Southwestern University - PHINMA

Sambag I, Cebu City

Quiz I

Name: LINGANAY, NOEL JUN LAPINIG Date: November 28, 2021

Subject: Intellectual Property Law Professor: Atty. Catherine Annabelle L. Hermoso

Pearl & Dean Inc. v. Shoemart Inc., G.R. No. 148222, August 15, 2003

This case talks about patent infringement, when the plaintiffs were engaged in the
manufacturing of advertising displays called light boxes and they secured copyright
registration before the Bureau of Patents, Trademark and Technology over the advertising
light boxes and marketed using the trademark “poster ads.” The plaintiffs entered into
contract with Shoemart for the lease and installation of the boxes in several SM Malls which
were subsequently rescinded due to non-performance. However, the SM Mall branches
continued to use the lighting display units using the trademark “poster ads”, prompting the
plaintiffs to file for charges against the SM Malls. Hence, the issue of patent infringement.

The Supreme Court ruled that to legally preclude others from copying and profiting from
one’s invention, patent is a primary requirement and the ultimate goal of a patent system is
to bring new designs and technologies into the public domain through disclosure.  Ideas,
once disclosed to the public without the protection of a valid patent, are subject to
appropriation without significant restraint; without any patent secured to protect one’s
work, there is no protection against its use by the public. Petitioner mainly secured copyright
in which its design is classified as class “O” limited to box wraps, pictorial illustration, labels
and tags. Thus its copyright is covered only the works falling within this category. Moreover,
the term “poster ads” is generic and incapable to be used as trademark thus the
respondents are not held guilty of the charges against them.

Habana v. Robles, G.R. No. 131522 July 19, 1999

This case is about copyright infringement when Pacita Habana and other authors and
copyright owners of duly issued book, filed an action for damages and injunction, alleging
respondent Felicidad Robles being substantially familiar with the contents of petitioners'
works, and without securing their permission, lifted, copied, plagiarized and/or transposed
certain portions of their book CET. Robles contends that the book DEP is the product of her
own intellectual creation, and was not a copy of any existing valid copyrighted book and that
the similarities may be due to the authors' exercise of the "right to fair use of copyrighted
materials, as guides." The trial court ruled in favor of the respondents, absolving them of any
liability and subsequently, the Court of Appeals rendered judgment in favor of respondents
Robles and Goodwill Trading Co., Inc. Hence, the issue of copyright infringement.

The Supreme Court rules that respondent Robles' act of lifting from the book of petitioners
substantial portions of discussions and examples, and her failure to acknowledge the same
in her book is an infringement of petitioners' copyrights. In the case at bar, the least that
respondent Robles could have done was to acknowledge petitioners Habana et. al. as the
source of the portions of DEP. The final product of an author's toil is her book. To allow
another to copy the book without appropriate acknowledgment is injury enough.
Columbia Pictures v. Ca, G.R. 110318, August 28, 1996

Complainants lodged a formal complaint with the NBI for violation of PD No. 49 and sought
its assistance in their anti-film piracy drive and Agents of the NBI and private researchers
made discreet surveillance on various video establishments in Metro Manila including
Sunshine. NBI Senior Agent Lauro C. Reyes applied for a search warrant with the court a
quo against Sunshine seeking the seizure, among others, of pirated video tapes of
copyrighted films all of which were enumerated in a list attached to the application, and
television sets, video cassettes and/or laser disc recordings equipment and other machines
and paraphernalia used or intended to be used in the unlawful exhibition, showing,
reproduction, sale, lease or disposition of videograms tapes in the premises above
described. However, the several motions that were filed by the petitioners were denied for
the lack of merit because the Columbia Pictures’ legal standing was questioned.

The Supreme Court ruled that the obtainment of a license prescribed by Section 125 of the
Corporation Code is not a condition precedent to the maintenance of any kind of action in
Philippine courts by a foreign corporation. However, under the aforequoted provision, no
foreign corporation shall be permitted to transact business in the Philippines, as this phrase
is understood under the Corporation Code, unless it shall have the license required by law,
and until it complies with the law in transacting business here, it shall not be permitted to
maintain any suit in local courts. As thus interpreted, any foreign corporation not doing
business in the Philippines may maintain an action in our courts upon any cause of action,
provided that the subject matter and the defendant are within the jurisdiction of the court.
It is not the absence of the prescribed license but “doing business” in the Philippines without
such license which debars the foreign corporation from access to our courts. In other words,
although a foreign corporation is without license to transact business in the Philippines, it
does not follow that it has no capacity to bring an action. Such license is not necessary if it is
not engaged in business in the Philippines and no general rule or governing principles can be
laid down as to what constitutes “doing” or “engaging in” or “transacting” business.

