(1) AIR PHILIPPINES CORPORATION vs. PENNSWELL, INC.G.R.No.172835December13,2007FACTS:Respondent delivered and sold to petitioner sundry goods in trade. Under the contracts, petitioners total outstanding obligation amounted to P449,864.98 with interest at 14% per annum until the amount would be fullypaid. Forfailure ofthe petitioner tocomply withits obligation undersaid contracts,respondent filed a Complaint for a Sumof Money with the RTC.

In its Answer, petitioner contended that its refusal to pay was not without valid and justifiable reasons. Petitioner alleged that it was defraudedby respondent for its previous sale of four items. Said items were misrepresented by respondent as belonging to a new line, but were in truth and in fact, identical with products petitioner had previously purchased from respondent. Petitioner asserts that it was deceived by respondent which merely altered the names and labels of such goods.

During the pendency of the trial, petitioner filed a Motion to Compel respondent to give a detailed list ofthe ingredients and chemical components of the products. The RTC rendered an Order granting thepetitioners motion and directed Pennswell, Inc. to giveAir Philippines Corporation, a detailed list of the ingredients or chemical components of the chemical products.

Respondent sought reconsideration of the foregoing Order, contending that it cannot be compelled to disclose the chemical components sought because the matter is confidential. It argued that what petitioner endeavored to inquire upon constituted a trade secret which respondent cannot be forced to divulge.

The RTC reversed itself and issued an Order, finding that the chemical components are respondents trade secrets and are privileged in character. Alleging grave abuse of discretion on the part of the RTC, petitioner filed a Petition for Certiorari underRule 65 of the Rules of Court with the CA, which denied the Petition and affirmed the Order of the RTC.

ISSUE:Whether or not respondent can be compelled to disclose its trade secrets?

RULING:No. The products are covered by the exception of trade secrets being divulged in compulsory disclosure. The Court affirms the ruling of the Court of Appeals which upheld the finding of the RTC that there is substantial basis for respondent to seek protection of the law for its proprietary rights over the detailed chemical composition of its products.

The Supreme Court has declared that trade secrets and banking transactions are among the recognized restrictions to the right of the people to information as embodied in the Constitution.SCsaid that the drafters of the Constitution also unequivocally affirmed that, aside from national security matters and intelligence information, trade or industrial secrets (pursuant to the Intellectual Property Code and other related laws) as well as banking transactions (pursuant to the Secrecy of Bank Deposits Act), are also exempted from compulsory disclosure.

Atrade secretis defined as a plan or process, tool, mechanism or compound known only to its owner and those of his employees to whom it is necessary to confide it. The definition also extends to a secret formula or process not patented, but known only to certain individuals using it in compounding some article of trade having a commercial value.

In the case at bar, petitioner cannot rely on Section 77of Republic Act 7394, or the Consumer Act of the Philippines, in order to compel respondent to reveal the chemical components of its products. While it is true that all consumer products domestically sold, whether manufactured locally or imported, shall indicate their general make or active ingredients in their respective labels of packaging, the law does not apply to respondent. Respondents specialized lubricants namely, Contact Grease, Connector Grease, Thixohtropic Grease, Di-Electric Strength Protective Coating, Dry Lubricant and Anti-Seize Compound are not consumer products.What is clear from the factual findings of the RTC and the Court of Appeals is that the chemical formulation of respondents products is not known to the general public and is unique only to it. Both courts uniformly ruled that these ingredients are not within the knowledge of the public. Since such factual findings are generally not reviewable by this Court, it is not duty-bound to analyze and weigh all over again the evidence already considered in the proceedings below.The revelation of respondents trade secrets serves no better purpose to the disposition of the main case pending with the RTC, which is on the collection of a sum of money. As can be gleaned from the facts, petitioner received respondents goods in trade in the normal course of business. To be sure, there are defenses under the laws of contracts and sales available to petitioner. On the other hand, the greater interest of justice ought to favor respondent as the holder of trade secrets.Weighing the conflicting interests between the parties, SC rules in favor of the greater interest of respondent.Trade secrets should receive greater protection from discovery, because they derive economic value from being generally unknown and not readily ascertainable by the public.

