1. Pearl & Dean (Phil.), Incorporated v.

Shoemart, Incorporated, and North Edsa Marketing,

Incorporated
GR No. 148222, August 15, 2003

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 sign 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 In 1986, the contract was rescinded unilaterally by SMI, and instead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.

ISSUE: Whether the the light box depicted in such engineering drawings ipso facto also protected by such
copyright.

RULING: NO. The Court of Appeals correctly held that the copyright was limited to the drawings alone and not
to the light box itself. Although petitioner’s copyright certificate was entitled “Advertising Display Units” (which
depicted the box-type electrical devices), its claim of copyright infringement cannot be sustained.
Copyright, in the strict sense of the term, is purely a statutory right. Accordingly, it can cover only the works falling
within the statutory enumeration or description. Even as we find that P & D indeed owned a valid copyright, the
same could have referred only to the technical drawings within the category of “pictorial illustrations.” It could not
have possibly stretched out to include the underlying light box. The light box was not a literary or artistic piece
which could be copyrighted under the copyright law.
The Court reiterated the ruling in the case of Kho vs. Court of Appeals, differentiating patents, copyrights and
trademarks, namely:
A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an
enterprise and shall include a stamped or marked container of goods. In relation thereto, a trade name means
the name or designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is
confined to literary and artistic works which are original intellectual creations in the literary and artistic domain
protected from the moment of their creation. Patentable inventions, on the other hand, refer to any technical
solution of a problem in any field of human activity which is new, involves an inventive step and is industrially
applicable.

ISSUE: Whether there was a patent infringement.

RULING: NONE. Petitioner never secured a patent for the light boxes. It therefore acquired no patent rights
which and could not legally prevent anyone from manufacturing or commercially using the contraption. 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.

ISSUE: Whether 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?

RULING: NO. The petitioner’s president said “Poster Ads” was a contraction of “poster advertising.” P & D was
able to secure a trademark certificate for it, but one where the goods specified were “stationeries such as
letterheads, envelopes, calling cards and newsletters.” Petitioner admitted it did not commercially engage in or
market these goods. On the contrary, it dealt in electrically operated backlit advertising units which, however,
were not at all specified in the trademark certificate.
Assuming arguendo that “Poster Ads” could validly qualify as a trademark, the failure of P & D to secure a
trademark registration for specific use on the light boxes meant that there could not have been any trademark
infringement since registration was an essential element thereof.

ISSUE: Whether there was unfair competition.

RULING: NONE. There was no evidence that P & D’s use of “Poster Ads” was distinctive or well-known. As
noted by the Court of Appeals, petitioner’s expert witnesses himself had testified that ” ‘Poster Ads’ was too
generic a name. So it was difficult to identify it with any company, honestly speaking.”This crucial admission that
“Poster Ads” could not be associated with P & D showed that, in the mind of the public, the goods and services
carrying the trademark “Poster Ads” could not be distinguished from the goods and services of other entities.
“Poster Ads” was generic and incapable of being used as a trademark because it was used in the field of poster
advertising, the very business engaged in by petitioner. “Secondary meaning” means that a word or phrase
originally incapable of exclusive appropriation with reference to an article in the market might nevertheless have
been used for so long and so exclusively by one producer with reference to his article that, in the trade and to
that branch of the purchasing public, the word or phrase has come to mean that the article was his property.

#2 JOAQUIN, JR. vs. DRILON, G.R. No. 108946, January 28, 1999

FACTS: Petitioner BJ Productions (BJPI) is the holder of a certificate of copyright of Rhoda and Me, a dating
game show aired during the 70s. Petitioner Joaquin, Jr. president of BJPI was watching TV when he saw on
RPN 9 an episode of It’s a Date, produced by IXL Productions (IXL). Joaquin then wrote a letter to Zosa,
general manager of IXL, and informed the latter of the copyright to Rhoda and Me and demand the
discontinuance of It’s a Date. IXL’s continued airing of It’s a Date, prompted Joaquin to send a 2nd letter,
warning IXL that non-discontinuance will resort to proper legal action.

Zosa then registered IXL’s copyright over It’s a Date. Hence, a complaint for violation of PD 49 was
instituted. An Information was then filed, but Zosa sought a review of such before the DoJ. Here, DoJ
Secretary Franklin Drilon, reversed the Ass. City Prosecutors resolution and move for the case dismissal.
Hence, this petition.

ISSUE #1: Did the non-assignment of error preclude the SoJ from considering the same?

