COPYRIGHT_CASE DIGEST (SET 1)

G.R. No. 76193. November 9, 1989

Petitioner’s claim: o Ong alleged that he was the holder of a Certificate of Copyright Registration over the cellophane
Petitioner is asking for the cancellation of the registration of trademark CHARLIE BROWN(Registration No. SR. wrapper with the two-dragon design, and that Tan used an identical wrapper in his
4224) in the name of respondent MUNSINGWEAR, alleging that petitioner is damaged by the registration of the business. In his prayer for a preliminary injunction in addition to damages, he asked that Tan
trademark CHARLIE BROWN of T-Shirts under Class 25with the Registration No. SR-4224 dated September 12, be restrained from using the wrapper.
1979 in the name of Munsingwear Creation Manufacturing Co., Inc., on the following grounds: (1) that
respondent was not entitledto the registration of the mark CHARLIE BROWN, & DEVICE at the time of Tan filed an opposition alleging that Ong was not entitled to an injunction.
application for registration; (2) that CHARLIE BROWN is a character creation or a pictorial illustration,
thecopyright to which is exclusively owned worldwide by the petitioner; (3) that as the owner of thepictorial o According to Tan, Ong did not have a clear right over the use of the trademark Pagoda and
illustration CHARLIE BROWN, petitioner has since 1950 and continuously up to thepresent, used and reproduced Lungkow vermicelli as these were registered in the name of Ceroilfood Shandong, based in
the same to the exclusion of others; (4) that the respondent-registrant has no bona fide use of the trademark in Qingdao, China.
commerce in the Philippines prior to itsapplication for registration. o Further, Tan averred that he was the exclusive distributor in the Philippines of the Pagoda and
Lungkow vermicelli and was solely authorized to use said trademark.
Respondent’s claim: o He added that Ong merely copied the two-dragon design from Ceroilfood Shandong which had
It uses, the trademark "CHARLIE BROWN"&"DEVICE" on children's wear such as T-shirts,undershirts, sweaters, the Certificates of Registration issued by different countries.
brief and sandos, in class 25; whereas "CHARLIE BROWN" is used onlyby petitioner as character, in a pictorial o Private respondent alleges that the trademark PAGODA BRAND was registered in China on
illustration used in a comic strip appearing innewspapers and magazines. It has no trademark significance and October 31, 1979 while the trademark LUNGKOW VERMICELLI WITH TWO-DRAGON DEVICE
therefore respondent-registrant's use of "CHARLIE BROWN"&"DEVICE" is not in conflict with the petitioner's use was registered on August 15, 1985.
of "CHARLIE BROWN"-Relied on the ruling on October 2, 1984 in which the Director of the Philippine Patent
Officerendered a decision in this case holding that a copyright registration like that of the name andlikeness of Trial Court issued a temporary restraining order on the same date the complaint was filed. It likewise issued the
CHARLIE BROWN may not provide a cause of action for the cancellation of atrademark registration. writ in Ong’s favor upon his filing of a P100,000.00 bond.

Issue: CA gave due course and granted the petition. The lower court’s orders, as well as the writ of preliminary
WHETHER THE RESPONDENT COURT OF APPEALS COMMITTED GRAVE ABUSEOF DISCRETION AMOUNTING TO injunction, were set aside. Ong filed a MR from which CA modified its decision and made the injunction
EXCESS OF JURISDICTION WHEN BY DISMISSINGTHE APPEAL TO IT FROM THE DECISION OF THE DIRECTOR OF permanent.
PATENTS, ITKNOWINGLY DISREGARDED ITS OWN DECISION IN AC-GR. SP. NO. 0342, WHICH WAS AFFIRMED BY
THIS HONORABLE SUPREME COURT TO THE EFFECT THAT ACOPYRIGHTED CHARACTER MAY NOT BE ISSUE: W/N the issuance of the writ of preliminary injunction in favor of private respondent was proper?
APPROPRIATED AS A TRADEMARK BY ANOTHER UNDER PRESIDENTIAL DECREE NO. 49.
HELD: Petition is partially granted. The prayer for a writ of preliminary injunction to prohibit Tan from using the
S.C.Ruling: cellophane wrapper with two-dragon device is denied, but the finding of the respondent appellate court that
The petitioner is impressed with merit.Since the name "CHARLIE BROWN" and its pictorial representation were Ong’s copyrighted wrapper is a copy of that of Ceroilfood Shandong is SET ASIDE for being premature. Case was
covered by acopyright registration way back in 1950 the same are entitled to protection under PD No. remanded to RTC.
49,otherwise known as the "Decree on Intellectual Property".
RATIO:
Aside from its copyright registration, petitioner is also the owner of several trademarkregistrations and A person to be entitled to a copyright must be the original creator of the work. He must have created it by
application for the name and likeness of "CHARLIE BROWN" which is the dulyregistered trademark and copyright his own skill, labor and judgment without directly copying or evasively imitating the work of another. The
of petitioner United Feature Syndicate Inc. as early as 1957and additionally also as TV SPECIALS featuring the copies of the certificates of copyright registered in the name of Ceroilfood Shandong sufficiently raise
"PEANUTS" characters "CHARLIEBROWN´.It is undeniable from the records that petitioner is the actual owner of reasonable doubt. With such a doubt, the preliminary injunction asked by Ong against Tan is unavailing.
said trademark due to itsprior registration with the Patent's Office.
To be entitled to an injunctive writ, petitioner must show, inter alia, the existence of a clear and unmistakable
Wilson Ong Ching Kian Chuan v CA right and an urgent and paramount necessity for the writ to prevent serious damage. In this case, the Court
G.R. No. 130360. August 15, 2001 found that petitioner’s right has not been clearly and unmistakably demonstrated.
FACTS:
The Court added it was premature for the CA to declare that the design of petitioner’s wrapper is a copy of the
Petitioner imports vermicelli from China National Cereals Oils and Foodstuffs, based in Beijing, China, under the wrapper allegedly registered by Ceroilfood Shandong. The only issue brought before the CA involved the grave
firm name C.K.C. Trading. He repacks it in cellophane wrappers with a design of two-dragons and the TOWER abuse of discretion allegedly committed by the trial court in granting the writ of preliminary injunction, and not
trademark on the uppermost portion. on the merits of the infringement case. That matter remains for decision after appropriate proceedings at the
trial court.
Ong acquired a Certificate of Copyright Registration from the National Library on June 9, 1993 on the said
design.
COPYRIGHT_CASE DIGEST (SET 1)

