IPL: CASES ON COPYRIGHT

Laktaw vs. Paglinawan As early as 1918, the Supreme Court enunciated that a
44 Phil. 855 (1918) person who published a Spanish-Tagalog dictionary and
G.R. No. L-11937 copied the equivalents, definitions and different meanings
given in another author’s Spanish-Tagalog dictionary,
Doctrine although making some additions of his own and some
unimportant changes in the examples to illustrate the
Article 7 of the Law of January 10, 1879, on Intellectual meanings of the words, has violated the intellectual
Property:Nobody may reproduce another person's work property rights of other author. The Supreme Court
without the owner's consent, even merely to annotate or reasoned that although words are not the property of
add anything to it, or improve any edition thereof. anybody, their definitions, the example that explain their
sense and the manner of expressing their different
Facts meanings, may constitute special work.

Laktaw is the registered owner and author of a literary

work entitled Diccionario Hispano-Tagalog (Spanish-
Tagalog Dictionary) published in the City of Manila in 1889
by the printing establishment La Opinion.Paglinawan
without the consent of Laktaw, reproduced said literary
work, improperly copied the greater part thereof in the
work published by him and entitled DiccionariongKastila-
Tagalog (Spanish-Tagalog Dictionary).

The act of Pagliwanan is a violation of article 7 of the Law

of January 10, 1879, on Intellectual Property, caused
irreparable injuries to Laktaw who was surprised when, on
publishing his new work entitled Diccionario Tagalog-
Hispano (Tagalog-Spanish Dictionary) he learned of the
fact, and (4) that the damages occasioned to him by the
publication of Paglinawan's work amounted to $10,000.
Laktaw prayed the court to order the Paglinawan to
withdraw from sale all stock of the work of Paglinawan to
pay him the sum of $10,000, with costs.

Paglinawan in his answer denied generally each and every

allegation of the complaint and prayed the court to
absolve him from the complaint.

Issue

Whether or not Paglinawan violated Article 7 of the

Intellectual Property Law (1879)?

Held

Yes, Paglinawan violated Article 7 of Intellectual Property

Law.

It is not necessary that a work should be an improper copy

of another work previously published. It is enough that
another's work has been reproduced without the consent
of the owner, even though it be only to annotate, add
something to it, or improve any edition thereof.
Ching v Salinas
Doctrine:
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.
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;
they are considered automotive spare parts and pertain
to technology. They aver that the models are not original,
and as such are the proper subject of a patent, not
copyright.
On the other hand, 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.
Held:
(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.
Note: Copyright, in the strict sense of the term, is purely a
statutory right. Thus, it can cover only the works falling
within the statutory enumeration or description.
Ownership of copyrighted material is shown by: (1) proof
of originality and (2) copyrightability. However, in this
case the subject matter is not copyrightable being not of
the same kind and nature as the works enumerated in
Section 172 of IPC.
“SEC. 172. Literary and Artistic Works. 172.1. Literary and
artistic works, hereinafter referred to as works, are
original intellectual creations in the literary and artistic
domain protected from the moment of their creation and
shall include in particular:
(h) Original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial
design, and other works of applied art.”
Related to the provision is Section 171.10, which provides
that a work of applied art is an artistic acreation with
utilitarian functions or incorporated in a useful article,
whether made by hand or produced on an industrial scale.
But, 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 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.
Manly Sportswear vs Dadodette
Doctrine:
No presumption of validity is created where other
evidence exist that may cast doubt on the copyright
validity. Hence, where there is sufficient proof that the
copyrighted products are not original creations but are
readily available in the market under various brands, as in
this case, validity and originality will not be presumed and
the trial court may properly quash the issued warrant for
lack of probable cause.
Facts:
not be presumed and the trial court may properly quash
the issued warrant for lack of probable cause.
Besides, no copyright accrues in favor of MANLY despite
issuance of the certificates of registration and deposit16
pursuant to Section 2, Rule 7 of the Copyrights Safeguards
and Regulations which states:
“Sec. 2 Effects of Registration and Deposit of Work. The
registration and deposit of the work is purely for
recording the date of registration and deposit of the work
and shall not be conclusive as to copyright ownership or
the term of the copyrights or the rights of the copyright
owner, including neighboring rights.”

