DIGEST

CASE TITLE: SONY CORPORATION OF AMERICA VS UNIVERSAL

CITY STUDIOS INC.
PETITIONERS CLAIMS: Sony introduced considerable evidence
describing television programs that could be copied without
objection from any copyright holder, with special emphasis on
sports, religious, and educational programming. For example,
their survey indicated that 7.3 of all Betamax use is to record
sports events, and representatives of professional baseball,
football, basketball, and hockey testified that they had no
objection to the recording of their televised events for home
use. Sony further averred that the buyers of the VTRs have
the same television watching activities or routines as much as
they have even before buying the VTR. Hence, does not affect
the respondents number of viewers.
RESPONDENTS CLAIMS: Respondents commenced this
copyright infringement action against petitioners in the United
States District Court for the Central District of California in
1976. Respondents alleged that some individuals had used
Betamax video tape recorders to record some of respondents
copyrighted works which had been exhibited on commercially
sponsored television and contended that these individuals had
thereby infringed respondents copyrights. Respondents
further maintained that petitioners were liable for the
copyright infringement allegedly committed by Betamax
consumers because of petitioners marketing of the Betamax
VTRs
ISSUE/S: whether the sale of petitioners copying equipment to
the general public violates any of the rights conferred upon
respondents by the Copyright Act.
RULING: After a lengthy trial, the District Court denied
respondents all the relief they sought and entered judgment
for petitioners. findings reveal that the average member of
the public uses a VTR principally to record a program he
cannot view as it is being televised and then to watch it once

at a later time. This practice, known as "time-shifting,"

enlarges the television viewing audience. For that reason, a
significant amount of television programming may be used in
this manner without objection from the owners of the
copyrights on the programs.
In summary, the record and findings of the District Court lead
us to two conclusions. First, Sony demonstrated a significant
likelihood that substantial numbers of copyright holders who
license their works for broadcast on free television would not
object to having their broadcasts time-shifted by private
viewers. And second, respondents failed to demonstrate that
time-shifting would cause any likelihood of non-minimal harm
to the potential market for, or the value of, their copyrighted
works. The Betamax is, therefore, capable of substantial noninfringing uses. Sonys sale of such equipment to the general
public does not constitute contributory infringement of
respondents copyrights.

CASE TITLE: METRO-GOLDWYN-MAYER STUDIOS INC. et al. v.

GROKSTER, LTD
Slight background of case: (para hindi kayo mailto. Hehe. :D )
Respondent companies distribute free software that allows
computer users to share electronic files through peer-to-peer
networks, so called because the computers communicate
directly with each other, not through central servers. Although
such networks can be used to share any type of digital file,
recipients of respondents software have mostly used them to
share copyrighted music and video files without authorization.
Seeking damages and an injunction, a group of movie studios
and other copyright holders (hereinafter MGM) sued
respondents for their users copyright infringements, alleging
that respondents knowingly and intentionally distributed their
software to enable users to infringe copyrighted works in
violation of the Copyright Act

PETITIONERS CLAIMS: MGM (Metro Goldwyn), argues

persuasively that the message of direct inducement to
perform infringement is shown by Grokster. Three features of
the evidence of intent are particularly notable. First, each of
the respondents showed itself to be aiming to satisfy a known
source of demand for copyright infringement, the market
comprising former Napster (a former site w/c offers same
service of downloading musics, films, etc) users. Respondents
efforts to supply services to former Napster users indicate a
principal, if not exclusive, intent to bring about infringement.
Second, neither respondent attempted to develop filtering
tools or other mechanisms to diminish the infringing activity
using their software. Third, respondents make money by
selling advertising space, then by directing ads to the screens
of computers employing their software. The more their
software is used, the more ads are sent out and the greater
the advertising revenue. Since the extent of the softwares
use determines the gain to the distributors, the commercial
sense of their enterprise turns on high-volume use, which the
record shows is infringing. This evidence alone would not
justify an inference of unlawful intent, but its import is clear in
the entire records context.
RESPONDENTS CLAIMS: The Grokster and Streamcast
software does not tell the companies when particular files are
copied. However, Streamcast's software allowed users to
search for "Top 40" songs, which were almost always
copyrighted. The Court noted that "a few searches using their
software would show what is available on the networks the
software reaches." Grokster did not control the files, never
had any resident on any of their computers, and did not
centralize any lists of where the files were. Similar to the Sony
case, they manufacture product used in downloading, not the
downloading itself. Hence, having no direct participation of
the infringement. They are not supplied with the titles and
information of the specific files that are downloaded. (sorry
guys wala talaga kasi halos sinagot yung respondent)

ISSUE/S: Whether a distributor of a product that is capable of

lawful and unlawful use is liable for copyright infringement by
a 3rd party using that product.
RULING: Court ruled in favor of Metro Goldwyn. One infringes
contributorily by intentionally inducing or encouraging direct
infringement, and infringes vicariously by profiting from direct
infringement, while declining to exercise the right to stop or
limit it. Although [t]he Copyright Act does not expressly
render anyone liable for [anothers] infringement, these
secondary liability doctrines emerged from common law
principles and are well established in the law. In addition to
intent to bring about infringement and distribution of a device suitable
for infringing use, the inducement theory requires evidence of actual
infringement by recipients of the device, the software in this case.
There is evidence of such infringement on a gigantic scale. Because
substantial evidence supports MGM on all elements, summary judgment
for respondents was error. On remand, reconsideration of MGMs
summary judgment motion will be in order
(as compared to the Sony case : Moreover, there was no
evidence that Sony had desired to bring about taping in
violation of copyright or taken active steps to increase its
profits from unlawful taping, Nothing in Sony requires courts
to ignore evidence of intent to promote infringement if such
evidence exists. It was never meant to foreclose rules of faultbased liability derived from the common law)

