G.R. No.
148222 August 15, 2003 Upon receipt of the demand letter, SMI suspended the leasing of two hundred twenty-four (224) light
PEARL & DEAN (PHIL.), INCORPORATED, Petitioner,
vs. SHOEMART, INCORPORATED, and NORTH EDSA MARKETING, INCORPORATED,
Respondents.
DECISION
CORONA, J.:
In the instant petition for review on certiorari under Rule 45 of the Rules of Court, petitioner Pearl &
Dean (Phil.) Inc. (P & D) assails the May 22, 2001 decision1 of the Court of Appeals reversing the
October 31, 1996 decision2 of the Regional Trial Court of Makati, Branch 133, in Civil Case No. 92-516
which declared private respondents Shoemart Inc. (SMI) and North Edsa Marketing Inc. (NEMI) liable
for infringement of trademark and copyright, and unfair competition.
FACTUAL ANTECEDENTS
The May 22, 2001 decision of the Court of Appeals3 contained a summary of this dispute:
"Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of
advertising display units simply referred to as light boxes. These units utilize specially printed posters
sandwiched between plastic sheets and illuminated with back lights. Pearl and Dean was able to
secure a Certificate of Copyright Registration dated January 20, 1981 over these illuminated display
units. The advertising light boxes were marketed under the trademark "Poster Ads". The application for
registration of the trademark was filed with the Bureau of Patents, Trademarks and Technology
Transfer on June 20, 1983, but was approved only on September 12, 1988, per Registration No.
41165. From 1981 to about 1988, Pearl and Dean employed the services of Metro Industrial Services
to manufacture its advertising displays.
Sometime in 1985, Pearl and Dean negotiated with defendant-appellant Shoemart, Inc. (SMI) for the
lease and installation of the light boxes in SM City North Edsa. Since SM City North Edsa was under
construction at that time, SMI offered as an alternative, SM Makati and SM Cubao, to which Pearl and
Dean agreed. On September 11, 1985, Pearl and Dean’s General Manager, Rodolfo Vergara,
submitted for signature the contracts covering SM Cubao and SM Makati to SMI’s Advertising
Promotions and Publicity Division Manager, Ramonlito Abano. Only the contract for SM Makati,
however, was returned signed. On October 4, 1985, Vergara wrote Abano inquiring about the other
contract and reminding him that their agreement for installation of light boxes was not only for its SM
Makati branch, but also for SM Cubao. SMI did not bother to reply.
Instead, in a letter dated January 14, 1986, SMI’s house counsel informed Pearl and Dean that it was
rescinding the contract for SM Makati due to non-performance of the terms thereof. In his reply dated
February 17, 1986, Vergara protested the unilateral action of SMI, saying it was without basis. In the
same letter, he pushed for the signing of the contract for SM Cubao.
Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean to
fabricate its display units, offered to construct light boxes for Shoemart’s chain of stores. SMI approved
the proposal and ten (10) light boxes were subsequently fabricated by Metro Industrial for SMI. After its
contract with Metro Industrial was terminated, SMI engaged the services of EYD Rainbow Advertising
Corporation to make the light boxes. Some 300 units were fabricated in 1991. These were delivered on
a staggered basis and installed at SM Megamall and SM City.
Sometime in 1989, Pearl and Dean, received reports that exact copies of its light boxes were installed
at SM City and in the fastfood section of SM Cubao. Upon investigation, Pearl and Dean found out that
aside from the two (2) reported SM branches, light boxes similar to those it manufactures were also
installed in two (2) other SM stores. It further discovered that defendant-appellant North Edsa
Marketing Inc. (NEMI), through its marketing arm, Prime Spots Marketing Services, was set up
primarily to sell advertising space in lighted display units located in SMI’s different branches. Pearl and
Dean noted that NEMI is a sister company of SMI.
In the light of its discoveries, Pearl and Dean sent a letter dated December 11, 1991 to both SMI and
NEMI enjoining them to cease using the subject light boxes and to remove the same from SMI’s
establishments. It also demanded the discontinued use of the trademark "Poster Ads," and the
payment to Pearl and Dean of compensatory damages in the amount of Twenty Million Pesos
(P20,000,000.00).
boxes and NEMI took down its advertisements for "Poster Ads" from the lighted display units in SMI’s
stores. Claiming that both SMI and NEMI failed to meet all its demands, Pearl and Dean filed this
instant case for infringement of trademark and copyright, unfair competition and damages.
In denying the charges hurled against it, SMI maintained that it independently developed its poster
panels using commonly known techniques and available technology, without notice of or reference to
Pearl and Dean’s copyright. SMI noted that the registration of the mark "Poster Ads" was only for
stationeries such as letterheads, envelopes, and the like. Besides, according to SMI, the word "Poster
Ads" is a generic term which cannot be appropriated as a trademark, and, as such, registration of such
mark is invalid. 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, in violation of Section 27 of
P.D. 49. 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. On this basis, SMI, aside from praying for the dismissal of the
case, also counterclaimed for moral, actual and exemplary damages and for the cancellation of Pearl
and Dean’s Certification of Copyright Registration No. PD-R-2558 dated January 20, 1981 and
Certificate of Trademark Registration No. 4165 dated September 12, 1988.
NEMI, for its part, denied having manufactured, installed or used any advertising display units, nor
having engaged in the business of advertising. It repleaded SMI’s averments, admissions and denials
and prayed for similar reliefs and counterclaims as SMI."
The RTC of Makati City decided in favor of P & D:
Wherefore, defendants SMI and NEMI are found jointly and severally liable for infringement of
copyright under Section 2 of PD 49, as amended, and infringement of trademark under Section 22 of
RA No. 166, as amended, and are hereby penalized under Section 28 of PD 49, as amended, and
Sections 23 and 24 of RA 166, as amended. Accordingly, defendants are hereby directed:
(1) to pay plaintiff the following damages:
(a) actual damages - ₱16,600,000.00,
representing profits
derived by defendants
as a result of infringe-
ment of plaintiff’s copyright
from 1991 to 1992
(b) moral damages - ₱1,000.000.00
(c) exemplary damages - ₱1,000,000.00
(d) attorney’s fees - ₱1,000,000.00
plus
(e) costs of suit;
(2) to deliver, under oath, for impounding in the National Library, all light boxes of SMI which were
fabricated by Metro Industrial Services and EYD Rainbow Advertising Corporation;
(3) to deliver, under oath, to the National Library, all filler-posters using the trademark "Poster Ads", for
destruction; and
(4) to permanently refrain from infringing the copyright on plaintiff’s light boxes and its trademark
"Poster Ads".
Defendants’ counterclaims are hereby ordered dismissed for lack of merit. SO ORDERED.4
On appeal, however, the Court of Appeals reversed the trial court:
Since the light boxes cannot, by any stretch of the imagination, be considered as either prints, pictorial
illustrations, advertising copies, labels, tags or box wraps, to be properly classified as a copyrightable
class "O" work, we have to agree with SMI when it posited that what was copyrighted were the
technical drawings only, and not the light boxes themselves, thus:
42. When a drawing is technical and depicts a utilitarian object, a copyright over the drawings like
plaintiff-appellant’s will not extend to the actual object. It has so been held under jurisprudence, of
which the leading case is Baker vs. Selden (101 U.S. 841 (1879). In that case, 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. Included as part of the book were blank forms and
illustrations consisting of ruled lines and headings, specially designed for use in connection with the
system explained in the work. These forms showed the entire operation of a day or a week or a month
on a single page, or on two pages following each other. The defendant Baker then produced forms
which were similar to the forms illustrated in Selden’s copyrighted books. The Court held that
exclusivity to the actual forms is not extended by a copyright. The reason was that "to grant a
monopoly in the underlying art when no examination of its novelty has ever been made would be a
surprise and a fraud upon the public; that is the province of letters patent, not of copyright." And that is
precisely the point. No doubt aware that its alleged original design would never pass the rigorous
examination of a patent application, 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.
The principle in Baker vs. Selden was likewise applied in Muller vs. Triborough Bridge Authority [43 F.
Supp. 298 (S.D.N.Y. 1942)]. In this case, Muller had obtained a copyright over an unpublished drawing
entitled "Bridge Approach – the drawing showed a novel bridge approach to unsnarl traffic congestion".
The defendant constructed a bridge approach which was alleged to be an infringement of the new
design illustrated in plaintiff’s drawings. 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. It does not prevent one from using
the drawings to construct the object portrayed in the drawing.
In two other cases, Imperial Homes Corp. v. Lamont, 458 F. 2d 895 and Scholtz Homes, Inc. v.
Maddox, 379 F. 2d 84, it was held that there is no copyright infringement when one who, without being
authorized, uses a copyrighted architectural plan to construct a structure. This is because the copyright
does not extend to the structures themselves.
In fine, we cannot find SMI liable for infringing Pearl and Dean’s copyright over the technical drawings
of the latter’s advertising display units.
xxx xxx xxx
The Supreme Court trenchantly held in Faberge, Incorporated vs. Intermediate Appellate Court that 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,
as amended, otherwise known as the Trademark Law, which reads:
SEC. 20. Certification of registration prima facie evidence of validity.- A certificate of registration of a
mark or trade-name shall be prima facie evidence of the validity of the registration, the registrant’s
ownership of the mark or trade-name, and of the registrant’s exclusive right to use the same in
connection with the goods, business or services specified in the certificate, subject to any conditions
and limitations stated therein." (underscoring supplied)
The records show that on June 20, 1983, Pearl and Dean applied for the registration of the trademark
"Poster Ads" with the Bureau of Patents, Trademarks, and Technology Transfer. Said trademark was
recorded in the Principal Register on September 12, 1988 under Registration No. 41165 covering the
following products: stationeries such as letterheads, envelopes and calling cards and newsletters.
With this as factual backdrop, we see no legal basis to the finding of liability on the part of the
defendants-appellants for their use of the words "Poster Ads", in the advertising display units in suit.
Jurisprudence 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." The
Supreme Court further emphasized the restrictive meaning of Section 20 when it stated, through
Justice Conrado V. Sanchez, that:
Really, if the certificate of registration were to be deemed as including goods not specified therein, then
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. We believe that such omnibus registration is not contemplated by our Trademark Law.
While we do not discount the striking similarity between Pearl and Dean’s registered trademark and
defendants-appellants’ "Poster Ads" design, as well as the parallel use by which said words were used
in the parties’ respective advertising copies, we cannot find defendants-appellants liable for
infringement of trademark. "Poster Ads" was registered by Pearl and Dean for specific use in its
stationeries, in contrast to defendants-appellants who used the same words in their advertising display
units. Why Pearl and Dean limited the use of its trademark to stationeries is simply beyond us. But,
having already done so, it must stand by the consequence of the registration which it had caused.
xxx xxx xxx
We are constrained to adopt the view of defendants-appellants that the words "Poster Ads" are a
simple contraction of the generic term poster advertising. In the absence of any convincing proof that
"Poster Ads" has acquired a secondary meaning in this jurisdiction, we find that Pearl and Dean’s
exclusive right to the use of "Poster Ads" is limited to what is written in its certificate of registration,
namely, stationeries.
Defendants-appellants cannot thus be held liable for infringement of the trademark "Poster Ads".
There being no finding of either copyright or trademark infringement on the part of SMI and NEMI, the
monetary award granted by the lower court to Pearl and Dean has no leg to stand on.
xxx xxx xxx
WHEREFORE, premises considered, the assailed decision is REVERSED and SET ASIDE, and
another is rendered DISMISSING the complaint and counterclaims in the above-entitled case for lack
of merit.5
Dissatisfied with the above decision, petitioner P & D filed the instant petition assigning the following
errors for the Court’s consideration:
A. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO COPYRIGHT
INFRINGEMENT WAS COMMITTED BY RESPONDENTS SM AND NEMI;
B. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO INFRINGEMENT OF
PEARL & DEAN’S TRADEMARK "POSTER ADS" WAS COMMITTED BY RESPONDENTS SM AND
NEMI;
C. THE HONORABLE COURT OF APPEALS ERRED IN DISMISSING THE AWARD OF THE TRIAL
COURT, DESPITE THE LATTER’S FINDING, NOT DISPUTED BY THE HONORABLE COURT OF
APPEALS, THAT SM WAS GUILTY OF BAD FAITH IN ITS NEGOTIATION OF ADVERTISING
CONTRACTS WITH PEARL & DEAN.
D. THE HONORABLE COURT OF APPEALS ERRED IN NOT HOLDING RESPONDENTS SM AND
NEMI LIABLE TO PEARL & DEAN FOR ACTUAL, MORAL & EXEMPLARY DAMAGES, ATTORNEY’S
FEES AND COSTS OF SUIT.6
ISSUES
In resolving this very interesting case, we are challenged once again to put into proper perspective four
main concerns of intellectual property law — patents, copyrights, trademarks and unfair competition
arising from infringement of any of the first three. We shall focus then on the following issues:
(1) if the engineering or technical drawings of an advertising display unit (light box) are granted
copyright protection (copyright certificate of registration) by the National Library, 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, 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. Obviously,
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. In ruling that there was
no copyright infringement, the Court of Appeals held that the copyright was limited to the drawings
alone and not to the light box itself. We agree with the appellate court.
First, petitioner’s application for a copyright certificate — as well as Copyright Certificate No. PD-
R2588 issued by the National Library on January 20, 1981 — clearly stated that it was for a class "O"
work under Section 2 (O) of PD 49 (The Intellectual Property Decree) which was the statute then
prevailing. Said Section 2 expressly enumerated the works subject to copyright:
SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to
any of the following works:
xxx xxx xxx
(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps;
xxx xxx xxx
Although petitioner’s copyright certificate was entitled "Advertising Display Units" (which depicted the
box-type electrical devices), its claim of copyright infringement cannot be sustained.
Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant, the
rights are limited to what the statute confers. It may be obtained and enjoyed only with respect to the
subjects and by the persons, and on terms and conditions specified in the statute.7 Accordingly, it can
cover only the works falling within the statutory enumeration or description.8
P & D secured its copyright under the classification class "O" work. This being so, petitioner’s 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, pictorial illustrations, advertising copies, labels, tags and box
wraps." Stated otherwise, even as we find that P & D indeed owned a valid copyright, the same could
have referred only to the technical drawings within the category of "pictorial illustrations." It could not
have possibly stretched out to include the underlying light box. The strict application9 of the law’s
enumeration in Section 2 prevents us from giving petitioner even a little leeway, that is, even if its
copyright certificate was entitled "Advertising Display Units." What the law does not include, it
excludes, and for the good reason: the light box was not a literary or artistic piece which could be
copyrighted under the copyright law. And no less clearly, neither could the lack of statutory authority to
make the light box copyrightable be remedied by the simplistic act of entitling the copyright certificate
issued by the National Library as "Advertising Display Units."
In fine, if SMI and NEMI reprinted P & D’s technical drawings for sale to the public without license from
P & D, then no doubt they would have been guilty of copyright infringement. But this was not the case.
SMI’s 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, for leasing
out to different advertisers. Was this an infringement of petitioner’s copyright over the technical
drawings? We do not think so.
During the trial, 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."10 Obviously, there appeared to be some
confusion regarding what ought or ought not to be the proper subjects of copyrights, patents and
trademarks. In the leading case of Kho vs. Court of Appeals,11 we ruled that these three legal rights
are completely distinct and separate from one another, and the protection afforded by one cannot be
used interchangeably to cover items or works that exclusively pertain to the others:
Trademark, copyright and patents are different intellectual property rights that cannot be interchanged
with one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or marked container of goods. In
relation thereto, a trade name means the name or designation identifying or distinguishing an
enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic works which are
original intellectual creations in the literary and artistic domain protected from the moment of their
creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any
field of human activity which is new, involves an inventive step and is industrially applicable.
ON THE ISSUE OF PATENT INFRINGEMENT
This brings us to the next point: if, despite its manufacture and commercial use of the light boxes
without license from petitioner, private respondents cannot be held legally liable for infringement of P &
D’s copyright over its technical drawings of the said light boxes, should they be liable instead for
infringement of patent? We do not think so either.
For some reason or another, petitioner never secured a patent for the light boxes. It therefore acquired
no patent rights which could have protected its invention, if in fact it really was. And because it had no
patent, petitioner could not legally prevent anyone from manufacturing or commercially using the
contraption. In Creser Precision Systems, Inc. vs. Court of Appeals,12 we held that "there can be no
infringement of a patent until a patent has been issued, since whatever right one has to the invention
covered by the patent arises alone from the grant of patent. x x x (A)n inventor has no common law
right to a monopoly of his invention. He has the right to make use of and vend his invention, but if he
voluntarily discloses it, such as by offering it for sale, the world is free to copy and use it with impunity.
A patent, however, gives the inventor the right to exclude all others. As a patentee, he has the
exclusive right of making, selling or using the invention.13 On the assumption that petitioner’s
advertising units were patentable inventions, petitioner revealed them fully to the public by submitting
the engineering drawings thereof to the National Library.
To be able to effectively and legally preclude others from copying and profiting from the invention, a
patent is a primordial requirement. No patent, no protection. The ultimate goal of a patent system is to
bring new designs and technologies into the public domain through disclosure.14 Ideas, once
disclosed to the public without the protection of a valid patent, are subject to appropriation without
significant restraint.15
On one side of the coin is the public which will benefit from new ideas; on the other are the inventors
who must be protected. As held in Bauer & Cie vs. O’Donnel,16 "The act secured to the inventor the
exclusive right to make use, and vend the thing patented, and consequently to prevent others from
exercising like privileges without the consent of the patentee. 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 was intended to secure to the public, after the lapse of the
exclusive privileges granted the benefit of such inventions and improvements."
The law attempts to strike an ideal balance between the two interests:
"(The p)atent system thus embodies a carefully crafted bargain for encouraging the creation and
disclosure of new useful and non-obvious advances in technology and design, in return for the
exclusive right to practice the invention for a number of years. The inventor may keep his invention
secret and reap its fruits indefinitely. In consideration of its disclosure and the consequent benefit to the
community, the patent is granted. An exclusive enjoyment is guaranteed him for 17 years, but upon the
expiration of that period, the knowledge of the invention inures to the people, who are thus enabled to
practice it and profit by its use."17
The patent law has a three-fold purpose: "first, patent law seeks to foster and reward invention;
second, it promotes disclosures of inventions to stimulate further innovation and to permit the public to
practice the invention once the patent expires; third, the stringent requirements for patent protection
seek to ensure that ideas in the public domain remain there for the free use of the public."18
It is only after an exhaustive examination by the patent office that a patent is issued. Such an in-depth
investigation is required because "in rewarding a useful invention, the rights and welfare of the
community must be fairly dealt with and effectively guarded. To that end, the prerequisites to obtaining
a patent are strictly observed and when a patent is issued, the limitations on its exercise are equally
strictly enforced. To begin with, a genuine invention or discovery must be demonstrated lest in the
constant demand for new appliances, the heavy hand of tribute be laid on each slight technological
advance in art."19
There is no such scrutiny in the case of copyrights nor any notice published before its grant to the
effect that a person is claiming the creation of a work. The law confers the copyright from the moment
of creation20 and the copyright certificate is issued upon registration with the National Library of a
sworn ex-parte claim of creation.

Therefore, not having gone through the arduous examination for patents, the petitioner cannot exclude
others from the manufacture, sale or commercial use of the light boxes on the sole basis of its
copyright certificate over the technical drawings.
Stated otherwise, what petitioner seeks is exclusivity without any opportunity for the patent office (IPO)
to scrutinize the light box’s eligibility as a patentable invention. The irony here is that, had petitioner
secured a patent instead, its exclusivity would have been for 17 years only. But through the simplified
procedure of copyright-registration with the National Library — without undergoing the rigor of
defending the patentability of its invention before the IPO and the public — the petitioner would be
protected for 50 years. This situation could not have been the intention of the law.
In the oft-cited case of Baker vs. Selden21 , the United States Supreme Court held that only the
expression of an idea is protected by copyright, not the idea itself. In that case, the plaintiff held the
copyright of a book which expounded on a new accounting system he had developed. The publication
illustrated blank forms of ledgers utilized in such a system. The defendant reproduced forms similar to
those illustrated in the plaintiff’s copyrighted book. The US Supreme Court ruled that:
"There is no doubt that a work on the subject of book-keeping, though only explanatory of well known
systems, may be the subject of a copyright; but, then, it is claimed only as a book. x x x. But there is a
clear distinction between the books, as such, and the art, which it is, intended to illustrate. The mere
statement of the proposition is so evident that it requires hardly any argument to support it. The same
distinction may be predicated of every other art as well as that of bookkeeping. A treatise on the
composition and use of medicines, be they old or new; on the construction and use of ploughs or
watches or churns; or on the mixture and application of colors for painting or dyeing; or on the mode of
drawing lines to produce the effect of perspective, would be the subject of copyright; but no one would
contend that the copyright of the treatise would give the exclusive right to the art or manufacture
described therein. The copyright of the book, if not pirated from other works, would be valid without
regard to the novelty or want of novelty of its subject matter. The novelty of the art or thing described or
explained has nothing to do with the validity of the copyright. To give to the author of the book an
exclusive property in the art described therein, when no examination of its novelty has ever been
officially made, would be a surprise and a fraud upon the public. That is the province of letters patent,
not of copyright. The claim to an invention of discovery of an art or manufacture must be subjected to
the examination of the Patent Office before an exclusive right therein can be obtained; and a patent
from the government can only secure it.
The difference between the two things, letters patent and copyright, may be illustrated by reference to
the subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great
value in the healing art. If the discoverer writes and publishes a book on the subject (as regular
physicians generally do), he gains no exclusive right to the manufacture and sale of the medicine; he
gives that to the public. If he desires to acquire such exclusive right, he must obtain a patent for the
mixture as a new art, manufacture or composition of matter. He may copyright his book, if he pleases;
but that only secures to him the exclusive right of printing and publishing his book. So of all other
inventions or discoveries.
The copyright of a book on perspective, no matter how many drawings and illustrations it may contain,
gives no exclusive right to the modes of drawing described, though they may never have been known
or used before. By publishing the book without getting a patent for the art, the latter is given to the
public.
xxx
Now, whilst no one has a right to print or publish his book, or any material part thereof, as a book
intended to convey instruction in the art, any person may practice and use the art itself which he has
described and illustrated therein. The use of the art is a totally different thing from a publication of the
book explaining it. The copyright of a book on bookkeeping cannot secure the exclusive right to make,
sell and use account books prepared upon the plan set forth in such book. Whether the art might or
might not have been patented, is a question, which is not before us. It was not patented, and is open
and free to the use of the public. And, of course, in using the art, the ruled lines and headings of
accounts must necessarily be used as incident to it.
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, which have been made the
subject of copyright. In describing the art, the illustrations and diagrams employed happened to
correspond more closely than usual with the actual work performed by the operator who uses the art. x
x x The description of the art in a book, though entitled to the benefit of copyright, lays no foundation
for an exclusive claim to the art itself. The object of the one is explanation; the object of the other is
use. The former may be secured by copyright. The latter can only be secured, if it can be secured at
all, by letters patent." (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." P & D was able to secure a trademark certificate for it, but
one where the goods specified were "stationeries such as letterheads, envelopes, calling cards and
newsletters."22 Petitioner admitted it did not commercially engage in or market these goods. On the
contrary, it dealt in electrically operated backlit advertising units and the sale of advertising spaces
thereon, which, however, were not at all specified in the trademark certificate.
