Philippine Education Co. v. Sotto and Alindada (January 29, 1929; Johns, J.

Facts:
Petitioner Corporation contracted with Austin Craig for the preparation and
publication of an original article to be written by him concerning Mrs. Jose Rizal, to be
published exclusively in the Philippine Education Magazine. Craig delivered and
article to petitioner entitled “The True story of Mrs. Rizal” which was published by the petitioner
in its magazine. In said issue, the plaintiff placed a notice that “all rights thereto were
reserved.”

Said article was copied and reproduced and published in the weekly issues of The Independent
without citing the source of its reproduction. Upon the discovery of such publication, plaintiff
called the defendants attention to the fact that the article in question was published without
permission or even the courtesy of an ordinary credit line.

The editor, in answer to the letter sent by plaintiff, claimed that as the plaintiff had not
registered the rights on the article under the Copyright Law, any newspaper can reprint the
article of Craig without permission from anybody. The article was again published in the next
issue of The Independent.

Issue: W/N the article entitled “The True Story of Mrs. Rizal,” became public property
because the plaintiff failed to have it registered in its name under the Copyright Law, and as
such may be reproduced or published without the plaintiff’s consent?

Held:
Sec 5 of Act No. 3134 provides that:

“News items, editorial paragraphs, and articles in periodicals may also be reproduced unless
they contain a notice that their publication is reserved or a notice of copyright, but the source of
the reproduction or original reproduced shall be cited. In case of musical works part of little
extent may also be reproduced.”

The language is plain, clear, definite and certain. Under the 2 nd paragraph of Sec
5,Act No. 3134 (Copyright Law), where one periodical purchases, pays for and
publishes an article with notice “that all rights thereto were reserved,” another
periodical has no legal right to again publish the said article without giving the
source of reproduction or citing the original from which it was reproduced.

The provision is clear that it does not require “notice of copyright”. It is sufficient
that the original article contains a notice in substance “that their publication is reserved.”
This exception is specifically confined and limited to “news items, editorial paragraphs,
and articles in periodicals,” and hence could not be made to apply to any other provision of the
Copyright Law.

Common courtesy among newspaper men would suggest that the defendant would give "the
source of the reproduction." It would have been a very simple and an easy thing to do

MAURO MALANG SANTOS v. MCCULOUGH PRINTING COMPANY

G.R. No. L- 19439, 31 October 1964, En Banc (Paredes, J)
Facts:
Mauro Santos filed an action for damages for unauthorized use, adoption and appropriation by
Mccullough Printing Company of the intellectual creation or artistic design for a Christmas card by
Santos based on the provisions of Articles 721 & 722 of the Civil Code of the Philippines.
The design 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, besidea tree, underneath which
appears Santos’ pen name, Malang.
The complaint alleges that the plaintiff, Mauro 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, Mccullough Printing Company, without the knowledge and authority of the 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, the plaintiff suffered moral damages of Php 16,000.00, because of it has
placed the plaintiff’s professional integrity and ethics under serious question and caused him grave
embarrassment before Ambassador Neri. He further prayed for the additional sum of Php 3,000.00 by
way of attorney’s fee.
Defendant in answer to the complaint, after some denials and admissions, moved for the dismissal of
the action claiming that 
1. The design claimed does not contain a clear notice that it belonged to him and that he prohibited
its use by others;
2. The design in question has been published but does not contain a notice of copyright, as in fact it
never been copyrighted by the plaintiff, for which reason this action is barred by the Copyright
Law;
3. The complaint does not state cause of action.
Issues:
1. Whether or not the plaintiff, Mauro Santos is entitled to protection, notwithstanding the fact that
he has not copyrighted his design
2. Whether or not the publication is limited, so as to prohibit its use by others or it is general
publication
Ruling:
1. No. The 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 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, even as if this moment, there is no copyright design in question.
a. No. The publication is not limited but a general one. The Supreme Court ruled that, they
are not prepared to accept the contention of appellant that the publication of the design
was a limited one, or that there was an understanding that only Ambassador Neri should,
have absolute right to use the same. In the first place, if such were the condition then
Ambassador Neri would be the aggrieved party, and not the appellant. In the second
place, if there was such a limited publication or prohibition, the same was not shown on
the face of the design. When the purpose is a limited publication, but the effect is general
 publication, irrevocable rights thereupon become vested in the public, in consequence of
which enforcement of the restriction becomes impossible (Nutt vs. National Institute, 31
F [2d] 236). It has been held that the effect of offering for sale a dress, for example
manufactured in accordance with an original design which is not protected by either a
copyright or a patent, is to divest the owner of his common law rights therein by virtue of
the publication of a “copy” and thereafter anyone is free to copy the design or the dress
(Fashion Originators Guild of America v. Federal Trade Commission, 114 F [2d] 80).