CASE TITLE: ELIDAD C. KHO, doing business under the

name and style of KEC COSMETICS
LABORATORY, petitioner, vs. HON. COURT OF APPEALS,
SUMMERVILLE GENERAL MERCHANDISING and
COMPANY, and ANG TIAM CHAY, respondents
PETITIONERS CLAIMS: The petitioners complaint alleges that
petitioner, doing business under the name and style of KEC

Cosmetics Laboratory, is the registered owner of the

copyrights Chin Chun Su and Oval Facial Cream
Container/Case, as shown by Certificates of Copyright
Registration, that she also has patent rights on Chin Chun Su
& Device and Chin Chun Su for medicated cream after
purchasing the same from Quintin Cheng, the registered
owner thereof in the Supplemental Register of the Philippine
Patent Office under a Registration Certificate, that respondent
Summerville advertised and sold petitioners cream products
under the brand name Chin Chun Su, in similar containers
that petitioner uses, thereby misleading the public, and
resulting in the decline in the petitioners business sales and
income; and, that the respondents should be enjoined from
allegedly infringing on the copyrights and patents of the
petitioner
RESPONDENTS CLAIMS: Alleged as their defense that
Summerville is the exclusive and authorized importer, repacker and distributor of Chin Chun Su products manufactured
by Shun Yi Factory of Taiwan; that the said Taiwanese
manufacturing company authorized Summerville to register
its trade name Chin Chun Su Medicated Cream with the
Philippine Patent Office and other appropriate governmental
agencies; that KEC Cosmetics Laboratory of the petitioner
obtained the copyrights through misrepresentation and
falsification; and, that the authority of Quintin Cheng,
assignee of the patent registration certificate, to distribute
and market Chin Chun Su products in the Philippines had
already been terminated by the said Taiwanese Manufacturing
Company.

ISSUE/S: whether the copyright and patent over the name and
container of a beauty cream product would entitle the
registrant to the use and ownership over the same to the
exclusion of others

RULING: Petitioner has no right to support her claim for the

exclusive use of the subject trade name and its container.
They are not appropriate subjects of the said intellectual
rights. The name and container of a beauty cream product are
proper subjects of a trademark inasmuch as the same falls
squarely within its definition. Trademark, copyright and
patents are different intellectual property rights that cannot
be interchanged with one another. A trademark is any visible
sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a
stamped or marked container of goods. In relation thereto, a
trade name means the name or designation identifying or
distinguishing an enterprise. Meanwhile, the scope of a
copyright is confined to literary and artistic works which are
original intellectual creations in the literary and artistic
domain protected from the moment of their
creation. Patentable inventions, on the other hand, refer to
any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is
industrially applicable

CASE TITLE: KENNETH ROY SAVAGE (malas ng

surname) /K ANGELIN EXPORT TRADING VS JUDGE
APRONIANO B. TAYPIN
PETITIONERS CLAIMS: Kenneth Savage, seek to nullify the
search warrant issued by respondent Judge Aproniano B.
Taypin which resulted in the seizure of certain pieces of
produced iron furniture from the factory of petitioners which
are allegedly matters subject of unfair competition involving
design patents. Savage further claims that the crime they
were accused of did not exist and the court has no jurisdiction
to issue the search warrant being not one of the special courts
assigned to hear and try IPR claims.
RESPONDENTS CLAIMS: They have jurisdiction since the act
of issuing a search warrant is an act ancillary to exercise of
jurisdiction and is conferred by substantive law. Administrative

Order No. 113-95 merely specified which court could "try and
decide" cases involving violations of IPR. It did not, and could
not, vest exclusive jurisdiction with regard to all matters.
The crime is punishable under article 189
of the Revised Penal Code.
ISSUE/S: The last question to be resolved is whether unfair
competition involving design patents punishable under Art.
189 of the Revised Penal Code exists in this case.
RULING: There exist no crime at the time of the commission
of the offense. The IPR Code took effect on 1 January 1998
repealing Art. 189 of the Revised Penal Code among others.
The issue involving the existence of "unfair competition" as a
felony involving design patents, referred to in Art. 189 of
the Revised Penal Code, has been rendered moot and
academic by the repeal of the article. The search warrant
cannot even be issued by virtue of a possible violation of
the IPR Code. The assailed acts specifically alleged were the
manufacture and fabrication of wrought iron furniture similar
to that patented by MENDCO, without securing any license or
patent for the same, for the purpose of deceiving or
defrauding Mendco and the buying public.

(if ever lang kasi under siya sa topic na Infringement of patent

; Rights and Remedies)
Respondents invoke jurisprudence to support their contention
that "unfair competition" exists in this case.[24] However, we
are prevented from applying these principles, along with the
new provisions on Unfair Competition found in
the IPR Code, to the alleged acts of the petitioners, for such
acts constitute patent infringement as defined by the same
Code-Juri smis
Sec. 76. Civil Action for Infringement. - 76.1. The making,
using, offering for sale, selling, or importing a patented
product or a product obtained directly or indirectly from a
patented process, or the use of a patented process without
authorization of the patentee constitutes patent infringement.
[25]

Although this case traces its origins to the year 1997 or before
the enactment of the IPR Code, we are constrained to invoke
the provisions of the Code. Article 22 of the Revised Penal
Code provides that penal laws shall be applied retrospectively,
if such application would be beneficial to the accused. [26] Since
the IPR Code effectively obliterates the possibility of any
criminal liability attaching to the acts alleged, then that Code
must be applied here.