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G.R. Nos. 76649-51 August 19, 1988

20TH CENTURY FOX FILM CORPORATION, petitioner,vs.COURT OF APPEALS, EDUARDO M. BARRETO, RAUL SAGULLO and FORTUNELEDESMA, respondents.

Siguion Reyna, Montecillo & Ongsiako Law Office for petitioner.

B.C. Salazar & Associates for respondents.

GUTIERREZ, JR., J.:

The petitioner questions the application of the constitutional provision against illegal searches and seizuresto raids conducted in connection with the government's anti-film piracy campaign. The main issue hingeson whether or not the judge properly lifted the search warrants he issued earlier upon the application of theNational Bureau of Investigation on the basis of the complaint filed by the petitioner.

In a letter-complaint dated August 26, 1985, petitioner 20th Century Fox Film Corporation through counsel

sought the National Bureau of Investigation's (NBI) assistance in the conduct of searches and seizures inconnection with the latter's anti-film piracy campaign. Specifically, the letter-complaint alleged that certainvideotape outlets all over Metro Manila are engaged in the unauthorized sale and renting out of copyrightedfilms in videotape form which constitute a flagrant violation of Presidential Decree No. 49 (otherwise knownas the Decree on the Protection of Intellectual Property).

Acting on the letter-complaint, the NBI conducted surveillance and investigation of the outlets pinpointed bythe petitioner and subsequently filed three (3) applications for search warrants against the video outletsowned by the private respondents. The applications were consolidated and heard by the Regional TrialCourt of Makati, Branch 132.

On September 4, 1985, the lower court issued the desired search warrants.

Armed with the search warrants, the NBI accompanied by the petitioner's agents, raided the video outlets

and seized the items described therein. An inventory of the items seized was made and left with the privaterespondents.

Acting on a motion to lift search warrants and release seized properties filed by the private respondents,the lower court issued an order dated October 8, 1985, lifting the three (3) search warrants issued earlier against the private respondents by the court. The dispositive portion of the order reads:

WHEREFORE, the Court hereby orders that Search Warrants Nos. SW- 85-024; issuedagainst Eduardo M. Barreto of the Junction Video, etc., Paranaque, Metro Manila; SW No.85-025, issued against Raul M. Sagullo of South Video Bug Center, Inc., etc., also of No.5355 Pres. Avenue BF Homes, Parañaque, Metro Manila; and SW No. 85-026, issuedagainst Fortune A. Ledesma of Sonix Video Services of San Antonio Plaza, Forbes Park,Makati, Metro Manila, be lifted.

Consequently, the articles listed in the returns of the three search warrants which could notbe a basis of any criminal prosecution, now in the possession of the National Bureau of Investigation which under the law must be delivered to this Court, but which the NBI failed todo, are hereby ordered to be returned to their owners through their lawyer, Atty. BenitoSalazar or his agents or representatives, against proper receipt, to be forwarded to thisCourt for record purposes, as proof that said properties have been returned to thepossession of the rightful owners." (p. 34, Rollo)

The lower court denied a motion for reconsideration filed by the petitioner in its order dated January 2,1986.

The petitioner filed a petition for certiorari with the Court of Appeals to annul the October 8, 1985 and



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January 2, 1986 orders of the lower court. The petition was dismissed.

Hence, this petition.

The main issue hinges on the meaning of "probable cause" within the context of the constitutional provisionagainst illegal searches and seizures (Section 3, Article IV, 1973 Constitution, now, Section 2, Article Ill,

1987 Constitution.The petitioner maintains that the lower court issued the questioned search warrants after finding theexistence of a probable cause justifying their issuance. According to the petitioner, the lower court arrivedat this conclusion on the basis of the depositions of applicant NBI's two witnesses which were takenthrough searching questions and answers by the lower court.

Section 2, Article III of the present Constitution which substantially reproduces Section 3, Article IV of the1973 Constitution on illegal searches and seizures provides:

The right of the people to be secure in their persons, houses, papers, and effects againstunreasonable searches and seizures of whatever nature and for any purpose shall beinviolable, and no search warrant or warrant of arrest shall issue except upon probablecause to be determined personally by the judge after examination under oath or affirmation

of the complainant and the witnesses he may produce, and particularly describing the placeto be searched and the persons or things to be seized.

This constitutional right protects a citizen against wanton and unreasonable invasion of his privacy andliberty as to his person, papers and effects. We have explained in the case of People v. Burgos (144 SCRA1) citingVillanueva v. Querubin (48 SCRA 345) why the right is so important:

It is deference to one's personality that lies at the core of this right, but it could be alsolooked upon as a recognition of a constitutionally protected area, primarily one's home, butnot necessarily thereto confined. (Cf. Hoffa v. United States, 385 US 293 119661) What issought to be guarded is a man's prerogative to choose who is allowed entry to hisresidence. In that haven of refuge, his individuality can assert itself not only in the choice of who shall be welcome but likewise in the kind of objects he wants around him. There thestate, however powerful, does not as such have access except under the circumstances

above noted, for in the traditional formulation, his house, however humble, is his castle.Thus is outlawed any unwarranted intrusion by government, which is called upon to refrainfrom any invasion of his dwelling and to respect the privacies of his life. (Cf Schmerber v.California, 384 US 757 [1966], Brennan, J. and Boyd v. United States, 116 630 [1886]). Inthe same vein, Landynski in his authoritative work (Search and Seizure and the SupremeCourt [1966]), could fitly characterize constitutional right as the embodiment of a "spiritualconcept: the belief that to value the privacy of home and person and to afford itsconstitutional protection against the long reach of government is no less than to valuehuman dignity, and that his privacy must not be disturbed except in case of overriding socialneed, and then only under stringent procedural safeguards."(ibid , p. 74).

The government's right to issue search warrants against a citizen's papers and effects is circumscribed bythe requirements mandated in the searches and seizures provision of the Constitution.

In the case of Burgos, Sr. v. Chief of Staff, AFP (133 SCRA 800), we defined probable cause for a validsearch "as such facts and circumstances which would lead a reasonably discreet and prudent man tobelieve that an offense has been committed and that the objects sought in connection with the offense arein the place sought to be searched." This constitutional provision also demands "no less than personalknowledge by the complainant or his witnesses of the facts upon which the issuance of a search warrantmay be justified" in order to convince the judge, not the individual making the affidavit and seeking theissuance of the warrant, of the existence of a probable cause. (Alvarez v. Court of First Instance, 64 Phil.33; Burgos, Sr. v. Chief of Staff, AFP, supra).

In the instant case, the lower court lifted the three questioned search warrants against the private



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respondents on the ground that it acted on the application for the issuance of the said search warrants andgranted it on the misrepresentations of applicant NBI and its witnesses that infringement of copyright or apiracy of a particular film have been committed. Thus the lower court stated in its questioned order datedJanuary 2,1986:

According to the movant, all three witnesses during the proceedings in the application for the three search warrants testified of their own personal knowledge. Yet, Atty. Albino Reyesof the NBI stated that the counsel or representative of the Twentieth Century FoxCorporation will testify on the video cassettes that were pirated, so that he did not havepersonal knowledge of the alleged piracy. The witness Bacani also said that the videocassettes were pirated without stating the manner it was pirated and that it was Atty.Domingo that has knowledge of that fact.

On the part of Atty. Domingo, he said that the re-taping of the allegedly pirated tapes wasfrom master tapes allegedly belonging to the Twentieth Century Fox, because, according tohim, it is of his personal knowledge.

At the hearing of the Motion for Reconsideration, Senior NBI Agent Atty. Albino Reyestestified that when the complaint for infringement was brought to the NBI, the master tapes

of the allegedly pirated tapes were shown to him and he made comparisons of the tapeswith those purchased by their man Bacani. Why the master tapes or at least the film reels of the allegedly pirated tapes were not shown to the Court during the application gives somemisgivings as to the truth of that bare statement of the NBI agent on the witness stand. "

Again as the application and search proceedings is a prelude to the filing of criminal casesunder PD 49, the copyright infringement law, and although what is required for the issuancethereof is merely the presence of probable cause, that probable cause must be satisfactoryto the Court, for it is a time- honored precept that proceedings to put a man to task as anoffender under our laws should be interpreted in strictissimi juris against the governmentand liberally in favor of the alleged offender.

xxx xxx xxx

This doctrine has never been overturned, and as a matter of fact it had been enshrined inthe Bill of Rights in our 1973 Constitution.

So that lacking in persuasive effect, the allegation that master tapes were viewed by the NBIand were compared to the purchased and seized video tapes from the respondents'establishments, it should be dismissed as not supported by competent evidence and for thatmatter the probable cause hovers in that grey debatable twilight zone between black andwhite resolvable in favor of respondents herein.

But the glaring fact is that 'Cocoon,' the first video tape mentioned in the search warrant,was not even duly registered or copyrighted in the Philippines. (Annex C of Opposition p.152 record). So, that lacking in the requisite presentation to the Court of an alleged master tape for purposes of comparison with the purchased evidence of the video tapes allegedlypirated and those seized from respondents, there was no way to determine whether there

really was piracy, or copying of the film of the complainant Twentieth Century Fox." (pp. 37-39, Rollo)

xxx xxx xxx

The lower court, therefore, lifted the three (3) questioned search warrants in the absence of probable causethat the private respondents violated P.D. 49. As found out by the court, the NBI agents who acted aswitnesses did not have personal knowledge of the subject matter of their testimony which was the allegedcommission of the offense by the private respondents. Only the petitioner's counsel who was also a witnessduring the application for the issuance of the search warrants stated that he had personal knowledge thatthe confiscated tapes owned by the private respondents were pirated tapes taken from master tapes



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belonging to the petitioner. However, the lower court did not give much credence to his testimony in view of the fact that the master tapes of the allegedly pirated tapes were not shown to the court during theapplication.

All these factors were taken into consideration by the lower court when it lifted the three questioned searchwarrants. There is no truth, therefore, to the petitioner's allegation that the lower court based its January 2,1986 order only "on the fact that the original or master copies of the copyrighted films were not presentedduring the application for search warrants, thus leading it to conclude that it had been "misled by theapplicant and his witnesses." (p. 17, Rollo)

The presentation of the master tapes of the copyrighted films from which the pirated films were allegedlycopied, was necessary for the validity of search warrants against those who have in their possession thepirated 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. Thecourt cannot presume that duplicate or copied tapes were necessarily reproduced from master tapes that itowns.

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.The essence of a copyright infringement is the similarity or at least substantial similarity of the purportedpirated works to the copyrighted work. Hence, the applicant must present to the court the copyrighted filmsto compare them with the purchased evidence of the video tapes allegedly pirated to determine whether the latter is an unauthorized reproduction of the former. This linkage of the copyrighted films to the piratedfilms must be established to satisfy the requirements of probable cause. Mere allegations as to theexistence of the copyrighted films cannot serve as basis for the issuance of a search warrant.

Furthermore, we note that the search warrants described the articles sought to be seized as follows:

xxx xxx xxx

xxx xxx xxx

c) Television sets, Video Cassettes Recorders, rewinders, tape headcleaners, accessories, equipments and other machines used or intended tobe used in the unlawful reproduction, sale, rental/lease distribution of theabove-mentioned video tapes which she is keeping and concealing in thepremises above-described." (p. 26, Rollo)

In the case of Burgos v. Chief of Staff, AFP supra, we stated:

xxx xxx xxx

Another factor which makes the search warrants under consideration constitutionallyobjectionable is that they are in the nature of general warrants. The search warrantsdescribe the articles sought to be seized in this wise:

l] All printing equipment, paraphernalia, paper, ink, photo equipment, typewriters, cabinets,

tables communications/recording equipment, tape recorders, dictaphone and the like usedand/or connected in the printing of the 'WE FORUM' newspaper and any and alldocument/communications, letters and facsimile of prints related to "WE FORUM"newspaper.

2] Subversive documents, pamphlets, leaflets, books, and other publications to promote theobjectives and purposes of the subversive organizations known as Movement for FreePhilippines, Light-a-Fire Movement and April 6 Movement; and

3] Motor vehicles used in the distribution/circulation of the 'WE FORUM and other subversive materials and propaganda, more particularly,



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1] Toyota-Corolla, colored yellow with Plate No. NKA 892;

2] DATSUN pick-up colored white with Plate No. NKV 969;

3] A delivery truck with Plate No. NBS 542;

4] TOYOTA-TAMARAW, colored white with Plate No. PBP 665;and,

5] TOYOTA Hi-Lux, pick-up truck with Plate No. NGV 472 with marking"Bagong Silang."

In Stanford v. State of Texas (379 U.S. 476,13 L ed 2nd 431), the search warrant whichauthorized the search for 'books, records, pamphlets, cards, receipts, lists, memoranda,pictures, recordings and other written instruments concerning the Communist Parties of Texas, and the operations of the Community Party in Texas," was declared void by the U.S.Supreme Court for being too general. In like manner, directions to "seize any evidence inconnection with the violation of SDC 13-3703 or otherwise' have been held too general, andthat portion of a search warrant which authorized the seizure of any "paraphernalia whichcould be used to violate Sec. 54-197 of the Connecticut General Statutes [the statutedealing with the crime of conspiracy]"' was held to be a general warrant, and therefore

invalid (68 Am. Jur. 2d., pp. 736-737). The description of the articles sought to be seizedunder the search warrants in question cannot be characterized differently. (at pp. 814-815)

Undoubtedly, a similar conclusion can be deduced from the description of the articles sought to beconfiscated under the questioned search warrants.

Television sets, video cassette recorders, reminders and tape cleaners are articles which can be found in avideo tape store engaged in the legitimate business of lending or renting out betamax tapes. In short, thesearticles and appliances are generally connected with, or related to a legitimate business not necessarilyinvolving piracy of intellectual property or infringement of copyright laws. Hence, including these articleswithout specification and/or particularity that they were really instruments in violating an Anti-Piracy lawmakes The search warrant too general which could result in the confiscation of all items found in any videostore. In fact, this actually happened in the instant case. Thus, the lower court, in its questioned order datedOctober 8, 1985 said:

Although the applications and warrants themselves covered certain articles of propertyusually found in a video store, the Court believes that the search party should have confinedthemselves to articles that are according to them, evidence constitutive of infringement of copyright laws or the piracy of intellectual property, but not to other articles that are usuallyconnected with, or related to, a legitimate business, not involving piracy of intellectualproperty, or infringement of copyright laws. So that a television set, a rewinder, and awhiteboard listing Betamax tapes, video cassette cleaners video cassette recorders asreflected in the Returns of Search Warrants, are items of legitimate business engaged in thevideo tape industry, and which could not be the subject of seizure, The applicant and hisagents therefore exceeded their authority in seizing perfectly legitimate personal propertyusually found in a video cassette store or business establishment." (p. 33, Rollo)

All in all, we find no grave abuse of discretion on the part of the lower court when it lifted the searchwarrants it earlier issued against the private respondents. We agree with the appellate court's findings tothe effect that:

An assiduous examination of the assailed orders reveal that the main ground upon whichthe respondent Court anchored said orders was its subsequent findings that it was misledby the applicant (NBI) and its witnesses 'that infringement of copyright or a piracy of aparticular film have been committed when it issued the questioned warrants.' Stateddifferently, the respondent Court merely corrected its erroneous findings as to the existenceof probable cause and declared the search and seizure to be unreasonable. Certainly, suchaction is within the power and authority of the respondent Court to perform, provided that it



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is not exercised in an oppressive or arbitrary manner. Indeed, the order of the respondentCourt declaring the existence of probable cause is not final and does not constitute res

judicata.

A careful review of the record of the case shows that the respondent Court did not commit agrave abuse of discretion when it issued the questioned orders. Grave abuse of discretion'implies such capricious and whimsical exercise of judgment as is equivalent to lack of

jurisdiction, or, in other words, where the power is exercised in an arbitrary or despoticmanner by reason of passion or personal hostility, and it must be so patent and gross as toamount to an evasion of positive duty or to a virtual refusal to perform the duty enjoined or to act at all in contemplation of law.' But far from being despotic or arbitrary, the assailedorders were motivated by a noble desire of rectifying an error, much so when the erroneousfindings collided with the constitutional rights of the private respondents. In fact, thepetitioner did not even contest the righteousness and legality of the questioned orders butinstead concentrated on the alleged denial of due process of law." (pp. 44-45, Rollo)

The proliferation of pirated tapes of films not only deprives the government of much needed revenues but isalso an indication of the widespread breakdown of national order and discipline. Courts should not imposeany unnecessary roadblocks in the way of the anti-film piracy campaign. However, the campaign cannot

ignore or violate constitutional safeguards. To say that the problem of pirated films can be solved only bythe use of unconstitutional shortcuts is to denigrate the long history and experience behind the searchesand seizures clause of the Bill of Rights. The trial court did not commit reversible error.

WHEREFORE, the instant petition is DISMISSED. The questioned decision and resolution of the Court of Appeals are AFFIRMED.

SO ORDERED.

Fernan, C.J., Feliciano, Bidin and Cortes, JJ., concur



Cases on Copyright

G.R. No. 131522 July 19, 1999

PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO, petitioners,vs.FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC., respondents.

PARDO, J.:

The case before us is a petition for review on certiorari 1 to set aside the (a) decision or the Court of Appeals 2, and (b) the resolution denying petitioners' motion for reconsideration, 3 in which the appellatecourt affirmed the trial court's dismissal of the complaint for infringement and/or unfair competition anddamages but deleted the award for attorney's fees.1âwphi1.nêt

The facts are as follows:

Petitioners are authors and copyright owners of duly issued certificates of copyright registration coveringtheir published works, produced through their combined resources and efforts, entitled COLLEGEENGLISH FOR TODAY (CET for brevity), Books 1 and 2, and WORKBOOK FOR COLLEGE FRESHMANENGLISH, Series 1.

Respondent Felicidad Robles and Goodwill Trading Co., Inc. are the author/publisher and distributor/seller of another published work entitled "DEVELOPING ENGLISH PROFICIENCY" (DEP for brevity), Books 1and 2 (1985 edition) which book was covered by copyrights issued to them.

In the course of revising their published works, petitioners scouted and looked around various bookstoresto 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 strikinglysimilar 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 thatseveral pages of the respondent's book are similar, if not all together a copy of petitioners' book, which is acase of plagiarism and copyright infringement.

Petitioners then made demands for damages against respondents and also demanded that they cease anddesist from further selling and distributing to the general public the infringed copies of respondent Robles'works.

However, respondents ignored the demands, hence, on July 7, 1988; petitioners filed with the RegionalTrial Court, Makati, a complaint for "Infringement and/or unfair competition with damages" 4 against privaterespondents. 5

In the complaint, petitioners alleged that in 1985, respondent Felicidad C. Robles being substantiallyfamiliar with the contents of petitioners' works, and without securing their permission, lifted, copied,plagiarized and/or transposed certain portions of their book CET. The textual contents and illustrations of CET were literally reproduced in the book DEP. The plagiarism, incorporation and reproduction of particular portions of the book CET in the book DEP, without the authority or consent of petitioners, and the

misrepresentations of respondent Robles that the same was her original work and concept adverselyaffected and substantially diminished the sale of the petitioners' book and caused them actual damages byway of unrealized income.

Despite the demands of the petitioners for respondents to desist from committing further acts of infringement and for respondent to recall DEP from the market, respondents refused. Petitioners asked thecourt to order the submission of all copies of the book DEP, together with the molds, plates and films andother materials used in its printing destroyed, and for respondents to render an accounting of the proceedsof all sales and profits since the time of its publication and sale.

Respondent Robles was impleaded in the suit because she authored and directly committed the acts of



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infringement complained of, while respondent Goodwill Trading Co., Inc. was impleaded as the publisher and joint co-owner of the copyright certificates of registration covering the two books authored and causedto be published by respondent Robles with obvious connivance with one another.

On July 27, 1988, respondent Robles filed a motion for a bill of particulars 6 which the trial court approvedon August 17, 1988. Petitioners complied with the desired particularization, and furnished respondentRobles the specific portions, inclusive of pages and lines, of the published and copyrighted books of thepetitioners which were transposed, lifted, copied and plagiarized and/or otherwise found their way intorespondent's book.

On August 1, 1988, respondent Goodwill Trading Co., Inc. filed its answer to the complaint 7 and allegedthat petitioners had no cause of action against Goodwill Trading Co., Inc. since it was not privy to themisrepresentation, plagiarism, incorporation and reproduction of the portions of the book of petitioners; thatthere was an agreement between Goodwill and the respondent Robles that Robles guaranteed Goodwillthat the materials utilized in the manuscript were her own or that she had secured the necessarypermission from contributors and sources; that the author assumed sole responsibility and held thepublisher without any liability.

On November 28, 1988, respondent Robles filed her answer 8, and denied the allegations of plagiarism

and copying that petitioners claimed. Respondent stressed that (1) the book DEP is the product of her independent researches, studies and experiences, and was not a copy of any existing valid copyrightedbook; (2) DEP followed the scope and sequence or syllabus which are common to all English grammar writers as recommended by the Association of Philippine Colleges of Arts and Sciences (APCAS), so anysimilarity between the respondents book and that of the petitioners was due to the orientation of theauthors to both works and standards and syllabus; and (3) the similarities may be due to the authors'exercise of the "right to fair use of copyrigthed materials, as guides."

Respondent interposed a counterclaim for damages on the ground that bad faith and malice attended thefiling of the complaint, because petitioner Habana was professionally jealous and the book DEP replacedCET as the official textbook of the graduate studies department of the Far Eastern University. 9

During the pre-trial conference, the parties agreed to a stipulation of facts 10 and for the trial court to first resolve the issue of infringement before disposing of the claim for

damages.

After the trial on the merits, on April 23, 1993, the trial court rendered its judgment finding thus:

WHEREFORE, premises considered, the court hereby orders that the complaint filedagainst defendants Felicidad Robles and Goodwill Trading Co., Inc. shall be DISMISSED;that said plaintiffs solidarily reimburse defendant Robles for P20,000.00 attorney's fees anddefendant Goodwill for P5,000.00 attorney's fees. Plaintiffs are liable for cost of suit.

IT IS SO ORDERED.

Done in the City of Manila this 23rd day of April, 1993.

(s/t) MARVIE R. ABRAHAM SINGSON

Assisting Judge

S. C. Adm. Order No. 124-92 11

On May 14, 1993, petitioners filed their notice of appeal with the trial court 12, and on July 19, 1993, thecourt directed its branch clerk of court to forward all the records of the case to the Court of Appeals. 13

In the appeal, petitioners argued that the trial court completely disregarded their evidence and fullysubscribed to the arguments of respondent Robles that the books in issue were purely the product of her researches and studies and that the copied portions were inspired by foreign authors and as such notsubject to copyright. Petitioners also assailed the findings of the trial court that they were animated by badfaith in instituting the complaint. 14



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On June 27, 1997, the Court of Appeals rendered judgment in favor of respondents Robles and GoodwillTrading Co., Inc. The relevant portions of the decision state:

It must be noted, however, that similarity of the allegedly infringed work to the author's or proprietor's copyrighted work does not of itself establish copyright infringement, especially if the similarity results from the fact that both works deal with the same subject or have thesame common source, as in this case.

Appellee Robles has fully explained that the portion or material of the book claimed byappellants to have been copied or lifted from foreign books. She has duly proven that mostof the topics or materials contained in her book, with particular reference to those mattersclaimed by appellants to have been plagiarized were topics or matters appearing not only inappellants and her books but also in earlier books on College English, including foreignbooks, e.i . Edmund Burke's "Speech on Conciliation", Boerigs' "Competence in English" andBroughton's, "Edmund Burke's Collection."

xxx xxx xxx

Appellant's reliance on the last paragraph on Section II is misplaced. It must be emphasized thatthey failed to prove that their books were made sources by appellee. 15

The Court of Appeals was of the view that the award of attorneys' fees was not proper, since there was nobad faith on the part of petitioners Habana et al . in instituting the action against respondents.

On July 12, 1997, petitioners filed a motion for reconsideration, 16 however, the Court of Appeals deniedthe same in a Resolution 17 dated November 25, 1997.

Hence, this petition.

In this appeal, petitioners submit that the appellate court erred in affirming the trial court's decision.

Petitioners raised the following issues: (1) whether or not, despite the apparent textual, thematic andsequential similarity between DEP and CET, respondents committed no copyright infringement; (2) whether or not there wasanimus furandi on the part of respondent when they refused to withdraw the copies of CETfrom the market despite notice to withdraw the same; and (3) whether or not respondent Robles abused a

writer's right to fair use, in violation of Section 11 of Presidential Decree No. 49. 18

We find the petition impressed with merit.

The complaint for copyright infringement was filed at the time that Presidential Decree No. 49 was in force. At present, all laws dealing with the protection of intellectual property rights have been consolidated and asthe law now stands, the protection of copyrights is governed by Republic Act No. 8293. Notwithstanding thechange in the law, the same principles are reiterated in the new law under Section 177. It provides for thecopy or economic rights of an owner of a copyright as follows:

Sec. 177. Copy or Economic rights. — Subject to the provisions of chapter VIII, copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent thefollowing acts:

177.1 Reproduction of the work or substanlial portion of the work;

177.2 Dramatization, translation, adaptation, abridgement, arrangement or other transformation of the work;

177.3 The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;

177.4 Rental of the original or a copy of an audiovisual or cinematographic work, a workembodied in a sound recording, a computer program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental; (n)



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177.5 Public display of the original or copy of the work;

177.6 Public performance of the work; and

177.7 Other communication to the public of the work 19

The law also provided for the limitations on copyright, thus:

Sec. 184.1 Limitations on copyright . — Notwithstanding the provisions of Chapter V, thefollowing acts shall not constitute infringement of copyright:

(a) the recitation or performance of a work, once it has been lawfully madeaccessible to the public, if done privately and free of charge or if madestrictly for a charitable or religious institution or society; [Sec. 10(1), P.D. No.49]

(b) The making of quotations from a published work if they are compatiblewith fair use and only to the extent justified for the purpose, includingquotations from newspaper articles and periodicals in the form of presssummaries; Provided , that the source and the name of the author, if appearing on the work are mentioned; (Sec. 11 third par. P.D. 49)

xxx xxx xxx

(e) The inclusion of a work in a publication, broadcast, or other communication to the public,sound recording of film, if such inclusion is made by way of illustration for teaching purposes andis compatible with fair use:Provided , That the source and the name of the author, if appearing inthe work is mentioned ; 20

In the above quoted provisions, "work" has reference to literary and artistic creations and this includesbooks and other literary, scholarly and scientific works. 21

A perusal of the records yields several pages of the book DEP that are similar if not identical with the text of CET.

On page 404 of petitioners' Book 1 of College English for Today, the authors wrote:

Items in dates and addresses:

He died on Monday, April 15, 1975.

Miss Reyes lives in 214 Taft Avenue,

Manila 22

On page 73 of respondents Book 1 Developing English Today, they wrote:

He died on Monday, April 25, 1975.

