G.R. Nos. 76649-51 August 19, 1988 20TH CENTURY FOX FILM CORPORATION, petitioner, vs. COURT OF APPEALS, EDUARDO M.
BARRETO, RAUL SAGULLO and FORTUNE LEDESMA, 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 seizures to raids conducted in connection with the government's anti-film piracy campaign. The main issue hinges on whether or not the judge properly lifted the search warrants he issued earlier upon the application of the National 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 in connection with the latter's anti-film piracy campaign. Specifically, the letter-complaint alleged that certain videotape outlets all over Metro Manila are engaged in the unauthorized sale and renting out of copyrighted films in videotape form which constitute a flagrant violation of Presidential Decree No. 49 (otherwise known as the Decree on the Protection of Intellectual Property). Acting on the letter-complaint, the NBI conducted surveillance and investigation of the outlets pinpointed by the petitioner and subsequently filed three (3) applications for search warrants against the video outlets owned by the private respondents. The applications were consolidated and heard by the Regional Trial Court 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 private respondents. 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; issued against 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, issued against 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 not be 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 to do, are hereby ordered to be returned to their owners through their lawyer, Atty. Benito Salazar or his agents or representatives, against proper receipt, to be forwarded to this Court for record purposes, as proof that said properties have been returned to the possession 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 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 provision against 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 the existence of a probable cause justifying their issuance. According to the petitioner, the lower court arrived at this conclusion on the basis of the depositions of applicant NBI's two witnesses which were taken through searching questions and answers by the lower court.
Section 2, Article III of the present Constitution which substantially reproduces Section 3, Article IV of the 1973 Constitution on illegal searches and seizures provides: The right of the people to be secure in their persons, houses, papers, and effects against unreasonable searches and seizures of whatever nature and for any purpose shall be inviolable, and no search warrant or warrant of arrest shall issue except upon probable cause 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 place to be searched and the persons or things to be seized. This constitutional right protects a citizen against wanton and unreasonable invasion of his privacy and liberty as to his person, papers and effects. We have explained in the case of People v. Burgos (144 SCRA 1) citing Villanueva 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 also looked upon as a recognition of a constitutionally protected area, primarily one's home, but not necessarily thereto confined. (Cf. Hoffa v. United States, 385 US 293 119661) What is sought to be guarded is a man's prerogative to choose who is allowed entry to his residence. 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 the state, 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 refrain from any invasion of his dwelling and to respect the privacies of his life. (Cf Schmerber v. California, 384 US 757 , Brennan, J. and Boyd v. United States, 116 630 ). In the same vein, Landynski in his authoritative work (Search and Seizure and the Supreme Court ), could fitly characterize constitutional right as the embodiment of a "spiritual concept: the belief that to value the privacy of home and person and to afford its constitutional protection against the long reach of government is no less than to value human dignity, and that his privacy must not be disturbed except in case of overriding social need, 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 by the 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 valid search "as such facts and circumstances which would lead a reasonably discreet and prudent man to believe that an offense has been committed and that the objects sought in connection with the offense are in the place sought to be searched." This constitutional provision also demands "no less than personal knowledge by the complainant or his witnesses of the facts upon which the issuance of a search warrant may be justified" in order to convince the judge, not the individual making the affidavit and seeking the issuance 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 respondents on the ground that it acted on the application for the issuance of the said search warrants and granted it on the misrepresentations of applicant NBI and its witnesses that infringement of copyright or a piracy of a particular film have been committed. Thus the lower court stated in its questioned order dated January 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 Reyes of the NBI stated that the counsel or representative of the Twentieth Century Fox Corporation will testify on the video cassettes that were pirated, so that he did not have personal knowledge of the alleged piracy. The witness Bacani also said that the video cassettes 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 was from master tapes allegedly belonging to the Twentieth Century Fox, because, according to him, it is of his personal knowledge. At the hearing of the Motion for Reconsideration, Senior NBI Agent Atty. Albino Reyes testified 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 tapes with 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 some misgivings 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 cases under PD 49, the copyright infringement law, and although what is required for the issuance thereof is merely the presence of probable cause, that probable cause must be satisfactory to the Court, for it is a timehonored precept that proceedings to put a man to task as an offender under our laws should be interpreted in strictissimi juris against the government and 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 in the Bill of Rights in our 1973 Constitution. So that lacking in persuasive effect, the allegation that master tapes were viewed by the NBI and 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 that matter the probable cause hovers in that grey debatable twilight zone between black and white 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 allegedly pirated 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 cause that the private respondents violated P.D. 49. As found out by the court, the NBI agents who acted as witnesses did not have personal knowledge of the subject matter of their testimony which was the alleged commission of the offense by the private respondents. Only the petitioner's counsel who was also a witness during the application for the issuance of the search warrants stated that he had personal knowledge that the confiscated tapes owned by the private respondents were pirated tapes taken from master tapes 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 the application. All these factors were taken into consideration by the lower court when it lifted the three questioned search warrants. 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 presented during the application for search warrants, thus leading it to conclude that it had been "misled by the applicant and his witnesses." (p. 17, Rollo) The presentation of the master tapes of the copyrighted films from which the pirated films were allegedly copied, was necessary for the validity of search warrants against those who have in their possession the pirated 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. The court cannot 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 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 purported pirated works to the copyrighted work. Hence, the applicant must present to the court the copyrighted films to 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 pirated films must be established to satisfy the requirements of probable cause. Mere allegations as to the existence 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 head cleaners, accessories, equipments and other machines used or intended to be used in the unlawful reproduction, sale, rental/lease distribution of the above-mentioned video tapes which she is keeping and concealing in the premises 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 constitutionally objectionable is that they are in the nature of general warrants. The search warrants describe 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 used and/or connected in the printing of the 'WE FORUM' newspaper and any and all document/communications, letters and facsimile of prints related to "WE FORUM" newspaper. 2] Subversive documents, pamphlets, leaflets, books, and other publications to promote the objectives and purposes of the subversive organizations known as Movement for Free Philippines, 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, 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 which authorized 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 in connection with the violation of SDC 13-3703 or otherwise' have been held too general, and that portion of a search warrant which authorized the seizure of any "paraphernalia which could be used to violate Sec. 54-197 of the Connecticut General Statutes [the statute dealing 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 seized under 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 be confiscated under the questioned search warrants. Television sets, video cassette recorders, reminders and tape cleaners are articles which can be found in a video tape store engaged in the legitimate business of lending or renting out betamax tapes. In short, these articles and appliances are generally connected with, or related to a legitimate business not necessarily involving piracy of intellectual property or infringement of copyright laws. Hence, including these articles without specification and/or particularity that they were really instruments in violating an Anti-Piracy law makes The search warrant too general which could result in the confiscation of all items found in any video store. In fact, this actually happened in the instant case. Thus, the lower court, in its questioned order dated October 8, 1985 said: Although the applications and warrants themselves covered certain articles of property usually found in a video store, the Court believes that the search party should have confined themselves 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 usually connected with, or related to, a legitimate business, not involving piracy of intellectual property, or infringement of copyright laws. So that a television set, a rewinder, and a whiteboard listing Betamax tapes, video cassette cleaners video cassette recorders as reflected in the Returns of Search Warrants, are items of legitimate business engaged in the video tape industry, and which could not be the subject of seizure, The applicant and his agents therefore exceeded their authority in seizing perfectly legitimate personal property usually 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 search warrants it earlier issued against the private respondents. We agree with the appellate court's findings to the effect that: An assiduous examination of the assailed orders reveal that the main ground upon which the respondent Court anchored said orders was its subsequent findings that it was misled by the applicant (NBI) and its witnesses 'that infringement of copyright or a piracy of a particular film have been committed when it issued the questioned warrants.' Stated differently, the respondent Court merely corrected its erroneous findings as to the existence of probable cause and declared the search and seizure to be unreasonable. Certainly, such action is within the power and authority of the respondent Court to perform, provided that it is not exercised in an oppressive or arbitrary manner. Indeed, the order of the respondent Court declaring the existence of probable cause is not final and does not constitute res judicata.
Grave abuse of discretion' implies such capricious and whimsical exercise of judgment as is equivalent to lack of jurisdiction. Courts should not impose any unnecessary roadblocks in the way of the anti-film piracy campaign. Respondent Felicidad Robles and Goodwill Trading Co. and (b) the resolution denying petitioners' motion for reconsideration. respondents ignored the demands. Books 1 and 2 (1985 edition) which book was covered by copyrights issued to them. petitioners filed with the Regional Trial Court. CINCO and JOVITA N. the campaign cannot ignore or violate constitutional safeguards. In fact. on July 7. and without securing their permission. which is a case of plagiarism and copyright infringement. JJ. scheme of presentation. the instant petition is DISMISSED. Petitioners then made demands for damages against respondents and also demanded that they cease and desist from further selling and distributing to the general public the infringed copies of respondent Robles' works.. WHEREFORE. Inc. if not all together a copy of petitioners' book.. where the power is exercised in an arbitrary or despotic manner by reason of passion or personal hostility. Bidin and Cortes. However.. By chance they came upon the book of respondent Robles and upon perusal of said book they were surprised to see that the book was strikingly similar to the contents. 5 In the complaint. lifted. copied. FELICIDAD C. vs. 44-45. 3 in which the appellate court affirmed the trial court's dismissal of the complaint for infringement and/or unfair competition and damages but deleted the award for attorney's fees. 1999 PACITA I..1âwphi1.. 1988. The trial court did not commit reversible error. The questioned decision and resolution of the Court of Appeals are AFFIRMED.: The case before us is a petition for review on certiorari 1 to set aside the (a) decision or the Court of Appeals 2. the assailed orders were motivated by a noble desire of rectifying an error. Fernan." (pp. petitioners alleged that in 1985. FERNANDO.J. produced through their combined resources and efforts. The textual contents and illustrations of CET were literally reproduced in the book DEP. the petitioner did not even contest the righteousness and legality of the questioned orders but instead concentrated on the alleged denial of due process of law. ROBLES and GOODWILL TRADING CO. entitled COLLEGE ENGLISH FOR TODAY (CET for brevity). After an itemized examination and comparison of the two books (CET and DEP). concur G. Robles being substantially familiar with the contents of petitioners' works. The
. or. C. SO ORDERED. 131522 July 19. Rollo) The proliferation of pirated tapes of films not only deprives the government of much needed revenues but is also an indication of the widespread breakdown of national order and discipline. and it must be so patent and gross as to amount 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.nêt The facts are as follows: Petitioners are authors and copyright owners of duly issued certificates of copyright registration covering their published works.
PARDO. illustrations and illustrative examples in their own book. in other words. However. and WORKBOOK FOR COLLEGE FRESHMAN ENGLISH. No.' But far from being despotic or arbitrary. a complaint for "Infringement and/or unfair competition with damages" 4 against private respondents. respondents. INC. J. Feliciano. Series 1. respondent Felicidad C. petitioners scouted and looked around various bookstores to check on other textbooks dealing with the same subject matter. Books 1 and 2. HABANA. ALICIA L. much so when the erroneous findings collided with the constitutional rights of the private respondents. petitioners. petitioners found that several pages of the respondent's book are similar. are the author/publisher and distributor/seller of another published work entitled "DEVELOPING ENGLISH PROFICIENCY" (DEP for brevity). In the course of revising their published works.R. To say that the problem of pirated films can be solved only by the use of unconstitutional shortcuts is to denigrate the long history and experience behind the searches and seizures clause of the Bill of Rights.A careful review of the record of the case shows that the respondent Court did not commit a grave abuse of discretion when it issued the questioned orders. Makati. CET. hence. plagiarized and/or transposed certain portions of their book CET.
Petitioners also assailed the findings of the trial court that they were animated by bad faith in instituting the complaint. since it was not privy to the misrepresentation. and denied the allegations of plagiarism and copying that petitioners claimed. On August 1. 1993. that said plaintiffs solidarily reimburse defendant Robles for P20. of the published and copyrighted books of the petitioners which were transposed. together with the molds." Respondent interposed a counterclaim for damages on the ground that bad faith and malice attended the filing of the complaint. 1993. Inc.. incorporation and reproduction of the portions of the book of petitioners. on April 23. Plaintiffs are liable for cost of suit. Order No. without the authority or consent of petitioners. and the misrepresentations of respondent Robles that the same was her original work and concept adversely affected and substantially diminished the sale of the petitioners' book and caused them actual damages by way of unrealized income. because petitioner Habana was professionally jealous and the book DEP replaced CET as the official textbook of the graduate studies department of the Far Eastern University. the trial court rendered its judgment finding thus: WHEREFORE. plates and films and other materials used in its printing destroyed. ABRAHAM SINGSON Assisting Judge S.. Petitioners complied with the desired particularization. the court directed its branch clerk of court to forward all the records of the case to the Court of Appeals. Inc. and furnished respondent Robles the specific portions. 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. studies and experiences. On November 28. and (3) the similarities may be due to the authors' exercise of the "right to fair use of copyrigthed materials. filed its answer to the complaint 7 and alleged that petitioners had no cause of action against Goodwill Trading Co. while respondent Goodwill Trading Co. (s/t) MARVIE R. 13 In the appeal. inclusive of pages and lines. copied and plagiarized and/or otherwise found their way into respondent's book. respondent Robles filed her answer 8. Done in the City of Manila this 23rd day of April. lifted. and on July 19.00 attorney's fees and defendant Goodwill for P5. 1993.. Adm. Petitioners asked the court to order the submission of all copies of the book DEP. the court hereby orders that the complaint filed against defendants Felicidad Robles and Goodwill Trading Co. and for respondents to render an accounting of the proceeds of all sales and profits since the time of its publication and sale.000. 14
. 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. petitioners argued that the trial court completely disregarded their evidence and fully subscribed 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 not subject to copyright.000. so any similarity between the respondents book and that of the petitioners was due to the orientation of the authors to both works and standards and syllabus. 9 During the pre-trial conference. After the trial on the merits. and was not a copy of any existing valid copyrighted book. incorporation and reproduction of particular portions of the book CET in the book DEP. Inc. IT IS SO ORDERED. 1988. that there was an agreement between Goodwill and the respondent Robles that Robles guaranteed Goodwill that the materials utilized in the manuscript were her own or that she had secured the necessary permission from contributors and sources. premises considered.00 attorney's fees. was impleaded as the publisher and joint co-owner of the copyright certificates of registration covering the two books authored and caused to be published by respondent Robles with obvious connivance with one another.plagiarism. respondents refused. C. Inc. that the author assumed sole responsibility and held the publisher without any liability. 1988. respondent Goodwill Trading Co. 1988. shall be DISMISSED. plagiarism. petitioners filed their notice of appeal with the trial court 12. Respondent stressed that (1) the book DEP is the product of her independent researches. (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). Respondent Robles was impleaded in the suit because she authored and directly committed the acts of infringement complained of. 1988. 1993. respondent Robles filed a motion for a bill of particulars 6 which the trial court approved on August 17. as guides. On July 27. 124-92 11 On May 14..
all laws dealing with the protection of intellectual property rights have been consolidated and as the law now stands.7 Other communication to the public of the work The law also provided for the limitations on copyright. "Edmund Burke's Collection. — Subject to the provisions of chapter VIII. (2) whether or not there was animus furandi on the part of respondent when they refused to withdraw the copies of CET from the market despite notice to withdraw the same.3 The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership. Inc. respondents committed no copyright infringement. The relevant portions of the decision state: It must be noted.1 Reproduction of the work or substanlial portion of the work. authorize or prevent the following acts: 177. Boerigs' "Competence in English" and Broughton's. despite the apparent textual.5 Public display of the original or copy of the work.i. Notwithstanding the change in the law." xxx xxx xxx Appellant's reliance on the last paragraph on Section II is misplaced. the protection of copyrights is governed by Republic Act No.6 Public performance of the work. arrangement or other transformation of the work. 1997. in instituting the action against respondents. and 177. translation. adaptation. that similarity of the allegedly infringed work to the author's or proprietor's copyrighted work does not of itself establish copyright infringement.4 Rental of the original or a copy of an audiovisual or cinematographic work. 15 The Court of Appeals was of the view that the award of attorneys' fees was not proper. 8293. including foreign books. 49 was in force. the Court of Appeals denied the same in a
. Resolution 17 dated November 25. the same principles are reiterated in the new law under Section 177. 177. thus:
however. thematic and sequential similarity between DEP and CET. since there was no bad faith on the part of petitioners Habana et al.On June 27.2 Dramatization. 177. It must be emphasized that they failed to prove that their books were made sources by appellee. Petitioners raised the following issues: (1) whether or not. as in this case. however. It provides for the copy or economic rights of an owner of a copyright as follows: Sec. (n) 177. in violation of Section 11 of Presidential Decree No. e. 18 We find the petition impressed with merit. Appellee Robles has fully explained that the portion or material of the book claimed by appellants to have been copied or lifted from foreign books. especially if the similarity results from the fact that both works deal with the same subject or have the same common source. abridgement. 177. petitioners submit that the appellate court erred in affirming the trial court's decision. 49. the Court of Appeals rendered judgment in favor of respondents Robles and Goodwill Trading Co. this petition.. and (3) whether or not respondent Robles abused a writer's right to fair use. with particular reference to those matters claimed by appellants to have been plagiarized were topics or matters appearing not only in appellants and her books but also in earlier books on College English. Hence. petitioners filed a motion for reconsideration. In this appeal. a work embodied in a sound recording. 177. copyright or economic rights shall consist of the exclusive right to carry out. 1997. irrespective of the ownership of the original or the copy which is the subject of the rental. On July 12. 1997. Copy or Economic rights. The complaint for copyright infringement was filed at the time that Presidential Decree No. 177. a computer program. She has duly proven that most of the topics or materials contained in her book. Edmund Burke's "Speech on Conciliation". At present. a compilation of data and other materials or a musical work in graphic form.
broadcast. also in the topic of parallel structure and repetition. Miss Reyes address is 214 Taft Avenue Manila
On Page 250 of CET. Not peace through the medium of war. scholarly and scientific works. — Notwithstanding the provisions of Chapter V.
