Filipino Society of Composers vs.

Tan, 148 SCRA 461 (1987)

Facts Filipino Society of Composers, Authors and Publishers Inc. is organization under the Corporation
Law of the Philippines and registered with the Securities and Exchange Commission. The association is
the owner of certain musical compositions among which are the songs entitled: "Dahil Sa Iyo",
"Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness Of You." Benjamin Tan
on the other hand is the operator of a restaurant known as "Alex Soda Foundation and Restaurant"
where a combo with professional singers, hired to play and sing musical compositions to entertain and
amuse customers therein, were playing and singing the above-mentioned compositions without any
license or permission from
the appellant to play or sing the same. Accordingly, appellant demanded from the appellee payment of
the necessary license fee for the playing and singing of aforesaid compositions but the demand was
ignored.
Tans Argument: That the mere singing and playing of songs and popular tunes even if they
are copyrighted do not constitute an infringement (Record on Appeal, p. 11; Resolution, CA-G.R. NO.
46373- R, Rollo, pp. 32-36) under the provisions of Section 3 of the Copyright Law (Act 3134 of the
Philippine Legislature).
Issues
1. Whether or not the playing and singing of musical compositions which have been copyrighted under
the provisions of the Copyright Law (Act 3134) inside the establishment of Benjamin Tan constitute a
public performance for profit within the meaning and contemplation of the Copyright Law of the
Philippines?
2. Assuming that there were indeed public performances for profit, whether or not Benjamin Tan can be
held liable therefore.
Held
1st issue: Yes. The playing of music in dine and dance establishment which was paid for by the public
in purchases of food and drink constituted "performance for profit" within a Copyright Law (Buck, et al.
v. Russon No. 4489 25 F. Supp. 317).
2nd issue: The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative Order No. 3
(as amended, dated September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office
relating to the Registration of Copyright Claims' promulgated pursuant to Republic Act 165, provides
among other things that an intellectual creation should be copyrighted thirty (30) days after its
publication, if made in Manila, or within the (60) days if made elsewhere, failure of which renders such
creation public property." (Santos v. McCullough Printing Company, 12 SCRA 324-325 [1964]. Indeed, if
the general public has made use of the object sought to be copyrighted for thirty (30) days prior to the
copyright application the law deems the object to have been donated to the public domain and the
same can no longer be copyrighted.
A careful study of the records reveals that the song "Dahil Sa Iyo" which was registered on April 20,
1956 (Brief for Appellant, p. 10) became popular in radios, juke boxes, etc. long before registration
(TSN, May 28, 1968, pp. 3-5; 25) while the song "The Nearness Of You" registered on January 14, 1955
(Brief for Appellant, p. 10) had become popular twenty five (25) years prior to 1968, (the year of the
hearing) or from 1943 (TSN, May 28, 1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin" and
"Sapagkat Kami Ay Tao Lamang" both registered on July 10, 1966, appear to have been known and sang
by the witnesses as early as 1965 or three years before the hearing in 1968. The testimonies of the
witnesses at the hearing of this case on this subject were unrebutted by the appellant. (Ibid, pp. 28; 29
and 30).
Maglalang Santos vs., McCullough Printing, 12 SCRA 321 (1964)
Facts Mauro Malalang Santos filed an action for damages for unauthorized use, adaptation and
appropriation by the MCCULLOUGH PRINTING COMPANY of the intellectual creation or artistic design of
a Christmas card by him (Mauro Maglalang Santos) based on Article 721 and 722 of the Civil Code of
the Philippines. The Christmas card depicts a Philippine rural Christmas time scene consisting of a
woman and a child in a nipa hut adorned with a star-shaped lantern and a man astride a carabao,

