Copyright Format Dating Shows Joaquin v Drilon SC Ruling

Intellectual Property Law 1
V. Copyright and Related Rights – B.5. Scope of Copyright
Joaquin v. Drilon
June 8, 2004 | J. Justice
Petitioner(s): FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC.

Respondent(s): HONORABLE FRANKLIN DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE
MEDINA, JR., and CASEY FRANCISCO
Doctrine: The format of a show is not copyrightable. Copyright refers to finished works and not to
concepts. It does not extend to an idea, procedure, process, system, method of operation, concept,
principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied
in such work.
CASE SUMMARY
Trigger Word(s): Dating show, BJ Productions
FACTS: BJ Productions, Inc. is the grantee of a copyright certificate over “Rhoda and Me,” a dating game
show which aired from 1970 to 1977. On June 1973, “It’s a Date” aired on RPN Channel 9. When this
came to the attention of herein petitioner Joaquin, he sent the producers of the show a letter informing
them of the issued copyright over the material, and asked them to cease and desist from airing the said
show. Subsequently, an information for violation of copyright was filed before RTC of QC. However, IXL
Productions (who produced the latter show), moved for a review of the information before the DOJ, who,
through DOJ Sec. Drilon, moved for the information to be discarded, contending that a particular format of
a game show is non-copyrightable. Aggrieved by the DOJ Sec decision, the Petitioner filed a Motion for
Reconsideration but the same was denied. Hence, this case.
HELD: The Supreme Court dismissed the petition and ruled that the format of a show is not
copyrightable. P.D. No. 49, Section 2, in enumerating what are subject to copyright, refers to finished
works and not to concepts. The copyright does not extend to an idea, procedure, process, system,
method of operation, concept, principle, or discovery, regardless of the form in which it is described,
explained, illustrated, or embodied in such work. Thus, BJPI's copyright covered audio-visual recordings
of every episode of Rhoda and Me. The copyright, however, does not extend to the general concept or
format of its dating game show. Accordingly, by the very nature of the subject of BJPI's copyright, the
investigating prosecutor should have the opportunity to compare the videotapes of the two shows.
FACTS
● 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.
● July 14, 1991: petitioner Francisco Joaquin, Jr., president of BJPI, saw on RPN Channel 9 an
episode of It's a Date, which was produced by IXL Productions, Inc. (IXL).
● July 18, 1991: Petitioner wrote a letter to private respondent Gabriel M. Zosa, president and
general manager of IXL, informing Zosa that BJPI had a copyright to Rhoda and Me and
demanding that IXL discontinue airing It's a Date.
● August 14, 1991: the National Library issued a Cert. of Copyright to the first episode of It’s A
Date.
● Petitioner filed an information for violation of P.D. No. 49 against private respondent Zosa
together with certain officers of RPN Channel 9, namely, William Esposo, Felipe Medina, and
Casey Francisco.
○ During the preliminary investigation, petitioners and private respondents presented
written descriptions of the formats of their respective televisions shows.
■ Based on these, the investigating prosecutor ruled that and Zosa's "IT'S A DATE"
is practically an exact copy of complainant's "RHODA AND ME".
■ Specifically, it was ruled that the major concepts of both shows is the same (the
two matches are made between a male and a female, both single, and the two
couples are treated to a night or two of dining and/or dancing at the expense of
the show) and that any difference appear mere variations of the major concepts.
Name of Digest Maker

○ A criminal complaint was then docketed and assigned to RTC of QC Branch 104.
● Private respondent Zosa sought a review of the resolution of the Assistant City Prosecutor before
the Department of Justice.
● August 12, 1992: Respondent DOJ Sec. Franklin M. Drilon reversed the Assistant City
Prosecutor's findings and directed him to move for the dismissal of the case against private
respondents.
● December 3, 1992: DOJ Sec denied Petitioner Joaquin’s motion for reconsideration. Hence, this
petition.
○ Petitioners: contended that the public respondent gravely abused his discretion
amounting to lack of jurisdiction: 1) when he invoked non-presentation of the master
tape as being fatal to the existence of probable cause to prove infringement,
despite the fact that private respondents never raised the same as a controverted issue;
and 2) when he arrogated unto himself the determination of what is copyrightable
— an issue which is exclusively within the jurisdiction of the RTC to assess in a proper
proceeding.
○ Respondents: maintain: 1) that petitioners failed to establish the existence of
probable cause due to their failure to present the copyrighted master videotape of
Rhoda and Me; 2) that petitioner BJPI's copyright covers only a specific episode of
Rhoda and Me and that the formats or concepts of dating game shows are not
covered by copyright protection under P. D. No. 49.
MAIN ISSUE + HELD

ISSUE #1: Whether or not the format or mechanics of the petitioner’s television show is entitled to a
copyright protection – NO
Pet: assert that the format of Rhoda and Me is a product of ingenuity and skill and is thus entitled to
copyright protection. They posit that the presentation of a point-by-point comparison of the formats of the
two shows clearly demonstrates the nexus between the shows and hence establishes the existence of
probable cause for copyright infringement. Such being the case, they did not have to produce the master
tape.
SC:
● The Court ruled that the format of a show is not copyrightable §2 of P.D. No. 49 (Decree On
Intellectual Property) enumerates the classes of work entitled to copyright protection. This
provision is substantially the same as §172 of the IP Code (R.A. No. 8293).
● The format or mechanics of a television show is not included in said enumeration (see notes). 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 or 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
persons, and on terms and conditions specified in the statute.
○ Since copyright in published works is purely a statutory creation, a copyright may
be obtained only for a work falling within the statutory enumeration or description
● P.D. No. 49, §2, in enumerating what are subject to copyright, refers to finished works and not
to concepts.
○ The copyright does not extend to an idea, procedure, process, system, method of
operation, concept, principle, or discovery, regardless of the form in which it is
described, explained, illustrated, or embodied in such work.
○ Thus, under Sec. 175 of the new IP Code: “Notwithstanding the provisions of Sections
172 and 173, no protection shall extend, under this law, to any idea, procedure,
system, method or operation, concept, principle, discovery or mere data as such,
even if they are expressed, explained, illustrated or embodied in a work; news of the day
and other miscellaneous facts having the character of mere items of press information; or

any official text of a legislative, administrative or legal nature, as well as any official
translation thereof”.
AS APPLIED IN THIS CASE:

● From the foregoing, SC ruled that petitioner BJPI's copyright covers audio-visual recordings
of each episode of Rhoda and Me, as falling within the class of works mentioned in P.D. 49,
§2(M). The copyright does not extend to the general concept or format of its dating game
show.
● Accordingly, by the very nature of the subject of petitioner BJPI's copyright, the investigating
prosecutor should have the opportunity to compare the videotapes of the two shows. Mere
description by words of the general format of the two dating game shows is insufficient; the
presentation of the master videotape in evidence was indispensable to the determination
of the existence of probable cause.
OTHER ISSUES + HELD

ISSUE #2: Whether Secretary of Justice erred in reversing the investigating prosecutor's finding of
probable cause on the ground that Petitioner’s to submit the copyrighted master videotape of the
television show Rhoda and Me was not raised in issue by private respondents during the preliminary
investigation.- NO
● A preliminary investigation falls under the authority of the state prosecutor who is given by law the
power to direct and control criminal actions. However, the state prosecutor subject to the control
of the Secretary of Justice.
● In reviewing resolutions of prosecutors, the Secretary of Justice is not precluded from considering
errors, although unassigned, for the purpose of determining whether there is probable cause for
filing cases in court. He must make his own finding of probable cause and is not confined to the
issues raised by the parties during preliminary investigation. Moreover, his findings are not
subject to review unless shown to have been made with grave abuse.
ISSUE #3: Whether the SOJ erred when he declared what is not copyrightable in this case because
determination of the question whether the format or mechanics of a show is entitled to copyright
protection is for the court, and not the Secretary of Justice, to make – NO
● SC said that while it is true that the question whether the format or mechanics of petitioners'
television show is entitled to copyright protection is a legal question for the court to make.
● This does not, however, preclude respondent Secretary of Justice from making a preliminary
determination of this question in resolving whether there is probable cause for filing the case in
court. In doing so in this case, he did not commit any grave error.
RULING: Petition is dismissed.

