CHING V. SALINAS, SR. (G.R. NO.

 161295)

Facts: Petitioner Ching is a maker and manufacturer of a utility model, Leaf Spring
Eye Bushing for Automobile, for which he holds certificates of copyright registration.
Petitioner’s request to the NBI to apprehend and prosecute illegal manufacturers of his
work led to the issuance of search warrants against respondent Salinas, alleged to be
reproducing and distributing said models in violation of the IP Code. Respondent moved to
quash the warrants on the ground that petitioner’s work is not artistic in nature and is a
proper subject of a patent, not copyright. Petitioner insists that the IP Code protects a work
from the moment of its creation regardless of its nature or purpose. The trial court quashed
the warrants. Petitioner argues that the copyright certificates over the model are prima
facie evidence of its validity. CA affirmed the trial court’s decision.

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

Ruling: (1) NO. As gleaned from the specifications appended to the application for a
copyright certificate filed by the petitioner, the said Leaf Spring Eye Bushing for Automobile
and Vehicle Bearing Cushion are merely utility models. As gleaned from the description of
the models and their objectives, these articles are useful articles which are defined as one
having an intrinsic utilitarian function that is not merely to portray the appearance of the
article or to convey information. Plainly, these are not literary or artistic works. They are
not intellectual creations in the literary and artistic domain, or works of applied art. They
are certainly not ornamental designs or one having decorative quality or value. Indeed,
while works of applied art, original intellectual, literary and artistic works are
copyrightable, useful articles and works of industrial design are not. A useful article may be
copyrightable only if and only to the extent that such design incorporates pictorial, graphic,
or sculptural features that can be identified separately from, and are capable of existing
independently of the utilitarian aspects of the article. In this case, the bushing and cushion
are not works of art. They are, as the petitioner himself admitted, utility models which may
be the subject of a patent.

(2) NO.  No copyright granted by law can be said to arise in favor of the petitioner despite
the issuance of the certificates of copyright registration and the deposit of the Leaf Spring
Eye Bushing and Vehicle Bearing Cushion. Indeed, in Joaquin, Jr. v.Drilon and Pearl &
Dean (Phil.), Incorporated v. Shoemart, Incorporated, the Court ruled that:
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or
independent right granted by the statute, and not simply a pre-existing right regulated by
it. Being a statutory grant, the rights are only such as the statute confers, and may be
obtained and enjoyed only with respect to the subjects and by the persons, and on terms
and conditions specified in the statute. Accordingly, it can cover only the works falling
within the statutory enumeration or description.

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

discharge his burden, the applicant may present the certificate of registration covering the
work or, in its absence, other evidence. A copyright certificate provides prima
facie evidence of originality which is one element of copyright validity. It constitutes prima
facie evidence of both validity and ownership and the validity of the facts stated in the
certificate.
PEARL & DEAN PHIL INC. VS. SHOEMART- Trademark, Copyright and Patents
Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the goods or
services of an enterprise and shall include a stamped or marked container of goods. The scope of a
copyright is confined to literary and artistic works which are original intellectual creations in the
literary and artistic domain. Patentable inventions 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.

FACTS: Pearl and Dean is a corporation in the manufacture of advertising display units
also known as light boxes, which were manufactured by Metro Industrial Services. A
copyright Registration was obtained in 1981. These were marketed in the name of "Poster
Ads". They also applied for a registration of trademark with the Bureau of Patents in 1983,
but was only approved in 19988. In 1985, petitioner had  n agreement with respondent
Shoemart Inc (SMI) to install these light boxes in their Makati and Cubao branch, Only the
Makati branch was able to sigh the agreement. In 1986, the contract was rescinded
unilaterally by SMI, and instead contracted with Metro Industrial Services. They installed
these lightboxes in different SM city branches, including Cubao and Makati, with
association with North Edsa Marketing Inc (NEMI), SMI's sister company. Petitioner
requested SMI and NEMI to put down their installations of the light boxes, and payment of
compensatory damages worth P20M. Claiming that respondents failed to comply, they filed
a case for infringement of trademark and copyright, unfair competition and damages. RTC
ruled in favor of petitioner, but CA reversed.

ISSUES: (1) Whether there was a copyright infringement: (2) Whether there was a patent
infringement; (3) Whether there was a trademark infringement; (4) Whether there was
unfair competition

RULING: No to all. (1) Copyright is a statutory right, subject to the terms and conditions
specified in the statute. Therefore, it can only cover the works falling within the statutory
enumeration or description. Since the copyright was classified under class "O" works,
which includes "prints, pictorial illustrations, advertising copies, labels, tags and box
wraps," and does not include the light box itself. A lightbox, even admitted by the president
of petitioner company, was neither a literary nor an artistic work but an engineering or
marketing invention, thus not included under a copyright.
(2) Petitioner was not able to secure a patent for its lightboxes, and cannot legally prevent
anyone from manufacturing or commercially using the same. Patent has a three-fold
purpose: a) to foster and reward invention; b) promotes disclosures of invention and permit
public to use the same upon expiration; c) stringent requirements for patent protection to
ensure in the public domain remain there for free use of the public. Since petitioner was
not able to go through such examination, it cannot exclude others from manufacturing, or
selling such lightboxes. No patent, no protection.
(3) The certificate of registration issued by the Director of Patents gives exclusive right to
use its own symbol only to the description specified in the certificate. It cannot prevent
others to use the same trademark with a different description.
(4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and Dean,
thus it cannot be considered to use such term to be unfair competition against the
petitioner.