G.R. No.

130360

August 15, 2001

WILSON ONG CHING KlAN CHUAN, petitioner, vs. HON. COURT OF APPEALS and LORENZO TAN, respondents. QUISUMBING, J.: This petition for review1 seeks to annul the decision2 dated August 27, 1997 of the Court of Appeals which set aside the resolutions3 dated October 13 and December 15, 1993 as well as the order dated March 1, 1994 of the Regional Trial Court of Quezon City, Branch 94.4 Petitioner Wilson Ong Ching Kian Chuan ("Ong"), imports vermicelli from China National Cereals Oils and Foodstuffs Import and Export Corporation, based in Beijing, China, under the firm name C.K.C. Trading. He repacks it in cellophane wrappers with a design of two-dragons and the TOWER trademark on the uppermost portion. Ong acquired a Certificate of Copyright Registration from the National Library on June 9, 1993 on the said design. Ong discovered that private respondent Lorenzo Tan repacked his vermicelli he imports from the same company but based in Qingdao, China in a "nearly" identical wrapper. On September 16, 1993, Ong filed against Tan a verified complaint for infringement of copyright with damages and prayer for temporary restraining order or writ of preliminary injunction with the Regional Trial Court in Quezon City. Ong alleged that he was the holder of a Certificate of Copyright Registration over the cellophane wrapper with the two-dragon design, and that Tan used an identical wrapper in his business. In his prayer for a preliminary injunction in addition to damages, he asked that Tan be restrained from using the wrapper. He said he would post a bond to guarantee the payment of damages resulting from the issuance of the writ of preliminary injunction.1wphi1.nt The trial court issued a temporary restraining order on the same date the complaint was filed. Tan filed an opposition to Ong's application for a writ of preliminary injunction with counterapplication for the issuance of a similar writ against Ong. Tan alleged that Ong was not entitled to an injunction. According to Tan, Ong did not have a clear right over the use of the trademark Pagoda and Lungkow vermicelli as these were registered in the name of CHINA NATIONAL CEREALS OIL AND FOODSTUFFS IMPORT AND EXPORT CORPORATION, SHANDONG CEREALS AND OILS BRANCH (hereafter Ceroilfood Shandong), based in Qingdao, China. Further, Tan averred that he was the exclusive distributor in the Philippines of the Pagoda and Lungkow vermicelli and was solely authorized to use said trademark. He added that Ong merely copied the two-dragon design from Ceroilfood Shandong which had the Certificates of Registration issued by different countries. He concluded that Ong's Certificate of Copyright Registration was not valid for lack of originality. On September 30, 1993, Ong countered Tan's opposition to the issuance of the writ of preliminary injunction. On October 13, 1993, the could issued the writ in Ong's favor upon his filing of a P100,000.00 bond.5

Tan filed a motion to dissolve the writ of preliminary injunction, but the trial court denied it on December 15, 1993.6 The motion for reconsideration was also denied on March 1, 1994. Tan elevated the case to the Court of Appeals via a special civil action for certiorari with a prayer for the issuance of a TRO and/or writ of preliminary injunction. Ong filed an opposition to Tan's prayer for an issuance of TRO and/or writ of preliminary injunction on the ground that the trial court did not commit a grave abuse of discretion in issuing the writ in his favor. After oral argument, the Court of Appeals rendered a decision on August 8, 1994, setting aside the trial court's order. It decreed: WHEREFORE, in the petition is GIVEN, DUE COURSE, and, GRANTED. The order dated October 13, 1993 and related orders, as well as the writ of preliminary injunction issued by the respondent court, are SET ASIDE as issued with grave abuse of discretion. No costs. SO ORDERED.7 Ong filed a motion for reconsideration and on January 3, 1995, the Court of Appeals modified its August 8, 1994 order as follows: WHEREFORE the phrase "the order dated October 13, 1993 and related orders, as well as the writ of preliminary injunction issued by the respondent court, are SET ASIDE as issued with grave abuse of discretion" is hereby deleted in our resolution dated 08 August 1994. In all other respects, said resolution must be maintained. However, let a writ of preliminary injunction be issued enjoining the herein respondents and any and all persons acting for and in their behalf from enforcing and/or implementing the Writ of Preliminary Injunction issued on October 15, 1993 pursuant to the Resolution dated October 13, 1993 of the PUBLIC RESPONDENT in Civil Case No. Q-93-17628 entitled "WILSON ONG CHING KIAN CHUAN, ETC. vs. LORENZO TAN, ETC." upon petitioner's filing of a bond of P200,000.00. The Branch Clerk of Court of the RTC, Branch 94, Quezon City is directed to elevate the records of Civil Case No. 293-17128 within TEN (10) DAYS from notice. The parties are given THIRTY (30) DAYS from notice to file their memorandum or any pertinent manifestation on the matter, after which the case shall be considered submitted for decision. SO ORDERED.8 Pursuant to the Court of Appeals' resolution on January 16, 1996, the parties submitted their memoranda. On August 27, 1997, the appellate court promulgated its decision, decreeing as follows:

WHEREFORE, the resolutions dated October 13, 1993 and December 15, 1993 as well as the order dated March 1, 1994 - all in Civil Case No. Q-93-17628 are hereby SET ASIDE and our injunction heretofore issued made permanent. IT IS SO ORDERED.9 On October 17, 1997, Ong filed the instant petition for review, claiming that the Court of Appeals committed grave and serious errors tantamount to acting with grave abuse of discretion and/or acting without or in excess of its jurisdiction: I. ...WHEN IT ISSUED A PERMANENT PRELIMINARY INJUNCTION IN FAVOR OF THE PRIVATE RESPONDENT WHEN THE LATTER'S RIGHT TO SUCH A RELIEF IS NOT CLEAR, DOUBTFUL AND HAS NO LEGAL OR FACTUAL BASIS. A. CERTIFICATE OF COPYRIGHT REGISTRATION JUSTIFY ISSUANCE OF WRIT OF PRELIMINARY INJUNCTION UNDER P.D. NO. 49. B. ISSUANCE OF PRELIMINARY INJUNCTION MUST BE BASED ON CLEAR AND UNMISTAKABLE RIGHT WHICH PETITIONER HAD AND WHICH RIGHT WAS INVADED BY THE PRIVATE RESPONDENT. C. COURT OF APPEALS' DECISION OF AUGUST 8, 1994 AND ITS RESOLUTION OF JANUARY 3, 1995 RESULTS IN CONFUSION. II. ...BY 'INTERFERING' WITH THE JUDICIAL DISCRETION OF THE TRIAL COURT. A. RESPONDENT COURT OF APPEALS' INTERFERENCE WITH THE DISCRETION OF TRIAL COURT CONSTITUTES GRAVE ABUSE OF DISCRETION. III. ...BY ISSUING A WRIT OF PRELIMINARY INJUNCTION IN FAVOR OF THE PRIVATE RESPONDENT AND DISREGARDING THE WRIT OF PRELIMINARY INJUNCTION ISSUED BY THE TRIAL COURT WHOM (SIC), UNDER THE JANUARY 13, 1995 RESOLUTION OF RESPONDENT COURT OF APPEALS, WAS JUDICIALLY HELD NOT TO HAVE COMMITTED ANY GRAVE ABUSE OF DISCRETION IN THE ISSUANCE OF THE OCTOBER 13, 1993 AND 'RELATED ORDERS'. A. ISSUANCE OF WRIT OF PRELIMINARY INJUNCTION ADDRESSED TO THE SOUND DISCRETION OF THE TRIAL COURT. IV. ...WHEN IT MADE ITS OWN FINDINGS AND CONCLUSIONS, PRE-EMPTING THE TRIAL COURT AND PRE-JUDGING THE CASE, THUS LEAVING THE TRIAL COURT WITH NOTHING TO RULE UPON.

