REPUBLIC V. HEIRS OF TUPAZ IV, G.R. NO.

197335, 7 SEPTEMBER 2020

PNP collaborated with Tupaz IV to create the new designs of the PNP cap device and badge. The new design
was approved for production.

In the public bidding for the procurement of the new PNP cap devices and badges, El Oro, Tupaz’s company,
submitted the second highest bid price but was still awarded the contract after they presented certificates of
copyright registration over the PNP cap device and badge issued in favor of Tupaz. No other manufacturer
attempted to produce the PNP cap device and badge bearing the new designs for fear of copyright infringement.

PNP then requested the National Library, and later on the RTC, to cancel said certificates of copyright.

El Oro and Tupaz alleged that El Oro is the exclusive and official engraver of Philippine heraldry items since
1953 and that Tupaz's ancestor, Jose T. Tupaz, Jr., developed the original designs on which said present designs
were based. Hence, El Oro owned the copyright over the new designs and was allegedly the only qualified
bidder

HELD:
Designs Are Copyrightable Derivative Works
As a rule, derivative works, when produced with the consent of the creator or proprietor of the original works on
which they are based, be protected as new works. Thus, derivative works can only be copyrighted if they were
produced with the consent of the creator of the pre-existing designs and if there is distinction between the new
designs and the pre-existing designs.

Here, both requisites are present. Tupaz, in collaboration with the PNP and upon its instruction, borrowed
expressive content from the pre-existing designs of the PNP cap device and badge to create the new designs.

PNP is Neither Creator Nor Owner of the Copyright

Furthermore, a creator or an author pertains to someone who transforms an abstract idea into a tangible form of
expression through the application of skill or labor. Here, the extent of PNP's participation in developing the
new designs was limited to instructing Tupaz on how the designs should appear in general and what specific
elements should be incorporated. They merely supplied ideas and concepts. It was Tupaz who used his skill and
labor to concretize what PNP had envisioned. Therefore, PNP cannot be considered as an author of the new
designs either in whole or in part.

In the present case, PNP is not entitled to own the copyright because the designs were neither commissioned
works nor works created in the course of respondent Tupaz's employment. First, although the parties verbally
agreed to work together, petitioner did not hire respondent Tupaz's services for a fee or a commission. Tupaz
rendered his services voluntarily. In other words, the new designs do not qualify as commissioned works.
Second, there was no employer-employee relationship between the parties at the time the designs were made.