-S¢, is hereby revoked However, the Regional ‘Trial Court, Branch 24, Manila is hereby designated as an additiona Special Commercial Court in the City of Ma rita.” The purpose of such designation is to stream: line the court structure for speedy disposition of cases clue to Increased court's efficiency in han. dling such cases. ‘Special IPR Courts. Title: Andre Tan, et al. v. Bausch & tomb, Inc., G.R. Nos 148420, December 15, 2005, Facts: ‘On April 8, 1997, an information for violation of paragraph 1, Article 189 of the Revised Penal Code (RPC) was filed before Branch 21, RTC, Cebu City against petitioners Andrea Tan, Clarita amas, Victor Espina and Luisa Espina of Best Buy Mart, Inc. The information read:PART VI 291 SEARCH WARRANTS AND INTELLECTUAL PROPERTY RIGHTS, “That on or about June-27, /1996 and sometime prior or subsequent thereto, in the City of Cebu, Philippines, and within the Jurisdiction of this Honotable Court, above-mentioned accused, conspiring and frutualy helping each other, did then and there willfully, unlawfully arid féloniousiy distribute and sell counterfeit RAY BAN sunglasses Bearing the. appearance and trademark of RAY BAN in the aforesaid store whereln they have ct control, supervision and management thereby Inducing the public to Believe that these goods offered by them are those of RAY BAN to the damage and prejldice of BAUSCH AND LOMB, INC, the exclusive owner and user of trademark RAY BAN on sunglasses.” i On January 21, 1998, respondent filed @ motion to transfer the case to Branch 9, RTC, Cebu City. Administrative Order No. 113-95 (A.0. No. 113-95) designated the said branch as the special court in Region VII to handle violations of intellectual property rights. On March 2, 1998, petitioners filed a motion to quash the Information ‘onthe ground that the RTC had no jurisdiction ever the offense charged against them. The penalty provided by the RPC for the crime was within the jurisdiction of the Municipal Trial Court in Cities (MTCC). On March 6, 1998, respondent filed an opposition to the motion to quash, explaining that 8P 129 had already transferred the exclusive jurisdiction to try and decide violations of intellectual property rights from the MTC and MTCC to the RTC and that the Supreme Court nad also issued Administrative Order No. 104-96 (A.O. No. 104-96) deleting and withdrawing the designation of several branches of the MTC and MTCC. as special intellectual property courts. ‘On December 22, 1998, the trial court a quo denied respondent's mation to transfer the case and granted petitioners’ motion to quash, It ruled: ‘Accused [wa]s charged for violation of Art. 189 of Revised Penal Code the penalty for which Is prision correccional in its minimum period or a fine ranging from P500.00 to P2,000.00, or both, Hence, within the jurisdiction of the metropolitan and municipal trial courts (Sec, 32[2], 8.P. Big, 129, as amended), Administrative Orders Nos. 113-95 and 104-96, cited by plaintif, cannot prevail over the express provisions of Batas Pambansa Big. 129, as amended, jurisdiction of courts being a matter of substantive law. If this Court has no jurisdiction over the case, the same is true with Branch 9 of the same court. Therefore, the motion to transfer the case to the latter should fail. WHEREFORE, premises considered, the motion to transfer is denied, while the motion to quash is granted. The case is thus dismissed. SO ORDERED.292 ESSENTIALS OF INTELLECTUAL PR 22EHTY Law The appellate court gave due course to the appeal snade by the respondent despite some procedural iapses. It set aside the trial court order and ordered the transfer of Crim, Case No. CBU-45890 to Branch 9 of the Regional Trial Court af Cebu City, and directing the public respondent to accordingly transmit the records thereof, Hence, the present petition for review. Issue Whether or not the Jurisdiction over the Court of Appeals erred in reversing the trial court ruling that the Regional Trial Court has no Jurisdiction over the offense of unfair competition under Article 189 of the Revised Penal Code. Ruling: Negative. 1. Supreme Court administrative order vesting jurisdiction to the RTC is valid. Section 5(5) of the 1987 Constitution empowers the Supreme Court to promulgate rules concerning pleading, practice and procedure in all courts. The limitations to this rule-making power are the following: the rules must: (a) provide a simplified and inexpensive procedure for the speedy disposition of cases; (b) be uniform for all courts of the same grade; and (c) not diminish, increase or modify substantive rights. As long as these limits are met, the argument used by petitioners that the ‘Supreme Court, through A.0. Nos, 113-95 and 104-96, transgressed on Congress’ sole power to legislate, cannot be sustained AO. No. 113-95 designated special intellectual property courts to promote the efficient administration of justice and to ensure the speedy disposition of intellectual property cases. A.O. No. 104-96, on the other hand, was issued pursuant to Section 23 of BP Big. 129 which transferred the jurisdiction over such crimes from the MTC and MTCC to the RTC and which furthermore gave the Supreme Court the authority to designate certain branches of the RTC to exclusively handle special cases, in the interest of the speedy and efficient administration of: justice. Accordingly, the RTC was vested with the exclusive and original jurisdiction to try and decide intellectual property cases. ‘ ‘The transfer of jurisdiction from ee MTC and MTCC to the RTC did net in any way affect the substantive tights of petitioners. The administrative ‘orders did not change the definition or scope of the crime of unfair ‘competition with which petitiongrs were charged, Both administrative orders therefore have the force and effect of law, having been validly issued by the Supreme Court in the exercise of its constitutional rule-making power, The trial court, belng 2 subordinate court, should have followed the nandate of the later A.0. 104-96 which vested jurisdiction over the Instarit case on the RTC. Thus, the appellate court correctly found that the Court a quo committed grave abuse of discretion.pag vi 203 "ARCH WARRAN TS AND INTELLECTUAL PROPERTY RIGHTS The transfer of this case to Branch 9, RTC, Cebu Clty, however, ls no longer possible. A.M. No, 03-03-03-5C consolidated ‘the intellectual property courts and commercial SEC courts in one RTC branch in 8 particular locality to streamline the court structure and to promote expediency, The RTC branch so designated will try and decide cases Involving violations of intellectual property rights, and cases formerly cognizable by the Securities and Exchange Commission. It Is now called a special commercial court. tn Region VIL, the designated special commercial court is Branch 11, RTC, Cebu City. The transfer of this cose to that court is therefore warranted Search WaRnants A search warrant is an order in writing issued in the name of the People of the Philippines, signed by a judge and directed to a peace officer, com- mangling him to search for personal property descrited therein and bring it before the court. This is essential in the praper conduct of police action commonly referred to as “raids” against counterfeit goods. The process of securing a search warrant however is not @ simple task. It is suppased to be Issued only upon compliance with strict legal requirements. In his work, Justice Oscar Herrera, @ luminary in Remedial Law wrote: “A search warrant must conform strictly to the requirements of constitutional and statutory provisions uncler which itis issued, otherwise, it 's void. The proceedings upon search warrants, thas rightly been held, must be absolutely ‘egel, for there is not a description of process known to the low, the execution of whien is more distressing to the citzen, Perhaps there |S none which incites such intense Feeling in consequence of its humiliating and degrading effect. The warrant will elways be construed strictly without, hewever, going the full length of requiring technical accuracy. & liberal con= stiuction should be given in favor cf the iadi- vidual to prevent stealthy encroachment upon, or ciradual depreciation of the rights secured oy the Constitution. No presumptions of regu: arity to be invoked in aid of the process when an officer undertakes to justify unclee it.”