"A. COURT OF APPEALS PREJUDGED THE CASE REMANDED TO THE TRIAL COURT The issues for our determination are: Was the issuance of the writ of preliminary injunction proper? Was there grave abuse of discretion committed by the Court of Appeals when it set aside the order of the trial court, then issued a judgment touching on the merits? Petitioner avers that the CA erred in issuing a preliminary injunction in private respondent's favor. He says, firstly, that he is more entitled to it. He states that as holder of the Certificate of Copyright Registration of the twin-dragon design, he has the protection of P.D. No. 49.10 Said law allows an injunction in case of infringement. Petitioner asserts that private respondent has no registered copyright and merely relies on the trademark of his principal abroad, which insofar as Philippine laws is concerned, cannot prevail over petitioner's copyright. Private respondent, for his part, avers that petitioner has no "clear right" over the use of the copyrighted wrapper since the PAGODA trademark and label were first adopted and used and have been duly registered by Ceroilfood Shandong not only in China but in nearly 20 countries and regions worldwide. Petitioner was not the original creator of the label, but merely copied the design of Ceroilfood Shandong. Private respondent presented copies of the certificates of copyright registration in the name of Ceroilfood Shandong issued by at least twenty countries and regions worldwide which although unauthenticated are, according to him, sufficient to provide a sampling of the evidence needed in the determination of the grant of preliminary injunction.11 Private respondent alleges, that the trademark PAGODA BRAND was registered in China on October 31, 197912 while the trademark LUNGKOW VERMICELLI WITH TWO-DRAGON DEVICE was registered on August 15, 1985.13 To resolve this controversy, we have to return to basics. A person to be entitled to a copyright must be the original creator of the work. He must have created it by his own skill, labor and judgment without directly copying or evasively imitating the work of another.14 The grant of preliminary injunction in a case rests on the sound discretion of the court with the caveat that it should be made with extreme caution.15 Its grant depends chiefly on the extent of doubt on the validity of the copyright, existence of infringement, and the damages sustained by such infringement.16 In our view, the copies of the certificates of copyright registered in the name of Ceroilfood Shandong sufficiently raise reasonable doubt. With such a doubt preliminary injunction is unavailing.17 In Medina vs. City Sheriff, Manila, 276 SCRA 133, 139 (1997), where the complainant's title was disputed, we held that injunction was not proper. Petitioner Ong argues that the Court of Appeals erred and contradicted itself in its January 3, 1995 Resolution, where it deleted the phrase "the order dated October 13, 1993 and related orders, as well as the writ of preliminary injunction issued by the respondent court, are SET ASIDE as issued with grave abuse of discretion" in its August 8, 1994 decision, and at the same time issued a writ of preliminary injunction in Tan's favor. Ong's claim (that the Court of Appeals In deleting the aforequoted phrase in the August 8, 1994 decision abandoned its earlier finding of grave abuse of discretion on the part of the trial court), however, is without logical basis. The appellate court merely restated In its own words the issue

raised in the petition: from a) whether the RTC committed grave abuse of discretion, to b) whether Tan was entitled to an injunctive relief. Then it clarified that the relief sought is a prohibition against Ong and his agents from enforcing the writ of preliminary injunction. Properly understood, an order enjoining the enforcement of a writ of preliminary injunction issued by the RTC in a certiorari proceeding under Rule 65 of the Rules of Court effectively, sets aside the RTC order for being issued with grave abuse of discretion. To be entitled to an injunctive writ, petitioner must show, inter alia, the existence of a clear and unmistakable right and an urgent and paramount necessity for the writ to prevent serious damage.18 From the above discussion, we find that petitioner's right has not been clearly and unmistakably demonstrated. That right is what is in dispute and has yet to be determined. In Developers Group of Companies, Inc. vs. Court of Appeals, 219 SCRA 715, 722-723 (1993), we held that in the absence of proof of a legal right and the injury sustained by the plaintiff, an order of the trial court granting the issuance of an injunctive writ will be set aside, for having been issued with grave abuse of discretion. Conformably, there was no abuse of discretion by the Court of Appeals when it issued its own order to restrain the enforcement of the preliminary injunction issued by the trial court. Finally, we note that the complaint initially filed with the RTC was for infringement of copyright. The trial court's resolution subject of Tan's petition under Rule 65 before the CA concerns the correctness of the grant of the writ of preliminary injunction. The only issue brought before the CA involved the grave abuse of discretion allegedly committed by the trial court in granting the writ of preliminary injunction. The Court of Appeals in declaring that the wrapper of petitioner is a copy of Ceroilfood Shandong's wrapper went beyond that issue touched on the merits of the infringement case, which remains to be decided by the trial court.19 In our view, it was premature for the Court of Appeals to declare that the design of petitioner's wrapper is a copy of the wrapper allegedly registered by Ceroilfood Shandong. That matter remains for decision after appropriate proceedings at the trial court. WHEREFORE, the instant petition is PARTIALLY GRANTED. The prayer for a writ of preliminary injunction to prohibit Tan from using the cellophane wrapper with two-dragon device is denied, but the finding of the respondent appellate court that Ong's copyrighted wrapper is a copy of that of Ceroilfood Shandong is SET ASIDE for being premature. The Regional Trial Court of Quezon City, Branch 94, is directed to proceed with the trial to determine the merits of Civil Case No. 33779 expeditiously. Let the records of this case be REMANDED to said trial court promptly. No pronouncement as to costs.1wphi1.nt SO ORDERED