Miss Reyes address is 214 Taft Avenue Manila 23

On Page 250 of CET, there is this example on parallelism or repetition of sentence structures, thus:

The proposition is peace. Not peace through the medium of war; not peace to be huntedthrough the labyrinth of intricate and endless negotiations; not peace to arise out of universal discord, fomented from principle, in all parts of the empire; not peace to dependon the juridical determination of perplexing questions, or the precise marking of theboundary of a complex government. It is simple peace; sought in its natural course, and inits ordinary haunts. It is peace sought in the spirit of peace, and laid in principles purelypacific.

— Edmund Burke, "Speech on Criticism." 24

On page 100 of the book DEP 25, also in the topic of parallel structure and repetition, the same example is



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foundin toto. The only difference is that petitioners acknowledged the author Edmund Burke, andrespondents did not.

In several other pages 26 the treatment and manner of presentation of the topics of DEP are similar if not arehash of that contained in CET.

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.

When is there a substantial reproduction of a book? It does not necessarily require that the entirecopyrighted work, or even a large portion of it, be copied. If so much is taken that the value of the originalwork is substantially diminished, there is an infringement of copyright and to an injurious extent, the work isappropriated. 27

In determining the question of infringement, the amount of matter copied from the copyrighted work is animportant consideration. To constitute infringement, it is not necessary that the whole or even a largeportion of the work shall have been copied. If so much is taken that the value of the original is sensiblydiminished, or the labors of the original author are substantially and to an injurious extent appropriated byanother, that is sufficient in point of law to constitute piracy. 28

The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its gravityby an appropriate understanding thereof. Infringement of a copyright is a trespass on a private domainowned 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 bystatute on the owner of the copyright.29

The respondents' claim that the copied portions of the book CET are also found in foreign books and other grammar books, and that the similarity between her style and that of petitioners can not be avoided sincethey come from the same background and orientation may be true. However, in this jurisdiction under Sec184 of Republic Act 8293 it is provided that:

Limitations on Copyright. Notwithstanding the provisions of Chapter V, the following shall

not constitute infringement of copyright:

xxx xxx xxx

(c) The making of quotations from a published work if they are compatiblewith fair use and only to the extent justified for the purpose, includingquotations from newspaper articles and periodicals in the form of presssummaries: Provided , That the source and the name of the author, if appearing on the work, are mentioned.

A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such cases, didnot know whether or not he was infringing any copyright; he at least knew that what he was copying wasnot his, and he copied at his peril. 30

The next question to resolve is to what extent can copying be injurious to the author of the book beingcopied. Is it enough that there are similarities in some sections of the books or large segments of the booksare the same?

In the case at bar, there is no question that petitioners presented several pages of the books CET and DEPthat more or less had the same contents. It may be correct that the books being grammar books maycontain materials similar as to some technical contents with other grammar books, such as the segmentabout the "Author Card". However, the numerous pages that the petitioners presented showing similarity inthe style and the manner the books were presented and the identical examples can not pass as similaritiesmerely because of technical consideration.

The respondents claim that their similarity in style can be attributed to the fact that both of them were



Cases on Copyright

exposed to the APCAS syllabus and their respective academic experience, teaching approach andmethodology are almost identical because they were of the same background.

However, we believe that even if petitioners and respondent Robles were of the same background in termsof teaching experience and orientation, it is not an excuse for them to be identical even in examplescontained in their books. The similarities in examples and material contents are so obviously present in thiscase. How can similar/identical examples not be considered as a mark of copying?

We consider as an indicia of guilt or wrongdoing the act of respondent Robles of pulling out from Goodwillbookstores the book DEP upon learning of petitioners' complaint while pharisaically denying petitioners'demand. It was further noted that when the book DEP was re-issued as a revised version, all the pagescited by petitioners to contain portion of their book College English for Today were eliminated.

In cases of infringement, copying alone is not what is prohibited. The copying must produce an "injuriouseffect". Here, the injury consists in that respondent Robles lifted from petitioners' book materials that werethe result of the latter's research work and compilation and misrepresented them as her own. Shecirculated the book DEP for commercial use did not acknowledged petitioners as her source.

Hence, there is a clear case of appropriation of copyrighted work for her benefit that respondent Roblescommitted. Petitioners' work as authors is the product of their long and assiduous research and for another

to represent it as her own is injury enough. In copyrighting books the purpose is to give protection to theintellectual product of an author. This is precisely what the law on copyright protected, under Section 184.1(b). Quotations from a published work if they are compatible with fair use and only to the extent justified bythe purpose, including quotations from newspaper articles and periodicals in the form of press summariesare allowed provided that the source and the name of the author, if appearing on the work, are mentioned.

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

WHEREFORE, the petition is hereby GRANTED. The decision and resolution of the Court of Appeals inCA-G. R. CV No. 44053 are SET ASIDE. The case is ordered remanded to the trial court for further proceedings to receive evidence of the parties to ascertain the damages caused and sustained by

petitioners and to render decision in accordance with the evidence submitted to it.SO ORDERED.

Kapunan and Ynares-Santiago, JJ., concur.

Davide, Jr., C.J., I dissent, please see dissenting opinion.

Melo, J., no part, personal reason.

Separate Opinions

DAVIDE, JR., C.J., dissenting opinion:

I am unable to join the majority view.

From the following factual and procedural antecedents, I find no alternative but to sustain both the trialcourt and the Court of Appeals.

On 12 July 1988, HABANA, et al . filed with the trial court a complaint for infringement and unfair competition, with damages against private respondent Felicidad C. Robles (hereafter ROBLES) and her



Cases on Copyright

publisher and distributor, Goodwill Trading Co., Inc. (hereafter GOODWILL). The case was docketed asCivil Case No. 88-1317.

HABANA, et al . averred in their complaint that they were the co-authors and joint copyright owners of their published works College English for Today, Books 1 and 2 (hereafter CET) and Workbook for CollegeFreshman English, Series 1 1; they discovered that ROBLES' own published works, Developing EnglishProficiency, Books 1 and 2, (hereafter DEP), published and distributed in 1985, exhibited an uncannyresemblance, if not outright physical similarity, to CET as to content, scheme, sequence of topics andideas, manner of presentation and illustrative examples; the plagiarism, incorporation and reproduction of particular portions of CET into DEP could not be gainsaid since ROBLES was substantially familiar withCET and the textual asportation was accomplished without their authority and/or consent; ROBLES andGOODWILL jointly misrepresented DEP (over which they shared copyright ownership) "as the former'soriginal published works and concept;" and "notwithstanding formal demands made . . . to cease and desistfrom the sale and distribution of DEP, [ROBLES and GOODWILL] persistently failed and refused to complytherewith." HABANA et al . then prayed for the court to: (1) order the submission and thereafter thedestruction of all copies of DEP, together with the molds, plates, films and other materials used in theprinting thereof; (2) require ROBLES and GOODWILL to render an accounting of the sales of the "infringingworks from the time of its (sic ) inceptive publication up to the time of judgment, as well as the amount of

sales and profits . . . derived;" and (3) to enjoin ROBLES and GOODWILL to solidarily pay actual, moraland exemplary damages, as well as attorney's fees and expenses of litigation.

In its Answer, GOODWILL denied culpability since "it had no knowledge or information sufficient to form abelief as to the allegations of plagiarism, incorporation and reproduction" and hence "could not be privy tothe same, if (there were) any;" and that in an Agreement with co-defendant ROBLES, the latter would besolely responsible for acts of plagiarism or violations of copyright or any other law, to the extent of answering for any and all damages GOODWILL may suffer. GOODWILL also interposed a compulsorycounterclaim against PACITA, et al . and a crossclaim against its co-defendant anchored on theaforementioned Agreement.

In her answer, ROBLES asserted that: (1) DEP was the exclusive product of her independent research,studies and experience; (2) DEP, particularly the segments where the alleged literal similitude appeared,were admittedly influenced or inspired by earlier treatises, mostly by foreign authors; but that "influences

and/or inspirations from other writers" like the methodology and techniques as to presentation, teachingconcept and design, research and orientation which she employed, fell within the ambit of generalinformation, ideas, principles of general or universal knowledge which were commonly and customarilyunderstood as incapable of private and exclusive use, appropriation or copyright; and (3) her works werethe result of the legitimate and reasonable exercise of an author's "right to fair use of even copyrightedmaterials as [a] guide." She further claimed that her various national and regional professional activities ingeneral education, language and literature, as well as her teaching experience in graduate and postgraduate education would obviate the remotest possibility of plagiarism.

ROBLES likewise suggested that any similarity between DEP and CET as regards scope and sequencecould be attributed to "the orientation of the authors to the scope and sequence or syllabus — whichincorporates standards known among English grammar book writers — of the subject-matter for BasicCommunication Arts recommended by the Association of Philippine Colleges of Arts and Sciences

(APCAS)." While the syllabus was admittedly adopted in DEP, she claimed to have treated quite differentlyin DEP the very ideas, techniques or principles expressed in CET such that neither textbook could beconsidered a copy or plagiarism of the other.

At the pre-trial conference, the parties agreed to a stipulation of facts 2 and for the court to first resolve theissue of infringement before disposing of the claims for damages. After trial on the merits, the trial courtrendered its decision in favor of defendants, the dispositive portion of which reads:

WHEREFORE, premises considered, the Court hereby orders that the complaint filedagainst defendants Felicidad Robles and Goodwill Trading Co., Inc. shall be DISMISSED:that said plaintiffs solidarily reimburse defendant Robles for P20,000.00 attorney's fees and



Cases on Copyright

defendant Goodwill for P5,000.00 attorney's fees. Plaintiffs are liable for costs of suit.

IT IS SO ORDERED. 3

Noting that the law applicable to the case was Presidential Decree No. 49, 4 the trial court found thatHABANA, et al . failed to discharge their onus of proving that ROBLES and GOODWILL committed acts

constituting copyright infringement. Moreover, the trial court found that "the cause of action or actscomplained of [were] not covered by said decree" as Section 10 thereof barred authors of works alreadylawfully made accessible to the public from prohibiting the reproductions, translations, adaptations,recitation and performance of the same, while Section 11 allowed the utilization of reproductions,quotations and excerpts of such works. The trial court thus agreed with ROBLES that "the complained acts[were] of general and universal knowledge and use which plaintiffs cannot claim originality or seek redressto the law for protection" and observed that DEP and CET had the same sources, consisting chiefly of earlier works, mostly foreign books. GOODWILL's crossclaim against ROBLES, counterclaim againstHABANA, et al . as well as ROBLES' compulsory counterclaim against GOODWILL were all dismissed for lack of factual and legal bases.

HABANA, et al . appealed to the Court of Appeals. The case was docketed as CA-G.R. CV No. 44053.Before said court HABANA, et al ., in the main, argued that the trial court totally disregarded their evidence

and merely subscribed to ROBLES' arguments. The Court of Appeals, however, likewise disposed of thecontroversy in favor of ROBLES and GOODWILL. 5

However, the Court of Appeals modified the trial court's decision by reversing the award for attorney's fees.It held that the good faith and sincerity of HABANA, et al . in commencing the action negated the basistherefor. Their motion for reconsideration having been denied for want of cogent reasons, HABANA, et al .,instituted this petition. They claim that the Court of Appeals committed reversible error in failing toappreciate: (1) the insuperable evidence and facts admitted and proved demonstrating plagiarism or piracyand instead afforded full weight and credit to ROBLES' matrix of general, hypothetical and sweepingstatements and/or defenses; (2) ROBLES' and GOODWILL's animo furandi or intent to appropriate or copyCET with the non-removal of the damaging copies of DEP from the bookstores despite notice to withdrawthe same; and (3) the fact that ROBLES abused a writer's right to fair use, in violation of Section 11 of P.D.No. 49. 6 They invoke Laktaw v . Paglinawan 7 which, they theorize is on all fours with the case at bar.

ROBLES contends that appeal by certiorari does not lie in this case for the challenged decision and the trialcourt's judgment were amply supported by evidence, pertinent laws and jurisprudence. Hence, her counterclaim for moral damages should, therefore, be granted or for us to order the remand of the case tothe trial court for reception of evidence on damages. GOODWILL, on its part, stood pat on its disclaimer,with the assertion that no proof was ever introduced. that it co-authored DEP or that it singly or in cabalwith ROBLES committed any act constituting copyright infringement.

The core issue then is whether or not the Court of Appeals erred in affirming the trial court's judgment thatdespite the apparent textual, thematic and sequential similarity between DEP and CET, no copyright wascommitted by ROBLES and GOODWILL.

While the complaint, in Civil Case No. 88-1317 was filed during the effectivity of P.D. No. 49, the provisionsof the new intellectual property law, R.A. No. 8293, 8 nevertheless bears significance here. It took effect on1 January 1998, but its Section 239.3 clearly states that its provisions shall apply to works in which

copyright protection obtained prior to the effectivity of the Act subsists, provided, however, that theapplication of the Act shall not result in the diminution of such protection. Also, the philosophy behind bothstatutes as well as the essential principles of copyright protection and copyright infringement have, to acertain extent, remained the same.

A copyright may be accurately defined as the right granted by statute to the proprietor of an intellectualproduction to its exclusive use and enjoyment to the extent specified in the statute. 9 Under Section 177 of R.A. No. 8293, 10the copy or economic right (copyright and economic right are used interchangeably in thestatute) consists of the exclusive right to carry out, authorize or prevent the following acts:

177.1 Reproduction of the work or substantial portion of the work;



Cases on Copyright

177.2 Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;


177.4 Rental of the original or a copy of an audiovisual or cinematographic work, a workembodied in a sound recording, a computer program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental;

177.5 Public display of the original or a copy of the work;


177.7 Other communication to the public of the work.

"The work," as repeatedly mentioned, refers to the literary and artistic works defined as original intellectualcreations in the literary and artistic domain protected from the moment of their creation and enumerated inSection 172.1, which includes books and other literary, scholarly, scientific and artistic works. 11

Stripped in the meantime of its indisputable social and beneficial functions, 12 the use of intellectualproperty or creations should basically promote the creator or author's personal and economic gain. Hence,the copyright protection extended to the creator should ensure his attainment of some form of personalsatisfaction and economic reward from the work he produced. Without conceding the suitability of Laktawas precedent, the Court there quoted Manresa and explained:

He who writes a book, or carves a statute, or makes an invention, has the absolute right toreproduce or sell it, just as the owner of the land has the absolute right to sell it or its fruits. Butwhile the owner of the land, by selling it and its fruits, perhaps fully realizes all its economicvalue, by receiving its benefits and utilities, which are represented for example, by the price, onthe other hand the author of a book, statue or invention does not reap all the benefits andadvantages of his own property by disposing of it, for the most important form of realizing theeconomic advantages of a book, statue or invention, consists in the right to reproduce it insimilar or like copies, everyone of which serves to give to the person reproducing them all the

conditions which the original requires in order to give the author the full enjoyment thereof. If theauthor of a book, after its publication, cannot prevent its reproduction by any person who maywant to reproduce it, then the property right granted him is reduced to a very insignificant thingand the effort made in the production of the book is in no way rewarded. 13

The execution, therefore, of any one or more of the exclusive rights conferred by law on a copyright owner,without his consent, constitutes copyright infringement. In essence, copyright infringement, known ingeneral as "piracy," is a trespass on a domain owned and occupied by a copyright owner; it is violation of aprivate right protected by law.14 With the invasion of his property rights, a copyright owner is naturallyentitled to seek redress, enforce and hold accountable the defrauder or usurper of said economic rights.

Now, did ROBLES and GOODWILL infringe upon the copyright of HABANA et al . by publishing DEP, whichthe latter alleged to be a reproduction, or in the least, a substantial reproduction of CET? Both the trial courtand respondent court found in the negative. I submit they were correct.

To constitute infringement, the usurper must have copied or appropriated the "original" work of an author or copyright proprietor; 15 absent copying, there can be no infringement of copyright. 16 In turn, a work isdeemed by law an original if the author created it by his own skill, labor and judgment. 17 On its part, acopy is that which comes so near to the original so as to give to every person seeing it the idea created bythe original. It has been held that the test of copyright infringement is whether an ordinary observer comparing the works can readily see that one has been copied from the other. 18 A visual comparison of the portions of CET 19 juxtaposed against certain pages of DEP, 20 would inescapably lead to a conclusionthat there is a discernible similarity between the two; however, as correctly assessed by respondent courtand the lower court, no conclusion, can be drawn that DEP, in legal contemplation, is a copy of CET.



Cases on Copyright

Was DEP a substantial reproduction of CET? To constitutes a substantial reproduction, it is not necessarythat the entire copyrighted work, or even a large portion of it, be copied, if so much is taken that the valueof the original is substantially diminished, or if the labors of the original author are substantially, and to aninjurious extent, appropriated. 21 But the similarity of the books here does not amount to an appropriationof a substantial portion of CET. If the existence of substantial similarities does not of itself establish

infringement, 22 mere similarities (not substantial similarities) in some sections of the books in questiondecisively militate against a claim for infringement where the similarities had been convincingly establishedas proceeding from a number of reasons and/or factors.

1. As both books are grammar books, they inevitably deal with the same subjects typically and ordinarilytreated by writers of such genre, 23 e.g ., system of book classification, the different kinds of card catalogsand their entries, use of punctuation marks, paragraphs, the characteristics of an effective paragraph,language structure, different parts of a book, etc. These standard subjects fall within the domain of ideas,concepts, universal and general knowledge that have, as admitted by the protagonists here, been inexistence for quite a long time. 24 As such, HABANA, et al . cannot demand monopoly, by way of example,in the use of the recognized library classification systems (Dewey Decimal System and the Library of Congress System), or how a book can be divided into parts (frontispiece, title page, copyright page,preface, table of contents, etc.) or to the different headings used in a card catalogue (title card, author card

and subject card), since these are of common or general knowledge. Even in this jurisdiction, no protectioncan be extended to such an idea, procedure, system method or operation, concept, principle, discovery or mere data, even if expressed, explained, illustrated or embodied in a work. 25

2. As found by respondent court, CET and DEP had common sources and materials, 26 such that theparticular portions claimed to have been lifted and literally reproduced also appeared in earlier works,mostly by foreign authors. This is clear from the testimony of petitioner Dr. Pacita Habana:

Q Let's clarify your position Dra. Habana. When defendants test (sic )showed 10 words similar to yours, you so concluded it was (sic ) copied fromyours but when I pointed out to you same (sic ) words contained in the earlier book of Wills then you earlier in your test in your book ( sic ) you refused toadmit that it was copied from Wills.

A Yes, sir. We have never — all 35 words were copied from there.Q But what I am asking how could you conclude that by just similarity of 10words of defendants words that was copied from yours [sic ] and when I pointout to you the similarity of that same words from the words earlier than yours(sic ) you refused to admit that you copied?

A I would like to change the final statement now that in the case of defendantRobles you pointed out her source very clear. She copied it from that bookby Wills.

Q So, she did not copy it from yours?

A Alright, maybe she did not copy it but definitely it is a pattern of plagerism[sic ]. 27

3. Similarity in orientation and style can likewise be attributed to the exposure of the authors to the APCASsyllabus and their respective academic experience, teaching approaches and methodology. It is notfarfetched that they could have even influenced each other as textbook writers. ROBLES and Dr. PacitaHabana were faculty members of the Institute of English of the Far Eastern University from 1964 to1974. 28 Both were ardent students, researchers, lecturers, textbook writers and teachers of English andgrammar. They even used to be on friendly terms with each other, to the extent that Dr. Habana admittedthat ROBLES assisted the former in the preparation of her doctoral dissertation. Given their near-identicalacademic and professional background, it is natural they would use many expressions and definitionspeculiar to teaching English grammar. It comes therefore with no surprise that there are similarities in someparts of the rival books. Indeed, it is difficult to conceive how writers on the same subject matter can very



Cases on Copyright

well avoid resorting to common sources of information and materials and employing similar expressionsand terms peculiar to the subject they are treating. 29

To illustrate, an excerpt from page 21 of CET reads:

Author Card

The author card is the main entry card. It contains

1. the author's complete name on the first line, surname first, which may befollowed by the date of his birth and death if he is no longer living;

2. the title of the book, and the subtitle, if there is one;

3. the edition, if it is not the first;

4. the translator or illustrator, if there is any;

5. the imprint which includes the publisher, the place and date of publication;

6. the collation composed of the number of pages, volume, illustrations, andthe size of the book;

7. the subjects with which the book deals [sic ];

8. the call number on the upper left-hand corner.

Names beginning with Mc, or M are filed in the card catalog as though spelled out as MAC,for example Mc Graw — MacGraw. The same is true of St. and Saint.

While a portion of DEP found on page 18 which discusses the author card provides:

The author card is the main entry card containing:


2. the title of the book, and the subtitle if there is one;


4. the translator or illustrator, if any;


6. the collation, composed of the number of pages, volume, illustrations, andthe size of the book;

7. the subject with which the book deals; and

8. the call number on the upper-left hand corner.

Names beginning with MC, or M are filed in the card catalog considered spelled out asMAC, for example: Mcleod-Macleod. This is true also of St. and Saint.

The entries found in an author card, having been developed over quite sometime, are expectedly uniform.Hence, HABANA et al . and ROBLES would have no choice but to articulate the terms particular to theentries in an identical manner.

I thus find that the ruling of the respondent court is totally supported by the evidence on record. Of doctrinalpersuasion is the principle that factual determinations of the Court of Appeals and the trial court areconclusive and binding upon this Court, and the latter will not, as a rule, disturb these findings unlesscompelling and cogent reasons necessitate a reexamination, if not a reversal, of the same. 30 Testedagainst this jurisprudential canon, to subject the challenged decision of the Court of Appeals to further scrutiny would be superfluous, if not, improvident.



Cases on Copyright

I am not persuaded by the claim of HABANA, et al . that Laktaw is on all fours with and hence applicable tothe case at bar. There, this Court disposed that defendant, without the consent of and causing irreparabledamage to Laktaw, reproduced the latter's literary work Diccionario Hisapano-Tagalog, and improperlycopied the greater part thereof in the work Diccionariong Kastila-Tagalog published by defendant, inviolation of Article 7 of the Law of 10 January 1879 on Intellectual Property. This Court anchored its

decision on the following observations:(1) [O] the 23,560 Spanish words in the defendant'sdictionary . . . only 3,108 words are the defendant's own, or, what is the same thing, thedefendant has added only this number of words to those that are in the plaintiff's dictionary,he having reproduced or copied the remaining 20,452 words;

(2) [T]he defendant also literally reproduced and copied for the Spanish words in hisdictionary, the equivalents, definitions and different meanings in Tagalog, given in plaintiffsdictionary, having reproduced, as to some words, everything that appears in the plaintiff'sdictionary for similar Spanish words, although as to some he made some additions of hisown. Said copies and reproductions are numerous. . .;

(3) [T]he printer's errors in the plaintiff's dictionary as to the expression of some words in

Spanish as well as their equivalents in Tagalog are also reproduced, a fact which shows that thedefendant, in preparing his dictionary, literally copied those Spanish words and their meaningsand equivalents in Tagalog from the plaintiff's dictionary. 31

Plainly, the rationale in Laktaw does not apply in this case. First, aside from an isolated accounting of thenumber of words supposedly usurped in a segment of DEP from CET, 32 the records do not disclose thatall the words allegedly copied were tallied and that the words thus tallied were numerous enough to supporta finding of copying. Second, as already conceded, while there is an identity in the manner by which someof the ideas and concepts were articulated, this prescinded from various factors already elucidated.Besides, ROBLES' testimony that she made an independent investigation or research of the original worksor authors she consulted was unrebutted; 33 for germane here is the question of whether the allegedinfringer could have obtained the same information by going to the same source by her own independentresearch. 34 ROBLES convinced the trial court and the Court of Appeals on this; thus, we are bound by thisfactual determination, as likewise explained earlier. Third, reproduction of the printer's errors or the author'sblunders and inaccuracies in the infringing copy does not ipso facto constitute copying or plagiarism or infringement, but it is conceded that they are telltale signs that infringement might have beencommitted. 35 However, the records do not reveal this to be the case. Fourth, the law on intellectualproperty violated in Laktaw was a world and time apart from R.A. No. 8293 or even P.D. No. 49. Thus,under Article 7 of the Law of 10 January 1879, the Court ruled that nobody could reproduce another person's work without the owner's consent, even merely to annotate or add anything to it, or improve anyedition thereof. The more recent laws on intellectual property, however, recognize recent advancements intechnology transfer and information dissemination. They thus allow the use of copyrighted materials if compatible with fair use and to the extent justified for the purpose. In particular, the new laws sanction thefair use of copyrighted work for criticism, comment, news reporting, teaching including multiple copies for classroom use, scholarship, research and similar purposes. 36 Further, the limitations of the exclusive useof copyrighted materials under Sections 10 and 11 of P.D. No. 49 in consonance with the principle of fair

use have been reproduced and incorporated in the new law. 37 All told, Laktaw is inapplicable.1âwphi1.nêt

Fair use has been defined as a privilege to use the copyrighted material in a reasonable manner withoutthe consent of the copyright owner or as copying the theme or ideas rather than their expression. 38 Noquestion of fair or unfair use arises however, if no copying is proved to begin with. This is in consonancewith the principle that there can be no infringement if there was no copying. 39 It is only where some form of copying has been shown that it becomes necessary to determine whether it has been carried to an "unfair,"that is, illegal, extent. 40Consequently, there is no reason to address the issue of whether ROBLES abuseda writer's right to fair use with the ascertainment that DEP was not a copy or a substantial copy of CET.

WHEREFORE, I vote to DENY the petition and to AFFIRM the challenged decision of 27 June 1997 of the



Cases on Copyright

Court of Appeals.

Separate Opinions

DAVIDE, JR., C.J., dissenting opinion:

I am unable to join the majority view.

From the following factual and procedural antecedents, I find no alternative but to sustain both the trialcourt and the Court of Appeals.

On 12 July 1988, HABANA, et al . filed with the trial court a complaint for infringement and unfair competition, with damages against private respondent Felicidad C. Robles (hereafter ROBLES) and her publisher and distributor, Goodwill Trading Co., Inc. (hereafter GOODWILL). The case was docketed asCivil Case No. 88-1317.

HABANA, et al . averred in their complaint that they were the co-authors and joint copyright owners of their published works College English for Today, Books 1 and 2 (hereafter CET) and Workbook for CollegeFreshman English, Series 1 1; they discovered that ROBLES' own published works, Developing EnglishProficiency, Books 1 and 2, (hereafter DEP), published and distributed in 1985, exhibited an uncannyresemblance, if not outright physical similarity, to CET as to content, scheme, sequence of topics and

ideas, manner of presentation and illustrative examples; the plagiarism, incorporation and reproduction of particular portions of CET into DEP could not be gainsaid since ROBLES was substantially familiar withCET and the textual asportation was accomplished without their authority and/or consent; ROBLES andGOODWILL jointly misrepresented DEP (over which they shared copyright ownership) "as the former'soriginal published works and concept;" and "notwithstanding formal demands made . . . to cease and desistfrom the sale and distribution of DEP, [ROBLES and GOODWILL] persistently failed and refused to complytherewith." HABANA et al . then prayed for the court to: (1) order the submission and thereafter thedestruction of all copies of DEP, together with the molds, plates, films and other materials used in theprinting thereof; (2) require ROBLES and GOODWILL to render an accounting of the sales of the "infringingworks from the time of its (sic ) inceptive publication up to the time of judgment, as well as the amount of sales and profits . . . derived;" and (3) to enjoin ROBLES and GOODWILL to solidarily pay actual, moraland exemplary damages, as well as attorney's fees and expenses of litigation.

