Patent Ownership

The Intellectual Property Clause grants ownership of a patent to the

General Principles of Intellectual Property inventor of the patent. In Stanford University v. Roche Molecular Systems
Natural Rights Perspective (Labor theory) Inc, 563 U.S. 776 (2011), the Supreme Court held that even when a
Personhood Perspective (Margaret Jane Radin, Property & Personhood) researcher at a federally funded lab invents a patent, that researcher owns
Economic Incentive Theory the patent. This is because
Articles 414, 417, 721 and 722
Articles 1624 and 1625 of the Civil Code of the Philippines Public Domain
After a copyright expires, it enters the public domain. The Copyright
Extension Act of 1998 (CTEA) allows for an author's copyright to last for
Article 414. All things which are or may be the object of appropriation are the life of the author plus 70 years, and for a work of corporate
considered either: authorship to last 120 years after creation or 95 years after publication,
whichever end is earlier. In Elder v Ashcroft, 537 U.S. 186 (2003), the
(1) Immovable or real property; or Supreme Court upheld the CTEA, partially under the Intellectual Property
Clause.
(2) Movable or personal property. (333)
Philippine Constitution, Article XIV, Section 13
Article 417. The following are also considered as personal property: Section 13. The State shall protect and secure the exclusive rights of
scientists, inventors, artists, and other gifted citizens to their intellectual
property and creations, particularly when beneficial to the people, for such
(1) Obligations and actions which have for their object
period as may be provided by law.
movables or demandable sums; and
Modes of Intellectual Property (Definitions, See RA 8293)
(2) Shares of stock of agricultural, commercial and industrial Copyright
entities, although they may have real estate. (336a) Trademarks
Patents
Article 721. By intellectual creation, the following persons acquire
ownership: Section 1. Title. - This Act shall be known as the "Intellectual Property
Code of the Philippines."
(1) The author with regard to his literary, dramatic, historical,
legal, philosophical, scientific or other work; Section 2. Declaration of State Policy. - The State recognizes that an
effective intellectual and industrial property system is vital to the
(2) The composer; as to his musical composition; development of domestic and creative activity, facilitates transfer of
technology, attracts foreign investments, and ensures market access for
our products. It shall protect and secure the exclusive rights of scientists,
(3) The painter, sculptor, or other artist, with respect to the inventors, artists and other gifted citizens to their intellectual property and
product of his art; creations, particularly when beneficial to the people, for such periods as
provided in this Act.
(4) The scientist or technologist or any other person with regard
to his discovery or invention. (n) The use of intellectual property bears a social function. To this end, the
State shall promote the diffusion of knowledge and information for the
Article 722. The author and the composer, mentioned in Nos. 1 and 2 of promotion of national development and progress and the common good.
the preceding article, shall have the ownership of their creations even
before the publication of the same. Once their works are published, their It is also the policy of the State to streamline administrative procedures of
rights are governed by the Copyright laws. registering patents, trademarks and copyright, to liberalize the registration
on the transfer of technology, and to enhance the enforcement of
The painter, sculptor or other artist shall have dominion over the product intellectual property rights in the Philippines. (n)
of his art even before it is copyrighted.
Section 3. International Conventions and Reciprocity. - Any person who is
The scientist or technologist has the ownership of his discovery or a national or who is domiciled or has a real and effective industrial
invention even before it is patented. (n) establishment in a country which is a party to any convention, treaty or
agreement relating to intellectual property rights or the repression of unfair
Article 1624. An assignment of creditors and other incorporeal rights shall competition, to which the Philippines is also a party, or extends reciprocal
be perfected in accordance with the provisions of article 1475. (n) rights to nationals of the Philippines by law, shall be entitled to benefits to
the extent necessary to give effect to any provision of such convention,
treaty or reciprocal law, in addition to the rights to which any owner of an
Article 1625. An assignment of a credit, right or action shall produce no intellectual property right is otherwise entitled by this Act. (n)
effect as against third persons, unless it appears in a public instrument, or
the instrument is recorded in the Registry of Property in case the
assignment involves real property. (1526) Section 4. Definitions. - 4.1. The term "intellectual property rights"
consists of:

Constitutional Basis (Read) a) Copyright and Related Rights;

U.S. Constitution, Article 1, § 8 (IP Clause)
Intellectual Property Clause b) Trademarks and Service Marks;

Overview c) Geographic Indications;

Article I, Section 8, Clause 8, of the United States Constitution grants d) Industrial Designs;
Congress the enumerated power "To promote the progress of science and
useful arts, by securing for limited times to authors and inventors the
exclusive right to their respective writings and discoveries." e) Patents;

Because this clause is also the source of Congress' power to enact f) Layout-Designs (Topographies) of Integrated Circuits; and
legislation governing copyrights and patents, it is often also referred to as
the "Patent and Copyright Clause."
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 g) Protection of Undisclosed Information (n, TRIPS). purposes, by an institution the services of which are available to the
public, such as public library or archive;
4.2. The term "technology transfer arrangements" refers to contracts or
agreements involving the transfer of systematic knowledge for the 171.6. "Public performance", in the case of a work other than an
manufacture of a product, the application of a process, or rendering of a audiovisual work, is the recitation, playing, dancing, acting or otherwise
service including management contracts; and the transfer, assignment or performing the work, either directly or by means of any device or process;
licensing of all forms of intellectual property rights, including licensing of in the case of an audiovisual work, the showing of its images in sequence
computer software except computer software developed for mass market. and the making of the sounds accompanying it audible; and, in the case of
a sound recording, making the recorded sounds audible at a place or at
4.3. The term "Office" refers to the Intellectual Property Office created by places where persons outside the normal circle of a family and that
this Act. family's closest social acquaintances are or can be present, irrespective of
whether they are or can be present at the same place and at the same
time, or at different places and/or at different times, and where the
4.4. The term "IPO Gazette" refers to the gazette published by the Office performance can be perceived without the need for communication within
under this Act. (n) the meaning of Subsection 171.3;

Section 5. Functions of the Intellectual Property Office (IPO). - 5.1. To 171.7. "Published works" means works, which, with the consent of the
administer and implement the State policies declared in this Act, there is authors, are made available to the public by wire or wireless means in
hereby created the Intellectual Property Office (IPO) which shall have the such a way that members of the public may access these works from a
following functions: place and time individually chosen by them: Provided, That availability of
such copies has been such, as to satisfy the reasonable requirements of
a) Examine applications for grant of letters patent for inventions the public, having regard to the nature of the work;
and register utility models and industrial designs;
171.8. "Rental" is the transfer of the possession of the original or a copy of
b) Examine applications for the registration of marks, a work or a sound recording for a limited period of time, for profit-making
geographic indication, integrated circuits; purposes;

c) Register technology transfer arrangements and settle 171.9. "Reproduction" is the making of one (1) or more copies of a work or
disputes involving technology transfer payments covered by the a sound recording in any manner or form (Sec. 41 (E), P.D. No. 49 a);
provisions of Part II, Chapter IX on Voluntary Licensing and
develop and implement strategies to promote and facilitate 171.10. A "work of applied art" is an artistic creation with utilitarian
technology transfer; functions or incorporated in a useful article, whether made by hand or
produced on an industrial scale;
d) Promote the use of patent information as a tool for
technology development; 171.11. A "work of the Government of the Philippines" is a work created by
an officer or employee of the Philippine Government or any of its
e) Publish regularly in its own publication the patents, marks, subdivisions and instrumentalities, including government-owned or
utility models and industrial designs, issued and approved, and controlled corporations as a part of his regularly prescribed official duties.
the technology transfer arrangements registered;
CHAPTER II
f) Administratively adjudicate contested proceedings affecting ORIGINAL WORKS
intellectual property rights; and
Section 172. Literary and Artistic Works. - 172.1. Literary and artistic
g) Coordinate with other government agencies and the private works, hereinafter referred to as "works", are original intellectual creations
sector efforts to formulate and implement plans and policies to in the literary and artistic domain protected from the moment of their
strengthen the protection of intellectual property rights in the creation and shall include in particular:
country.
(a) Books, pamphlets, articles and other writings;
5.2. The Office shall have custody of all records, books, drawings,
specifications, documents, and other papers and things relating to (b) Periodicals and newspapers;
intellectual property rights applications filed with the Office. (n)
(c) Lectures, sermons, addresses, dissertations prepared for
Section 171. Definitions. - For the purpose of this Act, the following terms oral delivery, whether or not reduced in writing or other material
have the following meaning: form;

171.1. "Author" is the natural person who has created the work; (d) Letters;