G.R. No. L-19439

October 31, 1964

MAURO MALANG SANTOS, plaintiff-appellant, vs. MCCULLOUGH PRINTING COMPANY, defendant-appellee. Taada Teehankee & Carreon for plaintiff-appellant. Esposo & Usison for defendant-appellee. PAREDES, J.: This is an action for damages based on the provisions of Articles 721 and 722 of the Civil Code of the Philippines, allegedly on the unauthorized use, adoption and appropriation by the defendant company of plaintiff's intellectual creation or artistic design for a Christmas Card. The design depicts "a Philippine rural Christmas time scene consisting of a woman and a child in a nipa hut adorned with a star-shaped lantern and a man astride a carabao, beside a tree, underneath which appears the plaintiff's pen name, Malang." The complaint alleges that plaintiff Mauro Malang Santos designed for former Ambassador Felino Neri, for his personal Christmas Card greetings for the year 1959, the artistic motif in question. The following year the defendant McCullough Printing Company, without the knowledge and authority of plaintiff, displayed the very design in its album of Christmas cards and offered it for sale, for a price. For such unauthorized act of defendant, plaintiff suffered moral damages to the tune of P16,000.00, because it has placed plaintiff's professional integrity and ethics under serious question and caused him grave embarrassment before Ambassador Neri. He further prayed for the additional sum of P3,000.00 by way of attorney's fee. Defendant in answer to the complaint, after some denials and admissions, moved for a dismissal of the action claiming that (1) The design claimed does not contain a clear notice that it belonged to him and that he prohibited its use by others; (2) The design in question has been published but does not contain a notice of copyright, as in fact it had never been copyrighted by the plaintiff, for which reason this action is barred by the Copyright Law; (3) The complaint does not state a cause of action. The documentary evidence submitted were the Christmas cards, as originally designed by plaintiff, the design as printed for Ambassador Neri, and the subsequent reprints ordered by other parties. The case was submitted an a "Stipulation of Fact" the pertinent portions of which are hereunder reproduced: 1. That the plaintiff was the artist who created the design shown in Exhibit A, ... 2. That the design carries the pen name of plaintiff, MALANG, on its face ... and indicated in Exhibit A, ...

3. That said design was created by plaintiff in the latter part of 1959 for the personal use of former Ambassador Felino Neri; ... 4. That former Ambassador Neri had 800 such cards ... printed by the defendant company in 1959, ... which he distributed to his friends in December, 1959; 5. That defendant company utilized plaintiff's design in the year 1960 in its album of Christmas card samples displayed to its customers ... . 6. That the Sampaguita Pictures, Inc., placed an order with defendant company for 700 of said cards ... while Raul Urra & Co. ordered 200 ..., which cards were sent out by them to their respective correspondent, clients and friends during the Christmas season of 1960; 7. That defendant company's use of plaintiff's design was without knowledge, authority or consent of plaintiff; 8. That said design has not been copyrighted; 9. That plaintiff is an artist of established name, good-will and reputation. ... . Upon the basis of the facts stipulated, the lower court rendered judgment on December 1, 1961, the pertinent portions of which are recited below: As a general proposition, there can be no dispute that the artist acquires ownership of the product of his art. At the time of its creation, he has the absolute dominion over it. To help the author protect his rights the copyright law was enacted. In intellectual creations, a distinction must be made between two classes of property rights; the fact of authorship and the right to publish and/or distribute copies of the creation. With regard to the first, i.e. the fact of authorship, the artist cannot be divested of the same. In other words, he may sell the right to print hundred of his work yet the purchaser of said right can never be the author of the creation. It is the second right, i.e., the right to publish, republish, multiply and/or distribute copies of the intellectual creation which the state, through the enactment of the copyright law, seeks to protect. The author or his assigns or heirs may have the work copyrighted and once this is legally accomplished any infringement of the copyright will render the infringer liable to the owner of the copyright. xxx xxx xxx

The plaintiff in this case did not choose to protect his intellectual creation by a copyright. The fact that the design was used in the Christmas card of Ambassador Neri who distributed eight hundred copies thereof among his friends during the Christmas season of 1959, shows that the, same was published.

Unless satisfactorily explained a delay in applying for a copyright, of more than thirty days from the date of its publication, converts the property to one of public domain. Since the name of the author appears in each of the alleged infringing copies of the intellectual creation, the defendant may not be said to have pirated the work nor guilty of plagiarism Consequently, the complaint does not state a cause of action against the defendant. xxx xxx ;xxx

WHEREFORE, the Court dismisses the complaint without pronouncement as to costs. In his appeal to this Court, plaintiff-appellant pointed five (5) errors allegedly committed by the trial court, all of which bring to the fore, the following propositions: (1) whether plaintiff is entitled to protection, notwithstanding the, fact that he has not copyrighted his design; (2) whether the publication is limited, so as to prohibit its use by others, or it is general publication, and (3) whether the provisions of the Civil Code or the Copyright Law should apply in the case. We will undertake a collective discussion of these propositions. Under the established facts, We find that plaintiff is not entitled to a protection, the provision of the Civil Code, notwithstanding. Paragraph 33 of Patent Office Administrative Order No. 3 (as amended dated September 18, 1947) entitled "Rules of Practice in the Philippines Patent Office relating to the Registration of Copyright Claims" promulgated pursuant to Republic Act 165, provides, among others, that an intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila, or within sixty (60) day's if made elsewhere, failure of which renders such creation public property. In the case at bar, even as of this moment, there is no copyright for the design in question. We are not also prepared to accept the contention of appellant that the publication of the design was a limited one, or that there was an understanding that only Ambassador Neri should, have absolute right to use the same. In the first place, if such were the condition then Ambassador Neri would be the aggrieved party, and not the appellant. In the second place, if there was such a limited publication or prohibition, the same was not shown on the face of the design. When the purpose is a limited publication, but the effect is general publication, irrevocable rights thereupon become vested in the public, in consequence of which enforcement of the restriction becomes impossible (Nutt vs. National Institute, 31 F [2d] 236). It has been held that the effect of offering for sale a dress, for example manufactured in accordance with an original design which is not protected by either a copyright or a patent, is to divest the owner of his common law rights therein by virtue of the publication of a 'copy' and thereafter anyone is free to copy the design or the dress (Fashion Originators Guild of America v. Federal Trade Commission, 114 F [2d] 80). When Ambassador Neri distributed 800 copies of the design in controversy, the plaintiff lost control of his design and the necessary implication was that there had been a general publication, there having been no showing of a clear indication that a limited publication was intended. The author of a literary composition has a light to the first publication thereof. He has a right to determine whether it shall be published at all, and if published, when, where, by whom, and in what form. This exclusive right is confined to the first publication. When once published, it is dedicated to the public, and the author loses the exclusive right to control subsequent publication

by others, unless the work is placed under the protection of the copyright law. (See II Tolentino's Comments on the Civil Code, p. 433, citing Wright v. Eisle 83 N.Y. Supp. 887.) CONFORMABLY WITH ALL THE FOREGOING, We find that the errors assigned have not been committed by the lower court. The decision appealed from, therefore, should be, as it is hereby affirmed. Costs taxed against plaintiff-appellant.