Ching v. Salinas, G.R. No. 161295, June 29, 2005

Petitioner Ching is a maker and manufacturer of a utility model, Leaf Spring Eye Bushing for
Automobile, for which he holds certificates of copyright registration and requested the NBI
to apprehend and prosecute illegal manufacturers of his work led to the issuance of search
warrants against respondent Salinas, alleged to be reproducing and distributing said models
in violation of the IP Code. Respondent moved to quash the warrants on the ground that
petitioner’s work is not artistic in nature and is a proper subject of a patent, not copyright.
Petitioner insists that the IP Code protects a work from the moment of its creation
regardless of its nature or purpose. The trial court quashed the warrants. Petitioner argues
that the copyright certificates over the model are prima facie evidence of its validity. CA
affirmed the trial court’s decision. Hence, the issue that the petitioner’s model is an artistic
work subject to copyright protection.
However, the Supreme Court held that the petitioner’s model is NOT an artistic work subject
to copyright protection. As gleaned from the specifications appended to the application for a
copyright certificate filed by the petitioner, the said Leaf Spring Eye Bushing for Automobile
and Vehicle Bearing Cushion are merely utility models. As gleaned from the description of
the models and their objectives, these articles are useful articles which are defined as one
having an intrinsic utilitarian function that is not merely to portray the appearance of the
article or to convey information. Plainly, these are not literary or artistic works. They are not
intellectual creations in the literary and artistic domain, or works of applied art. They are
certainly not ornamental designs or one having decorative quality or value. Indeed, while
works of applied art, original intellectual, literary and artistic works are copyrightable, useful
articles and works of industrial design are not. A useful article may be copyrightable only if
and only to the extent that such design incorporates pictorial, graphic, or sculptural features
that can be identified separately from, and are capable of existing independently of the
utilitarian aspects of the article. In this case, the bushing and cushion are not works of art.
They are, as the petitioner himself admitted, utility models which may be the subject of a
patent.

Laktaw v. Paglinawan G.R. No. L-11937, April 1, 1918

The plaintiff, Pedro Laktaw was, according to the laws regulating literary properties, the
registered owner of a literary work entitled Diccionario Hispano Tagalog (Spanish-Tagalog
Dictionary) published in the City of Manila in 1889 by the printing establishment La Opinion.
The defendant, Mamerto Paglinawan, without consent of the plaintiff, reproduced the said
literary work, improperly copied the greater part thereof in the work published by him and
entitled Diccionariong Kastila-Tagalog (Spanish- Tagalog Dictionary). The act of Paglinawan,
which is a violation of Article 7 of the Law of January 10, 1879, on Intellectual Property,
caused irreparable injuries to Laktaw, who was surprised when, on publishing his new work
entitled Diccionario Tagalog-Hispano (Tagalog-Spanish Dictionary) he learned of the fact, and
that damages occasioned to the plaintiff by the publication of defendant’s work amounted
to $ 10,000.00. Laktaw prayed the court to order Paglinawan to withdraw from sale all stock
of the work and to pay him the sum of $ 10,000.00 with costs. Paglinawan, in his answer
denied generally each and every allegation of the complaint and prayed the court to absolve
him from complaint. The issue was whether or not the defendant, Mamerto Paglinawan,
violated Article 7 of the Law of January 10, 1879 on Intellectual Property.

The Supreme Court ruled that Mamerto Paglinawan violated Article 7 of the Law of January
10, 1879 on Intellectual Property. The said article states that, “Nobody may reproduce
another person’s work without the owner’s consent, even merely to annotate or add
anything to it, or improve any edition thereof”. It is not necessary that a work should be an
improper copy of another work previously published. The court makes no special
pronouncement as to the costs of this instance.

