Mauro Malang Santos (Plaintiff-Appellant) vs McCulliough Printing Company (Defendant-Appellee)

Date: October 31, 1964

Ponente: Paredes, J.
Short Version:
Facts: In 1959, Santos made an artistic design for Neri for the latter's personal Christmas Card. The following year,
McCullough displayed the said design in its album of Christmas cards. Santos sued McCullough because the said act
of McCullough was not authorized by Santos.
Held: Santos did not copyright his intellectual creation within the time prescribed by the rules of the Patent Office.
His failure to do so renders his creation public property.
Facts:
- Mauro Malang Santos designed for former Ambassador Felino Neri, for the latter's personal Christmas Card
greetings for the year 1959, an artistic design which 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 Santos' pen name, Malang.
- The following year, McCullough Printing Company, displayed the aforestated design in its album of Christmas cards
and offered it for sale, for a price.
- Santos filed an action for damages against McCullough based on Arts 7211 and 7222 of the Civil Code, allegedly on
the unauthorized use, adoption and appropriation by McCullough of Santos' intellectual creation or artistic design for
a Christmas Card. Santos prayed for moral damages amounting to P16,000, and attorney's fees amounting to
P3,000.
- McCullough moved to dismiss the case arguing that the design does not contain a clear notice that it is owned by
Santos and that he prohibited its use, and that the design had never been copyrighted by Santos.
- The trial court dismissed the complaint, saying among others:
The plaintiff in this case did not choose to protect his intellectual creation by a copyright... Unless satisfactorily
explained a delay in applying for a copyright, of more than thirty days from the date of its publication, converts the
property to one of public domain.

- Santos appealed to the SC, arguing that he should be entitled to protection; and that the publication of the design
was a limited one, and that there was an understanding that only Ambassador Neri should have absolute right to use
the design.
Issue/Reasoning:
Issue: Whether Santos is entitled to protection3 (No. He did not copyright his creation within the time prescribed,
thus his creation is already public property.)
- Par 33 of Patent Office AO No. 34 promulgated pursuant to RA 1655, provides, among others, that an intellectual
creation should be copyrighted 30 days after its publication, if made in Manila, or within 60 days if made elsewhere,
failure of which renders such creation public property.
- In the case at bar, there is no copyright for the design in question.
Issue: Whether the publication is limited (No. It is a general publication.)
- If there was an understanding that only Neri could use the design, then he should be aggrieved party and not
Santos. Also, if there was such a limited publication, 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 become vested in
the public, in consequence of which enforcement of the restriction becomes impossible. When Neri distributed 800
copies of the design, Santos lost control of his design and the necessary implication is that there had been a general
publication, there having been no showing that a limited publication was intended.
- The author of a literary composition has a right to the first publication. He has a right to determine whether it shall
be published, and how it shall be published. 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.
Dispositive:
Decision affirmed.
-Elvin

1
By intellectual creation, the following persons acquire ownership: ...(3) The painter, sculptor, or other artist, with respect to the product of his art;
2
... The painter, sculptor or other artist shall have dominion over the product of his art even before it is copyrighted...
3
Note: decided under the old law, under which intellectual creations must be registered in order to be protected.
4
Rules of Practice in the Philippines Patent Office relating to the Registration of Copyright Claims
5
AN ACT CREATING A PATENT OFFICE, PRESCRIBING ITS POWERS AND DUTIES, REGULATING THE ISSUANCE OF PATENTS, AND
APPROPRIATING FUNDS THEREFOR

002. FILIPINO SOCIETY OF COMPOSERS, AUTHORS, AND PUBLISHERS, INC., plaintiff-appellant, vs. BENJAMIN
TAN, defendant-appellee.
Date: March 16, 1987
Ponente: Paras
The case in a nutshell: The Filipino Society of Composers, Authors, and Publishers, Inc. owned certain musical compositions.
Benjamin Tan operated a restaurant in which 4 of the Filipino Societys songs were performed for customers, without any license or
permission from the Filipino Society. The Filipino Society demanded from Tan payment of the license fee, but was ignored, so it filed a
complaint for infringement of copyright against him. The CFI dismissed the complaint. On appeal, the CA certified the case to the SC, as
it involved pure questions of law. The SC affirmed the CFI. The playing and singing of musical compositions which have been
copyrighted under the provisions of the Copyright Law (Act 3134) inside Tans restaurant constitute a public performance for profit
within the meaning and contemplation of the Copyright Law. The playing of music in dine and dance establishment, which is paid for by
the public in purchases of food and drink, constitutes a performance for profit: the music is performed to induce the public to
patronize the establishment and pay for the entertainment in the purchase of food and drink, and the proprietor conducts his place of
business for profit.. But even if there were indeed public performances for profit of the Filipino Societys musical compositions, Tan
cannot be said to have infringed the Copyright Law. The composers of the musical compositions had waived their right in favor of the
general public when they allowed their intellectual creations to become property of the public domain before applying for the
corresponding copyrights for the same, so they became public property and beyond the protection of the Copyright Law.
Facts:
1)

2)
3)
4)
5)
6)
7)

The Filipino Society of Composers, Authors, and Publishers, Inc. is a non-profit association of authors, composers, and
publishers duly organized under the old Corporation Law of the Philippines and registered with the Securities and Exchange
Commission. Said association is the owner of certain musical compositions, among which are the songs entitled Dahil Sa Iyo,
Sapagkat Ikaw Ay Akin, Sapagkat Kami Ay Tao Lamang, and The Nearness of You.
Benjamin Tan is the operator of the Alex Soda Foundation and Restaurant, where a combo with professional singers, hired to
perform for its customers, plays and sings the 4 compositions, without any license or permission from the Filipino Society to do
so.
Accordingly, Filipino Society demanded from Tan payment of the necessary license fee for the playing and singing of the
compositions, but the demand was ignored.
On November 7, 1967, Filipino Society filed a complaint with the CFI of Manila for infringement of copyright against Tan, for
allowing the playing in his restaurant of the compositions.
In his answer, Tan countered that the complaint stated no cause of action. He maintained that mere playing and singing of
songs and popular tunes, even if they are copyrighted, do not constitute infringement.
The CFI ruled in Tans favour and dismissed the complaint.
On appeal by the Filipino Society, the CA certified the case to the SC, as it involved pure questions of law.