G.R. No. L-36402 March 16, 1987 FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC., plaintiffappellant, vs. BENJAMIN TAN, defendant-appellee. Lichauco, Picazo & Agcaoili Law Office for plaintiff-appellant. Ramon A. Nieves for defendant-appellee.

PARAS, J.: An appeal was made to the Court of Appeals docketed as CA-G.R. No. 46373-R * entitled Filipino Society of Composers, Authors, Publishers, Inc., Plaintiff-Appellant v. Benjamin Tan, Defendant-Appellee, from the decision of the Court of First Instance of Manila, Branch VII in Civil Case No. 71222 ** "Filipino Society of Composers, Authors and Publishers, Inc., Plaintiff v. Benjamin Tan, Defendant," which had dismissed plaintiffs' complaint without special pronouncement as to costs. The Court of Appeals, finding that the case involves pure questions of law, certified the same to the Supreme Court for final determination (Resolution, CA-G.R. No. 46373-R, Rollo, p. 36; Resolution of the Supreme Court of February 16, 1973 in L-36402, Rollo, p. 38). The undisputed facts of this case are as follows: Plaintiff-appellant is a non-profit association of authors, composers and publishers duly organized under the Corporation Law of the Philippines and registered with the Securities and Exchange Commission. Said association is the owner of certain musical compositions among which are the songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness Of You." On the other hand, defendant-appellee is the operator of a restaurant known as "Alex Soda Foundation and Restaurant" where a combo with professional singers, hired to

play and sing musical compositions to entertain and amuse customers therein, were playing and singing the above-mentioned compositions without any license or permission from the appellant to play or sing the same. Accordingly, appellant demanded from the appellee payment of the necessary license fee for the playing and singing of aforesaid compositions but the demand was ignored. Hence, on November 7, 1967, appellant filed a complaint with the lower court for infringement of copyright against defendant-appellee for allowing the playing in defendant-appellee's restaurant of said songs copyrighted in the name of the former. Defendant-appellee, in his answer, countered that the complaint states no cause of action. While not denying the playing of said copyrighted compositions in his establishment, appellee maintains that the mere singing and playing of songs and popular tunes even if they are copyrighted do not constitute an infringement (Record on Appeal, p. 11; Resolution, CA-G.R. NO. 46373-R, Rollo, pp. 32-36) under the provisions of Section 3 of the Copyright Law (Act 3134 of the Philippine Legislature). The lower court, finding for the defendant, dismissed the complaint (Record on Appeal, p. 25). Plaintiff appealed to the Court of Appeals which as already stated certified the case to the Supreme Court for adjudication on the legal question involved. (Resolution, Court of Appeals, Rollo, p. 36; Resolution of the Supreme Court of February 18, 1973, Rollo, p. 38). In its brief in the Court of Appeals, appellant raised the following Assignment of Errors: I THE LOWER COURT ERRED IN HOLDING THAT THE MUSICAL COMPOSITIONS OF THE APPELLANT WERE IN THE NATURE OF PUBLIC PROPERTY WHEN THEY WERE COPYRIGHTED OR REGISTERED. II THE LOWER COURT ERRED IN HOLDING THAT THE MUSICAL COMPOSITIONS OF THE APPELLANT WERE PLAYED AND SUNG IN THE SODA FOUNTAIN AND RESTAURANT OF THE APPELLEE BY INDEPENDENT CONTRACTORS AND ONLY UPON THE REQUEST OF CUSTOMERS. III THE LOWER COURT ERRED IN HOLDING THAT THE PLAYING AND SINGING OF COPYRIGHTED MUSICAL COMPOSITIONS IN THE SODA FOUNTAIN AND RESTAURANT OF THE APPELLEE ARE NOT PUBLIC PERFORMANCES FOR

PROFIT OF THE SAID COMPOSITIONS WITHIN THE MEANING AND CONTEMPLATION OF THE COPYRIGHT LAW. IV THE LOWER COURT ERRED IN NOT HOLDING THAT THE APPELLEE IS LIABLE TO THE APPELLANT FOR FOUR (4) SEPARATE INFRINGEMENTS. (Brief for Appellant, pp. A and B). The petition is devoid of merit. The principal issues in this case are whether or not the playing and signing of musical compositions which have been copyrighted under the provisions of the Copyright Law (Act 3134) inside the establishment of the defendant-appellee constitute a public performance for profit within the meaning and contemplation of the Copyright Law of the Philippines; and assuming that there were indeed public performances for profit, whether or not appellee can be held liable therefor. Appellant anchors its claim on Section 3(c) of the Copyright Law which provides:
SEC. 3. The proprietor of a copyright or his heirs or assigns shall have the exclusive right: xxx xxx xxx (c) To exhibit, perform, represent, produce, or reproduce the copyrighted work in any manner or by any method whatever for profit or otherwise; if not reproduced in copies for sale, to sell any manuscripts or any record whatsoever thereof; xxx xxx xxx

It maintains that playing or singing a musical composition is universally accepted as performing the musical composition and that playing and singing of copyrighted music in the soda fountain and restaurant of the appellee for the entertainment of the customers although the latter do not pay for the music but only for the food and drink constitute performance for profit under the Copyright Law (Brief for the Appellant, pp. 19-25). We concede that indeed there were "public performances for profit. " The word "perform" as used in the Act has been applied to "One who plays a musical composition on a piano, thereby producing in the air sound waves which are heard as music ... and if the instrument he plays on is a piano plus a broadcasting apparatus, so that waves are thrown out, not only upon the air, but upon the other, then also he is performing the musical composition." (Buck, et al. v. Duncan, et al.; Same Jewell La Salle Realty Co., 32F. 2d. Series 367). In relation thereto, it has been held that "The playing of music in dine and dance establishment which was paid for by the public in purchases of food and drink

