INTELLECTUAL PROPERTY LAW CASES

CHING V. SALINAS, SR. (G.R. NO. 161295)

Facts:
Petitioner Ching is a maker and manufacturer of a utility model, Leaf Spring
Eye Bushing for Automobile, for which he holds certificates of copyright
registration. Petitioner’s request to the NBI to apprehend and prosecute
illegal manufacturers of his work led to the issuance of search warrants
against respondent Salinas, alleged to be reproducing and distributing said
models in violation of the IP Code. Respondent moved to quash the warrants
on the ground that petitioner’s work is not artistic in nature and is a proper
subject of a patent, not copyright. Petitioner insists that the IP Code protects
a work from the moment of its creation regardless of its nature or purpose.
The trial court quashed the warrants. Petitioner argues that the copyright
certificates over the model are prima facie evidence of its validity. CA
affirmed the trial court’s decision.
Issues:
(1) Whether or not petitioner’s model is an artistic work subject to copyright
protection.
(2) Whether or not petitioner is entitled to copyright protection on the basis
of the certificates of registration issued to it.
Ruling:
(1) NO. As gleaned from the specifications appended to the application for a
copyright certificate filed by the petitioner, the said Leaf Spring Eye Bushing
for Automobile and Vehicle Bearing Cushion are merely utility models. As
gleaned from the description of the models and their objectives, these
articles are useful articles which are defined as one having an intrinsic
utilitarian function that is not merely to portray the appearance of the article
or to convey information. Plainly, these are not literary or artistic works. They
are not intellectual creations in the literary and artistic domain, or works of
applied art. They are certainly not ornamental designs or one having
decorative quality or value. Indeed, while works of applied art, original
intellectual, literary and artistic works are copyrightable, useful articles and
works of industrial design are not. A useful article may be copyrightable only
if and only to the extent that such design incorporates pictorial, graphic, or
sculptural features that can be identified separately from, and are capable of
existing independently of the utilitarian aspects of the article. In this case,
the bushing and cushion are not works of art. They are, as the petitioner
himself admitted, utility models which may be the subject of a patent.
(2) NO. No copyright granted by law can be said to arise in favor of the
petitioner despite the issuance of the certificates of copyright registration
and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion.
Indeed, in Joaquin, Jr. v.Drilon and Pearl & Dean (Phil.), Incorporated v.
Shoemart, Incorporated, the Court ruled that:
Copyright, in the strict sense of the term, is purely a statutory right. It is a
new or independent right granted by the statute, and not simply a pre-
existing right regulated by it. Being a statutory grant, the rights are only
such as the statute confers, and may be obtained and enjoyed only with
respect to the subjects and by the persons, and on terms and conditions
specified in the statute. Accordingly, it can cover only the works falling within
the statutory enumeration or description.
Ownership of copyrighted material is shown by proof of originality and
copyrightability. To discharge his burden, the applicant may present the
certificate of registration covering the work or, in its absence, other
evidence. A copyright certificate provides prima facie evidence of originality
which is one element of copyright validity. It constitutes prima facie evidence
of both validity and ownership and the validity of the facts stated in the
certificate.