In the above quoted provisions. It is simple peace. The only difference is that petitioners acknowledged the author Edmund Burke. not peace to depend on the juridical determination of perplexing questions. 184. Miss Reyes lives in 214 Taft Avenue. In several other pages 26 the treatment and manner of presentation of the topics of DEP are similar if not a rehash of that contained in CET.D. "work" has reference to literary and artistic creations and this includes books and other literary. Manila 22 On page 73 of respondents Book 1 Developing English Today.1 Limitations on copyright. 49] (b) The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose. or the precise marking of the boundary of a complex government. they wrote: He died on Monday. April 25. [Sec. That the source and the name of the author. once it has been lawfully made accessible to the public. It is peace sought in the spirit of peace. or other communication to the public. be copied. To constitute infringement. and laid in principles purely pacific. if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use: Provided.D."
On page 100 of the book DEP 25. the same example is found in toto. 1975. 21 A perusal of the records yields several pages of the book DEP that are similar if not identical with the text of CET. or even a large portion of it. 1975. the following acts shall not constitute infringement of copyright: (a) the recitation or performance of a work. On page 404 of petitioners' Book 1 of College English for Today. April 15. if appearing in the work is mentioned . 27 In determining the question of infringement. not peace to arise out of universal discord.Sec. the authors wrote: Items in dates and addresses: He died on Monday. including quotations from newspaper articles and periodicals in the form of press summaries. thus: The proposition is peace. If so much is taken that the value of the original work is substantially diminished. if done privately and free of charge or if made strictly for a charitable or religious institution or society. — Edmund Burke. sound recording of film. When is there a substantial reproduction of a book? It does not necessarily require that the entire copyrighted work. the work is appropriated. 10(1). P. "Speech on Criticism. 11 third par. We believe that respondent Robles' act of lifting from the book of petitioners substantial portions of discussions and examples. fomented from principle. 49) xxx xxx xxx (e) The inclusion of a work in a publication. the amount of matter copied from the copyrighted work is an important consideration. No. there is an infringement of copyright and to an injurious extent. it is not necessary that the whole or even a large portion of the work shall have
. (Sec. and her failure to acknowledge the same in her book is an infringement of petitioners' copyrights. and respondents did not. that the source and the name of the author. there is this example on parallelism or repetition of sentence structures. not peace to be hunted through the labyrinth of intricate and endless negotiations. if appearing on the work are mentioned. and in its ordinary haunts. P. Provided. in all parts of the empire. sought in its natural course.
30 The next question to resolve is to what extent can copying be injurious to the author of the book being copied. However. In the case at bar. or the labors of the original author are substantially and to an injurious extent appropriated by another. or piracy. However. are mentioned. are mentioned. under Section 184. we believe that even if petitioners and respondent Robles were of the same background in terms of teaching experience and orientation. such as the segment about the "Author Card". and that the similarity between her style and that of petitioners can not be avoided since they come from the same background and orientation may be true. copying alone is not what is prohibited. the following shall not constitute infringement of copyright: xxx xxx xxx (c) The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose. To allow another to copy the book without appropriate acknowledgment is injury enough. there is no question that petitioners presented several pages of the books CET and DEP that more or less had the same contents. 28 The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its gravity by an appropriate understanding thereof. and infringement of copyright. That the source and the name of the author. without the consent of the owner of the copyright. in this jurisdiction under Sec 184 of Republic Act 8293 it is provided that: Limitations on Copyright. Notwithstanding the provisions of Chapter V. teaching approach and methodology are almost identical because they were of the same background. which is a synonymous term in this connection. all the pages cited by petitioners to contain portion of their book College English for Today were eliminated. However. If so much is taken that the value of the original is sensibly diminished. Hence.1 (b). did not know whether or not he was infringing any copyright. al. he at least knew that what he was copying was not his. Infringement of a copyright is a trespass on a private domain owned and occupied by 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. including quotations from newspaper articles and periodicals in the form of press summaries are allowed provided that the source and the name of the author. In cases of infringement. it is not an excuse for them to be identical even in examples contained in their books. protected by law.been copied. including quotations from newspaper articles and periodicals in the form of press summaries: Provided. Quotations from a published work if they are compatible with fair use and only to the extent justified by the purpose. 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 Goodwill bookstores the book DEP upon learning of petitioners' complaint while pharisaically denying petitioners' demand. In copyrighting books the purpose is to give protection to the intellectual product of an author. Here. if appearing on the work. The copying must produce an "injurious effect". therefore. The final product of an author's toil is her book. in such cases. and. This is precisely what the law on copyright protected. The respondents claim that their similarity in style can be attributed to the fact that both of them were exposed to the APCAS syllabus and their respective academic experience. the injury consists in that respondent Robles lifted from petitioners' book materials that were the result of the latter's research work and compilation and misrepresented them as her own.
. there is a clear case of appropriation of copyrighted work for her benefit that respondent Robles committed. and he copied at his peril. It was further noted that when the book DEP was re-issued as a revised version. 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. the least that respondent Robles could have done was to acknowledge petitioners Habana et. as the source of the portions of DEP. if appearing on the work. Is it enough that there are similarities in some sections of the books or large segments of the books are the same? In the case at bar. It may be correct that the books being grammar books may contain materials similar as to some technical contents with other grammar books. the numerous pages that the petitioners presented showing similarity in the style and the manner the books were presented and the identical examples can not pass as similarities merely because of technical consideration. The similarities in examples and material contents are so obviously present in this case. A copy of a piracy is an infringement of the original. She circulated the book DEP for commercial use did not acknowledged petitioners as her source. that is sufficient in point of law to constitute piracy. consists in the doing by any person. and it is no defense that the pirate. of anything the sole right to do which is conferred by statute on the owner of the copyright.
Books 1 and 2. ROBLES and GOODWILL jointly misrepresented DEP (over which they shared copyright ownership) "as the former's original published works and concept. then prayed for the court to: (1) order the submission and thereafter the destruction of all copies of DEP. the plagiarism." HABANA et al. . I find no alternative but to sustain both the trial court and the Court of Appeals. (hereafter GOODWILL). J. SO ORDERED. C. C. appropriation or copyright.. . dissenting opinion: I am unable to join the majority view. 88-1317. ." She further claimed that her various national and regional professional activities in general education. Robles (hereafter ROBLES) and her publisher and distributor. research and orientation which she employed.J. Melo... the latter would be solely responsible for acts of plagiarism or violations of copyright or any other law. 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. incorporation and reproduction of particular portions of CET into DEP could not be gainsaid since ROBLES was substantially familiar with CET and the textual asportation was accomplished without their authority and/or consent. JJ. studies and experience. ROBLES asserted that: (1) DEP was the exclusive product of her independent research. HABANA. derived." and (3) to enjoin ROBLES and GOODWILL to solidarily pay actual. Series 1 1.WHEREFORE. On 12 July 1988. JR. if not outright physical similarity. if (there were) any. teaching concept and design. the petition is hereby GRANTED. and a crossclaim against its co-defendant anchored on the aforementioned Agreement. exhibited an uncanny resemblance. with damages against private respondent Felicidad C.
. Goodwill Trading Co. language and literature. incorporation and reproduction" and hence "could not be privy to the same. ideas. plates. together with the molds. . Developing English Proficiency. manner of presentation and illustrative examples.
DAVIDE. principles of general or universal knowledge which were commonly and customarily understood as incapable of private and exclusive use. as well as attorney's fees and expenses of litigation.. [ROBLES and GOODWILL] persistently failed and refused to comply therewith. films and other materials used in the printing thereof. as well as the amount of sales and profits . In its Answer. to CET as to content. please see dissenting opinion. Books 1 and 2 (hereafter CET) and Workbook for College Freshman English. personal reason. I dissent. et al. concur. From the following factual and procedural antecedents. Kapunan and Ynares-Santiago. (2) require ROBLES and GOODWILL to render an accounting of the sales of the "infringing works from the time of its ( sic) inceptive publication up to the time of judgment. R. et al.J. HABANA. filed with the trial court a complaint for infringement and unfair competition. they discovered that ROBLES' own published works. The decision and resolution of the Court of Appeals in CA-G." and that in an Agreement with co-defendant ROBLES.. moral and exemplary damages. and (3) her works were the result of the legitimate and reasonable exercise of an author's "right to fair use of even copyrighted materials as [a] guide. GOODWILL also interposed a compulsory counterclaim against PACITA. as well as her teaching experience in graduate and post graduate education would obviate the remotest possibility of plagiarism. published and distributed in 1985. sequence of topics and ideas. to the extent of answering for any and all damages GOODWILL may suffer. particularly the segments where the alleged literal similitude appeared." and "notwithstanding formal demands made .. 44053 are SET ASIDE. In her answer. The case was docketed as Civil Case No. averred in their complaint that they were the co-authors and joint copyright owners of their published works College English for Today. but that "influences and/or inspirations from other writers" like the methodology and techniques as to presentation. GOODWILL denied culpability since "it had no knowledge or information sufficient to form a belief as to the allegations of plagiarism. were admittedly influenced or inspired by earlier treatises. scheme. Jr. to cease and desist from the sale and distribution of DEP. (hereafter DEP). et al. no part. Davide. fell within the ambit of general information.. CV No. mostly by foreign authors. (2) DEP. Inc.
et al.A. her counterclaim for moral damages should. authorize or prevent the following acts: 177. (2) ROBLES' and GOODWILL's animo furandi or intent to appropriate or copy CET with the non-removal of the damaging copies of DEP from the bookstores despite notice to withdraw the same. Their motion for reconsideration having been denied for want of cogent reasons. the parties agreed to a stipulation of facts 2 and for the court to first resolve the issue of infringement before disposing of the claims for damages.. pertinent laws and jurisprudence.R. Also.
. in Civil Case No.D. 4 the trial court found that HABANA. abridgment. No. 8 nevertheless bears significance here. Moreover. to a certain extent.2 Dramatization. Before said court HABANA. 44053. but its Section 239. instituted this petition. 49. 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 redress to the law for protection" and observed that DEP and CET had the same sources. she claimed to have treated quite differently in DEP the very ideas. translations. 5 However. ROBLES contends that appeal by certiorari does not lie in this case for the challenged decision and the trial court's judgment were amply supported by evidence. A copyright may be accurately defined as the right granted by statute to the proprietor of an intellectual production to its exclusive use and enjoyment to the extent specified in the statute. No. thematic and sequential similarity between DEP and CET. argued that the trial court totally disregarded their evidence and merely subscribed to ROBLES' arguments. the Court hereby orders that the complaint filed against defendants Felicidad Robles and Goodwill Trading Co. counterclaim against HABANA. shall be DISMISSED: that said plaintiffs solidarily reimburse defendant Robles for P20. mostly foreign books. At the pre-trial conference.ROBLES likewise suggested that any similarity between DEP and CET as regards scope and sequence could be attributed to "the orientation of the authors to the scope and sequence or syllabus — which incorporates standards known among English grammar book writers — of the subject-matter for Basic Communication Arts recommended by the Association of Philippine Colleges of Arts and Sciences (APCAS). et al. in violation of Section 11 of P.00 attorney's fees. they theorize is on all fours with the case at bar. premises considered. consisting chiefly of earlier works. IT IS SO ORDERED. be granted or for us to order the remand of the case to the trial court for reception of evidence on damages. and (3) the fact that ROBLES abused a writer's right to fair use. the provisions of the new intellectual property law. 8293. After trial on the merits.000. et al. GOODWILL's crossclaim against ROBLES. that the application of the Act shall not result in the diminution of such protection. likewise disposed of the controversy in favor of ROBLES and GOODWILL. that it co-authored DEP or that it singly or in cabal with ROBLES committed any act constituting copyright infringement. GOODWILL. remained the same. Hence. The Court of Appeals. 49. the Court of Appeals modified the trial court's decision by reversing the award for attorney's fees. adaptation. The case was docketed as CA-G. the trial court found that "the cause of action or acts complained of [were] not covered by said decree" as Section 10 thereof barred authors of works already lawfully made accessible to the public from prohibiting the reproductions. It held that the good faith and sincerity of HABANA. 49. in the main. quotations and excerpts of such works. 9 Under Section 177 of R. HABANA. therefore. They claim that the Court of Appeals committed reversible error in failing to appreciate: (1) the insuperable evidence and facts admitted and proved demonstrating plagiarism or piracy and instead afforded full weight and credit to ROBLES' matrix of general. et al. appealed to the Court of Appeals. with the assertion that no proof was ever introduced. adaptations. however. recitation and performance of the same.D. provided. the dispositive portion of which reads: WHEREFORE. however. arrangement or other transformation of the work. Inc. While the complaint. as well as ROBLES' compulsory counterclaim against GOODWILL were all dismissed for lack of factual and legal bases. hypothetical and sweeping statements and/or defenses. 6 They invoke Laktaw v. et al. No." While the syllabus was admittedly adopted in DEP.00 attorney's fees and defendant Goodwill for P5.000. translation. in commencing the action negated the basis therefor. 88-1317 was filed during the effectivity of P.3 clearly states that its provisions shall apply to works in which copyright protection obtained prior to the effectivity of the Act subsists. The core issue then is whether or not the Court of Appeals erred in affirming the trial court's judgment that despite the apparent textual.. 3 Noting that the law applicable to the case was Presidential Decree No. stood pat on its disclaimer. the philosophy behind both statutes as well as the essential principles of copyright protection and copyright infringement have. 8293. on its part. R.A. CV No. Paglinawan 7 which.. techniques or principles expressed in CET such that neither textbook could be considered a copy or plagiarism of the other. no copyright was committed by ROBLES and GOODWILL. while Section 11 allowed the utilization of reproductions. HABANA. the trial court rendered its decision in favor of defendants.1 Reproduction of the work or substantial portion of the work. 10 the copy or economic right (copyright and economic right are used interchangeably in the statute) consists of the exclusive right to carry out. et al. failed to discharge their onus of proving that ROBLES and GOODWILL committed acts constituting copyright infringement. It took effect on 1 January 1998. 177. No. Plaintiffs are liable for costs of suit.
concepts. the characteristics of an effective paragraph. statue or invention does not reap all the benefits and advantages of his own property by disposing of it. which the latter alleged to be a reproduction. enforce and hold accountable the defrauder or usurper of said economic rights. But while the owner of the land. without his consent. no conclusion. as admitted by the protagonists here. copyright page. title page. 17 On its part. a computer program. cannot demand monopoly. 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. 23 e. they inevitably deal with the same subjects typically and ordinarily treated by writers of such genre. a work embodied in a sound recording.7 Other communication to the public of the work. the different kinds of card catalogs and their entries. or how a book can be divided into parts (frontispiece. which are represented for example. 177.. is a copy of CET. 14 With the invasion of his property rights. cannot prevent its reproduction by any person who may want to reproduce it. In essence. use of punctuation marks.4 Rental of the original or a copy of an audiovisual or cinematographic work. the copyright protection extended to the creator should ensure his attainment of some form of personal satisfaction and economic reward from the work he produced. on the other hand the author of a book.177. or if the labors of the original author are substantially. in the use of the recognized library classification systems (Dewey Decimal System and the Library of Congress System). author card and subject card). As both books are grammar books. it is not necessary that the entire copyrighted work. a substantial reproduction of CET? Both the trial court and respondent court found in the negative. and 177. 16 In turn. did ROBLES and GOODWILL infringe upon the copyright of HABANA et al. a compilation of data and other materials or a musical work in graphic form. labor and judgment. the Court there quoted Manresa and explained: He who writes a book. Was DEP a substantial reproduction of CET? To constitutes a substantial reproduction. by receiving its benefits and utilities. known in general as "piracy. just as the owner of the land has the absolute right to sell it or its fruits. 22 mere similarities (not substantial similarities) in some sections of the books in question decisively militate against a claim for infringement where the similarities had been convincingly established as proceeding from a number of reasons and/or factors. therefore. can be drawn that DEP. a copyright owner is naturally entitled to seek redress. then the property right granted him is reduced to a very insignificant thing and the effort made in the production of the book is in no way rewarded.1. or carves a statute. paragraphs. appropriated. 177. scientific and artistic works. copyright infringement. preface. etc.3 The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership. If the author of a book. universal and general knowledge that have. in legal contemplation. by selling it and its fruits. a work is deemed by law an original if the author created it by his own skill. 177.) or to the different headings used in a card catalogue (title card.
