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ABS-CBN filed a petition for review with prayer for issuance of a ABS-CBN contends that
temporary restraining order and writ of preliminary injunction with the - PMSI violated its broadcasters rights under Section 211 of the IP Code:
Court of Appeals, which was docketed as CA-G.R. SP No. 88092.
Chapter XIV
Court of Appeals issued a temporary restraining order. BROADCASTING ORGANIZATIONS
Sec. 211. Scope of Right. - Subject to the provisions of Section 212,
Thereafter, ABS-CBN filed a petition for contempt against PMSI for broadcasting organizations shall enjoy the exclusive right to carry out,
continuing to rebroadcast Channels 2 and 23 despite the restraining authorize or prevent any of the following acts:
order. 211.1. The rebroadcasting of their broadcasts;
Court of Appeals sustained the findings of the Director-General of the IPO - PMSI guilty of infringement of ABS-CBNs copyright under Section 177 of
and dismissed both petitions filed by ABS-CBN. the IP Code which states that:
ABS-CBNs motion for reconsideration was denied, hence, this petition. Copyright or economic rights shall consist of the exclusive right to carry out,
authorize or prevent the public performance of the work (Section 177.6), and
ABS-CBN contends that: other communication to the public of the work (Section 177.7).
- PMSIs unauthorized rebroadcasting of Channels 2 and 23 is an Section 202.7 of the IP Code defines broadcasting as the transmission
infringement of its broadcasting rights and copyright under the by wireless means for the public reception of sounds or of images or of
Intellectual Property Code (IP Code); representations thereof; such transmission by satellite is also
- Memorandum Circular No. 04-08-88 excludes DTH satellite broadcasting where the means for decrypting are provided to the public
television operators; that the Court of Appeals interpretation of the by the broadcasting organization or with its consent.
must-carry rule violates Section 9 of Article III of the Constitution
because it allows the taking of property for public use without Rebroadcasting as defined in Article 3(g) of the International
payment of just compensation; Convention for the Protection of Performers, Producers of
- the Court of Appeals erred in dismissing the petition for contempt Phonograms and Broadcasting Organizations, otherwise known as the
without requiring respondents to file comment 1961 Rome Convention, of which the Republic of the Philippines is a
signatory, is the simultaneous broadcasting by one broadcasting
PMSI argues that: organization of the broadcast of another broadcasting organization.
This Office also finds no evidence on record showing that the Appellant has
provided decrypting means to the public indiscriminately. Considering the
Ruling: NO.
SECTION 1. Motion for production or inspection order. Upon motion of any Section 24 of Rule 130 draws the types of disqualification by reason of
party showing good cause therefore, the court in which an action is pending privileged communication, to wit: (a) communication between husband and
may (a) order any party to produce and permit the inspection and copying wife; (b) communication between attorney and client; (c) communication
or photographing, by or on behalf of the moving party, of any designated between physician and patient; (d) communication between priest and
documents, papers, books, accounts, letters, photographs, objects or penitent; and (e) public officers and public interest.
tangible things, not privileged, which constitute or contain evidence material
to any matter involved in the action and which are in his possession, custody There are, however, other privileged matters that are not mentioned by
or control; or (b) order any party to permit entry upon designated land or Rule 130. Among them are the following: (a) editors may not be compelled
other property in his possession or control for the purpose of inspecting, to disclose the source of published news; (b) voters may not be compelled to
measuring, surveying, or photographing the property or any designated disclose for whom they voted; (c) trade secrets; (d) information contained in
relevant object or operation thereon. The order shall specify the time, place tax census returns; and (d) bank deposits.
and manner of making the inspection and taking copies and photographs,
and may prescribe such terms and conditions as are just. intellectual and industrial property rights cases are not simple property
cases
Without limiting such industrial property rights to trademarks and trade
the production or inspection of documents or things as a mode of names, this Court has ruled that all agreements concerning intellectual
discovery sanctioned by the Rules of Court may be availed of by any property are intimately connected with economic development
party upon a showing of good cause therefor before the court in which The protection of industrial property encourages investments in new
an action is pending ideas and inventions and stimulates creative efforts for the satisfaction
Petitioners argument that Republic Act No. 8203, or the Special Law on
Counterfeit Drugs, requires the disclosure of the active ingredients of a
drug is also on faulty ground.
Respondent’s products are outside the scope of the cited law.
They do not come within the purview of a drug which, as defined
therein, refers to any chemical compound or biological substance,
other than food, that is intended for use in the treatment,
prevention or diagnosis of disease in man or animals.
such are not the characteristics of respondent's products
the privilege is not absolute; the trial court may compel disclosure
where it is indispensable for doing justice
Google does not infringe Plaintiffs' copyright in their works by making Plaintiffs seek to support their derivative claim by a showing that there
digital copies of them, where the copies are used to enable the public exist, or would have existed, paid licensing markets in digitized works,
to get information about the works, such as whether, and how often such as those provided by the Copyright Clearance Center or the
they use specified words or terms previous, revenue-generating version of the Google Partners Program.
The copyright resulting from the Plaintiffs' authorship of their works Plaintiffs also point to the proposed settlement agreement rejected by
does not include an exclusive right to furnish the kind of information the district court in this case, according to which Google would have
about the works that Google's programs provide to the public paid authors for its use of digitized copies of their works.
For substantially the same reasons, the copyright that protects The existence or potential existence of such paid licensing schemes
Plaintiffs' works does not include an exclusive derivative right to supply does not support Plaintiffs' derivative argument.
such information through query of a digitized copy. The access to the expressive content of the original that is or would
The extension of copyright protection beyond the copying of the work have been provided by the paid licensing arrangements Plaintiffs
in its original form to cover also the copying of a derivative reflects a cite is far more extensive than that which Google's search and
clear and logical policy choice. snippet view functions provide.
An author's right to control and profit from the dissemination of her Those arrangements allow or would have allowed public users to
work ought not to be evaded by conversion of the work into a different read substantial portions of the book.
form. Such access would most likely constitute copyright infringement if
derivative works over which the author of the original enjoys exclusive not licensed by the rights holders.
rights ordinarily are those that represent the protected aspects of the such arrangements have no bearing on Google's present programs,
original work, i.e., its expressive content, converted into an altered which, in a non-infringing manner, allow the public to obtain
form, such as the conversion of a novel into a film, the translation of a limited data about the contents of the book, without allowing any
writing into a different language, the reproduction of a painting in the substantial reading of its text
form of a poster or post card, recreation of a cartoon character in the
form of a three-dimensional plush toy, adaptation of a musical Plaintiffs also seek to support their derivative claim by a showing that
composition for different instruments, or other similar conversions. there is a current unpaid market in licenses for partial viewing of
If Plaintiffs' claim were based on Google's converting their books into a digitized books, such as the licenses that publishers currently grant to
digitized form and making that digitized version accessible to the public, the Google Partners program and Amazon's Search Inside the Book
their claim would be strong. program to display substantial portions of their books.