Under the circumstances, the Court of Appeals correctly cited Faberge Inc. vs. Intermediate Appellate
Court,23 where we, invoking Section 20 of the old Trademark Law, 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, subject to any conditions and limitations
specified in the certificate x x x. 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."24 Faberge, Inc. was correct and was in fact recently reiterated in Canon Kabushiki Kaisha
vs. Court of Appeals.25
Assuming arguendo that "Poster Ads" could validly qualify as a trademark, the failure of P & D to
secure 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.1âwphi1
ON THE ISSUE OF UNFAIR COMPETITION
If at all, the cause of action should have been for unfair competition, a situation which was possible
even if P & D had no registration.26 However, while the petitioner’s complaint in the RTC also cited
unfair competition, the trial court did not find private respondents liable therefor. Petitioner did not
appeal this particular point; hence, it cannot now revive its claim of unfair competition.
But even disregarding procedural issues, we nevertheless cannot hold respondents guilty of unfair
competition.
By the nature of things, there can be no unfair competition under the law on copyrights although it is
applicable to disputes over the use of trademarks. Even a name or phrase incapable of appropriation
as a trademark or tradename may, 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), be
entitled to protection against unfair competition.27 In this case, there was no evidence that P & D’s use
of "Poster Ads" was distinctive or well-known. As noted by the Court of Appeals, petitioner’s expert
witnesses himself had testified that " ‘Poster Ads’ was too generic a name. So it was difficult to identify
it with any company, honestly speaking."28 This crucial admission by its own expert witness that
"Poster Ads" could not be associated with P & D showed that, in the mind of the public, the goods and
services carrying the trademark "Poster Ads" could not be distinguished from the goods and services
of other entities.
This fact also prevented the application of the doctrine of secondary meaning. "Poster Ads" was
generic and incapable of being used as a trademark because it was used in the field of poster
advertising, the very business engaged in by petitioner. "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, in the trade and to that branch of
the purchasing public, the word or phrase has come to mean that the article was his property.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.

Having discussed the most important and critical issues, we see no need to belabor the rest.
All told, the Court finds no reversible error committed by the Court of Appeals when it reversed the
Regional Trial Court of Makati City.
WHEREFORE, the petition is hereby DENIED and the decision of the Court of Appeals dated May 22,
2001 is AFFIRMED in toto. SO ORDERED.
G.R. No. 195835, March 14, 2016
SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO, AND JAP FUK HAI, Petitioners, v. LIM ENG CO,
Respondent.
DECISION
REYES, J.:
This is a petition for review on certiorari1 under Rule 45 of the Rules of Court, assailing the Decision2
dated July 9, 2010 and Resolution3 dated February 24, 2011 of the Court of Appeals (CA) in CA-G.R.
SP No. 95471, which annulled the Resolutions dated March 10, 20064 and May 25, 20065 of the
Department of Justice (DOJ) in I.S. No. 2004-925, finding no probable cause for copyright infringement
against Sison Olano, Sergio Ong, Marilyn Go and Jap Fuk Hai (petitioners) and directing the
withdrawal of the criminal information filed against them.
The Antecedents
The petitioners are the officers and/or directors of Metrotech Steel Industries, Inc. (Metrotech).6 Lim
Eng Co (respondent), on the other hand, is the Chairman of LEC Steel Manufacturing Corporation
(LEC), a company which specializes in architectural metal manufacturing.7
Sometime in 2002, LEC was invited by the architects of the Manansala Project (Project), a high-end
residential building in Rockwell Center, Makati City, to submit design/drawings and specifications for
interior and exterior hatch doors. LEC complied by submitting on July 16, 2002, shop plans/drawings,
including the diskette therefor, embodying the designs and specifications required for the metal hatch
doors.8
After a series of consultations and revisions, the final shop plans/drawings were submitted by LEC on
January 15, 2004 and thereafter copied and transferred to the title block of Ski-First Balfour Joint
Venture (SKI-FB), the Project's contractor, and then stamped approved for construction on February 3,
2004.9
LEC was thereafter subcontracted by SKI-FB, to manufacture and install interior and exterior hatch
doors for the 7th to 22nd floors of the Project based on the final shop plans/drawings.10
Sometime thereafter, LEC learned that Metrotech was also subcontracted to install interior and exterior
hatch doors for the Project's 23rd to 41st floors.11
On June 24, 2004, LEC demanded Metrotech to cease from infringing its intellectual property rights.
Metrotech, however, insisted that no copyright infringement was committed because the hatch doors it
manufactured were patterned in accordance with the drawings provided by SKI-FB.12
On July 2, 2004, LEC deposited with the National Library the final shop plans/drawings of the designs
and specifications for the interior and exterior hatch doors of the Project.13 On July 6, 2004, LEC was
issued a Certificate of Copyright Registration and Deposit showing that it is the registered owner of
plans/drawings for interior and exterior hatch doors under Registration Nos. 1-2004-13 and 1-2004-14,
respectively.14 This copyright pertains to class work "I" under Section 172 of Republic Act (R.A.) No.
8293, The Intellectual Property Code of the Philippines, which covers "illustrations, maps, plans,
sketches, charts and three-dimensional works relative to geography, topography, architecture or
science."
On December 9, 2004, LEC was issued another Certificate of Copyright Registration and Deposit
showing that it is the registered owner of plans/drawings for interior and exterior hatch doors under
Registration Nos. H-2004-566 and H-2004-56715 which is classified under Section 172(h) of R.A. No.
8293 as "original ornamental designs or models for articles of manufacture, whether or not registrable
as an industrial design, and other works of applied art."
When Metrotech still refused to stop fabricating hatch doors based on LEC's shop plans/drawings, the
latter sought the assistance of the National Bureau of Investigation (NBI) which in turn applied for a
search warrant before the Regional Trial Court (RTC) of Quezon City, Branch 24. The application was
granted on August 13, 2004 thus resulting in the confiscation of finished and unfinished metal hatch
doors as well as machines used in fabricating and manufacturing hatch doors from the premises of
Metrotech.16
On August 13, 2004, the respondent filed a Complaint-Affidavit17 before the DOJ against the
petitioners for copyright infringement. In the meantime or on September 8, 2004, the RTC quashed the
search warrant on the ground that copyright infringement was not established.18
Traversing the complaint, the petitioners admitted manufacturing hatch doors for the Project. They
denied, however, that they committed copyright infringement and averred that the hatch doors they
manufactured were functional inventions that are proper subjects of patents and that the records of the
Intellectual Property Office reveal that there is no patent, industrial design or utility model registration
on LEC's hatch doors. Metrotech further argued that the manufacturing of hatch doors per se is not
copyright infringement because copyright protection does not extend to the objects depicted in the
illustrations and plans. Moreover, there is no artistic or ornamental expression embodied in the subject
hatch doors that would subject them to copyright protection.19
Resolutions of the DOJ
In a Resolution20 dated August 18, 2005, the investigating prosecutor dismissed the respondent's
complaint based on inadequate evidence showing that: (1) the petitioners committed the prohibited
acts under Section 177 of R.A. No. 8293; and (2) the interior and exterior hatch doors of the petitioners
are among the classes of copyrightable work enumerated in Sections 172 and 173 of the same law.21
Adamant, the respondent filed a petition for review before the DOJ but it was also denied due course in
the Resolution22 dated November 16, 2005.
Upon the respondent's motion for reconsideration, however, the Resolution23 dated January 27, 2006
of the DOJ reversed and set aside the Resolution dated August 18, 2005 and directed the Chief State
Prosecutor to file the appropriate information for copyright infringement against the petitioners.24 The
DOJ reasoned that the pieces of evidence adduced show that the subject hatch doors are artistic or
ornamental with distinctive hinges, door and jamb, among others. The petitioners were not able to
sufficiently rebut these allegations and merely insisted on the non-artistic nature of the hatch doors.
The DOJ further held that probable cause was established insofar as the artistic nature of the hatch
doors and based thereon the act of the petitioners in manufacturing or causing to manufacture hatch
doors similar to those of the respondent can be considered as unauthorized reproduction; hence,
copyright infringement under Section 177.1 in relation to Section 216 of R.A. No. 8293.
Aggrieved, the petitioners moved for reconsideration. This time, the DOJ made a complete turn around
by granting the motion, vacating its Resolution dated January 27, 2006 and declaring that the evidence
on record did not establish probable cause because the subject hatch doors were plainly metal doors
with functional components devoid of any aesthetic or artistic features. Accordingly, the DOJ
Resolution26 dated March 10, 2006 disposed as follows:
WHEREFORE, finding cogent reason to reverse the assailed resolution, the motion for reconsideration
is GRANTED finding no probable cause against the [petitioners]. Consequently, the City Prosecutor of
Manila is hereby directed to cause the withdrawal of the information, if any has been filed in court, and
to report the action taken thereon within TEN (10) DAYS from receipt hereof. SO ORDERED.
The respondent thereafter filed a motion for reconsideration of the foregoing resolution but it was
denied28 on May 25, 2006. The respondent then sought recourse before the CA via a petition for
certiorari29 ascribing grave abuse of discretion on the part of the DOJ.
In its assailed Decision30 dated July 9, 2010, the CA granted the petition. The CA held that the
vacillating findings of the DOJ on the presence or lack of probable cause manifest capricious and
arbitrary exercise of discretion especially since its opposite findings were based on the same factual
evidence and arguments.
The CA then proceeded to make its own finding of probable cause and held that:

[F]or probable cause for copyright infringement to exist, essentially, it must be shown that the violator
reproduced the works without the consent of the owner of the copyright.
In the present case before Us, [the petitioners] do not dispute that: (1) LEG was issued copyrights for
the illustrations of the hatch doors under Section 171.i, and for the hatch doors themselves as
ornamental design or model for articles of manufacture pursuant to Section 171.h of R.A. [No.] 8293;
and (2) they manufactured hatch doors based on drawings and design furnished by SKI-FB, which
consists of LEC works subject of copyrights. These two (2) circumstances, taken together, are
sufficient to excite the belief in a reasonable mind that [the petitioners] are probably guilty of copyright
infringement. First, LEC has indubitably established that it is the owner of the copyright for both the
illustrations of the hatch doors and [the] hatch doors themselves, and second, [the petitioners]
manufactured hatch doors based on LEC's works, sans EEC's consent.
xxxx
[T]he fact that LEC enjoys ownership of copyright not only on the illustrations of the hatch doors but on
the hatch doors itself and that [the petitioners] manufactured the same is sufficient to warrant a finding
of probable cause for copyright infringement. x x x.31ChanRoblesVirtualawlibrary
The CA further ruled that any allegation on the non-existence of ornamental or artistic values on the
hatch doors are matters of evidence which are best ventilated in a full-blown trial rather than during the
preliminary investigation stage. Accordingly, the CA disposed as follows:
WHEREFORE, considering the foregoing premises, the present Petition is GRANTED, and
accordingly, the assailed Resolutions dated 10 March 2006 and 25 May 2006 are ANNULLED and
SET ASIDE. The Resolution of the Secretory of Justice dated 27 January 2006 finding probable cause
against [the petitioners], is REINSTATED. SO ORDERED.
The CA reiterated the above ruling in its Resolution33 dated February 24, 2011 when it denied the
petitioners' motion for reconsideration. Hence, the present appeal, arguing that:
There was no evidence of actual reproduction of the hatch doors during the preliminary investigation
that would lead the investigating prosecutor to declare the existence of probable cause;34
Even assuming that the petitioners manufactured hatch doors based on the illustrations and plans
covered by the respondent's Certificate of Registration Nos. 1-2004-13 and 1-2004-14, the petitioners
could not have committed copyright infringement. Certificate of Registration Nos. 1-2004-13 and 1-
2004-14 are classified under Section 172(i) which pertains to "illustrations, maps, plans, sketches,
charts and three-dimensional works relative to geography, topography, architecture or science." Hence
the original works that are copyrighted are the illustrations and plans of interior hatch doors and
exterior hatch doors. Thus, it is the reproduction of the illustrations and plans covered by the copyright
registration that amounts to copyright infringement. The petitioners did not reproduce the illustrations
and plans covered under Certificate of Registration Nos. 1-2004-13 and 1-2004-14.
The manufacturing of hatch doors per se does not fall within the purview of copyright infringement
because copyright protection does not extend to the objects depicted in the illustrations and plans;35
and
LEC's copyright registration certificates are not conclusive proofs that the items covered thereby are
copyrightable. The issuance of registration certificate and acceptance of deposit by the National Library
is ministerial in nature and does not involve a determination of whether the item deposited is
copyrightable or not. Certificates of registration and deposit serve merely as a notice of recording and
registration of the work but do not confer any right or title upon the registered copyright owner or
automatically put his work under the protective mantle of the copyright law.36
Ruling of the Court
It is a settled judicial policy that courts do not reverse the Secretary of Justice's findings and
conclusions on the matter of probable cause. Courts are not empowered to substitute their judgment
for that of the executive branch upon which full discretionary authority has been delegated in the
determination of probable cause during a preliminary investigation. Courts may, however, look into
whether the exercise of such discretionary authority was attended with grave abuse of discretion.37
Otherwise speaking, "judicial review of the resolution of the Secretary of Justice is limited to a
determination of whether there has been a grave abuse of discretion amounting to lack or excess of
jurisdiction."38
The CA anchored its act of reversing the DOJ Resolution dated March 10, 2006 upon the foregoing
tenets. Thus, the Court's task in the present petition is only to determine if the CA erred in concluding
that the DOJ committed grave abuse of discretion in directing the withdrawal of any criminal
information filed against the petitioners.
Grave abuse of discretion has been defined as "such capricious and whimsical exercise of judgment as
is equivalent to lack of jurisdiction. The abuse of discretion must be grave as where the power is
exercised in an arbitrary or despotic manner by reason of passion or personal hostility and 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 by or to act at all in contemplation of law."39 "'Capricious,' usually used in tandem with the
term 'arbitrary,' conveys the notion of willful and unreasoning action."
According to the CA, the DOJ's erratic findings on the presence or absence of probable cause
constitute grave abuse of discretion. The CA explained:
This, to Our minds, in itself creates a nagging, persistent doubt as to whether [the DOJ Secretary]
issued the said resolutions untainted with a whimsical and arbitrary use of his discretion. For one
cannot rule that there is reason to overturn the investigating prosecutor's findings at the first instance
and then go on to rule that ample evidence exists showing that the hatch doors possess artistic and
ornamental elements at the second instance and proceed to rule that no such artistry can be found on
the purely utilitarian hatch doors at the last instance. x x x.41ChanRoblesVirtualawlibrary
The Court disagrees. It has been held that the issuance by the DOJ of several resolutions with varying
findings of fact and conclusions of law on the existence of probable cause, by itself, is not indicative of
grave abuse of discretion.42
Inconsistent findings and conclusions on the part of the DOJ will denote grave abuse of discretion only
if coupled with gross misapprehension of facts,43 which, after a circumspect review of the records, is
not attendant in the present case.
The facts upon which the resolutions issued by the investigating prosecutor and the DOJ were actually
uniform, viz:
(a)
LEC is the registered owner of plans/drawings for interior and exterior hatch doors under Certificate of
Registration Nos. 1-2004-13 and 1-2004-14 classified under Section 172(i) of R.A. No. 8293 as
pertaining to "illustrations, maps, plans, sketches, charts and three-dimensional works relative to
geography, topography, architecture or science";
(b)
LEC is also the registered owner of plans/drawings for interior and exterior hatch doors under
Certificate of Registration Nos. H-2004-566 and H-2004-567 classified under Section 172(h) of R.A.
No. 8293 as to "original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art";
(c)
LEC as the subcontractor of SKI-FB in the Project first manufactured and installed the interior and
exterior hatch doors at the Manansala Tower in Rockwell Center, Makati City, from the 7th to 22nd
floors. The hatch doors were based on the plans/drawings submitted by LEC to SKI-FB and subject of
the above copyright registration numbers; and
(d)
thereafter, Metrotech fabricated and installed hatch doors at the same building's 23rd to 41st floor
based on the drawings and specifications provided by SKI-FB.44
The positions taken by the DOJ and the investigating prosecutor differed only in the issues tackled and
the conclusions arrived at.
It may be observed that in the Resolution dated August 18, 2005 issued by the investigating
prosecutor, the primary issue was whether the hatch doors of LEC fall within copyrightable works. This
was resolved by ruling that hatch doors themselves are not covered by LEC's Certificate of
Registration Nos. 1-2004-13 and 1-2004-14 issued on the plans/drawing depicting them. The DOJ
reversed this ruling in its Resolution dated January 27, 2006 wherein the issue was streamlined to
whether the illustrations of the hatch doors under LEC's Certificate of Registration Nos. H-2004-566
and H-2004-567 bore artistic ornamental designs.

This situation does not amount to grave abuse of discretion but rather a mere manifestation of the
intricate issues involved in the case which thus resulted in varying conclusions of law. Nevertheless,
the DOJ ultimately pronounced its definite construal of copyright laws and their application to the
evidence on record through its Resolution dated March 10, 2006 when it granted the petitioners' motion
for reconsideration. Such construal, no matter how erroneous to the CA's estimation, did not amount to
grave abuse of discretion. "[I]t is elementary that not every erroneous conclusion of law or fact is an
abuse of discretion."45
More importantly, the Court finds that no grave abuse of discretion was committed by the DOJ in
directing the withdrawal of the criminal information against the respondents because a finding of
probable cause contradicts the evidence on record, law, and jurisprudence.
"Probable cause has been defined as the existence of such facts and circumstances as would excite
the belief in a reasonable mind, acting on the facts within the knowledge of the prosecutor, that the
person charged was guilty of the crime for which he was prosecuted. It is a reasonable ground of
presumption that a matter is, or may be, well-founded on such a state of facts in the mind of the
prosecutor as would lead a person of ordinary caution and prudence to believe, or entertain an honest
or strong suspicion, that a thing is so."46
"The term does not mean actual and positive cause nor does it import absolute certainty. It is merely
based on opinion and reasonable belief. Thus, a finding of probable cause does not require an inquiry
into whether there is sufficient evidence to procure a conviction. It is enough that it is believed that the
act or omission complained of constitutes the offense charged."47
"In order that probable cause to file a criminal case may be arrived at, or in order to engender the well-
founded belief that a crime has been committed, the elements of the crime charged should be present.
This is based on the principle that every crime is defined by its elements, without which there should be
- at the most - no criminal offense."48
A copyright refers to "the right granted by a statute to the proprietor of an intellectual production to its
exclusive use and enjoyment to the extent specified in the statute."49 Under Section 177 of R.A. No.
8293, the Copyright or Economic Rights consist of the exclusive right to carry out, authorize or prevent
the following acts:
177.1
Reproduction of the work or substantial portion of the work;
177.2
Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;
177.3
The first public distribution of the original and each copy of the work by sale or other forms of transfer
of ownership;
177.4
Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound
recording, a computer program, a compilation of data and other materials or a musical work in graphic
form, irrespective of the ownership of the original or the copy which is the subject of the rental;
177.5
Public display of the original or a copy of the work;
177.6
Public performance of the work; and
177.7
Other communication to the public of the work.
Copyright infringement is thus committed by any person who shall use original literary or artistic works,
or derivative works, without the copyright owner's consent in such a manner as to violate the foregoing
copy and economic rights. For a claim of copyright infringement to prevail, the evidence on record must
demonstrate: (1) ownership of a validly copyrighted material by the complainant; and (2) infringement
of the copyright by the respondent.50
While both elements subsist in the records, they did not simultaneously concur so as to substantiate
infringement of LEC's two sets of copyright registrations.
The respondent failed to substantiate the alleged reproduction of the drawings/sketches of hatch doors
copyrighted under Certificate of Registration Nos. 1-2004-13 and 1-2004-14. There is no proof that the
respondents reprinted the copyrighted sketches/drawings of LEC's hatch doors. The raid conducted by
the NBI on Metrotech's premises yielded no copies or reproduction of LEC's copyrighted
sketches/drawings of hatch doors. What were discovered instead were finished and unfinished hatch
doors.
Certificate of Registration Nos. 1-2004-13 and 1-2004-14 pertain to class work "I" under Section 172 of
R.A. No. 8293 which covers "illustrations, maps, plans, sketches, charts and three-dimensional works
relative to geography, topography, architecture or science."51 As such, LEC's copyright protection
there under covered only the hatch door sketches/drawings and not the actual hatch door they
depict.52
As the Court held in Pearl and Dean (Philippines), Incorporated v. Shoemart, Incorporated:53
Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant, the
rights are limited to what the statute confers. It may be obtained and enjoyed only with respect to the
subjects and by the persons, and on terms and conditions specified in the statute. Accordingly, it can
cover only the works falling within the statutory enumeration or description.54 (Citations omitted and
italics in the original)
Since the hatch doors cannot be considered as either illustrations, maps, plans, sketches, charts and
three-dimensional works relative to geography, topography, architecture or science, to be properly
classified as a copyrightable class "I" work, what was copyrighted were their sketches/drawings only,
and not the actual hatch doors themselves. To constitute infringement, the usurper must have copied
or appropriated the original work of an author or copyright proprietor, absent copying, there can be no
infringement of copyright.55
"Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the
expression of the idea — not the idea itself."56
The respondent claimed that the petitioners committed copyright infringement when they
fabricated/manufactured hatch doors identical to those installed by LEC. The petitioners could not have
manufactured such hatch doors in substantial quantities had they not reproduced the copyrighted
plans/drawings submitted by LEC to SK1-FB. This insinuation, without more, does not suffice to
establish probable cause for infringement against the petitioners. "[Although the determination of
probable cause requires less than evidence which would justify conviction, it should at least be more
than mere suspicion."57
Anent, LEC's Certificate of Registration Nos. H-2004-566 and H-2004-567, the Court finds that the
ownership thereof was not established by the evidence on record because the element of
copyrightability is absent.
"Ownership of copyrighted material is shown by proof of originality and copyrightability."58 While it is
true that where the complainant presents a copyright certificate in support of the claim of infringement,
the validity and ownership of the copyright is presumed. This presumption, however, is rebuttable and
it cannot be sustained where other evidence in the record casts doubt on the question of ownership,59
as in the instant case.
Moreover, "[t]he presumption of validity to a certificate of copyright registration merely orders the
burden of proof. The applicant should not ordinarily be forced, in the first instance, to prove all the
multiple facts that underline the validity of the copyright unless the respondent, effectively challenging
them, shifts the burden of doing so to the applicant."60
Here, evidence negating originality and copyrightability as elements of copyright ownership was
satisfactorily proffered against LEC's certificate of registration.