PEARL and DEAN vs Shoemart

Pearl & Dean (Phil), Inc. is a corporation engaged in the manufacture of

advertising display units called light boxes. In January 1981, Pearl & Dean
was able to acquire copyrights over the designs of the display units. In 1988,
their trademark application for “Poster Ads” was approved; they used the
same trademark to advertise their light boxes.
In 1985, Pearl & Dean negotiated with Shoemart, Inc. (SM) so that the former
may be contracted to install light boxes in the ad spaces of SM. Eventually,
SM rejected Pearl & Dean’s proposal.
Two years later, Pearl & Dean received report that light boxes, exactly the
same as theirs, were being used by SM in their ad spaces. They demanded
SM to stop using the light boxes and at the same time asked for damages
amounting to P20 M. SM refused to pay damages though they removed the
light boxes. Pearl & Dean eventually sued SM. SM argued that it did not
infringe on Pearl & Dean’s trademark because Pearl & Dean’s trademark is
only applicable to envelopes and stationeries and not to the type of ad
spaces owned by SM. SM also averred that “Poster Ads” is a generic term
hence it is not subject to trademark registration. SM also averred that the
actual light boxes are not copyrightable. The RTC ruled in favor of Pearl
& Dean. But the Court of Appeals ruled in favor of SM.
ISSUE: Whether or not the Court of Appeals is correct.
HELD: Yes. The 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; what was
copyrighted were the technical drawings only, and not the light boxes
themselves. In other cases, 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.
On the trademark infringement allegation, the words “Poster Ads” are a
simple contraction of the generic term poster advertising. In the absence of
any convincing proof that “Poster Ads” has acquired a secondary meaning in
this jurisdiction, Pearl & Dean’s exclusive right to the use of “Poster Ads” is
limited to what is written in its certificate of registration, namely,
stationeries.

James LIPTON v. THE NATURE COMPANY, et al.

Plaintiff James Lipton is an etymologist and author of the copyrighted

book, An Exaltation of Larks, published originally in 1968, with a second
edition in 1977 and an expanded edition in 1991. The section of the book at
issue here involves seventy-six "terms of venery" collective terms relating to
nature and hunting. Defendant The Nature Company, under a license from
defendant Michael Wein, manufactures and sells various products on which
are imprinted seventy-three terms referred to as "Multitudes"; these terms
duplicate Lipton's terms of venery relating to animals and to nature. Wein
has copyright registration for his compilation of terms, and he licensed the
terms to Nature. Of these seventy-three terms, seventy-two replicate Lipton's
exactly. In addition, Lipton represents that the coordination and arrangement
of the Multitudes terms is substantially similar to the coordination and
arrangement Lipton uses in his book, and that several of the Multitudes
terms even repeat translation and grammatical errors that appear in earlier
editions of An Exaltation of Larks.
ISSUE: Whether Lipton's compilation of terms is copyrightable.
RULING: YES. Lipton's choice was a creative process unique to him, and it is
unlikely that another individual, even a scholar of Middle English, would
choose both the same selection of animals and the identical terms for the
collectives, Lipton's work comes within the protection of the copyright laws.
The seventy-six terms of venery he includes are not a comprehensive or
complete list of all the terms of venery; rather, Lipton used his own judgment
both in the selection of terms and in their arrangement, considering such
factors as the fluidity of language and the lyrical and poetic potential of the
arrangement.
Copyright protection should be granted to original compilations of fact. An
original compilation is defined as one involving the collection and assembly
of preexisting data, the selection, coordination or arrangement of that data,
and a resulting work that is original by virtue of the selection, coordination or
arrangement of the data contained in the work. Choices regarding selection
and arrangement of facts, made independently by the compiler and entailing
even a minimal degree of creativity, are deserving of protection. While even
considerable labor and research efforts are not entitled to copyright
protection; however, both creative product and subjective selection and
arrangement of information are.
Waldman Publishing Corp. vs. Landoll Inc.
Waldman publishes a line of children's books. Playmore sells and distributes
the books for Waldman. The books are adaptations of literary works that are
in the public domain, including Oliver Twist, The Merry Adventures of Robin
Hood, The Mutiny on Board H.M.S. Bounty, Black Beauty, The Swiss Family
Robinson, and David Copperfield. The Waldman books are abbreviated
versions of the classics. They are written in simplified language and have
illustrations on every other page in order to make them more appealing to
young children.
Defendant Landoll also publishes children's books. In December 1993,
Landoll began publishing and selling a line of books called First Illustrated
Classics. The series consists of six softcover books that are illustrated
adaptations of Oliver Twist, The Merry Adventures of Robin Hood, The Mutiny
on Board H.M.S. Bounty, Black Beauty, The Swiss Family Robinson, and David
Copperfield. Landoll began publishing and selling hardcover versions of the
books in January 1994. Waldman and Playmore filed a complaint against
Landoll.
ISSUE: Whether or not Waldman's books are original enough to constitute an
"origin" which may be "falsely designated”?
RULING: YES.
Under the Copyright Act, copyright protection subsists only in "original works
of authorship.” Even if a work is completely identical to a prior work, it may
be considered original if it is not copied from the prior work but is rather the
product of an independent effort by the author. The Waldman books are
adaptations of classic novels and hence are what are termed "derivative
works" in copyright law, meaning that they are adaptations of existing works.
A derivative work is copyrightable if it is sufficiently original. The law requires
more than a modicum of originality. This has been interpreted to require a
distinguishable variation that is more than merely trivial. Originality is
distinguished from novelty; there must be independent creation, but it need
not be invention in the sense of striking uniqueness, ingeniousness, or
novelty, since the Constitution differentiates "authors" and their "writings"
from "inventors" and their "discoveries." Originality means that the work
owes its creation to the author and this in turn means that the work must not
consist of actual copying. The test of originality is concededly a low
threshold. By this definition, the Waldman books are original works. The
selection of which episodes in the classics to include in the books, the
redrafting of the text to tailor the books to young readers and the
illustrations add more than a quantum of originality to the original works.

