17.
20th Century Fox v CA, 164 SCRA 655
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.
ISSUE: Whether the issuance of the search warrant is valid
RULING: NO. Under P.D. No. 49 (the old Intellectual Property Law) The similarity or at least substantial similarity of
the purported pirated works to the copyright work is the essence of copyright infringement. The presentation of master
tapes at the time of application for search warrant is necessary for the validity of the search warrant. The applicant must
present to the court the copy-righted 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 copy-righted
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.
18. Columbia Pictures v CA 237 SCRA 367 (1994)
FACTS: NBI filed with the RTC of Pasig applications for search warrants against PR (Tube Video Enterprises – Edward
C. Cham; Blooming Rose Tape Center – Ma. Jajorie T. Uy; Video Channel – Lydia Nabong) charging them with
violations of Sec. 56 of PD 49. RTC Judge Austria consolidated the 3 applications and conducted a joint hearing where
she made a personal examination of the applicant (NBI Agent Reyes) and his witnesses. Finding just and probable cause,
Judge Austria issued the search warrants. PR filed their “Motion to Quash” the SW citing as grounds that there was no
probable cause; the films in question are not protected by PD 1988 in that they were never registered in the National
Library as a condition precedent to the availment of the protection; the Motion Picture Association of America have not
proven nor established their ownership over the films; etc.
ISSUE: Whether the search warrants were issued with probable cause
RULING: NO. A basic requirement for the validity of search warrants in cases involving film piracy is the presentation
of the master tapes of the copyrighted films from which the pirated films are supposed to have been copied. The basic fact
to be proven to establish probable cause in the instant case is the “unauthorized transfer” of a motion picture that has been
recorded. The essence of a copyright infringement is the similarity or at least substantial similarity of the purported pirated
works to the copyrighted work.
19. Columbia Pictures v. CA (1996)
FACTS: Columbia Pictures lodged a formal complaint with the NBI, vis-à-vis their anti-film piracy drive. Eventually, the
NBI obtained a search warrant against Sunshine Video seeking to seize pirated video tapes. The NBI carried out the
seizure, and filed a return with the trial court. However, the trial court eventually granted a motion to lift the order of
search warrant contending that the master tapes of the copyrighted films from which the pirated films were allegedly
copied were never presented in the proceedings for the issuance of the search warrants. The CA dismissed the appeal
brought before it. Hence, Columbia Pictures, et al. brought the case before the SC.
Sunshine Video contended that Columbia Pictures (being foreign corporations doing business in the Philippines) should
have a license in order to maintain an action in Philippine courts and without such license, it had no right to ask for the
issuance of a search "arrant.
Sunshine video submitted that the fact that Columbia Pictures, et al. were copyright owners or owners of exclusive
rights of distribution in the Philippines of copyrighted motion pictures and the fact that Atty. Domingo had been
appointed as their atty-in-fact constituted “doing business in the Philippines,under the Rules of the Board of
Investments.
ISSUE: Do Colombia Pictures, et al. have legal personality to sue in the Philippines?
RULING: YES. A license is not necessary if it is not doing business in the Philippines. Any foreign corporation may
maintain an action in our courts upon any cause of action, provided that the subject matter and the defendant are
within the jurisdiction of the court.
No general rule or governing principles can be laid down as to what constitutes “doing” or “engaging in” or “transacting”
business. The true test however seem to be whether the foreign corporation is continuing the body or substance of the
business or enterprise for which it was organized. BAsen of Article 133 of the Corporation Code and gauged by statutory
standards, petitioners are not barred from maintaining the present action.
20. People v. Ramos
Facts: 2 criminal cases identical in every respect, except for the fact that they pertain to different editions of the same
textbook, were filed against Socorro C. Ramos, for alleged violations of Act 3134 (Copyright Law). Ramos, the proprietor
aid general manager of the National Book Store, wilfully and illegally sell and distribute spurious and pirated copies of
the high school textbook, entitled General Science Today for Philippine School knowing that said book was duly
copyrighted by the Phoenix Publishing House, Inc., and was being distributed exclusively by its sister corporation,
Alemar's or Sibal and Sons, Inc.