UNITED FEATURE v. MUNSINGWEAR

9 November 1989 | Paras, J.
Petitioner(s): United Feature Syndicate, Inc.

Respondent(s): Munsingwear Creation Manufacturing Company
Doctrine: A copyright may provide a cause of action for the cancellation of a trademark registration.
CASE SUMMARY
Trigger Word(s): Charlie Brown
FACTS: United Feature sought the cancellation of trademark registration of Munsingwear over the mark
“Charlie Brown”. The Director of Philippine Patent Office denied the petition of United Feature holding that
a copyright over the name and likeness of “Charlie Brown” may not provide cause of action for the
cancellation of a trademark registration. Court of Appeals denied the appeal since it was filed out of time.
Hence petition for review on certiorari by United Feature to the Supreme Court. Supreme Court held that
a copyright may provide a cause of action for the cancellation of a trademark registration. Court of
Appeals decision was set aside and the trademark registration by Munsingwear ordered cancelled.
HELD: A copyright may provide a cause of action for the cancellation of a trademark registration.
FACTS
● United Feature sought the cancellation of trademark registration of Munsingwear over the mark
“Charlie Brown”. United Feature alleged that it is damaged by the registration on the following
grounds:
1. Munsingwear was not entitled to the registration of the mark CHARLIE BROWN &
DEVICE at the time of application for registration
2. Charlie Brown is a character creation or a pictorial illustration; the copyright to which is
exclusively owned worldwide by United Feature
3. As the owner of the pictorial illustration Charlie Brown, petitioner has since 1950 and
continuously up to the present, used and reproduced the same to the exclusion of others
4. Munsingwear has no bona fide use of the trademark in the commerce in the PH prior to
its application for registration
● The Director of Philippine Patent Office denied the petition of United Feature holding that a
copyright over the name and likeness of “Charlie Brown” may not provide cause of action for the
cancellation of a trademark registration.
● Court of Appeals denied the appeal since it was filed out of time.
ISSUES + HELD
ISSUE #1: Can a copyright provide a cause of action for the cancellation of a trademark
registration? YES, a copyright may provide a cause of action for the cancellation of a trademark
registration.
● Presidential Decree No. 49 or the “Decree on Intellectual Property” protects copyright from
moment of creation which include prints, pictorial illustrations, advertising copies, labels, tags and
box wraps.
● Aside from copyright, United Feature is also owner of trademark registrations and applications for
name and likeness of “Charlie Brown”
● States under the Paris Convention for the Protection of Industrial Property to which the
Philippines and U.S. are parties should interpret a solemn international commitment of the
Philippines embodied in a multilateral treaty to which we are a party and which we entered into
because it is in our national interest to do so
RULING: CA decision against United Feature is SET ASIDE and Munsingwear’s trademark registration is
CANCELLED

Ching v. Salinas
June 29, 2005 | J. Callejo, Sr.
Petitioner(s): Jessie Ching

Respondent(s): William M. Salinas, Sr. (Board of Directors and Officers of WILAWARE PRODUCT
CORPORATION)
Doctrine: The RTC must determine w/n the crime for infringement was committed. Hence, the RTC had
jurisdiction to delve into and resolve the issue whether the petitioner’s utility models are copyrightable
and, if so, whether he is the owner of a copyright over the said models.
Even if one’s works could be the proper subject matter of a patent, this does not entitle them to the
issuance of a search warrant for violation of copyright laws. They are distinct rights and the protection
afforded by one cannot be used interchangeably to cover items that exclusively pertain to others.
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.
Useful articles are defined as one having an intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey information. 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.
CASE SUMMARY
Trigger Word(s): A utility model cannot be generally a subject of copyright as it is not a work of art.
Therefore, an application for search warrant alleging copyright violation of a thing not copyright-able must
be dismissed or quashed, as no violation can occur when no right exists.
FACTS: Ching was able to secure a Certificates of Copyright Registration and Deposit for his product
Leaf Spring Eye Bushing for Automobile (LSEBA) which was then classified as a literary and artistic work
under paragraph (h) of Sec 172. One day, he asked the NBI to apprehend and prosecute illegal
manufacturers of his product. Thereafter, NBI filed for a search warrant in RTC Manila against Salinas
and officers and BoD members of Willaware Product Corp. for violation of Section 177 or the IP Code.
Later on, the warrant was quashed by RTC and CA because the work of Ching could not be the subject of
copyright.
HELD: SC dismissed the Petition of Ching and held that the LSEBA is not copyrightable. SC said this
product is a useful article. No copyright granted by law can be said to arise in favor of the petitioner
despite the issuance of the certificates of copyright registration.
FACTS
Main issue: whether the subject matter products may be copyrighted
● Petitioner, Jessie Ching, is the owner and General manager of Jeshicris Manufacturing, Co., the
maker and manufacturer of a Utility model, described as Leaf Spring Eye Bushing for Automobile
(LSEBA), which is made up of plastic.
● On Sep 4, 2001, Ching and Joseph Yu were issued by the National Library of Certificates of
Copyright Registration and Deposit for said work, LSEBA.
● On Sep 20, 2001, Ching requested the National Bureau of Investigation (NBI) for assistance in
the apprehension and prosecution of illegal manufacturers, producers and distributors of his work.

● After investigation, the NBI filed applications for search warrants in RTC Manila against William
Salinas Sr. and officers and members of the Board of Directors (BoD) of Wilaware Product Corp.
○ It was alleged that these individuals reproduced and distributed said models which is
penalized under Sec 177.1 and 177.3 of RA 8293.
● The applications also sought the seizure of the following:
○ Undetermined quantity of LSEBA made of plastic polypropylene
○ Undetermined quantity of LSEBA made of polyvinyl chloride plastic
○ Undetermined quantity of Vehicle bearing cushion (VBC) made of polyvinyl chloride
plastic
○ Undetermined quantity of dies and jigs, patterns and flasks used in the manufacture of
items a to d above
○ Evidences of sale which include receipts, invoices
● RTC granted the application of Search Warrant
● The NBI proceeded with the search and the following were thereafter seized:
○ LSEBA
■ Made of Plastic polypropylene
■ In Polyvinyl chloride plastic
○ VBC
○ Different molds
Second issue: whether the validity of a copyright can be ruled upon in a motion to quash search
warrants
● Salinas and the BoD of Wilaware, Respondents, filed a motion to quash the search warrants on
the ground that Copyright registration were issued in violation of the IP Code because:
○ The subject matter of the registrations are neither artistic nor literary, but pertain to
technology;
○ The subject matter are spare parts of automobiles meaning that there are original parts
that they are designed to replace so they are not original. Also, they are the proper
subject of patent not copyright.
● Petitioner Ching meanwhile averred that RTC Manila (Court who issued warrant) is not the proper
forum to articulate validity of the copyright. He argued that a search warrant is merely a judicial
process in anticipation of a criminal case. Hence, he enjoys a right of a registered owner/ holder
of a copyright until such time that his copyright is nullified in a proper proceeding.
RTC Decision (regarding main issue, and therefore also the existence of probable cause)
● RTC: Quashed the (previously granted) search warrant on the ground that there was no probable
cause for issuance
○ The LSEBA products, which were issued copyright certificates, pertain to solutions to
technical problems, but were neither literary nor artistic work as provided by ART 172 of
IPC
● Ching filed a petition for certiorari
○ RTC had no jurisdiction to delve into and resolve the validity of the copyright certificates
issued to him by the National Library.
○ Copyright certificates are prima facie evidence of its validity
CA Decision (regarding second issue)

● Upheld the quashal of search warrant: "In the determination of probable cause, the court must
necessarily resolve whether or not an offense exists to justify the issuance or quashal of the
search warrant."
○ “Accordingly, if, in the first place, the item subject of the petition is not entitled to be
protected by the law on copyright, how can there be any violation?”
ISSUES + HELD
MAIN ISSUE: W/N the subject products may be copyrighted, thus giving Ching copyright
protection – NO

● There is no copyright protection for works of applied art or industrial design which have aesthetic
or artistic features that cannot be identified separately from the utilitarian aspects of the article.
● Based on the specifications in the application for a copyright certificate filed by Ching, the LSEBA
is merely a utility model.
○ Both the LSEBA1 and the VBC2 are neither literary nor 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.
● It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its
marketability. The central inquiry is whether the article is a work of art.
○ Works for applied art include all original pictorials, graphics, and sculptural works that are
intended to be or have been embodied in useful article regardless of factors such as
mass production, commercial exploitation, and the potential availability of design patent
protection.
● On the other hand, 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.
○ 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.
● Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included
in the catch-all phrase "other literary, scholarly, scientific and artistic works" in Section 172.1(a) of
R.A. No. 8293.
○ Applying the principle of ejusdem generis, the LSEBA and VBC are not copyrightable,
being not of the same kind and nature as the works enumerated in Section 172 of R.A.
No. 8293.
● This case differs from the one cited by petitioner Mazer v. Stein, which involved were statuettes of
dancing male and female figures, made of semi-vitreous china, which were primarily intended to
be used as bases for table lamps, with electric wiring, sockets and lampshades attached.
○ In that case, the statuettes were held to be copyrightable works of art or models or
designs for works of art, insofar as their form was concerned. [Digester: the difference of
course is that these statuettes were artsy].
■ And so a new rule was created: [I]f "the sole intrinsic function of an article is its
utility, the fact that the work is unique and attractively shaped will not qualify it as
a work of art."
○ In this case, the bushing and cushion are not works of art. They are, as petitioner Ching
himself admitted, utility models which may be the subject of a patent.
SECOND ISSUE: W/N the Judge could determine the validity of a copyright in an application for, or
motion for quashal of, search warrant - YES
● Upon the filing of the application for search warrant, the RTC was duty-bound to determine
whether probable cause existed.
1
LSEBA is merely a utility model described as comprising a generally cylindrical body having a co-axial
bore that is centrally located and provided with a perpendicular flange on one of its ends and a cylindrical
metal jacket surrounding the peripheral walls of said body, with the bushing made of plastic that is either
polyvinyl chloride or polypropylene.
2
VBC is illustrated as a bearing cushion comprising a generally semi-circular body having a central hole
to secure a conventional bearing and a plurality of ridges provided therefore, with said cushion bearing
being made of the same plastic materials.