* ules of Cot, Ral 126, $951 snr tse Lae Va Ip 119, ay Bo Store, be (200)ESSENTIALS OF INTELLECTUA\ Requisites FoR Issuance Propas.e Cause. PROPERTY LAW A search warrant shalt not issue except upon probable cause in connection with one specific offense to be determined personally by the judge after examination under oath or affirmation of the compiainant and the witnesses he may pro duce, and particularly cescribing the place to he searched and the things to be seized which may be anywhere in the Philippires.® The requisites in the atove rule were broken down in a decided case® where the Court held that for a valid search warrant to issue, there must: (1) be probable cause; (2) which must be determined personally by the Judge himself and not by the applicant or any other person; (3) the judge must, before issuing the warrant, personally examine in the form of searching questions and answers, in writing and under oath, the complainant and any witness he may produce, on facts perscnally known to them; (1) the probable cause must be in connection with one specific offense, (5) the warrant issued must particularly describe the place to be searched and the persons or things to be seized; and (6) the sworn statements together with the affidavits submitted by witnesses must be attached to the record Probable cause means a reasonable ground for belief in the existence of facts warranting the proceedings complained of, ar an apparent staze of facts found to exist upon reasonable inqui-y which would induce a reasonably intelligent and prudent man to believe that the accused person had committed the crime.” The basis of this probeble cause is personal knowledge, In clearer terrns, it must be showin that the facts upon which the search warrant is based must be within the personal knowledge of the complainant or the witnasses he may produce. Search warrants in other viords should never be based mere on hearsay Roloc of Cnt. Rie 126, Soe 4 Prudestev Date. GR ‘See Le Dr ‘No 2870, December 14,1988, 511, Rex Book Store 20M,PART VE 295 SEARCH WARRANTS AND INTELLECTUAL PROPERTY RIGHTS Justice Herrera in his work quoted above illustrated this principle clearly by citing a case® whe-e the Supreme Court said: “Thus, the statement of the applicant thet his Furpose for applying for a search warrant was that: ‘It had been reported to me by a person vihom T consider to be reliable that there are being: kept in said premises books, documents, receipts, lists, chits and other papers used by Him in connection with his activities as money lender, charging usurious rate of interests, in volation of law,’ was held as insufficient for the Furpose of issuing a search warrant Frobablecausehowever doesnotrequire" proof beyond reasonable daubt” which is the standard required to support a judgment of conviction in @ criminal case. Thus, the deciding point as to whether a search warrant shall be issued or not s mere probability and not certainty. Finding Probable Cause “rile: Microsoft Corp. and Lotus Development Corp. v. Maxicorp, Inc, G.R. No. 140946, September 13, 2004 Fact On 25 July 1996, National Bureau of Investigation (*NBI") Agent Dominador Samiano, Jr, (*NBI Agent Samiano”) filed several applications for search warrants in the RTC against Maxicorp for alleged violation of Section 29 of PO No. 49 and Article 189 of the RPC. After conducting ® preliminary examination of the applicant and his witnesses, Judge William M, Bayhon issued Search. Warrants Nos. 96-451, 96-452, 96- 453 and 96-454, all dated 25 July 1996, against Maxicorp, Armed with the seatch warrants, NBI’agents conducted on 25 July 1996 a search of Maxicorp’s premises and selzed property fitting the cescription stated in the search warrants. alvares Cote of First Instinse, 4 Ps 38ESSENTIALS OF ante: TuAL PROP On 2 September 1996, Maxicorp filed a motion to quash the search warrants alleging that there was no probable cause for their issuance and that the warrants are in the form of "general warrants.” The RTC denied Maxicorp’s motion on 22 January 1997. The RTC also denied Maxicorp’s motion for reconsideration, The RTC found probable cause to Issue the search warrants after examining NBI Agent Samiano, John Bonedict Sacriz ("Sacriz"), and computer technician Felixberto Pante (*Pante”). The three testified on what they discovered during their respective visits to Maxicorp. NBI Agent Samiano also presented certifications from petitioners that they have not authorized Maxicorp to perform the witriessed activities using petitioners’ products. On 24 July 1997, Maxicorp filed a petition for certiorari with the Court of Appeals seeking to set aside the RTC’s order. On 23 December 1998, the Court of Appeals reversed the RTC's order denying Maxicorp’s motion te quash the search warrants. Petitioners moved for reconsideration. The Court of Appeals denied petitioners’ motion on 29 November 1999, The Court of Appeals held that NBI Agent Samiano failed to present during the preliminary examination conclusive evidence that Maxicorp produced or sold the counterfeit products. The Court of Appeals pointed out that the sales receipt NBT Agent Samiano presented as evidence that he bought the products from Maxicorp was in the name of a certain “Joel Diaz.” Hence, this petition. Issue: Whether there was probable cause to issue the search warrants. Ruling: asfirmative 1. Court of Appeals erred in reversing the RTC’S Mndings. The Court of Appeals’ reversal of the findings of the RTC centers on the fact that the two witnesses for petitioners during the preliminary examination failed to prove conclusively that they bought counterfeit software from Maxicorp. The Court of Appeals ruled that this amounted to a failure to Prove the existence of a connection between the offense charged and the place searched. The offense charged against Maxicorp is copyright infringement under Section 29 of PD No. 49 and unfair competition under Article 189 of the RPC. To support these charges, petitioners presented the testimonies of NBI Agent Samiano, computer technician Pante, and Sacriz, a civilian, ‘The offenses that petitioners charged Maxicorp contemplate several overt acts. The sale of counterfejt products is but one of these acts. Both NB1 Agent Samiano and Sacriz related to the RTC how they personally saw Maxicorp commit acts