171.2. A "collective work" is a work which has been created by two (2) or (e) Dramatic or dramatico-musical compositions; choreographic
more natural persons at the initiative and under the direction of another works or entertainment in dumb shows;
with the understanding that it will be disclosed by the latter under his own
name and that contributing natural persons will not be identified;
(f) Musical compositions, with or without words;
171.3. "Communication to the public" or "communicate to the public"
means the making of a work available to the public by wire or wireless (g) Works of drawing, painting, architecture, sculpture,
means in such a way that members of the public may access these works engraving, lithography or other works of art; models or designs
from a place and time individually chosen by them; for works of art;

171.4. A "computer" is an electronic or similar device having information- (h) Original ornamental designs or models for articles of
processing capabilities, and a "computer program" is a set of instructions manufacture, whether or not registrable as an industrial design,
expressed in words, codes, schemes or in any other form, which is and other works of applied art;
capable when incorporated in a medium that the computer can read, of
causing the computer to perform or achieve a particular task or result; (i) Illustrations, maps, plans, sketches, charts and three-
dimensional works relative to geography, topography,
171.5. "Public lending" is the transfer of possession of the original or a architecture or science;
copy of a work or sound recording for a limited period, for non-profit

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 (j) Drawings or plastic works of a scientific or technical "(c) Undertake enforcement functions supported by concerned
character; agencies such as the Philippine National Police, the National
Bureau of Investigation, the Bureau of Customs, the Optical
(k) Photographic works including works produced by a process Media Board, and the local government units, among others;
analogous to photography; lantern slides;
"(d) Conduct visits during reasonable hours to establishments
(l) Audiovisual works and cinematographic works and works and businesses engaging in activities violating intellectual
produced by a process analogous to cinematography or any property rights and provisions of this Act based on report,
process for making audio-visual recordings; information or complaint received by the office; and

(m) Pictorial illustrations and advertisements; "(e) Such other functions in furtherance of protecting IP rights
and objectives of this Act."
(n) Computer programs; and
Section 3. A new Section 9A is hereby inserted after Section 9 of
Republic Act No. 8293, to read as follows:
(o) Other literary, scholarly, scientific and artistic works.
"SEC. 9A. The Bureau of Copyright and Other Related
172.2. Works are protected by the sole fact of their creation, irrespective Rights. – the Bureau of Copyright and Other Related Rights
of their mode or form of expression, as well as of their content, quality and shall have the following functions:
purpose. (Sec. 2, P.D. No. 49a)
"9A.1. Exercise original jurisdiction to resolve
disputes relating to the terms of a license involving
Part 1 COPYRIGHT the author’s right to public performance or other
communication of his work;
Read and understand Copyright Act of 1976 [17 U.S. § 102 (a)]
Copyright protection subsists, in accordance with this title, in original works
of authorship fixed in any tangible medium of expression, now known or "9A.2. Accept, review and decide on applications for
later developed, from which they can be perceived, reproduced, or the accreditation of collective management
otherwise communicated, either directly or with the aid of a machine or organizations or similar entities;
device.
"9A.3. Conduct studies and researches in the field of
Philippine Laws copyright and related rights; and
R.A. 8293, IP Code of the Philippines, (As amended by RA 10372) Part IV
(Law on Copyright) Secs. 1 to 5, and 171 to 172. "9A.4. Provide other copyright and related rights
service and charge reasonable fees therefor."
Section 1. Section 6 of Republic Act No. 8293, otherwise known as the
"Intellectual Property Code of the Philippines", is hereby amended to read Section 4. Section 171.3. of Republic Act No. 8293 is hereby amended to
as follows: read as follows:

"SEC. 6. The Organizational Structure of the IPO. – x x x "SEC. 171. Definitions. – x x x

"6.2. the Office shall be divided into seven (7) Bureaus, each of "171.3. ‘Communication to the public’ or ‘communicate to the
which shall be headed by a Director and assisted by an public’ means any communication to the public, including
Assistant Director. These Bureaus are: broadcasting, rebroadcasting, retransmitting by cable,
broadcasting and retransmitting by satellite, and includes the
"x x x making of a work available to the public by wire or wireless
means in such a way that members of the public may access
"(f) the Administrative, Financial and Personnel these works from a place and time individually chosen by
Services Bureau; and them;"

"(g) the Bureau of Copyright and Other Related Section 5. Section 171.9. of Republic Act No. 8293 is hereby amended to
Rights." read as follows:

Section 2. Section 7 of Republic Act No. 8293 is hereby amended to read "171.9. ‘Reproduction’ is the making of one (1) or more copies,
as follows: temporary or permanent, in whole or in part, of a work or a
sound recording in any manner or form without prejudice to the
provisions of Section 185 of this Act (Sec. 41[E], P.D. No.
"SEC. 7. The Director General and Deputies Director 49a);"
General. –
Section 6. There shall be two new subsections to be added at the end of
"x x x Section 171.11. to be known as 171.12. and 171.13., both to read as
follows:
"(b) Exercise exclusive appellate jurisdiction over all decisions
rendered by the Director of Legal Affairs, the Director of "171.12. ‘Technological measure’ means any technology,
Patents, the Director of Trademarks, the Director of Copyright device or component that, in the normal course of its operation,
and Other Related Rights, and the Director of the restricts acts in respect of a work, performance or sound
Documentation, Information and Technology Transfer Bureau. recording, which are not authorized by the authors, performers
the decisions of the Director General in the exercise of his or producers of sound recordings concerned or permitted by
appellate jurisdiction in respect of the decisions of the Director law;
of Patents, the Director of Trademarks and the Director of
Copyright and Other Related Rights shall be appealable to the
Court of Appeals in accordance with the Rules of Court; and "171.13. ‘Rights management information’ means information
those in respect of the decisions of the Director of the which identifies the work, sound recording or performance; the
Documentation, Information and Technology Transfer Bureau author of the work, producer of the sound recording or
shall be appealable to the Secretary of Trade and Industry; performer of the performance; the owner of any right in the
work, sound recording or performance; or information about the
terms and conditions of the use of the work, sound recording or
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 performance; and any number or code that represent such 6. That the Sampaguita Pictures, Inc., placed an order with
information, when any of these items is attached to a copy of defendant company for 700 of said cards ... while Raul Urra &
the work, sound recording or fixation of performance or Co. ordered 200 ..., which cards were sent out by them to their
appears in conjunction with the communication to the public of respective correspondent, clients and friends during the
a work, sound recording or performance." Christmas season of 1960;

G.R. No. L-19439 October 31, 1964 7. That defendant company's use of plaintiff's design was
without knowledge, authority or consent of plaintiff;
MAURO MALANG SANTOS, plaintiff-appellant,
vs. 8. That said design has not been copyrighted;
MCCULLOUGH PRINTING COMPANY, defendant-appellee.
9. That plaintiff is an artist of established name, good-will and
Tañada Teehankee & Carreon for plaintiff-appellant. reputation. ... .
Esposo & Usison for defendant-appellee.
Upon the basis of the facts stipulated, the lower court rendered judgment
PAREDES, J.: on December 1, 1961, the pertinent portions of which are recited below:

This is an action for damages based on the provisions of Articles 721 and As a general proposition, there can be no dispute that the artist
722 of the Civil Code of the Philippines, allegedly on the unauthorized use, acquires ownership of the product of his art. At the time of its
adoption and appropriation by the defendant company of plaintiff's creation, he has the absolute dominion over it. To help the
intellectual creation or artistic design for a Christmas Card. The design author protect his rights the copyright law was enacted.
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 In intellectual creations, a distinction must be made between
astride a carabao, beside a tree, underneath which appears the plaintiff's two classes of property rights; the fact of authorship and the
pen name, Malang." right to publish and/or distribute copies of the creation. With
regard to the first, i.e. the fact of authorship, the artist cannot be
The complaint alleges that plaintiff Mauro Malang Santos designed for divested of the same. In other words, he may sell the right to
former Ambassador Felino Neri, for his personal Christmas Card greetings print hundred of his work yet the purchaser of said right can
for the year 1959, the artistic motif in question. The following year the never be the author of the creation.
defendant McCullough Printing Company, without the knowledge and
authority of plaintiff, displayed the very design in its album of Christmas It is the second right, i.e., the right to publish, republish, multiply
cards and offered it for sale, for a price. For such unauthorized act of and/or distribute copies of the intellectual creation which the
defendant, plaintiff suffered moral damages to the tune of P16,000.00, state, through the enactment of the copyright law, seeks to
because it has placed plaintiff's professional integrity and ethics under protect. The author or his assigns or heirs may have the work
serious question and caused him grave embarrassment before copyrighted and once this is legally accomplished any
Ambassador Neri. He further prayed for the additional sum of P3,000.00 infringement of the copyright will render the infringer liable to
by way of attorney's fee. the owner of the copyright.