The following averments were not successfully rebuffed by LEC:
[T]he hinges on LEC's "hatch doors" have no ornamental or artistic value. In fact, they are just similar
to hinges found in truck doors that had been in common use since the 1960's. The gaskets on LEC's
"hatch doors", aside from not being ornamental or artistic, were merely procured from a company
named Pemko and are not original creations of LEC. The locking device in LEC's "hatch doors" are
ordinary drawer locks commonly used in furniture and office desks.61
In defending the copyrightability of its hatch doors' design, LEC merely claimed:
LEC's Hatch Doors were particularly designed to blend in with the floor of the units in which they are
installed and, therefore, appeal to the aesthetic sense of the owner of units or any visitors thereto[;]
LEC's Hatch Doors have a distinct set of hinges, a distinct door a distinct jamb, all of which are both
functional or utilitarian and artistic or ornamental at the same time[;] and
Moreover, the Project is a high-end residential building located in the Rockwell Center, a very prime
area in Metro Manila. As such, the owner of the Project is not expected to settle for Hatch Doors that
simply live up to their function as such. The owner would require, as is the case for the Project, Hatch
Doors that not only fulfill their utilitarian purposes but also appeal to the artistic or ornamental sense of
their beholders.
From the foregoing description, it is clear that the hatch doors were not artistic works within the
meaning of copyright laws. A copyrightable work refers to literary and artistic works defined as original
intellectual creations in the literary and artistic domain.63
A hatch door, by its nature is an object of utility. It is defined as a small door, small gate or an opening
that resembles a window equipped with an escape for use in case of fire or emergency.64 It is thus by
nature, functional and utilitarian serving as egress access during emergency. It is not primarily an
artistic creation but rather an object of utility designed to have aesthetic appeal. It is intrinsically a
useful article, which, as a whole, is not eligible for copyright.
A "useful article" defined as an article "having an intrinsic utilitarian function that is not merely to portray
the appearance of the article or to convey information" is excluded from copyright eligibility.65
The only instance when a useful article may be the subject of copyright protection is when it
incorporates a design element that is physically or conceptually separable from the underlying product.
This means that the utilitarian article can function without the design element. In such an instance, the
design element is eligible for copyright protection.66
The design of a useful article shall be considered a pictorial, graphic, or sculptural work only if, and
only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be
identified separately from, and are capable of existing independently of, the utilitarian aspects of the
article.67
A belt, being an object utility with the function of preventing one's pants from falling down, is in itself not
copyrightable. However, an ornately designed belt buckle which is irrelevant to or did not enhance the
belt's function hence, conceptually separable from the belt, is eligible for copyright. It is copyrightable
as a sculptural work with independent aesthetic value, and not as an integral element of the belt's
functionality.68
A table lamp is not copyrightable because it is a functional object intended for the purpose of providing
illumination in a room. The general shape of a table lamp is likewise not copyrightable because it
contributes to the lamp's ability to illuminate the reaches of a room. But, a lamp base in the form of a
statue of male and female dancing figures made of semi vitreous china is copyrightable as a work of
art because it is unrelated to the lamp's utilitarian function as a device used to combat darkness.69
In the present case, LEC's hatch doors bore no design elements that are physically and conceptually
separable, independent and distinguishable from the hatch door itself. The allegedly distinct set of
hinges and distinct jamb, were related and necessary hence, not physically or conceptually separable
from the hatch door's utilitarian function as an apparatus for emergency egress. Without them, the
hatch door will not function.
More importantly, they are already existing articles of manufacture sourced from different suppliers.
Based on the records, it is unrebutted that: (a) the hinges are similar to those used in truck doors; (b)
the gaskets were procured from a company named Pemko and are not original creations of LEC; and
(c) the locking device are ordinary drawer locks commonly used in furniture and office desks.
Being articles of manufacture already in existence, they cannot be deemed as original creations. As
earlier stated, valid copyright ownership denotes originality of the copyrighted material. Originality
means that the material was not copied, evidences at least minimal creativity and was independently
created by the author.70 It connotes production as a result of independent labor.71 LEC did not
produce the door jambs and hinges; it bought or acquired them from suppliers and thereafter affixed
them to the hatch doors. No independent original creation can be deduced from such acts.
The same is true with respect to the design on the door's panel. As LEC has stated, the panels were
"designed to blend in with the floor of the units in which they [were] installed."72 Photos of the panels
indeed show that their color and pattern design were similar to the wooden floor parquet of the
condominium units.73 This means that the design on the hatch door panel was not a product of LEC's
independent artistic judgment and discretion but rather a mere reproduction of an already existing
design.
Verily then, the CA erred in holding that a probable cause for copyright infringement is imputable
against the petitioners. Absent originality and copyrightability as elements of a valid copyright
ownership, no infringement can subsist.
WHEREFORE, premises considered, the petition is hereby GRANTED. The Decision dated July 9,
2010 and Resolution dated February 24, 2011 of the Court of Appeals in CA-G.R. SP No. 95471 are
REVERSED and SET ASIDE. The Resolutions dated March 10, 2006 and May 25, 2006 of the
Department of Justice in I.S. No. 2004-925 dismissing the complaint for copyright infringement are
REINSTATED.
G.R. No. 195956 March 11, 2015
ABS-CBN CORPORATION, Petitioner,
vs. FELIPE GOZON, GILBERTO R. DUAVIT, JR., MARISSA L. FLORES, JESSICA A. SORO, GRACE
DELA PENA-REYES, JOHN OLIVER T. MANALASTAS, JOHN DOES AND JANE DOES,
Respondents.
DECISION
LEONEN, J.:
The main issue in this case is whether there is probable cause to charge respondents with
infringement under Republic Act No. 8293, otherwise known as the Intellectual Property Code. The
resolution of this issue requires clarification of the concept of "copyrightable material" in relation to
material that is rebroadcast live as a news story. We are also asked to rule on whether criminal
prosecution for infringement of copyrightable material, such as live rebroadcast, can be negated by
good faith.
ABS-CBN Corporation (ABS-CBN) filed the Petition for Review on Certiorari1 to assail the November
9, 2010 Decision2 and the March 3, 2011 Resolution3 of the Court of Appeals. The Court of Appeals
reinstated the Department of Justice Resolution dated August 1, 2005 that ordered the withdrawal of
the Information finding probable cause for respondents’ violation of Sections 1774 and 2115 of the
Intellectual Property Code.6 Respondents are officers and employees of GMA Network, Inc. (GMA-7).
They are: Felipe Gozon (Gozon), GMA-7 President; Gilberto R. Duavit, Jr. (Duavit, Jr.), Executive Vice-
President; Marissa L. Flores (Flores), Vice-President for New and Public Affairs; Jessica A. Soho
(Soho), Director for News; Grace Dela Peña-Reyes (Dela Peña-Reyes), Head of News and Public
Affairs; John Oliver Manalastas (Manalastas), Program Manager; and others.
The controversy arose from GMA-7’s news coverage on the homecoming of Filipino overseas worker
and hostage victim Angelo dela Cruz on July 22, 2004. As summarized by the Court of Appeals:
Overseas Filipino worker Angelo dela Cruz was kidnapped by Iraqi militants and as a condition for his
release, a demand was made for the withdrawal of Filipino troops in Iraq. After negotiations, he was
released by his captors and was scheduled to return to the country in the afternoon of 22 July 2004.
Occasioned by said homecoming and the public interest it generated, both . . . GMA Network, Inc. . . .
and [petitioner] made their respective broadcasts and coverage of the live event.7
ABS-CBN "conducted live audio-video coverage of and broadcasted the arrival of Angelo dela Cruz at
the Ninoy Aquino International Airport (NAIA) and the subsequent press conference."8 ABS-CBN
allowed Reuters Television Service (Reuters) to air the footages it had taken earlier under a special
embargo agreement.9
ABS-CBN alleged that under the special embargo agreement, any of the footages it took would be for
the "use of Reuter’s international subscribers only, and shall be considered and treated by Reuters
under ‘embargo’ against use by other subscribers in the Philippines. . . . [N]o other Philippine
subscriber of Reuters would be allowed to use ABS-CBN footage without the latter’s consent."10
GMA-7, to which Gozon, Duavit, Jr., Flores, Soho, Dela Peña-Reyes, and Manalastas are connected,
"assigned and stationed news reporters and technical men at the NAIA for its live broadcast and non-
live news coverage of the arrival of dela Cruz."11 GMA-7 subscribes to both Reuters and Cable News
Network (CNN). It received a live video feed of the coverage of Angelo dela Cruz’s arrival from
Reuters.12
GMA-7 immediately carried the live news feed in its program "Flash Report," together with its live
broadcast.13 Allegedly, GMA-7 did not receive any notice or was not aware that Reuters was airing
footages of ABS-CBN.14 GMA-7’s news control room staff saw neither the "No Access Philippines"
notice nor a notice that the video feed was under embargo in favor of ABS-CBN.15
On August 13, 2004, ABS-CBN filed the Complaint for copyright infringement under Sections 17716
and 21117 of the Intellectual Property Code.18
On December 3, 2004, Assistant City Prosecutor Dindo Venturanza issued the Resolution19 finding
probable cause to indict Dela Peña-Reyes and Manalastas.20 Consequently, the Information21 for
violation of the Intellectual Property Code was filed on December 17, 2004. It reads:
That on or about the 22nd of July 2004, in Quezon City, Philippines, the above-named accused,
conspiring together, confederating with and mutually helping each other, being the Head of News
Operations and the Program Manager, respectively, for the News and Public Affairs Department of
GMA Network, Inc., did then and there, willfully, unlawfully and feloniously use and broadcast the
footage of the arrival of Angelo [d]ela Cruz at the Ninoy Aquino International Airport of which ABS-CBN
holds the exclusive ownership and copyright by then and there using, airing, and broadcasting the said
footage in its news program "FLASH REPORT" without first obtaining the consent or authority of said
copyright owner, to their damage and prejudice. Contrary to law.22
On January 4, 2005, respondents filed the Petition for Review before the Department of Justice.23 In
the Resolution (Gonzalez Resolution) dated August 1, 2005, Department of Justice Secretary Raul M.
Gonzalez (Secretary Gonzalez) ruled in favor of respondents and held that good faith may be raised as
a defense in the case.24 The dispositive portion of the Resolution reads:
WHEREFORE, THE PETITION FOR REVIEW FILED BY GMA-7 in I.S. No. 04-10458 is considered
meritorious and is hereby GRANTED. This case is hereby Dismissed, the resolution of the City
Prosecutor of Quezon City is hereby reversed and the same is ordered to withdraw the information if
any and report action taken to this office within ten (10) days.25 (Emphasis in the original)
Both parties moved for reconsideration of the Gonzalez Resolution.26
Meanwhile, on January 19, 2005, the trial court granted the Motion to Suspend Proceedings filed
earlier by Dela Peña-Reyes and Manalastas.27 The trial court Order reads:
Perusing the motion, the court finds that a petition for review was filed with the Department of Justice
on January 5, 2005 as confirmed by the public prosecutor. Under Section 11 (c), Rule 116 of the Rules
of Criminal Procedure, once a petition for review is filed with the Department of Justice, a suspension
of the criminal proceedings may be allowed by the court.
Accordingly, to allow the Department of Justice the opportunity to act on said petition for review, let the
proceedings on this case be suspended for a period of sixty (60) days counted from January 5, 2005,
the date the petition was filed with the Department of Justice. The arraignment of the accused on
February 1, 2005 is accordingly cancelled. Let the arraignment be rescheduled to March 8, 2005 at
8:30 a.m. The accused through counsel are notified in open court. SO ORDERED.28
On June 29, 2010, Department of Justice Acting Secretary Alberto C. Agra (Secretary Agra) issued the
Resolution (Agra Resolution) that reversed the Gonzalez Resolution and found probable cause to
charge Dela Peña-Reyes and Manalastas for violation of the Intellectual Property Code.29 Secretary
Agra also found probable cause to indict Gozon, Duavit, Jr., Flores, and Soho for the same violation.30
He ruled that:
[w]hile good faith may be a defense in copyright infringement, the same is a disputable presumption
that must be proven in a full-blown trial. Disputable presumptions may be contradicted and overcome
by other evidence. Thus, a full-blown trial is the proper venue where facts, issues and laws are
evaluated and considered. The very purpose of trial is to allow a party to present evidence to overcome
the disputable presumptions involved.31
The dispositive portion of the Agra Resolution provides:
WHEREFORE, premises considered:
(a) The Motion for Reconsideration filed by appellees ABS-CBN Broadcasting Corporation (ABS-CBN)
of our Resolution promulgated on August 1, 2005 (Resolution No. 364, Series of 2005) and the Petition
for Review filed by complainant-appellant ABS-CBN in I.S. No. 04-10458 on April10, 2006, are
GRANTED and the City Prosecutor of Quezon City is hereby ordered to file the necessary Information
for violation of Section 177 and 211 of Republic Act No. 8293 against GMA-7. Felipe L. Gozon,
Gilberto R. Duavit, Jr., Marissa L.Flores, Jessica A. Soho, Grace Dela Pena-Reyes, John Oliver T.
Manalastas[.]
SO ORDERED.32 (Emphasis in the original)
Respondents assailed the Agra Resolution through the Petition for Certiorari with prayer for issuance
of a temporary restraining order and/or Writ of Preliminary Injunction on September 2, 2010 before the
Court of Appeals. In the Resolution dated September 13, 2010, the Court of Appeals granted the
temporary restraining order preventing the Department of Justice from enforcing the Agra
Resolution.33
On November 9, 2010, the Court of Appeals rendered the Decision granting the Petition and reversing
and setting aside the Agra Resolution.34 The Court of Appeals held that Secretary Agra committed
errors of jurisdiction in issuing the assailed Resolution. Resolving the issue of copyright infringement,
the Court of Appeals said:
Surely, private respondent has a copyright of its news coverage. Seemingly, for airing said video feed,
petitioner GMA is liable under the provisions of the Intellectual Property Code, which was enacted
purposely to protect copyright owners from infringement. However, it is an admitted fact that petitioner
GMA had only aired a five (5) second footage of the disputed live video feed that it had received from
Reuters and CNN as a subscriber. Indeed, petitioners had no notice of the right of ownership of private
respondent over the same. Without notice of the "No Access Philippines" restriction of the live video
feed, petitioner cannot be faulted for airing a live video feed from Reuters and CNN.
Verily, as aptly opined by Secretary Gonzalez in his earlier Resolution, the act of petitioners in airing
the five (5) second footage was undeniably attended by good faith and it thus serves to exculpate them
from criminal liability under the Code. While the Intellectual Property Code is a special law, and thus
generally categorized as malum prohibitum, it bears to stress that the provisions of the Code itself do
not ipso facto penalize a person or entity for copyright infringement by the mere fact that one had used
a copyrighted work or material.
Certainly so, in the exercise of one’s moral and economic or copyrights, the very provisions of Part IV
of the Intellectual Property Code provide for the scope and limitations on copyright protection under
Section 184 and in fact permit fair use of copyrighted work under Section 185. With the aforesaid
statutory limitations on one’s economic and copyrights and the allowable instances where the other
persons can legally use a copyrighted work, criminal culpability clearly attaches only when the
infringement had been knowingly and intentionally committed.35 (Emphasis supplied)
The dispositive portion of the Decision reads:
WHEREFORE, the foregoing considered, the instant petition is hereby GRANTED and the assailed
Resolution dated 29 June 2010 REVERSED and SET ASIDE. Accordingly, the earlier Resolution dated
1 August 2005, which ordered the withdrawal of the Information filed, if any, against the petitioners for
violation of Sections 177 and 211 of the Intellectual Property Code, is hereby REINSTATED. No costs.
SO ORDERED.36 (Emphasis in the original)
ABS-CBN’s Motion for Reconsideration was denied.37 It then filed its Petition for Review before this
court assailing the Decision and Resolution of the Court of Appeals.38
The issues for this court’s consideration are:
First, whether Secretary Agra committed errors of jurisdiction in the Resolution dated June 29, 2010
and, therefore, whether a petition for certiorari was the proper remedy in assailing that Resolution;
Second, whether news footage is copyrightable under the law;
Third, whether there was fair use of the broadcast material;
Fourth, whether lack of knowledge that a material is copyrighted is a defense against copyright
infringement;
Fifth, whether good faith is a defense in a criminal prosecution for violation of the Intellectual Property
Code; and
Lastly, whether the Court of Appeals was correct in overturning Secretary Agra’s finding of probable
cause.
I convicted or acquitted. The fiscal should not shirk from the responsibility of appearing for the People of
The trial court granted respondents’ Motion to Suspend Proceedings and deferred respondents Dela
Peña-Reyes and Manalastas’ arraignment for 60 days in view of the Petition for Review filed before the
Department of Justice.
Rule 116, Section 11 (c) of the Rules of Criminal Procedure allows
the suspension of the accused’s arraignment in certain circumstances only:
SEC. 11. Suspension of arraignment.–Upon motion by the proper party, the arraignment shall be
suspended in the following cases:
(a) The accused appears to be suffering from an unsound mental condition which effectively renders
him unable to fully understand the charge against him and to plead intelligently thereto. In such case,
the court shall order his mental examination and, if necessary, his confinement for such purpose;
(b) There exists a prejudicial question; and
(c) A petition for review of the resolution of the prosecutor is pending at either the Department of
Justice, or the Office of the President; provided, that the period of suspension shall not exceed sixty
(60) days counted from the filing of the petition with the reviewing office. (12a) (Emphasis supplied)
In Samson v. Daway,39 this court acknowledged the applicability of Rule 116, Section (c) in a criminal
prosecution for infringement under the Intellectual Property Code. However, this court emphasized the
limits of the order of deferment under the Rule:
While the pendency of a petition for review is a ground for suspension of the arraignment, the . . .
provision limits the deferment of the arraignment to a period of 60 days reckoned from the filing of the
petition with the reviewing office. It follows, therefore, that after the expiration of said period, the trial
court is bound to arraign the accused or to deny the motion to defer arraignment.40
We clarify that the suspension of the arraignment should always be within the limits allowed by law. In
Crespo v. Judge Mogul,41 this court outlined the effects of filing an information before the trial court,
which includes initiating a criminal action and giving this court "authority to hear and determine the
case":42
The preliminary investigation conducted by the fiscal for the purpose of determining whether a prima
facie case exists warranting the prosecution of the accused is terminated upon the filing of the
information in the proper court. In turn, as above stated, the filing of said information sets in motion the
criminal action against the accused in Court. Should the fiscal find it proper to conduct a reinvestigation
of the case, at such stage, the permission of the Court must be secured. After such reinvestigation the
finding and recommendations of the fiscal should be submitted to the Court for appropriate action.
While it is true that the fiscal has the quasi judicial discretion to determine whether or not a criminal
case should be filed in court or not, once the case had already been brought to Court whatever
disposition the fiscal may feel should be proper in the case thereafter should be addressed for the
consideration of the Court, the only qualification is that the action of the Court must not impair the
substantial rights of the accused or the right of the People to due process of law.
Whether the accused had been arraigned or not and whether it was due to a reinvestigation by the
fiscal or a review by the Secretary of Justice whereby a motion to dismiss was submitted to the Court,
the Court in the exercise of its discretion may grant the motion or deny it and require that the trial on
the merits proceed for the proper determination of the case.
However, one may ask, if the trial court refuses to grant the motion to dismiss filed by the fiscal upon
the directive of the Secretary of Justice will there not be a vacuum in the prosecution? A state
prosecutor to handle the case cannot possibly be designated by the Secretary of Justice who does not
believe that there is a basis for prosecution nor can the fiscal be expected to handle the prosecution of
the case thereby defying the superior order of the Secretary of Justice. The answer is simple. The role
of the fiscal or prosecutor as We all know is to see that justice is done and not necessarily to secure
the conviction of the person accused before the Courts. Thus, in spite of his opinion to the contrary, it
is the duty of the fiscal to proceed with the presentation of evidence of the prosecution to the Court to
enable the Court to arrive at its own independent judgment as to whether the accused should be
the Philippines even under such circumstances much less should he abandon the prosecution of the
case leaving it to the hands of a private prosecutor for then the entire proceedings will be null and void.
The least that the fiscal should do is to continue to appear for the prosecution although he may turn
over the presentation of the evidence to the private prosecutor but still under his direction and control.
The rule therefore in this jurisdiction is that once a complaint or information is filed in Court any
disposition of the case as to its dismissal or the conviction or acquittal of the accused rests in the
sound discretion of the Court. Although the fiscal retains the direction and control of the prosecution of
criminal cases even while the case is already in Court he cannot impose his opinion on the trial court.
The Court is the best and sole judge on what to do with the case before it. The determination of the
case is within its exclusive jurisdiction and competence. A motion to dismiss the case filed by the fiscal
should be addressed to the Court who has the option to grant or deny the same. It does not matter if
this is done before or after the arraignment of the accused or that the motion was filed after a
reinvestigation or upon instructions of the Secretary of Justice who reviewed the records of the
investigation.43 (Emphasis supplied, citations omitted)
The doctrine in Crespo was reiterated in Mayor Balindong v. Court of Appeals,44 where this court
reminded the Department of Justice Secretary to refrain from entertaining petitions for review when the
case is already pending with this court:
[I]n order to avoid a situation where the opinion of the Secretary of Justice who reviewed the action of
the fiscal may be disregarded by the trial court, the Secretary of Justice should, as far as practicable,
refrain from entertaining a petition for review or appeal from the action of the fiscal, when the complaint
or information has already been filed in the Court. The matter should be left entirely for the
determination of the Court.45
The trial court should have proceeded with respondents Dela Peña-Reyes and Manalastas’
arraignment after the 60-day period from the filing of the Petition for Review before the Department of
Justice on March 8, 2005. It was only on September 13, 2010 that the temporary restraining order was
issued by the Court of Appeals. The trial court erred when it did not act on the criminal case during the
interim period. It had full control and direction of the case. As Judge Mogul reasoned in denying the
motion to dismiss in Crespo, failure to proceed with the arraignment "disregards the requirements of
due process [and] erodes the Court’s independence and integrity."46
II
According to ABS-CBN, the Court of Appeals erred in finding that: a motion for reconsideration was not
necessary before a petition for certiorari could be filed; the Department of Justice Secretary committed
errors of jurisdiction since the Agra Resolution was issued within its authority and in accordance with
settled laws and jurisprudence; and respondents were not liable for copyright infringement.