When Ambassador Neri distributed 800 copies of the design in controversy, the
plaintiff lost control of his design and the necessary implication was that there had been a
general publication, there having been no showing of a clear indication that a limited
publication was intended. The author of a literary composition has a light to the first
publication thereof. He has a right to determine whether it shall be published at all, and if
published, when, where, by whom, and in what form. This exclusive right is confined to
the first publication. When once published, it is dedicated to the public, and the author
loses the exclusive right to control subsequent publication by others, unless the work is
placed under the protection of the copyright law.

Wherefore, the decision appealed from, should be, as it is hereby AFFIRMED with costs against
plaintiff.

20th Century Fox Film v. Court of Appeals, G.R. Nos. 76649-51, August 19, 1988

DECISION
(3rd Division)

GUTIERREZ, JR., J.:

I. THE FACTS

Petitioner 20th Century Fox Film Corporation sought the assistance of the NBI in conducting searches
and seizures in connection with the NBI’s anti-film piracy campaign. Petitioner alleged that certain
videotape outlets all over Metro Manila are engaged in the unauthorized sale and renting out of
copyrighted films in violation of PD No. 49 (the old Intellectual Property Law).

The NBI conducted surveillance and investigation of the outlets pinpointed by the petitioner and
subsequently filed three (3) applications for search warrants against the video outlets owned by the
private respondents. The lower court issued the desired search warrants. The NBI, accompanied by the
petitioner's agents, raided the video outlets and seized the items described in the three warrants.

Private respondents later filed a motion to lift the search warrants and release the seized properties,
which was granted by the lower court. Petitioner’s motion for reconsideration was denied by the lower
court. The CA affirmed the trial court.
II. THE ISSUE

Did the judge properly lift the search warrants he issued earlier?

III. THE RULING

[The Court DISMISSED the petition and AFFIRMED the questioned decision and resolution of the CA.]

YES, the judge properly lifted the search warrants he issued earlier.

The lower court lifted the three (3) questioned search warrants in the absence of probable cause that
the private respondents violated P.D. 49. NBI agents who acted as witnesses during the application for
search warrant did not have personal knowledge of the subject matter of their testimony, which was the
alleged commission of the offense of piracy by the private respondents. Only the petitioner’s counsel
who was also a witness during the application stated that he had personal knowledge that the
confiscated tapes owned by the private respondents were pirated tapes taken from master tapes
belonging to the petitioner. The lower court lifted the warrants, declaring that the testimony of
petitioner’s counsel did not have much credence because the master tapes of the allegedly pirated
tapes were not shown to the court during the application.

The presentation of the master tapes of the copyrighted films, from which the pirated films were
allegedly copied, was necessary for the validity of search warrants against those who have in their
possession the pirated films. The petitioner's argument to the effect that the presentation of the master
tapes at the time of application may not be necessary as these would be merely evidentiary in nature
and not determinative of whether or not a probable cause exists to justify the issuance of the search
warrants is not meritorious. The court cannot presume that duplicate or copied tapes were necessarily
reproduced from master tapes that it owns.