Defendant in answer to the complaint, after some denials and admissions, xxx xxx xxx
moved for a dismissal of the action claiming that —
The plaintiff in this case did not choose to protect his
(1) The design claimed does not contain a clear notice that it intellectual creation by a copyright. The fact that the design was
belonged to him and that he prohibited its use by others; used in the Christmas card of Ambassador Neri who distributed
eight hundred copies thereof among his friends during the
(2) The design in question has been published but does not Christmas season of 1959, shows that the, same was
contain a notice of copyright, as in fact it had never been published.
copyrighted by the plaintiff, for which reason this action is
barred by the Copyright Law; Unless satisfactorily explained a delay in applying for a
copyright, of more than thirty days from the date of its
(3) The complaint does not state a cause of action. publication, converts the property to one of public domain.

The documentary evidence submitted were the Christmas cards, as Since the name of the author appears in each of the alleged
originally designed by plaintiff, the design as printed for Ambassador Neri, infringing copies of the intellectual creation, the defendant may
and the subsequent reprints ordered by other parties. The case was not be said to have pirated the work nor guilty of plagiarism
submitted an a "Stipulation of Fact" the pertinent portions of which are Consequently, the complaint does not state a cause of action
hereunder reproduced: against the defendant.

1. That the plaintiff was the artist who created the design xxx xxx ;xxx
shown in Exhibit A, ...
WHEREFORE, the Court dismisses the complaint without
2. That the design carries the pen name of plaintiff, MALANG, pronouncement as to costs.
on its face ... and indicated in Exhibit A, ...
In his appeal to this Court, plaintiff-appellant pointed five (5) errors
3. That said design was created by plaintiff in the latter part of allegedly committed by the trial court, all of which bring to the fore, the
1959 for the personal use of former Ambassador Felino Neri; ... following propositions: (1) whether plaintiff is entitled to protection,
notwithstanding the, fact that he has not copyrighted his design; (2)
4. That former Ambassador Neri had 800 such cards ... printed whether the publication is limited, so as to prohibit its use by others, or it is
by the defendant company in 1959, ... which he distributed to general publication, and (3) whether the provisions of the Civil Code or the
his friends in December, 1959; Copyright Law should apply in the case. We will undertake a collective
discussion of these propositions.
5. That defendant company utilized plaintiff's design in the year
1960 in its album of Christmas card samples displayed to its Under the established facts, We find that plaintiff is not entitled to a
customers ... . 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

4
Office relating to the Registration of Copyright Claims" promulgated
pursuant to Republic Act 165, provides, among others, that an intellectual On the other hand, defendant-appellee is the operator of a restaurant
creation should be copyrighted thirty (30) days after its publication, if made known as "Alex Soda Foundation and Restaurant" where a combo with
in Manila, or within sixty (60) day's if made elsewhere, failure of which professional singers, hired to play and sing musical compositions to
renders such creation public property. In the case at bar, even as of this entertain and amuse customers therein, were playing and singing the
moment, there is no copyright for the design in question. We are not also above-mentioned compositions without any license or permission from the
prepared to accept the contention of appellant that the publication of the appellant to play or sing the same.
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 Accordingly, appellant demanded from the appellee payment of the
place, if such were the condition then Ambassador Neri would be the necessary license fee for the playing and singing of aforesaid
aggrieved party, and not the appellant. In the second place, if there was compositions but the demand was ignored.
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 Hence, on November 7, 1967, appellant filed a complaint with the lower
effect is general publication, irrevocable rights thereupon become vested court for infringement of copyright against defendant-appellee for allowing
in the public, in consequence of which enforcement of the restriction the playing in defendant-appellee’s restaurant of said songs copyrighted in
becomes impossible (Nutt vs. National Institute, 31 F [2d] 236). It has the name of the former.cralawnad
been held that the effect of offering for sale a dress, for example
manufactured in accordance with an original design which is not protected Defendant-appellee, in his answer, countered that the complaint states no
by either a copyright or a patent, is to divest the owner of his common law cause of action. While not denying the playing of said copyrighted
rights therein by virtue of the publication of a 'copy' and thereafter anyone compositions in his establishment, appellee maintains that the mere
is free to copy the design or the dress (Fashion Originators Guild of singing and playing of songs and popular tunes even if they are
America v. Federal Trade Commission, 114 F [2d] 80). When Ambassador copyrighted do not constitute an infringement (Record on Appeal, p. 11;
Neri distributed 800 copies of the design in controversy, the plaintiff lost Resolution, CA-G.R. NO. 46373-R, Rollo, pp. 32-36) under the provisions
control of his design and the necessary implication was that there had of Section 3 of the Copyright Law (Act 3134 of the Philippine Legislature).
been a general publication, there having been no showing of a clear
indication that a limited publication was intended. The author of a literary The lower court, finding for the defendant, dismissed the complaint
composition has a light to the first publication thereof. He has a right to (Record on Appeal, p. 25).
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 Plaintiff appealed to the Court of Appeals which as already stated certified
first publication. When once published, it is dedicated to the public, and the case to the Supreme Court for adjudication on the legal question
the author loses the exclusive right to control subsequent publication by involved. (Resolution, Court of Appeals, Rollo, p. 36; Resolution of the
others, unless the work is placed under the protection of the copyright law. Supreme Court of February 18, 1973, Rollo, p. 38).
(See II Tolentino's Comments on the Civil Code, p. 433, citing Wright v.
Eisle 83 N.Y. Supp. 887.) In its brief in the Court of Appeals, appellant raised the following
Assignment of Errors:chanrob1es virtual 1aw library
CONFORMABLY WITH ALL THE FOREGOING, We find that the errors
assigned have not been committed by the lower court. The decision I
appealed from, therefore, should be, as it is hereby affirmed. Costs taxed
against plaintiff-appellant.
THE LOWER COURT ERRED IN HOLDING THAT THE MUSICAL
COMPOSITIONS OF THE APPELLANT WERE IN THE NATURE OF
[G.R. No. L-36402. March 16, 1987.]
PUBLIC PROPERTY WHEN THEY WERE COPYRIGHTED OR
REGISTERED.
FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS,
INC., Plaintiff-Appellant, v. BENJAMIN TAN, Defendant-Appellee.
II
Lichauco, Picazo & Agcaoili Law Office, for Plaintiff-Appellant.

Ramon A. Nieves, for Defendant-Appellee. THE LOWER COURT ERRED IN HOLDING THAT THE MUSICAL
COMPOSITIONS OF THE APPELLANT WERE PLAYED AND SUNG IN
THE SODA FOUNTAIN AND RESTAURANT OF THE APPELLEE BY
DECISION INDEPENDENT CONTRACTORS AND ONLY UPON THE REQUEST OF
CUSTOMERS.

PARAS, J.: III

An appeal was made to the Court of Appeals docketed as CA-G.R. No. THE LOWER COURT ERRED IN HOLDING THAT THE PLAYING AND
46373-R ** entitled Filipino Society of Composers, Authors, Publishers, SINGING OF COPYRIGHTED MUSICAL COMPOSITIONS IN THE SODA
Inc., Plaintiff-Appellant v. Benjamin Tan, Defendant-Appellee, from the FOUNTAIN AND RESTAURANT OF THE APPELLEE ARE NOT PUBLIC
decision of the Court of First Instance of Manila, Branch VII in Civil Case PERFORMANCES FOR PROFIT OF THE SAID COMPOSITIONS
No. 71222 *** "Filipino Society of Composers, Authors and Publishers, WITHIN THE MEANING AND CONTEMPLATION OF THE COPYRIGHT
Inc., Plaintiff v. Benjamin Tan, Defendant," which had dismissed plaintiffs’ LAW.
complaint without special pronouncement as to costs.chanrobles virtual
lawlibrary IV

The Court of Appeals, finding that the case involves pure questions of law,
certified the same to the Supreme Court for final determination THE LOWER COURT ERRED IN NOT HOLDING THAT THE APPELLEE
(Resolution, CA-G.R. No. 46373-R, Rollo, p. 36; Resolution of the IS LIABLE TO THE APPELLANT FOR FOUR (4) SEPARATE
Supreme Court of February 16, 1973 in L-36402, Rollo, p. 38). INFRINGEMENTS. (Brief for Appellant, pp. A and B).