(2) ELIDAD KHO vs. COURT OF APPEALSG.R. No. 115758March 19, 2002

FACTS:Elidad Kho is the owner of KEC Cosmetics Laboratory and she was also the holder ofcopyrightsoverChin Chun SuanditsOval Facial CreamContainer/Case.She also bought the patent rights over theChin Chun Su & DeviceandChin Chun Sufor medicated cream from one Quintin Cheng, who was the assignee of Shun Yi Factory a Taiwanese factory actually manufacturingChin Chun Suproducts.

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 Khoscopyrights.

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 itscontainer?

HELD:No. Kho has no right to support her claim for the exclusive use of the subject trade name and itscontainer. The name andcontainerof a beauty cream product are propersubjectsof a trademark (not copyrightlike 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 patent registration of the name andcontainerwould not guarantee her the right to the exclusive use of the same for the reason that they are not appropriatesubjectsof 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 andcontainerto the exclusion of others, not having proven that she has registered a trademark thereto or used the same before anyone did.

(3) GODINES vs. COURT OF APPEALSG.R. No. 97343September 13, 1993

FACTS:The patent involved in this case is Letters Patent No. UM-2236 issued by the Philippine Patent Office to one Magdalena S. Villaruz on July 15, 1976. It covers a utility model for a hand tractor or power tiller. The said patent was acquired by SV-Agro Industries Enterprises, Inc., herein private respondent, from Magdalena Villaruz, its chairman and president, by virtue of a Deed of Assignment executed by the latter in its favor. On October 31, 1979, SV-Agro Industries caused the publication of the patent in Bulletin Today, a newspaper of general circulation. In accordance with the patent, private respondent manufactured and sold the patented power tillers with the patent imprinted on them.

In 1979, SV-Agro Industries suffered a decline of more than 50% in sales in its Molave, Zamboanga del Sur branch. Upon investigation, it discovered that power tillers similar to those patented by private respondent were being manufactured and sold by petitioner herein. Consequently, private respondent notified Pascual Godines about the existing patent and demanded that the latter stop selling and manufacturing similar power tillers. Upon petitioner's failure to comply with the demand, SV-Agro Industries filed before the Regional Trial Court a complaint for infringement of patent and unfair competition.

Petitioner maintains the defenses which he raised before the trial and appellate courts, to wit: that he was not engaged in the manufacture and sale of the power tillers as he made them only upon the special order of his customers who gave their own specifications; hence, he could not be liable for infringement of patent and unfair competition; and that those made by him were different from those being manufactured and sold by private respondent.

ISSUE:Whether or not petitioner's product infringe upon the patent of private respondent?

HELD:The Court held in the affirmative. Recognizing that the logical fallback position of one in the place of defendant is to aver that his product is different from the patented one, courts have adopted the doctrine of equivalents which recognizes that minor modifications in a patented invention are sufficient to put the item beyond the scope of literal infringement. Thus, according to this doctrine, "(a)n infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and, albeit with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result." The reason for the doctrine of equivalents is that to permit the imitation of a patented invention which does not copy any literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such imitation would leave room for -- indeed encourage -- the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of the law.

To establish an infringement, it is not essential to show that the defendant adopted the device or process in every particular; Proof of an adoption of the substance of the thing will be sufficient. 'In one sense,' said Justice Brown, 'it may be said that no device can be adjudged an infringement that does not substantially correspond with the patent. But another construction, which would limit these words to exact mechanism described in the patent, would be so obviously unjust that no court be expected to adopt it.

(4) SMITH KLINE BECKMAN vs. COURT OF APPEALSG.R. No. 126627August 14, 2003

FACTS:Smith Kline is a US corporation licensed to do business inthe Philippines. In 1981,a patentwas issued to it for its invention entitled Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate. The invention is a means to fight off gastrointestinal parasites from various cattles and pet animals.

Tryco Pharma is a local corporation engaged in the same business as Smith Kline.

