PASCUAL GODINES vs. CA and SV-AGRO ENTERPRISES, INC.

,
ISSUE: Whether or not the product of petitioner Pascual Godines infringes
upon the patent of private respondent, SV-Agro Enterprises Inc.(SV-Agro)
DECISION: Yes. As stated by the Regional Trial Court, after inspection and
viewed from any perspective or angle, Godines floating power tiller is
identical and similar to that of SV-Agros turtle power tiller in form,
configuration, design and appearance. The parts or components thereof are
virtually the same. In operation, the floating power tiller of the defendant
operates also in similar manner as the turtle power tiller of plaintiff.
RATIO: In Studiengesellschaft Kohle mbH v. Eastman Kodak Company (450
F.Supp. 1211, 1977, United States District Court, E. D. Texas, Beaumont
Division):
Under the doctrine of equivalents which recognizes that minor
modifications in a patented invention are sufficient to put the item
beyond the scope of literal infringement, "an infringement also occurs
when a device appropriates a prior invention by incorporating its
innovative concept and, albeit with some modification and change,
performs substantially the same function in substantially the same way
to achieve substantially the same result.
Section 37 of Republic Act No. 165, as amended, provides:
Sec. 37. Right of Patentees. A patentee shall have the exclusive
right to make, use and sell the patented machine, article or product,
and to use the patented process for the purpose of industry or
commerce, throughout the territory of the Philippines for the terms of
the patent; and such making, using, or selling by any person without
the authorization of the Patentee constitutes infringement of the
patent.
Regarding the issue of unfair competition, Republic Act No. 166, as amended,
provides:
Sec. 29. Unfair competition, rights and remedies. . . .
xxx xxx xxx
In particular, and without in any way limiting the scope of unfair
competition, the following shall be deemed guilty of unfair
competition:
(a) Any person, who in selling his goods shall give them the general
appearance of goods of another manufacturer or dealer, either as to
the goods themselves or in the wrapping of the packages in which they
are contained, or the devices or words thereon, or in any other feature

of their appearance, which would be likely to influence purchasers that

the goods offered are those of a manufacturer or dealer other than the
actual manufacturer or dealer, or who otherwise clothes the goods with
such appearance as shall deceive the public and defraud another of his
legitimate trade. . . .

FACTS: SV-Agro Industries Enterprises, Inc. acquired Letters Patent No. UM2236 from Magdalena S. Villaruz on July 15, 1976 which covers a utility
model for a hand tractor or power tiller, the main components of which are
the following
In accordance with the patent, private respondent manufactured and sold
the patented power tillers with the patent imprinted on them. In 1979, SVAgro Industries suffered a decline of more than 50% in sales in its Molave,
Zamboanga del Sur branch. Upon investigation, it discovered that power
tillers similar to those patented by private respondent were being
manufactured and sold by petitioner, Pascual Godines.
The Regional Trial Court held Godines liable for infringement of patent and
unfair competition. They stated that Godines manufactured and sold power
tillers without patentee's authority and that to establish an infringement, it is
not essential to show that the defendant adopted the device or process in
every particular; Proof of an adoption of the substance of the thing will be
sufficient. The Court of Appeals affirmed the decision.
DISCUSSION: Magdalena S. Villaruiz was granted a patent for a utility model
for a hand tractor or power tiller. The grant of this patent awarded Ms.
Villaruiz exclusive rights to manufacture and sell the patented power tillers.
Ms. Villaruiz later sold the patent to SV-Agro Industries Enterprises Inc.
transferring therewith the exclusive rights to manufacture and sell.
On the other hand, Pascual Godines has been manufacturing and selling
power tillers similar to the ones already patented. Pascual contends that his
power tillers are not exactly identical to the patented ones manufactured by
SV-Agro.
The Supreme Court, following a United States District Court, decision stated
that under the doctrine of equivalents, minor modifications in a patented
invention does not remove the liability of the manufacturer or modifier from
infringement. As long as the invention functions the same way, and
substantially achieves the same result, it is still liable for infringement.

Since it has been ruled that the modifications of Godines does not excuse
him from liabilities dues to infringement, the Court applied certain provisions
of the law which seeks to protect patentees.
Under Sec. 37 of RA 165, only patentees shall have the exclusive right to
make, use, and sell the patented machine throughout the territory of the
Philippines. When one makes, uses, or sells the machine without authority, it
constitutes infringement of the patent.
Under Sec. 29 Rights and remedies for unfair competition, any person who
sells his goods which has the general appearance of other goods of a
manufacturer, shall be deemed guilty of unfair competition.
Since Godines manufactured and sold the power tillers which were identical
in form, configuration, design and appearance to those of SV-Agros, and
without SV-Agros authorization, the Court held him guilty of infringement
and unfair competition.
CHING v SALINAS
ISSUE: Whether Chings utility models, Leaf Spring Eye Bushing for
Automobile, can be considered literary and artistic works subject to copyright
protection.
DECISION: No. The specifications appended to the application for a
copyright certificate filed by the petitioner, the said Leaf Spring Eye Bushing
for Automobile is merely a utility model described as comprising a generally
cylindrical body having a co-axial bore that is centrally located and provided
with a perpendicular flange on one of its ends and a cylindrical metal jacket
surrounding the peripheral walls of said body, with the bushing made of
plastic that is either polyvinyl chloride or polypropylene. Likewise, the Vehicle
Bearing Cushion is illustrated as a bearing cushion comprising a generally
semi-circular body having a central hole to secure a conventional bearing
and a plurality of ridges provided therefore, with said cushion bearing being
made of the same plastic materials. Plainly, these are not literary or artistic
works. They are not intellectual creations in the literary and artistic domain,
or works of applied art. They are certainly not ornamental designs or one
having decorative quality or value.
Being plain automotive spare parts that must conform to the original
structural design of the components they seek to replace, the Leaf Spring
Eye Bushing and Vehicle Bearing Cushion are not ornamental. They lack the
decorative quality or value that must characterize authentic works of applied
art. They are not even artistic creations with incidental utilitarian functions or
works incorporated in a useful article. In actuality, the personal properties
described in the search warrants are mechanical works, the principal function
of which is utility sans any aesthetic embellishment.