Joaquin, Jr. v. Drilon, G.R. No. 108946. January 28, 1999

Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of Certificate of Copyright No.
M922, dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to
1977. On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its
certificate of copyright specifying the show’s format and style of presentation. Upon
complaint of petitioners, information for violation of PD No. 49 was filed against private
respondent Zosa together with certain officers of RPN 9 for airing It’s a Date. It was assigned
to Branch 104 of RTC Quezon City. Zosa sought review of the resolution of the Assistant City
Prosecutor before the Department of Justice. On August 12, 1992, respondent Secretary of
Justice Franklin M. Drilon reversed the Assistant City Prosecutor’s findings and directed him
to move for the dismissal of the case against private respondents. Petitioner Joaquin filed
motion for reconsideration but such was denied. Hence, the issue that whether the format
or mechanics or petitioner’s television show is entitled to copyright protection.

The Supreme Court ruled that the format of the show is not copyrightable. Sec. 2 of PD No.
49, otherwise known as the Decree on Intellectual Property, enumerates the classes of work
entitled to copyright protection. The provision is substantially the same as Sec. 172 of the
Intellectual Property Code of the Philippines (RA 8293). The format or mechanics of a
television show is not included in the list of protected works in Sec. 2 of PD No. 49. For this
reason, the protection afforded by the law cannot be extended to cover them. Copyright, in
the strict sense of the term, is purely a statutory right. It is a new independent right granted
by the statute and not simply a pre-existing right regulated by the statute. Being a statutory
grant, the rights are only such as the statute confers, and may be obtained and enjoyed only
with respect to the subjects and by the person and on terms and conditions specified in the
statute.

ABS-CBN Corp. v. Phil. Multi-Media System Inc., G.R. No. 175769-70, Jan. 19, 2009

The petitioner, ABS-CBN Broadcasting Corporation is licensed under the laws of the Republic
of the Philippines to engage in television and radio broadcasting. It broadcasts television
programs by wireless means to Metro Manila and nearby provinces, and by satellite to
provincial stations through Channel 2 on Very High Frequency (VHF) and Channel 23 on Ultra
High Frequency (UHF). The programs aired over the said channels are either produced by
ABSCBN or purchased from or licensed by other producers. It also owns regional television
stations which pattern their programming in accordance with perceived demands of the
region. Thus, television programs shown in Metro Manila and nearby provinces are not
necessarily shown in other provinces. The respondent, Philippine Multi-Media System, Inc.
(PMSI) is the operator of Dream Broadcasting System. It delivers digital direct-to-home
(DTH) television via satellite to its subscribers all over the Philippines. PMSI was granted a
legislative franchise under Republic Act No. 8630 on May 7, 1998 and was given a Provisional
Authority by the National Telecommunications Commission (NTC) on February 1, 2000 to
install, operate and maintain a nationwide DTH satellite service. When commenced
operations, it offered as part of its program line-up ABS-CBN Channels 2 & 23, NBN, Channel
4, ABC Channel 5, GMA Channel 7, RPN Channel 9, IBC Channel 13, together with other paid
premium program channels. However, on April 25, 2001, ABS-CBN demanded for PMSI to
cease and desist from rebroadcasting Channels 2 & 23. On April 27, 2001, PMSI replied that
the rebroadcasting was in accordance with the authority granted by NTC and its obligation
under NTC Memorandum Circular No. 4-08-08, Section 6.2 of which requires all cable
television system operators operating in a community within Grade “A” or “B” contours to
carry the television signals of the authorized television broadcast stations. Thereafter,
negotiations ensued between the parties in an effort to reach a settlement; however, the
negotiations were terminated by ABS-CBN due to PMSI’s inability to ensure the prevention
of illegal transmission and further rebroadcast of its signals, as well as the adverse effect of
the rebroadcasts on the business operations of its regional television stations. On May 13,
2002, ABS-CBN filed with the IPO a complaint for “Violation of Laws Involving Property
Rights, with Prayer for the Issuance of a TRO and/or Writ of Preliminary Injunction”. On July
2, 2002, The Bureau of Legal Affairs (BLA) of the IPO granted ABS-CBN’s application for a
TRO. On July 12, 2002, PMSI suspended its retransmission of Channels 2 & 23.
Issue: Whether or not PMSI infringed the broadcasting rights and copyright of ABS-CBN
Ruling: No. There is no merit in ABS-CBN’s contention that PMSI violated its broadcasting
rights Code. Neither is PMSI guilty of infringement under Section 177 of the IP Code which
states that copyright or economic rights shall consist of the exclusive right to carry out,
authorize or prevent the public performance of the work, and other communication to the
public of work. Section 202.7 of the IP Code defines broadcasting as “the transmission by
wireless means for public reception of sounds or of images or of representations thereof;
such transmission by satellite is also “broadcasting” where the means of decrypting are
provided to the public by the broadcasting organization or with its consent.” On the other
hand, rebroadcasting as defined in Article 3 (g) of the International Convention for the
Protection of Performers, Producers of Phonograms and Broadcasting Organizations,
otherwise known as the 1961 Rome Convention, of which the Republic of the Philippines is a
signatory, is “the simultaneous broadcasting by one broadcasting organization of the
broadcast of another broadcasting organization.” The Director-General of the IPO found that
PMSI is not engaged in the rebroadcasting and thus cannot be considered to have infringed
ABS-CBN’s broadcasting rights and copyrights because it does not have the responsibilities
imposed upon broadcasting organizations, such as ABS-CBN. ABS-CBN creates and transmits
its own signals; PMSI merely carries such signals which the viewers received in its unaltered
form. PMSI does not produce, select, or determine the programs to be shown in Channels 2
& 23. Thus, it does not pass itself off as the origin or author of such programs. Wherefore,
the petition is denied. The Decision of the CA sustaining the findings of the Director-General
of the IPO and dismissing the petition of the ABS-CBN Broadcasting Corporation is affirmed.

