Wigberto e. Taada, et al. Vs. Edgardo angara, et al.

G.R. No. 118295

May 2, 1997

Facts

To hasten worldwide recovery from the devastation wrought by the Second World War, plans for
the establishment of three multilateral institutions inspired by that grand political body, the
UNITED NATIONS were discussed at Dumbarton Oaks and Bretton Woods.

1. The first was the World Bank (WB) which was to address the rehabilitation and
reconstruction of war-ravaged and later developing countries;
2. the second, the International Monetary Fund (IMF) which was to deal with currency
problems;
3. and the third, the International Trade Organization (ITO), which was to foster order and
predictability in world trade and to minimize unilateral protectionist policies that invite
challenge, even retaliation, from other states.

However, for a variety of reasons, including its non-ratification by the United States, the ITO,
unlike the IMF and WB, never took off. What remained was only GATT the General
Agreement on Tariffs and Trade. GATT was a collection of treaties governing access to the
economies of treaty adherents with no institutionalized body administering the agreements or
dependable system of dispute settlement. After half a century and several dizzying rounds of
negotiations, the world finally gave birth to that administering body the World Trade
Organization with the signing of the "Final Act" in Marrakesh, Morocco and the ratification
of the WTO Agreement by its members.

On April 15, 1994, Respondent Rizalino Navarro, then Secretary of The Department of Trade
and Industry, representing the Government of the Republic of the Philippines, signed in
Marrakesh, Morocco, the Final Act Embodying the Results of the Uruguay Round of Multilateral
Negotiations. On December 29, 1994, the present petition was filed.

Issues

Petitioners aver that sacred constitutional principles are desecrated by WTO provisions:

(a) In the area of investment measures related to trade in goods (TRIMS):

(b) In the area of trade related aspects of intellectual property rights (TRIPS):
Each Member shall accord to the nationals of other Members treatment no less favourable
- than that it accords to its own nationals
 - with regard to the protection of intellectual property. . .
(par. 1 Article 3, Agreement on Trade-Related Aspect of Intellectual Property rights, Vol. 31,
Uruguay Round, Legal Instruments, p. 25432 (emphasis supplied)
(c) In the area of the General Agreement on Trade in Services:

Held

Petitioners aver that paragraph 1, Article 34 of the General Provisions and Basic Principles of
the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) - intrudes on
the power of the Supreme Court to promulgate rules concerning pleading, practice and
procedures.

To understand the scope and meaning of Article 34, TRIPS, it will be fruitful to restate its full
text as follows:

Article 34

Process Patents: Burden of Proof

For the purposes of civil proceedings in respect of the infringement of the rights of the owner
referred to in paragraph 1 (b) of Article 28,if the subject matter of a patent is a process for
obtaining a product, the judicial authorities shall have the authority to order the defendant to
prove that the process to obtain an identical product is different from the patented process.

Therefore, Members shall provide, in at least one of the following circumstances, that any
identical product when produced without the consent of the patent owner shall, in the absence of
proof to the contrary, be deemed to have been obtained by the patented process:

(a) if the product obtained by the patented process is new;

(b) if there is a substantial likelihood that the identical product was made by the process and
the owner of the patent has been unable through reasonable efforts to determine the
process actually used.

Any Member shall be free to provide that the burden of proof indicated in paragraph 1 shall be
on the alleged infringer only if the condition referred to in subparagraph (a) is fulfilled or only if
the condition referred to in subparagraph (b) is fulfilled.
In the adduction of proof to the contrary, the legitimate interests of defendants in protecting their
manufacturing and business secrets shall be taken into account.

From the above, a WTO Member is required to provide a rule of disputable (not the words "in
the absence of proof to the contrary") presumption that a product shown to be identical to one
produced with the use of a patented process shall be deemed to have been obtained by the
(illegal) use of the said patented process, where such product obtained by the patented product is
new, or where there is "substantial likelihood" that the identical product was made with the use
of the said patented process but the owner of the patent could not determine the exact process
used in obtaining such identical product.

Hence, the "burden of proof" contemplated by Article 34 should actually be understood as the
duty of the alleged patent infringer to overthrow such presumption. Such burden, properly
understood, actually refers to the "burden of evidence" (burden of going forward) placed on the
producer of the identical (or fake) product to show that his product was produced without the use
of the patented process.