Special investigator Salcedo of the NBI applied for a At most, the certificates of registration and deposit issued
search warrant before the RTC of QC, based on the by the National Library and the Supreme Court Library
information that Dadodette Enterprises were in serve merely as a notice of recording and registration of
possession of goods, the copyright of which belonged to the work but do not confer any right or title upon the
Manly Sportswear. After finding reasonable grounds that registered copyright owner or automatically put his work
there were indeed violations of Sectiions 172 and 217 of under the protective mantle of the copyright law. It is not
RA 8293, RTC judge Estrada issued a search warrant. a conclusive proof of copyright ownership. As it is, non-
registration and deposit of the work within the prescribed
Dadodette moved to quash and annul the search warrant period only makes the copyright owner liable to pay a
on the ground that the requisites for its issuance have not fine.
been complied with and that the sporting goods in the
name of Manly are common and ordinary, hence not
among the classes of work protected under Section 172 of
RA 8293. The trial court granted the motion to quash on
the ground that the products of Manly do not appear to
be original creations and were being created and
manufactured by different companies locally and abroad
under various brands, and therefore unqualified for
protection under Section 172 of RA 8293. Moreover,
MANLY’s certificates of registrations were issued only in
2002, whereas there were certificates of registrations for
the same sports articles which were issued earlier than
MANLY’s, thus negating the claim that its copyrighted
products were original creations.

Issue:

WON the copyrighted products of Manly are original

creations subject to the protection of RA 8293.

Held:

NO. The copyright certificates issued in favor of MANLY

constitute merely prima facie evidence of validity and
ownership. However, no presumption of validity is
created where other evidence exist that may cast doubt
on the copyright validity. Hence, where there is sufficient
proof that the copyrighted products are not original
creations but are readily available in the market under
various brands, as in this case, validity and originality will
Joaquin vs Drilon
Facts:
BJ Productions, Inc (BJPI) is a holder of a Certificate of
Copyright no. M922 issued on January 28, 1971 of “Rhoda
and Me” which is a dating show aired from 1970 to 1977.
It submitted to the National Library an addendum its
certificate of copyright specifying the show’s format and
style of presentation. While watching the television, its
President, Francisco Joaquin saw on RPN Channel 9 the
episode on “It’s a Date” produced by IXL Productions. He
wrote a letter to IXL’s president Gabriel Zosa informing
him that BJPI has a copyright of the same format as shown
on their “It’s a Date” show in their “Rhoda and Me” show.
Zosa sought to register IXL’s copyright to their first
episode of “It’s a Date” to the National Library. Petitioner
filed a complaint in violation of PD No. 49 against the
respondent before the RTC of Quezon City. Respondent
sought a review of the resolution from the Asst. City
Prosecutor before the Department of Justice. Sec. of
Justice Franklin Drilon directed to move for dismissal of
the case against the respondents and denied the
petitioner’s motion for reconsideration hence this petition
before the Supreme Court.
Issue:
Whether or not the format or mechanics of the
petitioner’s television show is entitled to a copyright
protection.
Ruling:
The Supreme Court held that the format of a show is not
copyrightable as provided by Section 2 of PD no. 49
otherwise known as the Decree on Intellectual Property
which enumerates the classes of work that are covered by
the copyright protection. Similarly, RA 8293, the
Intellectual Property Code of the Philippines provides that
format or mechanics of a television show is not included
in the list of the protected work by the copyright law of
the Philippines. PD 49 enumerates the works subject to
copyright protection which refers to finished works and
not on concepts. It does not extend to an idea, procedure,
process, system, method or operation, concept, principles
or discovery regardless of the form to which it is
described, explained, and illustrated or embodied in the
work.
PEARL AND DEAN VS SHOEMART
FACTS:
Pearl & Dean (Phil), Inc. is a corporation engaged in the
manufacture of advertising display units called light
boxes. In January 1981, Pearl & Dean was able to acquire
copyrights over the designs of the display units. In 1988,
their trademark application for “Poster Ads” was
approved; they used the same trademark to advertise
their light boxes.
In 1985, Pearl & Dean negotiated with Shoemart, Inc.
(SM) so that the former may be contracted to install light
boxes in the ad spaces of SM. Eventually, SM rejected
Pearl & Dean’s proposal.
Two years later, Pearl & Dean received report that light
boxes, exactly the same as theirs, were being used by SM
in their ad spaces. They demanded SM to stop using the
light boxes and at the same time asked for damages
amounting to P20 M. SM refused to pay damages though
they removed the light boxes. Pearl & Dean eventually
sued SM. SM argued that it did not infringe on Pearl
& Dean’s trademark because Pearl & Dean’s trademark is
only applicable to envelopes and stationeries and not to
the type of ad spaces owned by SM. SM also averred that
“Poster Ads” is a generic term hence it is not subject to
trademark registration. SM also averred that the actual
light boxes are not copyrightable. The RTC ruled in favor
of Pearl & Dean. But the Court of Appeals ruled in favor of
SM.
ISSUE: 
Whether or not the Court of Appeals is correct.
HELD: 
Yes. The light boxes cannot, by any stretch of the
imagination, be considered as either prints, pictorial
illustrations, advertising copies, labels, tags or box wraps,
to be properly classified as a copyrightable; what was
copyrighted were the technical drawings only, and not the
light boxes themselves. In other cases, it was held that
there is no copyright infringement when one who,
without being authorized, uses a copyrighted architectural
plan to construct a structure.  This is because the
copyright does not extend to the structures themselves.
On the trademark infringement allegation, the words
“Poster Ads” are a simple contraction of the generic term
poster advertising.  In the absence of any convincing proof
that “Poster Ads” has acquired a secondary meaning in
this jurisdiction, Pearl & Dean’s exclusive right to the use
of “Poster Ads” is limited to what is written in its
certificate of registration, namely, stationeries.
Asuncion Abiva (Abiva Publishing House) v. Lourdes
Koppin Weinbrenner
Doctrine:
There is no protection in the subject of a copy righted
work. One work does not violate the copyright of another
simply because there is a similarity between the two, if
the similarity results from the fact that both deal with the
same subject or have the same common source. Similarity
alone is not sufficient to constitute infringement. It should
be, and one approved definition of a copy is “that which
comes so near to the original as to give to every person
seeing it the idea created by the original”.
Facts:
Abiva Publishing House (APH) is engaged in the
publication and sale of literary works or creations and in
the printing and selling of Christmas greeting cards
depicting Philippine scenery of local color and designs;
while the defendant is likewise engaged in the printing
and selling of Christmas cards, with Philippine views and
scenes in the name of Fil-Art. Both plaintiff’s cards and
those of defendant were all printed at the Coronet
Printing Press. Abiva sued defendant for infringement of
copyright and for damages caused by unfair competition
offered by defendant’s infringing Christmas cards.
an ordinary observer comparing the works can readily see
that one has been copied from the other. In the case of
prints and/or pictorial illustrations, an exact reproduction
is not essential to constitute infringement; the question is
whether the main design of the original has been copied.
However, in the case of the other Christmas cards
copyrighted by plaintiff and which copyright was allegedlt
infringed by defendant, the court ruled that although they
have identical contents, (they) do not have the same
arrangement and combination.
The evidence adduced that plaintiff Abiva failed to
sell 250,000 of her Christmas cards, including 4060 of the
Mayon Volcano; 6105 of the More Vinta and 8547 of the
Salambao. The court imposed the sum of from P200 to
P10,000 as damages and considering the number of cards
involved, the sum of P2000 ma be considered just, aside
from permanent injunction against defendant on those
infringing cards.

Of the Christmas cards presented as evidence, plaintiff

claims their copyrightable component parts “such as the
rice terraces, the huts, the woman, the pine trees,etc.”,
were duplicated by defendant.

The defendant denied copying plaintiff’s Christmas cards,

stating that she asked her printer, Serafin Serna, to paint
“Moro Vinta” based on her own words. She also
presented Primitivo Cabunyag, copyright examiner of
Bureau of Public Libraries who stated that the Christmas
cards were not identical.

Issue:

Whether defendant’s cards in any manner infringed the

copyrighted cards of plaintiff, violative of the provisions of
the Philippine Copyright Law, Act 3134 and offered unfair
competition to plaintiff’s Christmas cards.