of infringement and unfair competition, During the preliminary examination, the RTC subjected the testimonies of the witnesses to the requisite examination, NBI Agent Samiano testified feePART vi SEARCH WARR/.NTS AND INTELLECTUAL PROPERTY RISHTS that he saw Maxicorp display and offér for sale counterfeit software in its Premises. He also saw how the counterfeit software were produced and packaged within Maxicorp’s premises. NBI Agent Samiano categorically stated that he was certain the products were counterfeit because Maxicorp sold them to its customers without giving the accompanying ownership manuals, license agreements and cettificates of authenticity. Sacriz testified that during his visits to Maxicorp, he witnessed several Instances when Maxicorp installed petitioners’ sofware into computers it had assembled, Sacriz also testified that he saw the sale of petitioners’ software within Maxicorp’s premises. Petitioners never authorized Maxicorp to install or sell their software. The testimonies of these two witnesses, coupled with the object and documentary evidence they presented, are sufficient to establish the existence of probable cause. From what they have witnessed, there 's reason to believe that Maxicorp engaged in copyright infringement and unfair competition to the prejudice of petitioners. Both NBT Agent Santiang and Sacriz were clear and insistent that the counterfeit software were not only displayed and sold within Maxicorp’s premises, they were also produced, packaged and in some cases, installed there. The determination of probable cause does not call for the application of rules, and standards of proof that a judlginent of conviction requires after trial on the merits. As implied by the words themselves, "probable cause” is concerned with probability, not absolute or even moral certainty. The prosecution need not present at this stage proof beyond reasonable doubt. The standards of judgment are those of a reasonably prudent man, not the exacting calibrations of a judge after a full-blown trial No taw or rule states that probable cause requires a specific kind of evidence. No formula or fixed rule for its determination exists. Probable cause is determined in the light of conditions obtaining in a given situation. Thus, it was improper for the Court of Appeals to reverse the RIC’s findings simply because the seles receipt evidencing NBI Agent ‘Samiano’s purchase of counterfeit gaods Is not In his name. 2. Sales receipt is not the only proof. For purposes of determining probable cause, the sales receipt is not the only proof that the sale of petitioners’ software occurred. During the search warrant application proceedings, NBI Agent Samiano presented to the judge the computer unit that he purchased from Maxicorp, in which computer unit Maxicorp had pre-installed petitioners’ software. Sacriz, who was present when NBI Agent Samlano purchased the computer unit, affirmed that NBI Agent Samiano purchased the computer unit. Pante, the computer technician, demonstrated to the judge the presence of petitioners’ software on the same computer unit. There was @ comparison between petitioners’ genuine software and Maxicorp’s software pre-installed in the computer Unit that NBI Agent Sambiano purchased. Even if we disregard the sales receipt issued in the name of “Joel Diaz," which petitioners explained was the alias NBI Agent Samiano used in the operation, there still remains more than sufficient evidence to establish probable cause for the Issuance of the search warrants,298 ESSENTIALS OF ITITELLECTUAL PROPERTY LAW 3. Copyright infringement and unfair competition are not limited to the act of selling counterfeit: goods. This also applies to the Court of Appeals’ ruling on Sacriz’s testimony. The fact that Sacriz did not actually purchase counterfeit software from Maxicorp does not eliminate the existence. of probable cause. Copyright infringement and. unfair ‘competition are not limited to the act of selling counterfeit goods. They cover a whole range of acts, fram copying, assembling, packaging to marketing, including the mere offering for sale of the counterfeit goods. ‘The clear and firm testimonies of petitioners’ witnesses on such other acts stand untarnished. The Constitution and the Rules of Court only require that the judge examine personally and thoroughly the applicant for the warrant and his witnesses to determine probable cause. The RTC complied adequately with the requirement of the Constitution and the Rules of Court. 4. Findings of judge deserve great weight. Probable cause is dependent largely on the opinion and findings of the judge who conducted the examination and who had the opportunity ‘to question the applicant and his witnesses, For this reason, the findings of the judge deserve ‘great weight. The reviewing court should overturn such findings only upon proof that the judge disregarded the facts before him or ignored the clear dictates of reason. Nothing in the records of the preliminary examination proceedings reveal any impropriety on the part of the judge in this case. As one can readily see, here the judge examined ‘thoroughly the applicant and his witnesses. To demand a higher degree of proof is unnecessary and untimely. The prosecution would be placed ina compromising situation if it were required to present all its evidence at such preliminary stage. Proof beyond reasonable doubt is best left for trial. Serre) No Persunal Knowledge Title: Sony Music Entertainment (Phils. et al. v. Honorable Judge Dolores L. Espanol, G.R. No. 156804, March 14, 2005 Facts: In a criminal complaint filed with the Department of Justice (D0), the Videogram Regulatory Board (VRB) charged herein private respondents James Uy, David Chung, Elena Lim and another officer of respondent Solid Laguna Corporation (SLC) with violation of Presidential Decree (PD) No. 1987. 8 As alleged in the complaint, do¢keted aé 1.8. No,’ 2000-1576, the four (4) were engaged in the replication, reproduction, and distribution ofPART VI SEARCH WAFRUINTS AND INTELLECTUAL PROPERTY RIGHTS videograms without license and authority from VRB, On account of this, and petitioners’ own complaints for copyright infringement, the National Bureau of Investigation (NBI), through Agent Ferdinand M. Lavin, apolied on September 18, 2000, with the Regional Trial Court at Dasmarifias, Cavite, Branch 80, presided by the respondent judge, for the issuance of search warrants against private respondents David Chung, James Uy, John and Jane Does, doing business under the name and style "Media Group” inside the factory and production facility of SLC at Solid corner Camado Sts., Laguna Internationa) Industrial Park, Binian, Laguna. During the proceedings on the application, Agent Lavin presented, as witnesses, Rodolfo Pedralvez, 4 deputized agent of VRB, and Rene C. Baltazar, an investigator retained by the law firm R,V, Domningo & Associates, petitioners’ attorney-in-fact. In thelr sworn’ statements, the three stated that petitioners sought their assistance, complaining ‘about the manufacture, sale and distribution of various titles of compact discs (CDs) in violation of petitioners’ right as copyright owners; that acting on the complaint, Agent Lavin and the witnesses conducted an investigation, in the course of which unnamed persons informed them that allegedly