Ruling: No. Petitioners claim that their failure to submit the copyrighted master videotape of the television
show Rhoda and Me was not raised in issue by private respondents during the preliminary investigation and,
therefore, it was error for the Secretary of Justice to reverse the investigating prosecutor’s finding of probable
cause on this ground. A preliminary investigation falls under the authority of the state prosecutor who is given
by law the power to direct and control criminal actions.

He is, however, subject to the control of the Secretary of Justice. In reviewing resolutions of
prosecutors, the Secretary of Justice is not precluded from considering errors, although unassigned, for the
purpose of determining whether there is probable cause for filing cases in court. He must make his own finding
of probable cause and is not confined to the issues raised by the parties during preliminary investigation.
Moreover, his findings are not subject to review unless shown to have been made with grave abuse.
ISSUE #2: Did respondent gravely abused his discretion when he invoked non-presentation of the master tape
as fatal to the existence of probable cause?

RULING: No. To begin with, the format of a show is not copyrightable. Section 2 of P.D. No. 49, otherwise
known as the DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of work entitled to copyright
protection. The format or mechanics of a television show is not included in the list of protected works in Sec. 2
of P.D. No. 49. (please check Sec. 2 of PD 49, it is very long)

P.D. No. 49, Sec. 2, in enumerating what are subject to copyright, refers to finished works and not to
concepts. The copyright does not extend to an idea, procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or
embodied in such work.
This Court is of the opinion that petitioner BJPIs copyright covers audio-visual recordings of each
episode of Rhoda and Me, as falling within the class of works mentioned in P.D. 49, Sec. 2(M), to wit:
“Cinematographic works and works produced by a process analogous to cinematography or any process for
making audio-visual recordings;”
The copyright does not extend to the general concept or format of its dating game show. Accordingly,
by the very nature of the subject of petitioner BJPI’s copyright, the investigating prosecutor should have the
opportunity to compare the videotapes of the two shows. Mere description by words of the general format of
the two dating game shows is insufficient; the presentation of the master videotape in evidence was
indispensable to the determination of the existence of probable cause.

ISSUE #3: Did public respondent gravely abused his discretion amounting to lack of jurisdiction when he
arrogated unto himself the determination of what is copyrightable?

RULING: No. It is indeed true that the question whether the format or mechanics of petitioners’ television show
is entitled to copyright protection is a legal question for the court to make. This does not, however, preclude
respondent Secretary of Justice from making a preliminary determination of this question in resolving whether
there is probable cause for filing the case in court. In doing so in this case, he did not commit any grave error.

3. Kho vs. CA, G. R. No. 115758, March 19, 2002

FACTS:
Petitioner, Elidad C. Kho, doing business under the name of KEC Cosmetics Laboratory (KEC), filed a
case against respondents Summerville General Merchandising Company and Ang Tiam Chay. Kho alleges that
she is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case. She also
has patent rights on Chin Chun Su medicated cream after purchasing the same from Quintin Cheng (Cheng).
Cheng is the registered owner thereof in the Supplemental Register of the Philippine Patent Office. Petitioner
asserts that Summerville advertised and sold petitioner’s products under the brand name Chin Chun Su in similar
containers that she uses, misleading the public and resulting in decline of sales.

Summerville on the other hand asserts that they are the exclusive and authorized imported, repacker and
distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan. Shun Yi authorized
Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office. KEC
obtained the copyrights through misrepresentation and falsification. The Authority of Quintin Cheng, assignee of
the patent registration certificate, to distribute and market had already been terminated by Shun Yi Factory.

For a preliminary injunction to prosper, facts must show that the invasion of right sought to be protected
is material and substantial, and the right is clear and unmistakable. Hence:
ISSUE:
Whether or not petitioner is entitled to the exclusive use of the subject trade name and its container[1]

RULING:
No, petitioner failed to sufficiently prove that she registered or used it before anybody else to entitle her
for the exclusive use of the same. Consequently a preliminary injunction cannot be issued since she has not
proven that she has a clear right over the said name and container or used the same before anyone did.
Petitioner’s copyright and patent registration of the name and container would not guarantee her the right to the
exclusive use of the same because the trade name or its container are not appropriate subjects of intellectual
rights under copyright or patentable inventions.

[1]Trademark, copyright and patents are different intellectual property rights that cannot be interchanged:
Trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark of an
enterprise). In relation, a trade name is the name identifying the enterprise.
A Copyright is scoped to literary and artistic works which are original intellectual creations protected from the
moment of their creation.
Patentable inventions, refer to any technical solution of a problem in any field of human activity which is new,
involves an inventive step and is industrially applicable.