. "The work. or makes an invention. a copy is that which comes so near to the original so as to give to every person seeing it the idea created by the original." as repeatedly mentioned. 20 would inescapably lead to a conclusion that there is a discernible similarity between the two. by the price. by way of example. consists in the right to reproduce it in similar or like copies. for the most important form of realizing the economic advantages of a book.5 Public display of the original or a copy of the work. I submit they were correct. Now. constitutes copyright infringement. 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. These standard subjects fall within the domain of ideas. irrespective of the ownership of the original or the copy which is the subject of the rental. it is violation of a private right protected by law. however. perhaps fully realizes all its economic value. 15 absent copying. or in the least. be copied. been in existence for quite a long time. 24 As such. 18 A visual comparison of the portions of CET 19 juxtaposed against certain pages of DEP. the usurper must have copied or appropriated the "original" work of an author or copyright proprietor. To constitute infringement. there can be no infringement of copyright. language structure. refers to the literary and artistic works defined as original intellectual creations in the literary and artistic domain protected from the moment of their creation and enumerated in Section 172. system of book classification. which includes books and other literary. et al. 12 the use of intellectual property or creations should basically promote the creator or author's personal and economic gain.6 Public performance of the work. if so much is taken that the value of the original is substantially diminished. and to an injurious extent. 13 The execution. of any one or more of the exclusive rights conferred by law on a copyright owner. after its publication. 1. Without conceding the suitability of Laktaw as precedent. 21 But the similarity of the books here does not amount to an appropriation of a substantial portion of CET. etc. by publishing DEP. scholarly. statue or invention.g. table of contents. If the existence of substantial similarities does not of itself establish infringement. HABANA. 11 Stripped in the meantime of its indisputable social and beneficial functions. has the absolute right to reproduce or sell it." is a trespass on a domain owned and occupied by a copyright owner. different parts of a book. or even a large portion of it. as correctly assessed by respondent court and the lower court. Hence.
teaching approaches and methodology. We have never — all 35 words were copied from there. 29 To illustrate. CET and DEP had common sources and materials. which may be followed by the date of his birth and death if he is no longer living. to the extent that Dr. discovery or mere data. and Saint. procedure. As found by respondent court. it is natural they would use many expressions and definitions peculiar to teaching English grammar. Pacita Habana were faculty members of the Institute of English of the Far Eastern University from 1964 to 1974. and the size of the book. lecturers. volume. principle. While a portion of DEP found on page 18 which discusses the author card provides:
. Q But what I am asking how could you conclude that by just similarity of 10 words of defendants words that was copied from yours [sic] and when I point out 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 defendant Robles you pointed out her source very clear. you so concluded it was (sic) copied from yours 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 to admit that it was copied from Wills. no protection can be extended to such an idea. textbook writers and teachers of English and grammar. sir. the author's complete name on the first line. When defendants test ( sic) showed 10 words similar to yours. illustrations. Given their nearidentical academic and professional background. she did not copy it from yours? A Alright. 4. It comes therefore with no surprise that there are similarities in some parts of the rival books. Pacita Habana: Q Let's clarify your position Dra. concept. 5. Indeed. explained. if there is one. A Yes. illustrated or embodied in a work. surname first. the edition. 27 3. the title of the book. researchers. She copied it from that book by Wills. Habana admitted that ROBLES assisted the former in the preparation of her doctoral dissertation. the translator or illustrator. ROBLES and Dr. the collation composed of the number of pages. and the subtitle. mostly by foreign authors. Q So. maybe she did not copy it but definitely it is a pattern of plagerism [ sic]. It contains 1. The same is true of St. an excerpt from page 21 of CET reads: Author Card The author card is the main entry card. They even used to be on friendly terms with each other. 3. the subjects with which the book deals [sic]. the call number on the upper left-hand corner. system method or operation. even if expressed. it is difficult to conceive how writers on the same subject matter can very well avoid resorting to common sources of information and materials and employing similar expressions and terms peculiar to the subject they are treating. Habana. the place and date of publication. the imprint which includes the publisher. if it is not the first. 6. 28 Both were ardent students. 25 2. Names beginning with Mc. or M are filed in the card catalog as though spelled out as MAC. 2. for example Mc Graw — MacGraw. if there is any. Even in this jurisdiction. Similarity in orientation and style can likewise be attributed to the exposure of the authors to the APCAS syllabus and their respective academic experience. 7. 26 such that the particular portions claimed to have been lifted and literally reproduced also appeared in earlier works. This is clear from the testimony of petitioner Dr.since these are of common or general knowledge. 8. It is not farfetched that they could have even influenced each other as textbook writers.
in preparing his dictionary. the rationale in Laktaw does not apply in this case. I am not persuaded by the claim of HABANA. or. volume. . aside from an isolated accounting of the number of words supposedly usurped in a segment of DEP from CET. Said copies and reproductions are numerous. if not a reversal. ROBLES' testimony that she made an independent investigation or research of the original works or authors she consulted was unrebutted. the title of the book. 32 the records do not disclose that all the words allegedly copied were tallied and that the words thus tallied were numerous enough to support a finding of copying. and improperly copied the greater part thereof in the work Diccionariong Kastila-Tagalog published by defendant. 49. what is the same thing. which may be followed by the date of his birth and death if he is no longer living. given in plaintiffs dictionary. only 3.A. surname first. Fourth. having been developed over quite sometime. if not. No. a fact which shows that the defendant. literally copied those Spanish words and their meanings and equivalents in Tagalog from the plaintiff's dictionary. the records do not reveal this to be the case. in violation of Article 7 of the Law of 10 January 1879 on Intellectual Property. we are bound by this factual determination. the law on intellectual property violated in Laktaw was a world and time apart from R.452 words.D. everything that appears in the plaintiff's dictionary for similar Spanish words. I thus find that the ruling of the respondent court is totally supported by the evidence on record.The author card is the main entry card containing: 1. definitions and different meanings in Tagalog. he having reproduced or copied the remaining 20. as already conceded.108 words are the defendant's own. having reproduced. This is true also of St. of the same. while there is an identity in the manner by which some of the ideas and concepts were articulated. and ROBLES would have no choice but to articulate the terms particular to the entries in an identical manner. (2) [T]he defendant also literally reproduced and copied for the Spanish words in his dictionary. Besides. the call number on the upper-left hand corner. as likewise explained earlier. 33 for germane here is the question of whether the alleged infringer could have obtained the same information by going to the same source by her own independent research. . 35 However. 31 Plainly. to subject the challenged decision of the Court of Appeals to further scrutiny would be superfluous. . the subject with which the book deals. the defendant has added only this number of words to those that are in the plaintiff's dictionary. are expectedly uniform. et al. the translator or illustrator. The entries found in an author card. for example: Mcleod-Macleod. under Article 7 of the Law of 10 January 1879. or M are filed in the card catalog considered spelled out as MAC. if it is not the first. Of doctrinal persuasion is the principle that factual determinations of the Court of Appeals and the trial court are conclusive and binding upon this Court. the edition. and the size of the book.. the Court ruled that nobody could
. the collation. 30 Tested against this jurisprudential canon. if any. 8293 or even P. 4. improvident. Names beginning with MC. and the latter will not. the author's complete name on the first line. (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. the place and date of publication. disturb these findings unless compelling and cogent reasons necessitate a reexamination. Hence. . the imprint which includes the publisher. reproduction of the printer's errors or the author's blunders and inaccuracies in the infringing copy does not ipso facto constitute copying or plagiarism or infringement. Thus. and the subtitle if there is one. First. the equivalents. HABANA et al. that Laktaw is on all fours with and hence applicable to the case at bar. as to some words. There. illustrations. 7. 34 ROBLES convinced the trial court and the Court of Appeals on this. 5. this prescinded from various factors already elucidated. composed of the number of pages. this Court disposed that defendant. but it is conceded that they are telltale signs that infringement might have been committed.560 Spanish words in the defendant's dictionary . This Court anchored its decision on the following observations: (1) [O] the 23. Second. 6. and 8. Third. and Saint. 3. although as to some he made some additions of his own. as a rule. No. reproduced the latter's literary work Diccionario Hisapano-Tagalog. without the consent of and causing irreparable damage to Laktaw. 2. thus.
SALINAS. 38 No question of fair or unfair use arises however.. 2002 Orders 3 of the Regional Trial Court (RTC) of Manila. Branch 1. ALONTO SOLAIMAN SALLE. SP No. 70411 affirming the January 3. JOSEPHINE L. 37 All told. 2005
JESSIE G. Laktaw is inapplicable. No. 5 After due investigation. e. The more recent laws on intellectual property. the limitations of the exclusive use of copyrighted materials under Sections 10 and 11 of P. G.A. it appears that the following articles/items were seized based on the search warrants: Leaf Spring eye bushing a) Plastic Polypropylene
.. b. and the officers and members of the Board of Directors of Wilaware Product Corporation. scholarship. 01-2401 and 01-2402 granted in favor of petitioner Jessie G. 01-2401 and 01-2402 for the seizure of the aforecited articles. 49 in consonance with the principle of fair use have been reproduced and incorporated in the new law. WHEREFORE. JR. 161295 June 29. however.reproduce another person's work without the owner's consent. 36 Further. the NBI filed applications for search warrants in the RTC of Manila against William Salinas.1 and 177.) Evidences of sale which include delivery receipts. NOEL M. illegal. SR. This is in consonance with the principle that there can be no infringement if there was no copying. SR.1âwphi1. 6 The RTC granted the application and issued Search Warrant Nos. which quashed and set aside Search Warrant Nos. On September 4. or improve any edition thereof.: This petition for review on certiorari assails the Decision1 and Resolution2 of the Court of Appeals (CA) in CA-G. 2001. extent. 40 Consequently. vs. In particular. SALINAS. I vote to DENY the petition and to AFFIRM the challenged decision of 27 June 1997 of the Court of Appeals. petitioner. 2001. producers and/or distributors of the works. WILLIAM M. 8293. comment. It was alleged that the respondents therein reproduced and distributed the said models penalized under Sections 177.. JENNIFER Y. teaching including multiple copies for classroom use. recognize recent advancements in technology transfer and information dissemination. SALINAS. DECISION CALLEJO.) Undetermined quantity of Vehicle bearing cushion that is made up of polyvinyl chloride plastic.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of polyvinyl chloride plastic. SALINAS.) No.3 of Republic Act (R. even merely to annotate or add anything to it. 2002 and February 14. described as "Leaf Spring Eye Bushing for Automobile" made up of plastic. invoices and official receipts.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of plastic polypropylene." that is.D. Ching. news reporting. the maker and manufacturer of a Utility Model. Sr. research and similar purposes.. SALINAS.7 In the inventory submitted by the NBI agent. Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co. d. J. They thus allow the use of copyrighted materials if compatible with fair use and to the extent justified for the purpose. The applications sought the seizure of the following: a." 4 On September 20. 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. 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. respondents. c. Ching requested the National Bureau of Investigation (NBI) for police/investigative assistance for the apprehension and prosecution of illegal manufacturers. CHING. JOHN ERIC I. there is no reason to address the issue of whether ROBLES abused a writer's right to fair use with the ascertainment that DEP was not a copy or a substantial copy of CET. YABUT (Board of Directors and Officers of WILAWARE PRODUCT CORPORATION). if no copying is proved to begin with. the new laws sanction the fair use of copyrighted work for criticism. No. WILLIAM M.nêt Fair use has been defined as a privilege to use the copyrighted material in a reasonable manner without the consent of the copyright owner or as copying the theme or ideas rather than their expression.R.) Undetermined quantity of Dies and jigs. patterns and flasks used in the manufacture/fabrication of items a to d.R.
Citing the ruling of the Court in Malaloan v.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. citing the ruling of the United States Court of Appeals in Wildlife Express Corporation v. Court of Appeals. he enjoys rights of a registered owner/holder thereof. contending that the RTC had no jurisdiction to delve into and resolve the validity of the copyright certificates issued to him by the National Library. the petitioner averred that the court which issued the search warrants was not the proper forum in which to articulate the issue of the validity of the copyrights issued to him. 2002.C190 27 } . as he was able to secure a similar copyright registration of a similar product from the National Library on January 14. b) the subject matter of the registrations are spare parts of automobiles meaning – there ( sic) are original parts that they are designed to replace.C240 rear 40 } . Until his copyright was nullified in a proper proceeding. Jr. 10 In opposing the motion. Carol Wright Sales. the trial court issued an Order 12 granting the motion. not literary and artistic as provided in Article 172 of the Intellectual Property Code. and as such are the proper subject of a patent.13 The petitioner asserted that the respondents failed to adduce evidence to support their motion to quash the search warrants. 9 The respondents averred that the works covered by the certificates issued by the National Library are not artistic in nature. not copyright.C240 front 41 } BAG 1 b) Polyvinyl Chloride Plastic . They aver that the models are not original. they are not original. 2002.
. Hence. On January 3. 2002. they are considered automotive spare parts and pertain to technology. The petitioner noted that respondent William Salinas. The petitioner averred that the copyright certificates are prima facie evidence of its validity. 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.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. Inc. His motion for reconsideration of the order having been denied by the trial court’s Order of February 14. the petitioner filed a petition for certiorari in the CA.C190 13 } c) Vehicle bearing cushion .1 and 172. The court ruled that the work covered by the certificates issued to the petitioner pertained to solutions to technical problems. He insisted that his works are covered by Sections 172..2 of the Intellectual Property Code. and quashed the search warrant on its finding that there was no probable cause for its issuance. was not being honest.
No. The petitioner contends that he has in his favor the benefit of the presumption that his copyright is valid.A. It is worthy to state that the works protected under the Law on Copyright are: literary or artistic works (Sec. The test of protection for the aesthetic is not beauty and utility. 15 The law gives a non-inclusive definition of "work" as referring to original intellectual creations in the literary and artistic domain protected from the moment of their creation. 8293. according to the petitioner. 8293. the CA rendered judgment dismissing the petition on its finding that the RTC did not commit any grave abuse of its discretion in issuing the assailed order. 173). the respondents herein. as the issue therein is whether there was probable cause for the issuance of the search warrant. how can there be any violation?14 The petitioner’s motion for reconsideration of the said decision suffered the same fate. likewise. encompasses works which may have a bearing on the utility aspect to which the petitioner’s utility designs were classified. the fact that his utility designs or models for articles of manufacture have been expressed in the field of automotive parts. the court must necessarily resolve whether or not an offense exists to justify the issuance or quashal of the search warrant. No. But this burden cannot be carried in a hearing on a proceeding to quash the search warrants. are patently not copyrightable. No. and includes original ornamental designs or models for articles of manufacture.1(h) of R.1 of R. the same is explicitly provided. for the offense of Violation of Class Designation of Copyrightable Works under Section 177. i. The Leaf Spring Eye Bushing and Vehicle Bearing Cushion fall on neither classification. quality or purpose. as well as of its content. lawphil..net As such.17 The petitioner faults the CA for ignoring Section 218 of R. Such work.A. notwithstanding the classification of the works as either literary and/or artistic. it is enough that there exists a reasonable suspicion of the commission of the offense. He maintains that to justify a finding of probable cause in the issuance of a search warrant. The respondents posit that a technical solution in any field of human activity which is
. before issuing the warrant. but subsequently quashed. The petitioner posits that even assuming ex argumenti that the trial court may resolve the validity of his copyright in a proceeding to quash a search warrant for allegedly infringing items. the RTC committed a grave abuse of its discretion when it declared that his works are not copyrightable in the first place. whether or not registrable as an industrial design and other works of applied art under Section 172. The petitioner also maintains that the law does not provide that the intended use or use in industry of an article eligible for patent bars or invalidates its registration under the Law on Copyright.On September 26. or based on something already in the public domain does not automatically remove them from the protection of the Law on Copyright. the substitution of materials. 8293 which gives the same presumption to an affidavit executed by an author who claims copyright ownership of his work. the said law. the burden of overturning this presumption is on the alleged infringers. irrespective of its mode or form of expression. No. from rubber to plastic matter of polyvinyl chloride. 1998. the petitioner is praying for the reinstatement of the search warrants issued. and the judge must.A. 172) and derivative works (Sec.3 of Republic Act 8293. In a number of cases decided by the Supreme Court. "In the determination of probable cause. an oil resistant soft texture plastic material strong enough to endure pressure brought about by the vibration of the counter bearing and thus brings bushings. He claims that R. The petitioner adds that a finding of probable cause to justify the issuance of a search warrant means merely a reasonable suspicion of the commission of the offense. but art for the copyright and invention of original and ornamental design for design patents.A. Accordingly. the petitioner insists. the respondents aver that the work of the petitioner is essentially a technical solution to the problem of wear and tear in automobiles." In the instant case.e. which took effect on January 1. what the Copyright Law protects is the author’s intellectual creation. hence. otherwise known as the Intellectual Property Code of the Philippines. the item subject of the petition is not entitled to be protected by the law on copyright. there must be a finding that a specific offense must have been committed to justify the issuance of a search warrant. the complainant and any witness he may produce. when the objects subject of the same. The petitioner concludes that the issue of probable cause should be resolved without invalidating his copyright.18 He assists that the determination of probable cause does not concern the issue of whether or not the alleged work is copyrightable. Moreover. the respondents assert. if. is the subject of copyright under Section 172. to wit: It is settled that preliminarily. thus: "The probable cause must be in connection with one specific offense. regardless of whether it is one with utilitarian functions or incorporated in a useful article produced on an industrial scale. 8293. 2003.1 in relation to Section 177. The petitioner forthwith filed the present petition for review on certiorari. personally examine in the form of searching questions and answers. in the first place. contending that the revocation of his copyright certificates should be raised in a direct action and not in a search warrant proceeding. in writing and under oath. In their comment on the petition. on facts personally known to them and attach to the record their sworn statements together with any affidavit submitted. It is not equivalent to absolute certainty or a finding of actual and positive cause. 16 In like manner. provides in no uncertain terms that copyright protection automatically attaches to a work by the sole fact of its creation.
particularly. It constitutes prima facie evidence of both validity and ownership27 and the validity of the facts stated in the certificate. 8293 against the respondents. The petition has no merit. a search warrant may be issued for the search and seizure of personal property (a) subject of the offense. No. No. and (b) the copyrighted material was being copied and distributed by the respondents. In an action under this Chapter: (a) Copyright shall be presumed to subsist in the work or other subject matter to which the action relates if the defendant does not put in issue the question whether copyright subsists in the work or other subject matter. Rule 126 of the Rules of Criminal Procedure. if feasible. in Section 3. 25 By requesting the NBI to investigate and. (b) stolen or embezzled and other proceeds or fruits of the offense.19 the Court held that in the determination of probable cause. 29 Indeed. The Sheriff of RTC QC. validity will not be presumed. if so. to prove all the multiple facts that underline the validity of the copyright unless the respondent. the respondents aver that no copyright is said to exist if a party categorically questions its existence and legality. effectively challenging them. The RTC is mandated under the Constitution and Rules of Criminal Procedure to determine probable cause.26 A copyright certificate provides prima facie evidence of originality which is one element of copyright validity. 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. the petitioner-applicant was burdened to prove that (a) respondents Jessie Ching and Joseph Yu were the owners of copyrighted material. Thus. 93 . 8293 as alleged in an application is committed. the applicant may present the certificate of registration covering the work or.2(b) of R. Section 218. to delve into and determine the validity of the copyright which he claimed he had over the utility models. a certain work was deposited in the said office. shifts the burden of doing so to the applicant. the registration of copyrights does not provide for automatic protection. at the same time. probable cause is deemed to exist only where facts and circumstances exist which could lead a reasonably cautious and prudent man to believe that an offense has been committed or is being committed. 8293 provides: 218. A certificate of registration creates no rebuttable presumption of copyright validity where other evidence in the record casts doubt on the question.24 The applicant 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.A. in the first instance. The applicant should not ordinarily be forced. No.2 of R. or (c) used or intended to be used as the means of committing an offense. Rule 7 of the Implementing Rules of R. 4. repudiate the court’s jurisdiction to ascertain the validity of his claim without running afoul to the doctrine of estoppel. 20 The absence of probable cause will cause the outright nullification of the search warrant. Br. and. The respondents maintain that a copyright exists only when the work is covered by the protection of R. 22 Ownership of copyrighted material is shown by proof of originality and copyrightability. file an application for a search warrant for infringement under R. It bears stressing that upon the filing of the application for search warrant. at a point in time. under Section 2. 21 For the RTC to determine whether the crime for infringement under R. In Solid Triangle Sales Corporation v. To discharge his burden. and not of a copyright. They insist that the certificates issued by the National Library are only certifications that. whether he is the owner of a copyright over the said models. The court cannot abdicate its constitutional obligation by refusing to determine whether an offense has been committed.2. that it was independently created by the author and that it possesses at least same minimal degree of creativity. in accordance with Section 4. describing the place to be searched and the things to be seized. Rule 126 of the Rules of Criminal Procedure: SEC. 23 Copying is shown by proof of access to copyrighted material and substantial similarity between the two works. The petitioner cannot seek relief from the RTC based on his claim that he was the copyright owner over the utility models and.A. the plaintiff shall be presumed to be the owner of the copyright if he claims to be the owner of the copyright and the defendant does not put in issue the question of his ownership. No. 30
. – A search warrant shall not issue but upon probable cause in connection with one specific offense to be determined personally by the judge after examination under oath or affirmation of the complainant and the witnesses he may produce. the RTC was duty-bound to determine whether probable cause existed. other evidence. 8293.A. Indeed.28 The presumption of validity to a certificate of copyright registration merely orders the burden of proof. the ownership of a valid copyright is essential. Moreover. 8293. in its absence. 8293. and (b) Where the subsistence of the copyright is established.A. Citing Section 218. the petitioner thereby authorized the RTC (in resolving the application).A. The RTC had jurisdiction to delve into and resolve the issue whether the petitioner’s utility models are copyrightable and.A. the registration and deposit of work is not conclusive as to copyright outlay or the time of copyright or the right of the copyright owner. Requisite for issuing search warrant. In such a case. and evidences at least minimal creativity.novel may be the subject of a patent. By originality is meant that the material was not copied. No. Furthermore. Besides. No.
