UNITED STATES OF AMERICA,Plaintiff-Appellee,v.

ROBERT ALAN THOMAS (94-6648)and CARLEEN THOMAS (94-6649),Defendants-Appellants.Robert Thomas and his wife Carleen Thomas began operating the Amateur Action Computer Bulletin Board System ("AABBS") from their home in Milpitas, California in February 1991. The AABBS was a computer bulletin board system that operated by using telephones, modems, and personal computers. Its features included e-mail, chat lines, public messages, and files that members could access, transfer, and download to their own computers and printers.

Defendants' challenge to their convictions under counts 1-7, rests on two basic premises: 1) Section 1465 does not apply to intangible objects like the computer GIF files at issue here,[2]and 2) Congress did not intend to regulate computer transmissions such as those involved here because 18 U.S.C. 1465 does not expressly prohibit such conduct.We disagree. The record does not support Defendants' argument that they had no knowledge, intent or expectation that members of their AABBS would download and print the images contained in their GIF files. They ran a business that advertised and promised its members the availability and transportation of the sexually-explicit GIF files they selected. In light of the overwhelming evidence produced at trial, it is spurious for Defendants to claim now that they did not intend to sell, disseminate, or share the obscene GIF files they advertised on the AABBS with members outside their home and in other states.It is clear Congress intended to stem the transportation of obscene material in interstate commerce regardless of the means used to effect that end. It has also recognized that the right to possess obscene materials in the privacy of one's home does not create "a correlative right to receive it, transport it, or distribute it" in interstate commerce even if it is for private use only. Nor does it create "some zone of constitutionally protected privacy [that] follows such material when it is moved outside the home area." Defendants went beyond merely possessing obscene GIF files in their home. They ran a business that advertised and promised its members the availability and transportation of the sexually-explicit GIF files they selected. In light of the overwhelming evidence produced at trial, it is spurious for Defendants to claim now that they did not intend to sell, disseminate, or share the obscene GIF files they advertised on the AABBS with members outside their home and in other states.Definition of community is one that is based on the broad-ranging connections among people in cyberspace rather than the geographic locale of the federal judicial district of the criminal trial. Thus, under the facts of this case, there is no need for this court to adopt a new definition of "community" for use in obscenity prosecutions involving electronic bulletin boards.The Supreme Court has consistently recognized that "[e]xpert testimony is not necessary to enable the jury to judge the obscenity of material which . . . has been placed into evidence. The term "uses any facility in interstate . . . commerce" means employing or utilizing any method of communication or transportation between one state and another. The term "uses any facility in interstate . . . commerce", for example, includes the use of the telephone and mails.

Dean and Pearl versus SmSometime in 1989, Pearl and Dean, received reports that exact copies of its light boxes were installed at SM City and in the fastfood section of SM Cubao.Upon investigation, Pearl and Dean found out that aside from the two (2) reported SM branches, light boxes similar to those it manufactures were also installed in two (2) other SM stores.It further discovered that defendant-appellant North Edsa Marketing Inc. (NEMI), through its marketing arm, Prime Spots Marketing Services, was set up primarily to sell advertising space in lighted display units located in SMIs different branches.Pearl and Dean noted that NEMI is a sister company of SMI.

In the light of its discoveries, Pearl and Dean sent a letter dated December 11, 1991 to both SMI and NEMI enjoining them to cease using the subject light boxes and to remove the same from SMIs establishments.It also demanded the discontinued use of the trademark Poster Ads, and the payment to Pearl and Dean of compensatory damages in the amount of Twenty Million Pesos (P20,000,000.00).

Ruling:In ruling that there was no copyright infringement, the Court of Appeals held that the copyright was limited to the drawings alone and not to the light box itself.We agree with the appellate court. What the law does not include, it excludes, and for the good reason: the light box was not a literary or artistic piece which could be copyrighted under the copyright law.Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another.A trademark is any visible sign capable of distinguishing the goods(trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. In relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise. Meanwhile,the scope of a copyright is confined to literary and artistic workswhich are original intellectual creations in the literary and artistic domain protected from the moment of their creation.Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of human activitywhich is new, involves an inventive step and is industrially applicable.