In its assailed Decision, the Court of Appeals found that respondents committed a procedural error
when they failed to file a motion for reconsideration before filing the Petition for Certiorari. However, the
Court of Appeals held that a motion for reconsideration was unnecessary since the Agra Resolution
was a patent nullity and it would have been useless under the circumstances: Given that a reading of
the assailed Resolution and the instant records readily reveals errors of jurisdiction on the part of
respondent Secretary, direct judicial recourse is warranted under the circumstances. Aside from the
fact that said Resolution is a patent nullity having been issued in grave abuse of discretion amounting
to lack or excess of jurisdiction, the filing of a motion for reconsideration is evidently useless on
account of the fact that the issues and arguments before this Court have already been duly raised and
accordingly delved into by respondent Secretary in his disposition of the petition a quo.47 (Emphasis in
the original)
In Elma v. Jacobi,48 this court ruled that a petition for certiorari under Rule 65 of the Rules of Court is
proper when assailing adverse resolutions of the Department of Justice stemming from the
determination of probable cause.49 However, grave abuse of discretion must be alleged.50
In Sanrio Company Limited v. Lim,51 this court stressed the prosecutor’s role in determining probable
cause. Judicial review will only lie when it is shown that the prosecutor acted with grave abuse of
discretion amounting to lack or excess of jurisdiction:
A prosecutor alone determines the sufficiency of evidence that will establish probable cause justifying
the filing of a criminal information against the respondent. By way of exception, however, judicial
review is allowed where respondent has clearly established that the prosecutor committed grave abuse
of discretion. Otherwise stated, such review is appropriate only when the prosecutor has exercised his
discretion in an arbitrary, capricious, whimsical or despotic manner by reason of passion or personal
hostility, patent and gross enough to amount to an evasion of a positive duty or virtual refusal to
perform a duty enjoined by law.52 (Citations omitted)
Grave abuse of discretion refers to:
such capricious and whimsical exercise of judgment as is equivalent to lack of jurisdiction. The abuse
of discretion must be grave as where the power is exercised in an arbitrary or despotic manner by
reason of passion or personal hostility and 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 by or to act at all in contemplation of
law.53
Resorting to certiorari requires that there be there be "no appeal, or any plain, speedy, and adequate
remedy in the ordinary course of law[,]"54 such as a motion for reconsideration. Generally, "a motion
for reconsideration is a condition sine qua non before a petition for certiorari may lie, its purpose being
to grant an opportunity for the [tribunal or officer] to correct any error attributed to it by a re-examination
of the legal and factual circumstances of the case."55 However, exceptions to the rule exist:
(a) where the order is a patent nullity, as where the Court a quo had no jurisdiction; (b) where the
questions raised in the certiorari proceeding have been duly raised and passed upon by the lower
court, or are the same as those raised and passed upon in the lower court; (c) where there is an urgent
necessity for the resolution of the question and any further delay would prejudice the interests of the
Government or of the petitioner or the subject matter of the action is perishable; (d) where, under the
circumstances, a motion for reconsideration would be useless; (e) where petitioner was deprived of
due process and there is extreme urgency for relief; (f) where, in a criminal case, relief from an order of
arrest is urgent and the granting of such relief by the trial Court is improbable; (g) where the
proceedings in the lower court are a nullity for lack of due process; (h) where the proceedings was ex
parte or in which the petitioner had no opportunity to object; and (i) where the issue raised is one
purely of law or where public interest is involved.56 (Emphasis in the original, citations omitted)
As argued by respondents, "[a] second motion for reconsideration would have been useless and futile
since the D[epartment] [of] J[ustice] had already passed upon the same issues twice."57 Equally
pressing under the circumstances was the need to resolve the matter, as the Information’s filing would
lead to respondents’ imminent arrest.58
Moreover, Department of Justice Department Circular No. 70 dated July 3, 2000, or the 2000 NPS
Rules on Appeal, provides that no second motion for reconsideration of the Department of Justice
Secretary’s resolution shall be entertained:
SECTION 13. Motion for reconsideration. The aggrieved party may file a motion for reconsideration
within a non-extendible period of ten (10) days from receipt of the resolution on appeal, furnishing the
adverse party and the Prosecution Office concerned with copies thereof and submitting proof of such
service. No second or further motion for reconsideration shall be entertained.
The Agra Resolution was the result of respondents’ Motion for Reconsideration assailing the Gonzalez
Resolution. To file a motion for reconsideration of the Agra Resolution would be superfluous.
Respondents were, therefore, correct in filing the Petition for Certiorari of the Agra Resolution before
the Court of Appeals.
III
The Court of Appeals ruled that Secretary Agra committed errors of jurisdiction, which then required
the grant of the writ of certiorari:
So viewed, by ordering the filing of information without proof that probable cause exists to charge
petitioners with a crime, respondent Secretary clearly committed an error of jurisdiction thus warranting
the issuance of the writ of certiorari. Surely, probable cause cannot be had when the very provisions of
the statute exculpates criminal liability in cases classified as fair use of copyrighted materials. The fact
that they admittedly used the Reuters live video feed is not, as a matter of course, tantamount to
copyright infringement that would justify the filing of an information against the petitioners.59
Error of jurisdiction must be distinguished from error of judgment:
A line must be drawn between errors of judgment and errors of jurisdiction. An error of judgment is one
which the court may commit in the exercise of its jurisdiction. An error of jurisdiction renders an order
or judgment void or voidable. Errors of jurisdiction are reviewable on certiorari; errors of judgment, only
by appeal.60
In People v. Hon. Sandiganbayan61:
An error of judgment is one which the court may commit in the exercise of its jurisdiction. An error of
jurisdictionis one where the act complained of was issued by the court without or in excess of
jurisdiction, or with grave abuse of discretion, which is tantamount to lack or in excess of jurisdiction
and which error is correctible only by the extraordinary writ of certiorari. Certiorari will not be issued to
cure errors of the trial court in its appreciation of the evidence of the parties, or its conclusions
anchored on the said findings and its conclusions of law.62 (Emphasis supplied)
This court has adopted a deferential attitude towards review of the executive’s finding of probable
cause.63 This is based "not only upon the respect for the investigatory and [prosecutorial] powers
granted by the Constitution to the executive department but upon practicality as well."64 Review of the
Department of Justice Secretary’s decision or resolution will be allowed only when grave abuse of
discretion is alleged:
The full discretionary authority to determine probable cause in a preliminary investigation to ascertain
sufficient ground for the filing of information rests with the executive branch. Hence, judicial review of
the resolution of the Secretary of Justice is limited to a determination whether there has been a grave
abuse of discretion amounting to lack or excess of jurisdiction. Courts cannot substitute the executive
branch’s judgment.
....
It is only where the decision of the Justice Secretary is tainted with grave abuse of discretion
amounting to lack or excess of jurisdiction that the Court of Appeals may take cognizance of the case
in a petition for certiorari under Rule 65 of the Revised Rules of Civil Procedure. The Court of Appeals
decision may then be appealed to this Court by way of a petition for review on certiorari.65 (Emphasis
supplied, citations omitted)
In this case, it must be shown that Secretary Agra exceeded his authority when he reversed the
findings of Secretary Gonzalez. This court must determine whether there is probable cause to file an
information for copyright infringement under the Intellectual Property Code.
IV
Probable cause pertains to "such facts as are sufficient to engender a well-founded belief that a crime
has been committed and that respondent is probably guilty thereof."66 Preliminary investigation is the
inquiry or proceeding to determine whether there is probable cause.67
In Webb v. De Leon,68 this court ruled that determination of probable cause during preliminary
investigation does not require trial-like evaluation of evidence since existence of probable cause does
not equate to guilt:
It ought to be emphasized that in determining probable cause, the average man weighs facts and
circumstances without resorting to the calibrations of our technical rules of evidence of which his
knowledge is nil. Rather, he relies on the calculus of common sense of which all reasonable men have
an abundance.
....
. . . A finding of probable cause merely binds over the suspect to stand trial. It is not a pronouncement
of guilt.69
In Reyes v. Pearlbank Securities, Inc.,70 finding probable cause is not equivalent to finding with moral
certainty that the accused committed the crime:
A finding of probable cause needs only to rest on evidence showing that more likely than not a crime
has been committed by the suspects. It need not be based on clear and convincing evidence of guilt,
not on evidence establishing guilt beyond reasonable doubt, and definitely not on evidence
establishing absolute certainty of guilt. In determining probable cause, the average man weighs facts
and circumstances without resorting to the calibrations of the rules of evidence of which he has no
technical knowledge. He relies on common sense.71
During preliminary investigation, a public prosecutor does not adjudicate on the parties’ rights,
obligations, or liabilities.72
In the recent case of Estrada v. Office of the Ombudsman, et al.,73 we reiterated Webb on the
determination of probable cause during preliminary investigation and traced the history of probable
cause as borrowed from American jurisprudence:
The purpose in determining probable cause is to make sure that the courts are not clogged with weak
cases that will only be dismissed, as well as to spare a person from the travails of a needless
prosecution.
....
. . . In the United States, from where we borrowed the concept of probable cause, the prevailing
definition of probable cause is this:
In dealing with probable cause, however, as the very name implies, we deal with probabilities. These
are not technical; they are the factual and practical considerations of everyday life on which reasonable
and prudent men, not legal technicians, act. The standard of proof is accordingly correlative to what
must be proved.
"The substance of all the definitions" of probable cause "is a reasonable ground for belief of guilt."
McCarthy v. De Armit, 99 Pa. St. 63, 69, quoted with approval in the Carroll opinion. 267 U. S. at 161.
And this "means less than evidence which would justify condemnation" or conviction, as Marshall, C.
J., said for the Court more than a century ago in Locke v. United States, 7 Cranch 339, 348. Since
Marshall’s time, at any rate, it has come to mean more than bare suspicion: Probable cause exists
where "the facts and circumstances within their [the officers’] knowledge and of which they had
reasonably trustworthy information [are] sufficient in themselves to warrant a man of reasonable
caution in the belief that" an offense has been or is being committed. Carroll v. United States, 267 U. S.
132, 162.
These long-prevailing standards seek to safeguard citizens from rash and unreasonable interferences
with privacy and from unfounded charges of crime. They also seek to give fair leeway for enforcing the
law in the community’s protection. Because many situations which confront officers in the course of
executing their duties are more or less ambiguous, room must be allowed for some mistakes on their
part. But the mistakes must be those of reasonable men, acting on facts leading sensibly to their
conclusions of probability. The rule of probable cause is a practical, non technical conception affording
the best compromise that has been found for accommodating these often opposing interests.
Requiring more would unduly hamper law enforcement. To allow less would be to leave law-abiding
citizens at the mercy of the officers’ whim or caprice.
In the Philippines, there are four instances in the Revised Rules of Criminal Procedure where probable
cause is needed to be established:
(1) In Sections 1 and 3 of Rule 112: By the investigating officer, to determine whether there is sufficient
ground to engender a well-founded belief that a crime has been committed and the respondent is
probably guilty thereof, and should be held for trial. A preliminary investigation is required before the
filing of a complaint or information for an offense where the penalty prescribed by law is at least four
years, two months and one day without regard to the fine;
(2) In Sections 6 and 9 of Rule 112: By the judge, to determine whether a warrant of arrest or a
commitment order, if the accused has already been arrested, shall be issued and that there is a
necessity of placing the respondent under immediate custody in order not to frustrate the ends of
justice;
(3) In Section 5(b) of Rule 113:By a peace officer or a private person making a warrantless arrest when
an offense has just been committed, and he has probable cause to believe based on personal
knowledge of facts or circumstances that the person to be arrested has committed it; and
(4) In Section 4 of Rule 126: By the judge, to determine whether a search warrant shall be issued, and
only 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, and particularly describing the place to be searched and the things to be seized which may
be anywhere in the Philippines.
In all these instances, the evidence necessary to establish probable cause is based only on the
likelihood, or probability, of guilt.74
Estrada also highlighted that a "[p]reliminary investigation is not part of the criminal action. It is merely
preparatory and may even be disposed of in certain situations."75
To determine whether there is probable cause that respondents committed copyright infringement, a
review of the elements of the crime, including the existing facts, is required.
V
ABS-CBN claims that news footage is subject to copyright and prohibited use of copyrighted material is
punishable under the Intellectual Property Code. It argues that the new footage is not a "newsworthy
event" but "merely an account of the arrival of Angelo dela Cruz in the Philippines — the latter being
the newsworthy event":76
To be clear, it is the event itself or the arrival of Angelo dela Cruz which is not copyrightable because
that is the newsworthy event. However, any footage created from the event itself, in this case the
arrival of Angelo dela Cruz, are intellectual creations which are copyrightable. Thus, the footage
created by ABS-CBN during the arrival of Angelo dela Cruz, which includes the statements of Dindo
Amparo, are copyrightable and protected by the laws on copyright.77
On the other hand, respondents argue that ABS-CBN’s news footage of Angelo dela Cruz’s arrival is
not copyrightable or subject to protection:
Certainly, the arrival of Angelo [d]ela Cruz, which aroused public attention and the consciousness of
the Filipino people with regard to their countrymen, OFWs working in foreign countries and how the
Philippine government responds to the issues concerning them, is "news". There is no ingenuity or
inventiveness added in the said news footage. The video footage of this "news" is not copyrightable by
any legal standard as facts of everyday life depicted in the news and items of press information is part
of the public domain.78 (Emphasis in the original)
The news footage is copyrightable.
The Intellectual Property Code is clear about the rights afforded to authors of various kinds of work.
Under the Code, "works are protected by the sole fact of their creation, irrespective of their mode or
form of expression, as well as of their content, quality and purpose."79 These include "[a]udiovisual
works and cinematographic works and works produced by a process analogous to cinematography or
any process for making audiovisual recordings."80
Contrary to the old copyright law,81 the Intellectual Property Code does not require registration of the
work to fully recover in an infringement suit. Nevertheless, both copyright laws provide that copyright
for a work is acquired by an intellectual creator from the moment of creation.82
It is true that under Section 175 of the Intellectual Property Code, "news of the day and other
miscellaneous facts having the character of mere items of press information" are considered
unprotected subject matter.83 However, the Code does not state that expression of the news of the
day, particularly when it underwent a creative process, is not entitled to protection.
An idea or event must be distinguished from the expression of that idea or event. An idea has been
likened to a ghost in that it "must be spoken to a little before it will explain itself."84 It is a concept that
has eluded exact legal definition.85 To get a better grasp of the idea/expression dichotomy, the
etymology of the term "idea" is traced:
The word "idea" is derived from a Greek term, meaning "a form, the look or appearance of a thing as
opposed to its reality, from idein, to see." In the Timaeus, Plato saw ideas as eternal paradigms,
independent objects to which the divine demiurge looks as patterns in forming the world. This was later
modified to the religious conception of ideas as the thoughts of God. "It is not a very long step to
extend the term ‘idea’ to cover patterns, blueprints, or plans in anyone's mind, not only in God’s." The
word entered the French and English vernacular in the 1600s and possessed two meanings. The first
was the Platonic meaning of a perfect exemplar or paradigm. The second, which probably has its origin
with Descartes, is of a mental concept or image or, more broadly, any object of the mind when it is
active. Objects of thought may exist independently. The sun exists (probably) before and after you
think of it. But it is also possible to think of things that have never existed, such as a unicorn or
Pegasus. John Locke defined ideas very comprehensively, to include: all objects of the mind.
Language was a way of translating the invisible, hidden ideas that make up a person’s thoughts into
the external, perceptible world of articulate sounds and visible written symbols that others can
understand.86 (Citations omitted) There is no one legal definition of "idea" in this jurisdiction. The term
"idea" is mentioned only once in the Intellectual Property Code.87 In Joaquin, Jr. v. Drilon,88 a
television format (i.e., a dating show format) is not copyrightable under Section 2 of Presidential
Decree No. 49;89 it is a mere concept:
P.D. No. 49, §2, in enumerating what are subject to copyright, refers to finished works and not to
concepts. The copyright does not extend to an idea, procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or
embodied in such work. Thus, the new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES
provides:
SEC. 175. Unprotected Subject Matter.—Notwithstanding the provisions of Sections 172 and 173, no
protection shall extend, under this law, to any idea, procedure, system, method or operation, concept,
principle, discovery or mere data as such, even if they are expressed, explained, illustrated or
embodied in a work; news of the day and other miscellaneous facts having the character of mere items
of press information; or any official text of a legislative, administrative or legal nature, as well as any
official translation thereof.
What then is the subject matter of petitioners’ copyright? This Court is of the opinion that petitioner
BJPI’s copyright covers audio-visual recordings of each episode of Rhoda and Me, as falling within the
class of works mentioned in P.D. 49, §2(M),to wit:
Cinematographic works and works produced by a process analogous to cinematography or any
process for making audio-visual recordings;
The copyright does not extend to the general concept or format of its dating game show. Accordingly,
by the very nature of the subject of petitioner BJPI’s copyright, the investigating prosecutor should
have the opportunity to compare the videotapes of the two shows.
Mere description by words of the general format of the two dating game shows is insufficient; the
presentation of the master videotape in evidence was indispensable to the determination of the
existence of probable cause. As aptly observed by respondent Secretary of Justice:
A television show includes more than mere words can describe because it involves a whole spectrum
of visuals and effects, video and audio, such that no similarity or dissimilarity may be found by merely
describing the general copyright/format of both dating game shows.90 (Emphasis supplied, citations
omitted)
Ideas can be either abstract or concrete.91 It is the concrete ideas that are generally referred to as
expression:
The words "abstract" and "concrete" arise in many cases dealing with the idea/expression distinction.
The Nichols court, for example, found that the defendant’s film did not infringe the plaintiff’s play
because it was "too generalized an abstraction from what plaintiff wrote . . . only a part of her ideas." In
Eichel v. Marcin, the court said that authors may exploit facts, experiences, field of thought, and
general ideas found in another’s work, "provided they do not substantially copy a concrete form, in
which the circumstances and ideas have been developed, arranged, and put into shape." Judge Hand,
in National Comics Publications, Inc. v. Fawcett Publications, Inc. said that "no one infringes, unless he
descends so far into what is concrete as to invade. . . ‘expression.’"
These cases seem to be distinguishing "abstract" ideas from "concrete" tangible embodiments of these
abstractions that may be termed expression. However, if the concrete form of a work means more than
the literal expression contained within it, it is difficult to determine what is meant by "concrete."
Webster's New Twentieth Century Dictionary of the English Language provides several meanings for
the word concrete. These include: "having a material, perceptible existence; of, belonging to, or
characterized by things or events that can be perceived by the senses; real; actual;" and "referring to a
particular; specific, not general or abstract."92
In Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated,93 this court, citing the American case
of Baker v. Selden, distinguished copyright from patents and illustrated how an idea or concept is
different from the expression of that idea:
In the oft-cited case of Baker vs. Selden, the United States Supreme Court held that only the
expression of an idea is protected by copyright, not the idea itself. In that case, the plaintiff held the
copyright of a book which expounded on a new accounting system he had developed. The publication
illustrated blank forms of ledgers utilized in such a system. The defendant reproduced forms similar to
those illustrated in the plaintiff’s copyrighted book. The US Supreme Court ruled that:
"There is no doubt that a work on the subject of book-keeping, though only explanatory of well known
systems, may be the subject of a copyright; but, then, it is claimed only as a book. x x x But there is a
clear distinction between the books, as such, and the art, which it is, intended to illustrate. The mere
statement of the proposition is so evident that it requires hardly any argument to support it. The same
distinction may be predicated of every other art as well as that of bookkeeping.
A treatise on the composition and use of medicines, be they old or new; on the construction and use of
ploughs or watches or churns; or on the mixture and application of colors for painting or dyeing; or on
the mode of drawing lines to produce the effect of perspective, would be the subject of copyright; but
no one would contend that the copyright of the treatise would give the exclusive right to the art or
manufacture described therein. The copyright of the book, if not pirated from other works, would be
valid without regard to the novelty or want of novelty of its subject matter. The novelty of the art or thing
described or explained has nothing to do with the validity of the copyright. To give to the author of the
book an exclusive property in the art described therein, when no examination of its novelty has ever
been officially made, would be a surprise and a fraud upon the public. That is the province of letters
patent, not of copyright. The claim to an invention of discovery of an art or manufacture must be
subjected to the examination of the Patent Office before an exclusive right therein can be obtained;
and a patent from the government can only secure it.
The difference between the two things, letters patent and copyright, may be illustrated by reference to
the subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great
value in the healing art. If the discoverer writes and publishes a book on the subject (as regular
physicians generally do), he gains no exclusive right to the manufacture and sale of the medicine; he
gives that to the public. If he desires to acquire such exclusive right, he must obtain a patent for the
mixture as a new art, manufacture or composition of matter. He may copyright his book, if he pleases;
but that only secures to him the exclusive right of printing and publishing his book. So of all other
inventions or discoveries.
The copyright of a book on perspective, no matter how many drawings and illustrations it may contain,
gives no exclusive right to the modes of drawing described, though they may never have been known
or used before. By publishing the book without getting a patent for the art, the latter is given to the
public.
....
Now, whilst no one has a right to print or publish his book, or any material part thereof, as a book
intended to convey instruction in the art, any person may practice and use the art itself which he has
described and illustrated therein. The use of the art is a totally different thing from a publication of the
book explaining it. The copyright of a book on bookkeeping cannot secure the exclusive right to make,
sell and use account books prepared upon the plan set forth in such book. Whether the art might or
might not have been patented, is a question, which is not before us. It was not patented, and is open
and free to the use of the public. And, of course, in using the art, the ruled lines and headings of
accounts must necessarily be used as incident to it.
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, which have been made the
subject of copyright. In describing the art, the illustrations and diagrams employed happened to
correspond more closely than usual with the actual work performed by the operator who uses the art. x
x x The description of the art in a book, though entitled to the benefit of copyright, lays no foundation
for an exclusive claim to the art itself. The object of the one is explanation; the object of the other is
use. The former may be secured by copyright. The latter can only be secured, if it can be secured at
all, by letters patent."94 (Emphasis supplied)
News or the event itself is not copyrightable. However, an event can be captured and presented in a
specific medium. As recognized by this court in Joaquin, television "involves a whole spectrum of
visuals and effects, video and audio."95 News coverage in television involves framing shots, using
images, graphics, and sound effects.96 It involves creative process and originality. Television news
footage is an expression of the news.
In the United States, a line of cases dwelt on the possibility of television newscasts to be
copyrighted.97 Most of these cases focused on private individuals’ sale or resale of tapes of news
broadcasts. Conflicting decisions were rendered by its courts. Noteworthy, however, is the District
Court’s pronouncement in Pacific & Southern Co. v. Duncan,98 which involves a News Monitoring
Service’s videotaping and sale of WXIA-TV’s news broadcasts:
It is axiomatic that copyright protection does not extend to news "events" or the facts or ideas which
are the subject of news reports. Miller v. Universal City Studios, Inc., 650 F.2d 1365, 1368 (5th Cir.
1981); Wainwright Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d 91, 95 (2d Cir. 1977), cert.
denied, 434 U.S. 1014, 98 S.Ct. 730, 54 L.Ed.2d 759 (1978). But it is equally well-settled that copyright
protection does extend to the reports themselves, as distinguished from the substance of the
information contained in the reports. Wainwright, 558 F.2d at 95; International News Service v.
Associated Press, 248 U.S. 215, 39 S.Ct. 68, 63 L.Ed. 211 (1918); see Chicago Record-Herald Co. v.