Kirtsaeng v. John Wiley & Sons, Inc.

Supap Kirtsaeng came to the United States from Thailand for study. To
subsidize the cost of his education, Kirtsaeng asked friends and family in
Thailand to buy copies of textbooks in Thailand and to ship those books to
him in the United States. Kirstaeng then sold the textbooks on eBay at a
profit. Among the books Kirtsaeng sold, were eight textbooks printed in Asia
by John Wiley and Sons, Inc. Wiley sued Kirtsaeng in district court for
copyright infringement.
ISSUE: Whether or not such act constituted copyright infringement
RULING: NO. There was no geographic restriction on the "first sale" doctrine,
which states that the copyright owner maintains control of the first sale only.
The language and common-law history of the Copyright Act support a non-
geographic reading of the Act that allows for unrestricted resale of
copyrighted goods regardless of the location of their manufacture. A
geography-based reading of the "first sale" doctrine would drastically harm
the used-book business as it would force book sellers to be subject to the
whim of foreign copyright holders.

JOAQUIN vs DRILON

BJ Productions Inc. (BJPI) was the holder of copyright over the show Rhoda
and Me. It holds rights over the show’s format and style of presentation. In
1991, BJPI’s president Francisco Joaquin saw on TV – RPN 9’s show It’s a
Date, a show which is basically the same as Rhoda and Me. He eventually
sued Gabriel Zosa, the manager of the show It’s a Date. The investigating
prosecutor found probable cause against Zosa. Zosa later sought a review of
the prosecutor’s resolution before the Secretary of Justice (Franklin Drilon).
Drilon reversed the findings of the fiscal and directed him to dismiss the case
against Zosa.
ISSUE: Whether or not the order of Drilon finding no probable cause is valid.
HELD: Yes. The essence of copyright infringement is the copying, in whole or
in part, of copyrightable materials as defined and enumerated in Section 2 of
PD. No. 49 (Copyright Law). Apart from the manner in which it is actually
expressed, however, the idea of a dating game show is a non-copyrightable
material. Ideas, concepts, formats, or schemes in their abstract form
clearly do not fall within the class of works or materials susceptible
of copyright registration as provided in PD. No. 49. What is covered by
BJPI’s copyright is the specific episodes of the show Rhoda and Me.
Further, BJPI should have presented the master videotape of the show in
order to show the linkage between the copyright show (Rhoda and Me) and
the infringing show (It’s a Date). This is based on the ruling in 20th Century
Fox vs CA (though this has been qualified by Columbia Pictures vs CA, this is
still good law). Though BJPI did provide a lot of written evidence and
description to show the linkage between the shows, the same were not
enough. A television show includes more than mere words can describe
because it involves a whole spectrum of visuals and effects, video and audio,
such that no similarity or dissimilarity may be found by merely describing the
general copyright/format of both dating game shows.
FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC.
vs. BENJAMIN TAN