For some reason or another, petitioner never secured a patent for the light boxes.It therefore acquired no patent rights which could have protected its invention, if in fact it really was.And because it had no patent, petitioner could not legally prevent anyone from manufacturing or commercially using the contraption. The patent law has a three-fold purpose: first, patent law seeks to foster and reward invention; second, it promotes disclosures of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires; third, the stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the free use of the public.Assumingarguendothat Poster Ads could validly qualify as a trademark, the failure of P & D to secure a trademark registration for specific use on the light boxes meant that there could not have been any trademark infringement since registration was an essential element thereof. WHEREFORE, the petition is hereby DENIED and the decision of the Court of Appeals dated May 22, 2001 is AFFIRMED.

FILIPINO SOCIETY OF COMPOSERS versus TanPlaintiff-appellant is a non-profit association of authors, composers and publishers duly organized under the Corporation Law of the Philippines and registered with the Securities and Exchange Commission. Said association is the owner of certain musical compositions among which are the songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness Of You."

On the other hand, defendant-appellee is the operator of a restaurant known as "Alex Soda Foundation and Restaurant" where a combo with professional singers, hired to play and sing musical compositions to entertain and amuse customers therein, were playing and singing the above-mentioned compositions without any license or permission from the appellant to play or sing the same. Accordingly, appellant demanded from the appellee payment of the necessary license fee for the playing and singing of aforesaid compositions but the demand was ignored.

Ruling:

Indeed, if the general public has made use of the object sought to be copyrighted for thirty (30) days prior to the copyright application the law deems the object to have been donated to the public domain and the same can no longer be copyrighted. Under the circumstances, it is clear that the musical compositions in question had long become public property, and are therefore beyond the protection of the Copyright Law.

Habana versus RoblesIn the course of revising their published works, petitioners scouted and looked around various bookstores to check on other textbooks dealing with the same subject matter. By chance they came upon the book of respondent Robles and upon perusal of said book they were surprised to see that the book was strikingly similar to the contents, scheme of presentation, illustrations and illustrative examples in their own book, CET.

After an itemized examination and comparison of the two books (CET and DEP), petitioners found that several pages of the respondent's book are similar, if not all together a copy of petitioners' book, which is a case of plagiarism and copyright infringement.Ruling:We believe that respondent Robles' act of lifting from the book of petitioners substantial portions of discussions and examples, and her failure to acknowledge the same in her book is an infringement of petitioners' copyrights. It does not necessarily require that the entire copyrighted work, or even a large portion of it, be copied. If so much is taken that the value of the original work is substantially diminished, there is an infringement of copyright and to an injurious extent, the work is appropriated. To constitute infringement, it is not necessary that the whole or even a large portion of the work shall have been copied. If so much is taken that the value of the original is sensibly diminished, or the labors of the original author are substantially and to an injurious extent appropriated by another, that is sufficient in point of law to constitute piracy.Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright, and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this connection, consists in the doing by any person, without the consent of the owner of the copyright, of anything the sole right to do which is conferred by statute on the owner of the copyright. In cases of infringement, copying alone is not what is prohibited. The copying must produce an "injurious effect". Here, the injury consists in that respondent Robles lifted from petitioners' book materials that were the result of the latter's research work and compilation and misrepresented them as her own. She circulated the book DEP for commercial use did not acknowledged petitioners as her source.

In the case at bar, the least that respondent Robles could have done was to acknowledge petitioners Habanaet.al. as the source of the portions of DEP. The final product of an author's toil is her book. To allow another to copy the book without appropriate acknowledgment is injury enough.