The essence of a copyright infringement is the similarity or at least substantial similarity of the
purported pirated works to the copyrighted work. Hence, the applicant must present to the court the
copyrighted films to compare them with the purchased evidence of the video tapes allegedly pirated to
determine whether the latter is an unauthorized reproduction of the former. This linkage of the
copyrighted films to the pirated films must be established to satisfy the requirements of probable cause.
Mere allegations as to the existence of the copyrighted films cannot serve as basis for the issuance of a
search warrant.

CASE DIGEST

COLOMBIA PICTURES VS CA
G.R. No. 110318

FACTS
1. Complainants thru counsel lodged a formal complaint with the National Bureau of
Investigation for violation of PD No. 49, as amended, and sought its assistance in their anti-
film piracy drive.

2. On November 14, 1987, NBI Senior Agent Lauro C. Reyes applied for a search warrant with
the courta quo against Sunshine seeking the seizure of pirated video tapes of copyrighted
films and equipment and paraphernalia used or intended to be used in the unlawful
 exhibition, showing, reproduction, sale, lease or disposition of videograms tapes in the
premises above described.

3. The search warrant was served at about 1:45 p.m. on December 14, 1987 to Sunshine
and/or their representatives. NBI Agents found and seized various video tapes of duly
copyrighted motion pictures/films owned or exclusively distributed by private complainants,
and machines, equipment, television sets, paraphernalia, materials, accessories all of which
were included in the receipt for properties accomplished by the raiding team.

4. On December 16, 1987, a "Return of Search Warrant" was filed with the Court.

5. A "Motion To Lift the Order of Search Warrant" was filed but was later denied for lack of merit
(p. 280, Records). A Motion for reconsideration of the Order of denial was filed. The court a
quo granted the said motion for reconsideration. Petitioners appealed to the Court of Appeals
however, the appeal was dismissed and the motion for reconsideration was denied.

ISSUE
WON the issuance of search warrant to Sunshine was legal and valid.

RULING:
The issuance of search of warrant to Sunshine was legal and valid on the grounds that judicial
interpretation of a statute constitutes part of the law as of the date it was originally passed. Hence,
the lower court did not commit any error nor did it fail to comply with any legal requirement in the
issuance of search warrant even though copyright infringement cases were only promulgated on 19
August 1988, six months after the issuance of the search warrant.

Francisco Joaquin, Jr. vs Franklin Drilon

February 9, 2012
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302 SCRA 225 – Mercantile Law – Intellectual Property – Law on Copyright – Game Show – Ideas and
Concepts Not Covered by Copyright – Presentation of the Master Tape

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.

PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs.

FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC.
G.R. No. 131522, July 19, 1999

FACTS: Pacita Habana et al., are authors and copyright owners of duly
issued of the book, College English For Today (CET). Respondent
Felicidad Robles was the author of the book Developing English
Proficiency (DEP). Petitioners found that several pages of the respondent's
book are similar, if not all together a copy of petitioners' book. Habana et al.
filed an action for damages and injunction, alleging respondent’s
infringement of copyrights, in violation of P.D. 49. They allege respondent
Felicidad C. Robles being substantially familiar with the contents of
petitioners' works, and without securing their permission, lifted, copied,
plagiarized and/or transposed certain portions of their book CET.

On the other hand, Robles contends that the book DEP is the product of
her own intellectual creation, and was not a copy of any existing valid
copyrighted book and that the similarities may be due to the authors'
exercise of the "right to fair use of copyrighted materials, as guides."
 The trial court ruled in favor of the respondents, absolving them of any
liability. Later, the Court of Appeals rendered judgment in favor of
respondents Robles and Goodwill Trading Co., Inc. In this appeal,
petitioners submit that the appellate court erred in affirming the trial court's
decision.

ISSUE: Whether Robles committed infringement in the production of DEP.

HELD: A perusal of the records yields several pages of the book DEP that
are similar if not identical with the text of CET. The court finds that
respondent Robles' act of lifting from the book of petitioners substantial
portions of discussions and examples, and her failure to acknowledge the
same in her book is an infringement of petitioners' copyrights.