Issues:
1) Does the playing and signing of musical compositions which have been copyrighted under the provisions of the Copyright Law
(Act 3134) inside Tans restaurant constitute a public performance for profit within the meaning and contemplation of the
Copyright Law? YES.
2) Assuming that there were indeed public performances for profit, can Tan be held liable therefor? NO.
Held: PREMISES CONSIDERED, the appealed decision of the Court of First Instance of Manila in Civil Case No. 71222 is hereby
AFFIRMED.
Ratio:
1)

The playing and singing of musical compositions which have been copyrighted under the provisions of the Copyright Law (Act
3134) inside Tans restaurant constitute a public performance for profit within the meaning and contemplation of the
Copyright Law.
a. The applicable provision here is Sec.3(c) of the Copyright Law, which provides:
SEC. 3. The proprietor of a copyright or his heirs or assigns shall have the exclusive right:
xxx xxx xxx
(c) To exhibit, perform, represent, produce, or reproduce the copyrighted work in any manner or by any method
whatever for profit or otherwise; if not reproduced in copies for sale, to sell any manuscripts or any record whatsoever
thereof;
xxx xxx xxx
b. Playing or singing a musical composition is universally accepted as performing the musical composition. Playing and
singing of copyrighted music in Tans restaurant for the entertainment of its customers, although the latter do not pay
for the music but only for food and drink, constitute performance for profit under Sec. 3(c) of the Copyright Law.
i. The word perform, as used in the Copyright Law, has been applied to one who plays a musical
composition on a piano, thereby producing in the air sound waves which are heard as music ... and if the
instrument he plays on is a piano plus a broadcasting apparatus, so that waves are thrown out, not only upon

2)

the air, but upon the other, then also he is performing the musical composition. (Buck, et al. v. Duncan, et al.;
Same Jewell La Salle Realty Co.)
ii. The playing of music in dine and dance establishment, which is paid for by the public in purchases of food
and drink, constituted performance for profit within the Copyright Law.The music is furnished and used
by the orchestra for the purpose of inducing the public to patronize the establishment and pay for the
entertainment in the purchase of food and drinks. The defendant conducts his place of business for profit,
and it is public; and the music is performed for profit. (Buck, et al. v. Russon)
iii. The Performance in a restaurant or hotel dining room, by persons employed by the proprietor, of a
copyrighted musical composition, for the entertainment of patrons, without charge for admission to hear it,
infringes the exclusive right of the owner of the copyright. (Herbert v. Shanley Co.; John Church Co. v. Hillard
Hotel Co., et al.)
iv. Rationale: if the rights under the copyright are infringed only by a performance where money is taken at the
door, they are very imperfectly protected. The performances are part of a total for which the public pays, and
the fact that the price of the whole is attributed to a particular item which those present are expected to order
(i.e. food and drinks) is not important. The music is not the sole object, but neither is the food. The object is
a repast in surroundings that to people having limited power of conversation or disliking the rival noise, give
a luxurious pleasure not to be had from eating a silent meal. If music did not pay, it would be given up. If it
pays, it pays out of the publics pocket. Whether it pays or not, the purpose of employing it is profit, and that
is enough. (Herbert v. Shanley Co.; John Church Co. v. Hillard Hotel Co., et al.)
c. The customers of Tans restaurant only pay for food and drinks, not for listening to the music. The music was
performed to entertain and amuse them, in order to make the restaurant more attractive and desirable.
i. For playing and singing the Filipino Societys musical compositions, the combo was paid as independent
contractors. The expenses entailed thereby were added to the overhead of the restaurant, which are charged
to either the price of the food and drinks, or the overall total of additional income produced by the bigger
volume of business which the entertainment was programmed to attract.
Even if there were indeed public performances for profit of the Filipino Societys musical compositions, Tan cannot be said to
have infringed the Copyright Law. The composers of the musical compositions had waived their right in favor of the general
public when they allowed their intellectual creations to become property of the public domain before applying for the
corresponding copyrights for the same, so they became public property and beyond the protection of the Copyright Law.
a. 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)
i. If the general public has made use of the object sought to be copyrighted for 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.
b. Dahil Sa Iyo had been popular on the radio and jukeboxes long before it was registered on April 20, 1956.
c. The Nearness Of You had been popular since 1943, but was not registered until January 14, 1955.
d. According to witnesses, Sapagkat Ikaw Ay Akin and Sapagkat Kami Ay Tao Lamang had been known and sung as
early as 1965, but were not registered until July 10, 1966.

CASE: Manly Sportwear Manufacturing, Inc. v Dadodette Enterprises and/or Hermes Sports Center
DATE: September 20, 2005
PONENTE: Ynares-Santiago, J.
Topic in syllabus: Copyright and related rights; When does copyright vest
SHORT VERSION:
An application for a search warrant was filed before the RTC of QC based on the information that Dadodette and/or Hermes was in
possession of goods the copyright of which belonged to Manly. A warrant was subsequently issued. Respondents moved to quash
and annul the warrant on the ground that the goods were ordinary and common and not among the classes of work protected under
Sec. 172 of R.A. No. 8293. RTC granted the motion to quash. Manly filed an MR which was denied. Manly filed a petition for
certiorari with the CA. CA denied for lack of merit. Manly filed a petition for review on certiorari with the SC.
SC found that the warrant was properly quashed. The copyrighted products did not appear to be original creations of Manly and so
were not among the classes of work enumerated under Sec. 172. No copyright accrues in favor of Manly despite the issuance of the
certificates of registration and deposit, pursuant to Sec. 2, Rule 7 of the Copyrights Safeguards and Regulations. At most, the

certificates of registration and deposit issued by the National Library and the Supreme Court Library serve merely as a notice of
recording and registration of the work but do not confer any right or title upon the registered copyright owner or automatically put
his work under the protective mantle of the copyright law.

FACTS:

March&14,&2003:&Special&Investigator&Eliezer&P.&Salcedo&of&the&National&Bureau&of&Investigation&(NBI)&
applied&for&a&search&warrant&before&the&RTC&of&Quezon&City&based&on&the&information&that&Dadodette&
Enterprises&and/or&Hermes&Sports&Center&were&in&possession&of&goods,&the&copyright&of&which&belonged&
to&Manly&Sportswear&Mfg.&Inc.!
March&17,&2003:&After&finding&reasonable&grounds&that&a&violation&of&Sec.&172&and&217&of&R.A.&No.&8293&
was&committed,&the&judge&of&Branch&83&issued&on&Search&Warrant&No.&4044(03).!
Respondents&moved&to&quash&and&annul&the&warrant,&on&the&ground&that&the&requisites&for&its&issuance&
were&not&complied&with.&They&said&that&the&sporting&goods&manufactured&by&and/or&registered&in&the&
name&of&Manly&are&ordinary&and&common,&hence,&not&among&the&classes&of&work&protected&under&Sec.&172.!
June&10,&2003:&The&trial&court&granted&the&motion&to&quash&and&declared&the&aforesaid&warrant&null&and&
void,&based&on&its&finding&that&the&copyrighted&products&were&not&original&creations&and&were&being&
manufactured&and&distributed&by&different&companies&locally&and&abroad&under&various&brands.!
It&also&found&that&Manlys&certificates&of&registration&were&issued&only&in&2002,&while&there&were&
certificates&of&registration&for&the&same&sports&articles&which&were&issued&earlier&than&Manlys,&
negating&their&claim&that&the&copyrighted&products&were&original&creations.&!
August&11,&2003:&The&TC&denied&Manlys&MR.!
Manly&filed&a&petition&for&certiorari&with&the&CA&which&was&denied&for&the&lack&of&merit.&CA&found&that&the&
RTC&correctly&granted&the&motion&to&quash&and&that&its&ruling&in&the&ancillary&proceeding&did&not&preempt&
findings&of&the&intellectual&property&court&as&it&did&not&resolve&with&finality&the&status&or&character&of&the&
seized&items.!
Manly&filed&the&instant&petition&for&review&on&certiorari.&!