GR 166337; March 7, 2005 Petitioners found that several pages of the respondent's book are similar, if not all together a copy of
Bayanihan Music v BMG Records and Jose Mari Chan 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
Facts: bChan entered into a contract with Bayanihan, assigning all his rights, interests and participation to the contents of petitioners' works, and without securing their permission, lifted, copied, plagiarized and/or
Bayanihan for his song “Can We Just Stop and Talk a While” and after that, for the song “Afraid for Love to Fade.” transposed certain portions of their book CET.
On the basis of such assignment, Bayanihan applied for and was granted by the National Library a Certificate of
Copyright Registration for each of the 2 musical compositions. Chan authorized BMG Records to record and On the other hand, Robles contends that the book DEP is the product of her own intellectual creation, and was
distribute both compositions in a then recently released album of Lea Salonga without the knowledge of not a copy of any existing valid copyrighted book and that the similarities may be due to the authors' exercise of
Bayanihan. Bayanihan informed Chan and BMG of its existing copyrights over the songs and the alleged violation the "right to fair use of copyrighted materials, as guides."
of such rights by the respondents, demanding to settle the matter but no settlement was made.
The trial court ruled in favor of the respondents, absolving them of any liability. Later, the Court of Appeals
Bayanihan filed before the Quezon City RTC a complaint against Chan and BMG for violation of Sec. 216, RA rendered judgment in favor of respondents Robles and Goodwill Trading Co., Inc. In this appeal, petitioners
8293parying for the issuance of a TRO and/or writ of preliminary injunction enjoining BMG from further submit that the appellate court erred in affirming the trial court's decision.
recording an distributing the subject musical compositions in whatever form or musical products, and Chan from
further granting any authority to record and distribute the same musical compositions. ISSUE: Whether Robles committed infringement in the production of DEP.

BMG countered that the acts of recording and publication has been done and a TRO or injunction would be HELD: A perusal of the records yields several pages of the book DEP that are similar if not identical with the text
moot and that there is no clear showing that Bayanihan will be greatly damaged by the refusal of the prayer for of CET. The court finds that respondent Robles' act of lifting from the book of petitioners substantial portions of
TRO/injunction. BMG also pleaded a cross-claim against Chan for violation of his warranty that his compositions discussions and examples, and her failure to acknowledge the same in her book is an infringement of petitioners'
are free from claims of third persons and counterclaim for damages against Bayanihan. copyrights.

Chan alleged that he never intended to divest himself of all his rights and interest over the musical composition; In the case at bar, the least that respondent Robles could have done was to acknowledge petitioners Habana et.
that the contracts entered into with Bayanihan were mere music publications giving Bayanihan as Assignees, al. as the source of the portions of DEP. The final product of an author's toil is her book. To allow another to
the power to administer his copyright over his 2 songs and act as the exclusive publisher; that he was not copy the book without appropriate acknowledgment is injury enough.
cognizant of application and grant of copyright certification over his 2 songs to Bayanihan; and that Bayanihan
was remiss of its obligations under the contract because it failed to effectively advertise the songs for almost 20
years. Hence, the rescission of the contracts in 1997. Chan also filed a counterclaim for damages against
Bayanihan. RTC denied the TRO as well as the injunction. CA affirmed RTC ruling.

Issue: When is the creator entitled to copyright protection?

Ruling: Unquestionably, Chan being the composer and author of the lyrics of the 2 songs is protected by the
mere fact alone that he is the creator thereof, conformably with RA 8293, Sec. 172.2: Works are protected by
the sole fact of their creation, irrespective of their mode or form of expression, as well as of their content and
quality and purpose.

Also, as provided in the contracts Chan entered into with Bayanihan was the agreement that in the event the
publisher fails to use in any manner within 2 years any of the compositions covered by the contract, the
composition may be released in favor of the writer and excluded from the contract. The publisher shall execute
the necessary release in writing in favor of the writer upon the request of the writer. It appears that the 2
contracts already expired, there being no allegation or proof that Bayanihan ever made use of the compositions
within the 20year period agreed upon.

Anent the copyrights obtained on the basis of the contracts, suffice it to say that such purported copyrights are
not presumed to subsist in accordance with Sec. 218, RA 8293 because Chan had put in issue the existence
thereof.

PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs. FELICIDAD C. ROBLES and GOODWILL
TRADING CO., INC.
G.R. No. 131522, July 19, 1999

FACTS: Pacita Habana et al., are authors and copyright owners of duly issued of the book, College English For
Today (CET). Respondent Felicidad Robles was the author of the book Developing English Proficiency (DEP).