beside a tree, underneath which appears the plaintiff's pen name, Malang. The complaint alleges that
plaintiff Mauro Malang Santos designed for former Ambassador Felino Neri, for his personal Christmas
Card greetings for the year 1959, the artistic motif in question. The following year the defendant
McCullough Printing Company, without the knowledge and authority of plaintiff, displayed the very
design in its album of Christmas cards and offered it for sale, for a price. For such
Rommel A. Tio Page 11 of 21 Intellectual Property Law
unauthorized act of defendant, plaintiff suffered moral damages to the tune of P16,000.00, because it
has placed plaintiff's professional integrity and ethics under serious question and caused him grave
embarrassment before Ambassador Neri. He further prayed for the additional sum of P3,000.00 by way
of attorney's fee.
Issues
(1) Whether plaintiff is entitled to protection, notwithstanding the, fact that he has not copyrighted his
design? (2) Whether the publication is limited, so as to prohibit its use by others, or it is general
publication? (3) Whether the provisions of the Civil Code or the Copyright Law should apply in the case?
Law
Art. 721. By intellectual creation, the following persons acquire ownership: (1) The author with regard
to his literary, dramatic, historical, legal, philosophical, scientific or other work; (2) The composer; as to
his musical composition;
(3) The painter, sculptor, or other artist, with respect to the product of his art;
(4) The scientist or technologist or any other person with regard to his discovery or invention. (n)
Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of the preceding article, shall have
the ownership of their creations even before the publication of the same. Once their works are
published, their rights are governed by the Copyright laws. The painter, sculptor or other artist shall
have dominion over the product of his art even before it is copyrighted.
The scientist or technologist has the ownership of his discovery or invention even before it is patented.
(n)
Held
1st issue: The Supreme Court found that plaintiff is not entitled to a protection, the provision of the
Civil Code, notwithstanding. Paragraph 33 of Patent Office Administrative Order No. 3 (as amended
dated September 18, 1947) entitled "Rules of Practice in the Philippines Patent Office relating to the
Registration of Copyright Claims" promulgated pursuant to Republic Act 165, provides, among others,
that an intellectual creation should be copyrighted thirty (30) days after its publication, if made in
Manila, or within sixty (60) day's if made elsewhere, failure of which renders such creation public
property. In the case at bar, even as of this moment, there is no copyright for the design in question.
2nd issue: We are not also prepared to accept the contention of appellant that the publication of the
design was a limited one, or that there was an understanding that only Ambassador Neri should, have
absolute right to use the same. In the first place, if such were the condition then Ambassador Neri
would be the aggrieved party, and not the appellant. In the second place, if there was such a limited
publication or prohibition, the same was not shown on the face of the design. When the purpose is a
limited publication, but the effect is general publication, irrevocable rights thereupon become vested in
the public, in consequence of which enforcement of the restriction becomes impossible (Nutt vs.
National Institute, 31 F [2d] 236). It has been held that the effect of offering for sale a dress, for
example manufactured in accordance with an original design which is not protected by either a
copyright or a patent, is to divest the owner of his common law rights therein by virtue of the
publication of a 'copy' and thereafter anyone is free to copy the design or the dress (Fashion Originators
Guild of America v. Federal Trade Commission, 114 F [2d] 80). When Ambassador Neri distributed 800
copies of the design in controversy, the plaintiff lost control of his design and the necessary implication
was that there had been a general publication, there having been no showing of a clear indication that
a limited publication was intended. The author of a literary composition has a light to the first
publication thereof. He has a right to determine