It bears stressing that the focus of copyright is the usefulness of the artistic design. as gleaned from the specifications appended to the application for a copyright certificate filed by the petitioner. therefore." 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 identified separately from the utilitarian aspects of the article. 32 Plainly. nor artistic works. whether made by hand or produced on an industrial scale.31 Likewise. graphics. (h) Original ornamental designs or models for articles of manufacture..1(h) of R.33 Works for applied art include all original pictorials. Another object of this utility model is to provide a leaf-spring eye bushing for automobiles made of polyvinyl chloride. literary and artistic works are copyrightable. yet both causes cushion to the leaf spring. However. no matter how artistically designed. The central inquiry is whether the article is a work of art. while works of applied art. No. whether or not registrable as an industrial design. commercial exploitation. 36 Functional components of useful articles. useful articles and works of industrial design are not.. But. – 172.35 A useful article may be copyrightable only if and only to the extent that such design incorporates pictorial. respectively.10 of R. 2001 and September 4. the petitioner’s models are not works of applied art. 2001-197 and 2001-204 dated September 3. Indeed. We agree with the contention of the petitioner (citing Section 171. with the bushing made of plastic that is either polyvinyl chloride or polypropylene. with said cushion bearing being made of the same plastic materials. Yet. Literary and artistic works.1. these are not literary or artistic works. albeit with no artistic design or value. 172. an oil resistant soft texture plastic or polypropylene. No. 2001. Related to the provision is Section 171. 8293). have generally been denied copyright protection unless they are separable from the useful article. or works of applied art. is protected by copyright law.
.To discharge his burden of probable cause for the issuance of a search warrant for violation of R. and the potential availability of design patent protection. to wit: SEC. that the author’s intellectual creation.A.A. These rubber bushings after a time. which provides that a "work of applied art" is an artistic creation with utilitarian functions or incorporated in a useful article. the petitioner described the utility model as follows: LEAF SPRING EYE BUSHING FOR AUTOMOBILE Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile are made of hard rubber. and sculptural works that are intended to be or have been embodied in useful article regardless of factors such as mass production. the law refers to a "work of applied art which is an artistic creation. original intellectual. or sculptural features that can be identified separately from." are original intellectual creations in the literary and artistic domain protected from the moment of their creation and shall include in particular: . and other works of applied art. these articles are useful articles which are defined as one having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. 8293. They are utility models. the said Leaf Spring Eye Bushing for Automobile is merely a utility model described as comprising a generally cylindrical body having a co-axial bore that is centrally located and provided with a perpendicular flange on one of its ends and a cylindrical metal jacket surrounding the peripheral walls of said body.37 In this case. a hard plastic. an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a much longer life span than the rubber bushings. issued by the National Library covering work identified as Leaf Spring Eye Bushing for Automobile and Vehicle Bearing Cushion both classified under Section 172. They are certainly not ornamental designs or one having decorative quality or value. Thus. regardless of whether it is a creation with utilitarian functions or incorporated in a useful article produced on an industrial scale. The primary object of this utility model. They are not intellectual creations in the literary and artistic domain. upon subjecting them to so much or intermittent pressure would eventually wore ( sic) out that would cause the wobbling of the leaf spring. No. Literary and Artistic Works. and not its marketability. and are capable of existing independently of the utilitarian aspects of the article. the petitioner-applicant submitted to the RTC Certificate of Copyright Registration Nos. useful articles. graphic. hereinafter referred to as "works.A. 8293. yet strong enough to endure pressure brought about by the up and down movement of said leaf spring. 34 As gleaned from the description of the models and their objectives.10. the Vehicle Bearing Cushion is illustrated as a bearing cushion comprising a generally semi-circular body having a central hole to secure a conventional bearing and a plurality of ridges provided therefore. is to provide a leaf-spring eye bushing for automobile that is made up of plastic.
the bushing 10 as shown is made of plastic. The steel tube 17 and metal jacket 14 may also be applied to this embodiment as an option thereof. 38 VEHICLE BEARING CUSHION Known bearing cushions inserted to bearing housings for vehicle propeller shafts are made of hard rubber. In effect. These and other objects and advantages will come to view and be understood upon a reading of the detailed description when taken in conjunction with the accompanying drawings. Figure 3 is a longitudinal sectional view of another embodiment of this utility model. Figure 3. and Figure 5 is a sectional view thereof. and Figure 2 is a sectional view thereof. on the other hand. These rubber bushings after a time. and. upon subjecting them to so much or intermittent pressure would eventually be worn out that would cause the wobbling of the center bearing. the metal jacket 14 acts with the leaf-spring eye (not shown). the bushing 10 will not be directly in contact with steel. The primary object of this utility model therefore is to provide a vehicle-bearing cushion that is made up of plastic. Figure 1 is a perspective view of the present utility model for a vehicle-bearing cushion. Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is elongated and cylindrical as to its construction. Figure 4 is a perspective view of a third embodiment. yet strong enough to endure pressure brought about by the vibration of the center bearing. As shown in Figs. 1. Yet. Still an object of this utility model is to provide a vehicle bearing cushion that has a very simple construction and can be made using simple and ordinary molding equipment. In Figure 2. preferably polyvinyl chloride. would lengthen the life and replacement therefor. in effect. Referring now to the several views of the drawings wherein like reference numerals designated same parts throughout. A further object of this utility model is to provide a leaf-spring eye bushing for automobile that is supplied with a metal jacket to reinforce the plastic eye bushing when in engaged with the steel material of the leaf spring. 1 and 2. When said leaf-spring bushing 10 is installed. 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. but rather the metal jacket. Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a co-axial bore 12 centrally provided thereof. Figure 2 is a sectional view taken along line 2-2 of Fig. an object of this utility model is to provide a vehicle-bearing cushion that has a much longer life span than rubber bushings. an oil resistant soft texture plastic or a hard polypropylene plastic. there is shown a utility model for a leaf-spring eye bushing for automobile generally designated as reference numeral 10. making the life of the bushing 10 longer than those without the metal jacket. which is also made of steel or cast steel. an oil resistant soft texture plastic material which causes cushion to the propeller’s center bearing. Another object of this utility model is to provide a vehicle bearing cushion made of polyvinyl chloride. both are capable to endure the pressure applied thereto.
. said leaf-spring eye bushing 10 is provided with a perpendicular flange 13 on one of its ends and a cylindrical metal jacket 14 surrounding the peripheral walls 15 of said body 11. These and other objects and advantages will come to view and be understood upon a reading of the detailed description when taken in conjunction with the accompanying drawings. This steel tube 17 accommodates or engages with the leaf-spring bolt (not shown) connecting the leaf spring and the automobile’s chassis.Still an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a very simple construction and can be made using simple and ordinary molding equipment. Figure 1 is an exploded perspective of a leaf-spring eye bushing according to the present utility model. Said another embodiment is also made of polypropylene or polyvinyl chloride plastic material.
the personal properties described in the search warrants are mechanical works. No.A. and may be obtained and enjoyed only with respect to the subjects and by the persons. No. or an improvement of any of the aforesaid. Drilon47 and Pearl & Dean (Phil. Meanwhile." the statuettes were intended for use and used as bases for table lamps. said body 11 is provided with a plurality of ridges 13 which serves reinforcing means thereof. Patentable inventions. They lack the decorative quality or value that must characterize authentic works of applied art. 40 Essentially. In Kho v. No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the certificates of copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion.41 A utility model varies from an invention. That the works of the petitioner may be the proper subject of a patent does not entitle him to the issuance of a search warrant for violation of copyright laws. on at least three aspects: first. Being a statutory grant.A. In relation thereto. likewise. scholarly. Indeed. the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not ornamental. durable and capable of enduring severe pressure from the center bearing brought about by the rotating movement of the propeller shaft of the vehicle. Incorporated v. the principal function of which is utility sans any aesthetic embellishment.50 the Court ruled that "these copyright and patent rights are completely distinct and separate from one another. were concerned. Jr. scientific and artistic works" in Section 172. Shoemart. and third. in Joaquin. the Copyright Office interpreted the 1909 Copyright Act to cover works of artistic craftsmanship insofar as their form. the provisions on utility model dispense with its substantive examination 45 and prefer for a less complicated system. As shown in Figure 1. unless there be something in the context of the state which would repel such inference. Stein51 to buttress his petition. the scope of a copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation.44 both reckoned from the date of the application. on the other hand. The High Court ruled that:
. wherein like reference numeral designate same parts throughout. having central hole 12 to house a conventional bearing (not shown).Referring now to the several views of the drawing. there is shown a utility model for a vehicle-bearing cushion generally designated as reference numeral 10. In actuality. 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. with electric wiring. but not the utilitarian aspects." The Court expounded further. the rights are only such as the statute confers. sockets and lampshades attached. a trade name means the name or designation identifying or distinguishing an enterprise. refer to any technical solution of a problem in any field of human activity which is new. and carried such intentions into effect. and not simply a pre-existing right regulated by it. being not of the same kind and nature as the works enumerated in Section 172 of R. the requisite of "inventive step" 42 in a patent for invention is not required. Incorporated . in the strict sense of the term. Being plain automotive spare parts that must conform to the original structural design of the components they seek to replace. Incorporated v. The controversy therein centered on the fact that although copyrighted as "works of art. a soft texture oil and chemical resistant plastic material which is strong. Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included in the catch-all phrase "other literary.39 A utility model is a technical solution to a problem in any field of human activity which is new and industrially applicable. They are not even artistic creations with incidental utilitarian functions or works incorporated in a useful article. the maximum term of protection is only seven years43 compared to a patent which is twenty years. The petitioner cannot find solace in the ruling of the United States Supreme Court in Mazer v. copyright and patents are different intellectual property rights that cannot be interchanged with one another. considering that the copyright applicant intended primarily to use them as lamp bases to be made and sold in quantity. or process. a utility model refers to an invention in the mechanical field. Court of Appeals49 and Pearl & Dean (Phil. The issue raised was whether the statuettes were copyright protected in the United States. The subject bearing cushion 10 is made of polyvinyl chloride. 8293.).). the generic word will usually be limited to things of a similar nature with those particularly enumerated. it can cover only the works falling within the statutory enumeration or description. At that time. second. the US Supreme Court declared that the statuettes were held copyrightable works of art or models or designs for works of art." 46 the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not copyrightable. thus: Trademark. involves an inventive step and is industrially applicable. and on terms and conditions specified in the statute. Accordingly. and the protection afforded by one cannot be used interchangeably to cover items or works that exclusively pertain to the others.48 the Court ruled that: Copyright. the artifacts involved in that case were statuettes of dancing male and female figures made of semivitreous china. available. This is the reason why its object is sometimes described as a device or useful object.1(a) of R. a product. 8293. Shoemart. Incorporated. It may be. Said bearing cushion 10 comprises of a generally semi-circular body 11. for which a patent for invention is. v. is purely a statutory right. or may relate to. It is a new or independent right granted by the statute. In that case. 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. After reviewing the history and intent of the US Congress on its copyright legislation and the interpretation of the copyright office.
They are. SANCHEZ. and Nancy I. 01-2401 and 01-2402 issued on October 15. No. 147043 June 21. 2001 are ANNULLED AND SET ASIDE. [and] (ii) xxx distribute directly or indirectly and license copies of the Product (reproduced as per Section 2(a)(i) and/or acquired from Authorized Replicator or Authorized Distributor) in object code form to end users[. J. the bushing and cushion are not works of art.. NANCY I.. drawings and sculpture.3 Respondents Benito Keh and Yvonne Keh are the President/Managing Director and General Manager. 70411 are AFFIRMED. the fact that the work is unique and attractively shaped will not qualify it as a work of art. VELASCO. Alberto Chua. Microsoft authorized Beltron. enamels. United States corporation. and tapestries. Inc. Under Section 2(a) of the Agreement. Inc. 52 The High Court went on to state that "[t]he dichotomy of protection for the aesthetic is not beauty and utility but art for the copyright and the invention of original and ornamental design for design patents." In this case. G. Judy K. Velasco are Beltron’s Directors. SOPHIA ONG.6
. SP No. and Deanna Chua are the Directors of respondent Taiwan Machinery Display & Trade Center. CHUA/BELTRON COMPUTER PHILIPPINES INC. SO ORDERED. petitioners." Significantly.MICROSOFT CORPORATION & LOTUS DEVELOPMENT CORP. owns the copyright and trademark to several computer software. Chua. the instant petition is hereby DENIED for lack of merit. concur. Puno. as amended in January 1994. CHUA. Sophia Ong. ALFONSO CHUA.R. such as artistic jewelry. Sanchez. The assailed Decision and Resolution of the Court of Appeals in CA-G. 4 In May 1993.. Microsoft terminated the Agreement effective 22 June 1995 for Beltron’s non-payment of royalties. CHUA. Chua. JUDY C. BENITO T. for a fee. respectively. the copyright office promulgated a rule to implement Mazer to wit: … [I]f "the sole intrinsic function of an article is its utility. as well as all works belonging to the fine arts. BENITO KEH & YVONNE K. Microsoft and Beltron entered into a Licensing Agreement ("Agreement"). Respondents Jonathan K. HWANG.] xxxx 5 The Agreement also authorized Microsoft and Beltron to terminate the contract if the other fails to comply with any of the Agreement’s provisions. respondents. utility models which may be the subject of a patent. JONATHAN K. 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"). Benito T. respondents Alfonso Chua. glassware. Costs against the petitioner."Works of art (Class G) – (a) – In General. a Delaware. This class includes works of artistic craftsmanship. Chua Hwang. a domestic corporation.. as the petitioner himself admitted. INC.R. The Facts Petitioner Microsoft Corporation ("Microsoft"). such as paintings. and Chico-Nazario. JJ. …" 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. EMILY K. in so far as their form but not their mechanical or utilitarian aspects are concerned. 2005
NBI . vs.: The Case This is a petition for certiorari1 of the Resolutions2 of the Department of Justice dismissing for "lack of merit and insufficiency of evidence" petitioner Microsoft Corporation’s complaint against respondents for copyright infringement and unfair competition. and THE SECRETARY OF JUSTICE. ALBERTO CHUA. (Chairman). of respondent Beltron Computer Philippines. Tinga. Emily K. On the other hand. Search Warrant Nos. ("Beltron"). Austria-Martinez. DEANNA CHUA/TAIWAN MACHINERY DISPLAY & TRADE CENTER. ("TMTC"). also a domestic corporation. DECISION CARPIO. IN LIGHT OF ALL THE FOREGOING.