Plaintiff-appellant 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.” Defendant-appellee is the
operator of a restaurant where a combo with professional singers, hired to
play and sing musical compositions to entertain and amuse customers
therein, were playing and singing the above-mentioned compositions without
any license or permission from the appellant to play or sing the same.
ISSUE: Whether or not the playing and signing of musical compositions which
have been copyrighted under inside the establishment of the defendant-
appellee constitute a public performance for profit within the meaning and
contemplation of the Copyright Law of the Philippines
RULING: YES, but appellee cannot be said to have infringed upon the
Copyright Law
The patrons of the restaurant in question pay only for the food and drinks
and apparently not for listening to the music. It will be noted however that
for the playing and singing the musical compositions involved, the combo
was paid as independent contractors by the appellant. It is therefore obvious
that the expenses entailed thereby are added to the overhead of the
restaurant which are either eventually charged in the price of the food and
drinks or to the overall total of additional income produced by the bigger
volume of business which the entertainment was programmed to attract.
Consequently, it is beyond question that the playing and singing of the
combo in defendant-appellee's restaurant constituted performance for profit
contemplated by the Copyright Law.
Nevertheless, appellee cannot be said to have infringed upon the Copyright
Law. Appellee's allegation that the composers of the contested musical
compositions 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 is correct.
The Supreme Court has ruled that "Paragraph 33 of Patent Office
Administrative Order No. 3 (as amended, dated September 18, 1947) entitled
'Rules of Practice in the Philippines Patent Office relating to the Registration
of Copyright Claims' promulgated pursuant to Republic Act 165, provides
among other things that an intellectual creation should be copyrighted thirty
(30) days after its publication, if made in Manila, or within the (60) days if
made elsewhere, failure of which renders such creation public property."
(Santos v. McCullough Printing Company, 12 SCRA 324-325 [1964]. Indeed, if
the general public has made use of the object sought to be copyrighted for
thirty (30) days prior to the copyright application the law deems the object to
have been donated to the public domain and the same can no longer be
copyrighted.
Complaint DISMISSED.

ABS-CBN Broadcasting Corporation vs. Philippine Multimedia

System, Inc.