ISSUE/ISSUES:

Did&the&CA&err&when&it&ruled&that&the&TC&was&correct&in&quashing&the&aforementioned&warrant&on&the&
ground&that&the&copyrighted&products&of&Manly&were&not&original&creations&subject&to&the&protection&of&
R.A.&No.&8293?!

RATIO:

NO,!!it!did!not.!
The&power&to&issue&a&search&warrant&is&exclusively&vested&with&the&trial&judge&in&the&exercise&of&
their&judicial&function.&As&such,&the&power&to&quash&the&same&also&rests&solely&with&the.&After&the&
judge&has&issued&a&warrant,&he&is&not&precluded&to&subsequently&quash&the&same,&if&he&finds&upon&
reevaluation&of&the&evidence&that&no&probable&cause&exists.!
o The&TC&properly&quashed&the&search&warrant&after&finding&upon&reevaluation&that&no&
probably&cause&existed.&The&copyrighted&products&did&not&appear&to&be&original&creations&
of&Manly&and&so&were&not&among&the&classes&of&work&enumerated&under&Sec.&172.!
Also,&the&TC&was&acting&within&bounds&when&it&ruled,&in&an&ancillary&proceeding,&that&the&
copyrighted&products&were&not&original&creation.&In&the&determination&of&the&existence&of&probable&
cause&for&issuance&or&quashal&of&a&warrant,&it&is&inevitable&that&the&court&touch&on&issues&properly&
threshed&out&in&a&regular&proceeding.&It&does&not&usurp&the&power&of&the&court&from&making&a&final&
judicial&determination&of&the&issues&in&a&full\blown&trial.&!
Manlys&assertion&that&the&TCs&order&preempted&the&findings&of&the&intellectual&property&court&has&
no&legal&basis.&As&found&by&the&CA,&the&TCs&finding&was&merely&preliminary&and&did&not&finally&and&
permanently&adjudicate&on&the&status&and&character&of&the&seized&items.&Manly&could&still&file&a&
separate&copyright&infringement&suit&because&the&order&for&the&issuance&or&quashal&of&a&warrant&is&
not&res&judicata.!
The&copyright&certificates&issued&in&favor&of&Manly&merely&constituted&prima&facie&evidence&of&
validity&and&ownership.&No&presumption&of&validity&is&created&where&other&evidence&exists&that&
may&cast&doubt&on&copyright&validity.!

When&there&is&sufficient&proof&that&the&copyrighted&products&are&not&original&creations&but&
are&readily&available&in&the&market&under&various&brands,&validity&and&originality&will&not&
be&presumed.!
Lastly,&no&copyright&accrues&in&favor&of&Manly&despite&the&issuance&of&the&certificates&of&
registration&and&deposit,&pursuant&to&Sec.&2,&Rule&7&of&the&Copyrights&Safeguards&and&Regulations.&
o

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.&

At&most,&the&certificates&of&registration&and&deposit&issued&by&the&National&Library&and&the&
Supreme&Court&Library&serve&merely&as&a&notice&of&recording&and&registration&of&the&work&but&do&
not&confer&any&right&or&title&upon&the&registered&copyright&owner&or&automatically&put&his&work&
under&the&protective&mantle&of&the&copyright&law.&
o It&is&not&conclusive&proof&of&copyright&ownership.&Non\registration&and&deposit&of&the&work&
within&the&prescribed&period&only&makes&the&copyright&owner&liable&to&pay&a&fine.&

HELD:

WHEREFORE,&the&petition&is&DENIED.&The&July&13,&2004&decision&of&the&Court&of&Appeals&in&CA\G.R.&SP&No.&
7987&and&resolution&dated&September&15,&2004&are&AFFIRMED.&
Text

FRANCISCO JOAQUIN and BJ PRODUCTIONS v FRANKLIN DRILON, et al

28 January 1999
Mendoza, J.
petition for certiorari of a Department of Justice resolution
scope of copyright; infringement
DOCTRINE: You cannot copyright the format of a dating game show, only the tapes of individual episodes.
FACTS:
In the 1970s, BJ Productions (BJPI) held a certificate of copyright of the dating game show Rhoda and Me. It
later submitted an addendum to the National Library specifying the shows format and style of presentation.
In 1991, BJPI President Francisco Joaquin saw an episode of RPN 9s Its a Date, produced by IXL
Productions. He wrote a letter to IXLs president and general manager Gabriel Zosa (private respondent),
informing him that BJPI held the copyright to Rhoda and Me and demanding that IXL discontinue Its a Date.
Zosa apologized, but IXL continued to air Its a Date. The National Library issued a copyright to IXL for the
first episode of Its a Date.
PROCEDURAL HISTORY:
An information for violation of PD 49 was filed against Zosa and other RPN 9 officers with the QC RTC.
However, Zosa sought a review of the city prosecutors resolution with the Department of Justice.
DOJ Secretary Franklin Drilon reversed the fiscals finding and directed the dismissal of the case, saying that
Joaquin and BJPI failed to present the copyrighted master tape of Rhoda and Me, and so there was no probable
cause shown for copyright infringement. Joaquins motion for reconsideration was denied.
ISSUE:
was the format of Rhoda and Me copyrightable? NO.
REASONING:
Copyright was a purely statutory right. It was a new or independent right granted by statute, and not simply a
pre-existing right regulated by the statute. As it was statutory, the rights were only what the law conferred, and
5

could be obtained only with respect to the subjects and by the persons, and on terms and conditions specified
in the statute.
PD 49 2 enumerated the classes of work entitled to copyright. The list was substantially the same as the one
in the Intellectual Property Code. The format or mechanics of a television show was not included in this list.
The enumeration referred to finished works and not concepts. Copyright didnt extend to an idea, procedure,
process, system, method of operation, concept, principle or discovery, regardless of the form in which it is
embodied in such work. This was in fact a principle included in IPC 175 on unprotected subject matter.
BJPIs copyright only extended to the audio-visual recordings of each episode of Rhoda and Me, but not to the
general concept or format of its dating show.
Thus, the investigating prosecutor must first be able to examine the videotapes of both Rhoda and Me and Its
a Date to determine if there was probable cause. BJPI could not base its claim simply on written descriptions
and comparisons of the two shows. The essence of copyright infringement was the similarity or substantial
similarity of the original and the copy; thus the linkages between the two must be established, and not just be
based on mere allegations as to the existence of the copyrighted originals (20th Century Fox Film Corp v CA).
This rule was qualified in Columbia Pictures v CA, wherein the necessity of producing the master tape was
only a guidepost to determine the existence of probable cause when there was doubt as to the true nexus
between the master tape and the pirated copies, not an absolute requirement.
rbm/8252014