Smith Kline sued Tryco Pharma because the latter was selling a veterinary product called Impregon which contains a drug called Albendazole which fights off gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and goats.

Smith Kline is claiming that Albendazole is covered in their patent because it is substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered by its patent since both of them are meant to combat worm or parasite infestation in animals. And that Albendazole is actually patented under Smith Kline in the US.

Tryco Pharma averred that nowhere in Smith Klines patentdoes it mention that Albendazole is present but even if it were, the same is unpatentable.

Smith Kline thus invoked the doctrine of equivalents, which implies that the two substances substantially do the same function in substantially the same way to achieve the same results, thereby making them truly identical for in spite of the fact that the word Albendazole does not appear in Tryco Paharmas letters of patent, it has ably shown by evidence its sameness with methyl 5 propylthio-2-benzimidazole carbamate.

ISSUE: Whether or not there is patent infringement in this case?

HELD:No. Smith Kline failed to prove that Albendazole is a compound inherent in the patented invention. Nowhere in the patent isthe word Albendazole found. When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything beyond them. Further, there was a separate patent for Albendazole given by the US which implies that Albendazole is indeed separate and distinct from the patented compound here.

A scrutiny of Smith Klines evidence fails to prove the substantial sameness of the patented compound and Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented compound, even though it performs the same function and achieves the same result. In other words, the principle or mode of operation must be the same or substantially the same.

The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the burden to show that all three components of such equivalency test are met.

(5) CRESER PRECISION SYSTEMS, INC. vs. CA and FLORO INTERNATIONAL CO. G.R. No. 118708February 2, 1998

FACTS:Respondent was granted by the Bureau of Patents, Trademarksand TechnologyTransfer (BPTTT)a Letterofpatentfor its aerial fuze on January 23, 1990. Sometime in 1993, respondent discovered that the petitioner submittedsamplesof its patented aerial fuze to the AFP for testing claiming to be his own. To protectitsright, respondent sentletterof warning to petitioner on a possible court action should it proceed its testing by the AFP. In response the petitioner filed a complaint for injunction and damages arising from alleged infringement before the RTC asserting that it is the true and actual inventor of the aerial fuze which it developed on 1981 under the Self Reliance Defense Posture Program of the AFP. It has been supplying the military of the aerial fuze since then and that thefuzeof the respondent is similar as that of the petitioner. Petitioner prayed for restraining order and injunction from marketing, manufacturing and profiting from the said invention by the respondent. Thetrial courtruled in favor of the petitioner citing the fact that it was the first to develop the aerial fuze since 1981thusit concludes that it is the petitioners aerialfuzethat was copied by the respondent. Moreover, the claim ofrespondentis solely based on its letter of patent which validity is being questioned. On appeal,respondentargued that the petitioner has no cause of action since he has no right to assert there being no patent issued to his aerial fuze. The Court of Appeals reversed the decision of thetrial court dismissing the complaint of the petitioner. It was the contention of the petitioner that it canfileunder Section 42 of the Patent Law an action for infringement not as a patentee but as an entity in possession of a right, title or interest to the patented invention. It theorizes that while the absence of a patent prevents one from lawfully suing another for infringement of said patent, such absence does notbarthe true and actual inventor of the patented invention from suing another in the same nature as a civil action for infringement.

ISSUE:Whether or not the petitioner has the right to assail the validity of the patented work of the respondent?

HELD:The court finds the argument of the petitioner untenable. Section 42 of the Law on Patent (RA 165) provides thatonly thepatentee or his successors-in-interest mayfilean action against infringement. What the law contemplates in the phrase anyone possessing any right, title or interest in and to the patented invention refers only to the patentees successors-in-interest, assignees or grantees since the actionon patent infringement may be brought only in the name of the person granted with the patent. There can be no infringement of a patent until a patent has been issuedsincethe right one has over the invention covered by the patent arises from the grant of the patent alone. Therefore, a person who has not been grantedletterof patent over an invention has notacquiredright or title over the invention and thus has no cause of action for infringement. Petitioner admitted to have no patent over his invention.Respondents aerial fuzeis covered by letterof patent issued by the Bureau of Patents thus it has in his favor notonly thepresumption of validity of its patent but that of a legal and factual first and true inventor of the invention.