In its Answer, GOODWILL denied culpability since "it had no knowledge or information sufficient to form abelief as to the allegations of plagiarism, incorporation and reproduction" and hence "could not be privy tothe same, if (there were) any;" and that in an Agreement with co-defendant ROBLES, the latter would besolely responsible for acts of plagiarism or violations of copyright or any other law, to the extent of answering for any and all damages GOODWILL may suffer. GOODWILL also interposed a compulsorycounterclaim against PACITA, et al . and a crossclaim against its co-defendant anchored on theaforementioned Agreement.

In her answer, ROBLES asserted that: (1) DEP was the exclusive product of her independent research,studies and experience; (2) DEP, particularly the segments where the alleged literal similitude appeared,were admittedly influenced or inspired by earlier treatises, mostly by foreign authors; but that "influencesand/or inspirations from other writers" like the methodology and techniques as to presentation, teachingconcept and design, research and orientation which she employed, fell within the ambit of general

information, ideas, principles of general or universal knowledge which were commonly and customarilyunderstood as incapable of private and exclusive use, appropriation or copyright; and (3) her works werethe result of the legitimate and reasonable exercise of an author's "right to fair use of even copyrightedmaterials as [a] guide." She further claimed that her various national and regional professional activities ingeneral education, language and literature, as well as her teaching experience in graduate and postgraduate education would obviate the remotest possibility of plagiarism.

ROBLES likewise suggested that any similarity between DEP and CET as regards scope and sequencecould be attributed to "the orientation of the authors to the scope and sequence or syllabus — whichincorporates standards known among English grammar book writers — of the subject-matter for BasicCommunication Arts recommended by the Association of Philippine Colleges of Arts and Sciences



Cases on Copyright

(APCAS)." While the syllabus was admittedly adopted in DEP, she claimed to have treated quite differentlyin DEP the very ideas, techniques or principles expressed in CET such that neither textbook could beconsidered a copy or plagiarism of the other.

At the pre-trial conference, the parties agreed to a stipulation of facts 2 and for the court to first resolve theissue of infringement before disposing of the claims for damages. After trial on the merits, the trial courtrendered its decision in favor of defendants, the dispositive portion of which reads:

WHEREFORE, premises considered, the Court hereby orders that the complaint filedagainst defendants Felicidad Robles and Goodwill Trading Co., Inc. shall be DISMISSED:that said plaintiffs solidarily reimburse defendant Robles for P20,000.00 attorney's fees anddefendant Goodwill for P5,000.00 attorney's fees. Plaintiffs are liable for costs of suit.

IT IS SO ORDERED. 3

Noting that the law applicable to the case was Presidential Decree No. 49, 4 the trial court found thatHABANA, et al . failed to discharge their onus of proving that ROBLES and GOODWILL committed actsconstituting copyright infringement. Moreover, the trial court found that "the cause of action or actscomplained of [were] not covered by said decree" as Section 10 thereof barred authors of works alreadylawfully made accessible to the public from prohibiting the reproductions, translations, adaptations,

recitation and performance of the same, while Section 11 allowed the utilization of reproductions,quotations and excerpts of such works. The trial court thus agreed with ROBLES that "the complained acts[were] of general and universal knowledge and use which plaintiffs cannot claim originality or seek redressto the law for protection" and observed that DEP and CET had the same sources, consisting chiefly of earlier works, mostly foreign books. GOODWILL's crossclaim against ROBLES, counterclaim againstHABANA, et al . as well as ROBLES' compulsory counterclaim against GOODWILL were all dismissed for lack of factual and legal bases.

HABANA, et al . appealed to the Court of Appeals. The case was docketed as CA-G.R. CV No. 44053.Before said court HABANA, et al ., in the main, argued that the trial court totally disregarded their evidenceand merely subscribed to ROBLES' arguments. The Court of Appeals, however, likewise disposed of thecontroversy in favor of ROBLES and GOODWILL. 5

However, the Court of Appeals modified the trial court's decision by reversing the award for attorney's fees.It held that the good faith and sincerity of HABANA, et al . in commencing the action negated the basistherefor. Their motion for reconsideration having been denied for want of cogent reasons, HABANA, et al .,instituted this petition. They claim that the Court of Appeals committed reversible error in failing toappreciate: (1) the insuperable evidence and facts admitted and proved demonstrating plagiarism or piracyand instead afforded full weight and credit to ROBLES' matrix of general, hypothetical and sweepingstatements and/or defenses; (2) ROBLES' and GOODWILL's animo furandi or intent to appropriate or copyCET with the non-removal of the damaging copies of DEP from the bookstores despite notice to withdrawthe same; and (3) the fact that ROBLES abused a writer's right to fair use, in violation of Section 11 of P.D.No. 49. 6 They invoke Laktaw v . Paglinawan 7 which, they theorize is on all fours with the case at bar.ROBLES contends that appeal by certiorari does not lie in this case for the challenged decision and the trialcourt's judgment were amply supported by evidence, pertinent laws and jurisprudence. Hence, her counterclaim for moral damages should, therefore, be granted or for us to order the remand of the case to

the trial court for reception of evidence on damages. GOODWILL, on its part, stood pat on its disclaimer,with the assertion that no proof was ever introduced. that it co-authored DEP or that it singly or in cabalwith ROBLES committed any act constituting copyright infringement.

The core issue then is whether or not the Court of Appeals erred in affirming the trial court's judgment thatdespite the apparent textual, thematic and sequential similarity between DEP and CET, no copyright wascommitted by ROBLES and GOODWILL.

While the complaint, in Civil Case No. 88-1317 was filed during the effectivity of P.D. No. 49, the provisionsof the new intellectual property law, R.A. No. 8293, 8 nevertheless bears significance here. It took effect on1 January 1998, but its Section 239.3 clearly states that its provisions shall apply to works in which



Cases on Copyright

copyright protection obtained prior to the effectivity of the Act subsists, provided, however, that theapplication of the Act shall not result in the diminution of such protection. Also, the philosophy behind bothstatutes as well as the essential principles of copyright protection and copyright infringement have, to acertain extent, remained the same.

A copyright may be accurately defined as the right granted by statute to the proprietor of an intellectualproduction to its exclusive use and enjoyment to the extent specified in the statute. 9 Under Section 177 of R.A. No. 8293, 10the copy or economic right (copyright and economic right are used interchangeably in thestatute) consists of the exclusive right to carry out, authorize or prevent the following acts:

177.1 Reproduction of the work or substantial portion of the work;

177.2 Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;


177.4 Rental of the original or a copy of an audiovisual or cinematographic work, a workembodied in a sound recording, a computer program, a compilation of data and other

materials or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental;

177.5 Public display of the original or a copy of the work;


177.7 Other communication to the public of the work.

"The work," as repeatedly mentioned, refers to the literary and artistic works defined as original intellectualcreations in the literary and artistic domain protected from the moment of their creation and enumerated inSection 172.1, which includes books and other literary, scholarly, scientific and artistic works. 11

Stripped in the meantime of its indisputable social and beneficial functions, 12 the use of intellectualproperty or creations should basically promote the creator or author's personal and economic gain. Hence,

the copyright protection extended to the creator should ensure his attainment of some form of personalsatisfaction and economic reward from the work he produced. Without conceding the suitability of Laktawas precedent, the Court there quoted Manresa and explained:

He who writes a book, or carves a statute, or makes an invention, has the absolute right toreproduce or sell it, just as the owner of the land has the absolute right to sell it or its fruits. Butwhile the owner of the land, by selling it and its fruits, perhaps fully realizes all its economicvalue, by receiving its benefits and utilities, which are represented for example, by the price, onthe other hand the author of a book, statue or invention does not reap all the benefits andadvantages of his own property by disposing of it, for the most important form of realizing theeconomic advantages of a book, statue or invention, consists in the right to reproduce it insimilar or like copies, everyone of which serves to give to the person reproducing them all theconditions which the original requires in order to give the author the full enjoyment thereof. If theauthor of a book, after its publication, cannot prevent its reproduction by any person who may

want to reproduce it, then the property right granted him is reduced to a very insignificant thingand the effort made in the production of the book is in no way rewarded. 13

The execution, therefore, of any one or more of the exclusive rights conferred by law on a copyright owner,without his consent, constitutes copyright infringement. In essence, copyright infringement, known ingeneral as "piracy," is a trespass on a domain owned and occupied by a copyright owner; it is violation of aprivate right protected by law.14 With the invasion of his property rights, a copyright owner is naturallyentitled to seek redress, enforce and hold accountable the defrauder or usurper of said economic rights.

Now, did ROBLES and GOODWILL infringe upon the copyright of HABANA et al . by publishing DEP, whichthe latter alleged to be a reproduction, or in the least, a substantial reproduction of CET? Both the trial court



Cases on Copyright

and respondent court found in the negative. I submit they were correct.

To constitute infringement, the usurper must have copied or appropriated the "original" work of an author or copyright proprietor; 15 absent copying, there can be no infringement of copyright. 16 In turn, a work isdeemed by law an original if the author created it by his own skill, labor and judgment. 17 On its part, acopy is that which comes so near to the original so as to give to every person seeing it the idea created bythe original. It has been held that the test of copyright infringement is whether an ordinary observer comparing the works can readily see that one has been copied from the other. 18 A visual comparison of the portions of CET 19 juxtaposed against certain pages of DEP, 20 would inescapably lead to a conclusionthat there is a discernible similarity between the two; however, as correctly assessed by respondent courtand the lower court, no conclusion, can be drawn that DEP, in legal contemplation, is a copy of CET.

Was DEP a substantial reproduction of CET? To constitutes a substantial reproduction, it is not necessarythat the entire copyrighted work, or even a large portion of it, be copied, if so much is taken that the valueof the original is substantially diminished, or if the labors of the original author are substantially, and to aninjurious extent, appropriated. 21 But the similarity of the books here does not amount to an appropriationof a substantial portion of CET. If the existence of substantial similarities does not of itself establishinfringement, 22 mere similarities (not substantial similarities) in some sections of the books in questiondecisively militate against a claim for infringement where the similarities had been convincingly established

as proceeding from a number of reasons and/or factors.

1. As both books are grammar books, they inevitably deal with the same subjects typically and ordinarilytreated by writers of such genre, 23 e.g ., system of book classification, the different kinds of card catalogsand their entries, use of punctuation marks, paragraphs, the characteristics of an effective paragraph,language structure, different parts of a book, etc. These standard subjects fall within the domain of ideas,concepts, universal and general knowledge that have, as admitted by the protagonists here, been inexistence for quite a long time. 24 As such, HABANA, et al . cannot demand monopoly, by way of example,in the use of the recognized library classification systems (Dewey Decimal System and the Library of Congress System), or how a book can be divided into parts (frontispiece, title page, copyright page,preface, table of contents, etc.) or to the different headings used in a card catalogue (title card, author cardand subject card), since these are of common or general knowledge. Even in this jurisdiction, no protectioncan be extended to such an idea, procedure, system method or operation, concept, principle, discovery or

mere data, even if expressed, explained, illustrated or embodied in a work. 25

2. As found by respondent court, CET and DEP had common sources and materials, 26 such that theparticular portions claimed to have been lifted and literally reproduced also appeared in earlier works,mostly by foreign authors. This is clear from the testimony of petitioner Dr. Pacita Habana:

Q Let's clarify your position Dra. Habana. When defendants test (sic )showed 10 words similar to yours, you so concluded it was (sic ) copied fromyours but when I pointed out to you same (sic ) words contained in the earlier book of Wills then you earlier in your test in your book ( sic ) you refused toadmit that it was copied from Wills.

A Yes, sir. We have never — all 35 words were copied from there.

Q But what I am asking how could you conclude that by just similarity of 10words of defendants words that was copied from yours [sic ] and when I pointout to you the similarity of that same words from the words earlier than yours(sic ) you refused to admit that you copied?

A I would like to change the final statement now that in the case of defendantRobles you pointed out her source very clear. She copied it from that bookby Wills.

Q So, she did not copy it from yours?

A Alright, maybe she did not copy it but definitely it is a pattern of plagerism



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[sic ]. 27

3. Similarity in orientation and style can likewise be attributed to the exposure of the authors to the APCASsyllabus and their respective academic experience, teaching approaches and methodology. It is notfarfetched that they could have even influenced each other as textbook writers. ROBLES and Dr. PacitaHabana were faculty members of the Institute of English of the Far Eastern University from 1964 to1974. 28 Both were ardent students, researchers, lecturers, textbook writers and teachers of English andgrammar. They even used to be on friendly terms with each other, to the extent that Dr. Habana admittedthat ROBLES assisted the former in the preparation of her doctoral dissertation. Given their near-identicalacademic and professional background, it is natural they would use many expressions and definitionspeculiar to teaching English grammar. It comes therefore with no surprise that there are similarities in someparts of the rival books. Indeed, it is difficult to conceive how writers on the same subject matter can verywell avoid resorting to common sources of information and materials and employing similar expressionsand terms peculiar to the subject they are treating. 29

To illustrate, an excerpt from page 21 of CET reads:

Author Card

The author card is the main entry card. It contains


2. the title of the book, and the subtitle, if there is one;


4. the translator or illustrator, if there is any;


6. the collation composed of the number of pages, volume, illustrations, andthe size of the book;

7. the subjects with which the book deals [sic ];

8. the call number on the upper left-hand corner.

Names beginning with Mc, or M are filed in the card catalog as though spelled out as MAC,for example Mc Graw — MacGraw. The same is true of St. and Saint.

While a portion of DEP found on page 18 which discusses the author card provides:

The author card is the main entry card containing:


2. the title of the book, and the subtitle if there is one;


4. the translator or illustrator, if any;


6. the collation, composed of the number of pages, volume, illustrations, andthe size of the book;

7. the subject with which the book deals; and

8. the call number on the upper-left hand corner.

Names beginning with MC, or M are filed in the card catalog considered spelled out as



Cases on Copyright

MAC, for example: Mcleod-Macleod. This is true also of St. and Saint.

The entries found in an author card, having been developed over quite sometime, are expectedly uniform.Hence, HABANA et al . and ROBLES would have no choice but to articulate the terms particular to theentries in an identical manner.

I thus find that the ruling of the respondent court is totally supported by the evidence on record. Of doctrinalpersuasion is the principle that factual determinations of the Court of Appeals and the trial court areconclusive and binding upon this Court, and the latter will not, as a rule, disturb these findings unlesscompelling and cogent reasons necessitate a reexamination, if not a reversal, of the same. 30 Testedagainst this jurisprudential canon, to subject the challenged decision of the Court of Appeals to further scrutiny would be superfluous, if not, improvident.

I am not persuaded by the claim of HABANA, et al . that Laktaw is on all fours with and hence applicable tothe case at bar. There, this Court disposed that defendant, without the consent of and causing irreparabledamage to Laktaw, reproduced the latter's literary work Diccionario Hisapano-Tagalog, and improperlycopied the greater part thereof in the work Diccionariong Kastila-Tagalog published by defendant, inviolation of Article 7 of the Law of 10 January 1879 on Intellectual Property. This Court anchored itsdecision on the following observations:

(1) [O] the 23,560 Spanish words in the defendant'sdictionary . . . only 3,108 words are the defendant's own, or, what is the same thing, thedefendant has added only this number of words to those that are in the plaintiff's dictionary,he having reproduced or copied the remaining 20,452 words;

(2) [T]he defendant also literally reproduced and copied for the Spanish words in hisdictionary, the equivalents, definitions and different meanings in Tagalog, given in plaintiffsdictionary, having reproduced, as to some words, everything that appears in the plaintiff'sdictionary for similar Spanish words, although as to some he made some additions of hisown. Said copies and reproductions are numerous. . .;

(3) [T]he printer's errors in the plaintiff's dictionary as to the expression of some words inSpanish as well as their equivalents in Tagalog are also reproduced, a fact which shows that thedefendant, in preparing his dictionary, literally copied those Spanish words and their meaningsand equivalents in Tagalog from the plaintiff's dictionary. 31

Plainly, the rationale in Laktaw does not apply in this case. First, aside from an isolated accounting of thenumber of words supposedly usurped in a segment of DEP from CET, 32 the records do not disclose thatall the words allegedly copied were tallied and that the words thus tallied were numerous enough to supporta finding of copying. Second, as already conceded, while there is an identity in the manner by which someof the ideas and concepts were articulated, this prescinded from various factors already elucidated.Besides, ROBLES' testimony that she made an independent investigation or research of the original worksor authors she consulted was unrebutted; 33 for germane here is the question of whether the allegedinfringer could have obtained the same information by going to the same source by her own independentresearch. 34 ROBLES convinced the trial court and the Court of Appeals on this; thus, we are bound by thisfactual determination, as likewise explained earlier. Third, reproduction of the printer's errors or the author'sblunders and inaccuracies in the infringing copy does not ipso facto constitute copying or plagiarism or

infringement, but it is conceded that they are telltale signs that infringement might have beencommitted. 35 However, the records do not reveal this to be the case. Fourth, the law on intellectualproperty violated in Laktaw was a world and time apart from R.A. No. 8293 or even P.D. No. 49. Thus,under Article 7 of the Law of 10 January 1879, the Court ruled that nobody could reproduce another person's work without the owner's consent, even merely to annotate or add anything to it, or improve anyedition thereof. The more recent laws on intellectual property, however, recognize recent advancements intechnology transfer and information dissemination. They thus allow the use of copyrighted materials if compatible with fair use and to the extent justified for the purpose. In particular, the new laws sanction thefair use of copyrighted work for criticism, comment, news reporting, teaching including multiple copies for classroom use, scholarship, research and similar purposes. 36 Further, the limitations of the exclusive use



Cases on Copyright

of copyrighted materials under Sections 10 and 11 of P.D. No. 49 in consonance with the principle of fair use have been reproduced and incorporated in the new law. 37 All told, Laktaw is inapplicable.

Fair use has been defined as a privilege to use the copyrighted material in a reasonable manner withoutthe consent of the copyright owner or as copying the theme or ideas rather than their expression. 38 Noquestion of fair or unfair use arises however, if no copying is proved to begin with. This is in consonancewith the principle that there can be no infringement if there was no copying. 39 It is only where some form of copying has been shown that it becomes necessary to determine whether it has been carried to an "unfair,"that is, illegal, extent. 40Consequently, there is no reason to address the issue of whether ROBLES abuseda writer's right to fair use with the ascertainment that DEP was not a copy or a substantial copy of CET. 1âwphi1.nêt

WHEREFORE, I vote to DENY the petition and to AFFIRM the challenged decision of 27 June 1997 of theCourt of Appeals.

Footnotes

1 Rule 45, 1997 Rules of Civil Procedure.

2 In CA-G. R. CV No. 44053, promulgated on June 27, 1997, J. Tuquero, ponente, JJ. Luna andHofilena, concurring, Rollo, pp. 28-35.

3 Rollo, p. 43.

4 Original Record Vol. I, Complaint, pp. 1-7.

5 Docketed as Civil Case No. 88-1317 and assigned to Branch 36.

6 Original Record Vol. I, Motion for Bill of Particulars, pp. 30-31.

7 Ibid , Answer, pp. 33-39.

8 Original Record, Vol. I, Answer, pp. 134-139.

9 Ibid ., pp. 137-138.

10 Ibid ., pp. 205-206.

11 Original Record, Vol. I, Judgment, pp. 415-435.12 Ibid ., Notice of Appeal, p. 436.

13 Docketed as CA-G.R. CV No. 44053.

14 CA Rollo, Brief for Plaintiffs-Appellants Pacita I. Habana, Alicia L. Cinco and Pacita N. Fernando,pp. 41-90, 47, 48, 49.

15 Decision, by Justice Artemio G. Tuquero, ponente, concurred in by J. Artemon D. Luna and J.Hector L. Hofilena, CA Rollo, p. 6.

16 CA Rollo, pp. 198-203.

17 Ibid ., p. 236.

18 Rollo, Petition, p. 10.

19 Intellectual Property Code of the Philippines (Republic Act No. 8293), p. 51.

20 Intellectual Property Code of the Philippines, Republic Act No. 8293, pp. 55-56.

21 Sec. 172, Intellectual Property Code of the Philippines.

22 Volume I, Original Record, Exh. S-1, p. 211.

23 Ibid ., Exh. S-2, p. 215.

24 Volume 1, Original Record, Annex "Z", p. 89.



Cases on Copyright

25 Ibid , Annex "V" p. 111.

26 Page 24 of CET as to examples 2, 9, 11, and 14 also found on p. 33 of DEP; similarity intechnique and presentation on page 15 of CET and page 27 of DEP; on page 18, 20 and 21 of CETand page 29 of DEP; on page 74 of CET and page 86 of DEP, Original Record, Volume 1, Exhibitspp. 73, 91, 93, 96 and 97.

27 18 Am Jur 2D 104 citing Mazer v. Stein, 347 US 218, 98 L ed 630, 74 S Ct 460, reh den 347 US949, 98 L ed 1096, 74 S Ct 637 [1953].

28 Columbia Pictures Inc. vs. Court of Appeals, 261 SCRA 144, 184, citing 18 CJS, Copyright andLiterary Property, Sec 94, 217, 218.

29 18 CJS, Copyright and Literary Property, Sec. 90, 212; 18 Am Jur 2D, Copyright and LiteraryProperty, Sec. 106, 391-392.

30 Ibid .

DAVIDE, JR., C.J., dissenting opinion;

1 Original Record (OR), 10-12. The certificates of copyright registration for the three books were

dated 3 August 1976, 13 October 1977 and 17 July 1973, respectively.2 OR, 205-206.

3 OR, 415-435. The decision was rendered by Marvie R. Abraham Singson, Assisting Judge per S.C. Adm. Order No. 124-92.

4 Entitled Decree on the Protection of Intellectual Property, promulgated on 14 November 1972.

5 Per Associate Justice Artemio Tuquero, J.; with Artemon D. Luna and Hector L. Hofilena, JJ.,concurring.

6 Sec. 11. To an extend (sic ) compatible with fair practice and justified by the scientific, critical,informatory or educational purpose, it shall be permissible to make quotations or excerpts from awork already lawfully made accessible to the public. Such quotations may be utilized in their original

form or in translation.News items, editorials, and articles on current political, social, economic, scientific or religious topicmay be reproduced by the press or broadcast, unless they contain or are accompanied by a noticethat their reproduction or publication is reserved. In case of musical works, parts of little extent mayalso be reproduced.

Quotations and excerpts as well as reproductions shall always be accompanied by anacknowledgment of the source and name of author, if his name appears thereon.

7 44 Phil 855 [1918].

8 Entitled An Act Prescribing the Intellectual Property Code and Establishing the IntellectualProperty Office, Providing for its Powers and Functions, and For Other Purposes.

9 18 C.J.S. Copyright and Literary Property §1 (hereafter 18 C.J.S.).

10 Similar rights were granted under P.D. No. 49, thus:

Sec. 5. Copyright shall consist in the exclusive right:

(A) To print, reprint, publish, copy, distribute, multiply, sell and make photographs,photo-engravings, and pictorial illustrations of the works;

(B) To make any translation or other version or extracts or arrangements or adaptations thereof; to dramatize it if it be a non-dramatic work; to convert it into anon-dramatic work if it be a drama; to complete or execute it if it be a model or design;



Cases on Copyright

(C) To exhibit, perform, represent, produce, or reproduce the work in any manner or by any method whatever for profit or otherwise; if not reproduced in copies for sale,to sell any manuscript or any record whatsoever thereof;

(D) To make any other use or disposition of the work consistent with the laws of theland.

11 Sec. 172. Literary and Artistic Works. — 172.1 Literary and artistic works, hereinafter referred toas "works," are original intellectual creations in the literary and artistic domain protected from themoment of their creation and shall include in particular:

(a) Books, pamphlets, articles and other writings;

(b) Periodicals and newspapers;

(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or other material form;

(d) Letters;

(e) Dramatic or dramatico-musical compositions; choreographic works or

entertainment in dumb shows;(d) Musical compositions, with or without words;

(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models or designs for works of art;

(h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art;

(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relativeto geography, topography, architecture or science;

(j) Drawings or plastic works of a scientific or technical character;

(k) Photographic works including works produced by a process analogous to

photography; lantern slides;

(l) Audiovisual works and cinematographic works and works produced by a processanalogous to cinematography or any process for making audio-visual recordings;

(m) Pictorial illustrations and advertisements;

(n) Computer programs; and

(o) Other literary, scholarly, scientific and artistic works.

12 The use of intellectual property bears a social function. To this end, the State shall promote thediffusion of knowledge and information for the promotion of national development and progress andthe common good. (Section 2 of RA 8293) Further, the social interest in copyright lies in theadjustment of two objectives: the encouraging of individuals to intellectual labor by assuring them of

just rewards, and by securing to society of the largest benefits of their products. The history of theconcept reflects our progress in the mechanical communications, our ideas of property and thefunctions of the state, and our changing social ethics. 2 ARTURO M. TOLENTINO, THE CIVILCODE OF THE PHILIPPINES 517 [1992].

13 Supra note 7 at 864-865.

14 See Columbia Pictures, Inc. v. Court of Appeals, 261 SCRA 144, 183-184 [1996] citing 18 C.J.S.§90; 18 AM JUR 2D, Copyright and Literary Property, §106 (hereinafter 18 AM JUR 2D).

15 See 18 AM JUR 2D §101 citing Weitzenkorn v. Lesser, 40 Cal 2d 778, 256 P2d 947 [1953]. Thetest of originality is not whether the work was entirely new, but whether it was the result of



Cases on Copyright

independent effort or copying. 18 AM JUR 2D § 101 citing Sheldon v. Metro-Goldwyn PicturesCorp., (CA2 NY) 81 F2d 49, cert den 298 US 669, 80 L ed 1392, 56 S Ct 835 [1936]; Golding v.R.K.O. Pictures, Inc., 35 Cal 2d 690, 221 P2d 95 [1950].

16 18 AM JUR 2D, § 104 citing Mazer v. Stein, 347 US 218, 98 L ed 630, 74 S Ct 460, reh den 347US 949, 98 L ed 1096, 74 S Ct 637 [1953].

17 See Dorsey v. Old Surety L. Ins. Co., (CAIO) 98 F2d 872 [1938].

18 Abiva v. Weinberger (C.A.), 62 OG 3784, 3787 [1964] citing 34 CJ.S. §34 and 17 U.S.C.A. §101;Lewis v. Kroger Co., 109 F. Supp. 484 [1952].

19 Exhibits "I" to "I-25" or Annexes "A" to "AA" of the Bill of Particulars.

20 Exhibits "J" to "J-21" or Annexes "BB to WW" of the Bill of Particulars.

21 See 18 AM JUR 2D §108 citing Universal Pictures Co. v. Harold Lloyd Corp., (CA9 Cal) 162 F2d354 [1947]; Toksvig v. Bruce Pub. Co., (CA7 Wis) 181 F2d 664 [1950]; Sheldon v. Metro-GoldwynPictures Corp., supra note 18.