Tribune Assn., 275 F. 797 (7th Cir.1921); 1 Nimmer on Copyright § 2.11[B] (1983). Copyright protects
the manner of expression of news reports, "the particular form or collocation of words in which the
writer has communicated it." International News Service, 248 U.S. at 234, 39 S.Ct. at 70. Such
protection extends to electronic news reports as well as written reports. See17 U.S.C. § 102(a) (5), (6),
and (7); see also Iowa State University Research Foundations, Inc. v. American Broadcasting Cos.,
621 F.2d 57, 61 (2d Cir. 1980).99 (Emphasis supplied)
The idea/expression dichotomy has long been subject to debate in the field of copyright law. Abolishing
the dichotomy has been proposed, in that non-protectibility of ideas should be re-examined, if not
stricken, from decisions and the law:
If the underlying purpose of the copyright law is the dual one expressed by Lord Mansfield, the only
excuse for the continuance of the idea-expression test as a judicial standard for determining
protectibility would be that it was or could be a truly useful method of determining the proper balance
between the creator’s right to profit from his work and the public's right that the "progress of the arts not
be retarded."
. . . [A]s used in the present-day context[,] the dichotomy has little or no relationship to the policy which
it should effectuate. Indeed, all too often the sweeping language of the courts regarding the non-
protectibility of ideas gives the impression that this is of itself a policy of the law, instead of merely a
clumsy and outdated tool to achieve a much more basic end.100
The idea/expression dichotomy is a complex matter if one is trying to determine whether a certain
material is a copy of another.101 This dichotomy would be more relevant in determining, for instance,
whether a stage play was an infringement of an author’s book involving the same characters and
setting. In this case, however, respondents admitted that the material under review — which is the
subject of the controversy — is an exact copy of the original. Respondents did not subject ABS-CBN’s
footage to any editing of their own. The news footage did not undergo any transformation where there
is a need to track elements of the original.
Having established the protectible nature of news footage, we now discuss the concomitant rights
accorded to authors. The authors of a work are granted several rights in relation to it, including
copyright or economic rights:
SECTION 177. Copyright or Economic Rights. — Subject to the provisions of Chapter VIII, copyright or
economic rights shall consist of the exclusive right to carry out, authorize or prevent the following acts:
177.1. Reproduction of the work or substantial portion of the work;
177.2. Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the
work;
177.3. The first public distribution of the original and each copy of the work by sale or other forms of
transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in
a sound recording, a computer program, a compilation of data and other materials or a musical work in
graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental;
(n)
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the work.(Sec. 5, P. D. No. 49a) (Emphasis supplied)
Under Section 211 of the Intellectual Property Code, broadcasting organizations are granted a more
specific set of rights called related or neighboring rights:
SECTION 211. Scope of Right. — Subject to the provisions of Section 212, broadcasting organizations
shall enjoy the exclusive right to carry out, authorize or prevent any of the following acts:
211.1. The rebroadcasting of their broadcasts;
211.2. The recording in any manner, including the making of films or the use of video tape, of their
broadcasts for the purpose of communication to the public of television broadcasts of the same; and
211.3. The use of such records for fresh transmissions or for fresh recording. (Sec. 52, P.D. No. 49)
(Emphasis supplied)
Section 212 of the Code provides:
CHAPTER XV
LIMITATIONS ON PROTECTION
Section 212. Limitations on Rights. - Sections 203, 208 and 209 shall not apply where the acts referred
to in those Sections are related to:
212.1. The use by a natural person exclusively for his own personal purposes;
212.2. Using short excerpts for reporting current events;
212.3. Use solely for the purpose of teaching or for scientific research; and
212.4. Fair use of the broadcast subject to the conditions under Section 185. (Sec. 44, P.D. No. 49a)
The Code defines what broadcasting is and who broadcasting organizations include:
202.7. "Broadcasting" means the transmission by wireless means for the public reception of sounds or
of images or of representations thereof; such transmission by satellite is also "broadcasting" where the
means for decrypting are provided to the public by the broadcasting organization or with its consent;
202.8. "Broadcasting organization" shall include a natural person or a juridical entity duly authorized to
engage in broadcasting[.]
Developments in technology, including the process of preserving once ephemeral works and
disseminating them, resulted in the need to provide a new kind of protection as distinguished from
copyright.102 The designation "neighboring rights" was abbreviated from the phrase "rights
neighboring to copyright."103 Neighboring or related rights are of equal importance with copyright as
established in the different conventions covering both kinds of rights.104
Several treaties deal with neighboring or related rights of copyright.105 The most prominent of these is
the "International Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations" (Rome Convention).106
The Rome Convention protects the rights of broadcasting organizations in relation to their broadcasts.
Article XIII of the Rome Convention enumerates the minimum rights accorded to broadcasting
organizations:
Article 13
Minimum Rights for Broadcasting Organizations
Broadcasting organisations shall enjoy the right to authorize or prohibit:
(a) the rebroadcasting of their broadcasts;
(b) the fixation of their broadcasts;
(c) the reproduction:
(i) of fixations, made without their consent, of their broadcasts;
(ii) of fixations, made in accordance with the provisions of Article 15, of their broadcasts, if the
reproduction is made for purposes different from those referred to in those provisions;
(d) the communication to the public of their television broadcasts if such communication is made in
places accessible to the public against payment of an entrance fee; it shall be a matter for the domestic
law of the State where protection of this right is claimed to determine the conditions under which it may
be exercised.
With regard to the neighboring rights of a broadcasting organization in this jurisdiction, this court has
discussed the difference between broadcasting and rebroadcasting:
Section 202.7 of the IP Code defines broadcasting as "the transmission by wireless means for the
public reception of sounds or of images or of representations thereof; such transmission by satellite is
also ‘broadcasting’ where the means for decrypting are provided to the public by the broadcasting
organization or with its consent."
On the other hand, rebroadcasting as defined in Article 3(g) of the International Convention for the
Protection of Performers, Producers of Phonograms and Broadcasting Organizations, otherwise known
as the 1961 Rome Convention, of which the Republic of the Philippines is a signatory, is "the
simultaneous broadcasting by one broadcasting organization of the broadcast of another broadcasting
organization."
....
Under the Rome Convention, rebroadcasting is "the simultaneous broadcasting by one broadcasting
organization of the broadcast of another broadcasting organization." The Working Paper prepared by
the Secretariat of the Standing Committee on Copyright and Related Rights defines broadcasting
organizations as "entities that take the financial and editorial responsibility for the selection and
arrangement of, and investment in, the transmitted content."107 (Emphasis in the original, citations
omitted)
Broadcasting organizations are entitled to several rights and to the protection of these rights under the
Intellectual Property Code. Respondents’ argument that the subject news footage is not copyrightable
is erroneous. The Court of Appeals, in its assailed Decision, correctly recognized the existence of ABS-
CBN’s copyright over the news footage:
Surely, private respondent has a copyright of its news coverage. Seemingly, for airing said video feed,
petitioner GMA is liable under the provisions of the Intellectual Property Code, which was enacted
purposely to protect copyright owners from infringement.108
News as expressed in a video footage is entitled to copyright protection. Broadcasting organizations
have not only copyright on but also neighboring rights over their broadcasts. Copyrightability of a work
is different from fair use of a work for purposes of news reporting.
VI
ABS-CBN assails the Court of Appeals’ ruling that the footage shown by GMA-7 falls under the scope
of Section 212.2 and 212.4 of the Intellectual Property Code:
The evidence on record, as well as the discussions above, show that the footage used by[respondents]
could hardlybe characterized as a short excerpt, as it was aired over one and a half minutes.
Furthermore, the footage used does not fall under the contemplation of Section 212.2 of the Intellectual
Property Code. A plain reading of the provision would reveal that copyrighted material referred to in
Section 212 are short portions of an artist’s performance under Section 203, or a producer’s sound
recordings under Sections 208 and 209. Section 212 does not refer to actual use of video footage of
another as its own.
The Angelo dela Cruz footage does not fall under the rule on Section 212.4 of the Intellectual Property
Code on fair use of the broadcast.
....
In determining fair use, several factors are considered, including the nature of the copyrighted work,
and the amount and substantiality of the person used in relation to the copyrighted work as a whole.
In the business of television news reporting, the nature of the copyrighted work or the video footages,
are such that, footage created, must be a novelty to be a good report. Thus, when the . . . Angelo dela
Cruz footage was used by [respondents], the novelty of the footage was clearly affected.
Moreover, given that a substantial portion of the Angelo dela Cruz footage was utilized by GMA-7 for
its own, its use can hardly be classified as fair use.
Hence, [respondents] could not be considered as having used the Angelo dela Cruz [footage] following
the provisions on fair use.
It is also worthy to note that the Honorable Court of Appeals seem to contradict itself when it relied on
the provisions of fair use in its assailed rulings considering that it found that the Angelo dela Cruz
footage is not copyrightable, given that the fair use presupposes an existing copyright. Thus, it is
apparent that the findings of the Honorable Court of Appeals are erroneous and based on wrong
assumptions.109 (Underscoring in the original)
On the other hand, respondents counter that GMA-7’s use of ABS-CBN’s news footage falls under fair
use as defined in the Intellectual Property Code. Respondents, citing the Court of Appeals Decision,
argue that a strong statutory defense negates any finding of probable cause under the same
statute.110 The Intellectual Property Code provides that fair use negates infringement.
Respondents point out that upon seeing ABS-CBN’s reporter Dindo Amparo on the footage, GMA-7
immediately shut off the broadcast. Only five (5) seconds passed before the footage was cut. They
argue that this shows that GMA-7 had no prior knowledge of ABS-CBN’s ownership of the footage or
was notified of it. They claim that the Angelo dela Cruz footage is considered a short excerpt of an
event’s "news" footage and is covered by fair use.111
Copyright protection is not absolute.112 The Intellectual Property Code provides the limitations on
copyright:
CHAPTER VIII
LIMITATIONS ON COPYRIGHT
Section 184. Limitations on Copyright. - 184.1. Notwithstanding the provisions of Chapter V, the
following acts shall not constitute infringement of copyright:
....
184.2. The provisions of this section shall be interpreted in such a way as to allow the work to be used
in a manner which does not conflict with the normal exploitation of the work and does not unreasonably
prejudice the right holder's legitimate interests.
....
CHAPTER XV
LIMITATIONS ON PROTECTION
Section 212. Limitations on Rights. - Sections 203, 208 and 209 shall not apply where the acts referred
to in those Sections are related to:
....
212.2. Using short excerpts for reporting current events;
....
212.4. Fair use of the broadcast subject to the conditions under Section 185.(Sec. 44, P.D. No. 49a)
(Emphasis supplied)
The determination of what constitutes fair use depends on several factors. Section 185 of the
Intellectual Property Code states:
SECTION 185. Fair Use of a Copyrighted Work. —
185.1. The fair use of a copyrighted work for criticism, comment, news reporting, teaching including
multiple copies for classroom use, scholarship, research, and similar purposes is not an infringement of
copyright. . . . In determining whether the use made of a work in any particular case is fair use, the
factors to be considered shall include:
a. The purpose and character of the use, including whether such use is of a commercial nature or is for
non-profit educational purposes;
b. The nature of the copyrighted work
c. The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
d. The effect of the use upon the potential market for or value of the copyrighted work. Respondents
allege that the news footage was only five (5) seconds long, thus falling under fair use. ABS-CBN
belies this contention and argues that the footage aired for two (2) minutes and 40 seconds.113
According to the Court of Appeals, the parties admitted that only five (5) seconds of the news footage
was broadcasted by GMA-7.114
This court defined fair use as "aprivilege 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."115 Fair use is an exception to the copyright owner’s monopoly of the use of the work to
avoid stifling "the very creativity which that law is designed to foster."116
Determining fair use requires application of the four-factor test. Section 185 of the Intellectual Property
Code lists four (4) factors to determine if there was fair use of a copyrighted work:
a. The purpose and character of the use, including whether such use is of a commercial nature or is for
non-profit educational purposes;
b. The nature of the copyrighted work;
c. The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
d. The effect of the use upon the potential market for or value of the copyrighted work.
First, the purpose and character of the use of the copyrighted material must fall under those listed in
Section 185, thus: "criticism, comment, news reporting, teaching including multiple copies for
classroom use, scholarship, research, and similar purposes."117 The purpose and character
requirement is important in view of copyright’s goal to promote creativity and encourage creation of
works. Hence, commercial use of the copyrighted work can be weighed against fair use.
The "transformative test" is generally used in reviewing the purpose and character of the usage of the
copyrighted work.118 This court must look into whether the copy of the work adds "new expression,
meaning or message" to transform it into something else.119 "Meta-use" can also occur without
necessarily transforming the copyrighted work used.120
Second, the nature of the copyrighted work is significant in deciding whether its use was fair. If the
nature of the work is more factual than creative, then fair use will be weighed in favor of the user.
Third, the amount and substantiality of the portion used is important to determine whether usage falls
under fair use. An exact reproduction of a copyrighted work, compared to a small portion of it, can
result in the conclusion that its use is not fair. There may also be cases where, though the entirety of
the copyrighted work is used without consent, its purpose determines that the usage is still fair.121 For
example, a parody using a substantial amount of copyrighted work may be permissible as fair use as
opposed to a copy of a work produced purely for economic gain. Lastly, the effect of the use on the
copyrighted work’s market is also weighed for or against the user. If this court finds that the use had or
will have a negative impact on the copyrighted work’s market, then the use is deemed unfair.
The structure and nature of broadcasting as a business requires assigned values for each second of
broadcast or airtime. In most cases, broadcasting organizations generate revenue through sale of time
or timeslots to advertisers, which, in turn, is based on market share:122 Once a news broadcast has
been transmitted, the broadcast becomes relatively worthless to the station. In the case of the aerial
broadcasters, advertising sales generate most of the profits derived from news reports. Advertising
rates are, in turn, governed by market share. Market share is determined by the number of people
watching a show at any particular time, relative to total viewers at that time. News is by nature time-
limited, and so re-broadcasts are generally of little worth because they draw few viewers. Newscasts
compete for market share by presenting their news in an appealing format that will capture a loyal
audience. Hence, the primary reason for copyrighting newscasts by broadcasters would seem to be to
prevent competing stations from rebroadcasting current news from the station with the best coverage
of a particular news item, thus misappropriating a portion of the market share.
Of course, in the real world there are exceptions to this perfect economic view. However, there are also
many caveats with these exceptions. A common exception is that some stations rebroadcast the news
of others. The caveat is that generally, the two stations are not competing for market share. CNN, for
example, often makes news stories available to local broadcasters. First, the local broadcaster is often
not affiliated with a network (hence its need for more comprehensive programming), confining any
possible competition to a small geographical area. Second, the local broadcaster is not in competition
with CNN. Individuals who do not have cable TV (or a satellite dish with decoder) cannot receive CNN;
therefore there is no competition. . . . Third, CNN sells the right of rebroadcast to the local stations. Ted
Turner, owner of CNN, does not have First Amendment freedom of access argument foremost on his
mind. (Else he would give everyone free cable TV so everyone could get CNN.) He is in the business
for a profit. Giving away resources does not a profit make.123 (Emphasis supplied)
The high value afforded to limited time periods is also seen in other media. In social media site
Instagram, users are allowed to post up to only 15 seconds of video.124 In short-video sharing website
Vine,125 users are allowed a shorter period of six (6) seconds per post. The mobile application 1
Second Everyday takes it further by capturing and stitching one (1) second of video footage taken daily
over a span of a certain period.126
Whether the alleged five-second footage may be considered fair use is a matter of defense. We
emphasize that the case involves determination of probable cause at the preliminary investigation
stage. Raising the defense of fair use does not automatically mean that no infringement was
committed. The investigating prosecutor has full discretion to evaluate the facts, allegations, and
evidence during preliminary investigation. Defenses raised during preliminary investigation are subject
to further proof and evaluation before the trial court. Given the insufficiency of available evidence,
determination of whether the Angelo dela Cruz footage is subject to fair use is better left to the trial
court where the proceedings are currently pending. GMA-7’s rebroadcast of ABS-CBN’s news footage
without the latter’s consent is not an issue. The mere act of rebroadcasting without authority from the
owner of the broadcast gives rise to the probability that a crime was committed under the Intellectual
Property Code.
VII
Respondents cannot invoke the defense of good faith to argue that no probable cause exists.
Respondents argue that copyright infringement is malum in se, in that "[c]opying alone is not what is
being prohibited, but its injurious effect which consists in the lifting from the copyright owners’ film or
materials, that were the result of the latter’s creativity, work and productions and without authority,
reproduced, sold and circulated for commercial use to the detriment of the latter."127
Infringement under the Intellectual Property Code is malum prohibitum. The Intellectual Property Code
is a special law. Copyright is a statutory creation:
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right
granted by the statute, and not simply a pre-existing right regulated by the statute. Being a statutory
grant, the rights are only such as the statute confers, 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.128
The general rule is that acts punished under a special law are malum prohibitum.129 "An act which is
declared malum prohibitum, malice or criminal intent is completely immaterial."130
In contrast, crimes mala in seconcern inherently immoral acts:
Not every criminal act, however, involves moral turpitude. It is for this reason that "as to what crime
involves moral turpitude, is for the Supreme Court to determine". In resolving the foregoing question,
the Court is guided by one of the general rules that crimes mala in se involve moral turpitude, while
crimes mala prohibita do not, the rationale of which was set forth in "Zari v. Flores," to wit:
It (moral turpitude) implies something immoral in itself, regardless of the fact that it is punishable by law
or not. It must not be merely mala prohibita, but the act itself must be inherently immoral. The doing of
the act itself, and not its prohibition by statute fixes the moral turpitude. Moral turpitude does not,
however, include such acts as are not of themselves immoral but whose illegality lies in their being
positively prohibited. (Emphasis supplied)
[These] guidelines nonetheless proved short of providing a clear cut solution, for in International Rice
Research Institute v. NLRC, the Court admitted that it cannot always be ascertained whether moral
turpitude does or does not exist by merely classifying a crime as malum in se or as malum prohibitum.
There are crimes which are mala in se and yet but rarely involve moral turpitude and there are crimes
which involve moral turpitude and are mala prohibita only. In the final analysis, whether or not a crime
involves moral turpitude is ultimately a question of fact and frequently depends on all the
circumstances surrounding the violation of the statue.131 (Emphasis in the original)
"Implicit in the concept of mala in se is that of mens rea."132 Mens reais defined as "the nonphysical
element which, combined with the act of the accused, makes up the crime charged. Most frequently it
is the criminal intent, or the guilty mind[.]"133
Crimes mala in sepre suppose that the person who did the felonious act had criminal intent to do so,
while crimes mala prohibita do not require knowledge or criminal intent:
In the case of mala in se it is necessary, to constitute a punishable offense, for the person doing the
act to have knowledge of the nature of his act and to have a criminal intent; in the case of mala
prohibita, unless such words as "knowingly" and "willfully" are contained in the statute, neither
knowledge nor criminal intent is necessary. In other words, a person morally quite innocent and with
every intention of being a law abiding citizen becomes a criminal, and liable to criminal penaltes, if he
does an act prohibited by these statutes.134 (Emphasis supplied) Hence, "[i]ntent to commit the crime
and intent to perpetrate the act must be distinguished. A person may not have consciously intended to
commit a crime; but he did intend to commit an act, and that act is, by the very nature of things, the
crime itself[.]"135 When an act is prohibited by a special law, it is considered injurious to public welfare,
and the performance of the prohibited act is the crime itself.136
Volition, or intent to commit the act, is different from criminal intent. Volition or voluntariness refers to
knowledge of the act being done. On the other hand, criminal intent — which is different from motive,
or the moving power for the commission of the crime137 — refers to the state of mind beyond
voluntariness. It is this intent that is being punished by crimes mala in se.
Unlike other jurisdictions that require intent for a criminal prosecution of copyright infringement, the
Philippines does not statutorily support good faith as a defense. Other jurisdictions provide in their
intellectual property codes or relevant laws that mens rea, whether express or implied, is an element of
criminal copyright infringement.138
In Canada, criminal offenses are categorized under three (3) kinds: "the full mens rea offence, meaning
the accused’s actual or subjective state of mind has to be proved; strict liability offences where no
mens rea has to be proved but the accused can avoid liability if he can prove he took all reasonable
steps to avoid the particular event; [and] absolute liability offences where Parliament has made it clear
that guilt follows proof of the prescribed act only."139 Because of the use of the word "knowingly" in
Canada’s Copyright Act, it has been held that copyright infringement is a full mens rea offense.140
In the United States, willful intent is required for criminal copyright infringement.141 Before the
passage of the No Electronic Theft Act, "civil copyright infringements were violations of criminal
copyright laws only if a defendant willfully infringed a copyright ‘for purposes of commercial advantage
or private financial gain.’"142 However, the No Electronic Theft Act now allows criminal copyright
infringement without the requirement of commercial gain. The infringing act may or may not be for
profit.143
There is a difference, however, between the required liability in civil copyright infringement and that in
criminal copyright infringement in the United States. Civil copyright infringement does not require
culpability and employs a strict liability regime144 where "lack of intention to infringe is not a defense to
an action for infringement."145
In the Philippines, the Intellectual Property Code, as amended, provides for the prosecution of criminal
actions for the following violations of intellectual property rights: Repetition of Infringement of Patent
(Section 84); Utility Model (Section 108); Industrial Design (Section 119); Trademark Infringement
(Section 155 in relation to Section 170); Unfair Competition (Section 168 in relation to Section 170);
False Designations of Origin, False Description or Representation (Section 169.1 in relation to Section
170); infringement of copyright, moral rights, performers’ rights, producers’ rights, and broadcasting
rights (Section 177, 193, 203, 208 and 211 in relation to Section 217); and other violations of
intellectual property rights as may be defined by law.
The Intellectual Property Code requires strict liability for copyright infringement whether for a civil
action or a criminal prosecution; it does not require mens rea or culpa:146
SECTION 216. Remedies for Infringement. —
216.1. Any person infringing a right protected under this law shall be liable:
a. To an injunction restraining such infringement. The court may also order the defendant to desist
from an infringement, among others, to prevent the entry into the channels of commerce of imported
goods that involve an infringement, immediately after customs clearance of such goods.
b. Pay to the copyright proprietor or his assigns or heirs such actual damages, including legal costs
and other expenses, as he may have incurred due to the infringement as well as the profits the
infringer may have made due to such infringement, and in proving profits the plaintiff shall be required
to prove sales only and the defendant shall be required to prove every element of cost which he
claims, or, in lieu of actual damages and profits, such damages which to the court shall appear to be
just and shall not be regarded as penalty.
c. Deliver under oath, for impounding during the pendency of the action, upon such terms and
conditions as the court may prescribe, sales invoices and other documents evidencing sales, all
articles and their packaging alleged to infringe a copyright and implements for making them.
d. Deliver under oath for destruction without any compensation all infringing copies or devices, as well
as all plates, molds, or other means for making such infringing copies as the court may order.
e. Such other terms and conditions, including the payment of moral and exemplary damages, which
the court may deem proper, wise and equitable and the destruction of infringing copies of the work
even in the event of acquittal in a criminal case.
216.2. In an infringement action, the court shall also have the power to order the seizure and
impounding of any article which may serve as evidence in the court proceedings. (Sec. 28, P.D. No.