(6) JOAQUIN vs. DRILONG.R. No. 108946,January 28, 1999

FACTS:BJ Productions Inc. (BJPI) was the holder of copyright over the showRhoda and Me.It holds rights over the shows format and style of presentation. In 1991, BJPIs president Francisco Joaquin saw on TV RPN 9s showIts a Date,which is basically the same asRhoda and Me.He eventually sued Gabriel Zosa, the manager of the showIts 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 datinggameshow 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 registrationas provided in PD. No. 49.What is covered by BJPIs copyright is the specific episodes of the showRhoda and Me.

Further, BJPI should have presented the master videotape of the show in order to show the linkage between the copyright show (Rhoda andMe) and the infringing show (Its a Date). This is based on the ruling in 20thCentury Fox vs CA (though this has been qualified by ColumbiaPicturesvs 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,videoand audio, such that no similarity or dissimilarity may be found by merely describing the general copyright/format of both datinggameshows.

(7) ABS-CBN BROADCASTING vs. PHIL. MULTI-MEDIAG.R. No. 175769-70January, 19, 2009

FACTS:Philippine Multi-MediaSystem, Inc. (PMSI) is a signal provider which has cable and satelliteservices. It is providing its satelliteservicesthrough Dream BroadcastingSystem. 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 subscribers TV set which has been installed witha Dreamsatellite.

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 inrebroadcastingand thereby infringing on ABS-CBNs copyrights; that the transmission of Channels 2 and 23 to the provinces where these two channels are not usually shown altered ABS-CBNs programming for the said provinces. PMSI argued that it is not infringing upon ABS-CBNs 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.

(8) COLUMBIA PICTURES vs. COURT OF APPEALSG.R. No. 110318August 28, 1996

FACTS: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 ColumbiaPicturesand other motionpicturecompanies. 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 of20thCentury 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 20thCentury Fox ruling may be applied retroactively in this case.

HELD:No. In 1986, obviously the 1988 case of 20thCentury Fox was not yet promulgated. The lower court could not possibly have expected more evidence from the VRB and ColumbiaPicturesin 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 20thCentury Fox Case. It is evidently incorrect to suggest, as the ruling in20th CenturyFoxmay 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 thefactum 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 supposedpronouncementin said case regarding the necessity for the presentation of the master tapes of the copy-righted films for the validity of search warrants should at most be understood to merely serve as a guidepost in determining the existence of probable cause in copy-right infringement caseswhere 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.

(9) HABANA vs. ROBLESG.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 respondents 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.

(10) JESSIE G. CHING vs. WILLIAM M. SALINAS, SR., et.al.G.R. No. 161295June 2005

FACTS:Ching and Joseph Yu were issued by the National Library Certificates of Copyright Registration and Deposit of the work described therein as Leaf Spring Eye Bushing for Automobile.

Ching requested the National Bureau ofInvestigation (NBI) for police/investigative assistance for the apprehension and prosecution of illegal manufacturers, producers and/or distributors of the works. As such, inventory items were seized from Salinas for violating the provisions of R.A. 8293. He claims that R.A. No. 8293, otherwise known as the Intellectual Property Code ofthe Philippines provides in no uncertain terms that copyright protection automatically attaches to a work by the sole fact of its creation, irrespective of its mode or form ofexpression, as well as of its content, quality or purpose. The law gives a non-inclusive definition of work as referring to original intellectual creations in the literary and artistic domain protected from the moment of their creation; and includes original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design and other works of applied art under Section 172.1(h) of R.A. No. 8293.