In the case at bar, the least that respondent Robles could have done was
to acknowledge petitioners Habana et. al. as the source of the portions of
DEP. The final product of an author's toil is her book. To allow another to
copy the book without appropriate acknowledgment is injury enough.

Wilson Ong Ching Kian Chuan v CA

[G.R. No. 130360. August 15, 2001]
QUISUMBING, J.

FACTS:
· 1) Petitioner imports vermicelli from China National Cereals Oils and Foodstuffs, based in Beijing, China,
under the firm name C.K.C. Trading. He repacks it in cellophane wrappers with a design of two-dragons
and the TOWER trademark on the uppermost portion.
· 2)Ong acquired a Certificate of Copyright Registration from the National Library on June 9, 1993 on the
said design.
· 3) Ong filed against Tan a verified complaint for infringement of copyright with damages and prayer for
temporary restraining order or writ of preliminary injunction with the RTC-QC.
o Ong alleged that he was the holder of a Certificate of Copyright Registration over the cellophane
wrapper with the two-dragon design, and that Tan used an identical wrapper in his business. In
his prayer for a preliminary injunction in addition to damages, he asked that Tan be restrained
from using the wrapper.
· 4) Tan filed an opposition alleging that Ong was not entitled to an injunction.
o According to Tan, Ong did not have a clear right over the use of the trademark Pagoda and
Lungkow vermicelli as these were registered in the name of Ceroilfood Shandong, based
in Qingdao, China.
o Further, Tan averred that he was the exclusive distributor in the Philippines of the Pagoda
and Lungkow vermicelli and was solely authorized to use said trademark.
o He added that Ong merely copied the two-dragon design from Ceroilfood Shandong which
had the Certificates of Registration issued by different countries.
o Private respondent alleges that the trademark PAGODA BRAND was registered in China
on October 31, 1979 while the trademark LUNGKOW VERMICELLI WITH TWO-DRAGON
DEVICE was registered on August 15, 1985.
· Trial Court issued a temporary restraining order on the same date the complaint was filed. It likewise
issued the writ in Ong’s favor upon his filing of a P100,000.00 bond.
· CA gave due course and granted the petition. The lower court’s orders, as well as the writ of preliminary
injunction, were set aside. Ong filed a MR from which CA modified its decision and made the injunction
permanent.

ISSUE:
· W/N the issuance of the writ of preliminary injunction in favor of private respondent was proper?

HELD: Petition is partially granted. The prayer for a writ of preliminary injunction to prohibit Tan from
using the cellophane wrapper with two-dragon device is denied, but the finding of the respondent
appellate court that Ong’s copyrighted wrapper is a copy of that of Ceroilfood Shandong is SET ASIDE for
being premature. Case was remanded to RTC.

RATIO:
· A person to be entitled to a copyright must be the original creator of the work. He must have
created it by his own skill, labor and judgment without directly copying or evasively imitating the
work of another. The copies of the certificates of copyright registered in the name of Ceroilfood Shandong
sufficiently raise reasonable doubt. With such a doubt, the preliminary injunction asked by Ong against
Tan is unavailing.
· To be entitled to an injunctive writ, petitioner must show, inter alia, the existence of a clear and
unmistakable right and an urgent and paramount necessity for the writ to prevent serious damage. In
this case, the Court found that petitioner’s right has not been clearly and unmistakably demonstrated.
· The Court added it was premature for the CA to declare that the design of petitioner’s wrapper is a copy
of the wrapper allegedly registered by Ceroilfood Shandong. The only issue brought before the CA
involved the grave abuse of discretion allegedly committed by the trial court in granting the writ of
preliminary injunction, and not on the merits of the infringement case. That matter remains for decision
after appropriate proceedings at the trial court.

VENANCIO SAMBAR, doing business under the name and style of CVS
Garment Enterprises vs. LEVI STRAUSS & CO., LEVI STRAUSS (PHIL.),
INC.

