REPUBLIC
OF THE PHILIPPINES
REGIONAL TRIAL COURT
NATIONAL CAPITAL JUDICIAL REGION
QUEZON CITY, BRANCH 90
PHILIPPINE LONG DISTANCE TELEPHONE COMPANY, INC., Plaintiff,
-versus- CIVIL CASE NO. 99-38800 FOR: Injunction and Damages (Intellectual
Property Case: Unlawful use of Trade Name & Unfair Competition).
PHILIPPINE LEAGUE FOR DEMOCRATIC TELECOMMUNICATIONS, INC. AND GERARDO
B. KAIMO, Defendants.
x-------------------------------------------------------x
OPPOSITION
(To Plaintiff's Application for a Temporary Restraining Order
and/or Writ of Preliminary Prohibitory and Mandatory Injunction)
Defendant Gerardo B. Kaimo, by counsel, to this Honorable Court, in
Opposition to Plaintiff's Application for a Temporary Restraining
Order and/or Writ of Preliminary Prohibitory and Mandatory Injunction
respectfully states that:
Counter-Statement Of Facts
1. Sometime in 1996, the domain name pldt.com was registered through
the Network Solutions, Inc. (NSI), the United States based registry
of domain names. WebScape Philippines, Inc. ("original owner"), a
domestic company based in Manila, had registered the said domain name.
2. On 15 March 1996, Plaintiff created its corporate and official
website utilizing the domain name "pldt.com.ph" which was registered
through the PH domain registry for Philippine domains.
3. Sometime in 1998, the registration of the original owner of pldt.com
lapsed and was not renewed. At that juncture, pldt.com became available
to anyone who could pay the SEVENTY U.S. DOLLARS ($US70.00) registration
fee.
4. On 21 July 1998, Defendant Kaimo acquired all the rights and interests
over the domain name pldt.com after payment of the above-mentioned
registration fee and upon approval of the NSI. See Exhibit A of Mr.
Manuel Bausa, Jr.'s Affidavit dated 22 September 1999 attached to
Plaintiff's Complaint.
5. Defendant Kaimo's acquisition of the domain name pldt.com was very
timely because the issue on Plaintiff's local measured service or
metering scheme was then being discussed and debated upon publicly.
6. As a founding member of the Defendant Philippine League for DemocraticTelecommunications,
Inc. (Defendant PLDTI), the group which has been very vocal against
Plaintiff's local measured service or metering scheme, Defendant Kaimo
utilized the website pldt.com as a vehicle to intensify public awareness
on the issue. The website was likewise used as a forum for expression
of consumer dissatisfaction on Plaintiff's inefficient customer service
and covered other current issues like Imelda Marcos' ill-gotten wealth,
Imelda Marcos' Ulirang Ina award, the power struggle at the Cultural
Center of the Philippines, the Cherry Hills tragedy, the East Timor
humanitarian tragedy, among others in the form of personal commentary
and political satire.
7. Later on, pldt.com offered free e-mail service, an active public
discussion board and opinion surveys.
Grounds For Opposition
I.
DEFENDANT KAIMO IS THE LAWFUL AND REGISTERED OWNER OF THE DOMAIN NAME
PLDT.COM.
II.
DEFENDANT KAIMO'S DOMAIN NAME "PLDT.COM", INCLUDING META-TAGS AND
BURIED CODES, NEITHER CONFUSES NOR MISLEADS THE PUBLIC/INTERNET USERS.
III.
DEFENDANT KAIMO'S AND INTERNET USERS' CONSTITUTIONAL RIGHT TO FREE
EXPRESSION WILL BE VIOLATED.
IV.
PLAINTIFF'S FILING OF THE INSTANT CASE IS IN BAD FAITH WITH THE SOLE
INTENTION TO RESTRAIN DEFENDANT KAIMO AND INTERNET USERS FROM EXPRESSING
THEIR VIEWS AND CRITICISMS AGAINST PLAINTIFF.
Arguments/Discussion
I. Defendant Kaimo Is The Lawful And Registered Owner Of The Domain
Name Pldt.Com.
8. It is beyond dispute that Defendant Kaimo is the legitimate and
registered owner of the domain name pldt.com as shown by the following:
8.a) Defendant Kaimo had paid the consideration or registration fee
of SEVENTY U.S. DOLLARS for the use of the said domain name Print
copy of Invoice No. 1964957 and Account Status from NSI is hereto
attached as Annex "A", and 8.b) Defendant executed a valid registration
agreement with the NSI. Print copy of the Registration Agreement is
hereto attached as Annexes "B" to "B-1." 9. Assuming arguendo that
Plaintiff is the registered owner of the PLDT trade name and service
mark, Plaintiff cannot assert said right on the Internet. Domain name
registration system is diametrically opposed to that of trademarks.