22 Id ., citing Twentieth Century-Fox Film Corp. v. Stonesifer, (CA9 Cal) 140 F2d 579 [1944].

23 Similarity of the alleged infringing work to the author's or proprietor's copyrighted work does notof itself establish copyright infringement, if the similarity results from the fact that both works dealwith the same subject or have the same common source. 18 AM JUR 2D §107 citing Dorsey v. OldSurety L. Ins. Co.,supra note 20.

24 Per testimony of Dr. Pacita Habana — on the system of library classification, TSN, 11 July 1989,44-45; on the kinds of card catalogue and their entries, TSN, 11 July 1989, 56-58; on different partsof books and their definitions, 59; uses of paragraph; uses of punctuations 75-76; use of phonemes,graphemes and morphemes, 78. Per testimony of Felicidad Robles — TSN, 31 August 1989, 10-22.

25 Sec. 175 of RA 8293.

26 See note 26; See Court of Appeals' decision, 6.

27 TSN, 1 August 1989, 24-26.28 TSN, 29 June 1989, 26 — Dr. Pacita Habana entered FEU as faculty member in 1957 and leftthe same in 1974; TSN, 28 August 1989, 3 — FELICIDAD became a faculty member of FEU in1964 up to time the testimony was taken.

29 See Simms v. Stanton, C.C. Cal 75 F. 6 [1896].

30 See Gobonseng, Jr. v. Court of Appeals, 246 SCRA 457, 468 [1996].

31 Supra note 10 at 860.

32 TSN, 1 August 1989, 29.

33 Rollo, 159; TSN, 28 August 1989, 23-24.

34 See 18 AM JUR 2D §104 citing Orgel v. Clark Boardman Co., (CA 2 NY) 301 F2d 119, cert den371 US 817, 9 L ed 2d 58, 83 S Ct 31 [1962]; Eisenschiml v. Fawcett Publications, Inc., (CA7 III)246 F2d 598, cert den 355 US 907, 2 L ed 262, 78 S Ct 334 [1957]; Toksvig v. Bruce PublishingCo., supra note 24.

35 One of the most significant evidences of infringement exists in the presence, in an allegedinfringing work, of the same errors and peculiarities that are to be found in the work said to beinfringed. See 18 AM JUR 2D §107 citing Callaghan v. Myers, 128 US 617, 32 L ed 547, 9 S Ct 177[1888]; W.H. Anderson Co. v. Baldwin Law Pub. Co., (CA6 Ohio) 27 F2d 82 [1928]; Jeweler'sCircular Pub. Co. v. Keystone Pub. Co., (CA2) 281 F 83, 26 ALR 571, cert den 259 US 581, 66 L ed1074, 42 S Ct 464 [1922].



Cases on Copyright

36 See Section 185 of RA 8293.

37 See Sections 184 & 184.1 of RA 8293.

38 See 18 AM JUR 2D §109 citing Toksvig v. Bruce Pub. Co., supra note 24; Bradbury v. ColumbiaBroadcasting System, Inc., (CA9 Cal) 287 F2d 478, cert den 368 US 801, 7 L ed 2d 15, 82 S Ct 19

[1961]; Shipman v. R.K.O. Radio Pictures, Inc., (CA2 NY) 100 F2d 533 [1938].39 Supra note 19.

40 18 C.J.S. §94-94b.



Cases on Copyright

G.R. No. 161295 June 29, 2005

JESSIE G. CHING, petitioner,vs.WILLIAM M. SALINAS, SR., WILLIAM M. SALINAS, JR., JOSEPHINE L. SALINAS, JENNIFER Y.SALINAS, ALONTO SOLAIMAN SALLE, JOHN ERIC I. SALINAS, NOEL M. YABUT (Board of Directors and Officers of WILAWARE PRODUCT CORPORATION), respondents.

D E C I S I O N

CALLEJO, SR., J.:

This petition for review on certiorari assails the Decision1 and Resolution2 of the Court of Appeals (CA) inCA-G.R. SP No. 70411 affirming the January 3, 2002 and February 14, 2002 Orders 3 of the Regional TrialCourt (RTC) of Manila, Branch 1, which quashed and set aside Search Warrant Nos. 01-2401 and 01-2402granted in favor of petitioner Jessie G. Ching.

Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker andmanufacturer of a Utility Model, described as "Leaf Spring Eye Bushing for Automobile" made up of plastic.

On September 4, 2001, Ching and Joseph Yu were issued by the National Library Certificates of Copyright

Registration and Deposit of the said work described therein as "Leaf Spring Eye Bushing for Automobile."4

On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) for police/investigativeassistance for the apprehension and prosecution of illegal manufacturers, producers and/or distributors of the works.5

After due investigation, the NBI filed applications for search warrants in the RTC of Manila against WilliamSalinas, Sr. and the officers and members of the Board of Directors of Wilaware Product Corporation. Itwas alleged that the respondents therein reproduced and distributed the said models penalized under Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293. The applications sought the seizure of thefollowing:

a.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of plasticpolypropylene;

b.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of polyvinylchloride plastic;

c.) Undetermined quantity of Vehicle bearing cushion that is made up of polyvinyl chloride plastic;

d.) Undetermined quantity of Dies and jigs, patterns and flasks used in the manufacture/fabricationof items a to d;

e.) Evidences of sale which include delivery receipts, invoices and official receipts.6

The RTC granted the application and issued Search Warrant Nos. 01-2401 and 01-2402 for the seizure of the aforecited articles.7 In the inventory submitted by the NBI agent, it appears that the followingarticles/items were seized based on the search warrants:

Leaf Spring eye bushing

a) Plastic Polypropylene

- C190 27 }

- C240 rear 40 }

- C240 front 41 } BAG 1

b) Polyvinyl Chloride Plastic

- C190 13 }

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Cases on Copyright

c) Vehicle bearing cushion

- center bearing cushion 11 }

Budder for C190 mold 8 }

Diesel Mold

a) Mold for spring eye bushing rear 1 set

b) Mold for spring eye bushing front 1 set

c) Mold for spring eye bushing for C190 1 set

d) Mold for C240 rear 1 piece of the set

e) Mold for spring eye bushing for L300 2 sets

f) Mold for leaf spring eye bushing C190 with metal 1 set

g) Mold for vehicle bearing cushion 1 set8

The respondents filed a motion to quash the search warrants on the following grounds:

2. The copyright registrations were issued in violation of the Intellectual Property Code on the ground that:

a) the subject matter of the registrations are not artistic or literary;

b) the subject matter of the registrations are spare parts of automobiles meaning – there ( sic ) areoriginal parts that they are designed to replace. Hence, they are not original.9

The respondents averred that the works covered by the certificates issued by the National Library are notartistic in nature; they are considered automotive spare parts and pertain to technology. They aver that themodels are not original, and as such are the proper subject of a patent, not copyright.10

In opposing the motion, the petitioner averred that the court which issued the search warrants was not theproper forum in which to articulate the issue of the validity of the copyrights issued to him. Citing the rulingof the Court inMalaloan v. Court of Appeals,11 the petitioner stated that a search warrant is merely a judicial

process designed by the Rules of Court in anticipation of a criminal case. Until his copyright was nullified ina proper proceeding, he enjoys rights of a registered owner/holder thereof.

On January 3, 2002, the trial court issued an Order 12 granting the motion, and quashed the search warranton its finding that there was no probable cause for its issuance. The court ruled that the work covered bythe certificates issued to the petitioner pertained to solutions to technical problems, not literary and artisticas provided in Article 172 of the Intellectual Property Code.

His motion for reconsideration of the order having been denied by the trial court’s Order of February 14,2002, the petitioner filed a petition for certiorari in the CA, contending that the RTC had no jurisdiction todelve into and resolve the validity of the copyright certificates issued to him by the National Library. Heinsisted that his works are covered by Sections 172.1 and 172.2 of the Intellectual Property Code. Thepetitioner averred that the copyright certificates are prima facie evidence of its validity, citing the ruling of the United States Court of Appeals in Wildlife Express Corporation v. Carol Wright Sales, Inc.13 The

petitioner asserted that the respondents failed to adduce evidence to support their motion to quash thesearch warrants. The petitioner noted that respondent William Salinas, Jr. was not being honest, as he wasable to secure a similar copyright registration of a similar product from the National Library on January 14,2002.

On September 26, 2003, the CA rendered judgment dismissing the petition on its finding that the RTC didnot commit any grave abuse of its discretion in issuing the assailed order, to wit:

It is settled that preliminarily, there must be a finding that a specific offense must have been committed to justify the issuance of a search warrant. In a number of cases decided by the Supreme Court, the same isexplicitly provided, thus:
















Cases on Copyright

"The probable cause must be in connection with one specific offense, and the judge must, before issuingthe warrant, personally examine in the form of searching questions and answers, in writing and under oath,the complainant and any witness he may produce, on facts personally known to them and attach to therecord their sworn statements together with any affidavit submitted.

"In the determination of probable cause, the court must necessarily resolve whether or not an offenseexists to justify the issuance or quashal of the search warrant."

In the instant case, the petitioner is praying for the reinstatement of the search warrants issued, butsubsequently quashed, for the offense of Violation of Class Designation of Copyrightable Works under Section 177.1 in relation to Section 177.3 of Republic Act 8293 , when the objects subject of the same, arepatently not copyrightable.

It is worthy to state that the works protected under the Law on Copyright are: literary or artistic works (Sec.172) and derivative works (Sec. 173). The Leaf Spring Eye Bushing and Vehicle Bearing Cushion fall onneither classification. Accordingly, if, in the first place, the item subject of the petition is not entitled to beprotected by the law on copyright, how can there be any violation?14

The petitioner’s motion for reconsideration of the said decision suffered the same fate. The petitioner forthwith filed the present petition for review on certiorari , contending that the revocation of his copyright

certificates should be raised in a direct action and not in a search warrant proceeding.

The petitioner posits that even assuming ex argumenti that the trial court may resolve the validity of hiscopyright in a proceeding to quash a search warrant for allegedly infringing items, the RTC committed agrave abuse of its discretion when it declared that his works are not copyrightable in the first place. Heclaims that R.A. No. 8293, otherwise known as the Intellectual Property Code of the Philippines, which tookeffect on January 1, 1998, provides in no uncertain terms that copyright protection automatically attaches toa work by the sole fact of its creation, irrespective of its mode or form of expression, as well as of itscontent, quality or purpose.15 The law gives a non-inclusive definition of "work" as referring to originalintellectual creations in the literary and artistic domain protected from the moment of their creation; andincludes original ornamental designs or models for articles of manufacture, whether or not registrable as anindustrial design and other works of applied art under Section 172.1(h) of R.A. No. 8293. lawphil.net

As such, the petitioner insists, notwithstanding the classification of the works as either literary and/or artistic, the said law, likewise, encompasses works which may have a bearing on the utility aspect to whichthe petitioner’s utility designs were classified. Moreover, according to the petitioner, what the Copyright Lawprotects is the author’s intellectual creation, regardless of whether it is one with utilitarian functions or incorporated in a useful article produced on an industrial scale.

The petitioner also maintains that the law does not provide that the intended use or use in industry of anarticle eligible for patent bars or invalidates its registration under the Law on Copyright. The test of protection for the aesthetic is not beauty and utility, but art for the copyright and invention of original andornamental design for design patents.16 In like manner, the fact that his utility designs or models for articlesof manufacture have been expressed in the field of automotive parts, or based on something already in thepublic domain does not automatically remove them from the protection of the Law on Copyright.17

The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293 which gives the same presumption to

an affidavit executed by an author who claims copyright ownership of his work.The petitioner adds that a finding of probable cause to justify the issuance of a search warrant meansmerely a reasonable suspicion of the commission of the offense. It is not equivalent to absolute certainty or a finding of actual and positive cause.18 He assists that the determination of probable cause does notconcern the issue of whether or not the alleged work is copyrightable. He maintains that to justify a findingof probable cause in the issuance of a search warrant, it is enough that there exists a reasonable suspicionof the commission of the offense.

The petitioner contends that he has in his favor the benefit of the presumption that his copyright is valid;hence, the burden of overturning this presumption is on the alleged infringers, the respondents herein. But














Cases on Copyright

this burden cannot be carried in a hearing on a proceeding to quash the search warrants, as the issuetherein is whether there was probable cause for the issuance of the search warrant. The petitioner concludes that the issue of probable cause should be resolved without invalidating his copyright.

In their comment on the petition, the respondents aver that the work of the petitioner is essentially atechnical solution to the problem of wear and tear in automobiles, the substitution of materials, i.e., fromrubber to plastic matter of polyvinyl chloride, an oil resistant soft texture plastic material strong enough toendure pressure brought about by the vibration of the counter bearing and thus brings bushings. Suchwork, the respondents assert, is the subject of copyright under Section 172.1 of R.A. No. 8293. Therespondents posit that a technical solution in any field of human activity which is novel may be the subjectof a patent, and not of a copyright. They insist that the certificates issued by the National Library are onlycertifications that, at a point in time, a certain work was deposited in the said office. Furthermore, theregistration of copyrights does not provide for automatic protection. Citing Section 218.2(b) of R.A. No.8293, the respondents aver that no copyright is said to exist if a party categorically questions its existenceand legality. Moreover, under Section 2, Rule 7 of the Implementing Rules of R.A. No. 8293, the registrationand deposit of work is not conclusive as to copyright outlay or the time of copyright or the right of thecopyright owner. The respondents maintain that a copyright exists only when the work is covered by theprotection of R.A. No. 8293.

The petition has no merit.

The RTC had jurisdiction to delve into and resolve the issue whether the petitioner’s utility models arecopyrightable and, if so, whether he is the owner of a copyright over the said models. It bears stressing thatupon the filing of the application for search warrant, the RTC was duty-bound to determine whether probable cause existed, in accordance with Section 4, Rule 126 of the Rules of Criminal Procedure:

SEC. 4. Requisite for issuing search warrant. – A search warrant shall not issue but upon probable cause inconnection with one specific offense to be determined personally by the judge after examination under oathor affirmation of the complainant and the witnesses he may produce, and, particularly, describing the placeto be searched and the things to be seized.

In Solid Triangle Sales Corporation v. The Sheriff of RTC QC, Br. 93,19 the Court held that in thedetermination of probable cause, the court must necessarily resolve whether or not an offense exists to

justify the issuance of a search warrant or the quashal of one already issued by the court. Indeed, probablecause is deemed to exist only where facts and circumstances exist which could lead a reasonably cautiousand prudent man to believe that an offense has been committed or is being committed. Besides, in Section3, Rule 126 of the Rules of Criminal Procedure, a search warrant may be issued for the search and seizureof personal property (a) subject of the offense; (b) stolen or embezzled and other proceeds or fruits of theoffense; or (c) used or intended to be used as the means of committing an offense.

The RTC is mandated under the Constitution and Rules of Criminal Procedure to determine probablecause. The court cannot abdicate its constitutional obligation by refusing to determine whether an offensehas been committed.20 The absence of probable cause will cause the outright nullification of the searchwarrant.21

For the RTC to determine whether the crime for infringement under R.A. No. 8293 as alleged in anapplication is committed, the petitioner-applicant was burdened to prove that (a) respondents Jessie Chingand Joseph Yu were the owners of copyrighted material; and (b) the copyrighted material was being copiedand distributed by the respondents. Thus, the ownership of a valid copyright is essential.22

Ownership of copyrighted material is shown by proof of originality and copyrightability. By originality ismeant that the material was not copied, and evidences at least minimal creativity; that it was independentlycreated by the author and that it possesses at least same minimal degree of creativity.23 Copying is shownby proof of access to copyrighted material and substantial similarity between the two works.24 Theapplicant must thus demonstrate the existence and the validity of his copyright because in the absence of copyright protection, even original creation may be freely copied.25

By requesting the NBI to investigate and, if feasible, file an application for a search warrant for infringement

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under R.A. No. 8293 against the respondents, the petitioner thereby authorized the RTC (in resolving theapplication), to delve into and determine the validity of the copyright which he claimed he had over theutility models. The petitioner cannot seek relief from the RTC based on his claim that he was the copyrightowner over the utility models and, at the same time, repudiate the court’s jurisdiction to ascertain thevalidity of his claim without running afoul to the doctrine of estoppel.

To discharge his burden, the applicant may present the certificate of registration covering the work or, in itsabsence, other evidence.26 A copyright certificate provides prima facie evidence of originality which is oneelement of copyright validity. It constitutes prima facie evidence of both validity and ownership27 and thevalidity of the facts stated in the certificate.28 The presumption of validity to a certificate of copyrightregistration merely orders the burden of proof. The applicant should not ordinarily be forced, in the firstinstance, to prove all the multiple facts that underline the validity of the copyright unless the respondent,effectively challenging them, shifts the burden of doing so to the applicant. 29 Indeed, Section 218.2 of R.A.No. 8293 provides:

218.2. In an action under this Chapter:

(a) Copyright shall be presumed to subsist in the work or other subject matter to which the actionrelates if the defendant does not put in issue the question whether copyright subsists in the work or

other subject matter; and(b) Where the subsistence of the copyright is established, the plaintiff shall be presumed to be theowner of the copyright if he claims to be the owner of the copyright and the defendant does not putin issue the question of his ownership.

A certificate of registration creates no rebuttable presumption of copyright validity where other evidence inthe record casts doubt on the question. In such a case, validity will not be presumed.30

To discharge his burden of probable cause for the issuance of a search warrant for violation of R.A. No.8293, the petitioner-applicant submitted to the RTC Certificate of Copyright Registration Nos. 2001-197 and2001-204 dated September 3, 2001 and September 4, 2001, respectively, issued by the National Librarycovering work identified as Leaf Spring Eye Bushing for Automobile and Vehicle Bearing Cushion bothclassified under Section 172.1(h) of R.A. No. 8293, to wit:

SEC. 172. Literary and Artistic Works. – 172.1. Literary and artistic works, hereinafter referred to as"works," are original intellectual creations in the literary and artistic domain protected from the moment of their creation and shall include in particular:

...

(h) Original ornamental designs or models for articles of manufacture, whether or not registrable as anindustrial design, and other works of applied art.

Related to the provision is Section 171.10, which provides that a "work of applied art" is an artistic creationwith utilitarian functions or incorporated in a useful article, whether made by hand or produced on anindustrial scale.

But, as gleaned from the specifications appended to the application for a copyright certificate filed by thepetitioner, the said Leaf Spring Eye Bushing for Automobile is merely a utility model described ascomprising a generally cylindrical body having a co-axial bore that is centrally located and provided with aperpendicular flange on one of its ends and a cylindrical metal jacket surrounding the peripheral walls of said body, with the bushing made of plastic that is either polyvinyl chloride or polypropylene. 31 Likewise,the Vehicle Bearing Cushion is illustrated as a bearing cushion comprising a generally semi-circular bodyhaving a central hole to secure a conventional bearing and a plurality of ridges provided therefore, with saidcushion bearing being made of the same plastic materials.32 Plainly, these are not literary or artistic works.They are not intellectual creations in the literary and artistic domain, or works of applied art. They arecertainly not ornamental designs or one having decorative quality or value.

It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its



















Cases on Copyright

marketability. The central inquiry is whether the article is a work of art. 33 Works for applied art include alloriginal pictorials, graphics, and sculptural works that are intended to be or have been embodied in usefularticle regardless of factors such as mass production, commercial exploitation, and the potential availabilityof design patent protection.34

As gleaned from the description of the models and their objectives, these articles are useful articles whichare defined as one having an intrinsic utilitarian function that is not merely to portray the appearance of thearticle or to convey information. Indeed, while works of applied art, original intellectual, literary and artisticworks are copyrightable, useful articles and works of industrial design are not.35 A useful article may becopyrightable only if and only to the extent that such design incorporates pictorial, graphic, or sculpturalfeatures that can be identified separately from, and are capable of existing independently of the utilitarianaspects of the article.

We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that the author’sintellectual creation, regardless of whether it is a creation with utilitarian functions or incorporated in auseful article produced on an industrial scale, is protected by copyright law. However, the law refers to a"work of applied art which is an artistic creation." It bears stressing that there is no copyright protection for works of applied art or industrial design which have aesthetic or artistic features that cannot be identifiedseparately from the utilitarian aspects of the article.36 Functional components of useful articles, no matter

how artistically designed, have generally been denied copyright protection unless they are separable fromthe useful article.37

In this case, the petitioner’s models are not works of applied art, nor artistic works. They are utility models,useful articles, albeit with no artistic design or value. Thus, the petitioner described the utility model asfollows:

LEAF SPRING EYE BUSHING FOR AUTOMOBILE

Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile are made of hard rubber.These rubber bushings after a time, upon subjecting them to so much or intermittent pressure wouldeventually wore (sic ) out that would cause the wobbling of the leaf spring.

The primary object of this utility model, therefore, is to provide a leaf-spring eye bushing for automobile that

is made up of plastic. Another object of this utility model is to provide a leaf-spring eye bushing for automobiles made of polyvinylchloride, an oil resistant soft texture plastic or polypropylene, a hard plastic, yet both causes cushion to theleaf spring, yet strong enough to endure pressure brought about by the up and down movement of said leaf spring.

Yet, an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a muchlonger life span than the rubber bushings.

Still an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a verysimple construction and can be made using simple and ordinary molding equipment.

A further object of this utility model is to provide a leaf-spring eye bushing for automobile that is suppliedwith a metal jacket to reinforce the plastic eye bushing when in engaged with the steel material of the leaf

spring.These and other objects and advantages will come to view and be understood upon a reading of thedetailed description when taken in conjunction with the accompanying drawings.

Figure 1 is an exploded perspective of a leaf-spring eye bushing according to the present utility model;

Figure 2 is a sectional view taken along line 2-2 of Fig. 1;

Figure 3 is a longitudinal sectional view of another embodiment of this utility model;

Figure 4 is a perspective view of a third embodiment; and














Cases on Copyright

Figure 5 is a sectional view thereof.

Referring now to the several views of the drawings wherein like reference numerals designated same partsthroughout, there is shown a utility model for a leaf-spring eye bushing for automobile generally designatedas reference numeral 10.

Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a co-axial bore 12centrally provided thereof.

As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is provided with a perpendicular flange 13 onone of its ends and a cylindrical metal jacket 14 surrounding the peripheral walls 15 of said body 11. Whensaid leaf-spring bushing 10 is installed, the metal jacket 14 acts with the leaf-spring eye (not shown), whichis also made of steel or cast steel. In effect, the bushing 10 will not be directly in contact with steel, butrather the metal jacket, making the life of the bushing 10 longer than those without the metal jacket.

In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl chloride, an oil resistant softtexture plastic or a hard polypropylene plastic, both are capable to endure the pressure applied thereto,and, in effect, would lengthen the life and replacement therefor.

Figure 3, on the other hand, shows the walls 16 of the co-axial bore 12 of said bushing 10 is insertably

provided with a steel tube 17 to reinforce the inner portion thereof. This steel tube 17 accommodates or engages with the leaf-spring bolt (not shown) connecting the leaf spring and the automobile’s chassis.

Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is elongated and cylindrical asto its construction. Said another embodiment is also made of polypropylene or polyvinyl chloride plasticmaterial. The steel tube 17 and metal jacket 14 may also be applied to this embodiment as an optionthereof.38

VEHICLE BEARING CUSHION

Known bearing cushions inserted to bearing housings for vehicle propeller shafts are made of hard rubber.These rubber bushings after a time, upon subjecting them to so much or intermittent pressure wouldeventually be worn out that would cause the wobbling of the center bearing.

The primary object of this utility model therefore is to provide a vehicle-bearing cushion that is made up of

plastic.

Another object of this utility model is to provide a vehicle bearing cushion made of polyvinyl chloride, an oilresistant soft texture plastic material which causes cushion to the propeller’s center bearing, yet strongenough to endure pressure brought about by the vibration of the center bearing.

Yet, an object of this utility model is to provide a vehicle-bearing cushion that has a much longer life spanthan rubber bushings.

Still an object of this utility model is to provide a vehicle bearing cushion that has a very simple constructionand can be made using simple and ordinary molding equipment.

These and other objects and advantages will come to view and be understood upon a reading of thedetailed description when taken in conjunction with the accompanying drawings.

Figure 1 is a perspective view of the present utility model for a vehicle-bearing cushion; andFigure 2 is a sectional view thereof.

Referring now to the several views of the drawing, wherein like reference numeral designate same partsthroughout, there is shown a utility model for a vehicle-bearing cushion generally designated as referencenumeral 10.

Said bearing cushion 10 comprises of a generally semi-circular body 11, having central hole 12 to house aconventional bearing (not shown). As shown in Figure 1, said body 11 is provided with a plurality of ridges13 which serves reinforcing means thereof.





Cases on Copyright

The subject bearing cushion 10 is made of polyvinyl chloride, a soft texture oil and chemical resistantplastic material which is strong, durable and capable of enduring severe pressure from the center bearingbrought about by the rotating movement of the propeller shaft of the vehicle.39

A utility model is a technical solution to a problem in any field of human activity which is new andindustrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of theaforesaid.40Essentially, a utility model refers to an invention in the mechanical field. This is the reason whyits object is sometimes described as a device or useful object.41 A utility model varies from an invention, for which a patent for invention is, likewise, available, on at least three aspects: first, the requisite of "inventivestep"42 in a patent for invention is not required; second, the maximum term of protection is only sevenyears43 compared to a patent which is twenty years,44 both reckoned from the date of the application; andthird, the provisions on utility model dispense with its substantive examination 45 and prefer for a lesscomplicated system.

Being plain automotive spare parts that must conform to the original structural design of the componentsthey seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not ornamental. Theylack the decorative quality or value that must characterize authentic works of applied art. They are not evenartistic creations with incidental utilitarian functions or works incorporated in a useful article. In actuality, thepersonal properties described in the search warrants are mechanical works, the principal function of which

is utility sans any aesthetic embellishment.

Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included in thecatch-all phrase "other literary, scholarly, scientific and artistic works" in Section 172.1(a) of R.A. No. 8293.

Applying the principle of ejusdem generis which states that "where a statute describes things of a particular class or kind accompanied by words of a generic character, the generic word will usually be limited tothings of a similar nature with those particularly enumerated, unless there be something in the context of the state which would repel such inference,"46 the Leaf Spring Eye Bushing and Vehicle Bearing Cushionare not copyrightable, being not of the same kind and nature as the works enumerated in Section 172 of R.A. No. 8293.

No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of thecertificates of copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing

Cushion. Indeed, inJoaquin, Jr. v. Drilon47 and Pearl & Dean (Phil.), Incorporated v. Shoemart,Incorporated ,48 the Court ruled that:

Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right grantedby the statute, and not simply a pre-existing right regulated by it. Being a statutory grant, the rights are onlysuch as the statute confers, and may be obtained and enjoyed only with respect to the subjects and by thepersons, and on terms and conditions specified in the statute. Accordingly, it can cover only the worksfalling within the statutory enumeration or description.

That the works of the petitioner may be the proper subject of a patent does not entitle him to the issuanceof a search warrant for violation of copyright laws. In Kho v. Court of Appeals49 and Pearl & Dean (Phil.),Incorporated v. Shoemart, Incorporated ,50 the Court ruled that "these copyright and patent rights arecompletely distinct and separate from one another, and the protection afforded by one cannot be usedinterchangeably to cover items or works that exclusively pertain to the others." The Court expounded

further, thus:

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged withone 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 relationthereto, 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 works which are original intellectualcreations in the literary and artistic domain protected from the moment of their creation. Patentableinventions, 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.












