Case Digest (G.R. No. 148222) Core Legal Reasoning Model
Core Legal Reasoning Model
Facts:
In Pearl Dean (Phil.), Inc. (P D) v. Shoemart, Inc. (SMI) and North Edsa Marketing, Inc. (NEMI), decided on August 15, 2003 under G.R. No. 148222, P D alleged that respondents infringed its copyright and trademark and engaged in unfair competition by manufacturing and leasing lighted advertising display units known as “light boxes.” P D secured a Certificate of Copyright Registration dated January 20, 1981 over the technical drawings of its display units under class “O” of P.D. 49 and obtained a Certificate of Trademark Registration on September 12, 1988 for the mark Poster Ads covering stationeries. In 1985, P D contracted with SMI to install its light boxes in SM branches, but SMI later rescinded the contract and commissioned other manufacturers to produce identical units. P D discovered in 1989 that SMI and its sister company NEMI had installed unlicensed replicas of P D’s light boxes in various SM malls. After sending a demand letter in December 1991, P D filed suit in 1992 Case Digest (G.R. No. 148222) Expanded Legal Reasoning Model
Expanded Legal Reasoning Model
Facts:
- Parties and Background
- Plaintiff‐appellant Pearl and Dean (Phil.), Inc. (P D) manufactures backlit advertising display units (“light boxes”), holds a Certificate of Copyright Registration (Jan. 20, 1981) for its technical drawings (class “O” work) and a Certificate of Trademark Registration for “Poster Ads” (Sept. 12, 1988) covering stationeries.
- Defendants‐appellants Shoemart, Inc. (SMI) and North Edsa Marketing, Inc. (NEMI) are sister companies that leased and installed similar light boxes in SM malls through Metro Industrial Services and EYD Rainbow Advertising.
- Contractual Negotiations and Alleged Infringement
- In 1985, P D negotiated with SMI for lease and installation of light boxes at SM City North Edsa, SM Makati and SM Cubao. Only SM Makati contract was signed; SMI in January 1986 purported to rescind it for non-performance.
- From 1987–1991, SMI commissioned Metro and later EYD Rainbow to fabricate about 300 units installed in SM Megamall and SM City; in 1989 P D discovered identical units and “Poster Ads” usage without license; P D demanded cessation, removal and P 20 million damages in December 1991; SMI and NEMI partially complied then P D filed suit.
- Trial Court Decision
- RTC Makati (Oct. 31, 1996) held SMI and NEMI jointly liable for infringement of copyright (PD 49), trademark (RA 166) and unfair competition; awarded actual damages ₱16.6 M, moral ₱1 M, exemplary ₱1 M, attorney’s fees ₱1 M, costs; injunctive relief; dismissed counterclaims.
- Court of Appeals Decision
- CA (May 22, 2001) reversed: held copyright limited to technical drawings (Baker v. Selden), trademark “Poster Ads” valid only for stationeries listed in the certificate (RA 166 Sec. 20), term generic, no infringement; dismissed complaint and counterclaims.
- Supreme Court Petition
- P D filed Rule 45 petition assigning errors on CA’s rulings on copyright, trademark infringement, bad faith, damages; SC framed four IP issues.
Issues:
- Copyright and Patent Scope
- Does P D’s copyright on class “O” engineering drawings extend ipso facto to the light boxes depicted?
- If not, should the light boxes have been separately protected by patent to prevent copying?
- Trademark and Competition
- Can P D enjoin respondents’ use of the term “Poster Ads” if it is a mere contraction of descriptive “poster advertising”?
- Does unfair competition lie when trademark registration is limited or absent?
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)