constituted "performance for profit" within a Copyright Law." (Buck, et al. v. Russon No. 4489 25 F. Supp. 317). Thus, it has been explained that while it is possible in such establishments for the patrons to purchase their food and drinks and at the same time dance to the music of the orchestra, the music is furnished and used by the orchestra for the purpose of inducing the public to patronize the establishment and pay for the entertainment in the purchase of food and drinks. The defendant conducts his place of business for profit, and it is public; and the music is performed for profit (Ibid, p. 319). In a similar case, the Court ruled that "The Performance in a restaurant or hotel dining room, by persons employed by the proprietor, of a copyrighted musical composition, for the entertainment of patrons, without charge for admission to hear it, infringes the exclusive right of the owner of the copyright." (Herbert v. Shanley Co.; John Church Co. v. Hillard Hotel Co., et al., 242 U.S. 590-591). In delivering the opinion of the Court in said two cases, Justice Holmes elaborated thus:
If the rights under the copyright are infringed only by a performance where money is taken at the door, they are very imperfectly protected. Performances not different in kind from those of the defendants could be given that might compete with and even destroy the success of the monopoly that the law intends the plaintiffs to have. It is enough to say that there is no need to construe the statute so narrowly. The defendants' performances are not eleemosynary. They are part of a total for which the public pays, and the fact that the price of the whole is attributed to a particular item which those present are expected to order is not important. It is true that the music is not the sole object, but neither is the food, which probably could be got cheaper elsewhere. The object is a repast in surroundings that to people having limited power of conversation or disliking the rival noise, give a luxurious pleasure not to be had from eating a silent meal. If music did not pay, it would be given up. If it pays, it pays out of the public's pocket. Whether it pays or not, the purpose of employing it is profit, and that is enough. (Ibid., p. 594).

In the case at bar, it is admitted that the patrons of the restaurant in question pay only for the food and drinks and apparently not for listening to the music. As found by the trial court, the music provided is for the purpose of entertaining and amusing the customers in order to make the establishment more attractive and desirable (Record on Appeal, p. 21). It will be noted that for the playing and singing the musical compositions involved, the combo was paid as independent contractors by the appellant (Record on Appeal, p. 24). It is therefore obvious that the expenses entailed thereby are added to the overhead of the restaurant which are either eventually charged in the price of the food and drinks or to the overall total of additional income produced by the bigger volume of business which the entertainment was programmed to attract. Consequently, it is beyond question that the playing and singing of the combo in defendant-appellee's restaurant constituted performance for profit contemplated by the Copyright Law. (Act 3134 amended by P.D. No. 49, as amended). Nevertheless, appellee cannot be said to have infringed upon the Copyright Law. Appellee's allegation that the composers of the contested musical compositions waived their right in favor of the general public when they allowed their intellectual creations to become property of the public domain before applying for the corresponding copyrights for the same (Brief for Defendant-Appellee, pp. 14-15) is correct.

The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative Order No. 3 (as amended, dated September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office relating to the Registration of Copyright Claims' promulgated pursuant to Republic Act 165, provides among other things that an intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila, or within the (60) days if made elsewhere, failure of which renders such creation public property." (Santos v. McCullough Printing Company, 12 SCRA 324-325 [1964]. Indeed, if the general public has made use of the object sought to be copyrighted for thirty (30) days prior to the copyright application the law deems the object to have been donated to the public domain and the same can no longer be copyrighted. A careful study of the records reveals that the song "Dahil Sa Iyo" which was registered on April 20, 1956 (Brief for Appellant, p. 10) became popular in radios, juke boxes, etc. long before registration (TSN, May 28, 1968, pp. 3-5; 25) while the song "The Nearness Of You" registered on January 14, 1955 (Brief for Appellant, p. 10) had become popular twenty five (25) years prior to 1968, (the year of the hearing) or from 1943 (TSN, May 28, 1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao Lamang" both registered on July 10, 1966, appear to have been known and sang by the witnesses as early as 1965 or three years before the hearing in 1968. The testimonies of the witnesses at the hearing of this case on this subject were unrebutted by the appellant. (Ibid, pp. 28; 29 and 30). Under the circumstances, it is clear that the musical compositions in question had long become public property, and are therefore beyond the protection of the Copyright Law. PREMISES CONSIDERED, the appealed decision of the Court of First Instance of Manila in Civil Case No. 71222 is hereby AFFIRMED. SO ORDERED.

G.R. No. 76193 November 9, 1989 UNITED FEATURE SYNDICATE, INC., petitioner, vs. MUNSINGWEAR CREATION MANUFACTURING COMPANY, respondent. Quasha, Asperilla, Ancheta, Pena and Nolasco for petitioner. Jaime G. Manzano for private respondent.

PARAS, J.:

This is a petition for review on certiorari filed by United Feature Syndicate Inc., seeking to set aside the Resolution of the Seventh Division of the Court of Appeals * dated September 16, 1986 dismissing the appeal of petitioner-appellant for having been filed out of time and denying its Motion for Reconsideration for lack of merit in its Resolution dated October 14, 1986. The Resolution dismissing the appeal, reads as follows:
We agree with the Philippine Patent Office and respondent appellee that the decision of the aforementioned office dated October 2, 1984 had already become final and executory at the time the Notice of Appeal was filed. Our reasons for this conclusions are borne out by the following facts: a) On October 2, 1984, the decision sought to be appealed was rendered by the Philippine Patent Office and a copy thereof was received by counsel for petitioner-appellant on October 3, 1984 not October 9, 1984 as stated in the Notice of Appeal. There can be no doubt about the decision having been received by petitioner-appellant's counsel on October 3, 1984 for this is clearly written in the Notice of Decision (p. 61, Original Record), and in point of fact the date of receipt cannot be October 9, 1984, as declared in the Notice of Appeal (p. 1, Rollo), because in the motion for reconsideration subsequently filed by petitioner-appellant it was stated that a copy of the decision was received on October 4, 1984 (p. 80, Original Record). b) On October 18, 1984 as shown in the stamp mark of the Philippine Patent Office (p. 80, Original Record) or on the 15th and last day either for appealing or for moving for reconsideration, petitioner-appellant filed a motion for reconsideration. Sadly and unexplainably for a veteran law office, said motion did not contain or incorporate a notice of hearing. c) Possibly realizing the fatal defect in its motion for reconsideration, petitioner-appellant subsequently filed a motion to set for hearing its motion for reconsideration. This was done, however, only on October 31, 1984 (p. 162, Original Record). The motion for reconsideration filed on the last day, fatally failing as it did to contain a notice of hearing, said pleading did not interrupt the period for appealing, for the motion was nothing but a piece of scrap paper (Agricultural and Industrial Marketing, Inc. v. Court of Appeals, 118 SCRA [1982] 492; Republic Planters Bank v. Intermediate Appellate Court, 13 SCRA [1984] 631). This deadly and moral deficiency in the motion for reconsideration, therefore, resulted in the decision of the Philippine Patent Office being final and executory on October 19, 1984, the day after the motion for reconsideration was filed, said motion having been filed on the 15th and last day for appealing. WHEREFORE, the motion of respondent appellee is hereby granted and the appeal dismissed.