Philippine Multi-Media System, Inc. (PMSI) is a signal provider which has

cable and satellite services. It is providing its satellite services through
Dream Broadcasting System. PMSI has its “Free TV” and “Premium
Channels”. The Free TV includes ABS-CBN, GMA-7, and other local networks.
The premium channels include AXN, Jack TV, etc which were paid by
subscribers before such channels can be transmitted as feeds to a
subscriber’s TV set which has been installed with a Dream satellite.
ABS-CBN is a television and broadcasting corporation. It broadcasts
television programs by wireless means to Metro Manila and nearby
provinces, and by satellite to provincial stations through Channel 2 and
Channel 23. The programs aired over Channels 2 and 23 are either produced
by ABS-CBN or purchased from or licensed by other producers. ABS-CBN also
owns regional television stations which pattern their programming in
accordance with perceived demands of the region. Thus, television programs
shown in Metro Manila and nearby provinces are not necessarily shown in
other provinces.
In May 2002, ABS-CBN sued PMSI for allegedly engaging
in rebroadcasting and thereby infringing on ABS-CBN’s copyrights; that the
transmission of Channels 2 and 23 to the provinces where these two
channels are not usually shown altered ABS-CBN’s programming for the said
provinces. PMSI argued that it is not infringing upon ABS-CBN’s copyrights
because it is operating under the “Must-Carry Rule” outlined in NTC
(National Telecommunications Commission) Circular No. 4-08-88.
ISSUE: Whether or not PMSI infringed upon the copyrights of ABS-CBN.
HELD: No. The “Must-Carry Rule” under NTC Circular No. 4-08-88 falls under
the limitations on copyright. The Filipino people must be given wider access
to more sources of news, information, education, sports event and
entertainment programs other than those provided for by mass media and
afforded television programs to attain a well informed, well-versed and
culturally refined citizenry and enhance their socio-economic growth. The
very intent and spirit of the NTC Circular will prevent a situation whereby
station owners and a few networks would have unfettered power to make
time available only to the highest bidders, to communicate only their own
views on public issues, people, and to permit on the air only those with
whom they agreed – contrary to the state policy that the (franchise) grantee
like ABS-CBN, and other TV station owners and even the likes of PMSI, shall
provide at all times sound and balanced programming and assist in the
functions of public information and education.
PMSI was likewise granted a legislative franchise under Republic Act No.
8630, Section 4 of which similarly states that it “shall provide adequate
public service time to enable the government, through the said broadcasting
stations, to reach the population on important public issues; provide at all
times sound and balanced programming; promote public participation such
as in community programming; assist in the functions of public information
and education.
The “Must-Carry Rule” favors both broadcasting organizations and the public.
It prevents cable television companies from excluding broadcasting
organization especially in those places not reached by signal. Also, the rule
prevents cable television companies from depriving viewers in far-flung areas
the enjoyment of programs available to city viewers.

Williams & Wilkins Co. v. United States, 487 F.2d 1345 (Ct. Cl. 1973)
Year 1973 Court United States Court of Claims Key
Facts: Plaintiff Williams & Wilkins Co. was a major publisher of medical
journals and books. Defendants National Institutes of Health and National
Library of Medicine would, upon request, photocopy articles in medical
journals published by plaintiff and distribute them to researchers. Defendants
did not monitor the reason for the copy requests, and the requesting
researcher could retain the copy permanently. Plaintiff sued for copyright
infringement, and defendants raised the fair use defense.
Issue: Whether the defendants’ unauthorized photocopying of plaintiff’s
articles for use by medical researchers constituted fair use.
Held: YES.
The court held that defendants’ unauthorized photocopying of plaintiff’s
articles was fair use because the copies were made for the researchers’ own
professional use and not for profit or other gain. Defendants also placed
strict limitations on photocopying, which kept “the duplication within
appropriate confines.” The court based its fair use decision on three main
determinations. First, the court noted that plaintiff did not prove that it had
been or would be harmed substantially by defendants’ practices. Second, the
court was convinced that holding defendants’ practices to be copyright
infringement would “no doubt” harm medicine and medical research. Third,
the court held that balancing the interests of science with those of publishers
required a legislative solution.

Nat'l Rifle Ass’n of Am. v. Handgun Control Fed’n of Ohio, 15 F.3d

559 (6th Cir. 1994) Year 1994 Court United States Court of Appeals
for the Sixth Circuit Key
Facts: Plaintiff the National Rifle Association of America (NRA), which lobbies
officials and educates the public in support of the ownership of firearms,
mailed two letters to its membership urging them to oppose bills pending in
the Ohio state legislature. Accompanying each letter was a three-page list of
all Ohio state legislators and their corresponding contact information. The list
included asterisks next to the names of members of legislative committees
relevant to the pending bills. A short paragraph explaining why certain
names had been marked with asterisks was at the bottom of the list. In
response, defendant Handgun Control Federation of Ohio, which advocated
gun control, mailed a letter to its members urging them to support the bills
plaintiff opposed. Attached to defendant’s letter was the photocopied,
though slightly modified, listing of Ohio State legislators that plaintiff used in
its mailing. Defendant appealed the district court’s ruling in plaintiff’s favor.
Issue: Whether defendant’s unauthorized duplication and use of plaintiff’s
list of state legislators constitutes fair use.
Held: YES.
The court held that the defendant’s use of the list of legislators was fair. The
court found that the first and fourth factors weighed in favor of finding fair
use, reasoning that defendant, a non-profit organization, had made a
noncommercial use of the legislator list with no attempt to sell it. Further, the
court noted that the list contained information so readily attainable that no
market likely existed for it, and found that the distribution—to only 200
people—was not particularly damaging. The court also found that the
document was used primarily to exercise defendant’s First Amendment
speech rights to comment on public issues and to petition the government
regarding pending legislation. Indicating that the scope of the fair use
doctrine is wider when the use relates to issues of public concern, the court
found that this factor weighed in defendant’s favor. Finally, for the second
and third factors, the court found that the list at issue was entirely factual
and that defendant copied only the list and not the copyrighted NRA letters,
weighing in favor of fair use.