Ramos argued that the alleged offense was made on July 17, 1963, and since the Sec 24 of Act No 3134 provides for a 2-
year prescription period, the criminal cases were filed beyond the said period; and that assuming that the last actual sale
is the starting point of computation, the offense would still have prescribed, since evidence shows that the last sale was
made on August 30, 1963.
The prosecution opposed arguing that the violation committed is a continuing offense, and the 2-year prescriptive
period is counted from September 3, 1963, or one day before the search in defendants' premises, which confirmed her
possession of spurious and pirated copies of the textbook. According to the prosecution, the completion of the last act
or series of acts which constitute the offense happened on the said date.
Ramos said that even assuming that the prescriptive period began to run on September 3, 1963, two years mean a
period of 730 days in accordance with Art 13 of the Civil Code, and since 1964 is a leap year, the 730th day fell on
September 2, 1965.
The judge ruled that the prescriptive period should be counted from September 4, 1963, the date the copies of the
textbook were seized from the accused, thus the case was filed on time. Phoenix argues that the applicable prescriptive
period is 4 years as provided in Act No. 3326.
Issue 1: Whether Act No. 3326 is applicable (No)
Ruling: Sec 1 of Act No. 3326 provides that “Violations penalized by special acts shall unless otherwise provided in such
acts, prescribe in accordance with the following rules...” Thus, Act No. 3326 applies only if the special act does not
provide for its own prescriptive period. It has no application here, where the Copyright Law in its Sec 24 provides for a 2-
year prescription period.
Issue 2: Whether the offense has prescribed (Yes. The last day for filing the cases is September 2, 1965, considering that
1964 is a leap year.)
Ruling: The resolution of this issue depends on whether February 28, and 29 of a leap year, 1964, should be counted as
one day, as proposed by the prosecution; or as separate days, as alleged by the defense. In Namarco v Tuazon it was
held that February 28 and 29 of a leap year should be counted as separate days in computing periods of prescription.
Since the cases were filed on September 3, 1965, it was filed one day too late, considering that the 730th day fell on
September 2, 1965 - the year 1964 being a leap year. There is no merit in the allegation that the reckoning of the
prescriptive period should start from September 4, 1963, the date when the police authorities discovered several
pirated books in accused's store. The accused was charged with having allegedly sold and distributed spurious and
pirated copies of the textbook, not of illegal possession of the same.
21. Serrano Laktaw v. Paglinawan
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.
22. ACITA 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.
RULING: 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
23. FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., petitioners, vs. FRANKLIN
DRILON GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and CASEY
FRANCISCO, respondents (Rules of procedure for IP cases)
Facts: 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 on the ground of non presentation of master tape and directed him to dismiss the case
against Zosa. Petitioner Joaquin filed a motion for reconsideration, but his motion was denied by respondent
Secretary of Justice. Hence, this petition
Issue:Whether public respondent gravely abused his discretion amounting to lack of jurisdiction when he
invoked non-presentation of the master tape as being fatal to the existence of probable cause to prove
infringement, despite the fact that private respondents never raised the same as a controverted issue, and,
therefore, it was error for the Secretary of Justice to reverse the investigating prosecutors finding of probable
cause on this ground.
Ruling: A preliminary investigation falls under the authority of the state prosecutor who is given by law the
power to direct and control criminal actions.[2] He is, however, subject to the control of the Secretary of
Justice. In reviewing resolutions of prosecutors, the Secretary of Justice is not precluded from considering
errors, although unassigned, for the purpose of determining whether there is probable cause for filing cases in
court. He must make his own finding of probable cause and is not confined to the issues raised by the parties
during preliminary investigation. Moreover, his findings are not subject to review unless shown to have been
made with grave abuse of discretion.
With respect to the master videotape, 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). Though
BJPI did provide a lot of written evidence and description to show the linkage between the shows, the same
were not enough. The presentation of the master videotape in evidence was indispensable to the determination
of the existence of probable cause. As aptly observed by respondent Secretary of Justice.
WHEREFORE, the petition is hereby DISMISSED.