But Google safeguards from public view the digitized copies it makes Plaintiffs rely on Infinity Broadcast Corporation v. Kirkwood, and United
and allows access only to the extent of permitting the public to search States v. American Society of Composers, Authors and Publishers
The fact that the words pale pilsen are part of ABI's trademark does not The circumstance that the manufacturer of BEER PALE PILSEN, Asia
constitute an infringement of SMC's trademark: SAN MIGUEL PALE Brewery Incorporated, has printed its name all over the bottle of its
PILSEN beer product: on the label, on the back of the bottle, as well as on the
for "pale pilsen" are generic words descriptive of the color ("pale"), bottle cap, disproves SMC's charge that ABI dishonestly and
of a type of beer ("pilsen"), which is a light bohemian beer with a fraudulently intends to palm off its BEER PALE PILSEN as SMC's product.
strong hops flavor that originated in the City of Pilsen in
Czechoslovakia and became famous in the Middle Ages. "Pilsen" is SMC claims: the "trade dress" of BEER PALE PILSEN is "confusingly similar"
a "primarily geographically descriptive word," (Sec. 4, subpar. [e] to its SAN MIGUEL PALE PILSEN because both are bottled in 320 ml. steinie
Republic Act No. 166, as inserted by Sec. 2 of R.A. No. 638) hence, type, amber-colored bottles with white rectangular labels.
non-registerable and not appropriable by any beer manufacturer. The use of ABI of the steinie bottle, similar but not identical to the SAN
MIGUEL PALE PILSEN bottle, is not unlawful.
The Trademark Law provides: SMC did not invent but merely borrowed the steinie bottle from
Sec. 4. . . .. The owner of trade-mark, trade-name or service-mark used to abroad and it claims neither patent nor trademark protection for
distinguish his goods, business or services from the goods, business or that bottle shape and design
services of others shall have the right to register the same [on the principal it is a standard type of bottle called steinie
register], unless it: the shape was never registered as a trademark. Exhibit "C" is not a
xxx xxx xxx registration of a beer bottle design required under Rep. Act 165 but
(e) Consists of a mark or trade-name which, when applied to or used in the registration of the name and other marks of ownership
connection with the goods, business or services of the applicant is merely stamped on containers as required by Rep. Act 623
descriptive or deceptively misdescriptive of them, or when applied to or used
BPTTT: dismissed the opposition of petitioner and giving due course to petitioner had every opportunity to present ex-parte all of its evidence
private respondents application for the registration of the trademark to prove that its certificates of registration for the trademark CANON
CANON cover footwear
based on the records, the evidence presented by petitioner consisted The certificates of registration for the trademark CANON in other
of its certificates of registration for the mark CANON in various countries and in the Philippines as presented by petitioner, clearly
countries covering goods belonging to class 2 (paints, chemical showed that said certificates of registration cover goods belonging to
products, toner, and dye stuff) class 2 (paints, chemical products, toner, dyestuff).
Petitioner also submitted in evidence its Philippine Trademark BPTTT correctly ruled that since the certificate of registration of
Registration No. 39398, showing its ownership over the trademark petitioner for the trademark CANON covers class 2 (paints, chemical
CANON also under class 2 products, toner, dyestuff), private respondent can use the trademark
the trademark "CANON" as used by petitioner for its paints, chemical CANON for its goods classified as class 25 (sandals
products, toner, and dyestuff, can be used by private respondent for there is a world of difference between the paints, chemical products,
its sandals because the products of these two parties are dissimilar toner, and dyestuff of petitioner and the sandals of private respondent
petitioner appealed the decision of the BPTTT with Court of Appeals PETITIONER: TO ALLOW PRIVATE RESPONDENT TO REGISTER CANON FOR
FOOTWEAR IS TO PREVENT PETITIONER FROM USING CANON FOR VARIOUS
CA: affirmed the decision of BPTTT KINDS OF FOOTWEAR, WHEN IN FACT, PETITIONER HAS EARLIER USED SAID
MARK FOR SAID GOODS.
notwithstanding the dissimilarity of the products of the parties, the
PETITIONER: IS ENTITLED TO EXCLUSIVE USE OF THE MARK CANON trademark owner is entitled to protection when the use of by the junior
BECAUSE IT IS ITS TRADEMARK AND IS USED ALSO FOR FOOTWEAR. user "forestalls the normal expansion of his business"
the corporate name or tradename of petitioner is also used as its claims that it is possible that the public could presume that petitioner
trademark on diverse goods including footwear and other related would also produce a wide variety of footwear considering the diversity
products like shoe polisher and polishing agent of its products marketed worldwide
SUPREME COURT: denied the petition; upheld the decision of the CA and
BPTTT
PETITIONERS
after complying with what the law then required, the lower court
determined that there was probable cause for the issuance of a search
warrant, and which determination in fact led to the issuance and service
on December 14, 1987 of Search Warrant No. 87-053.
argued that any search warrant so issued in accordance with all
applicable legal requirements is valid, for the lower court could not
possibly have been expected to apply, as the basis for a finding of
probable cause for the issuance of a search warrant in copyright
infringement cases involving videograms, a pronouncement which was
not existent at the time of such determination, on December 14, 1987,
that is, the doctrine in the 20th Century Fox case that was promulgated
only on August 19, 1988, or over eight months later
it is unjust and unfair to require compliance with legal and/or doctrinal
requirements which are inexistent at the time they were supposed to
have been complied with.
This doctrine has never been overturned, and as a matter of fact it had been
enshrined in the Bill of Rights in our 1973 Constitution.
NDC does not dispute the fact that the "Doña" names had been
originally used by De la Rama, and according to the lower court De la
Rama had been using the "Doña" names even before the war, and that
said names have acquired goodwill and reputation.
Goodwill is protected by the law on unfair competition.
When a person has established a trade or business in which he has
used a name or device to designate his goods, he will be protected
in the use of the name or device.
“Such person has a right to complain when another adopts this
symbol or manner of making of his goods so as to mislead the
public into purchasing the same as and for the goods of the
complainant."
Any trade-mark or name which has become of a pecuniary value or
a business advantage, becomes a property right, and, as such, is
entitled to the protection afforded by the courts (American
Agricultural Chemical Co. v. Moore, 17 F (2d) 196, 199.)
In Ang v. Teodoro this Court said: The owner of a trade-mark or
trade-name has a property right in which he is entitled to
protection, since there is damage to him from confusion of
reputation or goodwill in the mind of the public as well as confusion
This operation having been performed, the cane, the end of which Supreme Court: the contempt with which the accused is charged has not
is attached to a fixed point, is given the shape of a hook or some been fully and satisfactorily proved, and the order appealed from should
other form by means of fire and pressure. Once the cane has been accordingly be affirmed in so far as it holds that the defendant is not guilty
shaped as desired, it is allowed to cool, and is then cleaned, of contempt
varnished, and ornamented at will.