The undisputed facts of this case are as follows:chanrob1es virtual 1aw The petition is devoid of merit.chanrobles virtual lawlibrary
library
The principal issues in this case are whether or not the playing and
Plaintiff-appellant is a non-profit association of authors, composers and signing of musical compositions which have been copyrighted under the
publishers duly organized under the Corporation Law of the Philippines provisions of the Copyright Law (Act 3134) inside the establishment of the
and registered with the Securities and Exchange Commission. Said defendant-appellee constitute a public performance for profit within the
association is the owner of certain musical compositions among which are meaning and contemplation of the Copyright Law of the Philippines; and
the songs entitled: "Dahil Sa Iyo," "Sapagkat Ikaw Ay Akin," "Sapagkat assuming that there were indeed public performances for profit, whether or
Kami Ay Tao Lamang" and "The Nearness Of You."cralaw virtua1aw not appellee can be held liable therefor.
library
5
Appellant anchors its claim on Section 3(c) of the Copyright Law which overall total of additional income produced by the bigger volume of
provides:jgc:chanrobles.com.ph business which the entertainment was programmed to attract.
Consequently, it is beyond question that the playing and singing of the
"SEC. 3. The proprietor of a copyright or his heirs or assigns shall have combo in defendant-appellee’s restaurant constituted performance for
the exclusive right:chanrob1es virtual 1aw library profit contemplated by the Copyright Law. (Act 3134 as amended by P.D.
No. 49, as amended).
x x x
Nevertheless, appellee cannot be said to have infringed upon the
Copyright Law. Appellee’s allegation that the composers of the contested
(c) To exhibit, perform, represent, produce, or reproduce the copyrighted musical compositions waived their right in favor of the general public when
work in any manner or by any method whatever for profit or otherwise; if they allowed their intellectual creations to become property of the public
not reproduced in copies for sale, to sell any manuscripts or any record domain before applying for the corresponding copyrights for the same
whatsoever thereof; (Brief for Defendant-Appellee, pp. 14-15) is correct.chanrobles lawlibrary :
rednad
x x x"
The Supreme Court has ruled that "Paragraph 33 of Patent Office
It maintains that playing or singing a musical composition is universally Administrative Order No. 3 (as amended, dated September 18, 1947)
accepted as performing the musical composition and that playing and entitled ‘Rules of Practice in the Philippines Patent Office relating to the
singing of copyrighted music in the soda fountain and restaurant of the Registration of Copyright Claims’ promulgated pursuant to Republic Act
appellee for the entertainment of the customers although the latter do not 165, provides among other things that an intellectual creation should be
pay for the music but only for the food and drink constitute performance copyrighted thirty (30) days after its publication, if made in Manila, or
for profit under the Copyright Law (Brief for the Appellant, pp. 1925). within sixty (60) days if made elsewhere, failure of which renders such
creation public property." (Santos v. McCullough Printing Company, 12
We concede that indeed there were "public performances for profit."cralaw SCRA 324-325 [1964]. Indeed, if the general public has made use of the
virtua1aw library object sought to be copyrighted for thirty (30) days prior to the copyright
application the law deems the object to have been donated to the public
The word ‘perform’ as used in the Act has been applied to "One who plays domain and the same can no longer be copyrighted.
a musical composition on a piano, thereby producing in the air sound
waves which are heard as music . . . and if the instrument he plays on is a A careful study of the records reveals that the song "Dahil Sa Iyo" which
piano plus a broadcasting apparatus, so that waves are thrown out, not was registered on April 20, 1956 (Brief for Appellant, p. 10) became
only upon the air, but upon the other, then also he is performing the popular in radios, juke boxes, etc. long before registration (TSN, May 28,
musical composition." (Buck, Et. Al. v. Duncan, Et. Al.; Same v. Jewell-La 1968, pp. 3-5; 25) while the song "The Nearness Of You" registered on
Salle Realty Co., 32F. 2d. Series 367). January 14, 1955 (Brief for Appellant, p. 10) had become popular twenty
five (25) years prior to 1968, (the year of the hearing) or from 1943 (TSN,
In relation thereto, it has been held that "The playing of music in dine and May 28, 1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin" and
dance establishment which was paid for by the public in purchases of food "Sapagkat Kami Ay Tao Lamang" both registered on July 10, 1966,
and drink constituted ‘performance for profit’ within a Copyright Law," appear to have been known and sang by the witnesses as early as 1965
(Buck, Et. Al. v. Russon, No. 4489 25 F. Supp. 317). Thus, it has been or three years before the hearing in 1968. The testimonies of the
explained that while it is possible in such establishments for the patrons to witnesses at the hearing of this case on this subject were unrebutted by
purchase their food and drinks and at the same time dance to the music of the appellant. (Ibid., pp. 28; 29 and 30).
the orchestra, the music is furnished and used by the orchestra for the
purpose of inducing the public to patronize the establishment and pay for Under the circumstances, it is clear that the musical compositions in
the entertainment in the purchase of food and drinks. The defendant question had long become public property, and are therefore beyond the
conducts his place of business for profit, and it is public; and the music is protection of the Copyright Law.
performed for profit (Ibid., p. 319). In a similar case, the Court ruled that
"The Performance in a restaurant or hotel dining room, by persons PREMISES CONSIDERED, the appealed decision of the Court of First
employed by the proprietor, of a copyrighted musical composition, for the Instance of Manila in Civil Case No. 71222 is hereby AFFIRMED.
entertainment of patrons, without charge for admission to hear it, infringes
the exclusive right of the owner of the copyright." (Herbert v. Shanley Co.; SO ORDERED.
John Church Co. v. Hillard Hotel Co., Et Al., 242 U.S. 590-591). In
delivering the opinion of the Court in said two cases, Justice Holmes [G.R. No. 166337. March 7, 2005]
elaborated thus:chanrobles.com : virtual law library
BAYANIHAN MUSIC vs. BMG
"If the rights under the copyright are infringed only by a performance
where money is taken at the door, they are very imperfectly protected.
Performances not different in kind from those of the defendants could be THIRD DIVISION
given that might compete with and even destroy the success of the
monopoly that the law intends the plaintiffs to have. It is enough to say Gentlemen:
that there is no need to construe the statute so narrowly. The defendants’
performances are not eleemosynary. They are part of a total for which the
public pays, and the fact that the price of the whole is attributed to a Quoted hereunder, for your information, is a resolution of this Court
particular item which those present are expected to order is not important. dated MAR 7 2005.
It is true that the music is not the sole object, but neither is the food, which
probably could be got cheaper elsewhere. The object is a repast in G.R. No. 166337 (Bayanihan Music Philippines, Inc. vs. BMG Records
surroundings that to people having limited power of conversation or (Pilipinas) and Jose Mari Chan, et al.)
disliking the rival noise, give a luxurious pleasure not to be had from
eating a silent meal. If music did not pay, it would be given up. If it pays, it Subject of this petition for review on certiorari is the Decision dated
pays out of the public’s pocket. Whether it pays or not, the purpose of December 14, 2004[1] of the Court of Appeals in CA-G.R. SP No. 69626,
employing it is profit, and that is enough." (Ibid., p. 594). upholding the Order dated August 24, 2001 of the Regional Trial Court at
Quezon City, Branch 90, which found no merit in petitioner's application for
In the case at bar, it is admitted that the patrons of the restaurant in the issuance of a writ of preliminary injunction, along with the Order dated
question pay only for the food and drinks and apparently not for listening January 10, 2002, which denied petitioner's motion for reconsideration.
to the music. As found by the trial court, the music provided is for the
purpose of entertaining and amusing the customers in order to make the
establishment more attractive and desirable (Record on Appeal, p. 21). It On July 16, 1973, private respondent Jose Mari Chan (Chan) entered into
will be noted that for the playing and singing the musical compositions a contract with petitioner Bayanihan Music Philippines, Inc. (Bayanihan),
involved, the combo was paid as independent contractors by the appellant whereunder the former assigned to the latter all his rights, interests and
(Record on Appeal, p. 24). It is therefore obvious that the expenses participation over his musical composition "Can We Just Stop and Talk A
entailed thereby are added to the overhead of the restaurant which are While". On March 11, 1976, the parties entered into a similar contract over
either eventually charged in the price of the food and drinks or to the Chan's other musical composition entitled "Afraid For Love To Fade".

6
On the strength of the abovementioned contracts, Bayanihan applied for IN VIEW OF THE FOREGOING, the application or prayer for the issuance
and was granted by the National Library a Certificate of Copyright of a writ of preliminary injunction is denied.
Registration for each of the two musical compositions, thus: November 19,
1973, for the song "Can We Just Stop and Talk A While" and on May 21, SO ORDERED.
1980, for the song "Afraid for Love To Fade."
Its motion for a reconsideration of the same order having been likewise
Apparently, without the knowledge and consent of petitioner Bayanihan, denied by the trial court in its next Order of January 10,
Chan authorized his co-respondent BMG Records (Pilipinas) [BMG] to 2002,[3]cralaw petitioner Bayanihan then went to the Court of Appeals on a
record and distribute the aforementioned musical compositions in a then petition for certiorari, thereat docketed as CA-G.R. SP No. 69626, imputing
recently released album of singer Lea Salonga. grave abuse of discretion on the part of the trial court in issuing the Orders
of August 24, 2001 and January 10, 2001, denying its prayers for a writ of
In separate letters both dated December 7, 1999, petitioner Bayanihan preliminary injunction and motion for reconsideration, respectively.
informed respondents Chan and BMG of its existing copyrights over the
subject musical compositions and the alleged violation of such right by the In the herein assailed Decision dated December 14, 2004, the Court of
two. Demands were made on both to settle the matter with Bayanihan. Appeals upheld the challenged orders of the trial court and accordingly
However no settlement was reached by the parties. dismissed Bayanihan petition, thus:

Hence, on August 8, 2000, Bayanihan filed with the Regional Trial Court at WHEREFORE, finding neither flaw of jurisdiction nor taint of grave abuse of
Quezon City a complaint against Chan and BMG for violation of Section 216 discretion in the issuance of the assailed Orders of the respondent court
of Republic Act No. 8293, otherwise known as the Intellectual Property dated August 24, 2001 and January 10, 2002, the instant petition is
Code of the Philippines, with a prayer for the issuance of Temporary DISMISSED. No costs.
Restraining Order (TRO) and/or writ of preliminary injunction, enjoining
respondent BMG from further recording and distributing the subject musical
compositions in whatever form of musical products, and Chan from further SO ORDERED.[4]cralaw
granting any authority to record and distribute the same musical
compositions. Hence, Bayanihan's present recourse.