Held:

Yes. Except for minor alterations and colorable variations,

defendant’s “Sunset”, “Mayon Volcano, Albay” and “Moro
Vinta” are nearly identical to plaintiff’s “Salambao”,
“Mayon Volcano, Albay”and “Moro Vinta”, respectively in
their contents, arrangements, combination and
treatment. The test of copyright infringement is whether
SAMBAR vs. LEVI STRAUSS
Venancio Sambar, doing business under the name and
style of CVS Garment Ent. vs. Levi Strauss & Co. and Levi
Strauss (Phil.) Inc.
Doctrine:
To be entitled to copyright, the thing being copyrighted
must be original, created by the author through his own
skill, labor and judgment, without directly copying or
evasively imitating the work of another.
Facts:
Private respondents, through a letter, demanded that CVS
Garment Enterprises (CVSGE) desist from using their
stitched arcuate design on the Europress jeans which
CVSGE advertised in the Manila Bulletin.
CVSGE asserted that the arcuate design on the back
pockets of the Europress jeans was different than that of
Levi’s and that CVSGE had a copyright on the design it was
using.
Private respondents allege that Levi Strauss and Co.
(LS&Co.), an internationally known clothing manufacturer,
owns the arcuate design trademark which was registered
under U.S. Trademark Registration and in the Principal
Register of trademarks with the Philippine Patent Office;
and that CVSGIC* and Venancio Sambar, without the
consent and authority of private respondents and in
infringement and unfair competition, sold and advertised,
and despite demands to cease and desist, continued to
manufacture, sell and advertise denim pants under the
brand name Europress with back pockets bearing a design
similar to the arcuate trademark of private respondents,
thereby causing confusion on the buying public,
prejudicial to private respondents goodwill and property
right.
*CVSGE already stopped operation and CVSGIC took over
when the original summons was served.
CVSGIC admitted it manufactured, sold and advertised
and was still manufacturing and selling denim pants under
the brand name of Europress, bearing a back pocket
design of two double arcs meeting in the
middle. However, it denied that there was infringement
or unfair competition because the display rooms of
department stores where Levis and Europress jeans were
sold were distinctively segregated by billboards and other
modes of advertisement. CVSGIC avers that the public
would not be confused on the ownership of such known
trademark as Levis, Jag, Europress, etc… Also, CVSGIC
claimed that it had its own original arcuate design, as
evidenced by Copyright Registration No. 1-1998, which
was very different and distinct from Levis design.
The trial court issued a writ of preliminary injunction,
which it later made permanent, restraining CVSGIC and
Sambar manufacturing, advertising and selling pants with
the arcuate design on their back pockets and ordered
CVSGIC and Sambar to pay jointly and solidarily P50, 000
as temperate and nominal damages, P10, 000 as
exemplary damages and P25, 000 as attorney’s fees and
litigation expenses.
The court granted private respondents’ MR praying for
cancellation of petitioner’s copyright registration. CA
decided in favor of private respondents.
Issue:
WON the cancellation of petitioner’s copyright is proper.
Ruling:
The award of damages and cancellation of petitioner’s
copyright are appropriate. Award of damages is clearly
provided in Section 23 of RA 166 or Trade Mark Law while
cancellation of petitioners copyright finds basis on the fact
that the design was a mere copy of that of private
respondents trademark. 
To be entitled to copyright, the thing being copyrighted
must be original, created by the author through his own
skill, labor and judgment, without directly copying or
evasively imitating the work of another.
However, the Court agrees with petitioner that it was
error for the CA to affirm the award of nominal damages
combined with temperate damages by the RTC. What
respondents are entitled to is an award for temperate
damages, not nominal damages. For although the exact
amount of damage or loss cannot be determined with
reasonable certainty, the fact that there was infringement
means they suffered losses for which they are entitled to
moderate damages. We find that the award of P50, 000 as
temperate damages fair and reasonable, considering the
circumstances herein as well as the global coverage and
reputation of private respondents LS&Co. and Levi Strauss
(Phil.), Inc.
G.R. No. 76193 November 9, 1989
UNITED FEATURE SYNDICATE, INC., petitioner,  otherwise known as the "Decree on Intellectual Property”.
vs.
MUNSINGWEAR CREATION MANUFACTURING
COMPANY, respondent.
Petitioner’s claim:
Petitioner is asking for the cancellation of the registration
of trademark CHARLIEBROWN (Registration No. SR. 4224)
in the name of respondent MUNSINGWEAR, alleging that
petitioner is damaged by the registration of the trademark
CHARLIE BROWN of T-Shirts under Class 25 with the
Registration No. SR-4224 dated September 12, 1979 in the
name of Munsingwear Creation Manufacturing Co., Inc.,
on the following grounds: (1) that respondent was not
entitled to the registration of the mark CHARLIE BROWN,
& DEVICE at the timeof application for registration; (2)
that CHARLIE BROWN is a character creation or a pictorial
illustration, the copyright to which is exclusively owned
worldwide by the petitioner; (3) that as the owner of the
pictorial illustration CHARLIEBROWN, petitioner has since
1950 and continuously up to the present, used and
reproduced the same to the exclusion of others; (4) that
the respondent-registrant has no bona fide use of the
trademark in commerce in the Philippines prior to its
application for registration.
Respondent's Claim
It uses, the trademark "CHARLIE BROWN" & "DEVICE" on