● In the determination of probable cause, the court must necessarily resolve whether or not an
offense exists to justify the issuance of a search warrant or the quashal of one already issued by
the court.
● By requesting the NBI to investigate and, if feasible, file an application for a search
warrant for infringement under R.A. No. 8293 against the respondents, petitioner Ching
thereby authorized the RTC (in resolving the application), to delve into and determine the
validity of the copyright which he claimed he had over the utility models.
○ Petitioner Ching cannot seek relief from the RTC based on his claim that he was the
copyright owner over the utility models and, at the same time, repudiate the court's
jurisdiction to ascertain the validity of his claim without running afoul to the doctrine of
estoppel.
● Petitioner’s argument: “The copyright certificates are prima facie evidence of its validity, [which is
enough to reach the “reasonable suspicion” standard of probable cause for issuance of search
warrant]”
○ Court: By reason of the exception provided in Section 218.2(a) 3 of the IPC, “a certificate
of registration creates no rebuttable presumption of copyright validity where other
evidence in the record casts doubt on the question. In such a case, validity will not be
presumed.”
○ In this case, the evidence that casts doubt is that presented by respondent arguing for
the non-coverage of the LSEBA products under the scope of copyright.
RULING: The instant petition is hereby DENIED for lack of merit.
3
(a) Copyright shall be presumed to subsist in the work or other subject matter to which the action relates
if the defendant does not put in issue the question whether copyright subsists in the work or other subject
matter;

PEARL & DEAN, INCORPORATED vs. SHOEMART, INCORPORATED & NORTH EDSA MARKETING
INCORPORATED
August 15, 2003 | J. Corona
Petitioner(s): PEARL & DEAN (PHIL.), INCORPORATED

Respondent(s): SHOEMART, INCORPORATED, and NORTH EDSA MARKETING, INCORPORATED
Doctrine: The main holding of the court in relation to the topic
CASE SUMMARY
Trigger Word(s): Light boxes; Poster Ads
FACTS: Pearl and Dean engaged in the manufacture of light boxes. It acquired a certificate of copyright
on the technical drawings of the lightboxes. It also had a trademark on the name “Poster Ads”. For 7
years, Pearl and Dean employed the services of Metro Industrial Services to manufacture its advertising
displays.
In 1985, Pearl and Dean negotiated with Shoemart, Inc (SMI) for the lease and installation of the light
boxes in several SM malls. However, the contract was terminated later on. Afterwards, Pearl and Dean
would learn that Metro Industrial Services started installing light boxes for the SM Malls, and that NEMI,
SMI’s sister company, was also selling space in lighted display units. Thus, Pearl and Dean sued SMI and
NEMI for copyright infringement, demanded the discontinued use of the trademark “Poster Ads”, and
damages.
HELD: SMI and NEMI cannot be held liable for copyright infringement. They also did not violate
the use of the name “Poster Ads”. All told, Pearl and Dean did not have any cause of action
against SMI and NEMI.
Pearl and Dean secured a copyright under the classification class “O” work. Class “O” covers only prints,
pictorial illustrations, advertising copies, labels, tags, and box wraps. Thus, the Pearl and Dean’s
copyright protection extended only to the technical drawings and not to the light box itself. The
lightbox does not fall under any of those enumerated under Class “O”. If SMI and NEMI reprinted
Pearl and Dean’s technical drawings for sale to the public, then there would be no doubt that they
would have been guilty of the copyright infringement.
Pearl and Dean’s president himself admitted that the light box was neither a literary nor an artistic work,
but an engineering or marketing invention. Copyright covers only literary and other artistic works.
FACTS
 Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of advertising display
units simply referred to as light boxes. These units utilize specially printed posters sandwiched
between plastic sheets and illuminated with back lights.
 Pearl and Dean was able to secure a Certificate of Copyright Registration dated January 20,
1981 over these illuminated display units. The advertising light boxes were marketed under the
trademark "Poster Ads". The application for registration of the trademark was filed with the

Bureau of Patents, Trademarks and Technology Transfer on June 20, 1983, but was approved
only on September 12, 1988, per Registration No. 41165.
 From 1981 to about 1988, Pearl and Dean employed the services of Metro Industrial Services to
manufacture its advertising displays.
 In 1985, Pearl and Dean negotiated with Shoemart, Inc. (SMI) for the lease and installation of the
light boxes in SM City North Edsa. Since SM City North Edsa was under construction at that time,
SMI offered to have the light boxes installed in SM Makati and SM Cubao instead. Peart and
Dean Agreed.
 On September 11, 1985, Pearl and Dean’s General Manager, Rodolfo Vergara, submitted for
signature the contracts covering SM Cubao and SM Makati to SMI’s Advertising Promotions and
Publicity Division Manager, Ramonlito Abano. Only the contract for SM Makati, however, was
returned signed.
 On October 4, 1985, Vergara wrote Abano inquiring about the other contract and reminding him
that their agreement for installation of light boxes was not only for its SM Makati branch, but also
for SM Cubao. SMI did not bother to reply.
 Instead, in a letter dated January 14, 1986, SMI’s house counsel informed Pearl and Dean that it
was rescinding the contract for SM Makati due to non-performance of the terms thereof. In his
reply dated February 17, 1986, Vergara protested the unilateral action of SMI, saying it was
without basis. In the same letter, he pushed for the signing of the contract for SM Cubao.
 Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean to
fabricate its display units, offered to construct light boxes for Shoemart’s chain of stores. SMI
approved the proposal and ten (10) light boxes were subsequently fabricated by Metro Industrial
for SMI. After its contract with Metro Industrial was terminated, SMI engaged the services of EYD
Rainbow Advertising Corporation to make the light boxes. Some 300 units were fabricated in
1991. These were delivered on a staggered basis and installed at SM Megamall and SM City.
 In 1989, Pearl and Dean, received reports that exact copies of its light boxes were installed at SM
City and in the fastfood section of SM Cubao. Upon investigation, Pearl and Dean found out that
aside from the two (2) reported SM branches, light boxes similar to those it manufactures were
also installed in two (2) other SM stores. It further discovered that North Edsa Marketing Inc.
(NEMI), through its marketing arm, Prime Spots Marketing Services, was set up primarily to sell
advertising space in lighted display units located in SMI’s different branches. Pearl and Dean
noted that NEMI is a sister company of SMI.
 In the light of its discoveries, Pearl and Dean sent a letter on December 11, 1991 to both SMI and
NEMI enjoining them to cease using the subject light boxes and to remove the same from SMI’s
establishments. It also demanded the discontinued use of the trademark "Poster Ads," and the
payment to Pearl and Dean of compensatory damages in the amount of Twenty Million Pesos
(P20,000,000.00).
 Upon receipt of the demand letter, SMI suspended the leasing of two hundred twenty-four (224)
light boxes and NEMI took down its advertisements for "Poster Ads" from the lighted display units
in SMI’s stores. Claiming that both SMI and NEMI failed to meet all its demands, Pearl and Dean
filed this instant case for infringement of trademark and copyright, unfair competition and
damages.
 SMI argued that it independently developed its poster panels using commonly known techniques
and available technology, without notice of or reference to Pearl and Dean’s Copyright ; that the

registration of the mark “Poster Ads” was only for stationeries such as letterheads, envelopes,
and the like. The word "Poster Ads" is a generic term which cannot be appropriated as a
trademark, and, as such, registration of such mark is invalid. Also, Pearl and Dean’s advertising
display units contained no copyright notice.
 NEMI: Denied having manufactured, installed, or used any advertising display units, nor having
engaged in the business of advertising.
 RTC: Ruled that SMI and NEMI are jointly and severally liable for infringement of copyright under
Section 2 of PD 49.
 CA: Revered the RTC decision. What was copyrighted were the technical drawings only, and not
the light boxes themselves (Baker v. Selden; Muller v. Triborough Bridge Authority; Imperial
Homes v. Lamont, Scholtz Homes, Inc. v. Maddox). However, the CA agreed that Pearl and
Dean’s trademark for “Poster Ads” only covered stationeries.
ISSUES + HELD
ISSUE #1: IF THE ENGINEERING OR TECHNICAL DRAWINGS OF AN ADVERTISING DISPLAY