The violation, if there has been any, was not of such a character that it
This industry requires skillful, handiwork, owing to the great risk could be made patent by the mere annunciation of the acts performed
engendered by the treatment of such fragile material as a light by the defendant, which are alleged to constitute the said violation
cane. On the other hand, however, it affords large profits to the These acts were not clearly and manifestly contrary to the precise
workman. terms of the prohibition
According to the express language of the judgment, the prohibition
NOTE. — The patent applied for shall be for the industrial product is against the manufacture of canes and umbrellas with curved
"cane handles for walking sticks and umbrellas, curved by means handles by means of the use of a cool or mineral oil-burning lamp
of a small lamp or blowpipe, fed by petroleum or mineral fuel."
or blowpipe and the parties have stipulated that the defendant did
Thereafter the plaintiff continued the use of the patented process, save The plaintiff does not and cannot claim a patent upon the particular
only for the substitutions of a lamp fed by alcohol for a lamp fed by lamp used by him.
petroleum or mineral oil The patent, however, gives him the exclusive right to the use of "la
new proceedings were instituted under the provisions of section 172 lamparilla o soplete, alimentada de petroleo o esencia mineral"
for the purpose of enforcing the original injunction above cited (the small lamp or blowpipe fed with petroleum or mineral oil) in
Substantially the same question is submitted in these new proceedings manufacturing curved handles for umbrellas and canes, to which
as that submitted in the former case reference is made in the above-cited descriptive statement and
Two fundamental facts which must be duly established:, annexed note.
o first, that alcohol is an equivalent or substitute, well known as "The small lamp or blowpipe" mentioned in the descriptive
such at the time when the patent was issued, for mineral oil or statement and annexed note which accompanied the application
petroleum, in connection with blast lamps or blowpipes such for the patent, evidently referred to the design of a blast lamp
as that which plaintiff uses in the patented process, and, which was attached thereto;
o second, that the use of a blast lamp or blowpipe fed with both plaintiff and defendant make use of a blast lamp substantially
petroleum or mineral oil, rather than one fed with alcohol, is similar, in principle and design, to that referred to in the descriptive
an unessential part of the patented process the use of which statement and the annexed note, for the exclusive use of which in
was prohibited by the said judgment. the manufacture of curved handles, plaintiff holds a patent
defendant's blast lamp is fed with alcohol, and its shape varies in
Issue: Whether or not the use of a patented process by a third person, unimportant details, for the purpose of accommodating the principle,
without license or authority therefor, constitutes an infringement when the by which the flame is secured, to the different physical and chemical
alleged infringer has substituted in lieu of some unessential part of the composition of the fuel used therein; but the principle on which it
patented process a well-known mechanical equivalent works, its mode of application, and its general design distinguish it in no
essential particular from that used by the plaintiff.
Proven at the trial:
that kerosene and alcohol blast lamps are agencies for producing Plaintiff invokes the doctrine of "mechanical equivalents" in support of his
and applying heat, well known throughout the world long prior to contention
1906, the date of the issue of the patent;
it is and for many years has been known that one may for all SC: doctrine is applicable to the facts in this case
ordinary purposes be used in the place of the other, and especially This doctrine is founded upon sound rules of reason and logic, and
for the purpose of applying heat in the manner described in the unless restrained or modified by law in particular jurisdiction, is of
patent; universal application
that the only consideration which determines the employment of the doctrine may properly be invoked to protect the patentee from
one in place of the other is the convenience of the user and the colorable invasions of his patent under the guise of substitution of some
question of relative cost; and part of his invention by some well known mechanical equivalent
that the principle upon which both lamps work is substantially a patent law which failed to recognize this doctrine would afford scant
identical, the only difference in construction being occasioned by protection to inventors, for it is difficult if not impossible to conceive an
A claim for the particular means and mode of operation described in the
specification extends, by operation of law, to the equivalent of such means
— not equivalent simply because the same result is thereby produced — but
equivalent as being substantially the same device in structure, arrangement
and mode of operation. (Burden vs. Corning, Fed. Cas., 2143. Gottfried vs.
Philip Best Brewing Co., Fed. Cas., 5633.)
All the elements of the invention in this case are old, and the rule in such
cases, as before explained, undoubtedly is that a purpose can not invoke the
doctrine of equivalents to suppress all other improvements of the old
machine, but he is entitled to treat everyone as an infringer who makes,
uses, or vends his patented improvement without any other change than
the employment of a substitute for one of its elements, well known as such
at the date of his invention, and which any constructor acquainted with the
Sec. 17. Grounds for cancellation. Any person, who believes that he is or will The passage of Republic Act No. 8293, otherwise known as the
be damaged by the registration of a mark or trade-name, may, upon the Intellectual Property Code of the Philippines, expanded the rights
payment of the prescribed fee, apply to cancel said registration upon any of accorded to an owner of a registered trademark. Sections 151 (2), 156,
the following grounds: and 161 thereof state:
(a) That the registered mark or trade-name becomes the common Section 151.2. Notwithstanding the foregoing provisions, the court or the
descriptive name of an article or substance on which the patent has expired; administrative agency vested with jurisdiction to hear and adjudicate any
action to enforce the rights to a registered mark shall likewise exercise
(b) That it has been abandoned; jurisdiction to determine whether the registration of said mark may be
cancelled in accordance with this Act. The filing of a suit to enforce the
(c) That the registration was obtained fraudulently or contrary to the registered mark with the proper court or agency shall exclude any other
provisions of section four, Chapter II hereof; court or agency from assuming jurisdiction over a subsequently filed petition
to cancel the same mark. On the other hand, the earlier filing of petition to
(d) That the registered mark or trade-name has been assigned, and is being cancel the mark with the Bureau of Legal Affairs {formerly BPTTT] shall not
used by, or with the permission of, the assignee, so as to misrepresent the constitute a prejudicial question that must be resolved before an action to
source of the goods, business or services in connection with which the mark enforce the rights to same registered mark may be decided. (Sec. 17, R.A.
or trade-name is used; or No. 166a)
(e) That cancellation is authorized by other provisions of this Act. Section 156. Actions, and Damages and Injunction for Infringement. 156.1
The owner of a registered mark may recover damages from any person who
Section 27 thereof states that the proper Regional Trial Court shall have infringes his rights, and the measure of the damages suffered shall be either
jurisdiction over the damage suits. the reasonable profit which the complaining party would have made, had
the Court clarified that while an administrative cancellation of a the defendant not infringed his rights, or the profit which the defendant
registered trademark, on any of the grounds under Section 17 of R.A. actually made out of the infringement, or in the event such measure of
No. 166, is within the ambit of the BPTTT, an action for infringement or damages cannot be readily ascertained with reasonable certainty, then the
any other incidental remedy sought is within the jurisdiction of the court may award as damages a reasonable percentage based upon the
ordinary courts. amount of gross sales of the defendant or the value of the services in
Surely, an application with BPTTT for an administrative cancellation connection with which the mark or trade name was used in the infringement
of a registered trade mark cannot per se have the effect of of the rights of the complaining party (Sec. 23, first par., R.A. No. 166a).
restraining or preventing the courts from the exercise of their
lawfully conferred jurisdiction.
Sections 155 (2), 156, and 163 of the said law further provide for the remedy
of an owner of a registered mark to institute an action for infringement or
damages against a person or entity that may reproduce, counterfeit, copy or
colorably imitate a registered mark or a dominant feature thereof and apply
such reproduction, counterfeit, copy or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements intended to be
used in commerce upon or in connection with the sale, offering for sale,
distribution, or advertising of goods or services on or in connection with
which such use is likely to cause confusion, or to cause mistake, or to deceive.
Section 7. Effect of filing of a suit before the Bureau or with the proper court.
The filing of a suit to enforce the registered mark with the proper court or
Bureau shall exclude any other court or agency from assuming jurisdiction
over a subsequently filed petition to cancel the same mark. On the other
hand, the earlier filing of petition to cancel the mark with the Bureau shall
In either case, he shall forward the records of the case to the provincial or [T]he essence of copyright infringement is the copying, in whole or in part,
city fiscal or chief state prosecutor within five (5) days from his resolution. of copyrightable materials as defined and enumerated in Section 2 of PD. No.