children's wear such as T-shirts, undershirts, sweaters,
brief and sandos, in class 25; whereas “CHARLIE BROWN"
is used only by petitioner as character, in a pictorial
illustration used in a comic strip appearing in newspapers
and magazines. It has no trademark significance and
therefore respondent-registrant's use of “CHARLIE
BROWN" & "DEVICE" is not in conflict with the petitioner's
use of “CHARLIE BROWN" -Relied on the ruling on October
2, 1984 in which the Director of the Philippine Patent
Office rendered a decision in this case holding that a
copyright registration like that of the name and likeness of
CHARLIE BROWN may not provide a cause of action for
the cancellation of a trademark registration.
Issue:
WHETHER OR NOT A COPYRIGHTED CHARACTER MAY
NOT BE APPROPRIATED AS ATRADEMARK BY ANOTHER
UNDER PRESIDENTIAL DECREE NO. 49.S.C.
Ruling:
The petitioner is impressed with merit. Since the name
"CHARLIE BROWN" and its pictorial representation were
covered by a copyright registration way back in 1950 the
same are entitled to protection under PD No. 49,
Aside from its copyright registration, petitioner is also the
owner of several trademark registrations and application
for the name and likeness of "CHARLIE BROWN" which is
the duly registered trademark and copyright of petitioner
United Feature Syndicate Inc. as early as 1957 and
additionally also as TV SPECIALS featuring the "PEANUTS"
characters "CHARLIE BROWN”. It is undeniable from the
records that petitioner is the actual owner of said
trademark due to its prior registration with the Patent's
Office.
MUNSINGWEAR obtained a trademark registration for
“CHARLIE BROWN” for T-shirts. United Feature Syndicate
filed a case for the cancelation of the said trademark
registration arguing that: 1) Munsingwear was not
entitled to the registration of the mark “CHARLIE
BROWN;” 2) that “CHARLIE BROWN” is a character
creation or a pictorial illustration, the copyright to which
is exclusively owned worldwide by United Feature
Syndicate; and 3) that as the owner of the pictorial
illustration “CHARLIE BROWN,” it has since 1950 and
continuously up to the present, used and reproduced the
same to the exclusion of others. The Supreme Court ruled
that the name “CHARLIE BROWN” and its pictorial
representation were covered by a copyright registration in
favor of United Features Syndicate way back in 1950 and
the same are entitled to protection under PD No. 49 (the
Copyright Law then). Aside from its copyright registration,
United Features Syndicate is also the owner of several
trademark registrations and application for the name and
likeness of “CHARLIE BROWN” which is the duly registered
trademark and copyright of United Feature Syndicate as
early as 1957 and additionally also as TV SPECIALS
featuring the “PEANUTS” character “CHARLIE BROWN."
Columbia Pictures Inc. vs CA
GR No. 110318 the Philippines may maintain an action in our courts upon
any cause of action, provided that the subject matter and
The mere institution and prosecution or defense of a suit, the defendant are within the jurisdiction of the court.
particularly if the transaction which is the basis of the suit
took place out of the State, do not amount to the doing of No general rule or governing principles can be laid down
business in the State. as to what constitutes “doing” or “engaging in” or
“transacting business. The true tests, however, seem to
Facts: be whether the foreign corporation is continuing the body
or substance of the business or enterprise for which it was
Columbia Pictures, et al. had lodged a formal complaint organized. Based on Art 133 of the Corporation Code,
with the NBI, vis-à-vis their anti-film piracy drive. petitioners are not barred from maintaining the present
Eventually, the NBI obtained a search warrant against action.
Sunshine Video seeking to seize pirated videotapes,
among others. The NBI carried out the seizure, and filed a As a general rule a foreign corporation will not be
return with the trial court. However, the trial court regarded as doing business in the State simply because it
eventually granted a motion to lift the order of the search enters into contracts with residents of the State. It has
warrant – the contention was that the master tapes of the been held that the act of a foreign corporation in
copyrighted films from which the pirated films were engaging an attorney to represent it in a federal court is
allegedly copied were never presented in the proceedings not doing business within the scope of the minimum
for the issuance of the search warrants. The CA dismissed contact test. The mere institution and prosecution or
the appeal brought before it. Hence, Columbia Pictures, et defense of a suit, particularly if the transaction which is
al. brought the case before the SC. Sunshine Video the basis of the suit took place out of the State, do not
contended that Columbia Pictures, et al. being foreign amount to the doing of business in the State.
corporations doing business in the Philippines should have
a license in order to maintain an action in Philippine
courts – and without such license, it had no right to ask
for the issuance of a search warrant. Sunshine Video
submitted that the fact that Columbia Pictures, et al. were
copyright owners or owners of exclusive rights of
distribution in the Philippines of copyrighted motion
pictures, and the fact that Atty. Domingo had been
appointed as their attorney-in-fact constituted “doing
business in the Philippines.”  As foreign corporations
doing business in the Philippines, Section 133 of Batas
Pambansa Blg. 68, or the Corporation Code of the
Philippines, denies them the right to maintain a suit in
Philippine courts in the absence of a license to do
business. Consequently, they have no right to ask for the
issuance of a search warrant.