whether it shall be published at all, and if published, when, where, by whom, and in what form. This
exclusive right is confined to the first publication. When once published, it is dedicated to the public,
and the author loses the exclusive right to control subsequent publication by others, unless the work is
placed under the protection of the copyright law. (See II Tolentino's Comments on the Civil Code, p. 433,
citing Wright v. Eisle 83 N.Y. Supp. 887.)
3rd issue: Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of the preceding article,
shall have the ownership of their creations even before the publication of the same. Once their works
are published, their rights are governed by the Copyright laws. The painter, sculptor or other artist
shall have dominion over the product of his art even before it is copyrighted.
The scientist or technologist has the ownership of his discovery or invention even before it is patented.
(n)
Columbia Pictures vs. CA, 261 SCRA 144 (1996)
Facts Columbia Pictures lodged a formal complaint with the National Bureau of Investigation for
violation of PD No. 49, as amended, and sought its assistance in their anti-film piracy drive. Agents of
the NBI and private researchers made discreet surveillance on various video establishments in Metro
Manila including Sunshine Home Video Inc. owned and operated by Danilo A. Pelindario. On November
14, 1987, NBI Senior Agent Lauro C. Reyes applied for a search warrant with the court a quo against
Sunshine seeking the seizure, among others, of pirated video tapes of copyrighted films all of which
were enumerated in a list attached to the application; and, television sets, video cassettes and/or laser
disc recordings equipment and other machines and paraphernalia used or intended to be used in the
unlawful exhibition, showing, reproduction, sale, lease or disposition of videograms tapes in the
premises above described. In the hearing of the application, NBI Senior Agent Lauro C. Reyes, upon
questions by the court a quo, reiterated in substance his averments in his affidavit. His testimony was
corroborated by another witness, Mr. Rene C. Baltazar. Atty. Rico V. Domingos deposition was also
taken. On the basis of the affidavits and depositions of NBI Senior Agent Lauro C. Reyes, Rene C.
Baltazar and Atty. Rico V. Domingo, Search Warrant No 87-053 for violation of Section 56 of PD No. 49,
as amended, was issued by the court a quo. NBI Agents found and seized various video tapes of duly
copyrighted motion pictures/films owned or exclusively distributed by private complainants, and
machines, equipment, television sets, paraphernalia, materials, accessories all of which were included
in the receipt for properties accomplished by the raiding team. Copy of the receipt was furnished
and/or tendered to Mr. Danilo A. Pelindario, registered owner-proprietor of Sunshine Home Video.
Issues Whether or not absence such registration, as in this case, there was no right created, hence, no
infringement under PD 49 as amended?
Held As correctly pointed out by private complainants-oppositors, the Department of Justice has
resolved this legal question as far back as December 12, 1978 in its Opinion No. 191 of the then
Secretary of Justice Vicente Abad Santos which stated that Sections 26 and 50 do not apply to
cinematographic works and PD No. 49 had done away with the registration and deposit of
cinematographic works and that even without prior registration and deposit of a work which may be
entitled to protection under the Decree, the creator can file action for infringement of its rights. He
cannot demand, however, payment of damages arising from infringement. The same opinion stressed
that the requirements of registration and deposit are thus retained under the Decree, not as conditions
for the acquisition of copyright and other rights, but as prerequisites to a suit for damages. The
statutory interpretation of the Executive Branch being correct, is entitled (to) weight and respect.
Furthermore, a closer review of Presidential Decree No. 49 reveals that even with respect to works
which are required under Section 26 thereof to be registered and with copies to be deposited with the
National Library, such as books, including composite and cyclopedic works, manuscripts, directories
and gazetteers; and periodicals, including pamphlets and newspapers; lectures, sermons, addresses,
dissertations prepared for oral delivery; and letters, the failure to comply with said requirements does
not deprive the copyright owner of the right to sue for infringement. Such non-compliance merely
limits the remedies available to him and subjects him to the corresponding sanction. The reason for

this is expressed in Section 2 of the decree which prefaces its enumeration of copyrightable works with
the explicit statement that the rights granted under this Decree shall, from the moment of creation,
subsist with respect to any of the following classes of works. This means that under the present state
of the law, the copyright for a work is acquired by an intellectual creator from the moment of creation
even in the absence of registration and deposit. As has been authoritatively clarified: The registration
and deposit of two complete copies or reproductions of the work with the National Library within three
weeks after the first public dissemination or performance of the work, as
provided for in Section 26 (P.D. No. 49, as amended), is not for the purpose of securing a copyright of
the work, but rather to avoid the penalty for non-compliance of the deposit of said two copies and in
order to recover damages in an infringement suit.
COLUMBIA PICTURES INC. v CA
[237 SCRA 367 (1994)]
Nature
: Petitions for review on certiorari of the decision of the CA.
Ponente
: J. Vitug
Facts:

07 April 1998: NBI filed with the RTC of Pasig 3 applications for SW againstprivate respondent (Tube
Video Enterprises Edward C. Cham; BloomingRose Tape Center Ma. Jajorie T. Uy; Video Channel
Lydia Nabong) chargingthem with violations of Sec. 56 of PD 49 (Decree on the Protection of Intellectual
Property) as amended by PD 1988.