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The petitioner cannot find solace in the ruling of the United States Supreme Court in Mazer v. Stein51 tobuttress his petition. In that case, the artifacts involved in that case were statuettes of dancing male andfemale figures made of semi-vitreous china. The controversy therein centered on the fact that althoughcopyrighted as "works of art," the statuettes were intended for use and used as bases for table lamps, withelectric wiring, sockets and lampshades attached. The issue raised was whether the statuettes were

copyright protected in the United States, considering that the copyright applicant intended primarily to usethem as lamp bases to be made and sold in quantity, and carried such intentions into effect. At that time,the Copyright Office interpreted the 1909 Copyright Act to cover works of artistic craftsmanship insofar astheir form, but not the utilitarian aspects, were concerned. After reviewing the history and intent of the USCongress on its copyright legislation and the interpretation of the copyright office, the US Supreme Courtdeclared that the statuettes were held copyrightable works of art or models or designs for works of art. TheHigh Court ruled that:

"Works of art (Class G) – (a) – In General. This class includes works of artistic craftsmanship, in so far astheir form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels,glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings, drawings andsculpture. …"

So we have a contemporaneous and long-continued construction of the statutes by the agency charged to

administer them that would allow the registration of such a statuette as is in question here.52

The High Court went on to state that "[t]he dichotomy of protection for the aesthetic is not beauty and utilitybut art for the copyright and the invention of original and ornamental design for design patents."Significantly, the copyright office promulgated a rule to implement Mazer to wit:

… [I]f "the sole intrinsic function of an article is its utility, the fact that the work is unique and attractivelyshaped will not qualify it as a work of art."

In this case, the bushing and cushion are not works of art. They are, as the petitioner himself admitted,utility models which may be the subject of a patent.

IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED for lack of merit. The assailedDecision and Resolution of the Court of Appeals in CA-G.R. SP No. 70411 are AFFIRMED. Search Warrant

Nos. 01-2401 and 01-2402 issued on October 15, 2001 are ANNULLED AND SET ASIDE. Costs againstthe petitioner.

SO ORDERED.

Puno, (Chairman), Austria-Martinez, Tinga, and Chico-Nazario, JJ., concur.

Footnotes

1 Penned by Associate Justice Amelita G. Tolentino, with Associate Justices Eloy R. Bello, Jr.(retired) and Arturo D. Brion, concurring; Rollo, pp. 17-24.

2 Rollo, pp. 31-32.

3 Penned by Acting Presiding Judge Antonio M. Eugenio, Jr.4 CA Rollo, pp. 28-34.

5 Id. at 47.

6 CA Rollo, p. 54.

7 Id. at 54-61.

8 Id. at 68.

9 CA Rollo, p. 70.



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10 Id. at 73-75.

11 G.R. No. 104879, 6 May 1994, 232 SCRA 249.

12 Rollo, pp. 22-23.

13 18 F.3d 502.

14 Rollo, p. 23.

15 Section 172.2, Republic Act No. 8293.

16 Citing Amador, Vicente B., Copyright Under the Intellectual Property Code, 1998 ed., p. 128,citing Mazerv. Stein, 347 U.S. 201 (1954).

17 Norma Ribbon & Trimming v. Little, United States Court of Appeals, Fifth Circuit , No. 94-60389,27 April 1995.

18 Columbia Pictures, Inc. v. Court of Appeals, G.R. No. 110318 , 28 August 1996, 261 SCRA 144.

19 G.R. No. 144309, 23 November 2001, 370 SCRA 491.

20 Ibid.

21 Republic of the Philippines v. Sandiganbayan, G.R. Nos. 112708-09, 29 March 1996, 255 SCRA438.

22 Feist Publications, Inc. v. Rural Telephone Service Company , 499 U.S. 340; 111 S.Ct. 1282(1991).

23 Donald Bruce Company v. B.G. Multi-Comm. Corporation, 964 F.Supp. 265 (1997).

24 Apple Barrel Productions, Inc. v. R.D. Beard , 730 F.2d 384 (1984).

25 Durnham Industries, Inc. v. Tomy Corporation, 630 F.2d 905 (1980).

26 Apple Barrel Productions, Inc. v. R.D. Beard, supra.

27 Midway Manufacturing Corporation v. Bandai-America, Inc., 546 F.Supp. 125

(1982); Lakedreams v. Steve Taylor , 932 F.2d 1103 (1991).

28 Durnham Industries, Inc. v. Tomy Corporation, supra.

29 Barnhart, Inc. v. Economy Cover Corporation, 773 F.2d 411 (1985).

30 Ibid ; Midway Manufacturing Corporation v. Bandai-America, Inc., supra.

31 Rollo, p. 86.

32 Id. at 94.

33 Pivot Port International, Inc. v. Charlene Products, Inc., 372 F.2d 913 (2004).

34 Gay Toys, Inc. v. Buddy L. Corporation, 703 F.2d 970 (1983).

35 Pivot Port International, Inc. v. Charlene Products, Inc., supra.

36 Ibid ; DBC of New York v. Merit Diamond Corporation, 768 F.Supp. 414 (1991).

37 Norris Industries, Inc. v. ITT Corporation, 696 F.2d 918 (1983).

38 Rollo, pp. 84-87.

39 Rollo, pp. 93-94.

40 Section 109.1(a) and (b) in relation to Section 21 of Republic Act No. 8293.

41 Amador, Vicente B., Patents Under The Intellectual Property Code, 2001 ed., p. 751.






































































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42 An invention involves an inventive step if, having regard to prior art, it is not obvious to a personskilled in the art at the time of the filing date or priority date of the application claiming the invention.(Section 26, Republic Act No. 8293).

43 Section 109.3, supra.

44 Section 54, supra.

45 Sections 108 to 111 of Republic Act No. 8293 state the rule on utility models and grant of apatent therefor:

SEC. 108. Applicability of Provisions Relating to Patents. –

108.1 Subject to Section 109, the provisions governing patents shall apply, mutatismutandis, to the registration of utility models.

108.2. Where the right to a patent conflicts with the right to a utility modelregistration in the case referred to in Section 29, the said provisions shall apply as if the word "patent" were replaced by the words "patent or utility model registration."(Sec. 55, R.A. No. 165a)

SEC. 109. Special Provisions Relating to Utility Models. –109.1. (a) An invention qualifies for registration as a utility model if it is new andindustrially applicable.

(b) Section 21, "Patentable Inventions," shall apply except the reference toinventive step as a condition of protection.

109.2. Sections 43 to 49 shall not apply in the case of applications for registration of a utility model.

109.3. A utility model registration shall expire, without any possibility of renewal, atthe end of the seventh year after the date of the filing of the application.

109.4. In proceedings under Sections 61 to 64, the utility model registration shall be

canceled on the following grounds:(a) That the claimed invention does not qualify for registration as a utilitymodel and does not meet the requirements of registrability, in particular having regard to Subsection 109.1 and Sections 22, 23, 24 and 27;

(b) That the description and the claims do not comply with the prescribedrequirements;

(c) That any drawing which is necessary for the understanding of theinvention has not been furnished;

(d) That the owner of the utility model registration is not the inventor or hissuccessor in title. (Secs. 55, 56 and 57, R.A. No. 165a)

SEC. 110. Conversion of Patent Applications or Applications for Utility Model Registration. –

110.1 At any time before the grant or refusal of a patent, an applicant for apatent may, upon payment of the prescribed fee, convert his application intoan application for registration of a utility model, which shall be accorded thefiling date of the initial application. An application may be converted onlyonce.

110.2 At any time before the grant or refusal of a utility model registration, anapplicant for a utility model registration may, upon payment of the prescribedfee, convert his application into a patent application, which shall be accorded











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the filing date of the initial application. (Sec. 58, R.A. No. 165a)

SEC. 111. Prohibition against Filing of Parallel Applications. – An applicant may notfile two (2) applications for the same subject, one for utility model registration andthe other for the grant of a patent whether simultaneously or consecutively. (Sec. 59,R.A. No. 165a)

46 See Kapisanan ng mga Manggagawa sa Government Service Insurance System (KMG) v.Commission on Audit, G.R. No. 150769, 31 August 2004, 437 SCRA 371, citing PhilippineBasketball Association v. Court of Appeals, 337 SCRA 358 (2000); National Power Corporation v.

Angas, G.R. Nos. 60225-26, 8 May 1992, 208 SCRA 542; Cebu Institute of Technology v. Ople,G.R. No. L-58870, 18 December 1987, 156 SCRA 629; Ollada v. Court of Tax Appeals, 99 Phil. 604(1956); Murphy, Morris & Co. v. Collector of Customs , 11 Phil. 456 (1908).

47 G.R. No. 108946, 28 January 1999, 302 SCRA 225.

48 G.R. No. 148222, 15 August 2003, 409 SCRA 231.

49 G.R. No. 115758, 19 March 2002, 379 SCRA 410.

50 Supra.

51 74 S.Ct. 460; 347 U.S. 201.

52 Great Northern Ry. Co. v. United States, 315 U.S. 262, 275, 62 S.Ct. 529, 534, 86 L.Ed. 836


























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G.R. No. 147043 June 21, 2005

NBI - MICROSOFT CORPORATION & LOTUS DEVELOPMENT CORP., petitioners,vs.JUDY C. HWANG, BENITO KEH & YVONNE K. CHUA/BELTRON COMPUTER PHILIPPINES INC.,JONATHAN K. CHUA, EMILY K. CHUA, BENITO T. SANCHEZ, NANCY I. VELASCO, ALFONSO CHUA,ALBERTO CHUA, SOPHIA ONG, DEANNA CHUA/TAIWAN MACHINERY DISPLAY & TRADE CENTER,INC., and THE SECRETARY OF JUSTICE, respondents.

D E C I S I O N

CARPIO, J.:

The Case

This is a petition for certiorar i 1 of the Resolutions2 of the Department of Justice dismissing for "lack of meritand insufficiency of evidence" petitioner Microsoft Corporation’s complaint against respondents for copyright infringement and unfair competition.

The Facts

Petitioner Microsoft Corporation ("Microsoft"), a Delaware, United States corporation, owns the copyrightand trademark to several computer software.3 Respondents Benito Keh and Yvonne Keh are thePresident/Managing Director and General Manager, respectively, of respondent Beltron Computer Philippines, Inc. ("Beltron"), a domestic corporation. Respondents Jonathan K. Chua, Emily K. Chua,Benito T. Sanchez, and Nancy I. Velasco are Beltron’s Directors. On the other hand, respondents AlfonsoChua, Alberto Chua, Judy K. Chua Hwang, Sophia Ong, and Deanna Chua are the Directors of respondentTaiwan Machinery Display & Trade Center, Inc. ("TMTC"), also a domestic corporation.4

In May 1993, Microsoft and Beltron entered into a Licensing Agreement ("Agreement"). Under Section 2(a)of the Agreement, as amended in January 1994, Microsoft authorized Beltron, for a fee, to:

(i) xxx reproduce and install no more than one (1) copy of [Microsoft] software on each Customer System hard disk or Read Only Memory ("ROM"); [and]

(ii) xxx distribute directly or indirectly and license copies of the Product (reproduced as per Section2(a)(i) and/or acquired from Authorized Replicator or Authorized Distributor) in object code form toend users[.] xxxx5

The Agreement also authorized Microsoft and Beltron to terminate the contract if the other fails to complywith any of the Agreement’s provisions. Microsoft terminated the Agreement effective 22 June 1995 for Beltron’s non-payment of royalties.6

Afterwards, Microsoft learned that respondents were illegally copying and selling Microsoft software.Consequently, Microsoft, through its Philippine agent,7 hired the services of Pinkerton Consulting Services("PCS"), a private investigative firm. Microsoft also sought the assistance of the National Bureau of Investigation ("NBI"). On 10 November 1995, PCS employee John Benedic8 Sacriz ("Sacriz") and NBIagent Dominador Samiano, Jr. ("Samiano"), posing as representatives of a computer shop,9 boughtcomputer hardware (central processing unit ("CPU") and computer monitor) and software (12 computer

disks ("CDs") in read-only memory ("ROM") format) from respondents. The CPU contained pre-installed10 Microsoft Windows 3.1 and MS-DOS software. The 12 CD-ROMs, encased in plastic containerswith Microsoft packaging, also contained Microsoft software.11 At least two of the CD-ROMs were"installers," so-called because they contain several software (Microsoft only or both Microsoft and non-Microsoft).12 Sacriz and Samiano were not given the Microsoft end-user license agreements, user’smanuals, registration cards or certificates of authenticity for the articles they purchased. The receipt issuedto Sacriz and Samiano for the CPU and monitor bore the heading "T.M.T.C. (PHILS.) INC. BELTRONCOMPUTER."13 The receipt for the 12 CD-ROMs did not indicate its source although the name "Gerlie"appears below the entry "delivered by."14

On 17 November 1995, Microsoft applied for search warrants against respondents in the Regional Trial





































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Court, Branch 23, Manila ("RTC").15 The RTC granted Microsoft’s application and issued two searchwarrants ("Search Warrant Nos. 95-684 and 95-685").16 Using Search Warrant Nos. 95-684 and 95-685,the NBI searched the premises of Beltron and TMTC and seized several computer-related hardware,software, accessories, and paraphernalia. Among these were 2,831 pieces of CD-ROMs containingMicrosoft software.17

Based on the articles obtained from respondents, Microsoft and a certain Lotus Development Corporation("Lotus Corporation") charged respondents before the Department of Justice ("DOJ") with copyrightinfringement under Section 5(A) in relation to Section 29 of Presidential Decree No. 49, as amended, ("PD49")18 and with unfair competition under Article 189(1)19 of the Revised Penal Code. In its Complaint ("I.S.No. 96-193"), which the NBI indorsed, Microsoft alleged that respondents illegally copied and soldMicrosoft software.20

In their joint counter-affidavit, respondents Yvonne Keh ("respondent Keh") and Emily K. Chua("respondent Chua") denied the charges against respondents. Respondents Keh and Chua alleged that: (1)Microsoft’s real intention in filing the complaint under I.S. No. 96-193 was to pressure Beltron to pay itsalleged unpaid royalties, thus Microsoft should have filed a collection suit instead of a criminal complaint;(2) TMTC bought the confiscated 59 boxes of MS-DOS CDs from a Microsoft dealer in Singapore (R.R.Donnelly); (3) respondents are not the "source" of the Microsoft Windows 3.1 software pre-installed in the

CPU bought by Sacriz and Samiano, but only of the MS-DOS software; (4) Microsoft’s alleged proof of purchase (receipt) for the 12 CD-ROMs is inconclusive because the receipt does not indicate its source;and (5) respondents Benito Keh, Jonathan K. Chua, Alfonso Chua, Alberto Chua, Judy K. Chua Hwang,Sophia Ong, and Deanna Chua are stockholders of Beltron and TMTC in name only and thus cannot beheld criminally liable.21

The other respondents did not file counter-affidavits.

Meanwhile, respondents moved to quash Search Warrant Nos. 95-684 and 95-685. The RTC partiallygranted their motion in its Order of 16 April 1996. Microsoft sought reconsideration but the RTC deniedMicrosoft’s motion in its Order of 19 July 1996. Microsoft appealed to the Court of Appeals in CA-G.R. CVNo. 54600. In its Decision of 29 November 2001, the Court of Appeals granted Microsoft’s appeal and setaside the RTC Orders of 16 April 1996 and 19 July 1996. The Court of Appeals’ Decision became final on

27 December 2001.The DOJ Resolutions

In the Resolution of 26 October 1999, DOJ State Prosecutor Jocelyn A. Ong ("State Prosecutor Ong")recommended the dismissal of Microsoft’s complaint for lack of merit and insufficiency of evidence. StateProsecutor Ong also recommended the dismissal of Lotus Corporation’s complaint for lack of interest toprosecute and for insufficiency of evidence. Assistant Chief State Prosecutor Lualhati R. Buenafe("Assistant Chief State Prosecutor Buenafe") approved State Prosecutor Ong’s recommendations. 22 The26 October 1999 Resolution reads in part:

[T]wo (2) issues have to be resolved in this case, namely:

a) Whether or not Beltron Computer and/or its stockholders should be held liable for the offensescharged.

b) Whether or not prima facie case exist[s] against Taiwan Machinery Display and Trade Center,Inc. (TMTC) for violation of the offense charged.

Complainant had alleged that from the time the license agreement was terminated, respondent/s is/are nolonger authorized to copy/distribute/sell Microsoft products. However, respondent/s averred that the case iscivil in nature, not criminal, considering that the case stemmed only out of the desire of complainant tocollect from them the amount of US$135,121.32 and that the contract entered into by the parties cannot beunilaterally terminated.

In the order of Honorable William Bayhon dated July 19, 1996 [denying reconsideration to the Order partially quashing the search warrants], he observed the following:






















Cases on Copyright

"It is further argued by counsel for respondent that the act taken by private complainant is to spite revengeagainst the respondent Beltron for the latter failed to pay the alleged monetary obligation in the amount of US$135,121.32. That respondent has some monetary obligation to complainant which is not denied by thecomplainant."

["]It appears therefore that prior to the issuance of the subject search warrants, complainant had somebusiness transactions with the respondent [Beltron] along the same line of products. Complainant failed toreveal the true circumstances existing between the two of them as it now appears, indeed the searchwarrant[s] xxx [are] being used as a leverage to secure collection of the money obligation which the Courtcannot allow."

From said order, it can be gleaned that the [RTC] xxx, had admitted that the search warrants applied for bycomplainant were merely used as a leverage for the collection of the alleged monetary obligation of therespondent/s.

From said order, it can be surmise (sic) that the obligations between the parties is civil in nature notcriminal.

Moreover, complainant had time and again harped that respondent/s is/are not authorized tosell/copy/distribute Microsoft products at the time of the execution of the search warrants. Still, this office

has no power to pass upon said issue for one has then to interpret the provisions of the contract enteredinto by the parties, which question, should be raised in a proper civil proceeding.

Accordingly, absen[t] a resolution from the proper court of (sic) whether or not the contract is still bindingbetween the parties at the time of the execution of the search warrants, this office cannot pass upon theissue of whether respondent/s is or are liable for the offense charged.

As to the second issue, we find for the respondent/s. TMTC had provided sufficient evidence such as pro-forma invoice from R.R. Donnelley; Debt Advice of the Bank of Commerce; Official Receipts from theBureau of Customs; and Import Entry Declaration of the Bureau of Customs to prove that indeed theMicrosoft software in their possession were bought from Singapore.

Thus, respondent/s in this case has/have no intent to defraud the public, as provided under Article 189 of the Revised Penal Code, for they bought said Microsoft MS-DOS 6.0 from an alleged licensee of Microsoft

in Singapore, with all the necessary papers. In their opinion, what they have are genuine Microsoftsoftware, therefore no unfair competition exist.

Moreover, violation of P.D. 49 does not exist, for respondent/s was/were not the manufacturers of theMicrosoft software seized and were selling their products as genuine Microsoft software, considering thatthey bought it from a Microsoft licensee.

Complainant, on the other hand, considering that it has the burden of proving that the respondent/s is/areliable for the offense charged, has not presented any evidence that the items seized namely the 59 boxesof MS-DOS 6.0 software are counterfeit.

The certification issued on December 12, 1995 by Christopher Austin, Corporate Attorney of thecomplainant, does not disclose this fact. For the term used by Mr. Austin was that the items seized wereunauthorized.

The question now, is whether the products were unauthorized because TMTC has no license to sellMicrosoft products, or is it unauthorized because R.R. Donnelley has no authority to sell said products herein the Philippines.

Still, to determine the culpability of the respondents, complainant should present evidence that what is inthe possession of the respondent/s is/are counterfeit Microsoft products.

This it failed to do.23

Microsoft sought reconsideration and prayed for an ocular inspection of the articles seized fromrespondents. However, in the Resolution of 3 December 1999, Assistant Chief State Prosecutor Buenafe,





Cases on Copyright

upon State Prosecutor Ong’s recommendation, denied Microsoft’s motion.24

Microsoft appealed to the Office of the DOJ Secretary. In the Resolution of 3 August 2000, DOJUndersecretary Regis V. Puno dismissed Microsoft’s appeal.25 Microsoft sought reconsideration but itsmotion was denied in the Resolution of 22 December 2000.26

Hence, this petition. Microsoft contends that:I. THE DOJ ERRED IN RULING THAT THE LIABILITY OF RESPONDENTS WAS ONLY CIVIL IN NATUREBY VIRTUE OF THE LICENSE AGREEMENT.

II. THE DOJ MISAPPRECIATED THE FACT THAT RESPONDENTS WERE ENGAGED INTHE ILLEGAL IMPORTATION, SALE AND DISTRIBUTION OF COUNTERFEIT SOFTWARE

AS EVIDENCED BY THE ITEMS PURCHASED DURING THE TEST-BUY AND THE ITEMSSEIZED FROM RESPONDENTS’ PREMISES.

III. THE DOJ MISAPPRECIATED THE LAW ON COPYRIGHT INFRINGEMENT AND UNFAIRCOMPETITION.

IV. ONLY TWO OUT OF THE NINE RESPONDENTS BOTHERED TO FILE COUNTER- AFFIDAVITS; HENCE, THE CHARGES AGAINST SEVEN [RESPONDENTS] REMAINUNCONTROVERTED.27

In its Comment, filed by the Solicitor General, the DOJ maintains that it did not commit grave abuse of discretion in dismissing Microsoft’s complaint.28

For their part, respondents allege in their Comment that Microsoft is guilty of forum-shopping because itspetition in CA-G.R. CV No. 54600 was filed ahead of, and has a "common interest" with, this petition. Onthe merits, respondents reiterate their claims in their motion to quash Search Warrant Nos. 95-684 and 95-685 that the articles seized from them were either owned by others, purchased from legitimate sources, or not produced by Microsoft. Respondents also insist that the Agreement entitled Beltron to "copy andreplicate or reproduce" Microsoft products. On the confiscated 2,831 CD-ROMs, respondents allege that a

certain corporation29 left the CD-ROMs with them for safekeeping. Lastly, respondents claim that there isno proof that the CPU Sacriz and Samiano bought from them contained pre-installed Microsoft softwarebecause the receipt for the CPU does not indicate "[s]oftware hard disk." 30

In its Reply, Microsoft counters that it is not liable for forum-shopping because its petition in CA-G.R. CVNo. 54600 involved the Orders of the RTC partially quashing Search Warrant Nos. 95-684 and 95-685while this petition concerns the DOJ Resolutions dismissing its complaint against respondents for copyrightinfringement and unfair competition. On the merits, Microsoft maintains that respondents should be indictedfor copyright infringement and unfair competition.31

The Issues

The petition raises the following issues:

(1) Whether Microsoft engaged in forum-shopping; and(2) Whether the DOJ acted with grave abuse of discretion in not finding probable cause to chargerespondents with copyright infringement and unfair competition.

The Ruling of the Court

The petition has merit.

Microsoft did not Engage in Forum-Shopping

Forum-shopping takes place when a litigant files multiple suits involving the same parties, either simultaneously or successively, to secure a favorable judgment.32 Thus, it exists where the elements of litis





















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pendentia are present, namely: (a) identity of parties, or at least such parties who represent the sameinterests in both actions; (b) identity of rights asserted and relief prayed for, the relief being founded on thesame facts; and (c) the identity with respect to the two preceding particulars in the two cases is such thatany judgment that may be rendered in the pending case, regardless of which party is successful, wouldamount to res judicata in the other case.33 Forum-shopping is an act of malpractice because it abuses

court processes.34 To check this pernicious practice, Section 5, Rule 7 of the 1997 Rules of Civil Procedurerequires the principal party in an initiatory pleading to submit a certification against forum-shopping.35 Failure to comply with this requirement is a cause for the dismissal of the case and, in case of willful forum-shopping, for the imposition of administrative sanctions.

Here, Microsoft correctly contends that it is not liable for forum-shopping. What Microsoft appealed in CA-G.R. CV No. 54600 were the RTC Orders partially quashing Search Warrant Nos. 95-684 and 95-685. Inthe present case, Microsoft is appealing from the DOJ Resolutions dismissing its complaint againstrespondents for copyright infringement and unfair competition. Thus, although the parties in CA-G.R. CVNo. 54600 and this petition are identical, the rights asserted and the reliefs prayed for are not such that the

judgment in CA-G.R. CV No. 54600 does not amount to res judicata in the present case. This rendersforum-shopping impossible here.

The DOJ Acted with Grave Abuse of Discretion

in not Finding Probable Cause to Charge Respondents withCopyright Infringement and Unfair Competition

Generally, this Court is loath to interfere in the prosecutor’s discretion in determining probable cause 36 —unless such discretion is shown to have been abused.37 This case falls under the exception.

Unlike the higher quantum of proof beyond reasonable doubt required to secure a conviction, it is the lower standard of probable cause which is applied during the preliminary investigation to determine whether theaccused should be held for trial. This standard is met if the facts and circumstances incite a reasonablebelief that the act or omission complained of constitutes the offense charged. As we explained in Pilapil v.Sandiganbayan:38

The term [probable cause] does not mean "actual and positive cause" nor does it import absolute certainty.It is merely based on opinion and reasonable belief. Thus, a finding of probable cause does not require an

inquiry into whether there is sufficient evidence to procure a conviction. It is enough that it is believed thatthe act or omission complained of constitutes the offense charged. Precisely, there is a trial for thereception of evidence of the prosecution in support of the charge.

PD 49 and Article 189(1)

Section 539 of PD 49 ("Section 5") enumerates the rights vested exclusively on the copyright owner.Contrary to the DOJ’s ruling, the gravamen of copyright infringement is not merely the unauthorized"manufacturing" of intellectual works but rather the unauthorized performance of any of the acts covered bySection 5. Hence, any person who performs any of the acts under Section 5 without obtaining the copyrightowner’s prior consent renders himself civilly40 and criminally41 liable for copyright infringement. We heldin Columbia Pictures, Inc. v. Court of Appeals:42

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 synonymousterm in this connection, consists in the doing by any person, without the consent of the owner of thecopyright, of anything the sole right to do which is conferred by statute on the owner of the copyright.(Emphasis supplied)

Significantly, under Section 5(A), a copyright owner is vested with the exclusive right to "copy, distribute,multiply, [and] sell" his intellectual works.

