Ching v. Salinas, Sr. (G.R. No.

161295)

Facts:

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. Petitioner’s request to 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.

Issues: (1) Whether or not petitioner’s model is an artistic work subject to copyright protection. (2) Whether or not
petitioner is entitled to copyright protection on the basis of the certificates of registration issued to it.

Ruling:

(1) NO. 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.

(2) NO. No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the certificates
of copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion. Indeed, in Joaquin,
Jr. v. Drilon and Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated, the Court ruled that:

Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted by the
statute, and not simply a pre-existing right regulated by it. 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 persons, and on terms and
conditions specified in the statute. Accordingly, it can cover only the works falling within the statutory enumeration or
description.

Ownership of copyrighted material is shown by proof of originality and copyrightability. To discharge his burden, the
applicant may present the certificate of registration covering the work or, in its absence, other evidence. A copyright
certificate provides prima facie evidence of originality which is one element of copyright validity. It constitutes prima
facie evidence of both validity and ownership and the validity of the facts stated in the certificate.
ABS-CBN vs Gozon

FACTS

ABS-CBN "conducted live audio-video coverage of and broadcasted the arrival of Angelo dela Cruz at the Ninoy Aquino
International Airport (NAIA) and the subsequent press conference." ABS-CBN allowed Reuters Television Service
(Reuters) to air the footages it had taken earlier under a special embargo agreement.

ABS-CBN alleged that under the special embargo agreement, any of the footages it took would be for the "use of
Reuter’s international subscribers only, and shall be considered and treated by Reuters under ‘embargo’ against use by
other subscribers in the Philippines. . . . [N]o other Philippine subscriber of Reuters would be allowed to use ABS CBN
footage without the latter’s consent."

GMA-7, to which Gozon, Duavit, Jr., Flores, Soho, Dela Peña-Reyes, and Manalastas are connected, "assigned and
stationed news reporters and technical men at the NAIA for its live broadcast and non-live news coverage of the arrival
of dela Cruz."

GMA-7 subscribes to both Reuters and Cable News Network (CNN). It received a live video feed of the coverage of
Angelo dela Cruz’s arrival from Reuters. GMA-7 immediately carried the live news feed in its program "Flash Report,"
together with its live broadcast.

Allegedly, GMA-7 did not receive any notice or was not aware that Reuters was airing footages of ABS-CBN. GMA-7’s
news control room staff saw neither the "No Access Philippines" notice nor a notice that the video feed was under
embargo in favor of ABS-CBN.

ISSUE : WON ABS-CBN's news coverage is copyrightable.

HELD:

Yes. The news footage is copyrightable. The Intellectual Property Code is clear about the rights afforded to authors of
various kinds of work. Under the Code, "works are protected by the sole fact of their creation, irrespective of their mode
or form of expression, as well as of their content, quality and purpose." These include "[a]udiovisual works and
cinematographic works and works produced by a process analogous to cinematography or any process for making
audiovisual recordings.

It is true that under Section 175 of the Intellectual Property Code, "news of the day and other miscellaneous facts having
the character of mere items of press information" are considered unprotected subject matter. However, the Code does
not state that expression of the news of the day, particularly when it underwent a creative process, is not entitled to
protection.

Broadcasting organizations are entitled to several rights and to the protection of these rights under the Intellectual
Property Code. Respondents’ argument that the subject news footage is not copyrightable is erroneous. The Court of
Appeals, in its assailed Decision, correctly recognized the existence of ABS-CBN’s copyright over the news footage:

Surely, private respondent has a copyright of its news coverage. Seemingly, for airing said video feed, petitioner GMA is
liable under the provisions of the Intellectual Property Code, which was enacted purposely to protect copyright owners
from infringement.