In its answer, BMG contended, among others, that: (1) the acts of recording It is petitioner's submission that the appellate court committed reversible
and publication sought to be enjoined had already been consummated, error when it dismissed its petition for certiorari and upheld the trial court's
thereby rendering moot Bayanihan's prayer for TRO and/or preliminary denial of its application for a writ of preliminary injunction. Petitioner insists
injunction; and (2) there is no clear showing that petitioner Bayanihan would that as assignee of the copyrights over the musical compositions in
be greatly damaged by the refusal of the prayed for TRO and/or preliminary question, it has a clear legal right to a writ of preliminary injunction; that
injunction. BMG also pleaded a cross-claim against its co-respondent Chan respondents BMG and Chan violated its copyrights over the same musical
for violation of his warranty that his musical compositions are free from compositions; that despite knowledge by respondent BMG of petitioner's
claims of third persons, and a counterclaim for damages against petitioner copyrights over the said musical compositions, BMG continues to record
Bayanihan. and distribute the same, to petitioner's great and irreparable injury.

Chan, for his part, filed his own answer to the complaint, thereunder alleging We DENY.
that: (1) it was never his intention to divest himself of all his rights and
interest over the musical compositions in question; (2) the contracts he We have constantly reminded courts that there is no power, the exercise of
entered into with Bayanihan are mere music publication agreements giving which is more delicate and requires greater caution, deliberation and sound
Bayanihan, as assignee, the power to administer his copyright over his two discretion, or which is more dangerous in a doubtful case, than the issuance
songs and to act as the exclusive publisher thereof; (3) he was not cognizant of an injunction. A court should, as much as possible, avoid issuing the writ
of the application made by and the subsequent grant of copyrights to which would effectively dispose of the main case without trial.
Bayanihan; and (4) Bayanihan was remissed in its obligations under the
contracts because it failed to effectively advertise his musical compositions
for almost twenty (20) years, hence, he caused the rescission of said Here, nothing is more evident than the trial court's abiding awareness of the
contracts in 1997. Chan also included in his answer a counterclaim for extremely difficult balancing act it had to perform in dealing with petitioner's
damages against Bayanihan. prayer for injunctive reliefs. Conscious, as evidently it is, of the fact that
there is manifest abuse of discretion in the issuance of an injunctive writ if
the following requisites provided for by law are not present: (1) there must
After hearing the parties, the lower court came out with an order denying be a right in esse or the existence of a right to be protected; and (2) the act
Bayanihan's prayer for TRO, saying, thus: against which the injunction is to be directed is a violation of such
right,[5]cralaw the trial court threaded the correct path in denying petitioner's
After carefully considering the arguments and evaluating the evidence prayer therefor. For, such a writ should only be granted if a party is clearly
presented by counsels, this Court finds that the plaintiff has not been able entitled thereto.[6]cralaw
to show its entitlement to the relief of TRO as prayed for in its verified
complaint (see Section 4, Rule 58 of the 1997 Rules of Civil Procedure, as Of course, while a clear showing of the right to an injunctive writ is
amended), hence, this Court is of the considered and humble view that the necessary albeit its existence need not be conclusively
ends of justice shall be served better if the aforecited application is denied. established,[7]cralaw as the evidence required therefor need not be
conclusive or complete, still, for an applicant, like petitioner Bayanihan, to
IN VIEW OF THE FOREGOING, the aforecited application or prayer for the be entitled to the writ, he is required to show that he has the ostensible right
issuance of a TRO is denied. to the final relief prayed for in its complaint.[8]cralaw Here, the trial court did
not find ample justifications for the issuance of the writ prayed for by
SO ORDERED. petitioner.

Thereafter, the same court, in its subsequent Order dated August Unquestionably, respondent Chan, being undeniably the composer and
24, 2001,[2]cralaw likewise denied Bayanihan's prayer for a writ of author of the lyrics of the two (2) songs, is protected by the mere fact alone
preliminary injunction, to wit: that he is the creator thereof, conformably with Republic Act No. 8293,
otherwise known as the Intellectual Property Code, Section 172.2 of which
reads:
After carefully going over the pleadings and the pertinent portions of the
records insofar as they are pertinent to the issue under consideration, this
Court finds that the plaintiff has not been able to show its entitlement to the 172.2. Works are protected by the sole fact of their creation, irrespective of
relief of preliminary injunction as prayed for in its verified complaint their mode or form of expression, as well as of their content, quality and
(see Section 4, Rule 58 of the 1997 Rules of Civil Procedure, as amended), purpose.
hence, this Court is of the considered and humble view that the ends of
justice shall be served better if the aforecited application is denied, (see An examination of petitioner's verified complaint in light of the two (2)
also Order dated July 16, 2001). contracts sued upon and the evidence it adduced during the hearing on the
7
application for preliminary injunction, yields not the existence of the requisite The petitioner's complaint alleges that petitioner, doing business under the
right protectable by the provisional relief but rather a lingering doubt on name and style of KEC Cosmetics Laboratory, is the registered owner of
whether there is or there is no such right. The two contracts between the copyrights Chin Chun Su and Oval Facial Cream Container/Case, as
petitioner and Chan relative to the musical compositions subject of the suit shown by Certificates of Copyright Registration No. 0-1358 and No. 0-
contain the following identical stipulations: 3678; that she also has patent rights on Chin Chun Su & Device and Chin
Chun Su for medicated cream after purchasing the same from Quintin
7. It is also hereby agreed to by the parties herein that in the event the Cheng, the registered owner thereof in the Supplemental Register of the
PUBLISHER [petitioner herein] fails to use in any manner whatsoever within Philippine Patent Office on February 7, 1980 under Registration Certificate
two (2) years any of the compositions covered by this contract, then such No. 4529; that respondent Summerville advertised and sold petitioner's
composition may be released in favor of the WRITER and excluded from cream products under the brand name Chin Chun Su, in similar containers
this contract and the PUBLISHER shall execute the necessary release in that petitioner uses, thereby misleading the public, and resulting in the
writing in favor of the WRITER upon request of the WRITER; decline in the petitioner's business sales and income; and, that the
respondents should be enjoined from allegedly infringing on the copyrights
and patents of the petitioner.
xxx xxx xxx
The respondents, on the other hand, alleged as their defense that
9. This contract may be renewed for a period of two-and-one-half (2 1/2) Summerville is the exclusive and authorized importer, re-packer and
years at the option of the PUBLISHER. Renewal may be made by the distributor of Chin Chun Su products manufactured by Shun Yi Factory of
PUBLISHER by advising the WRITER of such renewal in writing at least Taiwan; that the said Taiwanese manufacturing company authorized
five (5) days before the expiration of this contract.[9]cralaw Summerville to register its trade name Chin Chun Su Medicated
Cream with the Philippine Patent Office and other appropriate
It would thus appear that the two (2) contracts expired on October 1, governmental agencies; that KEC Cosmetics Laboratory of the petitioner
1975 and March 11, 1978, respectively, there being neither an allegation, obtained the copyrights through misrepresentation and falsification; and,
much less proof, that petitioner Bayanihan ever made use of the that the authority of Quintin Cheng, assignee of the patent registration
compositions within the two-year period agreed upon by the parties. certificate, to distribute and market Chin Chun Suproducts in the
Philippines had already been terminated by the said Taiwanese
Anent the copyrights obtained by petitioner on the basis of the selfsame two Manufacturing Company.
(2) contracts, suffice it to say 'that such purported copyrights are not
presumed to subsist in accordance with Section 218[a] and [b], of After due hearing on the application for preliminary injunction, the trial
the Intellectual Property Code,[10]cralaw because respondent Chan had court granted the same in an Order dated February 10, 1992, the
put in issue the existence thereof. dispositive portion of which reads:

It is noted that Chan revoked and terminated said contracts, along with ACCORDINGLY, the application of plaintiff Elidad C. Kho,
others, on July 30, 1997, or almost two years before petitioner Bayanihan doing business under the style of KEC Cosmetic Laboratory,
wrote its sort of complaint/demand letter dated December 7, 1999 regarding for preliminary injunction, is hereby granted. Consequentially,
the recent "use/recording of the songs 'Can We Just Stop and Talk A While' plaintiff is required to file with the Court a bond executed to
and 'Afraid for Love to Fade,'" or almost three (3) years before petitioner defendants in the amount of five hundred thousand pesos
filed its complaint on August 8, 2000, therein praying, inter alia, for injunctive (P500,000.00) to the effect that plaintiff will pay to defendants
relief. By then, it would appear that petitioner had no more right that is all damages which defendants may sustain by reason of the
protectable by injunction. injunction if the Court should finally decide that plaintiff is not
entitled thereto.
Lastly, petitioner's insinuation that the trial court indulged in generalizations
and was rather skimpy in dishing out its reasons for denying its prayer for SO ORDERED.3
provisional injunctive relief, the same deserves scant consideration. For
sure, the manner by which the trial court crafted its challenged orders is The respondents moved for reconsideration but their motion for
quite understandable, lest it be subjected to a plausible suspicion of having reconsideration was denied by the trial court in an Order dated March 19,
prejudged the merits of the main case. 1992.4

WHEREFORE, petition is hereby DENIED. On April 24, 1992, the respondents filed a petition for certiorari with the
Court of Appeals, docketed as CA-G.R. SP No. 27803, praying for the
SO ORDERED. nullification of the said writ of preliminary injunction issued by the trial
court. After the respondents filed their reply and almost a month after
G.R. No. 115758 March 19, 2002 petitioner submitted her comment, or on August 14 1992, the latter moved
to dismiss the petition for violation of Supreme Court Circular No. 28-91, a
circular prohibiting forum shopping. According to the petitioner, the
ELIDAD C. KHO, doing business under the name and style of KEC respondents did not state the docket number of the civil case in the
COSMETICS LABORATORY, petitioner, caption of their petition and, more significantly, they did not include therein
vs. a certificate of non-forum shopping. The respondents opposed the petition
HON. COURT OF APPEALS, SUMMERVILLE GENERAL and submitted to the appellate court a certificate of non-forum shopping
MERCHANDISING and COMPANY, and ANG TIAM CHAY, respondents. for their petition.

DE LEON, JR., J.: On May 24, 1993, the appellate court rendered a Decision in CA-G.R. SP
No. 27803 ruling in favor of the respondents, the dispositive portion of
Before us is a petition for review on certiorari of the Decision1 dated May which reads:
24, 1993 of the Court of Appeals setting aside and declaring as null and
void the Orders2 dated February 10, 1992 and March 19, 1992 of the WHEREFORE, the petition is hereby given due course and the
Regional Trial Court, Branch 90, of Quezon City granting the issuance of a orders of respondent court dated February 10, 1992 and March
writ of preliminary injunction. 19, 1992 granting the writ of preliminary injunction and denying
petitioners' motion for reconsideration are hereby set aside and
The facts of the case are as follows: declared null and void. Respondent court is directed to
forthwith proceed with the trial of Civil Case No. Q-91-10926
and resolve the issue raised by the parties on the merits.
On December 20, 1991, petitioner Elidad C. Kho filed a complaint for
injunction and damages with a prayer for the issuance of a writ of
preliminary injunction, docketed as Civil Case No. Q-91-10926, against the SO ORDERED.5
respondents Summerville General Merchandising and Company
(Summerville, for brevity) and Ang Tiam Chay. In granting the petition, the appellate court ruled that:

8
 The registration of the trademark or brandname "Chin Chun II
Su" by KEC with the supplemental register of the Bureau of
Patents, Trademarks and Technology Transfer cannot be RESPONDENT HONORABLE COURT OF APPEALS
equated with registration in the principal register, which is duly COMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING
protected by the Trademark Law.1âwphi1.nêt TO LACK OF JURISDICTION IN REFUSING TO PROMPTLY
RESOLVE PETITIONER'S MOTION FOR
xxx xxx xxx RECONSIDERATION.

As ratiocinated in La Chemise Lacoste, S.S. vs. Fernandez, III

129 SCRA 373, 393:
IN DELAYING THE RESOLUTION OF PETITIONER'S
"Registration in the Supplemental Register, MOTION FOR RECONSIDERATION, THE HONORABLE
therefore, serves as notice that the registrant is COURT OF APPEALS DENIED PETITIONER'S RIGHT TO
using or has appropriated the trademark. By the SEEK TIMELY APPELLATE RELIEF AND VIOLATED
very fact that the trademark cannot as yet be on PETITIONER'S RIGHT TO DUE PROCESS.
guard and there are certain defects, some obstacles
which the use must still overcome before he can IV
claim legal ownership of the mark or ask the courts
to vindicate his claims of an exclusive right to the
use of the same. It would be deceptive for a party RESPONDENT HONORABLE COURT OF APPEALS
with nothing more than a registration in the COMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING
Supplemental Register to posture before courts of TO LACK OF JURISDICTION IN FAILING TO CITE THE
justice as if the registration is in the Principal PRIVATE RESPONDENTS IN CONTEMPT.9
Register.
The petitioner faults the appellate court for not dismissing the petition on
The reliance of the private respondent on the last the ground of violation of Supreme Court Circular No. 28-91. Also, the
sentence of the Patent office action on application petitioner contends that the appellate court violated Section 6, Rule 9 of
Serial No. 30954 that 'registrants is presumed to be the Revised Internal Rules of the Court of Appeals when it failed to rule on
the owner of the mark until after the registration is her motion for reconsideration within ninety (90) days from the time it is
declared cancelled' is, therefore, misplaced and submitted for resolution. The appellate court ruled only after the lapse of
grounded on shaky foundation. The supposed three hundred fifty-four (354) days, or on June 3, 1994. In delaying the
presumption not only runs counter to the precept resolution thereof, the appellate court denied the petitioner's right to seek
embodied in Rule 124 of the Revised Rules of the timely appellate relief. Finally, petitioner describes as arbitrary the
Practice before the Philippine Patent Office in denial of her motions for contempt of court against the respondents.
Trademark Cases but considering all the facts
ventilated before us in the four interrelated petitions We rule in favor of the respondents.
involving the petitioner and the respondent, it is
devoid of factual basis. As even in cases where Pursuant to Section 1, Rule 58 of the Revised Rules of Civil Procedure,
presumption and precept may factually be one of the grounds for the issuance of a writ of preliminary injunction is a
reconciled, we have held that the presumption is proof that the applicant is entitled to the relief demanded, and the whole or
rebuttable, not conclusive, (People v. Lim Hoa, G.R. part of such relief consists in restraining the commission or continuance of
No. L-10612, May 30, 1958, Unreported). One may the act or acts complained of, either for a limited period or perpetually.
be declared an unfair competitor even if his Thus, a preliminary injunction order may be granted only when the
competing trademark is registered (Parke, Davis & application for the issuance of the same shows facts entitling the applicant
Co. v. Kiu Foo & Co., et al., 60 Phil 928; La Yebana to the relief demanded.10 This is the reason why we have ruled that it must
Co. v. chua Seco & Co., 14 Phil 534)."6 be shown that the invasion of the right sought to be protected is material
and substantial, that the right of complainant is clear and unmistakable,
The petitioner filed a motion for reconsideration. This she followed with and, that there is an urgent and paramount necessity for the writ to
several motions to declare respondents in contempt of court for publishing prevent serious damage.11
advertisements notifying the public of the promulgation of the assailed
decision of the appellate court and stating that genuine Chin Chun In the case at bar, the petitioner applied for the issuance of a preliminary
Su products could be obtained only from Summerville General injunctive order on the ground that she is entitled to the use of the
Merchandising and Co. trademark on Chin Chun Su and its container based on her copyright and
patent over the same. We first find it appropriate to rule on whether the
In the meantime, the trial court went on to hear petitioner's complaint for copyright and patent over the name and container of a beauty cream
final injunction and damages. On October 22, 1993, the trial court product would entitle the registrant to the use and ownership over the
rendered a Decision7 barring the petitioner from using the trademark Chin same to the exclusion of others.
Chun Su and upholding the right of the respondents to use the same, but
recognizing the copyright of the petitioner over the oval shaped container Trademark, copyright and patents are different intellectual property rights
of her beauty cream. The trial court did not award damages and costs to that cannot be interchanged with one another. A trademark is any visible
any of the parties but to their respective counsels were awarded Seventy- sign capable of distinguishing the goods (trademark) or services (service
Five Thousand Pesos (P75,000.00) each as attorney's fees. The petitioner mark) of an enterprise and shall include a stamped or marked container of
duly appealed the said decision to the Court of Appeals. goods.12 In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise.13 Meanwhile, the scope of a
On June 3, 1994, the Court of Appeals promulgated a Resolution8 denying copyright is confined to literary and artistic works which are original
the petitioner's motions for reconsideration and for contempt of court in intellectual creations in the literary and artistic domain protected from the
CA-G.R. SP No. 27803. moment of their creation.14 Patentable inventions, on the other hand, refer
to any technical solution of a problem in any field of human activity which
Hence, this petition anchored on the following assignment of errors: is new, involves an inventive step and is industrially applicable.15

