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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 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 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.
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 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.
The lower court dismissed the complaint. Hence, this petition.

ISSUES:

Whether or not the plaintiff is entitled to protection, notwithstanding the, fact that he has not
copyrighted his design?

HELD:

NO. 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.

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TAADA VS ANGARA

Facts:

This is a petition seeking to nullify the Philippine ratification of the World Trade Organization (WTO)
Agreement. Petitioners question the concurrence of herein respondents acting in their capacities as
Senators via signing the said agreement.
The WTO opens access to foreign markets, especially its major trading partners, through the reduction of
tariffs on its exports, particularly agricultural and industrial products. Thus, provides new opportunities for
the service sector cost and uncertainty associated with exporting and more investment in the country.
These are the predicted benefits as reflected in the agreement and as viewed by the signatory Senators, a
free market espoused by WTO.
Petitioners aver that paragraph 1, Article 34 of the General Provisions and Basic Principles of the Agreement
on Trade-Related Aspects of Intellectual Property Rights (TRIPS) intrudes on the power of the Supreme
Court to promulgate rules concerning pleading, practice and procedures and is a derogation of legislative
power.

ISSUES:

Whether the provisions of the Agreement Establishing the World Trade Organization contravene the Philippine
Constitution.

HELD:

NO. Suffice it to say that the reciprocity clause of WTO more than justifies such intrusion, if any actually
exists. Besides, Article 34 does not contain an unreasonable burden, consistent as it is with due process and the
concept of adversarial dispute settlement inherent in our judicial system. So too, since the Philippines is a signatory
to most international conventions on patents, trademarks and copyrights, the adjustment in legislation and rules of
procedure will not be substantial.

A WTO Member is required to provide a rule of disputable (note the words in the absence of proof to the
contrary) presumption that a product shown to be identical to one produced with the use of a patented process
shall be deemed to have been obtained by the (illegal) use of the said patented process, (1) where such product
obtained by the patented product is new, or (2) where there is substantial likelihood that the identical product
was made with the use of the said patented process but the owner of the patent could not determine the exact
process used in obtaining such identical product. Hence, the burden of proof contemplated by Article 34 should
actually be understood as the duty of the alleged patent infringer to overthrow such presumption. Such burden,
properly understood, actually refers to the burden of evidence (burden of going forward) placed on the producer
of the identical (or fake) product to show that his product was produced without the use of the patented process.

The Senate Act, after deliberation and voting, of voluntarily and overwhelmingly giving its consent to the
WTO Agreement thereby making it a part of the law of the land, is a legitimate exercise of its sovereign duty and
power. By the doctrine of incorporation, the country is bound by generally accepted principles of international law,
which are considered to be autom atically part of our own laws. One of the oldest and most fundamental rules in
international law is pacta sunt servandainternational agreements must be performed in good faith. A treaty
engagement is not a mere moral obligation but creates a legally binding obligation on the parties.

Lastly, notwithstanding objections against possible limitations on national sovereignty, the WTO remains
as the only viable structure for multilateral trading and the veritable forum for the development of international
trade law.

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TWENTIETH CENTURY MUSIC CORP. VS AIKEN

Facts:

George Aiken's Chicken" is fast food restaurant in Pittsburgh, Pennsylvania, owned and operated by
George Aiken. Food can be purchased and consumed inside of the store or ordered and taken out. Inside
the store, radio station broadcasts are played over loud speakers that are audible to anyone in the
restaurant. On March 11, 1972, two songs copyrighted by Twentieth Century Music Corp. were played
over the radio and heard by customers in the restaurant. While the radio station broadcasting the songs
was licensed by the American Society of Composers, Authors and Publishers (ASCAP) to play them, Aiken's
establishment was not.

ISSUES:

Whether or not Aiken infringed on petitioners exclusive right.

HELD:

NO. Respondent did not infringe upon petitioners' exclusive right, under the Copyright Act, "[t]o perform
the copyrighted work publicly for profit," since the radio reception did not constitute a "performance" of the
copyrighted songs.

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CHING VS SALINAS

Facts:

Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and
manufacturer of a Utility Model, described as "Leaf Spring Eye Bushing for Automobile" made up of plastic.
On September 4, 2001, Ching and Joseph Yu were issued by the National Library Certificates of Copyright
Registration and Deposit of the said work described therein as "Leaf Spring Eye Bushing for Automobile."
After due investigation, the NBI filed applications for search warrants in the RTC of Manila against William
Salinas, Sr. and the officers and members of the Board of Directors of Wilaware Product Corporation. It was
alleged that the respondents therein reproduced and distributed the said models penalized under Sections
177.1 and 177.3 of Republic Act (R.A.) No. 8293.
The respondents averred that the works covered by the certificates issued by the National Library are not
artistic in nature; they are considered automotive spareparts and pertain to technology. They aver that the
models are not original, and assuch are the proper subject of a patent, not copyright.

ISSUES:

WON the Leaf Spring Eye Bushing for Automobile is a work of art.