UNIT (LIGHT BOX) ARE GRANTED COPYRIGHT PROTECTION (COPYRIGHT CERTIFICATE OF
REGISTRATION) BY THE NATIONAL LIBRARY, IS THE LIGHT BOX DEPICTED IN SUCH
ENGINEERING DRAWINGS IPSO FACTO ALSO PROTECTED BY SUCH COPYRIGHT? – NO.
 Copyright is purely a statutory right. Being a mere statutory grant, the rights are limited to what
the statute confers. It 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.
 Pearl and Dean secured a copyright under the classification class “O” work. Class “O” covers only
prints, pictorial illustrations, advertising copies, labels, tags, and box wraps. Thus, the Pearl and
Dean’s copyright protection extended only to the technical drawings and not to the light box
itself. The lightbox does not fall under any of those enumerated under Class “O”. If SMI and
NEMI reprinted Pearl and Dean’s technical drawings for sale to the public, then there would
be no doubt that they would have been guilty of the copyright infringement.
 Pearl and Dean’s president himself admitted that the light box was neither a literary nor an artistic
work, but an engineering or marketing invention.
 As held in Kho v. Court of Appeals, trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one another.
o 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.
o 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.
o 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.

ISSUE #2: SHOULD THE LIGHT BOX BE REGISTERED SEPARATELY AND PROTECTED BY A
PATENT ISSUED BY THE BUREAU OF PATENTS TRADEMARKS AND TECHNOLOGY TRANSFER
(NOW INTELLECTUAL PROPERTY OFFICE) — IN ADDITION TO THE COPYRIGHT OF THE
ENGINEERING DRAWINGS? – YES.
 No patent, no protection. Patent is a primordial requirement in effectively and legally precluding

others from copying and profiting from the invention. As held in Creser Precision Systems, Inc.
vs. CA, “there can be no infringement of a patent until a patent has been issued, since whatever
right one has to the invention covered by the patent arises alone from the grant of patent.”
 Balancing of interests: "The patent system thus embodies a carefully crafted bargain for
encouraging the creation and disclosure of new useful and non-obvious advances in technology
and design, in return for the exclusive right to practice the invention for a number of years. The
inventor may keep his invention secret and reap its fruits indefinitely. In consideration of its
disclosure and the consequent benefit to the community, the patent is granted. An exclusive
enjoyment is guaranteed him for 17 years, but upon the expiration of that period, the knowledge
of the invention inures to the people, who are thus enabled to practice it and profit by its use."
 Three-fold purpose of the patent system:

o Patent law seeks to foster and reward invention
o It promotes disclosures of inventions to stimulate further innovation and to permit the
public to practice the invention once the patent expires
o The stringent requirements for patent protection seek to ensure that ideas in the public
domain remain there for the free use of the public.
 Patent vs. Copyright:
o The copyright of the book, if not pirated from other works, would be valid without regard
to the novelty or want of novelty of its subject matter. The novelty of the art or thing
described or explained has nothing to do with the validity of the copyright. To give to the
author of the book an exclusive property in the art described therein, when no
examination of its novelty has ever been officially made, would be a surprise and a
fraud upon the public. That is the province of letters patent, not of copyright. The
claim to an invention of discovery of an art or manufacture must be subjected to
the examination of the Patent Office before an exclusive right therein can be
obtained; and a patent from the government can only secure it.
o The difference between the two things, letters patent and copyright, may be illustrated by
reference to the subjects just enumerated. Take the case of medicines. Certain mixtures
are found to be of great value in the healing art. If the discoverer writes and publishes
a book on the subject (as regular physicians generally do), he gains no exclusive
right to the manufacture and sale of the medicine; he gives that to the public. If he
desires to acquire such exclusive right, he must obtain a patent for the mixture as
a new art, manufacture or composition of matter. He may copyright his book, if he
pleases; but that only secures to him the exclusive right of printing and publishing
his book. So of all other inventions or discoveries.
ISSUE #3: CAN THE OWNER OF A REGISTERED TRADEMARK LEGALLY PREVENT OTHERS
FROM USING SUCH TRADEMARK IF IT IS A MERE ABBREVIATION OF A TERM DESCRIPTIVE OF
HIS GOODS, SERVICES OR BUSINESS? – IN THIS CASE, NO.

 In Faberge vs. IAC , the Court ruled, “One who has adopted and used a trademark on his
goods does not prevent the adoption and use of the same trademark by others for products
which are of a different description."
 Here, Pearl and Dean’s trademark certificate covered only the use of stationeries. It did not cover
the creation of electrically operated backlit advertising units and the sale of advertising spaces
thereon.
ISSUE #4: COULD PEARL AND DEAN’S ALLEGATION OF UNFAIR COMPETITION PROSPER? –
NO.
 If at all, Pearl and Dean could have filed a case of unfair competition against SMI even if it had no
registration. The Court noticed that Pearl and Dean raised this in this RTC, but that the RTC did
not find SMI and NEMI liable for it. However, Pearl and Dean never revived this claim on appeal.
 Nonetheless, SC proceeded to rule that there was no unfair competition in this case.
o There was no evidence that P & D’s use of "Poster Ads" was distinctive or well-known.
Pearl and Dean’s expert witnesses himself had testified in the Court of Appeals that
"Poster Ads” was too generic a name. So it was difficult to identify it with any company,
honestly speaking." This crucial admission by its own expert witness 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.
o Doctrine of Secondary Meaning: This fact also prevented the application of the doctrine
of secondary meaning. "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 (because it
is geographically or otherwise descriptive) might nevertheless have been used for so long
and so exclusively by one producer with reference to his article that, 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. The admission by petitioner’s own expert witness that he himself
could not associate "Poster Ads" with petitioner P & D because it was "too generic"
definitely precluded the application of this exception.
RULING
WHEREFORE, the petition is hereby DENIED and the decision of the Court of Appeals dated May 22,
2001 is AFFIRMED in toto.

OLANO v. LIM ENG CO

March 14, 2016 | J. Reyes
Petitioner(s): SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO, AND JAP FUK HAI
Respondent(s): LIM ENG CO
Doctrine:
Ownership of copyrighted material is shown by proof of originality and copyrightability
Copyright infringement is thus committed by any person who shall use original literary or artistic works, or
derivative works, without the copyright owner's consent in such a manner as to violate the foregoing copy
and economic rights. For a claim of copyright infringement to prevail, the evidence on record must
demonstrate:
○ (1) ownership of a validly copyrighted material by the complainant; and
○ (2) infringement of the copyright by the respondent.
To constitute infringement, the usurper must have copied or appropriated the original work of an author or
copyright proprietor, absent copying, there can be no infringement of copyright.
CASE SUMMARY
Trigger Word(s): hatch door
FACTS: LEC was invited by the architects of the Manansala Project (Project), a high-end residential
building in Rockwell Center, Makati City, to submit design/drawings and specifications for interior and
exterior hatch doors. LEC complied by submitting shop plans/drawings embodying the designs and
specifications required for the metal hatch doors. LEC installed interior and exterior hatch doors for the
Project's 23rd to 41st floors. Metrotech installed interior and exterior hatch doors for the Project's 23rd to
41st floors. LEC demanded Metrotech to cease from infringing its intellectual property rights. LEC filed a
Complaint-Affidavit before the DOJ against the petitioners for copyright infringement. DOJ stated that
there was no probable cause. CA reversed.
HELD: The SC ruled that there was no copyright infringement. Certificate of Registration Nos. 1-2004-13
and 1-2004-14 pertain to class work "I" under Section 172 of R.A. No. 8293 which covers "illustrations,
maps, plans, sketches, charts and three-dimensional works relative to geography, topography,
architecture or science." As such, LEC's copyright protection there under covered only the hatch door
sketches/drawings and not the actual hatch door they depict.
Anent, LEC's Certificate of Registration Nos. H-2004-566 and H-2004-567, the Court finds that the
ownership thereof was not established by the evidence on record because the element of copyrightability
is absent. "Ownership of copyrighted material is shown by proof of originality and copyrightability." Here,
evidence negating originality and copyrightability as elements of copyright ownership was satisfactorily
proffered against LEC's certificate of registration. A hatch door, by its nature is an object of utility. It is
thus by nature, functional and utilitarian serving as egress access during emergency. It is not primarily an
artistic creation but rather an object of utility designed to have aesthetic appeal . It is intrinsically a useful
article, which, as a whole, is not eligible for copyright
 In the present case, LEC's hatch doors bore no design elements that are physically and
conceptually separable, independent and distinguishable from the hatch door itself.
 More importantly, they are already existing articles of manufacture sourced from different
suppliers. Being articles of manufacture already in existence, they cannot be deemed as original
creations.
o [T]he hinges on LEC's "hatch doors" have no ornamental or artistic value. The gaskets
were merely procured from a company named Penko and not the original creation of
LEC.