While Trademarks are territorial, Domain name registration is global.
Registering a domain name automatically affects registration all around
the world irrespective of the national registration laws premised
on territoriality and regardless of the nature of the product, service
or enterprise which are the bases for trademarks registration. Since
Defendant Kaimo registered the domain name pldt.com ahead of Plaintiff,
Defendant Kaimo is the registered owner thereof in accordance with
NSI's policy of "first come, first served" basis.
10. Plaintiff had virtually waived and abandoned any rights and interests
over the domain name pldt.com exhibited as follows:
10.a) Prior to Defendant Kaimo's acquisition of the domain name pldt.com
on 21 July 1998, Plaintiff failed to verify with the NSI if the said
domain name is available for use so that it could acquire the same
ahead of Defendant Kaimo;
10.b) Plaintiff did not signify any intention to acquire the domain
name pldt.com from the Defendant Kaimo considering that the latter
was actively on line since December 1998, and
10.c) Instead of pursuing the registration of pldt.com, on 15 March
1996, Plaintiff created its corporate and official website utilizing
the domain name "pldt.com.ph" which was registered through the PH
domain registry for Philippine domains. In fact, Plaintiff advertised
that it can be reached at www.pldt.com.ph. Copy of the print ad found
in page 11 of the Computer World Philiippines dated 15 January 1999
showing Plaintiff's website advertisement is hereto attached as Annex
"C".
11. Defendant Kaimo should not therefore be prejudiced by Plaintiff's
negligence and inaction to assert its right on time.
12. Verily, Defendant Kaimo is authorized to use the domain name pldt.com.
II. Defendant Kaimo's Domain Name Pldt.Com, Including Meta-tags And
Buried Codes, Neither Confuses Nor Misleads The Public/Internet Users.
13. There are patent and substantial distinctions between Defendant
Kaimo's domain name pldt.com and Plaintiff's website pldt.com.ph or
between Plaintiff's "pldt" trade name and service mark and those depicted
by Defendant Kaimo on his website, which would not, in any way, confuse
nor mislead the public/internet users, to wit:
13.a) Unlike Plaintiff's website pldt.com.ph, Defendant Kaimo's website
pldt.com is not being utilized for any commercial undertaking. Defendant
Kaimo is not reaping any profit from the use thereof. Be it noted
that the Defendant Kaimo's website is dedicated to free speech in
the form of personal commentary, parody and satire on current events/issues,
free e-mail service and an active public discussion board.
13.b) Even assuming that Defendant Kaimo depicted and used Plaintiff's
"pldt" trade name and service mark on his website, substantial difference
still exists since Defendant Kaimo portrays Plaintiff's "pldt" trade
name and service mark in a humorous manner and changes its features.
13.c) Defendant Kaimo's website displays disclaimers such as "Guaranteed
tears, laughter and lies for the entire family or your money back"
which expressly distinguish the same from the Plaintiff. Sample print
outs of disclaimers are hereto attached as Annexes "D" to "D-2".
13.d) Actual search results using popular search engines and directories
in looking for "PLDT" reveal the following:
Google - (_ HYPERLINK http://www.google.com __http://www.google.com_)
Pages with "PLDT Touching Lives " (from pldt.com.ph) made up the first
seven pages displayed. Defendant's PLDT.COM appears as the eighth
reference, with the page title "La Viuda Loca" - obviously a sarcastic
reference to Imelda Marcos and not the Plaintiff. Print copy thereof
is hereto attached as Annexes "E" to "E-1";
Lycos - (_ HYPERLINK http://www.lycos.com __http://www.lycos.com_)
On this search engine, the first three instances show Plaintiff's
"PLDT Clearly for you" and "PLDT - Touching Lives."The fourth entry
is from Defendant's parody site, "PLDT - Torturing Lives" and the
description clearly states: "parody site on philippine telecommunications,
monopoly, bridgestone, tires,satire on current events in Manila" Print
copy thereof is hereto attached as Annexes "F" to "F-1";
Webcrawler - (http://www.webcrawler.com) In this search engine, Plaintiff's
official site comes out first. No mention of PLDT.COM. Print copy
thereof is hereto attached as Annexes "G" to "G-2";
Excite! - (_ HYPERLINK http://www.excite.com __http://www.excite.com_)
On this search engine, all 10 instances of pages shown on the front
page belong to Plaintiff's pldt.com.ph, accompanied by abstracts describing
Plaintiff's operations. No mention of PLDT.COM. Print copy thereof
is hereto attached as Annexes "H" to "H-1";
Altavista - (http://www.altavista.com) The first page shows 10 pages,
9 out of 10 of which belong Plaintiff's official sites. The 2nd page
belongs to Defendant's PLDT.COM with the title "Torturing Lives" and
the description clearly states "parody site on philippine telecommunications..."