News as expressed in a video footage is entitled to copyright protection. Broadcasting organizations have not only
copyright on but also neighboring rights over their broadcasts. Copyrightability of a work is different from fair use of a
work for purposes of news reporting.
Filipino Society of Composers vs. Tan 148 SCRA 461 (1987)

FACTS:

Plaintiff-appellant is a non-profit association of authors, composers and publishers duly organized under the Corporation
Law of the Philippines and registered with the Securities and Exchange Commission. Said association is the owner of
certain musical compositions among which are the songs entitled: “Dahil Sa Iyo”, “Sapagkat Ikaw Ay Akin,” “Sapagkat
Kami Ay Tao Lamang” and “The Nearness Of You.”

On the other hand, defendant-appellee is the operator of a restaurant known as “Alex Soda Foundation and Restaurant”
where a combo with professional singers, hired to play and sing musical compositions to entertain and amuse customers
therein, were playing and singing the above-mentioned compositions without any license or permission from the
appellant to play or sing the same. Accordingly, appellant demanded from the appellee payment of the necessary license
fee for the playing and singing of aforesaid compositions but the demand was ignored.

Hence, on November 7, 1967, appellant filed a complaint with the lower court for infringement of copyright against
defendant-appellee for allowing the playing in defendant-appellee’s restaurant of said songs copyrighted in the name of
the former.

ISSUE: The principal issues in this case are whether or not the playing and signing of musical compositions which have
been copyrighted under the provisions of the Copyright Law (Act 3134) inside the establishment of the defendant-
appellee constitute a public performance for profit within the meaning and contemplation of the Copyright Law of the
Philippines

RULING: Playing of music in dine and dance establishment which was paid for by the public in purchases of food and
constitutes “performance for profit” within the Copyright Law. Nevertheless, defendant cannot be held to have violated
the Copyright Law because the composers of the contested musical compositions are deemed to have waived their
rights in favor of the general public because they have failed to comply with the regulation requiring an intellectual
creation to be copyrighted within 30 days after publication.
Berne Convention for the Protection of Literary and Artistic Works

The Berne Convention, adopted in 1886, deals with the protection of works and the rights of their authors. It provides
creators such as authors, musicians, poets, painters etc. with the means to control how their works are used, by whom,
and on what terms. It is based on three basic principles and contains a series of provisions determining the minimum
protection to be granted, as well as special provisions available to developing countries that want to make use of them.

Article 6bis: Moral Rights: 1. To claim authorship; to object to certain modifications and other derogatory actions; 2.
After the author’s death; 3. Means of redress

Article 14ter Berne convention for the protection of literary and artistic work

Article 14ter: “Droit de suite” in Works of Art and Manuscripts: 1. Right to an interest in resales; 2. Applicable law; 3.
Procedure

Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated, and North Edsa Marketing, Incorporated (CASE DIGEST)

FACTS:

Pearl and Dean (Phil.), Inc. (PDI) is engaged in the manufacture of advertising display units simply referred to as light
boxes. PDI was able to secure a Certificate of Copyright Registration, the advertising light boxes were marketed under
the trademark “Poster Ads”. In 1985, PDI negotiated with defendant-appellant Shoemart, Inc. (SMI) for the lease and
installation of the light boxes in certain SM Makati and SM Cubao. PDI submitted for signature the contracts covering
both stores, but only the contract for SM Makati, however, was returned signed. Eventually, SMI’s informed PDI that it
was rescinding the contract for SM Makati due to non-performance of the terms thereof. Years later, PDI found out that
exact copies of its light boxes were installed at different SM stores. It was further discovered that SMI’s sister company
North Edsa Marketing Inc. (NEMI), sells advertising space in lighted display units located in SMI’s different branches. PDI
sent a letter to both SMI and NEMI enjoining them to cease using the subject light boxes, remove the same from SMI’s
establishments and to discontinue the use of the trademark “Poster Ads,” as well as the payment of compensatory
damages. Claiming that both SMI and NEMI failed to meet all its demands, PDI filed this instant case for infringement of
trademark and copyright, unfair competition and damages. SMI maintained that it independently developed its poster
panels using commonly known techniques and available technology, without notice of or reference to PDI’s copyright.
SMI noted that the registration of the mark “Poster Ads” was only for stationeries such as letterheads, envelopes, and
the like. Besides, according to SMI, the word “Poster Ads” is a generic term which cannot be appropriated as a
trademark, and, as such, registration of such mark is invalid. On this basis, SMI, aside from praying for the dismissal of
the case, also counterclaimed for moral, actual and exemplary damages and for the cancellation of PDI’s Certification of
Copyright Registration, and Certificate of Trademark Registration. The RTC of Makati City decided in favour of PDI,
finding SMI and NEMI jointly and severally liable for infringement of copyright and infringement of trademark. On
appeal, however, the Court of Appeals reversed the trial court.