The latter shall take appropriate action thereon ten (10) days from receipt
49. Apart from the manner in which it is actually expressed, however, the
thereof, immediately informing the parties of said action.
idea of a dating game show is, in the opinion of this Office, a non-
No complaint or information may be filed or dismissed by an investigating copyrightable material. Ideas, concepts, formats, or schemes in their
fiscal without the prior written authority or approval of the provincial or city abstract form clearly do not fall within the class of works or materials
fiscal or chief state prosecutor. susceptible of copyright registration as provided in PD. No. 49.
Where the investigating assistant fiscal recommends the dismissal of the COURT: It is indeed true that the question whether the format or mechanics
case but his findings are reversed by the provincial or city fiscal or chief of petitioners television show is entitled to copyright protection is a legal
state prosecutor on the ground that a probable cause exists, the latter may, question for the court to make. This does not, however, preclude
by himself, file the corresponding information against the respondent or respondent Secretary of Justice from making a preliminary determination of
direct any other assistant fiscal or state prosecutor to do so, without this question in resolving whether there is probable cause for filing the case
conducting another preliminary investigation. in court. In doing so in this case, he did not commit any grave error.
The presentation of the master tapes of the copyrighted films from which
the pirated films were allegedly copied, was necessary for the validity of
search warrants against those who have in their possession the pirated
films. The petitioner's argument to the effect that the presentation of the
master tapes at the time of application may not be necessary as these
would be merely evidentiary in nature and not determinative of whether or
not a probable cause exists to justify the issuance of the search warrants
is not meritorious. The court cannot presume that duplicate or copied tapes
were necessarily reproduced from master tapes that it owns.
The application for search warrants was directed against video tape outlets
which allegedly were engaged in the unauthorized sale and renting out of
copyrighted films belonging to the petitioner pursuant to P.D. 49.
This ruling was qualified in the later case of Columbia Pictures, Inc. v. Court
of Appeals 7 in which it was held:
Cinematographic works and works produced by a process analogous to Further, BJPI should have presented the master videotape of the show in
cinematography or any process for making audio-visual recordings; order to show the linkage between the copyright show (Rhoda and Me) and
the infringing show (It’s a Date). This is based on the ruling in 20th Century
The copyright does not extend to the general concept or format of its dating Fox vs CA (though this has been qualified by Columbia Pictures vs CA, this is
game show. Accordingly, by the very nature of the subject of petitioner still good law). Though BJPI did provide a lot of written evidence and
BJPI's copyright, the investigating prosecutor should have the opportunity description to show the linkage between the shows, the same were not
to compare the videotapes of the two shows. enough. A television show includes more than mere words can describe
because it involves a whole spectrum of visuals and effects, video and audio,
Mere description by words of the general format of the two dating game such that no similarity or dissimilarity may be found by merely describing the
shows is insufficient; the presentation of the master videotape in evidence general copyright/format of both dating game shows.
was indispensable to the determination of the existence of probable cause.
As aptly observed by respondent Secretary of Justice:
Petition is DISMISSED.
It is argued that the law construed as we have construed it goes beyond the
power conferred upon Congress by the Constitution, to secure to authors
for a limited time the exclusive right to their writings. Art. I, § 8, cl. 8. It is
suggested that to extend the copyright to a case like this is to extend it to
the ideas as distinguished from the words in which those ideas are clothed.
But there is no attempt to make a monopoly of the ideas expressed. The law
confines itself to a particular, cognate and well known form of reproduction.
If to that extent a grant of monopoly is thought a proper way to secure the
right to the writings this court cannot say that Congress was wrong.
Ruling: Yes.
To establish trademark infringement, the following elements must be
Petitioner’s cause of action: first part of Section 22, i.e. respondents
shown:
allegedly used, without petitioners consent, a colorable imitation of the Big
(1) the validity of plaintiffs mark;
Mac mark in advertising and selling respondents hamburger sandwiches.
(2) the plaintiffs ownership of the mark; and
This likely caused confusion in the mind of the purchasing public on the
(3) the use of the mark or its colorable imitation by the alleged infringer
source of the hamburgers or the identity of the business.
results in likelihood of confusion.
Of these, it is the element of likelihood of confusion that is the
gravamen of trademark infringement.
Validity of the “Big Mac” Mark and McDonalds Ownership of such Mark
Respondents contention: that of the two words in the Big Mac mark, it is
only the word Mac that is valid because the word Big is generic and
Respondent
- assert that their Big Mak hamburgers cater mainly to the low-income
group while petitioners Big Mac hamburgers cater to the middle and
upper income groups.
Meanwhile the girl's father, also a widower, who lives in California, and is as intense
in his own religious antagonism as the Jew, has been called to New York,
supposing that his daughter is to marry an Irishman and a Catholic. Accompanied
by a priest, he arrives at the house at the moment when the marriage is being
celebrated, but too late to prevent it, and the two fathers, each infuriated by the
proposed union of his child to a heretic, fall into unseemly and grotesque antics.
The priest and the rabbi become friendly, exchange trite sentiments about religion,
and agree that the match is good. Apparently out of abundant caution, the priest
celebrates the marriage for a third time, while the girl's father is inveigled away.
The second act closes with each father, still outraged, seeking to find some way by
which the union, thus trebly insured, may be dissolved.
The last act takes place about a year later, the young couple having meanwhile
been abjured by each father, and left to their own resources. They have had twins,
a boy and a girl, but their fathers know no more than that a child has been born. At
Christmas each, led by his craving to see his grandchild, goes separately to the
young folks' home, where they encounter each other, each laden with gifts, one for
a boy, the other for a girl. After some slapstick comedy, depending upon the
insistence of each that he is right about the sex of the grandchild, they become
reconciled when they learn the truth, and that each child is to bear the given name
of a grandparent. The curtain falls as the fathers are exchanging amenities, and
the Jew giving evidence of an abatement in the strictness of his orthodoxy.
THE ANDRESONS GROUP, INC Respondents sued petitioners in the RTC for trademark and tradename
- domestic corporation infringement and unfair competition
- has been Gallo Winerys exclusive wine importer and distributor in the
Philippines since 1991, selling these products in its own name and for RESPONDENTS’ CLAIM
its own account - GALLO wine trademark was registered in the Philippines in 1971;
- they first introduced and sold the GALLO and ERNEST & JULIO GALLO
Gallo Winerys GALLO wine trademark was registered in the principal wines in the Philippines circa 1974 within the then U.S. military facilities
register of the Philippine Patent Office on November 16, 1971 which only;
was renewed on November 16, 1991 for another 20 years. - by 1979, they had expanded their Philippine market through authorized
Gallo Winery also applied for registration of its ERNEST & JULIO GALLO distributors and independent outlets
wine trademark on October 11, 1990 but the records do not disclose if - they first learned about the existence of GALLO cigarettes in the latter
it was ever approved by the Director of Patents. part of 1992 when an Andresons employee saw such cigarettes on
display with GALLO wines in a Davao supermarket wine cellar section
MIGHTY CORPORATION AND LA CAMPANA AND THEIR SISTER COMPANY, - sent a demand letter to petitioners asking them to stop using the GALLO
TOBACCO INDUSTRIES OF THE PHILIPPINES (TOBACCO INDUSTRIES) trademark, to no avail
- engaged in the cultivation, manufacture, distribution and sale of - petitioners with violated Article 6bis of the Paris Convention for the
tobacco products for which they have been using the GALLO cigarette Protection of Industrial Property (Paris Convention) and RA 166
trademark since 1973 (Trademark Law)
- petitioners adopted the GALLO trademark to ride on Gallo Winerys
Bureau of Internal Revenue (BIR) approved Tobacco Industries use of GALLO and ERNEST & JULIO GALLO trademarks established reputation
GALLO 100s cigarette mark on September 14, 1973 and GALLO filter and popularity, thus causing confusion, deception and mistake on the
cigarette mark on March 26, 1976, both for the manufacture and sale part of the purchasing public who had always associated GALLO and
of its cigarette products. ERNEST & JULIO GALLO trademarks with Gallo Winerys wines
February 1974, Tobacco Industries applied for, but eventually did not
pursue, the registration of the GALLO cigarette trademark in the PETITIONER’S ANSWER:
principal register of the then Philippine Patent Office.