The DOJ Resolutions In the Resolution of 26 October 1999. Inc. Microsoft also sought the assistance of the National Bureau of Investigation ("NBI"). registration cards or certificates of authenticity for the articles they purchased. CV No. On 10 November 1995. Microsoft sought reconsideration but the RTC denied Microsoft’s motion in its Order of 19 July 1996. (2) TMTC bought the confiscated 59 boxes of MS-DOS CDs from a Microsoft dealer in Singapore (R. also contained Microsoft software. Branch 23. but only of the MS-DOS software. which the NBI indorsed. and Deanna Chua are stockholders of Beltron and TMTC in name only and thus cannot be held criminally liable. Microsoft applied for search warrants against respondents in the Regional Trial Court. Among these were 2. The CPU contained pre-installed 10 Microsoft Windows 3. a private investigative firm. Chua ("respondent Chua") denied the charges against respondents.S.7 hired the services of Pinkerton Consulting Services ("PCS"). Complainant had alleged that from the time the license agreement was terminated. 49. State Prosecutor Ong also recommended the dismissal of Lotus Corporation’s complaint for lack of interest to prosecute and for insufficiency of evidence. 20 In their joint counter-affidavit. Consequently. encased in plastic containers with Microsoft packaging. he observed the following:
. Microsoft. In the order of Honorable William Bayhon dated July 19. PCS employee John Benedic8 Sacriz ("Sacriz") and NBI agent Dominador Samiano.Afterwards. 1996 [denying reconsideration to the Order partially quashing the search warrants]."14 On 17 November 1995. 95-684 and 95-685.) INC. Microsoft appealed to the Court of Appeals in CA-G. The Court of Appeals’ Decision became final on 27 December 2001. Assistant Chief State Prosecutor Lualhati R. respondents moved to quash Search Warrant Nos. (PHILS." so-called because they contain several software (Microsoft only or both Microsoft and non-Microsoft). and paraphernalia. The receipt issued to Sacriz and Samiano for the CPU and monitor bore the heading "T.9 bought computer hardware (central processing unit ("CPU") and computer monitor) and software (12 computer disks ("CDs") in read-only memory ("ROM") format) from respondents.831 pieces of CD-ROMs containing Microsoft software. No. 95-684 and 95-685. considering that the case stemmed only out of the desire of complainant to collect from them the amount of US$135. as amended.22 The 26 October 1999 Resolution reads in part: [T]wo (2) issues have to be resolved in this case.32 and that the contract entered into by the parties cannot be unilaterally terminated. thus Microsoft should have filed a collection suit instead of a criminal complaint. respondent/s is/are no longer authorized to copy/distribute/sell Microsoft products. Buenafe ("Assistant Chief State Prosecutor Buenafe") approved State Prosecutor Ong’s recommendations.1 and MS-DOS software.T. user’s manuals. accessories. Alberto Chua. Donnelly).15 The RTC granted Microsoft’s application and issued two search warrants ("Search Warrant Nos. Alfonso Chua.R. Jr. BELTRON COMPUTER.11 At least two of the CD-ROMs were "installers. Chua. Jonathan K.1 software pre-installed in the CPU bought by Sacriz and Samiano. DOJ State Prosecutor Jocelyn A."13 The receipt for the 12 CD-ROMs did not indicate its source although the name "Gerlie" appears below the entry "delivered by. b) Whether or not prima facie case exist[s] against Taiwan Machinery Display and Trade Center. not criminal. the NBI searched the premises of Beltron and TMTC and seized several computer-related hardware. 21 The other respondents did not file counter-affidavits. ("PD 49") 18 and with unfair competition under Article 189(1)19 of the Revised Penal Code. Respondents Keh and Chua alleged that: (1) Microsoft’s real intention in filing the complaint under I. (4) Microsoft’s alleged proof of purchase (receipt) for the 12 CD-ROMs is inconclusive because the receipt does not indicate its source. respondent/s averred that the case is civil in nature.S. Microsoft and a certain Lotus Development Corporation ("Lotus Corporation") charged respondents before the Department of Justice ("DOJ") with copyright infringement under Section 5(A) in relation to Section 29 of Presidential Decree No. and (5) respondents Benito Keh. (TMTC) for violation of the offense charged. through its Philippine agent. 12 Sacriz and Samiano were not given the Microsoft end-user license agreements. (3) respondents are not the "source" of the Microsoft Windows 3. namely: a) Whether or not Beltron Computer and/or its stockholders should be held liable for the offenses charged. Judy K.121. Microsoft learned that respondents were illegally copying and selling Microsoft software.M. Meanwhile.16 Using Search Warrant Nos. posing as representatives of a computer shop. The RTC partially granted their motion in its Order of 16 April 1996. software.C.R. Microsoft alleged that respondents illegally copied and sold Microsoft software. the Court of Appeals granted Microsoft’s appeal and set aside the RTC Orders of 16 April 1996 and 19 July 1996. The 12 CD-ROMs. However.17 Based on the articles obtained from respondents. No. Ong ("State Prosecutor Ong") recommended the dismissal of Microsoft’s complaint for lack of merit and insufficiency of evidence. respondents Yvonne Keh ("respondent Keh") and Emily K. Sophia Ong. In its Complaint ("I. ("Samiano"). 96-193 was to pressure Beltron to pay its alleged unpaid royalties. 54600. Manila ("RTC"). Chua Hwang. 96-193"). 95-684 and 95-685"). In its Decision of 29 November 2001.
indeed the search warrant[s] xxx [are] being used as a leverage to secure collection of the money obligation which the Court cannot allow. for respondent/s was/were not the manufacturers of the Microsoft software seized and were selling their products as genuine Microsoft software. it can be surmise (sic) that the obligations between the parties is civil in nature not criminal. Austin was that the items seized were unauthorized. Donnelley. Puno dismissed Microsoft’s appeal. with all the necessary papers. That respondent has some monetary obligation to complainant which is not denied by the complainant. This it failed to do. SALE AND DISTRIBUTION OF COUNTERFEIT SOFTWARE AS EVIDENCED BY THE ITEMS PURCHASED DURING THE TEST-BUY AND THE ITEMS SEIZED FROM RESPONDENTS’ PREMISES. complainant had some business transactions with the respondent [Beltron] along the same line of products. for they bought said Microsoft MS-DOS 6. In their opinion. and Import Entry Declaration of the Bureau of Customs to prove that indeed the Microsoft software in their possession were bought from Singapore.23 Microsoft sought reconsideration and prayed for an ocular inspection of the articles seized from respondents. Debt Advice of the Bank of Commerce. has not presented any evidence that the items seized namely the 59 boxes of MS-DOS 6.121. THE DOJ MISAPPRECIATED THE FACT THAT RESPONDENTS WERE ENGAGED IN THE ILLEGAL IMPORTATION. In the Resolution of 3 August 2000. denied Microsoft’s motion. Microsoft contends that: I. As to the second issue.R. Official Receipts from the Bureau of Customs. considering that they bought it from a Microsoft licensee. or is it unauthorized because R."It is further argued by counsel for respondent that the act taken by private complainant is to spite revenge against the respondent Beltron for the latter failed to pay the alleged monetary obligation in the amount of US$135.D. does not disclose this fact. this petition. Donnelley has no authority to sell said products here in the Philippines.R. The question now. Still.
. which question. this office cannot pass upon the issue of whether respondent/s is or are liable for the offense charged. From said order. had admitted that the search warrants applied for by complainant were merely used as a leverage for the collection of the alleged monetary obligation of the respondent/s. Assistant Chief State Prosecutor Buenafe.0 from an alleged licensee of Microsoft in Singapore. it can be gleaned that the [RTC] xxx. to determine the culpability of the respondents. complainant should present evidence that what is in the possession of the respondent/s is/are counterfeit Microsoft products. respondent/s in this case has/have no intent to defraud the public. The certification issued on December 12. Corporate Attorney of the complainant. DOJ Undersecretary Regis V. in the Resolution of 3 December 1999. we find for the respondent/s. Accordingly." From said order. Thus. Moreover.32. Still.26 Hence.24 Microsoft appealed to the Office of the DOJ Secretary." ["]It appears therefore that prior to the issuance of the subject search warrants. this office has no power to pass upon said issue for one has then to interpret the provisions of the contract entered into by the parties. considering that it has the burden of proving that the respondent/s is/are liable for the offense charged. absen[t] a resolution from the proper court of (sic) whether or not the contract is still binding between the parties at the time of the execution of the search warrants. is whether the products were unauthorized because TMTC has no license to sell Microsoft products. should be raised in a proper civil proceeding. complainant had time and again harped that respondent/s is/are not authorized to sell/copy/distribute Microsoft products at the time of the execution of the search warrants. Complainant. 49 does not exist. what they have are genuine Microsoft software.0 software are counterfeit. For the term used by Mr. Moreover. as provided under Article 189 of the Revised Penal Code. Complainant failed to reveal the true circumstances existing between the two of them as it now appears. violation of P. upon State Prosecutor Ong’s recommendation. II. on the other hand. therefore no unfair competition exist. THE DOJ ERRED IN RULING THAT THE LIABILITY OF RESPONDENTS WAS ONLY CIVIL IN NATURE BY VIRTUE OF THE LICENSE AGREEMENT.25 Microsoft sought reconsideration but its motion was denied in the Resolution of 22 December 2000. TMTC had provided sufficient evidence such as pro-forma invoice from R. However. 1995 by Christopher Austin.
54600 involved the Orders of the RTC partially quashing Search Warrant Nos. On the merits. respondents allege in their Comment that Microsoft is guilty of forum-shopping because its petition in CAG.34 To check this pernicious practice. 31 The Issues The petition raises the following issues: (1) Whether Microsoft engaged in forum-shopping. Thus. regardless of which party is successful. or not produced by Microsoft.33 Forum-shopping is an act of malpractice because it abuses court processes. Sandiganbayan:38
. 27 In its Comment. CV No.R. The DOJ Acted with Grave Abuse of Discretion in not Finding Probable Cause to Charge Respondents with Copyright Infringement and Unfair Competition Generally. the rights asserted and the reliefs prayed for are not such that the judgment in CA-G. and (c) the identity with respect to the two preceding particulars in the two cases is such that any judgment that may be rendered in the pending case. Microsoft maintains that respondents should be indicted for copyright infringement and unfair competition. 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. As we explained in Pilapil v. 95-684 and 95-685.R. This standard is met if the facts and circumstances incite a reasonable belief that the act or omission complained of constitutes the offense charged. 54600 does not amount to res judicata in the present case. THE CHARGES AGAINST SEVEN [RESPONDENTS] REMAIN UNCONTROVERTED. purchased from legitimate sources.R. namely: (a) identity of parties. would amount to res judicata in the other case. THE DOJ MISAPPRECIATED THE LAW ON COPYRIGHT INFRINGEMENT AND UNFAIR COMPETITION. and has a "common interest" with. it exists where the elements of litis pendentia are present. the DOJ maintains that it did not commit grave abuse of discretion in dismissing Microsoft’s complaint. 35 Failure to comply with this requirement is a cause for the dismissal of the case and. Unlike the higher quantum of proof beyond reasonable doubt required to secure a conviction. and (2) Whether the DOJ acted with grave abuse of discretion in not finding probable cause to charge respondents with copyright infringement and unfair competition. filed by the Solicitor General. Respondents also insist that the Agreement entitled Beltron to "copy and replicate or reproduce" Microsoft products. for the imposition of administrative sanctions. Here. although the parties in CA-G. respondents claim that there is no proof that the CPU Sacriz and Samiano bought from them contained pre-installed Microsoft software because the receipt for the CPU does not indicate "[s]oftware hard disk. Lastly. Section 5.831 CDROMs.37 This case falls under the exception.III. or at least such parties who represent the same interests in both actions. it is the lower standard of probable cause which is applied during the preliminary investigation to determine whether the accused should be held for trial. ONLY TWO OUT OF THE NINE RESPONDENTS BOTHERED TO FILE COUNTER-AFFIDAVITS. either simultaneously or successively. The Ruling of the Court The petition has merit. 95-684 and 95-685 while this petition concerns the DOJ Resolutions dismissing its complaint against respondents for copyright infringement and unfair competition. (b) identity of rights asserted and relief prayed for. On the confiscated 2. What Microsoft appealed in CA-G. 54600 and this petition are identical. Microsoft is appealing from the DOJ Resolutions dismissing its complaint against respondents for copyright infringement and unfair competition. 54600 were the RTC Orders partially quashing Search Warrant Nos. Microsoft did not Engage in Forum-Shopping Forum-shopping takes place when a litigant files multiple suits involving the same parties. the relief being founded on the same facts. IV.32 Thus. Rule 7 of the 1997 Rules of Civil Procedure requires the principal party in an initiatory pleading to submit a certification against forum-shopping. this petition. CV No. This renders forum-shopping impossible here. respondents reiterate their claims in their motion to quash Search Warrant Nos. Microsoft counters that it is not liable for forum-shopping because its petition in CA-G.R. In the present case. respondents allege that a certain corporation29 left the CD-ROMs with them for safekeeping. 54600 was filed ahead of." 30 In its Reply. to secure a favorable judgment. HENCE. 95-684 and 95-685 that the articles seized from them were either owned by others.R.28 For their part. Microsoft correctly contends that it is not liable for forum-shopping. in case of willful forum-shopping. CV No. On the merits. CV No. CV No.
Furthermore. distribute. Microsoft invoked three clusters of evidence to support its complaint against respondents. Precisely. Being the copyright and trademark owner of Microsoft software. 54600 dated 29 November 2001.R. (b) That the general appearance is shown in the (1) goods themselves. This is grave abuse of discretion. Inc. therefore. It is merely based on opinion and reasonable belief. without the consent of the owner of the copyright. refused to pass upon the relevance of these pieces of evidence because: (1) the "obligations between the parties is civil and not criminal" considering that Microsoft merely sought the issuance of Search Warrant Nos. Thus. 45 On the Sufficiency of Evidence to Support a Finding of Probable Cause Against Respondents In its pleadings filed with the DOJ.831 CD-ROMs containing Microsoft software seized from respondents. 96-193 based on the incriminating evidence obtained from respondents. based on the RTC Order of 19 July 1996. merely to pressure Beltron to pay its overdue royalties to Microsoft. or in (4) any other feature of their appearance[. No. 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 by Section 5.The term [probable cause] does not mean "actual and positive cause" nor does it import absolute certainty. There is no basis for the DOJ to rule that Microsoft must await a prior "resolution from the proper court of (sic) whether or not the [Agreement] is still binding between the parties. a finding of probable cause does not require an inquiry into whether there is sufficient evidence to procure a conviction. and. 96-193. Microsoft can neither be expected nor compelled to wait until Beltron decides to sue before Microsoft can seek remedies for violation of its intellectual property rights. which is a synonymous term in this connection. Respondents no longer contested that ruling which became final on 27 December 2001. and (3) the 2. or in the (3) device or words therein. and (2) the validity of Microsoft’s termination of the Agreement must first be resolved by the "proper court." Beltron has not filed any suit to question Microsoft’s termination of the Agreement.S. CV No. and infringement of copyright. the filing of the complaint under I. [and] sell" his intellectual works. namely: (1) the 12 CD-ROMs containing Microsoft software Sacriz and Samiano bought from respondents. any person who performs any of the acts under Section 5 without obtaining the copyright owner’s prior consent renders himself civilly 40 and criminally41 liable for copyright infringement. on the one hand. and by inference. 46 The DOJ. Second.44 The element of intent to deceive may be inferred from the similarity of the goods or their appearance.S. Court of Appeals:42 Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright. 95-684 and 95-685 to pressure Beltron to pay its obligation under the Agreement. Hence.] (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[. No. that Microsoft sought the issuance of Search Warrant Nos. On the other hand. 95-684 and 95-685. We held in Columbia Pictures. These articles are counterfeit per se because Microsoft does not (and could not have authorized anyone to) produce such CD-ROMs. It is enough that it is believed that the act or omission complained of constitutes the offense charged. under Section 5(A). in its Decision in CAG. Microsoft acted well within its rights in filing the complaint under I. multiply. or in the (2) wrapping of their packages.47 First. a copyright owner is vested with the exclusive right to "copy. v. Hence. some of the counterfeit CD-ROMs bought from respondents were "installer" CD-ROMs containing Microsoft software only or both Microsoft and non-Microsoft software. 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. consists in the doing by any person. The copying of
." On the other hand. it was highly irregular for the DOJ to hold. the elements of unfair competition under Article 189(1) 43 of the Revised Penal Code are: (a) That the offender gives his goods the general appearance of the goods of another manufacturer or dealer. and] (d) That there is actual intent to deceive the public or defraud a competitor. Significantly. or piracy. the DOJ ruled that Microsoft failed to present evidence proving that what were obtained from respondents were counterfeit Microsoft products. (Emphasis supplied) Significantly. (2) the CPU with pre-installed Microsoft software Sacriz and Samiano also purchased from respondents. the Court of Appeals set aside the RTC Order of 19 July 1996. there is a trial for the reception of evidence of the prosecution in support of the charge. protected by law. of anything the sole right to do which is conferred by statute on the owner of the copyright.
The counterfeit "non-installer" CD-ROMs Sacriz and Samiano bought from respondents also suffice to support a finding of probable cause to indict respondents for unfair competition under Article 189(1) of the Revised Penal Code for passing off Microsoft products.. (Chairman). 3 December 1999. namely. to repeat. Respondents do not give any reason why the Court should not give credence to Microsoft’s claim. the Microsoft end-user license agreements. we GRANT the petition. SO ORDERED. On the other hand. 56 Together. concur. INCORPORATED. WHEREFORE. For the same reason. Respondents’ contention that the 12 CD-ROMs Sacriz and Samiano purchased cannot be traced to them because the receipt for these articles does not indicate its source is unavailing. 148222. From the pictures of the CD-ROMs’ packaging. Microsoft is not precluded from seeking remedies under PD 49 and Article 189(1) of the Revised Penal Code to vindicate its rights. the only respondent who was party to the Agreement. the illegality of the "non-installer" CD-ROMs purchased from respondents and of the Microsoft software pre-installed in the CPU is shown by the absence of the standard features accompanying authentic Microsoft products.