FACTS
● LEC was invited by the architects of the Manansala Project (Project), a high-end residential
building in Rockwell Center, Makati City, to submit design/drawings and specifications for interior
and exterior hatch doors. LEC complied by submitting shop plans/drawings embodying the
designs and specifications required for the metal hatch doors.
● LEC installed interior and exterior hatch doors for the 7th to 22nd floors of the Project based on
the final shop plans/drawings. It learned that Metrotech also instaled interior and exterior hatch
doors for the Project's 23rd to 41st floors.
○ LEC demanded Metrotech to cease from infringing its intellectual property rights.
● LEC was issued a Certificate of Copyright Registration and Deposit showing that it is the
registered owner of plans/drawings for interior and exterior hatch doors under Registration
Nos. 1-2004-13 and 1-2004-14, respectively.
○ LEC was issued another Certificate of Copyright Registration and Deposit showing that it
is the registered owner of plans/drawings for interior and exterior hatch doors under
Registration Nos. H-2004-566 and H-2004-567
■ R.A. No. 8293 as "original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial design, and other works
of applied art."
● The Respondent LEC filed a Complaint-Affidavit before the DOJ against the petitioners for
copyright infringement. DOJ found that there was no probable cause. CA reversed.
ISSUES + HELD
ISSUE #1: W/N the criminal information for copyright infringement against the respondents should
be withdrawn – YES
● A copyright refers to "the right granted by a statute to the proprietor of an intellectual production to
its exclusive use and enjoyment to the extent specified in the statute."
● Copyright infringement is committed by any person who shall use original literary or
artistic works, or derivative works, without the copyright owner's consent in such a
manner as to violate the foregoing copy and economic rights.
● For a claim of copyright infringement to prevail, the evidence on record must demonstrate:
○ (1) ownership of a validly copyrighted material by the complainant; and
○ (2) infringement of the copyright by the respondent.
● While both elements subsist in the records, they did not simultaneously concur so as to
substantiate infringement of LEC's two sets of copyright registrations.
ON COPYRIGHT OVER THE DRAWINGS/SKETCHES – no infringement (no copying)

● Certificate of Registration Nos. 1-2004-13 and 1-2004-14 pertain to class work "I" under
Section 172 of R.A. No. 8293 which covers "illustrations, maps, plans, sketches, charts
and three-dimensional works relative to geography, topography, architecture or science."
○ As such, LEC's copyright protection there under covered only the hatch door
sketches/drawings and not the actual hatch door they depict.
● The respondent failed to substantiate the alleged reproduction of the drawings/sketches of

hatch doors copyrighted under Certificate of Registration Nos. 1-2004-13 and 1-2004-14.
○ There is no proof that the respondents reprinted the copyrighted sketches/drawings of
LEC's hatch doors. The raid conducted by the NBI on Metrotech's premises yielded no
copies or reproduction of LEC's copyrighted sketches/drawings of hatch doors. What
were discovered instead were finished and unfinished hatch doors.
● Since the hatch doors cannot be considered as either illustrations, maps, plans, sketches, charts
and three-dimensional works relative to geography, topography, architecture or science, to be
properly classified as a copyrightable class "I" work, what was copyrighted were their
sketches/drawings only, and not the actual hatch doors themselves. To constitute infringement,
the usurper must have copied or appropriated the original work of an author or copyright
proprietor, absent copying, there can be no infringement of copyright.

● "Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only
to the expression of the idea — not the idea itself."
ON COPYRIGHT OVER THE HATCH DOORS – not copyrightable because LEC did not introduce a
unique design (no originality)
 A hatch door is a useful article which is not itself copyrightable
o LEC's hatch doors bore no design elements that are physically and conceptually
separable, independent and distinguishable from the hatch door itself.
o More importantly, they are already existing articles of manufacture sourced from
different suppliers. Being articles of manufacture already in existence, they cannot be
deemed as original creations.
 [T]he hinges on LEC's "hatch doors" have no ornamental or artistic value. The
gaskets were merely procured from a company named Penko and not the
original creation of LEC.

● Anent, LEC's Certificate of Registration Nos. H-2004-566 and H-2004-567, the Court finds
that the ownership thereof was not established by the evidence on record because the
element of copyrightability is absent.
■ Registration Nos. H-2004-566 and H-2004-56715 which is classified under
Section 172(h) of R.A. No. 8293 as "original ornamental designs or models for
articles of manufacture, whether or not registrable as an industrial design, and
other works of applied art."
○ "Ownership of copyrighted material is shown by proof of originality and
copyrightability." While it is true that where the complainant presents a copyright
certificate in support of the claim of infringement, the validity and ownership of the
copyright is presumed. This presumption, however, is rebuttable and it cannot be
sustained where other evidence in the record casts doubt on the question of ownership,
as in the instant case
● Here, evidence negating originality and copyrightability as elements of copyright ownership was
satisfactorily proffered against LEC's certificate of registration.
○ [T]he hinges on LEC's "hatch doors" have no ornamental or artistic value. The gaskets
were merely procured from a company named Penko and not the original creation of
LEC.
● A hatch door, by its nature is an object of utility. It is thus by nature, functional and utilitarian
serving as egress access during emergency. It is not primarily an artistic creation but rather an
object of utility designed to have aesthetic appeal. It is intrinsically a useful article, which, as a
whole, is not eligible for copyright.
○ The only instance when a useful article may be the subject of copyright protection is
when it incorporates a design element that is physically or conceptually separable from
the underlying product.
● In the present case, LEC's hatch doors bore no design elements that are physically and
conceptually separable, independent and distinguishable from the hatch door itself.
● More importantly, they are already existing articles of manufacture sourced from different
suppliers. Being articles of manufacture already in existence, they cannot be deemed as original
creations.
RULING: the CA erred in holding that a probable cause for copyright infringement is imputable against
the petitioners. Absent originality and copyrightability as elements of a valid copyright ownership, no
infringement can subsist.

ABS-CBN Corp. v. GOZON

March 11, 2015 | J. Leonen
Petitioner(s): ABS-CBN CORPORATION

Respondent(s): FELIPE GOZON, GILBERTO R. DUAVIT, JR., MARISSA L. FLORES, JESSICA A.
SORO, GRACE DELA PENA-REYES, JOHN OLIVER T. MANALASTAS, JOHN DOES AND JANE
DOES
Doctrine: News of the day, or a newsworthy event, as a general rule, is not subject to copyright.
However, an expression of the event, such as the capture and presentation of it in a specific medium, is
subject to copyright.
CASE SUMMARY
Trigger Word(s): Angelo dela Cruz kidnapping by Iraqis, GMA-7 used ABS-CBN’s coverage
FACTS: OFW Angelo dela Cruz was kidnapped by Iraqi militants during the Iraq War. After negotiations,
Angelo dela Cruz was freed and returned to the Philippines on July 22, 2004. Covering his return was
ABS-CBN, who lent their footage to Reuters. GMA-7 received the same footage from Reuters and aired a
snippet thereof on their channel. ABS-CBN filed a complaint for copyright infringement against certain
GMA-7 officers. The officers argued that they did not receive notice that the footage was under a special
embargo agreement. The DOJ found probable cause against GMA-7 officers Grace Dela Pena-Reyes
and John Oliver Manalastas; a later DOJ resolution added Atty. Felipe Gozon, Gilberto Duavit, Jr.,
Marissa Flores and Jessica Soho.
HELD: The SC held that the ABS-CBN’s news footage was subject to copyright, and that the GMA-7
officers potentially committed a violation of the IPC by airing said footage. The SC held that although a
newsworthy event is, as a general rule, not subject to copyright, the expression of the same – particularly
when captured and presented through a specific medium – is subject to copyright. Thus, the finding of
probable cause against Dela Pena-Reyes and Manalastas was proper. Anent the other four officers, it
was not shown that they had active participation in the copyright infringement that would justify the filing
of Information against them.
FACTS
 Sometime in July 2004 in the midst of the Iraq War, OFW Angelo dela Cruz was kidnapped by
Iraqi militants. As a condition for his release, the Iraqi militants demanded the withdrawal of
Philippine forces in Iraq. After negotiations, the government agreed to the request, and dela Cruz
was scheduled to return to the Philippines on July 22, 2004.
 As a result of the publicity surrounding the event, petitioner ABS-CBN Corporation conducted
live coverage of dela Cruz’ arrival at the Ninoy Aquino International Airport.
 As part of a special embargo agreement, ABS-CBN allowed international news service Reuters to
borrow their footage. The embargo allegedly included the prohibition: “No other Philippine
subscriber of Reuters would be allowed to use ABS-CBN footage without the latter’s consent.”
 GMA Network, Inc. (GMA-7), the network to which all the respondents belonged to, received a
live video feed of ABS-CBN’s coverage from Reuters. It immediately carried the live news feed on
its “Flash Report” program, together with its live broadcast.
o GMA-7 alleged that they did not receive any notice, or was unaware that Reuters was
airing footage from ABS-CBN. They alleged that was no requisite “No Access
Philippines” notice on the footage.
Procedural History
 On August 13, 2004, ABS-CBN filed a complaint for copyright infringement under Sections 177 &
211 of the Intellectual Property Code.