On the other hand, the elements of unfair competition under Article 189(1) 43 of the Revised Penal Codeare:

(a) That the offender gives his goods the general appearance of the goods of another manufacturer


























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or dealer;

(b) That the general appearance is shown in the (1) goods themselves, or in the (2) wrapping of their packages, or in the (3) device or words therein, or in (4) any other feature of their appearance[;]

(c) That the offender offers to sell or sells those goods or gives other persons a chance or opportunity to do the same with a like purpose[; and]

(d) That there is actual intent to deceive the public or defraud a competitor.44

The element of intent to deceive may be inferred from the similarity of the goods or their appearance.45

On the Sufficiency of Evidence toSupport a Finding of Probable Cause

Against Respondents

In its pleadings filed with the DOJ, Microsoft invoked three clusters of evidence to support its complaintagainst respondents, namely: (1) the 12 CD-ROMs containing Microsoft software Sacriz and Samianobought from respondents; (2) the CPU with pre-installed Microsoft software Sacriz and Samiano alsopurchased from respondents; and (3) the 2,831 CD-ROMs containing Microsoft software seized from

respondents.46 The DOJ, on the one hand, refused to pass upon the relevance of these pieces of evidencebecause: (1) the "obligations between the parties is civil and not criminal" considering that Microsoft merelysought the issuance of Search Warrant Nos. 95-684 and 95-685 to pressure Beltron to pay its obligationunder the Agreement, and (2) the validity of Microsoft’s termination of the Agreement must first be resolvedby the "proper court." On the other hand, the DOJ ruled that Microsoft failed to present evidence provingthat what were obtained from respondents were counterfeit Microsoft products.

This is grave abuse of discretion.47

First. Being the copyright and trademark owner of Microsoft software, Microsoft acted well within itsrights in filing the complaint under I.S. No. 96-193 based on the incriminating evidence obtainedfrom respondents. Hence, it was highly irregular for the DOJ to hold, based on the RTC Order of 19July 1996, that Microsoft sought the issuance of Search Warrant Nos. 95-684 and 95-685, and by

inference, the filing of the complaint under I.S. No. 96-193, merely to pressure Beltron to pay itsoverdue royalties to Microsoft. Significantly, in its Decision in CA-G.R. CV No. 54600 dated 29November 2001, the Court of Appeals set aside the RTC Order of 19 July 1996. Respondents nolonger contested that ruling which became final on 27 December 2001.

Second. There is no basis for the DOJ to rule that Microsoft must await a prior "resolution from theproper court of (sic) whether or not the [Agreement] is still binding between the parties." Beltron hasnot filed any suit to question Microsoft’s termination of the Agreement. Microsoft can neither beexpected nor compelled to wait until Beltron decides to sue before Microsoft can seek remedies for violation of its intellectual property rights.

Furthermore, some of the counterfeit CD-ROMs bought from respondents were "installer" CD-ROMs containing Microsoft software only or both Microsoft and non-Microsoft software. Thesearticles are counterfeit per se because Microsoft does not (and could not have authorized anyone

to) produce such CD-ROMs. The copying of the genuine Microsoft software to produce these fakeCD-ROMs and their distribution are illegal even if the copier or distributor is a Microsoft licensee. Asfar as these installer CD-ROMs are concerned, the Agreement (and the alleged question on thevalidity of its termination) is immaterial to the determination of respondents’ liability for copyrightinfringement and unfair competition.

Lastly, Section 10(b)48 of the Agreement provides that Microsoft’s "rights and remedies" under thecontract are "not xxx exclusive and are in addition to any other rights and remedies provided by lawor [the] Agreement." Thus, even if the Agreement still subsists, Microsoft is not precluded fromseeking remedies under PD 49 and Article 189(1) of the Revised Penal Code to vindicate its rights.













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Third. The Court finds that the 12 CD-ROMs ("installer" and "non-installer") and the CPU with pre-installed Microsoft software Sacriz and Samiano bought from respondents and the 2,831 MicrosoftCD-ROMs seized from respondents suffice to support a finding of probable cause to indictrespondents for copyright infringement under Section 5(A) in relation to Section 29 of PD 49 for unauthorized copying and selling of protected intellectual works. The installer CD-ROMs with

Microsoft software, to repeat, are counterfeit per se. On the other hand, the illegality of the "non-installer" CD-ROMs purchased from respondents and of the Microsoft software pre-installed in theCPU is shown by the absence of the standard features accompanying authentic Microsoft products,namely, the Microsoft end-user license agreements, user’s manuals, registration cards or certificates of authenticity.

On the 2,831 Microsoft CD-ROMs49 seized from respondents, respondent Beltron, the only respondentwho was party to the Agreement, could not have reproduced them under the Agreement as the Solicitor General50 and respondents contend. Beltron’s rights51 under the Agreement were limited to:

(1) the "reproduc[tion] and install[ation of] no more than one copy of [Microsoft] software on eachCustomer System hard disk or Read Only Memory ("ROM")"; and

(2) the "distribut[ion] xxx and licens[ing of] copies of the [Microsoft] Product [as reproduced above]

and/or acquired from Authorized Replicator or Authorized Distributor) in object code form toend users."

The Agreement defines an authorized replicator as "a third party approved by [Microsoft] which mayreproduce and manufacture [Microsoft] Product[s] for [Beltron] xxx."52 An authorized distributor, on theother hand, is a "third party approved by [Microsoft] from which [Beltron] may purchaseMED53 Product."54 Being a mere reproducer/installer of one Microsoft software copy on each customer’shard disk or ROM, Beltron could only have acquired the hundreds of Microsoft CD-ROMs found inrespondents’ possession from Microsoft distributors or replicators.

However, respondents makes no such claim. What respondents contend is that these CD-ROMs were leftto them for safekeeping. But neither is this claim tenable for lack of substantiation. Indeed, respondentsKeh and Chua, the only respondents who filed counter-affidavits, did not make this claim in the DOJ. Thesecircumstances give rise to the reasonable inference that respondents mass-produced the CD-ROMs in

question without securing Microsoft’s prior authorization.

The counterfeit "non-installer" CD-ROMs Sacriz and Samiano bought from respondents also suffice tosupport a finding of probable cause to indict respondents for unfair competition under Article 189(1) of theRevised Penal Code for passing off Microsoft products. From the pictures of the CD-ROMs’packaging,55 one cannot distinguish them from the packaging of CD-ROMs containing genuine Microsoftsoftware. Such replication, coupled with the similarity of content of these fake CD-ROMs and the CD-ROMswith genuine Microsoft software, implies intent to deceive.

Respondents’ contention that the 12 CD-ROMs Sacriz and Samiano purchased cannot be traced to thembecause the receipt for these articles does not indicate its source is unavailing. The receipt in questionshould be taken together with Microsoft’s claim that Sacriz and Samiano bought the CD-ROMs fromrespondents.56 Together, these considerations point to respondents as the vendor of the counterfeit CD-ROMs. Respondents do not give any reason why the Court should not give credence to Microsoft’s claim.For the same reason, the fact that the receipt for the CPU does not indicate "[s]oftware hard disk" does notmean that the CPU had no pre-installed Microsoft software. Respondents Keh and Chua admit in their counter-affidavit that respondents are the "source" of the pre-installed MS-DOS software.

WHEREFORE, we GRANT the petition. We SET ASIDE the Resolutions dated 26 October 1999, 3December 1999, 3 August 2000, and 22 December 2000 of the Department of Justice.

SO ORDERED.

Davide, Jr., C.J., (Chairman), Quisumbing, Ynares-Santiago, and Azcuna, JJ., concur.





















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Footnotes

1 Under Rule 65 of the 1997 Rules of Civil Procedure.

2 Dated 26 October 1999, 3 December 1999, 3 August 2000, and 22 December 2000.

3 Microsoft owns the copyright to, among others, the following software: Microsoft Windows,Windows ‘95, Microsoft Excel, Microsoft Word, Microsoft Access, Microsoft Works, MicrosoftPowerpoint, Microsoft Office, Microsoft Flight Simulator, and Microsoft FoxPro (Rollo, p. 20).

4 Individual respondents and respondent corporations are referred to as "respondents."

5 Rollo, p. 81.

6 The Agreement provided the following obligations upon its termination (Ibid., pp. 72-73):

"11. OBLIGATIONS UPON TERMINATION

(a) Within ten (10) days after termination or expiration of this Agreement, [BELTRON] shallreturn to [MICROSOFT] (i) all full or partial copies of each Product including OEM

Adaptation Kit(s) and OEM Distribution Kit(s) in [BELTRON’s] possession or under itscontrol for which a royalty has not been paid and (ii) all copies of the Product in source code

form. [BELTRON] and each [BELTRON] Subsidiary may, however, retain one copy of eachProduct in object code form and one copy of the Product documentation to be used solelyfor support purposes.

(b) From and after termination or expiration, [BELTRON] shall not use internally nor employany Product as part or portion of any product that [BELTRON] may use, sell, assign, lease,license, or transfer to third parties. [BELTRON] shall cease and desist from all use of anyProduct name(s) and associated trademark(s) and, upon request, deliver to [MICROSOFT]or its authorized representatives or destroy all material upon which the Product name(s) andthe associated trademarks appear.

(c) Termination of this Agreement as a result of [BELTRON’s] default shall result inacceleration of [BELTRON’s] obligation to pay all sums [BELTRON] contracted to pay under

this Agreement, including all minimum commitment payments as described in Exhibit B.(d) End user licenses properly granted pursuant to this Agreement and prior to terminationof this Agreement shall not be diminished or abridged by termination or expiration of this

Agreement.

(e) Sections 5, 12, 13, 14, 15(a), 16, 17, 18(a), and 18(b) shall survive termination or expiration of this Agreement." (Underlining in the original)

7 The law firm Quisumbing Torres.

8 Also spelled as "Benedict" (Rollo, p. 142).

9 Phardette Computer Shop.

10 The process of pre-installing software into the CPU’s resident hard disk is also called "hard-

loading."11 E.g. Microsoft Windows ‘95, Microsoft Publisher, Microsoft Encarta ‘95, MS-DOS 6.22, MicrosoftMoney, Microsoft Windows for Workgroups, and Microsoft Word (Rollo, pp. 126, 128-129).

12 A CD-ROM containing Microsoft, Adobe Systems, Inc., and Corel Corporation software and afour-in-one CD-ROM containing the Microsoft software MS-DOS 6.22, Microsoft Money, andMicrosoft Windows for Workgroups (Ibid., pp. 127, 129).

13 Ibid., p. 125.

14 Ibid., p. 131.
































Cases on Copyright

15 Presided by Judge William M. Bayhon.

16 Rollo, pp. 135-140.

17 The following were seized from respondents ( Ibid., pp. 141, 243):

1. MS-DOS 6.2 (Manual) @ 20 pcs. per box - - - - - - 59 boxes

2. Compact Disc - - - - - - 2,831 pcs.

3. Tray - - - - - - 251 pcs.

4. J Case - - - - - - 700 pcs.

5. Label - - - - - - 188 pcs.

6. CD File - - - - - - 1 folder

7. Credit Memo File - - - - - - 1 folder

8. Delivery Receipt - - - - - 11 booklets

9. Monitor SN # IV1502733 - - - - - - 1 unit

10. Keyboard - - - - - - 1 unit

11. Central Processing Unit (CPU) - - - - - - 1 unit

12. Monitor (Dynamic, Leslie G. & Robert-Small - - - - - - 3 units

13. Central Processing Units (MGB, SM, EWC, STI, J. Estrella[,]

System & Data, Leslie G., Benjamin SY, Octagon, Mega) - - - - - 20 units

14. Printer KX P1540 SN# 9KMANEO2931 - - - - - - 1 pc.

15. Monitor 14" SVGA, 15" UVGA (Beltron) - - - - - 2 units

16. CPU 386 DX40 Desk Top, 386DX40-4MB (Slim case) - - - - - 2 units

17. Mouse - - - - - 1 pc.18. Computer Notebook - - - - - 7 pcs.

19. Central Processing Unit w/ Multi Media - - - - - 12 pcs.

20. Compaq Notebook - - - - - 1 pc.

Microsoft also alleges that a "credit memo" (Ibid., p. 132) and a delivery receipt (Ibid., p.133) of a Microsoft software (Windows ‘95) for third persons were also seized fromrespondents (Ibid., p. 28).

18 The Decree on Intellectual Property. PD 49 was repealed by Republic Act No. 8293 ("RA 8293")or the Intellectual Property Code of the Philippines which took effect on 1 January 1998.

19 Repealed by RA 8293.

20 Rollo, pp. 48-60.

21 Ibid., pp. 201-203. Lotus Corporation later desisted from pursuing its complaint againstrespondents (Ibid., p. 143).

22 Ibid., pp. 142-152.

23 Ibid., pp. 149-151.

24 Ibid., pp. 160-161.

25 Ibid., pp. 180-181.

























Cases on Copyright

26 Ibid., pp. 199-200.

27 Ibid., pp. 30-31.

28 Ibid., pp. 292-305.

29 FUS Plastic Machinery Works Co., Ltd.

30 Rollo, pp. 223-237.

31 Ibid., pp. 310-325.

32 Casupanan v. Laroya, 436 Phil. 582 (2002).

33 Spouses Melo v. Court of Appeals, 376 Phil. 204 (1999).

34 Buan v. Lopez, Jr., G.R. No. L-75349, 13 October 1986, 145 SCRA 34 citing E. Razon, Inc. etal. v.Philippine Port Authority, et al., Minute Resolution, G.R. No. 75197, 31 July 1986.

35 Rule 7, Section 5 provides: "Certification against forum shopping. — The plaintiff or principalparty shall certify under oath in the complaint or other initiatory pleading asserting a claim for relief,or in a sworn certification annexed thereto and simultaneously filed therewith: (a) that he has not

theretofore commenced any action or filed any claim involving the same issues in any court,tribunal or quasi-judicial agency and, to the best of his knowledge, no such other action or claim ispending therein; (b) if there is such other pending action or claim, a complete statement of thepresent status thereof; and (c) if he should thereafter learn that the same or similar action or claimhas been filed or is pending, he shall report that fact within five (5) days therefrom to the courtwherein his aforesaid complaint or initiatory pleading has been filed.

Failure to comply with the foregoing requirements shall not be curable by mere amendmentof the complaint or other initiatory pleading but shall be cause for the dismissal of the casewithout prejudice, unless otherwise provided, upon motion and after hearing. Thesubmission of a false certification or non-compliance with any of the undertakings thereinshall constitute indirect contempt of court, without prejudice to the correspondingadministrative and criminal actions. If the acts of the party or his counsel clearly constitute

willful and deliberate forum shopping, the same shall be ground for summary dismissal withprejudice and shall constitute direct contempt, as well as a cause for administrativesanctions."

36 See Acuña v. Deputy Ombudsman for Luzon, G.R. No. 144692, 31 January2005; Camanag v. Guerrero, G.R. No. 121017, 17 February 1997, 268 SCRA 473.

37 See Filadams Pharma, Inc. v. Court of Appeals, G.R. No. 132422, 30 March 2004, 426 SCRA460. See also Dr. Baylon v. Ombudsman, 423 Phil. 705 (2001).

38 G.R. No. 101978, 7 April 1993, 221 SCRA 349 (internal citations omitted).

39 This provision states: "Copyright shall consist in the exclusive right[:]

(A) To print, reprint, publish, copy, distribute, multiply, sell, and make photographs, photo-engravings, and pictorial illustrations of the works;

(B) To make any translation or other version or extracts or arrangements or adaptationsthereof; to dramatize it if it be a non-dramatic work; to convert it into a non-dramatic work if itbe a drama; to complete or execute it if it be a model or design;

(C) To exhibit, perform, represent, produce, or reproduce the work in any manner or by anymethod whatever for profit or otherwise; if not reproduced in copies for sale, to sell anymanuscripts or any records whatsoever thereof;

(D) To make any other use or disposition of the work consistent with the laws of the land."This has been superseded by Section 177 of RA 8293. (Emphasis supplied)
















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Cases on Copyright

40 Under Section 28, PD 49, now superseded by Section 216 of RA 8293.

41 Section 29, PD 49 provides: "Any person infringing any copyright secured by this Decree or aiding or abetting such infringement shall be deemed guilty of a crime punishable by imprisonmentnot exceeding one year or by fine not less than Two Hundred Pesos nor more than Two ThousandPesos or both, in the discretion of the court." This has been superseded by Section 217 of RA 8293.

42 329 Phil. 875 (1996). Reported as Columbia Pictures, Inc. v. CA.

43 This provision states: "Unfair competition, fraudulent registration of trade-name, trade-mark, or service mark, fraudulent designation of origin, and false description. — The penalty provided in thenext preceding article shall be imposed upon:

1. Any person who, in unfair competition and for the purpose of deceiving or defraudinganother of his legitimate trade or the public in general, shall sell his goods giving them thegeneral appearance of the goods of another manufacturer or dealer, either as to the goodsthemselves, or in the wrapping of the packages in which they are contained, or the deviceor words thereon, or in any other feature of their appearance which would be likely to inducethe public to believe that the goods offered are those of a manufacturer or dealer other thanthe actual manufacturer or dealer, or shall give other persons a chance or opportunity to do

the same with a like purpose. xxxx"

44 L. Reyes, The Revised Penal Code, vol. II, p. 282 (15th ed.).

45 See Rueda Hermanos & Co. v. Feliz Paglinawan & Co., 33 Phil. 196 (1916); L.Reyes, supra note 44, p. 283.

46 Regarding the confiscated 59 boxes of MS-DOS CDs, Microsoft, in this petition, no longer contests the DOJ’s findings that TMTC bought these MS-DOS CDs from a Microsoft dealer inSingapore.

47 Grave abuse of discretion is committed "where power is exercised in an arbitrary or despoticmanner xxx as to amount to evasion of positive duty or virtual refusal to perform a duty xxxx"(Garcia-Rueda v. Pascasio, 344 Phil. 323 [1997] citing Comm. of Internal Revenue v. CA, 327 Phil.

1 [1996]).48 "10. DEFAULT AND TERMINATION

xxxx

(b) Termination due to a breach of Sections 6, 13, 14(b) or (if applicable) S1 shall beeffective upon notice. In all other cases termination shall be effective thirty (30) days after notice of termination to the defaulting party if the defaults have not been cured within suchthirty (30) day period. The rights and remedies of the parties provided herein shall not beexclusive and are in addition to any other rights and remedies provided by law or this

Agreement." (Underlining in the original; italicization supplied) (Rollo, p. 72).

49 Microsoft contends that these CD-ROMs are all "installers" (Rollo, p. 26). For lack of corroborative evidence on record, the Court refrains from passing upon this question without

prejudice to Microsoft’s presentation of relevant evidence during the trial.50 Ibid., pp. 299-300.

51 Microsoft contends, for the first time in this appeal, that the Agreement authorized Beltron tocopy only one Microsoft software, i.e., "Microsoft MS-DOS 6.0" (Ibid., p. 33). However, the terms of the Agreement do not bear out this contention.

52 Agreement, Section 1(i) (Rollo, p. 66).

53 A MED is a Microsoft product in "Easy Distribution Package" form available for purchase from anauthorized distributor (Agreement, Section 1(e), ibid.).































Cases on Copyright

54 Agreement, Section 1(j) (Ibid.).

55 Rollo, pp. 126, 128, 130.

56 Ibid., pp. 25-26









Cases on Copyright

G.R. No. 148222 August 15, 2003

PEARL & DEAN (PHIL.), INCORPORATED, Petitioner,vs.SHOEMART, INCORPORATED, and NORTH EDSA MARKETING, INCORPORATED, Respondents.

D E C I S I O NCORONA, J.:

In the instant petition for review on certiorari under Rule 45 of the Rules of Court, petitioner Pearl & Dean(Phil.) Inc. (P & D) assails the May 22, 2001 decision1 of the Court of Appeals reversing the October 31,1996 decision2of the Regional Trial Court of Makati, Branch 133, in Civil Case No. 92-516 which declaredprivate respondents Shoemart Inc. (SMI) and North Edsa Marketing Inc. (NEMI) liable for infringement of trademark and copyright, and unfair competition.

FACTUAL ANTECEDENTS

The May 22, 2001 decision of the Court of Appeals3 contained a summary of this dispute:

"Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of advertising

display units simply referred to as light boxes. These units utilize specially printed posters sandwichedbetween plastic sheets and illuminated with back lights. Pearl and Dean was able to secure a Certificate of Copyright Registration dated January 20, 1981 over these illuminated display units. The advertising lightboxes were marketed under the trademark "Poster Ads". The application for registration of the trademarkwas filed with the Bureau of Patents, Trademarks and Technology Transfer on June 20, 1983, but wasapproved only on September 12, 1988, per Registration No. 41165. From 1981 to about 1988, Pearl andDean employed the services of Metro Industrial Services to manufacture its advertising displays.

Sometime in 1985, Pearl and Dean negotiated with defendant-appellant Shoemart, Inc. (SMI) for the leaseand installation of the light boxes in SM City North Edsa. Since SM City North Edsa was under constructionat that time, SMI offered as an alternative, SM Makati and SM Cubao, to which Pearl and Dean agreed. OnSeptember 11, 1985, Pearl and Dean’s General Manager, Rodolfo Vergara, submitted for signature thecontracts covering SM Cubao and SM Makati to SMI’s Advertising Promotions and Publicity Division

Manager, Ramonlito Abano. Only the contract for SM Makati, however, was returned signed. On October 4,1985, Vergara wrote Abano inquiring about the other contract and reminding him that their agreement for installation of light boxes was not only for its SM Makati branch, but also for SM Cubao. SMI did not bother to reply.

Instead, in a letter dated January 14, 1986, SMI’s house counsel informed Pearl and Dean that it wasrescinding the contract for SM Makati due to non-performance of the terms thereof. In his reply datedFebruary 17, 1986, Vergara protested the unilateral action of SMI, saying it was without basis. In the sameletter, he pushed for the signing of the contract for SM Cubao.

Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean to fabricateits display units, offered to construct light boxes for Shoemart’s chain of stores. SMI approved the proposaland ten (10) light boxes were subsequently fabricated by Metro Industrial for SMI. After its contract withMetro Industrial was terminated, SMI engaged the services of EYD Rainbow Advertising Corporation to

make the light boxes. Some 300 units were fabricated in 1991. These were delivered on a staggered basisand installed at SM Megamall and SM City.

Sometime in 1989, Pearl and Dean, received reports that exact copies of its light boxes were installed atSM City and in the fastfood section of SM Cubao. Upon investigation, Pearl and Dean found out that asidefrom the two (2) reported SM branches, light boxes similar to those it manufactures were also installed intwo (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 spacein lighted display units located in SMI’s different branches. Pearl and Dean noted that NEMI is a sister company of SMI.

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Cases on Copyright

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

Upon receipt of the demand letter, SMI suspended the leasing of two hundred twenty-four (224) light boxesand NEMI took down its advertisements for "Poster Ads" from the lighted display units in SMI’s stores.Claiming that both SMI and NEMI failed to meet all its demands, Pearl and Dean filed this instant case for infringement of trademark and copyright, unfair competition and damages.

In denying the charges hurled against it, SMI maintained that it independently developed its poster panelsusing commonly known techniques and available technology, without notice of or reference to Pearl andDean’s copyright. SMI noted that the registration of the mark "Poster Ads" was only for stationeries such asletterheads, envelopes, and the like. Besides, according to SMI, the word "Poster Ads" is a generic termwhich cannot be appropriated as a trademark, and, as such, registration of such mark is invalid. It alsostressed that Pearl and Dean is not entitled to the reliefs prayed for in its complaint since its advertisingdisplay units contained no copyright notice, in violation of Section 27 of P.D. 49. SMI alleged that Pearl andDean had no cause of action against it and that the suit was purely intended to malign SMI’s good name.On this basis, SMI, aside from praying for the dismissal of the case, also counterclaimed for moral, actual

and exemplary damages and for the cancellation of Pearl and Dean’s Certification of Copyright RegistrationNo. PD-R-2558 dated January 20, 1981 and Certificate of Trademark Registration No. 4165 datedSeptember 12, 1988.

NEMI, for its part, denied having manufactured, installed or used any advertising display units, nor havingengaged in the business of advertising. It repleaded SMI’s averments, admissions and denials and prayedfor similar reliefs and counterclaims as SMI."

The RTC of Makati City decided in favor of P & D:

Wherefore, defendants SMI and NEMI are found jointly and severally liable for infringement of copyrightunder Section 2 of PD 49, as amended, and infringement of trademark under Section 22 of RA No. 166, asamended, and are hereby penalized under Section 28 of PD 49, as amended, and Sections 23 and 24 of RA 166, as amended. Accordingly, defendants are hereby directed:

(1) to pay plaintiff the following damages:

(a) actual damages - P16,600,000.00,representing profitsderived by defendantsas a result of infringe-ment of plaintiff’s copyrightfrom 1991 to 1992

(b) moral damages - P1,000.000.00

(c) exemplary damages - P1,000,000.00

(d) attorney’s fees - P1,000,000.00

plus

(e) costs of suit;

(2) to deliver, under oath, for impounding in the National Library, all light boxes of SMI which werefabricated by Metro Industrial Services and EYD Rainbow Advertising Corporation;

(3) to deliver, under oath, to the National Library, all filler-posters using the trademark "Poster Ads",for destruction; and

(4) to permanently refrain from infringing the copyright on plaintiff’s light boxes and its trademark"Poster Ads".



Cases on Copyright

Defendants’ counterclaims are hereby ordered dismissed for lack of merit.

SO ORDERED.4

On appeal, however, the Court of Appeals reversed the trial court:

Since the light boxes cannot, by any stretch of the imagination, be considered as either prints, pictorialillustrations, advertising copies, labels, tags or box wraps, to be properly classified as a copyrightable class"O" work, we have to agree with SMI when it posited that what was copyrighted were the technicaldrawings only, and not the light boxes themselves, thus:

42. When a drawing is technical and depicts a utilitarian object, a copyright over the drawings like plaintiff-appellant’s will not extend to the actual object. It has so been held under jurisprudence, of which theleading case is Baker vs. Selden (101 U.S. 841 (1879). In that case, Selden had obtained a copyrightprotection for a book entitled "Selden’s Condensed Ledger or Bookkeeping Simplified" which purported toexplain a new system of bookkeeping. Included as part of the book were blank forms and illustrationsconsisting of ruled lines and headings, specially designed for use in connection with the system explainedin the work. These forms showed the entire operation of a day or a week or a month on a single page, or on two pages following each other. The defendant Baker then produced forms which were similar to theforms illustrated in Selden’s copyrighted books. The Court held that exclusivity to the actual forms is not

extended by a copyright. The reason was that "to grant a monopoly in the underlying art when noexamination of its novelty has ever been made would be a surprise and a fraud upon the public; that is theprovince of letters patent, not of copyright." And that is precisely the point. No doubt aware that its allegedoriginal design would never pass the rigorous examination of a patent application, plaintiff-appellant foughtto foist a fraudulent monopoly on the public by conveniently resorting to a copyright registration whichmerely employs a recordal system without the benefit of an in-depth examination of novelty.

The principle in Baker vs. Selden was likewise applied in Muller vs. Triborough Bridge Authority [43 F.Supp. 298 (S.D.N.Y. 1942)]. In this case, Muller had obtained a copyright over an unpublished drawingentitled "Bridge Approach – the drawing showed a novel bridge approach to unsnarl traffic congestion". Thedefendant constructed a bridge approach which was alleged to be an infringement of the new designillustrated in plaintiff’s drawings. In this case it was held that protection of the drawing does not extend tothe unauthorized duplication of the object drawn because copyright extends only to the description or

expression of the object and not to the object itself. It does not prevent one from using the drawings toconstruct the object portrayed in the drawing.