RTC Judge Austria consolidated the 3 applications and conducted a jointhearing where she made a
personal examination of the applicant (NBI AgentReyes) and his witnesses.

Finding just and probable cause, Judge Austria issued the search warrants.

Private Respondents filed their Motion to Quash the SW citing as groundsthat there was no probable
cause; the films in question are not protected byPD 1988 in that they were never registered in the
National Library as acondition precedent to the availment of the protection; the Motion
PictureAssociation of America have not proven nor established their ownership overthe films; etc.

Judge Austria reversed her former stand initially finding probable cause forthe issuance of the search
warrants and ordered their quashal:
o
Private complainants uncertain of their ownership over the titles;
o
Complainants did not comply with the requirement that master tapesshould be presented during the
application for search warrants;
o
Complainants failed to comply with the deposit and registrationrequirements of PD 49 as amended by
PD 1988.

Judge Austria also ordered the return of the items seized by virtue of thewarrants.

CA affirmed the quashal of the SWs.

Issue
: WON the SWs were issued with probable cause.
NORatio

:BASIC REQUIREMENT for the validity of search warrants (in cases of this nature) is
the presentation of the master tapes of the copyrighted films from whichthe pirated films are supposed
to have been copied
(20
th
Century Fox FilmCorp. vs. CA, 164 SCRA 655). The essence of a copyright infringement is the similarity
or at least substantialsimilarity of the purported pirated works to the copyrighted work. Hence,
theapplicant must present to the court the copyrighted films to compare them with thepurchased
evidence of the video tapes allegedly pirated to determine whether thelatter is an unauthorized
reproduction of the former. This linkage of the copyrightedfilms to the pirated films must be established
to satisfy the requirements of probable cause. Mere allegations as to the existence of the copyrighted
films cannotserve as basis for the issuance of a search warrant.According to the CA, in which the SC
concurs:
It is not correct to say that "the basic fact" to be proven to establishprobable cause in the instant cases
is not the "unauthorized transfer"of a motion picture that has been recorded but the "sale, lease,
ordistribution of pirated video tapes of copyrighted films."In applying for the search warrants the NBI
charged violation of theentire provisions of Section 56 of P.D. No. 49 as amended by P.D.No.1988. This
included not only the sale, lease or distribution of piratedtapes but also the transfer or causing to be
transferred of any soundrecording or motion picture or other audio visual work.But even assuming, as
appellants argue, that only the sale, lease, ordistribution of pirated video tapes is involved, the fact
remains thatthere is need to establish probable cause that the tapes being sold,leased or distributed
are pirated tapes, hence the issue reverts back tothe question of whether there was unauthorized
transfer, directly orindirectly, of a sound recording or motion picture or other audio visualwork that has
been recordedPetitions denied
VENANCIO SAMBAR, doing business under the name and style of CVSGarment Enterprises,
petitioner
,
vs
. LEVI STRAUSS & CO., and LEVISTRAUSS (PHIL.), INC.,
respondents
.G.R. No. 132604. March 6, 2002Quisumbing, J.(Jeka)Facts:1.
Levi Strauss & Co., and Levi Strauss Phil, Inc., through a letter from their legalofficer, demanded that
CVS Garment Enterprises (CVSGE) desist from usingtheir stitched arcuate design on the Europress
jeans which CVSGE advertisedin the
Manila Bulletin
.
2.
Defense: Atty. Benjamin Gruba, counsel of CVSGE: the arcuate design on theback pockets of Europress
jeans was different from the design on the backpockets of Levis jeans.a.He further asserted that his
client had a copyright on the design it wasusing.
3.
Private respondents filed a complaint against Sambar, doing business underthe name and style of
CVSGE.a.Private respondents also impleaded the Director of the National Library.b.Alleged in their
complaint that Levi Strauss and Co. (LS&Co.), aninternationally known clothing manufacturer, owns the
arcuate designtrademark which was registered under U.S. Trademark Registration No.404, 248 and in
the Principal Register of trademarks with the PhilippinePatent Office under Certificate of Registration