HELD:

NO. We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), 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. It bears stressing that 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. Functional components of useful articles, no matter how artistically designed, have generally been denied
copyright protection unless they are separable from the useful article

In this case, the petitioners models are not works of applied art, nor artistic works. They are utility models,
useful articles, albeit with no artistic design or value.

A utility model is a technical solution to a problem in any field of human activity which is new and industrially
applicable. It may be, or may relate to, a product, or process, or an improvement of any of the aforesaid.[40]
Essentially, a utility model refers to an invention in the mechanical field. This is the reason why its object is
sometimes described as a device or useful object.[41] A utility model varies from an invention, for which a patent
for invention is, likewise, available, on at least three aspects: first, the requisite of inventive step[42] in a patent for
invention is not required; second, the maximum term of protection is only seven years[43] compared to a patent
which is twenty years,[44] both reckoned from the date of the application; and third, the provisions on utility model
dispense with its substantive examination[45] and prefer for a less complicated system.

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 lack the
decorative quality or value that must characterize authentic works of applied art. 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.

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CHING VS SALINAS

Facts:

Microsoft Corporation ("Microsoft"), a Delaware, United States corporation, owns the copyright and
trademark to several computer software. Beltron Computer Philippines, Inc. ("Beltron") and Taiwan
Machinery Display & Trade Center, Inc. ("TMTC") are domestic corporations.
In May 1993, Microsoft and Beltron entered into a Licensing Agreement ("Agreement"). Under Section
2(a) of the Agreement, as amended in January 1994, Microsoft authorized Beltron, for a fee, to:

(1) reproduce and install no more than one (1) copy of Microsoft software on each Customer System
hard disk or Read Only Memory ("ROM")
(2) distribute directly or indirectly and license copies of the Product in object code form to end users
The Agreement also authorized Microsoft and Beltron to terminate the contract if the other fails to
comply with any of the Agreements provisions. Microsoft terminated the Agreement effective 22 June
1995 for Beltrons non-payment of royalties.
Afterwards, Microsoft learned that Beltron were illegally copying and selling Microsoft software.
Consequently, Microsoft, through its Philippine agent, hired the services of Pinkerton Consulting Services
("PCS"), a private investigative firm. Microsoft also sought the assistance of the National Bureau of
Investigation ("NBI").
On 10 November 1995, a PCS employee and an NBI agent posing as representatives of a computer shop,
bought computer hardware (central processing unit ("CPU") and computer monitor) and software (12
computer disks ("CDs") in read-only memory ("ROM") format) from Beltron. The CPU contained pre-
installed Microsoft Windows 3.1 and MS-DOS software. The 12 CD-ROMs, encased in plastic containers
with Microsoft packaging, also contained Microsoft software. At least two of the CD-ROMs were
"installers," so-called because they contain several software (Microsoft only or both Microsoft and non-
Microsoft). The PCS employee and the NBI agent were not given the Microsoft end-user license
agreements, users manuals, registration cards or certificates of authenticity for the articles they
purchased. The receipt issued to them for the CPU and monitor bore the heading "T.M.T.C. (PHILS.) INC.
BELTRON COMPUTER."
The NBI searched the premises of Beltron and TMTC and seized several computer-related hardware,
software, accessories, and paraphernalia based on the search warrant applied by Microsoft.
Based on the articles obtained from Beltron and TMC, Microsoft and a certain Lotus Development
Corporation ("Lotus Corporation") charged Beltron and TMC 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.
Microsoft alleged that respondents illegally copied and sold Microsoft software.

ISSUES:

Whether or not Beltron and TMC are liable for copyright infringement and unfair competition?

HELD:

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 5. 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.

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

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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.

Significantly, under Section 5(A), a copyright owner is vested with the exclusive right to "copy, distribute,
multiply, [and] sell" his intellectual works.

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.

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PEARL & DEAN (PHIL.), INCORPORATED, vs. SHOEMART, INCORPORATED

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 an 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.
Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean to fabricate
its display units, offered to construct light boxes for Shoemarts chain of stores. SMI approved the proposal
and ten (10) light boxes were subsequently fabricated by Metro Industrial for SMI. After its contract with
Metro Industrial was terminated, SMI engaged the services of EYD Rainbow Advertising Corporation to
make the light boxes.
Sometime in 1989, Pearl and Dean, received reports that exact copies of its light boxes were installed at SM
City and in the fastfood section of SM Cubao. Upon investigation, Pearl and Dean found out that aside from
the two (2) reported SM branches, light boxes similar to those it manufactures were also installed in two
(2) other SM stores. It further discovered that defendant-appellant North Edsa Marketing Inc. (NEMI),
through its marketing arm, Prime Spots Marketing Services, was set up primarily to sell advertising space in
lighted display units located in SMIs different branches. It therefore filed a case for infringement of
trademark and copyright, unfair competition and damages.
SMI maintained that it independently developed its poster panels using commonly known techniques and
available technology, without notice of or reference to Pearl and Deans copyright. SMI noted that the
registration of the mark Poster Ads was only for stationeries such as letterheads, envelopes, and the like.
Besides, according to SMI, the word Poster Ads is a generic term which cannot be appropriated as a
trademark.
The RTC of Makati City decided in favor of P & D. On appeal, however, the Court of Appeals reversed the
trial courts ruling. Hence, this petition.