United Feature Syndicate v Munsingwear Creation Manufacturing Company

November 9, 1989
Paras, J.
Short version: United Feature filed a petition for the cancellation of the registration of trademark CHARLIE BROWN,
in the name of Munsingwear, claiming that it had exclusive ownership of the copyright and that it has used the pictorial
illustration CHARLIE BROWN since 1950, to the exclusion of others. The Philippine Patents Office ruled in favor of
Munsingwear, holding that 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. The CA dismissed the appeal on techinical
grounds. The SC ruled in favor of United Feature. It held that 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. United Feature is the actual owner of said trademark due to its prior registration with the Patent's Office. Thus,
the Certificate of Registration of Munsingwear was cancelled.
Facts:
United&Feature&filed&a&petition&for&the&cancellation&of&the&registration&of&trademark&CHARLIE&BROWN&in&the&
name&of&respondent&Munsingwear&in&Inter&Partes&Case&No.&1350&entitled&"United'Feature'Syndicate,'Inc.'v.'
Munsingwear'Creation'Mfg.'Co.",&with&the&Philippine&Patent&Office.&
It&alleged&that&United&Feature&was&damaged&by&the&registration&of&the&trademark&CHARLIE&BROWN&of&T\Shirts&
under&Class&25,&dated&September&12,&1979,&in&the&name&of&Munsingwear&Creation&Manufacturing&Co.,&Inc.,&on&
the&following&grounds:&&
o That&Munsingwear&was&not&entitled&to&the&registration&of&the&mark&CHARLIE&BROWN,&&&DEVICE&at&the&
time&of&application&for&registration;&&
o That&CHARLIE&BROWN&is&a&character&creation&or&a&pictorial&illustration,&the&copyright&to&which&is&
exclusively&owned&worldwide&by&United&Feature;&&
o That&as&the&owner&of&the&pictorial&illustration&CHARLIE&BROWN,&United&Feature&has&since&1950&and&
continuously&up&to&the&present,&used&and&reproduced&the&same&to&the&exclusion&of&others;&&

That&the&Munsingwear&has&no&bona&fide&use&of&the&trademark&in&commerce&in&the&Philippines&prior&to&its&
application&for&registration.&&
On&October&2,&1984&the&Director&of&the&Philippine&Patent&Office&rendered&a&decision,&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.&
United&Feature&filed&an&MR,&which&was&denied&by&the&Director&of&the&Philippine&Patent&Office&on&the&ground&
that&the&Decision&No.&84\83&was&already&final&and&executory.&
United&Feature&appealed&to&the&CA,&which&denied&the&appeal&on&the&ground&that&the&while&the&MR&was&filed&on&
time,&it&was&a&mere&scrap&of&paper&because&there&was&no&date&of&hearing.&
United&Feature&filed&another&MR&which&was&denied&for&lack&of&merit.&&
Thus,&it&filed&a&petition&for&review&on&certiorari&&
o

Issue: Whether the Certificate of Registration of Munsingwear should be cancelled. YES

Ratio:
1) The&SC&first&had&a&long&discussion&on&the&procedural&issue&of&WON&the&MR&was&indeed&filed&out&of&time.&It&
found&that&it&was&really&filed&out&of&time,&but&took&cognizance&of&the&case&anyway&because&of&strong&
considerations&of&substantial&justice&since&the&appeal&was&impressed&with&merit.&
2) United&Feature&contends&that&it&has&a&better&right&to&CHARLIE&BROWN&&&DEVICE&since&the&likeness&of&
CHARLIE&BROWN&appeared&in&periodicals&having&worldwide&distribution&and&covered&by&copyright&
registration&in&its&name&which&antedates&the&certificate&of&registration&of&Munsingwear&issued&only&on&
September&12,&1979.&&
3) Also,&the&CA&decision&was&based&on&a&decision&by&the&Philippine&Patent&Office&in&the&case&of&Childrens&
Television&Workshop&v&Touch&of&Class,&which&held&that&a&trademark,&unlike&a&label,&cannot&be&copyrighted.&
However,&this&decision&was&already&reversed&by&the&CA&upon&appeal.&&
a. The&CA,&in&that&case&said&that:&The&Patents&Office&ruled&that&a&trademark,&unlike&a&label,&cannot&be&
copyrighted.&The&"Cookie&Monster"&is&not,&however,&a&trademark.&It&is&a&character&in&a&TV&series&entitled&
"Sesame&Street."&It&was&respondent&which&appropriated&the&"Cookie&Monster"&as&a&trademark,&after&it&
has&been&copyrighted.&We&hold&that&the&exclusive&right&secured&by&PD&49&to&the&petitioner&precludes&the&
appropriation&of&the&"Cookie&Monster"&by&the&respondent.&
4) Section&2&of&Presidential&Decree&No.&49,&otherwise&known&as&the&"Decree&on&Intellectual&Property",&provides:&
a. Section&2.&The&rights&granted&by&this&Decree&shall,&from&the&moment&of&creation,&subsist&with&respect&to&
any&of&the&following&classes&of&works:&
xxx&xxx&xxx&
(O)&Prints,&pictorial&illustrations,&advertising&copies,&labels,&tags&and&box&wraps.&...&
5) Therefore,&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.&
6) Aside&from&its&copyright&registration,&United&Feature&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&Inc.&as&early&as&1957&and&additionally&also&as&TV&SPECIALS&featuring&
the&"PEANUTS"&characters&"CHARLIE&BROWN".&
7) The&only&appreciable&defense&of&Munsingwear&is&that&it&uses,&the&trademark&"CHARLIE&BROWN"&&&"DEVICE"&
on&children's&wear&such&as&T\shirts,&undershirts,&sweaters,&brief&and&sandos,&whereas&"CHARLIE&BROWN"&is&
used&only&by&United&Feature&as&character,&in&a&pictorial&illustration&used&in&a&comic&strip&appearing&in&
newspapers&and&magazines.&Thus,&it&has&no&trademark&significance&and&therefore&Munsingwear's&use&of&
"CHARLIE&BROWN"&&&"DEVICE"&is&not&in&conflict&with&the&United&Feature's&use&of&"CHARLIE&BROWN".&
8) It&is&undeniable&from&the&records&that&United&Feature&is&the&actual&owner&of&said&trademark&due&to&its&prior&
registration&with&the&Patent's&Office.&
9) Finally,&the&Court&said&In&upholding&the&right&of&the&petitioner&to&maintain&the&present&suit&before&our&courts&
for&unfair&competition&or&infringement&of&trademarks&of&a&foreign&corporation,&we&are&moreover&recognizing&
our&duties&and&the&rights&of&foregoing&states&under&the&Paris&Convention&for&the&Protection&of&Industrial&
Property&to&which&the&Philippines&and&(France)&U.S.&are&parties.&We&are&simply&interpreting&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.&