RATIO:
Section 172, Intellectual Property Code:
Sec. 172. Literary and Artistic Works. 172.1 Literary and artistic works, hereinafter referred to as "works",
are original intellectual creations in the literary and artistic domain
protected from the moment of their creation and shall include in
particular:
...
(h) Original ornamental designs or models for articles of manufacture,
whether or not registrable as an industrial design, and other works of
applied art.
Joaquin, Jr. v. Drilon (G.R. No. 108946. January 28, 1999) and Pearl & Dean
Incorporated v. Shoemart, Incorporated (G.R. No. 148222. August 15, 2003):
Copyright, in the strict sense of the term, is purely a statutory right. It
is a new or independent right granted by the statute, and not simply a
pre-existing right regulated by it. Being a statutory grant, the rights
are only such as the statute confers, and may be obtained and enjoyed
only with respect to the subjects and by the persons, and on terms and
conditions specified in the statute. Accordingly, it can cover only the
works falling within the statutory enumeration or description.
Pivot Port International, Inc. v. Charlene Products, Inc., 372 F.2d 913 (2004):
It bears stressing that the focus of copyright is the usefulness of the
artistic design, and not its marketability. The central inquiry is whether
the article is a work of art.
Gay Toys, Inc. v. Buddy L. Corporation, 703 F.2d 970 (1983):
Works for applied art include all original pictorials, graphics, and
sculptural works that are intended to be or have been embodied in
useful article regardless of factors such as mass production,
commercial exploitation, and the potential availability of design patent
protection.
DBC of New York v. Merit Diamond Corporation, 768 F.Supp. 414 (1991).
However, the law refers to a work of applied art which is an artistic
creation. It bears stressing that there is no copyright protection for
works of applied art or industrial design which have aesthetic or

artistic features that cannot be identified separately from the

utilitarian aspects of the article.
Norris Industries, Inc. v. ITT Corporation, 696 F.2d 918 (1983).
Functional components of useful articles, no matter how artistically
designed, have generally been denied copyright protection unless they
are separable from the useful article.
FACTS: Jessie G. Ching is the owner and general manager of Jeshicris
Manufacturing Co., the maker and manufacturer of a Utility Model, described
as Leaf Spring Eye Bushing for Automobile made up of plastic.
On September 4, 2001, Ching and Joseph Yu were issued by the National
Library Certificates of Copyright Registration and Deposit of the said work
described therein as Leaf Spring Eye Bushing for Automobile.
On September 20, 2001, Ching requested the National Bureau of
Investigation (NBI) for police/investigative assistance for the apprehension
and prosecution of illegal manufacturers, producers and/or distributors of the
works.
After due investigation, the NBI filed applications for search warrants in the
RTC of Manila against William Salinas, Sr. and the officers and members of
the Board of Directors of Wilaware Product Corporation. It was alleged that
the respondents therein reproduced and distributed the said models.
The RTC granted the application and issued Search Warrant
The respondents averred that the works covered by the certificates issued
by the National Library are not artistic in nature; they are considered
automotive spare parts and pertain to technology. They aver that the models
are not original, and as such are the proper subject of a patent, not
copyright.
On January 3, 2002, the trial court issued an Order[12] granting the motion,
and quashed the search warrant on its finding that there was no probable
cause for its issuance. The Court of appeals affirmed the decision.
DISCUSSION: The case hinges on the determination of Chings utility model.
If the utility model is considered as literary and artistic works, then it will be
subject of copyright protection, hence validating the search warrants first
issued by the Regional Trial Court.
To determine the nature of the utility model, the court cites provisions from
law and previous Supreme Court decisions.

In Joaquin, Jr. v. Drilon and Pearl & Dean (Phil.), and Incorporated v.
Shoemart, Incorporated, the Court held that copyright protection is a purely
statutory right. Hence, it may only be obtained and enjoyed with respect to
the subjects and by the person's, terms, and conditions specified in the
statutory enumeration or description.

Under Sec. 172 of the Intellectual property code, Literary and artistic works
are original intellectual creations in the literary and artistic domain protected
from the moment of their creation.
Paragraph H of that section states that this includes original ornamental
designs or models for articles of manufacture, whether or not registrable as
an industrial design, and other works of applied art.
In Gay Toys, Inc. v Buddy L. Corporation, the Court ruled that Works for
applied art include all original pictorials, graphics, and sculptural works that
are intended to be or have been embodied in useful article regardless of
factors such as mass production.
In Pivot Port International, Inc. v Charlene Products Inc., DBC of New York v.
Merit Diamond Corporation, Norris Industries, Inc. v. ITT Corporation, the
Court ruled that industrial articles, no matter how artistically designed, are
not copyrightable unless they are separable from the useful article.
In the case at bar, the specifications of the Leaf Spring Eye Bushing for
Automobile is clearly a utility model. Being a plain automotive spare part, it
is not a literary work nor an artistic creation with incidental utilitarian works
incorporated in the useful article. Hence, Chings utility model cannot be
subject to copyright protection.