SUPREME COURT: reversed and set aside the decision of the CA; dismissed
the complaint of the respondent
916*916 Donald B. Verrilli, Jr., argued the cause for petitioners. With him on I
the briefs for the motion picture studio and recording company petitioners
A
were Ian Heath Gershengorn, 917*917 William M. Hohengarten, Steven B.
Fabrizio, Thomas J. Perrelli, Matthew J. Oppenheim, David E. Kendall, Respondents, Grokster, Ltd., and StreamCast Networks, Inc., defendants in
Thomas G. Hentoff, Kenneth W. Starr, Russell J. Frackman, George M. the trial court, distribute free software products that allow computer users
Borkowski, Robert M. Schwartz, Gregory P. Goeckner, Dean C. Garfield, to share electronic files through peer-to-peer networks, so called because
Elaine J. Goldenberg, Matthew Hersh, Steven M. Marks, and Stanley Pierre- users' computers communicate directly with each other, not through
Louis. Carey R. Ramos, Peter L. Felcher, Aidan Synnott, Theodore K. Cheng, 920*920 central servers. The advantage of peer-to-peer networks over
Kelli L. Sager, Andrew J. Thomas, Jeffrey H. Blum, and Jeffrey L. Fisher filed information networks of other types shows up in their substantial and
briefs for the songwriter and music publisher petitioners. growing popularity. Because they need no central computer server to
mediate the exchange of information or files among users, the high-
bandwidth communications capacity for a server may be dispensed with,
Acting Solicitor General Clement argued the cause for the United States as and the need for costly server storage space is eliminated. Since copies of a
amicus curiae urging reversal. With him on the brief were Assistant Attorney file (particularly a popular one) are available on many users' computers, file
General Keisler, Deputy Solicitor General Hungar, Douglas H. Hallward- requests and retrievals may be faster than on other types of networks, and
Driemeier, Anthony A. Yang, David O. Carson, and John M. Whealan. since file exchanges do not travel through a server, communications can
take place between any computers that remain connected to the network
without risk that a glitch in the server will disable the network in its entirety.
Richard G. Taranto argued the cause for respondents. With him on the brief Given these benefits in security, cost, and efficiency, peer-to-peer networks
were H. Bartow Farr III, Cindy A. Cohn, Fred Von Lohmann, Michael H. Page, are employed to store and distribute electronic files by universities,
Mark A. Lemley, Charles S. Baker, and Matthew A. Neco.[*] government agencies, corporations, and libraries, among others.[1]
Discovery during the litigation revealed the way the software worked, the
business aims of each defendant company, and the predilections of the
Although Grokster and StreamCast do not therefore know when particular
users. Grokster's eponymous software employs what is known as FastTrack
files are copied, a few searches using their software would show what is
technology, a protocol developed by others and licensed to Grokster.
available on the networks the software reaches. MGM commissioned a
StreamCast distributes a very similar product except that its software, called
statistician to conduct a systematic search, and his study showed that nearly
Morpheus, relies on what is known as Gnutella technology.[3] A user who
90% of the files available for download on the FastTrack system were
downloads and installs either software possesses the protocol to send
copyrighted works.[5] Grokster and StreamCast dispute this figure, raising
requests for files directly to the computers of others using software
methodological problems and arguing that free copying even of copyrighted
compatible with FastTrack or Gnutella. On the FastTrack network opened by
works may be authorized by the rightholders. They also argue that potential
the Grokster software, the user's request goes to a computer given an
noninfringing uses of their software are significant in kind, even if infrequent
indexing capacity by the software and designated a supernode, or to some
in practice. Some musical performers, for example, have gained new
other computer with comparable power and capacity to collect temporary
audiences by distributing 923*923 their copyrighted works for free across
indexes of the files available on the computers of users connected to it. The
peer-to-peer networks, and some distributors of unprotected content have
supernode (or indexing computer) searches its own index and may
used peer-to-peer networks to disseminate files, Shakespeare being an
communicate the search request to other supernodes. If the file is found,
example. Indeed, StreamCast has given Morpheus users the opportunity to
the supernode discloses its location to the computer requesting it, and the
download the briefs in this very case, though their popularity has not been
requesting user can download the file directly from the computer located.
quantified.
The copied file is placed in a designated sharing folder on the requesting
user's computer, where it is available for other users to download in turn,
along with any other file in that folder.
We agree with MGM that the Court of Appeals misapplied Sony, which it
In sum, where an article is "good for nothing else" but infringement, Canda read as limiting secondary liability quite beyond the circumstances to which
v. Michigan Malleable Iron Co., supra, at 489, there is no legitimate public the case applied. Sony barred secondary liability based on presuming or
interest in its unlicensed availability, and there is no injustice in presuming imputing intent to cause infringement solely from the design or distribution
or imputing an intent to infringe, see Henry v. A. B. Dick Co., 224 U. S. 1, 48 of a product capable of substantial lawful use, which the distributor knows
(1912), overruled on other grounds, Motion Picture Patents Co. v. Universal is in fact used for infringement. The 934*934 Ninth Circuit has read Sony's
Film Mfg. Co., 243 U. S. 502 (1917). Conversely, the doctrine absolves the limitation to mean that whenever a product is capable of substantial lawful
equivocal conduct of selling an item with substantial lawful as well as use, the producer can never be held contributorily liable for third parties'
unlawful uses, and limits liability to instances of more acute 933*933 fault infringing use of it; it read the rule as being this broad, even when an actual
than the mere understanding that some of one's products will be misused. purpose to cause infringing use is shown by evidence independent of design
It leaves breathing room for innovation and a vigorous commerce. See Sony and distribution of the product, unless the distributors had "specific
Corp. v. Universal City Studios, 464 U. S., at 442; Dawson Chemical Co. v. knowledge of infringement at a time at which they contributed to the
Rohm & Haas Co., 448 U. S. 176, 221 (1980); Henry v. A. B. Dick Co., supra, infringement, and failed to act upon that information." 380 F. 3d, at 1162
at 48. (internal quotation marks and brackets omitted). Because the Circuit found
the StreamCast and Grokster software capable of substantial lawful use, it
concluded on the basis of its reading of Sony that neither company could be
The parties and many of the amici in this case think the key to resolving it is held liable, since there was no showing that their software, being without
the Sony rule and, in particular, what it means for a product to be "capable any central server, afforded them knowledge of specific unlawful uses.