Issue:

WON Columbia Pictures, et al. have legal capacity to sue

in the Philippines

Held:

YES. Under the Sec 133 of the Corporation Code, no

foreign corporation shall be permitted to transact
business in the Philippines, as this phrase is understood
under the Corporation Code, unless it shall have the
license required by law, until it complies with the law in
transacting business here, it shall not be permitted to
maintain any suit in local courts. However, such license is
not necessary if it is not engaged in business in the
Philippines. Any foreign corporation not doing business in HABANA VS. ROBLES

The court finds that respondent Robles' act of lifting from
the book of petitioners substantial portions of discussions
and examples, and her failure to acknowledge the same in
her book is an infringement of petitioners' copyrights.
FACTS: Pacita Habana et al., are authors and copyright
owners of duly issued of the book, College English For
Today (CET). Respondent Felicidad Robles was the author
of the book Developing English Proficiency (DEP).
Petitioners found that several pages of the respondent's
book are similar, if not all together a copy of petitioners'
book. Habana et al. filed an action for damages and
injunction, alleging respondent’s infringement of
copyrights, in violation of P.D. 49. They allege respondent
Felicidad C. Robles being substantially familiar with the
contents of petitioners' works, and without securing their
permission, lifted, copied, plagiarized and/or transposed
certain portions of their book CET.
On the other hand, Robles contends that the book DEP is
the product of her own intellectual creation, and was not
a copy of any existing valid copyrighted book and that the
similarities may be due to the authors' exercise of the
"right to fair use of copyrighted materials, as guides."
The trial court ruled in favor of the respondents, absolving
them of any liability.  Later, the Court of Appeals rendered
judgment in favor of respondents Robles and Goodwill
Trading Co., Inc. In this appeal, petitioners submit that the
appellate court erred in affirming the trial court's decision.
ISSUE: Whether or not Robles committed infringement in
the production of DEP.
HELD: YES. A perusal of the records yields several pages of
the book DEP that are similar if not identical with the text
of CET. The court finds that respondent Robles' act of
lifting from the book of petitioners substantial portions of
discussions and examples, and her failure to acknowledge
the same in her book is an infringement of petitioners'
copyrights.
In the case at bar, the least that respondent Robles could
have done was to acknowledge petitioners Habana et. al.
as the source of the portions of DEP. The final product of
an author's toil is her book. To allow another to copy the
book without appropriate acknowledgment is injury
enough.
NBI-Microsoft Corporation vs. Hwang
TOPIC:
Intellectual Property Law – Copyright Infringement
FACTS:
Microsoft is a foreign corporation that owns copyright and
trademark to several computer software. Respondents
are officers of Beltron, a domestic corporation. The
companies entered into a Licensing Agreement which
authorized Beltron, to reproduce and install no more than
one (1) copy of microsoft software on each computer
system hard disk and the distribution and licensing of
copies of the Microsoft Product as reproduced and/or
acquired from Authorized Replicator or Authorized
Distributor in object code form to end users. The
Agreement also authorized the companies to terminate
the contract if the other fails to comply with any of the
Agreements provisions. Microsoft terminated the
Agreement effective for Beltron’s non-payment of
royalties.
Microsoft learned that respondents were illegally copying
and selling Microsoft software.
Microsoft applied for search warrants against respondents
in the Regional Trial Court which granted the said
warrants. NBI searched the premises of Beltron and
confiscated the subject articles. Basing it from the articles
seized, Microsoft filed a complaint before the Department
of Justice (DOJ) with copyright infringement under Section
5(A) in relation to Section 29 of Presidential Decree No.
49, as amended, (PD 49) and with unfair competition
under Article 189(1) of the Revised Penal Code.
The city prosecutor dismissed the complaint, prompting
the petitioner to appeal to the resolution to the Secretary
of Justice. Petitioner alleged that from the time the
license agreement was terminated, respondent/s is/are
no longer authorized to copy/distribute/sell Microsoft
products. However, respondent/s averred that the case is
civil in nature, not criminal, considering that the case
stemmed only out of the desire of complainant to collect
from them the unpaid royalties and that the contract
entered into by the parties cannot be unilaterally
terminated. Furthermore, Beltron contends that
respondents the articles seized from them were either
owned by others, purchased from legitimate sources, or
not produced by Microsoft. Ultimately, the SOJ affirmed
the resolution of the city prosecutor. The ruling was that