Print copy thereof is hereto attached as Annexes "I" to "I-1";
Yahoo - (_ HYPERLINK http://www.yahoo.com __http://www.yahoo.com_)
A search for "PLDT" bring up a page of six sites. Two of these belong
to Plaintiff's official site, two belong to the PLDT mountaineering
club, and one of these belongs to a Russian-based telecom company
called PLD Telekom. Categorized under "Consumer Opinion" is Defendant's
"PLDT: Torturing Lives" and this is clearly labelled "parodies of
and opinion about the policies of the company. Print copy thereof
is hereto attached as Annexes "J" to "J-1"
EDSA- HYPERLINK http://www.edsa.com.ph __http://www.edsa.com.ph) This
is a searchable directory of Philippine websites. Under "Business
and Economy: Telecommunications", The Plaintiff's website is no. 2.,
Defendant's "PLDT, Torturing Lives" appears as No. 4 and is clearly
labelled as a parody website. The other sites on the page are anti-metering
sites. Print copy thereof is hereto attached as Annexes "K" to K-1";
Yehey - (_ HYPERLINK http://www.yehey.com __http://www.yehey.com_)
Another searchable directory of Philippine websites. A search for
"PLDT" brings up a page with 24 entries with the word "PLDT" in them.
7 of these are anti-metering web sites, or sites that oppose Plaintiff's
petition for local metering. Defendant's PLDT.COM is listed as the
first entry. It is clearly listed as a PLDT anti-metering site and
has the provocative title, "Is PLDT, Philippine Telecommunications
Company part of Imelda Marcos loot? " It is likewise marked with a
99.9% rating. Print copy thereof is hereto attached as Annexes "L"
to "L-2"; Defendant's PLDT.COM ranked on top of the page because it
was the most popular page and received the most number of clicks from
the search engine considering Defendant's website is more entertaining
and dynamic while Plaintiff's website is dull and static. Yehey does
not engage meta-tags to increase websites ranking therein. Copy of
Mr. David Quitoriano's Certification to that effect dated 29 September
1999 is hereto attached as Annex "M" ;
Evidently, in all instances, PLDT.COM's content is either explicitly
described or classified as "a parody site" or such fact can be clearly
inferred from the abstract. There is simply no way a reasonably intelligent
user can make use of a search engine or directory to look for the
official site of the Plaintiff and select instead the Defendant Kaimo's
website clearly labeled as "consumer opinion" or a "parody site".
14. Undeniably, there is no possibility whatsoever that the public/Internet
users would be confused or misled between Defendant Kaimo's domain
name pldt.com and Plaintiff's pldt.com.ph or between Plaintiff's pldt
trade name and service mark and those depicted by the Defendant Kaimo
on his website.
III. Defendant Kaimo's And Internet Users' Constitutional Right To
Free Expression Will Be Violated.
15. Plaintiff is not entitled to the injunctive relief sought because
this would trample upon Defendant Kaimo's and Internet users' constitutional
right to freedom of expression. The Philippine Constitution provides,
to wit:
No law shall be passed upon abridging the freedom of speech, of expression,
or of the press, or the right of the people to peaceably assemble
and petition the government for redress of grievances.1[1]
16. Defendant Kaimo utilized the website pldt.com exclusively as a
forum for expression of consumer dissatisfaction with Plaintiff's
metering scheme and its inefficient customer service. From there,
it expanded and tackled other timely issues like Imelda Marcos' ill-gotten
wealth, Imelda Marcos' Ulirang Ina award, the power struggle at the
Cultural Center of the Philippines, the Cherry Hills tragedy, the
East Timor humanitarian tragedy, among others, applying traditional
tools of parody, satire and humor to make known to the Internet audience
Defendant Kaimo's thoughts and opinions. Internet users are likewise
free to ventilate their comments and to exchange their views on current
issues via the public discussion board. See Annexes "D-8" to "D-14"
attached to Plaintiff's Complaint dated 22 September 1999 showing
active participation of Internet Users.