The foregoing notwithstanding, the patent owner still has the "burden of proof" since, regardless
of the presumption provided under paragraph 1 of Article 34, such owner still has to introduce
evidence of the existence of the alleged identical product, the fact that it is "identical" to the
genuine one produced by the patented process and the fact of "newness" of the genuine product
or the fact of "substantial likelihood" that the identical product was made by the patented
process.

The foregoing should really present no problem in changing the rules of evidence as the present
law on the subject, Republic Act No. 165, as amended, otherwise known as the Patent Law,
provides a similar presumption in cases of infringement of patented design or utility model, thus:

Sec. 60. Infringement. Infringement of a design patent or of a patent for utility model shall
consist in unauthorized copying of the patented design or utility model for the purpose of trade or
industry in the article or product and in the making, using or selling of the article or product
copying the patented design or utility model.

Moreover, it should be noted that the requirement of Article 34 to provide a disputable

presumption applies only if the product obtained by the patented process in NEW or there is a
substantial likelihood that the identical product was made by the process and the process owner
has not been able through reasonable effort to determine the process used.
Where either of these two provisos does not obtain, members shall be free to determine the
appropriate method of implementing the provisions of TRIPS within their own internal systems
and processes.

By and large, the arguments adduced in connection with our disposition of the third issue
derogation of legislative power will apply to this fourth issue also. Suffice it to say that the
RECIPROCITY CLAUSE more than justifies such intrusion, if any actually exists. Besides,
Article 34 does not contain an unreasonable burden, consistent as it is with due process and the
concept of adversarial dispute settlement inherent in our judicial system.

So too, since the Philippine is a signatory to most international conventions on patents,

trademarks and copyrights, the adjustment in legislation and rules of procedure will not be
substantial.

Mirpuri vs CA
GR No. 114508
November 19, 1999
Facts:

In 1970, Escobar filed an application with the Bureau of Patents for the registration of
the trademark Barbizon for use in horsiers and ladies undergarments (IPC No. 686). Private
respondent reported Barbizon Corporation, a corporation organized and doing business under the
laws of New York, USA, opposed the application. It was alleged that its trademark is
confusingly similar with that of Escobar and that the registration of the said trademark will cause
damage to its business reputation and goodwill. In 1974, the Director of Patents gave due course
to the application. Escobar later assigned all his rights and interest over the trademark to
petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of the
trademark required under the Philippine Trademark Law. Due to this failure, the Bureau
cancelled Escobars certificate of registration. In 1981, Escobar and petitioner separately filed
this application for registration of the same trademark. (IPC 2049). Private respondent opposed
again. This time it alleged (1) that the said trademark was registered with the US Patent Office;
(2) that it is entitled to protection as well-known mark under Article 6 bis of the Paris
Convention, EO 913 and the two Memoranda of the Minister of Trade and Industry and (3) that
its use on the same class of goods amounts to a violation of the Trademark Law and Art. 189 of
the RPC. Petitioner raised the defense of Res Judicata.

Issue:

Do IPC No. 686 and IPC No. 2049 involve the same cause of action?

Held:

No. The issue of ownership of the trademark was not raised in IPC 686. IPC 2049 raised
the issue of ownership, the first registration and use of the trademark in the US and other
countries, and the international recognition of the trademark established by extensive use and
advertisement of respondents products for over 40 years here and abroad. These are different
from the issues of confessing similarity and damage in IPC 686. The issue of prior use may have
been raised in IPC 686 but this claim was limited to prior use in the Philippines only. Prior use in
IPC 2049 stems from the respondents claims originator of the word and symbol Barbizon, as
the first and registered user of the mark attached to its products which have been sold and
advertised would arise for a considerable number of years prior to petitioners first application.
Indeed, these are substantial allegations that raised new issues and necessarily gave respondents
a new cause of action. Moreover, the cancellation of petitioners certificate registration for
failure to file the affidavit of use arose after IPC 686. This gave respondent another cause to
oppose the second application.
 It is also to be noted that the oppositions in the first and second cases are based on
different laws. Causes of action which are distinct and independent from each other, although out
of the same contract, transaction, or state of facts, may be sued on separately, recovery on one
being no bar to subsequent actions on others. The mere fact that the same relief is sought in the
subsequent action will not render the judgment in the prior action operating as res judicata, such
as where the actions are based on different statutes.