infringing or pirated discs were being manufactured somewhere in an industrial park in Laguna; that in the process of their operation, they were able to entet, accompanied by another unnamed ‘source, the premises of SLC and to see various replicating equipment and stacks of CDs; and that they were told by their anonymous source that the discs were being manufactured in the same premises. They also testified that private respondents were (1) engaged in the reprnduction or replication of audio and video compacts discs without the requisite authorization from VRB, in violation of Section 6 of PD No, 1987, presenting a VRB certification ta such effect; and (2) per petitioner: certification and a fisting of Sony music titles, infringing on petitioners’ copyrights in violation of Section 208 of Republic Act (RA) No, 8293 otherwise known as Intellectual Property Cade. On the basis of the forecioing sworn statements, the respondent judge Issued Search Warrant No, 219-00 for violation of Section 298 of R.A No. 8293 and Search Warrant No. 220-00 for violation of Section 6 oF PD No. 1987, The following day, elements of the Philippine National Police Criminal Investigation and Detection Group, led by PO2 Reggie Comandante, enforced both watrants and. brought the seized items to a private warehouse of Carepak Moving and Storage at 1234 Villonco Read, Sucat, Parafiaque City and their custody turned aver to VRB.[9} An inventory of saized items, as well as a “Return ul Search Warrant’ were latur fled with the respondent cout. Meanwhile, the respondents in ).S. No. 2000-1576 belabored to prove before the DO1 Prosecutorial Service that, since 1998 and up ta the time of the search, they were licensed by VRE to operate as replicator and duplicator of videograms. On the stated finding that “respondents can not .. be considered an unauthorized reproducers of videograras,” being “licensed to engage in300 ESSENTIALS OF INTELLECTUAL P' reproduction in videograms under SLC in which they are the officers and/or or officials,” the DOJ, viava fesolution dated January 15, 2001, dismissed VRB's complaint in 1.5, No. 2000-1576. On February 6, 2001, private respondents, armed with the DOJ resolution adverted to, moved to quash the search warrants thus issued. VRB interposed an opposition for the feabon that the DOJ has yet to resolve the motion for reconsideration it filed in 1.S. No, 2000-1576. Eventually, the DOJ denied VRB's.motion for reconsideration, prompting private respondents to mave anew for the quashal of the search warrants. In Its supplement to motion, private respondents attached copies of SLC's license as videogram duplicator and replicator. In an order dated October 30, 2001, the respondent judge, citing the January 15, 2001 DO} resolution in 1.8. No. 2000-1576, granted private respondents’ motion to quash, as supplemented, dispositively stating: “Nonetheless, such being the case, the aforesaid Search Warrants. are QUASHED” Petitioners forthwith sought clarification on whether or not the quashal order referred to both search warrants or to Search Warrant No. 220-00, alone, since it was the latter that was based on the charge of violation of PO No. 1987. The respondent judge, in a modificatory order dated January 29, 2002, clarified that her previous order quashed only Search Warrant No, 220-00. Meanwhile, or on November 22, 2001, petitioners filed with the DO] an affidavit-complaint, docketed thereat as J.S. No, 2001-1158, charging Individual private respondents with copyright infringement in violation of Sections 172 and 208 in relation to other provisions of RA No. 8293. Attached to the affidavit-complaint were certain documents and records seized from SLC's premises, such as production and delivery records, Following their receipt of DO)-issued subpoenas to file counter-affidavits, private respondents moved, in the search warrant case, that they be allowed to examine the seized items to enable them to intelligentiy prepare their defense. On January 30, 2002, respondent judge issued an orcier allowing the desired examination, provided it is made under the supervision of the court's sheriff and in the “presence of the applicant of Search Warrant No. 219-00." On February 8, 2002, the pattiés, represented by their counsels, returned to the Carepak warehouse. An NBI agent representing Agent Lavin appeared. The examination, however, did not push through on account of petitioners’ counse) insistence on Agent Lavin’s physical presence. Private respondents. wére. able to. make an examination ‘on the following scheduled setting, February 15,2002, albeit it was limited, as the, minutes of the inspection discloses, to inspecting only ‘one (1} box containing 35 assorted CDs, testing stampers, diskettes, 2 calendar, organizers and some folders and documents: The minutes also contained an entry stating — “Othel items/machines were not examined because they cannot be identifi as they are:nbt properly segregatedPART vi 301 SEAKCH WARRANTS AND INTELLECTUAL PROZERTY RIGHTS from other items/machines in the warehouse. The parties agreed to ‘schedule another examination on (to be agreed by the parties) after the ltems/machines subject of the examination shall have been seg’egated from the other items/machines by Carepak Moving and Storage, Ine. During the preliminary investigation conducted on February 26, 2002 in LS, No. 2001-1158, however, petitioners’ counsel abjected to any further examination, claiming that such exercise was a mere subterfuge to delay proceedings, On April 11, 2002, individual private respondents, through counsel, filed “Motion Ta Quash Search Warrant (Ani Yo Release Seized Properties)” grounded on lack of probable cause to justify issuance of search warrant, it being inter alia alleged that the applicant and his witnesses lacked the requisite personal knowledge to justify the valid issuance oF @ search warrant; that the warrant did not sufficiently dascribe the items to be seized; and that the warrant was improperly enforced. To this motion to quash, petitioners interposed an opposition dated May 7, 2002 predicated on four (4) grounds. On June 26, 2002, respondent SLC filed a Manifestation jnining ics co-respondents in, and adopting, their motion to quash. On June 25, 2002, the respondent judge issued the herein first assailed order quashing Search Warrant No. 219-00 principally on the ground ‘that the integrity of the seized items as evidence had been compromised, commingled as they were with other articles. Wrote the respondent judge: “Based on the report submitted, it appears that on February 45, 2002, an examination was actually conducted, Unfortunately, the alleged seized items were commingled with and not segregated from thousands of other items stored in the warehouse. Only one box ... were (sic) examined in the presence of both parties with the sheriff, such that another date was set ... On February 22, 2002, during the hearing before: the Department of Justice (103), petitioners’ counsel} Atty. Arevalo manifested their abjection to the further examtinalion on the alleged ground that all of the Hams subject of th: DO} complaint have been exansined, “analyzing the report and the incidents relative thereto, it shows that the items subject of the questioned Search Warrant were commingled with other items in the warehouse of Carepak resulting