C
936*936 The rule on inducement of infringement as developed in the early
Sony's rule limits imputing culpable intent as a matter of law from the cases is no different today.[11] Evidence of "active steps . . . taken to
characteristics or uses of a distributed product. But nothing in Sony requires encourage direct infringement," Oak Industries, Inc. v. Zenith Electronics
courts to ignore evidence of intent if there is such evidence, and the case Corp., 697 F. Supp. 988, 992 (ND Ill. 1988), such as advertising an infringing
was never meant to foreclose rules of fault-based liability derived from use or instructing how to engage in an infringing use, show an affirmative
935*935 the common law.[10] Sony Corp. v. Universal City Studios, supra, intent that the product be used to infringe, and a showing that infringement
at 439 ("If vicarious liability is to be imposed on Sony in this case, it must was encouraged overcomes the law's reluctance to find liability when a
rest on the fact that it has sold equipment with constructive knowledge" of defendant merely sells a commercial product suitable for some lawful use,
the potential for infringement). Thus, where evidence goes beyond a see, e. g., Water Technologies Corp. v. Calco, Ltd., 850 F. 2d 660, 668 (CA
product's characteristics or the knowledge that it may be put to infringing Fed. 1988) (liability for inducement where one "actively and knowingly aid[s]
uses, and shows statements or actions directed to promoting infringement, and abet[s] another's direct infringement" (emphasis deleted)); Fromberg,
Sony's staple-article rule will not preclude liability. Inc. v. Thornhill, 315 F. 2d 407, 412-413 (CA5 1963) (demonstrations by sales
staff of infringing uses supported liability for inducement); Haworth Inc. v.
Herman Miller Inc., 37 USPQ 2d 1080, 1090 (WD Mich. 1994) (evidence that
defendant "demonstrate[d] and recommend[ed] infringing configurations"
The classic case of direct evidence of unlawful purpose occurs when one
of its product could support inducement liability); Sims v. Mack Trucks, Inc.,
induces commission of infringement by another, or "entic[es] or persuad[es]
459 F. Supp. 1198, 1215 (ED Pa. 1978) (finding inducement where the use
another" to infringe, Black's Law Dictionary 790 (8th ed. 2004), as by
"depicted by the defendant in its promotional film and brochures infringes
advertising. Thus at common law a copyright or patent defendant who "not
the . . . patent"), overruled on other grounds, 608 F. 2d 87 (CA3 1979). Cf.
only expected but invoked [infringing use] by advertisement" was liable for
W. Keeton, D. Dobbs, R. Keeton, & D. Owen, Prosser and Keeton on Law of
In Sony, 464 U. S. 417, the Court considered Sony's liability for selling the
It is so ordered. Betamax videocassette recorder. It did so enlightened by a full trial record.
Drawing an analogy to the staple article of commerce doctrine from patent
law, 943*943 the Sony Court observed that the "sale of an article . . .
942*942 JUSTICE GINSBURG, with whom THE CHIEF JUSTICE and JUSTICE adapted to [a patent] infringing use" does not suffice "to make the seller a
KENNEDY join, concurring. contributory infringer" if the article "is also adapted to other and lawful
uses." Id., at 441 (quoting Henry v. A. B. Dick Co., 224 U. S. 1, 48 (1912),
overruled on other grounds, Motion Picture Patents Co. v. Universal Film
I concur in the Court's decision, which vacates in full the judgment of the Mfg. Co., 243 U. S. 502, 517 (1917)).
Court of Appeals for the Ninth Circuit, ante, at 941, and write separately to
clarify why I conclude that the Court of Appeals misperceived, and hence
misapplied, our holding in Sony Corp. of America v. Universal City Studios, "The staple article of commerce doctrine" applied to copyright, the Court
Inc., 464 U. S. 417 (1984). There is here at least a "genuine issue as to [a] stated, "must strike a balance between a copyright holder's legitimate
The Ninth Circuit went astray, I will endeavor to explain, when that court
granted summary judgment to Grokster and StreamCast on the charge of 946*946 The District Court declared it "undisputed that there are
contributory liability based on distribution of their software products. substantial noninfringing uses for Defendants' software," thus obviating the
Relying on its earlier opinion in A&M Records, Inc. v. Napster, Inc., 239 F. 3d need for further proceedings. 259 F. Supp. 2d, at 1035. This conclusion
1004 (CA9 2001), the Court of Appeals held that "if substantial noninfringing appears to rest almost entirely on the collection of declarations submitted
use was shown, the copyright owner would be required to show that the by Grokster and StreamCast. Ibid. Review of these declarations reveals
defendant had reasonable knowledge of specific infringing files." 380 F. 3d mostly anecdotal evidence, sometimes obtained secondhand, of authorized
1154, 1161 (CA9 2004). "A careful examination of the record," the 945*945 copyrighted works or public domain works available online and shared
court concluded, "indicates that there is no genuine issue of material fact as through peer-to-peer networks, and general statements about the benefits
B C
The second, more difficult, question is whether a modified Sony rule (or a The third question—whether a positive copyright impact would outweigh
strict interpretation) would significantly weaken the law's ability to protect any technology-related loss—I find the most difficult of the three. I do not
new technology. JUSTICE GINSBURG'S approach would require defendants doubt that a more intrusive Sony test would generally provide greater
to produce considerably more concrete evidence—more than was revenue security for copyright holders. But it is harder to conclude that the
presented here—to earn Sony's shelter. That heavier evidentiary demand, gains on the copyright swings would exceed the losses on the technology
and especially the more dramatic (case-by-case balancing) modifications roundabouts.
that MGM and the Government seek, would, I believe, undercut the
protection that Sony now offers.
For one thing, the law disfavors equating the two different kinds of gain and
loss; rather, it leans in favor of protecting technology. As Sony itself makes
To require defendants to provide, for example, detailed evidence—say, clear, the producer of a technology which permits unlawful copying does
business plans, profitability estimates, projected technological not himself engage in unlawful copying—a fact that makes the attachment
modifications, and so forth—would doubtless make life easier for copyright of copyright liability to the creation, production, or distribution of the
holder plaintiffs. But it would simultaneously increase the legal uncertainty technology an exceptional thing. See 464 U. S., at 431 (courts "must be
that surrounds the creation or development of a new technology capable of circumspect" in construing the copyright laws to preclude distribution of
being put to infringing uses. Inventors and entrepreneurs (in the garage, the new technologies). Moreover, Sony has been the law for some time. And
dorm room, the corporate lab, or the boardroom) would have to fear (and that fact imposes a serious burden upon copyright holders like MGM to
in many cases endure) costly and extensive trials when they create, produce, show a need for change in the current rules of the game, including a more
or distribute the sort of information technology that can be used for strict interpretation of the test. See, e. g., Brief for Motion Picture Studio
copyright infringement. They would often be left guessing as to how a court, and Recording Company Petitioners 31 (Sony should not protect products
upon later review of the product and its uses, would decide when when the "primary or principal" use is infringing).