I Petitioner 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 inasmuch as the same
RESPONDENT HONORABLE COURT OF APPEALS falls squarely within its definition. In order to be entitled to exclusively use
COMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING the same in the sale of the beauty cream product, the user must
TO LACK OF JURISDICTION IN FAILING TO RULE ON sufficiently prove that she registered or used it before anybody else did.
PETITIONER'S MOTION TO DISMISS. The petitioner's copyright and patent registration of the name and
container would not guarantee her the right to the exclusive use of the
9
same for the reason that they are not appropriate subjects of the said motion for reconsideration, we find that the said issue has likewise been
intellectual rights. Consequently, a preliminary injunction order cannot be rendered moot and academic by our ruling that she has no right over the
issued for the reason that the petitioner has not proven that she has a trademark and, consequently, to the issuance of a writ of preliminary
clear right over the said name and container to the exclusion of others, not injunction.1âwphi1.nêt
having proven that she has registered a trademark thereto or used the
same before anyone did. Finally, we rule that the Court of Appeals correctly denied the petitioner's
several motions for contempt of court. There is nothing contemptuous
We cannot likewise overlook the decision of the trial court in the case for about the advertisements complained of which, as regards the
final injunction and damages. The dispositive portion of said decision held proceedings in CA-G.R. SP No. 27803 merely announced in plain and
that the petitioner does not have trademark rights on the name and straightforward language the promulgation of the assailed Decision of the
container of the beauty cream product. The said decision on the merits of appellate court. Moreover, pursuant to Section 4 of Rule 39 of the Revised
the trial court rendered the issuance of the writ of a preliminary injunction Rules of Civil Procedure, the said decision nullifying the injunctive writ was
moot and academic notwithstanding the fact that the same has been immediately executory.
appealed in the Court of Appeals. This is supported by our ruling in La
Vista Association, Inc. v. Court of Appeals16, to wit: WHEREFORE, the petition is DENIED. The Decision and Resolution of
the Court of Appeals dated May 24, 1993 and June 3, 1994, respectively,
Considering that preliminary injunction is a provisional remedy are hereby AFFIRMED. With costs against the petitioner.
which may be granted at any time after the commencement of
the action and before judgment when it is established that the SO ORDERED.
plaintiff is entitled to the relief demanded and only when his
complaint shows facts entitling such reliefs xxx and it appearing
that the trial court had already granted the issuance of a final G.R. No. 119280 August 10, 2006
injunction in favor of petitioner in its decision rendered after trial
on the merits xxx the Court resolved to Dismiss the instant UNILEVER PHILIPPINES (PRC), INC., Petitioner,
petition having been rendered moot and academic. An vs.
injunction issued by the trial court after it has already made a THE HONORABLE COURT OF APPEALS and PROCTER AND
clear pronouncement as to the plaintiff's right thereto, that is, GAMBLE PHILIPPINES, INC., Respondents.
after the same issue has been decided on the merits, the trial
court having appreciated the evidence presented, is proper, DECISION
notwithstanding the fact that the decision rendered is not yet
final xxx. Being an ancillary remedy, the proceedings for
preliminary injunction cannot stand separately or proceed CORONA, J.:
independently of the decision rendered on the merit of the main
case for injunction. The merit of the main case having been In this petition for review under Rule 45 of the Rules of Court, petitioner
already determined in favor of the applicant, the preliminary assails the February 24, 1995 decision 1 of the Court of Appeals (CA) in
determination of its non-existence ceases to have any force CA-G.R. SP No. 35242 entitled "Unilever Philippines (PRC), Inc. v.
and effect. (italics supplied) Honorable Fernando V. Gorospe, Jr. and Procter and Gamble Philippines,
Inc. (P&GP)" which affirmed the issuance by the court a quo of a writ of
La Vista categorically pronounced that the issuance of a final injunction preliminary injunction against it. The writ enjoined petitioner from using
renders any question on the preliminary injunctive order moot and and airing, until further orders of the court, certain television commercials
academic despite the fact that the decision granting a final injunction is for its laundry products claimed to be identical or similar to its "double tug"
pending appeal. Conversely, a decision denying the applicant-plaintiff's or "tac-tac" key visual. 2
right to a final injunction, although appealed, renders moot and academic
any objection to the prior dissolution of a writ of preliminary injunction. Petitioner alleges that the writ of preliminary injunction was issued by the
trial court (and affirmed by the CA) without any evidence of private
The petitioner argues that the appellate court erred in not dismissing the respondent’s clear and unmistakable right to the writ. Petitioner further
petition for certiorari for non-compliance with the rule on forum shopping. contends that the preliminary injunction issued against it already disposed
We disagree. First, the petitioner improperly raised the technical objection of the main case without trial, thus denying petitioner of any opportunity to
of non-compliance with Supreme Court Circular No. 28-91 by filing a present evidence on its behalf.
motion to dismiss the petition for certiorari filed in the appellate court. This
is prohibited by Section 6, Rule 66 of the Revised Rules of Civil Procedure The antecedents show that on August 24, 1994, private respondent
which provides that "(I)n petitions for certiorari before the Supreme Court Procter and Gamble Phils., Inc. filed a complaint for injunction with
and the Court of Appeals, the provisions of Section 2, Rule 56, shall be damages and a prayer for temporary restraining order and/or writ of
observed. Before giving due course thereto, the court may require the preliminary injunction against petitioner Unilever, alleging that:
respondents to file their comment to, and not a motion to dismiss, the
petition xxx (italics supplied)". Secondly, the issue was raised one month
1.5. As early as 1982, a P&G subsidiary in Italy used a key visual in the
after petitioner had filed her answer/comment and after private respondent
advertisement of its laundry detergent and bleaching products. This key
had replied thereto. Under Section 1, Rule 16 of the Revised Rules of Civil
visual known as the "double-tug" or "tac-tac" demonstration shows the
Procedure, a motion to dismiss shall be filed within the time for but before
fabric being held by both hands and stretched sideways.
filing the answer to the complaint or pleading asserting a claim. She
therefore could no longer submit a motion to dismiss nor raise defenses
and objections not included in the answer/comment she had earlier 1.6. The "tac-tac" was conceptualized for P&G by the advertising agency
tendered. Thirdly, substantial justice and equity require this Court not to Milano and Gray of Italy in 1982. The "tac-tac" was used in the same year
revive a dissolved writ of injunction in favor of a party without any legal in an advertisement entitled "All aperto" to demonstrate the effect on
right thereto merely on a technical infirmity. The granting of an injunctive fabrics of one of P&GP’s products, a liquid bleach called "Ace."
writ based on a technical ground rather than compliance with the
requisites for the issuance of the same is contrary to the primary objective xxxxxxxxx
of legal procedure which is to serve as a means to dispense justice to the
deserving party.
1.7. Since then, P&G has used the "tac-tac" key visual in the
advertisement of its products. In fact, in 1986, in Italy, the "tac-tac" key
The petitioner likewise contends that the appellate court unduly delayed visual was used in the television commercial for "Ace" entitled "Kite."
the resolution of her motion for reconsideration. But we find that petitioner
contributed to this delay when she filed successive contentious motions in
1.8. P&G has used the same distinctive "tac-tac" key visual to local
the same proceeding, the last of which was on October 27, 1993,
consumers in the Philippines.
necessitating counter-manifestations from private respondents with the
last one being filed on November 9, 1993. Nonetheless, it is well-settled
that non-observance of the period for deciding cases or their incidents xxxxxxxxx
does not render such judgments ineffective or void.17With respect to the
purported damages she suffered due to the alleged delay in resolving her
10
1.10. Substantially and materially imitating the aforesaid "tac-tac" key is not entitled to any protection because it has not registered with the
visual of P&GP and in blatant disregard of P&GP’s intellectual property National Library the very TV commercials which it claims have been
rights, Unilever on 24 July 1993 started airing a 60 second television infringed by petitioner.
commercial "TVC" of its "Breeze Powerwhite" laundry product called
"Porky." The said TVC included a stretching visual presentation and sound We disagree. Section 2 of PD 49 stipulates that the copyright for a work or
effects almost [identical] or substantially similar to P&GP’s "tac-tac" key intellectual creation subsists from the moment of its creation. Accordingly,
visual. the creator acquires copyright for his work right upon its creation.…
Contrary to petitioner’s contention, the intellectual creator’s exercise and
xxxxxxxxx enjoyment of copyright for his work and the protection given by law to him
is not contingent or dependent on any formality or registration. Therefore,
1.14. On July 15, 1994, P&GP aired in the Philippines, the same "Kite" taking the material allegations of paragraphs 1.3 to 1.5 of P&GP’s verified
television advertisement it used in Italy in 1986, merely dubbing the Italian Complaint in the context of PD 49, it cannot be seriously doubted that at
language with Filipino for the same produce "Ace" bleaching liquid least, for purposes of determining whether preliminary injunction should
which P&GPnow markets in the Philippines. issue during the pendency of the case, P&GP is entitled to the injunctive
relief prayed for in its Complaint.
1.15. On August 1, 1994, Unilever filed a Complaint with the Advertising
Board of the Philippines to prevent P&GP from airing the "Kite" television The second ground is likewise not well-taken. As adverted to earlier, the
advertisement. 3 provisional remedy of preliminary injunction will not issue unless it is
shown in the verified complaint that plaintiff is probably entitled to the relief
demanded, which consists in whole or in part in restraining the
On August 26, 1994, Judge Gorospe issued an order granting a temporary commission or continuance of the acts complained of. In view of such
restraining order and setting it for hearing on September 2, 1994 for requirement, the court has to make a tentative determination if the right
Unilever to show cause why the writ of preliminary injunction should not sought to be protected exists and whether the act against which the writ is
issue. During the hearing on September 2, 1994, P&GP received to be directed is violative of such right. Certainly, the court’s determination
Unilever’s answer with opposition to preliminary injunction. P&GP filed its as to the propriety of issuing the writ cannot be taken as a prejudgment of
reply to Unilever’s opposition to a preliminary injunction on September 6, the merits of the case because it is tentative in nature and the writ may be
1994. dissolved during or after the trial if the court finds that plaintiff was not
entitled to it….
During the hearing on September 9, 1994, Judge Gorospe ordered
petitioner to submit a sur-rejoinder. P&GP received Unilever’s rejoinder to xxxxxxxxx
reply on September 13, 1994. The following day, on September 14, 1994,
P&GP filed its sur-reply to Unilever’s rejoinder.
Obviously, the determination made by the court a quo was only for
purposes of preliminary injunction, without passing upon the merits of the
On September 19, 1994, P&GP received a copy of the order dated case, which cannot be done until after a full-blown hearing is conducted.
September 16, 1994 ordering the issuance of a writ of preliminary
injunction and fixing a bond of P100,000. On the same date, P&GP filed
the required bond issued by Prudential Guarantee and Assurance, Inc. The third ground is patently unmeritorious. As alleged in the Complaint
P&GP is a subsidiary of Procter and Gamble Company (P&G) for which
the "double tug" or "tac-tac" key visual was conceptualized or created. In
On September 21, 1994, petitioner appealed to the CA assigning the that capacity, P&GP used the said TV advertisement in the Philippines to
following errors allegedly committed by the court a quo, to wit: promote its products. As such subsidiary, P&GP is definitely within the
protective mantle of the statute (Sec. 6, PD 49).
PUBLIC RESPONDENT HAD ACTED WITHOUT OR IN EXCESS OF
JURISDICTION AND WITH GRAVE ABUSE OF DISCRETION Finally, We find the procedure adopted by the court a quo to be in order….
AMOUNTING TO LACK OF JURISDICTION IN ISSUING THE WRIT OF
PRELIMINARY INJUNCTION IN VIOLATION OF THE RULES ON
EVIDENCE AND PROCEDURE, PARTICULARLY OF SEC. 3 (a), RULE The record clearly shows that respondent Judge followed the (procedure
58 OF THE REVISED RULES OF COURT AND OF THE PREVAILING provided for in Section 5, Rule 58, as amended by BP 224, and Paragraph
JURISPRUDENCE. A(8) of the Interim Rules). In fact, the court a quo set the incident for
hearing on September 2, 1994, at which date petitioner was ordered to
show cause why the writ should not be issued. Petitioner filed an
PUBLIC RESPONDENT IN ISSUING THE VOID ORDER DATED Opposition to the application for preliminary injunction. The same incident
SEPTEMBER 16, 1994, HAD, IN EFFECT, ALREADY PREJUDGED THE was again set for hearing on September 9, 1994, during which the parties
MERITS OF THE MAIN CASE. made some manifestations in support of their respective positions.
Subsequent to such hearing petitioner filed a Reply to P&GP’s Rejoinder
PUBLIC RESPONDENT HAD ISSUED THE VOID ORDER ACCORDING to its Opposition. Under the foregoing circumstances, it is absurd to even
RELIEF TO A NON-PARTY IN CIVIL CASE NO. 94-2434 WITHOUT suggest that petitioner was not given its day in court in the matter of the
JURISDICTION. issuance of the preliminary injunctive relief.