In the failure to identify the machines and other items subject of this Search Warrant, while the other items enumerated In the said Inventory of Seized Items and Certification ot Legality, Ordarliness and Regularity in the Execution and enforcement of Search Warrants were not examined, hence, the charge imputed against the respondents could not be astablished as the evidence to show such violation falls to determine the culpability of said respondents, thus, violating their constitutional rights.” Excepting, petitioners moved for reconsideration, arguing on the main that the quashal order was erroneously based on a ground outside nd302 SSENTIALS OF IBLTELLECTUAL PRO 'ERTY LAW the purview of a motion to quash. To this motion, private respondents interposed an opposition, against which petitioners countered with a reply. ‘On January 6, 2003, respondent judge Issued the second assailed order denying petitioners’ motion for reconsideration on the strength of the following premises: Careful scrutiny of the recerds of the case reveals that the application of the above-entiiled case stemmed from the application for Search Warrant alleging that the respondent was hol licensed to duplicate or replicate CDs and VCDs. The Court was misied when the applicants declared that Solid Laguna Corporation (SLC) is not licensed to engage in replicating/ duplicating CDs and VCDs, when In truth and in fact, SLC was still a holder of a valid and existing VRB license, Considering the fact that respandent was duly licensed which facts (sic) was not laid bare to this Court when the application for writ was filed by the private complainant through the National Bureau of Investigation, this Court hereby recalls and quashes the above writ. “Lastly, taking into account that respondents were licensed to ‘engage in replicating/duplicating CDs and VCDs, the Issuance of search warrant was of no force and effect as there was absence of probable cause to justify said issuance, x x x.” Hence, petitioners’ present recourse. Issue: Whether Search Warrant No. 219-00 was properly quashed. Ruling: Affirmative 1. Personal knowledge of the applicant and his witnesses was lacking. A core requisite before a warrant Shall validly issue is the existence of a probable cause, meaning “the existence of such facts.and circumstances which would lead a reasonably discreet and prudent man to believe that an offense has been commited and that the objects sought in connection with the offense are in the place to be searched." ‘And when the law speaks of facts, the reference is to facts, data or information personally known to the applicant and the witnesses he may present. Absent the element of personal knowledge by the applicant or his witnesses of the facts upon which the Issuance of a search warrant may be justified, the warrant is deemed not based on probable cause and is a nullity, its Issuance being, in legal contemplation, arbitrary, as held by us in Columbia Pictures, Inc. vs. Court of Appeals. Testimony based on what is supposedly told to a witness, being patent hearsay and, as rule, of no evidentiary weight, or probative value, whether objected to oF not, would, alone, not suffice under the law an the existence of probable cause. iPART VI SEARCH WARRANTS AND INTELLECTUAL PROPERTY RIGHTS - The oi E id not meet th eres Pe peretacteaececcesh -erein ‘questing é, let mee diseretion. Indicating ersona witnesses, cs Fea 3 queried during the application fenaneg oe paigulden compact dlecs Were infringing cont fr \ leged:ubnamed sources ans who: were Bag ce ath as The following iviosses ‘suggest Es Answer: We then went to the usta Park, . We then verified frdmr an Informantethat David Chung, James Uy... under:the name: and: style Meclte foe ip were’ the ones replicating the Infringing CDs, Answer! T have’ with e unauthorized coptes. I also have with me the Complaint-Affidavit of Sony Music and 1FPL that certified that these are infringing copies, as well asthe title list of Sony Music wherein some of the CDs purchased are indicated. = =: fete z 18. Question: What did’ you sowie address? Angwer: We saw that they had in: he several infringing, pirated and unauthorized CDs, They elso had ideagrams without VRB labels, aside from artworks and labels, John Doe gave us a "Wholesome" CO while Jane Doe gave us "Keriny Rogers Videoke" and “Engelbert Humperdinck Videoke" which the informant told us! were being reproduced in that facility, The Informant further showed.us the rooms where the replicating and/or stamping machine was located, 19. Question: How did you determing that the CDs you purchased ere counterfeit, pirated or unauthorized? Answer: The AXtomeyrinsFect of Golly Music and IFPI certified In his Complaint-Affidavit that they are. sapere a copies, I also have with ime a listing of Sony Mudie sme-of'the CDs't purchased ere in that list. 30334 ESSENTIALS OF INTELLECTUAL PROPERTY LAW C. Deposition of Pedralvez 27. Question: What proof do you, have’ they are producing infringing materials? Answer: We were given some samples by John Doe and Jane Doe. These are Kenny Rogers Videoke, Engelbert Humperdinck Videoke, and Andrew E, Wholesome CD. The informant told us that the sald samples were being reproduced in the facility. 2 i 28. Question: How do you know that al of these VCDs you purchased or got are indeed unauthorized? ha Answer: The VRB has certified that thy are unauthorized copies. Agent Lavin and his witnesses, judging from their above quoted answers, had no personal knowledge that the digcs they saiw, purchased or received were, in fact, pirated or infringing on petitioners’ copyrights. It is not enough that the applicant and his witnesses testify that they saw stacks of several allegedly infringing plated and unauthorized cece in the subject facility, The more decisive’ consideration determinative of whether or not a prabable cause obtains to justify the issuance of a search warrant is that they had persdifa} knowledge that the discs were actually infringing, pirated or unauthorized copies. 3. Misrepresentation on the part of the applicant and his witnesses had been established in this case. It canfiot be overemphasized that not one of the applicant nor the witnesses testified seeing the pirated discs being manufactured at SLC’s premises. What they stated instead was that they were given copies of "Kenny Rogers ,* “Engelbert Humperdinck Videoke” and "Andrew E. Wholesoméy local researchers or adapted locally froin foreign sources including inventions, any income deriv2d from these technologies shall be exempted from all kinds of taxes during the first ten (10) yeers from the date of the first sale, subject to the rules and regulations of the Department of Finance Provided, That this tax exemption privilege per- taining to invention shall be extended to the legal heir or assignee upon the death of the invento~an Assistance Funo Loan Assistance PART VIL 321 ATED LAWS The technologies, their manufacture or sale, shell also be exempt from payment of license, permit fees, customs duties and charges on imparts.9 The law established the Invention Development Assistance Fund from the operations of the Tech- nology Application and Promotion Institute in the amount of at least twelve percent (12%) of the annual operations fund of the Institute and from donations, bequests, and other sources, public, private or domestic or foreign, for assisting poten- tial or actual inventors in the initial experiments anc prototype development and other inventor- development related activities of invention or in- Novation. The Fund shall be administered by the Institute and in the performance of the advisory bozrd of inventors from the public and private sector. All donations to the Assistance Fund shall be “ax =xempt or tax deductible.'