[G. Lastly. respondent Beltron. are counterfeit per se.831 Microsoft CD-ROMs seized from respondents suffice to support a finding of probable cause to indict respondents for copyright infringement under Section 5(A) in relation to Section 29 of PD 49 for unauthorized copying and selling of protected intellectual works. is a "third party approved by [Microsoft] from which [Beltron] may purchase MED53 Product. JJ. The receipt in question should be taken together with Microsoft’s claim that Sacriz and Samiano bought the CD-ROMs from respondents. on the other hand. What respondents contend is that these CD-ROMs were left to them for safekeeping. Ynares-Santiago. respondents makes no such claim. even if the Agreement still subsists. vs. the fact that the receipt for the CPU does not indicate "[s]oftware hard disk" does not mean that the CPU had no pre-installed Microsoft software.J. the only respondents who filed counter-affidavits. implies intent to deceive. the Agreement (and the alleged question on the validity of its termination) is immaterial to the determination of respondents’ liability for copyright infringement and unfair competition. and NORTH EDSA
.831 Microsoft CD-ROMs49 seized from respondents. Such replication.). As far as these installer CD-ROMs are concerned. But neither is this claim tenable for lack of substantiation. Jr. SHOEMART. Section 10(b)48 of the Agreement provides that Microsoft’s "rights and remedies" under the contract are "not xxx exclusive and are in addition to any other rights and remedies provided by law or [the] Agreement. 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. However. No. Indeed. August 15." Thus. respondents Keh and Chua. could not have reproduced them under the Agreement as the Solicitor General 50 and respondents contend. 55 one cannot distinguish them from the packaging of CD-ROMs containing genuine Microsoft software.. coupled with the similarity of content of these fake CD-ROMs and the CD-ROMs with genuine Microsoft software. The installer CD-ROMs with Microsoft software. Respondents Keh and Chua admit in their counter-affidavit that respondents are the "source" of the pre-installed MS-DOS software. user’s manuals. registration cards or certificates of authenticity. Quisumbing."54 Being a mere reproducer/installer of one Microsoft software copy on each customer’s hard disk or ROM. petitioner. and Azcuna. These circumstances give rise to the reasonable inference that respondents mass-produced the CD-ROMs in question without securing Microsoft’s prior authorization. We SET ASIDE the Resolutions dated 26 October 1999. 3 August 2000. 2003]
PEARL & DEAN (PHIL. Davide. and 22 December 2000 of the Department of Justice." 52 An authorized distributor. 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 to end users .. Third. did not make this claim in the DOJ. On the 2.R. 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 each Customer System hard disk or Read Only Memory ("ROM")". these considerations point to respondents as the vendor of the counterfeit CD-ROMs. C." The Agreement defines an authorized replicator as "a third party approved by [Microsoft] which may reproduce and manufacture [Microsoft] Product[s] for [Beltron] xxx.the genuine Microsoft software to produce these fake CD-ROMs and their distribution are illegal even if the copier or distributor is a Microsoft licensee. Beltron could only have acquired the hundreds of Microsoft CD-ROMs found in respondents’ possession from Microsoft distributors or replicators. INCORPORATED.
he pushed for the signing of the contract for SM Cubao. It further discovered that defendant-appellant North Edsa Marketing Inc. On September 11. (SMI) for the lease and installation of the light boxes in SM City North Edsa. submitted for signature the contracts covering SM Cubao and SM Makati to SMI’s Advertising Promotions and Publicity Division Manager. Pearl and Dean found out that aside from the two (2) reported SM branches. SMI maintained that it independently developed its poster panels using commonly known techniques and available technology. saying it was without basis. 1981 over these illuminated display units. Besides. Inc. without notice of or reference to Pearl and Dean’s copyright. 1985. 1988. Prime Spots Marketing Services. (SMI) and North Edsa Marketing Inc. in Civil Case No. is a corporation engaged in the manufacture of advertising display units simply referred to as light boxes. In denying the charges hurled against it. the company formerly contracted by Pearl and Dean to fabricate its display units. the word “Poster Ads” is a generic term which cannot be
. Two years later.000. 1996 decision 2 of the Regional Trial Court of Makati. but was approved only on September 12. Since SM City North Edsa was under construction at that time. These units utilize specially printed posters sandwiched between plastic sheets and illuminated with back lights. and the like. The application for registration of the trademark was filed with the Bureau of Patents. Claiming that both SMI and NEMI failed to meet all its demands. (P & D) assails the May 22. however. unfair competition and damages. Ramonlito Abano. offered to construct light boxes for Shoemart’s chain of stores. SM Makati and SM Cubao. Inc. in a letter dated January 14. petitioner Pearl & Dean (Phil. SMI offered as an alternative.” and the payment to Pearl and Dean of compensatory damages in the amount of Twenty Million Pesos (P20. Pearl and Dean filed this instant case for infringement of trademark and copyright. It also demanded the discontinued use of the trademark “Poster Ads. 1991 to both SMI and NEMI enjoining them to cease using the subject light boxes and to remove the same from SMI’s establishments. received reports that exact copies of its light boxes were installed at SM City and in the fastfood section of SM Cubao. Pearl and Dean was able to secure a Certificate of Copyright Registration dated January 20.00). Pearl and Dean’s General Manager. light boxes similar to those it manufactures were also installed in two (2) other SM stores. 1985.MARKETING. Sometime in 1985. In his reply dated February 17. Only the contract for SM Makati. and unfair competition. was set up primarily to sell advertising space in lighted display units located in SMI’s different branches. through its marketing arm.
FACTUAL ANTECEDENTS The May 22. Upon receipt of the demand letter. Pearl and Dean employed the services of Metro Industrial Services to manufacture its advertising displays. Pearl and Dean noted that NEMI is a sister company of SMI. Upon investigation. Vergara protested the unilateral action of SMI. (NEMI) liable for infringement of trademark and copyright. After its contract with Metro Industrial was terminated. 1983. Sometime in 1989. Pearl and Dean. Instead. 1986. These were delivered on a staggered basis and installed at SM Megamall and SM City. 1986. SMI did not bother to reply. 2001 decision 1 of the Court of Appeals reversing the October 31.000. Rodolfo Vergara. Branch 133. Pearl and Dean sent a letter dated December 11. Pearl and Dean negotiated with defendant-appellant Shoemart. J. to which Pearl and Dean agreed. 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.). was returned signed. SMI engaged the services of EYD Rainbow Advertising Corporation to make the light boxes. Trademarks and Technology Transfer on June 20. per Registration No. SMI suspended the leasing of two hundred twenty-four (224) light boxes and NEMI took down its advertisements for “Poster Ads” from the lighted display units in SMI’s stores. 92-516 which declared private respondents Shoemart Inc. respondents. The advertising light boxes were marketed under the trademark “Poster Ads”. SMI noted that the registration of the mark “Poster Ads” was only for stationeries such as letterheads.: In the instant petition for review on certiorari under Rule 45 of the Rules of Court. 41165. SMI’s house counsel informed Pearl and Dean that it was rescinding the contract for SM Makati due to non-performance of the terms thereof. according to SMI. Metro Industrial Services. 2001 decision of the Court of Appeals 3 contained a summary of this dispute: “Plaintiff-appellant Pearl and Dean (Phil. Some 300 units were fabricated in 1991. DECISION CORONA. (NEMI). INCORPORATED. envelopes. In the light of its discoveries. From 1981 to about 1988. SMI approved the proposal and ten (10) light boxes were subsequently fabricated by Metro Industrial for SMI. In the same letter.) Inc. On October 4. but also for SM Cubao.
Selden (101 U. the Court of Appeals reversed the trial court: Since the light boxes cannot. under oath. It repleaded SMI’s averments.appropriated as a trademark. 298 (S.” The RTC of Makati City decided in favor of P & D: Wherefore. aside from praying for the dismissal of the case. SMI alleged that Pearl and Dean had no cause of action against it and that the suit was purely intended to malign SMI’s good name. to the National Library. and not the light boxes themselves. installed or used any advertising display units.000. 1942)]. a copyright over the drawings like plaintiff-appellant’s will not extend to the actual object. 841 (1879). under oath. representing profits derived by defendants as a result of infringement of plaintiff’s copyright from 1991 to 1992 moral damages . PD-R-2558 dated January 20. we have to agree with SMI when it posited that what was copyrighted were the technical drawings only.00. for impounding in the National Library.00 . as amended.000. The principle in Baker vs. be considered as either prints. defendants are hereby directed: (1) to pay plaintiff the following damages: (a) actual damages P16. however.P1. 1981 and Certificate of Trademark Registration No.
Defendants’ counterclaims are hereby ordered dismissed for lack of merit. SMI. In this case. as amended. 4165 dated September 12. On this basis. that is the province of letters patent. defendants SMI and NEMI are found jointly and severally liable for infringement of copyright under Section 2 of PD 49.P1.P1. 1988. Muller had obtained a copyright over an unpublished drawing entitled “Bridge Approach – the drawing showed a novel bridge approach to unsnarl traffic congestion”. The Court held that exclusivity to the actual forms is not extended by a copyright.00 exemplary damages attorney’s fees plus costs of suit.000. When a drawing is technical and depicts a utilitarian object.000.00
(b) (c) (d) (e) (2) (3) (4)
to deliver. Triborough Bridge Authority [43 F.000. all light boxes of SMI which were fabricated by Metro Industrial Services and EYD Rainbow Advertising Corporation.Y. 166. . pictorial illustrations. of which the leading case is Baker vs. Supp. to be properly classified as a copyrightable class “O” work. specially designed for use in connection with the system explained in the work. SO ORDERED. In that case. The defendant Baker then produced forms which were similar to the forms illustrated in Selden’s copyrighted books.S. and are hereby penalized under Section 28 of PD 49. Included as part of the book were blank forms and illustrations consisting of ruled lines and headings. The reason was that “to grant a monopoly in the underlying art when no examination of its novelty has ever been made would be a surprise and a fraud upon the public. as such. to deliver. registration of such mark is invalid. No doubt aware that its alleged original design would never pass the rigorous examination of a patent application. These forms showed the entire operation of a day or a week or a month on a single page. and Sections 23 and 24 of RA 166. admissions and denials and prayed for similar reliefs and counterclaims as SMI. denied having manufactured.D. and to permanently refrain from infringing the copyright on plaintiff’s light boxes and its trademark “Poster Ads”.4 On appeal. for its part. Selden had obtained a copyright protection for a book entitled “Selden’s Condensed Ledger or Bookkeeping Simplified” which purported to explain a new system of bookkeeping. in violation of Section 27 of P. advertising copies. Accordingly.000. not of copyright. nor having engaged in the business of advertising. as amended. NEMI. as amended. and. labels. for destruction. tags or box wraps.000. and infringement of trademark under Section 22 of RA No. thus: 42. plaintiff-appellant fought to foist a fraudulent monopoly on the public by conveniently resorting to a copyright registration which merely employs a recordal system without the benefit of an in-depth examination of novelty. 49. or on two pages following each other. all filler-posters using the trademark “Poster Ads”. The defendant
.600. It has so been held under jurisprudence.N.D. It also stressed that Pearl and Dean is not entitled to the reliefs prayed for in its complaint since its advertising display units contained no copyright notice. also counterclaimed for moral. Selden was likewise applied in Muller vs. actual and exemplary damages and for the cancellation of Pearl and Dean’s Certification of Copyright Registration No. by any stretch of the imagination.” And that is precisely the point.
There being no finding of either copyright or trademark infringement on the part of SMI and NEMI. B. Defendants-appellants cannot thus be held liable for infringement of the trademark “Poster Ads”. premises considered. subject to any conditions and limitations stated therein. Why Pearl and Dean limited the use of its trademark to stationeries is simply beyond us.constructed a bridge approach which was alleged to be an infringement of the new design illustrated in plaintiff’s drawings. Trademarks. that: Really. without being authorized. Pearl and Dean applied for the registration of the trademark “Poster Ads” with the Bureau of Patents. With this as factual backdrop. through Justice Conrado V. it must stand by the consequence of the registration which it had caused. 1983. we find that Pearl and Dean’s exclusive right to the use of “Poster Ads” is limited to what is written in its certificate of registration. as well as the parallel use by which said words were used in the parties’ respective advertising copies. Imperial Homes Corp. In fine. xxx xxx xxx
We are constrained to adopt the view of defendants-appellants that the words “Poster Ads” are a simple contraction of the generic term poster advertising. xxx xxx xxx
The Supreme Court trenchantly held in Faberge. 1988 under Registration No. then a situation may arise whereby an applicant may be tempted to register a trademark on any and all goods which his mind may conceive even if he had never intended to use the trademark for the said goods. 2d 895 and Scholtz Homes. We believe that such omnibus registration is not contemplated by our Trademark Law. It does not prevent one from using the drawings to construct the object portrayed in the drawing. namely. it was held that there is no copyright infringement when one who. envelopes and calling cards and newsletters.. we cannot find SMI liable for infringing Pearl and Dean’s copyright over the technical drawings of the latter’s advertising display units. “Poster Ads” was registered by Pearl and Dean for specific use in its stationeries. Jurisprudence has interpreted Section 20 of the Trademark Law as “an implicit permission to a manufacturer to venture into the production of goods and allow that producer to appropriate the brand name of the senior registrant on goods other than those stated in the certificate of registration. Certification of registration prima facie evidence of validity . Incorporated vs. 41165 covering the following products: stationeries such as letterheads. uses a copyrighted architectural plan to construct a structure. the assailed decision is REVERSED and SET ASIDE. While we do not discount the striking similarity between Pearl and Dean’s registered trademark and defendants-appellants’ “Poster Ads” design. Inc.
THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO COPYRIGHT INFRINGEMENT WAS COMMITTED BY RESPONDENTS SM AND NEMI.” The Supreme Court further emphasized the restrictive meaning of Section 20 when it stated. if the certificate of registration were to be deemed as including goods not specified therein. v. in contrast to defendantsappellants who used the same words in their advertising display units. But. Said trademark was recorded in the Principal Register on September 12. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO INFRINGEMENT OF PEARL & DEAN’S TRADEMARK “POSTER ADS” WAS COMMITTED BY RESPONDENTS SM
. 379 F. we see no legal basis to the finding of liability on the part of the defendantsappellants for their use of the words “Poster Ads”. having already done so. v. 5 Dissatisfied with the above decision. the registrant’s ownership of the mark or trade-name. in the advertising display units in suit. stationeries. 20. 2d 84. petitioner P & D filed the instant petition assigning the following errors for the Court’s consideration: A. otherwise known as the Trademark Law. as amended. Maddox.A certificate of registration of a mark or trade-name shall be prima facie evidence of the validity of the registration. which reads: SEC. business or services specified in the certificate. we cannot find defendants-appellants liable for infringement of trademark. Sanchez.” (underscoring supplied) The records show that on June 20. the monetary award granted by the lower court to Pearl and Dean has no leg to stand on. In this case it was held that protection of the drawing does not extend to the unauthorized duplication of the object drawn because copyright extends only to the description or expression of the object and not to the object itself. and another is rendered DISMISSING the complaint and counterclaims in the above-entitled case for lack of merit. xxx xxx xxx
WHEREFORE. 458 F. and Technology Transfer. and of the registrant’s exclusive right to use the same in connection with the goods. In the absence of any convincing proof that “Poster Ads” has acquired a secondary meaning in this jurisdiction. This is because the copyright does not extend to the structures themselves. In two other cases. Intermediate Appellate Court that the protective mantle of the Trademark Law extends only to the goods used by the first user as specified in the certificate of registration. following the clear mandate conveyed by Section 20 of Republic Act 166. Lamont .
petitioner’s application for a copyright certificate — as well as Copyright Certificate No. Said Section 2 expressly enumerated the works subject to copyright: SEC. Obviously. labels. First. THE HONORABLE COURT OF APPEALS ERRED IN NOT HOLDING RESPONDENTS SM AND NEMI LIABLE TO PEARL & DEAN FOR ACTUAL. 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. The strict application 9 of the law’s enumeration in Section 2 prevents us from giving petitioner even a little leeway. ATTORNEY’S FEES AND COSTS OF SUIT. subsist with respect to any of the following works: xxx xxx xxx
(O) Prints. is purely a statutory right. 2. THE HONORABLE COURT OF APPEALS ERRED IN DISMISSING THE AWARD OF THE TRIAL COURT. xxx xxx xxx
Although petitioner’s copyright certificate was entitled “Advertising Display Units” (which depicted the box-type electrical devices). We shall focus then on the following issues: (1) if the engineering or technical drawings of an advertising display unit (light box) are granted copyright protection (copyright certificate of registration) by the National Library. MORAL & EXEMPLARY DAMAGES. THAT SM WAS GUILTY OF BAD FAITH IN ITS NEGOTIATION OF ADVERTISING CONTRACTS WITH PEARL & DEAN. pictorial illustrations. is the light box depicted 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 Bureau of Patents Trademarks and Technology Transfer (now Intellectual Property Office) — in addition to the copyright of the engineering drawings? (3) can the owner of a registered trademark legally prevent others from using such trademark if it is a mere abbreviation of a term descriptive of his goods. It may be obtained and enjoyed only with respect to the subjects and by the persons. trademarks and unfair competition arising from infringement of any of the first three. advertising copies. The rights granted by this Decree shall.” Stated otherwise. C. and box wraps. from the moment of creation. 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. 7 Accordingly. we are challenged once again to put into proper perspective four main concerns of intellectual property law — patents. its claim of copyright infringement cannot be sustained. it can cover only the works falling within the statutory enumeration or description. petitioner’s copyright protection extended only to the technical drawings and not to the light box itself because the latter was not at all in the category of “prints. In ruling that there was no copyright infringement. tags and box wraps. even as we find that P & D indeed owned a valid copyright. the rights are limited to what the statute confers. even if its copyright
D. 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 the units manufactured by Metro and EYD Rainbow Advertising for its own account. pictorial illustrations.AND NEMI. This being so. Being a mere statutory grant. in the strict sense of the term. tags. PD-R2588 issued by the National Library on January 20. and on terms and conditions specified in the statute. copyrights. the same could have referred only to the technical drawings within the category of “pictorial illustrations.
ISSUES In resolving this very interesting case. NOT DISPUTED BY THE HONORABLE COURT OF APPEALS. Copyright.8 P & D secured its copyright under the classification class “O” work. petitioner’s position 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.” It could not have possibly stretched out to include the underlying light box. that is. DESPITE THE LATTER’S FINDING. labels. advertising copies.
” In fine. for leasing out to different advertisers. despite its manufacture and commercial use of the light boxes without license from petitioner. petitioner could not legally prevent anyone from manufacturing or commercially using the contraption. since whatever right one has to the invention covered by the patent arises alone from the grant of patent . selling or using the invention. vs. x x x (A)n inventor has no common law right to a monopoly of his invention. there appeared to be some confusion regarding what ought or ought not to be the proper subjects of copyrights. As a patentee. For some reason or another. on the other are the inventors who must be protected. such as by offering it for sale.12 we held that “there can be no infringement of a patent until a patent has been issued.13 On the assumption that petitioner’s advertising units were patentable inventions. a trade name means the name or designation identifying or distinguishing an enterprise. the scope of a copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation.16 “The act secured to the inventor the exclusive right to make use. and the protection afforded by one cannot be used interchangeably to cover items or works that exclusively pertain to the others: Trademark. During the trial. SMI’s and NEMI’s acts complained of by P & D were to have units similar or identical to the light box illustrated in the technical drawings manufactured by Metro and EYD Rainbow Advertising. refer to any technical solution of a problem in any field of human activity which is new. petitioner never secured a patent for the light boxes. but if he voluntarily discloses it. In relation thereto.” What the law does not include.” 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 disclosure
. copyright and patents are different intellectual property rights that cannot be interchanged with one another. Inc. he has the exclusive right of making. And because it had no patent. To be able to effectively and legally preclude others from copying and profiting from the invention. In Creser Precision Systems. after the lapse of the exclusive privileges granted the benefit of such inventions and improvements. should they be liable instead for infringement of patent? We do not think so either. private respondents cannot be held legally liable for infringement of P & D’s copyright over its technical drawings of the said light boxes. Patentable inventions. It was passed for the purpose of encouraging useful invention and promoting new and useful inventions by the protection and stimulation given to inventive genius. and for the good reason: the light box was not a literary or artistic piece which could be copyrighted under the copyright law. Meanwhile. then no doubt they would have been guilty of copyright infringement. 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. patents and trademarks. Was this an infringement of petitioner’s copyright over the technical drawings? We do not think so. it excludes. Court of Appeals. No patent. involves an inventive step and is industrially applicable. The ultimate goal of a patent system is to bring new designs and technologies into the public domain through disclosure. In the leading case of Kho vs.certificate was entitled “Advertising Display Units. gives the inventor the right to exclude all others. It therefore acquired no patent rights which could have protected its invention. and was intended to secure to the public.11 we ruled that these three legal rights are completely distinct and separate from one another. once disclosed to the public without the protection of a valid patent. on the other hand. the president of P & D himself admitted that the light box was neither a literary not an artistic work but an “engineering or marketing invention. O’Donnel. petitioner revealed them fully to the public by submitting the engineering drawings thereof to the National Library. Court of Appeals. 15 On one side of the coin is the public which will benefit from new ideas. and consequently to prevent others from exercising like privileges without the consent of the patentee.