Samson vs. Daway

G.R. Nos. 160054-55,
July 21, 2004
Facts:

Samson, owner/proprietor of ITTI Shoes/Mano Shoes Manufactuirng Corporation located

at Robinsons Galleria, EDSA corner Ortigas Avenue, Quezon City, did then and there willfully,
unlawfully and feloniously distribute, sell and/or offer for sale CATERPILLAR products such as
footwear, garments, clothing, bags, accessories and paraphernalia which are closely identical to
and/or colorable imitations of the authentic Caterpillar products and likewise using trademarks,
symbols and/or designs as would cause confusion, mistake or deception on the part of the buying
public to the damage and prejudice of CATERPILLAR, INC., the prior adopter, user and owner
of the following internationally: CATERPILLAR, CAT, CATERPILLAR & DESIGN,
CAT AND DESIGN, WALKING MACHINES and TRACK-TYPE TRACTOR &
DESIGN.

Caterpillar Inc. sued Samson for unfair competition in RTC. Samson filed a motion to for
the quashal of information for lack of jurisdiction. Samson contended that since under Section
170 of R.A. No. 8293, the penalty of imprisonment for unfair competition does not exceed six
years, the offense is cognizable by the Municipal Trial Courts and not by the Regional Trial
Court, per R.A. No. 7691.

Under Section 170 of R.A. No. 8293, which took effect on January 1, 1998, the criminal
penalty for infringement of registered marks, unfair competition, false designation of origin and
false description or representation, is imprisonment from 2 to 5 years and a fine ranging from
Fifty Thousand Pesos to Two Hundred Thousand Pesos. (jurisdiction of Municipal Trial Courts)

Under Section 27 of of R.A. No. 166 (The Trademark Law)

SEC. 27.Jurisdiction of Court of First Instance. All actions under this Chapter [V
Infringement] and Chapters VI [Unfair Competition] and VII [False Designation of Origin and
False Description or Representation], hereof shall be brought before the Court of First Instance.

Issues:

Whether or not R.A. No. 166 was expressly repealed by R.A. No. 8293?

Held:

No, R.A. No. 8293 does not expressly repealed R.A. 166.
 SEC. 239.Repeals. 239.1. All Acts and parts of Acts inconsistent herewith, more
particularly Republic Act No. 165, as amended; Republic Act No. 166, as amended; and Articles
188 and 189 of the Revised Penal Code; Presidential Decree No. 49, including Presidential
Decree No. 285, as amended, are hereby repealed. Notably, 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 and inconsistent herewith; and it would have simply stated Republic Act No. 165, as
amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal
Code; Presidential Decree No. 49, including Presidential Decree No. 285, as amended are hereby
repealed. It would have removed all doubts that said specific laws had been rendered without
force and effect. The use of the phrases parts of Acts and inconsistent herewith only means
that the repeal pertains only to provisions which are repugnant or not susceptible of
harmonization with R.A. No. 8293.7 Section 27 of R.A. No. 166, however, is consistent and in
harmony with Section 163 of R.A. No. 8293. Had R.A. No. 8293 intended to vest jurisdiction
over violations of intellectual property rights with the Metropolitan Trial Courts, it would have
expressly stated so under Section 163 thereof.

Twentieth Century Music Corp. vs. Aiken

422 U.S. 151
Facts

The respondent George Aiken owns and operates a small fast-service food shop in
downtown Pittsburgh, Pa., known as "George Aiken's Chicken." Some customers carry out the
food they purchase, while others remain and eat at counters or booths. Usually the "carry-out"
customers are in the restaurant for less than five minutes, and those who eat there seldom remain
longer than 10 or 15 minutes.

A radio with outlets to four speakers in the ceiling receives broadcasts of music and other
normal radio programing at the restaurant. Aiken usually turns on the radio each morning at the
start of business. Music, news, entertainment, and commercial advertising broadcast by radio
stations are thus heard by Aiken, his employees, and his customers during the hours that the
establishment is open for business.