PUBLIC RESPONDENT IN ISSUING THE VOID ORDER HAD xxxxxxxxx

DEPRIVED PETITIONER OF SUBSTANTIVE AND PROCEDURAL DUE
PROCESS; PUBLIC RESPONDENT HAD FORECLOSED PETITIONER’S There was of course extreme urgency for the court a quo to act on
RIGHT AND THE OPPORTUNITY TO CROSS-EXAMINE PROCTER’S plaintiff’s application for preliminary injunction. The airing of TV
WITNESSES ABAD AND HERBOSA. 4 commercials is necessarily of limited duration only. Without such
temporary relief, any permanent injunction against the infringing TV
On February 24, 1995, the CA rendered its decision finding that Judge advertisements of which P&GP may possibly succeed in getting after the
Gorospe did not act with grave abuse of discretion in issuing the disputed main case is finally adjudicated could be illusory if by then such
order. The petition for certiorari was thus dismissed for lack of merit. advertisements are no longer used or aired by petitioner. It is therefore not
difficult to perceive the possible irreparable damage which P&GP may
After a careful perusal of the records, we agree with the CA and affirm its suffer if respondent Judge did not act promptly on its application for
decision in toto: preliminary injunction. 5

Petitioner does not deny that the questioned TV advertisements are Preliminary injunction is a provisional remedy intended to provide
substantially similar to P&GP’s "double tug" or "tac-tac" key visual. protection to parties for the preservation of their rights or interests during
However, it submits that P&GP is not entitled to the relief demanded, the pendency of the principal action. 6 Thus, Section1, Rule 58 of the
which is to enjoin petitioner from airing said TV advertisements, for the Rules of Court provides:
reason that petitioner has Certificates of Copyright Registration for which
advertisements while P&GP has none with respect to its "double-tug" or Section 1. Preliminary injunction defined; classes. — A preliminary
"tac-tac" key visual. In other words, it is petitioner’s contention that P&GP injunction is an order granted at any stage of an action or proceeding prior
11
to the judgment or final order, requiring a party or a court, agency or a
person to refrain from a particular act or acts. It may also require the
performance of a particular act or acts, in which case it shall be known as
a preliminary mandatory injunction.

Injunction is resorted to only when there is a pressing necessity to avoid

injurious consequences which cannot be remedied under any standard
compensation. 7 As correctly ruled by the CA, there was an extreme
urgency to grant the preliminary injunction prayed for by P&GP
considering that TV commercials are aired for a limited period of time only.
In fact, this Court takes note of the fact that the TV commercial in issue ―
the Kite TV advertisement ― is no longer aired today, more than 10 years
after the injunction was granted on September 16, 1994.

The sole objective of a writ of preliminary injunction is to preserve the

status quo until the merits of the case can be heard fully. 8 A writ of
preliminary injunction is generally based solely on initial and incomplete
evidence. 9 Thus, it was impossible for the court a quo to fully dispose of
the case, as claimed by petitioner, without all the evidence needed for the
full resolution of the same. To date, the main case still has to be resolved
by the trial court.

The issuance of a preliminary injunction rests entirely on the discretion of

the court and is generally not interfered with except in cases of manifest
abuse. 10 There was no such abuse in the case at bar, especially because
petitioner was given all the opportunity to oppose the application for
injunction. The fact was, it failed to convince the court why the injunction
should not be issued. Thus, in Santos v. Court of Appeals, 11 we held that
no grave abuse of discretion can be attributed to a judge or body issuing a
writ of preliminary injunction where a party has not been deprived of its
day in court as it was heard and it exhaustively presented all its arguments
and defenses.

WHEREFORE, the petition is hereby DENIED.

Costs against petitioner.

SO ORDERED.

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