ISSUES: Whether the the light box depicted in such engineering drawings ipso facto also protected by such copyright.;
Whether there was a patent infringement; Whether the owner of a registered trademark legally prevent others from
using such trademark if it is a mere abbreviation of a term descriptive of his goods, services or business?

RULING:

ON THE ISSUE OF COPYRIGHT INFRINGEMENT

The Court of Appeals correctly held that the copyright was limited to the drawings alone and not to the light box itself.
Although petitioner’s copyright certificate was entitled “Advertising Display Units” (which depicted the box-type
electrical devices), its claim of copyright infringement cannot be sustained. Copyright, in the strict sense of the term, is
purely a statutory right. Accordingly, it can cover only the works falling within the statutory enumeration or description.

Even as we find that P & D indeed owned a valid copyright, the same could have referred only to the technical drawings
within the category of “pictorial illustrations.” It could not have possibly stretched out to include the underlying light
box. The light box was not a literary or artistic piece which could be copyrighted under the copyright law. The Court
reiterated the ruling in the case of Kho vs. Court of Appeals, differentiating patents, copyrights and trademarks, namely:

A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise
and shall include a stamped or marked container of goods. In relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and
artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of
their creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of
human activity which is new, involves an inventive step and is industrially applicable.

ON THE ISSUE OF PATENT INFRINGEMENT

Petitioner never secured a patent for the light boxes. It therefore acquired no patent rights which and could not legally
prevent anyone from manufacturing or commercially using the contraption. To be able to effectively and legally
preclude others from copying and profiting from the invention, a patent is a primordial requirement. No patent, no
protection.

ON THE ISSUE OF TRADEMARK INFRINGEMENT

On the issue of trademark infringement, the petitioner’s president said “Poster Ads” was a contraction of “poster
advertising.” P & D was able to secure a trademark certificate for it, but one where the goods specified were
“stationeries such as letterheads, envelopes, calling cards and newsletters.”Petitioner admitted it did not commercially
engage in or market these goods. On the contrary, it dealt in electrically operated backlit advertising units which,
however, were not at all specified in the trademark certificate.

Assuming arguendo that “Poster Ads” could validly qualify as a trademark, the failure of P & D to secure a trademark
registration for specific use on the light boxes meant that there could not have been any trademark infringement since
registration was an essential element thereof.

ON THE ISSUE OF UNFAIR COMPETITION

There was no evidence that P & D’s use of “Poster Ads” was distinctive or well-known. As noted by the Court of Appeals,
petitioner’s expert witnesses himself had testified that ” ‘Poster Ads’ was too generic a name. So it was difficult to
identify it with any company, honestly speaking.”This crucial admission that “Poster Ads” could not be associated with P
& D showed that, in the mind of the public, the goods and services carrying the trademark “Poster Ads” could not be
distinguished from the goods and services of other entities.

“Poster Ads” was generic and incapable of being used as a trademark because it was used in the field of poster
advertising, the very business engaged in by petitioner. “Secondary meaning” means that a word or phrase originally
incapable of exclusive appropriation with reference to an article in the market might nevertheless have been used for so
long and so exclusively by one producer with reference to his article that, in the trade and to that branch of the
purchasing public, the word or phrase has come to mean that the article was his property.