CA decision set aside. Certificate of Registration of respondent Munsingwear is CANCELLED.

Ces ^_^
Feist&Publications&v&Rural&Telephone&Service&Company,&Inc.&
March&27,&1991&
O&Connor,&J.&
&
SV: Rural is a telephone company which publishes a telephone directory with white and yellow pages. Feist Publications is a
publishing company that specializes in area-wide telephone directories covering a much larger geographic range than directories
such as Rural's. Both companies compete for the yellow pages advertising. Feist asked permission from Rural to copy its white
pages listings, but the latter refused. Because of this, Feist copied Rurals listings. Rural sued for copyright infringement against
Feist.
Court ruled in favor of Feist. The Constitution mandates originality as a prerequisite for copyright protection. To fulfill the Consti
requirement, there must be independent creation plus a modicum of creativity. Copyright protection extends only to those
components of the work that are original to the author, not to the facts themselves. This fact/expression dichotomy severely limits
the scope of protection in fact-based works.
A compilation is not copyrightable per se, but is copyrightable only if its facts have been "selected, coordinated, or arranged in such
a way that the resulting work as a whole constitutes an original work of authorship." Thus, the statute envisions that some ways of
selecting, coordinating, and arranging data are not sufficiently original to trigger copyright protection.
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. In this case, although Rurals directory as a whole is copyrightable, there is nothing original in the
white pages listings. As such, Feist's use of the listings cannot constitute infringement.
&
FACTS:&
\&Respondent&Rural&Telephone&Service&Company&is&a&certified&public&utility&providing&telephone&service&to&several&
communities&in&northwest&Kansas.&Pursuant&to&state&regulation,&Rural&publishes&a&typical&telephone&directory,&consisting&of&
white&pages&and&yellow&pages,&annually.&&
It&obtains&data&for&the&directory&from&subscribers,&who&must&provide&their&names&and&addresses&to&obtain&telephone&
service.&&
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.&
\&Petitioner&Feist&Publications,&Inc.,&is&a&publishing&company&that&specializes&in&area\wide&telephone&directories&covering&a&
much&larger&geographic&range&than&directories&such&as&Rural's6.&&
Both&Feists&and&Rurals&directories&are&distributed&free&of&charge&and&both&compete&for&yellow&pages&advertising.&
\&Not&being&a&telephone&company,&Feist&lacks&independent&access&to&any&subscriber&information.&To&obtain&white&pages&
listings&for&its&area\wide&directory,&it&approached&each&of&the&11&telephone&companies&operating&in&northwest&Kansas&and&
offered&to&pay&for&the&right&to&use&its&white&pages&listings.&
Out&of&the&11&telephone&companies,&only&Rural&refused&to&license&its&white&pages&listings&to&Feist&for&a&directory.&
Because&of&this,&Feist&extracted&the&listings&it&needed&from&Rural's&directory&without&Rural's&consent.&
Although&Feist&altered&many&of&Rural's&listings,&several&were&identical&to&listings&in&Rural's&white&pages.&
o A&typical&Feist&listing&includes&the&individual's&street&address&while&most&of&Rural's&listings&do&not.&&
o Despite&this,&1,309&of&the&46,878&listings&in&Feist's&1983&directory&were&identical&to&listings&in&Rural's&1982\
1983&white&pages.&4&of&these&were&fictitious&listings&that&Rural&had&inserted&into&its&directory&to&detect&
copying.&
\&Rural&sued&for&copyright&infringement&in&the&District&Court&for&the&District&of&Kansas,&arguing&that&Feist&could&not&use&the&
info&in&Rurals&white&pages.&On&the&other&hand,&Feist&argues&that&the&information&copied&was&beyond&the&scope&of&copyright&
protection.&&
\&[District&Court]&granted&summary&judgment&to&Rural&in&its&copyright&infringement&suit,&holding&that&telephone&directories&
are&copyrightable.&&
\&[CA]&affirmed.&
6&Feist&directories&cover&11&different&telephone&service&areas&in&15&counties&and&contains&46,878&white&pages&listings&