49a)
SECTION 217. Criminal Penalties. — 217.1. Any person infringing any right secured by provisions of
Part IV of this Actor aiding or abetting such infringement shall be guilty of a crime punishable by:
a. Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand pesos
(₱50,000) to One hundred fifty thousand pesos (₱150,000) for the first offense.
b. Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging from One
hundred fifty thousand pesos (₱150,000) to Five hundred thousand pesos (₱500,000) for the second
offense.
c. Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging from Five hundred
thousand pesos (₱500,000) to One million five hundred thousand pesos (₱1,500,000) for the third and
subsequent offenses.
d. In all cases, subsidiary imprisonment in cases of insolvency.
217.2. In determining the number of years of imprisonment and the amount of fine, the court shall
consider the value of the infringing materials that the defendant has produced or manufactured and the
damage that the copyright owner has suffered by reason of the infringement.
217.3. Any person who at the time when copyright subsists in a work has in his possession an article
which he knows, or ought to know, to be an infringing copy of the work for the purpose of: a. Selling,
letting for hire, or by way of trade offering or exposing for sale, or hire, the article;
b. Distributing the article for purpose of trade, or for any other purpose to an extent that will prejudice
the rights of the copyright owner in the work; or
c. Trade exhibit of the article in public, shall be guilty of an offense and shall be liable on conviction to
imprisonment and fine as above mentioned. (Sec. 29, P.D. No. 49a) (Emphasis supplied)
The law is clear. Inasmuch as there is wisdom in prioritizing the flow and exchange of ideas as
opposed to rewarding the creator, it is the plain reading of the law in conjunction with the actions of the
legislature to which we defer. We have continuously "recognized the power of the legislature . . . to
forbid certain acts in a limited class of cases and to make their commission criminal without regard to
the intent of the doer. Such legislative enactments are based on the experience that repressive
measures which depend for their efficiency upon proof of the dealer’s knowledge or of his intent are of
little use and rarely accomplish their purposes."147
Respondents argue that live broadcast of news requires a different treatment in terms of good faith,
intent, and knowledge to commit infringement. To argue this point, they rely on the differences of the
media used in Habana et al. v. Robles, Columbia Pictures v. Court of Appeals, and this case:
Petitioner ABS-CBN argues that lack of notice that the Angelo dela Cruz was under embargo is not a
defense in copyright infringement and cites the case of Columbia Pictures vs. Court of Appeals and
Habana et al. vs. Robles(310 SCRA 511). However, these cases refer to film and literary work where
obviously there is "copying" from an existing material so that the copier knew that he is copying from
an existing material not owned by him. But, how could respondents know that what they are "copying
was not [theirs]" when they were not copying but merely receiving live video feed from Reuters and
CNN which they aired? What they knew and what they aired was the Reuters live video feed and the
CNN feed which GMA-7 is authorized to carry in its news broadcast, it being a subscriber of these
companies[.]
It is apt to stress that the subject of the alleged copyright infringement is not a film or literary work but
live broadcast of news footage. In a film or literary work, the infringer is confronted face to face with the
material he is allegedly copying and therefore knows, or is presumed to know, that what he is copying
is owned by another. Upon the other hand, in live broadcast, the alleged infringer is not confronted with
the fact that the material he airs or re-broadcasts is owned by another, and therefore, he cannot be
charged of knowledge of ownership of the material by another. This specially obtains in the Angelo
dela Cruz news footage which GMA-7 received from Reuters and CNN. Reuters and CNN were
beaming live videos from the coverage which GMA-7 received as a subscriber and, in the exercise of
its rights as a subscriber, GMA-7 picked up the live video and simultaneously re-broadcast it. In
simultaneously broadcasting the live video footage of Reuters, GMA-7 did not copy the video footage
of petitioner ABS-CBN[.]148 (Emphasis in the original)
Respondents’ arguments must fail.
Respondents are involved and experienced in the broadcasting business. They knew that there would
be consequences in carrying ABS-CBN’s footage in their broadcast. That is why GMA-7 allegedly cut
the feed from Reuters upon seeing ABS-CBN’s ogo and reporter. To admit a different treatment for
broadcasts would mean abandonment of a broadcasting organization’s minimum rights, including
copyright on the broadcast material and the right against unauthorized rebroadcast of copyrighted
material. The nature of broadcast technology is precisely why related or neighboring rights were
created and developed. Carving out an exception for live broadcasts would go against our
commitments under relevant international treaties and agreements, which provide for the same
minimum rights.149
Contrary to respondents’ assertion, this court in Habana,150 reiterating the ruling in Columbia
Pictures,151 ruled that lack of knowledge of infringement is not a valid defense. Habana and Columbia
Pictures may have different factual scenarios from this case, but their rulings on copyright infringement
are analogous. In Habana, petitioners were the authors and copyright owners of English textbooks and
workbooks. The case was anchored on the protection of literary and artistic creations such as books. In
Columbia Pictures, video tapes of copyrighted films were the subject of the copyright infringement suit.
In Habana, knowledge of the infringement is presumed when the infringer commits the prohibited act:
The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its
gravity by an appropriate understanding thereof. Infringement of a copyright is a trespass on a private
domain owned and occupied by the owner of the copyright, and, therefore, protected by law, and
infringement of copyright, or piracy, which is a synonymous term in this connection, consists in the
doing by any person, without the consent of the owner of the copyright, of anything the sole right to do
which is conferred by statute on the owner of the copyright.
....
A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such cases,
did not know whether or not he was infringing any copyright; he at least knew that what he was copying
was not his, and he copied at his peril.
....
In cases of infringement, copying alone is not what is prohibited. The copying must produce an
"injurious effect". Here, the injury consists in that respondent Robles lifted from petitioners’ book
materials that were the result of the latter’s research work and compilation and misrepresented them
as her own. She circulated the book DEP for commercial use and did not acknowledge petitioners as
her source.152 (Emphasis supplied)
Habana and Columbia Pictures did not require knowledge of the infringement to constitute a violation
of the copyright. One does not need to know that he or she is copying a work without consent to violate
copyright law. Notice of fact of the embargo from Reuters or CNN is not material to find probable cause
that respondents committed infringement. Knowledge of infringement is only material when the person
is charged of aiding and abetting a copyright infringement under Section 217 of the Intellectual
Property Code.153
We look at the purpose of copyright in relation to criminal prosecutions requiring willfulness: Most
importantly, in defining the contours of what it means to willfully infringe copyright for purposes of
criminal liability, the courts should remember the ultimate aim of copyright. Copyright is not primarily
about providing the strongest possible protection for copyright owners so that they have the highest
possible incentive to create more works. The control given to copyright owners is only a means to an
end: the promotion of knowledge and learning. Achieving that underlying goal of copyright law also
requires access to copyrighted works and it requires permitting certain kinds of uses of copyrighted
works without the permission of the copyright owner. While a particular defendant may appear to be
deserving of criminal sanctions, the standard for determining willfulness should be set with reference to
the larger goals of copyright embodied in the Constitution and the history of copyright in this
country.154
In addition, "[t]he essence of intellectual piracy should be essayed in conceptual terms in order to
underscore its gravity by an appropriate understanding thereof. Infringement of a copyright is a
trespass on a private domain owned and occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or piracy, which is a synonymous term in this
connection, consists in the doing by any person, without the consent of the owner of the copyright, of
anything the sole right to do which is conferred by statute on the owner of the copyright."155
Intellectual property rights, such as copyright and the neighboring right against rebroadcasting,
establish an artificial and limited monopoly to reward creativity. Without these legally enforceable
rights, creators will have extreme difficulty recovering their costs and capturing the surplus or profit of
their works as reflected in their markets. This, in turn, is based on the theory that the possibility of gain
due to creative work creates an incentive which may improve efficiency or simply enhance consumer
welfare or utility. More creativity redounds to the public good.
These, however, depend on the certainty of enforcement. Creativity, by its very nature, is vulnerable to
the free rider problem. It is easily replicated despite the costs to and efforts of the original creator. The
more useful the creation is in the market, the greater the propensity that it will be copied. The most
creative and inventive individuals are usually those who are unable to recover on their creations.
Arguments against strict liability presuppose that the Philippines has a social, historical, and economic
climate similar to those of Western jurisdictions. As it stands, there is a current need to strengthen
intellectual property protection.
Thus, unless clearly provided in the law, offenses involving infringement of copyright protections should
be considered malum prohibitum. It is the act of infringement, not the intent, which causes the damage.
To require or assume the need to prove intent defeats the purpose of intellectual property protection.
Nevertheless, proof beyond reasonable doubt is still the standard for criminal prosecutions under the
Intellectual Property Code.
VIII
Respondents argue that GMA-7’s officers and employees cannot be held liable for infringement under
the Intellectual Property Code since it does not expressly provide direct liability of the corporate
officers. They explain that "(i) a corporation may be charged and prosecuted for a crime where the
penalty is fine or both imprisonment and fine, and if found guilty, may be fined; or (ii) a corporation may
commit a crime but if the statute prescribes the penalty therefore to be suffered by the corporate
officers, directors or employees or other persons, the latter shall be responsible for the offense."156
Section 217 of the Intellectual Property Code states that "any person" may be found guilty of
infringement. It also imposes the penalty of both imprisonment and fine:
Section 217. Criminal Penalties. - 217.1. Any person infringing any right secured by provisions of Part
IV of this Act or aiding or abetting such infringement shall be guilty of a crime punishable by:
(a) Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand pesos
(₱50,000) to One hundred fifty thousand pesos (₱150,000) for the first offense.
(b) Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging from One
hundred fifty thousand pesos (₱150,000) to Five hundred thousand pesos (₱500,000) for the second
offense.
(c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging from five
hundred thousand pesos (₱500,000) to One million five hundred thousand pesos (₱1,500,000) for the
third and subsequent offenses.
(d) In all cases, subsidiary imprisonment in cases of insolvency. (Emphasis supplied) Corporations
have separate and distinct personalities from their officers or directors.157 This court has ruled that
corporate officers and/or agents may be held individually liable for a crime committed under the
Intellectual Property Code:158
Petitioners, being corporate officers and/or directors, through whose act, default or omission the
corporation commits a crime, may themselves be individually held answerable for the crime. . . . The
existence of the corporate entity does not shield from prosecution the corporate agent who knowingly
and intentionally caused the corporation to commit a crime. Thus, petitioners cannot hide behind the
cloak of the separate corporate personality of the corporation to escape criminal liability. A corporate
officer cannot protect himself behind a corporation where he is the actual, present and efficient
actor.159
However, the criminal liability of a corporation’s officers or employees stems from their active
participation in the commission of the wrongful act:
The principle applies whether or not the crime requires the consciousness of wrongdoing. It applies to
those corporate agents who themselves commit the crime and to those, who, by virtue of their
managerial positions or other similar relation to the corporation, could be deemed responsible for its
commission, if by virtue of their relationship to the corporation, they had the power to prevent the act.
Moreover, all parties active in promoting a crime, whether agents or not, are principals. Whether such
officers or employees are benefited by their delictual acts is not a touchstone of their criminal liability.
Benefit is not an operative fact.160 (Emphasis supplied) An accused’s participation in criminal acts
involving violations of intellectual property rights is the subject of allegation and proof. The showing that
the accused did the acts or contributed in a meaningful way in the commission of the infringements is
certainly different from the argument of lack of intent or good faith. Active participation requires a
showing of overt physical acts or intention to commit such acts. Intent or good faith, on the other hand,
are inferences from acts proven to have been or not been committed.
We find that the Department of Justice committed grave abuse of discretion when it resolved to file the
Information against respondents despite lack of proof of their actual participation in the alleged crime.
Ordering the inclusion of respondents Gozon, GMA-7 President; Duavit, Jr., Executive Vice-President;
Flores, Vice-President for News and Public Affairs; and Soho, Director for News, as respondents,
Secretary Agra overturned the City Prosecutor’s finding that only respondents Dela Peña-Reyes and
Manalastas are responsible for the crime charged due to their duties.161 The Agra Resolution reads:
Thus, from the very nature of the offense and the penalty involved, it is necessary that GMA-7’s
directors, officers, employees or other officers thereof responsible for the offense shall be charged and
penalized for violation of the Sections 177 and 211 of Republic Act No. 8293. In their complaint for
libel, respondents Felipe L Gozon, Gilberto R. Duavit, Jr., Marissa L. Flores, Jessica A.Soho, Grace
Dela Pena-Reyes, John Oliver T. Manalastas felt they were aggrieved because they were "in charge of
the management, operations and production of news and public affairs programs of the network"
(GMA-7). This is clearly an admission on respondents’ part. Of course, respondents may argue they
have no intention to infringe the copyright of ABS-CBN; that they acted in good faith; and that they did
not directly cause the airing of the subject footage, but again this is preliminary investigation and what
is required is simply probable cause. Besides, these contentions can best be addressed in the course
of trial.162 (Citation omitted)
In contrast, the Office of the City Prosecutor, in the Resolution dated December 3, 2004, found that
respondents Gozon, Duavit, Jr., Flores, and Soho did not have active participation in the commission
of the crime charged:
This Office, however, does not subscribe to the view that respondents Atty. Felipe Gozon, Gilberto
Duavit, Marissa Flores and Jessica Soho should be held liable for the said offense. Complainant failed
to present clear and convincing evidence that the said respondents conspired with Reyes and
Manalastas. No evidence was adduced to prove that these respondents had an active participation in
the actual commission of the copyright infringement or they exercised their moral ascendancy over
Reyes and Manalastas in airing the said footage. It must be stressed that, conspiracy must be
established by positive and conclusive evidence. It must be shown to exist as clearly and convincingly
as the commission of the offense itself.163 (Emphasis supplied, citations omitted)
The City Prosecutor found respondents Dela Peña-Reyes and Manalastas liable due to the nature of
their work and responsibilities. He found that:
[t]his Office however finds respondents Grace Dela Peña-Reyes and John Oliver T. Manalastas liable
for copyright infringement penalized under Republic Act No. 8293. It is undisputed that complainant
ABSCBN holds the exclusive ownership and copyright over the "Angelo [d]ela Cruz news footage".
Hence, any airing and re-broadcast of the said footage without any consent and authority from ABS-
CBN will be held as an infringement and violation of the intellectual property rights of the latter.
Respondents Grace Dela Peña-Reyes as the Head of the News Operation and John Oliver T.
Manalastas as the Program Manager cannot escape liability since the news control room was under
their direct control and supervision. Clearly, they must have been aware that the said footage coming
from Reuters or CNN has a "No Access Philippines" advisory or embargo thus cannot be re-broadcast.
We find no merit to the defense of ignorance interposed by the respondents. It is simply contrary to
human experience and logic that experienced employees of an established broadcasting network
would be remiss in their duty in ascertaining if the said footage has an embargo.164 (Emphasis
supplied)
We agree with the findings as to respondents Dela Peña-Reyes and Manalastas. Both respondents
committed acts that promoted infringement of ABS-CBN’s footage. We note that embargoes are
common occurrences in and between news agencies and/or broadcast organizations.165 Under its
Operations Guide, Reuters has two (2) types of embargoes: transmission embargo and publication
embargo.166 Under ABS-CBN’s service contract with Reuters, Reuters will embargo any content
contributed by ABS-CBN from other broadcast subscribers within the same geographical location:
4a. Contributed Content
You agree to supply us at our request with news and sports news stories broadcast on the Client
Service of up to three (3) minutes each for use in our Services on a non-exclusive basis and at a cost
of US$300.00 (Three Hundred United States Dollars) per story. In respect of such items we agree to
embargo them against use by other broadcast subscribers in the Territory and confirm we will observe
all other conditions of usage regarding Contributed Content, as specified in Section 2.5 of the Reuters
Business Principles for Television Services. For the purposes of clarification, any geographical
restriction imposed by you on your use of Contributed Content will not prevent us or our clients from
including such Contributed Content in online transmission services including the internet. We
acknowledge Contributed Content is your copyright and we will not acquire any intellectual property
rights in the Contributed Content.167 (Emphasis supplied)
Respondents Dela Peña-Reyes and Manalastas merely denied receiving the advisory sent by Reuters
to its clients, including GMA-7. As in the records, the advisory reads:
ADVISORY - - +++LIVE COVER PLANS+++
PHILIPPINES: HOSTAGE RETURN
**ATTENTION ALL CLIENTS**
PLEASE BE ADVISED OF THE FOLLOWING LIVE COVER
PLANNED FOR THURSDAY, JULY 22:
....
SOURCE: ABS-CBN
TV AND WEB RESTRICTIONS: NO ACCESS PHILIPPINES.168
There is probable cause that respondents Dela Peña-Reyes and Manalastas directly committed
copyright infringement of ABS-CBN’s news footage to warrant piercing of the corporate veil. They are
responsible in airing the embargoed Angelo dela Cruz footage. They could have prevented the act of
infringement had they been diligent in their functions as Head of News Operations and Program
Manager.
Secretary Agra, however, committed grave abuse of discretion when he ordered the filing of the
Information against all respondents despite the erroneous piercing of the corporate veil. Respondents
Gozon, Duavit, Jr., Flores, and Soho cannot be held liable for the criminal liability of the corporation.
Mere membership in the Board or being President per se does not mean knowledge, approval, and
participation in the act alleged as criminal. There must be a showing of active participation, not simply
a constructive one.
Under principles of criminal law, the principals of a crime are those "who take a direct part in the
execution of the act; [t]hose who directly force or induce others to commit it; [or] [t]hose who cooperate
in the commission of the offense by another act without which it would not have been
accomplished."169 There is conspiracy "when two or more persons come to an agreement concerning
the commission of a felony and decide to commit it":170
Conspiracy is not presumed. Like the physical acts constituting the crime itself, the elements of
conspiracy must be proven beyond reasonable doubt.1âwphi1 While conspiracy need not be
established by direct evidence, for it may be inferred from the conduct of the accused before, during
and after the commission of the crime, all taken together, however, the evidence must be strong
enough to show the community of criminal design. For conspiracy to exist, it is essential that there
must be a conscious design to commit an offense. Conspiracy is the product of intentionality on the
part of the cohorts.
It is necessary that a conspirator should have performed some overt act as a direct or indirect
contribution to the execution of the crime committed. The overt act may consist of active participation in
the actual commission of the crime itself, or it may consist of moral assistance to his co-conspirators by
being present at the commission of the crime or by exerting moral ascendancy over the other co-
conspirators[.]171 (Emphasis supplied, citations omitted)
In sum, the trial court erred in failing to resume the proceedings after the designated period. The Court
of Appeals erred when it held that Secretary Agra committed errors of jurisdiction despite its own
pronouncement that ABS-CBN is the owner of the copyright on the news footage. News should be
differentiated from expression of the news, particularly when the issue involves rebroadcast of news
footage. The Court of Appeals also erroneously held that good faith, as. well as lack of knowledge of
infringement, is a defense against criminal prosecution for copyright and neighboring rights
infringement. In its current form, the Intellectual Property Code is malum prohibitum and prescribes a
strict liability for copyright infringement. Good faith, lack of knowledge of the copyright, or lack of intent
to infringe is not a defense against copyright infringement. Copyright, however, is subject to the rules of
fair. use and will be judged on a case-to-case basis. Finding probable cause includes a determination
of the defendant's active participation, particularly when the corporate veil is pierced in cases involving
a corporation's criminal liability.
WHEREFORE, the Petition is partially GRANTED. The Department of Justice Resolution dated June
29, 2010 ordering the filing of the Information is hereby REINSTATED as to respondents Grace Dela
Pena-Reyes and John Oliver T. Manalastas. Branch 93 of the Regional Trial Court of Quezon City is
directed to continue with the proceedings in Criminal Case No. Q-04-131533.
G.R. No. 108946 January 28, 1999
FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., petitioners,
vs. HONORABLE FRANKLIN DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR.,
and CASEY FRANCISCO, respondents.
MENDOZA, J.:
This is a petition for certiorari. Petitioners seek to annul the resolution of the Department of Justice,
dated August 12, 1992, in Criminal Case No. Q-92-27854, entitled "Gabriel Zosa, et al. v. City
Prosecutor of Quezon City and Francisco Joaquin, Jr.," and its resolution, dated December 3, 1992,
denying petitioner Joaquin's motion for reconsideration.
Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922, dated
January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977.
On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate of
copyright specifying the show's format and style of presentation.
On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr., president of BJPI, saw
on RPN Channel 9 an episode of It's a Date, which was produced by IXL Productions, Inc. (IXL). On
July 18, 1991, he wrote a letter to private respondent Gabriel M. Zosa, president and general manager
of IXL, informing Zosa that BJPI had a copyright to Rhoda and Me and demanding that IXL discontinue
airing It's a Date.
In a letter, dated July 19, 1991, private respondent Zosa apologized to petitioner Joaquin and
requested a meeting to discuss a possible settlement. IXL, however, continued airing It's a Date,
prompting petitioner Joaquin to send a second letter on July 25, 1991 in which he reiterated his
demand and warned that, if IXL did not comply, he would endorse the matter to his attorneys for proper
legal action.
Meanwhile, private respondent Zosa sought to register IXL's copyright to the first episode of It's a Date
for which it was issued by the National Library a certificate of copyright August 14, 1991.
Upon complaint of petitioners, an information for violation of P.D. No. 49 was filed against private
respondent Zosa together with certain officers of RPN Channel 9, namely, William Esposo, Felipe
Medina, and Casey Francisco, in the Regional Trial Court of Quezon City where it was docketed as
Criminal Case No. 92-27854 and assigned to Branch 104 thereof. However, private respondent Zosa
sought a review of the resolution of the Assistant City Prosecutor before the Department of Justice.
On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the Assistant City
Prosecutor's findings and directed him to move for the dismissal of the case against private
respondents. 1
Petitioner Joaquin filed a motion for reconsideration, but his motion denied by respondent Secretary of
Justice on December 3, 1992. Hence, this petition. Petitioners contend that:
1. The public respondent gravely abused his discretion amounting to lack of jurisdiction — when he
invoked non-presentation of the master tape as being fatal to the existence of probable cause to prove
infringement, despite the fact that private respondents never raised the same as a controverted issue.
2. The public respondent gravely abused his discretion amounting to lack of jurisdiction when he
arrogated unto himself the determination of what is copyrightable — an issue which is exclusively
within the jurisdiction of the regional trial court to assess in a proper proceeding.
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.
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.D. No.
49.
Non-Assignment of Error.
Petitioners claim that their failure to submit the copyrighted master videotape of the television show
Rhoda and Me was not raised in issue by private respondents during the preliminary investigation and,
therefore, it was error for the Secretary of Justice to reverse the investigating prosecutor's finding of
probable cause on this ground.
A preliminary investigation falls under the authority of the state prosecutor who is given by law the
power to direct and control criminal
actions. 2 He is, however, subject to the control of the Secretary of Justice. Thus, Rule 112, §4 of the
Revised Rules of Criminal Procedure, provides:
Sec. 4. Duty of investigating fiscal. — If the investigating fiscal finds cause to hold the respondent for
trial, he shall prepare the resolution and corresponding information. He shall certify under oath that he,
or as shown by the record, an authorized officer, has personally examined the complainant and his
witnesses, that there is reasonable ground to believe that a crime has been committed and that the
accused is probably guilty thereof, that 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.