In two other cases, Imperial Homes Corp. v. Lamont , 458 F. 2d 895 and Scholtz Homes, Inc. v. Maddox ,379 F. 2d 84, it was held that there is no copyright infringement when one who, without being authorized,uses a copyrighted architectural plan to construct a structure. This is because the copyright does notextend to the structures themselves.

In fine, we cannot find SMI liable for infringing Pearl and Dean’s copyright over the technical drawings of the latter’s advertising display units.

xxx xxx xxx

The Supreme Court trenchantly held in Faberge, Incorporated vs. Intermediate Appellate Court that theprotective mantle of the Trademark Law extends only to the goods used by the first user as specified in thecertificate of registration, following the clear mandate conveyed by Section 20 of Republic Act 166, asamended, otherwise known as the Trademark Law, which reads:

SEC. 20. Certification of registration prima facie evidence of validity .- A certificate of registration of a markor trade-name shall be prima facie evidence of the validity of the registration, the registrant’s ownership of the mark or trade-name, and of the registrant’s exclusive right to use the same in connection with thegoods, business or services specified in the certificate, subject to any conditions and limitations statedtherein." (underscoring supplied )

The records show that on June 20, 1983, Pearl and Dean applied for the registration of the trademark"Poster Ads" with the Bureau of Patents, Trademarks, and Technology Transfer. Said trademark was





Cases on Copyright

recorded in the Principal Register on September 12, 1988 under Registration No. 41165 covering thefollowing products: stationeries such as letterheads, envelopes and calling cards and newsletters.

With this as factual backdrop, we see no legal basis to the finding of liability on the part of the defendants-appellants for their use of the words "Poster Ads", in the advertising display units in suit. Jurisprudence hasinterpreted Section 20 of the Trademark Law as "an implicit permission to a manufacturer to venture intothe production of goods and allow that producer to appropriate the brand name of the senior registrant ongoods other than those stated in the certificate of registration." The Supreme Court further emphasized therestrictive meaning of Section 20 when it stated, through Justice Conrado V. Sanchez, that:

Really, if the certificate of registration were to be deemed as including goods not specified therein, then asituation may arise whereby an applicant may be tempted to register a trademark on any and all goodswhich his mind may conceive even if he had never intended to use the trademark for the said goods. Webelieve that such omnibus registration is not contemplated by our Trademark Law.

While we do not discount the striking similarity between Pearl and Dean’s registered trademark anddefendants-appellants’ "Poster Ads" design, as well as the parallel use by which said words were used inthe parties’ respective advertising copies, we cannot find defendants-appellants liable for infringement of trademark. "Poster Ads" was registered by Pearl and Dean for specific use in its stationeries, in contrast to

defendants-appellants who used the same words in their advertising display units. Why Pearl and Deanlimited the use of its trademark to stationeries is simply beyond us. But, having already done so, it muststand by the consequence of the registration which it had caused.

xxx xxx xxx

We are constrained to adopt the view of defendants-appellants that the words "Poster Ads" are a simplecontraction of the generic term poster advertising. In the absence of any convincing proof that "Poster Ads"has acquired a secondary meaning in this jurisdiction, we find that Pearl and Dean’s exclusive right to theuse of "Poster Ads" is limited to what is written in its certificate of registration, namely, stationeries.

Defendants-appellants cannot thus be held liable for infringement of the trademark "Poster Ads".

There being no finding of either copyright or trademark infringement on the part of SMI and NEMI, themonetary award granted by the lower court to Pearl and Dean has no leg to stand on.

xxx xxx xxx

WHEREFORE, premises considered, the assailed decision is REVERSED and SET ASIDE, and another isrendered DISMISSING the complaint and counterclaims in the above-entitled case for lack of merit.5

Dissatisfied with the above decision, petitioner P & D filed the instant petition assigning the following errorsfor the Court’s consideration:

A. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO COPYRIGHTINFRINGEMENT WAS COMMITTED BY RESPONDENTS SM AND NEMI;

B. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO INFRINGEMENT OFPEARL & DEAN’S TRADEMARK "POSTER ADS" WAS COMMITTED BY RESPONDENTS SM

AND NEMI;

C. THE HONORABLE COURT OF APPEALS ERRED IN DISMISSING THE AWARD OF THETRIAL COURT, DESPITE THE LATTER’S FINDING, NOT DISPUTED BY THE HONORABLECOURT OF APPEALS, THAT SM WAS GUILTY OF BAD FAITH IN ITS NEGOTIATION OF

ADVERTISING CONTRACTS WITH PEARL & DEAN.

D. THE HONORABLE COURT OF APPEALS ERRED IN NOT HOLDING RESPONDENTS SM AND NEMI LIABLE TO PEARL & DEAN FOR ACTUAL, MORAL & EXEMPLARY DAMAGES, ATTORNEY’S FEES AND COSTS OF SUIT.6

ISSUES








Cases on Copyright

In resolving this very interesting case, we are challenged once again to put into proper perspective four main concerns of intellectual property law — patents, copyrights, trademarks and unfair competition arisingfrom infringement of any of the first three. We shall focus then on the following issues:

(1) if the engineering or technical drawings of an advertising display unit (light box) are grantedcopyright protection (copyright certificate of registration) by the National Library, is the light boxdepicted in such engineering drawings ipso facto also protected by such copyright?

(2) or should the light box be registered separately and protected by a patent issued by the Bureauof Patents Trademarks and Technology Transfer (now Intellectual Property Office) — in addition tothe copyright of the engineering drawings?

(3) can the owner of a registered trademark legally prevent others from using such trademark if it isa mere abbreviation of a term descriptive of his goods, services or business?

ON THE ISSUE OF COPYRIGHT INFRINGEMENT

Petitioner P & D’s complaint was that SMI infringed on its copyright over the light boxes when SMI had theunits manufactured by Metro and EYD Rainbow Advertising for its own account. Obviously, petitioner’sposition was premised on its belief that its copyright over the engineering drawings extended ipso facto to

the light boxes depicted or illustrated in said drawings. 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.

First, petitioner’s application for a copyright certificate — as well as Copyright Certificate No. PD-R2588issued by the National Library on January 20, 1981 — clearly stated that it was for a class "O" work under Section 2 (O) of PD 49 (The Intellectual Property Decree) which was the statute then prevailing. SaidSection 2 expressly enumerated the works subject to copyright:

SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any of the following works:

x x x x x x x x x

(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps;

x x x x x x x x x

Although petitioner’s copyright certificate was entitled "Advertising Display Units" (which depicted the box-type electrical devices), its claim of copyright infringement cannot be sustained.

Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant, the rightsare limited to what the statute confers. It may be obtained and enjoyed only with respect to the subjectsand by the persons, and on terms and conditions specified in the statute. 7 Accordingly, it can cover only the works falling within the statutory enumeration or description.8

P & D secured its copyright under the classification class "O" work. This being so, petitioner’s copyrightprotection extended only to the technical drawings and not to the light box itself because the latter was notat all in the category of "prints, pictorial illustrations, advertising copies, labels, tags and box wraps." Statedotherwise, even as we find that P & D indeed owned a valid copyright, the same could have referred only tothe technical drawings within the category of "pictorial illustrations." It could not have possibly stretched outto include the underlying light box. The strict application9 of the law’s enumeration in Section 2 prevents usfrom giving petitioner even a little leeway, that is, even if its copyright certificate was entitled "AdvertisingDisplay Units." What the law does not include, it excludes, and for the good reason: the light box was not aliterary or artistic piece which could be copyrighted under the copyright law. And no less clearly, neither could the lack of statutory authority to make the light box copyrightable be remedied by the simplistic act of entitling the copyright certificate issued by the National Library as "Advertising Display Units."

In fine, if SMI and NEMI reprinted P & D’s technical drawings for sale to the public without license from P &D, then no doubt they would have been guilty of copyright infringement. But this was not the case. SMI’s









Cases on Copyright

and NEMI’s acts complained of by P & D were to have units similar or identical to the light box illustrated inthe technical drawings manufactured by Metro and EYD Rainbow Advertising, for leasing out to differentadvertisers. Was this an infringement of petitioner’s copyright over the technical drawings? We do not thinkso.

During the trial, the president of P & D himself admitted that the light box was neither a literary not anartistic work but an "engineering or marketing invention."10 Obviously, there appeared to be someconfusion regarding what ought or ought not to be the proper subjects of copyrights, patents andtrademarks. In the leading case of Kho vs. Court of Appeals,11 we ruled that these three legal rights arecompletely distinct and separate from one another, and the protection afforded by one cannot be usedinterchangeably to cover items or works that exclusively pertain to the others:

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged withone 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 relationthereto, 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 works which are original intellectualcreations in the literary and artistic domain protected from the moment of their creation. Patentableinventions, on the other hand, refer to any technical solution of a problem in any field of human

activity which is new, involves an inventive step and is industrially applicable.

ON THE ISSUE OF PATENT INFRINGEMENT

This brings us to the next point: if, despite its manufacture and commercial use of the light boxes withoutlicense from petitioner, private respondents cannot be held legally liable for infringement of P & D’scopyright over itstechnical drawings of the said light boxes, should they be liable instead for infringement of patent? We do not think so either.

For some reason or another, petitioner never secured a patent for the light boxes. It therefore acquired nopatent 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.In Creser Precision Systems, Inc. vs. Court of Appeals,12 we held that "there can be no infringement of apatent until a patent has been issued, since whatever right one has to the invention covered by the patent

arises alone from the grant of patent. x x x (A)n inventor has no common law right to a monopoly of hisinvention. He has the right to make use of and vend his invention, but if he voluntarily discloses it, such asby offering it for sale, the world is free to copy and use it with impunity. A patent, however, gives theinventor the right to exclude all others. As a patentee, he has the exclusive right of making, selling or usingthe invention.13 On the assumption that petitioner’s advertising units were patentable inventions, petitioner revealed them fully to the public by submitting the engineering drawings thereof to the National Library.

To be able to effectively and legally preclude others from copying and profiting from the invention, a patentis a primordial requirement. No patent, no protection. The ultimate goal of a patent system is to bring newdesigns and technologies into the public domain through disclosure.14 Ideas, once disclosed to the publicwithout the protection of a valid patent, are subject to appropriation without significant restraint.15

On one side of the coin is the public which will benefit from new ideas; on the other are the inventors whomust be protected. As held in Bauer & Cie vs. O’Donnel ,16 "The act secured to the inventor the exclusiveright to make use, and vend the thing patented, and consequently to prevent others from exercising likeprivileges without the consent of the patentee. It was passed for the purpose of encouraging usefulinvention and promoting new and useful inventions by the protection and stimulation given to inventivegenius, and was intended to secure to the public, after the lapse of the exclusive privileges granted thebenefit of such inventions and improvements."

The law attempts to strike an ideal balance between the two interests:

"(The p)atent system thus embodies a carefully crafted bargain for encouraging the creation and disclosureof new useful and non-obvious advances in technology and design, in return for the exclusive right topractice the invention for a number of years. The inventor may keep his invention secret and reap its fruits


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indefinitely. In consideration of its disclosure and the consequent benefit to the community, the patent isgranted. An exclusive enjoyment is guaranteed him for 17 years, but upon the expiration of that period, theknowledge of the invention inures to the people, who are thus enabled to practice it and profit by its use."17

The patent law has a three-fold purpose: "first, patent law seeks to foster and reward invention; second, itpromotes disclosures of inventions to stimulate further innovation and to permit the public to practice theinvention once the patent expires; third, the stringent requirements for patent protection seek to ensure thatideas in the public domain remain there for the free use of the public."18

It is only after an exhaustive examination by the patent office that a patent is issued. Such an in-depthinvestigation is required because "in rewarding a useful invention, the rights and welfare of the communitymust be fairly dealt with and effectively guarded. To that end, the prerequisites to obtaining a patent arestrictly observed and when a patent is issued, the limitations on its exercise are equally strictly enforced. Tobegin with, a genuine invention or discovery must be demonstrated lest in the constant demand for newappliances, the heavy hand of tribute be laid on each slight technological advance in art."19

There is no such scrutiny in the case of copyrights nor any notice published before its grant to the effectthat a person is claiming the creation of a work. The law confers the copyright from the moment of creation20 and the copyright certificate is issued upon registration with the National Library of a sworn ex-

parte claim of creation.Therefore, not having gone through the arduous examination for patents, the petitioner cannot excludeothers from the manufacture, sale or commercial use of the light boxes on the sole basis of its copyrightcertificate over the technical drawings.

Stated otherwise, what petitioner seeks is exclusivity without any opportunity for the patent office (IPO) toscrutinize the light box’s eligibility as a patentable invention. The irony here is that, had petitioner secured apatent instead, its exclusivity would have been for 17 years only. But through the simplified procedure of copyright-registration with the National Library — without undergoing the rigor of defending the patentabilityof its invention before the IPO and the public — the petitioner would be protected for 50 years. Thissituation could not have been the intention of the law.

In the oft-cited case of Baker vs. Selden21, the United States Supreme Court held that only the expression

of an idea is protected by copyright, not the idea itself . In that case, the plaintiff held the copyright of a bookwhich expounded on a new accounting system he had developed. The publication illustrated blank forms of ledgers utilized in such a system. The defendant reproduced forms similar to those illustrated in theplaintiff’s copyrighted book. The US Supreme Court ruled that:

"There is no doubt that a work on the subject of book-keeping, though only explanatory of well knownsystems, may be the subject of a copyright; but, then, it is claimed only as a book. x x x. But there is a clear distinction between the books, as such, and the art, which it is, intended to illustrate. The mere statement of the proposition is so evident that it requires hardly any argument to support it. The same distinction may bepredicated of every other art as well as that of bookkeeping. A treatise on the composition and use of medicines, be they old or new; on the construction and use of ploughs or watches or churns; or on themixture and application of colors for painting or dyeing; or on the mode of drawing lines to produce theeffect of perspective, would be the subject of copyright; but no one would contend that the copyright of thetreatise would give the exclusive right to the art or manufacture described therein. The copyright of thebook, if not pirated from other works, would be valid without regard to the novelty or want of novelty of itssubject matter. The novelty of the art or thing described or explained has nothing to do with the validity of the copyright. To give to the author of the book an exclusive property in the art described therein,when no examination of its novelty has ever been officially made, would be a surprise and a fraudupon the public. That is the province of letters patent, not of copyright. The claim to an invention of discovery of an art or manufacture must be subjected to the examination of the Patent Office beforean exclusive right therein can be obtained; and a patent from the government can only secure it.

The difference between the two things, letters patent and copyright, may be illustrated by reference to thesubjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great value in













Cases on Copyright

the healing art. If the discoverer writes and publishes a book on the subject (as regular physiciansgenerally do), he gains no exclusive right to the manufacture and sale of the medicine; he givesthat to the public. If he desires to acquire such exclusive right, he must obtain a patent for themixture as a new art, manufacture or composition of matter. He may copyright his book, if hepleases; but that only secures to him the exclusive right of printing and publishing his book. So of

all other inventions or discoveries.

The copyright of a book on perspective, no matter how many drawings and illustrations it may contain,gives no exclusive right to the modes of drawing described, though they may never have been known or used before. By publishing the book without getting a patent for the art, the latter is given to the public.

x x x

Now, whilst no one has a right to print or publish his book, or any material part thereof, as a book intendedto convey instruction in the art, any person may practice and use the art itself which he has described andillustrated therein. The use of the art is a totally different thing from a publication of the bookexplaining it. The copyright of a book on bookkeeping cannot secure the exclusive right to make, sell anduse account books prepared upon the plan set forth in such book. Whether the art might or might not havebeen patented, is a question, which is not before us. It was not patented, and is open and free to the use of

the public. And, of course, in using the art, the ruled lines and headings of accounts must necessarily beused as incident to it.

The plausibility of the claim put forward by the complainant in this case arises from a confusion of ideasproduced by the peculiar nature of the art described in the books, which have been made the subject of copyright. In describing the art, the illustrations and diagrams employed happened to correspond moreclosely than usual with the actual work performed by the operator who uses the art. x x x The descriptionof the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusiveclaim to the art itself. The object of the one is explanation; the object of the other is use. The former may be secured by copyright. The latter can only be secured, if it can be secured at all, by letterspatent." (underscoring supplied)

ON THE ISSUE OF TRADEMARK INFRINGEMENT

This issue concerns the use by respondents of the mark "Poster Ads" which petitioner’s president said wasa contraction of "poster advertising." P & D was able to secure a trademark certificate for it, but one wherethe goods specified were "stationeries such as letterheads, envelopes, calling cards andnewsletters."22 Petitioner admitted it did not commercially engage in or market these goods. On thecontrary, it dealt in electrically operated backlit advertising units and the sale of advertising spaces thereon,which, however, were not at all specified in the trademark certificate.

Under the circumstances, the Court of Appeals correctly cited Faberge Inc. vs. Intermediate AppellateCourt ,23where we, invoking Section 20 of the old Trademark Law, ruled that "the certificate of registrationissued by the Director of Patents can confer (upon petitioner) the exclusive right to use its own symbol only to those goods specified in the certificate, subject to any conditions and limitations specified in thecertificate x x x. One who has adopted and used a trademark on his goods does not prevent the adoptionand use of the same trademark by others for products which are of a different description."24 Faberge,Inc. was correct and was in fact recently reiterated in Canon Kabushiki Kaisha vs. Court of Appeals.25

Assuming arguendo that "Poster Ads" could validly qualify as a trademark, the failure of P & D to secure atrademark registration for specific use on the light boxes meant that there could not have been anytrademark infringement since registration was an essential element thereof. 1âwphi1

ON THE ISSUE OF UNFAIR COMPETITION

If at all, the cause of action should have been for unfair competition, a situation which was possible even if P & D had no registration.26 However, while the petitioner’s complaint in the RTC also cited unfair competition, the trial court did not find private respondents liable therefor. Petitioner did not appeal thisparticular point; hence, it cannot now revive its claim of unfair competition.





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But even disregarding procedural issues, we nevertheless cannot hold respondents guilty of unfair competition.

By the nature of things, there can be no unfair competition under the law on copyrights although it isapplicable to disputes over the use of trademarks. Even a name or phrase incapable of appropriation as atrademark or tradename may, by long and exclusive use by a business (such that the name or phrasebecomes associated with the business or product in the mind of the purchasing public), be entitled toprotection against unfair competition.27 In this case, there was no evidence that P & D’s use of "Poster

Ads" was distinctive or well-known. As noted by the Court of Appeals, petitioner’s expert witnesses himself had testified that " ‘Poster Ads’ was too generic a name. So it was difficult to identify it with any company,honestly speaking."28 This crucial admission by its own expert witness that "Poster Ads" could not beassociated with P & D showed that, in the mind of the public, the goods and services carrying thetrademark "Poster Ads" could not be distinguished from the goods and services of other entities.

This fact also prevented the application of the doctrine of secondary meaning. "Poster Ads" was genericand incapable of being used as a trademark because it was used in the field of poster advertising, the verybusiness engaged in by petitioner. "Secondary meaning" means that a word or phrase originally incapableof exclusive appropriation with reference to an article in the market (because it is geographically or otherwise descriptive) might nevertheless have been used for so long and so exclusively by one producer

with reference to his article that, in the trade and to that branch of the purchasing public, the word or phrasehas come to mean that the article was his property.29 The admission by petitioner’s own expert witness thathe himself could not associate "Poster Ads" with petitioner P & D because it was "too generic" definitelyprecluded the application of this exception.

Having discussed the most important and critical issues, we see no need to belabor the rest.

All told, the Court finds no reversible error committed by the Court of Appeals when it reversed theRegional Trial Court of Makati City.

WHEREFORE, the petition is hereby DENIED and the decision of the Court of Appeals dated May 22, 2001is AFFIRMED in toto.

SO ORDERED.

Puno, (Chairman), Panganiban, Sandoval-Gutierrez, and Carpio-Morales, JJ., concur.

Footnotes

1 Penned by Associate Justice Salvador J. Valdez, Jr. and concurred in by Associate JusticesWenceslao L. Agnir and Juan Q. Enriquez Jr.

2 Penned by Judge Napoleon E. Inoturan.

3 Seventeenth Division; CA G.R. 55303.

4 Records, pp. 620-621.

5 Rollo, pp. 17-19, 21-22, 23-24, 26.

6 Rollo, p. 34.

7 18 C.J.S. 161.

8 Joaquin vs. Drilon, 302 SCRA 225 [1999].

9 Ibid.

10 Pp. 11-13, TSN, February 3, 1993.

11 G.R. No. 115758, March 19, 2002.

12 286 SCRA 13 [1998].




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13 Id., at p. 21, citing Anchor Hocking Glass Corp. vs. White Cap Co., 47 F. Supp. A 451, and Bauer & Cie vs. O’Donnel, 229 US 1.

14 Bonito Boats, Inc. vs. Thunder Craft Boats, Inc., 489 US 141 [1989].

15 Id., at p. 156.

16 Ibid., at p. 10.

17 Bonito Boats, Inc. vs. Thunder Craft Boats, Inc., ibid., p. 150, citing U.S. vs. Dubilier Condenser Corp., 289 U.S. 178.

18 Aronson vs. Quick Point Pencil Co., 440 U.S. 257, 262 [1979], citing Kewanee Oil Co. vs. BicronCorp., 416 U.S. 470 [1994], cited Amador, patents, p. 496.

19 Sears Roebuck vs. Stiffel, 376 US 225, 229 [1964].

20 Section 2, PD 49 (The Intellectual Property Decree).

21 101 US 102-105 [1879].

22 Exhibit "B," Original Records, p. 63.

23 215 SCRA 316 [1992].

24 Id., at p. 326.

25 336 SCRA 266 [2000].

26 Ogura vs. Chua, 59 Phil. 471.

27 Sapalo, The Law on Trademark Infringement and Unfair Competition, 2000 ed., p. 185.

28 Decision, p. 16, citing TSN, December 3, 1992, pp. 19-20.

29 Sapalo, at p. 92.





































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G.R. No. 115758 March 19, 2002

ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS LABORATORY,petitioner,vs.HON. COURT OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING and COMPANY, and ANGTIAM CHAY, respondents.

DE LEON, JR., J.:

Before us is a petition for review on certiorari of the Decision1 dated May 24, 1993 of the Court of Appealssetting aside and declaring as null and void the Orders2 dated February 10, 1992 and March 19, 1992 of the Regional Trial Court, Branch 90, of Quezon City granting the issuance of a writ of preliminary injunction.

The facts of the case are as follows:

On December 20, 1991, petitioner Elidad C. Kho filed a complaint for injunction and damages with a prayer for the issuance of a writ of preliminary injunction, docketed as Civil Case No. Q-91-10926, against therespondents Summerville General Merchandising and Company (Summerville, for brevity) and Ang TiamChay.

The petitioner's complaint alleges that petitioner, doing business under the name and style of KECCosmetics Laboratory, is the registered owner of the copyrights Chin Chun Su and Oval Facial CreamContainer/Case, as shown by Certificates of Copyright Registration No. 0-1358 and No. 0-3678; that shealso has patent rights onChin Chun Su & Device and Chin Chun Su for medicated cream after purchasingthe same from Quintin Cheng, the registered owner thereof in the Supplemental Register of the PhilippinePatent Office on February 7, 1980 under Registration Certificate No. 4529; that respondent Summervilleadvertised and sold petitioner's cream products under the brand name Chin Chun Su, in similar containersthat petitioner uses, thereby misleading the public, and resulting in the decline in the petitioner's businesssales and income; and, that the respondents should be enjoined from allegedly infringing on the copyrightsand patents of the petitioner.

The respondents, on the other hand, alleged as their defense that Summerville is the exclusive andauthorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi Factory

of Taiwan; that the said Taiwanese manufacturing company authorized Summerville to register its tradename Chin Chun Su Medicated Cream with the Philippine Patent Office and other appropriategovernmental agencies; that KEC Cosmetics Laboratory of the petitioner obtained the copyrights throughmisrepresentation and falsification; and, that the authority of Quintin Cheng, assignee of the patentregistration certificate, to distribute and market Chin Chun Su products in the Philippines had already beenterminated by the said Taiwanese Manufacturing Company.

After due hearing on the application for preliminary injunction, the trial court granted the same in an Order dated February 10, 1992, the dispositive portion of which reads:

ACCORDINGLY, the application of plaintiff Elidad C. Kho, doing business under the style of KECCosmetic Laboratory, for preliminary injunction, is hereby granted. Consequentially, plaintiff isrequired to file with the Court a bond executed to defendants in the amount of five hundredthousand pesos (P500,000.00) to the effect that plaintiff will pay to defendants all damages whichdefendants may sustain by reason of the injunction if the Court should finally decide that plaintiff isnot entitled thereto.

SO ORDERED.3

The respondents moved for reconsideration but their motion for reconsideration was denied by the trialcourt in an Order dated March 19, 1992.4

On April 24, 1992, the respondents filed a petition for certiorari with the Court of Appeals, docketed as CA-G.R. SP No. 27803, praying for the nullification of the said writ of preliminary injunction issued by the trialcourt. After the respondents filed their reply and almost a month after petitioner submitted her comment, or



Cases on Copyright

on August 14 1992, the latter moved to dismiss the petition for violation of Supreme Court Circular No. 28-91, a circular prohibiting forum shopping. According to the petitioner, the respondents did not state thedocket number of the civil case in the caption of their petition and, more significantly, they did not includetherein a certificate of non-forum shopping. The respondents opposed the petition and submitted to theappellate court a certificate of non-forum shopping for their petition.

On May 24, 1993, the appellate court rendered a Decision in CA-G.R. SP No. 27803 ruling in favor of therespondents, the dispositive portion of which reads:

WHEREFORE, the petition is hereby given due course and the orders of respondent court datedFebruary 10, 1992 and March 19, 1992 granting the writ of preliminary injunction and denyingpetitioners' motion for reconsideration are hereby set aside and declared null and void. Respondentcourt is directed to forthwith proceed with the trial of Civil Case No. Q-91-10926 and resolve theissue raised by the parties on the merits.

SO ORDERED.5

In granting the petition, the appellate court ruled that:

The registration of the trademark or brandname "Chin Chun Su" by KEC with the supplemental

register of the Bureau of Patents, Trademarks and Technology Transfer cannot be equated withregistration in the principal register, which is duly protected by the Trademark Law.1âwphi1.nêt

xxx xxx xxx

As ratiocinated in La Chemise Lacoste, S.S. vs. Fernandez, 129 SCRA 373, 393:

"Registration in the Supplemental Register, therefore, serves as notice that the registrant isusing or has appropriated the trademark. By the very fact that the trademark cannot as yetbe on guard and there are certain defects, some obstacles which the use must stillovercome before he can claim legal ownership of the mark or ask the courts to vindicate hisclaims of an exclusive right to the use of the same. It would be deceptive for a party withnothing more than a registration in the Supplemental Register to posture before courts of

justice as if the registration is in the Principal Register.

