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Francisco G Joaquin Jr.

and BJ Productions VS Drilon


GR No. 108946 , January 28, 1999
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 shows format and style of presentation. In 1991, BJPIs
president Francisco Joaquin saw on TV RPN 9s show Its a Date, which is basically
the same asRhoda and Me. He eventually sued Gabriel Zosa, the manager of the
show Its a Date.Zosa later sought a review of the prosecutors 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 decision of Drilon 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 BJPIs 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 (Its 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.

Elidad Kho VS CA GR No. 11578, March 19, 2002


379 SCRA 410 Mercantile Law Intellectual Property Law on Copyright Proper
Subjects of Copyright
Elidad Kho is the owner of KEC Cosmetics Laboratory and she was also the holder of
copyrights over Chin Chun Su and its Oval Facial Cream Container/Case. She also
bought the patent rights over the Chin Chun Su & Device and Chin Chun Su for
medicated cream from one Quintin Cheng, who was the assignee of Shun Yi Factory
a Taiwanese factory actually manufacturing Chin Chun Su products.
Kho filed a petition for injunction against Summerville General Merchandising and
Company to enjoin the latter from advertising and selling Chin Chun Su products, in
similar containers as that of Kho, for this is misleading the public and causing Kho to
lose income; the petition is also to enjoin Summerville from infringing upon Khos
copyrights.
Summerville in their defense alleged that they are the exclusive and authorized
importer, re-packer and distributor of Chin Chun Su products; that Shun Yi even
authorized Summerville to register its trade name Chin Chun Su Medicated Cream
with the Philippine Patent Office; that Quintin Cheng, from whom Kho acquired her
patent rights, had been terminated (her services) by Shun Yi.
ISSUE: Whether or not Kho has the exclusive right to use the trade name and its
container.
HELD: No. Kho has no right to support her claim for the exclusive use of the subject
trade name and its container. The name and container of a beauty cream product
are proper subjects of a trademark (not copyright like what she registered for)
inasmuch as the same falls squarely within its definition. In order to be entitled to
exclusively use the same in the sale of the beauty cream product, the user must
sufficiently prove that she registered or used it before anybody else did. Khos
copyright and patentregistration of the name and container would not guarantee
her the right to the exclusive use of the same for the reason that they are not
appropriate subjects of the said intellectual rights. Consequently, a preliminary
injunction order cannot be issued for the reason that the petitioner has not proven
that she has a clear right over the said name and container to the exclusion of
others, not having proven that she has registered a trademark thereto or used the
same before anyone did.

Pearl & Dean VS Shoemart, Inc. GR No. 148222, August


409 SCRA 231 Mercantile Law Intellectual Property Law on Copyright
Copyrightable Subject
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 & Deans 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
& Deaneventually sued SM. SM argued that it did not infringe on Pearl & Deans
trademark because Pearl & Deans 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 & Deans exclusive right to the use of Poster Ads is limited to
what is written in its certificate of registration, namely, stationeries.

Pacita Habana VS Felicidad Robles GR No. 131522, September 19, 1999


310 SCRA 522 (369 Phil. 764) Mercantile Law Intellectual Property Law on
Copyright Infringement
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 als 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.

Columbia Pictures, Inc. et al VS CA GR No. 110318, August 28, 1996


262 SCRA 219 Mercantile Law Intellectual Property Law on Copyright
Requirements Before a Search Warrant May Be Issued in Copyright Cases Piracy
Political Law Constitutional Law Bill of Rights Search Warrants
In 1986, the Videogram Regulatory Board (VRB) applied for a warrant against Jose
Jinco (Jingco), owner of Showtime Enterprises for allegedly pirating movies
produced and owned by Columbia Pictures and other motion picture companies.
Jingco filed a motion to quash the search warrant but the same was denied in 1987.
Subsequently, Jinco filed an Urgent Motion to Lift the Search Warrant and Return
the Articles Seized. In 1989, the RTC judge granted the motion. The judge ruled that
based on the ruling in the 1988 case of 20th Century Fox Film Corporation vs CA,
before a search warrant could be issued in copyright cases, the master copy of the
films alleged to be pirated must be attached in the application for warrant.
ISSUE: Whether or not the 20th Century Fox ruling may be applied retroactively in
this case.
HELD: No. In 1986, obviously the 1988 case of 20th Century Fox was not yet
promulgated. The lower court could not possibly have expected more evidence from
the VRB and Columbia Pictures in their application for a search warrant other than
what the law and jurisprudence, then existing and judicially accepted, required with
respect to the finding of probable cause.
The Supreme Court also revisited and clarified the ruling in the 20 th Century Fox
Case. It is evidently incorrect to suggest, as the ruling in 20th Century Fox may
appear to do, that in copyright infringement cases, the presentation of master tapes
of the copyright films is always necessary to meet the requirement of probable
cause for the issuance of a search warrant. It is true that such master tapes are
object evidence, with the merit that in this class of evidence the ascertainment of
the controverted fact is made through demonstration involving the direct use of the

senses of the presiding magistrate. Such auxiliary procedure, however, does not
rule out the use of testimonial or documentary evidence, depositions, admissions or
other classes of evidence tending to prove the factum probandum, especially where
the production in court of object evidence would result in delay, inconvenience or
expenses out of proportion to is evidentiary value.
In fine, the supposed pronouncement in said case regarding the necessity for the
presentation of the master tapes of the copy-righted films for the validity
of searchwarrants should at most be understood to merely serve as a guidepost in
determining the existence of probable cause in copy-right infringement cases where
there is doubt as to the true nexus between the master tape and the pirated copies.
An objective and careful reading of the decision in said case could lead to no other
conclusion than that said directive was hardly intended to be a sweeping and
inflexible requirement in all or similar copyright infringement cases.