necessarily rough estimates amounted to sufficient evidence. They would
have no way to predict how courts would weigh the respective 960*960
values of infringing and noninfringing uses; determine the efficiency and In any event, the evidence now available does not, in my view, make out a
advisability of technological changes; or assess a product's potential future sufficiently strong case for change. To say 961*961 this is not to doubt the
markets. The price of a wrong guess—even if it involves a good-faith effort basic need to protect copyrighted material from infringement. The
to assess technical and commercial viability—could be large statutory Constitution itself stresses the vital role that copyright plays in advancing
damages (not less than $750 and up to $30,000 per infringed work). 17 U. S. the "useful Arts." Art. I, § 8, cl. 8. No one disputes that "reward to the author
or artist serves to induce release to the public of the products of his creative
Unauthorized copying likely diminishes industry revenue, though it is not More importantly, copyright holders at least potentially have other tools
clear by how much. Compare S. Liebowitz, Will MP3 Downloads Annihilate available to reduce piracy and to abate whatever threat it poses to creative
the Record Industry? The Evidence So Far 2 (June 2003), production. As today's opinion makes clear, a copyright holder may proceed
http://www.utdallas.edu/ ~liebowit/intprop/records.pdf (all Internet against 963*963 a technology provider where a provable specific intent to
materials as visited June 24, 2005, and available in Clerk of Court's case file) infringe (of the kind the Court describes) is present. Ante, at 941. Services
962*962 (file sharing has caused a decline in music sales), and Press Release, like Grokster may well be liable under an inducement theory.
Informa Telecoms & Media, Steady Download Growth Defies P2P (Dec. 6,
2004), http://www.informatm.com (citing Informa Media Group Report,
Music on the Internet (5th ed. 2004)) (estimating total lost sales to the music In addition, a copyright holder has always had the legal authority to bring a
industry in the range of $2 billion annually), with F. Oberholzer & K. Strumpf, traditional infringement suit against one who wrongfully copies. Indeed,
The Effect of File Sharing on Record Sales: An Empirical Analysis 24 (Mar. since September 2003, the Recording Industry Association of America (RIAA)
2004), www.unc.edu/ñcigar/papers/FileSharing_March2004.pdf (academic has filed "thousands of suits against people for sharing copyrighted
study concluding that "file sharing has no statistically significant effect on
964*964 Further, copyright holders may develop new technological devices 965*965 Thus, lawful music downloading services—those that charge the
that will help curb unlawful infringement. Some new technology, called customer for downloading music and pay royalties to the copyright holder—
"digital `watermarking'" and "digital fingerprint[ing]," can encode within the have continued to grow and to produce substantial revenue. See Brief for
file information about the author and the copyright scope and date, which Internet Law Faculty as Amicus Curiae 5-20; Bruno, Digital Entertainment:
"fingerprints" can help to expose infringers. RIAA Reveals Method to Piracy Fight Shows Encouraging Signs (Mar. 5, 2005), available at LEXIS,
Madness, Wired News (Aug. 28, 2003), http:// News Library, Billboard File (in 2004, consumers worldwide purchased more
www.wired.com/news/digiwood/0,1412,60222,00.html; Besek, Anti- than 10 times the number of digital tracks purchased in 2003; global digital
Circumvention Laws and Copyright: A Report from the Kernochan Center for music market of $330 million in 2004 expected to double in 2005); Press
Law, Media and the Arts, 27 Colum. J. L. & Arts 385, 391, 451 (2004). Other Release, Informa Telecoms & Media, Steady Download Growth Defies P2P
technology can, through encryption, potentially restrict users' ability to (global digital revenues will likely exceed $3 billion in 2010); Ashton,
Briefs of amici curiae were filed for the American Intellectual Property Law [3] Subsequent versions of Morpheus, released after the record was made
Association by Rick D. Nydegger and Melvin C. Garner; for Audible Magic in this case, apparently rely not on Gnutella but on a technology called
Corp. et al. by Bruce V. Spiva and Jeremy H. Stern; for Bridgemar Services, Neonet. These developments are not before us.
Ltd. d/b/a iMesh.com by Jeffrey A. Kimmel; for the Business Software
Alliance by E. Edward Bruce and Robert A. Long, Jr.; for Creative Commons
by Lawrence Lessig; for the Digital Media Association et al. by Lawrence
Held. Yes. The appeals court stated that since these distributors did not have
actual knowledge, did not partake in, or monitor the file sharing they are
not directly liable for the infringement. However the court erred in finding
they were not secondarily liable for the actions of the users of its products.
There is a balance between growing technologies and copyright protection,
but to not make distributors liable will make copyright protections
meaningless. The lower court looked to the commerce doctrine now
codified which states that a product must be capable of commercially
significant noninfridging uses and if so, no secondary liability would follow.
This court finds that interpretation too narrow. Here this court considers the
doctrine of inducement to also be relevant. When a distributor promotes
using its device to infringe copyright material, shown by affirmative steps to
foster infringement this is inducement and the distributor will be liable for
3rd party infringement. All the actions of the companies is enough to show
a genuine issue of material fact, thus the court reversed the summary
judgment ruling and remanded the case upon those findings.
Dissent. Justice Breyer states this case is no different from Sony where time-
shifting was the main purpose of users copying shows by VCRS (so they could
this case is significantly different from Sony and reliance on that case
to rule in favor of StreamCast and Grokster was error
→ Sony dealt with a claim of liability based solely on distributing a
product with alternative lawful and unlawful uses, with knowledge
that some users would follow the unlawful course.
→ The case struck a balance between the interests of protection and
innovation by holding that the product's capability of substantial
lawful employment should bar the imputation of fault and
consequent secondary liability for the unlawful acts of others.
MGM's evidence in this case addresses a different basis of liability for
distributing a product open to alternative uses.
→ The evidence of the distributors' words and deeds going beyond
distribution as such shows a purpose to cause and profit from
third-party acts of copyright infringement.
Petitioners argue that the respondent's use of the "Shangri-La" mark and R.A. No. 166, as amended, provides:
"S" logo was in evident bad faith and cannot therefore ripen into ownership,
much less registration. Section 2. What are registrable. - Trademarks, trade names and service
marks owned by persons, corporations, partnerships or associations
it is ludicrous to believe that the parties would come up with the exact domiciled in the Philippines and by persons, corporations, partnerships or
same lettering for the word "Shangri-La" and the exact same logo to associations domiciled in any foreign country may be registered in
boot. accordance with the provisions of this Act: Provided, That said trademarks
When a trademark copycat adopts the word portion of another's trade names, or service marks are actually in use in commerce and services
trademark as his own, there may still be some doubt that the not less than two months in the Philippines before the time the applications
adoption is intentional. for registration are filed: And provided, further, That the country of which
But if he copies not only the word but also the word's exact font the applicant for registration is a citizen grants by law substantially similar
and lettering style and in addition, he copies also the logo portion privileges to citizens of the Philippines, and such fact is officially certified,
of the trademark, the slightest doubt vanishes. It is then replaced with a certified true copy of the foreign law translated into the English
by the certainty that the adoption was deliberate, malicious and in language, by the government of the foreign country to the Government of
bad faith. the Republic of the Philippines.