compared&to&Rural's&approximately&7,700&listings&

ISSUE:&Are&Rurals&white&pages&entitled&to&copyright?&(NO,'Rural's'white'pages'are'not'entitled'to'copyright,'and'therefore'
Feist's'use'of'them'does'not'constitute'infringement)&
This&concerns&the&interaction&of&2&well\established&propositions:&the&first&is&that&facts&are&not&copyrightable;&the&
other,&that&compilations&of&facts&generally&are&(N.B.&Compilations'were'expressly'mentioned'in'the'Copyright'Act'of'
1909,'and'again'in'the'Copyright'Act'of'1976.)&
o The&key&to&resolving&the&tension&lies&in&understanding&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.&
&
The&Constitution&mandates&originality&as&a&prerequisite&for&copyright&protection.&The&constitutional&requirement&
necessitates&independent&creation&plus&a&modicum&of&creativity.&&
o The&level&of&creativity&required&is&low&that&even&a&slight&amount&will&suffice,&"no&matter&how&crude,&humble&
or&obvious"&it&might&be.&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.&
To&illustrate,&assume&that&two&poets,&each&ignorant&of&the&other,&compose&identical&poems.&Neither&
work&is&novel,&yet&both&are&original&and,&hence,&copyrightable.&
o Since&facts&do&not&owe&their&origin&to&an&act&of&authorship,&they&are&not&original,&and&thus&are&not&
copyrightable.&&
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.&
o Copyright&protection&extends&only&to&those&components&of&the&work&that&are&original&to&the&author,&not&to&
the&facts&themselves.&This&fact/expression&dichotomy&severely&limits&the&scope&of&protection&in&fact\based&
works.&&
&
The&Copyright&Act&of&1976&and&its&predecessor,&the&Copyright&Act&of&1909,&leave&no&doubt&that&originality&is&the&
touchstone&of&copyright&protection&in&directories&and&other&fact\based&works.&&
o The&1976&Act&explains&that&copyright&extends&to&"original&works&of&authorship,"&and&that&there&can&be&no&
copyright&in&facts.&
o A&compilation&is&not&copyrightable&per&se,&but&is&copyrightable&only&if&its&facts&have&been&"selected,&
coordinated,&or&arranged&in&such&a&way&that&the&resulting&work&as&a&whole&constitutes&an&original&work&of&
authorship."&Thus,&the&statute&envisions&that&some&ways&of&selecting,&coordinating,&and&arranging&data&are&
not&sufficiently&original&to&trigger&copyright&protection.&&
o Even&a&compilation&that&is&copyrightable&receives&only&limited&protection,&for&the&copyright&does&not&extend&
to&facts&contained&in&the&compilation.&&
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.&
&
Lower&courts&that&adopted&a&"sweat&of&the&brow"&or&"industrious&collection"&test&\\&which&extended&a&compilation's&
copyright&protection&beyond&selection&and&arrangement&to&the&facts&themselves&\\&misconstrued&the&1909&Act&and&
eschewed&the&fundamental&axiom&of&copyright&law&that&no&one&may&copyright&facts&or&ideas.&&
o The&underlying&notion&was&that&copyright&was&a&reward&for&the&hard&work&that&went&into&compiling&facts.&
o Because&of&the&confusion,&Congress&enacted&a&new&statutory&definition&in&the&1976&Copyright&act&which&
identifies&3&distinct&elements,&and&requires&each&to&be&met&for&a&work&to&qualify&as&a&copyrightable&
compilation:&
(1)&the&collection&and&assembly&of&preexisting&material,&facts,&or&data;&&
(2)&the&selection,&coordination,&or&arrangement&of&those&materials;&and&&
(3)&the&creation,&by&virtue&of&the&particular&selection,&coordination,&or&arrangement,&of&an&"original"&
work&of&authorship.&
&
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.&In&this&case,&Rural's&white&pages&do&not&meet&the&constitutional&or&
statutory&requirements&for&copyright&protection.&&
o While&Rural&has&a&valid&copyright&in&the&directory&as&a&whole&because&it&contains&some&forward&text&and&
some&original&material&in&the&yellow&pages,&there&is&nothing&original&in&Rural's&white&pages.&
o The&raw&data&are&uncopyrightable&facts,&and&the&way&in&which&Rural&selected,&coordinated,&and&arranged&
those&facts&is&not&original&in&any&way.&Rural's&selection&of&listings&\\&subscribers'&names,&towns,&and&
telephone&numbers&\\&could&not&be&more&obvious,&and&lacks&the&modicum&of&creativity&necessary&to&
transform&mere&selection&into&copyrightable&expression.&&
o In&fact,&it&is&plausible&to&conclude&that&Rural&did&not&truly&"select"&to&publish&its&subscribers'&names&and&
telephone&numbers,&since&it&was&required&to&do&so&by&state&law.&&

Moreover,&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.&
&
Because&Rural's&white&pages&lack&the&requisite&originality,&Feist's&use&of&the&listings&cannot&constitute&infringement.&
This&decision&should&not&be&construed&as&demeaning&Rural's&efforts&in&compiling&its&directory,&but&rather&as&making&
clear&that&copyright&rewards&originality,&not&effort.&
o

CA&Judgment&REVERSED&
Digest&by&Krys&

JESSIE CHING (petitioner) v WILLIAM SALINAS SR., WILLIAM SALINAS JR., JOSEPHINE SALINAS, JENNIFER SALINAS,
ALONTO SOLAIMAN SALLE, JOHN ERIC SALINAS, NOEL YABUT (Board of Directors and Officers of WILAWARE PRODUCT
CORPORATION (respondents)
June 29 2005 | Callejo, Sr., J.
V. Copyright and Related Rights; Law on Copyright; Scope of Copyright
SUPERFACTS! Ching sought help from NBI for the alleged copyright infringement of his utility models (stuff used for cars) against
respondents. Search warrants were issued and items were confiscated from respondents. Respondents alleged in a motion to quash
the search warrants that the copyright registrations of Ching violated the IPC because the subject matter is not artistic or literary.
Lower courts ruled in favor of respondents. Ching claims that 1) the validity of his copyrights cannot be determined in a search
warrant proceeding and 2) his utility models fell under the definition of work that has copyright protection as a model for articles of
manufacture.
SC ruled in favor of respondents. In applying for search warrant for infringement, Ching authorized the RTC to determine the validity
of his copyright. Moreover, the utility models were clearly not literary or artistic works, but were useful articles having an intrinsic
utilitarian function.

FACTS:
- Ching is the owner and general manager of Jeshicris Manufacturing, the maker and manufacturer of utility
models Leaf Spring Eye Bushing for Automobile and Vehicle Bearing Cushion
- Ching and Joseph Yu were issued by the National Library Certificates of Copyright Registration and Deposit of
the said works. Ching then requested the NBI for police assistance for the apprehension and prosecution of
illegal manufacturers and distributors of the said works.
- NBI filed applications for search warrants in Manila RTC against the officers and members of the Board of
Directors of Wilaware Product Corporation (respondents), alleging that they reproduced and distributed the
models, penalized under Secs. 177.1 and 177.3 of RA 8293.
- RTC issued the search warrants. Items such as plastics and molds were seized.
- Respondents filed motion to quash the search warrant, alleging that the copyright registrations were issued in
violation of the Intellectual Property Code:
o Subject matter of the registrations are not artistic or literary
o Subject matter of the registrations are spare parts of automobiles, meaning that there are original parts
that they are designed to replace. Hence, they are not original.
- Trial Court: granted respondents motion
o There was no probable cause for the issuance of the search warrant
o The work covered by the certificates pertained to solutions to technical problems, not literary and artistic
as provided in Art. 172
- MR denied. Petition for certiorari dismissed. Ching filed petition for review.
o Revocation of his copyright certificates should be raised in a direct action and not a search warrant
proceeding
o Copyright protection automatically attaches to a work by the sole fact of its creation, irrespective of its
mode or form of expression, or its content, quality of purpose
o The law defines work as original intellectual creations in the literary and artistic domain protected from
the moment of their creation; includes original ornamental designs or models for articles of manufacture
(Sec. 172.1(h))
o Thus, the law encompasses works which may have a bearing on the utility aspect. The copyright law
protects intellectual creation, regardless of whether it is one with utilitarian functions
o He has in his favor the benefit of the presumption that his copyright is valid; hence, the burden of
overturning such is on the respondents. But this burden cannot be carried in a hearing on a proceeding
to quash the search warrants.