SO ORDERED. (Rollo 42-43)

This case arose from petition filed by petitioner for the cancellation of the registration of trademark CHARLIE BROWN (Registration No. SR. 4224) in the name of respondent MUNSINGWEAR in Inter Partes Case No. 1350 entitled "United Feature Syndicate, Inc. v. Munsingwear Creation Mfg. Co.", with the Philippine Patent Office alleging that petitioner is damaged by the registration of the trademark CHARLIE BROWN of T-Shirts under Class 25 with the Registration No. SR-4224 dated September 12, 1979 in the name of Munsingwear Creation Manufacturing Co., Inc., on the following grounds: (1) that respondent was not entitled to the registration of the mark CHARLIE BROWN, & DEVICE at the time of application for registration; (2) that CHARLIE BROWN is a character creation or a pictorial illustration, the copyright to which is exclusively owned worldwide by the petitioner; (3) that as the owner of the pictorial illustration CHARLIE BROWN, petitioner has since 1950 and continuously up to the present, used and reproduced the same to the exclusion of others; (4) that the respondent-registrant has no bona fide use of the trademark in commerce in the Philippines prior to its application for registration. (Petition, p. 2, Rollo, p. 8) On October 2, 1984 the Director of the Philippine Patent Office rendered a decision in this case holding that a copyright registration like that of the name and likeness of CHARLIE BROWN may not provide a cause of action for the cancellation of a trademark registration, (Petition, p. 4; Rollo, p. 10 ) Petitioner filed a motion for reconsideration of the decision rendered by the Philippine Patent Office which was denied by the Director of said office on the ground that the Decision No. 84-83 was already final and executory (Petition, Rollo, pp. 11-12). From this decision, petitioner-appellant appealed to the Court of Appeals and respondent court in its resolution dated September 16, 1986 denied the appeal. While the Motion for Reconsideration was filed on time, that is, on the last day within which to appeal, still it is a mere scrap of paper because there was no, date, of hearing stated therein. Subsequently, petitioner-appellant filed a motion for reconsideration which public respondent denied for lack of merit( Annex "B", Rollo p. 45).. Hence this petition for review on certiorari. In the resolution of April 6, 1987, the petition was given due course. In its petition (Rollo, p. 10) and in its memorandum (Rollo, p. 97), petitioner-appellant raised the following legal issues:
I WHETHER THE RESPONDENT COURT OF APPEALS ACTED IN EXCESS OF JURISDICTION AND/OR COMMITTED GRAVE ABUSE OF DISCRETION WHEN IT

BASED ITS RESOLUTION IN DISMISSING ITS APPEAL ON STRICT TECHNICAL RULES OF PROCEDURE AS ENUNCIATED IN RULE 15 OF THE RULES OF COURT INSTEAD OF RELYING ON THE POLICY OF THE PHILIPPINE PATENT OFFICE AS STRESSED IN RULE 169, AS AMENDED, OF THE RULES OF PRACTICE IN TRADEMARK CASES. II WHETHER THE RESPONDENT COURT OF APPEALS COMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING TO EXCESS OF JURISDICTION WHEN BY DISMISSING THE APPEAL TO IT FROM THE DECISION OF THE DIRECTOR OF PATENTS, IT KNOWINGLY DISREGARDED ITS OWN DECISION IN AC-GR. SP. NO. 0342, WHICH WAS AFFIRMED BY THIS HONORABLE SUPREME COURT TO THE EFFECT THAT A COPYRIGHTED CHARACTER MAY NOT BE APPROPRIATED AS A TRADEMARK BY ANOTHER UNDER PRESIDENTIAL DECREE NO. 49. III WHETHER, ASSUMING ARGUENDO, BUT ONLY ASSUMING, THAT THE DECISION OF THE DIRECTOR OF PATENTS IN THE CASE AT BAR HAD ALREADY BECOME FINAL WHEN IT WAS APPEALED TO THE COURT OF APPEALS, THE LATTER, BY REASON OF THE SUPERVENING FACTS AFTER THE DECISION APPEALED FROM WAS RENDERED, SHOULD HAVE HARMONIZED THE DECISION WITH LAW, THE DEMANDS OF JUSTICE AND EQUITY.

The petitioner is impressed with merit. Petitioner's contention that the purpose of a notice of hearing to the adverse party is to afford him an opportunity to resist the motion, more particularly the motion for reconsideration filed by its company is well taken. Said purpose was served when Munsingwear filed its opposition thereto on November 20, 1984 and cured the technical defect of lack of notice of hearing complained of (Rollo, p. 52). Otherwise stated such shortcomings of petitioner as to compliance with procedural requirements in taking its appeal cannot be deemed sufficient to deprive it of a chance to secure a review by this court in order to obtain substantial justice; more so where liverality accorded to the petitioner becomes compelling because of the ostensible merit of petitioner's case (Olango v. Court of First Instance of Misamis Oriental, 121 SCRA 338 [1983]). Moreover, in Siguenza v. Court of Appeals, (137 SCRA 570 [1985]) the Court stressed that the right to appeal should not be lightly disregarded by a stringent application of rules of procedure especially where the appeal is on its face meritorious and the interest of substantial justice would be served by permitting the appeal. As enunciated in the case of Castro v. Court of Appeals (123 SCRA 782, [1983]) the importance and real purpose of the remedy of appeal was stressed as follows:
An appeal is an essential part of oar judicial system. We have advised the courts to proceed with caution so as not to deprive a party of the right to appeal. (National Waterworks and Sewerage Authority v. Municipality of Libmanan, 97 SCRA 138) and instructed that every party-litigant should be afforded the amplest opportunity for the proper

and just disposition of his cause, freed from the constraints of technicalities. (A-One Feeds, Inc. v. Court of Appeals, 100 SCRA 590). The rules of procedure are not to be applied in a very rigid and technical sense. The rules of procedure are used only to help secure not override substantial justice. (Gregorio v. Court of Appeals, 72 SCRA 120), therefore, we ruled in Republic v. Court of Appeals (83 SCRA 453) that a six day delay in the perfection of the appeal does not warrant its dismissal. And again in Ramos v. Bagaso, 96 SCRA 395, this Court held that the delay of four (4) days in filing a notice of appeal and a motion for extension of time to file a record on appeal can be excused on the basis of equity.