The reliance of the private respondent on the last sentence of the Patent office action onapplication Serial No. 30954 that 'registrants is presumed to be the owner of the mark untilafter the registration is declared cancelled' is, therefore, misplaced and grounded on shakyfoundation. The supposed presumption not only runs counter to the precept embodied inRule 124 of the Revised Rules of Practice before the Philippine Patent Office in TrademarkCases but considering all the facts ventilated before us in the four interrelated petitionsinvolving the petitioner and the respondent, it is devoid of factual basis. As even in caseswhere presumption and precept may factually be reconciled, we have held that thepresumption is rebuttable, not conclusive, (People v. Lim Hoa, G.R. No. L-10612, May 30,1958, Unreported). One may be declared an unfair competitor even if his competingtrademark is registered (Parke, Davis & Co. v. Kiu Foo & Co., et al., 60 Phil 928; La YebanaCo. v. chua Seco & Co., 14 Phil 534)."6

The petitioner filed a motion for reconsideration. This she followed with several motions to declarerespondents in contempt of court for publishing advertisements notifying the public of the promulgation of the assailed decision of the appellate court and stating that genuine Chin Chun Su products could beobtained only from Summerville General Merchandising and Co.

In the meantime, the trial court went on to hear petitioner's complaint for final injunction and damages. OnOctober 22, 1993, the trial court rendered a Decision7 barring the petitioner from using the trademark ChinChun Su and upholding the right of the respondents to use the same, but recognizing the copyright of thepetitioner over the oval shaped container of her beauty cream. The trial court did not award damages andcosts to any of the parties but to their respective counsels were awarded Seventy-Five Thousand Pesos(P75,000.00) each as attorney's fees. The petitioner duly appealed the said decision to the Court of



Cases on Copyright

Appeals.

On June 3, 1994, the Court of Appeals promulgated a Resolution8 denying the petitioner's motions for reconsideration and for contempt of court in CA-G.R. SP No. 27803.

Hence, this petition anchored on the following assignment of errors:

I

RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OFDISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING TO RULE ONPETITIONER'S MOTION TO DISMISS.

II

RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OFDISCRETION AMOUNTING TO LACK OF JURISDICTION IN REFUSING TO PROMPTLYRESOLVE PETITIONER'S MOTION FOR RECONSIDERATION.

III

IN DELAYING THE RESOLUTION OF PETITIONER'S MOTION FOR RECONSIDERATION, THE

HONORABLE COURT OF APPEALS DENIED PETITIONER'S RIGHT TO SEEK TIMELY APPELLATE RELIEF AND VIOLATED PETITIONER'S RIGHT TO DUE PROCESS.

IV

RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OFDISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING TO CITE THE PRIVATERESPONDENTS IN CONTEMPT.9

The petitioner faults the appellate court for not dismissing the petition on the ground of violation of SupremeCourt Circular No. 28-91. Also, the petitioner contends that the appellate court violated Section 6, Rule 9 of the Revised Internal Rules of the Court of Appeals when it failed to rule on her motion for reconsiderationwithin ninety (90) days from the time it is submitted for resolution. The appellate court ruled only after thelapse of three hundred fifty-four (354) days, or on June 3, 1994. In delaying the resolution thereof, the

appellate court denied the petitioner's right to seek the timely appellate relief. Finally, petitioner describesas arbitrary the denial of her motions for contempt of court against the respondents.

We rule in favor of the respondents.

Pursuant to Section 1, Rule 58 of the Revised Rules of Civil Procedure, one of the grounds for the issuanceof a writ of preliminary injunction is a proof that the applicant is entitled to the relief demanded, and thewhole or part of such relief consists in restraining the commission or continuance of the act or actscomplained of, either for a limited period or perpetually. Thus, a preliminary injunction order may be grantedonly when the application for the issuance of the same shows facts entitling the applicant to the relief demanded.10 This is the reason why we have ruled that it must be shown that the invasion of the rightsought to be protected is material and substantial, that the right of complainant is clear and unmistakable,and, that there is an urgent and paramount necessity for the writ to prevent serious damage.11

In the case at bar, the petitioner applied for the issuance of a preliminary injunctive order on the ground thatshe is entitled to the use of the trademark on Chin Chun Su and its container based on her copyright andpatent over the same. We first find it appropriate to rule on whether the copyright and patent over the nameand container of a beauty cream product would entitle the registrant to the use and ownership over thesame to the exclusion of others.

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged withone 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. 12 In relationthereto, a trade name means the name or designation identifying or distinguishing anenterprise.13 Meanwhile, the scope of a copyright is confined to literary and artistic works which are original



Cases on Copyright

intellectual creations in the literary and artistic domain protected from the moment of their creation.14 Patentable inventions, on the other hand, refer to any technical solution of a problem in anyfield of human activity which is new, involves an inventive step and is industrially applicable.15

Petitioner has no right to support her claim for the exclusive use of the subject trade name and itscontainer. The name and container of a beauty cream product are proper subjects of a trademark inasmuchas the same falls squarely within its definition. In order to be entitled to exclusively use the same in the saleof the beauty cream product, the user must sufficiently prove that she registered or used it before anybodyelse did. The petitioner's copyright and patent registration of the name and container would not guaranteeher the right to the exclusive use of the same for the reason that they are not appropriate subjects of thesaid intellectual rights. Consequently, a preliminary injunction order cannot be issued for the reason that thepetitioner has not proven that she has a clear right over the said name and container to the exclusion of others, not having proven that she has registered a trademark thereto or used the same before anyone did.

We cannot likewise overlook the decision of the trial court in the case for final injunction and damages. Thedispositive portion of said decision held that the petitioner does not have trademark rights on the name andcontainer of the beauty cream product. The said decision on the merits of the trial court rendered theissuance of the writ of a preliminary injunction moot and academic notwithstanding the fact that the samehas been appealed in the Court of Appeals. This is supported by our ruling in La Vista Association, Inc. v.

Court of Appeals16, to wit:

Considering that preliminary injunction is a provisional remedy which may be granted at any timeafter the commencement of the action and before judgment when it is established that the plaintiff is entitled to the relief demanded and only when his complaint shows facts entitling such reliefs xxx and it appearing that the trial court had already granted the issuance of a final injunction in favor of

petitioner in its decision rendered after trial on the merits xxx the Court resolved to Dismiss theinstant petition having been rendered moot and academic. An injunction issued by the trial court after it has already made a clear pronouncement as to the plaintiff's right thereto, that is, after thesame issue has been decided on the merits, the trial court having appreciated the evidence

presented, is proper, notwithstanding the fact that the decision rendered is not yet final xxx. Beingan ancillary remedy, the proceedings for preliminary injunction cannot stand separately or proceedindependently of the decision rendered on the merit of the main case for injunction. The merit of the

main case having been already determined in favor of the applicant, the preliminary determinationof its non-existence ceases to have any force and effect. (italics supplied)

La Vista categorically pronounced that the issuance of a final injunction renders any question on thepreliminary injunctive order moot and academic despite the fact that the decision granting a final injunctionis pending appeal. Conversely, a decision denying the applicant-plaintiff's right to a final injunction, althoughappealed, renders moot and academic any objection to the prior dissolution of a writ of preliminaryinjunction.

The petitioner argues that the appellate court erred in not dismissing the petition for certiorari for non-compliance with the rule on forum shopping. We disagree. First, the petitioner improperly raised thetechnical objection of non-compliance with Supreme Court Circular No. 28-91 by filing a motion to dismissthe petition for certiorari filed in the appellate court. This is prohibited by Section 6, Rule 66 of the RevisedRules of Civil Procedure which provides that "(I)n petitions for certiorari before the Supreme Court and theCourt of Appeals, the provisions of Section 2, Rule 56, shall be observed. Before giving due course thereto,the court may require the respondents to file their comment to, and not a motion to dismiss, the petition xxx(italics supplied)". Secondly, the issue was raised one month after petitioner had filed her answer/commentand after private respondent had replied thereto. Under Section 1, Rule 16 of the Revised Rules of CivilProcedure, a motion to dismiss shall be filed within the time for but before filing the answer to the complaintor pleading asserting a claim. She therefore could no longer submit a motion to dismiss nor raise defensesand objections not included in the answer/comment she had earlier tendered. Thirdly, substantial justiceand equity require this Court not to revive a dissolved writ of injunction in favor of a party without any legalright thereto merely on a technical infirmity. The granting of an injunctive writ based on a technical groundrather than compliance with the requisites for the issuance of the same is contrary to the primary objective



Cases on Copyright

of legal procedure which is to serve as a means to dispense justice to the deserving party.

The petitioner likewise contends that the appellate court unduly delayed the resolution of her motion for reconsideration. But we find that petitioner contributed to this delay when she filed successive contentiousmotions in the same proceeding, the last of which was on October 27, 1993, necessitating counter-manifestations from private respondents with the last one being filed on November 9, 1993. Nonetheless, itis well-settled that non-observance of the period for deciding cases or their incidents does not render such

judgments ineffective or void.17 With respect to the purported damages she suffered due to the allegeddelay in resolving her motion for reconsideration, we find that the said issue has likewise been renderedmoot and academic by our ruling that she has no right over the trademark and, consequently, to theissuance of a writ of preliminary injunction.1âwphi1.nêt

Finally, we rule that the Court of Appeals correctly denied the petitioner's several motions for contempt of court. There is nothing contemptuous about the advertisements complained of which, as regards theproceedings in CA-G.R. SP No. 27803 merely announced in plain and straightforward language thepromulgation of the assailed Decision of the appellate court. Moreover, pursuant to Section 4 of Rule 39 of the Revised Rules of Civil Procedure, the said decision nullifying the injunctive writ was immediatelyexecutory.

WHEREFORE, the petition is DENIED. The Decision and Resolution of the Court of Appeals dated May 24,1993 and June 3, 1994, respectively, are hereby AFFIRMED. With costs against the petitioner.

SO ORDERED.

Bellosillo, Mendoza, Quisumbing, and Buena, JJ., concur.

Footnote

1 Penned by Associate Justice Ricardo P. Galvez, and concurred in by Associate Justices ManuelM. Herrera and Asaali S. Isnani, Ninth Division; Rollo, pp. 36-40.

2 Penned by Judge Abraham P. Vera; CA Rollo, pp. 12-18.

3 CA Rollo, pp. 12-17.4 CA Rollo, p. 18.

5 Rollo, p. 39.

6 Rollo, pp. 38-39.

7 Rollo, pp. 19, 241.

8 Rollo, pp. 42-43.

9 Rollo, p. 21.

10 Section 4, Rule 58, Revised Rules of Civil Procedure.

11 Sy v. Court of Appeals, 313 SCRA 328 (1999).

12 Section 121.1, Republic Act No. 8293.

13 Section 121.3, Republic Act. No. 8293.

14 Section 172, Republic Act No. 8293.

15 Section 21, Republic Act No. 8293.

16 278 SCRA 498, 506 quoting Solid Homes, Inc. v. LA Vista, G.R. No. 71150 dated April 20, 1988(unpublished).

17 De Roma v. Court of Appeals, 152 SCRA 205, 209 (1987).



Cases on Copyright



Cases on Copyright

G.R. No. 108946 January 28, 1999

FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., petitioners,vs.HONORABLE FRANKLIN DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., andCASEY FRANCISCO, respondents.

MENDOZA, J.:

This is a petition for certiorari . Petitioners seek to annul the resolution of the Department of Justice, dated August 12, 1992, in Criminal Case No. Q-92-27854, entitled "Gabriel Zosa, et al . v. City Prosecutor of Quezon City and Francisco Joaquin, Jr.," and its resolution, dated December 3, 1992, denying petitioner Joaquin's motion for reconsideration.

Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922, datedJanuary 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977.

On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate of copyright specifying the show's format and style of presentation.

On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr., president of BJPI, saw onRPN Channel 9 an episode of It's a Date, which was produced by IXL Productions, Inc. (IXL). On July 18,1991, he wrote a letter to private respondent Gabriel M. Zosa, president and general manager of IXL,informing Zosa that BJPI had a copyright to Rhoda and Me and demanding that IXL discontinue airing It's aDate.

In a letter, dated July 19, 1991, private respondent Zosa apologized to petitioner Joaquin and requested ameeting to discuss a possible settlement. IXL, however, continued airing It's a Date, prompting petitioner Joaquin to send a second letter on July 25, 1991 in which he reiterated his demand and warned that, if IXLdid not comply, he would endorse the matter to his attorneys for proper legal action.

Meanwhile, private respondent Zosa sought to register IXL's copyright to the first episode of It's a Date for which it was issued by the National Library a certificate of copyright August 14, 1991.

Upon complaint of petitioners, an information for violation of P.D. No. 49 was filed against privaterespondent Zosa together with certain officers of RPN Channel 9, namely, William Esposo, Felipe Medina,and Casey Francisco, in the Regional Trial Court of Quezon City where it was docketed as Criminal CaseNo. 92-27854 and assigned to Branch 104 thereof. However, private respondent Zosa sought a review of the resolution of the Assistant City Prosecutor before the Department of Justice.

On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the Assistant City

Prosecutor's findings and directed him to move for the dismissal of the case against private respondents. 1

Petitioner Joaquin filed a motion for reconsideration, but his motion denied by respondent Secretary of Justice on December 3, 1992. Hence, this petition. Petitioners contend that:

1. The public respondent gravely abused his discretion amounting to lack of

jurisdiction — when he invoked non-presentation of the master tape as beingfatal to the existence of probable cause to prove infringement, despite thefact that private respondents never raised the same as a controverted issue.

2. The public respondent gravely abused his discretion amounting to lack of jurisdiction when he arrogated unto himself the determination of what iscopyrightable — an issue which is exclusively within the jurisdiction of theregional trial court to assess in a proper proceeding.

Both public and private respondents maintain that petitioners failed to establish the existence of probablecause due to their failure to present the copyrighted master videotape of Rhoda and Me. They contend that



Cases on Copyright

petitioner BJPI's copyright covers only a specific episode of Rhoda and Me and that the formats or concepts of dating game shows are not covered by copyright protection under P.D. No. 49.

Non-Assignment of Error.

Petitioners claim that their failure to submit the copyrighted master videotape of the television show Rhoda

and Me was not raised in issue by private respondents during the preliminary investigation and, therefore, itwas error for the Secretary of Justice to reverse the investigating prosecutor's finding of probable cause onthis ground.

A preliminary investigation falls under the authority of the state prosecutor who is given by law the power todirect and control criminal

actions. 2 He is, however, subject to the control of the Secretary of Justice. Thus, Rule 112, §4 of theRevised Rules of Criminal Procedure, provides:

Sec. 4. Duty of investigating fiscal . — If the investigating fiscal finds cause to hold therespondent for trial, he shall prepare the resolution and corresponding information. He shallcertify under oath that he, or as shown by the record, an authorized officer, has personallyexamined the complainant and his witnesses, that there is reasonable ground to believe

that a crime has been committed and that the accused is probably guilty thereof, that theaccused was informed of the complaint and of the evidence submitted against him and thathe was given an opportunity to submit controverting evidence. Otherwise, he shallrecommend dismissal of the complaint.

In either case, he shall forward the records of the case to the provincial or city fiscal or chief state prosecutor within five (5) days from his resolution. The latter shall take appropriateaction thereon ten (10) days from receipt thereof, immediately informing the parties of saidaction.

No complaint or information may be filed or dismissed by an investigating fiscal without theprior written authority or approval of the provincial or city fiscal or chief state prosecutor.

Where the investigating assistant fiscal recommends the dismissal of the case but hisfindings are reversed by the provincial or city fiscal or chief state prosecutor on the groundthat a probable cause exists, the latter may, by himself, file the corresponding informationagainst the respondent or direct any other assistant fiscal or state prosecutor to do so,without conducting another preliminary investigation.

If upon petition by a proper party, the Secretary of Justice reverses the resolution of theprovincial or city fiscal or chief state prosecutor, he shall direct the fiscal concerned to filethe corresponding information without conducting another preliminary investigation or todismiss or move for dismissal of the complaint or information.

In reviewing resolutions of prosecutors, the Secretary of Justice is not precluded from considering errors,although unassigned, for the purpose of determining whether there is probable cause for filing cases incourt. He must make his own finding, of probable cause and is not confined to the issues raised by theparties during preliminary investigation. Moreover, his findings are not subject to review unless shown to

have been made with grave abuse.Opinion of the Secretary of Justice

Petitioners contend, however, that the determination of the question whether the format or mechanics of ashow is entitled to copyright protection is for the court, and not the Secretary of Justice, to make. Theyassail the following portion of the resolution of the respondent Secretary of Justice:

[T]he essence of copyright infringement is the copying, in whole or in part, of copyrightablematerials as defined and enumerated in Section 2 of PD. No. 49. Apart from the manner inwhich it is actually expressed, however, the idea of a dating game show is, in the opinion of thisOffice, a non-copyrightable material. Ideas, concepts, formats, or schemes in their abstract form



Cases on Copyright

clearly do not fall within the class of works or materials susceptible of copyright registration as

provided in PD. No. 49. 3 (Emphasis added.)

It is indeed true that the question whether the format or mechanics of petitioners television show is entitledto copyright protection is a legal question for the court to make. This does not, however, preclude

respondent Secretary of Justice from making a preliminary determination of this question in resolvingwhether there is probable cause for filing the case in court. In doing so in this case, he did not commit anygrave error.

Presentation of Master Tape

Petitioners claim that respondent Secretary of Justice gravely abused his discretion in ruling that themaster videotape should have been predented in order to determine whether there was probable cause for

copyright infringement. They contend that 20th Century Fox Film Corporation v. Court of Appeals , 4 onwhich respondent Secretary of Justice relied in reversing the resolution of the investigating prosecutor, isinapplicable to the case at bar because in the present case, the parties presented sufficient evidence whichclearly establish "linkage between the copyright show "Rhoda and Me" and the infringing TV show "It's a

Date." 5

The case of 20th Century Fox Film Corporation involved raids conducted on various videotape outletsallegedlly selling or renting out "pirated" videotapes. The trial court found that the affidavits of NBI agents,given in support of the application for the search warrant, were insufficient without the master tape.

Accordingly, the trial court lifted the search warrants it had previously issued against the defendants. On

petition for review, this Court sustained the action of the trial court and ruled: 6

The presentation of the master tapes of the copyrighted films from which the pirated filmswere allegedly copied, was necessary for the validity of search warrants against those whohave in their possession the pirated films. The petitioner's argument to the effect that thepresentation of the master tapes at the time of application may not be necessary as thesewould be merely evidentiary in nature and not determinative of whether or not a probablecause exists to justify the issuance of the search warrants is not meritorious. The courtcannot 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 allegedlywere engaged in the unauthorized sale and renting out of copyrighted films belonging to thepetitioner pursuant to P.D. 49.

The essence of a copyright infringement is the similarity or at least substantial similarity of the purported pirated works to the copyrighted work. Hence, the applicant must present tothe court the copyrighted films to compare them with the purchased evidence of the videotapes allegedly pirated to determine whether the latter is an unauthorized reproduction of the former. This linkage of the copyrighted films to the pirated films must be established tosatisfy the requirements of probable cause. Mere allegations as to the existence of thecopyrighted films cannot serve as basis for the issuance of a search warrant.

This ruling was qualified in the later case of Columbia Pictures, Inc. v. Court of Appeals 7 in which itwas held:

In fine, the supposed pronunciamento in said case regarding the necessity for the presentationof the master tapes of the copyrighted films for the validity of search warrants should at most beunderstood to merely serve as a guidepost in determining the existence of probable cause incopyright infringement cases where there is doubt as to the true nexus between the master tapeand the printed copies. An objective and careful reading of the decision in said case could leadto no other conclusion than that said directive was hardly intended to be a sweeping and

inflexible requirement in all or similar copyright infringement cases. . . 8



Cases on Copyright

In the case at bar during the preliminary investigation, petitioners and private respondents presentedwritten descriptions of the formats of their respective televisions shows, on the basis of which theinvestigating prosecutor ruled:

As may [be] gleaned from the evidence on record, the substance of the televisionproductions complainant's "RHODA AND ME" and Zosa's "IT'S A DATE" is that two matchesare made between a male and a female, both single, and the two couples are treated to anight or two of dining and/or dancing at the expense of the show. The major concepts of both shows is the same. Any difference appear mere variations of the major concepts.

That there is an infringement on the copyright of the show "RHODA AND ME" both incontent and in the execution of the video presentation are established becauserespondent's "IT'S A DATE" is practically an exact copy of complainant's "RHODA AND ME"because of substantial similarities as follows, to wit:

RHODA AND ME "IT'S A DATE"

Set 1 Set 1

a. Unmarried participant of one gender (searcher) appears on one side of adivider, while three (3) unmarried participants of the other gender are on theother side of the divider. This arrangement is done to ensure that the searcher does not see the searchees.

a. same

b. Searcher asks a question to be answered by each of the searchees. Thepurpose is to determine who among the searchees is the most compatible withthe searcher.

b. same

c. Searcher speculates on the match to the searchee. c. same

d. Selection is made by the use of compute (sic) methods, or by the wayquestions are answered, or similar methods.

d. Selection is based on the answer of the Searchees.

Set 2 Set 2

Same as above with the genders of the searcher and searchees

interchanged.9same

Petitioners assert that the format of Rhoda and Me is a product of ingenuity and skill and is thus entitled tocopyright protection. It is their position that the presentation of a point-by-point comparison of the formats of the two shows clearly demonstrates the nexus between the shows and hence establishes the existence of probable cause for copyright infringement. Such being the case, they did not have to produce the master tape.

To begin with the format of a show is not copyrightable. Section 2 of P.D. No. 49, 10 otherwise known asthe DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of work entitled to copyright

protection, to wit:

Sec. 2. The rights granted by this Decree shall, from the moment of creation, subsist withrespect to any of the following classes of works:

(A) Books, including composite and cyclopedic works, manuscripts, directories, andgazetteers:

(B) Periodicals, including pamphlets and newspapers;

(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;



Cases on Copyright

(D) Letters;

(E) Dramatic or dramatico-musical compositions; choreographic works and entertainmentsin dumb shows, the acting form of which is fixed in writing or otherwise;

(F) Musical compositions, with or without words;

(G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and other works of art; models or designs for works of art;

(H) Reproductions of a work of art;

(I) Original ornamental designs or models for articles of manufacture, whether or notpatentable, and other works of applied art;

(J) Maps, plans, sketches, and charts;

(K) Drawings or plastic works of a scientific or technical character;

(I) Photographic works and works produced by a process analogous to photography lanternslides;

(M) Cinematographic works and works produced by a process analogous tocinematography or any process for making audio-visual recordings;

(N) Computer programs;

(O) Prints, pictorial illustrations advertising copies, labels tags, and box wraps;

(P) Dramatizations, translations, adaptations, abridgements, arrangements and other alterations of literary, musical or artistic works or of works of the Philippine government asherein defined, which shall be protected as provided in Section 8 of this Decree.

(Q) Collections of literary, scholarly, or artistic works or of works referred to in Section 9 of this Decree which by reason of the selection and arrangement of their contents constituteintellectual creations, the same to be protected as such in accordance with Section 8 of thisDecree.

(R) Other literary, scholarly, scientific and artistic works.

This provision is substantially the same as §172 of the INTELLECTUAL PROPERTY CODE OF

PHILIPPINES (R.A. No. 8293). 11 The format or mechanics of a television show is not included in the listof protected works in §2 of P.D. No. 49. For this reason, the protection afforded by the law cannot beextended to cover them.

Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independentright granted by the statute, and not simply a pre-existing right regulated by the statute. Being astatutory grant, the rights are only such as the statute confers, and may be obtained and enjoyedonly with respect to the subjects and by the persons and on terms and conditions specified in the

statute. 12

Since . . . copyright in published works is purely a statutory creation, a copyright may beobtained only for a work falling within the statutory enumeration or description. 13

Regardless of the historical viewpoint, it is authoritatively settled in the United States that there is

no copyright except that which is both created and secured by act of Congress . . . . . 14

P.D. No. 49, §2, in enumerating what are subject to copyright, refers to finished works and not to concepts.The copyright does not extend to an idea, procedure, process, system, method of operation, concept,principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in

such work. 15Thus, the new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES provides:



Cases on Copyright

Sec. 175. Unprotected Subject Matter . — Notwithstanding the provisions of Sections 172and 173, no protection shall extend, under this law, to any idea, procedure, system, methodor operation, concept, principle, discovery or mere data as such, even if they are expressed,explained, illustrated or embodied in a work; news of the day and other miscellaneous factshaving the character of mere items of press information; or any official text of a legislative,

administrative or legal nature, as well as any official translation thereof.What then is the subject matter of petitioners' copyright? This Court is of the opinion that petitioner BJPI'scopyright covers audio-visual recordings of each episode of Rhoda and Me, as falling within the class of works mentioned in P.D. 49, §2(M), to wit:

Cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings;

The copyright does not extend to the general concept or format of its dating game show. Accordingly, by the very nature of the subject of petitioner BJPI's copyright, the investigatingprosecutor should have the opportunity to compare the videotapes of the two shows.

Mere description by words of the general format of the two dating game shows is insufficient; thepresentation of the master videotape in evidence was indispensable to the determination of the existence

of probable cause. As aptly observed by respondent Secretary of Justice:

A television show includes more than mere words can describe because it involves a wholespectrum of visuals and effects, video and audio, such that no similarity or dissimilarity maybe found by merely describing the general copyright/format of both dating game shows.

WHEREFORE, the petition is hereby DISMISSED

SO ORDERED.1âwphi1.nêt

Puno, Quisumbing and Buena, JJ., concur.

Bellosillo, J., took no part.

Footnotes

1 Petition, Annex A, p. 4; Rollo, p. 27..

2 Sangguniang Bayan of Batac, Ilocos Norte v. Albano, 260 SCRA 561 (1996)

3 Petition, Annex B, pp. 1-2; Rollo, pp. 28-29.

4 164 SCRA 655 (1988).

5 Petition, p. 17; Rollo, p. 18.

6 Id ., at 663-664.

7 261 SCRA 144 (1996).

8 Id ., 173.

9 Petition Annex "G"; Rollo, pp. 44-45.

10 Promulgated on November 14, 1972.

11 Effective on January 1, 1998.

Sec. 172. Literary and Artistic Works. — 172.1. Literary and artistic works, hereinafter referred to as "works", are original intellectual creations in the literary and artistic domainprotected from the moment of their creation and shall include in particular:

(a) Books, pamphlets, articles and other writings;

(b) Periodicals and newspapers;



Cases on Copyright

(c) Lectures, sermons, addresses, dissertations prepared for oral delivery whether or notreduced in writing or other material form;

(d) Letters;

(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in

dumb shows;(f) Musical compositions, with or without words;

(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other worksof art; models or designs for works of art;

(h) Original ornamental designs or models for articles of manufacture, whether or notregistrable as an industrial design and other works of applied art;

(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative togeography, topography, architecture or science;

(j) Drawings or plastic works of a scientific or technical character;

(k) Photographic works including works produced by a process analogous to photography;

lantern slides;

(l) Audiovisual works and cinematographic works and works produced by a processanalogous to cinematography or any process for making audio-visual recording;

(m) Pictorial illustrations and advertisements;

(n) Computer programs; and

(o) Other literary, scholarly, scientific and artistic works.

12 18 C.J.S. 161.

13 Id., at 165.

14 HORACE G. BALL, LAW OF COPYRIGHT AND LITERARY PROPERTY 45 (1944).

15 NEIL BOORSTYN, COPYRIGHT LAW 25 (1981).

16 Comment of Public Respondent, p. 9; Rollo, p. 152

cases on copyright

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