10

Respondents aver that Chings work is essentially a technical solution to the problem of wear and tear in
automobiles, and a technical solution in any field of human activity which is novel may be the subject of a patent,
not a copyright.

RULING: Petition DENIED, CA AFFIRMED.

ISSUES & HELD:
(procedural) Did the RTC have jurisdiction to resolve the issue whether Chings utility models are copyrightable?
YES
Upon filing of the application for search warrant, the RTC was duty-bound to determine whether probable cause existed.
For the RTC to determine whether the crime for infringement under RA 8293 as alleged in an application is committed,
the petitioner-applicant was burdened to prove that (a) Ching and Joseph Yu were the owners of copyrighted material;
and (b) the copyrighted material was being copied and distributed by the respondents. Thus, the ownership of a valid
copyright is essential.
Ownership of copyrighted material is shown by proof of originality and copyrightability. Originality means that the
material was not copied; that it was independently created by the author and that it possesses at least some minimal
degree of creativity. Copying is shown by proof of access to copyrighted material and substantial similarity between the
two works. The applicant must thus demonstrate the existence and the validity of his copyright because in the absence
of copyright protection, even original creation may be freely copied.
By requesting the NBI to investigate and file an application for a search warrant for infringement under RA 8293, Ching
thereby authorized the RTC to determine the validity of the copyright which he claimed he had over the utility
models. He 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 courts jurisdiction to ascertain the validity of his claim without running afoul to the
doctrine of estoppel.
(substantive) Is Ching the owner of a copyright over the models? NO
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. The applicant should not ordinarily be forced to prove all the
multiple facts that underline the validity of the copyright unless the respondent, effectively challenging them, shifts the
7
burden of doing so to the applicant.
According to Chings certificates of copyright registration, his works (Leaf Spring Eye Bushing for Automobile and
8
Vehicle Bearing Cushion) were classified under literary and artistic works (Sec. 172.1(h) ), relating to Sec. 171.10,
which provides that a work of applied art is an artistic creation with utilitarian functions, or incorporated in a useful
article. But based on the appended application for copyright certificate filed by Ching, the works actually had very
9
technical definitions , plainly showing that they are not literary or artistic works, or intellectual creations in the literary and
artistic domain. The works are clearly 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. While works of applied art, original
intellectual, literary and artistic works are copyrightable, useful articles and works of industrial design are not. A useful
7

218.2. In an action under this Chapter:

(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; and
(b) Where the subsistence of the copyright is established, the plaintiff shall be presumed to be the owner of the copyright if he claims
to be the owner of the copyright and the defendant does not put in issue the question of his ownership.
&
8
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.
9
Leaf Spring Eye Bushing for Automobile: 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;
Vehicle Bearing Cushion: 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.

11

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.
We agree with Chings contention that the authors intellectual creation, regardless of whether it is a creation with
utilitarian functions or incorporated in a useful article produced on an industrial scale, is protected by copyright law.
However, the law refers to a work of applied art which is an artistic creation. 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.
Being plain automotive spare parts that must conform to the original structural design of the components they seek to
replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not ornamental. They are not even artistic
creations with incidental utilitarian functions or works incorporated in a useful article. In actuality, the personal properties
described in the search warrants are mechanical works, the principal function of which is utility sans any aesthetic
embellishment.
Thus, no copyright granted by law can be said to arise in favor of Ching, despite the issuance of the certificates of
copyright registration over his works. That the works may be the proper subject of a patent does not entitle him to the
issuance of a search warrant for violation of copyright laws.

PEARL & DEAN INCORPORATED v. SHOEMART, INC and NORTH EDSA MARKETING, INC
August 15, 2003
Corona, J.
SV: Pearl&Dean is a corp manufacturing light boxes used in advertising. Said company has a copyright over it. They
negotiated for a deal with SM but the deal eventually didnt push through. Years later, they found out that SM had the
same looking light boxes used in their stores. They filed a case for copyright infringement. SC ruled that Pearl&Deans
application for a copyright certificate clearly state that it was for a class O work under PD 49. Since Pearl&Dean
secured its copyright under the classification O works, it extended only to technical drawings and not to the light box
itself because the latter was not at all part of the category.
Facts:
Pearl&Dean&is&a&corporation&engaged&in&the&manufacture&of&advertising&display&units&known&as&light&
boxes.&These&are&used&to&illuminate&specially&printed&posters.&
Pearl&Dean&was&able&to&secure&a&Certificate&of&Copyright&Registration&on&January&20,&1981&over&these&
illuminate&display&units.&These&are&marked&under&the&trademark&Poster&Ads.&The&application&of&the&
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.&(Reg&#&41165)&
From&1981&to&1988,&Pearl&Dean&employed&the&services&of&Metro&Industrial&Services&to&manufacture&its&
advertising&displays.&
Sometime&in&1985,&Pearl&Dean&negotiated&with&SM&for&the&lease&and&installation&of&the&light&boxes&in&SM&
City&North&Edsa.&Since&SM&North&was&under&construction,&SM&offered&SM&Makati&and&Cubao,&to&which&
Pearl&Dean&agreed.&
Upon&the&submission&by&Pearl&Dean&of&the&contract&to&SM&for&signing,&only&the&SM&Makati&contract&was&
returned&signed.&No&reply&was&made&as&to&the&follow\up&for&SM&Cubao.&
In&January&1986,&SMs&house&counsel&informed&Pearl&Dean&that&it&was&rescinding&the&contract&for&SM&
Makati&due&to&non\performance&of&the&terms.&Pearl&Dean&Manager&Vergara&protested&the&unilateral&
action&of&SM&and&pushed&for&the&signing&of&the&SM&Cubao&contract.&
2&years&later,&Metro&Industrial&Services,&offered&to&construct&light&boxes&for&SM&stores,&which&was&
approved.&Metro&fabricated&10&light&boxes&for&SM.&After&its&contract&with&Metro,&SM&engaged&the&services&
of&EYD&Rainbow&Advertisng&Corp.&300&units&were&fabricated&and&installed.&
In&1989,&Pearl&Dean&received&reports&that&exact&copies&of&its&light&boxes&were&installed&at&SM&City&and&SM&
Cubao.&After&investigation,&it&was&found&that&SM&had&used&similar&light&boxes&in&different&SM&stores.&It&