FACTS:

Private respondents alleged in their complaint that Levi Strauss and Co.
(LS&Co.), an internationally known clothing manufacturer, own the arcuate
design trademark which was registered under US Trademark Registration
No. 404,248 on November 16, 1943. That sometime in 1987, CVSGIC and
Venancio Sambar, without the consent and authority of private respondents
and in infringement and unfair competition, sold and advertised, and
despite demands to cease and desist, continued to manufacture, sell and
advertise denim, pants under the brand name “Europress” with back
pockets bearing a design similar to the arcuate trademark of private
respondents, thereby causing confusion on the buying public, prejudiced to
private respondent’s goodwill and property right.
Sambar filed a separate answer. He admitted that copyright Registration
No. 1-1998 was issued to him, but he denied using it. He said he did not
authorize anyone to use the copyrighted design.

Trial court issued a writ of preliminary injunction enjoining CVSGIC and

petitioner from manufacturing, advertising and selling pants with the
arcuate design on their back pockets.

Private respondents moved for reconsideration praying for the cancellation

of petitioner’s copyright registration.

Trial court granted the prayer.

Petitioner appealed to the Court of Appeals which affirmed the ruling of the
trial court.

ISSUE:

Whether petitioner infringe on private respondent’s arcuate design.

HELD:

To be entitled to a copyright, the thing being copyrighted must be original,

created by the author through his own skill, labor and judgment, without
directly copying or evasively imitating the work of another.

Both the trail court and the Court of Appeals found there was infringement.
SAMBAR vs. LEVI STRAUSS & CO.
G.R. No. 132604. March 6, 2002

Facts:
1. Levi Strauss & Co., and Levi Strauss Phil, Inc., through a letter from their legal officer, demanded
that CVS Garment Enterprises (CVSGE) desist from using their stitched arcuate design on the
Europress jeans which CVSGE advertised in the Manila Bulletin.
2. Defense: Atty. Benjamin Gruba, counsel of CVSGE: the arcuate design on the back pockets of
Europress jeans was different from the design on the back pockets of Levi’s jeans.
a. He further asserted that his client had a copyright on the design it was using.
3. Private respondents filed a complaint against Sambar, doing business under the name and style
of CVSGE.
a. Private respondents also impleaded the Director of the National Library.
 b. Alleged in their complaint that Levi Strauss and Co. (LS&Co.), an internationally known
clothing manufacturer, owns the arcuate design trademark which was registered under
U.S. Trademark Registration No. 404, 248 and in the Principal Register of trademarks
with the Philippine Patent Office under Certificate of Registration No. 20240
c. CVSGIC and Venancio Sambar, without the consent and authority of private respondents
and in infringement and unfair competition, sold and advertised, and despite demands
to cease and desist, continued to manufacture, sell and advertise denim pants under the
brand name “Europress” with back pockets bearing a design similar to the arcuate
trademark of private respondents, thereby causing confusion on the buying public,
prejudicial to private respondents’ goodwill and property right.
4. Answer: CVSGIC admitted it manufactured, sold and advertised and was still manufacturing and
selling denim pants under the brand name of “Europress”, bearing a back pocket design of two
double arcs meeting in the middle.
a. However, it denied that there was infringement or unfair competition because the
display rooms of department stores where Levi’s and Europress jeans were sold, were
distinctively segregated by billboards and other modes of advertisement.
b. CVSGIC avers that the public would not be confused on the ownership of such known
trademark as Levi’s, Jag, Europress, etc.. Also, CVSGIC claimed that it had its own
original arcuate design, as evidenced by Copyright Registration No. 1-1998, which was
very different and distinct from Levi’s design.
5. TC: issued a writ of preliminary injunction enjoining CVSGIC and petitioner from manufacturing,
advertising and selling pants with the arcuate design on their back pockets.
6. CA: affirmed

Issue: WON there was an infringement of respondent’s arcuate mark.