* Loan assistance for the commercial production of an invention, either locally or for export and duly certified by the Filipino Inventors Society and the Scr2ening Committee created, shall be extended by government banks, provided, that said inven- tior meets the criteria set by law. No limit to the amount of loan applied for shall be granted to the inventor who cari provide fifteen per centum (15%) equity of che loan applied for, provided, that acceptable collaterals can be presented to fully secure his loar However, when there is existing foreign irrevocable letter of credit issued in favor of the inventor or the duly registered company producing his invention for export, all government banks, after verification of the commercial production and availabilizy of such products covered by the letter of credit, shall grant up to eighty pe~ centum (80%) of the peso value of the foreign letter of322 ESSENTIALS OF INTEL-ECTUAL PFOPERTY Lavi Act ro Resuuate ‘Markeo ConTaINens credit: Provided, however, That the inventor of the manufacturing company assigns the letter of credit to the bank where the loan is arranged and whatever goods that the inventor or is company will produce, or warehouse receipts, if any, to show evidence that the goods have been partially produced. The government is also mandated by law to provide assistance to inventorsin orderto facilitate the granting of loans or financial assistance by any government bank. Republic Act No. 623,” as amended, is entitled “An Act to Regulate tie Use of Duly Stamped or Marked Bottles, Boxes, Casks, Kegs, Barrels, and Other Similar Containers.” It declared as unlawful for any person, without the written consent of the manufacturer, bottler or seller who has successfully registered the marks of ownership in accordance with law, to fill such bottles, boxes, kegs, barrels, or other similar containers so marked or stamped, for the purpose of sale, or to sell, dispose of, buy, or traffic in, or wantonly destroy the same, whether filled or rot, or to use the same for drinking vessels or glass or for any other purpose than that registered by the manufacturer, bottler or seller. Any violation of this section shall be punished by a fine or sot more than one hundred pesos or imprisonment of not more than thirty dys or both."® The use by any person other than the regis tered manufacturer, bottler, or sefler, without writ: ten permission of the latter, of any such bottle, cask, barrel, keg, box or other similar container, or the possession thereof by any junk dealer or dealer in casks, barrals, kegs, boxes, or other similar containers, the same being duly marked or stamped and registered as herein provided, nen. set Rep. Net ASS aproced ot Sane 5, 1981 Rep Act 62. Ses 2 i i ] jSo.o Conratnens. Use ror Narive Pronucts Act Penauzing FRAUDULENT AbverTisine Rep. Act No, 623, 60,3 PART VIE 323 RELATED LAWS: shall be prima facie evidence that suct use, or possession is unlawful.” No action shall be brought under law against any person to whom the registered manufacturer, bottler, or seller, has transferred by way cf sale, any of the containers herein referred to, hut the sale of the beverage contained in the said con- tainers shall not include the sale of the containers unless specifically so provided. The prevision of the law shall not he interpreted as 2rohibiting the use of bottles as containers for “sisi,” “bagoong,” “patis,” and smilar native proviucts. Act No. 3740 entitled in full "An Act to Penatize Fraudulent Advertising, Mislabeling or Mistrand- ing of Any Product, Stock, Bond, Etc.” declared as unlawful for any person, firm or corporation, either 2s principal or agent, to display, sell, ter, or exchange, or to offer to expose for clisplay, sale, barter, or exchange in the Philippines; or to possess with intent to sell; or to cause 20 be sem:, carried, or brought for display, sale, barter, ‘or exchange from any foreign country into the Phil ppines, or from the Phil-ppines into any for @ign country, any article which is falsely packed, labeled, marked, or branded, or is packed, la~ beled, marked or branded in such a way as (0 mis epresent the character, amount value, con- tents, croperties, or condition of the articie con- tained or of the materials of which the article is composed; or any article which is acconiganied by advertising matter which misrepresents the cha acter, amount, value, contents, properties. or concition of the article advertised, or of the materials of which it is composed whether or n the article or the container thereof 15 mislabeled, misrepresented, or misbranced324 ESSENTIALS OF WTELLECTUAL PC PERTY LAW : The possession of any of the article herein mentioned in quantities in excess of the rensanat le heeds of the possessor shall constitute prima facie evidence of the possession with intent to i | Omer Acts Other provisions of the law are as follows: i Punrsiien "Sec. 2. It stall 1e unlawful for any per 1 son, flim, of corparation, either as principal or i agent, to insert or ca.1se to be inserted in any ! Newspaper, book or perindical printed in the f Philippines any advertising which misrepre sents the character, value, properties or, con- dition of the article ac vertised or of the materi als of which it 6 ccinvased. "Sec. 3. It shall »e Lnlaviful for any per- son, fim oF corporat on, either as principal or agent, in any handbill, billboard, sign, pam- het, circular, prujec-ed lantern slides, or any other form of advertising whatsoever printed, displayed, of circulared nm the Philippines to misrepresent the character, value, properties ‘or condition of any article offered or exposed for sale, barter, or exchange or of the materl- : als of which said article is composed, See. 4, Tt stall be unlawful for any per- son, firm or corporat on, either as principal or agent, in aay prospectus, handlill, billboard, sign, pamphlet, cir-ular, projected fantern slides, or any other form of advertising vhat- soever printed, dispiyed, or circulated in the Philippines, to misresresent the character or value of any stocks, bonds, or shares of any i firm or corporation oF of the properties ar pro- i spectus of any firm or corporation. “Sec. 5, It will be unlawful for any person, or corporation, whether as principal or agent, to use the mails of te Philippines for the cir= culation of any edvertisiag matter prohibited by this Act; but nothing in this Act shali be interpreted as prolibiting the sale ar delivery { through the mails in the Philippines of standard books, magazines or periodicals, published in the United States cr fereign countries, but all the provisions nf this Act shall apply to all Act Sa FN See 3PART VIL 325 RELATED LAWS classes of publications issued by persons, firms cf corporations, either as principal or agent, tor the advertisement or the pramotion of the sale of their own merchandise, stacks, ponds, 4 shares, etc Penacty Proviveossny 2erson who shall violate any provisions of the 1 law shall, wpon conviction, be penalized by a fine of not less than two hundred pesos (P200.00) and not more than five thousand pesos (P5,000) cr by imprisonment for not less than one month nor in excess of six mont, or both such fine and imprisonment in the discretion of the Court. sctNa BHR. SoeCASE INDEX 246 Corporatior v. Reynaldo B. Daway, GR. No. 157216, November 20, 2003.00.00. : 165 A Amigo Manufacturing, Inc. v. Cluett Peabody Co., Inc, G.R. No. 139300, March 14, 2001 eevee 2S ‘Ana Ang v. Toritio Teadoro, G.R. No. L-48226, December 14, 1942.0... ae sessetieees 133, 164, 225, Andre Tan v. Bausch & Lomb, Inc., G.R. No. 148420, December 15, 2008....essi.. 7 290) Arce Sons and Company v. Selecta Biscuit Company, GR, No, 14761, January 28, 1961. eeveeeee 124 Aronson v. Quick Point Pencil Com,, 440 US 257, 762 (1979)....... 