On March 11, 1972, broadcasts of two copyrighted musical compositions were received
on the radio from a [422 U.S. 151, 153] local station while several customers were in Aiken's
establishment. Petitioner Twentieth Century Music Corp. owns the copyright on one of these
songs, "The More I See You"; petitioner Mary Bourne the copyright on the other, "Me and My
Shadow." Petitioners are members of the American Society of Composers, Authors and
Publishers (ASCAP), an association that licenses the performing rights of its members to their
copyrighted works. The station that broadcast the petitioners' songs was licensed by ASCAP to
broadcast them. 1 Aiken, however, did not hold a license from ASCAP. ASCAP then sued
Aiken for copyright infringment for the radio reception of their songs were equivalent to a
perforamce thereby infringing their exclusive right to perform.

Issue

Whether the reception of a radio broadcast of a copyrighted musical composition can

constitute copyright infringement when the copyright owner has licensed the broadcaster to
perform the composition publicly for profit?

Held

Aiken did not infringe upon 20th Century exclusive right, under the Copyright Act, "to
perform the copyrighted work publicly for profit," since the radio reception did not constitute a
"performance" of the copyrighted songs. To hold that Aiken "performed" the copyrighted works
would obviously result in a wholly unenforceable regime of copyright law, and would also be
highly inequitable, since (short of keeping his radio turned off) one in Aiken's position would be
unable to protect himself from infringement liability. Such a ruling, moreover, would authorize
the sale of an untold number of licenses for what is basically a single rendition of a copyrighted
work, thus conflicting with the balanced purpose of the Copyright Act of assuring the composer
an adequate return for the value of his composition while, at the same time, protecting the public
from oppressive monopolies.
The limited scope of the copyright holder's statutory monopoly, like the limited copyright
duration required by the Constitution, reflects a balance of competing claims upon the public
interest: creative work is to be encouraged and rewarded, but private motivation must ultimately
serve the cause of promoting broad public availability of literature, music, and the other arts. The
immediate effect of our copyright law is to secure a fair return for an "author's" creative labor.
But the ultimate aimis, by this incentive, to stimulate artistic creativity for the general public
good. "The sole interest of the United States and the primary object in conferring the monopoly,
this Court has said, lies in the general benefits derived by the public from the labors of authors."
When technological change has rendered its literal terms ambiguous, the Copyright Act must be
construed in light of this basic purpose.

Feist Publications, Inc. vs. Rural Television Services Company

499 U.S. 340, 1991
Facts:

Rural Telephone Service Company is a certified public utility that provides telephone
service to several communities in northwest Kansas. It is subject to a state regulation that
requires all telephone companies operating in Kansas to issue annually an updated telephone
directory. Accordingly, as a condition of its monopoly franchise, Rural publishes a typical
telephone directory, consisting of white pages and yellow pages. The white pages list in
alphabetical order the names of Rural's subscribers, together with their towns and telephone
numbers. The yellow pages list Rural's business subscribers alphabetically by category and
feature classified advertisements of various sizes. Rural distributes its directory free of charge to
its subscribers, but earns revenue by selling yellow pages advertisements.

Feist Publications, Inc., is a publishing company that specializes in area-wide telephone

directories. Unlike a typical directory, which covers only a particular calling area, Feist's area-
wide directories cover a much larger geographical range, reducing the need to call directory
assistance or consult multiple directories. The Feist directory that is the subject of this litigation
covers 11 different telephone service areas in 15 counties and contains 46,878 white pages
listings -- compared to Rural's approximately 7,700 listings. Like Rural's directory, Feist's is
distributed free of charge and includes both white pages and yellow pages. Feist and Rural
compete vigorously for yellow pages advertising. As the sole provider of telephone service in its
service area, Rural obtains subscriber information quite easily. Persons desiring telephone
service must apply to Rural and provide their names and addresses; Rural then assigns them a
telephone number.