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

HELD:

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

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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.

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PHIL REFINING CO., INC. VS NG SAM

Facts:

Private respondent files with the Phil. Patent Office and application for registration of the trademark
CAMIA for his product ham which falls under Class 47(Foods and Ingredients of Food) of the Rules of
Practice of the Patent Office, while certificate of registration No. 1353-S applies to abrasive detergents,
polishing materials and soap of all kinds (Class 4).
The trademark "CAMIA" was first used ill the Philippines by petitioner on its products in 1922.
On November 25, 1960, respondent Ng Sam, a citizen residing in Iloilo City, filed an application with the
Philippine Patent office for registration of the Identical trademark "CAMIA" for his product, ham, which
likewise falls under Class 47. Alleged date of first use of the trademark by respondent was on February 10,
1959.
Director of Patents rendered a decision allowing registration of the trademark CAMIAin favor of Ng Sam
finding that the goods of the parties are not of a character which purchasers would be likely to attribute to
a common origin.

ISSUES:

Whether or not the product of the respondent and those of the petitioner are so related that the use of the same
trademark CAMIA on said goods would likely result in confusion as to their source.

HELD:

NO. The right to a trademark is a limited one, in the sense that others may used the same mark on unrelated
goods.

The mere fact that one person has adopted and used a trademark on his goods does not prevent the
adoption and use of the same trademark by others on articles of a different description

Where no confusion is likely to arise, as in this case, registration of a similar or even Identical mark may be
allowed.

A trademark is designed to Identify the user. But it should be so distinctive and sufficiently original as to
enable those who come into contact with it to recognize instantly the Identity of the user. " It must be affirmative
and definite, significant and distinctive, capable to indicate origin.

if a mark is so commonplace that it cannot be readily distinguished from others, then it is apparent that it
cannot Identify a particular business; and he who first adopted it cannot be injured by any subsequent appropriation
or imitation by others, and the public will not be deceived.

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MARVEX COMMERCIAL CO. INC., v. PETRA HAWPIA & CO., and THE DIRECTOR OF PATENTS,

Facts:

Petra Hawpia & Co., a partnership duly organized under the laws of the Philippines and doing business at
543 M. de Santos (Botica Divisoria), Manila (hereinafter referred to as the applicant), on October 14, 1958
filed a petition for the registration of the trademark "LIONPAS" used on medicated plaster, with the
Philippine Patent Office, asserting its continuous use in the Philippines since June 9, 1958. 1 The Marvex
Commercial Co., Inc., a corporation also duly organized under the laws of the Philippines (hereinafter
referred to as the oppositor), on July 24, 1959 filed an opposition thereto, alleging that the registration of
such trademark would violate its right to and interest in the trademark "SALONPAS" used on another
medicated plaster, which is registered in its name under Certificate of Registration 5486, issued by the
Director of Patents on September 29, 1956, and that both trademarks when used on medicated plaster
would mislead the public as they are confusingly similar.
After due hearing, the Director of Patents in his decision of August 18, 1961 dismissed the opposition and
gave due course to the petition, stating in part that "confusion, mistake, or deception among the purchasers
will not likely and reasonably occur" when both trademarks are applied to medicated plaster.

ISSUES:

Is the trademark "LIONPAS" confusingly similar to the trade mark "SALONPAS"

HELD:

YES. In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very much alike. Similarity of sound is
sufficient ground for this Court to rule that the two marks are confusingly similar when applied to merchandise of
the same descriptive properties

The "SALONPAS" mark is not before this Court. Our meticulous examination of the entire record has failed to yield
a sample of such mark. We have therefore proceeded to analyze the two marks, vis-a-vis each other, on the basis
of what we can derive from the record for a comparative study. And our conclusion, in disagreement with that of
the Director of Patents, is not based on a comparison of the appearance, form, style, shape, size or format of the
trademarks, which we can not make because, as we have already observed, the "SALONPAS" mark is not before us,
but on a comparison of the spelling, sound and pronunciation of the two words.

It is our considered view that the trademarks "SALONPAS" and "LIONPAS" are confusingly similar in sound.

Both these words have the same suffix, "PAS", which is used to denote a plaster that adheres to the body with
curative powers. "PAS," being merely descriptive, furnishes no indication of the origin of the article and therefore
is open for appropriation by anyone (Ethepa v. Director of Patents, L-20635, March 31, 1966) and may properly
become the subject of a trademark by combination with another word or phrase.

Two letters of "SALONPAS" are missing in "LIONPAS" : the first letter a and the letter s. Be that as it may, when the
two words are pronounced, the sound effects are confusingly similar. And where goods are advertised over the
radio, similarity in sound is of especial significance (Co Tiong Sa v. Director of Patents, 95 Phil. I, citing Nims, The
Law of Unfair Competition and Trademarks, 4th ed., Vol. 2, pp. 678-679). "The importance of this rule is
emphasized by the increase of radio advertising in which we are deprived of the help of our eyes and must depend
entirely on the ear" (Operators, Inc. v. Director of Patents, supra).

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