It was further emphasized that we allowed the filing of an appeal in some cases where a stringent application of the rules would have denied it, or when to do so would serve the demands of substantial justice and in the exercise of our equity jurisdiction (Serrano v. Court of Appeals, 139 SCRA 179 [1085].) In the case at bar, the petitioner's delay in filing their record on appeal should not be strictly construed as to deprive them of the right to appeal especially since on its face the appeal appears to be impressed with merit. (Emphasis supplied). All aforementioned cases are cited in G.R. No. 76595, Pacific Asia Overseas Shipping Corporation v. NLRC, et al., May 6, 1988. Procedural technicality should not prevail over substantive rights of a party to appeal (NEA v. CA, 126 SCRA 394). Moreover, a judgment of the Court of Appeals that become final by reason of the mistake of the herein petitioner's lawyer may still be reviewed on appeal by the Supreme Court particularly where the Supreme Court already gave due course to the petition for review (Ernesto v. Court of Appeals, 116 SCRA 755 [1982]). Where strong considerations of substantial justice are manifest in the petition, this Court may relax the stringent application of technical rules in the exercise of equity jurisdiction. In addition to the basic merits of the main case, such petition usually embodies justifying circumstances which warrant our heeding the petitioner's cry for justice, inspite of the earlier negligence of counsel (Serrano v. Court of Appeals et al., 139 SCRA 179 [1985]). In a number of cases, this Court in the exercise of equity jurisdiction decided to disregard technicalities in order to resolve the case on its merits based on the evidence (St. Peter Memorial Park, Inc. et al. v. Cleofas, 121 SCRA 287, [1983]; Helmuth, Jr. v. People of the Philippines, 112 SCRA 573 [1983]). This case was brought before this Court for the resolution of the dismissal of the appeal filed by petitioner-appellant from the decision of the Director of the Philippines Patent Office for being filed out of time. The normal action to take thereafter, would be to remand this case to the Court of Appeals for further proceedings. However, in line with jurisprudence, such time consuming procedure may be properly dispensed with to resolve the issue (Quisumbing v. Court of Appeals, 122 SCRA 709 [1983]) where there

is enough basis to end the basic controversy between the parties here and now. In the case at bar dispensing with such procedural steps would not anyway affect substantially the merits of their respective claims as held in Velasco v. Court of Appeals, (95 SCRA 621 [1980] cited in Ortigas & Co. Ltd. v. Ruiz, 148 SCRA [1987] hence the need for this Court to broaden its inquiry in this case land decide the same on the merits rather than merely resolve the procedural question raised (Dorado v. Court of Appeals, 153 SCRA 420 [1987]; De Lima v. Laguna Tayabas Co., 160 SCRA 70 [1988]). Petitioner contends that it will be damaged by the registration of the trademark CHARLIE BROWN & DEVICE in favor of private respondent and that it has a better right to CHARLIE BROWN & DEVICE since the likeness of CHARLIE BROWN appeared in periodicals having worldwide distribution and covered by copyright registration in its name which antedates the certificate of registration of respondent issued only on September 12, 1979. (Petition, Rollo, p. 21). Petitioner further stresses that Decision No. 84-83 (TM) promulgated by the Philippine Patent Office on October 2, 1984 which held that "the name likeness of CHARLIE BROWN may not provide a cause of action for the cancellation of a trademark registration," was based in the conclusion made in the case of "Children's Television Workshop v. touch of Class" earlier decided by the Director of Patent Office on May 10, 1984. However, when the latter case was appealed to the then Intermediate Appellate Court, docketed as A.C. G.R. SP No. 03432, the appellate court reversed the decision of the Director holding said appealed decision as illegal and contrary to law. this reversal was affirmed by this Court on August 7, 1985 in G.R. No. 71210 by denying the petition of respondent Touch of Class. The Court of Appeals in reversing the Director of Patent's decision in Touch of Class, Inc. succintly said:
The Patents Office ruled that a trademark, unlike a label, cannot be copyrighted. The "Cookie Monster" is not, however, a trademark. It is a character in a TV series entitled "Sesame Street." It was respondent which appropriated the "Cookie Monster" as a trademark, after it has been copyrighted. We hold that the exclusive right secured by PD 49 to the petitioner precludes the appropriation of the "Cookie Monster" by the respondent.

Pertinently, Section 2 of Presidential Decree No. 49, otherwise known as the "Decree on Intellectual Property", provides:
Section 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any of the following classes of works: xxx xxx xxx (O) Prints, pictorial illustrations, advertising copies, labels, tags and box wraps. ...

Therefore, since the name "CHARLIE BROWN" and its pictorial representation were covered by a copyright registration way back in 1950 the same are entitled to protection under PD No. 49.

Aside from its copyright registration, petitioner is also the owner of several trademark registrations and application for the name and likeness of "CHARLIE BROWN" which is the duly registered trademark and copyright of petitioner United Feature Syndicate Inc. as early as 1957 and additionally also as TV SPECIALS featuring the "PEANUTS" characters "CHARLIE BROWN" (Memorandum, Rollo p. 97 [211]). An examination of the records show that the only appreciable defense of respondentregistrant is embodied in its answer, which reads:
It uses, the trademark "CHARLIE BROWN" & "DEVICE" on children's wear such as Tshirts, undershirts, sweaters, brief and sandos, in class 25; whereas "CHARLIE BROWN" is used only by petitioner as character, in a pictorial illustration used in a comic strip appearing in newspapers and magazines. It has no trademark significance and therefore respondent-registrant's use of "CHARLIE BROWN" & "DEVICE" is not in conflict with the petitioner's use of "CHARLIE BROWN" (Rollo, p. 97 [21]).

It is undeniable from the records that petitioner is the actual owner of said trademark due to its prior registration with the Patent's Office. Finally, in La Chemise Lacoste S.A. v. Hon. Oscar Fernandez & Gobindram Hemandas Sujanani v. Hon. Roberto V. Ongpin, et al. 129 SCRA 373 [1984]), the Court declared.
In upholding the right of the petitioner to maintain the present suit before our courts for unfair competition or infringement of trademarks of a foreign corporation, we are moreover recognizing our duties and the rights of foregoing states under the Paris Convention for the Protection of Industrial Property to which the Philippines and (France) U.S. are parties. We are simply interpreting a solemn international commitment of the Philippines embodied in a multilateral treaty to which we are a party and which we entered into because it is in our national interest to do so.

PREMISES CONSIDERED, the Resolutions of the Court of Appeals dated September 16, 1985 and October 14, 1986 dismissing petitioner's appeal are hereby SET ASIDE and Certificate of Registration no. SR-424 issued to private respondent dated September 12, 1979 is hereby CANCELLED. SO ORDERED.

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 3 copyright registration as provided in PD. No. 49. (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 8 infringement cases. . .

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 Set 1

"IT'S A DATE" Set 1

a. Unmarried participant of one gender (searcher) appears on one side of a a. same 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. b. Searcher asks a question to be answered by each of the searchees. The b. same purpose is to determine who among the searchees is the most compatible with the searcher. c. Searcher speculates on the match to the searchee. d. Selection is made by the use of compute (sic) methods, or by the way questions are answered, or similar methods. Set 2 Same as above with the genders of the searcher and searchees 9 interchanged. c. same d. Selection is based on the answer of the Searchees. Set 2 same

Petitioners assert that the format of Rhoda and Me is a product of ingenuity and skill and is thus entitled to copyright protection. 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 12 terms and conditions specified in the statute. Since . . . copyright in published works is purely a statutory creation, a copyright may be 13 obtained only for a work falling within the statutory enumeration or description. 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 14 Congress . . . . .