IN THE MATTER OF THE CHARGES OF PLAGIARISM, ETC., AGAINST ASSOCIATE JUSTICE MARIANO C. DEL CASTILLOBut laws include, under the doctrine of stare decisis, judicial interpretations of such laws as are applied to specific situations. Under this doctrine, Courts are "to stand by precedent and not to disturb settled point." Once the Court has "laid down a principle of law as applicable to a certain state of facts, it will adhere to that principle, and apply it to all future cases, where facts are substantially the same; regardless of whether the parties or property are the same. When practicing lawyers (which include judges) write about the law, they effectively place their ideas, their language, and their work in the public domain, to be affirmed, adopted, criticized, or rejected. Being in the public domain, other lawyers can thus freely use these without fear of committing some wrong or incurring some liability.A judge writing to resolve a dispute, whether trial or appellate, is exempted from a charge of plagiarism even if ideas, words or phrases from a law review article, novel thoughts published in a legal periodical or language from a partys brief are used without giving attribution. Thus judges are free to use whatever sources they deem appropriate to resolve the matter before them, without fear of reprisal. This exemption applies to judicial writings intended to decide cases for two reasons: the judge is not writing a literary work and, more importantly, the purpose of the writing is to resolve a dispute. As a result, judges adjudicating cases are not subject to a claim of legal plagiarism.

MCDONALDS CORPORATION versus big mak

On 21 October 1988, respondent corporation applied with the PBPTT fortheregistration ofthe Big Mak mark for its hamburger sandwiches. McDonalds opposed respondent corporations application on the ground that Big Mak was a colorable imitation of its registered Big Mac mark for the same food products.Ruling:Toestablishtrademark infringement, the following elements must be shown: (1) the validity of plaintiffs mark; (2) the plaintiffs ownership of the mark; and (3)the use ofthe mark or its colorable imitation by theallegedinfringer results in likelihood of confusion.[34]Of these, it is theelement oflikelihood of confusion that is the gravamen of trademark infringement.

Section 22 covers two types of confusion arising fromthe use ofsimilar or colorable imitation marks,namely, confusion of goods (product confusion) and confusion of business (source or origin confusion). The registered trademark owner may use his mark on the same or similar products, in different segments of the market, and at different price levels depending on variations of the products for specific segments of the market.The Court has recognized that the registered trademark owner enjoys protection in product and market areas that are thenormal potential expansion of his business.

Indetermininglikelihood of confusion, jurisprudence has developed two tests, the dominancy test and the holistic test.[57]The dominancy test focuses on the similarity of theprevalentfeatures of the competing trademarks that might cause confusion.In contrast, the holistic testrequiresthe court to consider the entirety of the marks as applied to the products, including the labels and packaging, indeterminingconfusing similarity.This Court, however, has relied on the dominancy test rather than the holistic test. The dominancy test considers the dominant features in the competing marks indeterminingwhether they are confusingly similar.Under the dominancy test, courts give greater weight to the similarity of the appearance of the product arising fromtheadoption ofthe dominant features of the registered mark, disregardingminordifferences.[59]Courts will consider more the aural andvisual impressions created by the marks in the public mind,giving little weight to factors like prices, quality, sales outlets and market segments.Absent proof that respondents adoption ofthe Big Mak mark wasdue tohonest mistake or was fortuitous,[68]the inescapable conclusion is that respondents adopted the Big Mak mark to ride on the coattails of the more established Big Mac mark.[69]This saves respondents much of the expense in advertising to create market recognition of their mark and hamburgers.The essentialelements ofan action for unfair competition are (1) confusing similarity in the general appearanceof the goods, and (2) intent to deceive the public and defraud a competitor.[74]The confusing similarity may or may not result from similarity in the marks, but may result from other external factors inthepackaging or presentation ofthe goods.The intent to deceive and defraud may be inferred from the similarity of the appearance of the goods as offered for sale to the public.[75]Actualfraudulent intent need not be shown. Unfair competition is broader than trademark infringement and includes passing off goods with or without trademark infringement.Trademark infringement is a form of unfair competition.[77]Trademark infringement constitutes unfair competition when there is not merely likelihood of confusion, but alsoactualor probable deception on the public because of the general appearance of the goods. There can be trademark infringement without unfair competition as when the infringer discloses on the labels containing the mark that he manufactures the goods, thus preventing the public from being deceived that the goods originate from the trademark owner.WHEREFORE, weGRANTthe instant petition. WeSET ASIDEthe Decision dated 26 November 1999 of the Court of Appeals and its Resolution dated 11 July 2000 andREINSTATEthe Decision dated5 September 1994 of the Regional Trial Court of Makati, Branch 137, finding respondent L.C. Big Mak Burger, Inc. liable for trademark infringement and unfair competition.DEL MONTE CORPORATION VS. COURT OF APPEALSFACTS:

Petitioner filed a case for trademark infringement and unfair competition against Sunshine Sauce. The latter for a time used the bottles of Del Monte in packaging their own catsup sauce. It also used bottles which were similar to those of petitioner.

HELD:

There is a distinction between infringment of trademark and unfair competition:1. Infringement is the unauthorized use of a trademark while unfair competition is the passing off of ones goods as that of another2. In infringement, fraudulent intent is unnecessary while it is otherwise for unfair competition3. In infringement, prior registration of the trademark is needed whereas in unfair competition, registration is not necessary.

In assessing the two trademarks, side-by-side comparison is not the final test of similarity because average buyers dont make minute scrutiny of label details.

Also, in testing if there has been prior registration, registration in the supplemental register isnt what the law contemplates.

Playboy Enterprises, Inc. v. WellesFacts

Former 1981PlayboyPlaymate of the Year("PMOY")Terri Wellesmaintained a website which identified her as a former PMOY and displayed the registered trademarked terms Playboy, Playmate of the Year, and Playmate of the Month and the unregistered trademark "PMOY" inmetatags,wallpaper,banner ads, and themasthead. Playboy sued Welles, claiming bothtrademark infringementandtrademark dilution.

Defendant was featured on the cover of a 1981Playboy magazine. Defendant was aPlayboymodel andPlaymate of the Yearwho used these trademarked terms to describe herself via her personal website. Plaintiffs sued Defendant for Defendants under two theories:trademark infringementandtrademark dilution.Ruling:

In essence, the court found that Welles' watermark and metatags were a fair use of those terms because they accurately described her. Playboy, after all, had bestowed those terms on Welles in 1981 and had never objected to Welles' use of the marks until the launching of her web site. In addition, the court found that Welles was not trying to deceive, mislead or confuse consumers through her use of the marks or metatags. Welles' web site contains a disclaimer which states clearly there is no relationship with Playboy and web site references to the term "playboy" are minimal.

The court denied the injunction, siding with Welles. In essence, the court agreed with Welles' contention that her use of the trademarks was a fair use because it accurately described and identified her. The court held further that Welles' web site makes no effort to trick or confuse consumers into believing that Welles' web site is somehow related to Playboy. The court noted that Welles uses the disclaimer, minimizes the web site references to Playboy, does not use "playboy" or any related term in the domain name, and employs a different font than Playboy's well recognized magazine font.

Brookfield versus west coast

In 1998 Brookfield learned that West Coast intended to launch a web site at moviebuff.com which would contain, among other things, a searchable database of entertainment-related news. Brookfield issued a cease-and-desist letter to West Coast stating the website would infringe on Brookfield's trademark, MovieBuff. West Coast went ahead with their web site plans; Brookfield subsequently filed a complaint alleging trademark infringement and unfair competition in violation of theLanham ActRuling:

The Internet is a global network of interconnected computers which allows individuals and organizations around the world to communicate and to share information with one another. The Web, a collection of information resources contained in documents located on individual computers around the world, is the most widely used and fastest-growing part of the Internet except perhaps for electronic mail ("e-mail").Each web page has a corresponding domain address, which is an identifier somewhat analogous to a telephone number or street address. Domain names consist of a second-level domainsimply a term or series of terms. As we have seen, registration of a domain name for a Web site does not trump long-established principles of trademark law. When a firm uses a competitor's trademark in the domain name of its web site, users are likely to be confused as to its source or sponsorship. Similarly, using a competitor's trademark in the metatags of such web site is likely to cause what we have described as initial interest confusion. These forms of confusion are exactly what the trademark laws are designed to prevent