12

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&the&lighted&displays.&
Pearl&Dean&sent&a&letter&to&both&SM&and&NEMI&to&cease&using&the&light&boxes&and&remove&them&from&SM&
establishments.&It&also&demanded&the&discontinued&use&of&the&trademark&Poster&Ads&as&well&as&the&
payment&of&P20,000,000&as&compensatory&damages.&
SM&suspended&the&leasing&of&224&light&boxes&and&NEMI&took&down&its&advertisements&for&Poster&Ads.&
Claiming&that&both&companies&failed&to&meet&its&demands,&Pearl&Dean&filed&a&case&for&infringement&of&
trademark&and&copyright,&unfair&competition&and&damages.&
SM&contends&that&it&independently&developed&its&poster&panels&using&commonly&known&techniques&and&
available&technology,&without&notice&of&or&reference&to&Pearl&Deans&copyright.&SM&also&contends&that&the&
word&Poster&Ads&is&a&generic&term&which&cannot&be&appropriated&as&a&trademark.&Also,&there&can&be&no&
relief&for&Pearl&Dean&since&its&display&units&contained&no&copyright&notice,&in&violation&of&Section&27&of&PD&
49.&
o SM,&aside&from&praying&for&the&dismissal&of&the&case,&filed&a&counterclaim&for&moral,&actual&and&
exemplary&damages&and&for&cancellation&of&Pearl&Deans&Certification&of&Copyright&registration&as&
well&as&certificate&of&trademark&registration.&
RTC&ruled&for&Pearl&Dean,&holding&there&to&be&a&copyright&infringement&and&trademark&infringement.&
Damages&were&awarded&(actual,&moral,&exemplary,&atty&fees,&cost&of&suit)&
CA&reversed&the&RTC&explaining&that&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&class&O&work.&
o When&a&drawing&is&technical&and&depicts&a&utilitarian&object,&a&copyright&over&the&drawings&will&not&
extend&to&the&actual&object.&
o Baker&vs.&Selden&\&No&doubt&aware&that&its&alleged&original&design&would&never&pass&the&rigorous&
examination&of&a&patent&application,&plaintiff\appellant&fought&to&foist&a&fraudulent&monopoly&on&
the&public&by&conveniently&resorting&to&a&copyright&registration&which&merely&employs&a&recordal&
system&without&the&benefit&of&an&in\depth&examination&of&novelty.&
o Muller&vs.&Triborough&Bridge&Authority&&case&involving&a&design&of&a&bridge.&.&&In&this&case&it&was&
held&that&protection&of&the&drawing&does&not&extend&to&the&unauthorized&duplication&of&the&object&
drawn&because&copyright&extends&only&to&the&description&or&expression&of&the&object&and&not&to&the&
object&itself.&&It&does&not&prevent&one&from&using&the&drawings&to&construct&the&object&portrayed&in&
the&drawing.&
o Imperial&Homes&Corp.&v.&Lamont,&and&Scholtz&Homes,&Inc.&v.&Maddox&\&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.&
&

Issue:
(1) WON 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)
(2) WON 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? (No)
Ruling: Petiton denied
Ratio:
COPYRIGHT INFRINGEMENT
Pearl&Dean:&its&copyright&over&the&engineering&drawings&extended&ipso&facto&to&the&light&boxes&depicted&
or&illustrated&in&the&said&drawing&
SC:&Pearl&Deans&application&for&a&copyright&certificate&clearly&state&that&it&was&for&a&class&O&work&under&
PD&49.&
o EC.&2.&&The&rights&granted&by&this&Decree&shall,&from&the&moment&of&creation,&subsist&with&respect&
to&any&of&the&following&works:&

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(O)&Prints,&pictorial&illustrations,&advertising&copies,&labels,&tags,&and&box&wraps;&
Copyright,&in&the&strict&sense&of&the&term,&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.&
Since&Pearl&Dean&secured&its&copyright&under&the&classification&O&works,&it&extended&only&to&technical&
drawings&and&not&to&the&light&box&itself&because&the&latter&was&not&at&all&part&of&the&category.&&
If&SM&and&NEMI&reprinted&Pearl&Deans&technical&drawings&for&sale&to&the&public&without&license,&then&no&
doubt&would&there&be&a&copyright&infringement.&This&is&not&the&case&here.&
In&fact,&during&the&trial&the&President&of&Pearl&Dean&admitted&that&the&light&box&was&neither&a&literary&nor&
an&&artistic&work&but&an&engineering&or&marketing&innovation.&Obviously,&there&seemed&to&be&a&confusion&
regarding&copyrights,&patents&and&trademarks.&
PATENT INFRINGEMENT
For&some&reason&or&another,&Pearl&Dean&never&secured&a&patent&for&the&light&boxes.&It&therefore&acquired&
no&patent&rights&which&could&have&protected&its&invention,&if&in&fact&it&really&was.&And&because&it&had&no&
patent,&Pearl&Dean&could&not&legally&prevent&anyone&from&manufacturing&or&commercially&using&the&
contraption.&
Creser&Precision&v.&CA&&there&can&be&no&infringement&of&a&patent&until&a&patent&has&been&issues,&since&
whatever&right&one&has&to&the&invention&covered&by&the&patent&arises&alone&from&the&grant&of&patent.&
To&be&able&to&effectively&and&legally&preclude&others&from&copying&and&profiting&from&the&invention,&a&
patent&is&a&primordial&requirement.&&No&patent,&no&protection.&&
&The&ultimate&goal&of&a&patent&system&is&to&bring&new&designs&and&technologies&into&the&public&domain&
through&disclosure.&Ideas,&once&disclosed&to&the&public&without&the&protection&of&a&valid&patent,&are&subject&
to&appropriation&without&significant&restraint.&On&one&side&of&the&coin&is&the&public&which&will&benefit&from&
new&ideas;&on&the&other&are&the&inventors&who&must&be&protected.&&&
Therefore,&not&having&gone&through&the&arduous&examination&for&patents,&the&petitioner&cannot&exclude&
others&from&the&manufacture,&sale&or&commercial&use&of&the&light&boxes&on&the&sole&basis&of&its&copyright&
certificate&over&the&technical&drawings.&
Baker&v.&Selden&&only&the&expression&of&an&idea&is&protected&by&a&copyright,&not&the&idea&itself.&
TRADEMARK INFRINGMENT
The&use&of&Poster&Ads&was&merely&for&stationaries,&letterheads&and&envelopes,&which&Pearl&Dean&is&not&
engaged&in.&
Section&20&of&the&old&Trademark&law,&use&of&symbols&only&to&those&goods&specified&in&the&certificate&shall&
be&given&the&exclusive&right&to&be&used.&
UNFAIR COMPETITION
Unfair&Competition&was&not&appealed&to&by&the&petitioner.&
But&regardless,&there&is&no&unfair&competition.&There&was&no&evidence&that&Pearl&Deans&use&of&
Posterads&was&distinctive&or&well\known.&Such&was&a&generic&name,&thus&it&was&difficult&to&identify&it&
with&any&company.&
BAM

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