As such, the petitioner insists, notwithstanding the classification of the works as either literary and/or artistic, the said law, likewise, encompasses works which may have a bearing on the utility aspect to which the petitioners utility designs were classified.Moreover, according to thepetitioner, what the Copyright Law protects is the authors intellectual creation, regardless of whether it is one with utilitarian functions or incorporated in a useful article produced on an industrial scale.The petitioner also maintains that the law does not provide that the intended use or use in industry of an article eligible for patent bars or invalidates its registration under the Law on Copyright.The test of protectionfor the aesthetic is notbeauty and utility, but art for the copyright and invention of original and ornamental design for design patents. In like manner, the fact that his utility designs or models for articles of manufacture have been expressed in the field of automotive parts, or based on something already in the public domain does not automatically remove them from the protection of the Law on Copyright.

The respondents averred that the works covered by the certificates issued by the National Library are not artistic in nature; they are considered automotive spareparts and pertain to technology.They aver that the models are not original, and as such are the proper subject of a patent, not copyright. Respondents aver that the work of the petitioner is essentially a technical solution to the problem of wear and tear in automobiles, the substitution of materials, i.e., from rubber to plastic matter of polyvinyl chloride, an oil resistant soft texture plastic material strong enough to endure pressure brought about by the vibration ofthe counter bearingand thus bringsbushings.Such work, therespondents assert, is the subject of copyright under Section172.1 of R.A. No. 8293.The respondents posit that a technical solution in any field of human activity which is novel may be the subject of a patent,and not ofa copyright.They insist that the certificatesissued by the National Library are only certifications that, at a point in time, a certain work was deposited in thesaid office.Furthermore, the registration of copyrights does not provide for automaticprotection.Citing Section 218.2(b) of R.A. No. 8293, the respondents aver that no copyright is said to exist if a party categorically question sits existence and legality.Moreover, under Section2, Rule 7 of the Implementing Rules of R.A. No. 8293, the registration and deposit of work is not conclusive as to copyright outlay or thetime of copyright or theright of the copyrightowner.The respondents maintain that a copyright exists only when the work is covered by the protection of R.A. No. 8293.

ISSUE:Whether or not 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 LeafSpring Eye Bushing and Vehicle Bearing Cushion?

HELD: 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 is merely autility model. 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. It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its marketability.The central inquiry iswhether the article is awork of art. Works for applied art include all original pictorials, graphics, and sculptural works that are intended to be or have been embodied in useful article regardless of factor as such as mass production, commercial exploitation, and the potential availability ofdesign patent protection. 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 thearticle or to convey information.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. We agree with the contention of the petitioner (citing Section 171.10 of R.A. No.8293), that the authors intellectual creation, regardless of whether it is a creation with utilitarian functions or incorporated in a useful article produced on an industrial scale, is protected by copyrightlaw.However, the law refers to awork of applied art which is anartistic creation.It bears stressing that there is nocopyright protection for works of applied art or industrial design which have aesthetic or artistic features that cannot be identified separately from the utilitarian aspects of the article. Functional components of useful articles, no matter how artistically designed, have generally been denied copyright protection unless they are separable from the useful article. In this case, the petitioners models are not works of applied art, nor artistic works.They are utility models, useful articles, albeit with no artistic design or value

(11) PEARL & DEAN vs. SHOEMARTG.R. No. 148222August 15, 2003

FACTS: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 toinstalllight 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 removedthe light boxes. Pearl &Dean eventually 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 astructure. 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.

(12) METRO GOLDWYN MAYER vs. GROKSTER545 U.S. 913 (2005)

FACTS:Grokster, LTD and StreamCast Network distributed free software that allowed the sharing of files in a peer to peer network. This avoided the need for central servers and costly server storage and works faster. Since files can go from computer to computer and not through the server it is safer and cost efficient. This program was used by universities, government agencies, corporations, libraries and then private users. Private users began sharing copyrighted music and video files without authorization. Grokster used technology called FastTrack and Stream Cast used Gnutella. The files shared do not go to a central location so Grokster and StreamCast did not know when the files were being copied but if they had searched there software they would see the type of files being shared. It was shown that StreamCast gave software called OpenNap labeled the best alternative to Napster in the hopes to take all the Napster users that had to stop using that software after Napster was sued. Grokster had a program called OpenNap that allowed users to search for Napster files. Grokster and StreamCast received revenues from posting advertising all over its program software. MGM was able to show that some 90 percent of the files being shared where copyrighted files. Also there is no evidence that either company tried to filter or stop copyright infringement. The district court granted summary judgment in favor of Grokster and Stream Case because although users of the software did infringe MGMs property there was no proof there the distributors had actual knowledge of specific acts of infringement. MGM appealed.