No. 20240c.CVSGIC and Venancio Sambar, without the consent and authority of private respondents
and in infringement and unfair competition, sold andadvertised, and despite demands to cease and
desist, continued tomanufacture, sell and advertise denim pants under the brand nameEuropress
with back pockets bearing a design similar to the arcuatetrademark of private respondents, thereby
causing confusion on thebuying public, prejudicial to private respondents goodwill and propertyright.
4.
Answer: CVSGIC admitted it manufactured, sold and advertised and was stillmanufacturing and selling
denim pants under the brand name of Europress,bearing a back pocket design of two double arcs
meeting in the middle.a.However, it denied that there was infringement or unfair competitionbecause
the display rooms of department stores where Levis andEuropress jeans were sold, were distinctively
segregated by billboards andother modes of advertisement.b. CVSGIC avers that the public would not
be confused on the ownership of such known trademark as Levis, Jag, Europress, etc.. Also,
CVSGICclaimed that it had its own original arcuate design, as evidenced by
Copyright Registration No. 1-1998, which was very different and distinctfrom Levis design.
5.
TC: issued a writ of preliminary injunction enjoining CVSGIC and petitionerfrom manufacturing,
advertising and selling pants with the arcuate design ontheir back pockets.
6.
CA: affirmed
Issue:
WON there was an infringement of respondents arcuate mark.
Held:
Europress use of the arcuate design was an infringement of the Levisdesign.
Ratio:
1.
The backpocket design of Europress jeans, a double arc intersecting in themiddle was the same as
Levis mark, also a double arc intersecting at thecenter.
a.Although the trial court found differences in the two designs,these differences were not noticeable.
b. Further, private respondents said, infringement of trademark did notrequire exact
similarity.c.Colorable imitation enough to cause confusion among the public, wassufficient for a
trademark to be infringed.d.Private respondents explained that in a market research they
conductedwith 600 respondents, the result showed that the public was confused byEuropress
trademark
vis
the Levis trademark.
2.
It must be stressed that it was immaterial whether or not petitioner wasconnected with CVSGIC.a.What
is relevant is that petitioner had a copyright over the design andthat he allowed the use of the same by
CVSGIC.
3.
Private respondents assert that the lower courts found that there wasinfringement and Levis was
entitled to damages based on Sections 22 and23 of RA No. 166 otherwise known as the Trade Mark
Law,
as amended, whichwas the law then governing. Said sections define infringement and prescribethe
remedies therefor.a. Further, private respondents aver it was misleading for petitioner to claimthat the
trial court ruled that private respondents did not suffer pecuniaryloss, suggesting that the award of
damages was improper.b.According to the private respondents, the trial court did not make anysuch

ruling. It simply stated that there was no evidence that Levis hadsuffered decline in its sales because
of the use of the arcuate design byEuropress jeans.
c.
They offer that while there may be no direct proof that theysuffered a decline in sales, damages may
still be measured basedon a reasonable percentage of the gross sales of the respondents,pursuant to
Section 23 of the Trademark law.
4.
The cancellation of petitioners copyright was justified becausepetitioners copyright cannot prevail
over respondents registrationin the Principal Register of Bureau of Patents, Trademarks, andTechnology
Transfer
.a.According to private respondents, the essence of copyright registration isoriginality and a copied
design is inherently non-copyrightable.b. They insist that registration does not confer originality upon a
copycatversion of a prior design.
5.
The award of damages and cancellation of petitioners copyright areappropriate.
a.Award of damages is clearly provided in Section 23, while cancellation of petitioners copyright finds
basis on the fact that the design was a merecopy of that of private respondents trademark.
b.To be entitled to copyright, the thing being copyrighted must beoriginal, created by the author
through his own skill, labor and judgment, without directly copying or evasively imitating thework of
another