It is truly difficult to understand why, of the millions of terms and
combination of letters and designs available, the respondent had Section 2-A. Ownership of trademarks, trade names and service marks; how
to choose exactly the same mark and logo as that of the petitioners, acquired. - Anyone who lawfully produces or deals in merchandise of any
if there was no intent to take advantage of the goodwill of kind or who engages in any lawful business, or who renders any lawful
petitioners' mark and logo. service in commerce, by actual use thereof in manufacture or trade, in
One who has imitated the trademark of another cannot bring an action business, and in the service rendered, may appropriate to his exclusive use a
for infringement, particularly against the true owner of the mark, trademark, a trade name, or a service mark not so appropriated by another,
because he would be coming to court with unclean hands. to distinguish his merchandise, business or service from the merchandise,
Good faith is required in order to ensure that a second user may not business or services of others. The ownership or possession of a trademark,
merely take advantage of the goodwill established by the true owner. trade name, service mark, heretofore or hereafter appropriated, as in this
the aforequoted clause did not expressly repeal R.A. No. 166 in its
entirety, otherwise, it would not have used the phrases parts of Acts
Under Section 170 of R.A. No. 8293, which took effect on January 1, and inconsistent herewith; and it would have simply stated Republic Act
1998, the criminal penalty for infringement of registered marks, unfair No. 165, as amended; Republic Act No. 166, as amended; and Articles
competition, false designation of origin and false description or 188 and 189 of the Revised Penal Code; Presidential Decree No. 49,
representation, is imprisonment from 2 to 5 years and a fine ranging including Presidential Decree No. 285, as amended are hereby
from Fifty Thousand Pesos to Two Hundred Thousand Pesos, to wit: SEC. repealed.
170. Penalties. Independent of the civil and administrative sanctions The use of the phrases parts of Acts and inconsistent herewith only
imposed by law, a criminal penalty of imprisonment from two (2) years means that the repeal pertains only to provisions which are
IPP-BLA (Intellectual Property Philippines Bureau of Legal Affairs) Director: ISSUE: Whether or not the mark applied for by petitioner is identical or
denied the opposition filed by PHILIPS (respondent); Application filed by confusingly similar with that of respondent.
Wilton Dy and/or Philites Electronic & Lighting Products (petitioner) is
granted KONINKLIJKE PHILIPS ELECTRONICS, N.V.
assuming respondent's mark was well-known in the Philippines, there opposes petitioner's application on the ground that PHILITES'
should have been prior determination of whether or not the mark registration will mislead the public over an identical or confusingly
under application for registration was "identical with, or confusingly similar mark of PHILIPS, which is registered and internationally well-
similar to, or constitutes a translation of such well-known mark in order known mark
that the owner of the well-known mark can prevent its registration respondent invokes the provisions of Section 123
concluded that the PHILIPS and PHILITES marks were so unlike, both
visually and aurally. It held that no confusion was likely to occur, despite SUPREME COURT: affirmed the decision of the CA
their contemporaneous use Respondent's mark is a registered and well-known mark in the
Philippines
Dominancy test
- focuses on "the similarity of the prevalent or dominant
features of the competing trademarks that might cause
confusion, mistake, and deception in the mind of the
purchasing public.
- Duplication or imitation is not necessary; neither is it
required that the mark sought to be registered suggests an
effort to imitate.
- Given more consideration are the aural and visual
impressions created by the marks on the buyers of goods,
giving little weight to factors like prices, quality, sales outlets,
and market segments.
Value of Patented Value of Other (b) Any termination of this license as provided for above shall not in
any way operate to deny [petitioner] its rights or remedies, either at laws
Substance Active Ingredients [sic] or equity, or relieve [private respondent] of the payment of royalties or
satisfaction of other obligations incurred prior to the effective date of such
4. The royalties shall be computed after the end of each calendar termination; and
quarter to all goods containing the patented substance herein involved,
made and sold during the precedent quarter and to be paid by [private (c) Notice of termination of this license shall be filed with the Bureau
respondent] at its place of business on or before the thirtieth day of the of Patents, Trademarks and Technology Transfer.
month following the end of each calendar quarter. Payments should be
made to [petitioner's] authorized representative in the Philippines; 9. In case of dispute as to the enforcement of the provisions of this
license, the matter shall be submitted for arbitration before the Director of
5. [Private respondent] shall keep records in sufficient detail to Bureau of Patents, Trademarks and Technology Transfer or any ranking
enable [petitioner] to determine the royalties payable and shall further official of the Bureau of Patents, Trademarks and Technology Transfer duly
permit its books and records to be examined from time to time at [private delegated by him.
respondent's] premises during office hours, to the extent necessary to be
made at the expense of [petitioner] by a certified public accountant 10. This License shall inure to the benefit of each of the parties herein,
appointed by [petitioner] and acceptable to [private respondent]. to the subsidiaries and assigns of [petitioner] and to the successors and
assigns of [private respondent]; and
6. [Private respondent] shall adopt and use its own trademark or
labels on all its products containing the patented substance herein involved; 11. This license take [sic] effect immediately.
Section A (2) of Article 5 above unequivocally and explicitly (c) If, by reason of refusal of the patentee to grant a license or licenses
respects the right of member countries to adopt legislative on reasonable terms, or by reason of the conditions attached by the
measures to provide for the grant of compulsory licenses to patentee to licensee or to the purchase, lease or use of the patented article
prevent abuses which might result from the exercise of the or working of the patented process or machine for production, the
exclusive rights conferred by the patent. establishment of any new trade or industry in the Philippines is prevented,
Section 34 of R.A. No. 165, even if the Act was enacted prior to or the trade or industry therein is unduly restrained;
the Philippines' adhesion to the Convention, fits well within
the aforequoted provisions of Article 5 of the Paris Convention (d) If the working of the invention within the country is being
prevented or hindered by the importation of the patented article; or
In the explanatory note of Bill No. 1156 which eventually became R.A.
No. 165, the legislative intent in the grant of a compulsory license was (e) If the patented invention or article relates to food or medicine or
not only to afford others an opportunity to provide the public with the manufactured products or substances which can be used as food or
quantity of the patented product, but also to prevent the growth of medicine, or is necessary for public health or public safety.
monopolies.
(2) In any of the above cases, a compulsory license shall be granted to
the petitioner provided that he has proved his capability to work the
IV. THE HON. COURT OF APPEALS ERRED IN NOT HOLDING THE BPTTT'S
ACTION WAS RENDERED NULL AND VOID FOR FAILURE OF PRIVATE
RESPONDENT TO AFFIRMATIVELY PROVE THE JURISDICTIONAL FACT OF
PUBLICATION AS REQUIRED BY LAW.
Supreme Court: petitioner can no longer assail the jurisdiction of the BPTTT
as it was raised only for the first time on appeal
- where the issue of jurisdiction is raised for the first time on appeal, the
party invoking it is so barred on the ground of laches or estoppel under
the circumstances therein stated. It is now settled that this rule applies
with equal force to quasi-judicial bodies such as the BPTTT. Here,
petitioner have not furnished any cogent reason to depart from this
rule.
xxx
as to the alleged lack of jurisdiction of the BPTTT over the petition filed
by private respondent for failure to comply with the publication
requirement under Section 35-F of R.A. No. 165
the petitioner is estopped from questioning the same since it did
not raise the issue of lack of jurisdiction at the earliest possible
opportunity, i.e., during the hearings before the BPTTT
petitioner raised this contention for the first time when it appealed
the case to the appellate court.
WHEREFORE, the petition is hereby DENIED for lack of merit and the
Decision of the Court of Appeals is hereby AFFIRMED.