ISSUE:Whether a distributor of a product that is capable of lawful and unlawful use is liable for copyright infringement by a 3rd party using that product?

HELD:Yes. The appeals court stated that since these distributors did not have actual knowledge, did not partake in, or monitor the file sharing they are not directly liable for the infringement. However the court erred in finding they were not secondarily liable for the actions of the users of its products. There is a balance between growing technologies and copyright protection, but to not make distributors liable will make copyright protections meaningless. The lower court looked to the commerce doctrine now codified which states that a product must be capable of commercially significant noninfridging uses and if so, no secondary liability would follow. This court finds that interpretation too narrow. Here this court considers the doctrine of inducement to also be relevant. When a distributor promotes using its device to infringe copyright material, shown by affirmative steps to foster infringement this is inducement and the distributor will be liable for 3rd party infringement. All the actions of the companies is enough to show a genuine issue of material fact, thus the court reversed the summary judgment ruling and remanded the case upon those findings.

(13) SONY CORP vs. UNIVERSAL CITY STUDIOS464 U.S. 417 (1984)

FACTS:Sony Corporation of America manufactured and sold the "Betamax" home video tape recorder (VTR). Universal City Studios owned the copyrights to television programs broadcast on public airwaves. Universal sued Sony for copyright infringement, alleging that because consumers used Sony's Betamax to record Universal's copyrighted works, Sony was liable for the copyright infringement allegedly committed by those consumers in violation of the Copyright Act. Universal sought monetary damages, an equitable accounting of profits, and an injunction against the manufacturing and marketing of the VTR's. The District Court denied all relief, holding that the noncommercial home use recording of material broadcast over the public airwaves was a fair use of copyrighted works and did not constitute copyright infringement. Moreover, the court concluded that Sony could not be held liable as contributory infringers even if the home use of a VTR was considered an infringing use. In reversing, the Court of Appeals held Sony liable for contributory infringement.

ISSUE:Whether or not Sony's sale of "Betamax" video tape recorders to the general public constitute contributory infringement of copyrighted public broadcasts under the Copyright Act?

HELD:No. In a 5-4 opinion delivered by Justice John Paul Stevens, the Court held that "[t]he sale of the VTR's to the general public does not constitute contributory infringement of [Universal's] copyrights." The Court concluded that there was a significant likelihood that a substantial number of copyright holders who license their works for free public broadcasts would not object to having their broadcasts time-shifted by private viewers and that Universal failed to show that time-shifting would cause non-minimal harm to the potential market for, or the value of, their copyrighted works. Justice Stevens wrote for the Court that "[t]he sale of copying equipment...does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes, or, indeed, is merely capable of substantial noninfringing uses." For the dissenting minority, Justice Blackmun expressed the views that taping a copyrighted television program is infringement and that the recorder manufacturers were guilty of inducing and materially contributing to the infringement.

(14) FRANK AND GOHN vs. BENITOG.R. No. 27793March 16,1928

FACTS:Plaintiffs are the owners of a patent covering hemp-stripping machine No. 1519579 issued to them by the United States Patent Office and duly registered in the Bureau of Commerce and Industry of the Philippine Islands under the provisions of Act No. 2235

Plaintiffs allege that the defendant manufactured a hemp-stripping machine in which, without authority from the plaintiffs, and has embodied and used such spindles and their method of application and use, and is exhibiting his machine to the public for the purpose of inducing its purchase. Frank and Gohn stress that use by the Benito of such spindles and the principle of their application to the stripping of hemp is in violation of, and in conflict with, plaintiffs' patent, together with its conditions and specifications.

Plaintiffs assert the violation of infringement upon the patent granted to Frank & Gohn, and requested that an action for injunction and damages be instituted against Benito.