 On December 3, 2004, the Assistant City Prosecutor found probable cause to indict Grace Dela
Pena-Reyes and John Oliver Manalastas. An information for violation of the IPC was filed 14
days later.
 On January 4, 2005, respondents filed a petition for review before the Department of Justice.
DOJ Secretary Raul Gonzalez held in favor of respondents, stating that good faith may be raised
as a defense in their case. (Gonzalez Resolution)
o The Gonzalez Resolution caused a Motion to Suspend Proceedings filed by Dela Pena-
Reyes and Manalastas to be granted.
o The case was not prosecuted again until 5 years later.
 On June 29, 2010, DOJ Acting Secretary Alberto Agra issued a Resolution reversing the
Gonzalez Resolution, and found probable cause to charge Dela Pena-Reyes and Manalastas,
as well as the rest of the respondents, for violation of the IPC. (Agra Resolution) Agra argued that
good faith is a disputable presumption that must be proven in a full-blown trial.
o The matter was raised to the CA via a petition for certiorari.
 On November 9, 2010, the CA reversed the Agra Resolution and granted the petition. The
CA recognized ABS-CBN’s copyright to their footage, but held that criminal culpability for GMA-
7’s actions only attaches had they knowingly and intentionally committed the infringement.
o ABS-CBN raised the matter to the SC via a petition for review.
ISSUES + HELD
[Digester’s Note: This case is listed thrice under the syllabus, under 3 different topics. This digest focuses
on the first topic, “Scope of Copyright”, which is covered by Issue #1.]
ISSUE #1: W/N ABS-CBN’s news footage is copyrightable under the law – YES
 Petitioner ABS-CBN argues that news footage is subject to copyright, and prohibited use of
copyrighted material is punishable under the IPC.
o Anent the general rule that a “newsworthy event” is not copyrightable, ABS-CBN argues
that its footage is merely an account of dela Cruz’ return to the country, and that it is such
return, and NOT the footage, that is newsworthy, therefore making their footage
copyrightable.
 The SC agreed with ABS-CBN, and held that the footage created by ABS-CBN of dela Cruz’
return, is copyrightable and protected by the laws on copyright.
o Under the IPC: “works are protected by the sole fact of their creation, irrespective of
their mode or form of expression, as well as their content, quality and purpose.”
 These include “audiovisual works and cinematographic works and works
produced by a process analogous to cinematography or any process for making
audiovisual recordings.”
Idea/event vs. Expression: what is ‘expression?’

 GMA-7 argues on the basis of Section 175 of the IPC which states that “news of the day and
other miscellaneous facts having the character of mere items of press information” are
considered unprotected subject matter:
o The SC held that the IPC does NOT state that expression of the news of the day,
particularly when it underwent a creative process, is not entitled to protection.
 An idea or event must be distinguished from the expression of that idea or event.
o Ideas can be either abstract or concrete. It is the concrete ideas that are generally
referred to as “expression”.
o Eichel v. Marcin: “Authors may exploit facts, experiences, field of thought, and general
ideas found in another’s work, provided they do not substantially copy a concrete
form, in which the circumstances and ideas have been developed, arranged, and
put into shape.”
o National Comics Publications, Inc. v. Fawcett Publications, Inc.: “No one infringes, unless
he descends so far into what is concrete as to invade … expression.”

o Baker v. Selden: only the expression of an idea is protected by copyright, not the
idea itself.
 The SC held that news or the event itself is NOT copyrightable. However, an event can be
captured and presented in a specific medium.
o Joaquin v. Drilon: television “involves a whole spectrum of visuals and effects, video and
audio.”
o Television news footage is an expression of the news.
 International News Service v. Associated Press: “copyright protection does
extend to the reports themselves, as distinguished from the substance of the
information contained in the reports.”
“Neighboring rights”; broadcasting vs. rebroadcasting based on neighboring rights

 “Neighboring rights” are those granted to broadcasting organizations under Section 211 of the
IPC:
o SECTION 211. Scope of Right. — Subject to the provisions of Section 212, broadcasting
organizations shall enjoy the exclusive right to carry out, authorize or prevent any of
the following acts:
211.1. The rebroadcasting of their broadcasts;
211.2. The recording in any manner, including the making of films or the use of
video tape, of their broadcasts for the purpose of communication to the public of
television broadcasts of the same; and
211.3. The use of such records for fresh transmissions or for fresh recording.
o Compare to “concomitant rights” of authors under Section 177 of the IPC.
 Another set of neighboring rights come from “The International Convention for the Protection of
Performers, Producers of Phonograms and Broadcasting Organizations” a.k.a. the Rome
Convention protects the rights of broadcasting organizations in relation to their broadcasts.
o Article XIII(a): “Broadcasting organisations [sic] shall enjoy the right to authorize or
prohibit: (a) the rebroadcasting of their broadcasts”
 “Broadcasting” vs. “Rebroadcasting”
o Section 202.7 of the IPC: broadcasting is “the transmission by wireless means for the
public reception of sounds or of images or of representations thereof; such transmission
by satellite is also ‘broadcasting’ where the means for decrypting are provided to the
public by the broadcasting organization or with its consent.”
o Article (3) of the Rome Convention: “the simultaneous broadcasting by one broadcasting
organization of the broadcast of another broadcasting organization.”
 ITC: The SC held that broadcasting organizations are entitled to several rights and the protection
of the same under the IPC. The SC agreed with the CA, which had held that ABS-CBN holds a
copyright of its news footage. GMA-7 is thus liable under the IPC.
o News as expressed in a video footage is entitled to copyright protection. Broadcasting
organization have not only copyright on but also neighboring rights over their
broadcasts.
o Copyrightability of a work is different from fair use of a work for purposes of news
reporting.
OTHER ISSUES (for quick reference only):
#2 – W/N there was fair use of the broadcast material – REMANDED TO TRIAL COURT
 Respondents allege that the news footage was only 5 seconds long, thus falling under fair use.
o ABS-CBN claims that the footage aired for 2 minutes and 40 seconds.
 “Fair use” is covered by Section 185 of the IPC via the four-factor test:
o 185.1. The fair use of a copyrighted work for criticism, comment, news reporting, teaching
including multiple copies for classroom use, scholarship, research, and similar purposes

is not an infringement of copyright. . . . In determining whether the use made of a work in

any particular case is fair use, the factors to be considered shall include:
a. The purpose and character of the use, including whether such use is of a
commercial nature or is for non-profit educational purposes;
b. The nature of the copyrighted work;
c. The amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and
d. The effect of the use upon the potential market for or value of the
copyrighted work.
 The SC held that given the insufficiency of evidence, determination of whether the footage is
subject to fair use is best left to the trial court.
o HOWEVER, the SC held that the mere act GMA-7’s rebroadcast without ABS-CBN’s
consent gives rise to the probability that a crime was committed under the IPC.
#3 – W/N lack of knowledge that a material is copyrighted is a defense against copyright