ABS-CBN Corp v. Felipe Gozon, G.R. No. 195956, March 11, 2015

On August 13, 2004, petitioner ABS-CBN filed a criminal complaint against respondent GMA
for (alleged) act of copyright infringement under the Intellectual Property Code because the
GMA aired footage of the arrival and homecoming of OFW Angelo dela Cruz at NAIA from
Iraq without the petitioner's consent. ABS-CBN stated that it has an agreement with Reuter's
that the petition will contribute news and content that it owns and makes to Reuters in
exchange of the latter's news and video material, and Reuters will ensure that ABS-CBN's
materials cannot be aired in the country. The respondent was a subscriber of Reuter's and
CNN live feeds. After it received the live feed of Angelo Dela Cruz's arrival and homecoming
from Reuter's, it immediately aired the video from that news feed. The respondent alleged
that its news staff was not aware that there was (a news embargo) agreement between
ABSCBN and Reuters. Respondent alleged that it was not also aware that it aired petitioner's
footage. The appellate court stated that the ABSCBN has copyright of its news coverage, but
GMA’s act of airing five (5) seconds of the homecoming footage without notice of the “No
Access Philippines” restriction of the live Reuter's video feed, was undeniably attended by
good faith and thus, serves to exculpate from criminal liability under the Intellectual
Property Code. Hence, the issue that within in the granting of the trial court on the motion
to suspend proceedings was proper.

The trial court granted respondents' Motion to Suspend Proceedings and deferred
respondents Dela Peña-Reyes and Manalastas' arraignment for 60 days in view of the
Petition for Review filed before the Department of Justice. Rule 116, Section 11 (c) of the
Rules of Criminal Procedure allows the suspension of the accused's arraignment in certain
circumstances only: SEC. 11. Suspension of arraignment. -Upon motion by the proper party,
the arraignment shall be suspended in the following cases: (a) The accused appears to be
suffering from an unsound mental condition which effectively renders him unable to fully
understand the charge against him and to plead intelligently thereto. In such case, the court
shall order his mental examination and, if necessary, his confinement for such purpose; (b)
There exists a prejudicial question; and (c) A petition for review of the resolution of the
prosecutor is pending at either the Department of Justice, or the Office of the President;
provided, that the period of suspension shall not exceed sixty (60) days counted from the
filing of the petition with the reviewing office. The trial court should have proceeded with
respondents Dela Peña-Reyes and Manalastas' arraignment after the 60-day period from the
filing of the Petition for Review before the Department of Justice on March 8, 2005. It was
only on September 13, 2010 that the temporary restraining order was issued by the Court of
Appeals. The trial court erred when it did not act on the criminal case during the interim
period. It had full control and direction of the case. As Judge Mogul reasoned in denying the
motion to dismiss in Crespo, failure to proceed with the arraignment "disregards the
requirements of due process [and] erodes the Court's independence and integrity."

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