53 Asia Brewery, Inc. v. Court of Appeals and San. ‘Mawel Corp, G.R. No. 193543, July 5, 1993 sespetnseeseeeees 149, AFL Baker v. Selden, 101 US 841 (1879)... Bass Buster, Inc v. Gapen Mig, Co., 420 F. Supp. '44, 156, 191 USPQ 315, 325...... Bonito Boats, inc Thunder Craft Boats, Inc, 48> us 141 (1989), c Converse Rubber Corp. v. Jacinto Rubber & Plastics Co, G.R. Nos. L-27425 and 30505, April 28, 1980 > Del Monte Corporation v. Court of Appeals, G.R. No, L-78325, January 25, 1990 aur 123, 149, 151, 218 Elidad Kho v. Court of Appeals, G.R. No. 115758, March 19, 2002 «... Emerald Garment Mfg. Corp. v. Court of Appeals, 251 SCRA 600 (1995)... : Etepha v. Director of Patemts, 16 SCRA 495, 437 (1965) sess 126, 150 G 10, 24, 380CASE INDEX 38 Gabriel v. Perez, 55 SCRA 496, 417 (1974) vs. 126 Graham, et al. v. John Deer Ca, of Kansas City, et al, 383 US 1 (1966) 59. 4 Habana v, Robles, G.R. No, 131522, July 19, 1999.00... 2245, 246 a Jessie G. Ching v. William M. Salinas, et al., G.R. No. 161295, Jue 29, 2005 estes snes verve : a Joaquin v. Drilon, G.R. No, 08946, January 28, 1999 229, 234 K Fewanee Oil Co. v. Bircon Corp., 416 US 470 (1994) ....ssssrecsiene 53 I La Chemise, S.A. v, Oscar Hernandez, G.R. No. L-65659, May 21, 1984. 7 : se B29 Levi Strauss & Co. v. Clinton Appareile, Inc., G.R. No. 138800, September 20, 2005. edited ‘ 207 Lyceum of the Philippines, Inc. v. Court of Appeals, GR. No. 101897, March , 1993 169 4“ Henly Sportswear Mfg, Inc. v. Dadodette Enterprises and/or Hermes Sports Cenver, G.R. No, 165306, September 20, 2008... 282 McDonald's Corp. v. Maclay Fastfood Corp., GR. No. 166115, February 2, 2007. . 144 McDonald's Corporation v. LC. Big Mak Burger, Inc., GR. No, 143993, August 18, 2004 138, 161, 214 Melbarose R. Sasot, et al. v. People of the Philippines, G.R. No. 14193, June 29, 2008... 7 Microsoft Corp. and Lotus Development Corp. v. Maxicorp, Inc, GR, No, 140946, September 13, 2004... Mighty Corporation v. € & 1 Sallo Winery, GR. No, 154342, July 14, 2004 . 3, 164, 216 Mirpuri v. Court of Appeals, G.R, No. 114505, November 19, 1999... 126 Mishawaka Mfg. Co. v. Krestie Co., 316 US 203, 53 USPQ 323 (1942)125 N NBL-Micraseft Corp, v Judy Mang, G.R, No, 147043, June 24, 2005... ieee ie 255382 ESSENTIALS OF INTELLECTUAL. PROPERTY LAW Pear! & Dean (Phil.), Inc. v. Shoemart, G.R. No. 148222, August 18, 2003 ...-.......-. 8, 11, 51, 52, 53, 216, 225 People v. Christopher Choi, G.R. No. 152950, August 3, 2006 soc. . 305, 206 People v. Delos Reyes, G.R. No, 140657, October 25, 2004 . Phil. Refining Co., Inc. v. Ng Sam, 115 3CRA 472, 476-477 (1982)... a a sescsesees 126 Philip Morris, Inc. v. Court of Appeals, 95 224 SCRA 576, 624 (1993). seers 126 Prudente v. Dayrit, G.R, No. 82870, December 14, 1939. os 234 R Reynolds & Reynolds Co. v. Norick, et al., 114 F 24, 27B cscs 224 8 Samson v. Daway, G.R. NOS. 160054-55, July 21, 2004 vessssessnssrenetenee 287 Shangri-la International Hotel v. Court nf Appeals G.R. Nos. 111580 & 114802, June 21, 2001 seen 299 Shell Co of the Phllppines, id. Ingular Petroleum Refining Co. Ltd., 120 Phil. 434, 439 (1964)..seccccssersve 207 Shell Co. v. Insular Petroleum, 11 SCRE 436... 7 218 ‘Smith Kline Beckman Corp. v. Court of Appeals and Tryco Pharma, G.R. No. 126627, August 14, 2003.........sv0 89 Societe Des Produits Nestlé v. Court of Appeals, G.R. No. 112012, April 4, 2001 .. 7 Sony Music Entertainment (Phils.) v. Dolores |. Es pafial, 124, 125, 155, 167 G.R. No. 156804, March 14, 2005 7 298, Sterling Products, International, Inc. v. Farbenfab ken Bayer Aktiengesselischaft, 27 SCRA 1214, 1227 {1969)....sesseccreuon 149) w Willlam C. Yao v. People of the Philippines, GAR. No. 168306, July 19, 2007 vo ssseseeActs Optical Media Act of 2003 (R A. 9239), 315 purpose, 315 criminal liabilities and penalties under the law, 316 Inventors and Invention Incentives Act (R.A, 7459), 318 Act to Regulate Marked Containers (R.A. 623), 322 provision on sold containers and native products, 323, Act Penalizing Fraudulent Advertising (R.A, 3740), 323 other acts punishable, 324 penalty, 325 ‘Administrative, Financial an3 Human Resource Development Service Bureau functions, 46 Agrave, Celedonia, 34 Audiovisual Work or Fixation, 268 ‘Author (of a Work) rights, 264) terms of rights, 266 presumption of authorship, 278 Broadcasting Organization, 268 related acts, 271 term of rights, 274 Broadcasting, 268 applicable broadcasts for protection, 280 Bureau of Customs, 213 Bureau of Documentation, Information and Technology Transfer functions, 44 Jurisdiction over disputes on technology transfer, 101 Bureau of Legal Affairs functions, 42 Jurisdiction over licensing of patents, 102 Bureau of Patents functions, 42 bureau's ex parte proceedings, 73 value of adverse actions in proceedings, 73 Bureau of Patents, Trademars and Techrology Transfer (BPTTT) creation, 36 abolitian, 47 Bureau of Trademarks functions, 42 3803ea CSSENTIALS OF INTELLECTUAL PROPERTY LAW Certificate of feyistration (Mark or Trade-name) 13s an evider ce of validity, 15, 189 Collective Marc, 124 Collective Work, 255 Colorabie Imitat on, 150 Communication to the Public, 243 Communication to the Public of a Performance or i Sound Recording, 269 Computer Programs (Software), 255 rules an reproduction of pragrams, 256 Computer, 255 Confusion of Business, 149 Confusion af Genes, 149 Copyright defined, 224 distinctions between patent (letters) and copy-ight, 21 scope of the term, 10, 18, 229 related acts, 224 distinction wits patents, 225 related works, 229 unprotected works, 233 in relation te moral rights, 264 terms, 272 presumptians, 277 works for protection, 279 deposit and notice of copyright, 281 Copyright in a Work of Architecture scope of the term, 252 Copyright Infrngement defined, 252, 260 unrelated acts (acts not constituting), 241 in amount oF copied work, 245 liabilities ef a 2erson involved, 275, penalties, 2°6 rule on possession of infringed copy, 276 evidence of affidavit, 277 Copyright Ownersrip 'n course of employment, 238 In) Case of corrmissioned work, 238 of audiovisual work and letters, 239 governing ries, 237 rules on assignment/transfer of ownership, 233-240 Cristobal Jr, Adrian S., 37 Decompilation, 244 Derivative Works, 231 works protected by the law, 232 Diractor General (Intellectual Property Office)INDEX 388 functions and responsibilities, 39 terms and qualifications, 39-40 Jurisdictions, 41 appeal rules on decisions, 41 on exploitation of patented