the obligations between the parties is civil and not
criminal considering that Microsoft merely sought the
issuance of Search Warrants to pressure Beltron to pay its
obligation under the Agreement, and the validity of
Microsofts termination of the Agreement must first be
resolved by the proper court. On the other hand, the DOJ
ruled that Microsoft failed to present evidence proving
that what were obtained from respondents were
counterfeit Microsoft products.
ISSUE:
Whether there is probable cause to charge the
respondents for copyright infringement and unfair
competition
RULING:
YES. The term probable cause does not mean actual and
positive cause nor does it import absolute certainty. It is
merely based on opinion and reasonable belief. Thus, a
finding of probable cause does not require an inquiry into
whether there is sufficient evidence to procure a
conviction. It is enough that it is believed that the act or
omission complained of constitutes the offense charged.
Precisely, there is a trial for the reception of evidence of
the prosecution in support of the charge.
The gravamen of copyright infringement is not merely the
unauthorized manufacturing of intellectual works but
rather the unauthorized performance of any of the acts
covered by Section 51. Hence, any person who performs
any of the acts under Section 5 without obtaining the
copyright owners prior consent renders himself civilly and
criminally liable for copyright infringement. We held in
Columbia Pictures, Inc. v. Court of Appeals:
Infringement of a copyright is a trespass on a private
domain owned and occupied by the owner of the
copyright, and, therefore, protected by law, and
infringement of copyright, or piracy, which is a
synonymous term in this connection, consists in the doing
by any person, without the consent of the owner of the
copyright, of anything the sole right to do which is
conferred by statute on the owner of the copyright.
(Emphasis supplied)
1
Section 5. Copyright shall consist in the exclusive right;
(A) To print, reprint, publish, copy, distribute, multiply, sell, and
make photographs, photo-engravings, and pictorial illustrations of
the works;
(B) To make any translation or other version or extracts or
arrangements or adaptations thereof; to dramatize it if it be a non-
dramatic work; to convert it into a non-dramatic work if it be a
drama; to complete or execute if it be a model or design;
(C) To exhibit, perform, represent, produce, or reproduce, the work
in any manner or by any method whatever for profit or otherwise; it
not reproduced in copies for sale, to sell any manuscript or any
record whatsoever thereof;
(D) To make any other use or disposition of the work consistent with
the laws of the land.
Significantly, under Section 5(A), a copyright owner is
vested with the exclusive right to copy, distribute,
multiply, andsell his intellectual works.
On the other hand, the elements of unfair competition
under Article 189(1)[43] of the Revised Penal Code are:
(a) That the offender gives his goods the general
appearance of the goods of another manufacturer or
dealer;
(b) That the general appearance is shown in the (1) goods
themselves, or in the (2) wrapping of their packages, or in
the (3) device or words therein, or in (4) any other feature
of their appearance[;]
(c) That the offender offers to sell or sells those goods or
gives other persons a chance or opportunity to do the
same with a like purpose[; and]
(d) That there is actual intent to deceive the public or
defraud a competitor.
The element of intent to deceive may be inferred from
the similarity of the goods or their appearance.
Being the copyright and trademark owner of Microsoft
software, Microsoft acted well within its rights in filing the
complaint before DOJ on the incriminating evidence
obtained from Beltron. Hence, it was highly irregular for
the DOJ to hold that Microsoft sought the issuance of the
search warrants and the filing of the complaint merely to
pressure Beltron to pay its overdue royalties to Microsoft.
There is no basis for the DOJ to rule that Microsoft must
await a prior “resolution from the proper court of
whether or not the Agreement is still binding between the
parties.” Beltron has not filed any suit to question
Microsoft’s termination of the Agreement. Microsoft can
neither be expected nor compelled to wait until Beltron
decides to sue before Microsoft can seek remedies for
violation of its intellectual property rights.
Furthermore, the articles seized from Beltron are
counterfeit per se because Microsoft does not (and could
not have authorized anyone to produce such CD installers
The copying of the genuine Microsoft software to produce
these fake CDs and their distribution are illegal even if the
copier or distributor is a Microsoft licensee. As far as
these installer CD-ROMs are concerned, the Agreement
and the alleged question on the validity of its termination
is immaterial to the determination of Beltron’s liability for
copyright infringement and unfair competition. Beltron’s
defense that the box of CD installers found in their
possession was only left to them for safekeeping is not
tenable.
 Doctrine:

Statutory copyright is conferred by the statute when the

work is made under the IPC. Hence, publication is not
required. Copyright subsists from the moment of creation.
Acquisition of copyright is not contingent or dependent on
any formality or registration.

Facts:

A petition for review was filed by Unilever assailing the

decision of the CA which affirmed the issuance by the
court a quo of the writ of preliminary injunction against it.
The writ enjoined Unilever from using and airing certain
TV commercials for its laundry products which was
claimed to be identical or similar to P&G’s double tug or
tac-tac key visual.

P&G alleged that as early as 1982 a P&G subsidiary in Italy

used a key visual (tac-tac demonstration showing the
fabric being held by both hands and stretched sideways)
in the advertisement of its laundry detergent and
bleaching products. The said key visual was substantially
and materially imitated by Unilever on July 24, 1993,
when it started airing a 60 secs. commercial of its Breeze
Powerwhite laundry product called Porky. While, on July
15, 1994 P&G Phil. aired the same italian commercial and
merely dubbed the language in Filipino. Thus, P&G filed a
complaint for injunction with damages and a prayer for
TRO and/or writ of preliminary injunction against
Unilever.

Issue:

W/N P&G is entitled to the relief claimed for even if the

said “key visual” has not yet been registered with the
National Library.

Held:

Yes. Sec. 2 of PD 49 stipulates that the copyright for a

work or intellectual creation subsists from the moment of
its creation. Accordingly the creator acquires copyright for
his work right upon its creation. The exercise and
enjoyment of such copyright is not contingent or
dependent on any formality or registration. Hence P&G is
entitled to the injunctive relief prayed for in its complaint.

Unilever Philippines (PRC), Inc. vs. CA

G.R. No. 119280
J. Corona