Pacita I. Habana, et al. vs. Felicidad Robles and Goodwill Trading

Pacita Habana and two others were the authors of College English for Today
Series 1 and 2 (CET). While they were researching for books to assist them in
updating their own book, they chanced upon the book of Felicidad Robles
entitled Developing English Proficiency Books 1 and 2 (DEP). They discovered
further that the book of Robles was strikingly similar to the contents, scheme
of presentation, illustrations and illustrative examples of CET. They then sued
Robles and her publisher (Goodwill Trading Co.) for infringement and/or
unfair competition with damages.
Robles, in her defense, alleged that her sources were from foreign books;
that in their field, similarity in styles cannot be avoided since they come from
the same background and orientation. The trial court as well as the Court of
Appeals ruled in favor of Robles.
ISSUE: Whether or not the Court of Appeals is correct.
HELD: No. A perusal of the records yields several pages of the book DEP that
are similar if not identical with the text of CET. In several other pages the
treatment and manner of presentation of the topics of DEP are similar if not a
rehash of that contained in CET. The similarities in examples and material
contents are so obviously present in this case. How can similar/identical
examples not be considered as a mark of copying? Robles’ act of lifting from
the book of Habana et al substantial portions of discussions and examples,
and her failure to acknowledge the same in her book is an infringement of
Habana et al’s copyrights.
The Supreme Court also elucidated that in determining the question of
infringement, the amount of matter copied from the copyrighted work is an
important consideration. To constitute infringement, it is not necessary that
the whole or even a large portion of the work shall have been copied. If so
much is taken that the value of the original is sensibly diminished, or the
labors of the original author are substantially and to an injurious extent
appropriated by another, that is sufficient in point of law to constitute piracy.

NBI-Microsoft Corp. vs. Judy Hwang, et al

In May 1993, Microsoft Corporation and Beltron Computer Philippines, Inc.