Held: YES. Europress’ use of the arcuate design was an infringement of the Levi’s design.
Ratio:
1. The backpocket design of Europress jeans, a double arc intersecting in the middle was the same
as Levi’s’ mark, also a double arc intersecting at the center.
a. Although the trial court found differences in the two designs, these differences were
not noticeable.
b. Further, private respondents said, infringement of trademark did not require exact
similarity.
c. Colorable imitation enough to cause confusion among the public, was sufficient for a
trademark to be infringed.
d. Private respondents explained that in a market research they conducted with 600
respondents, the result showed that the public was confused by Europress
trademark vis the Levi’s trademark.
2. It must be stressed that it was immaterial whether or not petitioner was connected with
CVSGIC.
a. What is relevant is that petitioner had a copyright over the design and that he allowed
the use of the same by CVSGIC.
3. Private respondents assert that the lower courts found that there was infringement and Levi’s
was entitled to damages based on Sections 22 and 23 of RA No. 166 otherwise known as the
Trade Mark Law, as amended, which was the law then governing. Said sections define
infringement and prescribe the remedies therefor.
 a. Further, private respondents aver it was misleading for petitioner to claim that the trial
court ruled that private respondents did not suffer pecuniary loss, suggesting that the
award of damages was improper.
b. According to the private respondents, the trial court did not make any such ruling. It
simply stated that there was no evidence that Levi’s had suffered decline in its sales
because of the use of the arcuate design by Europress jeans.
c. They offer that while there may be no direct proof that they suffered a decline in
sales, damages may still be measured based on a reasonable percentage of the gross
sales of the respondents, pursuant to Section 23 of the Trademark law.
4. The cancellation of petitioner’s copyright was justified because petitioner’s copyright cannot
prevail over respondents’ registration in the Principal Register of Bureau of Patents,
Trademarks, and Technology Transfer.
a. According to private respondents, the essence of copyright registration is originality and
a copied design is inherently non-copyrightable.
b. They insist that registration does not confer originality upon a copycat version of a prior
design.
5. The award of damages and cancellation of petitioner’s copyright are appropriate.
a. Award of damages is clearly provided in Section 23, while cancellation of petitioner’s
copyright finds basis on the fact that the design was a mere copy of that of private
respondents’ trademark.
b. To be entitled to copyright, the thing being copyrighted must be original, created by
the author through his own skill, labor and judgment, without directly copying or
evasively imitating the work of another

Dispositive: WHEREFORE, the decision dated January 30, 1998, of the Court of Appeals, in CA-G.R. CV
No. 51553 AFFIRMING the judgment of the Regional Trial Court of Makati, Branch 66, dated July 14,
1995, is hereby MODIFIED so that nominal damages are deleted but the amount of P50,000 is hereby
awarded only as TEMPERATE DAMAGES. In all other respects, said judgment is hereby AFFIRMED.

NAME AND CITATION

Meshwerks v. Toyota Motor Sales
17 June 2008
528 F.3d 1258

FACTS
In 2003, Toyota commenced its 2004 advertising campaign design for its upcoming
automotive models, upon which they hired Saatchi & Saatchi advertising agency and
formulated campaign be vested upon digital models of Toyota vehicles for use on
Toyota's website. Subsequent sub-contract was issued to Grace & Wild Inc. to produce
these digital models. Upon which the latter sub-contracted Meshwerks to facilitate the
digitization and wireframe modeling of Toyota automotive vehicles.

Meshwerks invested meticulous efforts in mapping data points placed upon actual
Toyota vehicles, then correlated and refined this information via software interpretation
into corresponding digital wireframe models within a computerized grid
layout. Significant challenges were encountered and resolved in the 3-dimensional
automotive wireframes. Upon completion, Meshwerks delivered products to Grace &
Wild Inc. for further "skin" texturing, lighting effects, and animation to be used in
Toyota's website advertisements.