inventions, 102 Dominancy Test, 141, 150 considerations under doriina cy test, 146 Fair Use, 243 determining factors, 244 Fixation, 268 Francisco, Emma C,, 37 Generic Term, 160 Government on usage of patented inventions, 93-94 copyright ownership, 237 Graham Factors, 59 a Holistic Test, 141 Industrial Applicability, 59 Industrial Design, 113 conditions of protection, 113 pplication contents, 114 rule on several designs Ir an application, 114 application examination and registration, 115 terms and validity, 116 Provisions applicable, 11:7 cancellation of registration, 120 Integrated Circuit, 113 intellectual Property Code (R A. £293) history, 3 non-retroactivity, 3 state policies, 4 as a tool for creative activity, 5 principles applicable, 30 Fecipracity of foreign laws, 20 rules on appeal, 30 Intellectual Property Office (170) creation, 33386 ESSENTIALS OF INTELLECTUAL PROPERTY LAW history, 34 organization, 37 functions, 38 exemption from Salary Standardization Law, 47 fees, 47 on recording of patents, 109 of trademarks, 196 as an example of remedy to congested courtrooms, 289 Intellectual Property Rights scope, 10 laws enacted to improve IPR system, 34 Intellectual Property Search Report, 68 Inter-Agency Committee on Intellectual Property Fights (JAC-IPR), 36 Internet, 129 Invention, 319 rewards for inventions, 319 Inventive Step, 38 Inventor, 319 tax incentives and exemptions, 320 assistance and loan funds, 321 Jurisdiction, 287 Layout-Design, 113 protection conditions, 113 contents of appication, 114 application examination and registration, )15 terms and validity, 115 other provis.ons applicable, 118, rights and limitations of the owner, L18-119 cancellation of registration, 120 Lyceum, 170 =m Management in'o-mation Services and EDP Burea, 45 Mark, 124 -N- Nice Classification ‘goods, 177 business and services, 181 Non-Patentable Inventions, 60 Novelty, 54 -o- Optical Media, 335INDEX 387 =Ppo Passing off (in Unfair Competition), 215, Patent Application rules on filing of application, 64 prohibitions on application, 66 formality requirements, 67 requirement of novelty ard prior art, 68 Publication of application, 69 granted rights after pubiication, 70 confidentiality, 70 acknowledgement of observations concerning patentability, 72 request for substantive examination, 73 amendment of applicatior , 74 grant of patent, 75 appeal on refusal of application, 75 conversion to utility model application, 112 Patent Infringement, 71 remedies for patent infringement, 83 civil actions of patentee, 71, 84 infringement action by foreign national, 86 criminal liabilities of infringer, 88 Patent, 52 tight to a patent, 62, 83 limitations, 92 publication of patent gras patent terms, 76 annual fees, 76 surrender of patent, 77 changes on patent, 78 cancellation of patent, 79-81 assignment of patent righ=s, 109 Patent right of joint-owners, 110 Patent (Law) Purpose, 20, 53 Tequirements/elements of patentability, 54 Filing date requisites, 55 application first applied in foreign country, 56 non-prefudicial disclosures, 57 rst-to-file cule, 62 rules on inventions pursuent to commission or employment, 63 patent grant procedures, 1 remedies, 81 prohibition on parallel application, 112 Patent System goal, 19 Importance of in-depth investigation, 20 creation of patent system review committee, 34 Patentable Inventions, 10, 18, 53 Patentee sights, 19 vil actions against infringement, 71, 8¢388 ESSENTIALS OF INTELLECTUAL POPERTY LAW Performers, 267 exclusive rghts, 269 terms of rights, 270, 274 remuneration for subsequent publications, 270 limitations of rights, 272 applicable aerformers for protection, 260 Person skilled in art, 58 Pilsen, 172 Plagiarism, 252 difference from copyright infringement, 252 Prior Art classifications, 54 Prior User, 93 Probable Cause, 294 determination, 297, 304 role of judye’s opinion and findings, 298 Producer of a Sound Recording, 268, rights, 271 limitations, 272 term of rignts, 274 Publication of a Fixed Performance or a Sound Recording, 268 Published Works, 241 Publisher, 232 Reproduction, 242 of published works, 253 of libraries, 254 of computer programs, 255 Sandiego, Cesar C.,, 36 Sapalo, Ignacio S., 36 Search Warrant, 293 requisites for issuance, 294 provision on jurisdiction of issuance, 303 Secondary meaning, 23 Sound Recording, 268 valid recordings for protection, 280 Special Commercial Courts designation and purpose, 290 Special Compulsory License for importation of patented drugs and medicines, 103, filing of petition of compulsory license, 104 Contents of petition, 106 requirement to obtain license, 104 except ons to the requirement, 105 conditions of granting license to "second patent”, 106, terms and conditions, 107 cancellatio’ of license, 108 licensee's exemption from infringement lability, 108IND=X 389 Suggestive Term, 160 Supreme Court limitation to rule-making power, 292 =r Atty. Tiburcio S, Evalle, 34 Totality Rule, 158 Trade Name (Business Identhier), 211 prohibited trade names, 212 Provision on protection without registration, 212 ‘Trademark Dilution, 206 conditions for dilution protection, 211 ‘Trademark Examiner jurisdiction over trader Traviemark Infringement confusions of infringement, 149 evidence of proof of actu! confusion, 161 remedies over infringement, 201 damages and injunction, 202 destruction of infringemet ‘aterials, 203, action by a foreign natior al, 204 in paid advertisement, 2¢5 as a form of unfair competition, 215 Traciemark Law scope of protection, 15 significant innovations in the aw, 123 elementary postulate on the law, 159 Traclemark Registration Application application contents, 173 valid applicants, 175, other requisites (color, drawing and reproduction), 176 acceptable signatures, 18 regulations on divisional applications, 182 rule on disclaimers, 183 filing of declaration of actual use, 18:3 requirements of filing dat=, 184 application of priority rigkt, 186 procedures of examining sppl.cation, 187 reviving and opposing of application, 188 Trademark, 10, 18, 124 functions and nature, 12£-128 significance of acquiring right to mark, 125 as an identification of ownership/origin, 126 marks cannot be registered, 131 axtension of trademark rights, 141 sancellation/amendment uf registered! mark, 190 ‘grounds for cancellation, 198 duration of registered tractemarks, 161 renewal of marks, 193 owner's rights, 195 imitations, 196 1a°k applications, 187390 ESSENTIALS OF INTELLECTUAL PROPERTY LAW Trade-name, 10, 18 Translation, 177 ‘Transliteration, 177 ue Unfair Competition (Provisions on) persons protected and penalized, 213 elements of actions, 215 Jn relation to trademark infringement, 216 distinctions, 215, 219 in relation to product brands, 216 In relation to used containers, 218 in false representation of fact in connection with goods/services, 219 penalties, 220 Utility Model, 110 related provisions, 111 grounds for cancellation of registration, 112 cet Voluntary License Contract objectives, 97 prohibited provisions, 98 mandatory provisions, 100 rights of licensor and licensee, 101 -we Well-known Mark rules on considering a well-known mark, 162 criteria, 162 decided cases, 164 owner rights, 195 limitations, 196 Wendam, Demetrio T,, 35 Work of the Government of the Philippines, 236 Works (Literary and Artistic), 229 ules on Importation of copyrighted work, 263 World Wide Web, 129