ON THE ISSUE OF PATENT INFRINGEMENT This brings us to the next point: if. however. But this was not the case. if in fact it really was.”10 Obviously. the world is free to copy and use it with impunity. A patent. a patent is a primordial requirement. no protection. 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 . 14 Ideas. And no less clearly. As held in Bauer & Cie vs. He has the right to make use of and vend his invention. if SMI and NEMI reprinted P & D’s technical drawings for sale to the public without license from P & D. are subject to appropriation without significant restraint. and vend the thing patented.
second. In that case. He may copyright his book. but upon the expiration of that period. its exclusivity would have been for 17 years only. he gains no exclusive right to the manufacture and sale of the medicine. not the idea itself . third. The publication illustrated blank forms of ledgers utilized in such a system. in return for the exclusive right to practice the invention for a number of years. not having gone through the arduous examination for patents. letters patent and copyright. may be illustrated by reference to the subjects just enumerated. if he pleases. but that only secures to him the exclusive right of printing and publishing his book. But through the simplified procedure of copyright-registration with the National Library — without undergoing the rigor of defending the patentability of its invention before the IPO and the public — the petitioner would be protected for 50 years. To that end. Stated otherwise. the knowledge of the invention inures to the people.”19 There is no such scrutiny in the case of copyrights nor any notice published before its grant to the effect that a person is claiming the creation of a work. If the discoverer writes and publishes a book on the subject (as regular physicians generally do). Therefore. Certain mixtures are found to be of great value in the healing art. he must obtain a patent for the mixture as a new art. would be a surprise and a fraud upon the public. In the oft-cited case of Baker vs. Selden21. patent law seeks to foster and reward invention. or on the mixture and application of colors for painting or dyeing. The claim to an invention of discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained. the rights and welfare of the community must be fairly dealt with and effectively guarded. and a patent from the government can only secure it. the plaintiff held the copyright of a book which expounded on a new accounting system he had developed. If he desires to acquire such exclusive right. the stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the free use of the public. the petitioner cannot exclude others from the manufacture. the United States Supreme Court held that only the expression of an idea is protected by copyright. To begin with. though they may never have been known or used
. The novelty of the art or thing described or explained has nothing to do with the validity of the copyright.” 17 The patent law has a three-fold purpose: “first. which it is. what petitioner seeks is exclusivity without any opportunity for the patent office (IPO) to scrutinize the light box’s eligibility as a patentable invention. though only explanatory of well known systems. the prerequisites to obtaining a patent are strictly observed and when a patent is issued. An exclusive enjoyment is guaranteed him for 17 years. when no examination of its novelty has ever been officially made. The mere statement of the proposition is so evident that it requires hardly any argument to support it. manufacture or composition of matter. he gives that to the public. or on the mode of drawing lines to produce the effect of perspective. not of copyright. Take the case of medicines. So of all other inventions or discoveries. it is claimed only as a book. The same distinction may be predicated of every other art as well as that of bookkeeping. This situation could not have been the intention of the law. and the art. would be the subject of copyright. may be the subject of a copyright. sale or commercial use of the light boxes on the sole basis of its copyright certificate over the technical drawings. intended to illustrate. on the construction and use of ploughs or watches or churns. no matter how many drawings and illustrations it may contain. it promotes disclosures of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires. if not pirated from other works. but no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein. The difference between the two things. The copyright of the book. The inventor may keep his invention secret and reap its fruits indefinitely. had petitioner secured a patent instead.of new useful and non-obvious advances in technology and design. the limitations on its exercise are equally strictly enforced. A treatise on the composition and use of medicines. as such. would be valid without regard to the novelty or want of novelty of its subject matter. Such an in-depth investigation is required because “in rewarding a useful invention. gives no exclusive right to the modes of drawing described. The irony here is that. The law confers the copyright from the moment of creation 20 and the copyright certificate is issued upon registration with the National Library of a sworn ex-parte claim of creation. To give to the author of the book an exclusive property in the art described therein. who are thus enabled to practice it and profit by its use. but. be they old or new. That is the province of letters patent. x x x. a genuine invention or discovery must be demonstrated lest in the constant demand for new appliances. In consideration of its disclosure and the consequent benefit to the community. The US Supreme Court ruled that: “There is no doubt that a work on the subject of book-keeping. the patent is granted. then. the heavy hand of tribute be laid on each slight technological advance in art. The defendant reproduced forms similar to those illustrated in the plaintiff’s copyrighted book.”18 It is only after an exhaustive examination by the patent office that a patent is issued. But there is a clear distinction between the books. The copyright of a book on perspective.
by long and exclusive use by a business (such that the name or phrase becomes associated with the business or product in the mind of the purchasing public). but one where the goods specified were “stationeries such as letterheads. was correct and was in fact recently reiterated in Canon Kabushiki Kaisha vs. or any material part thereof. And. the ruled lines and headings of accounts must necessarily be used as incident to it.” 22 Petitioner admitted it did not commercially engage in or market these goods. Whether the art might or might not have been patented. Petitioner did not appeal this particular point. which is not before us. any person may practice and use the art itself which he has described and illustrated therein.” (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 was a contraction of “poster advertising. by letters patent. The latter can only be secured. On the contrary. One who has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others for products which are of a different description. Inc. the cause of action should have been for unfair competition. the illustrations and diagrams employed happened to correspond more closely than usual with the actual work performed by the operator who uses the art. which have been made the subject of copyright. Even a name or phrase incapable of appropriation as a trademark or tradename may. in using the art. be entitled to protection against unfair competition. The object of the one is explanation. calling cards and newsletters. as a book intended to convey instruction in the art. the failure of P & D to secure a trademark registration for specific use on the light boxes meant that there could not have been any trademark infringement since registration was an essential element thereof. Court of Appeals. whilst no one has a right to print or publish his book.
ON THE ISSUE OF UNFAIR COMPETITION If at all. The copyright of a book on bookkeeping cannot secure the exclusive right to make. As noted by the Court of Appeals. The use of the art is a totally different thing from a publication of the book explaining it. By publishing the book without getting a patent for the art. ruled that “the certificate of registration issued 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.25 Assuming arguendo that “Poster Ads” could validly qualify as a trademark. invoking Section 20 of the old Trademark Law. petitioner’s expert witnesses himself had testified that “ ‘Poster Ads’ was too generic a name. though entitled to the benefit of copyright. the object of the other is use. while the petitioner’s complaint in the RTC also cited unfair competition. the latter is given to the public.before.” P & D was able to secure a trademark certificate for it. hence. subject to any conditions and limitations specified in the certificate x x x. sell and use account books prepared upon the plan set forth in such book.26 However. which. Intermediate Appellate Court. The plausibility of the claim put forward by the complainant in this case arises from a confusion of ideas produced by the peculiar nature of the art described in the books. It was not patented. The former may be secured by copyright. we nevertheless cannot hold respondents guilty of unfair competition. there was no evidence that P & D’s use of “Poster Ads” was distinctive or well-known. and is open and free to the use of the public. the trial court did not find private respondents liable therefor. x x x The description of the art in a book. But even disregarding procedural issues.”24 Faberge.23 where we. Under the circumstances. envelopes. lays no foundation for an exclusive claim to the art itself. By the nature of things. it cannot now revive its claim of unfair competition. were not at all specified in the trademark certificate. the Court of Appeals correctly cited Faberge Inc. of course. however. vs. there can be no unfair competition under the law on copyrights although it is applicable to disputes over the use of trademarks. 27 In this case. is a question. a situation which was possible even if P & D had no registration. it dealt in electrically operated backlit advertising units and the sale of advertising spaces thereon. x x x Now. if it can be secured at all. So it was difficult to identify
. In describing the art.
This fact also prevented the application of the doctrine of secondary meaning. in the mind of the public. 1991. 4529. HON. The respondents.R. DE LEON. 115758 March 19. and. the Court finds no reversible error committed by the Court of Appeals when it reversed the Regional Trial Court of Makati City.00) to the effect that
. 2001 is AFFIRMED in toto.it with any company. as shown by Certificates of Copyright Registration No. COURT OF APPEALS. SUMMERVILLE GENERAL MERCHANDISING and COMPANY. and. G.: Before us is a petition for review on certiorari of the Decision1 dated May 24. J. of Quezon City granting the issuance of a writ of preliminary injunction. petitioner. in similar containers that petitioner uses. for preliminary injunction. the registered owner thereof in the Supplemental Register of the Philippine Patent Office on February 7. that the authority of Quintin Cheng. 1992 of the Regional Trial Court. Kho filed a complaint for injunction and damages with a prayer for the issuance of a writ of preliminary injunction. assignee of the patent registration certificate. “Secondary meaning” means that a word or phrase originally incapable of 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. the application of plaintiff Elidad C. alleged as their defense that Summerville is the exclusive and authorized importer. 0-1358 and No. against the respondents Summerville General Merchandising and Company (Summerville. Branch 90. SO ORDERED. The facts of the case are as follows: On December 20. honestly speaking.. the trial court granted the same in an Order dated February 10. doing business under the name and style of KEC COSMETICS LABORATORY. “Poster Ads” was generic and incapable of being used as a trademark because it was used in the field of poster advertising. Consequentially. and resulting in the decline in the petitioner's business sales and income. plaintiff is required to file with the Court a bond executed to defendants in the amount of five hundred thousand pesos (P500. 1980 under Registration Certificate No. that KEC Cosmetics Laboratory of the petitioner obtained the copyrights through misrepresentation and falsification. the very business engaged in by petitioner. Having discussed the most important and critical issues. is hereby granted. The petitioner's complaint alleges that petitioner. vs. All told. thereby misleading the public.”28 This crucial admission by its own expert witness that “Poster Ads” could not be associated with P & D showed that. doing business under the name and style of KEC Cosmetics Laboratory. the petition is hereby DENIED and the decision of the Court of Appeals dated May 22. After due hearing on the application for preliminary injunction. 1992 and March 19. petitioner Elidad C. JR. on the other hand. is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case. the goods and services carrying the trademark “Poster Ads” could not be distinguished from the goods and services of other entities. doing business under the style of KEC Cosmetic Laboratory. the word or phrase has come to mean that the article was his property. Kho. 1992. that she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after purchasing the same from Quintin Cheng. respondents. Q-91-10926. KHO. that respondent Summerville advertised and sold petitioner's cream products under the brand name Chin Chun Su. WHEREFORE. for brevity) and Ang Tiam Chay. and ANG TIAM CHAY. 0-3678. docketed as Civil Case No. that the said Taiwanese manufacturing company authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other appropriate governmental agencies. 29 The admission by petitioner’s own expert witness that he himself could not associate “Poster Ads” with petitioner P & D because it was “too generic” definitely precluded the application of this exception.000. No. the dispositive portion of which reads: ACCORDINGLY. 2002
ELIDAD C. in the trade and to that branch of the purchasing public. to distribute and market Chin Chun Su products in the Philippines had already been terminated by the said Taiwanese Manufacturing Company. 1993 of the Court of Appeals setting aside and declaring as null and void the Orders2 dated February 10. we see no need to belabor the rest. that the respondents should be enjoined from allegedly infringing on the copyrights and patents of the petitioner. re-packer and distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan.
30954 that 'registrants is presumed to be the owner of the mark until after the registration is declared cancelled' is. the trial court went on to hear petitioner's complaint for final injunction and damages. Unreported).5 In granting the petition. or on August 14 1992.000. v. the respondents did not state the docket number of the civil case in the caption of their petition and. praying for the nullification of the said writ of preliminary injunction issued by the trial court. The trial court did not award damages and costs to any of the parties but to their respective counsels were awarded Seventy-Five Thousand Pesos (P75. the trial court rendered a Decision7 barring the petitioner from using the trademark Chin Chun Su and upholding the right of the respondents to use the same. therefore. After the respondents filed their reply and almost a month after petitioner submitted her comment. 14 Phil 534). One may be declared an unfair competitor even if his competing trademark is registered (Parke. 1992. 1992 and March 19.
. not conclusive.R. they did not include therein a certificate of non-forum shopping.nêt xxx xxx xxx
As ratiocinated in La Chemise Lacoste. 27803 ruling in favor of the respondents. On October 22. Davis & Co.. but recognizing the copyright of the petitioner over the oval shaped container of her beauty cream. SP No.S. This she followed with several motions to declare respondents 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 be obtained only from Summerville General Merchandising and Co. The respondents opposed the petition and submitted to the appellate court a certificate of non-forum shopping for their petition. By the very fact that the trademark cannot as yet be on guard and there are certain defects.4 On April 24. S. In the meantime.00) each as attorney's fees. v. 129 SCRA 373. 1993. docketed as CA-G. the respondents filed a petition for certiorari with the Court of Appeals. 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. 28-91. Lim Hoa. Fernandez. it is devoid of factual basis. the latter moved to dismiss the petition for violation of Supreme Court Circular No. May 30. The supposed presumption not only runs counter to the precept embodied in Rule 124 of the Revised Rules of Practice before the Philippine Patent Office in Trademark Cases but considering all the facts ventilated before us in the four interrelated petitions involving the petitioner and the respondent.. serves as notice that the registrant is using or has appropriated the trademark. we have held that the presumption is rebuttable. the petition is hereby given due course and the orders of respondent court dated February 10. the appellate court rendered a Decision in CA-G. As even in cases where presumption and precept may factually be reconciled. Respondent court is directed to forthwith proceed with the trial of Civil Case No. On May 24. chua Seco & Co. Trademarks and Technology Transfer cannot be equated with registration in the principal register. 1992. more significantly. It would be deceptive for a party with nothing more than a registration in the Supplemental Register to posture before courts of justice as if the registration is in the Principal Register. the dispositive portion of which reads: WHEREFORE.R. 27803. some obstacles which the use must still overcome before he can claim legal ownership of the mark or ask the courts to vindicate his claims of an exclusive right to the use of the same. misplaced and grounded on shaky foundation. G. The reliance of the private respondent on the last sentence of the Patent office action on application Serial No. 393: "Registration in the Supplemental Register. SO ORDERED. 1992 granting the writ of preliminary injunction and denying petitioners' motion for reconsideration are hereby set aside and declared null and void. 60 Phil 928. SP No.3 The respondents moved for reconsideration but their motion for reconsideration was denied by the trial court in an Order dated March 19. SO ORDERED. a circular prohibiting forum shopping. Kiu Foo & Co.plaintiff will pay to defendants all damages which defendants may sustain by reason of the injunction if the Court should finally decide that plaintiff is not entitled thereto. vs.R. Q-91-10926 and resolve the issue raised by the parties on the merits. et al. which is duly protected by the Trademark Law. 1993.. According to the petitioner. No. The petitioner duly appealed the said decision to the Court of Appeals. (People v."6 The petitioner filed a motion for reconsideration. 1âwphi1. La Yebana Co. L-10612. therefore. 1958.
. Hence. Thus. on the other hand.14 Patentable inventions. 28-91. Rule 58 of the Revised Rules of Civil Procedure. that the right of complainant is clear and unmistakable. copyright and patents are different intellectual property rights that cannot be interchanged with one another. a trade name means the name or designation identifying or distinguishing an enterprise. petitioner describes as arbitrary the denial of her motions for contempt of court against the respondents. 1994. We rule in favor of the respondents. the user must sufficiently prove that she registered or used it before anybody else did. Also. the Court of Appeals promulgated a Resolution 8 denying the petitioner's motions for reconsideration and for contempt of court in CA-G. 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. The appellate court ruled only after the lapse of three hundred fifty-four (354) days. the petitioner contends that the appellate court violated Section 6. refer to any technical solution of a problem in any field of human activity which is new. and. Consequently. the petitioner applied for the issuance of a preliminary injunctive order on the ground that she is entitled to the use of the trademark on Chin Chun Su and its container based on her copyright and patent over the same. this petition anchored on the following assignment of errors: I RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING TO RULE ON PETITIONER'S MOTION TO DISMISS. the appellate court denied the petitioner's right to seek the timely appellate relief. 27803. and the whole or part of such relief consists in restraining the commission or continuance of the act or acts complained of. The petitioner's copyright and patent registration of the name and container would not guarantee her the right to the exclusive use of the same for the reason that they are not appropriate subjects of the said intellectual rights. Rule 9 of the Revised Internal Rules of the Court of Appeals when it failed to rule on her motion for reconsideration within ninety (90) days from the time it is submitted for resolution. that there is an urgent and paramount necessity for the writ to prevent serious damage. SP No.R. 10 This is the reason why we have ruled that it must be shown that the invasion of the right sought to be protected is material and substantial.On June 3. Trademark. We first find it appropriate to rule on whether the copyright and patent over the name and container of a beauty cream product would entitle the registrant to the use and ownership over the same to the exclusion of others. 12 In relation thereto. THE HONORABLE COURT OF APPEALS DENIED PETITIONER'S RIGHT TO SEEK TIMELY APPELLATE RELIEF AND VIOLATED PETITIONER'S RIGHT TO DUE PROCESS. not having proven that she has registered a trademark thereto or used the same before anyone did. a preliminary injunction order cannot be issued for the reason that the petitioner has not proven that she has a clear right over the said name and container to the exclusion of others. 1994. 15 Petitioner has no right to support her claim for the exclusive use of the subject trade name and its container. or on June 3. a preliminary injunction order may be granted only when the application for the issuance of the same shows facts entitling the applicant to the relief demanded. Finally. IV RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING TO CITE THE PRIVATE RESPONDENTS IN CONTEMPT. Pursuant to Section 1. III IN DELAYING THE RESOLUTION OF PETITIONER'S MOTION FOR RECONSIDERATION. involves an inventive step and is industrially applicable. either for a limited period or perpetually. one of the grounds for the issuance of a writ of preliminary injunction is a proof that the applicant is entitled to the relief demanded. 13 Meanwhile. The name and container of a beauty cream product are proper subjects of a trademark inasmuch as the same falls squarely within its definition. In delaying the resolution thereof. 11 In the case at bar. the scope of a copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation. In order to be entitled to exclusively use the same in the sale of the beauty cream product.9 The petitioner faults the appellate court for not dismissing the petition on the ground of violation of Supreme Court Circular No. II RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN REFUSING TO PROMPTLY RESOLVE PETITIONER'S MOTION FOR RECONSIDERATION.