Otherwise, he shall recommend dismissal of the complaint.
In either case, he shall forward the records of the case to the provincial or city fiscal or chief state
prosecutor within five (5) days from his resolution. The latter shall take appropriate action thereon ten
(10) days from receipt thereof, immediately informing the parties of said action.
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.
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, the latter may, by himself, file the corresponding information against the respondent or direct
any other assistant fiscal or state prosecutor to do so, without conducting another preliminary
investigation.
If upon petition by a proper party, the Secretary of Justice reverses the resolution of the provincial or
city fiscal or chief state prosecutor, 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.
In reviewing resolutions of prosecutors, the Secretary of Justice is not precluded from considering
errors, although unassigned, for the purpose of determining whether there is probable cause for filing
cases in court. He must make his own finding, of probable cause and is not confined to the issues
raised by the parties during preliminary investigation. Moreover, his findings are not subject to review
unless shown to have been made with grave abuse.
Opinion of the Secretary of Justice
Petitioners contend, however, that the determination of the question whether the format or mechanics
of a show is entitled to copyright protection is for the court, and not the Secretary of Justice, to make.
They assail the following portion of the resolution of the respondent Secretary of Justice:
[T]he essence of copyright infringement is the copying, in whole or in part, of copyrightable materials
as defined and enumerated in Section 2 of PD. No. 49. Apart from the manner in which it is actually
expressed, however, the idea of a dating game show is, in the opinion of this Office, a non-
copyrightable material. Ideas, concepts, formats, 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. No. 49. 3
(Emphasis added.)
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. This does not, however,
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. In doing so in this case, he did not
commit any grave error.
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. They contend that 20th Century Fox Film Corporation v. Court of
Appeals, 4 on which respondent Secretary of Justice relied in reversing the resolution of the
investigating prosecutor, is inapplicable to the case at bar because in the present case, 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." 5
The case of 20th Century Fox Film Corporation involved raids conducted on various videotape outlets
allegedlly selling or renting out "pirated" videotapes. The trial court found that the affidavits of NBI
agents, given in support of the application for the search warrant, were insufficient without the master
tape. Accordingly, the trial court lifted the search warrants it had previously issued against the
defendants. On petition for review, this Court sustained the action of the trial court and ruled: 6
The presentation of the master tapes of the copyrighted films from which the pirated 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.
This ruling was qualified in the later case of Columbia Pictures, Inc. v. Court of Appeals 7 in which it
was held:
In fine, 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. 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. . . 8
In the case at bar during the preliminary investigation, petitioners and private respondents presented
written descriptions of the formats of their respective televisions shows, on the basis of which the
investigating prosecutor ruled:
As may [be] gleaned from the evidence on record, 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, both single, and the two couples are treated to a night or two of dining and/or
dancing at the expense of the show. The major concepts of both shows is the same. Any difference
appear mere variations of the major concepts.
That there is an infringement on the copyright of the show "RHODA AND ME" both 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, to wit:
RHODA AND ME
"IT'S A DATE"
Set 1
Set 1
a. Unmarried participant of one gender (searcher) appears on one side of a divider, 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.
a. same
b. Searcher asks a question to be answered by each of the searchees. The purpose is to determine
who among the searchees is the most compatible with the searcher.
b. same
c. Searcher speculates on the match to the searchee.
c. same
d. Selection is made by the use of compute (sic) methods, or by the way questions are answered, or
similar methods.
d. Selection is based on the answer of the Searchees.
Set 2
Set 2
Same as above with the genders of the searcher and searchees interchanged. 9
same
Petitioners assert that the format of Rhoda and Me is a product of ingenuity and skill and is thus
entitled to copyright protection. It is their position that the presentation of a point-by-point comparison
of the formats of the two shows clearly demonstrates the nexus between the shows and hence
establishes the existence of probable cause for copyright infringement. Such being the case, they did
not have to produce the master tape.
To begin with the format of a show is not copyrightable. Section 2 of P.D. No. 49, 10 otherwise known
as the DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of work entitled to
copyright protection, to wit:
Sec. 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to
any of the following classes of works:
(A) Books, including composite and cyclopedic works, manuscripts, directories, and gazetteers:
(B) Periodicals, including pamphlets and newspapers;
(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;
(D) Letters;
(E) Dramatic or dramatico-musical compositions; choreographic works and entertainments in dumb
shows, the acting form of which is fixed in writing or otherwise;
(F) Musical compositions, with or without words;
(G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and other works of art;
models or designs for works of art;
(H) Reproductions of a work of art;
(I) Original ornamental designs or models for articles of manufacture, whether or not patentable, and
other works of applied art;
(J) Maps, plans, sketches, and charts;
(K) Drawings or plastic works of a scientific or technical character;
(I) Photographic works and works produced by a process analogous to photography lantern slides;
(M) Cinematographic works and works produced by a process analogous to cinematography or any
process for making audio-visual recordings;
(N) Computer programs;
(O) Prints, pictorial illustrations advertising copies, labels tags, and box wraps;
(P) Dramatizations, translations, adaptations, abridgements, arrangements and other alterations of
literary, musical or artistic works or of works of the Philippine government as herein defined, which
shall be protected as provided in Section 8 of this Decree.
(Q) Collections of literary, scholarly, or artistic works or of works referred to in Section 9 of this Decree
which by reason of the selection and arrangement of their contents constitute intellectual creations, the
same to be protected as such in accordance with Section 8 of this Decree.
(R) Other literary, scholarly, scientific and artistic works.
This provision is substantially the same as §172 of the INTELLECTUAL PROPERTY CODE OF
PHILIPPINES (R.A. No. 8293). 11 The format or mechanics of a television show is not included in the
list of protected works in §2 of P.D. No. 49. For this reason, the protection afforded by the law cannot
be extended to cover them.
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right
granted by the statute, and not simply a pre-existing right regulated by the statute. Being a statutory
grant, the rights are only such as the statute confers, 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. 12
Since . . . copyright in published works is purely a statutory creation, a copyright may be obtained only
for a work falling within the statutory enumeration or description. 13
Regardless of the historical viewpoint, it is authoritatively settled in the United States that there is no
copyright except that which is both created and secured by act of Congress . . . . . 14
P.D. No. 49, §2, in enumerating what are subject to copyright, refers to finished works and not to
concepts. The copyright does not extend to an idea, procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or
embodied in such work. 15 Thus, the new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES
provides:
Sec. 175. Unprotected Subject Matter. — Notwithstanding the provisions of Sections 172 and 173, no
protection shall extend, under this law, to any idea, procedure, system, method or operation, concept,
principle, discovery or mere data as such, even if they are expressed, explained, illustrated or
embodied in a work; news of the day and other miscellaneous facts having the character of mere items
of press information; or any official text of a legislative, administrative or legal nature, as well as any
official translation thereof.
What then is the subject matter of petitioners' copyright? This Court is of the opinion that petitioner
BJPI's copyright covers audio-visual recordings of each episode of Rhoda and Me, as falling within the
class of works mentioned in P.D. 49, §2(M), to wit:
Cinematographic works and works produced by a process analogous to cinematography or any
process for making audio-visual recordings;
The copyright does not extend to the general concept or format of its dating game show. Accordingly,
by the very nature of the subject of petitioner BJPI's copyright, the investigating prosecutor should have
the opportunity to compare the videotapes of the two shows.
Mere description by words of the general format of the two dating game shows is insufficient; the
presentation of the master videotape in evidence was indispensable to the determination of the
existence of probable cause. As aptly observed by respondent Secretary of Justice:
A television show includes more than mere words can describe because it involves a whole spectrum
of visuals and effects, video and audio, such that no similarity or dissimilarity may be found by merely
describing the general copyright/format of both dating game shows.
WHEREFORE, the petition is hereby DISMISSED.
G.R. No. 161295 June 29, 2005
JESSIE G. CHING, petitioner,
vs. WILLIAM M. SALINAS, SR., WILLIAM M. SALINAS, JR., JOSEPHINE L. SALINAS, JENNIFER Y.
SALINAS, ALONTO SOLAIMAN SALLE, JOHN ERIC I. SALINAS, NOEL M. YABUT (Board of
Directors and Officers of WILAWARE PRODUCT CORPORATION), respondents.
DECISION
CALLEJO, SR., J.:
This petition for review on certiorari assails the Decision1 and Resolution2 of the Court of Appeals (CA)
in CA-G.R. SP No. 70411 affirming the January 3, 2002 and February 14, 2002 Orders3 of the
Regional Trial Court (RTC) of Manila, Branch 1, which quashed and set aside Search Warrant Nos. 01-
2401 and 01-2402 granted in favor of petitioner Jessie G. Ching.
Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and
manufacturer of a Utility Model, described as "Leaf Spring Eye Bushing for Automobile" made up of
plastic.
On September 4, 2001, Ching and Joseph Yu were issued by the National Library Certificates of
Copyright Registration and Deposit of the said work described therein as "Leaf Spring Eye Bushing for
Automobile."4
The respondents filed a motion to quash the search warrants on the following grounds:
2. The copyright registrations were issued in violation of the Intellectual Property Code on the ground
that:
a) the subject matter of the registrations are not artistic or literary;
b) the subject matter of the registrations are spare parts of automobiles meaning – there (sic) are
original parts that they are designed to replace. Hence, they are not original.9
The respondents averred that the works covered by the certificates issued by the National Library are
not artistic in nature; they are considered automotive spare parts and pertain to technology. They aver
that the models are not original, and as such are the proper subject of a patent, not copyright.10
In opposing the motion, the petitioner averred that the court which issued the search warrants was not
the proper forum in which to articulate the issue of the validity of the copyrights issued to him. Citing
the ruling of the Court in Malaloan v. Court of Appeals,11 the petitioner stated that a search warrant is
merely a judicial process designed by the Rules of Court in anticipation of a criminal case. Until his
copyright was nullified in a proper proceeding, he enjoys rights of a registered owner/holder thereof.

On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) for
police/investigative assistance for the apprehension and prosecution of illegal manufacturers,
producers and/or distributors of the works.5
After due investigation, the NBI filed applications for search warrants in the RTC of Manila against
William Salinas, Sr. and the officers and members of the Board of Directors of Wilaware Product
Corporation. It was alleged that the respondents therein reproduced and distributed the said models
penalized under Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293. The applications sought
the seizure of the following:
a.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of plastic
polypropylene;
b.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of polyvinyl
chloride plastic;
c.) Undetermined quantity of Vehicle bearing cushion that is made up of polyvinyl chloride plastic;
d.) Undetermined quantity of Dies and jigs, patterns and flasks used in the manufacture/fabrication of
items a to d;
e.) Evidences of sale which include delivery receipts, invoices and official receipts.6
On January 3, 2002, the trial court issued an Order12 granting the motion, and quashed the search
warrant on its finding that there was no probable cause for its issuance. The court ruled that the work
covered by the certificates issued to the petitioner pertained to solutions to technical problems, not
literary and artistic as provided in Article 172 of the Intellectual Property Code.
His motion for reconsideration of the order having been denied by the trial court’s Order of February
14, 2002, the petitioner filed a petition for certiorari in the CA, contending that the RTC had no
jurisdiction to delve into and resolve the validity of the copyright certificates issued to him by the
National Library. He insisted that his works are covered by Sections 172.1 and 172.2 of the Intellectual
Property Code. The petitioner averred that the copyright certificates are prima facie evidence of its
validity, citing the ruling of the United States Court of Appeals in Wildlife Express Corporation v. Carol
Wright Sales, Inc.13 The petitioner asserted that the respondents failed to adduce evidence to support
their motion to quash the search warrants. The petitioner noted that respondent William Salinas, Jr.
was not being honest, as he was able to secure a similar copyright registration of a similar product
from the National Library on January 14, 2002.
On September 26, 2003, the CA rendered judgment dismissing the petition on its finding that the RTC
did not commit any grave abuse of its discretion in issuing the assailed order, to wit:

The RTC granted the application and issued Search Warrant Nos. 01-2401 and 01-2402 for the It is settled that preliminarily, there must be a finding that a specific offense must have been committed
seizure of the aforecited articles.7 In the inventory submitted by the NBI agent, it appears that the to justify the issuance of a search warrant. In a number of cases decided by the Supreme Court, the
following articles/items were seized based on the search warrants: same is explicitly provided, thus:

Leaf Spring eye bushing "The probable cause must be in connection with one specific offense, and the judge must, before
issuing the warrant, personally examine in the form of searching questions and answers, in writing and
a) Plastic Polypropylene under oath, the complainant and any witness he may produce, on facts personally known to them and
- C190 27 } attach to the record their sworn statements together with any affidavit submitted.
- C240 rear 40 }
- C240 front 41 } BAG 1 "In the determination of probable cause, the court must necessarily resolve whether or not an offense
b) Polyvinyl Chloride Plastic exists to justify the issuance or quashal of the search warrant."
- C190 13 }
c) Vehicle bearing cushion In the instant case, the petitioner is praying for the reinstatement of the search warrants issued, but
- center bearing cushion 11 } subsequently quashed, for the offense of Violation of Class Designation of Copyrightable Works under
Budder for C190 mold 8 } Section 177.1 in relation to Section 177.3 of Republic Act 8293, when the objects subject of the same,
Dieel Mold are patently not copyrightable.
a) Mold for spring eye bushing rear 1 set
b) Mold for spring eye bushing front 1 set It is worthy to state that the works protected under the Law on Copyright are: literary or artistic works
c) Mold for spring eye bushing for C190 1 set (Sec. 172) and derivative works (Sec. 173). The Leaf Spring Eye Bushing and Vehicle Bearing
d) Mold for C240 rear 1 piece of the set Cushion fall on neither classification. Accordingly, if, in the first place, the item subject of the petition is
e) Mold for spring eye bushing for L300 2 sets not entitled to be protected by the law on copyright, how can there be any violation?14
f) Mold for leaf spring eye bushing C190 with metal 1 set
g) Mold for vehicle bearing cushion 1 set8
The petitioner’s motion for reconsideration of the said decision suffered the same fate. The petitioner
forthwith filed the present petition for review on certiorari, contending that the revocation of his
copyright certificates should be raised in a direct action and not in a search warrant proceeding.
The petitioner posits that even assuming ex argumenti that the trial court may resolve the validity of 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.
He claims that R.A. No. 8293, otherwise known as the Intellectual Property Code of the Philippines,
which took effect on January 1, 1998, provides in no uncertain terms that copyright protection
automatically attaches to a work by the sole fact of its creation, irrespective of its mode or form of
expression, as well as of its content, quality or purpose.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; and includes original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial design and other works of applied art under
Section 172.1(h) of R.A. No. 8293.lawphil.net
As such, the petitioner insists, notwithstanding the classification of the works as either literary and/or
artistic, the said law, likewise, encompasses works which may have a bearing on the utility aspect to
which the petitioner’s utility designs were classified. Moreover, according to the petitioner, what the
Copyright Law protects is the author’s intellectual creation, regardless of whether it is one with
utilitarian functions or incorporated in a useful article produced on an industrial scale.
The petitioner also maintains that the law does not provide that the intended use or use in industry of
an article eligible for patent bars or invalidates its registration under the Law on Copyright. The test of
protection for the aesthetic is not beauty and utility, but art for the copyright and invention of original
and ornamental design for design patents.16 In like manner, the fact that his utility designs or models
for articles of manufacture have been expressed in the field of automotive parts, or based on
something already in the public domain does not automatically remove them from the protection of the
Law on Copyright.17
The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293 which gives the same
presumption to an affidavit executed by an author who claims copyright ownership of his work.
The petitioner adds that a finding of probable cause to justify the issuance of a search warrant means
merely a reasonable suspicion of the commission of the offense. It is not equivalent to absolute
certainty or a finding of actual and positive cause.18 He assists that the determination of probable
cause does not concern the issue of whether or not the alleged work is copyrightable. He maintains
that to justify a finding of probable cause in the issuance of a search warrant, it is enough that there
exists a reasonable suspicion of the commission of the offense.
The petitioner contends that he has in his favor the benefit of the presumption that his copyright is
valid; hence, the burden of overturning this presumption is on the alleged infringers, the respondents
herein. But this burden cannot be carried in a hearing on a proceeding to quash the search warrants,
as the issue therein is whether there was probable cause for the issuance of the search warrant. The
petitioner concludes that the issue of probable cause should be resolved without invalidating his
copyright.
In their comment on the petition, the respondents aver that the work of the petitioner is essentially a
technical solution to the problem of wear and tear in automobiles, the substitution of materials, i.e.,
from rubber to plastic matter of polyvinyl chloride, 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. Such work, the respondents assert, is the subject of copyright under Section 172.1 of R.A.
No. 8293. The respondents posit that a technical solution in any field of human activity which is novel
may be the subject of a patent, and not of a copyright. They insist that the certificates issued by the
National Library are only certifications that, at a point in time, a certain work was deposited in the said
office. Furthermore, the registration of copyrights does not provide for automatic protection. Citing
Section 218.2(b) of R.A. No. 8293, the respondents aver that no copyright is said to exist if a party
categorically questions its existence and legality. Moreover, under Section 2, Rule 7 of the
Implementing Rules of R.A. No. 8293, 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. The respondents maintain
that a copyright exists only when the work is covered by the protection of R.A. No. 8293.
The petition has no merit.
The RTC had jurisdiction to delve into and resolve the issue whether the petitioner’s utility models are
copyrightable and, if so, whether he is the owner of a copyright over the said models. It bears stressing
that upon the filing of the application for search warrant, the RTC was duty-bound to determine
whether probable cause existed, in accordance with Section 4, Rule 126 of the Rules of Criminal
Procedure:
SEC. 4. Requisite for issuing search warrant. – A search warrant shall not issue but upon probable
cause 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, and,
particularly, describing the place to be searched and the things to be seized.
In Solid Triangle Sales Corporation v. The Sheriff of RTC QC, Br. 93,19 the Court held that in the
determination of probable cause, the court must necessarily resolve whether or not an offense exists to
justify the issuance of a search warrant or the quashal of one already issued by the court. Indeed,
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. Besides, in Section 3, Rule 126 of the Rules of Criminal Procedure, a search warrant may
be issued for the search and seizure of personal property (a) subject of the offense; (b) stolen or
embezzled and other proceeds or fruits of the offense; or (c) used or intended to be used as the means
of committing an offense.
The RTC is mandated under the Constitution and Rules of Criminal Procedure to determine probable
cause. The court cannot abdicate its constitutional obligation by refusing to determine whether an
offense has been committed.20 The absence of probable cause will cause the outright nullification of
the search warrant.21
For the RTC to determine whether the crime for infringement under R.A. No. 8293 as alleged in an
application is committed, the petitioner-applicant was burdened to prove that (a) respondents Jessie
Ching and Joseph Yu were the owners of copyrighted material; and (b) the copyrighted material was
being copied and distributed by the respondents. Thus, the ownership of a valid copyright is
essential.22
Ownership of copyrighted material is shown by proof of originality and copyrightability. By originality is
meant that the material was not copied, and evidences at least minimal creativity; that it was
independently created by the author and that it possesses at least same minimal degree of
creativity.23 Copying is shown by proof of access to copyrighted material and substantial similarity
between the two works.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.25
By requesting the NBI to investigate and, if feasible, file an application for a search warrant for
infringement under R.A. No. 8293 against the respondents, the petitioner thereby authorized the RTC
(in resolving the application), to delve into and determine the validity of the copyright which he claimed
he had over the utility models. The petitioner cannot seek relief from the RTC based on his claim that
he was the copyright owner over the utility models and, at the same time, repudiate the court’s
jurisdiction to ascertain the validity of his claim without running afoul to the doctrine of estoppel.
To discharge his burden, the applicant may present the certificate of registration covering the work or,
in its absence, other evidence.26 A copyright certificate provides prima facie evidence of originality
which is one element of copyright validity. It constitutes prima facie evidence of both validity and
ownership27 and the validity of the facts stated in the certificate.28 The presumption of validity to a
certificate of copyright registration merely orders the burden of proof. The applicant should not
ordinarily be forced, in the first instance, to prove all the multiple facts that underline the validity of the
copyright unless the respondent, effectively challenging them, shifts the burden of doing so to the
applicant.29 Indeed, Section 218.2 of R.A. No. 8293 provides:
218.2. In an action under this Chapter:
(a) Copyright shall be presumed to subsist in the work or other subject matter to which the action
relates if the defendant does not put in issue the question whether copyright subsists in the work or
other subject matter; and
(b) Where the subsistence of the copyright is established, the plaintiff shall be presumed to be 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.
A certificate of registration creates no rebuttable presumption of copyright validity where other
evidence in the record casts doubt on the question. In such a case, validity will not be presumed.30
To discharge his burden of probable cause for the issuance of a search warrant for violation of R.A.
No. 8293, the petitioner-applicant submitted to the RTC Certificate of Copyright Registration Nos.
2001-197 and 2001-204 dated September 3, 2001 and September 4, 2001, respectively, issued by the
National Library covering work identified as Leaf Spring Eye Bushing for Automobile and Vehicle
Bearing Cushion both classified under Section 172.1(h) of R.A. No. 8293, to wit:
SEC. 172. Literary and Artistic Works. – 172.1. Literary and artistic works, hereinafter referred to as
"works," are original intellectual creations in the literary and artistic domain protected from the moment
of their creation and shall include in particular:
...
(h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an
industrial design, and other works of applied art.
Related to the provision is Section 171.10, which provides that a "work of applied art" is an artistic
creation with utilitarian functions or incorporated in a useful article, whether made by hand or produced
on an industrial scale.
But, as gleaned from the specifications appended to the application for a copyright certificate filed by
the petitioner, 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, with the bushing made of plastic that is either polyvinyl chloride or polypropylene.31
Likewise, the Vehicle Bearing Cushion is illustrated as a bearing cushion comprising a generally semi-
circular body having a central hole to secure a conventional bearing and a plurality of ridges provided
therefore, with said cushion bearing being made of the same plastic materials.32 Plainly, these are not
literary or artistic works. They are not intellectual creations in the literary and artistic domain, or works
of applied art. They are certainly not ornamental designs or one having decorative quality or value.
It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its
marketability. The central inquiry is whether the article is a work of art.33 Works for applied art include
all original pictorials, graphics, and sculptural works that are intended to be or have been embodied in
useful article regardless of factors such as mass production, commercial exploitation, and the potential
availability of design patent protection.34
As gleaned from the description of the models and their objectives, 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. Indeed, while works of applied art, original
intellectual, literary and artistic works are copyrightable, useful articles and works of industrial design
are not.35 A useful article may be copyrightable only if and only to the extent that such design
incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are
capable of existing independently of the utilitarian aspects of the article.
We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that the
author’s intellectual creation, regardless of whether it is a creation with utilitarian functions or
incorporated in a useful article produced on an industrial scale, is protected by copyright law. However,
the law refers to a "work of applied art which is an artistic creation." It bears stressing that there is no
copyright protection for works of applied art or industrial design which have aesthetic or artistic features
that cannot be identified separately from the utilitarian aspects of the article.36 Functional components
of useful articles, no matter how artistically designed, have generally been denied copyright protection
unless they are separable from the useful article.37
In this case, the petitioner’s models are not works of applied art, nor artistic works. They are utility
models, useful articles, albeit with no artistic design or value. Thus, the petitioner described the utility
model 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.