entered into a Licensing Agreement. Under Section 2(a) of the Agreement,
Microsoft authorized Beltron, for a fee, to:
1. Reproduce and install no more than one copy of Windows on each
Customer System hard disk;
2. Distribute directly or indirectly and license copies of Windows (reproduced
as per Section 2 of the Agreement and/or acquired from an Authorized
Replicator or Authorized Distributor.
Their agreement allowed either party to terminate if one fails to comply with
their respective obligations. Microsoft terminated the Agreement in June
1995 by reason of Beltron’s non-payment of royalties. Later, Microsoft
learned that Beltron was illegally copying and selling copies of Windows.
Microsoft then sought the assistance of the National Bureau of Investigation.
NBI agents made some purchase from Beltron where they acquired a
computer unit pre-installed with Windows, 12 windows installer CDs packed
as Microsoft products. The agents were not given the end-user license
agreements, user manuals, and certificates of authenticity for the products
purchased. They were given a receipt which has a header of “T.M.T.C. (Phils)
Inc. BELTRON COMPUTER”. TMTC stands for Taiwan Machinery Display and
Trade Center.
A search warrant was subsequently issued where 2,831 CDs of Windows
installers, among others, were seized. Based on the items seized from
Beltron, Microsoft filed a case of copyright infringement against Beltron and
TMTC as well as their officers (Judy Hwang et al) before the Department of
Justice (DOJ). Beltron, in its counter-affidavit, argued the following:
1. That Microsoft’s issue with Beltron was really just to have leverage in
forcing Beltron to pay the unpaid royalties; and that Microsoft should have
filed a collection suit.
2. That the computer unit allegedly purchased by the NBI agents from them
cannot be decisively traced as coming from Beltron because the receipt
issued to the agents did not list the computer unit as one of the items
bought.
3. That the 12 installers purchased by the agents which are actually listed in
the receipt were not manufactured by Beltron but rather they were genuine
copies purchased by TMTC from an authorized Microsoft seller in Singapore.
4. That the 2,831 installers seized from them were not a property of Beltron
but rather they were left to them by someone for safekeeping.
The DOJ secretary agreed with Beltron and dismissed the case. The Secretary
ruled that the issue of the authority of Beltron to copy and sell Microsoft
products should first be resolved in a civil suit. Microsoft appealed the
decision of the DOJ secretary before the Supreme Court. Meanwhile, Beltron
filed a motion to quash the search warrant before the RTC that issued the
same. The RTC partially granted the quashal. The Court of Appeals reversed
the RTC. Hwang et al did not appeal the CA decision.
ISSUE: Whether or not the DOJ Secretary is correct.
HELD: No. Section 5 of Presidential Decree 49 enumerates the rights vested
exclusively on the copyright owner. Contrary to the DOJ’s ruling, 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
owner’s 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 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.
Being the copyright and trademark owner of Microsoft software, Microsoft
acted well within its rights in filing the complaint before DOJ on the
incriminating evidence obtained from Beltron. Hence, it was highly irregular
for the DOJ to hold that Microsoft sought the issuance of the search warrants
and the filing of the complaint merely to pressure Beltron to pay its overdue
royalties to Microsoft.
There is no basis for the DOJ to rule that Microsoft must await a prior
“resolution from the proper court of whether or not the Agreement is still
binding between the parties.” Beltron has not filed any suit to question
Microsoft’s termination of the Agreement. Microsoft can neither be expected
nor compelled to wait until Beltron decides to sue before Microsoft can seek
remedies for violation of its intellectual property rights.
Furthermore, the articles seized from Beltron are counterfeit per se because
Microsoft does not (and could not have authorized anyone to) produce such
CD installers The copying of the genuine Microsoft software to produce these
fake CDs and their distribution are illegal even if the copier or distributor is a
Microsoft licensee. As far as these installer CD-ROMs are concerned, the
Agreement (and the alleged question on the validity of its termination) is
immaterial to the determination of Beltron’s liability for copyright
infringement and unfair competition. Beltron’s defense that the box of CD
installers found in their possession was only left to them for safekeeping is
not tenable.

Manly Sportwear Manufacturing, Inc. vs. Dadodette Enterprises

and/or Hermes Sports Center

On the basis of information that respondent Dadodette Enterprises were in

possession of sporting goods or articles, the copyright of which belonged to
petitioner Manly, the NBI applied for search warrant before the trial court
which ruled on its issuance. Thereafter, respondent moved to quash the
warrant on the ground that petitioner’s goods are ordinary and not among
the works protected under the IP Code. The trial court annulled the warrant
holding that there were certificates of registration over the same goods
issued earlier than that of petitioner negating its claim that the goods were
original works entitled to copyright protection. CA affirmed.
Issue:
Whether or not the certificates of registration issued to petitioner is proof of
its ownership.
Ruling: NO.
Besides, no copyright accrues in favor of MANLY despite issuance of the
certificates of registration and deposit pursuant to Section 2, Rule 7 of the
Copyrights Safeguards and Regulations which states:
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. It is not a conclusive proof of
copyright ownership. As it is, non-registration and deposit of the work within
the prescribed period only makes the copyright owner liable to pay a fine.