renders moot and academic any objection to the prior dissolution of a writ of preliminary injunction. although appealed. to the issuance of a writ of preliminary injunction. Court of Appeals16. the said decision nullifying the injunctive writ was immediately executory. the proceedings for preliminary injunction cannot stand separately or proceed independently of the decision rendered on the merit of the main case for injunction. Rule 66 of the Revised Rules of Civil Procedure which provides that "(I)n petitions for certiorari before the Supreme Court and the Court of Appeals. Under Section 1. shall be observed. the preliminary determination of its non-existence ceases to have any force and effect. WHEREFORE. But we find that petitioner contributed to this delay when she filed successive contentious motions in the same proceeding. respondents. First. JOAQUIN. The granting of an injunctive writ based on a technical ground rather than compliance with the requisites for the issuance of the same is contrary to the primary objective of legal procedure which is to serve as a means to dispense justice to the deserving party. Secondly. HONORABLE FRANKLIN DRILON. vs. 1994. that is. She therefore could no longer submit a motion to dismiss nor raise defenses and objections not included in the answer/comment she had earlier tendered. the petition is DENIED. Inc. the last of which was on October 27.R. 1993. the petitioner improperly raised the technical objection of non-compliance with Supreme Court Circular No. the issue was raised one month after petitioner had filed her answer/comment and after private respondent had replied thereto. Thirdly. 28-91 by filing a motion to dismiss the petition for certiorari filed in the appellate court.. WILLIAM ESPOSO. This is supported by our ruling in La Vista Association. GABRIEL ZOSA. No. This is prohibited by Section 6. are hereby AFFIRMED. and not a motion to dismiss. 1999 FRANCISCO G. the petition xxx (italics supplied)". 17 With respect to the purported damages she suffered due to the alleged delay in resolving her motion for reconsideration. a motion to dismiss shall be filed within the time for but before filing the answer to the complaint or pleading asserting a claim. respectively. substantial justice and equity require this Court not to revive a dissolved writ of injunction in favor of a party without any legal right thereto merely on a technical infirmity. 1993 and June 3. pursuant to Section 4 of Rule 39 of the Revised Rules of Civil Procedure. The Decision and Resolution of the Court of Appeals dated May 24.1âwphi1. after the same issue has been decided on the merits.We cannot likewise overlook the decision of the trial court in the case for final injunction and damages. petitioners. necessitating counter-manifestations from private respondents with the last one being filed on November 9. 27803 merely announced in plain and straightforward language the promulgation of the assailed Decision of the appellate court. is proper. G. JR. The petitioner argues that the appellate court erred in not dismissing the petition for certiorari for non-compliance with the rule on forum shopping. SP No. Conversely. to wit: Considering that preliminary injunction is a provisional remedy which may be granted at any time after 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 the instant petition having been rendered moot and academic. The petitioner likewise contends that the appellate court unduly delayed the resolution of her motion for reconsideration. and BJ PRODUCTIONS. INC. SO ORDERED. Moreover. Nonetheless.. With costs against the petitioner. JR.
. (italics supplied) La Vista categorically pronounced that the issuance of a final injunction renders any question on the preliminary injunctive order moot and academic despite the fact that the decision granting a final injunction is pending appeal. An injunction issued by the trial court after it has already made a clear pronouncement as to the plaintiff's right thereto. and CASEY FRANCISCO. it is well-settled that non-observance of the period for deciding cases or their incidents does not render such judgments ineffective or void. Rule 16 of the Revised Rules of Civil Procedure. as regards the proceedings in CA-G. the court may require the respondents to file their comment to. 108946 January 28. The dispositive portion of said decision held that the petitioner does not have trademark rights on the name and container of the beauty cream product. Before giving due course thereto. notwithstanding the fact that the decision rendered is not yet final xxx. the provisions of Section 2. FELIPE MEDINA. Being an ancillary remedy.. consequently. 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. a decision denying the applicant-plaintiff's right to a final injunction. the trial court having appreciated the evidence presented.nêt Finally. 1993. The merit of the main case having been already determined in favor of the applicant. We disagree. we find that the said issue has likewise been rendered moot and academic by our ruling that she has no right over the trademark and.R. v. Rule 56. The said decision on the merits of the trial court rendered the issuance of the writ of a preliminary injunction moot and academic notwithstanding the fact that the same has been appealed in the Court of Appeals.
entitled "Gabriel Zosa. however. Drilon reversed the Assistant City Prosecutor's findings and directed him to move for the dismissal of the case against private respondents. 4. Upon complaint of petitioners. dated December 3. 1992. The public respondent gravely abused his discretion amounting to lack of jurisdiction when he arrogated unto himself the determination of what is copyrightable — an issue which is exclusively within the jurisdiction of the regional trial court to assess in a proper proceeding. IXL. of Rhoda and Me. 1992. William Esposo. 1971. dated July 19. 49. v. Petitioners contend that: 1. but his motion denied by respondent Secretary of Justice on December 3. City Prosecutor of Quezon City and Francisco Joaquin. Zosa. M922. 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. while watching television. Rule 112. Meanwhile. he shall prepare the resolution and
. On June 28. Q-92-27854. despite the fact that private respondents never raised the same as a controverted issue. an information for violation of P. 1991. 1991. In a letter. On July 14. Inc. president and general manager of IXL.. Duty of investigating fiscal. 1991. private respondent Zosa sought a review of the resolution of the Assistant City Prosecutor before the Department of Justice. petitioner BJPI submitted to the National Library an addendum to its certificate of copyright specifying the show's format and style of presentation. However. 1973. 2 He is. 2. (BJPI) is the holder/grantee of Certificate of Copyright No. provides: Sec. Jr. however. The public respondent gravely abused his discretion amounting to lack of jurisdiction — when he invoked non-presentation of the master tape as being fatal to the existence of probable cause to prove infringement. private respondent Zosa apologized to petitioner Joaquin and requested a meeting to discuss a possible settlement. continued airing It's a Date. Petitioners seek to annul the resolution of the Department of Justice. A preliminary investigation falls under the authority of the state prosecutor who is given by law the power to direct and control criminal actions. dated August 12. it was error for the Secretary of Justice to reverse the investigating prosecutor's finding of probable cause on this ground. 1991. prompting petitioner Joaquin to send a second letter on July 25. respondent Secretary of Justice Franklin M.MENDOZA. petitioner Francisco Joaquin. denying petitioner Joaquin's motion for reconsideration. Hence. he wrote a letter to private respondent Gabriel M. Inc. this petition. and Casey Francisco. They contend that 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. subject to the control of the Secretary of Justice. Jr. informing Zosa that BJPI had a copyright to Rhoda and Me and demanding that IXL discontinue airing It's a Date. Non-Assignment of Error. president of BJPI. Petitioner BJ Productions. 1991 in which he reiterated his demand and warned that. he would endorse the matter to his attorneys for proper legal action. in the Regional Trial Court of Quezon City where it was docketed as Criminal Case No. 92-27854 and assigned to Branch 104 thereof. 1992.: This is a petition for certiorari. dated January 28.. (IXL).D. §4 of the Revised Rules of Criminal Procedure.D. On August 12. 1 Petitioner Joaquin filed a motion for reconsideration. in Criminal Case No. Felipe Medina. et al. which was produced by IXL Productions. namely. No. J. On July 18. 49 was filed against private respondent Zosa together with certain officers of RPN Channel 9. therefore. Thus. a dating game show aired from 1970 to 1977. No. Both public and private respondents maintain that petitioners failed to establish the existence of probable cause due to their failure to present the copyrighted master videotape of Rhoda and Me. if IXL did not comply. saw on RPN Channel 9 an episode of It's a Date." and its resolution. 1992. — If the investigating fiscal finds cause to hold the respondent for trial. 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.
an authorized officer. 49 . Opinion of the Secretary of Justice Petitioners contend. given in support of the application for the search warrant. his findings are not subject to review unless shown to have been made with grave abuse. has personally examined the complainant and his witnesses. 49. Ideas. in the opinion of this Office.corresponding information. he did not commit any grave error. of probable cause and is not confined to the issues raised by the parties during preliminary investigation. He must make his own finding. 4 on which respondent Secretary of Justice relied in reversing the resolution of the investigating prosecutor. the parties presented sufficient evidence which clearly establish "linkage between the copyright show "Rhoda and Me" and the infringing TV show "It's a Date. This does not. the trial court lifted the search warrants it
. a non-copyrightable material. without conducting another preliminary investigation. however. immediately informing the parties of said action. that there is reasonable ground to believe that a crime has been committed and that the accused is probably guilty thereof. concepts. that the accused was informed of the complaint and of the evidence submitted against him and that he was given an opportunity to submit controverting evidence. in whole or in part. is inapplicable to the case at bar because in the present case. The trial court found that the affidavits of NBI agents." 5 The case of 20th Century Fox Film Corporation involved raids conducted on various videotape outlets allegedlly selling or renting out "pirated" videotapes. The latter shall take appropriate action thereon ten (10) days from receipt thereof. the latter may. that the determination of the question whether the format or mechanics of a show is entitled to copyright protection is for the court. 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. They assail the following portion of the resolution of the respondent Secretary of Justice: [T]he essence of copyright infringement is the copying. No complaint or information may be filed or dismissed by an investigating fiscal without the prior written authority or approval of the provincial or city fiscal or chief state prosecutor. 3 (Emphasis added. Apart from the manner in which it is actually expressed. he shall recommend dismissal of the complaint. Presentation of Master Tape Petitioners claim that respondent Secretary of Justice gravely abused his discretion in ruling that the master videotape should have been predented in order to determine whether there was probable cause for copyright infringement. or as shown by the record. Moreover. the Secretary of Justice is not precluded from considering errors. If upon petition by a proper party. to make. and not the Secretary of Justice.) It is indeed true that the question whether the format or mechanics of petitioners television show is entitled to copyright protection is a legal question for the court to make. formats. he shall direct the fiscal concerned to file the corresponding information without conducting another preliminary investigation or to dismiss or move for dismissal of the complaint or information. preclude respondent Secretary of Justice from making a preliminary determination of this question in resolving whether there is probable cause for filing the case in court. Otherwise. by himself. No. although unassigned. of copyrightable materials as defined and enumerated in Section 2 of PD. the Secretary of Justice reverses the resolution of the provincial or city fiscal or chief state prosecutor. Accordingly. Court of Appeals . He shall certify under oath that he. In either case. the idea of a dating game show is. or schemes in their abstract form clearly do not fall within the class of works or materials susceptible of copyright registration as provided in PD. file the corresponding information against the respondent or direct any other assistant fiscal or state prosecutor to do so. however. No. In doing so in this case. Where the investigating assistant fiscal recommends the dismissal of the case but his findings are reversed by the provincial or city fiscal or chief state prosecutor on the ground that a probable cause exists. In reviewing resolutions of prosecutors. however. were insufficient without the master tape. for the purpose of determining whether there is probable cause for filing cases in court. They contend that 20th Century Fox Film Corporation v.
This linkage of the copyrighted films to the pirated films must be established to satisfy the requirements of probable cause. 49. This ruling was qualified in the later case of Columbia Pictures. Searcher asks a question to be answered by each of the searchees. same
b. 8 In the case at bar during the preliminary investigation. while three (3) unmarried participants of the other gender are on the other side of the divider. This arrangement is done to ensure that the searcher does not see the searchees. 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. The essence of a copyright infringement is the similarity or at least substantial similarity of the purported pirated works to the copyrighted work. The major concepts of both shows is the same. The purpose is to determine who among "IT'S A DATE" Set 1 a. . same
. both single.had previously issued against the defendants. Inc. The court cannot presume that duplicate or copied tapes were necessarily reproduced from master tapes that it owns. the substance of the television productions complainant's "RHODA AND ME" and Zosa's "IT'S A DATE" is that two matches are made between a male and a female.D. Hence. was necessary for the validity of search warrants against those who have in their possession the pirated films. petitioners and private respondents presented written descriptions of the formats of their respective televisions shows. b. the supposed pronunciamento in said case regarding the necessity for the presentation of the master tapes of the copyrighted films for the validity of search warrants should at most be understood to merely serve as a guidepost in determining the existence of probable cause in copyright infringement cases where there is doubt as to the true nexus between the master tape and the printed copies. Mere allegations as to the existence of the copyrighted films cannot serve as basis for the issuance of a search warrant. Court of Appeals 7 in which it was held: In fine. the applicant must present to the court the copyrighted films to compare them with the purchased evidence of the video tapes allegedly pirated to determine whether the latter is an unauthorized reproduction of the former. and the two couples are treated to a night or two of dining and/or dancing at the expense of the show. An objective and careful reading of the decision in said case could lead to no other conclusion than that said directive was hardly intended to be a sweeping and inflexible requirement in all or similar copyright infringement cases. on the basis of which the investigating prosecutor ruled: As may [be] gleaned from the evidence on record. That there is an infringement on the copyright of the show "RHODA AND ME" both in content and in the execution of the video presentation are established because respondent's "IT'S A DATE" is practically an exact copy of complainant's "RHODA AND ME" because of substantial similarities as follows. . v. On petition for review. Unmarried participant of one gender (searcher) appears on one side of a divider. 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. 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 films were allegedly copied. Any difference appear mere variations of the major concepts. to wit: RHODA AND ME Set 1 a.
(G) Works of drawing. d. The rights granted by this Decree shall. or similar methods. (I) Original ornamental designs or models for articles of manufacture. (F) Musical compositions. 10 otherwise known as the DECREE ON INTELLECTUAL PROPERTY. (E) Dramatic or dramatico-musical compositions. from the moment of creation. (K) Drawings or plastic works of a scientific or technical character. Section 2 of P.the searchees is the most compatible with the searcher. Set 2 Same as above with the genders of the searcher and searchees interchanged. To begin with the format of a show is not copyrightable. subsist with respect to any of the following classes of works: (A) Books. (C) Lectures. same d.D. (J) Maps. painting. 49. plans. including composite and cyclopedic works. Such being the case. and box wraps. sermons. sculpture. and other works of art. 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. lithography. addresses. adaptations. architecture. (H) Reproductions of a work of art. Searcher speculates on the match to the searchee. c. translations. Selection is made by the use of compute (sic) methods. including pamphlets and newspapers. manuscripts. with or without words. they did not have to produce the master tape. which shall be protected as provided in Section 8 of this Decree. pictorial illustrations advertising copies.
. whether or not patentable. and gazetteers: (B) Periodicals. (M) Cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings. choreographic works and entertainments in dumb shows. directories. to wit: Sec. Selection is based on the answer of the Searchees. musical or artistic works or of works of the Philippine government as herein defined. 9
c. enumerates the classes of work entitled to copyright protection. (I) Photographic works and works produced by a process analogous to photography lantern slides. (P) Dramatizations. arrangements and other alterations of literary. 2. and other works of applied art. models or designs for works of art. engraving. sketches. or by the way questions are answered. (O) Prints. the acting form of which is fixed in writing or otherwise. (D) Letters. abridgements. No. and charts. (N) Computer programs.
Set 2 same
Petitioners assert that the format of Rhoda and Me is a product of ingenuity and skill and is thus entitled to copyright protection. labels tags. dissertations prepared for oral delivery.
news of the day and other miscellaneous facts having the character of mere items of press information. and not simply a preexisting right regulated by the statute. 49. no protection shall extend. discovery or mere data as such. refers to finished works and not to concepts. concept. Mere description by words of the general format of the two dating game shows is insufficient. video and audio. As aptly observed by respondent Secretary of Justice: A television show includes more than mere words can describe because it involves a whole spectrum of visuals and effects. 49. . . regardless of the form in which it is described. the rights are only such as the statute confers. 13 Regardless of the historical viewpoint. §2. The copyright does not extend to the general concept or format of its dating game show.D. 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 . as falling within the class of works mentioned in P. scholarly. — Notwithstanding the provisions of Sections 172 and 173. or any official text of a legislative. in enumerating what are subject to copyright. in the strict sense of the term. 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 constitute intellectual creations. explained.A. WHEREFORE. Unprotected Subject Matter. copyright in published works is purely a statutory creation. to wit: Cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings. explained. 12 Since . as well as any official translation thereof. the same to be protected as such in accordance with Section 8 of this Decree. What then is the subject matter of petitioners' copyright? This Court is of the opinion that petitioner BJPI's copyright covers audio-visual recordings of each episode of Rhoda and Me. a copyright may be obtained only for a work falling within the statutory enumeration or description. 175. 14 P. No. by the very nature of the subject of petitioner BJPI's copyright. procedure. is purely a statutory right. The copyright does not extend to an idea. It is a new or independent right granted by the statute. This provision is substantially the same as §172 of the INTELLECTUAL PROPERTY CODE OF PHILIPPINES (R. system. Accordingly. the presentation of the master videotape in evidence was indispensable to the determination of the existence of probable cause.(Q) Collections of literary.D. 15 Thus. procedure. or discovery. the investigating prosecutor should have the opportunity to compare the videotapes of the two shows. method of operation. the petition is hereby DISMISSED
. even if they are expressed. 11 The format or mechanics of a television show is not included in the list of protected works in §2 of P. such that no similarity or dissimilarity may be found by merely describing the general copyright/format of both dating game shows. system. Copyright. 49. (R) Other literary. 8293). the new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES provides: Sec. administrative or legal nature. . . the protection afforded by the law cannot be extended to cover them. scholarly. For this reason. principle. Being a statutory grant.D. process. illustrated or embodied in a work. and may be obtained and enjoyed only with respect to the subjects and by the persons and on terms and conditions specified in the statute. concept. . No. principle. under this law. to any idea. method or operation. §2(M). illustrated. . scientific and artistic works. No. or embodied in such work.