infringement – NO
 Respondents argues that live broadcasts of news require a different treatment in terms of good
faith, intent, and knowledge to commit infringement.
 The SC rejected the arguments of the respondents, holding that they are experienced in the
broadcasting business, and knew that there would be consequences in carrying ABS-CBN’s
footage.
o The cited cases of Habana and Columbia Pictures both did not require knowledge of the
infringement to constitute a violation of the copyright. One does not need to know that
he or she is copying a work without consent to violate copyright law.
o Knowledge of infringement is only material when a person is charged of aiding and
abetting a copyright infringement under Section 217 of the IPC.
#4 – W/N good faith is a defense in a criminal prosecution for violation of the IPC – NO
 Respondents argue that copyright infringement is malum in se, in that the act of copying is not
what is being prohibited, but the injurious effect from the same.
 The SC held that infringement under the IPC is malum prohibitum.
o General Rule: acts punished under a special law are malum prohibitum.
 When an act is prohibited by a special law, it is considered injurious to public
welfare, and the performance of the prohibited act is the crime itself.
o The Philippines does NOT statutorily support good faith as a defense.
 Thus, unless clearly provided in the law, offenses involving infringement of copyright
protections should be considered malum prohibitum.
o HOWEVER, proof beyond reasonable doubt is still needed for criminal prosecutions,
including those under the IPC.
#5 – W/N GMA-7’s corporate officers and employees are liable for infringement under the IPC – NO
 Insofar as Grace Dela Pena-Reyes and John Oliver Manalastas are concerned, the SC agreed
with the DOJ findings of probable cause that they infringed on ABS-CBN’s copyrighted material.
o Dela Pena-Reyes is the Head of the News Operation; Manalastas is the Program
Manager. The SC held that they cannot escape liability as the news control room was
under their direct control and supervision.
o The SC found that it is contrary to human experience and logic that experienced
employees of an established broadcasting network would be remiss in their duty in
ascertaining if the said footage had an embargo.
 The corporate officers were previously added and charged alongside Dela Pena-Reyes and
Manalastas in the Agra Resolution are: Atty. Felipe Gozon, Gliberto Duavit, Marissa Flores, and
Jessica Soho.
o Insofar as they are concerned, the SC held that the DOJ committed grave abuse of
discretion in filing the Information against the four, despite lack of proof of actual
participation in the crime.

 “Active participation” requires a showing of overt physical acts or intention to

commit such acts.
 By comparison, “intent or good faith” are simply inferences from acts proven to
have or have not been comitted.
o There must be a showing of active participation, not simply a constructive one. Nor
was there conspiracy on their part.
RULING: DOJ Resolution ordering the filing of Information finding probable cause for infringement of
copyright under the IPC reinstated against Grace Dela Pena-Reyes and John Oliver Manalastas of GMA-
7.
FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE SERVICE CO., INC.

March 27, 1991 | J. O'Connor
Petitioner(s): FEIST PUBLICATIONS, INC.

Respondent(s): RURAL TELEPHONE SERVICE COMPANY, INC.
Doctrine: Copyright treats facts and factual compilations in a wholly consistent manner. Facts, whether
alone or as part of a compilation, are not original and therefore may not be copyrighted. A factual
compilation is eligible for copyright if it features an original selection or arrangement of facts, but the
copyright is limited to the particular selection or arrangement. In no event may copyright extend to the
facts themselves.
CASE SUMMARY
Trigger Word(s): Telephone directory
FACTS: Rural sued Feist Publications for copyright infringement after Feist copied, without license, used information
from Rural's white pages in making its own directory. Feist's directory showed 1,309 listings that were identical with
the listings in Rural's directory. Rural argues that it had copyright over the compilation of facts, thus, Feist may be
held liable for infringement in copying information from Rural's compilation.
HELD: To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of
constituent elements of the work that are original. While Rural has copyright over the compilation it made, it does not
mean that the facts (names, towns, and telephone numbers), therein included are also protected. The sine qua non of
copyright is originality. Facts cannot be original and therefore may not be copyrighted. The copyright over
compilations of facts extends only to the original selection or arrangement of facts. In this case, the Court held that
Feist is not guilty of infringement as it did not copy elements of Rural's work that are original to it. The Court did not
even find that the manner of selection and arrangement made use by Rural in making its directory original. Rural did
not show any modicum of creativity in such selection and arrangement. Rural's directory contained only the most
basic information which its subscribers provide upon application and the alphabetical arrangement it used is typical,
traditional and expected of directories.
FACTS
● Rural Telephone Service Company, Inc., is a certified public utility that provides telephone
service to several communities in northwest Kansas. As a condition of its monopoly franchise,
Rural publishes a typical telephone directory, consisting of white pages and yellow pages.
○ The white pages list in alphabetical order the names of Rural's subscribers, together with
their towns and telephone numbers.
○ The yellow pages list Rural's business subscribers alphabetically by category and feature
classified advertisements of various sizes.
■ Rural distributes its directory free of charge to its subscribers but earns revenue
by selling yellow pages advertisements.
● Feist Publications, Inc., is a publishing company that specializes in area-wide telephone
directories. Unlike a typical directory, which covers only a particular calling area, Feist's area-wide
directories cover a much larger geographical range, reducing the need to call directory assistance
or consult multiple directories.

○ Like Rural's directory, Feist's is distributed free of charge and includes both white pages
and yellow pages. Feist and Rural compete vigorously for yellow pages advertising.
● Rural, as sole provider of telephone service in its area, obtains subscriber information easily by
requiring their subscribers to provide Rural with their names and addresses.
● Meanwhile, Feist had to approach the telephone companies operating in the area and offer to
pay for the right to use its white page listings.
● Of the 11 telephone companies operating in northwest Kansas, only Rural refused to license its
listings to Feist. As this would leave a hole in its area-wide directory, Feist used Rural's white
page listing without Rural's consent.
● Feist hired personnel to investigate the 4,395 listings that fell within its area. As a result, Feist's
listings included the individual's street address, while most of Rural's did not. Despite these
additions, there remained 1,309 (out of 46,878) listings that were identical with that of Rural's.
Further, 4 of these were fictitious listings that Rural had inserted into its directory to detect
copying.
● Rural sued Feist for copyright infringement in the District Court of Kansas.
○ Rural asserted that Feist could not use the information contained in Rural's white pages –
Feist should conduct its own door-to-door telephone survey to discover the same
● Feist maintained that what Rural wants is impractical and unnecessary because the information it
copied were beyond the scope of copyright protection.
● The District Court ruled in favor of Rural, explaining that "[c]ourts have consistently held that
telephone directories are copyrightable" and citing a string of lower court decisions. CA affirmed.
ISSUES + HELD
ISSUE #1: W/N the copyright in Rural's directory protects the names, towns and telephone
numbers copied by Feist – NO
 It is an established proposition that facts are not copyrightable, however, it is similarly true that
compilations of facts are generally copyrightable.
o There is an undeniable tension between these two propositions. Many compilations
consist of nothing but raw data i.e., wholly factual information not accompanied by any
original written expression. Common sense tells us that 100 uncopyrightable facts do not
magically change their status when gathered together in one place. Yet copyright law
seems to contemplate that compilations that consist exclusively of facts are potentially
within its scope.
Why facts are not copyrightable:

 The sine qua non of copyright is originality. To qualify for copyright protection, a work must be
original to the author.
o Original means only that the work was independently created by the author (as opposed
to copied from other works), and that it possesses at least some minimal degree of
creativity. Originality does not signify novelty; a work may be original even though it
closely resembles other works so long as the similarity is fortuitous, not the result of
copying.
 In The Trade-Mark Cases, the Court explained that originality requires
independent creation plus a modicum of creativity
 In Burrow-Gilles, the Court described copyright as being limited to "original
intellectual conceptions of the author"
 "No one may claim originality as to facts." This is because facts do not owe their origin to an
act of authorship. The distinction is one between creation and discovery: The first person to
find and report a particular fact has not created the fact; he or she has merely discovered its
existence.
How factual compilations may be copyrightable (possess originality)

 The compilation author typically chooses which facts to include, in what order to place them, and
how to arrange the collected data so that they may be used effectively by readers. These choices
as to selection and arrangement, so long as they are made independently by the compiler and

entail a minimal degree of creativity, are sufficiently original that Congress may protect such
compilations through the copyright laws.4
However, the mere fact that a work is copyrighted does not mean that every element of the work
may be protected. Copyright protection extends only to the original components of the work.
 Originality remains the sine qua non of copyright; accordingly, copyright protection may extend
only to those components of a work that are original to the author.
 Thus, if the compilation author clothes facts with an original collocation of words, he or she may
be able to claim a copyright in this written expression. Others may copy the underlying facts from
the publication, but not the precise words used to present them.
o Ex. Harper & Row: President Ford could not prevent others from copying bare historical
facts from his autobiography, but he could prevent others from copying his "subjective
descriptions and portraits of public figures."
 Thus, if the selection and arrangement are original, these elements of the work are eligible for
copyright protection. No matter how original the format, however, the facts themselves do not
become original through association.
o Facts and ideas may be divorced from the context imposed by the author, and restated or
reshuffled by second comers, even if the author was the first to discover the facts or to
propose the ideas
This inevitably means that the copyright in a factual compilation is thin.