However, when Toyota used Meshwerks-created products in a TV commercial, the latter

asserted contractual breach claims that the former was not authorized to use these
digital wireframe models in any other manner except on Toyota's website. Hence,
Meshwerks commenced Copyright Infringement claims.

ISSUES :
1) Does Copyright protection considers the Author's effort, creative decision-making
process, and Originality embodied within the tangible asset created ?

2) Are all unauthorized Copying deemed per se infringement upon a Copyright owner's
exclusivity rights ?

3) Can Copyright protection be vested upon material created in one tangible medium,
by which is an intentional exact duplicate or close abstraction of material derived from
another copyright tangible medium ?

HOLDINGS :
1) No. Copyright protection only considers the final product in demonstrating some
creative semblance of Originality expressed in the fixed tangible medium. Author's
effort and creative decision-making is superfluous to legal determination of Originality
and Copyright award.

2) No. Law recognizes not all unauthorized copying infringes upon Copyright owner
exclusivity rights. For it acknowledges Fortuitous Copying by which a party via good
faith action - independent effort – non reliance on prior copyright material, accidentally
or via spontaneous insight created the asset either in exact or close resemblance to
prior Copyright material.

3) No. Copy in a new medium is copyrightable only where the copier makes some
identifiable original contribution. Mere exact or near-exact intentional duplicate of an
original will not qualify for copyright protection since legal creative transformation of
material in the new fixed tangible medium was not attained.

REASONING
Court anchored its review on legal concept of "Originality" as the "sine qua non of
copyright", this indispensable element is promoted through both the US Constitution
Copyright Clause, along with US Supreme Court decision that the "power afforded by
this provision--namely, to give an author exclusive authority over a work--rests in part
on a presupposition that the work contains a degree of originality".

As such, Originality "means only that the work was independently created by the
author, as opposed to copied from other works", therefore "a copier is not a creator,
much less an independent creator". ( however, Fortuitous Copying is legally
permissible since assets were created, via good faith, by accident or spontaneous
insight independent of and no reliance upon prior copyright materials ). Therefore,
Copyright protection is extended only to "original works of authorship".

Nevertheless, the law also recognizes not every work of authorship, or even aspect of
such work is copyright protectable. For raw conceptual ideas/facts cannot be protected
in this manner, only original expressions of these ideas/facts fixed in a tangible medium
can be considered for such protection ( aka Idea/Expression Dichotomy ).

Thus, a delicate equilibrium is achieved by which Intellectual Property rights are

leveraged primarily to encourage innovation, societal progress, and public welfare in
building upon these results. With secondary emphasis on granting individuals time-
limited copyright ownership based on defined exclusivity rights. Hence, Copyright is
articulated "primarily not to reward the labor of authors, but to promote the progress of
science and the useful arts".

In this case, regardless of Appellant Meshwerks meticulous efforts in creating digitized

automotive wireframes, Court will only consider Originality of the final tangible product,
not the author's dedication or creative decision-making process. Mere "fact that a work
in one medium has been copied from a work in another medium does not render it any
the less a 'copy'". For the "putative creator ( author intention or state of mind ) who
merely shifts the medium in which another's creation is expressed has not necessarily
added anything beyond the expression contained in the original".

Via this legal rationale, Meshwerks took Toyota's automobile in one tangible medium,
and transcribed it as-is into a software-based tangible medium via digitized wireframe
abstraction in exact or near-exact duplication. It is precisely this intentional duplication
effort which fails the Originality test. For "a copy in a new medium is copyrightable
only where the copier makes some identifiable original contribution", thus "an exact or
near-exact duplicate of an original should not qualify for copyright" to invoke "the
highly advantageous legal monopoly granted under the Copyright".

In addition, author's putative stance is also direct evidence of intentional copying, thus
not copyrightable. When the author "affirmatively sets out to be unoriginal, i.e., to
make a copy of someone else's creation rather than to create an original work, it is far
more likely that the resultant product will, in fact, be unoriginal". Therefore, Meshwerks
Copyright registration is invalid when "those reproductions do nothing more than
accurately convey the underlying image ( from either prior Copyright owner or Public
Domain material free for the taking )". Without a valid Copyright, there can be no
Copyright Infringement claim.