These rubber bushings after a time, upon subjecting them to so much or intermittent pressure would
eventually wore (sic) out that would cause the wobbling of the leaf spring.
The primary object of this utility model, therefore, is to provide a leaf-spring eye bushing for automobile
that is made up of plastic.
Another object of this utility model is to provide a leaf-spring eye bushing for automobiles made of
polyvinyl chloride, an oil resistant soft texture plastic or polypropylene, a hard plastic, yet both causes
cushion to the leaf spring, yet strong enough to endure pressure brought about by the up and down
movement of said leaf spring.
Yet, an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a
much longer life span than the rubber bushings.
Still an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a very
simple construction and can be made using simple and ordinary molding equipment.
A further object of this utility model is to provide a leaf-spring eye bushing for automobile that is
supplied with a metal jacket to reinforce the plastic eye bushing when in engaged with the steel
material of the leaf spring.
These and other objects and advantages will come to view and be understood upon a reading of the
detailed description when taken in conjunction with the accompanying drawings.
Figure 1 is an exploded perspective of a leaf-spring eye bushing according to the present utility model;
Figure 2 is a sectional view taken along line 2-2 of Fig. 1;
Figure 3 is a longitudinal sectional view of another embodiment of this utility model;
Figure 4 is a perspective view of a third embodiment; and
Figure 5 is a sectional view thereof.
Referring now to the several views of the drawings wherein like reference numerals designated same
parts throughout, there is shown a utility model for a leaf-spring eye bushing for automobile generally
designated as reference numeral 10.
Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a co-axial bore 12
centrally provided thereof.
As shown in Figs. 1 and 2, 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.
When said leaf-spring bushing 10 is installed, the metal jacket 14 acts with the leaf-spring eye (not
shown), which is also made of steel or cast steel. In effect, the bushing 10 will not be directly in contact
with steel, but rather the metal jacket, making the life of the bushing 10 longer than those without the
metal jacket.
In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl chloride, an oil resistant
soft texture plastic or a hard polypropylene plastic, both are capable to endure the pressure applied
thereto, and, in effect, would lengthen the life and replacement therefor.
Figure 3, on the other hand, shows the walls 16 of the co-axial bore 12 of said bushing 10 is insertably
provided with a steel tube 17 to reinforce the inner portion thereof. This steel tube 17 accommodates or
engages with the leaf-spring bolt (not shown) connecting the leaf spring and the automobile’s chassis.
Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is elongated and
cylindrical as to its construction. Said another embodiment is also made of polypropylene or polyvinyl
chloride plastic material. 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. These rubber bushings after a time, upon subjecting them to so much or intermittent pressure
would eventually be worn out that would cause the wobbling of the center bearing.
The primary object of this utility model therefore is to provide a vehicle-bearing cushion that is made up
of plastic.
Another object of this utility model is to provide a vehicle bearing cushion made of polyvinyl chloride,
an oil resistant soft texture plastic material which causes cushion to the propeller’s center bearing, yet
strong enough to endure pressure brought about by the vibration of the center bearing.
Yet, an object of this utility model is to provide a vehicle-bearing cushion that has a much longer life
span than rubber bushings.
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.
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 1 is a perspective view of the present utility model for a vehicle-bearing cushion; and
Figure 2 is a sectional view thereof.
Referring now to the several views of the drawing, wherein like reference numeral designate same
parts throughout, there is shown a utility model for a vehicle-bearing cushion generally designated as
reference numeral 10.
Said bearing cushion 10 comprises of a generally semi-circular body 11, having central hole 12 to
house a conventional bearing (not shown). As shown in Figure 1, said body 11 is provided with a
plurality of ridges 13 which serves reinforcing means thereof.
The subject bearing cushion 10 is made of polyvinyl chloride, a soft texture oil and chemical resistant
plastic material which is strong, durable and capable of enduring severe pressure from the center
bearing brought about by the rotating movement of the propeller shaft of the vehicle.39
A utility model is a technical solution to a problem in any field of human activity which is new and
industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of
the aforesaid.40 Essentially, a utility model refers to an invention in the mechanical field. This is the
reason why its object is sometimes described as a device or useful object.41 A utility model varies from
an invention, for which a patent for invention is, likewise, available, on at least three aspects: first, the
requisite of "inventive step"42 in a patent for invention is not required; second, the maximum term of
protection is only seven years43 compared to a patent which is twenty years,44 both reckoned from
the date of the application; and third, the provisions on utility model dispense with its substantive
examination45 and prefer for a less complicated system.
Being plain automotive spare parts that must conform to the original structural design of the
components they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not
ornamental. They lack the decorative quality or value that must characterize authentic works of applied
art. They are not even artistic creations with incidental utilitarian functions or works incorporated in a
useful article. In actuality, the personal properties described in the search warrants are mechanical
works, the principal function of which is utility sans any aesthetic embellishment.
Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included in the
catch-all phrase "other literary, scholarly, scientific and artistic works" in Section 172.1(a) of R.A. No.
8293. Applying the principle of ejusdem generis which states that "where a statute describes things of
a particular class or kind accompanied by words of a generic character, the generic word will usually
be limited to things of a similar nature with those particularly enumerated, unless there be something in
the context of the state which would repel such inference,"46 the Leaf Spring Eye Bushing and Vehicle
Bearing Cushion are not copyrightable, being not of the same kind and nature as the works
enumerated in Section 172 of R.A. No. 8293.
No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the
certificates of copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle
Bearing Cushion. Indeed, in Joaquin, Jr. v. Drilon47 and Pearl & Dean (Phil.), Incorporated v.
Shoemart, Incorporated,48 the Court ruled that:
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right
granted by the statute, and not simply a pre-existing right regulated by it. Being a statutory grant, the
rights are only such as the statute confers, 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. Accordingly, it can
cover only the works falling within the statutory enumeration or description.
That the works of the petitioner may be the proper subject of a patent does not entitle him to the
issuance of a search warrant for violation of copyright laws. In Kho v. Court of Appeals49 and Pearl &
Dean (Phil.), Incorporated v. Shoemart, Incorporated,50 the Court ruled that "these copyright and
patent rights are completely distinct and separate from one another, and the protection afforded by one
cannot be used interchangeably to cover items or works that exclusively pertain to the others." The
Court expounded further, thus:
Trademark, copyright and patents are different intellectual property rights that cannot be interchanged
with one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or marked container of goods. In
relation thereto, a trade name means the name or designation identifying or distinguishing an
enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic works which are
original intellectual creations in the literary and artistic domain protected from the moment of their
creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any
field of human activity which is new, involves an inventive step and is industrially applicable.
The petitioner cannot find solace in the ruling of the United States Supreme Court in Mazer v. Stein51
to buttress his petition. In that case, the artifacts involved in that case were statuettes of dancing male
and female figures made of semi-vitreous china. The controversy therein centered on the fact that
although copyrighted as "works of art," the statuettes were intended for use and used as bases for
table lamps, with electric wiring, sockets and lampshades attached. The issue raised was whether the
statuettes were copyright protected in the United States, considering that the copyright applicant
intended primarily to use them as lamp bases to be made and sold in quantity, and carried such
intentions into effect. At that time, the Copyright Office interpreted the 1909 Copyright Act to cover
works of artistic craftsmanship insofar as their form, but not the utilitarian aspects, were concerned.
After reviewing the history and intent of the US Congress on its copyright legislation and the
interpretation of the copyright office, the US Supreme Court declared that the statuettes were held
copyrightable works of art or models or designs for works of art. The High Court ruled that:
"Works of art (Class G) – (a) – In General. This class includes works of artistic craftsmanship, in so far
as their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry,
enamels, glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings,
drawings and sculpture. …"
So we have a contemporaneous and long-continued construction of the statutes by the agency
charged to administer them that would allow the registration of such a statuette as is in question
here.52
The High Court went on to state that "[t]he dichotomy of protection for the aesthetic is not beauty and
utility but art for the copyright and the invention of original and ornamental design for design patents."
Significantly, the copyright office promulgated a rule to implement Mazer to wit:
… [I]f "the sole intrinsic function of an article is its utility, the fact that the work is unique and attractively
shaped will not qualify it as a work of art."
In this case, the bushing and cushion are not works of art. They are, as the petitioner himself admitted,
utility models which may be the subject of a patent.
IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED for lack of merit. The
assailed Decision and Resolution of the Court of Appeals in CA-G.R. SP No. 70411 are AFFIRMED.
Search Warrant Nos. 01-2401 and 01-2402 issued on October 15, 2001 are ANNULLED AND SET
ASIDE. Costs against the petitioner.
G.R. No. L-11937 April 1, 1918
PEDRO SERRANO LAKTAW, plaintiff-appellant,
vs. MAMERTO PAGLINAWAN, defendant-appellee.
Perfecto Gabriel for appellant.
Felix Ferrer and Crossfield and O'Brien for appellee.
ARAULLO, J.:
In the complaint presented in the Court of First Instance of the City of Manila on February 20, 1915, it
was alleged: (1) That the plaintiff was, according to the laws regulating literary properties, the
registered owner and author of a literary work entitled Diccionario Hispano-Tagalog (Spanish-Tagalog
Dictionary) published in the City of Manila in 1889 by the printing establishment La Opinion, and a copy
of which was attached to the complaint, as Exhibit A; (2) that the defendant, without the consent of the
plaintiff, reproduced said literary work, improperly copied the greater part thereof in the work published
by him and entitled Diccionariong Kastila-Tagalog (Spanish-Tagalog Dictionary), a copy of which was
also attached to the complaint as Exhibit B; (3) that said act of the defendant, which is a violation of
article 7 of the Law of January 10, 1879, on Intellectual Property, caused irreparable injuries to the
plaintiff, who was surprised when, on publishing his new work entitled Diccionario Tagalog-Hispano
(Tagalog-Spanish Dictionary) he learned of the fact, and (4) that the damages occasioned to the
plaintiff by the publication of defendant's work amounted to $10,000. The plaintiff therefore prayed the
court to order the defendant to withdraw from sale all stock of the work herein identified as Exhibit B
and to pay the plaintiff the sum of $10,000, with costs.
The defendant in his answer denied generally each and every allegation of the complaint and prayed
the court to absolve him from the complaint. After trial and the introduction of evidence by both parties,
the court on August 20, 1915, rendered judgment, absolving the defendant from the complaint, but
without making any special pronouncement as to costs. The plaintiff moved for a new trial on the
ground that the judgment was against the law and the weight of the evidence. Said motion having been
overruled, plaintiff excepted to the order overruling it, and appealed the case to the Supreme Court
upon a bill of exceptions.
The ground of the decision appealed from is that a comparison of the plaintiff's dictionary with that of
the defendant does not show that the latter is an improper copy of the former, which has been
published and offered for sale by the plaintiff for about twenty-five years or more. For this reason the
court held that the plaintiff had no right of action and that the remedy sought by him could not be
granted.
The appellant contends that court below erred in not declaring that the defendant had reproduced the
plaintiff's work and that the defendant had violated article 7 of the Law of January 10, 1879, on
Intellectual Property.
Said article provides:
Nobody may reproduce another person's work without the owner's consent, even merely to annotate or
add anything to it, or improve any edition thereof.
Therefore, in order that said article may be violated, it is not necessary, as the court below seems to
have understood, that a work should be an improper copy of another work previously published. It is
enough that another's work has been reproduced without the consent of the owner, even though it be
only to annotate, add something to it, or improve any edition thereof.
Upon making a careful and minute comparison of Exhibit A, the dictionary written and published by the
plaintiff, and Exhibit B, written and published by the defendant, and, taking into account the
memorandum (fols. 55 to 59) presented by the defendant, in which he enumerates the words and
terms which, according to him, are in his dictionary but not in that of that of the plaintiff, and viceversa,
and the equivalents or definitions given by the plaintiff, as well as the new Tagalog words which are in
the dictionary of the defendant but not in that of the plaintiff; and considering the notes, Exhibit C, first
series, presented by the plaintiff, in which the terms copied by the defendant from the plaintiff's
dictionary are enumerated in detail and in relation to each letter of the alphabet and which the plaintiff's
own words and terms are set forth, with a summary, at the foot of each group of letters, which shows
the number of initial Spanish words contained in the defendant's dictionary, the words that are his own
and the fact that the remaining ones are truly copied from the plaintiff's dictionary — considering all of
these facts, we come to a conclusion completely different and contrary to that of the trial court, for said
evidence clearly shows:
1. That, of the Spanish words in the defendant's dictionary, Exhibit B, which correspond to each letter
of the alphabet, those that are enumerated below have been copied and reproduced from the plaintiff's
dictionary, with the exception of those that are stated to be defendant's own.
Therefore, of the 23,560 Spanish words in the defendant's dictionary, after deducting 17 words
corresponding to the letters K and X (for the plaintiff has no words corresponding to them), only 3,108
words are the defendant's own, or, what is the same thing, the defendant has added only this number
of words to those that are in the plaintiff's dictionary, he having reproduced or copied the remaining
20,452 words.
2. That the defendant also literally reproduced and copied for the Spanish words in his dictionary, the
equivalents, definitions and different meanings in Tagalog, given in plaintiff's dictionary, having
reproduced, as to some words, everything that appears in the plaintiff's dictionary for similar Spanish
words, although as to some he made some additions of his own. Said copies and reproductions are
numerous as may be seen, by comparing both dictionaries and using as a guide or index the
defendant's memorandum and notes, first series, Exhibit C, in which, as to each word, the similarities
and differences between them are set forth in detail.
3. That the printer's errors in the plaintiff's dictionary as to the expression of some words in Spanish as
well as their equivalents in Tagalog are also reproduced, a fact which shows that the defendant, in
preparing his dictionary, literally copied those Spanish words and their meanings and equivalents in
Tagalog from the plaintiff's dictionary.
The trial court has chosen at random, as is stated in the judgment appealed from, some words from
said dictionaries in making the comparison on which its conclusion is based, and consequently the
conclusion reached by it must be inaccurate and not well founded, because said comparison was not
complete.
In said judgment some words of the defendant's dictionary are transcribed, the equivalents and
meanings of which in Tagalog are exactly the same as those that are given in the plaintiff's dictionary,
with the exception, as to some of them, of only one acceptation, which is the defendant's own
production. And with respect to the examples used by the defendant in his dictionary, which, according
to the judgment, are not copied from the plaintiff's — the judgment referring to the preposition a (to), in
Tagalog sa — it must be noted that the defendant, in giving in his dictionary an example of said
preposition, uses the expression "voy a Tayabas" (I am going to Tayabas) instead of "voy a Bulacan" (I
am going to Bulacan), as the plaintiff does in his dictionary, or what is the same thing, that one speaks
of Bulacan while the other speaks of Tayabas. This does not show that there was no reproduction or
copying by the defendant of the plaintiffs work, but just the opposite, for he who intends to imitate the
work of another, tries to make it appear in some manner that there is some difference between the
original and the imitation; and in the example referred to, with respect to the preposition a (to), that
dissimilarity as to the province designated seems to effect the same purpose.
In the judgment appealed from, the court gives one to understand that the reproduction of another's
dictionary without the owner's consent does not constitute a violation of the Law of Intellectual Property
for the court's idea of a dictionary is stated in the decision itself, as follows:
Dictionaries have to be made with the aid of others, and they are improved by the increase of words.
What may be said of a pasture ground may be said also of a dictionary, i. e., that it should be common
property for all who may desire to write a new dictionary, and the defendant has come to this pasture
ground and taken whatever he needed from it in the exercise of a perfect right.
Such idea is very erroneous, especially in relation to the Law of Intellectual Property. Danvilla y
Collado the author of the Law of January 10, 1879, on Intellectual Property, which was discussed and
approved in the Spanish Cortes, in his work entitled La Propiedad Intelectual (page 362, 1st ed.) states
with respect to dictionaries and in relation to article 7 of said law:
The protection of the law cannot be denied to the author of a dictionary, for although words are not the
property of anybody, their definitions, the example that explain their sense, and the manner of
expressing their different meanings, may constitute a special work. On this point, the correctional court
of the Seine held, on August 16, 1864, that a dictionary constitutes property, although some of the
words therein are explained by mere definitions expressed in a few lines and sanctioned by usage,
provided that the greater part of the other words contain new meanings; new meanings which evidently
may only belonged to the first person who published them.
Therefore, the plaintiff, Pedro Serrano, cannot be denied the legal protection which he seeks, and
which is based on the fact that the dictionary published by him in 1889 is his property — said property
right being recognized and having been granted by article 7, in connection with article 2, of said law —
and on the further fact that said work was reproduced by the defendant without his permission.
This law was published in the Gaceta de Madrid on January 12, 1879. It took effect in these Islands six
months after its promulgation or publication, as provided in article 56 thereof. The body of rules for the
execution of said law having been approved by royal decree of September 3, 1880, and published in
the Gaceta de Madrid on September 6, 1880 and extended to the Philippine Islands by royal decree of
May 5, 1887, it was in turn published in the Gaceta de Manila, with the approval of the Governor-
General of the Islands, on June 15, 1887. Said law of January 10, 1879, and the rules for its
application, were therefore in force in these Islands when the plaintiff's dictionary was edited and
published in 1889.
It appears from the evidence that although the plaintiff did not introduce at the trial the certificate of
registration of his property rights to said work which, according to said rules, was kept in the Central
Government of these Islands, and was issued to him in 1890, the same having been lost during the
revolution against Spain, and no trace relative to the issuance of said certificate being obtainable in the
Division of Archives of the Executive Bureau on account of the loss of the corresponding records, yet
as in the first page of said dictionary the property right of the plaintiff was reserved by means of the
words "Es propiedad del autor" (All rights reserved), taken in connection with the permission granted
him by the Governor-General on November 24, 1889, to print and publish said dictionary, after an
examination thereof by the permanent committee of censors, which examination was made, and the
necessary license granted to him, these facts constitute sufficient proof, under the circumstances of the
case, as they have not been overcome by any evidence on the part of the defendant, showing that said
plaintiff did not comply with the requirements of article 36 of said law, which was the prerequisite to the
enjoyment of the benefits thereof according to the preceding articles, among which is article 7, which is
alleged in the complaint to have been violated by the defendant.
Even considering that said Law of January 10, 1879, ceased to operate in these Islands, upon the
termination of Spanish sovereignty and the substitution thereof by that of the United States of America,
the right of the plaintiff to invoke said law in support of the action instituted by him in the present case
cannot be disputed. His property right to the work Diccionario Hispano-Tagalog (Spanish-Tagalog
Dictionary), published by him and edited in 1889, is recognized and sanctioned by said law, and by
virtue thereof, he had acquired a right of which he cannot be deprived merely because the law is not in
force now or is of no actual application. This conclusion is necessary to protect intellectual property
rights vested after the sovereignty of Spain was superseded by that of the United States. It was so held
superseded by that of the United States. It was so held in the Treaty of Paris of December 10, 1898,
between Spain and the United States, when it declared in article 13 thereof that the rights to literary,
artistic, and industrial properties acquired by the subject of Spain in the Island of Cuba and in Puerto
Rico and the Philippines and other ceded territories, at the time of the exchange of the ratification of
said Treaty, shall continue to be respect.
In addition to what has been said, according to article 428 of the Civil Code, the author of a literary,
scientific, or artistic work, has the right to exploit it and dispose thereof at will. In relation to this right,
there exists the exclusive right of the author, who is the absolute owner of his own work, to produce it,
according to article 2 of the Law of January 10, 1879, and consequently, nobody may reproduce it,
without his permission, not even to annotate or add something to it, or to improve any edition thereof,
according to article 7 of said law. Manresa, in his commentaries on article 429 of the Civil Code (vol. 3,
p. 633, 3d ed.) says that the concrete statement of the right to literary properties is found in the legal
doctrine according to which nobody may reproduce another person's work, without the consent of his
owner, or even to annotate or add something to it or to improve any edition thereof. And on page 616
of said volume, Manresa says the following:
He who writes a book, or carves a statue, or makes an invention, has the absolute right to reproduce or
sell it, just as the owner of land has the absolute right to sell it or its fruits. But while the owner of land,
by selling it and its fruits, perhaps fully realizes all its economic value, by receiving its benefits and
utilities, which are presented, for example, by the price, on the other hand the author of a book, statue
or invention, does not reap all the benefits and advantages of his own property by disposing of it, for
the most important form of realizing the economic advantages of a book, statue or invention, consists
in the right to reproduce it in similar or like copies, everyone of which serves to give to the person
reproducing them all the conditions which the original requires in order to give the author the full
enjoyment thereof. If the author of a book, after its publication, cannot prevent its reproduction by any
person who may want to reproduce it, then the property right granted him is reduced to a very
insignificant thing and the effort made in the production of the book is no way rewarded.
Indeed the property right recognized and protected by the Law of January 10, 1879, on Intellectual
Property, would be illusory if, by reason of the fact that said law is no longer in force as a consequence
of the change of sovereignty in these Islands, the author of a work, who has the exclusive right to
reproduce it, could not prevent another person from so doing without his consent, and could not
enforce this right through the courts of justice in order to prosecute the violator of this legal provision
and the defrauder or usurper of his right, for he could not obtain the full enjoyment of the book or other
work, and his property right thereto, which is recognized by law, would be reduced, as Manresa says,
to an insignificant thing, if he should have no more right than that of selling his work.

The reproduction by the defendant without the plaintiff's consent of the Diccionario Hispano-Tagalog
(Spanish-Tagalog Dictionary), published and edited in the City of Manila in 1889, by the publication of
the Diccionariong Kastila-Tagalog (Spanish-Tagalog Dictionary), published in the same city and edited
in the press El Progreso in 1913, as appears from Exhibit B, which is attached to the complaint, has
caused the plaintiff, according to the latter, damages in the sum of $10,000. It is true that it cannot be
denied that the reproduction of the plaintiff's book by the defendant has caused damages to the former,
but the amount thereof has not been determined at the trial, for the statement of the plaintiff as to the
proceeds he would have realized if he had printed in 1913 the number of copies of his work which he
stated in his declaration — a fact which he did not do because the defendant had reproduced it — was
not corroborated in any way at the trial and is based upon mere calculations made by the plaintiff
himself; for which reason no pronouncement can be made in this decision as to the indemnification for
damages which the plaintiff seeks to recover.

The plaintiff having prayed, not for a permanent injunction against the defendant, as the plaintiff himself
in his brief erroneously states, but for a judgment ordering the defendant to withdraw from sale all stock
of his work Diccionariong Kastila-Tagalog (Spanish-Tagalog Dictionary), of which Exhibit B is a copy,
and the suit instituted by said plaintiff being proper, we reverse the judgment appealed from and order
the defendant to withdraw from sale, as prayed for in the complaint, all stock of his work above-
mentioned, and to pay the costs of first instance. We make no special pronouncement as to the costs
of this instance. So ordered.