 Notwithstanding a valid copyright, a subsequent compiler remains free to use the facts contained
in another's publication to aid in preparing a competing work, so long as the competing work does
not feature the same selection and arrangement.
Not unfair. Primary objective of copyright is not to reward author but to promote progress of art
and science
 It may seem unfair that much fruit of the compiler's labor may be used by others without
compensation. However, the primary objective of copyright is not to reward the labor of authors,
but "[t]o promote the Progress of Science and useful Arts." To this end, copyright assures
authors the right to their original expression, but encourages others to build freely upon
the ideas and information conveyed by a work.
o "Sweat of the brow" or "industrious collection" – doctrine, the underlying notion of which
was that copyright was a reward for the hard work that went into compiling facts
 The "sweat of the brow" doctrine had numerous flaws , the most glaring being that
it extended copyright protection in a compilation beyond selection and
arrangement—the compiler's original contributions—to the facts themselves.
 As applied to a factual compilation, assuming the absence of original written expression, only the
compiler's selection and arrangement may be protected; the raw facts may be copied at will. This
result is neither unfair nor unfortunate. It is the means by which copyright advances the progress
of science and art.
Doctrinal tension resolved: Copyright treats facts and factual compilations in a wholly consistent
manner. Facts, whether alone or as part of a compilation, are not original and therefore may not be
copyrighted. A factual compilation is eligible for copyright if it features an original selection or arrangement
of facts, but the copyright is limited to the particular selection or arrangement. In no event may copyright
extend to the facts themselves.
The 1909 Copyright Act – amendmended to emphasize requirement of "originality"
 Congress tried to minimize confusion by deleting the specific mention of "directories . . . and other
compilations" in § 5 of the 1909 Act. This section had led some courts to conclude that directories
were copyrightable per se and that every element of a directory was protected.
4
Thus, even a directory that contains absolutely no protectible written expression, only facts, meets the constitutional minimum for
copyright protection if it features an original selection or arrangement.

 In its place, Congress enacted two new provisions. First, to make clear that compilations
were not copyrightable per se, Congress provided a definition of the term "compilation."
Second, to make clear that the copyright in a compilation did not extend to the facts
themselves, Congress enacted § 103.
 § 101 of the 1976 Act defines a "compilation" in the copyright sense as "(1) a work formed by
the collection and assembling of preexisting materials or of data (2) that are selected,
coordinated, or arranged (3) in such a way that the resulting work as a whole constitutes an
original work of authorship"
o In this way, the plain language indicates that not every collection of facts receives copyright
protection. Otherwise, there would be a period after "data."
o The third requirement emphasizes that a compilation, like any other work, is copyrightable only if it
satisfies the originality requirement ("an original work of authorship")
o The second requirement instructs courts that, in determining whether a fact-based work is an
original work of authorship, they should focus on the manner in which the collected facts have been
selected, coordinated, and arranged. This is a straightforward application of the originality
requirement.
 The statute dictates that the principal focus should be on whether the selection,
coordination, and arrangement are sufficiently original to merit protection
 Use of the phrase "In such a way" – implies that some ways will trigger copyright, but
others will not
 § 103 of the Act: The copyright in a compilation . . . extends only to the material contributed by
the author of such work, as distinguished from the preexisting material employed in the work, and
does not imply any exclusive right in the preexisting material.
o "The subject matter of copyright includes compilations but that copyright protects only the
author's original contributions—not the facts or information conveyed.
 The revisions explain with painstaking clarity that copyright requires originality, § 102(a); that
facts are never original, § 102(b); that the copyright in a compilation does not extend to the facts it
contains, § 103(b); and that a compilation is copyrightable only to the extent that it features an
original selection, coordination, or arrangement, § 101.
ISSUE #2: W/N Feist is guilty of copyright infringement - NO
 To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and
(2) copying of constituent elements of the work that are original.
First element
 The first element is not at issue here; Feist appears to concede that Rural's directory,
considered as a whole, is subject to a valid copyright because it contains some foreword text,
as well as original material in its yellow pages advertisements.
Second element - Did Feist, by taking 1,309 names, towns, and telephone numbers from Rural's white
pages, copy anything that was "original" to Rural?
 Certainly, the raw data does not satisfy the originality requirement. Rural may have been the first
to discover and report the names, towns, and telephone numbers of its subscribers, but this data
does not " 'ow[e] its origin' " to Rural. Rather, these bits of information are uncopyrightable facts;
they existed before Rural reported them and would have continued to exist if Rural had never
published a telephone directory.
 The question that remains is whether Rural selected, coordinated, or arranged these
uncopyrightable facts in an original way. The Court held in the negative.
 The selection, coordination, and arrangement of Rural's white pages do not satisfy the minimum
constitutional standards for copyright protection. As mentioned at the outset, Rural's white pages
are entirely typical. In preparing its white pages, Rural simply takes the data provided by its
subscribers and lists it alphabetically by surname.
o No original selection: Rural publishes the most basic information—name, town, and
telephone number—about each person who applies to it for telephone service. This is
"selection" of a sort, but it lacks the modicum of creativity necessary to transform
mere selection into copyrightable expression. Rural expended sufficient effort to

make the white pages directory useful, but insufficient creativity to make it
original.
 It is also arguable that Rural did not truly "select" to publish the names and
telephone numbers of its subscribers; rather, it was required to do so by the
Kansas Corporation Commission as part of its monopoly franchise. Accordingly,
this selection was rather dictated by state law, not by Rural.
o Nor can Rural claim originality in its coordination and arrangement of facts.
 The white pages do nothing more than list Rural's subscribers in alphabetical
order. There is nothing remotely creative about arranging names alphabetically in
a white pages directory. It is an age-old practice, firmly rooted in tradition and so
commonplace that it has come to be expected as a matter of course.
 We conclude that the names, towns, and telephone numbers copied by Feist were not original to
Rural and therefore were not protected by the copyright in Rural's combined white and yellow
pages directory. Because Rural's white pages lack the requisite originality, Feist's use of the
listings cannot constitute infringement.
RULING: The judgment of the Court of Appeals is Reversed.

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Intellectual Property Law 1

V. Copyright and Related Rights – B.5. Scope of Copyright

Petitioner(s): FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC.

Name of Digest Maker

MAIN ISSUE + HELD

Name of Digest Maker

AS APPLIED IN THIS CASE:

OTHER ISSUES + HELD

RULING: Petition is dismissed.

Name of Digest Maker

UNITED FEATURE v. MUNSINGWEAR

Petitioner(s): United Feature Syndicate, Inc.

Name of Digest Maker

Petitioner(s): Jessie Ching

Name of Digest Maker

CA Decision (regarding second issue)

Name of Digest Maker

Name of Digest Maker

RULING: The instant petition is hereby DENIED for lack of merit.

Name of Digest Maker

Petitioner(s): PEARL & DEAN (PHIL.), INCORPORATED

Doctrine: The main holding of the court in relation to the topic

Name of Digest Maker

Name of Digest Maker

ISSUE #1: IF THE ENGINEERING OR TECHNICAL DRAWINGS OF AN ADVERTISING DISPLAY

o A trademark is any visible sign capable of distinguishing the goods (trademark) or

Name of Digest Maker

 No patent, no protection. Patent is a primordial requirement in effectively and legally precluding

 Three-fold purpose of the patent system:

 Patent vs. Copyright:

Name of Digest Maker

Name of Digest Maker

OLANO v. LIM ENG CO

Ownership of copyrighted material is shown by proof of originality and copyrightability

Name of Digest Maker

ON COPYRIGHT OVER THE DRAWINGS/SKETCHES – no infringement (no copying)

● The respondent failed to substantiate the alleged reproduction of the drawings/sketches of

Name of Digest Maker

Name of Digest Maker

ABS-CBN Corp. v. GOZON

Petitioner(s): ABS-CBN CORPORATION

Name of Digest Maker

Idea/event vs. Expression: what is ‘expression?’

Name of Digest Maker

“Neighboring rights”; broadcasting vs. rebroadcasting based on neighboring rights

OTHER ISSUES (for quick reference only):

Name of Digest Maker

is not an infringement of copyright. . . . In determining whether the use made of a work in

#3 – W/N lack of knowledge that a material is copyrighted is a defense against copyright

Name of Digest Maker

 “Active participation” requires a showing of overt physical acts or intention to

FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE SERVICE CO., INC.

Petitioner(s): FEIST PUBLICATIONS, INC.

Name of Digest Maker

Why facts are not copyrightable:

How factual compilations may be copyrightable (possess originality)

Name of Digest Maker

This inevitably means that the copyright in a factual compilation is thin.

Name of Digest Maker

Name of Digest Maker

RULING: The judgment of the Court of Appeals is Reversed.

Name of Digest Maker

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