24. PEARL & DEAN (PHIL.), INCORPORATED, petitioner, vs. SHOEMART, INCORPORATED, and
NORTH EDSA MARKETING, INCORPORATED,respondents.
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 to install light boxes in the ad spaces of SM. Eventually, SM rejected Pearl & Dean’s proposal.Two
years later, Pearl & Dean received report that light boxes, exactly the same as theirs, were being used by SM in
their ad spaces. They demanded SM to stop using the light boxes. Pearl & Dean eventually sued SM. The RTC
ruled in favor of Pearl & Dean. But the Court of Appeals ruled in favor of SM.
Issues:
WHETHER THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO COPYRIGHT
INFRINGEMENT WAS COMMITTED BY RESPONDENTS
WHETHER THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO INFRINGMENET
OF PATENT WAS COMMITTED BY THE RESPONDENTS
Ruling: Although petitioners copyright certificate was entitled Advertising Display Units (which depicted the
box-type electrical devices), its claim of copyright infringement cannot be sustained.
Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant, the rights are
limited to what the statute confers. It may be obtained and enjoyed only with respect to the subjects and by the
persons, and on terms and conditions specified in the statute.
P & D secured its copyright under the classification class O work. This being so, petitioners copyright
protection extended only to the technical drawings and not to the light box itself because the latter was not at all
in the category of prints, pictorial illustrations, advertising copies, labels, tags and box wraps. Stated otherwise,
even as we find that P & D indeed owned a valid copyright, the same could have referred only to the technical
drawings within the category of pictorial illustrations. It could not have possibly stretched out to include the
underlying light box.
This brings us to the next point: if, despite its manufacture and commercial use of the light boxes without
license from petitioner, private respondents cannot be held legally liable for infringement of P & Ds copyright
over its technical drawings of the said light boxes, should they be liable instead for infringement of patent?
We do not think so either.
For some reason or another, petitioner never secured a patent for the light boxes. It therefore acquired no patent
rights which could have protected its invention, if in fact it really was. And because it had no patent, petitioner
could not legally prevent anyone from manufacturing or commercially using the contraption. In Creser
Precision Systems, Inc. vs. Court of Appeals,[12] we held that there can be no infringement of a patent until a
patent has been issued, since whatever right one has to the invention covered by the patent arises alone from the
grant of patent.
WHEREFORE, the petition is hereby DENIED and the decision of the Court of Appeals dated May 22, 2001
is AFFIRMED in toto.
25. ABS-CBN Broadcasting Corporation vs Philippine Multi-Media System, Inc., 576 SCRA 262
FACTS: Philippine Multi-Media System, Inc. (PMSI) is a signal provider which has cable and satellite services. It is
providing its satellite services through Dream Broadcasting System. PMSI has its “Free TV” and “Premium
Channels”. The Free TV includes ABS-CBN, GMA-7, and other local networks. The premium channels include
AXN, Jack TV, etc which were paid by subscribers before such channels can be transmitted as feeds to a
subscriber’s TV set which has been installed with a Dream satellite.
ABS-CBN is a television and broadcasting corporation. It broadcasts television programs by wireless means
to Metro Manila and nearby provinces, and by satellite to provincial stations through Channel 2 and Channel 23. The
programs aired over Channels 2 and 23 are either produced by ABS-CBN or purchased from or licensed by other
producers. ABS-CBN also owns regional television stations which pattern their programming in accordance with
perceived demands of the region. Thus, television programs shown in Metro Manila and nearby provinces are not
necessarily shown in other provinces.
In May 2002, ABS-CBN sued PMSI for allegedly engaging in rebroadcastingand thereby infringing on
ABS-CBN’s copyrights; that the transmission of Channels 2 and 23 to the provinces where these two channels are
not usually shown altered ABS-CBN’s programming for the said provinces. PMSI argued that it is not infringing
upon ABS-CBN’s copyrights because it is operating under the “Must-Carry Rule” outlined in NTC (National
Telecommunications Commission) Circular No. 4-08-88.
ISSUE: Whether PMSI infringed upon the copyrights of ABS-CBN
RULING: 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.