Respondent on the other hand contends that it had no prior knowledge of the prior existence of the hemp-stripping invention of the plaintiffs nor had any intent to imitate the Franks product. Likewise, the defendant contended that the facts alleged therein do not constitute a cause of action, that it is ambiguous and vague. The lower court rendered judgment in favor of the plaintiffs, to which was later affirmed by the appellate court.

HELD:As a rule, the burden of proof to substantiate a charge of infringement is with the plaintiff. Where, however, the plaintiff introduces the patent in evidence, if it is in due form, it affords a prima facie presumption of its correctness and validity. The decision of the Commissioner of Patents in granting the patent is always presumed to be correct. The burden the shifts to the defendant to overcome by competent evidence this legal presumption.

The patent in the case at bar, having been introduced in evidence, affords a prima facie presumption of its correctness and validity. Hence, this is not a case of a conflict between two different patents. In the recent of Temco Electric Motor Co. vs. Apco Mfg. Co., decided by the Supreme Court of the United States ruledan improper cannot appropriate the basic patent of another, and if he does so without license is an infringer, and may be used as such. It is well established that an improver cannot appropriate the basic patent of another and that the improver without a license is an infringer and may be sued as such.

(15) DEL ROSARIO vs. CAG.R. No. 115106March 15, 1996

FACTS:RobertoDel Rosariowas granted a patent for his innovation called the Minus One karaoke. The patent was issued in June 1988 for five years and was renewed in November 1991 for another five years as there were improvement introduced to his minus one karaoke. In 1993, while the patent was still effective,Del Rosariosued Janito Corporation, a Japanese company owned by Janito Cua, for allegedly infringing upon the patent ofDel Rosario.Del Rosarioalleged that Janito was manufacturing a sing-along system under the brand miyata karaoke which is substantially, if not identical, the same to his minus one karaoke. The lower court ruled in favor ofDel Rosariobut the Court of Appeals ruled that there was no infringement because the karaoke system was a universal product manufactured, advertised, and marketed all over the world long beforeDel Rosariowas issued his patents.

ISSUE:Whether or not the Court of Appeals erred in its ruling?

HELD:Yes. The Patent Law expressly acknowledges that anynew modelof implements or tools of any industrial product even if not possessed of the quality of invention but which is of practical utility is entitled to a patent for utility model.Here, there is no dispute that the letters patent issued toDel Rosarioare for utility models of audio equipment. It iselementarythat a patent may be infringed where the essential or substantial features of the patented invention are taken or appropriated, or the device, machine or other subject matter alleged to infringe is substantially identical with the patented invention. In order to infringe a patent, a machine or device must perform the same function, or accomplish the same result by identical or substantially identical means and the principle or mode of operation must be substantially the same.In the case at bar, miyata karaoke was proven to have substantial if not identical functionality as that of the minus one karaoke which was covered by the second patent issued toDel Rosario. Further, Janito failed to present competent evidence that will show thatDel Rosarios innovation is not new.

(16) GSELL vs. YAP-JUEG.R. No. 1816April 17, 1906

(17) WILSON ONG CHING KlAN CHUAN vs. HON. COURT OF APPEALS and LORENZO TANG.R. No. 130360August 15, 2001

(18) SAMBAR vs. LEVI STRAUSS & CO.G.R. No. 132604March 6, 2002

(19) MALANG SANTOS vs. MCCULLOUGHG.R. No. L-19439October 31, 1946

(20) FILIPINO SOCIETY vs. BENJAMIN TANG.R. No. L-36402March 16, 1987

(21) UNITED FEATURE SYNDICATE vs. MUSINGWEAR CREATIONG.R. No. 76193November 9, 1989

(22) VARGAS vs. YAPTICO & COG.R. No. 14101September 24, 1919

(23) MANZANO vs. CAG.R. No. 113388September 5, 1997

(24) MAGUAN vs. CAG.R. No. L-45101November 28, 1986

(25) VARGAS vs. CHUAG.R. No. L-36650January 27, 1933

(26) AGUAS vs. DE LEON and CAG.R. No. L-32160January 30, 198215