Feist is not a telephone company, let alone one with monopoly status, and therefore lacks
independent access to any subscriber information. To obtain white pages listings for its area-
wide directory, Feist approached each of the 11 telephone companies operating in northwest
Kansas and offered to pay for the right to use its white pages listings. Of the 11 telephone
companies, only Rural refused to license its listings to Feist. Rural's refusal created a problem for
Feist, as omitting these listings would have left a gaping hole in its area-wide directory,
rendering it less attractive to potential yellow pages advertisers. Unable to license Rural's white
pages listings, Feist used them without Rural's consent. Feist began by removing several
thousand listings that fell outside the geographic range of its area-wide directory, then hired
personnel to investigate the 4,935 that remained. These employees verified [p*344] the data
reported by Rural and sought to obtain additional information.

As a result, a typical Feist listing includes the individual's street address; most of Rural's
listings do not. Notwithstanding these additions, however, 1,309 of the 46,878 listings in Feist's
1983 directory were identical to listings in Rural's 1982-1983 white pages. Four of these were
fictitious listings that Rural had inserted into its directory to detect copying.

Rural sued for copyright infringement in the District Court for the District of Kansas
taking the position that Feist, in compiling its own directory, could not use the information
contained in Rural's white pages. Rural asserted that Feist's employees were obliged to travel
door-to-door or conduct a telephone survey to discover the same information for them. Feist
responded that such efforts were economically impractical and, in any event, unnecessary
because the information copied was beyond the scope of copyright protection.

Issues:

Whether or not Telephone directories are copyrightable or not?

Held:

This case concerns the interaction of two well-established propositions. The first is that
facts are not copyrightable; the other, that compilations of facts generally are. Each of these
propositions possesses an impeccable pedigree. That there can be no valid copyright in facts is
universally understood. The most fundamental axiom of copyright law is thatno author may
copyright his ideas or the facts he narrates."

There is an undeniable tension between these two propositions. Many compilations

consist of nothing but raw data -- i.e., wholly factual information not accompanied by any
original written expression. On what basis may one claim a copyright in such a work?

Factual compilations, on the other hand, may possess the requisite originality. The
compilation author typically chooses which facts to include, in what order to place them, and
how to arrange the collected data so that they may be used effectively by readers. These choices
as to selection and arrangement, so long as they are made independently by the compiler and
entail a minimal degree of creativity, are sufficiently original that Congress may protect such
compilations through the copyright laws. Thus, even a directory that contains absolutely no
protectible written expression, only facts, meets the constitutional minimum for copyright
protection if it features an original selection or arrangement.

This protection is subject to an important limitation. The mere fact that a work is
copyrighted does not mean that every element of the work may be protected. Originality remains
the sine qua non of copyright; accordingly, copyright protection may extend only to those
components of a work that are original to the author. Thus, if the compilation author clothes facts
with an original collocation of words, he or she may be able to claim a copyright in this written
expression. Others may copy the underlying facts from the publication, but not the precise words
used to present them. If the selection and arrangement are original, these elements of the work
are eligible for copyright protection.

The court ruled that facts are not copyrightable, while the other compilations of facts
generallyare otherwise copyrightable. There can be no valid copyright in facts is universally
understood. The most fundamental axiom of copyright law is that "no author may copyright his
ideas or the facts he narrates." Rural wisely concedes this point, noting in its brief that "facts and
discoveries, of course, are not themselves subject to copyright protection." However, it is beyond
dispute that compilations of facts are within the subject matter of copyright. Compilations were
expressly mentioned in the Copyright Act of 1909, and again in the Copyright Act of 1976.

Rural essentially concedes the point by referring to the names, towns, and telephone
numbers as "preexisting material." The copyright in a compilation does not extend to "the
preexisting material employed in the work." The question that remains is whether Rural selected,
coordinated, or arranged these uncopyrightable facts in an original way.

The selection, coordination, and arrangement of Rural's white pages do not satisfy the
minimum constitutional standards for copyright protection. Rural's selection of listings could not
be more obvious: it publishes the most basic information -- name, town, and telephone number --
about each person who applies to it for telephone service. This is "selection" of a sort, but it lacks
the modicum of creativity necessary to transform mere selection into copyrightable expression.
Rural expended sufficient effort to make the white pages directory useful, but insufficient
creativity to make it original.