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 SO ORDERED.1wphi1.nt

ABS-CBN Broadcasting Corporation v Philippine Multi-Media System, Inc. G.R. Nos. 175769-70, January 19, 2009

Facts: Philippine Multi-Media System, Inc. (PMSI), operator of Dream Broadcsating System, delivers a digital direct-to-home (DTH) television satellite to its subscribers all over the Philippines, was granted a legislative franchise under Republic Act 8630 and was given a Provisional Authority by the National Telecommunications Commission (NTC) to install, operate and maintain a nationwide DTH satellite service. When it commenced operations, it offered as part of its program line-up, together with other paid premium program channels, ABS-CBN Channels 2 and 23, NBN, Channel 4, ABC, Channel 5, GMA, Channel 7, RPN, Channel 9, and IBC, Channel 13, pursuant to Memorandum Circular 4-08-88 which mandated all cable television system operators,

operating within the Grade A and B CONTOURS to carry out the television signals of the authorized television broadcast stations. ABS-CBN Broadcasting Corporation (ABS-CBN), a licensed television and radio broadcasting network, demanded PMSI to cease and desist from rebroadcasting Channels 2 and 23. In its reply, PMSI contended that the rebroadcasting was in accordance with the authority granted by NTC under its obligations under NTC MC 408-88. Negotiations were ensued between the parties in an effort to reach a settlement; however, the same was terminated by ABS-CBN allegedly due to PMSIs inability to ensure the prevention of illegal retransmission and further rebroadcast of its signals, as well as the adverse effect of the rebroadcasts on the business operations of its regional television stations. ABS-CBN filed with the Intellectual Property Rights Office (IPO) a complaint for Violation of Laws Involving Property Rights, with Prayer for the Issuance of a Temporary Restraining Order and/or Writ of Preliminary Injunction alleging that PMSIs unauthorized rebroadcasting of Channels 2 and 23 infringed on its broadcasting rights and copyright. The TRO was granted by the Bureau of Legal Affairs (BLA) of IPO. PMSI, pursuant to the TRO, suspended the retransmission of PMSI of Channels 2 and 23 and likewise filed a petition for certiorari with the Court of Appeals. The Court of Appeals granted the petition of PMSI and reversed the decision of the BLA. ABS-CBN filed its appeal however it was dismissed by the Court of Appeals. Furthermore, ABS-CBNs motion for reconsideration was denied. Issue: 1. Whether or not PMSI violated the Laws on Property Rights. 2. Whether or not the issuance MC 4-08-88 by the NTC is a valid exercise of the police power of the State. Held: 1. NO. PMSI did not violate the Laws on Property Rights because it is not engaged in rebroadcasting Channels 2 and 23. Rebroadcasting has been defined as the simultaneous broadcasting by one broadcasting organization of the broadcast of another broadcasting organization. It is also 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. PMSI is only engaged in the carrying of signals of ABS-CBN coming from ABS-CBN and transmitting signals. PMSI is not the origin nor does it claim to be the origin of the programs broadcasted by the ABS-CBN. PMSI did not make and transmit on its own but merely carried the existing signals of the ABS-CBN. When PMSI subscribers view ABS-CBNs programs in Channels 2 and 23, they know that the origin thereof was the

ABS-CBN. The nature of broadcasting is to scatter the signals in its widest area of coverage as possible. On this score, it may be said that making public means that accessibility is undiscriminating as long as it is within the range of the transmitter and equipment of the broadcaster. That the medium through which the PMSI carries the ABS-CBNs signal, that is via satellite, does not diminish the fact that it operates and functions as a cable television. It remains that the PMSIs transmission of signals via its DTH satellite television service cannot be considered within the purview of broadcasting. Furthermore, there is no rebroadcasting on the part of the PMSI of the ABS-CBMs programs on Channels 2 and 23, as defined under the Rome Convention, which defines rebroadcasting as the simultaneous broadcasting by one broadcasting organization of the broadcast of another broadcasting organization. ABS-CBN creates and transmits its own signals; PMSI merely carries such signals which the viewers receive in its unaltered form. PMSI does not produce, select, or determine the programs to be shown in Channels 2 and 23. Likewise, it does not pass itself off as the origin or author of such programs. Insofar as Channels 2 and 23 are concerned, PMSI merely retransmits the same in accordance with Memorandum Circular 04-08-88. With regard to its premium channels, it buys the channels from content providers and transmits on an as-is basis to its viewers. Clearly, PMSI does not perform the functions of a broadcasting organization; thus, it cannot be said that it is engaged in rebroadcasting Channels 2 and 23. Therefore, the retransmission of ABS-CBNs signals by PMSI which functions essentially as a cable television does not constitute rebroadcasting in violation of the formers intellectual property rights under the IP Code.

2. YES. The law on copyright is not absolute. The carriage of ABS-CBNs signals by virtue of the must-carry rule in Memorandum Circular No. 04-08-88 is under the direction and control of the government though the NTC which is vested with exclusive jurisdiction to supervise, regulate and control telecommunications and broadcast services/facilities in the Philippines. The imposition of the must-carry rule is within the NTCs power to promulgate rules and regulations, as public safety and interest may require, to encourage a larger and more effective use of communications, radio and television broadcasting facilities, and to maintain effective competition among private entities in these activities whenever the Commission finds it reasonably feasible. The Must-Carry Rule is in consonance with the principles and objectives underlying Executive Order No. 436, to wit: The Filipino people must be given wider access to more sources of news, information,

education, sports event and entertainment programs other than those provided for by mass media and afforded television programs to attain a well informed, well-versed and culturally refined citizenry and enhance their socio-economic growth. Moreover, radio and television waves are mere franchised which may be reasonably burdened with some form of public service. It is a privilege subject, among other things, to amendment by Congress in accordance with the constitutional provision that any such franchise or right granted . . . shall be subject to amendment, alteration or repeal by the Congress when the common good so requires. The must carry rule is a valid exercise of the police power of the State. It favors both broadcasting organizations and the public. It prevents cable television companies from excluding broadcasting organization especially in those places not reached by signal. Also, the rule prevents cable television companies from depriving viewers in far-flung areas the enjoyment of programs available to city viewers. In fact, this Office finds the rule more burdensome on the part of the cable television companies. The latter carries the television signals and shoulders the costs without any recourse of charging. On the other hand, the signals that are carried by cable television companies are dispersed and scattered by the television stations and anybody with a television set is free to pick them up.