17. Philippine jurisprudence is settled that the exercise of freedom
of expression for profit does not remove it from the mantle of protection
under the Constitution.2[2] An example of profit making expression
protected by the Constitution is motion pictures. In the case of Gonzales
vs. Katigbak,3[3] the Supreme Court held that:
"Motion pictures are important both as a medium for the communication
of ideas and the expression of the artistic impulse. Their effects
on the perception by our people of issues and public officials or
public figures as well as the prevailing cultural traits is considerable.
Nor as pointed out in Burstyn vs. Wilson (343 U.S. 495 [1942]) is
the importance of motion pictures as an organ of public opinion lessened
by the fact that they are designed to entertain as well as to inform.
There is no clear dividing line between what involves knowledge and
what affords pleasure. If such a distinction were sustained , there
is a diminution of the basic right to free expression."
18. Considering that Defendant Kaimo utilizes the website pldt.com
exclusively for artistic expression and not for financial gain, the
more that the same should fall within the ambit of protected speech.
19. American jurisprudence provides that non commercial trademark
parodies, like in this case, used in the context of artistic or editorial
expression is protected by the constitution.4[4]
IV. Plaintiff's Filing Of The Instant Case Is In Bad Faith With The
Sole Intention To Restrain Defendant Kaimo and Internet Users From
Expressing Their Views And Criticisms Against Plaintiff.
20. Defendant Kaimo became the legitimate and registered owner of
the domain name pldt.com only on 21 July 1998.
21. It is worth noting that during the period 1996 to 1998 when Webscapes
Philippines, Inc., a domestic corporation based in Manila, was still
the registered owner of the domain name pldt.com, Plaintiff neither
raised any objection nor filed any action enjoining its use.
22. Likewise, since 15 March 1996, Plaintiff had registered the domain
name, pldt.com.ph, and continuously used the same, without any objection
to the domain name pldt.com then owned by said Webscapes Philippines,
Inc..
23. Clearly, Plaintiff filed this case not to prevent the use of the
said domain name but to suppress Defendant Kaimo and his audience
from expressing their respective thoughts and comments against Plaintiff.
This Honorable Court therefore should not allow Plaintiff to curtail
Defendant Kaimo's and his audience' right to expression.
24. Accordingly, Plaintiff's prayer for a Temporary Restraining Order
and/or Writ of Preliminary Prohibitory and Mandatory Injunction is
devoid of merit.
PRAYER
WHEREFORE, premises considered, it is respectfully prayed that this
Honorable Court deny Plaintiff's Application for a Temporary Restraining
Order and/or Writ of Preliminary Prohibitory and Mandatory Injunction
be denied for lack of merit. Defendant Kaimo prays for such other
reliefs and remedies he is entitled to in law or in equity. Makati
City for Quezon City, 4 October 1999.
CRUZ ENVERGA & LUCERO Counsel for Defendant Gerardo B. Kaimo
Unit 2505 Cityland 10, Tower 1
6815 Ayala Avenue, Makati City
By: TEODORO B. CRUZ, JR.
PTR NO. 0456352 Makati City, 1-12-99
IBP No.448458, Cam. Sur., 9-25-98
SUSAN M. SANTOS
PTR NO. 0455849, Makati City, 1-12-99
IBP NO. 473983, Zambales, 1-13-99
Copy Furnished:
Attys Vicente B. Amador, Carlos Roberto Z. Lopez
and Michael David I. Abundo, III
SyCip Salazar Hernandez and Gatmaitan
Counsel for the Plaintiff PLDT
105 Paseo de Roxas, Makati City
Atty. Rod C. Domingo, Jr.
Domingo and Dizon
Counsel for Defendant PLDTI
LPL Center Unit 15 B
130 Alfaro St., Salcedo Village
Makati City
1[1] Section 4, Article III, 1987 Constitution of the Philippines.
2[2] 160 SCRA 861.
3[3] 137 SCRA 717.
4[4] High Society magazine was involved in a trademark parody case
filed by a New England clothing company (L.L. Bean) to have the publisher
of High Society remove a particular issue which contained an ad parody
of L.L. Bean's popular catalogue of outdoor clothing and equipment.
This particular article in High Society spoofed the catalogue and
showed, instead of outdoor clothing and equipment, nude models showcasing
different sexual paraphernalia (L.L. Bean, Inc. vs. Drake Publishers,
Inc., 811 F.2d 26 (1987)).
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