DECISION
Court affirmed District Court decision in favor of Defendant, that Plaintiff did not
command a valid copyright due to lack of originality.

MANLY SPORTWEAR v. DADOTTE ENTERPRISES

MANLY SPORTWEAR v. DADOTTE ENTERPRISES
G.R. No. 165306
DATE September 20, 2005.
PONENTE YNARES-SANTIAGO; J.

FACTS:
On March 17, 2003, RTC- Quezon City, Branch 83 issued a search warrant against Dadodette Enterprises
and/or Hermes Sports Center after finding reasonable grounds that respondents violated Sections 172
and 217 of Republic Act (RA) No. 8293. Respondents then moved to quash and annul the search warrant
claiming that the sporting goods manufactured by and/or registered in the name MANLY are ordinary
hence, not among the classes protected under Sec. 172 of RA 8293.

On June 10, 2003 the trial court granted the motion to quash and declared the search warrant issued as
null and void. MANLY filed a motion for reconsideration on August 11, 2003, but was later on denied for
lack of merit.

After denial of the motion for reconsideration, MANLY filed a petition for review of certiorari in the
Court of Appeals but was later on denied.

ISSUE/S: W/N the copyrighted products of MANLY are original creations subject to the protection of RA
8293.

RULING:
No. The copyright certificates issued in favor of MANLY constitute a prima facie evidence of validity and
ownership. However, presumption of validity is not created when a sufficient proof or evidence exist
that may cast a doubt on the copyright validity. In the case at bar, validity and originality will not be
presumed since the copyrighted products of MANLY are not original creations considering that these
products are readily available in the market under various brands. Moreover, no copyright accrues in
favor of MANLY despite the issuance of the copyright certificate this purely serves as a notice of
recording and registration of the work and is not a conclusive proof of copyright ownership as provided
in 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. 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.

Unilever case no digest

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.

TELSTRA NO DIGEST
 PEDRO SERRANO LAKTAW v. MAMERTO PAGLINAWAN
G.R. No. L-11937, 1 April 1918, En Banc (Araullo, J.)

Facts:
The plaintiff, Pedro Laktaw was, according to the laws regulating literary properties, the
registered owner of a literary work entitled Diccionario Hispano Tagalog (Spanish-Tagalog Dictionary)
published in the City of Manila in 1889 by the printing establishment La Opinion.
The defendant, Mamerto Paglinawan, without consent of the plaintiff, reproduced the said literary
work, improperly copied the greater part thereof in the work published by him and entitled Diccionariong
Kastila-Tagalog (Spanish- Tagalog Dictionary).
The act of Paglinawan, which is a violation of Article 7 of the Law of January 10, 1879, on
Intellectual Property, caused irreparable injuries to Laktaw, who was surprised when, on publishing his
new work entitled Diccionario Tagalog-Hispano (Tagalog-Spanish Dictionary) he learned of the fact, and
that damages occasioned to the plaintiff by the publication of defendant’s work amounted to $ 10,000.00.
Laktaw prayed the court to order Paglinawan to withdraw from sale all stock of the work and to pay him
the sum of $ 10,000.00 with costs.
Paglinawan, in his answer denied generally each and every allegation of the complaint and prayed
the court to absolve him from complaint.

Issue:
Whether or not the defendant, Mamerto Paglinawan, violated Article 7 of the Law of January 10,
1879 on Intellectual Property

Ruling:
Yes. The defendant, Mamerto Paglinawan violated Article 7 of the Law of January 10, 1879 on
Intellectual Property. The said article states that, “Nobody may reproduce another person’s work without
the owner’s consent, even merely to annotate or add anything to it, or improve any edition thereof”. It is
not necessary that a work should be an improper copy of another work previously published.
The court makes no special pronouncement as to the costs of this instance.